Amended and Restated Patent Rights
Assignment/Consulting Agreement
This Amended and Restated Rights Assignment/Consulting Agreement (the
"Agreement") is made as of the 29th day of March, 1995, between Joseph F.
Stratton, an individual ("Licensor") and InteroAct Systems, Incorporated, a
North Carolina corporation ("Licensee").
WHEREAS, Licensor owns not less than forty-five percent (45%) of the
Inventions (as defined below);
WHEREAS, Licensor and Licensee are parties to that Patent Rights
Assignment/Consulting Agreement dated December 20, 1993 (the "Original
Agreement");
WHEREAS, the parties both desire to amend and restate the Original
Agreement and have agreed to enter into this Agreement to evidence certain
changes in their agreement with respect to Licensee's licensing of all of
Licensor's interest in the Inventions;
WHEREAS, this Agreement constitutes an amendment and restatement of the
original Agreement;
NOW, THEREFORE, in consideration of the mutual covenants and premises
hereinafter set forth, and for other good and valuable consideration, the
receipt of which is hereby acknowledged, the parties agree as follows:
1. DEFINITIONS. For purposes hereof:
(a) "Inventions" shall mean U.S. Patent Number 4,554,446 and
U.S. Patent Number 4,672,377, and any and all foreign patent applications and
patents corresponding to these U.S. Patents and any domestic or foreign
improvement applications or patents relating thereto in which Licensor is listed
as an inventor or in which he has or hereafter acquires any interest.
(b) "Licensed Products" shall mean any apparatus or process
which is covered by any claim contained in any of the applications or unexpired
patents included in the Inventions.
2. GRANT OF LICENSE. With respect to his interest in the
Inventions, Licensor hereby grants to Licensee an exclusive license under the
claims of the Inventions to manufacture, have manufactured, use, and sell
the Licensed Products throughout the world and the exclusive right to
sublicense others under the claims of the Inventions to manufacture, have
manufactured, use, and sell the Licensed Products throughout the world. This
grant is to the exclusion of all others, including the Licensor.
3. ROYALTY PAYMENTS. As compensation for the grant of license by
Licensor
to Licensee under paragraph 2 hereof, Licensee will pay to Licensor a
royalty of .8% of the gross collected revenues derived from the business of the
Licensee, only as such business pertains to the licensed Inventions, until the
Licensee shall have paid to Licensor the aggregate sum of $600,000, at which
time the license granted to Licensee under paragraph 2 hereof shall continue for
the term provided under paragraph 6 hereof but no additional royalty payments
will be due to Licensor from Licensee. A minimum royalty of $3,000 per month
will be paid by Licensee to Licensor, one-half payable on the 15th of each month
and one-half payable on the last day of each month, commencing March 31, 1995,
and continuing until the earlier to occur of (i) payment to Licensor by Licensee
of an aggregate of $600,000 in royalties hereunder or (ii) the license by
Licensor to Licensee under paragraph 2 hereof no longer being in effect, for
whatever reason. Any royalties due to Licensor under this Agreement shall be
payable by check mailed to Licensor at the following address: Joseph F.
Stratton, 845 NW Tenth Street, Corvallis, Oregon 97330, or such other address as
Licensor requests in writing delivered to Licensee at least thirty days prior to
the effective date of such change.
4. PROTECTION OF INVENTIONS.
(a) Licensor shall file or cause to be filed with and
prosecuted before the United States Patent and Trademark Office such patent
applications as requested by Licensee to protect the rights granted to Licensee
for the Inventions pursuant to this Agreement.
(b) Licensee may file or cause to be filed with and prosecuted
before foreign patent offices at its own expense, such patent foreign
applications as, in its sole discretion, it shall deem necessary to protect the
rights granted to Licensee for the Inventions pursuant to this Agreement and
Licensor shall cooperate therewith as requested by Licensee.
(c) Licensee may bring any action for patent infringement of
the Licensed Products during the term of this Agreement, in Licensee's name or
jointly with Licensor, as it shall deem necessary and proper to protect the
patent rights to the Licensed Products and Licensor shall cooperate therewith as
requested by Licensee.
5. WARRANTIES. Licensor warrants and represents to Licensee that: (i)
he is the owner of forty-five percent (45%) of the right, title, and interest in
the Inventions; (ii) that as of the date hereof he has received payment in full
of any amounts owed to him by Licensor under the Original Agreement or
otherwise; (iii) no breaches or defaults exist under the Original Agreement;
(iv) no rights of a third party (including patent rights) would be infringed by
Licensee's manufacture, use, or sale of any apparatus or method licensed
hereunder; and (v) none of his interests in the Inventions have been transferred
or assigned to any person or entity except as provided herein. Licensor shall
indemnify and defend Licensee against any liabilities, damages, costs and
expenses, including reasonable attorneys' fees and court costs, which Licensee
shall or may incur or suffer which arise out of or relate to the breach of any
violation of a warranty of Licensee set forth in this paragraph 5; excluding,
however, any costs or expenses incurred by Licensee with respect to any legal
action filed by Licensee against Licensor prior to the date hereof.
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6. TERM. This Agreement shall continue in full force and effect as long
as any patent application for any Invention is pending in any domestic or
foreign patent office or until the expiration of the last to expire of any
patent included in the Inventions. In no event shall the term of this Agreement
extend longer than the term of the last to expire, issued patent covering the
Licensed Products.
7. TERMINATION.
(a) Paragraph 6 above notwithstanding, if Licensee defaults by
failing to make payments to Licensor as herein provided for any period of sixty
(60) days, this Agreement and the license granted hereunder shall terminate upon
15 days prior written notice by Licensor to Licensee of such termination, during
which period, Licensee may cure said payment default.
(b) In the event that either of the patents for the Inventions
is found to be invalid for any reason, then Licensee shall be immediately
released from all of its obligations under this Agreement. Further, Licensee is
expressly permitted to continue in the operation of its business after such time
without incurring any financial obligation to the Licensor under this Agreement
whatsoever.
8. GENERAL PROVISIONS.
(a) This Agreement embodies all of the understandings and
obligations between the parties with respect to the subject matter hereof. The
terms of this Agreement may be modified only by the mutual written consent of
each party.
(b) No waiver of a breach of any term or provision of this
Agreement shall be construed or operate as a waiver of any other breach of the
terms or provisions of this Agreement.
(c) This Agreement shall be binding upon and inure to the
benefit of the parties hereto and their respective successors, assigns, heirs
and legal representatives.
(d) This Agreement shall be governed and construed in
accordance with the internal laws of the State of North Carolina, without regard
to conflict of law principles, and the parties consent to jurisdiction in said
state.
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IN WITNESS WHEREOF, the parties hereto have agreed and set their hands
by proper persons duly authorized to become effective upon the date first above
written.
LICENSEE:
InteroAct Systems, Incorporated
By: /s/ WILLIAM F. PENWELL
Title: President & CEO
LICENSOR:
/s/ JOSEPH F. STRATTON (SEAL)
Joseph F. Stratton
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