PATENT LICENCE CONTRACT
Between the undersigned:
EAUDEGAM SA
3 Avenue des Baumettes
Renens CH 1020
Represented by
Xx. Xxxxxx XXXX
On the one hand, hereafter called
"the licensor"
and
Blue Industries
00 xxx xx Xxxxxx
XX 0000 XXXXXX
Represented by
Xx. Xxxxxxx XX XXXXXX
On the one hand, hereafter called
"the licensee"
It is firstly explained that:
Eaudegam S.A. has received from the company HTCI sas an operating licence
regarding the French patent No 00 07642 and international patent PCT / FR01 / 0
1817, in validation process.
The patent No 00 07642 has been registered in France on June 15th, 2000 and the
number of the international patent's request is PCT / FR01/01817.
This patent involves a "purification process of sewage effluents"
Eaudegam S.A. declares that these industrial property rights are still enforced
as of today, that the company can freely use the rights and that they have never
subjected neither to any licensing contract, nor pledging.
HTCI has authorized by a letter on January 2nd, 2002, the company Eaudegam to
concede to Blue Industries (BTGS) the operating licence.
This being stated, the following has been agreed between the parties:
Article 1 - Subject of the contract
-----------------------------------------
The licensor conceded to the licensee, who accepts, a licence to exploit the
French patent application No. 00 07642, and the international patent application
PCT/FR01/01817 plus any patents that may be derived from them.
Article 2 - Character of the licence
------------------------------------------
The present licence is a manufacturing and marketing licence for the wastewater
purification device in accordance with the patent claims.
Articles 3 - Geographical scope
-----------------------------------
The present licence is granted for the geographical areas listed in the annexe,
i.e. the countries designated by the international patent application
PCT/FR01/01817 in which an extension of protection will be made.
Article 4 - Date of coming into effect and duration
------------------------------------------------------------
The present licence will take effect on signature of the present contract.
It is granted for a duration of ten years, and will be tacitly renewed every 5
years.
It is granted for a maximum duration equal to that of the patent unless
cancelled by one or other of the parties by registered mail at least six months
before each renewal date.
Article 5 - Maintenance in force of the patent
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The annual fees will be paid by the licensor, as will the costs of obtaining
patents, both in France and in other countries.
Article 6 - Transmissibility of the contract and sub-licences
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The licensee can in no case cede, hand over or transmit the benefits of the
present licence in any form whatsoever, except to the company BLUE INDUSTRIES, a
subsidiary of the licensee.
Furthermore, the licensee cannot grant sub-licences, without the written
agreement of the licensor.
The present licence will be cancelled as of right, if the licensee ceases to
exist because of takeover, dissolution or liquidation.
Article 7 - Financial conditions
------------------------------------
7.1 The present licence is granted on payment by the licensee to the licensor of
royalties on the sales of wastewater purification devices manufactured in
compliance with the claims of the patent, as invoiced by the licensee.
The licensee undertakes to pay a royalty of 10 % (TWO AND A HALF PERCENT) on the
turnover made by EAUDEGAM SA and BLUE INDUSTRIES SA and all their
sub-contractors, partners or clients authorised by the parties, by the sale of
devices according to the claims of the patents.
7.2 The licensee will keep special accounts in which it will indicate the
quantities of products manufactured and sold or given away free, plus the names
of all customers to whom products are delivered.
7.3 The licensee in the 7 (seven) days following the end of each quarter will
send a detailed account of sales (sales logbook or similar) for the quarter in
question to the licensor by post. The amount of the royalties never will be
less than 1.500.000 USD quarterly, that is to say 6.000.000 USD annually.
7.4 The royalties due under article 7.1 will be payable on a quarterly basis
according to the following methods.
7.4.1 In the 14 (fourteen) days following the end of each quarter, the
licensee will send the licensor a bank cheque made out to his name for the sum
corresponding to the royalties due for the quarter
7.4.2 If in the fourteen days from reception of the cheque mentioned in
article 7.4.1 the licensor has not contested the sum paid by registered mail,
the sum will be considered as having been accepted, with no subsequent right of
appeal.
7.4.3 At the end of each period of 12 (twelve) months, the parties will
adjust their accounts between themselves, if necessary.
7.5 The licensor will have a period of 90 (ninety) days from the end of each
year of executing the present contract to conduct an audit of the licensee's
accounts, for the part dealing with the products that are the subject of the
present contract, either by himself or by an accountant.
7.5 The licensor will have the faculty to redeem royalties with one single
payment corresponding to two royalties repayments. This possibility is valid
until 03.30.2002.
Article 8 - Improvements
---------------------------
Throughout the duration of the contract, the parties will keep themselves
mutually informed of all improvements or modifications made to the patented
product, in the field of application concerned.
Any improvement judged to be patentable in itself could be the subject of a
further patent application in the name of the licensor, who will make the
licensee benefit from it under the same conditions as the original patent.
Article 9 - Guarantees
-------------------------
Although not knowing of any previous similar patents, the licensor can give no
guarantee other than the material existence of the patent, and in particular is
incapable of giving any guarantee that there is freedom to exploit the patent.
This licence is therefore subject to the licensee's risks and perils.
Article 10 - Patent infringement by third parties
--------------------------------------------------------
In the event of discovering presumed patent infringement by one of the parties,
this party will inform the other immediately, and the parties will work together
to take legal action. In case of agreement, both parties will take joint legal
proceedings, the resulting costs and benefits being shares half and half between
the two parties.
However, if one or other of the parties does not agree to take proceedings, the
other party may proceed on its own at its exclusive costs and benefits, after
giving formal written notice to the other party and this latter party not
objecting.
Article 11 - Action for patent infringement by a third party
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If during the exploitation of the granted patent, legal action is taken against
the licensee for patent infringement by a third party owning a previous patent,
the licensee will be solely responsible for the costs of such an action and for
any damages which he may be forced to pay.
Article 12 - Invalidity of the patent
-------------------------------------------
If the patent on which the licence is based is invalidated by the action of a
third party, the licensee is not liable for any repayment, even partial of any
royalties or other money paid to the licensor, who will have become definitive
owner of such sums.
The invalidation of the patent would then lead to the cancellation of the
present licence, the parties would work together to conclude a possible
commercial agreement, defining if relevant the conditions for continuing the
exploitation of products by the licensee.
Article 13 - Cancellation
----------------------------
If one or other party fails to fulfil its undertaking at any time whatsoever,
and if this non-fulfilment continues for thirty days after formal notice by
registered mail to remedy the fault by the other party, the innocent party could
cancel the contract by informing the guilty party by registered mail of this
cancellation and the reasons for this cancellation.
Articles 14 - Disputes
-------------------------
For any disputes relating to the present contract, the parties undertake to give
sole legal competence to the International Chamber of Commerce of PARIS
(France).
Article 15 - Inscription
---------------------------
All powers are given to the bearer of the present contract to ensure that it is
reported and recorded as required and notably to the French "Institut National
de la Propriete Industrielle".
Article 16 - Invalidity of a clause
-----------------------------------------
If one or more of the clauses of the present contract are held to be invalid or
declared as such by application of a law, regulation or decision of a competent
legal jurisdiction, the other clauses will remain fully in force.
Signed in SIX original copies, including
ONE for each party, and
FOUR for any registration formalities of this contract with the relevant
authorities.
Signed at Annecy
On 6th February 2002
For the company BLUE Industries For the company EAUDEGAM
Xx. Xxxxxxx XX XXXXXX Xx. Xxxxxx XXXX
/s/ Xxxxxxx Xx Xxxxxx /s/ Xxxxxx Xxxx
Appendices:
- authorization from H.T.C.I. to EAUDEGAM, allowing this licence's
concession
- territories conceded in conformity with article 3 of the concession
