EXHIBIT 10.4
ASSIGNMENT AND LICENSE AGREEMENT
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This ASSIGNMENT AND LICENSE AGREEMENT (the "Agreement'), effective as
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of January 20, 1998 ("Effective Date"), is made by and between StampMaster, Inc.
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(the "Company"), a Delaware corporation, and ▇▇▇▇▇ ▇▇▇▇▇▇, residing at ▇▇▇
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▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇ ("Ananda").
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RECITALS
1. Ananda has invented certain new and useful improvements in the
field of secure software rental systems set forth in United States Letters
Patents 5,495,411, 5,638,513 (which is a continuation of Letters Patent
5,495,411) and United States Letters Patents 5,548,645 (United States Letters
Patents 5,495,411, 5,638,513 and 5,548,645 are collectively referred to herein
as the "Patents").
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2. Ananda has also invented certain new and useful improvements in
the field of secure software rental systems between a personal computer and a
central rental facility set forth in the United States Application for Letters
Patent for Secure On-Line PC Postage Metering System filed on June 10, 1997 and
assigned Serial No. 08/872,792 (the "Patent Application") .
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3. The Company desires to obtain from Ananda, and Ananda is willing
to assign to the Company, all intellectual property rights owned by Ananda as of
the Effective Date in and to the Patents and the Patent Application, and the
Know-how related thereto, on the terms and conditions set forth in this
Agreement, and Ananda desires to obtain from the Company, and the Company is
willing to grant to Ananda a limited license to Ananda, as of the Effective Date
under the Patents (but not under the Patent Application) on the terms and
conditions set forth in this Agreement.
4. The Company and Ananda have entered into a Common Stock Purchase
Agreement of even date herewith, pursuant to which Ananda has purchased from the
Company and the Company has sold to Ananda 1,448,397 shares of the Company's
Common Stock, the consideration for which is the assignment and license between
the parties pursuant to this Agreement.
NOW, THEREFORE, the parties hereto agree as follows:
ARTICLE I
DEFINITIONS
For the purposes of this Agreement, the capitalized terms set forth
below shall have the meanings set forth in this Article I.
1.1 "Assigned Patents" shall mean the Patents as defined in
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the first recital above and all foreign patents and patent applications,
substitutions, extensions, reissues, reexaminations, renewals, divisions,
utility models, continuations, and continuations-in-part anywhere in the world
relating to the Patents.
1.2 "Assigned Patent Application" shall mean the Patent
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Application as defined in the second recital above and all patents, foreign
patents and patent applications, substitutions, extensions, reissues,
reexaminations, renewals, divisions, utility models, continuations, and
continuations-in-part anywhere in the world relating to the Patent Application.
1.3 "Field" means all fields with the exception of (i)
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postal stamp and postage metering, printing, data, verification, and security,
(ii) electronic scrip printing for any use including without limitation
ticketing, vouchering and couponing, (iii) electronic scrip printing by
utilizing internet-related metering, printing, data, verification, and security
and (iv) any use, application, product, process, or technique relating to any
use described in subsection (i), (ii) or (iii) above, including without
limitation software, hardware, firmware, data and files.
1.4 "Know-how" shall mean any and all secret, proprietary or
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confidential information, experience, trade secrets, inventions, discoveries,
formulas, designs, techniques, applications, processes, ideas, or concepts
related to exceptions 1.3(i), 1.3(ii), 1.3(iii) and 1.3(iv) set forth above,
whether or not reduced to practice, whether or not reduced to writing and
whether or not patentable, owned or controlled by Ananda as of the Effective
Date, or to which Ananda has the rights to license or assign, as applicable,
hereunder.
1.5 "Products" shall mean any product, device or service for
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use by end-user customers.
ARTICLE II
PATENT ASSIGNMENT
2.1 Assignment. Ananda hereby sells, transfers, assigns, and
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irrevocably sets over to the Company, and the Company hereby purchases and
accepts assignment of, Ananda's entire right, title, and interest in and to: (i)
the Assigned Patents and the Assigned Patent Application; (ii) any and all Know-
how; and (iii) all rights, claims and privileges pertaining to the Assigned
Patents and Patent Application including, without limitation, standing to ▇▇▇
for past, present, and future infringement of such Assigned Patents and Assigned
Patent Application and misappropriation of such Know-how.
2.2 Title. Ananda hereby covenants and agrees to and with
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the Company that, at the time of execution and delivery of these presents,
Ananda is the sole and lawful owner of the entire right, title and interest in
and to the Assigned Patents and the Assigned Patent Application, and that the
same are unencumbered and that Ananda has good and full right and lawful
authority to effectuate the sale, transfer, and assignment of the same in the
manner set forth in this Agreement.
2.3 Further Assurances. In furtherance of the sale,
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transfer, and assignment, of the Assigned Patents and Assigned Patent
Application pursuant to Section 2.1 hereto, Ananda shall execute and deliver to
the Company on the Effective Date an executed Patent Assignment in the form
attached hereto as Exhibit A. Ananda further agrees to promptly review, execute,
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and deliver any and all additional documents as the Company may deem reasonably
necessary or
desirable to effectuate the sale, transfer, and assignment of the Assigned
Patents and the Assigned Patent Application, and the Know-how related thereto.
Furthermore, Ananda hereby covenants and agrees to and with the Company that
Ananda will, whenever counsel of the Company shall advise that any proceeding in
connection with the Assigned Patents and the Assigned Patent Application in any
country, including interference proceedings, is lawful and desirable, or that
any division, continuation or continuation-in-part of any application for any
Assigned Patent or the Assigned Patent Application, or any reissue or extension
of any Assigned Patent or the Assigned Patent Application, to be obtained
thereon, is lawful and desirable, sign all papers and documents, take all lawful
oaths, and do all reasonable acts necessary or required to be done for the
procurement, maintenance, enforcement and defense of the Assigned Patents and
the Assigned Patent Application, without charge to the Company, but at the cost
and expense of the Company.
ARTICLE III
LICENSE GRANT
3.1 License Grant. Subject to the terms and conditions
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hereof, the Company hereby grants to Ananda a worldwide, irrevocable,
transferable, perpetual, fully paid-up, exclusive right and license, including
the right to grant sublicenses, under the Assigned Patents (but not under the
Assigned Patent Application) to use, manufacture, have manufactured, sell, have
sold, offer for sale, distribute, have distributed, market and promote, have
marketed and promoted, import and export, and have imported and exported,
Products solely in the Field, provided that such Products are not used, combined
or incorporated with any other product, device or service for use outside of the
Field (the "License").
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ARTICLE IV
CONFIDENTIALITY
4.1 Disclosure. In connection with this assignment Ananda
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agrees to use his best efforts to disclose to the Company the Know-how relating
to the Assigned Patents and the Assigned Patent Application and to deliver to
the Company copies of Know-how in Ananda's possession, custody or control.
4.2 Confidential Information. Except as expressly provided
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herein, Ananda agrees that he shall keep confidential and shall not publish or
otherwise disclose and shall not use for any purpose except for the purposes
expressly contemplated by this Agreement, the Assigned Patent Application and
the Know-how related to the Assigned Patent and the Assigned Patent Application,
except to the extent that it can be established by Ananda by competent proof
that such information:
(1) was generally available to the public or otherwise part
of the public domain at the time of its disclosure or use by Ananda; or
(2) became generally available to the public or otherwise
part of the pubic domain after its disclosure or use and other than through any
act or omission of Ananda in breach of this Agreement.
4.3 Permitted Use and Disclosures. The Company is hereby
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deemed the "owner" of the Assigned Patents and the Assigned Patent Application,
and the Know-how related thereto, effective as of the Effective Date and may use
or disclose the foregoing without restriction.
ARTICLE V
TERMINATION
5.1 Term. This Agreement will become effective on the
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Effective Date and will continue indefinitely, and except as otherwise provided
in Section 5.2 below, the License shall continue in effect until such time as
all Assigned Patents have expired (the "Term").
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5.2 Termination of Agreement. Either party shall have the
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right to terminate this Agreement following any material breach or default in
performance under this Agreement by the other party upon thirty (30) days prior
written notice to the breaching party specifying the nature of the breach or
default. Unless the breaching party has cured the breach or default prior to the
expiration of the thirty (30) day period, the non-breaching party, at its sole
option, may terminate this Agreement upon written notice to the breaching party.
Termination of this Agreement shall become effective upon receipt of such second
notice by the breaching party.
5.3 Survival of Certain Terms. The following provisions will
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survive any termination of the Agreement: Articles 1, 2, 4, 5 and 7.
ARTICLE VI
NON-COMPETE
6.1 Non-Compete. During the term of Ananda's employment with
the Company and for a period of twenty-four (24) months after termination of
employment for any reason or no reason, with or without cause, Ananda. agrees
that he will not market, sell, or distribute, either directly or indirectly, any
Product for use outside the Field.
ARTICLE VII
MISCELLANEOUS
7. Miscellaneous.
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7.1 Remedies. The Company and Ananda each expressly agree
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that due to the unique nature of the technology assigned, licensed and/or
disclosed under this Agreement, monetary damages would be inadequate to
compensate one party for any breach by the other party of its covenants and
agreements set forth in this Agreement. Accordingly, the Company and Ananda each
agree and acknowledge that any such breach or threatened breach shall cause
irreparable injury to the non-breaching other party and that, in addition to any
other remedies that may be available, in law, in equity or otherwise, the non-
breaching party shall be entitled to obtain injunctive relief against the
threatened breach of this Agreement or the continuation of any such breach by
the breaching party, without the necessity of proving actual damages.
7.2 Attorney Fees. If any action at law or in equity
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(including arbitration) is necessary to enforce or interpret the terms of this
Agreement, the prevailing party shall be entitled to reasonable attorney's fees,
costs and necessary disbursements in addition to any other relief to which such
party may be entitled.
7.3 Governing Law. This agreement and any dispute arising
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from the performance or breach hereof shall be governed by the laws of the
United States of America and the State of California, without regard to that
state's laws concerning conflicts or choice of laws.
7.4 Waiver. Neither party may waive or release any of its
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rights or interests in this agreement except in writing. The failure of either
party to assert a right hereunder or to insist upon compliance with any term or
condition of this agreement shall not constitute a waiver of that right or
excuse a similar subsequent failure to perform any such term or condition.
7.5 Notices. All notices, requests and other communications
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hereunder shall be given in writing by certified or registered mail to the
addresses set forth below and shall be deemed received on the actual date of
receipt:
If to the Company: StampMaster, Inc.
▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇., ▇▇▇▇▇ ▇▇▇
▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
If to Ananda: ▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
7.6 Complete Agreement. This Agreement constitutes the
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entire agreement, both written and oral, between the parties with respect to the
subject matter hereof, and all prior agreements respecting the subject matter
hereof, either written or oral, expressed or implied, are merged and canceled,
and are null and void and of no effect. No amendment or change hereof or
addition hereto or addition hereto shall be effective or binding on either of
the parties hereto unless reduced to writing and executed by the respective duly
authorized representatives of the parties.
7.7 Successors and Assigns. The provisions hereof shall
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insure to the benefit of, and be binding upon, the successor, assigns, heirs,
executors, and administrators of the parties hereto.
IN WITNESS WHEREOF, the parties have caused this Assignment and License
Agreement to be executed by their duly authorized representatives.
STAMPMASTER, INC.
By: /s/ ▇▇▇ ▇▇▇▇▇▇▇▇▇
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Name: ▇▇▇ ▇▇▇▇▇▇▇▇▇
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Title: Vice President
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▇▇▇▇▇ ▇▇▇▇▇▇
/s/ ▇▇▇▇▇ ▇▇▇▇▇▇
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EXHIBIT A
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PATENT ASSIGNMENT DOCUMENT
[See attached document.]