1: [ILLEGIBLE]
Xxxxx, Xxxxxx Xxxxxx
3: Rochester, New York
Xxxxxxx & Xxxxxx LLP
Tet. (716) 454-5370
July 8, 1996 F~t7I6,42.~.:2o~,
Xx. Xxxxxxx Xxxxxxxx
Xxxxxx Product Development, Inc.
0000 Xxxx Xxxxx Xxxx
Xxxxx 000
Xxxxxxxx, Xxx Xxxx 00000
Dear Xxxx:
Enclosed is an originally executed License Agreement together
with all attachments and schedules. Also enclosed is a copy
of the Assignment of
the patent from Xxxxx X. Xxxxxx, Xx. to designWright, Inc. for your file.
Good luck and give me a call to schedule a barbecue.
Very truly yours,
XXXXX, XXXXXX, XXXXXX, XXXXXXX & XXXXXX XXX
36:
Enclosures
LICENSE AGREEMENT
This Agreement is entered into as of June 31, 1998, by and
between designWright Products, Inc., a New York corporation with its principal
office at 0000 Xxxxxxx Xxxx, Xxxxxxx, Xxx Xxxx 00000 (Licensor), and Ram-Sin
Product Development, Inc., a New York corporation with its principal office at
0000 Xxxx Xxxxx Xxxx, Xxxxx 000, Xxxxxxxxx, Xxx Xxxx 00000 (Licensee).
WITN ES S ET HI:
WHEREAS, Licensor possesses certain intellectual
property rights and is the sole owner of United States Letter Patent
No. 5,674,423, dated October 7, 1997 for a heated mouse pad, and
United States Letter Patent No. 5,686,005, dated November 11, 1997
for a heated computer pad:
and
WI-IEREAS, Licensor is willing to grant, and Licensee
desires to obtain, the exclusive rights to use such rights in accordance
with the terms and conditions hereinafter set forth.
NOW, THEREFORE, in consideration of the mutual
covenants and agreements of Licensor and Licensee contained herein,
the parties hereto agree as follows:
I. Definitions
1.1 "Gross Sales" means all income actually collected
by Licensee from the sale of the Product and invoiced after the date
hereof, but shall not include (i) any sublicense fees obtained by Licensee
as set forth in Section 7 of this Agreement or (ii) any income collected by
Licensee which is refunded to any purchaser due to any normal and
customary returns of the Product.
1.2 "Improvement" means any patentable or unpatentable advance or development
directly or indirectly related to the Patents, -
1.3 "Licensed Technology" means the Patents, the Product or any Improvernent
1.4 "Patents"mean United States Letter Patent No. 5,674,423
for "Heated Mouse Pad," dated October 7, 1997 and filed on December 2, 1994
by Xxxxxxxxx, and United States Letter Patent No. 5,686,005 for
"Heated Computer
Pad," dated November 11, 1997 and filed on November 17, 1995 by Licenser,
and all continuations, divisions, extensions and reissues thereof.
1.5 "Product" means the heated mouse pad and heated computer
pad covered by the Patents, commonly referred to as "Heatwave."
1.6 "Proprietary Information"means all information relating to,
arising out of, incidental to, or in any way connected with this Agreement,
whether or not of a technical or scientific nature and whether or not known
or hereafter discovered by any party, including the Patents,
copyrights, trademarks, know-how, other technical information,
business information,
J
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information set forth on Schedule 8.9 attached hereto as it relates
to the sale of Licensed Technology or similar or competing products, the
Product, information developed under this Agreement, and all information
which Licensee receives from Licensor or otherwise learns or discovers
while operating under this Agreement, which relates to Licensor's business
or operations or is otherwise generally considered by Licensor to be
confidential in nature; pro[illegible] however that Proprietary Infommtion
shall not include any of the foregoing if it is or becomes generally
available to the public without the wrongdoing of Licensee.
2 License Grant
2.1 Licensor hereby grants to Licensee a license
(the "License") under the Patents and any Improvements to develop,
market and sell the Product. The License shall be exclusive, with the
right to grant sublicenses.
2.2 Licensor reserves the right to continue research
and development relating to the Patents and any Improvements only
and subject to the terms and conditions of this Agreement.
2.3 Any improvement conceived of or developed by
Licensee during the term of this Agreement shall belong to Licensor
and shall be part of the Licensed Technology. Licensee shall promptly
notifies Licensor of any such Improvement, and shall sign such
applications, assignments and other instruments as Licensor may
request to obtain, protect and perfect such intellectual property protection
for the Improvement as Licensor deems appropriate.
3. Term of Agreement: Termination
3.1 Unless earlier terminated as provided
herein, the term of the License shall comrrienee on the date hereof and
shall terminate upon the expiration of the last of the Patents:
provided that Licensee meets the minimum sales
requirements set forth in Section 4 of this Agreement.
3.2 Licerisor shall have the right to terminate
the License granted hereunder upon thirty (30) days written notice for
Licensee's failure to observe any of its obligations hereunder, including,
but not limited to, the obligations set forth in Sections 4, 5, 6, 7, 11. 13
and 14 hereof:
provided, however, that, if such failure is unintentional and curable,
Licensor shall .gjve licensee written notice of such failure and at least a
thirty (30) day period to cure any such failure.
3.3 Upon termination or expiration of this
Agreement, except as set forth herein, all rights and licenses granted
to Licensee hereunder (but not Licensee's obligations under Sections;
3.4, 4.2, 7.3, 9 or 14 or Licensee's rights under Sections 3.4, 7.3 or 9
or Licensor's rights under Sections 3.4, 4.2, 7.3, 9 or 11 hereunder)
shall terminate and immediately revert to Licensor, and Licensee shall
promptly cease (i) any use or practice of the Licensed Technology and
(ii) any making, use or sale of the Products, except as is provided in
Section 3.4 below. Licensee shall, lit its own expense, return to Licensor
any Proprietary Information disclosed to it by Licensor as soon as
practicable after the date of such termination or expiration, including,
but not limited to, original documents, drawings, computer diskettes,
models, samples, notes, reports, notebooks, letters, manuals, prints,
memoranda and any copies thereof, which have been received or derived
by the receiving party. All Proprietary Information of Licensor shall remain
the exclusive property of Licensor during the term of this Agreement
and thereafter.
112:
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3.4 The parties hereto agree that,
once this Agreement is terminated or expires, Licensee shall
have the right after such date of termination or expiration, to
manufacture, assemble, sell, distribute, service, install, use,
lease, test any and all Products whose manufacture or
assembly commenced on or prior to such date of termination
or expiration, until such time as Licensee has sold all such
Products, in accordance with the terms and conditions of this
Agreement in effect immediately prior to such termination
or expiration.
3.5 In the event of termination
of this Agreement as set forth in Section 3.2 above,
Licensor shall have the right to enforce a termination of this
Agreement in any court of competent jurisdiction, and to seek
injunctive relief as well as damages for any breach or alleged
breach hereof (including reasonably incurred attorneys' fees
and expenses in bringing such an action), it being recognized
that the wrongful use of the Licensed Technology by Licensee
will result in harm to Licensor that is not compensable in
monetary damages.
4. Due Dillegence Minimum Sales
4.1 Licensee shall use its best efforts
to bring the Product to market through a thorough, vigorous and diligent
program for exploitation of the Patents and to continue active, diligent
marketing efforts for the Product throughout the life of this Agreement.
4.2 In selling the Product, Licensee must
meet the following minimum sales requirements: During the period
commencing on the date hereof and ending on December 31, 1999,
Licensee must have Gross Sales of the Product of at least $335,000.
During the calendar year 2000, Licensee must have Gross Sales of the
Product of at least $500,000. In each subsequent calendar year
(or part thereof) during of the term of this Agreement, Licensee must
have Gross Sales of the Product of at least $670,000 (or such amount
which, if annualized. would equal at least $670,000). If, in any such period,
Licensee does not meet these minimum sales requirements, it shall
pay Licensor an amount equal to 15% of the minimum Gross Sales
requirements for such period and this Agreement shall remain in full
force and effect. Such payment shall be payable in cash or certified
check within ten (10) days of the end of such period, and shall be in
addition to any other payments due Licenso~ under this Agreement.
If, at any time during the term of this Agreement, Licensee does not
meet its minimum GrossSales requirements and elects not to pay
an amount equal to 15% of the minimum Gross Sales requirements
for such period, this Agreement shall terminate and Licensee shall
have no further obligations to Licensor hereunder except for those
obligations set forth in Section 3.3 hereof.
5. Initial Payment
Upon execution of this Agreement, Licensee shall
pay Licensor an initial non-refundable payment in the amount of
$20,000 in cash or certified check.
6. Royalties
6.1 In consideration of the grant of
the License to Licensee by Xxxxxxxx, Licensee hereby agrees to
pay to Licensor a royalty equal to 15% of Licensee's Gross Sales
of the Product.
136:
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6.2 The first royalty payment shall be
made by Licensee to Licensor on September 30, 1 998 and the
remaining royalty payments shall be paid quarterly. Licensee
shall deliver Licensor with each royalty payment due hereunder
an analysis of the gross sales and any [illegible] on which the
royalty payment was computed.
6.3 Licensor and its designated representatives
shall have the right, at any time the term of this Agreement and until
a period of ninety (90) days following the payment of the last royalty
payment required to be paid hereunder, to inspect and audit the books
and recoida of Licensee for the purpose of confirming the amount of Gross
Sales received by the Licenset Such inspections and audits, if any, shall
be conducted during Licensee's regular business hours, and Licensor
shall give Licensee notice at least fourteen (14) days before conducting
any such inspection or audit. Licensee agrees to cause its management
and employees to cooperate w~ih Liccnsor or its representatives during
any such inspection or audit and to provide all infornatic to Licensor and
its representatives as they may reasonably request.
7. Sublicense
7.1 Licensee shall have the right to sublicense
any of the rights and licenses granted hereunder, and it is the intent of the
parties that sublicenses shall be available to qualified third parties on fair
and reasonable terms. During the term of any Sublicense and any extension
thereof, Licensee and Licensor shall be compensated as set forth in
Section 7.2 hereof. Sublicenses shall be nonexciusive licenses that are
transferable only from Licensee to Licensor. Licensee shall supply
Licensor with a copy of each such sublicense agreement within thirt (30)
days of the execution of the sublicense.
7.2 Licensee shall pay to Licensor fifty
percent (50%) of any and all "net income"
received by Licensee from sublicensing. Such payments shall
be in cash or certified check and shall be made to Licensor quarterly
as provided in Section 6.2 of this Agreement. Licensee shall deliver
to Licensor with each sublicense payment due hereunder an analysis
of the sublicense fees and other payments collected by Licensee.
For purposes of this Section 7.2, "net income"
shall mean all revenues received by Licensee from sublicensing
minus Licensee's reasonable expenses incurred to obtain and
maintain the sublicense, which such expenses shall pot exceed 5%
of all income received by Licensee from sublicensing. Upon Licensor's
request, Licensee shall provide documentation of expenses incurred to
obtain and maintain the [illegible]
7.3 If this Agreement becomes nonexclusive
or if it is terminated for any reason, during the term of any sublicense,
Licensee shall continue to comply with Section 7.2 hereof with respect
to such sublicense and shall continue to collect the appropriate
sublicense payment
and to remit 50% of said payments to Licensor pursuant to Section 7.2 hereof,
but Licensees no longer have the authority to sublicense as set
forth in Section 7.1 hereof.
8. ~presentations and Warranties of Licensor
8.1 That it is a corporation duly formed, validly
existing and in good standing under the laws of the State of New York except
as set forth on Schedule 8.1 attached hereto.
8.2 That it has proper authority to enter into and
carry out the terms, conditions and covenants contained in this Agreement
and all schedules and attachments hereto.
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8.3 That it has the exclusive right to enter into
this Agreement and to license all related to the Patents and the Product to
Licensee as provided herein.
8.4 That its execution and delivery and performance
of this Agreement will not infringe or encroach upon the rights of others.
8.5 That this Agreement constitutes its valid
and binding obligation enforceable iii accordance with its terms.
8.6 That it is not subject to or bound by any
agreement.,judgment, order or decree of any court or governmental agency
which would prevent, hinder or delay the execution and performance of
this Agreement.
8.7 That to its knowledge no person or entity
has or can rightfully claim any interest in the Patents or Product except
Licensor and Licensee.
8.8 That it is not aware of any fact that would
have an adverse effect on the Patents, the Product or Licensee's ability to
sell and market the Product.
8.9 That Schedule 8.9 attached hereto and
incorporated herein by reference contains the name, address and contact
person of each party that Licensor has contacted relating to the Patents
and the Product arid a summary of the status of Licensor's discussion with
that particular party.
9. Indemnification and Covenant
9.1 each party to this Agreement shall be fully
responsible for and shall defend, indemnify and hold the other party
harmless from and against any and all losses, costs, expenses
(including, without limitation, reasonable attorneys' fees), damages,
liabilities or claims arising out of or in connection with any claim by
any third party arising out of the other party's use of
the Licensed Technology, whether such claim or expense
is based on warranty, contract, tort (including negligence), any theory
of strict liability, or otherwise.
9,2 Licensor shall pay and be solely responsible for
the New York State corporate
income taxes listed on Schedule 8.1 attached hereto. -
10. Title
During and after the term of this Agreement, the
Licensed Technology shall remain the property of Licensor. All
use of the Licensed Technology by Licensee shall inure to the benefit
of Licensor. During the term of this Agreement, Licensor shall
maintain the Patents.
11. Maintenance of Quality Standards
To protect and preserve the strength of the Licensed
Technology and related goodwill, Licensee agrees that: (a) it will sell
only products which are of comparable or better quality than those
sold by Licensee immediately prior to the date hereof, (b) all products
will be macic in compliance with all applicable foreign, federal, state,
and local laws, rules, and regulations in effect where the Product is
sold (collectively, "Laws"), (c) all products will be made consistent
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with the normal manufacturing practices of Licensee
prior to the date hereof, (d) Licensee establish, and at all times
comply with, quality control provisions and instructions at least equal
to those followed by Licensee immediately prior to the date hereof,
and (e) authorized employees or agents of Licensor shall have the
right, during regular business hours and with at least forty
eight (48) hours prior notice, to inspect the plants, facilities and
business records of Licenser relating to the Licensed Technology,
provided they do not interfere with Licensee's operations.
12. Infringemen~
Licensee acknowledges Licensor's ownership of
all rights in the Licensed Technology. The parties to this Agreement
shall promptly advise each other of arty known or suspected
infringements or improper use of the Licensed Technology or
acts considered to be acts of unf~~ir competition. Licensee shall
not institute or prosecute any proceeding or litigation respecting
such matters. Licensee shall join with and cooperate with Licensor
upon its request in any proceeding or litigation for protection of the
Licensed Technology and the goodwill related thereto. Licensor
shall provide Licensee with all information relating to any action
investigated commenced or defended. So long as Licensor is
financially able to do so, it shall take any arid all action to protect
the Licensed Technology. The expenses of such proceedings
shall be borne by Licensor. In the event that Licensor is not financially
able to take such action, Licensee maY take any and all action to
protect the Licensed Technology and may deduct the reasonable
expcnses of such proceedings from the royalties owed to Licensor
pursuant to Section 6 hereof.
Notwithstanding anything herein to the contrary, approval by
Licensor of the display of the Licensed Technology on or in connection
with equipment, property or the products used or produced by Licensee
shall not constitute a warranty of merchantability or fitness for a particular
purpose and Licensor shall not be liable for any defect or deficiency in
any such equipment, property or products, nor for any infringement of
any proprietary right. Any settlement proceeds received by Licensee or.
Licensor as a result of the settlement of an infringement or improper use
claim with respect to any third party shall be the property of Licensee
subject to Licensee's royalty obligation hereunder.
13. Insurance
Licensee shall carry at all times during the term of
this Agreement, for the benefit of itself and Licensor, general liability
insurance, including product liability insurance,on operations in such
amounts and with an insurer as are comparable to insurance carried
by Licensee immediately prior to the date hereof.
14. Confidential Information
Licensee acknowledges that the Proprietary Information
is confidential and, among other things, represents important trade
secrets of Licensor. All disclosures of the Proprietary Information by
Licensor to Licensee, its agents and employees shall be held in strict
confidence by Licensee, its agents and employees, and Licensee shall
disclose the Proprietary Information only to those of its agents and
employees to who it is necessary in order properly to carry out their
duties as limited by the terms and conditions hereof. Licensee shall
not use the Proprietary Information except for the purposes of exercising
its rights and carrying out its duties hereunder. The provisions of this
Section 14 shall also apply to (i) any consultants or subcontractors
that the Licensee may engage in connection with its obligations under
this Agreement and (ii) any parties to whom Licensee sublicenses.
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15. Miscellaneous
15.1 The parties agree that this Agreement
imposes personal obligations on Licensee, Except for the right to subhicense
as set forth in Section 7 hereof, Licensee shall not assign any
rights under this
Agreement not specifically transferable by its terms without the written
consent of Licensor, which consent shall not be unreasonably withheld.
Licenser may assign its rights here under.
15.2 This Agreement shall be binding upon
and inure to the benefit of the parties and their respective successors
and permitted assigns, If for any reason Licensee is sold, merged,
consolidated or otherwise reorganized with or into any other person
or entity (the "Successor"), with the consent of Licensor required hereunder,
the Gross Sales of the Successor relating to tiic business contemplated by
this Agreement as conducted by Licensee immediately prior to acquisition
by the Successor, as such business shall thereafter be modified by the
Successor, shall constitute the Gross Sales upon which (i) the minimum
sales requirement under Section 4 shall be based and (ii) the royalties
under Section 6 hereof shall be computed.
15.3 This Agreement constitutes the complete
agreement of the parties and supercedes any prior agreement or understanding,
written or oral, concerning the subject matter covered hereby. This Agreement
may be modified or amended only in writing signed by both parties.
15.4 In the event of litigation to enforce or defend
enforcement of this Agreement, the losing party shall pay all costs and
expenses incurred by the prevailing party.
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IN WITNESS WHEREOF, the parties have executed
this Agreement as of the date urn set forth above.
LICENSOR:
design Xxxxxx Products, Inc.
By:_______________
Xxxxxx X. Xxxxxx, Xx., President
LICENSEE:
Ram-Sin Product Development, Inc.
By:
Xxxxxx Xxxxxxxx, President
-
-9-
IN WITNESS WHEREOF~ the parties have executed this
Agreement as of the date firn set forth above.
LICENSOR:
designWrighi Products, Inc.
By:___________________
Dennts X. Xxxxxx, Si,, President
LICENSEE:
Ram-Sin Product Development, Inc
295: By:
_________________________
Xxxxxx Xxxxxxxx, President
311:
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IN WITNESS WITNESS WHEREOF, the parties have executed this Agreement
as of the date first set forth above.
LICENSOR:
designWright. Products, Inc.
Xxxxxx X. Xxxxxx. $ ., Pt~ident
LICENSEE:
Ram-Sin Product Develop2.~nt, Inc
By:__
Xxxxxxx Xxxxxxxx, President
RI 5~359.4 4O~JOOOOOJ
