EXHIBIT 10.18
PATENT ASSIGNMENT AND ROYALTY AGREEMENT
THIS PATENT ASSIGNMENT AND ROYALTY AGREEMENT (the "Agreement") is
entered into by and among ADVANCED TECHNOLOGY INCUBATOR, INC., a corporation
of Michigan, having its principal place of business at ▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇,
▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇ (hereinafter "ASSIGNOR"), and ELECTRONIC BILLBOARD
TECHNOLOGY, INC., a corporation of Delaware, having its principal place of
business at ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇, ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇
(hereinafter "ASSIGNEE") (collectively the "Parties" or "parties").
WHEREAS, ASSIGNOR desires to assign the TECHNOLOGY to ASSIGNEE, and
ASSIGNEE desires to receive the assignments of the TECHNOLOGY from ASSIGNOR
in exchange for a one-time payment and a series of royalty payments;
NOW, THEREFORE, for and in consideration of the premises and the mutual
covenants herein contained and other good and valuable consideration, the
receipt and sufficiency of which are hereby acknowledged, the parties hereto,
intending legally to be bound, hereby agree as follows:
I Definitions
As used herein, the following terms shall have the meanings set forth
below:
1.1 TECHNOLOGY means ASSIGNOR'S LCD Technology pertaining to the
structure, enhancing optics, driving schemes, and mechanical assembly for
▇▇▇▇ board applications including but not limited to the inventions and other
ideas as set forth in the PATENT or PATENTS.
1.2 PATENT or PATENTS means the United States Patent No. 5,469,187, and
all divisions, continuations, continuation-in-parts, renewals, reissues,
substitutes, and extensions thereof, and any related foreign patents and
patent applications claiming any part or whole of the TECHNOLOGY.
1.3 PRODUCTS means any and all products which are based in whole or in
part on the PATENTS or on the TECHNOLOGY.
1.4 EFFECTIVE DATE shall be October 6, 1998.
1.5 GROSS REVENUES means revenues received by ASSIGNEE from third
parties as a direct result of the sale or lease of PRODUCTS, excluding any
taxes, levies, customs and duties, less any amounts refunded to such third
parties. Such revenues include any advertising revenues received by ASSIGNEE
from such third parties and generated directly through the use of a PRODUCT
to display the advertising. Subject to Section 9.1, GROSS REVENUES also
includes any fees, royalties, or other income received by ASSIGNEE from a
third party for a license or sublicense of the PATENTS or TECHNOLOGY.
II Assignment
2.1 Upon payment by ASSIGNEE to ASSIGNOR of Two Hundred Thousand
Dollars ($200,000), ASSIGNOR will assign to ASSIGNEE the entire right, title
and interest in the PATENTS and TECHNOLOGY by executing the Assignment in
Exhibit A attached hereto.
III Royalty Payments
3.1 ASSIGNEE hereby agrees to pay ASSIGNOR a five percent (5%) royalty
on the GROSS REVENUES.
IV Patenting
4.1 Subsequent to execution of the Assignment in Exhibit A, ASSIGNEE or
its designee will pay all application, maintenance, attorney's and other fees
for the preparation, prosecution, and maintenance of the PATENTS
(collectively, the "PATENT FEES"). If, during this time period, ASSIGNEE
decides not to pay the PATENT FEES, then ASSIGNEE will promptly notify
ASSIGNOR, and ASSIGNOR may pay such PATENT FEES and received reimbursement of
such PATENT FEES from ASSIGNEE.
4.2 Subject to execution of the Assignment Back in either Exhibit B or
Exhibit C, ASSIGNOR will pay all PATENT FEES.
V Payments and Reports
5.1 Not later than the last day of each January, April, July and
October, ASSIGNEE shall furnish to ASSIGNOR a written statement of all
amounts due hereunder for the quarterly periods ended the last days of the
preceding December, March, June and September, respectively, and shall pay to
ASSIGNOR all amounts due to ASSIGNOR. If no amount is accrued during any
quarterly period, a written statement to that effect shall be furnished upon
the request of ASSIGNOR.
5.2 Payments hereunder will be made to either ASSIGNOR or directly to
▇▇. ▇▇▇ ▇▇▇▇▇, as directed by ▇▇. ▇▇▇ ▇▇▇▇▇.
VI Technical Support
6.1 ASSIGNOR agrees to furnish to ASSIGNEE all information, including,
but not limited to copies of all engineering drawings, specifications,
prototype models, etc. in ASSIGNOR'S possession, relating to the TECHNOLOGY.
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VII Representations and Warrants
7.1 ASSIGNOR hereby represents and warrants the following to be true:
(a) That all maintenance fees due to date have been paid on the
PATENTS.
(b) That ASSIGNOR'S rights with respect to the TECHNOLOGY and the
PATENTS are free from any license, pledge, lien, security
interest, conditional sales agreement, encumbrance or any other
charge and/or third party right.
(c) That ASSIGNOR has no knowledge of any third party that may have
infringed or violated any of ASSIGNOR'S rights in or with
respect to the TECHNOLOGY or the PATENTS, and that no conflict
or adverse claim with respect to the TECHNOLOGY or the PATENTS
exist.
(d) That the use of the TECHNOLOGY and the PATENTS as contemplated
hereunder and the implementation of the Parties' rights
hereunder do not violate or infringe any third parties' rights
whatsoever.
(e) That ASSIGNOR has the corporate power and authority to enter
into this Agreement, to bind itself and comply with all of its
obligations hereunder, and furthermore, has the full right and
authority to make the assignment hereunder, and the execution,
delivery and performance by ASSIGNOR of this Agreement will not
conflict with, give rise to, or result in, any breach or default
of any terms under any provision of law, regulation or agreement,
commitment, judgment or order to which ASSIGNOR is a party or by
which ASSIGNOR is bound.
(f) That ASSIGNOR has no knowledge of pending or threatened
litigation concerning the validity of the PATENTS.
VIII Termination
8.1 This Agreement is perpetual unless sooner terminated herein.
8.2 ASSIGNEE may terminate this Agreement at any time upon thirty (30)
days' written notice to ASSIGNOR.
8.3 If either Party shall be in default of any obligation hereunder, or
shall be adjudged bankrupt, or become insolvent, or make an assignment for
the benefit of creditors, or be placed in the hands of a receiver or trustee
in bankruptcy, the other Party may terminate this Agreement by giving thirty
(30) days written notice to the other Party, specifying the basis for
termination.
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If within sixty (60) days after the receipt of such notice, the Party
receiving notice shall remedy the condition forming the basis for
termination, such notice shall cease to be operative, and this Agreement
shall continue in full force.
8.4 The word "termination" and cognate words, such as "term" and
"terminate", used in this Agreement are to be read, except where the contrary
is specifically indicated, as omitting from their effect licenses, releases,
and agreements of non-assertion running in favor of customers or transferred
by ASSIGNEE prior to any termination of all which survive any termination to
the degree necessary to permit their complete fulfillment or discharge.
8.5 Subject to Section 8.9, ASSIGNEE will assign the PATENT and
TECHNOLOGY back to ASSIGNOR if either (i) this Agreement is terminated under
Section 8.2, or (ii) this Agreement is terminated by ASSIGNOR under Section
8.3.
8.6 If any one of the following four (4) conditions occur, then
ASSIGNEE will assign the PATENTS and TECHNOLOGY back to ASSIGNOR by executing
one of the Assignments Back attached hereto as Exhibit B and Exhibit C; the
four (4) conditions are either (i) ▇▇. ▇▇▇ ▇▇▇▇▇ has continually managed the
development of the billboard and ASSIGNEE has failed to sell or lease a
billboard within one (1) year of the completion of a ▇▇▇▇ board prototype, or
(ii) ASSIGNEE has failed to sell or lease a billboard within three (3) years
after ▇▇. ▇▇▇ ▇▇▇▇▇ has discontinued managing the development of the
billboard, or (iii) ASSIGNEE has failed to pay at least Five Hundred Thousand
Dollars ($500,000) in royalties at the end of two (2) years after the date of
the first sale or lease of a billboard, or (iv) following this initial
two-year period, the total royalty paid by ASSIGNEE to ASSIGNOR during any
subsequent year is less than Five Hundred Thousand Dollars ($500,000).
Section 8.9 determines which form of the Assignment Back, Exhibit B or
Exhibit C, should be executed. Simultaneously with ASSIGNEE'S execution of
the Assignment Back to ASSIGNOR, ASSIGNOR will grant to ASSIGNEE a
non-exclusive world-wide license under the PATENTS and TECHNOLOGY to make,
have made, use, sell, lease, and import PRODUCTS, as well as the right to
sublicense the PATENTS and TECHNOLOGY to third parties, such license also to
include a five percent (5%) royalty on all GROSS REVENUE achieved by ASSIGNEE
under the licenses.
8.7 ASSIGNOR may terminate this Agreement if the payment due under
Section 2.1 is not received by ASSIGNOR on or before February 15, 1999.
8.8 If this Agreement is terminated at any time for any reason, then
ASSIGNEE will return to ASSIGNOR all materials, prototype, drawings, designs,
schematics, computer files, specifications, and all other items which include
or are based in whole or in part on the PATENTS or the TECHNOLOGY, except
that ASSIGNEE may retain possession of such materials, prototypes, drawings,
designs, schematics, computer files, specifications, and all other items
which include or are based in whole or in part on the PATENTS or the
TECHNOLOGY if ASSIGNEE retains a non-exclusive license to the PATENTS and
TECHNOLOGY in accordance with Section 8.6.
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8.9 If ASSIGNEE assigns back to ASSIGNOR the PATENTS and TECHNOLOGY
under Section 8.5 before the first sale or lease of a billboard by ASSIGNEE,
then ASSIGNEE will also assign any improvements in the PATENTS or TECHNOLOGY
made by ASSIGNEE by execution of the Assignment Back in Exhibit B attached
hereto; and ASSIGNOR will reimburse ASSIGNEE for any and all expenses
incurred by ASSIGNEE in developing the improvements, including, but not
limited to, expenses related to materials, man-hours expected, subcontracting
fees, and patent prosecution. If ASSIGNEE assigns back to ASSIGNOR, the
PATENTS and TECHNOLOGY under Section 8.5 after the first sale or lease of a
billboard by ASSIGNEE, then ASSIGNEE will solely assign to ASSIGNOR the
PATENTS and TECHNOLOGY by execution of the Assignment Back in Exhibit C
attached hereto.
IX Assignment of Agreement
9.1 ASSIGNEE may assign its rights under this Agreement to (1) an
affiliated company for the purpose of commercialization of the TECHNOLOGY, or
(2) EBT Acquisition Company. The royalty provisions of Sections 3.1 and 8.6
shall apply to the entity receiving the rights from ASSIGNEE, but ASSIGNEE
will not owe ASSIGNOR any further transaction fees, royalties, licensing or
sublicensing fees, or any other payments for such a transfer of rights.
9.2 All of the provisions of this Agreement apply fully to each
corporate affiliate of ASSIGNEE, and the terms and obligation of this
Agreement are fully enforceable against all successors and assigns of
ASSIGNEE, and ASSIGNOR has the right to directly enforce the rights and
obligations of this Agreement against any successors or assigns of ASSIGNEE.
X Severability
10.1 If any paragraph, provision, or claims thereof 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 negotiate, in good
faith, a substitute, valid and enforceable provision which most nearly
effects the Parties' intent in entering into this Agreement.
XI Waiver, Integration, Alteration
11.1 The failure of either party to enforce any provision of this
Agreement shall not be deemed a waiver of such provision.
11.2 This Agreement represents the entire understanding between the
Parties, and supersedes all other agreements, express or implied, between the
Parties concerning PATENTS and TECHNOLOGY.
11.3 A provision of this Agreement may be altered only by a writing
signed by both Parties.
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XII Applicable Law
12.1 This Agreement shall be construed in accordance with the
substantive laws of the State of Texas. Any and all litigation involving
either Party's rights and duties under this Agreement shall be brought
exclusively in a court of competent jurisdiction in the State of Texas.
IN WITNESS WHEREOF the Parties have entered this Agreement to be
executed by their duly authorized officers on the respective dates and at the
respective places hereinafter set forth.
ASSIGNEE:
ELECTRONIC BILLBOARD TECHNOLOGY, INC.
By /s/ ▇▇▇▇ ▇. ▇▇▇▇▇
----------------------------
▇▇▇▇ ▇▇▇▇▇, CEO
ASSIGNOR:
ADVANCED TECHNOLOGY INCUBATOR, INC.
By /s/ ▇▇▇ ▇▇▇▇▇
----------------------------
▇▇. ▇▇▇ ▇▇▇▇▇, CEO
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EXHIBIT A
ASSIGNMENT
THIS ASSIGNMENT, made and entered into as of the ____ Day of
___________, 1998, by and between ADVANCED TECHNOLOGY INCUBATOR, INC., a
corporation of Michigan, having is principal place of business at ▇▇▇▇ ▇▇▇▇
▇▇▇▇▇, ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇ (hereinafter "Assignor"), and ELECTRONIC BILLBOARD
TECHNOLOGY, INC., a corporation of Delaware, having its principal place of
business at ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇, ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇
(hereinafter "Assignee") (collectively the "Parties" or "parties").
NOW THEREFORE, for valuable consideration, the receipt of which is
hereby mutually acknowledged, the parties hereto, intending to be legally
bound, hereby agree as follows:
SECTION 1
TRANSFER AND ASSIGNMENT
1.1 Conveyance of Rights. Assignor hereby transfers, grants, conveys,
assigns, and relinquishes exclusively to the Assignee all of Assignor's
right, title, and interest (including to make, use, or sell under patent law;
to copy, adapt, distribute, display, and perform under copyright law; and to
use and disclose under trade secret law) in and to the PATENTS and TECHNOLOGY
as defined in the Patent Assignment and Royalty Agreement between the
parties, including, but not limited to U.S. Patent No. 5,469,187
(collectively, the "Intellectual Property Assets").
1.1.1 Assignor hereby transfers, grants, conveys, assigns, and
relinquishes exclusively to the Assignee all right, title and interest of
Assignor and all powers and privileges of Assignor, in, to, and under all
technical data, drawings, prototypes, engineering files, system
documentation, flow charts, and design specifications acquired or developed
by Assignor in connection with the development of the Intellectual Property
Assets.
1.2 Further Assurances. Assignor shall execute and deliver, from time
to time after the date hereof upon the request of the Assignee, such further
conveyance instruments, and take such further actions, as may be necessary or
desirable to evidence more fully the transfer of ownership of all the
Intellectual Property Assets to the Assignee, or the original ownership of
all the Intellectual Property Assets on the part of the Assignee, to the
fullest extent possible. Assignor therefore agrees to:
1. Execute, acknowledge, and deliver any affidavits or documents
of assignment and conveyance regarding the Intellectual Property
Assets;
2. Provide testimony in connection with any proceeding affecting
the right, title, or interest of the Assignee and to the
Intellectual Property Assets;
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3. Perform any other acts deemed necessary to carry out the intent
of this Assignment.
1.3 Acknowledgment of Rights. In furtherance of this Assignment,
Assignor hereby acknowledges that, from this date forward, the Assignee has
succeeded to all of Assignor's right, title, and standing to:
1. Receive all rights and benefits pertaining to the Intellectual
Property Assets, subject to the terms of this Assignment;
2. Institute and prosecute all suits and proceedings and take all
actions that the Assignee, in its sole discretion, may deem
necessary or proper to collect, assert, or enforce any claim,
right, or title of any kind in and to any and all of the
Intellectual Property Assets;
3. Defend and compromise any and all such actions, suits, or
proceedings relating to such transferred and assigned rights,
title, and interest, and do all other such acts and things in
relation thereto as the Assignee, in its sole discretion,
deems advisable.
1.4 Transfer of Materials. Assignor shall immediately surrender to the
Assignee all materials and work product in Assignor's possession or within
Assignor's control (including all copies thereof) directly related to the
Intellectual Property Assets.
SECTION 2
REPRESENTATIONS AND WARRANTIES
2.1 Each party represents and warrants to the other party that it has
obtained all necessary consents and has all necessary authority to carry out
the purposes and execute on behalf of their respective entities matters set
forth herein.
2.2 Subject to the terms of this Assignment, Assignor represents and
warrants that to the best of its knowledge and belief it has good and
marketable title to the Intellectual Property Assets, free and clear of any
and all licenses, liens, mortgages, encumbrances, pledges, security
interests, or changes of any nature whatsoever.
SECTION 3
CONFIDENTIAL INFORMATION
3.1 Assignor acknowledges that the Intellectual Property Assets may
contain confidential and proprietary information, and Assignor agrees to
maintain such information (including all portions or copies thereof)
confidential in the same manner as its own proprietary information is
maintained, not to disclose the information (or any portion or copy thereof)
to any
8
third party, and not to use such information (or any portion or copy thereof)
for any purpose except as authorized under this Assignment.
SECTION 4
MISCELLANEOUS
4.1 This Assignment shall insure to the benefit of, and be binding
upon, the parties hereto together with their respective legal
representatives, successors, and assigns.
4.2 This Assignment shall be governed by, and construed in accordance
with Texas law.
4.3 This Assignment merges, supersedes, and replaces all prior and
contemporaneous agreements, assurances, representations, and communications
between or among the parties hereto concerning the matters set forth in
Section 1.1 above.
IN WITNESS WHEREOF, the parties hereto have executed this Assignment the
day and year first above written.
ASSIGNOR:
ADVANCED TECHNOLOGY INCUBATOR, INC.
By
-----------------------------
▇▇▇ ▇▇▇▇▇, President
ASSIGNEE:
ELECTRONIC BILLBOARD TECHNOLOGY,
INC.
By
-----------------------------
▇▇▇▇ ▇▇▇▇▇, CEO
9
EXHIBIT B
ASSIGNMENT BACK
THIS ASSIGNMENT BACK, made and entered into as of the ____ Day of
___________, 1998, by and between ADVANCED TECHNOLOGY INCUBATOR, INC., a
corporation of Michigan, having is principal place of business at ▇▇▇▇ ▇▇▇▇
▇▇▇▇▇, ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇ (hereinafter "ATI"), and ELECTRONIC BILLBOARD
TECHNOLOGY, INC., a corporation of Delaware, having its principal place of
business at ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇, ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇
(hereinafter "EBT") (collectively the "Parties" or "parties").
NOW THEREFORE, for valuable consideration, the receipt of which is
hereby mutually acknowledged, the parties hereto, intending to be legally
bound, hereby agree as follows:
SECTION 1
TRANSFER AND ASSIGNMENT
1.1 Conveyance of Rights. EBT hereby transfers, grants, conveys,
assigns, and relinquishes exclusively to ATI all of EBT's right, title, and
interest (including to make, use, or sell under patent law; to copy, adapt,
distribute, display, and perform under copyright law; and to use and disclose
under trade secret law) in and to the PATENTS and TECHNOLOGY as defined in
the Patent Assignment and Royalty Agreement between the parties, including,
but not limited to U.S. Patent No. 5,469,187 and any improvements made
thereon by EBT (collectively, the "Intellectual Property Assets").
1.1.1 EBT hereby transfers, grants, conveys, assigns, and
relinquishes exclusively to ATI all right, title and interest of EBT and all
powers and privileges of EBT, in, to, and under all technical data, drawings,
prototypes, engineering files, system documentation, flow charts, and design
specifications acquired or developed by EBT in connection with the
development of the Intellectual Property Assets.
1.2 Further Assurances. EBT shall execute and deliver, from time to
time after the date hereof upon the request of ATI, such further conveyance
instruments, and take such further actions, as may be necessary or desirable
to evidence more fully the transfer of ownership of all the Intellectual
Property Assets to ATI, or the original ownership of all the Intellectual
Property Assets on the part of ATI, to the fullest extent possible. EBT
therefore agrees to:
1. Execute, acknowledge, and deliver any affidavits or documents
of assignment and conveyance regarding the Intellectual Property
Assets;
2. Provide testimony in connection with any proceeding affecting
the right, title, or interest of ATI and to the Intellectual
Property Assets;
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3. Perform any other acts deemed necessary to carry out the intent
of this Assignment Back.
1.3 Acknowledgment of Rights. In furtherance of this Assignment Back,
EBT hereby acknowledges that, from this date forward, ATI has succeeded to
all of EBT's right, title, and standing to:
1. Receive all rights and benefits pertaining to the Intellectual
Property Assets, subject to the terms of this Assignment Back;
2. Institute and prosecute all suits and proceedings and take all
actions that ATI, in its sole discretion, may deem necessary or
proper to collect, assert, or enforce any claim, right, or title
of any kind in and to any and all of the Intellectual Property
Assets;
3. Defend and compromise any and all such actions, suits, or
proceedings relating to such transferred and assigned rights,
title, and interest, and do all other such acts and things in
relation thereto as ATI, in its sole discretion, deems advisable.
1.4 Transfer of Materials. EBT shall immediately surrender to ATI all
materials and work product in EBT's possession or within EBT's control
(including all copies thereof) directly related to the Intellectual Property
Assets.
SECTION 2
REPRESENTATIONS AND WARRANTIES
2.1 Each party represents and warrants to the other party that it has
obtained all necessary consents and has all necessary authority to carry out
the purposes and execute on behalf of their respective entities matters set
forth herein.
2.2 Subject to the terms of this Assignment Back, EBT represents and
warrants that to the best of its knowledge and belief it has good and
marketable title to the Intellectual Property Assets, free and clear of any
and all licenses, liens, mortgages, encumbrances, pledges, security
interests, or changes of any nature whatsoever.
SECTION 3
CONFIDENTIAL INFORMATION
3.1 EBT acknowledges that the Intellectual Property Assets may contain
confidential and proprietary information, and EBT agrees to maintain such
information (including all portions or copies thereof) confidential in the
same manner as its own proprietary information is
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maintained, not to disclose the information (or any portion or copy thereof)
to any third party, and not to use such information (or any portion or copy
thereof) for any purpose except as authorized under this Assignment Back.
SECTION 4
MISCELLANEOUS
4.1 This Assignment Back shall insure to the benefit of, and be binding
upon, the parties hereto together with their respective legal
representatives, successors, and assigns.
4.2 This Assignment Back shall be governed by, and construed in
accordance with Texas law.
4.3 This Assignment Back merges, supersedes, and replaces all prior and
contemporaneous agreements, assurances, representations, and communications
between or among the parties hereto concerning the matters set forth in
Section 1.1 above.
IN WITNESS WHEREOF, the parties hereto have executed this Assignment
Back the day and year first above written.
ATI:
ADVANCED TECHNOLOGY INCUBATOR, INC.
By
------------------------------
▇▇▇ ▇▇▇▇▇, President
EBT:
ELECTRONIC BILLBOARD TECHNOLOGY, INC.
By
------------------------------
▇▇▇▇ ▇▇▇▇▇, CEO
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EXHIBIT C
ASSIGNMENT BACK
THIS ASSIGNMENT BACK, made and entered into as of the ____ Day of
___________, 1998, by and between ADVANCED TECHNOLOGY INCUBATOR, INC., a
corporation of Michigan, having is principal place of business at ▇▇▇▇ ▇▇▇▇
▇▇▇▇▇, ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇ (hereinafter "ATI"), and ELECTRONIC BILLBOARD
TECHNOLOGY, INC., a corporation of Delaware, having its principal place of
business at ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇, ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇
(hereinafter "EBT") (collectively the "Parties" or "parties").
NOW THEREFORE, for valuable consideration, the receipt of which is
hereby mutually acknowledged, the parties hereto, intending to be legally
bound, hereby agree as follows:
SECTION 1
TRANSFER AND ASSIGNMENT
1.1 Conveyance of Rights. EBT hereby transfers, grants, conveys,
assigns, and relinquishes exclusively to ATI all of EBT's right, title, and
interest (including to make, use, or sell under patent law; to copy, adapt,
distribute, display, and perform under copyright law; and to use and disclose
under trade secret law) in and to the PATENTS and TECHNOLOGY as defined in
the Patent Assignment and Royalty Agreement between the parties, including,
but not limited to U.S. Patent No. 5,469,187 (collectively, the "Intellectual
Property Assets").
1.1.1 EBT hereby transfers, grants, conveys, assigns, and
relinquishes exclusively to ATI all right, title and interest of EBT and all
powers and privileges of EBT, in, to, and under all technical data, drawings,
prototypes, engineering files, system documentation, flow charts, and design
specifications acquired or developed by EBT in connection with the
development of the Intellectual Property Assets.
1.2 Further Assurances. EBT shall execute and deliver, from time to
time after the date hereof upon the request of ATI, such further conveyance
instruments, and take such further actions, as may be necessary or desirable
to evidence more fully the transfer of ownership of all the Intellectual
Property Assets to ATI, or the original ownership of all the Intellectual
Property Assets on the part of ATI, to the fullest extent possible. EBT
therefore agrees to:
1. Execute, acknowledge, and deliver any affidavits or documents
of assignment and conveyance regarding the Intellectual
Property Assets;
2. Provide testimony in connection with any proceeding affecting
the right, title, or interest of ATI and to the Intellectual
Property Assets;
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3. Perform any other acts deemed necessary to carry out the intent
of this Assignment Back.
1.3 Acknowledgment of Rights. In furtherance of this Assignment Back,
EBT hereby acknowledges that, from this date forward, ATI has succeeded to
all of EBT's right, title, and standing to:
1. Receive all rights and benefits pertaining to the Intellectual
Property Assets, subject to the terms of this Assignment Back;
2. Institute and prosecute all suits and proceedings and take all
actions that ATI, in its sole discretion, may deem necessary
or proper to collect, assert, or enforce any claim, right, or
title of any kind in and to any and all of the Intellectual
Property Assets;
3. Defend and compromise any and all such actions, suits, or
proceedings relating to such transferred and assigned rights,
title, and interest, and do all other such acts and things in
relation thereto as ATI, in its sole discretion, deems advisable.
1.4 Transfer of Materials. EBT shall immediately surrender to ATI all
materials and work product in EBT's possession or within EBT's control
(including all copies thereof) directly related to the Intellectual Property
Assets.
SECTION 2
REPRESENTATIONS AND WARRANTIES
2.1 Each party represents and warrants to the other party that it has
obtained all necessary consents and has all necessary authority to carry out
the purposes and execute on behalf of their respective entities matters set
forth herein.
2.2 Subject to the terms of this Assignment Back, EBT represents and
warrants that to the best of its knowledge and belief it has good and
marketable title to the Intellectual Property Assets, free and clear of any
and all licenses, liens, mortgages, encumbrances, pledges, security
interests, or changes of any nature whatsoever.
SECTION 3
CONFIDENTIAL INFORMATION
3.1 EBT acknowledges that the Intellectual Property Assets may contain
confidential and proprietary information, and EBT agrees to maintain such
information (including all portions or copies thereof) confidential in the
same manner as its own proprietary information is
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maintained, not to disclose the information (or any portion or copy thereof)
to any third party, and not to use such information (or any portion or copy
thereof) for any purpose except as authorized under this Assignment Back.
SECTION 4
MISCELLANEOUS
4.1 This Assignment Back shall insure to the benefit of, and be binding
upon, the parties hereto together with their respective legal
representatives, successors, and assigns.
4.2 This Assignment Back shall be governed by, and construed in
accordance with Texas law.
4.3 This Assignment Back merges, supersedes, and replaces all prior and
contemporaneous agreements, assurances, representations, and communications
between or among the parties hereto concerning the matters set forth in
Section 1.1 above.
IN WITNESS WHEREOF, the parties hereto have executed this Assignment
Back the day and year first above written.
ATI:
ADVANCED TECHNOLOGY INCUBATOR, INC.
By
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▇▇▇ ▇▇▇▇▇, President
EBT:
ELECTRONIC BILLBOARD TECHNOLOGY, INC.
By
-----------------------------
▇▇▇▇ ▇▇▇▇▇, CEO
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