SCHEDULE A
PRIOR INVENTIONS, PATENTS, AND INTELLECTUAL PROPERTY DISCLOSURE
This Schedule A is attached to and forms a part of that certain Executive Employment Agreement (the "Agreement"), dated as of August 5, 2022, by and between Arbor Health Technologies Inc., a Delaware corporation (the "Company"), and Dr. Marcus J. Elliston ("Executive"). This Schedule A is attached to and incorporated by reference into the Agreement pursuant to Section 8 (Invention Assignment) thereof. All terms and conditions of this Schedule A are subject to the terms and conditions of the Agreement.
1. Purpose and Instructions
Pursuant to the invention assignment provisions set forth in Section 8 of the Agreement, Executive is required to disclose all inventions, original works of authorship, developments, improvements, trade secrets, patents, patent applications, and other intellectual property, whether or not patentable or registrable under copyright or similar laws, that Executive conceived, created, developed, or reduced to practice, either alone or jointly with others, prior to Executive's commencement of employment with the Company (collectively, "Prior Inventions"). The purpose of this Schedule A is to provide a complete and accurate accounting of all such Prior Inventions so that the Company and Executive may clearly delineate the scope of the invention assignment obligations contained in the Agreement.
Executive must list below all Prior Inventions that Executive wishes to have excluded from the scope of the invention assignment provisions of the Agreement. Only those Prior Inventions that are specifically identified and described on this Schedule A (including any duly executed continuation pages attached hereto) will be considered excluded from the assignment obligations set forth in the Agreement. Executive understands and acknowledges that the failure to disclose a Prior Invention on this Schedule A may result in such Prior Invention being treated as falling within the scope of the Company's invention assignment rights under the Agreement.
If no Prior Inventions are disclosed on this Schedule A, Executive represents and warrants that there are no Prior Inventions as of the date hereof, and that Executive has no inventions, original works of authorship, developments, improvements, trade secrets, patents, patent applications, or other intellectual property that Executive wishes to exclude from the invention assignment provisions of the Agreement.
In completing this Schedule A, Executive should provide sufficient detail for the Company to identify and distinguish each Prior Invention. For each Prior Invention disclosed, Executive should include, at a minimum, the following information:
(i) the title or a brief description of the Prior Invention sufficient to identify its subject matter and scope;
(ii) the date of conception or creation (or the approximate date, if the exact date is not known);
(iii) any identifying number associated with the Prior Invention, including any patent number, patent application number, copyright registration number, or other registration or application number, as applicable (or "N/A" if no such number exists);
(iv) the current ownership and rights status of the Prior Invention, including whether the Prior Invention is solely owned by Executive, jointly owned with one or more third parties, assigned to a prior employer or other entity, or subject to any license, encumbrance, or other restriction; and
(v) a brief description of any potential relevance of the Prior Invention to the current or anticipated business, products, services, research, or technology of the Company, or a statement that the Prior Invention has no such relevance.
If additional space is required beyond that provided in the table set forth in Section 3 below, Executive may attach additional pages to this Schedule A. Each additional page must be clearly labeled as a continuation of Schedule A, must reference the Agreement by date and parties, and must be signed or initialed and dated by Executive. All such continuation pages shall be deemed to be part of this Schedule A for all purposes under the Agreement.
2. Representations
Executive is required to select one of the following two options by checking the applicable box or marking the applicable election. Executive must select Option A or Option B below. If Executive selects Option B, Executive must complete the Prior Inventions Disclosure Table in Section 3 below.
Option A — No Prior Inventions to Disclose
Executive has no Prior Inventions to disclose. Executive represents and warrants that, as of the date hereof, there are no inventions, original works of authorship, developments, improvements, trade secrets, patents, patent applications, or other intellectual property that Executive conceived, created, developed, or reduced to practice, either alone or jointly with others, prior to Executive's employment with the Company, that Executive wishes to exclude from the invention assignment provisions of the Agreement. Executive further represents and warrants that Executive is not aware of any Prior Inventions that could reasonably be expected to be relevant to the business, products, services, research, or technology of the Company.
Option B — Prior Inventions to Disclose
Executive has Prior Inventions to disclose as set forth in the table in Section 3 below (and any continuation pages attached hereto). Executive represents and warrants that the table in Section 3 below, together with any duly executed continuation pages, constitutes a complete and accurate list of all Prior Inventions that Executive wishes to exclude from the scope of the invention assignment provisions of the Agreement. Executive further represents and warrants that no Prior Inventions exist other than those specifically identified in the table in Section 3 and any such continuation pages, and that Executive has not intentionally omitted any Prior Inventions from such disclosure.
3. Prior Inventions Disclosure Table
If Executive selected Option B in Section 2 above, Executive must complete the following table. Executive should provide all information requested for each Prior Invention. If any field is not applicable, Executive should enter "N/A" in the corresponding cell. Executive should use additional continuation pages if the space provided below is insufficient.
Attach additional pages as needed. Each additional page must be clearly labeled as a continuation of this Schedule A, must reference the Executive Employment Agreement dated August 5, 2022, by and between Arbor Health Technologies Inc. and Dr. Marcus J. Elliston, and must be initialed and dated by Executive. All continuation pages, once initialed and dated, shall be deemed incorporated into and made a part of this Schedule A.
4. Disclosure of Prior Obligations
In addition to the disclosure of Prior Inventions set forth above, Executive is requested to identify below any and all existing contracts, agreements, assignments, obligations, or commitments — including, without limitation, agreements with prior employers, former business partners, academic institutions, research organizations, government agencies, or any other third parties — that may in any way restrict, limit, or otherwise affect Executive's ability to (a) perform Executive's duties and responsibilities under the Agreement, (b) assign inventions, works of authorship, or other intellectual property to the Company as contemplated by the Agreement, or (c) comply with any other obligation set forth in the Agreement, including obligations relating to confidentiality, non-competition, non-solicitation, or intellectual property assignment.
Executive should complete the following table with respect to each such contract, agreement, assignment, or obligation. If Executive has no such contracts, agreements, assignments, or obligations to disclose, Executive should write "None" across the table below.
Executive is further requested to attach copies of any and all such agreements, or the relevant excerpts thereof, to this Schedule A. If Executive is unable to provide copies of any such agreement or excerpts due to confidentiality restrictions imposed by a prior employer or other contracting party, Executive should describe in reasonable detail the nature and scope of the restrictions that prevent disclosure, including the identity of the restricting party and the general subject matter and duration of the applicable confidentiality obligation. Any such description should be provided on a separate page attached to this Schedule A, clearly labeled as a continuation hereof, and initialed and dated by Executive.
Executive represents and warrants that the information provided in this Section 4, together with any attached agreements or descriptions, constitutes a complete and accurate disclosure of all prior obligations that may be relevant to Executive's employment with the Company or to the rights and obligations of the parties under the Agreement.
5. Acknowledgments
By executing this Schedule A, Executive acknowledges and agrees to each of the following:
(a) Any Prior Inventions that are not specifically identified and described on this Schedule A (including any duly executed continuation pages attached hereto) will be deemed to be within the scope of the invention assignment provisions of the Agreement, and Executive will have no claim of ownership, exclusion, or reservation of rights with respect thereto. Executive understands that the Company will rely upon the completeness and accuracy of the disclosures made on this Schedule A in determining the scope of the intellectual property that is subject to assignment under the Agreement, and that the failure to disclose a Prior Invention may result in a forfeiture of any claim that such Prior Invention is excluded from the Company's rights under the Agreement.
(b) If, during the course of Executive's employment with the Company, Executive uses, incorporates, embeds, or otherwise integrates any Prior Invention listed on this Schedule A (or any portion, component, derivative, or improvement thereof) into any Company product, process, service, technology, software, methodology, invention, work of authorship, or other work or deliverable, Executive hereby grants to the Company a non-exclusive, royalty-free, fully paid-up, irrevocable, perpetual, worldwide license, with the right to sublicense through multiple tiers of sublicensees, to make, have made, use, sell, offer for sale, import, export, reproduce, modify, create derivative works of, distribute, publicly display, publicly perform, transmit, and otherwise exploit such Prior Invention as part of or in connection with such Company product, process, service, technology, software, methodology, invention, work of authorship, or other work or deliverable (the "Prior Invention License"). The Prior Invention License shall survive the termination or expiration of the Agreement and Executive's employment with the Company for any reason. Executive represents and warrants that Executive has the right and authority to grant the Prior Invention License and that the grant of such license does not violate any agreement, obligation, or duty owed by Executive to any third party.
(c) Executive will not incorporate, use, embed, or otherwise integrate any Prior Invention (whether or not listed on this Schedule A) or any proprietary intellectual property of any third party into any Company product, process, service, technology, software, methodology, invention, work of authorship, or other work or deliverable without obtaining the prior written consent of the Company. Executive understands that such consent may be granted or withheld in the Company's sole discretion and that the Company may impose conditions upon any such consent, including requirements relating to licensing, documentation, and third-party approvals.
(d) This Schedule A is subject to, governed by, and shall be construed in accordance with the terms and conditions of the Agreement, including without limitation the governing law provision thereof, which provides that the Agreement (and this Schedule A) shall be governed by and construed in accordance with the laws of the Commonwealth of Massachusetts, without regard to its conflicts of law principles. Any dispute arising out of or relating to this Schedule A shall be resolved in accordance with the dispute resolution provisions of the Agreement.
6. Defined Terms
Capitalized terms used but not otherwise defined in this Schedule A shall have the respective meanings ascribed to such terms in the Agreement. Without limiting the generality of the foregoing, the terms "Inventions," "intellectual Property," "Confidential Information," "Work Product," and all other defined terms relating to invention assignment, intellectual property ownership, and confidentiality obligations as set forth in Section 8 (Invention Assignment) and Section 7 (Confidentiality) of the Agreement shall have the meanings set forth therein when used in this Schedule A. In the event of any conflict between the terms of this Schedule A and the terms of the Agreement, the terms of the Agreement shall control, except to the extent that this Schedule A specifically identifies and excludes a Prior Invention from the scope of the invention assignment provisions of the Agreement, in which case the exclusion set forth on this Schedule A shall govern with respect to such Prior Invention only.
7. Execution
Executive and the Company's authorized representative have executed this Schedule A as of the date(s) set forth below, to be effective as of the date of the Agreement.
EXECUTIVE:
By: ________
Printed Name: Dr. Marcus J. Elliston
Date: ________
COMPANY ACKNOWLEDGMENT OF RECEIPT:
The undersigned, on behalf of Arbor Health Technologies Inc., hereby acknowledges receipt of this Schedule A and the disclosures set forth herein. Such acknowledgment does not constitute agreement with, approval of, or consent to the exclusion of any Prior Inventions listed herein from the scope of the invention assignment provisions of the Agreement, except to the extent expressly set forth in the Agreement.
ARBOR HEALTH TECHNOLOGIES INC.
By: ________
Printed Name: ________
Title: ________
Date: ________
Schedule A — Prior Inventions, Patents, and intellectual Property Disclosure Schedule A to Executive Employment Agreement dated August 5, 2022 Arbor Health Technologies Inc. and Dr. Marcus J. Elliston Page _ of _
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