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Thursday, December 21, 2017 9:23:46 PM
QTXB~MONSTA 8K NEWS BUY ALERT SECURITIES AND EXCHANGE COMMISSION
Washington, DC 20549
FORM 8-K
CURRENT REPORT
Pursuant to Section 13 or 15(d) of the
Securities Exchange Act of 1934
Date of Report (Date of earliest event reported): December 15, 2017
QUANTRX BIOMEDICAL CORPORATION
(Exact name of Registrant as specified in its Charter)
Nevada
000-17119
33-0202574
(State or other jurisdiction of incorporation)
(Commission File No.)
(IRS Employer Identification No.)
10190 SW 90th Avenue, Tualatin, Oregon 97123
(Address of principal executive offices)
(212) 980-2235
(Registrant’s Telephone Number)
Not Applicable
(Former name or address, if changed since last report)
Check the appropriate box below if the Form 8-K filing is intended to simultaneously satisfy the filing obligation of the registrant under any of the following provisions (see General Instruction A.2. below):
? Written communications pursuant to Rule 425 under the Securities Act (17 CFR 230.425)
? Soliciting material pursuant to Rule 14a-12 under the Exchange Act (17 CFR 240.14a-12)
? Pre-commencement communications pursuant to Rule 14d-2(b) under the Exchange Act (17 CFR 240.14d-2(b))
? Pre-commencement communications pursuant to Rule 13e-4(c) under the Exchange Act (17 CFR 240.13e-4(c))
Indicate by check mark whether the registrant is an emerging growth company as defined in Rule 405 of the Securities Act of 1933 (17 CFR 230.405) or Rule 12b-2 of the Securities Exchange Act of 1934 (17 CFR 240.12b-2) ?
If an emerging growth company, indicate by check mark if the registrant has elected not to use the extended transition period for complying with any new or revised financial accounting standards provided pursuant to Section 13(a) of the Exchange Act ?
Item 1.01 Entry into a Material Definitive Agreement
On December 15, 2017 (“Closing Date”), QuantRx Biomedical Corporation (the “Company”) entered into an agreement with Preprogen LLC (“Preprogen”), pursuant to which the parties agreed to the sale, assignment, and license-back of certain assets of the Company (the “Purchased Assets”) related to the means of collection and analysis of vaginal fluid and exfoliated vaginal cells, as more specifically set forth in the Asset Purchase Agreement (the “APA”), Patent Assignment, Trademark Assignment and License Agreement (together, the “Transaction Documents”) attached hereto as Exhibit 10.1, Exhibit 10.2, Exhibit 10.3 and 10.4, respectively.
As consideration for the sale, assignment and transfer of the Purchased Assets (the “Preprogen Transaction”), on the Closing Date Preprogen (A) paid to the Company $1.0 million (“Cash Amount”) as follows: (i) approximately $38,000 was paid to the City of Portland to payoff certain indebtedness owed by the Company to the City of Portland, (ii) $65,000 was paid to Preprogen as a result of the cancellation and termination of certain promissory notes payable to Preprogen by the Company, and (iii) the remaining balance was paid to the Company in cash at closing (the “Closing Balance”); and (B) issued to the Company that number of membership interests of Preprogen equal to 15% of the issued and outstanding membership interests in Preprogen on a fully diluted basis as of the Closing Date. Under the terms of the APA, Preprogen is obligated to pay to the Company such additional amounts calculated based on the aggregate gross revenue generated by Preprogen from the sale of products after the Closing Date that utilize, or royalty payments or licensing fees received by Preprogen with respect to, the Purchased Assets, if any, as more particularly set forth in the APA.
At closing, and as required by the APA, the Company deposited $400,000 of the Cash Balance in escrow, which funds shall be used to fund up to 50% of the costs incurred by Preprogen in connection with the development and manufacturing of materials to be used by the Company for its over the counter (“OTC”) miniform products and to be used by Preprogen for diagnostic products related to the Purchased Assets. A copy of the Escrow Agreement is attached hereto as Exhibit 10.5.
As additional consideration for the Purchased Assets, the Company issued a warrant to Preprogen’s designee, to purchase up to 15.0 million shares of the Company’s common stock, par value $0.01 per share, at an exercise price equal to $0.05 per share (the “Warrant”). The Warrant is immediately exercisable, and shall expire on December 14, 2022. A copy of the Warrant is attached hereto as Exhibit 10.6.
Pursuant to the terms of the License Agreement, Preprogen licensed-back to the Company rights to use the intellectual property transferred to Preprogen necessary to the development, manufacture, marketing and sale of the Company’s OTC miniform products for the feminine hygiene and hemorrhoid treatment markets.
Item 2.01 Completion of Acquisition or Disposition of Assets.
See Item 1.01 above.
Item 3.02 Unregistered Sales of Equity Securities
See Item 1.01 above.
Item 9.01 Financial Statements and Exhibits
See Exhibit Index.
Disclaimer
The foregoing descriptions of the APA, Patent Assignment, Trademark Assignment, License Agreement, Escrow Agreement and Warrant do not purport to be complete, and are qualified in their entirety by reference to the full text of the APA, Patent Assignment, Trademark Assignment, License Agreement, Escrow Agreement and Warrant, attached hereto as Exhibits 10.1, 10.2, 10.3, 10.4, 10.5 and 10.6, respectively, each of which are incorporated by reference herein.
SIGNATURES
Pursuant to the requirements of the Securities Exchange Act of 1934, the registrant has duly caused this report to be signed on its behalf by the undersigned hereunto duly authorized.
TRACK GROUP, INC.
Date: December 21, 2017
By:
/s/ Dr. Shalom Hirschman
Dr. Shalom Hirschman
Chief Executive Officer
EXHIBIT INDEX
Exhibit No.
Description
10.1
Asset Purchase Agreement, dated December 14, 2017
10.2
Patent Assignment, dated December 14, 2017
10.3
Trademark Assignment, dated December 14, 2017
10.4
License Agreement, dated December 14, 2017
10.5
Escrow Agreement, dated December 14, 2017
10.6
Warrant, dated December 14, 2017
Exhibit 10.1
ASSET PURCHASE AGREEMENT
This ASSET PURCHASE AGREEMENT (this “Agreement”), dated December 14, 2017, is made by and between QuantRx Biomedical Corporation, a Nevada corporation (“Seller”), and Preprogen LLC, a Delaware limited liability company (“Buyer”). Buyer and Seller are collectively referred to herein as the “Parties” and each individually as a “Party”.
WHEREAS, the Parties desire that, at the Closing (defined below) and subject to the terms and conditions set forth in this Agreement, Seller shall sell, assign, transfer and deliver to Buyer, and Buyer shall purchase and accept from Seller, all of the Purchased Assets (defined below).
NOW, THEREFORE, in consideration of the foregoing and the representations, warranties, covenants and agreements herein contained, the Parties hereto agree as follows:
SECTION 1. DEFINITIONS AND TERMS.
1.1 Specific Definitions. As used in this Agreement, the following terms have the following meanings:
“Affiliate” means, with respect to any Person, any Person directly or indirectly controlling, controlled by or under common control with, such Person. For purposes of this definition, “control” (including, with correlative meaning, the terms “controlling”, “controlled by” and “under common control with”) means the possession, directly or indirectly, of the power to direct or cause the direction of the management and policies of such Person through the ownership of such Person’s voting securities, by contract or otherwise.
“Allocation” has the meaning set forth in Section 3.4.
“Agreement” has the meaning set forth in the preamble to this Agreement.
“Base Cash Amount” has the meaning set forth in Section 2.3.
“Business” means the collection and analysis of vaginal fluid and exfoliated vaginal cells, including, but not limited to, fetal cellular material and/or cancer cells utilizing, among other resources, the proprietary PadKit technology of Seller, and the commercialization of the foregoing.
“Business Day” means any day other than a Saturday, a Sunday or a day on which banks in New York City are authorized or obligated by Law or executive order to close.
“Buyer” has the meaning set forth in the preamble to this Agreement.
“Buyer Indemnified Parties” has the meaning set forth in Section 7.1(a).
“Code” has the meaning set forth in Section 3.4.
“Closing” has the meaning set forth in Section 3.1.
“Closing Date” has the meaning set forth in Section 3.1.
“Disagreement Notice” has the meaning set forth in Section 7.3(f).
“Disputed Items” has the meaning set forth in Section 4.2.
“Encumbrance” means any mortgage, lien, pledge, security interest, charge, encumbrance, claim, covenant, condition or restriction or any other adverse claim, right or encumbrance of any kind or nature whatsoever.
“Equity Amount” has the meaning set forth in Section 2.3.
“Equity Consideration” has the meaning set forth in Section 3.2(c).
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“Excluded Business” means the development, manufacturing, marketing and sale of the over-the-counter (“OTC”) miniform products for the feminine hygiene markets and hemorrhoid treatment markets, including, for the avoidance of doubt, the OTC Pad technologies, including feminine and anal hygienic pad, and lateral flow technology.
“Excluded Liabilities” has the meaning set forth in Section 2.2.
“Final Revenue Statement” has the meaning set forth in Section 4.2.
“Fundamental Representations” means, collectively, Sections 5.1(a) (Organization), 5.1(b) (Authorization), 5.1(c)(i) (No Conflicts), and 5.1(k) (No Brokers).
“GAAP” means United States generally accepted accounting principles as in effect from time to time.
“Governmental Authority” means any federal, state, local or foreign government or other political subdivision thereof or any entity, body, regulatory or administrative authority, agency, commission, court, tribunal or judicial body exercising executive, legislative, judicial, regulatory or administrative functions of or pertaining to government.
“Indemnified Party” has the meaning set forth in Section 7.3(a).
“Indemnifying Party” has the meaning set forth in Section 7.3(a).
“Independent Expert” has the meaning set forth in Section 4.2.
“Intellectual Property” means all rights in intellectual property throughout the world, including:
(a) all domestic and foreign copyright interests in any original work of authorship, whether registered or unregistered, including to all copyright registrations or foreign equivalent, all applications for registration or foreign equivalent, all moral rights, all common-law rights, and all rights to register and obtain renewals and extensions of copyright registrations, together with all other copyright interests accruing by reason of international copyright convention (“Copyrights”);
(b) all domestic and foreign patents (including certificates of invention and other patent equivalents), provisional applications, patent applications and patents issuing therefrom as well as any division, continuation or continuation in part, reissue, extension, reexamination, certification, revival or renewal of any patent, all Inventions and subject matter related to such patents, in any and all forms (“Patents”);
(c) all domestic and foreign trademarks, trade dress, service marks, trade names, icons, logos, slogans, and any other indicia of source or sponsorship of goods and services, designs and logotypes related to the above, in any and all forms, all trademark registrations and applications for registration related to such trademarks (including intent to use applications), and all goodwill related to the foregoing (“Trademarks”);
(d) all domain name registrations (“Domain Names”);
(e) any formula, design, device or compilation, or other information which is used or held for use by a business, which gives the holder thereof an advantage or opportunity for advantage over competitors which do not have or use the same, and which is not generally known by the public. Trade Secrets can include, by way of example, formulas, algorithms, market surveys, market research studies, information contained on drawings and other documents, and information relating to research, development or testing (“Trade Secrets”);
(f) novel devices, processes, compositions of matter, methods, techniques, observations, discoveries, apparatuses, machines, designs, expressions, theories and ideas, and inventions, whether or not patentable, scientific, engineering, mechanical, electrical, financial, marketing or practical knowledge or experience useful in the operation of Seller or the Business (“Know How”);
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(g) (i) any and all computer programs and/or software programs (including all source code, object code, firmware, programming tools and/or documentation), (ii) databases and compilations, including any and all data and collections of data, and (iii) all content contained on Internet site(s) (“Software”);
(h) all documentation and media constituting, describing or relating to the above, including memoranda, manuals, technical specifications and other records wherever created throughout the world; and
(i) the right to sue for past, present, or future infringement and to collect and retain all damages and profits related to the foregoing.
“IP Assignments” has the meaning set forth in Section 3.2.
“Knowledge of Seller” means the actual knowledge after reasonable due inquiry of Dr. Shalom Hirschman and Michael Abrams.
“Law” or “Laws” means any law (both common and statutory law and civil and criminal law), treaty, convention, rule, directive, legislation, ordinance, regulatory code (including statutory instruments, guidance notes, circulars, directives, decisions, rules and regulations) or similar provision having the force of law or an order of any Governmental Authority.
“License Agreement” has the meaning set forth in Section 3.2(c).
“Losses” has the meaning set forth in Section 7.1(a).
“Notice of Claim” has the meaning set forth in Section 7.3(a).
“Other Transaction Documents” means, collectively, the Preprogen Operating Agreement, the IP Assignments, the Warrant and the License Agreement.
“Owned IP” has the meaning set forth in Section 5.1(g)(i)(A).
“Parties” has the meaning set forth in the preamble to this Agreement.
“Person” means an individual, a corporation, a limited liability company, a partnership, an association, a trust or other entity or organization, including any Governmental Authority.
“Preprogen Operating Agreement” has the meaning set forth in Section 3.2(c).
“Proceeding” has the meaning set forth in Section 7.3(a).
“Promissory Notes” has the meaning set forth in Section 3.2(b).
“Promissory Notes Amount” means $65,000, representing the aggregate outstanding principal amount of the Promissory Notes.
“PTO” has the meaning set forth in Section 5.1(g)(ii)(C).
“Purchased Assets” has the meaning set forth in Section 2.1.
“Purchase Price” has the meaning set forth in Section 3.4.
“Registered IP” has the meaning set forth in Section 5.1(g)(i)(A).
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“Revenue” means the amount of gross revenue recognized by Buyer following the Closing from the sale of products that utilize, in whole or in part, or royalty payments or licensing fees received by Buyer with respect to, (i) the Patents included in the Owned IP acquired pursuant to this Agreement that relate primarily to the Business, and/or (ii) improvements to, or extensions of, such acquired Patents made by, or issued to, Buyer following the Closing or any Patents developed by Buyer following the Closing that relate, in whole or in part, to such acquired Patents, in each case, calculated in accordance with GAAP.
“Revenue Payment” has the meaning set forth in Section 4.1.
“Revenue Statement” has the meaning set forth in Section 4.1.
“Securities Act” has the meaning set forth in Section 5.1(h).
“Seller” has the meaning set forth in the preamble to this Agreement.
“Seller Disclosure Schedule” has the meaning set forth in Section 5.1.
“Seller Indemnified Parties” has the meaning set forth in Section 7.2(a).
“Warrant” has the meaning set forth in Section 3.2.
“Warrant Shares” has the meaning set forth in Section 5.1(h).
“Warrantholder” has the meaning set forth in Section 2.3.
1.2 Other Definitional Provisions. All references to Articles, Sections and Exhibits are references to Articles, Sections and Exhibits of this Agreement unless otherwise provided. Terms defined in the singular have a comparable meaning when used in the plural, and vice versa. The use of the masculine, feminine or neuter gender herein shall not limit any provision of this Agreement. The words “include”, “includes” and “including” shall be deemed to be followed by the words “without limitation” whether or not they are in fact followed by those words or words of like import. The terms “dollars” and “$” mean U.S. dollars. Whenever this Agreement refers to a number of days, such number shall refer to calendar days unless Business Days are specified. Whenever any action must be taken hereunder on or by a day that is not a Business Day, then such action may be validly taken on or by the next day that is a Business Day. The words “hereof”, “hereto”, “hereby”, “herein”, “hereunder” and words of similar import, when used in this Agreement, shall refer to this Agreement as a whole and not to any particular section or article in which such words appear. The phrase “the date of this Agreement”, “date hereof” and terms of similar import, unless the context otherwise requires, shall be deemed to refer to the date set forth in the preamble of this Agreement. The use of “or” is not intended to be exclusive unless expressly indicated otherwise. References to any Law shall be deemed to refer to such Law and the rules and regulations promulgated thereunder, as in effect from time to time prior to the Closing, and any successor to such Law. The exhibits and annexes to this Agreement constitute a part of this Agreement and are incorporated herein for all purposes.
SECTION 2. PURCHASE AND SALE OF ASSETS.
2.1 Purchased Assets. Seller shall (and, effective as of the Closing, does hereby) sell, assign, transfer and deliver to Buyer, and Buyer shall (and, effective as of the Closing, does hereby) purchase and accept from Seller, at the Closing, all legal and beneficial right, title and interest of Seller in and to all of the Purchased Assets, in each case, free and clear of any and all Encumbrances. “Purchased Assets” means, collectively, all properties, rights, claims, assets, records, Intellectual Property (including patents, know-how, trade secrets, and diagnostic applications and data) of Seller related to the Business. Further and not in limitation of the foregoing, Purchased Assets shall include the properties, rights, claims, assets, records and Intellectual Property set forth on Schedule A.
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2.2 Excluded Assets and Liabilities. Notwithstanding any provision in this Agreement to the contrary, Buyer is not purchasing any properties, rights, claims or assets of Seller other than the Purchased Assets and is not assuming any liability or obligation of Seller or any of its Affiliates (or any predecessor of Seller or any of its Affiliates, or any prior owner of all or part of Seller’s or its Affiliates’ businesses or assets) of whatever nature, whether absolute, accrued, contingent or otherwise, and whether presently in existence or arising hereafter. All such liabilities and obligations shall be retained by and remain obligations and liabilities of Seller or its Affiliates, as applicable (all such liabilities and obligations herein referred to as the “Excluded Liabilities”).
2.3 Transaction Consideration. The aggregate consideration to be paid by Buyer in respect of the transactions contemplated by this Agreement shall consist of (a) one million dollars ($1,000,000) (the “Base Cash Amount”), which shall be paid in the manner set forth in Section 3.2(a), (b) the issuance by Buyer of the Equity Consideration, as such term is defined in Section 3.2(c) below, which for purposes of this Agreement shall be valued at five hundred thousand dollars ($500,000) (the “Equity Amount”), and (c) Seller’s right to receive the Revenue Payments, if any, pursuant to Section 4. In addition, as part of the overall consideration for the transactions contemplated hereby, Seller shall issue the Warrant to Rashbi Capital Group, LLC, a Delaware limited liability company (the “Warrantholder”), in accordance with Section 3.2(g).
SECTION 3. CLOSING.
3.1 Closing Date. The closing of the transactions contemplated hereby (the “Closing”) shall take place at the offices of Kramer Levin Naftalis & Frankel LLP, 1177 Avenue of the Americas, New York, NY 10036, at 10:00 a.m. on the date hereof, simultaneously with the execution and delivery hereof, unless another time, date or place is agreed to in writing by the parties. The date on which the Closing occurs is referred to herein as the “Closing Date”, and the Closing will be deemed effective as of 12:01 a.m. Eastern Time on the Closing Date.
3.2 Closing Transactions. At the Closing, the following transactions shall be effected by the Parties:
(a) Buyer shall pay, by wire transfer of immediately available funds to the account(s) designated in writing by Seller prior to the Closing, an amount equal to the Base Cash Amount, less (i) the Promissory Notes Amount, and (ii) the Portland Payoff Amount.
(b) Buyer shall pay to the City of Portland (“Portland”) on behalf of Seller and in accordance with the payment instructions set forth in the payoff letter attached hereto as Exhibit 3.2(b) the aggregate amount indicated on such payoff letter as required to be paid to Portland on the Closing Date in order to fully discharge the indebtedness owing to Portland (such amount, the “Portland Payoff Amount”).
(c) Each of the Parties agrees that, effective concurrently with the payment by Buyer pursuant to Section 3.2(a), (i) that certain Convertible Promissory Demand Note, with an issuance date of May 8, 2017, issued by Seller to Buyer in the principal sum of $25,000, (ii) that certain Convertible Promissory Demand Note, with an issuance date of March 16, 2017, issued by Seller to Buyer in the principal sum of $25,000 (iii) that certain Convertible Promissory Demand Note, with an issuance date of October 2, 2017, issued by Seller to Buyer in the principal sum of $15,000 (such Convertible Promissory Demand Notes collectively, the “Promissory Notes”) shall be canceled and terminated, and any and all of the rights, obligations, covenants, agreements, representations and warranties contained therein (including any interest accrued thereon and all other rights of the holder thereunder) shall be canceled and terminated and of no further force and effect.
(d) Buyer shall issue to Seller that number of membership interests of Buyer equal to 15% of the issued and outstanding membership interests of Buyer on a fully diluted basis as of the Closing Date (assuming the conversion, exercise, or exchange for membership interests of all convertible securities issued and outstanding prior to such conversion, all outstanding warrants and options, and all other convertible debt, notes, debentures, or any other securities which are convertible, exercisable or exchangeable for membership interests (“Convertible Securities”), including for such purpose all Convertible Securities which Buyer has agreed to issue prior to such conversion (the “Equity Consideration”), for an aggregate price equal to the Equity Amount in accordance with this Agreement and that certain Amended and Restated Limited Liability Company Agreement of Buyer in the form attached hereto as Exhibit 3.2(d) (the “Preprogen Operating Agreement”).
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(e) Seller and the other equity holders named in the Preprogen Operating Agreement shall duly execute and deliver to each other the Preprogen Operating Agreement.
(f) Seller shall duly execute and deliver to Buyer each of the intellectual property assignments attached hereto as Exhibit 3.2(f) (the “IP Assignments”).
(g) Seller shall duly execute, deliver and issue to the Warrantholder, and the Warrantholder shall duly execute and deliver to Seller, the warrant in the form attached hereto as Exhibit 3.2(g) (the “Warrant”).
(h) Buyer and Seller shall duly execute and deliver to each other the license agreement in the form attached hereto as Exhibit 3.2(h) (the “License Agreement”).
3.3 Sales and Transfer Taxes. Seller shall bear solely all sales, use, excise, and other transfer taxes and duties applicable to the transfer of the Purchased Assets in connection with this Agreement and the Other Transaction Documents. Any payment or reimbursement under this Section 3.3 shall be made within ten (10) Business Days after any such valid request for payment or reimbursement.
3.4 Purchase Price Allocation. The Base Cash Amount and the Revenue Payments to be made in accordance with Section 4, if any, (the “Purchase Price”) shall be allocated among the Purchased Assets in the manner agreed upon by Seller and Buyer in good faith as promptly as practicable following the Closing in the manner required by Section 1060 of the Internal Revenue Code of 1986, as amended (the “Code”) (such resulting allocation, the “Allocation”). Seller and Buyer agree that they will adopt and utilize the amounts allocated to each of the Purchased Assets for all purposes, including all tax returns filed by them and that they will not take any position or action inconsistent therewith or on any such tax return or in any legal or administrative proceeding or otherwise. Each Party hereto agrees to prepare and timely file all applicable Internal Revenue Service and applicable state tax forms relating to the Allocation including IRS Form 8594, to reasonably cooperate with the other Party in the preparation of such forms. Each Party agrees that any Revenue Payments made in accordance with Section 4 and any indemnification payments made in accordance with Section 7 shall each be treated as adjustments to the Purchase Price. The parties agree to treat the transaction for U.S. federal, state and local income tax purposes (a) as a taxable sale and purchase to the extent of the Base Cash Amount and Revenue Payments, and (b) as a contribution of property to Buyer under Section 721(a) of the Code to the extent of the Equity Amount. No party hereto (nor any of such party’s Affiliates) shall take any position inconsistent with the foregoing tax characterizations.
3.5 Withholding. Buyer shall be entitled to deduct and withhold from any amounts payable or otherwise deliverable pursuant to this Agreement such amounts as may be required to be deducted or withheld therefrom under any provision of federal, state, local or non-U.S. Tax law or under any applicable legal requirement and to request any necessary Tax forms, including Form W-9 or the appropriate series of Form W-8, as applicable, or any similar information. To the extent such amounts are so deducted or withheld and properly remitted to the appropriate Governmental Authority, such amounts shall be treated for all purposes under this Agreement as having been paid to the Person to whom such amounts would otherwise have been paid. Buyer shall give Seller reasonable advance notice of its intention to withhold and an opportunity to avoid such withholding consistent with applicable Law.
SECTION 4. REVENUE PAYMENTS.
4.1 Revenue Payment Calculation and Payment.
(a) Calculation. In addition to the payments contemplated by Section 3.2 and subject to the conditions set forth in this Section 4, Seller shall be eligible to receive additional payments (the “Revenue Payments”) based upon Revenue, if any, in accordance with this Section 4. The amount of Revenue Payments that Seller is entitled to receive hereunder, if any, will be calculated as follows:
(i) 1.5% of aggregate Revenue, until aggregate Revenue exceeds $100,000,000;
(ii) thereafter, 1.75% of aggregate Revenue that exceeds $100,000,000, until aggregate Revenue exceeds $200,000,000; and
(iii) thereafter, 2% of aggregate Revenue that exceeds $200,000,000.
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(b) Payment. As soon as practicable, but in no event later than forty-five (45) calendar days following the end of each calendar quarter following the Closing Date, Buyer shall prepare and deliver (or shall cause to be prepared and delivered) to Seller a statement, in reasonable detail, of (i) the Revenue recognized during such calendar quarter, if any, (ii) the aggregate Revenue recognized since the Closing and (iii) the amount of the Revenue Payment (if any) earned in respect of such quarter (each, a “Revenue Statement”). If any Revenue is recognized during a calendar quarter following the Closing, then no later than forty-five (45) calendar days following the end of such calendar quarter, Buyer shall pay to Seller, by wire transfer of immediately available funds to the bank account(s) designated in writing by Seller, the Revenue Payment earned during such calendar quarter (or the pro rata amount thereof in the case of any partial calendar quarter period), as reflected on the Revenue Statement for such calendar quarter.
4.2 Disputes. If Seller shall have any disagreement with respect to any Revenue Statement or the calculation of any Revenue Payment, Seller shall have the right to dispute such Revenue Statement(s) and calculation of Revenue Payment(s), no more than once per calendar year (and such dispute shall be limited to the Revenue Statements and calculation of any Revenue Payment delivered in such calendar year), by giving written notice to Buyer. Any such notice from Seller shall specify, in reasonable detail, such disagreement and the basis therefor. The failure by Seller to notify Buyer of its disagreement within thirty (30) calendar days following the end of each calendar year will constitute Seller’s acceptance of the applicable Revenue Statement(s), the calculation(s) of the Revenue recognized (if any) set forth in such Revenue Statement(s), the calculation(s) of aggregate Revenue recognized since the Closing as set forth in such Revenue Statement(s) and the amount of the Revenue Payment(s) (if any) earned in respect of the quarter(s) with respect to which such Revenue Statement(s) relate, and the foregoing shall be deemed final and binding on the Parties. Any item contained in a Revenue Statement(s) for which Seller has not notified Buyer of a dispute within such thirty (30) calendar day period shall be deemed final and binding on the Parties. If Buyer and Seller are unable to resolve any disagreement between them within thirty (30) calendar days after Seller’s giving of notice of such disagreement, or such longer period as Buyer and Seller may mutually agree, the items in dispute (collectively, the “Disputed Items”) will promptly be referred for determination and resolution to a nationally-recognized accounting firm mutually agreed by Buyer and Seller (the “Independent Expert”). Buyer and Seller shall each make written submissions to the Independent Expert promptly (and in any event within ten (10) calendar days of the Independent Expert’s engagement), which submissions shall contain such party’s computation of the Disputed Items and information, arguments, and support for such party’s position as such party may elect to offer. The Independent Expert shall be instructed to, within thirty (30) calendar days of the date on which a Disputed Item has been referred to it for determination, (i) make a written determination (such determination to include a worksheet setting forth all material calculations used in arriving at such determination and to be based solely on information provided to the Independent Expert by Buyer and Seller) only as to each of the Disputed Items and shall have no authority to review and make a determination with respect to any item which has not been submitted by Seller and Buyer for determination by the Independent Expert, and (ii) based on the items not in dispute and on the Independent Expert’s determination of the Disputed Items, calculate the applicable Final Revenue Statement for the applicable calendar quarter(s) and the Revenue Payment(s) earned (if any) during such calendar quarter(s), which determination and calculation will be (x) in writing, (y) promptly furnished to Seller and Buyer after the Disputed Items have been referred to the Independent Expert (but in any event, to the extent possible, within thirty (30) calendar days) and (z) conclusive and binding upon each of the parties hereto and not subject to appeal absent fraud or manifest error. In resolving any Disputed Item, the Independent Expert may not assign a value to any item greater than the highest value for such item claimed by either party or less than the lowest value for such item claimed by either party. Any applicable Revenue Statement, (A) as agreed upon by Buyer and Seller following Seller’s delivery of a notice of disagreement, or (B) as finally determined by the Independent Expert pursuant to this Section 4.2, shall be referred to herein as a “Final Revenue Statement”. In connection with its determination of the Disputed Items, the Independent Expert will be entitled to review the workpapers, trial balances and similar materials and any books and records related thereto. The fees and expenses of the Independent Expert will be paid by Buyer and Seller in inverse proportion as they may prevail (based on the disputed items as resolved by the Independent Expert as compared to the disputed items proposed by Buyer and Seller) as determined by the Independent Expert. If the amount of the Revenue Payment earned with respect to any calendar quarter as set forth in the Final Revenue Statement for such calendar quarter exceeds the amount previously paid by Buyer with respect to such calendar quarter in accordance with Section 4.1, Buyer shall pay such excess to Seller within five (5) Business Days after the determination of the Final Revenue Statement for such calendar quarter in accordance with this Section 4.2.
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4.3 Post-Closing Operation of the Purchased Assets. Subsequent to the Closing, Buyer shall have sole discretion with regard to all matters relating to the operation of the Purchased Assets, it being understood and agreed that Buyer has no obligation to operate the Purchased Assets in order to achieve any Revenue or Revenue Payment or to maximize the amount of the Revenue Payments; provided, that Buyer shall comply with the covenant of good faith and fair dealing implicit in this Agreement. For the avoidance of doubt, it is understood and agreed that (a) the contingent rights to receive any Revenue Payments shall not be represented by any form of certificate or other instrument, are not transferable without the prior written consent of Buyer, and do not constitute an equity or ownership interest in Buyer or any Affiliate thereof, (b) Seller shall not have any rights as a securityholder of Buyer or any of its Affiliates as a result of contingent right to receive any Revenue Payments hereunder, (c) no interest is payable with respect to any Revenue Payments, and (d) neither Buyer, nor any of its Affiliates shall owe any fiduciary duty to Seller as though it were an equity holder of Buyer or any of its Affiliates or otherwise as a result of the contingent right to receive any Revenue Payments hereunder.
4.4 Setoff Right. Any payment due by Buyer to Seller pursuant to this Section 4 shall be permitted to be set off against any payment owed by Seller under Section 7.1.
SECTION 5. REPRESENTATIONS AND WARRANTIES.
5.1 Seller Representations and Warranties. Subject to such exceptions as are specifically set forth in the appropriate section or subsection of the disclosure schedule delivered by Seller to Buyer on the date hereof (the “Seller Disclosure Schedule”) or in any other section or subsection of the Seller Disclosure Schedule if and to the extent that the relevance of such disclosure to such other section or subsection is reasonably apparent on the face of such disclosure without reference to the documents referenced therein, Seller hereby represents and warrants to Buyer and the Warrantholder as follows:
(a) Organization. Seller is a corporation duly created and organized, and validly existing under the laws of its jurisdiction of creation, and has full power and authority to own or use the properties and assets that it purports to own or use, and to sell, encumber, distribute, exchange or in any other way dispose of such assets. Seller is legally qualified to transact business, and, to its knowledge, there are no claims or allegations by any Person contesting or questioning the authority of Seller to conduct such business.
(b) Authorization. Seller has full corporate power and authority to execute, deliver and perform this Agreement and each Other Transaction Document to which it is a party and to consummate the transactions contemplated by this Agreement and the Other Transaction Documents. The execution, delivery and performance by Seller of this Agreement and the Other Transaction Documents to which it is a party, and the consummation of the transactions contemplated by this Agreement and the Other Transaction Documents, have been duly authorized by all necessary corporate action of Seller. This Agreement and each Other Transaction Document to which Seller is a party have been duly executed and delivered by Seller and constitute or will constitute a valid and legally binding obligation of Seller enforceable against Seller in accordance with its terms, except that such enforceability may be limited by (i) applicable bankruptcy, insolvency, reorganization, moratorium, and similar laws affecting creditors’ rights generally, (ii) equitable principles which may limit the availability of certain equitable remedies (such as specific performance) in certain instances, and (iii) public policy considerations with respect to the enforceability of rights of indemnification.
(c) No Conflicts. The execution, delivery and performance by Seller of this Agreement and the Other Transaction Documents to it is a party and the consummation of the transactions contemplated by this Agreement and the Other Transaction Documents do not and will not (i) conflict with or result in a violation of any provision of the certificates of incorporation, bylaws or other organizational documents of Seller, (ii) conflict with or result in a violation of any provision of, or constitute (with or without the giving of notice or the passage of time or both) a default under, any bond, debenture, note, mortgage, indenture, lease, agreement, or other instrument or obligation to which it is a party or by which Seller or any of its properties may be bound, (iii) result in the creation or imposition of any Encumbrance upon any of the Purchased Assets, or (iv) violate any Law binding upon Seller.
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(d) No Consents. No consent, approval, order or authorization of, or declaration, filing or registration with, any Governmental Authority or any other Person is required to be obtained or made by Seller in connection with the execution, delivery or performance by Seller of this Agreement or any Other Transaction Document to which it is a party or the consummation of the transactions contemplated by this Agreement and the Other Transaction Documents. The representations and warranties of Seller contained in this Section 5.1, insofar as such representations and warranties pertain to compliance by Seller with the requirements of applicable state or federal securities Laws with respect to the issuance of the Warrant and Warrant Shares, are based on the representations and warranties of Buyer contained in Section 5.2(d).
(e) No Impairments. There is (i) no order, action, suit, demand or claim in writing or legal, administrative, arbitration or other alternative dispute resolution proceeding, hearing, inquiry or investigation before or by any Governmental Authority or arbitrator or official now pending or, to the knowledge of Seller, threatened, to which Seller is or may be a party or to which the business, property or assets of Seller is or may be subject, (ii) no statute, rule, regulation or order that has been enacted, adopted or issued by any Governmental Authority or, to the knowledge of Seller, that has been proposed by any Governmental Authority and (iii) no injunction, restraining order or order of any nature issued by a Governmental Authority of competent jurisdiction to which Seller is or, or to the knowledge of Seller, may be subject, that, in the case of clauses (i), (ii) and (iii) above, is reasonably expected to (A) prevent or result in the suspension of the issuance of the Warrant or Warrant Shares or (B) otherwise affect adversely the ability of Seller to consummate the transactions contemplated by this Agreement and the Other Transaction Documents.
(f) Title to Purchased Assets; Sufficiency. Seller has good, valid, marketable and exclusive title in and to each of the Purchased Assets owned by Seller free and clear of all Encumbrances. Upon consummation of the transactions contemplated by this Agreement, Buyer will have acquired good, valid, marketable and exclusive title in and to each of the Purchased Assets, free and clear of all Encumbrances. The Purchased Assets include all of the Intellectual Property that is used or held for use in the Business.
(g) Intellectual Property.
(i) General.
(A) Schedule 5.1(g)(i)(A) lists (i) all issued Patents included in the Purchased Assets, and all pending applications for Patents included in the Purchased Assets; (ii) all registered Trademarks included in the Purchased Assets, and all pending applications for Trademarks included in the Purchased Assets; (iii) all registered Copyrights included in the Purchased Assets, and all pending applications for Copyrights included in the Purchased Assets; and (iv) all Domain Names included in the Purchased Assets; in each case of (i), (ii), (iii) and (iv) above, owned by or purported to be owned by Seller (“Registered IP”; the Registered IP, together with all other Intellectual Property, including Know How, Trade Secrets and Software, owned by or purported to be owned by Seller that is included in the Purchased Assets, collectively, the “Owned IP”). Schedule 5.1(g)(i)(A) also lists all material unregistered or common law Trademarks included in the Purchased Assets. For the Registered IP, Schedule 5.1(g)(i)(A) lists, as applicable, the Patent title, Trademark or Domain Name, the Patent number registration number or application number, date of application, registration or issuance, record owner, original applicant, registrar or country, and current status or next action due.
(B) The Owned IP does not include, and Seller does not own or purport to own, any Software.
(C) There are no licenses, sublicenses, agreements (development, distribution or otherwise) or other instruments involving the Owned IP, and Seller is not a party to any license, sublicense, agreement (development, distribution or otherwise) or other instrument involving any Intellectual Property of any Person.
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(D) All officers, employees and contractors of Seller who have authored, invented or otherwise developed Owned IP, have executed an agreement under which all rights, title and ownership in and to such Intellectual Property have been assigned to Seller.
(E) Seller has not infringed upon, misappropriated or otherwise violated, and no Owned IP has or will, infringe upon, misappropriate or otherwise violate, any Intellectual Property or other proprietary right of any Person. There are no pending, nor to the Knowledge of Seller, threatened claims, proceedings or actions contesting or challenging the Owned IP. To the Knowledge of Seller, no Person, including any current or former employee or contractor of Seller, is infringing upon, misappropriating, or otherwise violating Seller’s rights to the Owned IP.
(F) The Owned IP is free and clear of any and all Liens.
(ii) Patents.
(A) All of the issued Patents and pending applications for Patents that are Owned IP are currently in compliance with all legal requirements for maintaining pendency of patents (including payment of filing, examination, and maintenance fees), and are not subject to any maintenance fees or taxes or actions falling due within ninety (90) days after the Closing Date.
(B) No Patent that is Owned IP has been or is now involved in any infringement, interference, reissue or reexamination Proceeding and, to the Knowledge of Seller, no such action is threatened with respect to any such Patents.
(C) Seller, the inventors and the attorneys of record, have each complied with the United States Patent and Trademark Office (“PTO”) and any other country’s or jurisdiction’s office duty of candor and good faith in dealing, including the duty to disclose to the PTO (or such other office) all information known to be material to the patentability of each of the Patents that is Owned IP. To the Knowledge of Seller, Seller has all necessary documentation underlying the specifications or claims in the Patents included in the Purchased Assets and all claims thereunder.
(D) All assignments from all inventors and any subsequent assignee to, as the case may be, Seller, or to a predecessor-in-interest to Seller, have been executed and either recorded with the PTO (or other applicable registration authority), or submitted to the PTO (or such authorities) for the Patents that are Owned IP, such that the records of the PTO (and the applicable authority) reflect that Seller is the current owner of record of each such Patent. Copies of all Patents, recorded assignments and all maintenance fee records for each such Patent (including each application) have been made available to Buyer.
(E) No product manufactured or sold by Seller, nor any Patent of Seller is alleged to infringe any patent or product of any Person, and to the Knowledge of Seller, no Patent of, or product manufactured or sold by, Seller is infringed.
(F) All products sold under the Patents included in the Purchased Assets have been marked with the proper patent notice.
(iii) Trademarks.
(A) All registered Trademarks included in the Purchased Assets, and pending applications for Trademarks included in the Purchased Assets with the PTO or any other country’s trademark office, of Seller is currently in compliance with all legal requirements (including the filing of affidavits of use and renewal applications as applicable), and are not subject to any maintenance fees or taxes or actions falling due within ninety (90) days after the Closing Date.
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(B) No Trademark of Seller included in the Purchased Assets has been or is now involved in any opposition, infringement, dilution, unfair competition or cancellation Proceeding and, to the Knowledge of Seller, no such action is threatened with respect to any of the Trademarks included in the Purchased Assets of Seller.
(C) No Trademark included in the Purchased Assets of Seller is alleged to infringe Trademark of any Person, and to the Knowledge of Seller, no Trademark of Seller included in the Purchased Assets is infringed.
(D) All products displaying a Trademark of Seller included in the Purchased Assets which has been registered with the PTO, bear the proper federal registration notice.
(iv) Copyrights. Seller does not own or purport to own any registered Copyrights or pending applications for Copyrights.
(v) Domain Names.
(A) All registered Domain Names of Seller included in the Purchased Assets are currently in compliance with all legal requirements and are not subject to any maintenance fees or taxes or action falling due within ninety (90) days after the Closing Date.
(B) No Domain Name of Seller included in the Purchased Assets has been or is now the subject of any dispute resolution or infringement Proceeding and, to the Knowledge of Seller, no such action is threatened with respect to any Domain Name of Seller included in the Purchased Assets.
(C) No Domain Name of Seller included in the Purchased Assets is alleged to infringe the Trademark or the Domain Name of any other Person, and to the Knowledge of Seller, no Domain Name of Seller included in the Purchased Assets is infringed.
(D) Seller has taken commercially reasonable steps to protect the proprietary nature of the Owned IP and to maintain in confidence all Trade Secrets and confidential Intellectual Property and information owned or used by Seller. To the Knowledge of Seller, no Trade Secret or other confidential Owned IP has been disclosed or authorized to be disclosed to any Person, including any employee, agent, contractor, or other entity, other than pursuant to a non-disclosure agreement or other conditional obligation that protects Seller’s proprietary interests in and to such Trade Secrets or confidential Intellectual Property or information. All such agreements, if any, have been made available to Buyer.
(h) Warrant. Without limiting the other representations and warranties contained in this Section 5.1: (i) Seller has all requisite corporate power and authority to issue and sell the Warrant and, upon exercise of the Warrant, to issue the securities issuable upon exercise of the Warrant (the “Warrant Shares”); and (ii) the issuance and sale of the Warrant, the reservation of the Warrant Shares issuable upon exercise of the Warrant and, upon exercise of the Warrant, the issuance of the Warrant Shares, have been duly exercised by all necessary corporate action on the part of Seller. Assuming the accuracy of the representations and warranties of Warrantholder contained in the Warrant, the offer, sale and issuance of the Warrant and the Warrant Shares will be exempt from the registration requirements of the Securities Act of 1933, as amended (the “Securities Act”) and any other applicable Laws. Schedule 5.1(h) sets forth any (x) shares of capital stock or other equity, ownership or voting interests of the Seller, (y) securities or instruments convertible into or exchangeable for shares of capital stock or other equity, ownership or voting interests of the Seller, and (z) equity-equivalents, earnings, profits or revenue-based or equity-based rights of the Seller, in each case of (x) through (y) above, issued and outstanding as of the date hereof. Except as set forth on Schedule 5.1(h), the Seller has not issued or agreed to issue any (x) shares of capital stock or other equity, ownership or voting interests, (y) securities or instruments convertible into or exchangeable for shares of capital stock or other equity, ownership or voting interests, or (z) equity-equivalents, earnings, profits or revenue-based or equity-based rights.
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(i) Equity Consideration. The Equity Consideration is being acquired for Seller’s own investment portfolio and account (and not on behalf of, and without the participation of, any other Person) with the intent of holding such Equity Consideration for investment and without the intent of participating, directly or indirectly, in a distribution of any portion of the Equity Consideration and not with a view to, or for resale in connection with, any distribution of any portion of the Equity Consideration, nor is Seller aware of the existence of any distribution of Buyer’s securities. Seller acknowledges that Equity Consideration was not offered to Seller by means of publicly disseminated advertisements of sales literature, nor is Seller aware of any offers made to other Persons by such means. Seller is an “accredited investor” (as defined in Rule 501 promulgated under the Securities Act) and is knowledgeable and experienced in finance, securities and investments and has had sufficient experience analyzing and investing in securities similar to the Equity Consideration so as to be capable of evaluating the merits and risks of an investment in the Equity Consideration. Seller is able to bear the economic risk of an investment in the Equity Consideration. Seller has had an opportunity to discuss Buyer’s business, management, financial affairs and the terms and conditions of the issuance of the Equity Consideration with Buyer. Seller understands that no portion of the Equity Consideration will have been registered pursuant to the Securities Act or any applicable state securities laws, that the Equity Consideration will be characterized as “restricted securities” under federal securities laws, and that under such laws and applicable regulations no portion of the Equity Consideration can be sold or otherwise disposed of without registration under the Securities Act or an exemption therefrom. In this connection, Seller represents that it is familiar with Rule 144 promulgated under the Securities Act, as currently in effect, and understands the resale limitations imposed thereby and by the Securities Act. Seller understands that no public market now exists for the Equity Consideration, and that Seller has made no assurances that a public market will ever exist for the Equity Consideration. A legend indicating that Equity Consideration has not been registered under applicable federal and state securities laws and referring to the restrictions on transferability and sale of Equity Consideration pursuant to this Agreement, the Preprogen Operating Agreement or otherwise may be placed on any certificate(s) or other document delivered to Seller or any substitute therefor and any transfer agent of Buyer may be instructed to require compliance therewith. Seller understands that the Equity Consideration acquired by it shall, upon issuance by Buyer, without any further action on the part of Buyer or such Person, be subject to the terms of Preprogen Operating Agreement, including restrictions on transfer of the Equity Consideration contained therein.
(j) Tax. Seller represents that none of the Purchased Assets are “section 197(f)(9) intangible” as defined in section 1.197-2(h) of the Treasury Regulations promulgated under the Code.
(k) No Brokers. Seller has not paid or become obligated to pay any fee or commission to any broker, finder or intermediary in connection with the transactions contemplated by this Agreement and the Other Transaction Documents for which Buyer shall have any liability.
(l) No Commercialization. Seller has not in any way commercialized or engaged in any business activities with third parties with respect to the Purchased Assets that relate to the Business other than the internal development of the Owned IP that relates primarily to the Business.
5.2 Buyer Representations and Warranties. Buyer hereby represents and warrants to Seller on the date hereof as follows:
(a) Organization. Buyer is a limited liability company duly created and organized, and validly existing under the laws of its jurisdiction of creation, and has full power and authority to own or use the properties and assets that it purports to own or use, and to sell, encumber, distribute, exchange or in any other way dispose of such assets. Buyer is legally qualified to transact business, and, to its knowledge, there are no claims or allegations by any person or entity contesting or questioning the authority of Buyer to conduct such business.
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(b) Authorization. Buyer has full limited liability company power and authority to execute, deliver and perform this Agreement and each Other Transaction Document to which it is a party and to consummate the transactions contemplated by this Agreement and the Other Transaction Documents. The execution, delivery and performance by Buyer of this Agreement and the Other Transaction Documents to which it is a party, and the consummation of the transactions contemplated by this Agreement and the Other Transaction Documents, have been duly authorized by all necessary limited liability company action of Buyer. This Agreement and each Other Transaction Document to which Buyer is a party have been or will be duly executed and delivered by Buyer, and constitute or will constitute a valid and legally binding obligation of Buyer, enforceable against Buyer in accordance with its terms, except that such enforceability may be limited by (i) applicable bankruptcy, insolvency, reorganization, moratorium, and similar laws affecting creditors’ rights generally, (ii) equitable principles which may limit the availability of certain equitable remedies (such as specific performance) in certain instances, and (iii) public policy considerations with respect to the enforceability of rights of indemnification.
(c) No Impairments. There are no orders, actions, suits, demands or claims in writing or legal, administrative, arbitration or other alternative dispute resolution proceedings, hearings, inquiries or investigations pending against Buyer or, to Buyer’s knowledge, threatened, which are reasonably likely to call into question the validity of this Agreement, any Other Transaction Document, any portion of the Equity Consideration, or any action taken or to be taken pursuant hereto or thereto.
(d) Equity Consideration. Without limiting the other representations and warranties contained in this Section 5.2: (i) Buyer has all requisite limited liability company power and authority to issue and sell the Equity Consideration; (ii) the issuance and sale of Equity Consideration has been duly authorized by all necessary limited liability company action on the part of Buyer; and (iii) assuming the accuracy of the representations and warranties of Seller contained in Section 5.1(i), the offer, sale and issuance of the Equity Consideration will be exempt from the registration requirements of the Securities Act and any other applicable Laws. Buyer has been formed for the purposes of entering into the transactions contemplated by this Agreement and, except as set forth on Schedule 5.2(d), Buyer has no material assets or liabilities.
(e) No Brokers. Buyer has not paid or become obligated to pay any fee or commission to any broker, finder or intermediary in connection with the transactions contemplated by this Agreement and the Other Transaction Documents for which Seller shall have liability.
5.3 No Other Representations.
(a) Except as set forth in Section 5.2 or in the Preprogen Operating Agreement, and other than in the case of fraud or willful misconduct and subject to the terms of this Agreement and the Preprogen Operating Agreement, the Equity Consideration is provided “as-is” without warranty of any kind, express or implied, and Seller acknowledges that neither Buyer nor any other Person has made any representation or warranty, expressed or implied, as to Buyer, the Equity Consideration, the accuracy or completeness of any information regarding Buyer, its business, properties, assets or operations furnished or made available to Seller and its representatives, or any other matter related to the transactions contemplated herein and that Seller is relying only on the representations and warranties set forth in Section 5.2 and in the Preprogen Operating Agreement.
(b) Except as set forth in Section 5.1 or in any Other Transaction Document, and other than in the case of fraud or willful misconduct and subject to the terms of this Agreement and the Other Transaction Documents, the Purchased Assets and the Warrant are provided “as-is” without warranty of any kind, express or implied, and Buyer acknowledges that neither Seller nor any other Person has made any representation or warranty, expressed or implied, as to Seller, the Warrant, the Warrant Shares, the accuracy or completeness of any information regarding Seller, its business, properties, assets or operations furnished or made available to Buyer and its representatives, or any other matter related to the transactions contemplated herein and Buyer is relying only on the representations and warranties set forth in Section 5.1 and in the Other Transaction Documents.
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SECTION 6. COVENANTS.
6.1 Further Assurances. From time to time after the Closing, without further consideration, Seller and Buyer will execute and deliver such documents and take such additional action as Buyer may reasonably request in order to more effectively consummate or evidence the sale and purchase of the Purchased Assets and to more effectively vest in Buyer good and marketable title to such ownership interest or to more effectively consummate or evidence the consummation of the transactions contemplated hereby and the Other Transaction Documents. Without limiting the foregoing, in the event that any Purchased Assets or any other properties, rights, claims, assets, records, Intellectual Property (including patents, know-how, trade secrets, and diagnostic applications and data) related to or necessary to pursue the Business are held by Affiliates of Seller (including QX Labs, Inc.), then from time to time after the Closing, without further consideration, Seller will execute and deliver such documents and take such additional actions as Buyer may reasonably request in order to transfer to Buyer (or evidence the transfer to Buyer of, or vest good and marketable title in Buyer to the ownership of) such Purchased Assets and other properties, rights, claims, assets, records and Intellectual Property.
6.2 Use of Trade Names and Trademarks.
(a) From and after the Closing, Seller shall not, and Seller shall cause its Affiliates, successors, assigns not to, use any of the trade names and trademarks that are included in the Purchased Assets.
(b) As soon as reasonably practicable (and, in any event, prior to the end of the first month after the Closing), Seller shall, and Seller shall cause its Affiliates successors, and assigns to, cease use of any materials, including signage, labels, packing materials, forms, business cards, letterhead, and paper or electronic advertising and marketing materials, in each case which include any of the trade names and trademarks that are included in the Purchased Assets (or any terms confusingly similar thereto).
6.3 Funding for Manufacturer. Promptly after the Closing, Buyer shall use commercially reasonable efforts to enter into a manufacturing agreement, with a manufacturer reasonably acceptable to Seller, for the development of the initial manufacturing protocols and production processes for the ultimate manufacture of the miniform pads necessary for the respective products to be marketed and sold by Buyer, on the one hand, and Seller, on the other hand, as applicable. It is anticipated that the aggregate fees, costs and expenses to be incurred to purchase the necessary equipment, materials and tools relating thereto will be approximately $1,000,000. Buyer and Seller shall each be responsible for fifty percent (50%) of such fees, costs and expenses incurred in connection with such manufacturing agreement until the aggregate amount of such fees, costs and expenses equals $800,000 (such fees, costs and expenses, the “Shared Fees, Costs and Expenses”), and Buyer shall be responsible for any such fees, costs and expenses in excess thereof. Seller shall reasonably cooperate and assist Buyer in pursuing, negotiating and performing such manufacturing agreement. The Parties shall cooperate in good faith to more formally document the actions and agreements contemplated by this Section 6.3. Following completion of the development of such initial manufacturing protocols and production processes, the Parties shall discuss in good faith the entry into separate agreements with such manufacturer between (i) such manufacturer and Buyer and (ii) such manufacture and Seller. In connection with the foregoing, at Closing, Seller shall deposit $400,000 in a separate escrow account to be established, and following the Closing, Buyer and Seller will provide appropriate joint instructions to the escrow agent from time to time to release funds from escrow to cover the Shared Fees, Costs and Expenses described above for which Seller is responsible. In the event funds remain in escrow as of the first anniversary of the Closing Date, provided Seller has not breached any of its obligations under this Section 6.3, then Buyer and Seller shall joinly instruct the escrow agent to release any remaining funds in escrow to Seller, it being understood and agreed, however, that such release of funds to Seller shall not relieve Seller of its obligations under this Section 6.3.
6.4 Restrictive Covenants.
(a) Certain Acknowledgements. Buyer and Seller acknowledge that in order to assure Buyer that it will retain the value, including the goodwill, of the Business as a “going concern,” Buyer has required that the covenants and agreements contained in this Section 6.4 be delivered in this Agreement, and Seller, as a condition to Buyer’s willingness to enter into the transactions contemplated by this Agreement, has agreed to do so. Each of Buyer and Seller acknowledges and agrees that it is fair, reasonable and necessary, for the protection of the value of the Business and the operations, prestige, reputation and goodwill of the Business and of the purchase thereof by Buyer hereunder, that Buyer and Seller make the agreements and covenants contained in this Agreement.
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(b) Non-Competition. For a period (the “Restricted Period”) commencing on the Closing Date and ending on the date that is five (5) years following the Closing Date, Seller shall not, directly or indirectly compete with the Business or as an individual proprietor, partner, shareholder, member, equityholder, officer, manager, director, employee, consultant, independent contractor, joint venturer, investor or lender, participate in any business or enterprise engaged anywhere in the United States in the provision of any services that are the same as, substantially similar to or competitive with the services that the Business was designing, developing, selling or providing, or actively planning to sell or provide, as of the Closing Date (each, a “Competing Business”); provided, however, nothing contained herein shall prohibit the Seller from developing, operating or managing the Excluded Business. The foregoing restrictions shall not be construed to prohibit the ownership by Seller of not more than one percent (1%) of any class of equity securities of any Person having a class of equity securities registered pursuant to the Securities Exchange Act of 1934, as amended, and the rules and regulations promulgated thereunder that are publicly owned and regularly traded on any national securities exchange or over-the-counter market, if such ownership represents a personal investment and Seller does not, directly or indirectly, in any way, manage or exercise control of any such Person, guarantee any of its financial obligations or otherwise take part in its business, other than exercising Seller’s rights as a holder of such equity securities.
(c) Non-Disparagement. Seller agrees that it shall not: (i) disparage, defame or slander the Business or Buyer, its Affiliates or any of their employees or take any action that is intended to detrimentally affect the reputation, image, relationships or public view of the Business or Buyer, its Affiliates or any of their employees; or (ii) attempt to do any of the foregoing, or assist, entice, induce or encourage any other Person to do or attempt to do any activity that, were it done by Seller, would violate any provision of this Section 6.4(c).
(d) Non-Hire and Non-Solicitation of Employees and Consultants. Seller agrees that it shall not, during the Restricted Period, directly or indirectly, solicit Dr. Shalom Hirschman, hire Dr. Shalom Hirschman or in any manner encourage Dr. Shalom Hirschman to terminate his relationship with the Business. The Parties agree and acknowledge that nothing contained herein shall prevent Dr. Shalom Hirschman from serving as a director of Seller, provided he does not serve as an executive or employee of Seller or its Affiliates.
(e) Other Documents. The provisions of this Section 6.4 are in addition to, and not in limitation of, Seller’s obligations and agreements set forth in the other agreements contemplated by this Agreement.
6.5 Registration Rights.
(a) Piggyback Registration Rights. If at any time following the date of this Agreement Seller proposes for any reason to register any shares of its common stock under the Securities Act of 1933, as amended (the “Securities Act”) (other than pursuant to a registration statement on Form S-4 or Form S-8 (or a similar or successor form)) with respect to an offering of common stock by Seller for its own account or for the account of any of its stockholders, it shall at each such time promptly give written notice to the Warrantholder of its intention to do so (but in no event less than thirty (30) days before the anticipated filing date) and include in such registration all Warrant Shares with respect to which Seller has received written requests for inclusion therein within fifteen (15) days after receipt of Seller’s notice. Such notice shall offer the Warrantholder the opportunity to register such number of Warrant Shares as the Warrantholder may request.
(b) Demand Registration Rights. If, at any time when it is not eligible to use a Form S-3 registration statement, the Company receives a request from the Warrantholder that the Company file a Form S-1 registration statement with respect to the Warrant Shares, then the Company shall as soon as practicable, and in any event within sixty (60) days after the date such request is given by the Warrantholder, file a Form S-1 registration statement under the Securities Act covering all Warrant Shares that the Warrantholder requested to be registered. If, at any time when it is eligible to use a Form S-3 registration statement, the Company receives a request from the Warrantholder that the Company file a Form S-3 registration statement with respect to the Warrant Shares, then the Company shall as soon as practicable, and in any event within forty-five (45) days after the date such request is given by the Warrantholder, file a Form S-3 registration statement under the Securities Act covering all Warrant Shares requested to be included in such registration by the Warrantholder.
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(c) Assignment. Notwithstanding anything to the contrary contained herein, the Warrantholder shall be permitted to transfer and assign its rights under this Section 6.5 to any Person to which all or a portion of the Warrant or the Warrant Shares are transferred, and any Person to which the rights under this Section 6.5 are transferred and assigned shall be permitted to subsequently transfer and assign its rights under this Section 6.5 to any Person to which all or a portion of the Warrant or the Warrant Shares are subsequently transferred.
SECTION 7. INDEMNIFICATION.
7.1 Indemnification by Seller. Seller will indemnify and hold harmless Buyer, its Affiliates (including the Warrantholder), and each of their respective directors, officers, managers, partners, members, stockholders, equity holders, employees, agents and representatives (collectively, the “Buyer Indemnified Parties”) for, and will pay to the Buyer Indemnified Parties the amount of, any loss, liability, claim, damage or expense (including costs of investigation and defense and reasonable attorneys’ fees) or diminution of value (collectively, “Losses”), whether or not involving a third-party claim, arising out of or relating to:
(a) any breach of any representation or warranty made by Seller in this Agreement or any Other Transaction Document;
(b) any breach by Seller of any covenant or obligation of Seller in this Agreement or any Other Transaction Document;
(c) any Excluded Liability;
(d) without limiting Section 5.1(f), Section 5.1(g) or any other provision of this Agreement, any Encumbrance claimed by Platinum Long Term Growth VII LLC or any of its Affiliates or any of their respective successors or assigns on any of the Purchased Assets; or
(e) without limiting Section 5.1(f), Section 5.1(g) or any other provision of this Agreement, that certain assignment dated as of February 8, 2006, by William H. Fleming in favor of “QuantRx Medical Corporation, a corporation organized under the laws of the State or Oregon” with respect to U.S. Patent No. 6,811,549 and the failure of such assignment to properly name the Seller as the assignee;
Notwithstanding the foregoing, no claim for indemnification under Section 7.1(a) may be made by Buyer on behalf of the Buyer Indemnified Parties, and no payment in respect of such a claim for indemnification shall be required from Seller for any such claim until the aggregate amount of Losses which the Buyer Indemnified Parties have incurred on a cumulative basis exceeds fifty thousand thousand United States dollars ($50,000) (the “Deductible”), after which the Buyer Indemnified Parties shall be indemnified for all such Losses in excess of the Deductible; provided that the Deductible shall not apply, and the Buyer Indemnified Parties shall be entitled to indemnification without regard to satisfaction of the Deductible, in the event of fraud or with respect to, claims for breach of any Fundamental Representation. For the avoidance of doubt, the Deductible shall apply only once in respect of all claims for indemnification under Section 7.1(a) (except, in each case, in the event of fraud or with respect to claims for breach of any Fundamental Representation) by the Buyer Indemnified Parties.
7.2 Indemnification by Buyer. Buyer will indemnify and hold harmless Seller, its Affiliates, and each of their respective directors, officers, managers, partners, members, stockholders, equity holders, employees, agents and representatives (collectively, the “Seller Indemnified Parties”) for, and will pay to the Seller Indemnified Parties the amount of, any Losses, whether or not involving a third-party claim, arising out of or relating to:
(a) any breach of any representation or warranty made by Buyer in this Agreement or any Other Transaction Document; or
(b) any breach by Buyer of any covenant or obligation of Buyer in this Agreement or any Other Transaction Document.
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7.3 Procedure for Indemnification.
(a) The party seeking indemnification (the “Indemnified Party”) shall give prompt notice (“Notice of Claim”) to the party against whom indemnification is sought (the “Indemnifying Party”) of the assertion of any claim, or the commencement of any suit, action or proceeding in which indemnification may be sought under this Section 7 (a “Proceeding”), providing in reasonable detail the facts giving rise to the claim, the amount sought, the basis for the claim and supporting documentation and stating the basis for the indemnification sought (in each case taking into account the information then available to such Indemnified Party).
(b) Promptly after receipt by the Indemnified Party of notice of the commencement of any Proceeding against it, such Indemnified Party will give written notice to the Indemnifying Party of the commencement of such claim, together with all available information regarding the same, but the failure to notify the Indemnifying Party will not relieve the Indemnifying Party of any liability that it may have to any Indemnified Party, except to the extent that the Indemnifying Party demonstrates that the defense of such action is prejudiced by the Indemnifying Party’s failure to give such notice.
(c) If any Proceeding is brought against an Indemnified Party and it gives notice to the Indemnifying Party of the commencement of such Proceeding, the Indemnifying Party will be entitled to participate in such Proceeding and, to the extent that it wishes (unless (A) the Indemnifying Party is also a party to such Proceeding and legal counsel for the Indemnified Party determines in good faith that a bona fide conflict of interest would result in the case of joint representation, or (B) the Indemnifying Party fails to provide reasonable assurance to the Indemnified Party of its financial capacity to defend such Proceeding and provide indemnification with respect to such Proceeding), to assume the defense of such Proceeding with counsel reasonably satisfactory to the Indemnified Party and, after notice from the Indemnifying Party to the Indemnified Party of its election to assume the defense of such Proceeding, the Indemnifying Party will not, as long as it diligently conducts such defense, be liable to the Indemnified Party under this Section 7 for any fees of other counsel or any other expenses with respect to the defense of such Proceeding, in each case subsequently incurred by the Indemnified Party in connection with the defense of such Proceeding, other than reasonable costs of investigation. If the Indemnifying Party assumes the defense of a Proceeding, (x) it will be conclusively established for purposes of this Agreement that the claims made in that Proceeding are within the scope of and subject to indemnification; (y) no compromise or settlement of such claims may be effected by the Indemnifying Party without the Indemnified Party’s consent, such consent not to be unreasonably withheld, conditioned or delayed; and (z) the Indemnified Party will have no liability with respect to any compromise or settlement of such claims effected without its consent, such consent not to be unreasonably withheld, conditioned or delayed. If notice is given to an Indemnifying Party of the commencement of any Proceeding and the Indemnifying Party does not, within ten (10) Business Days after the Indemnified Party’s notice is given, give notice to the Indemnified Party of its election to assume the defense of such Proceeding, the Indemnifying Party will be bound by any determination made in such Proceeding or any compromise or settlement effected by the Indemnified Party.
(d) Notwithstanding the foregoing, if an Indemnified Party determines in good faith that there is a reasonable probability that a Proceeding may adversely affect it other than as a result of monetary damages for which it would be entitled to indemnification under this Agreement, the Indemnified Party may, by notice to the Indemnifying Party, assume the exclusive right to defend, compromise, or settle such Proceeding, but the Indemnifying Party will not be bound by any determination of a Proceeding so defended or any compromise or settlement effected without its consent (which may not be unreasonably withheld, conditioned or delayed).
(e) A claim for indemnification for any matter not involving a third-party claim may be asserted by notice to the party from whom indemnification is sought.
(f) If the Indemnifying Party disputes all or any portion of the Notice of Claim, the Indemnifying Party must provide written notice (a “Disagreement Notice”) of its objection (detailing the objection) to the Indemnified Party within ten (10) Business Days after the receipt of the notice from the Indemnified Party. Failure by the Indemnifying Party to give such Disagreement Notice shall be deemed acknowledgment and agreement by the Indemnifying Party that the Indemnifying Party is liable for that portion of the claim as to which no objection is made. If a Disagreement Notice is provided by the Indemnifying Party to the Indemnified Party within the time required, for a ten (10) day period thereafter the Indemnified Party and the Indemnifying Party shall attempt in good faith to resolve any differences that they may have with respect to any matter specified in the Disagreement Notice. If, at the end of such ten (10) day period, the Indemnified Party and the Indemnifying Party have failed to reach written agreement with respect to all of such matters, then any party shall be entitled to pursue any remedy at law or in equity.
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7.4 Survival. All of the representations and warranties of each Party contained in this Agreement shall survive the Closing hereunder indefinitely. The covenants of each Party under this Agreement shall survive the Closing indefinitely unless a shorter period of performance is specified with respect to such covenant. If an indemnification claim is asserted by an Indemnified Party before the expiration of the survival or limitations period, such asserted claim shall survive until the final adjudication and resolution of such claim.
SECTION 8. GENERAL.
8.1 Expenses. Except as otherwise provided in this Agreement, each Party will bear its respective expenses and legal fees incurred with respect to this Agreement, and the transactions contemplated hereby.
8.2 Confidentiality; Public Announcement.
(a) Seller shall not, and Seller shall cause its Affiliates not to, use, disclose or furnish to any third party any information of or regarding Buyer or the Purchased Assets, except for information which: (i) is or becomes available in the public domain (other than as a result of a disclosure by Seller or its Affiliates in breach of this Agreement); (ii) is required to be disclosed by applicable Law (provided that Seller provide Buyer prior notice of such required disclosure and a reasonable opportunity to take steps to maintain the confidentiality thereof); or (iii) Buyer expressly authorizes, in writing, Seller or other party to disclose such information prior to such disclosure.
(b) Each Party shall not disclose or furnish to any third party (other than their directors, legal counsel and accountants who are bound by reasonable confidentiality obligations) the terms and conditions of this Agreement. Notwithstanding the foregoing, (i) each Party may disclose the terms and conditions of this Agreement to the extent such disclosure is reasonably necessary to comply with applicable law (including any securities law or regulation or the rules of a securities exchange) and with judicial process, it being understood and agreed that Seller shall provide Buyer a reasonable opportunity to review and comment on any public announcement regarding this Agreement or the transactions contemplated hereby, (ii) each Party may disclose the terms and conditions of this Agreement to the extent necessary in connection with the enforcement of this Agreement, and (iii) Buyer may disclose the terms and conditions of this Agreement to an actual or potential assignee or other purchaser, investment banker, investor or lender, and their representatives.
8.3 Governing Law; Consent to Jurisdiction; Waiver of Jury Trial. All disputes arising out of this Agreement or the transactions contemplated hereby shall be governed by and construed in accordance with the laws of the State of Delaware without regard to its rules of conflict of laws. The Parties hereby irrevocably and unconditionally consent to submit to the sole and exclusive jurisdiction and venue of the federal and state courts of the State of Delaware for any litigation between the Parties arising out of or relating to this Agreement; provided, that any judgment or order obtained from such court(s) may be enforced in any other applicable jurisdiction. TO THE EXTENT NOT PROHIBITED BY APPLICABLE LAW THAT CANNOT BE WAIVED, EACH PARTY HEREBY WAIVES, AND COVENANTS THAT IT WILL NOT ASSERT (WHETHER AS PLAINTIFF, DEFENDANT OR OTHERWISE), ANY RIGHT TO TRIAL BY JURY IN ANY FORUM IN RESPECT OF ANY DISPUTES OR LITIGATION ARISING OUT OF OR RELATING TO THIS AGREEMENT, WHETHER NOW EXISTING OR HEREAFTER ARISING AND WHETHER SOUNDING IN TORT OR CONTRACT OR OTHERWISE.
8.4 Assignment; Binding Effect; No Third-Party Rights. No Party may assign this Agreement in whole or in part without the prior written consent of the other Party; provided, however, that Buyer may assign this Agreement without the written consent of Seller to (a) its financing sources (solely as security for obligations arising in connection with such financing), provided that Buyer continues to be bound by its obligations hereunder, and (b) an Affiliate or Buyer or an entity succeeding to substantially all the assets and business of Buyer by merger, purchase or otherwise, provided that such assignee expressly agrees to be bound by Buyer’s obligations hereunder. Except as otherwise expressly provided herein, this Agreement and its provisions are for the sole benefit of the parties to this Agreement and their successors and permitted assigns and shall not give any other Person any legal or equitable right, remedy or claim; provided however, that, for the avoidance of doubt, the Warrantholder is an intended third party beneficiary of Section 5.1 (Seller Representations and Warranties), Section 6.5 (Registration Rights) and Section 7 (Indemnification) with the right and power to enforce the provisions thereof.
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8.5 Notices. Any notice, request, demand or other communication required or permitted hereunder shall be in writing and shall be deemed to have been duly given when received if personally delivered; when transmitted, if transmitted by facsimile, electronic or digital transmission method; the day after it is sent if sent for next day delivery to a domestic address by a recognized overnight delivery service. All notices to a Party will be sent to the addresses set forth below such Party’s signature hereto or to such other address or person or entity as such Party may designate by notice to each other Party hereunder.
8.6 Specific Performance. The Parties agree that irreparable damage would occur in the event that any of the provisions of this Agreement were not performed in accordance with their specific terms or were otherwise breached. Accordingly, each of the Parties shall be entitled to specific performance of the terms hereof, including an injunction or injunctions to prevent breaches of this Agreement and to enforce specifically the terms and provisions of this Agreement, this being in addition to any other remedy to which such party is entitled at law or in equity. Each of the parties hereby further waives (i) any defense in any action for specific performance that a remedy at law would be adequate and (ii) any requirement under any Law to post security as a prerequisite to obtaining equitable relief.
8.7 Miscellaneous. This Agreement may be executed in counterparts, each of which shall be deemed an original, but all of which together shall constitute one and the same instrument. The section headings contained in this Agreement are for reference purposes only and shall not affect in any way the meaning or interpretation of this Agreement. This Agreement, including the schedules and exhibits referred to herein and the other writings specifically identified herein or contemplated hereby, is complete, reflects the entire agreement of the Parties with respect to its subject matter, and supersedes all previous written or oral negotiations, commitments and writings. This Agreement may not be amended or modified, nor may compliance with any condition or covenant set forth herein be waived, except by a writing duly and validly executed by each Party hereto, or in the case of a waiver, the Party waiving compliance. Whenever possible, each provision of this Agreement shall be interpreted in such a manner as to be effective and valid under applicable law, but if any provision of this Agreement shall be deemed prohibited or invalid under such applicable law, such provision shall be ineffective to the extent of such prohibition or invalidity, and such prohibition or invalidity shall not invalidate the remainder of such provision or the other provisions of this Agreement. A facsimile or electronic (e.g., PDF) signature shall be considered original for all purposes hereunder.
[Remainder of Page Intentionally Left Blank]
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IN WITNESS WHEREOF, the Parties hereto have caused this Agreement to be executed as of the date set forth above by their duly authorized representatives.
BUYER
PREPROGEN LLC
By: /s/ Mayer Goldberger
Name: Mayer Goldberger
Title: Founder
Address for Notice
4 Lemberg Court
Suite 304
Monroe NY 10950
Attn: E. Goldberge
rEmail:eli@egoldco.com
SELLER
QUANTRX BIOMEDICAL CORPORATION
By: /s/ Shalom Z. Hirschman
Name: Dr. Shalom Z. Hirschman
Title: Chief Executive Officer
Address for Notice
QuantRx Biomedical Corporation
171 Sherwood Lane
Raynham, MA 02767
Attention: Michael Abrams
Tel No.: (212) 980-2235
Email Address: mabrams@burnhamhill.com
[SIGNATURE PAGE TO ASSET PURCHASE AGREEMENT]
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SCHEDULE A
PURCHASED ASSETS
See attached
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EXHIBIT 3.2(B)
PAYOFF LETTER
See attached.
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EXHIBIT 3.2(D)
PREPOGEN OPERATING AGREEMENT
See attached.
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EXHIBIT 3.2(F)
IP ASSIGNMENTS
See attached.
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EXHIBIT 3.2(G)
WARRANT
See attached.
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EXHIBIT 3.2(H)
LICENSE AGREEMENT
See attached.
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Exhibit 10.2
PATENT ASSIGNMENT AGREEMENT
This PATENT ASSIGNMENT AGREEMENT (“Agreement”) is made as of December 14, 2017, by and between QuantRx Biomedical Corporation, a Nevada corporation (“Assignor”), and Preprogen LLC, a Delaware limited liability company (“Assignee”).
WHEREAS, Assignor and Assignee are parties to that certain Asset Purchase Agreement, dated as of December 14, 2017 (as such agreement may have been, or may from time to time be, amended, supplemented or otherwise modified, the “Asset Purchase Agreement”). All capitalized terms used and not defined herein shall have the meanings ascribed to them in the Asset Purchase Agreement.
WHEREAS, Assignor is the owner of all right, title and interest in, to and under the patents and patent applications set forth on Exhibit A attached hereto, and the inventions and improvements disclosed in the aforesaid patents and patent applications including without limitation all confirmations, divisions, renewals, extensions, reissues, continuations, continuations-in-part, substitutes, amendments and modifications (including reexamination amendments), certificates and utility models (all of the aforesaid patents, patent applications, inventions and improvements being hereinafter collectively referred to as the “Patents”).
WHEREAS, pursuant to the Asset Purchase Agreement, Assignee desires to acquire all of Assignor’s right, title and interest in and to the Patents.
NOW THEREFORE, for good and valuable consideration, the receipt and legal sufficiency of which is hereby acknowledged, the parties agree as follows:
1. Assignor hereby assigns, conveys and transfers to Assignee, and Assignee hereby receives, all of Assignor’s right, title and interest in, to and under the Patents, including without limitation the right to petition, sue or otherwise seek and recover damages, profits and any other remedy for any past, present or future infringement of, or for improper, unlawful or unfair use or disclosure or other violation of, the Patents.
2. This Agreement has been executed and delivered by Assignor to Assignee for the purpose of recording this Agreement with the United States Patent and Trademark Office (the “PTO”) or other governing authority, and the parties hereby authorize the PTO or other such governing authority to record this Agreement.
3. This Agreement is in accordance with and is subject to all of the representations, warranties, covenants, exclusions and indemnities set forth in the Asset Purchase Agreement, all of which are hereby incorporated herein by reference.
4. At and from time to time following the Closing, Assignor shall take such actions as required by Section 6.1 of the Asset Purchase Agreement in regard to this Patent Assignment Agreement.
5. Assignor hereby appoints Assignee as its attorney-in-fact, with full authority in the place and stead of Assignor, and in the name of Assignor, solely to take any action and to create any instrument that may be necessary or desirable to register, effectuate, validate, record, maintain, perfect, enforce or defend this Agreement and Assignee’s rights in the Patents.
6. This Agreement may be executed by the parties hereto in separate counterparts, each of which when so executed and delivered shall be deemed to be an original, but all of which when taken together shall constitute one and the same agreement. Each counterpart may be delivered by facsimile transmission or electronic transmission in portable document format, which transmission shall be deemed to be delivery of an originally executed document.
7. This Agreement shall be governed, including as to validity, interpretation and effect, by, and construed in accordance with, the internal Laws of the State of Delaware applicable to agreements made and fully performed within the State of Delaware.
[Remainder of page left blank intentionally. Signature page follows.]
.
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IN WITNESS WHEREOF, Assignor and Assignee have caused this Agreement to be executed as of the date first above written.
ASSIGNOR:
QUANTRX BIOMEDICAL CORPORATION
By: /s/ Shalom Z. Hirschman
Name: Shalom Z. Hirschman
Title: Chief Executive Officer
ASSIGNEE:
PREPROGEN LLC
By: /s/ Mayer Goldberger
Name: Mayer Goldberger
Title: Founder
[Signature Page to Patent Assignment Agreement]
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EXHIBIT A
PATENTS
Title
Owner of Record
Region
Patent or Application Number
Issue Date
Administration of Therapeutic Or Diagnostic Agents Using Interlabial Pad
QuantRx BioMedical Corporation
US
6,811,549
11/2/2004
Folded Perineal Pad
CA
2,679,725
7/7/2015
Folded Perineal Pad
QuantRx BioMedical Corporation
US
8,398,606
3/19/2013
Method for Obtaining Fetal Cells and Fetal Cellular Components
QuantRx BioMedical Corporation
CA
2,876,692
N/A
Method for Obtaining Fetal Cells and Fetal Cellular Components
QuantRx BioMedical Corporation
EPC
13806393.8
N/A
Method for Obtaining Fetal Cells and Fetal Cellular Components
QuantRx BioMedical Corporation
US
14/410,508
N/A
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Exhibit 10.3
TRADEMARK ASSIGNMENT AGREEMENT
This TRADEMARK ASSIGNMENT AGREEMENT (this “Trademark Assignment Agreement”) is made as of December 14, 2017 by and between QuantRx Biomedical Corporation, a Nevada corporation (“Assignor”), and Preprogen LLC, a Delaware limited liability company (“Assignee”).
WHEREAS, Assignor and Assignee are parties to that certain Asset Purchase Agreement, dated as of December 14, 2017 (as such agreement may have been, or may from time to time be, amended, supplemented or otherwise modified, the “Asset Purchase Agreement”), by and between Assignee, on the one hand, and Assignor, on the other. All capitalized terms used and not defined herein shall have the meanings ascribed to them in the Asset Purchase Agreement.
WHEREAS, Assignor is the owner of all right, title and interest in and to the trademarks listed on Exhibit A attached hereto (the “Trademarks”), together with the goodwill of the Business connected with and symbolized by the Trademarks.
WHEREAS, pursuant to the Asset Purchase Agreement, Assignee desires to acquire all of Assignor’s right, title and interest in and to the Trademarks, together with the goodwill of the Business connected with and symbolized by the Trademarks.
NOW THEREFORE, for good and valuable consideration, the receipt and legal sufficiency of which is hereby acknowledged, the parties agree as follows:
1. Assignor hereby sells, assigns, transfers, conveys and delivers to Assignee, its successors and assigns, all of its right, title and interest in and to the Trademarks in the United States and all jurisdictions outside the United States, together with the goodwill of the Business connected with and symbolized by the Trademarks (including, without limitation, the right to renew any registrations included in the Trademarks, the right to apply for trademark registrations within or outside the United States based in whole or in part upon the Trademarks, the right to bring an action for any and all past infringements of the rights being assigned and the right to collect and retain any proceeds therefrom, and any priority right that may arise from the Trademarks), the same to be held and enjoyed by Assignee as fully and entirely as said interest could have been held and enjoyed by Assignor had this sale, assignment, transfer conveyance and deliverance not been made.
2. At and from time to time following the Closing, Assignor shall take such actions as required by Section 6.1 of the Asset Purchase Agreement in regard to this Trademark Assignment Agreement.
3. This Trademark Assignment Agreement may be executed by the parties hereto in separate counterparts, each of which when so executed and delivered shall be deemed to be an original, but all of which when taken together shall constitute one and the same agreement. Each counterpart may be delivered by facsimile transmission or electronic transmission in portable document format, which transmission shall be deemed to be delivery of an originally executed document.
4. This Trademark Assignment Agreement shall be governed, including as to validity, interpretation and effect, by, and construed in accordance with, the internal Laws of the State of Delaware applicable to agreements made and fully performed within the State of Delaware.
[Remainder of page left blank intentionally. Signature page follows.]
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IN WITNESS WHEREOF, Assignor and Assignee have caused this Agreement to be executed as of the date first above written.
ASSIGNOR:
QUANTRX BIOMEDICAL CORPORATION
By: /s/ Shalom Z. Hirschman
Name: Shalom Z. Hirschman
Title: Chief Executive Officer
ASSIGNEE:
PREPROGEN LLC
By: /s/ Mayer Goldberger
Name: Mayer Goldberger
Title: Founder
[Signature Page to Trademark Assignment Agreement]
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Exhibit A
Trademarks
Registered Marks
Mark
Goods / Services
Application Serial Number
Registration Number
Applicant
Registration Date
PADKIT
Class 10
75/654,164
2,380,818
QUANTRX BIOMEDICAL CORPORATION
8/29/2000
PADKIT
Class 10
75/260,875
2,251,770
QUANTRX BIOMEDICAL CORPORATION
6/8/1999
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Exhibit 10.4
INTELLECTUAL PROPERTY LICENSE AGREEMENT
This Intellectual Property License Agreement (“Agreement”) is entered into as of December 14, 2017 (the “Effective Date”), by and between QuantRX Biomedical Corporation, a Nevada Corporation (“Licensee”), and Preprogen LLC, a Delaware corporation (“Licensor”).
RECITALS:
WHEREAS, Licensor and Licensee are parties to that certain Asset Purchase Agreement dated December 14, 2017 (the “APA”), pursuant to which Licensor purchased certain assets of Licensee including the intellectual property identified on Exhibit A hereto (“Licensed IP”);
WHEREAS, Licensee desires to receive a license-back of the Licensed IP, to develop, manufacture, use and sell products covered by the Licensed IP to its customers within the Field (as defined herein).
NOW, THEREFORE, in consideration of the terms and provisions of this Agreement and the APA, and for other good and valuable consideration, the receipt of which is acknowledged by the execution and delivery hereof, Licensor and Licensee hereby agree as follows:
A. Definitions.
1. “Field” means the feminine hygiene markets and hemorrhoid treatment markets.
2. “Licensed IP” shall have the meaning set forth in the Recitals.
3. “Products” means over-the-counter miniform products for sale in the Field.
B. License Grant. Subject to the terms and conditions set forth in this Agreement, Licensor hereby grants to Licensee, an exclusive, worldwide right and license to the Licensed IP to develop, manufacture, market, make, have made, use, sell, offer for sale, export and import Products for the Field. Except for the license granted herein, no other rights or licenses to the Licensed IP are granted hereunder, and all such rights and licenses are expressly reserved to the Licensor.
C. Improvements. Licensee acknowledges and agrees that any modification, change, development, enhancement, derivative or improvement (collectively, “Improvements”) made by, or on behalf of, Licensee to the Licensed IP shall be owned by Licensee only to the extent such Improvements are useful solely for Products within the Field. To the extent that Licensee obtains any rights to Improvements to the Licensed IP that may have (i) application outside of the Field or (ii) application both within and outside the Field (collectively clauses (i) and (ii) above, “Multi-application Improvements”), Licensee shall so notify Licensor in writing, and Licensee hereby assigns all right, title and interest in and to such Multi-application Improvements to Licensor. All such Multi-application Improvements that are useful to Products in the Field also are and shall be deemed Licensed IP hereunder, and are licensed to Licensee subject to the terms of this Agreement. Licensee agrees to provide prompt notification to Licensor of any Multi-application Improvements.
D. Enforcement. Licensee shall cooperate fully and promptly with Licensor in the protection of Licensor’s rights in the Licensed IP, in such manner and to such extent as Licensor may reasonably request, and at Licensor’s expense, subject to any rights Licensor or its affiliates have under the APA.
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1. Each party shall promptly notify the other party in writing of any actual or potential infringement, misappropriation or any other unauthorized use of or violation of the Licensed IP of which it becomes aware (each an “Infringement”). Licensor may take such action as it, in its sole discretion, deems necessary or advisable to stop any Infringement.
2. In the event the Infringement solely pertains to Licensee’s Products covered by the Licensed IP, Licensee may request in writing that Licensor institute an action to stop an Infringement affecting such Products. If Licensor receives such a written request and does not institute such action within ninety (90) days, Licensee may institute such action as it deems necessary or advisable to stop such Infringement, in which Licensor shall be entitled to join; provided that Licensee shall not compromise or settle any such claim or action regarding the Licensed IP in any manner without the written consent of Licensor.
3. The party not taking the lead in any action shall cooperate fully with the other party at the other party’s reasonable request and expense, including Licensor joining a suit instituted by Licensee in accordance with this Section to the extent necessary for Licensee to have standing. Any monetary recovery or sums obtained in settlement of any action to stop an Infringement shall be allocated between Licensor and Licensee as shall be fair and equitable, taking into account their actual out-of-pocket costs and expenses, including reasonable attorneys’ fees, and the damages sustained by each of them; provided that in the event of a dispute regarding such an allocation, Licensor shall be entitled to determine the actual allocation.
E. Warranties of the Parties. Licensor warrants that it has the right and power to enter into this Agreement. Licensee warrants that it has the right and power to enter into this Agreement, and that there are no outstanding assignments, grants, licenses, encumbrances, obligations or agreements, either written or oral or implied, that prevent it from doing so.
F. WARRANTY DISCLAIMER. EXCEPT AS EXPRESSLY SET FORTH IN THIS AGREEMENT, NEITHER PARTY MAKES ANY OTHER REPRESENTATION, GUARANTEE OR WARRANTY OF ANY KIND, EXPRESS, IMPLIED OR OTHERWISE, UNDER THIS AGREEMENT INCLUDING REPRESENTATIONS, GUARANTEES OR WARRANTIES AS TO THE RESULTS TO BE EXPECTED FROM USE OF ANY OF THE LICENSED IP, OR FROM MANUFACTURE OR SALE OF ANY PRODUCT HEREUNDER. EXCEPT AS EXPRESSLY SET FORTH IN THIS AGREEMENT, LICENSOR SHALL HAVE NO RESPONSIBILITY OR LIABILITY UNDER THIS AGREEMENT FOR THE LICENSED IP; FOR THE ABILITY OR INABILITY OF LICENSEE TO USE THE LICENSED IP; FOR THE CLAIMS OF THIRD PARTIES RELATING TO ANY PRODUCTS MANUFACTURED OR SOLD BY LICENSEE; OR FOR ANY FAILURE IN PRODUCTION, DESIGN OR OPERATION OF ANY PRODUCT MANUFACTURED OR SOLD BY LICENSEE. THE LIMITATIONS OF LIABILITY CONTAINED IN THIS AGREEMENT ARE A FUNDAMENTAL PART OF THE BASIS OF EACH PARTY’S BARGAIN HEREUNDER, AND NEITHER PARTY WOULD ENTER INTO THIS AGREEMENT ABSENT SUCH LIMITATIONS. NOTWITHSTANDING ANYTHING IN THIS AGREEMENT TO THE CONTRARY, LICENSOR SHALL HAVE NO LIABILITY UNDER THIS AGREEMENT ARISING OUT OF OR RELATING TO ANY FACTS OR CIRCUMSTANCES WHICH CONSTITUTE A BREACH OF ANY REPRESENTATION OR WARRANTY OF LICENSEE UNDER THE APA, OR FOR WHICH LICENSEE WOULD OTHERWISE HAVE LIABILITY TO LICENSOR OR ANY AFFILIATE UNDER THE APA (WITHOUT GIVING EFFECT TO ANY SURVIVAL PERIODS OR LIMITATIONS ON LIABILITY SET FORTH THEREIN), AND NOTHING IN THIS AGREEMENT SHALL DEROGATE FROM LICENSOR’S RIGHTS UNDER THE APA.
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G. Term / Termination.
1. Term. This Agreement shall commence on the Effective Date, and continue until terminated as set forth in Section G(2).
2. Termination by Licensor. This Agreement may be terminated by Licensor by written notice of termination if Licensee breaches this Agreement, and such a breach is not cured to Licensor’s satisfaction within thirty (30) days following receipt by Licensee of notice thereof from Licensor.
3. Upon the termination of this Agreement, all rights of Licensee granted hereunder shall terminate, and Licensee shall return or destroy (and certify such destruction in writing to Licensor if requested), at Licensor’s election, all embodiments of the Licensed IP. Notwithstanding the foregoing, Licensee shall have the right to continue to dispose of its inventory of Products under the Licensed IP existing as of any termination for a period of up to six (6) months from the date of termination of this Agreement.
4. All rights and remedies of the parties in respect of any breach of this Agreement occurring prior to the effective date of its termination shall survive the termination of this Agreement. In addition, the following provisions of this Agreement shall explicitly survive its termination: Section F (“WARRANTY DISCLAIMER”); Section G (“Term / Termination”); and Section H (“Miscellaneous”).
H. Miscellaneous.
1. Notices. All notices, demands and other communications required to be given to a party hereunder shall be in writing and shall be deemed to have been duly given if and when personally delivered; one business day after being sent by a nationally recognized overnight courier; when transmitted by facsimile and actually received; or five (5) days after being mailed by registered or certified mail (postage prepaid, return receipt requested) to such party at the relevant street address or facsimile number set forth below (or at such other street address or facsimile number as such party may designate from time to time by written notice in accordance with this provision):
If to Licensee:
Preprogen LLC
4 Lemberg Court
Suite 304
Monroe NY 10950
Attn: E. Goldberger
Email:eli@egoldco.com
With a copy to (which shall not constitute notice):
Kramer Levin Naftalis & Frankel LLP
1177 Avenue of the Americas
New York, New York 10036
Attn: Ernest Wechsler, Esq.
Facsimile: (212) 715-8000
Confirm: (212) 715-9100
If to Licensor:
QuantRx Biomedical Corporation
171 Sherwood Lane
Raynham, MA 02767
Attention: Michael Abrams
Tel No.: (212) 980-2235
Email Address: mabrams@burnhamhill.com
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2. Further Assurances. In addition to the actions specifically provided for elsewhere in this Agreement, Licensor and Licensee agree to execute or cause to be executed and to record or cause to be recorded such other agreements, instruments and other documents, and to take such other action, as reasonably necessary or desirable to fully effectuate the intents and purposes of this Agreement.
3. Relationship of the Parties. This Agreement shall not be construed to place the parties in the relationship of legal representatives, partners, joint venturers or agents of or with each other. No party shall have any power to obligate or bind the other party in any manner whatsoever, except as specifically provided herein.
4. Third Party Beneficiaries. Except as set forth herein with respect to affiliates of Licensor, the provisions of this Agreement are solely for the benefit of the parties hereto and their respective successors and permitted assigns, and are not intended to confer upon any person, except the parties hereto and their respective successors and permitted assigns, any rights or remedies hereunder.
5. Assignability. This Agreement may not be assigned by Licensee without the prior written consent of the Licensor. Subject to Section H.4, this Agreement shall be binding upon and inure to the benefit of the parties and their respective successors and permitted assigns.
6. Press Releases; Public Announcements. Neither party shall issue any release or make any other public announcement concerning this Agreement or the transactions contemplated hereby without the prior written approval of the other party, which approval shall not be unreasonably withheld or delayed; provided, however, that either party shall be permitted to make any release or public announcement that in the opinion of its counsel it is required to make by law or the rules of any national securities exchange of which its securities are listed; provided further that it has made efforts that are reasonable in the circumstances to obtain the prior approval of the other party.
7. Waiver of Defaults. Waiver by any party hereto of any default by the other party hereto of any provision of this Agreement shall not be construed to be a waiver by the waiving party of any subsequent or other default, nor shall it in any way affect the validity of this Agreement or prejudice the rights of the other party thereafter to enforce each and every such provision. No failure or delay by any party hereto in exercising any right, power or privilege hereunder shall operate as a waiver thereof nor shall any single or partial exercise thereof preclude any other or further exercise thereof or the exercise of any other right, power or privilege.
8. Severability. If any provision of this Agreement is determined by a court of competent jurisdiction to be invalid, void or unenforceable, the remaining provisions hereof shall remain in full force and effect and shall in no way be affected, impaired or invalidated thereby, so long as the economic or legal substance of the transactions contemplated hereby, as the case may be, is not affected in any manner adverse to any party hereto or thereto. Upon such determination, the parties hereto shall negotiate in good faith in an effort to agree upon a suitable and equitable provision to effect the original intent of the parties hereto.
9. LIMITATION OF LIABILITY. IN NO EVENT SHALL LICENSOR OR LICENSEE BE LIABLE TO THE OTHER FOR ANY SPECIAL, CONSEQUENTIAL, INDIRECT, COLLATERAL, INCIDENTAL OR PUNITIVE DAMAGES OR LOST PROFITS OR FAILURE TO REALIZE EXPECTED SAVINGS OR OTHER COMMERCIAL OR ECONOMIC LOSS OF ANY KIND, ARISING OUT OF THIS AGREEMENT; PROVIDED, HOWEVER, THAT THE FOREGOING LIMITATIONS SHALL NOT LIMIT EITHER PARTY’S INDEMNIFICATION OBLIGATIONS WITH RESPECT TO THIRD PARTY CLAIMS.
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10. Attorneys’ Fees. In any action hereunder to enforce the provisions of this Agreement, the prevailing party shall be entitled to recover its reasonable attorneys’ fees in addition to any other recovery hereunder.
11. Governing Law. All disputes arising out of this Agreement or the transactions contemplated hereby shall be governed by and construed in accordance with the laws of the State of Delaware without regard to its rules of conflict of laws.
12. Consent to Jurisdiction. The Parties hereby irrevocably and unconditionally consent to submit to the sole and exclusive jurisdiction and venue of the federal and state courts of the State of Delaware for any litigation between the Parties arising out of or relating to this Agreement; provided, that any judgment or order obtained from such court(s) may be enforced in any other applicable jurisdiction. Each of the parties irrevocably waives any objection to venue in the federal and state courts located in the State of Delaware of any action, suit or proceeding arising out of this Agreement or the transactions contemplated hereby.
13. Specific Performance. The Parties agree that irreparable damage would occur in the event that any of the provisions of this Agreement were not performed in accordance with their specific terms or were otherwise breached. Accordingly, each of the Parties shall be entitled to specific performance of the terms hereof, including an injunction or injunctions to prevent breaches of this Agreement and to enforce specifically the terms and provisions of this Agreement, this being in addition to any other remedy to which such party is entitled at law or in equity. Each of the parties hereby further waives (i) any defense in any action for specific performance that a remedy at law would be adequate and (ii) any requirement under any Law to post security as a prerequisite to obtaining equitable relief.
14. Entire Agreement. This Agreement and the APA (together with the Warrant (as defined in the APA), the IP Assignments (as defined in the APA), the Preprogen Operating Agreement (as defined in the APA) and any other agreements and documents delivered under the APA) constitute the entire agreement between the parties with respect to the subject matter hereof and supersede all previous agreements, negotiations, discussions, understandings, writings, commitments and conversations between the parties with respect to such subject matter.
15. Waiver of Jury Trial. TO THE EXTENT NOT PROHIBITED BY APPLICABLE LAW THAT CANNOT BE WAIVED, EACH PARTY HEREBY WAIVES, AND COVENANTS THAT IT WILL NOT ASSERT (WHETHER AS PLAINTIFF, DEFENDANT OR OTHERWISE), ANY RIGHT TO TRIAL BY JURY IN ANY FORUM IN RESPECT OF ANY DISPUTES OR LITIGATION ARISING OUT OF OR RELATING TO THIS AGREEMENT, WHETHER NOW EXISTING OR HEREAFTER ARISING AND WHETHER SOUNDING IN TORT OR CONTRACT OR OTHERWISE.
16. Amendments. No provisions of this Agreement shall be deemed amended, modified or supplemented by any party hereto, unless such amendment, supplement or modification is in writing and signed by the authorized representative of the party against whom it is sought to enforce such amendment, supplement or modification.
17. Counterparts. This Agreement may be executed in any number of counterparts, including by facsimile or electronic signature, and each such counterpart shall be deemed an original instrument, and all of such counterparts together shall constitute but one agreement. A facsimile or electronic signature is deemed an original signature for all purposes under this Agreement.
[SIGNATURE PAGES FOLLOW]
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IN WITNESS WHEREOF, the parties have caused their duly authorized representatives to execute this Agreement as of the Effective Date.
QUANTRX BIOMEDICAL CORPORATION
QUANTRX BIOMEDICAL CORPORATION
By: /s/ Shalom Z. Hirschman
Name: Shalom Z. Hirschman
Title: Chief Executive Officer
PREPROGEN LLC
By: /s/ Mayer Goldberger
Name: Mayer Goldberger
Title: Founder
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EXHIBIT A
LICENSED IP
INTERLABIAL PAD
KS REF. NO.
Country
Title
Status
Pat. No.
Issue date
App. No.
Expiration Date
Assignee of Record
Action/Comments
6122-54472-01
US
Administration of Therapeutic Or Diagnostic Agents Using Interlabial Pad
Issued
6,811,549
11/2/2004
09/788,264
10/15/2021
QuantRx BioMedical Corporation
None – Maintenance fees fully paid
6122-76455-03
CA
Folded Perineal Pad
Issued
2,679,725
7/7/2015
2,679,725
2/28/2028
Foreign patent, N/A
Annual Maintenance fees due Feb. 28
(paid for 2017)
6122-76455-04
US
Folded Perineal Pad
Issued
8,398,606
3/19/2013
12/529,053
3/11/2030
QuantRx BioMedical Corporation
2nd Maintenance fees due 9/19/20
FETAL STEM CELL ISOLATION
KS REF. NO.
Country
Title
Status
Pat. No.
Issue date
App. No.
Expiration Date
Assignee of Record
Action/Comments
6122-88255-03
CA
Method for Obtaining Fetal Cells and Fetal Cellular Components
Pending
N/A
N/A
2,876,692
QuantRx BioMedical Corporation
Waiting for Canadian Patent Office Action.
Annual Maintenance fees due June 24 (paid for 2017).
6122-88255-04
EPC
Method for Obtaining Fetal Cells and Fetal Cellular Components
Pending
N/A
N/A
13806393.8
QuantRx BioMedical Corporation
Response to EPO Office action filed Dec 2016, awaiting next action from EPO.
Annual Maintenance fees due June 24 (paid for 2017).
6122-88255-05
US
Method for Obtaining Fetal Cells and Fetal Cellular Components
Pending
N/A
N/A
14/410,508
QuantRx BioMedical Corporation
Office action response filed 2/6/17, awaiting next action from US PTO
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TRADEMARKS
KS REF. NO.
Country
Mark
Class
Registration No.
Registration date
App. No.
Owner
Action needed
6122-52871-01
U.S.
PADKIT
10
2,380,818
8/29/2000
75/654,164
QUANTRX BIOMEDICAL CORPORATION
Next renewal - 8/29/2020
6122-52870-01
U.S.
PADKIT
10
2,251,770
6/8/1999
75/260,875
QUANTRX BIOMEDICAL CORPORATION
Next renewal - 6/8/2019
-8-
Exhibit 10.5
ESCROW AGREEMENT
(Basic Three Party Escrow)
THIS ESCROW AGREEMENT is entered into as of December 14, 2017, by and among Preprogen LLC, a Delaware limited liability company (“Party A”), QuantRx Biomedical Corporation, a Nevada corporation (“Party B”, and together with Party A, sometimes referred to individually as “Party” and collectively as the “Parties”), and JPMorgan Chase Bank, N.A. (the “Escrow Agent”).
WHEREAS, the Parties have agreed to deposit in escrow certain funds and wish such deposit to be subject to the terms and conditions set forth herein.
1. Appointment. The Parties hereby appoint Escrow Agent as their escrow agent for the purposes set forth herein, and Escrow Agent hereby accepts such appointment under the terms and conditions set forth herein.
2. Fund; Investment. (a) Party A agrees to deposit with Escrow Agent the sum of $ 400,000 (“Escrow Deposit”). Escrow Agent shall hold the Escrow Deposit in one or more demand deposit accounts and shall invest and reinvest the Escrow Deposit and the proceeds thereof (“Fund”) in an interest bearing demand deposit account at JPMorgan Chase Bank, N.A., or a successor investment offered by Escrow Agent. Interest bearing demand deposit accounts have rates of interest or compensation that may vary from time to time as determined by the Escrow Agent.
Instructions to make any other investment (“Alternative Investment”), and any instruction to change investments must be in a joint writing and executed by an Authorized Representative (as defined in Section 3 below), of each of the Parties and shall specify the type and identity of the investments to be purchased and/or sold.
(b) All interest or other income earned under this Agreement shall be allocated to Party B and reported, by Escrow Agent to the IRS, or any other taxing authority, on IRS Form 1099 or 1042S (or other appropriate form) as income earned from the Escrow Deposit by Party B whether or not said income has been distributed during such year. The Parties hereby represent to Escrow Agent that no other tax reporting of any kind is required given the underlying transaction giving rise to this Agreement.
3. Disposition and Termination. (a) The Parties may at any time jointly deliver to the Escrow Agent instructions in substantially the form of Exhibit A-1 attached hereto executed by an Authorized Representative of each Party instructing the Escrow Agent to distribute all or a portion of the Fund. Within three (3) Business Days after the date on which the Escrow Agent receives (i) joint instructions in substantially the form of Exhibit A-1 attached hereto executed by an Authorized Representative of each Party or (ii) a Final Order directing payment of all or a portion of the Fund, the Escrow Agent shall disburse the portion of the Fund set forth in such joint written instructions or Final Order, as applicable, to the persons or accounts designated in such joint written instructions or Final Order. For purposes of this Agreement, a “Final Order” means a final and non-appealable order, judgment or decree of a court of competent jurisdiction accompanied by a written certification from counsel for Party A or Party B, as applicable, attesting that such order, judgment or decree is final and not subject to further proceedings or appeal along with a written instruction from an Authorized Representative of Party A or Party B, as applicable, given to effectuate such order, judgment or decree and the Escrow Agent shall be entitled conclusively to rely upon any such certification and instruction and shall have no responsibility to review the order, judgment or decree to which such certification and instruction refers or to make any determination as to whether such order, judgment or decree is final.
(b) Notwithstanding anything to the contrary set forth in Section 8, any instructions setting forth, claiming, objecting to, or in any way related to the transfer or distribution of the Fund, must be in writing and executed by the appropriate Party or Parties as evidenced by the signatures of the person or persons signing this Agreement or one of their designated persons as set forth on the Designation of Authorized Representatives attached hereto as Schedules 1-A and 1-B (each an “Authorized Representative”). Each Designation of Authorized Representatives shall be signed by the Secretary, any Assistant Secretary or other duly authorized officer of the named Party. No such instruction shall be deemed delivered and effective unless Escrow Agent actually shall have received it on a Business Day by facsimile or as a Portable Document Format (“PDF”) attached to an email at the fax number or email address set forth in Section 8 and in the case of a facsimile, as evidenced by a confirmed transmittal to the Party’s or Parties’ transmitting fax number and Escrow Agent has been able to satisfy any applicable security procedures as may be required hereunder. Escrow Agent shall not be liable to any Party or other person for refraining from acting upon any instruction for or related to the transfer or distribution of the Fund if delivered to any other fax number or email address, including but not limited to a valid email address of any employee of Escrow Agent.
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(c) The persons designated as Authorized Representatives and telephone numbers for same may be changed only in a writing executed by an Authorized Representative or other duly authorized officer of the applicable Party setting forth such changes and actually received by Escrow Agent via facsimile or as a PDF attached to an email. Escrow Agent will confirm any such change in Authorized Representatives by a telephone callback or email confirmation to an Authorized Representative and Escrow Agent may rely and act upon the confirmation of anyone purporting to be that Authorized Representative.
(d) Escrow Agent and other financial institutions, including the beneficiary’s bank, may rely upon the identifying number of the beneficiary, the beneficiary’s bank or any intermediary bank included in a funds transfer instructions, even if it identifies a person different from the beneficiary, the beneficiary’s bank or intermediary bank identified by name.
(e) As used in this Section 3, “Business Day” shall mean any day other than a Saturday, Sunday or any other day on which Escrow Agent located at the notice address set forth below is authorized or required by law or executive order to remain closed. The Parties acknowledge that the security procedures set forth in this Section 3 are commercially reasonable. Upon delivery of the Fund in full by Escrow Agent pursuant to this Section 3, this Agreement shall terminate and the related account(s) shall be closed, subject to the provisions of Sections 6 and 7.
(f) Notwithstanding anything to the contrary contained in this Agreement, in the event that an electronic signature is affixed to an instruction issued hereunder to disburse or transfer funds, such instruction shall be confirmed by a verifying callback (or email) to an Authorized Representative.
4. Escrow Agent. Escrow Agent shall have only those duties as are specifically and expressly provided herein, and no other duties, including but not limited to any fiduciary duty, shall be implied. Escrow Agent has no knowledge of, nor any obligation to comply with, the terms and conditions of any other agreement between the Parties, nor shall Escrow Agent be required to determine if any Party has complied with any other agreement. Escrow Agent may conclusively rely upon any written notice, document, instruction or request delivered by the Parties believed by it to be genuine and to have been signed by an Authorized Representative(s), as applicable, without inquiry and without requiring substantiating evidence of any kind and Escrow Agent shall be under no duty to inquire into or investigate the validity, accuracy or content of any such document, notice, instruction or request. Escrow Agent shall not be liable for any action taken, suffered or omitted to be taken by it in good faith except to the extent that Escrow Agent's gross negligence, willful misconduct or fraud was the cause of any direct loss to either Party. Escrow Agent may execute any of its powers and perform any of its duties hereunder directly or through affiliates or agents. In the event Escrow Agent shall be uncertain, or believes there is some ambiguity, as to its duties or rights hereunder, or receives instructions, claims or demands from any Party hereto which in Escrow Agent’s judgment conflict with the provisions of this Agreement, or if Escrow Agent receives conflicting instructions from the Parties, Escrow Agent shall be entitled either to: (a) refrain from taking any action until it shall be given (i) a joint written direction executed by Authorized Representatives of the Parties which eliminates such conflict or (ii) a court order issued by a court of competent jurisdiction (it being understood that Escrow Agent shall be entitled conclusively to rely and act upon any such court order and shall have no obligation to determine whether any such court order is final); or (b) file an action in interpleader. Escrow Agent shall have no duty to solicit any payments which may be due it or the Fund, including, without limitation, the Escrow Deposit nor shall the Escrow Agent have any duty or obligation to confirm or verify the accuracy or correctness of any amounts deposited with it hereunder. The Parties grant to Escrow Agent a lien and security interest in the Escrow Fund in order to secure any indemnification obligations of the Parties or obligation for fees or expenses owed to the Escrow Agent hereunder. Anything in this Agreement to the contrary notwithstanding, in no event shall Escrow Agent be liable for special, incidental, punitive, indirect or consequential loss or damage of any kind whatsoever (including but not limited to lost profits), even if Escrow Agent has been advised of the likelihood of such loss or damage and regardless of the form of action.
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5. Succession. Escrow Agent may resign and be discharged from its duties or obligations hereunder by giving not less than thirty (30) days advance notice in writing of such resignation to the Parties, or may be removed, with or without cause, by the Parties at any time after giving not less than thirty (30) days prior joint written notice to the Escrow Agent. Escrow Agent’s sole responsibility after such applicable thirty (30) day notice period expires shall be to hold the Fund (without any obligation to reinvest the same) and to deliver the same to a designated substitute escrow agent, if any, appointed by the Parties, or such other person designated by the Parties, or in accordance with the directions of a final court order, at which time Escrow Agent’s obligations hereunder shall cease and terminate. If prior to the effective resignation or removal date, the Parties have failed to appoint a successor escrow agent, or to instruct the Escrow Agent to deliver the Fund to another person as provided above, or if such delivery is contrary to applicable law, at any time on or after the effective resignation date, Escrow Agent either (a) may interplead the Fund with a court located in the State of New York and the costs, expenses and reasonable attorney’s fees which are incurred in connection with such proceeding may be charged against and withdrawn from the Fund; or (b) appoint a successor escrow agent of its own choice. Any appointment of a successor escrow agent shall be binding upon the Parties and no appointed successor escrow agent shall be deemed to be an agent of Escrow Agent. Escrow Agent shall deliver the Fund to any appointed successor escrow agent, at which time Escrow Agent’s obligations under this Agreement shall cease and terminate. Any entity into which Escrow Agent may be merged or converted or with which it may be consolidated, or any entity to which all or substantially all of the escrow business may be transferred, shall be the Escrow Agent under this Agreement without further act.
6. Compensation; Acknowledgment. (a) The Parties agree jointly and severally to pay Escrow Agent upon execution of this Agreement and from time to time thereafter reasonable compensation for the services to be rendered hereunder, which unless otherwise agreed in writing, shall be as described in Schedule 2; provided, however, solely as between the Parties, Party A agrees that it shall be responsible to pay the entire $2,500 Annual Administration Fee set forth on Schedule 2.
(b) Each of the Parties further agrees to the disclosures and agreements set forth in Schedule 2.
7. Indemnification and Reimbursement. The Parties agree jointly and severally to indemnify and hold harmless Escrow Agent and its agents, employees, officers and directors (the “Indemnitees”) from and against any and all losses, damages, claims, liabilities, costs or expenses (including attorneys’ fees) (collectively “Losses”), resulting directly or indirectly from (a) Escrow Agent’s performance of this Agreement, except to the extent that such Losses are determined by a court of competent jurisdiction to have been caused by the gross negligence, bad faith, willful misconduct or fraud of such Indemnitee; and (b) Escrow Agent’s following, accepting or acting upon any instructions or directions whether joint or several from the Parties received in accordance with this Agreement. The Parties hereby grant Escrow Agent a right of set-off against the Fund for the payment of any claim for indemnification, fees, expenses and amounts owing to Escrow Agent or an Indemnitee. The obligations set forth in this Section 7 shall survive the resignation, replacement or removal of Escrow Agent or the termination of this Agreement.
8. Notices. Except as otherwise expressly required in Section 3, all communications hereunder shall be in writing or set forth in a PDF attached to an email, , and shall be delivered by facsimile, email or overnight courier only to the appropriate fax number, email address, or notice address set forth for each party as follows:
If to Party A: Preprogen LLC
4 Lemberg Court, Suite 304
Monroe NY 10950
Attention: E. Goldberger
Tel No.: (845) 538-3889
Email Address: eli@egoldco.com
If to Party B: QuantRx Biomedical Corporation
171 Sherwood Lane
Raynham, MA 02767
Attention: Michael Abrams
Tel No.: (212) 980-2235
Email Address: mabrams@burnhamhill.com
If to Escrow Agent: JPMorgan Chase Bank, N.A.
Escrow Services
4 New York Plaza, Floor 11
New York, NY 10004
Attention: Nadia Moneva / Renfred Pico
Fax No.: 212-552-2812
Email Address:ec.escrow@jpmorgan.com
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9. Compliance with Court Orders. In the event that a legal garnishment, attachment, levy restraining notice or court order is served with respect to any of the Fund, or the delivery thereof shall be stayed or enjoined by an order of a court, Escrow Agent is hereby expressly authorized, in its sole discretion, to obey and comply with all such orders so entered or issued, and in the event that Escrow Agent obeys or complies with any such order it shall not be liable to any of the Parties hereto or to any other person by reason of such compliance notwithstanding such order be subsequently reversed, modified, annulled, set aside or vacated.
10. Miscellaneous. (a) The provisions of this Agreement may be waived, altered, amended or supplemented only by a writing signed by the Escrow Agent and the Parties. This Agreement and any right or interest hereunder may be assigned by a Party only in a writing agreed upon and signed by the Agent and the Parties. This Agreement shall be governed by and construed under the laws of the State of New York. Each Party and Escrow Agent irrevocably waives any objection on the grounds of venue, forum non-conveniens or any similar grounds and irrevocably consents to service of process by mail or in any other manner permitted by applicable law and consents to the exclusive jurisdiction of any state or federal court sitting in New York, New York. To the extent that in any jurisdiction either Party may now or hereafter be entitled to claim for itself or its assets, immunity from suit, execution, attachment (before or after judgment) or other legal process, such Party shall not claim, and hereby irrevocably waives, such immunity. Escrow Agent and the Parties further hereby waive any right to a trial by jury with respect to any lawsuit or judicial proceeding arising or relating to this Agreement.
(b) No party to this Agreement is liable to any other party for losses due to, or if it is unable to perform its obligations under the terms of this Agreement because of, acts of God, fire, war, terrorism, floods, strikes, electrical outages, equipment or transmission failure, or other causes reasonably beyond its control. This Agreement and any joint instructions from the Parties may be executed in one or more counterparts, each of which shall be deemed an original, but all of which together shall constitute one and the same instrument or instruction, as applicable. This Agreement may be executed and transmitted by facsimile or as a PDF attached to an email and each such execution shall be of the same legal effect, validity and enforceability as a manually executed, original, wet-inked signature. If any provision of this Agreement is held to be illegal, invalid, or unenforceable, the validity of the remaining portions of this Agreement shall not be affected. The Parties each represent, warrant and covenant that (i) each document, notice, instruction or request provided by such Party to Escrow Agent shall comply with applicable laws and regulations; (ii) such Party has full power and authority to enter into, execute and deliver this Agreement and to perform all of the duties and obligations to be performed by it hereunder; and (iii) the person(s) executing this Agreement on such Party’s behalf and certifying Authorized Representatives in the applicable Schedule 1 have been duly and properly authorized to do so, and each Authorized Representative of such Party has been duly and properly authorized to take the actions specified for such person in the applicable Schedule 1. Except as expressly provided in Section 7 above, nothing in this Agreement, whether express or implied, shall be construed to give to any person or entity other than Escrow Agent and the Parties any legal or equitable right, remedy, interest or claim under or in respect of the Fund or this Agreement.
[Signature Page Follows]
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IN WITNESS WHEREOF, the parties hereto have executed this Agreement as of the date set forth above.
PARTY A
PREPROGEN LLC
By: /s/ Mayer Goldberger
Name: Mayer Goldberger
Title: Founder
PARTY B
QUANTRX BIOMEDICAL CORPORATION
By: /s/ Shalom Z. Hirschman
Name: Dr. Shalom Z. Hirschman
Title: Chief Executive Officer
JPMORGAN CHASE BANK, N.A.,
As Escrow Agent
By: /s/ Christopher Palermo
Name: Christopher Palermo
Title: Vice President
[Signature Page to Escrow Agreement]
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EXHIBIT A-1
Form of Escrow Release Notice – Joint Instructions
JPMorgan Chase Bank, N.A., Escrow Services
[Address]
[Fax No.]
[Email Address]
Date:
Re: Preprogen LLC, QuantRx Biomedical Corporation – Escrow Agreement dated [ ]
Escrow Account no. [ ]
Dear Sir/Madam:
We refer to an escrow agreement dated [ ] between Preprogen LLC, QuantRx Biomedical Corporation and JPMorgan Chase Bank, N.A., as Escrow Agent (the “Escrow Agreement”).
Capitalized terms in this letter that are not otherwise defined shall have the same meaning given to them in the Escrow Agreement.
The Parties instruct the Escrow Agent to release the Fund, or the portion specified below, to the specified party as instructed below.
Amount
(In writing)
Beneficiary
City
Country
US Instructions:
Bank
Bank address
ABA Number:
Credit A/C Name:
Credit A/C #:
Credit A/C Address:
If Applicable:
FFC A/C Name:
FFC A/C #:
FFC A/C Address:
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International Instructions:
Bank Name:
Bank Address
SWIFT Code:
US Pay Through ABA:
Credit A/C Name:
Credit A/C # (IBAN #):
Credit A/C Address:
If Applicable:
FFC A/C Name:
FFC A/C # (IBAN #):
FFC A/C Address:
FOR AND ON BEHALF OF PARTY A:
__________________________
Name:
Date:
Title:
FOR AND ON BEHALF OF PARTY B:
_________________________________
Name:
Date:
Title:
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Schedule 1-A
Preprogen LLC
DESIGNATION OF AUTHORIZED
REPRESENTATIVES
The undersigned, Mayer Goldberger, being the duly elected, qualified and acting President of Preprogen LLC (“Party A”), does hereby certify:
That each of the following Representatives is at the date hereof an Authorized Representative, as such term is defined in the Escrow Agreement, dated December ___, 2017, by and among Party A, Party B and Escrow Agent (the “Escrow Agreement”), that the signature appearing opposite each Authorized Representative’s name below is the true and genuine signature of such Authorized Representative, and that each Authorized Representative’s contact information is current and up-to-date at the date hereof. Each of the Authorized Representatives is authorized to issue instructions, confirm funds transfer instructions by callback or email confirmation and effect changes in Authorized Representatives, all in accordance with the terms of the Escrow Agreement. Callbacks or emails confirming an instruction shall be made to an Authorized Representative other than the Authorized Representative who issued the instruction unless (a) only a single Authorized Representative is designated below, (b) the information set forth below changes and is not updated by Party A such that only the Authorized Representative who issued the instruction is available to receive a callback or email confirmation, or (c) Party A is an individual. Party A acknowledges that pursuant to this Schedule, Escrow Agent is offering an option for callback or email confirmation to a different Authorized Representative, and if Party A nevertheless names only a single Authorized Representative or fails to update Authorized Representative information, Party A agrees to be bound by any instruction, whether or not authorized, confirmed by callback to the issuer of the instruction.
NAME
SIGNATURE
TELEPHONE, CELL NUMBERS and EMAIL ADDRESSES
Mayer Goldberger
________________
___________________________(cell)______________________(email)____________________
1. Email confirmation is only permitted to a corporate email address for purposes of this Schedule. Any personal email addresses provided will not be used for email confirmation.
2. This Schedule may be signed in counterparts and the undersigned certifies any signature set forth on an attachment to this Schedule is the true and genuine signature of any Authorized Representative and that each such Representative's contact information is current and up-to-date at the date hereof.
3. That pursuant to Party A’s governing documents, as amended, the undersigned has the power and authority to execute this Designation on behalf of Party A, and that the undersigned has so executed this Designation this _____ day of December, 2017.
4. Notwithstanding the above, if Party A is an individual, no signature will be required below.
Signature: _____________________________
Name: Mayer Goldberger
Title: President
FOR YOUR SECURITY, PLEASE CROSS OUT ALL UNUSED SIGNATURE LINES ON THIS SCHEDULE 1-A
All instructions, including but not limited to funds transfer instructions, whether transmitted by facsimile or set forth in a PDF attached to an email, must include the signature (or electronic signature subject to the conditions set forth in the Escrow Agreement), of the Authorized Representative authorizing said funds transfer on behalf of such Party.
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Schedule 1-B
QuantRx Biomedical Corporation
DESIGNATION OF AUTHORIZED
REPRESENTATIVES
The undersigned, ________________________, being the duly elected, qualified and acting ________________________ of QuantRx Biomedical Corporation (“Party B”), does hereby certify:
That each of the following persons is at the date hereof an Authorized Representative, as such term is defined in the Escrow Agreement, dated ________________, 2017, by and among Party A, Party B and Escrow Agent (the “Escrow Agreement”), that the signature appearing opposite each Authorized Representative’s name below is the true and genuine signature of such Authorized Representative, and that each Authorized Representative’s contact information is current and up-to-date at the date hereof. Each of the Authorized Representatives is authorized to issue instructions, confirm funds transfer instructions by callback or email confirmation and effect changes in Authorized Representatives, all in accordance with the terms of the Escrow Agreement. Callbacks or emails confirming an instruction shall be made to an Authorized Representative other than the Authorized Representative who issued the instruction unless (a) only a single Authorized Representative is designated below, (b) the information set forth below changes and is not updated by Party B such that only the Authorized Representative who issued the instruction is [available] to receive a callback or email confirmation, or (c) Party B is an individual. Party B acknowledges that pursuant to this Schedule, Escrow Agent is offering an option for callback or email confirmation to a different Authorized Representative, and if Party B nevertheless names only a single Authorized Representative or fails to update Authorized Representative information, Party B agrees to be bound by any instruction, whether or not authorized, confirmed by callback to the issuer of the instruction.
NAME
SIGNATURE
TELEPHONE, CELL NUMBERS and EMAIL ADDRESSES
___________________________
___________________________
___________________________(cell)______________________
(email)____________________
___________________________
___________________________
___________________________(cell)______________________
___________________________
___________________________
(email)____________________
___________________________(cell)______________________
(email)____________________
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1. Email confirmation is only permitted to a corporate email address for purposes of this Schedule. Any personal email addresses provided will not be used for email confirmation.
2. This Schedule may be signed in counterparts and the undersigned certifies any signature set forth on an attachment to this Schedule is the true and genuine signature of any Authorized Representative and that each such Representative's contact information is current and up-to-date at the date hereof.
5. That pursuant to Party B’s governing documents, as amended, the undersigned has the power and authority to execute this Designation on behalf of Party B, and that the undersigned has so executed this Designation this _____ day of ______, 2017.
6. Notwithstanding the above, if Party B is an individual, no signature will be required below.
Signature: _____________________________
Name: _____________________________
Title: _____________________________
FOR YOUR SECURITY, PLEASE CROSS OUT ALL UNUSED SIGNATURE LINES ON THIS SCHEDULE 1-B
All instructions, including but not limited to funds transfer instructions, whether transmitted by facsimile or set forth in a PDF attached to an email, must include the signature (or electronic signature subject to the conditions set forth in the Escrow Agreement) of the Authorized Representative authorizing said funds transfer on behalf of such Party.
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Exhibit 10.6
THE SECURITIES REPRESENTED BY THIS CERTIFICATE HAVE BEEN ACQUIRED FOR INVESTMENT AND HAVE NOT BEEN REGISTERED UNDER THE SECURITIES ACT OF 1933, AS AMENDED, OR ANY STATE SECURITIES LAWS. SUCH SECURITIES MAY NOT BE SOLD OR TRANSFERRED IN THE ABSENCE OF SUCH REGISTRATION OR AN EXEMPTION THEREFROM UNDER SAID ACT AND ANY APPLICABLE STATE SECURITIES LAWS.
Dated: December 14, 2017
Warrant Number: CSW-___
WARRANT TO PURCHASE
COMMON STOCK
OF
QUANTRX BIOMEDICAL CORPORATION
This certifies that RASHBI CAPITAL GROUP, LLC, or its permitted assigns (each a “Holder”), for value received, is entitled to purchase, at an exercise price equal to $0.05 per share (the “Exercise Price”) from QUANTRX BIOMEDICAL CORPORATION, a Nevada corporation (the “Company”), up to fifteen million (15,000,000) shares of fully paid and nonassessable shares of the Company’s Common Stock, $0.01 par value (“Common Stock”).
This Warrant shall be exercisable at any time from time to time from and after the date hereof up to and including 5:00 p.m. (Pacific Time) on December 14, 2022.
1. Exercise.
1.1 Method of Exercise. The Holder hereof may exercise this Warrant, in whole or in part, by the surrender of this Warrant (with the Form of Subscription attached hereto duly completed and executed) at the principal office of the Company, and (i) by the payment to the Company of an amount of consideration therefor equal to the Exercise Price in effect on the date of such exercise multiplied by the number of shares of Common Stock with respect to which this Warrant is then being exercised, payable at such Holder's election by certified or official bank check or by wire transfer to an account designated by the Company, or (ii) by a “cashless exercise” in accordance with Section 1.2. If this Warrant is submitted in connection with any exercise pursuant to this Section 1 and the number of Warrant Shares represented by this Warrant submitted for exercise is greater than the number of Warrant Shares being acquired upon an exercise, then the Company shall as soon as practicable and in no event later than three (3) business days after any exercise and at its own expense, issue a new Warrant in the same form as this Warrant representing the right to purchase the number of Warrant Shares purchasable immediately prior to such exercise under this Warrant, less the number of Warrant Shares with respect to which this Warrant is exercised. Issuance of Warrant Shares shall be made without charge to the Holder for any issue or transfer tax or other incidental expense in respect of the issuance of such certificate, all of which taxes and expenses shall be paid by the Company, and such Warrant Shares shall be issued in the name of the Holder or in such name or names as may be directed by the Holder.
1.2 Payment of Exercise Price. The Holder may pay the Exercise Price in immediately available funds by wire transfer to an account designated by the Company or by certified or official bank check or, alternatively, in its sole discretion satisfy its obligation to pay the Exercise Price through a “cashless exercise”, in which event the Company shall issue to the Holder the number of Warrant Shares determined as follows:
X = Y [(A-B)/A]
where:
“X” equals the number of Warrant Shares to be issued to the Holder;
“Y” equals the total number of Warrant Shares with respect to which this Warrant is being exercised;
“A” equals the arithmetic average of the Closing Sale Prices (defined below) of the shares of Common Stock for the five (5) consecutive Trading Days ending on the date immediately preceding the Exercise Date; and
“B” equals the Exercise Price then in effect for the applicable Warrant Shares at the time of such exercise.
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For purposes of this Warrant, “Closing Sale Price” means, for any security as of any date, the last trade price for such security on the Principal Trading Market for such security, as reported by Bloomberg Financial Markets, or, if such Principal Trading Market begins to operate on an extended hours basis and does not designate the last trade price, then the last trade price of such security prior to 4:00 P.M., New York City time, as reported by Bloomberg Financial Markets, or if the foregoing do not apply, the last trade price of such security in the over-the-counter market on the electronic bulletin board for such security as reported by Bloomberg Financial Markets, or, if no last trade price is reported for such security by Bloomberg Financial Markets, the average of the bid prices, or the ask prices, respectively, of any market makers for such security as reported in the “pink sheets” by Pink Sheets LLC. If the Closing Sale Price cannot be calculated for a security on a particular date on any of the foregoing bases, the Closing Sale Price of such security on such date shall be the fair market value as determined in good faith by the Board of Directors of the Company. All such determinations shall be appropriately adjusted for any stock dividend, stock split, stock combination or other similar transaction during the applicable calculation period.
1.3 Holder’s Exercise Limitations. The Company shall not effect any exercise of this Warrant, and a Holder shall not have the right to exercise any portion of this Warrant, pursuant to Section 1 or otherwise, to the extent that after giving effect to such issuance after exercise as set forth on the applicable Notice of Exercise, the Holder (together with the Holder’s affiliates, and any other individuals or entities acting as a group together with the Holder or any of the Holder’s affiliates), would beneficially own in excess of the Beneficial Ownership Limitation (as defined below). For purposes of the foregoing sentence, the number of shares of Common Stock beneficially owned by the Holder and its affiliates shall include the number of shares of Common Stock issuable upon exercise of this Warrant with respect to which such determination is being made, but shall exclude the number of shares of Common Stock which would be issuable upon (i) exercise of the remaining, nonexercised portion of this Warrant beneficially owned by the Holder or any of its affiliates and (ii) exercise or conversion of the unexercised or nonconverted portion of any other securities of the Company (including, without limitation, any other Common Stock Equivalents) subject to a limitation on conversion or exercise analogous to the limitation contained herein beneficially owned by the Holder or any of its affiliates. Except as set forth in the preceding sentence, for purposes of this Section 1.3, beneficial ownership shall be calculated in accordance with Section 13(d) of the Securities Exchange Act of 1934, as amended (the “Exchange Act”) and the rules and regulations promulgated thereunder. To the extent that the limitation contained in this Section 1.3 applies, the determination of whether this Warrant is exercisable (in relation to other securities owned by the Holder together with any affiliates) and of which portion of this Warrant is exercisable shall be in the sole discretion of the Holder, and the submission of a Form of Subscription shall be deemed to be the Holder’s determination of whether this Warrant is exercisable (in relation to other securities owned by the Holder together with any affiliates) and of which portion of this Warrant is exercisable, in each case subject to the Beneficial Ownership Limitation, and the Company shall have no obligation to verify or confirm the accuracy of such determination. In addition, a determination as to any group status as contemplated above shall be determined in accordance with Section 13(d) of the Exchange Act and the rules and regulations promulgated thereunder. For purposes of this Section 1.3, in determining the number of outstanding shares of Common Stock, a Holder may rely on the number of outstanding shares of Common Stock as reflected in (A) the Company’s most recent periodic or annual report filed with the United States Securities and Exchange Commission, as the case may be, (B) a more recent public announcement by the Company or (C) a more recent written notice by the Company or its transfer agent setting forth the number of shares of Common Stock outstanding. Upon the written or oral request of a Holder, the Company shall within two trading days confirm orally and in writing to the Holder the number of shares of Common Stock then outstanding. In any case, the number of outstanding shares of Common Stock shall be determined after giving effect to the conversion or exercise of securities of the Company, including this Warrant, by the Holder or its affiliates since the date as of which such number of outstanding shares of Common Stock was reported. The “Beneficial Ownership Limitation” shall be 4.999% of the number of shares of the Common Stock outstanding immediately after giving effect to the issuance of shares of Common Stock issuable upon exercise of this Warrant. The Holder, upon not less than 61 days’ prior notice to the Company, may increase or decrease the Beneficial Ownership Limitation provisions of this 1.3, provided that the Beneficial Ownership Limitation in no event exceeds 9.99% of the number of shares of the Common Stock outstanding immediately after giving effect to the issuance of shares of Common Stock upon exercise of this Warrant held by the Holder and the provisions of this Section 1.3 shall continue to apply. Any such increase or decrease will not be effective until the 61st day after such notice is delivered to the Company. The provisions of this paragraph shall be construed and implemented in a manner otherwise than in strict conformity with the terms of this Section 1.3 to correct this paragraph (or any portion hereof) which may be defective or inconsistent with the intended Beneficial Ownership Limitation herein contained or to make changes or supplements necessary or desirable to properly give effect to such limitation. The limitations contained in this paragraph shall apply to a successor holder of this Warrant.
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2. Shares to be Fully Paid; Reservation of Shares. The Company covenants and agrees that all shares of Common Stock which may be issued upon the exercise of the rights represented by this Warrant will, upon issuance, be duly authorized, validly issued, fully paid and nonassessable and free from all preemptive rights of any shareholder and free of all taxes, liens and charges with respect to the issue thereof. The Company further covenants and agrees that during the period within which the rights represented by this Warrant may be exercised, the Company will at all times have authorized and reserved, for the purpose of issue or transfer upon exercise of the subscription rights evidenced by this Warrant, a sufficient number of shares of authorized but unissued shares of Common Stock.
3. Adjustment of Exercise Price and Number of Shares. The Exercise Price and the number of shares purchasable upon the exercise of this Warrant shall be subject to adjustment from time to time upon the occurrence of certain events described in this Section 3. Upon each adjustment of the Exercise Price, the Holder of this Warrant shall thereafter be entitled to purchase, at the Exercise Price resulting from such adjustment, the number of shares obtained by multiplying the Exercise Price in effect immediately prior to such adjustment by the number of shares purchasable pursuant hereto immediately prior to such adjustment, and dividing the product thereof by the Exercise Price resulting from such adjustment.
3.1 Subdivision or Combination of Stock. In case the Company shall at any time subdivide its outstanding shares of Common Stock into a greater number of shares, the Exercise Price in effect immediately prior to such subdivision shall be proportionately reduced, and conversely, in case the outstanding shares of the Common Stock of the Company shall be combined into a smaller number of shares, the Exercise Price in effect immediately prior to such combination shall be proportionately increased.
3.2 Reclassification. If any reclassification of the capital stock of the Company shall be effected in such a way that holders of Common Stock shall be entitled to receive stock, securities, or other assets or property, then, as a condition of such reclassification, lawful and adequate provisions shall be made whereby the Holder hereof shall thereafter have the right to purchase and receive (in lieu of the shares of the Common Stock immediately theretofore purchasable and receivable upon the exercise of the rights represented hereby) such shares of stock, securities or other assets or property as may be issued or payable with respect to or in exchange for a number of outstanding shares of such Common Stock equal to the number of shares of such Common Stock immediately theretofore purchasable and receivable upon the exercise of the rights represented hereby. In any reclassification described above, appropriate provision shall be made with respect to the rights and interests of the Holder of this Warrant to the end that the provisions hereof (including, without limitation, provisions for adjustments of the Exercise Price and of the number of shares purchasable and receivable upon the exercise of this Warrant) shall thereafter be applicable, as nearly as may be, in relation to any shares of stock, securities or assets thereafter deliverable upon the exercise hereof.
3.4 Notice of Adjustment. Upon any adjustment of the Exercise Price or any increase or decrease in the number of shares purchasable upon the exercise of this Warrant, the Company shall give written notice thereof, by first class mail postage prepaid, addressed to the registered Holder of this Warrant at the address of such Holder as shown on the books of the Company. The notice shall be signed by the Company’s chief financial officer and shall state the Exercise Price resulting from such adjustment and the increase or decrease, if any, in the number of shares purchasable at such price upon the exercise of this Warrant, setting forth in reasonable detail the method of calculation and the facts upon which such calculation is based.
3.5 Other Notices. If at any time:
(1) the Company shall declare any cash dividend upon its Common Stock;
(2) there shall be a Change of Control; or
(3) there shall be a voluntary or involuntary dissolution, liquidation or winding-up of the Company;
then, in any one or more of said cases, the Company shall give, by first class mail, postage prepaid, addressed to the Holder of this Warrant at the address of such Holder as shown on the books of the Company, (a) at least twenty (20) days prior written notice of the date on which the books of the Company shall close or a record shall be taken for such dividend or for determining rights to vote in respect of any such Change of Control or dissolution, liquidation or winding-up, and (b) in the case of any such Change of Control or dissolution, liquidation, or winding-up, at least twenty (20) days prior written notice of the date when the same shall take place. Any notice given in accordance with the foregoing clause (a) shall also specify, in the case of any such dividend, the date on which the holders of Common Stock shall be entitled thereto. Any notice given in accordance with the foregoing clause (b) shall also specify the date on which the holders of Common Stock shall be entitled to exchange their Common Stock for securities or other property deliverable upon such Change of Control, dissolution, liquidation, winding-up, or conversion, as the case may be.
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4. No Voting or Dividend Rights. Nothing contained in this Warrant shall be construed as conferring upon the Holder hereof the right to vote or to consent to receive notice as a shareholder of the Company or any other matters or any rights whatsoever as a shareholder of the Company. No dividends or interest shall be payable or accrued in respect of this Warrant or the interest represented hereby or the shares purchasable hereunder until, and only to the extent that, this Warrant shall have been exercised.
5. Warrants Transferable. Subject to compliance with applicable federal and state securities laws, this Warrant and all rights hereunder may be transferred, in whole or in part, without charge to the holder hereof (except for transfer taxes), upon the prior written consent of the Company and, thereafter, upon surrender of this Warrant properly endorsed and compliance with the provisions of this Warrant. Each taker and holder of this Warrant, by taking or holding the same, consents and agrees that this Warrant, when endorsed in blank, shall be deemed negotiable, and that the holder hereof, when this Warrant shall have been so endorsed, may be treated by the Company, at the Company’s option, and all other persons dealing with this Warrant as the absolute owner hereof for any purpose and as the person entitled to exercise the rights represented by this Warrant, or to the transfer hereof on the books of the Company and notice to the contrary notwithstanding; but until such transfer on such books, the Company may treat the registered owner hereof as the owner for all purposes.
6. Lost Warrants. Upon receipt of evidence reasonably satisfactory to the Company of the loss, theft, destruction, or mutilation of this Warrant and, in the case of any such loss, theft or destruction, upon receipt of an indemnity reasonably satisfactory to the Company, or in the case of any such mutilation upon surrender and cancellation of such Warrant, the Company, at its expense, will make and deliver a new Warrant, of like tenor, in lieu of the lost, stolen, destroyed or mutilated Warrant.
7. Modification and Waiver. Any term of this Warrant may be amended and the observance of any term of this Warrant may be waived (either generally or in a particular instance and either retroactively or prospectively) only with the written consent of the Company and the Holder hereof. Any amendment or waiver affected in accordance with this Section 7 shall be binding upon the Company and the Holder.
8. Notices. All notices and other communications from the Company to the Holder, or vice versa, shall be deemed delivered and effective when given personally or mailed by first-class registered or certified mail, postage prepaid, at such address as may have been furnished to the Company or the Holder, as the case may be, in writing by the Company or such holder from time to time.
9. Titles and Subtitles; Governing Law; Venue. The titles and subtitles used in this Warrant are used for convenience only and are not to be considered in construing or interpreting this Warrant. This Warrant is to be construed in accordance with and governed by the internal laws of the State of Delaware without giving effect to any choice of law rule that would cause the application of the laws of any jurisdiction other than the internal laws of the State of Delaware to the rights and duties of the Company and the Holder. All disputes and controversies arising out of or in connection with this Warrant shall be resolved exclusively by the state and federal courts in the State of Delaware, and each of the Company and the Holder hereto agrees to submit to the jurisdiction of said courts and agrees that venue shall lie exclusively with such courts.
10. Representations and Warranties. The Holder represents and warrants to the Company and follows: The Warrant is being acquired for Holder’s own investment portfolio and account (and not on behalf of, and without the participation of, any other Person) with the intent of holding such Warrant for investment and without the intent of participating, directly or indirectly, in a distribution of the Warrant and not with a view to, or for resale in connection with, any distribution of the Warrant or any portion thereof. Holder acknowledges that the Warrant has not been offered to Holder by means of publicly disseminated advertisements of sales literature. Holder is an “accredited investor” (as defined in Rule 501 promulgated under the Securities Act) and is knowledgeable and experienced in finance, securities and investments and has had sufficient experience analyzing and investing in securities similar to the Warrant so as to be capable of evaluating the merits and risks of an investment in the Warrant. Holder is able to bear the economic risk of an investment in the Warrant. Holder has had an opportunity to discuss the Company’s business, management, financial affairs and the terms and conditions of the issuance of the Warrant with the Company’s management. The foregoing, however, does not limit or modify the representations and warranties of the Company in the Asset Purchase Agreement entered into on the date hereof by and between the Company and Preprogen LLC or the rights and remedies of Holder for any breach of such representations and warranties. Holder understands that the Warrant will not have been registered pursuant to the Securities Act or any applicable state securities laws, that the Warrant will be characterized as “restricted securities” under federal securities laws, and that under such laws and applicable regulations the Warrant cannot be sold or otherwise disposed of without registration under the Securities Act or an exemption therefrom. In this connection, Holder represents that it is familiar with Rule 144 promulgated under the Securities Act, as currently in effect, and understands the resale limitations imposed thereby and by the Securities Act. Holder understands that no public market now exists for the Warrant, and that the Company has made no assurances that a public market will ever exist for the Warrant.
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11. Definition of Warrant Shares. For purposes of this Warrant, the following terms shall have the following meanings:
“Change of Control” shall mean that (A) the Company shall, directly or indirectly, in one or more related transactions, (i) consolidate or merge with or into (whether or not the Company is the surviving corporation) another Person, or (ii) sell, assign, transfer, convey or otherwise dispose of all or substantially all of the properties or assets of the Company to another Person, or (iii) another Person completes a purchase, tender or exchange offer that is accepted by the holders of more than the 50% of the outstanding shares of Common Stock (not including any shares of Common Stock held by the Person or Persons making or party to, or associated or affiliated with the Persons making or party to, such purchase, tender or exchange offer), or (iv) consummate a stock purchase agreement or other business combination (including, without limitation, a reorganization, recapitalization, spin-off or scheme of arrangement) with another Person whereby such other Person acquires more than the 50% of the outstanding shares of Common Stock (not including any shares of Common Stock held by the other Person or other Persons making or party to, or associated or affiliated with the other Persons making or party to, such stock purchase agreement or other business combination), or (v) reorganize, recapitalize or reclassify its Common Stock (other than as a result of a subdivision or combination of shares of Common Stock covered by Section 3.1 or 3.2 above) or (B) any “person” or “group” (as these terms are used for purposes of Sections 13(d) and 14(d) of the Exchange Act) is or shall become the “beneficial owner” (as defined in Rule 13d-3 under the Exchange Act), directly or indirectly, of 50% of the aggregate ordinary voting power represented by issued and outstanding shares of Common Stock.
“Person” means an individual, a limited liability company, a partnership, a joint venture, a corporation, a trust, an unincorporated organization, any other entity and a government or any department or agency thereof.
“Principal Trading Market” means the principal securities exchange or securities market in the United States on which the securities are then traded.
“Securities Act” means the Securities Act of 1933, as amended.
“Trading Day” means any day on which the applicable securities are traded on the Principal Trading Market; provided that “Trading Day” shall not include any day on which the applicable securities are scheduled to trade on such exchange or market for less than 4.5 hours or any day that the applicable securities are suspended from trading during the final hour of trading on such exchange or market (or if such exchange or market does not designate in advance the closing time of trading on such exchange or market, then during the hour ending at 4:00:00 p.m., New York time).
“Warrant Shares” shall mean the number of shares of the Company’s Common Stock issuable upon exercise of this Warrant.
[REMAINDER OF PAGE INTENTIONALLY LEFT BLANK]
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IN WITNESS WHEREOF, the Company has caused this Warrant to be duly executed by its officers, thereunto duly authorized as of the date first above written.
QuantRx Biomedical Corporation
By:
/s/ Shalom Hirschman
Shalom Hirschman
Chief Executive Officer
[Signature Page To Warrant]
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Acknowledged and Agreed by the Holder:
RASHBI CAPITAL GROUP, LLC
By:
/s/ Mayer Goldberger
[Signature Page To Warrant]
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FORM OF SUBSCRIPTION
(To be signed only upon exercise of Warrant)
To: QUANTRX BIOMEDICAL CORPORATION
The undersigned, the holder of a right to purchase shares of Common Stock of QuantRx Biomedical Corporation (the “Company”) pursuant to that certain Warrant to Purchase Common Stock of QuantRx Biomedical Corporation Number CSW-_____ (the “Warrant”), dated as of ____________ hereby irrevocably elects to exercise the purchase right represented by such Warrant for, and to purchase thereunder, __________________________ (_________) shares of Common Stock of the Company and (check one):
? herewith makes payment of ________________________ Dollars($__________) therefor in cash;
? elects a “cashless exercise” in accordance with Section 1.2 of the Warrant.
The undersigned represents that it is acquiring such securities for its own account for investment and not with a view to or for sale in connection with any distribution thereof.
DATED: ________________
____________________________
By:
Name:
Its:
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ACKNOWLEDGMENT
To: HOLDER
The undersigned hereby acknowledges that as of the date hereof, __________________ (___________) shares of Common Stock remain subject to the right of purchase in favor of _____________ pursuant to that certain Warrant to Purchase Common Stock of QuantRx Biomedical Corporation, number CSW-___ dated as of ____________.
DATED: ________________
QuantRx Biomedical Corporation
By:
Name:
Its:
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Warrant Receipt
The undersigned, ___________________, does hereby acknowledge receipt of Warrant Number CSW-___ dated, ________________, representing _____________ (________) shares of the Common Stock Warrants of QuantRx Biomedical Corporation
IN WITNESS WHEREOF, the undersigned has executed this Receipt as of the date set forth below.
Type: Common Stock Warrants
Warrant Number: CSW-___
Number of Shares:
Name: _______________________
Date: _______________________
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Washington, DC 20549
FORM 8-K
CURRENT REPORT
Pursuant to Section 13 or 15(d) of the
Securities Exchange Act of 1934
Date of Report (Date of earliest event reported): December 15, 2017
QUANTRX BIOMEDICAL CORPORATION
(Exact name of Registrant as specified in its Charter)
Nevada
000-17119
33-0202574
(State or other jurisdiction of incorporation)
(Commission File No.)
(IRS Employer Identification No.)
10190 SW 90th Avenue, Tualatin, Oregon 97123
(Address of principal executive offices)
(212) 980-2235
(Registrant’s Telephone Number)
Not Applicable
(Former name or address, if changed since last report)
Check the appropriate box below if the Form 8-K filing is intended to simultaneously satisfy the filing obligation of the registrant under any of the following provisions (see General Instruction A.2. below):
? Written communications pursuant to Rule 425 under the Securities Act (17 CFR 230.425)
? Soliciting material pursuant to Rule 14a-12 under the Exchange Act (17 CFR 240.14a-12)
? Pre-commencement communications pursuant to Rule 14d-2(b) under the Exchange Act (17 CFR 240.14d-2(b))
? Pre-commencement communications pursuant to Rule 13e-4(c) under the Exchange Act (17 CFR 240.13e-4(c))
Indicate by check mark whether the registrant is an emerging growth company as defined in Rule 405 of the Securities Act of 1933 (17 CFR 230.405) or Rule 12b-2 of the Securities Exchange Act of 1934 (17 CFR 240.12b-2) ?
If an emerging growth company, indicate by check mark if the registrant has elected not to use the extended transition period for complying with any new or revised financial accounting standards provided pursuant to Section 13(a) of the Exchange Act ?
Item 1.01 Entry into a Material Definitive Agreement
On December 15, 2017 (“Closing Date”), QuantRx Biomedical Corporation (the “Company”) entered into an agreement with Preprogen LLC (“Preprogen”), pursuant to which the parties agreed to the sale, assignment, and license-back of certain assets of the Company (the “Purchased Assets”) related to the means of collection and analysis of vaginal fluid and exfoliated vaginal cells, as more specifically set forth in the Asset Purchase Agreement (the “APA”), Patent Assignment, Trademark Assignment and License Agreement (together, the “Transaction Documents”) attached hereto as Exhibit 10.1, Exhibit 10.2, Exhibit 10.3 and 10.4, respectively.
As consideration for the sale, assignment and transfer of the Purchased Assets (the “Preprogen Transaction”), on the Closing Date Preprogen (A) paid to the Company $1.0 million (“Cash Amount”) as follows: (i) approximately $38,000 was paid to the City of Portland to payoff certain indebtedness owed by the Company to the City of Portland, (ii) $65,000 was paid to Preprogen as a result of the cancellation and termination of certain promissory notes payable to Preprogen by the Company, and (iii) the remaining balance was paid to the Company in cash at closing (the “Closing Balance”); and (B) issued to the Company that number of membership interests of Preprogen equal to 15% of the issued and outstanding membership interests in Preprogen on a fully diluted basis as of the Closing Date. Under the terms of the APA, Preprogen is obligated to pay to the Company such additional amounts calculated based on the aggregate gross revenue generated by Preprogen from the sale of products after the Closing Date that utilize, or royalty payments or licensing fees received by Preprogen with respect to, the Purchased Assets, if any, as more particularly set forth in the APA.
At closing, and as required by the APA, the Company deposited $400,000 of the Cash Balance in escrow, which funds shall be used to fund up to 50% of the costs incurred by Preprogen in connection with the development and manufacturing of materials to be used by the Company for its over the counter (“OTC”) miniform products and to be used by Preprogen for diagnostic products related to the Purchased Assets. A copy of the Escrow Agreement is attached hereto as Exhibit 10.5.
As additional consideration for the Purchased Assets, the Company issued a warrant to Preprogen’s designee, to purchase up to 15.0 million shares of the Company’s common stock, par value $0.01 per share, at an exercise price equal to $0.05 per share (the “Warrant”). The Warrant is immediately exercisable, and shall expire on December 14, 2022. A copy of the Warrant is attached hereto as Exhibit 10.6.
Pursuant to the terms of the License Agreement, Preprogen licensed-back to the Company rights to use the intellectual property transferred to Preprogen necessary to the development, manufacture, marketing and sale of the Company’s OTC miniform products for the feminine hygiene and hemorrhoid treatment markets.
Item 2.01 Completion of Acquisition or Disposition of Assets.
See Item 1.01 above.
Item 3.02 Unregistered Sales of Equity Securities
See Item 1.01 above.
Item 9.01 Financial Statements and Exhibits
See Exhibit Index.
Disclaimer
The foregoing descriptions of the APA, Patent Assignment, Trademark Assignment, License Agreement, Escrow Agreement and Warrant do not purport to be complete, and are qualified in their entirety by reference to the full text of the APA, Patent Assignment, Trademark Assignment, License Agreement, Escrow Agreement and Warrant, attached hereto as Exhibits 10.1, 10.2, 10.3, 10.4, 10.5 and 10.6, respectively, each of which are incorporated by reference herein.
SIGNATURES
Pursuant to the requirements of the Securities Exchange Act of 1934, the registrant has duly caused this report to be signed on its behalf by the undersigned hereunto duly authorized.
TRACK GROUP, INC.
Date: December 21, 2017
By:
/s/ Dr. Shalom Hirschman
Dr. Shalom Hirschman
Chief Executive Officer
EXHIBIT INDEX
Exhibit No.
Description
10.1
Asset Purchase Agreement, dated December 14, 2017
10.2
Patent Assignment, dated December 14, 2017
10.3
Trademark Assignment, dated December 14, 2017
10.4
License Agreement, dated December 14, 2017
10.5
Escrow Agreement, dated December 14, 2017
10.6
Warrant, dated December 14, 2017
Exhibit 10.1
ASSET PURCHASE AGREEMENT
This ASSET PURCHASE AGREEMENT (this “Agreement”), dated December 14, 2017, is made by and between QuantRx Biomedical Corporation, a Nevada corporation (“Seller”), and Preprogen LLC, a Delaware limited liability company (“Buyer”). Buyer and Seller are collectively referred to herein as the “Parties” and each individually as a “Party”.
WHEREAS, the Parties desire that, at the Closing (defined below) and subject to the terms and conditions set forth in this Agreement, Seller shall sell, assign, transfer and deliver to Buyer, and Buyer shall purchase and accept from Seller, all of the Purchased Assets (defined below).
NOW, THEREFORE, in consideration of the foregoing and the representations, warranties, covenants and agreements herein contained, the Parties hereto agree as follows:
SECTION 1. DEFINITIONS AND TERMS.
1.1 Specific Definitions. As used in this Agreement, the following terms have the following meanings:
“Affiliate” means, with respect to any Person, any Person directly or indirectly controlling, controlled by or under common control with, such Person. For purposes of this definition, “control” (including, with correlative meaning, the terms “controlling”, “controlled by” and “under common control with”) means the possession, directly or indirectly, of the power to direct or cause the direction of the management and policies of such Person through the ownership of such Person’s voting securities, by contract or otherwise.
“Allocation” has the meaning set forth in Section 3.4.
“Agreement” has the meaning set forth in the preamble to this Agreement.
“Base Cash Amount” has the meaning set forth in Section 2.3.
“Business” means the collection and analysis of vaginal fluid and exfoliated vaginal cells, including, but not limited to, fetal cellular material and/or cancer cells utilizing, among other resources, the proprietary PadKit technology of Seller, and the commercialization of the foregoing.
“Business Day” means any day other than a Saturday, a Sunday or a day on which banks in New York City are authorized or obligated by Law or executive order to close.
“Buyer” has the meaning set forth in the preamble to this Agreement.
“Buyer Indemnified Parties” has the meaning set forth in Section 7.1(a).
“Code” has the meaning set forth in Section 3.4.
“Closing” has the meaning set forth in Section 3.1.
“Closing Date” has the meaning set forth in Section 3.1.
“Disagreement Notice” has the meaning set forth in Section 7.3(f).
“Disputed Items” has the meaning set forth in Section 4.2.
“Encumbrance” means any mortgage, lien, pledge, security interest, charge, encumbrance, claim, covenant, condition or restriction or any other adverse claim, right or encumbrance of any kind or nature whatsoever.
“Equity Amount” has the meaning set forth in Section 2.3.
“Equity Consideration” has the meaning set forth in Section 3.2(c).
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“Excluded Business” means the development, manufacturing, marketing and sale of the over-the-counter (“OTC”) miniform products for the feminine hygiene markets and hemorrhoid treatment markets, including, for the avoidance of doubt, the OTC Pad technologies, including feminine and anal hygienic pad, and lateral flow technology.
“Excluded Liabilities” has the meaning set forth in Section 2.2.
“Final Revenue Statement” has the meaning set forth in Section 4.2.
“Fundamental Representations” means, collectively, Sections 5.1(a) (Organization), 5.1(b) (Authorization), 5.1(c)(i) (No Conflicts), and 5.1(k) (No Brokers).
“GAAP” means United States generally accepted accounting principles as in effect from time to time.
“Governmental Authority” means any federal, state, local or foreign government or other political subdivision thereof or any entity, body, regulatory or administrative authority, agency, commission, court, tribunal or judicial body exercising executive, legislative, judicial, regulatory or administrative functions of or pertaining to government.
“Indemnified Party” has the meaning set forth in Section 7.3(a).
“Indemnifying Party” has the meaning set forth in Section 7.3(a).
“Independent Expert” has the meaning set forth in Section 4.2.
“Intellectual Property” means all rights in intellectual property throughout the world, including:
(a) all domestic and foreign copyright interests in any original work of authorship, whether registered or unregistered, including to all copyright registrations or foreign equivalent, all applications for registration or foreign equivalent, all moral rights, all common-law rights, and all rights to register and obtain renewals and extensions of copyright registrations, together with all other copyright interests accruing by reason of international copyright convention (“Copyrights”);
(b) all domestic and foreign patents (including certificates of invention and other patent equivalents), provisional applications, patent applications and patents issuing therefrom as well as any division, continuation or continuation in part, reissue, extension, reexamination, certification, revival or renewal of any patent, all Inventions and subject matter related to such patents, in any and all forms (“Patents”);
(c) all domestic and foreign trademarks, trade dress, service marks, trade names, icons, logos, slogans, and any other indicia of source or sponsorship of goods and services, designs and logotypes related to the above, in any and all forms, all trademark registrations and applications for registration related to such trademarks (including intent to use applications), and all goodwill related to the foregoing (“Trademarks”);
(d) all domain name registrations (“Domain Names”);
(e) any formula, design, device or compilation, or other information which is used or held for use by a business, which gives the holder thereof an advantage or opportunity for advantage over competitors which do not have or use the same, and which is not generally known by the public. Trade Secrets can include, by way of example, formulas, algorithms, market surveys, market research studies, information contained on drawings and other documents, and information relating to research, development or testing (“Trade Secrets”);
(f) novel devices, processes, compositions of matter, methods, techniques, observations, discoveries, apparatuses, machines, designs, expressions, theories and ideas, and inventions, whether or not patentable, scientific, engineering, mechanical, electrical, financial, marketing or practical knowledge or experience useful in the operation of Seller or the Business (“Know How”);
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(g) (i) any and all computer programs and/or software programs (including all source code, object code, firmware, programming tools and/or documentation), (ii) databases and compilations, including any and all data and collections of data, and (iii) all content contained on Internet site(s) (“Software”);
(h) all documentation and media constituting, describing or relating to the above, including memoranda, manuals, technical specifications and other records wherever created throughout the world; and
(i) the right to sue for past, present, or future infringement and to collect and retain all damages and profits related to the foregoing.
“IP Assignments” has the meaning set forth in Section 3.2.
“Knowledge of Seller” means the actual knowledge after reasonable due inquiry of Dr. Shalom Hirschman and Michael Abrams.
“Law” or “Laws” means any law (both common and statutory law and civil and criminal law), treaty, convention, rule, directive, legislation, ordinance, regulatory code (including statutory instruments, guidance notes, circulars, directives, decisions, rules and regulations) or similar provision having the force of law or an order of any Governmental Authority.
“License Agreement” has the meaning set forth in Section 3.2(c).
“Losses” has the meaning set forth in Section 7.1(a).
“Notice of Claim” has the meaning set forth in Section 7.3(a).
“Other Transaction Documents” means, collectively, the Preprogen Operating Agreement, the IP Assignments, the Warrant and the License Agreement.
“Owned IP” has the meaning set forth in Section 5.1(g)(i)(A).
“Parties” has the meaning set forth in the preamble to this Agreement.
“Person” means an individual, a corporation, a limited liability company, a partnership, an association, a trust or other entity or organization, including any Governmental Authority.
“Preprogen Operating Agreement” has the meaning set forth in Section 3.2(c).
“Proceeding” has the meaning set forth in Section 7.3(a).
“Promissory Notes” has the meaning set forth in Section 3.2(b).
“Promissory Notes Amount” means $65,000, representing the aggregate outstanding principal amount of the Promissory Notes.
“PTO” has the meaning set forth in Section 5.1(g)(ii)(C).
“Purchased Assets” has the meaning set forth in Section 2.1.
“Purchase Price” has the meaning set forth in Section 3.4.
“Registered IP” has the meaning set forth in Section 5.1(g)(i)(A).
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“Revenue” means the amount of gross revenue recognized by Buyer following the Closing from the sale of products that utilize, in whole or in part, or royalty payments or licensing fees received by Buyer with respect to, (i) the Patents included in the Owned IP acquired pursuant to this Agreement that relate primarily to the Business, and/or (ii) improvements to, or extensions of, such acquired Patents made by, or issued to, Buyer following the Closing or any Patents developed by Buyer following the Closing that relate, in whole or in part, to such acquired Patents, in each case, calculated in accordance with GAAP.
“Revenue Payment” has the meaning set forth in Section 4.1.
“Revenue Statement” has the meaning set forth in Section 4.1.
“Securities Act” has the meaning set forth in Section 5.1(h).
“Seller” has the meaning set forth in the preamble to this Agreement.
“Seller Disclosure Schedule” has the meaning set forth in Section 5.1.
“Seller Indemnified Parties” has the meaning set forth in Section 7.2(a).
“Warrant” has the meaning set forth in Section 3.2.
“Warrant Shares” has the meaning set forth in Section 5.1(h).
“Warrantholder” has the meaning set forth in Section 2.3.
1.2 Other Definitional Provisions. All references to Articles, Sections and Exhibits are references to Articles, Sections and Exhibits of this Agreement unless otherwise provided. Terms defined in the singular have a comparable meaning when used in the plural, and vice versa. The use of the masculine, feminine or neuter gender herein shall not limit any provision of this Agreement. The words “include”, “includes” and “including” shall be deemed to be followed by the words “without limitation” whether or not they are in fact followed by those words or words of like import. The terms “dollars” and “$” mean U.S. dollars. Whenever this Agreement refers to a number of days, such number shall refer to calendar days unless Business Days are specified. Whenever any action must be taken hereunder on or by a day that is not a Business Day, then such action may be validly taken on or by the next day that is a Business Day. The words “hereof”, “hereto”, “hereby”, “herein”, “hereunder” and words of similar import, when used in this Agreement, shall refer to this Agreement as a whole and not to any particular section or article in which such words appear. The phrase “the date of this Agreement”, “date hereof” and terms of similar import, unless the context otherwise requires, shall be deemed to refer to the date set forth in the preamble of this Agreement. The use of “or” is not intended to be exclusive unless expressly indicated otherwise. References to any Law shall be deemed to refer to such Law and the rules and regulations promulgated thereunder, as in effect from time to time prior to the Closing, and any successor to such Law. The exhibits and annexes to this Agreement constitute a part of this Agreement and are incorporated herein for all purposes.
SECTION 2. PURCHASE AND SALE OF ASSETS.
2.1 Purchased Assets. Seller shall (and, effective as of the Closing, does hereby) sell, assign, transfer and deliver to Buyer, and Buyer shall (and, effective as of the Closing, does hereby) purchase and accept from Seller, at the Closing, all legal and beneficial right, title and interest of Seller in and to all of the Purchased Assets, in each case, free and clear of any and all Encumbrances. “Purchased Assets” means, collectively, all properties, rights, claims, assets, records, Intellectual Property (including patents, know-how, trade secrets, and diagnostic applications and data) of Seller related to the Business. Further and not in limitation of the foregoing, Purchased Assets shall include the properties, rights, claims, assets, records and Intellectual Property set forth on Schedule A.
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2.2 Excluded Assets and Liabilities. Notwithstanding any provision in this Agreement to the contrary, Buyer is not purchasing any properties, rights, claims or assets of Seller other than the Purchased Assets and is not assuming any liability or obligation of Seller or any of its Affiliates (or any predecessor of Seller or any of its Affiliates, or any prior owner of all or part of Seller’s or its Affiliates’ businesses or assets) of whatever nature, whether absolute, accrued, contingent or otherwise, and whether presently in existence or arising hereafter. All such liabilities and obligations shall be retained by and remain obligations and liabilities of Seller or its Affiliates, as applicable (all such liabilities and obligations herein referred to as the “Excluded Liabilities”).
2.3 Transaction Consideration. The aggregate consideration to be paid by Buyer in respect of the transactions contemplated by this Agreement shall consist of (a) one million dollars ($1,000,000) (the “Base Cash Amount”), which shall be paid in the manner set forth in Section 3.2(a), (b) the issuance by Buyer of the Equity Consideration, as such term is defined in Section 3.2(c) below, which for purposes of this Agreement shall be valued at five hundred thousand dollars ($500,000) (the “Equity Amount”), and (c) Seller’s right to receive the Revenue Payments, if any, pursuant to Section 4. In addition, as part of the overall consideration for the transactions contemplated hereby, Seller shall issue the Warrant to Rashbi Capital Group, LLC, a Delaware limited liability company (the “Warrantholder”), in accordance with Section 3.2(g).
SECTION 3. CLOSING.
3.1 Closing Date. The closing of the transactions contemplated hereby (the “Closing”) shall take place at the offices of Kramer Levin Naftalis & Frankel LLP, 1177 Avenue of the Americas, New York, NY 10036, at 10:00 a.m. on the date hereof, simultaneously with the execution and delivery hereof, unless another time, date or place is agreed to in writing by the parties. The date on which the Closing occurs is referred to herein as the “Closing Date”, and the Closing will be deemed effective as of 12:01 a.m. Eastern Time on the Closing Date.
3.2 Closing Transactions. At the Closing, the following transactions shall be effected by the Parties:
(a) Buyer shall pay, by wire transfer of immediately available funds to the account(s) designated in writing by Seller prior to the Closing, an amount equal to the Base Cash Amount, less (i) the Promissory Notes Amount, and (ii) the Portland Payoff Amount.
(b) Buyer shall pay to the City of Portland (“Portland”) on behalf of Seller and in accordance with the payment instructions set forth in the payoff letter attached hereto as Exhibit 3.2(b) the aggregate amount indicated on such payoff letter as required to be paid to Portland on the Closing Date in order to fully discharge the indebtedness owing to Portland (such amount, the “Portland Payoff Amount”).
(c) Each of the Parties agrees that, effective concurrently with the payment by Buyer pursuant to Section 3.2(a), (i) that certain Convertible Promissory Demand Note, with an issuance date of May 8, 2017, issued by Seller to Buyer in the principal sum of $25,000, (ii) that certain Convertible Promissory Demand Note, with an issuance date of March 16, 2017, issued by Seller to Buyer in the principal sum of $25,000 (iii) that certain Convertible Promissory Demand Note, with an issuance date of October 2, 2017, issued by Seller to Buyer in the principal sum of $15,000 (such Convertible Promissory Demand Notes collectively, the “Promissory Notes”) shall be canceled and terminated, and any and all of the rights, obligations, covenants, agreements, representations and warranties contained therein (including any interest accrued thereon and all other rights of the holder thereunder) shall be canceled and terminated and of no further force and effect.
(d) Buyer shall issue to Seller that number of membership interests of Buyer equal to 15% of the issued and outstanding membership interests of Buyer on a fully diluted basis as of the Closing Date (assuming the conversion, exercise, or exchange for membership interests of all convertible securities issued and outstanding prior to such conversion, all outstanding warrants and options, and all other convertible debt, notes, debentures, or any other securities which are convertible, exercisable or exchangeable for membership interests (“Convertible Securities”), including for such purpose all Convertible Securities which Buyer has agreed to issue prior to such conversion (the “Equity Consideration”), for an aggregate price equal to the Equity Amount in accordance with this Agreement and that certain Amended and Restated Limited Liability Company Agreement of Buyer in the form attached hereto as Exhibit 3.2(d) (the “Preprogen Operating Agreement”).
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(e) Seller and the other equity holders named in the Preprogen Operating Agreement shall duly execute and deliver to each other the Preprogen Operating Agreement.
(f) Seller shall duly execute and deliver to Buyer each of the intellectual property assignments attached hereto as Exhibit 3.2(f) (the “IP Assignments”).
(g) Seller shall duly execute, deliver and issue to the Warrantholder, and the Warrantholder shall duly execute and deliver to Seller, the warrant in the form attached hereto as Exhibit 3.2(g) (the “Warrant”).
(h) Buyer and Seller shall duly execute and deliver to each other the license agreement in the form attached hereto as Exhibit 3.2(h) (the “License Agreement”).
3.3 Sales and Transfer Taxes. Seller shall bear solely all sales, use, excise, and other transfer taxes and duties applicable to the transfer of the Purchased Assets in connection with this Agreement and the Other Transaction Documents. Any payment or reimbursement under this Section 3.3 shall be made within ten (10) Business Days after any such valid request for payment or reimbursement.
3.4 Purchase Price Allocation. The Base Cash Amount and the Revenue Payments to be made in accordance with Section 4, if any, (the “Purchase Price”) shall be allocated among the Purchased Assets in the manner agreed upon by Seller and Buyer in good faith as promptly as practicable following the Closing in the manner required by Section 1060 of the Internal Revenue Code of 1986, as amended (the “Code”) (such resulting allocation, the “Allocation”). Seller and Buyer agree that they will adopt and utilize the amounts allocated to each of the Purchased Assets for all purposes, including all tax returns filed by them and that they will not take any position or action inconsistent therewith or on any such tax return or in any legal or administrative proceeding or otherwise. Each Party hereto agrees to prepare and timely file all applicable Internal Revenue Service and applicable state tax forms relating to the Allocation including IRS Form 8594, to reasonably cooperate with the other Party in the preparation of such forms. Each Party agrees that any Revenue Payments made in accordance with Section 4 and any indemnification payments made in accordance with Section 7 shall each be treated as adjustments to the Purchase Price. The parties agree to treat the transaction for U.S. federal, state and local income tax purposes (a) as a taxable sale and purchase to the extent of the Base Cash Amount and Revenue Payments, and (b) as a contribution of property to Buyer under Section 721(a) of the Code to the extent of the Equity Amount. No party hereto (nor any of such party’s Affiliates) shall take any position inconsistent with the foregoing tax characterizations.
3.5 Withholding. Buyer shall be entitled to deduct and withhold from any amounts payable or otherwise deliverable pursuant to this Agreement such amounts as may be required to be deducted or withheld therefrom under any provision of federal, state, local or non-U.S. Tax law or under any applicable legal requirement and to request any necessary Tax forms, including Form W-9 or the appropriate series of Form W-8, as applicable, or any similar information. To the extent such amounts are so deducted or withheld and properly remitted to the appropriate Governmental Authority, such amounts shall be treated for all purposes under this Agreement as having been paid to the Person to whom such amounts would otherwise have been paid. Buyer shall give Seller reasonable advance notice of its intention to withhold and an opportunity to avoid such withholding consistent with applicable Law.
SECTION 4. REVENUE PAYMENTS.
4.1 Revenue Payment Calculation and Payment.
(a) Calculation. In addition to the payments contemplated by Section 3.2 and subject to the conditions set forth in this Section 4, Seller shall be eligible to receive additional payments (the “Revenue Payments”) based upon Revenue, if any, in accordance with this Section 4. The amount of Revenue Payments that Seller is entitled to receive hereunder, if any, will be calculated as follows:
(i) 1.5% of aggregate Revenue, until aggregate Revenue exceeds $100,000,000;
(ii) thereafter, 1.75% of aggregate Revenue that exceeds $100,000,000, until aggregate Revenue exceeds $200,000,000; and
(iii) thereafter, 2% of aggregate Revenue that exceeds $200,000,000.
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(b) Payment. As soon as practicable, but in no event later than forty-five (45) calendar days following the end of each calendar quarter following the Closing Date, Buyer shall prepare and deliver (or shall cause to be prepared and delivered) to Seller a statement, in reasonable detail, of (i) the Revenue recognized during such calendar quarter, if any, (ii) the aggregate Revenue recognized since the Closing and (iii) the amount of the Revenue Payment (if any) earned in respect of such quarter (each, a “Revenue Statement”). If any Revenue is recognized during a calendar quarter following the Closing, then no later than forty-five (45) calendar days following the end of such calendar quarter, Buyer shall pay to Seller, by wire transfer of immediately available funds to the bank account(s) designated in writing by Seller, the Revenue Payment earned during such calendar quarter (or the pro rata amount thereof in the case of any partial calendar quarter period), as reflected on the Revenue Statement for such calendar quarter.
4.2 Disputes. If Seller shall have any disagreement with respect to any Revenue Statement or the calculation of any Revenue Payment, Seller shall have the right to dispute such Revenue Statement(s) and calculation of Revenue Payment(s), no more than once per calendar year (and such dispute shall be limited to the Revenue Statements and calculation of any Revenue Payment delivered in such calendar year), by giving written notice to Buyer. Any such notice from Seller shall specify, in reasonable detail, such disagreement and the basis therefor. The failure by Seller to notify Buyer of its disagreement within thirty (30) calendar days following the end of each calendar year will constitute Seller’s acceptance of the applicable Revenue Statement(s), the calculation(s) of the Revenue recognized (if any) set forth in such Revenue Statement(s), the calculation(s) of aggregate Revenue recognized since the Closing as set forth in such Revenue Statement(s) and the amount of the Revenue Payment(s) (if any) earned in respect of the quarter(s) with respect to which such Revenue Statement(s) relate, and the foregoing shall be deemed final and binding on the Parties. Any item contained in a Revenue Statement(s) for which Seller has not notified Buyer of a dispute within such thirty (30) calendar day period shall be deemed final and binding on the Parties. If Buyer and Seller are unable to resolve any disagreement between them within thirty (30) calendar days after Seller’s giving of notice of such disagreement, or such longer period as Buyer and Seller may mutually agree, the items in dispute (collectively, the “Disputed Items”) will promptly be referred for determination and resolution to a nationally-recognized accounting firm mutually agreed by Buyer and Seller (the “Independent Expert”). Buyer and Seller shall each make written submissions to the Independent Expert promptly (and in any event within ten (10) calendar days of the Independent Expert’s engagement), which submissions shall contain such party’s computation of the Disputed Items and information, arguments, and support for such party’s position as such party may elect to offer. The Independent Expert shall be instructed to, within thirty (30) calendar days of the date on which a Disputed Item has been referred to it for determination, (i) make a written determination (such determination to include a worksheet setting forth all material calculations used in arriving at such determination and to be based solely on information provided to the Independent Expert by Buyer and Seller) only as to each of the Disputed Items and shall have no authority to review and make a determination with respect to any item which has not been submitted by Seller and Buyer for determination by the Independent Expert, and (ii) based on the items not in dispute and on the Independent Expert’s determination of the Disputed Items, calculate the applicable Final Revenue Statement for the applicable calendar quarter(s) and the Revenue Payment(s) earned (if any) during such calendar quarter(s), which determination and calculation will be (x) in writing, (y) promptly furnished to Seller and Buyer after the Disputed Items have been referred to the Independent Expert (but in any event, to the extent possible, within thirty (30) calendar days) and (z) conclusive and binding upon each of the parties hereto and not subject to appeal absent fraud or manifest error. In resolving any Disputed Item, the Independent Expert may not assign a value to any item greater than the highest value for such item claimed by either party or less than the lowest value for such item claimed by either party. Any applicable Revenue Statement, (A) as agreed upon by Buyer and Seller following Seller’s delivery of a notice of disagreement, or (B) as finally determined by the Independent Expert pursuant to this Section 4.2, shall be referred to herein as a “Final Revenue Statement”. In connection with its determination of the Disputed Items, the Independent Expert will be entitled to review the workpapers, trial balances and similar materials and any books and records related thereto. The fees and expenses of the Independent Expert will be paid by Buyer and Seller in inverse proportion as they may prevail (based on the disputed items as resolved by the Independent Expert as compared to the disputed items proposed by Buyer and Seller) as determined by the Independent Expert. If the amount of the Revenue Payment earned with respect to any calendar quarter as set forth in the Final Revenue Statement for such calendar quarter exceeds the amount previously paid by Buyer with respect to such calendar quarter in accordance with Section 4.1, Buyer shall pay such excess to Seller within five (5) Business Days after the determination of the Final Revenue Statement for such calendar quarter in accordance with this Section 4.2.
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4.3 Post-Closing Operation of the Purchased Assets. Subsequent to the Closing, Buyer shall have sole discretion with regard to all matters relating to the operation of the Purchased Assets, it being understood and agreed that Buyer has no obligation to operate the Purchased Assets in order to achieve any Revenue or Revenue Payment or to maximize the amount of the Revenue Payments; provided, that Buyer shall comply with the covenant of good faith and fair dealing implicit in this Agreement. For the avoidance of doubt, it is understood and agreed that (a) the contingent rights to receive any Revenue Payments shall not be represented by any form of certificate or other instrument, are not transferable without the prior written consent of Buyer, and do not constitute an equity or ownership interest in Buyer or any Affiliate thereof, (b) Seller shall not have any rights as a securityholder of Buyer or any of its Affiliates as a result of contingent right to receive any Revenue Payments hereunder, (c) no interest is payable with respect to any Revenue Payments, and (d) neither Buyer, nor any of its Affiliates shall owe any fiduciary duty to Seller as though it were an equity holder of Buyer or any of its Affiliates or otherwise as a result of the contingent right to receive any Revenue Payments hereunder.
4.4 Setoff Right. Any payment due by Buyer to Seller pursuant to this Section 4 shall be permitted to be set off against any payment owed by Seller under Section 7.1.
SECTION 5. REPRESENTATIONS AND WARRANTIES.
5.1 Seller Representations and Warranties. Subject to such exceptions as are specifically set forth in the appropriate section or subsection of the disclosure schedule delivered by Seller to Buyer on the date hereof (the “Seller Disclosure Schedule”) or in any other section or subsection of the Seller Disclosure Schedule if and to the extent that the relevance of such disclosure to such other section or subsection is reasonably apparent on the face of such disclosure without reference to the documents referenced therein, Seller hereby represents and warrants to Buyer and the Warrantholder as follows:
(a) Organization. Seller is a corporation duly created and organized, and validly existing under the laws of its jurisdiction of creation, and has full power and authority to own or use the properties and assets that it purports to own or use, and to sell, encumber, distribute, exchange or in any other way dispose of such assets. Seller is legally qualified to transact business, and, to its knowledge, there are no claims or allegations by any Person contesting or questioning the authority of Seller to conduct such business.
(b) Authorization. Seller has full corporate power and authority to execute, deliver and perform this Agreement and each Other Transaction Document to which it is a party and to consummate the transactions contemplated by this Agreement and the Other Transaction Documents. The execution, delivery and performance by Seller of this Agreement and the Other Transaction Documents to which it is a party, and the consummation of the transactions contemplated by this Agreement and the Other Transaction Documents, have been duly authorized by all necessary corporate action of Seller. This Agreement and each Other Transaction Document to which Seller is a party have been duly executed and delivered by Seller and constitute or will constitute a valid and legally binding obligation of Seller enforceable against Seller in accordance with its terms, except that such enforceability may be limited by (i) applicable bankruptcy, insolvency, reorganization, moratorium, and similar laws affecting creditors’ rights generally, (ii) equitable principles which may limit the availability of certain equitable remedies (such as specific performance) in certain instances, and (iii) public policy considerations with respect to the enforceability of rights of indemnification.
(c) No Conflicts. The execution, delivery and performance by Seller of this Agreement and the Other Transaction Documents to it is a party and the consummation of the transactions contemplated by this Agreement and the Other Transaction Documents do not and will not (i) conflict with or result in a violation of any provision of the certificates of incorporation, bylaws or other organizational documents of Seller, (ii) conflict with or result in a violation of any provision of, or constitute (with or without the giving of notice or the passage of time or both) a default under, any bond, debenture, note, mortgage, indenture, lease, agreement, or other instrument or obligation to which it is a party or by which Seller or any of its properties may be bound, (iii) result in the creation or imposition of any Encumbrance upon any of the Purchased Assets, or (iv) violate any Law binding upon Seller.
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(d) No Consents. No consent, approval, order or authorization of, or declaration, filing or registration with, any Governmental Authority or any other Person is required to be obtained or made by Seller in connection with the execution, delivery or performance by Seller of this Agreement or any Other Transaction Document to which it is a party or the consummation of the transactions contemplated by this Agreement and the Other Transaction Documents. The representations and warranties of Seller contained in this Section 5.1, insofar as such representations and warranties pertain to compliance by Seller with the requirements of applicable state or federal securities Laws with respect to the issuance of the Warrant and Warrant Shares, are based on the representations and warranties of Buyer contained in Section 5.2(d).
(e) No Impairments. There is (i) no order, action, suit, demand or claim in writing or legal, administrative, arbitration or other alternative dispute resolution proceeding, hearing, inquiry or investigation before or by any Governmental Authority or arbitrator or official now pending or, to the knowledge of Seller, threatened, to which Seller is or may be a party or to which the business, property or assets of Seller is or may be subject, (ii) no statute, rule, regulation or order that has been enacted, adopted or issued by any Governmental Authority or, to the knowledge of Seller, that has been proposed by any Governmental Authority and (iii) no injunction, restraining order or order of any nature issued by a Governmental Authority of competent jurisdiction to which Seller is or, or to the knowledge of Seller, may be subject, that, in the case of clauses (i), (ii) and (iii) above, is reasonably expected to (A) prevent or result in the suspension of the issuance of the Warrant or Warrant Shares or (B) otherwise affect adversely the ability of Seller to consummate the transactions contemplated by this Agreement and the Other Transaction Documents.
(f) Title to Purchased Assets; Sufficiency. Seller has good, valid, marketable and exclusive title in and to each of the Purchased Assets owned by Seller free and clear of all Encumbrances. Upon consummation of the transactions contemplated by this Agreement, Buyer will have acquired good, valid, marketable and exclusive title in and to each of the Purchased Assets, free and clear of all Encumbrances. The Purchased Assets include all of the Intellectual Property that is used or held for use in the Business.
(g) Intellectual Property.
(i) General.
(A) Schedule 5.1(g)(i)(A) lists (i) all issued Patents included in the Purchased Assets, and all pending applications for Patents included in the Purchased Assets; (ii) all registered Trademarks included in the Purchased Assets, and all pending applications for Trademarks included in the Purchased Assets; (iii) all registered Copyrights included in the Purchased Assets, and all pending applications for Copyrights included in the Purchased Assets; and (iv) all Domain Names included in the Purchased Assets; in each case of (i), (ii), (iii) and (iv) above, owned by or purported to be owned by Seller (“Registered IP”; the Registered IP, together with all other Intellectual Property, including Know How, Trade Secrets and Software, owned by or purported to be owned by Seller that is included in the Purchased Assets, collectively, the “Owned IP”). Schedule 5.1(g)(i)(A) also lists all material unregistered or common law Trademarks included in the Purchased Assets. For the Registered IP, Schedule 5.1(g)(i)(A) lists, as applicable, the Patent title, Trademark or Domain Name, the Patent number registration number or application number, date of application, registration or issuance, record owner, original applicant, registrar or country, and current status or next action due.
(B) The Owned IP does not include, and Seller does not own or purport to own, any Software.
(C) There are no licenses, sublicenses, agreements (development, distribution or otherwise) or other instruments involving the Owned IP, and Seller is not a party to any license, sublicense, agreement (development, distribution or otherwise) or other instrument involving any Intellectual Property of any Person.
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(D) All officers, employees and contractors of Seller who have authored, invented or otherwise developed Owned IP, have executed an agreement under which all rights, title and ownership in and to such Intellectual Property have been assigned to Seller.
(E) Seller has not infringed upon, misappropriated or otherwise violated, and no Owned IP has or will, infringe upon, misappropriate or otherwise violate, any Intellectual Property or other proprietary right of any Person. There are no pending, nor to the Knowledge of Seller, threatened claims, proceedings or actions contesting or challenging the Owned IP. To the Knowledge of Seller, no Person, including any current or former employee or contractor of Seller, is infringing upon, misappropriating, or otherwise violating Seller’s rights to the Owned IP.
(F) The Owned IP is free and clear of any and all Liens.
(ii) Patents.
(A) All of the issued Patents and pending applications for Patents that are Owned IP are currently in compliance with all legal requirements for maintaining pendency of patents (including payment of filing, examination, and maintenance fees), and are not subject to any maintenance fees or taxes or actions falling due within ninety (90) days after the Closing Date.
(B) No Patent that is Owned IP has been or is now involved in any infringement, interference, reissue or reexamination Proceeding and, to the Knowledge of Seller, no such action is threatened with respect to any such Patents.
(C) Seller, the inventors and the attorneys of record, have each complied with the United States Patent and Trademark Office (“PTO”) and any other country’s or jurisdiction’s office duty of candor and good faith in dealing, including the duty to disclose to the PTO (or such other office) all information known to be material to the patentability of each of the Patents that is Owned IP. To the Knowledge of Seller, Seller has all necessary documentation underlying the specifications or claims in the Patents included in the Purchased Assets and all claims thereunder.
(D) All assignments from all inventors and any subsequent assignee to, as the case may be, Seller, or to a predecessor-in-interest to Seller, have been executed and either recorded with the PTO (or other applicable registration authority), or submitted to the PTO (or such authorities) for the Patents that are Owned IP, such that the records of the PTO (and the applicable authority) reflect that Seller is the current owner of record of each such Patent. Copies of all Patents, recorded assignments and all maintenance fee records for each such Patent (including each application) have been made available to Buyer.
(E) No product manufactured or sold by Seller, nor any Patent of Seller is alleged to infringe any patent or product of any Person, and to the Knowledge of Seller, no Patent of, or product manufactured or sold by, Seller is infringed.
(F) All products sold under the Patents included in the Purchased Assets have been marked with the proper patent notice.
(iii) Trademarks.
(A) All registered Trademarks included in the Purchased Assets, and pending applications for Trademarks included in the Purchased Assets with the PTO or any other country’s trademark office, of Seller is currently in compliance with all legal requirements (including the filing of affidavits of use and renewal applications as applicable), and are not subject to any maintenance fees or taxes or actions falling due within ninety (90) days after the Closing Date.
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(B) No Trademark of Seller included in the Purchased Assets has been or is now involved in any opposition, infringement, dilution, unfair competition or cancellation Proceeding and, to the Knowledge of Seller, no such action is threatened with respect to any of the Trademarks included in the Purchased Assets of Seller.
(C) No Trademark included in the Purchased Assets of Seller is alleged to infringe Trademark of any Person, and to the Knowledge of Seller, no Trademark of Seller included in the Purchased Assets is infringed.
(D) All products displaying a Trademark of Seller included in the Purchased Assets which has been registered with the PTO, bear the proper federal registration notice.
(iv) Copyrights. Seller does not own or purport to own any registered Copyrights or pending applications for Copyrights.
(v) Domain Names.
(A) All registered Domain Names of Seller included in the Purchased Assets are currently in compliance with all legal requirements and are not subject to any maintenance fees or taxes or action falling due within ninety (90) days after the Closing Date.
(B) No Domain Name of Seller included in the Purchased Assets has been or is now the subject of any dispute resolution or infringement Proceeding and, to the Knowledge of Seller, no such action is threatened with respect to any Domain Name of Seller included in the Purchased Assets.
(C) No Domain Name of Seller included in the Purchased Assets is alleged to infringe the Trademark or the Domain Name of any other Person, and to the Knowledge of Seller, no Domain Name of Seller included in the Purchased Assets is infringed.
(D) Seller has taken commercially reasonable steps to protect the proprietary nature of the Owned IP and to maintain in confidence all Trade Secrets and confidential Intellectual Property and information owned or used by Seller. To the Knowledge of Seller, no Trade Secret or other confidential Owned IP has been disclosed or authorized to be disclosed to any Person, including any employee, agent, contractor, or other entity, other than pursuant to a non-disclosure agreement or other conditional obligation that protects Seller’s proprietary interests in and to such Trade Secrets or confidential Intellectual Property or information. All such agreements, if any, have been made available to Buyer.
(h) Warrant. Without limiting the other representations and warranties contained in this Section 5.1: (i) Seller has all requisite corporate power and authority to issue and sell the Warrant and, upon exercise of the Warrant, to issue the securities issuable upon exercise of the Warrant (the “Warrant Shares”); and (ii) the issuance and sale of the Warrant, the reservation of the Warrant Shares issuable upon exercise of the Warrant and, upon exercise of the Warrant, the issuance of the Warrant Shares, have been duly exercised by all necessary corporate action on the part of Seller. Assuming the accuracy of the representations and warranties of Warrantholder contained in the Warrant, the offer, sale and issuance of the Warrant and the Warrant Shares will be exempt from the registration requirements of the Securities Act of 1933, as amended (the “Securities Act”) and any other applicable Laws. Schedule 5.1(h) sets forth any (x) shares of capital stock or other equity, ownership or voting interests of the Seller, (y) securities or instruments convertible into or exchangeable for shares of capital stock or other equity, ownership or voting interests of the Seller, and (z) equity-equivalents, earnings, profits or revenue-based or equity-based rights of the Seller, in each case of (x) through (y) above, issued and outstanding as of the date hereof. Except as set forth on Schedule 5.1(h), the Seller has not issued or agreed to issue any (x) shares of capital stock or other equity, ownership or voting interests, (y) securities or instruments convertible into or exchangeable for shares of capital stock or other equity, ownership or voting interests, or (z) equity-equivalents, earnings, profits or revenue-based or equity-based rights.
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(i) Equity Consideration. The Equity Consideration is being acquired for Seller’s own investment portfolio and account (and not on behalf of, and without the participation of, any other Person) with the intent of holding such Equity Consideration for investment and without the intent of participating, directly or indirectly, in a distribution of any portion of the Equity Consideration and not with a view to, or for resale in connection with, any distribution of any portion of the Equity Consideration, nor is Seller aware of the existence of any distribution of Buyer’s securities. Seller acknowledges that Equity Consideration was not offered to Seller by means of publicly disseminated advertisements of sales literature, nor is Seller aware of any offers made to other Persons by such means. Seller is an “accredited investor” (as defined in Rule 501 promulgated under the Securities Act) and is knowledgeable and experienced in finance, securities and investments and has had sufficient experience analyzing and investing in securities similar to the Equity Consideration so as to be capable of evaluating the merits and risks of an investment in the Equity Consideration. Seller is able to bear the economic risk of an investment in the Equity Consideration. Seller has had an opportunity to discuss Buyer’s business, management, financial affairs and the terms and conditions of the issuance of the Equity Consideration with Buyer. Seller understands that no portion of the Equity Consideration will have been registered pursuant to the Securities Act or any applicable state securities laws, that the Equity Consideration will be characterized as “restricted securities” under federal securities laws, and that under such laws and applicable regulations no portion of the Equity Consideration can be sold or otherwise disposed of without registration under the Securities Act or an exemption therefrom. In this connection, Seller represents that it is familiar with Rule 144 promulgated under the Securities Act, as currently in effect, and understands the resale limitations imposed thereby and by the Securities Act. Seller understands that no public market now exists for the Equity Consideration, and that Seller has made no assurances that a public market will ever exist for the Equity Consideration. A legend indicating that Equity Consideration has not been registered under applicable federal and state securities laws and referring to the restrictions on transferability and sale of Equity Consideration pursuant to this Agreement, the Preprogen Operating Agreement or otherwise may be placed on any certificate(s) or other document delivered to Seller or any substitute therefor and any transfer agent of Buyer may be instructed to require compliance therewith. Seller understands that the Equity Consideration acquired by it shall, upon issuance by Buyer, without any further action on the part of Buyer or such Person, be subject to the terms of Preprogen Operating Agreement, including restrictions on transfer of the Equity Consideration contained therein.
(j) Tax. Seller represents that none of the Purchased Assets are “section 197(f)(9) intangible” as defined in section 1.197-2(h) of the Treasury Regulations promulgated under the Code.
(k) No Brokers. Seller has not paid or become obligated to pay any fee or commission to any broker, finder or intermediary in connection with the transactions contemplated by this Agreement and the Other Transaction Documents for which Buyer shall have any liability.
(l) No Commercialization. Seller has not in any way commercialized or engaged in any business activities with third parties with respect to the Purchased Assets that relate to the Business other than the internal development of the Owned IP that relates primarily to the Business.
5.2 Buyer Representations and Warranties. Buyer hereby represents and warrants to Seller on the date hereof as follows:
(a) Organization. Buyer is a limited liability company duly created and organized, and validly existing under the laws of its jurisdiction of creation, and has full power and authority to own or use the properties and assets that it purports to own or use, and to sell, encumber, distribute, exchange or in any other way dispose of such assets. Buyer is legally qualified to transact business, and, to its knowledge, there are no claims or allegations by any person or entity contesting or questioning the authority of Buyer to conduct such business.
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(b) Authorization. Buyer has full limited liability company power and authority to execute, deliver and perform this Agreement and each Other Transaction Document to which it is a party and to consummate the transactions contemplated by this Agreement and the Other Transaction Documents. The execution, delivery and performance by Buyer of this Agreement and the Other Transaction Documents to which it is a party, and the consummation of the transactions contemplated by this Agreement and the Other Transaction Documents, have been duly authorized by all necessary limited liability company action of Buyer. This Agreement and each Other Transaction Document to which Buyer is a party have been or will be duly executed and delivered by Buyer, and constitute or will constitute a valid and legally binding obligation of Buyer, enforceable against Buyer in accordance with its terms, except that such enforceability may be limited by (i) applicable bankruptcy, insolvency, reorganization, moratorium, and similar laws affecting creditors’ rights generally, (ii) equitable principles which may limit the availability of certain equitable remedies (such as specific performance) in certain instances, and (iii) public policy considerations with respect to the enforceability of rights of indemnification.
(c) No Impairments. There are no orders, actions, suits, demands or claims in writing or legal, administrative, arbitration or other alternative dispute resolution proceedings, hearings, inquiries or investigations pending against Buyer or, to Buyer’s knowledge, threatened, which are reasonably likely to call into question the validity of this Agreement, any Other Transaction Document, any portion of the Equity Consideration, or any action taken or to be taken pursuant hereto or thereto.
(d) Equity Consideration. Without limiting the other representations and warranties contained in this Section 5.2: (i) Buyer has all requisite limited liability company power and authority to issue and sell the Equity Consideration; (ii) the issuance and sale of Equity Consideration has been duly authorized by all necessary limited liability company action on the part of Buyer; and (iii) assuming the accuracy of the representations and warranties of Seller contained in Section 5.1(i), the offer, sale and issuance of the Equity Consideration will be exempt from the registration requirements of the Securities Act and any other applicable Laws. Buyer has been formed for the purposes of entering into the transactions contemplated by this Agreement and, except as set forth on Schedule 5.2(d), Buyer has no material assets or liabilities.
(e) No Brokers. Buyer has not paid or become obligated to pay any fee or commission to any broker, finder or intermediary in connection with the transactions contemplated by this Agreement and the Other Transaction Documents for which Seller shall have liability.
5.3 No Other Representations.
(a) Except as set forth in Section 5.2 or in the Preprogen Operating Agreement, and other than in the case of fraud or willful misconduct and subject to the terms of this Agreement and the Preprogen Operating Agreement, the Equity Consideration is provided “as-is” without warranty of any kind, express or implied, and Seller acknowledges that neither Buyer nor any other Person has made any representation or warranty, expressed or implied, as to Buyer, the Equity Consideration, the accuracy or completeness of any information regarding Buyer, its business, properties, assets or operations furnished or made available to Seller and its representatives, or any other matter related to the transactions contemplated herein and that Seller is relying only on the representations and warranties set forth in Section 5.2 and in the Preprogen Operating Agreement.
(b) Except as set forth in Section 5.1 or in any Other Transaction Document, and other than in the case of fraud or willful misconduct and subject to the terms of this Agreement and the Other Transaction Documents, the Purchased Assets and the Warrant are provided “as-is” without warranty of any kind, express or implied, and Buyer acknowledges that neither Seller nor any other Person has made any representation or warranty, expressed or implied, as to Seller, the Warrant, the Warrant Shares, the accuracy or completeness of any information regarding Seller, its business, properties, assets or operations furnished or made available to Buyer and its representatives, or any other matter related to the transactions contemplated herein and Buyer is relying only on the representations and warranties set forth in Section 5.1 and in the Other Transaction Documents.
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SECTION 6. COVENANTS.
6.1 Further Assurances. From time to time after the Closing, without further consideration, Seller and Buyer will execute and deliver such documents and take such additional action as Buyer may reasonably request in order to more effectively consummate or evidence the sale and purchase of the Purchased Assets and to more effectively vest in Buyer good and marketable title to such ownership interest or to more effectively consummate or evidence the consummation of the transactions contemplated hereby and the Other Transaction Documents. Without limiting the foregoing, in the event that any Purchased Assets or any other properties, rights, claims, assets, records, Intellectual Property (including patents, know-how, trade secrets, and diagnostic applications and data) related to or necessary to pursue the Business are held by Affiliates of Seller (including QX Labs, Inc.), then from time to time after the Closing, without further consideration, Seller will execute and deliver such documents and take such additional actions as Buyer may reasonably request in order to transfer to Buyer (or evidence the transfer to Buyer of, or vest good and marketable title in Buyer to the ownership of) such Purchased Assets and other properties, rights, claims, assets, records and Intellectual Property.
6.2 Use of Trade Names and Trademarks.
(a) From and after the Closing, Seller shall not, and Seller shall cause its Affiliates, successors, assigns not to, use any of the trade names and trademarks that are included in the Purchased Assets.
(b) As soon as reasonably practicable (and, in any event, prior to the end of the first month after the Closing), Seller shall, and Seller shall cause its Affiliates successors, and assigns to, cease use of any materials, including signage, labels, packing materials, forms, business cards, letterhead, and paper or electronic advertising and marketing materials, in each case which include any of the trade names and trademarks that are included in the Purchased Assets (or any terms confusingly similar thereto).
6.3 Funding for Manufacturer. Promptly after the Closing, Buyer shall use commercially reasonable efforts to enter into a manufacturing agreement, with a manufacturer reasonably acceptable to Seller, for the development of the initial manufacturing protocols and production processes for the ultimate manufacture of the miniform pads necessary for the respective products to be marketed and sold by Buyer, on the one hand, and Seller, on the other hand, as applicable. It is anticipated that the aggregate fees, costs and expenses to be incurred to purchase the necessary equipment, materials and tools relating thereto will be approximately $1,000,000. Buyer and Seller shall each be responsible for fifty percent (50%) of such fees, costs and expenses incurred in connection with such manufacturing agreement until the aggregate amount of such fees, costs and expenses equals $800,000 (such fees, costs and expenses, the “Shared Fees, Costs and Expenses”), and Buyer shall be responsible for any such fees, costs and expenses in excess thereof. Seller shall reasonably cooperate and assist Buyer in pursuing, negotiating and performing such manufacturing agreement. The Parties shall cooperate in good faith to more formally document the actions and agreements contemplated by this Section 6.3. Following completion of the development of such initial manufacturing protocols and production processes, the Parties shall discuss in good faith the entry into separate agreements with such manufacturer between (i) such manufacturer and Buyer and (ii) such manufacture and Seller. In connection with the foregoing, at Closing, Seller shall deposit $400,000 in a separate escrow account to be established, and following the Closing, Buyer and Seller will provide appropriate joint instructions to the escrow agent from time to time to release funds from escrow to cover the Shared Fees, Costs and Expenses described above for which Seller is responsible. In the event funds remain in escrow as of the first anniversary of the Closing Date, provided Seller has not breached any of its obligations under this Section 6.3, then Buyer and Seller shall joinly instruct the escrow agent to release any remaining funds in escrow to Seller, it being understood and agreed, however, that such release of funds to Seller shall not relieve Seller of its obligations under this Section 6.3.
6.4 Restrictive Covenants.
(a) Certain Acknowledgements. Buyer and Seller acknowledge that in order to assure Buyer that it will retain the value, including the goodwill, of the Business as a “going concern,” Buyer has required that the covenants and agreements contained in this Section 6.4 be delivered in this Agreement, and Seller, as a condition to Buyer’s willingness to enter into the transactions contemplated by this Agreement, has agreed to do so. Each of Buyer and Seller acknowledges and agrees that it is fair, reasonable and necessary, for the protection of the value of the Business and the operations, prestige, reputation and goodwill of the Business and of the purchase thereof by Buyer hereunder, that Buyer and Seller make the agreements and covenants contained in this Agreement.
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(b) Non-Competition. For a period (the “Restricted Period”) commencing on the Closing Date and ending on the date that is five (5) years following the Closing Date, Seller shall not, directly or indirectly compete with the Business or as an individual proprietor, partner, shareholder, member, equityholder, officer, manager, director, employee, consultant, independent contractor, joint venturer, investor or lender, participate in any business or enterprise engaged anywhere in the United States in the provision of any services that are the same as, substantially similar to or competitive with the services that the Business was designing, developing, selling or providing, or actively planning to sell or provide, as of the Closing Date (each, a “Competing Business”); provided, however, nothing contained herein shall prohibit the Seller from developing, operating or managing the Excluded Business. The foregoing restrictions shall not be construed to prohibit the ownership by Seller of not more than one percent (1%) of any class of equity securities of any Person having a class of equity securities registered pursuant to the Securities Exchange Act of 1934, as amended, and the rules and regulations promulgated thereunder that are publicly owned and regularly traded on any national securities exchange or over-the-counter market, if such ownership represents a personal investment and Seller does not, directly or indirectly, in any way, manage or exercise control of any such Person, guarantee any of its financial obligations or otherwise take part in its business, other than exercising Seller’s rights as a holder of such equity securities.
(c) Non-Disparagement. Seller agrees that it shall not: (i) disparage, defame or slander the Business or Buyer, its Affiliates or any of their employees or take any action that is intended to detrimentally affect the reputation, image, relationships or public view of the Business or Buyer, its Affiliates or any of their employees; or (ii) attempt to do any of the foregoing, or assist, entice, induce or encourage any other Person to do or attempt to do any activity that, were it done by Seller, would violate any provision of this Section 6.4(c).
(d) Non-Hire and Non-Solicitation of Employees and Consultants. Seller agrees that it shall not, during the Restricted Period, directly or indirectly, solicit Dr. Shalom Hirschman, hire Dr. Shalom Hirschman or in any manner encourage Dr. Shalom Hirschman to terminate his relationship with the Business. The Parties agree and acknowledge that nothing contained herein shall prevent Dr. Shalom Hirschman from serving as a director of Seller, provided he does not serve as an executive or employee of Seller or its Affiliates.
(e) Other Documents. The provisions of this Section 6.4 are in addition to, and not in limitation of, Seller’s obligations and agreements set forth in the other agreements contemplated by this Agreement.
6.5 Registration Rights.
(a) Piggyback Registration Rights. If at any time following the date of this Agreement Seller proposes for any reason to register any shares of its common stock under the Securities Act of 1933, as amended (the “Securities Act”) (other than pursuant to a registration statement on Form S-4 or Form S-8 (or a similar or successor form)) with respect to an offering of common stock by Seller for its own account or for the account of any of its stockholders, it shall at each such time promptly give written notice to the Warrantholder of its intention to do so (but in no event less than thirty (30) days before the anticipated filing date) and include in such registration all Warrant Shares with respect to which Seller has received written requests for inclusion therein within fifteen (15) days after receipt of Seller’s notice. Such notice shall offer the Warrantholder the opportunity to register such number of Warrant Shares as the Warrantholder may request.
(b) Demand Registration Rights. If, at any time when it is not eligible to use a Form S-3 registration statement, the Company receives a request from the Warrantholder that the Company file a Form S-1 registration statement with respect to the Warrant Shares, then the Company shall as soon as practicable, and in any event within sixty (60) days after the date such request is given by the Warrantholder, file a Form S-1 registration statement under the Securities Act covering all Warrant Shares that the Warrantholder requested to be registered. If, at any time when it is eligible to use a Form S-3 registration statement, the Company receives a request from the Warrantholder that the Company file a Form S-3 registration statement with respect to the Warrant Shares, then the Company shall as soon as practicable, and in any event within forty-five (45) days after the date such request is given by the Warrantholder, file a Form S-3 registration statement under the Securities Act covering all Warrant Shares requested to be included in such registration by the Warrantholder.
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(c) Assignment. Notwithstanding anything to the contrary contained herein, the Warrantholder shall be permitted to transfer and assign its rights under this Section 6.5 to any Person to which all or a portion of the Warrant or the Warrant Shares are transferred, and any Person to which the rights under this Section 6.5 are transferred and assigned shall be permitted to subsequently transfer and assign its rights under this Section 6.5 to any Person to which all or a portion of the Warrant or the Warrant Shares are subsequently transferred.
SECTION 7. INDEMNIFICATION.
7.1 Indemnification by Seller. Seller will indemnify and hold harmless Buyer, its Affiliates (including the Warrantholder), and each of their respective directors, officers, managers, partners, members, stockholders, equity holders, employees, agents and representatives (collectively, the “Buyer Indemnified Parties”) for, and will pay to the Buyer Indemnified Parties the amount of, any loss, liability, claim, damage or expense (including costs of investigation and defense and reasonable attorneys’ fees) or diminution of value (collectively, “Losses”), whether or not involving a third-party claim, arising out of or relating to:
(a) any breach of any representation or warranty made by Seller in this Agreement or any Other Transaction Document;
(b) any breach by Seller of any covenant or obligation of Seller in this Agreement or any Other Transaction Document;
(c) any Excluded Liability;
(d) without limiting Section 5.1(f), Section 5.1(g) or any other provision of this Agreement, any Encumbrance claimed by Platinum Long Term Growth VII LLC or any of its Affiliates or any of their respective successors or assigns on any of the Purchased Assets; or
(e) without limiting Section 5.1(f), Section 5.1(g) or any other provision of this Agreement, that certain assignment dated as of February 8, 2006, by William H. Fleming in favor of “QuantRx Medical Corporation, a corporation organized under the laws of the State or Oregon” with respect to U.S. Patent No. 6,811,549 and the failure of such assignment to properly name the Seller as the assignee;
Notwithstanding the foregoing, no claim for indemnification under Section 7.1(a) may be made by Buyer on behalf of the Buyer Indemnified Parties, and no payment in respect of such a claim for indemnification shall be required from Seller for any such claim until the aggregate amount of Losses which the Buyer Indemnified Parties have incurred on a cumulative basis exceeds fifty thousand thousand United States dollars ($50,000) (the “Deductible”), after which the Buyer Indemnified Parties shall be indemnified for all such Losses in excess of the Deductible; provided that the Deductible shall not apply, and the Buyer Indemnified Parties shall be entitled to indemnification without regard to satisfaction of the Deductible, in the event of fraud or with respect to, claims for breach of any Fundamental Representation. For the avoidance of doubt, the Deductible shall apply only once in respect of all claims for indemnification under Section 7.1(a) (except, in each case, in the event of fraud or with respect to claims for breach of any Fundamental Representation) by the Buyer Indemnified Parties.
7.2 Indemnification by Buyer. Buyer will indemnify and hold harmless Seller, its Affiliates, and each of their respective directors, officers, managers, partners, members, stockholders, equity holders, employees, agents and representatives (collectively, the “Seller Indemnified Parties”) for, and will pay to the Seller Indemnified Parties the amount of, any Losses, whether or not involving a third-party claim, arising out of or relating to:
(a) any breach of any representation or warranty made by Buyer in this Agreement or any Other Transaction Document; or
(b) any breach by Buyer of any covenant or obligation of Buyer in this Agreement or any Other Transaction Document.
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7.3 Procedure for Indemnification.
(a) The party seeking indemnification (the “Indemnified Party”) shall give prompt notice (“Notice of Claim”) to the party against whom indemnification is sought (the “Indemnifying Party”) of the assertion of any claim, or the commencement of any suit, action or proceeding in which indemnification may be sought under this Section 7 (a “Proceeding”), providing in reasonable detail the facts giving rise to the claim, the amount sought, the basis for the claim and supporting documentation and stating the basis for the indemnification sought (in each case taking into account the information then available to such Indemnified Party).
(b) Promptly after receipt by the Indemnified Party of notice of the commencement of any Proceeding against it, such Indemnified Party will give written notice to the Indemnifying Party of the commencement of such claim, together with all available information regarding the same, but the failure to notify the Indemnifying Party will not relieve the Indemnifying Party of any liability that it may have to any Indemnified Party, except to the extent that the Indemnifying Party demonstrates that the defense of such action is prejudiced by the Indemnifying Party’s failure to give such notice.
(c) If any Proceeding is brought against an Indemnified Party and it gives notice to the Indemnifying Party of the commencement of such Proceeding, the Indemnifying Party will be entitled to participate in such Proceeding and, to the extent that it wishes (unless (A) the Indemnifying Party is also a party to such Proceeding and legal counsel for the Indemnified Party determines in good faith that a bona fide conflict of interest would result in the case of joint representation, or (B) the Indemnifying Party fails to provide reasonable assurance to the Indemnified Party of its financial capacity to defend such Proceeding and provide indemnification with respect to such Proceeding), to assume the defense of such Proceeding with counsel reasonably satisfactory to the Indemnified Party and, after notice from the Indemnifying Party to the Indemnified Party of its election to assume the defense of such Proceeding, the Indemnifying Party will not, as long as it diligently conducts such defense, be liable to the Indemnified Party under this Section 7 for any fees of other counsel or any other expenses with respect to the defense of such Proceeding, in each case subsequently incurred by the Indemnified Party in connection with the defense of such Proceeding, other than reasonable costs of investigation. If the Indemnifying Party assumes the defense of a Proceeding, (x) it will be conclusively established for purposes of this Agreement that the claims made in that Proceeding are within the scope of and subject to indemnification; (y) no compromise or settlement of such claims may be effected by the Indemnifying Party without the Indemnified Party’s consent, such consent not to be unreasonably withheld, conditioned or delayed; and (z) the Indemnified Party will have no liability with respect to any compromise or settlement of such claims effected without its consent, such consent not to be unreasonably withheld, conditioned or delayed. If notice is given to an Indemnifying Party of the commencement of any Proceeding and the Indemnifying Party does not, within ten (10) Business Days after the Indemnified Party’s notice is given, give notice to the Indemnified Party of its election to assume the defense of such Proceeding, the Indemnifying Party will be bound by any determination made in such Proceeding or any compromise or settlement effected by the Indemnified Party.
(d) Notwithstanding the foregoing, if an Indemnified Party determines in good faith that there is a reasonable probability that a Proceeding may adversely affect it other than as a result of monetary damages for which it would be entitled to indemnification under this Agreement, the Indemnified Party may, by notice to the Indemnifying Party, assume the exclusive right to defend, compromise, or settle such Proceeding, but the Indemnifying Party will not be bound by any determination of a Proceeding so defended or any compromise or settlement effected without its consent (which may not be unreasonably withheld, conditioned or delayed).
(e) A claim for indemnification for any matter not involving a third-party claim may be asserted by notice to the party from whom indemnification is sought.
(f) If the Indemnifying Party disputes all or any portion of the Notice of Claim, the Indemnifying Party must provide written notice (a “Disagreement Notice”) of its objection (detailing the objection) to the Indemnified Party within ten (10) Business Days after the receipt of the notice from the Indemnified Party. Failure by the Indemnifying Party to give such Disagreement Notice shall be deemed acknowledgment and agreement by the Indemnifying Party that the Indemnifying Party is liable for that portion of the claim as to which no objection is made. If a Disagreement Notice is provided by the Indemnifying Party to the Indemnified Party within the time required, for a ten (10) day period thereafter the Indemnified Party and the Indemnifying Party shall attempt in good faith to resolve any differences that they may have with respect to any matter specified in the Disagreement Notice. If, at the end of such ten (10) day period, the Indemnified Party and the Indemnifying Party have failed to reach written agreement with respect to all of such matters, then any party shall be entitled to pursue any remedy at law or in equity.
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7.4 Survival. All of the representations and warranties of each Party contained in this Agreement shall survive the Closing hereunder indefinitely. The covenants of each Party under this Agreement shall survive the Closing indefinitely unless a shorter period of performance is specified with respect to such covenant. If an indemnification claim is asserted by an Indemnified Party before the expiration of the survival or limitations period, such asserted claim shall survive until the final adjudication and resolution of such claim.
SECTION 8. GENERAL.
8.1 Expenses. Except as otherwise provided in this Agreement, each Party will bear its respective expenses and legal fees incurred with respect to this Agreement, and the transactions contemplated hereby.
8.2 Confidentiality; Public Announcement.
(a) Seller shall not, and Seller shall cause its Affiliates not to, use, disclose or furnish to any third party any information of or regarding Buyer or the Purchased Assets, except for information which: (i) is or becomes available in the public domain (other than as a result of a disclosure by Seller or its Affiliates in breach of this Agreement); (ii) is required to be disclosed by applicable Law (provided that Seller provide Buyer prior notice of such required disclosure and a reasonable opportunity to take steps to maintain the confidentiality thereof); or (iii) Buyer expressly authorizes, in writing, Seller or other party to disclose such information prior to such disclosure.
(b) Each Party shall not disclose or furnish to any third party (other than their directors, legal counsel and accountants who are bound by reasonable confidentiality obligations) the terms and conditions of this Agreement. Notwithstanding the foregoing, (i) each Party may disclose the terms and conditions of this Agreement to the extent such disclosure is reasonably necessary to comply with applicable law (including any securities law or regulation or the rules of a securities exchange) and with judicial process, it being understood and agreed that Seller shall provide Buyer a reasonable opportunity to review and comment on any public announcement regarding this Agreement or the transactions contemplated hereby, (ii) each Party may disclose the terms and conditions of this Agreement to the extent necessary in connection with the enforcement of this Agreement, and (iii) Buyer may disclose the terms and conditions of this Agreement to an actual or potential assignee or other purchaser, investment banker, investor or lender, and their representatives.
8.3 Governing Law; Consent to Jurisdiction; Waiver of Jury Trial. All disputes arising out of this Agreement or the transactions contemplated hereby shall be governed by and construed in accordance with the laws of the State of Delaware without regard to its rules of conflict of laws. The Parties hereby irrevocably and unconditionally consent to submit to the sole and exclusive jurisdiction and venue of the federal and state courts of the State of Delaware for any litigation between the Parties arising out of or relating to this Agreement; provided, that any judgment or order obtained from such court(s) may be enforced in any other applicable jurisdiction. TO THE EXTENT NOT PROHIBITED BY APPLICABLE LAW THAT CANNOT BE WAIVED, EACH PARTY HEREBY WAIVES, AND COVENANTS THAT IT WILL NOT ASSERT (WHETHER AS PLAINTIFF, DEFENDANT OR OTHERWISE), ANY RIGHT TO TRIAL BY JURY IN ANY FORUM IN RESPECT OF ANY DISPUTES OR LITIGATION ARISING OUT OF OR RELATING TO THIS AGREEMENT, WHETHER NOW EXISTING OR HEREAFTER ARISING AND WHETHER SOUNDING IN TORT OR CONTRACT OR OTHERWISE.
8.4 Assignment; Binding Effect; No Third-Party Rights. No Party may assign this Agreement in whole or in part without the prior written consent of the other Party; provided, however, that Buyer may assign this Agreement without the written consent of Seller to (a) its financing sources (solely as security for obligations arising in connection with such financing), provided that Buyer continues to be bound by its obligations hereunder, and (b) an Affiliate or Buyer or an entity succeeding to substantially all the assets and business of Buyer by merger, purchase or otherwise, provided that such assignee expressly agrees to be bound by Buyer’s obligations hereunder. Except as otherwise expressly provided herein, this Agreement and its provisions are for the sole benefit of the parties to this Agreement and their successors and permitted assigns and shall not give any other Person any legal or equitable right, remedy or claim; provided however, that, for the avoidance of doubt, the Warrantholder is an intended third party beneficiary of Section 5.1 (Seller Representations and Warranties), Section 6.5 (Registration Rights) and Section 7 (Indemnification) with the right and power to enforce the provisions thereof.
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8.5 Notices. Any notice, request, demand or other communication required or permitted hereunder shall be in writing and shall be deemed to have been duly given when received if personally delivered; when transmitted, if transmitted by facsimile, electronic or digital transmission method; the day after it is sent if sent for next day delivery to a domestic address by a recognized overnight delivery service. All notices to a Party will be sent to the addresses set forth below such Party’s signature hereto or to such other address or person or entity as such Party may designate by notice to each other Party hereunder.
8.6 Specific Performance. The Parties agree that irreparable damage would occur in the event that any of the provisions of this Agreement were not performed in accordance with their specific terms or were otherwise breached. Accordingly, each of the Parties shall be entitled to specific performance of the terms hereof, including an injunction or injunctions to prevent breaches of this Agreement and to enforce specifically the terms and provisions of this Agreement, this being in addition to any other remedy to which such party is entitled at law or in equity. Each of the parties hereby further waives (i) any defense in any action for specific performance that a remedy at law would be adequate and (ii) any requirement under any Law to post security as a prerequisite to obtaining equitable relief.
8.7 Miscellaneous. This Agreement may be executed in counterparts, each of which shall be deemed an original, but all of which together shall constitute one and the same instrument. The section headings contained in this Agreement are for reference purposes only and shall not affect in any way the meaning or interpretation of this Agreement. This Agreement, including the schedules and exhibits referred to herein and the other writings specifically identified herein or contemplated hereby, is complete, reflects the entire agreement of the Parties with respect to its subject matter, and supersedes all previous written or oral negotiations, commitments and writings. This Agreement may not be amended or modified, nor may compliance with any condition or covenant set forth herein be waived, except by a writing duly and validly executed by each Party hereto, or in the case of a waiver, the Party waiving compliance. Whenever possible, each provision of this Agreement shall be interpreted in such a manner as to be effective and valid under applicable law, but if any provision of this Agreement shall be deemed prohibited or invalid under such applicable law, such provision shall be ineffective to the extent of such prohibition or invalidity, and such prohibition or invalidity shall not invalidate the remainder of such provision or the other provisions of this Agreement. A facsimile or electronic (e.g., PDF) signature shall be considered original for all purposes hereunder.
[Remainder of Page Intentionally Left Blank]
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IN WITNESS WHEREOF, the Parties hereto have caused this Agreement to be executed as of the date set forth above by their duly authorized representatives.
BUYER
PREPROGEN LLC
By: /s/ Mayer Goldberger
Name: Mayer Goldberger
Title: Founder
Address for Notice
4 Lemberg Court
Suite 304
Monroe NY 10950
Attn: E. Goldberge
rEmail:eli@egoldco.com
SELLER
QUANTRX BIOMEDICAL CORPORATION
By: /s/ Shalom Z. Hirschman
Name: Dr. Shalom Z. Hirschman
Title: Chief Executive Officer
Address for Notice
QuantRx Biomedical Corporation
171 Sherwood Lane
Raynham, MA 02767
Attention: Michael Abrams
Tel No.: (212) 980-2235
Email Address: mabrams@burnhamhill.com
[SIGNATURE PAGE TO ASSET PURCHASE AGREEMENT]
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SCHEDULE A
PURCHASED ASSETS
See attached
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EXHIBIT 3.2(B)
PAYOFF LETTER
See attached.
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EXHIBIT 3.2(D)
PREPOGEN OPERATING AGREEMENT
See attached.
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EXHIBIT 3.2(F)
IP ASSIGNMENTS
See attached.
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EXHIBIT 3.2(G)
WARRANT
See attached.
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EXHIBIT 3.2(H)
LICENSE AGREEMENT
See attached.
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Exhibit 10.2
PATENT ASSIGNMENT AGREEMENT
This PATENT ASSIGNMENT AGREEMENT (“Agreement”) is made as of December 14, 2017, by and between QuantRx Biomedical Corporation, a Nevada corporation (“Assignor”), and Preprogen LLC, a Delaware limited liability company (“Assignee”).
WHEREAS, Assignor and Assignee are parties to that certain Asset Purchase Agreement, dated as of December 14, 2017 (as such agreement may have been, or may from time to time be, amended, supplemented or otherwise modified, the “Asset Purchase Agreement”). All capitalized terms used and not defined herein shall have the meanings ascribed to them in the Asset Purchase Agreement.
WHEREAS, Assignor is the owner of all right, title and interest in, to and under the patents and patent applications set forth on Exhibit A attached hereto, and the inventions and improvements disclosed in the aforesaid patents and patent applications including without limitation all confirmations, divisions, renewals, extensions, reissues, continuations, continuations-in-part, substitutes, amendments and modifications (including reexamination amendments), certificates and utility models (all of the aforesaid patents, patent applications, inventions and improvements being hereinafter collectively referred to as the “Patents”).
WHEREAS, pursuant to the Asset Purchase Agreement, Assignee desires to acquire all of Assignor’s right, title and interest in and to the Patents.
NOW THEREFORE, for good and valuable consideration, the receipt and legal sufficiency of which is hereby acknowledged, the parties agree as follows:
1. Assignor hereby assigns, conveys and transfers to Assignee, and Assignee hereby receives, all of Assignor’s right, title and interest in, to and under the Patents, including without limitation the right to petition, sue or otherwise seek and recover damages, profits and any other remedy for any past, present or future infringement of, or for improper, unlawful or unfair use or disclosure or other violation of, the Patents.
2. This Agreement has been executed and delivered by Assignor to Assignee for the purpose of recording this Agreement with the United States Patent and Trademark Office (the “PTO”) or other governing authority, and the parties hereby authorize the PTO or other such governing authority to record this Agreement.
3. This Agreement is in accordance with and is subject to all of the representations, warranties, covenants, exclusions and indemnities set forth in the Asset Purchase Agreement, all of which are hereby incorporated herein by reference.
4. At and from time to time following the Closing, Assignor shall take such actions as required by Section 6.1 of the Asset Purchase Agreement in regard to this Patent Assignment Agreement.
5. Assignor hereby appoints Assignee as its attorney-in-fact, with full authority in the place and stead of Assignor, and in the name of Assignor, solely to take any action and to create any instrument that may be necessary or desirable to register, effectuate, validate, record, maintain, perfect, enforce or defend this Agreement and Assignee’s rights in the Patents.
6. This Agreement may be executed by the parties hereto in separate counterparts, each of which when so executed and delivered shall be deemed to be an original, but all of which when taken together shall constitute one and the same agreement. Each counterpart may be delivered by facsimile transmission or electronic transmission in portable document format, which transmission shall be deemed to be delivery of an originally executed document.
7. This Agreement shall be governed, including as to validity, interpretation and effect, by, and construed in accordance with, the internal Laws of the State of Delaware applicable to agreements made and fully performed within the State of Delaware.
[Remainder of page left blank intentionally. Signature page follows.]
.
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IN WITNESS WHEREOF, Assignor and Assignee have caused this Agreement to be executed as of the date first above written.
ASSIGNOR:
QUANTRX BIOMEDICAL CORPORATION
By: /s/ Shalom Z. Hirschman
Name: Shalom Z. Hirschman
Title: Chief Executive Officer
ASSIGNEE:
PREPROGEN LLC
By: /s/ Mayer Goldberger
Name: Mayer Goldberger
Title: Founder
[Signature Page to Patent Assignment Agreement]
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EXHIBIT A
PATENTS
Title
Owner of Record
Region
Patent or Application Number
Issue Date
Administration of Therapeutic Or Diagnostic Agents Using Interlabial Pad
QuantRx BioMedical Corporation
US
6,811,549
11/2/2004
Folded Perineal Pad
CA
2,679,725
7/7/2015
Folded Perineal Pad
QuantRx BioMedical Corporation
US
8,398,606
3/19/2013
Method for Obtaining Fetal Cells and Fetal Cellular Components
QuantRx BioMedical Corporation
CA
2,876,692
N/A
Method for Obtaining Fetal Cells and Fetal Cellular Components
QuantRx BioMedical Corporation
EPC
13806393.8
N/A
Method for Obtaining Fetal Cells and Fetal Cellular Components
QuantRx BioMedical Corporation
US
14/410,508
N/A
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Exhibit 10.3
TRADEMARK ASSIGNMENT AGREEMENT
This TRADEMARK ASSIGNMENT AGREEMENT (this “Trademark Assignment Agreement”) is made as of December 14, 2017 by and between QuantRx Biomedical Corporation, a Nevada corporation (“Assignor”), and Preprogen LLC, a Delaware limited liability company (“Assignee”).
WHEREAS, Assignor and Assignee are parties to that certain Asset Purchase Agreement, dated as of December 14, 2017 (as such agreement may have been, or may from time to time be, amended, supplemented or otherwise modified, the “Asset Purchase Agreement”), by and between Assignee, on the one hand, and Assignor, on the other. All capitalized terms used and not defined herein shall have the meanings ascribed to them in the Asset Purchase Agreement.
WHEREAS, Assignor is the owner of all right, title and interest in and to the trademarks listed on Exhibit A attached hereto (the “Trademarks”), together with the goodwill of the Business connected with and symbolized by the Trademarks.
WHEREAS, pursuant to the Asset Purchase Agreement, Assignee desires to acquire all of Assignor’s right, title and interest in and to the Trademarks, together with the goodwill of the Business connected with and symbolized by the Trademarks.
NOW THEREFORE, for good and valuable consideration, the receipt and legal sufficiency of which is hereby acknowledged, the parties agree as follows:
1. Assignor hereby sells, assigns, transfers, conveys and delivers to Assignee, its successors and assigns, all of its right, title and interest in and to the Trademarks in the United States and all jurisdictions outside the United States, together with the goodwill of the Business connected with and symbolized by the Trademarks (including, without limitation, the right to renew any registrations included in the Trademarks, the right to apply for trademark registrations within or outside the United States based in whole or in part upon the Trademarks, the right to bring an action for any and all past infringements of the rights being assigned and the right to collect and retain any proceeds therefrom, and any priority right that may arise from the Trademarks), the same to be held and enjoyed by Assignee as fully and entirely as said interest could have been held and enjoyed by Assignor had this sale, assignment, transfer conveyance and deliverance not been made.
2. At and from time to time following the Closing, Assignor shall take such actions as required by Section 6.1 of the Asset Purchase Agreement in regard to this Trademark Assignment Agreement.
3. This Trademark Assignment Agreement may be executed by the parties hereto in separate counterparts, each of which when so executed and delivered shall be deemed to be an original, but all of which when taken together shall constitute one and the same agreement. Each counterpart may be delivered by facsimile transmission or electronic transmission in portable document format, which transmission shall be deemed to be delivery of an originally executed document.
4. This Trademark Assignment Agreement shall be governed, including as to validity, interpretation and effect, by, and construed in accordance with, the internal Laws of the State of Delaware applicable to agreements made and fully performed within the State of Delaware.
[Remainder of page left blank intentionally. Signature page follows.]
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IN WITNESS WHEREOF, Assignor and Assignee have caused this Agreement to be executed as of the date first above written.
ASSIGNOR:
QUANTRX BIOMEDICAL CORPORATION
By: /s/ Shalom Z. Hirschman
Name: Shalom Z. Hirschman
Title: Chief Executive Officer
ASSIGNEE:
PREPROGEN LLC
By: /s/ Mayer Goldberger
Name: Mayer Goldberger
Title: Founder
[Signature Page to Trademark Assignment Agreement]
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Exhibit A
Trademarks
Registered Marks
Mark
Goods / Services
Application Serial Number
Registration Number
Applicant
Registration Date
PADKIT
Class 10
75/654,164
2,380,818
QUANTRX BIOMEDICAL CORPORATION
8/29/2000
PADKIT
Class 10
75/260,875
2,251,770
QUANTRX BIOMEDICAL CORPORATION
6/8/1999
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Exhibit 10.4
INTELLECTUAL PROPERTY LICENSE AGREEMENT
This Intellectual Property License Agreement (“Agreement”) is entered into as of December 14, 2017 (the “Effective Date”), by and between QuantRX Biomedical Corporation, a Nevada Corporation (“Licensee”), and Preprogen LLC, a Delaware corporation (“Licensor”).
RECITALS:
WHEREAS, Licensor and Licensee are parties to that certain Asset Purchase Agreement dated December 14, 2017 (the “APA”), pursuant to which Licensor purchased certain assets of Licensee including the intellectual property identified on Exhibit A hereto (“Licensed IP”);
WHEREAS, Licensee desires to receive a license-back of the Licensed IP, to develop, manufacture, use and sell products covered by the Licensed IP to its customers within the Field (as defined herein).
NOW, THEREFORE, in consideration of the terms and provisions of this Agreement and the APA, and for other good and valuable consideration, the receipt of which is acknowledged by the execution and delivery hereof, Licensor and Licensee hereby agree as follows:
A. Definitions.
1. “Field” means the feminine hygiene markets and hemorrhoid treatment markets.
2. “Licensed IP” shall have the meaning set forth in the Recitals.
3. “Products” means over-the-counter miniform products for sale in the Field.
B. License Grant. Subject to the terms and conditions set forth in this Agreement, Licensor hereby grants to Licensee, an exclusive, worldwide right and license to the Licensed IP to develop, manufacture, market, make, have made, use, sell, offer for sale, export and import Products for the Field. Except for the license granted herein, no other rights or licenses to the Licensed IP are granted hereunder, and all such rights and licenses are expressly reserved to the Licensor.
C. Improvements. Licensee acknowledges and agrees that any modification, change, development, enhancement, derivative or improvement (collectively, “Improvements”) made by, or on behalf of, Licensee to the Licensed IP shall be owned by Licensee only to the extent such Improvements are useful solely for Products within the Field. To the extent that Licensee obtains any rights to Improvements to the Licensed IP that may have (i) application outside of the Field or (ii) application both within and outside the Field (collectively clauses (i) and (ii) above, “Multi-application Improvements”), Licensee shall so notify Licensor in writing, and Licensee hereby assigns all right, title and interest in and to such Multi-application Improvements to Licensor. All such Multi-application Improvements that are useful to Products in the Field also are and shall be deemed Licensed IP hereunder, and are licensed to Licensee subject to the terms of this Agreement. Licensee agrees to provide prompt notification to Licensor of any Multi-application Improvements.
D. Enforcement. Licensee shall cooperate fully and promptly with Licensor in the protection of Licensor’s rights in the Licensed IP, in such manner and to such extent as Licensor may reasonably request, and at Licensor’s expense, subject to any rights Licensor or its affiliates have under the APA.
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1. Each party shall promptly notify the other party in writing of any actual or potential infringement, misappropriation or any other unauthorized use of or violation of the Licensed IP of which it becomes aware (each an “Infringement”). Licensor may take such action as it, in its sole discretion, deems necessary or advisable to stop any Infringement.
2. In the event the Infringement solely pertains to Licensee’s Products covered by the Licensed IP, Licensee may request in writing that Licensor institute an action to stop an Infringement affecting such Products. If Licensor receives such a written request and does not institute such action within ninety (90) days, Licensee may institute such action as it deems necessary or advisable to stop such Infringement, in which Licensor shall be entitled to join; provided that Licensee shall not compromise or settle any such claim or action regarding the Licensed IP in any manner without the written consent of Licensor.
3. The party not taking the lead in any action shall cooperate fully with the other party at the other party’s reasonable request and expense, including Licensor joining a suit instituted by Licensee in accordance with this Section to the extent necessary for Licensee to have standing. Any monetary recovery or sums obtained in settlement of any action to stop an Infringement shall be allocated between Licensor and Licensee as shall be fair and equitable, taking into account their actual out-of-pocket costs and expenses, including reasonable attorneys’ fees, and the damages sustained by each of them; provided that in the event of a dispute regarding such an allocation, Licensor shall be entitled to determine the actual allocation.
E. Warranties of the Parties. Licensor warrants that it has the right and power to enter into this Agreement. Licensee warrants that it has the right and power to enter into this Agreement, and that there are no outstanding assignments, grants, licenses, encumbrances, obligations or agreements, either written or oral or implied, that prevent it from doing so.
F. WARRANTY DISCLAIMER. EXCEPT AS EXPRESSLY SET FORTH IN THIS AGREEMENT, NEITHER PARTY MAKES ANY OTHER REPRESENTATION, GUARANTEE OR WARRANTY OF ANY KIND, EXPRESS, IMPLIED OR OTHERWISE, UNDER THIS AGREEMENT INCLUDING REPRESENTATIONS, GUARANTEES OR WARRANTIES AS TO THE RESULTS TO BE EXPECTED FROM USE OF ANY OF THE LICENSED IP, OR FROM MANUFACTURE OR SALE OF ANY PRODUCT HEREUNDER. EXCEPT AS EXPRESSLY SET FORTH IN THIS AGREEMENT, LICENSOR SHALL HAVE NO RESPONSIBILITY OR LIABILITY UNDER THIS AGREEMENT FOR THE LICENSED IP; FOR THE ABILITY OR INABILITY OF LICENSEE TO USE THE LICENSED IP; FOR THE CLAIMS OF THIRD PARTIES RELATING TO ANY PRODUCTS MANUFACTURED OR SOLD BY LICENSEE; OR FOR ANY FAILURE IN PRODUCTION, DESIGN OR OPERATION OF ANY PRODUCT MANUFACTURED OR SOLD BY LICENSEE. THE LIMITATIONS OF LIABILITY CONTAINED IN THIS AGREEMENT ARE A FUNDAMENTAL PART OF THE BASIS OF EACH PARTY’S BARGAIN HEREUNDER, AND NEITHER PARTY WOULD ENTER INTO THIS AGREEMENT ABSENT SUCH LIMITATIONS. NOTWITHSTANDING ANYTHING IN THIS AGREEMENT TO THE CONTRARY, LICENSOR SHALL HAVE NO LIABILITY UNDER THIS AGREEMENT ARISING OUT OF OR RELATING TO ANY FACTS OR CIRCUMSTANCES WHICH CONSTITUTE A BREACH OF ANY REPRESENTATION OR WARRANTY OF LICENSEE UNDER THE APA, OR FOR WHICH LICENSEE WOULD OTHERWISE HAVE LIABILITY TO LICENSOR OR ANY AFFILIATE UNDER THE APA (WITHOUT GIVING EFFECT TO ANY SURVIVAL PERIODS OR LIMITATIONS ON LIABILITY SET FORTH THEREIN), AND NOTHING IN THIS AGREEMENT SHALL DEROGATE FROM LICENSOR’S RIGHTS UNDER THE APA.
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G. Term / Termination.
1. Term. This Agreement shall commence on the Effective Date, and continue until terminated as set forth in Section G(2).
2. Termination by Licensor. This Agreement may be terminated by Licensor by written notice of termination if Licensee breaches this Agreement, and such a breach is not cured to Licensor’s satisfaction within thirty (30) days following receipt by Licensee of notice thereof from Licensor.
3. Upon the termination of this Agreement, all rights of Licensee granted hereunder shall terminate, and Licensee shall return or destroy (and certify such destruction in writing to Licensor if requested), at Licensor’s election, all embodiments of the Licensed IP. Notwithstanding the foregoing, Licensee shall have the right to continue to dispose of its inventory of Products under the Licensed IP existing as of any termination for a period of up to six (6) months from the date of termination of this Agreement.
4. All rights and remedies of the parties in respect of any breach of this Agreement occurring prior to the effective date of its termination shall survive the termination of this Agreement. In addition, the following provisions of this Agreement shall explicitly survive its termination: Section F (“WARRANTY DISCLAIMER”); Section G (“Term / Termination”); and Section H (“Miscellaneous”).
H. Miscellaneous.
1. Notices. All notices, demands and other communications required to be given to a party hereunder shall be in writing and shall be deemed to have been duly given if and when personally delivered; one business day after being sent by a nationally recognized overnight courier; when transmitted by facsimile and actually received; or five (5) days after being mailed by registered or certified mail (postage prepaid, return receipt requested) to such party at the relevant street address or facsimile number set forth below (or at such other street address or facsimile number as such party may designate from time to time by written notice in accordance with this provision):
If to Licensee:
Preprogen LLC
4 Lemberg Court
Suite 304
Monroe NY 10950
Attn: E. Goldberger
Email:eli@egoldco.com
With a copy to (which shall not constitute notice):
Kramer Levin Naftalis & Frankel LLP
1177 Avenue of the Americas
New York, New York 10036
Attn: Ernest Wechsler, Esq.
Facsimile: (212) 715-8000
Confirm: (212) 715-9100
If to Licensor:
QuantRx Biomedical Corporation
171 Sherwood Lane
Raynham, MA 02767
Attention: Michael Abrams
Tel No.: (212) 980-2235
Email Address: mabrams@burnhamhill.com
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2. Further Assurances. In addition to the actions specifically provided for elsewhere in this Agreement, Licensor and Licensee agree to execute or cause to be executed and to record or cause to be recorded such other agreements, instruments and other documents, and to take such other action, as reasonably necessary or desirable to fully effectuate the intents and purposes of this Agreement.
3. Relationship of the Parties. This Agreement shall not be construed to place the parties in the relationship of legal representatives, partners, joint venturers or agents of or with each other. No party shall have any power to obligate or bind the other party in any manner whatsoever, except as specifically provided herein.
4. Third Party Beneficiaries. Except as set forth herein with respect to affiliates of Licensor, the provisions of this Agreement are solely for the benefit of the parties hereto and their respective successors and permitted assigns, and are not intended to confer upon any person, except the parties hereto and their respective successors and permitted assigns, any rights or remedies hereunder.
5. Assignability. This Agreement may not be assigned by Licensee without the prior written consent of the Licensor. Subject to Section H.4, this Agreement shall be binding upon and inure to the benefit of the parties and their respective successors and permitted assigns.
6. Press Releases; Public Announcements. Neither party shall issue any release or make any other public announcement concerning this Agreement or the transactions contemplated hereby without the prior written approval of the other party, which approval shall not be unreasonably withheld or delayed; provided, however, that either party shall be permitted to make any release or public announcement that in the opinion of its counsel it is required to make by law or the rules of any national securities exchange of which its securities are listed; provided further that it has made efforts that are reasonable in the circumstances to obtain the prior approval of the other party.
7. Waiver of Defaults. Waiver by any party hereto of any default by the other party hereto of any provision of this Agreement shall not be construed to be a waiver by the waiving party of any subsequent or other default, nor shall it in any way affect the validity of this Agreement or prejudice the rights of the other party thereafter to enforce each and every such provision. No failure or delay by any party hereto in exercising any right, power or privilege hereunder shall operate as a waiver thereof nor shall any single or partial exercise thereof preclude any other or further exercise thereof or the exercise of any other right, power or privilege.
8. Severability. If any provision of this Agreement is determined by a court of competent jurisdiction to be invalid, void or unenforceable, the remaining provisions hereof shall remain in full force and effect and shall in no way be affected, impaired or invalidated thereby, so long as the economic or legal substance of the transactions contemplated hereby, as the case may be, is not affected in any manner adverse to any party hereto or thereto. Upon such determination, the parties hereto shall negotiate in good faith in an effort to agree upon a suitable and equitable provision to effect the original intent of the parties hereto.
9. LIMITATION OF LIABILITY. IN NO EVENT SHALL LICENSOR OR LICENSEE BE LIABLE TO THE OTHER FOR ANY SPECIAL, CONSEQUENTIAL, INDIRECT, COLLATERAL, INCIDENTAL OR PUNITIVE DAMAGES OR LOST PROFITS OR FAILURE TO REALIZE EXPECTED SAVINGS OR OTHER COMMERCIAL OR ECONOMIC LOSS OF ANY KIND, ARISING OUT OF THIS AGREEMENT; PROVIDED, HOWEVER, THAT THE FOREGOING LIMITATIONS SHALL NOT LIMIT EITHER PARTY’S INDEMNIFICATION OBLIGATIONS WITH RESPECT TO THIRD PARTY CLAIMS.
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10. Attorneys’ Fees. In any action hereunder to enforce the provisions of this Agreement, the prevailing party shall be entitled to recover its reasonable attorneys’ fees in addition to any other recovery hereunder.
11. Governing Law. All disputes arising out of this Agreement or the transactions contemplated hereby shall be governed by and construed in accordance with the laws of the State of Delaware without regard to its rules of conflict of laws.
12. Consent to Jurisdiction. The Parties hereby irrevocably and unconditionally consent to submit to the sole and exclusive jurisdiction and venue of the federal and state courts of the State of Delaware for any litigation between the Parties arising out of or relating to this Agreement; provided, that any judgment or order obtained from such court(s) may be enforced in any other applicable jurisdiction. Each of the parties irrevocably waives any objection to venue in the federal and state courts located in the State of Delaware of any action, suit or proceeding arising out of this Agreement or the transactions contemplated hereby.
13. Specific Performance. The Parties agree that irreparable damage would occur in the event that any of the provisions of this Agreement were not performed in accordance with their specific terms or were otherwise breached. Accordingly, each of the Parties shall be entitled to specific performance of the terms hereof, including an injunction or injunctions to prevent breaches of this Agreement and to enforce specifically the terms and provisions of this Agreement, this being in addition to any other remedy to which such party is entitled at law or in equity. Each of the parties hereby further waives (i) any defense in any action for specific performance that a remedy at law would be adequate and (ii) any requirement under any Law to post security as a prerequisite to obtaining equitable relief.
14. Entire Agreement. This Agreement and the APA (together with the Warrant (as defined in the APA), the IP Assignments (as defined in the APA), the Preprogen Operating Agreement (as defined in the APA) and any other agreements and documents delivered under the APA) constitute the entire agreement between the parties with respect to the subject matter hereof and supersede all previous agreements, negotiations, discussions, understandings, writings, commitments and conversations between the parties with respect to such subject matter.
15. Waiver of Jury Trial. TO THE EXTENT NOT PROHIBITED BY APPLICABLE LAW THAT CANNOT BE WAIVED, EACH PARTY HEREBY WAIVES, AND COVENANTS THAT IT WILL NOT ASSERT (WHETHER AS PLAINTIFF, DEFENDANT OR OTHERWISE), ANY RIGHT TO TRIAL BY JURY IN ANY FORUM IN RESPECT OF ANY DISPUTES OR LITIGATION ARISING OUT OF OR RELATING TO THIS AGREEMENT, WHETHER NOW EXISTING OR HEREAFTER ARISING AND WHETHER SOUNDING IN TORT OR CONTRACT OR OTHERWISE.
16. Amendments. No provisions of this Agreement shall be deemed amended, modified or supplemented by any party hereto, unless such amendment, supplement or modification is in writing and signed by the authorized representative of the party against whom it is sought to enforce such amendment, supplement or modification.
17. Counterparts. This Agreement may be executed in any number of counterparts, including by facsimile or electronic signature, and each such counterpart shall be deemed an original instrument, and all of such counterparts together shall constitute but one agreement. A facsimile or electronic signature is deemed an original signature for all purposes under this Agreement.
[SIGNATURE PAGES FOLLOW]
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IN WITNESS WHEREOF, the parties have caused their duly authorized representatives to execute this Agreement as of the Effective Date.
QUANTRX BIOMEDICAL CORPORATION
QUANTRX BIOMEDICAL CORPORATION
By: /s/ Shalom Z. Hirschman
Name: Shalom Z. Hirschman
Title: Chief Executive Officer
PREPROGEN LLC
By: /s/ Mayer Goldberger
Name: Mayer Goldberger
Title: Founder
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EXHIBIT A
LICENSED IP
INTERLABIAL PAD
KS REF. NO.
Country
Title
Status
Pat. No.
Issue date
App. No.
Expiration Date
Assignee of Record
Action/Comments
6122-54472-01
US
Administration of Therapeutic Or Diagnostic Agents Using Interlabial Pad
Issued
6,811,549
11/2/2004
09/788,264
10/15/2021
QuantRx BioMedical Corporation
None – Maintenance fees fully paid
6122-76455-03
CA
Folded Perineal Pad
Issued
2,679,725
7/7/2015
2,679,725
2/28/2028
Foreign patent, N/A
Annual Maintenance fees due Feb. 28
(paid for 2017)
6122-76455-04
US
Folded Perineal Pad
Issued
8,398,606
3/19/2013
12/529,053
3/11/2030
QuantRx BioMedical Corporation
2nd Maintenance fees due 9/19/20
FETAL STEM CELL ISOLATION
KS REF. NO.
Country
Title
Status
Pat. No.
Issue date
App. No.
Expiration Date
Assignee of Record
Action/Comments
6122-88255-03
CA
Method for Obtaining Fetal Cells and Fetal Cellular Components
Pending
N/A
N/A
2,876,692
QuantRx BioMedical Corporation
Waiting for Canadian Patent Office Action.
Annual Maintenance fees due June 24 (paid for 2017).
6122-88255-04
EPC
Method for Obtaining Fetal Cells and Fetal Cellular Components
Pending
N/A
N/A
13806393.8
QuantRx BioMedical Corporation
Response to EPO Office action filed Dec 2016, awaiting next action from EPO.
Annual Maintenance fees due June 24 (paid for 2017).
6122-88255-05
US
Method for Obtaining Fetal Cells and Fetal Cellular Components
Pending
N/A
N/A
14/410,508
QuantRx BioMedical Corporation
Office action response filed 2/6/17, awaiting next action from US PTO
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TRADEMARKS
KS REF. NO.
Country
Mark
Class
Registration No.
Registration date
App. No.
Owner
Action needed
6122-52871-01
U.S.
PADKIT
10
2,380,818
8/29/2000
75/654,164
QUANTRX BIOMEDICAL CORPORATION
Next renewal - 8/29/2020
6122-52870-01
U.S.
PADKIT
10
2,251,770
6/8/1999
75/260,875
QUANTRX BIOMEDICAL CORPORATION
Next renewal - 6/8/2019
-8-
Exhibit 10.5
ESCROW AGREEMENT
(Basic Three Party Escrow)
THIS ESCROW AGREEMENT is entered into as of December 14, 2017, by and among Preprogen LLC, a Delaware limited liability company (“Party A”), QuantRx Biomedical Corporation, a Nevada corporation (“Party B”, and together with Party A, sometimes referred to individually as “Party” and collectively as the “Parties”), and JPMorgan Chase Bank, N.A. (the “Escrow Agent”).
WHEREAS, the Parties have agreed to deposit in escrow certain funds and wish such deposit to be subject to the terms and conditions set forth herein.
1. Appointment. The Parties hereby appoint Escrow Agent as their escrow agent for the purposes set forth herein, and Escrow Agent hereby accepts such appointment under the terms and conditions set forth herein.
2. Fund; Investment. (a) Party A agrees to deposit with Escrow Agent the sum of $ 400,000 (“Escrow Deposit”). Escrow Agent shall hold the Escrow Deposit in one or more demand deposit accounts and shall invest and reinvest the Escrow Deposit and the proceeds thereof (“Fund”) in an interest bearing demand deposit account at JPMorgan Chase Bank, N.A., or a successor investment offered by Escrow Agent. Interest bearing demand deposit accounts have rates of interest or compensation that may vary from time to time as determined by the Escrow Agent.
Instructions to make any other investment (“Alternative Investment”), and any instruction to change investments must be in a joint writing and executed by an Authorized Representative (as defined in Section 3 below), of each of the Parties and shall specify the type and identity of the investments to be purchased and/or sold.
(b) All interest or other income earned under this Agreement shall be allocated to Party B and reported, by Escrow Agent to the IRS, or any other taxing authority, on IRS Form 1099 or 1042S (or other appropriate form) as income earned from the Escrow Deposit by Party B whether or not said income has been distributed during such year. The Parties hereby represent to Escrow Agent that no other tax reporting of any kind is required given the underlying transaction giving rise to this Agreement.
3. Disposition and Termination. (a) The Parties may at any time jointly deliver to the Escrow Agent instructions in substantially the form of Exhibit A-1 attached hereto executed by an Authorized Representative of each Party instructing the Escrow Agent to distribute all or a portion of the Fund. Within three (3) Business Days after the date on which the Escrow Agent receives (i) joint instructions in substantially the form of Exhibit A-1 attached hereto executed by an Authorized Representative of each Party or (ii) a Final Order directing payment of all or a portion of the Fund, the Escrow Agent shall disburse the portion of the Fund set forth in such joint written instructions or Final Order, as applicable, to the persons or accounts designated in such joint written instructions or Final Order. For purposes of this Agreement, a “Final Order” means a final and non-appealable order, judgment or decree of a court of competent jurisdiction accompanied by a written certification from counsel for Party A or Party B, as applicable, attesting that such order, judgment or decree is final and not subject to further proceedings or appeal along with a written instruction from an Authorized Representative of Party A or Party B, as applicable, given to effectuate such order, judgment or decree and the Escrow Agent shall be entitled conclusively to rely upon any such certification and instruction and shall have no responsibility to review the order, judgment or decree to which such certification and instruction refers or to make any determination as to whether such order, judgment or decree is final.
(b) Notwithstanding anything to the contrary set forth in Section 8, any instructions setting forth, claiming, objecting to, or in any way related to the transfer or distribution of the Fund, must be in writing and executed by the appropriate Party or Parties as evidenced by the signatures of the person or persons signing this Agreement or one of their designated persons as set forth on the Designation of Authorized Representatives attached hereto as Schedules 1-A and 1-B (each an “Authorized Representative”). Each Designation of Authorized Representatives shall be signed by the Secretary, any Assistant Secretary or other duly authorized officer of the named Party. No such instruction shall be deemed delivered and effective unless Escrow Agent actually shall have received it on a Business Day by facsimile or as a Portable Document Format (“PDF”) attached to an email at the fax number or email address set forth in Section 8 and in the case of a facsimile, as evidenced by a confirmed transmittal to the Party’s or Parties’ transmitting fax number and Escrow Agent has been able to satisfy any applicable security procedures as may be required hereunder. Escrow Agent shall not be liable to any Party or other person for refraining from acting upon any instruction for or related to the transfer or distribution of the Fund if delivered to any other fax number or email address, including but not limited to a valid email address of any employee of Escrow Agent.
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(c) The persons designated as Authorized Representatives and telephone numbers for same may be changed only in a writing executed by an Authorized Representative or other duly authorized officer of the applicable Party setting forth such changes and actually received by Escrow Agent via facsimile or as a PDF attached to an email. Escrow Agent will confirm any such change in Authorized Representatives by a telephone callback or email confirmation to an Authorized Representative and Escrow Agent may rely and act upon the confirmation of anyone purporting to be that Authorized Representative.
(d) Escrow Agent and other financial institutions, including the beneficiary’s bank, may rely upon the identifying number of the beneficiary, the beneficiary’s bank or any intermediary bank included in a funds transfer instructions, even if it identifies a person different from the beneficiary, the beneficiary’s bank or intermediary bank identified by name.
(e) As used in this Section 3, “Business Day” shall mean any day other than a Saturday, Sunday or any other day on which Escrow Agent located at the notice address set forth below is authorized or required by law or executive order to remain closed. The Parties acknowledge that the security procedures set forth in this Section 3 are commercially reasonable. Upon delivery of the Fund in full by Escrow Agent pursuant to this Section 3, this Agreement shall terminate and the related account(s) shall be closed, subject to the provisions of Sections 6 and 7.
(f) Notwithstanding anything to the contrary contained in this Agreement, in the event that an electronic signature is affixed to an instruction issued hereunder to disburse or transfer funds, such instruction shall be confirmed by a verifying callback (or email) to an Authorized Representative.
4. Escrow Agent. Escrow Agent shall have only those duties as are specifically and expressly provided herein, and no other duties, including but not limited to any fiduciary duty, shall be implied. Escrow Agent has no knowledge of, nor any obligation to comply with, the terms and conditions of any other agreement between the Parties, nor shall Escrow Agent be required to determine if any Party has complied with any other agreement. Escrow Agent may conclusively rely upon any written notice, document, instruction or request delivered by the Parties believed by it to be genuine and to have been signed by an Authorized Representative(s), as applicable, without inquiry and without requiring substantiating evidence of any kind and Escrow Agent shall be under no duty to inquire into or investigate the validity, accuracy or content of any such document, notice, instruction or request. Escrow Agent shall not be liable for any action taken, suffered or omitted to be taken by it in good faith except to the extent that Escrow Agent's gross negligence, willful misconduct or fraud was the cause of any direct loss to either Party. Escrow Agent may execute any of its powers and perform any of its duties hereunder directly or through affiliates or agents. In the event Escrow Agent shall be uncertain, or believes there is some ambiguity, as to its duties or rights hereunder, or receives instructions, claims or demands from any Party hereto which in Escrow Agent’s judgment conflict with the provisions of this Agreement, or if Escrow Agent receives conflicting instructions from the Parties, Escrow Agent shall be entitled either to: (a) refrain from taking any action until it shall be given (i) a joint written direction executed by Authorized Representatives of the Parties which eliminates such conflict or (ii) a court order issued by a court of competent jurisdiction (it being understood that Escrow Agent shall be entitled conclusively to rely and act upon any such court order and shall have no obligation to determine whether any such court order is final); or (b) file an action in interpleader. Escrow Agent shall have no duty to solicit any payments which may be due it or the Fund, including, without limitation, the Escrow Deposit nor shall the Escrow Agent have any duty or obligation to confirm or verify the accuracy or correctness of any amounts deposited with it hereunder. The Parties grant to Escrow Agent a lien and security interest in the Escrow Fund in order to secure any indemnification obligations of the Parties or obligation for fees or expenses owed to the Escrow Agent hereunder. Anything in this Agreement to the contrary notwithstanding, in no event shall Escrow Agent be liable for special, incidental, punitive, indirect or consequential loss or damage of any kind whatsoever (including but not limited to lost profits), even if Escrow Agent has been advised of the likelihood of such loss or damage and regardless of the form of action.
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5. Succession. Escrow Agent may resign and be discharged from its duties or obligations hereunder by giving not less than thirty (30) days advance notice in writing of such resignation to the Parties, or may be removed, with or without cause, by the Parties at any time after giving not less than thirty (30) days prior joint written notice to the Escrow Agent. Escrow Agent’s sole responsibility after such applicable thirty (30) day notice period expires shall be to hold the Fund (without any obligation to reinvest the same) and to deliver the same to a designated substitute escrow agent, if any, appointed by the Parties, or such other person designated by the Parties, or in accordance with the directions of a final court order, at which time Escrow Agent’s obligations hereunder shall cease and terminate. If prior to the effective resignation or removal date, the Parties have failed to appoint a successor escrow agent, or to instruct the Escrow Agent to deliver the Fund to another person as provided above, or if such delivery is contrary to applicable law, at any time on or after the effective resignation date, Escrow Agent either (a) may interplead the Fund with a court located in the State of New York and the costs, expenses and reasonable attorney’s fees which are incurred in connection with such proceeding may be charged against and withdrawn from the Fund; or (b) appoint a successor escrow agent of its own choice. Any appointment of a successor escrow agent shall be binding upon the Parties and no appointed successor escrow agent shall be deemed to be an agent of Escrow Agent. Escrow Agent shall deliver the Fund to any appointed successor escrow agent, at which time Escrow Agent’s obligations under this Agreement shall cease and terminate. Any entity into which Escrow Agent may be merged or converted or with which it may be consolidated, or any entity to which all or substantially all of the escrow business may be transferred, shall be the Escrow Agent under this Agreement without further act.
6. Compensation; Acknowledgment. (a) The Parties agree jointly and severally to pay Escrow Agent upon execution of this Agreement and from time to time thereafter reasonable compensation for the services to be rendered hereunder, which unless otherwise agreed in writing, shall be as described in Schedule 2; provided, however, solely as between the Parties, Party A agrees that it shall be responsible to pay the entire $2,500 Annual Administration Fee set forth on Schedule 2.
(b) Each of the Parties further agrees to the disclosures and agreements set forth in Schedule 2.
7. Indemnification and Reimbursement. The Parties agree jointly and severally to indemnify and hold harmless Escrow Agent and its agents, employees, officers and directors (the “Indemnitees”) from and against any and all losses, damages, claims, liabilities, costs or expenses (including attorneys’ fees) (collectively “Losses”), resulting directly or indirectly from (a) Escrow Agent’s performance of this Agreement, except to the extent that such Losses are determined by a court of competent jurisdiction to have been caused by the gross negligence, bad faith, willful misconduct or fraud of such Indemnitee; and (b) Escrow Agent’s following, accepting or acting upon any instructions or directions whether joint or several from the Parties received in accordance with this Agreement. The Parties hereby grant Escrow Agent a right of set-off against the Fund for the payment of any claim for indemnification, fees, expenses and amounts owing to Escrow Agent or an Indemnitee. The obligations set forth in this Section 7 shall survive the resignation, replacement or removal of Escrow Agent or the termination of this Agreement.
8. Notices. Except as otherwise expressly required in Section 3, all communications hereunder shall be in writing or set forth in a PDF attached to an email, , and shall be delivered by facsimile, email or overnight courier only to the appropriate fax number, email address, or notice address set forth for each party as follows:
If to Party A: Preprogen LLC
4 Lemberg Court, Suite 304
Monroe NY 10950
Attention: E. Goldberger
Tel No.: (845) 538-3889
Email Address: eli@egoldco.com
If to Party B: QuantRx Biomedical Corporation
171 Sherwood Lane
Raynham, MA 02767
Attention: Michael Abrams
Tel No.: (212) 980-2235
Email Address: mabrams@burnhamhill.com
If to Escrow Agent: JPMorgan Chase Bank, N.A.
Escrow Services
4 New York Plaza, Floor 11
New York, NY 10004
Attention: Nadia Moneva / Renfred Pico
Fax No.: 212-552-2812
Email Address:ec.escrow@jpmorgan.com
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9. Compliance with Court Orders. In the event that a legal garnishment, attachment, levy restraining notice or court order is served with respect to any of the Fund, or the delivery thereof shall be stayed or enjoined by an order of a court, Escrow Agent is hereby expressly authorized, in its sole discretion, to obey and comply with all such orders so entered or issued, and in the event that Escrow Agent obeys or complies with any such order it shall not be liable to any of the Parties hereto or to any other person by reason of such compliance notwithstanding such order be subsequently reversed, modified, annulled, set aside or vacated.
10. Miscellaneous. (a) The provisions of this Agreement may be waived, altered, amended or supplemented only by a writing signed by the Escrow Agent and the Parties. This Agreement and any right or interest hereunder may be assigned by a Party only in a writing agreed upon and signed by the Agent and the Parties. This Agreement shall be governed by and construed under the laws of the State of New York. Each Party and Escrow Agent irrevocably waives any objection on the grounds of venue, forum non-conveniens or any similar grounds and irrevocably consents to service of process by mail or in any other manner permitted by applicable law and consents to the exclusive jurisdiction of any state or federal court sitting in New York, New York. To the extent that in any jurisdiction either Party may now or hereafter be entitled to claim for itself or its assets, immunity from suit, execution, attachment (before or after judgment) or other legal process, such Party shall not claim, and hereby irrevocably waives, such immunity. Escrow Agent and the Parties further hereby waive any right to a trial by jury with respect to any lawsuit or judicial proceeding arising or relating to this Agreement.
(b) No party to this Agreement is liable to any other party for losses due to, or if it is unable to perform its obligations under the terms of this Agreement because of, acts of God, fire, war, terrorism, floods, strikes, electrical outages, equipment or transmission failure, or other causes reasonably beyond its control. This Agreement and any joint instructions from the Parties may be executed in one or more counterparts, each of which shall be deemed an original, but all of which together shall constitute one and the same instrument or instruction, as applicable. This Agreement may be executed and transmitted by facsimile or as a PDF attached to an email and each such execution shall be of the same legal effect, validity and enforceability as a manually executed, original, wet-inked signature. If any provision of this Agreement is held to be illegal, invalid, or unenforceable, the validity of the remaining portions of this Agreement shall not be affected. The Parties each represent, warrant and covenant that (i) each document, notice, instruction or request provided by such Party to Escrow Agent shall comply with applicable laws and regulations; (ii) such Party has full power and authority to enter into, execute and deliver this Agreement and to perform all of the duties and obligations to be performed by it hereunder; and (iii) the person(s) executing this Agreement on such Party’s behalf and certifying Authorized Representatives in the applicable Schedule 1 have been duly and properly authorized to do so, and each Authorized Representative of such Party has been duly and properly authorized to take the actions specified for such person in the applicable Schedule 1. Except as expressly provided in Section 7 above, nothing in this Agreement, whether express or implied, shall be construed to give to any person or entity other than Escrow Agent and the Parties any legal or equitable right, remedy, interest or claim under or in respect of the Fund or this Agreement.
[Signature Page Follows]
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IN WITNESS WHEREOF, the parties hereto have executed this Agreement as of the date set forth above.
PARTY A
PREPROGEN LLC
By: /s/ Mayer Goldberger
Name: Mayer Goldberger
Title: Founder
PARTY B
QUANTRX BIOMEDICAL CORPORATION
By: /s/ Shalom Z. Hirschman
Name: Dr. Shalom Z. Hirschman
Title: Chief Executive Officer
JPMORGAN CHASE BANK, N.A.,
As Escrow Agent
By: /s/ Christopher Palermo
Name: Christopher Palermo
Title: Vice President
[Signature Page to Escrow Agreement]
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EXHIBIT A-1
Form of Escrow Release Notice – Joint Instructions
JPMorgan Chase Bank, N.A., Escrow Services
[Address]
[Fax No.]
[Email Address]
Date:
Re: Preprogen LLC, QuantRx Biomedical Corporation – Escrow Agreement dated [ ]
Escrow Account no. [ ]
Dear Sir/Madam:
We refer to an escrow agreement dated [ ] between Preprogen LLC, QuantRx Biomedical Corporation and JPMorgan Chase Bank, N.A., as Escrow Agent (the “Escrow Agreement”).
Capitalized terms in this letter that are not otherwise defined shall have the same meaning given to them in the Escrow Agreement.
The Parties instruct the Escrow Agent to release the Fund, or the portion specified below, to the specified party as instructed below.
Amount
(In writing)
Beneficiary
City
Country
US Instructions:
Bank
Bank address
ABA Number:
Credit A/C Name:
Credit A/C #:
Credit A/C Address:
If Applicable:
FFC A/C Name:
FFC A/C #:
FFC A/C Address:
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International Instructions:
Bank Name:
Bank Address
SWIFT Code:
US Pay Through ABA:
Credit A/C Name:
Credit A/C # (IBAN #):
Credit A/C Address:
If Applicable:
FFC A/C Name:
FFC A/C # (IBAN #):
FFC A/C Address:
FOR AND ON BEHALF OF PARTY A:
__________________________
Name:
Date:
Title:
FOR AND ON BEHALF OF PARTY B:
_________________________________
Name:
Date:
Title:
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Schedule 1-A
Preprogen LLC
DESIGNATION OF AUTHORIZED
REPRESENTATIVES
The undersigned, Mayer Goldberger, being the duly elected, qualified and acting President of Preprogen LLC (“Party A”), does hereby certify:
That each of the following Representatives is at the date hereof an Authorized Representative, as such term is defined in the Escrow Agreement, dated December ___, 2017, by and among Party A, Party B and Escrow Agent (the “Escrow Agreement”), that the signature appearing opposite each Authorized Representative’s name below is the true and genuine signature of such Authorized Representative, and that each Authorized Representative’s contact information is current and up-to-date at the date hereof. Each of the Authorized Representatives is authorized to issue instructions, confirm funds transfer instructions by callback or email confirmation and effect changes in Authorized Representatives, all in accordance with the terms of the Escrow Agreement. Callbacks or emails confirming an instruction shall be made to an Authorized Representative other than the Authorized Representative who issued the instruction unless (a) only a single Authorized Representative is designated below, (b) the information set forth below changes and is not updated by Party A such that only the Authorized Representative who issued the instruction is available to receive a callback or email confirmation, or (c) Party A is an individual. Party A acknowledges that pursuant to this Schedule, Escrow Agent is offering an option for callback or email confirmation to a different Authorized Representative, and if Party A nevertheless names only a single Authorized Representative or fails to update Authorized Representative information, Party A agrees to be bound by any instruction, whether or not authorized, confirmed by callback to the issuer of the instruction.
NAME
SIGNATURE
TELEPHONE, CELL NUMBERS and EMAIL ADDRESSES
Mayer Goldberger
________________
___________________________(cell)______________________(email)____________________
1. Email confirmation is only permitted to a corporate email address for purposes of this Schedule. Any personal email addresses provided will not be used for email confirmation.
2. This Schedule may be signed in counterparts and the undersigned certifies any signature set forth on an attachment to this Schedule is the true and genuine signature of any Authorized Representative and that each such Representative's contact information is current and up-to-date at the date hereof.
3. That pursuant to Party A’s governing documents, as amended, the undersigned has the power and authority to execute this Designation on behalf of Party A, and that the undersigned has so executed this Designation this _____ day of December, 2017.
4. Notwithstanding the above, if Party A is an individual, no signature will be required below.
Signature: _____________________________
Name: Mayer Goldberger
Title: President
FOR YOUR SECURITY, PLEASE CROSS OUT ALL UNUSED SIGNATURE LINES ON THIS SCHEDULE 1-A
All instructions, including but not limited to funds transfer instructions, whether transmitted by facsimile or set forth in a PDF attached to an email, must include the signature (or electronic signature subject to the conditions set forth in the Escrow Agreement), of the Authorized Representative authorizing said funds transfer on behalf of such Party.
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Schedule 1-B
QuantRx Biomedical Corporation
DESIGNATION OF AUTHORIZED
REPRESENTATIVES
The undersigned, ________________________, being the duly elected, qualified and acting ________________________ of QuantRx Biomedical Corporation (“Party B”), does hereby certify:
That each of the following persons is at the date hereof an Authorized Representative, as such term is defined in the Escrow Agreement, dated ________________, 2017, by and among Party A, Party B and Escrow Agent (the “Escrow Agreement”), that the signature appearing opposite each Authorized Representative’s name below is the true and genuine signature of such Authorized Representative, and that each Authorized Representative’s contact information is current and up-to-date at the date hereof. Each of the Authorized Representatives is authorized to issue instructions, confirm funds transfer instructions by callback or email confirmation and effect changes in Authorized Representatives, all in accordance with the terms of the Escrow Agreement. Callbacks or emails confirming an instruction shall be made to an Authorized Representative other than the Authorized Representative who issued the instruction unless (a) only a single Authorized Representative is designated below, (b) the information set forth below changes and is not updated by Party B such that only the Authorized Representative who issued the instruction is [available] to receive a callback or email confirmation, or (c) Party B is an individual. Party B acknowledges that pursuant to this Schedule, Escrow Agent is offering an option for callback or email confirmation to a different Authorized Representative, and if Party B nevertheless names only a single Authorized Representative or fails to update Authorized Representative information, Party B agrees to be bound by any instruction, whether or not authorized, confirmed by callback to the issuer of the instruction.
NAME
SIGNATURE
TELEPHONE, CELL NUMBERS and EMAIL ADDRESSES
___________________________
___________________________
___________________________(cell)______________________
(email)____________________
___________________________
___________________________
___________________________(cell)______________________
___________________________
___________________________
(email)____________________
___________________________(cell)______________________
(email)____________________
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1. Email confirmation is only permitted to a corporate email address for purposes of this Schedule. Any personal email addresses provided will not be used for email confirmation.
2. This Schedule may be signed in counterparts and the undersigned certifies any signature set forth on an attachment to this Schedule is the true and genuine signature of any Authorized Representative and that each such Representative's contact information is current and up-to-date at the date hereof.
5. That pursuant to Party B’s governing documents, as amended, the undersigned has the power and authority to execute this Designation on behalf of Party B, and that the undersigned has so executed this Designation this _____ day of ______, 2017.
6. Notwithstanding the above, if Party B is an individual, no signature will be required below.
Signature: _____________________________
Name: _____________________________
Title: _____________________________
FOR YOUR SECURITY, PLEASE CROSS OUT ALL UNUSED SIGNATURE LINES ON THIS SCHEDULE 1-B
All instructions, including but not limited to funds transfer instructions, whether transmitted by facsimile or set forth in a PDF attached to an email, must include the signature (or electronic signature subject to the conditions set forth in the Escrow Agreement) of the Authorized Representative authorizing said funds transfer on behalf of such Party.
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Exhibit 10.6
THE SECURITIES REPRESENTED BY THIS CERTIFICATE HAVE BEEN ACQUIRED FOR INVESTMENT AND HAVE NOT BEEN REGISTERED UNDER THE SECURITIES ACT OF 1933, AS AMENDED, OR ANY STATE SECURITIES LAWS. SUCH SECURITIES MAY NOT BE SOLD OR TRANSFERRED IN THE ABSENCE OF SUCH REGISTRATION OR AN EXEMPTION THEREFROM UNDER SAID ACT AND ANY APPLICABLE STATE SECURITIES LAWS.
Dated: December 14, 2017
Warrant Number: CSW-___
WARRANT TO PURCHASE
COMMON STOCK
OF
QUANTRX BIOMEDICAL CORPORATION
This certifies that RASHBI CAPITAL GROUP, LLC, or its permitted assigns (each a “Holder”), for value received, is entitled to purchase, at an exercise price equal to $0.05 per share (the “Exercise Price”) from QUANTRX BIOMEDICAL CORPORATION, a Nevada corporation (the “Company”), up to fifteen million (15,000,000) shares of fully paid and nonassessable shares of the Company’s Common Stock, $0.01 par value (“Common Stock”).
This Warrant shall be exercisable at any time from time to time from and after the date hereof up to and including 5:00 p.m. (Pacific Time) on December 14, 2022.
1. Exercise.
1.1 Method of Exercise. The Holder hereof may exercise this Warrant, in whole or in part, by the surrender of this Warrant (with the Form of Subscription attached hereto duly completed and executed) at the principal office of the Company, and (i) by the payment to the Company of an amount of consideration therefor equal to the Exercise Price in effect on the date of such exercise multiplied by the number of shares of Common Stock with respect to which this Warrant is then being exercised, payable at such Holder's election by certified or official bank check or by wire transfer to an account designated by the Company, or (ii) by a “cashless exercise” in accordance with Section 1.2. If this Warrant is submitted in connection with any exercise pursuant to this Section 1 and the number of Warrant Shares represented by this Warrant submitted for exercise is greater than the number of Warrant Shares being acquired upon an exercise, then the Company shall as soon as practicable and in no event later than three (3) business days after any exercise and at its own expense, issue a new Warrant in the same form as this Warrant representing the right to purchase the number of Warrant Shares purchasable immediately prior to such exercise under this Warrant, less the number of Warrant Shares with respect to which this Warrant is exercised. Issuance of Warrant Shares shall be made without charge to the Holder for any issue or transfer tax or other incidental expense in respect of the issuance of such certificate, all of which taxes and expenses shall be paid by the Company, and such Warrant Shares shall be issued in the name of the Holder or in such name or names as may be directed by the Holder.
1.2 Payment of Exercise Price. The Holder may pay the Exercise Price in immediately available funds by wire transfer to an account designated by the Company or by certified or official bank check or, alternatively, in its sole discretion satisfy its obligation to pay the Exercise Price through a “cashless exercise”, in which event the Company shall issue to the Holder the number of Warrant Shares determined as follows:
X = Y [(A-B)/A]
where:
“X” equals the number of Warrant Shares to be issued to the Holder;
“Y” equals the total number of Warrant Shares with respect to which this Warrant is being exercised;
“A” equals the arithmetic average of the Closing Sale Prices (defined below) of the shares of Common Stock for the five (5) consecutive Trading Days ending on the date immediately preceding the Exercise Date; and
“B” equals the Exercise Price then in effect for the applicable Warrant Shares at the time of such exercise.
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For purposes of this Warrant, “Closing Sale Price” means, for any security as of any date, the last trade price for such security on the Principal Trading Market for such security, as reported by Bloomberg Financial Markets, or, if such Principal Trading Market begins to operate on an extended hours basis and does not designate the last trade price, then the last trade price of such security prior to 4:00 P.M., New York City time, as reported by Bloomberg Financial Markets, or if the foregoing do not apply, the last trade price of such security in the over-the-counter market on the electronic bulletin board for such security as reported by Bloomberg Financial Markets, or, if no last trade price is reported for such security by Bloomberg Financial Markets, the average of the bid prices, or the ask prices, respectively, of any market makers for such security as reported in the “pink sheets” by Pink Sheets LLC. If the Closing Sale Price cannot be calculated for a security on a particular date on any of the foregoing bases, the Closing Sale Price of such security on such date shall be the fair market value as determined in good faith by the Board of Directors of the Company. All such determinations shall be appropriately adjusted for any stock dividend, stock split, stock combination or other similar transaction during the applicable calculation period.
1.3 Holder’s Exercise Limitations. The Company shall not effect any exercise of this Warrant, and a Holder shall not have the right to exercise any portion of this Warrant, pursuant to Section 1 or otherwise, to the extent that after giving effect to such issuance after exercise as set forth on the applicable Notice of Exercise, the Holder (together with the Holder’s affiliates, and any other individuals or entities acting as a group together with the Holder or any of the Holder’s affiliates), would beneficially own in excess of the Beneficial Ownership Limitation (as defined below). For purposes of the foregoing sentence, the number of shares of Common Stock beneficially owned by the Holder and its affiliates shall include the number of shares of Common Stock issuable upon exercise of this Warrant with respect to which such determination is being made, but shall exclude the number of shares of Common Stock which would be issuable upon (i) exercise of the remaining, nonexercised portion of this Warrant beneficially owned by the Holder or any of its affiliates and (ii) exercise or conversion of the unexercised or nonconverted portion of any other securities of the Company (including, without limitation, any other Common Stock Equivalents) subject to a limitation on conversion or exercise analogous to the limitation contained herein beneficially owned by the Holder or any of its affiliates. Except as set forth in the preceding sentence, for purposes of this Section 1.3, beneficial ownership shall be calculated in accordance with Section 13(d) of the Securities Exchange Act of 1934, as amended (the “Exchange Act”) and the rules and regulations promulgated thereunder. To the extent that the limitation contained in this Section 1.3 applies, the determination of whether this Warrant is exercisable (in relation to other securities owned by the Holder together with any affiliates) and of which portion of this Warrant is exercisable shall be in the sole discretion of the Holder, and the submission of a Form of Subscription shall be deemed to be the Holder’s determination of whether this Warrant is exercisable (in relation to other securities owned by the Holder together with any affiliates) and of which portion of this Warrant is exercisable, in each case subject to the Beneficial Ownership Limitation, and the Company shall have no obligation to verify or confirm the accuracy of such determination. In addition, a determination as to any group status as contemplated above shall be determined in accordance with Section 13(d) of the Exchange Act and the rules and regulations promulgated thereunder. For purposes of this Section 1.3, in determining the number of outstanding shares of Common Stock, a Holder may rely on the number of outstanding shares of Common Stock as reflected in (A) the Company’s most recent periodic or annual report filed with the United States Securities and Exchange Commission, as the case may be, (B) a more recent public announcement by the Company or (C) a more recent written notice by the Company or its transfer agent setting forth the number of shares of Common Stock outstanding. Upon the written or oral request of a Holder, the Company shall within two trading days confirm orally and in writing to the Holder the number of shares of Common Stock then outstanding. In any case, the number of outstanding shares of Common Stock shall be determined after giving effect to the conversion or exercise of securities of the Company, including this Warrant, by the Holder or its affiliates since the date as of which such number of outstanding shares of Common Stock was reported. The “Beneficial Ownership Limitation” shall be 4.999% of the number of shares of the Common Stock outstanding immediately after giving effect to the issuance of shares of Common Stock issuable upon exercise of this Warrant. The Holder, upon not less than 61 days’ prior notice to the Company, may increase or decrease the Beneficial Ownership Limitation provisions of this 1.3, provided that the Beneficial Ownership Limitation in no event exceeds 9.99% of the number of shares of the Common Stock outstanding immediately after giving effect to the issuance of shares of Common Stock upon exercise of this Warrant held by the Holder and the provisions of this Section 1.3 shall continue to apply. Any such increase or decrease will not be effective until the 61st day after such notice is delivered to the Company. The provisions of this paragraph shall be construed and implemented in a manner otherwise than in strict conformity with the terms of this Section 1.3 to correct this paragraph (or any portion hereof) which may be defective or inconsistent with the intended Beneficial Ownership Limitation herein contained or to make changes or supplements necessary or desirable to properly give effect to such limitation. The limitations contained in this paragraph shall apply to a successor holder of this Warrant.
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2. Shares to be Fully Paid; Reservation of Shares. The Company covenants and agrees that all shares of Common Stock which may be issued upon the exercise of the rights represented by this Warrant will, upon issuance, be duly authorized, validly issued, fully paid and nonassessable and free from all preemptive rights of any shareholder and free of all taxes, liens and charges with respect to the issue thereof. The Company further covenants and agrees that during the period within which the rights represented by this Warrant may be exercised, the Company will at all times have authorized and reserved, for the purpose of issue or transfer upon exercise of the subscription rights evidenced by this Warrant, a sufficient number of shares of authorized but unissued shares of Common Stock.
3. Adjustment of Exercise Price and Number of Shares. The Exercise Price and the number of shares purchasable upon the exercise of this Warrant shall be subject to adjustment from time to time upon the occurrence of certain events described in this Section 3. Upon each adjustment of the Exercise Price, the Holder of this Warrant shall thereafter be entitled to purchase, at the Exercise Price resulting from such adjustment, the number of shares obtained by multiplying the Exercise Price in effect immediately prior to such adjustment by the number of shares purchasable pursuant hereto immediately prior to such adjustment, and dividing the product thereof by the Exercise Price resulting from such adjustment.
3.1 Subdivision or Combination of Stock. In case the Company shall at any time subdivide its outstanding shares of Common Stock into a greater number of shares, the Exercise Price in effect immediately prior to such subdivision shall be proportionately reduced, and conversely, in case the outstanding shares of the Common Stock of the Company shall be combined into a smaller number of shares, the Exercise Price in effect immediately prior to such combination shall be proportionately increased.
3.2 Reclassification. If any reclassification of the capital stock of the Company shall be effected in such a way that holders of Common Stock shall be entitled to receive stock, securities, or other assets or property, then, as a condition of such reclassification, lawful and adequate provisions shall be made whereby the Holder hereof shall thereafter have the right to purchase and receive (in lieu of the shares of the Common Stock immediately theretofore purchasable and receivable upon the exercise of the rights represented hereby) such shares of stock, securities or other assets or property as may be issued or payable with respect to or in exchange for a number of outstanding shares of such Common Stock equal to the number of shares of such Common Stock immediately theretofore purchasable and receivable upon the exercise of the rights represented hereby. In any reclassification described above, appropriate provision shall be made with respect to the rights and interests of the Holder of this Warrant to the end that the provisions hereof (including, without limitation, provisions for adjustments of the Exercise Price and of the number of shares purchasable and receivable upon the exercise of this Warrant) shall thereafter be applicable, as nearly as may be, in relation to any shares of stock, securities or assets thereafter deliverable upon the exercise hereof.
3.4 Notice of Adjustment. Upon any adjustment of the Exercise Price or any increase or decrease in the number of shares purchasable upon the exercise of this Warrant, the Company shall give written notice thereof, by first class mail postage prepaid, addressed to the registered Holder of this Warrant at the address of such Holder as shown on the books of the Company. The notice shall be signed by the Company’s chief financial officer and shall state the Exercise Price resulting from such adjustment and the increase or decrease, if any, in the number of shares purchasable at such price upon the exercise of this Warrant, setting forth in reasonable detail the method of calculation and the facts upon which such calculation is based.
3.5 Other Notices. If at any time:
(1) the Company shall declare any cash dividend upon its Common Stock;
(2) there shall be a Change of Control; or
(3) there shall be a voluntary or involuntary dissolution, liquidation or winding-up of the Company;
then, in any one or more of said cases, the Company shall give, by first class mail, postage prepaid, addressed to the Holder of this Warrant at the address of such Holder as shown on the books of the Company, (a) at least twenty (20) days prior written notice of the date on which the books of the Company shall close or a record shall be taken for such dividend or for determining rights to vote in respect of any such Change of Control or dissolution, liquidation or winding-up, and (b) in the case of any such Change of Control or dissolution, liquidation, or winding-up, at least twenty (20) days prior written notice of the date when the same shall take place. Any notice given in accordance with the foregoing clause (a) shall also specify, in the case of any such dividend, the date on which the holders of Common Stock shall be entitled thereto. Any notice given in accordance with the foregoing clause (b) shall also specify the date on which the holders of Common Stock shall be entitled to exchange their Common Stock for securities or other property deliverable upon such Change of Control, dissolution, liquidation, winding-up, or conversion, as the case may be.
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4. No Voting or Dividend Rights. Nothing contained in this Warrant shall be construed as conferring upon the Holder hereof the right to vote or to consent to receive notice as a shareholder of the Company or any other matters or any rights whatsoever as a shareholder of the Company. No dividends or interest shall be payable or accrued in respect of this Warrant or the interest represented hereby or the shares purchasable hereunder until, and only to the extent that, this Warrant shall have been exercised.
5. Warrants Transferable. Subject to compliance with applicable federal and state securities laws, this Warrant and all rights hereunder may be transferred, in whole or in part, without charge to the holder hereof (except for transfer taxes), upon the prior written consent of the Company and, thereafter, upon surrender of this Warrant properly endorsed and compliance with the provisions of this Warrant. Each taker and holder of this Warrant, by taking or holding the same, consents and agrees that this Warrant, when endorsed in blank, shall be deemed negotiable, and that the holder hereof, when this Warrant shall have been so endorsed, may be treated by the Company, at the Company’s option, and all other persons dealing with this Warrant as the absolute owner hereof for any purpose and as the person entitled to exercise the rights represented by this Warrant, or to the transfer hereof on the books of the Company and notice to the contrary notwithstanding; but until such transfer on such books, the Company may treat the registered owner hereof as the owner for all purposes.
6. Lost Warrants. Upon receipt of evidence reasonably satisfactory to the Company of the loss, theft, destruction, or mutilation of this Warrant and, in the case of any such loss, theft or destruction, upon receipt of an indemnity reasonably satisfactory to the Company, or in the case of any such mutilation upon surrender and cancellation of such Warrant, the Company, at its expense, will make and deliver a new Warrant, of like tenor, in lieu of the lost, stolen, destroyed or mutilated Warrant.
7. Modification and Waiver. Any term of this Warrant may be amended and the observance of any term of this Warrant may be waived (either generally or in a particular instance and either retroactively or prospectively) only with the written consent of the Company and the Holder hereof. Any amendment or waiver affected in accordance with this Section 7 shall be binding upon the Company and the Holder.
8. Notices. All notices and other communications from the Company to the Holder, or vice versa, shall be deemed delivered and effective when given personally or mailed by first-class registered or certified mail, postage prepaid, at such address as may have been furnished to the Company or the Holder, as the case may be, in writing by the Company or such holder from time to time.
9. Titles and Subtitles; Governing Law; Venue. The titles and subtitles used in this Warrant are used for convenience only and are not to be considered in construing or interpreting this Warrant. This Warrant is to be construed in accordance with and governed by the internal laws of the State of Delaware without giving effect to any choice of law rule that would cause the application of the laws of any jurisdiction other than the internal laws of the State of Delaware to the rights and duties of the Company and the Holder. All disputes and controversies arising out of or in connection with this Warrant shall be resolved exclusively by the state and federal courts in the State of Delaware, and each of the Company and the Holder hereto agrees to submit to the jurisdiction of said courts and agrees that venue shall lie exclusively with such courts.
10. Representations and Warranties. The Holder represents and warrants to the Company and follows: The Warrant is being acquired for Holder’s own investment portfolio and account (and not on behalf of, and without the participation of, any other Person) with the intent of holding such Warrant for investment and without the intent of participating, directly or indirectly, in a distribution of the Warrant and not with a view to, or for resale in connection with, any distribution of the Warrant or any portion thereof. Holder acknowledges that the Warrant has not been offered to Holder by means of publicly disseminated advertisements of sales literature. Holder is an “accredited investor” (as defined in Rule 501 promulgated under the Securities Act) and is knowledgeable and experienced in finance, securities and investments and has had sufficient experience analyzing and investing in securities similar to the Warrant so as to be capable of evaluating the merits and risks of an investment in the Warrant. Holder is able to bear the economic risk of an investment in the Warrant. Holder has had an opportunity to discuss the Company’s business, management, financial affairs and the terms and conditions of the issuance of the Warrant with the Company’s management. The foregoing, however, does not limit or modify the representations and warranties of the Company in the Asset Purchase Agreement entered into on the date hereof by and between the Company and Preprogen LLC or the rights and remedies of Holder for any breach of such representations and warranties. Holder understands that the Warrant will not have been registered pursuant to the Securities Act or any applicable state securities laws, that the Warrant will be characterized as “restricted securities” under federal securities laws, and that under such laws and applicable regulations the Warrant cannot be sold or otherwise disposed of without registration under the Securities Act or an exemption therefrom. In this connection, Holder represents that it is familiar with Rule 144 promulgated under the Securities Act, as currently in effect, and understands the resale limitations imposed thereby and by the Securities Act. Holder understands that no public market now exists for the Warrant, and that the Company has made no assurances that a public market will ever exist for the Warrant.
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11. Definition of Warrant Shares. For purposes of this Warrant, the following terms shall have the following meanings:
“Change of Control” shall mean that (A) the Company shall, directly or indirectly, in one or more related transactions, (i) consolidate or merge with or into (whether or not the Company is the surviving corporation) another Person, or (ii) sell, assign, transfer, convey or otherwise dispose of all or substantially all of the properties or assets of the Company to another Person, or (iii) another Person completes a purchase, tender or exchange offer that is accepted by the holders of more than the 50% of the outstanding shares of Common Stock (not including any shares of Common Stock held by the Person or Persons making or party to, or associated or affiliated with the Persons making or party to, such purchase, tender or exchange offer), or (iv) consummate a stock purchase agreement or other business combination (including, without limitation, a reorganization, recapitalization, spin-off or scheme of arrangement) with another Person whereby such other Person acquires more than the 50% of the outstanding shares of Common Stock (not including any shares of Common Stock held by the other Person or other Persons making or party to, or associated or affiliated with the other Persons making or party to, such stock purchase agreement or other business combination), or (v) reorganize, recapitalize or reclassify its Common Stock (other than as a result of a subdivision or combination of shares of Common Stock covered by Section 3.1 or 3.2 above) or (B) any “person” or “group” (as these terms are used for purposes of Sections 13(d) and 14(d) of the Exchange Act) is or shall become the “beneficial owner” (as defined in Rule 13d-3 under the Exchange Act), directly or indirectly, of 50% of the aggregate ordinary voting power represented by issued and outstanding shares of Common Stock.
“Person” means an individual, a limited liability company, a partnership, a joint venture, a corporation, a trust, an unincorporated organization, any other entity and a government or any department or agency thereof.
“Principal Trading Market” means the principal securities exchange or securities market in the United States on which the securities are then traded.
“Securities Act” means the Securities Act of 1933, as amended.
“Trading Day” means any day on which the applicable securities are traded on the Principal Trading Market; provided that “Trading Day” shall not include any day on which the applicable securities are scheduled to trade on such exchange or market for less than 4.5 hours or any day that the applicable securities are suspended from trading during the final hour of trading on such exchange or market (or if such exchange or market does not designate in advance the closing time of trading on such exchange or market, then during the hour ending at 4:00:00 p.m., New York time).
“Warrant Shares” shall mean the number of shares of the Company’s Common Stock issuable upon exercise of this Warrant.
[REMAINDER OF PAGE INTENTIONALLY LEFT BLANK]
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IN WITNESS WHEREOF, the Company has caused this Warrant to be duly executed by its officers, thereunto duly authorized as of the date first above written.
QuantRx Biomedical Corporation
By:
/s/ Shalom Hirschman
Shalom Hirschman
Chief Executive Officer
[Signature Page To Warrant]
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Acknowledged and Agreed by the Holder:
RASHBI CAPITAL GROUP, LLC
By:
/s/ Mayer Goldberger
[Signature Page To Warrant]
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FORM OF SUBSCRIPTION
(To be signed only upon exercise of Warrant)
To: QUANTRX BIOMEDICAL CORPORATION
The undersigned, the holder of a right to purchase shares of Common Stock of QuantRx Biomedical Corporation (the “Company”) pursuant to that certain Warrant to Purchase Common Stock of QuantRx Biomedical Corporation Number CSW-_____ (the “Warrant”), dated as of ____________ hereby irrevocably elects to exercise the purchase right represented by such Warrant for, and to purchase thereunder, __________________________ (_________) shares of Common Stock of the Company and (check one):
? herewith makes payment of ________________________ Dollars($__________) therefor in cash;
? elects a “cashless exercise” in accordance with Section 1.2 of the Warrant.
The undersigned represents that it is acquiring such securities for its own account for investment and not with a view to or for sale in connection with any distribution thereof.
DATED: ________________
____________________________
By:
Name:
Its:
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ACKNOWLEDGMENT
To: HOLDER
The undersigned hereby acknowledges that as of the date hereof, __________________ (___________) shares of Common Stock remain subject to the right of purchase in favor of _____________ pursuant to that certain Warrant to Purchase Common Stock of QuantRx Biomedical Corporation, number CSW-___ dated as of ____________.
DATED: ________________
QuantRx Biomedical Corporation
By:
Name:
Its:
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Warrant Receipt
The undersigned, ___________________, does hereby acknowledge receipt of Warrant Number CSW-___ dated, ________________, representing _____________ (________) shares of the Common Stock Warrants of QuantRx Biomedical Corporation
IN WITNESS WHEREOF, the undersigned has executed this Receipt as of the date set forth below.
Type: Common Stock Warrants
Warrant Number: CSW-___
Number of Shares:
Name: _______________________
Date: _______________________
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