Patent Assignment Agreement
Exhibit 10.16
This Patent Assignment Agreement is entered into as of November 1, 2007 (the
“Effective Date”), by and among Endocyte Inc., an Indiana corporation located at 0000 Xxxx
Xxxxxx, Xxxx Xxxxxxxxx, XX 00000 (“Endocyte”); Optical Therapeutic Technologies Inc., an
Indiana corporation located at 0000 Xxxx Xxxxxx, Xxxx Xxxxxxxxx, XX 00000 (“XXX”); and Xxxxx X.
Xxxxxx, Xxxxxxx X. Xxxxxxx, Xxxxxx X. Low, and Dor Xxx-Xxxxx, individuals residing at the addresses
in the signature block (collectively, “Inventors”).
Recitals
WHEREAS, the Inventors have invented certain methods, devices and compositions relating to
certain conjugates used in the imaging of tissues that are the subject of U.S. Patent Application
Nos. 10/360001 and 10/742291 (the “Patent Applications”), and such methods, devices and
compositions as disclosed in the Patent Applications are hereinafter referred to as the
“Technology”;
WHEREAS, each of the Inventors desires to assign all of his rights in the Patent Applications
and the Technology to Endocyte;
WHEREAS, the Inventors have formed XXX but have not assigned any rights in the Patent
Applications or the Technology to XXX, and XXX desires to confirm to Endocyte that it releases any
claims it may have to such rights;
Now, Therefore, for good and valuable consideration, the receipt and sufficiency of
which is hereby acknowledged, the parties agree as follows:
Agreement
Article 1. Assignment
Section 1.1. Assignment of Rights. Each of the Inventors hereby assigns to Endocyte all of the
Inventor’s right, title and interest in and to the Patent Applications and any inventions,
discoveries, concepts, and ideas, whether patentable or not, that relate to the Technology,
including the right to claim priority to any or each of said Patent Applications in any later filed
related counterpart patent applications in the United States or around the world (such Patent
Applications and any subsequent patent claiming priority to a Patent Application are referred to as
the “Conjugate Patents”). Recordable forms of this assignment are attached as Exhibit A and shall
be executed by each of the Inventors.
Section 1.2. Patent Prosecution and Maintenance. As of the Effective Date, Endocyte will be
responsible, at its sole expense, for prosecuting the Patent Applications and for filing any
further applications for the Conjugate Patents. Endocyte will reimburse the Inventors for their
reasonable attorneys fees and filing fees to date for the Patent Applications. Upon Endocyte’s
request, each of Inventors will cooperate with and assist Endocyte or its nominees in obtaining the
Conjugate Patents.
Section 1.3. Release by XXX. XXX acknowledges that it is not an assignee of any of the rights
to Conjugate Patents or the Technology. For avoidance of doubt, XXX hereby assigns to
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Endocyte any rights, or any claim it may have to such rights, in the Conjugate Patents or the
Technology.
Article 2. Payment
Section 2.1. Payment. As full consideration for the assignments hereunder, Endocyte will pay
the following amounts in U.S. Dollars to each of the Inventors within 30 days after the occurrence
of each of the following events:
2.1.1 $6,250 to each Inventor after the execution of this Agreement by all Inventors.
2.1.2 $12,500 to each Inventor upon the issuance of the first Conjugate Patent by the
U.S. Patent Office.
2.1.3 $37,500 to each Inventor upon the FDA’s approval of the first product comprising
or containing any conjugate covered by a valid claim of a Conjugate Patent.
Section 2.2. No Other Compensation. The payments referenced in this Article 2 shall be the
entire compensation from Endocyte to the Inventors under this Agreement. For avoidance of doubt,
each payment referenced in this Article 2 is payable one time only with respect to each Inventor,
regardless of the number of Conjugate Patents that issue or the number of products that are
developed or approved.
Article 3. Representations
Section 3.1. Inventors’ Representations. Each of the Inventors hereby represents and warrants
that the Inventor is the owner of the rights being transferred hereunder and has the full power,
right and authority to grant such rights to Endocyte.
Section 3.2. Endocyte Representations. Endocyte represents that it has the full power, right
and authority to enter into this Agreement.
Article 4. Miscellaneous
Section 4.1. No Partnership. Nothing in this Agreement shall be deemed to create a
partnership, joint venture or agency relationship between the parties.
Section 4.2. Governing Law. Any dispute between any of the parties concerning or arising out
of this Agreement shall be governed by the applicable laws of Indiana without regard to conflict of
laws principles and shall be resolved in the courts of Indiana. Each Inventor waives any objection
to jurisdiction or venue laid therein.
Section 4.3. Severability. If any provision in the Agreement shall be held to be in
contravention of applicable law, the Agreement shall be construed as if that provision were not a
part thereof and in all other respects the terms of the Agreement shall remain in full force and
effect.
Section 4.4. No Waiver. No waiver of any covenant or condition or the breach of any covenant
or condition of the Agreement shall be deemed to constitute a waiver of any subsequent
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breach of the covenant or condition nor justify or authorize a non-observance upon any
occasion of that covenant or condition or any other covenant or condition of the Agreement.
Section 4.5. Additional Documents. The parties shall cooperate fully in the execution of all
documents and take such other steps as may be necessary to fully carry out and accomplish the
intents and purposes of the Agreement.
Section 4.6. Entire Agreement. The Agreement constitutes the entire agreement between the
parties.
In Witness Whereof the parties have executed this Intellectual Property Agreement as
of the date set forth above.
| Endocyte, Inc. | Optical Therapeutic Technologies, Inc. | |||||||||
| (Endocyte) | (XXX) | |||||||||
By
|
/s/ P. Xxx Xxxxx | By | ||||||||
| P. Xxx Mils | ||||||||||
Its:
|
CEO/President | Its: | ||||||||
| Xxxxx X. Xxxxxx | Xxxxxxx X. Xxxxxxx | |||||||||
| (Inventor) | (Inventor) | |||||||||
By
|
/s/ Xxxxx Xxxxxx | By | ||||||||
Address:
|
00000-000 Xxxxx Xxxx | Address: | ||||||||
| Xxxxxxxx Xxxx, XX 00000 | ||||||||||
| Xxxxxx X. Low | Dor Xxx-Xxxxx | |||||||||
| (Inventor) | (Inventor) | |||||||||
BY
|
By | |||||||||
Address:
|
Address: | |||||||||
Attachment: Exhibit A
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| 925347 |
ASSIGNMENT
Pursuant to the Patent AssignMeat Agreement, dated Nov. 01, 2007, Xxxxx X. Xxxxxx
(“Inventor”), for good and valuable consideration, hereby assigns effective as of Nov. 05, 2007, to
Endocyte, Inc. (“Assignee”), all right, title and interest in and to U.S. Patent Application Nos.
10/360091 and 10/742291, titled “Folate targeted enhanced tumor and folate receptor positive tissue
optical imaging technology” (“the Patent Properties”) and in and to the inventions set forth and
claimed therein and the right to claim priority to any or each of said Patent Properties in any
later filed related counterpart patent applications, and Inventor agrees to do all acts and to
sign, or have signed, all documents reasonably necessary to vest all right, title and interest in
and to the Patent Properties in Assignee.
EXECUTED and EFFECTIVE on the date entered above.
| Xxxxx X. Xxxxxx |
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| By: | /s/ Xxxxx Xxxxxx | |||
STATE OF |
Kuwait | ) | ||||||
| City of Kuwait | ||||||||
| Embassy of the United States | ) SS | |||||||
| of America | ||||||||
COUNTY of _______________ |
) | |||||||
Before me, a Notary Public in and for said County and State, personally appeared Xxxxx X.
Xxxxxx, who having been duly sworn upon his oath, executed the foregoing Assignment.
Witness my hand and Notarial Seal this 5th day of November, 2007
| /s/ Xxxxx Xxxxxxx | ||||
|
, Notary Public Residing in _______________ County, |
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My commission Expires: [seal]
| XXXXX XXXXXXX Vice Consul of The United States of America |
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breach of the covenant or condition nor justify or authorize a non-observance upon any occasion of
that covenant or condition or any other covenant or condition of the Agreement.
Section 4.5. Additional Documents. The parties shall cooperate fully in the execution of all
documents and take such other steps as may be necessary to fully carry out and accomplish the
intents and purposes of the Agreement.
Section 4.6. Entire Agreement. The Agreement constitutes the entire agreement between the
parties.
IN WITNESS WHEREOF the parties have executed this Intellectual Property Agreement as of the
date set forth above.
| Endocyte, Inc. | Optical Therapeutic Technologies, Inc. | |||||||||
| (Endocyte) | (XXX) | |||||||||
By
|
By | |||||||||
| P. Xxx Mils | ||||||||||
Its:
|
CEO/President | Its: | ||||||||
| Xxxxx X. Xxxxxx | Xxxxxxx X. Xxxxxxx | |||||||||
| (Inventor) | (Inventor) | |||||||||
By
|
By | |||||||||
Address:
|
Address: | |||||||||
| Xxxxxx X. Low | Dor Xxx-Xxxxx | |||||||||
| (Inventor) | (Inventor) | |||||||||
BY
|
/s/ Xxxxxx X. Low | By | ||||||||
Address:
|
0000 Xxxx Xxxxx Xx. Xxxx Xxxxxxxxx, XX 00000 |
Address: | ||||||||
Attachment: Exhibit A
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| 925347 |
ASSIGNMENT
Pursuant to the Patent Assignment Agreement, dated November 1, 2007, Xxxxxx X. Low
(“Inventor”), for good and valuable consideration, hereby assigns effective as of 11-5-07, to
Endocyte, Inc. (“Assignee”), all right, title and interest in and to U.S. Patent Application Nos.
10/360001 and 10/742291, titled “Folate targeted enhanced tumor and folate receptor positive tissue
optical imaging technology” (“the Patent Properties”) and in and to the inventions set forth and
claimed therein and the right to claim priority to any or each of said Properties in any later
filed related counterpart patent applications, and Inventor agrees to do all acts and to sign, or
have signed, all documents reasonably necessary to vest all right, title and interest in and to the
Properties in Assignee.
EXECUTED and EFFECTIVE on the date entered above.
| Xxxxxx X. Low |
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| By: | /s/ Xxxxxx X. Low | |||
STATE OF INDIANA
|
) | |||
| ) SS: | ||||
COUNTY OF Tippecanoe
|
) |
Before me, a Notary Public in and for said County and State, personally appeared Xxxxxx X.
Low, who having been duly sworn upon his oath, executed the foregoing Assignment.
Witness my hand and Notarial Seal this 5th day of November, 2007.
| /s/ Xxxxx X. Xxxxxxxxx | ||||
| , Notary Public | ||||
| residing in Xxxxxx County, Indiana | ||||
My Commission Expires: 2/25/2015
| XXXXX X. XXXXXXXXX NOTARY PUBLIC, STATE OF INDIANA MY COMMISSION EXPIRES FEBRUARY 25, 2015 |
||||
breach of the covenant or condition nor justify or authorize a non-observance upon any
occasion of that covenant or condition or any other covenant or condition of the Agreement.
Section 4.5. Additional Documents. The parties shall cooperate fully in the execution of all
documents and take such other steps as may be necessary to fully carry out and accomplish the
intents and purposes of the Agreement.
Section 4.6. Entire Agreement. The Agreement constitutes the entire agreement between the
parties.
IN WITNESS WHEREOF the parties have executed this Intellectual Property Agreement as of the
date set forth above.
| Endocyte, Inc. | Optical Therapeutic Technologies, Inc. | |||||||||
| (Endocyte) | (XXX) | |||||||||
By
|
By | /s/ Xxxx Xxxxxxx | ||||||||
| P. Xxx Mils | ||||||||||
Its:
|
CEO/President | Its: | ||||||||
| Xxxxx X. Xxxxxx | Xxxxxxx X. Xxxxxxx | |||||||||
| (Inventor) | (Inventor) | |||||||||
By
|
By | /s/ Xxxxxxx X. Xxxxxxx | ||||||||
Address:
|
Address: | X.X. Xxx 0000 | ||||||||
| Xxxx Xxxxxxxxx, XX 00000 | ||||||||||
| Xxxxxx X. Low | Dor Xxx-Xxxxx | |||||||||
| (Inventor) | (Inventor) | |||||||||
BY
|
By | |||||||||
Address:
|
Address: | |||||||||
Attachment: Exhibit A
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| 925347 |
ASSIGNMENT
Pursuant to the Patent Assignment Agreement, dated 2/6/2008, Xxxxxxx X. Xxxxxxx (“Inventor”),
for good and valuable consideration, hereby assigns effective as of 2-6-08, to Endocyte, Inc.
(“Assignee”), all right, title and interest in and to U.S. Patent Application Nos. 10/360001 and
10/742291, titled “Folate targeted enhanced tumor and folate receptor positive tissue optical
imaging technology” (“the Patent Properties”) and in and to the inventions set forth and claimed
therein and the right to claim priority to any or each of said Properties in any later filed
related counterpart patent applications, and Inventor agrees to do all acts and to sign, or have
signed, all documents reasonably necessary to vest all right, title and interest in and to the
Properties in Assignee.
EXECUTED and EFFECTIVE on the date entered above.
| Xxxxxxx X. Xxxxxxx |
||||
| By: | /s/ Xxxxxxx Xxxxxxx | |||
STATE OF Indiana |
) | |||
| ) SS: | ||||
COUNTY OF Tippecanoe |
) |
Before me, a Notary Public in and for said County and State, personally appeared Xxxxxxx X.
Xxxxxxx, who having been duly sworn upon his oath, executed the foregoing Assignment.
Witness my hand and Notarial Seal this 6 day of February, 2008
| /s/ | ||||
| , Notary Public | ||||
| Residing in Tippecanoe County, Indiana | ||||
My Commission Expires July 12, 2008
breach of the covenant or condition nor justify or authorize a non-observance upon any occasion of
that covenant or condition or any other covenant or condition of the Agreement.
Section 4.5. Additional Documents. The parties shall cooperate fully in the execution of all
documents and take such other steps as may be necessary to fully carry out and accomplish the
intents and purposes of the Agreement.
Section 4.6. Entire Agreement. The Agreement constitutes the entire agreement between the
parties.
IN WITNESS WHEREOF the parties have executed this Intellectual Property Agreement as of the
date set forth above.
| Endocyte, Inc. | Optical Therapeutic Technologies, Inc. | |||||||||
| (Endocyte) | (XXX) | |||||||||
By
|
By | |||||||||
| P. Xxx Mils | ||||||||||
Its:
|
CEO/President | Its: | ||||||||
| Xxxxx X. Xxxxxx | Xxxxxxx X. Xxxxxxx | |||||||||
| (Inventor) | (Inventor) | |||||||||
By
|
By | |||||||||
Address:
|
Address: | |||||||||
| Xxxxxx X. Low | Dor Xxx-Xxxxx | |||||||||
| (Inventor) | (Inventor) | |||||||||
BY
|
By | /s/ Dor Xxx-Xxxxx | ||||||||
Address:
|
Address: | |||||||||
Attachment: Exhibit A
| Patent Assignment Agreement | Page 3 of 3 | |
| 925347 |
ASSIGNMENT
Pursuant to the Patent Assignment Agreement, dated November 1, 2007, Dor Xxx-Xxxxx
(“Inventor”) for good and valuable consideration, hereby assigns effective as of 11-8-07 to
Endocyte, Inc. (“Assignee”), all right, title and interest in and to U.S. Patent Application Nos.
10/360001 and 10/742291, titled “Folate targeted enhanced tumor and folate receptor positive tissue
optical imaging technology” (“the Patent Properties”) and in and to the inventions set forth and
claimed therein and the right to claim priority to any or each of said Patent Properties in any
later filed related counterpart patent applications, and. Inventor agrees to do all acts and to
sign, or have signed, all documents reasonably necessary to vest all right, title and interest in
and to the Patent Properties in Assignee.
EXECUTED and EFFECTIVE on the date entered above.
| Dor Xxx-Xxxxx |
||||
| By: | /s/ Dor Xxx-Xxxxx | |||
STATE OF INDIANA
|
) | |||
| ) SS: | ||||
COUNTY OF Tippecanoe
|
) |
Before me, a Notary Public in and for said County and State, personally appeared Dor
Xxx-Xxxxx, who having been duly sworn upon his oath, executed the foregoing Assignment.
Witness my hand and Notarial Seal this 8th day of November, 2007.
| /s/ Xxxxx X. Xxxxxxxxx | ||||
| , Notary Public | ||||
| residing in Xxxxxx County, Indiana | ||||
My Commission Expires: 2/25/2015
| XXXXX X. XXXXXXXXX NOTARY PUBLIC, STATE OF INDIANA MY COMMISSION EXPIRES FEBRUARY 25, 2015 |
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