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TempraMed Technologies — Regulatory Filings 2025
Sep 26, 2025
48560_rns_2025-09-25_415b8dc6-c325-44b1-b5da-df9e097cef55.pdf
Regulatory Filings
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LICENSE AGREEMENT
This License Agreement (this “Agreement”) is entered into as of May 17, 2016, by and between TempraMed Israel Ltd., an Israeli corporation with its principal place of business at 64 Heh B’Iyar, Tel Aviv 62198, Israel (the “Company”) and Ron Nagar, having an address at 64 Heh B’Iyar, Tel Aviv, Israel (the “Licensor”).
WHEREAS, the Company wishes to obtain an exclusive license from Licensor for the development and commercialization of the Licensor Patents (as defined below); and
WHEREAS, Licensor agrees to grant the Company such a license, all in accordance with the terms and conditions of this Agreement.
NOW, THEREFORE, the parties hereto, intending to be legally bound, hereby agree as follows:
- Definitions.
Whenever used in this Agreement with an initial capital letter, the terms defined in this Section 1, whether used in the singular or the plural, shall have the meanings specified below.
“Affiliate” means, with respect to either party, any person, organization or entity controlling, controlled by or under common control with, such party.
“Exit Event” means (i) a public offering of the shares of the Company or of an Affiliate which is a sublicensee of the Company with respect to all or substantially all of the rights granted to the Company under this Agreement (an “Affiliate Sublicensee”) at a valuation of at least US$80 million; (ii) a sale of all or substantially all of the Company’s or Affiliate Sublicensee’s assets or shares or an exclusive sublicense to all or substantially all of the Licensor Patents; (iii) the merger or consolidation of the Company with or into another corporation which results in more than 50% of the outstanding shares of the surviving entity being held by persons or other entities, who were not shareholders of the Company immediately prior to such transaction; (iv) a change in control of the Company or any other transaction or a series of related transactions as a result of which more than 50% of the issued and outstanding shares of the Company are held by any party who is not a shareholder of the Company, or an Affiliate thereof, immediately prior to such transaction; or (v) a transaction or series of related transactions whereby a shareholder in the Company together with its Affiliates, becomes the holder of all of the Company's shares; provided in each of (ii) through (v) above that the proceeds payable in such transaction to the Company, its equity holders, or the Affiliate Sublicensee, as applicable, is at least US$80 million.
“Know-how” means any discoveries, inventions (whether patentable or not), materials, information, data, designs, formulae, ideas, methods, models, assays, research plans, procedures, designs for experiments and tests and results of experimentation and testing (including results of research or development) and processes (including manufacturing processes, specifications and techniques).
“Licensor Patents” means (i) all patent applications and patents derived from patent applications
listed in Exhibit A, as may be amended in writing from time to time by mutual consent of the parties(ii), all divisional, continuation, and continuation-in-part applications of the foregoing applications, (iii) all patents issuing from any of the foregoing applications, and (iv) all reissues, reexaminations, extensions or restorations of any of the foregoing patents.
"Patent Challenge" means any action before any patent office, court or other tribunal or agency, challenging the validity, patentability, enforceability and/or scope of any of the Licensor Patents (including without limitation through an interference or reexamination procedures).
2. Title.
2.1. As between the parties, all rights, title and interest in and to the Licensor Patents are and shall be owned solely and exclusively by Licensor.
3. Patent Filing, Prosecution and Maintenance.
3.1. Filing and Prosecution. The Company shall be responsible for the preparation, filing, prosecution, protection and maintenance of the Licensor Patents, using independent patent counsel reasonably acceptable to the Licensor. The Company shall consult with the Licensor as to the preparation, filing, prosecution, protection and maintenance of the Licensor Patents reasonably prior to any deadline or action with respect to any material decision in the U.S. Patent & Trademark Office or any other patent office and shall instruct the patent counsel to furnish the Licensor with copies of all relevant documents reasonably in advance of such consultation.
3.2. Expenses. Subject to Section 3.3 below, the Company shall bear and pay for all documented patent-related expenses incurred in taking the actions listed in Section 3.1.
3.3. Abandonment.
3.3.1. Subject to the provisions of this Section 3.3.1, the Company may elect not to file, prosecute, protect and/or maintain any of the Licensor Patents (an "Abandoned Patent Right") in any country (an "Abandoned Country"). The Company shall provide Licensor with prompt written notice of such election, specifying the relevant Abandoned Patent Right and Abandoned Country (an "Abandonment Notice"). Upon receipt of such Abandonment Notice by Licensor, and only upon receipt thereof, the Company shall be released from its obligations to take such action and to bear the expenses incurred thereafter in such Abandoned Country with respect to such Abandoned Patent Right; and the license granted hereunder shall terminate with respect to such Abandoned Patent Right in such Abandoned Country, and Licensor shall be free, without further notice or obligation to the Company, to initiate and/or continue the preparation, filing, protection, prosecution, and maintenance of any Abandoned Patent Right in the Abandoned Country at its own expense, and to grant rights in and to such Abandoned Patent Rights with respect to such Abandoned Country to third parties.
3.3.2. In the event Licensor deems, in its sole discretion, that a Licensor Patent should be filed, prosecuted, protected and/or maintained in a specific country, then it shall provide the Company with written notice thereof. Within 14 days following receipt of such written notice, the Company shall provide the Licensor with notice of whether it will take all of the actions set forth in Licensor's notice. If the Company does not provide such notice within such time and/or in such
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notice it does not agree to take all such action, then the Licensor Patent(s) and the applicable country listed in the Licensor notice shall be deemed an Abandoned Patent Right and Abandoned Country, respectively, and the provisions of Section 3.3.1 shall apply, mutatis mutandis.
3.4. No Warranty. Nothing contained herein shall be deemed to be a warranty by Licensor that the patent application/s included in the Licensor Patent will result in an issued patent, or that any patent application or issued patent that is or may be included in the Licensor Patents will be valid or of any value or will afford adequate or commercially worthwhile protection.
- License Grant.
Subject to the terms and conditions set forth in this Agreement, Licensor hereby grants to the Company an exclusive, worldwide, fee-bearing license, under Licensor's rights in the Licensor Patents to develop, have developed, make, have made, use, have used, market, have marketed, offer for sale and sell, have offered for sale and have sold, import, have imported, reproduce, have reproduced, translate, have translated, export, have exported, distribute, have distributed, display, have displayed, update, have updated, revise, have revised, modify, have modified, promote and have promoted the Licensor Patents. Notwithstanding the above, the Company shall only be permitted to grant a sublicense under this Agreement to third parties and to its Affiliate Sublicensee.
- Consideration for Grant of License
5.1. Payment. In consideration for the rights and licenses granted to the Company pursuant to this Agreement, the Company shall pay to Licensor the following consideration:
5.1.1. Signing. Upon signing this Agreement, the Company will pay the Licensor an aggregate amount equal to US$1
5.1.2. Quarterly. The Company will pay the Licensor at the beginning of each fiscal quarter, starting as of July, 2016, an aggregate amount equal to US$1.0; provided that upon the Company consummating a financing in the Company, whether equity, debt or otherwise whereby the Company receives at least US$2,000,000, such fee shall increase to US$10,000 and will be increased by additional $US 15,000 with the closing of every additional financing to the Company of at least $US 1,000,000. At the time that Mr. Ron Nagar is not considered controlling shareholder in few number shareholders Company (בעל שליטה בחברת מעשים לפי תקנות מס הכנסה בישראל) The quarterly license fee shall be increased to $US250,000. The quarterly licensee fee to be paid under this Section 5.1.2 shall be referred to as the "Quarterly Payment".
5.2. Exit Fee. In the event the Company consummates a bona fide Exit Event with a third party, the Company or the other party in the Exit Event, as applicable (the "Other Party"), shall have the option, in their sole discretion, to acquire the Licensor Patents at the consummation of such Exit Event, by paying to the Licensor an aggregate amount equal to $US2,500,000 (the "Exit Payment"); provided that if the Other Party wishes to also acquire Abandoned Patent Rights, then the "Exit Payment" shall include the reimbursement of all of the Licensor's expenses incurred in connection with such Abandoned Patent Right. Contemporaneously and as a condition to the
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payment of the Exit Payment, all amounts owed prior to the consummation of such Exit Event and a pro-rated Quarterly Payment for the quarter for which a Quarterly Payment has not yet been made, the Licensee will sign documentation that sells, assigns, transfers and sets over to the Other Party, the entire right, title and interest in and to the Licensor Patent(s) for the United States and for all foreign countries, including any continuations, divisions, continuations-in-part, reissues, reexaminations, extensions or foreign equivalents thereof, and including the subject matter of all claims which may be obtained therefrom for its own use and enjoyment, and for the use and enjoyment of its successors, assigns or other legal representatives, as fully and entirely as the same would have been held and enjoyed by the Licensor if such assignment had not been made.
5.3. Late Payments. Any payments to be made under this Agreement that are not paid on or before the date such payments are due under this Agreement shall bear interest at an annual interest, compounded monthly, equal to PRIME + five percent (5%) above the London Interbank Offer Rate (LIBOR) as determined for each month on the last business day of that month, assessed from the day payment was initially due until the date of payment.
5.4. Payment Method. Each payment due to Licensor under this Agreement shall be paid by wire transfer of funds to Licensor’s account in accordance with written instructions provided by Licensor.
5.5. VAT; Withholding and Similar Taxes. All amounts to be paid to Licensor pursuant to this Agreement are exclusive of Value Added Tax. The Company shall add value added tax, as required by law, to all such amounts. If applicable laws require that taxes be withheld from any amounts due to Licensor under this Agreement, the Company shall (a) deduct these taxes from the remittable amount, (b) pay the taxes to the proper taxing authority, and (c) promptly deliver to Licensor a statement including the amount of tax withheld and justification therefore, and such other information as may be necessary for tax credit purposes.
- Notification.
The Company shall notify Licensor in writing: (i) within seven (7) days of the occurrence of any of the events specified in Section 11.2.4; and (ii) at least 7 days prior to the closing of an Exit Event, which notice shall include a description of such Exit Event.
- Confidential Information
Each party agrees that, without the prior written consent of the other party for the longer of: (a) the term of this Agreement; and (b) a period of seven (7) years from date of disclosure, it will keep confidential, and not disclose or use Confidential Information (as defined below) other than for the purposes of this Agreement. Each party shall treat such Confidential Information with the same degree of confidentiality as it keeps its own confidential information, but in all events no less than a reasonable degree of confidentiality. A party may disclose Confidential Information only to its employees and consultants, its Affiliates, and to its sublicensees who have a “need to know” such information in order to enable such party to exercise its rights or fulfill its obligations under this Agreement, and/or to exploit the Licensor Patents as permitted under this Agreement; provided that such employees, consultants and Affiliates are legally bound by agreements which impose confidentiality and non-use obligations comparable to those set forth in this Agreement.
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For purposes of this Agreement, “Confidential Information” means any scientific, technical, trade or business information relating to the Licensor Patents designated as confidential or which otherwise should reasonably be construed under the circumstances as being confidential disclosed by one party to the other party, whether in oral, written, graphic or machine-readable form, except to the extent such information: (i) was known to the receiving party at the time it was disclosed, other than by previous disclosure by or on behalf of the disclosing party; (ii) is at the time of disclosure or later becomes publicly known under circumstances involving no breach of this Agreement by the receiving party; (iii) is lawfully made available to the receiving party by a third party who is not subject to obligations of confidentiality to the disclosing party with respect to such information; (iv) is independently developed by the receiving party.
8. Enforcement of Patent Rights.
8.1. Notice. In the event either party becomes aware of any possible or actual infringement or unauthorized possession, knowledge or use of the Licensor Patents (collectively, an “Infringement”), that party shall promptly notify the other party and provide it with details regarding such Infringement.
8.2. Suit by the Company. The Company shall take such action as reasonably necessary in order to prosecute, prevent, and/or terminate any Infringement. Licensor shall have the right to approve the counsel selected by the Company to represent the parties, such approval not to be unreasonably withheld or delayed. The expenses of such suit or suits, including any expenses of Licensor incurred in conjunction with the prosecution of such suits or the settlement thereof, shall be paid for entirely by the Company and the Company shall hold Licensor free, clear and harmless from and against any and all costs of such litigation, including attorney’s fees. The Company shall not compromise or settle such litigation without the prior written consent of Licensor, which consent shall not be unreasonably withheld or delayed. In the event the Company exercises its right to sue pursuant to this Section 8.2, any sums recovered in such suit or in settlement thereof shall be retained by the Company.
8.3. Suit by Licensor. If the Company does not take action in the prosecution, prevention, or termination of any Infringement pursuant to Section 8.2, and has not commenced negotiations with the infringer for the discontinuance of said Infringement, within 10 days after receipt of notice to the Company by Licensor (or provision of a similar notice by the Company to Licensor) of the existence of an Infringement, Licensor may, without derogating from any other remedy available to it hereunder or applicable law, elect to do so. The expenses of such suit or suits that Licensor elects to bring shall be paid for entirely by Licensor, other than the expenses of the Company incurred in conjunction with the prosecution of such suits or the settlement thereof, which shall be paid for entirely by the Company. In the event Licensor exercises its right to sue pursuant to this Section 8.3, any sums recovered in such suit or in settlement thereof shall be retained by Licensor.
8.4. Own Counsel. Each party shall always have the right to be represented by counsel of its own selection and at its own expense in any suit instituted under this Section 8 by the other party for Infringement.
8.5. Cooperation. Each party agrees to cooperate fully in any action under this Section 8
which is controlled by the other party.
8.6. Standing. If a party lacks standing and the other party has standing to bring any such suit, action or proceeding, then such other party shall do so at the request of and at the expense of the requesting party. If either party determines that it is necessary or desirable for another party to join any such suit, action or proceeding, the other party shall execute all papers and perform such other acts as may be reasonably required in the circumstances.
- Warranties; Limitation of Liability; Disclaimer.
9.1. Warranty of the Company. The Company warrants that it will comply with, and shall ensure that its Affiliates and sublicensees comply with, all local, state, and national laws and regulations relating to the development, manufacture, use, and sale of any product or service using the Licensor Patents.
9.2. Disclaimer. LICENSOR MAKES NO REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED, WITH RESPECT TO THE LICENSOR PATENTS OR OTHER SUBJECT MATTER OF THIS AGREEMENT. AMONG OTHER THINGS, LICENSOR DISCLAIMS ANY EXPRESS OR IMPLIED WARRANTY: (A) AS TO THE NOVELTY OR THE COMMERCIAL VALUE OF THE LICENSOR PATENTS (OR ANY PART THEREOF); (B) AS TO THE VALIDITY OR SCOPE OF THE LICENSOR PATENTS; (C) OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE; AND (D) THAT THE LICENSOR PATENTS MAY BE EXPLOITED OR USED WITHOUT INFRINGING OTHER PATENTS OR INTELLECTUAL PROPERTY RIGHTS OF THIRD PARTIES.
9.3. Limitation of Liability. Licensor shall not be liable to the Company with respect to any subject matter of this Agreement under any contract, negligence, strict liability or other legal or equitable theory for (i) any indirect, incidental, consequential or punitive damages or lost profits, or (ii) cost of procurement of substitute goods, technology or services.
- No Liability; Indemnification.
10.1. No Liability. Licensor, its affiliates and their respective directors, officers, employees, and agents and its respective successors, heirs and assigns (the "Licensor Indemnitees") shall not be liable for the practice or use of any of the Licensor Patents or any part thereof by the Company, its Affiliates or any of their sublicensees, or with respect to any product, process, or service that is made, used, or sold pursuant to any right or license granted by Licensor to the Company under this Agreement. In any event, Licensor's total liability under this Agreement shall not exceed the sums received by Licensor from the Company under this Agreement in the 6 month period preceding the claim.
10.2. Indemnity. The Company shall indemnify, defend, and hold harmless the Licensor Indemnitees against any liability, damage, loss, or expense (including reasonable attorneys fees and expenses of litigation) incurred by or imposed upon any of the Licensor Indemnitees in connection with any claims, suits, actions, demands or judgments ("Claims") under any theory of liability (including without limitation actions in the form of tort, warranty, or strict liability and
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regardless of whether such action has any factual basis) resulting from or arising out of the practice or use of any of the Licensor Patents (or any part thereof) by the Company, its Affiliates or any of their sublicensees, or concerning any product, process, or service that is made, used, or sold pursuant to any right or license granted by Licensor to the Company under this Agreement; provided however that the aforesaid shall not apply to any act or omission which is the result of willful misconduct or fraud by such Licensor Indemnitee.
10.3. Procedures. If any Licensor Indemnitee receives notice of any Claim, such Licensor Indemnitee shall, as promptly as is reasonably possible, give the Company notice of such Claim; provided, however, that failure to give such notice promptly shall only relieve the Company of any indemnification obligation it may have hereunder to the extent, and only to such extent, such failure diminishes the ability of the Company to respond to or to defend the Licensor Indemnitee against such Claim. Licensor and the Company shall consult and cooperate with each other regarding the response to and the defense of any such Claim and the Company shall, upon its acknowledgment in writing of its obligation to indemnify the Licensor Indemnitee, be entitled to and shall assume the defense or represent the interests of the Licensor Indemnitee in respect of such Claim, that shall include the right to select and direct legal counsel and other consultants to appear in proceedings on behalf of the Licensor Indemnitee and to propose, accept or reject offers of settlement, all at its sole cost; provided, however, that no such settlement shall be made without the prior written consent of the Licensor Indemnitee, such consent not to be unreasonably withheld. Nothing herein shall prevent the Licensor Indemnitee from retaining its own counsel and participating in its own defense at its own cost and expense.
11. Term and Termination.
11.1. Term. The term of this Agreement shall commence on the Effective Date and, unless earlier terminated as provided in this Section 11, shall continue in full force and effect until terminated in accordance with the terms of this Section 11.
11.2. Termination.
11.2.1. Termination Without Cause. The Company may terminate this Agreement for any reason upon 60 days prior written notice to Licensor.
11.2.2. Termination for Default. In the event that either party commits a material breach of its obligations under this Agreement and fails to cure that breach within 30 days after receiving written notice thereof, the other party may terminate this Agreement immediately upon written notice to the party in breach. For the avoidance of doubt, it is expressly agreed that breach of a payment obligation under the Agreement by the Company shall be deemed to be a material breach of this Agreement and subject to the foregoing provisions.
11.2.3. Bankruptcy. Licensor may terminate this Agreement upon notice to the Company upon any of the following events: the granting of a winding-up order in respect of the Company, or upon an order being granted against the Company for the appointment of a receiver, or if the Company passes a resolution for its voluntary winding-up, or if a temporary or permanent liquidator or receiver is appointed in respect of the Company, or if a temporary or permanent attachment order is granted on the Company's assets, or a substantial portion thereof, or if the
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Company shall seek protection under any laws or regulations, the effect of which is to suspend or impair the rights of any or all of its creditors, or to impose a moratorium on such creditors, or if anything analogous to any of the foregoing in this Section 11.2.3 under the laws of any jurisdiction occurs in respect of the Company.
11.2.4. Termination by Licensor upon Challenge to Validity of Patents. Licensor shall be entitled to terminate this Agreement with five days prior notice to the Company in the event that the Company or its Affiliate brings a Patent Challenge against Licensor. In the event that a Patent Challenge is brought against Licensor by a sublicensee, Licensor shall be entitled to require that the Company terminate the sublicensee with such sublicensee within 20 days after receipt of written notice from Licensor. In the event that the Company does not terminate the sublicensee within such period, Licensor shall be entitled to terminate this Agreement.
11.3. Effect of Termination
11.3.1. Termination of Rights. Upon termination by the Company pursuant to Sections 11.2.1 or 11.2.2 or by Licensor pursuant to Sections 11.2.2, 11.2.3, 11.2.4, or (a) the rights and licenses granted to the Company under Section 4 shall terminate; (b) all rights in and to the Licensor Patents shall revert to Licensor, and the Company and its sublicensees shall not be entitled to make any further use whatsoever of or practice the Licensor Patents; and (c) any existing sublicensee shall terminate; provided, however, that Licensor shall be entitled, but not obligated, at the request of such sublicensee, to enter into a new license agreement with such sublicensee on substantially the same terms as those contained in such sublicense agreement, provided that such terms shall be amended, if necessary, to the extent required to ensure that such sublicense agreement does not impose any obligations or liabilities on Licensor which are not included in this Agreement.
11.3.2. Accruing Obligations. Termination of this Agreement shall not relieve the parties of obligations occurring prior to such termination, including obligations to pay amounts accruing hereunder up to the date of termination.
11.4. Survival. The parties' respective rights, obligations and duties under Sections 2 (Title), 5.2 (Late Payments), 5.4 (Payment Methods), 5.5 (VAT; Withholding and Similar Taxes), 7 (Confidential Information), 9 (Warranties; Disclaimer), 10 (No Liability; Indemnification), 11.3 (Effect of Termination), 12.2 (Notices) and 12.3 (Governing Law and Jurisdiction), as well as any rights, obligations and duties which by their nature extend beyond the expiration or termination of this Agreement, shall survive any expiration or termination of this Agreement.
12. Miscellaneous.
12.1. Entire Agreement. This Agreement is the sole agreement with respect to the subject matter hereof and except as expressly set forth herein, supersedes all other agreements and understandings between the parties with respect to the same.
12.2. Notices. Unless otherwise specifically provided, all notices required or permitted by this Agreement shall be in writing and may be delivered personally, or may be sent by facsimile, e-mail, or certified mail, return receipt requested, to the following addresses, unless the parties are
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subsequently notified of any change of address in accordance with this Section:
If to the Company:
64 Heh B’Iyar Tel Aviv 62198, Israel
If to Licensor:
Ron Nagar, 64 Heh B’Iyar Tel Aviv 62198, Israel
Any notice shall be deemed to have been received as follows: (i) by personal delivery, upon receipt; (ii) by facsimile or e-mail, one business day after transmission; (iii) by airmail, seven business days after delivery to the postal authorities by the party giving notice. If notice is sent by email, a confirming copy of the same shall be sent by mail to the same address.
12.3. Governing Law and Jurisdiction. This Agreement shall be governed by and construed in accordance with the laws of Israel, without regard to the application of principles of conflicts of law. The parties hereby consent to personal jurisdiction in Israel and agree that the competent court in Tel Aviv, Israel shall have sole jurisdiction over any and all matters arising from this Agreement, except that Licensor may bring suit against the Company in any other jurisdiction outside Israel in which the Company has assets or a place of business.
12.4. Binding Effect. This Agreement shall be binding upon and inure to the benefit of the parties and their respective legal representatives, successors and permitted assigns.
12.5. Headings. Section and subsection headings are inserted for convenience of reference only and do not form a part of this Agreement.
12.6. Counterparts. This Agreement may be executed simultaneously in two or more counterparts, each of which shall be deemed an original.
12.7. Amendment; Waiver. This Agreement may be amended, modified, superseded or canceled, and any of the terms may be waived, only by a written instrument executed by each party or, in the case of waiver, by the party waiving compliance. The delay or failure of any party at any time or times to require performance of any provisions hereof shall in no manner affect the rights at a later time to enforce the same. No waiver by either party of any condition or of the breach of any term contained in this Agreement, whether by conduct, or otherwise, in any one or more instances, shall be deemed to be, or considered as, a further or continuing waiver of any such condition or of the breach of such term or any other term of this Agreement.
12.8. No Agency or Partnership. Nothing contained in this Agreement shall give any party the right to bind another, or be deemed to constitute either party as agents for each other or as partners with each other or any third party.
12.9. Assignment and Successors. The Company may not assign this Agreement in whole or
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in part, nor delegate any of its rights or duties under this Agreement without the prior written consent of Licensor. For purposes of this Section, the acquisition, merger, consolidation, or change in control of the Company or any assignment by the Company by operation of law shall be deemed an assignment of this Agreement that requires Licensor’s prior written consent. Notwithstanding the above, the Company may freely assign this Agreement in connection with an Exit Event, by providing notice of such assignment to the Licensor.
12.10. Interpretation. The parties hereto acknowledge and agree that: (i) each party and its counsel reviewed and negotiated the terms and provisions of this Agreement and have contributed to its revision; (ii) the rule of construction to the effect that any ambiguities are resolved against the drafting party shall not be employed in the interpretation of this Agreement; and (iii) the terms and provisions of this Agreement shall be construed fairly as to both parties hereto and not in favor of or against either party, regardless of which party was generally responsible for the preparation of this Agreement.
12.11. Severability. If any provision of this Agreement is or becomes invalid or is ruled invalid by any court of competent jurisdiction or is deemed unenforceable, it is the intention of the parties that the remainder of this Agreement shall not be affected, if the essential terms and conditions of this Agreement for each party remain valid, binding and enforceable.
IN WITNESS WHEREOF, the parties have caused this License Agreement to be executed by their duly authorized representatives as of the date first written above.
| "Ron Nagar" | "Ron Nagar" |
|---|---|
| the Company | the Licensor |
| Name: Ron Nagar | Name: Ron Nagar |
| Title: President & CEO |
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Exhibit A
| # | Title | Filling Date | Application Number |
|---|---|---|---|
| 1 | DEVICE SYSTEM AND METHOD FOR STORING, PROTECTING FROM ENVIRONMENTAL CONDITIONS, AND USING DRUGS | July 15, 2014 | 62/024,481 |
| 2 | DEVICE, SYSTEM AND METHOD FOR CONTROLLING CONDITIONS AND DELIVERY OF DRUGS | August 31, 2014 | 62/044,258 |
| 3 | DEVICE, SYSTEM AND METHOD FOR CONTROLLING CONDITIONS AND DELIVERY OF DRUGS | Sept. 23, 2014 | 62/053,823 |
| 4 | DEVICE, SYSTEM AND METHOD FOR CONTROLLING CONDITIONS AND DELIVERY OF DRUGS | Nov. 11,2014 | 62/077,918 |
| 5 | DEVICE, SYSTEM AND METHOD FOR CONTROLLING CONDITIONS AND DELIVERY OF DRUGS | Nov. 16,2014 | 62/080366 |
| 6 | DEVICE, SYSTEM AND METHOD FOR CONTROLLING CONDITIONS AND DELIVERY OF DRUGS | Nov. 23,2014 | 62/083275 |
| 7 | DEVICE, SYSTEM AND METHOD FOR CONTROLLING CONDITIONS AND DELIVERY OF DRUGS | Dec. 2, 2014 | 62/086689 |
| 8 | DEVICE, SYSTEM AND METHOD FOR CONTROLLING CONDITIONS AND DELIVERY OF SUBSTANCES | Dec. 28, 2014 | 62/097087 |
| 9 | DEVICE, SYSTEM AND METHOD FOR CONTROLLING CONDITIONS AND DELIVERY OF SUBSTANCES | March 2, 2015 | 62/127008 |
| 10 | DEVICE, SYSTEM AND METHOD FOR CONTROLLING CONDITIONS AND DELIVERY OF SUBSTANCES | April 12, 2015 | 62/146307 |
| 11 | DEVICE, SYSTEM AND METHOD FOR CONTROLLING CONDITIONS AND DELIVERY OF SUBSTANCES | April 21, 2015 | 62/150567 |
| 12 | DEVICE, SYSTEM AND METHOD FOR CONTROLLING CONDITIONS AND DELIVERY OF SUBSTANCES | May 14, 2015 | 62/161272 |
| 13 | DEVICE, SYSTEM AND METHOD FOR CONTROLLING AND MAINTAINING CONDITIONS OF SUBSTANCES | Nov. 23, 2015 | 62/258556 |
| 14 | DEVICE, SYSTEM AND METHOD FOR CONTROLLING AND MAINTAINING CONDITIONS OF SUBSTANCES | Dec. 20, 2015 | 62/269993 |
| 15 | DEVICE, SYSTEM AND METHOD FOR CONTROLLING CONDITIONS OF SUBSTANCES | Feb. 1, 2016 | 62/289381 |
| 16 | DEVICE, SYSTEM AND METHOD FOR CONTROLLING CONDITIONS OF SUBSTANCES | Feb. 25, 2016 | 62/299573 |
| 17 | DEVICE, SYSTEM AND METHOD FOR CONTROLLING CONDITIONS AND DELIVERY OF SUBSTANCES | July 15, 2015 | PCT/US2015/040655 |
| WO 2016/011207 |
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ASSIGNMENT
Ron NAGAR, residing at 64 Hey BeIyar St., 6219812 Tel Aviv, ISRAEL (referred to as "Assignor") have made invention(s) ("Inventions") as set forth in patent applications, patents, registered designs and design registration applications identified in Schedule A (together the "Patents"). For the avoidance of doubt, said Inventions also include designs.
WHEREAS, TempraMed Israel, Ltd., a Corporation having its principal place of business at 64 Hey BeIyar St., 6219812 Tel Aviv, ISRAEL, its successors, legal representatives, and assigns (the "Assignee") is desirous of acquiring the Assignors' entire right, title, and interest in and to the Inventions; the Patents identified in Schedule A; the right to file an application(s) for patent and/or registered design of the United States or other countries on any of the Inventions; any applications for patent and/or registered design of the United States or other countries claiming priority to, and/or the benefit of, any of said Patents; any provisional or other right to recover any and all past, present, and future damages, including royalties, for any and all past, present, and future infringements of said Patents; and any and all patents and/or registered design(s) of the United States or other countries that may be granted therefor or thereon.
NOW, THEREFORE, for good and sufficient consideration, the receipt of which is hereby acknowledged, and to the extent that an Assignor has not done so already via a prior agreement with the Assignee or a predecessor in interest of the Assignee, or if the Assignor has already done so via a prior agreement with the Assignee or a predecessor in interest of the Assignee then in confirmation of said prior agreement, the Assignor has sold, assigned, transferred, and set over, and by these presents does sell, assign, transfer, and set over, unto the Assignee, its successors, legal representatives, and assigns, the Assignor's entire right, title, and interest in:
(a) the Inventions;
(b) the Patents identified in Schedule A;
(c) the right to file application(s) for patent and/or registered design(s) of the United States or other countries on any of the Inventions, including all rights under the Hague Convention, the Paris Convention for the Protection of Industrial Property, and under the Patent Cooperation Treaty, and all rights of claiming priority in any country of the world;
(d) any application(s) for patent and/or registered design of the United States or other countries claiming any of the Inventions;
(e) any application(s) for patent and/or registered design of the United States or other countries claiming priority to, and/or the benefit of, at least one of the application(s) for patent and/or registered design identified above or any application(s) for patent and/or registered design claiming any of the Inventions, including any priority application(s), substitute application(s), division(s), continuation(s), and continuation(s)-in-part;
(f) any provisional or other right to recover any and all past, present, and future damages, including royalties, for any and all past, present, and future infringements of any application for patent and/or registered design identified in the preceding
317070772v1
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paragraphs (b)-(e) and of any and all patent(s) and/or registered design(s) granted based thereon in the United States and in all other countries; and
(g) any patent(s) and/or registered design(s) of the United States or other countries that may be granted for or on any application for patent and/or registered design identified in the preceding paragraphs (b)-(e), including any reissue(s), reexamination(s), revival(s), renewal(s) and extension(s) of said patent(s) and/or registered design(s).
The above-granted rights, titles, and interests are to be held and enjoyed by the Assignee, for its own use and behalf and the use and behalf of its successors, legal representatives, and assigns, as fully and entirely as the same would have been held and enjoyed by the Assignor had this sale and assignment not been made.
The Assignor hereby represents to the Assignee, its successors, legal representatives, and assigns, that, at the time of execution and delivery of these presents, or if applicable, at such time said prior agreement was executed, the Assignor is a lawful owner of an undivided interest in the Assignor's entire right, title, and interest in and to the Inventions, that the Inventions are unencumbered, except, if applicable, by obligation to assign in accordance with said prior agreement, and that the Assignor has good and full right and lawful authority to sell and convey the same in the manner set forth herein, and that Assignor will not make or enter into any assignment, sale, agreement or encumbrance which would conflict with these presents. The Assignor also hereby represents that, except for any prior agreement, if applicable, the Assignor has not previously sold, transferred, or encumbered any part of Assignor's right, title, and interest in the Inventions.
The Assignor hereby covenants and agrees to and with the Assignee, its successors, legal representatives, and assigns, that the Assignor will sign all papers and documents, take all lawful oaths, and do all acts necessary or required to be done in connection with any and all proceedings for the procurement, maintenance, enforcement and defense of the Inventions, said Patents, including interference and derivation proceedings, and any post-grant proceedings (e.g., opposition proceedings, post-grant reviews, Inter partes reviews, supplemental examinations, etc.) without charge to the Assignee, its successors, legal representatives, and assigns, but at the cost and expense of the Assignee, its successors, legal representatives, and assigns.
The Assignor waives all rights to challenge the validity of said Inventions in the United States and its territorial possessions and in all foreign countries and of all Letters Patent or similar legal protection in the United States and its territorial possessions and in any and all foreign countries to be obtained for said Inventions by said application or any continuation, continuation-in-part, divisional, renewal, substitute, or reissue thereof or any legal equivalent thereof in a foreign country for the full term or terms for which the same may be granted.
The Assignor hereby requests the Commissioner of Patents to issue any Letters Patent for any US application for patent of the United States of said Patents to the Assignee, as the Assignee of said Inventions, for the use and behalf of the Assignee, its successors, legal representatives, and assigns.
The Assignor and Assignee understand that electronic signatures are acceptable and that, by signing electronically, signatories agree to the use of electronic signatures.
317070772 v1
For and on behalf of ASSIGNEE:
Date: 6 APRIL 2025
By: "Ron Nagar"
Name: Ron Nagar
Title: President & CEO
Company: TempraMed Israel, Ltd.
By signing, I confirm that I am entitled to sign legally binding acts on behalf of TempraMed Israel, Ltd.
My position in TempraMed Israel, Ltd. is President & CEO
Witness: [redacted]
Signature: [redacted]
Date: 6 APRIL 2025
Witness: [redacted]
Signature: [redacted]
Date: 6 APRIL 2025
Printed Name
317070772 v1
Page 3 of 4
6 APRIL 2025
Date
"Ron Nagar"
Witness:
[redacted]
6 APRIL 2025
Signature
[redacted]
Printed Name
Witness:
[redacted]
6 APRIL 2025
Signature
[redacted]
Printed Name
317070772 v1
SCHEDULE A
| Family | Appln./Pat. No. | Country | Title | Filing Date | Issue Date |
|---|---|---|---|---|---|
| 002 | BR112021006921-6 | Brazil | DEVICES, SYSTEMS AND METHODS FOR CONTROLLING ENVIRONMENTAL CONDITIONS OF SUBSTANCES | 10/24/2019 | |
| 002 | 201980070213.2 / ZL2019800 | China | DEVICES, SYSTEMS AND METHODS FOR CONTROLLING ENVIRONMENTAL CONDITIONS OF SUBSTANCES | 10/24/2019 | 5/23/2023 |
| 002 | 19875793.2 | Europe | DEVICES, SYSTEMS AND METHODS FOR CONTROLLING ENVIRONMENTAL CONDITIONS OF SUBSTANCES | 10/24/2019 | |
| 002 | 202117008939 / 512754 | India | DEVICES, SYSTEMS AND METHODS FOR CONTROLLING ENVIRONMENTAL CONDITIONS OF SUBSTANCES | 10/24/2019 | 2/20/2024 |
| 002 | 2024-108176 | Japan | DEVICES, SYSTEMS AND METHODS FOR CONTROLLING ENVIRONMENTAL CONDITIONS OF SUBSTANCES | 10/24/2019 | |
| 002 | 2021-518128 | Japan | DEVICES, SYSTEMS AND METHODS FOR CONTROLLING ENVIRONMENTAL CONDITIONS OF SUBSTANCES | 10/24/2019 | |
| 002 | MX/a/2021/004595 | Mexico | DEVICES, SYSTEMS AND METHODS FOR CONTROLLING ENVIRONMENTAL CONDITIONS OF SUBSTANCES | 10/24/2019 | |
| 002 | 10-2021-7011422 | S.Korea | DEVICES, SYSTEMS AND METHODS FOR CONTROLLING ENVIRONMENTAL CONDITIONS OF SUBSTANCES | 10/24/2019 | |
| 002 | 17/288,497 | US | DEVICES, SYSTEMS AND METHODS FOR CONTROLLING ENVIRONMENTAL CONDITIONS OF SUBSTANCES | 10/24/2019 | |
| 002 | 202310499587.4 | China | ENVIRONMENTAL CONTROL ASSEMBLY, SYSTEM AND METHOD | 10/24/2019 | |
| 1.1.1.1.1.1.1.1.1.1.1.1.1.1.1.1.1.1.1.1.1.1.1.1.1.1.1.1.1.1.1.1.1.1.1.1.1.1.1.1.1.1.1.1.1.1.1.1.1.1.1 | |||||
| 003 | WIPO109730 / DM/219048 | Europe | AN APPARATUS FOR ENVIRONMENTAL CONTROL OF A SUBSTANCE | 10/29/2021 | 10/29/2021 |
| 003 | WIPO109730 / DM/219048 | Europe | AN APPARATUS FOR ENVIRONMENTAL CONTROL OF A SUBSTANCE | 10/29/2021 | 10/29/2021 |
| 003 | WIPO109730 / DM/219048 | Europe | AN APPARATUS FOR ENVIRONMENTAL CONTROL OF A SUBSTANCE | 10/29/2021 | 10/29/2021 |
| 003 | WIPO109730 / DM/219048 | Europe | AN APPARATUS FOR ENVIRONMENTAL CONTROL OF A SUBSTANCE | 10/29/2021 | 10/29/2021 |
| 003 | WIPO109730 / DM/219048 | Europe | AN APPARATUS FOR ENVIRONMENTAL CONTROL OF A SUBSTANCE | 10/29/2021 | 10/29/2021 |
| 003 | WIPO109730 / DM/219048 | Europe | AN APPARATUS FOR ENVIRONMENTAL CONTROL OF A SUBSTANCE | 10/29/2021 | 10/29/2021 |
| 003 | WIPO109730 / DM/219048 | Europe | AN APPARATUS FOR ENVIRONMENTAL CONTROL OF A SUBSTANCE | 10/29/2021 | 10/29/2021 |
| 003 | WIPO109730 / DM/219048 | Europe | AN APPARATUS FOR ENVIRONMENTAL CONTROL OF A SUBSTANCE | 10/29/2021 | 10/29/2021 |
| 003 | WIPO109730 / DM/219048 | Europe | AN APPARATUS FOR ENVIRONMENTAL CONTROL OF A SUBSTANCE | 10/29/2021 | 10/29/2021 |
| 003 | WIPO109730 / DM/219048 | 010 | INDIA | 10/29/2021 | 5/17/2023 |
| 003 | WIPO109730 | Intl. Design Deposit | AN APPARATUS FOR ENVIRONMENTAL CONTROL OF A SUBSTANCE | 10/29/2021 | 10/29/2021 |
| 003 | 2021-503144 / DM/219048 | Japan | AN APPARATUS FOR ENVIRONMENTAL CONTROL OF A SUBSTANCE | 10/29/2021 | 10/29/2021 |
| 003 | 2021-503145 / DM/219048 | Japan | AN APPARATUS FOR ENVIRONMENTAL CONTROL OF A SUBSTANCE | 10/29/2021 | 10/29/2021 |
| 003 | 2021-503146 / DM/219048 | Japan | AN APPARATUS FOR ENVIRONMENTAL CONTROL OF A SUBSTANCE | 10/29/2021 | 10/29/2021 |
| 003 | 2021-503147 / DM/219048 | Japan | AN APPARATUS FOR ENVIRONMENTAL CONTROL OF A SUBSTANCE | 10/29/2021 | 10/29/2021 |
| 003 | 2021-503148 / DM/219048 | Japan | AN APPARATUS FOR ENVIRONMENTAL CONTROL OF A SUBSTANCE | 10/29/2021 | 10/29/2021 |
| 003 | 2021-503149 / 1742854 | Japan | AN APPARATUS FOR ENVIRONMENTAL CONTROL OF A SUBSTANCE | 4/17/2023 | |
| 003 | 2021-503150 / DM/219048 | Japan | AN APPARATUS FOR ENVIRONMENTAL CONTROL OF A SUBSTANCE | 10/29/2021 |
PAGE 1 of 2
PAGE 2 of 2
SCHEDULE A
| Family | Appln./Pat. No | Country | Title | Filing Date | Issue Date |
|---|---|---|---|---|---|
| 003 | 2021-503151 / DM/219048 | Japan | AN APPARATUS FOR ENVIRONMENTAL CONTROL OF A SUBSTANCE | 10/29/2021 | |
| 003 | 2021-503152 / DM/219048 | Japan | AN APPARATUS FOR ENVIRONMENTAL CONTROL OF A SUBSTANCE | 10/29/2021 | |
| 003 | 2021-503153 / DM/219048 | Japan | AN APPARATUS FOR ENVIRONMENTAL CONTROL OF A SUBSTANCE | 10/29/2021 | |
| 003 | 2021-503154 / DM/219048 | Japan | AN APPARATUS FOR ENVIRONMENTAL CONTROL OF A SUBSTANCE | 10/29/2021 | |
| 003 | MX/I/2022/001270 / 68819 | Mexico | AN APPARATUS FOR ENVIRONMENTAL CONTROL OF A SUBSTANCE | 10/29/2021 | 12/13/2023 |
| 003 | MX/I/2023/002002 / 68544 | Mexico | AN APPARATUS FOR ENVIRONMENTAL CONTROL OF A SUBSTANCE | 10/29/2021 | 11/10/2023 |
| 003 | WIPO109730 / DM/219048 | S.Korea | MEDICAL APPARATUS AND EQUIPMENT | 10/29/2021 | 10/29/2021 |
| 003 | WIPO109730 / DM/219048 | S.Korea | MEDICAL APPARATUS AND EQUIPMENT | 10/29/2021 | 10/29/2021 |
| 003 | WIPO109730 / DM/219048 | S.Korea | MEDICAL APPARATUS AND EQUIPMENT | 10/29/2021 | 10/29/2021 |
| 003 | WIPO109730 / DM/219048 | S.Korea | MEDICAL APPARATUS AND EQUIPMENT | 10/29/2021 | 10/29/2021 |
| 003 | WIPO109730 / DM/219048 | S.Korea | MEDICAL APPARATUS AND EQUIPMENT | 10/29/2021 | 10/29/2021 |
| 003 | WIPO109730 / DM/219048-00 | S.Korea | MEDICAL APPARATUS AND EQUIPMENT | 10/29/2021 | 11/14/2023 |
| 003 | WIPO109730 / DM/219048 | S.Korea | MEDICAL APPARATUS AND EQUIPMENT | 10/29/2021 | 10/29/2021 |
| 003 | WIPO109730 / DM/219048 | S.Korea | MEDICAL APPARATUS AND EQUIPMENT | 10/29/2021 | 10/29/2021 |
| 003 | WIPO109730 / DM/219048-00 | S.Korea | MEDICAL APPARATUS AND EQUIPMENT | 10/29/2021 | 11/14/2023 |
| 003 | WIPO109730 / DM/219048-01 | S.Korea | MEDICAL APPARATUS AND EQUIPMENT | 10/29/2021 | 11/14/2023 |
| 003 | WIPO109730 / DM/219048 | S.Korea | MEDICAL APPARATUS AND EQUIPMENT | 10/29/2021 | 10/29/2021 |
| 003 | DM/219048 | UK | AN APPARATUS FOR ENVIRONMENTAL CONTROL OF A SUBSTANCE | 10/29/2021 | 10/29/2021 |
| 003 | DM/219048 | UK | AN APPARATUS FOR ENVIRONMENTAL CONTROL OF A SUBSTANCE | 10/29/2021 | 10/29/2021 |
| 003 | DM/219048 | UK | AN APPARATUS FOR ENVIRONMENTAL CONTROL OF A SUBSTANCE | 10/29/2021 | 10/29/2021 |
| 003 | DM/219048 | UK | AN APPARATUS FOR ENVIRONMENTAL CONTROL OF A SUBSTANCE | 10/29/2021 | 10/29/2021 |
| 003 | DM/219048 | UK | AN APPARATUS FOR ENVIRONMENTAL CONTROL OF A SUBSTANCE | 10/29/2021 | 10/29/2021 |
| 003 | DM/219048 | UK | AN APPARATUS FOR ENVIRONMENTAL CONTROL OF A SUBSTANCE | 10/29/2021 | 10/29/2021 |
| 003 | DM/219048 | UK | AN APPARATUS FOR ENVIRONMENTAL CONTROL OF A SUBSTANCE | 10/29/2021 | 10/29/2021 |