CONFIDENTIAL INFORMATION AND INVENTION ASSIGNMENT AGREEMENT
CONFIDENTIAL
INFORMATION AND
INVENTION
ASSIGNMENT AGREEMENT
This CONFIDENTIAL INFORMATION AND
INVENTION ASSIGNMENT AGREEMENT (the “Agreement”) is made between Composite
Technology Corporation, a Nevada corporation (the “Company”) and Xxxxxxx X.
Xxx.
In consideration of my appointment as a
director with the Company (which for purposes of this Agreement shall be deemed
to include any subsidiaries or Affiliates of the Company and for purposes of
this Agreement, “Affiliates” shall mean any person or entity that directly or
indirectly controls, is controlled by or is under common control with the
Company), the receipt of confidential information while associated with the
Company, and other good and valuable consideration, I, the undersigned
individual, agree that:
1. Term of
Agreement. This Agreement shall continue in full force and
effect for the duration of my membership as a director of the Company (the
“Effective Period”).
2. Confidentiality.
(a) Existence of Confidential
Information. The Company is in the legal possession of and/or
owns and will develop and/or acquire Proprietary Information, as defined below,
which have value to its business. This Confidential Information
includes not only information disclosed by the Company to me, but also
information developed or learned by me during the course of my tenure as a
Director with the Company.
(b) Definitions. “Proprietary
Information” is all information in whatever form, tangible or intangible,
pertaining in any manner to the business of the Company, or any of its
Affiliates, or its employees, customers, consultants or business associates. All
Proprietary Information not generally known outside of the Company’s
organization, and all Proprietary Information so known only through improper
means, shall be deemed “Confidential Information.” By example and without
limiting the foregoing definition, Proprietary and Confidential Information
shall include, but not be limited to:
(i) Formulas,
research and development techniques, processes, trade secrets, computer
programs, software, electronic codes, mask works, inventions, innovations,
patents, patent applications, discoveries, improvements, data, know-how,
formats, test results and research projects;
(ii) information
about costs, profits, markets, sales, contracts and lists of customers and
distributors;
(iii) business,
marketing and strategic plans;
(iv) forecasts,
unpublished financial information, budgets, projections and customer identities,
characteristics and agreements; and
(v) employee
personnel files and compensation information.
Confidential
Information is to be broadly defined, and includes all information that has or
could have commercial value or other utility in the business in which the
Company is engaged or contemplates engaging, and all information of which the
unauthorized disclosure could be detrimental to the interests of the Company,
whether or not such information is identified as Confidential Information by the
Company.
(c) Protection of Confidential
Information. I will not, directly or indirectly, use, make
available, sell, disclose or otherwise communicate to any third party, other
than in my assigned duties and for the benefit of the Company, any of the
Company’s Confidential Information, either during or after my tenure as a
Director with the Company.
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(d) Delivery of Confidential
Information. Upon request or when my directorship with the
Company terminates, I will immediately deliver to the Company all copies of any
and all materials and writings received from, created for or belonging to the
Company including, but not limited to, those which relate to or contain
Confidential Information.
(e) Location and
Reproduction. I shall maintain at my work station and/or any
other place under my control only such Confidential Information as I have a
current “need to know.” I shall return to the appropriate person or location or
otherwise properly dispose of Confidential Information once that need to know no
longer exists. I shall not make copies of or otherwise reproduce
Confidential Information unless there is a legitimate business need of the
Company for reproduction.
(f) Prior Actions and
Knowledge. I represent and warrant that from the time of my
first contact with the Company I held in strict confidence all Confidential
Information and have not disclosed any Confidential Information, directly or
indirectly, to anyone outside the Company, or used, copied, published or
summarized any Confidential Information, except to the extent otherwise
permitted in this Agreement.
(g) Third-Party
Information. I acknowledge that the Company has received and
in the future will receive from third parties the third party’s confidential
information subject to a duty on the Company’s part to maintain the
confidentiality of such information, and to use it only for certain limited
purposes. I agree during the Effective Period and thereafter, I will
hold all such confidential information in the strictest confidence and not
disclose or use it, except as necessary to perform my obligations hereunder, and
as is consistent with the Company’s agreement with such third
parties.
(h) Third
Parties. I represent appointment and position as a Director
with the Company does not and will not breach any agreements with or duties to
any employer, former employer or any other third party. I will not
disclose to the Company or use on its behalf any confidential information
belonging to others and I will not bring onto the premises of the Company any
confidential information belonging to any such party unless consented to in
writing by such party.
3. Proprietary Rights,
Inventions and New Ideas.
(a) Definition. The
term “Subject Ideas” or “Inventions” includes any and all ideas, processes,
trademarks, service marks, inventions, designs, technologies, computer hardware
or software, original works of authorship, formulas, discoveries, patents,
copyrights, copyrightable works, products, marketing and business ideas, and all
improvements, know-how, data, rights and claims related to the foregoing,
whether or not patentable, which are conceived, developed or created in whole or
in part by me during the period I hold a Directorship with the Company and
which: (i) relate to the Company’s current or contemplated business or
activities; (ii) relate to the Company’s actual or demonstrably anticipated
research or development; (iii) result from any work performed by me for the
Company; (iv) involve the use of the Company’s equipment, supplies, facilities
or trade secrets; (v) result from or are suggested by any work done by the
Company or at the Company’s request, or any projects specifically assigned to
me; or (vi) result from my access to any of the Company’s memoranda, notes,
records, drawings, sketches, models, maps, customer lists, research results,
data, formulae, specifications, inventions, processes, equipment or other
materials (collectively, “Company Materials”).
(b) Company
Ownership. I hereby assign all right, title and interest in
and to all of my Subject Ideas and Inventions, including but not limited to all
registrable and patent rights which may subsist therein, to the
Company. All Subject Ideas and Inventions shall be considered works
made for hire. I shall take all actions deemed necessary by the
Company to protect the Company’s rights therein.
(c) California Labor
Code. Section 3(b) of this Agreement shall not apply if and to
the extent California Labor Code Section 2870 lawfully prohibits the assignment
of rights in such intellectual property. I acknowledge I understand
the limits placed on this definition by California Labor Code Section 2870, if
applicable to me, which provides:
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“(1)
Any provision in an employment agreement which provides that an employee
shall assign, or offer to assign, any of his or her rights in an invention
to his or her employer shall not apply to an invention that the employee
developed entirely on his or her own time without using the employer’s
equipment, supplies, facilities or trade secret information except for
those inventions that either:
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a.
Relate at
the time of conception or reduction to practice of the invention to the
employer’s business, or actual or demonstrably anticipated research or
development of the employer; or
b.
Result
from any work performed by the employee for the employer.
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2)
To the extent a provision in an employment agreement purports to require
an employee to assign an invention otherwise excluded from being required
to be assigned under subdivision (a), the provision is against the public
policy of this state and is
unenforceable.”
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(d) I
understand I bear the full burden of proving to the Company an Invention
qualifies fully under Section 2870. I agree to disclose promptly to
the Company in writing full details of any and all Subject Ideas and
Inventions.
(e) Maintenance of
Records. I agree to keep and maintain adequate and current
written records of all Subject Ideas and Inventions and their development made
by me (solely or jointly with others) during the term of appointment as a
Director of the Company. These records will be in the form of notes,
sketches, drawings and any other format that may be specified by the
Company. These records will be available to and remain the sole
property of the Company at all times.
(f) Access. Because
of the difficulty of establishing when any Subject Ideas or Inventions are first
conceived by me, or whether they result from my access to Confidential
Information or Company Materials, I agree that any Subject Idea and Invention
shall, among other circumstances, be deemed to have resulted from my access to
Company Materials if: (i) it grew out of or resulted from my work with the
Company or is related to the business of the Company, and (ii) it is made,
used, sold, exploited or reduced to practice, or an application for patent,
trademark, copyright or other proprietary protection is filed thereon, by me or
with my significant aid, within one (1) year after termination of the Effective
Period.
(g) Assistance. I
further agree to assist the Company in every proper way (but at the Company’s
expense) to obtain and from time to time enforce patents, copyrights or other
rights or registrations on said Subject Ideas and Inventions in any and all
countries, and to that end will execute all documents necessary:
(i) to
apply for, obtain and vest in the name of the Company alone (unless the Company
otherwise directs) letters patent, copyrights or other analogous protection in
any country throughout the world and when so obtained or vested to renew and
restore the same; and
(ii) to
defend any opposition proceedings in respect of such applications and any
opposition proceedings or petitions or applications for revocation of such
letters patent, copyright or other analogous protection; and
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(iii) to
cooperate with the Company (but at the Company’s expense) in any enforcement or
infringement proceeding on such letters patent, copyright or other analogous
protection.
(h) Authorization to
Company. In the event the Company is unable, after reasonable
effort, to secure my signature on any patent, copyright or other analogous
protection relating to a Subject Idea and Invention, whether because of my
physical or mental incapacity or for any other reason whatsoever, I hereby
irrevocably designate and appoint the Company and its duly authorized officers
and agents as my agent and attorney-in-fact, to act for and on my behalf and
stead to execute and file any such application, applications or other documents
and to do all other lawfully permitted acts to further the prosecution, issuance
and enforcement of letters patent, copyright or other analogous rights or
protections thereon with the same legal force and effect as if executed by
me. My obligation to assist the Company in obtaining and enforcing
patents and copyrights for Subject Ideas and Inventions in any and all countries
shall continue beyond the termination of my relationship with the Company, but
the Company shall compensate me at a reasonable rate after such termination for
time actually spent by me at the Company’s request on such
assistance.
(i) Exhibit. I
acknowledge that there are no currently existing ideas, processes, inventions,
discoveries, marketing or business ideas or improvements which I desire to
exclude from the operation of this Agreement except for the list set forth on
Exhibit A, Prior Knowledge and Inventions, to this Agreement. To the
best of my knowledge, there is no other contract to assign inventions,
trademarks, copyrights, ideas, processes, discoveries or other intellectual
property that is now in existence between me and any other person (including any
business or governmental entity).
(j) No Use of
Name. I shall not at any time use the Company’s name or any of
the Company trademark(s) or trade name(s) in any advertising or publicity
without the prior written consent of the Company.
4. Prohibited
Activity. To prevent the above-described disclosure,
misappropriation and breach, I agree that during the Effective Period and for a
period of one (1) year after termination of the Effective Period, without the
Company’s express written consent, I shall not, directly or indirectly, (i)
employ, solicit for employment or recommend for employment by any party other
than the Company, any person employed by the Company (or any Affiliate) as an
employee or a consultant; and (ii) call on, solicit or take away, or attempt to
call on, solicit or take away, any of the Company’s customers or potential
customers on whom I called or with whom I became acquainted during my Effective
Period.
5. Representations and
Warranties. I represent and warrant (i) I have no obligations,
legal or otherwise, inconsistent with the terms of this Agreement or with my
undertaking a relationship with the Company; (ii) the performance of the
services called for by this Agreement do not and will not violate any applicable
law, rule or regulation or any proprietary or other right of any third party;
(iii) I will not use in the performance of my responsibilities for the Company
any materials or documents of any employer or former employer; and (iv) I have
not entered into or will enter into any agreement (whether oral or written) in
conflict with this Agreement.
6. Termination
Obligations.
(a) Upon
the termination of my relationship with the Company or promptly upon the
Company’s request, I shall surrender to the Company all equipment, tangible
Proprietary Information, documents, books, notebooks, records, reports, notes,
memoranda, drawings, sketches, models, maps, contracts, lists, computer disks
(and other computer-generated files and data), any other data and records of any
kind, and copies thereof (collectively, “Company Records”), created on any
medium and furnished to, obtained by or prepared by myself in the course of or
incident to my term as a Director, that are in my possession or under my
control.
(b) My
representations, warranties and obligations contained in this Agreement shall
survive the termination of the Effective Period.
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(c) Following
any termination of the Effective Period, I will fully cooperate with the Company
in all matters relating to my continuing obligations under this
Agreement.
(d) In
the event that I leave the position as a Director of the Company I hereby grant
consent to notification by the Company to any new employer about my rights and
obligations under this Agreement.
7. Injunctive
Relief. I acknowledge my failure to carry out any obligation
under this Agreement, or a breach by me of any provision herein, will constitute
immediate and irreparable damage to the Company, which cannot be fully and
adequately compensated in money damages and which will warrant preliminary and
other injunctive relief, an order for specific performance and other equitable
relief. I further agree no bond or other security shall be required
in obtaining such equitable relief and I hereby consent to the issuance of such
injunction and to the ordering of specific performance. I also
understand other action may be taken and remedies enforced against
me.
8. Modification. No
modification of this Agreement shall be valid unless made in writing and signed
by both parties.
9. Binding
Effect. This Agreement shall be binding upon me, my heirs,
executors, assigns and administrators and is for the benefit of the Company and
its successors and assigns.
10. Governing
Law. Any action or proceeding seeking to enforce any provision
of, or based on any right arising out of, this Agreement may be brought against
any of the Parties only in the courts of Orange County, in the State of
California, or, if it has or can acquire jurisdiction, in the appropriate United
States District Court for the Southern District of California, and each of the
Parties consents to such venue and to the jurisdiction of such courts (and of
the appropriate appellate courts) in any such action or proceeding and waives
any objection to venue laid therein. Process in any action or
proceeding referred to in the preceding sentence may be served on any Party
anywhere in the world.
11. Integration. This
Agreement sets forth the parties’ mutual rights and obligations with respect to
proprietary information, prohibited competition after the Effective Period and
intellectual property. It is intended to be the final, complete and
exclusive statement of the terms of the parties’ agreements regarding these
subjects. This Agreement supersedes all other prior and
contemporaneous agreements and statements on these subjects, and it may not be
contradicted by evidence of any prior or contemporaneous statements or
agreements. To the extent that the practices, policies or procedures
of the Company, now or in the future, apply to myself and are inconsistent with
the terms of this Agreement, the provisions of this Agreement shall control
unless changed in writing by the Company.
12. Employment at
Will. This Agreement is not an employment
agreement. I understand that the Company may terminate my
Directorship or association with it at any time, with or without cause, subject
to the terms of any separate written agreement approved by the Board of
Directors and executed by a duly authorized officer of the Company.
13. Construction. This
Agreement shall be construed as a whole, according to its fair meaning, and not
in favor of or against any party. By way of example and not
limitation, this Agreement shall not be construed against the party responsible
for any language in this Agreement. The headings of the paragraphs hereof are
inserted for convenience only, and do not constitute part of and shall not be
used to interpret this Agreement.
14. Attorneys’
Fees. Should either I or the Company, or any heir, personal
representative, successor or permitted assign of either party, resort to legal
proceedings to enforce this Agreement, the prevailing party (as defined in
California statutory law) in such legal proceeding shall be awarded, in addition
to such other relief as may be granted, attorneys’ fees and costs incurred in
connection with such proceeding.
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15. Severability. If
any term, provision, covenant or condition of this Agreement, or the application
thereof to any person, place or circumstance, shall be held to be invalid,
unenforceable or void, the remainder of this Agreement and such term, provision,
covenant or condition as applied to other persons, places and circumstances
shall remain in full force and effect.
16. Rights
Cumulative. The rights and remedies provided by this Agreement
are cumulative, and the exercise of any right or remedy by either the Company or
me (or by that party’s successor), whether pursuant hereto, to any other
agreement, or to law, shall not preclude or waive that party’s right to exercise
any or all other rights and remedies. This Agreement will inure to
the benefit of the Company and its successors and assigns.
17. Nonwaiver. The
failure of either the Company or me, whether purposeful or otherwise, to
exercise in any instance any right, power or privilege under this Agreement or
under law shall not constitute a waiver of any other right, power or privilege,
nor of the same right, power or privilege in any other instance. Any
waiver by the Company or by me must be in writing and signed by either myself,
if I am seeking to waive any of my rights under this Agreement, or by an officer
of the Company (other than me) or some other person duly authorized by the
Company.
18. Notices. Any
notice, request, consent or approval required or permitted to be given under
this Agreement or pursuant to law shall be sufficient if it is in writing, and
if and when it is hand delivered or sent by regular mail, with postage prepaid,
to my residence (as noted in the Company’s records), or to the Company’s
principal office, as the case may be.
19. Date of
Effectiveness. This Agreement shall be deemed effective as of
the date of my nomination to the Board of Directors of the Company.
20. Agreement to Perform
Necessary Acts. I agree to perform any further acts and
execute and deliver any documents that may be reasonably necessary to carry out
the provisions of this Agreement.
21. Assignment. This
Agreement may not be assigned without the Company’s prior written
consent.
22. Compliance with
Law. I agree to abide by all federal, state and local laws,
ordinances and regulations.
23. Survival. Section
2 (b), (c) (d), Section 3 (g), (h) (j), and Sections 4, 7, 10, 14 and 20 shall
survive the expiration or termination of this Agreement.
24. Acknowledgment. I
acknowledge that I have had the opportunity to consult legal counsel in regard
to this Agreement, that I have read and understand this Agreement, that I am
fully aware of its legal effect, and that I have entered into it freely and
voluntarily and based on my own judgment and not on any representations or
promises other than those contained in this Agreement.
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IN
WITNESS WHEREOF, the undersigned have executed this Agreement as of the date set
forth below.
Dated:
January 20, 2009
Xxxxxxx
X. Xxx
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Xxxxxxx
X. Xxx
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****
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Composite
Technology Corporation
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a
Nevada corporation
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By:
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Name:
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Xxxxxx X Xxxxxxxx
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Title:
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CEO
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**** This material has been omitted pursuant to a request for confidential
treatment and filed separatly with the Securities and Exchange Commission.
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EXHIBIT
A
PRIOR
KNOWLEDGE AND INVENTIONS
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1.
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Except
as set forth below, I acknowledge that certain inventions which I may
conceive or first actually reduce to practice after I am appointed a
Director of the Company shall be the sole property of the
Company. The following are those inventions that I own at this
time (if none, so state):
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2.
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Except
as set forth below, I acknowledge that I have no other current or prior
agreements, relationships or commitments that conflict with my
relationship with the Company under my Confidential Information and
Invention Assignment Agreement (if none, so state):
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3.
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I
acknowledge and agree that I will not use any proprietary information or
trade secrets belonging to other persons or entities, including former
employers, in my work for the Company. I further certify that I
returned all property and confidential information belonging to all prior
employers.
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Dated:
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January 9, 2006
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D.
Xxxx XxXxxxxxx III
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0000
Xxxxxx Xxxxxx Xxxxx, Xxxxx 000,
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Xxxxxx
00000
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