TECHNOLOGY
LICENSE AGREEMENT
BETWEEN
CARDIOVASCULAR
BIOTHERAPEUTICS, INC.
AND
PRODERM,
LP
Dated
as of July 8, 2008
TABLE
OF CONTENTS
| |
|
|
Page
|
| |
|
|
|
1.
|
Definitions
|
1
|
| |
1.1
|
Definitions
|
1
|
| |
1.2
|
Singular
and Plural
|
1
|
| |
|
|
|
2.
|
Grant
of Licenses
|
1
|
| |
2.1
|
Grant
of Nonexclusive Licenses to PDLP; Right to
Sublicense.
|
1
|
| |
2.2
|
Third
Party Licenses to CVBT or Any of Its Affiliates
|
2
|
| |
2.3
|
PDLP
Sublicenses and Licenses to CVBT.
|
2
|
| |
|
|
|
3.
|
Representations,
Warranties and Covenants
|
3
|
| |
3.1
|
Representations,
Warranties and Covenants of CVBT
|
3
|
| |
3.2
|
Representations,
Warranties and Covenants of PDLP
|
4
|
| |
|
|
|
|
4.
|
Patents
|
|
4
|
| |
4.1
|
Derived
from the Development
|
4
|
| |
4.2
|
Rights
After Termination of Agreements
|
4
|
| |
|
|
|
5.
|
Confidential
Information
|
5
|
| |
|
|
|
6.
|
Permitted
Disclosures
|
5
|
| |
|
|
|
7.
|
Disclaimer
of Warranty; Consequential Damages
|
5
|
| |
7.1
|
Disclaimer
of Warranty
|
5
|
| |
7.2
|
Consequential
Damages
|
6
|
| |
|
|
|
8.
|
Indemnification
|
6
|
| |
8.1
|
Indemnification
by CVBT
|
6
|
| |
8.2
|
Indemnification
by PDLP
|
6
|
| |
8.3
|
Defense
of Claims
|
7
|
| |
|
|
|
9.
|
Term
and Termination
|
7
|
| |
9.1
|
Term
|
7
|
| |
9.2
|
Termination
by Mutual Agreement
|
7
|
| |
9.3
|
Termination
of Development
|
7
|
| |
9.4
|
Termination
by CVBT or PDLP for Breach
|
7
|
| |
9.5
|
Termination
After Full Payment
|
7
|
| |
9.6
|
Effect
of Termination
|
7
|
| |
9.7
|
Continuing
Obligation to Make Payments
|
8
|
| |
|
|
|
10.
|
Miscellaneous
|
8
|
| |
10.1
|
No
Implied Waivers; Rights Cumulative
|
8
|
| |
10.2
|
Force
Majeure
|
8
|
| |
10.3
|
Relationship
of the Parties
|
8
|
| |
10.4
|
Notices
|
8
|
| |
10.5
|
Successors
and Assigns
|
9
|
| |
10.6
|
Amendments
|
9
|
| |
10.7
|
Governing
Law
|
10
|
| |
10.8
|
Severability
|
10
|
| |
10.9
|
Trading
Limitations
|
10
|
| |
10.10
|
Counterparts
|
10
|
| |
10.11
|
Entire
Agreement
|
10
|
TECHNOLOGY
LICENSE AGREEMENT
This
Technology License Agreement (the “Agreement”) is
made as of July 8, 2008, by and between CardioVascular
BioTherapeutics, Inc., a Delaware corporation
(“CVBT”) and ProDerm, LP, a Nevada limited
partnership (“PDLP”).
RECITALS
A.
CVBT
and PDLP are parties to the Development Agreement (all
capitalized terms shall have the respective meanings set forth
in Section 1 hereof).
B.
CVBT
is the owner of the Wound Healing IP and certain intellectual
property rights relating thereto.
C.
Pursuant
to the Development Agreement, PDLP has engaged CVBT to employ
the Wound Healing IP in conducting the
Development.
E.
In
the Development process, CVBT may develop additional
inventions, processes, data, know-how, or enhancements of, or
relating to, the Wound Healing IP (the “Program
IP”).
F.
CVBT
desires to acquire, and PDLP is willing to grant to CVBT, an
exclusive worldwide license or sublicense to exploit the
Program IP as it deems appropriate.
NOW,
THEREFORE, in consideration of the mutual covenants set forth
herein and for other good and valuable consideration, the
receipt and sufficiency of which are hereby acknowledged, and
in order to induce CVBT to enter into the Agreements, CVBT and
PDLP hereby agree as follows:
1.
Definitions .
1.1
Definitions .
All capitalized terms used herein and not otherwise defined shall
have the respective meanings, to the extent such terms are used
herein, set forth in Schedule 1.1 attached hereto, which is
incorporated by this reference as though fully set forth
herein.
1.2
Singular and Plural .
Singular and plural forms, as the case may be, of terms defined
herein shall have correlative meanings.
2.
Grant of Licenses .
2.1
Grant of Nonexclusive Licenses to PDLP; Right to
Sublicense .
2.1.1
CVBT Grant .
Subject to the terms and conditions of this Agreement, CVBT hereby
grants to PDLP a nonexclusive perpetual, worldwide right and
license, terminable only as set forth herein, to employ
CVBT’s Wound Healing IP for purposes of the Development. PDLP
understands and acknowledges that CVBT may grant similar licenses
to other research and development partnerships for purposes of
additional development of the Wound Healing IP or the Program
IP.
2.2
Third Party Licenses to CVBT or Any of Its Affiliates
.
With respect to the rights of third parties that may be obtained by
CVBT after the date hereof, and which are necessary or useful to
the Development under the Development Agreement, CVBT shall use
commercially reasonable efforts to secure such rights and the right
to sublicense such rights to PDLP and shall sublicense such rights
to PDLP whenever possible; provided that PDLP shall not be
obligated to accept any grant of rights or assume any obligations
hereunder without its prior written consent. If PDLP desires to
obtain any such rights licensed to CVBT or any of its Affiliates
pursuant to an agreement with any Person other than PDLP (a
“Third Party Agreement”), the existence of which CVBT
shall promptly inform PDLP, PDLP and CVBT agree to negotiate in
good faith regarding the allocation between CVBT or any of its
Affiliates and PDLP of the royalty, license fee, milestone fee or
other payments payable to the third party and the assumption of any
obligations applicable to such license, if any. PDLP shall bear the
cost of obtaining any such rights and shall assume such obligations
only in proportion to its and its sublicensees’ (other than
CVBT’s and/or any of its Affiliates) use of such rights. Any
sublicense granted to PDLP hereunder shall be limited to the rights
that CVBT and/or any of its Affiliates has a right to grant under
any such Third Party Agreement and to any obligations under any
such Third Party Agreement, and to any obligations assumed by CVBT
and/or any of its Affiliates in consideration of the grant or
assignment of such rights to CVBT which are to be sublicensed to
PDLP. No party shall take any action, or fail to take any action
within its control, that would constitute or give rise to a breach
or other violation by CVBT or any of its Affiliates of any such
Third Party Agreement. The parties agree that no future licensing
fees are required to be paid by PDLP during the term of this
Agreement as consideration for the licenses and sublicenses granted
to PDLP hereunder, except as set forth in this Section
2.2.
2.3
PDLP Sublicenses and Licenses to CVBT .
2.3.1
Development License .
PDLP hereby grants CVBT an exclusive, even as to PDLP and all other
Persons, royalty-free license to employ and engage in any and all
uses of the Wound Healing IP to conduct Development, subject to the
terms and conditions of and to the extent necessary to perform its
obligations under the Development Agreement. The rights granted
under this Section 2.3.1 may be further sublicensed by CVBT only to
its Affiliates or as permitted under of the Development Agreement
(and, in such a case, solely to the extent necessary to perform any
subcontracting services thereunder) or to other research and
development partnerships for purposes of additional development of
the Wound Healing IP or the Program IP.
2.3.2
Commercialization License .
PDLP hereby grants CVBT an exclusive, even as to PDLP and all other
Persons, worldwide license to use the Program IP to further develop
the Wound Healing IP or make, have made, use or sell products based
on the Wound Healing IP and/or Program IP subject to the terms and
conditions of and to the extent necessary to perform its
obligations under the Development Agreement. The rights granted
under this Section 2.3.2 may be further sublicensed by CVBT only to
its Affiliates or, to the extent necessary to perform any
subcontracting services under the Development Agreement, or to
other research and development partnerships for purposes of
additional development of the Wound Healing IP or the Program IP.
Payments due to PDLP hereunder are as specified in Section 5 of the
Development Agreement.
2.3.3
Other Licenses .
The foregoing licenses are granted in addition to, and not in
substitution for, any other license granted to CVBT.
3.
Representations, Warranties and Covenants .
3.1
Representations, Warranties and Covenants of CVBT
.
CVBT represents, warrants and covenants to PDLP as
follows:
3.1.1
Organization of CVBT .
CVBT is a corporation duly organized, validly existing and in good
standing under the laws of the State of Delaware with full
corporate power and authority adequate for executing and delivering
and performing its obligations under this Agreement.
3.1.2
Authorization .
The execution, delivery and performance of this Agreement have been
duly authorized by all necessary corporate action on the part of
CVBT and this Agreement shall constitute a legal, valid and binding
obligation of CVBT, enforceable against CVBT in accordance with its
terms, subject to laws of general application relating to
bankruptcy, insolvency and the relief of debtors.
3.1.3
Other Agreements .
CVBT shall not enter into any agreement, make any commitment, take
any action or fail to take any action that would contravene any
material provision of, or materially derogate or restrict any of
the rights and licenses granted or assigned to PDLP under, this
Agreement; provided however, CVBT may enter into other contracts
with other research and development partnerships for the purpose of
further development of the Wound Healing IP or the Program IP. CVBT
agrees to abide and be bound by the terms of any license agreement
to which it is a party, any of the rights to which have been or
will be sublicensed or assigned to PDLP.
3.1.4
Intellectual Property Rights .
CVBT believes that it has sufficient legal and/or beneficial title
and ownership to grant the licenses to the CVBT Wound Healing IP
and the other intellectual property rights provided in Section 2
above. CVBT is not aware of any allegations that it has violated,
or that PDLP by practicing the Wound Healing IP as contemplated in
the Agreements would violate, any intellectual property rights of
any third party. To the best of its knowledge, there is no material
unauthorized use, infringement or misappropriation of any of the
Wound Healing IP. CVBT is not aware of, nor has it received any
communications challenging the ownership, validity or effectiveness
of the Wound Healing IP.
3.1.5
Validity .
CVBT is not aware of any action, suit or inquiry or investigation
instituted by any federal, state, local or foreign governmental
agency or instrumentality which questions or threatens the validity
of the Agreements.
3.2
Representations, Warranties and Covenants of PDLP
.
PDLP represents, warrants and covenants to CVBT as
follows:
3.2.1
Organization .
PDLP is a limited partnership duly organized, validly existing and
in good standing under the laws of State of Nevada with full
partnership power and authority adequate for executing and
delivering and performing its obligations under this
Agreement.
3.2.2
Authorization .
The execution, delivery and performance of this Agreement have been
duly authorized by all necessary partnership action on the part of
PDLP, and this Agreement shall constitute a legal, valid and
binding obligation of PDLP, enforceable against PDLP in accordance
with its terms, subject to laws of general application relating to
bankruptcy, insolvency and the relief of debtors.
3.2.3
Other Agreements .
PDLP shall not enter into any agreement, make any commitment, take
any action or fail to take any action that would contravene any
material provisions of, or materially derogate or restrict any of
the rights or licenses granted to CVBT under this
Agreement.
3.2.4
Sublicenses .
PDLP agrees to abide and be bound by the terms of the sublicenses
granted to it in accordance with the terms of this Agreement by
CVBT under any Third Party Agreement or agreement with a third
party.
3.2.5
Non-Solicitation .
PDLP shall not, during the term of this Agreement, without the
prior written consent of CVBT, solicit the employment of any
person, in any capacity, who, at any time during the term of this
Agreement, shall have been an officer, director, employee or agent
of CVBT or any of its Affiliates.
3.2.6
Validity .
PDLP is aware of no action, suit or inquiry or investigation
instituted by any federal, state, local or foreign governmental
agency or instrumentality which questions or threatens the validity
of the Agreements.
4.
Patents .
4.1
Derived from the Development .
During the term of this Agreement, CVBT shall direct and cause
appropriate patent applications to be prepared, filed and
prosecuted in all relevant territories, in a timely fashion, with
respect to any inventions included in the Program IP arising out of
inventions made by CVBT employees or consultants that CVBT deems
appropriate. CVBT shall cause any patents issuing thereon to be
maintained and enforced. The expenses of preparing, prosecuting and
maintaining such patents shall be borne by CVBT. CVBT shall have
the right, in its sole discretion, to enforce any patents issued in
conjunction with the Program IP.
4.2
Rights After Termination of Agreements .
After the expiration or termination of this Agreement and the
Development Agreement, CVBT shall have the exclusive right, at its
sole expense, to prepare and prosecute, in its name, patent
applications, and to maintain patents issued with respect to the
Program IP or the Wound Healing IP. CVBT shall have the right, in
its sole discretion, to enforce any patents issued with regard to
the Program IP and/or Wound Healing IP.
5.
Confidential Information .
Any party receiving Confidential Information shall maintain the
confidential and proprietary status of such Confidential
Information, keep such Confidential Information and each part
thereof within its possession or under its control sufficient to
prevent any activity with respect to the Confidential Information
that is not specifically authorized or contemplated by this
Agreement, use all commercially reasonable efforts to prevent the
disclosure of any Confidential Information to any other Person, and
use commercially reasonable efforts to ensure that such
Confidential Information is used only for those purposes
specifically authorized or contemplated herein; provided, however,
that such restriction shall not apply to any Confidential
Information that is (a) independently developed by the receiving
party outside the scope of this Agreement or the Development
Agreement (provided, however, that such restriction shall apply to
any technology licensed by CVBT to PDLP under this Agreement), (b)
in the public domain at the time of its receipt or thereafter
becomes part of the public domain through no fault of the receiving
party, (c) received without an obligation of confidentiality from a
third party having the right to dis
| 
