Exhibit 10.9
ASSIGNMENT OF PATENTS AND PATENT APPLICATIONS
THIS ASSIGNMENT, effective the date of last signature below,
is by and between GENERAC CORPORATION, a Wisconsin corporation ("Assignor") and
GENERAC PORTABLE PRODUCTS, INC. (F/K/A GPPC, INC.), a Delaware corporation
("Assignee").
RECITALS
A. Assignor is the sole owner of certain intellectual
properties, including the patent applications and patents, together with the
inventions disclosed thereby, as described more fully below.
B. Assignor desires to assign all of its rights, title and
interest in such properties to Assignee, and Assignee desires such an assignment
as part of the purchase of Assignor's Portable Products Division and in
accordance with the parties' Asset Purchase and Sale Agreement.
AGREEMENTS
In consideration of the recitals and mutual promises contained
herein and other good and valuable consideration, the receipt and sufficiency of
which is hereby acknowledged, the parties agree as follows:
1. ASSIGNMENT OF PATENTS AND PATENT APPLICATIONS. Assignor
hereby assigns and transfers to Assignee, its successors and assigns, Assignor's
entire rights, title and interest in and to the patents and patent applications
listed in Schedule A attached hereto, together with Assignor's entire rights,
title and interest in and to the inventions and improvements disclosed therein.
Assignor also hereby assigns and transfers its entire rights, title, and
interest in and to any continuation, divisional, renewal, substitute or
continuation-in-part application or the equivalent thereof with respect to any
such patent application, in and to any patent issued from any said patent
application, and in and to any reissue or reexamination patent or the equivalent
thereof that may result from any such patent or patent application.
2. ASSIGNOR WARRANTY. Assignor hereby warrants and represents
that it has the unrestricted right to make this Assignment free and clear of all
liens, encumbrances, security interests and rights of any third party. Assignor
further represents and warrants that no assignment, sale, license, agreement or
any other encumbrance has been or will be made or entered into which would
conflict with this Assignment or its rights, title and interest in and to said
patents and patent applications.
3. ASSIGNOR COOPERATION. Assignor and its successors and
assigns further agree to, without further consideration, promptly provide
Assignee with all pertinent documents relating to the patents and/or patent
applications listed in Schedule A and will, upon Assignee's reasonable request,
provide Assignee with all pertinent facts relating to said patents and/or patent
applications. Assignor further agrees to testify as to said facts and documents
in any interference, litigation or proceeding related thereto. Assignor will
promptly execute and deliver to Assignee or its legal representatives, and
undertake all reasonable efforts to secure the same from its employees, agents,
officers, directors, as well as any inventor of any patent or patent application
hereby assigned, any and all papers, instruments, documents, affidavits or
declarations determined by Assignee in its reasonable judgment as required by
Assignee to apply for, obtain, maintain, issue or enforce any of said patents or
patent applications, any continuation, divisional, renewal, substitute or
continuation-in-part application or the equivalent thereof, any patents which
may issue from said applications, and any reissue or reexamination patent or the
equivalent thereof that may result from any said patent and/or patent
application.
4. ASSIGNMENT OF ACCRUED ENFORCEMENT RIGHTS. Assignor assigns
and transfers to Assignee any and all claims or causes of action for
infringement of any patent listed in Schedule A that may have accrued prior to
the effective date of this Assignment, together with the right to bring suit for
and/or initiate any proceeding to collect any and all damages arising from said
claim or cause of action.
5. COUNTERPARTS. This Assignment may be executed in
counterparts, each of which shall be deemed an original, but both of which taken
together shall constitute one and the same instrument.
IN WITNESS WHEREOF, we have hereunto set our hands and seal.
For Assignor, Generac Corporation:
BY: /s/ Xxxxxx X. Xxxx
-------------------------------
Printed Name: Xxxxxx X. Xxxx
Title: Chairman of the Board
State of Wisconsin )
: SS
__________County )
On this ____ day of _____________, 1998, before me appeared to me
personally known, who, being by me duly sworn, did say that he is of Generac
Corporation, and that said instrument was signed
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on behalf of said corporation by authority of the Board of Directors.
--------------------------------
[Seal] Notary Public, State of ________
My commission __________________
For Assignee, Generac Portable Products, Inc. (f/k/a GPPC, Inc.):
BY /s/ Xxxx X. Xxxxxxxxx
----------------------------------
Printed Name: Xxxx X. Xxxxxxxxx
Title: President
State of _________ )
: SS
__________ County )
On this ____ day of ______________, 1998, before me appeared
______________________ to me personally known, who, being by me duly sworn, did
say that he is of Generac Portable Products, Inc. (f/k/a GPPC, Inc.), and that
said instrument was signed on behalf of said corporation by authority of the
Board of Directors.
--------------------------------
[Seal] Notary Public, State of ________
My commission __________________
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SCHEDULE A
1. Patent No. 5,718,255, for "Flow Responsive Diverting Valve," issued
February 17, 1998.
2. Patent Application Serial No. 08/780,520, for "Improved Piston for Water
Pump and Related Method," filed January 8, 1997.
3. Patent Application Serial No. 08/780,406, for "Flow Control Valve for a
Pressure Washer," filed January 9, 1997.
4. Patent Application Serial No. 08/810,215, for "Improved Adapter for
Mechanically Coupling a Pump and Prime Mover," filed February 28, 1997.
5. PCT Patent Application Serial No. PCT/US97/24033 for "Flow Control Valve
for a Pressure Washer," filed December 29, 1997.
6. PCT Patent Application Serial No. PCT/US97/24032 for "Improved Piston
for Water Pump and Related Method," filed December 29, 1997
7. PCT Patent Application Serial No. PCT/US97/24034 for "Flow Responsive
Diverting Valve," filed December 29, 1997.
8. PCT Patent Application Serial No. PCT/US98/02303 for "Improved Adapter
for Mechanically Coupling a Pump and Prime Mover," filed January 21,
1998.
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