EX-10.23
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d25305exv10w23.htm
PATENT ASSIGNMENT AGREEMENT - XXXXXX XXXXXX
Exhibit 10.23
ASSIGNMENT AND AGREEMENT
This is an Assignment and Agreement, dated this 19th day of August 2002, by and between Xxxxxx
X. Xxxxxx of 0000 Xxxxxxxx Xxxxx, Xxxx, Xxxxxxx 00000 (hereinafter “Assignor) and Global Energy
Group, Inc., a State of Florida corporation, having its mailing address at 0000 Xxxxxxx Xxxxx,
Xxxxxx, Xxxxxxx 00000 (hereinafter “Assignee”).
ARTICLE I — DEFINITIONS
| 1.1 | “Assigned Product” shall mean the Solar-Based Power Generating System and Method Therefor as
disclosed and claimed in the United States Patent Application dated March 8, 2001 and any
improvements thereon that are dominated by U.S. Patent Application Number 10/094,155. |
| 1.2 | “Assignor Patent Rights” shall mean U.S. Patent Application Number l0/094,l55 or any
additional patent applications filed on any improvements of the Assigned Product, all U.S.
patents issuing thereon, and any corresponding foreign patents and patent applications
throughout the world which lay claim convention priority upon, or is dominated by, such United
States patent or patent application. |
| 1.3 | “Licensee” shall mean any entity, whether a partnership, firm, company, corporation or
otherwise to which Assignee grants a license under Assignor’s Patent Rights. |
| 1.4 | “Valid Claim” shall mean any claim in any patent application that is allowed, resulting in an
issuance of a United States Letters of Patent or any patent not yet expired included in the
Assignor Patent Rights in the respective countries which has not been denied, nor invalidated
by a decree of a Tribunal of competent jurisdiction, from which no further appeal is
available. |
| 1.5 | “Commercially Exploited” shall mean the use, sale, lease or other activity serving to
generate income on the Assigned Product. |
| 1.6 | “Gross Sales Price” shall mean the gross selling price received by Assignee and its Licensees
of the Assigned Product, F.O.B. factory, without any deductions for cash discounts, including
retail, wholesale and direct sales by mail order. When an Assigned Product is included as part
of an Assignee Product containing, incorporating or including products and materials other
than Assigned Products, any royalty or other amount payable under this Assignment and
Agreement shall be payable only with respect to the portion of the Gross Sales Price for such
Assignee Product allocable to the included Assigned Product(s). The Gross Sales Price
allocable to such included Assigned Product(s) shall be the cost of such Assigned Product(s)
increased by the markup on the entire Assignee Product. Example: Assignee sells a 10-ton
package rooftop unit containing an Assigned Product for $5,000. The cost of the entire package
is $3,846, meaning that the package is sold with a 30% markup. The aggregate cost of the
Assigned Product(s) included in the system is $540. Accordingly, the “Gross Sales Price” of |
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| | such Assigned Product(s) in this example
would be $702. For the purposes of this
paragraph, (i) “Assignee Product” means and
includes any item, products, systems and/or
package, and/or any collection or aggregation
of items, products, system, and/or packages,
marketed and either licensed or sold by
Assignee, (ii) any reference to the “cost” of
an Assignee Product or any element,
component, part or portion of an Assignee
Product means the cost thereof to Assignee
(or other person selling such Assignee
Product) as reflected on the books and
records of the seller, and (iii) any
reference to the “markup” on, of or with
respect to any Assignee Product means the
excess, if any, of the gross selling price of
such Assignee Product over the cost thereof,
divided by such cost, expressed as a
percentage. With respect to any Assigned
Product or Assignee Product sold by any
Licensee, royalties and other amounts are
payable under this Assignment and Agreement
only with respect to the amounts received by
the Licensee. |
ARTICLE II — ASSIGNMENT OF RIGHTS
| 2.1 | Assignor hereby assigns to Assignee all of the Assignor Patent Rights throughout the world. |
| |
| 2.2 | The assignment granted under Paragraph 2.1 of this Article II includes the right to grant
licenses to import, make, have made, use and sell the Assigned Product throughout the world.
Assignee shall give written notice to Assignor with respect to each license granted by the
Assignee. |
| |
| 2.3 | The assignment of rights hereunder is limited to those rights included in Assignor Patent
Rights. |
ARTICLE III — ROYALTY
| 3.1 | In consideration of the Assignment of Paragraph 2.1 of Article II, Assignee shall pay
Assignor, royalties as set forth in Paragraph 3.2 of this Article III. |
| 3.2 | Assignee agrees to pay Assignor an accrued royalty in the amount of three percent (3%) of the
Gross Sales Price for each product manufactured, distributed, sold, etc. that is covered
by/under, or becomes covered by a Letters of Patent, derived or accomplished by the Patent
Application set forth in Paragraph 1.1 of Article I. To the extent Assignee grants a license
to a third party under Assignor Patent Rights and receives royalties or other remuneration
therefor, then Assignee agrees to pay Assignor three percent (3%) of such royalties and/or
license fees. |
| 3.3 | No royalty shall be paid twice on the same Assigned Product and any customer or Assignee or
its Licensees is entitled to resale or export the Assigned Product anywhere in the world
without the payment of additional royalties. |
| 3.4 | Royalties will accrue on each product manufactured, distributed, or sold that is covered
by/under a Patent Pending Application. Royalties will not be paid or disbursed until such time
as the actual Patent has issued. In the event that a Patent |
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| | Application is; a) abandoned, b) allowed no claims, c) rejected,
or d) determined to be without the ability to file arguments that
would result in Valid Claims, then no royalty would be paid, and
all royalties accrued would revert to Assignee. In the event a
Patent Application results in an issuance of a United States
Letter of Patents, then all accrued royalties will be dispersed
in accordance with Paragraphs 6.1 and 6.2 of Article VI. |
| |
| 3.5 | Minimum Annual Royalties are as follows: |
| |
| | Until April 1, 2004 the royalty rate shall be 0%. and the minimum annual royalty shall be
$0, and no royalty or other payment shall be due and payable until April 1, 2004. |
| | After April 1, 2004 the minimum annual royalties shall be: |
| | Upon and from the date of Patent Issuance— |
| | | | | |
| Year One -
| | | 0 | |
| Year Two -
| | | 0 | |
| Year Three -
| | $ | 10,000.00 | |
| Year Four -
| | $ | 25,000.00 | |
| Year Five -
| | $ | 40,000.00 | |
| Year Six -
| | $ | 60,000.00 | |
| Year Seven -
| | $ | 75,000.00 | |
| | Every Year Thereafter Until the Expiration of the Letters of Patent — $100,000.00 |
ARTICLE IV — COMMERCIAL EXPLOITATION AND
PATENT PROSECUTION
| 4.1 | Assignee shall use reasonable efforts to COMMERCIALLY EXPLOIT the Assigned Product. |
| |
| 4.2 | Assignee shall have control of the preparation and prosecution of all pending patent
applications, in respect to the aforementioned patents as covered in the Assigned Product and
any pending patent applications, in respect to the aforementioned patent application as
covered in the Assigned Product, included within Assignor Patent Rights. |
| |
| 4.3 | Assignee shall pay for the expenses and costs relating to such preparation and prosecution of
those applications contemplated by Paragraph 4.2 of the Article IV. |
| |
| 4.4 | Assignee shall pay for any taxes, annuities, maintenance fees, renewal and extension charges,
and other out-of-pocket expenses, and related legal fees, in connection with any patent or
patent applications included within the Assignor’s Patent Rights. |
| 4.5 | Should Assignee decided, in its sole and absolute discretion, to abandon any pending patent
application or to stop paying for the expenses and costs contemplated by Paragraphs 4.3 and
4.4, Assignee shall so notify Assignor to allow Assignor the opportunity to assume prosecution
of the pending patent application and to begin paying for all of the expenses and costs. |
ARTICLE V — RECORDS
| 5.1 | Assignee shall submit or cause to be submitted to Assignor within one month following each
semi-annual period (six months) a report setting forth (1) the number and (2) the Gross Sales
Price of the Assigned Product, which Assignee has Commercially Exploited and (3) the amount of
licensing royalties and remuneration received during that semi-annual period and which have
not been previously reported. |
| 5.2 | Assignee agrees to keep books and records of account pertaining to Paragraph 5.1 of this
Article V in such a manner as to permit the correctness and accuracy of any of the reports
rendered in compliance with Paragraph 5.1 of this Article V to be ascertained. Assignee shall
permit so much of the books and records thereof as pertain to the subject matter of this
Assignment and Agreement to be confidentially inspected by a certified public accountant or
Assignor’s designate, during ordinary business hours, but not more than once each semi-annual
period, to confirm the correctness and accuracy of the reports rendered under Paragraph 5.1 of
this Article V. |
ARTICLE VI — PAYMENTS
| 6.1 | Assignee agrees to pay the amounts contemplated by Paragraph 3.2 of Article III,
semi-annually on a calendar basis and, within one month following each semiannual calendar
period and shall tender such payments to Assignor concurrently with the reports contemplated
by Paragraph 5.1 of Article V. |
| 6.2 | Assignee agrees to pay the amounts contemplated by Article III at Assignor address listed
hereinabove, or at such other places as Assignor may specify from tine to time, in United
States dollars and through a United States bank designed by Assignor. |
ARTICLE VII — VALIDITY AND INFRINGEMENT
| 7.1 | In the event that a Valid Claim of the patent included in Assignor Patent Rights is finally
held to be invalid or limited in scope by a court of competent jurisdiction from which appeal
can no longer be taken, Assignee from the date of entry of the decision of such Court, shall
be permanently relieved to the extent of such holding of invalidity or limitation of scope as
to the obligation to pay accrued royalties on the Assigned Product in accordance with
Paragraph 3.2 of Article III, provided that such Assigned Product is not covered by another
Valid Claim on one or more patents coming with Assignor Patent Rights assigned hereunder which
have not been held to be invalid or limited in scope as provided herein. |
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| 7.2 | In the event Assignor and Assignee agree that a particular Assigned Product or the use
thereof does not infringe a particular Valid Claim of any patent included in Assignor Patent
Rights, Assignee shall thereafter be permanently relieved, with respect to any Assigned
Product or use thereof which is the same as the Assigned Product or use thereof, agreed not to
be infringed from the Assigned Product, the obligation of making further payments to Assignor
which might otherwise be due under Paragraph 3.2 of Article III, such relief to be effective
as of the date of entry, of such date, of such agreement; provided however, that the Assigned
Product is not covered by another Valid Claim of one or more patents within Assignor Patent
Rights which have not been held or agreed not to be infringed as provided, herein. |
| 7.3 | Assignee may, in its own name, bring or prosecute infringement suits against others who are
infringing the patents within Assignor Patent Rights and shall be entitled to all recovery
therefrom. Assignee shall have the full and sole right to control such or other proposed
litigation and may discontinue any such suit or proposed litigation at any time upon giving
thirty (30) days written notice of its intent to do so, to Assignor. Assignor may at their
option, thereafter elect to continue such suit or other litigation at its own expense as
evidenced by written notice to Assignee, and in such event, Assignor shall be entitled to all
recovery therefrom, but shall keep Assignee fully advised of the progress of such continued
suit or other litigation. |
| 7.4 | It is mutually agreed between the parties nothing herein contained shall be construed to
require either party to expend money in litigation or in the enforcing of Assignor Patent
Rights unless it so elects and in the event a party proceeds with litigation in the name of
the other party any cause in which such other party is not voluntarily a party, as evidenced
by written notice, such party shall and agrees to hold harmless the other party from any and
all liabilities arising thereunder, including, but not limited to, attorneys fees, court
costs, and damages arising out of counterclaims, cross claims and the like. |
| 7.5 | Assignor represents that he is unaware of any rights of others which would be infringed by
the Commercial Exploitation of the Assigned Product. |
ARTICLE VIII — TERM
| 8.1 | This Assignment and Agreement shall become effective upon mutual execution hereof and shall
continue in effect until the expiration of the last to expire of the patent in Assignor Patent
Rights coming hereunder. |
| 8.2 | If Assignee shall have failed in the performance of any of its covenants under this
Assignment and Agreement, including payment of royalties contemplated by Paragraph 3.2 of
Article III, Assignor may terminate this Assignment and Agreement provided (a) Assignor
provides Assignee written notice listing the specific failure of performance, (b) Assignee
fails to cure such failure of performance within forty-five (45) days following its receipt of
such notice, and |
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| | | (c) the default is in fact existing. Should a dispute arise over whether the default is in
fact existing, Assignee may institute arbitration proceedings contemplated by Paragraph
11.3 of Article XI within the forty-five (45) day cure period whereupon termination shall
be held in abeyance pending a decision of the arbitrator(s). |
| |
| 8.3 | | Assignee may terminate this Assignment and Agreement at any time, provided however, a
forty-five (45) day written notice of Assignee’s intent to terminate this Assignment and
Agreement is tendered to Assignor at the address contained herein. |
| |
| 8.4 | | Termination of this Assignment and Agreement shall not relieve either party of its
obligations incurred up to the date of termination. |
| |
| 8.5 | | Upon termination, the rights listed in Assignor Patent Rights transferred hereunder shall
revert to Assignor. |
ARTICLE IX — MARKING
| 9.1 | | Assignee agrees that each and every Assigned Patent commercially exploited by it hereunder
covered by Assignor Patent Rights shall be marked with the statutory patent marking, or if it
is not practical to xxxx the Assigned Product, to xxxx the container in which they are
commercially exploited. Assignee further agrees to secure similar commitments from its
Licensees. |
ARTICLE X — NOTICE
| 10.1 | | Any notice or communication required or permitted hereunder shall be deemed to be duly given
when sent by certified mail, return receipt requested, to the last known address of the other
party. |
| 10.2 | | Until otherwise notified in writing, the addresses of the parties hereto for purposes of such
notice or communications are as set forth on page one of this Assignment and Agreement. |
ARTICLE XI — MISCELLANEOUS
| 11.1 | | This Assignment and Agreement shall enure to the benefit of and be binding upon Assignee and
may be transferred to or assigned by Assignee without the written consent of Assignor. |
| 11.2 | | If at any time either party hereto shall elect not to assert its rights under any provision
of this Agreement and Assignment in the event of breach of said provision by the other party,
its action or lack of action in that respect shall not be construed as its continuing waiver
of its rights under such provision or under any other provision of this Assignment and
Agreement. |
| 11.3 | | This Assignment and Agreement shall be construed under and in accordance with the laws of the
State of Florida. Any controversy or claim arising out of this |
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| | | Assignment and Agreement or a breach or alleged breach thereof shall be settled by (a)
arbitration in accordance with the rules of the American Arbitration Association (“AAA”),
such arbitration to take place in Tampa, Florida, and any judgment upon the award rendered
by the arbitrator may be entered in any court having jurisdiction thereof, or (b) a
mutually agreed upon, licensed, State of Florida certified attorney, who will sit as the
designated arbitrator and any judgment or award rendered by the arbitrator may be entered
in any court having jurisdiction thereof. Each party agrees that any action or proceeding
that may be brought in connection with this Assignment and Agreement must be brought
against each party in the Federal Court of the Middle District of Florida in Tampa and each
party hereto hereby consents and shall not oppose for any reason such jurisdiction and
venue. |
| |
| 11.4 | | In the event any Article or part thereof contained in this Assignment and Agreement is
declared invalid or unenforceable by final judgment or decree of the arbitrators or by a court
of competent jurisdiction from which no appeal is taken, all other Articles and parts thereof
contained in this Agreement and Assignment shall remain in full force and effect and shall not
be affected thereby. |
| 11.5 | | This Assignment and Agreement shall supercede all prior written and oral agreement between
the parties. No changes, modifications, or amendments shall be effective unless in writing and
executed by both parties hereof with the same formality as this Assignment and Agreement. |
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Xxxxxx X. Xxxxxx
I, Xxxxxx X. Xxxxxx, have executed this document by my own free will for the purposes set forth
herein.
| | | |
| /s/ Xxxxxx X. Xxxxxx
| | 8/20/02 |
|
| | |
| Xxxxxx X. Xxxxxx
| | Date |
I, Xxxxx X. Xxxxxx have personally witnessed Xx. Xxxxxx X. Xxxxxx having executed this document.
| | | |
| /s/ Xxxxx X. Xxxxxx
| | 8/20/02 |
|
| | |
| Witness
| | Date |
Global Energy Group, Inc.
I/We, representing Global Energy Group, Inc., have executed this document by my/our own free will
for the purposes set forth herein.
| | | |
|
| | Aug. 21, 2002 |
|
| | |
| Global Energy Group, Inc.
| | Date |
| | | | |
| | |
| By: | /s/ Xxxxxx X. Xxxxxxxxxx
| |
| | Xxxxxx X. Xxxxxxxxxx | |
| Its: | President and Chief Executive Officer | |
| |
I, Xxxxx X. Xxxxxx, have personally witnessed Xx. Xxxxxx X. Xxxxxxxxxx having executed this
document.
| | | |
| /s/ Xxxxx X. Xxxxxx
| | Aug. 21, 2002 |
|
| | |
| Witness
| | Date |
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