IP ASSIGNMENT AGREEMENT
Exhibit
10.3
For
consideration received, and pursuant to Section 6.2(i) of the AGREEMENT
AND PLAN OF MERGER executed
on December 29, 2006 between Millennium Cell Inc. (“MCEL” or “Parent”), a
Delaware corporation having an xxxxxx xx Xxxxxxxxxx Xxx Xxxx, Xxxxxxxxx, Xxx
Xxxxxx 00000, M.C.E. Venture L.L.C., a Delaware limited liability company and
wholly-owned subsidiary of Parent (“Assignee”), and Gecko Energy Technologies,
Inc., a Delaware corporation (the “Target”), Xxxxxx X. Xxxxxx and Xxxxxx X.
Xxxxx (each, a “Selling Stockholder” and together, the “Selling Stockholders”)
(Target and Selling Stockholders collectively referred to herein as “Assignor”),
Assignor hereby sells, assigns and transfers to Assignee and its successors,
assigns and legal representatives, Assignor’s entire right, title and interest
in and to the following intellectual property:
(1)
Gecko
Know-How, Gecko Patent Rights, Integration Field Rights, Project Technology
or
Project Technology Rights as defined in the JOINT
DEVELOPMENT AGREEMENT
between
Parent and Target dated February 15, 2006;
(2)
Consultant Inventions and Jointly Owned Inventions as defined in the
CONSULTING
AGREEMENT dated
December 15, 2005 between MCEL and Xxxxxx Xxxxx, as amended by Amendment No.
1
dated as of February 15, 2006;
(3)
Consultant Inventions and Jointly Owned Inventions as defined in the
CONSULTING
AGREEMENT
dated
December 15, 2005 between MCEL and Xxxxxx Xxxxxx, as amended by Amendment No.
1
dated as of February 15, 2006;
(4)
any
and all trademarks, trademark applications, service marks, trade names,
copyrights and licenses related to (1), (2), and (3) above (collectively
referred to herein as “Assignor Intellectual Property”), and in and to any and
all divisions, continuations and continuations-in-part of said Assignor
Intellectual Property, and any and all Letters Patent in the United States
and
all foreign countries which may be granted therefore and thereon, and reissues,
reexaminations and extensions of said Letters Patent, and all rights under
the
International Convention for the Protection of Industrial Property including
all
rights of priority, the same to be held and enjoyed by Assignor, for its own
use
and benefit and the use and benefit of its successors, legal representatives
and
assigns, to the full end of the term or
terms
for
which Letters Patent may be granted and/or extended, as fully and entirely
as
the same would have been held and enjoyed by Assignor, had this sale and
assignment not been made; and
(5)
Assignor’s entire right, title, and interest in the LICENSE
AGREEMENT
between
Motorola, Inc. and Gecko Energy Technologies, Inc. dated January 13, 2005
(“Motorola Agreement”) pursuant to paragraph 16 of the Motorola Agreement.
AND
for the
same consideration, Assignor represents and warrants to Assignee, its
successors, legal representatives and assigns, that, at the time of execution
and delivery of these presents, except for any rights, titles and/or interests
that have arisen to Assignee under law or that have already been transferred
to
Assignee, Assignor is the sole and lawful owners of the entire right, title
and
interest in and to the Assignor’s Intellectual Property and Assignor’s interest
in the Motorola Agreement, and that the same are unencumbered and that Assignor
has good and full right and lawful authority to sell and convey the same in
the
manner herein set forth.
AND
for the
same consideration, Assignor hereby covenants and agrees to and with Assignee,
its successors, legal representatives and assigns, that Assignor will sign
all
papers and documents, take all lawful oaths and do all acts necessary or
required to be done for the transfer of Assignor’s interest in the Motorola
Agreement and the procurement, maintenance, enforcement and defense of any
Letters Patent and applications for Letters Patent included in Assignor’s
Intellectual Property, without charge to Assignee, its successors, legal
representatives and assigns, whenever counsel of Assignee, or counsel of its
successors, legal representatives and assigns, shall advise; that any proceeding
in connection with said inventions, or said Patent application for Letters
Patent, or any proceeding in connection with any Letters Patent or applications
for Letters Patent for said inventions in any country, including but not limited
to interference proceedings, is lawful and desirable; or, that any division,
continuation or continuation-in-part of any application for Letters Patent,
or
any reissue, reexamination or extension of any Letters Patent, to be obtained
thereon, is lawful and desirable.
AND
Assignor
hereby requests the Commissioner of Patent and Trademarks to issue said Letters
Patent of the United States to Assignee, as Assignee of said inventions and
the
Letters
Patent to be issued thereon included in the Assignor’s Intellectual Property,
for the sole use and benefit of Assignee, its successors, legal representatives
and assigns.
/s/
Xxxxxx X. Xxxxxx
Gecko
Energy Technologies, Inc.
Date:
December
29, 0000
Xxxxxx
Xxxxxx xx Xxxxxxx )
State
of
New
Jersey)
ss.:
County
of
Monmouth)
On
this
29th
day of
December,
2006,
before
me personally
came Xxxxxx
X. Xxxxxx,
to me
known to be the individual
described
in and who executed the foregoing instrument, and acknowledged execution of
the
same.
/s/
Alelli Xxxxxx
Notary
Public
/s/
Xxxxxx X. Xxxxxx
Xxxxxx
X.
Xxxxxx
United
States of America )
State
of
New
Jersey)
ss.:
County
of
Monmouth)
On
this
29th
day of
December,
2006,
before
me personally
came Xxxxxx
X. Xxxxxx,
to me
known to be the individual
described
in and who executed the foregoing instrument, and acknowledged execution of
the
same.
/s/
Alelli Xxxxxx
Notary
Public
/s/
Xxxxxx X. Xxxxx
Xxxxxx
X.
Xxxxx
United
States of America )
State
of
Wisconsin)
ss.:
County
of
Bayfield)
On
this
29th
day of
December,
2006,
before
me personally
came Xxxxxx
X. Xxxxx,
to me
known to be the individual
described
in and who executed the foregoing instrument, and acknowledged execution of
the
same.
/s/
Xxxxx Xxxxxx
Notary
Public
