This Assignment Agreement (this "Agreement") is made between SunnComm, Inc., a corporation, with offices at 668 North 44th Street Suite 220 Phoenix, Arizona 85008 (hereinafter referred to as "SunnComm"), and Equity Earnings, Corp. d.b.a. Designer Products, an Arizona Corporation, with offices at 6245 N. 24th Parkway, Suite 215, Phoenix, AZ 85016, USA and John D. Aquilino (hereinafter collectively referred to as "DP")
WHEREAS, DP represents that it exclusively owns all right, title and interest and to the new product invention relating to a "Data Copy Protection System and Method, dockett# 35624-A14" (hereinafter also referred to as the "Property") by for which application for Letters of Patent of the United States have been drafted, and filed with the US Patent Office, of which invention and application and all rights in and thereto DP represent sole ownership in.
WHEREAS, DP represents that it has the sole right and authority to assign the herein-contained right under the Patents (as hereinafter defined) covering the certain invention relating to the Property and any reissues and extensions of the scope hereinafter granted
WHEREAS, SunnComm is desirous of acquiring from DP all right, title and interest in the Property embodying the invention covered by said application for Letters Patent of the United States, for resale and sublicensing Worldwide;
WHEREAS, DP is willing to convey, sell, and transfer to SunnComm all right, title and interest in and to the Property upon the terms and conditions hereinafter recited;
NOW, THEREFORE, in consideration of the foregoing, and of the mutual covenants, terms, conditions, and agreements, hereinafter expressed, and other good and valuable consideration, the receipt and sufficiency for which is acknowledged, the parties agree as follows:
DEFINITIONS. As used in this Agreement:
A. The word "Patent" shall mean and include:
i. The application for United States Letters written by the Law Firm of Parsons & Goltry docket #35624-A14 regarding a "Data Copy Protection System and Method dockett# 35624-A14" wich has been files with the US Patent and Trademark Office.
ii. Any reissues and extensions thereof;
iii. Any continuation-in-part United States patent application (including divisions, continuations-in-whole or in-part, and (substitutes thereof or therefor) based in part on the above application which DP shall wish to file (of which DP shall promptly notify SunnComm) and which SunnComm shall thereupon elect to have added to the Patents (of which SunnComm shall promptly notify DP), any patent which shall issue on any such application, any reissues and extensions thereof.
B. The phrase "Valid Claim" shall mean:
i. in the case of an application for letters patent (during the time such patent is pending as an application), a claim or part which shall not have been finally rejected by an unappealed or unappealable decision of the Patent Office of the country in which such application is filed; and
ii. in the case of and issued and unexpired Letters Patent, a claim or part which shall not have been held invalid in an unappealed or unappealable decision of a court of competent jurisdiction.
1. ASSIGNMENT. In accordance with this Agreement, DP will sell, convey, transfer and assign to SunnComm the Property and the Patent. DP will continue to prosecute all filed claims for SunnComm until all filed claims have been granted or denied by the US Patent and Trademark Office.
2. COMPENSATION & SPECIAL RESTRICTIONS.
Upon the signing of this Agreement the parties agree to the following:
A. See Insert "A" attached.
B. SunnComm Agrees not to assign the asset to any third party for (5) five years unless written authorization to initiate such an assignment is given by DP.
C. SunnComm agrees that should SunnComm become insolvent through bankruptcy or cease to function as a corporate entity through the closing of all offices, then SunnComm agrees that all intellectual property covered in this Assignment Agreement shall automatically revert to DP and that SunnComm shall execute any and all documents, instruments and assignment necessary to perfect this reversion.
3. DURATION, DEFAULTS & TERMINATION. SunnComm and DP agree to abide by the obligations:
A. This Agreement shall remain in effect for the lifetime of Patents, unless sooner terminated upon the mutual agreement of DP and SunnComm.
B. This Agreement shall expire simultaneously with the expiration of the longest-lived patent or the rejection or abandonment beyond further appeal of the last remaining patent application comprised within the patents, whichever occurs later, unless sooner terminated.
C. If SunnComm fails to pay DP moneys or other consideration payable under the terms hereof, or if SunnComm violates or fails to keep or perform any other obligation, term, or condition, or covenant, hereof, or if SunnComm shall be adjudged bankrupt or become insolvent or make an assignment for the benefit of creditors, or be placed in the hands of a receiver or Trustee in bankruptcy, then DP may, at its option, cancel and terminate this Agreement by giving thirty (30) days written notice specifying default complained hereof, provided however, that if SunnComm shall, within such (30) thirty days cure the default complained of, then the notice shall cease to be operative and this Agreement shall continue in full force and effective as though such default had not occurred, and provided further that if SunnComm shall within such (30) days notify DP in writing that it disputes the asserted default, the mater shall be submitted to arbitration a hereinafter provided.
D. Termination of this Agreement granted herein shall not relieve SunnComm of its obligations to pay DP moneys and any other consideration due and unpaid at the time of termination. Termination of this Agreement shall not impair or prejudice any cause of action or claim that one party may have against the other party for any breach of this Agreement.
2. FOREIGN PATENTS. Should SunnComm desire foreign patent protection SunnComm may at its own expense pay to file for patents in specified country's of which these Patents will be assigned to SunnComm.
3. ARBITRATION. All disputes under this Agreement that cannot be resolved by the parties shall be submitted to arbitration under the rules and regulations of the American Arbitration Association. Either party may invoke this paragraph after providing 30 days' written notice to the other party. All costs of arbitration shall be divided equally between the parties. Any award may be enforced by a court of law.
4. TRANSFER OF. RIGHTS. This Agreement shall be binding on any successors of the parties. DP retains the right to assign its interests in this Agreement to any other party.
5. ENTIRE AGREEMENT. This Agreement contains the entire agreement of the parties and there are no other promises or conditions in any other agreement whether oral or written. This Agreement supersedes any prior written or oral agreements between the parties.
6. AMENDMENT. This Agreement may be modified or amended, if the amendment is made in writing and is signed by both parties.
7. SEVERABILITY. If any provision of this Agreement shall be held to be invalid or unenforceable for any reason, the remaining provisions shall continue to be valid and enforceable. If a court finds that any provision of this Agreement is invalid or unenforceable, but that by limiting such provision it would become valid or enforceable, then such provision shall be deemed to be written, construed, and enforced as so limited.
8. WAIVER OF CONTRACTUAL RIGHT. The failure of either party to enforce any provision of this Agreement shall not be construed as a waiver or limitation of that party's right to subsequently enforce and compel strict compliance with every provision of this Agreement.
9. NOTICE. All correspondence such as purchase orders, statements, payments, notices, etc. shall be considered as so delivered to DP or SunnComm when sent by registered mail, postage prepaid, within (10) days' written notice thereof delivered to:
If for DP: Designer Products
6245 N. 24th Parkway, Suite 215
Phoenix, AZ 85016
If for SunnComm: SunnComm, Inc.
668 North 44th Street, Suite 220
Phoenix, Arizona 85008
12. APPLICABLE LAW. This Agreement shall be governed by the laws of the State of AZ.
IN WITNESS WHEROF, the parties hereto have executed this Purchase Agreement, DP by by causing it corporate seal to be hereunto affixed and duly attested, and SunnComm by causing it corporate seal to be hereunto affixed and duly attested, and these presents to be signed by its duly authorized officers, on the Effective Date first written above.
Equity Earning Corp. d.b.a. Designer Products
By: ____\s\______Dan B. Pool________ __05/26/00_______
Dan B. Pool Date
By___\s\______Peter Jacobs ____ __05/23/00______
Peter Jacobs Date
IN WITNESS WHEREOF, the parties have hereunto caused their names to be subscribed, and have executed this Agreement in duplicate, each copy of which shall for all purposes be deemed original.
Source: OneCLE Business Contracts.