PATENT ASSIGMENT
EXHIBIT
10.4- PATENT ASSIGNMENT - XXXX OF SALE DATED DECEMBER 31,
2003
PATENT
ASSIGMENT
“Xxxx
of Sale”
I. INTRODUCTION
This
Agreement, memorializes the understanding of both parties as of December
31st
2003,
and has en effective date of the December 31st,
2003 is
by and among Xx. Xxxx X. Xxxxxxxxxx, of 0000 Xxxxxxxxx Xxxx, Xxxxxxxxxx, XX
00000 (hereinafter XXXXXXXXXX) and Info-Hold, Inc. a corporation duly organized
under the laws of the state of Ohio and having a place of business at 0000
Xxxxxxx Xx Xxxxxxxxxx, XX 00000 (hereinafter INFO-HOLD)
II. PROVISIONS
Whereas
XXXXXXXXXX had invented on-hold messaging systems and methods (hereinafter
the
Xxxxxxxxxx on-hold messaging technology), including those set forth and claimed
in the issued patent’s set forth in Schedule A (hereinafter the Xxxxxxxxxx
patents), and is the sole owner of the entire right, title and interest in
and
to the Xxxxxxxxxx on-hold message technology and the Xxxxxxxxxx
patents;
Whereas
INFO-HOLD is desirous of securing the ownership of the Xxxxxxxxxx on-hold
messaging technology; and
Whereas
XXXXXXXXXX is willing to sell INFO-HOLD thru the process of assignment thru
the
US patent and Trademark office the right’s as outlined in the Assignment
document as filed with the USPTO. Such assignment sets forth the rights of
ownership.
III
TERMS
Now
therefore, the parties hereto agree as follows:
1. Assignment
Fees:
XXXXXXXXXX shall receive a Lump Sum fee of 250,000 (two hundred and fifty
Thousand Dollars) and additional royalty’s as outlined in this agreement. For
the purchase of the patents listed under this agreement. payable by the company
and hereby warrants to INFO-HOLD that he has the right to enter into this
Agreement with INFO-HOLD and INFO-HOLD warrants that it has the right to enter
into this Agreement with XXXXXXXXXX. This lump sum fee will accrue interest
at
the rate of 6% annually until balance is paid in full.
2. Royalties: In
consideration of the assignment to INFO-HOLD by XXXXXXXXXX under this Agreement,
INFO-HOLD shall pay XXXXXXXXXX royalties as follows:
a. |
With
respect to Licensed Products or Licensed Services, including
subscriptions, sold or leased to new or existing customers of INFO-HOLD,
INFO-HOLD shall pay HAZENFILED a royalty rate of 5% of INFO-Hold’s Gross
Sales from such sales and leases; including renewals.
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b. |
With
respect to Licensed Products or Licensed Services, including
subscriptions, sold or leased by a third party pursuant to a sublicense
by
INFO-HOLD of the assignment granted to INFO-HOLD hereunder, INFO-HOLD
shall pay XXXXXXXXXX a royalty rate of 5% of said third party’s Gross
Invoice Revenues from such sales and leases; and With respect to
all
paid-up lump sum fees, or other income received by INFO-HOLD in exchange
for a grant by INFO-HOLD to a third party sublicensee of the right
to
make, use, sell, or lease Licensed products or Licensed Services,
including subscriptions, INFO-HOLD shall pay to XXXXXXXXXX ten- percent
(10%) of all such paid-up or lump sum or one time fee’s paid by any
Sublicensing other income received by INFO-HOLD from a third party
sublicensee.
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4. Payments:
Royalties
accruing shall be due and payable quarterly by INFO-HOLD. The respective
quarters will end on the last day of each of the months of December, March,
June, and September. On or before the last day of each month directly following
the end of a quarter (i.e., on or before the last day of January, April, July,
and October, respectively), INFO-HOLD shall pay XXXXXXXXXX the amount of
royalties due for the calendar quarter immediately preceding such month. Each
payment is to be accompanied by a written report setting forth the number and
Gross Invoice Sales of each Licensed Product or Licensed Service sold or leased
by INFO-HOLD and/or a third party sublicensee, a report to that effect will
be
made by INFO-HOLD to XXXXXXXXXX. All sums payable by INFO-HOLD hereunder shall
be paid in U.S. dollars. If Gross Invoice Sales are received in foreign
currency, the exchange rate used for calculating royalty obligations hereunder
shall be applicable currency exchange rate employed by INFO-HOLD’s
bank.
8. Termination:
Neither
party may terminate this agreement or reverse this xxxx of sale, this assignment
is final and may not be reversed, both parties acknowledge their respective
responsibilities relating to this agreement outlined in this xxxx of sale is
final and may not be reversed in the future by either party for any reason.
9. Accounting: INFO-HOLD
and any sublicensees pursuant to the terms of this Agreement shall keep accurate
books and records of all operations affecting royalty payments hereunder for
a
period of (7) years after the year to which such records relate at their
respective principal places of business in such reasonable detail as will permit
the reports provided for in paragraph 6 hereof to be made and the royalties
payable by INFO-HOLD hereunder to be determined. INFO-HOLD agrees to permit
such
books and records to be inspected and audited from time to time (but no more
often than semi-annually) during reasonable business hours by a representative
or representatives of XXXXXXXXXX to the extent necessary to verify the reports
provided for in paragraph 6 hereof; provide however, that (I) reasonable notice
is provided to INFO-HOLD by XXXXXXXXXX of the date and time of such inspection
and audit, and (II) that such representatives shall indicate to XXXXXXXXXX
only
whether the reports and royalties paid are correct and, if not the reasons
why
not.
a. |
In
the event that such representative or representatives find a shortfall
between royalties due and royalties paid of 5% or more for any year
during
the term of this Agreement, and according to accepted accounting
principles the shortfall appears to have occurred as a result of
an error
by INFO-HOLD, then INFO-HOLD will pay to XXXXXXXXXX, in addition
to the
shortfall, the cost of the audit by the representative or representatives,
and monthly interest on the shortfall from the time originally due
to the
time paid by INFO-HOLD at a rate of 1% above the prevailing U.S.
prime
rate as of the date such royalty was originally due.
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13. Warranties: The
rights granted herein by XXXXXXXXXX do not include any warranty whatsoever
with
respect to the performance of any product or service embodying the Xxxxxxxxxx
on-hold messaging technology, including its safety, effectiveness, commercial
viability or merchantability. Except as expressly provided in this Agreement,
Xxxxxxxxxx disclaims all warranties whatsoever with respect to the Xxxxxxxxxx
on-hold message technology or the Xxxxxxxxxx patent applications or any patents
issuing therefrom, either express or implied. There is no express or implied
warranty of merchantability or fitness for a particular purpose.
INFO-HOLD
shall defend, indemnify and hold harmless XXXXXXXXXX from and against any and
all claims, demands, damages, suits, actions, judgments, awards, fines,
liabilities, losses, and all costs and expenses incurred in connection with
any
product or service relating to the Xxxxxxxxxx on-hold messaging technology
or
the Xxxxxxxxxx patent applications or patents issuing therefrom.
15. Assignment: This
assignment shall be binding upon and shall inure to the benefit of the parties
and their successors and assigns. No party shall have the right to assign this
Agreement, in whole or in part, without prior approval of the other, except
that
XXXXXXXXXX may assign his rights and obligations under this Agreement to a
corporation which he wholly owns and which he has assigned the Xxxxxxxxxx patent
applications and any patents issuing therefrom, without prior approval of
INFO-HOLD.
16. Governing
Law:
This
Agreement shall be construed in accordance with the laws of the United States
and if state law is necessary to the interpretation of any provision of this
Agreement, in accordance with the laws of The State of Ohio, without regard
to
its conflict of law provisions.
17. Waiver:
No
waiver of any of the terms and conditions of this Agreement shall be binding
or
effectual against a party hereto for any purpose unless agreed to in writing
by
such party, and any such waiver shall be effective only for the purpose
stated.
18. Separability: Should
any provisions of this Agreement be held unenforceable or in conflict with
the
laws of any jurisdiction, the validity of the remaining or parts or provisions
shall not be affected by such holding and this Agreement shall be deemed amended
to the minimum extent to require complying with the laws of such
jurisdiction.
19. Entire
Understanding: This
Agreement embodies the entire understanding between the parties, supersedes
any
prior representations, warranties, or agreements, written or oral, between
the
parties relating hereto, including the previous nonexclusive License Agreement
between the parties dated September 25, 1995. and the exclusive license
agreement dated December 8th
2003,
Other than the expressly stated in this Agreement or as subsequently set forth
in writing signed by the party to be bound thereby. This Agreement may be
executed in any number of counter parts, any one of which shall be deemed to
be
the original without the productions of others.
20. Notice: All
notices and other communications, including payments, required or permitted
hereunder shall be in writing and delivered to the parties by hand, first class
mail, receipted private courier delivery, or by telefax with confirmation
following by first class mail, at the following addresses:
SCHEDULE
A - THE XXXXXXXXXX PATENT APPLICATIONS
Country
|
Patent
No.
|
Issue
Date
|
Title
|
|||
United
States
|
5,870,461
|
2-9-1999
|
On-Hold
Messaging System and Method
|
|||
United
States
|
5,920,616
|
7-6-1999
|
On-Hold
Messaging System and Method
|
|||
United
States
|
6,272,211
|
8-7-2001
|
On-Hold
Messaging System and Method
|
|||
United
States
|
6,687,352
|
2-3-2004
|
On-Hold
Messaging System and Method
|
|||
II
Abandoned US Patent Application:
|
07/999,592
|
On
-Hold Messaging System and Method filing
date: 12/31/1992
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XXXXXXXXXX:
Xxxx
X.
Xxxxxxxxxx
0000
Xxxxxxxxx Xxxx
Xxxxxxxxxx,
XX 00000
INFO-HOLD:
Xxxxxx
X.
Xxxx, Esq.
INFO-HOLD,
INC
0000
Xxxxxxx Xxxx
Xxxxxxxxxx,
XX 00000
Notices
delivered by hand shall be effective upon delivery, and those mailed or sent
by
telefax or courier shall be effective upon mailing, confirmation of telefax
transmission pr delivery by courier.
IN
WITNESS WHEREOF the parties hereto have executed this Agreement.
S/S_Joey X. Xxxxxxxxxx | |||
Xxxx
X. Xxxxxxxxxx
0000
Xxxxxxxxx Xxxx
Xxxxxxxxxx,
XX 00000
|
s/s
Xxxxxx X. Xxxx, Esq.
|
|||
Xxxxxx
X. Xxxx, Esq., General Counsel
INFO-HOLD,
INC.
0000
Xxxxxxx Xxxx
Xxxxxxxxxx,
XX 00000
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