COLLATERAL ASSIGNMENT OF TRADEMARKS, TRADEMARKAPPLICATIONS, PATENTS AND PATENTAPPLICATIONS
Exhibit 10.11
COLLATERAL ASSIGNMENT OF
TRADEMARKS, TRADEMARK APPLICATIONS,
PATENTS AND PATENT APPLICATIONS
THIS COLLATERAL ASSIGNMENT OF TRADEMARKS, TRADEMARK APPLICATIONS, PATENTS AND PATENT APPLICATIONS is made as of December 7, 2001 by and among HAUSER, INC., a Delaware corporation, HAUSER TECHNICAL SERVICES, INC., a Delaware Corporation, BOTANICALS INTERNATIONAL EXTRACTS, INC., a Delaware corporation, ZETAPHARM, INC., a New York corporation, (each, an “Assignor” and collectively, the “Assignors”), and Wells Fargo Bank, National Association (the “Assignee”).
W I T N E S S E T H:
WHEREAS, Assignors are the owners of certain trademarks, trademark applications, patents and patent applications listed in Exhibit A attached to this document; and
WHEREAS, Assignors and Assignee have entered into that certain Amended and Restated Credit Agreement dated as of December 7, 2001 (as from time to time amended, modified or supplemented, the “Credit Agreement”), pursuant to which, upon the satisfaction by the Assignors of the terms and conditions contained therein, Assignee will make loans to Assignors; and
WHEREAS, pursuant to the Credit Agreement, Assignors have agreed to grant Assignee a security interest in all of their right, title and interest in and to the trademarks, trademark applications, patents and patent applications described in Exhibit A, and in and to the goodwill symbolized by such trademarks (the “Goodwill”), as collateral security for the Obligations as defined in the Credit Agreement; and
WHEREAS, except as noted on Exhibit A attached to this document, Assignors are the owners of the entire right, title and interest in the trademarks, trademark applications, patents and patent applications being assigned hereby.
NOW, THEREFORE, in consideration of the foregoing and other good and valuable consideration, Assignors hereby:
1. Assign, pledge and grant to Assignee, as security for the Obligations, a security interest in and to the trademarks, trademark applications, patents and patent applications listed in Exhibit A attached to this document, and to the Goodwill, and a security interest in and to all trademarks, trademark applications, Goodwill, patents and patent applications acquired by Assignors after the date hereof.
2. Authorize and request the Commissioner of Patents and Trademarks of the United States of America and the empowered officials of all other governments to note in the record the existence of the security interest granted hereunder with respect to each of the trademarks, trademark applications, patents and patent applications listed in Exhibit A attached to this document, and to the Goodwill, and to all trademarks, trademark applications, Goodwill, patents and patent applications acquired by Assignors after the date hereof.
3. Acknowledge that notices and other communications shall be in writing and given as provided in Section 9.01 of the Credit Agreement. Communications and notices to any Assignor shall be given to it at its address set forth in Exhibit B attached to this document.
4. Agree upon the request of Assignee and at the expense of Assignors to take any reasonable actions and execute any documents necessary to effectuate this assignment and the security interest created in the trademarks, trademark applications, patents and patent applications listed in Exhibit A to this document.
[Balance of Page Intentionally Left Blank]
IN WITNESS WHEREOF, Assignors have caused this Assignment to be signed by their respective authorized officers as of the day and year first above written.
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| ASSIGNEE: |
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| WELLS FARGO BANK, NATIONAL |
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| ASSOCIATION |
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| By: | /s/ Art Brokx |
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| Name: Art Brokx |
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| Title: VP |
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| ASSIGNORS: |
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| HAUSER, INC. |
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| By: | /s/ Kenneth C. Cleveland |
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| Name: Kenneth C. Cleveland |
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| Title: Chief Executive Officer |
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| HAUSER TECHNICAL SERVICES, INC. |
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| By: | /s/ Thomas W. Hanlon |
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| Name: Thomas W. Hanlon |
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| Title: Secretary and Treasurer |
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| BOTANICALS INTERNATIONAL EXTRACTS, INC. |
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| By: | /s/ Kenneth C. Cleveland |
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| Name: Kenneth C. Cleveland |
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| Title: Chief Executive Officer |
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| ZETAPHARM, INC. |
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| By: | /s/ Thomas W. Hanlon |
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| Name: Thomas W. Hanlon |
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| Title: Secretary and Treasurer |
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EXHIBIT A TO COLLATERAL ASSIGNMENT
ISSUED U.S. PATENTS
| Title |
| Patent No. |
| Grant Date |
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| OXIDATION PRODUCTS OF CEPHALOMANNINE |
| 5,336,684 |
| 8/9/1994 |
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| ELECTROPLATING OF SUPERCONDUCTOR ELEMENTS |
| 5,470,820 |
| 11/28/1995 |
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| ELECTROPLATING OF SUPERCONDUCTOR ELEMENTS |
| 5,244,875 |
| 9/14/1993 |
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| OXIDATION OF GLYCOSIDE SUBSTITUTED TAXANES TO TAXOL OR TAXOL PRECURSORS AND NEW TAXANE COMPOUNDS FORMED AS INTERMEDIATES |
| 5,412,116 |
| 5/2/1995 |
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| OXIDATION OF CEPHALOMANNINE WITH OZONE IN THE PRESENCE OF TAXOL |
| 5,334.732 |
| 8/2/1994 |
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| PROCESS FOR SEPARATING CEPHALOMANNINE FROM TAXOL USING OZONE AND WATER-SOLUBLE HYDRAZINES OR HYDRAZIDES |
| 5,364,947 |
| 11/15/1994 |
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| GIRARD DERIVATIVES OF TAXANES (AS AMENDED) |
| 5,792,877 |
| 8/11/1998 |
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| PREPARATION OF 10-DEACETYLBACATIN III AND 7-PROTECTED-10-DEACETYLBACCATIN III DERIVATIVES FROM 10-DEACETYLETAXOL A, 10-DEACETYL TAXOL B, AND 10-DEACETYL TAXOL |
| 5,449, 790 |
| 9/12/1995 |
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| CEPHALOMANNINE EXPOXIDE, ITS ANALOGUES A METHOD FOR PREPARING THE SAME |
| 5,892,063 |
| 4/6/1999 |
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| 7 —HEXANOL YL T AXOL AND METHOD FOR PREPARING THE SAME |
| 6,136,988 |
| 10/24/2000 |
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| SELECTIVE PROCESS FOR THE DEACETYLATION OF TAXOL AND TAXANES |
| 5,629,433 |
| 5/13/1997 |
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| PREPARATION OF TAXOL AND DOCETAXEL THROUGH PRIMARY AMINES |
| 5,679,807 |
| 10/21/1997 |
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| Title |
| Patent No. |
| Grant Date |
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| PREPARATION OF TAXOL AND DOCETAXEL THROUGH PRIMARY AMINES |
| 5,808,113 |
| 9/15/1998 |
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| ARTEMISININ DIMER COMPOUNDS HAVING ANTICANCER ACTIVITY |
| 5,677,468 |
| 10/14/1997 |
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| ARTEMISININ DIMER COMPOUNDS HAVING ANTICANCER ACTIVITY |
| 5,856,351 |
| 1/5/1999 |
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| TRIOXANE DIMER COMPOUNDS HAVING ANTI PROLIFERATIVE AND ANTITUMOR ACTIVITIES |
| 6,004,997 |
| 12/21/1999 |
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| STORAGE STABLE, CITRUS-FLAVORED COMPOSITIONS COMPRISING PLANT EXTRACTS |
| 6,306,450 |
| 10/23/2001 |
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| C-10 CARBON-SUBSTITUTED ARTEMISININ-LiKE TRIOXANE COMPOUNDSHAVING ANTIMALARIAL, ANTIPROLIFERATIVE AND ANTITUMOR ACTIVITIES |
| 6,156, 790 |
| 12/5/2000 |
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| C-10 CARBON-SUBSTITUTED ARTEMISININ-LiKE TRIOXANE COMPOUNDSHAVING ANTIMALARIAL, ANTI PROLIFERATIVE AND ANTITUMOR ACTIVITIES |
| 6,160,004 |
| 12/12/2000 |
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| ARTEMISININ ANALOGS HAVING ANTIMALARIAL, ANTIPROLIFERATIVE,AND ANTITUMOR ACTIVITIES AND CHEMOSElECTIVE METHODS OF MAKING THE SAME |
| 6,297,272 |
| 1 0/2/2001 |
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| HIGH MOLECULAR WEIGHT PRIMARY ALIPHATIC ALCOHOLS OBTAINED FROM BEESWAX AND PHARMACEUTICAL USE THEREOF |
| 6,225,354 |
| 5/1/2001 |
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ISSUED EUROPEAN PATENTS
| Title |
| Patent No. |
| Grant Date |
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| ARTEMISININ DIMERS WITH ANTICANCER ACTIVITY |
| 0882037 |
| 9/12/2001 |
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| ARTEMISININ DIMERS WITH ANTICANCER ACTIVITY |
| 69615220.7-0 |
| 9/12/2001 |
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A - 3
PENDING INTERNATIONAL PATENT APPLICATIONS
| Title |
| Patent No. |
| Grant Date |
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| METHOD FOR ISOLATION OF CAFFEINE-FREE CATECHINS FROM GREEN TEA |
| PCT/USOO/00282 |
| 2/1/2000 |
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| COMPOSITIONS COMPRISING NATURAL AGENTS FOR TREATMENT OF CANCER |
| PCT/US01/12096 |
| 4/13/2001 |
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| COMPOSITIONS COMPRISING ICARISIDE I AND ANHYDROICARITIN AND METHODS FOR MAKING THE SAME |
| PCT/US01/22700 |
| 7/19/2001 |
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| EFFICIENT METHOD FOR PRODUCING COMPOSITIONS ENRICHED IN ANTHOCYANINS |
| PCT/US01/27107 |
| 8/30/2001 |
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A - 4
PENDING JAPANESE PATENT APPLICATIONS
| Title |
| Patent No. |
| Grant Date |
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| OXIDATION PRODUCTS OF CEPHALOMANNINE |
| 524451/94 |
| 4/25/1994 |
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| OXIDATION OF GLYCOSIDE SUBSTITUTED TAXANES TO TAXOLORTAXOLPRECURSORS AND NEW TAXANE COMPOUNDS FORMED AS INTERMEDIATES |
| 512190/94 |
| 11/2/1993 |
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| CEPHALOMANNINE EXPOXIDE, ITS ANALOGUES METHOD FOR PREPARING THE SAME |
| 8-527756 |
| 3/8/1996 |
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| 7-HEXANOL YL TAXOL AND METHODS FOR PREPARING THE SAME |
| 2000-543447 |
| 4/9/1999 |
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| PREPARATION OF TAXOL AND DOCETAXEL THROUGH PRIMARY AMINES |
| 8-523705 |
| 1/30/1996 |
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| TRIOXANE DIMERS HAVING ANTIPROLIFERATIVE AND ANTITUMOR ACTIVITIES |
| 10-525676 |
| 12/1/1997 |
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| STORAGE STABLE, CITRUS-FLAVORED COMPOSITIONS COMPRISING PLANT EXTRACTS |
| 11-504963 |
| 6/23/1998 |
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| C-10 CARBON-SUBSTITUTED ARTEMISININ-LiKE TRIOXANE COMPOUNDSHA VING ANTIMALARIAL, ANTI PROLIFERATIVE AND ANTITUMOR ACTIVITIES |
| PCT/US98/27717 |
| 12/30/1998 |
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A - 5
PENDING OTHER FOREIGN PATENT APPLICATIONS
| Title |
| Patent No. |
| Grant Date |
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| OXIDATION PRODUCTS OF CEPHALOMANNINE |
| 2,161,138 |
| 4/25/1994 |
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| OXIDATION OF GLYCOSIDE SUBSTITUTED TAXANES TO TAXOL OR TAXOL PRECURSORS AND NEW TAXANE COMPOUNDS FORMED AS INTERMEDIATES |
| 2,148,943 |
| 11/2/1993 |
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| CEPHALOMANNINE EXPOXIDE, ITS ANALOGUES METHOD FOR PREPARING THE SAME |
| 2,214,993 |
| 3/8/1996 |
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| 7-HEXANOL YL TAXOL AND METHODS FOR PREPARING THE SAME |
| 34888/99 |
| 4/9/1999 |
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| 7-HEXANOL YL TAXOL AND METHODS FOR PREPARING THE SAME |
| 2,327,791 |
| 4/9/1999 |
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| PREPARATION OF TAXOL AND DOCETAXEL THROUGH PRIMARY AMINES |
| 2,211,799 |
| 1/30/1996 |
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| ARTEMISININ DIMER COMPOUNDS HAVING ANTICANCER ACTIVITY |
| 2,234,731 |
| 6/27/1996 |
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| TRIOXANE DIMERS HAVING ANTI PROLIFERATIVE AND ANTITUMOR ACTIVITIES |
| 2,273,374 |
| 12/1/1997 |
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| STORAGE STABLE, CITRUS-FLAVORED COMPOSITIONS COMPRISING PLANT EXTRACTS |
| 2,294,458 |
| 6/23/1998 |
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| C-10 CARBON-SUBSTITUTED ARTEMISININ-LIKE TRIOXANE COMPOUNDSHAVING ANTIMALARIAL, ANTI PROLIFERATIVE AND ANTITUMOUR ACTIVITIES |
| 20184/99 |
| 12/30/1998 |
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| C-10 CARBON-SUBSTITUTED ARTEMISININ-LIKE TRIOXANE COMPOUNDSHAVING ANTIMALARIAL, ANTI PROLIFERATIVE AND ANTITUMOR ACTIVITIES |
| 2,317,112 |
| 12/30/1998 |
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| ARTEMISININ ANALOGS HAVING ANTIMALARIAL, ANTIPROLIFERATIVE,AND ANTITUMOR ACTIVITIES AND CHEMOSELECTIVE METHODS OF MAKING THE SAME |
| 27239/00 |
| 1/11/2000 |
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A - 6
| ARTEMISININ ANALOGS HAVING ANTIMALARIAL, ANTIPROLIFERATIVE,AND ANTITUMOR ACTIVITIES AND CHEMOSELECTIVE METHODS OF MAKING THE SAME |
| XXXXXX |
| 1/11/2000 |
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A - 7
ISSUED OTHER FOREIGN PATENTS
| Title |
| Patent No. |
| Grant Date |
|
| OXIDATION PRODUCTS OF CEPHALOMANNINE |
| 685119 |
| 4/30/1998 |
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| PREPARATION OF TAXOL AND DOCETAXEL THROUGH PRIMARY AMINES |
| 694,627 |
| 11/5/1998 |
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| ARTEMISININ DIMER COMPOUNDS HAVING ANTICANCER ACTIVITY |
| 725724 |
| 10/19/2000 |
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| TRIOXANE DIMERS HAVING ANTIPROLIFERATIVE AND ANTITUMOR ACTIVITIES |
| 730722 |
| 6/28/2001 |
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A - 8
PENDING U.S. PATENT APPLICATIONS
| Title |
| Patent No. |
| Grant Date |
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| PROCESS OF CONVERTING OXO-10-DAXT INTO 10-DEACETYL BACCATIN III (CIP) |
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| PROCESS OF CONVERTING BACCATIN III INTO 10-DEACETYL BACCATIN III |
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| 7-HEXANOYL TAXOL AND METHOD FOR PREPARING THE SAME |
| 09/688,753 |
| 10/16/2000 |
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| TRIOXANE DIMERS HAVING ANTI PROLIFERATIVE AND ANTITUMOR ACTIVITIES |
| 09/717,815 |
| 11/21/2000 |
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| STORAGE STABLE, CITRUS-FLAVORED COMPOSITIONS COMPRISING PLANT EXTRACTS |
| not yet assigned |
| 10/19/2001 |
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| HIGH PURITY BETA-CAROTENE AND PROCESS FOR OBTAINING SAME |
| 08/864,103 |
| 5/28/1997 |
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| ARTEMISININ ANALOGS HAVING ANTIMALARIAL, ANTIPROLIFERATIVE,AND ANTITUMOR ACTIVITIES AND CHEMOSELECTIVE METHODS OF MAKING THE SAME |
| 09/887,922 |
| 6/22/2001 |
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| COMPOSITIONS COMPRISING NATURAL AGENTS FOR TREATMENT OF CANCER |
| 09/550,436 |
| 4/17/2000 |
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| COMPOSITIONS COMPRISING ICARISIDE I AND ANHYDROICARITIN ANDMETHODS FOR MAKING THE SAME |
| 09/638,367 |
| 8/15/2000 |
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| EFFICIENT METHOD FOR PRODUCING COMPOSITIONS ENRICHED IN ANTHOCYANINS |
| 09/943, 158 |
| 8/30/2001 |
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| HIGH MOLECULAR WEIGHT PRIMARY ALIPHATIC ALCOHOLS OBTAINED FROM NATURAL PRODUCTS AND USES THEREOF |
| 09/845,043 |
| 4/27/2001 |
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| HIGH MOLECULAR WEIGHT PRIMARY ALIPHATIC ALCOHOLS OBTAINED FROM NATURAL PRODUCTS AND USES THEREOF |
| 09/949,285 |
| 9/7/2001 |
|
A - 9
PENDING EUROPEAN PATENT APPLICATIONS
| Title |
| Patent No. |
| Grant Date |
|
| OXIDATION OF GLYCOSIDE SUBSTITUTED TAXANES TO TAXOL ORTAXOL PRECURSORS AND NEW TAXANE COMPOUNDS FORMED AS INTERMEDIATES |
| 94900515.1 |
| 11/2/1993 |
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| 7 —HEXANOL YL T AXOL AND METHODS FOR PREPARING THE SAME |
| 99916599.6 |
| 4/9/1999 |
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| PREPARATION OF TAXOL AND DOCETAXEL THROUGH PRIMARY AMINES |
| 96907021.8 |
| 1/30/1996 |
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| TRIOXANE DIMERS HAVING ANTI PROLIFERATIVE AND ANTITUMOR ACTIVITIES |
| 97949655.1 |
| 12/1/1997 |
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| STORAGE STABLE, CITRUS-FLAVORED COMPOSITIONS COMPRISING PLANT EXTRACTS |
| 98929112.5 |
| 6/23/1998 |
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| C-10 CARBON-SUBSTITUTED ARTEMISININ-LIKE TRIOXANE COMPOUNDSHA VING ANTIMALARIAL, ANTI PROLIFERATIVE AND ANTITUMOR ACTIVITIES |
| 98964977.7 |
| 12/30/1998 |
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| PROCESS FOR REMOVING IMPURITIES FROM NATURAL PRODUCT EXTRACTS |
| 99956616.9- |
| 10/20/1999 |
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| ARTEMISININ ANALOGS HAVING ANTIMALARIAL, ANTIPROLIFERATIVE,AND ANTITUMOR ACTIVITIES AND CHEMOSElECTIVE METHODS OF MAKING THE SAME |
| 00905584.9 |
| 1/11/2000 |
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A - 10
REGISTERED TRADEMARKS
| European Union |
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| Mark |
| Number |
| Registration Date |
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| NATURAL RATIO (Classes: 05) |
| 001417674 |
| 02/14/01 |
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PENDING TRADEMARKS
| United States |
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| Mark |
| Number |
| Filing Date |
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| APISOL (Classes: 05) |
| 76-193748 |
| 01/12/01 |
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| BIOENHANCE (Classes: 05) |
| 76-193420 |
| 01/12/01 |
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| INVIGORA (Classes: 05) |
| 76-089302 |
| 07/14/00 |
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| NATURAL RATIO (Classes: 05) |
| 75-726748 |
| 06/11/99 |
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| NATURAL RATIO (Classes: 42) |
| 75-726749 |
| 06/11/99 |
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| PREVENTIA (Classes: 05) |
| 76-089329 |
| 07/14/00 |
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