EXCLUSIVE LICENSE AND MANUFACTURING AGREEMENT
| Exhibit 10.1 |
Conformed
Copy
|
This
Agreement is effective as of April 1, 2006 (referred to herein as the
“Agreement”) by and between Ko-Xxxxx Xxx, the inventor, a citizen of the country
of Korea with his principal place of business at 00-0 Xxxxx-Xxxx, Xxxxxxxx
Xxxx,
Xxxxx and Ketut Jaya, a citizen of Indonesia with his principal place of
business at XX Xxxx Xxxxx, Xxxxx Xx. 00, Xxxxxxxx-Xxxx, Xxxxx, Xxxxxxxxx 00000,
collectively cited herein “The Ketut Group” and Innovative Designs, Inc., a
Delaware Corporation with the main office located at 000 Xxxxxx Xxxxxx,
Xxxxxxxxxx, Xxxxxxxxxxxx 00000, herein referred to as “IDI”.
RECITALS:
WHEREAS,
“The Ketut Group” represents that it is the exclusive owner, inventor,
manufacturer and licensor of a patented and proprietary technology relating
to a
low density foamed polyethylene product known as Insultex hereinafter referred
to as the Insultex Technologies; and
WHEREAS,
IDI desires to develop, use, sell and market various products and uses of
Insultex Technologies including but not limited to swimsuits, pillows and
sleeping bags; and
WHEREAS,
IDI wishes to exclusively license the Insultex Technologies of “The Ketut
Group”, and “The Ketut Group” desires to grant to IDI an exclusive license to
develop, use, sell, and market all applications of the Insultex
Technologies;
WHEREAS,
“The Ketut Group” is engaged in the manufacture of Insultex and desires to
exclusively manufacture and supply Insultex to IDI for use in amounts sufficient
to meet the needs of IDI; and
WHEREAS,
IDI desires to purchase Insultex from “The Ketut Group” from time to time as
needed by IDI as set forth herein.
WITNESSETH,
in exchange for good and valuable consideration the receipt and sufficiency
of
which are hereby acknowledged, and intending to be legally bound hereby, the
parties hereto agree as follows:
ARTICLE
I - DEFINITIONS
1.01
Insultex. “Insultex” means low density foamed polyethylene product manufactured
by the process referenced by Korean patent # 0426429.
1.02
Insultex Technologies. “Insultex Technologies” means all of “The Ketut Group’s”
interest in any proprietary information, patents, inventions, developments,
trade secrets, know-how whether present or future, relating to all applications
of the Insultex Technologies for all commercial, industrial, governmental and
other uses without limitation.
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1.03
Insultex Products. “Insultex Products” means any item containing or made from
Insultex or made using the Insultex Technologies including but not limited
to
swimsuits, cushions, pillows, sleeping bags, caps, hats, gloves, clothing items,
apparel and various industrial applications.
1.04
Effective Date. The agreement is effective when duly signed by the parties
hereto.
1.05
Territory. “Territory” means all countries in the world other than Korea and
Japan.
1.06
Non-Territory. “Non-Territory” means Korea and Japan.
1.07
The
Ketut Group. “The Ketut Group” means The Ketut Group, its affiliates or any
individuals, corporations or other institutions to which The Ketut Group’s
ownership and/or rights to, of or in the Insultex Technologies has been
transferred or assigned.
ARTICLE
II - GRANT OF LICENSE, EXCLUSIVE RIGHT TO PURCHASE AND EXCLUSIVE AGREEMENT
TO
MANUFACTURE
2.01
“The
Ketut Group” grants to IDI the exclusive, unlimited, irrevocable right and
license, with the right to grant sublicenses to third parties, to purchase,
use,
develop, commercialize, market, have marketed, sell and have sold, manufacture
and have manufactured products related to or utilizing Insultex or the Insultex
Technologies whether present or future, in the Territory.
The
License granted hereunder includes, but is not limited to the following
Patents:
| Country |
Patent
Number
|
| Republic of Korea |
0426429
|
2.02
The
Ketut Group further grants to IDI the exclusive rights to any current or future
inventions, improvements, discoveries, patent applications and letters of patent
which The Ketut Group now controls and owns or hereafter may own or control
and
which relate to the Insultex Technologies and to all information and documents
which The Ketut Group now owns or controls, or hereafter may own or control
and
which relate to Insultex Technologies.
2.03
The
use of Insultex and the Insultex Technologies in the Non-Territory shall be
limited to manufacture of the Insultex products in Korea and Japan and not
for
the purpose of reselling product in bulk or for use in the manufacture or retail
of any product outside Korea and Japan.
2.04
The
Ketut Group will pay all applicable patent expenses and filing fees in all
jurisdictions relating to the Insultex Technologies whether present or in the
future.
2.05
Patent Rights. The Ketut Group represents and warrants that the patents relating
to the Insultex Technologies are valid and enforceable in the Territory, that
the Ketut Group is the sole and exclusive owner thereof in the Territory, that
they have the full right, power, and authority to enter into this Agreement
and
to grant the rights, licenses and privileges hereby granted to IDI, and to
perform all of their obligations hereunder.
2.06
The
Ketut Group shall inform IDI of any and all improvements, changes and
information relating to the Insultex Technologies as soon as practical after
that information is made available to the Ketut Group . This includes the status
of all Insultex related research and development efforts by the Ketut Group
or
any of their affiliates. All improvements, changes and information shall be
promptly incorporated as part of this Agreement.
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2.07
The
Ketut Group shall furnish to IDI, or its nominees, all information required
by
IDI to commercialize and exploit Insultex and the Insultex Technologies. The
Ketut Group shall not reveal the Insultex Technologies or any information to
any
other person without written approval of IDI.
2.08
The
Ketut Group shall promptly notify IDI if they learn of any infringement of
any
patent rights respecting or pertaining to the patents or Technology licensed
hereunder or of any unauthorized use of the Technology by any third
party.
2.09
The
Ketut Group agrees to defend, at its own expense, all infringement suits that
may be brought against IDI or its sublicenses based on or related to the
manufacture, use, sale, or marketing of products based on or using the patents,
information, or trademarks pertaining to Insultex or the Insultex Technologies.
In the event any information is brought to the attention of the Ketut Group
that
others are infringing any rights granted pursuant to this Agreement, the Ketut
Group shall, at its own expense, diligently prosecute all such infringers.
In
any on the foregoing suits, IDI may, at the Ketut Group’s expense, be
represented by counsel of its own choice.
2.10
The
Ketut Group agrees to exclusively manufacture and sell Insultex to IDI in such
quantities as requested by IDI from time to time and that they will not, other
than in Non-Territory as provided herein, grant any rights to use, purchase,
market, license, distribute, sell, give away, or deliver to any other person
or
entity, any materials manufactured by him relating to, using, arising or made
from, containing or competing with Insultex, a product similar to Insultex
or
the Insultex Technologies.
2.11
The
Ketut Group shall provide IDI amounts of Insultex in sufficient quantities
to
fill the orders placed by IDI to meet all size, width and other specifications
as may be requested by IDI.
2.12
IDI
may at its own option trademark and utilize the names or variations of the
names
Insultex in those areas in which it conducts its business operations, and the
Ketut Group shall permit no other individual, entity or organization to make
use
of said trademarks. The Ketut Group shall not obtain any trademarks, grant
or
use any tradenames that are similar to any names used by IDI or IDI’s
sublicensees.
ARTICLE
III - DELIVERY, PAYMENT AND MINIMUM ORDER OF INSULTEX
3.01
The
Ketut Group shall promptly deliver to IDI within twenty-eight (28) days of
receiving an order from IDI, at IDI’s place of business, all Insultex ordered by
IDI. IDI shall pay for said order within 30 days of delivery to IDI’s
facilities. All orders placed by IDI shall be placed by telephone or written
facsimile order. The costs of shipping of all Insultex product by the Ketut
Group to IDI shall be paid by IDI and the risk of loss from the facilities
of
the Ketut Group to the facilities of IDI shall be borne by IDI.
3.02
IDI
shall pay [ *CONFIDENTIAL
MATERIAL OMITTED AND FILED SEPERATLY WITH THE SECURITIES AND EXCHANGE COMMISSION
PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT]
per
meter for all Insultex ordered from the Ketut Group. This price shall remain
[*
CONFIDENTIAL MATERIAL OMMITTED AND FILED SEPERATLY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO A REQUEST FOR CONFIDENTIAL
TREATMENT]
per
meter for a period of (10) years from the date of execution of this Agreement.
Thereafter said price shall be adjusted for subsequent ten (10) year terms
at a
price increase of no more than twelve percent (12%) per ten year term. The
price
paid by IDI for Insultex shall remain the same for each ten (10) year
term.
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3.03
IDI
shall order Insultex from the Ketut Group from time to time as needed and shall
not be required to purchase any minimum amount of Insultex during the term
of
this Agreement and IDI is not required to make any minimum annual payment to
the
Ketut Group. However, should IDI place an order, any quantity ordered must
be a
minimum of 35,000 meters of Insultex.
3.04
On
all Sublicensee Payments received by IDI from third party Sublicensees, IDI
shall not pay any fees to the Ketut Group.
ARTICLE
IV - TERM
4.01
This
agreement shall be in full legal force and effect for an initial term of ten
(10) years from the date of execution hereof. IDI shall have the option to
renew
this Agreement for up to three (3) successive terms of ten (10) years each
by
giving Notice to the Ketut group of its intention to so renew not less that
ninety (90) days prior to the expiration of the then-current term.
ARTICLE
V - REPRESENTATIONS, WARRANTIES AND COVENANTS OF THE KETUT
GROUP
5.01
The
Ketut Group represents that it is the inventor, exclusive manufacturer, sole
owner, holder, holder in due course of all right, title and interest to and
in
Insultex and the Insultex Technologies.
5.02
The
Ketut Group represents that any prior licenses granted by him have been lawfully
rescinded, terminated and/or revoked and have no further force or
effect.
5.03
The
Ketut Group represents that they have the capacity and unlimited ability to
manufacture said product in quantities sufficient to meet the requirements
of
IDI as they currently exist and as they may exist and expand in the
future.
5.04
The
Ketut Group has the sole and exclusive lawful authority to enter into this
Agreement and to grant the exclusive license and other rights granted hereunder
and to manufacture products made form or using Insultex or the Insultex
Technologies. The transactions contemplated hereby will not violate any other
agreement, any order, judgement, injunction, award or decree of any court,
arbitrator or governmental or regulatory body against, binding upon or affecting
Insultex, the Insultex Technologies or any rights granted to IDI
hereunder.
*CONFIDENTIAL
MATERIAL OMITTED AND FILED SEPERATLY WITH THE SECURITIES AND EXCHANGE COMMISSION
PURSUANT TO A REQUEST FOR CONFIDENTIAL TREEATMENT
4
ARTICLE
VI - COVENANTS, REPRESENTATIONS, AND OBLIGATIONS OF IDI
6.01
IDI
agrees to use good faith best efforts to market and distribute new and existing
markets and applications for Insultex and the Insultex
Technologies.
6.02
Authority to Execute and Perform Agreements. IDI has the full legal right and
power and all authority and approval required to enter into, execute, and
deliver this Agreement, and the transactions contemplated hereby, and to perform
fully the obligations thereunder.
ATRICLE
VII - TERMINATION
7.01
This
Agreement may be terminated by either party upon event of default, as specified
herein, which default remains uncured not less than thirty (30) days after
Notice thereof by the non-breaching party to the breaching party. This Agreement
may be terminated by either party upon the dissolution, bankruptcy or
liquidation of the other party, at the discretion of the party whose operations
are not being impaired.
ARTICLE
VIII - ARBITRATION TO RESOLVE DISPUTES
8.01
The
parties acknowledge that the logistics of their locations in various continents
makes the litigation of any dispute a potentially lengthy, time consuming and
expensive process. In order to minimize the expense and difficulty of resolving
disputes, the parties agree to utilize their best efforts to resolve said
disputes amicably. In the event a dispute does not prove amenable to amicable
resolution, the parties agree to submit the dispute to binding arbitration.
The
arbitrators shall operate under the auspices of and in accordance with the
rules
of the American Arbitration Association, which shall to the maximum extent
possible permit the parties to participate in said proceedings without requiring
their actual physical presence. Each side shall select an arbitrator, with
the
two arbitrators to select a third from among a list of arbitrators acceptable
to
the parties. The party which prevails in said arbitration shall recover its
costs from the non-prevailing party in a percentage to be determined by the
arbitrators. No appeal of a decision of the arbitrators shall be allowed absent
an allegation of fraud or collusion on the part of the arbitrators. The laws
of
the United States shall govern in any dispute, and venue for any said dispute
shall be Allegheny County, Pennsylvania, USA.
ARTICLE
IX - INDEMNIFICATION
9.01
The
parties agree that in the event one of the parties hereto is subject to
liability or exposure as a result of an allegation of fault, negligence, breach
of contract, breach of duty, error, act of commission or act of omission of
the
other, the party whose action or lack thereof gave rise to the potential
liability shall indemnify and hold harmless the other for all costs liable
for
the payment of any award entered attendant thereto.
ARTICLE
X - INTEGRATED AGREEMENT
10.01
The
parties agree that this Agreement represents the entire agreement of the parties
as to its terms, and that no modification hereof shall be given legal force
or
effect without prior written consent of the parties hereto.
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ARTICLE
XI - FACSIMILE AND COUNTERPART ORIGINALS
11.01
The
parties agree that a facsimile copy of this Agreement shall be given the same
legal force and effect as a hard copy original. The parties further agree that
they shall execute this Agreement in counterpart originals, which shall contain
the signature of one of the parties hereto and shall in the aggregate constitute
the signature page of the instant Agreement.
ARTICLE
XII - PROVISIONS SURVIVING
12.01
In
the event that a court of competent jurisdiction shall invalidate any term
of
provision of this Agreement; the remaining terms shall survive unaffected and
in
full force and effect.
ARTICLE
XIII - NOTICES
13.01
Any
notice required or referenced herein shall be deemed given when affixed with
a
postage cancellation reflecting its deposit in the general mails of the country
of origin or the date of its deposit with a licensed common carrier. All such
Notices shall be directed to the parties at the addresses set forth
above.
ARTICLE
XIV - EFFECT OF WAIVER
14.01
No
waiver whether express or implied, of any breach of any term, condition or
obligation of this Agreement shall be construed as a waiver of any subsequent
breach of that term, condition or obligation, or any other term, condition
or
obligation of this Agreement of the same or different nature.
ARTICLE
XV - SUCCESSORS AND ASSIGNS
15.01
This Agreement shall inure to the benefit of the successors or assigns of the
Parties.
ARTICLE
XVI - COMPLETE AGREEMENT
16.01
This document comprises the entire Agreement with respect to the subject matter
hereof and supercedes all negotiations, representations and warranties,
commitments, offers, contracts and writings prior to the date of this Agreement.
Otherwise, the Parties to this Agreement are not to be bound by any
representations, warranties or agreements other than those set forth herein
or
in a written amendment to this Agreement hereinafter entered into by the Parties
and duly executed by each party. Nothing stated in this Agreement shall be
construed against the drafting party solely because of the submission of this
Agreement to the other party.
ARTICLE
XVII - ASSIGNMENT
17.01
This agreement may be assigned by IDI. This Agreement may not be assigned by
the
Ketut Group without the express written consent of IDI.
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ARTCILE
XVIII
This
agreement consists of eight (7) pages. A photocopy hereof shall have the same
legal force as the original, and may be signed as counterpart
originals.
In
witness whereof, the Parties have executed this Agreement on April 1, 2006,
intending to be legally bound.
Innovative
Designs, Inc
.
/s/Xxxxxx
Xxxxxxxx
_________________________ Date:
April 1, 2006
by:
Xxxxxx Xxxxxxxx, President/CEO
Ketut
Group
/s/
Ko-Xxxxx Xxx
_________________________ Date:
April 1, 2006
by:
Ko-Xxxxx Xxx
Ketut
Group
/s/
Ketut
Jaya
_________________________ Date:
April 1, 2006
by:
Ketut
Jaya
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