EXHIBIT 10.15
ASSIGNMENT AGREEMENT
THIS ASSIGNMENT AGREEMENT (the "Agreement") is by and between Xx. Xxxxxxx X. Son
("Assignor"), and Innovative Global Solution, Inc., a California corporation
("Company"), and is effective as of _______________ (the "Effective Date").
RECITALS
WHEREAS, Assignor has developed or otherwise has rights to certain
technology which is described in the Licensed Patents (as defined below), (the
"Technology"), which is applicable to the field of cellular telephone
communications components, equipment, systems, and methods (the "Field"); and
WHEREAS, Assignor owns or otherwise has certain Intellectual Property
Rights in and to said Technology, including patent, copyright, trade secrets and
moral rights in said Technology (collectively "Intellectual Property Rights");
and
WHEREAS, Company desires to acquire such Technology and all Intellectual
Property Rights therein from Assignor subject to the terms hereof for use in
said Field; and
WHEREAS, Assignor wishes to transfer such Technology and Intellectual
Property Rights to Company for use in such Field in exchange for the
consideration and mutual promises set forth herein;
NOW, THEREFORE, for good and valuable consideration as described herein,
the sufficiency of which is hereby acknowledged, and in exchange for the mutual
promises set forth herein, the parties agree as follows:
AGREEMENT
1. Definitions.
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(a) "Assigned Technology" shall mean Technology which has applicability
substantially exclusively within the Field.
(b) "Licensed Technology" shall mean Technology which is not substantially
exclusively applicable to the Field, but has utility in other fields.
(c) "Licensed Patents" shall mean Korean Patent Application Nos. 52811,
52812 and 52813, filed October 15, 1997, and foreign counterpart applications,
and any patents granted on such applications in any country of the world.
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2. Assignment.
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Assignor hereby irrevocably assigns, transfers and conveys to Company all
its world-wide right, title and interest in the Assigned Technology and all
Intellectual Property Rights thereto, including the complete right to exploit or
otherwise use the Assigned Technology or any portion thereof in any form of
medium, expression or technology now known or hereafter known or developed, all
contract and licensing rights, and all claims and causes of action with respect
to any of the Assigned Technology, whether now known or hereafter become known,
including the right to xxx for past infringement.
3. License.
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Assignor hereby grants and agrees to grant to Company an exclusive,
irrevocable, paid-up, world-wide, and royalty free license and right, in
perpetuity, under the Licensed Patents and its Intellectual Property Rights
including the right to sublicense through multiple tiers of sublicenses to make,
have made, use, sell, offer to sell, import, reproduce, distribute, copy, modify
and otherwise practice the Licensed Technology limited, however, to the Field.
Assignor also waives and agrees never to assert any moral rights, or the
equivalent thereof, against Company with respect to any of the rights described
above.
4. Assistance.
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(a) Assignor hereby agrees, on its own volition and at Company's request,
to execute, take all actions, and deliver any and all documents, agreements,
assignments, or transfers necessary or appropriate to perfect or implement this
assignment and license of the rights granted herein to the Company. In the event
that a Company is unable for any reason to secure Assignor's signature to any
document required to apply for or execute any patent, copyright or other
applications with respect to the Assigned Technology (including improvements,
renewals, extensions, continuations, divisions or continuations in part
thereof), Assignor hereby irrevocably designates and appoints Company and its
duly authorized officers and agents as Assignor's agent and attorney-in-fact to
act for and in its behalf, and instead of Assignor, to execute and file any such
applications and to do all other lawfully permitted acts to further the
perfection, prosecution and issuance of patents, copyrights or other rights
therein with the same legal force and effect as if executed by Assignor.
(b) Assignor agrees to reasonably assist Company in defending themselves
from any third party claims against Company which are directly related to
Company's use of the Assigned or Licensed Technology.
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5. Consideration
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In consideration for the assignment and license of Assignor's Rights in the
Technology under this Assignment, the Company shall (i) on the Effective Date
pay to Assignor the sum of fifty thousand U.S. dollars ($50,000) and issue to
Assignor on or before June 30, 1998 58,000 shares of common stock of Company,
and (ii) if a U.S. patent of substantially the same scope as one or more of said
Korean Patent Applications issues, pay to Assignor within thirty (30) days of
such issuance and additional one hundred fifty thousand U.S. dollars ($150,000)
and issue to Assignor 80,000 additional shares of the common stock of Company.
Share of common stock issued to Assignor shall be fully paid and non-assessable
when issued.
6. License and Option.
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In further consideration for the assignment and license of rights to the
Technology hereunder, Company hereby grants back to Assignor a non-exclusive,
perpetual, worldwide (excluding the Republic of Korea) royalty-free transferable
license (with the right to sublicense through multiple tiers of sublicenses) to
make, have made, use, sell, offer for sale, import, copy, reproduce, distribute
and practice the Assigned Technology assigned or licensed to Company hereunder;
provided that if Company shall fail to commercialize the Assigned Technology and
the license to the Licensed Technology in any country within five (5) years of
the Effective Date, then at Assignor's sole option, ownership of the Assignor
Technology with respect to that particular country shall revert to Assignor. For
purposes of implementing this Section 6, on or about forty-eight (48) months
after Effective Date, Company shall provide to Assignor a report detailing
Company's progress in the commercialization of the Assigned and Licensed
Technology and shall thereafter supply to Assignor such information as
reasonably requested by Assignor, to demonstrate Company's commercialization
obligations as set forth in this Section 6. The license granted back to Assignor
in this Section 6 shall survive, in the event of the bankruptcy of Company.
7. Warranties and Representations.
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Assignor represents and warrants that:
(a) to the best of Assignors knowledge, Assignor is the owner of or has
the right to the Assigned and Licensed Technology assigned or licensed
hereunder and to the Intellectual Property Rights conveyed herein;
(b) to the best of Assignor's knowledge, the use, reproduction,
distribution, or modification of the Assignor Technology will not violate
the rights of any third parties in the Assigned Technology including, but
not limited to, trade secrets, publicity, privacy, copyrights, moral right
and patents; and
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(c) Assignor has full power and authority to make and enter into this
agreement.
8. Costs. Company agrees to reimburse Assignor for its reasonable costs in
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providing the assistance under Section 4 above. Additionally, Company agrees to
indemnify and hold harmless Assignor from any third party claims against
Assignor which are directly related to Company's use of the Assigned Technology,
but only for such claims which are not, in whole or in part, the result of any
act or omission of Assignor or related to the breach by Assignor of any
representation or warranty provided hereunder.
9. Miscellaneous. This Agreement shall be governed by the laws of the State of
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California without reference to its conflicts of law principles. Any legal
proceedings arising out of or relating to this Agreement shall be conducted in
the State of California. If any one or more provisions of this Agreement shall
be determined to be invalid, illegal or unenforceable, in whole or in part, the
validity, legality and enforceability of any of the remaining provisions or
portions thereof shall not in any way be affected or impaired thereby and shall
nevertheless be binding between the parties hereto. Any such invalid, illegal or
unenforceable provisions or portion thereof shall be changed and interpreted so
as to best accomplish the objectives of such provision or portion thereof within
the limits of applicable law or applicable court decisions. This Agreement,
together with any attachments and appendices hereto, constitutes the entire
agreement between the parties with respect to the subject matter of the
Agreement, and supersedes any and all other agreements, written or oral, that
the parties heretofore may have had with respect to the subject matter herein.
IN WITNESS WHEREOF, the Assignor and Company have executed this Agreement.
COMPANY: ASSIGNOR:
Innovative Global Solution, Inc. Xx. Xxxxxxx X. Son
By: ____________________________ By: ______________________________
Its: ____________________________
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FIRST AMENDMENT TO ASSIGNMENT AGREEMENT
First Amendment to Assignment Agreement (the "First Amendment") is made as of
the 20th day of September, 1999 by and between Xx. Xxxxxxx X. Son ("Assignor")
and NeoPoint, Inc., a California corporation f/k/a Innovative Global Solution,
Inc. ("Company").
RECITALS
WHEREAS, Assignor and Company entered into an Assignment Agreement dated as of
February 27, 1998 (the "Original Agreement");
WHEREAS, it is in the best interests of the Company and Assignor to modify the
consideration to Assignor in connection with the assignment and license of
Assignor's Rights in the Technology; and
WHEREAS, Assignor and Company wish to amend the Original Agreement as set forth
below;
NOW, THEREFORE, in consideration of the premises set forth above and the mutual
promises hereinafter set forth, the parties agree to amend the Original
Agreement as follows:
1) Section 5(ii) is deleted in its entirety and replaced with the following:
"(ii) On September 20, 1999 pay to Assignor seventy-five thousand U.S.
Dollars ($75,000) and issue to Assignor 40,000 additional shares of the
common stock of Company."
2) All capitalized terms not otherwise defined in this First Amendment shall
have the meanings ascribed to them in the Original Agreement
3) Except as hereinabove stated, all of the terms and conditions of the
Original Agreement remain in full force and effect.
IN WITNESS WHEREOF, the parties have entered into this First Amendment on the
day and year first written above.
NEOPOINT, INC. ASSIGNOR
Xx. Xxxxxxx X. Son
By:___________________________ ___________________________________
Name:_________________________
Title:________________________
Amendment
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