Exhibit 99.1
LICENSE AGREEMENT
This Agreement is made effective this first day of July, 2004 by and between
Temple University - Of The Commonwealth System of Higher Education (hereinafter
referred to as "TEMPLE"), a corporation organized and existing under the laws of
the Commonwealth of Pennsylvania, having a principal place of business at Xxxxx
Xxxxxx xxx Xxxxxxxxxx Xxxxxx, Xxxxxxxxxxxx, Xxxxxxxxxxxx and Save the World Air,
Inc. (hereinafter referred to as "COMPANY"), a corporation organized and
existing under the laws of the State of Nevada, having a principal place of
business at 0000 Xxxxxxxxxx Xxxxxxxxx, Xxxxx Xxxxxxxxx, Xxxxxxxxxx 00000.
WHEREAS, TEMPLE and The RAND Corporation have entered into an agreement made
effective July 1, 2004 (hereinafter referred as the "RAND AGREEMENT") for a
research project with Xx. Xxxxxxx Xxx as principal investigator;
WHEREAS, all intellectual property, including the entire right and interests in
any patent application, in the United States, or elsewhere, arising out of such
intellectual property, resulting from research made under the RAND AGREEMENT is
the sole property of TEMPLE;
WHEREAS, COMPANY desires to obtain an exclusive worldwide license under patent
applications and patents for the aforementioned intellectual property;
NOW, THEREFORE, in consideration of the premises and of the covenants and
obligations hereinafter set forth, and intending to be legally bound, the
parties hereby agree as follows:
ARTICLE 1. DEFINITIONS
The following definitions shall apply throughout this Agreement:
1.1. "AFFILIATE" shall mean each and every business entity controlling,
controlled by or under common control with COMPANY for the purposes of
manufacture, use or sale of LICENSED PRODUCT. For purposes of this definition
"control" shall mean ownership, directly or indirectly, of at least fifty
percent (50%) of the voting stock.
1.2. "CONFIDENTIAL INFORMATION" shall mean any information disclosed or tangible
property supplied by one party to the other pursuant to this Agreement provided
that information disclosed in writing shall be deemed CONFIDENTIAL INFORMATION
only if marked "Confidential" and information disclosed orally shall be deemed
CONFIDENTIAL INFORMATION only if reduced to writing and a copy marked
"Confidential" is provided to the receiving party within thirty (30) days of the
date of oral disclosure. However, CONFIDENTIAL
INFORMATION shall not include information that: (i) was known to the receiving
party prior to the date of disclosure by the disclosing party or is developed
independently of information received from the disclosing party by those who
have not had access to this information; or (ii) is lawfully received in good
faith at any time by the receiving party from others lawfully in possession of
the same and having the right to disclose the same; or (iii) is, as of the date
of receipt, in the public domain or subsequently enters the public domain other
than by reason of acts or omissions of the receiving party; or (iv) is required
to be disclosed by law, rule of court or regulation; or (v) is independently
developed by the receiving party, as evidenced by written records.
1.3. "EFFECTIVE DATE" shall mean the date first above written as the effective
date of this Agreement.
1.4. "INVENTOR" shall mean, singly or collectively, Xx. Xxxxxxx Xxx of the
TEMPLE faculty.
1.5. "LICENSED PRODUCT" shall mean any product the use, SALE, offer for SALE,
manufacture, or importation of which, if unlicensed, would infringe one or more
VALID CLAIMS of: (i) a patent application within PATENT RIGHTS if such patent
application were issued as a patent or (ii) a patent within PATENT RIGHTS. A
product which is a LICENSED PRODUCT by virtue of its use, offer for SALE,
manufacture, or importation under at least one VALID CLAIM within PATENT RIGHTS
shall remain a LICENSED PRODUCT for all purposes of this Agreement including but
not limited to calculation of NET SALES, notwithstanding such product's
subsequent exportation to another country where its further disposition is not
covered by any VALID CLAIM within PATENT RIGHTS.
1.6. "LICENSEE" shall mean COMPANY and its AFFILIATES.
1.7. "NET SALES" shall mean the gross receipts from the SALE, in any country, of
LICENSED PRODUCT by LICENSEE or by its SUBLICENSEES less deductions for: (i)
transportation and insurance charges; (ii) sales and excise taxes, and any other
governmental charges or duties paid; (ii) normal and customary trade, quantity
and cash discounts allowed; (iii) sales commissions; and (iv) allowances on
account of rejection or return by customers. However, except where the
SUBLICENSEE is the end-user of LICENSED PRODUCT, any SALE to a SUBLICENSEE shall
be excluded from the computation of NET SALES, but any subsequent SALE by the
SUBLICENSEE shall be included in the computation of NET SALES.
1.8. "OPTION PERIOD" shall mean the period beginning with the effective date of
the RAND AGREEMENT and ending six (6) months after expiration of the RAND
AGREEMENT.
1.9. "PATENT RIGHTS" shall mean Provisional Patent Application filed by LICENSEE
in Australia titled "Method and Apparatus for Treatment of a Fluid," Application
Number 2004902563, and certain PROJECT PATENTS as provided in Paragraph 8.1, and
any foreign counterparts thereof, or any continuations, continuations-in-part,
divisions, re-issues, additions, renewals or extensions thereof, and any patents
issuing therefrom.
1.10. "PROJECT PATENT" shall mean a United States patent application filed by
LICENSEE in TEMPLE's name for research results obtained under the RAND
AGREEMENT.
1.11. "SALE" shall mean any transaction for which consideration is received for
the sale, lease, license, transfer or other disposition of LICENSED PRODUCT by
LICENSEE or by its SUBLICENSEES.
1.12. "SUBLICENSEE" shall mean a third party which is granted a sublicense under
any of the rights granted by TEMPLE to LICENSEE under this Agreement, including
but not limited to any sublicensee of LICENSEE, any sublicensee of a sublicensee
of LICENSEE, and so on.
1.13. "TECHNICAL INFORMATION" shall mean any CONFIDENTIAL INFORMATION of a
technical nature relating to LICENSED PRODUCT, which is in the possession of
TEMPLE as of the EFFECTIVE DATE, and which is necessary or useful to LICENSEE in
furtherance of the development, manufacture or marketing of LICENSED PRODUCT.
1.14. "VALID CLAIM" shall mean a claim of a patent application or patent, which
claim has not expired and has not been held unenforceable, unpatentable or
invalid by unappealable decision of a court or other governmental agency of
competent jurisdiction.
ARTICLE 2. CONFIDENTIALITY
2.1. The receiving party shall hold all CONFIDENTIAL INFORMATION in strict
confidence for a period of five (5) years from the disclosure date; not use said
CONFIDENTIAL INFORMATION except as provided in this Agreement; and not disclose,
directly or indirectly, said CONFIDENTIAL INFORMATION to others except with the
prior written consent of the disclosing party. The receiving party shall use at
least the same degree of care to maintain CONFIDENTIAL INFORMATION secret as the
receiving party uses in maintaining secret its own confidential information, but
always at least a reasonable degree of care. The receiving party shall restrict
disclosure of CONFIDENTIAL INFORMATION solely to those of its employees and
consultants having a need to know such CONFIDENTIAL INFORMATION in order to
accomplish the purposes of this Agreement. The receiving party shall also advise
its employees and consultants, before they have access to CONFIDENTIAL
INFORMATION, of the obligations of the receiving party under this Agreement, and
require such employees and consultants to maintain those obligations.
2.2. Notwithstanding any of the provisions of Paragraph 2.1, LICENSEE shall be
entitled, without TEMPLE's prior written approval, to disclose any CONFIDENTIAL
INFORMATION of TEMPLE: (i) to the EPA or any other environmental authority in
the world, but only to the extent required by law or regulation to obtain
approval to test or market LICENSED PRODUCT and (ii) to agents, consultants or
independent contractors of LICENSEE for the sole purpose of assisting LICENSEE
in accomplishing the purposes of this Agreement provided that, prior to any such
disclosure, the recipient shall be bound by written confidentiality obligations
that are at least as strict as those of LICENSEE under this Agreement.
2.3. The receiving party shall, upon written request by the disclosing party,
promptly return all written materials or samples of tangible property received
hereunder, with the exception that one copy of said written materials may be
retained by the receiving party solely for archival purposes. In the
alternative, the receiving party shall destroy all materials and confirm such
destruction in writing.
2.4. Notwithstanding any other provision of this Agreement, it is recognized by
LICENSEE that TEMPLE, through the INVENTOR, shall have the right to publish or
present publicly the results of any research concerning LICENSED PRODUCT.
However, TEMPLE and the INVENTOR agree to notify LICENSEE in writing of any such
proposed publication or presentation thirty (30) days before submission. Should
LICENSEE, within thirty (30) days of such notification, advise TEMPLE and the
INVENTOR in writing that it wishes to file one or more patent applications
pertaining to information contained in the proposed publication or presentation,
TEMPLE shall delay submission until after LICENSEE has made such filing.
LICENSEE may also request deletion of sensitive information from the proposed
publication, and TEMPLE agrees to give good faith consideration to such a
request.
ARTICLE 3. GRANT OF LICENSE RIGHTS
3.1. TEMPLE hereby grants to LICENSEE, until the date on which this Agreement is
terminated, a world-wide exclusive license under PATENT RIGHTS and TECHNICAL
INFORMATION, with the right to grant sublicenses, to make, have made, use, sell,
offer for SALE and import LICENSED PRODUCT.
3.2. Notwithstanding the preceding license grant, TEMPLE shall retain rights to
make, have made, use and import LICENSED PRODUCT royalty-free for non-commercial
educational and research purposes only, and shall be free to grant these rights
to other non-profit educational and research institutions.
3.3. The parties acknowledge that inventions in PATENT RIGHTS may have resulted
from United States Government funding, and agree that their rights and
obligations under this Agreement shall be subject to TEMPLE's obligations to the
United States Government, if any, which arise out of the receipt by TEMPLE of
research funding from the United States Government, in which case LICENSEE
agrees that LICENSED PRODUCT sold in the United States under this Agreement
shall be manufactured substantially in the United States.
3.4. As of the EFFECTIVE DATE, COMPANY hereby assigns to TEMPLE all rights to
and under the Provisional Patent Application filed by it in Australia titled
"Method and Apparatus for Treatment of a Fluid," Application Number 2004902563.
3.5. LICENSEE shall at all times own all LICENSED PRODUCT as tangible property.
ARTICLE 4. PAYMENTS
4.1. In consideration of the license granted to LICENSEE under the terms of this
Agreement, LICENSEE shall pay to TEMPLE a royalty of two percent (2%) of NET
SALES for each calendar quarter during the term of this Agreement. Credits may
be taken against the total royalty payments due under this Paragraph 4.1 in any
calendar year ("Royalties Due"), as follows. First, payments made under
Paragraph 4.3 in such calendar may be credited against the full amount of
Royalties Due, with no carryover of unused credit to subsequent calendar years.
Second, payments made under Paragraph 4.2 in such calendar year may be credited
against the amount of Royalties Due which remains, with carryover of unused
credit to subsequent calendar years until the third (3rd) anniversary of the
expiration of the OPTION PERIOD. Third, payments made under Paragraph 4.4 in
such calendar year may be credited against the amount of Royalties Due which
remains, with carryover of unused credit to subsequent calendar years until the
tenth (10th) anniversary of the expiration of the OPTION PERIOD. The total
royalty payments due in any calendar year after the aforementioned credits have
been taken, wherever applicable, shall be referred to as "Reduced Royalties."
4.2. In further consideration of the license granted to LICENSEE under the terms
of this Agreement, LICENSEE shall pay to TEMPLE, on the first anniversary of the
expiration of the OPTION PERIOD, a non-refundable license fee of fifty thousand
dollars ($50,000.
4.3 In further consideration of the license granted to LICENSEE under the terms
of this Agreement, LICENSEE shall pay to TEMPLE, on the second anniversary of
the expiration of the OPTION PERIOD and annually thereafter, a non-refundable
license maintenance fee regardless of or irrespective of actual NET SALESThe
amount of each license maintenance fee payment shall be as follows: (i) twenty
five thousand dollars ($25,000) for the first through fourth payment, and (ii)
fifty thousand dollars ($50,000) for all subsequent payments. The payment due in
any calendar year pursuant to this Paragraph 4.3 shall be offset and reduced by
payments actually made to TEMPLE in the same calendar year pursuant to Paragraph
4.4. In further consideration of the license granted to LICENSEE under the terms
of this Agreement, LICENSEE shall pay to TEMPLE twenty-five percent (25%) of all
consideration (other than research and development funding and royalties on
account of NET SALES), whether in the form of cash or equity, which LICENSEE
receives from its SUBLICENSEES to secure or maintain the sublicense or option
thereto, including but not limited to option or sublicense fees, option or
sublicense maintenance fees, milestone payments and minimum royalties. Cash
payments due to TEMPLE during any calendar year pursuant to this Paragraph 4.4
shall be offset and reduced by Reduced Royalties actually paid to TEMPLE in
prior calendar years pursuant to Paragraph 4.1, but only to the extent that such
Reduced Royalties have not been previously used in this manner. 4.5 Royalty
payments for sales in each country shall commence with the first unit of each
LICENSED PRODUCT sold by LICENSEE or by its sublicenses in such country and will
end coincident with the expiration date of the last-to-expire issued patent
within PATENT RIGHTS in such country covering such LICENSED PRODUCT.
ARTICLE 5. DUE DILIGENCE AND REPORTING
5.1. LICENSEE shall use reasonable efforts to advance the development of
LICENSED PRODUCT and to effect its commercialization as soon as practicable,
consistent with prevailing
sound business practices relating to the commercialization of similar products;
thereafter, during the term of this Agreement, LICENSEE shall endeavor to keep
LICENSED PRODUCT reasonably available to the public.
5.2. The development and commercialization of LICENSED PRODUCT shall be made
substantially according to the plan outlined in the letter dated July 1, 2004,
delivered to TEMPLE by LICENSEE, which is incorporated herein by reference.
5.3. On or before March 31 of each year during the term of this Agreement,
LICENSEE shall provide to TEMPLE a written report detailing LICENSEE's efforts
during the previous year and plans for the current year, relating to the
development, regulatory approval, manufacturing and marketing of LICENSED
PRODUCT. If progress differs in any substantive manner from that anticipated in
the plan of Exhibit A, LICENSEE shall explain in the report the reasons for the
difference and propose a modified plan for TEMPLE's review and approval,
including any additional data TEMPLE may reasonably require to evaluate
LICENSEE's performance.
ARTICLE 6. STATEMENTS AND REMITTANCES
6.1. LICENSEE shall keep and maintain complete books and records containing an
accurate accounting in sufficient detail of all data required to enable
verification of earned royalties and other payments due hereunder.
6.2. Within sixty (60) days after the end of each calendar quarter, LICENSEE
shall remit to TEMPLE a statement of NET SALES by LICENSEE and by its
SUBLICENSEES on account for such quarter, which statement shall be accompanied
by the payment due to TEMPLE pursuant to Paragraph 4.1 on account of NET SALES
for such quarter. Payments due to TEMPLE pursuant to Paragraph 4.4 on account of
consideration received by LICENSEE from SUBLICENSEES during any calendar quarter
shall be paid by LICENSEE to TEMPLE within sixty (60) days of the end of such
calendar quarter.
6.3. The financial statements of LICENSEE and of its SUBLICENSEES shall be
audited annually by an independent certified public accountant. TEMPLE shall
have the right to employ, at its own expense, a certified public accountant of
its own selection to whom LICENSEE shall make no unreasonable objection, to
examine the books and records of LICENSEE and its SUBLICENSEES relating to the
SALE of LICENSED PRODUCT for the purpose of verifying the amount of royalty
payments due. Such examination of books and records of LICENSEE and its
SUBLICENSEES shall take place during regular business hours during the term of
this Agreement and for two (2) years after its termination, provided however,
that such an examination shall not take place more than once a year and shall
not cover records for more than the preceding three (3) years, and provided that
such accountant shall report to TEMPLE only as to the accuracy of the royalty
statements and payments. If such accountant shall find an underpayment to
TEMPLE, presentation of a written statement substantiating the underpayment
shall be provided to LICENSEE. If LICENSEE is not in agreement with the findings
of the accountant selected by TEMPLE, then LICENSEE shall so notify TEMPLE in
writing within thirty (30) days of receipt by LICENSEE of said findings, in
which case the parties shall jointly
appoint, within a further period of thirty (30) days, an independent certified
public accountant to validate, at LICENSEE's expense, TEMPLE's accountant's
findings, and the decision of said independent accountant shall be final. If
said independent accountant verifies that an underpayment has occurred, the
amount due and interest (accruing at the prevailing Prime Rate from the date
payment was due through the date of actual payment to TEMPLE) shall be paid to
TEMPLE within thirty (30) days. Should such underpayment represent more than
five percent (5%) of the royalties due TEMPLE, LICENSEE shall reimburse TEMPLE
for the cost of the examination by TEMPLE's accountant that disclosed such
underpayment.
6.4. All payments due to TEMPLE under this Agreement shall be made in United
States dollars and shall be sent by LICENSEE to TEMPLE to the attention of
"Business Manager" at the address shown in Paragraph 14.6. If LICENSEE receives
NET SALES in currency other than United States dollars, royalty payments due to
TEMPLE on account of NET SALES shall be converted into United States dollars at
the conversion rate for the foreign currency as published in the eastern edition
of The Wall Street Journal as of the last business day of the applicable
calendar quarter. However, TEMPLE shall have the right, upon giving written
notice to LICENSEE, to receive royalty payments on account of NET SALES within a
particular country in the local currency if permitted by law.
6.5. If LICENSEE fails to make any payment due to TEMPLE within the time
prescribed by the terms of this Agreement, a penalty equal to one percent (1%)
of the amount due and unpaid on the first day of each calendar month shall be
added to the amount due. However, the provisions of this Paragraph 6.5 shall not
apply to any underpayment of royalties which is uncovered by audit of the books
of LICENSEE or of its SUBLICENSEES pursuant to Paragraph 6.3.
ARTICLE 7. REPRESENTATIONS AND WARRANTIES
7.1. TEMPLE represents that it has the right to enter into this Agreement and to
make the herein grant of license under PATENT RIGHTS and TECHNICAL INFORMATION.
TEMPLE further represents that it is the sole and exclusive owner of PATENT
RIGHTS and TECHNICAL INFORMATION, all of which are free and clear of any liens,
charges and encumbrances. To the best of TEMPLE's knowledge, no third party has
expressed to TEMPLE, in writing, that any patent or patent application included
in the PATENT RIGHTS is invalid or unenforceable.
7.2. TEMPLE makes no warranty that exercise by LICENSEE or its SUBLICENSEES of
the rights granted herein will not infringe any patents owned by a third party,
or that any patent application within PATENT RIGHTS will issue as a patent.
7.3. LICENSEE warrants that, prior to the execution of this Agreement, it has
not negotiated or in any manner discussed, whether formally or informally, with
any third party any agreement or other arrangement, including but not limited to
research or consulting agreements, which provides for consideration to be paid
in any form, including but not limited to amounts of money or shares of stock,
to any INVENTOR, any INVENTOR's spouse or other relative, or any entity in which
any of them has a financial interest.
ARTICLE 8. PATENT PROSECUTION AND LITIGATION
8.1. At any time during the OPTION PERIOD, LICENSEE may file on TEMPLE's behalf
an application for a PROJECT PATENT, and such PROJECT PATENT shall be deemed
part of PATENT RIGHTS.
8.2. In consultation with TEMPLE but in LICENSEE's reasonable sole discretion,
LICENSEE shall diligently prosecute all patent applications and maintain all
patents within PATENT RIGHTS, to the full extent permitted by law, provided that
TEMPLE shall in a timely manner receive (i) all original patent documents plus
(ii) full and complete copies of all office actions, correspondence and other
documents relating to such prosecution. TEMPLE shall have the right to prosecute
any patent application in any country in which LICENSEE does not prosecute such
patent application and to maintain any patent within PATENT RIGHTS in any
country in which LICENSEE does not maintain such patent, and such patent
application or patent in that country shall not be part of PATENT RIGHTS;
provided that the rights and obligations of LICENSEE to the same patent
application or patent in any other country or to any other patent application or
patent in any country shall in no way be affected. Except as provided in
Paragraph 8.3, LICENSEE shall be responsible for all out-of-pocket costs and
expenses incurred by LICENSEE, both prior to and during the term of this
Agreement, in the preparation, filing and prosecution of all patent
applications, and in the maintenance of all patents within PATENT RIGHTS. Such
costs and expenses shall not be creditable against any other payments due to
TEMPLE under this Agreement.
8.3. LICENSEE may give TEMPLE thirty (30) days' prior written notice that it
will stop paying the costs and expenses with respect to any patent application
or patent in any country, in which case TEMPLE, at its option, may assume the
obligation of supporting such patent application or patent in such country, and
LICENSEE's rights and obligations thereto under this Agreement shall terminate
at the end of such thirty (30) day notice period in such country. Termination of
LICENSEE's rights and obligations with respect to any patent application or
patent in any country under the terms set forth in this Paragraph 8.3 shall in
no way affect the rights and obligations of LICENSEE to the same patent
application or patent in any other country or to any other patent application or
patent in any country.
8.4. LICENSEE, at its option, may defend any claim, made by others, of
infringement of PATENT RIGHTS resulting from the manufacture, use, sale or other
disposition of LICENSED PRODUCT, whether such claim shall be made against TEMPLE
or LICENSEE, and in defending such claim, LICENSEE shall bear all costs and
expenses, including reasonable attorneys' fees, incurred in connection with any
such claim. Any such costs and expenses shall be credited against fifty percent
(50%) of royalty payments due to TEMPLE on account of NET SALES of said LICENSED
PRODUCT, pursuant to Paragraph 4.1, in each year during the term of this
Agreement until fully offset. Each party to this Agreement agrees that it shall
notify the other party in writing in the event any claim of infringement is made
against that party. LICENSEE shall have full control over the conduct of the
defense of any such claim and TEMPLE shall provide LICENSEE with all reasonable
assistance and cooperation, at no cost to TEMPLE, that LICENSEE may request in
any such defense.
8.5. In the event either party becomes aware of any actual or threatened
infringement of PATENT RIGHTS in any country, that party shall promptly notify
the other party in writing. LICENSEE shall have the first right to bring an
infringement suit against the infringer and to use TEMPLE's name if legally
required in connection therewith. LICENSEE shall not settle or compromise any
such suit in a manner that imposes any obligations or restrictions on TEMPLE or
grants any rights under PATENT RIGHTS or TECHNICAL INFORMATION, without TEMPLE's
written consent, which consent shall not be unreasonably withheld. If LICENSEE
does not proceed with a particular infringement suit or attempt to sublicense
the infringer within ninety (90) days of notification, TEMPLE, after notifying
LICENSEE in writing, shall be entitled to proceed with such suit through counsel
of its choice. The party conducting any suit pursuant to this Paragraph 8.5
shall have full control over its conduct and shall be responsible for all
expenses associated therewith. Each party shall always have the right to be
represented by counsel of its choice and at its own expense in any suit
instituted by the other party for infringement. In any event, the parties shall
provide each other, at the expense of the party bringing suit, with all
reasonable assistance and cooperation requested in any such suit. At the request
and expense of the party bringing suit, the other party shall permit access to
all relevant personnel, records, papers, information, samples, specimens, and
the like during regular business hours. The parties may also jointly participate
in any infringement suit if both parties agree to do so in writing in advance,
and set forth the basis for sharing of expenses.
8.6. The amount of any recovery resulting from an infringement suit or
settlement thereof pursuant to Paragraph 8.5 shall first satisfy the costs and
expenses, including reasonable attorneys' fees, incurred in connection with such
suit by the party bringing suit ("COSTS AND EXPENSES"). If LICENSEE is the party
bringing suit, any recovery in excess of COSTS AND EXPENSES shall be paid to
LICENSEE and shall be deemed to be NET SALES subject to royalties due to TEMPLE
pursuant to Paragraph 4.1. If TEMPLE is the party bringing suit, any recovery in
excess of COSTS AND EXPENSES shall be paid to TEMPLE. If the parties have agreed
to participate jointly in an infringement suit, any recovery in excess of the
parties' COSTS AND EXPENSES shall be allocated to the parties in the same
proportion as the sharing of COSTS AND EXPENSES, and LICENSEE's allocation shall
be deemed to be NET SALES subject to royalties due to TEMPLE pursuant to
Paragraph 4.1.
ARTICLE 9. INDEMNIFICATION
9.1. LICENSEE agrees to indemnify, hold harmless, and defend TEMPLE, its
trustees, officers, employees and agents against any and all claims, excluding
claims stemming from TEMPLE's use of LICENSED PRODUCT as outlined in Paragraph
3.2, including legal fees and costs arising out of the exercise of any rights
granted under this Agreement, without limiting the generality of the foregoing,
against any damages, losses or liabilities whatsoever including but not limited
to death or injury to person or damage to property arising, directly or
indirectly, from LICENSEE's exercise of the rights granted hereunder, including
but not limited to commercial sale and clinical use of LICENSED PRODUCT by
LICENSEE, its SUBLICENSEES or any customers of any of them in any manner
whatsoever. TEMPLE shall give LICENSEE written notice of any claim(s)
related to LICENSED PRODUCT within thirty (30) days, and TEMPLE shall reasonably
cooperate with LICENSEE and its insurance carrier in the defense of any such
claim(s).
9.2. LICENSEE shall maintain, during the period that any LICENSED PRODUCT is
made, used, sold or otherwise made available to others pursuant to this
Agreement, Comprehensive Liability Insurance, including Product Liability
Insurance, with a reputable and financially secure insurance carrier(s) to cover
the activities of LICENSEE and its SUBLICENSEES, if any, contemplated by this
Agreement for minimum limits of two million dollars ($2,000,000.00) per
occurrence. Such insurance shall name TEMPLE, its trustees, officers, employees,
and agents as additional insureds. LICENSEE shall furnish a Certificate of
Insurance, upon request, evidencing coverage of two million dollars
($2,000,000.00) with thirty (30) days of written notice of cancellation or
material change to TEMPLE. LICENSEE's insurance shall be written to cover claims
incurred, discovered, manifested, or made during the term, or after the
expiration, of this Agreement. LICENSEE shall at all times comply, through
insurance or self-insurance, with all statutory workers' compensation and
employers' liability requirements covering any and all employees with respect to
activities performed under this Agreement.
ARTICLE 10. SUBLICENSES
10.1. LICENSEE shall have the right to enter into sublicense agreements,
provided that all applicable material terms of this Agreement are incorporated
into such sublicense agreements to provide for the protection of TEMPLE and its
trustees, officers, employees and agents, and provided further that LICENSEE
remains primarily liable for its obligations under this Agreement. A copy of any
sublicense agreement shall be provided to TEMPLE prior to execution for TEMPLE's
review and approval, which approval shall not be unreasonably denied.
ARTICLE 11. ASSIGNMENT
11.1. This Agreement and any and all of the rights and obligations of each party
hereunder may be assigned, delegated, sold, transferred or otherwise disposed
of, by operation of law or otherwise, only with the prior written consent of the
other party, which consent shall not be unreasonably withheld; provided,
however, that either party may assign this Agreement without consent of the
other party to a third party that acquires all or substantially all of such
party's assets or in connection with an assignment by COMPANY to an AFFILIATE.
ARTICLE 12. TERMINATION
12.1. LICENSEE may, in LICENSEE's sole discretion and for any reason whatsoever,
terminate this Agreement in its entirety or only with respect to any patent
application or patent in any country by giving TEMPLE ninety (90) days' prior
written notification thereof. In addition, LICENSEE may terminate this Agreement
by giving TEMPLE sixty (60) days' prior written notice upon material breach by
TEMPLE of any material provision of this Agreement, unless such breach is cured
within the period of such notice.
12.2. TEMPLE may terminate this Agreement at any time by giving LICENSEE ninety
(90) days' prior written notification in the event that LICENSEE has failed to
conform substantively with the plan outlined in the letter dated July 1, 2004,
delivered to TEMPLE by LICENSEE, as may have been amended with TEMPLE's written
approval, which approval shall not be unreasonably withheld, unless such failure
is cured within the period of such notification.
12.3. TEMPLE may terminate this Agreement by giving LICENSEE sixty (60) days'
prior written notice upon material breach of any material provision of this
Agreement by LICENSEE, unless such breach is cured within the period of such
notice.
12.4 In the event that, in any calendar year, TEMPLE has given LICENSEE at least
two (2) written notices pursuant to Paragraph 12.3 each such notice pertaining
to a separate instance of material breach by LICENSEE of the same material
provision in Articles 4,6 or 8 of this Agreement, then TEMPLE may, in its sole
discretion, give LICENSEE written notice of termination of this Agreement upon
any subsequent instance of material breach by LICENSEE of said material
provision in said calendar year, and the termination shall take effect sixty
(60) days from the date of notice, without regard to whether a cure was
effected..
12.5. This Agreement shall immediately terminate if either party is adjudicated
bankrupt, files a voluntary petition in bankruptcy, makes or executes an
assignment for the benefit of creditors, is liquidated or dissolved, or a
receiver, trustee, liquidator, sequestrator or other judicial representative is
appointed for either party or its property. In such event, that party shall
execute any documents that are necessary to reassign or transfer the interest
granted hereunder.
12.6. Upon termination of this Agreement, TEMPLE shall have the right to retain
any amounts already paid by LICENSEE under this Agreement, and LICENSEE shall
pay to TEMPLE all amounts accrued which are then due or which become due based
on the SALE of LICENSED PRODUCT, manufactured or produced prior to the effective
date of termination.
12.7. The provisions of Article 2 (entitled CONFIDENTIALITY), Article 9
(entitled INDEMNIFICATION) and Article 13 (entitled PATENT MARKING), and
Paragraph 14.2 shall survive the termination of this Agreement.
ARTICLE 13. PATENT MARKING
13.1. LICENSEE agrees to xxxx or have marked all LICENSED PRODUCT sold by
LICENSEE or by its SUBLICENSEES under this Agreement in accordance with the
statutes of the United States and countries and territories relating to the
marketing of patented articles in which any LICENSED PRODUCT covered by a
granted patent is marketed.
ARTICLE 14. MISCELLANEOUS
14.1. Each party and its employees and agents shall not use the other party's
name, any adaptation thereof, any logotype, trademark, service xxxx or slogan or
the name xxxx or logotype in any way without the prior written consent of the
other party.
14.2. This Agreement shall be construed and the respective rights of the parties
hereto determined according to the substantive laws of the Commonwealth of
Pennsylvania, notwithstanding the provisions governing conflict of laws under
such Pennsylvania law to the contrary.
14.3. If any provision of this Agreement is held to be invalid or unenforceable
under the laws of any jurisdiction of the parties, all other provisions shall,
nevertheless continue in full force and effect.
14.4. This Agreement constitutes the entire agreement among the parties
pertaining to PATENT RIGHTS and TECHNICAL INFORMATION and supersedes all
previous arrangements, except for confidentiality agreements, whether written or
oral. Any amendment or modification to this Agreement shall be made in writing
signed by both parties. Failure of either party to enforce a right under this
Agreement shall not act as a waiver of that right and shall not preclude such
party from later asserting that right relative to the particular situation
involved.
14.5. Any breach whatsoever of any provision of ARTICLE 4 (entitled PAYMENTS)
and ARTICLE 6 (entitled STATEMENTS AND REMITTANCES) shall be deemed a material
breach of a material provision of this Agreement.
14.6. Time is of the essence under this Agreement.
14.7. Notices and payments to the parties shall be addressed as follows:
To TEMPLE: Office of Technology Transfer
Temple University (083-45)
0000 X. Xxxxx Xxxxxx, Xxxx 000
Xxxxxxxxxxxx, XX 00000-0000
To LICENSEE: Xxxxxx Xxxxx
Save the World Air, Inc.
c/o Masry & Xxxxxxx
0000 Xxxxx Xxx., Xxxxxx Xxxxx
Xxxxxxxx Xxxxxxx, XX 00000
With copies to:
Xxxxxxx X. Xxxxxxx, Esq.
Xxxx Xxxxx & Sestanovich LLP
0000 Xxxxxxx Xxxx Xxxx, 00xx Xxxxx
Xxx Xxxxxxx, XX 00000
Either party may change its address for notice by giving notice to the other in
the manner herein provided. Any notice required or provided for by the terms of
this Agreement shall be in writing and sent by registered or certified mail,
return receipt requested, postage prepaid and properly
addressed in accordance with the paragraph above. The effective date of notice
shall be the actual date of receipt.
All notices, requests, reports, and other communications provided in this
Agreement shall be in writing and shall be deemed to have been made or given:
(a) when delivered, if delivered by hand; (b) when confirmation of transmission
received, if sent by facsimile, or the like; (c) on the day following deposit
with an overnight courier; or (d) on the date three business days following
deposit with the United States mail, certified or registered.
IN WITNESS WHEREOF, the parties have caused this Agreement to be executed by
their duly authorized representatives as of the date first above written.
Temple University - Of The Commonwealth System of Higher Education:
BY /s/ Xxxxxx X. Xxxxx DATE 6/28/04
--------------------------------------------------------- -------
Xxxxxx X. Xxxxx
Vice President, Chief Financial Officer and Treasurer
Save the World Air, Inc.:
BY /s/ Xxxxxx X. Xxxxxxx DATE 7/7/04
--------------------------------------------------------- -------
Name: Xxxxxx X. Xxxxxxx
Title: President and Chief Financial Officer
