mhtx_8ka.htm

0001477932-19-002451.txt : 20190508 0001477932-19-002451.hdr.sgml : 20190508 20190508160948 ACCESSION NUMBER: 0001477932-19-002451 CONFORMED SUBMISSION TYPE: 8-K/A PUBLIC DOCUMENT COUNT: 5 CONFORMED PERIOD OF REPORT: 20190501 ITEM INFORMATION: Entry into a Material Definitive Agreement ITEM INFORMATION: Financial Statements and Exhibits FILED AS OF DATE: 20190508 DATE AS OF CHANGE: 20190508 FILER: COMPANY DATA: COMPANY CONFORMED NAME: MANHATTAN SCIENTIFICS INC CENTRAL INDEX KEY: 0001099132 STANDARD INDUSTRIAL CLASSIFICATION: MISCELLANEOUS ELECTRICAL MACHINERY, EQUIPMENT & SUPPLIES [3690] IRS NUMBER: 850460639 STATE OF INCORPORATION: DE FISCAL YEAR END: 1231 FILING VALUES: FORM TYPE: 8-K/A SEC ACT: 1934 Act SEC FILE NUMBER: 000-28411 FILM NUMBER: 19806690 BUSINESS ADDRESS: STREET 1: THE CHRYSLER BUILDING STREET 2: 405 LEXINGTON AVENUE, 26TH FLOOR CITY: NEW YORK STATE: NY ZIP: 10174 BUSINESS PHONE: 212-541-2405 MAIL ADDRESS: STREET 1: THE CHRYSLER BUILDING STREET 2: 405 LEXINGTON AVENUE, 26TH FLOOR CITY: NEW YORK STATE: NY ZIP: 10174 8-K/A 1 mhtx_8ka.htm FORM 8-K/A mhtx_8ka.htm

UNITED STATES

SECURITIES AND EXCHANGE COMMISSION

Washington, DC 20549

FORM 8-K/A

Amendment No. 1

CURRENT REPORT

Pursuant to Section 13 OR 15(d) of the Securities and Exchange Act of 1934

Date of Report (Date of earliest reported): May 1, 2019

MANHATTAN SCIENTIFICS, INC.

(Exact name of registrant as specified in charter)

Delaware

000-28411

85-0460639

(State or Other Jurisdiction

of Incorporation or Organization)

(Commission File Number)

(IRS Employer Identification No.)

The Chrysler Building

405 Lexington Avenue, 26th Floor

New York, New York, 10174

(Address of Principal Executive Offices) (Zip Code)

Registrant’s Telephone Number, including area code: (212) 541-2405

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):

o Written communications pursuant to Rule 425 under the Securities Act (17 CFR 230.425)

o Soliciting material pursuant to Rule 14a-12 under the Exchange Act (17 CFR 240.14a-12)

o Pre-commencement communications pursuant to Rule 14d-2(b) under the Exchange Act (17 CFR 240.14d-2(b))

o Pre-commencement communications pursuant to Rule 13e-4(c) under the Exchange Act (17 CFR 240.13e-4(c))

Securities registered pursuant to Section 12(b) of the Act: Not applicable.

Title of each class	Trading Symbol	Name of each exchange on which registered
Not applicable.

EXPLANATORY NOTE: THE SOLE PURPOSE FOR THE FILING OF THIS FORM 8-K/A AMENDING THE FORM 8-K INITIALLY FILED ON MAY 7, 2019 IS TO FILE THE EXHIBITS REFERENCED IN THE EXHIBIT INDEX BELOW UNDER ITEM 9.01.

Item 1.01 Entry Into a Material Definitive Agreement

On May 1, 2019, Manhattan Scientifics, Inc., a Delaware corporation (the “Company”), and Metallicum, Inc., a wholly-owned subsidiary of the Company, entered into an Overarching Agreement with a non-affiliated third party (“Third Party”), providing for an exclusive license by the Company of its ECAP technology to the Third Party for a term of 17 years unless terminated sooner, a sublicense by the Company to the Third Party of its rights under that certain Exclusive Field-of-Use Patent License Agreement dated January 5, 2009 entered with The Los Alamos National Laboratory for a term until the expiration of the last valid claim to expire of the patents pursuant to such agreement and the sale by the Company of three ECAP-C machines to the Third party. As part of the above license agreements, the Company will receive royalty payments, including minimum payments, based on a percentage of the Third Party’s sales.

Item 9.01 Financial Statements and Exhibits

(d) Exhibits.

Exhibit
Number		Description
10.1		Form of Overarching Agreement between Manhattan Scientifics, Inc., Metallicum, Inc. and the Third Party dated May 1, 2019
10.2		Form of Exclusive Intellectual Property License and Royalty Agreement between Manhattan Scientifics, Inc. and the Third Party dated May 1, 2019
10.3		Form of Patent Sublicense Agreement between Manhattan Scientifics, Inc. and the Third Party dated May 1, 2019
10.4		Form of Agreement and Bill of Sale dated May 1, 2019

SIGNATURES

Pursuant to the requirements of the Securities Exchange Act 1934, the registrant has duly caused this report to be signed on its behalf by the undersigned, thereunto duly authorized.

	MANHATTAN SCIENTIFICS, INC.

Date: May 8, 2019	By:	/s/ Emmanuel Tsoupanarias
New York, New York	Name:	Emmanuel Tsoupanarias
	Title:	Chief Executive Officer

EX-10.1 2 mhtx_ex101.htm FORM OF OVERARCHING AGREEMENT mhtx_ex101.htm

EXHIBIT 10.1

[**] Marked information has been omitted from the exhibit because it is both (i) not material and (ii) would likely cause competitive harm to the company if publicly disclosed.

OVERARCHING AGREEMENT

THIS OVERARCHING AGREEMENT (“Agreement”), dated as of May 1, 2019 (the “Effective Date”), is entered into by and between [**](“ACQUIROR”), [**] company affiliated with ACQUIROR (“ACQUIROR SUBSIDIARY” and together with ACQUIROR, the “ACQUIROR Parties”), Metallicum, Inc., a New Mexico corporation (“Metallicum”) and Manhattan Scientifics Corporation, a Delaware Corporation (“MSI” and together with Metallicum, the “MSI Parties”) under the following general recitals. Each of ACQUIROR Parties and the MSI Parties are referred to herein as a “Party” and collectively as the “Parties.”

RECITALS

A. ACQUIROR and MSI are parties to that certain Non-Exclusive Intellectual Property License Agreement dated on or about December 17, 2018 (the “Existing License Agreement”).

B. MSI executed a certain Promissory Note and Security Agreement in the amount of Fifty Thousand Dollars ($50,000) dated March 11, 2019 (the “Note”) to the order of [**] (“BWP”) which principal and accrued interest shall be due on the earlier of (a) the execution of the Agreements (as defined herein) or (b) April 30, 2019.

C. Concurrently with the execution of this Agreement, ACQUIROR and MSI plan to enter into an amended and restated version of the Existing License Agreement which will provide for an exclusive license to the ECAP Technology (the “New License Agreement”).

C. Concurrently with the execution of this Agreement and the New License Agreement, ACQUIROR and MSI plan to enter into a sublicense agreement (the “Sublicense Agreement”) pursuant to which MSI will sublicense to ACQUIROR its rights under that certain Exclusive Field-of-Use Patent License Agreement dated as of January 5, 2009 (the “LANS Agreement” and together with the New License Agreement, the “License Agreements”).

D. Concurrently with the execution of this Agreement, the New License Agreement and the Sublicense Agreement, ACQUIROR SUBSIDIARY and MSI have entered into an Agreement and Bill of Sale relating to the purchase and sale by MSI to ACQUIROR SUBSIDIARY of a generation 2C ECAP-C (aka Epsilon) machine with a serial number of M14960 and an Agreement and Bill of Sale relating to the purchase and sale by MSI to ACQUIROR SUBSIDIARY of two generation 2A ECAP-C machines (aka Gamma with a serial number of M14367) and (aka Beta with a serial number of M-14310) (collectively, the “Sale Agreements” and together with this Agreement, the New License Agreement and the LANS Agreement, the “Agreements”).

E. This Agreement is entered into to explain the relationship of the parties and the Agreements and to clarify that ACQUIROR has the specific right of set-off as set forth in this Agreement with respect to the various financial obligations of the MSI Parties.

AGREEMENT

NOW, THEREFORE, in consideration foregoing, the mutual covenants and agreements contained herein, and other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged and confessed, the parties hereto agree as follows:

1. Agreements; Conflicts Between Agreements. It is expressly agreed that neither party shall have any obligations under the Agreements until each of the Agreements have been executed and delivered by all Parties. If there is any conflict in a provision of this Agreement and any of the other Agreements, the conflicting provision of this Agreement shall supersede the conflicting provision of the other Agreement.

2. Further Assignments. If required by the U.S. Patent and Trademark Office, or otherwise if needed during prosecution or enforcement of the patents encompassed by the New License Agreement, MSI shall use its best efforts to receive an assignment from each of Gian Colombo, Venkata Anumalasetty and Yuliya Mardakhayeva relating to the ECAP Technology in substantially the form as previously received from Graham McIntosh (the “Assignments”). MSI covenants and agrees, at its sole cost and expense, to use its best efforts to effectuate the Assignments within sixty (60) days upon notice of any such requirement. If the Assignments are not obtained within such period, ACQUIROR may suspend a portion of other payments required under this Agreement or any of the other Agreements until the Assignments are obtained, where such portion is 100% if the lack of such Assignments raises a question as to ACQUIROR’s right to use the technology in the subject patents, and 50% otherwise.

3. Compensation under the Sale Agreements. The ACQUIROR Parties have agreed to pay [**] in the aggregate to MSI for the three machines under the Sale Agreements. Such amount shall be paid in installments of $[**] on or about the date of the execution of the Sale Agreement by ACQUIROR and each of the first three annual anniversaries of the date of execution of the Sale Agreements. Notwithstanding the foregoing, the first installment paid to MSI by ACQUIROR shall be reduced by the outstanding balance and accrued interest on the Note as of Effective Date. ACQUIROR shall remit the outstanding balance and accrued interest on the Note to BWP on or about the Effective Date.

4. Minimum Royalty Payments under the License Agreements; Sales Commission. ACQUIROR shall pay to MSI the sum of $[**] per year for four years as minimum royalties (“Minimum Royalties”) in respect of both License Agreements (for an aggregate total of $[**]). The first installment of the Minimum Royalties shall be due on or about the execution of this Agreement and the next three installments shall occur on the three anniversaries of the date of this Agreement; provided that the first payment of $[**] shall be reduced by $[**] already paid pursuant to the Existing Agreement. The amounts paid in respect of Minimum Royalties under this Agreement shall be fully credited against earned royalties as set forth under the License Agreements (so that no additional amount of earned royalties shall be under the License Agreements until and unless the amounts of earned royalties exceeds the aggregate amount of Minimum Royalties paid). ACQUIROR may elect to pay any royalties owed under the LANS agreement directly to Los Alamos National Laboratories and upon notice to MSI set-off such payments against the Minimum Royalties or other amounts owed to MSI hereunder or under the other Agreements.

During the term of the New License Agreement, in the event MSI (excluding ****) introduces a new customer to ACQUIROR, the parties will mutually agree upon a commission on the revenue generated from products produced utilizing ECAP Technology sold to such new costumer for a mutually agreed upon period following such introduction. For purposes of this Section 4, “new customer” shall mean any third party which is not a past, current or prospective customer of ACQUIROR, according to ACQUIROR’s records.

5. Basic Dental Implant Systems. The MSI Parties have entered into an agreement to terminate that certain Joint Venture Agreement dated May 21, 2008 with Basic Dental Implant Systems, Inc. (“Basic Dental”), which is attached hereto as Exhibit A (the “Termination”). For avoidance of doubt, MSI Parties acknowledge that any consideration or damages paid to Basic Dental or its affiliates, is the responsibility of MSI and not subject to reimbursement by ACQUIROR.

6. Right of Setoff. The MSI Parties agree that either of the ACQUIROR Parties may setoff amounts due to MSI under Sections 3 and 4 of this Agreement against, (a) [**] of amounts incurred by ACQUIROR in excess of $[**] in connection with its prosecution of the Patent Rights as set forth in the New License Agreement and (b) any other amounts which any of the MSI Parties owe to any of the ACQUIROR Parties under the Sale Agreements or any of the other Agreements. This right of setoff is in addition to the right of setoff which ACQUIROR has under the New License Agreement and including the Sublicense Agreement even if there is no express right of setoff therein. Notwithstanding the foregoing, for so long as the Sublicense Agreement and the LANS Agreement are both in force and for any year in which MSI owes a $[**] license fee to LANS under the LANS Agreement, **** of the Minimum Royalties shall be used by MSI to pay such license fee and cannot be suspended or offset against other amounts; and for any year in which MSI owes LANS earned royalties under the LANS Agreement based on ACQUIROR’s activities, the amount of royalties paid to MSI by ACQUIROR under the Sublicense Agreement shall be used by MSI to pay the earned royalties due to LANS, and cannot be suspended or offset by ACQUIROR against other amounts.

7. Arbitration. The parties hereto agree that all claims, disputes or controversies arising under, out of or in connection with this Agreement shall be resolved by binding arbitration under the rules of the American Arbitration Association for commercial disputes by a single mediator. Such arbitration shall be held in **** or any other forum agreed upon by the parties. The parties agree to select a single arbitrator who will establish the rules and procedure of the arbitration under the applicable rules of the American Arbitration Association. Both MSI and ACQUIROR irrevocably submit to the jurisdiction of the United States District Courts in the Northern District of **** for entry of any arbitration decision or to obtain any preliminary relief which may be necessary and consent to the enforcement of any award rendered in such arbitration.

8. Notices. Notices, approvals, and consents required or permitted under this Agreement shall be in writing and shall be sent by hand or by certified mail, postage prepaid, to the address given below or to such other addresses as the parties may hereafter specify.

ACQUIROR Parties:

[**]

With a copy to:

[**]

MSI Parties:

The Chrysler Building, 26th Floor

405 Lexington Avenue

New York, New York 10174

Attn: President

9. Waivers. No waiver of any right under this Agreement shall be deemed effective unless contained in a writing signed by the party charged with such waiver, and no waiver of any rights arising from any breach or failure to perform shall be deemed to be a waiver of any future right or of any other right arising under this Agreement.

10. Entire Agreement. This Agreement, together with all schedules and exhibits, constitutes the sole and entire agreement of the parties with respect to the subject matter hereof and supersedes all prior agreements whether oral or written. This Agreement may not be modified after its execution except by a writing signed by authorized representatives of the parties hereto.

11. Further Assurances. Each party shall, upon the reasonable request of the other party, execute such documents and perform such acts as may be necessary to give full effect to the terms of this Agreement.

12. No Conflicts. Each of the MSI Parties and ACQUIROR represent that they have executed no agreement which is in conflict with this Agreement and agree that no option or license shall be granted on any basis to any third party which is in conflict with this Agreement unless and until this Agreement is terminated.

13. Headings. The headings in this Agreement are for reference only and shall not affect the interpretation of this Agreement.

14. Severability. If any term or provision of this Agreement is or becomes or is deemed invalid, illegal, or unenforceable in any jurisdiction, such provision shall be deemed amended to conform to applicable laws so as to be valid and enforceable, or, if it cannot be so amended without materially altering the intention of the parties, it shall be stricken and the remainder of this Agreement shall remain in full force and effect.

15. Governing Law. This Agreement shall be governed by and construed in accordance with the internal laws of the State of **** without regard to its conflict of law provisions.

16. Counterparts. This Agreement may be executed in counterparts, each of which shall be deemed an original, but all of which together shall be deemed to be one and the same agreement. A signed copy of this Agreement delivered by facsimile, e-mail, or other means of electronic transmission (to which a signed PDF copy is attached) shall be deemed to have the same legal effect as delivery of an original signed copy of this Agreement.

17. Assignment. Except for a sale or transfer of the business to which this Agreement relates, this Agreement may not be assigned or otherwise transferred, nor, except as expressly provided hereunder, may any right or obligations hereunder be assigned or transferred, by either Party without the written consent of the other Party; provided, however, that ACQUIROR may, without such consent, assign this Agreement only in its entirety to ACQUIROR or a wholly owned subsidiary, provided that ACQUIROR is not in breach of this Agreement at such time and provided further than ACQUIROR remains liable for all obligations that accrue prior to such assignment hereunder. Any purported assignment in violation of the preceding sentence shall be void. Any permitted assignee shall assume all obligations of its assignor under this Agreement.

18. Force Majeure. No party shall be held liable or responsible to another party, nor be deemed to have defaulted under or breached this Agreement, for failure or delay in fulfilling or performing any term of this Agreement when such failure or delay is caused by or results from causes beyond the reasonable control of the affected party, including, but not limited to, fire or floods; embargoes, war, acts of war (whether war be declared or not), insurrections, riots, or civil commotions; strikes, lockouts, or other labor disturbances; acts of God; or acts, omissions, or delays in acting by any governmental authority or the other party; provided, however, it is understood that this Section is intended only to suspend and not discharge a party’s obligations under this Agreement and that when the causes of the failure or delay are removed or alleviated, the affected party shall resume performance of its obligations hereunder.

19. Contractors. The relationship between the parties is that of independent contractors. Nothing contained in this Agreement shall be construed as creating any agency, partnership, joint venture, or other form of joint enterprise, employment, or fiduciary relationship between the parties, and no party shall have authority to contract for or bind the other party in any manner whatsoever.

Signature Page Follows

Overarching Agreement Signature Page

IN WITNESS WHEREOF, this Agreement has been executed by the Parties effective as of the Effective Date.

MSI Parties:

Manhattan Scientifics, Inc.



                                                                                By:

                                                                                Name:

                                                                                Title:

Metallicum, Inc.



                                                                                By:

                                                                                Name:

                                                                                Title:

ACQUIROR Parties:

                [**]

                                                                                By:

                                                                                Name:

                Title:

[**]



                                                                                By:

                                                                                Name:

                                                                                Title:

EXHIBIT A

Termination

(See attached)

A-1

EX-10.2 3 mhtx_ex102.htm FORM OF EXCLUSIVE INTELLECTUAL PROPERTY LICENSE AND ROYALTY AGREEMENT mhtx_ex102.htm

EXHIBIT 10.2

[**] Marked information has been omitted from the exhibit because it is both (i) not material and (ii) would likely cause competitive harm to the company if publicly disclosed.

EXCLUSIVE INTELLECTUAL PROPERTY LICENSE AND ROYALTY AGREEMENT

This Exclusive Intellectual Property License and Royalty Agreement (the “Agreement”) dated as of May 1, 2019 (the “Effective Date”) is made and entered into by and between Manhattan Scientifics, Inc., a Delaware corporation having its principal place of business at The Chrysler Building, 26^th Floor, 405 Lexington Avenue, New York, New York 10174 (“MSI”), and [**] with offices located at [**] (“LICENSEE”). This Agreement supersedes and replaces that certain Non-Exclusive Intellectual Property Agreement between MSI and LICENSEE dated as of December 17, 2018 (the “Prior Agreement”).

RECITALS

WHEREAS, MSI is a company that emphasizes novel technology, including, but not limited to, nano-structured metals technology, machinery and equipment to reduce the weight and increase the strength of nanostructured titanium alloy (collectively, the “ECAP Technology”);

WHEREAS, LICENSEE is a specialty manufacturer of metal and wire products for various applications in the medical device industry and wishes to obtain rights in the Technology (as defined herein);

WHEREAS, MSI previously granted a non-exclusive license to LICENSEE to the ECAP Technology pursuant to the Prior Agreement and the parties wish to provide to LICENSEE an exclusive license to the ECAP Technology and for this Agreement to supersede and replace the Prior Agreement as of the Effective Date;

WHEREAS, MSI and LICENSEE are also entering, at the same time as this Agreement, into a sublicense agreement pursuant to which MSI will sublicense to LICENSEE its rights under that certain Exclusive Field-of-Use Patent License Agreement dated as of January 5, 2009 (the “LANS Agreement”) and that certain Overarching Agreement (the “Overarching Agreement”); and

NOW, THEREFORE, in consideration of the mutual covenants expressed herein and other good and valuable consideration, the receipt of which hereby is acknowledged, MSI and LICENSEE agree as follows:

1. Definitions

1.1. “Earned Royalties” means the variable annual royalty payments based upon the sale volume of Licensed Products pursuant to Section 2.5.

1.2. “Effective Date” shall mean the date of execution of this Agreement.

1.3. “Licensed Products” shall mean any apparatus, product, device or portion of any apparatus, product or device, based on or embodying the Technology, Patent Rights, or Trade Secrets, including but not limited to any apparatus, product or device or portion thereof described in any patent or patent application claiming the Technology.

1.4. “Net Sales Price” shall mean LICENSEE's invoice price less returns, allowances, or credits, rebates, excise, sales, use or value-added taxes, costs of packing, transportation, and insurance, delivery charges, cash and trade discounts allowed, import duty, and commissions to agents, to the extent separately charged by LICENSEE. Net Sales Price shall also include any sublicense fees received from third party sublicensees to the Licensed Products if received by LICENSEE separate from sales of Licensed Products.

1.5. “Patent Rights” shall mean patents and patent applications owned, controlled or pending by MSI covering various aspects of the Technology, including those listed on Exhibit A, and all continuations, divisionals, continuations-in-part, reexaminations, reissues and foreign counterparts of such patents and patent applications, and rights in patents and patent applications pertaining to the Technology acquired by MSI by license or agreement during the term of this Agreement.

1.6. “Royalty Period” means the period beginning on the Effective Date and ending on the termination or expiration of this Agreement.

1.7. “Royalty Year” shall mean each 12 month period starting with the beginning of the first full calendar quarter that products are offered for sale.

1.8. “Subsidiary” shall mean a corporation, company, or other entity fifty percent (50%) or more of whose voting stock is owned or controlled, directly or indirectly, by LICENSEE.

1.9. “Technology” shall mean, collectively, the ECAP Technology, Trade Secrets and all of the Patent Rights, patents pending, know-how and show how relating to the Licensed Products or necessary or helpful to the commercialization thereof, expressly excluding the intellectual property under the LANS Agreement.

1.10. “Trade Secrets” shall mean, collectively, proprietary non-public documentation and know-how covering or relating to various aspects of the Technology owned or controlled by either or both of (a) MSI and (b) ******.

1.11. “Sold,” shall mean, in respect of Licensed Product, when LICENSEE receives payment for such Licensed Product.

2. License And Royalty Obligations

2.1. License Grant to LICENSEE. As of the Effective Date and subject to the terms and conditions of this Agreement, MSI hereby grants to LICENSEE an exclusive worldwide license to use the Technology during the Term (as defined herein) of this Agreement to make, use, sell, lease or otherwise commercialize and dispose of Licensed Products. This Agreement hereby replaces the Prior Agreement as of the Effective Date. The licenses granted to the Technology and Improvements involving any Trade Secrets shall survive the expiration of the Term, unless this Agreement is terminated by MSI pursuant to Section 8.1 during the Term in which case such licenses shall expire upon such termination.

2.2. Right to Sublicense. The right to sublicense the Technology is hereby granted to LICENSEE, including but not limited to the right for LICENSEE to sublicense the Technology:

2.2.1. to customers, including distributors, resellers and other parties in the distribution channel who have acquired the Licensed Products through sale, lease or other permitted disposition hereunder by LICENSEE;

2.2.2. to have all or part of the Licensed Products made by another manufacturer for use, sale, offer to sell, import, lease or otherwise dispose of by LICENSEE, provided the Licensed Products are made in accordance with written specifications created by or for LICENSEE; and

2.2.3. to Subsidiaries and third parties who enter into a sublicense agreement with LICENSEE.

2.2.4. Any sublicense must be subject to the terms of this Agreement, and provide that MSI is paid royalties by the sublicensee or LICENSEE as though the activities and sales of the sublicensee were performed by LICENSEE, and that sublicensee agree to confidentiality provisions at least as restrictive as those of LICENSEE, and that sublicensee shall undertake the same indemnification obligations in favor of MSI as those expressed herein, and that the sublicense shall terminate upon the termination of this Agreement.

2.3. Minimum Royalties. LICENSEE will pay Minimum Royalties (as defined in the Overarching Agreement) in respect of the Licensed Products as set forth in the Overarching Agreement. The payment of the Minimum Royalties paid under the Overarching Agreement shall be credited against the payment of Earned Royalties (as defined below) so that no amount shall be paid in respect of Earned Royalties until and unless earned royalties under this Agreement and the LANS Agreement exceed the aggregate Minimum Royalties paid.

2.4. Earned Royalties. No royalties shall be due in respect of Licensed Products Sold during the term of the Prior Agreement. LICENSEE shall pay the following amounts to MSI during the Royalty Period with respect to sales that occur during the Royalty Period:

2.4.1. LICENSEE shall pay to MSI on or before the last business day of each quarter during Royalty Year a royalty of: (a) [**] of the gross receipt of the Net Sales Price of each Licensed Product Sold by LICENSEE to Straumann, plus (b) a percentage between [**] and [**] of the gross receipt of the Net Sales Price of each Licensed Product Sold by LICENSEE to all third parties (excluding LICENSEE affiliates) Sold during the respective preceding quarter, as determined, in good faith, by LICENSEE and MSI taking into account production costs, market conditions and the gross margin of the Licensed Products Sold to such third parties (collectively, the “Earned Royalties”).

2.4.2. The amount of Earned Royalties payable under this Agreement shall be reduced by any Minimum Royalties paid by LICENSEE under the Overarching Agreement (but not below zero) as provided above and in the Overarching Agreement.

2.5. Accounting. LICENSEE agrees to keep complete and accurate records with respect to Earned Royalties payment and shall provide to MSI upon request copies of the records to enable MSI to determine the Net Sales Price of Licensed Products Sold which are subject to Earned Royalties. MSI shall have the right through its accredited auditors and at its expense to examine the records and accounts for a Royalty Year during normal business hours solely for the purpose of verifying the Earned Royalties made under this Agreement. Such examinations may be made once per year. LICENSEE agrees to make prompt adjustment, if necessary, to compensate for any errors or omissions disclosed by such examination. If the results of any audit reveal underpayment by LICENSEE of an amount greater than 5% of Earned Royalties for the relevant Royalty Year or Years (if more than one period), then LICENSEE shall promptly (i) reimburse MSI for the reasonable costs of such audit (not to exceed the amount of the underpayment) and (ii) pay an amount of any underpayment.

2.6. Without excusing prompt payment, all undisputed amounts due from LICENSEE hereunder shall accrue interest at a rate of 1.5% per month after the due date thereto, but not more than the maximum rate allowed by law, compounding daily from the date due until the date received by MSI.

2.7. The license granted hereunder is expressly subject to LICENSEE undertaking and continuing to exercise diligence in developing, marketing, and selling Licensed Products. The parties agree that LICENSEE’s good faith, commercially reasonable efforts shall be sufficient to satisfy the preceding.

3. Disclosure Of Technology

3.1. Disclosure of Technical Information. MSI shall fully disclose to LICENSEE its existing information and all Trade Secrets related to the Technology to the extent applicable in the Field and shall provide a written summary of any such Trade Secrets within thirty (30) days of disclosure by written request.

3.2. Disclosure of Technical Improvements. MSI shall regularly and promptly notify LICENSEE of all information and results generated or developed in the course of its research including data, findings, conclusions and inventions relating to the Technology, and all improvements in the Technology, all only to the extent applicable in the Field. Disclosure of all such information shall be subject to the Confidentiality provisions of and the Improvements provisions of this Agreement.

3.3. Prior Information. This section applies to Technology previously provided by either party to the other prior to the Effective Date of this Agreement. Any and all such prior information shall be deemed to be included in this Agreement and subject to the Confidentiality provisions of this Agreement.

4. Technical Consultation and Implementation

4.1. Consultation and Implementation. MSI and LICENSEE hereby agree to work together in good faith to implement this Agreement. LICENSEE may desire during the Term of this Agreement to secure technical consultation of the ECAP Technology. LICENSEE shall enter into that certain consulting agreement with ***** to provide such technical consultation.

5. Confidentiality

5.1. Confidential Information. During the Term of this Agreement, MSI and LICENSEE agree to take all steps reasonably necessary to safeguard the secrecy and confidentiality of all proprietary Technology and proprietary information concerning the sales of the Licensed Products. All written confidential information produced by either party shall clearly be marked “CONFIDENTIAL” or “PROPRIETARY” on each page containing confidential information. This Section 5.1 shall not limit LICENSEE’s use of information for regulatory purposes and disclosures reasonably necessary (in LICENSEE’s discretion) for commercializing the Licensed Products; provided that such information disclosed for regulatory or commercial purposes for terminating the Agreement or calculating Royalties will remain Confidential Information.

5.2. Exclusions. The obligation of confidentiality imposed by the foregoing Section 5.1 shall not apply to information which is:

5.2.1. in the public domain at the time of such disclosure or development or subsequently came into the public domain by publication or otherwise except by breach of this Agreement or any prior non-disclosure agreement between the parties;

5.2.2. received by MSI or LICENSEE from a third party not under any confidentiality obligation to MSI or LICENSEE;

5.2.3. in MSI’s or LICENSEE possession prior to disclosure by the disclosing party, as shown by clear and convincing proof; or

5.2.4. required to be disclosed by operation of law.

6. Improvements, Patent Prosecution and Enforcement

6.1. Improvements. Improvements to the Technology or to any Licensed Product which are conceived of by any employees or agents of either party shall be owned by such party. As between MSI and LICENSEE, Improvements by ***, including the conception of, reduction to practice of, or development of, any beneficial modification or novel application of the Technology, and all associated Trade Secrets and Patent Rights which accrue wholly or partly from said Improvements or other creative activities of **** after the date hereof shall become the sole and exclusive property of LICENSEE to the extent provided in a written agreement between LICENSEE and ****. Any of such creations which are Improvements by **** after the date hereof shall be used for the purposes of determining royalties. All Trade Secrets created on or before the date hereof and all Improvements shall be subject to Earned Royalties on Licensed Products hereunder. LICENSEE may independently pursue, at its own discretion, patents for any Improvements owned by LICENSEE. If MSI makes any patentable invention or Improvement with respect to the Technology which is not included within the definition of Technology, LICENSEE shall automatically receive the license with respect thereto under the same terms as set forth herein within the defined Field of Use. As used herein, “Improvement” means any improvement, modification or enhancement to the Technology relying on or using the Technology or any component thereof, whether or not patentable.

6.2. Patent Prosecution and Maintenance.

6.2.1. Subject to its right of set-off under the Overarching Agreement, LICENSEE shall continue to prosecute and maintain the Patents, including the selection of counsel. Subject to Section 6.2.2., for each patent application and patent under the Patent Rights, LICENSEE shall (i) prepare, file, and prosecute such patent application; (ii) maintain such patent; (iii) pay at its own cost all fees and expenses associated with its activities pursuant to Section 6.2.2.(i) and (ii); (iv) keep MSI currently informed of the filing and progress of all material aspects of the prosecution of such patent application and the issuance of patents from any such patent application; (v) consult with MSI concerning any decisions which could affect the scope or enforcement of any issued claims or potential abandonment of such patent application or patent; and (vi) notify MSI in writing of any additions, deletions, or changes in the status of such patent or patent application.

6.2.2. If LICENSEE wishes to abandon any patent application or patent that is a Patent Right, it shall give MSI sixty (60) days prior written notice of the desired abandonment. On MSI's request at MSI's sole discretion, which may be provided at any time after the notice of desired abandonment, MSI shall have the right to assume the obligation to prosecute any such abandoned patent application or patent MSI wishes to prosecute. LICENSEE may abandon any such patent application or patent that is a Patent Right in LICENSEE's sole discretion.

6.2.3. MSI shall be consulted about the prosecution of the Patent Rights as set forth in Section 6.2.1.

6.3. Patent Infringement.

6.3.1. Each party shall notify the other party in writing of any suspected infringement(s) of the Patent Rights anywhere in the world and shall inform the other party of any evidence of such infringement(s). Both MSI and LICENSEE will use good faith efforts to cooperate with each other to terminate such infringement without litigation.

6.3.2. The parties will cooperate in good faith in any litigation related to infringement of the Licensed Products in the Field of Use. The parties may jointly pursue a claim against an alleged infringer, including litigation, in which case each party shall bear its own costs and shall jointly control settlement terms or conditions associated with such claim or litigation and the timing of resolution.

6.3.3. If a party decides to pursue a claim against an alleged infringer, and the other party declines to jointly pursue such claim or litigation (the “Declining Party”), then the party pursuing the claim (the “Controlling Party”) may pursue such claim or litigation and shall pay its own expenses and the reasonable expenses of the Declining Party, if any, and shall, after consultation with the Declining Party, maintain the exclusive right to determine settlement terms or conditions associated with such claim or litigation and the timing of resolution, except that LICENSEE shall not admit or concede invalidity, lack of infringement, or unenforceability of any of any Patent without MSI’s prior written consent. The Declining Party shall consent to be joined in such claim or litigation, subject to payment of the reasonable expenses of the Declining Party by the Controlling Party.

6.3.4. Any recovery shall be apportioned as follows:

6.3.4.1 first to expenses of the parties in pursuing such claim or litigation;

6.3.4.2 if the parties jointly pursued such claim or litigation, and each paid its own expenses, then any recovery excess of expenses shall be shared equally but amounts received by LICENSEE shall not be Net Sales Price and shall not be subject to any royalty hereunder;

6.3.4.3 if MSI pursued such claim or litigation, and paid LICENSEE's expenses, then any recovery excess of expenses shall be kept by MSI;

6.3.4.4 if LICENSEE pursued such claim or litigation, and paid MSI’s expenses, then any recovery excess of expenses shall be kept by LICENSEE, and such excess shall be considered to be Net Sales Price, and royalties thereon shall be paid to MSI thereon at a rate of two percent (2%).

7. Term

7.1. Original Term; Renewal by Mutual Agreement. This Agreement shall commence as of the Effective Date and, unless terminated in accordance with the Termination provisions of this Agreement, shall remain in force until the date that is 17 years after the date hereof (the “Term”); provided that the right to use Trade Secrets without royalty obligations shall survive the expiration of this Agreement provided MSI has not terminated this Agreement pursuant to Section 8.1 prior to its expiration.

7.2. Unilateral Extension by LICENSEE for Regulated Products. Notwithstanding Section 8.1 or any other provision herein to the contrary, LICENSEE has the right and option to unilaterally extend the Agreement with the same terms but solely with respect to regulated products where LICENSEE has agreed during the Term to provide Licensed Products following the expiration but only to the extent of those continuing products (subject to the Earned Royalty but without any obligation for a guaranteed payment or minimum royalty). LICENSEE may exercise this unilateral right at any time during the Original Term and the ninety (90) days following any expiration or termination by providing written notice thereof to MSI.

8. Termination

8.1. This Agreement may be terminated by either party in the event of a material breach of or default under the terms hereof. Upon the occurrence of a material breach of or default under this Agreement by LICENSEE or MSI, the other party may at its sole option terminate this Agreement by providing the breaching party with written notice specifying the breach or default. The breaching party shall be entitled to cure any breach or default identified in the notice within 90 calendar days after the date upon which the notice was received. If, at the end of the 90-day cure period, any of the identified breaches or defaults has not been cured, or if a cure acceptable to the non-breaching party has not been agreed upon, this Agreement shall terminate, effective as of the end of the 90 day cure period, without additional notice or further act by the non-breaching party.

8.2. Upon any termination of this Agreement by either parties or by agreement between the parties or by operation of law, LICENSEE shall promptly assign the LANS Agreement to MSI upon written notice by MSI to LICENSEE.

9. Indemnification

9.1. MSI will indemnify, defend, and hold harmless LICENSEE and its officers, directors, employees, agents, successors, and assigns against any and all losses, damages, liabilities, deficiencies, claims, actions, judgments, settlements, interest, awards, penalties, fines, costs or expenses of whatever kind, including reasonable attorneys' fees, arising out of or resulting from any third party claims, suits, actions, or proceeding related to, arising out of, or resulting from (a) MSI's breach of any representation, warranty, covenant, or obligation under this Agreement, (b) any license agreement or rights to utilize any of the Technology granted by MSI to any person or entity, except to LICENSEE or its affiliates, or (c) MSI’s negligence or willful misconduct.

9.2. LICENSEE will indemnify, defend and hold harmless MSI, its officers, directors, employees, agents, successors, and assigns and the inventors of any invention claimed in patents or patent applications under Patent Rights (including the Licensed Products contemplated thereunder) against any and all losses, damages, liabilities, deficiencies, claims, actions, judgments, settlements, interest, awards, penalties, fines, costs or expenses of whatever kind, including reasonable attorneys' fees, arising out of or resulting from any third party claims, suits, actions, or proceeding related to, arising out of, or resulting from (a) LICENSEE's breach of any representation, warranty, covenant, or obligation under this Agreement or (b) LICENSEE’s negligence or willful misconduct.

9.3. In the event that a third party claims that the Technology or the practice of the Technology infringes on the intellectual property rights of such third party or if LICENSEE believes that MSI has breached any representation, warranty or covenant hereunder (including the representations contained in Sections 10.2), LICENSEE may temporarily suspend payment of any royalties until final determination of whether or not the Technology or the practice of the Technology does infringe upon the rights of any third-party or MSI has breached a representation, warranty or covenant (as determined by LICENSEE in good faith). In the event it is found that the Technology or the practice of the Technology does infringe upon any patent or other property or propriety right of a third-party, LICENSEE may immediately terminate this Agreement and LICENSEE may set-off any losses arising out of any third-party infringement claim or breach (including reasonable attorney’s fees) from any royalties withheld by LICENSEE under this Section 9.3. The Technology and the practice of the Technology shall be considered to infringe for purposes of this Section only if the Technology or the practice of the Technology infringes without any addition, deletion, or alteration by LICENSEE that was not expressly approved by MSI. Infringement of third party intellectual property rights by Licensed Products, where the infringement would not occur but for unapproved changes to the Technology or product designs chosen or developed by LICENSEE, shall not constitute “infringement” for purposes of this Section.

9.4. LICENSEE may set-off amounts due from MSI under this Agreement against amounts owed to or owing to MSI under the Overarching Agreement or the LANS Agreement.

10. Representations and Warranties

10.1. Mutual Representations and Warranties. Each party represents and warrants to the other party that (a) it is duly organized, validly existing, and in good standing as a corporation as represented herein under the laws and regulations of its jurisdiction of incorporation; (b) it has and throughout the Term shall retain, the full right, power, and authority to enter into this Agreement and to perform its obligations hereunder; (c) the execution of this Agreement by its representative whose signature is set forth at the end hereof has been duly authorized by all necessary corporate action of the party; and (d) when executed and delivered by such party, this Agreement shall constitute the legal, valid, and binding obligation of that party, enforceable against that party in accordance with its terms.

10.2. Representations and Warranties of MSI. MSI represents and warrants to LICENSEE that:

10.2.1. the Technology, including the Patent Rights and patent applications are all the Technology, patents and patent applications owned by MSI, or in which MSI has a licensable interest, that are necessary or useful for LICENSEE to exclusively make, have made, use, offer to sell, sell, and import the Licensed Products;

10.2.2. it has control (by ownership, license or otherwise) of the entire right, title, and interest in and to the Technology, and is the record owner of all the Technology;

10.2.3. it has, and throughout the Term will retain, the unconditional and irrevocable right, power, and authority to grant the licenses hereunder;

10.2.4. neither its grant of the license, nor its performance of any of its obligations, under this Agreement does or will at any time during the Term (i) conflict with or violate any applicable law; (ii) conflict with or constitute a breach of any agreement with a third party; (iii) require the consent, approval, or authorization of any governmental or regulatory authority or other third party; or (iv) require the provision of any payment or other consideration to any third party;

10.2.5. it has not granted and will not grant any licenses or other contingent or non-contingent right, title, or interest under or relating to Technology, that does or will conflict with or otherwise affect this Agreement, including any of MSI's representations, warranties, or obligations, or LICENSEE's rights or licenses hereunder;

10.2.6. any license or rights to utilize any of the Technology previously granted by MSI or Metallicum, Inc. to Basic Dental Implants, Inc. and/or Danlin Products, Inc., including a certain joint venture or agreement dated May 21, 2008 between one or more of such parties, has been terminated;

10.2.7. any license agreement or rights to utilize any of the Technology previously granted by MSI to any person or entity, except to LICENSEE or LICENSEE’s affiliates, has been effectively terminated;

10.2.8. there neither are, nor will MSI at any time during the Term enter, any encumbrances, liens, or security interests involving any Technology; and

10.2.9. there is no settled, pending, or threatened litigation or reissue application, re-examination, post-grant, inter partes, or covered business method patent review, interference, derivation, opposition, claim of invalidity, or other claim or proceeding (including in the form of any offer to obtain a license): (i) alleging the unpatentability, invalidity, misuse, unregisterability, unenforceability, or noninfringement of, or error in any Technology; or (ii) challenging MSI's ownership of, or right to practice or license, any Technology, or alleging any adverse right, title, or interest with respect thereto.

10.3. Representations and Warranties of LICENSEE. LICENSEE represents and warrants to MSI that:

10.3.1. It has the resources, including without limitation capital, facilities, equipment, know-how, personnel, distribution, suppliers, marketing, and customer relationships to commercially sell the Technology in a commercially reasonable manner;

10.3.2. it has control (by ownership, license or otherwise) of the entire right, title, and interest in and to the Improvements made by its employees or agents; and

10.3.3. neither its receipt of the license, nor its performance of any of its obligations, under this Agreement does or will at any time during the Term (i) conflict with or violate any applicable law; (ii) require the consent, approval, or authorization of any governmental or regulatory authority or other third party; or (iii) require the provision of any payment or other consideration to any third party.

11. Arbitration

11.1. Dispute Resolution. The parties hereto agree that all claims, disputes or controversies arising under, out of or in connection with this Agreement shall be resolved by binding arbitration under the rules of the American Arbitration Association for commercial disputes by a single mediator. Such arbitration shall be held in ***** or any other forum agreed upon by the parties. The parties agree to select a single arbitrator who will establish the rules and procedure of the arbitration under the applicable rules of the American Arbitration Association. Both MSI and LICENSEE irrevocably submit to the jurisdiction of the United States District Courts in the ***** for entry of any arbitration decision or to obtain any preliminary relief which may be necessary and consent to the enforcement of any award rendered in such arbitration.

12. Miscellaneous

12.1. Notices. Notices, approvals, and consents required or permitted under this Agreement shall be in writing and shall be sent by hand or by certified mail, postage prepaid, to the address given below or to such other addresses as the parties may hereafter specify.

12.1.1. LICENSEE:

[**]

12.1.2. MSI:

The Chrysler Building, 26th Floor

405 Lexington Avenue

New York, New York 10174

Attn: President

12.2. Waivers. No waiver of any right under this Agreement shall be deemed effective unless contained in a writing signed by the party charged with such waiver, and no waiver of any rights arising from any breach or failure to perform shall be deemed to be a waiver of any future right or of any other right arising under this Agreement.

12.3. Entire Agreement. This Agreement, together with all schedules and exhibits, constitutes the sole and entire agreement of the parties with respect to the subject matter hereof and supersedes all prior agreements whether oral or written. This Agreement may not be modified after its execution except by a writing signed by authorized representatives of the parties hereto.

12.4. Further Assurances. Each party shall, upon the reasonable request of the other party, execute such documents and perform such acts as may be necessary to give full effect to the terms of this Agreement.

12.5. No Conflicts. Each of MSI and LICENSEE represent that they have executed no agreement which is in conflict with this Agreement, and agree that no option or license shall be granted on any basis to any third party which is in conflict with this Agreement unless and until this Agreement is terminated.

12.6. Headings. The headings in this Agreement are for reference only and shall not affect the interpretation of this Agreement.

12.7. Severability. If any term or provision of this Agreement is or becomes or is deemed invalid, illegal, or unenforceable in any jurisdiction, such provision shall be deemed amended to conform to applicable laws so as to be valid and enforceable, or, if it cannot be so amended without materially altering the intention of the parties, it shall be stricken and the remainder of this Agreement shall remain in full force and effect.

12.8. Governing Law. This Agreement shall be governed by and construed in accordance with the internal laws of the State of [**] without regard to its conflict of law provisions.

12.9. Counterparts. This Agreement may be executed in counterparts, each of which shall be deemed an original, but all of which together shall be deemed to be one and the same agreement. A signed copy of this Agreement delivered by facsimile, e-mail, or other means of electronic transmission (to which a signed PDF copy is attached) shall be deemed to have the same legal effect as delivery of an original signed copy of this Agreement.

12.10. Assignment. Except for a sale or transfer of the business to which this Agreement relates, this Agreement may not be assigned or otherwise transferred, nor, except as expressly provided hereunder, may any right or obligations hereunder be assigned or transferred, by either Party without the written consent of the other Party; provided, however, that LICENSEE may, without such consent, assign this Agreement only in its entirety to LICENSEE or a wholly owned subsidiary, provided that LICENSEE is not in breach of this Agreement at such time and provided further than LICENSEE remains liable for all obligations that accrue prior to such assignment hereunder. Any purported assignment in violation of the preceding sentence shall be void. Any permitted assignee shall assume all obligations of its assignor under this Agreement.

12.11. Force Majeure. Neither party shall be held liable or responsible to the other party, nor be deemed to have defaulted under or breached this Agreement, for failure or delay in fulfilling or performing any term of this Agreement when such failure or delay is caused by or results from causes beyond the reasonable control of the affected party, including, but not limited to, fire or floods; embargoes, war, acts of war (whether war be declared or not), insurrections, riots, or civil commotions; strikes, lockouts, or other labor disturbances; acts of God; or acts, omissions, or delays in acting by any governmental authority or the other party; provided, however, it is understood that this Section is intended only to suspend and not discharge a party’s obligations under this Agreement and that when the causes of the failure or delay are removed or alleviated, the affected party shall resume performance of its obligations hereunder.

12.12. Survival. Any termination pursuant to Article 9 shall not affect either party’s rights and obligations with respect to any Licensed Products made with the use of any of the Trade Secrets or Technology prior to such termination. The rights and obligations of the parties set forth in this Section 12.12, and any right, obligation, or required performance of the parties in this Agreement which, by its express terms or nature and context is intended to survive termination or expiration of this Agreement, will survive any such termination or expiration.

12.13. Independent Contractors. The relationship between the parties is that of independent contractors. Nothing contained in this Agreement shall be construed as creating any agency, partnership, joint venture, or other form of joint enterprise, employment, or fiduciary relationship between the parties, and neither party shall have authority to contract for or bind the other party in any manner whatsoever.

Signature page follows

IN WITNESS WHEREOF, the parties have executed this Exclusive Intellectual Property License and Royalty Agreement by their respective authorized representatives as of the Effective Date.

MANHATTAN SCIENTIFICS, INC.

By:

Name:

Title:

[**]

By:

Name:

Title:

EXHIBIT A

Patent Rights

· US 13/833,148 (U.S. Pub. No. 2014/0271336) and all patent applications and patents claiming priority therefrom and all US and foreign counterparts

· US 14/212,344 (U.S. Pub. No. 2016/0108499) and all patent applications and patents claiming priority therefrom and all US and foreign counterparts

· US 14/774,182 (U.S. Pub. No. 2016/0032437) and all patent applications and patents claiming priority therefrom and all US and foreign counterparts

· PCT/US2014/28197 and all related national stage applications

A-1

EX-10.3 4 mhtx_ex103.htm FORM OF PATENT SUBLICENSE AGREEMENT mhtx_ex103.htm

EXHIBIT 10.3

[**] Marked information has been omitted from the exhibit because it is both (i) not material and (ii) would likely cause competitive harm to the company if publicly disclosed.

PATENT SUBLICENSE AGREEMENT

This Patent Sublicense Agreement (this “Sublicense Agreement”) dated as of May 1, 2019 (the “Effective Date”) is made and entered into by and between MANHATTAN SCIENTIFICS, INC., a Delaware corporation having its principal place of business at The Chrysler Building, 26^th Floor, 405 Lexington Avenue, New York, New York 10174 (“MSI”) and [**] with offices located at [**] (“LICENSEE”).

RECITALS

WHEREAS, MSI has previously acquired rights to the Patent Rights (as defined in the LANS Agreement) pursuant to the EXCLUSIVE FIELD-OF-USE PATENT LICENSE AGREEMENT dated as of January 5, 2009 by and between Los Alamos National Security, LLC, a Delaware company (“Los Alamos”), and MSI as attached hereto as Exhibit A (the “LANS Agreement”). The LANS Agreement expressly grants MSI the right to sublicense MSI's rights in the Patent Rights;

WHEREAS, LICENSEE desires to receive, and MSI is willing to grant, sublicense rights under the LANS Agreement; and

AGREEMENT

1. Definitions. Defined terms used, but not defined in this Sublicense Agreement shall have the meanings as defined in the LANS Agreement.

2. Sublicense Grant.

2.1. Pursuant to Section 3.1 of the LANS Agreement, and subject to the LANS Agreement (including LICENSEE’s compliance with all obligations imposed on any Sublicensee in the LANS Agreement), MSI hereby grants to LICENSEE, and LICENSEE hereby accepts, (a) an exclusive worldwide sublicense to make, have made, use, import, sell, offer to sell, and have sold Licensed Inventions under the Patent Rights as granted to MSI in the LANS Agreement in products for human and animal medical device markets, including but not limited to the markets for medical devices used in vivo, dental implants, orthodontic devices, orthopedic devices, and vascular and cardiovascular devices or implants, and any related research, regulatory approvals and trials “Field of Use”) and (b) a non-exclusive worldwide sublicense to make, have made, use, import, sell, offer to sell, and have sold Licensed Inventions under the Patent Rights as granted to MSI in the LANS Agreement outside the Field of Use; except to the extent, if any, limited by MSI’s agreement with ***** effective January 1, 2013 (the “*****”).

2.2. LICENSEE shall not have the right to grant further sublicenses without the express written consent of Los Alamos.

2.3. MSI shall not use the Patent Rights or permit any third party other than LICENSEE and its affiliates to use the Patent Rights solely with respect to the Field of Use. MSI shall not amend the LANS Agreement, except to the extent approved in writing by LICENSEE in its reasonable discretion.

2.4. LANS has expressly reserved the right to use the Technology, including the right to make, have made, use and have used Licensed Inventions for any purpose permitted under the LANS Contract, including, but not limited to, Cooperative Research and Development Agreements, Work for Others Agreements, User Facility Agreements, research and education.

2.5. The U.S. Government has a nonexclusive, nontransferable, irrevocable, paid up license to practice or have practiced throughout the world, for or on behalf of the U.S. Government, inventions covered by the Patent Rights, and has certain other rights under 35 U.S.C. 200-212 and applicable implementing regulations.

2.6. Nothing in this Sublicense Agreement will be deemed to limit the right of LANS to publish any and all technical data resulting from any research performed by the LANS, provided that such publication shall be delayed as necessary to preserve both United States of America and foreign Patent Rights.

2.7. At the election of LICENSEE, in its sole discretion, MSI shall assign and LICENSEE shall assume the LANS Agreement at any time during the Term (as defined herein).

2.8. Upon written notice from LICENSEE, MSI shall terminate the Straumann Agreement.

3. MSI Representations and Warranties. MSI hereby represents and warrants to LICENSEE that:

3.1. The copy of the LANS Agreement attached hereto as Exhibit A is a true and correct copy and the LANS Agreement has not been amended or otherwise changed.

3.2. MSI is and will remain the licensee to the Patent Rights, pursuant to and subject to the LANS Agreement.

3.3. MSI has not granted any sublicenses to the Patent Rights to any third party other than to LICENSEE, except for sublicenses that have been terminated.

3.4. Any license or rights to utilize any of the rights and licenses under the LANS Agreement previously granted by MSI or Metallicum, Inc. to Basic Dental Implants, Inc. and/or Danlin Products, Inc., including a certain joint venture or agreement dated May 21, 2008 between one or more of such parties, has been terminated;

3.5. Any license agreement or rights to utilize any of the rights and licenses to utilize any of the Technology granted by MSI to any person or entity, except to LICENSEE or its affiliates, have been terminated;

3.6. All fees and royalties required to be paid by MSI to Los Alamos under the LANS Agreement to date have been timely paid, and will be timely paid, there have been no extensions of time granted to pay amounts due to Los Alamos and that there are no, and will not be any, past due amounts owed by MSI to Los Alamos.

3.7. MSI has timely met all of its due diligence obligations under Section 5.2 of the LANS Agreement and no further Milestones are required to be met.

3.8. Neither MSI nor, to the knowledge of MSI, Los Alamos has breached the LANS Agreement.

3.9. LANS has warranted to MSI that LANS is the lawful owner of the Patent Rights and has the right to grant the licenses granted to MSI in the LANS Agreement. MSI has no knowledge that these warranties by LANS have been breached.

3.10. MSI has the right to grant the sublicense granted herein.

3.11. Except as expressly set forth in this Sublicense Agreement, the licenses and the associated Technology, Patent Rights, Licensed Products, Licensed Services, and Licensed Methods are provided by MSI AS IS, WITHOUT WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR ANY OTHER WARRANTY, EXPRESS OR IMPLIED. EXCEPT AS EXPRESSLY SET FORTH IN THIS SUBLICENSE AGREEMENT AND THE LANS AGREEMENT, MSI, LANS, AND THE U. S. GOVERNMENT MAKE NO OTHER EXPRESS OR IMPLIED REPRESENTATION OR WARRANTY THAT THE LICENSED PRODUCTS, LICENSED SERVICES, OR LICENSED METHODS WILL NOT INFRINGE ANY PATENT, COPYRIGHT, TRADEMARK OR OTHER PROPRIETARY RIGHT.

3.12. Nothing in this Sublicense Agreement will be construed as:

3.12.1. an obligation to bring or prosecute actions or suits against third parties for patent infringement;

3.12.2. conferring by implication, estoppel, or otherwise any license or rights under any patents of MSI, LANS, or the U. S. Government other than the sublicense rights as set forth herein; or

3.12.3. an obligation by MSI, LANS, or the U. S. Government to furnish any know how, technical assistance, or technical data other than as stated in the Grant provisions hereof.

3.13. NEITHER LANS NOR THE U.S. GOVERNMENT WILL BE LIABLE FOR ANY LOST PROFITS, COSTS OF PROCURING SUBSTITUTE GOODS OR SERVICES, LOST BUSINESS, ENHANCED DAMAGES FOR INTELLECTUAL PROPERTY INFRINGEMENT, OR FOR ANY INDIRECT, INCIDENTAL, SPECIAL, CONSEQUENTIAL, PUNITIVE, OR OTHER SPECIAL DAMAGES SUFFERED BY CARPENTER, ITS JOINT VENTURES, OR AFFILIATES ARISING OUT OF OR RELATED TO THIS SUBLICENSE AGREEMENT FOR ALL CAUSES OF ACTION OF ANY KIND (INCLUDING TORT, CONTRACT, NEGLIGENCE, STRICT LIABILITY AND BREACH OF WARRANTY) EVEN IF LANS OR THE U.S. GOVERNMENT HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.

3.14. MSI has the right to terminate the Straumann Agreement in its sole discretion.

3.15. MSI understands and agrees that the foregoing representations and warranties are material inducements to LICENSEE agreeing to this Sublicense Agreement and that LICENSEE would not have entered into this Sublicense Agreement without such assurances.

4. Mutual Representations and Warranties. Each party represents and warrants to the other party that (a) it is duly organized, validly existing, and in good standing as a corporation as represented herein under the laws and regulations of its jurisdiction of incorporation; (b) it has and throughout the term shall retain, the full right, power, and authority to enter into this Sublicense Agreement and to perform its obligations hereunder; (c) the execution of this Sublicense Agreement by its representative whose signature is set forth at the end hereof has been duly authorized by all necessary corporate action of the party; and (d) when executed and delivered by such party, this Sublicense Agreement shall constitute the legal, valid, and binding obligation of that party, enforceable against that party in accordance with its terms.

5. Royalties. LICENSEE shall pay MSI a royalty on Net Sales by LICENSEE (the “Earned Royalty”) during the Term (as defined in Section 10.1). Earned Royalty payments to MSI shall be calculated using the process and percentages) spelled out in the LANS Agreement, including interest for late payments. For each payment made by LICENSEE to MSI, MSI will provide LICENSEE with a receipt within five (5) business days of receipt of payment. Further, with respect to each payment made by MSI to Los Alamos of amounts for which LICENSEE is responsible under this Sublicense Agreement, MSI shall provide LICENSEE written confirmation that MSI promptly paid Los Alamos all required amounts, in any case within three (3) business days of LICENSEE’s written request for such confirmation. MSI acknowledges and agrees that LICENSEE previously paid $[**] in December 2018 pursuant to a predecessor agreement to the ECAP Agreement and MSI agreed to and represents and warrants that it did use such funds to pay the 2018 license fee required under the LANS Agreement and that the next *****shall be due on or about December 31, 2019.

6. Progress Reports. LICENSEE will submit to MSI a semiannual progress report covering activities by LICENSEE related to the development and testing of all Licensed Inventions and obtaining government approvals necessary for marketing them (the “Progress Reports”). These Progress Reports shall comply with the report format shown in Appendix D of the LANS Agreement. Progress reports are due to MSI on (a) August 24 for the calendar half beginning January 1 and ending June 30 and (b) February 21 for the calendar half beginning July 1 and ending December 31. The Progress Reports may not be modified by MSI except with the written approval of LICENSEE. MSI shall promptly deliver such Progress Reports to Los Alamos with a copy to LICENSEE providing proof of such delivery.

7. Confidential Information.

7.1. During the Term of this Sublicense Agreement MSI and LICENSEE agree to take all steps reasonably necessary to safeguard the secrecy and confidentiality of all proprietary technology and proprietary information concerning the sales of the Licensed Products. All written confidential information produced by either party shall clearly be marked “CONFIDENTIAL” or “PROPRIETARY” on each page containing confidential information.

7.2. Exclusions. The obligation of confidentiality imposed by the foregoing Article 7.1 shall not apply to information which is:

7.2.1. in the public domain at the time of such disclosure or development or subsequently came into the public domain by publication or otherwise except by breach of this Sublicense Agreement; or

7.2.2. received by MSI or LICENSEE from a third party not under any confidentiality obligation to MSI or LICENSEE; or

7.2.3. in MSI’s or LICENSEE possession prior to disclosure by the disclosing party, as shown by clear and convincing proof; or

7.2.4. required to be disclosed by operation of law.

8. Third Party Infringement.

8.1. MSI's rights and obligations relative to actions against infringers of the Licensed Patents are subject to provisions in the LANS Agreement. All rights and obligations in these Third Party Infringement provisions are subject to MSI's rights and obligations under the LANS Agreement.

8.2. In the event that MSI or LICENSEE learns of infringement of any Patent Rights licensed under this Sublicense Agreement, the knowledgeable Party will provide the other Party with (i) written notice of such infringement and (ii) any evidence of such infringement reasonably available to it. Both MSI and LICENSEE will use good faith efforts to cooperate with each other to terminate such infringement without litigation.

8.3. MSI and LICENSEE will cooperate in good faith in any litigation related to infringement of the Licensed Patents in the Field of Use. LICENSEE shall have the first option to bring such litigation, and, if it does, then LICENSEE shall pay all obligations of MSI to LANS arising from such litigation. If MSI is joined in such suit, LICENSEE shall also pay MSI's reasonable costs incurred by MSI arising out of such litigation, including but not limited to any reasonable legal fees of counsel that MSI selects and retains to represent it in the suit.

8.4. If LICENSEE has not initiated litigation against the alleged infringer within 150 days following the date the Infringement Notice under the LANS Agreement takes effect, then MSI shall have the right to initiate litigation, and MSI shall pay MSI's obligations to LANS arising from such litigation. If LICENSEE is joined in such litigation, then MSI shall also pay LICENSEE's reasonable costs incurred by LICENSEE arising out of such litigation, including but not limited to any legal fees of counsel that LICENSEE selects and retains to represent it in the suit.

8.5. MSI and LICENSEE will cooperate in good faith in any defense of the validity of the Licensed Patents, with each party paying its own expenses except as otherwise provided herein. MSI and LICENSEE agree to be bound by all determinations of patent infringement, validity, and enforceability (but no other issue) resolved by any adjudicated judgment in a suit brought in compliance with this Section 8, unless otherwise agreed by the Parties.

8.6. Expenses of LICENSEE and MSI will be considered expenses of the Licensee under the LANS Agreement for purposes of apportioning any recovery (including accounting of defendants' profits and compulsory royalties), and any recovery designated as for repayment of expenses shall be apportioned between LICENSEE and MSI according to the proportions of their total expenses amenable to such reimbursement. A portion of any recovery in excess of litigation costs may be obligated to LANS pursuant to the LANS Agreement; the remainder shall be shared between LICENSEE and MSI as follows: (i) if LICENSEE brings the action pursuant to Section 8.3, then it shall retain the remainder not paid to LANS and amounts received by LICENSEE shall be subject to Earned Royalties hereunder; (ii) shared equally if MSI brings the action and amounts received by LICENSEE shall not be subject to Earned Royalties hereunder.

8.7. Any and all recovery of damages (including accounting of defendants’ profits and compulsory royalties) after accounting for the amounts due Los Alamos shall be shared between Los Alamos on the one hand and MSI and LICENSEE on the other hand (with as specified in the License Agreement first go to pay expenses for the litigation or licensing activity to the extent not previously recovered pursuant to Section 8.6, and otherwise payable by LICENSEE for sales of Licensed Products.

9. Insurance. LICENSEE, at its sole cost and expense, will insure its activities in connection with the work under this Sublicense Agreement and obtain, keep in force, and maintain insurance or an equivalent program of self-insurance in such amounts as required under Section 17.2 of the LANS Agreement.

10. Term and Termination.

10.1. The term of this Sublicense Agreement begins on the Effective Date of this Sublicense Agreement and remains in full force and effect until the expiration of the last Valid Claim to expire of the patents included within the Patent Rights, unless sooner terminated by operation of law or by acts of either of the parties in accordance with the terms of the Sublicense Agreement (such period constituting the “Term”).

10.2. If either party believes the other is in breach of this Sublicense Agreement, it may give notice of such breach to the other party, and the breaching party shall have thirty (30) days in which to remedy the breach. If the breach is not remedied within such thirty (30) day period, the non‑breaching party may terminate this Sublicense Agreement immediately upon delivery to the breaching party of a written notice of termination. The non‑breaching party's right to terminate this Sublicense Agreement shall not be construed as an exclusive remedy.

10.3. LICENSEE shall have the right at any time to terminate this Sublicense Agreement upon a ninety (90)-day written notice to MSI for any reason or no reason.

10.4. If LICENSEE fails to deliver to MSI any report when due, or fails to pay any royalty or fee when due, or if LICENSEE breaches any other material term of this Sublicense Agreement, including, but not limited to, the provisions of the LAN Agreement, MSI may exercise its right to terminate this Sublicense Agreement. To exercise its rights, MSI must give written notice of default to LICENSEE pursuant to the Notices provisions hereof. If LICENSEE fails to cure the default, and provide written tangible evidence satisfactory to MSI that the deficiency has been cured, within thirty (30) days from the effective date of notification to LICENSEE, MSI may, at its option, terminate this Sublicense Agreement immediately.

10.5. Any termination does not relieve LICENSEE of its obligation to pay any royalty or license fees due or owing at the time of termination and does not impair any accrued right of MSI.

10.6. This Sublicense Agreement will terminate automatically on the date of filing a voluntary petition in bankruptcy by LICENSEE or an involuntary petition in bankruptcy by LICENSEE which petition is not dismissed within 90 days.

11. Indemnification; Setoff.

11.1. MSI shall indemnify, defend, and hold harmless LICENSEE and its officers, directors, employees, agents, successors, and assigns against any and all losses, damages, liabilities, deficiencies, claims, actions, judgments, settlements, interest, awards, penalties, fines, costs or expenses of whatever kind, including reasonable attorneys' fees, arising out of or resulting from (a) any third party claims, suits, actions, or proceeding related to, arising out of, or resulting from MSI's breach of any representation, warranty, covenant, or obligation under this Sublicense Agreement or (b) any breach of any of MSI’s representations and warranties contained in Sections 3.4, 3.5 or 3.14 hereof.

11.2. LICENSEE will indemnify, hold harmless, and defend MSI; LANS; the sponsors of the research that led to the Technology; the inventors of any invention claimed in patents or patent applications under Patent Rights (including the Licensed Products, Licensed Services, and Licensed Methods contemplated thereunder); their employers; and the officers, employees, and agents of any of the foregoing (each and (“Indemnitee”), against any and all claims, suits, losses, damages, costs, fees, expenses, liabilities, deficiencies, actions, judgments, settlements, interest, awards, penalties or fines of whatever kind if and to the extent resulting from, or arising out of, the exercise of this Agreement, except for any negligent acts of omissions or willful misconduct of an Indemnitee and except for claims or suits brought by an Indemnitee against another Indemnitee. This indemnification shall include, but will not be limited to, any product liability. In addition, LICENSEE may suspend payment of Earned Royalties hereunder if LICENSEE has determined that MSI may have breached a representation, warranty or covenant hereunder (as determined by LICENSEE in good faith) and may setoff the amount of such liability, cost or loss suffered by LICENSEE as a result of such breach.

12. Dispute Resolution. The parties hereto agree that all claims, disputes or controversies arising under, out of or in connection with this Sublicense Agreement shall be resolved by binding arbitration under the rules of the American Arbitration Association for commercial disputes by a single mediator. Such arbitration shall be held in ***** or such arbitration may be held in any other forum agreed upon by the parties. The parties agree to select a single arbitrator who will establish the rules and procedure of the arbitration under the applicable rules of the American Arbitration Association. Both MSI and LICENSEE irrevocably submit to the jurisdiction of the United States District Courts for entry of any arbitration decision or to obtain any preliminary relief which may be necessary and consent to the enforcement of any award rendered in such arbitration.

13. Miscellaneous.

13.1. Notices. Notices, approvals, and consents required or permitted under this Sublicense Agreement shall be in writing and shall be sent by hand or by certified mail, postage prepaid, to the address given below or to such other addresses as the parties may hereafter specify.

13.1.1. LICENSEE:

[**]

13.1.2. MSI:

The Chrysler Building, 26th Floor

405 Lexington Avenue

New York, New York 10174

Attn: President

13.2. Waivers. No waiver of any right under this Sublicense Agreement shall be deemed effective unless contained in a writing signed by the party charged with such waiver, and no waiver of any rights arising from any breach or failure to perform shall be deemed to be a waiver of any future right or of any other right arising under this Sublicense Agreement.

13.3. Entire Agreement. This Sublicense Agreement, together with all schedules and exhibits, constitutes the sole and entire agreement of the parties with respect to the subject matter hereof and supersedes all prior agreements whether oral or written. This Sublicense Agreement may not be modified after its execution except by a writing signed by authorized representatives of the parties hereto.

13.4. Further Assurances. Each party shall, upon the reasonable request of the other party, execute such documents and perform such acts as may be necessary to give full effect to the terms of this Sublicense Agreement.

13.5. No Conflicts. Each of MSI and LICENSEE represent that they have executed no agreement which is in conflict with this Sublicense Agreement, and agree that no option or license shall be granted on any basis to any third party which is in conflict with this Sublicense Agreement unless and until this Sublicense Agreement is terminated.

13.6. Headings. The headings in this Sublicense Agreement are for reference only and shall not affect the interpretation of this Sublicense Agreement.

13.7. Severability. If any term or provision of this Sublicense Agreement is or becomes or is deemed invalid, illegal, or unenforceable in any jurisdiction, such provision shall be deemed amended to conform to applicable laws so as to be valid and enforceable, or, if it cannot be so amended without materially altering the intention of the parties, it shall be stricken and the remainder of this Sublicense Agreement shall remain in full force and effect.

13.8. Governing Law. This Sublicense Agreement will be interpreted and construed in accordance with the laws of the state of New Mexico, excluding any choice of law rules that would direct the application of the laws of another jurisdiction, but the scope and validity of any patent or patent application will be governed by the applicable laws of the country of such patent or patent application.

13.9. Counterparts. This Sublicense Agreement may be executed in counterparts, each of which shall be deemed an original, but all of which together shall be deemed to be one and the same agreement. A signed copy of this Sublicense Agreement delivered by facsimile, e-mail, or other means of electronic transmission (to which a signed PDF copy is attached) shall be deemed to have the same legal effect as delivery of an original signed copy of this Sublicense Agreement.

13.10. Assignment. Except for a sale or transfer of the business to which this Agreement relates, this Agreement may not be assigned or otherwise transferred, nor, except as expressly provided hereunder, may any right or obligations hereunder be assigned or transferred, by either Party without the written consent of the other Party; provided, however, that LICENSEE may, without such consent, assign this Agreement only in its entirety to LICENSEE or a wholly owned subsidiary, provided that LICENSEE is not in breach of this Agreement at such time and provided further than LICENSEE remains liable for all obligations that accrue prior to such assignment hereunder. Any purported assignment in violation of the preceding sentence shall be void. Any permitted assignee shall assume all obligations of its assignor under this Agreement.

13.11. Force Majeure. Neither party shall be held liable or responsible to the other party, nor be deemed to have defaulted under or breached this Sublicense Agreement, for failure or delay in fulfilling or performing any term of this Sublicense Agreement when such failure or delay is caused by or results from causes beyond the reasonable control of the affected party, including, but not limited to, fire or floods; embargoes, war, acts of war (whether war be declared or not), insurrections, riots, or civil commotions; strikes, lockouts, or other labor disturbances; acts of God; or acts, omissions, or delays in acting by any governmental authority or the other party; provided, however, it is understood that this Section is intended only to suspend and not discharge a party’s obligations under this Sublicense Agreement and that when the causes of the failure or delay are removed or alleviated, the affected party shall resume performance of its obligations hereunder.

13.12. Independent Contractors. The relationship between the parties is that of independent contractors. Nothing contained in this Sublicense Agreement shall be construed as creating any agency, partnership, joint venture, or other form of joint enterprise, employment, or fiduciary relationship between the parties, and neither party shall have authority to contract for or bind the other party in any manner whatsoever.

Signature page follows

IN WITNESS WHEREOF, the parties have executed this Exclusive Patent Sublicense Agreement to be effective as of the Effective Date.

MANHATTAN SCIENTIFICS, INC.

By:

Name:

Title:

[**]

By:

Name:

Title:

Exhibit A

EXCLUSIVE FIELD-OF-USE PATENT LICENSE AGREEMENT dated as of January 5, 2009 by and between Los Alamos National Security, LLC, a Delaware company (“Los Alamos”), and Manhattan Scientifics, Inc., a Delaware corporation.

(See Attached)

A-1

EX-10.4 5 mhtx_ex104.htm FORM OF AGREEMENT AND BILL OF SALE mhtx_ex104.htm

EXHIBIT 10.4

[**] Marked information has been omitted from the exhibit because it is both (i) not material and (ii) would likely cause competitive harm to the company if publicly disclosed.

AGREEMENT AND BILL OF SALE

AGREEMENT AND BILL OF SALE (the "Agreement"), dated as of May 1, 2019 (the "Effective Date"), is entered into by and between Manhattan Scientifics, Inc., a Delaware corporation, with a primary address of The Chrysler Building, 26^th Floor, 405 Lexington Avenue, New York, New York 10174 ("Seller"), and [**] with a primary address of [**] ("Buyer").

RECITALS

A. Seller desires to sell, assign, convey, transfer and deliver all of Seller's right, title and interest in and to the equipment, contracts, and associated component parts as listed on Exhibit A (the "Transferred Assets"), which is attached hereto and incorporated herein by reference.

B. Seller, Buyer and certain of their affiliates plan to enter into a certain Overarching Agreement in connection with this Agreement and other transactions (the “Overarching Agreement”).

C. The parties desire to enter into a written agreement to memorialize their intentions.

NOW, THEREFORE, in consideration of the mutual covenants and agreements hereinafter set forth and for other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the parties agree as follows:

AGREEMENT

1. Sale of Equipment and Parts. Seller does hereby grant, bargain, transfer, sell, assign, convey, and deliver to Buyer all of Seller's right, title, and interest in, to, and under the Transferred Assets, free and clear of all liens, to have and to hold the same unto Buyer, its successors and assigns, forever.

2. Payment. The consideration for the purchase of the Transferred Assets is included in Section 3 of the Overarching Agreement.

3. Delivery. The Transferred Assets shall remain at Seller’s facility located in Golden, Colorado (the "Delivery Point"). will be made available within a reasonable time after the date of this Agreement. Buyer shall automatically take delivery of the Transferred Assets at the Delivery Point on the Effective Date. Buyer will be responsible for reasonable costs and expenses associated with the breakdown, packaging and shipping of the Transferred Assets.

4. Title and Risk of Loss. Title and risk of loss passes to Buyer upon delivery of the Transferred Assets by Seller on the Effective Date. Seller hereby irrevocably authorizes the Buyer at any time and from time to time to file in any relevant jurisdiction any financing statements and amendments thereto that contain the information required by Article 9 of the UCC of each applicable jurisdiction for the filing of any financing statement or amendment relating to the Transferred Assets, including any financing or continuation statements or other documents for the purpose of perfecting, conforming, continuing, enforcing or protecting the Transferred Assets hereunder, without the signature of the Seller where permitted by law.

5. Warranties. Seller warrants to Buyer that the Transferred Assets are free and clear of all liens, security interests, or other encumbrances. Seller further warrants that except as set forth on Exhibit B attached hereto and incorporated herein the Transferred Assets are structurally sound, in good operating condition and repair, and are adequate for the uses to which they are being put, and none of the Transferred Assets is in need of maintenance or repairs except for ordinary, routine maintenance and repairs that are not material in nature or cost. Seller further warrants that no approval of any third party is required for Buyer to have, use and operate the Transferred Assets as intended. These warranties shall survive any delivery, inspection, acceptance or payment for the Transferred Assets by Buyer. These warranties are cumulative and in addition to any other warranty provided by law or equity. Any applicable statute of limitations runs from the date the Buyer discovers, or by exercise of reasonable diligence should have discovered, the noncompliance of the Transferred Assets with the foregoing warranties.

6. Indemnity. Each party (the "Indemnifying Party") shall indemnify, hold harmless, and defend the other party and its managers, officers, directors, employees, agents, affiliates, successors and permitted assigns (collectively, the "Indemnified Party") against all losses, damages, liabilities, deficiencies, claims, actions, judgments, settlements, interest, awards, penalties, fines, costs or expenses of whatever kind, including professional fees and reasonable attorneys' fees that are incurred by the Indemnified Party (collectively the "Damages"), arising out of any third-party claim alleging: (a) a material breach or non-fulfillment of any material representation, warranty, or covenant set forth in this Agreement by the Indemnifying Party; (b) any grossly negligent or more culpable action of Indemnifying Party (including any reckless or willful misconduct) in connection with the performance of its obligations under this Agreement; or (c) any bodily injury, death of any person, or damage to real or tangible personal property caused by the negligent or more culpable acts or omissions of Indemnifying Party. Notwithstanding anything to the contrary in this Agreement, Indemnifying Party is not obligated to indemnify, hold harmless, or defend Indemnified Party against any claim (whether direct or indirect) if such claim or corresponding Damages arise out of or result from, in whole or in part, Indemnified Party's (x) gross negligence or more culpable act or omission (including reckless or willful misconduct); or (y) bad faith failure to materially comply with any of its material obligations set forth in this Agreement.

7. Right of Set-off. Notwithstanding anything to the contrary in this Agreement, and without prejudice to any other right or remedy it has or may have, Buyer may, upon providing Seller with fourteen (14) days’ notice, set off or recoup any liability it owes to Seller against any liability for which Buyer or any of its affiliates determines in good faith the Seller is liable to Buyer or its affiliates, whether either liability is matured or unmatured, or arises under (a) this Agreement, (b) that certain Agreement and Bill of Sale as of the date even herewith, by and between the Buyer and Seller; (c) that certain Agreement and Bill of Sale dated as of May 31, 2018, by and between the Seller and the Buyer; (d) that certain Overarching Agreement dated as of the date even herewith, by and among [**] (“[**]”), Buyer, Metallicum, Inc. (“MSI”) and Seller; (e) that certain Non-Exclusive Intellectual Property License Agreement dated on or about December 17, 2018, by and between [**] and MSI; and (f) that certain Sublicense Agreement pursuant to which MSI will sublicense its rights under that certain Exclusive Field-of-Use Patent License Agreement dated as of January 5, 2009 to [**].

8. Entire Agreement. This Agreement, including and together with all related exhibits and schedules, constitutes the sole and entire agreement of the parties to this Agreement with respect to the subject matter contained herein and therein, and supersedes all prior and contemporaneous understandings, agreements, representations, and warranties, both written and oral, with respect to such subject matter.

9. Severability. If any term or provision of this Agreement is invalid, illegal, or unenforceable in any jurisdiction, such invalidity, illegality, or unenforceability does not affect any other term or provision of this Agreement or invalidate or render unenforceable such term or provision in any other jurisdiction.

10. Waivers. No waiver under this Agreement is effective unless it is in writing, identified as a waiver to this Agreement and signed by an authorized representative of the party waiving its right. Any waiver authorized on one occasion is effective only in that instance and only for the purpose stated and does not operate as a waiver on any future occasion. None of the following constitutes a waiver or estoppel of any right, remedy, power, privilege, or condition arising from this Agreement: (a) any failure or delay in exercising any right, remedy, power, or privilege or in enforcing any condition under this Agreement; or (b) any act, omission or course of dealing between the parties.

11. Governing Law; Venue. This Agreement, including any exhibits attached hereto, and all matters arising out of or relating to this Agreement, are governed by, and construed in accordance with, the laws of the State of Delaware, United States of America, without regard to the conflict of laws provisions thereof to the extent such principles or rules would require or permit the application of the laws of any jurisdiction other than those of the State of Delaware. Each of the parties hereto agrees that any dispute or controversy arising out of, relating to, or in connection with this Agreement shall be venued in, and the parties hereby consent to the exclusive jurisdiction of, the courts (whether federal or state) in ****.

12. Waiver of Jury Trial. Each party acknowledges and agrees that any controversy that may arise under this AGREEMENT, including any exhibits attached to this AGREEMENT, is likely to involve complicated and difficult issues and, therefore, each such party irrevocably and unconditionally waives any right it may have to a trial by jury in respect of any legal action arising out of or relating to this AGREEMENT, including any exhibits attached to this AGREEMENT, or the transactions contemplated hereby.

13. Counterparts. This Agreement may be executed in counterparts, each of which is deemed an original, but all of which together is deemed to be one and the same agreement. A signed copy of this Agreement delivered by facsimile, email, or other means of electronic transmission is deemed to have the same legal effect as delivery of an original signed copy of this Agreement.

14. Relationship of Parties. Nothing herein creates a joint venture or partnership between the parties to this Agreement or an employee/employer relationship. Neither party to this Agreement has any express or implied right or authority to assume or create any obligations on behalf of or in the name of the other party or to bind the other party to any contract, agreement, or undertaking with any third party.

(Signature page follows)

IN WITNESS WHEREOF, the parties to this Agreement have caused this Agreement to be executed as of the date first written above by their duly authorized respective officers.

SELLER:

Manhattan Scientifics, Inc.,

a Delaware corporation

By:

Name:

Title:

BUYER:

[**]

By:

Name:

Title:

(Signature page to Agreement and Bill of Sale)

EXHIBIT A

TRANSFERRED ASSETS

[**]

A-1

EXHIBIT B

None.

B-1

o	Written communications pursuant to Rule 425 under the Securities Act (17 CFR 230.425)

o	Soliciting material pursuant to Rule 14a-12 under the Exchange Act (17 CFR 240.14a-12)

o	Pre-commencement communications pursuant to Rule 14d-2(b) under the Exchange Act (17 CFR 240.14d-2(b))

o	Pre-commencement communications pursuant to Rule 13e-4(c) under the Exchange Act (17 CFR 240.13e-4(c))