EXHIBIT 10.16
INTELLECTUAL PROPERTY
ASSIGNMENT AND ASSUMPTION AGREEMENT
This Agreement, dated as of May 24, 2001, 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 oral extended release dosage form based on the principle of
controlled hydration, as described in U.S. Patent Application No. 09/467,169,
(the "Patent Application"), and any foreign counterpart thereof, and any
continuations, continuations-in-part, divisions, re-issues, additions, renewals
or extensions thereof, and any patents issuing therefrom (the "Intellectual
Property").
B. The parties have reached an agreement pursuant to which Nutraceutix
will purchase all of Xx. Xxxxxxx'x interest in the Patent Application and the
Intellectual Property, and wish to memorialize the same herein.
AGREEMENT
Xx. Xxxxxxx and Nutraceutix therefore agree as follows:
1. Assignment. Xx. Xxxxxxx hereby sells, transfers, assigns and
delivers to Nutraceutix all of Xx. Xxxxxxx'x right, title and interest in and to
the Patent Application and 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. Assumption; Patent Prosecution Costs. Nutraceutix hereby assumes all
of all of Xx. Xxxxxxx'x right, title and interest in and to the Patent
Application and the Intellectual Property as of the Effective Date. After the
Effective Date, Nutraceutix shall pay all costs associated with prosecuting the
Patent Application and obtaining patents or other intellectual property rights
pursuant thereto.
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 Patent Application and 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 Xxxxx 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.
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4. Compensation.
4.1 Assignment Fee. As full compensation for the assignment
and assumption described in paragraphs 1 and 2 above and fulfillment of all of
Xx. Xxxxxxx'x obligations under this 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 paragraphs 1 and 2 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 patent is issued from 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 Patent Application and/or the
Intellectual Property (including but not limited to any patent issued from the
Patent Application) in Nutraceutix or its assignee.
7. Support. In the event a patent is issued from the Patent Application
(a "Patent"), Xx. Xxxxxxx shall furnish Nutraceutix such technical assistance
and support as is necessary to develop commercially viable products from the
Patent. The rights and obligations of the parties with respect to such support
shall be set forth in a separate support agreement to be prepared by
Nutraceutix. That agreement shall state that Nutraceutix shall pay Xx. Xxxxxxx
for such support (i) [*] % of all up front license fees received by Nutraceutix
from licensing of products incorporating the Patent rights and (ii) royalties
equal to [*] % of Nutraceutix's net sales from such products, after deducting
Nutraceutix's costs incurred in obtaining the Patent and developing the subject
product(s).
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.
*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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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.
11. Entire Agreement. This Agreement sets forth the entire agreement of
the parties with respect to assignment and assumption of the Patent Application
and 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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