Contract
Exhibit
10.3
For
value
received as stated below, Lane X. Xxxx of 67 Park, Xxxxxxxx XX 00000
(hereinafter ASSIGNOR), as recited in the ASSIGNMENT AGREEEMENT, sells, assigns,
transfers, and sets over unto IsoRay LLC of 0000 X. Xxxxxxx Xx., Xxxxxxxxx,
XX
00000 (hereinafter ASSIGNEE) 100% of the following:
(A)
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ASSIGNOR’S
right, title and interest in and to the invention entitled “METHOD OF
SEPARATION OF CESIUM-131 FROM BARIUM” invented by ASSIGNOR;
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(B)
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the
application for United States patent therefor, signed by ASSIGNOR
on
04/28/99, U.S. Patent and Trademark Office Application Number 09/301,640,
filed 04/28/99;
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(C) |
any
patent or reissues of any patent that may be granted thereon; and
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(D)
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any
applications which are continuations, continuations-in-part, substitutes,
or divisions of said application. ASSIGNOR authorizes ASSIGNEE
to enter
the date of signature and/or Serial Number and Filing Date in the
spaces
above. ASSIGNOR also authorizes and requests the Assistant Commissioner
for Patents to issue any resulting patent(s) as follows: 0% to
ASSIGNOR
and 100% to ASSIGNEE.
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ASSIGNOR
hereby further sells, assigns, transfers, and sets over unto ASSIGNEE, the
above
percentage of ASSIGNOR’S entire right, title and interest in and to said
invention in each and every country foreign to the United States; and ASSIGNOR
further conveys to ASSIGNEE the above percentage of all priority rights
resulting from the above-identified application for United States patent.
ASSIGNOR agrees to execute all papers, give any required testimony and perform
other lawful acts, at ASSIGNEE’S expense, as ASSIGNEE may require to enable
ASSIGNEE to perfect ASSIGNEE’S interest in any resulting patent of the United
States and countries foreign thereto, and to acquire, hold, enforce, convey,
and
uphold the validity of said patent and reissues and extensions thereof, and
ASSIGNEE’S interest therein.
1.VALUE
RECEIVED BY ASSIGNOR:
(A)
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IsoRay,
LLC shall pay all attorneys’ fees and filing fees associated with said
patent.
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(B)
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Seed
Royalty: IsoRay, LLC shall pay a royalty of 1% of Gross Profit
of seed
wherein the process described in aforesaid patent is used, in whole
or in
part. Gross Profit per seed shall be calculated as Gross Seed Sales
Price
minus Direct Production Cost which includes seed material cost,
direct
production processing including irradiation charges, and direct
production
labor cost per seed. All indirect costs including marketing/sales
costs
shall be excluded from Gross Profit.
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(C)
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Non-Seed
Product Royalty: IsoRay, LLC shall pay a royalty of 1% of Gross
Profit for
use of said process, in whole or in part, for production of any
non-seed
product. Gross Profit for use of said process shall be calculated
as Gross
Product Unit Sales Price minus Direct Production Cost which includes
direct material cost, direct production processing including irradiation
charges, and direct production labor cost per unit of production.
All
indirect costs including marketing/sales costs shall be excluded
from
Gross Profit.
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(D)
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Sub-assignment
Royalty: IsoRay, LLC shall pay a royalty of 2% of Gross Sales for
sub-assignment of the aforesaid patented process by IsoRay LLC
to any
SUB-ASSIGNEE(S). Gross Sales shall be Assignee’s net invoiced price to
Sub-assignee (Gross invoice price less taxes, discounts, or credits).
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(E)
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Royalty
shall be payable to LANE A. AND XXXX X. XXXX TRUST within 30 days
after
the end of each calendar quarter in which invoiced payments for
sales of
said seeds, non seed products, or subassignments were made.
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2. REPORTS;
TIME OF ROYALTY PAYMENTS; EXAMINATION.
Assignee agrees to keep regular books of account and to render a statement
within thirty (30) days after the end of each calendar quarter setting forth,
under oath if requested, the class of units sold, the number of each class
sold,
the royalty base as defined in Section 1, above, and the royalty due thereon,
and shall accompany each such report with a remittance covering the royalty
due.
Such books of account shall be open at all reasonable business hours for
inspection by Assignor or his duly authorized representative. Assignee shall
pay
interest to Assignor upon any and all amounts of royalties that are at any
time
overdue and payable to Assignor at the rate of 6% per annum from the date
when
such royalties are due and payable as provided herein to the date of payment.
3. PATENT
PROSECUTION:
(A)
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DOMESTIC.
Assignee shall, at ASSIGNEE’S expense, prosecute it above U.S. patent
application assignment, and any continuations, division,
continuations-in-part, substitutes, and reissues of such patent
application or any patent thereon until all applicable patents
issue or
any patent application becomes finally abandoned. ASSIGNEE shall
also pay
any maintenance fees which are due on any patent(s) which issue
on said
patent application. If for any reason, ASSIGNEE intends to abandon
any
patent application, hereunder, it shall notify ASSIGNOR at least
two
months in advance of any such abandonment so as to give ASSIGNOR
the
opportunity to take over prosecution of any such application and
maintenance of any patent. If ASSIGNOR takes over prosecution,
ASSIGNEE
shall cooperate with ASSIGNOR in any manner ASSIGNOR requires at
ASSIGNOR’S expense.
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(B)
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FOREIGN.
ASSIGNEE shall have the opportunity, but not the obligation, to
file
corresponding foreign patent applications to the aforesaid patent.
If
ASSIGNEE files any such foreign patent applications, ASSIGNEE may
license,
sell, or otherwise exploit the invention and pay royalties in accordance
with the aforesaid terms.
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(C)
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INFRINGEMENT.
If either party discovers that the above patent is infringed, it
shall
communicate the details to the other party. ASSIGNEE shall thereupon
have
the right, but not the obligation, to take whatever action it deems
necessary, including the filing of lawsuits, to protect the rights
of the
parties to this Agreement and to terminate such infringement. ASSIGNOR
shall cooperate with ASSIGNEE if ASSIGNEE takes any such action,
but all
expenses of ASSIGNOR shall be borne by ASSIGNEE. If ASSIGNEE recovers
any
damages or compensation for any action hereunder, ASSIGNEE shall
retain
100% of such damages. If ASSIGNEE does not wish to take any action
hereunder, ASSIGNOR shall also have the right, but not the obligation,
to
take any such action, in which case ASSIGNEE shall cooperate with
ASSIGNOR, but all of ASSIGNOR’S expenses shall be borne by ASSIGNOR.
ASSIGNOR shall receive 100% of any damages or compensation awarded.
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4.TERMINATION.
(A)
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DEFAULT.
If ASSIGNEE fails to make any payment on the date such payment
is due
under this Agreement, or if ASSIGNEE makes any other default under
or
breach of this Agreement, ASSIGNOR shall have the right to terminate
this
Agreement upon giving three month’s written Notice of Intent to Terminate,
specifying such failure, breach, or default to ASSIGNEE. If ASSIGNEE
fails
to make any payment in arrears, or otherwise fails to cure the
breach or
default within such three-month period, then ASSIGNOR may then
send a
written Notice of Termination to ASSIGNEE, whereupon this Agreement
shall
terminate in one month from the date of such Notice of Termination.
If
this Agreement is terminated hereunder, ASSIGNEE shall not be relieved
of
any of its obligations to the date of termination and ASSIGNOR
may act to
enforce ASSIGNEE’S obligations after any such termination.
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(B)
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BANKRUPTCY,
etc. If ASSIGNEE shall go into receivership, bankruptcy, or insolvency,
or
make an assignment for the benefit of creditors, or go out of business,
this Agreement shall be immediately terminable by ASSIGNOR by written
notice, but without prejudice to any rights of ASSIGNOR hereunder.
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(C)
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ANTISHELVING.
If ASSIGNEE discontinues its sales or manufacture of product(s)
using the
invention, without intent to resume, it shall so notify ASSIGNOR
within
one month of such discontinuance, whereupon ASSIGNOR shall have
the right
to terminate this Agreement upon one month’s written notice. If ASSIGNEE
does not begin manufacture or sales of said product(s) within one
and
one-half years from the date of this Agreement or, after commencing
manufacture and sales of product(s), discontinues its manufacture
and
sales of product(s) for one and one-half years, ASSIGNOR shall
have the
right to terminate this Agreement upon one month’s written notice, unless
ASSIGNEE can show that it in good faith intends and is actually
working to
resume or begin manufacture or sales, and has a reasonable basis
to
justify its delay. In such case ASSIGNEE shall advise ASSIGNOR
in writing,
before the end of such one-and-one-half year period, of the circumstances
involved and ASSIGNEE shall thereupon have up to an additional
year to
resume or begin manufacture or sales. It is the intent of the parties
hereto that ASSIGNOR shall not be deprived of the opportunity,
for an
unreasonable length of time, to exclusively license its patent
if ASSIGNEE
has discontinued or has not commenced manufacture or sales of said
product(s). In no case shall ASSIGNOR have the right to terminate
this
Agreement if and so long as ASSIGNEE is paying ASSIGNOR royalties
under
Part 1 above.
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(D)
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If
a patent is not issued by the U.S. Patents and Trademarks Office
pursuant
to this License Application, this Agreement shall be null and void.
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5.NOTICES.
All
notices, payments, or statements under this Agreement shall be in writing
and
shall be sent by firs-class certified mail, return receipt requested, postage
prepaid to the party concerned at the above address, or to any substituted
address given by notice hereunder. Any such notice, payment, or statement
shall
be considered sent or made on the day deposited in the mails. Payments and
statements may be sent by ordinary mail; payments may be by direct deposit.
6.LICENSES.
If
ASSIGNEE grants any licenses hereunder, it shall notify ASSIGNOR within one
month from any such grant and shall provide ASSIGNOR with a true copy of
any
license agreement. Any licensee of ASSIGNEE/LICENSOR under this Agreement
shall
be bound by all of the terms applying to ASSIGNEE hereunder and ASSIGNEE
shall
be responsible for the obligations and duties of any of its licensees.
7.MEDIATION
AND ARBITRATION.
If any
dispute arises under this Agreement, the parties shall negotiate in good
faith
to settle such dispute. If the parties cannot resolve such dispute themselves,
then either party may submit the dispute to mediation by a mediator approved
by
both parties. The parties shall both cooperate with the mediator, or if either
party does not wish to abide by any decision of the mediator, then they shall
submit the dispute to arbitration by any mutually acceptable arbitrator.
If no
arbitrator is mutually acceptable, then they shall submit the matter to
arbitration under the rules of the American Arbitration Association. Under
any
arbitration, both parties shall cooperate with and agree to abide finally
by any
decision of the arbitration proceeding. The arbitrator’s award shall be
non-appealable and enforceable in any court of competent jurisdiction.
8.ASSIGNMENT.
The
rights of ASSIGNOR under this Agreement shall be assignable or otherwise
transferable, in whole or in part, by ASSIGNOR and shall vest ASSIGNOR’S assigns
or transferees with the same rights and obligations as were held by ASSIGNOR.
This Agreement shall be assignable by ASSIGNOR to any entity that succeeds
to
the business of ASSIGNOR to which products using the invention relate or
to any
other entity if ASSIGNOR’S permission is first obtained in writing. Any Assignee
of ASSIGNOR shall be bound by all of the terms applying to ASSIGNOR hereunder.
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9.JURISDICTION
AND VENUE.
This
Agreement shall be interpreted under the Laws of Washington State.
10.RECTIFICATION.
In case
of mistake in this Agreement, including any error, ambiguity, illegality,
contradiction, or omission, this Agreement shall be interpreted as if such
mistake were rectified in a manner which implements the intent of the parties
as
nearly as possible and effects substantial fairness, considering all pertinent
circumstances.
11.DISCLAIMER
AND HOLD HARMLESS.
(A)
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DISCLAIMER
OF WARRANTY.
Nothing herein shall be construed as a warranty of representation
by
ASSIGNOR as to the scope or validity of the above patent application
or
any patent issuing thereon.
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(B)
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PRODUCT
LIABILITY.
ASSIGNEE shall hold ASSIGNOR harmless from any product liability
actions
involving product using the invention.
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12.TERM.
The
term of this Agreement shall end with the expiration of the last of any
patent(s) which issues on ASSIGNOR’S patent application, unless terminated
sooner for any reason set forth in this Agreement. The parties have voluntarily
decided upon this term as a matter of convenience.
13.
SEVERABILITY.
If any
provision of this Agreement is held to be unenforceable for any reason, it
shall
be conformed to prevailing law rather than voided, if possible, to achieve
the
intent of the parties to the extent possible. In any event, all other provisions
of this Agreement shall be deemed valid and enforceable to the full extent
possible.
14.ENTIRE
AGREEMENT.
Along
with the Assignment Agreement, this Agreement sets forth the entire
understanding between the parties and supersedes any prior or contemporaneous
oral understandings and any prior written agreements. This Agreement may
not be
superseded, amended, or modified except by a written agreement signed by
the
parties.
ASSIGNOR:
/s/
Lane X. Xxxx
Xxxx
X. Xxxx
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Date: July 12, 1999 |
ASSIGNEE: /s/
Xxxxx X. Xxxxxx
Xxxxx
X. Xxxxxx
General
Manager
IsoRay
LLC
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Date: 07/12/99 |
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