Exhibit 10.1 Xxxxxxx X. Xxxxxxx - Original Technology Agreement 2/9/96
AGREEMENT
This Agreement made and entered into this 9th day of February 1996, by and
between
Xxxxxxx Xxxxxxx, of 000 Xxxxx Xxxx'x Xxxx Xx., Xxxxxxxxxx, Xxxx, XXX, 00000
("Beplate")
and
Emergency Filtration Products, Inc. a Nevada Corporation, ("the Corporation")
with registered offices at 000 X. Xxxxx Xxxxxx, Xxxxxxxxxx Xxxxxx, 00000, by its
president, Xxxxx X. Xxxxxxxxx
Witnesses that:
Whereas:
1. Beplate is the sole and exclusive owner of a certain invention called an
emergency cardio-pulmonary resuscitation ("CPR") assistance device, ("the
Invention"), which invention has been protected in its essential operation by
Beplate lodging an application for a United States patent ("the Patent Rights")
on a critical component, being a certain configuration of valving called a
rotary isolation valve;
2. And whereas Beplate maintains, in addition to the patent application, certain
industrial knowledge and contacts useful for, or essential for, the physical
production of the invention, and the commercial exploitation thereof as a
product ("the product")
3. And whereas the Corporation wishes to acquire title to the patent application
and to all rights pertaining thereto ("the Rights"), including the right to
manufacture, sell, and improve the device, and to license the said Rights;
copyright to all materials created by Beplate, and all other rights of any
description relative to this product and in the control of Beplate;
4. And whereas Beplate is desirous of conveying all Rights to the invention and
to its commercial exploitation to the Corporation
5. And whereas the Corporation wishes to compensate Beplate for conveying said
Rights to the Corporation;
6. And whereas Beplate and certain other parties advanced funds to another
business generally in the same line of business but not with the similar
configuration of valving between September of 1993 and October of 1995, and
which prior business ("the prior business") is defunct, or said to be so by its
officers and directors;
7. And whereas Beplate and Emergency Filtration Products, Inc. have volunteered,
without compulsion and without demands having been made upon them, to make whole
certain shareholders in the said prior business through a separate agreement
("the indemnity agreement"), as a condition of removing any impediment or
perceived impediment to Beplate remaining in this same line of business and
making the conveyance to the Corporation with which this Agreement is concerned;
8. And whereas Emergency Filtration Products, Inc. is required as a term of this
agreement to indemnify Beplate for financial losses derived from the prior
business;
NOW THEREFORE, in consideration of the mutual warranties, disclosures, covenants
and agreements herein contained, the parties agree as follows:
1. Warranty of Title: Beplate warrants that he is the sole and rightful owner of
all right, title, and interest in, and to, the Invention, and in and to the
Patent Rights to the said Invention, and that there are no other valid
outstanding licenses, agreements, or encumbrances of any description that are in
any way inconsistent with the conveyance of the totality of all Rights to the
Invention to the Corporation;
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2. Material Disclosure: Beplate discloses that in January of 1995 a different
configuration of a device intended for the same purpose and market was licensed
to another corporation, and Beplate further discloses that he has been informed
by counsel, and by more than one of them, that the said corporation and its
officers and directors are entirely in default of the provisions of that license
agreement, and that any conveyance of rights under that agreement is therefore
void, and that Beplate may maintain causes of action as against the said
corporation, and against its officers and directors;
3. And Beplate further discloses and maintains that the design of the valve in
the current patent application differs in material and profound respect from
that in the patent application of December of 1994, and that he has entirely
abandoned the configuration in the prior application;
4. Additional Comfort: In addition to any disclosure offered herein as to prior
different manifestations of product, Beplate offers the further comfort that he
has caused an agreement to be drafted and executed, the intent of which is to
save harmless Beplate, the Corporation, and the officers and directors of the
Corporation in respect of certain individuals formerly engaged as lenders or as
shareholders in the prior business, with the effect that the Corporation may
engage in this conveyance with as little impediment, or the perception of
impediment, as Beplate or any other person is reasonably able to secure, and it
is herewith recorded that for its own security and comfort, the Corporation has
been made a party to the said agreement with the prior shareholders.
5. And the Corporation further attests, that it has been informed that the
dollar value of voluntary payment made to each and every person under the terms
of the agreement with the shareholders and lenders of the former business has
been made without audit, and represents the actual prior dollar outlay of any
party receiving funds, with no premium, interest, or penalty, which figures the
Corporation accepts for itself without audit or further review.
6. Grant of Rights Beplate hereby grants to the Corporation:
a. All right and title to the Invention, and to the present and future
Patent Rights to the Invention.
b. All rights to derivative or successive inventions, or adaptations to the
current version of the invention, arising or continuing from the concept or the
claims made in the patent application for the valving device and the associated
attachments, whether or not said claims may be sustained by examination in the
patent office of the United States, or in other jurisdictions;
c. All rights to the commercial exploitation of the Invention, including
exploitation by way of manufacturing, sales of units of the device, licensing,
or otherwise;
d. All other rights in any way connected with the device and arising from
the work or thinking of Beplate, including but not necessarily limited to
copyrights of printed material and design concepts; trademarks; (whether applied
for or not); drawings; work in progress; literature; sales contacts;
manufacturing contacts, and other material of a generally similar nature.
7. Consideration In consideration for the grant of the Rights to the
Corporation, the Corporation shall compensate Beplate or other parties
designated by him as follows, and shall maintain the further rights herein
enumerated:
a. It is herewith agreed that the corporation may pay any designated
recipient of any sum under the said indemnity agreement with shares of the
common or preferred stock of the corporation, or as the case may be, the common
or preferred stock of any corporation acquiring Emergency Filtration Products,
Inc., or being acquired by the latter, but with the proviso that no person
receiving payment in stock under this program shall receive a worse rate of
conversion than any other person converting stock with the Corporation in
connection with any other conversion program, promissory note, or agreement;
b. The Corporation shall remit to parties other than Beplate named in the
payment schedule of the said agreement with former shareholders, or to the
attorney or other representative named by the receiving party pursuant to the
provisions of the said agreement, the sums scheduled for each party on that
agreement, but in any event the sums so remitted for parties other than Beplate
shall not exceed the aggregate of $119,500.00.
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c. The Corporation shall remit to Beplate or to his designated attorney in
trust the sum of $117,000.00 in satisfaction of the terms of the indemnification
agreement.
d. By payment to Beplate of a royalty of 5% (five percent) calculated on
the cash received by the Corporation and/or any licensee on sales of the entire
CPR device or any components thereof, and payable quarterly, 30 days in arrears
of the end of each three months of the year.
i. In connection with sales of the device or components thereof under
license, it is understood that the obligation of the Corporation to ensure
payment of the royalty shall flow through to the licensee, but the Corporation
shall be liable only for its own best efforts in the enforcement of payment of
said royalties, and not for the cash value thereof, and the parties hereto agree
that the recourse against non-payment of royalties by licensees shall be
immediate termination of the licensee, and action for recovery and/or
retraction.
e. By compensating Beplate for consulting services to the Corporation at a
rate of commensurate with those paid to senior consultants in the medical
products line of business, for which services he shall invoice the Corporation
monthly.
f. By awarding Beplate 19.00% of the issued common shares of the
Corporation, calculated as of the date of the execution to this agreement.
8. Non-Acceptance of Patent Application
a. The parties hereto acknowledge that the Rights granted in this Agreement
represent an intellectual property undergoing application for patent, and not
pertaining to any patent having been granted.
b. The parties shall jointly perform every act necessary to ensure
acceptance and passage of the patent application, failing which acceptance it
shall be the obligation of the Corporation to pay Beplate only the royalty and
common stock components of the consideration, and to employ him as a consultant
as needed, with the following provisions:
i. The phrase "rejection of the patent application" as used herein shall be
deemed not to include abandonment of the application by the company without
conclusive determination by the United States Patent Office that there are no
allowable claims whatsoever in the said patent application, and rejection shall
be deemed not to have occurred unless that Corporation has pursued every
reasonable effort to ensure acceptance of one or more of the claims in the
patent application, and all avenues of submission and re-submission;
ii. And furthermore, rejection of the patent application shall not be
deemed to have occurred if, at the option of the coronation, the patent
application be from time to time renewed or re-submitted, with the effect of
being barred from progress toward a final determination;
iii. In the event of the rejection of the patent application as defined
herein, and in the event that the Corporation is nevertheless able to sell a
product or products based on the ideas of Beplate, but without the benefit of
patent protection, any funds paid to Beplate in satisfaction of the obligation
to make a voluntary refund of investment or the shareholders of the prior
business shall be presumed to have been paid over as royalty. Such funds shall
also be assumed to have been paid in advance to the extent that actual royalties
payable may not by the time of the rejection of the patent, equal any sum paid
by the Corporation in satisfaction of the agreement with the former
shareholders.
c. In the event that no CPR emergency assistance product is saleable by the
Corporation, no further funds or royalties shall be payable to Beplate, but
Beplate shall in no even be obligated to repay any funds paid or advanced to him
or to the former shareholders of the prior Corporation, and the Corporation
shall deem that any funds so advanced were paid after the performance of its own
diligence and in an effort to avail itself of a commercial opportunity.
9. Exclusivity of Services As a term of the sums and other consideration paid to
Beplate through this Agreement, Beplate agrees to provide the Corporation freely
with sufficient time, consultation, and information on the Rights, on the
current patent application, the re-submission or continuation of any patent
application or actual patent, and on the development of the product, for the
Corporation to benefit from the development and enhancement of the Rights.
Beplate agrees not to supply any other party with any information on the Rights,
for the duration of the term of the Patent Rights, except in the normal course
of acting on the business for the Corporation, and according to the
Corporation's policies on disclosure.
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10. Conveyance On the date of the execution of this Agreement, Beplate shall
supply to the Corporation all papers, records, and information of any
description materially relative to the Rights and to the commercial production,
development, and future enhancement of the Rights. At the request of the
Corporation, Beplate shall register an assignment of the patent application to
the Corporation.
11. Infringement Should any party infringe the Patent Rights, the Corporation
shall be obligated to pursue legal action for damages or to apply injunctively
for cessation of the infringement. The costs of such action shall be borne by
the Corporation, and all proceeds from such action shall accrue to it. If the
Corporation, in the best judgment of the Board of Directors, does not act
against the alleged infringement, Beplate shall be empowered to bring action in
his own right, and at his own expense, and the proceeds of any such action shall
be his own property.
12. Sub-Licenses and Assignments The Corporation shall have the right under this
agreement to license the Rights; to appoint distributors; to appoint foreign
licensees or sub-licensees; and to deal in every manner commensurate with normal
trade practices with the Rights. The Corporations shall have the right to
assign, partially or entirely, the Rights granted under this Agreement, provided
that the compensation payable to Beplate under the proposed arrangement is not
demonstrably less than under the prior arrangement.
13. Warranty as to Product Efficacy and Liability Beplate warrants that any
device incorporating the valve under patent application is suitable only for the
limited purposes claimed in the version of the patent application current as of
the date of the execution of this Agreement. The parties hereto agree that any
claims in addition to this limited warranty shall be those of the Corporation,
not Beplate, and the Corporation agrees to hold Beplate harmless from all
claims, actions, costs, whether actual or threatened, which are related to
claims for product efficacy or design, whether through negligence in the design
or otherwise, or through use or wrong use, whenever and howsoever such claims
may arise.
14. Patent Maintenance and Application Fees The Corporation shall pay all fees
for completion of the patent application and for the maintenance of the patent,
including any account for services which may be presented for services rendered
before the date of this Agreement.
15. Successors This Agreement is binding on the successor, heirs, and assigns of
the parties.
16. Jurisdiction The jurisdiction of this agreement shall be the State of
Nevada.
17. Severability The sections and sub-sections of this agreement are severable,
and the vitiation of any of them shall not render void the whole of the
agreement, or any other provision herein.
18. Fax Versions, Counterpart and Clean Copy This agreement and the execution
hereof shall be valid if executed in counterpart, and if evidence of the
execution be transmitted from one party to another by fax. The Corporation
thereafter shall maintain the option of requiring and creating a clean copy.
To which the parties have set their signatures this 29th day of February 1996.
\S\ Xxxxxxx Xxxxxxx
Xxxxxxx Xxxxxxx
\S\ Xxxxx X. Xxxxxxxxx
Xxxxx X. Xxxxxxxxx, President
Emergency Filtration Products, Inc.
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