PATENT ASSIGNMENT AGREEMENT
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EX-10.23 5 ex-10_23.htm EXHIBIT 10.23 Exhibit 10.23
Execution Copy
PATENT ASSIGNMENT AGREEMENT
This Patent Assignment Agreement (this "Assignment") is made as of October 12, 2005, by Access Pharmaceuticals, Inc., a Delaware corporation ("Access").
BACKGROUND
| A. | Access and ULURU, Inc., a Delaware corporation ("ULURU"), have entered into an Asset Sale Agreement, dated as of the date hereof (the "Asset Sale Agreement"), pursuant to which Access, inter alia, has agreed to sell, transfer, convey, assign and deliver to ULURU the Purchased Assets. |
| B. | The execution and delivery of this Assignment by Access is a closing obligation of Access under the transactions contemplated by the Asset Sale Agreement. |
| C. | All capitalized words and terms used in this Assignment and not defined herein shall have the same meanings ascribed to them in the Asset Sale Agreement. |
NOW, THEREFORE, for good and valuable consideration, the receipt and sufficiency of which is hereby acknowledged, and pursuant to the Asset Sale Agreement, Access intending to be legally bound, hereby agrees as follows:
| 1. | Access represents and warrants that, as of the date hereof, it is the record owner of the Product Patents and patent applications set forth on Schedule A attached hereto. |
| 2. | Access represents and warrants that, as of the date hereof, except as set forth in the Asset Sale Agreement, no security interest is outstanding in favor of any third party with respect to any of its rights in the Product Patents. |
| 3. | Access agrees to cooperate with ULURU in providing any documentation or assistance that ULURU may reasonably request in securing and perfecting the rights transferred pursuant to this Assignment. |
| 4. | Access does hereby assign and transfer to ULURU, its successors and assigns, and confirms ULURU's record ownership of, as of the date hereof, all of the right, title and interest held by Access in and to the Product Patents (including but not limited to any common law rights possessed in the Product Patents), including the goodwill associated with the Product Patents. |
| 5. | Access further assigns and transfers to ULURU and confirms ULURU's ownership of, as of the date hereof, all rights of Access to damages or profits, due or accrued, arising out of past infringement of the Product Patents or damage or injury to the Product Patents or the goodwill associated therewith. |
| 6. | This Assignment is binding upon Access, as well as its successors, assigns, affiliates, officers and owners and all those acting in concert or in privity with Access. |
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BUSDOCS/1501886.4
IN WITNESS WHEREOF, this Assignment has been executed by Access, effective as of the date first above written.
ACCESS PHARMACEUTICALS, INC.
By: /s/Rosemary Mazanet_______________________
Name: Rosemary Mazanet
Title: Acting President
BUSDOCS/1501886.4
Schedule A
Product Patents
| Country | Serial No. | Application Date | Patent No. | Issued |
| USA | 07/006,670 | Jan. 19, 1993 | 5,362,737 | Nov. 8, 1994 |
| Canada | 2,065,496 | Apr. 9, 1992 | 2,065,496 | Mar 25, 2003 |
| EP | 97202524 | Apr. 9, 1992 | 0836852 | Apr 22, 1998 |
| Austria | 97202524 | Apr. 9, 1992 | 0836852 | Apr 22, 1998 |
| Belgium | 97202524 | Apr. 9, 1992 | 0836852 | Apr 22, 1998 |
| Switzerland | 97202524 | Apr. 9, 1992 | 0836852 | Apr 22, 1998 |
| Germany | 97202524 | Apr. 9, 1992 | 0836852 | Apr 22, 1998 |
| Denmark | 97202524 | Apr. 9, 1992 | 0836852 | Apr 22, 1998 |
| Spain | 97202524 | Apr. 9, 1992 | 0836852 | Apr 22, 1998 |
| France | 97202524 | Apr. 9, 1992 | 0836852 | Apr 22, 1998 |
| Great Britain | 97202524 | Apr. 9, 1992 | 0836852 | Apr 22, 1998 |
| Greece | 97202524 | Apr. 9, 1992 | 0836852 | Apr 22, 1998 |
| Italy | 97202524 | Apr. 9, 1992 | 0836852 | Apr 22, 1998 |
| Luxembourg | 97202524 | Apr. 9, 1992 | 0836852 | Apr 22, 1998 |
| Monaco | 97202524 | Apr. 9, 1992 | 0836852 | Apr 22, 1998 |
| Netherlands | 97202524 | Apr. 9, 1992 | 0836852 | Apr 22, 1998 |
| Portugal | 97202524 | Apr. 9, 1992 | 0836852 | Apr 22, 1998 |
| Sweden | 97202524 | Apr. 9, 1992 | 0836852 | Apr 22, 1998 |
| USA | 09/931,319 | Aug 16, 2001 | 6,585,997 | Jul 1, 2003 |
| Canada | 2,459,692 | Aug 16, 2002 | Pending | |
| PCT | PCT/US02/26083 | Aug 16, 2002 | National Phase | |
| EP | 02761390.0 | Aug 16, 2002 | Pending | |
| Australia | 2002/326664 | Aug 16, 2002 | Pending | |
| China | 02818327.4 | Aug 16, 2002 | Pending | |
| Hungary | P0401281 | Aug 16, 2002 | Pending | |
| Israel | 160419 | Aug 16, 2002 | Pending | |
| Iceland | 7155 | Aug 16, 2002 | Pending | |
| Japan | 2003-520708 | Aug 16, 2002 | Pending | |
| Korea | 2004 ###-###-#### | Aug 16, 2002 | Pending | |
| Mexico | PA/a/2004/001491 | Aug 16, 2002 | Pending | |
| New Zealand | 531766 | Aug 16, 2002 | Pending | |
| Poland | P-373327 | Aug 16, 2002 | Pending | |
| Romania | 2004-107575 | Aug 16, 2002 | Pending | |
| South Africa | 2004/2067 | Aug 16, 2002 | Pending | |
| USA | 10/444,512 | May 23, 2003 | Pending | |
| USA | 11/192,524 | July 29, 2005 | Pending | |
BUSDOCS/1501886.4
| Country | Serial No. | Application Date | Patent No. | Issued |
| USA | 06/730,682 | May 3, 1985 | 4,895,727 | Jan. 23, 1990 |
| EP | 86903757.2 | May 2, 1986 | 0221176 | Sep 14, 1994 |
| WO | PCT/US86/00974 | May 2, 1986 | National Phase | |
| Austria | 86903757.2 | May 2, 1986 | 111355 | Sept 15, 1994 |
| Australia | 869066 | May 2, 1986 | 8659066 | Dec 4, 1986 |
| Germany | 86903757.2 | May 2, 1986 | 3650068 | Oct 20, 1994 |
| Denmark | 866349 | Dec 30, 1986 | 8606349 | Feb 2, 1987 |
| Finland | 8713 | Jan. 2, 1987 | 8700013 | Feb 1, 1987 |
| Japan | 86502882 | May 2, 1986 | 63500171 | Jan 21, 1988 |
| Norway | NO 871 | Jan 2, 1987 | 8700001 | Mar 2, 1987 |
| EP (div 1) | 92201393 | May 2, 1986 | ||
| EP (div 2) | 98105208 | May 2, 1986 | Pending | |
| GB | 200029018 | Nov 28, 2000 | Pending | |
| WO | PCT/GB01/05257 | Nov 28, 2001 | National Phase | |
| Australia | 200223091 | Nov 28, 2001 | Pending | |
| EP | 01998353 | Nov 28, 2001 | Pending | |
| Brazil | 200115727 | Nov 28, 2001 | Pending | |
| Canada | 2429205 | Nov 28, 2001 | Pending | |
| Czech Rep. | 2003001491 | Nov 28, 2001 | Pending | |
| Croatia | 200300433 | May 28, 2003 | Pending | |
| Hungary | 2004520 | Nov 28, 2001 | Pending | |
| Israel | 152720 | Nov 28, 2001 | Pending | |
| Japan | 2002545709 | Nov 28, 2001 | Pending | |
| Poland | 362279 | Nov 28, 2001 | Pending | |
| Slovakia | 2003632 | Nov 28, 2001 | Pending | |
| USA | 10/432,848 | Jan. 28, 2004 | Pending | |
| South Africa | 200305012 | Nov 28, 2001 | Pending | |
| USA | 07/713,558 | June 10, 1991 | 5,166,149 | Nov. 24, 1992 |
| USA | 07/916,432 | July 21, 1992 | 5,292,731 | Mar. 8, 1994 |
| WO | PCT/US87/01027 | Oct. 27, 1987 | National Phase | |
| Austria | 87907401 | Oct 27, 1987 | 70449 | Jan 15, 1992 |
| Australia | 8781724 | Oct 27, 1987 | 616641 | Nov. 7, 1991 |
| Germany | 87907401 | Oct 27, 1987 | 3775387 | Jan 30, 1992 |
| Japan | 87506947 | Oct. 27, 1987 | 1501794 | June 22, 1989 |
| EP | 87907401 | Oct. 27, 1987 | 288,534 | Dec. 18, 1997 |
