EXHIBIT 10.9
AGREEMENT
BETWEEN ACORN LABORATORIES, INC., having its offices at 1423 14th
Terrace, PGA National, Xxxx Xxxxx Xxxxxxx, Xxxxxxx 00000 ("ACORN") and OCUREST
LABORATORIES, INC., having offices at 1423 14th Terrace, PGA National, Xxxx
Xxxxx Xxxxxxx, Xxxxxxx 00000 ("OCUREST").
WHEREAS, ACORN is the owner of United States Letters Patent and of
corresponding foreign applications for patents and of applications for U.S. and
corresponding foreign design patents and registrations (the patent properties),
as listed in the attached Schedule A, covering inventions in eyedrop dispensers
and the ornamental designs thereof; and
WHEREAS, ACORN is the owner of the trademarks "OCUREST" and the
miscellaneous design comprising the shape of the container for use on and in
conjunction with eyedrop preparations and of the Registration U.S. No. 1,492,900
of "OCUREST" and of the application for registration, .U.S. No. 74/036,743 of
the miscellaneous design (the trademark properties); and
WHEREAS, OCUREST desires to make, use and sell eyedrop dispensers in
accordance with the inventions and in conjunction with the trademarks; and upon
developing the market for eyedrops
contained within such dispensers, to own said patent and trademark properties
and ACORN is willing to license and eventually sell said patent and trademark
properties upon OCUREST's successful development of such market;
NOW, THEREFORE, in consideration of these premises, of other good and
valuable consideration, the receipt of which is hereby acknowledged and for the
consideration as expressed infra, it is agreed as follows:
1.a) ACORN does hereby grant OCUREST the exclusive right throughout
the world to make, use and sell eyedrop solutions contained in dispensers
described and claimed in said patent properties and to market the same in
conjunction with the trademarks.
b) unless sooner terminated hereunder, the licenses granted herein
shall be for the life of the patent properties and so long as OCUREST uses the
trademarks.
2. For the license granted under the patent and trademark
properties, OCUREST shall pay ACORN:
a) $200,000.00 upon the execution of this agreement, to be paid
from the proceeds of the stock offering to be made substantially concurrently
with the execution of this agreement; and
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b) shall pay to ACORN royalties of five percent (5%) of the net
sales of eyedrop preparations sold in dispensers covered by the patent
properties and in conjunction with said trademark properties; net sales
defined herein as gross sales minus returns and cash discounts; until the
sum of $9,800,000.00 has been paid to ACORN; payments to be made to ACORN
quarterly on receipts from the previous quarter to be accompanied by sales
reports for that quarter; records for inspection by ACORN at reasonable times
to be kept by OCUREST; payments to be made within forty-five (45) days of the
end of each quarter;
c) in the event OCUREST sells or transfers its business in the
production and sale of eyedrop preparations or otherwise disposes of its assets,
or licenses the patent and trademark properties, any remaining balance due ACORN
hereunder shall be paid from the proceeds of such sale, transfer, disposition or
license.
3. ACORN agrees to assign to OCUREST, its successors or licensees,
its entire right, title and interest in and to the patent properties identified
in the attached Schedule A, including the right to xxx for past infringement and
its entire right, title and interest in and to the trademark properties,
together with the good will attending the same, including the right to xxx for
past infringement, upon the payment to ACORN of the full sum specified in Clause
2(b) hereof.
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4.a) ACORN will assist OCUREST in the prosecution of pending
applications and OCUREST will assume outstanding and future patent and trademark
preparation and prosecution costs and will maintain all patents and trademark
registrations and prosecute all pending applications and pay maintenance and
renewal fees, annuities and taxes on all patent and trademark properties.
b) OCUREST shall have the right to assert the patent and trademark
properties against infringers and shall assume the costs and fees attending such
assertion and ACORN agrees to assist OCUREST, at OCUREST's expense, in the
assertion of the patent and trademark properties against infringers.
5. The licenses granted hereunder shall terminate and/or OCUREST or
its successor or licensee, shall reassign the patent and trademark properties to
ACORN and turn over to ACORN all materials and products marked with or
incorporating the trademarks transferred hereunder:
a) in the event OCUREST becomes bankrupt or insolvent or its assets
are held for the benefit of creditors or if OCUREST determines to cease the
production and sale of eyedrop preparations before the monies due ACORN
hereunder are fully paid;
b) in the event the payments due ACORN hereunder are not paid
within 120 days after any notice of default; and
c) in the event OCUREST or its successor or licensee defaults in
the performance of any other obligation under this
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agreement and such default is not cured within one hundred twenty (120) days
after notice of default.
6. This agreement may be assigned by ACORN, but not by OCUREST
without the consent of ACORN which shall not be unreasonably withheld and is
binding upon both parties, their assigns and successors.
WHEREFORE, the parties have executed this agreement on this 30th day of
October, 1991.
Dated: 10/30/91 ACORN LABORATORIES INC.
Witnessed: By: /s/ XXXXXXX X. XXXXX
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Xxxxxxx X. Xxxxx
President
/s/ ILLEGIBLE
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Dated: OCUREST LABORATORIES, INC.
Witnesses: 10/30/91 By: /s/ XXXXX XXXX
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Xxxxx Xxxx
Vice President
/s/ XXXXXXXX XXXXX
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SCHEDULE A
PATENT PROPERTIES
UNITED STATES PATENT 4,909,90l
FOREIGN APPLICATIONS
EPC Application No. 89908615.1 - Filed 6/30/89 and claiming
priority date or 07/07/88
Designated countries: Austria; Belgium; Germany; France;
United Kingdom; Luxumbourg; Netherlands; Sweden and
Italy;
Australia Application No. 39819/89 - Filed 6/30/89 and claiming
priority date of 07/07/88;
Canada Application No. 604,958-3 - Filed 07/06/89 and claiming
priority date of 07/07/88;
Denmark Application No. 3087/90 - Filed 12/28/90 and claiming
priority date of 07/07/88;
Finland Application No. 910045 - Filed 01/04/91 and claiming
priority date of 07/O7/88;
Japan Based on PTC/US89/02998 - Filed 01/07/91;
New Zealand Application No. 229857 - Filed 7/6/89 and claiming
priority date of 07/07/88;
Norway Application No. 91.0028 - Filed 1/4/91 and claiming
priority date of 07/07/88;
Portugal Application No. 91 086 - Filed 7/6/89 and claiming
priority date of 07/07/88;
Spain Application No. 8902409 - Filed 7/8/89 and claiming
priority date of 07/07/88; and
Switzerland Application No. 960/90-6 - Filed 6/30/89 and claiming
priority date of 07/07/88
U.S. AND FOREIGN DESIGN PATENTS, APPLICATIONS AND REGISTRATIONS FOR THE DESIGN
OF THE EYE DROP DISPENSER
U.S. Design Patent D320,083, issued September 17, 1991;
Australia Registration No. 107381 - Dated 4/24/90 and four
divisional applications:
Registration Nos. 109530; 109529; 109528; and 109527;
Austria Application No. 550.174-550.196 - Filed 6/29/89
(Collective design) claiming priority date of 01/03/89;
Benelux Multiple (six) Registration No. 19385-01/06 claiming
priority date of 01/03/89;
Canada Application No. 30-06-89-6 - Filed 6/30/89 and claiming
priority date of 01/03/89;
Denmark Registration No. 0085 1991 - Filed 7/6/89 three
divisional Registration Nos. 0151 1991; 0150 1991; and
0149 1991;
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Xxxxxx Registration No. 894 287 - Filed 6/29/89 and claiming
priority date of 01/03/89;
Italy Multiple Appln. No. 35853-B - Filed 7/3/89 and
claiming priority date of 01/03/89;
Japan Four applns. filed 1/3/89 - Application Nos. 1-24306;
1-24307; 1-24308 and 1-24309 and claiming priority date
of 01/03/89;
Liechtenstein Registration No. 183 - Dated 7/3/89;
Xxx Xxxxxxx Xxxxxxxxxxxx Xx. 00000 - Filed 8/30/90 three divisional
Registration Nos. 23322; 23323 and 23324 - Filed
6/18/90
Norway Application No. 89.0609 - Filed 7/3/89 four divisional
applications filed: 90.01051; 90.0896; 90.0897; and
90.898 published 01/03/91;
Portugal Application No. 21.512 - Filed 7/3/89 and claiming
priority date of 01/03/89 published 7/31/90;
Spain Registration Xx. 000000 - Xxxxxxx 0/0/00
Xxxxxx Registration No. 48 215 - Dated 8/22/90 four divisional
applications filed; Registration Nos. 48 216; 48 217; 48
218 and 48 219;
Switzerland Registration No. ll7.57O - Dated 6/28/89;
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Xxxxxx Xxxxxxx Registration No. 1060515 - Dated 1/3/89 three divisional
applications filed; Registration Nos. 2002848; 2002849;
and 2002850;
Germany Xxxxxxxxxxxx Xx. X 00 X- 000.0 - Dated 10/17/89 (five
models)
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