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EXHIBIT 10.16
ASSIGNMENT OF TX-1 INTELLECTUAL PROPERTY
This Assignment of TX-1 Intellectual Property (the "Assignment") is made
as of June 23, 1997 by Encore Technologies, Inc., a Minnesota corporation
("Encore"), to Eco Soil Systems, Inc., a Nebraska corporation ("Eco Soil").
For good and valuable consideration the receipt and adequacy of which
are hereby acknowledged, Encore hereby agrees as follows:
1. DEFINITIONS. For purposes of this Assignment, the following
terms shall have the following meanings:
"Know How" shall mean all secret processes, specialized knowledge
and techniques, secret formulas or other secret information or intellectual
property, including trade secrets, which are presently the property of Encore
and which relate to TX-1.
"License and Supply Agreement" means the License and Supply
Agreement dated July 6, 1997 by and between Encore and Eco Soil.
"Michigan State License Agreement" means that certain Exclusive
License Agreement by and between Michigan State University and Encore with an
"effective date" of June 15, 1995.
"Michigan State License Rights" means all right, title, interest
and claims of Encore under the Michigan State License Agreement.
"Settlement Agreement" means the Settlement Agreement dated as of
July 6, 1997 by and between Encore and Eco Soil.
"TX-1" shall mean the micro organism known as pseudomonas
aureofaciens TX-1.
2. ASSIGNMENT OF INTELLECTUAL PROPERTY. For good and valuable
consideration, including without limitation the execution by Eco Soil of the
Settlement Agreement and the License and Supply Agreement, Encore hereby
assigns, transfers and conveys to Eco Soil the following property (the
"Intellectual Property"):
2.1 The Michigan State License Rights;
2.2 TX-1 and all other inventions or other intellectual property
relating to TX-1 that have been conceived, developed, revised and/or reduced to
practice by, with the assistance of, or under the direction of, Encore;
2.3 All right, title to, and interest in the Know How, including
without limitation, the right to xxx for injunctive relief and damages for all
past, present and future infringements, and to collect the same for its own
account and use;
2.4 All rights under any patents, patent applications, patent
disclosures and inventions relating to TX-1 that have been conceived, developed,
revised and/or reduced to practice by, with the assistance of, or under the
direction of, Encore, and any reissues, divisions, extensions, re-examinations
or improvements thereof (and any rights to reissue, divide, extend or improve
such items), and any right to xxx for injunctive relief or damages for any past,
present or future infringement thereof;
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2.5 All intellectual property rights similar to or relating to
any of the foregoing; and
2.6 All drawings, artwork, specifications, designs, plans,
technical reports and other plans, specifications or reports of any type
relating to any of the foregoing, and all copies and tangible embodiments of any
of the foregoing, whether in printed form, electronic form or any other medium.
3. CONSEQUENCES OF OWNERSHIP OF INTELLECTUAL PROPERTY. As a
consequence of Eco Soil's ownership of the Intellectual Property, Encore agrees
that Eco Soil is fully authorized and entitled to exercise all rights of
ownership with respect to the Intellectual Property that were held by Encore
immediately prior to the delivery of this Assignment, and that Encore shall not
have any further right to use the Intellectual Property or exercise any such
rights of ownership, except as hereafter agreed in writing by Eco Soil. Encore
further acknowledges and agrees that Eco Soil's rights include the right for Eco
Soil to permit third parties to use all or part of the Intellectual Property,
without being required (i) to obtain any consent or approval from Encore or (ii)
to provide any further compensation whatsoever to Encore (except as provided in
the License and Supply Agreement with respect to TX-1 produced by Encore
pursuant to purchase orders submitted by Eco Soil).
4. FURTHER ACTIONS.
4.1 Encore agrees that within five days after the date hereof, it
will deliver to Eco Soil all original drawings, artwork, specifications,
designs, plans and technical reports relating to the Intellectual Property,
whether existing in printed form, electronic form, or any other medium.
4.2 Encore further agrees to execute and deliver such further
documents and take such further steps as Eco Soil from time to time reasonably
may request in order to confirm, effect, evidence, perfect and otherwise
consummate the vesting of all attributes of ownership in the Intellectual
Property in Eco Soil. Such actions shall include without limitation (a)
assisting Eco Soil, to the extent reasonably requested by Eco Soil, in obtaining
a re-issuance of the Michigan State License Rights to Eco Soil in order to
further permit the commercial use and application by Eco Soil of TX-1 (it being
understood that Encore shall have no right, title, interest or claim in any such
re-issued rights or licenses) and (b) providing Eco Soil with access from time
to time, during normal business hours and upon reasonable prior notice to
Encore, as requested by Eco Soil, to Encore's books and records relating to the
Intellectual Property (including any records relating to contracts or
arrangements with employees, suppliers and other third parties involved in the
development of any of the Intellectual Property or any component parts thereof).
5. MISCELLANEOUS. Encore acknowledges that this Assignment is being
executed and delivered pursuant to the Settlement Agreement. Encore further
acknowledges and agrees that nothing herein shall be construed as limiting the
rights of Eco Soil under the Settlement Agreement. This Assignment shall insure
to the benefit of the successors and assigns of Eco Soil, and shall bind the
successors and assigns of Encore. There are no third party beneficiaries of this
Assignment. The validity, interpretation, and performance of this Assignment
shall be controlled by and construed under the laws of the State of Minnesota,
the state in which this Assignment is accepted. Licensee hereby irrevocably
consents to the jurisdiction of the appropriate Minnesota courts located in
Hennepin County, Minnesota, and agrees that all litigation arising hereunder
shall be venued in Hennepin County, Minnesota. No change, modification,
extension, termination or waiver of the Assignment, or any of the provisions
herein contained, shall be valid unless made in writing and signed by duly
authorized representatives of the parties hereto. The waiver by either party
hereto of any right hereunder or the failure to perform or of a breach by the
other party shall not be deemed a waiver of any other right
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hereunder or of any other breach or failure by said other party whether of a
similar nature or otherwise. Any of the provisions of the Assignment which are
determined to be invalid or unenforceable in any jurisdiction shall be
ineffective to the extent of such invalidity or unenforceability in such
jurisdiction, without rendering invalid or unenforceable the remaining
provisions hereof and without affecting the validity or enforceability of any of
the terms of the Assignment in any other jurisdiction. Paragraph, section and
similar headings used herein are not to be considered part of this Assignment
and are included solely for the convenience of the parties and are not intended
to be full or accurate descriptions of the content thereof. Time is of the
essence in this Assignment and the failure of either party to promptly pay when
due any payments (after the expiration of any applicable notice and cure
periods), or to perform any material obligations required herein (after the
expiration of any applicable notice and cure periods), may be treated by the
other party as a material breach of this Assignment and shall entitle the non-
breaching party to all rights and remedies afforded by applicable law, subject
to the limitations set forth herein.
IN WITNESS WHEREOF, Encore has executed this Assignment as of the
date first above written.
ENCORE TECHNOLOGIES, INC.,
a Minnesota corporation
By: /s/ XXXXX XXXXXX
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Name: Xxxxx Xxxxxx
Title: President
CONSENT
Michigan State University, as the owner of certain rights to TX-1 and as the
licensor under the above-referenced Michigan State License Agreement, hereby
consents to the assignment of Intellectual Property effected by the foregoing
assignment instrument.
Michigan State University
By: /s/ XXXXXXX X. XXXXX
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Name: Xxxxxxx X. Xxxxx
Title: Assistant VP for Finance
Date: June 30, 1997
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