AMENDMENT NO. 1 TO EXCLUSIVE LICENSE AGREEMENT
AMENDMENT NO. 1 TO EXCLUSIVE LICENSE AGREEMENT
This Amendment No. 1 to Exclusive License Agreement (“Amendment No. 1”), dated the __th day of November, 2021, is made by and between BUILD IP LLC, a Nevada limited liability company (“Licensor”), and BOXABL INC., a Nevada corporation (“Licensee”). Licensor and Licensee may be referred to herein collectively as the “Parties”.
WHEREAS, the Parties have entered into an Exclusive License Agreement effective as of the 16th day of June, 2020 (“Exclusive License Agreement”); and
WHEREAS, the Parties now desire to amend the Exclusive License Agreement as set forth below.
NOW, THEREFORE, for good and valuable consideration, and intending to be legally bound hereby, the Parties covenant and agree as follows:
1.All capitalized terms in this Amendment No. 1 not expressly defined herein shall have the meaning set forth in the Exclusive License Agreement.
2.Amend Section 1.3 of the Exclusive License Agreement to read as follows:
“1.3 “Exclusively Licensed IP” means the Licensed Patents, the Licensed Factory Know-How, the Licensed Structure Know-How and the Licensed Trademarks.”
3.Amend Section 1.4 of the Exclusive License Agreement to read as follows:
“1.4 “Licensed IP” means the Exclusively Licensed IP and the Licensed Transport Know-How.”
4.Amend Section 1.7 of the Exclusive License Agreement to read as follows:
“1.7 “Licensed Patents” means the Factory Patents, the Structure Patents and the Transport Patents.”
5.Amend Subsection 1.12(i) of the Exclusive License Agreement to read as follows:
“(ii) utilizes any of the Licensed Factory Know-How, the Licensed Structure Know-How or the Licensed Transport Know-How; or”
6.Amend Section 1.16 of the Exclusive License Agreement to read as follows:
“1.16“Third Party Infringement” means: (a) the manufacture, importation, export, use, offering for sale or lease, sale, lease or transfer of a product, by an unauthorized third party in the Licensed Territory, covered by an issued and unexpired claim of any issued Factory Patent or Structure Patent; (b) the manufacture, importation, export, use, offering for sale or lease, sale, lease or transfer in the Building Transport Field of a product, by an unauthorized third party in the Licensed Territory, covered by an issued and unexpired
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claim of any issued Transport Patent; (c) the utilization by an unauthorized third party of any Licensed Factory Know-How or Licensed Structure Know-How in the Licensed Territory; or (d) the use of any xxxx or name the same as or confusingly similar to any of the Licensed Trademarks by an unauthorized third party in the Licensed Territory.”
7.Add the following new Section 1.20 to the Exclusive License Agreement:
“1.20“Factory Patents” means (a) all United States and foreign patent applications and patents set forth in Exhibit A-3 hereto; (b) any and all United States and foreign patent applications that claim priority benefit of the filing date of any of the patents and patent applications identified in Exhibit A-3 hereto, including non-provisional applications, design patent applications, continuation, divisional and continuation-in-part applications, applications filed pursuant to international convention or treaty, national stage applications, reissue applications and applications for reexamination; and (c) any and all United States and foreign patents issuing on any patent application that is the subject of (a) or (b) above, together with any and all reissue applications, reissue patents, extensions, renewals, applications for reexamination and reexamination certificates for or based upon any such patent.”
8.Add the following new Section 1.21 to the Exclusive License Agreement:
1.21“Licensed Factory Know-How” means any and all proprietary and other technology, data, information and knowledge, patentable or not, copyrightable or not, acquired by Licensor under the Asset Assignment Agreement between 500 Group, Inc. and Licensor executed June 15, 2020, specifically relating to the manufacture in a factory facility of foldable building structures, including marketing plans, strategy and information, cost information, sales leads, drawings, renderings and designs.
9.Add the following new Subsection 2.1.6 to the Exclusive License Agreement:
“2.1.6Exclusive Factory Patents License. Licensor hereby grants to Licensee a sole and exclusive license under the Factory Patents to make, have made for it, import, export, use, offer for sale or lease, sell, lease and transfer Licensed Products in the Licensed Territory.
10.Add the following new Subsection 2.1.7 to the Exclusive License Agreement:
“2.1.7Exclusive Factory Know-How License. Licensor hereby grants to Licensee a sole and exclusive license to use the Licensed Factory Know-How in connection with the manufacture, importation, export, use, offering for sale or lease, sale, lease and transfer of Licensed Products in the Licensed Territory.”
11.Amend Section 2.7 of the Exclusive License Agreement to read as follows:
“2.7No Disclosure Obligation; Confidentiality. Nothing in this Agreement will be construed as imposing on Licensor any obligation to disclose to Licensee any technology, data, information or knowledge. Licensee agrees not to disclose to any third party any confidential Licensed Factory Know-How, Licensed Structure Know-How or Licensed
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Transport Know-How, except under sublicense as permitted in this Agreement or otherwise in writing by Licensor.”
12.Exhibit A-1 to the Exclusive License Agreement shall be and hereby is deemed to include all patents and patent applications set forth in Exhibit A-1 Amendment No. 1, which is attached to this Amendment No. 1.
13.Exhibit A-2 to the Exclusive License Agreement shall be and hereby is deemed to include all patents and patent applications set forth in Exhibit A-2 Amendment No. 1, which is attached to this Amendment No. 1.
14.Add to the Exclusive License Agreement the attached Exhibit A-3 Amendment No. 1, which shall be and hereby is deemed as if attached and fully set forth in the Exclusive License Agreement.
15.This Amendment No. 1 shall be and hereby is deemed effective, and shall be and hereby is deemed to apply, as of the Effective Date. All other terms and conditions of the Exclusive License Agreement remain in full force and effect as set forth as of the Effective Date.
[Signature Page, Exhibit A-1 Amendment No. 1, Exhibit A-2 Amendment No. 1 and Exhibit A-3 Amendment No. 1 follow]
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IN WITNESS WHEREOF, the Parties hereto have duly executed this Amendment No. 1 to Exclusive License Agreement as of the dates indicated below.
Licensor:
BUILD IP LLC
Name:
Title:
Dated: ________________________
Licensee:
Name:
Title:
Dated: ________________________
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Exhibit A-1 Amendment No. 1
Structure Patents
JURIS | TITLE | STATUS | APP. NO. | APP. DATE | XXX. NO. | PATENT |
US | Modular Prefabricated House | Patented | 10/653,523 | 9/2/2003 | 8,474,194 | 7/2/2013 |
US | Modular Prefabricated House | Patented | 13/900,579 | 5/23/2013 | 8,733,029 | 5/27/2014 |
CA | Modular Pre-Fabricated House | Patented | 2,442,403 | 9/24/2003 | 2442403 | 12/2/2008 |
US | Customizable Transportable Structures and Components Therefor | Patented | 16/143,598 | 9/27/2018 | 10,688,906 | 6/23/2020 |
US | Customizable Transportable Structures and Components Therefor | Patented | 16/804,473 | 2/28/2020 | 10,829,029 | 11/10/2020 |
US | Customizable Transportable Structures and Components Therefor | Patented | 15/931,768 | 5/14/2020 | 10,926,689 | 2/23/2021 |
PCT | Customizable Transportable Structures and Components Therefor | — | PCT/US18/53006 | 9/27/2018 |
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EU | Customizable Transportable Structures and Components Therefor | Pending | 18 864 413.2 | 4/30/2020 |
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CA | Customizable Transportable Structures and Components Therefor | Patented | 3,078,484 | 4/3/2020 | 3,078,484 |
7/13/2021 |
US | Foldable Building Structures with Utility Channels . . . . | Patented | 16/786,130 | 2/10/2020 |
11,118,344 |
9/14/2021 |
US | Foldable Building Structures with Utility Channels . . . . | Pending | 17/245,187 | 4/30/2021 |
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PCT | Foldable Building Structures with Utility Channels . . . . | — | PCT/US20/17524 | 2/10/2020 |
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AU | Foldable Building Structures with Utility Channels . . . . | Pending | 2020221056 | 7/2/2021 |
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CA | Foldable Building Structures with Utility Channels . . . . | Pending | 3,129,693 | 8/9/2021 |
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CN | Foldable Building Structures with Utility Channels . . . . | Pending | 202080014606.4. | 8/13/2021 |
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EU | Foldable Building Structures with Utility Channels . . . . | Pending | 20 755 992.3 | 9/14/2021 |
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JP | Foldable Building Structures with Utility Channels . . . . | Pending | 2021-547830 | 8/13/2021 |
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MX | Foldable Building Structures with Utility Channels . . . . | Pending | MX/a/ 2021/0097120 | 8/12/2021 |
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SA | Foldable Building Structures with Utility Channels . . . . | Pending | 521422646 | 7/28/2021 |
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US | Enclosure Component Perimeter Structures | Pending | 16/786,202 | 2/10/2020 |
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PCT | Enclosure Component Perimeter Structures | — | PCT/US20/17527 | 2/10/2020 |
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CA | Enclosure Component Perimeter Structures | Pending | to be provided | 8/9/2021 |
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CN | Enclosure Component Perimeter Structures | Pending | 202080014607.9 | 8/13/2021 |
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EU | Enclosure Component Perimeter Structures | Pending | 20 755 993.1 | 9/14/2021 |
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JP | Enclosure Component Perimeter Structures | Pending | 2021-547829 | 8/13/2021 |
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US | Equipment . . . for Erecting a Transportable Foldable Building Structure | Pending | 16/786,315 | 2/10/2020 |
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PCT | Equipment . . . for Erecting a Transportable Foldable Building Structure | — | PCT/US20/17528 | 2/10/2020 |
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US | Enclosure Component Sealing Systems | Pending | 63/181,447 | 4/29/2021 |
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US | Enclosure Component Edge Seal Systems | Pending | 17/513,176 | 10/28/2021 |
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US | Enclosure Component Compression Seal Systems | Pending | 17/513,207 | 10/28/2021 |
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US | Enclosure Component Shear Seal Systems | Pending | 17/513,266 | 10/28/2021 |
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PCT | Enclosure Component Sealing Systems | Pending | PCT/US21/56415 | 10/25/2021 |
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US | Folding Beam Systems | Pending | 63/188,101 | 5/13/2021 |
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US | Foldable Transportable Buildings | Pending | 63/192,349 | 5/24/2021 |
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US | Sheet/Panel Design for Enclosure Component Manufacture | Pending | 63/196,400 | 6/03/2021 |
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US | Sheet/Panel Design for Enclosure Component Manufacture | Pending | 17/504,883 | 10/19/2021 |
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US | Wall Component Appurtenances | Pending | 63/211,712 | 6/17/2021 |
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Exhibit A-2 Amendment No. 1
Transport Patents
JURIS. | TITLE | STATUS | APP. NO. | APP. DATE | XXX. NO. | PATENT |
US | Wheeled Assembly for Item Transport | Patented | 16/143,628 | 9/27/2018 | 11,007,921 | 5/18/2021 |
PCT | Wheeled Assembly for Item Transport | — | PCT/US18/53015 | 9/27/2018 |
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Europe | Wheeled Assembly for Item Transport | Pending | 18 863 822.5 | 4/30/2020 |
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Canada | Wheeled Assembly for Item Transport | Allowed | 3,078,486 | 4/3/2020 |
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Exhibit A-3 Amendment No. 1
Factory Patents
JURIS. | TITLE | STATUS | APP. NO. | APP. DATE | XXX. NO. | PATENT |
US | Enclosure Component Fabrication Facility | Pending | 63/136,268 | 1/12/2021 |
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