Exhibit 10.1
TECHNOLOGY ASSIGNMENT AGREEMENT
BETWEEN KADOMA TRADING, LIMITED AND XXXXXXX APPLIED
TECHNOLOGIES, INC.
This Technology Assignment Agreement ("Agreement") is made effective as of
the last date set forth below ("Effective Date"), by and between KADOMA TRADING,
LIMITED, a Cyprus company, having a principal office located at 00 Xxxx 00xx
Xxxxxx, Xxx Xxxx, Xxx Xxxx 00000 (the "Company"), on the one hand, and XXXXXXX
APPLIED TECHNOLOGIES, INC., a corporation of Delaware having a principal office
located at 00 Xxxx 00xx Xxxxxx, Xxx Xxxx, Xxx Xxxx 00000 (the "Assignor"), on
the other hand.
W I T N E S S E T H:
WHEREAS, the Assignor owns certain rights, title, and interest in, to and
under certain methods and improvements relating to certain ceramic-like
materials, polymeric materials, and processes for preparing such materials (the
"Invention"), which are disclosed and claimed in certain Patents and Patent
Applications as defined herein:
WHEREAS, the Assignor owns certain rights, title and interest in certain
Intellectual Property, as defined herein, including certain Patents and Patent
Applications; and
WHEREAS, the Assignor desires to irrevocably sell and transfer to the
Company, and the Company desires to receive, all right, title and interest in,
to and under the Invention, Intellectual Property, Patents and Patent
Applications, including any Patents that may issue therefrom worldwide upon the
terms and conditions set forth herein.
NOW, THEREFORE, in consideration of the foregoing and the mutual promises
herein contained, and intending to be legally bound hereby, the Company and the
Assignor hereby agree as follows:
ARTICLE 1
DEFINITIONS
SECTION 1.01. Certain Defined Terms. As used in this Agreement, the
following terms shall have the following meanings:
"Actions" means any claim, action, lawsuit, arbitration, inquiry,
proceeding or investigation by or before any Governmental Authority.
"Agreement" or "this Agreement" means this Technology Assignment
Agreement, dated as of the Effective Date, among the Company and the Assignor,
including all Exhibits and Schedules hereto, and all amendments hereto made in
accordance with the provisions of Section 9.09.
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"Applicants" means Xxxxxxx Xxxxxxxxxx, Xxxxx Xxxxxxx, and Xxxxx
Xxxxxxxxxxxx.
"Assignor" has the meaning specified in the Recitals to this Agreement.
"Claims" has the meaning specified in Section 5.02 of this Agreement.
"Company" has the meaning specified in the Recitals to this Agreement and
any successors to the Company.
"Governmental Authority" means any national, state, or local government,
governmental, regulatory, or administrative authority, agency or commission or
any court, tribunal or judicial body or other institution for deciding disputes.
"Initial Public Offering" means a first offering to the public of shares
of stock in the Company, or a Person that controls, is controlled by, or is
under common control with Company, through a stock exchange, underwriters, and
investment bankers registered in the United States of America.
"Intellectual Property" means all of the following: issued patents and
patent applications, including patents of invention, provisional patents,
dependent patents, patents of additions, and applications therefor; invention
disclosures; and any and all divisions, continuations, continuations-in-part,
reissues, reexamined patents, or extensions thereof; any counterparts claiming
priority therefrom; utility models, certificates of invention and like statutory
rights, issued in or subsisting under the laws of Poland, the United States, and
any other nation or multinational patent granting authority of the world (the
"Patents") all rights to work, advertise, promote, practice, make, use, and sell
the Invention and the subject matter of the Patent Application anywhere in the
world, to the exclusion of all others including the Assignor; all rights to
lease, license, sell, authorize use of, and otherwise exploit the Invention and
the subject matter of the Patent to any Person anywhere in the world; all
categories of trade secrets as defined in the Uniform Trade Secrets Act
including, but not limited to, business information know-how, and technology
relating to the Invention; all Invention Records; all licenses and agreements
pursuant to which the Assignor has acquired rights in or to any Patents, and
agreements pursuant to which the Assignor has licensed or transferred the right
to use any of the foregoing; and all rights to enforce any of the foregoing
rights against anyone anywhere in the world.
"Invention" has the meaning specified in the Recitals to this Agreement,
and additionally shall mean the entire subject matter disclosed and claimed in
the Patent Applications.
"Invention Records" means all laboratory records, notes, test results, and
other writings of the true and original inventors of the Invention pertaining to
the conception, reduction to practice, development, and testing of the
Invention.
"Liabilities" means any and all debts, liabilities, obligations, whether
accrued or fixed, absolute or contingent, matured or un-matured or determined or
determinable,
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including, without limitation, those arising under any Law, Action or
Governmental Order and those arising under any contract, agreement, arrangement,
commitment or undertaking.
"Patent Applications" means certain patent applications filed by
Applicants under the Patent Cooperation Treaty, namely International Application
No. PCT/PL93/00013, filed August 12, 1993, entitled "Process For Preparing
Ceramic-Like Materials And The Ceramic-Like Materials" and published as
International Publication No. WO 95/00589; International Application No.
PCT/PL/00005, filed March 15, 1995, entitled "A Process For The Manufacture of
Polymeric Materials With A High Chemical And Mechanical Resistance And Polymeric
Materials With A High Chemical And Mechanical Resistance" and published as
International Publication No. WO 95/28440; and International Application No.
PCT/PL93/00012, filed August 12, 1993, entitled "Process For Preparing Ceramic-
Like Materials And The Ceramic-Like Materials" and published as International
Publication No. WO 95/00583, copies of which International Publications are
attached hereto as Exhibit 1.
"Person" means any individual, partnership, firm, corporation,
association, syndicate, group, trust, unincorporated organization or other
entity, including Applicants.
"Successful Completion" of the Initial Public Offering shall mean that
time if and when the investing public shall have invested the sum of Ten Million
Dollars (US$10,000,000.00) in the stock of the Company that is offered in the
Initial Public Offering.
"Taxes" means any and all taxes, levies, duties, tariffs, imposts, and
other similar fees or charges of any kind, foreign or domestic, together with
any and all interest, penalties, additions to tax and additional amounts imposed
with respect thereto, imposed by any Governmental Authority or taxing authority,
including, without limitation: taxes on or with respect to income, franchises,
windfall or other profits, gross receipts, property, sales, use, capital stock,
payroll, employment, social security, workers' compensation, unemployment
compensation, or net work; takes or other charges in the nature of excise,
withholding, ad valorem, stamp, transfer, value added, or gains taxes; license,
registration and documentation fees; and customs duties and tariffs.
ARTICLE 2
ASSIGNMENT OF THE TECHNOLOGY
Section 2.01. Assignment. In consideration for the Assignment Fees paid or
payable to Assignor hereunder, and in consideration for the promises of Company
made hereunder, Assignor agrees to assign and do hereby assign to the Company,
all right, title, and interest in, to and under the Invention, the Patent
Applications, all Intellectual Property therein, and the Assignor's entire right
to work the Invention for the purpose of gain or in the course of trade in
Poland and throughout the world.
Section 2.02. Execution of Assignments. Concurrently with the execution of
this Agreement, Assignor shall execute the short form Assignment attached hereto
as Exhibit 2.
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The Company may record the executed short form Assignment at any time after
execution with the Patent Office of Poland, the U.S. Patent & Trademark Office,
and with the patent office or comparable registry of any nation of the world.
Section 2.03. Additional Documents. Company's obligations under this
Agreement are expressly conditioned upon Company's approval of the chain of
title to the Invention, the Patent Applications, and the Intellectual Property.
The Assignor further agrees to assist the Company in every reasonable way in
perfecting the rights acquired by Company hereunder. Upon request by Company,
Assignor shall duly execute, acknowledge and deliver to Company, cause to be
executed, acknowledged, and delivered to Company, or use its best efforts to
cause Applicants to do the same, any and all powers of attorney, legalizations,
further assignments or instruments that Company may reasonably deem necessary,
expedient or proper to carry out and effectuate the purposes and intent of this
Agreement. Company shall have the right to place the same on record in the
Patent Office of Poland, the U.S. Patent & Trademark Office, and elsewhere as
Company may determine. In the event that Company or Assignor fail to execute
and/or deliver such additional documents, upon execution of this Agreement, all
rights agreed to be transferred to Company under this Agreement shall be deemed
irrevocably vested in Company effective upon the Effective Date.
Section 2.04 Secondary Assignments Prohibited. Assignor shall not assign
to, license to, dispose of or exploit for the benefit of any third party or
Person anything assigned hereunder by Assignor to Company. Moreover, the
Assignor agrees not to engage in any activity, including entering into any
arrangements and/or agreements with third parties, which would diminish the
commercial value of the Invention, Patent Application and Intellectual Property,
or inhibit, encumber, or impair the commercial exploitation of same by the
Company or its successors in interest.
ARTICLE 3
FEES AND PAYMENTS
Section 3.01. Payment upon Execution. Upon execution of this Agreement by
the parties and upon execution of the short form Assignment set forth in Exhibit
2 by Assignor, and in consideration for the rights granted to Company hereunder,
Company shall cause to be paid to Assignor Assignment Fees in the sum of Two
Hundred Thousand Dollars (US$200,000.00)
Section 3.02. Further Payment. Upon Successful Completion of the Initial
Public Offering, Company shall cause to be paid to Assignor further Assignment
Fees in the sum of Two Million Fifty Thousand Dollars (US$2,050,000.00).
Section 3.03. Payment Terms. All payments that are payable to Assignor
under this Agreement shall be payable in U.S. dollars and may be paid by Company
check, wire transfer, or cash, at the election of Company.
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Section 3.04. Taxes. Assignor shall have sole responsibility to pay or
reimburse Company for all Taxes, if any, including penalties and interest,
levied by any Governmental Authority as a result of the payments made to
Assignor under this Agreement as well as any costs associated with the
collection or withholding such taxes or duties. Company shall withhold Taxes
from such payments only if required to do so by Governmental Authority.
ARTICLE 4
REPRESENTATIONS AND WARRANTIES
Section 4.01. Representations and Warranties of Assignor. As an inducement
to the Company to enter into this Agreement, Assignor represents and warrant:
(a) That to the best of its knowledge, its interest in the Patent
Applications was transferred to it by all the true and original inventors
of the Invention and of the entire subject matter disclosed and claimed in
the Patent Applications including all aspects of the Invention disclosed
and claimed therein;
(b) That to the best of their knowledge, the Invention and the
subject matter claimed in the Patent Applications have not been taken or
copied from or based upon any other source (including without limitation
any other invention or inventor), and are not based upon, derived or
adapted from any Intellectual Property of any other Person in violation of
any statute, legal obligation, or agreement to which Assignor, the
inventor(s), or the Applicants are bound;
(c) That this Agreement, each provision thereof, and entry into this
Agreement by Assignor, shall not conflict with, violate, or result in the
breach of any provision of any agreement or understanding by or between
Assignor and any other Person;
(d) That jointly it owns all right, title, and interest in, to and
under the Patent Applications; that it holds the unqualified right to
assign, transfer, and sell the Invention, the Patent Applications, and all
Intellectual Property therein, free and clear of any claims, demands,
liens or other encumbrances of title, ownership or the like of any third
party or Person; that there are no past or outstanding options, licenses,
or assignments regarding all or a portion of the rights assigned
hereunder; that other assignment or other transfer of the rights assigned
hereunder has been granted or made to any other Person; that it has not
done or permitted to be done any act or thing whereby any of the rights
referred to in this Agreement have in any way been encumbered or impaired;
(e) That it will cooperate with the Company and provide all
reasonable assistance to the Company, both during prosecution of the
Patent Applications (including any opposition, appeal, or related
proceedings) and during the entire period of enforceability of the
Invention, the Patent Applications, any patent issued thereon.
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and the Intellectual Property therein, necessary or requested by Company
to facilitate or advance the prosecution, enforcement, or defense of the
Invention, the Patent Applications, the Intellectual Property therein, and
any enforcement action, lawsuit, litigation, or claim relating thereto;
(f) That to the best of the Assignor's knowledge, the Invention, the
subject matter claimed in the Patent Applications, the Intellectual
Property therein, and products produced according to them do not and will
not infringe any Intellectual Property rights or any other proprietary
right of any Person or give rise to any obligations to any Person as a
result of co-authorship, co-inventorship, or an express or implied
contract for any user or transfer;
(g) That there are no Actions now pending or threatened to be
brought before any Governmental Authority that could in any way impair,
limit or diminish the Invention, the Patent Applications, or any rights
granted to the Company hereunder, or that challenge the legality,
validity, enforceability, or title of Assignor in the Invention, the
Patent Applications, or the Intellectual Property therein;
(h) That this Agreement has been duly executed and delivered by the
Assignor, and this Agreement constitutes a legal, valid and binding
obligation of the Assignor enforceable against Assignor in accordance with
its terms except as such enforceability may be limited by principles of
public policy and subject to applicable laws;
(i) That this Agreement, any provision thereof and the acts of
Assignor in entering into this Agreement, shall not violate, conflict
with, result in any breach of constitute a default under, require any
consent under, or give others any right of termination, amendment,
acceleration, suspension, revocation, or cancellation of or result in the
creation of any encumbrance on the Invention or the Patent Applications
under any agreement, understanding, or provision thereof entered into
among Assignor and any other Person;
(j) That the execution, delivery and performance of this Agreement
by Assignor do not and will not require any consent, approval,
authorization or other order of, action by, filing with or notification to
any governmental authority;
(k) That Assignor is not under any obligation to pay any royalty or
other compensation to any third party or Person or to obtain any approval
or consent for the use of the Invention, the Patent Applications, or any
Intellectual Property therein;
(l) That neither the Invention, the Patent Applications, or any
Intellectual Property therein is subject to any presently effective
judgment, order, decree, stipulation, injunction, or charge;
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(m) That Assignor has not agreed to indemnify any Person for or
against any interference, infringement, misappropriation, or other
conflict with respect to the Invention, the Patent Applications, or the
Intellectual Property;
(n) That they have no notice or knowledge of any allegations or
threats that the Invention, the Patent Applications, Intellectual Property
therein, or any practice thereof or product produced therefrom infringes
upon or is in conflict with any Intellectual Property of any third party,
and to the best of their knowledge, no basis exists for any such
allegations or threats;
(o) That Assignor never has sent or otherwise communicated to any
Person any notice, charge, claim, or assertion of any present, impending,
or threatened infringement by any other Person of any Intellectual
Property of Assignor or any Intellectual Property that Assignor has the
right to use.
(p) That no broker, finder or investment banker is entitled to any
brokerage, finder's or other fee or commission in connection with the
transactions contemplated by this Agreement based upon arrangements made
by or on behalf of Assignor.
ARTICLE 5
INDEMNIFICATION AND REMEDIES
Section 5.01. Indemnification by Assignor. Assignor agrees to defend,
indemnify, and hold harmless the Company, its successors, assigns, licensees,
officers and employees from and against any and all liability, losses, damages,
costs, claims, expenses (including but not limited to reasonable attorneys
fees), judgments and penalties arising of, resulting from, based upon or
incurred because of the actual breach of any warranty made by Assignor
hereunder.
Section 5.02. Infringement Indemnification by Assignor. Assignor agrees to
indemnify and hold harmless the Company, its successors, assigns, licensees,
officers and employees from and against any and all actions, liability, losses,
damages, settlements, costs, claims, royalties, expenses (including but not
limited to reasonable attorneys fees), judgments and penalties (collective
referred to as "Claims") arising of, resulting from, based upon or incurred
because of infringement by the Invention, the Patent Applications or the
Intellectual Property therein of any Intellectual Property of any third party or
other Person. The Company shall notify Assignor of any such Claims. The Company
in its sole discretion may elect to defend any such Claims or may elect to allow
Assignor to defend such Claims, and if Company elects the latter, Assignor
agrees to vigorously and diligently defend such Claims provided that Company
shall cooperate with Assignor in such defense. In any case, Assignor shall allow
Company to direct and control all related settlement negotiations. If it is, or
in the reasonable opinion of Assignor there is a high probability that it will
be, determined by a court of competent jurisdiction that the Invention, Patent
Applications, Intellectual Property therein or the sale or use thereof or any
product thereof infringes any patent, copyright, trade
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secret or trademark of another Person or third party or is enjoined from
practicing any right granted to Company hereunder, then Assignor may, at its
sole expense, procure for Company under any applicable Intellectual Property the
same rights and to the same extent as those granted under this Agreement.
Section 5.04 Remedies of Assignor. Assignor agrees that its sole remedy
for any default by the Company hereunder, including the failure by the Company
to pay any consideration payable to Assignor hereunder, shall be an action
against Company for such consideration and/or for damages. Specifically,
Assignor agrees that it shall have no right to enjoin the making, using, or
selling of the Invention, Patent Applications, Intellectual Property, or any
method or product thereof, or to terminate or rescind any rights in the
Invention, Patent Applications, or Intellectual Property granted to Company
hereunder, or to obtain any other form of equitable relief.
Section 5.04. Remedies of Company. The Company shall have at all times,
all rights and remedies that it has at law and in equity hereunder or otherwise.
Section 5.05. Right of Company to Injunctive Relief. The rights that are
the subject matter of this Agreement are of a special, unique, extraordinary and
intellectual character that gives them a peculiar value, the loss of which
cannot be reasonably or adequately compensated for in damages in an action at
law and which would cause Company great irreparable injury and harm.
Accordingly, Company shall be entitled to injunctive relief specific performance
and other equitable relief to preserve its rights and interest in, to and under
such rights as set forth in this Agreement. This provision shall not be
construed as a waiver of any rights Company may have for damages or otherwise
arising from any breach of this Agreement.
Section 5.06. Limitation on Remedies. IN NO EVENT SHALL "COMPANY," ITS
EMPLOYEES, OFFICERS, DIRECTORS, OR AGENTS BE LIABLE TO "ASSIGNOR" FOR ANY
INCIDENTAL, CONSEQUENTIAL, SPECIAL OR INDIRECT DAMAGES OF ANY KIND, INCLUDING,
WITHOUT LIMITATION, LOST PROFITS OR REVENUES OR ANTICIPATED SAVINGS, ARISING
FROM ANY "ACTION" AS DEFINED HEREIN ARISING UNDER THIS AGREEMENT, EVEN IF
"COMPANY" OR SUCH OTHER PARTY IS AWARE OF THE POSSIBILITY OF SUCH DAMAGES OR
LOSS. In no event shall the aggregate liability for damages of Company, its
employees or agents, exceed the total amount actually paid to Assignor by
Company under this Agreement.
Section 5.07. Allocation of Risk. The provisions in this Agreement
concerning limitation of liability, representations and warranties and damages
allocate the risk of failure between Company on the one hand and Assignor on the
other hand. Such allocation is reflected in the consideration paid for the
rights granted hereunder and is an essential element of the basis of the bargain
between Company on the one hand and Assignor on the other hand.
ARTICLE 6
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OTHER OBLIGATIONS OF ASSIGNOR
Section 6.01. Delivery of Invention Records. Promptly after execution of
this Agreement, the Assignor shall deliver or cause to be delivered to the
Company or its designated agent, all original Invention Records of the true and
original inventor(s) pertaining to the Invention and the Patent Applications
that are possessed by Assignor or within its custody or control. Applicants and
such true inventor(s) may retain a copy of such Invention Records.
Section 6.02. Confidentiality. Assignor acknowledge and agree that it has
or may receive hereunder information which is marked confidential or is verbally
designated confidential and constitutes the proprietary confidential information
of the Company, and that Assignor's protection thereof is essential to this
Agreement. Assignor shall retain in strict confidence and not disclose to any
third party (except as authorized by this Agreement) without Company's express
written consent any and all such information.
Section 6.03. Exceptions. Assignor shall be relieved of this obligation of
confidentiality to the extent any such information:
(i) was in the public domain at the time it was disclosed or
has become in the public domain through no fault of Assignor;
(ii) Assignor can prove was known to Assignor, without
restriction, at the time of disclosure as shown by the files of Assignor
in existence at the time of disclosure;
(iii) is disclosed by Assignor with the prior written approval
of Company;
(iv) Assignor can prove was independently developed by
Assignor without any use of Company's confidential information and by
employees or other agents of Assignor who have not had access to any of
Company's confidential information; or
(v) becomes known to Assignor, without restriction, from a
source other than Company without breach of this Agreement by Assignor and
otherwise not in violation of Company rights.
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ARTICLE 7
ASSIGNMENT OF THE AGREEMENT
Section 7.01. By Company. The Company may transfer and assign this
Agreement or all or any of its rights hereunder to any Person, and in such
event, Company shall be released and discharged from all executory obligations
hereunder, and Assignor shall look solely to such Person for performance
thereof.
Section 7.02. By Assignor. Assignor may not assign this Agreement or its
rights hereunder, in whole or in part, without Company's prior written approval.
Any such purported assignment without Company's prior written approval shall be
deemed void. This Agreement shall inure to the benefit of the parties' permitted
successors, licensees and assigns.
ARTICLE 8
TERM, RENEWAL AND TERMINATION
Section 8.01. Termination. This Agreement may be terminated at any time:
(a) by the Company immediately upon written notice to Assignor if (i.)
Assignor breaches or is found to be in breach of any representation or warranty
made by Assignor herein, or (ii.) Assignor breaches or is found to be in breach
of its obligations under Section 6.02 ("Confidentiality") hereof; or
(b) by the Company immediately upon written notice to Assignor if any
Governmental Authority shall have issued a final, non-appealable order, decree
or ruling or taken any other action (i.) permanently enjoining or otherwise
prohibiting the enforcement of any of the rights assigned by Assignor to Company
hereunder, (ii.) declaring any patent that shall have issued from the Patent
Applications to be invalid, not valid, void, or unenforceable, or (iii)
declaring the Patent Applications invalid or not patentable in any opposition
proceeding; or
(c) by the mutual written consent of the Company and the Assignor.
Section 8.02. Effect of Termination. In the event of termination of this
Agreement, this Agreement shall forthwith become void and there shall be no
liability on the part of either party hereto except that nothing herein shall
relieve either party from liability for any breach of this Agreement or for
breach of any representation or warranty made hereunder.
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ARTICLE 9
GENERAL PROVISIONS
Section 9.01. Controlling Law. This Agreement shall be construed and
enforced under the laws of the State of New York applicable to agreements
entered into and performed wholly within New York. In any action to enforce or
construe this Agreement, the parties hereto agree to submit to the jurisdiction
of the United States District Court for the Southern District of New York or the
Supreme Court of the State of New York which the parties acknowledge and agree
are convenient forums in which to litigate any such action. The parties waive
any right to transfer such action to any other court and expressly consent to
the permanent jurisdiction of such courts regarding the resolution of any
disputes hereunder and agree to be bound by the judgment rendered by such
courts.
Section 9.02. Independent Contractor. Neither party has any authority to
make any statement, representation, warranty or other commitment on behalf of
the other. This Agreement does not create any agency, employment, partnership,
joint venture or similar relationship between Company or Assignor.
Section 9.03. Force Majeure. Neither party shall be liable for any delay
or failure to meet its obligations under this Agreement due to circumstances
beyond its reasonable control, including but not limited to war, riot,
insurrection, civil commotion, labor strikes or lockouts, shortages, factory or
other labor conditions, fire, flood, earthquake or storm.
Section 9.04. Severability. If any provision of this Agreement should be
held unenforceable or invalid for any reason, such holding shall not affect the
enforceability or validity of the remaining provisions, and the parties will
substitute for such provisions an enforceable and valid provision which most
closely approximates the intent and economic effect of the unenforceable or
invalid provision.
Section 9.05. Waiver. No waiver of any obligation under this Agreement
shall be valid unless set forth in a writing signed by the party to be bound
thereby. Any waiver of a term or condition shall not be construed as a waiver of
any subsequent breach or a subsequent waiver of the same term or condition, or a
waiver of any other term or condition, of this Agreement. The failure of any
party to assert any of its rights hereunder shall not constitute a waiver of any
such rights.
Section 9.06. Expenses. Each party shall bear its own costs and expenses
incurred in connection with this Agreement.
Section 9.07. Notices. All notices, requests, claims, demands and other
communications hereunder shall be deemed given upon receipt, and shall be given
in writing and shall be given or made by delivery in person, by courier service,
by telecopy, or by registered or certified mail (postage prepaid, return receipt
requested) to the respective parties at the following addresses:
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(a) If to the Company:
Kadoma Trading, Ltd.
00 Xxxx 00xx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
(b) If to the Assignor:
Xxxxxxx Applied Technologies, Inc.
00 Xxxx 00xx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Section 9.08. Public Announcements. No party to this Agreement shall make,
or cause to be made, any press release or public announcement relating to this
Agreement without prior consent of the other party, subject to the Company's
obligations to comply with applicable securities laws, and the parties shall
cooperate as to the timing and contents of any such release or announcement.
Section 9.09. Entire Agreement. This Agreement, including the attached
Exhibits, constitutes the entire agreement between Company and Assignor with
respect to its subject matter, and supersedes any prior or contemporaneous
written or oral understandings, agreements, or arrangements between Customer and
Assignor on the subject matter hereof. No amendment of this Agreement will be
enforceable unless set forth in writing signed by the party against which
enforcement is sought. This Agreement may be executed in duplicate counterparts,
which together shall constitute one and the same instrument.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be executed
by their duly authorized representatives.
XXXXXXX APPLIED
KADOMA TRADING, LTD. TECHNOLOGIES, INC.
("Company") ("Assignor")
By /s/ Andreas Skentlos Kalligeris By /s/ Xxx Xxxxxxxx
-------------------------------- --------------------------------
Name: ANDREAS SKENTLOS KALLIGERIS Name: XXX XXXXXXXX
Title: DIRECTOR Title: VICE PRESIDENT
Date: 27/9/97 Date:
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A S S I G N M E N T
WHEREAS, Xxxxxxx Applied Technologies, Inc. is the sole and exclusive
owner of the PCT Patent Applications PCT/PL93/00012 filed August 12, 1993;
PCT/PL93/00013 filed August 12, 1993; and PCT/PL95/00005 filed March 15, 1995
and their respective Polish Priority Patent Applications P 299472 filed June 25,
1993; P 299473 filed June 25, 1993; and P 303058 filed April 19, 1994 by virtue
of an Agreement Priority And Patent Rights Transfer executed by Inventors
Xxxxxxx Xxxxxxxxxx, Xxxxx Xxxxxxxxxxxx, Xxxxx Xxxxxxx on May 10, 1996, assigning
their respective rights of ownership of the above-referenced Patent Applications
to Xxxxxxx Applied Technologies, Inc.,
WHEREAS, Kadoma Trading, Ltd., a company organized and existing under the
laws of the Country of Cyprus, and having a place of business at 00 Xxxx 00xx
Xxxxxx, Xxx Xxxx, XX 00000, is desirous of acquiring the entire right, title and
interest, including the right to bring a patent infringement lawsuit for past
infringement, in and to the aforesaid Patent Applications, and in, to and under
any and all Letters Patent that may be granted as a result thereof in any and
all countries;
NOW, THEREFORE, for and in consideration of the sum of One Dollar ($1.00)
and other good and valuable consideration, the receipt of which is hereby
acknowledged, the said Xxxxxxx Applied Technologies, Inc. has sold, assigned,
transferred and set over to said Kadoma Trading, Ltd., the entire right, title
and interest, including the right to bring a patent infringement lawsuit for
past infringement, in and to the aforesaid Patent Applications, and in, to and
under any and all Letters Patent that may be granted as a result thereof in any
and all countries, and any and all extensions, divisions, reissues, substitutes,
renewals or continuations thereof, and the right to all benefits under the
International Convention for the Protection of Industrial Property, the same to
be held and enjoyed by said Kadoma Trading, Ltd., its successors, assigns and
legal representatives, to the full end of the term or terms for which said
Letters Patent may be granted, reissued or extended as fully as the same would
have been held and enjoyed in full by Xxxxxxx Applied Technologies, Inc. had
this assignment, sale or transfer not been made; and said Xxxxxxx Applied
Technologies, Inc. hereby authorizes and requests the Commissioner of Patents of
the United States and any official of any country or countries foreign to the
United States whose duty it is to issue patents to issue to said Kadoma Trading,
Ltd., as assignee of the entire right, title and interest therein, including the
right to bring a patent infringement lawsuit for past infringement, any and all
Letters Patent of the United States or of said foreign country or countries,
which may be issued or granted as a result of the Patent Applications
hereinbefore identified, in accordance with the terms of this agreement, and
hereby covenants that it has the full right to convey the entire interest herein
assigned and that it has not executed and will not execute any agreement in
conflict herewith.
XXXXXXX APPLIED TECHNOLOGIES, LTD.
September 27th, 1997
Kadoma Trading Ltd.
00 Xxxx 00xx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Dear Sirs:
We hereby confirm that we have received the amount of $200,000.00 (U.S. Dollars
two hundred thousand) representing payment against purchasing of the patent, as
per our agreement.
Very truly yours
/s/Xxx Xxxxxxxx
---------------
XXXXXXX APPLIED TECHNOLOGIES, LTD.
Xxx Xxxxxxxx - Vice President
XXXXXXX APPLIED TECHNOLOGIES, LTD.
AGREEMENT
PRIORITY AND PATENT RIGHTS
TRANSFER
Whereas on this date, May 10, 1996, it has been agreed that a binding
Agreement has been reached and so will be exercised by this document, and
Whereas the parties hereto undersigned namely: Xxxxxxx Xxxxxxxxxx, Xxxxx
Xxxxxxxxxxxx and Xxxxx Xxxxxxx individually are duly authorized, free and clear
of any incumberances or restrictions to sign individually.
Whereas Xxxxx Xxxxxxx is recognized as the duly authorized representative
and officer of Xxxxxxx Applied Technologies, Ltd. and is free and clear of any
incumberances to act as its representative, then
Now and Henceforth, it is agreed that the Priority and Patent Rights as
well as Priority Rights to Inventions (applications) filed according to Polish
priorities Nos. 299472 and 29473 from June 25, 1993, and No. 303058 from April
19, 1994, to all processes, materials, products and formulas both real and
intangible that are currently held individually by Xxxxxxx Xxxxxxxxxx, Xxxxx
Kleszczewki and Xxxxx Xxxxxxx are transferred wholly to Xxxxxxx Applied
Technologies, Ltd., in all countries, except Poland, where applications were
filed until the date of this agreement. This transfer of rights includes Poland
in the respect necessary under Polish law whereby Xxxxxxx Applied Technologies,
Ltd. is now the sole owner of the patent rights and priorities as well.
Further, it is agreed that specifically all formulas, pieces product and
material priority and patent rights that relate to CLM are included in this
transfer agreement. This transfer gives Xxxxxxx Applied Technologies. Ltd. all
rights as described above from now in perpetuity for the sum of $10.00 (Ten U.S.
Dollars) and is so binding upon payment being received and signature of the
parties affixed below.
Agreed to and in force as of the above date, so signed by:
Xxxxxxx Xxxxxxxxxx /s/ Xxxxxxx Xxxxxxxxxx Date: 10-05-96
--------------------- -----------
(individually)
Xxxxx Xxxxxxxxxxxx /s/ Xxxxx Xxxxxxxxxxxx Date: 10 MAY 1996
--------------------- -----------
(individually)
Xxxxx Xxxxxxx /s/ Xxxxx Xxxxxxx Date: 10 MAY 1996
--------------------- -----------
(individually)
Xxxxx Xxxxxxx /s/ Xxxxx Xxxxxxx Date: 10 MAY 1996
--------------------- -----------
(Xxxxxxx Applied
Technologies, Ltd.)
IN TESTIMONY WHEREOF, has caused these presents to be signed by an officer
thereunto duly authorized, an its seal to be affixed and attested this _____ day
of ____________, 1997.
XXXXXXX APPLIED TECHNOLOGIES, INC.
/s/ Xxx Xxxxxxxx
---------------------------------
Name:
Vice President
---------------------------------
Title:
---------------------------------
Date:
SEAL OF NOTARY PUBLIC
ATTEST: Xxxx XxXxxxxx
Public, State of New York
No. 01MC5062105
Qualified in Queens County
Commission Expires 6-14-98
/s/ Xxxx XxXxxxxx
---------------------------------
Xxxx XxXxxxxx
