<PAGE>
Exhibit 10.12
ASSIGNMENT, ASSUMPTION AND LICENSE AGREEMENT
ASSIGNMENT, ASSUMPTION AND LICENSE AGREEMENT dated as of October 7,
1999
(the "Agreement") by and between IMARX, LLC, an Arizona limited
liability
company ("Purchaser") and IMARX PHARMACEUTICAL CORP., an Arizona
corporation
("Seller"). Capitalized terms used but not otherwise defined herein
have the
meanings assigned to them in the Technology Agreements (as defined
below).
RECITALS
A.
Seller is engaged in the research and development of
pharmaceutical
products. Among other assets, Seller owns certain patents and
patent
applications in the field of ultrasound diagnostic imaging. Seller
has
previously assigned and/or licensed certain of its patents and
patent
applications to DuPont Pharmaceuticals Company ("DuPont") pursuant
to the
Assignment and License Agreement dated October 23, 1995 and the
License and
Marketing Agreement dated October 23, 1995, and amendments thereto
(hereinafter
collectively referred to as the "Technology Agreements").
B.
DuPont has made an offer to acquire the stock of Seller, provided
that
Seller divests itself of certain assets and liabilities. The
parties anticipate
that Seller will be merged into a subsidiary of DuPont (the
"Merger") pursuant
to an Agreement and Plan of Merger (the "Acquisition
Agreement").
C.
Purchaser will assume all liabilities of Seller other than
those
liabilities specifically retained by Seller and accepted by DuPont
in the
Acquisition Agreement (the "Assumed Liabilities"). Purchaser wishes
to acquire
certain assets of Seller (including the "Physical Assets and
Receivables" and
the "Category III Assets") identified on Exhibit A. Seller wishes
to license the
Category III Assets back from Purchaser for use within the field of
contrast
enhancement of diagnostic ultrasound imaging, but specifically
excluding
targeted and tissue specific diagnostic ultrasound products. This
field of use
is referred to herein as "CEDUI."
D.
Purchaser wishes to license from Seller certain assets to be
acquired by
DuPont in connection with the Acquisition Agreement (the "Category
II Assets")
identified on Exhibit B for use outside of CEDUI.
E.
Seller wishes to secure from Purchaser a right of first negotiation
with
respect to new products developed by Purchaser in the fields of
thrombus imaging
and sonothrombolysis.
F.
The parties wish to agree on certain procedures and
responsibilities for
addressing certain claims of infringement that may arise from
Seller's practice
of its technology.
G.
The execution and delivery of this Agreement by Purchaser is a
condition
to the obligations of Seller to consummate the transactions
contemplated by the
Acquisition Agreement.
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AGREEMENT
NOW,
THEREFORE, in consideration of the foregoing premises and of
the
agreements and covenants set forth in the Acquisition Agreement,
Purchaser and
Seller agree as follows:
1. Assignment of
Assets.
a.
Seller hereby
grants, conveys, sells, transfers and assigns to
Purchaser, free and clear of all debts, obligations, liens and
encumbrances (other than the Assumed Liabilities, as that term
is
defined below) all of the assets described on Exhibit A hereto;
provided, however, that the Category III Assets shall not include
any
Assets to be acquired by DuPont in the Merger.
b.
Seller hereby
assigns to Purchaser its rights under the Assigned
Patents, as that term is defined in the Technology Agreements,
which
rights are fully set forth and described in Section 3 of the
Assignment and License Agreement dated October 23, 1995.
Purchaser's
license rights granted therein will survive any termination,
cancellation, or modification of the Assignment and License
Agreement
by Seller.
2. Assignment of
Name. Effective as of the date of Closing pursuant to the
Acquisition Agreement, Seller hereby assigns the name "ImaRx
Pharmaceuticals" along with any variations thereof to Purchaser
along with
the
goodwill associated with the Category III Assets. Seller will
execute
any additional documents
necessary to transfer the name to Purchaser.
3. Assumption of
Liabilities. Seller hereby assigns to Purchaser, and
Purchaser hereby assumes and agrees to pay, perform and discharge,
and to
indemnify Seller against and hold it harmless from all of the
liabilities
and
obligations of Seller accrued or arising before the Closing (as
that
term
is described in the Acquisition Agreement), including without
limitation those Liabilities set forth on Exhibit D hereto (the
"Assumed
Liabilities"); provided, however, that the Assumed Liabilities
shall not
include any liabilities or obligations to be assumed by DuPont in
the
Merger as provided in the Acquisition Agreement.
4. License by
Seller. Seller hereby grants to Purchaser an exclusive,
transferable license to the Category II Assets, with right to
sublicense,
to
make, have made, import, use, and sell product derived from the
Category
II
Assets, worldwide, for every field of use outside of CEDUI. Seller
also
grants to Purchaser the right to file and prosecute divisional
applications
for
patent claims relating solely to fields of use outside of CEDUI
arising
from
patent applications included within Category II Assets, provided
that
Purchaser will be solely responsible for all costs and expenses
incurred in
connection with such filing and prosecution and further provided
that
Purchaser will have no right to practice, transfer, license, or
otherwise
exploit any patents issuing from such applications within CEDUI.
Seller
expressly retains all rights to the Category II Assets within
CEDUI,
including, without limitation, all rights relating to the
product
Definity(R), all related products (including, without limitation,
MRX-421A1
and
MRX-132), all back-up products, next-generation products, and
improvements thereto.
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5. License by
Purchaser. Upon assignment of the Category III Assets,
Purchaser
grants to Seller an exclusive, transferable license to the Category
III
Assets, with right to sublicense, to make, have made, import, use,
and sell
products derived from the Category III Assets, worldwide, within
CEDUI.
Purchaser expressly retains all rights to the Category III Assets
outside
CEDUI.
6. Seller's
Right of First Negotiation to Purchaser's Products. If
Purchaser
develops products or technology in the area of thrombus imaging
or
sonothrombolysis, (collectively, "New Product"), Purchaser will
offer to
Seller an exclusive license to the New Product for development
and
commercialization before offering the New Product to any third
party for
license. In connection therewith, Purchaser will provide Seller
with all
relevant information requested by Seller and reasonably available
to
Purchaser concerning the New Product. Seller will then have ninety
(90)
days
within which to make an offer for the New Product. If Seller
makes
such
an offer, the parties will negotiate promptly and in good faith
to
arrive at an agreement. If the parties fail to reach such an
agreement
within a reasonable period, Purchaser may assign, license, or
otherwise
transfer rights in the New Product to a third party, but only on
terms that
are,
on balance, not less favorable to Purchaser than the last
written
offer of Seller, as reasonably determined by Purchaser, or may
pursue
commercial development of the New Product on its own, at
Purchaser's
election.
7.
Representations and Warranties.
a.
By Seller.
Seller represents and warrants as follows:
(i) Seller is the sole
owner of the Category II Assets and Category
III Assets and, subject to any limited rights that the U.S.
government might have, has the legal authority to assign the
Category III Assets and to license the Category II Assets to
Purchaser and otherwise to enter into and perform all of its
obligations set forth herein;
(ii) all corporate and other formalities necessary to authorize
execution, delivery and performance of this Agreement (and all
other documents executed and delivered in connection herewith)
on
behalf of Seller have been taken; and
Seller makes no other warranties, express or implied, except as
expressly
set forth in this Agreement. In particular, and without limitation,
Seller makes
no implied or express warranties of noninfringement or validity or
any other
representation or warranty whatsoever regarding Patents or
Product.
b.
By Purchaser.
Purchaser represents and warrants as follows:
(i) Purchaser has the
legal authority to accept the assignment of
Category III Assets and the license to Category II Assets
granted
hereunder and otherwise to perform all of its obligations set
forth herein;
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(ii) all LLC and other formalities necessary to authorize
execution,
delivery and performance of this Agreement (and all other
documents executed and delivered in connection herewith) on
behalf of
Purchaser have been taken.
Purchaser makes no other warranties, express or implied, except as
expressly set
forth in this Agreement. In particular, and without limitation,
Purchaser makes
no implied or express warranties of noninfringement or validity or
any other
representation or warranty whatsoever regarding Patents or
Product.
8. Intellectual
Property Protection.
a.
Claim of
Infringement. If Purchaser discovers that a third party
claims that practice of the Category II Assets infringes a patent
or
other intellectual property right of such third party, then
Purchaser
will promptly so notify Seller and Seller shall have sole authority
to
defend against or settle any such claim of infringement, provided
that
no settlement will impair Purchaser's license granted by Section
4
above. If Seller discovers that a third party claims that practice
of
the Category III Assets infringes a patent or other
intellectual
property right of such third party, then Seller will promptly
so
notify Purchaser and Purchaser shall have sole authority to
defend
against or settle any such claim of infringement, provided that
no
settlement will impair Seller's license granted by Section 5
above.
b.
Infringement of
Patents. If either party becomes aware that a third
party is or may be infringing the Patents, it shall promptly so
notify
the other party. If the infringement related to Category II
Assets,
Seller shall have authority to pursue a claim for infringement.
If
Seller fails to resolve such infringement or institute an
infringement
action against the third party within one hundred twenty (120)
days
after Seller becomes aware of the infringement, Seller will assign
its
rights to pursue the infringement to Purchaser. If there is
infringement related to Category III Assets, Purchaser shall
have
authority to pursue a claim for infringement. If Purchaser fails
to
resolve such infringement or institute an infringement action
against
the third party within one hundred twenty (120) days after
Purchaser
becomes aware of the infringement, then Purchaser shall assign
its
rights to pursue the infringement to Seller.
9. Claim of
Infringement of Sonus Patents. Notwithstanding anything to the
contrary contained in Section 8 above, the provisions of this
Section 9
will
apply to and govern any claim asserted (whether by litigation
or
otherwise) by Sonus Pharmaceuticals, Inc. and/or its licensees or
assignees
(collectively, "Sonus") within five years of the date of this
Agreement
that
Seller's manufacture or sale of the product known as
Definity(R)
infringes a patent or other intellectual property right of Sonus (a
"Sonus
infringement claim"). If Seller receives a Sonus infringement
claim, it
will
promptly so notify Purchaser, and the parties will proceed as
follows:
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a.
Seller will keep
Purchaser informed of developments relevant to the
Sonus claim and will consider Purchaser's recommendations for
proceeding, although Seller will have the final authority;
b.
Seller will use
all commercially reasonable efforts to defeat or
resolve a Sonus claim, including but not limited to cross
licensing
its diagnostic technology to Sonus;
c.
Purchaser will
use all commercially reasonable efforts in cooperation
with Seller and in support of Seller's efforts, including the
commitment of all reasonable amounts of Dr. Evan Unger's time,
subject
to reimbursement by Seller of Purchaser's out of pocket costs
(which
will not include the value of Dr. Unger's time);
d.
At Seller's
election, if these commercially reasonable efforts fail to
resolve the Sonus claim and Seller believes it is at substantial
risk
of losing the ability to manufacture or sell Definity(R) in a
commercially significant geographic market, Purchaser will grant
to
Seller a transferable covenant not to sue Sonus for infringement
of
Purchaser's Category III assets to the extent necessary to allow
Sonus
to manufacture and sell its therapeutic products, provided that
Seller
receives a reciprocal covenant from Sonus, which Seller will
then
transfer to Purchaser;
e.
The covenant
referenced in Paragraph 9.d above will be drawn as
narrowly as possible to allow Sonus to manufacture and sell
Sonus's
therapeutic products, and will not be construed as a license to
allow
Sonus to manufacture or sell products developed by Purchaser or
to
grant Sonus and rights in any safety or efficacy data developed
by
Purchaser relating to those products; and
f.
If Seller
directs Purchaser to provide a covenant pursuant to
Paragraph
9.d, Seller will pay Purchaser the sum of $1.5 million in
partial compensation for Purchaser's delivery of the covenant.
10.
Indemnification.
a.
Seller shall
indemnify, defend, and hold Purchaser harmless from any
and all claims,
demands, lawsuits, and associated costs and expenses,
including reasonable attorneys' fees and cost of settlement,
arising
out of Seller's manufacture, promotion, marketing, and sale of
products derived from or based on Category III Assets;
provided,
however, that Seller shall not be obligated to indemnify, defend,
and
hold Purchaser harmless where the claim, demand, lawsuit, and
associated costs and expenses, including reasonable attorneys'
fees
and cost of settlement arises out of the breach of this Agreement
by
Purchaser and further provided that Purchaser promptly notifies
Seller
upon becoming aware of any such claims. Seller shall have the right
to
conduct the defense of any such claim but if Seller fails after
reasonable notice from Purchaser to conduct such defense,
Purchaser
shall have the right to do so and Seller will reimburse
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Purchaser for all reasonable costs and expenses of defending
the
action, including attorneys' fees and costs of settlement.
b.
Purchaser shall
indemnify, defend, and hold Seller harmless from any
and all claims, demands, lawsuits, and associated costs and
expenses,
including reasonable attorneys' fees and cost of settlement,
arising
out of Purchaser's manufacture, promotion, marketing, and sale
of
products derived from or based on Category II Assets; provided
however, that Purchaser shall not be obligated to indemnify,
defend,
and hold Seller harmless where the claim, demand, lawsuit, and
associated costs and expenses, including reasonable attorneys'
fees
and cost of settlement arises out of the breach of this Agreement
by
Seller and further provided that Seller promptly notifies
Purchaser
upon becoming aware of any such claims. Purchaser shall have the
right
to conduct the
defense of any such claim but if Purchaser fails after
reasonable notice from Seller to conduct such defense, Seller
shall
have the right to do so and Purchaser will reimburse Seller for
all
reasonable costs and expenses of defending the action,
including
attorneys' fees and costs of settlement.
11. Rights to
Improvements in Product or Manufacturing. All assignments and
licenses hereunder include such rights to improvements as Seller
has
received or is entitled to receive from DuPont pursuant to Section
5 of the
Assignment and License Agreement dated October 23, 1995, through
the date
of
the Closing of the Acquisition Agreement, to the extent that
such
improvements apply outside the field of CEDUI.
12. Maintenance and
Prosecution of Patents
a.
Seller may elect
not to prosecute or maintain a patent within the
Category II Assets if it reasonably concludes that such patent has
no
significant value to Seller within the field of CEDUI. In that
event,
it will so notify Purchaser. Purchaser will, within ninety (90)
days
of receipt of such notice, notify Seller whether it wishes to
acquire
the patent from Seller. During this ninety (90) day period,
Seller
will take any action necessary to continue to prosecute or
maintain
the patent. Purchaser will reimburse Seller for its
out-of-pocket
costs incurred in such actions. Upon notice by Purchaser that
it
wishes to acquire the patent from Seller, Seller will assign
the
patent to Purchaser, transfer any files or other documents relating
to
the patent to Purchaser, and Purchaser will thereafter be
solely
responsible for prosecution or maintenance of the Patent,
including
all costs associated therewith. Seller agrees to execute any
additional documents necessary to perfect Purchaser's rights to
the
patent. Purchaser agrees that, upon transfer of the patent to
Purchaser, it will not assert any claim related to such paten
against
Seller. If no notice is received by Seller within the ninety
(90)
period, Seller will abandon the patent.
b.
Purchaser may
elect not to prosecute or maintain a patent within the
Category III Assets if it reasonably concludes that such patent has
no
significant value to Purchaser outside the field of CEDUI. In
that
event, it will so notify Seller. Seller will, within ninety (90)
days
of receipt of such notice, notify Purchaser
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whether wishes to acquire the patent from Purchaser. During
this
ninety (90) day period, Purchaser will take any action necessary
to
continue to prosecute or maintain the patent. Seller will
reimburse
Purchaser for its out-of-pocket costs incurred in such actions.
Upon
notice by Seller that it wishes to acquire the patent from
Purchaser,
Purchaser will assign the patent to Seller, transfer any files
or
other documents relating to the patent to Seller, and Seller
will
thereafter be solely responsible for prosecution or maintenance of
the
Patent,
including all costs associate therewith. Purchaser agrees to
execute any additional documents necessary to perfect Seller's
rights
to the patent. Seller agrees that, upon transfer of the patent
to
Seller, it will not assert any claim related to such patent
against
Purchaser. If no notice is received by Purchaser within the
ninety
(90) period, Purchaser will abandon the patent.
H.
Further Assurances. At any time, the parties shall execute such
additional instruments, provide such additional information and
take such
additional action as may be reasonably requested by the other party
to confirm
or perfect title to any property transferred hereunder or otherwise
to carry out
the intent and purposes of this Agreement.
I.
Arizona Law. The laws of the State of Arizona, without regard to
its
conflict of laws principles, shall govern the validity of this
Agreement, the
construction of its terms, and the interpretation of the rights and
duties of
the Managers and Members. Pima County, Arizona shall be the
exclusive proper
venue for any action brought under this Agreement.
J.
Counterparts. This Agreement may be executed in two or more
counterparts, and by the different parties hereto in separate
counterparts, each
of which when executed shall be deemed to be an original, but all
of which taken
together shall constitute one and the same instrument.
K.
Construction. Nothing expressed or implied in this Agreement is
intended
to confer upon any person, other than Purchaser and Seller and
their respective
successors and assigns, any rights, remedies, obligations or
liabilities under
or by reason of this Agreement.
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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.
IMARX PHARMACEUTICAL CORP.,
IMARX LLC,
an Arizona corporation
an Arizona limited liability company
By: /s/ Evan Unger
By: /s/ Evan Unger
---------------------------------
------------------------------------
Dr. Evan
Unger
Dr. Evan Unger
Its: President
Its: Manager
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EXHIBIT A
PHYSICAL ASSETS AND RECEIVABLES AND CATEGORY III ASSETS
PHYSICAL ASSETS AND RECEIVABLES
1. Cash in the
amount of $104,012.
2. All of the
right, title and interest of ImaRx in that tangible personal
property set forth on Schedule 1, attached hereto and incorporated
by
reference herein.
3. All of the
inventories of ImaRx.
4. All accounts
receivable of ImaRx as of the effective date of the Merger,
including trade accounts receivable.
5. All amounts
receivable from the National Institutes of Health pursuant to a
grant awarded to ImaRx dated July 29, 1999.
6. All amounts
receivable from employees of ImaRx as of the effective date of
the
Merger.
7. All rights
and privileges in and amounts receivable by ImaRx under that
certain agreement with BRAACO International and BRAACO Diagnostic
Inc.
dated December 4, 1998.
CATEGORY III
ASSETS
1. UNGR 0350
United States - Pending - 08/942,862 (UNGR 1227)
2. UNGR 0480
United States - Pending - 08/741,598 (UNGR 0991), 09/052,075 (UNGR
1283)
3. UNGR 0570
United States - Pending - 08/947,305 (UNGR 1223)
4. UNGR 1172
family
United States - Pending - USSN 08/929,847 - first Office Action
Europe - Pending - UNGR 1501 (States: AT, BE, DK, FR, DE, GB, GR,
IE, IT,
LU,
NE, ES, SE, CH)
5. UNGR 1269
family
United States - Pending - USSN 08/982,829 - first Office Action
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EXHIBIT B
CATEGORY II ASSETS
1. UNGR 0019
family
United States - Issued - 5,088,499 (UNGR-0019), 5,230,882
(UNGR-0095),
5,352,435 (UNGR-0279), 5,456,901 (UNGR-0574)
United States - Allowed - 08/665,719 (UNGR-0728), 08/888,426
(UNGR-1190)
Europe - UNGR 0029, 0628 (States: AT, BE, DK, FR, DE, GB, GR, IT,
LU, NE,
ES,
SE, CH/LU)
Japan - UNGR 0043
2. UNGR 0046
United States - Issued - 5,205,290 (UNGR-0046), 5,281,408
(UNGR-0295),
5,456,900 (UNGR-0346), 5,547,656 (UNGR-0664), 5,527,521
(UNGR-0665)
United States - Pending - 08/878,233 (UNGR-1174)
United States - Abandoned - UNGR 0875
Europe - UNGR 0099 (States: AT, BE, DK, FR, DE, GB, GR, IT, LU, MO,
NE, ES,
SE,
CH/LU)
Japan - UNGR 0114
3. UNGR 0048
United States - Issued - 5,305,757 (UNGR-0299), 5,348,016
(UNGR-0319)
United States - Pending - 09/000,522
4. UNGR 0298
United States - Issued - 5,469,854 (UNGR-0298), 5,715,824
(UNGR-0686)
United States - Allowed - 08/758,179 (UNGR-0988)
Europe - UNGR 0448 (States: AT, BE, DK, FR, DE, GB, GR, IT, LU, NE,
ES, SE,
CH/LU)
Japan - UNGR 0466
5. UNGR 0348
United States - Issued - 5,542,935 (UNGR-0348)
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United States - Pending - 08/485,998 (UNGR-0692)
Europe - UNGR 0487 (States: AT, BE, DK, FR, DE, GB, GR, IT, LU, NE,
ES, SE,
CH)
Japan - UNGR 0504
6. UNGR 0350
United States - Issued - 5,585,112 (UNGR-0350), 5,853,752
(UNGR-0685)
Europe - UNGR 0509 (States: AT, BE, DK, FR, DE, GB, GR, IE, IT, LU,
NE, ES,
SE, CH)
Japan - UNGR 0526
7. UNGR 0480
United States - Issued - 5,5773,024 (UNGR-0480)
Europe - UNGR 0697 (States: AT, BE, DK, FR, DE, GB, GR, IE, IT, LU,
NE, ES,
SE,
CH)
Japan - UNGR 0714
8. UNGR 0570
United States - Issued - 5,705,187 (UNGR-0570)
Europe - UNGR 0889 (States: AT, BE, DK, FI, FR, DE, GB, GR, IE, IT,
LU, MO,
NE,
PT, ES, SE, CH)
Japan - UNGR 0906
9. UNGR 0571
United States - Issued - 5,656,211 (UNGR-0571)
United States - Pending - 08/833,489 (UNGR-1035)
Europe - UNGR 0815 (States: AT, BE, DK, FI, FR, DE, GB, GR, IE, IT,
LU, MO,
NE,
PT, ES, SE, CH)
Japan - UNGR 0832
10. UNGR 0725
United States - Allowed - 08/666,129 (UNGR-0725)
Europe - UNGR 1009 (States: FR, GB, DE, NE)
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Japan - UNGR 1027
11. UNGR 0733
United States - Issued - 5,776,429 (UNGR-0733)
United States - Pending - 09/026,326 (UNGR 1286)
Europe - UNGR 1046 (States: AT, BE, DK, FI, FR, DE, GB, GR, IE, IT,
LU, MO,
NE,
PT, ES, SE, CH)
Japan - UNGR 1064
12. UNGR 1550
family
United States - Pending - USSN 09/243,640 - awaiting first Office
Action;
not
eligible for foreign filing until 2/3/2000
13. UNGR 0992 and 1030
- Interference applications
14. UNGR 1032
United States - Pending - UNGR 1032, 1192
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EXHIBIT C
ASSUMED LIABILITIES
1. Promissory
Note Payable to the order of Thomas Fritz dated September 30,
1998.
2. Promissory
Note Payable to Bank One, N.A. dated April 10, 1999.
3. Master
Finance Lease Payable to Zions Credit Corporation dated January
21,
1999.
4. All accounts
payable by ImaRx as of the effective date of the Merger.
5. All accrued
salaries, bonuses, and deferred employee compensation payable
by
ImaRx as of the effective date of the Merger.
6. All income,
sales, transaction privilege, use, excise, payroll and other
taxes payable by ImaRx to any government, governmental agency,
or
subdivision thereof, as of the effective date of the Merger.
7. All other
liabilities of ImaRx as of the date of the Merger, other than
those liabilities specifically retained by ImaRx and accepted by du
Pont in
the
Acquisition Agreement, as set forth in Section 3.11 of the
Disclosure
Schedule to the Agreement and Plan of Merger.
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AMENDMENT TO ASSIGNMENT, ASSUMPTION AND LICENSE AGREEMENT
THIS
AMENDMENT to the Assignment, Assumption and License Agreement dated
as
of October 7, 1999 (the "Agreement") by and between IMARX, LLC, an
Arizona
limited liability company ("Purchaser") and IMARX PHARMACEUTICAL
CORP., an
Arizona corporation ("Seller") is entered into and effective this
___ day of
July, 2000 by and between IMARX THERAPEUTICS, INC., successor in
interest to
Purchaser ("ImaRx") and DuPont Contrast Imaging, Inc. ("DuPont"),
successor in
interest to Seller. Capitalized terms used but not otherwise
defined herein have
the meanings assigned to them in the Agreement.
RECITALS
A.
Purchaser and Seller entered into the Agreement as of October 7,
1999.
Thereafter, Seller was merged into DuPont.
B.
Exhibit A and Exhibit B to the Agreement were incomplete. The
parties
now wish to correct this error by amending Exhibit A and Exhibit B
to conform to
the parties' original understanding.
NOW,
THEREFORE, in consideration of the foregoing premises and of
the
agreements and covenants set forth in the Agreement, the parties
agree as
follows:
AGREEMENT
1. Assignment of
Assets. Attached hereto is Exhibit E. Exhibit E sets forth
additional Category III Assets that were intended to be and hereby
are
included in Exhibit A, effective as of the date of the Agreement.
DuPont
will
execute any other or further documents reasonably deemed necessary
to
reflect the transfer of the assets set forth in Exhibit E to ImaRx
in
accordance with the terms of the Agreement.
2. License of
Assets. Attached hereto is Exhibit F. Exhibit F sets forth
additional Category II Assets that were intended to be and hereby
are
included in Exhibit B, effective as of the date of the Agreement.
The
Assets set forth in Exhibit F are subject to the license terms of
Paragraph
4 of
the Agreement, effective as of the date of the Agreement.
3. No Warranty.
DuPont believes that it has not assigned, conveyed, licensed
or
otherwise transferred any interest in any asset listed on Exhibit E
to
any
other person or entity. DuPont believes that it has not licensed
or
otherwise transferred any interest in any asset listed on Exhibit F
that
would conflict with or be contrary to the exclusive license to
ImaRx as
provided in Paragraph 4 of the Agreement. Notwithstanding anything
to the
contrary, DuPont makes no warranty, express or implied, regarding
the
assets listed on Exhibit E and specifically disclaims any
responsibility
for
any action or inaction with respect to the assets, including action
or
inaction with regard to the prosecution of any patents or any
other
protection of any intellectual property embodied or reflected in
Exhibit E
and
Exhibit F during the period from the date of the Agreement to the
date
of
this Amendment.
-1-
<PAGE>
4. Continued
Effect. Except as amended hereby, the Agreement remains in full
force and effect.
IN
WITNESS WHEREOF, the parties hereto have caused this Agreement to
be
duly executed as of __________ the day and year first above
written.
DUPONT CONTRAST IMAGING INC,
IMARX THERAPEUTICS, INC.,
a Delaware general partnership
an Arizona corporation
By: /s/ Nicholas L. Teti
By: /s/ Evan C. Unger
---------------------------------
------------------------------------
Nicholas
L. Teti
Dr. Evan Unger
Its:
Its: President
--------------------------------
-2-
<PAGE>
EXHIBIT E
{ISSUED and PENDING US Patents followed by Foreign Files (if
any)}
LUMENHANCE PATENT FAMILIES
WWKMN Docket Series (UNGR 0018 and UNGR 0026)
US 5,143,716; US 5,320,826; US 5,449,508; US 5,525,326; US
5,885,549
US 5,368,840; US 5,658,550; US 5,624,661; US 5,645,816; US
5,681,542
US 5,985,244
Other files: USSN
07/507,125 (abandoned)
USSN 09/198,202 (abandoned)
FOREIGN -
Corresponding to WWKMN Docket Series (UNGR-0018 and UNGR-0026)
Corresponding to UNGR-0018
UNGR-0050 PCT App. No. PCT/US91/02429
UNGR-0051 EPO Application Number 91908011.9;
now EP Patent
No. 0526503
UNGR-0052 Austria
UNGR-0053 Belgium
UNGR-0054 Denmark
UNGR-0055 France
UNGR-0056 United Kingdom
UNGR-0057 Germany
UNGR-0058 Greece
UNGR-0059 Italy
UNGR-0060 Luxembourg
UNGR-0061 Netherlands
UNGR-0062 Spain
UNGR-0063 Sweden
UNGR-0064 Switzerland
UNGR-0065 Japan App. No. 507878/1991
UNGR-0321 PCT App. No. PCT/US93/09083
UNGR-0322 Australia App. No. 51387/93; now Australia Serial No.
671862
UNGR-0322 Australia App. No. 51387/93;
now Australia
Serial No. 671862
UNGR-0323 Canada App. No. 2,146,986
UNGR-0324 EPO App No. 93922369.9
UNGR-0325 Austria
UNGR-0326 Belgium
UNGR-0327 Denmark
-1-
<PAGE>
UNGR-0328 France
UNGR-0329 Germany
UNGR-0330 Great Britain
UNGR-0331 Greece
UNGR-0332 Ireland
UNGR-0333 Italy
UNGR-0334 Luxembourg
UNGR-0335 Monaco
UNGR-0336 Netherlands
UNGR-0337 Portugal
UNGR-0338 Spain
UNGR-0339 Sweden
UNGR-0340 Switzerland
UNGR-0341 Japan App. No. 510017/1994
UNGR-0670 EPO App. No. No. 95111117.8;
now European
Patent No. 0693288
UNGR-0671 Austria - closed
UNGR-0672 Belgium - closed
UNGR-0673 Denmark - closed
UNGR-0674 France
UNGR-0675 Great Britain
UNGR-0676 Germany
UNGR-0677 Greece - closed
UNGR-0678 Italy
UNGR-0679 Luxembourg - closed
UNGR-0680 Nether1ands
UNGR-0681 Spain
UNGR-0682 Sweden - closed
UNGR-0683 Switzerland
UNGR-0982 Australia App. No. 70480/96;
now Australia
Serial No. 687690
Corresponding to UNGR-0026
UNGR-0194 PCT App. No. PCT/US92/03707
UNGR-0195 Australia App. No. 19005/92;
now Australian
Serial No. 674285
UNGR-0196 Canada App. No. 2,133,746
UNGR-0197 EPO App. No. 92911636.6
UNGR-0198 Austria
UNGR-0199 Belgium
UNGR-0200 Denmark
UNGR-0201 France
UNGR-0202 Germany
UNGR-0203 Great Britain
-2-
<PAGE>
UNGR-0204 Greece
UNGR-0205 Italy
UNGR-0206 Luxembourg
UNGR-0207 Monaco
UNGR-0208 Netherlands
UNGR-0209 Spain
UNGR-0210 Sweden
UNGR-0211 Switzerland
UNGR-0212 Japan App. No. 510977/92
SONORX PATENT FAMILY
WWKMN Docket Series (UNGR 0020)
US 5,420,176; US 5,639,442; US 5,714,528; US 5,714,529; US
5,948,387
US 6,024,939
Pending:
USSN 08/574,373
USSN 08/574,371
Other files: USSN
07/532,213 (abandoned)
USSN 07/708,731 (abandoned)
USSN 07/969,426 (abandoned)
FOREIGN -
Corresponding to WWKMN Docket Series (UNGR-0020)
UNGR-0070 PCT App. No. PCT/US91/03850
UNGR-0071 Canada App. No. 2,081,560 (abandoned)
UNGR-0072 Australia App. No. 80858/91;
now Australia
Serial No. 650466 (abandoned)
UNGR-0073 EPO App. No. 91910712.8;
now European
Patent No. 0531421 (abandoned)
UNGR-0074 Austria (abandoned)
UNGR-0075 Belgium (abandoned)
UNGR-0076 Denmark (abandoned)
UNGR-0077 France (abandoned)
UNGR-0078 Germany (abandoned)
UNGR-0079 United Kingdom (abandoned)
UNGR-0080 Greece (abandoned)
UNGR-0081 Italy (abandoned)
UNGR-0082 Luxembourg (abandoned)
UNGR-0083 Netherlands (abandoned)
-3-
<PAGE>
UNGR-0084 Spain (abandoned)
UNGR-0085 Sweden (abandoned)
UNGR-0086 Switzerland (abandoned)
UNGR-0087 Japan App. No. 510485/91
UNGR-0482 Australia App. No. 63196/94;
now Australia
Serial No. 671538 (abandoned)
UNGR-0861 EPO App. No. 96104842.8 (abandoned)
UNGR-0862 Austria (abandoned)
UNGR-0863 Belgium (abandoned)
UNGR-0864 Denmark (abandoned)
UNGR-0865 France (abandoned)
UNGR-0866 Great Britain (abandoned)
UNGR-0867 Germany (abandoned)
UNGR-0868 Greece (abandoned)
UNGR-0869 Italy (abandoned)
UNGR-0870 Luxembourg (abandoned)
UNGR-0871 Netherlands (abandoned)
UNGR-0872 Spain (abandoned)
UNGR-0873 Sweden (abandoned)
UNGR-0874 Switzerland (abandoned)
UNGR-0915 Australia App. No. 48195/96;
now Australia
Serial No. 686047 (abandoned)
THERAPEUTIC AEROSOMES FAMILIES
WWKMN Docket Series UNGR 0023, UNGR 0067 and UNGR 0068)
US 5,149,319
US 5,209,720
US 5,580,575; US 5,770,222
Pending:
USSN 09/060,396
Other files: USSN
07/716,899 (abandoned)
FOREIGN -
Corresponding to WWKMN Docket Series (UNGR-0023, UNGR-0067 and
UNGR-0068)
Corresponding to UNGR-0023*
UNGR-0175 - PCT App. No. PCT/US92/03705
UNGR-0176 Australia App. No. 19926/92;
now Australia
Serial No. 678341 (abandoned)
UNGR-0177 Canada App. No. 2,118,016 (abandoned)
-4-
<PAGE>
UNGR-0178 EPO App. No. 92912400.6
UNGR-0179 Austria
UNGR-0180 Belgium
UNGR-0181 Denmark
UNGR-0182 France
UNGR-0183 Germany
UNGR-0184 Great Britain
UNGR-0185 Greece
UNGR-0186 Italy
UNGR-0187 Luxembourg
UNGR-0188 Monaco
UNGR-0189 Netherlands
UNGR-0190 Spain
UNGR-0191 Sweden
UNGR-0192 Switzerland
UNGR-0193 Japan App. No. 519204/93
UNGR-1525 Australia App. No. 91369/98 (abandoned)
*
NOTE: The following foreign applications, although corresponding to
the
U.S.
patent application UNGR-0023, were not listed since they
contain
subject
matter which you have indicated was transferred to DuPont:
UNGR-1034, Australia App. No. 12212/97; now Australia Serial No.
694973;
UNGR-1155 Canada App. No. 2,211,517;
UNGR-1156 EPO App. No. 97202273.5 (and its corresponding country
files
UNGR-1157 to UNGR-1170);
UNGR-1171 Japan App. No. 184624/97.
Corresponding to
UNGR-0067
UNGR-0135 PCT App. No. PCT/US92/02610
UNGR-0136 Australia App. No. 21496/92;
now Australia
Serial No. 661701 (abandoned)
UNGR-0137 Canada App. No. 2,110,487 (abandoned)
UNGR-0138 EPO App. No. 92912455.0;
now European
Patent No. 0660687
UNGR-0139 Austria;
now Austria
Patent No. AT E 172625 T1 (abandoned)
UNGR-0140 Belgium (abandoned)
UNGR-0141 Denmark (abandoned)
UNGR-0142 France (abandoned)
UNGR-0143 Germany;
-5-
<PAGE>
now Germany
Patent No. DE 692 27 468 T 2
UNGR-0144 Great Britain
UNGR-0145 Greece;
now Greece
Patent No. 3028600 (abandoned)
UNGR-0146 Italy
UNGR-0147 Luxembourg (abandoned)
UNGR-0148 Monaco (abandoned)
UNGR-0149 Netherlands (abandoned)
UNGR-0150 Spain (abandoned)
UNGR-0151 Sweden (abandoned)
UNGR-0152 Switzerland
UNGR-0153 Japan App. No. 500845/93;
now Japan Patent
No. 3053217
Corresponding to UNGR-0068
UNGR-0154 PCT App. No. PCT/US92/02614
UNGR-0155 Australia App. No. 20238/92;
now Australia
Serial No. 667672
UNGR-0156 Canada App. No. 2,110,490
UNGR-0157 EPO App. No. 92912662.1
UNGR-0158 Austria
UNGR-0159 Belgium
UNGR-0160 Denmark
UNGR-0161 France
UNGR-0162 Germany
UNGR-0163 Great Britain
UNGR-0164 Greece
UNGR-0165 Italy
UNGR-0166 Luxembourg
UNGR-0167 Monaco
UNGR-0168 Netherlands
UNGR-0169 Spain
UNGR-0170 Sweden
UNGR-0171 Switzerland
UNGR-0172 Japan App. No. 500846/93
UNGR-0423 PCT App. No. PCT/US94/05620
UNGR-0424 Australia App. No. 70948/94;
now Australia
Serial No. AU 684088 (abandoned)
UNGR-0425 Canada App. No. 2,164,843 (abandoned)
UNGR-0426 China App. 94192404.1 (abandoned)
UNGR-0427 EPO App. No. 94920019.0
UNGR-0428 Austria
UNGR-0429 Belgium
-6-
<PAGE>
UNGR-0430 Denmark
UNGR-0431 France
UNGR-0432 Germany
UNGR-0433 Great Britain
UNGR-0434 Greece
UNGR-0435 Ireland
UNGR-0436 Italy
UNGR-0437 Luxembourg
UNGR-0438 Monaco
UNGR-0439 Netherlands
UNGR-0440 Portugal
UNGR-0441 Spain
UNGR-0442 Sweden
UNGR-0443 Switzerland
UNGR-0444 Japan App. No. 501807/95
BLOCK MRI COPOLYMERS FAMILY
WWKMN Docket Series (UNGR 0045)
US 5,385,719; US 5,458,127; US 5,517,993
Other files: USSN
07/765,921 (abandoned)
FOREIGN -
Corresponding to WWKMN Docket Series (UNGR-0045)
UNGR-0235 PCT App. No. PCT/US92/08205
UNGR-0236 Australia App. No. 27524/92;
now Australia
Serial No. 661344
UNGR-0237 Canada App. No. 2,116,357 (abandoned)
UNGR-0238 EPO App. No. 92921259.5 (abandoned)
UNGR-0239 Austria (abandoned)
UNGR-0240 Belgium (abandoned)
UNGR-0241 Denmark (abandoned)
UNGR-0242 France (abandoned)
UNGR-0243 Germany (abandoned)
UNGR-0244 Great Britain (abandoned)
UNGR-0245 Greece (abandoned)
UNGR-0246 Ireland (abandoned)
UNGR-0247 Italy (abandoned)
UNGR-0248 Luxembourg (abandoned)
UNGR-0249 Monaco (abandoned)
-7-
<PAGE>
UNGR-0250 Netherlands (abandoned)
UNGR-0251 Spain (abandoned)
UNGR-0252 Sweden (abandoned)
UNGR-0253 Switzerland (abandoned)
UNGR-0254 Japan App. No. 506396/93
MEMSOMES FAMILY
WWKMN Docket Series (UNGR 0066)
US 5,312,617; US 5,466,438; US 5,624,662 US 5,762,910; US
6,010,682
Other files: USSN 07/704,542 (abandoned)
FOREIGN -
Corresponding to WWKMN Docket Series (UNGR-0066)
UNGR-0214 PCT App. No. PCT/US92/04310
UNGR-0215 Australia App. No. 19987/92;
now Australia
Serial No. 660033 (abandoned)
UNGR-0216 Canada App. No. 2,102,605 (abandoned)
UNGR-0217 EPO App. No. 92912134.1 (abandoned)
UNGR-0218 Austria (abandoned)
UNGR-0219 Belgium (abandoned)
UNGR-0220 Denmark (abandoned)
UNGR-0221 France (abandoned)
UNGR-0222 Great Britain (abandoned)
UNGR-0223 Germany (abandoned)
UNGR-0224 Greece (abandoned)
UNGR-0225 Italy (abandoned)
UNGR-0226 Luxembourg (abandoned)
UNGR-0227 Monaco (abandoned)
UNGR-0228 Netherlands (abandoned)
UNGR-0229 Spain (abandoned)
UNGR-0230 Sweden (abandoned)
UNGR-0231 Switzerland (abandoned)
UNGR-0232 Japan App. No. 500308/93
UNGR-0726 Australia App. No. 30536/95;
now Australia
Serial No. 678724 (abandoned)
NANOGELS
-8-
<PAGE>
WWKMN Docket Series (UNGR 0089)
US 5,358,702; US 5,976,500
Other files: USSN
07/794,437 (abandoned)
FOREIGN -
Corresponding to WWKMN Docket Series (UNGR-0089)
UNGR-0259 PCT App. No. PCT/US92/08948
UNGR-0260 Australia App. No. 28940/92;
now Australia
Serial No. 667491(abandoned)
UNGR-0261 Canada App. No. 2,121,681 (abandoned)
UNGR-0262 EPO App. No. 92922870.8 (abandoned)
UNGR-0263 Austria (abandoned)
UNGR-0264 Belgium (abandoned)
UNGR-0265 Denmark (abandoned)
UNGR-0266 France (abandoned)
UNGR-0267 Great Britain (abandoned)
UNGR-0268 Germany (abandoned)
UNGR-0269 Greece (abandoned)
UNGR-0270 Ireland (abandoned)
UNGR-0271 Italy (abandoned)
UNGR-0272 Luxembourg (abandoned)
UNGR-0273 Monaco (abandoned)
UNGR-0274 Netherlands (abandoned)
UNGR-0275 Spain (abandoned)
UNGR-0276 Sweden (abandoned)
UNGR-0277 Switzerland (abandoned)
UNGR-0278 Japan App. No. 509251/93 (abandoned)
AEROCREME
WWKMN Docket Series (UNGR 0343)
US 5,733,572
Pending:
USSN
08/909,157
Other files: USSN
08/159,674 (abandoned)
FOREIGN -
-9-
<PAGE>
Corresponding to WWKMN Docket Series (UNGR-0343)
UNGR-0547 PCT App. No. PCT/US94/13817
UNGR-0548 Australia App. No. 21850/95 (abandoned)
UNGR-0549 Canada App. No. 2,177,713
UNGR-0550 China App. No. 94194349.6
UNGR-0551 EPO App. No. 95908414.6
UNGR-0552 Austria
UNGR-0553 Belgium
UNGR-0554 Denmark
UNGR-0556 Great Britain
UNGR-0557 Germany
UNGR-0558 Greece
UNGR-0559 Ireland
UNGR-0560 Italy
UNGR-0561 Luxembourg
UNGR-0562 Monaco
UNGR-0563 Netherlands
UNGR-0564 Portugal
UNGR-0565 Spain
UNGR-0566 Sweden
UNGR-0567 Switzerland
UNGR-0568 Japan App. No. 515763/95
UNGR-1549 Australia App. No. 10043/99 (abandoned)
MRI HYBRIDS
(Prosecuted by A. Durando, Esq.)
US 5,407,657*
* Also include foreign equivalents Australia - AU 9524601 and
Europe - EPO
822835
SUNSCREEN
WWKMN Docket Series (UNGR 0469)
US 5,824,312
Other files: USSN
08/209,531 (abandoned)
-10-
<PAGE>
FOREIGN -
WWKMN Docket Series (UNGR-0469)
No foreign filing corresponding to UNGR-0469
BIOPSY DEVICE
WWKMN Docket Series WNGR 0540)
US 5,628,327; US 6,O 13,035
FOREIGN -
Corresponding to WWKMN Docket Series (UNGR-0540)
No foreign filing corresponding to UNGR-0540
-11-
<PAGE>
TRANSDUCERDRUG DELIVERY
WWKMN Docket Series fUNGR 06221
US 5,558,092
FOREIGN -
Corresponding to WWKMN Docket Series (UNGR-0622)
UNGR-0920 PCT App. NO. PCT/US96/07621
UNGR-0921 Australia App. No. 58756/96;
now Australia
Serial No. 711788
UNGR-0922 Canada App. No. 2,220,756 (abandoned)
UNGR-0923 China App. No. 96194441.2 (abandoned)
UNGR-0924 EPO App. NO. 96920466.8
UNGR-0925 Austria
UNGR-0926 Belgium
UNGR-0927 Denmark
UNGR-0928 Finland
UNGR-0929 France
UNGR-0930 Great Britain
UNGR-0931 Germany
UNGR-0932 Greece
UNGR-0933 Ireland
UNGR-0934 Italy
UNGR-0935 Luxembourg
UNGR-0936 Monaco
UNGR-0937 Netherlands
UNGR-0938 Portugal
UNGR-0939 Spain
UNGR-0940 Sweden
-12-
<PAGE>
UNGR-0941 Switzerland
UNGR-0942 Japan App. No. 500706/97
UNGR-1581 Australia App. No. 44448/99
TOMORX
WWKMN Docket Series (UNGR 0477 and 0623)
US 5,736,121
US 5,874,062
Pending: USSN
081935,601
USSN 081968,776
Other files:
081247,656 (abandoned)
FOREIGN -
Corresponding to WWKMN Docket Series (UNGR-0477 and UNGR-0623)
Correspondinp to UNGR-0477
UNGR-0599 PCT App. NO. PCTRJS95106499
UNGR-0600 Australia App. No. 26013195;
now Australia Serial
No. 700799; now Australia Patent No. AU-B-26013195
(abandoned)
UNGR-0601 Canada App. No. 2,188,557 (abandoned)
UNGR-0602 China App. No. 95 193160.1 (abandoned)
UNGR-0603 EPO App. No. 95920616.0 (aandoned)
UNGR-0604 Austria (abandoned)
UNGR-0605 Belgium (abandoned)
UNGR-0606 Denmark (abandoned)
UNGR-0607 France (abandoned)
UNGR-0608 Great Britain (abandoned)
UNGR-0609 Germany (abandoned)
UNGR-0610 Greece (abandoned)
UNGR-0611 Ireland(abandoned)
UNGR-0612 Italy (abandoned)
UNGR-0613 Luxembourg (abandoned)
