LICENSE AGREEMENT
THIS AGREEMENT is made this 17th day of May, 1997, between TECHNOLOGY
RESEARCH CORPORATION, a corporation organized under the laws of the State of
Florida, United States of America (herein "TRC"), having its registered office
at: 0000 000xx Xxxxxx Xxxxx, Xxxxxxxxxx, Xxxxxxx 00000, and YASKAWA CONTROL
COMPANY LIMITED (herein "YCC") organized under the laws of JAPAN, having its
principal office at: XXX Xxxx. 0-00-0 Xxxxx, Xxxxxxxxxx-xx, Xxxxxxxxxx 000
Xxxxx.
WITNESSETH THAT:
WHEREAS, TRC has developed expertise in technology used in certain Personnel
Protective Devices (PPD'S) and is the proprietor of such expertise and
technology as defined in Exhibit "A" hereto in the Territories as defined
herein.
WHEREAS, TRC desires to extend to YCC certain rights in Territories listed in
Exhibit "B" to manufacture using the TRC technology defined in Exhibit "A"
hereto.
NOW, THEREFORE, in consideration of the mutual promises and covenants contained
herein and for other good and valuable consideration, the parties hereto agree
as follows:
1. Recitals
The above recitals are true and correct and are incorporated herein by
reference.
2. Grant and Scope of License
TRC grants YCC an exclusive license subject to the terms and conditions of this
Agreement for the use of the TRC patents, technology and/or proprietary
expertise used in PPD products as set forth in Exhibit "A" hereto only in the
products manufactured and sold to market areas specified in Exhibit "C" by YCC
which products utilized the technology and expertise set forth in Exhibit "A"
hereto during the term of this agreement and provided that YCC is not in
default hereunder.
3. Term
This Agreement shall be valid for the term of 10 years subject to termination
as provided herein.
4. Initial Payment
The amount of EIGHTY FIVE THOUSAND ($85,000) U.S. dollars will be paid by YCC
to TRC according to the following schedule:
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1st payment: Twenty Eight Thousand Three Hundred Thirty four US dollars.
($28,334) due Aug 1st 1997 2nd and 3rd payments. Twenty Eight Thousand Three
Hundred Thirty Three US dollars. ($28,333) due 1st October and 1st December
respectively.
It is under stood by both parties that if Toyota does not honor YCC with
orders for the level one adapter, that a portion of the initial payment will
be applied to the initial payment of the next agreement between TRC and YCC.
5. Performance
YCC agrees to provide to TRC, within a 30 day period, after the signing of this
agreement, a business plan detailing the marketing resources and strategies to
be used in developing sales for the products that are the subject of this
agreement, YCC also agrees that the YCC performance measured against the
aforementioned plan be reviewed at the end of the 1st, and subsequent years by
both TRC and YCC. Failure of YCC to achieve the objectives outlined by the
plan may result in the conversion of the agreement to a non-exclusive license.
6. Royalties for License
YCC shall pay TRC the amount equal to Five Percent of the net sales price for
every PPD unit manufactured or sold by YCC directly or indirectly to market
areas specified in Exhibit "C" subject to the conditions set forth in Exhibit
"D". This also applies if any other PPD technology is utilized.
7. Royalty Payments
1. YCC will make the royalty payments provided for herein in installments
every 3 months, payments shall be made by wire transfer to a U.S. bank or
other institution located in Japan as shall be designated by TRC by the 21st
day following the end of the third month in the period in which payment of the
units subject to this Agreement was made.
2. YCC will keep at its office at XXX Xxxx. 0-00-0 Xxxxx, Xxxxxxxxxx-xx,
Xxxxxxxxxx 000 Xxxxx, a true and accurate account of all products which are the
subject of this Agreement. Such records will show the total number of products
manufactured, whether any such products have been disposed of other than by
sale, and the number and manner of their disposition. This list shall include
shipments to any other company or affiliate whether or not a normal invoice was
prepared. TRC shall have and is hereby given right of access itself or through
an authorized representative to those books of YCC related to these
transactions which are the subject of this Agreement for the purpose of
verifying statements received by it. Such access to be at reasonable business
hours, upon 48 hours prior notice, and at TRC expense.
8. Support and Assistance
TRC will provide YCC all detailed technical information concerning the
manufacture of the PPD utilizing the technology set forth in Exhibit "A" which
is available to it, or of which it is otherwise aware, with the exception of
the internal construction of integrated circuit Part No. 10020. TRC shall
provide YCC with basic operating parameters of integrated circuit Part No.
10020.
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9. Manufacturing and Inspection Standards
Products manufactured by YCC pursuant to this Agreement must meet all TRC
manufacturing and inspection standards as reasonably specified from time to
time. TRC shall have the right of access to YCC manufacturing facilities and
relevant records at all times during normal business hours 9 am-5 PM Monday to
Friday to assure compliance with such standards.
10. Confidentiality
YCC will use its best endeavors during the terms of this Agreement so that YCC
or its employees will not disclose any trade secrets, confidential information
or data, processes or methods of production of same or any know-how with
respect thereto obtained from TRC pursuant to this Agreement to any third party
without prior written authorization of TRC except where necessary in the course
of normal commercial practices.
11. Patents
In the event that there are improvements developed by TRC or YCC to products
or technology which are the subject of this Agreement, whether patented or not,
both parties shall make such improvements available to the respective other
party for no additional royalty.
12. Disclosure of Relationship
TRC has the right, with the prior approval of YCC, which shall not be
unreasonably withheld, to announce that YCC is utilizing the designs and
technology of TRC in production of the Products which are the subject of this
Agreement.
13. Termination of the Agreement
1. TRC shall have the right to terminate this Agreement upon the
occurrence of any of the following events:
a. YCC's failure to pay royalties as and when due where such failure
is not remedied within 30 days of YCC receipt of written notice
from TRC thereof.
b. YCC's breach of or failure to perform any other material
obligation under this Agreement where such failure is not remedied
within 30 days of YCC receipt of written notice from TRC thereof.
c. If any petition and bankruptcy is filed by or against YCC or if
any other right or remedy sought by or against YCC under any
bankruptcy or insolvency laws.
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2. Upon the termination of this Agreement, all unpaid royalties shall
become due and payable immediately.
3. Upon the termination of this Agreement, YCC shall return to TRC any
and all parts, pieces, drawings and/or technical information which it
obtained from TRC in connection with this Agreement.
14. Rights of Termination
YCC shall have the right to terminate this Agreement upon the occurrence of:
1. Any material failure of TRC to comply with its obligations hereunder,
in this event TRC will modify the amount of royalties payable pursuant
to the agreement (past and future) to adequately account for such
breach or violation by TRC that is not corrected within 60 days of TRC
receipt of a written notice from YCC.
2. Any suit being successfully brought against either or both of YCC or
TRC by any third party for infringement of any intellectual property
right licenses pursuant to this Agreement, unless such situations are
resolved to mutual satisfaction.
3. Any of the intellectual property rights licenses pursuant to this
Agreement being held to be infringing the rights of any third party,
or otherwise being invalid unless such situations are resolved to
mutual satisfaction.
4. Any petition and bankruptcy filed by or against TRC, or any other
right or remedy sought by or against TRC under any bankruptcy or
insolvency laws, the rights of YCC to be protected to the maximum
degree permitted by the aforementioned laws.
5. TRC being sold or acquired. The rights of YCC under this agreement
shall be maintained.
15. Assignments of Rights
TRC or YCC may not assign or transfer in any manner, including to any successor
or assigns, the rights benefits, or obligations it has under this agreement
without the express written permission of the other respective party which
should not unreasonably be withheld.
16. Product Liability
1. YCC shall indemnify and hold TRC totally free and harmless from and against
any liability whatsoever associated with the manufacture and sale of products
subject to this Agreement (excepting such liability which may arise as a
consequence of any claim of infringement of intellectual property rights of YCC
following TRC's detailed information provided pursuant to Exhibit "A" or
applying the processes set out in any TRC patent), including but not limited
to defects in materials and workmanship.
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2. TRC hereby indemnifies and holds YCC harmless from and against any
liability arising from any actions, claims, or demands commenced or made by
any persons that any technology, patent, or other intellectual property right
licenses by TRC pursuant to the Agreement infringes the intellectual property
rights of any other person. Or from any material defect arising from the
product design, or from materials or workmanship if the parts for the products
subject to this agreement are supplied by TRC.
17. Notices and Consents
Any notice, certification or consent required by this Agreement shall not be
deemed given to a party unless it is in writing and mailed by registered post,
such notice shall be deemed to be received five (5) days after posting,
delivered to such party at the address specified in the preamble to this
Agreement or sent by telex or facsimile to such party.
18. Modifications and Waivers
This instrument constitutes the sole agreement between the parties with respect
to the subject matter hereof, supersedes all prior agreements, oral or written,
is enforceable in accordance with its terms and is binding upon the successors
and assigns hereof. Neither this Agreement nor any provision hereof may be
modified, waived, discharged, or terminated except by a writing signed by the
parties hereto. Any waiver or any provision or requirement of this Agreement
shall be valid only in the instance for which given, shall not be deemed
continuing and shall not constitute a waiver of any other provision hereof.
19. Severability
If any provision of this Agreement is found to be invalid, the remainder of
this Agreement shall be valid and not affected thereby.
20. Governing Law
This Agreement shall be governed and construed under the laws of the party to
the Agreement bringing the action for default. In the case of TRC the laws of
the State of Florida, United States of America and in the case of YCC the laws
of Japan.
21. Annual Meetings
Annual Meetings will be arranged between the principals of YCC and TRC, the
first to take place within twelve (12) months of the day of this Agreement and
subsequently to be held within twelve (12) months of the previous meeting. The
above meetings shall rotate alternately each year between TRC and YCC main
offices.
22. Captions
The captions of the paragraphs hereof have no effect in interpreting this
Agreement.
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IN WITNESS WHEREOF the parties hereto have executed this Agreement as of the
date first written above.
TECHNOLOGY RESEARCH CORPORATION
By: /S/ Xxxxxxx X. Xxxxxxx
_____________________________
Xxxxxxx X. Xxxxxxx President
Witness: /S/ Xxxxxx X. Xxxxxx, Xx.
_________________________
Xxxxxx X. Xxxxxx, Xx.
YASKAWA CONTROL COMPANY LIMITED.
By: /S/ Xxxxxx Xxxxxxxx
______________________________
Xxxxxx Xxxxxxxx President
Witness: /S/ Y. Nakamara
________________________
Y. Nakamara
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EXHIBIT A
Under the terms and conditions of this Agreement it is recognized that TRC
possesses Experience and Know-How relating to the technology in Design and
Manufacture of Personnel Protective Devices(1) (PPD) products, that are
designed by TRC to meet the requirements for electric vehicle charging systems.
Specifically the products listed below:
1. Level One, and Level Two Electric Vehicle Charging Adapters. (Part numbers
to be assigned)
2. Specific TRC products listed below such as:
1 34470-001 100v 15/20amp (Honda Inline)
2 34480-001 200v 15/20amp (Honda Inline)
3 32160 208/240v 32amp Circuit board assembly (level 2)
3. Other Electric Vehicle products as requirements develop, subject to
approval by both TRC and YCC.
The TRC experience and Know How related to the aforementioned products,
includes but is not restricted to: Patents, manufacturing procedures, test
criteria, schematics, design and support documentation, to facilitate
manufacture of PPD products, e.g.: Plughead, Inline and Panel mount devices.
(1) Personnel protective devices are devices that provide protection
for personnel against the hazards of electric shock.
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EXHIBIT B
TERRITORY: JAPAN
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EXHIBIT C
MARKET AREA:
ELECTRIC VEHICLES
Japanese electric vehicle manufactures, their Japanese affiliates, or
authorized suppliers.
NOTE: "ELECTRIC VEHICLES"
Means for products associated with battery charging systems intended for use
with electric vehicles.
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EXHIBIT D
ROYALTIES:
Depending on the percentage of a total given product purchased by YCC from TRC,
the royalty rate will be adjusted based on the following:
K = 1-(A/B)
A = TRC cost for the product (partial or total) sold to YCC
B = The TRC cost for the same total product
C = Royalty rate (clause 6)
ADJUSTED ROYALTY RATE C times K
The purpose of the above equation is to adjust the royalty rate in proportion
to the total or partial product sold by TRC to YCC.
For example:
For a given product assume B = 10.
To calculate the factor K
a. TRC supplies YCC with none of the total product (YCC manufactures complete
product),
therefor A = 0,
then K=1-(0/10) = 1, YCC pays full royalty
b. TRC supplies YCC with 50% of the total product ,
therefor A = 5
then K=1-(5/10) = 0.5, YCC pays 50% of royalty
c. TRC supplies YCC with 100% of the total product
therefor A = 10
then K=1-(10/10) = 0, YCC pays no royalty
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MARKETING AND SALES AGREEMENT
THIS AGREEMENT is made this 17th Day of May, 1997, between TECHNOLOGY RESEARCH
CORPORATION, a corporation organized under the laws of the State of Florida,
United States of America (herein "TRC"), having its registered office at 0000
000xx Xxxxxx Xxxxx, Xxxxxxxxxx, Xxxxxxx 00000, and YASKAWA CONTROL COMPANY
LIMITED (herein YCC) a limited company organized under the laws of JAPAN,
having its principal offices at: XXX Xxxx. 0-00-0 Xxxxx, Xxxxxxxxxx-xx,
Xxxxxxxxxx 000 Xxxxx.
WITNESSETH THAT:
WHEREAS, TRC has developed certain products designed to protect against fire
and electric shock namely: all TRC products listed under the trade names
"Electra Shield", "Shock Shield", and "Fire Shield", which include GFCI, ALCI,
ELCI, PPD, CCID products; and any future products that may evolve under the
category of electric shock protection. (herein after called "Products").
WHEREAS, TRC desires to extend to YCC certain rights to sell "Products" in
territories and markets described herein.
NOW, THEREFORE, in consideration of the mutual promises and covenants contained
herein and for other good and valuable consideration, the parties hereto agree
as follows:
1. Recitals
The above recitals are true and correct and are incorporated herein by
reference.
2. Grant and Scope of Agreement
TRC grants YCC exclusive sales and marketing rights subject to the terms and
conditions of this Agreement for the use of the TRC patents, technology and
expertise used in the "Products". During the term of this agreement and
provided that YCC is not in default hereunder, TRC agrees not to grant any
other organization located in Territories the marketing rights with respect to
the "Products". YCC agrees that they will not offer, represent or sell, any
other products that compete with the "Products".
3. Term and Initial payment
This Agreement shall be for a term of five (5) years subject to termination as
provided herein. The agreement will be automatically renewed for additional
five (5) year periods. All other conditions will remain as before. Notice of
intent not to renew the agreement must be given six (6) months prior to the
next renewal date.
The amount of Fifty Thousand ($50,000.00) U.S. dollars is to be paid on the
signing of the agreement.
4. Performance to Maintain Exclusivity
The minimum annual purchase requirement (YCC orders to TRC for products covered
under this agreement) to maintain exclusivity under the terms and conditions of
this agreement are as follows:
YCC attains a minimum of Five Million US Dollars ($5,000,000) annual sales
within a three year period commencing on the date of signing of the agreement.
After eighteen months the parties may review this requirement in view of YCC
actual performance, and may mutually agree to adjust the minimum number as
appropriate. Any failure by YCC to market and support the sale of the
"Products". will provide TRC the option of converting the sales and marketing
rights described in Clause 2 from exclusive to non-exclusive rights.
5. Territories and Markets
Territory: Japan
Markets: All Japanese market areas for the "Products".
6. Disclosure of Relationship with YCC
TRC has the right, with the prior approval of YCC which shall not be
unreasonably withheld, to divulge to any of its customers that YCC is
utilizing the designs and technology of TRC in production of the Products
which are the subject of this Agreement.
7. Guarantee
7.1 TRC guarantees under the TRC standard terms and conditions of sale, that
the products delivered to YCC comply with the pertinent TRC specifications
for the product(s) in question.
7.2 YCC shall notify in writing to TRC any incident of possible defect and non
conformity of the products within 30 days from their discovery, but however not
later than one year after the date they have been put in the market and, in any
case not later than 18 months after the date of delivery to YCC.
7.3 TRC shall furthermore regularly perform all controls that are necessary
for ensuring the quality of the manufacturing process, the compliance with the
agreed technical specifications, and with the requirements concerning the
function and aspects of the products.
8. Industrial Property Rights
TRC guarantees that the products supplied to YCC do not infringe any industrial
property right of third parties and agrees to hold YCC harmless from any claim
of third parties concerning such matter.
9. Manufacturer's Liability
Any liability arising from defective products which are the subject of the
Agreement, included any damages to persons or goods, shall be at the exclusive
charge of TRC, who shall therefore keep YCC harmless from any claim of third
parties, and shall adequately insure himself against any such risks, excluding
damage created by transportation shipment, or damage to mentioned product
created by misuse.
10. Force Majeure
10.1 In case of force majeure, neither party shall be responsible for delays,
or for failure to perform, in whole or in part, under the terms of the present
contract. The term "force majeure" shall mean any event which is independent
from the will or the power of the parties, and which is beyond their control,
it being absolutely unforeseeable and not surmountable. Force majeure shall
include, but is shall not be limited to the following events: natural
disasters, war, riots.
10.2 In case of force majeure, the performance of the contract shall be
suspended, but solely for the duration of the force majeure event. The party
invoking force majeure shall immediately notify the other party by means of
registered letter with advice of receipt. However, should force majeure cause
the suspension of the contract for a period exceeding 3 months, each party
shall have the right to terminate the contract, by means of registered letter
with advice of receipt.
11. Prohibition of Assignment
Neither party shall have the right to assign the rights or obligations under
the present contract, without the previous written consent of the other party.
12. Termination of the Agreement
TRC shall have the right to terminate this Agreement upon the occurrence of
any of the following events:
YCC's breach of or failure to perform any material obligation under this
Agreement where such failure is not remedied within 30 days of YCC receipt of
written notice from TRC thereof. If any petition and bankruptcy is filed by or
against YCC or if any other right or remedy sought by or against YCC under any
bankruptcy or insolvency laws of JAPAN.
13. Rights of Termination
YCC shall have the right to terminate this Agreement upon the occurrence of:
(a) any material failure of TRC to comply with its obligations hereunder which
is not cured within thirty (30) days of TRC's written receipt of notice from
YCC thereof.
(b) any suit being successfully brought against either or both of YCC or TRC
by any third party for infringement of any intellectual property right licenses
pursuant to this Agreement.
(c) any of the intellectual property rights licenses pursuant to this
Agreement being held to be infringing the rights of any third party, or
otherwise being invalid.
14. Modifications and Waivers
This instrument constitutes the sole agreement between the parties with respect
to the subject matter thereof supersedes all prior agreements, oral or written,
is enforceable in accordance with its terms and is binding upon the successors
and assigns hereof. Neither this Agreement nor any provision hereof may be
modified, waived, discharged, or terminated except by a writing signed by the
parties hereto. Any waiver or any provision or requirement of this Agreement
shall be valid only in the instance for which given, shall not be deemed
continuing and shall not constitute a waiver of any other provision hereof.
15. Severability
If any provision of this Agreement is found to be invalid, the remainder of
this Agreement shall be valid and not affected thereby.
16. Governing Law
This Agreement shall be governed and construed under the laws of the party to
the Agreement bringing the action for default. This is in the case of TRC, the
laws of the State of Florida, United States of America: in the case of YCC
the laws of JAPAN.
17. Annual Meetings
Annual Meetings will be arranged between principals of YCC and TRC, the first
to take place within twelve (12) months of the day of this Agreement and
subsequently to be held within twelve (12) months of the previous meeting.
The above meetings shall rotate alternately each year between TRC and YCC main
offices.
18. Captions
The captions of the paragraphs hereof have no effect in interpreting this
Agreement.
IN WITNESS WHEREOF the parties hereto have executed this Agreement as of the
date first written above.
TECHNOLOGY RESEARCH CORPORATION, a corporation organized under the laws of the
State of Florida.
By: /S/ Xxxxxxx X. Xxxxxxx
______________________________
Xxxxxxx X. Xxxxxxx President
Witness: /S/ Xxxxxx X. Xxxxxx, Xx.
_________________________
Xxxxxx X. Xxxxxx, Xx.
YASKAWA CONTROL COMPANY LIMITED
By: /S/ Xxxxxx Xxxxxxxx
______________________________
Xxxxxx Xxxxxxxx President
Witness: /S/ X. Xxxxxxxx
__________________________
X. Xxxxxxxx
