PATENT PURCHASE AGREEMENT
Exhibit
10.1
This Patent Purchase Agreement
("Patent Purchase Agreement"), made and entered into this 19th day of January,
2011 (the “Effective Date”), is by and between Protect Pharmaceutical
Corporation, a corporation organized and existing under and by virtue of the
laws of the State of Nevada, having an office and place of
business at 000 Xxxxxxx Xxxxxxxxx, Xxxxx 000, Xxxxxxxxx, XX 00000 ("Seller");
and Grünenthal GmbH, a company organized under the laws of Germany, having
offices at Xxxxxxxxxxxxx 0, 00000
Xxxxxx/Xxxxxxx (“Buyer”). Seller and Buyer are also referred to
individually as a “Party” and collectively as the “Parties."
WITNESSETH
WHEREAS, Seller has declared
that it is the owner of all rights, title and interest in and to the inventions
(the “Inventions”) as described and claimed in all of Seller’s patents and
patent applications (collectively “the Patents”) listed on Exhibit
I and including without limitation, all extensions, continuations,
provisionals, derivatives and related applications thereof whether or not such
applications are listed on the attached Exhibit
I to this Patent Purchase Agreement; and
WHEREAS, Seller wishes to
sell, transfer, assign and set over unto Buyer, and Buyer wishes to purchase,
accept and assume, all rights, title and interest in and to the Inventions and
Patents as specified in this Agreement.
NOW, THEREFORE, in
consideration of the mutual covenants and agreements of the Parties contained
herein, and for other good and valuable consideration the receipt and
sufficiency of which are hereby acknowledged, it is hereby agreed as
follows:
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1.
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Purchase
and Sale of Patents. Seller hereby sells to Buyer, and
Buyer hereby purchases from Seller, all right, title and interest in and
to the Inventions and the Patents, and Seller and Buyer hereby agree to
execute the form of Patent Assignment Agreement (the “Patent Assignment”)
attached as Exhibit
II hereto, the terms of such Patent Assignment being fully
incorporated herein. All of the rights, privileges, including
the benefit of any attorney client privilege or attorney work product
privilege, title and interest in and to the Inventions and Patents being
sold, transferred, assigned and set over to Buyer hereunder include
without limitation all income, royalties, damages, right to xxx, right to
enforce and any and all payments now or hereafter due or payable with
respect thereto, and the right to bring any claim, xxx, counterclaim, and
recover for the past, present and future infringement of the rights
assigned hereunder.
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2.
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Purchase
Price of Inventions and Patents. The purchase price for
the Inventions and Patents shall
be:
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a.
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Cash Payment:
Buyer shall pay to Seller
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(i)
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One
Million Four Hundred Fifty Thousand U.S. Dollars ($1,450,000) in cash to
be paid on the Closing (as defined
below).
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(ii)
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One
Hundred Fifty Thousand U.S. Dollars ($ 150,000) in cash to be paid after
transfer of all documents and data that relate to the
Patent.
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b.
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Payment
Procedures: All payments made by Buyer pursuant to this Agreement
shall be made by wire transfer to that account specified by Seller at such
times and in accordance with the provisions of Section 2(b) (and until
another account is designated in writing to Buyer by Seller, to the
account identified in Exhibit
III). Simultaneous
with any wire transfer pursuant to Section 2(b), Buyer will include a
report detailing the payment amount and will provide such supporting
documentation as may reasonably be requested by Seller (subject to
appropriate and customary confidentiality obligations as may be required
in order to disclose such documentation to
Seller).
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1
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3.
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No
Assumption of Liabilities. It is expressly understood
and agreed that Buyer shall not be liable for and hereby disclaims any
assumption of any of the obligations, third party claims or liabilities of
Seller and/or its affiliates and/or of any third party of any kind or
nature whatsoever arising from or in connection with any circumstances,
causes of action, breach, violation, default or failure to perform with
respect to the Inventions and Patents prior to the Closing (“Retained
Liabilities”) and Seller hereby agrees to defend, indemnify and hold Buyer
and its affiliates, officers, directors, shareholders and employees (the
“Indemnified Parties”) harmless from, against and in respect of any and
all losses, liabilities, damages, claims or expenses (including, without
limitation, attorneys' fees) suffered or incurred, directly or indirectly
in connection with a Retained Liability and any obligation arising out of
or relating to Seller’s ownership or actions (or lack
thereof) relating to the Patents in accordance with the
indemnification procedures outlined in Section
6.
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4.
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Taxes;
Brokers. Seller
shall pay any taxes that are legally imposed on Seller arising out of the
transfer of the Inventions and Patents. Seller is not liable
for any taxes, if any, that are legally imposed on Buyer arising out of
the transfer of the Inventions and Patents. Seller is
responsible for any fees (including legal and broker fees) incurred by
Seller and Buyer is responsible for any fees (including legal and broker
fees) incurred by Buyer.
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5.
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Representations
and Warranties of Seller. Seller represents and warrants
to Buyer as follows:
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5.1
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Corporate
Organization. Seller
is a corporation duly organized, validly existing and in good standing
under the laws of the State of Nevada, USA with full power and authority
to own and operate its properties and assets and carry on its business as
currently conducted.
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5.2
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Authorization. Seller
has full power and authority to enter into this Agreement and the Patent
Assignment and to carry out the transactions contemplated hereby and
thereby. The execution and delivery of this Agreement and the
Patent Assignment and the consummation of the transactions contemplated
hereby and thereby have been duly authorized by the Board of Directors and
all other necessary corporate actions on the part of Seller, including the
shareholders, to the extent required. This Agreement and the
Patent Assignment have been duly executed and delivered by the Seller, and
constitute legal, valid and binding obligations of Seller, enforceable in
accordance with their terms.
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5.3
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Non-Contravention. Neither
the execution and delivery of this Agreement and the Patent Assignment,
nor the assignment of the Inventions and the Patents contemplated hereby
and thereby will violate, or be in conflict with the Articles of
Incorporation of the Seller or any provision of any applicable law binding
upon or applicable to the Seller, or any of the Inventions or Patents,
give rise to any right of termination, cancellation, increase in
obligations, imposition of fees or penalties under, any debt, note, bond,
indenture, mortgage, lien, lease, license, instrument, contract,
commitment or other agreement, or order, arbitration award, judgment or
decree, to which Seller is a party or by which it is bound or to which the
Inventions or Patents are subject, or result in the creation or imposition
of any mortgage, lien, charge, pledge, security interest, other
encumbrance or third party right (“Encumbrances”) upon any of the
Inventions or Patents.
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2
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5.4
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Approvals. No
consent, approval, order or authorization of, or registration, declaration
or filing with, any governmental or regulatory authority or third party is
required in connection with the execution or delivery of this Agreement or
the Patent Assignment or the consummation of the transactions contemplated
hereby and thereby, except for recordation of suitable patent assignment
documents in the U.S. Patent & Trademark Office (the “PTO”) and
comparable foreign patent offices (the “Required
Approvals”).
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5.5
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Ownership
of the Patents. The
Seller owns all right, title and interest, and has good and marketable
title, in and to the
Inventions and Patents free and clear of all
Encumbrances. Seller is not obligated or under any liability
whatsoever to make any payments by way of royalties, fees or otherwise to
any owner or licensee of, or other claimant with respect to the use of the
subject matter disclosed and claimed in the Inventions or the Patents or
in connection with the licensing of the Inventions and/or Patents to third
parties.
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5.6
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Pre-Existing
Licenses under the Patents. The
Seller, or any predecessor-in-interest to the Inventions and Patents, has
not granted any licenses or any other rights under the Inventions or
Patents.
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5.7
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Litigation. There
are no (i) actions, suits, claims, hearings, arbitrations,
proceedings (public or private) or governmental investigations against or
affecting the Seller, pending or threatened, against or by the Seller
(collectively, “Proceedings”), nor any Proceedings or investigations or
reviews by any governmental authority against or affecting the Seller,
pending or threatened against or by the Seller, relating to the Inventions
or Patents or which seek to enjoin or rescind the transactions
contemplated by this Agreement or the Patent Assignment; or
(ii) existing orders, judgments or decrees of any governmental
authority naming the Seller as an affected party in connection with
Inventions and/or the Patents.
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5.8
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Patent
Maintenance. All
annuity and maintenance fees that are necessary in order to keep the
Patents in force as of the Effective Date have been paid by Seller, and no
payment of annuities or fees, or papers to be filed in patent offices, are
required to be made within the three-month period after the Effective
Date.
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6.
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Indemnification;
Set-Off.
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6.1.
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Without
derogating from the provisions of Section 3 above, Seller agrees to
defend, indemnify and hold the Indemnified Parties harmless from, against
and in respect of any and all losses, liabilities, damages, claims or
expenses (including, without limitation, attorneys' fees) suffered or
incurred, directly or indirectly by the Indemnified Parties by reason of,
or resulting from the breach of any representation or warranty contained
in Section 6 of this Agreement or from the failure to perform any covenant
contained in this Agreement or in the Patent
Assignment.
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6.2.
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Whenever
any claim arises for indemnification under this Agreement or an event
which may result in a claim for such indemnification has occurred, the
Indemnified Party will promptly notify the Seller of the claim and, when
known, the facts constituting the basis for such claim. The
Seller shall have the obligation to dispute and defend all such third
party claims and thereafter so defend and pay any adverse final judgment
or award or settlement amount in regard thereto. Such defense shall be
controlled by the Seller, and the cost of such defense shall be borne by
the Seller, provided that the Indemnified Parties shall have the right to
participate in such defense at their own expense, unless the Indemnified
Parties require their own attorney due to a conflict of interests, in
which case, the expense thereof will be borne by the Seller. The
Indemnified Parties shall cooperate in all reasonable respects in the
investigation, trial and defense of any such claim at the cost of the
Seller. If the Seller fails to take action within thirty (30) days of
notice, then the Indemnified Parties shall have the right to pay,
compromise or defend any third party claim, such costs to be borne by the
Seller. The Indemnified Protected shall also have the right and upon
delivery of ten (10) days advance written notice to such effect to the
Seller, exercisable in good faith, to take such action as may be
reasonably necessary to avoid a default prior to the assumption of the
defense of the third party claim by the Seller, and any expenses incurred
by the Indemnified Parties so acting shall be paid by the Seller. The
Seller will not settle or compromise any third party claim without the
prior written consent of the Indemnified
Parties.
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6.3.
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Without
derogating from any other right and/or remedy available to the Buyer
hereunder or under applicable law, the Buyer shall be entitled to set-off
against any amounts otherwise payable by the Buyer to the Seller under
this Agreement any amounts to which Buyer is entitled based on a claim for
indemnification by the Buyer under this Agreement or the Patent
Assignment. Neither the exercise of, nor the failure to exercise, such
right of set-off will constitute an election of remedies or limit the
Buyer in any manner in the enforcement of any other remedies that may be
available to it.
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| 6.4. | Covenants of the Seller |
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6.4.1.
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The
Seller agrees that during the period from the Effective Date through the
Closing, the Seller, will not directly, through any agent or otherwise,
solicit, accept, initiate or encourage (by providing confidential
information or otherwise) submission of proposals or offers from any
person or entity or negotiate or suggest negotiations at any future time
with or to any other person any transaction related to or which may
affect, the Inventions or the Patents.
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6.4.2.
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The
Seller agrees that during the period from the Effective Date through the
Closing, the Seller shall operate its business in the ordinary course
consistent with past practices. The Seller agrees to pay all indebtedness
when due, to use reasonable efforts to pay or perform other obligations
when due and agree to preserve the Seller’s assets and technology and
preserve the relationships of the Seller with suppliers, investigators,
distributors, licensors, licensees, and others having business dealings
with them, all with the goal of preserving unimpaired the goodwill and
ongoing businesses of the Seller relating to the Inventions and the
Patents.
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6.4.3.
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Without
limiting the generality of the foregoing, except (i) as expressly
contemplated herein or (ii) with the prior written consent of the
Buyer, the Seller shall not:(A) sell, license or transfer to any person or
entity any rights to the Inventions or the Patents enter into any
agreement or undertake any new obligation with respect to any of the same,
with any person or entity; (B) incur any indebtedness or guarantee any
indebtedness for borrowed money or issue or sell any debt securities or
guarantee any debt securities or other obligations of others or create an
Encumbrance over the Inventions or the Patents; or (C) enter into any
transaction for a merger of the Seller or the sale of all or substantially
all of the shares of the Seller, which may affect, directly or indirectly,
the Inventions or the
Patents.
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4
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6.4.4.
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Following
the Closing, and for a period of three (3) months, the Seller undertakes
not to (i) apply for or consent to the appointment of any
liquidator, receiver, trustee or administrator for all or a substantial
part of its business, properties, assets or revenues; (ii) institute (by
petition, application, answer, consent or otherwise) any bankruptcy,
arrangement, readjustment of debt, dissolution, liquidation or similar
executory or judicial proceeding; or (iii) call a creditors'
meeting for the purpose of entering into an arrangement with
them. In addition, the Seller shall take promptly, at its
expense, all measures as are required for preventing, discharging,
terminating, removing or achieving a stay of any of the aforesaid or
similar events initiated by third parties.
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6.4.5
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Seller
agrees that it will not assert any of its patents or patent applications
against the practice of the inventions and patents assigned by this
Agreement.
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6.4.6
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Seller
covenants that to the best of it's knowledge the duty of disclosure has
been complied with and the best mode has been disclosed in the pending
patent applications. Seller agrees to cooperate with Buyer at Buyer's
expense as set forth in Section 11.3 in the prosecution of the patent
applications should that cooperation be desireable or
necessary.
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6.4.7
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Seller
represents that it has secured the inventor's cooperation in fulfilling
the representations and obligations of Section
6.4.6.
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7.
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Representations
and Warranties of Buyer. Buyer represents and warrants
to Seller as follows:
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7.1
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Corporate
Organization. Buyer is a corporation duly organized,
validly existing and in good standing under the laws of Germany, with full
power and authority to own and operate its properties and assets and carry
on its business as currently
conducted.
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7.2
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Authorization. Buyer
has full power and authority to enter into this Agreement and to carry out
the transactions contemplated hereby. The execution and
delivery of this Agreement and the consummation of the transactions
contemplated hereby have been duly authorized by all necessary corporate
actions on the part of Buyer. This Agreement and the Patent
Assignment have been duly executed and delivered by the Buyer, and
constitute legal, valid and binding obligations of Buyer, enforceable in
accordance with their terms.
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8.
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Closing and Due
Diligence Period.
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8.1
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Closing. The
Closing (the “Closing”) of the purchase and sale of the Patents shall take
place on or before
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8.2
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Documents. During
the period prior to the Closing, the Seller will provide to Buyer complete
copies of the patent prosecution files provided by prosecution counsel and
any other documents (electronic or otherwise) in Seller's custody or
control relating to the Inventions and the
Patents.
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5
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8.3
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Deliveries. At
the Closing, the Seller shall deliver to the Buyer the
following:
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8.3.1.
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duly
executed copies of the Patent Assignment, duly executed by the
Sellers;
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8.3.2.
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such
other duly executed agreements, deeds, certificates or other instruments
of conveyance, transfer and assignment as shall be necessary, in the
reasonable opinion of the Buyer, to vest in the Buyer good, valid and
marketable title to the Inventions and the
Patents.
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8.4
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Pre-Closing
Transfer. At least five (5) business days prior to the
Closing (or immediately thereafter upon learning of the existence of any
such files or documents that have not been transferred to Buyer subsequent
to the transfer contemplated under this Section 8.4), Seller shall, and
shall cause its patent counsel to deliver to Buyer (or to Buyer’s counsel
as may be directed by Buyer) copies of all patents and patent
applications, and PTO correspondence in Seller’s or Seller’s counsel’s
possession related to the Patents and any other documents (electronic or
otherwise) in Seller's custody or control relating to the Patents. Seller
represents to Buyer that as of the date five business days prior to the
Closing Date, Seller has conducted a thorough and diligent search through
its counsel for all such documents, and that as of the Closing, no other
such documents remain in the custody or control of Seller. Seller further
agrees that upon the Effective Date all rights and privileges (including
with respect to any attorney client privileges, attorney work product or
any other professional privileges or rights) held by Seller or any third
party, that arise from or relate to the Patents, Inventions or any other
intellectual property transferred under this Agreement, shall be
transferred from Seller to Buyer, including, without limitation, all
documents and data that relate to
Tapentadol.
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9.
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Miscellaneous. All
notices and other communications hereunder shall be in writing and shall
be deemed given if delivered (a) personally, (b) by facsimile
transmission, (c) by overnight courier or (d) by registered
or certified mail (return receipt requested) to the parties at the
following addresses (or at such other address for a Party as shall be
specified by like notice);
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If to the Buyer at:
Xxxxxxxxxx
XxxX, Xxxxxxxxxxxxx 0
00000
Xxxxxx/Xxxxxxx
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If to Seller at:
Protect
Pharmaceutical Corporation,
000
Xxxxxxx Xxxxxxxxx, Xxxxx 000,
Xxxxxxxxx,
XX 00000
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Notice shall be deemed received in the
case of (a) personal delivery, upon delivery, (b) international courier
(signature required), two business days following shipment and (c) international
registered or certified mail, seven business days following post
date. Either Party may change the notice address by providing notice
containing the changed notice information to the other Party.
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10.
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Infringement.
In the event that Seller or Buyer is named as a defendant in any patent
infringement lawsuit brought as a result of Buyer’s efforts to market a
product during the commercialization of the Patents, Seller shall fully
cooperate with Buyer in the handling of all such claims or lawsuits,
assist in production and location of evidence and provide other assistance
as requested by Buyer, including assistance with discovery, depositions
and expert testimony. Buyer shall have the obligation to undertake the
control and defense of such Infringement Action, including the
satisfaction of resulting legal fees and expenses, whether such action was
brought against Seller or Buyer. Buyer shall be responsible for the
coordination and payment of legal activities and shall promptly reimburse
all costs incurred by the Seller. Buyer shall be solely responsible for,
and hereby agrees to indemnify and hold harmless Seller and its affiliates
against, damages, claims, penalties, all legal fees and related expenses
incurred by the Buyer in the satisfaction of its
obligations.
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6
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11.
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General
Provisions. The Agreement is governed by the following general
provisions;
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11.1
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Entire
Agreement. This Agreement (including the Exhibits) and
the Patent Assignment constitute the entire agreement of the parties and
supersedes all other prior or contemporaneous agreements and
understandings, both written and oral, among or between the parties with
respect to the subject matter
hereof.
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11.2
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No
Third Party Beneficiaries. This Agreement is for the
exclusive benefit of the parties and is not intended to confer upon any
other person any rights or remedies hereunder.
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Expenses. If the Buyer requires the assistance of Seller for prosecuting, exploiting, defending or enforcing the rights of the Patents, Buyer is responsible for reimbursing all the pass-through costs and pay at the rate of $ 250 per man hour of Seller’s employee time spent in providing such assistance. Except as otherwise expressly provided herein, all parties will be responsible for their own costs and expenses, including counsel fees, incurred in connection with this Agreement. |
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11.4
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Assignment. The
Parties may assign this agreement including all the rights and obligations
hereunder upon the provision of written notice to the other
Party. It is hereby clarified that a “change in control”
transaction of the Parties shall not be deemed to be an assignment of this
Agreement by the Party.
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11.5
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Governing
Law; Forum. This Agreement will be governed by and
construed in accordance with the laws of the United States and the State
of New Jersey without regard to principles of conflicts of
law. Each party hereby agrees to jurisdiction and venue in the
courts of the State of New Jersey or the Federal courts sitting therein
for all disputes and litigation arising under or relating to this
Agreement.
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11.6
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Counterparts. This
Agreement may be executed in two or more counterparts, each of which shall
be deemed an original, but all of which together shall constitute one and
the same agreement.
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11.7
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Headings. The
headings of the articles and sections of this Agreement are inserted for
convenience only and shall not constitute a part
hereof.
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11.8
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Confidentiality. The
contents of this Agreement, including its terms and conditions, are
considered confidential. Neither Party shall disclose the terms
of the Agreement to an unaffiliated third party without the prior written
approval of the other Party, except to legal, financial, accounting or
other similar advisors who agree to maintain the terms of this Agreement
confidential, or except for any requisite filings to be made with the
Securities and Exchange Commission. In the event an
unaffiliated third party seeks to discover the terms of this Agreement
through a court order, the Party to whom the request for the terms has
been made shall provide reasonable notice of the request to the other
Party to this Agreement and shall use its reasonable efforts to prevent at
least the disclosure of the terms of the Agreement. Neither
Party will originate any publicity, news release, or other announcement,
written or oral, whether to the public press, to stockholders, or
otherwise, relating to this Agreement, to any amendment hereto or to
performance hereunder or the existence of an arrangement between the
parties without the prior written approval of the other
Party.
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11.9.
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Independent
Contractors. The relationship of Seller and Buyer established by
this Agreement is that of independent contractors, and nothing contained
in this Agreement shall be construed (i) to give either party the power to
direct or control the day-to-day activities of the other, or (ii) to
constitute the parties as partners, participants in a joint venture,
co-owners or otherwise as participants in a joint or common
undertaking.
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11.10.
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Further
Assurances. Seller agrees, at its sole expense, to
execute such further documents and do any and all such reasonable things
as may be necessary to implement and carry out the terms, conditions and
intent of this Agreement within a commercially reasonable timeframe upon
the request of Buyer.
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11.11.
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Interpretation.
The parties agree that this Agreement shall be fairly interpreted in
accordance with its terms without any strict construction in favor of or
against either party and that ambiguities shall not be interpreted against
the drafting party.
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11.12.
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Severability.
If for any reason a court of competent jurisdiction finds any provision of
this Agreement, or portion thereof, to be unenforceable, that provision of
the Agreement will be enforced to the maximum extent permissible so as to
affect the intent of the parties, and the remainder of this Agreement will
continue in full force and effect.
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11.13.
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Disclaimers.
This Agreement does not confer by implication, estoppel, laches or by any
other means any license or any right other than those expressly granted
herein.
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11.14.
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Injunctive
Relief. The parties agree that a material default of the provisions
of this Agreement by a party hereto could cause irreparable injury to the
other party for which monetary damages would not be an adequate remedy and
such other party shall be entitled to seek equitable relief, including
injunctive relief and specific performance, in addition to any remedies it
may have hereunder or at law.
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11.15.
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Counterparts.
This Agreement may be executed in two or more counterparts, each of which
shall be an original and all of which shall constitute together the same
document. It is further agreed that the delivery by facsimile,
e-mail or other recognized electronic medium of an executed counterpart of
this Agreement will be deemed to be an original and will have the full
force and effect of an original executed
copy.
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IN WITNESS WHEREOF, the
parties hereto have caused this Agreement to be duly executed as of the day and
year first above written.
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GRUNENTHAL
GmbH.
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By:
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/s/ Prof. Dr. E. - P. Pâques |
By:
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/s/ Xxxxxx Xxxxx | ||||||||||||||||||
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Name:
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Prof. Dr. E. - P. Pâques |
Name:
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Xxxxxx
Xxxxx
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Title:
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Title:
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Chief
Operating Officer
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| By: | /s/ Xxxx Xxxxxxxxxxx | ||||||||||||||||||||
| Name: | Xxxx Xxxxxxxxxxx | ||||||||||||||||||||
8
EXHIBIT
I
PATENT
APPLICATIONS
1. Tapentadol
Compositions - PCT/US08/084423, filed 21-November-2008, (Publication No. WO
09/067703 A1)
Nationalized applications based on
PCT/US08/084423
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Country
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Application
No.
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1A
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Australia
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2008328548
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|
0X
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Xxxxxx
|
XX
0000000-0
|
|
0X
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Xxxxxx
|
2,706,596
|
|
1D
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China
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200880122483.5
|
|
1E
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Europe
|
8852685
|
|
0X
|
Xxxx
Xxxx
|
X/X
|
|
0X
|
Xxxxxx
|
000000
|
|
0X
|
Xxxxx
|
1082/MUMNP/2010
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1I
|
Japan
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510142069
|
|
1J
|
Mexico
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MX/a/2010/005680
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|
1K
|
New
Zealand
|
586361
|
|
1L
|
Russia
|
2010123346
|
|
1M
|
Singapore
|
201003593-9
|
|
0X
|
Xxxxx
Xxxxx
|
00-0000-0000000
|
|
0X
|
Xxxxx
Xxxxxx
|
2010/03716
|
|
1P
|
United
States
|
12/786,382
|
2. Novel
and Potent Tapentadol Dosage Forms - PCT/US09/005866, filed 29-October-2009,
(Publication No. WO 10/096045 A2)
9
EXHIBIT
II
PATENT ASSIGNMENT
AGREEMENT
THIS
PATENT ASSIGNMENT AGREEMENT (the “Agreement”), is made and entered into this
19th
day of January, 2011 (the “Effective Date”), by and between Protect
Pharmaceutical Corporation, a corporation organized and existing under and by
virtue of the laws of the State of Nevada, having an office and place of
business at 000 Xxxxxxx Xxxxxxxxx, Xxxxx 000, Xxxxxxxxx, XX 00000, XXX
("Assignor"); and Grünenthal
GmbH, a company organized under the laws of Germany, having offices at
Xxxxxxxxxxxxx 0, 00000 Xxxxxx/Xxxxxxx (“Assignee”) (each a “Party” and
collectively the “Parties”).
WHEREAS,
Assignor is the owner of all rights, title and interest in and to the inventions
(the “Inventions”) as described and claimed in the United States and foreign
patents and patent application as listed on Schedule A hereto (collectively the
“Patents”);
WHEREAS,
Assignor and Assignee have agreed by a Patent Purchase Agreement (the “Purchase
Agreement”) dated 19th day of January, 2011, by and between Assignor and
Assignee, the terms of which are incorporated herein by reference, that Assignor
shall sell, transfer, assign and set over unto Assignee and Assignee shall
accept, all rights, title and interest in and to the Patents as specified in
this Agreement;
NOW,
THEREFORE, in consideration of the mutual covenants and agreements of the
Parties and pursuant to the Purchase Agreement, and for other good and valuable
consideration, the receipt and sufficiency of which are hereby acknowledged, it
is hereby agreed as follows:
I. ASSIGNMENT
|
1.
|
Assignor
hereby sells, transfers, assigns and sets over to Assignee all rights,
title and interest (for all countries) in and to the Patents, and all the
rights and privileges under any letters patent that may be granted under
any continuations, divisions, reissues, reexaminations, renewals and
extensions therefore and thereon and all continuations, divisions,
reissues, reexaminations, renewals and extensions thereof; and all
applications for industrial property protection, including without
limitation, all applications for patents, utility models, copyright, and
designs which may hereafter be filed for said Inventions and Patents in
any country or countries, together with the right to file such
applications and the right to claim for the same the priority rights
derived from the Patents under the patent laws of the United States, the
International Convention for the Protection of Industrial Property, or any
other international agreement or the domestic laws of the country in which
any such application is filed, as may be applicable; and all applications
for industrial property protection, including, without limitation, all
applications for patents, utility models, copyrights and designs which may
hereafter be filed for said Inventions or Patents in any country or
countries, together with the right to file such applications; and all
forms of industrial property protection, including, without limitation,
patents, utility models, inventors’ certificates, copyrights and designs
which may be granted for said Patent in any country or countries and all
extensions, renewals and reissues
thereof.
|
|
2.
|
Assignor
hereby authorizes and requests the Commissioner of Patents and Trademarks
of the United States and any official of any country or countries foreign
to the United States, whose duty is to issue patents or other evidence or
forms of industrial property on applications as aforesaid, to issue the
same to Assignee, it successors, assigns and legal representatives, or to
such nominees as it may designate.
|
10
|
3.
|
Assignor
agrees that, whenever reasonably requested by Assignee and at Assignee’s
expense, Assignor will execute all papers, take all rightful oaths, and do
all acts which may be reasonably necessary for securing and maintaining
patents for the Inventions in any country and for vesting title thereto in
Assignee, its successors, assigns and legal representatives or
nominees.
|
|
4.
|
Assignor
authorizes and empowers Assignee, its successors, assigns and legal
representatives or nominees, to invoke and claim for any application for
patent or other form of protection for the Inventions, the benefit of the
right of priority provided by the International Convention for the
Protection of Industrial Property, as amended, or by any convention which
may henceforth be substituted for it, or any other international agreement
or the domestic laws of the country in which any such application is
filed, as may be applicable, and to invoke and claim such right of
priority without further written or oral authorization from
Assignor.
|
|
5.
|
Assignor
hereby consents that a copy of this Agreement shall be deemed a full legal
and formal equivalent of any assignment, consent to file or like document
that may be required in any country for any purpose and more particularly
in proof of the right of Assignee or nominee to claim the aforesaid
benefit of the right of priority provided by the International Convention
for the Protection of Industrial Property, as amended, or by any
convention which may henceforth be substituted for
it.
|
|
6.
|
All
of the rights, title and interest in and to the Patents sold, transferred,
assigned and set over to Assignee hereunder include all income, royalties,
damages and payments now or hereafter due or payable with respect thereto,
and all causes of action (whether in law or equity) and the right to xxx,
counterclaim, and recover for the past, present and future infringement of
the rights assigned or to be assigned
hereunder.
|
|
ASSIGNEEE:
GRUNENTHAL
GmbH.
|
ASSIGNOR:
|
|||||||
|
By:
|
/S/
Prof. Dr. E. –P. Paques
|
By:
|
/S/
Xxxxxxx Xxxxx
|
|||||
|
Name:
|
Prof.
Dr. E. –P. Paques
|
Name:
|
Xxxxxxx
Xxxxx
|
|||||
|
Title:
|
Member
of the Executive Board of Grüenthal
Group
President and Chief Alliance Officer
Grüenthal
Innovation
|
Title:
|
Chief
Operating Officer
|
|||||
|
By:
|
/S/
Xxxx Xxxxxxxxxxx
Xxxx
Xxxxxxxxxxx
|
|||||||
| Title: |
Vice
President
Corporate Development and Licensing
|
|||||||
11
SCHEDULE
A
PATENT
APPLICATIONS
1. Tapentadol
Compositions - PCT/US08/084423, filed 21-November-2008, (Publication No. WO
09/067703 A1)
Nationalized applications based on
PCT/US08/084423
|
Country
|
Application
No.
|
|
|
1A
|
Australia
|
2008328548
|
|
0X
|
Xxxxxx
|
XX
0000000-0
|
|
0X
|
Xxxxxx
|
2,706,596
|
|
1D
|
China
|
200880122483.5
|
|
1E
|
Europe
|
8852685
|
|
0X
|
Xxxx
Xxxx
|
X/X
|
|
0X
|
Xxxxxx
|
000000
|
|
0X
|
Xxxxx
|
1082/MUMNP/2010
|
|
1I
|
Japan
|
510142069
|
|
1J
|
Mexico
|
MX/a/2010/005680
|
|
1K
|
New
Zealand
|
586361
|
|
1L
|
Russia
|
2010123346
|
|
1M
|
Singapore
|
201003593-9
|
|
0X
|
Xxxxx
Xxxxx
|
00-0000-0000000
|
|
0X
|
Xxxxx
Xxxxxx
|
2010/03716
|
|
1P
|
United
States
|
12/786,382
|
2. Novel
and Potent Tapentadol Dosage Forms - PCT/US09/005866, filed 29-October-2009,
(Publication No. WO 10/096045 A2)
12
EXHIBIT
III
SELLER
WIRE INSTRUCTIONS
Protect
Pharmaceutical Corp., Checking Account No. XXXXXXX, ABA No. XXXXXXX, Bank
:XXXXXXXXX , Address: XXXXXXXXXXXXXXXXXX, USA
13
