1
EXHIBIT 10.4
ASSIGNMENT
WHEREAS, I, XXXXXX X. XXXXXXXX, a citizen of the United States
of America, whose post office address is 00 Xxxxxxx Xxxxxxx Xxxxx, Xxxxx, Xxx
Xxxxxx 00000, have made the inventions identified in the attached Schedule A;
WHEREAS, the inventions identified in the attached Schedule A
were the subject of a License Agreement dated July 31, 1997, which has now been
terminated; and
WHEREAS, MILLENNIUM CELL INC., a corporation organized and
existing under the laws of the State of Delaware, and having an office for the
transaction of business at 0 Xxxxxxxxxx Xxx Xxxx, Xxxxxxxxx, Xxx Xxxxxx 00000,
is desirous of acquiring the entire right, title and interest in and to the
inventions identified in Schedule A and in and to the applications for Letters
Patent therefor, and any Letters Patent which may be obtained therefor,
including any reissued or re-examined patents and each and every foreign
counterpart of said inventions, all as set forth in Schedule A;
NOW, THEREFORE, TO ALL WHOM IT MAY CONCERN, BE IT KNOWN, that
I, XXXXXX X. XXXXXXXX, for the consideration recited in the attached AGREEMENT,
hereby acknowledge at or before the ensealing and delivery of these presents,
and the receipt of which is hereby acknowledged, have sold, assigned,
transferred and conveyed and by these presents do sell, assign, transfer and
convey, unto said MILLENNIUM CELL INC., its successors and assigns the entire
right, title and interest in and to the inventions identified in Schedule A,
including all rights, past, present and future, to enforce any and all patents
issuing thereon, and any and all improvements thereon, and in and to said
applications and any divisions, continuations or continuations-in-part thereof,
and in and to any Letters Patent of the United
2
States of America which may be issued on any of said applications, and any
reissues and/or re-examinations thereof, and in and to any and all applications
for Letters Patent filed in foreign countries for said inventions or
improvements including all priority rights, and any and all Letters Patent which
may be granted in foreign countries therefor, and further including any future
invention(s) relating to the subject matter of the inventions assigned herein,
TO HAVE AND TO HOLD THE SAME to the full end of the term or terms for which any
and all said Letters Patent may be granted;
AND I, XXXXXX X. XXXXXXXX, do hereby authorize and request the
Commissioner of Patents and Trademarks to issue Letters Patent of the United
States of America to said MILLENNIUM CELL INC., as the assignee of the entire
right, title and interest in and to the same, for the sole use and benefit of
said MILLENNIUM CELL INC., its successors and assigns;
AND I, XXXXXX X. XXXXXXXX, do hereby covenant and agree to and
with said MILLENNIUM CELL INC., its successors and assigns, that I have the full
power to make this assignment, and that the rights assigned are not encumbered
by any grant, license or right heretofore given, and that I, my executors or
administrators, shall and will do all lawful acts and things and make, execute
and deliver without further compensation, any and all other instruments in
writing, further applications, papers, affidavits, powers of attorney,
assignments, and other documents which, in the opinion of counsel for said
MILLENNIUM CELL INC., its successors and assigns, may be required or necessary
more effectively to secure to and vest in said MILLENNIUM CELL INC., its
successors and assigns, the entire right, title and interest in and to said
inventions and improvements, applications, Letters Patent, rights, titles,
benefits, privileges, and advantages hereby sold, assigned, transferred and
conveyed, including the
2
3
perfection of the right of first refusal granted to MILLENNIUM CELL INC. in the
License Agreement, and that I will sign any applications for reissue or
re-examination which may be desired by the owner of the patents assigned hereby.
IN WITNESS WHEREOF, I, XXXXXX X. XXXXXXXX, have hereunto set
my hand and seal on the date below written.
DATED:____________________ /s/ XXXXXX X. XXXXXXXX
______________________
XXXXXX X. XXXXXXXX
STATE OF )
) ss.:
COUNTY OF )
BE IT KNOWN, that on this ___ day of ____________, 2000, before me
personally came XXXXXX X. XXXXXXXX, to me known and known to me to be the person
mentioned in and who executed the foregoing assignment, and he acknowledged to
me that he executed the same as his free act and deed for the use and purposes
xxxxxxx mentioned.
_____________________________________
Notary Public
3
4
SCHEDULE A
United States Patent No. 5,948,558
for HIGH ENERGY DENSITY BORIDE BATTERIES
(Appln. Ser. No. 08/829,497)
Australian Appln. Ser. No. 64462/98
Canadian Appln. Ser. No. 2297167
United Kingdom Appln. Ser. No. 9922864.5
Israeli Appln. Ser. No. 132091
Japanese Appln. Ser. No. 10-541641
South Korean Appln. Ser. No. 00-0000000
Mexican Appln. Ser. No. 99 8865
Singapore Appln. Ser. No. 9904715-1
WIPO Appln. Ser. No. US98/04185
WIPO Appln. Ser. No. US99/22303
United States Appln. Ser. No. 09/162,428
for HIGH ENERGY DENSITY BORIDE BATTERIES
(CIP of Appln. Ser. No. 08/829,497)
United States Appln. Ser. No. 09/479,362
for SYSTEM FOR HYDROGEN GENERATION
United States Appln. Ser. No. 09/552,017
for ELECTROCHEMICAL CELL AND ASSEMBLY FOR SAME
(Xxxxx Xxxxx File No. A32147)
United States Appln. Ser. No. 09/559,024
for ENGINE CYCLE AND FUELS FOR SAME
(Xxxxx Xxxxx File No. A32672)
Proposed United States Appln.
for MEMBRANE ELECTRODE ASSEMBLY FOR USE
IN BOROHYDRIDE ELECTROCHEMICAL CELLS
