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INTERNATIONAL LICENSE
AGREEMENT
THIS INTERNATIONAL LICENSE AGREEMENT ("
Agreement ") is made as of this day of ______, 2006,
("Effective Date") by and between NanoLogix, Inc., a Delaware
corporation having a place of business at 87 Stambaugh Avenue,
Suite 2, Sharon, Pennsylvania 16146 (" Licensor "), and
Nutra Pharma Corp., a California corporation having a place of
business at 3473 High Ridge Road, Boynton Beach, Florida 33426 ("
Licensee ") (each, a " Party " and together, the "
Parties ").
WHEREAS, Licensor is the owner of certain
Licensed Patents, Licensed Technology and trade secrets;
WHEREAS, Licensee desires to acquire a license
for use of the Licensed Technology in the development,
commercialization and sale of the Licensed Products within the
Field of Use (as defined below), both domestically and
internationally; and
WHEREAS, Licensor has the power and authority to
grant Licensee such a license domestically and in certain
countries;
NOW, THEREFORE, in consideration of the payments
made and to be made to Licensor by Licensee and the mutual promises
and covenants contained herein and other good and valuable
consideration, the sufficiency of which is hereby acknowledged, the
Parties, intending to be legally bound, hereby agree as
follows:
1.
Definitions.
As used in this Agreement, the following terms
and variations thereof shall have the meanings below:
1.1 "
Affiliate " and " Affiliates " mean any individual,
corporation, subsidiary, affiliate, partnership, association,
business, organization or other entity that, directly or indirectly
through one or more intermediaries, controls, or is controlled by,
or is under common control with, a Party and/or such entities. The
term "control" (including the terms "controlling," "controlled by"
and "under common control with") means the possession, direct or
indirect, of the power to direct or cause the direction of the
management or policies of an individual or entity, whether through
the ownership of voting shares, by contract or
otherwise.
1.2 "
Agreement " has the meaning set forth in the preface to this
Agreement.
1.3 "
Bankruptcy Code " means the Bankruptcy Code of the United
States, as amended.
1.4 "
Buffer Products " means certain of Licensor's products
utilizing Licensor's trade secrets, including "AFZ", the "Adaptor
Buffer" and other related formulas.
1.5 "
Calendar Quarter " means each of the three-month periods
ending March 31, June 30, September 30 and December 31 in any given
calendar year.
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1.6 "
Calendar Year " means the 12-month period beginning January
1 and ending on December 31 in any given calendar year.
1.7 "
Effective Date " has the meaning set forth in the preface to
this Agreement.
1.8 " Field
of Use " with regard to the Licensed Technology, Licensed
Patent(s) and Licensed Product(s) means the detection and
identification of human and veterinary identification of Atypical
Mycobacteria, Tuberculosis, Mycobacterium Avium Intracellulare
(MAI), Mycobacteria, Paratuberculosis, Nocardia and Pseudomonas for
disease identification, and antibiotic assaying (but such assaying
does not include antibiotic assaying when those antibiotics or
compounds are derived from by-products obtained through growing
microorganisms using Licensor’s IP) for determining the
antimicrobial agent sensitivity of microorganisms to ascertain
which antibiotics are efficacious against microorganisms in the
field of health which may lead to drug discoveries; and excludes
any other uses, including any use reserved for the Licensor as
specified in the Realm of Use, and excludes kits for any other
uses, which uses or kits are reserved to Licensor, including but
not limited to uses, kits, or bioreactors pertaining to
bioremediation, apoptosis, nanotechnology, biomems, microfluidic
devices, the production of hydrogen and the identification and
growing of over 32 different paraffin-eating and non-paraffin
eating microorganisms to collect any microbial by-products of any
kind, including antibiotics (all of which fall under the Realm of
Use of the Licensor). Further, the Field of Use does not include
any industrial use of the Licensed Technology, Licensed Patent(s)
and Licensed Product(s). Whereas the Field of Use and the Realm of
Use both provide for certain uses within the area of health, the
Licensee, with regard to the Licensed Technology, Licensed
Patent(s) and Licensed Product(s) is limited to only the uses
within the areas of health that are specified in the Field of
Use.
1.9 " Force
Majeure Event " has the meaning set forth in Section
13.12.
1.10 "
Gross Sales Price " means the greater of the gross sales
price actually invoiced or collected by Licensee for Products sold
by Licensee or any Affiliate of Licensee, less all returns and
credits, of such gross sales price.
1.11 "Intellectual Property " or " IP " means any and all
copyrights, patents, patent applications, trademarks, or trade
secrets protectable by law from which the party asserting ownership
has the right to prevent others in its use, or require payment for
its use.
1.12 "
License " or " Licensed " has the meaning set forth
in Section 3.1.
1.13 "
Licensed Patents " means only those Patents set forth in
Exhibit A and does not include any of the Licensor’s Patents
nor any other of Licensor's Intellectual Property not explicitly
listed on Exhibit A as Licensed Patents.
1.14 "
Licensed Product " and " Licensed Products " mean
those products, including the Medical diagnostic kits and Buffer
Products, as set forth on Exhibit B and incorporating one or more
claims made in the Licensed Patents or incorporating other
Intellectual Property belonging to Licensor. Licensed Products do
not include products derived from any of the Licensor’s
patents which are not listed on Exhibit A as Licensed Patents,
except as otherwise expressly provided herein. Further, Licensed
Products do not include products derived from any of
Licensor’s currently pursued provisional, pending patents,
and continuation patents, which remain the exclusive property of
Licensor.
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1.15 "
Licensed Technology " means the Licensed Patents and
Licensed Products and technology limited to the Field of Use
described herein, or improvements developed by Licensee in
connection with, related to, arising from, used in the making of
and/or embodied in the Products and Patents listed in this
Agreement, and such Licensed Technology, which covers human medical
and veterinary products designed to identify 32 different paraffin
eating microorganisms or which cover human medical and veterinary
products designed for determining antimicrobial agent sensitivity,
and are to be solely used by the Licensee for the detection and
identification of human and veterinary identification of Atypical
Mycobacteria, Tuberculosis, Mycobacterium Avium Intracellulare
(MAI), Mycobacteria, Paratuberculosis, Nocardia and Pseudomonas for
disease identification and for antimicrobial agent sensitivity
assaying which may result in drug discovery applications, during
the Term hereof. Licensed Technology does not include technology
derived from any of the Licensor’s patents which are not
listed on Exhibit A as Licensed Patents. Further, Licensed
Technology does not include technology of Licensor's IP derived
from any of Licensor’s currently pursued provisional, pending
patents, and continuation patents, which remain the exclusive
property of Licensor.
1.16 "
Licensee " has the meaning set forth in the preface to this
Agreement.
1.17 "
Licensor " has the meaning set forth in the preface to this
Agreement.
1.18 "
Licensee Indemnitees " has the meaning set forth in Section
12.1.
1.19 "
Party " and " Parties " have the meaning set forth in
the preface to this Agreement.
1.20 "
Patent Rights " shall mean (i) unexpired letters patent
which have not been held invalid or unenforceable by a court of
competent jurisdiction from which no appeal can be taken or has
been taken within the required time period, including without
limitation any substitution, extension, registration, confirmation,
reissue, re-examination, renewal, supplementary protection
certificate or any like filing thereof and (ii) pending
applications for letters patent, including without limitation any
provisional, converted provisional, continued prosecution
application, continuation, divisional or continuation-in-part
thereof together with all know-how owned, created and/or developed
by Licensor in whole or in part.
1.21 "
Person " means any individual, governmental authority,
corporation, limited liability company, partnership, trust or other
entity.
1.22 "
Realm of Use " with regard to the Licensors use of the
Licensed Technology, Licensed Patent(s) and Licensed Product(s)
means the use of the licensed
technology, licensed patents and licensed products for all uses,
including but not limited to (a) hydrogen production applications (b) augmenting growth of
microorganisms to collect any microbial by-products, including but
not limited to hydrogen, antibiotics, or any chemical synthesis (c)
bioremediation (d) apoptosis (e) nanotechnology, (f) biomems, for all uses, including but not
limited to medical uses, (g) microfluidic devices, for all uses,
including but not limited to medical uses, (h) identification and
detection of over 32 different paraffin-eating and
non-paraffin-eating microorganisms, other than for the
identification of Atypical Mycobacteria, Tuberculosis,
Mycobacterium Avium Intracellulare (MAI), Mycobacteria,
Paratuberculosis, Nocardia and Pseudomonas for disease diagnosis
(unless associated with biomems, microfluidic devices, or
nanotechnology),(i) testing for antimicrobial agent sensitivity of
microorganisms included but not limited to using such technology
for controlling growth of undesirable microorganisms in a
bioreactor and using such technology to test the efficacy of
antibiotic compounds or other compounds which may be collected as
by-products from using the Licensed Technology to identify and grow
microorganisms and (j) any industrial use whatsoever; but excludes
using the Licensed Technology, Licensed Patent(s) and Licensed
Product(s) for (a) the detection and identification of human and
veterinary identification of Atypical Mycobacteria, Tuberculosis,
Mycobacterium Avium Intracellulare (MAI), Mycobacteria,
Paratuberculosis, Nocardia and Pseudomonas for disease
identification test kits (unless associated with biomems,
microfluidic devices, or nanotechnology) and (b)selling test kits
or providing diagnostic services in the field of health for
determining the antimicrobial agent sensitivity of microorganisms
to ascertain which antibiotics are efficacious against
microorganisms in the field of health diagnosis (unless associated
with biomems, microfluidic devices, or nanotechnology). Whereas the
Field of Use and the Realm of Use both provide for certain uses
within the area of health, the Licensee, with regard to the
Licensed Technology, Licensed Patent(s) and Licensed Product(s) is
limited to only the uses within the areas of health that are
specified in the Field of Use.
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1.23 "
Robinson-Patman Act " means the Robinson-Patman
Antidiscrimination Act, as amended.
1.24 "
Royalty Fee " and " Royalty Fees " mean the fees paid
to Licensor by Licensee for the License.
1.25 "
Exclusive License " means the Licensor undertakes not to
grant the right to use the intellectual property hereby leased to
Licensee within the Field of Use to any other licensee but Licensor
reserves to right to use Licensor’s intellectual property
hereby leased to Licensee for any use within the Realm of
Use.
1.26 "
Sublicense " means a license giving rights of
production or marketing of products or services, given by the
Licensee to a person or company that is not the primary holder of
such rights, which comprise rights to the Licensed Patents,
Licensed Technology and/or Licensed Products and a "Sublicensee"
shall mean any person, company or other legal entity other than
Licensee who has been granted by Licensee a Sublicense to the
rights to the Licensed Patents, Licensed Technology and/or Licensed
Products to make, use or sell the Licensed Product or Licensed
Technology.
1.27 "
Term " has the meaning set forth in Section 2.1.
1.28 "
Third Party " and " Third Parties " mean one or more
persons or entities other than Licensor, Licensee or their
respective Affiliates.
1.29 "
United States " means the United States of America and its
possessions and territories.
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2. Effective Date
and Term .
2.1 This Agreement
shall be effective when all of the requirements and conditions
provided under Section 13.19 Closing of Agreement and
Conditions Thereto are met, including but not limited to the
transfer of 4,593,170 shares of capital stock of Nanologix,
Inc./Infectech, Inc to the Licensor and the execution of the Patent
Assignment Agreement, in which event, this Agreement shall be
effective as of the Effective Date recited on page one of the
Agreement as long as the Agreement has been agreed upon and
executed by the Parties and will continue in perpetuity until the
latest expiration date of any Licensed Patent, or as long as
Licensee sells any products within the Field of Use based upon any
of the Licensed Patents, Licensed Products and/or Licensed
Technology, whichever is later; or unless terminated earlier as
expressly provided in this Agreement.
3. Exclusive License
within Field of Use.
3.1 Beginning
on the Effective Date, Licensor hereby grants to Licensee an
Exclusive License for the use of the Licensed Patents listed on
Exhibit A limited to use within the Field of Use, with domestic and
worldwide royalty-bearing license rights (" License "),
limited to the United States and those countries for which Licensor
has obtained patent protection, which is further limited to
unexpired letters patent which have not been held invalid or
unenforceable by a court of competent jurisdiction from which no
appeal can be taken or has been taken within the required time
period, and such rights further limited to the Field of Use, and to
the following:
(a) to make,
have made, use, sell, import and sublicense the Licensed Technology
solely within the Field of Use for the purposes of manufacturing,
assembling, distributing, leasing, renting, performing research,
and selling the Licensed Products solely within the Field of
Use.
(b) sublicensing or subcontracting the manufacture, assembly,
distribution and sale of the Licensed Products solely to be used
within the Field of Use.
3.2 Licensor will
continue to actively pursue expansion of its patent protection
internationally. As Licensor secures these protections, the License
described in Section 3.1 shall cover use of the specific Licensed
Patents, Licensed Products, and Licensed Technology in said
countries, within the Field of Use.
3.3 Licensor retains
all rights related to the Licensed Patents, Licensed Products,
Licensed Technology, trade secrets and referred to in this
Agreement, as well as all other Intellectual Property belonging to
the Licensor, except as expressly stated in Section 3.1. Licensor
may, at any time and without the consent of Licensee, assign or
transfer its rights related to any of the Licensed Patent(s),
Licensed Product(s) and/or Licensed Technology, for any use outside
the Field of Use and not otherwise inconsistent with this
Agreement.
3.4 Upon
Licensee’s request, Licensor shall provide to Licensee copies
of all reasonably related research, documents, and notes possessed
by Licensor, including, but not limited to, the findings of Dr.
Paul Hyman of Ohio State University. Licensee shall keep such
information confidential as provided in Section 13.22 and elsewhere
in this agreement.
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4. Royalties and
Fees.
4.1 During the Term
hereof, and in consideration of the License set forth in Article 3,
Licensee agrees to pay Licensor a Royalty Fee which shall be equal
to the greater of (a) the Minimum Royalty Fee, as described in
Section 4.2, or (b) six percent (6%) of the Gross Sales Price of
all products and/or services sold by Licensee or any of its
Affiliates based upon, directly or indirectly, the Licensed
Technology, Licensed Patent(s), Licensed Product(s
) and/or any direct or indirect utilization
of trade secrets of the Licensor within the Field of Use during the
Term, and upon any products or services sold by the Licensee within
the Field of Use that are the result of the improvement on or
development of additional Intellectual Property developed by the
Licensee based upon the Licensed Technology, Licensed Patent(s),
Licensed Product(s), and/or trade secrets of the Licensor, within
the Field of Use, including all products sold within the Field of
Use that include modifications, additions, enhancements and
improvements to the Licensed Patents, Licensed Products, Licensed
Technology and/or trade secrets of the Licensor.
4.2 Licensee shall
pay to Licensor a Minimum Royalty Fee of $20,000 in the first
calendar year, $20,000 in the second calendar year, $40,000 in the
third calendar year, $80,000 in the fourth calendar year, and
$160,000 in each calendar year after that, through the termination
of this Agreement. This Minimum Royalty Fee due under this
Agreement shall be reduced by any royalty amounts paid under the
Patent Assignment Agreement executed contemporaneously with this
Agreement.
4.3 If any Licensed
Patent(s), Licensed Product(s), and/or Licensed Technology, or
other Licensor trade secrets within the Field of Use is directly or
indirectly a component of usage by the Licensee or Sublicensee, all
Royalties Fees required in this Agreement must be fully paid or
Licensee will be in breach of the Agreement.
4.4 The Royalty Fee
for payments actually received (or discounted in the case of
conditional contract sales and rentals) during each Calendar
Quarter based upon invoiced sales will be paid to Licensor within
sixty (60) days after the end of each Calendar Quarter, provided,
however, that all Royalty Fees based upon any sales by a
sublicensor or subcontractor (which also manufactures and
assembles) shall accrue in the Calendar Quarter the sublicensing
fees are received by Licensee, but shall accrue no later than the
Calendar Quarter immediately subsequent to the Calendar Quarter in
which the relevant sales were originally invoiced, regardless of
whether licensee has or has not received payments from sublicensor
or subcontractor.
4.5 Royalty Fee
payments will be accompanied by account statements certified as
accurate and complete by Licensee for each Calendar Quarter setting
forth the amount of invoiced sales, payments received and credits
in the aggregate and separately for each Licensed Product by serial
number to the extent possible. If Licensor has not received any
Royalty Fees payment within thirty (30) days of the date it is due
and payable, Licensor may serve Licensee notice providing Licensee
thirty (30) days to correct such payment deficiency, with interest,
or be considered in breach of this Agreement.
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4.6 Information
regarding the gross revenues for all projects, uses and
applications of Licensee shall be made available to the Licensor,
with an indication made as to which utilized Licensor’s IP.
Licensor shall be entitled to, on reasonable notice to Licensee,
examine the books and records of any and all Licensed Product sales
of Licensee from time to time, and shall be entitled
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