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EXHIBIT 10.103
ASSIGNMENT AND LICENSE AGREEMENT
This ASSIGNMENT AND LICENSE AGREEMENT (the "Agreement"), effective as of
January 1, 1998 ("Effective Date"), is made by and between COLLAGEN CORPORATION
("Collagen"), a Delaware corporation and COHESION TECHNOLOGIES, INC., a Delaware
corporation formerly known as Collagen Technologies, Inc. ("Technologies").
RECITALS
1. Collagen and Technologies have entered into a relationship
whereby certain assets and liabilities are transferred from Collagen to
Technologies, as further described in the Separation and Distribution Agreement
effective as of January 1, 1998 between Technologies and Collagen (the
"Separation Agreement") and in the Ancillary Agreements.
2. Technologies desires to obtain from Collagen, and Collagen is
willing to assign to Technologies, all intellectual property rights owned by
Collagen as of the Effective Date, other than breast implant technology and
intellectual property rights pertaining thereto, the ownership of which shall be
retained by Collagen.
3. Collagen desires to license from Technologies, on a worldwide
basis, all intellectual property rights owned or controlled by Technologies,
relating to the fields of human aesthetics products, technologies, and
treatments.
NOW, THEREFORE, the parties hereto agree as follows:
ARTICLE I
DEFINITIONS
Except as otherwise defined herein, capitalized terms used herein shall
have the meanings given to them in the Separation Agreement. In addition, for
the purposes of this Agreement, the capitalized terms set forth below shall have
the meanings set forth in this Article I.
1.1 "Assigned Copyrights" shall mean those United States and foreign
copyrights, including any and all registrations, applications for registration,
common law rights, restoration rights, and all other rights related thereto,
other than the Retained Copyrights, that are owned by Collagen or the Collagen
Group as of the Effective Date, or which Collagen or any member of the Collagen
Group has the right to assign to Technologies hereunder.
1.2 "Assigned Patents" shall mean all Patents, other than the
Retained Patents, that are owned by Collagen or the Collagen Group as of the
Effective Date, or which Collagen or any member of the Collagen Group has the
right to assign to Technologies hereunder. A list of the Assigned Patents is set
forth on the Schedule of Assigned Patents delivered and executed by the parties
at the time of execution of this Agreement, as such may be amended and updated
by the parties upon mutual agreement.
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1.3 "Assigned Trademarks" shall mean all United States and foreign
trademarks, trade names, logos, service marks, and trade dress rights, including
any and all registrations, applications for registration, common law rights,
renewal rights that are set forth on the Schedule of Assigned Trademarks
delivered and executed by the parties at the time of execution of this Agreement
(as such may be amended and updated by mutual agreement of the parties) and any
and all goodwill of Collagen's business connected with the use of and symbolized
by such marks, that are owned by Collagen or the Collagen Group as of the
Effective Date or which Collagen has the right to assign to Technologies
hereunder.
1.4 "Improvements" shall mean any and all inventions, discoveries,
derivatives, know-how, improvements, technology, works of authorship and
expressions (excluding Recombinant Technology and Persistence Technology as
defined in the Separation Agreement, irrespective of whether the Recombinant
Agreement and Persistence Agreement are executed by the parties) made by
Collagen, Technologies, or their Affiliates after the Effective Date.
1.5 "Improvement Period" shall mean the period from the Effective
Date of this Agreement up to January 1, 1999.
1.6 "Intellectual Property Rights" shall mean trade secrets,
Patents, copyrights, trademarks, know-how, moral rights and similar rights of
any type under the laws of any governmental authority, domestic or foreign,
including all applications and registrations relating to any of the foregoing.
1.7 "Know-how" shall mean any and all secret, proprietary or
confidential information, experience, trade secrets, formulas, designs,
techniques, applications, processes, ideas, or concepts, whether or not reduced
to practice, whether or not reduced to writing and whether or not patentable,
owned or controlled by Collagen or the Collagen Group as of the Effective Date,
or to which Collagen or any member of the Collagen Group has the rights to
license or assign, as applicable, hereunder.
1.8 "Licensed Technology" shall mean the Assigned Patents and related
Know-how, the Assigned Trademarks and Assigned Copyrights licensed by
Technologies to Collagen hereunder.
1.9 "Non-Compete Period" shall mean the period extending from the
Effective Date of this Agreement up to March 15, 2004.
1.10 "Patents" shall mean all United States and foreign patents and
patent applications, substitutions, extensions, reissues, reexaminations,
renewals, divisions, utility models, continuations, or continuations-in-part
anywhere in the world.
1.11 "Retained Copyrights" shall mean those United States and foreign
copyrights, including any and all registrations, applications for registration,
common law rights, restoration rights, and all other rights related thereto in
and to any promotional, marketing, labeling, and other printed or other
materials relating solely to the use, marketing, sale, or distribution of
Technology in the Collagen Field.
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1.12 "Retained Patents" shall mean those Patents set forth on the
Schedule of Retained Patents delivered and executed by the parties at the time
of execution of this Agreement, as such may be amended and updated by mutual
agreement of the parties.
1.13 "Retained Trademarks" shall mean those United States and foreign
trademarks, trade names, logos, service marks, and trade dress rights, including
any and all registrations, applications for registration, common law rights and
renewal rights that are owned by Collagen or the Collagen Group as of the
Effective Date other than the Assigned Trademarks and any and all goodwill of
the Collagen Business connected with the use of and symbolized by such marks.
1.14 "Retained Technology" shall mean all Retained Patents, any
Know-how not assigned to Technologies pursuant to Section 2.1, Retained
Trademarks, and Retained Copyrights.
1.15 "Technology" shall mean any: (i) product, device, formulation,
composition, or component thereof; or (ii) any process, method or treatment,
that in either event, is currently in existence, under development, or which
comes into existence in the future, including, without limitation, those
products set forth in Exhibit A attached hereto, which embodies all or a portion
of Transferred Technology or Retained Technology.
1.16 "Transferred Technology" shall mean all Assigned Patents, the
Know-how assigned to Technologies pursuant to Section 2.1 hereof, the Assigned
Copyrights and the Assigned Trademarks.
ARTICLE II
PATENT AND KNOW-HOW ASSIGNMENT AND LICENSE GRANT
AND IMPROVEMENT LICENSE GRANT
2.1 ASSIGNMENT. Collagen hereby sells, transfers, assigns, and
irrevocably sets over to Technologies, and Technologies hereby purchases and
accepts assignment of, Collagen's entire right, title, and interest in and to:
(i) the Assigned Patents; (ii) any and all Know-how, other than Know-how solely
relating to the Retained Patents; and (iii) all rights and standing to xxx for
past, present, and future infringement of such Assigned Patents and
misappropriation of such Know-how.
2.2 LICENSE GRANT. Subject to the terms and conditions hereof,
Technologies hereby grants to Collagen, to the extent that Technologies has the
right to grant such rights and licenses hereunder, a worldwide, irrevocable,
transferable, perpetual, fully paid-up, right and license, solely in the
Collagen Field, including the right to grant sublicenses in the Collagen Field,
under the Assigned Patents and related Know-how, to use, manufacture, have
manufactured, sell, have sold, distribute, have distributed, market and promote,
have marketed and promoted, import and export, and have imported and exported,
Technology solely in the Collagen Field. The licenses granted pursuant to this
Section 2.2 are exclusive with respect to the Assigned Patents and non-exclusive
with respect to the related Know-how.
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2.3 IMPROVEMENTS BY TECHNOLOGIES. Technologies hereby grants to
Collagen, to the extent that Technologies has the right to grant such rights and
licenses hereunder, a worldwide, exclusive, irrevocable, transferable,
perpetual, royalty-free, right and license, including the right to grant
sublicenses in the Collagen Field, under all Intellectual Property Rights
thereto, solely in the Collagen Field, to use, modify, have modified,
manufacture, have manufactured, sell, have sold, distribute, have distributed,
market and promote, have marketed and promoted, import and export, and have
imported and exported, the Improvements conceived, developed, or reduced to
practice by Technologies or its Affiliates during the Improvement Period.
2.4 IMPROVEMENTS BY COLLAGEN. Collagen hereby grants to
Technologies, to the extent that Collagen has the right to grant such rights and
licenses hereunder, a worldwide, exclusive, irrevocable, transferable,
perpetual, royalty-free, right and license, including the right to grant
sublicenses outside the Collagen Field, under all Intellectual Property Rights
thereto, solely outside the Collagen Field, to use, modify, have modified,
manufacture, have manufactured, sell, have sold, distribute, have distributed,
market and promote, have marketed and promoted, import and export, and have
imported and exported, the Improvements conceived, developed, or reduced to
practice by Collagen or its Affiliates during the Improvement Period.
2.5 ALL NECESSARY ACTIONS. In furtherance of the sale, transfer,
assignment, and setting over of the Assigned Patents and Know-how pursuant to
Section 2.1 hereto, Collagen shall execute and deliver to Technologies on the
Effective Date an executed assignment in the form attached hereto as Exhibit B.
Collagen further agrees to promptly review, execute, and deliver any and all
additional documents as Technologies may deem reasonably necessary or desirable
to effectuate the sale, transfer, assignment and setting over of the Assigned
Patents and related Know-how.
2.6 LICENSE TO TECHNOLOGIES. Subject to the terms and conditions
hereof, Collagen hereby grants to Technologies, a world-wide, irrevocable,
non-exclusive, royalty free, perpetual right and license, with the right to
grant sublicenses, under any Retained Technology (and notwithstanding any
exclusive rights or licenses granted by Technologies to Collagen hereunder), to
use, modify, have modified, manufacture, have manufactured, sell, have sold,
distribute, have distributed, market and promote, have marketed and promoted,
import and export, and have imported and exported any: (i) Technology outside
the Collagen Field; and (ii) Technology within the Collagen Field as provided in
Article 2 of the Collagen Supply Agreement, Article 2 of the Collagraft Supply
Agreement, or in connection with performing Technologies' obligations under the
Persistence Agreement or Recombinant Agreement if such agreements are entered
into by the parties.
ARTICLE III
TRADEMARK ASSIGNMENT AND LICENSE GRANT
3.1 ASSIGNED MARKS. Collagen hereby sells, transfers, assigns, and
irrevocably sets over to Technologies, and Technologies hereby purchases and
accepts, as a successor to the portion of Collagen's business to which such
Assigned Trademarks pertain, the assignment of
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Collagen's entire right, title, and interest, including all associated goodwill
to the extent applicable, in and to the Assigned Trademarks, and including all
rights and standing to xxx for past, present, and future infringement of such
Assigned Trademarks.
3.2 LICENSE GRANT. Subject to the terms and conditions hereof,
Technologies hereby grants to Collagen a worldwide, exclusive, transferable,
fully paid-up, right and license, including the right to grant sublicenses in
the Collagen Field, to use, reproduce, and have reproduced, solely in
conjunction with the sale, marketing, and distribution of Technology, and
Improvements thereto in the Collagen Field, those Assigned Trademarks that as of
the Effective Date, were: (i) used in connection with Technology in the Collagen
Field, and (ii) used by Collagen in connection with Technology outside the
Collagen Field.
3.3 COLLAGEN HELIX LOGO. Subject to the terms and conditions hereof,
Collagen hereby grants to Technologies a worldwide, exclusive, non-transferable,
irrevocable, perpetual, fully paid-up, right and license, including the right to
grant sublicenses outside the Collagen Field, to use, reproduce, and have
reproduced the Collagen helix logo xxxx, as set forth in the Schedule of
Trademarks, solely in conjunction with the sale, marketing, and distribution of
Technology and Improvements, outside the Collagen Field.
3.4 ALL NECESSARY ACTIONS. In furtherance of the sale, transfer,
assignment, and setting over of the Assigned Trademarks pursuant to Section 3.1
hereto, Collagen shall execute and deliver to Technologies on the Effective Date
an executed assignment in the form attached hereto as Exhibit C. Collagen
further agrees to promptly review, execute, and deliver any and all additional
documents as Technologies may deem reasonably necessary or desirable to
effectuate the sale, transfer, assignment, setting over, prosecution, and
maintenance of the Assigned Trademarks, including any power of attorney by
Collagen to Technologies or any designated agent of Technologies relating to the
prosecution or maintenance of such Assigned Trademarks.
3.5 COMPLIANCE WITH GUIDELINES. Collagen's use of the Assigned
Trademarks licensed under Section 3.2 hereof, shall comply with the existing
guidelines observed by Collagen on the Effective Date and any additional
guidelines set forth in writing from time to time by Technologies with respect
to the style, appearance, and manner of use of such Assigned Trademarks. One
copy of any and all materials, including promotional, marketing, labeling,
packaging, and other marking for Technology and any Improvements licensed to
Collagen hereunder shall be provided by Technologies to Collagen promptly,
without charge, upon request by Collagen. Technologies' use of the Collagen
helix logo xxxx licensed under Section 3.3 hereto shall comply with the existing
guidelines observed by Collagen on the Effective Date and any additional
guidelines set forth in writing from time to time by Collagen with respect to
the style, appearance, and manner of use of the Collagen helix logo xxxx.
ARTICLE IV
COPYRIGHTS ASSIGNMENT AND LICENSE GRANT
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4.1 ASSIGNED COPYRIGHTS. Collagen hereby sells, transfers, assigns,
and irrevocably sets over to Technologies, and Technologies hereby purchases and
accepts, the assignment of Collagen's entire right, title, and interest, in and
to the Assigned Copyrights, and including all rights and standing to xxx for
past, present, and future infringement of such Assigned Copyrights.
4.2 LICENSE GRANT. Subject to the terms and conditions hereof,
Technologies hereby grants to Collagen, to the extent that Technologies has the
right to grant such rights and licenses hereunder, a worldwide, exclusive,
transferable, fully paid-up, right and license, including the right to grant
sublicenses in the Collagen Field, to use, reproduce, have reproduced, and
create derivative works, solely in conjunction with the sale, marketing, and
distribution of Technology in the Collagen Field, those Assigned Copyrights in
and to any promotional, marketing, labeling, and other printed or other
materials as of the Effective Date relating to both: (i) the use, marketing,
sale, or distribution of Technology in the Collagen Field; and (ii) the use,
marketing, sale, or distribution by Collagen of Technology outside the Collagen
Field.
4.3 ALL NECESSARY ACTIONS. Collagen agrees to promptly review,
execute, and deliver any and all documents as Technologies may deem reasonably
necessary or desirable to effectuate the sale, transfer, assignment, setting
over, prosecution, and maintenance of the Assigned Copyrights, including any
power of attorney by Collagen to Technologies or any designated agent of
Technologies relating to the prosecution or maintenance of such Assigned
Copyrights.
4.4 COPYRIGHT DELIVERABLES. After the Effective Date of this
Agreement, each party shall, upon the request of the other party, promptly
provide the requesting party with all materials relating to the Assigned
Copyrights as necessary for the parties to exercise fully their respective
rights in the Assigned Copyrights granted under this Article 4.0.
ARTICLE V
OWNERSHIP; REGULATORY
5.1 OWNERSHIP OF IMPROVEMENTS. During and after the expiration of
the Improvement Period, each party shall own all rights, title, and interest in
and to all Improvements made by such party. Neither party hereto has any
accounting, reporting, or licensing obligations to the other party with respect
to improvements, modifications, derivative works, inventions, know-how, or
technology made after expiration of the Improvement Period.
5.2 PATENTABILITY OF IMPROVEMENTS. The following terms are intended
to avoid inventions covered by Assigned Patents or Retained Patents from being
prior art under 35 U.S.C. Sections 102(e), (f) or (g) to Improvements, which
would otherwise be patentable under 35 U.S.C. Section 103 over inventions
covered by Assigned Patents or Retained Patents. Technologies and Collagen agree
that, to the extent possible, such Improvements will be combined with existing
patent applications within Assigned Patents or Retained Patents and filed as a
continuation-in-part application, and that such existing patent applications
will be abandoned in favor of said continuation-in-part applications. Further,
Technologies and Collagen agree that
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any such Improvements shall, at the time they are made, be commonly owned by the
owner of the application to which the Improvement pertains, and be assigned to
such owner, provided, however, that the ownership of any Improvements that would
be patentable under 35 U.S.C. Section 103 over such application in the absence
of common ownership between the Improvement and the application shall be owned
in accordance with Section 5.1.
5.3 REGULATORY MATERIALS. After the Effective Date, the ownership of
the United States and foreign regulatory registrations, licenses, and
applications in existence and owned by Collagen prior to the Effective Date
("Regulatory Materials") shall be as set forth in the Separation Agreement.
Collagen hereby grants to Technologies a non-exclusive, perpetual, irrevocable,
transferable, fully-paid-up right to reference any and all Regulatory Materials
owned by Collagen, solely as such relates outside the Collagen Field.
Technologies hereby grants to Collagen a non-exclusive, perpetual, irrevocable,
transferable, fully-paid-up right to reference any and all Regulatory Materials
owned by Technologies solely as such relates to the Collagen Field. To the
extent that any Regulatory Materials owned by a party pertain to Improvements
made by the other party, the party who owns such Regulatory Materials shall, on
behalf and upon the other party's request and expense, make such Regulatory
Material available solely to the appropriate regulatory authorities and not to
the other party.
ARTICLE VI
MAINTENANCE OF LICENSED TECHNOLOGY
After the Effective Date, Technologies has the right to file, prosecute
and maintain, at its expense, the Transferred Technology in any and all
countries and at Technologies' sole discretion; provided, however, that except
as otherwise provided in this Article VI, Technologies shall use its
commercially reasonable efforts to file, prosecute, and maintain Assigned
Patents licensed to Collagen hereunder in such countries and territories as
reasonably requested by Collagen, and to maintain all Intellectual Property
Rights in and to the Licensed Technology as reasonably requested by Collagen. In
filing and prosecuting Assigned Patents, Technologies shall in good faith
prosecute the Assigned Patents licensed to Collagen hereunder with the same
degree of care and diligence that it accords to prosecution of patents that
Technologies commercially exploits for itself. Collagen will cooperate fully
with Technologies in connection with all filings, prosecution and maintenance of
the Licensed Technology. Upon Collagen's request, Technologies will make
available to Collagen any relevant and non-privileged correspondence with patent
agencies relating to such filing, prosecution and maintenance of all Licensed
Technology which Collagen shall keep confidential in accordance with Article VII
hereto. Technologies will also provide to Collagen a copy of the updated docket
sheet in the form of the Schedule of Assigned Patents with respect to all issued
or pending patents and all pending patent applications at least once each
calendar quarter during the Term of this Agreement. In addition, commencing from
the Effective Date through the Improvement Period, Collagen shall be entitled to
have a representative on Technologies' patent review committee. Technologies
will solely be responsible for filing, prosecuting and maintaining the Licensed
Technology; provided, however, that with respect to the Assigned Patents
licensed by Technologies to Collagen hereunder, Technologies shall provide
Collagen with at least ninety (90) days prior notice in accordance with the
Separation Agreement before the applicable
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deadline if Technologies should elect not to file, prosecute or maintain any
such Assigned Patent in any territory in the world. If Technologies makes such
election as to any territory in the world, then Collagen may elect to file,
prosecute, or maintain such Assigned Patent in such territory, at Collagen's own
expense, and Technologies will cooperate with Collagen's filing, prosecution
and/or maintenance, as applicable, and shall assign, subject to its ability to
do so, all of Technologies' rights, title, and interest in and to such Assigned
Patent in such territory to Collagen at no additional fee. As to any such
Assigned Patent for any territory that is assigned to Collagen pursuant to this
Article VI, Technologies shall be entitled to thereafter exercise those license
rights set forth in Section 2.6 hereof with respect to such Assigned Patent as
if it were Retained Technology. Collagen will solely be responsible for filing,
prosecuting and maintaining the Collagen helix logo; provided, however, that
with respect to the Collagen helix logo licensed by Collagen to Technologies
hereunder, Collagen shall provide Technologies with at least ninety (90) days
prior notice in accordance with the Separation Agreement before the applicable
deadline if Collagen should elect not to file, prosecute or maintain such
Collagen helix logo in any territory in the world. If Collagen makes such
election as to any territory in the world, then Technologies may elect to file,
prosecute, or maintain such Collagen helix logo in such territory, at
Technologies' own expense, and Collagen will cooperate with Technologies'
filing, prosecution and/or maintenance, as applicable, and shall assign, subject
to its ability to do so, all of Collagen's rights, title, and interest in and to
such Collagen helix logo in such territory to Technologies at no additional fee.
As to the rights to the Collagen helix logo for any territory that is assigned
to Technologies pursuant to this Article VI, Collagen shall be entitled to
thereafter exercise those license rights set forth in Section 3.2 hereof with
respect to such Collagen helix logo as if it were an Assigned Trademark.
ARTICLE VII
CONFIDENTIALITY
The parties agree that Information that is proprietary or confidential
to: (i) Collagen prior to the Effective Date; or (ii) to one party and provided
to the other party pursuant to or in furtherance of this Agreement after the
Effective Date shall be subject to and treated in accordance with Article VIII
of the Separation Agreement.
ARTICLE VIII
TERMINATION
8.1 TERM. This Agreement will become effective on the Effective Date
and will continue until terminated as provided in Section 8.2 herein (the
"Term").
8.2 TERMINATION FOR CAUSE. Either party shall have the right to
terminate this Agreement following any material breach or default in performance
under this Agreement by the other party upon sixty (60) days prior written
notice to the breaching party specifying the nature of the breach or default.
Unless the breaching party has cured the breach or default prior to the
expiration of the sixty (60) day period, the non-breaching party, at its sole
option, may terminate this Agreement upon written notice to the breaching party.
Termination of this Agreement shall become effective upon receipt of such second
notice by the breaching party.
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8.3 EFFECT OF TERMINATION. Upon termination of this Agreement each
party shall return to the other party all copies of any and all Confidential
Information, received by the other party during the term of this Agreement.
8.4 SURVIVAL OF CERTAIN TERMS. The following provisions will survive
any expiration or termination of the AGREEMENT: (i) Sections 2.2, 2.3, 2.4, 2.6,
3.2, 3.3, 3.5 and 4.2 to the extent any license pursuant to any such section was
in effect as of the date of such termination; and (ii) Sections 2.1, 3.1, 4.1,
8.3 and 9.1 and Articles 1, 5, 6 and 7.
ARTICLE IX
ADDITIONAL OBLIGATIONS OF THE PARTIES
9.1 NON-COMPETE. During the Non-Compete Period, Technologies agrees
that it will not market, sell, or distribute, either directly or indirectly, any
Technology, or any products or processes for use in the Collagen Field. During
the Non-Compete Period, Collagen agrees that it will not market, sell, or
distribute, either directly or indirectly, any Technology, products or processes
for use outside the Collagen Field. In addition, during the Improvement Period,
each party agrees to refrain from soliciting for the purposes of obtaining
services from any then-current employee of the other party, or for a period of
ninety (90) days after termination of employment any former employee of the
other party, without the other party's prior written consent.
9.2 RIGHT OF FIRST DISCUSSION. Subject to the terms and conditions
herein, Collagen may exercise a right of first negotiation for a license
agreement with Technologies with respect to any Improvements in the Collagen
Field and made by Technologies during the period beginning on January 1, 1999,
and ending on March 15, 2004, and Technologies may exercise a right of first
negotiation for a license agreement with Collagen with respect to any
Improvements outside the Collagen Field and made by Collagen during the period
beginning on January 1, 1999, and ending on March 15, 2004. Each party shall
promptly notify the other party of any such Improvements, and the other party
shall have thirty (30) days to deliver a "Written Notice of Exercise." The
parties shall negotiate diligently and in good faith the terms of any license
agreement for a period of no more than ninety (90) days following a party's
delivery of a Written Notice of Exercise ("Negotiation Period"). If the parties
fail to execute a license agreement to such Improvements prior to the end of the
Negotiation Period, or the end of any mutually agreed to written extension
thereof, then the party holding the rights to such Improvements shall be
entitled, subject to Section 9.1, to enter into agreements with third parties
with respect to the subject matter of such negotiations.
9.3 PERSISTENCE TECHNOLOGY. The parties agree that the collagen
persistence project known as the collagen polymer or CP1/2 program ("CP1/2
Program") performed by Collagen before the Effective Date does not appear viable
and should no longer be pursued after the Effective Date. Commencing from the
execution of this Agreement until January 1, 2002, a designated representative
from each party shall meet with the other party's designated representative
(initially the representatives shall be the Co-chairs of the Recombinant
Technology Project as defined in the Recombinant Agreement) semi-annually to
discuss the
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feasibility of developing a persistent collagen product for use in the Collagen
Field, whether based on novel ideas or improvements to the CP1/2 Program. If
prior to January 1, 2002, such representatives identify an approach to
developing a persistent collagen product for use in the Collagen Field that has
a reasonable chance of success, the representatives shall notify the parties in
writing, and Technologies shall, within thirty (30) days of such notice, submit
to Collagen a proposed development plan for the development of persistent
collagen from such identified approach ("Proposal"). Collagen shall have 180
days from the receipt of such Proposal from Technologies to enter into a
definitive agreement with Technologies for the development and commercialization
of a persistent collagen product in accordance with such Proposal in
substantially the same form as the draft Persistence Agreement attached as
Exhibit A to the Separation Agreement.
ARTICLE X
MISCELLANEOUS
This Agreement shall be subject to the terms and provisions of Article
XI of the Separation Agreement, which are hereby incorporated into this
Agreement to the extent applicable.
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IN WITNESS WHEREOF, the parties have caused this Assignment and License
Agreement to be executed by their duly authorized representatives.
COLLAGEN CORPORATION
Dated: March 5, 1998 By: /s/ Xxxx X. Xxxxxxxxxxx
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Name: Xxxx X. Xxxxxxxxxxx
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Title: President and CEO
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COHESION TECHNOLOGIES, INC.
Dated: March 5, 1998 By: /s/ Xxxxx Xxxxxx
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Name: Xxxxx Xxxxxx
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Title: CEO
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EXHIBIT A
PRODUCTS
Zyderm(R) I implant
Zyderm(R) II implant
Zyplast(R) implant
Trilucent(R) breast implant
Contigen(R) Bard Collagen implant
Refinity(TM)
SoftForm(R) facial implant
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EXHIBIT B
PATENT ASSIGNMENT DOCUMENT
[SEE ATTACHED DOCUMENT.]
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PATENT ASSIGNMENT
This PATENT ASSIGNMENT (the "Assignment") is made from Collagen
Corporation a Delaware corporation (the "Assignor"), to Collagen Technologies,
Inc., a Delaware corporation (the "Assignee").
Assignor desires to assign to Assignee all of Assignor's right, title
and interest in and to the patents and/or inventions (the "Patents") set forth
on Exhibit A attached hereto.
In consideration for entering into the Assignment and License Agreement,
effective as of January 1, 1998, by and between Assignor and Assignee, and for
other good and valuable consideration, receipt and sufficiency of which is
hereby acknowledged, Assignor has sold, assigned, transferred, and set over, and
by these presents does hereby sell, assign, transfer and set over, to Assignee,
its successors, legal representatives and assigns, the entire right, title and
interest in and to the Patents, and any and all applications, including
provisional applications, therefor, in the United States of America and all
foreign countries which may be granted therefor and thereon, and in and to any
and all divisions, continuations, and continuations-in-part of said application,
and reissues and extensions of said Patents, and all rights under the
International Convention for the Protection of Industrial Property, the same to
be held and enjoyed by said Assignee, for its own use and behalf and the use and
behalf of its successors, legal representatives and assigns, to the full end of
the term or terms for which Patents may be granted, as fully and entirely as the
same would have been held and enjoyed by the Assignor, had this sale and
assignment not been made.
AND said Assignor hereby requests the Commissioner of Patents to issue
said Patents of the United States to said Assignee as the Assignee of said
inventions and the Patents to be issued thereon for the sole use and behalf of
said Assignee, its successors, legal representatives and assigns.
Dated:__________________________ COLLAGEN CORPORATION
By:_________________________________
Name:_______________________________
Title:______________________________
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EXHIBIT A
(to Patent Assignment)
See Schedule of Assigned Patents
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EXHIBIT C
TRADEMARK ASSIGNMENT DOCUMENT
[SEE ATTACHED DOCUMENT.]
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TRADEMARK ASSIGNMENT
This Trademark Assignment (the "Assignment") is made from Collagen
Corporation, a Delaware corporation (the "Assignor"), to Collagen Technologies,
Inc., a Delaware corporation (the "Assignee").
Assignor desires to assign to Assignee all of Assignor's right, title
and interest in and to the trademarks and/or service marks (the "Marks") set
forth on Exhibit A attached hereto, together with the goodwill of the business
pertaining thereto.
In consideration for entering into the Assignment and License Agreement,
effective as of January 1, 1998 by and between Assignor and Assignee, and for
other good and valuable consideration, receipt and sufficiency of which is
hereby acknowledged, Assignor does hereby assign, transfer, grant, sell and
otherwise convey to Assignee all of Assignor right, title and interest in and to
the Marks, including all common law rights therein, applications to register
therefor, together with the goodwill of the business symbolized by the Marks and
all claims for damages by reason of past infringements of the Marks with the
right to xxx for and collect the same for its own use and benefit, and for the
use and on behalf of its successors, assigns and other legal representatives.
Dated: ____________ COLLAGEN CORPORATION
By: _________________________________
Name: _______________________________
Title: ______________________________
18
EXHIBIT A
(to Trademark Assignment)
See Schedule of Trademarks
