Exhibit 10.3
Patents licensing agreement with Itzhak Tavori dated August 14, 2004
AGREEMENT
This Agreement is made as of August 14, 2004 by and between
Itzhak Tavori, a citizen of Israel, ID 55723027 from 00 Xxxxx Xx., Xxxxxxxx,
Xxxxxx, Fax 00-0000000, ("Tavori"), and
Voice Diary Inc, a Delaware company, EIN 00-0000000, from 000 Xxxxxxx Xxxx,
Xxxxxxx XX 00000, XXX, Fax 000-000-0000 (the "Company").
WHERAS, Tavori solicited business relationship between the and Natali (the
company for emergency medicine in Israel) Ltd ("Natali") (the "Solicitation");
WHEREAS, Tavori is the inventor and sole owner to several patents for the
invention Portable Xxxxx Xxxxx Monitor (the "Invention"), as described in U.S.
Patent No. 5724025 and EU Patent application Number 97102255.3 (the "Patents");
and
WHEREAS, the Company, is desirous of acquiring rights, title and interest in the
Invention and the Patents and Tavori wishes to sell to the Company rights, title
and interest in the Invention and Patents, under the terms and conditions of
this agreement; and
WHEREAS, the parties want to collaborate in the development of a cellular EKG
device or other products that make use of the Invention or the Patents (the
"Products");
Now therefore the parties agree as follows:
1. Solicitation fee
a. For the solicitation the Company will issue Tavori 180,941 options
representing 2% of all the issued shares of Class A Common Stock of
the company as of the date of this agreement, to purchase shares of
Class A Common Stock of the Company under its 2003 Stock Option Plan
exercisable under the terms of the Stock Option Agreement to be
signed concurrently with this agreement. The stock will be issued
not later then 15 Sep. 2004.
b. In addition, the Company will allocate to Tavori 45,235 shares of
Class A Common Stock of the Company, representing 0.5% of all the
issued shares of Class A Common Stock of the company as of the date
of this agreement, at par value, or part there-off for each of the
first six orders of $500,000 or part there-off that the Company will
receive from Natali or any other customer above the initial order
that the Company already have received from Natali.
2. Non-exclusive license
a. Tavori hereby grants the Company a world-wide non-exclusive license to
exploit the Invention and the Patents, to make, have made, use, sell,
offer for sale, export and import the Products (the "Non-exclusive
License").
b. The Non-exclusive License is granted by Tavori to the Company in
consideration of payments of 3% from the sales of the Products (the
"Royalties") until the total amount of such payments made by the Company
to Tavori shall equal $400,000.
3. Assignment of the Patents, Consideration.
1
a. Tavori hereby agrees that when the amount of the Royalties paid by
the Company to Tavori will be equal or greater than $300,000 Tavori
will irrevocably sell, assign and transfer to the Company all the
rights, the entire rights, title, and interest in and to the Patents
and the Invention, including but not limited to, the patent claims,
the rights to prepare derivative works, all goodwill, the rights to
assign all the hereby assigned rights, and all other rights (the
"assignment"), to be held and enjoyed by the Company for its own use
and for his legal representatives, successors and assigns, to the
full end of the term for which said Patent is granted, as fully and
entirely as the same would have been held by Tavori had this
assignment and sale not been made, and further the Company will be
granted under the Assignment an exclusive, royalty-free (except as
provided under 2.d above), worldwide, assignable license (with the
right to grant sublicenses) to the Invention and Patents, until such
time that the assignment to the Company becomes effective.
b. Tavori shall receive 50% of all monies or assets, in whatever form,
that the company shall receive resulting from a law suit filed on
account of the breach of the Patents for which an enforceable
decision shall be made by a competent court, or from any other
business opportunity including, but not limited to, sub-licensing,
sub-contracting, selling of rights, selling of order, or else. Such
payment shall be made only on account of monies or assets fully
obtained by the Company.
4. Position
If the Company will raise two million dollar or more, in one round or
more, to finance the development of the Products, then Tavori will become
the Vice President of the Company. His duties and considerations will be
formalized in a suitable employment contract between the parties as
customary in the medical device market. The employment will be for at
least two years. As part of his employment benefits Tavori will receive
stock options for 2% of the outstanding shares of the Company, at nominal
price, vested over two years.
5. Representations and Warranties of Tavori
a. Tavori has the right, power and authority to enter into this
Agreement.
b. Tavori is the exclusive owner of all right, title and interest,
including all intellectual property rights, in the Invention and the
Patents. The Invention and Patents are free of any liens, security
interests, encumbrances or licenses. The Invention and Patents do
not infringe the rights of any person or entity, as determined by
the USPTO, EU or PCT application. There are no claims, pending or
threatened, with respect to Tavori's rights in the Invention and
Patents.
c. This Agreement is valid, binding and enforceable in accordance with
its terms.
d. Tavori is not subject to any agreement, judgment or order
inconsistent with the terms of this Agreement.
6. Representations and Warranties of the Company
a. The Company has the right, power and authority to enter into this
Agreement and it obtained all necessary authorizations binding the
Company to enter into this Agreement.
b. The Company holds an order for 2,500 units in aggregate amount of
$750,000 for a cellular EKG device from Natali and t he Company
intends to use the Patent and Invention to develop said and similar
products.
c. This Agreement is valid, binding and enforceable in accordance with
its terms.
2
d. The Company is not subject to any agreement, judgment or order
inconsistent with the terms of this Agreement.
7. Agreement to Perform Necessary Acts The parties agree to perform all and
any further acts and execute and deliver any document that may be
reasonably necessary to carry out the provisions of this Agreement.
8. Entire Agreement This Agreement, contains the entire understanding and
agreement between the parties hereto with respect to its subject matter
and supersedes any prior or contemporaneous written or oral agreements,
representations or warranties, between them, with respect to the subject
matter hereof.
9. Cancellation of the Assignment The Assignment shall be cancelled and
become void in either of the following cases in which case the Patent and
all rights licensed or assigned hereunder (whether present or future
rights, whether direct or derivative) in full shall return to Tavori:
a. The Company decides to abandon its plan to develop or market the
Products, or does not perform required activities to promote the
product.
b. In the event of a material breach by the Company of this Agreement
not remedied within 30 days from receipt of a written notice
specifying the nature of breach.
c. If the Company shall make an assignment of its assets for the
benefit of its creditors.
d. If proceedings are commenced for the Company under any bankruptcy,
insolvency, or debtor's relief law, provided that such proceeding or
order for their execution has not been canceled within 30 days
subsequent to the filing date thereof.
e. If the Company was liquidated or dissolved.
f. If the Company fails to pay agreed considerations at the dates
stipulated clause 3,4
10. Amendment This Agreement may be amended only by a writing signed by both
parties.
11. Severability If any term, provision, covenant or condition of this
Agreement, or the application thereof to any person, place or
circumstance, shall be held by a court of competent jurisdiction to be
invalid, unenforceable or void, the remainder of this Agreement and such
term, provision, covenant or condition as applied to other persons, places
and circumstances shall remain in full force and effect.
12. Headers Headers used in this agreement shall have no bearing on its
interpretation.
13. Governing Law This Agreement shall be construed in accordance with the
laws of the State of New York.
14. Notices Notices under this Agreement shall be sufficient if personally
delivered, or delivered by a major commercial rapid delivery courier
service, or sent by facsimile, or mailed by certified or registered mail,
return receipt requested, to a party at its addresses set forth above.
3
IN WITNESS WHEREOF, the parties have executed this Agreement
Tavori _________________________
The Company ________________________
4
