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LICENSE AGREEMENT
This License Agreement made May 17, 1996 is between:
FIRST AMERICAN SCIENTIFIC CORP, having its office at
0000 Xxxxxxx Xxxx, Xxx Xxxxx, Xxxxxx, 00000
(the "Licensee" or "First American")
OF THE FIRST PART
AND:
SPECTRASONIC CORP., having its office at Suite 1400,
1300 West Georgia Street, Vancouver, British Columbia,
V66 2Z6
(the "Licensor" or "Spectrasonic")
OF THE SECOND PART
WHEREAS:
Spectrasonic has obtained by way of agreement with
Microsonic Industries Corp. and has further developed and is the
sole and only proprietary owner of (if any exist) all patent
applications and registrations, trade-xxxx applications and
registrations, copyrights, copyright applications and
registrations, trade names and industrial designs, domestic or
foreign, owned or used by Spectrasonic, relating to the
production and operation of its disintegration machines and
related equipment (the "Equipment"), technology and methodology.
Spectrasonic is also the sole and only proprietary owner of all
trade secrets, know-how, inventions and other intellectual
property owned or used by Spectrasonic, relating to the use and
further development of its equipment, technology, and methodology
(together, the "Technology").
AND WHEREAS:
The agreement pursuant to which Spectrasonic acquired the
Technology reserved the right for one company to utilize the
Technology for its own use for gypsum disintegration in four
states of the United States;
AND WHEREAS:
Spectrasonic has granted to First American a license for the
processing of rubber and glass through the use of the Technology
in accordance with the terms and conditions of that certain
license agreement between the parties dated June 22, 1995 (the
"Glass and Rubber License Agreement").
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AND WHEREAS:
Spectrasonic has granted to First American a license for the
processing of gypsum through the use of Technology in accordance
with the terms and conditions of that certain license agreement
between the parties dated February 1996 (the "Gypsum License
Agreement").
AND WHEREAS:
Spectrasonic has offered to grant to First American a
license subject to the terms and conditions as set forth herein
below, to develop, market, distribute, and sell the equipment,
technology, product and services worldwide using Spectrasonic's
Equipment and Technology.
AND WHEREAS:
First American is desirous of obtaining a license in
relation to the use and further development of the technology in
accordance with the terms and conditions of this Agreement.
NOW THEREFORE in consideration of the foregoing and other
good and valuable consideration, receipt of which is
acknowledged, Spectrasonic and First American herein agree with
each other as follows:
1. License Granted.
(a) Spectrasonic hereby grants to First American, subject
to the terms and conditions of this Agreement, a license and
right to exploit, develop, use, market, distribute and sell the
Equipment developed by Spectrasonic in relation to the
disintegration, disposal, recycling, remanufacturing or
manufacturing of any and all kinds of materials (including,
without limitation, rubber, glass and gypsum), using used or new
raw materials (hereafter, "disintegrate" or "disintegration" will
refer to such disintegration, disposal, recycling,
remanufacturing or manufacturing of any and all kinds of
materials using the Equipment and/or Technology).
The scope of this license is limited only to the extent that
Spectrasonic reserves to itself all rights to manufacture the
Equipment, as well as the right to sell, assign or otherwise
transfer such manufacturing rights in relation to the Equipment
to one or more Third parties as Spectrasonic, in its sole
discretion, sees fit; and First American agrees to purchase such
Equipment solely from Spectrasonic or Spectrasonic's assignee(s),
as the case may be, at prices agreed between First American and
Spectrasonic, or between First American and Spectrasonic's
assignee(s), as the case maybe;
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(b) The grant herein is further limited in that
Spectrasonic granted to another company the worldwide
nonexclusive rights to the Technology and Equipment as it relates
to feed and fertilizer disintegration, or matter reduced to feed
or fertilizer.
(c) Subject to the limitations contained in Section 1(a)
and (b) and the recitals hereof of this Agreement, Spectrasonic
hereby grants to First American the right to exploit in any
manner it sees fit, (whether applied for as of today, or at a
later date), all patents, patent applications and registrations,
trade-marks, trade-xxxx applications and registrations,
copyrights, copyright applications and registrations, trade names
and industrial designs, domestic and foreign owned or used by
Spectrasonic, or relating to the operations of Spectrasonic's
Equipment and Technology developed hereunder or hereafter by
Spectrasonic (if and as such exist). In addition to the above,
First American or its nominee can apply for patents as it sees
fit in its own name in relation to the Technology, and will pay
all costs of such applications. First American acknowledges that
the Technology is currently unpatented and no intellectual
property protection has been registered. Any patent or other
protection required will be the responsibility of First American;
(d) Included in the license granted hereunder is the right
to exploit all of the Technology owned or used by Spectrasonic in
relation to its Equipment and in relation to disintegration or a
related business. Also included are copies of all computer
systems and application software, including, without limitation,
copies of all documents relating thereto and the latest revisions
of all related object and source codes therefor, owned or used by
Spectrasonic relating to its Equipment. Spectrasonic also grants
to First American a license to use the Technology, the Equipment
and any of its other equipment or instruments now in existence
which relate to disintegration; provided, however, that
Spectrasonic may keep copies of all Technology, including,
without limitation, computer software, for the purpose of
producing the Equipment and further developing the Technology,
and provided further that Spectrasonic may disclose copies of
such Technology to any assignee(s) of Spectrasonic's
manufacturing rights in relation to the Equipment to the extent
deemed by Spectrasonic to be necessary to permit such assignees
to manufacture the Equipment; and any inventions or developments
of Spectrasonic will be maintained by Spectrasonic except that
Spectrasonic will inform First American of such developments:
(e) Spectrasonic has good and valid title to all of the
Technology which has been licensed to First American under this
Agreement by Spectrasonic. None of the rights of Spectrasonic in
the Technology will be impaired or affected in any way by this
transaction, or by the license contemplated by this Agreement;
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(f) The conduct of the business and the use of the
Technology does not infringe, and Spectrasonic has not received
any notice, complaint, threat, or claim alleging infringement of,
any patent, trade-xxxx, trade name, copyright or industrial
design from any other person, and the conduct by Spectrasonic of
its business in relation to the Equipment or the Technology does
not include any activity which may constitute passing off;
(g) The computer system (if any), including hardware and
software to the best of Spectrasonic's knowledge is free from
viruses;
(h) Spectrasonic acknowledges that no subsidiary or
affiliate corporation or person, or any third party person, has
any claim on the equity or an ownership interest in the Equipment
and the Technology being licensed hereunder, except a claim for
rights to the Technology alleged by Microsonic Industries Corp.
and as otherwise disclosed above. Spectrasonic is not subject to
any obligation to make any investment in, or otherwise provide by
way of loan, capital contribution or otherwise to any person to
maintain, or control or own its Equipment and Technology;
(i) Other than as disclosed herein, Spectrasonic is not a
party to or bound by an agreement which would restrict or limit
its right to carry on the business or activity granted to First
American, and/or to solicit business from any person or any
geographic area or otherwise to the conduct the business of
disintegration. Other than general legal requirements for
permits, etc., Spectrasonic is not subject to any legislation or
any judgment, order or requirement of any Court of Governmental
authority which states that Spectrasonic is not permitted to
carry on the business of disintegration. To The best of the
knowledge of Spectrasonic there are no facts or circumstances
which would materially adversely affect First American from
carrying out the business contemplated by the license granted
herein, other than as set out herein;
(j) The license herein contains the right by First American
to use or market any product, service, technology, information,
data, computer hardware or software or other property and to act
as distributor, licensor, franchiser or any of the foregoing, and
the license herein grants exclusive worldwide rights to use the
Equipment and the Technology as it relates to disintegration, all
subject to Spectrasonic's rights to manufacture the Equipment and
Spectrasonic's right to sell, transfer or otherwise assign such
manufacturing rights to one or more third parties;
(k) The recitals are incorporated into this Agreement;
(1) The license granted hereunder specifically
allows Spectrasonic to continue utilization and
development of the Technology.
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2. Term.
The license granted herein shall commence upon the execution
of this Agreement by Spectrasonic and First American and shall
continue for 99 years, unless terminated earlier by notice of
default of a material term hereof delivered by one party to the
other, which default is not cured within 30 days of such
delivery; in which case the non-defaulting party may terminate
this Agreement at its option.
3. Share Consideration.
First American shall cause 1,000,000 shares of its common
stock to be issued to Spectrasonic upon execution of this
Agreement. All of the shares issued pursuant to this Agreement
will not be registered with the S.E.C. and are "restricted"
securities as determined by Rule 144. The Parties agree that the
shares meet all of the requirements of the safe harbor
exemption from registration set forth in Regulation "5."
Furthermore, the parties agree that the "restricted period"
defined in Regulation "S" shall commence upon the issuance of the
shares. First American warrants that it has obtained a legal
opinion that such Regulation "S" shares may be traded by
Spectrasonic in the United States 60 days or more after issuance.
4. Cash Consideration.
First American shall also cause CDN$1,000,000 to be paid to
Spectrasonic as follows:
(a) CDN$50,000 on or before June 30, 1996;
(b) on or before July 15, 1996, CDN$450,000; and
(c) the balance on January 2, 1997.
There shall be no other payments due under this Agreement.
Any non-payment as required is a material breach hereunder.
5. Territory.
This license is for the worldwide rights to exploit all of
Spectrasonic's Equipment and Technology.
6. Future Developments.
Spectrasonic agrees that First American is purchasing and
has the right to participate at no extra or no future cost in all
of Spectrasonic's present and future know-how, technologies,
improvements or innovations as it relates to the Equipment and
the Technology, except that the manufacturing rights of
improvements to the Equipment remains with Spectrasonic or its
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assignee. Spectrasonic will forthwith inform First American as
to any and all improvements or innovations on a timely basis.
The parties acknowledge that Spectrasonic will continue to
research and develop the technology of disintegration machines as
such technology relates to all products. In the event of
improvements or developments that are discovered or invented by
Spectrasonic, Spectrasonic will inform First American of such
developments and will include such developments in additional
machines that are sold by Spectrasonic to First American. In the
event that First American wishes that its existing machines be
upgraded to include the new developments, Spectrasonic will
upgrade such machines of First American at First American's
request at an agreed price which ensures Spectrasonic a
reasonable profit.
7. Restriction on Spectrasonic and Others in Regards to
Licensed Users.
Spectrasonic shall neither carry on nor grant a license to
any other party to carry on the business of disintegration. Save
and except as otherwise provided for in this Agreement, First
American shall have the exclusive right to exploit the Equipment
and the Technology as it relates to the above on a worldwide
basis. First American shall have the sole and exclusive right as
against all others (even Spectrasonic) to use the Equipment and
the Technology for the purpose of disintegration.
8. Warranties
(a) Spectrasonic warrants that it has good and valid title
to all of the Technology, free and clear of any and all
encumbrances and liens of any kind, other than as disclosed
herein. Spectrasonic further warrants that it has not, and will
not license its Equipment or Technology in contravention of the
license herein;
(b) Spectrasonic warrants that it is a corporation in good
standing and is free to enter into this Agreement pursuant to a
Board of Directors' resolution. Spectrasonic is not a party to
or bound by any agreement or guarantee, indemnification,
assumption, or endorsement or any other like commitment, or
obligations, or liabilities (contingent or otherwise) which would
materially and adversely effect the license in any manner, other
than as disclosed herein;
(c) Spectrasonic warrants that it is not a party to or
bound by any outstanding or existing agreements, contracts, or
commitments whether written or oral which would effect this
license in any manner other than as disclosed herein;
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(d) First American warrants that it is a corporation in
good standing and is free to enter to this Agreement pursuant to
a Board of Directors' resolution. First American is not a party
to or bound by any agreement or guarantee, indemnification,
assumption, or endorsement or any other like commitment, or
obligations or liabilities (contingent or otherwise) which would
materially and adversely effect its ability to perform its
obligations hereunder in any manner, other than as disclosed
herein;
(e) First American agrees to develop the business of
disintegration to the best of its ability;
(f) First American warrants that it will not allow the
issuance of any shares from its treasury at less than US$1.00 per
share to any party for 1 year from the date of execution hereof;
(g) First American has filed a 10SB with the U.S. S.E.C.
and such 10SB has been cleared and receipted by the S.E.C. First
American is in good standing as to all its filings with all
relevant regulatory authorities, and warrant that it will keep
all filings up to date for at least one year after the date of
execution hereof;
(h) Any misrepresentation or breach or warranty of the
above is a material breach of this Agreement.
9. Uses and Sublicense.
Except as set out herein, First American shall have the sole
and exclusive right under this license to exploit in any manner
as it sees fit all of the Equipment, and all of the Technology as
it relates to the Equipment in existence. First American may not
sublicense, transfer or dispose of any right or license granted
herein without the express written consent of Spectrasonic; such
consent may be withheld for any reason.
10. Disclosure of Information.
First American herein agrees to keep confidential all of
Spectrasonic's proprietary Technology unless disclosure thereof
is required by law, in which event such disclosure shall be
permitted only as required.
11. Reliance.
Each to this Agreement has relied upon the representations,
warranties and acknowledgments of the other party made in this
Agreement and such terms were a condition of entering into this
agreement. Each party will indemnify and hold the other party
harmless from and against an loss or damage of any kind or
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character arising directly or indirectly by reason of the falsity
or inaccuracy of any of the above warranties and representations
or the breach of any covenant to be performed hereunder, and the
parties agree that the warranties and representation made herein
shall survive the commencement of the license hereunder.
12. Issuance of First American Shares.
Spectrasonic acknowledges receipt of First American's
Registration Statement on Form 10SB and all subsequent reports
filed by First American pursuant to the Securities Exchange Act
of 1934 as amended. All shares issued to Spectrasonic will not
be registered with the S.E.C. and are being issued pursuant to
Regulation S. Spectrasonic acknowledges that as such, the shares
may not be sold in the United States within 60 days of their
issuance.
All shares issued to Spectrasonic by First American pursuant
to this Agreement shall be issued free and clear of all liens and
encumbrances.
13. Time.
Time is of the essence of this Agreement.
14. Modifications.
Subsequent modifications to this Agreement must be in
writing and approved by both parties.
15. Termination.
This Agreement may be terminated by written consent of both
parties.
16. Entire Agreement.
Each of the parties hereto acknowledge and agree that the
Gypsum License Agreement and the Glass and Rubber Agreement have
been fully performed and satisfied in accordance with their
respective terms and conditions. As such, this Agreement
represents the entire agreement between the parties pertaining to
the subject matter hereof and supersedes all prior formal and
informal agreements, proposals, promises, inducements,
representations, conditions, warranties, understandings,
negotiations and discussions, whether oral or written, of the
parties.
17. Law.
The Agreement is governed by the law of British Columbia.
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18. Assignment.
This Agreement is not assignable by the other party without
consent first had in writing. Such consent may be unreasonably
withheld.
19. Successors.
This Agreement is binding on all successors and permitted
assigns.
20. Counterparts.
This Agreement may be executed by the parties in separate
counterparts each of which, when so executed and delivered, shall
be deemed to constitute one and the same agreement.
21. Electronic Means.
Delivery of an executed copy of this Agreement by electronic
facsimile transmission, telecopy, telex, or other means of
electronic communication producing a printed copy will be deemed
to be execution and delivery of this Agreement on the date of
such communication by the party so delivering such copy.
IN WITNESS THEREOF the parties have set their hand and seal,
the 17th day of May, 1996.
FIRST AMERICAN SCIENTIFIC CORP.
Per: ___________________________
Authorized signatory
SPECTRASONIC CORP
Per: ___________________________
Authorized signatory
