EXHIBIT 99.3
TECHNOLOGY ASSIGNMENT AGREEMENT
This TECHNOLOGY ASSIGNMENT AGREEMENT ("Agreement") is made and entered
into as of January 20, 2000 (the "Effective Date"), by and among XXXXXXXXX
LIMITED, a corporation duly organized and existing under the laws of Belize with
a principal place of business at Xxxxxxx, Xxxxxxxx, Xxxxxx Xxxxxxx, Xxxxxxx
(hereinafter "Xxxxxxxxx"), XXXXXXX X. XXXXXXXXXXX, of Baybush, Straffan, County
Kildare, Ireland (hereinafter "Xxxxxxxxxxx"), and XXXXXX-XXXX PHARMACEUTICALS,
INC., a Delaware corporation having a place of business at 0000 Xxxxxxxx Xxxxxx,
Xxxxx 000, Xxx Xxxxx, Xxxxxxxxxx 00000 (hereinafter "Xxxxxx-Xxxx").
RECITALS
WHEREAS, Xxxxxxxxx and/or Xxxxxxxxxxx own all right, title, and interest in
the patents and applications listed in Attachment A hereto and certain related
know-how and intellectual property (except any such interest as Xxxxxx-Xxxx may
have thereto);
WHEREAS, Xxxxxxxxx, Xxxxxxxxxxx and Xxxxxx-Xxxx are parties to that certain
Settlement and Mutual Release Agreement entered into concurrently herewith (the
"Settlement Agreement") that terminates that certain License Agreement executed
on August 25, 1994 by the Parties (the "Xxxxxxxxx License Agreement");
WHEREAS, as provided in the terms of the Settlement Agreement, Xxxxxxxxx
and Xxxxxxxxxxx shall assign and alienate all of their right, title, and
interest in and to the Patents and Applications and the Technology (as defined
below), and Xxxxxx-Xxxx shall acquire the entire ownership rights to the Patents
and Applications and Technology, pursuant to the terms of this Agreement;
NOW, THEREFORE, in consideration of the foregoing and the covenants and
promises contained herein, the parties agree as follows:
ARTICLE I
DEFINITIONS
As used in the Agreement, the following capitalized terms shall have the
following meaning:
"Patents and Applications" means: (a) all patents and patent applications
identified in Attachment A; (b) all patents throughout the world that have
issued or may issue from the patents and applications identified in Attachment A
and including any continuation, continuation-in-part or divisional application
of any of them, and any reissue, reexamination, extension or substitution of any
of the foregoing patents, as well as renewals, reexaminations, reissues or
extensions of said patents, and all rights under the International Convention
for the Protection of Industrial Property, and (c) the Related Patents and
Applications.
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"Related Patents and Applications" means: (a) all patents and patent
applications, wherever filed in the world, that claim any aspect of the
Technology, whether filed before or after the Effective Date; (b) all
continuation applications, continuation-in-part applications, and divisional
applications of any of the foregoing; (c) any reissue, reexamination, extension
or substitution of any of such patents, as well as renewals, reexaminations,
reissues or extensions of the patents, and all rights under the International
Convention for the Protection of Industrial Property.
"Know-How" means any and all inventions, discoveries, information, trade
secrets, know-how procedures, expertise, data, results, or other technical or
scientific information which is not in the public domain, and which is not
disclosed in a patent.
"Technology" means any and all Know-How that relates in any way to (a) that
certain compound the Parties refer to as HE2000 and/or compounds related to
HE2000, or any of the DHEA analogs, derivatives or metabolites thereof,
including without limitation methods for making or using such compounds or (b)
the subject matter disclosed in the Patents and Applications.
ARTICLE II
ASSIGNMENT AND TRANSFER
2.1 In consideration of entering into the Settlement Agreement and of
Xxxxxx-Xxxx'x obligations under that certain Common Stock and Warrant Agreement,
the form of which is attached hereto as Attachment B (the "Common Stock and
Warrant Agreement"), by and between Xxxxxx-Xxxx and Xxxxxxxxxxx of even date
herewith, Xxxxxxxxx and Xxxxxxxxxxx, both individually and together, hereby
irrevocably, perpetually and forever assign and agree to assign, sell, transfer,
deliver and convey to Xxxxxx-Xxxx all of their right, title and interest in and
to the Patents and Applications and the Technology, as of the Effective Date,
together with all powers and privileges appertaining thereto, and Xxxxxx-Xxxx
hereby accepts such assignment. Accordingly, Xxxxxxxxx and Xxxxxxxxxxx
relinquish all rights and disclaim all interests in the Patents and Applications
and the Technology.
2.2 Xxxxxx-Xxxx shall have the sole and exclusive right, but not the duty,
to take all measures consistent with or permitted by ownership of the Patents
and Applications and the Technology, including but not limited to patent
prosecution and enforcement, in all countries and jurisdictions in the world.
2.3 Xxxxxx-Xxxx shall have the sole and exclusive right, but not the duty:
(a) to prosecute (including through reissue, reexamination, opposition
or appeal) the patent applications within Patents and Applications, and claiming
inventions in the Technology, including continuations, continuations-in-part and
divisionals thereof, as well as to prosecute any reissue patent applications and
any re-examination patent applications as a part of any reissue or re-
examination proceeding;
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(b) to enter any claim of any patent or application into interference
and to prosecute interference;
(c) to procure any patent resulting from the prosecution set forth in
Section 2.3(a) and 2.3(b); and
(d) to maintain all issued patents worldwide. Notwithstanding the
foregoing, Xxxxxx-Xxxx shall not have the duty or obligation to prosecute, issue
or maintain any patent or application.
2.4 Xxxxxx-Xxxx shall have the sole and exclusive right, but not the duty,
to grant licenses under the Patents and Applications and to collect royalty
and/or other payments therefor.
2.5 Xxxxxx-Xxxx shall have the sole and exclusive right, but not the duty,
to xxx on the patents in the Patents and Applications, and to collect all
damages and profits for any past, present and/or future infringements thereof.
2.6 Xxxxxx-Xxxx shall have the sole and exclusive right, but not the duty,
to bring and maintain any action necessary to defend its rights to the Patents
and Applications, and/or the Technology, including but not limited to actions in
copyright and trade secret.
2.7 Any such licenses or suits of Sections 2.4, 2.5, and/or 2.6,
respectively, shall be undertaken at Xxxxxx-Xxxx'x sole discretion and for its
sole benefit.
2.8 Xxxxxxxxx and Xxxxxxxxxxx shall execute and deliver to Xxxxxx-Xxxx
and/or its representatives (at Xxxxxx-Xxxx'x request and expense) all documents
and instruments, to be prepared by Xxxxxx-Xxxx, as are reasonably necessary for
Xxxxxx-Xxxx to perfect and/or record any of the rights that are granted to it
under this Agreement. Such documents shall include appropriate patent
assignment documents, which Xxxxxxxxx and Xxxxxxxxxxx shall execute within
fourteen (14) days after the execution of this Agreement. Such acts of
perfecting and recording shall be at Xxxxxx-Xxxx'x expense.
2.9 Xxxxxxxxx and Xxxxxxxxxxx shall deliver or cause to be delivered to
Xxxxxx-Xxxx and/or its representatives within twenty-one (21) days after
execution of this Agreement any and all tangible manifestations of the Patents
and Applications and/or the Technology in Xxxxxxxxx'x and/or Xxxxxxxxxxx'x
possession or control; including without limitation all patent prosecution files
and all documents containing, comprising, or evidencing the Technology;
provided, however, that copies of such documents may be retained for their
records. The foregoing requirement notwithstanding, Xxxxxxxxx and Xxxxxxxxxxx
shall not be required to deliver to Xxxxxx-Xxxx any documents that are subject
to the attorney-client privilege or work product doctrine; provided, that a
complete privilege log ("Privilege Log") is provided to Xxxxxx-Xxxx for each
document being withheld. The Privilege Log must set forth as to each document
being withheld, its date, its identity, (e.g. letter, research memorandum, etc.)
its author, the identity of the recipient(s) of the original and any copies, and
the basis upon which the document is being withheld (attorney-client privilege
or attorney work product). Xxxxxx-Xxxx shall have ten (10)
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business days to dispute the assertion of any privilege, as it pertains to the
disclosures and delivery required by this paragraph.
2.10 Xxxxxxxxx and Xxxxxxxxxxx agree that, upon execution of this
Agreement, it will instruct its legal representatives and all other relevant
third parties to provide to Xxxxxx-Xxxx and/or its representatives, within
twenty-one (21) days after the execution of this Agreement, all notes, records,
files, prototypes, and other tangible items of any sort in their possession or
control pertaining to the Patents and Applications and/or the Technology;
provided, however, that copies of such documents may be retained for their
records. The foregoing requirement notwithstanding, Xxxxxxxxx and Xxxxxxxxxxx
shall not be required to deliver to Xxxxxx-Xxxx any documents that are subject
to the attorney-client privilege or work product doctrine; provided, that
Privilege Log is provided to Xxxxxx-Xxxx for each document being withheld.
Xxxxxx-Xxxx shall have ten (10) business days to dispute the assertion of any
privilege, as it pertains to the disclosures and delivery required by this
paragraph.
2.11 Xxxxxxxxx and Xxxxxxxxxxx agree, if so requested by Xxxxxx-Xxxx and at
Xxxxxx-Xxxx'x expense, to provide all reasonable technical assistance in
prosecution of any patent application in the Patents and Applications and/or the
Technology, related to and/or arising from the Agreement until all prosecution
of patent applications in the Patents and Applications and/or the Technology in
all patent offices worldwide is completed.
ARTICLE III
CONSIDERATION
3.1 Upon receipt by Xxxxxx-Xxxx of the documents required to be delivered
pursuant to Sections 2.9 and 2.10 and the second sentence of Section 2.8,
Xxxxxx-Xxxx shall issue to Xxxxxxxxx (i) 132,000 shares of Xxxxxx-Xxxx Common
Stock, out of the total of 660,000 shares of Xxxxxx-Xxxx Common Stock to be
issued over time (as adjusted for any stock dividends, combinations, splits,
recapitalizations and the like), and (ii) warrants to purchase an aggregate of
400,000 shares of Xxxxxx-Xxxx Common Stock (as adjusted for any stock dividends,
combinations, splits, recapitalizations and the like), at an exercise price of
$25.00 per share, pursuant to the vesting schedules and other terms, provisions
and conditions of the Common Stock and Warrant Agreement.
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ARTICLE IV
NO FURTHER DEVELOPMENT
4.1 Neither Xxxxxxxxx nor Xxxxxxxxxxx, nor any of their affiliates,
agents, representatives or employees, shall conduct any further research,
development or commercialization activities of any kind relating in any way to
the Technology in any country or jurisdiction in the world.
4.2 Xxxxxxxxx and Xxxxxxxxxxx hereby agree that all Know-How transferred
from Xxxxxxxxx and Xxxxxxxxxxx to Xxxxxx-Xxxx pursuant to this Agreement, the
Patents and Applications and their content, and all information relating to the
Technology, are the confidential information of Xxxxxx-Xxxx ("Confidential
Information of Xxxxxx-Xxxx"). It is agreed and understood that Confidential
Information of Xxxxxx-Xxxx shall not include any information which Xxxxxxxxx and
Xxxxxxxxxxx can prove by competent evidence is now or hereafter becomes (through
no act or failure to act on the part of Xxxxxxxxx, Xxxxxxxxxxx or any of their
affiliates, agents, representatives or employees) publicly known or available.
4.3 Xxxxxxxxx and Xxxxxxxxxxx covenant and agree that they and their
affiliates, representatives, agents and employees will not publish or disclose
any Confidential Information of Xxxxxx-Xxxx unless Xxxxxx-Xxxx has given
Xxxxxxxxx or Xxxxxxxxxxx the prior written permission to do so, which permission
may be withheld at Xxxxxx-Xxxx'x sole discretion.
4.4 Xxxxxxxxx and Xxxxxxxxxxx shall remove from their website and all
other publicly available sources within the control of Xxxxxxxxx or Xxxxxxxxxxx
all Confidential Information of Xxxxxx-Xxxx, including without limitation all
clinical data and discussions, or information relating to the Technology.
ARTICLE V
WARRANTIES, REPRESENTATIONS AND ACKNOWLEDGEMENTS
5.1 Each of Xxxxxxxxx and Xxxxxxxxxxx, severally and not jointly,
represents, covenants, and warrants to Xxxxxx-Xxxx, its successors, legal
representatives and assigns that as of the Effective Date hereof:
5.1.1 it or he has full legal right, power and authority to enter
into and perform this Agreement;
5.1.2 they together or individually are the sole and lawful owner
or owners of the entire right, title, and interest in and to the Patents and
Applications and the Technology (except any such interest as Xxxxxx-Xxxx may
have thereto);
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5.1.3 there are no outstanding liens, licenses and/or encumbrances
burdening the Patents and Applications and the Technology or any part thereof
(except for the license to Xxxxxx-Xxxx under the Xxxxxxxxx License Agreement);
5.1.4 all Patents and Applications, excluding those patents and
applications that have not yet been filed, are active and in force in the U.S.
or other territories to which they apply;
5.1.5 except as set forth on Exhibit C of that certain Sponsored
Research and License Agreement, dated as of the date hereof, among Edenland,
Inc. and the parties hereto, neither Xxxxxxxxx nor Xxxxxxxxxxx (nor any of their
affiliates) possesses any Know-How or has filed any patents or patent
applications relating to a compound or composition that elicits the same or
similar biological activity as the Technology;
5.1.6 it or he has not granted, expressly or otherwise, an
assignment or any license or other right, exclusive or otherwise, to or under
the Patents and Applications and/or the Technology, which rights remain in
force;
5.1.7 it or he has received no notice of any pending or threatened
claims of infringement or misappropriation with respect to the Patents and
Applications, and knows of no reason that it would receive such notice;
5.1.8 it or he has not executed and will not execute any
agreements inconsistent with this Agreement or to the detriment of the Patents
and Applications assigned hereby; and
5.1.9 it or he shall sign all papers and documents, take all
lawful oaths, and do all acts necessary or required to be done for the
procurement, maintenance, enforcement and defense of the Patents and
Applications throughout the world at the cost and expense of Xxxxxx-Xxxx, its
successors, legal representatives and assigns.
5.2 Xxxxxx-Xxxx represents and warrants to Xxxxxxxxx and Xxxxxxxxxxx that
as of the Effective Date hereof it has full legal right, power and authority to
enter into and perform this Agreement.
5.3 Xxxxxxxxx and Xxxxxxxxxxx each agrees that if Xxxxxxxxx or Xxxxxxxxxxx
is unable for any reason, after reasonable effort, to secure any of relevant
signatures on any document needed in connection with the actions specified
herein relating to the Patents and Applications and the Technology, Xxxxxxxxx
and Xxxxxxxxxxx hereby irrevocably designates and appoints Xxxxxx-Xxxx and its
duly authorized officers and agents as its agent and attorney in fact, which
appointment is coupled with an interest, to act for and in its behalf to
execute, verify and file any such documents and to do all other lawfully
permitted acts to further the purposes of this Agreement with the same legal
force and effect as if executed by Xxxxxxxxx or Xxxxxxxxxxx.
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ARTICLE VI
INDEMNIFICATION AND LIABILITY
6.1 Xxxxxxxxx and Xxxxxxxxxxx, severally and not jointly, hereby agree to
save, defend and hold Xxxxxx-Xxxx and its directors, employees and agents
harmless from and against any and all damages, expenses, losses, suits, claims,
actions, demands, and/or liabilities, including reasonable legal expenses and
attorneys' fees, resulting from any breach of the representations, warranties or
covenants of Article V.
6.2 To the extent Xxxxxx-Xxxx may maintain product liability insurance,
Xxxxxx-Xxxx agrees to make Xxxxxxxxx and Xxxxxxxxxxx a named insured under such
insurance.
ARTICLE VII
MISCELLANEOUS
7.1 Notices. Notices, approvals, and consents required or permitted under
this Agreement shall be in writing and shall be sent by hand or by certified
mail, postage prepaid, to such addresses as the parties may hereafter specify;
or by facsimile with electronic confirmation of receipt.
7.2 No Waiver. No waiver of any right under this Agreement shall be
deemed effective unless contained in a writing signed by the party charged with
such waiver. Failure by either party to exercise any of its rights hereunder
shall not constitute or be deemed a waiver or forfeiture of such rights.
7.3 Entire Agreement. This Agreement, including Attachments A and B
hereto, sets forth the entire understanding of the parties with respect to the
subject matter herein and supersedes all prior agreements, whether oral or
written, between them. This Agreement may not be modified after its execution
except by a writing signed by authorized representatives of the parties hereto.
7.4 Draftsmanship. This Agreement and the wording contained herein have
been arrived at by mutual negotiations of the parties, and no provision hereof
shall be interpreted or construed against one party in favor of another party
merely by reason of draftsmanship.
7.5 Successors and Assigns. This Agreement shall inure to the benefit of
and be binding upon the parties hereto, their respective heirs, executors,
administrators, successors and assigns.
7.6 Severability. If any provision of this Agreement is or becomes or is
deemed invalid, illegal, or unenforceable in any jurisdiction, such provision
shall be deemed amended to conform to applicable laws so as to be valid and
enforceable, or, if it cannot be so amended
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without materially altering the intention of the parties, it shall be stricken
and the remainder of this Agreement shall remain in full force and effect.
7.7 Governing Law. This Agreement shall be governed by and construed in
accordance with the laws of the State of California, without reference to its
conflicts of law provisions, as though it were written, executed and fully
performed within the State of California.
7.8 Dispute Resolution. In the event of any dispute arising under this
Agreement, the parties shall refer such dispute to the Chief Executive Officer
of Xxxxxx-Xxxx and Xxxxxxxxxxx for attempted resolution by good faith
negotiations within thirty (30) days after such referral is made. In the event
such officers are unable to resolve such dispute within such thirty (30) day
period, the parties may invoke the provisions of Sections 7.9 and 7.10 below.
7.9 Remedies of the Company. Xxxxxxxxx and Xxxxxxxxxxx acknowledge that
irreparable damage would result to Xxxxxx-Xxxx if they breach any provision of
this Agreement, and the Company would not have an adequate remedy at law for
such a breach or threatened breach. In the event of such a breach or threatened
breach, Xxxxxxxxx and Xxxxxxxxxxx agree that Xxxxxx-Xxxx may, notwithstanding
anything to the contrary herein contained, and in addition to the other remedies
which may be available to it, seek to enjoin them, together with all those
persons associated with them, from the breach or threatened breach of such
covenants, in a court of competent jurisdiction. Xxxxxxxxx, Xxxxxxxxxxx and
Xxxxxx-Xxxx agree to the jurisdiction and venue in the federal and state courts
located in San Diego, California.
7.10 Arbitration. To ensure rapid and economical resolution of any
disputes which may arise under this Agreement, the parties agree that any and
all disputes or controversies of any nature whatsoever, arising from or
regarding the interpretation, performance, enforcement or breach of this
Agreement shall be resolved by confidential, final and binding arbitration
(rather than trial by jury or court or resolution in some other forum) to the
fullest extent permitted by law. Any arbitration proceeding pursuant to this
Agreement shall be conducted by the American Arbitration Association ("AAA") in
San Diego, under the then existing AAA commercial arbitration rules. If for any
reason all or part of this arbitration provision is held to be invalid, illegal,
or unenforceable in any respect under any applicable law or rule in any
jurisdiction, such invalidity, illegality or unenforceability will not effect
any other portion of this arbitration provision or any other jurisdiction, but
this provision will be reformed, construed and enforced in such jurisdiction as
if such invalid, illegal or unenforceable part or parts of this provision had
never been contained herein, consistent with the general intent of the Parties
insofar as possible.
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IN WITNESS WHEREOF, the parties have executed this Agreement by their
respective authorized representatives as of the date first set forth above.
XXXXXXX X. XXXXXXXXXXX, XXXXXX-XXXX PHARMACEUTICALS, INC.
an individual
/s/ Xxxxxxx X. Xxxxxxxxxxx By: /s/ Xxxxxxx X. Xxxxxx
----------------------------- -------------------------------------
Xxxxxxx X. Xxxxxxxxxxx Xxxxxxx X. Xxxxxx
XXXXXXXXX LIMITED
By: /s/ Xxxxxxx X. Xxxxxxxxxxx
------------------------------
Xxxxxxx X. Xxxxxxxxxxx
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Attachment A
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Docket Filing Serial # Patent Issue Expiration Annuity
Number Date (Publication #) Number Date Date Due
------------------------------------------------------------------------------------------------------------
bromoepiandrosterone and analogs for retrovirus infections
------------------------------------------------------------------------------------------------------------
150IE 4/16/87 997/87 abn*
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* pnd = pending, abn = abandoned
bromoepiandrosterone and analogs for retrovirus infections
------------------------------------------------------------------------------------------------------------
150.1IE 8/27/87 2289/87 abn
150.1US 8/27/87 07/090637 abn
------------------------------------------------------------------------------------------------------------
bromoepiandrosterone and analogs for retrovirus infections
------------------------------------------------------------------------------------------------------------
150.2AT 4/15/88 88984 401470 2/15/96
150.2AU 4/15/88 14678/88 608824 9/02/91
150.2BE 4/15/88 8800428 1004315 4/15/88
150.2CA 4/15/88 564245 1325594 12/28/93
150.2CH 4/15/88 1393/88 675358-9
150.2DE 4/15/88 P3812595.1 3812595 7/3/97
150.2DK 4/15/88 882081 pnd
150.2FI 4/15/88 881773 abn
150.2FR 4/15/88 8805043 2615394 9/23/94
150.2GB 4/14/88 888864 2204237 2/6/91 abn
150.2GR 4/15/88 881002248 1002248 6/22/96
150.2IL 4/15/88 86089 86089 2/16/93
150.2IT 4/15/88 47858A/88 1227073
150.2JP 4/15/88 93293/88 2577771 11/7/96
150.2KR 4/15/88 4283/88 112076 1/3/97
150.2LU 4/15/88 87202 87202 abn
150.2NL 4/15/88 8800926 pnd
150.2NZ 4/15/88 224272 224272
150.2NZ.D 12/3/90 236303 236303
150.2OA 08729 abn
150.2PH 4/14/88 36798 25907 12/19/91
150.2PT 4/15/88 87259 87259 abn
150.2SE 4/15/88 8801406-3 0503482 6/24/96
150.2US 4/15/88 07/182480 4956355 9/11/90 9/11/07
150.2ZA 4/15/88 882667 88/2667 12/28/88
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17-ketosteroids to treat malaria & trypanosomes
-----------------------------------------------------------------------------------------------------------
157P 11/24/98 60/109923 abn
157.1 11/24/99 09/449004 pnd
157.1F 11/24/99 US99/28079 pnd
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------------------------------------------------------------------------------------------------------------
Docket Filing Serial # Patent Issue Expiration Annuity
Number Date (Publication #) Number Date Date Due
------------------------------------------------------------------------------------------------------------
17-ketosteroids to treat Togaviruses (HCV, BVDV)
------------------------------------------------------------------------------------------------------------
158P 11/24/98 60/109924 abn
158.1 11/24/99 09/449184 pnd
158.1F 11/24/99 US99/28082 pnd
------------------------------------------------------------------------------------------------------------
17-ketosteroids to treat toxoplasma & cryptosporidia
------------------------------------------------------------------------------------------------------------
159P 11/27/98 60/110127 abn
159.1 11/24/99 09/449042 pnd
159.1F 11/24/99 US99/28080 pnd
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therapeutic complexes
------------------------------------------------------------------------------------------------------------
160IE 6/8/93 93930590 95930590
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liposomes containing hydroxyl-substituted aliphatic carbocyclic compounds
------------------------------------------------------------------------------------------------------------
161IE 10/27/93 93930811 95930811
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colloidal suspension formulation method for therapeutic use
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162IE 5/25/95 95950377 pnd
------------------------------------------------------------------------------------------------------------
EBV treatment methods
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165P file January 2000
steroid therapeutic agents
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202P 3/11/99 60/124087 pnd
202.1P 3/23/99 60/126056 pnd
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