Exhibit 10.1
AGREEMENT
BETWEEN THE RESEARCH FOUNDATION OF THE CITY UNIVERSITY OF NEW
YORK AND MEDISCIENCE TECHNOLOGY CORPORATION
This Agreement is made and entered into as of June 10 ,2002 (the
"Effective Date"), between The Research Foundation of The City University of New
York, a New York non-profit corporation having its central office at 000 X. 00xx
Xx. Xxx Xxxx, XX 00000 X.XX ("FOUNDATION") and Medisience Technology Corporation
having its principal office at 0000 Xxxxxxxxx Xxx, Xxxxxx Xxxx, XX 00000
MEDISCENCE").
WITNESSETH
WHEREAS, FOUNDATION owns certain technology and wishes to enter into an
agreement for the commercialization of this technology with Mediscience, and;
WHEREAS, FOUNDATION and MEDISCIENCE previously entered into a Research Agreement
("Research Agreement") for the development and commercialization of said
technology dated June 1, 1992 and amended said agreement from time to time, the
last amendment being August of 2001 and;
WHEREAS. FOUNDATION and MEDISCIENCE again wish to amend terms and conditions of
Research Agreement,
Now therefore, the parties agree to the following terms and conditions.
ARTICLE 1
DEFINITIONS
For the purposes of this Agreement, the following words and phrases shall
havethe following meanings;
1.1 FIELD OF USE shall mean all medical applications of the foundation
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technology embodied in patent applications and/or the foundation
technology defined and detailed in "Attachment A" exclusively, provided
that said technology was not in the public domain at the time ft was
disclosed to MEDISCIENCE.
1.2 LICENSED PRODUCT shall mean any product, which embodies, or the
manufacture, use or sale of which employs, any of the RFCUNY patents/
patent applications in "Attachment A" exclusively.
1.3 NET SALES shall mean MEDISCIENCE'S gross revenues from the sale or license
of products to independent third parties less either;
A- Discounts allowed in amounts customary in the trade for direct sales
B- Sales taxes, tariff duties and/or use taxes directly imposed and with
reference to particular sales
C- Outbound transportation prepaid or allowed
D- Amounts allowed or credited on returns or 10% of gross revenues
whichever is greater
E- Licensed products shall be deemed to have been sold when paid for
F- For the purpose of calculating net sales the invoice cost of the entire
system shall be ulillzed to the extent the system incorporates any of
the technology represented in Attachment A
1.4 "Patent Application" shall mean ail Patent Applications and issued
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Patents listed in "Attachment A", (see 1.1 and 1.2}
1-5 " Royalties" shall mean royalties paid or payable by MEDISCIENCE
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to FOUNDATION as described in Article 4,
1.6 "Territory" shall mean world-wide
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ARTICLE 2
GRANT
2.1 The FOUNDATION agrees to extend MEDISCIENCE'S right to exclusive,
transferable worldwide, irrevocable licenses in foundation
technology listed in "Attachment A". Terms and conditions of said
licenses are set forth in the agreement entered into in 1992,
attached hereto. Paragraph 5.G is amended to allow MEDISCIENCE a
period of five (5) years from The Effective Date of this Amended
agreement to offer for sale Licensed Products, embodying the
technology referred to in Attachment A and subject to Article 4,
herein.
2.2 FOUNDATION retains the right to use the Technology listed in
"Attachment A" for research, teaching and other educationally
related purposes.
2.3 MEDISCIENCE may grant sublicenses consistent with the terms of this
Amended Agreement and the 1992 Agreement MEDISCIENCE must deliver to
FOUNDATION a true and correct copy of each sublicense granted by
MEDISClENCE, and any modification or termination thereof, within
thirty (30) days of execution, modification, or termination, if
-this Agreement is terminated, all existing sublicenses granted by
MEDISCIENCE must be assigned to FOUNDATION
BEST EFFORTS
3.1 MEDISCIENCE represents to FOUNDATION that it will continue to use
its best efforts to commercialize the Technology through the sale of
licensed Products in the Territory. MEDISCIENCE will report its
efforts to the FOUNDATION once a year.
3.2 In the event that MEDISCIENCE fails to commercialize the Technology
in "Attachment A" within five (5) years from the Effective Date as
this Amended Agreement, FOUNDATION will have the right to terminate
this Agreement and all FOUNDATION rights to the Technology in
"Attachment A" will revert to the FOUNDATION.
ARTICLE 4
PAYMENTS, ROYALTIES & PATENT COST REIMBURSEMENT
4.1 in consideration of the rights granted under this Agreement,
MEDISCIENCE will pay Royalties to FOUNDATION in the manner shown
below:
(a) A royalty equal to 3 1/4 % of the Net Sates of Licensed
Product; without differentiation as to which patents represent
what percentage of the final product.
(b) A royalty equal to 40% of any payments received by MEDISCIENCE
from a sub-licensee in connection with sates and/or licenses
of licensed Product; and
(c) SINGLE Annual License fee for all foundation patent/patent
applications of "Attachment A" according to the following
schedule:
i. $5,000 on the second anniversary of Ms Agreement, or one
year after the receipt of funding for product
development and commercialization, whichever is sooner;
ii $ 10,000 on the th W and fourth anniversaries of this
Agreement; and
iii. $20,000 on the fifth and subsequent anniversaries of
this agreement, unless royalties due under (a) and (b)
above exceed $20,000 in which case there shall be no
license fee.
4.2 MEDISCIENCE shad pay to FOUNDATION the royalties due and payable
under this Agreement quarterly, no later than sixty (60) days after
December 31st and June 30* of each year. If no royalties are due, it
shall be so reported.
4.3 Amounts payable hereunder by MEDISCIENCE shall be payable irt United
States funds without deductions for taxes, assessments, fees, or
charges of any kind.
4.4 MEDISCIENCE 's obligation to pay royalties to FOUNDATION shall
continue for each LICENSED PRODUCT, until the expiration of the test
to expire valid claim of a patent relating to such LICENSED PRODUCT.
4.5 MEDISCIENCE shall pay all costs and maintenance fees associated with
all patent applications and issued patents both foreign and
domestic. MEDISCIENCE shall reimburse FOUNDATION for any and all
reasonable expenses incurred by FOUNDATION in connection with the
Patent Applications and Patents costs or fees that are incurred in
the event of default of payment by MEDISCIENCE.
ARTICLE 5
OUTSTANDING DEBT
5.1 MEDISCIENCE agrees to the following financial terms and conditions;
A) MEDISCIENCE will issue MEDISCIENCE Common Shares on the basis of $.25 per
share as payment of 25% ($70,807.00) of the outstanding debt owed to FOUNDATION.
Two Hundred and Eighty Three Thousand Two Hundred and Twenty Eight (283,228)
shares will be issued in the name of the Research Foundation of City University
of New York.
B) MEDISCIENCE will make a cash payment of $85,045.00 representing 30% of the
outstanding amount of $283,483.00 owed to the Research Foundation. Payment will
be made by MEDISC1ENCE upon execution of this agreement. Failure to make this
payment will render this agreement null and void.
C) MEDISCIENCE will grant a 5-year option to FOUNDATION or nominee to purchase
600,000 shares of MEDISCIENCE Common at $1.00 per share in exchange for
cancellation of the remaining 45% of debt The parties agree that at anytime
during this five year period MEDISCIENCE retains the right to tender the balance
due FOUNDATION in cash as full payment canceling and voiding this option,
FOUNDATION may exercise this option at anytime within the five year period
beginning on the Effective Date of this Amended Agreement If FOUNDATION
exercises its option, MEDISCIENCE 's right to tender the balance due is limited
to the amount of the option unexercised by FOUNDATION.
D) The financial obligations established herein represent the full and entire
understanding of the parties for all patents, patent applications, licenses and
payments owed by virtue of any prior agreement or amendment thereto.
ARTICLE 6 REPORTS AND
RECORDS
6.1 MEDISCIENCE, on March 1 and September 1 of each year, shall deliver
to FOUNDATION a true and accurate report of the business conducted
by MEDISCIENCE and any sub-licensee MEDISCIENCE executes during the
preceding six (6) month period under this Agreement Such report
shall include at least the following:
(a) Total number of unite of Licensed Product sold or licensed,
and price per unit;
(b) Discounts as defined in the definition of Net Sales in
paragraph 1,3; and
(c) Total Royalties and payments due,
6.2 Simultaneously with the delivery of the report described in 6.1,
MEDISCIENCE shall pay to FOUNDATION the Royalties, if any, due for
the period covered by such report. If no Royalties are due, it shall
be so reported.
6.3 MEDISCIENCE shall keep full, true and accurate books of account
containing all particulars, which may be necessary for the purpose
of computing and verifying the amount payable to FOUNDATION by way
of Royalty as aforesaid. Said books of accounts shall be kept at
MEDISCIENCE'S principal place of business or the principal place of
business of a division of MEDISCIENCE which is marketing the
Licensed Products. Said books and the supporting data shall be open
at all reasonable times, for five (5) years following the end of the
calendar year to which they pertain, to the inspection of
FOUNDATION'S Internal Audit Division and/or of an independent
certified public accountant retained by FOUNDATION and/or a
certified public accountant employed by FOUNDATION, for the purpose
of verifying MEDISCIENCE's report required in 6.1 or compliance in
other respects with this license. executes during the preceding six
($) month period under this Agreement Such report shall include at
least the following:
(d) Total number of unite of Licensed Product sold or licensed,
and price per unit;
(e) Discounts a$ defined in the definition of Net Sales in
paragraph 1,3; and
(f) Total Royalties and payments due,
6.4 Past due royalty amounts owed to Foundation by Mediscience pursuant
to this Section 6 shall bear interest at the rate of 1% per month.
If any audit pursuant to section 6.3 reveals an underpayment to
Foundation of greater than ten percent 10% of the amount due then
MEDISCIENCE shall further pay the reasonable and documented cost of
such audit
ARTICLE 7
PATENTS
7.1 MEDISCIENCE shall, with counsel selected by MEDISCIENCE and
reasonably acceptable to FOUNDATION, prepare, apply for, seek prompt
issuance of, and maintain during the term of this Agreement the
patents/patent applications listed in Attachment A in the United
States The preparation, and to provide comments to FOUNDATION with
respect to the preparation, filing and prosecution of tie patents
which comments shall be given due consideration by FOUNDATION in
connection with the foregoing, MEDISC1ENCE shall keep FOUNDATION
fully informed as to the Status of patent matters described in this
Article, including without limitation, by providing FOUNDATION the
opportunity, as far in advance of filing dates as possible, to fully
review extensions. comment on any documents which will be tilted in
any patent office, and providing FOUNDATION copies of any
substantive documents that MEDISCIENCE receives from such patent
offices promptly after receipt, including notice of all
interferences, reissues, re-examination, oppositions or requests for
patent term prosecution, filing, fifing jurisdiction and maintenance
of the Patents/patent applications in "Attachment A" shall be the
primary responsibility of MED1SC1ENCE.
7.2 MEDISCIENCE, with Foundation's assistance will secure and maintain a
copy file of ail the Patents and Patents Pending reflected in
"Attachment A" from the patent attorney of record including but not
limited to documents of preparation, prosecution, filing, and all
amendments and ail other necessary patent maintenance documents
whatsoever filed with the Patent office. Such copy file shall be
available to FOUNDATION in the ordinary course of business.
MEDISCIENCE shall supplement such file with necessary material as
requested.
ARTICLE 8
UNLICENSED ACTIVITY AND NFRINGEMENT
8.1 FOUNDATION and MEDISCIENCE shall promptly inform the other in
writing of any infringement of the patents/ patent application or
other proprietary technology by a third party and provide available
legal evidence of infringement
8.2 If within thirty (30) days after notification of alleged
infringement MEDISCIENCE has not been successful in persuading the
alleged infringer to desist and is not diligently prosecuting an
infringement action or if MEDISCIENCE notifies FOUNDATION of its
intent not to bring action against the alleged infringer. FOUNDATION
may, but is not obligated to, bring action at its own expense and
may us(C) the name of MEDISCIENCE as party plaintiff.
8.3 In any suit involving the enforcement or defense of the rights
relating to the technology or the patents, the other party hereto
agrees, at the request and expense of the party initiating such
suit, to cooperate in all respects and to have its employees and/or
its patent attorney with all necessary records, patent office
memorandum and law office work product testify when requested and to
make available relevant records, papers, information, samples,
specimens and the like,
8.4 No settlement or consent Judgment or other voluntary final
disposition of an enforcement and/or defense suit initiated by
either party to the Agreement-may be entered into without the
consent of the other, which consent WHS not be unreasonably
withheld.
8.5 In the event a declaratory judgment action alleging invalidity or
non-infringement of the technology or patents is brought against
MEDISCIENCE, MEDISCIENCE Shall have the right to defend itself with
counsel of its choosing, but FOUNDATION reserves the right to retain
its own counsel, at its own expense, to work with MEDISCIENCE and
FOUNDATION'S counsel in the joint defense of such action, and
MEDISCIENCE shall cooperate with FOUNDATION and FOUNDATION'S counsel
in such effort. FOUNDATION shall not be liable for any losses
incurred as the result of an xxxxxx alleging invalidity or
infringement brought against MEDISCIENCE as the result of any right
granted under this Agreement.
8.6 The cost of any infringement action commenced or defended solely by
FOUNDATION shall be borne by FOUNDATION. Recoveries or
reimbursements from such action shall first be applied to reimburse
FOUNDATION for its actual costs incurred in connection with such
action. Any remaining recoveries shall be allocated in accordance
with 4.1 (a) and (b) with the exception that punitive damage
recovery shall be allocated between MEDISCIENCE and FOUNDATION,
equally.
8.7 The cost of any infringement action commenced or defended by
MEDISCIENCE shall be borne by MEDISCIENCE. MEDISCIENCE, however, may
withhold royalties in any given calendar year and apply the same
towards reimbursement of its expenses and any recovery of damages by
MEDISCIENCE from any such suit shall be applied first in
satisfaction of any un-reimbursed expenses and legal fees of
MEDISCIENCE relating to the suit or settlement thereof, and the
balance of such recovery shall be allocated in accordance with 4.1
(a) and (b) with the exception that punitive damage recovery shall
be allocated between Foundation and MEDISCIENCE, equally.
ARTICLES
CONFIDENTIALITY
9.1 MEDISCIENCE hereby acknowledges and agrees that the Technology
"Attachment A" constitutes and contains valuable proprietary
information of FOUNDATION, embodying substantial creative efforts
and confidential information, ideas, and expressions. Accordingly,
MEDISCIENCE agrees to treat (and take precautions to ensure that its
employees treat) the Technology as confidential in the same manner
it protects the confidentiality of similar information and data of
its own (at all times exercising at least a reasonable degree of
care in the protection of confidential information),
FOUNDATION hereby acknowledges and agrees that the FOUNDATION
Technology (see 1.4 (G) and (H) above) constitutes and contains
valuable proprietary information of FOUNDATION embodying substantial
creative efforts and confidential information, ideas, grid
expressions. Accordingly, FOUNDATION agrees to treat (and take
precautions to ensure (hat its employees treat) the Technology as
confidential in the same manner it protects the confidentiality of
similar information and data of its own (at all times exercising at
least a reasonable degree of care in the protection Of confidential
information
9.2 FOUNDATION acknowledges that the unauthorized use, transfer or
disclosure of the technology or copies thereof will
(i) substantially diminish the value to MEDISCIENCE of the
proprietary interests that are the subject of this Agreement;
(ii) renders remedy at law for such unauthorized use, disclosure or
transfer inadequate; and
(iii) cause irreparable injury in a short period of time, if
MEDISCIENCE breaches any of its obligations with respect to
the use or confidentiality of the , _ Technology, MEDISCIENCE
shall be entitled to equitable relief to protect its interests
therein, including, but not limited to, preliminary and
permanent injunctive relief.
MEDlSCiENCE acknowledges that the un-authorized use, transfer or
disclosure of the FOUNDATION Technology or copies thereof (see 4.1
(G) and (H) above) will
(I) substantially diminish the value to FOUNDATION of
the proprietary interests that are the subject of
this Agreement;
(ii) render FOUNDATION'S remedy at law for such
unauthorized use, disclosure or transfer inadequate;
and
(iii) cause irreparable injury in a short period of time.
If FOUNDATION breaches any of its obligations with
respect to the use or confidentiality of the
Technology, FOUNDATION shall be entitled to
equitable relief to protect its interests therein,
including, but not limited to, preliminary and
permanent injunctive relief.
9.3 FOUNDATION'S and MEDISCIENCE's obligations under this Article 9 will
survive the termination of this Agreement or of any license granted
under this Agreement for whatever reason.
ARTICLE 10
GOVERNMENT RIGHTS
10.1 MEDISCIENCE understands that part, some or all the technology
reflected in "Attachment A" may have been developed under a funding
agreement with the Government of the United States of America and,
if so, that the Government may have certain rights relatives
thereto. This Agreement Is explicitly made subject to the
Government's rights under any such agreement and any applicable law
or regulation, if any. To the extent that there Is a conflict
between any such agreement, applicable law or regulation and this
Agreement, the terms of such Government agreement applicable law or
regulation shall prevail. Distribution of the Technology to any
government agency by MEDISCIENCE shall not be subject to the Royalty
set forth herein.
ARTICLE 11
NO LICENSOR WARRANTY; LIMITATION OF LIABILITY
11.1 IT IS SPECIFICALLY UNDERSTOOD AND AGREED THAT THE TOTAL TECHNOLOGY
IN Attachment A" IS FURNISHED BY FOUNDATION "AS IS" WITHOUT
REPRESENTATION OR WARRANTY AS TO ACCURACY, APPLICABILITY, FREEDOM
FROM INFRINGEMENT OF ANY PATENT RIGHTS, COPYRIGHT OR OTHER
PROPRIETARY RIGHTS, OR THE RIGHTS OF THIRD PARTIES OR ANY OTHER
WARRANTY OR REPRESENTATION. FOUNDATION HEREBY EXPRESSLY WAIVES ALL
WARRANTIES, EXPRESS, IMPLIED OR STATUTORY, INCLUDING, WITHOUT
LIMITATION, ANY IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS OR
FREEDOM FROM INFRINGEMENT WITH RESPECT TO THE TECHNOLOGY.
IN NO EVENT WHATSOEVER SHALL FOUNDATION BE LIABLE FOR ANY
CONSEQUENTIAL OR SPECIAL DAMAGES OR CLAIMS FOR LOST PROFITS.
ARTICLE 12
FOUNDATION WARRANTY AND INDEMNITY; INSURANCE
12.1 MEDISCIENCE shall be solely responsible for all warranties, express
or implied, with respect to the Licensed Products utilizing
"Attachment A" technology, and shall indemnify and hold harmless
FOUNDATION, Xxx Xxxx Xxxxxxxxxx xx Xxx Xxxx, Xxxx College, and each
of their trustees, directors, officers, agents and employees from
and against any dams, demands, or causes of action caused by, or
arising out of, or resulting from, the exercise or practice of the
license granted hereunder to MEDISCIENCE by FOUNDATION, MEDISCIENCE
's sub-licensees, if any, its subsidiaries or their officers,
employees, agents or representatives, including without limitation
any claims, demands, or causes of action arising on account of
MEDISCIENCE's modification or enhancement of the Technology, and
shall assurme and pay all damages, liabilities, or costs {including
reasonable attorneys' fees) resulting from, based upon or arising in
connection therewith, unless it can be shown that such claims
resulted fnorn the lack of full disclosure by, and/or negligence on
the part of the FOUNDATION, The City University of New York, its
officers, directors, agents or employees.
12.2 Without limitation on FOUNDATION'S obligations as aforesaid, prior
to the initiation of marketing activity by MEDISCIENCE MEDISCIENCE,
at its own cost and expense, shall maintain comprehensive products
liability insurance with an insurer of recognized responsibility
protecting FOUNDATION against any and all claims and liabilities for
injury or damage to persons or property or for loss of life or of
property caused by or resulting from the Licensed Products with a
policy limit of no less than one million dollars (U.S. $1,000,000)
per occurrence and shall provide FOUNDATION promptly with evidence
thereof prior to initiation of such activity. MEDISCIENCE shall have
FOUNDATION, The City University of New York, protected as additional
named insured under such policy and shall provide FOUNDATION with
copy of such policy.
ARTICLE 13
ASSIGNMENT
13.1 MEDISCIENCE may not assign or otherwise transfer this Agreement and
the rights granted herein relative to Foundation patents and patent
applications reflected in "Attachment A" without the prior written
consent of the FOUNDATION, such consent not to be un-reasonably
withheld
13.2 MEDISCIENCE may assign or otherwise transfer this Agreement and the
license granted hereby and the rights acquired by it hereunder per
"Attachment A* so long as such a sale or other transfer is
accompanied by
a. a sale or other transfer of MEDISClENCE's ENTIRE BUSINESS or
b. Sate or other transfer of that part of MEDISClENCE's business
to which the license of "Attachment A". patents and patent
applications granted hereby relates.
c. MEDISClENCE' may assign or otherwise transfer this Agreement
and the license granted hereby and the rights acquired by it
hereunder if such assignment or transfer is accompanied by the
transfer of the rights to manufacture, use, make, have made,
offer for sate, and/or market the "Attachment A" technology as
a LICENSED PRODUCT, and such assignee or transferee has agreed
in writing to be bound by the terms and provisions of this
Agreement, in which event, MEDISClENCE' shall be released of
liability hereunder..
d. MEDISCIENCE shall give FOUNDATION sixty (60) days prior
written notice of such proposed assignment and transfer. Upon
such assignment or transfer of Agreement by such assignee or
transferee, the term MEDISCIENCE as used herein shall include
such assignee or transferee.
ARTICLE 14
TERM AND TERMINATION
14.1 The term of this Agreement shall commence on the Effective Date and
continue until the expiration of the last to issue patent
"Attachment A" and any allowable extensions under the law, whichever
is longer, unless earlier terminated in accordance with paragraph
14.2 below.
14.2 Either party hereto shall have the right to terminate this
Agreement, immediately by written notice to the other party in any
of the following events:
(a) If the other party becomes insolvent, is adjudged a bankrupt
or becomes the subject of dissolution, liquidation or
bankruptcy proceedings, whether voluntarily or involuntarily.
or applies for judicial or extra-judicial settlement with
creditors, makes an assignment for the benefit of creditors,
or otherwise discontinues business; or
(b) If the other party is in breach of any of the terms,
conditions or representations of this Agreement and the
breaching party shall fall to remedy such breach to the
satisfaction of the breaching party within thirty (30) days
from the date of written notice by the party claiming the
breach.
14.3 Termination of this Agreement by either party shall be without
prejudice to any other rights or remedies that either party may have
by virtue of any breach of the terms of this Agreement In the event
of termination of this Agreement for any reason, MEDISCIENCE shall
promptly account for and pay Royalties accrued up to the date of
such termination, Within ten (10) days after termination of this
Agreement, MEDISCIENCE shall cease and desist all use of the
Foundation "Attachment A" Technology and shall either (a) return ail
Licensed Products in MEDISCIENCE 's possession or under its control
or (b) provide evidence of the disposal of si such products.
ARTICLE 15
USE OF NAME
15.1 MEDISCIENCE shall not use the name or any logo, seal. Trademark,
trade name or other proprietary xxxx of FOUNDATION, The City
University of New York, or City College, nor any adaptation thereof,
for advertising, promotion or sales, without prior written consent
obtained from FOUNDATION in each case, except that MEDISCIENCE may
state that it is licensed by FOUNDATION as is provided by this
Agreement MEDISCIENCE shall not Issue any press release with respect
to this Agreement without the prior approval of FOUNDATION, such
approval not to be unreasonably withheld the terms of Article 15
shall not apply to or in any way limit required XXX 0-X, 00-X and
related required disclosures of Material Event filings by
MEDISCIENCE-
15.2 Where FOUNDATION or CUNY issue press releases that refer to patent
material reflected in "Attachment A* MEDISCIENGE shall be
"identified appropriately.
ARTICLE 16
UNITED STATES GOVERNMENT EXPORT CONTROL REGULATIONS
16.1 FOUNDATION warrants and represents that it does not intend to, nor
will, directly or indirectly, export or transmit the Technology or
Licensed Products, in whole or in part, or any related technical
information or materials, to any country in which such export or
transmission is restricted by any applicable U.S. regulation or
statute, without prior written approval, if required, of the Bureau
of Export Administration of the U.S. Department of Commerce, or
other such governmental entity as may have jurisdiction over such
export or transmission.
ARTICLE 17
MISCELLANEOUS PROVISIONS
17.1 Governing Law. This Agreement shall be construed, governed,
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interpreted and applied in accordance with the laws of (fie State of
New York, except that questions affecting the construction and
effect of any patent shall be determined by the law of the country
in which the patent was granted,
17.2 Entire Agreement. This Agreement constitutes the entire agreement
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between tie parties and where conflicting, supercedes any and alt
prior agreements relative to the premises contained herein
concerning the subject matter hereof and cannot be changed or
terminated orally. No modification or waiver of any of the
provisions hereof shall be effective unless in writing and signed by
the parties hereto. There are no representations or warranties other
than as expressly stated herein.
17.3 No Waiver. The failure of either party hereto at any time to require
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performance by the other party of any provision of this Agreement
shall not affect the right of such party to require performance of
that provision. Any waiver by either party of any breach of any
provision of this Agreement shall not constitute a waiver of any
continuing or succeeding breach of such provision, a waiver of the
provision itself, or a waiver of any right under this Agreement
17.4 Arbitration. All disputes arising out of or related to this
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Agreement that cannot be settled amicably shall be settled by final
and binding arbitration under the Commercial Arbitration Rules (the
"Rules") of the American Arbitration Association by three (3}
qualified arbitrators one of which shall come from the investment
banking community, unless the parties otherwise agree to have a
single arbitrator, appointed in accordance with the Rules. The place
of such arbitration shall be New York, New York, and the arbitrators
shall apply Federal and the law of the State of New York. The
arbitration proceedings, results and any award shall be maintained
by the parties as confidential,
17.5 Severability. The provisions of this Agreement are severable, and in
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the event that any provisions of this Agreement are determined to be
Invalid or unenforceable under any controlling body of law, such
invalidity or unenforceability shall not in any way affect the
validity or enforcability of the remaining provisions hereof.
17.6 No Partnership. This Agreement 'does not constitute and shall not be
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construed as constituting a partnership or joint venture between
MSDISCIENCE and FOUNDATION, Neither party shall have any right to
obligate or bind the other party in any manner whatsoever.
17.7 Payment Notice. Any payment, notice or other communication pursuant
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to this license shall be sufficiently made or given on the date of
mailing if sent to such party by U.S. mail, postage prepaid,
Certified or registered, return receipt requested, or by overnight
courier, addressed to it at its address below or as it shall
designate by written notice given to the other party;
To FOUNDATION:
Xx. Xxxxxxxxx Xxxx
Director of Grants & Contracts
The Research Foundation of CUNY
000 Xxxx 00xx Xxxxxx
Xxx Xxxx, X,X. 10019
To MEDISCIENCE:
Xxxxx Xxxxxxxxx Esq.
Chairman
Mediscience Technology Corporation
0000 Xxxxxxxxx Xxx
Xxxxxx Xxxx, XX 00000
IN WITNESS WHEREOF, the parties hereto have hereunto set their hands and
seals and duly executed this Agreement the date first above written.
THE RESEARCH FOUNDATION OF THE CITY UNIVERSITY OF NEW YORK
BY: /s/ Xxxxxx Xxxx
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Xxxxxx Xxxx
TITLE: Chairman
MEDSCIENCE
BY:/s/ Xxxxx Xxxxxxxxx, June 10, 2002
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Xxxxx Xxxxxxxxx
ATTACHMENT A
Medical Diagnostic Optical technology
1. #5,042,494, August 27, 1991, Method and Apparatus for Detecting
Cancerous Tissue using Luminescence Excitation Spectra, X. X.
Xxxxxx.
2. #5,131,398, July 21, 1992, Method and Apparatus for Distinguishing
Cancerous Tissue from Benign Tumor Tissue, Benign Tissue or Normal
Tissue using Native Fluorescence, X. X. Xxxxxx, X. Xxx, X. Xxxx.
3. #5,261,410, November 16, 1993, Method for determining if a Tissue is
a Malignant Tumor Tissue, a Benign Tumor Tissue, or a Normal Benign
Tissue using Raman Spectroscopy, X. X. Xxxxxx, C.-X. Xxx, X. X.
Xxxxxxxx.
4. #5,293,872, Xxxxx 00, 0000, Xxxxxx for Distinguishing between
Calcified Atherosclerotic Tissue and Fibrous Atherosclerotic Tissue
or Normal Cardiovascular Tissue Using Raman Spectroscopy, X. X.
Xxxxxx, X. X. Xxx
5. #5,348,018, September 20, 1994, Method for determining if Tissue is
Malignant as opposed to Non-Malignant using Time-Resolved
Fluorescence Spectroscopy, X. X. Xxxxxx, X. Xxxxxxx, X. X. Xxxx, X.
Xxxx, X. Xxxxxxxx, X. X. Xxx.
6. #5,413,108, May 9, 1995, Method and Apparatus for Mapping a Tissue
Sample for and Distinguishing Different Regions thereof based on
Luminescence Measurements of Cancer-indicative Native Fluorophor, X.
X. Xxxxxx.
7. #5,467,767, November 21, 1995, Method for Determining if Tissue is
Malignant as opposed to Non-Malignant using Time-resolved
Fluorescence Spectroscopy, X. X. Xxxxxx, Xxxxx Xxxxxxx, X. X. Xxxx,
X. Xxxx, X. Xxxxxxxx, X. X. Xxx.
8. #5,635,402, June 3, 1997. Technique for Determining whether a Cell
is Malignant as opposed to Non-malignant using Extrinsic
Fluorescence Spectroscopy, X. X. Xxxxxx, Xxxxx X. Xxx, Xxx X. Sha,
Xxxx Xxxxxxxx.
9. #5,769,081, June 23, 1998, Method for Detecting Cancerous Tissue
using Optical Spectroscopy and Fourier Analysis, X. X. Xxxxxx, X.
Xxxx, X. Xxxx.
10. #5,849,595, December 15, 1998, Method for Monitoring the Effects of
Chemotherapeutic Agents on Neoplasmic Media, X. X. Xxxxxx, X. X.
Xxxx, X. X. Xxxxxxx.
11. #5,983,125, November 9, 1999, Method and apparatus for in vivo
examination of subcutaneous tissues inside an organ of a body using
optical spectroscopy, X. X. Xxxxxx, X. Xxxxxxxx.
12. #6,006,001, December 21, 1999, Fiber optic assembly useful in
optical spectroscopy, X. X. Xxxxxx, S. Demos, X. Xxxxx.
13. #6,080,584, June 27, 2000, Method and apparatus for detecting the
presence of cancerous and precancerous cells in a smear using native
fluorescence spectroscopy, Xxxxxx X. Xxxxxx, Xxxxxxxxxxx Xxxxxxx,
and Xxxx Xxxxxxxx.
14. #6,091,985, July 18, 2000, Detection of cancer and precancerous
conditions in tissues and/or cells using native fluorescence
excitation spectroscopy, Xxxxxx X. Xxxxxx, Xxxxxxxxxxx Xxxxxxx,
Xxxxx Xxxx, Yang Yuanlong.
Optical Imaging for Medical Purposes
1. #5,371,368, December 6, 1994, Ultrafast Optical Imaging of Objects
in a Scattering Medium, X. X. Xxxxxx, P. P. Ho, X. Xxxx.
2. #5,625,458, April 29, 1997, Method and System for Imaging Objects in
Turbid Media using Diffusive Fermat Photons, X. X. Xxxxxx, X. X.
Xxxxxxxxxx.
3. #5,644,429, July 1, 1997 (see #5,371,368), 2-Dimensional Imaging of
Translucent Objects in Turbid Media, X. X. Xxxxxx, P. P. Ho, X.
Xxxxx.
4. #5,710,429, January 20, 1998, Ultrafast Optical Imaging of objects
in or Behind Scattering Media, X. X. Xxxxxx, Xxxx Xxx, Q. Z. Wang X.
Xx, X. X. Xxxx, X. Xxxxx.
5. #5,719,399, February 17, 1998, Imaging and Characterization of
Tissue based upon the Preservation of Polarized Light transmitted
therethrough, X. X. Xxxxxx, S. G. Demos.
6. #5,799,656, September 1, 1998, Optical Imaging of Breast Tissues to
enable the Detection therein of Calcification Regions Suggestive of
Cancer, X. X. Xxxxxx, P. P. Ho, X. Xxxx, X. Xxxxx, X. Xxxxxxx.
7. #5,813,988, September 29, 1998, Time Resolved Diffusion Tomographic
Imaging in Highly Scattering Turbid Media, X. X. Xxxxxx, X. Xxx, X.
Xxx, X. Xxx, Xxxxxx X. Xxx.
8. #5,847,394, December 8, 1998, Imaging of Objects Based upon the
Polarization or Depolarization of Light, X. X. Xxxxxx, S. G. Demos.
9. #5,931,789, August 3, 1999, Time-resolved diffusion tomographic 2D
and 3D imaging in highly scattering turbid media, Xxxxxx X. Xxxxxx,
Xxx Xxx, Xxxx Xxx, Xxxxxx Xxx.
10. # 6,208,886 X0, Xxxxx 00, 0000, Xxx-xxxxxx optical tomography of
turbid media, Xxxxxx X. Xxxxxx, Yici Guo, Xxxx Xxx, Ping Xxx Xx.
11. # 6,215,587, April 10, 2001, Microscope imaging inside highly
scattering media, Xxxxxx X. Xxxxxx, Xxxxxx Xxxxxxxx, Xxxx Xxx.
