Exhibit 6.9
ASSIGNMENTOFINTELLECTUAL PROPERTY RIGHTS
This assignment of intellectual property rights agreement (the “Agreement”) is made April 13, 2020, between
OptiEnzSensors, LLC, a bodycorporate registeredandsubsisting under the lawsof the State of Colorado, having abusiness address at 320East Vine Drive,Suite 129,Fort Collins, CO 80524(the “Assignor”);and
Quara Devices Inc., a body corporate incorporated and subsisting under the laws of the state of Wyoming, having a business address at 1712 Pearl St., Boulder CO 80302 (the “Assignee”);
WHEREAS,the Assignorhasinventedaportable instrument and associated softwareformeasuringfluorescence resonance energy transfer (FRET) between pairsof fluorophores. The instrument, software, and methods developed can beused to measure FRET between anyfluorophore pairandcanmake simultaneousmeasurements of multiple fluorophore pairs. Thepresent instrument, software, and methods havebeen developedspecifically for measurement of BAI-2 concentrations with single proteins containing FRET pairsand aBAI-2binding domain. BAI-2 is aquorum-sensingmoleculesynthesized by bacterialpathogens. By measuring BAI-2,the instrument provides amethod for detection of pathogenic bacteria and hasapplicationsinseveral industries including healthcare (the said invented portable instrument and associated software are,collectively, the “Technology”).
WHEREASthe Assignor is theowner of allintellectual property rights, including allinventions and patent rights therein,copyrights, design rights, trade secrets, confidential information, and anyother analogous intangible proprietary rights, whether registered or unregistered, which maysubsist anywhereinthe world,and allapplications for registration or issuanceof any ofsame,including alldivisions, continuations, reissues,andextensions thereof, and allrights to file anysuch applications, and all registrationsfor anyof same; allrelating to the Technology (collectively, the“IP”):
WHEREASAssignee desires toacquire allthe rights inand tothe IP;
WHEREASasconsideration for the assignment of the IP theAssignee wishes tore-grant the Assignor certainrightsinandto the IP by aLicense Agreement and Royalty Agreement.
NOW THEREFORE,for and inconsideration of (i) apayment of US$50,000, previously advanced to the Assigneeand (ii) the Assignee agreeingtoenter into that License and Royalty Agreement attached hereto asScheduleA,Assignor hereby assigns toAssignee ONE HUNDRED PERCENT (100%)of itsright, title and interest intheinvention and IP and anyprovisional patents, issues, reissuesor extensions and for theentiretermsof anypatents, reissues or extensions that may issue fromforeign applications, divisions, continuationsinwhole or part orsubstituteapplicationsfiledclaiming the benefit of the IP. Theright, title and interest conveyed inthisAssignment isto be held and enjoyed byAssignee and Assignee’s successors as fullyandexclusively as itwould have been held and enjoyed byAssignor had this Assignmentnotbeen made.
Assignor furtheragreesto: (a) cooperate with Assignee inthe filing of a USprovisional or fullpatent application; theprotection of theIPrights, patent rights andprosecution and protection of foreign counterparts; (b) execute, verify,acknowledge and deliver allsuch further papers,including patent applications and instruments of transfer; and (c) perform such other acts asAssignee lawfully mayrequest toobtainor maintain the patents and any and allapplications andregistrations for theinvention in anyand allcountries.
INWITNESS WHEREOF, the Parties hereto havecaused their dulyauthorized representatives to executethisagreement. Thisagreement maybe executedintwo (2) ormorecounterparts, each of which shall be deemed anoriginal, but allof which together shall constitute one and thesame instrument. Counterparts maybe delivered viafacsimile, electronicmail(including pdf or any electronic signature complying with the U.S. federal ESIGN Act of 2000, i.e., www.docusign.com) or other transmission method, and anycounterpart so delivered shall bedeemed to havebeendulyand validly delivered and shall bevalid and effective forallpurposes.
| OptiEnz Sensors, LLC | | Quara Devices Inc. |
| | | |
| BY: | /s/ Stephen Witt | | BY: | /s/ Rodney W. Reum |
| NAME: | Stephen Witt | | NAME: | Rodney W. Reum |
| TITLE: | Chief Executive Officer | | TITLE: | Executive Chairman |
SCHEDULE A – LICENSE AND ROYALTY AGREEMENT
OptiEnz Sensors, LLC.
(OptiEnz)
and
QUARA DEVICES INC.
(Quara)
LICENSE AND ROYALTY CALCULATION AGREEMENT
THISAGREEMENT ismade the13thdayof April, 2020
BETWEEN
OPTIENZ SENSORS, LLC. of 320 East Vine Drive, Suite 129, Fort Collins, CO 80524
(OptiEnz);
AND
QUARADEVICES INC. of 1712 PearlSt., BoulderCO 80302(Quara).
R ECITALS
| A. | OptiEnzhasassignedallof its IPrelatedtoFRET –Based Detection inthe field of the detection of microbial pathogens to Quaraforaone-time payment of $50,000subjectto thereservation of the Royalty (the“Assignment”). |
Asfurther compensation for the assignment Quara wishes to grant OptiEnz (I) anexclusive perpetual worldwide royalty-free license tocontinue itsresearch usingtheIP and anexclusive perpetual worldwide royalty-free license for OptiEnz touse theIPfor any legalpurposeitdesiressave and except such license will not include the field of the detection of microbialpathogens;
| B. | (ii)aRoyalty, as describedbelow. |
IT ISAGREED asfollows:
| 1. | DEFINITIONSANDINTERPRETATION |
| | |
| 1.1 | Definitions |
Inthis Agreement:
Agreementandthis Agreement meansthe agreementconstitutedbythis document;
Assignment Agreement means that Assignment of Intellectual PropertyRightsAgreement madeApril 13,2020 between OptiEnz andQuara;
Contract Quarter meansthethree-month periods ending on March 31, June 30,September 30,and December 31of each Contract Year;
Contract Yearmeansthe yearbeginning January 1;
Execution Datemeansthe date thisAgreement hasbeen signedby thelast Party tosign it;
NetSales means thegross valueofanyand allconsideration received by Quara and itsAffiliates (collectively “Quara”) fromthe sale of the Product lessthe followingitemsdirectly attributable to thesaleof the Product that arespecifically identified on theinvoice forsuchsale andbornebyQuara asthe seller: (a) discounts and rebates actuallygranted; (b) sales, valueadded, use and other taxesand government charges actually paid,excluding income taxes;(c) import andexport duties actually paid;(d) freight, transport, packing and transit insurance charges actually paid or allowed; and
(e)otheramounts actually refunded, allowed or credited due torejections or returns, butnot exceeding the original invoiced amount;
Partymeans apartytothis Agreement;
OptiEnzmeans OptiEnz Sensors, LLC, aparty to thisAgreement and allof its subsidiaries;
IPmeansthe intellectual property and defined as IP inthe Assignment Agreement;
Productmeansadevicefor detectingbacteriainbio-sampleswherebysuchdevice isproduced using anyof theIP;
Quarterly Payment Deadlinemeansthe day that isforty-five (45)daysafter the last day of anyparticular Contract Quarter.
RoyaltyorRoyalties means recurring compensation paidtoOptiEnz being5%of the Net SalesoftheProductasreservedinthe Assignment up to atotal royalty payment of $450,000 after which the Royaltyshall becalculatedat1.5% of theNet Sales of theProduct asreserved inthe Assignment Agreement.
Technologyhasthe meaning describedin theAssignment Agreement.
Inthis Agreement unless the context otherwise requires:
| | (a) | headingsarefor convenience only and donot affect itsinterpretation; |
| | | |
| | (b) | anobligation or liability assumed by,oraright conferred on, 2or morePartiesbinds or benefits allof themjointlyand each of them severally; |
| | | |
| | (c) | theexpressionperson includes anindividual, the estate of anindividual, acorporation,anauthority, anassociation or joint venture (whether incorporated or unincorporated), apartnership and atrust; |
| | | |
| | (d) | areference to anyparty includes that party’sexecutors,administrators, successors andpermitted assigns, including anyperson taking by wayof novation; |
| | | |
| | (e) | areference to anydocument (including thisAgreement) is tothat document as varied,novated, ratified or replaced from time totime; |
| | | |
| | (f) | areference to anystatute or toany statutory provision includes any statutory modification or re-enactmentof itor any statutoryprovision substituted for it,and allordinances, by-laws, regulations, rulesand statutory instruments (however described) issued under it; |
| | (g) | wordsimporting the singular include the plural (and vice versa)and words indicating agender include every othergender; |
| | | |
| | (h) | referencetoparties, sections, schedules, exhibits or annexures are references to parties, sections, schedules, exhibits andannexurestoor of thisAgreement and areference tothis Agreement includesanyschedule, exhibitor annexure to this Agreement; |
| | | |
| | (i) | whereaword or phraseisgiven adefined meaning, anyother part of speech or grammatical form of that word or phrasehas acorresponding meaning; and |
| | | |
| | (j) | areference to$ordollar is tothe currency ofthe United States of America. |
Quaragrants toOptiEnz anexclusive perpetual license of the IP:
| | (a) | tomake, use, and practice theIP forresearch, clinical, teaching, or othernon-commercial purposes,but notforpurposesofcommercialdevelopment, use,manufacture, ordistribution ofany product in thefield ofthe detection ofmicrobialpathogensother than as authorized with the writtenconsent ofQuara; and |
| | | |
| | (b) | tomake, use, and practice theIP forresearch, clinical, teaching, or othernon-commercial purposesas well asforany commercial purposes including but not limited tocommercialdevelopment, use, manufacture, ordistributionof anyproductin any fieldsaveand except for the field of thedetectionof microbialpathogens.Quara covenants not to usethe IP for all ofthe licensed IP rights granted to OptiEnz as described inthis paragraph 2.1(b). |
| 2.2 | Limitation of Rights |
| | |
| | OptiEnz shall havenorights with respect to theIP except as maybe expressly granted hereunder. OptiEnz shall not apply for any patent or other right and shall not divulgeor disclose anyinformation, material or documents, concerning thisAgreement or therights contained hereunder or make available in any wayor use theaforesaid Product, except asexpressly providedin thisAgreement, withouttheprior written consent of Quara. |
| 2.3 | Commercial Rightsinrespect of IPdeveloped using IP |
OptiEnz agrees that the IP, or any other intellectual property developed from research facilitatedbytheIP inthe field of thedetection of microbial pathogens,shall not beused asthe basisofacommercial product or service or otherwise adapted to circumventthe need for obtaining alicense from Quarafortheuse of the IPotherthanasspecified bythis Agreement or withthewritten consent of Quara.
| 3.1 | Licensing Fees paid to OptiEnz |
| | |
| | Duringthe termof this Agreement Quara willpay the Royaltyon Net Salesineach Contract Quarter on or before the Quarterly Payment Deadline forsuchContractQuarter. The Royalty will benet of any applicable withholding taxes. |
Utilizingthe reportform inAppendix1, Quara willprovide toOptiEnz aquarterly payment and royaltyreport and payment of the amount due by theQuarterly PaymentDeadline.
Quaraand itsAffiliates willpermit OptiEnz or itsrepresentatives, atOptiEnz’s expense, toperiodically examinebooks, ledgers, andrecords during regular business hours,atQuara’s or itsAffiliate’splaceof business, on atleast thirty (30) days advancenotice, to theextentnecessary toverify anypayment or report required under this Agreement. For each licensee of Quara, Quarashall obtain such audit rights for OptiEnz and itself. If Quaraconductsanaudit of thelicensee’s records,Quarawill furnish toOptiEnz acopy of the findings from such audit. No more than oneauditof Quara,each Affiliate,andeach licensee shall beconducted under this Section 3.3in anycalendar year.If anyamounts duetoOptiEnzhavebeen underpaid, then Quara willimmediatelypayOptiEnz the amount of such underpayment. Such audits mayatOptiEnz’s solediscretion, consistof aself-audit conducted byQuara atQuara’s expenseand certifiedinwriting by anauthorized officerof Quara.
| 3.4 | Licenseforfieldofmicrobial pathogen detection |
In theevent that Quara doesnot paycumulativeRoyalties toOptiEnzin anamountgreaterthan $250,000 by adate thatisthe earlier of:
| | a) | thatdaythatistwo years fromthe firstcommercial sale; and |
| | | |
| | b) | thatdaythatis five years fromthe date of thisAgreement, |
then OptiEnzwill have alicensetouse the Technology for itsown commercial purposeinthe field of microbial pathogen detection. The said license willterminate once Quara pays toOptiEnz in excessof $250,000 asRoyalties.
| 4. | FURTHER CONSIDERATION |
| | |
| 4.1 | Optiontofurther Intellectual Property |
Inthe event OptiEnz produces or acquiresfurther patentable intellectual property that would beof use increating any further science or products of asimilar nature to theProduct, such asany other similarProduct, Quarashall havethe option to purchaseeachsuchintellectual property for afee of US$100,000 and arunningroyaltyof 1.5% of Net Sales (“Option”).
Any and allpatent expenses related tothe IPor related to thefurther intellectual property described ins. 4.1above if Quaraexercises the said option willbethesole expenseofQuaraand OptiEnz willnot haveany obligation for such expenses.
| 5. | REPRESENTATIONS AND WARRANTIES |
| | |
| 5.1 | Quara Representations and warranties |
As atthe Execution Date, Quarawarrants andrepresents toOptiEnz that:
| | (a) | incorporation:itisduly incorporated andvalidly existsunderthe lawsof its placeof incorporation; |
| | | |
| | (b) | corporatepower: it has thecorporate power to ownits assets and tocarry on its business asitisnow being conducted; |
| | | |
| | (c) | authority: allconsents, licences,approvalsand authorisations required to beobtainedbyit inconnection with theexecution, deliveryand performance ofthisAgreement have beenobtained and are valid and subsisting; |
| | | |
| | (d) | IP:itisthe owner of the IP or otherwise hastheright togrant the licenses granted toOptiEnzinthis Agreement. However, nothinginthis Agreement shall be construed as: |
| | | |
| | | (i)a warrantyor representation by Quara as tothe validity or scope of any of theIPs; |
| | | |
| | | (ii)awarranty or representation that anythingmade,used, sold or otherwise disposed of under the license granted in thisAgreement willor willnotinfringe IPs of third parties; |
| | | |
| | | (iii)anobligationtofurnish any know-how not provided tothe IPs or any services other than thosespecified in thisAgreement; and |
| | | |
| | | (iv)awarranty, express of impliedthat the Productswillbedevelopedorwillbesuccessfulfor any commercial use. |
| 5.2 | OptiEnzRepresentations, Warranties and Covenants |
As at theExecution Date, OptiEnz warrants and represents to andcovenants with Quarathat:
| | (a) | incorporation:it is dulyregistered and validlyexists under thelaws ofits placeof registration; |
| | (b) | corporatepower: it has thecorporate power to ownits assets and tocarry on its business asitisnow being conducted; |
| | | |
| | (c) | authority: allconsents, licences,approvalsand authorisations required to beobtainedbyit inconnection with theexecution, deliveryand performance ofthisAgreement have beenobtained and are valid and subsisting; |
| | | |
| | (d) | costs:OptiEnz willbear allcosts and liabilities relating to theconduct of its business, including but not limitedtothe costandexpense of providing and maintaining its placeof business, the wagesofitsemployees, the payment of commissions or other compensation toitsagentsor independent contractors, and its expenses incurred for or inconnection withitsperformance under or breach of thisAgreement; |
| | | |
| | (e) | nodisparagement: torefrain fromdisparaging Quara and itssubsidiaries or itsProducts, or fromotherwise injuring the reputation and good standing of Quaraand its subsidiaries; |
| | | |
| | (f) | potential customerapproaches: toimmediately notify Quaraof any potential purchaser who approachesOptiEnz inrespect of the Product;and |
| 5.3 | Survival and repetitionofrepresentations and warranties |
Therepresentations and warranties in, or given under, this Agreement including,butnot limited to, section 5.1 andsection5.2shall survive theexecution of this Agreement.
| 6. | CONFIDENTIALITY |
| | |
| 6.1 | Confidential Information |
Theparties agree tobe bound bythe terms and conditions of anMNDA made between the PartiesdatedMarch 26,2019 for the entire termofthisAgreement.
| 7. | NOTICES |
| | |
| 7.1 | Requirements for Notice |
Each notice authorised or requiredto begivento a Partyshall be inwriting and may bedelivered personally or sent byproperly addressed and prepaid mailor email ineach case addressed tothe Party atits address set out insection 7.2,or as thecase may be tosuch other address as it may fromtime to timenotify to theother Parties pursuant to section7.3.
Theinitial address of the Parties shall be asfollows:Inthe case of OptiEnz
| | Address: | 320EastVineDrive, Suite 129, Fort Collins, CO 80524 | |
| Email: | | steve.witt@optienz.com | |
| Attention: | | Chief Executive Officer | |
In the case of Quara:
| | Address: | 1712 Pearl Street Boulder CO, 80302 | |
| Email: | | rreum@cabglobal.com | |
| Attention: | | Executive Chairman | |
EachPartymay fromtime to timechange itsaddressbygiving notice pursuant tosection7.1 tothe other Parties.
Anynoticegiven pursuant to section 7.1 will beconclusively deemed to havebeen received:
| | (a) | inthe case of personal delivery,on the actual day of delivery ifdelivered prior to 5 pm(Pacific Daylight Time) on aBusiness Dayor onthenext following Business Dayifdelivered after 5 pm(Pacific Daylight Time) on aBusiness Dayor on a dayother thanaBusiness Day; |
| | | |
| | (b) | ifsent by mail,on the fifth clear BusinessDayafter the dayof posting; or |
| | | |
| | (c) | ifsent by email,when a deliveryconfirmation report isreceived bythe sender which records thetime that the e-mail wasdeliveredtothe addressee’s e-mailaddress (unless the sender receives a deliveryfailure notification indicating that the e-mail hasnotbeen delivered totheaddressee), |
butif thedelivery or receiptisona daythat isnot aBusinessDayorisafter 5:00 pm(addressee’stime)it isregardedasreceivedat9:00amon the following Business Day.
EachPartyshall sign, executeand do alldeeds, acts,documentsand things asmay reasonably be required bythe other Party toeffectively carry out and give effect to theterms and intentions of this Agreement.
Nomodification or alteration of the termsofthisAgreement shall bebinding unlessmade inwriting dated subsequent tothe date of thisAgreement and duly executed bythe Parties.
NoParty may assign any rightor obligation underthisAgreement without the prior writtenconsent of the other Party.
Ifany provision of thisAgreement isinvalid and not enforceableinaccordance withits terms, allother provisions whichare self-sustaining and capable of separate enforcement without regard tothe invalid provision, shall beand continue to be valid andforcefulinaccordance withtheir terms.
ThisAgreement shall constitute the sole understanding of the Parties with respect to thesubject matter and replaces allother agreements with respect thereto.
ThisAgreement shall begoverned byand construed inaccordance withthe law from timeto timeinthestateof Colorado and the Parties agree tosubmit to thenon-exclusive jurisdiction of thecourts of Colorado andthe courts which hear appeals therefrom.
ThisAgreement may beexecutedinany number of counterparts (including by wayoffacsimile) each of whichshall bedeemed for allpurposes to be anoriginal and allsuch counterparts taken together shall be deemed to constitute one and the same instrument.
BALANCE OFPAGELEFT BLANK
| EXECUTEDby the Parties as an agreement. | |
| | | |
| EXECUTED BY | ) | |
| OPTIENZ SENSORS, LLC | ) | |
| in accordance with its constituent | ) | |
| documents and place of incorporation: | ) | |
| | | |
| /s/Stephen Witt | | |
| Stephen Witt | | |
| Chief Executive Officer | | |
| | | |
| EXECUTED BY | ) | |
| QUARA DEVICES INC. | ) | |
| in accordance with its constituent | ) | |
| documents and place of incorporation: | ) | |
| | | |
| /s/Rodney W. Reum | | |
| Rodney W. Reum | | |
| Executive Chairman | | |
Appendix 1
QUARTERLY ROYALTY
REPORT
Period CoveredFrom:_________________________________Through:_______________________________
PreparedBy:_______________________________________ Date: _________________________________
Approved By:_______________________________________ Date:_________________________________
Product Line Details: Line:____________________________TradeName: ______________________________
ReportCurrency:[ ]U.S.Dollars [ ]Other: ______________________
| Country | | Gross Sales | | Allowances | | NetSales | | RoyaltyRate | | Royalty Amount | |
| | | | | | | | | 5% | | | |
| | | | | | | | | 1.5% | | | |
Total Royalty: ____________
Conversion Rate: ___________
TotalRoyaltyin U.S. Dollars: ___________
