Exhibit 10.11
THIS AGREEMENT IS MADE AT PUNE ON THIS 28 DAY OF SEPTEMBER 1994.
BETWEEN
BIO-VED, INC. 911, Bern Court, # 110, San Jose, CA 95112 USA (hereinafter
referred to as THE COMPANY) of the FIRST PART.
AND
DR. BHUSHAN PATWARDHAN 1471, Shukrawar Peth,
Tulshibag. Chowk, Pune 2, (Hereinafter referred to as DR. PATWARDHAN) of the
SECOND PART.
WHEREAS
1. REPRESENTATIONS:
Dr. Patwardhan represented to the Company that:
a) He has developed a PHARMACEUTICAL FORMULATION (named by him as RA-1
and hereinafter referred to as RA-1).
b) He is the absolute owner of RA-1 and process for extraction and
manufacture of RA-1.
c) The said formula RA-1 is useful in the method of treating
musculoskeletal diseases.
d) Dr. Patwardhan has filed an application for a patent in the United
States of America under Application No. OR/273, 189 on July 11th 1994
for method of treating musculoskeletal diseases and with the use of
the formula RA-1.
e) Dr. Patwardhan has also filed two applications for patents in India
for and in respect of RA-1, and the property and ownership in RA-1 and
the method of manufacture/extraction of RA-1 and its uses and
application, on 17.8.1994 and 2nd application on 23rd August, 1994.
f) No other person other than Dr. Patwardhan has any right, title
interest or claim in the development of the formula RA-1 and its uses,
extraction and manufacture; and that the ownership and/or intellectual
property in RA-1 and the development manufacture and extraction of
RA-1 belongs exclusively to Dr. Patwardhan.
2. The representation made by Dr. Patwardhan and briefly narrated in para (1)
above from the basis of this agreement.
3. GRANT:
Dr. Patwardhan agrees to grant to the Company, the exclusive rights for the
use, development, extraction, manufacture, sale and commercial exploitation
of formulation RA-1, either as sole formulation or in combination with
other products or formulation or formulations throughout the world. (These
rights are hereinafter referred to as Rights in RA-1).
4. PAYMENTS:
In anticipation of this agreement, the Company had started clinical and
other trials. If the Company is satisfied about the use of the said RA-1
for treatment of musculoskeletal diseases and/or any other disease, for
which the Company may use the said formulation RA-1, then the Company
agrees to make the following payments to Dr. Patwardhan.
[*****] After the Company is satisfied about the clinical and other
trials of the formulation RA-1; the trials are expected to
be completed in the approximate period of three months
hereto.
[*****] Upon signing of the definitive documents, actually
transferring the property and rights in RA-1, shall be
deposited in an escrow account by the company and be payable
to Dr. Patwardhan with interest, if any, paid by the Bank on
the US patent application, filed by Dr. Patwardhan on July
11, 1994, being granted.
[*****] After vetting by the US Attorney of the Company of the
application for US patent made by Dr. Patwardhan. This
vetting is expected within one month of Dr. Patwardhan
giving all the papers relating to the patent and the product
to the Company. This amount shall be paid only if U.S.
attorney of the Company is satisfied that the formulation
and the method of treatment and the composition of the
formulation RA-1 is patentable under US law.
5. In addition to the aforesaid sum, the Company shall pay to Dr. Patwardhan,
a sum of [*****] (inclusive of all costs, expenses, fees and charges)
per patent for two patents on Dr. Patwardhan obtaining two Indian patents
in respect of RA-1 including the patents for the said formulation and its
true use, extraction and method of manufacture.
6. CONFIDENTIALITY:
The documents and information given by Dr. Patwardhan to the Company shall
be treated as confidential by the Company and shall not be disclosed by
anybody except for the purpose of evaluation by the U.S. and Indian
Attorneys of the Company and Attorneys office for ascertaining whether the
RA-1 is mentioned of its manufacture, production and extraction as also its
use and application for treatment of diseases is patentable under U.S. Law.
* Confidential provisions omitted and filed separately with the Commission.
7. The results of the clinical and other trials commenced by the Company
and/or under the authority of the Company, shall be kept secret by Dr.
Patwardhan and he shall not disclose the said results to anyone; nor shall
Dr. Patwardhan disclose any information coming to his knowledge regarding
the company or regarding any matter in connection with this agreement, to
anybody except with the written consent of the Company.
8. MARKETING:
The Company intends to use the said formulation and/or sell the said
formulation in the market for treatment of musculoskeletal diseases or any
other diseases. The Company intends to bring in the market, the said
formulation within a period of one year of the granting of two patents
under in India as mentioned earlier, as well as FDA approval. The Company
intends to market the said formulation worldwide within a period of 7 years
from the time of the signing of the definitive Agreement. It is intention
of the parties to market the formulation RA-1 as early as possible. The
Company expects to market the product in India as soon as possible and Dr.
Patwardhan agrees to co-operate with the company in it.
9. In the event of the Company failing to commence the marketing operation
in respect of the said product in India within the aforesaid period of one
year, Dr. Patwardhan shall have all rights to the said product in India. In
the event of the Company altogether failing to commence the marketing of
the said formulation within a period of 7 years anywhere in the world other
than India, then Dr. Patwardhan shall have all rights to the said product
outside India.
10. ROYALTY:
The Company shall pay to Dr. Patwardhan a royalty calculated at the rate of
[*****] of the gross revenue earned by it by marketing and sale of the said
formulation. The royalty shall be paid after the accounts are settled by
the Company at the end of each accounting year.
11. SUBLICENSING:
The Company shall be entitled to sublicense the use, manufacture and/or
sale of the said formulation RA-1. In the event of sublicensing, the
Company shall pay to Dr. Patwardhan [*****] of the royalty received by the
said sublicensing.
12. VESTING OF RIGHTS:
The entire rights in respect of the said formulation, its method of
extraction and manufacture and a commercial exploitation of the said
formulation and all the rights in RA-1 shall vest in the Company and Dr.
Patwardhan shall not be entitled to interfere in it any manner.
13. ARBITRATION:
In the event of any dispute arising between the parties regarding this
agreement and/or interpretation of the terms and conditions of this
agreement and/or liabilities arising out of this agreement, the same shall
be referred to an arbitration of two arbitrators, one to be
* Confidential provisions omitted and filed separately with the Commission.
appointed by each party and in the event of arbitrators not being unanimous
in their decisions, the matter shall be referred to an umpire to be chosen,
and appointed by the arbitrators. The arbitration proceedings may be held
in India but the matter shall be decided in accordance with the law of the
country about which or within whose territory the subject matter of the
dispute arises, or relates.
IN WITNESS WHEREOF the parties have signed this Deed on the date and year
mentioned herein.
Signed by
s/Barry Wald
Mr. Barry Wald
President,
On Behalf of BIO-VED, Inc. USA,
On 28th September, 1994. (Party of the First Part)
Signed by
s/Bhushan Patwardhan
Dr. Bhushan Patwardhan,
on 28th September, 1994
at Bombay. (Party of the Second Part)
In the presence of :
1. s/Ajit P. Chitre
Ajit P. Chitre,
10, Shri Vishnubaug Society,
Pune 411 016.
2 .