INTELLECTUAL PROPERTY ASSIGNMENT AGREEMENT
THIS INTELLECTUAL PROPERTY
ASSIGNMENT AGREEMENT (this “Assignment” ) is
made and dated as of June 2, 2009 (the “Effective
Date” ) by and between CombinatoRx, Incorporated, a
Delaware corporation with its principal office and place of
business at 245 1st Street, Cambridge, MA 02142 (
“CRX” ), and ExCRX Singapore Pte. Ltd., formerly
known as CombinatoRx (Singapore) Pte Ltd, a company incorporated in
Singapore with company registration number 200511269N whose
registered office is 11 Biopolis Way #08-05/06 Helios Singapore
138667 ( “CRX-SG” ).
WHEREAS, CRX and CRX-SG have
entered into a Termination Agreement of even date herewith,
pursuant to which the Services Agreement between CRX and CRX-SG,
dated as of August 19, 2005 (the “Prior Services
Agreement” ) has been terminated; and
WHEREAS, CRX and CRX-SG have
entered into a Transition Services Agreement of even date herewith
(the “Transition Services Agreement” ), pursuant
to which CRX agrees to transition services previously performed by
CRX to third parties designated by CRX-SG to perform such services;
and
WHEREAS, CRX and CRX-SG wish to
confirm their understanding regarding certain intellectual property
rights.
NOW THEREFORE, be it known that,
for good and valuable consideration, receipt of which is hereby
acknowledged, the Parties agree as follows:
“Agreement IP Rights” shall mean the Project
Intellectual Property and the Previously Assigned Patent
Rights.
“CRX Technology” shall mean all inventions,
discoveries, technologies, trade secrets, works of authorship,
writings, data and other information (i) that were owned by CRX
prior to the conduct or commencement of any services pursuant to
the Prior Services Agreement, or which were developed or acquired
by CRX independently of, and not in the performance of services
pursuant to the Prior Services Agreement or (ii) that were
developed or acquired by CRX in the performance of services
pursuant to the Prior Services Agreement and that do not relate to
novel therapeutic combinations for Infectious Disease.
“Infectious Disease” shall mean any disease
indication caused by a viral, bacterial or fungal infection, other
than any disease indication which may be related to or caused by a
viral, bacterial or fungal infection, or which may have a putative
infectious component, but primary treatment for which, as of the
initiation of research or development work on such indication by
CRX, is not typically anti-infective in nature, including,
without
limitation or by way of example, such
indications as cervical cancer (possibly caused by HPV) or
Crohn’s disease (putative cause: infections).
“Previously Assigned Patent Rights” shall
mean all right, title and interest in and to any U.S. Patent
Applications listed on Exhibit A , any invention claimed
therein, any other patent application directed to any such
invention, and all Letters Patent of the United States that may be
granted thereon, and all reissues, continuations,
continuations-in-part, divisions, revisions, reexaminations, and
extensions thereof; and all rights to claim priority on the basis
of such applications, and all applications for Letters Patent that
have been or may be filed for any such invention in any country of
the world and all Letters Patent that may be granted on any such
invention in any country of the world, and all extensions,
renewals, and reissues thereof, constituting all patent rights made
or developed pursuant to the Prior Services Agreement that have,
pursuant to the provisions thereof, previously been assigned by CRX
to CRX-SG.
“Project Intellectual Property” shall mean
any and all data, writings (irrespective of whether in written or
electronic form), information (tangible and intangible), processes,
methods, inventions, discoveries, improvements, trade secrets,
works of authorship and technology in any form whatsoever, and any
and all patent, copyright and other intellectual property rights
therein, resulting from or generated, made or developed by or on
behalf of CRX in the performance of the services provided to CRX-SG
under the Prior Services Agreement to the extent any of the
foregoing covers novel therapeutic combination therapies for
Infectious Disease, but excluding, without limitation, any process,
methods, inventions, discoveries, improvements, trade secrets,
works of authorship and technology related solely to the CRX
Technology.
2. Ownership and Assignment of Patent Rights .
CRX and CRX-SG hereby agree that the Previously Assigned Patent
Rights listed on Exhibit A are owned by and vest solely and
exclusively in CRX-SG under the terms of the Prior Services
Agreement. Without prejudice to the foregoing, CRX hereby transfers
and assigns to CRX-SG:
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all rights, title and interests, including all
intellectual property rights anywhere in the world, whether
registered or not, and all benefits and rights to sue or obtain
relief for any past, current or future infringement or violation of
such rights, in and to the Agreement IP Rights throughout all
countries of the world and in perpetuity; and
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all rights of action, powers and benefits
arising from ownership of the Agreement IP Rights throughout all
countries of the world and in perpetuity, including without
limitation, the right to sue for damages and other legal and
equitable remedies in respect of all causes of action arising prior
to, on or after the Effective Date.
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CRX hereby authorizes and requests the
Commissioner of Patents and Trademarks of the United States and any
official of any country of the world whose duty it is to issue
patents on applications as described above, to issue all Letters
Patent for the invention(s) to CRX-SG or its lawful successors or
assigns, in accordance with the terms of this Assignment.
To the extent that any rights, title and interests, including
all intellectual property rights anywhere in the world, whether
registered or not, and all benefits and rights to sue or obtain
relief for any past, current or future infringement or violation of
such rights, in and to the Agreement IP Rights (or any part
thereof) in any country of the world may remain or become vested in
CRX or its related corporations notwithstanding Section 2, CRX
shall and hereby agrees, a