Translation from the German into the English Language
Exhibit 6.22
Page 1 of 9
Contract
concerning
Industrial Property Rights and Know-How
between
1. Xx. Xxxxxx Xxxxx
Schrenkweg 1
85658 Egmating
2. Mr. Xxxxx Xxxxx
Xxxxxxxxxxxx Xxxxxxx 00
00000 Xxxxxxxxx
hereafter referred to as the "Transferor"
and
the iQ BATTERY Research & Development GmbH,
offices in Xxxxx,
XXX 00000 AG Chemnitz
hereafter referred to as the "Company"
1. The Transferors own German Patent, Patent Specification No. 4142 628 C1, as
well as the international patent application PCT/EP 92/02930 dated December
17, 1994 (hereafter referred to as "Property Rights"), regarding know-how
for starter batteries and other batteries, and regarding registered
national trade xxxx "iQ", registration number 206, 1981. The deed for the
German Patent, the international Patent registration, the know-how, as well
as the deed for the registration of the previously named Trade Marks, are
set forth in this Contract as Enclosure 1 of the attached compilation,
which is the essential component of this Contract (in the following
referred to as "Rights Subject to the Contract").
2. The Transferors intend to transfer these Property Rights, that know-how and
that Trade Xxxx together with all rights resulting from- or related to the
Rights Subject to the Contract, onto the Company.
Page 2of 9
Sec. 1
Transfer of the Rights Subject to Contract
1. The Transferors transfer hereby all the Rights Subject to Contract to the
Company and relinquish all resulting from- or all related to- rights.
Simultaneously they transfer, at the time of finalizing of the contract,
all belonging documents concerning the Rights Subject to Contract, the
Subject to Contract Know-How, and the Subject to Contract Trade Xxxx, onto
the Company. The Transferors relinquish further all resulting claims with
regard to documents concerning the International Patent Registration, which
are held by their patent solicitor. The Transferors assure that, except as
per conditions of ss. 3, there are no other documents incorporating the
Property Rights or the Know-How.
2. The Company receives the transfer and the relinquishment.
3. The Transferors obligate themselves to undertake all explanations and
procedures necessary to transfer registration of Patent, Trade Xxxx
ownership and Patent Protection, and provide support to the Company in all
possible ways in the process of transfer.
4. The Transferors grant Power of Attorney irrevocably to the Company, to
undertake all the necessary procedures and explanations in respect of
transfer.
Sec. 2
Remuneration
1. As remuneration for conveyance to the Company of the Subject to Contract
Rights, according to ss. 1, the Company shall pay to the Transferors
a) one time an amount of DM 400,000 (German Xxxx: four hundred thousand)
plus applicable value added tax, due by the first exploitation by the
Company of the Subject to Contract Rights.
Page 3 of 9
b.) 40% of the revenue from license fees not originating from sales, as
well as fees for guarantees of options to close the license
agreements, as well as
c.) 20 % of the entire annual and not originating from license sales gross
income of the Company from license contracts of the Rights Subject to
the Contract until year 2000.
The Parties agree that the amounts for b.) and c.) respectively will be
payable three months after the closing of the previous calendar half-year,
and they are subject to paying and additional and obligatory value added
tax, as long as the Company shows a positive business results, otherwise
the amounts will be postponed until a positive result will be brought
forward.
2. The Transferors put the demands outlined in par. 1 irrevocably, and
behind all demands of present and future third party creditors of the
Company, as long as the Company is in debt.
3. The purchase price is limited in all to 4 mil.
4. The expenses of conveyance of industrial property rights to the Company
shall be borne by the Company.
Sec. 3
Warranties
1. The Transferors hold liable the Company that the Rights Subject to the
Contract, except for information as contained in the Enclosure 2, are free
of third party rights, and they can access these freely. There are no legal
encumbrances on the Right to the Contract, or any relevant legal disputes
known to the Transferors. The Transferors assure therefore that besides of
Property Rights, as per Enclosure 1, there is no further ownership of
Property Rights.
2. The Transferors assure that there are not known to them any essential
negative facts in reference to existing extend of the Rights Subject to the
Contract, or to execution of this contract, in particular any rights of
prior users, or dependencies on Property Rights by third parties, or any
other rights of third parties. Excluded from here are such supporting
documents, as attached in the Enclosure 3 of this contract.
Page 4 of 9
3. The Transferors decline any responsibility, nor provide any guarantees for
industrial usefulness of the Rights Subject to Contract.
4. It is known to the Company that the Know-How subject to the Contract was
made known to the third party during utilization conferences, as per
Enclosure 4 named enterprise, but never in its entirety.
Sec. 4
Protection of the Rights Subject to the Contract
1. The Company is obligated to do all to maintain protection of the Rights
Subject to the Contract.
2. The Transferors obligate themselves to support the Company in that, in
particular to provide the Company with the required and not yet available
documentation.
3. The Transferors and the Company obligate themselves mutually not to
disclose or convey the Rights Subject to the Contract to the third parties.
Sec. 5
Other Considerations
1. This contract is exclusively subject to German Law.
2. Place of legal dispute, as far as permissible, Munich (District Court
Munich II).
3. To become effective, any changes and additions to this contract, as well as
one side explanations of the parties to this Contract, are to be made in
written. This is valid also for written form clauses.
Page 5 of 9
4. Should certain provisions of this contract become ineffective, or should be
ineffective, or not executable, or in case if this contract contains
omissions, the effectiveness of the remaining provisions will be not
affected. In place of an ineffective or unexecutable provision, such an
executable agreement becomes part of the agreement, which in its industrial
sense and purpose is legally possibly closest to its purpose. In case of
omissions, such relevant provision becomes valid which is reasonable in
sense and purpose, should that provision had had been agreed upon, when had
been thought of from the beginning.
Xxxxxx, Xxxxx 00, 0000
(Xxxxxx Xxxxx) (xX BATTERY Research & Development GmbH)
(Xxxxx Xxxxx)
Enclosure 1: List of the Rights Subject to the Contract
Enclosure 2: Evidence of the Rights Subject to the Contract
Enclosure 3: Patent Protection Rights of third parties or other rights of
third parties
Enclosure 4: Utilization conferences / Confidentiality Agreements
Page 6 of 9
Enclosure 1
List of the Rights Subject to the Contract:
-------------------------------------------
- German Patent, Registration Number DE 4142628 C1
- International Patent Application, file number PCT/EP 92/02930
- Know-How for starter batteries and other batteries
- National Trade Xxxx including registration number 206 1981
Page 7 of 9
Enclosure 2
Evidence of the Rights Subject to the Contract:
-----------------------------------------------
- Company Agreement with Xx. Xxxxxxxxx, dated May 19, 1993
- Utilization Agreement Xxxxxxx dated February 7, 1994
- Patent Utilization Contract with InPROma, dated April 21, 1994
- Extension of the Patent Utilization Contract with InPROma, dated November
29, 1994
- Pledge according with Agreement dated March __ , 1995
Page 8 of 9
Enclosure 3
Patent Protection Rights of third parties or other rights of third parties:
---------------------------------------------------------------------------
Page 9 of 9
Enclosure 4
Utilization conferences / Confidentiality Agreements
----------------------------------------------------
- Global & Yuasa Battery Co., dated September 27, 1994
- Fraunhofer-Company patronage of undertaken research, dated January 28, 1995
- GNB, dated July 1, 1994
- GALT, dated May 11, 1994
