PATENT ASSIGNMENT AGREEMENT
Execution
Copy
This
Patent Assignment Agreement (this "Assignment")
is
made as of October 12, 2005, by Access Pharmaceuticals, Inc., a Delaware
corporation ("Access").
BACKGROUND
A.
|
Access
and ULURU, Inc., a Delaware corporation ("ULURU"),
have entered into an Asset Sale Agreement, dated as of the date hereof
(the "Asset
Sale Agreement"),
pursuant to which Access, inter alia,
has agreed to sell, transfer, convey, assign and deliver to ULURU
the Purchased Assets.
|
B.
|
The
execution and delivery of this Assignment by Access is a closing
obligation of Access under the transactions contemplated by the Asset
Sale
Agreement.
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C.
|
All
capitalized words and terms used in this Assignment and not defined
herein
shall have the same meanings ascribed to them in the Asset Sale
Agreement.
|
NOW,
THEREFORE, for good and valuable consideration, the receipt and sufficiency
of
which is hereby acknowledged, and pursuant to the Asset Sale Agreement, Access
intending to be legally bound, hereby agrees as follows:
1. |
Access
represents and warrants that, as of the date hereof, it is the record
owner of the Product Patents and patent applications set forth on
Schedule
A
attached hereto.
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2. |
Access
represents and warrants that, as of the date hereof, except as set
forth
in the Asset Sale Agreement, no security interest is outstanding
in favor
of any third party with respect to any of its rights in the Product
Patents.
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3. |
Access
agrees to cooperate with ULURU in providing any documentation or
assistance that ULURU may reasonably request in securing and perfecting
the rights transferred pursuant to this
Assignment.
|
4. |
Access
does hereby assign and transfer to ULURU, its successors and assigns,
and
confirms ULURU's record ownership of, as of the date hereof, all
of the
right, title and interest held by Access in and to the Product Patents
(including but not limited to any common law rights possessed in
the
Product Patents), including the goodwill associated with the Product
Patents.
|
5. |
Access
further assigns and transfers to ULURU and confirms ULURU's ownership
of,
as of the date hereof, all rights of Access to damages or profits,
due or
accrued, arising out of past infringement of the Product Patents
or damage
or injury to the Product Patents or the goodwill associated
therewith.
|
6. |
This
Assignment is binding upon Access, as well as its successors, assigns,
affiliates, officers and owners and all those acting in concert or
in
privity with Access.
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[the
remainder of this page is left blank intentionally]
BUSDOCS/1501886.4
IN
WITNESS WHEREOF, this Assignment has been executed by Access, effective as
of
the date first above written.
ACCESS
PHARMACEUTICALS, INC.
By:
/s/Xxxxxxxx Mazanet_______________________
Name:
Xxxxxxxx Xxxxxxx
Title:
Acting President
BUSDOCS/1501886.4
Schedule
A
Product
Patents
Country
|
Serial
No.
|
Application
Date
|
Patent
No.
|
Issued
|
USA
|
07/006,670
|
Jan.
19, 1993
|
5,362,737
|
Nov.
8, 0000
|
Xxxxxx
|
2,065,496
|
Apr.
9, 1992
|
2,065,496
|
Mar
25, 2003
|
EP
|
97202524
|
Apr.
9, 1992
|
0836852
|
Apr
22, 0000
|
Xxxxxxx
|
97202524
|
Apr.
9, 1992
|
0836852
|
Apr
22, 0000
|
Xxxxxxx
|
97202524
|
Apr.
9, 1992
|
0836852
|
Apr
22, 0000
|
Xxxxxxxxxxx
|
97202524
|
Apr.
9, 1992
|
0836852
|
Apr
22, 1998
|
Germany
|
97202524
|
Apr.
9, 1992
|
0836852
|
Apr
22, 0000
|
Xxxxxxx
|
97202524
|
Apr.
9, 1992
|
0836852
|
Apr
22, 0000
|
Xxxxx
|
97202524
|
Apr.
9, 1992
|
0836852
|
Apr
22, 1998
|
France
|
97202524
|
Apr.
9, 1992
|
0836852
|
Apr
22, 1998
|
Great
Britain
|
97202524
|
Apr.
9, 1992
|
0836852
|
Apr
22, 0000
|
Xxxxxx
|
97202524
|
Apr.
9, 1992
|
0836852
|
Apr
22, 0000
|
Xxxxx
|
97202524
|
Apr.
9, 1992
|
0836852
|
Apr
22, 1998
|
Luxembourg
|
97202524
|
Apr.
9, 1992
|
0836852
|
Apr
22, 1998
|
Monaco
|
97202524
|
Apr.
9, 1992
|
0836852
|
Apr
22, 0000
|
Xxxxxxxxxxx
|
97202524
|
Apr.
9, 1992
|
0836852
|
Apr
22, 1998
|
Portugal
|
97202524
|
Apr.
9, 1992
|
0836852
|
Apr
22, 0000
|
Xxxxxx
|
97202524
|
Apr.
9, 1992
|
0836852
|
Apr
22, 1998
|
USA
|
09/931,319
|
Aug
16, 2001
|
6,585,997
|
Jul
1, 0000
|
Xxxxxx
|
2,459,692
|
Aug
16, 0000
|
Xxxxxxx
|
|
XXX
|
XXX/XX00/00000
|
Aug
16, 2002
|
National
Phase
|
|
EP
|
02761390.0
|
Aug
16, 2002
|
Pending
|
|
Australia
|
2002/326664
|
Aug
16, 2002
|
Pending
|
|
China
|
02818327.4
|
Aug
16, 2002
|
Pending
|
|
Hungary
|
P0401281
|
Aug
16, 2002
|
Pending
|
|
Israel
|
160419
|
Aug
16, 2002
|
Pending
|
|
Iceland
|
7155
|
Aug
16, 2002
|
Pending
|
|
Japan
|
2003-520708
|
Aug
16, 2002
|
Pending
|
|
Korea
|
2004-7002303
|
Aug
16, 2002
|
Pending
|
|
Mexico
|
PA/a/2004/001491
|
Aug
16, 2002
|
Pending
|
|
New
Zealand
|
531766
|
Aug
16, 0000
|
Xxxxxxx
|
|
Xxxxxx
|
X-000000
|
Aug
16, 2002
|
Pending
|
|
Romania
|
2004-107575
|
Aug
16, 0000
|
Xxxxxxx
|
|
Xxxxx
Xxxxxx
|
2004/2067
|
Aug
16, 2002
|
Pending
|
|
USA
|
10/444,512
|
May
23, 2003
|
Pending
|
|
USA
|
11/192,524
|
July
29, 2005
|
Pending
|
|
BUSDOCS/1501886.4
Country
|
Serial
No.
|
Application
Date
|
Patent
No.
|
Issued
|
USA
|
06/730,682
|
May
3, 1985
|
4,895,727
|
Jan.
23, 1990
|
EP
|
86903757.2
|
May
2, 1986
|
0221176
|
Sep
14, 1994
|
WO
|
XXX/XX00/00000
|
Xxx
0, 0000
|
Xxxxxxxx
Xxxxx
|
|
Xxxxxxx
|
86903757.2
|
May
2, 1986
|
111355
|
Sept
15, 0000
|
Xxxxxxxxx
|
869066
|
May
2, 1986
|
8659066
|
Xxx
0, 0000
|
Xxxxxxx
|
86903757.2
|
May
2, 1986
|
3650068
|
Oct
20, 0000
|
Xxxxxxx
|
866349
|
Dec
30, 1986
|
8606349
|
Feb
2, 0000
|
Xxxxxxx
|
8713
|
Jan.
2, 1987
|
8700013
|
Feb
1, 0000
|
Xxxxx
|
00000000
|
May
2, 1986
|
63500171
|
Jan
21, 0000
|
Xxxxxx
|
NO
871
|
Jan
2, 1987
|
8700001
|
Mar
2, 1987
|
EP
(div 1)
|
92201393
|
May
2, 1986
|
||
EP
(div 2)
|
98105208
|
May
2, 1986
|
Pending
|
|
GB
|
200029018
|
Nov
28, 2000
|
Pending
|
|
WO
|
PCT/GB01/05257
|
Nov
28, 2001
|
National
Phase
|
|
Australia
|
200223091
|
Nov
28, 2001
|
Pending
|
|
EP
|
01998353
|
Nov
28, 2001
|
Pending
|
|
Brazil
|
200115727
|
Nov
28, 0000
|
Xxxxxxx
|
|
Xxxxxx
|
2429205
|
Nov
28, 2001
|
Pending
|
|
Czech
Rep.
|
2003001491
|
Nov
28, 2001
|
Pending
|
|
Croatia
|
200300433
|
May
28, 2003
|
Pending
|
|
Hungary
|
2004520
|
Nov
28, 2001
|
Pending
|
|
Israel
|
152720
|
Nov
28, 2001
|
Pending
|
|
Japan
|
2002545709
|
Nov
28, 2001
|
Pending
|
|
Poland
|
362279
|
Nov
28, 2001
|
Pending
|
|
Slovakia
|
2003632
|
Nov
28, 2001
|
Pending
|
|
USA
|
10/432,848
|
Jan.
28, 0000
|
Xxxxxxx
|
|
Xxxxx
Xxxxxx
|
200305012
|
Nov
28, 2001
|
Pending
|
|
USA
|
07/713,558
|
June
10, 1991
|
5,166,149
|
Nov.
24, 1992
|
USA
|
07/916,432
|
July
21, 1992
|
5,292,731
|
Mar.
8, 1994
|
WO
|
PCT/US87/01027
|
Oct.
27, 1987
|
National
Phase
|
|
Austria
|
87907401
|
Oct
27, 1987
|
70449
|
Xxx
00, 0000
|
Xxxxxxxxx
|
8781724
|
Oct
27, 1987
|
616641
|
Nov.
7, 1991
|
Germany
|
87907401
|
Oct
27, 1987
|
3775387
|
Jan
30, 0000
|
Xxxxx
|
00000000
|
Oct.
27, 1987
|
1501794
|
June
22, 1989
|
EP
|
87907401
|
Oct.
27, 1987
|
288,534
|
Dec.
18, 1997
|