THIRD AMENDMENT TO TECHNOLOGY SALE AGREEMENT
THIRD AMENDMENT TO TECHNOLOGY SALE AGREEMENT, dated October ___, 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:____________________________________
Xxxxxxx Xxxxx, CEO
By:_____________________________________
Xxxx X. Xxxxxxx, DDS
By:_____________________________________
Xxxxxxx X. Xxxxxxx, DDS
3
AMENDMENT TO TECHNOLOGY SALE AGREEMENT
WHEREAS, MILESTONE SCIENTIFIC, INC., a Delaware corporation ("Milestone"), and
XXXX XXXXXXX AND XXXXXXX 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 of 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 ComuMed/Wand(TM)"; and
amended as of the 16th of December, 1999, to include 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 ComuMed/Wand(TM)"; be
governed by the terms of the Technology Sale Agreement;
WHEREAS, the Sellers also invented a Safety IV Catheter Infusion Device
(U.S. Utility Patent App. Serial No. 10/174,246) 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 made as of the 9th of April, 1998, Sellers desire to sell and
Milestone desires to purchase the Safety IV Catheter Infusion Device (U.S.
Utility Patent App. Serial No. 10/174,246).
WHEREAS, Sellers and Milestone desire to amend the Technology Sale
Agreement made as of the 9th of April, 1998, so that the sale by Sellers to
Milestone of Safety IV Catheter Infusion Device (U.S. Utility Patent App. Serial
No. 10/174,246) be governed by the terms of the Technology Sale Agreement dated
9th of April, 1998.
WHEREAS, the terms governed by the Technology Sale Agreement dated 9th,
of April, 1998 Milestone gives further consideration of the sales transaction of
a Safety IV Catheter Infusion Device (U.S. Utility Patent App. Serial No.
10/174,246), to include the following transaction and agreements set forth below
between the parties herein entered the following:
Issuance of Options Upon Grant of Patent: Milestone agrees that if one
or more patents issues with respect to pending or future patent application
relating to said Safety IV Catheter Infusion Device (U.S. Utility Patent App.
Serial No. 10/174,246) and the Proprietary Rights of this technology, Milestone
will, as soon as practicably thereafter, issue Sellers five year options to
purchase 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.
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,
amended as of the 16th of December, 1999, is hereby subsequently amended to
include the Safety IV
2
Catheter Infusion Device (U.S. Utility Patent App. Serial No. 10/174,246),
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,
"Pressure/Force Computer Controlled Drug Delivery System (U.S. Patent No.
6,200,289), "Universal Syringe Holder Enhancement", "Non-deflecting,
Non-clogging Single Use Disposable Hypodermic Needle.
IN WITNESS WHEREOF, the parties hereto have executed the Amendment to
the Technology Sale Agreement as of the day and year first above written;
MILESTONE SCIENTIFIC, INC.
By:__________________________________________ _____________
Xxxxxxx Xxxxx, CEO Date
ACKNOWLEDGEMENT TAKEN IN XXX XXXX XXXXX
Xxxxx xx Xxx Xxxx
Xxxxxx of :
On the _____Day of _________ in the year 2002 before me, _____________________
the, undersigned, personally appeared XXXXX, XXXXXXX personally know to me or
proved to me on the basis of satisfactory evidence to be the individual whose
name is (are) subscribed to the within instrument and acknowledged to me that
he/she/they executed the same in his/her/their capacity(ies), and that by
his/her/their signature(s) on the instrument, the individual(s) or the person
upon behalf of which the individual(s) acted, executed the instrument.
-----------------------
NOTARY PUBLIC
3
IN WITNESS WHEREOF, the parties hereto have exexcuted the Amendment to
the Technology Sale Agreement as of the day and year first above written;
SELLERS
By:_____________________________________ _____________
Xxxx X. Xxxxxxx, DDS Date
By:_____________________________________ _____________
Xxxxxxx X. Xxxxxxx, DDS Date
ACKNOWLEDGEMENT TAKEN IN XXX XXXX XXXXX
Xxxxx xx Xxx Xxxx
Xxxxxx of :
On the _____Day of _________ in the year 2002 before me, _____________________
the, undersigned, personally appeared XXXXXXX, XXXX and XXXXXXX, XXXXXXX
personally know to me or proved to me on the basis of satisfactory evidence to
be the individual whose name is (are) subscribed to the within instrument and
acknowledged to me that he/she/they executed the same in his/her/their
capacity(ies), and that by his/her/their signature(s) on the instrument, the
individual(s) or the person upon behalf of which the individual(s) acted,
executed the instrument.
-----------------------
NOTARY PUBLIC
4
