REAFFIRMATION AND MODIFICATION OF
PATENT ASSIGNMENT AND ROYALTY AGREEMENTS
THIS AGREEMENT entered into as of the 3rd day of February 1999, by
and between XXXX X. XXXXXX, XX., XXXX X. XXXXXX, and A. XXXXXXX XXXXXX,
(collectively, the "Nelsons"), on the one hand, all with an address of Xxxx
X. Xxxxxx c/o Polar Molecular Corporation, 0000 X. Xxxxxx Xxxxxx, Xxxxx 000,
Xxxxxx, Xxxxxxxx 00000, and POLAR MOLECULAR CORPORATION, a Utah corporation
("PMC"), with an address at 0000 X. Xxxxxx Xxxxxx, Xxxxx 000, Xxxxxx,
Xxxxxxxx 00000.
W I T N E S S E T H
WHEREAS, Xxxx X. Xxxxxx, Xx. and Xxxx X. Xxxxxx, the joint inventors
in the U.S. patents identified in Exhibit A attached hereto, have assigned to
PMC the entire right, title and interest in and to said U.S. patents and any
and all corresponding foreign patents and patent applications by assignment
documents recorded in the U.S. Patent Office at Reel 4833 and Frames 979
through 982; and
WHEREAS, Xxxx X. Xxxxxx, Xx., Xxxx X. Xxxxxx and A. Xxxxxxx Xxxxxx,
the joint inventors in the U.S. Application Ser. No. 07/488,670 filed
March 5, 1990 (abandoned) and the foreign patents and patent applications
corresponding thereto identified in Exhibit B, attached hereto, have assigned
to PMC the entire right, title and interest in and to said U.S. application.
and patents issued thereon and said foreign patents and patent applications
and any and all foreign patents which may be granted on said applications by
an Assignment document recorded in the U.S. Patent Office at Reel 5281, Frame
703 through 705; and
WHEREAS, Xxxx X. Xxxxxx, Xx., Xxxx X. Xxxxxx and A. Xxxxxxx Xxxxxx,
the joint inventors in U.S. Ser. No. 08/472,179 filed June 7, 1995 have
assigned to PMC the entire right, title and interest in and to said U.S.
Ser. No. 472,179 by an assignment document dated February 3, 1999 attached
hereto as Exhibit C; and
WHEREAS, Xxxx X. Xxxxxx, Xx. and Xxxx X. Xxxxxx, on the one hand,
and PMC, on the other hand, entered into an Agreement as of the February 21,
1986 ("Prior Agreement"); and
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WHEREAS, Xxxx X. Xxxxxx, Xx. and Xxxx X. Xxxxxx, on the one hand,
and PMC, on the other hand, desire to supersede said Prior Agreement and all
other agreements between the two parties which were entered into prior to
February 3, 1999 and which relate to assignment of patents; and
WHEREAS, Xxxx X. Xxxxxx, Xx., Xxxx X. Xxxxxx and A. Xxxxxxx Xxxxxx,
on the one hand, and Polar Molecular Corporation, on the other hand, desire
to supersede all agreements between the two parties which were entered into
prior to February 3, 1999 and which relate to assignment of patents;
NOW THEREFORE, in consideration of the mutual promises and for other
good and valuable consideration the parties hereby agree as follows:
ARTICLE I - DEFINITIONS
1.1 As used herein, "Assigned Patents" means (a) the U.S. Patents
identified in Exhibit A attached hereto, (b) the foreign patents and patent
applications identified in Exhibit B attached hereto and all patents granted
on such patent applications and (c) the U.S. patent application identified in
Exhibit C attached hereto and any patent issued thereon or on any division,
continuation or continuation-in-part of said U.S. patent application and any
reissues of said patents.
1.2 As used herein the term "Royalty Period" means the time period
extending from January 1, 1995 until the expiration of the last to expire
patent of the Assigned Patents.
ARTICLE II - AFFIRMATION OF ASSIGNMENTS
2.1 The Nelsons hereby affirm, individually and collectively, that
they have assigned to PMC the entire right, title and interest in and to the
U.S. patents identified in Exhibit A attached hereto and any and all
corresponding foreign patents and patent applications by assignment
documents, recorded in the U.S. Patent office at Reel 4833, Frames 979-982
and have assigned all right, title and interest in and to the foreign patents
and patent applications identified in Exhibit B attached hereto and any and
all foreign patents which may be granted on said applications by an
assignment document recorded in the U.S. Patent office at Reel 5281, Frame
703-705 and have assigned all
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right, title and interest in and to U.S. Ser. No. 08/472,179 by an assignment
document attached hereto as Exhibit C.
ARTICLE III - PAYMENTS
3.1 In consideration of the royalty amounts to be paid under Section
3.3 hereof, PMC shall pay Nelsons $2,000,000. PMC will grant to the Nelsons a
security interest in the Assigned Patents that will guarantee payment to the
Nelsons of the amounts required by this Agreement.
3.2 PMC shall give the Nelsons the right to buy 8,200,000 shares of
Polar Molecular Corporation common stock for 0.01 cents per share, such right
being exercisable at any time after execution of this Agreement.
3.3 PMC shall also pay the Nelsons 10% of licensing fees received
during the Royalty Period by PMC on products covered by the Assigned Patents
plus 10% of pre-tax profits where, for purposes of this Agreement, "pre-tax
profits" means the profits of PMC during the Royalty Period which are derived
from sales of products covered by the Assigned Patents but not including
licensing fee receipts.
3.4 All payments due to the Nelsons pursuant to Section 3.3 shall be
paid within 30 days after the end of each quarter of the fiscal year of 2MC
and such payments shall be made by check payable to Xxxx X. Xxxxxx. In the
event of a late payment by PMC, interest shall accrue on the unpaid amount
and be compounded annually at an annual percentage rate equal to the prime
rate of the Norwest Bank of Colorado, N.A., Denver, Colorado commencing on
the due date of the late payment.
3.5 PMC agrees to keep accurate records and books of account showing
all information necessary for the accurate determination of the payments due
the Nelsons hereunder, which records and books of account shall be open. to
inspection at reasonable intervals during regular business hours by the
Nelsons or an independent certified public accountant retained by the Nelsons
for the purpose of verifying PMC's payment obligations pursuant to this
Agreement.
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ARTICLE IV - PREVIOUS AGREEMENTS
4.1 On the effective date of this Agreement, the Prior Agreement and
all other agreements oral or written between any of the Nelsons and PMC which
relate to assignment of patents and which were entered into prior to
February 3, 1999 are hereby terminated and shall have no force and effect and
are superseded by this Agreement.
ARTICLE V - MISCELLANEOUS PROVISIONS
5.1 Any notice required by this Agreement or given in connection
with it, shall be in writing to the address given below and shall be
effective on the day it is received and shall be given to the appropriate
party by personal delivery or by certified mail, postage prepaid, or by a
recognized overnight delivery service.
(a) notices to the Nelsons; shall be addressed to Xxxx X. Xxxxxx
c/o Polar Molecular Corporation, 0000 X. Xxxxxx Xxxxxx, Xxxxx
000, Xxxxxx, Xxxxxxxx 00000 or to such address as specified by
the Nelsons in a written notice to PMC; and
(b) notices to PMC shall be addressed to Polar Molecular
Corporation, 0000 X. Xxxxxx Xxxxxx, Xxxxx 000, Xxxxxx,
Xxxxxxxx 00000 or to such address as specified by PMC in a
written notice to the Nelsons.
5.2 This Agreement shall be binding upon and inure to the benefit of
the parties hereto and their respective successors, heirs, legal
representatives and assigns.
5.3 This Agreement contains the entire understanding and agreement
between the parties regarding the matters to which this Agreement relates.
There are no representations, warranties, promises, covenants, or
understandings other than those herein expressly set forth.
5.4 The parties hereto agree and acknowledge that the inventions,
patents and patent applications are unique assets, and for that reason, among
others, the parties hereto will be irreparably damaged in the event that this
Agreement is not specifically enforced. Therefore, should any dispute arise
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concerning the delivery or transfer of all or any of the patents or patent
applications as required by the terms of this Agreement, an injunction may be
issued mandating the specific performance of the applicable terms of this
Agreement, without the posting of a bond therefor. Such remedy shall,
however, be cumulative and not exclusive of any other remedy which the
parties may have under law.
5.5 This Agreement is made pursuant to and shall be construed under
the laws of the State of Michigan.
5.6 Any controversy or claim arising out of or relating to this
Agreement or the breach thereof shall be settled by Arbitration in accordance
with the rules of the American Arbitration Association, and judgment upon the
award of the Arbitrator or Arbitrators may be entered in any court having
jurisdiction thereof.
IN WITNESS WHEREOF, the parties hereto either for themselves, or by
their duly authorized agents, have hereunto set their hands and seals on the
day and year first above written
ATTEST:
XXXX X. XXXXXX, XX.
/s/ Xxxx ?????? /s/ Xxxx X. Xxxxxx, Xx.
-------------------------------- ---------------------------
ATTEST:
XXXX X. XXXXXX
/s/ Xxxxxx Xxxxxxx Xxxxxxx /s/ Xxxx X. Xxxxxx
-------------------------------- ---------------------------
ATTEST:
A. XXXXXXX XXXXXX
/s/ Xxxx Xxxxxxx /s/ A. Xxxxxxx Xxxxxx
-------------------------------- ---------------------------
ATTEST:
POLAR MOLECULAR CORPORATION
/s/ Xxxxxx Xxxxxxx Xxxxxxx /s/ Xxxx X. Xxxxxx
-------------------------------- ---------------------------
By:
Title: VP Admin. Svcs.
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EXHIBIT A to
REAFFIRMATION AND MODIFICATION OF
PATENT ASSIGNMENT AND ROYALTY AGREEMENTS
UNITED STATES PATENTS
PATENT NO. TITLE ISSUED
---------- ----- ------
4,516,981 RESIDUAL OIL SLUDGE DISPERSANT 5/14/85
4,613,340 RESIDUAL OIL SLUDGE DISPERSANT 9/23/86
4,673,411 ANTI-GEL FUEL ADDITIVE 6/16/87
4,753,661 FUEL CONDITIONER 6/28/88
4,846,847 ANTI-GEL FUEL COMPOSITION 7/11/89
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EXHIBIT B to
REAFFIRMATION AND MODIFICATION OF
PATENT ASSIGNMENT AND ROYALTY AGREEMENTS
FOREIGN PATENTS/PATENT APPLICATIONS
Country Title Ser. No.1/ Xxx. No.1
Filing Dt. Issue Dt.
------- ----- ---------- ---------
Australia MOTOR FUEL ADDITIVE COMPOSITION 74846/91 660,608
AND METHOD FOR PREPARATION 3/05/91 3/05/91
THEREOF
Brazil PI 9106137
3/05/91
Canada 2,077,666
3/05/91
EPC Countries Include: 91/905918.8 0 518 966
3/05/91 12/27/95
Austria, Belgium, Britain,
Denmark, France, Germany,
Greece, Italy, Luxembourg,
Netherlands, Spain, Sweden
and Switzerland
Japan 3-506077
3/05/92
South Korea 92-702149
9/05/92
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EXHIBIT C to
REAFFIRMATION AND MODIFICATION OF
PATENT ASSIGNMENT AND ROYALTY AGREEMENTS
A S S I G N M E N T
For the sum of one -Dollar ($1.00) and other good and valuable
consideration, receipt of which is hereby acknowledged, we, A. Xxxxxxx
Xxxxxx, Xxxx X. Xxxxxx, and Xxxx X. Xxxxxx, Xx., of Suttons Bay, Michigan,
Aurora, Colorado, and Lake Lelanau, Michigan, effective February 3, 1999, do
hereby assign, sell and set over to Polar Molecular Corporation, of Denver,
Colorado, hereinafter referred to as the Assignee, its successors, assigns or
legal representatives, the entire right, title and interest, in and to the,
inventions and discoveries in "MOTOR FUEL ADDITIVE COMPOSITION AND METHOD FOR
PREPARATION THEREOF", as set forth in the Application for United States
Letters Patent Serial No. 08/472,179, filed June 7, 1995, including the right
of said Assignee, its successors, assigns or other legal representatives to
receive Letters Patent for said inventions and discoveries in its or their
own name or names, at its or their election.
And we hereby agree for ourselves, heirs, successors, assigns or
other legal representatives to execute all papers, and to perform any and all
acts which said Assignee, its successors, assigns or other legal
representatives may deem necessary to secure thereto the rights herein
assigned, sold and set over.
And we hereby represent and warrant that we have not granted any
rights inconsistent with the rights granted herein.
/s/ A. Xxxxxxx Xxxxxx /s/ Xxxx X. Xxxxxx
---------------------------------- ----------------------------------
A. Xxxxxxx Xxxxxx Xxxx X. Xxxxxx
/s/ Xxxx X. Xxxxxx, Xx.
----------------------------------
Xxxx X. Xxxxxx, Xx.
STATE OF Florida )
----------
)ss
COUNTY OF Pinellas )
----------
On this 18 day of February, 1999, personally appeared before me
A. Xxxxxxx Xxxxxx, to me known to be the person named in and who executed the
above instrument, and acknowledged
/s/ Xxxx Xxxxxxxx
XXXX XXXXXXXX
[notary stamp] WHO IS MADE PERSONALLY KNOWN TO ME OR WHO
MY COMMISSION # CC 685395 PRODUCED A D.L. AS ???? AND WHO DID/DID NOT
EXPIRES: October 2, 2001 ---------------
Bonded Thru Notary Public ???????????
Underwriters Michigan DL
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that he executed the same for the uses and purposed therein mentioned.
--------------------------
Notary Public
(SEAL)
STATE OF Colorado )
----------
City & )ss
COUNTY OF Denver )
----------
On this 17th day of February, 1999, personally appeared before me,
Xxxx X. Xxxxxx, to me known to be the person named in and who executed
the above instrument, and acknowledged that he executed the same for the
uses and purposed therein mentioned.
/s/ Xxxxxx Xxxxxxx Xxxxxxx
--------------------------
Notary Public
XXXXXX XXXXXXX XXXXXXX
NOTARY PUBLIC
(SEAL) STATE OF COLORADO
My Commission Expires Jan. 27, 2001
[notary stamp]
STATE OF Michigan )
--------------
)ss
COUNTY OF Grand Traverse)
--------------
On this 23rd day of February, 1999, personally appeared before me Xxxx X.
Xxxxxx, Xx., to me known to be the person named in and who executed the above
instrument, and acknowledged that he executed the same for the uses and
purposed therein mentioned.
/s/ Xxxxxx X. Xxxxxxxxxx
--------------------------
Notary Public
XXXXXX X. XXXXXXXXXX, Notary Public
Grand Traverse County, Michigan
(SEAL) My Commission Expires: march 2, 2002
CORRECTION OF TYPOGRAPHICAL ERROR
This Correction of Typographical Error is made as of May 26, 1999.
The agreements listed in Items I through 6 below were entered into during the
period July 1, 1997, through February 3, 1999. Each of the agreements makes
reference to "options to acquire" or "right to buy" shares of the common
stock of Polar Molecular Corporation, at a purchase price of $0.01 per share.
The purchase price of $0.01 per share stated in these agreements is a
typographical error and the correct purchase price is $0.001 per share.
A counterpart of this document is appended to each of the agreements
to supersede the typographical error of $0.01 per share and correct the
purchase price of the shares subject to the agreements to reflect $0.001 per
share.
1. Exclusive License Agreement and Amendment to Exclusive License
Agreement, both effective the 1st day of July, 1997, among
Xxxx X. Xxxxxx, Xx., Xxxx X. Xxxxxx, and Xxxxxx Xxxxxxx Xxxxxx
("the Nelsons"), and Polar Molecular Corporation ("PMC");
2. Consolidated Exclusive License Agreement, effective the 1st
day of July, 1997, among the Nelsons and PMC, for the purpose
of consolidating and superseding the Agreement and Amendment at
Item I above;
3. Reallocation Agreement and Amendment to Reallocation Agreement,
effective the 10th day of January, 1998, among the Nelsons;
4. Individual Assignment of Options documents dated January 10,
1998, from Xxxx X. Xxxxxx, Grantor, to the following
individuals as the respective Grantee:
Xxxxxx Xxxxxxx
Xxxxxx X. Xxx
Xxxx Xxxxxxx
Xxxxxxx Xxxxxx
Xxxxxxx Xxxxx
Xxxxxxx Xxxx, Xx;
5. Individual Acknowledgment of options documents dated
January 10, 1998, from Polar Molecular Corporation, Grantor, to
the following individuals as the respective Grantee:
Xxxx X. Xxxxxx, Xx.
A. Xxxxxxx Xxxxxx; and
6. Reaffirmation and Modification of Patent Assignment and Royalty
Agreements entered into as of the 3rd day of February, 1999,
among the Nelsons and PMC.
