EXHIBIT 10 (b)
TECHNOLOGY ASSIGNMENT AGREEMENT
Agreement dated as of October 2, 2003, by and between XXXXXX UNITED
DEVELOPMENT CORP., a corporation duly organized and existing under the laws of
the State of Delaware (hereinafter referred to as "Company"), XXXXXX XXXXXXX,
residing at 0000 Xxxxx Xxxx, Xxxxxxxxxx, XX 00000-0000, and XXXXXXX X. XXXXXXX,
residing at 000 Xxxx Xxxxx, Xxxx, XX 00000-0000 (such two individuals being
referred to herein individually as an "Inventor" and jointly as the
"Inventors").
RECITALS
WHEREAS, pursuant to a certain Technology Development Consulting
Agreement, dated as of June 1, 2002, the Company engaged the Inventors to
develop a method, materials and apparatus to be used to produce photo galvanic
hydrogen (the "PGH Technology") and to prepare and file in the U.S. Patent and
Trademark Office a provisional patent application relating thereto (the
"Provisional Patent Application"); and
WHEREAS, the Inventors have completed their services under the
Technology Development Consulting Agreement; and
WHEREAS, the Company wishes to acquire all right, title and interest of
the Inventors in (i) any PGH Technology developed by the Inventors, (ii) the
Provisional Patent Application, and (iii) all Letters Patent that may be granted
for the PGH Technology; and
WHEREAS, the Inventors are willing assign to the Company all of their
respective right, title and interest in the PGH Technology, the Provisional
Patent Application, and all Letters Patent that may be granted for the PGH
Technology, subject to the terms and conditions provided herein.
NOW, THEREFORE, in consideration of the above recitals, the terms and
covenants of this Agreement, and other valuable consideration, the receipt of
which is hereby acknowledged, the parties agree as follows:
1
SECTION ONE
AGREEMENT TO ASSIGN
Inventors hereby agree to assign to the Company all of their
right, title and interest in the PGH Technology, the Provisional Patent
Application, and all Letters Patent that may be granted for the PGH Technology.
A COPY OF THE FORM OF SUCH ASSIGNMENT IS ATTACHED HERETO AS EXHIBIT A.
SECTION TWO
CONSIDERATION
A. In consideration of such assignment, the Company hereby grants to
the Inventors, or either of them as they may determine, a right of first refusal
to perform all consulting services derived from contracts and/or grants entered
into between the Company and third parties relating to the development of the
PGH Technology. Promptly upon receipt of a grant or the execution of a contract
with a third party to develop the PGH Technology, Company will provide a written
offer to Inventors to perform the services required to be performed under such
contract or grant. Inventors shall have twenty (20) days to decide whether to
accept such offer. If the Inventors do not accept such offer within such twenty
(20) day period, Company may offer to a third party the right to perform the
services under such contract or grant on the same terms and conditions as was
offered to the Inventors hereunder. Company agrees that it will not enter into
any contract or arrangement to provide services under any such grant or contract
on terms that are more favorable than the terms offered to Inventors consulting
without having complied with Inventors' right of first refusal hereunder.
B. The Company further agrees that, upon submission of appropriate
invoices, the Company will reimburse the Inventors up to $5,000 for their
out-of-pocket expenses incurred for materials and supplies to build apparatus
relating to PGH Technology and for collecting and testing for the production of
hydrogen.
SECTION THREE
ASSIGNMENT
The rights and obligations of Inventors under this agreement are
personal to Inventors and may not be assigned or transferred to any other
person, firm or corporation without the prior express and written consent of
Company.
2
SECTION FOUR
ENTIRE AGREEMENT; MODIFICATIONS
The agreement shall constitute the entire agreement between the parties
and any prior understanding or representation of any kind preceding the date of
this agreement shall not be binding upon either party except to the extent
incorporated in this agreement. Any modification of this agreement or additional
obligation assumed by either party in connection with this agreement shall be
binding only if evidenced in writing signed by each party or an authorized
representative of each party.
SECTION FIVE
GOVERNING LAW
It is agreed that this agreement shall be governed by, construed, and
enforced in accordance with the laws of the State of New York.
IN WITNESS WHEREOF, each party to this agreement has caused it to be executed as
of the date first above written.
10/02/03 /s/ Xxxxxx Xxxxxx Xxxxxxx
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XXXXXX XXXXXXX
10/02/03 /s/ Xxxxxxx X. Xxxxxxx
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XXXXXXX X. XXXXXXX
NOTARY
SEAL
XXXXXX UNITED DEVELOPMENT CORP.
By: /s/ Xxxxxxx X. Xxxxx
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XXXXXXX X. XXXXX, Executive Vice President
3
EXHIBIT A
U.S.PATENT APPLICATION NO. 60/488,091 ATTORNEY DOCKET NO. 4393-003
ASSIGNMENT OF INVENTION & PATENT RIGHTS
WHEREAS, XXXXXX X. XXXXXXX, a United States citizen presently residing
at 0000 Xxxxx Xxxx, Xxxxxxxxxx, XX 00000-0000 (USA) and XXXXXXX X. XXXXXXX, a
United States citizen presently residing at 000 Xxxx Xxxxx, Xxxx, XX 00000-0000
(USA) (hereinafter collectively referred to as "Assignors") have invented a new
and useful Invention entitled,
"HYDROGEN GENERATING APPARATUS AND METHODS"
for which they have filed as United States Provisional Patent Application No.
60/488,091; and
WHEREAS, XXXXXX UNITED DEVELOPMENT CORPORATION, a U.S. Corporation,
having a place of business at X.X. XXX 000, XXXXXXXXXX, XX 00000 (U.S.A.)
(hereinafter referred to as "Assignee"), is desirous of acquiring, for the
United States of America and all countries foreign to the United States of
America, the entire right, title and interest in, to and under (1) the
Invention, (2) all patent applications that may be filed for the Invention and
that may ultimately claim the benefit of priority from the filing date of the
above-identified United States Application, and (3) any Letters Patent that may
be granted for said Invention, as hereinafter more fully set forth:
NOW, THEREFORE, TO ALL WHOM IT MAY CONCERN, in consideration of the sum
of One Dollar ($1.00) paid to the Assignors, and/or of other good and valuable
consideration, the receipt and sufficiency of which are hereby acknowledged,
have sold, assigned, transferred and set over, and by these presents does hereby
sell, assign, transfer and set over, unto the Assignee, its successors, legal
representatives and assigns, the entire right, title and interest in, to and
under the Invention, and all applications for Letters Patent that may hereafter
be filed for said Invention in any country and all Letters Patent that may be
granted for said Invention in any country (including, without limitation, all
extensions, renewals, reissues, reexaminations and the like thereof and such
other forms of protection of industrial property as may be provided by any
country), and all rights of priority in any country that are based upon the
filing date of the above-identified United States Application and that are
created by any law, treaty or international convention; the above transferred
right, title and interest to be held and enjoyed by said Assignee, their
successors, legal representatives and assigns as fully and entirely as the same
would have been held and enjoyed by the Assignors had this assignment not been
made;
AND THE ASSIGNORS HEREBY authorize and request all appropriate and
competent Officials in all countries, whose duty it is to issue or grant Letters
Patents on applications as aforesaid, to issue or grant all Letters Patent for
said Invention to the Assignee, its successors, legal representatives and
assigns, in accordance with the terms of this instrument;
AND THE ASSIGNORS HEREBY represent and covenant that they have the full
right to convey the entire interest herein assigned and that they have not
executed, and will not execute, any agreement in conflict herewith;
AND THE ASSIGNORS HEREBY further covenant and agree that, at the
request and expense of the Assignee, its successors, legal representatives and
assigns, but without demanding further consideration therefor, they will (1)
assist in the prosecution of all applications for Letters Patent as herein
described and any other applications for Letters Patent that may be made
covering said Invention; (2) communicate any and all facts known to him
respecting said Invention; (3) testify in any legal proceeding involving said
Invention; (4) execute and acknowledge all lawful papers and legal instruments;
(5) execute all divisional, continuing, reissue and reexamination applications;
(6) make all rightful oaths; and (6) generally do any and every lawful act
deemed necessary to aid and cooperate with the Assignee, its successors, legal
representatives and assigns in perfecting and maintaining the entire interest
conveyed herein and in obtaining and enforcing proper patent or industrial
property protection for said Invention in any country, particularly in cases of
opposition, interference and litigation;
Page 1 of 5
U.S.PATENT APPLICATION XX. 00/000,000 XXXXXXXX XXXXXX XX. 0000-000
AND EACH ASSIGNOR HEREBY covenants and agrees that the rights and
obligations set forth in this instrument shall be binding upon, and inure to the
benefit of, his heirs, legal representatives, successors and assigns;
AND EACH ASSIGNOR HEREBY grants the Assignee, its successors, legal
representatives and assigns, the power to insert on this instrument any further
identification that may be necessary or desirable to comply with the recordation
rules of any appropriate and competent authority, including, without limitation,
the United States Patent and Trademark Office.
AND THE PARTIES HEREBY agree that this Assignment may be executed in
two or more counterparts each of which shall be deemed an original but all of
which together shall constitute one and the same instrument.
IN TESTIMONY WHEREOF, the Assignors and Assignee hereunto set their
hands and seals the day and year set opposite their signatures.*
[THE REMAINDER OF THIS PAGE IS INTENTIONALLY LEFT BLANK.
THE SIGNATURES OF THE PARTIES APPEAR ON THE NEXT SUCCEEDING PAGES.]
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*This Assignment should preferably be signed before: (a) a Notary Public if
within the U.S.A. (b) a U.S. Consul if outside the U.S.A. If neither, then it
should be signed before at least two witnesses. In all cases any formalities of
execution required by the by-laws of the assignor company and the state or
country having jurisdiction over the assignor, should be observed.
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U.S.PATENT APPLICATION XX. 00/000,000 XXXXXXXX XXXXXX XX. 0000-000
BY ASSIGNOR:
Date:
--------------- ----------------------------------
XXXXXX X. XXXXXXX
WITNESSED BY:
Date:
--------------- ----------------------------------
Date:
--------------- ----------------------------------
State of DE )
) ss:
County of NC )
This __ day of ___ 2003, before me personally came the above-named
Assignor to me personally known as the individual who executed the foregoing
assignment, who acknowledged to me that he executed the same of his own free
will for the purposes therein set forth.
NOTARY
SEAL
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My commission expires:
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U.S.PATENT APPLICATION XX. 00/000,000 XXXXXXXX XXXXXX XX. 0000-000
BY ASSIGNOR:
Date:
----------------- ---------------------------------
XXXXXXX X. XXXXXXX
WITNESSED BY:
Date:
----------------- ---------------------------------
Date:
----------------- ---------------------------------
State of DE )
) ss:
County of NC )
This ___ day of ____ 2003, before me personally came the above-named
Assignor to me personally known as the individual who executed the foregoing
assignment, who acknowledged to me that he executed the same of his own free
will for the purposes therein set forth.
NOTARY -------------------------------
SEAL My commission expires:
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U.S.PATENT APPLICATION XX. 00/000,000 XXXXXXXX XXXXXX XX. 0000-000
BY ASSIGNEE:
Date: XXXXXX UNITED DEVELOPMENT CORPORATION.
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BY:
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PRINTED: XXXXXXX X. XXXXX
------------------------
TITLE: EXECUTIVE VICE PRESIDENT
------------------------
WITNESSED BY:
Date:
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Date:
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State of New York )
) ss:
County of Suffolk )
This ___ day of ____, 2003, before me personally came the
above-named Assignor to me personally known as the individual who executed the
foregoing assignment, who acknowledged to me that he executed the same of his
own free will for the purposes therein set forth.
-----------------------
My commission expires:
NOTARY SEAL
Page 5 of 5
