TECHNOLOGY SALE AGREEMENT
TECHNOLOGY SALE AGREEMENT made as of the 9th day of April, 1998,
between MILESTONE SCIENTIFIC, INC., a Delaware corporation ("Milestone"), and
XXXXXXX XXXXXXX and XXXX XXXXXXX (collectively the "Sellers").
WHEREAS, the Sellers have developed the technology, know-how and other
intellectual property underlying their invention of (i) a "Pressure/Force
Computer Controlled Drug Delivery System", (ii) a "Universal Syringe Holder
Enhancement" consisting a unique Disposable Syringe and a Unique Syringe Holder
and (iii) a Non-deflecting, Non-clogging Single Use Disposable Hypodermic Needle
(collectively the Intellectual Property) for use as a separate drug delivery or
aspiration system or as an adjunct to Milestone's computer controlled anesthesia
system known as "The Wand TM"; and
WHEREAS, the Sellers desire to sell to Milestone and Milestone desire
to purchase from Sellers all their rights in and to the Intellectual Property on
the terms hereinafter set forth.
NOW, THEREFORE, in consideration of the sales transaction and the
agreements set forth below, the parties have entered into the following
transaction and agreements:
1. Sale of Intellectual Rights. Sellers by this instrument do hereby
sell, transfer and assign to Milestone, all of their rights in and to the
Intellectual Property, including any and all inventions, patent applications and
other indicia evidencing or embodying their proprietary rights therein and agree
to turn over and deliver to Milestone all documentation relating to the
Intellectual Property.
2. Obtaining Patents. The Sellers agree that they will use their best
efforts in cooperation with, and at the request of, Milestone to obtain United
States and worldwide patent rights to the Intellectual Property and any
improvements thereon or thereto, which together with all patents and patent
applications are collectively referred to as the "Proprietary Rights". The
expense for preparing and filing appropriate patent applications and if
commercially reasonable, obtaining foreign patents in such jurisdiction as
appropriate, shall be borne by Milestone. Sellers shall assign all rights in and
to all patent applications, patents and other Proprietary Rights developed after
the date hereof to Milestone.
3. Further Documentation. The Sellers shall from time to time at the
request of Milestone execute and deliver to Milestone such further documentation
as requested by Milestone to more effectively transfer and assign the
Proprietary Rights to Milestone and to otherwise give effect to this Agreement.
4. Issuance of Options. Milestone agrees that if one or more patents
issues with respect to any pending or future patent application relating to the
Proprietary Rights, Milestone will, as soon as practicably thereafter, issue to
Sellers three year options to purchase an aggregate of 25,000 shares of
Milestone Common Stock at an exercise price per share equal to the fair market
value of a share on the date of grant.
5. Purchase Price. (a) As consideration for the Sellers transfer of the
Property Rights, including their agreements to cooperate with Milestone in
prosecuting patent applications with respect thereto and to transfer and assign
any and all Proprietary Rights, Milestone shall pay
2
to the Sellers an amount equal to five (5%) percent of a portion of the "Net
Sales", as defined below, of those products sold by Milestone (the "Products")
which embody the Proprietary Rights as follows:
(A) if the Proprietary Rights used in the Products include any
Proprietary Rights that are patented, royalties will be
calculated on that portion of the Net Sales of all Products which
use or embody the Proprietary Rights which bears the same
relationship to total Net Sales of such Products as the cost of
all patented elements using or embodying the Proprietary Rights
bear to the total cost of all patented elements of such Products.
ILLUSTRATION 5A-1
ASSUMPTIONS:
1. Some portion of the Proprietary Rights are patented
2. Net Sales of all Products which use such proprietary rights are $100,000.
3. Other elements of the Products embody patents not included within the
Proprietary Rights.
4. The cost of all patented elements using the Proprietary Rights are $200 per
unit of Product.
5. The cost of other patented elements of the Product are $300 per unit
THEN Royalties shall be calculated as follows:
3
Cost of elements embodying
x the Proprietary Rights Royalty Rate
------------------------------
Net Sales Cost of elements embodying x
the Proprietary Rights
+
Cost of all patented elements
$100,000 x $200 x 5%
-----------
$200+$300
$40,000 x 5% Royalty Rate = $2,000
ILLUSTRATION 5A-2
ASSUMPTIONS
Same as above except that other elements not covered by patents, e.g. other
patents have expired or Proprietary Rights are used in a "stand alone" Product.
Cost of elements embodying
x the Proprietary Rights Royalty Rate
-----------------------------
Net Sales Cost of elements embodying x
the Proprietary Rights
+
Cost of all patented elements
$100,000 x $ 200 x 5%
-----------
$ 200
$100,00 x 5% Royalty Rate = $5,000
(B) if the Proprietary Rights used in the Products are not
patented, royalties on such Products will be calculated on
that portion of the Net Sales of such Products which bears
the same relationship to total Net Sales of the Products as
any increase in the selling price of such Products
instituted after the incorporation of the Proprietary Rights
therein bears to the sales price of such Products
immediately preceding such incorporation.
4
ILLUSTRATION 5 B
ASSUMPTIONS:
1. Net Sales of the Product equal $100,000
2. Selling price per unit prior to use of Proprietary Rights was $1,000
3. The selling price per unit after incorporation of the proprietary rights is
$1,500
4. X equals portion of Net sales on which royalties will be paid
THEN Royalties will be calculated as follows:
Portion of
Net Sales on Increase in Sales price
which : Net Sales = sales price : prior to
Royalties are increase
payable
X : $100,000 = $500 : $1,000
1,000 X = $50,000,000
X = $50,000
$50,000 x 5% Royalty Rate = $2,500
(C) if Milestone sells all or part of the Proprietary
Rights or license others to use all or any portion of
such rights in the production by other parties of their
products, Sellers shall be entitled to receive
royalties calculated as provided in (A) and (B) above
except that the consideration received by Milestone
from any such sale or license shall be treated as the
"Net Sales", and the products produced by third parties
shall be treated as if they were Products of Milestone.
(b) Milestone shall within 45 days after the end of each calendar
quarter pay Sellers the amount of purchase price owing to them for the quarter.
Such payment shall be accompanied by statements showing the basis used in
calculating the royalties for such period. Allocations of costs required under
(A) and (B), determinations under (C) above with respect to
5
whether and how much non patented proprietary rights contributed to an increase
in the price of the product as well as determinations under (C) which shall be
based on such information as Milestone can obtain from its licensee or
purchaser, shall be determined by Milestone and Milestone's good faith
determinations with respect thereto shall be conclusive and binding on the
parties.
(c) For purposes of this section 5 Net Sales shall mean gross sales
less returns, discounts and allowances. Purchase price payments for any
quarterly period shall be adjusted in subsequent quarters to take into account
returns and allowances occurring in these later periods. If by reason of (d)
below payments are payable for only a portion of a quarterly period, Sellers
shall be entitled to a payment in the amount they would have received if they
were entitled to royalties for the full quarterly period multiplied by a
fraction in which the numerator shall be the number of days in which they are
entitled to royalties and the denominator shall be 90.
(d) Payments shall be made hereunder only until the expiration of the
last patent covering any portion of the Proprietary Rights or if no patent
issues until the expiration of 10 years from the date hereof; provided, however
that if no patent has issued and a Milestone Product incorporating the
Proprietary Rights faces substantial competition from other products using
similar technology the payment hereunder shall be appropriately adjusted by
Milestone to eliminate the competitive disadvantage.
6. Sellers Warranty. Sellers jointly and severally represent and
warrant to Milestone that they have not sold, assigned, transferred or
encumbered the Proprietary Rights or any interest thereon to any third party.
6
7. Indemnification. Milestone shall defend, at its own cost and
expense, any infringement suits that may be brought against Sellers or Milestone
on account of the manufacture, production, use or marketing of the Proprietary
Information by Milestone or its licensees. Milestone shall indemnify and save
harmless Sellers against any and all such patent infringement suits and any
claims, costs, expenses and damages which may be incurred by Sellers therein or
in settlement thereof. When information is brought to Milestone's attention
indicating that others are unlawfully infringing on its rights with respect to
the Proprietary Information, Milestone shall take all steps and commence such
legal action which, in the judgment of Milestone, are (a) necessary to protect
Milestone's rights thereto and (b) consistent with Milestone's then business and
financial condition. Seller shall cooperate with Milestone in the prosecution of
any such action or litigation.
8. Governing Law. This Agreement shall be construed and interpreted
according to the laws of the State of New York.
9. Severability. In case any provision of this Agreement shall be
invalid, illegal or unenforceable, the validity, legality and enforceability of
the remaining provisions shall not in any way be affected or impaired thereby.
10. Notice. All notices required or permitted to be delivered pursuant
hereto shall be in writing and shall be deemed to have been given upon personal
delivery or two (2) days after deposit in the United States mail by registered
or certified mail, first class postage prepaid, with return receipt requested,
addressed as follows:
7
If to Milestone:
Milestone Scientific, Inc.
000 Xxxxx Xxxxxx Xxxxxx
Xxxxxxxxxx, Xxx Xxxxxx 00000
Attn: Xxxxxxx Xxxxx
With a copy to: Morse, Zelnick, Rose & Lander
000 Xxxx Xxxxxx
Xxx Xxxx, XX 00000
Attn: Xxxxxxx X. Xxxxxxx
If to Sellers: Xxxxxxx Xxxxxxx, D.D.S
Xxxx Xxxxxxx, D.D.S.
00 Xxxxxx Xxxxx Xxxx
Xxxxx Xxxx, Xxx Xxxx 00000
or to such other addresses as may from time to time be designated by the parties
by like notice.
11. Binding Effect. This Agreement shall be binding upon and inure to
the benefit of each of the parties hereto and their respective successors,
assigns and/or legal representatives.
12. Headings. The descriptive headings used and inserted in this
Agreement are for convenience only and shall not be deemed to affect the meaning
or construction of any provisions hereof.
13. Entire Agreement. This Agreement and any documents or agreements
executed by the parties simultaneously herewith constitute the entire
understanding and agreement of the parties hereto with respect to the sale of
the rights described herein and supersede all other prior
8
agreements or understandings, written or oral, between the parties with respect
thereto. This Agreement may not be amended except by a writing signed by
Milestone and the Sellers.
IN WITNESS WHEREOF, the parties hereto have executed this Memorandum of
Sale and Agreement as of the day and year first above written.
MILESTONE SCIENTIFIC, INC.
By: /s/ Xxxxxxx Xxxxx
-----------------
Xxxxxxx Xxxxx, CEO
/s/ Xxxxxxx Xxxxxxx
-------------------
Xxxxxxx Xxxxxxx, D.D.S.
/s/ Xxxx Xxxxxxx
----------------
Xxxx Xxxxxxx, D.D.S.
9
AMENDMENT TO TECHNOLOGY SALE AGREEMENT
WHEREAS, MILESTONE SCIENTIFIC, INC., a Delaware corporation
("Milestone"), and XXXXXXX XXXXXXX and XXXX XXXXXXX (collectively the "Sellers")
entered into a "Technology Sale Agreement" made as of the 9th of April, 1998,
governing Sellers sale to Milestone of their invention of (i) a "Pressure/Force
Computer Controlled Drug Delivery System", (ii) a "Universal Syringe Holder
Enhancement" consisting a unique Disposable Syringe and a Unique Syringe Holder
and (iii) a Non-deflecting, Non-clogging Single Use Disposable Hypodermic Needle
for use as a separate drug delivery or aspiration system or as an adjunct to
Milestone's computer controlled anesthesia system known as "The Wand TM"; and
WHEREAS, the Sellers also invented a Self-retracting Needle Hand Piece
and Syringe With Self-retracting Needle (Reg #29,876) for use as a separate drug
delivery or aspiration system or as an adjunct to Milestone's computer
controlled anesthesia system known as "The Wand TM"; and
WHEREAS, the sellers also invented an Anti-Deflection/ Force
Penetrating Reduction Rotating Needle Handpiece and Syringe devices for use as a
separate drug delivery or aspiration system or as an adjunct to Milestone's
computer controlled anesthesia system known as "The Wand(TM)";
WHEREAS, subject to the conditions contained in the Technology Sale
Agreement made as of the 9th of April, 1998, Sellers desire to sell and
Milestone desires to purchase the Anti-Deflection/ Force Penetrating Reduction
Rotating Needle Handpiece, Anti-
Deflection/ Force Penetrating Reduction Rotating Needle Syringe,
Anti-Deflection/ Force Penetrating Reduction Rotating Needle Dental Syringe,
Self-retracting Needle Handpiece and Syringe with and Self-retracting Needle
(Reg #29,876).
WHEREAS, Sellers and Milestone desire to amend the Technology Sale
Agreement made as of the 9th of April, 1998, so that the sale by Seller to
Milestone of the Anti-Deflection/ Force Penetrating Reduction Rotating Needle
Handpiece, Anti-Deflection/ Force Penetrating Reduction Rotating Needle Syringe,
Anti-Deflection/ Force Penetrating Reduction Rotating Needle Dental Syringe,
Self-retracting Needle Handpiece, Syringe With Self-retracting Needle be
governed by the terms of the Technology Sale Agreement;
NOW, THEREFORE, for good and valuable consideration, the receipt and
sufficiency of which is hereby acknowledged, the definition of "Intellectual
Property" under the Technology Sale Agreement made as of the 9th of April, 1998,
is hereby amended to include the Anti-Deflection/ Force Penetrating Reduction
Rotating Needle Handpiece Device, Anti-Deflection/ Force Penetrating Reduction
Rotating Needle Syringe, Anti-Deflection/ Force Penetrating Reduction Rotating
Needle Dental Syringe, Self-Retracting Needle Handpiece and Syringe With
Self-retracting Needle in addition to (i) a "Pressure/Force Computer Controlled
Drug Delivery System", (ii) a "Universal Syringe Holder Enhancement" consisting
a unique Disposable Syringe and a Unique Syringe Holder and (iii) a
Non-deflecting, Non-clogging Single Use Disposable Hypodermic Needle.
IN WITNESS WHEREOF, the parties hereto have executed this Amendment to
Technology Sale Agreement as of the day and year first above written.
MILESTONE SCIENTIFIC, INC.
By: /s/ Xxxxxxx Xxxxx 12/16/99
--- ------------- --------
Xxxxxxx Xxxxx, CEO Date
/s/ Xxxxxxx Xxxxxxx 12/16/99
--------
Xxxxxxx Xxxxxxx, D.D.S. Date
/s/ Xxxx Xxxxxxx 12/16/99
--------
Xxxx Xxxxxxx, D.D.S. Date
SECOND AMENDMENT TO
TECHNOLOGY SALE AGREEMENT
THIS SECOND AMENDMENT, is dated this 28th day of November 2001 (the
"Second Amendment") by and between MILESTONE SCIENTIFIC INC., a Delaware
corporation, ("Milestone") and XXXXXXX XXXXXXX and XXXX XXXXXXX (collectively
the "Sellers").
WHEREAS, Milestone and Sellers entered into a "Technology Sale
Agreement" dated the 9th of April, 1998 (the "Agreement"), governing Sellers'
sale to Milestone of their invention of (i) a "Pressure/Force Computer
Controlled Drug Delivery System", (ii) a "Universal Syringe Holder Enhancement"
consisting a unique Disposable Syringe and a Unique Syringe Holder, and (iii) a
Non-deflecting, Non-clogging Single Use Disposable Hypodermic Needle for use as
a separate drug delivery or aspiration system or as an adjunct to Milestone's
computer controlled anesthesia system known as "The Wand TM"; and
WHEREAS, in June 1999, Milestone and Sellers entered an "Amendment to
the Technology Sale Agreement" (the "First Amendment") that amended the
Agreement to include in the definition of "Intellectual Property" under the
Agreement a Self-Retracting Needle Hand Piece and Syringe with Self-Retracting
Needle (Reg. # 29,876) for use as a separate drug delivery or aspiration system
or as an adjunct to Milestone's computer controlled anesthesia system known as
"The Wand TM"; and
WHEREAS, the Sellers also have invented a Local Anesthetic and Delivery
Injection Unit with Automated Rate Control; and
WHEREAS, subject to the conditions contained in the Technology Sale
Agreement, Sellers desire to sell and Milestone desires to purchase the Local
Anesthetic and Delivery Injection Unit with Automated Rate Control; and
WHEREAS, Sellers and Milestone desire to amend further the Technology
Sale Agreement so that the sale by Seller to Milestone of the Local Anesthetic
and Delivery Injection Unit with Automated Rate Control be governed by its
terms;
NOW, THEREFORE, for good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, the definition of "Intellectual
Property" in the Agreement, as amended by the First Amendment, is hereby amended
further to include the Local Anesthetic and Delivery Injection Unit with
Automated Rate Control in addition to (i) a "Pressure/Force Computer Controlled
Drug Delivery System", (ii) a "Universal Syringe Holder Enhancement" consisting
a unique Disposable Syringe and a Unique Syringe Holder, (iii) a Non-deflecting,
Non-clogging Single Use Disposable Hypodermic Needle, and (iv) a Self-Retracting
Needle Hand Piece and Syringe with Self-Retracting Needle (Reg. # 29,876) for
use as a separate drug delivery or aspiration system or as an adjunct to
Milestone's computer controlled anesthesia system known as "The Wand TM".
2
IN WITNESS WHEREOF, the parties hereto have executed this Second
Amendment as of the day and year first above written.
MILESTONE SCIENTIFIC, INC.
By: /s/ Xxxxxxx Xxxxx
-----------------
Xxxxxxx Xxxxx, CEO
/s/ Xxxxxxx Xxxxxxx
--- ---------------
Xxxxxxx Xxxxxxx, D.D.S.
/s/ Xxxx Xxxxxxx
----------------
Xxxx Xxxxxxx, D.D.S.
3
THIRD AMENDMENT TO TECHNOLOGY SALE AGREEMENT
THIRD AMENDMENT TO TECHNOLOGY SALE AGREEMENT, dated October 10, 2002,
between MILESTONE SCIENTIFIC INC., a Delaware corporation ("Milestone") and
XXXXXXX XXXXXXX and XXXX XXXXXXX (collectively the "Sellers").
WITNESSETH
WHEREAS, Milestone and Sellers entered into a Technology Sale Agreement
dated April 9, 1998, as amended on December 16, 1999 and November 28, 2001,
governing Sellers' sale to Milestone of their inventions, of (i) a
"Pressure/Force Computer Controlled Drug Delivery System", (ii) a "Universal
Syringe Holder Enhancement" consisting of a unique Disposable Syringe and a
Unique Syringe Holder, (iii) a Non-deflecting, Non-clogging Single Use
Disposable Hypodermic Needle for use as a separate drug delivery or aspiration
system or as an adjunct to Milestone's computer controlled anesthesia system
known as "The CompuMed/Wand(TM)", (iv) a Hand-piece For Injection Device With A
Retractable And Rotating Needle (U.S. Patent No. 6,428,517 B1), Anti-Deflection
/ Force Reduction Rotating Needle Handpiece device, Anti-Deflection/Force
Reduction Rotating Syringe (Reg No. 29,876), for use as separate drug delivery
or aspiration system or as an adjunct to Milestone's computer controlled
anesthesia system known as "The CompuMed/Wand(TM)", and (v) a Local Anesthetic
and Delivery Injection Unit with Automated Rate Control;
WHEREAS, the Sellers have now invented a Safety IV Catheter Infusion
Device (U.S. Utility Patent App. Serial No. 10/174,246) ("IV Catheter") for use
as a
separate drug delivery catheter device or as an adjunct to Milestone's existing
technologies;
WHEREAS, subject to the conditions contained in the Technology Sale
Agreement, Sellers desire to sell and Milestone desires to purchase the IV
Catheter ; and
WHEREAS, Sellers and Milestone desire to further amend the Technology
Sale Agreement to allow for the sale of the IV Catheter to be governed by the
terms of the Technology Sale Agreement and to effect such additional terms and
provisions that the parties deem necessary all as are set forth below.
NOW, THEREFORE, for good and valuable consideration, the receipt and
sufficiency of which is hereby acknowledged, the Technology Sale Agreement as
previously amended is hereby further amended as follows:
1. The definition of "Intellectual Property" shall include new
subpoints (vi) and (vii) set forth below:
"(vi) the Safety IV Catheter Infusion Device (U.S. Utility Patent
Application Serial No. 10/174,246); and (vii) any and all other patent
submissions, past, present and future, that bear the name of one or
both of the Sellers, including all divisional patents, primary patents
and secondary patents."
2. Section 4 shall be amended to read as follows:
"4. Issuance of Options. Milestone agrees that for each future patent
issued, relating to the Proprietary Rights, Milestone will, as soon as
practicable thereafter, issue to Sellers, five year options to
purchase an aggregate of 25,000 shares of Milestone Common Stock at an
exercise price per share equal to the fair market value of a share on
the date of grant."
2
3. Section 11 shall be amended to read as follows:
"11. Binding Effect. This Technology Sale Agreement shall be binding
upon and inure to the benefit of each of the parties hereto and their
respective successors, assigns and/or legal representatives. In the
event that the obligations under this Technology Sale Agreement, do
not, for any reason, automatically survive a sale or transfer of all
or a significant part of Milestone's business or assets to a third
party (the "Transferee"), Milestone shall cause the Transferee to
assume all of Milestone's obligations under this Technology Sale
Agreement, as amended from time to time. If the undertaking of these
obligations, whether by way of automatic survival or by way of
assumption, in their entirety or in part, is impossible, impracticable
or of significantly different economic impact on Sellers, Milestone
shall use its best efforts to cause the Transferee to provide the
Sellers with alternatives that are essentially equivalent in value to
the existing obligations of Milestone under this Technology Sale
Agreement, as amended."
IN WITNESS WHEREOF, the parties hereto have executed this Third
Amendment to the Technology Sale Agreement as of the day and year first above
written;
MILESTONE SCIENTIFIC, INC.
By: /s/ Xxxxxxx Xxxxx
-----------------
Xxxxxxx Xxxxx, CEO
By: /s/ Xxxx X. Xxxxxxx
-------------------
Xxxx X. Xxxxxxx, DDS
By: /s/ Xxxxxxx X. Xxxxxxx
----------------------
Xxxxxxx X. Xxxxxxx, DDS
3
FOURTH AMENDMENT TO TECHNOLOGY SALE AGREEMENT
FOURTH AMENDMENT TO TECHNOLOGY SALE AGREEMENT, dated as of December 19, 2003,
between MILESTONE SCIENTIFIC, INC., a Delaware corporation ("Milestone") and
XXXX XXXXXXX and XXXXXXX XXXXXXX (collectively the "Sellers").
WITNESSETH
WHEREAS, Milestone and Sellers entered into a Technology Sale Agreement dated
April 9, 1998, as amended on December 16, 1999, November 28, 2001 and October
10, 2002, governing Sellers' sale to Milestone of their inventions, of (i) a
"Pressure/Force Computer Controlled Drug Delivery System", (ii) a "Universal
syringe Holder Enhancement" (iii) a non-deflecting, non-clogging single use
disposable hypodermic needle, (iv) a Handpiece for Injection Device with a
retractable rotating needle (US Patent No. 6,428,517 B1), Anti-deflection/force
penetration reduction rotating syringe (US Patent No. 6,428,517), for use as a
separate drug delivery or aspiration system or as an adjunct to Milestone's
computer controlled anesthesia system known as "The CompuDent/CompuMed/Wand(TM),
(v) a Local Anesthetic and Delivery Injection Unit with Automated Rate Control
(US Patent No. 6,652,482 B2), and (vi) Safety IV Catheter Infusion Device (US
Utility Patent App 10/174,246).
NOW, THEREFORE, for good and valuable consideration, the receipt and sufficiency
of which is hereby acknowledged, the Technology Sale Agreement as previously
amended is hereby further amended as follows:
1. Section 5 shall be amended to include the following language at the end of
subsection 5(a):
"Notwithstanding the general consideration structure set forth above, the
following shall exclusively govern the consideration payable to Sellers
with regard to U.S. Patents No. 6,652,482 B2, 6,428,517 and 6,200,289 B2:
(i) As consideration for US Patent No. 6,652,482 B2 embodying defined newly
essential elements to the technology, defining additional elements of the
system, and providing longevity for inclusive and comprehensive patent
coverage to previous and current Products including The Wand w/ Cruise,
WandPlus(TM), CompuDent(TM) and CompuMed(TM):
A. Milestone shall pay to Sellers an amount equal to 0.025 (2.5%) of the
Net Sales of those products, previously and currently sold by
Milestone, which embody the Proprietary Rights of US Patent No.
6,652,482 B2. The products that have embodied this technology,
previously and currently, are The Wand w/ Cruise, WandPlus(TM),
CompuDent(TM), CompuMed. Payments shall be made hereunder only until
the expiration of the US Patent No. 6,652,482 B2.
Page 1 of 3
B. The sellers, in good faith, hereby voluntarily agree to defer all
payments due to them for past and future sales of products embodying
the technology underlying US Patent No. 6,652,482 B2 until the earlier
of January 15, 2004 or such time that Milestone achieves positive net
income, as will be reflected in its quarterly or annual financial
statements. Milestone agrees not to delay payments further without
obtaining written consent from Sellers.
ASSUMPTIONS AND EXAMPLES:
1. Proprietary Rights are patented, US Patent No. 6,652,482 B2.
2. The Product which embodies technology underlying such Proprietary
Rights is sold for $660.00 per unit.
3. Number of units sold is 10 units.
4. There were no discounts, returns or allowances.
5. Net Sales of all Products which use such Proprietary rights are
$6600.00
THEN Royalties shall be calculated as follows:
Price per Unit x No. of Units x Royalty Rate
$660.00 x 10 x 0.025
$6,600.00 x 0.025 Royalty Rate = $165.00
- or -
Net Sales x Royalty Rate = Royalty
$6,600 x 2.5% = $165.00
(ii) As consideration for U.S. Patent No. 6,428,517 "Hand-Piece For
Injection Device With A Retractable And Rotating Needle" and U.S. Patent
No. 6,200,289 B2 "Pressure/Force Computer Controlled Drug Delivery System",
Milestone shall pay to the Sellers an amount equal to 0.05 (5%) of the Net
Sales of those products sold by Milestone, which embody the Proprietary
Rights underlying in the above-mentioned patents, except that for products
using the technology covered by Patent No. 6428,517 royalties shall be paid
only on those products produced from a six cavity or greater mold. The
products that have embodied these Proprietary Rights are the
SafetyWand(TM), The Wand-PDL Drive Unit device and the CompuFlo(TM).
Page 2 of 3
ASSUMPTIONS AND EXAMPLES:
1. Proprietary Rights are patented under US Patent No. 6,428,517 or U.S.
Patent No. 6,200,289 B2.
2. The Product which embodies technology underlying such Proprietary
Rights is sold for $2.00 per unit.
3. Number of Units Sold are 10 units.
4. There were no discounts, returns or allowances.
5. Net Sales of all Products which embody such Proprietary rights are
$20.00
THEN Royalties shall be calculated as follows:
Price per Unit x No. of Units x Royalty Rate
$2.00 x 100 x 0.05
$200.00 x 0.5 Royalty Rate = $10.00
- or -
Net Sales x Royalty Rate = Royalty
$200.00 x 5% = $10.00"
IN WITNESS WHEREOF, the parties hereto have executed this Fourth Amendment to
the Technology Sale Agreement as of the day and year first above written.
MILESTONE SCIENTIFIC, INC.
By: /s/ Xxxxxxx Xxxxx
-----------------
Xxxxxxx Xxxxx, CEO
SELLERS:
By: /s/ Xxxx Xxxxxxx
----------------
Xxxx Xxxxxxx, DDS
By: /s/ Xxxxxxx Xxxxxxx
-------------------
Xxxxxxx Xxxxxxx, DDS
Page 3 of 3
