Exhibit 10.4
ASSIGNMENT AND ASSUMPTION OF INTELLECTUAL PROPERTY
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This Assignment and Assumption of Intellectual Property Agreement
("Agreement") is made and entered into as of August 29, 2005 (the "Execution
Date") by and between Delk Holdings, Inc., a Texas corporation ("Assignor"), and
Advanced Materials Group, Inc., a Nevada corporation ("Assignee").
WHEREAS, Assignor is the owner, licensee, or otherwise has an interest in,
the intellectual property assets and intellectual property rights relating
thereto, described on Schedule A attached hereto (collectively, the "IP
Assets");
WHEREAS, Assignor is desirous of assigning and transferring its rights to
the IP Assets to Assignee, and Assignee is desirous of acquiring such rights of
Assignor in, to and under said IP Assets; and
WHEREAS, Assignor is a party to that certain Separation and Release
Agreement by and between the Assignor, Robert Delk, Delk Partners, Ltd, the
Assignee, and certain directors, officers, and stockholders of the Assignee (the
"Release Agreement").
NOW, THEREFORE, the parties agree as follows:
1. For good and valuable consideration, receipt of which is hereby
acknowledged, Assignor hereby sells, assigns and transfers to Assignee on and as
of the date on which the Release Agreement becomes effective under the terms
thereof (the "Effective Date") its entire right, title and interest in and to
the IP Assets, the same to be held and enjoyed by Assignee for its own use and
enjoyment, to the end of the term or terms for which said intellectual property
rights are or may be granted, renewed or reissued, as fully and entirely as the
same would have been held and enjoyed by Assignor, if this assignment had not
been made.
2. Assignee hereby aggress to assume all of the duties and obligations of
Assignor related to the IP Assets, to discharge such duties and obligations from
the Effective Date forward, including, without limitation, those duties and
obligations, (which include any and all accrued and unpaid minimum royalty
payments, whether or not due on or before the Effective Date) under the
agreements set forth on Schedule B (the "IP Agreements").
3. Assignee further agrees to indemnify and hold Assignor harmless from and
against any claims arising out of Assignor's violation of or failure to assume
and discharge its duties and obligations with respect to the IP Assets and the
IP Agreements, as provided for in paragraph 2 above.
4. ASSIGNOR MAKES NO WARRANTY OR GUARANTEE THAT THE IP ASSETS ARE NOT NOW
INVOLVED OR WILL NOT IN THE FUTURE BE INVOLVED IN ANY INTERFERENCE, REISSUE,
REEXAMINATION OR OPPOSITION PROCEEDING; DOES NOT NOW INTERFERE OR WILL NOT IN
THE FUTURE INTERFERE WITH A PATENT OR PATENT APPLICATION OF ANY THIRD PARTY; OR
IS NOT NOW, OR WILL NOT IN THE FUTURE BE, INFRINGED, CHALLENGED OR THREATENED.
ASSIGNOR HEREBY DISCLAIMS ALL WARRANTIES, EXPRESS OR IMPLIED, INCLUDING
WARRANTIES OR CONDITIONS OF MERCHANTABILITY, SATISFACTORY QUALITY, AND FITNESS
FOR A PARTICULAR PURPOSE, OR IMPLIED WARRANTIES ARISING FROM COURSE OF
PERFORMANCE, COURSE OF DEALING OR USAGE OF TRADE.
5. ASSIGNEE AGREES TO ACCEPT THIS ASSIGNMENT "AS IS" WITH ALL FAULTS,
EXCEPTIONS AND RISKS ASSOCIATED THEREWITH.
6. Assignor assigns no rights to Assignee other than those transferred
hereunder, and Assignor retains any and all right, title and interest to any
patents, copyrights or intellectual property of any kind not expressly conveyed
herein.
7. This Agreement shall be construed in accordance with and governed by the
laws of the State of Texas, without regard to the principles of conflicts of
laws.
[SIGNATURE PAGE FOLLOWS]
IN WITNESS WHEREOF, the parties have executed this Agreement as of the
Execution Date.
ASSIGNOR: ASSIGNEE
DELK HOLDINGS, INC. ADVANCED MATERIALS GROUP, INC.
By: /s Robert Delk By: /s William G. Mortensen
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Name: Robert Delk Name: William G. Mortensen
Title: President Title: President
By: /s Michael L. Bowen
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Name: Michael L. Bowen
Title: Executive Vice President
SCHEDULE A
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THE IP ASSETS
Description of Product Federal/State IP Registration Info.
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UnderBare Adhesive Panty 1) US Patent Application 10/267,325,
filed 10-8-02 by Inventor Connors, and
licensed to Delk Holdings, Inc.
2) US Patent No. 6,681,407, issued
January 27, 2004 to Inventor Martz and
Licensed to PCI originally, then to Delk
Holdings, Inc. on February 4, 2005.
3) Sales and Manufacturing Agreement
between PCI and Delk Holdings, Inc.
establishing a joint venture between the
two Inventors.
Ice Pack (SINGLE USE ICE PACK) US Provisional Patent Application Serial
No. 60/602,591 filed August 18, 2004 by
Inventor Bowen. Owned by Delk Holdings.
Tube Holder (ADHESIVE) US Provisional Patent Application Serial
No. 60/602,403 Filed August 18, 2004 by
Inventor Bowen. Owned by Delk Holdings.
Tube Holder (VELCRO) US Patent Application Serial No.
10/701,589 Filed November 5, 2003 by
Inventor Bowen, from a Provisional
patent application filed in 2002. Owned
by Delk Holdings.
Suction Mat US Patent Application 60/603,740 filed
08-23-2004 by Inventor Bowen.
Tool Holder US Patent Application Serial No.
60/623,924, filed November 1, 2004, by
Inventor Bowen
Bohmfalk Surgical Mask Patent Numbers 5,694,972 and 6,237,596*
Yavitz "Breate Right" Surgical Mask Patent Number 5,803,075*
Yavitz "Dot Your Eyes" Contact
Applicator Patent Numbers 5,538,301 and 5,732,990*
Yavitz Surgeon's Cuff Patent Number 5,572,743*
*The Company acknowledges that the license agreements between these patent
holders and Delk Holdings has lapsed as of the Execution Date, and therefore
Delk Holdings has no interests or rights in these patents and products
notwithstanding their inclusion on this exhibit.
SCHEDULE B
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IP AGREEMENTS