T R A N S L A T I O N
TRANSFER OF PATENT
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LICENSE
Between
DATA CONSULT
Represented by the company's owner Xxxx Xxxxxxx
Xxxxxxxxx. 0
00000 Xxxxxx
Licensee
And
ENTECS, Inc.
000 Xxxxxxxxxxx Xxxxxx
Xxxxxx, Xxxxxxxx 00000 XXX
Licensor
' 1 Recitals
The Licensor owns the exclusive license to the following European patents:
EPO 383 227 and EPO 383229
Applied for on Feb. 12, 1990 Feb. 12, 1990
Published on Aug. 22, 1990 Aug. 22, 1990
Issued on May 12, 1993 May 6, 1992
The patents involve the process to bind particle wastes such as dust, metal
scrap, fibers, waste paper and other similar matter into solids as well as a
process for processing oil sludge containing iron.
The Licensee is in the business of acquiring, developing and marketing patents
and technical innovations in the environmental protection market and plans to
offer reclamation and recycling concepts and systems.
Based on the foregoing, the parties agree as follows:
' 2 Subject of the Agreement
The Licensor transfers to Licensee all of its right, title and interest in the
patents EPO 383227 and EPO 383229 for the previously described process for
recycling metal dust and other materials and for the processing oil sludge
containing iron.
The license encludes the complete scope of use of the patent as it is described
in the patent documentation. The License included in particular the
complete patent protected process as well as the products generated by the
patent.
The technical Know How and all back up documentation in which Licensor acquired
from the patent owner shall likewise be made available to Licensor.
' 3 Territory
The Licensee acquires the license for all countries of the European Union in
which the patents are valid including the Federal Republic of Germany.
In other areas within the European Union, the Licensee may use the licensed
processes and may market products produced by the licensed processes. In
areas outside the European Union, the Licensee is prohibited from using the
licensed processes or from selling the products produced by the licensed
processes even if there is no patent protection available in those areas.
Export of the products produced pursuant to the patented processes within the EU
is allowed as long as the patented processes described in Section 1 are
protected by parallel patents. In areas outside of the EU, export is not
allowed even where the Licensor does not have patent protection in those
areas.
The Licensee is liable for liquidated damages in the amount of DM 100,000 for
each violation of the terms of this section. The Licensor may terminate
this agreement and seek damages in the event products are exported in
violation of this agreement.
' 4 Transfer
The Licensor hereby transfers all his right title and interest in the Patent
License Agreement has with the firm UWAS Umwelttechnik GmbH dated December
28, 1996 to the Licensee. The Licensee hereby declares his acceptance of
the transfer and assumes all of the Licensor's obligations under the
above-mentioned Patent Licenses Agreement.
' 5 Technical Documentation
The Licensor will make his Know How, for the implementation of the licensed
processes available to the Licensee.
Upon termination of this License Agreement, the Licensee shall immediately
return all documentation to Licensor and shall not retain any copies
thereof.
The Licensee shall keep all business secrets it acquires from Licensor
confidential. The obligation of confidentiality shall expire when the
patent expires.
The Licensee shall enforce the confidentiality clause among all of its
employees.
' 6 Technical Assistance
The Licensor shall render technical assistance to the Licensee to the extent it
is necessary for the licensed processes.
The Licensee shall reimburse Licensor for all costs associated with the
technical assistance.
' 7 Liability for Defects
The Licensor is not responsible for the technical functionality of the
invention. The Licensor is, in particular, not responsible for the economic
viability of the invention or the feasibility of its manufacture.
The Know How and the technical data, which are made available pursuant to the
terms of this agreement consists of that information acquired by the
Licensor from the original owner. The Licensor makes no guarantees or
representations that the Know How and technical data is correct and free of
errors, that the use of this information will lead in any way to the
successful implementation of the invention or that the technical
information is complete.
The Licensee makes not representations or guarantees that the use of the
License will not impinge on the protected rights of third parties.
The Licensee is not liable for any failure of the contractual or legal
protections associated with the patent or the termination of the license
rights acquired by the Licensee.
' 8 License Fees
The Licensor will pay to the Licensee a one-time license fee in the amount of
DM 650,000 plus all appropriate value added taxes.
The License Fee is due upon execution of this agreement.
The License Fee in not refundable even if the contract is determined to be void
or if the Know How reached the public domain.
' 9 Discontinuance of the Patent Rights B License
This agreement shall not be invalidated in the event the patent which is the
subject of this license is attacked by third parties and held to be invalid..
The Licensee has the right to terminate this agreement within a time limit of
two months after the determination that the patent is not enforceable. License
Fees which have already been paid are not, however, refundable.
' 10 Product Liability
The Licensor releases the Licensee from potential claims of third parties for
product liability. The same applies for the Licensee's advertising
representations regarding the licensed process or products produced by this
process.
' 11 Non Competition
The Licensee does not have the right to use the information he has obtained from
the licensed process regarding production, manufacture of competing products.
' 12 Non Intervention
The Licensee is obligated to protect the patents any is prohibited from
contesting the validity of the patent either directly or indirectly.
' 13 Sharing of Experience
The parties to this agreement will keep each other informed regarding all
improvements, changes or new inventions involving the subject patent.
' 14 Modifications and Discovery of New Uses for the Patent
The parties to this agreement are obligated to grant each other licenses for any
improvements or modifications to the patents subject to agreement on a
reasonable license fee for such modifications.
' 15 Defense of the Patent Rights
The Licensee is obligated to take whatever steps necessary at its own expense to
protect the patents from attack by third parties.
The parties to this contract will keep each other informed about any attempts to
attack the validity of the patent and will offer each other all assistance
necessary in defending the patent.
' 16 Responsibility for Claims of Third Persons
If the Licensee is sued for patent infringement while it is using the Patent, he
must immediately inform the Licensor and give it the opportunity to join in the
legal proceedings. All attorney's fees and court costs and damages awarded in
such a case are the obligation of the Licensee.
' 17 Post Termination Rights and Obligations of the Licensee
When this agreement is terminated, the Licensee has the right to sell any
products manufactured under the patent to an additional two months.
The Licensee is obligated to keep all of Licensor's confidential business
information confidential after the contract terminates.
' 18 Termination for Cause
This agreement can be terminated without notice in the event of a serious breach
of the terms of this agreement by either party. From the Licensor's point of
view, the following are reasons to terminate this agreement for cause:
Licensee's breach of the territorial restrictions contained herein; failure make
any payment due hereunder; the Licensee's bankruptcy, when the patent agreement
between the Licensor and the patent owner is terminated etc.
' 19 Term of the Agreement
The term of this agreement begins on the date it is executed by the parties. The
agreement shall terminate when the patent expires.
' 20 Venue and Jurisdiction
Jurisdiction and venue for all disputes arising from this agreement shall be
proper in the Munich I District Court.
' 21 Governing Law
German law shall govern this agreement.
' 22 Integration Clause
Any change to this agreement must be made by the parties in writing.
If any clause or portion of this agreement is deemed to be invalid, the entire
agreement shall not be deemed to be invalid, the invalid or void clause shall be
replaced by language taking the economic interests of both parties into
consideration.
Munich, May 15, 1997 Baldham, May 15, 1997
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DATA CONSULT ENTECS, Inc.
