EXHIBIT 10.18
INTELLECTUAL PROPERTY
ASSIGNMENT AND ASSUMPTION AGREEMENT
This Agreement, dated as of 1 August, 2002, is made and entered into by
and between Xx. Xxxx Xxxxxxx ("Xx. Xxxxxxx") and Nutraceutix, Inc.
("Nutraceutix").
RECITALS
A. Xx. Xxxxxxx owns all right, title and interest in and to the
technology known as "multiple compressed asymmetric composite delivery system
for release-rate modulation of bioactives," as further described on the attached
Exhibit A (the "Intellectual Property").
B. The parties have reached an agreement pursuant to which Nutraceutix
will purchase all of Xx. Xxxxxxx'x interest in the Intellectual Property, and
wish to memorialize the same herein.
AGREEMENT
Xx. Xxxxxxx and Nutraceutix therefore agree as follows:
1. Assignment and Assumption. Xx. Xxxxxxx hereby sells, transfers,
assigns and delivers to Nutraceutix, and Nutraceutix hereby assumes, all of Xx.
Xxxxxxx'x right, title and interest in and to the Intellectual Property,
effective as of the date Nutraceutix pays Xx. Xxxxxxx the assignment fee
described in paragraph 4.1 below (the "Effective Date").
2. Patent Prosecution. Nutraceutix shall prepare, submit and prosecute
a United States patent application for the Intellectual Property in
Nutraceutix's name (the "Patent Application"). Nutraceutix shall pay all costs
associated with prosecuting the Patent Application, and any foreign counterpart
thereof which Nutraceutix wishes to pursue, and any continuations,
continuations-in-part, divisions, re-issues, additions, renewals or extensions
thereof, and shall own all right, title and interest in and to any and all
patents issuing therefrom.
3. Representations and Warranties. Xx. Xxxxxxx represents and warrants
that, as of the Effective Date, (i) he owns all right, title and interest in and
to the Intellectual Property, free and clear of any right, interest or
encumbrance of or obligation to any other person or entity, including but not
limited to Xx. Xxxxxx Xxxxxx or Temple University of the Commonwealth System of
Higher Education, and (ii) he has the right to grant the assignment set forth in
paragraph 1 above. Xx. Xxxxxxx shall defend, indemnify and hold harmless
Nutraceutix from and against any and all claims, losses, costs, harm,
liabilities, damages and expenses (including, but not limited to attorneys'
fees), arising out of any breach of the foregoing representations and
warranties.
4. Compensation.
4.1 Assignment Fee. As full compensation for the assignment
and assumption described in paragraph 1 above and fulfillment of all of Xx.
Xxxxxxx'x obligations under this
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Agreement, Nutraceutix shall pay Xx. Xxxxxxx [*] promptly upon execution of this
Agreement. The parties hereby represent, warrant and agree that such payment
constitutes full compensation for the assignment and assumption described in
paragraph 1 above and waive any and all claims that additional or different
compensation is due for any reason.
4.2 Patent Fee. In the event a United States patent is issued
pursuant to the Patent Application, Nutraceutix shall pay Xx. Xxxxxxx [*]
promptly upon issuance of the first such patent.
5. Indemnification. Nutraceutix releases and shall defend, indemnify
and hold harmless Xx. Xxxxxxx from and against any and all claims, losses, harm,
costs, liabilities, damages and expenses (including, but not limited to
attorneys' fees) arising, whether before or after the Effective Date, out of or
in connection with the Patent Application, the Intellectual Property and any
product incorporating the same.
6. Implementation. Each party shall take such action (including, but
not limited to, the execution, acknowledgment and delivery of documents) as may
reasonably be requested by the other party for the implementation or continuing
performance of this Agreement. Without limiting the foregoing, Xx. Xxxxxxx shall
execute and deliver any and all documents as are necessary or appropriate to
evidence and perfect title and ownership of the Intellectual Property in
Nutraceutix or its assignee and/or to assist Nutraceutix in prosecuting the
Patent Application.
7. Support. Xx. Xxxxxxx shall furnish Nutraceutix such technical
assistance and support as is necessary to prosecute the Patent Application and,
if a patent is issued pursuant thereto, to develop commercially viable products
from such patent. The rights and obligations of the parties with respect to such
support are set forth in the Consulting Agreement between Xx. Xxxxxxx and
Nutraceutix dated December 22, 2000 and an Additional Services Agreement
amending said agreement and covering the Intellectual Property.
8. Successors and Assigns. This Agreement shall be fully binding on,
inure to the benefit of and be enforceable by the successors, assigns and legal
representatives of the respective parties hereto.
9. Nonwaiver. The failure of either party to insist upon or enforce
strict performance by the other party of any provision of this Agreement or to
exercise any right under this Agreement shall not be construed as a waiver or
relinquishment to any extent of such party's right to assert or rely upon any
such provision or right in that or any other instance; rather, the same shall be
and remain in full force and effect.
10. Savings Clause. The invalidity or unenforceability of any provision
of this Agreement shall not affect the other provisions hereof, and this
Agreement shall be construed in all respects as is such invalid or unenforceable
provision were replaced by a valid or enforceable provision as similar as
possible to the one replaced.
*Certain information on this page has been omitted and filed separately with the
Commission. Confidential treatment has been requested with respect to the
omitted portions.
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11. Entire Agreement. This Agreement sets forth the entire agreement of
the parties with respect to assignment and assumption of the Intellectual
Property. No amendment to or modification of this Agreement shall be valid
unless set forth in a written instrument signed by the party to be bound
thereby.
12. Attorneys' Fees. In the event of any litigation or proceeding to
interpret or enforce this Agreement, the substantially prevailing party
following final judgment from which there is no appeal shall be entitled to
collect from the loosing party its reasonable attorneys' fees and expenses
incurred in connection with such litigation or proceeding (including any
appeal).
13. Controlling Law. This Agreement is made under and shall be
interpreted, construed and enforced in all respects in accordance with the laws
of the State of Washington.
14. Counterparts. This Agreement may be executed in two or more
counterparts, all of which shall constitute one and the same Agreement.
Xx. Xxxxxxx: Nutraceutix:
Nutraceutix, Inc.
/s/ By : /s/
_______________________________ _________________________________
Xxxx Xxxxxxx, Ph.D. Xxxxx X. Xxxxxx, President
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EXHIBIT A
A multiple compressed asymmetric composite delivery system for release
rate modulation of bioactives. The system is comprised of a core ( such as
a pure compressed drug disk, casted films, laminates, uncoated tablet,
enteric-coated tablet, osmotically active tablet, bilayer tablet, triple
layer tablet, compressed tablet made of pellets or uncompressed group of
pellets, biodegradable and polysaccharide matrices, microcapsules
containing osmotically-active agents, peptides, proteins and alike ) which
is embedded within two different layers that may contain excipients, drug
pellets and/or an acceptable material or hydrophilic or hydrophobic
polymers ( the "Product").
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