Exhibit 10.13
AGREEMENT
THIS AGREEMENT IS MADE AT PUNE ON THIS 7TH DAY OF APRIL 1995.
BETWEEN
DR. BHUSHAN PATWARDHAN of Pune, Indian Inhabitant, residing at 1471, Shukrawar
Peth, Tulshibag Chowk, Pune - 411002, (hereinafter referred to as
"Dr. PATWARDHAN " which expression shall unless repugnant to the context or
meaning thereof be deemed to mean and include his heirs, legal representatives,
executors and administrators) of the FIRST PART.
AND
BIO-VED, INC., a company incorporated under the laws of U.S.A. and having its
office at 911 Bern Court # 110, San Jose, CA 95112, U.S.A. (hereinafter
referred to as "the Company" which expression shall unless repugnant to the
context or meaning thereof be deemed to mean can include its successors and
assigns) of the SECOND PART.
WHEREAS Dr. Patwardhan had developed a pharmaceutical preparation (named by
him as RA-1 and hereinafter referred to as "RA-1"). Dr. Patwardhan is the
absolute owner of RA-1 and process for extraction and manufacture of RA-1.
According to him, the said formulation RA-1 is useful in the method of
treating musculoskeletal disease;
AND WHEREAS Dr. Patwardhan has filed two Applications for patents in India
for and in respect of RA-1 and the proprietary and ownership in RA-1 and its
uses and applications on 17th August, 1994 under No. 188/BOM/93 and second
application on 23rd August, 1994 under No. 189/BOM/93 with the Patent Office,
Bombay and the said Applications are pending for registration;
AND WHEREAS by the Agreement dated 28th September 1994, made between the
Company and Dr. PATWARDHAN, the latter agreed to grant to the Company the
exclusive right, title and interest in the formulation RA-1 and its uses,
extraction, and machinery to the Company on the terms and conditions stated
therein;
AND WHEREAS Dr. Patwardhan has agreed to grant to the Company the exclusive
right for the use, manufacture and sales of formulation RA-1 and patents
thereof with all future improvements and additions thereto to the Company.
NOW THIS INDENTURE WITNESSETH AND IT IS HEREBY AGREED BY AND BETWEEN THE
PARTIES HERETO AS FOLLOWS:
1. Dr. Patwardhan hereby agrees for the consideration hereinafter mentioned
to grant to the Company the exclusive license and rights to make 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 including India. (This rights are hereinafter referred
to as "Rights in RA-1").
2. The entire rights in respect of the said formulation RA-1, its method of
extraction and manufacture and commercial exploitation of the said
formulation and all the rights, title and interest in RA-1 shall vest in
the Company and Dr. Patwardhan shall not be entitled to interfere in it in
any manner.
3. a) Dr. Patwardhan declares that he has received the Examination Reports
from the Patent Office in respect of the said Patent Applications. Dr.
Patwardhan will respond to the Patent Office within a period of not
more than 30 days and will furnish the Company with a complete file of
the above referred Applications and copies of all the papers filed in
and received from the Patent Office in India and keep the Company
informed of the progress of the Applications.
It is hereby agreed by and between the parties hereto that following
its review of the Applications, the Company will prosecute the said
Patent Applications and Dr. Patwardhan agrees to furnish all
information, extend cooperation and render all assistance to the
Company and its advocates for prosecution of the said Patent
Applications till the patents are sealed and issued in his favor.
Dr. Patwardhan agrees to sign Form of Authorization in favor of the
Advocates and Patent Attorney of the Company. Dr. Patwardhan also
agrees to sign and execute all applications, letters and other papers,
as may be required by the Company or its Advocates from time to time.
b) The Company shall pay to Dr. Patwardhan a sum of [*****] only
(inclusive of all costs, expenses, fees and charges) for two patents
in respect of RA-1, including the patents for the said formulation and
its true use, extraction and method of manufacturing. In case patents
are not granted by the Patent Office within two years from February 1,
1995, Dr. Patwardhan will return to the Company within 60 days
thereafter, [*****] plus interest at the rate of 10% per annum up
to the date of payment. In case only one patent is granted by the
Patent Office within two years and the other rejected, Dr. Patwardhan
will return to the Company within 60 days thereafter, [*****] plus
interest at the rate of 10% per annum up to the date of payment. In
both the above cases, the period of two years may be extended by the
Company at its sole discretion. 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. In the event of the Company
failing to commence the marketing operation in respect said product in
India within the aforesaid period of one year, Dr. Patwardhan shall
have all rights to the said product in India.
4. Dr. Patwardhan shall in regard to the above referred applications, if and
when patents have been granted, and in regard to the patents execute a
formal license or several licenses as
* Confidential provisions omitted and filed separately with the Commission.
the case may require, and the parties shall register with the Patent
Office, Bombay. Any such formal license shall operate subject to the terms
of this agreement and the terms of such formal license shall be deemed to
be incorporated into this agreement. The license hereinafter agreed to be
granted is exclusive both of Dr. Patwardhan and those claiming through him,
and others.
5. Dr. Patwardhan warrants that there are no subsisting licenses in respect of
formulation RA-1 and he covenants that no further licenses will be granted
to any other person. Dr. Patwardhan also confirms that no other person
other than himself has any right, title, interest or claim in the
development of the formulation 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 belong exclusively to
him.
6. Pending the grant of patents on the applications, payments made by the
Company under this Agreement expressed to be or implied by way of royalty
on sales of the formulation RA-1 shall not operate as an estoppel so as to
prevent the Company from contending that the formulation RA-1 does not
infringe the claims allowed on such applications or any of them.
7. Any or all of the formulation RA-1 manufactured by the Company may be
exported for use or sale to any country of the world notwithstanding that
Dr. Patwardhan may be in possession of intellectual property rights in
respect thereof and the rate of payment in respect thereof by the Company
to Dr. Patwardhan shall be same as for formulation RA-1 manufactured and
sold in India.
8. The company is hereby granted the right to grant sublicenses to its
affiliated and/or associated companies to use, manufacture and/or sales of
the said formulation RA-1. Sublicenses hereunder shall be non-exclusive and
non-assignable. In the event of sublicensing, the Company shall pay to Dr.
Patwardhan, [*****] of the royalty received by the said Sublicensing.
9. Nothing in this agreement shall restrict the right of the Company to enter
into sub-contracts for the manufacture of the said formulation RA-1.
10. a) The Company shall pay to Dr. Patwardhan for the license and other
rights hereby secured as from the first day of sale in India, a
royalty calculated at the rate of [*****] of the gross revenue (defined
as Sales proceeds received by BIO-VED before any operating expense or
tax liability has been deducted) earned by it by marketing and sale of
the said formulation RA-1. The royalty shall be paid after the accounts
are settled by the Company at the end of each accounting year.
b) The Company shall at its decision, elect to market RA-1 in India, in
advance of the granting of the said patents. The royalty, as defined
in Clause 10a, above, shall be calculated at the same rate. If the
patents are not granted during
* Confidential provisions omitted and filed separately with the Commission.
which time the Company, has commenced marketing in India, the rights
of the company, as defined in Clause 3-b shall nonetheless apply. Dr.
Patwardhan and the Company agree to abide by all other clauses of this
Agreement even in the event that the Patents are not granted.
c) Dr. Patwardhan shall do all such acts and things as may be necessary
to maintain and keep on foot the patents.
d) Dr. Patwardhan agrees and undertakes not to abandon or allow to lapse
any such patents and not to amend the specification of any of them or
the specification accompanying any application for patent within the
scope of this Agreement without the consent of the Company.
e) Dr. Patwardhan shall defend every proceeding or application in the
Patent Office for opposition to the grant of or for revocation of the
patents or the Applications or any of them or in respect of
Applications for improvement inventions by Dr. Patwardhan.
f) The Company shall pay for all patent registration fees and all costs
and fees payable in respect of the Applications. In respect of
Applications for patent based on improvement inventions within the
terms of the Agreement, BIO-VED will decide when and if to apply for
patent(s) in respect thereof, and shall bear the costs and fees
thereof.
g) The Company will pay for all renewal fees and other obligations in
this clause and the Company shall do all things in its power towards
the maintenance of the validity and enforceability of the patents in
India and for the prevention of the infringement thereof.
11. a) If any infringement or threatened infringement of any patents comes to
the notice of the Company, it shall, forthwith, notify to Dr.
Patwardhan giving particulars thereof.
b) If Dr. Patwardhan fails to take any action against the infringers
within a period of 10 days from the date of the notice, in that event
the Company is at liberty, at its own costs, to take an action against
the infringers.
12. a) If any proceedings are threatened or commenced by a third party
against either the Company or sublicensee or any of their customers or
Dr. Patwardhan on the ground that the said formulation RA-1 infringe
any patent monopoly rights vested in such third party, the party so
threatened or sued shall inform the other forthwith and the matter
shall be referred to leading patent counsel for the purpose of
obtaining his advice on whether a defense or a threat action will have
a reasonable chance of successful outcome and whether there any
circumstances making it imprudent to defend or commence the
proceedings.
b) If both Dr. Patwardhan and the Company decide that any such
proceedings shall be defended, the Company shall bear the whole legal
costs thereof not including any damages and costs awarded against him
in favor of such third party.
13. Subject to the provisions for termination here in after contained, this
agreement shall operate as from 28 day of September, 1994 and shall
continue in force for the entire terms of the patents.
14. Dr. Patwardhan may terminate this Agreement if the Company fails to perform
any of the terms hereof and fails to remedy such breach within 30 days of a
notice from Dr. Patwardhan to remedy the same.
15. The Company shall pay the legal costs incurred in respect of the
preparation of all drafts and engrossment's of this Agreement and of any
formal license hereunder.
16. This Agreement shall enure to the benefit of and be binding upon the
parties hereto and their successors-in-title or assigns as the case may be.
17. Dr. Patwardhan hereby agrees that he shall, at the request of the company,
sign and execute all such licenses, deeds, documents, applications,
instruments and writings as may hereinafter be required by the Company for
the purpose of vesting in the Company the Rights in RA-1.
IN WITNESS WHEREOF THE PARTIES HERETO HAVE EXECUTED THESE PRESENTS THE DAY AND
YEAR FIRST HEREIN ABOVE WRITTEN.
Signed and Delivered by
s/Bhushant Patwardhan s/Barry Wald
Dr. BHUSHAN PATWARDHAN BARRY WALD
Pune 411 030. President,
BIO-VED, INC. USA.
In the presence of
1) 1) s/Ajit P. Chitre
AJIT P. CHITRE
10, Vishnubaug Society,
Pune 411 016. INDIA.
2) 2)