LICENSING AGREEMENT
EXHIBIT
10.2 - LICENSING AGREEMENT BETWEEN INFO-HOLD, INC. AND XXXX X. XXXXXXXXXX DATED
SEPTEMBER 25, 1995
Agreement
made and entered into as of this 25th day of September 1995, by and between
Info-Hold,
Inc. ("Info-Hold") ("Licensee"), an Ohio corporation with its principal place
of
business at 000 Xxxxxxxxxxxx
Xxxxx, Xxxxx 000, Xxxxxxx, Xxxx 00000, and Xxxx X. Xxxxxxxxxx ("Inventor")
("Licensor")
of 0000
Xxxxxx Xxx Xxx Xxxx, Xxxxxxxxxx, Xxxx 00000.
WITNESSETH:
Whereas,
Xxxx X. Xxxxxxxxxx is the inventor of, and applicant on U.S. Patent Application.
Serial
No. 07/999,592, filed December 31, 1992, for an on-hold messaging system and
methods; and
Whereas,
Info-Hold, in contemplation of the issuance of certain patent or patents, seeks
certain rights and protections with regard to the above-referenced system and
methods;
Now
therefore, in consideration of the mutual covenants and obligations contained
herein, the
parties
agree as follows:
1. Licensor
hereby grants to Info-hold a non-exclusive license to manufacture, use and/
or
sell on-hold message systems which incorporate, in whole or in part, any systems
or methods which are part of inventor's
on-hold message system as referenced by U.S. Patent Application, Serial No.
07/
999,592 and
currently pending before the U.S. Patent and Trademark Office and as
amended.
2. Licensor
hereby grants to Info-Hold the non-exclusive right to grant sub-licenses, which
may include any or all of Info-Hold's rights herein obtained from
licensor.
3. In
exchange for the rights herein granted above by licensor, Info-Hold agrees
to
pay all legal fees and costs for the prosecution of the above-referenced patent
application and amendments thereto.
4. In
the
event that a patent or patents are issued to licensor for any of the
above-referenced claims, Info-Hold shall owe a royalty to licensor of five
(5%)
per
cent
of the gross sales amount, induding
renewals, for all on-hold message systems which employ any systems and/or
methods covered
by such
patents and are sold by Info-Hold subsequent to the date of issuance of such
patent or patents.
5. Licensee
Info-Hold shall pay to licensor a royalty of three (3%) per cent of the amount
of gross
sales, induding renewals, by any Info-Hold sub-licensee; of any on-hold message
system which is
the
subject of a sub-licensing arrangment contemplated by this
agreement.
6. If
Info-Hold has paid royalties under this agreement pursuant to paragraphs 4
and/
or 5, above, and the underlying patent or patents are subsequently ruled
invalid, Info-Hold shall have no recovery from licensor for royalties paid
for
the period in which a patent was apparently valid.
7. Payment
of royalties under this agreement shall be made every ninety days, beginning
from the date of issuance of any patent or patents referenced herein, and shall
be paid upon cash receipts of direct
sales by licensee, as enumerated in paragraph 4, above, and/ or sub-licensing
fees or royalties, as
enumerated in paragraph 5, above, for each ninety day period. A sale or renewal
by any entity in which
Info-Hold owns more than a 50% interest shall be considered a sale or renewal
by
Info-Hold for
purposes
of this agreement.
Page
2 of
2
8. Licensor
shall have the right to inspect all such books and records of Info-Hold as
are
reasonably necessary to confirm that royalty payments are being timely and
fairly made under the terms of this agreement. In the case of a dispute between
the parties, regarding royalty payments, licensor shall have the right to an
accounting upon 30 days written notice to Info-Hold.
9. With
regard to certain contemplated improvements of the above-referenced system
and
methods, which improvements are currently known to the parties, under
development, and presently known as the INFO-LINK system, licensee shall
cooperate with licensor in the continued development of
such,
and shall be responsible for all costs and expenses of development and
production, as well as all
costs
and expenses related to the prosecution of any patent applications for that
system, or related systems, notwithstanding that licensor be the inventor and/or
applicant for such claims.
10. Licensor
hereby grants to Info-Hold the non-exclusive right to manufacture, use and/
or
sell any message system which incorporates, in whole or in part, any systems
or
methods which are part of licensor/inventor's on-hold message system as
referenced in paragraph 9, except that, nothing in this agreement shall be
construed to authorize Info-Hold to sub-license any rights, to any party or
entity whatsoever, with regard to such systems or methods, which right to
sub-license is being specifically witheld by licensor. Info- Hold agrees to
pay
to licensor a royalty of five (5%) per cent of the gross sales amount with
respect to the products which are the subject of this paragraph, under the
same
terms as are provided for under paragraphs 5 and 7 herein.
11. Info-Hold
may not assign any rights granted under this agreement without the express,
written
consent of licensor, which consent will not be unreasonably withheld. Licensor
specifically
reserves
the right to assign his rights and interests in this agreement.
12. This
agreement represents and incorporates the entire understanding of the parties
with respect to the subject matter contained herein, and the parties acknowledge
that it is intended to supercede, cancel, and terminate any prior understandings
or representations that may have existed between them, whether expressed or
implied, with regard to these matters. Info-Hold specifically waives any
property rights, whether shop-rights, work for hire, or under any legal theory
whatsoever, in any inventions or products which are the subject of this
agreement, beyond what is granted herein.
13.
The
provisions of this agreement are severable, and if any one or more provisions
are determined
to be illegal or unenforceable, in whole or in part, the remaining provisions,
or parts
thereof,
shall be binding and enforceable.
14.
Subject to an adjudication by a court of competent jurisdiction that federal
questions are involved and/ or that federal law shall govern, this agreement
shall be construed under the laws of the State of Ohio, and all disputes arising
hereunder shall be resolved in the state courts of Ohio.
In
witness whereof, Info-Hold, Inc., licensee, and Xxxx X Xxxxxxxxxx, licensor,
have executed this
agreement at Milford, Ohio on this 25th day of September 1995.
| S/S_Joey X. Xxxxxxxxxx | |||
|
Xxxx
X. Xxxxxxxxxx
0000
Xxxxxxxxx Xxxx
Xxxxxxxxxx,
XX 00000
|
|
s/s
Xxxxxx X. Xxxx, Esq.
|
|||
|
Xxxxxx
X. Xxxx, Esq., General Counsel
INFO-HOLD,
INC.
0000
Xxxxxxx Xxxx
Xxxxxxxxxx,
XX 00000
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