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  Technology Assignment Agreement

Document Templates


Technology Assignment Agreement
2.0.0  Technology Assignment Agreement for founders as consideration for founder stock
Public   Published   master   master  (owner)
Permalink: https://valcu.co/users/master/doc_templates/technology-assignment-agreement-v2_0_0
 Parent Document Template
Created: March 4, 2017 1:47:38 EST | Last modified: March 4, 2017 1:57:59 EST
 

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Effective date of the agreement

Name of the developer

Exact Legal Name of the Company

State where company incorporated / organized

Type of entity as incorporated / organized

Street address of the developer

City, State and Zip (and Country) address of the developer

State law to govern the agreement

Location of state and federal courts where all claims must be brought


Is this intended as a tax-deferred Section 351 transaction (please seek advice of your counsel)?

Describe and clearly identify the business/technology being assigned to the company.


TECHNOLOGY ASSIGNMENT AGREEMENT
This Agreement is entered as of v_field_effective_date between v_field_company_name, a v_field_org_state v_field_entity_type (the “Company”), and v_field_developer_name (“Developer”). v_field_s351_applicability The assignment and stock issuance hereunder is intended to qualify for tax-free treatment under Internal Revenue Code Section 351. v_field_end
1. Assignment. Developer hereby assigns to the Company exclusively throughout the world all right, title and interest (whether or not now existing) in the (i) subject matter referred to in Exhibit A (“Technology”), (ii) all precursors, portions and work in progress with respect thereto and all inventions, works of authorship, mask works, technology, information, know-how, materials and tools relating thereto or to the development, production, use, support or maintenance thereof and (iii) all copyrights, patent rights, trade secret rights, trademark rights, mask works rights, sui generis database rights and other intellectual property rights and all business, contract rights and goodwill in, incorporated or embodied in, used to develop or produce or use, or related to any of the foregoing ((i), (ii) and (iii) are collectively “Intellectual Property”).
2. Compensation. The Company agrees to provide to Developer on the date of this Agreement the consideration set forth in, and pursuant to, the provisions of a Stock Purchase Agreement of even date herewith between the Company and Developer. Such consideration shall be the only consideration required of the Company with respect to the subject matter of this Agreement.
3. Further Assurances; Moral Rights; Competition; Marketing.
3.1 Developer agrees to assist the Company in every proper way to evidence, record and perfect the Section 1 assignment and to apply for and obtain recordation of and from time to time secure, enforce, maintain and defend the assigned rights. If the Company is unable for any reason whatsoever to secure the Developer’s signature to any document requested by the Company under this Section 3.1, Developer hereby irrevocably designates and appoints the Company and its duly authorized officers and agents as Developer’s agents and attorneys-in-fact, coupled with an interest and with full power of substitution, to act for and on Developer’s behalf and instead of Developer, to execute and file any such document or documents and to do all other lawfully permitted acts to further the purposes of the foregoing with the same legal force and effect as if executed by Developer.
3.2 To the extent allowed by law, Section 1 includes all rights of paternity, integrity, disclosure and withdrawal and any other rights that may be known as or referred to as “moral rights,” “artist’s rights,” “droit moral,” or the like (collectively “Moral Rights”). To the extent Developer retains any such Moral Rights under applicable law, Developer hereby ratifies and consents to, and provides all necessary ratifications of and consents to, any action that may be taken with respect to such Moral Rights by, or authorized by, the Company; Developer agrees not to assert any Moral Rights with respect thereto. Developer will confirm any such ratifications, consents and agreements from time to time as requested by the Company.
4. Confidential Information. Developer will not use or disclose anything assigned to the Company hereunder or any other technical or business information or plans of the Company, except to the extent Developer (i) can document that it is generally available (through no fault of Developer) for use and disclosure by the public without any charge, license or restriction, or (ii) is permitted to use or disclose such information or plans pursuant to the Proprietary Information and Inventions Agreement by and between Developer and the Company of even date herewith. Developer recognizes and agrees that there is no adequate remedy at law for a breach of this Section 4, that such a breach would irreparably harm the Company and that the Company is entitled to equitable relief (including, without limitation, injunctive relief) with respect to any such breach or potential breach in addition to any other remedies and without any requirement to post bond.
5. Warranty. Developer represents and warrants to the Company that the Developer (i) was the sole owner (other than the Company) of all rights, title and interest in the Intellectual Property and the Technology, (ii) has not assigned, transferred, licensed, pledged or otherwise encumbered any Intellectual Property or the Technology or agreed to do so, (iii) has full power and authority to enter into this Agreement and to make the assignment as provided in Section 1, (iv) is not aware of any violation, infringement or misappropriation of any third party’s rights (or any claim thereof) by the Intellectual Property or the Technology, (v) was not acting within the scope of employment by any third party when conceiving, creating or otherwise performing any activity with respect to anything purportedly assigned in Section 1 and (vi) is not aware of any questions or challenges with respect to the patentability or validity of any claims of any existing patents or patent applications relating to the Intellectual Property.
6. Miscellaneous. This Agreement is not assignable or transferable by Developer without the prior written consent of the Company; any attempt to do so shall be void. Any notice, report, approval or consent required or permitted hereunder shall be in writing and will be deemed to have been duly given if delivered personally or mailed by first-class, registered or certified U.S. mail, postage prepaid to the respective addresses of the parties as set forth below (or such other address as a party may designate by ten (10) days’ notice). No failure to exercise, and no delay in exercising, on the part of either party, any privilege, any power or any rights hereunder will operate as a waiver thereof, nor will any single or partial exercise of any right or power hereunder preclude further exercise of any other right hereunder. If any provision of this Agreement shall be adjudged by any court of competent jurisdiction to be unenforceable or invalid, that provision shall be limited or eliminated to the minimum extent necessary so that this Agreement shall otherwise remain in full force and effect and enforceable. This Agreement shall be deemed to have been made in, and shall be construed pursuant to the laws of the State of v_field_governing_law_state and the United States without regard to conflicts of laws provisions thereof. The prevailing party in any action to enforce this Agreement shall be entitled to recover costs and expenses including, without limitation, attorneys’ fees. The terms of this Agreement are confidential to the Company and no press release or other written or oral disclosure of any nature regarding the compensation terms of this Agreement shall be made by Developer without the Company’s prior written approval; however, approval for such disclosure shall be deemed given to the extent such disclosure is required to comply with governmental rules. Any waivers or amendments shall be effective only if made in writing and signed by a representative of the respective parties authorized to bind the parties. Both parties agree that this Agreement is the complete and exclusive statement of the mutual understanding of the parties and supersedes and cancels all previous written and oral agreements and communications relating to the subject matter of this Agreement.

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IN WITNESS WHEREOF, the parties have executed this Technology Assignment Agreement on the day and year first indicated above.
COMPANY:
V_FIELD_COMPANY_NAME_UPCASE
v_sig_company_chained_titled
v_field_else

By: ______________________________
Name: ____________________________
Title: _____________________________
v_field_end
Address: v_field_company_street_address
v_field_company_city_state_zip


DEVELOPER:
v_field_developer_name_upcase
v_sig_developer_chained_titled
v_field_else

By: ______________________________
Name: ____________________________
Title: _____________________________
v_field_end
Address: v_field_developer_street_address
v_field_developer_city_state_zip


EXHIBIT A
TO TECHNOLOGY ASSIGNMENT AGREEMENT
v_field_technology_description
v_field_doc_template_id | v_field_file_store_id
  • TECHNOLOGY ASSIGNMENT AGREEMENT
  • This Agreement is entered as of v_field_effective_date between v_field_company_name, a v_field_org_state v_field_entity_type (the “Company”), and v_field_developer_name (“Developer”). v_field_s351_applicability The assignment and stock issuance hereunder is intended to qualify for tax-free treatment under Internal Revenue Code Section 351. v_field_end
  • 1. Assignment. Developer hereby assigns to the Company exclusively throughout the world all right, title and interest (whether or not now existing) in the (i) subject matter referred to in Exhibit A (“Technology”), (ii) all precursors, portions and work in progress with respect thereto and all inventions, works of authorship, mask works, technology, information, know-how, materials and tools relating thereto or to the development, production, use, support or maintenance thereof and (iii) all copyrights, patent rights, trade secret rights, trademark rights, mask works rights, sui generis database rights and other intellectual property rights and all business, contract rights and goodwill in, incorporated or embodied in, used to develop or produce or use, or related to any of the foregoing ((i), (ii) and (iii) are collectively “Intellectual Property”).
  • 2. Compensation. The Company agrees to provide to Developer on the date of this Agreement the consideration set forth in, and pursuant to, the provisions of a Stock Purchase Agreement of even date herewith between the Company and Developer. Such consideration shall be the only consideration required of the Company with respect to the subject matter of this Agreement.
  • 3. Further Assurances; Moral Rights; Competition; Marketing.
  • 3.1 Developer agrees to assist the Company in every proper way to evidence, record and perfect the Section 1 assignment and to apply for and obtain recordation of and from time to time secure, enforce, maintain and defend the assigned rights. If the Company is unable for any reason whatsoever to secure the Developer’s signature to any document requested by the Company under this Section 3.1, Developer hereby irrevocably designates and appoints the Company and its duly authorized officers and agents as Developer’s agents and attorneys-in-fact, coupled with an interest and with full power of substitution, to act for and on Developer’s behalf and instead of Developer, to execute and file any such document or documents and to do all other lawfully permitted acts to further the purposes of the foregoing with the same legal force and effect as if executed by Developer.
  • 3.2 To the extent allowed by law, Section 1 includes all rights of paternity, integrity, disclosure and withdrawal and any other rights that may be known as or referred to as “moral rights,” “artist’s rights,” “droit moral,” or the like (collectively “Moral Rights”). To the extent Developer retains any such Moral Rights under applicable law, Developer hereby ratifies and consents to, and provides all necessary ratifications of and consents to, any action that may be taken with respect to such Moral Rights by, or authorized by, the Company; Developer agrees not to assert any Moral Rights with respect thereto. Developer will confirm any such ratifications, consents and agreements from time to time as requested by the Company.
  • 4. Confidential Information. Developer will not use or disclose anything assigned to the Company hereunder or any other technical or business information or plans of the Company, except to the extent Developer (i) can document that it is generally available (through no fault of Developer) for use and disclosure by the public without any charge, license or restriction, or (ii) is permitted to use or disclose such information or plans pursuant to the Proprietary Information and Inventions Agreement by and between Developer and the Company of even date herewith. Developer recognizes and agrees that there is no adequate remedy at law for a breach of this Section 4, that such a breach would irreparably harm the Company and that the Company is entitled to equitable relief (including, without limitation, injunctive relief) with respect to any such breach or potential breach in addition to any other remedies and without any requirement to post bond.
  • 5. Warranty. Developer represents and warrants to the Company that the Developer (i) was the sole owner (other than the Company) of all rights, title and interest in the Intellectual Property and the Technology, (ii) has not assigned, transferred, licensed, pledged or otherwise encumbered any Intellectual Property or the Technology or agreed to do so, (iii) has full power and authority to enter into this Agreement and to make the assignment as provided in Section 1, (iv) is not aware of any violation, infringement or misappropriation of any third party’s rights (or any claim thereof) by the Intellectual Property or the Technology, (v) was not acting within the scope of employment by any third party when conceiving, creating or otherwise performing any activity with respect to anything purportedly assigned in Section 1 and (vi) is not aware of any questions or challenges with respect to the patentability or validity of any claims of any existing patents or patent applications relating to the Intellectual Property.
  • 6. Miscellaneous. This Agreement is not assignable or transferable by Developer without the prior written consent of the Company; any attempt to do so shall be void. Any notice, report, approval or consent required or permitted hereunder shall be in writing and will be deemed to have been duly given if delivered personally or mailed by first-class, registered or certified U.S. mail, postage prepaid to the respective addresses of the parties as set forth below (or such other address as a party may designate by ten (10) days’ notice). No failure to exercise, and no delay in exercising, on the part of either party, any privilege, any power or any rights hereunder will operate as a waiver thereof, nor will any single or partial exercise of any right or power hereunder preclude further exercise of any other right hereunder. If any provision of this Agreement shall be adjudged by any court of competent jurisdiction to be unenforceable or invalid, that provision shall be limited or eliminated to the minimum extent necessary so that this Agreement shall otherwise remain in full force and effect and enforceable. This Agreement shall be deemed to have been made in, and shall be construed pursuant to the laws of the State of v_field_governing_law_state and the United States without regard to conflicts of laws provisions thereof. The prevailing party in any action to enforce this Agreement shall be entitled to recover costs and expenses including, without limitation, attorneys’ fees. The terms of this Agreement are confidential to the Company and no press release or other written or oral disclosure of any nature regarding the compensation terms of this Agreement shall be made by Developer without the Company’s prior written approval; however, approval for such disclosure shall be deemed given to the extent such disclosure is required to comply with governmental rules. Any waivers or amendments shall be effective only if made in writing and signed by a representative of the respective parties authorized to bind the parties. Both parties agree that this Agreement is the complete and exclusive statement of the mutual understanding of the parties and supersedes and cancels all previous written and oral agreements and communications relating to the subject matter of this Agreement.
  • * * * * *
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  • v_field_doc_template_id | v_field_file_store_id
  • IN WITNESS WHEREOF, the parties have executed this Technology Assignment Agreement on the day and year first indicated above.
  • COMPANY:
  • V_FIELD_COMPANY_NAME_UPCASE
  • v_sig_company_chained_titled
  • v_field_else
  • By: ______________________________
  • Name: ____________________________
  • Title: _____________________________
  • By: ______________________________
  • Name: ____________________________
  • Title: _____________________________
  • v_field_end
  • Address: v_field_company_street_address
  • Address: v_field_company_street_address
  • v_field_company_city_state_zip
  • DEVELOPER:
  • v_field_developer_name_upcase
  • v_sig_developer_chained_titled
  • v_field_else
  • By: ______________________________
  • Name: ____________________________
  • Title: _____________________________
  • By: ______________________________
  • Name: ____________________________
  • Title: _____________________________
  • v_field_end
  • Address: v_field_developer_street_address
  • Address: v_field_developer_street_address
  • v_field_developer_city_state_zip
  • EXHIBIT A
  • TO TECHNOLOGY ASSIGNMENT AGREEMENT
  • v_field_technology_description
  • v_field_doc_template_id | v_field_file_store_id
      
v_field_doc_template_id
v_field_file_store_id

v_field_doc_template_id v_field_file_store_id
v_field_doc_template_id v_field_file_store_id
v_field_effective_date v_field_company_name v_field_org_state v_field_entity_type v_field_developer_name v_field_s351_applicability v_field_end v_field_governing_law_state v_field_company_name_upcase v_sig_company_chained_titled  v_field_else  v_field_end  v_field_company_street_address v_field_company_city_state_zip v_field_developer_name_upcase v_sig_developer_chained_titled  v_field_else  v_field_end  v_field_developer_street_address v_field_developer_city_state_zip v_field_technology_description
Access
Public
Description
Technology Assignment Agreement for founders as consideration for founder stock
Notes
None.
License
Not specified
License Detail
Not specified
Disclaimer
Not specified

INSTRUCTIONS:

1. Who signs? This document should be signed by an officer of the company and the person(s) assigning the technology.

2. Can this document be signed electronically? Yes.

3. Who gets copies? Add the agreement to the company's corporate records and provide the person(s) assigning the technology a copy.

4. Attachments? When I file with the company's corporate records, should I add copies of the documents referenced as attachments? Yes.

5. Transfer? Be sure to take any necessary additional steps to effect the transfer of the technology, like transferring domain names to the company or assigning patents to the company through the USPTO.