TECHNOLOGY CONTRIBUTION
AGREEMENT
THIS
TECHNOLOGY CONTRIBUTION AGREEMENT (this “Technology
Contribution”), is entered into as of January 14, 2005 (the
“Effective Date”), among Encore Clean Energy, Inc., a
Delaware corporation (“Encore”), Robert D. Hunt, a
individual residing at 23707 Redfish Lane, Pass Christian,
Mississippi 39571 (“Hunt” and collectively, Hunt and
Encore shall hereafter be referred to as the
“Assignors”) and World, Wind and Water Energy LLC, a
Delaware limited liability company (“Assignee”).
Encore, Hunt and Assignee are referred to herein individually as a
“Party” and collectively as the
“Parties”.
RECITALS
WHEREAS,
Encore, Hunt and The Abell Foundation, Inc, a Maryland corporation
(“Abell”), are parties to that certain Limited
Liability Company Agreement of Assignee dated as of January 14,
2005, pursuant to which Encore, Hunt and Abell are the sole members
of Assignee;
WHEREAS,
contemporaneously with the execution and delivery of this
Technology Contribution by the Assignors, Abell is acquiring a
limited liability company interest in Assignee pursuant to a cash
contribution to Assignee;
WHEREAS,
Hunt is the owner and Encore is the licensee from Hunt pursuant to
that certain Exclusive License Agreement, between the Assignors
dated as of May 20, 2003 (the “Cryotherm License”), of
all right, title and interest in and to certain Assigned Patents
and Assigned Intellectual Property (as hereinafter defined) that
relate to the Business (as hereinafter defined); and
WHEREAS,
Assignee desires to acquire rights in the Assigned Patents and
Assigned Intellectual Property and, in consideration of limited
liability company interests in Assignee, Assignors desire to
contribute and assign all right, title and interest in the Assigned
Patents and Assigned Intellectual Property to Assignee;
NOW,
THEREFORE, in consideration of the foregoing, and of the mutual
covenants and agreements hereinafter set forth, and other good and
valuable consideration, the receipt of which is hereby
acknowledged, the Parties hereby agree as follows:
1.
DEFINITIONS
Except
as otherwise set forth herein, capitalized terms used in this
Technology Contribution shall have the meanings ascribed to them
below.
1.1
“
Assigned Intellectual Property ” means all
Trade Secrets and Intellectual Property developed or used in
connection with, or related to, the Assigned Patents, including,
but not limited to, that Intellectual Property specifically listed
on Schedule B .
1.2
“ Assigned Patents ” means those
patents, applications for patents, and patent disclosures as
specifically listed on Schedule A , and any continuations,
continuations-in-part, reissues, reexaminations or the like
subsequently arising therefrom.
1.3
“ Business ” means the development,
research, manufacture, sale, distribution, exploitation and license
of patents, technology, products and services relating to use of
air and water turbine technology.
1.4
“
Improvements ” shall have the meaning set
forth in Section 2.4 hereto.
1.5
“
Intellectual Property ” means all rights
into or arising under or out of any intellectual or industrial
property of any kind or nature, in each case arising under or
protected by the laws of any country anywhere the world, including
patents, patent applications, patent disclosures, registered and
unregistered trademarks, trade names and service marks, registered
and unregistered copyrights, trade secrets, software, domain names,
mask works, schematics, technology, know-how, inventions,
improvements thereto, ideas, algorithms, processes and tangible or
intangible proprietary information or materials.
1.6
“ Person ” means any individual,
corporation, association, partnership, limited liability company,
joint venture, trust, estate or other entity or
organization.
1.7
“ Trade Secrets ” means trade secrets,
commercial and technical information, know-how, engineering,
production and other designs, inventions, discoveries, concepts,
ideas, methods, processes, drawings, specifications, formulae, and
other technology, software (object and source code), data bases and
documentation thereof and other proprietary and confidential
information, including customer lists, that has not been made
public, in each case excluding any rights in respect of any of the
foregoing that comprise or are protected by issued
patents.
2.
CONTRIBUTION
AND ASSIGNMENT
2.1
Contribution
and Assignment of Patents
Assignors
hereby contribute, assign, transfer and convey to Assignee all
right, title and interest in and to the Assigned Patents and
Assigned Intellectual
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Property,
free and clear of any liens or other encumbrances, and the right to
sue for past and future infringement and to recover and hold all
damages and profits arising therefrom, the same to be held and
enjoyed by Assignee and its successors and assigns from and after
the date hereof as fully and entirely as the same would have been
held and enjoyed by Assignors but for this Assignment.
Contemporaneously with the execution of this Assignment, Hunt shall
execute and deliver to Assignee the short form patent assignment
attached hereto as Exhibit 1 , which Assignee shall have the
right to record at the United States Patent and Trademark Office
pursuant to Section 2.3 hereto.
2.2
Reserved
2.3
Power of
Attorney for Assignments and Further
Assurances
Assignors
hereby authorize and appoint Assignee and grant Assignee full power
of attorney to execute, in the name of and on behalf of Assignors
where necessary, all such documents as are reasonably necessary to
perfect, affirm, record and maintain title in Assignee, its
successor, assigns or other legal representatives to any of the
Assigned Patents and Assigned Intellectual Property, including all
documents necessary to register in the name of Assignee the
assignment of (i) each Assigned Patent in the appropriate country
or countries and, (ii) each trademark, registration and application
and trade name listed in attached Schedule B . Upon the
request of Assignee, Assignors further agree to execute and deliver
to Assignee such additional documents and take such other action as
may be reasonably necessary to continue, secure, defend, register,
confirm, evidence and otherwise give full effect to and to perfect
the rights of Assignee under this Technology Contribution. Assignee
shall provide Assignors with contemporaneous copies of all such
documents.
2.4
Ownership of
Improvements and New Developments
To
the extent that either Encore or Hunt or any of their respective
Affiliates, and employees of or consultants to either Encore or
Hunt or any of their respective Affiliates, creates any
improvements or enhancements to the Assigned Patents and Assigned
Intellectual Property, or new inventions or developments related to
the Assigned Patents and Assigned Intellectual Property or to
improvements or enhancements to the Assigned Patents and Assigned
Intellectual Property including but not limited to any innovation,
process or technique that is necessary or useful to the manufacture
of commercial products (collectively “Improvements”),
such Improvements, including patents, applications for patents,
continuations, continuations-in-part, reissues, reexaminations or
the like arising therefrom and other Intellectual Property rights
in any of the foregoing, shall be owned by Assignee. Within thirty
(30) days after the discovery of any Improvement, Assignors shall
disclose and deliver to Assignee information sufficient to allow
Assignee to determine whether to file a patent application related
to the Improvement. Upon request of Assignee, Assignors further
agree to
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execute and
deliver to Assignee, and cause each of its Affiliates, employees
and consultants to execute and deliver to Assignee, such additional
documents and assignments and take such other action as may be
reasonably necessary to allow Assignee to apply to register,
register, continue, secure, defend, confirm, evidence and otherwise
give full effect to and to perfect the rights of Assignee with
respect to Improvements.
3.
REPRESENTATIONS
AND WARRANTIES OF ENCORE AND HUNT
Encore and Hunt make the
following representations jointly and separately, except as
specifically set forth below:
(a)
Encore
has all requisite power and authority to enter into and perform the
terms of this Technology Contribution, the agreements and
instruments referred to herein, and the transactions contemplated
hereby and thereby. The execution, delivery and performance of this
Technology Contribution and of the agreements and instruments
called for hereunder, and the consummation of the transactions
contemplated hereby and by such agreements and instruments have
been duly and validly authorized and approved by all necessary
action by Encore, including all necessary board, and if necessary,
stockholder, consents. Encore is duly organized, validly existing
and in good standing under the laws of its state of
organization.
(b)
This
Technology Contribution constitutes, and upon execution and
delivery, each other agreement and instrument contemplated hereby
will constitute, a valid and binding agreement and obligation of
each of Hunt and Encore enforceable against each of them in
accordance with their respective terms. The execution, delivery and
performance by Encore and Hunt of this Technology Contribution and
the agreements and instruments called for hereunder will not
require the consent, approval or authorization of any Person,
except, as to Encore, as set forth in subsection (a)
above.
(c)
The
listing of Assigned Patents identified on Schedule A hereto
includes all patents, patent applications and patent disclosures
that are owned or used by Assignors that relate to the Business,
including the jurisdictions, both domestic and foreign, in which
each such item of Intellectual Property has been issued or
registered or in which any application for such issuance and
registration has been filed.
(d)
Hunt
represents that he has not transferred ownership of, or granted any
options or license in, the Assigned Patents or the Assigned
Intellectual Property to any Person except pursuant to the
Cryotherm License. Encore represents that it has not transferred
ownership of or any other interest in the Cyrotherm License or
otherwise transferred its interest in, or granted any options or
sublicenses in the Assigned Patents or its interest in the Assigned
Intellectual Property to any Person. Assignors have not entered
into any agreement to indemnify any other Person against any charge
of
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infringement of any third party Intellectual
Property relating to Assignors’ exploitation of the Assigned
Patents or
