EXHIBIT 10.4
Agreement regarding Assignment of Invention and Patent, dated June 12, 1996,
between Xxxxxx X. Xxxxxx and the Company
AGREEMENT
THIS AGREEMENT (the "Agreement") is executed this 12th day of June, 1996,
by and between XXXXXX X. XXXXXX, an adult resident of Minnesota ("Xxxxxx"), and
INTERNATIONAL BUILDING CONCEPTS, LTD., a Minnesota corporation (the "Company").
R E C I T A L S:
A. Pursuant to an Assignment of Invention and Patent, a copy of which is
attached hereto as EXHIBIT A, Xxxxxx has agreed to assign to the Company all of
his right, title and interest in and to that certain invention disclosed and
claimed in the application for United States Letters Patent, filed on February
7, 1996, under Application Number 60/011,265 and entitled "MONOLITHIC SHELTER"
(the "Patent").
B. The parties desire to confirm Leslie's assignment of the Patent, as
well as the Company's acceptance thereof and consideration therefor, including a
license of the Patent to Xxxxxx.
NOW, THEREFORE, in consideration of the recitals and the mutual covenants
and agreements herein contained, the parties hereto agree as follows:
1. CONFIRMATION OF ASSIGNMENT. By execution hereof, Xxxxxx confirms
that he has assigned to the Company, and hereby does assign to the Company,
all of his right, title and interest in and to the Patent, subject to the
terms and conditions hereof.
2. CONFIRMATION OF ACCEPTANCE. By execution hereof, the Company
confirms that it has accepted, and hereby does accept, Leslie's assignment of
all of his right, title and interest in and to the Patent, subject to the
terms and conditions hereof.
3. CONSIDERATION FOR ASSIGNMENT. In consideration for Leslie's
assignment of all of his right, title and interest in and to the Patent, the
sufficiency of which consideration Xxxxxx hereby acknowledges, the Company
hereby agrees (i) to enter into that certain Employment Agreement with
Xxxxxx, dated the date hereof, and (ii) to xxxxx Xxxxxx the license to the
Patent set forth in Section 4 below.
4. NONEXCLUSIVE, ROYALTY-FREE LICENSE OF THE PATENT. In connection
with Leslie's assignment of the Patent, the Company agrees to xxxxx Xxxxxx a
perpetual, nonexclusive, royalty-free, worldwide license to manufacture, use,
sell and otherwise exploit the invention and technology described in the
Patent for its remaining term, including any extension or renewal thereof
(the "License"), subject to the following limitations:
a. COMMENCEMENT OF THE LICENSE. The License shall take effect only
upon the occurrence of any of the following events:
i. the dissolution of the Company;
ii. the bankruptcy or insolvency of the Company;
iii. the filing by the Company of a petition for bankruptcy or
insolvency;
iv. the filing of any other petition based upon the alleged bankruptcy
or insolvency of the Company which is not dismissed within ninety (90)
days after filing;
v. an assignment by the Company for the benefit of creditors; or
vi. the appointment of a receiver for the Company over any of its
assets.
b. LIMITATION ON TERRITORY. The License shall not apply to, and
shall have no force or effect in, any territories for which the Company has
granted or heretofore grants another person or entity an exclusive license to
manufacture, use, sell and otherwise exploit the invention and technology
described in the Patent for the term stated in such other license. The
Company shall keep Xxxxxx apprised at all times of any and all such other
licenses.
5. FURTHER ASSURANCES. The parties each agree to complete, execute and
deliver any additional instruments and to take any further action reasonably
required or appropriate to consummate the transactions contemplated in this
Agreement.
6. INVALIDITY. If for any reason any term or provision of this
Agreement shall be declared void and unenforceable by any court of law or
equity, or shall not be able to be performed by reason of any state or
federal regulation, law or ordinance, it shall only affect such particular
term or provision of this Agreement and the balance of this Agreement shall
remain in full force and effect and shall be binding upon the parties hereto.
7. NOTICES. The parties hereto shall keep each other apprised of their
addresses until all of the obligations arising under this Agreement have been
discharged. All notices, requests, demands, and other communications hereunder
shall be in writing and shall be deemed to have been duly given if delivered or
mailed, by registered mail, first-class postage paid, return receipt requested,
or any other delivery service with proof of delivery.
8. BINDING EFFECT; ASSIGNMENT. This Agreement shall be binding upon and
inure to the benefit of the parties hereto and their respective successors
and permitted assigns, but shall not be assignable, by operation of law or
otherwise, by either party hereto without the prior written consent of the
other party.
9. COMPLETE AGREEMENT. This Agreement is the complete and exclusive
statement of the agreement between the parties and supersedes and merges all
prior understandings and agreements, oral or written, relating to the subject
matter of this Agreement.
10. GOVERNING LAW. This Agreement shall be governed by and construed in
accordance with the laws of the State of Minnesota.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement as of
the date first above written.
_____________________________________
Xxxxxx X. Xxxxxx
INTERNATIONAL BUILDING CONCEPTS, LTD.
By:__________________________________
Title:____________________________
