INVENTION TRANSFER AGREEMENT
Exhibit
10.1
INVENTION
TRANSFER
AGREEMENT
This
Invention Transfer Agreement (hereinafter: Agreement)
has been entered into by and between
KALMÁR
XXXX Xxxx (residing at: 1022 Budapest, Alsótörökvész út 14., mother’s
name: XXXXXX Xxxxxx)
(hereinafter:
Inventor), on the one hand,
and
VIDATECHTechnológiai
Kutató, Fejlesztő és Szolgáltató Korlátolt
Felelősségű Társaság (head office: 0000 Xxxxxxxx, Xxxxxxxxx út
94-96.; company registration No.: 00-00-000000, recorded at the [Budapest]
Metropolitan Court as Court of Registration, represented by: KUN Xxxxxx Xx,
Managing Director; hereinafter: Legal Successor), on
the other hand,
(referred
to hereinafter individually as Party and collectively as Parties), at the date
stated hereinbelow.
Whereas
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The
Inventor created an invention (hereinafter:
Invention) to be presumably qualified as
patentable by Pintz and Partners Patent and Trademark Office (Budapest,
District XII, Mártonhegyi út 31.) on the basis of Act XXXIII of 1995 on
the Patent Protection of Inventions (hereinafter: Patent
Act);
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The
Legal Successor is dealing in the exploitation of inventions and
patents,
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Vidatech
is the fully owned subsidiary (registered in the Republic of Hungary)
of
Power of the Dream Ventures, Inc. (a public limited
company registered in the State of Delaware of the United States
of
America, represented by: ROZSNYAY Viktor, Chairman and
CEO);
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the
Parties agreed this day under the following terms and conditions:
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I.
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Definitions
Used in the Agreement
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The
detailed technical and technological description of the Invention is set out
in
Annex No. 1 to the Agreement. The Parties understand by Invention the products
selected jointly by KALMÁR XXXX Xxxx and the Legal
Successor and checked by previous invention research.
The
Parties understand by documentation the detailed technical and technological
description of the Invention (plans of execution and manufacture), on the basis
of which the equipment can be manufactured and whose takeover is acknowledged
by
the Legal Successor by signing this Agreement.
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II.
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Purpose
of the Agreement
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It
is the
purpose of this Agreement that the Inventor transfers to the Legal Successor
the
exclusive right of the Invention’s exploitation and patenting, with the
objective that the Legal Successor has the Invention patented, registered as
patent in the patent registers and manufactures or has the Invention
manufactured or utilise it in the course of manufacturing processes in the
future, in the course of the exploitation of any potential patent (hereinafter:
Patent), and, furthermore, the Legal Successor may
transfer its exclusive right of exploitation to a third party (which may also
be
a US public limited company to be established jointly by the Parties), so that
the Parties should proportionately share in the fees thus
received.
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III.
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Subject-Matter
of the Agreement
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On
the
basis of the Agreement the Inventor assigns the right of patenting and
exploiting the Invention, in the course of the patenting procedure the Legal
Successor will become the exclusive and fully authorised legal successor of
the
Inventor, and the patent claim linked to the Invention shall be due to the
Legal
Successor, while the Legal Successor shall pay a fee in exchange.
On
the
basis of the Agreement the Inventor obliges himself to make all efforts for
the
unhindered continuous development of the Invention, whose costs shall be fully
borne by the Legal Successor under this Agreement.
With
regard to the fact that there has not existed and does not exist any employment
relation (or any other similar legal relation directed to the performance of
work) between the Inventor and the Legal Successor, the Parties declare that
the
Invention is no service or employee invention on the basis of the relationship
between the Parties, consequently this Agreement is no invention fee agreement
or an agreement directed to the exploitation of employee invention. The legal
provisions relating to the service and employee inventions may not apply to
the
Parties’ legal relation included in this Agreement.
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IV.
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Delivery
and Receipt of Rights
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1.
Extent of the assigned right
By
signing this Agreement the patent claim shall devolve upon the Legal Successor,
as legal successor of the Inventor.
By
signing this Agreement the Inventor expressly consents to the submission of
the
patent application and to the publication of the Invention, however, the Legal
Successor will be authorised to do these acts.
The
Agreement is made for unlimited period of time and it shall cover, without
any
territorial restriction, all characteristics of the Invention (and the Patent),
as solution, any possible claims, all methods and extents of
exploitation.
The
Inventor shall warrant throughout the term of the Agreement that the Invention
was created solely by him, and no third party has any right relating to the
Invention which could hinder or restrict the patenting or
exploitation.
The
Inventor shall also warrant that the Invention is technically feasible,
operable, and he acknowledges that a sample material, a prototype have been
handed over to the Legal Successor for the purposes of plant experiments and
measurements, and the Legal Successor has made sure the appropriate operation
thereof.
2.
Exclusivity, transferability
Based
on
the express agreement of the Parties the Legal Successor will acquire the
exclusive right to the patent claim by this Agreement, and in the event of
granting the Patent the Legal Successor, as patentee will be entitled to the
exploitation of the Patent in any manner whatsoever and to decision-making
thereon with the consent of the Inventor.
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The
Parties expressly agree that the Legal Successor will not be entitled to assign
to any third party the rights embodied by and transferred in this Agreement
or
to grant licence of utilisation to any third party without any further
permission and consent. The Legal Successor shall inform the Inventor on any
major decision and they shall make the decision with common consent in each
case.
3.
Obligation of disclosure of information
The
Inventor shall disclose to the Legal Successor any necessary information (thus
particularly the information required in the patent proceeding) related to
the
Invention, supply deeds and documents, inform the Legal Successor on any
relevant rights and important circumstances and disclose the economic, technical
and organisational knowledge and experience (know-how) related to the
implementation of the Invention.
In
the
event of the transfer to a third party of such rights the obligations set out
in
this Clause shall charge the Inventor vis-à-vis this third party.
The
Inventor obliges himself to make or obtain the declarations required for the
patenting of the Invention and for recording the Legal Successor, as patentee,
in the register kept on patent applications and/or in the patent register,
furthermore, he will do all legal acts required for the Legal Successor’s
acquisition of right, and whose performance is not possible or is possible
for
the Legal Successor only in the event of undertaking essentially more
difficulties.
4.
Counter-value, consideration
60%,
say
sixty percent, of all revenues due in the course of the exploitation of the
Invention (including the fees payable by the third party, if the Legal Successor
assigns the exclusive right of exploitation or the patent right to a third
party) shall be due to the Legal Successor, while 40%, say forty percent thereof
shall be due to the Inventor as gross inventor’s fee (royalty), i.e. the
inventor’s fee shall include, based on the express agreement of the Parties, the
general turnover tax (VAT) payable, as well as the amounts of the deductible
taxes and other public dues.
All
costs
related to the patenting, exploitation of the Invention and the assignment
of
the related rights (expenditures in material and personal nature, out-of-pocket
expenses, fees and duties, etc.) shall charge the Legal Successor.
The
Legal
Successor agrees to pay HUF 5,000,000, say five million Forints gross for each
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pieces of jointly accepted inventions to the Inventor after the documented
delivery of the inventions.
The
costs
of the manufacturing activity linked to the Patent, the costs related to the
manufacturing processes and the sales of the products shall be borne jointly
by
the Parties, i.e. in the event of direct manufacture and sales (or manufacture
and sales made with the involvement of subcontractor) it will not be 40% of
the
Legal Successor’s revenue, but 40%, say forty percent, of the operational result
derived from this activity for the Legal Successor, which shall be due to the
Inventor, as inventor’s fee.
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5.
Performance of payment obligations, payment
securities
The
Legal
Successor shall send the Inventor a written notice (settlement of accounts)
on
the inventor’s fee regulated in Clause IV. 4. above, the last day of each
quarter inclusively, within 10 (ten) business days following the given quarter.
The Inventor shall, within 10 (ten) business days of receipt, approve the
settlement of accounts in writing or he may dispute it in writing, in the
absence of which the settlement of accounts shall be deemed to have been
expressly accepted and approved. The Inventor may dispute the settlement of
accounts subsequently exclusively with reference to the fact that he was deluded
in respect of the facts serving as basis for the settlement of
accounts.
6.
Checking of the business books
The
Inventor will be entitled to check the appropriateness of the settlement of
accounts defined in Clause IV. 5 above and to inspect the financial certificates
linked to this Agreement at the Inventor’s head office (premises).
V.
Miscellaneous Provisions
1.
Territorial effect of the Agreement
The
territorial effect of the Agreement shall cover all countries of the Earth
without restriction.
2.
Term of the Agreement, expiry of the Agreement
The
Parties conclude the Agreement for indefinite term from signature.
3.
Amendment to the Agreement
Both
Parties reserve the right of amendment, if that variation is advantageous for
both Parties
The
Agreement shall cease to exist for the future, if
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the
potential Patent itself, i.e. all rights linked to the Patent (including
the status of patentee) is sold to a third party and the Parties
have
settled accounts with each other on the basis
thereof.
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3.
Reasons for termination. Stipulation of the right of termination by
extraordinary notice.
The
Agreement may not be terminated by ordinary notice.
The
Agreement may be terminated by either Party with extraordinary notice with
immediate effect, in writing, if the other Party violates the Agreement
seriously, in spite of written warning of the consequences. The Parties shall
deem the following circumstances to be serious breaches:
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The
Inventor fails to meet its obligations of warranty defined in Clause
IV.
1. of this Agreement in any
respect;
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The
Legal Successor fails to pay the inventor’s fee approved by the Inventor
in spite of written notice, within 30 (thirty) days of the
notice.
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4.
Stipulation of the applicable law
In
the
issues not regulated in the Agreement the Parties shall consider the provisions
of Hungarian law, thus particularly those of the Patent Act (Act XXXIII of
1995
on the Patent Protection of Inventions) and the Civil Code, to be compulsory
for
themselves.
5.
Amicable settlement of legal disputes resulting from the Agreement. Stipulation
of jurisdiction.
In
the
event of any possible legal disputes related to the Agreement the Parties shall
make efforts for settlement through negotiations. Should this have no result,
the Parties stipulate already now the exclusive jurisdiction of the [Budapest]
Metropolitan Court.
6.
Confidentiality
The
Parties hereto agree that the facts, data and information they have become
aware
of relating to each other in the course of the conclusion and performance of
the
Agreement shall qualify as business secret and they shall handle them
confidentially, in accordance with the rules relating to business secret. This
obligation shall cover the Parties’ employees, representatives, subcontractors,
etc. and in general any persons who/which obtain the business secret with the
contribution of the given Party in the interest of the performance of the
Agreement.
The
protection of business secret shall cover also the fact that no party will
be
entitled to make accessible or to disclose to any third party any information
or
document related to the Agreement, particularly any information, business idea,
plan, design or method that has become known to him/it on the business or
marketing activity of the other Party, without the written consent of the other
Party.
The
Parties hereto lay down that also the information acquired with the contribution
of a person being in fiduciary relation or business relation with the other
Party, at the time or prior to the acquisition of the secret, without the
consent of the other Party, shall qualify as violation of business
secret.
The
confidentiality provisions shall remain in force and effect until the elapse
of
5 (five) years after the termination of the Agreement.
7.
Notices
The
notices related to the Agreement shall be forwarded to the Party concerned
in
writing, in registered mail, through hand delivery or via telefax message to
the
address defined below or to the address communicated by the other Party
previously for this purpose.
If
to the
Inventor:
KALMÁR
XXXX Xxxx
0000
Xxxxxxxx, Xxxxxxxxxxxxx xx 00.
E-mail:
Telephone:
30 / 000 00 00
Telefax:
5
If
to the
Legal Successor:
Vidatech
Kft.
0000
Xxxxxxxx, Xxxxxxxxx xx 00-00.
E-mail:
xxxx@xxxxxxxxxxxxxxx.xxx
Telephone:
x00-0-000-0000
Telefax:
x00-0-000-0000
The
Parties shall communicate to each other in writing, without delay, any change
in
the addresses defined in this Clause or in the identity of the person to be
notified, which change will not require any amendment to the Agreement; the
defaulting Party may not enforce the damages resulting from defaulting the
announcement.
The
notices shall be deemed to have been served as follows: in the event of hand
delivery, when the consignment is taken over by the recipient; in the event
of
mailing, when the acknowledgement of receipt is signed by the recipient; if
the
acknowledgement of receipt is not signed, then on the fifth business day
following the second attempt of service; in the event of telefax communication,
when confirmation is received at the end of the transmission, relating to the
successful transmission; in the event of e-mail message, when the sending Party
has received confirmation of the receipt of the message.
The
Parties have read and interpreted this Agreement and then signed it approvingly,
as a deed in full conformity with their will.
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Budapest,
13 August 2007
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KALMÁR
XXXX Xxxx,
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Legal
Successor, the representative thereof
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Inventor
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on
behalf of
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Power
of the Dream Ventures, Inc.
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6
Annex
No. 1 forming the inseparable part of the
A
The
Invention Transfer Agreement dated 13 August 2007 (hereinafter:
Agreement), entered into by and between KALMÁR
XXXX Xxxx (residential address: 1022 Budapest, Alsótörökvész út 14.,
mother’s name: XXXXXX Xxxxxx)
(hereinafter:
Inventor), on the one hand;
and
VIDATECHTechnológiai
Kutató, Fejlesztő és Szolgáltató Korlátolt
Felelősségű Társaság (head office: 0000 Xxxxxxxx, Xxxxxxxxx út
94-96.; company registration No.: 00-00-000000, recorded at the [Budapest]
Metropolitan Court as Court of Registration, represented by: KUN Xxxxxx Xx.,
Managing Director; hereinafter: Legal
Successor).
Invention:
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1.
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KALMÁR
NAGY Imre’s invention on the subject-matter of “Fire-Resistant
Liquid”
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2.
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KALMÁR
NAGY Imre’s invention on the subject-matter of “Technology for Processing
Communal Waste”
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3.
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KALMÁR
NAGY Imre’s invention on the subject-matter of “Technology for Repairing
Potholes”
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Budapest,
13 August 2007
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KALMÁR
XXXX Xxxx,
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Legal
Successor, the representative thereof
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Inventor
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on
behalf of
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Power
of the Dream Ventures, Inc.
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