PATENT ASSIGNMENT AGREEMENT
THIS PATENT ASSIGNMENT AGREEMENT ("Agreement") is entered as of the 1st day of
May 2006 ("EFFECTIVE DATE") by and between WORLD WASTE TECHNOLOGIES, with
offices at 00000 Xxxxxxx Xxxxx Xxxxx Xxxxx, Xxxxx 000, Xxx Xxxxx, XX 00000
("WWT"), and The University of Alabama in Huntsville., with offices at 000
Xxxxxxxx Xxxxx XX, Xxxxxxxxxx, XX 00000 ("UAH").
WHEREAS, UAH owns United States Patent No. 6,306,248 (the "PATENT") and desires
to assign all right, title and interest in and to the Patent to WWT; and
WHEREAS, WWT desires to accept assignment of the Patent in accordance with this
terms and conditions of this Agreement;
NOW THEREFORE, in consideration of the premises and mutual covenants herein
contained, WWT and UAH agree as follows:
1. ASSIGNMENT.
1.1 UAH hereby assigns to WWT exclusively throughout the world all right,
title and interest (whether or not now existing) in and to: (a) the Patent
and all associated patent rights, domestic and foreign, (b) all related
domestic and foreign patent applications (and any resulting patents),
patent disclosures, reissuances, continuations, continuations-in-part,
divisionals, revisions, extensions, and reexaminations thereof, (c) all
accompanying worldwide intellectual and industrial property rights, and
(d) all right, title and interest UAH has in and to all causes of action
and enforcement rights, if any, whether currently pending, filed, or
otherwise, for the Patent, including without limitation, all rights to
pursue damages, injunctive relief and other remedies for past, current and
future infringement of the Patent (subsection (a), (b) (c) and (d)
collectively the "INTELLECTUAL PROPERTY") (the "Assignment"). The parties
hereto intend that the Assignment shall be subject to all existing
licenses to the Intellectual Property properly reviewed and approved by
UAH as of the date hereof but only if listed on Schedule 4 hereto and that
WWT will assume those licensed specifically set forth on Schedule 4. UAH
hereby represents and warrants that UAH has provided WWT with all files,
agreements and other writings relating to the existing licenses listed on
Schedule 4 attached hereto. UAH also hereby assigns to WWT all current
claims for payment from Bio-Products International ("BPI") to UAH. UAH
also assigns to WWT all information, trade secrets, know-how, technology
and accompanying intellectual property rights, developed by UAH, its
employees, contractors and licensees, related to, or covered by, the
Intellectual Property. Other than as expressly set forth in this
Agreement, UAH retains no rights whatsoever in the Intellectual Property.
1.2 In the event WWT (a) becomes the subject of any voluntary petition in
bankruptcy or any voluntary proceeding relating to insolvency,
receivership, liquidation, or composition for the benefit of creditors; or
(b) becomes the subject of an involuntary petition in bankruptcy or any
involuntary proceeding relating to insolvency, receivership, liquidation,
or composition for the benefit of creditors, if such petition or
proceeding is not dismissed within sixty (60) days of filing, whatever
Intellectual Property owned by WWT at the time of such event shall
automatically be assigned to UAH, subject to any licenses granted therein
by WWT.
2. PAYMENTS.
2.1 License. In consideration of the Assignment conveyed in Section 1.1 above,
WWT shall (i) pay to UAH a one-time assignment fee of $100,000 payable in
two installments; the first installment of $20,000 shall be payable on the
Effective Date, the second installment for the balance of funds shall be
paid on or before December 31, 2007 (the "Cash Consideration"), and (ii)
within fifteen days after the date this assignment is executed by UAH,
issue to UAH, or its designee, 167,000 shares of WWT's common stock (the
"Equity Consideration"), in accordance with this Section 2 ("ASSIGNMENT
FEE").
2.2 Claims. To the extent any collections are made by WWT on existing payments
due to UAH from BPI described in Section 1.1 above, WWT shall notify UAH
of the collection and immediately pay to UAH 50% of the amount of all such
payments after deducting documented legal fees or collection costs. Any
such legal fees, collection costs or other deductions shall be
specifically itemized by WWT for review and approval by UAH.
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2.3 Payment Terms. WWT shall pay the Cash Consideration to UAH, or its
designee, in two installments; first for $20,000 on the Effective Date,
and second for $80,000 on or before December 31, 2007 at the address
indicated below. The Equity Consideration issuable to UAH, or its
designee, shall be 167,000 common shares. In addition to all other
remedies available to UAH at law or in equity, subject to the limits
imposed by any applicable usury law, interest shall accrue on payments
made more than ten (10) days after they are due at the rate of eighteen
percent (18%) per annum, compounded daily, from the due date until paid.
3. FURTHER ASSURANCES. UAH agrees to promptly assist WWT in every proper way
to evidence, record and perfect the Section 1.1 assignment and to promptly
apply for and obtain recordation of and from time to time secure, enforce,
maintain, and defend the assigned rights. If WWT is unable for any reason
whatsoever to secure UAH's signature to any document requested by WWT
under this Section 3, UAH hereby irrevocably designates and appoints WWT
and its duly authorized officers and agents, as UAH's agents and
attorneys-in-fact, coupled with an interest and with full power of
substitution, to act for and on UAH's behalf and instead of UAH, to
execute and file any such document or documents and to do all other
lawfully permitted acts to further the purposes of the foregoing with the
same legal force and effect as if executed by UAH.
4. NON-AGGRESSION. UAH shall not at any time, directly or indirectly, oppose
the grant of, nor dispute the validity or enforceability of, nor cooperate
in any way in any suit, claim, counterclaim or defense against any patent
or claim included in the Intellectual Property.
5. WARRANTY.
5.1 UAH represents and warrants to WWT that UAH (a) is the sole owner (other
than WWT) of all rights, title and interest in the Intellectual Property,
(b) except as listed on Schedule 5 as attached hereto, has not assigned,
transferred, licensed, pledged or otherwise encumbered any of the
Intellectual Property or agreed to do so, (c) has full power and authority
to enter into this Agreement and to make the assignment as provided in
Section 1.1, (d) is not aware of any violation, infringement or
misappropriation of any third party's rights (or any claim thereof) by the
Intellectual Property, and (e) is not aware of any questions or challenges
with respect to the patentability or validity of any claims of any
existing patents or patent applications relating to the Intellectual
Property.
5.2 EXCEPT AS PROVIDED IN PARAGRAPH 5.1, (i) UAH DOES NOT REPRESENT OR WARRANT
THE PATENTABILITY OF ANY CLAIMED INVENTION IN, OR THE VALIDITY OF ANY
PATENT; (ii) UAH DOES NOT REPRESENT OR WARRANT THAT THE MANUFACTURE, USE,
SALE, OFFERING FOR SALE, IMPORTATION, EXPORTATION OR OTHER DISTRIBUTION OF
ANY PRODUCT OR METHOD DISCLOSED AND CLAIMED IN ANY PATENT BY UAH, ANY
LICENSEE OR ANY SUBLICENSEE OR ANYONE ELSE SHALL NOT CONSTITUTE AN
INFRINGEMENT OF THE INTELLECTUAL PROPERTY RIGHTS OF OTHERS; AND (iii) UAH
DOES NOT MAKE ANY REPRESENTATIONS, OR EXTEND ANY WARRANTIES OF ANY KIND,
EITHER EXPRESS OR IMPLIED, WITH RESPECT TO ANY PATENT OR ANY PRODUCT,
INCLUDING BUT NOT LIMITED TO THE IMPLIED WARRANTIES OF MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE.
6. INDEMNIFICATION. WWT shall defend (with legal counsel selected and
retained by WWT), indemnify and hold harmless the Board of Trustees of the
University of Alabama, UAH, its directors, officers, employees, agents and
their respective successors, assigns and heirs ("INDEMNITEES") against any
and all claims, suits and legal actions by any third party (including
without limitation any current licensees listed on Schedule 5) ("CLAIMS"),
based upon any theory of liability (including, without limitation,
warranty, strict liability or tort), arising out of the exercise of any
rights under this Agreement to the Patent by WWT or any of its affiliates,
successors or assigns, or by any sublicensee of WWT, all subject to the
following:
6.1 Indemnitees shall give WWT written notice of the Claim which any
Indemnitee desires WWT to defend, indemnify and hold harmless under this
Agreement promptly after any Indemnitee receive notice thereof along with
sufficient information for WWT to identify the Claim. WWT shall have sole
control of the defense and/or settlement of all Claims, and Indemnitees
shall not settle or compromise any such Claim without the prior written
consent of WWT. Indemnitees shall cooperate and provide such assistance
(including, without limitation, testimony and access to documentation
within the possession or control of any Indemnitee) as WWT may reasonably
request in connection with WWT's defense, settlement and satisfaction of
the Claim.
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6.2 As part of WWT's obligation to defend, indemnify and hold harmless
Indemnitees, WWT shall pay any and all (i) costs and expenses reasonably
incurred by WWT in connection with the defense, settlement or satisfaction
of any Claim (including, without limitation, any amounts agreed to by WWT
in settlement of the Claim) and (ii) amounts required by any judgment or
order of any court to be paid by Indemnitees as damages or other relief
based upon the Claim; provided that Indemnitees have complied with their
obligations under (a) above with respect to the Claim.
6.3 WWT shall not be obligated under this Section 6 with respect to any Claim
or related costs and expenses, if and to the extent the Claim arises out
of or is related to any breach of this Agreement by UAH (including,
without limitation, any breach of UAH's representations and warranties set
forth in Section 5).
6.4 Except as specifically provided in 6.1 and 6.2 above, WWT shall not have
any obligation to pay or reimburse any costs or expenses (including,
without limitation, any fees or expenses of any legal counsel retained by
any Indemnitee), unless otherwise agreed in writing by WWT.
6.5 Notwithstanding anything to the contrary in this Agreement or otherwise,
WWT's maximum cumulative liability for all Claims and all causes of action
for which WWT would be required to indemnify under this Section 6 shall
not exceed $1,000,000.
7. MISCELLANEOUS. WWT agrees to feature UAH as its primary technology partner
in WWT's collateral materials, website and other communications after
review and approval by UAH. This Agreement is not assignable or
transferable, by operation of law, merger, acquisition, reorganization or
otherwise, by UAH without the prior written consent of WWT; any attempt to
do so shall be void. Any notice, report, approval or consent required or
permitted hereunder shall be in writing and will be deemed to have been
duly given if delivered personally, mailed by first-class, registered or
certified U.S. mail, postage prepaid, or by traceable express courier, to
the respective addresses of the parties as set forth above (or such other
address as a party may designate by ten (10) days notice). This Agreement
shall not be construed against the party preparing it, but shall be
construed as if all parties jointly prepared this Agreement and any
uncertainty or ambiguity shall not be interpreted against any party. The
language of all parts of this Agreement shall in all cases be construed
simply, according to fair meaning, and not strictly for or against any of
the parties hereto. The paragraph headings in this Agreement are for the
convenience of the parties only and shall not affect the construction or
interpretation of this Agreement. No failure to exercise, and no delay in
exercising, on the part of either party, any privilege, any power or any
rights hereunder will operate as a waiver thereof, nor will any single or
partial exercise of any right or power hereunder preclude further exercise
of any other right hereunder. If any provision of this Agreement shall be
adjudged by any court of competent jurisdiction to be unenforceable or
invalid, that provision shall be limited or eliminated to the minimum
extent necessary so that this Agreement shall otherwise remain in full
force and effect and enforceable. This Agreement shall be deemed to have
been made in, and shall be construed pursuant to the laws of the State of
Alabama and the United States without regard to conflicts of laws
provisions thereof. The prevailing party in any action to enforce this
Agreement shall be entitled to recover costs and expenses including,
without limitation, attorneys' fees. Any waivers or amendments shall be
effective only if made in writing and signed by a representative of the
respective parties authorized to bind the parties. Both parties agree that
this Agreement is the complete and exclusive statement of the mutual
understanding of the parties and supersedes and cancels all previous
written and oral agreements and communications relating to the subject
matter of this Agreement.
IN WITNESS WHEREOF, the parties have executed this Agreement on the day and year
first indicated above.
UNIVERSITY OF ALABAMA IN HUNTSVILLE WORLD WASTE TECHNOLOGIES, INC.
By: /s/ Xxxxxxxx X. Xxxxxxxxx By: /s/ Xxxx Xxxxxxxx
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Print Name: Xxxxxxxx X. Xxxxxxxxx, Ph.D. Print Name: Xxxx Xxxxxxxx
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Title: Vice President for Research Title: Chief Executive Officer
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PAGE 3 OF 4 CONFIDENTIAL
SCHEDULE 5
EXISTING LICENSES
Amended and Restated License Agreement with Bio-Products International, Inc.,
dated August 13, 2004 (copy attached.
All other agreements are Sublicense Agreements between Bio-Products
International, Inc. and various companies.
PAGE 4 OF 4 CONFIDENTIAL
