ASSIGNMENT OF PATENT RIGHTSIP Intellectual Property License Assignment Agreement |
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Exhibit 10.34
ASSIGNMENT
OF PATENT RIGHTS
This Assignment
of Patent Rights (the “Agreement”) is effective as of the 1st day
of September, 2003 (the “Effective Date”), by and between Adrian
Menzell, an individual (“Assignor”), and Save the World Air, Inc.,
a Nevada corporation with a principal place of business at 5125 Lankershim
Blvd., North Hollywood, California 91601 (“Assignee”).
WHEREAS,
Assignor has filed a Provisional Patent Application in Australia entitled,
“Improvements in or Relating to Emission Control Systems” attached
hereto as Exhibit A (the “Provisional Patent
Application”);
WHEREAS,
Assignor is the owner of all right, title and interest in and to the patent
described in the Provisional Patent Application and all corresponding U.S. and
foreign patents and patent applications, including, but not limited to, those
specified in Schedule A attached hereto (the “Patent
Rights”);
WHEREAS,
Assignor desires to assign and Assignee desires to acquire, the entire and
exclusive right, title and interest in and to the Patent Rights and the
underlying inventions described therein, in Australia, the United States and
throughout the world; and
WHEREAS,
Assignor is willing to assign to Assignee all rights, title and interest in and
to the Patent Rights and the underlying inventions described therein in
Australia, the United States and throughout the world, subject to the terms and
conditions of this Agreement.
NOW, THEREFORE,
for good and valuable consideration, receipt of which is hereby acknowledged by
Assignor, Assignor hereby irrevocably assigns, transfers and conveys to
Assignee, and Assignee hereby accepts, all of Assignor’s right, title and
interest throughout the world in and to the Patent Rights, the underlying inventions
described therein and all existing and future design modifications and
improvements thereon, and any and all patent applications whether U.S. or
foreign that are or may be granted therefrom including without limitation any
extensions, continuations, continuations-in-part, divisions, reissues,
reexaminations, and renewals thereof, or other equivalents thereof, and
further, all rights and privileges pertaining to the Patent Rights and any and
all patent applications thereof whether U.S. or foreign that are or may be
granted therefrom including, without limitation, the right, if any, to sue or
bring other actions for past, present and future infringement thereof.
Assignor
further assigns to and empowers Assignee, its successors, assigns or nominees,
all rights to make applications for patents or other farms of protection for
said inventions, design modifications and improvements and to prosecute such
applications as well as to claim and receive the benefit of the right of
priority provided by the International Convention for the Protection of
Industrial Property, as amended, or by any convention which may henceforth be
substituted for it, and the right to invoke and claim such right of priority
without further written or oral authorization.
Assignor
further agrees that Assignor will, with out charge to Assignee, but at
Assignee’s expense (a) cooperate with Assignee in the prosecution of
U.S. patent applications and foreign counterparts on the invention and any
design modifications and improvements; b) execute,
verify, acknowledge and deliver all such
further papers, including patent applications and instruments of transfer; and
(c) perform such other acts as Assignee lawfully may request to obtain,
maintain, defend or enforce patent applications and patents for the inventions,
design modifications and improvements in any and all countries, and to vest
title thereto in Assignee, or Assignee’s successors and assigns.
In the event
that Assignee is unable for any reason whatsoever to secure Assignor’s
signature to any document it is entitled to under the preceding paragraph,
Assignor hereby irrevocably designates and appoints Assignee and its duly
authorized officers and agents, as his agents and attorneys-in-fact to act for
and on his behalf and instead of him, to execute and file any such document and
to do all other lawfully permitted acts to further the purposes of the
foregoing with the same legal force and effect as if executed by Assignee.
Assignee shall reimburse Assignor for all costs and expenses (including legal fees) incurred by Assignor in preparing and filing the Provisional Patent Application up to US$10,000.00. Assignee shall also make a one-time issuance to Assignor of 20,000 shares of the Company’s common stock, which shall be issued to Assignor after he has filed the Provisional Patent Application. Assignee shall further pay a royalty fee of $US0.25 per unit, or product within the scope of the Patent Rights (“Unit”), sold. Royalties due under this agreement shall be payable quarterly on a country-by-country basis until (i) the expiration of the last-to-expire issued patent included within the Patent Rights that has not been held invalid in a final decision of a court of competent jurisdiction, and that has not been disclaimed or admitted to be invalid or unenforceable through reissue or otherwise, covering such Unit in such country or (ii) if no such patent has issued in a country, until the tenth anniversary of the first commercial sale of a Unit in such country. Assignee shall keep and maintain complete and accurate records of the transactions for the purpose of determining the royalty amounts payable under this Agreement. Such books and records shall be kept at the principal place of Assignee’s business for at least five (5) years following the end of the calendar quarter to which they pertain and will he made available to Assignor, or its representative, for inspection during ordinary business hours, no more than once ever






