Exhibit 10.3
PATENT ASSIGNMENT AGREEMENT
This Patent Assignment Agreement (this "Agreement") is entered into as
of ___________________, 2004 (the "Effective Date"), by and between
ParkerVision, Inc., a corporation organized in the state of Florida
("Assignor"), and Thomson Licensing, S.A., a corporation organized in France
("Assignee").
RECITALS
WHEREAS, Assignor and Assignee are parties to that certain Asset
Purchase Agreement, dated February 25, 2004 (the "Purchase Agreement"); and
WHEREAS, pursuant to the Purchase Agreement, Assignor has agreed to
irrevocably transfer and assign to Assignee all of its right, title and
interest, on a worldwide basis, in, to and under certain patents and patent
applications as set forth herein;
NOW, THEREFORE, for good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, the parties hereby agree as
follows:
AGREEMENT
1. CAPITALIZED TERMS. Capitalized terms used but not defined herein shall have
the meanings for such terms that are set forth in the Purchase Agreement.
2. ASSIGNMENT
2.1 Patent Assets. Assignor hereby irrevocably sells, transfers,
conveys, assigns and delivers all of its right, title and interest of every kind
and character throughout the world, including all reissues, continuations,
divisonals in, to and under the Patent Assets (including, without limitation,
the patents and patent applications set forth in Exhibit A hereto) to the full
extent of its ownership or interest therein, including, without limitation, all
rights and causes of action for infringement or misappropriation (past, present
or future) of any Patent Asset, all rights to apply for or register any of the
foregoing, and any and all other rights and interests arising out of, in
connection with or in relation to the Patent Assets. At Closing, Seller shall
execute and deliver to Patent Purchaser a confirmatory assignment covering each
applicable Patent Asset for filing with the United States Patent and Trademark
Office in the form attached hereto as Exhibit B (such form, the "Confirmatory
Assignment").
2.2 Further Actions. Upon Assignee's request, Assignor will promptly
take such other actions as may be reasonably necessary to vest, secure, perfect,
protect or enforce the rights and interests of Assignee in, to and under the
Patent Assets, and Assignee shall pay for Assignor's actual and reasonable
expenses and costs. Such actions shall include, without limitation, the prompt
execution and delivery of documents in recordable form (including the prompt
execution and delivery of additional Confirmatory Assignments) and the provision
of documents and information useful or necessary for Assignee or its affiliates,
designees or agents to file, prosecute or maintain any registration or
application for any Patent Asset, or pursue or defend any administrative, court,
or other legal proceeding involving any of the Patent Assets.
2.3 Later Acquired or Enlarged Rights. In the event that Assignor
hereafter acquires, by agreement, operation of law or otherwise, ownership or
other additional or greater interest in the Patent Assets than that assigned
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hereunder, such later-acquired rights will automatically be subject to this
Agreement such that such rights are assigned to Assignee hereunder as if
Assignor had possessed them on the Effective Date.
2.4 Appointment. In the event that Assignee is unable, after reasonable
notice to Assignor, for any reason whatsoever, to secure Assignor's signature to
any document that is reasonably necessary to vest, secure, perfect, protect or
enforce the rights and interests of Assignee in and to the Patent Assets,
Assignor hereby irrevocably designates and appoints Assignee and its duly
authorized officers and agents as Assignor's agents and attorneys-in-fact, to
act for and on its behalf and instead of Assignor, to execute and file any such
documents and to do all other lawfully permitted acts to further the purposes of
this Section 2 with the same legal force and effect as if executed by Assignor.
3. MISCELLANEOUS Sections 12.1 through 12.16 of the Purchase Agreement are
hereby incorporated herein by this reference; provided that (i) references to
"Agreement," "hereto," "hereunder," and similar references in such sections
shall pertain to this Agreement; (ii) the Purchase Agreement (for the avoidance
of doubt) shall be considered a Transaction Agreement; (iii) references to
"Seller" shall be deemed to be Assignor and (iv) references to "Purchasers"
shall be deemed to be Assignee.
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IN WITNESS WHEREOF, the parties have caused this Agreement to be
executed by their duly authorized representatives as of the Effective Date.
ASSIGNOR ASSIGNEE
By: By:
---------------------------- ---------------------------
Name (Print): Name (Print):
------------------ -----------------
Title: Title:
------------------------- ------------------------
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EXHIBIT A
CERTAIN PATENT ASSETS
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TITLE OF PATENT/PATENT DATE APPLICATION SERIAL
APPLICATION PATENT NUMBER ISSUED NUMBER APPLICATION COUNTRY FILING DATE
-------------------------------- ---------------- ----------- --------------------- --------------------- ------------
-------------------------------- ---------------- ----------- --------------------- --------------------- ------------
-------------------------------- ---------------- ----------- --------------------- --------------------- ------------
-------------------------------- ---------------- ----------- --------------------- --------------------- ------------
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EXHIBIT B
CONFIRMATORY PATENT ASSIGNMENT
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
ASSIGNMENT
WHEREAS, ParkerVision, Inc., a corporation organized in the state of Florida,
with offices at 0000 Xxxxxxxxxx Xxx, Xxxxxxxxxxxx, Xxxxxxx 00000 ("ASSIGNOR")
owns certain patent applications and/or registrations, as set forth in
Attachment 1 attached hereto and incorporated herein by this reference
("PATENTS"); and
WHEREAS, Thomson Licensing, S.A., a corporation organized in France, with
offices at 46, Quai Xxxxxxxx XxXxxxx, 00000 Xxxxxxxx-Xxxxxxxxxxx, Xxxxxx
("ASSIGNEE"), desires to acquire all of the right, title and interest of
ASSIGNOR in, to and under the PATENTS;
WHEREAS, ASSIGNOR and ASSIGNEE have entered into a certain Patent Assignment
Agreement, dated _______________, 2004, assigning, among other things, all
right, title and interest in and to the PATENTS from ASSIGNOR to ASSIGNEE;
NOW, THEREFORE, for good and valuable consideration paid by ASSIGNEE to
ASSIGNOR, the receipt and sufficiency of which hereby is acknowledged, ASSIGNOR
hereby sells, transfers, conveys, assigns and delivers all of its right, title
and interest of every kind and character throughout the world in, to and under
the PATENTS to the full extent of its ownership or interest therein, including,
without limitation, all rights and causes of action for infringement or
misappropriation (past, present or future) of any PATENT, all rights to apply
for or register any of the foregoing, and any and all other rights and interests
arising out of, in connection with or in relation to the PATENTS.
IN WITNESS WHEREOF, ASSIGNOR has caused this Assignment to be duly executed by
an authorized officer on this ____ day of ___________, 2004.
By:
---------------------------------
Name:
-------------------------------
Title:
------------------------------
STATE OF _______________ )
) ss.
COUNTY OF _____________ )
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On _______________________, 200_, before me, the undersigned notary public in
and for said County and State, personally appeared __________________,
____ personally known to me [or]
____ proved to me on the basis of satisfactory evidence
to be the person(s) whose name(s) __________________ subscribed to the within
instrument and acknowledged to me that __________________ executed the same in
____________________ authorized capacity(ies) and that, by _______________
signature(s) on the instrument, the person(s) or the entity(ies) upon behalf of
which the person(s) acted executed the instrument.
WITNESS my hand and official seal.
________________________________
My commission expires on
________________________________
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ATTACHMENT 1
PATENTS
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TITLE OF PATENT/PATENT DATE APPLICATION SERIAL
APPLICATION PATENT NUMBER ISSUED NUMBER APPLICATION COUNTRY FILING DATE
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