TECHNOLOGY LICENSE
AGREEMENT
This TECHNOLOGY LICENSE AGREEMENT (this
“ Agreement ”) is made as of October 1, 2006
between Vita 34 AG, a company organized under the laws of Germany
(“ Vita 34 ”) and Cord Blood America, Inc. 9000
Sunset Boulevard, Suite 400, Los Angeles, CA 90069 (“
CBAI ”).
BACKGROUND
A.
Vita 34 is the owner of a proprietary
process, described in U.S. Patent Application Serial Number 1
0/854,622 entitled “ Sterile System and Methods for
Collecting, Transporting, Storing and Cryopreserving Body
Fluids ” and any continuations, continuation-in-parts,
divisionals or reissues thereof (the “Sterile System Patent
Applications”), together with certain know-how and other
proprietary information related thereto (collectively with the
Sterile System Patent Applications, the “Sterile System
Proprietary Technology”) as currently employed at Bergen
Community Blood Services on behalf of Corcell. A copy of the U.S.
Sterile System Patent Application is attached to this Agreement as
Schedule A . The Sterile System Proprietary Technology is
referred to herein as the “Proprietary
Technology”.
B.
Pursuant to the Technology License
Agreement between Vita34 and CorCell dated March 2, 2006, Vita 34
has granted to CorCell a non-exclusive, perpetual, transferable
license to use and practice, and to grant sublicenses to use and
practice, the Sterile System Proprietary Technology (the
“Letter Agreement”).
C.
Cord Blood America Inc., a Florida
corporation (hereinafter “ CBAI ”), is to
acquire certain assets from CorCell which assets shall include all
of CorCell’s right, title, interest and obligations under
this Agreement (the “Asset Sale”).
D.
In accordance with and further to the
Letter Agreement, Vita 34 and CBAI now wish to further memorialize
additional terms of their relationship with respect to the Sterile
System Proprietary Technology.
NOW, THEREFORE, in consideration of the
foregoing and for other good and valuable consideration, the
receipt and sufficiency of which are hereby acknowledged, and
intending to be legally bound, the parties agree as
follows:
1.
License for Proprietary
Technology . Vita 34 hereby
grants to CBAI a perpetual, non¬exclusive, transferable
license to make, use, sell and otherwise practice the Proprietary
Technology, and to grant sublicenses to others to make, use, sell
and otherwise practice the Proprietary Technology in accordance
with the terms set forth herein (the “ License
”). Without limiting the foregoing, CBAI may grant
sublicenses to third parties to use the Proprietary Technology in
connection with collection and processing of Umbilical Cord Blood
(UCB) Specimens and sublicensees own specimens. The license granted
under this Agreement shall be given to CBAI within the United
States of America, its territories and possessions for a period
beginning on the date first set forth above, and ending five (5)
years after the date of receipt of the FDA approvals sought under
Paragraph 2 below. Prior to the end of such five (5) year period,
Vita 34 shall offer to CBAI an extension to the license granted
hereunder upon terms which shall be negotiated in good faith by the
parties.
2.
FDA and Other Approvals
. CBAI may attempt to obtain approvals,
endorsements and/or the like which, in CBAI’s sole discretion
and upon consultation with Vita 34, are deemed necessary or
desirable by CBAI to commercially exploit the Proprietary
Technology, including but not limited to approvals of the United
States Food and Drug Administration (the “FDA”). If
CBAI so chooses to pursue such approvals, CBAI shall bear all fees
and expenses. Upon the request of CBAI, Vita 34 shall provide CBAI
with any information, documentation, or other assistance so
requested in connection with CBAI’s efforts to obtain any
such FDA approvals. Vita 34 shall also assist CBAI in obtaining any
other approvals, endorsements or the like which, in CBAI’s
sole discretion, are deemed necessary or desirable to commercially
exploit the Proprietary Technology in the United States of America,
its territories or possessions.
3.
Sterile System Proprietary Technology
Royalties . With respect to
the Sterile System Proprietary Technology, the license granted to
CBAI hereunder shall be royalty free until closing of the AP A I,
at which time CBAI shall pay to Vita 34 a royalty equal to one-half
of one percent (~ %) of the net revenue recognized as defined by
accounting standards (total first year fee for Customer, see
Schedule B for calculation examples) collected by CBAI (the user)
related to the processing of UCB Specimens by CBAI, wherein such
processing is defined by the Sterile System Proprietary Technology.
CBAI shall pay to Vita 34 such royalties accrued in CBAI’s
next previous fiscal quarter within thirty (30) days of the last
day of such fiscal quarter. CBAI shall send annual audited
statements or reports to VITA 34, whichever best demonstrates the
number of collected specimens and annual revenues for such per
year. Under any circumstances however, no royalty payments shall be
due to
