Exhibit 10.5
LICENCE AGREEMENT
This Agreement is made the 29 day of October 2001
BETWEEN
XXXXXX STEERING TECHNOLOGY LIMITED (ABN 99 002 954 690) of 00 Xxxxxxxx Xxxx,
Xxxxx Xxxx, Xxx Xxxxx Xxxxx, 0000 Xxxxxxxxx
AND JINGZHOU HENGLONG AUTOMOTIVE PARTS of Henglong Road, Yuqiao Exploration
District, Jingzhou, Hubei Province, China
RECITALS
X. Xxxxxx possesses rights to certain patents, patent applications, and
Confidential Information relating to Licensed Products.
B. Licensee has requested a non-exclusive licence from Xxxxxx to use the
Confidential Information and Licensed Patents for the purposes of the
manufacture and sale of the Licensed Products.
X. Xxxxxx has agreed to grant such a licence upon the following terms.
AGREEMENTS
1. INTERPRETATION
1.1 In this Agreement and in the recitals to this Agreement except where the
context otherwise requires:
1.1.1 "Xxxxxx" means Xxxxxx Steering Technology Ltd and includes its
successors and assigns.
1.1.2 "Confidential Information" means all information relating to
Xxxxxx, its business, products, customers or suppliers, the
design, manufacture, installation and operation of the Licensed
Products (whether or not the patents in respect of those Licensed
Products are current or expired) and to systems, apparatus,
methods and processes for the manufacture of such Licensed
Products (whether or not embodied in documentary or other
physical form), including, but not limited to, patent
applications; product and machine designs; manufacturing or
assembly drawings; prototypes; CAD, CAM and other computer
software for use in the design or manufacture of the Licensed
Products; parts lists; technical reports; operation and
maintenance manuals; material specifications and materials
treatment procedures; tooling design specifications;
manufacturing, inspecting, quality control and testing
procedures; and know how relating to the design and manufacture
of the Licensed Products, other than information which:
a. was and can be demonstrated to have been, lawfully in
Licensee's possession or known to Licensee prior to
disclosure by Xxxxxx; or
b. is or comes into the public domain otherwise than through
any act of the Licensee or through any disclosure by any
person acquiring the same from the Licensee; or
c. is disclosed to the Licensee by a third party having no
obligations of confidence to Xxxxxx in respect thereof, and
has not been disclosed to that third party in consequence of
a breach of confidence.
A reference in this clause to "Xxxxxx" shall be deemed to include
a reference to each company related, now or in the future, to
Xxxxxx.
1.1.3 "Effective Date" means the date specified in Item 1 of the
Schedule.
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1.1.4 "Improvements" means all new or improved designs or models,
developments, enhancements or derivatives relating to steering
gear incorporating or capable of being used in respect of the
Licensed Products or Licensed Patents, whether patentable or not,
which would make the Licensed Products or such steering gear
cheaper, more effective, more useful or more valuable, or would
in any other way render the Licensed Products or such steering
gear preferable in commerce.
1.1.5 "Labour Rate" means the rate specified in Item 4 of the Schedule
per hour for each representative of Xxxxxx referred to in this
Agreement. The labour rate shall be revised upon or after each
and every anniversary of the Effective Date in accordance with
the calculation specified in Item 7 of the Schedule and shall be
effective immediately following such anniversary.
1.1.6 "Licensee" means JINGZHOU HENGLONG AUTOMOTIVE PARTS and includes
its successors and permitted assigns.
1.1.7 "Licensed Manufacturing Territory" means the territory described
in Part 1 of Item 2 of the Schedule.
1.1.8 "Licensed Patents" means each patent or patent application now or
to be included or deemed to be included in Item 3 of the Schedule
and continuations, divisions or reissues of those patents and
patent applications.
1.1.9 "Licensed Products" means roll imprinted (symmetrical and
asymmetrical non-ATS) components for hydraulic power steering
valves, falling within the scope of one or more of the claims of
one or more of the Licensed Patents or made by apparatus,
methods, machines or processes falling within the scope of one or
more of the claims of one or more of the Licensed Patents,
whether or not the Licensed Patents or any of them are still
current.
1.1.10 "Licensed Sales Territory" means those countries described in
Part 2 of Item 2 of the Schedule.
1.1.11 "Trade Xxxx" means the trade xxxx "Xxxxxx" and any other trade
marks of Xxxxxx that Xxxxxx may from time to time agree are to be
covered by this Agreement.
1.2 A company shall be deemed to be related to another company if the first
company is:-
1.2.1 the holding company of the other company; or
1.2.2 a subsidiary of the other company or deemed to be a subsidiary of
the other company by operation of any applicable legislation; or
1.2.3 a subsidiary of the holding company or ultimate holding company
of the other company or deemed to be a subsidiary of the holding
company or ultimate holding company of the other company by
operation of any applicable legislation.
1.3 A reference to a singular number shall be deemed to include a reference to
a plural number and vice versa.
1.4 A reference to one gender shall be deemed to include a reference to the
other genders and each of them.
1.5 A reference to a person shall be deemed to include a reference to a body
corporate or other legal entity, partnership or other unincorporated
association, and to a government.
1.6 A reference to any legislation includes any regulation or instrument made
under it and where amended, re-enacted or replaced means that amended,
re-enacted or replacement legislation.
1.7 The Schedule and any annexures to this Agreement form part of and are
deemed to be incorporated into this Agreement.
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2. LICENCE
2.1 Xxxxxx grants to Licensee a non-exclusive, non-transferable licence to use
the Licensed Patents and Confidential Information relating to the Licensed
Products to:
2.1.1 Manufacture Licensed Products in the Licensed Manufacturing
Territory;
2.1.2 Sell the Licensed Products in the Licensed Sales Territory; and
2.1.3 Sell assembled hydraulic power steering gears incorporating
Licensed Products outside the Licensed Sales Territory.
2.2 No licence, either express or implied, is granted by Xxxxxx to Licensee
hereunder with respect to any patent, copyright, trade secret, Confidential
Information or know-how except as specifically stated in this Agreement.
3. TRADE XXXX
3.1 Xxxxxx grants to Licensee a non-exclusive licence to use the Trade Xxxx in
the Licensed Manufacturing Territory and in the Licensed Sales Territory in
respect of Licensed Products for the term of this Agreement.
3.2 Licensee must:
3.2.1 Include on a nameplate attached to each Licensed Product the
following words or such other words, to the same effect, as
Xxxxxx may from time to time approve:
"Incorporates technology licensed from Xxxxxx Steering Technology
Ltd";
3.2.2 Use the Trade Xxxx on all Licensed Products manufactured or sold
by it, and ensure that the following words (or such other words,
to the same effect, as Xxxxxx may from time to time specify or
approve) clearly and legibly appear near the Trade Xxxx:
a. Where the Trade Xxxx is registered:
"(R) Registered Trade Xxxx - Used under licence from the
proprietor, Xxxxxx Steering Technology Ltd."
b. Where the Trade Xxxx is not registered:
"TM Trade Xxxx used under licence from the proprietor,
Xxxxxx Steering Technology Ltd."
3.2.3 Comply with and observe all rules, directives, standards,
specifications and instructions made, issued or laid down by
Xxxxxx regarding the use of the Trade Xxxx and the marketing and
labelling of the Licensed Products;
3.2.4 Only use the Trade Xxxx in the depictions approved by Xxxxxx and
only in respect of the Licensed Products.
3.3 Licensee must not, whether during or after this Agreement:
3.3.1 Represent in any way that it owns the Trade Xxxx or is entitled
to use the Trade Xxxx otherwise than as a licensee of Xxxxxx;
3.3.2 Do anything calculated or likely to disparage or damage the
goodwill, reputation or industrial or intellectual property of
Xxxxxx in the Trade Xxxx;
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3.3.3 Use the Trade Xxxx in respect of any goods or services other than
the Licensed Products;
3.3.4 Apply for or seek to register the Trade Xxxx in its own name in
any country; or
3.3.5 Attack or contest the rights of Xxxxxx in and to the Trade Xxxx.
3.4 If requested by Xxxxxx, Licensee must execute all such documents and do all
such acts and things as may be necessary for Licensee to be entered as a
registered or authorised user of the Trade Xxxx in any country.
3.5 Licensee acknowledges the exclusive ownership by Xxxxxx of the Trade Xxxx
and all goodwill in the Trade Xxxx.
4. PATENT PROVISIONS
4.1 Licensee must place on all Licensed Products manufactured or sold by it the
appropriate patent number of each Licensed Patent (if any) applying to the
Licensed Product in the Licensed Sales Territory and the Licensed
Manufacturing Territory, or in the case of a patent application, the words
"Patent Pending" or such other words, to the same effect, as Xxxxxx may
from time to time stipulate.
4.2 Xxxxxx may without being obliged to do so, submit to Licensee a copy of the
patent specification of any patent application in respect of any new
invention filed after the Effective Date by Xxxxxx which relates to
Licensed Patents.
4.3 Licensee may, within 5 months from the receipt of the copy of any patent
specification submitted under Clause 4.2, request Xxxxxx to include the
application (if filed in the Licensed Manufacturing Territory) as a
Licensed Patent under this Agreement or to file a corresponding patent
application in the Licensed Manufacturing Territory and to then include the
application as a Licensed Patent under this Agreement. If the parties agree
in writing as to the additional terms to apply to such filing and/or
inclusion and to the licensing of the patent pursuant to this Agreement:
4.3.1 Xxxxxx will file the application (if not already filed in the
Licensed Manufacturing Territory);
4.3.2 The application shall be deemed to have been automatically
included in the appropriate part of Item 3 of the Schedule; and
4.3.3 This Agreement shall be deemed to be amended by the additional
terms agreed.
4.4 Xxxxxx warrants that as of the Effective Date and to the best of its
knowledge and belief there are no material facts known to it which it
believes affect the validity of any of the Licensed Patents. Except for the
foregoing, Xxxxxx does not make any representation to Licensee regarding
the scope or enforceability of the Licensed Patents and it does not warrant
that any Licensed Products manufactured or sold under this Agreement will
not infringe patents or intellectual property rights of others.
5. IMPROVEMENTS
5.1 Licensee will fully and promptly disclose to Xxxxxx all Improvements
developed by or for Licensee.
5.2 Licensee hereby assigns to Xxxxxx all its right, title and interest in and
to all Improvements upon their creation. Xxxxxx grants to the Licensee a
non-exclusive perpetual royalty free licence to use those Improvements.
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6. CONFIDENTIAL INFORMATION
6.1 Xxxxxx shall use its best efforts to provide Licensee with accurate
Confidential Information relating to the Licensed Products but makes no
warranty and shall have no liability to Licensee with respect to the
Confidential Information or the Licensed Products or the use thereof.
6.2 Licensee must keep secret and confidential the Confidential Information and
must not at any time whether during the currency of this Agreement or after
its expiration or termination without the prior written consent of Xxxxxx
disclose, divulge, make known, or in any way communicate, to any person in
any part of the world, or permit or allow any of its employees or agents to
disclose, divulge, make known or in any way communicate to any person in
any part of the world, any of the Confidential Information, other than to
Licensee's own employees, sub-contractors or consultants who need to know
the Confidential Information for the strictly limited purpose of enabling
Licensee to exercise its rights or perform its obligations under this
Agreement.
6.3 Licensee acknowledges that the Confidential Information is and will be
disclosed to it on the express condition that it be used only for the
limited and specific purpose of Licensee exercising its rights and
performing its obligations under this Agreement and Licensee will not
otherwise use or attempt to use any of the Confidential Information for its
own advantage or gain directly or indirectly.
6.4 Licensee must not use or attempt to use any of the Confidential Information
in any manner which may cause or be calculated to cause injury or loss to
Xxxxxx or any company related to Xxxxxx.
6.5 Licensee must not copy the Confidential Information or allow it to be
copied in whole or in part without the prior written consent of Xxxxxx.
6.6 Licensee shall take or cause to be taken such reasonable precautions as may
be necessary to maintain the secrecy and confidentiality of the
Confidential Information and to prevent its disclosure, including ensuring
that each employee, sub-contractor or consultant of Licensee who comes into
possession of the Confidential Information or any part of it enters into a
confidentiality agreement in favour of Xxxxxx binding the employee,
sub-contractor or consultant to keep the Confidential Information secret
and confidential, in terms substantially the same as the provisions of
Clauses 6.2, 6.3, 6.4, 6.5, 6.6, and 6.7.
6.7 Subject only to Clauses 14.3 and 14.4, Licensee will immediately upon
demand, either deliver up to Xxxxxx or destroy (and certify to Xxxxxx the
proper destruction of) all material (whether documents, microfilm, magnetic
tape, cassette or disk, computer software, laser disk, or any other medium
of storing or recording information) comprising or containing any of the
Confidential Information, including any and all copies in whole or in part
thereof and any material on which Licensee has itself recorded or stored in
any form the Confidential Information or any part of it.
6.8 Nothing in Clauses 6.2 to 6.7 will prevent the disclosure of information
that is required to be disclosed in order to comply with any applicable law
or legally binding order of any court, government, semi-government
authority or administrative or judicial body, provided that Licensee:
6.8.1 informs Xxxxxx in writing, with as much advance notice as
possible, of the proposed disclosure, giving full details of the
circumstances of the proposed disclosure and of the relevant
information to be disclosed;
6.8.2 gives Xxxxxx a reasonable opportunity to challenge the proposed
disclosure in a court of law or other appropriate body;
6.8.3 furnishes only that portion of the Confidential Information which
it is advised by written opinion of its legal counsel is legally
required to be disclosed; and
6.8.4 exercises its best efforts to obtain reliable assurances that
confidential treatment will be accorded to the Confidential
Information.
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7. TECHNICAL ASSISTANCE & TRAINING
7.1 In consideration for the annual technology assistance fee referred to in
8.1 below, Xxxxxx will provide the following goods and services to Licensee
during the year following the Effective Date or anniversary of the
Effective Date on which the fee is paid or payable:
7.1.1 technical assistance;
7.1.2 engineering samples of Xxxxxx steering technologies for
evaluation purposes;
7.1.3 machine spares for Xxxxxx-designed and manufactured machines for
the manufacture of Licensed Products; and
7.1.4 on site support, training and maintenance,
Provided that the cost of such goods and services in any one such year does
not exceed the fee specified in Item 6 of the Schedule.
Xxxxxx will invoice Licensee monthly for such goods and services, and will
indicate in each invoice the cumulative total of such invoices for the
year, as compared with the technology assistance fee paid by Licensee for
that year.
If Licensee requires any engineering samples or machine spares as referred
to in 7.1.2 and 7.1.3, it must place a written order for them on Xxxxxx.
Xxxxxx will give Licensee a written quotation for the supply of the samples
or spares. If Licensee does not accept that quotation, Xxxxxx will not be
obliged to supply the samples or spares.
The cost of such goods and services will be calculated as follows:
7.1.5 the cost of the technical assistance, on site support,
maintenance and training referred to in 7.1.1 and 7.1.4
respectively will be calculated on the basis of the Labour Rate
and the cost to Xxxxxx of the materials used, and will exclude
any costs and expenses as referred to in 7.4, 7.5 and 7.6 below;
7.1.6 the cost of any engineering samples and machine spares supplied
by Xxxxxx, as referred to in 7.1.2 and 7.1.3 respectively, will
be the amount quoted by Xxxxxx in the quotation for the samples
or spares as the case may be (calculated on the basis of the
Labour Rate, Xxxxxx'x then current prices for the goods in
question, and the cost to Xxxxxx of the materials used in any one
such year), which has been accepted by Licensee, with or without
amendments agreed between Xxxxxx and Licensee.
7.2 If Xxxxxx agrees to supply Licensee in any one year of this Agreement with
goods and/or services as referred to in Clause 7.1 which exceed in total
value the fee specified in Item 6 of the Schedule, Licensee will pay Xxxxxx
for such excess (on the valuation basis referred to in Clause 7.1) within
30 days of invoice.
7.3 Licensee may carry over up to 50% of the unused balance of any single years
technical assistance fee up to a maximum of A$50,000.00. This unused
balance will be deemed to be added to the amount specified in Item 6 in
respect of the subsequent years and to have been paid by licensee. Any
unused balance from any one year is limited to the following year only.
7.4 Xxxxxx undertakes to accept visits from Licensee's representatives for the
purpose of providing technical assistance and training. Such visits shall
be subject to mutually acceptable arrangements and timing and in accordance
with Xxxxxx'x current work load and commitments. All reasonable travel,
accommodation, labour and other costs incurred by Xxxxxx shall be at
Licensee's expense. All labour costs by Xxxxxx (calculated on the basis of
the Labour Rate) shall be fully reimbursed by Henglong.
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7.5 Visits by Xxxxxx'x representatives to Licensee's factories for the purpose
of providing technical assistance and training shall be subject to mutually
acceptable arrangements and timing and in accordance with Xxxxxx'x current
work load and commitments. All reasonable business class travel,
accommodation and other out-of-pocket expenses incurred by Xxxxxx shall be
fully reimbursed by Licensee.
7.6 If and when Licensee requests Xxxxxx to do work in relation to any new
development or project then Xxxxxx agrees to submit a proposal outlining
the terms Xxxxxx would be prepared to offer for doing such work. If
Licensee accepts the Xxxxxx proposal, it will issue Xxxxxx with an
appropriate purchase order.
7.7 If Xxxxxx, upon the request of Licensee, agrees to provide information
pertaining to Licensed Products which is not available to Xxxxxx at the
date of the request and which has to be specially prepared by Xxxxxx,
Licensee shall promptly reimburse Xxxxxx for all costs which it incurs in
preparing such information for Licensee.
8. COMPENSATION, RECORDS & REPORTS
8.1 In consideration of the licence granted pursuant to this Agreement by
Xxxxxx to Licensee, Licensee shall pay to Xxxxxx the following
non-refundable amounts:
8.1.1 For each Licensed Product manufactured by Licensee the royalty
specified in Item 5 of the Schedule.
7.1.2 An annual technical assistance fee, being as specified in Item 6
of the Schedule for each and every year of the term of this
Agreement, and pro rata for any part of a year to the date of
expiration or termination of this Agreement. Licensee will pay
this fee 3 days after the Effective Date and then within 30 days
of each and every anniversary of the Effective Date, regardless
of the amount of goods and/or services provided by Xxxxxx under
Clause 7.1 in the previous year. Licensee will open a irrevocable
Letter of Credit equal to the value of the technical assistance
fee for Year 2 to Year 5 inclusive with reputable bank.
8.2 The royalty rates specified in Items 5 of the Schedule shall be revised
upon or as soon as practicable after each and every anniversary of the
Effective Date in accordance with the calculation in Item 7 of the Schedule
and such revised royalty shall be effective from and including the next
quarter immediately following such anniversary.
8.3 Royalties for each calendar quarter (or part in the case of a period at the
beginning or end of this Agreement being less than a calendar quarter) are
payable, unless otherwise agreed between Licensee and Xxxxxx, by the 15th
day of the second month following the end of such quarter (15th of
February, May, August and November). All royalty payments are to be paid in
Australian Dollars [at the official rate (buying rate) prevailing at the
Licensee's bank in the Licensed Manufacturing Territory on the due dates
for remittance].
8.4 Each royalty payment shall be accompanied by a report showing:
8.4.1 For each calendar quarter, the number of Licensed Products
manufactured in that quarter by Licensed Product type
identification number, vehicle make, model and all other details
necessary or reasonably requested by Xxxxxx for calculating the
amounts payable to Xxxxxx;
8.4.2 If requested by Xxxxxx from time to time, forward orders and
projected sales of Licensee's vehicles incorporating Licensed
Products for the 10 years following the calendar quarter.
8.5 Licensee will advise Xxxxxx immediately it decides to cease production of a
model incorporating a Licensed Product.
8.6 Without limiting in any way Xxxxxx'x remedies elsewhere contained in this
Agreement, Licensee must pay Xxxxxx interest on all overdue payments due to
Xxxxxx under this Agreement at the Indicator Lending Rate of Interest (or
its successor as the base rate of interest charged on loans in excess of
$100,000) from time to time charged by Westpac Banking Corporation, plus
three percent (3%) per annum, calculated on daily rests from and including
the due date to and including the date of payment. The payment of such
interest shall not replace any of Xxxxxx'x other rights under this
Agreement or at law resulting from Licensee's default by failure to pay any
amount due.
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8.7 Licensee shall at all times during the life of this Agreement and for 3
years after its expiration or termination:
8.7.1 keep and preserve full and proper, accurate and up-to-date
records which contain complete data from which amounts due to
Xxxxxx under this Agreement can be readily calculated;
8.7.2 permit, upon reasonable notice, any duly authorised
representative of Xxxxxx to have access to all relevant records
of Licensee;
8.7.3 supply to such representatives upon request all information and
explanations required by them to verify the reports provided
under Clause 8.4 and the amounts due to Xxxxxx under this
Agreement; and
8.7.4 permit such representatives to take copies of and extracts from
the Licensee's records for the purposes of verification.
8.8 Xxxxxx will treat as confidential all and any information obtained by
Xxxxxx or its representatives from Licensee under Clause 8.7 and will not
disclose any such information to its other licensees.
8.9 Xxxxxx may from time to time appoint an external auditor to audit the
accounts and records of Licensee and/or the reports provided by Licensee
pursuant to Clause 8.4, and Licensee shall in the event of such appointment
make available or cause to be made available to such external auditor all
its accounts and records and shall provide or cause to be provided all such
information and explanations as such auditor shall require. The costs of
such audit shall be borne by Xxxxxx unless the audit reveals the Licensee's
records or accounts or reports are inaccurate or in error to the extent of
2% or more of the royalties or other amounts payable to Xxxxxx, for the
period covered by such audit, in which case the auditor's fees and expenses
shall be paid by the Licensee.
8.10 If Xxxxxx determines that the amounts payable to it under this Agreement
have been underpaid, Licensee must immediately pay that difference plus
interest to Xxxxxx.
8.11 If requested by Xxxxxx, Licensee must pay on Xxxxxx'x behalf and deduct
from the payments due to Xxxxxx under this Agreement, the withholding tax,
if any, imposed upon Xxxxxx with respect to such payments by the country of
the Licensee. Licensee shall provide Xxxxxx with evidence proving payment
of such withholding tax in the name of and on behalf of Xxxxxx.
9. SUB-LICENCES
9.1 Licensee may not sub-license any of its rights under this Agreement
(whether to subcontractors or otherwise).
10. DILIGENCE
10.1 Effective from the first anniversary of the Effective Date, Xxxxxx may
remove from this Agreement any Licensed Patent in respect of which Licensee
has not commenced commercial production of Licensed Products or in respect
of which Licensee has not manufactured Licensed Products in commercial
quantities for at least 12 months.
10.2 Any removal under Clause 10.1 shall be conditional upon Xxxxxx'x giving
Licensee 6 months' notice of its intention to remove the patents and will
be effective immediately upon the expiration of the notice period.
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11. INFRINGEMENTS & EXCLUSIONS
11.1 Each party shall notify the other immediately of any actual, suspected or
anticipated infringement of the Trade Xxxx or any of the Licensed Patents
or any misuse of the Confidential Information of which it becomes aware.
The notification shall contain suggestions as to the damage or potential
damage which either or both parties are then suffering or are likely to
suffer from such an infringement or misuse.
11.2 Xxxxxx may in its absolute discretion determine whether or not to take
legal or other action against any third party for an actual or threatened
or suspected infringement of the Trade Xxxx or any of the Licensed Patents
or any misuse of the Confidential Information in the Licensed Manufacturing
Territory or the Licensed Sales Territory, and if Xxxxxx elects to take
legal or other action Xxxxxx:
11.2.1 shall bear all costs of the action;
11.2.2 shall have sole control over the form and conduct of such action;
11.2.3 may settle, compromise or discontinue the action as it thinks
fit;
11.2.4 shall be entitled to any award of costs and/or damages made in
relation to such action; and
11.2.4 shall indemnify Licensee against any costs or damages for which
Licensee may become liable as a result of the proceedings
provided that Licensee has not authorised or contributed to the
acts giving rise to the liability.
11.3 Licensee will give Xxxxxx all authority, information and assistance
requested by Xxxxxx to assist it to initiate, litigate, settle or
compromise any proceedings by Xxxxxx in respect of any such infringement or
misuse.
11.4 Licensee shall indemnify and hold Xxxxxx harmless from any liability
arising out of or related to any defects in design, materials or
workmanship in Licensed Products manufactured by or for Licensee under this
Agreement.
11.5 Licensee must promptly give written notice to Xxxxxx of any actual or
threatened infringement suit against Licensee or its customers which would
affect the manufacture, use or sale of Licensed Products. Xxxxxx shall make
available to Licensee free of charge any and all information in its
possession which Xxxxxx believes will assist Licensee in defending or
otherwise dealing with such suit.
11.6 Except as expressly set out in this Agreement, all conditions and
warranties, express or implied, and whether as to the Licensed Patents, the
Confidential Information, Licensed Products manufactured, sold or used
under this Agreement, or otherwise, are hereby expressly negatived and
excluded, and in no event shall Xxxxxx be liable for any indirect, economic
or consequential loss or damage.
11.7 Where the laws of any country or state in which this Agreement is effective
implies into this Agreement any term, condition or warranty, and those laws
avoid or prohibit provisions in a contract excluding or modifying them,
then the term, condition or warranty shall be deemed to be included in this
Agreement PROVIDED THAT Xxxxxx'x liability for a breach of any such term,
condition or warranty, including any economic or consequential loss which
Licensee may sustain, shall be limited to the maximum extent permitted by
the law of that country or state.
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12. DURATION
12.1 This Agreement shall be deemed to have commenced on the Effective Date and
unless terminated pursuant to Clause 13.1, will remain in force and effect
for the period specified in Item 8 of the Schedule from the Effective Date.
13. TERMINATION
13.1 Either party may terminate this Agreement and the licences hereby granted
by written notice to the other if:-
13.1.1 the other party breaches any of the provisions of this Agreement
which is capable of being remedied and fails to rectify such
breach within 14 days of being required in writing to do so;
13.1.2 the other party commits a material breach of this Agreement which
is not capable of being remedied within 14 days;
13.1.3 an order is made or an effective resolution is passed for the
winding up of the other party (other than for the purposes of a
solvent reconstruction or amalgamation);
13.1.4 a receiver or official manager of the other party's property or
assets or any part thereof is appointed, or an official manager
of the other party is appointed;
13.1.5 the other party, without the prior written consent of the
terminating party, makes an assignment for the benefit of its
creditors or any of them or enters into any arrangement or
composition with its creditors or any of them or threatens to do
so; or
13.1.6 the other party ceases to carry on its business or stops or
suspends payment of its debts or threatens to do so.
13.2 Any termination of this Agreement shall be without prejudice to the rights
of any party against any other party which may have accrued up to the date
of such termination.
14. POST TERMINATION/EXPIRATION
14.1 Expiration or termination of this Agreement shall not relieve Licensee of
any obligation to pay to Xxxxxx any royalties or other amount that had
accrued prior to such expiration or termination.
14.2 The obligations set out in Clauses 3.3, 6.2 to 6.7 inclusive, 8.7, 11.1,
11.5, 13.2, 14.1, 14.3 to 14.5 inclusive, 15.1 to 15.4 inclusive and 16.1
to 16.8 inclusive of this Agreement shall survive the expiration or
termination of this Agreement.
14.3 On the termination or expiration of this Agreement, the Licensee must:
14.3.1 immediately deliver to Xxxxxx an inventory listing all Licensed
Products manufactured pursuant to the terms of this Agreement by
the Licensee but as yet unsold, and to stop any manufacturing of
the Licensed Products except for reasonable completion of work in
progress as at the date of termination or expiration, which,
subject to the payment of all royalties in respect thereof, may
continue for up to a period of one year after termination;
14.3.2 except to the extent necessary to enable it to complete any work
in progress pursuant to Clause 14.3.1, immediately deliver up to
Xxxxxx all material (whether drawings, prototypes, or any other
medium of storing or recording or embodying information)
comprising or containing any of the Confidential Information,
including any and all copies in whole or in part thereof and any
material on which Licensee has recorded or stored in any form,
the Confidential Information or any part of it;
14.3.3 except as permitted in Clause 14.3.1, immediately cease to use
any of the Licensed Patents and Confidential Information; and
14.3.4 except as permitted in Clause 14.3.1, immediately cease using the
Trade Xxxx and co-operate in the cancellation of any registration
of Licensee as a user of the Trade Xxxx in the Licensed
Manufacturing Territory or the Licensed Sales Territory, and
shall execute all documents and do all things as may be necessary
or desirable in connection with such cancellation.
10
14.4 During the period of one year after the termination or expiration of this
Agreement, Licensee may, subject to its paying royalty payments and
reporting to Xxxxxx as required under the terms of this Agreement, dispose
of Licensed Products which it had on hand prior to termination or
expiration or manufactured as part of work in progress completed pursuant
to Clause 14.3.1, provided that Clauses 8.1 to 8.11 inclusive shall
continue to apply in respect of all such sales.
14.5 Upon the completion of work in progress as referred to in Clause 14.3.1 or
the expiration of the period of one year after the termination or
expiration of this Agreement (whichever is the earlier), Licensee shall
immediately:
14.5.1 cease to use any of the Licensed Patents and Confidential
Information and Trade Marks and deliver up to Xxxxxx all material
(whether drawings, prototypes, or any other medium of storing or
recording or embodying information) comprising or containing any
of the Confidential Information retained by it for the purpose of
completing the work in progress including any and all copies in
whole or in part thereof and any material on which Licensee has
recorded or stored in any form the Confidential Information or
any part of it;
14.5.2 deliver up to Xxxxxx all material (whether drawings, prototypes,
or any other medium of storing or recording or embodying
information) comprising or containing any of the Confidential
Information, including any and all copies in whole or in part
thereof and any material on which Licensee has recorded or stored
in any form, the Confidential Information or any part of it.
15. DISPUTE RESOLUTION
15.1 The parties agree that if any dispute arises between them in relation to
this Agreement they will use their best endeavours to resolve that dispute
in a spirit of good faith and on a commercially realistic basis by mutual
negotiation or by mediation prior to commencing litigious proceedings.
15.2 Any mediator shall be an independent person chosen by the parties or, at
their request, by the Australian Commercial Disputes Centre. Each party
shall bear its own costs. The costs of the mediator shall be borne by the
parties equally.
15.3 If the parties fail to resolve any dispute, controversy or claim by way of
mutual negotiation or by mediation:
15.3.1 Such dispute, controversy or claim shall be referred to and
finally determined by arbitration in accordance with the WIPO
Arbitration Rules;
15.3.2 The arbitral tribunal shall consist of a sole arbitrator;
15.3.3 The place of arbitration shall be Sydney, Australia.;
15.3.4 The language to be used in the arbitral proceedings shall be
English;
15.3.5 Each of the parties may disclose the existence of the
arbitration, and the award need not be treated as confidential by
the parties;
15.3.6 The arbitration agreement constituted by this clause shall be
governed by and construed in accordance with the law for the time
being and from time to time in force in New South Wales,
Australia.
15.4 Notwithstanding Clause 15.3, Licensee acknowledges and agrees that:
15.4.1 1 an alleged breach by Licensee of any of Clauses 6.2 to 6.7
inclusive will constitute exceptional circumstances entitling
Xxxxxx to obtain injunctions and other interim or conservatory
measures;
15.4.2 an alleged infringement by Licensee of any of Xxxxxx'x patents or
copyright will entitle Xxxxxx to obtain injunctions and other
interim and/or final relief.
11
16. GENERAL
16.1 This Agreement is governed by and must be construed in accordance with the
laws of New South Wales, Australia. Each party irrevocably and
unconditionally submits to the non-exclusive jurisdiction of the Courts of
New South Wales and all Courts competent to hear appeals from any of those
Courts.
16.2 All communications whether written or oral in respect of this Agreement
shall be in English.
16.3 Failure of either party to insist upon the strict performance of any
provisions hereof or to exercise any right or remedy shall not be deemed a
waiver of any right or remedy with respect to any existing or subsequent
breach or default; the election by any party of any particular right or
remedy shall not be deemed to exclude any other; and all rights and
remedies of all parties shall be cumulative.
16.4 If any provision of this Agreement is void, voidable, illegal or
unenforceable in any state, province or country in which this Agreement is
intended to be effective, or if this Agreement would, if a particular
provision were not omitted, be so void, voidable, illegal or unenforceable,
then:
16.4.1 if the offending provision can be read down so as to make it
valid and enforceable without materially changing its effect, it
must be read down, in so far as it applies in that state,
province or country, to the extent necessary to achieve that
result;
16.4.2 otherwise, that provision shall be severed from this Agreement in
so far as it applies in that state, province or country, and this
Agreement shall be read and construed and shall take effect for
all purposes in that state, province or country as if that
provision were not contained in this Agreement, but without in
any way affecting the effectiveness, validity, legality or
enforceability of the remaining provisions of this Agreement.
16.5 Licensee may not assign the benefit of or any of its rights or obligations
under this Agreement without the prior written consent of Xxxxxx which may
be granted or withheld in the absolute discretion of Xxxxxx and which if
granted may be granted subject to such terms and conditions as Xxxxxx may
prescribe.
Licensee will be deemed to have assigned its rights and obligations under
this Agreement if:
16.5.1 any body corporate or any related bodies corporate not holding,
or not holding between them, as at the date of this Agreement,
more than 50% of the issued capital or voting rights of the
Licensee, acquires or acquire between them so much of the issued
capital or voting rights of the Licensee as, when added to the
issued capital or voting rights (if any) previously held by such
body corporate or related bodies corporate, represent in the
aggregate more than 50% of the issued capital or voting rights of
the Licensee;
16.5.2 any body corporate or any related bodies not controlling or not
controlling between them, as at the date of this Agreement, the
composition of the Licensee's board of directors, gains control
of the Licensee's board of directors; or
16.5.3 either of the changes referred to in 16.5.1 or 16.5.2 occur in
any holding company of the Licensee.
Without limiting the circumstances in which a body corporate is
to be taken to control the composition of the Licensee's board of
directors, a body corporate will be deemed to have such control
if it has the power to appoint or remove all, or a majority, of
the directors of the Licensee.
16.6 This Agreement embodies the entire understanding and agreement between the
parties as to the subject matter of this Agreement.
16.7 This Agreement may only be varied by the written agreement of the parties.
12
16.8 This Agreement may consist of a number of counterparts, and if so the
counterparts taken together constitute one and the same instrument.
16.9 Any notice or demand under or relating to this Agreement shall be
sufficiently served if given or made by facsimile or pre-paid registered
airmail letter to the party to be served at the following addresses and to
the attention of the following employees, or at such other address and/or
to the attention of such other employee as may from time to time be
notified in writing by such party to the other party, and such notice or
demand shall be deemed to have been delivered at the time of dispatch in
the case of a notice or demand sent by facsimile (provided the sender shall
have received a facsimile transmission report which indicates that the
facsimile was sent in its entirety to the facsimile number of the
addressee) or on the third day after posting in the case of a notice or
demand so sent by post:
Xxxxxx Steering Technology Limited
Postal address: 00 Xxxxxxxx Xxxx
Xxxxx Xxxx, XXX 0000
Xxxxxxxxx
Facsimile: 61 2 9878 6373
Attention: Xxxxx Xxxxxxxxxxxx
JINGZHOU HENGLONG AUTOMOTIVE PARTS
Postal address: Henglong Road
Yuqiao Exploration District
Jingzhou, Hubei Province, China
Facsimile: [Insert fax number]
Attention: [Insert contact name]
13
SCHEDULE
Item 1
Effective Date: 31 October 2001
Item 2
Part 1
Licensed Manufacturing Territory: People Republic of China
Part 2
Licensed Sales Territory: People Republic of China
Item 3
DESCRIPTION Country Filing Date Appl'n No. Patent No. Exp. Date
LINEAR LOW NOISE VALVE Australia 15/01/93 33387/93 659917 15/01/13
LINEAR LOW NOISE VALVE China 15/01/93 93101711.4 93101711.4 15/01/13
LINEAR LOW NOISE VALVE Australian Prov 16/01/92 PL0446 16/01/93
LINEAR LOW NOISE VALVE PCT 15/01/93 PCT/AU93/00015
NEW DIE HEAD Australia 3/10/85 48263/85 556773 3/10/05
NEW DIE HEAD China 2/10/85 85108459 2177 2/10/00
NEW DIE HEAD Australian Prov 4/10/84 PG7491
NEW ROLL-IMPRINTING MACHINE Australia 3/10/85 52114/86 566086 3/10/05
NEW ROLL-IMPRINTING MACHINE Australian Prov 4/10/84 PG7491
Item 4
Labour Rate: A$150.00 per hour
Item 5
Royalty: to be agreed
Item 6
--------------------- ------------------ ------------------ -------------------
YEAR 1 YEAR 2 YEAR 3 YEAR 4~10
--------------------- ------------------ ------------------ -------------------
A$270,000.00 A$270,000.00 A$150,000.00 A$150,000.00
--------------------- ------------------ ------------------ -------------------
Item 7
The labour rate specified in Item 4 and the royalty rates in Items 5 (in each
case as increased by previous applications of this Item 7) will be increased by
5% upon or as soon as practicable after, but in either case with effect on and
from, each and every anniversary of the Effective Date.
Item 8
Term: 10 years
14
EXECUTED AS AN AGREEMENT
Signed for and on behalf of Xxxxxx Steering Technology Limited in the presence
of:
-----------------------------------
Signature of authorised person
----------------------------------- -----------------------------------
Signature of witness Office held
----------------------------------- -----------------------------------
Name of witness (print) Name of authorised person (print)
Signed for and on behalf of [Insert
full company name of Licensee] in
the presence of:
-----------------------------------
Signature of authorised person
----------------------------------- -----------------------------------
Signature of witness Office held
----------------------------------- -----------------------------------
Name of witness (print) Name of authorised person (print)
