INVENTION TRANSFER AGREEMENT
Exhibit
10.16
This
Invention Transfer Agreement (hereinafter: Agreement)
was entered into by and between
XXXXX
Xxxxx (xxxxxxxx xx 0000 Xxxxxxxx, Xxx x.00. ground floor No. 2;
mother’s name: XXXXXX Xxxxx) and
XXXXX
Xxxxxx (residing at: 1014 Budapest, Úri u.18. ground floor No. 2;
mother’s name: XXXX Xxxxxxx )
(referred
to hereinafter collectively as Inventors), on the one
hand, and
VIDATECHTechnológiai
Kutató, Fejlesztő és Szolgáltató Korlátolt
Felelősségű Társaság (head office: 0000 Xxxxxxxx, Xxxxxxxxx út
94-96.; company registration No.: 00-00-000000, registered at the Budapest
Metropolitan Court as Court of Registration, represented by KUN Xxxxxx Xx.,
Managing Director; hereinafter: Legal Successor), on
the other hand,
(referred
to hereinafter separately as Party and collectively as Parties), at the date
stated hereinbelow.
Whereas
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The
Inventors created an invention to be presumably qualified as
patentable by
Xxxxx & Partners Patent and Trademark Office (Budapest District XII,
Mártonhegyi út 31.) on the basis of Act XXXIII of 1995 on the Patent
Protection of Inventions (hereinafter: Patent
Act) (referred to hereinafter as
Invention);
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The
Legal Successor is dealing in the utilisation of inventions and
patents,
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Vidatech
is the fully owned subsidiary (registered in the Republic of
Hungary) of
Power of the Dream Ventures, Inc. (a public limited
company registered in the State of Delaware of the United States
of
America, represented by ROZSNYAY Viktor, President and
CEO);
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the
Parties agreed this day under the following terms and conditions:
I.
Definitions used in the Agreement
The
detailed technical and technological description of the Invention is contained
in Annex No. 1 to the Agreement. The Parties shall understand by Invention
the
equipment named River-Power, to be lowered under the water
surface and transforming the movement energy of current water into electric
power.
By
Documentation the Parties shall understand the detailed technical and
technological description (execution and manufacturing designs) of the
Invention, on the basis of which the equipment can be manufactured and the
receipt of which is acknowledged by the Legal Successor through signing this
Agreement.
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II.
Purpose of the Agreement
The
purpose of this Agreement is for the Inventors to transfer to the Legal
Successor the exclusive right of utilising and patenting the Invention, with
the
aim of the Legal Successor’s patenting the Invention, having it registered as a
patent in the patent registers and later on manufacturing or having the
Invention manufactured or utilising it in manufacturing processes in the
course
of the utilisation of a potential patent (hereinafter:
Patent), and, furthermore, the Legal Successor’s
re-transferring the exclusive right of utilisation to a third party (which
may
also be a US public limited company established jointly by the Parties) and
the
Parties’ sharing in the fees thus received on a proportionate
basis.
III.
Subject matter of the Agreement
Based
on
the Agreement the Inventors assign the right of patenting and utilising the
Invention, thus in the course of the patenting proceeding the Legal Successor
shall become the exclusive and full legal successor of the Inventors, and
the
patent claim related to the Invention will be due to the Legal Successor,
while
the Legal Successor shall pay a fee against it.
Based
on
the Agreement the Inventors undertake the obligation to make their best efforts
for the purpose of the smooth and ongoing development of the Invention, whose
costs will be entirely borne by the Legal Successor according to this
Agreement.
With
regard to the fact that no employment (or any other similar relation directed
to
the performance of work) is or was existing between the Inventors and the
Legal
Successor, the Parties declare that the Invention is no service or employee
invention on the basis of the relationship existing between the Parties,
and,
consequently, this Agreement is no agreement for invention fee or agreement
for
the utilisation of employee invention. The statutory provisions relating
to
service and employee inventions shall not apply to the Parties’ legal relation
set out in this Agreement.
IV.
Delivery and receipt of rights
1.
Extent of the delivered right
By
the
execution of this Agreement the patent claim will devolve upon the Legal
Successor, as legal successor of the Inventors.
By
the
execution of this Agreement the Inventors expressly consent to the submission
of
the patent application and to the publication of the Invention, nevertheless
the
Legal Successor will be exclusively entitled to do such acts.
The
Agreement is entered into for indefinite time and without any territorial
restriction, and it shall cover all characteristics of the Invention (and
the
Patent), as solution, all potential claims end every method and extent of
utilisation.
The
Inventors shall warrant during the whole term of the Agreement that the
Invention has been created solely by them and no third party has any right
relating to the Invention, which prevents or restricts patenting or
utilisation.
The
Inventors warrant also that the Invention is technically feasible and it
can be
operated, and they acknowledge that they have handed over to the Legal Successor
a low-performance prototype for plant trials and measurements, whose appropriate
operation was made sure by the Legal Successor.
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2.
Exclusivity, transferability
Based
on
the express agreement of the Parties the Legal Successor will acquire the
exclusive right to the patent claim by this Agreement, and in case of the
Patent
being granted the Legal Successor as patentee will be entitled to any kind
of
utilisation of the Patent and/or to decision-making thereon with the consent
of
the Inventors.
The
Parties expressly agree that the Legal Successor will not be entitled to
re-assign the entitlements, embodied and transferred by this Agreement, to
any
third party without any further permission or consent, and/or to grant any
licence of utilisation to any third party. The Legal Successor shall inform
the
Inventors on all important decisions and they will make a decision in common
consent in each case.
3.
Obligation of supply of information
The
Inventors shall provide for the Legal Successor all required information
related
to the Invention (thus particularly the information required in the patenting
proceeding), supply all deeds and documents, inform the Legal Successor on
any
relevant rights and important circumstances and disclose the economic, technical
and organisational know-how and experience related to the implementation
of the
Invention.
The
obligation set out in this Clause shall charge the Investors – in case of the
transfer of the rights to a third party – towards such third party.
The
Inventors undertake the obligation to make or obtain the declarations required
for patenting the invention and for entering the Legal Successor as patentee
in
the register kept on patent applications and/or in the patent register, and,
furthermore, to do all legal acts required for the acquisition of right by
the
Legal Successor, and whose performance would not be possible for the Legal
Successor at all or would only be possible in case of undertaking considerably
higher difficulties.
4.
Counter-value, consideration
50%
of
all revenues due to the Legal Successor in the course of the utilisation
of the
Invention (including the fees payable by third parties, if the Legal Successor
re-transfers the exclusive right of utilisation or of patent to a third party)
shall be due to the Inventors, as gross inventor’s fee, i.e. based on the
express agreement of the Parties the inventor’s fee shall include the amount of
the payable general turnover tax [VAT] and/or the deductible taxes and other
public dues.
All
costs
related to patenting and utilising the Invention or transferring the relevant
entitlements (expenditures in material and personal nature, out-of-pocket
expenses, fees, stamp duties, etc.) shall charge the Legal
Successor.
Any
costs
related to the manufacturing activity, manufacturing processes and sales
of the
product connected to the Patent shall be borne jointly by the Parties, i.e.
in
case of direct manufacturing and sales (or in case of manufacturing and sales
with the involvement of subcontractor) it shall not be 50% of the Legal
Successor’s revenue, but 50%, say fifty percent of the operational result
derived from this activity for the Legal Successor, which shall be due to
the
Inventors as inventor’s fee.
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The
Parties jointly agree that the Inventors will receive, as further remuneration,
50,000 pieces of registered common shares per person from the
shares of Power of the Dream Ventures, Inc. (PDVI), as public
limited company, being 100% owner of Vidatech, to a face value of USD
0.0001 each, which they will be free to sell on the open stock exchange
market, and which will be set out in the so-called “SB2” document to be
submitted to the US Securities and Exchange Commission by PDVI. Both the
Managing Director of Vidatech Kft. and the President and CEO of Power of
the
Dream Ventures, Inc. consent to this Agreement in common understanding, since
the Inventors designate the Legal Successor as patentee of the Invention,
in
consideration for the shares.
5.
Performance of payment obligations, payment
securities
The
Legal
Successor shall send the Inventors a written notice (settlement of accounts)
on
the amount of the inventor’s fee regulated in Clause IV. 4. above, by the last
day (inclusive) of each quarter, within 10 (ten) business days following
the
given quarter. The Inventors shall approve the settlement of accounts within
10
(ten) business of the receipt, or they may dispute in writing the settlement
of
accounts, in the absence of which the settlement of accounts shall be considered
to have been expressly accepted and approved. The settlement of accounts
may be
disputed by the Inventors subsequently exclusively alleging the fact that
they
have been misled in respect of the facts serving as basis for the settlement
of
accounts.
6.
Checking of the business books
The
Inventors shall be entitled to check the adequacy of the settlement of accounts
defined in Clause IV. 5. above and to inspect the financial certificates
related
to this Agreement at the head office (premises) of the Inventors.
V.
Miscellaneous provisions
1.
Territorial scope of the Agreement
The
territorial scope of the Agreement shall cover all countries of the Earth
without any restriction.
2.
Temporary scope of the Agreement, expiry of the
Agreement
The
Parties enter into the Agreement for an indefinite period of time reckoned
from
the execution.
3.
Amendment to the Agreement
Both
Parties reserve the right to amendment, if such change is advantageous for
both
parties
The
Agreement will cease to exist for the future, if
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the
potential Patent itself, i.e. all rights connected to the Patent
(including the status of patentee) have been sold to a third
party and the
Parties have settled accounts with each other on the basis
thereof.
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3.
Reasons for termination by notice. Stipulation of the right of termination
by
extraordinary notice
The
Agreement may not be terminated by ordinary notice.
The
Agreement may be terminated by either Party in writing, by extraordinary
notice
with immediate effect, if the other Party violates the Agreement seriously,
in
spite of written warning to the consequences. The Parties shall deem the
following circumstances to be serious breaches:
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The
Inventors do not meet their obligation of warranty defined in Clause
IV.
1. of this Agreement in any respect
whatsoever;
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The
Legal Successor fails to pay the inventor’s fee approved by the Inventors,
in spite of written notice, within 30 (thirty) days reckoned from
the
notice.
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4.
Stipulation of the applicable law
In
the
issues not regulated in the Agreement the Parties shall deem to be compulsory
for themselves the provisions of Hungarian law, thus particularly the Patent
Act
(Act XXXIII of 1995 on the Patent Protection of Inventions) and the Civil
Code.
5.
Amicable settlement of legal disputes resulting from the Agreement. Stipulation
of the jurisdiction of the Court
In
connection with their potential legal disputes related to the Agreement the
Parties shall strive at settlement by negotiation. Should this have no result,
the Parties stipulate already now the exclusive jurisdiction of the [Budapest]
Metropolitan Court.
6.
Confidentiality
The
contracting Parties agree that the facts, data and information having become
known to them relating to each other in the course of the conclusion and
performance of the Agreement shall qualify as business secret, and they shall
handle them confidentially in accordance with the rules relating to business
secrets. This obligation shall cover the employees, representatives,
subcontractors, etc. of the Parties and in general all persons, who/which
have
acquired the business secret in the interest of the performance of the
Agreement, with the collaboration of the given Party.
The
protection of business secret shall also cover the fact that no one of the
Parties will be entitled to make accessible for, or to disclose to, any third
party any information or document related to the Agreement, particularly
any
information, business idea, plan, design or method qualifying as confidential,
having become known to it on the other Party’s business or marketing activity,
without the written consent of that other Party.
The
contracting Parties lay down that also the information obtained without the
consent of the other Party, with the contribution of a person being in fiduciary
or business relation with it at the date of or prior to the acquisition of
the
secret, shall also qualify as violation of business secret.
The
provisions for the protection of secrets shall remain in force and effect
until
the elapse of 5 (five) years following the termination of the
Agreement.
7.
Notices
Any
notices related to the Agreement shall be forwarded to the Party concerned
in
writing, in registered mail, through hand delivery or via telefax message
to the
address defined below or to the address communicated by the other Party for
this
purpose in advance in writing.
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If
to the Inventors:
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Name:
XXXXX Xxxxx
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Name:
XXXXX Xxxxxx
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Address:
1014 Budapest, Úri u.18. Fsz/2.
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Address:
same
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E-mail:
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E-mail:
xxxxxx@x-xxxxx.xx
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Telephone:
x00-00-000-0000
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Telephone:
x00-00-00-00-000
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Telefax:
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If
to the
Legal Successor:
Name:
Vidatech Kft.
Address:
0000 Xxxxxxxx, Xxxxxxxxx út 94-96.
E-mail:
xxxx@xxxxxxxxxxxxxxx.xxx
Telephone:
x00-0-000-0000
Telefax:
x00-0-000-0000
The
Parties shall notify to each other in writing, without delay, any possible
change in the addresses or in the persons to be notified, specified in this
Clause, which alteration will not require any amendment to the
Agreement.
The
notices shall be deemed to have been served at the following dates: in case
of
hand delivery when the consignment is taken over by the recipient; in case
of
mailing when the acknowledgement of receipt is signed by the recipient; if
the
acknowledgement of receipt is not signed, then on the fifth business day
following the second attempt of service; in case of communication via telefax
when confirmation is received at the end of the transmission on successful
transmission; in case of e-mail message when the sending Party receives a
confirmation on the receipt of the message.
The
Parties signed this Agreement approvingly, after having read and interpreted
it,
as a deed in full conformity with their will.
Dated
in
Budapest, on 24 May 2007
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/s/
Xxxxx Xxxxx
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/s/
Xxxxxx Xxx, Xx.
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XXXXX
Xxxxx, Inventor
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Legal
Successor, its representative
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/s/
Xxxxx Xxxxxx
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/s/
Viktor Rozsnyay
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XXXXX
Xxxxxx, Inventor
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on
behalf of Power of the Dream Ventures,
Inc.
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