This is a document outlining an acknowledgement of IP joint ownership.
ACKNOWLEDGMENT OF IP JOINT OWNERSHIP
THIS ACKNOWLEDGMENT OF IP JOINT OWNERSHIP (this “Acknowledgement”) is made as of the th day of ____, 20__, by each of ________, _________, ________, ________ (each a “Member”, and collectively, the “Members”), as individuals in respect of their contributions to date to a limited liability partnership, called Topos FFO LLP, company #________, which is formed in the United Kingdom.
WHEREAS, the Members have contributed, to the date hereof, and intend to contribute for the foreseeable future, equally to the activities and operations of the business of Topos FFO, including by creating the Topos FFO IP (as defined below);
WHEREAS, the Members now contemplate that one or more of them may at some point in the near future wish to withdraw from Topos FFO, and may thereafter engage in business that makes use of the Topos FFO IP; and
WHEREAS, in light of such contemplation, and with full knowledge that Member joint ownership of the Topos FFO IP may result in Members using the Topos FFO IP for competing purposes, and that with respect to the Topos FFO IP, none of them (nor Topos FFO itself) will be able to represent (contractually or otherwise) that it has sole ownership of the Topos FFO IP.
NOW THEREFORE, the Members acknowledge, as individuals, and on behalf of Topos FFO as an entity, as follows:
1.1 For the purposes of this Acknowledgement, “Intellectual Property” means any and all intellectual property and intellectual property rights, including but not limited to: (i) rights associated with works of authorship, including copyrights, moral rights and mask-works; (ii) trademarks, service marks, trade names, logos, common law trademarks and service marks, trademark and service mark registrations, Internet domain names, Internet and World Wide Web URLs or addresses; (iii) trade secret rights, proprietary information, know how, technology, technical data, proprietary processes and formulae, customer lists and supplier lists; (iv) patents, provisionals, continuations and continuations-in-part thereof, all inventions (whether patentable or not), invention disclosures, improvements, designs and any registration and application thereof; (v) other intellectual property rights of every kind and nature, however designated, whether arising by operation of law, contract, license or otherwise; and (vi) applications, registrations, renewals, extensions, continuations, divisions or reissues thereof now or hereafter in force (including any rights in any of the foregoing).
1.2 For the purposes of this Acknowledgement, “Excluded Intellectual Property” means any and Intellectual Property described in clause (ii) of the definition of “Intellectual Property,” set forth in Section 1.1, above.
1.3 For the purposes of this Acknowledgement, “Shared Topos FFO IP” means any and all Topos FFO IP and the right to use any Intellectual Property underlying any Shared Topos FFO IP as required to exercise rights in the Shared Topos FFO IP subject of this Acknowledgement. Notwithstanding the preceding sentence, Shared Topos FFO IP shall not include any Topos FFO IP which is also (i) Excluded Intellectual Property or (ii) Claimed Topos FFO IP.
1.4 For the purposes of this Acknowledgement, “Topos FFO IP” means any and all Intellectual Property, contributed to, used by or otherwise related, directly or indirectly to the business of Topos FFO as contemplated by the Members (or as any one of them if such Member has expressed, in writing the potential for Topos FFO to use such Intellectual Property) from the beginning of time through the end of the Pre-Operation Period.
1.5 For purposes of this Acknowledgement, “Pre-Operation Period” means with respect to each Member, the period beginning on the date hereof, and ending on the earlier of (i) the date upon which such Member ceases to contribute to the Topos FFO IP, as evidenced by a written notice by such Member, or the Company and (ii) with respect to any particular Shared Topos FFO IP, the date upon which Topos FFO issues a Notice of Business Use.
1.6 For purposes of this Acknowledgement, “Notice of Business Use” means a written notice, executed by two (2) or more Members, proposed to the Managers of Topos FFO for their approval, (i) stating that Topos FFO has taken concrete steps towards the commercialization of Claimed Topos FFO IP, (ii) describing with reasonable particularity the nature of such commercialization, including reference to a Business Proposal, (iii) describing with reasonable particularity the nature of the Claimed Topos FFO IP and (iv) referencing any relevant licenses or government filings, or drafts thereof.
1.7 For purposes of this Acknowledgement, “Business Proposal” means a plan of commercialization inclusive of sufficient detail to describe fully (i) the product or service to be provided, (ii) the method in which Topos FFO will produce or provide such good or service, (iii) the market for such good or service, (iv) the anticipated sales strategy for the project, (v) the anticipated capital required to fund the proposed commercialization, (vi) the proposed source(s) of such funding, (vi) the projected annual income statements and balance sheet, for a period beginning on the date of the Business Proposal and ending on the date that is two (2) years from the first date upon which funding for the project is received and (vii) such other information as reasonably required to describe a development stage project to a knowledgeable, but unrelated third-party.
1.8 For purposes of this Acknowledgement, “Notice of Prior Business Use” means, with respect to any Notice of Business Use, a written notice, executed by one or more Member(s), (i) stating that prior to their receipt of such Notice of Business Use, such Member(s) were using in commerce some or all Shared Topos FFO IP that would be designated as Claimed Topos FFO IP, (ii) describing with reasonable particularity the Shared Topos FFO IP at issue and (iii) describing with reasonable particularity the nature of such prior use in commerce, and presenting documentary evidence thereof.
1.9 For purposes of this Acknowledgement, “Notice of Prior Business Use Deadline” means with respect to any particular approved Notice of Business Use, the date that is have fifteen (15) Business Days following the first day upon which a copy of such approved Notice of Business Use has been delivered to all Members.
1.10 For purposes of this Acknowledgement, “Claimed Topos FFO IP” means any Topos FFO IP, identified and adequately described in a Notice of Business Use, approved by Majority Approval of the Managers, and any other Intellectual Property either (i) derivative thereof, or (ii) developed independently of any Shared Topos FFO IP in the process of conducting the business described in the Business Proposal or any business stemming primarily therefrom.
1.11 For purposes of this Acknowledgement, “Concurrent Use License” means perpetual license consistent with Section 3.6, below, to use the Claimed Topos FFO IP as described in the applicable Notice of Prior Use and additionally for purposes/uses materially related thereto. Notwithstanding the preceding sentence, the Concurrent Use License shall not provide any rights in Claimed Topos FFO IP other than as specifically described in the Notice of Prior Use if such rights would allow use of such Claimed Topos FFO IP in a manner competitive with any then existing business of the Company.
1.12 For the purposes of this Acknowledgement, “Majority Approval of the Managers” and “Majority Approval of the Members” each have the meaning ascribed to it in the Custodian Agreement of Topos FFO LLP (the “Custodian Agreement”), dated as of ___________.
1.13 For the purposes of this Acknowledgement, “Voting Membership Interest” has the meaning ascribed to it in the Custodian Agreement.
1.14 For the purposes of this Acknowledgement, “Business Day” has the meaning ascribed to it in the Custodian Agreement.
1.15 For the purposes of this Acknowledgement, “Affiliate” has the meaning ascribed to it in the Custodian Agreement.
2.1 Each Member acknowledges that Topos FFO and each of the Members (set forth above) shall share jointly in the ownership of, and have all rights relating to all of the Shared Topos FFO IP. As such, subject to the rights of Topos FFO and the Members following the Pre-Operation Period, each Member shall have the non-exclusive right to make any use, whatsoever of any or all of the Topos FFO IP, through any means and in any geographical territory, and may sublicense such non-exclusive rights to one or more third-parties as such Member sees fit. Any Member who sublicenses any Topos FFO IP shall provide written notice to each of the other Members, including the identity of the sublicensor and a reasonably specific description of the sublicensed Topos FFO IP, including any limitations on such sublicense (duration, territory, type of use, etc.). Such notice need not contain any financial terms of the sublicense. A Member sublicensing Topos FFO IP shall include in such sublicense language so as to require the sublicensor and any remote sublicensor to provide to such Member notice of any further sublicensing of the Topos FFO IP. Upon receiving any such notice, the recipient Member shall provide a copy of such notice to each of the other Members. All notices specified in this Section 2.1 shall be delivered within five (5) business days of the sublicense, or receipt of notice of further sublicense, as applicable.
2.2 Each Member acknowledges that the use by any Member, or Topos FFO of any of the Shared Topos FFO IP may be competitive to the use by any other owner of Shared Topos FFO IP. Each Member further acknowledges that notwithstanding their ownership rights in the Shared Topos FFO IP, neither Topos FFO’s use, nor any other Member’s use of any Shared Topos FFO IP shall, by itself, require the payment of any royalty or other compensation to any of the non-using Members, or Topos FFO, in relation thereto.
2.3 Each Member acknowledges that any of Topos FFO or any other Member may take such actions as they consider necessary or desirable for the purpose of evidencing their ownership interest in the Shared Topos FFO IP, including the filing of any documents on their own behalf, only, and not to the exclusion of Topos FFO or any other Member.
2.4 Each Member acknowledges that they shall not be entitled to take any action that would be expected by a reasonable person to interfere with the rights of Topos FFO and the other Member’s rights, acknowledged hereby. Without limiting the generality of the preceding sentence, no member shall (i) represent to any third-party, or in any document (including any agreement, or filing) that it is (or they are), the sole owner of any Shared Topos FFO IP, or that they have exclusive rights thereto (including any representation by omission); or (ii) pledge any Shared Topos FFO IP as security or collateral unless such pledge includes an express exclusion of rights of Topos FFO and the other Members in the Shared Topos FFO IP.
2.5 Each Member acknowledges that to the extent that any Shared Topos FFO IP is derivative of any Intellectual Property owned by such Member, to the extent legally valid, such Member has granted to Topos FFO and the other Members a perpetual non-exclusive license to all rights in such underlying Intellectual Property reasonably necessary to the exercise in the Shared Topos FFO IP subject to this Acknowledgement.
3.1 Each Member acknowledges that with respect to any endeavor described in a Business Proposal, Topos FFO will be harmed if the Members continue to share rights in the Claimed Topos FFO IP associated with such endeavor. Each Member acknowledges that at any particular time, the Shared Topos FFO IP will not include any Claimed Topos FFO IP. Topos FFO may, upon Majority Approval of the Managers, immediately reclassify Topos FFO IP identified in a Notice of Business Use from Shared Topos FFO IP to Claimed Topos FFO IP. As soon as reasonably practical thereafter, Topos FFO shall deliver such Notice of Business Use, executed by each Manager that has approved same, to each of the Member(s) that have not so executed. A Member’s presence at a meeting at which a Notice of Business Use is approved shall constitute delivery.Each Member shall have up to and including the Notice of Prior Use Deadline in which to deliver to Topos FFO a Notice of Prior Business Use. If Topos FFO does not receive any Notice(s) of Prior Use prior to the Notice of Prior Use Deadline, each Member will be deemed to have agreed that the relevant Claimed Topos FFO IP belongs exclusively to Topos FFO.
3.3 If Topos FFO does timely receive one (1) or more Notice(s) of Prior Use, As soon as reasonably practical following the receipt by Topos FFO thereof, Topos FFO shall distribute such Notice of Prior Use to each Member (other than the Members who submitted such Notice of Prior Use). Each Member shall have fifteen (15) Business Days during which to review the applicable Notice of Prior Use and to deliver a written objection thereto to Topos FFO. If no member so objects, than the Member(s) delivering the applicable Notice of Prior Use (including any of their Affiliates) shall have a Concurrent Use License.
3.4 If Topos FFO does receive one or more written objections to a Notice of Prior Use, Topos FFO will distribute such written objection to the Members. Within ten (10) Business Days thereafter, each Member shall deliver to Topos FFO a written statement either approving or disapproving the written objection in its entirety. Failure to respond by a Member shall be deemed to be approval of the written objection. If the written objection is approved by a Majority of the Members, then the corresponding Notice of Prior Use will not be effective and no Concurrent Use License will be granted in connection with that Notice of Prior Use. Otherwise, the objection will be overruled and a Concurrent Use License will be granted.
3.5 In the event that Topos FFO grants any Member a Concurrent Use License, Topos FFO will, upon request, provide such Member with a written license consistent with the terms hereof, which shall (i) attach the applicable Notice of Prior Use as an exhibit to specify the Topos FFO IP covered by the Concurrent Use License, (ii) provide the license “as is”, with no representations or warranties, (iii) expressly state that the license is non-exclusive and perpetual, and may only be sub-licensed to Affiliates, and only transferred in connection with a merger or sale of all or substantially all assets of the licensee following which the licensee does not continue to conduct any meaningful business (iv) not survive the bankruptcy of the licensee or any event which would result in an involuntary transfer from licensee and (v) survive any transfer, involuntary or otherwise, by Topos FFO of the Claimed IP licensed thereby.
3.6 No Member makes any acknowledgement or agreement with respect to any Intellectual Property that is not Shared Topos FFO IP, other than that any Topos FFO IP that is Excluded Intellectual Property is solely the property of Topos FFO.
4.1 A signature delivered via facsimile, email, or attachment to email shall be equally as effective as an original signature delivered in-person, via mail, or via any other means.
4.2 If a court of law holds any provision of this Acknowledgement to be illegal, invalid or unenforceable, (a) that provision will be deemed amended to achieve an economic effect that is as near as possible to that provided by the original provision and (b) the legality, validity and enforceability of the remaining provisions of this Acknowledgement will not be affected thereby.
4.3 This Acknowledgement shall be interpreted, enforced governed and construed in all respects in accordance with the laws of the State of California as they apply to a contract executed in such state . Any controversy or claim arising out of or relating to this Acknowledgement or the validity, construction or performance of this Acknowledgement or the breach thereof, shall be resolved by arbitration at the city of Newport Beach, California, according to the rules and procedures of the American Arbitration Association (“AAA Rules and Procedures”), as they may be amended, using a single arbiter and expedited procedures, regardless of the amount in dispute. AAA Rules and Procedures are incorporated herein and made a part of this Acknowledgement by reference. The parties hereto agree to accept service of process in accordance with AAA Rules and Procedures, and hereby waive any right as to personal jurisdiction or venue, and any right to a jury trial. The prevailing party shall be entitled to reimbursement from the other party of all costs of the arbitration (or any other legal action), including but not limited to filing fees and expenses, arbitrator fees and expenses, witness fees and expenses, and reasonable attorneys fees and expenses. In the case of Firm representing itself, such attorneys’ fees and expenses shall be computed at Firm’s regular rates. THE PARTIES HERETO UNDERSTAND THAT, ABSENT THIS ACKNOWLEDGEMENT, THEY WOULD HAVE THE RIGHT TO SUE EACH OTHER IN COURT, AND THE RIGHT TO A JURY TRIAL, BUT, BY THIS ACKNOWLEDGEMENT, EXPRESSLY WAIVE THAT RIGHT AND AGREE TO RESOLVE ANY AND ALL GRIEVANCES BY ARBITRATION.
IN WITNESS WHEREOF, the parties have caused this Acknowledgement to be executed by their duly authorized representatives on the date and year first above written.
By: _________________________ By: _________________________
By: _________________________ By: _________________________