PATENTS PURCHASE AGREEMENT
Exhibit
10.7
This
PATENTS PURCHASE AGREEMENT
("Agreement") is entered into on May 15, 2007 ("Effective Date") by and
between CALYPSO WIRELESS, INC.
with an office at 0000 XX 00xx Xxxxxx, Xxxxx 000, Xxxxx, Xxxxxxx 00000
("Purchaser"),
and VOICE TO PHONE, INC. with a principal office located at 0000 Xxxxxxx xx,
Xxxxxxxxxx, XX 00000 ("Seller"). The
parties hereby agree as follows.
1.
BACKGROUND
1.1
Seller owns certain Patents and/or applications.
1.2
Seller wishes to sell its right, title and interest in such patents and
applications to Purchaser.
1.3
Purchaser wishes to purchase such patents and applications.
2.
DEFINITIONS
2.1 "Assignment
Agreements" means the agreements assigning ownership of the Patents from
the inventors and/or prior owners to Seller.
2.2 "List of
Prosecution Counsel" means the names and addresses of prosecution counsel
who prosecuted the Patents and who are currently handling the
Patents.
2.3 "Patents"
means those patents and applications listed in Exhibit A
hereto.
2.4 "Clear and
Transferable Title" means the Seller is the current assignee of the
Patents, and has all right, title, and interest in and to the Patents, including
the right to sell and assign the Patents.
3.
DELIVERY AND PAYMENT
3.1 For
good and valuable consideration, Purchaser shall pay Seller five million
(5,000,000) free trading S-8 shares of Calypso Wireless, Inc shares traded under
symbol CLYW, four million (4,000,000) of which shall be delivered within fifteen
(15) days after the Effective Date of Agreement, which shall be net of any taxes
and duties. The remaining one million (1,000,000) Calypso Wireless,
Inc. shares shall be delivered on or before November 1, 2007. In the
event that Purchaser fails to timely pay to Seller the payments set forth in
this Agreement, Seller may elect to rescind the Assignments at any time
thereafter and render the Assignments null and void. If the
Assignments have been completed, then Purchaser shall be obligated to return
said Assignments to Seller.
3.2
Delivery. At the execution of this Agreement Seller shall deliver to
Purchaser an executed original of the Assignment of Patent Rights in Exhibit B
hereto, the original of Letters Patents and the copy of Assignment
Agreements.
3.3 All
payments to Seller under this Agreement shall be made in Calypso Wireless, Inc.
free trading S-8 shares. The instrument of payment delivery shall
also be in accordance with Seller's requirements. Any and all amounts
payable by Purchaser to Seller hereunder are exclusive of and shall be made free
and clear of and without the withholding
of or deduction for or on account of any present or future taxes, duties,
levies, imposts, or other governmental charges. If Purchaser is
required by law or a governmental body charged with the administration thereof
to withhold or deduct any amounts from or in respect of any amount payable by
Purchaser to Seller, then the amount payable shall be increased to such amount
which, after making all required withholdings or deductions, is equal to the
amount payable had no such withholdings or deductions been
required. In the event Purchaser is delisted by the Securities and
Exchange Commission (SEC) or the company files for bankruptcy in any court with
jurisdiction over the company or is forced to relinquish its assets to a
creditor, the Patents herein assigned shall immediately return to Seller and
Seller shall be compensated in the amount of three million US dollars
($3,000,000).
4.
TRANSFER OF PATENTS
4.1
Patent Assignment. Upon receipt of the payment described in Section
3.1, Seller hereby sells, assigns, transfers and conveys to Purchaser all right,
title and interest it has in and to the Patents and all inventions and
discoveries described therein, and all rights of Seller to collect royalties
under such Patents. Until such time as payments are completed in
full, Seller shall reserve the right to demand return of the
Assignments.
4.2
Assignment of Causes of Action. Seller hereby sells, assigns,
transfers and conveys to Purchaser all right, title and interest it has in and
to all causes of action and enforcement rights, whether currently pending,
filed, or otherwise, for the Patents, including without limitation all rights to
pursuer damages, injunctive relief and other remedies for past, current and
future infringement of the Patents.
5.
ADDITIONAL OBLIGATIONS
5.1
Purchaser grants to Seller and irrevocable, royalty-free, fully paid, perpetual,
worldwide, non-transferable, non-exclusive license, under the Patents to use the
Patents to perform research and development work.
5.2
Further Cooperation. At the reasonable request of Purchaser, Seller
shall execute and deliver such other instruments and do and perform such other
acts and things as may be necessary or desirable for effecting completely the
consummation of the transactions contemplated hereby, including without
limitation execution, acknowledgment and recordation of other such papers, and
using best efforts to obtain the same from the respective inventors, as
necessary or desirable for fully perfecting and conveying unto Purchaser the
benefit of the transactions contemplated hereby. However, Purchaser
shall reimburse Seller for any reasonable expenses, including out-of-pocket
expenses and remuneration of Seller's employees at Seller's normal commercial
rates.
5.3
Transfer Recordation Process and Fees. Seller shall be responsible
for conducting the Patent transfer recordation process as required by the U.S.
PTO and all costs associated therewith. As from the Effective Date,
Purchaser shall bear all maintenance fees, annuities, registration fees and the
like due on the Patents.
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5.4
Invalidation. The parties agree that in the event of invalidation of
any or all of the Patents or some claims of Patents, Purchaser's obligation
described in Section 3.1 shall remain intact.
Payments
received by Seller shall not be returned to Purchaser and Seller shall not be
liable for such termination, or invalidation.
6.
TERMINATION
6.1 Any
party may elect to terminate this Agreement if the other party fails to perform
any material term or condition of this Agreement, and such failure has not been
cured within ten(10) days following written notice of such failure by the
terminating party to the other party.
7.
REPRESENTATIONS AND WARRANTIES
7.1
SELLER REPRESENTS AND WARRANTS TO PURCHASER THAT SELLER HAS THE FULL RIGHT
(INCLUDING CLEAR AND TRANSFERABLE TITLE) TO CONVEY THE PATENTS AS HEREIN
EXPRESSED AND THAT, TO THE BEST OF ITS KNOWLEDGE, THE RIGHTS, PROPERTIES AND
PRIVILEGES HEREIN SOLD AND CONVEYED ARE FREE AND CLEAR OF ANY
EINCUMBRANCE. PURCHASE ACKNOWLEDGES AND AGREES IT IS AWARE OF THE
TECHNICAL FEATURES OF THE PATENTS, AND INVENTIONS DESCRIBED OR CLAIMED
THEREIN. THE PATENTS ARE PROVIDED ON AN "AS-IS" BASIS. THE
SELLER IS NOT LIABLE FOR THE TECHNICAL UTILITY OF THE PATENTS, OR ANY INVENTION
DESCRIBED OR CLAIMED THEREIN. THE SELLER DISCLAIMS ALL OTHER
REPRESENTATIONS AND WARRANTIES, EXPRESS OR IMPLIED, WITH REGARD TO THE PATENTS,
AND INVENTIONS DESCRIBED OR CLAIMED THEREIN, INCLUDING, BUT NOT LIMITED TO,
WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, VALIDITY,
ENFORCEABILITY, FREEDOM FROM DEFECTS, NON-DEPENDENCY AND
NON-INFRINGEMENT.
8.
MISCELLANEOUS
8.1
Limitation on Consequential Damages. NEITHER PARTY SHALL BE LIABLE TO
THE OTHER FOR LOSS OF PROFITS, OR ANY SPECIAL, CONSEQUENTIAL OR INCIDENTAL
DAMAGES, HOWEVER CAUSED, EVEN IF ADVISED OF THE POSSIBILITY OF SUCH
DAMAGE. THE PARTIES ACKNOWLEDGE THAT THESE LIMITATIONS ON POTENTIAL
LIABILITIES WERE AN ESSENTIAL ELEMENT IN SETTING CONSIDERATION UNDER THIS
AGREEMENT.
8.2
Limitation of Liability. EACH PARTY'S TOTAL LIABILITY UNDER THIS
AGREEMENT SHALL BE THE PAYMENT OF FUNDS AS REQUIRED PURSUANT TO SECTION
3. EXCEPT IN THE CASE OF FRAUD, SELLER'S TOTAL LIABILITY
UNDER THIS AGREEMENT SHALL BE THE PURCHASE PRICE PURSUANT TO SECTION
3. THE PARTIES ACKNOWLEDGE THAT THESE LIMITATIONS ON POTENTIAL
LIABILITIES WERE AN ESSENTIAL ELEMENT IN SETTING CONSIDERATION UNDER THIS
AGREEMENT.
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8.3
Compliance with Laws. Notwithstanding anything contained in this
Agreement to the contrary, the obligations of the parties shall be subject to
all laws, present and future, of any government having jurisdiction over the
parties and this transaction, and to orders, regulations, directions or requests
of any such government.
8.4
Confidentiality of Terms. The parties hereto shall keep the terms and
existence of this Agreement and the identities of the parties hereto
confidential and shall not now or hereafter divulge any of this information to
any third party except: (a) with the prior written consent of the other party;
(b) as otherwise may be required by law or legal process, including in
confidence to legal and financial advisors in their capacity of advising a party
in such matters; (c) during the course of litigation, so long as the disclosure
of such terms and conditions are restricted in the same manner as is the
confidential information of other litigating parties; or (d) in confidence to
its legal counsel, accountants, banks and financing sources and their advisors
solely in connection with complying with financial transaction; provided that,
in (b) through (d) above, (i) the disclosing party shall use all legitimate and
legal means available to minimize the disclosure to third parties, including
without limitation seeking a confidential treatment request or protective order
whenever appropriate or available; and (ii) the disclosing party shall provide
the other party with at least ten (10) days prior written notice of such
disclosure.
8.5
Governing Law. Any claim arising under or relating to this Agreement
shall be governed by the internal substantive laws of the State of Florida
without regard to principles of conflict of laws.
8.6
Jurisdiction. Each party hereby agrees to jurisdiction and venue in
the courts of Miami Dade, Florida for all disputes and litigation arising under
or relating to this Agreement.
8.7
Entire Agreement. The terms and conditions of this Agreement,
including its exhibits, constitutes the entire agreement between the parties
with respect to the subject matter hereof, and merges and supersedes all prior
and contemporaneous agreements, understandings, negotiations and
discussions. Neither of the parties shall be bound by any conditions,
definitions warranties, understandings, or representations with respect to the
subject matter hereof other than as expressly provided herein. The
section headings contained in this Agreement are for reference purposes only and
shall not affect in any way the meaning or interpretation of this
Agreement. No oral explanation or oral information by either party
hereto shall alter the meaning or interpretation of this
Agreement. No amendments or modifications shall be effective unless
in a writing signed by authorized representatives of both
parties. These terms and conditions will prevail notwithstanding any
different, conflicting or additional terms and conditions which may
appear on any purchase order, acknowledgment or other writing not expressly
incorporated into this Agreement. This Agreement may be executed in
two (2) or more counterparts, all of which, taken together, shall be regarded as
one and the same instrument. The following exhibits are attached
hereto and incorporated herein: Exhibit A
(entitled "Patent Rights to be Assigned"); and Exhibit B
(entitled "Assignment of Patent Rights").
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8.8
Notices: All notices required or permitted to be given hereunder
shall be in writing, shall make reference to this Agreement, and shall be
delivered by hand, or dispatched by prepaid air courier or by registered or
certified airmail, postage prepaid, addressed as follows:
If to
Seller
If to
Purchaser
Calypso
Wireless, Inc.
0000 XX
00xx Xxxxxx Xxxxx 000
Xxxxx,
Xxxxxxx 00000
Attn: Xxxxxxxx
Xxxxxxx, President & CEO
Such
notices shall be deemed served when received by addressee or, if delivery is not
accomplished by reason of some fault of the addressee, when tendered for
delivery. Either party may give written notice of a change of address
and, after notice of such change has been received, any notice or request shall
thereafter be given to such party at such changed address.
8.9
Relationship of Parties. The parties hereto are independent contractors. Neither
party has any express or implied right or authority to assume or create any
obligations on behalf of the other or to bind the other to any contract,
agreement or undertaking with any third party. Nothing in this Agreement shall
be construed to create partnership, joint venture, employment or agency
relationship between Seller and Purchaser.
8.10
Severability. The terms and conditions stated herein are declared to be
severable. If any paragraph, provision, or clause in this Agreement shall be
found or be held to be invalid or unenforceable in any jurisdiction in which
this Agreement is being performed, the remainder of this Agreement shall be
valid and enforceable and the parties shall use good faith to negotiate a
substitute, valid and enforceable provision which most nearly effects the
parties’ intent in entering into this Agreement.
8.11
Waiver. Failure by either party to enforce any term of this Agreement shall not
be deemed a waiver of future enforcement of that or any other term in this
Agreement or any other agreement that may be in place between the
parties.
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8.12
Assignment. This Agreement shall inure to the benefit of and be binding upon the
parties hereto and their respective successors and permitted assigns. Neither
party shall assign, transfer or otherwise alienate its rights and obligations
hereunder in whole or in part, without the prior written consent of the other
party.
8.13
Special Provisions Regarding Seller Rights. If this Agreement is terminated
pursuant to the Default of Payment as stated in section 3.1 or due to Purchaser
delisting by the SEC, by bankruptcy, liquidation or by a judgment which requires
Purchaser to assign all of its rights to a Creditor, the Purchaser shall, upon
demand, return the Assignment of the Patents granted herein to Seller and pay
Seller an amount equal to three million US dollars (3,000,000.00).
In
witness whereof, the parties have executed this Patent Purchase Agreement as of
the
Effective
Date: May 15, 2007
Purchaser:
Calypso
Wireless, Inc.
/s/ Xxxxxxxx X.
Xxxxxxx
Xxxxxxxx
X. Xxxxxxx
President
& CEO
Seller:
Voice to
Phone, Inc.
/s/ Xxxxxxx X.
Xxxxxxx
Xxxxxxx
X. Xxxxxxx
President
/s/ Xxxx
Xxxxxx
Xxxx
Xxxxxx
Inventor
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Exhibit
B
ASSIGNMENT
OF PATENT RIGHTS
For good
and valuable consideration, the receipt of which is hereby acknowledged, Voice
to Phone, Inc. having principal offices located at 0000 Xxxxxxx xx, Xxxxxxxxxx,
Xx. 00000, (“Assignor”), does hereby sell, assign,
transfer and convey unto Calypso Wireless, Inc. a company, having an office at
0000 XX 00xx Xxxxxx
Xxxxx 000, Xxxxx, Xxxxxxx 00000 (“Assignee”) or its designees, all of
the Assignor’s right, title and interest in and to the patent applications and
patents listed below (collectively “Patent
Rights”):
|
Patent
No.
|
Patent
Title
|
Issue
Date
|
|
6839412
|
Audio
File transmission method
|
2005-01-04
|
|
A
computer implemented method of transmitting electronic voice messages
including the steps of establishing a caller identity associated with a
first telephone connection, recording a first audio clip from the first
telephone connection, establishing an email target string, encapsulating
the…
|
||
|
6385306
|
Audio
file transmission method
|
2002-05-07
|
|
A
method of transmitting one or more audio file attachments in an electronic
message from a telephone including the steps of dialing into a
predetermined telephone number, sending one or more DTMF signals on the
touch telephone corresponding to a preselected email address wherein the
one or…
|
||
|
6765996
|
Audio
file transmission method
|
2004-07-20
|
|
A
computer implemented method of transmitting electronic voice messages
including the steps of establishing a caller identity associated with a
first telephone connection, recording a first audio clip from the first
telephone connection, establishing an email target string, encapsulating
the…
|
||
|
7031439
|
Audio
file transmission method
|
2006-04-18
|
|
A
computer implemented method of transmitting electronic voice messages
including the steps of establishing a caller identity associated with the
first telephone connection, recording a first audio clip from the first
telephone connection, establishing an email target string, encapsulating
the…
|
Assignor
represents and warrants to Assignee that seller has the full right (including
clear and transferable title) to convey the patents as herein expressed and
that, to the best of its knowledge, the rights, properties and privileges herein
sold and conveyed are free and clear of any encumbrance. Assignee acknowledges
and agrees it is aware of the technical features of the patents, and inventions
described or claimed therein. The patents are provided on an “as-is”
basis.
The
Assignor is not liable for the technical utility of the patents, or any
invention described or claimed therein. The Assignor disclaims all other
representations and warranties, express or implied, with regard to patents, and
inventions described or claimed therein, including, but not limited to,
warranties of merchantability, fitness for a particular purpose, validity,
enforceability, freedom from defects, non-dependency and
non-infringement.
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This
Agreement shall inure to the benefit of and be binding upon the parties hereto
and their respective successors and permitted assigns. Neither party shall
assign, transfer or otherwise alienate its rights and obligations hereunder in
whole or in part, without the prior written consent of the other
party.
IN
WITNESS WHEREOF this Agreement of Patent Rights is executed at on.
ASSIGNOR
By: Voice
to Phone
/s/
Xxxxxxx X. Xxxxxxx
Name:
Xxxxxxx X. Xxxxxxx
Title:
President
5/22/07
/s/ Xxxxx
Xxxx Xxxxxxx
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