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Exhibit 10.11
TECHNOLOGY TRANSFER, SUPPORT AND
ROYALTY ASSIGNMENT AGREEMENT
THIS TECHNOLOGY TRANSFER AND SUPPORT AGREEMENT (the "Agreement") is made
and entered into as of this 19th day of February, 1992 by and between THE
DEMETER CORPORATION, a North Carolina corporation ("Demeter"), and XXXXX X.
XXXXXX, PH.D., an individual residing in Baton Rouge, Louisiana ("Xxxxxx");
W I T N E S S E T H:
- - - - - - - - - -
WHEREAS, Demeter has been organized to engage in the biotechnology
industry;
WHEREAS, Xxxxxx is the developer of certain synthetic protein
technologies, processes and expertise; and
WHEREAS, Demeter and Xxxxxx believe it would be mutually beneficial if
Xxxxxx would transfer all of his rights and royalty interests in the technology
that he owns in exchange for an ownership interest in Demeter and for Demeter
to develop and commercialize such technologies with the help and support of
Xxxxxx;
WHEREAS, the parties hereto desire to enter into a mutually satisfactory
arrangement with respect to the ownership and development of such technologies,
processes and expertise;
NOW, THEREFORE, in consideration of the foregoing premises and the mutual
terms, covenants and conditions contained herein, and intending to be legally
bound hereby, the parties agree as follows:
ARTICLE I
Definitions
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The following terms, when initially capitalized, shall have the following
respective meanings:
"Affiliate", with respect to a party hereto, shall mean and refer to
any entity in which a party or any of its officers, agents, employees, or
spouses thereof, have a direct or indirect ownership interest of fifty
percent (50%) or more, or any person or entity which directly or
indirectly, or through one or more intermediaries, controls, is controlled
by, or is under common control with such party or any of its officers,
agents,
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employees, or the spouses thereof. For purposes of this definition,
"control" shall mean the power to direct or cause the direction of the
management and policies of such entity, whether through the ownership of
voting securities, by contract or otherwise. Xxxxxx shall not be deemed to
be an Affiliate of Demeter, and Demeter shall not be deemed to be an
Affiliate of Xxxxxx.
"Agreement" means this Technology Transfer, Support and Royalty
Assignment Agreement.
"Demeter's Business" means the business of developing and
commercializing the Technology and Improvements on a worldwide basis.
"Improvements" shall mean all modifications, variations, revisions,
refinements, inventions and new improvements of the Technology or any
preceding Improvements, and, without limiting the foregoing, all processes,
machines, manufacturers or compositions of matter, applications,
discoveries, show-how, know-now, techniques, methods of use, skills,
knowledge, compounds, equipment design and instrumentations, formulations
and other data related to the Technology or any preceding Improvements
which Xxxxxx may conceive, discover, develop, acquire, or to which Xxxxxx
may otherwise obtain rights during the terms of this Agreement.
"Growth-Promoting Peptide" shall mean and refer to a peptide that
spurs the development of cells.
"Lysis" means the destruction of cells disrupting the cell membranes.
"Lytic Peptide" shall mean and refer to a peptide which can cause
lysis.
"Peptide" shall mean and refer to bio-engineered synthetic proteins
designed to perform specific organic functions.
"Royalty Rights" means any right to payment to which Xxxxxx is
entitled relating to Third-Party Rights in the Technology and Improvements.
"Technology" shall mean and refer to any technologies, processes,
expertise, trade secrets, know-how, confidential information, laboratory
and other testing methods and results, samples, business plans, inventions,
patents, patent applications, continuations in process and foreign
counterparts, show-how techniques, procedures, formulations, methods of
use, skills, processes, materials, machines,
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manufacturers, compositions of matter, applications, discoveries, methods,
diagrams, flow-charts, manuals, models, concepts, ideas, computer programs,
object code, source code, designs, or graphic representations and other
technical and non-technical data developed by, owned by, controlled by or
used by Xxxxxx that are related to Peptides, including without limitation
Lytic Peptides and Growth-Producing Peptides, any other synthetic proteins,
and other genetic engineering or bio-engineering technologies and future
applications of Peptide technology in the fields of human or animal
therapies, treatments or related uses, commercial biocides, and genetic
transformation to improve plants. A description of potential applications
of the Technology is set forth on Exhibit A, but such description shall not
limit the foregoing definition of Technology.
"Third-Party Rights in the Technology and Improvements" means any
rights of third parties in the patents described on Exhibit B acquired
prior to the execution of this Agreement.
ARTICLE II
Transfer Of Technology, Improvements and Royalty Rights
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2.1. Transfer of Technology, etc. In consideration of the obligations and
commitments of Demeter set forth herein and of the issuance of stock described
in Section 2.2 below, Xxxxxx hereby irrevocably transfers, assigns and conveys
to Demeter the exclusive worldwide rights in the Technology and Improvements;
subject, however, to Third-Party Rights in the Technology and Improvements. In
addition, with respect to Third Party Rights in the Technology and
Improvements, Xxxxxx hereby irrevocably transfers, assigns and conveys to
Demeter his Royalty Rights.
2.2. Issuance of Stock. In consideration of the transfer of the
Technology, Improvements and Royalty Rights and of the obligations and
commitments of Xxxxxx set forth herein, Demeter agrees to issue to Xxxxxx One
Hundred Fifty (150) shares of the no par value common stock of Demeter.
2.3. Delivery of Technology and Improvements. From time to time and as
soon as practicable, Xxxxxx shall furnish to Demeter copies of all reports,
studies, data, analyses, documents, testing procedures, laboratory methods,
manuals, samples, test results, drawings, designs, software, firmware,
prototypes, specifications, diagrams, flow-charts, patents, patent
applications, and other written material related to the Technology and
Improvements that are within the possession of Xxxxxx and that are necessary
for Demeter to commercialize the Technology and Improvements and to carry out
the purposes of this Agreement. As other such written material comes into the
possession and control of Xxxxxx, Xxxxxx shall promptly furnish to Demeter
copies thereof.
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2.4. Improvements. Xxxxxx shall promptly inform Demeter of and, subject to
any obligations of Demeter pursuant to Sections 3.2 and 3.3 hereof, transfer
and make available to Demeter any ideas, concepts, or Improvements made or
discovered by Xxxxxx which relate to the Technology or which may enhance or may
have potential for enhancing the commercialization of the Technology.
2.5. Non-Use. Xxxxxx acknowledges that the transfer of Technology and
Improvements hereunder is irrevocable and Xxxxxx agrees not to use any part of
the Technology or Improvements; subject, however, to Third-Party Rights in the
Technology and Improvements. In addition, in the event Xxxxxx desires in the
future to transfer to a third party any part of Technology, engage in the joint
development of the Technology with any third party, or use the Technology in
any employment or consulting arrangement with any third party, Xxxxxx shall
require such third-party to execute, in form and substance satisfactory to
Demeter, an appropriate confidentiality and non-use agreement to ensure that
such third-party does not use the Technology unless rights thereto are first
obtained from Demeter.
ARTICLE III
Support, Research and Development
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3.1. Support. At no cost to Demeter, Xxxxxx shall advise Demeter of any
changes in the Technology and Improvements, including but not limited to, any
discoveries or inventions that may effect the Technology or Improvements,
whether developed by Xxxxxx or third parties, and any publicly available
technologies used or which could be used in connection with the development or
commercialization of the Technology or Improvements. In addition, during
reasonable business hours and upon reasonable notice, Xxxxxx shall make himself
available, for telephonic and in person support and consultation regarding all
aspects of the Technology and Improvements.
3.2. Requested Research and Development. Until such time as Xxxxxx becomes
a full-time employee of Demeter, at Demeter's request, Xxxxxx will perform
contract research and development to develop Improvements to the Technology.
Such research and development will be based on prices agreed upon in advance of
the work and documented in a written agreement between the parties. Any and all
Technology and Improvements developed from such contracted research shall
belong to Demeter and Xxxxxx shall transfer to Demeter any written materials
related to the Improvements so developed in accordance with Section 2.3 hereof.
Any such time, as Xxxxxx becomes a full-time employee of Demeter, his
performance of services for Demeter will be governed by his employment contract.
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ARTICLE IV
Intellectual Property Rights
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4.1. Filing and Maintenance of Patents. Demeter shall have the exclusive
worldwide right but not the obligation, at its own cost and expense, to file
for any patents encompassing all or a part of the Technology and Improvements;
subject, however, to any Third-Party Rights in the Technology and Improvements.
In the event Demeter elects to file for any such patents, Xxxxxx agrees to
cooperate with and provide all reasonable assistance to Demeter in filing for
such patents, including using its best efforts to obtain the consent of, and
assignment to Demeter of any persons who have Third-Party Rights in the
Technology and Improvements.
4.2. Defense of the Technology Rights. Upon receipt of notice of any
threatened or pending claim, suit, or cause of action whatsoever, alleging that
the practice or use of the Technology or any Improvement infringes upon any
valid patent or copyright or is otherwise invalid, the party hereto receiving
said notice shall so inform the other party. Demeter shall have the right but
not the obligation to investigate and defend the claim at its own cost and
expense. Xxxxxx shall provide Demeter with all necessary support and assistance
reasonably required in investigating, protecting, and defending any claim with
respect to the practice or use of the Technology or any Improvement and
Demeter agrees to pay Xxxxxx fair compensation plus out-of-pocket expenses
incurred in connection with providing such support and assistance.
4.3. Protection Against Infringement. Upon receipt of any information
supporting a claim that any third-party in infringing on any protectable aspect
of the Technology or any Improvement, the party hereto receiving such notice
shall so inform the other party. Demeter shall have the right but not the
obligation to take any necessary or appropriate actions, at its own expense, to
prevent the infringement of any protectable aspect of the Technology or any
Improvement. Xxxxxx agrees to provide Demeter with all necessary support and
assistance reasonably required in investigating and precluding infringement of
the Technology or any Improvement and Demeter agrees to pay Xxxxxx fair
compensation plus out-of-pocket expenses incurred in connection with providing
such support and assistance.
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ARTICLE V
Confidentiality and Non-Competition
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5.1. Confidential Information. (a) It is contemplated that during the
course of performance of this Agreement, the parties hereto may from time to
time disclose their confidential or proprietary information (as defined in
subsection (b) below) to the other. Each party agrees that any confidential or
proprietary information received from another party will not be disclosed to
third parties without the prior written consent of such other party, and that
each party shall take all reasonable steps to prevent disclosure to
third-parties of the other party's confidential or proprietary information.
Each party also agrees not to use such information except for purposes related
to its obligations hereunder without first obtaining the prior written consent
of the other party.
(b) As used herein the term "confidential or proprietary information"
shall include, but not be limited to, all information concerning the Technology
or any Improvement disclosed by one party to the other party pursuant to this
Agreement, and all other information which is disclosed in writing and
identified as being confidential, or if disclosed orally, which is reduced to
writing within 30 days of oral disclosure and identified as being confidential.
Confidential or proprietary information shall not include information which:
(i) was known to the recipient prior to the date of the disclosure
thereof unless covered by a prior confidentiality agreement;
(ii) was known to the public or generally available to the public
prior to the date of the disclosure to the recipient;
(iii) becomes available to the public or generally available to the
public subsequent to the date it was received through no act or failure on
the part of the recipient;
(iv) materially corresponds in substance to information disclosed or
made available to the recipient any time by a third party having a bona
fide right to disclose or make available the same;
(v) is required to be disclosed to a governmental agency for the
purpose of securing essential or desirable authorizations, privileges or
rights from governmental agencies, provided that the agency is itself not
required to maintain the information as confidential by contract or
operation of law;
(vi) is subsequently and independently developed by employees of the
receiving party who had no access to the confidential information and who
had no knowledge of the confidential information disclosed; or
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(vii) is required to be disclosed for the purpose of filing or
prosecuting patent or copyright applications, or carrying out any
litigation concerning the Technology or any Improvements, but this
information shall not be considered a waiver of confidentiality with
respect to any information which is subject to the attorney-client
privilege.
5.2. Non-Competition of Xxxxxx. Xxxxxx agrees that he shall not, directly
or indirectly, either in his own capacity or as an agent, partner, shareholder,
investor or in any other capacity, participate or engage in, or assist others
in participating or engaging in a business which competes with Demeter's
Business.
5.3. Remedies. In the event of a breach or threatened breach of this
Agreement, the damaged or threatened party shall have and may exercise any and
all of the rights and remedies available at law or otherwise, including, but
not limited to, obtaining an injunction from a court of competent jurisdiction
enjoining or restraining the disclosure of confidential or proprietary
information from committing any such violation, and each of the parties hereto
hereby consents to the issuance of such injunction.
ARTICLE VI
Representations and Warranties of Transferors
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6.1. Capacity. Xxxxxx has all requisite power and capacity necessary to
enter into this Agreement.
6.2. Authority Relative to this Agreement. The execution, delivery and
performance of this Agreement by Xxxxxx and consummation of the transactions
contemplated hereby will not violate any law or judicial or administrative
order to which Xxxxxx is subject or any contractual obligation binding upon
Xxxxxx, and to the best of Jayne's knowledge, the execution, delivery and
performance of this Agreement by Xxxxxx and the consummation of the
transactions contemplated hereby do not require the consent or approval of any
person or public authority not already obtained.
6.3. Non-Interference. Xxxxxx represents and warrants that, to the best of
his knowledge, Demeter's entering into and enforcing of this Agreement does not
and will not constitute any interference with the advantageous contractual
relationship that any third-party has with Xxxxxx.
6.4. Non-Infringement. Except with respect to Third Party Rights in
Technology and Improvements, Xxxxxx represents and warrants that he is not
aware of any rights in any third parties that would be violated by Demeter's
use and practice of the Technology and Improvements transferred hereunder or
that such use and practice will infringe any valid U.S. or foreign patent.
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6.5. Ownership. Xxxxxx represents and warrants that, except as set forth
in Exhibit B hereto, he has the rights to transfer to Demeter the Technology as
set forth herein, and that such rights are not the subject of any encumbrance,
lien or claim of ownership by any third party. In addition, except as set forth
in Exhibit B hereto, Xxxxxx has not previously transferred or licensed the
Technology or any part thereof and all of the patent and other intellectual
property rights with respect to the Technology and Improvements which Xxxxxx
owns or has rights to as of the date of this Agreement have been validly
transferred to Demeter under this Agreement. In executing and carrying out this
Agreement, Xxxxxx is not making unauthorized use of any confidential
information or trade secrets of any person, including without limitation, any
present or former employer of Xxxxxx.
6.6. Litigation. Xxxxxx has not received any notice of any claim from any
person asserting that any of the Technology infringes or may infringe any
patent or other proprietary rights of any person. Xxxxxx is not aware of any
infringement by others of any of the Technology or any violation of the
confidentiality of any of their proprietary information. There are not any
actions, suits or proceedings pending or, to the knowledge of Xxxxxx,
threatened, against Xxxxxx before a court, arbiter, or any other governmental
or non-governmental department, commission, board, bureau, agency or
instrumentality which could affect the Technology or Improvements or Xxxxxx'
interest in either of them or the ability of Xxxxxx to perform his obligations
under this Agreement.
6.7. Disclosure. To the best of his knowledge, no representation or
warranty by Xxxxxx in this Agreement, nor any statement made or documents
provided to Demeter by or on the behalf of Xxxxxx in the course of Demeter's
investigation process of deciding to enter this Agreement, contains any untrue
statement of material fact, or omits or will omit to state a material fact
necessary to make the statements not misleading. Xxxxxx does not know of any
act that has not been disclosed to Demeter that materially or adversely affects
or, so far as Xxxxxx can reasonably foresee, may materially or adversely affect
the Technology.
ARTICLE VII
Representations and Warranties of Transferee
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7.1. Due Incorporation, Existence. Demeter is a corporation duly organized
and validly existing under the laws of the State of North Carolina with all
requisite power necessary to enter into this Agreement.
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7.2. Authority Relative to this Agreement. The execution, delivery and
performance of this Agreement by Demeter and consummation of the transactions
contemplated hereby have been duly and effectively authorized by all necessary
corporate action. To the best of Demeter's knowledge, the execution, delivery
and performance of this Agreement by Demeter and the consummation of the
transactions contemplated hereby do not require the consent or approval of any
person or public authority not already obtained.
7.3. Issuance of Stock. Demeter represents and warrants that upon the
issuance to Xxxxxx of the 150 shares of common stock of Demeter pursuant to
Section 2.2. hereof, such shares will be duly authorized, validly issued, fully
paid and nonassessable.
ARTICLE VI
General
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8.1. Term. The term of this Agreement shall begin on the date hereof and,
unless earlier terminated by a writing signed by each of the parties hereto,
shall continue in effect until February 18, 2002; provided, however, that in any
event Sections 2.1, 2.2, 2.3, 2.4, 2.5, 3.1, and 5.1 shall survive termination
of this Agreement.
8.2. Further Assurances. Each party when requested to do so by the other
party, shall execute, acknowledge, and deliver all such instruments or
assignment, transfer and conveyance, and any such further instruments and
documents as may be necessary and desirable to carry out the purposes of this
Agreement.
8.3. No Agency or Partnership. It is understood that in giving effect to
this Agreement, Demeter shall not be an agent or partner of Xxxxxx for any
purpose and that its relationship to Xxxxxx shall be that of an independent
contractor. Demeter shall not have the right to enter into contracts, nor incur
expenses or liabilities, on behalf of Xxxxxx. Similarly, it is understood that
in giving effect to this Agreement, Xxxxxx shall not be an agent or partner of
Demeter for any purpose and that his relationship to Demeter shall be that of an
independent contractor. Xxxxxx shall not have the right to enter into contracts
or incur expenses or liabilities on behalf of Demeter.
8.4. Assignment. This Agreement will be binding upon and inure to the
benefit of the respective successors and assigns of the parties hereto but none
of the parties may assign its or his rights in this Agreement without the prior
written consent of the other parties; provided, however, that Demeter may,
without obtaining the prior written consent of Xxxxxx, assign its rights in this
Agreement to any Affiliate or to any corporation with which it may merge or
consolidate or to any corporation to which it may transfer all or substantially
all of its assets, if such entity assumes all of the obligations and liabilities
of Demeter under this Agreement. Upon any such assignment or transfer, Demeter
shall be relieved of liability hereunder.
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8.5. Severance. In the event any term or provision of this Agreement shall
for any reason be held to be invalid, illegal, or unenforceable in any respect,
then, unless such term or provision goes to the root of this Agreement, this
Agreement shall continue in full force and effect except that the term or
provision shall be deemed to be excised herefrom and this Agreement shall be
interpreted and construed as if such term or provision, to the extent the same
shall have been held to be invalid, illegal, or unenforceable, had never been
contained herein.
8.6. Compliance with Law. The rights and obligations set forth in this
Agreement shall be subject to all laws, both present and future, of any
governmental body having jurisdiction over either of the parties hereto or the
subject matter hereof, and to orders, regulations, directions or the like of
such governmental body or any department, agency or corporation thereof. If
such laws or regulations necessitate the amending of any terms of this
Agreement with respect to any country in order to maintain the validity of this
Agreement in that country, the parties hereto agree to meet promptly and
negotiate in good faith concerning the terms which require amendment to bring
the Agreement into compliance with the laws of such country.
8.7. Arbitration. Except as to issues relating to the validity,
construction or effect of any patent licensed hereunder, any and all claims,
disputes or controversies arising under, out of, or in connection with this
Agreement, which have not been resolved by good faith negotiations between the
parties, shall be resolved by final and binding arbitration under the rules of
the American Arbitration Association then obtaining; provided, however, that
any request for arbitration is filed within 180 days from the date that the
party seeking relief knew or through the exercise of due diligence should have
known of the facts giving rise to the dispute. The arbitrators shall have no
power to add to, subtract from or modify any of the terms or conditions of this
Agreement. Any award rendered in such arbitration may be enforced by either
party in any court of competent jurisdiction.
8.8. Indemnification. Demeter, on the one hand, and Xxxxxx, on the other
hand, shall at all times during the term of this Agreement and thereafter
indemnify, defend and hold the other harmless against all damages, losses,
claims and expenses, including legal expenses and reasonable attorneys' fees,
incurred as a result of the failure of any representation or warranty contained
in this Agreement or as a result of the breach of any term or condition
hereunder.
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8.9. Governing Law. This Agreement shall be governed by and construed in
accordance with the laws of the State of North Carolina.
8.10. Notice. Notice hereunder shall be in writing and shall be deemed to
have been duly given (i) when personally delivered to a party; (ii) when sent
via facsimile to a party but only if a written or facsimile acknowledgment of
receipt is received by the sending party; or (iii) when delivered Federal
Express, Airborne Express or an other commercial courier which maintains
delivery information or five (5) days following the date when placed in the
United States mails and forwarded by registered or certified mail, in each such
case, duly addressed as follows:
if to Demeter: The Demeter Corporation
0000 Xxxxxx Xxxx Xxxx
Xxxxxx Xxxx, Xxxxx Xxxxxxxx 00000
Attention: Xxxxx X. Xxxx, President
with copies to: Xxxxxxx & Xxxxxxx, P.A.
0000 Xxxx Xxxxx Xxxxx, Xxxxx 000
Xxxxxx, Xxxxx Xxxxxxxx 00000
Attention: Xxxxxx X. Xxxxxxx
or if to Xxxxxx: Xxxxx X. Xxxxxx
0000 Xxxxxxxxx Xxxxx
Xxxxx Xxxxx, Xxxxxxxxx 00000
or in either case, to such other address as either party shall previously have
designated by written communication to and actual receipt by the other party.
8.11. Waiver. The failure of a party to assert a right hereunder or to
insist upon compliance with any term or condition of this Agreement shall not
constitute a waiver of that right or excuse a similar subsequent failure to
perform any such term or condition by the other party.
8.12. Captions. The captions used in this Agreement are for convenience
only and shall not be construed as being part of this Agreement.
8.13. Merger and Amendment. This Agreement represents the entire
understanding between the parties, and supersedes all previous agreements,
express or implied, between the parties concerning the Technology or any other
subject matter of this Agreement. This Agreement may not be amended or modified
except pursuant to a writing executed by both parties.
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8.14. Multiple Counterparts. This Agreement may be executed in one or more
counterparts each of which shall be deemed to be and have the force and effect
of an original.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement or
have caused this Agreement to be executed by their duly authorized officers
effective as of the day and year first written above.
ATTEST: THE DEMETER CORPORATION
/s/ X. X. XXXXXXX By: /s/ XXXXX X. XXXX
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Secretary Xxxxx X. Xxxx,
President
(Corporate Seal)
WITNESS:
/s/ X. X. XXXXXXX /s/ XXXXX X. XXXXXX (SEAL)
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Xxxxx X. Xxxxxx
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XXXXXXXX X
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XXXXXXXX X
PATENT APPLICATIONS
1. Xxxxxx and Xxxxxxx, "Method for Introduction of Disease and Pest Resistance
Into Plants and Novel Genes Incorporated Into Plants Which Code Therefor,"
United States patent application S.W. 07/373,623, filed June 29, 1989
(Continuation of U.S. Serial No. 889,225 filed July 25, 1986).
2. Xxxxxx and Xxxxxxx, "Plants Genetically Enhanced for Disease Resistance,"
United States patent application S.W., 07/646,449, filed January 25, 1991
(Continuation of U.S. Serial No. 115,941 filed November 2, 1987).
3. Xxxxxx, Xxxxxxx and White, "Therapeutic Antimicrobial Polypeptides, Their
Use and Methods for Preparation," United States patent application S.W.
07/049,683 filed July 6, 1987.
4. Jaynes, Enright, White and Xxxxxxx, "Inhibition of Eucaryotic Pathogens and
Neoplasms and Stimulation of Fibroblasts and Lymphocytes with Lytic Peptides,"
United States patent application S.W. 07/102,175 filed September 29, 1987.
5. Xxxxxx, "Lytic Peptides: Their Use in the Treatment of Microbial Infection,
Cancer and in the Prevention of Drymouth," United States patent application S.W.
07/336,181, filed April 10, 1989 (Continuation -in-part of U.S. Serial No.
102,175, filed September 29, 1987 and of U.S. Serial No. 069,653, filed July 6,
1987).
Patent applications also include foreign patent filings entitled to
priority based on any of the patent applications defined above.
