ASSIGNMENT
Exhibit 10.7
THIS ASSIGNMENT is made and entered into by and between Science Applications International Corporation, a Delaware corporation (“SAIC”), and VirnetX Inc., a Delaware corporation (“Transferee”).
RECITALS
WHEREAS, SAIC has the entire rights, title, and interest in and to the issued patents and pending patent applications listed in Exhibit A (the “Patents”);
WHEREAS, SAIC and Transferee entered into an agreement dated as of August 12, 2005 entitled, “Patent License and Assignment Agreement” (the “Original Agreement”);
WHEREAS, SAIC and Transferee entered into an amendment to the Original Agreement on or about November 2, 2006 entitled, “Amendment No. 1 to Patent License and Assignment Agreement” (the “Amendment”); and
WHEREAS, Transferee is desirous of acquiring, and SAIC is desirous of transferring to Transferee, all of SAIC’s rights, title, and interest in and to the Patents pursuant to the terms of the Original Agreement and the Amendment.
NOW, THEREFORE, for good and valuable consideration, the receipt for and sufficiency of which are hereby acknowledged, SAIC does hereby assign, convey, transfer and quitclaim to Transferee all of SAIC’s rights, title, and interest in and to the Patents, including, without limitation, the right to claim priority based on the Patents in subsequent patent applications filed anywhere throughout the world, including, without limitation, any and all international applications, national applications, national stage applications, regional applications, continuations, divisionals, substitutes, renewals, reissues, re-examinations, and extensions of the Patents, which have been or may be filed in the United States or any and all other countries and regions worldwide, including without limitation, any and all Letters Patents which have been or may be issued for the Patents in the United States or in any and all other countries and regions worldwide, including, without limitation, the right to enforce the Patents and such Letters Patents for past infringement, including, without limitation, the right to xxx for injunction, damages, and otherwise, and collect damages and fees for Transferee including, without limitation, the right to file in Transferee’s own name applications for patents in the United States and any and all other countries and regions worldwide for inventions claimed in the Patents and to secure in Transferee’s own name Letters Patent or Patents issued thereon.
AND SAIC authorizes and requests the Commissioner of Patents and Trademarks or any other proper officer or agency of any country to issue all said Letters Patents to Transferee.
IN WITNESS WHEREOF, the parties have hereunto set hand and executed this AGREEMENT as of December 21, 2006:
SCIENCE APPLICATIONS | VIRNETX INC |
By: /s/ Xxxxxx X. Xxxxxx | By: /s/ Xxxxxxx Xxxxxx |
Name: Xxxxxx X. Xxxxxx | Name: Xxxxxxx Xxxxxx |
Title: Sr. Vice President | Title: President & CEO |
EXHIBIT A
SAIC PATENT RIGHTS
Country | Patent/Application No. | Filing Date | Title | Docket Nos. |
JP | JP Application No. | 10/29/99 | An Agile Network Protocol For Secure Communications With Assured System Availability | SAIC 98-10-JAP |
CA | CA Application No. | 10/29/99 | An Agile Network Protocol For Secure Communications With Assured System Availability | SAIC 98-10-CAN |
AU | AU Application No. | 10/29/99 | An Agile Network Protocol For Secure Communications | SAIC 98-10-AUS |
EU | EPO Application No. | 10/29/99 | An Agile Network Protocol For Secure Communications | SAIC 98-10-EPO |
US | U.S. Application No. | 10/29/99 | An Agile Network Protocol For Secure Communications | SAIC 98-10-US |
US | U.S. Application No. | 3/31/03 | An Agile Network Protocol For Secure Communications | SAIC 98-10-DIV |
JP | JP Application No. | 10/29/99 | An Agile Network Protocol For Secure Communications | SAIC 98-10-JAP2 |
CA | CA Application No. | 10/29/99 | An Agile Network Protocol For Secure Communications | SAIC 98-10-CAN2 |
AU | AU Application No. | 10/29/99 | An Agile Network Protocol For Secure Communications | SAIC 98-10-AUS2 |
EU | EPO Application No. | 10/29/99 | An Agile Network Protocol For Secure Communications | SAIC 98-10-EPO-2 |
US | U.S. Patent No. | 2/15/00 | Agile Network Protocol for Secure Communications with Assured System Availability | SAIC 10003 |
EU | EPO Application No. | 2/15/00 | Improvements to an Agile Network Protocol for Secure | SAIC 10003-EPO |
JP | JP Application No. | 2/15/00 | Improvements to an Agile Network Protocol for Secure | SAIC 10003-JAP |
US | U.S. Patent No. | 2/26/02 | Agile Network Protocol For Secure Communications With Assured System Availability | SAIC 10003-DIV |
US | U.S. Patent No. | 3/31/03 | Improvements to an Agile Network Protocol For Secure | SAIC 10003-DIV-1 |
US | U.S. Patent No. | 2/26/02 | Preventing Packet Flooding of a Computer on a Computer Network | SAIC 10003-DIV-2 |
US | U.S. Application No. | 9/30/02 | Establishment of a Secure Communication Link Based on a Domain Name Service (DNS) Request | SAIC 10003-DIV-3 |
EU | EPO Application No. | 4/26/00 | Improvements to an Agile Network Protocol for Secure | SAIC 10006-EPO |
JP | JP Application No. | 4/26/00 | Improvements to an Agile Network Protocol for Secure | SAIC 10006-JAP |
US | U.S. Patent No. | 11/7/03 | Method for Establishing Secure Communications Link | SAIC 10006-Cont |
EU | EPO Application No. | 4/26/00 | Improvements to an Agile Network Protocol for Secure | SAIC 10007-EPO BW |
JP | JP Application No. | 4/26/00 | Improvements to an Agile Network Protocol for Secure | SAIC 10007-JAP |
US | U.S. Application No. | 11/18/03 | An Agile Network Protocol for Secure Communications | SAIC 10007-Cont |
EU | EPO Application No. | 3/16/05 | Improvements to an Agile Network Protocol for Secure | SAIC 10007-EPO-DIV |
US | U.S. Application No. | 6/6/01 | Third Party VPN Certification | SAIC 10101-US |
EU | EPO Application No. | 1/17/02 | Third Party VPN Certification | SAIC 10101-EPO |
US | U.S. Application No. | 11/7/03 | Method for Establishing Secure Communication Link | SAIC 10006-DIV(1) |
US | U.S. Patent No. | 11/7/03 | Method for Establishing Secure Communication Link | SAIC 10006-DIV (2) |
A-1
