|
TECHNOLOGY SALE AGREEMENT
TECHNOLOGY
SALE AGREEMENT made as of the 1st day of January, 2005, between
MILESTONE SCIENTIFIC INC., a Delaware corporation
(“Milestone”), and CLAUDIA HOCHMAN and MARK HOCHMAN
(collectively the “Sellers”).
WHEREAS,
the Sellers have developed the technology, know-how and other
intellectual property underlying their invention of (i) a
“Pressure/Force Computer Controlled Drug Delivery
System”, (ii) a “Universal Syringe Holder
Enhancement” (iii) a non-deflecting, non-clogging single use
disposable hypodermic needle, (iv) a Handpiece for Injection Device
with a retractable rotating needle (US Patent No. 6,428,517 B1),
Anti-deflection/force penetration reduction rotating syringe (US
Patent No. 6,428,517), for use as a separate drug delivery or
aspiration system or as an adjunct to Milestone’s computer
controlled anesthesia system known as “The
CompuDent/CompuMed/Wand TM , (v) a Local Anesthetic and
Delivery Injection Unit with Automated Rate Control (US Patent No.
6,652,482 B2), (vi) Safety IV Catheter Infusion Device (US Utility
Patent App 10/174,246) (vii) Drug Delivery System with Profiles
(notice of allowance issued) and Pressure/Force Computer Controlled
Drug Delivery with automated changing (notice of allowance issued)
(viii) any and all other patent submissions, past, present and
future, that bear the name of one or both of the Sellers
(collectively, the Intellectual Property); and
WHEREAS,
the Sellers desire to sell to Milestone and Milestone desires to
purchase from Sellers all their rights in and to the Intellectual
Property on the terms hereinafter set forth.
NOW,
THEREFORE, in consideration of the sales transaction and the
agreements set forth below, the parties have entered into the
following transaction and agreements:
1.
Sale of Intellectual Rights . Sellers by this instrument do
hereby sell, transfer and assign to Milestone, all of their rights
in and to the “Intellectual Property”, including any
and
|
|
all inventions, patent
applications and other indicia evidencing or embodying their
proprietary rights therein and agree to turn over and deliver to
Milestone all documentation relating to the Intellectual
Property.
2.
Obtaining Patents . The Sellers agree that they will use
their best efforts in cooperation with, and at the request of,
Milestone to obtain United States and worldwide patent rights to
the Intellectual Property and any improvements thereon or thereto,
which together with all patents and patent applications are
collectively referred to as the “Proprietary Rights”.
The expense for preparing and filing appropriate patent
applications and if commercially reasonable, obtaining foreign
patents in such jurisdiction as appropriate, shall be borne by
Milestone. Sellers shall assign all rights in and to all patent
applications, patents and other Proprietary Rights not previously
assigned or developed after the date hereof to
Milestone.
3.
Further Documentation . The Sellers shall from time to time
at the request of Milestone execute and deliver to Milestone such
further documentation as requested by Milestone to more effectively
transfer and assign the Proprietary Rights to Milestone and to
otherwise give effect to this Agreement.
4.
Purchase Price .
(a)
|
|
|
|
|
(1) As
consideration for for US Patent No. 6,652,482 B2 embodying defined
newly essential elements to the technology, defining additional
elements of the system, and providing longevity for the inclusive
and comprehensive patent coverage to previous and current products
including The Wand w/ Cruise, WandPlus TM , CompuDent
TM , CompuMe TM . the Sellers transfer of the
rights in and to the Intellectual Property, including their
agreements to cooperate with Milestone in prosecuting patent
applications with respect thereto and to transfer and assign any
and all Proprietary Rights, Milestone shall pay to Sellers an
initial fixed purchase price of 43,424 shares of restricted Common
Stock at the time of execution and $145,000 in cash on or
about
|
|
|
April 1
st , 2005 after the execution hereof and a
deferred contingent purchase price in an amount equal to 0.025
(2.5%) percent of the “Net Sales”, as defined below,
subsequent to January 1, 2005, of those products sold by Milestone
(the “Products”), which embody any of the Proprietary
Rights of US Patent No. 6,652,482 B2,as follows:
|
|
|
|
ASSUMPTIONS AND
EXAMPLES:
|
|
|
|
|
1.
|
Proprietary
Rights are patented, US Patent No. 6,652,482 B2.
|
|
|
|
|
|
|
2.
|
The Product
which embodies technology underlying such Proprietary Rights is
sold for $660.00 per unit.
|
|
|
|
|
|
|
3.
|
Number of
units sold is 10 units.
|
|
|
|
|
|
|
4.
|
There
were no discounts, returns or allowances.
|
|
|
|
|
|
|
5.
|
Net Sales
of all Products which use such Proprietary rights are
$6600.00
|
|
|
|
THEN Royalties shall be
calculated as follows:
|
|
|
|
|
Price per Unit
x
No. of Units
x
Royalty Rate
|
|
|
|
|
|
$660.00
x
10
x
0.025
|
|
|
|
|
|
$6,600.00
x
0.025 Royalty Rate
= $165.00
|
|
|
|
|
|
Net
Sales
x
Royalty
Rate = Royalty
|
|
|
|
|
|
$6,600
x
2.5%
=
$165.00
|
|
(2)
As consideration for U.S. Patent No. 6,428,517 “Hand-Piece
for Injection Device With A Retractable And Rotating Needle”,
U.S. Patent No. 6,200,289 B2 “Pressure/Force Computer
Controlled Drug Delivery System and The Like, U.S. Patent No.
6,726,658 B2 “Safety IV Catheter Infusion Device, U.S. Patent
No. 6,786,885 B2 ”Pressure/Force Computer Controlled Drug
Delivery System with Exit Pressure Control, Drug Delivery System
with Profiles (notice of allowance issued) and Pressure/Force
Computer Controlled Drug Delivery with automated changing (notice
of allowance issued), and all derivative, divisional and secondary
patents of the aforementioned patents, and for any and all
other patent submissions, past, present and future, that bear the
name of one or both of the
|
|
