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Exhibit 10.76
THIS AGREEMENT is made the 18th day of April 1996 BETWEEN:
(1) INNOVATIVE TECHNOLOGIES LIMITED, whose principal office is at Road Three,
Winsford Industrial Estate, Cheshire CW7 3PD ("IT"); and
(2) WILSHIRE TECHNOLOGIES INC., whose principal office is at 5441 Avenida
Encinas, Suite A, Carlsbad CA 92008, United States of America ("Wilshire").
WHEREAS:
(A) IT and Wilshire entered into a Product Development and Licence Agreement for
Wound Care Products on 25 May 1993 ("the Wound Care Agreement").
(B) IT and Wilshire have reached agreement on the following terms for the
purpose of termination of the Wound Care Agreement and for the transfer of
"HydroDERM" intellectual property rights by Wilshire to IT.
IT IS HEREBY AGREED as follows:-
1. DEFINITIONS
Terms used in this Agreement shall have the same meanings as given to them
in Clause 1 of the Wound Care Agreement. In addition, in this Agreement:-
"Glove Agreement" means the Product Development and Licence
Agreement for Gloves entered into by IT and
Wilshire on 20 June 1993;
"HydroDERM Know-how" means all Wilshire's technical information
(including that comprised in techniques,
manufacturing systems, control systems,
designs, specifications, drawings,
components, lists, manuals and instructions)
developed by Wilshire and which relates
solely to Wilshire's HydroDERM film delivery
system, together with Wilshire's customer
list concerning the sale of HydroDERM
products, provided that
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HydroDERM Know-how shall not include any
information which is confidential by reason of
agreement with third parties:
"HydroDERM Patent" means the patent short particulars of which
are set in Schedule 1, relating to Wilshire's
HydroDERM film delivery system;
"HydroDERM Trade Marks" means the trade mark registrations short
particulars of which are set out in Schedule
2;
"Related Agreement" means the Agreement between IT and Wilshire
of the same date as this Agreement, in respect
of certain matters concerning the Glove
Agreement dated 20 June 1993.
2. TERMINATION
In consideration of the parties' respective obligations in this Agreement
the parties agree that the Wound Care Agreement is hereby terminated with
immediate effect and each party acknowledges that it has and shall have no
claim against the other arising out of any breach or default in respect of
any of the provisions of the Wound Care Agreement and hereby waives and
releases the other party hereto from any claims, proceedings or demands
whatsoever of any nature, whether or not accrued at the date of this
Agreement, arising out of or in connection with the Wound Care Agreement.
The parties' mutual obligations under Clauses 3, 4 and 5 below are accepted
in full and final settlement of any rights or claims whatsoever which either
party may have arising out or in connection with the Wound Care Agreement.
For the avoidance of doubt the waiver and release by IT will include any
amounts which may be unpaid by Wilshire concerning the Wound Care Agreement,
including without limitation royalties and sums claimed for materials of
approximately [Pound Sterling] 9,935 as shown on Schedule 3 hereto.
3. IT PAYMENT
In consideration for the transfer of rights pursuant to Clause 4, IT will
pay to Wilshire the sum of [Pound Sterling] 60,000 (sixty thousand pounds
Sterling), by wire transfer to Wilshire's bank account in the US notified by
Wilshire, within 7 days of the signing hereof. The
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parties agree that this sum shall be treated as paid immediately by set off
against the payment of the same amount due from Wilshire to IT under the
Related Agreement.
4. RIGHTS TO HYDRODERM
4.1 Wilshire will sell and transfer absolutely to IT the HydroDERM
Know-how, the HydroDERM Patent and the HydroDERM Trade Marks, free
of any liens charges, encumbrances or third party interests, save
that in the case of the trademarks and applications indicated in
Schedule 2 as being in the name of a distributor (which for the
avoidance of doubt do not include HydroDERM Trade Marks in the USA
and Mexico which are owned by Wilshire and are subject to inclusion
in this sale and transfer) Wilshire's obligation shall be to use
best endeavours to so sell and transfer.
4.2 As soon as practicable after the date of this Agreement but in any
event within 90 days from the date of this Agreement, Wilshire will
execute formal assignments of each of the HydroDERM Patent and the
HydroDERM Trade Marks, in forms of assignment reasonably requested
by IT for the purpose of registration of IT as the proprietor of
the HydroDERM Patent and HydroDERM Trade Marks in their respective
countries of registration, save that in the case of the trademarks
and applications indicated in Schedule 2 as being in the name of a
distributor (which for the avoidance of doubt do not include the
HydroDERM Trade Marks in the USA and Mexico which are owned by
Wilshire and are subject to inclusion in this execution of formal
assignments) Wilshire's obligation shall be to use best endeavours
to execute such assignments or to procure the execution of such
assignments by the distributor directly in favour of IT.
4.3 Within 30 days from the date of this Agreement, Wilshire will
transfer to IT the HydroDERM Know-How by the transfer to IT of a
full set of documentation, manuals, instructions, designs,
specifications and drawings comprising the HydroDERM Know-How,
whether in written or machine readable form.
5. 510(K) APPROVAL AND INVENTORIES
5.1 As soon as practicable after the date of this Agreement but in any
event within 90 days from the date of this Agreement Wilshire will
use all reasonable
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efforts to transfer to IT the benefit of the Section 510(K)
approval for Wilshire's HydroDERM products to the extent
possible in accordance with the US Food and Drug Administration
(FDA) regulations. Each party shall cooperate in making the
necessary applications to the regulatory authorities for this
purpose.
6. CONFIDENTIAL INFORMATION
Termination of the Wound Care Agreement shall not affect the parties'
respective obligations under Clause 18 of the Wound Care Agreement in
respect of Confidential Information disclosed during the term of that
Agreement.
7. GENERAL
7.1 This Agreement is conditional on the Related Agreement being
executed and taking effect on the same date as this Agreement.
In the event that the Related Agreement is not excluded on the
same date as this Agreement, this Agreement shall be of no
effect.
7.2 This Agreement supersedes all prior agreements, understandings
and communications between the parties whether oral or in
writing in relation to the termination of the Wound Care
Agreement.
7.3 This Agreement shall be governed by and construed in accordance
with English Law.
7.4 This Agreement may be in any number of counterparts each of
which when executed and delivered shall be an original but
all the counterparts together shall constitute one and the same
instrument.
AS WITNESS the hands of the duly authorised representatives of IT and Wilshire
the day and year first above written.
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SIGNED by D.K. Gilding )
------------------------------ ) /s/ D.K. Gilding
on behalf of INNOVATIVE TECHNOLOGIES LIMITED )
SIGNED by Stephen Scibelli )
------------------------------ ) /s/ Stephen Scibelli
on behalf of WILSHIRE TECHNOLOGIES INC. )
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SCHEDULE 1
THE HYDRODERM PATENT
Method of Manufacturing a Wound Dressing Delivery System
US Patent No. 08/173,638
Filed, December 29, 1993
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SCHEDULE 2
THE HYDRODERM TRADE MARKS
County Registration No. Filing Date
USA 1,874,486 July 2, 1992
Mexico 447,089 December 28, 1992
Benelux* 557,119 April 13, 1994
Denmark* VR 5617 1995 September 1, 1995
Application No. Filing Date
Norway* 94.2384 April 22, 1994
Sweden* 94-03-605 March 29, 1994
* Trademark held/Application made in the name of Distributor: Wilshire is
making arrangements to transfer to Wilshire for assignment to IT.
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SCHEDULE 3
INVOICES -- WILSHIRE MEDICAL PRODUCTS
[POUND STERLING]
2nd January 1994 B/F Balance 1505.00
11th January 1994 Invoice B.1204 1495.26
3rd February 1994 Invoice B.1227 3073.50
1st April 1994 Invoice B.1252 204.12
30th May 1995 Invoice B.1419 3657.60
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Total: 9935.48
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