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:
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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