LICENSE AGREEMENT
Exhibit
10.2
This
LICENSE AGREEMENT (this “Agreement”),
dated
as of June 30, 2005 (the “Effective
Date”),
is
entered into by and between Biophan Technologies, Inc. a corporation organized
under the laws of Nevada (“Biophan”)
and
Boston Scientific Scimed, Inc., a corporation organized under the laws of
Delaware (“BSS”)
(each,
a “Party”,
and
collectively the “Parties”).
RECITALS
WHEREAS,
Biophan is the owner or licensee of certain intellectual property and BSS
desires to obtain a license to such intellectual property and Biophan desires
to
grant BSS such a license;
WHEREAS,
the Parties are also parties to that certain Investment Agreement dated June
30,
2005 (the “Investment
Agreement
(collectively with this Agreement, the “Transaction
Documents”);
and
WHEREAS,
pursuant to the transactions contemplated by the Transaction Documents; the
Parties agreed to enter into this Agreement.
NOW,
THEREFORE, in consideration of the premises and the mutual representations,
agreements and covenants set forth herein, and for other good and valuable
consideration, the receipt and sufficiency of which are hereby acknowledged,
the
Parties agree as follows:
I. DEFINITIONS
1.01 General.
As used
herein, the following terms shall have the following meanings:
“Affiliate”
means,
with respect to any specified Person, any Person that, directly or indirectly,
through one or more intermediaries, controls, is controlled by, or is under
common control with such specified Person.
“AMP
License”
means
the AMP-Biophan License Agreement dated as of February 24,
2005, the
Addendum to and Ratification of the AMP-Biophan License Agreement dated as
of
February 24, 2005 and any other agreements relating to either of the
foregoing.
“Annual
License Maintenance Payments”
shall
have the meaning as set forth in Section 6.02.
“Bankruptcy
Code”
shall
have the meaning as set forth in Section 12.12.
“Biophan
Indemnitee”
means
Biophan, its Affiliates, and each of their respective directors, officers,
employees, agents, successors and assigns.
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“Biophan
IP”
means
(i) all Intellectual Property Controlled by Biophan as of the Effective Date,
(ii) all Intellectual Property licensed to Biophan under the Existing License
Agreements at any time during the Term and (iii) any improvements, modifications
or derivative works of (i) or (ii) Controlled by Biophan at any time during
the
Term, but excluding Third Party IP; for the avoidance of doubt, Biophan IP
includes but is not limited to Biophan Patents.
“Biophan
Licensors”
means
those Persons who own Biophan IP and have licensed such Biophan IP to Biophan
pursuant to Existing License Agreements.
“Biophan
Licensor Consents”
means
those acknowledgements and waivers set forth in Exhibit
D
which
are to be executed by Biophan Licensors and delivered to BSS no later than
ninety (90) days after the Effective Date.
“Biophan
Patents”
means
(i) all Patents Controlled by Biophan as of the Effective Date, including but
not limited to those patents and applications set forth in Exhibit A,
(ii)
all Patents licensed to Biophan under the Existing License Agreements at any
time during the Term and (iii) all Patents Controlled by Biophan at any time
during the Term, but excluding Third Party IP, claiming any improvements,
modifications or derivative works of the inventions claimed in (i) or (ii).
Biophan Patents does not include any Patents covering Joint Inventions and
jointly owned by the Parties.
“Biophan
Proceeding”
shall
have the meaning as set forth in Section 5.04(c).
“BSS
Designee”
means
Xxxxx Xxxxxxx or such other person(s) that BSS identifies in writing to
Biophan.
“BSS
Indemnitee”
means
BSS, its Affiliates, and each of their respective directors, officers,
employees, agents, successors and assigns.
“BSS
Proceeding”
shall
have the meaning as set forth in Section 5.04(b).
“BSS
Sublicensees”
means
Persons to whom BSS, pursuant to a written sublicense agreement, sublicenses
any
or all of its rights under this Agreement.
“Confidential
Information”
means
(i) all proprietary information and materials, disclosed by one Party to the
other Party, irrespective of the manner in which a Party disclosed such
information, in furtherance of this Agreement, including inventions, data and
information related to clinical trials and protocols, substances, formulations,
techniques, methodology, equipment, data, reports, correspondence, trade
secrets, know-how, manufacturing documentation and sources of supply and (ii)
the terms of this Agreement (which shall be deemed Confidential Information
of
both Parties.)
“Control”
or
“Controlled”
means
with respect to any Know-How, Patent or other intellectual property right,
the
legal authority or right (whether by ownership, license or otherwise) to grant
access, a license or a sublicense of or under such Know-How, Patent, or
intellectual property right in accordance with the terms of this
Agreement.
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“Disclosing
Party”
means,
with respect to any Confidential Information, the Party that provides, directly
or indirectly, its Confidential Information to the Receiving Party.
“Drug
Coated”
means
devices coated with a drug or a drug eluting polymer coating, including but
not
limited to paclitaxel eluting coronary stents.
“Exclusive
Products”
means
(i) products and services of and/or for vascular stents including coronary,
neuro or peripheral applications of Drug Coated or Non-Drug Coated stents
(“Exclusive
Products Category 1”);
(ii)
products and services of and/or for embolic protection devices, aneurysm coils
and all other vascular implants (other than stents) (“Exclusive
Products Category 2);
and
(iii) products and services of and/or for RF ablation probes and ablation fluid
(“Exclusive
Products Category 3”),
as
depicted in the chart at Exhibit
C.
“Exclusive
Products Category”
means
any one or more of Exclusive Products Categories 1 to 3, as
applicable.
“Existing
License Agreements”
means
those license agreements entered into by and between Biophan and other Persons
regarding Biophan’s use of and license to Biophan IP owned by such other Person,
as set forth in Exhibit
B.
“FDA”
means
the United States Food and Drug Administration.
“Field”
means
systems, devices, components, compositions and processes for magnetic resonance
imaging, including without limitation for providing or enhancing (a) safety,
effectiveness, image quality and/or image compatibility or (b) the visualization
of medical devices in
vivo.
“Future
Sums”
shall
have the meaning set forth in Section 5.04(f).
“Intellectual
Property”
means
(a) Patents, (b) copyrights, (c) Know-How, and (d) registrations and
applications for registration of any of the foregoing.
“Inventions”
means
findings, discoveries, inventions, additions, modifications, formulations,
variations, enhancements, refinements or derivative works.
“Investment
Agreement”
shall
have the meaning as set forth in the Recitals.
“JHU”
shall
have the meaning as set forth in Section 2.04.
“Joint
Invention”
shall
have the meaning as set forth in Section 4.02(b).
“Know-How”
means
all formulae, procedures, trade secrets, know-how, technology, plans, methods,
processes, specifications, models, protocols, techniques, technical or
confidential information and data (including, without limitation, formulae,
experimentation, design, testing, manufacturing and regulatory data, and
products compositions and procedures), and patentable and unpatentable
Inventions that are not disclosed in a published patent application or issued
patent.
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“Law”
means
any United States or non-United States federal, national, supranational, state,
provincial, local or similar statute, law, ordinance, regulation, rule, code,
order requirement or rule of law, to the extent applicable.
“Licensed
Products”
means
Exclusive Products and Non-Exclusive Products which would, but for the licenses
granted hereunder, infringe a Valid Claim in existence in the country of sale
of
such Exclusive Product or Non-Exclusive Product.
“Losses”
means
any losses, liabilities, claims asserted, awards, interest, judgments,
penalties, expenses (including, without limitation, reasonable attorney’s fees
and expenses), costs and damages.
“Market
Launch”
means
with respect to a Licensed Product, the date on which the first commercial
sale
of such Licensed Product is made by or on behalf of BSS in the United
States.
“Milestone
Payments”
shall
have the meaning set forth in Section 6.03.
“Net
Sales”
means
gross revenues received from the sale by BSS or its Affiliates of Licensed
Products to third parties, less (i) trade and/or quantity discounts actually
allowed; (ii) sales, value added or other excise taxes and import duties of
a
similar nature; (iii) amounts repaid or credited by reason of purchase
chargebacks or rebates; (iv) customer returns; (v) other similar customary
adjustments or allowances actually given to a customer in the normal course
of
business of BSS; and (vi) transportation, insurance and postage charges if
paid
by BSS and invoiced by BSS as a separate item. As between or among BSS and
its
Affiliates, the gross revenues are determined by reference to the first sale
to
a non-Affiliate of BSS.
“New
Biophan IP”
shall
have the meaning set forth in Section 2.05.
“Non-Drug
Coated”
means
devices not coated with a drug or a drug eluting polymer coating.
“Non-Exclusive
Products”
means
(i) products and services of and/or for biopsy needles, including aspiration,
cutting needles and breast localization needles (“Non-Exclusive
Products Category 1”);
(ii) products and services of and/or for interventional guidewires for use
in all applications (“Non-Exclusive
Products Category 2);
(iii)
products and services of and/or for interventional vascular catheters (< 6
hours), including for PTCA, predilation, etc. (“Non-Exclusive
Products Category 3”);
(iv)
products and services of and/or for indwelling vascular catheters (> 6
hours), including for CVCC, PICC, etc. (“Non-Exclusive
Products Category 4”);
(v)
products and services of and/or for pacemakers, including leads (“Non-Exclusive
Products Category 5”);
(vi)
products and services of and/or for implantable cardiac defibrillators and
related devices, including their leads (“Non-Exclusive
Products Category 6”);
(vii)
products and services of and/or for auditory implants, e.g.,
cochlear
implants (“Non-Exclusive
Products Category 7”);
and
(viii) products and services of and/or for applications for neuro stimulation,
including for deep brain stimulation (“Non-Exclusive
Products Category 8”),
as
depicted in the chart at Exhibit
C.
“Non-Exclusive
Products Category”
means
any one or more of Non-Exclusive Products Categories 1 to 8, as applicable.
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“Past
Damages”
shall
have the meaning set forth in Section 5.04(f).
“Patents”
means
all United States and foreign patents and patent applications, utility models,
provisionals, divisionals, continuations, continuations-in-part, reissues,
reexaminations or extensions thereof.
“Person”
means
an individual, partnership, joint venture, corporation, limited liability
company, trust, unincorporated organization or other entity (including, without
limitation, any “group” within the meaning of Sections 13(d) and 14(d)(2)
of the Securities Exchange Act of 1934).
“Prepayment
Credit”
shall
have the meaning set forth in Section 6.05.
“Receiving
Party”
means,
with respect to any Confidential Information, the Party that receives such
Confidential Information from the Disclosing Party.
“Regulatory
Authority”
means
any national, supra-national, regional, state or local regulatory agency,
department, bureau, commission counsel or other governmental entity or foreign
equivalent. For purposes of clarity, the term “Regulatory Authority” as used in
this Agreement includes the FDA.
“Regulatory
Filings”
means
the preparation and filing of all applicable documents with a Regulatory
Authority, and obtaining all necessary regulatory, reimbursement and pricing
approvals worldwide.
“Representative”
means,
as to a Party, such Party’s Affiliates and its and their directors, officers,
employees, agents, and advisors (including counsel and
accountants).
“Royalties”
shall
have the meaning as set forth in Section 6.04.
“Royalty
Credit”
shall
have the meaning set forth in Section 6.05.
“Tangible
Materials”
means
any and all tangible embodiments, whether in electronic or other form, of the
Biophan IP that are in Biophan’s possession or control at any time during the
Term.
“Term”
shall
have the meaning as set forth in Section 11.01.
“Third
Party Improvements”
shall
have the meaning as set forth in Section 2.03.
“Third
Party IP”
means
Intellectual Property owned or licensable by a third party who is not a Biophan
employee and is licensed or otherwise transferred to Biophan by an agreement
signed after the Effective Date.
“Transaction
Documents”
shall
have the meaning as set forth in the Recitals.
“Valid
Claim”
means
a
claim of any issued and unexpired Biophan Patent which claim has not been (i)
permanently lapsed, (ii) permanently or irrevocably abandoned, or (iii) held
permanently revoked, unenforceable or invalid by a decision of a court or other
appropriate body of competent jurisdiction, unappealable or unappealed within
the time allowed for appeal, and/or (iv) disclaimed or otherwise admitted to
be
invalid or unenforceable through reissue, re-examination, opposition, nullity
action, or invalidation suit response.
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“Xxxx
Xxxx Rights”
means
the Intellectual Property licensed to Biophan by aMRIs Patenthalte GmbH to
the
extent that it covers xxxx xxxx filters as a Licensed Product.
II. LICENSE
2.01 License
Grants.
(a) Exclusive
License.
Subject
to the terms and conditions of this Agreement, Biophan hereby grants BSS and
its
Affiliates an exclusive, worldwide, sublicensable license in and to Biophan
IP
to (i) use, make, have made, sell, offer to sell, import, modify, distribute,
perform and otherwise exploit the Exclusive Products and (ii) enforce such
Biophan
IP against other Persons and collect past, present and future damages from
any
other Person’s infringement or misappropriation of Biophan IP as set forth in
Section 5.02, but all of the foregoing rights and licenses are limited to the
Field.
(b) Non-Exclusive
License.
Subject
to the terms and conditions of this Agreement, Biophan hereby grants BSS and
its
Affiliates a non-exclusive, worldwide license in and to Biophan IP to use,
make,
have made, sell, offer to sell, import, modify, distribute, perform and
otherwise exploit the Non-Exclusive Products, but all of the foregoing rights
and licenses are limited to the Field.
(c) Retained
R&D Rights.
Notwithstanding the license grants in paragraphs (a) and (b) above, Biophan
retains the rights for itself, its Affiliates, its licensors under Existing
License Agreements and its consultants, to use the Biophan IP solely for the
purposes of (i) Biophan’s research and development of Exclusive Products; and
(ii) Biophan’s research, development and licensing of (A) Non-Exclusive Products
and (B) products that are neither Exclusive Products nor Non-Exclusive
Products.
(d) Government
Rights.
Notwithstanding the license grant in paragraph (a) above, to the extent any
Biophan Patents was developed with the support of funding from the U.S. federal
government, the U.S. federal government retains a royalty-free, non-exclusive,
non-transferable license to practice any government funded invention claimed
in
such Biophan Patents as set forth in 35 U.S.C. §§ 202-211, and the regulations
promulgated thereunder, as amended, or in any successor statutes or
regulations.
(e) Xxxx
Xxxx Rights.
The
license grants of Sections 2.01(a) include Xxxx Xxxx Rights; provided,
however,
in the
event that BSS does not initiate and implement a formal commercialization
program for at least one (1) Licensed Product utilizing the Xxxx Xxxx Rights
within eighteen (18) months from the Effective Date, Biophan may upon prior,
written notice to BSS, terminate BSS’s license in respect of Xxxx Xxxx Rights
only and the definition of Biophan IP will be amended accordingly to exclude
Xxxx Xxxx Rights. Until the earlier of (i) such time that BSS has initiated
and
implemented such formal commercialization program or (ii) termination by Biophan
of BSS’s license in respect of Xxxx Xxxx Rights, BSS shall provide Biophan with
a written report every six (6) months describing BSS’s efforts towards
developing and commercializing the Xxxx Xxxx Rights.
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2.02 Biophan
Obligations to Biophan Licensors.
During
the Term of this Agreement, Biophan shall maintain as valid and in full force
and effect all Existing License Agreements and continue to perform all
obligations of Biophan as required under the Existing License Agreements.
Biophan may not terminate or amend any Existing License Agreements without
the
prior, written consent of BSS. In the event Biophan receives a notice of breach
of any Existing License Agreement from any Biophan Licensor, Biophan shall
promptly notify BSS and provide BSS with Biophan’s plan to cure such
breach.
2.03 Biophan
Agreements with Consultants.
If,
after the Effective Date, Biophan enters into any agreement with a consultant
for the development of improvements to the Inventions covered by the Biophan
Patents (collectively “Third
Party Improvements”),
Biophan shall use best efforts, consistent with prudent business practices,
to
attempt to obtain (i) ownership of or licenses to any such Third Party
Improvements and (ii) the right to license or sublicense such Third Party
Improvements to BSS in accordance with the terms of this Agreement and without
requiring any additional payment from BSS under Sections 6.04 or 6.05. It is
understood by BSS that there is no assurance that these efforts will succeed;
however
if
Biophan does obtain the rights described in (i) and (ii) above, then such Third
Party Improvements (including all Intellectual Property therein) shall be
licensed to BSS in accordance with the terms of this Agreement and the
definitions of Biophan Patents and Biophan IP shall be amended to include such
Third Party Improvements (and all Intellectual Property therein).
2.04 Survival
of Sublicenses to BSS.
In the
event any Existing License Agreement is terminated, the sublicense (of the
applicable Biophan IP) to BSS shall remain valid and in full force and effect
as
set forth in the applicable Biophan Licensor Consent. Without limiting the
foregoing, in the event of termination of Biophan’s license with The Xxxx
Xxxxxxx University (“JHU”),
BSS
may elect to continue its sublicense by advising JHU in writing, within sixty
(60) days of BSS’s receipt of written notice of such termination, of its
election, and of its agreement to assume in respect to JHU all the relevant
obligations (including obligations for payment) contained in this
Agreement.
2.05 Right
of First Negotiation.
If, at
any time during the Term, Biophan acquires Control of Intellectual Property
in
the Field and directed to Exclusive or Non-Exclusive Products not licensed
to
BSS hereunder (including, without limitation, the stent inventions of Drs.
Bucker and Reubben) (collectively, the “New
Biophan IP”),
Biophan shall promptly notify the BSS Designee of such acquisition. Biophan’s
notification of BSS shall be in writing and shall set forth sufficient detail
to
allow BSS to determine whether BSS is interested in obtaining a license to
such
New Biophan IP. BSS shall have thirty (30) days to notify Biophan of BSS’s
interest in such New Biophan IP and whether BSS is interested in such New
Biophan IP in respect of Exclusive Products or Non-Exclusive Products. Upon
such
notification by BSS, the Parties shall negotiate diligently and in good faith
the terms under which BSS would acquire a license (or sublicense) to such New
Biophan IP. In the event (i) BSS notifies Biophan that BSS is not
interested in obtaining a license to such New Biophan IP (or BSS fails to
respond to Biophan in the allotted thirty (30) day time period) or (ii) the
Parties have not been able to agree to terms regarding the licensing (or
sublicensing) to BSS of such New Biophan IP within ninety (90) days from BSS’s
notice to Biophan, Biophan shall be free to license (or sublicense) such New
Biophan IP to another Person.
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2.06 Limitation
on Right to Sublicense.
Nothwithstanding any other provision of this Agreement to the contrary, BSS
may
not grant any sublicenses to any Biophan IP until all of the following have
occurred: (i) BSS shall have paid to Biophan the license fee payable pursuant
to
Section 6.01, and (ii) BSS shall have paid to Biophan the full purchase price
for the Shares (as such term is defined in the Investment
Agreement).
III. TECHNOLOGY
TRANSFER
3.01 Further
Research and Development of Exclusive and Non-Exclusive Products.
If BSS
wishes Biophan to continue or expand its research efforts, then BSS and Biophan
may negotiate and enter into a suitable written development agreement providing
for such development, including terms for payments, task descriptions and
milestones, as applicable.
3.02 Delivery
of Tangible Materials to BSS.
During
the Term of this Agreement, and within ten (10) business days after any written
request from BSS, Biophan shall deliver copies of any and all Tangible Materials
to BSS for BSS’s (and its Affiliates’) use in accordance with the terms and
conditions of this Agreement.
3.03 Use
of
Know-How.
Biophan
may use any Know-How learned from BSS in products other than Exclusive
Products.
IV. INTELLECTUAL
PROPERTY OWNERSHIP
4.01 Pre-Existing
Rights.
Each
Party acknowledges that any and all Intellectual Property of the other Party
existing as of the Effective Date is and shall continue to be owned by such
other Party subject only to the licenses granted herein. Notwithstanding any
other provision of this Agreement to the contrary, nothing shall be construed
herein as transferring any Party’s ownership interest in such intellectual
property to the other Party.
4.02 New
Intellectual Property.
(a) As
between the Parties, each Party shall own all right, title and interest in
and
to any and all Inventions conceived, discovered or reduced to practice solely
by
such Party and all Intellectual Property therein.
(b) If
the
Parties jointly conceive, discover or reduce to practice any patentable
Invention (“Joint
Invention”),
all
rights in and to the Joint Invention shall be jointly owned by both Parties,
provided that Biophan may not use or license any Joint Invention (or any rights
therein) in or for use in Exclusive Products without the prior, written consent
of BSS.
(c) If
any
Exclusive Product is not covered under any Valid Claim but is covered by a
valid, enforceable, unexpired claim of a Patent claiming a Joint Invention,
then
at BSS’s option, (i) BSS shall pay Biophan a royalty in respect of each such
Exclusive Product that is one-half (1/2) of the royalty rate that would be
otherwise payable under Sections 6.04 or 6.05; or (ii) BSS shall not pay Biophan
any royalty in respect of such Licensed Product and notwithstanding paragraph
(b) above, Biophan shall be free to use or license the Joint Invention (and
jointly owned Patents claiming such Joint Invention ) in or for use in Exclusive
Products.
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4.03 Patent
Marking.
BSS
shall give Biophan at least thirty (30) days written notice prior to a Market
Launch of any Licensed Product and Biophan shall notify BSS, in writing within
ten (10) days of receipt of BSS’s notice, any patent markings required to be
placed on such Licensed Product, which BSS shall suitably place on the labeling
or packaging for all applicable Licensed Products.
V. INTELLECTUAL
PROPERTY PROTECTION
5.01 Prosecution
and Maintenance of Biophan Patents.
Biophan
shall be responsible for and perform all preparations, filings, prosecution,
maintenance, recordings and other acts, and pay all required fees and taxes,
with respect to Biophan Patents. Without limiting the foregoing, (i) Biophan
shall be obligated to take any and all reasonable actions necessary to prosecute
and maintain the Biophan Patents including the filing of continuation
applications and continuation-in-part applications; and (ii) Biophan may not
abandon or fail to maintain any Biophan Patents without the prior, written
consent of BSS, which shall not be withheld unreasonably. If Biophan desires
to
abandon or fail to maintain any Biophan Patent, Biophan shall provide BSS at
least one hundred eighty (180) days written notice prior to any such abandonment
of failure to maintain and an explanation of why Biophan believes such Biophan
Patent should no longer be pursued or maintained. Biophan shall provide BSS
an
opportunity to review all filings (including office actions) in respect of
Biophan Patents prior to filing with the Patent and Trademark Office or other
applicable foreign patent office. Biophan shall consider in good faith all
comments provided by BSS and use reasonable efforts to address concerns and
issues raised by BSS in respect of any such proposed filings.
5.02 Prosecution
and Maintenance of Jointly Owned Patents.
With
respect to Patents jointly owned by both Parties, BSS shall be responsible
for
the preparation, filing, prosecution and maintenance of such Patents. Upon
Biophan’s written request, BSS shall provide Biophan (i) a status update on any
jointly owned Patents; and (ii) an opportunity to review and comment on any
then
pending office actions, which comments, if provided to BSS in a timely manner,
will be considered by BSS in good faith when BSS prepares a response to such
office action.
5.03 Joint
Inventions.
Patents
or patent applications covering Joint Inventions will be deemed to be made
as a
result of activities under and subject to the CREATE Act, 35 U.S.C.
§ 103(c).
5.04 Infringement
of Biophan IP.
(a) In
the
event that either Party obtains knowledge of any actual or threatened
infringement or misappropriation by another Person of any of the Biophan IP,
such Party shall notify the other Party in writing promptly of such actual
or
threatened infringement or misappropriation and provide the other Party with
any
available evidence of such actual or threatened infringement or
misappropriation.
(b) To
the
extent permitted by any applicable Existing License Agreement, BSS, at its
expense and sole discretion, shall have the first right to commence, prosecute
and settle or otherwise compromise any dispute, action, suit or proceeding
involving or against any other Person believed to have infringed or
misappropriated any Biophan IP by such Person’s use, manufacture or sale of a
product or service that is similar to or competes with any Exclusive Product
(“BSS
Proceeding”).
Biophan will assist BSS in any BSS Proceeding to the extent necessary, including
joining as a party if necessary and/or requiring the relevant Biophan Licensor
to join as a party if necessary. In the event that BSS institutes a BSS
Proceeding, Biophan shall, to the extent permitted by applicable Law, also
have
the right to, at its own cost, join or intervene in such BSS Proceeding. No
settlement, consent judgment or other voluntary final disposition of any BSS
Proceeding brought pursuant to this Section 5.04(b) may be entered into by
either Party without the prior, written consent of the other Party, which
consent shall not be unreasonably withheld or delayed. In the event BSS does
not
institute a BSS Proceeding to obtain a discontinuance of or remedy for such
actual or threatened infringement or misappropriation of the Biophan IP within
sixty (60) days of the date of receipt by BSS of any written demand from
Biophan, then Biophan, may, to the extent permitted by applicable Law, institute
a proceeding with respect to the actual or threatened infringement or
misappropriation at its own expense. If required by Law, BSS shall permit any
action under this Section 5.04(b) to be brought in its name, including
being joined as party-plaintiffs.
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(c) To
the
extent permitted by any applicable Existing License Agreement, Biophan, at
its
expense and sole discretion, shall have the first right to commence, prosecute
and settle or otherwise compromise any dispute, action, suit or proceeding
involving or against any other Person believed to have infringed or
misappropriated any Biophan IP by such Person’s use, manufacture or sale of a
product or service that is similar to or competes with any Non-Exclusive Product
(“Biophan
Proceeding”).
BSS
will assist Biophan in any Biophan Proceeding to the extent necessary, including
joining as a party if necessary. In the event that Biophan institutes a Biophan
Proceeding, BSS shall, to the extent permitted by applicable Law, also have
the
right to, at its own cost, join or intervene in such Biophan Proceeding. In
the
event Biophan does not institute a Biophan Proceeding to obtain a discontinuance
of or remedy for such actual or threatened infringement or misappropriation
of
the Biophan IP within sixty (60) days of the date of receipt by Biophan of
any
written demand from BSS, then BSS may, to the extent permitted by applicable
Law, institute a proceeding with respect to the actual or threatened
infringement or misappropriation at its own expense. If required by Law, Biophan
shall permit any action under this Section 5.04(c) to be brought in its
name, including being joined as party-plaintiffs.
(d) With
respect to any dispute, action, suit or proceeding (other than a BSS Proceeding
or Biophan Proceeding) brought by any Person challenging the validity or
enforceability any Biophan IP, unless otherwise agreed by the Parties, Biophan
shall defend such Biophan IP at its own cost and expense, provided,
however
that (i)
Biophan shall promptly notify BSS of any such dispute, (ii) Biophan shall keep
BSS apprised of the status of and major developments in such dispute and (ii)
BSS shall have the right to, at its own cost and expense, participate in the
dispute, action, suit or proceeding.
(e) In
the
event a Party initiates a proceeding pursuant to this Section 5.04 the
other Party shall cooperate fully, including, if required to bring such action,
the furnishing of a power of attorney, and the Parties will work together to
coordinate efforts with respect to any such proceeding.
10
(f) Any
recovery from any proceeding instituted pursuant to this Section 5.04 shall
first be applied in satisfaction of out-of-pocket expenses and fees, including
attorneys’ fees and expenses, incurred by the Parties (in the event the recovery
is less than the Parties’ out-of-pocket expenses and fees, the recovery shall be
apportioned pro
rata
based on
the Parties’ respective out-of-pocket expenses and fees incurred for the
lawsuit).
Unless
otherwise agreed by the Parties in writing, the remainder of any such recovery
(including
any future payments, royalties and license fees) shall
be
categorized as either (i) damages for past infringements (“Past
Damages”)
or
(ii) fees (however established, whether as lump sum payments, installments,
milestone payments, minimums or running royalties, for example) for any and
all
future uses of Biophan IP (“Future
Sums”)
and
distributed as follows:
(i) Past
Damages shall be retained by the Party responsible for instituting the
Proceeding and, if both Parties participate in funding the Proceeding, the
recovery shall be divided between the Parties on a pro
rata
basis
based on percentage of out-of-pocket fees and expenses paid by each Party;
(ii) With
respect to BSS Proceedings, Future Sums shall be considered Sublicensing Revenue
and divided between BSS and Biophan, pursuant to Section 6.05; and
(iii) With
respect to Biophan Proceedings in which BSS participated, Future Sums shall
be
retained by Biophan.
VI. PAYMENTS
6.01 Upfront
License Fee.
On or
before the later of (i) ten
(10)
days after the Effective Date
or (ii)
five (5) business days after BSS shall have completed its due diligence
regarding the AMP License and has concluded, in its sole discretion, that it
desires to proceed with the transaction,
in
consideration for the licenses granted to BSS under Article II, BSS shall pay
to
Biophan a one-time payment of USD$750,000.
6.02 Annual
License Maintenance Payments.
In
consideration for the licenses granted to BSS under Article II, BSS shall pay
to
Biophan the following payments (“Annual
License Maintenance Payments”):
(a) USD$100,000
for the exclusive license in respect of all Licensed Products within Exclusive
Products Category 1;
(b) USD$20,000
for the exclusive license in respect of all Licensed Products within Exclusive
Products Category 2;
(c) USD$20,000
for the exclusive license in respect of all Licensed Products within Exclusive
Products Category 3;
(d) USD$110,000
for the non-exclusive license in respect of all Non-Exclusive Products;
provided,
however,
that,
if BSS relinquishes a Non-Exclusive Products Category(ies), the USD$110,000
amount may be proportionally reduced by the ratio that the payment listed below
as to the relinquished Non-Exclusive Products Category(ies) bears to the total
payments listed below for all Non-Exclusive Products Category(ies):
11
(i) Non-Exclusive
Products Category 1: USD$50,000
(ii) Non-Exclusive
Products Category 2: USD$25,000
(iii) Non-Exclusive
Products Category 3: USD$25,000
(iv) Non-Exclusive
Products Category 4: USD$25,000
(v) Non-Exclusive
Products Category 5: USD$200,000
(vi) Non-Exclusive
Products Category 6: USD$100,000
(vii) Non-Exclusive
Products Category 7: USD$50,000
(viii) Non-Exclusive
Products Category 8: USD$50,000
Beginning
in the year 2006, BSS shall make such Annual License Maintenance Payments no
later than January 1 of each year in which BSS desires to retain a license
in
respect of such Licensed Products. A failure by BSS to make any required Annual
License Maintenance Payment shall not be deemed a breach of this Agreement
and
in the event BSS fails to make any specific Annual License Maintenance Payment
for a given year, (i) BSS shall be deemed to no longer be licensed with respect
to such Licensed Product; and (ii) the definition of the terms Exclusive Product
and/or Non-Exclusive Product are hereby revised accordingly. For the avoidance
of doubt, no Annual License Maintenance Payments are due for the year
2005.
6.03 Milestone
Payments.
In
partial consideration for the licenses granted to BSS under Article II, BSS
shall pay to Biophan the following one-time payments (“Milestone
Payments”)
upon
the first Market Launch within each specified category:
|
Exclusive
Products Category 1
|
USD$3,000,000
|
|
Exclusive
Products Category 2
|
USD$500,000
|
|
Exclusive
Products Category 3
|
USD$750,000
|
|
Non-Exclusive
Products Category 1
|
USD$150,000
|
|
Non-Exclusive
Products Category 2
|
USD$100,000
|
|
Non-Exclusive
Products Category 3
|
USD$100,000
|
|
Non-Exclusive
Products Category 4
|
USD$100,000
|
|
Non-Exclusive
Products Category 5
|
USD$2,000,000
|
|
Non-Exclusive
Products Category 6
|
USD$2,000,000
|
|
Non-Exclusive
Products Category 7
|
USD$500,000
|
|
Non-Exclusive
Products Category 8
|
USD$500,000
|
12
6.04 Royalties.
Subject
to Section 6.05, BSS shall pay Biophan royalties for Licensed Products sold
by
BSS or its Affiliates as set forth below (“Royalties”):
|
Exclusive
Products Category 1
|
3%
of Net Sales if products are Drug Coated; 4% of Net Sales if products
are
Non-Drug Coated
|
|
Exclusive
Products Category 2
|
3%
of Net Sales if products are Drug Coated; 4% of Net Sales if products
are
Non-Drug Coated
|
|
Exclusive
Products Category 3
|
4%
of Net Sales
|
|
Non-Exclusive
Products Category 1
|
5%
of Net Sales
|
|
Non-Exclusive
Products Category 2
|
5%
of Net Sales
|
|
Non-Exclusive
Products Category 3
|
5%
of Net Sales
|
|
Non-Exclusive
Products Category 4
|
5%
of Net Sales
|
|
Non-Exclusive
Products Category 5
|
5%
of Net Sales
|
|
Non-Exclusive
Products Category 6
|
5%
of Net Sales
|
|
Non-Exclusive
Products Category 7
|
3%
of Net Sales
|
|
Non-Exclusive
Products Category 8
|
5%
of Net Sales
|
In
the
event BSS is obligated to make patent license royalty payments to another
Person(s) in respect of any feature(s) of Licensed Product(s) where such
features are covered by one or more Valid Claims, the applicable Royalty for
that Licensed Product shall be reduced by the amount of the royalty payments
due
to such other Person(s), provided,
however,
that
the Royalty otherwise payable to Biophan with respect to the applicable Licensed
Product(s) shall not be reduced by more than fifty percent (50%).
6.05 Sublicensing
Revenue.
If BSS
or any Affiliate of BSS sublicenses Biophan IP to a BSS Sublicensee, BSS shall
pay to Biophan one-half (1/2) of all the royalties, license fees, milestone
payments, lump sum license payments and other similar cash payments which are
(i) attributable to the sublicense of the Biophan IP as opposed to any other
third party Intellectual Property and (ii) received by BSS (or its Affiliate)
from such BSS Sublicensee in respect of Licensed Products sold by such BSS
Sublicensee. Notwithstanding
the foregoing, the
royalty
payable
to Biophan shall
not
be less than one and
one-half
percent (1.5%)
of the
Net
Sales
(using the definition herein, mutatis
mutandis)
by the
BSS
Sublicensee.
13
6.06 Payments.
Royalties shall be paid by BSS to Biophan on a quarterly basis, no later than
thirty (30) days after the end of each calendar quarter, with an annual
reconciliation to be made by BSS at the same time as the payment is made in
respect of the fourth quarter of each calendar year to reflect any adjustments
made to Net Sales during such year. If any amount collected or owed is stated
in
a currency other than United States Dollars, then, for purposes of calculating
the amount due Biophan hereunder, such amount shall be converted into United
States Dollars at the exchange rate between those two currencies published
by
Bloomberg for the last business day of the applicable calendar quarter for
which
such payments are being paid. If no such exchange rate for a currency in a
country has been quoted by Bloomberg during the twelve (12) month period
preceding the date on which such amount becomes due to Biophan under this
Agreement, such amount payable for the country per unit of Licensed Product
shall be the average amount most recently paid by BSS for each unit of the
Licensed Product in the country with the largest sales volume of the applicable
Licensed Product for which a currency conversion to United States Dollars is
published by Bloomberg.
6.07 Royalty
Buy-Down.
BSS, at
its option, shall have the right to pre-pay any or all of the Royalties set
forth in Section 6.04 as to any Licensed Products, in any amount and at any
time prior to the Market Launch of the Licensed Product for which the prepayment
was made. Upon Biophan’s receipt of BSS’s Royalty prepayment with respect to a
Licensed Product (the “Prepayment
Credit”),
BSS
shall pay Biophan reduced Royalties in respect of such Licensed Product until
the Royalty Credit (defined below) has been exhausted. The Royalty Credit and
reduced
royalty
shall be calculated as follows:
(i) 2
x
Prepayment Credit = Royalty
Credit;
and
(ii) the
Royalty Credit is applied to one-half (1/2) the applicable Royalty.
By
way of
example only, if BSS pays a Prepayment Credit of $1000 in respect of Exclusive
Products Category 3, then BSS is entitled to a $2000 Royalty Credit in respect
of Exclusive Products Category 3. If the Royalty owed in respect of Licensed
Products within Exclusive Products Category 3 is USD$4 per Licensed Product
then
BSS shall only pay USD$2 per Licensed Product and the remaining USD$2 per
Licensed Product will be applied from the Royalty Credit until such time that
the Royalty Credit is exhausted.
6.08 No
Other Payment Obligations.
Except
as expressly set forth in this Article VI, BSS shall not be obligated to
make any payments to Biophan in respect of the licenses granted in
Article II, including but not limited to royalties, fees and other payments
due to Biophan Licensors under Existing License Agreements in respect of Net
Sales by BSS or its Affiliates.
6.09 Biophan
Audit Rights.
BSS
shall maintain accurate records and books of account sufficient to substantiate
the Royalties paid to Biophan, including records of the quantities of Licensed
Products sold. Upon reasonable notice to BSS, Biophan shall have the right
to
conduct an audit, not more than once per calendar year, through an independent
accounting firm reasonably acceptable to BSS, of the calculation of Net Sales
of
Licensed Products and to examine the records and books of accounts of BSS in
connection therewith. If such audit determines that payments are due to Biophan,
BSS shall pay Biophan any such additional amounts within thirty (30) days of
the
date on which such auditor’s written report is delivered to BSS and Biophan. If
such audit determines that BSS has overpaid Royalties to Biophan, Biophan shall
return such overpayment to BSS within thirty (30) days of the date on which
such
auditor’s written report is delivered to BSS and Biophan. Biophan shall bear the
full cost and expense of such audit, unless a discrepancy in excess of five
percent (5%) in favor of Biophan is discovered, in which case BSS shall bear
the
full cost and expense of such audit.
14
6.10 Deductions.
Any
amounts which BSS is required by Law to withhold with respect to monies payable
to Biophan under this Agreement shall be deducted from the amount of such
payments and paid to the relevant competent taxing authority. BSS shall provide
Biophan with a certificate or other documentary evidence to enable Biophan
to
support a claim for a refund or foreign tax credit with respect to any such
tax
so withheld or deducted by BSS. BSS and Biophan will reasonably cooperate in
completing and filing documents required under the provisions of any applicable
tax treaty or under any other applicable law, in order to enable BSS to make
such payments to Biophan without any deduction or withholding, if possible.
Any
amounts which BSS deducts or withholds pursuant to this Section
6.10
shall be
treated as having been paid to Biophan for purposes of this
Agreement.
VII. REPRESENTATIONS
AND WARRANTIES
7.01 Mutual
Representations and Warranties.
Each
Party hereby represents and warrants to the other Party as follows:
(a) The
execution, delivery and performance of this Agreement by such Party has been
duly authorized by all necessary action on the part of such Party.
(b) This
Agreement has been duly executed and delivered by such Party and assuming due
authorization, execution and delivery by the other Party, constitutes a legal,
valid and binding obligation of such Party, enforceable against such Party
in
accordance with its terms, subject to (i) the effect of any applicable
bankruptcy, insolvency, reorganization, moratorium and other similar laws
relating to or affecting creditors’ rights and remedies generally, and (ii) the
effect of general equitable principles, regardless of whether asserted in a
proceeding in equity or at law.
(c) Such
Party’s execution, delivery and performance of this Agreement and the
consummation of the transaction contemplated hereby does not and will not (i)
violate, conflict with or result in the breach of any provision of the
certificate of incorporation or by-laws (or similar organizational documents)
of
such Party, (ii) conflict with or violate any Law or governmental order
applicable to such Party or its assets, properties or businesses, or (iii)
conflict with, result in any breach of, constitute a default (or event which
with the giving of notice or lapse of time, or both, would be come a default)
under, require any consent under, or give to other any rights of termination,
amendment, acceleration, suspension, revocation or cancellation of, or result
in
the creation of any encumbrance on any of its outstanding shares of common
stock
or preferred stock or any of the assets or properties of such Party pursuant
to,
any note, bond, mortgage or indenture, contract, agreement, lease, sublease,
license, permit, franchise or other instrument or arrangement to which it is
a
party or by which any of such Party’s shares of common stock or preferred stock
or any of the Party’s assets or properties is bound or affected.
15
(d) It
is not
a party to any litigation relating to, or that could reasonably be expected
to
affect, its ability to perform its obligations under this
Agreement.
7.02 Biophan
Representations and Warranties.
Biophan
hereby represents and warrants to BSS as follows:
(a) Biophan
is the sole and exclusive owner of the entire right, title and interest in
and
to, or holds an exclusive license under, the Biophan IP, free and clear of
all
liens and encumbrances, and Biophan is entitled to use and license (or
sublicense) the Biophan IP in accordance with the terms and conditions of this
Agreement and without incurring any obligation to any other Person (except
with
respect to the payment of royalties and/or license fees as set forth in the
Existing License Agreements).
(b) The
Biophan IP is not subject to any outstanding consent, settlement, decree, order,
injunction, judgment or ruling that would impair the validity or enforceability
of any such Biophan IP and to the knowledge of Biophan, with no investigation
having been made or required to be made, the Biophan IP is valid and
enforceable.
(c) To
the
knowledge of Biophan, with no investigation having been made or required to
be
made, the use of the Biophan IP and the making, using, selling, offering for
sale, exporting or importing of the Licensed Products does not and will not
infringe, misappropriate, dilute or otherwise violate the Intellectual Property
or other rights of any Person.
(d) Biophan
has not granted any other Person, other than BSS, a license to or under any
of
the Biophan IP with respect to the manufacture, development, use, sale, export
or import of Exclusive Products, except as reserved in Section
2.01(c).
(e) Biophan
has all necessary rights to grant the rights and licenses granted in this
Agreement, including, without limitation, all necessary consents and approvals
from the Biophan Licensors.
(f) The
provisions of this Agreement are consistent with the provisions of the Existing
License Agreements and there are no provisions required under any Existing
License Agreement to be contained herein that are not contained
herein.
(g) The
performance by Biophan and BSS of their obligations under this Agreement and
the
exercise by Biophan and BSS of their rights under this Agreement will not result
in breach of any provisions of the Existing License Agreements.
7.03 DISCLAIMER.
EXCEPT
AS EXPLICITLY PROVIDED IN THIS ARTICLE, NEITHER PARTY MAKES ANY REPRESENTATIONS
OR WARRANTIES OF ANY KIND, EXPRESS, IMPLIED, OR STATUTORY, AND THE PARTIES
EXPRESSLY DISCLAIM ALL OTHER WARRANTIES, INCLUDING WITHOUT LIMITATION, ANY
WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
16
7.04 Biophan
Indemnification.
Biophan
hereby agrees to indemnify and hold harmless BSS Indemnitees from and against
all Losses incurred by them arising from any action made, brought or threatened
against any of the BSS Indemnitees by a third party as a result of (a) any
negligent or willful act or omission of Biophan in relation to its obligations
under this Agreement, (b) the breach of any representation or warranty, covenant
or agreement by Biophan contained in this Agreement, or (c) any allegation
that
the use of the Biophan IP infringes or misappropriates any Person’s Intellectual
Property (excluding Patents).
7.05 BSS
Indemnity to Biophan.
BSS
agrees to indemnify, defend and hold harmless each Biophan Indemnitee from
and
against any and all Losses incurred by them arising from any Action made,
brought or threatened against any of the Biophan Indemnitees by a third party
as
a result of (a) any negligent or willful act or omission of BSS in relation
to
its obligations under this Agreement, (b) the breach of any representation
or
warranty, covenant or agreement by BSS contained in this Agreement
or (c)
any product liability claim with respect to a Licensed Product sold by or on
behalf of BSS or a BSS Affiliate.
7.06 Special
Damages.
EXCEPT
WITH RESPECT TO OBLIGATIONS UNDER SECTIONS 7.04 AND 7.05, IN NO EVENT SHALL
EITHER PARTY BE LIABLE FOR SPECIAL, INCIDENTAL, INDIRECT OR CONSEQUENTIAL
DAMAGES ARISING OUT OF OR RELATED TO THIS AGREEMENT.
7.07 Breach
of Section 7.02(d).
If
Biophan has breached the representation and warranty set forth in Section
7.02(d) with respect to an Exclusive Product (and such Exclusive Product is
not
otherwise covered by a Valid Claim) and the breach is not cured within sixty
(60) days from Biophan’s receipt of notice of such breach, in addition to any
and all other remedies BSS has, BSS shall be relieved of all obligations to
pay
Royalties, Milestone Payments and Annual Minimum Payments in respect of the
relevant Exclusive Product and BSS retains a perpetual, worldwide,
sublicensable, exclusive (subject only to the license(s) granted by Biophan
to
Person(s) prior to the Effective Date) license in respect of such Exclusive
Product.
VIII. INSURANCE
8.01 Insurance.
BSS
shall maintain in full force and effect at all times commercial general
liability insurance, including contractual liability and products liability
insurance, covering the marketing, sale, distribution, use and performance
of
Licensed Products in an amount of at least Two Million Dollars ($2,000,000)
per
occurrence and Two Million Dollars ($2,000,000) in the aggregate. Such insurance
(i) shall be issued by an insurer licensed in the State of New York or an
insurer pre-approved by Biophan, such approval not to be unreasonably withheld,
(ii) shall be endorsed to include product liability coverage, and (iii) shall
require thirty (30) days’ written notice to Biophan before cancellation or
material change. BSS shall, upon request, provide Biophan with Certificates
of
Insurance. BSS shall maintain such insurance five (5) years after any
termination of this Agreement.
IX. CONFIDENTIALITY
9.01 Confidentiality.
The
Receiving Party shall maintain Confidential Information in confidence, and
shall
not disclose, divulge or otherwise communicate such Confidential Information
to
others, or use it for any purpose, except pursuant to, and in order to carry
out, the terms and objectives of this Agreement. The Receiving Party hereby
shall exercise every reasonable precaution to prevent and restrain the
unauthorized disclosure of such Confidential Information. Upon termination
or
expiration of this Agreement, each Party shall at the Disclosing Party’s
request, either return to the Disclosing Party or destroy (and certify to the
destruction of), all Confidential Information of the Disclosing Party in its
possession.
17
9.02 Release
from Restrictions.
The
provisions of Section 9.01 shall not apply to and terminate with respect to
any Confidential Information disclosed hereunder that:
(a) is
lawfully disclosed to the Receiving Party by an independent, unaffiliated third
party rightfully in possession of the Confidential Information and under no
confidentiality or fiduciary obligation to the Disclosing Party not to make
disclosure;
(b) is
or
becomes published or generally known to the public through no fault or omission
on the part of the Receiving Party;
(c) is
developed independently by the Receiving Party without use of the Confidential
Information of the Disclosing Party;
(d) is
legally required to be disclosed to a Regulatory Authority or is otherwise
required or compelled to be disclosed; provided,
however,
that:
(i) the
Receiving Party shall provide prompt written notice of such requirement to
the
Disclosing Party so that the Disclosing Party may seek a protective order or
other remedy; and provided further that the Receiving Party shall be permitted
to furnish only that portion of such Confidential Information that is legally
required to be provided and the Receiving Party shall exercise reasonable
efforts to obtain assurances that confidential treatment shall be accorded
such
information; and
(ii) the
Receiving Party shall continue to treat such Confidential Information as
confidential pursuant to Section 9.01 unless and until such Confidential
Information becomes published or generally known to the public through no fault
or omission on the part of the Receiving Party.
X. DISPUTES
10.01 Dispute
Resolution.
(a) Internal
Resolution Process.
In the
event of any dispute, controversy or claim arising out of or relating to this
Agreement, the Parties shall attempt in good faith to resolve such dispute
promptly. In the event that the Parties cannot resolve a dispute, controversy
or
claim arising out of or relating to this Agreement within a reasonable period
of
time, such dispute, controversy or claim may,
upon
mutual agreement of the Parties, be submitted to non-binding arbitration
pursuant to Section 10.01(b), provided,
however
that
disputes regarding alleged non-payment of fees or Royalties by BSS must
be
submitted to arbitration pursuant to Section 10.01(b) prior to the filing of
any
court action by a Party.
18
(b) Arbitration.
Arbitration of any dispute, controversy or claim is to be administered by the
American Arbitration Association and is to be conducted in accordance with
the
Commercial Arbitration Rules of the American Arbitration Association. Any
arbitration is to be held before one arbitrator at a location mutually agreed
to
by the Parties. No later than ten (10) business days after the Parties’ decision
to arbitrate, the Parties shall jointly select a neutral arbitrator. If the
Parties fail to select an arbitrator on or before the tenth (10th) day, either
Party is entitled to request the American Arbitration Association to appoint
a
neutral arbitrator in accordance with its rules. Each Party will cooperate
to
provide information reasonably requested by the other. The arbitration hearing
will be held within ninety (90) days after a demand for arbitration is filed.
The decision of the arbitrator shall be in the form of a written, reasoned
opinion, but will be non-binding upon the Parties and any arbitration shall
not
prejudice either Party’s right to pursue a judicial remedy with respect to any
dispute, controversy or claim. Each Party shall be responsible for costs
incurred in connection with any arbitration but the arbitrator’s fees and other
costs of the administration of the arbitration shall be equally shared by both
Parties.
XI. TERM
AND TERMINATION
11.01 Term.
This
Agreement shall continue in effect unless and until terminated in accordance
with the provisions of this Article XI (“Term”).
11.02 Termination
by Biophan.
(a) Biophan
may terminate this Agreement if BSS is in material breach of any provision
contained in this Agreement which breach would result in a material adverse
effect on Biophan and such breach shall not have been remedied within sixty
(60)
days after receipt of written notice from Biophan specifying (i) such breach
and
(ii) intention to terminate if such breach is not cured within sixty (60)
days.
(b) BSS’s
license rights with respect to any Licensed Product may be terminated by Biophan
if BSS fails to pay Royalties in respect of such Licensed Product within thirty
(30) days of:
(i) Receipt
by BSS of written notice from Biophan regarding such nonpayment provided that
BSS has not requested resolution of this issue of nonpayment in accordance
with
Section 10.01(b) within (or prior to) such thirty (30) day period;
or
(ii) Receipt
by BSS of a written arbitration decision pursuant to Section 10.01(b) advising
that BSS has failed to pay any amounts deemed to be owed to Biophan by
BSS.
(c) Biophan
may terminate this Agreement by written notice to BSS if BSS shall not have
(i)
paid to Biophan the license fee payable pursuant to Section 6.01 and (ii)
paid to Biophan the full purchase price for the Shares (as such term is defined
in the Investment Agreement) on or before August 15, 2005.
19
11.03 Termination
by BSS.
(a) BSS
may
terminate this Agreement at any time upon ninety (90) days prior written notice
to Biophan.
(b) BSS
may
terminate this Agreement if Biophan is in material breach of any provision
contained in this Agreement and such breach shall not have been remedied within
sixty (60) days after receipt of written notice from BSS specifying (i) such
breach and (ii) intention to terminate if such breach is not cured within sixty
(60) days
(c) BSS
may
terminate this Agreement if (i) executed copies of all Biophan Licensor Consents
are not received by BSS within ninety (90) days after the Effective Date or
(ii)
if by August 15, 2005, BSS is not satisfied with the results of its diligence
of
the AMP License and decides not to proceed with the transaction. Upon any
termination by BSS pursuant to this Section
10.03(c), Biophan shall promptly refund to BSS any and all amounts paid by
BSS
hereunder, including without limitation the payment set forth in Section
6.01.
11.04 Termination
for Bankruptcy.
This
Agreement may be terminated by a Party if the other Party should commence any
case, proceeding or action (i) under any existing or future Law of any
jurisdiction, domestic or foreign, relating to bankruptcy, insolvency,
reorganization or relief of debtors, seeking to have an order for relief entered
with respect to it, or seeking to adjudicate it as bankrupt or insolvent, or
seeking reorganization, arrangement, adjustment, winding up, liquidation,
dissolution, composition or other relief with respect to it or its debts or
(ii)
seeking appointment of a receiver, trustee, custodian or other similar official
for it or for all or any substantial part of its assets; or, there shall be
commenced against the other Party any such case, proceeding or other action
which results in the entry of an order for relief or any such adjudication
or
appointment which remains undismissed, undischarged or unbonded for a period
of
third (30) days.
11.05 Effect
of Termination.
(a) Upon
any
termination of this Agreement, any BSS Sublicensees shall have the right to
retain a license to the Biophan IP by entering into a license agreement directly
with Biophan which contains terms substantially similar to the terms contained
in the relevant sublicense agreement between BSS and such BSS
Sublicensee.
(b) Upon
any
termination of this Agreement, in addition to any clause which by its express
term survives termination, the respective rights and obligations of the Parties
under the provisions of Sections 4.01, 4.02(a), 4.02(b), 8.01 and 11.05 and
Articles VII and IX shall also survive any termination of this
Agreement.
(c) Termination
of this Agreement shall not affect either Party’s right to recover accrued but
unpaid Royalties or fees or reimbursement for patent expenses incurred pursuant
to Articles V and VI prior to termination.
20
XII. MISCELLANEOUS
12.01 Notices.
All
notices, requests, claims, demands and other communications hereunder shall
be
in writing and shall be given or made (and shall be deemed to have been duly
given or made upon receipt) by delivery in person, by an internationally
recognized overnight courier service, by telecopy or registered or certified
mail (postage prepaid, return receipt requested) to the respective Parties
at
the following addresses (or at such other address for a Party as shall be
specified in a notice given in accordance with this
Section 12.01):
(a) if
to
Biophan:
Xxxxxxx
Xxxxxx
Chief
Executive Officer
150
Xxxxxx Xxxxxx Drive, Suite 000
Xxxx
Xxxxxxxxx, Xxx Xxxx 00000
(b) if
to
BSS:
Xxxxx
Xxxxxxx
Vice
President, Business Development
Xxx
Xxxxxx Xxxxxxxxxx Xxxxx
Xxxxxx,
XX 00000
12.02 Headings.
The
descriptive headings contained in this Agreement are for convenience of
reference only and shall not affect in any way the meaning or interpretation
of
the Agreement.
12.03 Severability.
If any
term or other provision of this Agreement is held or deemed invalid, illegal
or
incapable of being enforced by any Law or public policy, all other terms and
provisions of this Agreement shall nevertheless remain in full force and effect
for so long as the economic or legal substance of the transactions contemplated
by this Agreement is not affected in any manner materially adverse to any Party.
Upon such determination that any term or other provision is invalid, illegal
or
incapable of being enforced, the Parties shall negotiate in good faith to modify
this Agreement so as to effect the original intent of the Parties as closely
as
possible in an acceptable manner in order that the transactions contemplated
by
this Agreement are consummated as originally contemplated to the greatest extent
possible.
12.04 Entire
Agreement.
The
Transaction Documents constitute the entire agreement of the Parties with
respect to the subject matter thereof and supersede all prior agreements and
undertakings, both written and oral, among the Parties with respect to the
subject matter thereof.
12.05 Assignment.
This
Agreement shall be binding upon and inure to the benefit of the Parties hereto
and their respective successors and permitted assigns. Neither Party may assign
this Agreement without the prior written consent of the other Party;
provided,
however,
that
BSS may assign this Agreement to an Affiliate or in connection with a sale
or
transfer of all or substantially all of BSS’s assets to which this Agreement
pertains, without the approval of Biophan and provided that the assignee agrees
to be bound by the terms and conditions of this Agreement. No assignment by
either Party permitted hereunder shall relieve the applicable Party of its
obligations under this Agreement.
21
12.06 Change
of Control.
In the
event of a change of control of Biophan or BSS, this Agreement and all rights
and obligations of each Party shall survive such change of control
unaffected.
12.07 No
Third Party Beneficiaries.
This
Agreement shall be binding upon and inure solely to the benefit of the Parties
and their permitted assigns, and nothing herein, express or implied, is intended
to or shall confer upon any other Person any legal or equitable right, benefit
or remedy of any nature whatsoever.
12.08 Amendment.
This
Agreement may not be amended or modified except by an instrument in writing
signed by authorized representatives of Biophan and BSS. In the event any
Biophan Licensor requests that Biophan amend the terms of this Agreement in
order to comply with the terms of the license agreements entered into by Biophan
and such Biophan Licensor, Biophan and BSS shall discuss in good faith the
amending of this Agreement to incorporate the requested amendment.
12.09 Governing
Law and Venue.
This
Agreement shall be governed by, and construed in accordance with, the Laws
of
the State of New York without regard to conflicts of law principles. The Parties
unconditionally and irrevocably agree and consent to the exclusive jurisdiction
of the federal and state courts located in the state of New York and waive
any
objection with respect thereto, for the purpose of any action, suit or
proceeding arising out of or relating to this Agreement or the transactions
contemplated hereby, and further agree not to commence any such action, suit
or
proceeding except in any such court.
12.10 Counterparts.
This
Agreement may be executed and delivered (including by facsimile transmission)
in
one or more counterparts, and by the different Parties in separate counterparts,
each of which when executed shall be deemed to be an original, but all of which
taken together shall constitute one and the same agreement. Delivery of an
executed counterpart of a signature page to this Agreement by facsimile shall
be
effective as delivery of a manually executed counterpart of this
Agreement.
12.11 No
Waiver.
The
failure of either Party to enforce at any time for any period the provisions
of
or any rights deriving from this Agreement shall not be construed to be a waiver
of such provisions or rights or the right of such Party thereafter to enforce
such provisions. No waiver of any rights under this Agreement will be effective
unless in writing signed by the party to be charged.
12.12 Statement
of Intent With Respect to Bankruptcy.
The
Parties intend that all rights and licenses granted under this Agreement with
respect to Biophan IP are, and shall otherwise be deemed to be, for purposes
of
Section 365(n) of the United States Bankruptcy Code, 111 U.S.C. § 101
et
seq.
(“Bankruptcy
Code”),
licenses of rights to “intellectual property” as defined in the Bankruptcy Code.
The Parties agree that BSS, as a licensee of intellectual property, shall retain
and may fully exercise all of its rights and elections under the Bankruptcy
Code.
22
12.13 Registration
and Filing of this Agreement.
(a) Notwithstanding
Article IX, to the extent that a Party concludes in good faith that it is
required to file or register this Agreement or a notification thereof with
any
governmental authority, including, without limitation, the U.S. Securities
and
Exchange Commission, the Competition Directorate of the Commission of the
European Communities, the U.S. Department of Justice or the U.S. Federal Trade
Commission such Party shall inform the other Party thereof, and both Parties
shall cooperate, each at its own expense, in such filing or notification and
shall execute all documents reasonably required in connection therewith. In
such
filing or registration, the Parties shall request confidential treatment of
sensitive provisions of the Agreement, to the extent permitted by Law. The
Parties shall promptly inform each other as to the activities or inquiries
of
any such governmental authority relating to this Agreement and shall cooperate
to respond to any request for further information on a timely
basis.
(b) Notwithstanding
Article IX, upon BSS’s request, Biophan shall promptly execute and file a
document substantially in the form attached hereto at Exhibit E with any
governmental or administrative agency (including but not limited to the U.S.
Patent and Trademark Office) as requested by BSS.
12.14 No
Presumption.
The
Parties acknowledge that each Party has been represented by counsel in
connection with this Agreement and the transactions contemplated by this
Agreement. Accordingly, any applicable Law that would require interpretation
of
any claimed ambiguities in this Agreement against the Party that drafted it
has
no application and is expressly waived. If any claim is made by a Party relating
to any conflict, omission or ambiguity in the provisions of this Agreement,
no
presumption or burden of proof or persuasion will be implied because this
Agreement was prepared by or at the request of any Party or its
counsel.
23
IN
WITNESS WHEREOF, Biophan and BSS have caused this Agreement to be executed
as of
the date first written above by their respective officers thereunto duly
authorized.
| BIOPHAN TECHNOLOGIES, INC. | ||
| |
|
|
| By: | /s/ Xxxxxx X. Xxxx | |
|
Name: Xxxxxx X. Xxxx |
||
| Title: Chief Financial Officer | ||
| BOSTON SCIENTIFIC SCIMED, INC. | ||
| |
|
|
| Date: | By: | /s/ Xxxxxxxx X. Best |
|
Name: Xxxxxxxx X. Best |
||
| Title: Vice President and Chief Financial Officer | ||
24
EXHIBIT A
BIOPHAN
PATENTS
|
Asset
#
|
Docket
#
|
Assignee
|
Invention
|
Inventors
|
Applic/SN
|
Type
|
Pub
#/Date
|
Patent
No. if Issued
|
Independent
Claims & Primary Dependent Claims
|
Copy
|
General
Area of Market Application
|
|
1
|
BTI-7
|
BTI
|
An
Electromagnetic Interference Immune Tissue Invasive System (EMI-Proof
& Biocompatible Tissue-Invasive Transducer Shield) (Contains
Anti-Antenna Geometry.)
|
Xxxxxxxx,
MacDonald
|
10/077,906,
2/19/2002
|
Utility
|
Projected
4/15/03
|
6,829,509,
12/7/2004 M.Fees 12/7/2007 12/7/2011, 12/7/2015
|
1,
13
|
Y
|
Anti-Antenna
geometries applied to elongate objects such as leads, electrodes,
guidewires, and catheters; to eliminate RF-induced heating or
stimulation.
|
|
2
|
BTI-7-DIV
|
BTI
|
Medical
Device with an Electrically Conductive Anti-Antenna Geometrical
Shaped
Member
|
MacDonald,
Xxxxxxxx
|
Filed
10/22/04
|
Div
|
|
|
1,
3 - 53
|
N
|
Divisional
of Asset #1, with specific reference to a variety of
products.
|
|
3
|
1008
012 301 02 02 (MLW-4(1))
|
BTI
|
Device
& Method for Preventing Magnetic-Resonance Imaging Induced
Damage
|
Weiner,
Miller, Connelly, Helfer
|
10/795,746,
3/8/2004
|
Utility
|
|
|
1,
24, 31,45
|
N
|
Medical
devices comprising a shielded lead. Note - disclosure in common
with Asset
#4.
|
|
4
|
1008
012 302 02 02 (MLW-4(2))
|
BTI
|
Device
& Method for Preventing Magnetic-Resonance Imaging Induced
Damage
|
Weiner,
Miller, Connelly, Helfer
|
10/795,744,
3/8/2004
|
Utility
|
US-2004-0251042-A1,
12/16/2004
|
|
1,
12
|
Y
|
Shielded
lead components. Note - disclosure in common with Asset
#4.
|
|
5
|
1008
012 303 02 02 (MLW-4(3))
|
BTI
|
Device
& Method for Preventing Magnetic-Resonance Imaging Induced
Damage
|
Xxxxxxxx,
Weiner, Miller, Helfer
|
10/795,747,
3/8/2004
|
Utility
|
|
|
1,
14
|
N
|
Shield
materials and configurations - general. Note - disclosure in common
with
Asset #4.
|
|
6
|
1008
012 305 02 02 (MLW-4(5))
|
BTI
|
Device
& Method for Preventing Magnetic-Resonance Imaging Induced
Damage
|
Helfer,
Connelly, Weiner, Xxxxxx
|
10/795,742,
3/8/2004
|
Utility
|
|
|
1,
10
|
N
|
Device
xxxxxxx, specifical cardiac rhythm management and neurostimulation.
Note -
disclosure in common with Asset #4.
|
|
7
|
1008
012 306 02 02 (MLW-4(6))
|
BTI
|
Device
& Method for Preventing Magnetic-Resonance Imaging Induced
Damage
|
Weiner,
Miller, Connelly, Helfer
|
10/795,743,
3/8/2004
|
Utility
|
|
|
1,
20
|
N
|
Device
shield in combination with electronic filter. Note - disclosure
in common
with Asset #4.
|
|
8
|
1008
012 307 02 02 (MLW-4(7))
|
BTI
|
Device
& Method for Preventing Magnetic-Resonance Imaging Induced
Damage
|
Weiner,
Miller, Connelly, Helfer
|
10/795,741,
3/8/2004
|
Utility
|
|
|
1,
24
|
N
|
Device
shield in combination with electronic filter. Note - disclosure
in common
with Asset #4.
|
|
9
|
1008
014 301 02 01 (RWG-1)
|
BTI
|
Magnetic
Resonance Imaging Interference Immune Device
|
Gray,
Simpson, Weiner
|
10/780,261,
2/17/2004
|
Utility
|
|
|
1,
10, 16, 30, 44
|
Y
|
Active
RF compensation for a lead or guidewire using electronic control
and
response.
|
|
10
|
1008
014 302 02 01 (CIP)
|
BTI
|
Magnetic
Resonance Imaging Interference Immune Device
|
Xxxx
|
10/886,743
7/8/2004
|
CIP
|
Projected
12/30/2004
|
|
1,
4, 10, 13, 17, 21, 25
|
N
|
Anti-Antenna
geometries applied to leads and electrodes, to eliminate RF-induced
heating or stimulation. Note - disclosure in common with Asset
#9.
|
|
11
|
1008
014 303 02 01 (CIP)
|
BTI
|
Magnetic
Resonance Imaging Interference Immune Device
|
Xxxx,
MacDonald
|
10/887,533
7/8/2004
|
CIP
|
Projected
12/30/2004
|
|
1,
6, 11, 14, 19, 22, 27, 35, 43, 48, 51, 56, 59, 65
|
N
|
3-D
tapped-coil compensator for RF-induced energy in a lead or guidewire.
Note
- disclosure in common with Asset #9.
|
|
12
|
1008
017 301 02 01
|
BTI
|
Electromagnetic
Radiation Transparent Device and Method of Making Thereof
|
Gray,
MacDonald, Helfer
|
10/922,359,
8/20/2004
|
Utility
|
|
|
1,
10, 19, 82, 90, 98, 106, 114, 122
|
Y
|
Specific
anti-antenna geometries applied to stent structures; designs, materials,
and methods.
|
|
13
|
1008
017 302 02 01
|
BTI
|
Electromagnetic
Radiation Transparent Device and Method of Making Thereof
|
Gray,
MacDonald, Helfer
|
10/923,292,
8/20/2004
|
Utility
|
|
|
1,
10, 19, 82, 90, 98, 106, 114, 122
|
N
|
Specific
anti-antenna geometries applied to stent structures; designs, materials,
and methods. Note - disclosure in common with Asset
#12.
|
A-1
|
Asset
#
|
Docket
#
|
Assignee
|
Invention
|
Inventors
|
Applic/SN
|
Type
|
Pub
#/Date
|
Patent
No. if Issued
|
Independent
Claims & Primary Dependent Claims
|
Copy
|
General
Area of Market
Application
|
|
14
|
1008
017 303 02 01
|
BTI
|
Electromagnetic
Radiation Transparent Device and Method of Making Thereof
|
Xxxx,
Xxxxxx
|
10/923,293,
8/20/2004
|
Utility
|
|
|
1,
10, 19
|
N
|
Specific
anti-antenna geometries applied to stent structures; designs, materials,
and methods. Note - disclosure in common with Asset
#12.
|
|
15
|
1008
017 304 02 01
|
BTI
|
Electromagnetic
Radiation Transparent Device and Method of Making Thereof
|
Xxxx,
Helfer
|
10/923,411,
8/20/2004
|
Utility
|
|
|
1,
10, 19
|
N
|
Specific
anti-antenna geometries applied to stent structures; designs, materials,
and methods. Note - disclosure in common with Asset
#12.
|
|
16
|
1008
017 305 02 01
|
BTI
|
Electromagnetic
Radiation Transparent Device and Method of Making Thereof
|
Xxxx,
Xxxxxx
|
10/922,338,
8/20/2004
|
Utility
|
|
|
1,
10, 19
|
N
|
Specific
anti-antenna geometries applied to stent structures; designs, materials,
and methods. Note - disclosure in common with Asset
#12.
|
|
17
|
1008
017 306 02 01
|
BTI
|
Electromagnetic
Radiation Transparent Device and Method of Making Thereof
|
Xxxx,
Helfer
|
10/923,294,
8/20/2004
|
Utility
|
|
|
1,
10, 19
|
N
|
Specific
anti-antenna geometries applied to stent structures; designs, materials,
and methods. Note - disclosure in common with Asset
#12.
|
|
18
|
1008
017 307 02 01
|
BTI
|
Electromagnetic
Radiation Transparent Device and Method of Making Thereof
|
Xxxx,
Xxxxxx
|
10/922,335,
8/20/2004
|
Utility
|
|
|
1,
10
|
N
|
Specific
anti-antenna geometries applied to stent structures; designs, materials,
and methods. Note - disclosure in common with Asset
#12.
|
|
19
|
1008
017 308 02 01
|
BTI
|
Electromagnetic
Radiation Transparent Device and Method of Making Thereof
|
Xxxx,
Helfer
|
10/922,771,
8/20/2004
|
Utility
|
|
|
1,
10
|
N
|
Specific
anti-antenna geometries applied to stent structures; designs, materials,
and methods. Note - disclosure in common with Asset
#12.
|
|
20
|
1008
017 309 02 01
|
BTI
|
Electromagnetic
Radiation Transparent Device and Method of Making Thereof
|
Xxxx
|
10/922,333,
8/20/2004
|
Utility
|
|
|
1,
8, 16
|
N
|
Specific
anti-antenna geometries applied to stent structures; designs, materials,
and methods. Note - disclosure in common with Asset
#12.
|
|
21
|
1008
020 201 02 01
|
BTI
|
Electromagnetic
Radiation Transparent Device
|
Xxxx,
R.
|
60/603,476,
8/20/2004
|
Prov
|
|
|
N/A
- Provisional Application
|
Y
|
Device
lead geometries to reduce RF induced heating and voltages; similar
to
anti-antenna.
|
|
22
|
1008
022 201 0201
|
BTI
|
Magnetic
Resonance Imaging Interference Immune Device
|
Xxxx,
R.
|
60/619,098
10/15/04
|
Prov
|
|
|
N/A
- Provisional Application
|
Y
|
Active
RF compensation for a lead or guidewire using electronic control
and
response.
|
|
23
|
PRC-4
(THF 170)
|
BTI
|
MRI-Compatible
Implantable Device
|
Xxxxxx,
Xxxxxxxx
|
09/921,066,
8/2/2001
|
Utility
|
US-2003-0036776-A1;
2/20/2003
|
Allowed
5/20/04
|
1
|
Y
|
Parallel-resonant
decoupling circuit for MRI safety.
|
|
24
|
PRC-712
|
BTI
|
MRI-Compatible
Implantable Device
|
Xxxxxx,
Xxxxxxxx
|
10/946,026
9/21/2004
|
CIP
|
|
|
1,
11, 21, 31
|
N
|
Parallel-resonant
decoupling circuit for MRI safety. Note - disclosure in common
with Asset
#23.
|
|
25
|
RG-762
|
BTI
|
Implantable
MRI Imagable Medical Device
|
Gray,
Cope, Glocker
|
60/627,716
11/12/2004
|
Prov
|
|
|
N/A
- Provisional Application
|
Y
|
Designs
and materials to provide enhanced visualization under
MRI.
|
|
26
|
XW-20
(444)
|
Nanoset
|
Process
for Preparing a Coated Substrate
|
Wang
|
08/393,545,
2/21/1995
|
Utility
|
|
5,540,959,
7/30/1996, M.Fee due: 11/30/1999, 11/10/2003; 11/30/2007
|
1,
9
|
Y
|
Fundamental
manufacturing method for nanomagnetic materials. May apply to all
market
applications for nanomagnetics.
|
A-2
|
Asset
#
|
Docket
#
|
Assignee
|
Invention
|
Inventors
|
Applic/SN
|
Type
|
Pub
#/Date
|
Patent
No. if Issued
|
Independent
Claims & Primary Dependent Claims
|
Copy
|
General
Area of Market
Application
|
|
27
|
XW-35
(550)
|
Nanoset
|
Magnetically
Shielded Conductor
|
Wang
|
10/054,407
1/22/2002
|
Utility
|
|
6,506,972,
1/14/2003.
M.Fees due: 1/14/2006, 1/14/2010, 1/14/2014
|
1
|
Y
|
Nanomagentic
shield for a device lead.
|
|
28
|
XW-35C
(389)
|
Nanoset
|
Magnetically
Shielded Conductor
|
Wang,
Helfer
|
10/090,553,
3/4/2002
|
CIP
|
|
|
1
|
N
|
Nanomagentic
shield for a device lead. Note - most disclosure in common with
Asset
#27.
|
|
29
|
XW-35-CIP
(395)
|
Nanoset
|
Magnetically
Shielded Conductor
|
Wang
|
10/229,183,
8/26/2002
|
CIP
|
|
Allowed
12/17/2004
|
1
|
Y
|
Nanomagnetic
shield for a lead.
|
|
30
|
XW-35-CIPA
(348)
|
Nanoset
|
Magnetically
Shielded Conductor
|
Wang,
Helfer
|
10/242,969,
9/13/2002
|
CIP
|
|
Allowed
9/13/2004
|
1,
24, 37
|
Y
|
Nanomagnetic
shield material applied to leads, guidewires, catheters, or biopsy
probes.
|
|
31
|
XW-35-CIPB
(387)
|
Nanoset
|
Magnetically
Shielded Assembly
|
Wang,
Helfer, MacDonald
|
10/260,247,
9/30/2002
|
CIP
|
|
6,673,999,
1/7/2004 M.Fees due: 1/7/2007, 1/7/2011, 1/7/2015
|
1,21
|
Y
|
Nanomagnetic
shield for an elongate object in the form of a sheath, for ease
of
manufacture.
|
|
32
|
XW-35-CIPB-X
(226)
|
Nanoset
|
Magnetically
Shielded Assembly
|
Wang,
Helfer, MacDonald
|
10/303,264,
11/25/2002
|
CIP
|
|
6,713,671,
3/30/2004 M.Fees due: 3/30/2007, 3/30/2011, 3/30/2015
|
1
|
Y
|
Generic
nanomagnetic shield.
|
|
33
|
XW-35-CIPB-X-C2
(674)
|
Nanoset
|
Magnetically
Shielded Assembly
|
Wang,
Helfer, MacDonald
|
10/810,916,
3/26/2004
|
CIP
|
US-2004/0211580-A1,
10/28/2004
|
Allowed
9/15/04
|
1,
9, 19
|
Y
|
Assembly
comprising a substrate and a nanomagnetic shield layer.
|
|
34
|
XW-35-CIPB-XC
(253)
|
Nanoset
|
Implantable
Shielded Medical Device
|
Wang,
Helfer, Xxxxxxxxx
|
10/313,847,
12/7/2002
|
CIP
|
|
|
1
|
N
|
Nanomagnetic
shield for a device lead.
|
|
35
|
XW-35-CIPC
(1072 005 311 02 01) (263)
|
Nanoset
|
Magnetic
Resonance Imaging Coated Assembly
|
Wang,
Greenwald, Helfer, Gray, Weiner
|
10/384,288,
3/7/2003
|
Utility
|
|
6,765,144,
7/20/2004, M.Fees due: 7/20/2007, 7/20/2011, 7/20/2015
|
1,
52, 56
|
Y
|
Nanomagnetic
materials and structures for device visualization under
MRI.
|
|
36
|
XW-35-CIPC-2
(685)
|
Nanoset
|
Magnetic
Resonance Imaging Coated Assembly
|
Wang,
Greenwald, Helfer, Gray, Weiner
|
10/838,116
5/3/2004
|
CIP
|
|
|
1,
2, 7
|
N
|
Nanomagnetic
materials and structures for device visualization under
MRI.
|
|
37
|
XW-35-CIPM
(391 )
|
Nanoset
|
Nanomagnetic
Shielding Assembly
|
Wang
|
10/273,738,
10/18/2002
|
CIP
|
|
|
1
|
Y
|
Cooling
of a device lead using nanomagnetics.
|
|
38
|
XW-60P
(660)
|
Nanoset
|
Process
for Imaging a Stent
|
Wang,
Gray, Helfer
|
60/542,270,
2/5/2004
|
Prov
|
|
|
N/A
- Provisional Application
|
Y
|
Image
artifact reduction using nanomagnetic coatings and MRI software
enhancements.
|
A-3
|
Asset
#
|
Docket
#
|
Assignee
|
Invention
|
Inventors
|
Applic/SN
|
Type
|
Pub
#/Date
|
Patent
No. if Issued
|
Independent
Claims & Primary Dependent Claims
|
Copy
|
General
Area of Market
Application
|
|
39
|
XWHG-17
(XW-490)
|
Nanoset
|
Nanomagnetically
Shielded Substrate
|
Wang,
Xxxxxxxxx
|
10/324,773,
12/18/2002
|
Utility
|
|
Allowed
9/22/04
|
1
|
Y
|
Assembly
comprising a substrate and a nanomagnetic shield layer.
|
|
40
|
XWHG-17C
(XW-397)
|
Nanoset
|
Magnetically
Shielded Assembly
|
Wang,
Xxxxxxxxx
|
10/366,082,
2/12/2003
|
Utility
|
|
|
1,
14, 15, 17, 19
|
Y
|
Substrate
with a compound shield.
|
|
41
|
XWHG-17CC
(XW-222; 1072 012 303 02 01)
|
Nanoset
|
Protective
Assembly
|
Wang,
Greenwald, Helfer, Xxxx
|
10/373,377,
2/24/2003
|
Utility
|
|
|
1,
7, 22, 33
|
Y
|
Nanomagnetic
shield to reduce heating and induced voltages.
|
|
42
|
XWHG-17CCC
-(481)
|
Nanoset
|
Nanomagnetic
Composition
|
Wang,
Greenwald, Xxx Xxxxxx
|
10/409,505.
4/8/2003
|
CIP
|
|
Allowed
7/1/2004
|
1,
2, 3
|
Y
|
Generic
nanomagnetic shield.
|
|
00
|
XX-000
|
Xxxxxxx
|
Nanoelectrical
Compositions
|
Wang,
Miller, Xxxxxxxxx
|
10/747,472,
12/29/2003
|
CIP
|
|
|
1,
2
|
Y
|
Nanomagnetic
materials - general.
|
|
00
|
XX-000
|
Xxxxxxx
|
Xxxxxxxxxxxx
Shielded Assembly
|
Wang,
Greenwald, Miller, Helfer, Xxxx
|
10/780,045
2/17/2004
|
CIP
|
US-2004-0230271-A1,
11/18/2004
|
|
1
|
Y
|
Nanomagnetic
coatings - general.
|
|
00
|
XX-000
(XXXX-00X0)
|
Xxxxxxx
|
Magnetically
Shielded Assembly
|
Wang,
Greenwald, Miller, Helfer, Xxxx
|
10/786,198
2/25/2004
|
CIP
|
US-2004-0249428-A1,
12/9/2004
|
|
1
|
Y
|
Nanomagnetic
coatings - general.
|
|
00
|
XX-000
(XXXX-00)
|
Xxxxxxx
|
Novel
Nanomagnetic Particles
|
Wang,
Xxxxxxxxx
|
10/808,618,
3/24/2004
|
CIP
|
Projected
10/21/04
|
|
1
|
Y
|
Fundamental
nanomagnetic particle material and morphology.
|
|
00
|
XXXX-000
|
Xxxxxxx
|
Coated
Object & the Imaging Properties Thereof
|
Wang,
Lin
|
60/578,773,
6/10/2004
|
Prov
|
|
|
N/A
- Provisional Application
|
Y
|
Image
compatibility.
|
|
00
|
XX-000
|
Xxxxxxx
|
Medical
Device with Low Magnetic Susceptibility
|
Wang,
Xxxxxxxxx
|
10/887,521,
7/7/2004
|
CIP
|
|
|
1
|
Y
|
Nanomagnetic
materials - general.
|
|
49
|
XW-715
(WXHG-715)
|
Nanoset
|
Medical
Device with Low Magnetic Susceptibility
|
Wang,
Greenwald, Xxxxxxxxx
|
10/914,
691. 8/9/2004
|
CIP
|
|
|
1
|
N
|
Materials
combining nanomagnetic and nanoresistive properties.
|
|
00
|
XX-000
|
Xxxxxxx
|
Medical
Device with Multiple Coating Layers
|
Wang,
Xxxxxxxxx
|
10/923,579,
8/20/2004
|
CIP
|
|
|
1,
2
|
N
|
Nanomagnetic
ablation enhancement particles.
|
|
51
|
XWHG-728
|
Nanoset
|
Implantable
Medical Device
|
Wang,
Xxxxxxxxx
|
10/950,148
9/24/2004
|
CIP
|
|
|
1
|
Y
|
Improved
stent imaging using nanomagnetic coatings.
|
|
00
|
XX-000
|
Xxxxxxx
|
Material
to Enable Magnetic Resonance Imaging of Implantable Medical
Devices
|
Wang,
Greenwald, Gray, Xxxxx Xxxx
|
Filed
9/15/04
|
Prov
|
|
|
N/A
- Provisional Application
|
Y
|
Improved
stent imaging using nanomagnetic coatings.
|
|
00
|
XX-000
|
Xxxxxxx
|
Xxxxx
& MRI Imaging Process (Errors in title)
|
Wang,
Xxxxxxxxx
|
10/974,412,
10/27/04
|
CIP
|
|
|
1,
2, 3
|
Y
|
Improved
stent imaging using nanomagnetic
coatings.
|
X-0
|
Xxxxx
#
|
Xxxxxx
#
|
Xxxxxxxx
|
Invention
|
Inventors
|
Applic/SN
|
Type
|
Pub
#/Date
|
Patent
No. if Issued
|
Independent
Claims & Primary Dependent Claims
|
Copy
|
General
Area of Market
Application
|
|
00
|
XX-000
|
Xxxxxxx
|
Xxxxxxx
for Visualizing Intervential Medical Devices
|
Wang,
Shellock
|
Filed
11/29/04
|
CIP
|
|
|
1,
38
|
Y
|
MRI
tracking markers for interventional surgical tools and other
devices.
|
|
55
|
|
License
Agreement (Xxxxxxx Xxxxx)
|
Metal
Filaments for Electromagnetic Interference Shielding
|
Chung,
Shui
|
|
Utility
|
|
5,827,997
|
1,
7, 9, 13
|
Y
|
Metallized
carbon filaments in polymer and other composites, as XX
xxxxxxx.
|
|
56
|
|
License
Agreement (Xxxxx Xxxxxxx)
|
ECG
Amplifier & Cardiac Pacemaker for Use During Magnetic Resonance
Imaging
|
Tsitlik,
Levin, Halperin, Weisfeldt
|
|
|
|
5,217,010
|
1,
3, 16, 19, 33, 35, 37
|
Y
|
Low-pass
RF filter for medical devices.
|
|
57
|
BTI-13-DIV
|
BTI
|
An
Electromagnetic Interference Immune Tissue Invasive System
|
Xxxxxxxx,
MacDonald
|
US-2005-0090886
A1, 4/28/2005
|
Div
|
|
|
|
N
|
|
|
58
|
1008
016 301 02 01
|
BTI
|
Electromagnetic
Interference Immune Pacing/Defibrillation Lead
|
MacDonald
|
|
Utility
|
|
|
|
N
|
|
|
59
|
1008
016 302 02 01
|
BTI
|
Electromagnetic
Interference Immune Pacing/Defibrillation Lead
|
MacDonald
|
|
Utility
|
|
|
|
N
|
|
|
60
|
1008
016 303 02 01
|
BTI
|
Electromagnetic
Interference Immune Pacing/Defibrillation Lead
|
MacDonald
|
|
Utility
|
|
|
|
N
|
|
|
61
|
1008
016 304 02 01
|
BTI
|
Electromagnetic
Interference Immune Pacing/Defibrillation Lead
|
MacDonald
|
|
Utility
|
|
|
|
N
|
|
|
62
|
1008
016 305 02 01
|
BTI
|
Electromagnetic
Interference Immune Pacing/Defibrillation Lead
|
MacDonald
|
|
Utility
|
|
|
|
N
|
|
|
63
|
1008
016 306 02 01
|
BTI
|
Electromagnetic
Interference Immune Pacing/Defibrillation Lead
|
MacDonald
|
|
Utility
|
|
|
|
N
|
|
|
64
|
1008
016 307 02 01
|
BTI
|
Electromagnetic
Interference Immune Pacing/Defibrillation Lead
|
MacDonald
|
|
Utility
|
|
|
|
N
|
|
|
65
|
1008
016 308 02 01
|
BTI
|
Electromagnetic
Interference Immune Pacing/Defibrillation Lead
|
MacDonald
|
|
Utility
|
|
|
|
N
|
|
|
66
|
1008
016 309 02 01
|
BTI
|
Electromagnetic
Interference Immune Pacing/Defibrillation Lead
|
MacDonald
|
|
Utility
|
|
|
|
N
|
|
|
67
|
1008
016 310 02 01
|
BTI
|
Electromagnetic
Interference Immune Pacing/Defibrillation Lead
|
MacDonald
|
|
Utility
|
|
|
|
N
|
|
|
00
|
0000
000 000 02 01
|
BTI
|
Magnetic
Resonance Imaging Interference Immune Device
|
Xxxx
|
|
Prov
|
|
|
|
N
|
|
|
69
|
1008
023 201 02 01
|
BTI
|
Electromagnetic
Resonant Circuit Sleeve for Implantable Medical Device
|
Gray,
MacDonald, Weiner
|
|
Prov
|
|
|
|
N
|
|
|
70
|
RG-793
|
BTI
|
Device
Compatible with Magnetic Resonance Imaging
|
Gray,
Cope, Glocker
|
|
Utility
|
|
|
|
N
|
|
|
71
|
RWG-830
|
BTI
& Nanoset
|
Stent
& MR Imaging Process & Device
|
Xxxx,
Xxxxxxxxx
|
|
Utility
|
|
|
|
N
|
|
|
00
|
XXX-000
|
Xxxxxxx
|
Coated
Stent Assembly & Coating Materials
|
Helfer,
Wang, Gray, Xxxxxxxxx
|
|
CIP
|
|
|
|
N
|
|
|
00
|
XXX-000
|
Xxxxxxx
|
Xxxxxxxxxxxx
Shielded Conductor
|
Helfer,
Wang
|
|
CIP
|
|
|
|
N
|
|
|
00
|
XX-000
|
Xxxxxxx
|
Coated
Stent & MR Imaging Thereof
|
Wang,
Gray, Helfer
|
|
CIP
|
|
|
|
N
|
|
A-5
|
Asset
#
|
Docket
#
|
Assignee
|
Invention
|
Inventors
|
Applic/SN
|
Type
|
Pub
#/Date
|
Patent
No. if Issued
|
Independent
Claims & Primary Dependent Claims
|
Copy
|
General
Area of Market
Application
|
|
75
|
XW-798
|
Nanoset
|
Coated
Substrate Assembly
|
Wang,
Xxxxxxxxx
|
|
CIP
|
|
|
|
N
|
|
|
76
|
XW-803
|
Nanoset
|
Cylindrical
Sputtering Apparatus
|
Wang
|
|
Prov
|
|
|
|
N
|
|
|
00
|
XX-000
|
Xxxxxxx
|
Coated
Substrate Assembly
|
Wang,
Xxxxxxxxx
|
|
CIP
|
|
|
|
N
|
|
|
00
|
XX-000
|
Xxxxxxx
|
Xxxxxxxxxxxx
Shielded Conductor
|
Wang
|
|
CIP
|
|
|
|
N
|
|
|
00
|
XX-000
|
Xxxxxxx
|
MRI
Imageable Medical Device
|
Wang,
Xxxxxxxxx
|
|
CIP
|
|
|
|
N
|
|
|
00
|
XX-000
|
Xxxxxxx
|
MRI
Imageable Medical Device
|
Wang,
Xxxxxxxxx
|
|
CIP
|
|
|
|
N
|
|
|
00
|
XX-000
|
Xxxxxxx
|
Medical
Device with a Marker
|
Wang,
Xxxxxxxxx
|
|
CIP
|
|
|
|
N
|
|
|
00
|
XX-000
|
Xxxxxxx
|
Xxxxx
Xxxxxxxxxxx
|
Xxxx,
Xxxxxxxxx, Weiner
|
|
CIP
|
|
|
|
N
|
|
|
00
|
XX-000
|
Xxxxxxx
|
Xxxxxxx
Xxxxxx
|
Xxxx,
Xxxxxxxxx
|
|
CIP
|
|
|
|
N
|
|
|
00
|
XX-000
|
Xxxxxxx
|
Xxxxxxx
Xxxxxx
|
Xxxx,
Xxxxxxxxx
|
|
CIP
|
|
|
|
N
|
|
|
00
|
XX-000
|
Xxxxxxx
|
Process
for Coating a Substrate
|
Wang,
Xxxxxx
|
|
CIP
|
|
|
|
N
|
|
|
00
|
XX-000
|
Xxxxxxx
|
Medical
Device
|
Wang,
Xxxxxxxxx
|
|
Prov
|
|
|
|
N
|
|
|
87
|
MPS101US
|
Simag
GmbH
|
Stent
& MR Imaging Process for the Imaging & the Determination of the
Position of a Stent
|
Xxxxxx,
Xxxxx
|
|
Utility
|
|
6,280,385
8/28/2001
|
|
N
|
|
|
88
|
MPS102US
|
Simag
GmbH
|
MR
Imaging Method & Medical Device for Use in Method
|
Xxxxxx,
Xxxxx
|
|
Utility
|
|
6,847,837
1/25/2005
|
|
N
|
|
|
89
|
MPS104US
|
Simag
GmbH
|
Magnetic
Resonance Apparatus & Method for Determing the Location of a
Postionable Object in a Subject
|
Wendt,
Busch, Bornstedt, Seibel, Groenemeyer
|
|
Utility
|
|
6,023,636
2/8/2002
|
|
N
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
A
|
Trade
Xxxx
|
BTI
|
Biophan
|
|
|
Applic.
|
|
|
|
N
|
|
|
B
|
Service
Xxxx
|
BTI
|
Biophan
|
|
|
Applic.
|
|
|
|
N
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
Note:
patents assigned to Nanoset and Simag GmbH are under exclusive
license to
Biophan for medical applications.
|
|||||||||||
A-6
EXHIBIT
B
EXISTING
LICENSE AGREEMENTS
|
(i)
|
AMP-Biophan
License Agreement dated February 24,
2005
|
|
(ii)
|
License
Agreement between The Xxxxx Xxxxxxx University and Biophan dated
May 17,
2002.
|
|
(iii)
|
License
Agreement between Xxxxxxx X. Xxxxx and Xxxxxxxx Xxxx and Biophan
dated
April 5, 2002.
|
|
(iv)
|
License
Agreement between Nanoset, LLC and Biophan dated January 15,
2004.
|
B-1
EXHIBIT
C
|
Exclusive
Products Category
|
Product/Services
Category
|
Royalty
|
|
1
|
Vascular
stents including coronary, neuro or peripheral applications of coated
or
uncoated stents
|
3.0%
(Drug Coated)
4%
(Non-Drug Coated)
|
|
2
|
Embolic
protection devices, aneurysm coils and all other vascular implants
(other
than stents)
|
3.0%
(Drug Coated)
4%(Non-Drug
Coated)
|
|
3
|
RF
ablation probes and ablation fluid
|
4.0%
|
|
Non-Exclusive
Products Category
|
Product/Services
Category
|
Royalty
|
|
1
|
Biopsy
needles, including aspiration, cutting needles and breast localization
needles
|
5.0%
|
|
2
|
Interventional
guidewires (for use in all applications)
|
5.0%
|
|
3
|
Interventional
vascular catheters (<6 hours), including PTCA, predilation,
etc.
|
5.0%
|
|
4
|
Indwelling
vascular catheters (>6 hours), including CVC, PICC, etc.
|
5.0%
|
|
5
|
Pacemakers,
including leads
|
5.0%
|
|
6
|
Implantable
cardiac defibrillators and related devices, including their
leads
|
5.0%
|
|
7
|
Auditory
implants, e.g. cochlear implants
|
3.0%
|
|
8
|
Neuro
stimulation including deep brain
|
5.0%
|
C-1
EXHIBIT
D
aMRIs
Patent GmbH and aMRIs Patente GmbH & Co. KG Acknowledgement and
Waiver
aMRIs
Patent GmbH (“AMP”)
and
aMRIs Patente GmbH & Co. KG (“KG”) are aware that Biophan Technologies, Inc.
(“Biophan”)
and
Boston Scientific Scimed (“BSS”)
are
entering into a transaction under which, among other things, Biophan is
sublicensing its rights under the AMP-Biophan License Agreement entered into
by
AMP and Biophan on February 24, 2005 (the “Agreement”)
to
BSS.
The
completion of the aforementioned transaction is dependent on BSS’s receipt of
this signed acknowledgement and waiver from AMP.
With
respect to the sublicense between Biophan and BSS, AMP and KG each hereby
expressly and irrevocably waives (i) the requirement under Section 2.2 of the
Agreement that “Sublicenses shall require reasonable due diligence in
development and commercialization of Licensed Products and Services”; (ii) the
indemnification requirement under Section 9.1 of the Agreement; and (iii) the
insurance requirement under Section 9.3 of the Agreement.
AMP
and
KG each acknowledges that to its knowledge, the Agreement is valid and in full,
force and effect.
AMP
and
KG each acknowledges that it is not aware of any breach of the Agreement by
Biophan.
AMP
and
KG each acknowledges that Biophan has the right to sublicense its rights under
the Agreement to BSS (and hereby consents to such sublicense) and in the event
the Agreement is terminated, the sublicense to BSS will remain valid and in
full, force and effect in accordance with Sections 2.2 and 11.4 of the
Agreement.
Dated:
June
,2005
aMRIS
Patente GmbH
By__________________________
Xxxxxxx
Xxxxxx, Ph.D.
Title: ______________________
aMRIS
Patente GmbH and Co. KG
By__________________________
Xxxxxxx
Xxxxxx, Ph.D.
Title:_________________________
D-1
The
Xxxxx Xxxxxxx University Acknowledgement
The
Xxxxx
Xxxxxxx University (“JHU”)
is
aware that Biophan Technologies, Inc. (“Biophan”)
and
Boston Scientific Scimed (“BSS”)
are
entering into a transaction under which, among other things, Biophan is
sublicensing its rights under the License Agreement entered into by JHU and
Biophan on May 17, 2002 (the “Agreement”)
to
BSS.
The
completion of the aforementioned transaction is dependent on BSS’s receipt of
this signed acknowledgement from JHU.
JHU
acknowledges that to its knowledge, the Agreement is valid and in full, force
and effect.
JHU
acknowledges that it is not aware of any breach of the Agreement by
Biophan.
JHU
acknowledges that Biophan has the right to sublicense its rights under the
Agreement to BSS and in the event the Agreement is terminated, the sublicense
to
BSS will remain valid and in full, force and effect provided that BSS complies
with Section 6.6 of the Agreement.
Date:_______________
____________________________
Name:
______________________
Title: ______________________
D-2
Xxxxx/Shui
Acknowledgement
Xxxxxxx
X. Xxxxx and Xxxxxxxx Xxxx (collectively “Licensor”)
are
aware that Biophan Technologies, Inc. (“Biophan”)
and
Boston Scientific Scimed (“BSS”)
are
entering into a transaction under which, among other things, Biophan is
sublicensing its rights under the License Agreement entered into by Licensor
and
Biophan on April 5, 2002 (the “Agreement”)
to
BSS.
The
completion of the aforementioned transaction is dependent on BSS’s receipt of
this signed acknowledgement from Licensor.
Licensor
acknowledges that to its knowledge, the Agreement is valid and in full, force
and effect.
Licensor
acknowledges that it is not aware of any breach of the Agreement by
Biophan.
Licensor
acknowledges that Biophan has the right to sublicense its rights under the
Agreement to BSS and in the event the Agreement is terminated, the sublicense
to
BSS will remain valid and in full, force and effect in accordance with Section
6.02 of the Agreement.
Date:_______________ Date:_______________
____________________________ ____________________________
Name:
______________________ Name:
______________________
Title: ______________________ Title: ______________________
D-3
Nanoset,
LLC Acknowledgement
Nanoset,
LLC (“Nanoset”)
is
aware that Biophan Technologies, Inc. (“Biophan”)
and
Boston Scientific Scimed (“BSS”)
are
entering into a transaction under which, among other things, Biophan is
sublicensing certain of its rights under the License Agreement entered into
by
Nanoset and Biophan on January 15, 2004 (the “Agreement”)
to
BSS.
The
completion of the aforementioned transaction is dependent on BSS’s receipt of
this signed acknowledgement from Nanoset.
Nanoset
acknowledges that to its knowledge, the Agreement is valid and in full, force
and effect.
Nanoset
acknowledges that it is not aware of any breach of the Agreement by
Biophan.
Nanoset
acknowledges that Biophan has the right to sublicense its rights under the
Agreement to BSS and in the event the Agreement is terminated, the sublicense
to
BSS will remain valid and in full, force and effect provided that BSS assumes
the relevant obligations of Biophan in the Agreement.
Date:_______________
____________________________
Name:
______________________
Title: ______________________
D-4
EXHIBIT
E
Exclusive
License Acknowledgement
WHEREAS
pursuant to that certain License Agreement dated ______________ (the
“License
Agreement”)
Biophan Technologies, Inc., a corporation organized under the laws of Nevada
(“Biophan”)
granted to Boston Scientific Scimed, a corporation organized under the laws
of
Delaware (“BSS”)
(each,
a “Party”,
and
collectively the “Parties”),
inter
alia,
an
exclusive license to certain patents.
WHEREAS
the Parties have agreed to execute this Exclusive License
Acknowledgement.
NOW,
THEREFORE, in consideration of the premises and the mutual representations,
agreements and covenants set forth in the License Agreement, and for other
good
and valuable consideration, the receipt and sufficiency of which are hereby
acknowledged, the Parties agree and acknowledge as follows:
Section
1.01 Definitions.
Capitalized
terms used herein but not defined herein shall have the meaning set forth in
the
License Agreement.
Section
1.02 Acknowledgement.
Pursuant
to the terms and conditions of the License Agreement, Biophan granted to BSS,
inter
alia,
an
exclusive license to the Patents listed in Schedule A hereto.
| BIOPHAN TECHNOLOGIES, INC. | ||
| |
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| By: | ||
|
Name: |
||
| Title: | ||
| BOSTON SCIENTIFIC SCIMED | ||
| |
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|
| By: | ||
|
Name: |
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| Title: | ||
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