PATENT ASSIGNMENT AND TRANSFER AGREEMENT
THIS AGREEMENT is made between XXXXX X.X. EMPREENDIMENTOS E PARTICIPACOES, a
corporation duly organized under the laws of the Federal Republic of Brazil,
whose address is Xxxxxxx Xxxxxxxxxxx Xxxxxx, 0000, Xxxxxxxx Xxxxxxxxxx,
Xxxxxxxxxx, State of Minas Gerais, enrolled before the Ministry of Economy's
Corporate Taxpayer's Registry (C.N.P.J.) under n(0) 17.835.026/0001-52, herein
represented by its dully authorized representative (hereinafter called "ALGAR"),
and XTAL FIBRAS OPTICAS S.A., a corporation duly organized and validly existing
under the laws of the Federal Republic of Brazil, having its principal office at
Xxxxxxx Xxxxxxxxxxx Xxxxxx, 0000, Xxxxxxxx Xxxxxxxxxx, Xxxxxxxxxx, State of
Minas Gerais, Brazil, enrolled with the Ministry of Economy's Corporate
Taxpayers' Registry (C.N.P.J.) under n(0) 71.340.707/0001-95 (hereinafter called
"XTAL").
RECITALS
WHEREAS, ALGAR has applied for the registration of patent n(0) PI9500990 before
the Brazilian Patent and Trademark Office ("INPI - Instituto Nacional da
Propriedade Industrial"), proof of application is attached as Exhibit A
(hereinafter referred to as "Patent Application");
WHEREAS, ALGAR intends to assign and transfer to XTAL the Patent Application and
XTAL wishes to have the Patent Application transferred and assigned to it;
NOW, THEREFORE, the parties have agreed to enter into this Patent Assignment and
Transfer Agreement (hereinafter referred to as "Agreement"), which will be
governed by the following clauses and conditions which are mutually agreed and
accepted:
PURPOSE
1.1 Subject to the terms and conditions set forth in this Agreement, ALGAR
hereby, irrevocably, assigns and transfers to XTAL the Patent Application
described under Exhibit A, in accordance with applicable law and
regulations and especially with the applicable provisions of Law No. 9279
of May 14, 1996.
1.2 XTAL is, as of this date, authorized to request the approval of the INPI
in connection with the assignment and transfer of the rights to the Patent
Application, as set forth herein. All the expenses related to the
assignment and transfer of the Patent Application shall be of XTAL's
responsibility.
2. RESPONSABILITIES OF ALGAR
2.1 ALGAR hereby agrees to file any action that may be necessary at any time
to secure the Patent Application and recognizes its responsibility for the
Patent Application until the effective transfer of the Patent Application
to XTAL.
2.2 ALGAR hereby represents and warrants to XTAL that it has required the
examination of the Patent Application in the 36 (thirty-six) months period
determined by Brazilian Law n(0) 9.279 of May 14, 1996.
2.3 ALGAR hereby represents and warrants that it is the sole owner of the
entire right, title, and interest in and to the Patent Application in
Brazil (the "Territory") and that the assignment and transfer of the
Patent Application is duly authorized by ALGAR's By-Laws, and such
assignment and transfer shall not violate any agreements, contracts,
arrangements, administrative or judicial decisions to which ALGAR is a
party and there are no rights granted to third parties by ALGAR for the
acquisition of such Patent Application or any licensees with effective
license agreements, whether or not providing rights of renewal, provided
that the obligations of ALGAR herein are valid, legal, binding and
enforceable against ALGAR on the terms agreed upon herein.
2.4 ALGAR hereby represents and warrants that the Patent Application does not
knowingly infringe any third party intellectual property rights in the
Territory and that no entity in the Territory has right to restrict the
sale of the Product.
2.5 ALGAR hereby represents and warrants that it has not applied and will not
apply for registration of the Patent Application in any other country
apart from Brazil.
3. RESPONSABILITIES OF XTAL
3.1 XTAL hereby represents and warrants that the acquisition of the Patent
Application was duly authorized by its Articles of Association and that
such assignment and transfer shall not violate any agreements, contracts,
arrangements, administrative or judicial decisions to which XTAL is a
party and that the obligations of XTAL hereunder are valid, legal, binding
and enforceable in accordance with the terms agreed upon herein.
4. COMPENSATION
4.1 The present assignment is royalty free and no payments of any kind are due
in accordance with this Agreement.
5. CONFIDENTIALITY
5.1 The parties hereto undertake to maintain the secrecy and confidentiality
of all information provided and/or received from the other party hereto
delivered under, or known pursuant to this Agreement. Neither ALGAR nor
XTAL shall publish, in whole or in part, any information related to this
Agreement without the prior written consent of the other party, except as
required by applicable law, in which case the disclosing party shall send
a prior notice to the other party in this regard.
6. NO THIRD PARTY BENEFICIARIES
6.1. Nothing in this Agreement will be construed as giving any person, firm,
corporation or other entity, other than the parties hereto, their
successors and permitted assigns, any right, remedy or claim under or in
respect of this Agreement or any provision hereof.
7. GENERAL PROVISIONS
7.1. This Agreement constitutes the entire and only agreement between the
parties for the Patent Application and all other prior negotiations,
representations, agreements, and understandings are superseded hereby. No
agreements altering or supplementing the terms hereof may be made except
by means of a written document signed by the duly authorized
representatives of the parties.
7.2. All notices and other communications under this Agreement shall be in
writing and may be given by delivering the same by hand at, or by sending
the same by an overnight courier that maintains verification of delivery,
or by facsimile, with confirmed answer back, to the relevant address set
out below or such other address as either Party may notify to the other
from time to time. Any such notice given as set forth above shall be
deemed to have been given or received at the time of delivery (if
delivered by hand) and upon verified receipt (if sent by post, facsimile
or overnight courier).
If to ALGAR:
Xxxxx X.X. - Empreendimentos e Participacoes
Attn.: Xxxxxx Xxxxxxxx
Address: Xxxxxxx Xxxxxxxxxxx Xxxxxx, 0000
Distrito Industrial
Uberlandia - MG
Brazil
Facsimile No. (00) 000-0000
If to XTAL:
Xtal Fibras Opticas S.A.
Attn.: Antonio Xxxxxx Xxxxxx
Address: Xxxxxxx Xxxxxxxxxxx Xxxxxx, 0000
Distrito Industrial
Uberlandia - MG
Brazil
Facsimile No. (019) 289-5211
or such other address as may be given from time to time under the terms of
this notice provision.
7.3 This agreement shall be construed in accordance with the laws of the
Federate Republic of Brazil. The courts of the City of Sao Paulo, State of
Sao Paulo, to the personal jurisdiction of which each party hereto
voluntarily submits, shall have exclusive jurisdiction over any dispute
arising out of the construction, interpretation or enforcement of this
Agreement.
7.4 Failure of the parties to enforce a right under this Agreement shall not
act as a waiver of that right or the ability to later assert that right
relative to the particular situation involved.
7.5 If any provision of this Agreement shall be found by a court to be void,
invalid or unenforceable, the same shall be reformed to comply with
applicable law or stricken if not so conformable, so as not to affect the
validity or enforceability of this Agreement.
7.6 It is the intention of the parties to carry out the provisions of this
Agreement in accordance with principles of good faith and fair dealing and
to respect and observe the spirit as well as the letter of this Agreement.
The parties shall exercise their best efforts to settle between themselves
in amicable way any dispute which may arise out of or in connection with
this Agreement.
7.7 The parties acknowledge that each has read this Agreement, understands it,
and agrees to be bound by its terms. This Agreement may be amended only by
a subsequent writing that specifically refers to this Agreement and that
is signed by both parties, and no other act, document, usage, or custom
shall be deemed to amend this Agreement.
7.8 This Agreement shall be binding on or inure to the benefit of the
respective successors and permitted assigns of the parties.
7.9 Each of the respective persons executing this Agreement hereby covenants
and warrants that such person has full legal power, right and authority to
bind the entity on whose behalf such person is signing to each and every
term and provision herein.
7.10 The following Schedules are part of this Agreement: Exhibit A: Patent
Application
IN WITNESS WHEREOF, ALGAR and XTAL have caused this Agreement to be executed in
quadruplicate.
XXXXX X.X. - EMPREENDIMENTOS E PARTICIPACOES
---------------------------------------------
By: Xxxxxx Xxxxxxxx Xxxx
Title: Attorney-in-fact
---------------------------------------------
By: Xxxx Xxxxx Xxxx Costa
Title: Chief Executive Officer
XTAL FIBRAS OPTICAS S.A.
---------------------------------
By: Xxxx Xxxxx Xxxx Costa
Title: President Director
---------------------------------
By: Antonio Xxxxxx Xxxxxx
Title: Managing Director
WITNESS
1. ___________________________________
Name: Giseli Xxxxxxxxx Xxxxx Xxxxxx
XX: 16.978.964
CPF: 000.000.000-00
2. ___________________________________
Name: Xxxxxx Xxxxxxx Mari
RG: 8.690.203
CPF: 000.000.000-00
EXHIBIT A
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PATENT APPLICATION
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o PI9500990
