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EXHIBIT 10.17
ASSIGNMENT OF MEDIA INTELLECTUAL PROPERTY
This Assignment of Media Intellectual Property (the "Assignment") is
made as of June 23, 1997 by Encore Technologies, Inc., a Minnesota corporation
("Encore"), to Eco Soil Systems, Inc., a Nebraska corporation ("Eco Soil").
For good and valuable consideration the receipt and adequacy of which
are hereby acknowledged, Encore hereby agrees as follows:
1. DEFINITIONS. For purposes of this Assignment, the following terms
shall have the following meanings:
"Know How" shall mean all secret processes, specialized knowledge
and techniques, secret formulas or other secret information or intellectual
property, including trade secrets, which are presently the property of Encore
and which relate to Media.
"Media" shall mean the proprietary material formulations provided
by Encore used to promote fermentation and multiplication of inoculum and other
biological materials in Eco Soil's proprietary BioJectTM system.
"Settlement Agreement" shall mean the Settlement Agreement dated
as of July 6, 1997 by and between Encore and Eco Soil.
2. ASSIGNMENT OF INTELLECTUAL PROPERTY. For the consideration set
forth at Section 3.1 of the Settlement Agreement, Encore hereby assigns,
transfers and conveys to Eco Soil the following property (the "Intellectual
Property"):
2.1 Media and all other inventions or other intellectual property
relating to Media that have been conceived, developed, revised and/or reduced to
practice by, with the assistance of, or under the direction of, Encore;
2.2 All right, title to, and interest in the Know How, including
without limitation, the right to xxx for injunctive relief and damages for all
past, present and future infringements, and to collect the same for its own
account and use;
2.3 All rights under any patents, patent applications, patent
disclosures and inventions relating to Media (if any) that have been conceived,
developed, revised and/or reduced to practice by, with the assistance of, or
under the direction of, Encore, and any reissues, divisions, extensions, re-
examinations or improvements thereof (and any rights to reissue, divide, extend
or improve such items), and any right to xxx for injunctive relief or damages
for any past, present or future infringement thereof;
2.4 All intellectual property rights similar to or relating to
any of the foregoing; and
2.5 All drawings, artwork, specifications, designs, plans,
technical reports and other plans, specifications or reports of any type
relating to any of the foregoing, and all copies and tangible embodiments of any
of the foregoing, whether in printed form, electronic form or any other medium.
3. CONSEQUENCES OF OWNERSHIP OF INTELLECTUAL PROPERTY. As a
consequence of Eco Soil's ownership of the Intellectual Property, Encore agrees
that Eco Soil is fully authorized and entitled to exercise all rights of
ownership with respect to the Intellectual Property that were held by Encore
immediately prior to the delivery of this Assignment, and that Encore shall not
have any further right to
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use the Intellectual Property or exercise any such rights of ownership, except
as hereafter agreed in writing by Eco Soil. Encore further acknowledges and
agrees that Eco Soil's rights include the right for Eco Soil to permit third
parties to use all or part of the Intellectual Property, without being required
(i) to obtain any consent or approval from Encore or (ii) to provide any further
compensation whatsoever to Encore (except as provided in the Settlement
Agreement).
4. FURTHER ACTIONS.
4.1 Encore agrees that within five days after the date hereof, it
will deliver to Eco Soil all original drawings, artwork, specifications,
designs, plans and technical reports relating to the Intellectual Property,
whether existing in printed form, electronic form, or any other medium.
4.2 Encore further agrees to execute and deliver such further
documents and take such further steps as Eco Soil from time to time reasonably
may request in order to confirm, effect, evidence, perfect and otherwise
consummate the vesting of all attributes of ownership in the Intellectual
Property in Eco Soil. Such actions shall include without limitation providing
Eco Soil with access from time to time, during normal business hours and upon
reasonable prior notice to Encore, as requested by Eco Soil, to Encore's books
and records relating to the Intellectual Property (including any records
relating to contracts or arrangements with employees, suppliers and other third
parties involved in the development of any of the Intellectual Property or any
component parts thereof).
5. MISCELLANEOUS. Encore acknowledges that this Assignment is being
executed and delivered pursuant to the Settlement Agreement. Encore further
acknowledges and agrees that nothing herein shall be construed as limiting the
rights of Eco Soil under the Settlement Agreement. This Assignment shall insure
to the benefit of the successors and assigns of Eco Soil, and shall bind the
successors and assigns of Encore. There are no third party beneficiaries of this
Assignment. The validity, interpretation, and performance of this Assignment
shall be controlled by and construed under the laws of the State of Minnesota,
the state in which this Assignment is accepted. Licensee hereby irrevocably
consents to the jurisdiction of the appropriate Minnesota courts located in
Hennepin County, Minnesota, and agrees that all litigation arising hereunder
shall be venued in Hennepin County, Minnesota. No change, modification,
extension, termination or waiver of the Assignment, or any of the provisions
herein contained, shall be valid unless made in writing and signed by duly
authorized representatives of the parties hereto. The waiver by either party
hereto of any right hereunder or the failure to perform or of a breach by the
other party shall not be deemed a waiver of any other right hereunder or of any
other breach or failure by said other party whether of a similar nature or
otherwise. Any of the provisions of the Assignment which are determined to be
invalid or unenforceable in any jurisdiction shall be ineffective to the extent
of such invalidity or unenforceability in such jurisdiction, without rendering
invalid or unenforceable the remaining provisions hereof and without affecting
the validity or enforceability of any of the terms of the Assignment in any
other jurisdiction. Paragraph, section and similar headings used herein are not
to be considered part of this Assignment and are included solely for the
convenience of the parties and are not intended to be full or accurate
descriptions of the content thereof. Time is of the essence in this Assignment
and the failure of either party to promptly pay when due any payments (after the
expiration of any applicable notice and cure periods), or to perform any
material obligations required herein (after the expiration of any applicable
notice and cure periods), may be treated by the other party as a material breach
of this Assignment and shall entitle the non- breaching party to all rights and
remedies afforded by applicable law, subject to the limitations set forth
herein.
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IN WITNESS WHEREOF, Encore has executed this Assignment as of the
date first above written.
ENCORE TECHNOLOGIES, INC.,
a Minnesota corporation
By: /s/ XXXXX XXXXXX
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Name: Xxxxx Xxxxxx
Title: President
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