EXHIBIT 10.17
ASSIGNMENT OF XXXXX INTELLECTUAL PROPERTY RIGHTS
This Assignment dated January 29, 1997 is executed and delivered by Xxxx X.
Xxxxx, residing at 00 Xxxxxxxxx Xxxx Xxxx, Xxxxx Xxxx, Xxxxxxx 00000 ("Xxxxx"),
to Receptor Technologies, Inc., a Delaware corporation, having its principal
place of business at 000 Xxxx Xxxxx Xxxxxx, Xxxxxxxx, Xxxxxxx 00000 (the
"Company") in connection with the Series A Stock Purchase Agreement dated
January 29, 1997 between and among Xxxxx, the Company and certain investors (the
"Agreement").
WHEREAS, Xxxxx is the owner of "Xxxxx Intellectual Property Rights," which
includes "Xxxxx Patent Rights," Xxxxx Contract Rights and "Xxxxx Know-How" in
the "Technology" as these terms are defined as follows:
"TECHNOLOGY" means mass drug screening by clonal selection or amplification
of receptor in RNAs and all technology incorporated therein or necessary
therefor.
"XXXXX PATENT RIGHTS" means all patents and patent applications (which for
all purposes of this agreement shall be deemed to include certificates of
invention, applications for certificates of invention and utility models)
throughout the world, covering or relating to the Technology, including any
substitutions, extensions, reissues, reexaminations, renewals, divisions,
continuations or continuations-in-part, which Xxxxx owns or controls as of the
date of this Agreement and thereafter.
"XXXXX KNOW-HOW RIGHTS" means all rights, methods, materials, data and other
information owned or possessed by Xxxxx as of the date of this Agreement,
whether patentable or otherwise, relating to the Technology, including Xxxxx
Patent Rights.
"XXXXX CONTRACT RIGHTS" means all rights of Xxxxx with respect to the
Technology, Xxxxx Patent Rights and Xxxxx Know-How Rights under any agreement,
written or oral, with any person, including but not limited to the agreement
with Novo Nordisk dated May 5, 1995.
WHEREAS, Xxxxx is the owner of 1,523,088 shares of Common Stock of the
Company, representing all outstanding capital stock of the Company as of the
date of this Agreement;
WHEREAS, the transfer of the Xxxxx Intellectual Property Rights is a
capital contribution by Xxxxx to the Company under Section 351(a) of the
Internal Revenue Code of 1986, as amended; and
WHEREAS, the Company desires to acquire Xxxxx'x Intellectual Property
Rights for good and valuable consideration and pursuant to the Agreement;
NOW, THEREFORE, for other good and valuable consideration, the receipt
and sufficiency of which are hereby acknowledged, Xxxxx hereby agrees as
follows:
1. Xxxxx hereby assigns, transfers, conveys, and sets over to the
Company, its successors, and assigns all right, title and interest in and to
the Xxxxx Intellectual Property Rights and all rights and benefits therefrom
otherwise inuring to him, free and clear of all liabilities, obligations,
claims or encumbrances of any kind except as set forth in Section 2 hereof.
2. Xxxxx represents and warrants to the Company that he is the owner
of the Intellectual Property rights, and has good title thereto, free and
clear of any liability, obligation claim or encumbrance other than the rights
of Novo Nordisk pursuant to a contract dated May 5, 1995; and that the
execution and delivery of this Assignment and the transfer to the Company of
the rights transferred hereby will not constitute a breach of or a default
under any agreement to which Xxxxx is a party or by which the Xxxxx
Intellectual Property Rights are bound or subject. Except for the agreement
with Novo Nordisk, Xxxxx has not granted any rights to the Xxxxx Intellectual
Property Rights to any person. Xxxxx agrees to warrant and defend the
ownership of the Intellectual Property Rights transferred hereunder against
all persons.
Without charge to the Company, but without expense to Xxxxx, Xxxxx
agrees to execute and deliver to the Company such papers, including
applications and assignments as may be presented to him for the purpose of
obtaining patents or other protections for the Xxxxx Intellectual Property
Rights and to better evidence the transfer of ownership made hereunder.
3. Xxxxx, by his execution of this Assignment, and the Company, by
its acceptance of this Assignment, each hereby acknowledges and agrees that
neither the representations and warranties nor the rights and remedies of any
party under the Agreement shall be deemed to be enlarged, modified or altered
in any way by this instrument.
4. In the event that the Company determines (a) to liquidate its
assets, including the Xxxxx Intellectual Property Rights or (b) to abandon the
Xxxxx Intellectual Rights, the Company agrees to consider in good faith any
reasonable proposal from Xxxxx to reacquire the Xxxxx Intellectual Property
Rights.
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IN WITNESS WHEREOF, Xxxxx and the Company have caused this instrument to
be duly executed under seal as of and on the date first above written.
/s/ Xxxx X. Xxxxx
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Xxxx X. Xxxxx
ACCEPTED:
Receptor Technologies, Inc. hereby accepts assignment of the Xxxxx
Intellectual Property Rights and agrees to perform and discharge, according
to its tenor, the obligations of Xxxxx under the agreement with Novo Nordisk
dated May 5, 1995.
By: /s/ Xxxx X. Xxxxxxxxx
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Title: Vice President
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