DATED July 22, 1999
IATM MULTIMEDIA INC
and
IAT AG
and
ALGO VISION PLC
---------------------
INTELLECTUAL PROPERTY
ASSIGNMENT
---------------------
Xxxxx & XxXxxxxx
000 Xxx Xxxxxx Xxxxxx
Xxxxxx
XX0X 0XX
Tel: (0000) 000 0000
Fax: (0000) 000 0000
Ref: CJC/NHC/KHW
INTELLECTUAL PROPERTY ASSIGNMENT
BETWEEN:
IAT MULTIMEDIA Inc, a Delaware, USA corporation ("IATM")
and
IAT XX, XX-0000 Xxxxx ("AG"), a Swiss corporation, which is a wholly owned
subsidiary of IATM
and
ALGO VISION PLC, a company incorporated in England and Wales with its registered
office at 2 Xxxxxxxx'x Xxx, Xxxxxx XX0X 0XX ("AV plc")
RECITALS:
(A) Under an Agreement for the Acquisition of Intellectual Property Rights
between IATM, AG, AV plc and Algo Vision Schweiz AG ("the Agreement") AG
agreed that, subject to the admission to trading on EASDAQ of certain
shares of AV plc, AG would, on or within seven days of admission, transfer,
or where applicable procure that its Affiliates (as defined below) would
transfer, certain Intellectual Property (also as defined below) into the
joint names of AG and AV plc in the form of 50% co-ownership (Miteigentum)
in consideration of a fee of one million US dollars and certain royalty
rights.
(B) The Agreement further provided that AV plc shall be obligated, from 14 days
after the said admission but no later than 30 days thereafter, to call upon
the IATM Group to transfer its entire interest in the 50% co-ownership of
the Intellectual Property and in any Improvements (as defined below) made
or acquired by the IATM Group during the co-
2
ownership period in consideration of a fee of US$2.5 million and certain
additional consideration payments.
(C) The parties have already entered into an assignment transferring the
Intellectual Property into co-ownership. This agreement is entered into in
order to effect the second stage of the ownership transfer.
OPERATIVE PROVISIONS
1. DEFINITIONS
1.1 "Admission" means the admission to trading on EASDAQ of 14,464,654 shares
of (pound)0.01 each, being the whole of the issued ordinary share capital
of AV plc and the shares forming part of the authorised share capital but
unissued share capital of AV plc sufficient to satisfy obligations to issue
further shares which it has assumed as at Admission;
1.2 "Affiliate" means, with respect to any undertaking or legal person, any
other undertaking or legal person directly or indirectly controlling,
controlled by, or under common control with such undertaking or legal
person;
1.3 "Effective Date" means the date of Admission;
1.4 "The Fee" means the fee of US $2.5 million payable by AV plc to AG to
acquire entire ownership of the Intellectual Property and the Improvements;
1.5 "IATM Group" means IATM and its Affiliates from time to time, including AG;
1.6 "Improvements" means improvements based essentially on the Intellectual
Property;
2
1.7 "Intellectual Property" means the intellectual property owned or used by AG
at the date of the Spin Off Agreement, together with intellectual property
owned or used by AG at the Effective Date, including, but not limited to,
the Patent Rights and the Trade Xxxx Rights but, for the avoidance of
doubt, not including any rights whatsoever to the IAT name or xxxx,
ownership of which shall remain exclusively in the IATM Group (intellectual
property meaning, without limitation, patents, patent applications,
copyrights, trademarks, trademark registrations, service marks, service
xxxx registrations, inventions, trade secrets and licences of any of the
foregoing);
1.8 "The Patent Rights" means German patent application number 197 37 258.9,
European patent application number 98115394.3-2202/0899958 and US patent
application number 09/138,640;
1.9 "Spin-off Agreement" means the Spin-off Agreement of 11 March 1988 between
IATM, AG, Xx. Xxxxxx Xxxx and IATC;
1.10 "The Trade Xxxx Rights" means Community Trade Xxxx number 000623751
(WONDERBOARD), Community Trade Xxxx number 000623777 (MOVING STILL IMAGE),
Swiss trade xxxx application number 456211 (WONDERBOARD), US trademark
application 75/354,082 (WONDERBOARD), Swiss trade xxxx application number
06441/1997 (MOVING STILL IMAGE) and any rights deriving from the terminated
US trademark application 75/353,932 (MOVING STILL IMAGE).
2. ASSIGNMENT
2.1 In consideration of the Fee, receipt of which is hereby acknowledged, and
certain additional consideration payments, as set out in the Agreement for
the Acquisition of Intellectual Property Rights, AG and IATM hereby assign
their interest in the Intellectual Property and the Improvements entirely
into the name of AV plc.
3
2.2 The above assignment shall be subject to the obtaining of any necessary
third party consents which the IATM Group is obliged to assist in obtaining
under the Agreement.
3. FURTHER ASSURANCE
3.1 AG and its Affiliates shall enter into all such documents and do all acts
as may be reasonably requested by AV plc to effect the purposes of this
assignment, including without limitation all such documents and acts
necessary for effecting the aforementioned transfer of the Intellectual
Property.
4. GOVERNING LAW
4.1 This assignment shall be governed by Swiss law.
EXECUTED BY:
IAT MULTIMEDIA INC
Place, Date
7/22/99
------------------------------------
Signature
/s/ Xxxxx Xxxx
-------------------------------------
Name (in capitals)
XXXXX XXXX
------------------------------------
Position
Chairman and Chief Executive Officer
------------------------------------
4
IAT AG
Place, Date
7/22/99
------------------------------------
Signature
/s/ Xxxxx Xxxxxxxxxx
-------------------------------------
Name (in capitals)
XXXXX XXXXXXXXXX
------------------------------------
Position
CFO
-----------------------------------
ALGO VISION PLC
Place, Date
7/22/99
------------------------------------
Signature
/s/ Xxxxxx Xxxx
-------------------------------------
Name (in capitals)
XXXXXX XXXX
-------------------------------------
Position
Director
-------------------------------------
5
