Common use of Grant of License Rights Clause in Contracts

Grant of License Rights. Subject to the further terms of this Agreement, Licensor hereby grants the following license rights to Covanta: Until Covanta has satisfied the two (2) conditions which are set forth in Section 2.1(a) (relating to the purchase of the Demonstration Plant and an additional five (5) Systems), Covanta shall have the Qualified Right in Territory A and Territory B to use, practice and make Improvements to the Technology in connection with Projects using any Feedstock. Once Covanta has satisfied the two (2) conditions which are set forth in Section 2.1(a), Covanta shall have the following rights during the Initial Period and, if the election provided for in Section 2.1(b) is timely made by Covanta, during the Extended Period: (i) the Full Right in Territory A and the Qualified Right in Territory B to use, practice and make Improvements to the Technology in connection with Projects using Household Waste; (ii) the Full Right in Territory A and Territory B to use, practice and make Improvements to the Technology in connection with Projects using Contracted Waste; (iii) the Full Right in the applicable areas of Territory A to use, practice and make Improvements to the Technology in connection with Projects using Radial Biomass; and (iv) the Qualified Right in Territory A and Territory B to use, practice and make Improvements to the Technology in connection with Projects using Commercial Waste. As further provided for in Sections 2.5 and 2.6, Covanta shall have the right to arrange for the sale of Systems to Governmental Organizations pursuant to a Purchase Order with AK. Furthermore, nothing which is contained herein shall restrict the sale of any Project by Covanta at any time to any Person other than a Competitor of Licensor. For the avoidance of doubt, Covanta shall be entitled to exercise any or all of the license rights that are granted to it hereunder itself or through any of its Affiliates, but Covanta shall not have the right to issue sublicenses to any Person other than an Affiliate. The Parties further agree as follows: (a) To secure its rights hereunder, Covanta shall satisfy the following two (2) conditions: (i) issue a Purchase Order for the Demonstration Plant by the date that is specified in Section 4.5 and make the payments required pursuant to such Purchase Order as and when due thereunder; and (ii) place one or more additional Purchase Order(s) for a total of five (5) Systems (excluding the Purchase Order for the Demonstration Plant) no later than one year after the start of the Initial Period and make a down payment equal to ten percent (10%) of the Purchase Price to Licensor at the time that such Purchase Order(s) are placed for Licensor to hold in escrow pending finalization of the Purchase Order(s) between AK and Covanta, it being agreed that Licensor can release the sum of [*****] to AK for preliminary engineering work associated with the Purchase Order(s) and the balance of the deposit shall be released to AK as is provided for in the Purchase Order(s) once it is finalized by AK and Covanta. If Covanta decides, for any reason, to terminate this Agreement and to give up its license rights hereunder after placing such Purchase Order(s) and making the required down payment to Licensor, the Licensor shall refund such deposit to Covanta. (b) Covanta shall have the right to elect, in its sole discretion, to extend the term of the Initial Period for an additional five (5) years, (such extended term defined in Section 1.1 as the “Extended Period”), Covanta to notify Licensor in writing at least ninety (90) days prior to the end of the Initial Period if it wants to extend the Initial Period for an additional five (5) years. (c) During the period that starts on the Effective Date and ends on the earlier to occur of (i) the termination hereof and (ii) the date that Covanta has satisfied the two (2) conditions which are set forth in Section 2.1(a), Licensor shall not (i) grant any rights to any Person (other than Global) with respect to the Technology in Territory A in connection with any projects using Household Waste or any projects using Radial Biomass or (ii) sell Systems to any Person for delivery to or use in Territory A if such Systems are to be used to process Household Waste or Radial Biomass unless each of the requirements that are specified in Section 2.1(d) are complied with. (d) If any Person contacts Licensor at any time during the period specified in Section 2.1(c) to purchase one or more Systems for any purpose specified in clause (ii) of Section 2.1(c), Licensor shall (i) provide a written notice of such contact to Covanta and (ii) notify such Person in writing (with a copy of such notice to Covanta) that no Systems can be sold for such purpose unless Covanta is given a “right of first offer” with respect to such Systems. The term “right of first offer” means that such Person offers Covanta, in writing, the right to invest 50 percent of the cost of the project to be developed with such Systems and to own 50 percent of such project (on an equal basis and terms with such Person) and the right to operate such project or such other arrangement acceptable to such Person and Covanta. Covanta shall notify such Person and Licensor, in writing, whether Covanta wants to be involved in such project as a 50 percent owner and operator or waive its right to do so. AK shall not enter into a Purchase Order with such Person unless Licensor has satisfied the notice requirements of this Section 2.1(d) and Covanta elects to not participate in the project.

Grant of License Rights. Subject to the further terms of this Agreement, Licensor hereby grants the following license rights to Covanta: Until Covanta has satisfied the two (2) conditions which are set forth in Section 2.1(a) (relating to the purchase of the Demonstration Plant and an additional five (5) Systems), Covanta shall have the Qualified Right in Territory A and Territory B to use, practice and make Improvements to the Technology in connection with Projects using any Feedstock. Once Covanta has satisfied the two (2) conditions which are set forth in Section 2.1(a), Covanta shall have the following rights during the Initial Period and, if the election provided for in Section 2.1(b) is timely made by Covanta, during the Extended Period: (i) the Full Right in Territory A and the Qualified Right in Territory B to use, practice and make Improvements to the Technology in connection with Projects using Household Waste; (ii) the Full Right in Territory A and Territory B to use, practice and make Improvements to the Technology in connection with Projects using Contracted Waste; (iii) American the Full Right in the applicable areas of Territory A to use, practice market and make Improvements to sell Systems and utilize the Technology in connection with Projects using Radial Biomass; and (iv) the Qualified Right in Territory A and Territory B to use, practice and make Improvements to the Technology in connection with Projects using Commercial WasteTechnology. As further provided for in Sections 2.5 of the Effective Date, the territory (the “Territory”) shall be the states of California, New York and 2.6Texas, Covanta it being agreed that Licensor shall have not grant any Person the right to arrange for sell Systems in New Jersey or Florida before the sale date by which American must satisfy the requirement set forth in clause (ii) of Systems to Governmental Organizations pursuant to a Purchase Order with AK. Furthermore, nothing which is contained herein shall restrict the sale first sentence of any Project by Covanta at any time to any Person other than a Competitor of LicensorSection 2.1(b) . For the avoidance of doubt, Covanta American shall be entitled to exercise any or all of the license rights that are granted to it hereunder in the Technology itself or through any of its Affiliates, but Covanta American shall not have the right to issue sublicenses to any Person other than an Affiliate. The Parties further agree as follows: (a) To secure its rights hereunderNotwithstanding anything that is contained herein to the contrary, Covanta American shall satisfy the following two (2) conditions: (i) issue a Purchase Order be credited for the Demonstration Plant by the date that is specified in Section 4.5 and make the payments required pursuant to such Purchase Order as and when due thereunder; and (ii) place one or more additional Purchase Order(s) for a total sale of five (5) Systems (excluding the Purchase Order for the Demonstration Plant) no later than one year after the start all of the Initial Period and make a down payment equal Systems sold to ten percent (10%) Covanta during the term of the Purchase Price to Licensor at the time that such Purchase Order(s) are placed for Licensor to hold in escrow pending finalization of the Purchase Order(s) between AK and Covanta, it being agreed that Licensor can release the sum of [*****] to AK for preliminary engineering work associated with the Purchase Order(s) and the balance of the deposit shall be released to AK as is provided for in the Purchase Order(s) once it is finalized by AK and Covanta. If Covanta decides, for any reason, to terminate this Agreement and to give up its license rights hereunder after placing regardless of whether such Purchase Order(s) and making Systems are for use inside or outside the required down payment to Licensor, the Licensor shall refund such deposit to CovantaTerritory. (b) American shall be required to secure or to help Licensor or Global to secure (i) an order for one KDV 500 prior to the end of the Interim Period (it being agreed that the Purchase Order being placed by Covanta for the Demonstration Plant satisfies this requirement) and (ii) orders for an additional two KDV 500s prior to the end of the Initial Period. If American fails to secure or help Licensor or Global to secure orders for a total of three KDV 500s prior to the end of the Initial Period, Licensor shall have the right right, in its sole and absolute discretion, to electnotify American that it must give up its Full Rights for one (1) of the states in the Territory (such state to be selected by American). If American meets the two (2) requirements set forth in this Section 2.1(b), the Territory thereafter shall be the states of California, New York, Texas, New Jersey and Florida. The phrases “secure orders” as used herein mean that a Person has executed a Purchase Order for one or more KDV 500s and made the initial deposit thereunder. (c) Licensor acknowledges and agrees that the ability of American to meet the requirements set forth in this Section 2.1 will depend, in part, on the initial three KDV 500s installed in the United States (including the Demonstration Plant) demonstrating the technical and financial viability of the Technology. Notwithstanding anything contained herein to the contrary, (i) if there is any delay in the installation of any of the initial three (3) KDV 500s in the United States, including the Demonstration Plant (with such KDV 500s meeting all performance guarantees), beyond the date committed by AK in the applicable Purchase Order or (ii) if any such KDV 500s experience operating or financial problems due to a failure of the KDV 500 to operate in accordance with its performance guarantees, then all of the time periods set forth in this Section 2.1 shall be extended automatically for the full period of all such delays for all purposes hereof. (d) During the Extended Period, American shall be required to secure orders for: (i) two (2) KDV 500s per year for each of the first two (2) full calendar years of the Extended Period; (ii) five (5) KDV 500s per year for each of the next two (2) calendar years of the Extended Period; and (iii) ten (10) KDV 500s per year for each calendar year thereafter, each such determination to be made on a cumulative basis (such that American shall be entitled to credit additional KDV 500s sold in one year above the minimum requirement for that year to a later year). If American fails to meet any such targets in any calendar year during the Extended Period, Licensor shall have the right, in its sole discretion, to extend notify American that it shall only have a Qualified Right in all of the states in the Territory to market and sell Systems and utilize the Technology for the remainder of the term of this Agreement. Licensor agrees that all Systems sold by Licensor outside the Initial Period for an additional five (5) yearsTerritory that are pursuant to a referral made by American shall count towards American’s minimum purchase requirements hereunder. However, (such extended term defined in Section 1.1 as the “Extended Period”), Covanta to notify Licensor in writing at least ninety (90) days prior to the end none of the Initial Systems purchased by Covanta or an Affiliate of Covanta for its own account during the Extended Period if it wants shall count towards meeting American’s minimum purchase requirements unless the sale of Systems is to extend the Initial Period for a project developed by American or an additional five (5) yearsAffiliate of American in which Covanta is an investor. (ce) During For purpose of meeting any of the period that starts on the Effective Date and ends on the earlier to occur of (i) the termination hereof and (ii) the date that Covanta has satisfied the two (2) conditions minimum order thresholds for KDV 500s which are set forth in this Section 2.1(a2.1, if a System is developed by AK (such as the “KDV 2000” which is currently under development by AK) that is capable of producing a higher amount of diesel oil per hour than a KDV 500 (expected to be 2,000 liters per hour in the case of a “KDV 2000” as compared to 500 liters per hour for a KDV 500), Licensor then such System will count as more than one KDV 500 based on the amount of diesel oil per hour capable of being provided (expected to be four KDV 500s in the case of a “KDV 2000”). (f) Notwithstanding anything contained herein to the contrary, American shall not lose its Full Rights in any state in the Territory if it fails to meet the cumulative order requirements in Section 2.1(b) or (d) if (i) grant any rights AK is not able to any Person (other than Global) with respect produce enough Systems to meet the Technology in Territory A in connection with any projects using Household Waste or any projects using Radial Biomass Purchase Orders secured by American, Licensor and Global or (ii) sell any problems experienced with the Technology in the Systems installed by AK make it commercially unreasonable for American to secure orders for any Person additional Systems until such problems have been resolved, in which case the Parties shall agree to an equitable adjustment, in good faith, to the cumulative requirements provisions of Sections 2.1(b) and (d) or extend the date for delivery to or use in Territory A if such Systems are requirements to be used to process Household Waste or Radial Biomass unless each of the requirements that are specified in Section 2.1(d) are complied withperformed. (dg) If any Person contacts American fails to meet its performance obligations under this Section 2.1 and Licensor at any time during the period specified elects to require American to give up its Full Rights in Section 2.1(c) to purchase one or more Systems for any purpose specified in clause (ii) of Section 2.1(c), Licensor shall (i) provide a written notice of such contact to Covanta and (ii) notify such Person in writing (with a copy of such notice to Covanta) that no Systems can be sold for such purpose unless Covanta is given a “right of first offer” with respect to such Systems. The term “right of first offer” means that such Person offers Covanta, in writing, the right to invest 50 percent of the cost states in the Territory as further provided for herein, American’s sole penalty will be for its rights in such state(s) to become a Qualified Right to market and sell the Technology for the remainder of the project to be developed with such Systems and to own 50 percent of such project (on an equal basis and terms with such Person) and the right to operate such project or such other arrangement acceptable to such Person and Covanta. Covanta shall notify such Person and Licensor, in writing, whether Covanta wants to be involved in such project as a 50 percent owner and operator or waive its right to do so. AK shall not enter into a Purchase Order with such Person unless Licensor has satisfied the notice requirements term of this Section 2.1(d) and Covanta elects to not participate in the projectAgreement.

Grant of License Rights. Subject 3.1 LICENSOR hereby grants to LICENSEE, subject to all the further terms and conditions of this Agreement, Licensor hereby grants an exclusive, worldwide, sub-licensable, royalty-bearing license (hereinafter “License”) to the following Patent Rights in the Field, including the right to use, market, distribute, make, have made, sell, have sold, offer to sell, import and export Licensed Products and Licensed Services (hereinafter “License”). 3.2 LICENSEE shall have a right of first refusal (ROFR) to incorporate into this license agreement any improvements or additions to the Patent Rights in the Field that may be developed or procured by LICENSOR subsequent to the effective date hereof. LICENSOR will timely communicate to LICENSEE the availability of any such improvements or additions to the Patent Rights, and LICENSEE will timely exercise or refuse its ROFR, wherein upon exercising its ROFR, such improvements or additions to the Patent Rights shall be incorporated into this license agreement by way of an amendment to Exhibit A which shall be signed by a representative of LICENSEE, and thereafter all rights to Covanta: Until Covanta has satisfied and obligations of the two (2) conditions which are parties as set forth in Section 2.1(a) (relating to this license agreement, including sections 7.1 and 7.2, shall be considered in accordance with the purchase of the Demonstration Plant and an additional five (5) Systems), Covanta shall have the Qualified Right in Territory A and Territory B to use, practice and make Improvements to the Technology in connection with Projects using any Feedstock. Once Covanta has satisfied the two (2) conditions which are set forth in Section 2.1(a), Covanta shall have the following rights during the Initial Period and, if the election provided for in Section 2.1(b) is timely made by Covanta, during the Extended Period: (i) the Full Right in Territory A and the Qualified Right in Territory B to use, practice and make Improvements to the Technology in connection with Projects using Household Waste; (ii) the Full Right in Territory A and Territory B to use, practice and make Improvements to the Technology in connection with Projects using Contracted Waste; (iii) the Full Right in the applicable areas of Territory A to use, practice and make Improvements to the Technology in connection with Projects using Radial Biomass; and (iv) the Qualified Right in Territory A and Territory B to use, practice and make Improvements to the Technology in connection with Projects using Commercial Waste. As further provided for in Sections 2.5 and 2.6, Covanta amended Exhibit A. 3.3 LICENSEE shall have the right to arrange for the sale of Systems to Governmental Organizations pursuant to a Purchase Order with AK. Furthermore, nothing which is contained herein shall restrict the sale of any Project by Covanta at any time extend this License to any Person other than a Competitor of Licensor. For the avoidance of doubt, Covanta shall be entitled to exercise any or all of the license rights that are granted to it hereunder itself or through any of its Affiliates, but Covanta shall not have the right to issue sublicenses to any Person other than an Affiliate. The Parties further agree as follows: (a) To secure its rights hereunder, Covanta shall satisfy the following two (2) conditions: (i) issue a Purchase Order for the Demonstration Plant by the date that is specified in Section 4.5 and make the payments required pursuant to such Purchase Order as and when due thereunder; and (ii) place one or more additional Purchase Order(s) for a total of five (5) Systems (excluding the Purchase Order for the Demonstration Plant) no later than one year after the start of the Initial Period and make a down payment equal to ten percent (10%) of the Purchase Price to Licensor at the time Affiliate provided that such Purchase Order(s) are placed for Licensor Affiliate consents to hold in escrow pending finalization of the Purchase Order(s) between AK and Covanta, it being agreed that Licensor can release the sum of [*****] to AK for preliminary engineering work associated with the Purchase Order(s) and the balance of the deposit shall be released to AK as is provided for in the Purchase Order(s) once it is finalized bound by AK and Covanta. If Covanta decides, for any reason, to terminate this Agreement and to give up its license rights hereunder after placing such Purchase Order(s) and making the required down payment to Licensor, the Licensor shall refund such deposit to Covanta. (b) Covanta shall have the right to elect, in its sole discretion, to extend the term of the Initial Period for an additional five (5) years, (such extended term defined in Section 1.1 as the “Extended Period”), Covanta to notify Licensor in writing at least ninety (90) days prior to the end of the Initial Period if it wants to extend the Initial Period for an additional five (5) years. (c) During the period same extent as LICENSEE and provided that starts on the Effective Date and ends on the earlier to occur of (i) the termination hereof and (ii) the date that Covanta has satisfied the two (2) conditions which are set forth in Section 2.1(a), Licensor shall not (i) grant any rights to any Person (other than Global) with respect to the Technology in Territory A in connection with any projects using Household Waste or any projects using Radial Biomass or (ii) sell Systems to any Person for delivery to or use in Territory A if such Systems are to be used to process Household Waste or Radial Biomass unless each of the requirements that are specified in Section 2.1(d) are complied with. (d) If any Person contacts Licensor at any time during the period specified in Section 2.1(c) to purchase one or more Systems for any purpose specified in clause (ii) of Section 2.1(c), Licensor shall (i) provide a written notice of such contact to Covanta and (ii) notify such Person in writing (with LICENSEE provides a copy of such notice prior written consent to CovantaLICENSOR within thirty (30) that no Systems can be sold for such purpose unless Covanta is given a “right of first offer” with respect to such Systems. The term “right of first offer” means that such Person offers Covanta, in writing, the right to invest 50 percent of the cost of the project to be developed with such Systems and to own 50 percent days of such project (on an equal basis prior written consent. 3.4 Any sublicenses granted by LICENSEE under this License shall be consistent with this Agreement and terms with shall protect the rights of LICENSOR. No such Person) and sublicense agreement shall contain any provision which would cause it to extend beyond the right to operate such project or such other arrangement acceptable to such Person and Covanta. Covanta shall notify such Person and Licensor, in writing, whether Covanta wants to be involved in such project as a 50 percent owner and operator or waive its right to do so. AK shall not enter into a Purchase Order with such Person unless Licensor has satisfied the notice requirements term of this Section 2.1(dAgreement. LICENSEE will notify LICENSOR within 30 (thirty) days of granting a sublicense and Covanta elects will provide LICENSOR a true and correct copy of said sublicense agreement in English within forty-five (45) days of signature. All sublicenses shall be assignable to not participate LICENSOR in the projectevent that this License is terminated or converted to non-exclusive.