- 1 COVER PAGE
- 2 ASSIGNMENT OF INTELLECTUAL PROPERTY
- 3 REVERSION
- 4 CONTINUING RIGHTS OF ASSIGNOR
- 5 ASSIGNOR’S REPRESENTATIONS AND WARRANTIES
- 6 DOCUMENTATION
- 7 SUCCESSORS AND ASSIGNS
- 8 NO IMPLIED WAIVER
- 9 NOTICE
- 10 GOVERNING LAW
- 11 COUNTERPARTS/ELECTRONIC SIGNATURES
- 12 ENTIRE AGREEMENT
- 13 HEADINGS
This Intellectual Property Sale Agreement (the "Agreement" or "Intellectual Property Sale Agreement") is made and entered into as of Date 26/Jul/2021 by and between Name Of Intellectual Property Seller, a State corporation, with a place of business at Address (individually and collectively referred to as the "Assignor") and Name Of Intellectual Property Buyer, a State corporation, with a place of business at Address (individually and collectively referred to as the "Assignor The Assignor and Assignee may be referred to as a "Party" individually or as a "Party" collectively.
1. The Assignor wishes to assign and transfer to the Assignee all of its rights, titles, and interests in and to the "Intellectual Property" (as defined below); and
2. The Assignee wants to take over the Assignor's entire right, title, and interest in and to the Intellectual Property; and
3. Each Party has the legal authority to enter into this Agreement and is capable of doing so.
NOW, THEREFORE, the Parties agree as follows in consideration of the reciprocal covenants and promises set forth herein, as well as for other good and useful consideration, the receipt and sufficiency of which is thus acknowledged:
1. ASSIGNMENT OF INTELLECTUAL PROPERTY.
1.1 The Assignor sells, transfers, conveys, assigns, and delivers to the Assignee, effective as of the Effective Date, and the Assignee accepts and assumes all right, title, and interest of the Assignor in and to the following:
1.2 the intellectual property included in Exhibit A attached to this document;
1.3 all antecedents, portions, and works in progress relating to it, as well as all innovations, authorship works, mask works, technology, information, know-how, materials, and tools relating to its development, support, or maintenance;
1.4 all copyrights, patents, trade secrets, trademarks, mask works rights, and other intellectual property rights, as well as all business, contract, and goodwill rights in, embodied in, used to develop, or related to any of the foregoing; and
1.5 any registrations and applications for registrations of the aforesaid (1.a.i, 1.a.ii, 1.a.iii, and 1.a.iv are collectively referred to as "Intellectual Property" throughout).
2.1 In exchange for the Intellectual Property's assignment and the Assignor's representations and warranties, the Assignee promises to commercially exploit the Intellectual Property and to pay future royalties to Assignor equal to 5% (5%) of any and all revenues received by Assignee related to exploitation of the Intellectual Property, up to a maximum aggregate of. Assignor shall receive royalty payments on a semi-annual basis based on total revenues connected to Assignee's commercial use of the Intellectual Property. For the avoidance of dispute, any Assignee revenue connected to the Intellectual Property shall be referred to as "revenues relating to the Intellectual Property."
2.2 At any time, the Assignee may make contributions towards the Total Royalty Obligation from other funds.
Unless Assignee has otherwise made a full and complete payment of the Total Royalty Obligation, all right, title, and interest in and to the Intellectual Property may revert to Assignor at Assignor's option if Assignee fails to meet the revenue milestones related to exploitation of the Intellectual Property as set forth in the table below (the "Revenue Milestones").
|>$500,000||Within two (2) years of this Intellectual Property Sale Agreement's Effective Date
|>$1,500,000||Within two (3) years of this Intellectual Property Sale Agreement's Effective Date|
|<$3,000,000||Within two (4) years of this Intellectual Property Sale Agreement's Effective Date
|>$5,000,000||Within two (5) years of this Intellectual Property Sale Agreement's Effective Date|
Assignor is granted a royalty-free, non-exclusive, non-transferable, permanent, and irrevocable licence to use the Intellectual Property to the amount required for Assignor to perform its obligations.
To the Assignee, the Assignor represents and warrants that it:
- owns full right, title, and interest in and to the Intellectual Property as of the time the Intellectual Property was assigned to Assignee in accordance with Section 1;
- has not agreed to assign, transfer, licence, pledge, or otherwise encumber the Intellectual Property, or any part of it; has not assigned, transferred, licenced, pledged, or otherwise encumbered the Intellectual Property, or any part of it;
- has complete capacity and authority to engage into this Agreement and make the Intellectual Property assignment described in Section 1;
- is not aware of any Intellectual Property breach, infringement, or misappropriation of any third party's rights (or any allegation thereof);
- is unaware of any required third-party consents, assignments, or licences to carry out this Agreement; and
- When conceiving, developing, or otherwise executing any action with respect to the Intellectual Property, he was not acting in the course of his employment with any third party.
If any facts or circumstances occur that would cause any of the representations in this Agreement to be erroneous, the Assignor agrees to immediately notify the Assignee in writing.
Following a request from the Assignee, the Assignor will provide the Assignee with a complete copy of all documentation (in any format) relating to the Intellectual Property for the Assignee's own use, to meet the Assignee's record-keeping requirements, or to allow the Assignee to assert its rights granted by Assignor pursuant to this Agreement as soon as reasonably possible. On the Assignee's request, the Assignor will also:
- execute and deliver, or cause to be executed and delivered, to the Assignee any additional papers, including any separate Intellectual Property assignments, that are reasonably necessary to record the assignment in the United States and around the world;
- typically take all other legal steps that are reasonable and necessary to record the assignment in the United States and around the world; and
- execute any reasonable and required legal papers for Assignee to obtain a patent, copyright, or trademark on any of the Intellectual Property, as well as any continuing, divisional, or reissue applications thereof.
All references to the Parties in this Agreement are deemed to include, as appropriate, their respective successors and assigns. The provisions of this Agreement will be binding on the Parties' heirs and assigns and will inure to their advantage.
The failure of either Party to insist on strict execution of any promise or obligation under this Agreement, regardless of how long such failure persists, shall not be construed as a waiver of that Party's right to require strict compliance in the future. Any stated or implied permission or waiver to or of any breach or default in the performance of any obligation under this Agreement does not constitute a consent or waiver to or of any other breach or default in the same or any other duty.
Any notice or other communication required or permitted by this Agreement to be issued to a Party hereto must be in writing and delivered to the respective Party in person, by overnight courier, or by mail (registered or certified mail, postage prepaid, return receipt requested) as follows:
If to the Assignor:
If to the Assignee:
The laws of the State of State will govern this Agreement. The Parties agree to reimburse the prevailing Party's reasonable attorneys' fees, court costs, and all other expenses, whether or not taxable by the court as costs, in addition to any other relief to which the prevailing Party may be entitled, in the event that litigation results from or arises out of this Agreement or its performance.
This Agreement may be signed in one or more counterparts, each of which will be treated as an original but will all be treated as one and the same document. The use of a facsimile, e-mail or other electronic media shall have the same force and effect as an original signature for the purposes of this Agreement.
Each provision of this Agreement will be interpreted to be effective and valid under applicable law whenever possible, but if any provision of this Agreement is found to be invalid, illegal, or unenforceable in any way under any applicable law or rule in any jurisdiction, such invalidity, illegality, or unenforceability will have no bearing on any other provision or jurisdiction.
This Agreement is the Parties' final, complete, and exclusive declaration of their agreement with respect to the subject matter hereof, and it replaces all prior and contemporaneous agreements and understandings, both written and oral, between them.
The headings in this Agreement are for reference only and are not to be used to infer interpretation or intent.
IN WITNESS WHEREOF, the Parties have signed this Agreement as of the above-mentioned date.