Lexaria Bioscience Corp. - Exhibit 10.1 - Filed by newsfilecorp.com






Exhibit 10.1 

INTELLECTUAL PROPERTY
LICENSE
#2018CD06 


            This
document certifies that an Intellectual Property License dated as of July 30,
2018 has been granted by:

Lexaria CanPharm Corp., a Canadian corporation with
offices at 156 Valleyview Rd, Kelowna, British Columbia, V1X 3M4, Canada
(“Licensor”, “Lexaria”, “us”, “our”,
“we”),

To: 

Hill Street Beverage Co., a Canadian corporation with
offices at 44 Gwendolen Crescent, Toronto ON, M2N 2L7 (together with its
successors and assigns “Hill Street”, “Licensee”, “you”,
“your”).

RECITALS 

            WHEREAS
certain capitalized terms not otherwise defined below are defined in Exhibit
“D” herein; 

            WHEREAS,
LICENSEE is directly (or indirectly through a partner, as further contemplated
in Section 1(a) below) engaged in the business of developing, manufacturing, and
selling cannabis-infused products pursuant to licenses issued by the authorities
relevant in each and every geographic location referenced within this Agreement,
pursuant to regulations promulgated thereby; 

            WHEREAS,
LICENSOR owns and holds, and will make improvements from time to time, on
certain intellectual property and technology (“Technology”) related to,
including but not limited to, the development, testing, and manufacturing
process for cannabis-infused products, which Technology is more specifically
described in Exhibit “A”; 

            WHEREAS,
LICENSEE wishes to utilize the Technology (which shall include any Licensor’s
Improvements) of LICENSOR, and LICENSOR desires for LICENSEE to utilize the
Technology, to create, test, manufacture and sell, either on its own account or
as a contract manufacturer, Consumable Liquids Products (“End Products,”
as further described in Exhibit B), subject to the terms and conditions set
forth herein; 

            WHEREAS,
such End Products shall only be distributed and/or sold by LICENSEE or its
Partner as defined in Section 1.a below in compliance with all local and state,
licensing requirements applicable to the cannabis industry within Canada or in
any other location in which LICENSEE is permitted by this Agreement or an
addendum to this Agreement to sell or distribute the End Products (such
locations collectively referred to as “Territory”);

            WHEREAS,
the End Products may not be exported from the Territory to any other global
location without express written permission granted in advance from the LICENSOR
and is subject to entering a separate licensing agreement or by addendum to this
Agreement, and always subject to availability among other LICENSOR
considerations; and 

            WHEREAS,
the Parties intend and desire for these recitals to be incorporated into the
Agreement, and to be bound by any representations or obligations contained
therein. 

            NOW,
THEREFORE, in consideration of the promises and the respective covenants and
agreements of the parties contained in this Agreement, the Parties hereto agree
as follows: 




- 2 - 

LICENSE 

	1. 	
      License of Technology: Subject to certain terms
      and conditions, LICENSOR hereby grants to LICENSEE each of the licenses
      more fully defined in Section 2 below.




	 	a) 	
      Non-transferable: The license granted by this
      Section 1 may not be transferred or sublicensed by LICENSEE without
      LICENSOR’s written consent. However, LICENSEE has the right to sublicense
      its license to any entity within the Hill Street Group.

	 	 	 
	 	b) 	
      Other Products: The Parties agree that LICENSEE is
      not limited to production of the End Products defined herein, but that
      LICENSEE may develop, create and test new products that are derived from
      or otherwise incorporate the Technology and such new products are only to
      be distributed and/or sold to Permitted Locations (the “New Products”),
      subject to availability of licenses in the future from Lexaria
      CanPharm.




	2) 	
      Semi-exclusivity and Non-exclusive Licenses.
      LICENSEE will have the following rights to produce and sell the End
      Products during the Term (as defined in Section 4, below) in the Territory
      using the Technology licensed pursuant to this
Agreement.




	 	a) 	
      In the Territory:

	 	 	 	 
	 		i) 	
      Semi-Exclusive rights for Product A from the Effective
      Date until five (5) years after the Effective Date, allowing LICENSEE the
      semi-exclusive ability to continue to manufacture the Product A End
      Products directly or through its Partner in the Permitted Location within
      a single Territory for the balance of the term of this Agreement as per
      Section 4. Semi-Exclusive under this Agreement means that LICENSOR will
      not permit more than five (5) additional entities to license the
      Technology for any Hill Street product as defined within this Agreement
      (see “Definitions”).




	 	b) 	
      In the Territory:

	 	 	 	 
	 		i) 	
      Non-Exclusive right for Product B from the Effective Date
      until five (5) years after the Effective Date, allowing LICENSEE the
      non-exclusive ability to continue to manufacture the Product B End
      Products directly or through its Partner in the Permitted Location within
      a single Territory for the balance of the term of this Agreement as per
      Section 4




	 	c) 	
      LICENSOR’s Products: LICENSOR shall not be
      prohibited from licensing or similar arrangements with respect to the
      Technology outside of the Territory. LICENSOR is expressly permitted to
      utilize its Technology on any basis it chooses, at any time, for producing
      and commercializing its own products.




	3) 	
      Rights and Obligations Related to the Technology.
      Except as expressly provided in this section or elsewhere in this
      Agreement, neither Party will be deemed by this Agreement to have been
      granted any license or other rights to the other Party’s products,
      information or other intellectual property rights, either expressly or by
      implication, estoppel or otherwise.

	 	 	 
		a) 	
      LICENSOR Intellectual Property: LICENSOR
      retains full, absolute, and complete rights to all processes covered or
      described in all of its issued patents and its patent applications filed
      prior to the date of this Agreement, and any future continuations,
      continuations in part or divisional applications filed thereto, including
      but not limited to the US Provisional patent applications, US Utility
      patent application, and the International patent application, that
      comprise the Technology (“Licensor IP”), unless LICENSOR allows
      these applications to abandon or lapse, or otherwise fails to protect the
      Technology. Except as expressly provided for in Section 2, nothing in this
      Agreement or in the conduct of the Parties shall be interpreted as
      preventing LICENSOR from granting to any other person a license for use of
      the Technology or from using the Technology in any manner
  whatsoever.








- 3 - 

	 	b) 	
      LICENSEE Intellectual Property: Any
      intellectual property resulting solely from LICENSEE’s work, know-how, or
      development that does not include nor rely upon the Technology,
      Licensor IP or jointly owned intellectual property, as described in this
      Agreement, shall be owned by LICENSEE (“Licensee IP”).

	 	 	 
	 	c) 	
      Improvements:





	 	i) 	
      LICENSOR Improvements: The entire right and title to the
      Technology, whether or not patentable, and any patent applications or
      patents based thereon, which directly relate to and are not severable from
      LICENSOR IP and which are improvements thereto by LICENSOR, its employees
      or others acting solely on LICENSOR’s behalf shall be owned solely by
      LICENSOR (“Licensor Improvements”).

	 	 	 
	 	ii) 	
      LICENSEE Improvements: Rights and title to improvements
      whether or not patentable, and any patent applications or patents based
      thereon, which directly relate to and are not severable from LICENSOR IP
      and which are improvements thereto by LICENSEE, its employees or its
      Partner, as defined by this Agreement, shall be owned by the LICENSEE
      (“Licensee Improvements”). In respect to such Licensee Improvements,
      LICENSOR grants LICENSEE a license to use the underlying intellectual
      property supporting any such improvement for so long as this Agreement
      remains in effect (including any renewal terms) and LICENSOR agrees to
      negotiate in good faith terms of license renewal after the end of the Term
      of this Agreement and any renewal terms per Section 4a. If LICENSEE
      develops any Licensee Improvements, LICENSEE will promptly provide
      LICENSOR with written notice of such Licensee Improvements to validate
      LICENSEE’S claim to Licensee Improvements. Following receipt of notice of
      such Licensee Improvements, LICENSOR shall have the exclusive option
      during the Term of this Agreement (and any renewal terms) to purchase or
      license from LICENSEE the Licensee Improvements for LICENSOR’s use upon
      mutually agreeable terms and conditions that the parties shall negotiate
      in good faith.

	 	 	 
	 	iii) 	
      Joint Improvements: Rights and title to the Technology,
      whether or not patentable, and any patent applications or patents based
      thereon, which directly relate to and are not severable from LICENSOR IP
      and which are improvements thereto by both LICENSOR AND LICENSEE shall be
      jointly owned intellectual property by LICENSOR AND LICENSEE.

	 	 	 
	 	iv) 	
      Improvements; Assignment. LICENSEE and LICENSOR
      hereby represent that all Partners, employees and other persons acting on
      its behalf in performing its obligations under this Agreement shall be
      obligated under a binding written agreement to assign, or as it shall
      direct, all Joint Improvements that include or rely on the Technology
      conceived or reduced to practice by such Partners, employees or other
      persons acting on its behalf in accordance with this Agreement to the
      benefit of LICENSOR and LICENSEE.

	 	 	 
	 	v) 	
      Improvements; Confidential Information. All
      Improvements shall constitute Confidential Information and shall be
      subject to the confidentiality provisions set forth in this
    Agreement.




	 	d) 	
      Inventions; Reporting:

	 	 	 	 
	 		i) 	
      Upon making any invention that does not include or
      rely upon the Technology LICENSEE has no obligation to share such
      information of invention with LICENSOR nor inform LICENSOR of said
      invention, and LICENSEE retains unrestricted rights and ability to use,
      assign, license, seek patent and other forms of intellectual property
      protection related to said invention. For the avoidance of doubt, any such new
invention, development, technology, and/or intellectual property belongs solely
to LICENSEE. Upon making any invention that does or does NOT include or rely
upon the Technology, LICENSOR has no obligation to share such information of
invention with LICENSEE nor inform LICENSEE of said invention, and LICENSOR
retains unrestricted rights and ability to use, assign, license, seek patent and
other forms of intellectual property protection related to said invention.








- 4 - 

	 	e) 	
      Jointly Owned Intellectual Property: If any
      patent applications are filed seeking to protect any Joint Improvements
      (“Jointly Owned IP”), each Party shall be named as joint
      inventors.

	 	 	 	 
	 		i) 	
      Prosecution and Maintenance of Jointly Owned
      Patents. The Parties shall cooperate to cause the filing of one or
      more patent applications covering any such Jointly Owned IP. The Parties
      will mutually agree upon which of them shall be responsible for filing,
      prosecution and maintenance of Jointly Owned IP. The expenses of such
      filing, prosecution and maintenance shall be equally shared by the Parties
      unless one of the Parties assigns all of its rights to the other Party.
      Both Parties agree to assist the other Party in enforcing its rights in
      the Jointly Owned IP. The costs of any such assistance or cooperation will
      be borne by the requesting party.

	 	 	 	 
	 		ii) 	
      Jointly Owned IP Rights. LICENSOR grants to
      LICENSEE an exclusive, non-sub-licensable, fully-paid, royalty-free,
      perpetual license to any Jointly Owned IP. Further, LICENSEE grants to
      LICENSOR an exclusive, non-sub-licensable, fully-paid, royalty-free,
      perpetual license to any Jointly Owned IP.




	 	f) 	
      No Challenge. LICENSEE expressly
      acknowledges and agrees that all rights in and to the Technology shall
      remain vested in LICENSOR, and LICENSEE shall not assert any rights to the
      Technology except as otherwise provided in this Section 3.

	 	 	 
	 	g) 	
      Notice Requirements. To the extent
      required by applicable rules and regulations LICENSEE agrees that it will
      include such patent notices and other proprietary notices on all End
      Products or related materials that contain any Technology as may be
      reasonably required by regulators in order to give appropriate notice of
      all intellectual property rights therein or pertaining
  thereto.




	 	h) 	
      Quality Control.

	 		 	 
	 		i) 	
      LICENSEE agrees to maintain and preserve the quality of
      the Technology, and to use the Technology in good faith and in a manner
      consistent with the uses approved herein.

	 		 	 
	 		ii) 	
      LICENSEE shall (a) ensure that all End Products and
      related materials under the Technology are developed, tested, promoted,
      manufactured and distributed in a professional manner in compliance with
      all generally accepted industry standards, and (b) comply in all material
      respects with any and all laws, rules and regulations that are applicable
      to the development, testing, promotion, manufacture and distribution of
      the End Products and such related materials.





	4) 	
      Term and Termination.

	 	 	 
		a) 	
      Term and Renewal. This Agreement shall take effect
      upon signing by both Parties, and shall remain in effect for the shorter
      of either five (5) years; or, such circumstances as described in Section
      4.c. At any time after the fourth anniversary, this Agreement may be
      renewed by LICENSEE for an additional five (5) years on terms to be
      negotiated in good faith based on market conditions at the time of renewal
      by the Parties.

	 	 	 
		b) 	
      Termination. This Agreement and the licenses
      granted hereunder may be terminated prior to the expiration of the initial
      term or any renewal term of this Agreement as
follows:




	 	i) 	
      This Agreement may be terminated by LICENSOR by written
      notice to LICENSEE upon the occurrence of any of the following: (i)
      failure of LICENSEE to pay any license fees for more than sixty (60) days
      after they become due; (ii) LICENSEE’s violation of the provisions
    of Sections 7 and 8 or LICENSEE’s material breach of any
      other term of this Agreement, which breach is not cured within sixty (60)
      days after written notice of such breach from LICENSOR; (iii) failure of
      LICENSEE to maintain all required licenses and governmental authorizations
      required for the conduct of its business or to comply in all material
      respects with applicable laws; or (iv)LICENSEE ceases operations, makes a
      general assignment for the benefit of creditors, or is the subject of a
      voluntary or involuntary bankruptcy, insolvency or similar
  proceeding.








- 5 - 

	 	ii) 	
      This Agreement may be terminated by LICENSEE by (i)
      written notice to LICENSOR in the event of material breach by LICENSOR of
      its obligations or representations and warranties under this Agreement,
      which breach is not cured within sixty (60) days after written notice of
      such breach from LICENSEE; and (ii) at any time on six (6) months prior
      written notice by the LICENSEE to the
LICENSOR.





	 	c) 	
      Effect of Termination. Except as provided for in
      Section 5, LICENSEE’s payment obligations shall extinguish if this
      Agreement is terminated. If the Agreement expires without any renewal
      thereof, then LICENSEE must immediately cease and desist all utilization
      of the Technology for any purpose whatsoever including to manufacture,
      distribute or sell End Products, except that it may distribute and sell
      End Products until all finished goods and raw materials inventory that
      pertains to the Technology has been sold. In any event, upon the natural
      future expiration of all pending and issued patents as applicable related
      to the Technology described herein the License Agreement shall expire and
      LICENSEE shall have no further payment obligations to
  LICENSOR.




	5) 	
      Indemnification.

	 	 	 
		a) 	
      LICENSEE agrees to indemnify LICENSOR and hold LICENSOR
      harmless from and against any and all liabilities, losses and expenses
      arising from (i) LICENSEE’s unauthorized use of the Technology; (ii)
      LICENSEE’s failure to comply with applicable laws or to maintain all
      required licenses and governmental authorizations; (iii) any breach of
      LICENSEE’s representations and warranties set forth herein; and (iv) any
      liability to third parties as a result of LICENSEE’s production,
      distribution and/or sale of End Products, except as to any liability
      arising out of the proper use of the Technology.

	 	 	 
		b) 	
      LICENSOR agrees to indemnify LICENSEE and hold LICENSEE
      harmless from and against any and all liabilities, losses and expenses
      arising from (i) any breach of LICENSOR’s representations and warranties
      set forth herein; and (ii) any claims of infringement raised by third
      parties as to the Technology or Licensed
Patents.




	6) 	
      Confidentiality. In addition to the
      Confidentiality Agreement previously entered into by the Parties, at all
      times during the term of this Agreement (including any renewal term) and
      thereafter, LICENSEE will not use or disclose and will otherwise keep
      confidential any trade secrets or proprietary information, including, but
      not limited to the Technology and other intellectual property of LICENSOR
      (collectively, the “Confidential Information”) except to the extent
      required to perform its obligations under this Agreement. Without
      limitation of the foregoing, LICENSEE will hold the Confidential
      Information in confidence and will (a) exercise the same degree of care,
      but no less than a reasonable degree of care, to prevent its disclosure as
      LICENSEE would take to safeguard its own confidential or proprietary
      information, and (b) limit disclosure of Confidential Information,
      including any notes, extracts, analyses or materials that would disclose
      Confidential Information, solely to those of its employees who need to
      know the information for purposes of performing its obligations under this
      Agreement and who agree to keep such information confidential. Upon
      termination of this Agreement, LICENSEE shall immediately return all
      Confidential Information to LICENSOR and LICENSOR shall have the right to
      conduct an on- site audit of the LICENSEE within three (3) business days
      of termination to ensure compliance with the terms of this Agreement, at
      LICENSOR’S expense.







- 6 - 

In addition to the Confidentiality
Agreement previously entered into by the Parties, at all times during the term
of this Agreement (including any renewal term) and thereafter, LICENOR will not
use or disclose and will otherwise keep confidential any trade secrets or
proprietary information and other intellectual property of LICENSEE
(collectively, the “Confidential Information”) except to the extent
required to perform its obligations under this Agreement. Without limitation of
the foregoing, LICENSOR will hold the Confidential Information in confidence and
will (a) exercise the same degree of care, but no less than a reasonable degree
of care, to prevent its disclosure as LICENSOR would take to safeguard its own
confidential or proprietary information, and (b) limit disclosure of
Confidential Information, including any notes, extracts, analyses or materials
that would disclose Confidential Information, solely to those of its employees
who need to know the information for purposes of performing its obligations
under this Agreement and who agree to keep such information confidential. Upon
termination of this Agreement, LICENSEE shall immediately return all
Confidential Information to LICENSEE within three (3) business days of
termination to ensure compliance with the terms of this Agreement, at LICENSEE’S
expense.

	 	a) 	
      Limitations. This section does not apply to any
      information that: (a) is already lawfully in the receiving Party's
      possession (unless received pursuant to a nondisclosure agreement); (b) is
      or becomes generally available to the public through no fault of the
      receiving Party; (c) is disclosed to the receiving Party by a third party
      who may transfer or disclose such information without restriction; (d) is
      required to be disclosed by the receiving Party as a matter of law
      (provided that the receiving Party will use all reasonable efforts to
      provide the disclosing Party with prior notice of such disclosure and to
      obtain a protective order therefor, with all costs to be borne by the
      disclosing Party); (e) is disclosed by the receiving Party with the
      disclosing Party's approval; or (f) is independently developed by the
      receiving Party without any use of confidential information. In all cases,
      the receiving Party will use all reasonable efforts to give the disclosing
      Party ten (10) days' prior written notice of any disclosure of information
      under this Agreement. The Parties will maintain the confidentiality of all
      confidential and proprietary information learned pursuant to this
      Agreement for a period of ten (10) years from the date of termination of
      this Agreement.

	 	 	 
	 	b) 	
      Saving Provision. The Parties agree and stipulate
      that the agreements contained in this Section are fair and reasonable in
      light of all of the facts and circumstances of their relationship;
      however, the Parties are aware that in certain circumstances courts have
      refused to enforce certain agreements. Therefore, in furtherance of and
      not in derogation of the provisions of the preceding paragraph the parties
      agree that in the event a court should decline to enforce the provisions
      of the preceding paragraph, that paragraph shall be deemed to be modified
      to restrict non-enforcing Party’s rights under this Agreement to the
      maximum extent, in both time and geography, which the court shall find
      enforceable.




	7) 	
      Limitation of Liability. EXCEPT TO THE EXTENT
      OTHERWISE EXPRESSLY AGREED TO IN THIS AGREEMENT, NEITHER PARTY SHALL BE
      LIABLE TO THE OTHER PARTY FOR LOST PROFITS OR FOR ANY DIRECT, INDIRECT,
      INCIDENTAL, CONSEQUENTIAL, SPECIAL, PUNITIVE OR EXEMPLARY DAMAGES IN
      CONNECTION WITH THIS AGREEMENT OR THE TRANSACTIONS CONTEMPLATED BY THIS
      AGREEMENT, HOWEVER CAUSED, UNDER ANY THEORY OF LIABILITY. THE FOREGOING
      SHALL NOT LIMIT LICENSEE’S LIABILITY FOR UNAUTHORIZED USE BY LICENSEE OF
      LICENSOR’S TECHNOLOGY.

	 	 
	
      8) 
	
      No Warranties. OTHER THAN THE EXPRESS WARRANTIES
      PROVIDED HEREIN, LICENSOR MAKES NO EXPRESS WARRANTIES OF
      MERCHANTABILITY OR FITNESS OR EFFICACY FOR A PARTICULAR PURPOSE OF THE
      TECHNOLOGY AND/OR ANY END PRODUCTS PRODUCED FROM SAID TECHNOLOGY AND SHALL
      NOT BE HELD LIABLE FOR PROFITABILITY OF TECHNOLOGY AND/OR
END PRODUCTS OR HELD LIABLE UNDER ANY OTHER THEORY OF LIABILITY.








- 7 - 

            NOW,
THEREFORE, in consideration of the premises and the mutual promises and
conditions hereinafter set forth, and other good and valuable consideration, the
receipt and sufficiency of which are hereby acknowledged, the Parties, do hereby
agree. 

       IN WITNESS
WHEREOF, Lexaria CanPharm Corp has granted this license. 

“LICENSOR” 
LEXARIA BIOSCIENCE CORP. 


 

       /s/ Chris Bunka, CEO




EXHIBIT A 

TECHNOLOGY 

	The Technology consists of: 


	 	
      (1) the following patent applications, patents granted,
      and PCT International Patent Applications; (2) all technical know-how and
      trade secrets in regard to such named patents, including the use,
      manufacture or formulation thereof, that is owned or controlled by
      LICENSOR as of the Effective Date of this Agreement, as well as any future
      continuations, continuations in part or divisional applications filed
      pursuant to the patent applications. (the “Licensed Patents”):
    



In the USA: 
U.S. Patent Granted No. 9,474,725
awarded October 25, 2016. 
U.S. Patent Granted No. 9,839,612 B2 awarded
November 21, 2017 
U.S. Patent Granted No. 9,972,680 B2 awarded May 15, 2018.

U.S. Patent Granted No. 9,974,739 B2 awarded May 22, 2018 
U.S.
Non-Provisional Patent Application No. 62/010,601. 
U.S. Non-Provisional
Patent Application No. 62/037,706. 
U.S. Non-Provisional Patent Application
No. 62/153,835. 
U.S. Non-Provisional Patent Application No. 62/161,324.

U.S. Non-Provisional Patent Application No. 62/264,959. 
U.S.
Non-Provisional Patent Application No. 62/264,967. 
U.S. Utility Patent
Application No. 14/735,844. 
U.S. Patent Pending Application No. 15/565,680

U.S. Patent Pending Application No. 62/519,511 
U.S. Patent Pending
Application No. 62/582,700 
U.S. Patent Pending Application No. 62/642,737



International Patent Cooperation Treaty Filings: 
PCT
International Patent Application No. PCT/US15/35128. 

PCT International Patent Application No. PCT/US16/64295. 

PCT International Patent Application No. PCT/US16/64296.



Multiple National Filings: 
Canada, The European
Union, China, Japan, Australia, Mexico, and India 
Australian Patent Granted
No. 2015274698 awarded June 15, 2017 
Australian Notices of Acceptance
2017203054, 20182562, 2018202584 published May 17, 2018 





EXHIBIT B 

END PRODUCT CATEGORIES 


	Product Line 
Name 	Product Line Description
      

	Consumable Liquids Products INCLUDING CBD and / or THC
      products 	Any consumable liquid product for
      consumption by way of ingestion that are infused with marijuana oil or
      equivalent containing more than 0.3% THC or with hemp oil containing less
      than 0.29% THC.