Exhibit 10.2
TRANSFER AGREEMENT
By and Between
MercTravel, Incorporated and
MercExchange, LLC
THIS AGREEMENT TO TRANSFER PATENT RIGHTS FOR THE ONLINE TRAVEL SECTOR,
(hereinafter the "Agreement") is entered into this 7th day of January, 2000 by
and between MercTravel, Incorporated, a Delaware corporation ("MercTravel"),
having a principal place of business at 114 N. Alfred Street, Alexandria, VA
22314 and MercExchange, LLC, ("MercExchange") a limited liability company under
Delaware law, having a principal place of business at 114 N. Alfred Street,
Alexandria, VA 22314.
RECITALS
WHEREAS, MercTravel is embarking on the development and industry initiative to
build and deploy Internet Markets and Auctions that employ the pending and
issued Subject Patents; and
WHEREAS, MercTravel agrees that patent protection provides an important
commercial advantage and agrees to consult and confer with MercExchange to
assure a tight nexus between the commercial embodiments of the aforesaid
Internet Markets and Auctions and the claims of the pending and issued Subject
Patents; and
WHEREAS, MercExchange desires to transfer rights in its pending and issued
Subject Patents for the online travel services industry sector subject to the
terms and conditions as set forth herein;
NOW, THEREFORE, in consideration of the promises and of the mutual covenants
contained herein, the parties hereby agree as follows:
ARTICLE I
TRANSFER OF RIGHTS IN THE ONLINE TRAVEL SECTOR
1.1 Transfer. MercExchange hereby grants to MercTravel, during the term of this
Agreement, an exclusive License Grant to make, use and sell the inventions as
disclosed and claimed in the pending and issued Subject Patents within the field
of use of the Online Travel Sector.
1.2 Nexus. MercTravel shall use best efforts to develop Internet Markets and
Auctions that employ the pending and issued Subject Patents for use in the
Online Travel Sector. MercTravel shall confer with MercExchange to assure a
tight nexus between the commercial embodiment of the aforesaid Internet Markets
and Auctions with the claims of the pending and issued Subject Patents.
1.3 Legal Fees. MercTravel shall pay all reasonable legal and administrative
fees associated with the continuing prosecution and maintenance of the Subject
Patents before the U.S. Patent and Trademark Office. MercTravel shall also pay
all legal, administrative and filing fees associated with any Interference
Proceeding before the U.S. Patent and Trademark Office and any related
litigation in Federal or State Court. The parties shall confer on strategies
concerning the prosecution, enforcement and exploitation of the Subject Patents.
1.4 Stock. MercTravel hereby grants 1,000 shares of MercTravel, which is 100% of
its issued and outstanding shares, to MercExchange.
ARTICLE II
NON-MONETARY REMUNERATION
If the Subject Patents are licensed to third parties and MercExchange receives
non-monetary remuneration for any said license, including but not limited to,
web
easements, discounted or free advertisement and linking agreements, then
MercTravel shall purchase in cash or equity said non-monetary remunerative
benefit from MercExchange at one-third the fair market value for said
non-monetary remunerate benefit within 60 days of the written offer of said
non-monetary remuneration from MercExchange to MercTravel.
ARTICLE III
ENFORCEMENT
3.1 Right to Enforce Within The Online Travel Sector. MercExchange hereby
assigns a non-exclusive right to MercTravel to enforce the Subject Patents, in
its own name, and at its own expense, in the Online Travel Sector. MercExchange
agrees to cooperate and join in said enforcement action if deemed a necessary
party and enter into all further agreements necessary to enforce the Subject
Patents. MercTravel shall reimburse MercExchange for expenses incurred by
MercExchange under this section. Nothing in this Article shall confer any rights
on MercTravel that prevents MercExchange from enforcing or continuing to enforce
the Subject Patents in the name of MercExchange. If any right granted in this
Article is construed so as to prevent MercExchange from enforcing the subject
Patents in the name of MercExchange against any third party then this Article
shall be null and void.
ARTICLE IV
DEFINITIONS
4.1 Definitions. For the purpose of this Agreement only, the following terms
shall have the meanings indicated:
4.1.1 The term "Subject Patents" means the following patents, patent
applications and all continuing patent applications that seek priority
therefrom:
A. U.S. Patent Application No. 08/427,820, Entitled:
"Consignment Nodes"
B. U.S. Patent Application No. 08/554,704, Now U.S. Patent No.
5,845,265, Entitled: "Consignment Nodes"
C. U.S. Patent Application No. 09/203,286 (Petition for
Interference with U.S. Patent No. 5,794,207) Entitled:
"Consignment Nodes"
D. U.S. Patent Application No. 09/166,779, Entitled "Method and
Apparatus for Facilitate Internet Commerce with Binding Offers
to Sell and Binding Counter-Offers to Buy in an Electronic
Market"
E. U.S. Patent Application No. 09/253,014, Entitled: "Method and
Apparatus for Facilitating Electronic Commerce Through
Internet Auctions"
F. U.S. Patent Application No.09/253,021, Entitled: "Method and
Apparatus for Facilitating Internet Commerce Through
Inter-networked Markets and Auctions"
G. U.S. Patent Application No.09/253,015, Entitled: "Methods
and Apparatus for Automatically Distributing Internet
Advertising"
H. U.S. Patent Application No. 09/253,057, Entitled: "Method and
Apparatus for Facilitating Electronic Commerce Through
Two-Tiered Electronic Markets and Auctions"
I. U.S. Patent Application No. 09/264,573, Entitled: "Method
and Apparatus for Using Search Agents to Search Plurality of
Markets for Items"
4.1.2 The term "Online Travel Sector" means the right to make and use the
inventions as claimed and disclosed in the Subject Patents relating to the
Internet Market and Auctions in the travel service industry, including without
limitation, car rental, hotel booking, airline tickets, cruise, rail and travel
packages.
4.1.3 The term "License Grant" means the transfer of patent rights including the
right to make and use and sub-license the inventions as claimed and disclosed in
the Subject Patents, subject to this Agreement, in the Online Travel Sector.
4.1.4 The "Term" of this Agreement, unless earlier terminated as provided under
this Agreement, shall remain in full force and effect until the last claim of
any patent included in the Subject Patents expires.
ARTICLE V
OTHER PROVISIONS
5.1 Termination for Cause. If MercTravel shall materially breach any of its
obligations pursuant to this Agreement and shall fail to adequately correct such
breach within two (2) months from the effective date of the first written notice
to MercTravel, MercExchange may terminate License Grant pursuant to this Article
by written notice. The termination shall immediately cause the License Grant to
revert to MercExchange with no further step or action at law or equity required
by MercExchange
5.2 No Joint Venture. The relationship between the parties shall be limited to
the performance of their respective obligations as set forth in this Agreement.
Nothing in this Agreement shall be construed to create a partnership or joint
venture between the parties or to authorize either party to act as general agent
for the other party, or to permit either party to bind or otherwise bind the
other party. No party shall be liable for any of the actions, omissions, or
indebtedness of the other party.
5.3 Assignability. Except as otherwise provided herein, the rights granted by
each party to the other in this Agreement are personal to each party and may not
be assigned or otherwise transferred by one party without the prior written
consent of the other party. In the event of the sale and dissolution of
MercTravel or of all the outstanding shares of MercTravel, the acquiring party
shall take all rights, duties and obligations of this Agreement. The acquiring
party shall have no further rights to sell or assign this Agreement without the
prior written consent of MercExchange.
5.4 No Implied License. Nothing contained in this Agreement shall be construed
as granting by implication, estoppel or otherwise, any licenses, warranties
(implied in fact or law) or rights other than those expressly granted herein, or
creating any obligation other than those expressly granted herein.
5.5 No Warranty. Nothing in this Agreement shall be construed as a warranty or
representation by MercExchange as to the validity or scope of the Subject
Patents or that the exercise of the license rights under the Subject Patents
will not infringe upon the rights of any Third Party.
5.6 No Indemnification. MercExchange does not indemnify, warrant or otherwise
guarantee or hold harmless MercTravel from enforcement and/or legal action
brought by any Third Party. MercExchange make no warranties that any products
made under this Agreement are materially fit for their purpose or comport with
any other provision of the Uniform Commercial Code.
5.7 Notification. The parties shall notify each other in writing at the
following address which may be amended from time to time upon written
notification:
MercExchange:
Thomas G. Woolston
Managing Member
MercExchange, LLC
114 N. Alfred Street
Alexandria, VA 22314
MercTravel:
Thomas G. Woolston
President
MercTravel, Incorporated
114 N. Alfred Street
Alexandria, VA 22314
5.8 Controlling Law. This Agreement shall be construed and enforced in
accordance with, and shall be governed by the laws of the Commonwealth of
Virginia without giving effect to the provision, policies, or principles thereof
relating to choice or conflict of laws.
5.9 Severability. Any provision of this Agreement that is illegal, invalid or
unenforceable in any jurisdiction shall, as to such jurisdiction, be ineffective
to the extent of such illegality, invalidity or unenforceability without
invalidating the remaining portions hereof or affecting the validity or
enforceability of such provisions in any other jurisdiction.
5.10 Waiver. The failure of any party to enforce any of the provisions of this
Agreement, or of any rights with respect thereto, shall not be considered a
waiver thereof or in any way affect the validity of this Agreement. The failure
by any party hereto to enforce any of said provisions, rights or elections shall
not prejudice said party from later enforcing or exercising the same or any
other provisions, rights, of elections which it may have under this Agreement.
5.11 Integration. This Agreement contains the entire and only understanding
between the parties with respect to the subject matter hereof, and supersedes
all prior agreement and understandings, whether oral or written, with respect
thereto. No modification or wavier of this Agreement or any of its provisions
shall be binding unless in writing and signed by a duly authorized
representative of each of the parties hereto.
5.12 Bankruptcy or liquidation. The License Grant hereunder shall immediately
revert to MercExchange if MercTravel seeks protection under Bankruptcy laws or
is subject to liquidation under the laws of the United States.
5.13 Headings. Headings and section titles are for organization purposes only
and shall have no effect on the interpretation of this Agreement.
5.14 Legal Fees. All fees payable hereunder, such as legal fees for continuing
patent prosecution, shall be tendered by MercTravel within thirty (30) days of
receipt of notice from MercExchange.
5.15 Remedy for Breach. If MercTravel materially breaches any condition of this
Agreement and does not cure said breach within two (2) months notice of material
breach, then the License Grant of patent rights to the online travel sector
granted hereunder shall immediately become null and void and shall immediately
revert to MercExchange, or its lawful successor in interest.
5.16 This Agreement shall be binding to all parties and may be executed in part
by facsimile.
This Agreement is entered into the date and year first above written.
MercTravel, Incorporated
By /s/ Thomas G. Woolston
Thomas G. Woolston
President & Chief Executive
Officer
MercExchange, LLC
By /s/ Thomas G. Woolston
Thomas G. Woolston
Managing Member