EXHIBIT 10.6
EXECUTION
INTELLECTUAL PROPERTY TRANSFER AGREEMENT
This INTELLECTUAL PROPERTY TRANSFER AGREEMENT dated as of September
30, 2005 made by Xxxxxx Laboratories, a corporation organized and existing under
the laws of the State of Illinois and having a principal place of business at
Xxxxxx Xxxx, Xxxxxxxx 00000 (herein referred to as "Assignor") in favor of ImaRx
Therapeutics, Inc., a corporation organized and existing under the laws of
Delaware and having a principal place of business at Xxxxxx, Xxxxxxx 00000
(herein referred to as "Assignee").
WHEREAS, Assignor owns the patent applications and issued patents
listed on Schedule 1 attached hereto (the "Patents");
WHEREAS, Assignor owns the trademark and trademark registration listed
on Schedule 0X xxxxxxxx xxxxxx (xxx "Xxxx"), and is willing to convey any rights
it may have to the other trademark listed on Schedule 2B hereto (the "Quitclaim
Xxxx");
WHEREAS, Assignee desires to acquire the Patents, the Xxxx, any rights
the Assignor may have to the Quitclaim Xxxx, and any and all goodwill associated
with the Xxxx and the Quitclaim Xxxx;
1) For good and valuable consideration, the receipt and sufficiency of which
is hereby acknowledged, Assignor hereby transfers, assigns, and otherwise
conveys to Assignee, all of Assignor's right, title, and interest in, to,
and under the following, subject to the limitations described below:
(a) the Patents, including, without limitation, any
continuations, divisions, continuations-in-part, reissues,
reexaminations, extensions or foreign equivalents thereof, and
including the subject matter of all claims that may be obtained
therefrom, and all other corresponding rights that are or may be
secured under the laws of the United States, now or hereafter in
effect;
(b) each of the Xxxx and the Quitclaim Xxxx, including, without
limitation, any renewals and extensions thereof, and all other
corresponding rights that are or may be secured under the laws of the
United States, now or hereafter in effect;
(c) the goodwill of the business symbolized by and associated
with the Xxxx and the Quitclaim Xxxx; and
(d) all proceeds of the assets transferred pursuant to paragraph
(1), (2), and (3), (collectively, the "Transferred IP", including,
without limitation, the right to xxx for, and collect on, (i) any
claim by Assignor against third parties for past, present, or future
infringement of the Patents, and (ii), any claim by Assignor against
third parties for past, present, or future infringement, dilution,
disparagement or other unauthorized use of
the Xxxx or the Quitclaim Xxxx, and (iii) any income, royalties or
payments due or payable and related exclusively to the Transferred IP
as of the date of this assignment or thereafter.
2) Notwithstanding the foregoing, Assignee acknowledges that Assignee will
become a co-owner of the Patents and will not have exclusive ownership
rights of the Patents. Assignee expressly acknowledges that Assignor has
granted, or will have the right to grant, co-ownership rights to the
Patents to a third party. Assignor and Assignee hereby agree to the
following covenants with respect to the Patents, and Assignor and Assignee
hereby agree that each of them shall require that any assignee or successor
in interest of Assignor's or Assignee's interest in the Patents be bound by
such covenants.
a) Maintenance of the Patents. Each of the co-owners of the Patents (the
"Co-Owners") shall act cooperatively to maintain the Patents and shall
pay one-half of all maintenance fees and other costs required to keep
the Patents in full force and effect.
b) Infringement by Third Parties. The Co-Owners shall consult with each
other prior to filing any action alleging that a third party has
infringed or misappropriated the right of the Co-Owners under the
Patents. The Co-Owners may agree to jointly pay for the suit or
otherwise share such costs and any resulting liability or monetary
judgment. Except as provided below, if no agreement is reached within
sixty (60) days, the Co-Owner wishing to file such action may do so,
but shall pay the entire costs of such action and shall indemnify and
hold harmless the other Co-Owner from any claim, suit or proceeding
(including, but not limited to, counterclaims) against such Co-Owner
arising from the action brought by the other Co-Owner. If only one
Co-Owner decides to proceed with an action and it prevails, that
Co-Owner shall be entitled to retain the entire amount of any monetary
award arising out of that action. To be eligible for the indemnity
under this section, a Co-Owner must give prompt written notice of any
claim, suit or proceeding filed or threatened against it and let the
indemnifying Co-Owner control the defense. If only one Co-Owner files
an action as provided in this section, the other Co-Owner agrees to
provide reasonable assistance in such action so long as the suing
party pays its out-of-pocket expenses.
c) Declaratory Judgment Actions. In the event that a declaratory judgment
action alleging invalidity of any of the Patents, or that use or
practice of any of the claims in the Patents infringes the patent,
copyright or trade secrets of others, shall be brought against either
or both of the Co-Owners, the Co-Owners shall cooperate in good faith
to determine how best to defend such action. If the Co-Owners cannot
agree on how to defend any such action, either Co-Owner may on its own
defend any action brought against it, provided that no settlement,
consent judgment or other voluntary final disposition may be entered
into without the consent of the other Co-Owner, which consent shall
not be unreasonably withheld.
3) Assignor hereby permits the Commissioner of Patents and Trademarks to
record Assignee as the assignee and owner of the Patents and of the Xxxx
and Assignor hereby consents to such recordation.
Assignor shall upon the request of Assignee execute such
documents and take such other actions as Assignee may reasonably request to
evidence and perfect the rights of Assignee in the property conveyed to it
pursuant to this Agreement. The Assignor and Assignee have caused this
Intellectual Property Transfer Agreement to be duly executed and authorized as
of the date hereof.
XXXXXX LABORATORIES
By: /s/Xxxx X. Xxxxxx
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Name: Xxxx X. Xxxxxx
Title: Vice President Global Licensing/
New Business Development
IMARX THERAPEUTICS, INC.
By: /s/Xxxx Xxxxx
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Name: Xxxx Xxxxx
Title: President and CEO
