Exhibit 10.8
EXCLUSIVE LICENSE
This
License Agreement (the "License Agreement") is made the 4th day
of
April, 2003 between Vincent
C. Giampapa, an individual with an address at c/o
Plastic Surgery Center, 89
Valley Road, Montclair, New Jersey 07042, New Jersey
("Giampapa") and Kronogen
Sciences Inc. a corporation of the state of Delaware
having a place of business at
750 Lexington Avenue, 20th Floor, New York, New
York 10022 (hereinafter
"KRONOGEN SCIENCES").
RECITALS:
KRONOGEN
SCIENCES is in the anti-aging/age management business
(the
"Business") and is developing
products and programs in connection therewith; and
Giampapa
is the owner of certain patents and processes some of
which
relate to the Business;
and
Giampapa
has transferred to KRONOGEN SCIENCES all of his
intellectual
property related to the
Business under or in connection with an Asset Transfer
Agreement dated as of April
__, 2003 by and among, KRONOGEN SCIENCES, Giampapa
and The Giampapa Institute
For Anti-Aging Medical Therapy ("Transfer
Agreement"), except that
patents related to the Business shall be subject to the
terms hereof; and
KRONOGEN
SCIENCES desires to license from Giampapa, and Giampapa
desires
to license to KRONOGEN
SCIENCES, Giampapa's patents related to the Business
under the terms and
conditions of this License Agreement.
In
consideration of the mutual covenants, representations, warranties,
and
promises of the parties
hereto, the receipt and legal sufficiency of which is
hereby acknowledged, and
intending to be legally bound hereby, the parties
hereto represent, warrant,
covenant and agree as follows:
1. Incorporation of
Recitals. The above recitals are incorporated herein as
if fully
set forth below.
2. License Grant.
Giampapa grants to KRONOGEN SCIENCES under the Licensed
Patents
(defined below), and for the life of the Licensed Patents,
an
exclusive,
irrevocable, worldwide, transferable license, with the right
to
sublicense, to practice the methods and to make, have made, use,
offer to
sell,
sell, import, export, and sell for export in connection
with
KRONOGEN
SCIENCES' business the inventions described or claimed in
the
Licensed
Patents.
(a)
"Licensed
Patents" means all patents, reissues of and reexamined
patents, and patent applications, whenever filed and
wherever
issued, including without limitation, continuations,
continuations-in-part, substitutes, and divisions of
such
applications and all priority rights resulting from such
applications, owned by Giampapa or for which Giampapa has the
right
to grant licenses of the scope of the licensed granted in
this
License Agreement that are related to the Business,
including
without limitation, the patents identified in Schedule
2(a).
Licensed Patents also includes without limitation, any
discovery,
idea, design, or invention that (a) the unlicensed making,
having
made, use, offering to sell, selling, importing, exporting,
or
selling for export of which would infringe one or more of
the
Licensed Patents; (b) performs the same function as a product
or
service that is subject to any of the Licensed Patents; (c)
is
useful or necessary to KRONOGEN SCIENCES' exercise of its
rights
under this License Agreement; or (d) uses, incorporates, is
derived
from, or is based on the inventions described or claimed in
the
Licensed Patents or that could not be conceived, developed,
or
reduced to practice but for the use of the inventions described
or
claimed in the Licensed Patents.
<PAGE>
3. Royalties.
(a)
Certain
Definitions.
(i) "Net Sales
Price" means the amount actually received by
KRONOGEN SCIENCES for the sale of any Units, less (i)
any
amounts received for freight or taxes, (ii) unreimbursed
delivery or shipping costs, (iii) amounts paid for
commissions, (iv) refunds for returns and rejections and
(v)
any cash and trade discounts and other credits and
allowances.
(ii) "Units" means
products manufactured by or on behalf of
KRONOGEN SCIENCES which include as a component thereof
anything fabricated using the Licensed Patents, in such
minimum quantities as are packaged and sold at retail.
(b)
Royalties on
Sales. KRONOGEN SCIENCES will pay to Giampapa royalties
as follows:
(i) KRONOGEN SCIENCES shall pay
Giampapa a royalty of 6% of the
Net Sales Price of Units sold by KRONOGEN SCIENCES that
are
developed by Giampapa for KRONOGEN SCIENCES
("Royalties").
(ii) Royalties shall
be due and payable to Giampapa based on each
Unit actually sold by KRONOGEN SCIENCES, less any returns
and
allowances. No Royalty will be due and payable on any
Units
shipped as promotional product where KRONOGEN SCIENCES
does
not receive any payment; KRONOGEN SCIENCES will endeavor
to
use good business judgment in regard to these Units, it
being
acknowledged that the parties' intention in connection
therewith is to generate additional sales of Units
and/or
goodwill.
(iii) Royalties due and payable hereunder shall be paid on
a
quarterly basis within 45 days after the close of each
calendar quarter and, shall be accompanied by a written
statement setting forth sales information in respect of
Units
sold during such quarter.
(iv) Giampapa or his
authorized certified public accountant shall
have the right to examine the books, accounts and records
of
KRONOGEN SCIENCES, from time to time up to two times per
year,
at mutually agreed upon times and dates, to ensure that
the
Royalty statements are complete, current and accurate in
all
material respects and that any Royalties due hereunder
have
been paid to Giampapa as required by this License
Agreement.
4. Obligations,
Agreements and Acknowledgements of Giampapa. Giampapa
covenants
and agrees:
(a)
Giampapa shall
have no obligation or responsibility under this
License Agreement for the conduct of KRONOGEN SCIENCES'
business,
except as expressly set forth in this License Agreement, it
being
acknowledged that Giampapa has other obligations in respect
of
KRONOGEN SCIENCES pursuant to the Transfer Agreement and the
other
agreements referred to therein and contemplated thereby;
(b)
to permit
KRONOGEN SCIENCES to use his photograph or likeness in
marketing the Units;
(c)
to provide
KRONOGEN SCIENCES with Patent Numbers, where applicable,
on all products licensed to KRONOGEN SCIENCES;
(d)
to fully
disclose to KRONOGEN SCIENCES, and to otherwise hold in
strict confidence, any discovery, idea, design, invention, work
of
authorship, or trademark, service mark, trade name, trade dress,
or
other indicia of origin, related to the Business, whether or
not
patentable and whether or not completed or reduced to practice,
that
is conceived, developed or made by Giampapa, alone or jointly
with
others during the term of this License Agreement, and any
component
of any such thing (collectively "Work Product");
Page 2 of 8
<PAGE>
(e)
for the one year
period following the disclosure in accordance with
Section 4(d) of Work Product related to the Licensed Patents
(the
"Exclusive Period"), to grant rights to such Work Product equal
to
the rights granted for Licensed Patents by this License Agreement
to
KRONOGEN SCIENCES on such terms as the parties may mutually
agree
and, for the one year period commencing immediately upon
expiration
of the Exclusive Period, grant to KRONOGEN SCIENCES a right of
first
refusal to acquire rights in such Work Product on terms no
less
favorable than is offered to Giampapa by a bona fide third
party;
(f)
to not assert
against KRONOGEN SCIENCES, or its vendees, mediate or
immediate, any claims for infringement of any patent based on
the
manufacture, use, sale, offer for sale, or import of any
apparatus
made or sold by KRONOGEN SCIENCES under the license granted in
this
License Agreement;
(g)
KRONOGEN
SCIENCES shall have the right to sell any Units under
whatever trademarks, trade names, trade dress, service marks and
the
like it shall deem appropriate or advisable, and all
trademarks,
trade names, trade dress, service marks and the like under
which
Units are sold shall remain the sole and exclusive property
of
KRONOGEN SCIENCES;
(h)
KRONOGEN
SCIENCES, if it so elects, may apply for patents,
copyrights and/or trademarks relating to the Units, at its sole
cost
and expense; and
(i)
to use
Giampapa's best efforts to maintain the strict
confidentiality of all information relating to KRONOGEN
SCIENCES'
businesses and affairs not otherwise available to the
general
public, including, but not limited to, KRONOGEN
SCIENCES'
development, manufacture and sale of any of the Units and to
refrain
from disclosing the same to any person, without the
prior
