Exhibit 10.1
DEED OF AGREEMENT FOR ASSIGNMENT OF INTELLECTUAL PROPERTY
THIS DEED is made the day of June 2000
BETWEEN: GLOBAL POWER & WATER INC, a company organised and existing under the
laws of the United States of America ("Global")
AND: AQUADYNE INC, a company organised and existing under the laws of the
United States of America, ("AquaDyne")
WHEREAS:
A. Global claims to be and warrants that it is the legal and beneficial
owner of all patent and other intellectual property rights deriving
from or otherwise associated with an invention called the JetWater
System ("the Product"), which is a distillation method water
purification system that utilizes an afterburner to heat water
containing effluent from commercial and other applications to
temperatures greatly exceeding those achieved by existing water
distillation systems, reduces solids down to submicron size, extracts
them and discharges clear and sterile water
B. Global has agreed to assign its entire rights, title and interest in
the patents and other intellectual property rights deriving from or
otherwise associated with the Product to AquaDyne, in consideration for
the allotment of shares in AquaDyne to Global and this Agreement
embodies the entire terms of this assignment as agreed between the
parties hereto.
NOW THE PARTIES AGREE as follows:
ARTICLE 1 INTERPRETATION
1.1 Unless the context otherwise requires, the following expressions shall
have the meanings ascribed to them:
"AGREEMENT" means this assignment agreement and amendments hereto and
any other instrument expressed to be supplemental to this agreement and
all amendments thereto.
"ASSIGNMENT" means the assignment of the Intellectual Property to
AquaDyne pursuant to this Agreement
"CONFIDENTIAL INFORMATION" means any and all confidential information
relating to the Product, all client lists, formulae, notes,
correspondence, drawings and other written material or software
associated with the Product including all that information, advice and
know-how of a proprietary nature relating to the Product.
"COPYRIGHT" means those rights of copyright under the Commonwealth
Copyright Act in respect of the Product and other rights of copyright
throughout the World.
"DESIGN RIGHTS" means those rights comprised in a definition of a
registered design in the Design Act (1906) of the Commonwealth of
Australia granted in relation to the Product together with all rights
of registered design now confirmed by the laws enforced in the other
parts of the World.
"FUTURE RIGHTS" means, jointly and severally, all those rights
(statutory and otherwise) comprised in the definition of Design Rights,
Patent Rights, Trade Xxxx Rights or Copyright which may in the future
be created.
"IMPROVEMENTS" means any method or approach which can be adapted to the
Product which would make it cheaper, more effective, in any way easier
to access or more useful or valuable or in any way preferable as a
commercial article, system or process in any part of the World in
relation to the Product and which has been or is ever developed.
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"INTELLECTUAL PROPERTY" means, jointly and severally, the Future
Rights, the Patent Rights, the Copyright, the Design Rights, the Trade
Xxxx Rights and any other rights that may at any time exist in relation
to the Product.
"PARTIES" means the parties to this Deed, being Global and AquaDyne.
"PATENT APPLICATION" means International Patent Application
No. PQ5402 filed under the PCT and given an international filing date
of 2 February 2000, a copy of which is contained in Schedule 1 of this
Agreement.
"PATENT RIGHTS" means, jointly and severally, all present and future
patents and applications therefor relating to the Product, including,
without limiting the generality of the foregoing, the Patent
Application, filed in any country in the world, and all divisions,
continuation, continuation in part, supplemental disclosure and
reissues thereof, and without limiting the generality of the foregoing,
those patent rights pursuant to the Commonwealth Patents Xxx 0000 in
relation to the Product and the right to register patents in relation
to the Product throughout other countries of the World.
"PCT" means the Patent Cooperation Treaty signed at Washington on 19th
June 1970.
"PRODUCT" means the invention entitled the JetWater System in relation
to which the Patent Application has been made and which is more fully
described in such application, together with the Improvements.
"RESTRAINT AREAS" means each of: all the States or Territories of
Australia, the Commonwealth of Australia, any country of the World in
which the Product is patented or an application for a patent has been
or is ever lodged or where any other form of intellectual property in
relation to the Product is registered, or has been or is ever applied
for, and any country in the World which recognises any right, title or
interest in any intellectual property, whether arising in that country
or any other country, relating to the Product.
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"RESTRAINT PERIOD" means in relation to each Restraint Area, the period
during which any Patent Rights or other Intellectual Property rights
shall remain registered or recognised, as the case may be and shall not
have expired within that Restraint Area.
"SUCCESSFULLY COMPLETING THE TESTING PROGRAMME" means that the
independent testing organization to be nominated by AquaDyne has
confirmed that the Product meets all of the tests conducted in relation
to the Testing Programme.
"TESTING PROGRAMME" means a programme of tests to be conducted in
Australia by a National Australia Testing Authority accredited
laboratory recognized worldwide and approved by AquaDyne, to establish
whether a working prototype of the Product meets the applicable
Australian Standards Authority standards for potable water, or such
other appropriate standards as AquaDyne shall reasonably require, such
results to be reviewed and confirmed by the independent testing
organization to be nominated by AquaDyne.
"TRADE XXXX RIGHTS" means those rights in the trade nominations
developed or acquired by AquaDyne which might describe the Product or
such other names in respect of the Product which are capable of
protection under the Trade Xxxx Act 1955 (as amended) and the Trade
Xxxx Regulations of the Commonwealth of Australia, the Business Names
Act or the Corporations Law of the respective states of the
Commonwealth and by similar laws in all other countries throughout the
World.
"WORLD" means, jointly and severally, all territories and countries of
the World including the Commonwealth of Australia.
1.2 GENERAL Unless the context otherwise requires, a reference to:
1.2.1 a person includes a body corporate;
1.2.2 the singular number includes the plural number and vice versa;
1.2.3 one gender includes all other genders;
1.2.4 a statute, regulation or section or provision of a statute or
regulation ("a Statutory Provision") includes:
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(a) that Statutory Provision as amended or re-enacted
from time to time; and
(b) a statute, regulation or provision enacted in
replacement of that Statutory Provision, or
incorporating any of its provisions.
1.3 All monetary amounts are in United States dollars, unless otherwise
stated.
1.4 If a party consists of more than one person, this Agreement binds them
jointly and each of them severally.
1.5 Headings are for convenience only and do not affect the interpretation,
or form part of, this Agreement.
1.6 "Including" and similar expressions are not words of limitation.
1.7 Where an expression is of the form "a or b" it shall include "a or b
and both a and b".
1.8 Where a word or expression is given a particular meaning, other parts
of speech and grammatical forms of that word or expression have a
corresponding meaning.
ARTICLE 2 AGREEMENT TO ASSIGN INTELLECTUAL PROPERTY TO AQUADYNE
2.1 Global hereby assigns and agrees to set over free of all encumbrances,
liens and adverse interests whatsoever to AquaDyne absolutely to hold
all the exclusive right, title and interest in and to the Intellectual
Property and all rights of action, powers, immunities and benefits
belonging or accrued in any way whatsoever thereto, the completion of
which assignment will occur contemporaneously with the allotment of
AquaDyne shares to Global or its nominee pursuant to Article 3.1.1
hereof.
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ARTICLE 3 CONSIDERATION FOR ASSIGNMENT OF INTELLECTUAL PROPERTY AND
TESTING PROGRAMME
3.1 In consideration for the assignment of the Intellectual Property to
AquaDyne, AquaDyne undertakes to allot a total of 6 million shares of
its ordinary stock to Global (or its nominee if Global shall so
request) such stock to be treated as fully paid up and to be allotted
as follows:
3.1.1 4 million shares shall be allotted within 14 days of the
execution of this Agreement; and
3.1.2 One million shares shall be allotted within 14 days of a
working prototype of the Product Successfully Completing the
Testing Programme; and
3.1.3 One million shares shall be allotted within 14 days of
AquaDyne receiving from Global a fully working prototype of
the Product which is ready for large scale production and
deployment in commercial applications.
AND AquaDyne undertakes to convene a meeting of its Board of Directors
within 7 days of the execution of this Agreement, at which meeting it
will approve the allotments on those terms.
3.2 The Testing Programme shall commence as soon as reasonably possible
following the execution of this Agreement. The tests to be carried out
on the Product will be conducted in Australia by a National Australia
Testing Authority accredited laboratory recognized worldwide and
approved by AquaDyne and will determine whether a working prototype of
the Product meets the applicable Australian Standards Authority
standards for potable water, or such other appropriate standards as
AquaDyne shall reasonably require, such results to be reviewed and
confirmed by an independent testing organization to be nominated by
AquaDyne. AquaDyne is to nominate the independent testing organisation
before the commencement of the Testing Programme.
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ARTICLE 4 DATE, EXECUTION AND FORM OF ASSIGNMENT OF PATENT APPLICATION
AND OTHER INTELLECTUAL PROPERTY
4.1 On the date the shares referred to in Article 3.1.1 are transferred to
Global (or, as the case may be, its nominee), or such that the other
date thereafter that AquaDyne may request, Global shall at the cost of
AquaDyne execute the form of assignment in relation to the Patent
Application set out in Schedule 2 or such other form of assignment as
may be submitted to it by AquaDyne, in order to register the Patent
Application in AquaDyne's name (or its nominee's if AquaDyne shall so
request), as sole owner, pursuant to the Patents Xxx 0000 and shall
expeditiously execute such other forms of assignment and other
documents in respect of the Patent Application or the other
Intellectual Property, as applicable, as may be submitted to it by
AquaDyne and shall perform such other acts as AquaDyne may reasonably
require it to perform, from time to time, in order to register the
Intellectual Property in the name of AquaDyne (or, as the case may be,
its nominee) as sole owner pursuant to any other relevant statutory
provision in any country in the World and all fees, costs and expenses
incurred by Global in connection with all of the foregoing shall be
borne and paid by AquaDyne.
ARTICLE 5 WARRANTIES BY GLOBAL
5.1 Global each warrants and guarantees:
5.1.1 the validity of the Patent Application and other Intellectual
Property, including, without limiting the generality of the
foregoing, that:
5.1.1(a) the Patent Application was made in the prescribed
form and the prescribed manner, is presently
subsisting and has not lapsed;
5.1.1(b) the Product does not infringe any patent or similar
intellectual property right not held by Global and
assigned to AquaDyne hereunder;
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5.1.1(c) it is not aware of any fact by which the Patent
Application and any other Intellectual Property may
be declared invalid, or any claim by which the Patent
Application or any other Intellectual Property
application should be amended;
5.1.2 that Global is solely, absolutely and beneficially entitled to
the full right, title and interest in the Product and the
Intellectual Property which currently exists Global or
AquaDyne may develop, and to all rights pertaining thereto
free of any form of encumbrance whatsoever;
5.1.3 that the use by AquaDyne and any sub-licensee of AquaDyne of
the Intellectual Property will not, to the best of its
knowledge, infringe any patent, trade xxxx, registered design,
copyright or similar or other industrial commercial property
rights of any person, nor give rise to liability for AquaDyne
or any sub-licensee of AquaDyne to pay royalty or compensation
to any third party;
5.1.4 that is entitled to all the benefits of the patent
applications that they have made and that the Product that is
the subject of such applications is not, to the best of its
knowledge, part of the state of the art;
5.1.5 it has not granted any licenses or other user rights to any
person in relation to any right, title or interest in the
Intellectual Property or the Product;
5.1.6 it has not entered into any agreement or arrangement which is
currently in effect involving the sale, mortgage, pledge,
granting of options or other rights over its right, title and
interest in the Intellectual Property;
5.1.7 Global has full power and authority to make the Assignment;
5.1.8 it has not knowingly done or omitted to do, or permitted any
other to do or omit to do, any act or thing whatsoever whereby
the Intellectual Property may be invalidated, or whereby the
title thereto may be encumbered or otherwise prejudicially
affected, or whereby a patent or other Intellectual Property
right may not be granted, or by which the due performance of
this Agreement shall be hindered or prevented in any way
whatsoever;
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5.1.9 it has not disclosed and will not disclose any of the
Confidential Information to any person;
5.1.10 there is no claim or suit or litigation pending concerning or
purporting to affect adversely the Intellectual Property;
5.1.11 each and every concept which is essential to the operation of
the Product has been included in the Intellectual Property
assigned hereunder;
5.1.12 it is not aware of any contrary patent application for the
Product anywhere in the World; and
5.1.13 neither the execution of this Agreement nor the performance of
its obligations hereunder will cause it to be in breach of any
arrangement, obligation, or agreement to which it is party or
otherwise subject.
5.2 Global warrants and guarantees that its has entered into this Agreement
in good faith and will at all times act in good faith in the best
interests of AquaDyne in relation to the Intellectual Property.
ARTICLE 6 COVENANTS BY GLOBAL
6.1 Global hereby undertakes to AquaDyne, at the cost and expense of
AquaDyne:
6.1.1 at any time hereafter, to sign any document and perform any
act whatever that AquaDyne may request in connection with the
registration of the Patent Application, or any other
Intellectual Property right, and without limiting the
generality of the foregoing shall include the first
registration, maintenance, renewal or replacement thereof;
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6.1.2 that it will use its best endeavours to more completely assure
and confirm the Assignment;
6.1.3 that it shall permit AquaDyne to amend any present or
subsequent application in respect of the Patent Application or
other Intellectual Property right, without any consent of or
reference to Xxxxxx, JetWater or Global, where such amendment
is necessary or appropriate in the opinion of AquaDyne in
order to obtain a grant of Intellectual Property from relevant
statutory authority in any country in the World;
6.1.4 that in the event Global is either unwilling or unable to
comply with Article 6.1.1, 6.1.2 or 6.1.3 within 14 days of
receipt of a written request by AquaDyne to do so, Global
hereby irrevocably appoints any director of AquaDyne, the
secretary of AquaDyne, or such other officer or employee of
AquaDyne as AquaDyne shall nominate, its attorney in any part
of the World in respect of the activities envisaged by Article
6, for the purpose of AquaDyne having the full use, benefit
and protection of the Patent Application and other
Intellectual Property and Global hereby agrees to ratify and
confirm all and whatsoever the attorney or his substitute
shall lawfully do or cause to be done by virtue of the power
of attorney contained in this Article 6.1.4 and authorises the
attorney to register the power of attorney at any place.
6.1.5 that it will allow AquaDyne at all times hereafter to enjoy
the sole and absolute use and benefit of the Intellectual
Property wherever granted throughout the World without
interruption, disturbance or interference from or by any
person claiming through, under, in right of, or in trust for
text;
6.1.6 refrain without written consent of AquaDyne from disclosing to
any person the nature of the Product; and
6.1.7 where it becomes aware of an exploitation of the Intellectual
Property by any other person in contravention of this
Agreement or AquaDyne's right, title or interest in the
Intellectual Property, notify AquaDyne forthwith and
thereafter to co-operate in every way whatsoever with AquaDyne
in the event that AquaDyne commences and action against any
such person, as AquaDyne may deem expedient
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ARTICLE 7 FURTHER DEVELOPMENTS OF THE PRODUCT
7.1 In the event that Global shall develop, make or acquire any
Improvements anywhere in the World, it hereby expressly undertakes to
notify AquaDyne forthwith and describe the nature of the same and to do
all things as may be necessary or appropriate in the opinion of
AquaDyne to vest absolutely in, or transfer to AquaDyne (or its
nominee), any Future Rights available in respect of the Improvements
and all objects comprising, describing or in any way referring to the
Improvements shall forthwith be delivered to AquaDyne
7.2 Global hereby expressly agrees to treat all Improvements as
confidential and secret, whether or not the Improvement is capable of
protection by Future Rights, and hereby expressly undertakes to refrain
from:
7.2.1 disclosing to any person the nature of all Improvements, or
any documents or other information acquired by AquaDyne or
them in the course of creating the Improvements; and
7.2.2 using any document or such information for any purpose other
than the ongoing commercialisation and exploitation of the
Intellectual Property by AquaDyne.
ARTICLE 8 RESTRAINT
8.1 Global shall not, without having first obtained the written consent of
AquaDyne:
8.1.1 during the Restraint Period within any of the Restraint Areas
conduct or carry on, on its own account, in partnership, joint
venture or otherwise be concerned or interested directly or
indirectly, whether as trustee, principal, agent, employee,
shareholder, unit holder, independent contractor, consultant,
adviser, or in any other capacity whatsoever, in any business
or activity of a nature directly competitive with the
Intellectual Property, or in any way canvas or solicit orders
in competition with the Intellectual Property; and
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8.1.2 after the conclusion of the Restraint Period, use to its own
advantage or to the detriment of AquaDyne, or except on
compulsion of law disclose to any person, or cause to be so
used or disclosed, any information which has come to its
knowledge or which it has otherwise acquired during its
association with AquaDyne or the Product.
8.2 Global hereby expressly accepts and acknowledges the restraints set out
in this Article 8 and expressly agrees that they are entirely
reasonable and acceptable in the circumstances of this Agreement.
ARTICLE 9 INDEMNITY
9.1 Global will indemnify and at all times hold AquaDyne fully and
effectively indemnified against any losses, costs, actions, claims,
demands, expenses, judgments, court orders or other liabilities arising
directly or indirectly out of or in connection with any breach by it of
any of the representations, warranties, or covenants contained in this
Agreement.
10 WARRANTIES, COVENANTS AND UNDERTAKINGS NOT TO MERGE OR BE EXTINGUISHED
10.1 The warranties and covenants by Global contained in this Agreement
shall not merge or be extinguished, but shall be and remain in full
force and effect until satisfied as discharged in accordance with the
terms of this Agreement. Each obligation, warranty, covenant or
undertaking which is capable of having future operation continues in
force although this Agreement has otherwise been fully performed or
terminated.
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ARTICLE 11 AQUADYNE TO BEST EXPLOIT AND PROTECT THE INTELLECTUAL PROPERTY
11.1 In consideration of the assignment of the Intellectual Property to
AquaDyne, AquaDyne hereby agrees to:
11.1.1 use its best efforts to exploit the Intellectual Property to
the best commercial advantage and will use its best efforts to
carry out such research and development as shall be necessary
to diligently advance and improve the Product in order to be
able to most successfully commercialise and exploit the
Product throughout the World;
11.1.2 pay all fees and perform all other acts as shall be necessary
to obtain the patent applied for under the Patent Application
and to obtain further patents and other Intellectual Property
rights in such other countries in the World as shall be
necessary or desirable to protect its ownership and beneficial
enjoyment and commercial exploitation of the Product, together
with all renewal fees necessary to keep the Patents and other
Intellectual Property rights in force, each such payment to be
effected not later than seven days before the last due date
thereof;
11.1.3 use its best efforts to procure the grant of all Patents and
other Intellectual Property rights for which application is
made;
11.1.4 assert from time to time whatever claims and rights which it
may have as holder of the Patents or other Intellectual
Property rights, arising from actual or apparent use,
disclosure or other infringement of the Patents, or other
Intellectual Property and it is a fundamental condition of
this Deed that AquaDyne shall promptly assert and enforce all
such claims and rights and institute and prosecute an action
against any such infringement which comes to its notice.
ARTICLE 12 STAMP DUTY AND CHARGES
12.1 All stamp duty and other government charges (if any) payable in respect
of this Agreement shall be paid by AquaDyne.
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ARTICLE 13 NOTICES
13.1 All notices hereunder shall be in writing and shall be given by any one
of the following means:
13.1.1 by delivering it to the address of the party on a business day
during normal business hours; or
13.1.2 by sending it to the address of the party by registered post.
13.2 The address and facsimile numbers referred to in this Article 13 shall
in the absence of notice to the contrary, be as set out below:
GLOBAL:
Address: Xxxxx 000
0000 Xxxx Xxxxxx Xxxxxx
Xxx Xxxxx, Xxxxxx
XXX
Phone: x0-000-000-0000
Facsimile: x0-000-000-0000
AQUADYNE:
Address: Xxxxx 000
0000 X. Xxxxxx Xx.
Xxxxxxxxxx, Xxxxxxxx 00000
Phone: x0-000-0000000
Facsimile: x0-000-0000000
ARTICLE 14 WAIVER
14.1 A party's failure or delay to exercise a power or right does not
operate as a waiver of that power or right.
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14.2 The exercise of a power or right does not preclude either its exercise
in the future or the exercise of any other power or right.
14.3 A waiver is not effective unless it is in writing.
14.4 A waiver of a power or right is effective only in respect of the
specific instance to which it relates and for the specific purpose for
which it is given.
ARTICLE 15 SEVERABILITY
15.1 If any provision of this deed is held to be invalid in any way or
unenforceable, it shall be severed and the remaining provisions shall
not in any way be affected or impaired and this Agreement shall be
construed so as to most nearly give effect to the intent of the parties
as it was originally executed.
ARTICLE 16 APPLICABLE LAW AND JURISDICTION
16.1 This Agreement shall be governed by and construed in accordance with
the laws of the State of Delaware and the United States of America.
16.2 Each party irrevocably and unconditionally submits to the non-exclusive
jurisdiction of the courts of the State of Delaware and waives any
immunity or any objection it may have to any action in those courts and
to a claim that any action in those courts and to a claim that any
action has been brought in an inconvenient forum or to those courts not
having jurisdiction.
ARTICLE 17 ENTIRE AGREEMENT
17.1 This Agreement contains the entire agreement of the parties and
supersedes any prior written or oral agreements between them concerning
the subject matter contained herein. There have been and are no
representations, agreements, arrangements, or understandings, oral or
verbal, between and among the parties hereto, relating to the subject
matter contained in this Agreement, which are not fully expressed
herein.
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THIS AGREEMENT WAS EXECUTED on the date first hereinbefore written:
THE COMMON SEAL OF
GLOBAL POWER & WATER INC
was hereunto affixed in accordance
with its By-laws in the presence of:
------------------------------
Director
THE COMMON SEAL OF
AQUADYNE INC
was hereunto affixed in accordance
with its By-laws in the presence of:
--------------------------
Director
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SCHEDULE 1
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SCHEDULE 2
THIS ASSIGNMENT is made the day of 2000
BETWEEN: GLOBAL POWER & WATER INC, a company organised and existing under the
laws of the United States of America ("Global") of the first part;
AND: AQUADYNE INC, a company organised and existing under the laws of the
United States of America ("AquaDyne") of the second part
WITNESSETH that pursuant to an agreement between the parties hereto dated the
day of 2000, Global as beneficial owner hereby completes the assignment to
AquaDyne of International Patent Application No. PQ5402 filed under the Patent
Cooperation Treaty signed at Washington on 19 June 1970 and given an
international filing date of 2 February 2000 in respect of the Invention known
as the JetWaterWater System, together with Global's full rights and interest
therein and all rights of action, powers and benefits accruing or belonging to
Global.
EXECUTED AS A DEED THIS DAY OF 2000
THE COMMON SEAL OF THE COMMON SEAL OF
GLOBAL POWER &WATER INC AQUADYNE INC
was hereunto affixed in accordance was hereunto affixed in accordance
with its By-laws in the presence of: with its By-laws in the presence of:
---------------------------------- ----------------------------------
Director Director
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