EXHIBIT 4.1
INTELLECTUAL PROPERTY ASSIGNMENT
AGREEMENT
This Intellectual
Property Assignment Agreement (the “Agreement”) is
entered into on this 16 day of August, 2004, by and between
eXegenics, Inc., a Delaware corporation (“Assignor”),
and NLC Pharma, Inc., a Delaware corporation
(“Assignee”).
WHEREAS, Assignor
declares that, to the best of its knowledge, it is the sole owner
of the QCT technology and that there are no rights of any third
party in the QCT technology (as defined below);
NOW, THEREFORE, in
consideration of the mutual promises and representations of the
parties, the parties agree as follows
AGREEMENT
1. Technology.
Assignor has filed certain applications regarding certain
technology with the United States Patent and Trademark Office
(“USPTO”) which it believes is proprietary. A
description of the patents and their serial numbers are as
follows:
(a) Modulators of
Cysteine Protease; U.S. Serial- No. 09/555,421;
(b) Novel
Antiviral Compounds; U.S. Serial No. 09/202,359;
(c) Molecules
Derived From Mechanism/Based Drug Design; U.S. Serial No.
10/149,087;
(d) Cysteine
Protease Inhibitors; U.S. Social No. 10/467,105;
(e) Antimicrobial
Compounds Against Staphylococci, Mycobacteria, And Other Infectious
Agents; U.S. Provisional Applications No. 60/370,261 and No.
60/390,785;
(f) Antimicrobial
Compounds; U.S. Provisional Applications No. 60/390,551 and
No. 60/390,565;
(g) PCT
application no. WO 03/087127 A2
all of which are more
particularly described in Exhibit “A” attached hereto
and collectively referred to in this Agreement as the “QCT
technology.”
2. Assignment.
Subject to the terms of this Agreement, Assignor hereby irrevocably
assigns and transfers its entire right, title and interest in and
to the QCT technology, in the United States of America and all
foreign countries together with all common law rights related
thereto, all rights of renewal and extension, and the right to
recover damages and profits for past infringements thereof, and all
goodwill associated therewith, to Assignee. Such assignment shall
include all patent applications, research notebooks and archived
electronic files stored on any type of media or drives.
Simultaneously with signing this Agreement the Assignor shall sign
an assignment letter for the benefit
of the Assignee. The assignment
of the QCT technology with the USPTO shall be executed by Assignor
no later than fourteen (14) days as of the date of the
Agreement. Enhancements to the QCT technology shall be the property
of NLC Pharma Inc. Assignee shall be responsible for the payment of
any and all costs and fees associated with (i) the transfer of
the QCT technology form Assignor to Assignee; (ii) the
application for enhancements (if any) on the QCT technology; and
(iii) any other costs associated with QCT
technology.
3. No
Warranty. It is expressly understood and agreed by the parties that
Assignor makes no express or implied warranty regarding the QCT
technology including, but not limited to, its validity,
patentability, utility or commercial potential. Once this
assignment has been executed and filed with the USPTO, Assignor
shall have no further obligation regarding the QCT technology and
any patents pending. Assignee shall be solely responsible for
continuation of any patent prosecution and maintenance of any
patents granted, and any and all costs related thereto. Assignor
makes no representation or warranty that anything made, used, sold,
or otherwise disposed of by Assignee utilizing the QCT technology
will be free from infringement claims of any of third parties or
other patent holders. Notwithstanding the above, Assignor hereby
warrants and represents that, to the best of its knowledge, with
regard to the QCT technology, no patent infringements lawsuits are
in existence, threatened or impending.
4. Royalties.
Assignee hereby agrees to pay Assignor the following royalty
payments for the life of the QCT technology (including all
enhancements thereof):
(a) Fifty
percent (50%) of any and all royalties received by Assignee from
licenses or the sale of the QCT technology to third
parties
(b) Ten
percent (10%) of any other revenues or payments monies received by
Assignee in connection with the development of the QCT technology
(including but not limited to “milestone payments.” It
is agreed by the parties that any payments received by Assignee
relating to “full-time equivalent” research support
payments are excluded from this section and no royalties for such
specified research support shall be paid.
It
is agreed by the parties that Assignee’s obligation to pay
the above-described royalties will cease upon Assignor receiving
royalties in an aggregate amount of $20,000,000 (U.S.).
5. Reports,
Payments and Credits. Assignee agrees to make written reports to
Assignor quarterly, within fifteen (15) calendar days next
following the end of each calendar quarter in which Assignee
receives any revenues or payments described in Section 4
above, stating in each such report the gross revenues and payments
received and the calculation of royalties owed to Assignor there
from. All royalty payments owed to Assignor shall be due and
payable within fifteen (15) calendar days next following the
end of each calendar quarter in which Assignee receives any
revenues or payments described in Section 4 above and
accompany the report and be in the form of (i) a certified
check drawn on a bank located in the United States of America, or
(ii) a wire transfer into an account designated by Assignor.
All royalties shall be paid in U.S. dollars.
Assignee agrees to
keep records showing any revenues and payments derived from the QCT
technology as described in Section 4 above and shall be kept
in sufficient detail to make the gross revenues and payments as
well as the royalties paid hereunder determinable with commercial
certainty, and Assignee further agrees to permit its books and
records to be examined by the Assignor (or its
agents) to the extent necessary
to audit and verify the quarterly reports described above, and with
prior coordination with the Assignee which shall not be
unreasonably withheld. Such examination shall be made at the
expense of Assignor, be accomplished by Assignor, its agents or
contractors and take place during customary business hours at the
offices of Assignee, or at the request of the Assignor, the
Assignee shall send such requested materials to Assignor via
reputable overnight courier within a reasonable time after such
request (but in no event later than three business days after such
request is made).
6. Irrevocable
Assignment. It is understood by the parties that it is the intent
of this Agreement to assign and transfer all right, title and
interest in the QCT technology to Assignee and that Assignor shall
have no right or title in the QCT technology whatsoever.
7. Indemnity.
To the extent that Assignor, prior to the execution of this
Agreement, had knowledge of any demand, claim, cause of action, or
damages of any kind, Assignor hereby agrees to indemnify and hold
harmless the Assignee with regard to all demands, claims, causes of
action, damages of any type or kind, costs and expenses (including
attorneys’ fees) arising directly or indirectly from
Assignor’s ownership, use or commercial exploitation of the
QCT technology prior to the Agreement. Assignee hereby agrees to
indemnify and hold harmless Assignor from any and a
