PATENT ASSIGNMENT AGREEMENT
Exhibit 10.4
This Patent Assignment Agreement (this “Agreement”), dated as of [•], 2026 (the “Effective Date”), is by and between BioVie Inc., a Nevada corporation, having an office at ▇▇▇ ▇ ▇▇▇ ▇▇▇▇, ▇▇▇▇▇ ▇▇▇, ▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇ ▇▇▇▇▇ (“Assignor”) and Option Therapeutics Inc., a Delaware corporation, having an office at ▇▇▇ ▇ ▇▇▇ ▇▇▇▇, ▇▇▇▇▇ ▇▇▇, ▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇ ▇▇▇▇▇ (“Assignee”).
WHEREAS, Assignor is the sole and exclusive owner of certain patents and patent applications listed on Schedule A attached hereto (collectively the “Patents”);
WHEREAS, Assignor and Assignee are entering into a separation agreement concurrently with the execution of this Agreement in order to effect the transfer of certain assets and the assumption of certain liabilities described thereunder (the “Separation Agreement”); and
WHEREAS, Assignor, in connection with the Separation Agreement, wishes to assign the Patents to Assignee.
NOW, THEREFORE, in consideration of good and valuable consideration, the receipt and sufficiency of which is hereby acknowledged, Assignor and Assignee agree as follows:
| 1. | Assignment of Patents. Assignor hereby sells, transfers, conveys, assigns and delivers to Assignee, and Assignee hereby accepts, all right, title and interest in and to (i) the Patents and any and all other applications, both United States and foreign, which the undersigned may file, either solely or jointly with others, on said invention or improvements, and in any and all Letters Patent of the United States and foreign countries, which may be obtained on any of said applications, and in any reissue or extension of such patents, and all rights of priority provided by the International Convention; (ii) all rights to sue for past, present, and future infringements of the Patents, including the right to settle suits involving such rights; (iii) all income, royalties, damages, claims, and payments now or hereafter due or payable under or with respect to the Patents, including, without limitation, damages, claims, and payments for past, present, and future infringements thereof; and (iv) the right to assign the Patents and the associated rights conveyed herein, in each case (i) through (iv) to be held and enjoyed by Assignee for its own use and benefit, and for the benefit of its successors, assigns, and legal representatives. |
| 2. | Assistance. Assignor shall execute such other documents, provide such assistance, and perform such other actions, in each case at Assignee’s expense, as may be reasonably required to: (i) carry out the purposes of the Agreement; and (ii) vest and record title of the Patents in the name of Assignee or its designee or successor (including, without limitation, providing any additional signed and notarized copies of this Agreement that may be required of any government authority). |
| 3. | Successors. This Agreement shall inure to the benefit of and is binding upon the respective successors and assigns of Assignor and Assignee. |
| 4. | Governing Law. This Agreement shall be governed by, and construed in accordance with, the laws of the United States and the State of Delaware. |
| 5. | Counterparts. This Agreement may be executed in separate counterparts, each of which is deemed to be an original and which taken together constitute one and the same agreement. |
| 1 |
IN WITNESS WHEREOF, Assignor and Assignee caused this Agreement to be duly executed as of the Effective Date.
| Assignor: | ||
| BioVie Inc. | ||
| By: | ||
| Name: ▇▇▇▇▇ Do | ||
| Title: President and Chief Executive Officer | ||
| Assignee: | ||
| Option Therapeutics Inc. | ||
| By: | ||
| Name: ▇▇▇▇▇ ▇▇▇ | ||
| Title: Treasurer | ||
Signature page to Patent Assignment Agreement
| 2 |
Schedule A
Patents
| Patent Application Title | Country | Status | Filed Date | Grant Date | Patent App. No. | Patent No. | Expiration Date |
| Treatment of Ascites | United States of America | NA | 2015-06-30 | 62/186,638 | |||
| Treatment of Ascites | United States of America | NA | 2015-12-15 | 62/267,510 | |||
| Treatment of Ascites | United States of America | NA | 2016-04-12 | 62/321,558 | |||
| Treatment of Ascites | Patent Cooperation Treaty | NA | 2016-06-30 | PCT/US2016/040284 | |||
| Treatment of Ascites | Japan | Application | 2016-06-29 | 2025-107051 | |||
| Treatment of Ascites | United States of America | Abandoned | 2016-04-19 | 15/491,613 | |||
| Treatment of Ascites | United States of America | Granted | 2019-04-09 | 2022-06-21 | 16/379,446 | 11,364,277 | 2036-06-30 |
| Treatment of Ascites | United States of America | Published | 2025-06-12 | 19/236,445 | |||
| TREATMENT OF ASCITES | European Patent | Granted | 2016-06-30 | 2023-11-29 | 16818751.6 | 3347032 | 2036-06-30 |
| TERLIPRESSIN FOR THE TREATMENT OF ASCITES DUE TO LIVER CIRRHOSIS ADMINISTERED AS A CONTINUOUS INFUSION | Belgium | Granted | 2016-06-30 | 2023-11-29 | 16818751.6 | 3347032 | 2036-06-30 |
| TERLIPRESSIN FOR THE TREATMENT OF ASCITES DUE TO LIVER CIRRHOSIS ADMINISTERED AS A CONTINUOUS INFUSION | Switzerland | Granted | 2016-06-30 | 2023-11-29 | 16818751.6 | 3347032 | 2036-06-30 |
| TREATMENT OF ASCITES | Germany (Federal Republic of) | Granted | 2016-06-30 | 2023-11-29 | 16818751.6 | 602016084428.1 | 2036-06-30 |
| TREATMENT OF ASCITES | European Patent | Published | 2016-06-30 | 23212473.5 | |||
| TERLIPRESSIN FOR THE TREATMENT OF ASCITES DUE TO LIVER CIRRHOSIS ADMINISTERED AS A CONTINUOUS INFUSION | Spain | Granted | 2016-06-30 | 2023-11-29 | 16818751.6 | 3347032 | 2036-06-30 |
| TERLIPRESSIN FOR THE TREATMENT OF ASCITES DUE TO LIVER CIRRHOSIS ADMINISTERED AS A CONTINUOUS INFUSION | France | Granted | 2016-06-30 | 2023-11-29 | 16818751.6 | 3347032 | 2036-06-30 |
| TERLIPRESSIN FOR THE TREATMENT OF ASCITES DUE TO LIVER CIRRHOSIS ADMINISTERED AS A CONTINUOUS INFUSION | United Kingdom | Granted | 2016-06-30 | 2023-11-29 | 16818751.6 | 3347032 | 2036-06-30 |
| TERLIPRESSIN FOR THE TREATMENT OF ASCITES DUE TO LIVER CIRRHOSIS ADMINISTERED AS A CONTINUOUS INFUSION | Ireland (Republic of) | Granted | 2016-06-30 | 2023-11-29 | 16818751.6 | 3347032 | 2036-06-30 |
| TERLIPRESSIN FOR THE TREATMENT OF ASCITES DUE TO LIVER CIRRHOSIS ADMINISTERED AS A CONTINUOUS INFUSION | Italy | Granted | 2016-06-30 | 2023-11-29 | 16818751.6 | 502024000010561 | 2036-06-30 |
| TERLIPRESSIN FOR THE TREATMENT OF ASCITES DUE TO LIVER CIRRHOSIS ADMINISTERED AS A CONTINUOUS INFUSION | Netherlands | Granted | 2016-06-30 | 2023-11-29 | 16818751.6 | 3347032 | 2036-06-30 |
| Formulations of Terlipressin | United States of America | NA | 2019-05-22 | 62/851,366 | |||
| Formulations of Terlipressin | Patent Cooperation Treaty | NA | 2020-05-22 | PCT/US2020/034269 | |||
| Formulations of terlipressin | Australia | Granted | 2020-05-22 | 2020279395 | |||
| Formulations of Terlipressin | Brazil | Published | 2020-05-22 | BR112021023274-5 | |||
| Formulations of Terlipressin | Canada | Application | 2020-05-22 | 3,141,488 | |||
| Formulations of Terlipressin | Chile | Granted | 2020-05-22 | 2024-05-07 | 202103065 | 68965 | 2040-05-22 |
| Formulations of Terlipressin | China | Granted | 2020-05-22 | 2025-03-18 | 202080050758.X | ZL202080050758.X | 2040-05-21 |
| Formulations of Terlipressin | European Patent | Published | 2020-05-22 | 20809710.5 | |||
| Formulations of Terlipressin | Hong Kong | Published | 2020-05-22 | 62022061386.8 | |||
| Formulations of Terlipressin | India | Granted | 2020-05-22 | 2024-06-05 | 202117054216 | 540813 | 2040-05-22 |
| Formulations of Terlipressin | Japan | Granted | 2020-05-22 | 2024-10-30 | 2021-569344 | 7579811 | 2040-05-22 |
| Formulations of Terlipressin | Korea, Republic of (KR) | Application | 2020-05-22 | ▇▇-▇▇▇▇-▇▇▇▇▇▇▇ | |||
| Formulations of Terlipressin | Mexico | Allowed | 2020-05-22 | MX/a/2021/014310 | |||
| Formulations of Terlipressin | United States of America | Granted | 2020-11-25 | 2024-12-03 | 17/611,478 | 12,156,898 | 2041-04-22 |
| Formulations of Terlipressin | United States of America | Published | 2024-11-15 | 18/949,355 | |||
| METHODS OF TREATING DISEASE WITH TERLIPRESSIN | United States of America | NA | 2022-02-03 | 63/306,368 | |||
| METHODS OF TREATING DISEASE WITH TERLIPRESSIN | Patent Cooperation Treaty | NA | 2023-02-03 | PCT/US2023/012258 | |||
| METHODS OF TREATING DISEASE WITH TERLIPRESSIN | United States of America | Published | 2023-02-03 | 18/105,293 | |||
| METHODS OF TREATING DISEASE WITH TERLIPRESSIN | Canada | Application | 2023-02-03 | 3,250,619 | |||
| METHODS OF TREATING DISEASE WITH TERLIPRESSIN | European Patent | Published | 2023-02-03 | 23750193.7 |
| METHODS OF TREATING DISEASE WITH TERLIPRESSIN | Japan | Published | 2023-02-03 | 2024-546209 | |||
| METHODS OF TREATING DISEASE WITH TERLIPRESSIN | Korea, Republic of (KR) | Application | 2023-02-03 | ▇▇-▇▇▇▇-▇▇▇▇▇▇▇ | |||
| METHODS OF TREATING DISEASE WITH TERLIPRESSIN | Mexico | Application | 2023-02-03 | MX/a/2024/009566 |