Exhibit 10.1
OPTION AGREEMENT
TO PURCHASE PATENT PENDING
This agreement is made on August 16, 2001, between Xxxxxx Xxxxxxx, 0000 Xxxx
Xxxxxxx, Xx. Xxxx, XX 00000, "Xxxxxxx", and Xxxxxx X. Xxxxx, 0000 X. Xxxx, X.X.,
Xxxxxx, Xxxx 00000, "Xxxxx".
Whereas, Xxxxxxx is the owner of a patent pending for a utility patent on a
locking pliers design ("Locking Pliers", serial number 09/288,115) and is
interested in selling an option to purchase the patent as set forth below; and,
Whereas, Xxxxx is willing to pay certain legal and patent office costs in
exchange for an option to purchase the patent pending;
NOW, THEREFORE, in consideration for the premises and following, the parties
agree as follows:
1. OPTIONED INTELLECTUAL PROPERTY: Xxxxxxx grants Xxxxx an option to purchase
his interest in a patent pending titled "Locking Pliers", filed with the
United States Department of Commerce Patent and Trademark Office on 4/8/99
as application number 09/288,115, attorney docket no. 98-1709 (hereinafter
referred to as "Patent Pending"), currently subject to notice of
abandonment mailed 10/4/00, with reinstatement subject to payment of
petition fee, issue fee and granting of petition.
2. CONSIDERATION FOR OPTION: Xxxxx agrees to pay all attorney's, government
and other fees, costs and expenses incurred by Xxxxxxx to revive the Patent
Pending in a total amount not to exceed fifteen hundred dollars ($1,500),
plus Xxxxxxx'x attorney's fees paid for preparation of this Agreement in an
amount not to exceed five-hundred dollars ($500). Xxxxx further agrees to
pay all costs, expenses and attorney's fees necessary, after reinstatement
of the patent pending, to maintain the patent pending prior to or after
exercise of the option.
3. EXERCISE OF OPTION: Upon payment of all consideration for the option and
reinstatement of the Patent Application, Xxxxx shall be entitled to
exercise his option by payment to Xxxxxxx of ten thousand eight hundred
dollars. Xxxxxxx agrees that his ownership interest in the Patent Pending
shall immediately be assigned to Xxxxx and agrees to execute such further
and additional documents as Xxxxx may from time to time request to document
and prove such assignment. Xxxxx'x right to exercise shall expire Eighteen
(18) months after execution of this Agreement.
4. CONSIDERATION FOR ASSIGNMENT OF PATENT PENDING: Xxxxx agrees to pay to
Xxxxxxx, his heirs, agents, assignees or devisees, eight percent of the
Gross Consideration received by him or his permitted assignees as result of
his ownership of the Patent Pending, resulting Patent or any derivative or
modified patent, product or design (Derivatives). Such Gross Consideration
shall include but not be limited to
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anything of value received by Xxxxx in exchange for the use or licensing of
the Patent Pending or Derivatives. Any consideration received by Xxxxx in
exchange for his transfer of this Option or the Patent pending or any
interest therein to E AND S HOLDINGS, INC. is expressly excluded from Gross
Consideration. Xxxxx or his permitted assignees shall make payment of the
eight percent prior to the last day of the month following the month in
which Gross Consideration is received.
5. LIMITATION ON TRANSFER: Xxxxx agrees not to transfer his ownership in the
Patent Pending or subsequently issued Patent, except to an entity wholly
owned by him and controlled by him, or to an entity or individual or
individuals approved by Xxxxxxx in writing prior to assignment. No
assignment shall be made unless and until the assignee agrees in writing to
be bound by the terms of this Agreement and if requested by Schmitt, Barth,
in a form approved by Xxxxxxx, agrees to indemnify Xxxxxxx for any losses
suffered as a result of such third party's breach of this agreement.
Subject to the foregoing, this Agreement and the rights and obligations set
forth herein shall inure to the benefit of, and be binding upon, the
parties hereto and each of their respective permitted successors, assigns,
heirs, executors and administrators. Notwithstanding anything to the
contrary stated herein, Xxxxxxx expressly consents to the assignment by
Xxxxx of this Agreement to E AND S HOLDINGS, INC. a Nevada corporation, and
Xxxxx represents and warrants that he is the controlling shareholder of
said corporation and that it will be bound by all terms and conditions of
this Agreement.
6. ARBITRATION. All disputes arising out of or relating to this Agreement,
which cannot be settled by the parties, shall promptly be submitted to and
determined by a single arbitrator in St. Xxxx, Minnesota, pursuant to the
rules and regulations then obtaining of the American Arbitration
Association. The decision of the arbitrator shall be final and binding upon
the parties, and judgment upon such decision may be entered in any court of
competent jurisdiction. Discovery shall be allowed pursuant to the
intendment of the United States Federal Rules of Civil Procedure and as the
arbitrators determine appropriate under the circumstances. Such arbitrator
shall be required to apply the contractual provisions hereof in deciding
any matter submitted to it and shall not have any authority, by reason of
this Agreement or otherwise, to render a decision that is contrary to the
mutual intent of the parties as set forth in this Agreement.
7. SEVERABILITY. The invalidity or unenforceability of any particular
provision or part of any provision of this Agreement shall not affect the
other provisions or parts hereof. If any provision hereof is determined to
be invalid or unenforceable by a court of competent jurisdiction by reason
of the duration or geographical scope of the covenants contained therein,
such duration or geographical scope, or both, shall be reduced to a
duration or geographical scope to the extent necessary to cure such
invalidity.
8. ENTIRE AGREEMENT AND MODIFICATION. This Agreement constitutes the entire
agreement between the parties hereto with respect to the matters
contemplated herein and supersedes all prior agreements and understandings
with respect thereto. Any amendment, modification, or waiver of this
Agreement shall not be effective unless in writing. Neither the failure nor
any delay on the part of any party to exercise any right, remedy, power or
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privilege hereunder shall operate as a waiver thereof, nor shall any single
or partial exercise of any right, remedy, power or privilege preclude any
other or further exercise of the same or of any other right, remedy, power,
or privilege with respect to any occurrence be construed as a waiver of any
right, remedy, power, or privilege with respect to any other occurrence.
9. GOVERNING LAW. This Agreement is made pursuant to, and shall be construed
and enforced in accordance with, the internal laws of the State of
Minnesota (and United States federal law, to the extent applicable).
10. WAIVER. Unless expressly provided, the waiver by a party of any breach of
any provision of this Agreement shall not constitute or operate as a waiver
of any other breach of such provision or of any other provision hereof, nor
shall any failure to enforce any provision hereof operate as a waiver of
such provision or of any other provision hereof.
11. HEADINGS; COUNTERPARTS. The headings of paragraphs in this Agreement are
for convenience only and shall not affect its interpretation. This
Agreement may be executed in two or more counterparts, each of which shall
be deemed to be an original and all of which, when taken together, shall be
deemed to constitute but one and the same Agreement.
12. FURTHER ASSURANCES. Each of the parties hereto shall execute such further
instruments and take such other actions as any other party shall reasonably
request in order to effectuate the purposes of this Agreement. In the event
that the parties cannot agree on the terms of any such further instrument,
there shall be no subsequent instrument unless a party desiring it elects
to bring the matter to arbitration.
13. EXECUTION BY FACSIMILLIE COPY: This agreement may be executed by faxed copy
and a single original faxed copy bearing duplicate signature pages, which
together bear the signatures of both parties, shall be enforceable, as
would an original bearing original signatures, for all purposes.
14. NOTICES. All notices hereunder shall be in writing and shall be
sufficiently given if hand-delivered, sent by documented overnight delivery
service or registered or certified mail, postage prepaid, return receipt
requested or by telegram, fax or telecopy (confirmed by U.S. mail), receipt
acknowledged, addressed as set forth below or to such other person and/or
at such other address as may be furnished in writing by any party hereto to
the other. Any such notice shall be deemed to have been given as of the
date received, in the case of personal delivery, or on the date shown on
the receipt or confirmation therefor, in all other cases. Any and all
service of process and any other notice in any such action, suit or
proceeding shall be effective against any party if given as provided in
this Agreement; provided that nothing herein shall be deemed to affect the
right of any party to serve process in any other manner permitted by law.
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If to Xxxxxxx:
Xxxxxx Xxxxxxx
0000 Xxxxxxx
Xx. Xxxx, XX 00000
With a copies to:
Legal Counsel: Xxxxxxx X. Bend
Bend & Xxxxxxxxx, P.A.
Address: St. Xxxx Building, Suite 000
Xxx Xxxx Xxxxx Xxxxxx
Xx. Xxxx, XX 00000
If to Xxxxx:
Xxxxxx Xxxxx
0000 X. Xxxx, X.X.
Xxxxxx, Xxxx 00000
Executed by the Parties this 10`h Day of August, 2001
/s/ Xxxxxx X. Xxxxx
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Xxxxxx X. Xxxxx
/s/ Xxxxxx Xxxxxxx
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Xxxxxx Xxxxxxx
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