AGREEMENT BETWEEN DOCUMENT SECURITY SYSTEMS, INC. AND ERGONOMIC GROUP, INC.
AGREEMENT
BETWEEN
DOCUMENT
SECURITY SYSTEMS, INC.
AND
ERGONOMIC
GROUP, INC.
This
Agreement is effective as of April 11, 2008 between DOCUMENT SECURITY SYSTEMS,
INC. (“DSS”), a corporation organized and existing under the laws of the State
of New York with its principal address at First Federal Plaza, Suite 1525,
▇▇
▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇ and ERGONOMIC GROUP, INC.
(“Ergonomic”), a corporation organized and existing under the laws of
the
State
of New York with its principal address at ▇▇▇-▇
▇▇▇▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇.
DSS and
Ergonomic may also be referred to herein individually as a “Party” and together
as the
“Parties.”
RECITALS
WHEREAS,
the Parties are engaged in the business of designing and developing systems
and
products relating to security printing and document anti-counterfeiting and
have
acquired and developed substantial patented and patent pending technology
and
know-how for creating encoded images useful in security printing and document
anti-counterfeiting, including such printing and anti-counterfeiting implemented
over communications networks; and
WHEREAS,
the Parties wish to acquire and grant patent
licenses to each other and to employ the Technology (as defined below) and
the
On Demand Services Know-how (as
defined below) in a Licensed Field (as defined below) upon the terms and
conditions contained herein.
NOW,
THEREFORE, in consideration of the promises and the mutual covenants of this
Agreement, the Parties hereby agree as follows:
AGREEMENT
| 1. |
Definitions
|
| 1.1 |
“Affiliate”
shall mean any corporatiaon, partnership or limited liability company
of
which more than 50% of the voting control and economic ownership
is owned,
directly or indirectly, by a
Party
or
under common control of a
Party.
|
| 1.2 |
“AuthentiGuard
Pantograph 4000”
shall mean the technology which creates pantograph backgrounds
embedding
hidden symbols, words and designs into a printed document background
that
appear when the document is copied using industry standard copiers
and computer publishing systems and currently marketed by DSS under
the
trade
name“AuthentiGuard
Pantograph 4000™.”
|
| 1.3 |
“Calendar
Quarter”
shall mean a three (3) month period denoting the time span over
which
royalties are to be calculated and paid (pro
rated
for any partial period(s)).
The first Calendar Quarter commences on the Effective Date of this
Agreement. Subsequent Calendar Quarters shall begin on the first
day
following the end of the previous Calendar Quarter (e.g., if the
Effective
Date is April
3, 2008,
the first Calendar Quarter would end June 30, 2008 and the second
Calendar
Quarter would begin July 1, 2008.)
|
| 1.4 |
“Confidential
Information”
shall mean any information furnished or made available on a paper,
electronic or mechanical medium by one Party to another Party
that
(a) is confidential and is designated by a Party on the medium
as
confidential, proprietary, a trade secret or a similar
designation; (b)
relates to past, present or future research, developments, improvements,
inventions, processes, software, programs, Intellectual Property,
techniques, designs or other technical data, contact lists or other
compilations for marketing or development, or regarding administrative,
management, financial or marketing activities of the Party disclosing
such
information or regarding the identities of customers of the Party
disclosing such information;
and (c) relates to the subject matter of this Agreement. Confidential
Information shall include, without limitation, the Technology and
the On
Demand Services Know-how.
|
| 1.5 |
“Digital
File”
shall mean any executable code owned and delivered by a
Party for use by the other Party in connection with the Technology
(as
defined hereinbelow) or On Demand Services Know-how (as defined
hereinbelow) to enable the placement of security features in Licensed
Products (as defined hereinbelow).
|
| 1.6 |
“Effective
Date”
shall mean the date set forth in the first paragraph of this
Agreement.
|
| 1.7 |
“Gross
Margin”
shall mean the invoiced amount of a product or service,
less the
direct, unburdened cost of goods sold; allowances and discounts
actually
credited; taxes, tariffs and import/export duties (but not value-added
taxes assessed on income derived from sales); and reasonable commissions
paid to internal sales personnel of a selling Party and independent
sales
entities that are not in the employ or under the control of a selling
Party. Installation and set-up fees charged to a customer by a
Party shall
not be included in Gross Margin. Commission deductions shall not
exceed
20% of an invoiced amount.
|
| 1.8 |
“Intellectual
Property” shall
mean, wherever existing in the world, (i) patents, whether in the
form of
utility patents, design patents or industrial designs, and all
pending
applications thereof; (ii) trademarks, trade names, service marks,
domain
names, designs, logos, trade dress and trade styles, whether or
not
registered, and all pending applications for registration thereof;
(iii)
copyrights, whether or not registered, and all pending applications
for
registration thereof; (iv) know-how, inventions, improvements,
methods,
processes, operations manuals and procedures, research records,
trade
secrets, confidential information, product designs, engineering
specifications and drawings, technical information, formulas, customer
lists, supplier lists and market analyses; (v) computer software
and
programs, and related flow charts, programmer notes, documentation,
updates, and data, whether in object or source code form; and (vi)
all
other similar proprietary rights, whether or not
registered.
|
| 1.9 |
“Licensed
Field”
shall mean all implementations of the Technology (as subsequently
defined
herein) which involve the transmission of a file on the Internet,
on an
intranet or by any other electronic means of communication, which
file is
printed on paper or viewed on a monitor after transmission, except
for (i)
a file that is used to batch print at least 1,000 impressions,
which
impressions contain static information, and (ii) a file
of static images utilized for lithographic printing plate processors
which
output onto materials including, but not limited to, megalith,
film,
metal, polyester and silver master that are used as printing plates
on
printing presses.
|
| 1.10 |
“Licensed
Patents”
shall mean both “DSS
Licensed Patents”
and “Ergonomic
Licensed Patents.” “DSS
Licensed Patents”
are the patents and patent applications listed on Exhibit A, and
all other
present and future United States and foreign patents owned by DSS
or under
which DSS has rights that protect inventions that are practically
useful
in the Licensed Field.
“Ergonomic Licensed Patents”
are the patents and patent applications listed on Exhibit B, and
all other
present and future United States and foreign patents owned by Ergonomic
or
under which Ergonomic has rights that protect inventions that are
practically useful in the Licensed
Field.
|
2
| 1.11 |
“Licensed
Products”
shall mean products
and services in
the Licensed Field that incorporate the Technology (defined below)
and/or
On Demand Services Know-how (defined below) and/or are covered
by the DSS
Licensed Patents and/or are covered by the Ergonomic Licensed Patents,
and
include, but are not limited to, files that are transmitted (for
example,
a file transmitted from a server operated by one of the Parties)
and
systems that transmit files (for example, a server furnished by
a Party to
a customer for use by the customer on its
premises).
|
| 1.12 |
“On
Demand Services Know-how”
shall mean know-how that now or in the future is utilized by Ergonomic
for
providing over a network, in response to receipt of a communicated
document over that network, a secure image of the entire document
or a
part thereof using pre-stored
fonts.
|
| 1.13 |
“Technology”
shall mean (i) AuthentiGuard Pantograph
4000, AuthentiGuard Survivor
21, and all other AuthentiGuard™ technologies
including, without limitation, AuthentiGuard Prism, AuthentiGuard
Block-Out, AuthentiGuard Laser Moiré, and all Improvements thereon owned
by DSS, (ii) all Digital Files now and in the future owned by
or under license to DSS,
and all Improvements thereon developed and owned by DSS;
and (iii) all
specialized, novel or unique techniques, practices, inventions,
digitized
formats, improvements, drawings, computer imaging, computer generated
step
and repeat, discoveries, know-how, trade secrets, and all related
knowledge, skill, experience, technical and other proprietary information
and data and other Intellectual Property now or in the future owned
by or
under license to DSS that are used to secure documents and files
and to
thwart counterfeiting,
which Ergonomic acknowledges includes proprietary, valuable and
substantial trade secrets of DSS.
|
| 1.14 |
“Technology
Marks”
shall mean DSS’s
trademarks
and service marks which serve to identify DSS as the source of
the
Technology.
|
| 1.15 |
“Territory”
shall mean the
entire world including but not limited to the
United States of America.
|
| 2. |
Grant
of Licenses
|
| 2.1 |
Grant
of License to Ergonomic. DSS
hereby grants to Ergonomic for the Term (as defined in paragraph
13.1) and
in the Territory an exclusive,
non-transferable license
(except as set forth in paragraphs 2.2 and 2.3) to use its Technology
and
DSS Licensed Patents in the Licensed Field. Ergonomic
shall not have the right to manufacture,
market or sell, directly or indirectly, or
the right or power to license to any other person the right to
manufacture,
market or sell, directly or indirectly, blank safety paper which
utilizes
the Technology. For purposes hereof, the term “blank safety paper” means
paper which does not have customer specific information and does
not have
visible
color
such as words, symbols, borders, artwork
or similar features. Ergonomic understands and agrees that it shall
not
have the right to print “generic” or “blank safety paper” under
this Agreement.
|
| 2.2 |
Grant
of Licenses to DSS.
Ergonomic hereby grants back to DSS for the Term (as defined in
paragraph
13.1) and in the Territory a non-exclusive, non-transferable license
(except as set forth in paragraph 2.3) to use the Technology and
DSS
Licensed Patents in the Licensed Field. Ergonomic also grants to
DSS for
the Term (as defined in paragraph 13.1) and in the Territory a
non-exclusive, non-transferable license (except as set forth in
paragraph
2.3) to use On Demand Services Know-how and Ergonomic Licensed
Patents in
the Licensed Field.
|
3
| 2.3 |
Grant
of Licenses to Others.
The Parties agree that each grant of a license, sublicense or any
other
transfer of the Technology, DSS Licensed Patents, On Demand Services
Know-how and/or Ergonomic Licensed Patents in the Licensed Field,
including, without limitation, to resellers, is prohibited unless
the
Parties hereinafter agree to such grants on terms mutually agreeable
to
both, which agreement shall be in writing. The provisions of this
paragraph 2.3 shall not apply to all licenses, sublicenses or any
other
transfers by the Parties of Licensed Products in the Licensed Field,
including without limitation, the inclusion of the Technology,
DSS
Licensed Patents, On Demand Services Know-how and/or Ergonomic
Licensed
Patents in the sale of “bundles” of related or unrelated products or
services.
|
| 2.4 |
Proprietary
Rights.
Except as expressly set forth in this Agreement, all rights or
licenses
with respect to the Technology and On Demand Services Know-how,
including
any Improvements (as defined in paragraph 4.2) or modifications
to the
Technology and/or On Demand Services Know-how made by the Parties,
Technology Marks, Confidential or Proprietary Information or other
know-how and Intellectual Property of the Parties belong to the
respective
Parties.
The Parties acknowledge that application of the Technology and
On Demand
Services Know-how may contain valuable trade secrets and each Party
agrees
to employ reasonable security precautions to maintain the confidentiality
of such trade secrets.
Except as otherwise provided herein,
neither
Party shall
knowingly
assist any third party
to
reverse engineer
or
assemble,
produce, use, license, sell or otherwise distribute or exploit
the
Technology
or
On Demand Services Know-how or Intellectual Property derived from
the
other Party or
bypass or defeat protection methods for
preventing unauthorized access to such Technology or On Demand
Services
Know-how. Notwithstanding
the foregoing, for purposes of this Section 2.4, neither Party
shall be in
violation of the restrictions provided herein by reason of the
sale of
Licensed Products to customers otherwise in compliance with this
Agreement.
|
| 3. |
Distribution/Disclosure
of Technology and Competition
|
| 3.1 |
Distribution/Disclosure
of Technology.
Ergonomic and DSS may not disclose the Technology or On Demand
Services
Know-how, except to the extent that the Technology or On Demand
Services
Know-how is embedded in Licensed Products furnished by a Party
to an
existing or potential customer of the Party. Ergonomic
and DSS will ensure that their respective employees, consultants,
directors, agents and other applicable third parties are contractually
bound to honor this provision.
|
| 3.2 |
Patent
Marking.
Each Party hereby agrees to use reasonable commercial efforts to
▇▇▇▇,
without charge to the other Party, all
Licensed Products made under the terms and conditions of this Agreement
with a suitable legend in accordance with statutory requirements
and in a
form approved in advance by the other Party indicating that the
Licensed
Products
are covered under specified patents of one or both of the respective
Parties
as
the case may be. Should
either Party believe that any Licensed
Product
should
be marked in accordance with this Agreement, such Party shall notify
in
writing that the other Party do so, particularly identifying such
Licensed
Product
and the specific patents which are applicable to such Licensed
Products.
However, the other Party shall not be required to ▇▇▇▇ Licensed
Products
with a degree of care beyond that exercised by the requesting Party
to
▇▇▇▇ its own products.
|
4
| 3.3 |
Competition.
The Parties intend to compete in the marketplace for new customers,
it
being understood that each Party has present customers. The respective
customer list of each Party will be made known to the other Party
from
time to time as reasonably requested by the other Party so as to
inform
the marketing efforts of the other Party. Such customer list shall
include
then-current customers of such Party and such additional entities
that are
then-determined to be potential customers of such Party based upon
marketing efforts of such Party. Neither Party shall call on the
other’s
then-current customers and then-potential customers without
permission of the other Party.
The customer lists shall be kept confidential at the Board of Directors,
CEO and President levels of the Parties, and their respective
attorneys.
|
| 4. |
Improvements
|
| 4.1 |
Ownership
of Improvements. During
the Term, each Party shall advise the other of any technical improvements,
modifications or enhancements relating to the Technology or
On Demand Services Know-how created from time to time and
useful in the Party’s sole discretion in connection with the Technology or
On Demand Services Know-how
(collectively
referred to as “Improvements”). Any
such Improvement shall be the property of the Party that made the
Improvement and shall be licensed in accordance with the license
grants of
Section 2. Improvements that are made jointly by the parties shall
be
owned jointly and equally. Each Party agrees to execute any and
all
documents requested by the other to perfect rights to jointly-made
Improvements.
|
| 5. |
Technical
Support; Training and Technology
Services
|
| 5.1 |
General
Support Services.
Each Party shall, at no additional charge to the other, provide
to the
other Party reasonable assistance and technical support related
to On
Demand Services Know-how, the Technology, Improvements (other than
those
Improvements owned by the other Party), Technology Marks and Confidential
Information.
|
| 5.2 |
Limitation
on Liability for Support Services.
Except in the event of willful misconduct, in no event shall the
technicians, employees, officers or agents of either Party or its
Affiliates be liable to the other Party for any damages or claims
for
damages which may occur during the provision of support
services.
|
| 5.3 |
Customer
Support Services. Each
Party shall be responsible for the provision of customer, technical
and
other support services to its customers and such Party may, at
its sole
option, receive compensation from its customers for the provision
of such
services. Each Party agrees to assist the other Party in its provision
of
any customer, technical and other support services to the customers
of
such other Party on mutually agreeable terms and
conditions.
|
| 6. |
Royalty
Fees
|
|
6.1
|
Royalty
Fees.
In consideration of the rights and licenses granted herein to
be rendered by each Party to the other and for other good and valuable
consideration,
each Party agrees to pay royalties to the other Party in
the amount of 50% of the Gross Margin on sales of Licensed Products.
The
Parties agree to reasonably price the Licensed Products and to
also keep
accurate records of the sale prices for Licensed Products, whether
or not
such Licensed Products are included in a “bundle” of other products.
Notwithstanding the foregoing, DSS shall not have to pay any royalty
to
Ergonomic far payments received or to be received pursuant to existing
agreements between DSS and each of (i) HSBC
Fianzas, S.A. Grupo Financiero HSBC,
and (ii) Indra
Sistemas S.A. with respect to agreements with or related to The
Panama
Canal Authority.
|
5
| 6.2 |
Each
Party shall, concurrent with the delivery of its Sales Report (as
defined
in Section 7.1 below) for a Calendar Quarter, deliver to the other
Party
the Royalty Fee payment in U.S. dollars in full for such Calendar
Quarter.
|
|
6.3
|
If
a Party disputes any information contained in a Sales Report or
the amount
of any Royalty Fee payment provided by the other Party, the disputing
Party shall, within thirty
(30)
business days from the date of the disputed Sales Report or payment,
as
the case may be, notify the reporting Party, in writing, concerning
the
substance of the dispute and include any supporting documentation
related
thereto. The Parties agree to work together in good faith to resolve
each
dispute. The
receipt or acceptance by a Party of any Sales Report or Royalty
Fee
payment shall not prevent that
Party
from subsequently challenging, within thirty (30)
business days from the date of the disputed Report or Royalty Fee
payment,
the validity or accuracy of such Sales
Report
or
Royalty Fee payment. All
fees due hereunder are non-refundable (except as expressly provided
herein) and not contingent on any additional services or products
to be
provided hereunder.
|
|
6.4
|
Failure
to Pay.
If
a Party fails to pay any amount owed to the other Party under this
Agreement when such amount is due and payable, the failing Party
shall
also pay the
other Party interest on
the amount of such under-payment or non-payment at
the rate equal to three quarters of a percent (0.75%) per month,
accruing
from
the due date until paid. A
Party shall also have the right, at its option, to terminate this
Agreement should the other Party not cure any default for non-payment
within a reasonable time under the circumstances. Any
payments received from a failing Party, when there is any amount
overdue,
shall be applied first to discharge any such accrued late charges.
|
| 7. |
Sales
Reports; Record Inspection and
Audit
|
|
7.1
|
Sales
Reports.
Within
forty-five (45) days after the end of each Calendar Quarter, each
Party
shall deliver a report to the other Party certified by an authorized
officer of such Party showing in detail the dollar value received
for
Licensed Products sold, and the amount of Royalty Fees due to the
other
Party for the
prior
Calendar Quarter (a “Sales Report”). Each Party shall also
provide
additional supporting information and documentation relating
to Licensed
Products
sold as the other Party may reasonably request.
The failure of a Party to deliver a Sales Report on its due date
shall be
deemed to be a material breach of this
Agreement.
|
|
7.2
|
Maintenance
of Books and Records; Record Inspection and Audit.
During the Term and for a period of two
(2)
years thereafter, each Party agrees to keep and maintain accurate
and
separate records related to this Agreement, including Customer
agreements
which resulted in the distribution of Licensed Products. Each
Party further agrees that during the Term and for such two (2)
year period
it
shall
make these records available for inspection, from
time to time, by the other Party, or a
third party retained by the
other Party, at
the Party’s site and at the other Party’s cost.
Any audit and/or inspection shall be conducted during regular
business hours at a Party’s facilities upon at least three
(3)
business days prior written notice. Such examination shall be conducted
in
such a manner as to not unduly interfere with a Party’s business.
Subject
to Section 7.3, if the audit reveals an underpayment of Royalty
Fees by a
Party under this Agreement, the Party shall pay to the other Party
the
full amount of any underpayment revealed by the audit, plus interest
on
the underpaid amounts accruing at the rate of three quarters of
a percent
(0.75%) per month until all underpaid amounts are paid in full.
Notwithstanding
the foregoing, if such audit reveals an underpayment by an amount
in
excess of twenty percent (20%) for the period covered by the audit
report,
the Party shall pay
to the
other Party
all of the fees and
costs associated with such audit,
the amount underpaid, interest due and an additional payment of
fifteen
percent (15%) of the total amount due for the audited period.
|
6
|
7.3
|
Audit
Dispute Resolution Process.
If
an audited Party disputes or otherwise desires to obtain third
party
verification of an audit report previously obtained by an auditing
Party,
within thirty (30) days from the date of the previous audit report
the
audited Party shall notify the auditing Party of its intent to
verify the
audit report. The audited Party shall schedule, with an independent
auditor, an audit of the subject records as soon as possible following
the
date of its notice to the auditing Party hereunder. The auditing
Party
shall timely cooperate with and provide to the auditor all documentation
and other information requested by the auditor. If the results
of the
independent audit are consistent with the auditing Party’s previous audit
results, the audited Party shall pay all amounts due as set forth
in
Section 7.2 and all costs and fees associated with the independent
audit.
If the results of the independent audit differ from the previous
audit,
the Parties shall rely upon the results of the independent audit
in
determining what, if any, amounts are due pursuant to Section 7.2
and both
Parties shall equally share the cost and fees of the independent
audit.
The Parties agree that a final determination of a Party’s underpayment by
an amount in excess of twenty percent (20%) for the period covered
by the
audit report shall be deemed to be a material breach of this
Agreement.
|
| 8. |
Confidentiality
|
|
8.1
|
The
Parties acknowledge that in the course of their performance under
this
Agreement, they may be furnished with, receive, or otherwise have
access
to Confidential Information of or concerning the other Party. For
the purposes of this Agreement, the Party disclosing Confidential
Information shall be referred to as the “Disclosing Party” and the Party
receiving Confidential Information shall be referred to as the
“Receiving
Party.”
|
|
8.2
|
A
Receiving Party shall not use the Disclosing Party’s Confidential
Information for any purpose other than in accordance with this
Agreement
and shall not disclose, without the prior written consent of the
Disclosing Party, Confidential Information to any person,
other than persons
approved by both Parties who
(a) are subject to a nondisclosure obligation comparable in scope
to this
Section;
and (b) have a need to know such Confidential Information.
|
|
8.3
|
A
Receiving Party shall not be liable for disclosure or use of any
particular Confidential Information that: (a) is or becomes publicly
known
through no fault of the Receiving Party; (b) is developed independently
by
the Receiving Party without reference to any Confidential Information
of
the Disclosing Party as evidenced by the Receiving Party’s records; (c) is
known by the Receiving Party at the time of disclosure by the Disclosing
Party if the Receiving Party does not then have a duty to maintain
its
confidentiality,
as
evidenced by the Receiving Party’s records; or (d) is rightfully obtained
by the Receiving Party from a third party not obligated to preserve
its
confidentiality. A Receiving Party also may disclose Confidential
Information solely to the extent required by a court or other governmental
authority, provided that (i) the Receiving Party gives the Disclosing
Party prompt prior notice of the required disclosure;
(ii) the Receiving Party uses reasonable efforts to resist disclosing
the
Confidential Information;
(iii) the Receiving Party cooperates with the Disclosing Party
to
obtain
a protective order or otherwise limit the disclosure;
and (iv) as soon as reasonably possible, the Receiving Party provides
a
letter from its counsel confirming that the Confidential Information
is in
fact
required to be disclosed. The
Parties acknowledge and agree that they may be required under applicable
federal securities laws and regulations to disclose the terms of
this
Agreement, which shall not be deemed a violation of this Section
8.
|
|
8.4
|
All
Confidential Information shall remain the property of and be deemed
proprietary to the Disclosing Party. At any time upon the Disclosing
Party’s request, the Receiving Party shall promptly return to the
Disclosing Party all Confidential Information, including all copies
thereof, and all documents, materials, or products generated or
produced
by,
or at the request of,
the Receiving Party that contain, summarize, outline or otherwise
reference the Disclosing Party’s Confidential Information (individually
and collectively, “Copies”). At the Disclosing Party’s option,
the Receiving Party shall destroy all of
the Disclosing Party’s
Confidential Information and Copies and
certify such destruction to the Disclosing Party. This paragraph
shall not
apply to Confidential Information that is furnished to a Party
under its
license rights and that is used in exercising those
rights.
|
7
| 8.5 |
A
Receiving Party further agrees to receive Confidential Information
in
strict confidence and to accord such Confidential Information at
least the
same level of protection against unauthorized use or disclosure
that the
Receiving Party customarily accords to its own confidential, proprietary
or trade secret information of a like nature, but in no event less
than a
reasonable level of protection. The Receiving Party shall have
sole
responsibility for the physical security and maintenance of the
confidentiality of all Confidential Information delivered to it
by the
Disclosing Party. The Disclosing Party shall have the right, upon
at least
three (3) business days prior written notice to the Receiving Party
and
during the Receiving Party’s normal business hours, to visit and inspect
the Disclosing Party’s places of business for the purpose of verifying, to
the satisfaction of the Disclosing Party, that the Receiving Party
is
performing its obligations under this Section
8.
|
| 9. |
Infringement
Indemnity; Infringement Lawsuits and Patent
Prosecution
|
|
9.1
|
DSS
shall indemnify, defend and hold Ergonomic and its Affiliates,
shareholders, directors, officers, members, managers, employees,
agents,
independent contractors, licensees and representatives (“Ergonomic
Indemnified Parties”) harmless for, from and against, any and all suits,
actions and proceedings, claims, threats, demands, liabilities,
losses,
damages, judgments, obligations, fines, expenses (including, without
limitation, attorneys’ fees and expert witness fees) and costs
(individually and collectively, “Infringement Claims”), made against an
Ergonomic Indemnified Party by a third party arising from or in
connection
with any actual or alleged claims that the Technology, Improvements
(other
than improvements owned by Ergonomic or jointly owned by Ergonomic),
Technology Marks, Confidential Information and/or other proprietary
information provided by DSS under this Agreement infringes any
patent,
trademark, copyright, trade secret or other property right of a
third
party. The indemnification in this Section 9 is contingent upon
(a) the
Ergonomic Indemnified Parties promptly notifying DSS in writing
of any
known claim which may give rise to an Infringement Claim; (b) DSS’s
control of the defense and settlement of such Infringement Claims
at DSS’s
sole expense; provided, however, that any settlement be made with
the
consent of or with an unconditional full release of the Ergonomic
Indemnified Parties; and (c) the Ergonomic Indemnified Parties
cooperate
with all reasonable requests of DSS (at DSS’s expense) in defending or
settling an Infringement Claim. Ergonomic Indemnified Parties reserve
the
right to retain their own counsel, at Ergonomic’s
sole
expense
to participate in the defense of any Infringement
Claims.
Ergonomic Indemnified Parties may not take deliberate and willful
action
that impairs DSS’s defense of the Infringement Claims. DSS will have no
obligation to indemnify Ergonomic or Ergonomic personnel for claims
that
DSS’s Technology, Improvements, Technology Marks, and/or Confidential
Information, infringe the intellectual property rights of a third
party to
the extent such claims arise solely as a result of Ergonomic’s
implementation of DSS’s Technology with software and/or hardware not
furnished or authorized by DSS, and provided such infringement
or claim
would have been avoided by using some other reasonable
implementation.
|
8
|
9.2
|
In
addition to the rights and obligations of the Parties set forth
in Section
9.1, if an Infringement Claim is made or threatened, DSS, at its
own
expense and in its sole discretion, may exercise any of the following
remedies: (i) obtain for Ergonomic the right to continue to use
the
Technology, Improvements, Technology Marks, and/or Confidential
Information, as the case may be, consistent with this Agreement;
(ii)
modify the Technology, Improvements, Technology Marks, and/or Confidential
Information, as the case may be, so it is non-infringing, provided
the
modifications do not interfere with Ergonomic’s sales, orders and customer
relationships, or (iii) refund all License Fees paid hereunder
by
Ergonomic for the prior twelve (12) month period. The foregoing
represents
DSS’s entire obligation, and Ergonomic’s entire remedy, with respect to
Infringement Claims.
|
|
9.3
|
Infringement
Lawsuits.
In the event that a Party learns of the infringement of one or
more
Licensed Patents of the other Party utilized in the Licensed Field
that
are actually in substantial use by customers of such Party, the
Party may
request that the other Party take legal action against the infringement
of
the Licensed Patents of said other Party. Such request shall be
made in
writing and shall include reasonable evidence of such infringement
and
damages to such Party. If the infringing activity has not been
abated
within one hundred and twenty (120) days following the effective
date of
such request and the other Party shall not have filed suit against
the
infringing party, then the requesting Party shall have the right
to
commence suit on its own account. In such case, (1) the requesting
Party
shall prosecute the suit at its own expense and shall be the sole
beneficiary of any recovery, and (2) the other Party will reasonably
cooperate and advance such suit (including becoming a named party
to the
suit if necessary), but at the requesting Party’s
expense.
|
|
9.4
|
Patent
Prosecution.
Each Party will diligently prosecute patent applications on its
inventions
in the Licensed Field and maintain its respective Licensed Patents
using
counsel of its choice. The Parties shall share equally in the prosecution
and maintenance costs with respect to patents that apply to the
Licensed
Field. The Parties will also diligently prosecute patent applications
on
any joint inventions in the Licensed Field that both Parties determine
is
appropriate for patent protection.
|
| 10. |
Mutual
Indemnifications
|
|
10.1
|
Each
Party shall
indemnify, defend and hold the other Party and its directors, officers,
employees, agents and independent contractors (“Indemnified Parties”)
harmless from and against, any and all suits, actions and proceedings,
claims, liabilities, losses, damages, expenses (including attorneys’ fees)
and costs (individually
and collectively, “Claims”),
made against an Indemnified Party by a third party to the extent
arising
from
the
Party’s
(or its officers’, directors’, employees’, agents’ and independent
contractors’)
use of the Technology, On Demand Services Know-how or Licensed
Patents as
the case may be in an improper manner unauthorized by the other
Party. The
indemnities
in
this Section 10 are
contingent upon: (a) the Indemnified Parties promptly notifying
the Party
in writing of any claim which may give rise to a Claim
for indemnification hereunder;
(b) the Party being allowed to control the defense and settlement
of such
Claims; provided, however, that any settlement be made with the
consent
of
the Indemnified Parties or includes, as
an
unconditional part
thereof, a full
release of the Indemnified Parties; and (c) the Indemnified Parties
cooperating
with all reasonable requests of the Party (at the Party’s expense) in
defending or settling a Claim. Indemnified Parties reserve the
right to
retain their
own counsel, in addition to the Party’s counsel, at their sole expense to
participate in the defense of any Claim
provided
that Indemnified Parties may not take deliberate and willful action
that
impairs the Party’s defense of the
Claim.
|
9
| 11. |
Limited
Warranties; Limitation of
Liability
|
|
11.1
|
Each
Party represents and warrants to the other that it has the right,
power
and authority to enter into this Agreement and that the signatory
on
behalf of such Party to this Agreement has full authority to enter
into
and bind the Party to the obligations set forth in this
Agreement.
|
|
11.2
|
Each
Party represents and warrants to the other that it has no knowledge
of
patents or other proprietary rights of another, or a claim by another
that
it has patents or other proprietary rights, that are infringed
respectively by the Technology or On Demand Services Know-how licensed
hereunder.
|
|
11.3
|
DSS
represents and warrants to Ergonomic that as of the Effective Date
and
throughout the Term that: (a) Improvements (except as otherwise
provided
herein), Technology Marks, and DSS’s Confidential Information are the sole
and exclusive property of DSS; (b) that DSS has all right, title
and
interest in the Technology, Improvements, Technology Marks, and
DSS
Confidential Information to grant to Ergonomic the rights provided
in this
Agreement; (c) that nothing contained in this Agreement conflicts
with any
other obligation or agreement of DSS; and (d) that no liens, claims
or
other obligations exist that will affect DSS’s use or rights to any
Technology, Improvements, Technology Marks, and/or Confidential
Information granted under this Agreement.
DSS does not warrant that the Technology will meet Ergonomic’s
requirements or that the use of the Technology will be uninterrupted
or
error-free.
|
|
11.4
|
LIMITATION
OF LIABILITY.
NEITHER PARTY SHALL BE LIABLE TO THE OTHER PARTY FOR ANY INDIRECT,
CONSEQUENTIAL, INCIDENTAL, SPECIAL OR PUNITIVE DAMAGES WHATSOEVER,
INCLUDING, WITHOUT LIMITATION, DAMAGES FOR LOSS OF BUSINESS PROFITS,
BUSINESS INTERRUPTION, LOSS OF BUSINESS INFORMATION, AND THE LIKE,
ARISING
OUT OF THE USE OF OR INABILITY TO USE THE TECHNOLOGY, ON DEMAND
SERVICES
KNOW-HOW OR ANY PRODUCTS OR SERVICES PROVIDED HEREUNDER, REGARDLESS
OF THE
FORM OF ACTION, WHETHER IN CONTRACT, TORT, STRICT LIABILITY OR
OTHERWISE,
EVEN IF THE OTHER PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF
SUCH
DAMAGES. BECAUSE SOME STATES DO NOT ALLOW THE EXCLUSION OR LIMITATION
OF
LIABILITY FOR CONSEQUENTIAL OR INCIDENTAL DAMAGES, THE ABOVE LIMITATION
MAY NOT APPLY.
|
| 12. |
Marketing
and Advertising Obligations; Technology
Marks.
|
|
12.1
|
Marketing
and Advertising Requirements.
Both Parties shall actively advertise and promote the Technology
during
the Term, which promotional efforts shall include, without limitation,
attending and presenting at industry trade shows, preparing customer
mailings and presentations, brochures or other promotional material
and
references to the Technology on their respective websites. Subject
to
paragraph 2.3, each Party shall use reasonable commercial efforts
during
the Term to license or sublicense the Technology, the DSS
Licensed Patents, On Demand Services Know-how and/or Ergonomic
Licensed
Patents
in
order to generate royalties pursuant to paragraph 6. During the
Term, the
parties shall confer on a semi-annual basis to review and plan
their
promotional activities. Each party shall have the right to pre-approve
all
promotional materials of the other Party, but pre-approval shall
not be
withheld unreasonably.
The Parties shall cooperate and assist each other on all reasonable
requests with respect to the aforementioned marketing and advertising
efforts. The failure to adhere to one or more provisions of this
paragraph
12.1 shall be a material breach of this Agreement.
|
10
|
12.2
|
License
for Technology Marks.
DSS hereby grants to Ergonomic a non-exclusive, royalty-free
license
to
use the Technology Marks on Licensed Products, advertising and
promotional
material, and elsewhere, as contemplated herein. Ergonomic shall,
upon reasonable notice from DSS, fully and promptly correct and
remedy any
deficiencies in its use of the Technology Marks.
|
|
12.3
|
Ownership
of Technology Marks.
Ergonomic acknowledges DSS’s claim of sole ownership of the Technology
Marks and all associated goodwill. Nothing in this Agreement or
in the
performance thereof, or that might otherwise be implied by law,
shall
operate to grant Ergonomic any right, title, or interest in or
to the
Technology Marks, other than as specified in the limited license
grant
herein. Ergonomic’s use of the Technology Marks shall inure solely to the
benefit of DSS. DSS shall have the sole right to, and in its sole
discretion may, commence, prosecute or defend, and control any
action
concerning the Technology Marks. Ergonomic shall not contest the
validity
of, by act or omission jeopardize, or take any action inconsistent
with,
DSS’s rights or goodwill in the Technology Marks, including attempted
registration of the Technology Marks, or use or attempt registration
of
any ▇▇▇▇ confusingly similar thereto. Ergonomic shall maintain
and not
alter or remove, without DSS’s consent, any copyright, trademark, patent
and other proprietary or protective notices contained in any
Technology.
|
| 13. |
Termination
|
|
13.1
|
Term.
This Agreement will begin as of the effective date in the opening
paragraph and will continue for a period of two
(2)
years (the “Initial Term”), unless earlier terminated in accordance with
Section 13.2 below.
Upon expiration of the Initial Term, this Agreement shall automatically
renew for additional two-year terms (each a “Renewal Term”), unless
Ergonomic provides DSS with thirty (30) days written notice prior
to the
expiration of the Initial Term or any Renewal Term, of its intent
NOT to
renew the Agreement.
The Initial Term and any Renewal Term(s) shall each be referred
to as the
“Term.”
|
|
13.2
|
Termination.
Following written notice of a material breach by the other Party,
if the
breach has not been cured within a reasonable period, or immediately
upon
written notice to the other Party (i)
if the other Party declares or a petition is filed in any court
for
insolvency or bankruptcy and such petition is not dismissed in
sixty (60) days;
or
(ii) if the other Party is under reorganization under the United
States
bankruptcy act or
any similar statute; or (iii) if the other Party consents to the
appointment of a trustee in bankruptcy or a receiver or similar
entity,
a
Party may elect either (a) to cancel this Agreement, or (b) to
have the
Agreement continue in force but with its royalty obligation reduced
to 25%
of the Gross Margin on sales of Licensed Products while the royalty
obligation of the other Party remains at 50% for the duration of
the
breach and/or insolvency as the case may be.
|
|
13.3
|
In
the event of a “change of control” of DSS, other than a “change of
control” in which Ergonomic and /or an Affiliate or Affiliates of
Ergonomic is the entity or entities triggering such “change of control”,
Ergonomic shall have the right, to terminate the licenses of paragraph
2.2. Notwithstanding a “change of control” of Ergonomic, the licenses
granted in paragraph 2.2 with respect to On
Demand Services Know-how and Ergonomic Licensed Patents in the
Licensed
Field
shall continue at DSS’s option, as long as royalty payments continue to be
made by DSS as provided in this Agreement. For purposes hereof,
the term
“change of control” shall mean the ownership of more than 50% of the
outstanding stock or voting control of a Party by an entity that
is not an
Affiliate of such Party as of the Effective
Date.
|
11
|
13.4
|
Effect
of Termination. Expect
as otherwise provided herein, upon
the expiration or
termination of this Agreement for
any reason,
(a)
all licenses granted hereunder shall cease; (b)
each Party shall return to the other and make no further use of
the
any
of the other Party’s Confidential Information
in
its possession
and all Copies
thereof;
(c)
the Parties shall immediately discontinue any and all promotional
activities hereunder and Ergonomic shall cease all use of Technology
Marks
and promotional materials and return, at no charge, all sales,
promotional
and display or advertising materials, which were furnished by DSS;
and
(d)
all amounts due to
a
Party by the other Party
through the termination date under the terms of this Agreement
shall
become immediately due and payable. Upon
termination of this Agreement, each Party shall be permitted a
reasonable
opportunity, not to exceed ninety (90) days, to sell their remaining
inventory of finished Licensed Products. The
provisions of Sections 2.4,
4.1 and 8, 9, 10, 11,
12.3, 13, 14 and 15
shall survive the termination or expiration of this Agreement. Notwithstanding
the foregoing and anything to the contrary in this Agreement, if
Ergonomic
shall terminate this Agreement pursuant to paragraph 13.1, the
licenses
provided in paragraph 2.2 shall continue, with the royalty obligation
to
Ergonomic being reduced from 50% to 15%, until DSS
provides Ergonomic with thirty (30) days written notice of its
intent NOT
to continue with its rights under paragraph
2.2.
|
| 14. |
Notices
|
|
All
notices sent under this Agreement shall be in writing and (i) hand
delivered; (ii) transmitted by legible facsimile with a copy sent
concurrently by certified mail, return receipt requested; or (iii)
delivered by prepaid overnight courier. Notice shall be effective
(i) upon
receipt if delivered by hand; (ii) one (1) business day after deposit
with
an overnight courier service; or (iii) three (3) business days
after
deposit with the United States Postal Service if faxed and then
a copy is
sent via certified mail. Notices shall be sent to the Parties
at
the following addresses or such other addresses as the Parties
subsequently may provide in accordance with this Section 14.1:
|
|
If
to DSS:
Document
Security Systems, Inc.
▇▇
▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇
▇▇▇▇
▇▇▇▇▇▇▇▇▇,
▇▇ ▇▇▇▇▇
Fax:
▇▇▇-▇▇▇-▇▇▇▇
Attention:
Chief Executive Officer
|
With
a copy to:
Document
Security Systems, Inc.
▇▇
▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇
▇▇▇▇
▇▇▇▇▇▇▇▇▇,
▇▇ ▇▇▇▇▇
Fax:
▇▇▇-▇▇▇-▇▇▇▇
Attention:
General Counsel
|
|
If
to Ergonomic:
The
Ergonomic Group
▇▇▇-▇
▇▇▇▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇,
▇▇▇▇▇▇▇▇,
▇▇▇ ▇▇▇▇ ▇▇▇▇▇
Fax:
(▇▇▇) ▇▇▇-▇▇▇▇
Attention:
Chief Operating Officer
|
With
a copy to:
▇▇▇▇▇▇▇▇
▇▇▇▇▇▇▇ & ▇▇▇▇▇▇▇
▇▇▇
▇▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇
Fax:
(▇▇▇) ▇▇▇-▇▇▇▇
Attn:
▇▇▇▇▇▇▇
▇. ▇▇▇▇▇▇▇, Esq.
|
| 15. |
Miscellaneous
|
|
15.1
|
Assignment.
Neither Party may assign this Agreement or the rights and obligations
hereunder to any third party
without the prior express written approval of the other
Party. Any
purported assignment without consent shall be void. The provisions
of this
Agreement shall be binding upon, and shall inure to, the benefit
of the
Parties hereto, their legal representatives, permitted
successors
and permitted assigns.
|
12
|
15.2
|
Governing
Law; Jurisdiction.
This Agreement shall be governed in accordance with the laws of
the State
of New York, without regard to conflict of laws principles. All
disputes
under this Agreement shall be resolved in an appropriate state
or federal
court located in Rochester, New York.
Each
Party consents to the jurisdiction of and venue in such courts,
agrees to
accept service of process in the same manner as notices are to
be made as
provided in paragraph 14.1 and hereby waives any jurisdictional,
lack of
venue, or forum defenses otherwise available to it.
|
|
15.3
|
Force
Majeure.
No
Party shall be in default or otherwise liable for any delay in
or failure
of its performance under this Agreement, other than of obligations
regarding payments or confidentiality, if such delay or failure
is caused
by something beyond its reasonable control and without its fault
or
negligence, including,
but not limited to,
any act of God, strikes, lockouts, riots, any acts of the common
enemy,
the elements, earthquakes, floods, fires, epidemics, governmental
laws and
regulations,
inability to secure products or services from other persons, entities
or
transportation facilities, failures or delay in transportation
or
communications or power failures. Such delay or failure shall not
constitute a breach of this Agreement and shall automatically extend
any
completion dates for a period equal to the duration of such events.
Lack
of funds shall not constitute a reason beyond the Party’s reasonable
control.
|
|
15.4
|
Remedies
Cumulative; Waivers.
The rights and remedies provided in this Agreement and all other
rights
and remedies available to either Party
at
law or in equity are, to the extent permitted by law, cumulative
and not
exclusive of any other right or remedy now or hereafter available
at law
or in equity. A Party’s failure to assert any right or remedy shall not
constitute a waiver of that right or remedy. No
waiver by either Party of any default shall be deemed as a waiver
of prior
or subsequent default of the same or other provisions of this Agreement.
|
|
15.5
|
Construction;
Severability.
The
Parties acknowledge that they have reviewed this Agreement and
bargained
over its terms. Accordingly, this Agreement shall be construed
without
regard to the Party or Parties responsible for its preparation,
and shall
be deemed to have been prepared jointly by the Parties.
Headings contained in this Agreement are not intended to be full
and
accurate descriptions of the contents of this Agreement and shall
not
affect the meaning or interpretation of this Agreement. If any
term,
clause, or provision hereof is held invalid or unenforceable by
a court of
competent jurisdiction, such invalidity shall not affect the validity
or
operation of any other term, clause, or provision and such invalid
term,
clause, or provision shall be deemed to be severed from the Agreement.
This Agreement may be executed in counterparts, each of which shall
be
deemed to be original but all of which together shall constitute
a single
instrument. The
signatures required for execution may be transmitted to the other
Party
via facsimile and such signatures shall be deemed a duplicate original.
|
|
15.6
|
Relationship
of Parties.
Nothing in this Agreement shall be construed as creating a partnership,
joint venture or agency relationship between the Parties,
or as authorizing either Party to act as agent for the other.
|
|
15.7
|
Entire
Agreement; Termination of Prior Agreements.
This Agreement and Exhibits
A and
B hereto constitute
the entire agreement between the Parties
and supersede
any and
all prior agreements between the Parties
concerning the subject matter of this Agreement, including without
limitation, that certain Premier Partner Marketing and Distribution
Agreement, dated as of December 29, 2006, between the Parties and
that
certain Limited Exclusive Patent Licensing Agreement, dated as
of December
29, 2006, between the Parties. No
modifications or amendments may be made to this Agreement except
as
expressed in writing and signed by each Party.
|
13
|
15.8
|
Publicity.
Except as allowed in Section 12, neither Party may refer to the
other by
name in advertising, promotional materials and publications in
connection
with this Agreement except upon receiving the prior written consent
of the
other Party, which consent shall not be unreasonably withheld.
|
|
15.9
|
Export
Control; Government Customers.
Anything contained in this Agreement notwithstanding, the obligations
of
the Parties hereto shall be subject to all laws, present and future,
including export control laws and regulations, of any government
having
jurisdiction over the Parties
hereto and to orders, regulations, directions or requests of any
such
government. Each Party
shall undertake to comply with and will be solely responsible for
complying with such laws applicable to such party.
|
|
15.10
|
Irreparable
Damage:
The
Parties acknowledge and agree that any violation of this Agreement
would
subject the other to irreparable injury for which monetary damages
will
not be an adequate remedy. Therefore,
in addition to any remedies otherwise available, the non-breaching
Party
will be entitled to any injunctive relief and specific performance
to
enforce the terms of this Agreement. The
breaching Party shall pay all reasonable attorney's fees and costs
incurred by the non-breaching Party should it be necessary for
the
non-breaching Party to enforce the terms of this
Agreement.
|
[Remainder
of Page Left Blank]
14
IN
WITNESS WHEREOF, the Parties
have
caused this Agreement to be executed by their respective duly authorized
officers as of the date first written above.
|
DOCUMENT
SECURITY SYSTEMS, INC.
By:
/s/ ▇▇▇▇▇▇▇
▇▇▇▇▇
Name:
▇▇▇▇▇▇▇ ▇▇▇▇▇
Title:
Chief
Executive Officer
|
ERGONOMIC
GROUP, INC.
By:
/s/ ▇▇▇▇▇
▇▇▇▇▇▇▇
Name:
▇▇▇▇▇ ▇▇▇▇▇▇▇
Title:
Chief
Executive Officer
|
15
EXHIBIT
A
Document
Security Systems, Inc.
|
Patent
Report by Invention
|
Printed:
|
03/25/2008
|
Page
1
|
||||
|
COUNTRY
|
REFERENCE#
|
TYP
|
FILED
|
SERIAL#
|
ISSUED
|
PATENT
|
STATUS
|
|
ANTI-PHOTOGRAPHIC/PHOTOCOPY
IMAGING PROCESS AND PRODUCT MADE BY SAME
|
|||||||
|
United
States
|
91838.000032
|
CON
|
01/03/1997
|
08/778,916
|
04/07/1998
|
5,735,547
|
ISSUED
|
|
COUNTERFEIT
PROTECTED DOCUMENT
|
|||||||
|
United
States
|
91838.000020
|
NEW
|
01/18/1989
|
07/298,020
|
05/28/1991
|
5,018,767
|
ISSUED
|
|
COVERT
DOCUMENT SYSTEM
|
|||||||
|
United
States
|
91838.000050
|
FCA
|
07/31/2006
|
11/495,900
|
PUBLISHED
|
||
|
United
States
|
91838.000125
|
CIP
|
04/26/2007
|
11/740,696
|
PUBLISHED
|
||
|
WIPO
|
91838.000141
|
CEQ
|
04/26/2007
|
▇▇▇/▇▇▇▇/▇▇▇▇▇
|
▇▇▇▇▇▇▇▇▇
|
||
|
▇▇▇▇▇▇
▇▇▇▇▇▇
|
91838.000122
|
CIP
|
04/27/2007
|
11/741,394
|
PUBLISHED
|
||
|
WIPO
|
91838.000143
|
CEQ
|
04/27/2007
|
PCT/US07/67657
|
PUBLISHED
|
||
|
COVERT
DOCUMENT SYSTEM
|
|||||||
|
AUSTRALIA
|
91838.000170
|
DCA
|
08/01/2006
|
PCT/US06/029868
|
PENDING
|
||
|
BRAZIL
|
91838.000171
|
DCA
|
08/01/2006
|
018080005626
|
PENDING
|
||
|
CANADA
|
91838.000172
|
DCA
|
08/01/2006
|
PCT/US06/029868
|
PENDING
|
||
|
EUROPE
|
91838.000178
|
DCA
|
08/01/2006
|
06800589.1
|
PENDING
|
||
|
INDONESIA
|
91838.000173
|
DCA
|
08/01/2006
|
W00
2008 00402
|
PENDING
|
||
|
ISRAEL
|
91838.000174
|
DCA
|
08/01/2006
|
189116
|
PENDING
|
||
|
JAPAN
|
91838.000175
|
DCA
|
08/01/2006
|
PCT/US06/029868
|
PENDING
|
||
|
MEXICO
|
91838.000176
|
DCA
|
08/01/2006
|
MX/a/2008/001531
|
PENDING
|
||
|
WIPO
|
91838.000051
|
CEQ
|
08/01/2006
|
▇▇▇/▇▇▇▇/▇▇▇▇▇▇
|
▇▇▇
▇▇▇▇▇
|
||
|
▇▇▇▇▇
▇▇▇▇▇▇
|
91838.000177
|
DCA
|
08/01/2006
|
PCT/US06/029868
|
PENDING
|
||
|
DOCUMENT
CONTAINING SCANNING SURVIVABLE SECURITY
FEATURES
|
|||||||
|
AUSTRALIA
|
91838.000093
|
DCA
|
09/06/2005
|
2005282617
|
PENDING
|
||
|
BRAZIL
|
91838.000094
|
DCA
|
09/06/2005
|
PI
0515634-3
|
PENDING
|
||
|
CANADA
|
91838.000090
|
DCA
|
09/06/2005
|
2,579,226
|
PENDING
|
||
|
EUROPE
|
91838.000089
|
DCA
|
09/06/2005
|
05793879.7
|
PUBLISHED
|
||
|
INDONESIA
|
91838.000092
|
DCA
|
09/06/2005
|
W00
2007 00765
|
PENDING
|
||
|
JAPAN
|
91838.000091
|
DCA
|
09/06/2005
|
2007-530423
|
PENDING
|
||
|
MEXICO
|
91838.000095
|
DCA
|
09/06/2005
|
MX/a/2007/002623
|
PENDING
|
||
|
WIPO
|
91838.000045
|
FCA
|
09/06/2005
|
▇▇▇/▇▇▇▇/▇▇▇▇▇
|
▇▇▇
▇▇▇▇▇
|
||
|
▇▇▇▇▇
▇▇▇▇▇▇
|
91838.000096
|
DCA
|
09/06/2005
|
2007/02765
|
PENDING
|
||
|
United
States
|
91838.000088
|
DCA
|
03/07/2007
|
11/683,161
|
PUBLISHED
|
||
|
DOCUMENT
CONTAINING SCANNING SURVIVABLE SECURITY
FEATURES
|
|||||||
|
United
States
|
91838.000124
|
FCA
|
03/15/2007
|
11/686,806
|
PENDING
|
||
|
United
States
|
91838.000126
|
FCA
|
04/27/2007
|
11/741,513
|
PUBLISHED
|
||
|
WIPO
|
91838.000142
|
CEQ
|
04/27/2007
|
PCT/US07/67680
|
PUBLISHED
|
||
16
|
COUNTRY
|
REFERENCE#
|
TYP
|
FILED
|
SERIAL#
|
ISSUED
|
PATENT
|
STATUS
|
|
DOCUMENT
CONTAINING SECURITY IMAGES
|
|||||||
|
AUSTRIA
|
91838.000127
|
DCA
|
05/10/2004
|
04751747.9
|
03/21/2007
|
1626870
|
ISSUED
|
|
BELGIUM
|
91838.000128
|
DCA
|
05/10/2004
|
04751747.9
|
03/21/2007
|
1626870
|
ISSUED
|
|
CANADA
|
91838.000070
|
DCA
|
05/10/2004
|
2,526,404
|
PENDING
|
||
|
SWITZERLAND
|
91838.000137
|
DCA
|
05/10/2004
|
04751747.9
|
03/21/2007
|
1626870
|
ISSUED
|
|
CZECH
REPUBLIC
|
91838.000129
|
DCA
|
05/10/2004
|
04751747.9
|
03/21/2007
|
1626870
|
ISSUED
|
|
GERMANY
|
91838.000130
|
DCA
|
05/10/2004
|
04751747.9
|
03/21/2007
|
60
2004 005 448.8
|
ISSUED
|
|
EUROPE
|
91838.000047
|
DCA
|
05/10/2004
|
04751747.9
|
03/21/2007
|
1626870
|
NAT
PHASE
|
|
SPAIN
|
91838.000136
|
DCA
|
05/10/2004
|
04751747.9
|
03/21/2007
|
1626870
|
ISSUED
|
|
FRANCE
|
91838.000140
|
DCA
|
05/10/2004
|
04751747.9
|
03/21/2007
|
1626870
|
ISSUED
|
|
UNITED
KINGDOM
|
91838.000139
|
DCA
|
05/10/2004
|
04751747.9
|
03/21/2007
|
1626870
|
ISSUED
|
|
HUNGARY
|
91838.000131
|
DCA
|
05/10/2004
|
04751747.9
|
03/21/2007
|
1626870
|
ISSUED
|
|
IRELAND
|
91838.000144
|
DCA
|
05/10/2004
|
04751747.9
|
03/21/2007
|
1626870
|
ISSUED
|
|
ITALY
|
91838.000132
|
DCA
|
05/10/2004
|
04751747.9
|
03/21/2007
|
1626870
|
ISSUED
|
|
NETHERLANDS
|
91838.000133
|
DCA
|
05/10/2004
|
04751747.9
|
03/21/2007
|
1626870
|
ISSUED
|
|
POLAND
|
91838.000134
|
DCA
|
05/10/2004
|
04751747.9
|
03/21/2007
|
1626870
|
ISSUED
|
|
ROMANIA
|
91838.000135
|
DCA
|
05/10/2004
|
04751747.9
|
03/21/2007
|
1626870
|
ISSUED
|
|
TURKEY
|
91838.000138
|
DCA
|
05/10/2004
|
04751747.9
|
03/21/2007
|
1626870
|
ISSUED
|
|
WIPO
|
91838.000059
|
FCA
|
05/10/2004
|
▇▇▇/▇▇▇▇/▇▇▇▇▇
|
▇▇▇
▇▇▇▇▇
|
||
|
▇▇▇▇▇▇
▇▇▇▇▇▇
|
91838.000046
|
DCA
|
12/15/2006
|
10/555,936
|
PUBLISHED
|
||
|
DOCUMENT
CONTAINING SECURITY IMAGES
|
|||||||
|
United
States
|
91838.000069
|
CIP
|
07/22/2004
|
10/896,072
|
PUBLISHED
|
||
|
DOCUMENT
CONTAINING SECURITY IMAGES
|
|||||||
|
CANADA
|
91838.000073
|
DCA
|
10/09/2003
|
2,501,513
|
PENDING
|
||
|
EUROPE
|
91838.000071
|
DCA
|
10/09/2003
|
03773245.0
|
PUBLISHED
|
||
|
WIPO
|
91838.000074
|
FCA
|
10/09/2003
|
▇▇▇/▇▇▇▇/▇▇▇▇▇
|
▇▇▇
▇▇▇▇▇
|
||
|
▇▇▇▇▇
▇▇▇▇▇▇
|
91838.000072
|
DCA
|
10/09/2003
|
2005/05348
|
10/25/2006
|
2005/05348
|
ISSUED
|
|
▇▇▇▇▇▇
▇▇▇▇▇▇
|
▇▇▇▇▇.▇▇▇▇▇▇
|
CIP
|
07/22/2004
|
10/895,822
|
PUBLISHED
|
||
|
CANADA
|
91838.000159
|
DIV
|
08/13/2007
|
2,597,184
|
▇▇▇▇▇▇▇
|
||
|
▇▇▇▇▇▇
▇▇▇▇▇▇
|
▇▇▇▇▇.▇▇▇▇▇▇
|
CIP
|
08/16/2007
|
11/839,657
|
PUBLISHED
|
||
17
|
COUNTRY
|
REFERENCE#
|
TYP
|
FILED
|
SERIAL#
|
ISSUED
|
PATENT
|
STATUS
|
|
EMBEDDED
WATERMARK
|
|||||||
|
United
States
|
91838.000049
|
NEW
|
07/28/2005
|
11/193,230
|
PUBLISHED
|
||
|
AUSTRALIA
|
91838.000161
|
DCA
|
07/26/2006
|
PCT/US06/028983
|
PENDING
|
||
|
BRAZIL
|
91838.000162
|
DCA
|
07/26/2006
|
018080004679
|
PENDING
|
||
|
CANADA
|
91838.000163
|
DCA
|
07/26/2006
|
PCT/US06/028983
|
PENDING
|
||
|
EUROPE
|
91838.000169
|
DCA
|
07/26/2006
|
06800349.0
|
PENDING
|
||
|
INDONESIA
|
91838.000164
|
DCA
|
07/26/2006
|
W00
2008 00310
|
PENDING
|
||
|
ISRAEL
|
91838.000165
|
DCA
|
07/26/2006
|
189049
|
PENDING
|
||
|
JAPAN
|
91838.000166
|
DCA
|
07/26/2006
|
PCT/US06/028983
|
PENDING
|
||
|
MEXICO
|
91838.000167
|
DCA
|
07/26/2006
|
MX/a/2008/001349
|
PENDING
|
||
|
WIPO
|
91838.000052
|
CEQ
|
07/26/2006
|
▇▇▇/▇▇▇▇/▇▇▇▇▇▇
|
▇▇▇
▇▇▇▇▇
|
||
|
▇▇▇▇▇
▇▇▇▇▇▇
|
91838.000168
|
DCA
|
07/26/2006
|
2008/01692
|
PENDING
|
||
|
EMBOSSED
DOCUMENT PROTECTION METHODS AND PRODUCTS
|
|||||||
|
United
States
|
91838.000037
|
NEW
|
10/03/1996
|
08/725,407
|
03/03/1998
|
5,722,693
|
ISSUED
|
|
FULL
COLOR SCANNING PROTECTION OF DOCUMENT
|
|||||||
|
AUSTRALIA
|
91838.000062
|
DCA
|
06/14/2004
|
2004321079
|
PENDING
|
||
|
BRAZIL
|
91838.000064
|
DCA
|
06/14/2004
|
▇▇▇▇▇▇▇▇▇-5
|
PENDING
|
||
|
CANADA
|
91838.000042
|
DCA
|
06/14/2004
|
2,570,983
|
PENDING
|
||
|
EUROPE
|
91838.000041
|
DCA
|
06/14/2004
|
04754986.0
|
PUBLISHED
|
||
|
INDONESIA
|
91838.000061
|
DCA
|
06/14/2004
|
W00
2006 03557
|
PENDING
|
||
|
JAPAN
|
91838.000060
|
DCA
|
06/14/2004
|
2007-516446
|
PENDING
|
||
|
MEXICO
|
91838.000065
|
DCA
|
06/14/2004
|
PA/a/2006/014645
|
PENDING
|
||
|
WIPO
|
91838.000039
|
NEW
|
06/14/2004
|
▇▇▇/▇▇▇▇/▇▇▇▇▇▇
|
▇▇▇
▇▇▇▇▇
|
||
|
▇▇▇▇▇
▇▇▇▇▇▇
|
91838.000066
|
DCA
|
06/14/2004
|
2007/00308
|
PENDING
|
||
|
United
States
|
91838.000040
|
OTH
|
12/13/2006
|
11/610,290
|
PUBLISHED
|
||
|
United
States
|
91838.000063
|
OTH
|
12/13/2006
|
11/610,323
|
PUBLISHED
|
||
|
METHOD
OF MAKING A NONREPLICABLE DOCUMENT
|
|||||||
|
AUSTRIA
|
91838.000075
|
DCA
|
01/16/1990
|
90904485.1
|
11/24/1999
|
0455750
|
ISSUED
|
|
BELGIUM
|
91838.000076
|
DCA
|
01/16/1990
|
90904485.1
|
11/24/1999
|
0455750
|
ISSUED
|
|
SWITZERLAND
|
91838.000084
|
DCA
|
01/16/1990
|
90904485.1
|
11/24/1999
|
0455750
|
ISSUED
|
|
GERMANY
|
91838.000079
|
DCA
|
01/16/1990
|
90904485.1
|
11/24/1999
|
69033362.5
|
ISSUED
|
|
DENMARK
|
91838.000077
|
DCA
|
01/16/1990
|
90904485.1
|
11/24/1999
|
0455750
|
ISSUED
|
|
EUROPE
|
91838.000056
|
DCA
|
01/16/1990
|
90904485.1
|
11/24/1999
|
0455750
|
NAT
PHASE
|
|
SPAIN
|
91838.000082
|
DCA
|
01/16/1990
|
90904485.1
|
11/24/1999
|
0455750
|
ISSUED
|
|
FRANCE
|
91838.000078
|
DCA
|
01/16/1990
|
90904485.1
|
11/24/1999
|
0455750
|
ISSUED
|
|
UNITED
KINGDOM
|
91838.000085
|
DCA
|
01/16/1990
|
90904485.1
|
11/24/1999
|
0455750
|
ISSUED
|
|
ITALY
|
91838.000115
|
DCA
|
01/16/1990
|
90904485.1
|
11/24/1999
|
0455750
|
ISSUED
|
|
LIECHTENSTEIN
|
91838.000086
|
DCA
|
01/16/1990
|
90904485.1
|
11/24/1999
|
0455750
|
ISSUED
|
|
LUXEMBOURG
|
91838.000080
|
DCA
|
01/16/1990
|
90904485.1
|
11/24/1999
|
0455750
|
ISSUED
|
|
NETHERLANDS
|
91838.000081
|
DCA
|
01/16/1990
|
90904485.1
|
11/24/1999
|
0455750
|
ISSUED
|
|
SWEDEN
|
91838.000083
|
DCA
|
01/16/1990
|
90904485.1
|
11/24/1999
|
0455750
|
ISSUED
|
18
|
COUNTRY
|
REFERENCE#
|
TYP
|
FILED
|
SERIAL#
|
ISSUED
|
PATENT
|
STATUS
|
|
NONREPLICABLE
DOCUMENT AND METHOD FOR MAKING SAME
|
|||||||
|
CANADA
|
91838.000101
|
DCA
|
01/16/1990
|
2045580
|
01/12/1999
|
2,045,580
|
ISSUED
|
|
SCANNING
PROTECTION OF A DOCUMENT
|
|||||||
|
United
States
|
91838.000145
|
FCA
|
05/05/2007
|
11/744,840
|
PUBLISHED
|
||
|
WIPO
|
91838.000146
|
CEQ
|
05/05/2007
|
PCT/US07/68311
|
PUBLISHED
|
||
|
SECURITY
DOCUMENTS WITH MULTI-ANGLED VOIDS
|
|||||||
|
United
States
|
91838.000087
|
NEW
|
08/22/1996
|
08/700,772
|
01/13/1998
|
5,707,083
|
ISSUED
|
|
SELF
VERIFYING IDENTIFICATION
|
|||||||
|
United
States
|
91838.000153
|
FCA
|
07/06/2007
|
11/774,464
|
PUBLISHED
|
||
|
WIPO
|
91838.000154
|
CEQ
|
07/07/2007
|
PCT/US07/73002
|
PUBLISHED
|
||
|
TAMPER
AND COPY PROTECTED DOCUMENTS
|
|||||||
|
United
States
|
91838.000019
|
NEW
|
04/19/1993
|
08/047,402
|
10/03/1995
|
5,454,598
|
ISSUED
|
19
EXHIBIT
B
THE
ERGONOMIC GROUP
|
Patent
Report by Country
|
Printed: 4/7/2008
|
Page 1
|
|||
|
TITLE
|
|||||
|
REFERENCE#
|
FILED
|
SERIAL#
|
ISSUED
|
PATENT#
|
STATUS
|
|
UNITED
STATES
|
|||||
|
IMPROVED
METHOD AND SYSTEM FOR PRODUCING DOCUMENTS, WEBSITES AND THE LIKE
HAVING
SECURITY
|
|||||
|
FEATURES
|
|||||
|
5112/0005
|
1/24/2008
|
12/019,304
|
PENDING
|
||
|
METHOD
AND SYSTEM FOR PROVIDING CERTIFIED DOCUMENTS AND THE
LIKE
|
|||||
|
5112/0003
US
|
2/23/2007
|
11/678,318
|
PENDING
|
||
|
SECURITY
DOCUMENT WITH FADE-AWAY PORTION
|
|||||
|
5112/0004
US
|
3/18/2008
|
12/050,576
|
PENDING
|
||
|
SECURITY
FONT IMAGE FADE AWAY
|
|||||
|
5112/0004
|
3/23/2007
|
60/896,555
|
EXPIRED
|
||
|
SECURITY
FONT IMAGES FOR ELECTRONICALLY TRANSMITTED
DOCUMENTS
|
|||||
|
5112/0003
|
1/31/2007
|
60/887,439
|
EXPIRED
|
||
|
WIPO
|
|||||
|
IMPROVED
METHOD AND SYSTEM FOR PRODUCING DOCUMENTS, WEBSITES AND THE LIKE
HAVING
SECURITY
|
|||||
|
FEATURES
|
|||||
|
5112/0005
PCT
|
1/30/2008
|
PCT/US08/52450
|
PENDING
|
||
|
SECURITY
DOCUMENT WITH FADE-AWAY PORTION
|
|||||
|
5112/0004
PCT
|
3/19/2008
|
PCT/US08/57506
|
PENDING
|
||
|
|
|
|
END OF REPORT |
TOTAL
ITEMS SELECTED =
|
7
|
20