Exhibit 10.79
ASSIGNMENT AGREEMENT
This Assignment Agreement (the "Agreement") is made this 16th day of October,
2001 (the Effective Date"), by and between Thomas Najarian, M.D., an individual
with a principal place of business at 2280 Sunset Drive, Suite D, Osos, CA 93402
("Assignor"), and VIVUS, Inc., a company incorporated under the laws of
Delaware, having its principal place of business at 1172 Castro Street, Mountain
View, California 94040 ("Assignee"), collectively, the "Parties."
Whereas, Assignor is the owner of that certain Invention as defined below; and
Whereas, Assignee is desirous of acquiring all title, right, interest, benefits
and privileges to the Invention, all inventive subject matter, and all materials
embodying the certain invention;
Now, therefore, for valuable consideration, the receipt and sufficiency of which
is hereby acknowledged, the parties hereby agree and act as follows:
1.
FOR PURPOSES OF THIS AGREEMENT,
"INVENTION" MEANS A NOVEL THERAPY FOR TREATING OBESITY AND OTHER DISORDERS,
COMPRISING TREATING A SUBJECT WITH A THERAPEUTICALLY EFFECTIVE AMOUNT OF A
COMBINATION OF A SYMPATHOMIMETIC AGENT AND AN ANTICONVULSANT AGENT, INCLUDING,
WITHOUT LIMITATION, THOSE INVENTIONS DESCRIBED AND/OR EMBODIED IN THE FOLLOWING:
ALL NOTES, RECORDS, DATA, REPORTS, AND THE "PATENT APPLICATIONS", ATTACHED
HERETO AS EXHIBIT 1, RELATED TO THE COMBINED USE OF A SYMPATHOMIMETIC AGENT AND
AN ANTICONVULSANT AGENT FOR THE TREATMENT OF OBESITY AND OTHER DISORDERS.
2.
ASSIGNOR HEREBY, IRREVOCABLY AND
WITHOUT RESERVATION:
2.1
ASSIGNS, SELLS, TRANSFERS AND CONVEYS TO
ASSIGNEE ALL RIGHT, TITLE AND INTEREST IN AND TO:
(I)
THE INVENTION;
(II)
ANY U.S. PATENT APPLICATIONS FILED THAT
DISCLOSE OR CLAIM THE INVENTION, INCLUDING THE U.S. PATENT APPLICATIONS, ANY
DIVISIONAL, CONTINUATION AND CONTINUATION-IN-PART APPLICATIONS THEREOF, ANY NEW
U.S PATENT APPLICATIONS RELATED THERETO, AND ANY U.S. PATENTS ISSUING ON THE
FOREGOING APPLICATIONS, INCLUDING REISSUED AND RE-EXAMINED VERSIONS THEREOF;
(III)
ANY NON-U.S. PATENT APPLICATIONS FILED THAT
DISCLOSE OR CLAIM THE INVENTION, INCLUDING THE NON-U.S. PATENT APPLICATIONS,
DIVISIONAL AND OTHER LATER-FILED NON-U.S. APPLICATIONS, WHETHER OR NOT CLAIMING
PRIORITY OR OTHERWISE RELATED TO THE U.S. PATENT APPLICATIONS REFERENCED IN
(II) ABOVE; AND ANY NON-U.S. PATENTS ISSUING ON THE FOREGOING NON-U.S. PATENT
APPLICATIONS.
2.2
ASSIGNEE SHALL HAVE THE RIGHT, BUT NOT THE
OBLIGATION, EITHER ON ITS OWN OR THROUGH A THIRD PARTY (A "LICENSEE") TO
COMMERCIALLY EXPLOIT THE INVENTION EMBODIED WITHIN THE PATENT RIGHTS, INCLUDING
WITHOUT LIMITATION THE DEVELOPMENT AND COMMERICIALIZATION OF PRODUCTS WITHIN THE
PATENT RIGHTS.
"PATENT RIGHTS" SHALL MEAN ANY U.S. OR FOREIGN PATENTS ISSUED OR
PENDING PURSUANT TO SECTIONS 2.1 (II) AND (III) ABOVE.
IN THE EVENT THAT
ASSIGNEE DECIDES IN ITS SOLE DISCRETION NOT TO COMMERCIALLY EXPLOIT THE
INVENTION EMBODIED WITHIN THE PATENT RIGHTS, ASSIGNEE AGREES TO
TAKE ALL REASONABLE STEPS NECESSARY TO ASSIGN ITS RIGHTS TO THE INVENTION BACK
TO ASSIGNOR, INCLUDING ALL PATENTS AND PATENT APPLICATIONS WITHIN THE PATENT
RIGHTS.
IN SUCH EVENT, THIS AGREEMENT SHALL TERMINATE AS OF THE DATE OF SUCH
DECISION, AND ASSIGNEE SHALL HAVE NO FURTHER OBLIGATIONS TO ASSIGNOR EXCEPT AS
SET FORTH IN THIS SECTION 2.2.
2.3
ASSIGNOR HEREBY WARRANTS AND REPRESENTS THAT
(I) IT HAS NOT ENTERED INTO AND