ASSIGNMENT AGREEMENT
Exhibit 10.8
This
Agreement made as of
6th June 2000 is by and between XX. XXXXXXXX CHAIN of 000
Xxxxxxxx Xx., Xxxxxx XXXX 0XX, XX (the “Assignor”) and MINDSET BIOPHARMACEUTICALS (USA), INC. a Delaware corporation, having an office
at c/o Miller, Canfield, Paddock and Stone P.L.L.C., 0000 Xxxxxxxx, Xxx Xxxx, Xxx Xxxx 00000 (the
“Assignee”)
WHEREAS, Assignor has made certain inventions relating to chimeric peptides which are
described in a patent application identified in Schedule A attached hereto (the “Patent
Application”);
WHEREAS, Assignor desires to sell, assign, transfer and convey to Assignee, its successors
and assigns, Assignor's entire right, title and interest throughout the world in and to the
aforesaid Patent Application and patents issuing thereon to the full end of the term or terms of
any said patents;
AssigneeAssigneeAssignor;
NOW, THEREFORE, in consideration of the mutual promises and agreements contained herein, the
parties hereto hereby agree as follows:
1. Definitions
(a) “Calendar Year” shall mean any consecutive period of twelve
months commencing on the first day of January of any year.
(b)
“Assignee Entity” shall mean any company or other legal entity which controls, or is controlled by, or is under common control with, Assignee; control
means the holding of twenty five and one tenth percent (25.1%) or more of (i) the capital
and/or (ii) the voting rights and/or (iii) the right to elect or appoint directors,
(c) “Date of First Commercial Sale” shall mean the date the Product is first sold, marketed, or publically made available for sale. Product distributed or used for
clinical trial purposes shall not be considered sold, marketed or made publicly available for sale and
shall not constitute first commercial sale
(d) “Product” shall mean all products, drugs, diagnostic reagents, diagnostic methods, therapeutic agents and therapeutic methods
covered in whole or in part by a Valid Claim contained in any Patent in the country in which any
such product or any part thereof is made, used or sold or a method which is covered in whole or
in part by a Valid Claim contained in any Patent Rights in the
country in which any such process is used or in which such product or part thereof is used
or sold.
(e) “Net Sales” shall mean the total amount invoiced in connection with
sales of the Product to any person or entity that is not a Assignee Entity or a
licensee or sublicensee of Assignee or a Assignee Entity, after deduction of all of the following
to the extent applicable to such sales:
less: (A) credits and allowances or adjustments (consistent with generally accepted
accounting principles,) granted to such customers on account of rejections, recalls or
returns of the Product previously sold; and (B) any trade and cash discounts, rebates,
including government rebates, granted in connection with sale of Product to such customers;
(C) sales, tariff duties and/or use taxes directly imposed and with reference to particular
sales; and (D) outbound transportation prepaid or allowed, amounts allowed or credited on
returns, export licenses, import duties, value added tax, and prepaid freight.
(f) “Payment Term” shall mean the period of time commencing on the
date hereof and continuing on a country-by-country basis, if not previously terminated
under the terms of this Agreement, for fifteen (15) years) from the Date of First
Commercial Sale in such country or until the expiration date of the Patent, whichever
shall be later.
(g) Valid Claim” shall mean a claim of the Patent which has not expired and which has
not been held revoked, invalid or unenforceable by decision of a court or other governmental
agency of competent jurisdiction, unappealable or unappealed with the time allowed for
appeal having expired, and which has not been admitted to be invalid through reissue or
disclaimer or otherwise.
2. Payments for Assignment
(a) In consideration for the assignment of the Patent Application by
Assignor to Assignee, and during the Payment Term, with respect to each Product,
Assignee shall pay to Assignor a royalty of one and one half per cent (1.5%) of the Net
Sales of Assignee or of any Assignee Entity or of a licensee or sublicensee of Patents
of Assignee or any Assignee Entity, Assignee shall inform Assignor in writing of the Date
of First Commercial Sale with respect to each Product in each country as soon as
practicable after making of each such First Commercial Sale.
(b) For
the purpose of computing the royalties due to Assignor hereunder, the year shall be divided into two parts ending on June 30 and
December 31. Not later than ninety (90) days after each December and June in each
Calendar Year during the Payment Term, Assignee shall submit to
Assignor a full and
detailed report of royalties or payments due Assignor under the terms of this Agreement
for the preceding half year (hereinafter “the Half-Year Report”), setting forth the Net Sales upon
which such royalties are computed and including at least
| (i) | the quantity of Products used, sold, transferred or otherwise disposed of; | ||
| (ii) | the selling price of each Product; | ||
| (iii) | the deductions permitted under subsection 1.e. hereof to arrive at Net Sales; and | ||
| (iv) | the royalty computations and subject of payment. |
If no
royalties or other payments are due, a statement shall be sent to Assignor stating such fact.
Payment of the full amount of any royalties or other payments due to
Assignor for the preceding
half year shall be made on even date with each Half-Year Report on royalties and payments.
(c) Within ninety (90) days after the end of each Calendar Year,
commencing on the Date of First Commercial Sale Assignee shall
furnish Assignor with a
report (hereinafter “the Annual Report”), certified by the President or Chief Financial
Officer of Assignee relating to the royalties and other payments due
to Assignor pursuant
to this Agreement in respect of the Calendar Year covered by such Annual Report and
containing the same details as those specified in Section 3.b. above in respect of the Half-Year Report.
(d) On
reasonable notice and during regular business hours, Assignor or
the authorized representative of Assignor shall each have the right to inspect the books of
accounts, records and other relevant documentation of Assignee or of Assignee Entity
insofar as they relate to the production, marketing and sale of the Products, in order to
ascertain or verify the amount of royalties and other payments due to
Assignor hereunder,
and the accuracy of the information provided to Assignor in the aforementioned reports.
Method of Payment
(e) Royalties
and other payments due to Assignor hereunder shall be paid to
Assignor in United
States dollars. Any such royalties on or other payments relating to transactions in a foreign
currency shall be converted into United States dollars based on the closing buying rate of the
Xxxxxx Guaranty Trust Company of New York applicable to transactions under exchange regulations for
the particular currency on the last business day of the accounting period for which such royalty or
other payment is due.
3. Liability and Indemnification
(a) Assignee
shall indemnify, defend and hold harmless Assignor and his
heirs and assigns (the “Indemnitees”), against any liability, damage, loss or expense
(including reasonable attorneys’ fees and expenses of litigation) incurred by or imposed
upon the Indemnitees or any one of them in connection with any claims, suits, actions,
demands or judgments (i) arising out of the design, production, manufacture, sale, use in
commerce or in human clinical trials, lease, or promotion by Assignee or by licensees or
sublicensees, Assignee Entity or agent of Assignee of any Product, process or service
relating to, or developed pursuant to, this Agreement or (ii) arising out of any other
activities to be carried out pursuant to this Agreement.
(b) With respect to an Indemnitee, Assignee’s indemnification under
subsection (a) of this Section 4 shall not apply to any liability, damage, loss or expense
to the extent that it is attributable to the negligent activities or willful default of any
such Indemnitee.
Assignee
agrees, at its own expense, to provide attorneys reasonably acceptable to Assignor to
defend against any actions brought or filed against any Indemnitee with respect to the subject of
indemnity to which such Indemnitee is entitled hereunder, whether or not such actions are
rightfully brought and Assignee shall have conduct of the defense to any such actions.
4. Expiry and Termination
(a) This Agreement shall expire upon the expiration of the Payment
Term in all countries.
(b) Any amount payable hereunder by Assignee to Dr. Chain, which has
not been paid by the date on which such payment is due, shall bear interest from such
date until the date on which such payment is made, at the rate of two percent (2%) per
annum in excess of the prime rate prevailing at the Citibank, N.A., in New York, during
the period of arrears and such amount and the interest thereon may be set off against any
amount due, whether in terms of this Agreement or otherwise, to the party in default by
any non-defaulting party.
(c) Termination of this Agreement shall not relieve either party of any obligation to the
other party incurred prior to such termination.
Representation and Warranties by Assignee
Assignee
hereby represents and warrants to Assignor as follows:
(1) Assignee is a corporation duly organized, validly existing and in good
standing under the laws of the State of Delaware. Assignee has been granted all requisite
power and authority to carry on its business and to own and operate its properties and
assets. The execution, delivery and performance of this Agreement have been duly
authorized by the Board of Directors of Assignee.
(2) There is no pending or, to Assignee’s knowledge, threatened litigation
involving Assignee which would have any effect on this Agreement or on Assignee’s
ability to perform its obligation hereunder; and
(3) There is no indenture, contract, or agreement to which Assignee is a party
or by which Assignee is bound which prohibits or would prohibit the execution and
delivery by Assignee of this Agreement or the performance or observance by Assignee of
any term or condition of this Agreement.
5. Miscellaneous
(a) If any provision of this Agreement is determined to be invalid or
void, the remaining provisions shall remain in effect.
(b) This Agreement shall be deemed to have been made in the State of
New York and shall be governed and interpreted in all respects under the laws of the
State of New York.
(c) Any dispute arising under this Agreement shall be resolved in an
action in the courts of New York State or the federal courts located in New York State,
and the parties hereby consent to personal jurisdiction of such courts in any action.
(d) All payments or notices required or permitted to be given under this
Agreement shall be given in writing and shall be effective when either personally
delivered or deposited, postage prepaid, with a national postal service by registered or
certified mail (airmail if international), addressed as follows:
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To Dr. B. Chain:
|
000 Xxxxxxxx Xx. | |
| Xxxxxx XXXX 0XX | ||
| XX | ||
To Assignee
|
Assignee Biopharmaceuticals (USA) Inc. | |
| 0 Xxxxxxxx Xxxxxx | ||
| Xxxxxxxx 00 | ||
| Xxx Xxxxx Xxxxxxxxx 97774 Israel | ||
| Attention: Xx. Xxxxxx Chain |
or such other address or addresses as any party may hereafter specify by written notice to the
others. Such notices and communications shall be deemed effective on the date of delivery or
fourteen (14) days after having been sent by registered or certified mail, whichever is earlier.
(e) This Agreement (and the annexed Schedule) constitute the entire
Agreement between the parties and no variation, modification or waiver of any of the
terms or conditions hereof shall be deemed valid unless made in writing and signed by all
parties hereto. This Agreement supersedes any and all prior agreements or
understandings, whether oral or written, between Assignee and
Assignor in connection
with the subject matter hereof.
(f) No waiver by any party of any non-performance or violation by any
other party of any of the covenants, obligations or agreements of such other party
hereunder shall be deemed to be a waiver of any subsequent violation or non-performance of the same or any other covenant, agreement or obligation, nor shall
forbearance by any party be deemed to be a waiver by such party of its rights or remedies
with respect to such violation or non-performance.
(g) The descriptive headings contained in this Agreement are included
for convenience and reference only and shall not be held to expand, modify or aid in the
interpretation, construction or meaning of this Agreement.
(h) It is not the intent of the parties to create a partnership or joint venture or to assume
partnership responsibility or liability. The obligations of the parties shall be limited to those
set out herein and such obligations shall be several and not joint.
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IN WITNESS whereof the parties hereto have executed this Agreement the day and year first
above written.
| /s/ B. Chain | ||||
| Xx. Xxxxxxxx Chain |
LONDON
UK
On
this
6th day of June 2000, personally appeared B.Chain, to me known and
know to me to be , the assignor above named, and acknowledged that he executed the foregoing Assignment on behalf of said assignor pursuant to
authority duly received.
| /s/ Xxxxxxxx Xxxxxx | ||||||
| Witness | ||||||
| Xxxxxxxx Xxxxxx | ||||||
| 000 Xxxxxxxx Xx., Xxxxxx | ||||||
| Xxxxxx Xxxxxxxxxxxxxxxxxx (XXX), Inc. | ||||||
| By: | /s/ Xxxxxx Chain | |||||
| Name: Xxxxxx Chain | ||||||
| Title: President | ||||||
STATE
OF ) |
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) |
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COUNTY
OF
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