Exhibit 10.8
EXCLUSIVE LICENSE
This License Agreement (the "License Agreement") is made the 4th day of
April, 2003 between Xxxxxxx X. Xxxxxxxx, an individual with an address at c/o
Plastic Surgery Center, 00 Xxxxxx Xxxx, Xxxxxxxxx, Xxx Xxxxxx 00000, New Jersey
("Giampapa") and Kronogen Sciences Inc. a corporation of the state of Delaware
having a place of business at 000 Xxxxxxxxx Xxxxxx, 00xx Xxxxx, Xxx Xxxx, Xxx
Xxxx 00000 (hereinafter "KRONOGEN SCIENCES").
RECITALS:
KRONOGEN SCIENCES is in the anti-aging/age management business (the
"Business") and is developing products and programs in connection therewith; and
Giampapa is the owner of certain patents and processes some of which
relate to the Business; and
Giampapa has transferred to KRONOGEN SCIENCES all of his intellectual
property related to the Business under or in connection with an Asset Transfer
Agreement dated as of April __, 2003 by and among, KRONOGEN SCIENCES, Giampapa
and The Giampapa Institute For Anti-Aging Medical Therapy ("Transfer
Agreement"), except that patents related to the Business shall be subject to the
terms hereof; and
KRONOGEN SCIENCES desires to license from Giampapa, and Giampapa desires
to license to KRONOGEN SCIENCES, Xxxxxxxx'x patents related to the Business
under the terms and conditions of this License Agreement.
In consideration of the mutual covenants, representations, warranties, and
promises of the parties hereto, the receipt and legal sufficiency of which is
hereby acknowledged, and intending to be legally bound hereby, the parties
hereto represent, warrant, covenant and agree as follows:
1. Incorporation of Recitals. The above recitals are incorporated herein as
if fully set forth below.
2. License Grant. Giampapa grants to KRONOGEN SCIENCES under the Licensed
Patents (defined below), and for the life of the Licensed Patents, an
exclusive, irrevocable, worldwide, transferable license, with the right to
sublicense, to practice the methods and to make, have made, use, offer to
sell, sell, import, export, and sell for export in connection with
KRONOGEN SCIENCES' business the inventions described or claimed in the
Licensed Patents.
(a) "Licensed Patents" means all patents, reissues of and reexamined
patents, and patent applications, whenever filed and wherever
issued, including without limitation, continuations,
continuations-in-part, substitutes, and divisions of such
applications and all priority rights resulting from such
applications, owned by Giampapa or for which Giampapa has the right
to grant licenses of the scope of the licensed granted in this
License Agreement that are related to the Business, including
without limitation, the patents identified in Schedule 2(a).
Licensed Patents also includes without limitation, any discovery,
idea, design, or invention that (a) the unlicensed making, having
made, use, offering to sell, selling, importing, exporting, or
selling for export of which would infringe one or more of the
Licensed Patents; (b) performs the same function as a product or
service that is subject to any of the Licensed Patents; (c) is
useful or necessary to KRONOGEN SCIENCES' exercise of its rights
under this License Agreement; or (d) uses, incorporates, is derived
from, or is based on the inventions described or claimed in the
Licensed Patents or that could not be conceived, developed, or
reduced to practice but for the use of the inventions described or
claimed in the Licensed Patents.
3. Royalties.
(a) Certain Definitions.
(i) "Net Sales Price" means the amount actually received by
KRONOGEN SCIENCES for the sale of any Units, less (i) any
amounts received for freight or taxes, (ii) unreimbursed
delivery or shipping costs, (iii) amounts paid for
commissions, (iv) refunds for returns and rejections and (v)
any cash and trade discounts and other credits and allowances.
(ii) "Units" means products manufactured by or on behalf of
KRONOGEN SCIENCES which include as a component thereof
anything fabricated using the Licensed Patents, in such
minimum quantities as are packaged and sold at retail.
(b) Royalties on Sales. KRONOGEN SCIENCES will pay to Giampapa royalties
as follows:
(i) KRONOGEN SCIENCES shall pay Giampapa a royalty of 6% of the
Net Sales Price of Units sold by KRONOGEN SCIENCES that are
developed by Giampapa for KRONOGEN SCIENCES ("Royalties").
(ii) Royalties shall be due and payable to Giampapa based on each
Unit actually sold by KRONOGEN SCIENCES, less any returns and
allowances. No Royalty will be due and payable on any Units
shipped as promotional product where KRONOGEN SCIENCES does
not receive any payment; KRONOGEN SCIENCES will endeavor to
use good business judgment in regard to these Units, it being
acknowledged that the parties' intention in connection
therewith is to generate additional sales of Units and/or
goodwill.
(iii) Royalties due and payable hereunder shall be paid on a
quarterly basis within 45 days after the close of each
calendar quarter and, shall be accompanied by a written
statement setting forth sales information in respect of Units
sold during such quarter.
(iv) Giampapa or his authorized certified public accountant shall
have the right to examine the books, accounts and records of
KRONOGEN SCIENCES, from time to time up to two times per year,
at mutually agreed upon times and dates, to ensure that the
Royalty statements are complete, current and accurate in all
material respects and that any Royalties due hereunder have
been paid to Giampapa as required by this License Agreement.
4. Obligations, Agreements and Acknowledgements of Giampapa. Giampapa
covenants and agrees:
(a) Giampapa shall have no obligation or responsibility under this
License Agreement for the conduct of KRONOGEN SCIENCES' business,
except as expressly set forth in this License Agreement, it being
acknowledged that Giampapa has other obligations in respect of
KRONOGEN SCIENCES pursuant to the Transfer Agreement and the other
agreements referred to therein and contemplated thereby;
(b) to permit KRONOGEN SCIENCES to use his photograph or likeness in
marketing the Units;
(c) to provide KRONOGEN SCIENCES with Patent Numbers, where applicable,
on all products licensed to KRONOGEN SCIENCES;
(d) to fully disclose to KRONOGEN SCIENCES, and to otherwise hold in
strict confidence, any discovery, idea, design, invention, work of
authorship, or trademark, service xxxx, trade name, trade dress, or
other indicia of origin, related to the Business, whether or not
patentable and whether or not completed or reduced to practice, that
is conceived, developed or made by Giampapa, alone or jointly with
others during the term of this License Agreement, and any component
of any such thing (collectively "Work Product");
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(e) for the one year period following the disclosure in accordance with
Section 4(d) of Work Product related to the Licensed Patents (the
"Exclusive Period"), to grant rights to such Work Product equal to
the rights granted for Licensed Patents by this License Agreement to
KRONOGEN SCIENCES on such terms as the parties may mutually agree
and, for the one year period commencing immediately upon expiration
of the Exclusive Period, grant to KRONOGEN SCIENCES a right of first
refusal to acquire rights in such Work Product on terms no less
favorable than is offered to Giampapa by a bona fide third party;
(f) to not assert against KRONOGEN SCIENCES, or its vendees, mediate or
immediate, any claims for infringement of any patent based on the
manufacture, use, sale, offer for sale, or import of any apparatus
made or sold by KRONOGEN SCIENCES under the license granted in this
License Agreement;
(g) KRONOGEN SCIENCES shall have the right to sell any Units under
whatever trademarks, trade names, trade dress, service marks and the
like it shall deem appropriate or advisable, and all trademarks,
trade names, trade dress, service marks and the like under which
Units are sold shall remain the sole and exclusive property of
KRONOGEN SCIENCES;
(h) KRONOGEN SCIENCES, if it so elects, may apply for patents,
copyrights and/or trademarks relating to the Units, at its sole cost
and expense; and
(i) to use Xxxxxxxx'x best efforts to maintain the strict
confidentiality of all information relating to KRONOGEN SCIENCES'
businesses and affairs not otherwise available to the general
public, including, but not limited to, KRONOGEN SCIENCES'
development, manufacture and sale of any of the Units and to refrain
from disclosing the same to any person, without the prior written
consent to KRONOGEN SCIENCES, except as may be required by law,
government regulation or pursuant to governmental process; provided
that, prior to any such disclosure, Giampapa shall provide KRONOGEN
SCIENCES with reasonable notice thereof, as well as reasonable
opportunity to take appropriate steps to preserve the
confidentiality of such information.
5. Right to Terminate
(a) Giampapa shall have the right to terminate his obligations under
this License Agreement and this license, by written notice to
KRONOGEN SCIENCES, upon the occurrence of any one of the following
events:
(i) the breach of any material term, covenant, condition,
representation or warranty hereof by KRONOGEN SCIENCES that
has not been corrected within sixty (60) days after written
notice thereof has been provided by Giampapa to KRONOGEN
SCIENCES; provided, however, if the breach is not curable
within such sixty (60) day period, this license shall not
terminate hereunder if, during such period, KRONOGEN SCIENCES
commences (and thereafter takes reasonable steps to endeavor)
to cure such breach.
(ii) a voluntary petition is commenced by KRONOGEN SCIENCES under
the Bankruptcy Code, as amended, 11 U.S.C. ss. 101 et seq, or
any other law for the relief of debtors or protection of
creditors; KRONOGEN SCIENCES has an involuntary petition
commenced against it under such law and such petition is not
dismissed within 120 days after filing; KRONOGEN SCIENCES
becomes insolvent; or any substantial part of KRONOGEN
SCIENCES' property becomes subject to any levy, seizure,
assignment, application, or sale for or by any creditor or
governmental agency; or liquidates or otherwise discontinues
all or a significant part of its business operations.
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(b) KRONOGEN SCIENCES can terminate this License Agreement upon thirty
(30) days written notice to Giampapa.
(c) Unless earlier terminated, this License Agreement shall terminate
upon expiration of the last-expiring Licensed Patent (including any
patents that may be granted on any patent applications included in
the Licensed Patents).
(d) In the event of termination of this License Agreement, KRONOGEN
SCIENCES may manufacture into finished goods any raw materials,
including raw materials on order from its supplier, and to sell its
inventory of Units but will otherwise immediately cease utilizing
the rights granted under Section 2 of this License Agreement and
shall otherwise immediately cease selling and offering for sale, any
Units.
6. KRONOGEN SCIENCES Representations and Warranties. KRONOGEN SCIENCES hereby
represents and warrants to Giampapa as follows:
(a) that it is duly organized and validly existing under the laws of the
jurisdiction in which it was formed and has all power and all
material governmental licenses, authorizations, permits, consents,
and approvals required to carry on its business as now conducted;
(b) that the execution, delivery, and performance by KRONOGEN SCIENCES
of this License Agreement are within its powers and have been duly
authorized by all necessary action by KRONOGEN SCIENCES and that
this License Agreement constitutes a valid and binding agreement of
KRONOGEN SCIENCES enforceable against KRONOGEN SCIENCES in
accordance with its terms except as such enforceability may be
limited by applicable bankruptcy, insolvency, reorganization, or
other similar laws affecting creditors' rights generally and by
general equitable principles (regardless of whether enforcement is
sought in equity or at law); and
(c) that the execution, delivery, and performance by KRONOGEN SCIENCES
of this License Agreement require no action by or in respect of, or
filing with, any governmental body, agency, or official.
7. Giampapa Representations and Warranties. Giampapa hereby represents and
warrants to KRONOGEN SCIENCES as follows:
(a) that the execution, delivery, and performance by Giampapa of this
License Agreement are within his powers and that this License
Agreement constitutes a valid and binding agreement of Giampapa
enforceable against Giampapa in accordance with its terms except as
such enforceability may be limited by applicable bankruptcy,
insolvency, reorganization, or other similar laws affecting
creditors' rights generally and by general equitable principles
(regardless of whether enforcement is sought in equity or at law);
(b) that the execution, delivery, and performance by Giampapa of this
License Agreement require no action by or in respect of, or filing
with, any governmental body, agency, or official.
(c) that he has the full legal right to grant to KRONOGEN SCIENCES the
licenses granted under this License Agreement;
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(d) that prior to the date of this License Agreement, no license,
covenant not to xxx, or any other right under any Licensed Patent
has been granted to any third party.
8. Protection of Licensed Patents.
(a) KRONOGEN SCIENCES will at all times recognize the ownership of
Giampapa of the Licensed Patents and will not at any time do or
suffer to be done any act or thing which will in any way impair the
rights of Giampapa in the Licensed Patents. KRONOGEN SCIENCES hereby
expressly covenants that during the life of this License Agreement
and upon and after the termination thereof, KRONOGEN SCIENCES will
not claim that its use of the Licensed Patents has created any title
in KRONOGEN SCIENCES in any country.
(b) During the term of this Agreement, KRONOGEN will pay the fees, if
any, associated with the filing, maintenance and prosecution, with
the United States Patent and Trademark Office, of the Licensed
Patents; provided, however, that Giampapa shall cooperate with
KRONOGEN in connection therewith, and provided further, that it is
acknowledged and agreed that KRONOGEN shall not be responsible for
any fees or other costs or payments associated with any claim or
suit relating to the Licensed Patents.
(c) In the event of infringement of the Licensed Patents, the parties
will jointly cooperate in terminating such infringement.
9. Indemnification.
(a) KRONOGEN SCIENCES hereby indemnifies Giampapa and shall hold him
harmless from any loss, liability, damage, cost or expense,
including reasonable attorneys' fees, arising out of any claims or
suits which may be brought against Giampapa relating to KRONOGEN
SCIENCES' manufacture, sale or distribution of the Units, except as
such claims or suits relate to the grant of rights, covenants,
warranties or representations of Giampapa set forth herein, provided
that Giampapa shall give prompt written notice, cooperation and
assistance to KRONOGEN SCIENCES relative to any such claim or suit,
and provided that KRONOGEN SCIENCES shall have the option to
undertake and conduct the defense of any suit so brought.
(b) Giampapa hereby indemnifies KRONOGEN SCIENCES and its officers,
directors, shareholders, employees and agents (collectively, the
"KRONOGEN Indemnified Parties"), and shall hold each KRONOGEN
Indemnified Party harmless from any loss, liability, damage, cost or
expense, including reasonable attorneys' fees, arising out of any
claims or suits which may be brought or made against such KRONOGEN
Indemnified Party by reason of Xxxxxxxx'x xxxxx of rights,
covenants, warranties or representations set forth herein, provided
that KRONOGEN SCIENCES shall give prompt written notice, cooperation
and assistance to Giampapa relative to any such claim or suit.
10. Miscellaneous
(a) Notices. Any notice or other communication required or permitted
hereunder must be in writing and must be transmitted by personal
delivery, reputable overnight courier service, certified mail
(postage pre-paid, receipt requested) or telecopy, as follows:
If to KRONOGEN SCIENCES: Kronogen Sciences Inc.
000 Xxxxxxxxx Xxxxxx, 00xx Xxxxx
Xxx Xxxx, XX 00000
Attention: Xxxxxxx Xxxxxx, President
Facsimile: (000) 000-0000
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with a copy to: Blank Rome LLP
000 Xxxxxxxxx Xxxxxx
Xxx Xxxx, XX 00000
Attention: Xxxxxx X. Xxxxxxx, Esq.
Facsimile: (000) 000-0000
if to GIAMPAPA: Xxxxxxx X. Xxxxxxxx, M.D.
00 Xxxxxx Xxxx
Xxxxxxxxx, XX 00000
Facsimile: (000) 000-0000
with a copy to:
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Attention:
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or at such other address as the party shall designate in a written notice to the
other party hereto, given in accordance with this Section 10. All notices and
other communications shall be effective (i) if delivered in person, when
delivered; (ii) if sent by overnight courier, the next business day following
the delivery thereof to such courier (or such later date as is demonstrated by a
bona fide receipt therefor); (iii) if sent by certified mail, three days after
deposit in the mail; or (iv) if sent by telecopier with receipt acknowledged,
when sent.
(b) No Waiver; Cumulative Remedies. No failure to exercise and no delay
in exercising, on the part of Giampapa, any right, remedy, power or
privilege hereunder shall operate as a waiver thereof; nor shall any
single or partial exercise of any right, remedy, power or privilege
hereunder preclude any other or further exercise thereof or the
exercise of any other right, remedy, power or privilege. The rights,
remedies, powers and privileges herein provided are cumulative and
not exclusive of any rights, remedies, powers and privileges
provided by law.
(c) Severability. Any provision of this License Agreement which is
prohibited or unenforceable in any jurisdiction shall, as to such
jurisdiction, be ineffective to the extent of such prohibition or
unenforceability without invalidating the remaining provisions
hereof, and any such prohibition or unenforceability in any
jurisdiction shall not invalidate or render unenforceable said
provision in any other jurisdiction.
(d) Integration. This License Agreement represents the agreement of the
Giampapa and KRONOGEN SCIENCES with respect to the subject matter
hereof, and there are no promises or representations by either party
relative to the subject matter hereof not reflected herein or
therein.
(e) Governing Law. This License Agreement and the rights and obligations
of the parties under this License Agreement shall be governed by,
and construed and interpreted in accordance with, the laws of the
State of New Jersey applicable to contracts entered into and wholly
performed in the State of New Jersey.
(f) No Assignment. This License Agreement shall be binding upon the
parties hereto, their successors and permitted assigns. Neither this
License Agreement nor any of the rights, duties or obligations
thereunder may be assigned, sold, conveyed, transferred, or
delegated by either party without the express written consent of the
other party hereto. Notwithstanding the foregoing, KRONOGEN SCIENCES
may assign this License Agreement, and all rights and obligations
under this License Agreement, pursuant to the acquisition, merger,
corporate reorganization, or refinancing of KRONOGEN SCIENCES. Any
attempted assignment in violation of this Section 10(f) shall be
void.
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(g) Substitute Corporate Party. Giampapa reserves the right at any time
to substitute a corporate party owned by Giampapa in place of
himself as a party to this License Agreement provided such
substitute corporate party has the ability to furnish the same
personal services, and grant the same rights to KRONOGEN SCIENCES as
presently provided by Giampapa as an individual party to this
License Agreement.
11. Counterparts. This Agreement may be executed in original or facsimile
counterparts, each of which shall be deemed an original, but both of which
when taken together shall constitute one and the same instrument.
The parties have executed this License Agreement on the date first above
written.
/s/ Xxxxxxx X. Xxxxxxxx
-----------------------------------
Xxxxxxx X. Xxxxxxxx
KRONOGEN SCIENCES INC.
/s/ Xxxxxxx Xxxxxx
-----------------------------------
By: Xxxxxxx Xxxxxx
President & Chief Executive Officer
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SCHEDULE 2(a)
PATENT PUB. DATE TITLE
------ --------- -----
US5895652 04/20/1999 Method of metabolic adjuvanation and cellular repair
US5580569 12/03/1996 Article for tissue-specific delivery of therapeutic agents
US5494677 02/27/1996 Tissue-specific implantable therapeutic agent delivery system
XX0000000 08/22/1995 Subcutaneous implantable multiple agent delivery system
US5391164 02/21/1995 Subcutaneous implantable multiple-agent delivery system
US5326568 07/05/1994 Method of tissue-specific delivery
US5201728 04/13/1993 Subcutaneous implantable multiple-agent delivery system
Application The C-MED Multi Daily Nutritional System
Application The Bio-Marker Matrix Software
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