May 8, 1998
Xxxxxxx X. Xxxxx or his designee
c/o Point Xxxxxx Corporation
731 Hospital Trust Building
Providence, Rhode Island 02903
Re: Xxxxxxx X. Xxxxx or his designee (the "Purchaser")/Access Solutions
International, Inc. (the "Company")
Dear Xx. Xxxxx:
United States Letters Patent Nos. 4,775,969 for "Optical Disk Storage
Format, Method and Apparatus for Emulating a Magnetic Tape Drive" and 5,034,914
for "Optical Disk Data Storage Method and Apparatus with Buffered Interface"
were duly and legally issued to the Company as assignee of the inventor, Xxxxxx
X. Xxxxxxxxx, on October 4, 1988 and July 23, 1991, respectively (the
"Patents"). The Company has authorized the sale to the Purchaser of a Thirty
Percent (30%) interest in the Patents (the "Patent Interests") for an aggregate
purchase price of One Hundred Thousand Dollars ($100,000). This letter shall
serve to confirm our agreements regarding the purchase of the Patent Interests.
Upon receipt of the purchase price, the Patent Interests shall be assigned
by the Company to the Purchaser by an Assignment of Patent Interests,
substantially in the form set forth in Exhibit A hereto.
To the best of the Company's knowledge, no one has asserted that the
Patents infringe, violate or otherwise are adverse to, the rights of any person
under or in respect of any Proprietary Rights. "Proprietary Rights" means any
one or more of the following: (a) letters patent and any applications therefore,
whether foreign or domestic and all rights associated therewith; (b) trademarks,
service marks, collective marks, and certificate marks, whether registered
(state and/or federal) or unregistered, and whether foreign or domestic and the
goodwill and all rights associated therewith; (c) copyrights, whether registered
or unregistered, and whether foreign or domestic, and all rights associated
therewith; (d) tradenames and business identifications; (e) trade secrets and
other legally protectible proprietary information, data or knowledge, (f)
methods, processes, inventions, technology and know-how; and (g) all other
similar proprietary rights and intellectual property. The Company owns or
controls all rights to the Patents. The Patents have been duly issued by the
United States Patents and Trademark Office and the Company has no notice of any
revocation, interference action or procedural defect involving the Patents.
The Company covenants and agrees to maintain in full force and effect the
Patents and to file such materials, prosecute, maintain and enforce the Patents
in such manner as is reasonably necessary to protect the Company's and the
Purchaser's proprietary interest therein.
The Company hereby indemnifies and holds the Purchaser and/or his designee
(collectively, the "Indemnified Parties") harmless from and against, and agrees
to defend promptly each of the Indemnified Parties for, any and all loses,
damages, costs, expenses, fines, penalties, settlement payments and expenses,
liabilities, obligations and claims of any kind, including, without limitation,
reasonable attorneys' fees and other legal and professional costs and expenses
(hereinafter referred to collectively as "Losses"), that any of the Indemnified
Parties may at any time suffer or incur, or become subject to, as a result of or
in connection with the following (the "Claims"): (i) any breach or inaccuracy of
any of the representations and warranties made by the Company in or pursuant to
this letter; (ii) any failure of the Company to carry out, perform, satisfy and
discharge any of its covenants, agreements, undertakings, liabilities or
obligations under this letter and (iii) the Patents.
The Purchaser hereby acknowledges and agrees that the Purchaser shall not
be entitled to any licensing or other fees or royalties on account of the
Company's use of the Patents unless the Company receives any such fees or
royalties from a third party, in which case such amounts shall be distributed on
a pro rata basis to the Purchaser and the Company based on their respective
ownership interests in the Patents.
ACCESS SOLUTIONS INTERNATIONAL, INC.
By: /s/ Xxxxxx X. Xxxxx
Title: President and CEO
Acknowledged:
/s/ Xxxxxxx X. Xxxxx
--------------------------------
Xxxxxxx X. Xxxxx
EXHIBIT A
FORM OF
ASSIGNMENT OF PATENT INTERESTS
THIS ASSIGNMENT OF PATENT INTERESTS is entered into as of this 8th day of
May, 1998 by and between ACCESS SOLUTIONS INTERNATIONAL, INC., a Delaware
corporation with a principal place of business at 000 Xxx Xxx Xxxx, Xxxxx
Xxxxxxxxx, Xxxxx Xxxxxx 00000 (hereinafter, "Assignor") and XXXXXXX X. XXXXX, an
individual resident of the State of Rhode Island having an address c/o Point
Xxxxxx Corporation, 731 Hospital Trust Building, Providence, Rhode Island 02903
(hereinafter, "Assignee").
United States Letters Patent Nos. 4,775,969 for "Optical Disk Storage
Format, Method and Apparatus for Emulating a Magnetic Tape Drive" and 5,034,914
for "Optical Disk Data Storage Method and Apparatus with Buffered Interface"
were duly and legally issued to the Company as assignee of the inventor, Xxxxxx
X. Xxxxxxxxx, on October 4, 1988 and July 23, 1991, respectively (the
"Patents");
WHEREAS, Assignor desires to assign a thirty percent (30%) interest in the
Patents and Assignee desires to acquire such interest in the Patents;
NOW, THEREFORE, for good and valuable consideration, the sufficiency of
which is hereby acknowledged, Assignor does hereby assign to Assignee, its
successors and assigns, an undivided thirty percent (30%) interest of Assignor's
right, title and interest in and to the Patents, together with all claims for
damages and profits by reason of any past infringement of the Patents, such
interest to be held for the full term of the Patents, including any reissues,
renewals, or extensions thereof as are or may be granted, and all goodwill
arising out of the Patents assigned pursuant hereto.
The Assignor, for itself and its successors and assigns, does hereby
authorize the Assignee, its successors and assigns, in the name of the Assignor
and as its attorney, to do any and all things necessary or advisable to reduce
the assigned interest in the Patents to the Assignee's possession. The Assignor,
for itself and its successors and assigns, does hereby covenant with the
Assignee to execute, acknowledge, deliver and perform, or to authorize the
Assignee, as the agent and attorney of the Assignor, to execute, acknowledge,
deliver or perform, any and all further instruments and acts which may be
reasonably required to transfer and assign to the Assignee the interest in the
Patents transferred or intended to be transferred hereby or to accomplish the
intent and purpose hereof.
ASSIGNOR
ACCESS SOLUTIONS INTERNATIONAL, INC.
By: _______________________________
Title: ____________________________
Dated: ____________________________
ASSIGNEE
____________________________________
XXXXXXX X. XXXXX
Dated: ____________________________
