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EXHIBIT 6.1
(6) MATERIAL CONTRACTS
6.1 ASSIGNMENT OF PHEMTEST PATENT AND TECHNOLOGY
PURCHASE AGREEMENT
This Purchase Agreement (the "Agreement") is made and entered into as of
September 1, 1998 by and between Xxxx Xxxxxxx ("Seller"), and HyperBaric
Systems, a California corporation ("Purchaser").
RECITALS
A. Seller owns the rights to certain proprietary information and technology
in connection with a certain disposable venereal disease medical test device
called Phemtest, covered by Patent No.4,945,921 and Patent No.4,784,158 (the
"Patent"). All of Seller's proprietary information and technology relating to
Phemtest, including the Patent, and any and all improvements and enhancements
thereto now existing are referred to hereinafter as the "Technology".
B. Purchaser desires to purchase all of Seller's interest in the
Technology, and Seller is willing to sell all such rights to Purchaser, on the
terms and conditions as set forth below.
AGREEMENT
NOW, THEREFORE, in consideration of the mutual promises and agreements contained
herein, the parties hereto, intending to be legally bound, agree as follows:
ARTICLE I
PURCHASE AND SALE
Section 1.1 Purchase and Sale. Seller hereby sells, transfers, and assigns,
deliver to Purchaser all of Seller's rights, title and interest in and to the
Technology, free and clear of all liens, mortgages, pledges, encumbrances and
charges of every kind.
Section 1.2 The Purchase Price.
(a) Payment of Maintenance Fee. Purchaser agrees to immediately
pay a maintenance fee for the Patent in the amount of $1,375 to Flehr,Hohbach,
Test, Xxxxxxxxx & Xxxxxxx LLP.
(b) Percentage Royalty Payments. Purchaser agrees to pay Seller
a royalty in the amount of five (5%) percent of quarterly net sales of any
products utilizing the Technology ("Products") for the next five (5) years (the
"Payment Period"), commencing from the date of this Agreement. The term "net
sales" shall mean the gross invoice selling price of Products sold by Purchaser,
less sales tax (if any), all trade and cash discounts, the amount of returns and
any premium included in the selling price which represents credit terms. In the
event Purchaser shall make any sale to any affiliate or parent or subsidiary
company at a price less than its usual wholesale price, such sale shall be
deemed to have been made at such usual wholesale price. If Purchaser licenses
Technology to unaffiliated third parties, then Seller will receive five percent
(5%) of any payment received by Purchaser in connection with such licenses.
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(c) Manner of Payment of Royalties. Purchaser shall pay all
amounts due to Seller in connection with net sales revenue received by Purchaser
for Products during each calendar quarter within thirty (30) days after the
completion of each calendar quarter in the following manner. Purchaser shall pay
the first $16,000 of royalty payments due to Seller in cash directly to
attorneys specified by Seller. Purchaser shall pay the next $75,000 worth of
royalty payments to Seller in common stock of Purchaser at $2.00 per share.
Thereafter, all royalties shall be paid to Seller in cash.
ARTICLE II
REPRESENTATIONS AND WARRANTIES
Section 2.1 Title to Technology. Seller represents and warrants that he has all
right, title and interest in and good and marketable title to and unrestricted
use of the Technology, and that such Technology is free and clear of all liens,
claims, pledges, charges, security interests, restrictions, prior assignments
and encumbrances of any kind whatsoever.
ARTICLE III
COVENANTS
Section 3.1 Retention of Records. During the Payment Period, Purchaser shall
maintain at all times complete and accurate books and records with reference to
the type of all Products which it manufactures or sells, the number of units of
each Product sold by Purchaser and the sales prices thereof. During the Payment
Period, Purchaser shall render to Seller quarterly statements setting forth the
foregoing information and all other information (including a statement in United
States dollars of sales volume and net sales of all Products, computed at the
foreign exchange selling rate among banks in effect in New York City at the
close of the last banking day for the applicable quarter, as reported by The
Wall Street Journal or, if not so reported, as reported by The New York Times
or, if not so reported, as quoted by any major commercial bank located in New
York City selected by Seller) necessary to compute the percentage royalty
payment, which statements shall be furnished within thirty (30) days after the
end of the quarter covered. All records relating to the information contained in
such statements shall be available to Seller, its agents, servants or employees,
for a period of two years after any sale of a Product is made. Seller shall have
the right to have the books and records of the Purchaser and all other documents
or materials pertaining to the Products or this Agreement audited or examined by
its representatives. If any audit or examination by Seller discloses a
deficiency of U.S. $1,000 or more in payments owing to Seller by Purchaser, then
the cost of such examination shall be borne by Purchaser.
Section 3.2 Further Assurances. Seller agrees to execute and deliver such
further documents and instruments and to do such other acts and things as
Purchaser may reasonably request in order to effectuate the transfer of the
Technology.
ARTICLE IV
GENERAL PROVISIONS
Section 4.1 Amendment and Waiver. Any term of this Agreement may be amended and
the observance of any term of this Agreement may be waived (either generally or
in a particular instance, either retroactively or prospectively, and either for
a specified period of time or indefinitely), only by the written consent of both
parties hereto. Any agreement on the part of a
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party to any such extension or waiver shall only be valid if set forth in an
instrument in writing signed on behalf of such party. Any such waiver or
extension shall not operate as waiver or extension of any other or subsequent
condition or obligation.
Section 4.2 Notices. All notices, instructions and other communications required
or permitted to be given hereunder or necessary or convenient in connection
herewith (each a "Notice") shall be in writing and may be personally served or
may be deposited with the appropriate postal authorities, registered or
certified, return receipt requested, postage prepaid, addressed as follows:
If to Seller: Xxxx Xxxxxxx
000 00xx Xxxxxx
Xxxxxxxx, XX 00000
If to Purchaser: Xxxxx Xxxxxx
HyperBaric Systems
0000 Xxxxxx Xxxxxx
Xxxx Xxxx, XX 00000
or such other address as either party shall designate in writing and deliver to
the other party. Notices mailed as provided herein shall be deemed given on the
fifth day following the date so mailed or on the date of actual receipt,
whichever is earlier.
Section 4.3 Counterparts. This Agreement may be executed in counterparts, each
of which shall be deemed an original, but all of which taken together shall
constitute one and the same instrument.
Section 4.4 Governing Law; Venue. The validity of this Agreement, its
construction, interpretation and enforcement, and the rights of the parties
hereto, shall be determined under, governed by, construed and enforced in
accordance with the internal laws of the State of California, without regard to
principles of conflicts of law.
Section 4.5 Entire Agreement. This Agreement constitutes the entire agreement
between the parties with respect to the subject matter hereof and shall not be
modified except by writing signed by each of the parties hereto.
Section 4.6 Successor and Assigns. This Agreement and the provisions hereof
shall be binding upon each of the parties, their heirs, successors and assigns.
Section 4.7 Partial Invalidity. If any provision of this Agreement is found to
be invalid by any court, the invalidity of such provision shall not affect the
validity of the remaining provisions hereof.
Section 4.8 Attorneys' Fees. In the event of arbitration or litigation
concerning this Agreement, the prevailing party in such arbitration or
litigation shall be entitled to reimbursement from the other party opposing of
all reasonable attorneys' fees and costs incurred in such arbitration or
litigation.
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IN WITNESS WHEREOF, the parties have caused this Agreement to be duly executed
and delivered as of the date first written above.
SELLER - XXXX XXXXXXX
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PURCHASER - HYPERBARIC SYSTEMS
By:
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Its: President
