Exhibit 10.4
ASSIGNMENT OF INTELLECTUAL PROPERTY
This Assignment of Intellectual Property (the "Assignment") is entered
into effective as of December 18, 1997, by and among Image Technology
Laboratories, Inc., a Delaware corporation with a principal place of business at
000 Xxxxxxx Xxxxx, Xxxxxxxx, XX 00000 (the "Company"), and Xxxxx Xxxx, M.D., an
individual residing at 0000 Xxxxxxxxx Xxxx, Xxxxxxxxxxx, XX 00000, Xxxxxxx X.
Xxxxxx, M.D.an individual residing at 000 Xxxxxx Xxxxx Xxxx, Xxxxxxxxxxxxx, XX
00000, and Xxxxx X. Xxxxxxx, an individual residing at 00 Xxxxxx Xxxxxx,
Xxxxxxxxxx, XX 00000 (each individually an "Assignor" and collectively the
"Assignors").
RECITALS
A. The Company was incorporated by the Assignors for the purpose of
commercializing a proprietary version of software used for creating, storing,
retrieving and transmitting digital diagnostic images known in the industry as a
Picture Archiving and Communications System ("PACS").
B. Prior to incorporation of the Company, the Assignors individually
and collectively completed the research and design of a proprietary PACS product
and completed an estimated one-third of the programming necessary to complete an
operating beta version of the product running under the Windows NT operating
system (the "Intellectual Property"). The [PACS product] created by the
Assignors is represented by various system schemata, technology specifications,
screen designs, program flow charts, proprietary algorithms, programming code
written in the C++ programming language, and various other documentation and
embodiments.
C. For good and valuable consideration, including the Shares
[authorized for issuance to the Assignors by the Board of Directors in
conjunction with their founding of the Company and their execution of this
Assignment], the receipt and sufficiency of which is hereby acknowledged, the
Assignors have agreed to assign all the Intellectual Property to the Company on
the terms set forth herein.
AGREEMENT
1. Assignment. Each Assignor hereby assigns to the Company as its
exclusive property all of his individual or joint right, title and interest
throughout the world in and to the Intellectual Property and to any ideas,
inventions, original works of authorship, developments, improvements, trade
secrets, confidential knowledge, know-how, data, information, concepts,
processes, tangible materials, designs, formulas, methods, samples, media,
developmental or experimental work, improvements, research, plans for research,
copyrights, patentable inventions or other proprietary information of the
Assignors relating to or derived from the Intellectual Property.
2. Representations and Warranties. Each Assignor hereby jointly and
severally covenants with and represents and warrants to the Company that:
(a) the Assignor has not knowingly conveyed to others any right in
or any license to use the Intellectual Property or any right or license to make,
use or sell anything embodying or utilizing any of the Intellectual Property and
that he has good right to assign the same to the Company without encumbrance;
(b) the Assignor knows of no communication of any aspect of the
Intellectual Property to any person prior to the date hereof, other than to the
other parties hereto, which has disclosed or resulted in the disclosure of any
element of the Intellectual Property that would otherwise be entitled to
protection as a proprietary trade secret, copyright, patent or other form of
intellectual property entitled to protection under the laws of the United
States;
(c) the Assignor has executed an employment agreement with the
Company pursuant to which the Assignor is obligated to preserve the
confidentiality of the Company's trade secrets and proprietary technology and
the Assignor understands and agrees that such obligation shall include and apply
to the Intellectual Property.
(d) the Assignor knows of no person other than the other parties
hereto who has any right, title or interest in or to the Intellectual Property
except to the extent that any isolated element of the Intellectual Property
might be considered to be in the public domain and not proprietary property of
the Company.
(e) the Assignor has delivered to the Company all representations
and embodiments of the Intellectual Property existing as of the date hereof and
agrees that at the Company's request, for a reasonable period of time hereafter,
he will further communicate or document the Intellectual Property in writing or
other format acceptable to the Company.
3. Continuing Cooperation. Each Assignor agrees for a period of ten
years from the date hereof to cooperate with all reasonable efforts by the
Company, its successors and assigns (at the expense of the Company, its
successors or assigns) to secure, protect or document the Intellectual Property
and the assignment of the Intellectual Property to the Company.
4. Indemnification. Each Assignor agrees to indemnify and hold the
Company harmless from all liabilities or damages (including attorneys fees)
arising out of the breach of this Assignment by the Assignor or resulting from
the negligence of the Assignor, by act or omission, in performing his
obligations hereunder. Upon written request from the Company, an Assignor shall
assume the full and diligent defense of such claim at his own expense. The
Company's right to indemnification under this provision shall be conditioned as
to each claim upon its giving prompt written notice of such claim to the
Assignor and providing reasonable cooperation and assistance to the Assignor in
the investigation and defense of such claim. Upon request, the Assignor shall
allow the Company to carry out the management and defense of the claim(s) or
suit(s). The Assignor may not settle or compromise any claim(s) or suit(s)
without the prior written approval of the Company.
5. Arbitration of Disputes. Any controversy or dispute arising out of
or in connection with this Assignment, or a breach thereof, shall be settled by
arbitration in accordance with the commercial arbitration rules then in effect
of the American Arbitration Association. The costs of arbitration shall be
divided equally between the parties except that the arbitrator(s) shall have the
authority to allocate the costs according to equitable principles upon request.
The arbitrator(s) shall have the express authority to award equitable remedies
upon the request of any party.
6. Entire Understanding. This Assignment constitutes the entire
understanding between the parties with respect to the subject matter hereof and
supersedes all prior or contemporaneous oral or written communications between
the parties relating thereto. There have been no prior agreements of any kind
whatsoever as a condition precedent or inducement to the execution of this
Assignment. If any part of any term or provision of this Assignment shall be
held or deemed to be invalid, inoperative or unenforceable to any extent by a
court of competent jurisdiction, it is the parties' intention that such
circumstance shall not affect any other term of provision of this Assignment,
the application of such term or provision in any other circumstance, or the
validity or enforceability of this Assignment which shall continue in effect.
7. Counterparts; Amendments. This Assignment may be executed in
counterparts each effective as an original. This Assignment may not be amended
except by a written instrument signed by all the parties hereto. No waiver,
modification, consent or discharge shall be effective unless in made in writing
by the Company and each Assignor to whom the waiver, modification, consent or
discharge relates.
8. Assignment; Binding Obligations. The Company may transfer this
Assignment to any successor or assign and the terms hereof shall be binding upon
the heirs, executors, administrators and legal representatives of each Assignor.
9. Paragraph Headings. The paragraph headings used in this Assignment
are included solely for convenience and shall not affect, or be used in
connection with, the interpretation hereof.
10. Governing Law. This Assignment shall be governed by and construed
and enforced in accordance with the law (other than the law governing conflict
of law questions) of the State of Delaware.
IN WITNESS WHEREOF, the parties have executed this Assignment as of the
date first above written.
IMAGE TECHNOLOGY LABORATORIES, INC.
By: /s/ Xxxxx Xxxx
Xxxxx Xxxx, M.D., President
ASSIGNORS:
/s/ Xxxxx Xxxx
Xxxxx Xxxx, M.D., individually
/s/ Xxxxxxx X. Xxxxxx
Xxxxxxx X. Xxxxxx, M.D., individually
/s/ Xxxxx X. Xxxxxxx
Xxxxx X. Xxxxxxx, individually
