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EXHIBIT 10.7
TECHNOLOGY TRANSFER AND ROYALTY AGREEMENT
This Technology and Royalty Transfer Agreement (the "Agreement") is
made this 23rd day of February, 2000 between Dr. Xxxx Xxxxx, an individual
residing in Georgia ("Xx. Xxxxx"), and GMP Vision Solutions, Inc., a Delaware
corporation (the "Company").
WHEREAS, Xx. Xxxxx is the sole inventor and sole owner of the
Technology (as that term is defined below) subject to a nonexclusive,
irrevocable, royalty-free license to the U.S. Government through the Department
of Veterans Affairs, which License is attached hereto as Exhibit A (the
"Government License"), and
WHEREAS, the Company is a corporation which has been formed under the
laws of the State of Delaware for the purpose of commercializing the Technology;
and
WHEREAS, the Company wishes to acquire all of rights in the Technology
possessed by Xx. Xxxxx.
NOW THEREFORE, for good and valuable consideration, the receipt and
sufficiency of which is hereby acknowledged, the parties agree as follows:
1. Definitions
1.1. "Affiliate" shall mean any legal entity (such as a
corporation, partnership, or limited liability company) that
directly or indirectly controls, is controlled by, or under
common control with the Company. For the purposes of this
definition, the term "control" means (i) beneficial ownership
of at least fifty percent (50%) of the voting securities of a
corporation or other business organization with voting
securities or (ii)the direct or indirect power, whether
exercised or not, to direct or cause the direction of, or
substantially influence, the policies or business practices of
another individual or legal entity.
1.2. "Closing Date" shall mean February 23, 2000 or such other date
upon which the Technology Transfer and Royalty Agreement and
related documents are executed.
1.3. "Net Sales" shall mean gross revenues received by the Company
or its Affiliates from the manufacture, sale, or use of
Patented Products by such entities, less trade discounts
allowed, third party commissions, refunds, recalls, freight
and delivery costs, sales taxes, rebates accrued, incurred or
paid to Federal Medicaid or State Medicare or other government
payors and amounts exactly repaid or credited by the Company
by reason of rejection or return of a Patented Product.
1.4. "Patents" shall mean Patent Application Number 60/131,030,
filed on April 26, 1999, entitled "Devices & Methods for
Treating Glaucoma by Enhancing Aqueous Outflow through
Xxxxxxx'x Canal and Anterior Chamber Angle," together with any
future patent applications which may be filed covering any
improvements or Technology, including any foreign,
continuation, continuation-in-part, or divisional application
based on or having a claim of priority to any such patent or
patent
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application and any patent issuing on any such, any reissue of
any such patent, and any patent on reexamination of any such
patent.
1.5. "Patented Products" shall mean the devices and procedures for
reducing intraoccular pressure in the treatment of glaucoma as
covered by the claims in the Patents.
1.6. "Royalties" shall mean the royalty payments defined in Section
3.1.2 (iii) hereof.
1.7. "Technology" shall mean all inventions disclosed in the
Patents, and all present intellectual property including
ideas, know-how, discoveries, tools, techniques, methods,
processes, inventions, works of authorship, derivative works,
programs, products and other technology for the practice,
manufacture, use, sale, testing, application, or development
of medical devices, instruments, reagents, methods and
processes for reducing intraoccular pressure; more
particularly, for instruments and methods related to glaucoma.
For purposes of this Agreement, Technology also shall include
all processes, procedures, blueprints, drawings, designs,
patterns, technology, notebooks, test results, manuals,
formulae, information and documents (including log books),
proprietary rights, confidential information, trade secrets
and licenses to make, use, sell, license or distribute any of
the foregoing, whether or not under development or in process,
in each case relating to, constituting part of or used or
useful in connection with the development, testing,
production, operation, manufacture or servicing of any
Technology, and all rights of action accrued and to accrue
under and by virtue of any of the foregoing, including the
right to xxx and recover for past infringement of the same.
2. Grant
Xx. Xxxxx hereby irrevocably assigns and transfers to the
Company her full, worldwide, right, title and interest in and to the
Patents and the Technology, including, without limitation, the right to
grant sublicenses, to make, use, sell, offer to sell, import, license,
market, manufacture, copy, distribute, modify, enhance, prepare
derivative works of, and otherwise exploit the Patents and the
Technology anywhere in the world, without duty to account to Xx. Xxxxx
under any patent, trade secret or other proprietary right of Xx. Xxxxx
not otherwise assigned to the Company hereunder. Xx. Xxxxx has this
date assigned all of her rights in the Patents and the Technology and
to any future patent applications which may be filed hereafter covering
the Technology as evidenced by the execution and delivery to the
Company of a Patent Assignment in the form attached hereto as Exhibit
B.
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*** CONFIDENTIAL INFORMATION OMITTED AND FILED SEPARATELY WITH THE SECURITIES
AND EXCHANGE COMMISSION. ASTERISKS DENOTE SUCH OMISSIONS.
3. Consideration
3.1. In consideration of the transfer of the Patents and the
Technology to the Company by Xx. Xxxxx, the Company:
3.1.1. On this Date has:
(i) Issued to Xx. Xxxxx [***] shares of the
Company's common stock in accordance with
the terms of the Stock Acquisition Agreement
signed by both parties in form attached
hereto as Exhibit C;
(ii) Entered into a three (3) year Consulting
Agreement with Xx. Xxxxx, a copy of which is
attached hereto as Exhibit D;
(iii) Reimbursed Xx Xxxxx for legal fees and
expenses in the amount of $ 48,500.00;
(iv) Caused its parent company, Global Medical
Products, Inc. ("GMP") to grant an option to
Xx. Xxxxx to purchase [***] shares of the
Common Stock of GMP at an exercise price of
[***] per share, as more fully described in
the Stock Option Grant, a copy of which is
attached hereto as Exhibit E.
3.1.2. After this Date agrees:
(i) To pay Xx. Xxxxx [***] upon receipt of the
first FDA approval of the use of the first
Patented Product in commercial operations
(the "First Approval"). The Company agrees
to pay Xx. Xxxxx the sum of [***] for a
first approval for any other Patented
Product ("Subsequent First Approval"),
provided that the Company will pay such sums
only on first approvals in connection with
new Patented Products and shall not be
obligated to pay such sums for any approval
for products that are a modification or use
of the Patented Product covered by a prior
First Approval or Subsequent First Approval;
(ii) To pay Xx. Xxxxx Royalty payments in the
amount of [***] of Company's Net Sales.
Royalty payments due pursuant to Sections 3.1.2 (ii)
shall be paid semi-annually within forty five (45) days of December 31
and June 30 during the period that any of the Patents remain valid and
unexpired in the country in which the Patented Products are made, used
or sold.
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Xx. Xxxxx agrees that no Royalties shall be due for
the internal use of any Patented Product for research and commercial
development purposes by the Company or its Affiliates, or for use by
third parties providing research, development or testing services on
behalf of the Company in seeking governmental approvals, certifications
or endorsements.
3.1.3. No Royalties shall be payable on sales of Patented
Products between the Company and any Affiliate, in
which event the royalty shall be based upon the Net
Sales by the Affiliate to a non-Affiliated third
party.
3.1.4. No multiple Royalties shall be due and payable to Xx.
Xxxxx on any Patented Product. In the event the
Company or any Affiliate is obligated to pay an
additional royalty on Patented Products the royalties
due Xx. Xxxxx hereunder shall be reduced by the
amount of such payments but in no event shall the
effective royalty rate due Xx. Xxxxx be less than
one-half of the stated amount due as provided in
paragraph 3.1.2 (ii) above.
3.1.5. The obligations to make royalty payments to Xx. Xxxxx
under this Agreement shall terminate in each country
upon the expiration of the last to expire of any
Patents covering Patented Products in that country.
4. Further Assurances
Xx. Xxxxx shall cooperate with the Company and shall take such further
action as may be reasonably requested by the Company in order to transfer,
secure, perfect or protect the rights granted hereunder, including executing
such documents of assignment or transfer as the Company may request in order to
record title to the Patents or the Technology in the United States Patent and
Trademark Office or any similar office in any other jurisdiction, executing such
declarations, petitions, affidavits or similar documents as may be requested by
the Company in connection with patent applications within the Technology, and
testifying as a witness in any proceedings relating to the Patents and the
Technology.
5. Confidentiality
The Technology being transferred by Xx. Xxxxx to the Company shall be
considered confidential information belonging to the Company and Xx. Xxxxx
agrees not to use such information except as otherwise permitted by the Company
and to employ reasonable efforts to maintain the information secret and
confidential, such efforts shall be no less than the degree of care employed by
Xx. Xxxxx to preserve and safeguard her own confidential information of the same
or similar nature. The information shall not be disclosed or revealed by Xx.
Xxxxx to anyone except employees of the Company or as otherwise authorized, in
writing by, or under an agreement with the Company. Xx. Xxxxx'x obligations
under this Section shall not extend to any part of the information:
(a) that can be demonstrated to have been in the public domain or
publicly known and readily available to the trade or the
public prior to June 29, 1999;
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(b) that becomes part of the public domain or publicly known by
publication or otherwise, not due to, or as the result of, an
act by Xx. Xxxxx, not authorized by the Company; or
(c) that is required to be disclosed by law, government regulation
or court order.
The Company acknowledges that Xx. Xxxxx filed with the Office General
Counsel, VA Central Office, a Report of Invention as required by Executive Order
11096 and implemented by VA Regulation 658 on May 28, 1999 and a like Notice of
Invention with Emory University in October 1999 and Xx. Xxxxx acknowledges such
institutions have agreed they have no interest in the Patent or have abandoned
such interest save and except as set forth in the Government License.
6. Representations and Warranties
6.1. Representations and Warranties of Xx. Xxxxx. Xx. Xxxxx makes
the following representations and warranties for the benefit
of the Company, as a present and ongoing affirmation of facts
in existence at the time of the execution and delivery of this
Agreement:
6.1.1. No Conflict. Xx. Xxxxx represents and warrants that
she is under no obligation or restriction, nor will
she assume any such obligation or restriction that
does or would in any way interfere or conflict with,
or that does or would present a conflict of interest
concerning, the transfer of intellectual property
interests or related actions and matters to be
performed and acted upon by Xx. Xxxxx under this
Agreement or the other agreements executed by the
parties on this date and that she is under no
obligation or restriction that would interfere or
conflict with her obligations hereunder or
thereunder.
6.1.2. Ownership Rights. Xx. Xxxxx represents and warrants
that she is the sole inventor and owner of all
Patents and Technology, subject only to the
Government License, and that no other third party has
any claim or rights thereto. Xx. Xxxxx represents and
warrants that she has full and sufficient right to
assign or grant the rights granted in the Patents and
Technology pursuant to this Agreement free and clear
of all liens, claims and encumbrances or other claims
of third parties except as expressly stated herein.
Xx. Xxxxx further represents and warrants that
information pertaining to the Patents and Technology
will not be published by or through her under
circumstances that would result in a loss of any
intellectual property rights. Xx. Xxxxx further
represents and warrants that she is unaware of any
intellectual property interests not belonging to the
Company that would be encompassed or otherwise used
in the making, use, offer to sell, sale, or
importation of Patented Products.
6.2 Representations and Warranties of The Company The Company
represents and warrants that it has the authority to perform
its obligations under this Agreement and the other agreements
executed by the parties on this date, and that it is under
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no obligation or restriction that would interfere or conflict
with its obligations hereunder or thereunder.
6.2.1. Stock Purchase and Option Grant The Company
represents and warrants that it has the authority to
perform its obligation to issue common stock in
accordance with the terms of the Stock Acquisition
Agreement and has authority to cause the grant of
stock options in accordance with Exhibit E.
6.2.2. Reasonable Efforts The Company represents and
warrants that it will use its reasonable and prudent
efforts to commercialize the Patents and the
Technology for the treatment of glaucoma.
7. General Provisions
7.1. Survival of Obligations The covenants and agreements provided
for in this Agreement shall survive the Closing Date and be
unaffected by any investigation made by or on behalf of any
party hereto.
7.2. Notices Any notice, request, instruction or other document
required to be given hereunder shall be in writing and
delivered personally or sent by registered or certified mail,
postage prepaid, by overnight courier or by facsimile,
cablegram or telex, according to the instructions set forth
below. Such notices shall be deemed given: at the time
delivered by hand, if personally delivered; at the time
received if sent by registered or certified mail; one business
day after deposited with an overnight courier; at the time
when receipt is confirmed by the receiving facsimile machine
if sent by facsimile (provided written notice by one of the
other means is sent on the same day); and when answered back
if sent by cablegram or telexed.
If to the Company, to:
GMP Vision Solutions, Inc.
Xxx Xxxx Xxxxxxx Xxxx.
Xxxxx 0000
Xxxx Xxxxxxxxxx, XX 00000
Telephone: 000 000 0000
Fax No.: 000 000 0000
Attn: President
If to Xx. Xxxxx, to:
Dr. Xxxx Xxxxx
0000 Xxxx Xxxxx
Xxxxxxx, Xxxxxxx 00000
Telephone: 000 000 0000
Fax No.: 000 000 0000
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7.3. Governing Law Except as otherwise provided herein, this
Agreement shall be governed by and construed in accordance
with the internal laws of the State of Florida.
7.4. Arbitration Any dispute, controversy or claim arising out of
or relating to this Agreement shall be settled by arbitration
under the rules of the American Arbitration Association in
Fort Lauderdale, Florida. All awards of the arbitrators shall
be final and binding on the parties and enforceable in any
court of competent jurisdiction. Nothing herein shall prevent
a party from seeking injunctive relief, where appropriate,
from a court of competent jurisdiction pending the outcome of
any arbitration concerning the subject of such arbitration or
when authorized by an arbitrator's award or when emergency
relief is required.
7.5. Successors and Assigns This Agreement shall be binding upon
and inure to the benefit of the parties hereto, and their
successors and assigns; provided, however, that no party may
assign any or all of its rights hereunder without the prior
written consent of the other party.
7.6. Parties in Interest Nothing in this Agreement is intended to
confer any rights or remedies under or by reason of this
Agreement on any persons other than the Company and Xx. Xxxxx
and their respective successors and permitted assigns.
7.7. Execution in Counterparts This Agreement may be executed in
two or more counterparts, each of which shall be deemed an
original agreement, but all of which together shall constitute
one and the same instrument.
7.8. Titles and Headings Titles and headings to sections herein are
for purposes of reference only and shall in no way limit,
define or otherwise affect the provisions herein.
7.9. Entire Agreement This Agreement and the other agreements,
assignments and other instruments of transfer and conveyance
exchanged by the parties and GMP's grant of the option to Xx.
Xxxxx on this date shall constitute the entire agreements
among such entities with respect to the matters covered hereby
and thereby and shall supersede all previous written, oral or
implied understandings with respect to such matters,
including, without limitation, the Letter of Intent between
Xx. Xxxxx and GMP dated June 29, 1999, as amended.
7.10. Amendment and Modification This Agreement may be amended,
modified or supplemented only by mutual consent set forth in a
writing duly signed by the parties hereto.
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IN WITNESS WHEREOF the parties have executed this Agreement as of the
day and year first above written.
INVENTOR
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Dr. Xxxx Xxxxx
GMP VISION SOLUTIONS, INC.
by:
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Xxxx Xxxxxxx, M.D., President
Attachments:
Exhibit A - License to Government
Exhibit B - Patent Assignment Form
Exhibit C - Stock Purchase Agreement Form
Exhibit D - Consulting Agreement
Exhibit E - Stock Option Grant
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