SUBLICENSE AGREEMENT
THIS AGREEMENT, made as of this 30th day of September, 1987, by and
between HOSOKAWA MICRON INTERNATIONAL, INC., a Delaware corporation, with
offices located at 000 Xxxxx Xxxxxx, Xxx Xxxx, Xxx Xxxx 00000 (hereinafter the
"Licensor"), and HOSOKAWA MICRON CORPORATION, a Japanese corporation with
offices located at Osaka, Japan (hereinafter the "Licensee").
WITNESSETH:
WHEREAS, the University of Arkansas ("UA") is the patentee by
assignment from Xx. X.X. Xxxxxxxx and R.E. Xxxx of the Graduate Institute of
Techno1ogy, University of Arkansas ("GIT"), to whom was granted United States
Patent No. 4,633,714 on January 6, 1987, for an Aerosol Particle Charge and Size
Analyzer ("E-SPART"); and
WHEREAS, Licensor is licensee of the E-SPART pursuant to an
agreement with UA dated February 16, 1987 (the "License Agreement"); and
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WHEREAS, Licensee is in the powder and particle processing business
and desires to acquire a license to make, have made, use and sell the E-SPART in
the Territory (as hereafter defined);
NOW, THEREFORE, in consideration of the foregoing premises, the
parties hereto do hereby agree as follows:
1.0 Definitions
1.1 Technology Field
The term, "Technology Field" as used herein shall mean industrial
powder and particle processing and related peripheral fields.
1.2 Subject Product
The term "Subject Product" as used herein shall mean the E-SPART as
described in United States Patent No. 4,633,714 and any improvements made
thereto for use in the Technology Field.
1.3 Improvement
The term "Improvement" as used herein shall mean any modification of
the E-SPART as described in United States Patent No. 4,633,714.
1.4 Patent Rights
The term "Patent Rights" as used herein shall mean any patent
application previously or hereafter filed by or on behalf of UA or Licensor and
any patent now issued or hereafter issuing on any patent application filed by or
an behalf of UA
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or Licensor which patent application relates to the Subject Product, its method
of manufacture or use in the Technology Field.
1.5 Proprietary Information
The term "Proprietary Information" as used herein shall mean any
confidential technical information, proprietary know-how, trade secret or other
intellectual property right used in or relating to Subject Product.
1.6 Licensed Product
The term "Licensed Product" as used herein shall mean any Subject
Product based upon Patent Rights and/or Proprietary Information which is
produced or sold by Licensee, sublicensees, or contract manufacturer.
1.7 Net Sales
The term "Net Sales" as used herein shall mean the total amount paid
to Licensee or sublicensee by purchasers of Licensed Products less any freight,
insurance, packaging, sales, excise or use taxes, export or import duties, and
commissions, insofar as such freight, taxes, duties, and/or commissions are
actually paid by Licensee; provided, however, any commissions deducted to
determine net sales shall be reasonable, consistent with commissions prevailing
in the industry, and not include commissions paid to any subsidiary or affiliate
of Licensee except as such commissions relate to local sales representative
destination commissions.
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1.8 Territory
The term "Territory" as used herein shall mean Japan, Australia, New
Zealand, U.S.S.R., all Asian and Middle Eastern Countries and all territories
and possessions thereof.
2.0 Grant of License
Licensor hereby grants to Licensee and Licensee hereby accepts from
Licensor the nontransferable (except as set forth herein) right to use the
Patent Rights and Proprietary Information to make, have made, use and sell
Licensed Products in the Territory.
3.0 Licensor Technical Services
During the term of this Agreement, Licensor will continue to make
available to Licensee without charge such Proprietary Information, general
technical advice and training services as may be necessary to enable Licensee to
continue to make, have made, use, sell and service the Licensed Products.
Licensor shall also furnish, at the request of the Licensee, technical experts
to assist the Licensee in making, having made, using, selling, and servicing the
Licensed Products for such reasonable time as may be necessary, and the Licensee
shall pay the salaries (or reimburse Licensor for salaries and standard fringe
benefits paid by it) and traveling and living expenses of such technical experts
while they are away from the facilities of the Licensor.
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3.1 Secrecy Agreement
If, pursuant to Section 3.0 hereof, the Licensor shall send
employees to any facility or office of Licensee or Licensee's affiliated
companies to deliver training, Proprietary Information or other data, or to make
inspections, such employees shall, if requested, execute Licensee's standard
confidentiality covenants, to protect information not covered by this Agreement,
and shall obey and conform to all codes and regulations of such offices or
facilities.
4.0 Royalties and Other Payments
(a) For and in consideration of the licensing granted above,
Licensee agrees to pay Licensor a royalty in the amount of five percent (5%)
of the Net Sales of all Licensed Products in the Territory.
(b) Royalty payments shall be made to the party and in the manner
designed by Licensor in United States Dollars converted from the prevailing
currency in the Territory involved at the official rate of exchange of an
authorized foreign exchange bank quoted on the date when each such royalty
payment is due under Section 5(a) hereof, after deduction of any taxes imposed
and required to be withheld therefrom by controlling taxation laws in the United
States, the Territory or elsewhere. Licensee shall obtain a properly
authenticated certificate evidencing payment of such tax, which shall show the
Licensor's name as the recipient of the royalties and shall
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forward same to Licensor simultaneously with royalty remittances.
5.0 Accounting Requirements
(a) All royalty payments due from Licensee to Licensor hereunder,
shall be computed quarterly for calendar quarters ending on the last day of
March, June, September and December of each year, and shall be paid within
thirty (30) days following the end of each such calendar quarter. A report
setting forth the basis of the royalty calculation shall accompany payment.
(b) Licensee shall keep full and accurate records of all Licensed
Products manufactured and sold by it or its sublicensees or contract
manufacturer and shall upon request of Licensor, give to any representative
appointed by Licensor access to inspect such records during regular business
hours and make copies thereof.
6.0 Promotion of Licensed Products
Licensee shall exercise its best efforts to promote the sale of the
Licensed Products in the Territory.
7.0 Confidential Information
Licensee agrees that it will treat as strictly confidential all
Proprietary Information furnished at any time by Licensor hereunder, and shall
not disclose it in whole or in
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part to third parties. This obligation of confidentiality does not apply to
information which:
(a) was known and can be proven by documentary evidence to have
been known to Licensee prior to disclosure by the Licensor;
(b) is or becomes, through no fault of Licensee, public knowledge
or literature;
(c) is disclosed to Licensee in good faith by a third party other
than UA who had a right to make such disclosure; or
(d) is disclosed to sublicensees or contract manufacturer of
Licensee.
8.0 Infringement by Third Parties
Licensor and Licensee shall promptly notify each other in writing if
they acquire knowledge of any infringement of any of the Patent Rights or
Proprietary Information. Licensor reserves the right, but shall not be required,
to undertake any action against any alleged infringement by third parties.
Licensor shall notify Licensee within seventy-five (75) days after receipt of
notice of infringement indicating whether it will take any steps against the
alleged infringers. If Licensor elects not to proceed against an alleged
infringer, then the Licensee shall have the right, but not the obligation, to
undertake any and all actions it deems appropriate. In any action against an
alleged infringer, Licensor and Licensee may, at the other's request, join
together in taking whatever steps the parties agree are necessary to prevent
infringement.
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8.1 Defense of Infringement Suit
Licensor and Licensee agree to cooperate in the defense of any suit
brought against UA, Licensor, Licensee, sublicensees, or contract manufacturer
for infringement of any patent or for wrongful use of Proprietary Information of
any third party insofar as such suit is based upon a claim that the infringement
or wrongful use is attributable to the application by Licensor or Licensee
without substantial modification of the Patent Rights and/or Proprietary
Information provided under this agreement. Licensor's total liability for
payment of costs in the defense of any suit or suits shall be limited to the
amount of any gross royalties payable to Licensor under Sections 4.0 and 5.0,
and such costs shall be deducted according to the provisions of Section 10.1.
9.0 Future Improvements
With respect to Improvements made to the Subject Product by either
party to this agreement during its term, the party who makes the Improvement
shall retain the ownership rights thereto. For all Improvements made by one
party, however, the other party and UA will receive a license thereto, including
a license under any patent or patent application covering such Improvements, on
the same terms and conditions as set forth herein covering the Technology Field;
subject, however, to the intervening rights of any third party which may have
funded the research which resulted in the Improvement made
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to the Subject Product; provided, however, that Licensor shall subject any
research projects funded by third parties which may lead to improvements in the
Subject Product to existing license agreements including this Agreement. Any
license granted to Licensor and UA under this Section will be royalty free. Any
license granted to Licensee under this Section will be under the same terms and
conditions set forth in this Agreement.
The party making an Improvement to the Subject Product shall have
the obligation to notify promptly the other party and UA and to provide the
other party and UA with sufficient Proprietary Information for it to be able to
utilize the Improvement in the making, having made, using or selling of the
Licensed Products.
10.0 Patent and Trademark Applications
Licensor or UA shall be responsible for and incur the costs of
protection of the Patent Rights and Proprietary Information, subject to the
provisions of Section 8.0 and 8.1, including any rights arising from
Improvements made to the Subject Product by Licensor. Should Licensor and UA
decide not to file a patent or trademark application in the United States with
respect to improvements made to the Subject Product, or after filing, choose not
to maintain any of such patents or trademarks, Licensee is then free to file, in
Licensor's name, such applications or maintain, in Licensor's name, such patent
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and trademarks deducting the cost of such filing according to the provisions of
Section 10.1.
Licensee shall initially bear the costs of protection of the Patent
Rights and Proprietary Information in foreign countries, including any rights
arising from Improvements made to the Subject Product by Licensor or UA, subject
to a deduction of such costs according to the provisions of Section 10.1.
Licensee will keep Licensor advised as to all developments 10.2. with respect to
any foreign patent applications and will supply to Licensor copies of all papers
received and filed in connection with the prosecution thereof. Licensor shall
have the right, through its patent attorneys and/or agents, to advise and
cooperate with Licensee in the prosecution of the application.
10.1 Deduction of Patent Costs
Licensee shall be entitled to deduct from any royalties payable to
Licensor pursuant to the provisions of Sections 4.0 and 5.0 all reasonable
expenses incurred by Licensee in protecting any of the Patent Rights or
Proprietary Information under Section 10.0; provided, however, that no quarterly
payments to Licensor may be reduced by more than one-half of the amount
otherwise due. Such expenses may be accrued and carried forward by Licensee
until such time as they may be taken by Licensee as a deduction from royalties
under this Section 10.1.
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11.0 No Contest of Ownership; Use of Trademarks
Licensee acknowledges Licensor's sole ownership of the Proprietary
Information and the Patent Rights, and will not at any time contest or take any
other action which may in any way impair the value of said rights to Licensor
except as noted in Section 9.0 hereof.
12.0 Sublicense
Licensee may not sublicense any rights, including any of the Patent
Rights, Licensed Products, or Proprietary Information, granted to it under this
Agreement, without the prior written consent of Licensor. Licensee may assign
this agreement in whole or in part to one of its subsidiaries or to affiliate
companies, but shall not have the right to assign this agreement in whole or in
part to any other party without the prior written consent of Licensor.
13.0 Term
This agreement shall begin as of the date first written above, and
shall continue unless sooner terminated for a term of fifteen (15) years.
14.0 Termination
(a) In the event either party hereto fails, refuses or neglects to
perform any obligation on its part under this agreement, or if any warranty or
representation made by either party hereto prove to be false or misleading in
any material respect, the other party may then terminate this agreement upon
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ninety (90) days prior written notice; provided, however, that in the event the
defaulting party shall rectify such default within the notice period, this
agreement shall remain in full force and effect.
(b) This Agreement shall terminate automatically upon the
expiration or termination for any reason of the License Agreement.
14.1 Liquidation or Bankruptcy
In the event of a compulsory or voluntary liquidation, the
appointment of a receiver, an assignment for the benefit of creditors, or the
filing of a voluntary or involuntary petition for bankruptcy by or for a party
to this agreement, this agreement shall be terminated without notice.
14.2 Effect of Termination
Upon termination of this agreement for any cause, Licensee shall
immediately transfer to Licensor all rights Licensee may possess in sublicenses,
patents, information, trade names, and trademarks relating to the Subject
Product, and all rights and licenses granted to Licensee pursuant to this
agreement shall immediately terminate.
15.0 Force Majeure
Neither party shall be liable to the other party hereto for any
loss, injury, delay, damages or other casualty suffered or incurred by the other
party hereto due to strikes, riots, earthquakes, storms, fires, explosions, acts
of God,
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war, or any other cause similar thereto which is beyond the reasonable control
of such party hereto, and any failure or delay by either party hereto in
performance of any of is obligations under this agreement due to a cause set
forth in this Subsection shall be considered as a breach of this agreement,
unless it shall continue for a consecutive period of six months, in which event
either party may terminate this agreement.
16.0 Non-waiver
The waiver, express or implied, by Licensor or Licensee of any right
hereunder for any failure to perform or breach by the other party hereto shall
not constitute or be deemed as a waiver of any other right of Licensor or
Licensee hereunder or for any other failure to perform or breach hereof by the
other party hereto, whether of a similar or dissimilar nature thereto.
17.0 Disclaimer of Liability
Licensor shall not be liable for damages of any kind, including
consequential damages, arising out of or resulting from the manufacture, use, or
sale of the Licensed Products.
18.0 Governing Law
This agreement shall be governed by and construed in accordance with
the laws of the State of Arkansas. In the event it becomes necessary to have a
court of law or equity settle any dispute between the parties arising under this
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agreement, the parties agree to submit said dispute to a court located within
the State of Arkansas.
19.0 Notices
Any notice to be served or given hereunder may be sent by telex or
registered mail properly addressed and prepaid to the individual named below to
receive notice for the recipient party at the address for that party first
stated above, or to such individual or to such address as may hereafter be
substituted therefor.
For Licensor:
Hosokawa Micron International Inc.
000 Xxxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Attn: Xxxxx Xxxxxxxx
For Licensee:
Hosokawa Micron Corporation
00-0, 0 Xxxxx, Xxxxxxx
Xxxxxx-xx, Xxxxx, Xxxxx
Attn:
20.0 License Agreement
This Agreement is expressly made subject to all terms and conditions
of the License Agreement, a copy of which has been given to Licensee and receipt
of which is hereby acknowledged. Licensee agrees not to do, permit or suffer any
act or thing which will or might cause a breach of the License Agreement.
21.0 Entire Understanding
This Agreement comprises the entire understanding between the
parties hereto concerning all matters which are the
15
subjects hereof, and supersedes any and all prior agreements understandings,
representations, warranties, covenants between the parties hereto or their
subsidiaries and affiliates, either oral or written on such subjects. All
modifications or amendments of this agreement must be in writing, signed by the
parties hereto.
IN WITNESS WHEREOF, the parties have executed this agreement in
duplicate by an authorized officer or principal, as of the day and year first
above written.
LICENSOR:
HOSOKAWA MICRON INTERNATIONAL INC.
----------------------------------
By /s/ F. Sawamara
-------------------------------
Name: F. Sawamara
Title: E.V.P.
LICENSEE:
HOSOKAWA MICRON CORPORATION
By /s/ Xxxxxx Xxxxxxxx
-------------------------------
Name: Xxxxxx Xxxxxxxx
Title: Senior Managing Director
LICENSE AGREEMENT
This License Agreement, made with effect from the 1st day of
October, 1997, by and between Hosokawa Micron Corporation, a Japanese
corporation, with offices at 5-14, 2-chome, Xxxxxxxxxxx, Xxxx-xx Xxxxx 000,
Xxxxx ("the Licensor") and Hosokawa Micron BV, a Netherlands corporation, with
offices at Xxxxxxxxxxxx 00, 0000 XX Xxxxxxxxxx, Xxx Xxxxxxxxxxx ("the
Licensee").
WITNESSETH
WHEREAS Licensor owns and possesses certain confidential technical
information, trade secrets and other data, including designs, drawings,
information, skills, know-how and test engineering, production, performance and
other technical data, customer lists and marketing information (hereinafter
collectively referred to as "Proprietary Information") relating to the
manufacture, sale and servicing of equipment, products and systems, which are
listed and described in Exhibit A, attached hereto and made a part hereof
(hereinafter collectively referred to as the "Products," which term includes any
and all such items and all component and accessories for replacement or
otherwise); and
WHEREAS Licensor owns or controls certain trademarks and patent rights, or
applications therefore, as such may be listed on the date hereof or from time to
time hereafter in Exhibit B attached hereto and made a part hereof (hereinafter
referred to as the "Rights"); and
WHEREAS Licensor and Licensee are desirous that Licensee should have the
right, privilege and license to manufacture, use and sell the Products based
upon and using such Proprietary Information and Rights in such territories and
countries and on an exclusive and non-exclusive basis as are listed on the date
hereof or from time to time hereafter in Exhibit C attached hereto and made a
part hereof (hereinafter referred to as the "Territory");
NOW THEREFORE, in consideration of the promises, covenants and
undertakings contained herein, it is mutually agreed as follows:
1. Grants of Licenses:
1.1 Grants. Licensor hereby grants to Licensee, and Licensee accepts,
the right, privilege and license to use all Proprietary Information
and Rights which Licensor presently possesses or which it may
hereafter possess for the purpose of manufacturing, using and
selling the Products in the Territory. Such grants shall either be
on an exclusive or non-exclusive basis for a particular country as
set forth in Exhibit C. Licensor reserves the right to license
future Proprietary Information and Rights at royalty rates different
from those set forth in Exhibit D.
1.2 Sublicenses. Licensee may enter into sublicenses of the Proprietary
Information and Right provided that the terms of such agreements are
at least as restrictive on the sublicensee as the terms of this
Agreement are restrictive on Licensee and provided that the
sublicensee shall not have the right to sublicense. Licensee shall
provide Licensor with a copy of any and all executed sublicense
agreements as soon as practicable after execution.
2. Supply of Information
Licensor will make available to Licensee and Licensee agrees to receive
during the term of the Agreement and all extensions thereof, such Proprietary
Information as may be necessary or appropriate to enable Licensee to
manufacture, use, sell and service the Products according to specifications and
quality substantially equivalent to the specifications and quality of Products
manufactured and sold by Licensor. Licensee will be required to pay for the
costs related to transfers of information.
3. Representations
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3.1 No Conflict. Licensor and Licensee warrant that they have full power
and authority to enter into this Agreement. Licensor represents and
warrants that it has not previously granted any rights with respect
to the Proprietary Information and Rights that are inconsistent
with, limit or affect Licensee's rights or Licensor's obligations
under this Agreement.
3.2 Sole Rights. Licensor warrants that it has such right, title and
interest in and to the Proprietary Information as to enable it to
vest in Licensee the right, privilege and licenses herein conveyed.
Licensor further warrants that it is not aware of any pending or
threatened litigation or claims regarding such rights, title and
interest, that it is not aware of any evidence that would render any
Rights invalid or unenforceable, and that it is not aware of any
evidence that would impair the value of any other part of the
Rights.
3.3 Infringement by Third Parties. Licensor and Licensee shall promptly
notify each other in writing if they acquire knowledge of any
infringement of any of the Products, Rights or Proprietary
Information. Licensor and Licensee shall take all steps required to
prevent alleged infringement of the Rights or Proprietary
Information.
4. Technology Transfer and Consulting
Licensor shall make available to Licensee Licensor's personnel who shall
assist in transfer of the Proprietary Information and Rights to Licensee to
enable Licensee to manufacture, use, sell and service the Products and to train
Licensee's employees to enable Licensee to manufacture, use, sell and service
the Products. Licensor shall also make available to Licensee, at Licensee's
reasonable request, additional consulting services. Licensor shall provide such
personnel at the standard rates provided hereinafter, plus travel and other
out-of-pocket expenses.
5. Royalties and Other Payments:
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5.1 Royalties. For and in consideration of the rights, continuing
obligations and licenses granted above, Licensee hereby agrees to
pay Licensor a royalty equal to the percent of the Net Sales of all
Products, including spares, therefore sold by Licensee in the
Territory indicated in Exhibit D attached. "Net Sales" means all
amounts received by Licensee or its sublicensees for any sale of any
Product, less the value of any Products supplied by Licensor, and
less the separately stated charges for (a) trade and cash discounts
actually allowed, (b) credits or refunds actually allowed for
damaged or returned goods (c) sales, excise and value added taxes,
and (d) packaging costs, insurance, transportation charges,
commissions and import duties. All computations relating to royalty
payments shall be made in accordance with generally accepted
accounting principles, applied consistently. Licensee shall obtain a
properly authenticated certificate evidencing payment of withholding
tax, which shall show the Licensor's name as the recipient of the
royalties and shall forward same to Licensor as promptly as
reasonably possible following royalty remittances. Payment of the
royalty to Licensor shall be upon Licensee's invoicing of sale to
its customer and not upon collection.
5.2 Other Payments. Licensee shall also pay Licensor for technology and
consulting services as provided for in Section 4. at the rate of
US$500.00 per day plus related expenses subject to annual
adjustment.
6. Reports; Inquiries; Promotion; Inspection:
6.1 Reports. Payments due Licensor under Section 5.1 hereof will be
calculated quarterly and shall be made in the currency of the
Licensor. Payment shall be made within sixty (60) days after the
last day of each calendar quarter. Accompanying each quarterly
payment, Licensee will deliver to Licensor a quarterly statement of
revenues received from the sale of all Products.
In addition, Licensee shall also when making its first payment
hereunder in any calendar year
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include and furnish to Licensor a full and true statement giving
particulars of all Products manufactured and sold by Licensee during
the preceding twelve-month period.
6.2 Inquiries from Territory. During the term of this Agreement,
Licensor agrees to forward to Licensee copies of all sales inquires
from prospective users and purchasers of Products located in, or
which involve shipment of Products to, the Territory. Licensee
agrees to forward to Licensor all sales inquiries received from
prospective users and purchasers of Products located outside of the
Territory or which involve shipment of Products outside of the
Territory. If because of the customer's situation, a sale is outside
the Territory and in a territory not otherwise exclusively licensed
by Licensor, Licensee must notify Licensor in advance and pay to
Licensor a fee of 5% of the Net Sales Price of the Product sold into
such territory, except in mutually agreed upon unusual or
extraordinary circumstances. Such 5% fee is in addition to the
royalties imposed in Section 5.1 of this Agreement. It is understood
that under no circumstances shall Licensee sell Products outside the
Territory and into a territory in which Licensor has entered into an
exclusive license.
6.3 Promotion of Products. Licensee shall exercise its best efforts to
promote the sale of Products in the Territory.
6.4 Inspection. Licensee and any sublicensees shall keep full and
accurate records of all Products manufactured and sold and give same
to any representative selected by Licensor, upon reasonable notice
and during normal business hours, but no more often than once each
year, complete access to inspect the records of Licensee on which
Net Sales are based. Licensee's determination of the payments due
Licensor under this Agreement will be deemed conclusive unless,
within twenty-four (24) months from the date of payment thereof,
Licensor notifies Licensee in writing of any error in such payments.
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Licensee shall permit Licensor at all reasonable times through its
duly appointed agent or agents to inspect manufacturing operations
used by Licensee in the manufacture of Products.
7. Confidentiality
7.1 Nondisclosure. Licensee agrees that it will keep confidential all
Proprietary Information and any other confidential business or
technical information disclosed to Licensee in furtherance of this
Agreement, and will insofar as it is reasonably practicable bind to
secrecy its officers, managers, and employees concerned in or who
may have knowledge of the Proprietary Information. The provisions of
this Section 7 shall survive termination of this Agreement for a
period of five (5) years.
7.2 Exclusion. Notwithstanding the above, the following materials will
not be deemed confidential:
(a) Information which at the time of disclosure is in the public
domain;
(b) Information which after disclosure is published or otherwise
becomes part of the public domain through no fault of
Licensee;
(c) Information which Licensee can show was received by it from a
third party who did not acquire it, directly or indirectly,
from Licensor; and
(d) Information which before the time of disclosure by Licensor to
Licensee was independently developed by Licensee, and which
can be shown by written documentation.
8. New Developments & Improvements
8.1 Developed by Licensor. If, during the term of this Agreement,
Licensor shall make any further improvements in Products and develop
any improvement in the Proprietary Information, then Licensor shall
notify Licensee of such improvements. Upon the request of Licensee,
Licensor
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shall provide Licensee with full information regarding such
improvements and Licensee shall be entitled to use the improvements
with all rights which are hereby granted to Licensee under Section 1
hereof.
8.2 Developed by Licensee. If, during the term of this Agreement,
Licensee shall make any improvements in the Products or develop any
improvements in the Proprietary Information, then:
(a) Licensee shall have the sole option of deciding whether to
apply for a patent. If it does, Licensor shall give all
necessary cooperation and assistance in preparing and
prosecuting Licensee's patent application. Upon issuance of a
patent, Licensor shall receive from Licensee a royalty-free
license (with the right to sublicense) to use the patent,
outside the Territory which is designated as exclusive to
Licensee, for the term of this Agreement.
(b) If Licensee decides not to file a patent application, Licensor
has the option to do so. In such event, all costs of obtaining
the patent and consequent royalty payments will be for the
account of the Licensor and Licensor will grant to Licensee a
royalty-free perpetual license to use the patent to
manufacture, use and sell Licensed Products, including the
right to sublicense, in the Territory which is designated as
exclusive to Licensee.
(c) If the improvements are not patentable, or both parties choose
not to patent them, Licensee agrees to submit to Licensor,
during the term of this Agreement, all available information
on the improvements, now or hereafter found, owned or
controlled by Licensee. Both Licensor and Licensee shall have
a perpetual royalty-free license to use all of these
improvements.
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9. No Contest; Use of Trademarks and Advertising Matter:
Licensee acknowledges Licensor's right to control the Proprietary
Information and the Rights, and will not at any time do or cause to be done any
act or thing contesting or in any way impairing Licensor's investment and rights
in such property. In accordance with Licensor's instructions, Licensee shall use
Licensor's trademarks in connection with Products it manufactures and sells
under this Agreement.
Licensee may use packaging, catalogs, labels, letterheads and
advertisements carrying or including the trademarks covered by this Agreement in
connection with the Products.
10. Term:
Except as provided for in Section 11, this Agreement shall begin as of the
date first written above, and shall end on September 30, 1998, provided that it
shall automatically be renewed and continue in full force and effect thereafter
from year to year, unless and until notice is given by Licensor or Licensee of
its intention to terminate this Agreement at the expiration of the original term
or any renewal term, such notice to be given at least sixty (60) days prior to
any such expiration date.
11. Termination:
11.1 For Breach. In the event either party hereto fails, refuses or
neglects to perform any obligation on its part under this Agreement,
or if any warranty or representation made by either party hereto
proves to be false or misleading in any material respect, the other
party may then terminate this Agreement upon sixty (60) days' prior
written notice, provided, however, that in the event the defaulting
party shall rectify such default within the notice period, this
Agreement shall remain in full force and effect. Any cancellation or
termination of this Agreement shall be without prejudice to any
other right of action or remedy for the recovery of royalties or for
the breach of any covenant herein contained.
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11.2 Other:
(a) In the event of compulsory or voluntary liquidation of
Licensee, or the appointment of a receiver; or in case
Licensee should make an assignment for the benefit of
creditors; or should Licensee go out of business; then in any
such event this Agreement shall automatically terminate.
(b) This Agreement may be terminated at the option of Licensor if
controlling interest in Licensee shall pass to any party or
parties not holding controlling interest at the date of
execution of this Agreement, unless written notice of such
change in structure or ownership is given to Licensor prior to
such change and is agreed to in writing by Licensor.
Controlling interest is defined as the ownership of 51% of the
voting stock of a corporation.
12. Effects of Termination
Upon termination of this Agreement for any reason:
(a) Licensee shall not thereafter seek or accept any additional orders
to manufacture or sell any Products; and
(b) Licensee will have the right to complete and sell or use all
Products, the production of which commenced prior to termination and
to sell or use all Products in its possession on the date of
termination.
(c) Licensee will be obligated to pay Licensor the royalties related to
any sales described in section 12 (b).
13. Force Majeure:
If, by reason of acts of God, natural events, accidents, war, governmental
controls or any cause beyond control of either party, performance of one or both
parties is prevented, then in such event
9
performance by both parties hereunder shall be excused or deferred, as
appropriate, until the effects of such intervening cause have ended. Either
party has the right to terminate if a Force Majeure event remains in effect for
more than ninety (90) days.
14. Governing Law:
To the extent not prohibited by other applicable law, this Agreement is
made under the laws of The Netherlands and shall be interpreted in accordance
with such laws.
15. Miscellaneous:
15.1 Entire Agreement; Amendments. This Agreement states the entire
agreement between the parties with respect to the Products and
Rights provided for herein. No amendment or modification of this
Agreement may be made except by an instrument in writing signed by
both parties.
15.2 Assignment. This Agreement may not be assigned in whole or in part
by either party without the written consent of the other, which such
consent should not be unreasonably withheld.
15.3 Notice. Any notice required or committed to be sent hereunder will
be deemed delivered five (5) days after the date mailed or otherwise
dispatched in the mail, postage prepaid, by registered, express or
certified mail, return receipt requested, or by a recognized private
express courier, to either party at the address listed above, or
such other address of which either party may so notify the other.
Notice will also be deemed given on the date notice is faxed to the
other party.
15.4 Legal Fees. In the event that any legal action, including
arbitration, is required in order to enforce or interpret any of the
provisions of this Agreement, the prevailing party in such action
shall recover all reasonable costs and expenses, including
attorneys' fees, incurred in connection
10
therewith.
15.5 No Waiver; Headings. The failure of either party to enforce any
provision of this Agreement shall not be deemed a waiver of that or
any other provision of this Agreement. The sections and paragraphs
of this Agreement are for convenience only and will not be of any
effect in construing the meanings of such sections or paragraphs.
15.6 Severability. In the event any clause, section or obligation stated
herein is determined to be illegal, invalid or unenforceable in a
particular jurisdiction, then in that jurisdiction this Agreement
may be read and understood as not including such clause, section or
obligation, and the other clauses, sections and obligations will
remain in effect.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement
as of the date first written above.
Hosokawa Micron Corporation Hosokawa Micron BV
(Licensor) (Licensee)
By: /s/ Xxxxxx Xxxxxxxx By:
---------------------------
Name: Name:
Title: President Title:
11
EXHIBITS A and B
to the
LICENSE AGREEMENT
By and Between
Hosokawa Micron Corporation
and
Hosokawa Micron BV
dated October 1, 1997
EXHIBIT A
Licensed Product(s):
Micron Denspack
Micron Vacu-Jet, CVX Series
Micron Dryers, MDV, MDH, MDF Series
Mechanofusion system, AM, AM-F Series
EXHIBIT B
Proprietary Information and Rights:
All related Hosokawa Micron Corporation patents and trademarks registered
in the Territory with related know-how.
12
EXHIBITS C and D
to the
LICENSE AGREEMENT
By and Between
Hosokawa Micron Corporation
and
Hosokawa Micron BV
dated October 1, 1997
EXHIBIT C
Territory:
Exclusive Territory: The Netherlands
Non-Exclusive Territory: All other European countries, Africa, Middle
East, India and all Asian countries west of India.
EXHIBIT D
Royalty Rate(s):
4%: Micron Denspack
Micron Vacu-Jet, CVX Series
Micron Dryers, MDV, MDH, MDF Series
Mechanofusion system, AM, AM-F Series
13
LICENSE AGREEMENT
This License Agreement, made with effect from the 1st day of
October, 1997, by and between Hosokawa Micron Corporation, a Japanese
corporation, with offices at 5-14, 2-chome, Xxxxxxxxxxx, Xxxx-xx Xxxxx 000,
Xxxxx ("the Licensor") and Hosokawa Micron Powder Systems Division of Hosokawa
Micron International Inc., a Delaware corporation, with offices at 00 Xxxxxxx
Xxxx, Xxxxxx, Xxx Xxxxxx 00000 ("the Licensee").
WITNESSETH
WHEREAS Licensor owns and possesses certain confidential technical
information, trade secrets and other data, including designs, drawings,
information, skills, know-how and test engineering, production, performance and
other technical data, customer lists and marketing information (hereinafter
collectively referred to as "Proprietary Information") relating to the
manufacture, sale and servicing of equipment, products and systems, which are
listed and described in Exhibit A, attached hereto and made a part hereof
(hereinafter collectively referred to as the "Products," which term includes any
and all such items and all component and accessories for replacement or
otherwise); and
WHEREAS Licensor owns or controls certain trademarks and patent rights, or
applications therefore, as such may be listed on the date hereof or from time to
time hereafter in Exhibit B attached hereto and made a part hereof (hereinafter
referred to as the "Rights"); and
WHEREAS Licensor and Licensee are desirous that Licensee should have the
right, privilege and license to manufacture, use and sell the Products based
upon and using such Proprietary Information and Rights in such territories and
countries and on an exclusive and non-exclusive basis as are listed on the date
hereof or from time to time hereafter in Exhibit C attached hereto and made a
part hereof (hereinafter referred to as the "Territory");
14
(hereinafter referred to as the "Territory");
NOW THEREFORE, in consideration of the promises, covenants and
undertakings contained herein, it is mutually agreed as follows:
1. Grants of Licenses:
1.1 Grants. Licensor hereby grants to Licensee, and Licensee accepts,
the right, privilege and license to use all Proprietary Information
and Rights which Licensor presently possesses or which it may
hereafter possess for the purpose of manufacturing, using and
selling the Products in the Territory. Such grants shall either be
on an exclusive or non-exclusive basis for a particular country as
set forth in Exhibit C. Licensor reserves the right to license
future Proprietary Information and Rights at royalty rates different
from those set forth in Exhibit D.
1.2 Sublicenses. Licensee may enter into sublicenses of the Proprietary
Information and Right provided that the terms of such agreements are
at least as restrictive on the sublicensee as the terms of this
Agreement are restrictive on Licensee and provided that the
sublicensee shall not have the right to sublicense. Licensee shall
provide Licensor with a copy of any and all executed sublicense
agreements as soon as practicable after execution.
2. Supply of Information
Licensor will make available to Licensee and Licensee agrees to receive
during the term of the Agreement and all extensions thereof, such Proprietary
Information as may be necessary or appropriate to enable Licensee to
manufacture, use, sell and service the Products according to specifications and
quality substantially equivalent to the specifications and quality of Products
manufactured and sold by Licensor. Licensee will be required to pay for the
costs related to transfers of information.
15
3. Representations
3.1 No Conflict. Licensor and Licensee warrant that they have full power
and authority to enter into this Agreement. Licensor represents and
warrants that it has not previously granted any rights with respect
to the Proprietary Information and Rights that are inconsistent
with, limit or affect Licensee's rights or Licensor's obligations
under this Agreement.
3.2 Sole Rights. Licensor warrants that it has such right, title and
interest in and to the Proprietary Information as to enable it to
vest in Licensee the right, privilege and licenses herein conveyed.
Licensor further warrants that it is not aware of any pending or
threatened litigation or claims regarding such rights, title and
interest, that it is not aware of any evidence that would render any
Rights invalid or unenforceable, and that it is not aware of any
evidence that would impair the value of any other part of the
Rights.
3.3 Infringement by Third Parties. Licensor and Licensee shall promptly
notify each other in writing if they acquire knowledge of any
infringement of any of the Products, Rights or Proprietary
Information. Licensor and Licensee shall take all steps required to
prevent alleged infringement of the Rights or Proprietary
Information.
4. Technology Transfer and Consulting
Licensor shall make available to Licensee Licensor's personnel who shall
assist in transfer of the Proprietary Information and Rights to Licensee to
enable Licensee to manufacture, use, sell and service the Products and to train
Licensee's employees to enable Licensee to manufacture, use, sell and service
the Products. Licensor shall also make available to Licensee, at Licensee's
reasonable request, additional consulting services. Licensor shall provide such
personnel at the standard rates provided hereinafter, plus travel and other
out-of-pocket expenses.
16
5. Royalties and Other Payments:
5.1 Royalties. For and in consideration of the rights, continuing
obligations and licenses granted above, Licensee hereby agrees to
pay Licensor a royalty equal to the percent of the Net Sales of all
Products, including spares, therefore sold by Licensee in the
Territory indicated in Exhibit D attached. "Net Sales" means all
amounts received by Licensee or its sublicensees for any sale of any
Product, less the value of any Products supplied by Licensor, and
less the separately stated charges for (a) trade and cash discounts
actually allowed, (b) credits or refunds actually allowed for
damaged or returned goods (c) sales, excise and value added taxes,
and (d) packaging costs, insurance, transportation charges,
commissions and import duties. All computations relating to royalty
payments shall be made in accordance with generally accepted
accounting principles, applied consistently. Licensee shall obtain a
properly authenticated certificate evidencing payment of withholding
tax, which shall show the Licensor's name as the recipient of the
royalties and shall forward same to Licensor as promptly as
reasonably possible following royalty remittances. Payment of the
royalty to Licensor shall be upon Licensee's invoicing of sale to
its customer and not upon collection.
5.2 Other Payments. Licensee shall also pay Licensor for technology and
consulting services as provided for in Section 4. at the rate of
US$500.00 per day plus related expenses subject to annual
adjustment.
6. Reports; Inquiries; Promotion; Inspection:
6.1 Reports. Payments due Licensor under Section 5.1 hereof will be
calculated quarterly and shall be made in the currency of the
Licensor. Payment shall be made within sixty (60) days after the
last day of each calendar quarter. Accompanying each quarterly
payment, Licensee will deliver to Licensor a quarterly statement of
revenues received from the sale of all Products.
17
In addition, Licensee shall also when making its first payment
hereunder in any calendar year include and furnish to Licensor a
full and true statement giving particulars of all Products
manufactured and sold by Licensee during the preceding twelve-month
period.
6.2 Inquiries from Territory. During the term of this Agreement,
Licensor agrees to forward to Licensee copies of all sales inquires
from prospective users and purchasers of Products located in, or
which involve shipment of Products to, the Territory. Licensee
agrees to forward to Licensor all sales inquiries received from
prospective users and purchasers of Products located outside of the
Territory or which involve shipment of Products outside of the
Territory. If because of the customer's situation, a sale is outside
the Territory and in a territory not otherwise exclusively licensed
by Licensor, Licensee must notify Licensor in advance and pay to
Licensor a fee of 5% of the Net Sales Price of the Product sold into
such territory, except in mutually agreed upon unusual or
extraordinary circumstances. Such 5% fee is in addition to the
royalties imposed in Section 5.1 of this Agreement. It is understood
that under no circumstances shall Licensee sell Products outside the
Territory and into a territory in which Licensor has entered into an
exclusive license.
6.3 Promotion of Products. Licensee shall exercise its best efforts to
promote the sale of Products in the Territory.
6.4 Inspection. Licensee and any sublicensees shall keep full and
accurate records of all Products manufactured and sold and give same
to any representative selected by Licensor, upon reasonable notice
and during normal business hours, but no more often than once each
year, complete access to inspect the records of Licensee on which
Net Sales are based. Licensee's determination of the payments due
Licensor under this Agreement will be deemed conclusive unless,
within twenty-four (24) months from the date of payment thereof,
Licensor notifies
18
Licensee in writing of any error in such payments.
Licensee shall permit Licensor at all reasonable times through its
duly appointed agent or agents to inspect manufacturing operations
used by Licensee in the manufacture of Products.
7. Confidentiality
7.1 Nondisclosure. Licensee agrees that it will keep confidential all
Proprietary Information and any other confidential business or
technical information disclosed to Licensee in furtherance of this
Agreement, and will insofar as it is reasonably practicable bind to
secrecy its officers, managers, and employees concerned in or who
may have knowledge of the Proprietary Information. The provisions of
this Section 7 shall survive termination of this Agreement for a
period of five (5) years.
7.2 Exclusion. Notwithstanding the above, the following materials will
not be deemed confidential:
(a) Information which at the time of disclosure is in the public
domain;
(b) Information which after disclosure is published or otherwise
becomes part of the public domain through no fault of
Licensee;
(c) Information which Licensee can show was received by it from a
third party who did not acquire it, directly or indirectly,
from Licensor; and
(d) Information which before the time of disclosure by Licensor to
Licensee was independently developed by Licensee, and which
can be shown by written documentation.
8. New Developments & Improvements
8.1 Developed by Licensor. If, during the term of this Agreement,
Licensor shall make any further improvements in Products and develop
any improvement in the Proprietary Information, then
19
Licensor shall notify Licensee of such improvements. Upon the
request of Licensee, Licensor shall provide Licensee with full
information regarding such improvements and Licensee shall be
entitled to use the improvements with all rights which are hereby
granted to Licensee under Section 1 hereof.
8.2 Developed by Licensee. If, during the term of this Agreement,
Licensee shall make any improvements in the Products or develop any
improvements in the Proprietary Information, then:
(a) Licensee shall have the sole option of deciding whether to
apply for a patent. If it does, Licensor shall give all
necessary cooperation and assistance in preparing and
prosecuting Licensee's patent application. Upon issuance of a
patent, Licensor shall receive from Licensee a royalty-free
license (with the right to sublicense) to use the patent,
outside the Territory which is designated as exclusive to
Licensee, for the term of this Agreement.
(b) If Licensee decides not to file a patent application, Licensor
has the option to do so. In such event, all costs of obtaining
the patent and consequent royalty payments will be for the
account of the Licensor and Licensor will grant to Licensee a
royalty-free perpetual license to use the patent to
manufacture, use and sell Licensed Products, including the
right to sublicense, in the Territory which is designated as
exclusive to Licensee.
(c) If the improvements are not patentable, or both parties choose
not to patent them, Licensee agrees to submit to Licensor,
during the term of this Agreement, all available information
on the improvements, now or hereafter found, owned or
controlled by Licensee. Both Licensor and Licensee shall have
a perpetual royalty-free license to use all of these
improvements.
20
9. No Contest; Use of Trademarks and Advertising Matter:
Licensee acknowledges Licensor's right to control the Proprietary
Information and the Rights, and will not at any time do or cause to be done any
act or thing contesting or in any way impairing Licensor's investment and rights
in such property. In accordance with Licensor's instructions, Licensee shall use
Licensor's trademarks in connection with Products it manufactures and sells
under this Agreement.
Licensee may use packaging, catalogs, labels, letterheads and
advertisements carrying or including the trademarks covered by this Agreement in
connection with the Products.
10. Term:
Except as provided for in Section 11, this Agreement shall begin as of the
date first written above, and shall end on September 30, 1998, provided that it
shall automatically be renewed and continue in full force and effect thereafter
from year to year, unless and until notice is given by Licensor or Licensee of
its intention to terminate this Agreement at the expiration of the original term
or any renewal term, such notice to be given at least sixty (60) days prior to
any such expiration date.
11. Termination:
11.1 For Breach. In the event either party hereto fails, refuses or
neglects to perform any obligation on its part under this Agreement,
or if any warranty or representation made by either party hereto
proves to be false or misleading in any material respect, the other
party may then terminate this Agreement upon sixty (60) days' prior
written notice, provided, however, that in the event the defaulting
party shall rectify such default within the notice period, this
Agreement shall remain in full force and effect. Any cancellation or
termination of this Agreement shall be without prejudice to any
other right of action or remedy for the recovery of royalties or for
the breach of
21
any covenant herein contained.
11.2 Other:
(a) In the event of compulsory or voluntary liquidation of
Licensee, or the appointment of a receiver; or in case
Licensee should make an assignment for the benefit of
creditors; or should Licensee go out of business; then in any
such event this Agreement shall automatically terminate.
(b) This Agreement may be terminated at the option of Licensor if
controlling interest in Licensee shall pass to any party or
parties not holding controlling interest at the date of
execution of this Agreement, unless written notice of such
change in structure or ownership is given to Licensor prior to
such change and is agreed to in writing by Licensor.
Controlling interest is defined as the ownership of 51% of the
voting stock of a corporation.
12. Effects of Termination
Upon termination of this Agreement for any reason:
(a) Licensee shall not thereafter seek or accept any additional orders
to manufacture or sell any Products; and
(b) Licensee will have the right to complete and sell or use all
Products, the production of which commenced prior to termination and
to sell or use all Products in its possession on the date of
termination.
(c) Licensee will be obligated to pay Licensor the royalties related to
any sales described in section 12 (b).
13. Force Majeure:
If, by reason of acts of God, natural events, accidents, war, governmental
controls or any cause
22
beyond control of either party, performance of one or both parties is prevented,
then in such event performance by both parties hereunder shall be excused or
deferred, as appropriate, until the effects of such intervening cause have
ended. Either party has the right to terminate if a Force Majeure event remains
in effect for more than ninety (90) days.
14. Governing Law:
To the extent not prohibited by other applicable law, this Agreement is
made under the laws of the state of New Jersey and shall be interpreted in
accordance with such laws.
15. Miscellaneous:
15.1 Entire Agreement; Amendments. This Agreement states the entire
agreement between the parties with respect to the Products and
Rights provided for herein. No amendment or modification of this
Agreement may be made except by an instrument in writing signed by
both parties.
15.2 Assignment. This Agreement may not be assigned in whole or in part
by either party without the written consent of the other, which such
consent should not be unreasonably withheld.
15.3 Notice. Any notice required or committed to be sent hereunder will
be deemed delivered five (5) days after the date mailed or otherwise
dispatched in the mail, postage prepaid, by registered, express or
certified mail, return receipt requested, or by a recognized private
express courier, to either party at the address listed above, or
such other address of which either party may so notify the other.
Notice will also be deemed given on the date notice is faxed to the
other party.
15.4 Legal Fees. In the event that any legal action, including
arbitration, is required in order to enforce or interpret any of the
provisions of this Agreement, the prevailing party in such action
23
shall recover all reasonable costs and expenses, including
attorneys' fees, incurred in connection therewith.
15.5 No Waiver; Headings. The failure of either party to enforce any
provision of this Agreement shall not be deemed a waiver of that or
any other provision of this Agreement. The sections and paragraphs
of this Agreement are for convenience only and will not be of any
effect in construing the meanings of such sections or paragraphs.
15.6 Severability. In the event any clause, section or obligation stated
herein is determined to be illegal, invalid or unenforceable in a
particular jurisdiction, then in that jurisdiction this Agreement
may be read and understood as not including such clause, section or
obligation, and the other clauses, sections and obligations will
remain in effect.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement
as of the date first written above.
Hosokawa Micron Corporation Hosokawa Micron Powder Systems Division
(Licensor) of Hosokawa Micron International Inc.
(Licensee)
By: /s/ Xxxxxx Xxxxxxxx By: /s/ Xxxxxxx X. Xxxxxxx
------------------- ----------------------
Name: Name:
Title: President Title: E.V.P.
24
EXHIBITS A and B
to the
LICENSE AGREEMENT
By and Between
Hosokawa Micron Corporation
and
Hosokawa Micron Powder Systems Division
Of
Hosokawa Micron International Inc.
dated October 1, 1997
EXHIBIT A
Licensed Product(s):
Micron Innomizer, INM Series
Mechanofusion system, AM, AM-F Series
Micron Jet T, MJ-T Series
Micron Agglomasters, AGM Series (Pharmaceutical version only)
Micron Separators, MS, MS-N Series
Micron Victory Mill, VP Series
Micron Fine Victory Mill, FVP Series
Micron Feather Mill, FM-S, FM-F Series
EXHIBIT B
Proprietary Information and Rights:
All related Hosokawa Micron Corporation patents and trademarks registered
in the Territory with related know-how.
25
EXHIBITS C and D
to the
LICENSE AGREEMENT
By and Between
Hosokawa Micron Corporation
and
Hosokawa Micron Powder Systems Division
Of
Hosokawa Micron International Inc.
dated October 1, 1997
EXHIBIT C
Territory:
Exclusive Territory: North, Central and South America
Non-Exclusive Territory: None
EXHIBIT D
Royalty Rate(s):
4%: Micron Innomizer, INM Series 2.5%: Micron Separators, MS, MS-N Series
Mechanofusion system, AM, AM-F Series Micron Victory Mill, VP Series
Micron Jet T, MJ-T Series Micron Fine Victory Mill, FVP Series
Micron Agglomasters, AGM Series Micron Feather Mill, FM-S, FM-F Series
(Pharmaceutical version only)
26
LICENSE AGREEMENT
This License Agreement, made with effect from the 1st day of
October, 1997, by and between Hosokawa Micron Corporation, a Japanese
corporation, with offices at 5-14, 2-chome, Xxxxxxxxxxx, Xxxx-xx Xxxxx 000,
Xxxxx ("the Licensor") and Hosokawa Bepex Corporation, a Delaware corporation,
with offices at 000 X.X. Xxxx Xxxxxx, Xxxxxxxxxxx, Xxxxxxxxx 00000 ("the
Licensee").
WITNESSETH
WHEREAS Licensor owns and possesses certain confidential technical
information, trade secrets and other data, including designs, drawings,
information, skills, know-how and test engineering, production, performance and
other technical data, customer lists and marketing information (hereinafter
collectively referred to as "Proprietary Information") relating to the
manufacture, sale and servicing of equipment, products and systems, which are
listed and described in Exhibit A, attached hereto and made a part hereof
(hereinafter collectively referred to as the "Products," which term includes any
and all such items and all component and accessories for replacement or
otherwise); and
WHEREAS Licensor owns or controls certain trademarks and patent rights, or
applications therefore, as such may be listed on the date hereof or from time to
time hereafter in Exhibit B attached hereto and made a part hereof (hereinafter
referred to as the "Rights"); and
WHEREAS Licensor and Licensee are desirous that Licensee should have the
right, privilege and license to manufacture, use and sell the Products based
upon and using such Proprietary Information and Rights in such territories and
countries and on an exclusive and non-exclusive basis as are listed on the date
hereof or from time to time hereafter in Exhibit C attached hereto and made a
part hereof
27
(hereinafter referred to as the "Territory");
NOW THEREFORE, in consideration of the promises, covenants and
undertakings contained herein, it is mutually agreed as follows:
1. Grants of Licenses:
1.1 Grants. Licensor hereby grants to Licensee, and Licensee accepts,
the right, privilege and license to use all Proprietary Information
and Rights which Licensor presently possesses or which it may
hereafter possess for the purpose of manufacturing, using and
selling the Products in the Territory. Such grants shall either be
on an exclusive or non-exclusive basis for a particular country as
set forth in Exhibit C. Licensor reserves the right to license
future Proprietary Information and Rights at royalty rates different
from those set forth in Exhibit D.
1.2 Sublicenses. Licensee may enter into sublicenses of the Proprietary
Information and Right provided that the terms of such agreements are
at least as restrictive on the sublicensee as the terms of this
Agreement are restrictive on Licensee and provided that the
sublicensee shall not have the right to sublicense. Licensee shall
provide Licensor with a copy of any and all executed sublicense
agreements as soon as practicable after execution.
2. Supply of Information
Licensor will make available to Licensee and Licensee agrees to receive
during the term of the Agreement and all extensions thereof, such Proprietary
Information as may be necessary or appropriate to enable Licensee to
manufacture, use, sell and service the Products according to specifications and
quality substantially equivalent to the specifications and quality of Products
manufactured and sold by Licensor. Licensee will be required to pay for the
costs related to transfers of information.
28
3. Representations
3.1 No Conflict. Licensor and Licensee warrant that they have full power
and authority to enter into this Agreement. Licensor represents and
warrants that it has not previously granted any rights with respect
to the Proprietary Information and Rights that are inconsistent
with, limit or affect Licensee's rights or Licensor's obligations
under this Agreement.
3.2 Sole Rights. Licensor warrants that it has such right, title and
interest in and to the Proprietary Information as to enable it to
vest in Licensee the right, privilege and licenses herein conveyed.
Licensor further warrants that it is not aware of any pending or
threatened litigation or claims regarding such rights, title and
interest, that it is not aware of any evidence that would render any
Rights invalid or unenforceable, and that it is not aware of any
evidence that would impair the value of any other part of the
Rights.
3.3 Infringement by Third Parties. Licensor and Licensee shall promptly
notify each other in writing if they acquire knowledge of any
infringement of any of the Products, Rights or Proprietary
Information. Licensor and Licensee shall take all steps required to
prevent alleged infringement of the Rights or Proprietary
Information.
4. Technology Transfer and Consulting
Licensor shall make available to Licensee Licensor's personnel who shall
assist in transfer of the Proprietary Information and Rights to Licensee to
enable Licensee to manufacture, use, sell and service the Products and to train
Licensee's employees to enable Licensee to manufacture, use, sell and service
the Products. Licensor shall also make available to Licensee, at Licensee's
reasonable request, additional consulting services. Licensor shall provide such
personnel at the standard rates provided hereinafter, plus travel and other
out-of-pocket expenses.
29
5. Royalties and Other Payments:
5.1 Royalties. For and in consideration of the rights, continuing
obligations and licenses granted above, Licensee hereby agrees to
pay Licensor a royalty equal to the percent of the Net Sales of all
Products, including spares, therefore sold by Licensee in the
Territory indicated in Exhibit D attached. "Net Sales" means all
amounts received by Licensee or its sublicensees for any sale of any
Product, less the value of any Products supplied by Licensor, and
less the separately stated charges for (a) trade and cash discounts
actually allowed, (b) credits or refunds actually allowed for
damaged or returned goods (c) sales, excise and value added taxes,
and (d) packaging costs, insurance, transportation charges,
commissions and import duties. All computations relating to royalty
payments shall be made in accordance with generally accepted
accounting principles, applied consistently. Licensee shall obtain a
properly authenticated certificate evidencing payment of withholding
tax, which shall show the Licensor's name as the recipient of the
royalties and shall forward same to Licensor as promptly as
reasonably possible following royalty remittances. Payment of the
royalty to Licensor shall be upon Licensee's invoicing of sale to
its customer and not upon collection.
5.2 Other Payments. Licensee shall also pay Licensor for technology and
consulting services as provided for in Section 4. at the rate of
US$500.00 per day plus related expenses subject to annual
adjustment.
6. Reports; Inquiries; Promotion; Inspection:
6.1 Reports. Payments due Licensor under Section 5.1 hereof will be
calculated quarterly and shall be made in the currency of the
Licensor. Payment shall be made within sixty (60) days after the
last day of each calendar quarter. Accompanying each quarterly
payment, Licensee will deliver to Licensor a quarterly statement of
revenues received from the sale of all Products.
30
In addition, Licensee shall also when making its first payment
hereunder in any calendar year include and furnish to Licensor a
full and true statement giving particulars of all Products
manufactured and sold by Licensee during the preceding twelve-month
period.
6.2 Inquiries from Territory. During the term of this Agreement,
Licensor agrees to forward to Licensee copies of all sales inquires
from prospective users and purchasers of Products located in, or
which involve shipment of Products to, the Territory. Licensee
agrees to forward to Licensor all sales inquiries received from
prospective users and purchasers of Products located outside of the
Territory or which involve shipment of Products outside of the
Territory. If because of the customer's situation, a sale is outside
the Territory and in a territory not otherwise exclusively licensed
by Licensor, Licensee must notify Licensor in advance and pay to
Licensor a fee of 5% of the Net Sales Price of the Product sold into
such territory, except in mutually agreed upon unusual or
extraordinary circumstances. Such 5% fee is in addition to the
royalties imposed in Section 5.1 of this Agreement. It is understood
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31
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32
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33
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34
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35
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36
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IN WITNESS WHEREOF, the parties hereto have executed this Agreement
as of the date first written above.
Hosokawa Micron Corporation Hosokawa Bepex Corporation
(Licensor) (Licensee)
By: /s/ Xxxxxx Xxxxxxxx By: /s/ Xxxxx X. Xxxxx
------------------------ -----------------------
Name: Name:
Title: President Title: V.P. / Sec.
37
EXHIBITS A and B
to the
LICENSE AGREEMENT
By and Between
Hosokawa Micron Corporation
and
Hosokawa Bepex Corporation
dated October 1, 1997
EXHIBIT A
Licensed Product(s):
Micron Denspack
Micron Vacu-Jet, CVX Series
Micron Dryers, MDV, MDH, MDF Series
Micron Agglomasters, AGM Series (all but Pharmaceutical version)
EXHIBIT B
Proprietary Information and Rights:
All related Hosokawa Micron Corporation patents and trademarks registered
in the Territory with related know-how.
See attached US Patent no. 5,720,550 - Micron Denspack
38
EXHIBITS C and D
to the
LICENSE AGREEMENT
By and Between
Hosokawa Micron Corporation
and
Hosokawa Bepex Corporation
dated October 1, 1997
EXHIBIT C
Territory:
Exclusive Territory: North, Central and South America
Non-Exclusive Territory: None
EXHIBIT D
Royalty Rate(s):
4%: Micron Denspack
Micron Vacu-Jet, CVX Series
Micron Dryers, MDV, MDH, MDF Series
Micron Agglomasters, AGM Series (all but Pharmaceutical version)
39
United States Patent [19] [11] Patent Number: 5,720,550
Akiyama et al. [45] Date of Patent: Feb. 24, 1998
[54] VOLUME REDUCER FOR POWDER MATERIAL
[75] Investors: Seizaburo Akiyama, Tsuduki-Gun;
Masasi Kato, Ibaraki, both of Japan
[73] Assignee: Hosokawa Micron Corporation.
Osaka, Japan
[21] Appl. No.: 678,158
[22] Filed: Jul. 11, 1996
[30] Foreign Application Priority Data
Aug. 24, 1995 [JP] Japan...............................................7-216281
[51] Int. Cl. (6)....................................................B65G 29/02
[52] U.S. Cl..........................................366/139; 366/191; 55/302;
55/401; 55/409; 55/431
[58] Field of Search...............................................366/101, 102,
366/103, 105, 139, 191, 194-196; 55/302,
401, 405, 409, 431, 472
[56] References Cited
U.S. PATENT DOCUMENTS
1,292,561 1/1919 Xxxxxxx..............................................55/401
3,897,218 7/1975 Busweiler.........................................366/139 X
FOREIGN PATENT DOCUMENTS
51-39331 0/0000 Xxxxx
56-37121 0/0000 Xxxxx
58-3938 0/0000 Xxxxx
2-139830 00/0000 Xxxxx
7-41715 0/0000 Xxxxx
Primary Examiner--Xxxxxxx X. Xxxxxx
Attorney, Agent, or Firm--Brinks Xxxxx Xxxxxx & Xxxxx
[57] ABSTRACT
A volume reducer for reducing the volume of a powder material by removal of some
air has a cylindrical casing having an inlet and an outlet for letting powder
material in and out. In the casing, a rotor rotable on the center axis of the
casing is provided. The rotor has a cylindrically formed porous plate and a
plurality of inner and outer xxxxxxxx formed in the inside and outside of the
porous plate. The outer xxxxxxxx are loaded with the powder material. A rotary
valve that rotates together with the rotor is provided. The rotary valve has a
plurality of ventilation openings communicating with the respective inner
xxxxxxxx in an axial direction. The rotary valve is embraced in a stationary
valve. The stationary valve has a cavity that communicates with a ventilation
opening when the rotary valve is positioned within a predetermined range of its
rotation angle. The stationary valve has a compressed air injection opening with
which the ventilation opening communicates.
9 Claims, 10 Drawing Sheets
[Graphic Omitted]
5,720,550
1
VOLUME REDUCER FOR POWDER MATERIAL
BACKGROUND OF THE INVENTION
1. Field of the Invention
The present invention relates to a volume reducer for reducing volume of
powder material by removing air contained therein.
2. Description of the Prior Art
A volume reducer of this type is used to reduce volume of powder material,
when a large amount of such material is dealt with, by removing part of air
contained in the material so that the material can be loaded with reduced volume
into a bag or container. The volume reducer is also used, for example, in a dust
collector to transfer dust to a described location.
Japanese Published Patent No. S56-37121 discloses a rotary valve applied
as a means for transferring powder material (rotary feeder). With reference to
FIGS. 1 and 2, the rotary feeder of this publication will be described below.
As shown in FIGS. 1 and 2, the rotor 2, together with a hollow-bodied axle
cylinder 3, rotor blades 4 and an outer drum 11, forms six xxxxxxxx. The ends of
the rotor blades 4 are protruded from the outer drum 11, so that powder material
is conveyed along the casing 1 until discharged downward. The outer drum 11 is
provided with a large number of pores 12. When a negative pressure is applied to
the drum 11 through a pipe 8, which is connected to a pump (not shown in the
figure), the air contained in the powder material flows through the pores 12
into the rotor 2. The air then flows through pores 10 provided on the axle
cylinder 3 into the cylinder 3, and sucked, through the axle cylinder 3 and the
pipe 8, into the pump.
As a result, the powder material, which is fed to an inlet 19 from above,
easily enters the inlet 19, and, while the material is conveyed clockwise with
the rotation of the rotor 2, the air contained in the material is removed. The
pores 10 that are positioned in their lowest position by rotation are stopped up
by a valve member 21, so that air removal does not take place in this position.
On the other hand, the rotor 2 has a plurality of communicating openings
15 on its left side surface. The communicating openings 15 are usually not open
because they are obstructed by a part of the casing 1, except when one is in its
lowest position, where a ventilation opening 17 is provided on the casing 1. In
the lowest position, where one of the ventilation opening 17 coincides in
position with the communication opening 15, air flows into the chamber inside
the rotor from outside through holes 18 on a bearing cover 7. The thus admitted
air, after flowing through the pores 12 on the outer drum 11, acts to blow down
the powder material that is conveyed down to the lowest position, making the
discharge of the material easier.
However, the conventional structure as described above is defective in the
following respects. First, in order to achieve satisfactory air removal, the
rotation speed of the rotor 2 needs to be reduced. This also reduces centrifugal
force that acts on the powder material, and accordingly reduces the force that
causes the powder material to fall at the discharge (lowest) position. As a
result, since the air pressure provided from outside is not sufficient for
satisfactory discharge, part of the powder material is deposited on the rotor 2.
Secondly, in this conventional structure, the pores 10 need to be sealed with
the valve member 21 when they are in the discharge position. The sealing,
however, is liable to be incomplete.
2
Thirdly, the discharge pressure is constant because it depends on the supplied
air pressure. It is therefore impossible to adjust the discharge pressure
according to the type of powder material.
Further, the conventional apparatus described above (Japanese Published
Patent No. S56-37121) is an invention with the object of supplying powder
material from a low-pressure field to a high-pressure field in a compressed-air
pressure feed line, and therefore its performance is not sufficient for the
purpose of reducing volume of powder material. For example, with some type of
valve member 21, sealing is effective enough as long as the suction force is
kept moderate. When a higher suction force is applied, however, the sealing is
not effective enough to obtain a pressure (about -4.000 mmH2O) that is required
to remove the air contained in the powder material fed into the chamber inside
the rotor. It is therefore impossible to perform sufficient air removal.
SUMMARY OF THE INVENTION
An object of the present invention is to provide a volume reducer with a
simple, reliable mechanism.
To achieve the above object, a volume reducer according to the present
invention is provided with a cylindrical casing having at its top an inlet for
letting in powder material and having at its bottom an outlet for letting out
the powder material; a rotor rotatable on a center axis of said casing, provided
with a cylindrically formed porous plate and a plurality of inner and outer
xxxxxxxx formed by radially separating space inside and outside the said porous
plate, the outer xxxxxxxx being loaded with the powder material; a rotary valve
rotatable together with said rotor, provided with a plurality of ventilation
openings communicating with inner xxxxxxxx in an axial direction; a stationary
valve embracing said rotary valve in such a way that the rotary valve rotates
sliding in absolute contact with said stationary valve, provided with a cavity
communicating with said ventilation openings when said rotary valve is
positioned within a predetermined range of its rotation angle, and provided with
an exhaust opening for connecting said cavity to outside; and a compressed air
injection opening provided on said stationary valve for receiving compressed air
from outside and for communicating with one of the ventilation openings when the
ventilation opening is rotated to a position corresponding to said outlet.
In the structure described above, the powder material, when conveyed to
the discharge position after air removal, receives forces not only from its own
weight and centrifugal force but also from compressed air to be pressed out of
the outer chamber. Consequently, the powder material is released without leaving
deposit.
BRIEF DESCRIPTION OF THE DRAWINGS
This and other objects and features of this invention will become clear
from the following description, taken in conjunction with the preferred
embodiments with reference to the accompanying drawings in which:
FIG. 1 is a partly cross-sectional and partly external view of a
conventional volume reducer;
FIG. 2 is a cross-sectional view taken along line II--II shown in FIG. 1
of the conventional volume reducer shown in FIG. 1;
FIG. 3 is a cross-sectional view of a volume reducer of the present
invention;
FIG. 4 is a cross-sectional view taken along line IV--IV shown in FIG. 3;
3
FIG. 5 is a cross-sectional view taken along line V--V shown in FIG. 3;
FIG. 6 shows a construction of the filter unit with a porus plate employed
in the volume reducer of the present invention;
FIG. 7 shows a porous plate with a reinforcement member;
FIG. 8 is a cross-sectional view of the side plate arranged in the volume
reducer of the present invention;
FIG. 9 shows the side plate by half;
FIG. 10 is a cross-sectional view of the rotary valve arranged in the
volume reducer of the present invention;
FIG. 11 shows results of the tests carried out with powder materials on a
volume reducer embodying the present invention; and
FIG. 12 shows results of the tests carried out with another powder
materials on a volume reducer embodying the present invention.
DESCRIPTION OF THE PREFERRED
EMBODIMENTS
With reference to FIGS. 3 to 10, an embodiment of the present invention
will be described below. Reference numeral 22 represents an inlet provided at
the top of a cylindrical casing 21. To the inlet 22, a xxxxxx or the like loaded
with powder material is attached, for example. Reference numeral 23 represents
an outlet provided at the bottom of the casing 21. The outlet 23 is linked, for
example, to a bag or container to receive the powder material, or to a duct for
further transfer.
Near the center of the casing 21, a shaft 24 is disposed through the
casing 21. The shaft 24 is provided with a rotor 25. The rotor 25 consists of a
filter unit 26, rotor blades 27, and a side plate 28. As shown in FIG. 6, the
filter unit 26 consists of a boss 29 which is fixed to the shaft 24, six
dividing plates 30, and porous plate 31. One end of this filter unit 26 is
stopped up with a rotary valve, which will be described later, to form six inner
xxxxxxxx 32.
In the porous plate 31, a large number of pores are formed. The porous
plate 31 is formed, for example, with sintered stainless steel fiber. It may
also be formed with resin or ceramics; if sufficient strength is not secured
with these materials, however, a reinforcement member 33 such as wire netting,
punched plate, or grating is can be provided on the inner surface of the porous
plate 31, as shown in FIG. 7.
The boss 29 of the filter unit 26 is fixed to the shaft 24 with a key lock
mechanism 34 comprising a keyway and a key. The side plate 28, which is
disk-shaped, is fixed to the shaft 24 as shown in FIG. 8. As described earlier,
one end of the filter unit 26 is fitted into a re-entrant portion 35 on the
inner side of the side plate 28. As shown in FIG. 9, six radially extending
grooves 36 are formed in the side plate 28, so that the ends of the rotor blades
27 are fitted into these grooves 36.
The outer end of the rotor blades 27 slides along the inner surface of the
casing 21 keeping absolute contact therewith. Six outer xxxxxxxx 37 are formed
outside the porous plate 31 by the porous plate 31, the rotor blades 27, the
side plate 28, and the later described rotary valve. The outer xxxxxxxx 37
receive powder material 48 at the inlet 22, and release it at the outlet 23.
Reference numeral 38 represents a rotary valve, which is locked on the
shaft with a key. The rotary valve 38 is provided with six ventilation openings
39, which communicate at one end with the respective inner xxxxxxxx 32. The
right-hand part of the ventilation openings 39 has a right-angle turning, so
that the openings lead to the outside of the rotary valve 38 (in radial
directions). The end of the ventilation openings 39 faces a cavity 41 formed in
the stationary valve 40. The cavity 41 leads through an exhaust opening 46 to a
vacuum pump 47, which is provided externally. The vacuum pump 47 applies a
negative pressure to the exhaust opening 46.
As shown in FIG. 5, the cavity 41 exists only in a range of 240(degree),
leaving the remaining range of 120(degree) for a stopping wall 49. However, the
stopping wall 49 has a compressed air injection opening 42 in its central part,
so that, when one of the ventilation opening 39 coincides in position with the
injection opening 42, compressed air from a compressed air supply unit 43 flows
into the rotor 25 through the rotary valve 38.
As shown in FIG. 10, the left-hand end 44 of the rotary valve 38 has the
same shape as the side plate 28, and has a re-entrant portion 45, into which the
right-hand end of the rotor 25 is fitted. The left-hand end 44 also has slits
(not shown in the figure) similar to the slits 36 in the side plate 28 shown in
FIG. 9, so that the right-hand ends of the rotor blades 27 are fitted into these
slits.
Next, the operation of a volume reducer constructed as described above
will be described below. As a drive axle 50 and the shaft 24 rotates, the rotor
25 rotates in the direction marked with the arrow W. The powder material 48,
which is supplied to each outer chamber 37 through the inlet 22, is exposed to
an air flow, which is caused by a negative pressure applied to the exhaust
opening 46 by the vacuum pump 47 and which flows from outer chamber 37 through
porous plate 31, inner chamber 32, ventilation openings 39, cavity 41 toward
exhaust opening 46. As a result, air contained in the powder material 48 is
removed.
Air removal takes place while the ventilation opening 39 faces the cavity
41. Therefore, as shown in FIG. 4, as the outer chamber 37 moves downward by the
rotation of the rotor 25, air removal progresses, reducing the volume of the
powder material 48 gradually. While the ventilation opening 39 of the rotary
valve 38 faces the stopping wall 49 of the stationary valve 40, air removal does
not take place.
When the ventilation opening 39 reaches its lowest position (position
corresponding to the position of the exhaust opening 23), the ventilation
opening 39 communicates with the injection opening 42. As a result, compressed
air acts, through injection opening 42, ventilation opening 39, inner chamber 32
and porous plate 31, on the powder material 48 in the outer chamber 37, pressing
the powder material 48 downward. The powder material 48 easily leaves the outer
chamber owing not only to its own weight and centrifugal force but also to the
pressure of the compressed air, and moves downward through the outlet 23.
When a bag or container is provided at the outlet 23, the powder material
48 is loaded into the bag or container (the bag or container is loaded with the
powder material). When a transfer means is provided at the outlet 23, the powder
material is transferred to another location by the transfer means. The outer
chamber 37, now empty after the discharge of the powder material 48, moves
upward with further rotation of the rotor 25 until receiving powder material 48
again at the inlet 22. The operation sequence described above is repeated to
deliver volume-reduced powder material successively.
Next, the results of the tests carried out on the volume reducer of the
above embodiment with 4 types of powder
material will be described below. The table below shows the powder materials
used, together with their characteristics. There, the "Powder Density" column is
subdivided into three columns: "Loose" for values obtained when materials are
sifted and then loaded into containers. "Tight" for values obtained when
materials are loaded into containers as much as possible by alternately filling
the container with the material and applying a predetermined impact force
thereto, and "Dynamic" for values obtained by measuring materials at a
predetermined stage of processing.
--------------------------------------------------------------------------------
Average
Particle Powder Density
Diameter (g/cc)
-------------------------------------------
Material ((mu)m) Loose Tight Dynamic
--------------------------------------------------------------------------------
(1) Foaming Agent 16.3 0.50 0.85 0.64
(2) White Carbon 13.18 0.11 0.17 0.13
(3) Aerosol 5.44 0.067 0.099 0.077
(4) Calcium Carbonate 5.0 0.52 0.99 0.74
--------------------------------------------------------------------------------
In the tests, a vacuum pump rated at 2 m^3/min., -4.000 mmAq was used, and
the amount of compressed air used for blowing off powder material was within
100-200 1/min at 1 kgf/cm^2. FIG. 11 shows results obtained with foaming agent
(1) and calcium carbonate (4); FIG. 12 shows results obtained with white carbon
(2) and aerosol (3). In FIGS. 11 and 12, the horizontal axis represents rotation
speed of the rotor 25, the left-hand vertical axis represents powder density,
and the right-hand vertical axis represents processing capacity per hour. In
each figure, the line F represents processing capacity characteristic.
Incidentally, these tests have shown that it is possible to reduce volume down
to about 50 percent.
As described above, according to the present invention, powder material,
when conveyed to the discharge position after air removal, is released from the
volume reducer without leaving deposit, because the powder material is pressed
out of the outer chamber not only by its own weight and centrifugal force but
also by compressed air. Moreover, the pressing force can be adjusted to the type
of powder material by changing the pressure of air supplied from outside.
Further, it is also expected that compressed air is effective in cleaning
(removing the clogging of) the porous plate 31. The use of a volume reducer of
the present invention is not confined to powder filling machines; it can also be
used as a discharger for a dust collector or other particle collector, such as a
cyclone, in a compressed-air transfer line, or can be incorporated into a powder
material processing machine, such as crusher, dryer, mixer, or granulator, to
improve efficiency of supplying and discharging materials and products.
What is claimed is:
1. A volume reducer comprising:
a cylindrical casing having at its top an inlet for letting in powder
material and having at its bottom an outlet for letting out the powder
material;
a filter unit operable with a rotor rotatable about a center axis of a
shaft of said casing, said filter unit provided with a porous plate and
inner and outer xxxxxxxx
6
within the casing dividend by said porous plate, the outer chamber
being loaded with the powder material;
a rotary valve rotatable together with said rotor, the valve provided
with a plurality of ventilation openings communicating with said inner
chamber in an axial direction;
a stationary valve embracing said rotary valve such that the rotary valve
rotates in sliding contact with said stationary valve, said stationary
valve provided with a cavity communicating with said ventilation
openings when said rotary valve is positioned within a predetermined
range of its rotation angle, said stationary valve provided with an
exhaust opening for connecting said cavity to outside; and
a compressed air injection opening provided on said stationary valve for
receiving compressed air from outside and for communicating with one of
the ventilation openings when the ventilation opening is rotated to a
position corresponding to said outlet.
2. A volume reducer as claimed in claim 1.
wherein said rotor comprises a boss fixed to said shaft, a plurality of
dividing plates extending radially from said boss to subdivide said
inner chamber, said porous plate mounted at top ends of said dividing
plates, a plurality of rotor blades extending radially from said porous
plate to subdivide said outer chamber, and a side plate for fixing one
end of said rotor blades, another end of said rotor blades being
attached to an end surface of said rotary valve to be integral
therewith.
3. A volume reducer as claimed in claim 2.
wherein the porous plate is formed with sintered stainless steel fiber.
4. A volume reducer as claimed in claim 2.
wherein said porous plate is formed with a resin, and a reinforcement
member is provided on an inner surface of said porous plate.
5. A volume reducer as claimed in claim 4, wherein the reinforcement
member is selected from the group including wire netting, punched
plate, and grating.
6. A volume reducer as claimed in claim 2.
wherein said side plate is disk-shaped and provided with a plurality of
grooves extending radially for fitting the rotor blades therein.
7. A volume reducer as claimed in claim 2, wherein said porous plate
includes a ceramic component and a reinforcement member provided on an inner
surface of said porous plate is selected from the group including wire netting,
punched plate, and grating.
8. A volume reducer as claimed in claim 1.
wherein an exhaust pump is connected to the exhaust opening of the
stationary valve.
9. A volume reducer as claimed in claim 1, wherein the porous plate is
substantially cylindrical.
* * * * * *
U.S. Patent Feb. 24, 1998 Sheet 1 of 10 5,720,550
FIG. 1
PRIOR ART
[Graphic Omitted]
U.S. Patent Feb. 24, 1998 Sheet 2 of 10 5,720,550
FIG. 2
PRIOR ART
[Graphic Omitted]
U.S. Patent Feb. 24, 1998 Sheet 3 of 10 5,720,550
FIG. 3
[Graphic Omitted]
U.S. Patent Feb. 24, 1998 Sheet 4 of 10 5,720,550
FIG. 4
[Graphic Omitted]
U.S. Patent Feb. 24, 1998 Sheet 5 of 10 5,720,550
FIG. 5
[Graphic Omitted]
U.S. Patent Feb. 24, 1998 Sheet 6 of 10 5,720,550
FIG. 6
[Graphic Omitted]
FIG. 7
[Graphic Omitted]
U.S. Patent Feb. 24, 1998 Sheet 7 of 10 5,720,550
FIG. 8
[Graphic Omitted]
U.S. Patent Feb. 24, 1998 Sheet 8 of 10 5,720,550
FIG. 9
[Graphic Omitted]
U.S. Patent Feb. 24, 1998 Sheet 9 of 10 5,720,550
FIG. 10
[Graphic Omitted]
U.S. Patent Feb. 24, 1998 Sheet 10 of 10 5,720,550
FIG. 11
[Graphic Omitted]
FIG. 12
[Graphic Omitted]
TRADEMARK LICENSING AGREEMENT
THIS AGREEMENT is entered into the 1st day of October, 1996 (the
"Effective Date"), by and between Hosokawa Micron International Inc., a
Delaware corporation, with offices at 000 Xxxxx Xxxxxx, Xxx Xxxx, Xxx Xxxx
00000 (the "Licensor") and Hosokawa Micron Corporation, a Japanese
corporation, with offices at 5-14, 2-chome, Xxxxxxxxxxx, Xxxx-xx Xxxxx
000, Xxxxx (the "Licensee").
W I T N E S S E T H:
WHEREAS, Licensor owns certain trademarks identified in Exhibit A to this
Agreement (the "Trademarks");
WHEREAS, Licensee desires to use the Trademarks within the Territory covered by
this Agreement;
WHEREAS, Licensor is willing to grant to Licensee the right to use the
Trademarks subject to the terms and conditions of this Agreement, and
Licensee is willing to accept such rights and obligations;
NOW, THEREFORE, in consideration of the mutual covenants and
conditions contained herein and intending to be legally bound, the parties
hereby agree as follows.
ARTICLE I
DEFINITIONS
Section 1.1. Effective Date. "Effective Date" is as defined
immediately prior to the
40
the Recitals at the beginning of this Agreement.
Section 1.2. Licensee. "Licensee" shall mean Hosokawa Micron
Corporation.
Section 1.3. Licensor. "Licensor" shall mean Hosokawa Micron
International Inc.
Section 1.4. Net Sales. "Net Sales" shall mean the gross receipts
from sales of Products, as hereinafter defined, in the Territory by
Licensee less separately stated customary deductions, including (a)
transportation charges, including insurance; (b) sales, excise taxes,
customs, duties, tariffs, and any other governmental charges imposed on
the production, importation, exportation, use, or sale of Products; (c)
quantity and cash discounts allowed; (d) returns; and (e) allowances or
credits to customers.
Section 1.5. Products. "Products" shall mean the property sold by
Licensee which bears a trademark listed in Exhibit A to this Agreement.
Section 1.6. Territory. "Territory" shall mean exclusively Japan and
non-exclusively all other Asian countries including the countries which
comprised the former USSR, but excluding India and all countries west of
India and Australia and New Zealand.
Section 1.7. Trademark or Trademarks. "Trademark" or "Trademarks"
shall mean any one of the trademarks listed in Exhibit A hereto.
41
ARTICLE II
GRANT OF RIGHT TO USE TRADEMARKS
Section 2.1. Grant by Licensor. Licensor grants to Licensee the
exclusive and non-exclusive right to use, as set forth in Section 1.7
above, and Licensee shall use only, the Trademarks with respect to
Products in the Territory.
Section 2.2. Sublicenses and Transfers. Licensee shall not assign,
sublicense, make available, or otherwise transfer or disclose any right to
use, develop or otherwise enjoy any of the Trademarks without the express
written consent of Licensor.
Section 2.3. Quality.
a. Products sold by Licensee shall meet the quality control standards and
specifications established from time-to-time by Licensor, including any
requirements of applicable regulatory agencies in the Territory. Licensor
shall have the right, at its expense, to audit Licensee's quality control
of Products from time-to-time on a reasonable basis and on reasonable
prior notice to Licensee.
b. In the event that quality control of Licensee falls below Licensor's
standards and specifications, Licensor shall give Licensee written notice
of such failures, and Licensee shall, at its expense and within the
reasonable notice period set out in the notice, take such corrective
action as is necessary to restore quality to the appropriate level.
42
ARTICLE III
ROYALTY PAYMENT
Section 3.1. Compensation. Subject to Section 3.2 of this Article
III, as consideration for the rights granted under this Agreement,
Licensee shall pay to Licensor a royalty equal to the percent of
Licensee's Net Sales of Products sold by Licensee in the Territory
indicated in Exhibit B attached.
Section 3.2. Payment and Accounting. Royalties due to Licensor
shall be due and payable by Licensee within sixty (60) days after the last
day of each calendar quarter. Accompanying each quarterly payment,
Licensee will deliver to Licensor a quarterly statement of revenues
received from the sale of all Products. All computations relating to
royalty payments shall be made in accordance with generally accepted
accounting principles, applied consistently. Licensee shall obtain a
properly authenticated certificate evidencing payment of withholding tax,
which shall show the Licensor `s name as the recipient of the royalties
and shall forward same to Licensor as promptly as reasonably possible
following royalty remittances. Payment of the royalty to Licensor shall be
upon Licensee `s invoicing of sale to its customer and not upon
collection.
Section 3.3. Currency. All royalties due under this Agreement shall
be payable in the currency of the Licensor.
ARTICLE IV
WARRANTIES AND REPRESENTATIONS
43
Section 4.1. Of Licensor. Licensor warrants that:
a. It owns the exclusive right, title, and interest in each Trademark;
b. Each Trademark is valid and enforceable;
c. Use of any Trademark does not infringe any rights of Third Parties; and
d. It has the right and authority to enter into this Agreement.
Section 4.2. Of Licensee. Licensee warrants that it has the right
and authority to enter into this Agreement.
ARTICLE V
TRADEMARK OWNERSHIP
Licensee acknowledges Licensor's exclusive right, title, and
interest in and to all Trademarks. Licensee shall not at any time do or
cause to be done, or fail to do or cause to be done, any act or thing,
directly or indirectly, contesting or in any way impairing Licensor's
right, title, or interest in any Trademark. Every use of any Trademark by
Licensee shall inure to the benefit of Licensor.
ARTICLE VI
TERM AND TERMINATION
44
Section 6.1. Term. This Agreement shall remain in effect for a
period of three (3) years from the Effective Date, provided that it shall
automatically be renewed and continue in full force and effect thereafter
from year to year, unless and until notice is given by Licensor or
Licensee of its intention to terminate this Agreement at the expiration of
the original term or any renewal term, such notice to be given at least
sixty (60) days prior to any such expiration date.
Section 6.2. Termination. In the event either party hereto fails,
refuses or neglects to perform any obligation on its part under this
Agreement, or if any warranty or representation made by either party
hereto proves to be false or misleading in any material respect, the other
party may then terminate this Agreement upon sixty (60) days prior written
notice, provided, however, that in the event the defaulting party shall
rectify such default within the notice period, this Agreement shall remain
in full force and effect. Any cancellation or termination of this
Agreement shall be without prejudice to any other right of action or
remedy for the recovery of royalties or for the breach of any covenant
herein contained.
a. In the event of compulsory or voluntary liquidation of Licensee, or the
appointment of a receiver; or in case Licensee should make an assignment
for the benefit of creditors; or should Licensee go out of business; then
in any such event this Agreement shall automatically terminate.
b. This Agreement may be terminated at the option of Licensor if controlling
interest in Licensee shall pass to any party or parties not holding
controlling interest at the date of execution of this Agreement, unless
written notice of such change in structure or ownership is given to
Licensor prior to such change and is agreed to in writing by Licensor.
Controlling interest is defined as the
45
ownership of 51% of the voting stock of a corporation.
Section 6.3. Effects of Termination. On termination of this
Agreement for any reason:
a. Licensor shall have the right to retain any sums already paid by Licensee
under this Agreement, and Licensee shall pay all sums accrued that are
then due under this Agreement; and
b. Licensee shall discontinue all use of any Trademark and shall have no
further right, title, or interest in any Trademark.
c. Licensee must remove Trademark from any unsold Products in its possession
on the date of termination.
ARTICLE VII
MISCELLANEOUS
Section 7.1. Notices. Any notice required or committed to be sent
hereunder will be deemed delivered five (5) days after the date mailed or
otherwise dispatched in the mail, postage prepaid, by registered, express
or certified mail, return receipt requested, or by a recognized private
express courier, to either party at the address listed above, or such
other address of which either party may so notify the other. Notice will
also be deemed given on the date notice is faxed to the other party.
45
Section 7.2. Force Majeure. If, by reason of acts of God, natural
events, accidents, war, government controls or any cause beyond control of
either party, performance of one or both parties is prevented, then in
such event performance by both parties hereunder shall be excused or
deferred, as appropriate, until the effects of such intervening cause have
ended. Either party has the right to terminate if a Force Majeure event
remains in effect for more than ninety (90) days.
Section 7.3. Amendment. No change, modification, or amendment of
this Agreement shall be valid or binding on the parties unless such change
or modification shall be in writing signed by the party or parties against
whom the same is sought to be enforced.
Section 7.4. Remedies Cumulative. The remedies of the parties under
this Agreement are cumulative and shall not exclude any other remedies to
which the party may be lawfully entitled.
Section 7.5. Further Assurances. Each party hereby covenants and
agrees that it shall execute and deliver such deeds and other documents as
may be required to implement any of the provisions of this Agreement.
Section 7.6. No Waiver. The failure of any party to insist on
strict performance of a covenant hereunder or of any obligation hereunder
shall not be a waiver of such party's right to demand strict compliance
therewith in the future, nor shall the same be construed as a novation of
this Agreement.
46
Section 7.7. Integration. This Agreement constitutes the full and
complete agreement of the parties with regard to the subject matter of
this Agreement.
Section 7.8. Captions. Titles or captions of articles and
paragraphs contained in this Agreement are inserted only as a matter of
convenience and for reference, and in no way define, limit, extend, or
describe the scope of this Agreement or the intent of any provision
hereof.
Section 7.9. Number and Gender. Whenever required by the context,
the singular number shall include the plural, the plural number shall
include the singular, and the gender of any pronoun shall include all
genders.
Section 7.10. Counterparts. This Agreement may be executed in
multiple copies, each of which shall for all purposes constitute an
Agreement, binding on the parties, and each partner hereby covenants and
agrees to execute all duplicates or replacement counterparts of this
Agreement as may be required.
Section 7.11. Applicable Law. This Agreement shall be governed by
and construed in accordance with the laws of Japan.
Section 7.12. Severability. In the event any provision, clause,
sentence, phrase, or word hereof, or the application thereof in any
circumstances, is held to be invalid or unenforceable, such invalidity or
unenforceability shall not affect the validity or enforceability of the
remainder hereof,
47
or of the application of any such provision, sentence, clause, phrase, or
word in any other circumstances.
Section 7.13. Costs and Expenses. Unless otherwise provided in this
Agreement, each party shall bear all fees and expenses incurred in
performing its obligations under this Agreement.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to
be executed on the date first written above by their duly authorized
officers.
Hosokawa Micron International Inc.
(Licensor)
By: /s/ Xxxxxxx X. Xxxxxxx
-------------------------------
Name:
Title: E.V.P.
Hosokawa Micron Corporation
(Licensee)
By: /s/ Xxxxxx Xxxxxxxx
-------------------------------
Name:
Title: President
48
EXHIBITS A & B
to the
LICENSE AGREEMENT
By and Between
Hosokawa Micron International Inc.
and
Hosokawa Micron Corporation
dated October 1, 1996
EXHIBIT A
TRADEMARKS
MikroPul
Mikro-Collector
Mikro-Pulsaire
Mikro-Airlock
Mikro-Atomizer
Mikro-Pulverizer
Mikro-Bantam
Accucut
Mikro-ACM
Mikro-Samplmill
EXHIBIT B
ROYALY RATE(S)
1.0% for Products for Powder and Particle Processing:
Mikro-Pulverizer Mikro-ACM Mikro-Airlock
Accucut Mikro-Bantam Mikro-Atomizer
Mikro-Samplmill
0.3% for Products for Product Recovery and Air Pollution Control:
MikroPul Mikro-Pulsaire
Mikro-Collector
49
LICENSE AGREEMENT
This License Agreement, made with effect from the 1st day of
October, 1997, by and between Hosokawa Micron BV, a Netherlands corporation,
with offices at Xxxxxxxxxxxx 00, 0000 XX Xxxxxxxxxx, Xxx Xxxxxxxxxxx ("the
Licensor") and Hosokawa Micron Corporation, a Japanese corporation, with offices
at 5-14, 2-chome, Xxxxxxxxxxx, Xxxx-xx Xxxxx 000, Xxxxx ("the Licensee").
WITNESSETH
WHEREAS Licensor owns and possesses certain confidential technical
information, trade secrets and other data, including designs, drawings,
information, skills, know-how and test engineering, production, performance and
other technical data, customer lists and marketing information (hereinafter
collectively referred to as "Proprietary Information") relating to the
manufacture, sale and servicing of equipment, products and systems, which are
listed and described in Exhibit A, attached hereto and made a part hereof
(hereinafter collectively referred to as the "Products," which term includes any
and all such items and all component and accessories for replacement or
otherwise); and
WHEREAS Licensor owns or controls certain trademarks and patent rights, or
applications therefore, as such may be listed on the date hereof or from time to
time hereafter in Exhibit B attached hereto and made a part hereof (hereinafter
referred to as the "Rights"); and
WHEREAS Licensor and Licensee are desirous that Licensee should have the
right, privilege and license to manufacture, use and sell the Products based
upon and using such Proprietary Information and Rights in such territories and
countries and on an exclusive and non-exclusive basis as are listed on the date
hereof or from time to time hereafter in Exhibit C attached hereto and made a
part hereof (hereinafter referred to as the "Territory");
50
NOW THEREFORE, in consideration of the promises, covenants and
undertakings contained herein, it is mutually agreed as follows:
1. Grants of Licenses:
1.1 Grants. Licensor hereby grants to Licensee, and Licensee accepts,
the right, privilege and license to use all Proprietary Information
and Rights which Licensor presently possesses or which it may
hereafter possess for the purpose of manufacturing, using and
selling the Products in the Territory. Such grants shall either be
on an exclusive or non-exclusive basis for a particular country as
set forth in Exhibit C. Licensor reserves the right to license
future Proprietary Information and Rights at royalty rates different
from those set forth in Exhibit D.
1.2 Sublicenses. Licensee may enter into sublicenses of the Proprietary
Information and Right provided that the terms of such agreements are
at least as restrictive on the sublicensee as the terms of this
Agreement are restrictive on Licensee and provided that the
sublicensee shall not have the right to sublicense. Licensee shall
provide Licensor with a copy of any and all executed sublicense
agreements as soon as practicable after execution.
2. Supply of Information
Licensor will make available to Licensee and Licensee agrees to receive
during the term of the Agreement and all extensions thereof, such Proprietary
Information as may be necessary or appropriate to enable Licensee to
manufacture, use, sell and service the Products according to specifications and
quality substantially equivalent to the specifications and quality of Products
manufactured and sold by Licensor. Licensee will be required to pay for the
costs related to transfers of information.
3. Representations
51
3.1 No Conflict. Licensor and Licensee warrant that they have full power
and authority to enter into this Agreement. Licensor represents and
warrants that it has not previously granted any rights with respect
to the Proprietary Information and Rights that are inconsistent
with, limit or affect Licensee's rights or Licensor's obligations
under this Agreement.
3.2 Sole Rights. Licensor warrants that it has such right, title and
interest in and to the Proprietary Information as to enable it to
vest in Licensee the right, privilege and licenses herein conveyed.
Licensor further warrants that it is not aware of any pending or
threatened litigation or claims regarding such rights, title and
interest, that it is not aware of any evidence that would render any
Rights invalid or unenforceable, and that it is not aware of any
evidence that would impair the value of any other part of the
Rights.
3.3 Infringement by Third Parties. Licensor and Licensee shall promptly
notify each other in writing if they acquire knowledge of any
infringement of any of the Products, Rights or Proprietary
Information. Licensor and Licensee shall take all steps required to
prevent alleged infringement of the Rights or Proprietary
Information.
4. Technology Transfer and Consulting
Licensor shall make available to Licensee Licensor's personnel who shall
assist in transfer of the Proprietary Information and Rights to Licensee to
enable Licensee to manufacture, use, sell and service the Products and to train
Licensee's employees to enable Licensee to manufacture, use, sell and service
the Products. Licensor shall also make available to Licensee, at Licensee's
reasonable request, additional consulting services. Licensor shall provide such
personnel at the standard rates provided hereinafter, plus travel and other
out-of-pocket expenses.
5. Royalties and Other Payments:
52
5.1 Royalties. For and in consideration of the rights, continuing
obligations and licenses granted above, Licensee hereby agrees to
pay Licensor a royalty equal to the percent of the Net Sales of all
Products, including spares, therefore sold by Licensee in the
Territory indicated in Exhibit D attached. "Net Sales" means all
amounts received by Licensee or its sublicensees for any sale of any
Product, less the value of any Products supplied by Licensor, and
less the separately stated charges for (a) trade and cash discounts
actually allowed, (b) credits or refunds actually allowed for
damaged or returned goods (c) sales, excise and value added taxes,
and (d) packaging costs, insurance, transportation charges,
commissions and import duties. All computations relating to royalty
payments shall be made in accordance with generally accepted
accounting principles, applied consistently. Licensee shall obtain a
properly authenticated certificate evidencing payment of withholding
tax, which shall show the Licensor's name as the recipient of the
royalties and shall forward same to Licensor as promptly as
reasonably possible following royalty remittances. Payment of the
royalty to Licensor shall be upon Licensee's invoicing of sale to
its customer and not upon collection.
5.2 Other Payments. Licensee shall also pay Licensor for technology and
consulting services as provided for in Section 4. at the rate of
US$500.00 per day plus related expenses subject to annual
adjustment.
6. Reports; Inquiries; Promotion; Inspection:
6.1 Reports. Payments due Licensor under Section 5.1 hereof will be
calculated quarterly and shall be made in the currency of the
Licensor. Payment shall be made within sixty (60) days after the
last day of each calendar quarter. Accompanying each quarterly
payment, Licensee will deliver to Licensor a quarterly statement of
revenues received from the sale of all Products.
In addition, Licensee shall also when making its first payment
hereunder in any calendar year
53
include and furnish to Licensor a full and true statement giving
particulars of all Products manufactured and sold by Licensee during
the preceding twelve-month period.
6.2 Inquiries from Territory. During the term of this Agreement,
Licensor agrees to forward to Licensee copies of all sales inquires
from prospective users and purchasers of Products located in, or
which involve shipment of Products to, the Territory. Licensee
agrees to forward to Licensor all sales inquiries received from
prospective users and purchasers of Products located outside of the
Territory or which involve shipment of Products outside of the
Territory. If because of the customer's situation, a sale is outside
the Territory and in a territory not otherwise exclusively licensed
by Licensor, Licensee must notify Licensor in advance and pay to
Licensor a fee of 5% of the Net Sales Price of the Product sold into
such territory, except in mutually agreed upon unusual or
extraordinary circumstances. Such 5% fee is in addition to the
royalties imposed in Section 5.1 of this Agreement. It is understood
that under no circumstances shall Licensee sell Products outside the
Territory and into a territory in which Licensor has entered into an
exclusive license.
6.3 Promotion of Products. Licensee shall exercise its best efforts to
promote the sale of Products in the Territory.
6.4 Inspection. Licensee and any sublicensees shall keep full and
accurate records of all Products manufactured and sold and give same
to any representative selected by Licensor, upon reasonable notice
and during normal business hours, but no more often than once each
year, complete access to inspect the records of Licensee on which
Net Sales are based. Licensee's determination of the payments due
Licensor under this Agreement will be deemed conclusive unless,
within twenty-four (24) months from the date of payment thereof,
Licensor notifies Licensee in writing of any error in such payments.
54
Licensee shall permit Licensor at all reasonable times through its
duly appointed agent or agents to inspect manufacturing operations
used by Licensee in the manufacture of Products.
7. Confidentiality
7.1 Nondisclosure. Licensee agrees that it will keep confidential all
Proprietary Information and any other confidential business or
technical information disclosed to Licensee in furtherance of this
Agreement, and will insofar as it is reasonably practicable bind to
secrecy its officers, managers, and employees concerned in or who
may have knowledge of the Proprietary Information. The provisions of
this Section 7 shall survive termination of this Agreement for a
period of five (5) years.
7.2 Exclusion. Notwithstanding the above, the following materials will
not be deemed confidential:
(a) Information which at the time of disclosure is in the public
domain;
(b) Information which after disclosure is published or otherwise
becomes part of the public domain through no fault of
Licensee;
(c) Information which Licensee can show was received by it from a
third party who did not acquire it, directly or indirectly,
from Licensor; and
(d) Information which before the time of disclosure by Licensor to
Licensee was independently developed by Licensee, and which
can be shown by written documentation.
8. New Developments & Improvements
8.1 Developed by Licensor. If, during the term of this Agreement,
Licensor shall make any further improvements in Products and develop
any improvement in the Proprietary Information, then Licensor shall
notify Licensee of such improvements. Upon the request of Licensee,
Licensor
55
shall provide Licensee with full information regarding such
improvements and Licensee shall be entitled to use the improvements
with all rights which are hereby granted to Licensee under Section 1
hereof.
8.2 Developed by Licensee. If, during the term of this Agreement,
Licensee shall make any improvements in the Products or develop any
improvements in the Proprietary Information, then:
(a) Licensee shall have the sole option of deciding whether to
apply for a patent. If it does, Licensor shall give all
necessary cooperation and assistance in preparing and
prosecuting Licensee's patent application. Upon issuance of a
patent, Licensor shall receive from Licensee a royalty-free
license (with the right to sublicense) to use the patent,
outside the Territory which is designated as exclusive to
Licensee, for the term of this Agreement.
(b) If Licensee decides not to file a patent application, Licensor
has the option to do so. In such event, all costs of obtaining
the patent and consequent royalty payments will be for the
account of the Licensor and Licensor will grant to Licensee a
royalty-free perpetual license to use the patent to
manufacture, use and sell Licensed Products, including the
right to sublicense, in the Territory which is designated as
exclusive to Licensee.
(c) If the improvements are not patentable, or both parties choose
not to patent them, Licensee agrees to submit to Licensor,
during the term of this Agreement, all available information
on the improvements, now or hereafter found, owned or
controlled by Licensee. Both Licensor and Licensee shall have
a perpetual royalty-free license to use all of these
improvements.
56
9. No Contest; Use of Trademarks and Advertising Matter:
Licensee acknowledges Licensor's right to control the Proprietary
Information and the Rights, and will not at any time do or cause to be done any
act or thing contesting or in any way impairing Licensor's investment and rights
in such property. In accordance with Licensor's instructions, Licensee shall use
Licensor's trademarks in connection with Products it manufactures and sells
under this Agreement.
Licensee may use packaging, catalogs, labels, letterheads and
advertisements carrying or including the trademarks covered by this Agreement in
connection with the Products.
10. Term:
Except as provided for in Section 11, this Agreement shall begin as of the
date first written above, and shall end on September 30, 1998, provided that it
shall automatically be renewed and continue in full force and effect thereafter
from year to year, unless and until notice is given by Licensor or Licensee of
its intention to terminate this Agreement at the expiration of the original term
or any renewal term, such notice to be given at least sixty (60) days prior to
any such expiration date.
11. Termination:
11.1 For Breach. In the event either party hereto fails, refuses or
neglects to perform any obligation on its part under this Agreement,
or if any warranty or representation made by either party hereto
proves to be false or misleading in any material respect, the other
party may then terminate this Agreement upon sixty (60) days' prior
written notice, provided, however, that in the event the defaulting
party shall rectify such default within the notice period, this
Agreement shall remain in full force and effect. Any cancellation or
termination of this Agreement shall be without prejudice to any
other right of action or remedy for the recovery of royalties or for
the breach of any covenant herein contained.
57
11.2 Other:
(a) In the event of compulsory or voluntary liquidation of
Licensee, or the appointment of a receiver; or in case
Licensee should make an assignment for the benefit of
creditors; or should Licensee go out of business; then in any
such event this Agreement shall automatically terminate.
(b) This Agreement may be terminated at the option of Licensor if
controlling interest in Licensee shall pass to any party or
parties not holding controlling interest at the date of
execution of this Agreement, unless written notice of such
change in structure or ownership is given to Licensor prior to
such change and is agreed to in writing by Licensor.
Controlling interest is defined as the ownership of 51% of the
voting stock of a corporation.
12. Effects of Termination
Upon termination of this Agreement for any reason:
(a) Licensee shall not thereafter seek or accept any additional orders
to manufacture or sell any Products; and
(b) Licensee will have the right to complete and sell or use all
Products, the production of which commenced prior to termination and
to sell or use all Products in its possession on the date of
termination.
(c) Licensee will be obligated to pay Licensor the royalties related to
any sales described in section 12 (b).
13. Force Majeure:
If, by reason of acts of God, natural events, accidents, war, governmental
controls or any cause beyond control of either party, performance of one or both
parties is prevented, then in such event
58
performance by both parties hereunder shall be excused or deferred, as
appropriate, until the effects of such intervening cause have ended. Either
party has the right to terminate if a Force Majeure event remains in effect for
more than ninety (90) days.
14. Governing Law:
To the extent not prohibited by other applicable law, this Agreement is
made under the laws of Japan and shall be interpreted in accordance with such
laws.
15. Miscellaneous:
15.1 Entire Agreement; Amendments. This Agreement states the entire
agreement between the parties with respect to the Products and
Rights provided for herein. No amendment or modification of this
Agreement may be made except by an instrument in writing signed by
both parties.
15.2 Assignment. This Agreement may not be assigned in whole or in part
by either party without the written consent of the other, which such
consent should not be unreasonably withheld.
15.3 Notice. Any notice required or committed to be sent hereunder will
be deemed delivered five (5) days after the date mailed or otherwise
dispatched in the mail, postage prepaid, by registered, express or
certified mail, return receipt requested, or by a recognized private
express courier, to either party at the address listed above, or
such other address of which either party may so notify the other.
Notice will also be deemed given on the date notice is faxed to the
other party.
15.4 Legal Fees. In the event that any legal action, including
arbitration, is required in order to enforce or interpret any of the
provisions of this Agreement, the prevailing party in such action
shall recover all reasonable costs and expenses, including
attorneys' fees, incurred in connection
59
therewith.
15.5 No Waiver; Headings. The failure of either party to enforce any
provision of this Agreement shall not be deemed a waiver of that or
any other provision of this Agreement. The sections and paragraphs
of this Agreement are for convenience only and will not be of any
effect in construing the meanings of such sections or paragraphs.
15.6 Severability. In the event any clause, section or obligation stated
herein is determined to be illegal, invalid or unenforceable in a
particular jurisdiction, then in that jurisdiction this Agreement
may be read and understood as not including such clause, section or
obligation, and the other clauses, sections and obligations will
remain in effect.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement
as of the date first written above.
Hosokawa Micron BV Hosokawa Micron Corporation
(Licensor) (Licensee)
By: By: /s/ Xxxxxx Xxxxxxxx
--------------------------------- -----------------------
Name: Name:
Title: Title: President
60
EXHIBITS A and B
to the
LICENSE AGREEMENT
By and Between
Hosokawa Micron BV
and
Hosokawa Micron Corporation
dated October 1, 1997
EXHIBIT A
Licensed Product(s):
Vrieco-Xxxxx Mixers
Vrieco-Xxxxx Vacuum Dryers
Cyclomix
EXHIBIT B
Proprietary Information and Rights:
All related Hosokawa Micron BV patents and trademarks registered in the
Territory with related know-how.
61
EXHIBITS C and D
to the
LICENSE AGREEMENT
By and Between
Hosokawa Micron BV
and
Hosokawa Micron Corporation
dated October 1, 1997
EXHIBIT C
Territory:
Exclusive Territory: Japan
Non-Exclusive Territory: All other Asian countries including the countries
which comprised the former USSR, but excluding India and all countries
west of India and Australia and New Zealand.
EXHIBIT D
Royalty Rate(s):
1%: Vrieco-Xxxxx Mixers
Vrieco-Xxxxx Vacuum Dryers
4%: Cyclomix
62
LICENSE AGREEMENT
This License Agreement, made with effect from the 31st day of March,
1998, by and between Hosokawa Alpine Aktiengesellschaft, a German corporation,
with offices at Xxxxx-Xxxxxxx Xxxxxxx 00-00, X-00000 Xxxxxxxx, Xxxxxxx ("the
Licensor") and Hosokawa Micron Corporation, a Japanese corporation, with offices
at 5-14, 2-chome, Xxxxxxxxxxx, Xxxx-xx Xxxxx 000, Xxxxx ("the Licensee").
WITNESSETH
WHEREAS Licensor owns and possesses certain confidential technical
information, trade secrets and other data, including designs, drawings,
information, skills, know-how and test engineering, production, performance and
other technical data, customer lists and marketing information (hereinafter
collectively referred to as "Proprietary Information") relating to the
manufacture, sale and servicing of equipment, products and systems, which are
listed and described in Exhibit A, attached hereto and made a part hereof
(hereinafter collectively referred to as the "Products," which term includes any
and all such items and all component and accessories for replacement or
otherwise); and
WHEREAS Licensor owns or controls certain trademarks and patent rights, or
applications therefore, as such may be listed on the date hereof or from time to
time hereafter in Exhibit B attached hereto and made a part hereof (hereinafter
referred to as the "Rights"); and
WHEREAS Licensor and Licensee are currently parties to the Master License
Agreement made with effect from the 1st day of March, 1990 which granted
Hosokawa Micron Corporation the right, privilege and license to manufacture and
sell certain Hosokawa Alpine Aktiengesellschaft products based upon and using
certain Hosokawa Alpine Aktiengesellschaft proprietary information and rights.
Such Master License Agreement was to terminate on February 28, 2000, but the
parties agree that due
63
to a reevaluation of the royalty rates and an enhancement of the product
descriptions the Master License Agreement needed to be revised as now here
written; and
WHEREAS Licensor and Licensee are desirous that Licensee should have the
right, privilege and license to manufacture, use and sell the Products based
upon and using such Proprietary Information and Rights in such territories and
countries and on an exclusive and non-exclusive basis as are listed on the date
hereof or from time to time hereafter in Exhibit C attached hereto and made a
part hereof (hereinafter referred to as the "Territory");
NOW THEREFORE, in consideration of the promises, covenants and
undertakings contained herein, it is mutually agreed as follows:
1. Grants of Licenses:
1.1 Grants. Licensor hereby grants to Licensee, and Licensee accepts,
the right, privilege and license to use all Proprietary Information
and Rights which Licensor presently possesses or which it may
hereafter possess for the purpose of manufacturing, using and
selling the Products in the Territory. Such grants shall either be
on an exclusive or non-exclusive basis for a particular country as
set forth in Exhibit C. Licensor reserves the right to license
future Proprietary Information and Rights at royalty rates different
from those set forth in Exhibit D.
1.2 Sublicenses. Licensee may enter into sublicenses of the Proprietary
Information and Right provided that the terms of such agreements are
at least as restrictive on the sublicensee as the terms of this
Agreement are restrictive on Licensee and provided that the
sublicensee shall not have the right to sublicense. Licensee shall
provide Licensor with a copy of any and all executed sublicense
agreements as soon as practicable after execution.
64
2. Supply of Information
Licensor will make available to Licensee and Licensee agrees to receive
during the term of the Agreement and all extensions thereof, such Proprietary
Information as may be necessary or appropriate to enable Licensee to
manufacture, use, sell and service the Products according to specifications and
quality substantially equivalent to the specifications and quality of Products
manufactured and sold by Licensor. Licensee will be required to pay for the
costs related to transfers of information.
3. Representations
3.1 No Conflict. Licensor and Licensee warrant that they have full power
and authority to enter into this Agreement. Licensor represents and
warrants that it has not previously granted any rights with respect
to the Proprietary Information and Rights that are inconsistent
with, limit or affect Licensee's rights or Licensor's obligations
under this Agreement.
3.2 Sole Rights. Licensor warrants that it has such right, title and
interest in and to the Proprietary Information as to enable it to
vest in Licensee the right, privilege and licenses herein conveyed.
Licensor further warrants that it is not aware of any pending or
threatened litigation or claims regarding such rights, title and
interest, that it is not aware of any evidence that would render any
Rights invalid or unenforceable, and that it is not aware of any
evidence that would impair the value of any other part of the
Rights.
3.3 Infringement by Third Parties. Licensor and Licensee shall promptly
notify each other in writing if they acquire knowledge of any
infringement of any of the Products, Rights or Proprietary
Information. Licensor and Licensee shall take all steps required to
prevent alleged infringement of the Rights or Proprietary
Information.
4. Technology Transfer and Consulting
65
Licensor shall make available to Licensee Licensor's personnel who shall
assist in transfer of the Proprietary Information and Rights to Licensee to
enable Licensee to manufacture, use, sell and service the Products and to train
Licensee's employees to enable Licensee to manufacture, use, sell and service
the Products. Licensor shall also make available to Licensee, at Licensee's
reasonable request, additional consulting services. Licensor shall provide such
personnel at the standard rates provided hereinafter, plus travel and other
out-of-pocket expenses.
5. Royalties and Other Payments:
5.1 Royalties. For and in consideration of the rights, continuing
obligations and licenses granted above, Licensee hereby agrees to
pay Licensor a royalty equal to the percent of the Net Sales of all
Products, including spares, therefore sold by Licensee in the
Territory indicated in Exhibit D attached. "Net Sales" means all
amounts received by Licensee or its sublicensees for any sale of any
Product, less the value of any Products supplied by Licensor, and
less the separately stated charges for (a) trade and cash discounts
actually allowed, (b) credits or refunds actually allowed for
damaged or returned goods (c) sales, excise and value added taxes,
and (d) packaging costs, insurance, transportation charges,
commissions and import duties. All computations relating to royalty
payments shall be made in accordance with generally accepted
accounting principles, applied consistently. Licensee shall obtain a
properly authenticated certificate evidencing payment of withholding
tax, which shall show the Licensor's name as the recipient of the
royalties and shall forward same to Licensor as promptly as
reasonably possible following royalty remittances. Payment of the
royalty to Licensor shall be upon Licensee's invoicing of sale to
its customer and not upon collection.
5.2 Other Payments. Licensee shall also pay Licensor for technology and
consulting services as provided for in Section 4. at the rate of
US$500.00 per day plus related expenses subject to annual
adjustment.
66
6. Reports; Inquiries; Promotion; Inspection:
6.1 Reports. Payments due Licensor under Section 5.1 hereof will be
calculated quarterly and shall be made in the currency of the
Licensor. Payment shall be made within sixty (60) days after the
last day of each calendar quarter. Accompanying each quarterly
payment, Licensee will deliver to Licensor a quarterly statement of
revenues received from the sale of all Products.
In addition, Licensee shall also when making its first payment
hereunder in any calendar year include and furnish to Licensor a
full and true statement giving particulars of all Products
manufactured and sold by Licensee during the preceding twelve-month
period.
6.2 Inquiries from Territory. During the term of this Agreement,
Licensor agrees to forward to Licensee copies of all sales inquires
from prospective users and purchasers of Products located in, or
which involve shipment of Products to, the Territory. Licensee
agrees to forward to Licensor all sales inquiries received from
prospective users and purchasers of Products located outside of the
Territory or which involve shipment of Products outside of the
Territory. If because of the customer's situation, a sale is outside
the Territory and in a territory not otherwise exclusively licensed
by Licensor, Licensee must notify Licensor in advance and pay to
Licensor a fee of 5% of the Net Sales Price of the Product sold into
such territory, except in mutually agreed upon unusual or
extraordinary circumstances. Such 5% fee is in addition to the
royalties imposed in Section 5.1 of this Agreement. It is understood
that under no circumstances shall Licensee sell Products outside the
Territory and into a territory in which Licensor has entered into an
exclusive license.
6.3 Promotion of Products. Licensee shall exercise its best efforts to
promote the sale of Products in the Territory.
67
6.4 Inspection. Licensee and any sublicensees shall keep full and
accurate records of all Products manufactured and sold and give same
to any representative selected by Licensor, upon reasonable notice
and during normal business hours, but no more often than once each
year, complete access to inspect the records of Licensee on which
Net Sales are based. Licensee's determination of the payments due
Licensor under this Agreement will be deemed conclusive unless,
within twenty-four (24) months from the date of payment thereof,
Licensor notifies Licensee in writing of any error in such payments.
Licensee shall permit Licensor at all reasonable times through its
duly appointed agent or agents to inspect manufacturing operations
used by Licensee in the manufacture of Products.
7. Confidentiality
7.1 Nondisclosure. Licensee agrees that it will keep confidential all
Proprietary Information and any other confidential business or
technical information disclosed to Licensee in furtherance of this
Agreement, and will insofar as it is reasonably practicable bind to
secrecy its officers, managers, and employees concerned in or who
may have knowledge of the Proprietary Information. The provisions of
this Section 7 shall survive termination of this Agreement for a
period of five (5) years.
7.2 Exclusion. Notwithstanding the above, the following materials will
not be deemed confidential:
(a) Information which at the time of disclosure is in the public
domain;
(b) Information which after disclosure is published or otherwise
becomes part of the public domain through no fault of
Licensee;
(c) Information which Licensee can show was received by it from a
third party who did not acquire it, directly or indirectly,
from Licensor; and
68
(d) Information which before the time of disclosure by Licensor to
Licensee was independently developed by Licensee, and which
can be shown by written documentation.
8. New Developments & Improvements
8.1 Developed by Licensor. If, during the term of this Agreement,
Licensor shall make any further improvements in Products and develop
any improvement in the Proprietary Information, then Licensor shall
notify Licensee of such improvements. Upon the request of Licensee,
Licensor shall provide Licensee with full information regarding such
improvements and Licensee shall be entitled to use the improvements
with all rights which are hereby granted to Licensee under Section 1
hereof.
8.2 Developed by Licensee. If, during the term of this Agreement,
Licensee shall make any improvements in the Products or develop any
improvements in the Proprietary Information, then:
(a) Licensee shall have the sole option of deciding whether to
apply for a patent. If it does, Licensor shall give all
necessary cooperation and assistance in preparing and
prosecuting Licensee's patent application. Upon issuance of a
patent, Licensor shall receive from Licensee a royalty-free
license (with the right to sublicense) to use the patent,
outside the Territory which is designated as exclusive to
Licensee, for the term of this Agreement.
(b) If Licensee decides not to file a patent application, Licensor
has the option to do so. In such event, all costs of obtaining
the patent and consequent royalty payments will be for the
account of the Licensor and Licensor will grant to Licensee a
royalty-free perpetual license to use the patent to
manufacture, use and sell Licensed Products, including the
right to sublicense, in the Territory which is designated as
exclusive to Licensee.
69
(c) If the improvements are not patentable, or both parties choose
not to patent them, Licensee agrees to submit to Licensor,
during the term of this Agreement, all available information
on the improvements, now or hereafter found, owned or
controlled by Licensee. Both Licensor and Licensee shall have
a perpetual royalty-free license to use all of these
improvements.
9. No Contest; Use of Trademarks and Advertising Matter:
Licensee acknowledges Licensor's right to control the Proprietary
Information and the Rights, and will not at any time do or cause to be done any
act or thing contesting or in any way impairing Licensor's investment and rights
in such property. In accordance with Licensor's instructions, Licensee shall use
Licensor's trademarks in connection with Products it manufactures and sells
under this Agreement.
Licensee may use packaging, catalogs, labels, letterheads and
advertisements carrying or including the trademarks covered by this Agreement in
connection with the Products.
10. Term:
Except as provided for in Section 11, this Agreement shall begin as of the
date first written above, and shall end on September 30, 2000, provided that it
shall automatically be renewed and continue in full force and effect thereafter
from year to year, unless and until notice is given by Licensor or Licensee of
its intention to terminate this Agreement at the expiration of the original term
or any renewal term, such notice to be given at least sixty (60) days prior to
any such expiration date.
11. Termination:
11.1 For Breach. In the event either party hereto fails, refuses or
neglects to perform any obligation on its part under this Agreement,
or if any warranty or representation made by either party hereto
70
proves to be false or misleading in any material respect, the other
party may then terminate this Agreement upon sixty (60) days' prior
written notice, provided, however, that in the event the defaulting
party shall rectify such default within the notice period, this
Agreement shall remain in full force and effect. Any cancellation or
termination of this Agreement shall be without prejudice to any
other right of action or remedy for the recovery of royalties or for
the breach of any covenant herein contained.
11.2 Other:
(a) In the event of compulsory or voluntary liquidation of
Licensee, or the appointment of a receiver; or in case
Licensee should make an assignment for the benefit of
creditors; or should Licensee go out of business; then in any
such event this Agreement shall automatically terminate.
(b) This Agreement may be terminated at the option of Licensor if
controlling interest in Licensee shall pass to any party or
parties not holding controlling interest at the date of
execution of this Agreement, unless written notice of such
change in structure or ownership is given to Licensor prior to
such change and is agreed to in writing by Licensor.
Controlling interest is defined as the ownership of 51% of the
voting stock of a corporation.
12. Effects of Termination
Upon termination of this Agreement for any reason:
(a) Licensee shall not thereafter seek or accept any additional orders
to manufacture or sell any Products; and
(b) Licensee will have the right to complete and sell or use all
Products, the production of which commenced prior to termination and
to sell or use all Products in its possession on the date of
termination.
71
(c) Licensee will be obligated to pay Licensor the royalties related to
any sales described in section 12 (b).
13. Force Majeure:
If, by reason of acts of God, natural events, accidents, war, governmental
controls or any cause beyond control of either party, performance of one or both
parties is prevented, then in such event performance by both parties hereunder
shall be excused or deferred, as appropriate, until the effects of such
intervening cause have ended. Either party has the right to terminate if a Force
Majeure event remains in effect for more than ninety (90) days.
14. Governing Law:
To the extent not prohibited by other applicable law, this Agreement is
made under the laws of Japan and shall be interpreted in accordance with such
laws.
15. Miscellaneous:
15.1 Entire Agreement; Amendments. This Agreement states the entire
agreement between the parties with respect to the Products and
Rights provided for herein. No amendment or modification of this
Agreement may be made except by an instrument in writing signed by
both parties.
15.2 Assignment. This Agreement may not be assigned in whole or in part
by either party without the written consent of the other, which such
consent should not be unreasonably withheld.
15.3 Notice. Any notice required or committed to be sent hereunder will
be deemed delivered five (5) days after the date mailed or otherwise
dispatched in the mail, postage prepaid, by registered, express or
certified mail, return receipt requested, or by a recognized private
express courier, to
72
either party at the address listed above, or such other address of
which either party may so notify the other. Notice will also be
deemed given on the date notice is faxed to the other party.
15.4 Legal Fees. In the event that any legal action, including
arbitration, is required in order to enforce or interpret any of the
provisions of this Agreement, the prevailing party in such action
shall recover all reasonable costs and expenses, including
attorneys' fees, incurred in connection therewith.
15.5 No Waiver; Headings. The failure of either party to enforce any
provision of this Agreement shall not be deemed a waiver of that or
any other provision of this Agreement. The sections and paragraphs
of this Agreement are for convenience only and will not be of any
effect in construing the meanings of such sections or paragraphs.
15.6 Severability. In the event any clause, section or obligation stated
herein is determined to be illegal, invalid or unenforceable in a
particular jurisdiction, then in that jurisdiction this Agreement
may be read and understood as not including such clause, section or
obligation, and the other clauses, sections and obligations will
remain in effect.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement
as of the date first written above.
Hosokawa Alpine Aktiengesellschaft Hosokawa Micron Corporation
(Licensor) (Licensee)
By: /s/ X. Xxxxxxxxxxx By: /s/ Xxxxxx Xxxxxxxx
------------------------------- ------------------------
Name: Name:
Title: Vorstand Title: President
73
EXHIBITS A and B
to the
LICENSE AGREEMENT
By and Between
Hosokawa Alpine Aktiengesellschaft
and
Hosokawa Micron Corporation
dated March 31, 1998
EXHIBIT A
Licensed Product(s):
Opposed Jet Xxxxx, AFG, AFG-R Series
Turboplex Ultrafine Classifier ATP-GS, ATP-S/GS
Toner Separator, TSP Type
Fine Impact Xxxxx, UPZ Series
Contraplex Wide Chamber Xxxxx, XX Series
Rotoplex Granulators, RO Series
Circopolex Classifier Xxxxx, ZPS Series
EXHIBIT B
Proprietary Information and Rights:
Alpine patents and trademarks registered in the territory with related
know-how pertaining to products described above.
74
EXHIBITS C and D
to the
LICENSE AGREEMENT
By and Between
Hosokawa Alpine Aktiengesellschaft
and
Hosokawa Micron Corporation
dated March 31, 1998
EXHIBIT C
Territory:
Exclusive Territory: Japan
Non-exclusive Territory: All other Asian countries including the countries
which comprised the former USSR, but excluding India and all countries
west of India and Australia and New Zealand.
EXHIBIT D
Royalty Rate(s):
1%: Rotoplex Granulators, RO Series
Circopolex Classifier Xxxxx, ZPS Series
2.5%: Fine Impact Xxxxx, UPZ Series
Contraplex Wide Chamber Xxxxx, XX Series
4%: Opposed Jet Xxxxx, AFG, AFG-R Series
Turboplex Ultrafine Classifier ATP-GS, ATP-S/GS
Toner Separator, TSP Type
75
LICENSE AGREEMENT
This License Agreement, made with effect from the 1st day of
October, 1997, by and between Hosokawa Bepex Corporation, a Delaware
corporation, with offices at 000 X.X. Xxxx Xxxxxx, Xxxxxxxxxxx, Xxxxxxxxx 00000
("the Licensor") and Hosokawa Micron Corporation, a Japanese corporation, with
offices at 5-14, 2-chome, Xxxxxxxxxxx, Xxxx-xx Xxxxx 000, Xxxxx ("the
Licensee").
WITNESSETH
WHEREAS Licensor owns and possesses certain confidential technical
information, trade secrets and other data, including designs, drawings,
information, skills, know-how and test engineering, production, performance and
other technical data, customer lists and marketing information (hereinafter
collectively referred to as "Proprietary Information") relating to the
manufacture, sale and servicing of equipment, products and systems, which are
listed and described in Exhibit A, attached hereto and made a part hereof
(hereinafter collectively referred to as the "Products," which term includes any
and all such items and all component and accessories for replacement or
otherwise); and
WHEREAS Licensor owns or controls certain trademarks and patent rights, or
applications therefore, as such may be listed on the date hereof or from time to
time hereafter in Exhibit B attached hereto and made a part hereof (hereinafter
referred to as the "Rights"); and
WHEREAS Licensor and Licensee are desirous that Licensee should have the
right, privilege and license to manufacture, use and sell the Products based
upon and using such Proprietary Information and Rights in such territories and
countries and on an exclusive and non-exclusive basis as are listed on the date
hereof or from time to time hereafter in Exhibit C attached hereto and made a
part hereof (hereinafter referred to as the "Territory");
76
NOW THEREFORE, in consideration of the promises, covenants and
undertakings contained herein, it is mutually agreed as follows:
1. Grants of Licenses:
1.1 Grants. Licensor hereby grants to Licensee, and Licensee accepts,
the right, privilege and license to use all Proprietary Information
and Rights which Licensor presently possesses or which it may
hereafter possess for the purpose of manufacturing, using and
selling the Products in the Territory. Such grants shall either be
on an exclusive or non-exclusive basis for a particular country as
set forth in Exhibit C. Licensor reserves the right to license
future Proprietary Information and Rights at royalty rates different
from those set forth in Exhibit D.
1.2 Sublicenses. Licensee may enter into sublicenses of the Proprietary
Information and Right provided that the terms of such agreements are
at least as restrictive on the sublicensee as the terms of this
Agreement are restrictive on Licensee and provided that the
sublicensee shall not have the right to sublicense. Licensee shall
provide Licensor with a copy of any and all executed sublicense
agreements as soon as practicable after execution.
2. Supply of Information
Licensor will make available to Licensee and Licensee agrees to receive
during the term of the Agreement and all extensions thereof, such Proprietary
Information as may be necessary or appropriate to enable Licensee to
manufacture, use, sell and service the Products according to specifications and
quality substantially equivalent to the specifications and quality of Products
manufactured and sold by Licensor. Licensee will be required to pay for the
costs related to transfers of information.
3. Representations
77
3.1 No Conflict. Licensor and Licensee warrant that they have full power
and authority to enter into this Agreement. Licensor represents and
warrants that it has not previously granted any rights with respect
to the Proprietary Information and Rights that are inconsistent
with, limit or affect Licensee's rights or Licensor's obligations
under this Agreement.
3.2 Sole Rights. Licensor warrants that it has such right, title and
interest in and to the Proprietary Information as to enable it to
vest in Licensee the right, privilege and licenses herein conveyed.
Licensor further warrants that it is not aware of any pending or
threatened litigation or claims regarding such rights, title and
interest, that it is not aware of any evidence that would render any
Rights invalid or unenforceable, and that it is not aware of any
evidence that would impair the value of any other part of the
Rights.
3.3 Infringement by Third Parties. Licensor and Licensee shall promptly
notify each other in writing if they acquire knowledge of any
infringement of any of the Products, Rights or Proprietary
Information. Licensor and Licensee shall take all steps required to
prevent alleged infringement of the Rights or Proprietary
Information.
4. Technology Transfer and Consulting
Licensor shall make available to Licensee Licensor's personnel who shall
assist in transfer of the Proprietary Information and Rights to Licensee to
enable Licensee to manufacture, use, sell and service the Products and to train
Licensee's employees to enable Licensee to manufacture, use, sell and service
the Products. Licensor shall also make available to Licensee, at Licensee's
reasonable request, additional consulting services. Licensor shall provide such
personnel at the standard rates provided hereinafter, plus travel and other
out-of-pocket expenses.
5. Royalties and Other Payments:
78
5.1 Royalties. For and in consideration of the rights, continuing
obligations and licenses granted above, Licensee hereby agrees to
pay Licensor a royalty equal to the percent of the Net Sales of all
Products, including spares, therefore sold by Licensee in the
Territory indicated in Exhibit D attached. "Net Sales" means all
amounts received by Licensee or its sublicensees for any sale of any
Product, less the value of any Products supplied by Licensor, and
less the separately stated charges for (a) trade and cash discounts
actually allowed, (b) credits or refunds actually allowed for
damaged or returned goods (c) sales, excise and value added taxes,
and (d) packaging costs, insurance, transportation charges,
commissions and import duties. All computations relating to royalty
payments shall be made in accordance with generally accepted
accounting principles, applied consistently. Licensee shall obtain a
properly authenticated certificate evidencing payment of withholding
tax, which shall show the Licensor's name as the recipient of the
royalties and shall forward same to Licensor as promptly as
reasonably possible following royalty remittances. Payment of the
royalty to Licensor shall be upon Licensee's invoicing of sale to
its customer and not upon collection.
5.2 Other Payments. Licensee shall also pay Licensor for technology and
consulting services as provided for in Section 4. at the rate of
US$500.00 per day plus related expenses subject to annual
adjustment.
6. Reports; Inquiries; Promotion; Inspection:
6.1 Reports. Payments due Licensor under Section 5.1 hereof will be
calculated quarterly and shall be made in the currency of the
Licensor. Payment shall be made within sixty (60) days after the
last day of each calendar quarter. Accompanying each quarterly
payment, Licensee will deliver to Licensor a quarterly statement of
revenues received from the sale of all Products.
In addition, Licensee shall also when making its first payment
hereunder in any calendar year
79
include and furnish to Licensor a full and true statement giving
particulars of all Products manufactured and sold by Licensee during
the preceding twelve-month period.
6.2 Inquiries from Territory. During the term of this Agreement,
Licensor agrees to forward to Licensee copies of all sales inquires
from prospective users and purchasers of Products located in, or
which involve shipment of Products to, the Territory. Licensee
agrees to forward to Licensor all sales inquiries received from
prospective users and purchasers of Products located outside of the
Territory or which involve shipment of Products outside of the
Territory. If because of the customer's situation, a sale is outside
the Territory and in a territory not otherwise exclusively licensed
by Licensor, Licensee must notify Licensor in advance and pay to
Licensor a fee of 5% of the Net Sales Price of the Product sold into
such territory, except in mutually agreed upon unusual or
extraordinary circumstances. Such 5% fee is in addition to the
royalties imposed in Section 5.1 of this Agreement. It is understood
that under no circumstances shall Licensee sell Products outside the
Territory and into a territory in which Licensor has entered into an
exclusive license.
6.3 Promotion of Products. Licensee shall exercise its best efforts to
promote the sale of Products in the Territory.
6.4 Inspection. Licensee and any sublicensees shall keep full and
accurate records of all Products manufactured and sold and give same
to any representative selected by Licensor, upon reasonable notice
and during normal business hours, but no more often than once each
year, complete access to inspect the records of Licensee on which
Net Sales are based. Licensee's determination of the payments due
Licensor under this Agreement will be deemed conclusive unless,
within twenty-four (24) months from the date of payment thereof,
Licensor notifies Licensee in writing of any error in such payments.
80
Licensee shall permit Licensor at all reasonable times through its
duly appointed agent or agents to inspect manufacturing operations
used by Licensee in the manufacture of Products.
7. Confidentiality
7.1 Nondisclosure. Licensee agrees that it will keep confidential all
Proprietary Information and any other confidential business or
technical information disclosed to Licensee in furtherance of this
Agreement, and will insofar as it is reasonably practicable bind to
secrecy its officers, managers, and employees concerned in or who
may have knowledge of the Proprietary Information. The provisions of
this Section 7 shall survive termination of this Agreement for a
period of five (5) years.
7.2 Exclusion. Notwithstanding the above, the following materials will
not be deemed confidential:
(a) Information which at the time of disclosure is in the public
domain;
(b) Information which after disclosure is published or otherwise
becomes part of the public domain through no fault of
Licensee;
(c) Information which Licensee can show was received by it from a
third party who did not acquire it, directly or indirectly,
from Licensor; and
(d) Information which before the time of disclosure by Licensor to
Licensee was independently developed by Licensee, and which
can be shown by written documentation.
8. New Developments & Improvements
8.1 Developed by Licensor. If, during the term of this Agreement,
Licensor shall make any further improvements in Products and develop
any improvement in the Proprietary Information, then Licensor shall
notify Licensee of such improvements. Upon the request of Licensee,
Licensor
81
shall provide Licensee with full information regarding such
improvements and Licensee shall be entitled to use the improvements
with all rights which are hereby granted to Licensee under Section 1
hereof.
8.2 Developed by Licensee. If, during the term of this Agreement,
Licensee shall make any improvements in the Products or develop any
improvements in the Proprietary Information, then:
(a) Licensee shall have the sole option of deciding whether to
apply for a patent. If it does, Licensor shall give all
necessary cooperation and assistance in preparing and
prosecuting Licensee's patent application. Upon issuance of a
patent, Licensor shall receive from Licensee a royalty-free
license (with the right to sublicense) to use the patent,
outside the Territory which is designated as exclusive to
Licensee, for the term of this Agreement.
(b) If Licensee decides not to file a patent application, Licensor
has the option to do so. In such event, all costs of obtaining
the patent and consequent royalty payments will be for the
account of the Licensor and Licensor will grant to Licensee a
royalty-free perpetual license to use the patent to
manufacture, use and sell Licensed Products, including the
right to sublicense, in the Territory which is designated as
exclusive to Licensee.
(c) If the improvements are not patentable, or both parties choose
not to patent them, Licensee agrees to submit to Licensor,
during the term of this Agreement, all available information
on the improvements, now or hereafter found, owned or
controlled by Licensee. Both Licensor and Licensee shall have
a perpetual royalty-free license to use all of these
improvements.
82
9. No Contest; Use of Trademarks and Advertising Matter:
Licensee acknowledges Licensor's right to control the Proprietary
Information and the Rights, and will not at any time do or cause to be done any
act or thing contesting or in any way impairing Licensor's investment and rights
in such property. In accordance with Licensor's instructions, Licensee shall use
Licensor's trademarks in connection with Products it manufactures and sells
under this Agreement.
Licensee may use packaging, catalogs, labels, letterheads and
advertisements carrying or including the trademarks covered by this Agreement in
connection with the Products.
10. Term:
Except as provided for in Section 11, this Agreement shall begin as of the
date first written above, and shall end on September 30, 1998, provided that it
shall automatically be renewed and continue in full force and effect thereafter
from year to year, unless and until notice is given by Licensor or Licensee of
its intention to terminate this Agreement at the expiration of the original term
or any renewal term, such notice to be given at least sixty (60) days prior to
any such expiration date.
11. Termination:
11.1 For Breach. In the event either party hereto fails, refuses or
neglects to perform any obligation on its part under this Agreement,
or if any warranty or representation made by either party hereto
proves to be false or misleading in any material respect, the other
party may then terminate this Agreement upon sixty (60) days' prior
written notice, provided, however, that in the event the defaulting
party shall rectify such default within the notice period, this
Agreement shall remain in full force and effect. Any cancellation or
termination of this Agreement shall be without prejudice to any
other right of action or remedy for the recovery of royalties or for
the breach of any covenant herein contained.
83
11.2 Other:
(a) In the event of compulsory or voluntary liquidation of
Licensee, or the appointment of a receiver; or in case
Licensee should make an assignment for the benefit of
creditors; or should Licensee go out of business; then in any
such event this Agreement shall automatically terminate.
(b) This Agreement may be terminated at the option of Licensor if
controlling interest in Licensee shall pass to any party or
parties not holding controlling interest at the date of
execution of this Agreement, unless written notice of such
change in structure or ownership is given to Licensor prior to
such change and is agreed to in writing by Licensor.
Controlling interest is defined as the ownership of 51% of the
voting stock of a corporation.
12. Effects of Termination
Upon termination of this Agreement for any reason:
(a) Licensee shall not thereafter seek or accept any additional orders
to manufacture or sell any Products; and
(b) Licensee will have the right to complete and sell or use all
Products, the production of which commenced prior to termination and
to sell or use all Products in its possession on the date of
termination.
(c) Licensee will be obligated to pay Licensor the royalties related to
any sales described in section 12 (b).
13. Force Majeure:
If, by reason of acts of God, natural events, accidents, war, governmental
controls or any cause beyond control of either party, performance of one or both
parties is prevented, then in such event
84
performance by both parties hereunder shall be excused or deferred, as
appropriate, until the effects of such intervening cause have ended. Either
party has the right to terminate if a Force Majeure event remains in effect for
more than ninety (90) days.
14. Governing Law:
To the extent not prohibited by other applicable law, this Agreement is
made under the laws of Japan and shall be interpreted in accordance with such
laws.
15. Miscellaneous:
15.1 Entire Agreement; Amendments. This Agreement states the entire
agreement between the parties with respect to the Products and
Rights provided for herein. No amendment or modification of this
Agreement may be made except by an instrument in writing signed by
both parties.
15.2 Assignment. This Agreement may not be assigned in whole or in part
by either party without the written consent of the other, which such
consent should not be unreasonably withheld.
15.3 Notice. Any notice required or committed to be sent hereunder will
be deemed delivered five (5) days after the date mailed or otherwise
dispatched in the mail, postage prepaid, by registered, express or
certified mail, return receipt requested, or by a recognized private
express courier, to either party at the address listed above, or
such other address of which either party may so notify the other.
Notice will also be deemed given on the date notice is faxed to the
other party.
15.4 Legal Fees. In the event that any legal action, including
arbitration, is required in order to enforce or interpret any of the
provisions of this Agreement, the prevailing party in such action
shall recover all reasonable costs and expenses, including
attorneys' fees, incurred in connection
85
therewith.
15.5 No Waiver; Headings. The failure of either party to enforce any
provision of this Agreement shall not be deemed a waiver of that or
any other provision of this Agreement. The sections and paragraphs
of this Agreement are for convenience only and will not be of any
effect in construing the meanings of such sections or paragraphs.
15.6 Severability. In the event any clause, section or obligation stated
herein is determined to be illegal, invalid or unenforceable in a
particular jurisdiction, then in that jurisdiction this Agreement
may be read and understood as not including such clause, section or
obligation, and the other clauses, sections and obligations will
remain in effect.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement
as of the date first written above.
Hosokawa Bepex Corporation Hosokawa Micron Corporation
(Licensor) (Licensee)
By: /s/ Xxxxx X. Xxxxx By: /s/ Xxxxxx Xxxxxxxx
---------------------- ------------------------
Name: Name:
Title: V.P. / Sec. Title: President
86
EXHIBITS A and B
to the
LICENSE AGREEMENT
By and Between
Hosokawa Bepex Corporation
and
Hosokawa Micron Corporation
dated October 1, 1997
EXHIBIT A
Licensed Product(s):
Purge Vessel
Extrud-O-Mix EM
Pulvocron
All Xxxxx Products
Solidaire Indirect Dryers, SJ Series
Continuator Indirect Dryer, CR Series
Turbulizer, TX, TCX Series
Torus Disc Dryer TD
Solid Phase Polymerization Systems SSP
Compactor
Briquetter
EXHIBIT B
Proprietary Information and Rights:
All related Hosokawa Bepex Corporation patents and trademarks registered
in the Territory with Related know-how.
87
EXHIBITS C and D
to the
LICENSE AGREEMENT
By and Between
Hosokawa Bepex Corporation
and
Hosokawa Micron Corporation
dated October 1, 1997
EXHIBIT C
Territory:
Exclusive Territory: Japan
Non-Exclusive Territory: All other Asian countries including the countries
which comprised the former USSR, but excluding India and all countries
west of India and Australia and New Zealand.
EXHIBIT D
Royalty Rate(s):
1.5%: Compactor 2.5%: Extrud-O-Mix EM
Briquetter Pulvocron
All Xxxxx Products
2.0%: Solidaire Indirect Dryers, SJ Series 3.0%: Purge Vessel
Continuator Indirect Dryer, CR Series
Turbulizer, TX, TCX Series
Torus Disc Dryer TD
Solid Phase Polymerization Systems SSP
88
LICENSE AGREEMENT
This License Agreement, made with effect from the 1st day of
October, 1997, by and between Hosokawa Bepex GmbH, a German limited liability
company, with offices at Xxxxxxxxxxxxxx 0, X-00000 Xxxxxxxxxx-Xxxxxxxxx, Xxxxxxx
("the Licensor") and Hosokawa Micron Corporation, a Japanese corporation, with
offices at 5-14, 2-chome, Xxxxxxxxxxx, Xxxx-xx Xxxxx 000, Xxxxx ("the
Licensee").
WITNESSETH
WHEREAS Licensor owns and possesses certain confidential technical
information, trade secrets and other data, including designs, drawings,
information, skills, know-how and test engineering, production, performance and
other technical data, customer lists and marketing information (hereinafter
collectively referred to as "Proprietary Information") relating to the
manufacture, sale and servicing of equipment, products and systems, which are
listed and described in Exhibit A, attached hereto and made a part hereof
(hereinafter collectively referred to as the "Products," which term includes any
and all such items and all component and accessories for replacement or
otherwise); and
WHEREAS Licensor owns or controls certain trademarks and patent rights, or
applications therefore, as such may be listed on the date hereof or from time to
time hereafter in Exhibit B attached hereto and made a part hereof (hereinafter
referred to as the "Rights"); and
WHEREAS Licensor and Licensee are desirous that Licensee should have the
right, privilege and license to manufacture, use and sell the Products based
upon and using such Proprietary Information and Rights in such territories and
countries and on an exclusive and non-exclusive basis as are listed on the date
hereof or from time to time hereafter in Exhibit C attached hereto and made a
part hereof (hereinafter referred to as the "Territory");
89
NOW THEREFORE, in consideration of the promises, covenants and
undertakings contained herein, it is mutually agreed as follows:
1. Grants of Licenses:
1.1 Grants. Licensor hereby grants to Licensee, and Licensee accepts,
the right, privilege and license to use all Proprietary Information
and Rights which Licensor presently possesses or which it may
hereafter possess for the purpose of manufacturing, using and
selling the Products in the Territory. Such grants shall either be
on an exclusive or non-exclusive basis for a particular country as
set forth in Exhibit C. Licensor reserves the right to license
future Proprietary Information and Rights at royalty rates different
from those set forth in Exhibit D.
1.2 Sublicenses. Licensee may enter into sublicenses of the Proprietary
Information and Right provided that the terms of such agreements are
at least as restrictive on the sublicensee as the terms of this
Agreement are restrictive on Licensee and provided that the
sublicensee shall not have the right to sublicense. Licensee shall
provide Licensor with a copy of any and all executed sublicense
agreements as soon as practicable after execution.
2. Supply of Information
Licensor will make available to Licensee and Licensee agrees to receive
during the term of the Agreement and all extensions thereof, such Proprietary
Information as may be necessary or appropriate to enable Licensee to
manufacture, use, sell and service the Products according to specifications and
quality substantially equivalent to the specifications and quality of Products
manufactured and sold by Licensor. Licensee will be required to pay for the
costs related to transfers of information.
3. Representations
90
3.1 No Conflict. Licensor and Licensee warrant that they have full power
and authority to enter into this Agreement. Licensor represents and
warrants that it has not previously granted any rights with respect
to the Proprietary Information and Rights that are inconsistent
with, limit or affect Licensee's rights or Licensor's obligations
under this Agreement.
3.2 Sole Rights. Licensor warrants that it has such right, title and
interest in and to the Proprietary Information as to enable it to
vest in Licensee the right, privilege and licenses herein conveyed.
Licensor further warrants that it is not aware of any pending or
threatened litigation or claims regarding such rights, title and
interest, that it is not aware of any evidence that would render any
Rights invalid or unenforceable, and that it is not aware of any
evidence that would impair the value of any other part of the
Rights.
3.3 Infringement by Third Parties. Licensor and Licensee shall promptly
notify each other in writing if they acquire knowledge of any
infringement of any of the Products, Rights or Proprietary
Information. Licensor and Licensee shall take all steps required to
prevent alleged infringement of the Rights or Proprietary
Information.
4. Technology Transfer and Consulting
Licensor shall make available to Licensee Licensor's personnel who shall
assist in transfer of the Proprietary Information and Rights to Licensee to
enable Licensee to manufacture, use, sell and service the Products and to train
Licensee's employees to enable Licensee to manufacture, use, sell and service
the Products. Licensor shall also make available to Licensee, at Licensee's
reasonable request, additional consulting services. Licensor shall provide such
personnel at the standard rates provided hereinafter, plus travel and other
out-of-pocket expenses.
5. Royalties and Other Payments:
91
5.1 Royalties. For and in consideration of the rights, continuing
obligations and licenses granted above, Licensee hereby agrees to
pay Licensor a royalty equal to the percent of the Net Sales of all
Products, including spares, therefore sold by Licensee in the
Territory indicated in Exhibit D attached. "Net Sales" means all
amounts received by Licensee or its sublicensees for any sale of any
Product, less the value of any Products supplied by Licensor, and
less the separately stated charges for (a) trade and cash discounts
actually allowed, (b) credits or refunds actually allowed for
damaged or returned goods (c) sales, excise and value added taxes,
and (d) packaging costs, insurance, transportation charges,
commissions and import duties. All computations relating to royalty
payments shall be made in accordance with generally accepted
accounting principles, applied consistently. Licensee shall obtain a
properly authenticated certificate evidencing payment of withholding
tax, which shall show the Licensor's name as the recipient of the
royalties and shall forward same to Licensor as promptly as
reasonably possible following royalty remittances. Payment of the
royalty to Licensor shall be upon Licensee's invoicing of sale to
its customer and not upon collection.
5.2 Other Payments. Licensee shall also pay Licensor for technology and
consulting services as provided for in Section 4. at the rate of
US$500.00 per day plus related expenses subject to annual
adjustment.
6. Reports; Inquiries; Promotion; Inspection:
6.1 Reports. Payments due Licensor under Section 5.1 hereof will be
calculated quarterly and shall be made in the currency of the
Licensor. Payment shall be made within sixty (60) days after the
last day of each calendar quarter. Accompanying each quarterly
payment, Licensee will deliver to Licensor a quarterly statement of
revenues received from the sale of all Products.
In addition, Licensee shall also when making its first payment hereunder
in any calendar year
92
include and furnish to Licensor a full and true statement giving
particulars of all Products manufactured and sold by Licensee during
the preceding twelve-month period.
6.2 Inquiries from Territory. During the term of this Agreement,
Licensor agrees to forward to Licensee copies of all sales inquires
from prospective users and purchasers of Products located in, or
which involve shipment of Products to, the Territory. Licensee
agrees to forward to Licensor all sales inquiries received from
prospective users and purchasers of Products located outside of the
Territory or which involve shipment of Products outside of the
Territory. If because of the customer's situation, a sale is outside
the Territory and in a territory not otherwise exclusively licensed
by Licensor, Licensee must notify Licensor in advance and pay to
Licensor a fee of 5% of the Net Sales Price of the Product sold into
such territory, except in mutually agreed upon unusual or
extraordinary circumstances. Such 5% fee is in addition to the
royalties imposed in Section 5.1 of this Agreement. It is understood
that under no circumstances shall Licensee sell Products outside the
Territory and into a territory in which Licensor has entered into an
exclusive license.
6.3 Promotion of Products. Licensee shall exercise its best efforts to
promote the sale of Products in the Territory.
6.4 Inspection. Licensee and any sublicensees shall keep full and
accurate records of all Products manufactured and sold and give same
to any representative selected by Licensor, upon reasonable notice
and during normal business hours, but no more often than once each
year, complete access to inspect the records of Licensee on which
Net Sales are based. Licensee's determination of the payments due
Licensor under this Agreement will be deemed conclusive unless,
within twenty-four (24) months from the date of payment thereof,
Licensor notifies Licensee in writing of any error in such payments.
93
Licensee shall permit Licensor at all reasonable times through its
duly appointed agent or agents to inspect manufacturing operations
used by Licensee in the manufacture of Products.
7. Confidentiality
7.1 Nondisclosure. Licensee agrees that it will keep confidential all
Proprietary Information and any other confidential business or
technical information disclosed to Licensee in furtherance of this
Agreement, and will insofar as it is reasonably practicable bind to
secrecy its officers, managers, and employees concerned in or who
may have knowledge of the Proprietary Information. The provisions of
this Section 7 shall survive termination of this Agreement for a
period of five (5) years.
7.2 Exclusion. Notwithstanding the above, the following materials will
not be deemed confidential:
(a) Information which at the time of disclosure is in the public
domain;
(b) Information which after disclosure is published or otherwise
becomes part of the public domain through no fault of
Licensee;
(c) Information which Licensee can show was received by it from a
third party who did not acquire it, directly or indirectly,
from Licensor; and
(d) Information which before the time of disclosure by Licensor to
Licensee was independently developed by Licensee, and which
can be shown by written documentation.
8. New Developments & Improvements
8.1 Developed by Licensor. If, during the term of this Agreement,
Licensor shall make any further improvements in Products and develop
any improvement in the Proprietary Information, then Licensor shall
notify Licensee of such improvements. Upon the request of Licensee,
Licensor
94
shall provide Licensee with full information regarding such
improvements and Licensee shall be entitled to use the improvements
with all rights which are hereby granted to Licensee under Section 1
hereof.
8.2 Developed by Licensee. If, during the term of this Agreement,
Licensee shall make any improvements in the Products or develop any
improvements in the Proprietary Information, then:
(a) Licensee shall have the sole option of deciding whether to
apply for a patent. If it does, Licensor shall give all
necessary cooperation and assistance in preparing and
prosecuting Licensee's patent application. Upon issuance of a
patent, Licensor shall receive from Licensee a royalty-free
license (with the right to sublicense) to use the patent,
outside the Territory which is designated as exclusive to
Licensee, for the term of this Agreement.
(b) If Licensee decides not to file a patent application, Licensor
has the option to do so. In such event, all costs of obtaining
the patent and consequent royalty payments will be for the
account of the Licensor and Licensor will grant to Licensee a
royalty-free perpetual license to use the patent to
manufacture, use and sell Licensed Products, including the
right to sublicense, in the Territory which is designated as
exclusive to Licensee.
(c) If the improvements are not patentable, or both parties choose
not to patent them, Licensee agrees to submit to Licensor,
during the term of this Agreement, all available information
on the improvements, now or hereafter found, owned or
controlled by Licensee. Both Licensor and Licensee shall have
a perpetual royalty-free license to use all of these
improvements.
95
9. No Contest; Use of Trademarks and Advertising Matter:
Licensee acknowledges Licensor's right to control the Proprietary
Information and the Rights, and will not at any time do or cause to be done any
act or thing contesting or in any way impairing Licensor's investment and rights
in such property. In accordance with Licensor's instructions, Licensee shall use
Licensor's trademarks in connection with Products it manufactures and sells
under this Agreement.
Licensee may use packaging, catalogs, labels, letterheads and
advertisements carrying or including the trademarks covered by this Agreement in
connection with the Products.
10. Term:
Except as provided for in Section 11, this Agreement shall begin as of the
date first written above, and shall end on September 30, 1998, provided that it
shall automatically be renewed and continue in full force and effect thereafter
from year to year, unless and until notice is given by Licensor or Licensee of
its intention to terminate this Agreement at the expiration of the original term
or any renewal term, such notice to be given at least sixty (60) days prior to
any such expiration date.
11. Termination:
11.1 For Breach. In the event either party hereto fails, refuses or
neglects to perform any obligation on its part under this Agreement,
or if any warranty or representation made by either party hereto
proves to be false or misleading in any material respect, the other
party may then terminate this Agreement upon sixty (60) days' prior
written notice, provided, however, that in the event the defaulting
party shall rectify such default within the notice period, this
Agreement shall remain in full force and effect. Any cancellation or
termination of this Agreement shall be without prejudice to any
other right of action or remedy for the recovery of royalties or for
the breach of any covenant herein contained.
96
11.2 Other:
(a) In the event of compulsory or voluntary liquidation of
Licensee, or the appointment of a receiver; or in case
Licensee should make an assignment for the benefit of
creditors; or should Licensee go out of business; then in any
such event this Agreement shall automatically terminate.
(b) This Agreement may be terminated at the option of Licensor if
controlling interest in Licensee shall pass to any party or
parties not holding controlling interest at the date of
execution of this Agreement, unless written notice of such
change in structure or ownership is given to Licensor prior to
such change and is agreed to in writing by Licensor.
Controlling interest is defined as the ownership of 51% of the
voting stock of a corporation.
12. Effects of Termination
Upon termination of this Agreement for any reason:
(a) Licensee shall not thereafter seek or accept any additional orders
to manufacture or sell any Products; and
(b) Licensee will have the right to complete and sell or use all
Products, the production of which commenced prior to termination and
to sell or use all Products in its possession on the date of
termination.
(c) Licensee will be obligated to pay Licensor the royalties related to
any sales described in section 12 (b).
13. Force Majeure:
If, by reason of acts of God, natural events, accidents, war, governmental
controls or any cause beyond control of either party, performance of one or both
parties is prevented, then in such event
97
performance by both parties hereunder shall be excused or deferred, as
appropriate, until the effects of such intervening cause have ended. Either
party has the right to terminate if a Force Majeure event remains in effect for
more than ninety (90) days.
14. Governing Law:
To the extent not prohibited by other applicable law, this Agreement is
made under the laws of Japan and shall be interpreted in accordance with such
laws.
15. Miscellaneous:
15.1 Entire Agreement; Amendments. This Agreement states the entire
agreement between the parties with respect to the Products and
Rights provided for herein. No amendment or modification of this
Agreement may be made except by an instrument in writing signed by
both parties.
15.2 Assignment. This Agreement may not be assigned in whole or in part
by either party without the written consent of the other, which such
consent should not be unreasonably withheld.
15.3 Notice. Any notice required or committed to be sent hereunder will
be deemed delivered five (5) days after the date mailed or otherwise
dispatched in the mail, postage prepaid, by registered, express or
certified mail, return receipt requested, or by a recognized private
express courier, to either party at the address listed above, or
such other address of which either party may so notify the other.
Notice will also be deemed given on the date notice is faxed to the
other party.
15.4 Legal Fees. In the event that any legal action, including
arbitration, is required in order to enforce or interpret any of the
provisions of this Agreement, the prevailing party in such action
shall recover all reasonable costs and expenses, including
attorneys' fees, incurred in connection
98
therewith.
15.5 No Waiver; Headings. The failure of either party to enforce any
provision of this Agreement shall not be deemed a waiver of that or
any other provision of this Agreement. The sections and paragraphs
of this Agreement are for convenience only and will not be of any
effect in construing the meanings of such sections or paragraphs.
15.6 Severability. In the event any clause, section or obligation stated
herein is determined to be illegal, invalid or unenforceable in a
particular jurisdiction, then in that jurisdiction this Agreement
may be read and understood as not including such clause, section or
obligation, and the other clauses, sections and obligations will
remain in effect.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement
as of the date first written above.
Hosokawa Bepex GmbH Hosokawa Micron Corporation
(Licensor) (Licensee)
By: /s/ X. Xxxxxx By: /s/ Xxxxxx Xxxxxxxx
--------------------------- ------------------------
Name: Name:
Title: Geschaftsfuhrer Title: President
99
EXHIBITS A and B
to the
LICENSE AGREEMENT
By and Between
Hosokawa Bepex GmbH
and
Hosokawa Micron Corporation
dated October 1, 1997
EXHIBIT A
Licensed Product(s):
Compactor, L, CS, and K Series
Briquetters HK Series
Gear Pelletizers Series G
Flake Crusher
Bexmill
Bexroller
Bextruder
EXHIBIT B
Proprietary Information and Rights:
All related Hosokawa Bepex GmbH patents and trademarks registered in the
Territory with related know-how.
100
EXHIBITS C and D
to the
LICENSE AGREEMENT
By and Between
Hosokawa Bepex GmbH
and
Hosokawa Micron Corporation
dated October 1, 1997
EXHIBIT C
Territory:
Exclusive Territory: Japan
Non-Exclusive Territory: All other Asian countries including the countries
which comprised the former USSR, but excluding India and all countries
west of India and Australia and New Zealand.
EXHIBIT D
Royalty Rate(s):
2.5%: Compactor, L, CS, and K Series 4.0%: Bexmill
Briquetters HK Series Bexroller
Gear Pelletizers Series G Bextruder
Flake Crusher
101
LICENSE AGREEMENT
This License Agreement, made with effect from the 1st day of
October, 1997, by and between Hosokawa Micron Corporation, a Japanese
corporation, with offices at 5-14, 2-chome, Xxxxxxxxxxx, Xxxx-xx Xxxxx 000,
Xxxxx ("the Licensor") and Hosokawa Alpine Aktiengesellschaft, a German
corporation, with offices at Xxxxx-Xxxxxxx Xxxxxxx 00-00, X-00000 Xxxxxxxx,
Xxxxxxx ("the Licensee").
WITNESSETH
WHEREAS Licensor owns and possesses certain confidential technical
information, trade secrets and other data, including designs, drawings,
information, skills, know-how and test engineering, production, performance and
other technical data, customer lists and marketing information (hereinafter
collectively referred to as "Proprietary Information") relating to the
manufacture, sale and servicing of equipment, products and systems, which are
listed and described in Exhibit A, attached hereto and made a part hereof
(hereinafter collectively referred to as the "Products," which term includes any
and all such items and all component and accessories for replacement or
otherwise); and
WHEREAS Licensor owns or controls certain trademarks and patent rights, or
applications therefore, as such may be listed on the date hereof or from time to
time hereafter in Exhibit B attached hereto and made a part hereof (hereinafter
referred to as the "Rights"); and
WHEREAS Licensor and Licensee are desirous that Licensee should have the
right, privilege and license to manufacture, use and sell the Products based
upon and using such Proprietary Information and Rights in such territories and
countries and on an exclusive and non-exclusive basis as are listed on the date
hereof or from time to time hereafter in Exhibit C attached hereto and made a
part hereof (hereinafter referred to as the "Territory");
102
NOW THEREFORE, in consideration of the promises, covenants and
undertakings contained herein, it is mutually agreed as follows:
1. Grants of Licenses:
1.1 Grants. Licensor hereby grants to Licensee, and Licensee accepts,
the right, privilege and license to use all Proprietary Information
and Rights which Licensor presently possesses or which it may
hereafter possess for the purpose of manufacturing, using and
selling the Products in the Territory. Such grants shall either be
on an exclusive or non-exclusive basis for a particular country as
set forth in Exhibit C. Licensor reserves the right to license
future Proprietary Information and Rights at royalty rates different
from those set forth in Exhibit D.
1.2 Sublicenses. Licensee may enter into sublicenses of the Proprietary
Information and Right provided that the terms of such agreements are
at least as restrictive on the sublicensee as the terms of this
Agreement are restrictive on Licensee and provided that the
sublicensee shall not have the right to sublicense. Licensee shall
provide Licensor with a copy of any and all executed sublicense
agreements as soon as practicable after execution.
2. Supply of Information
Licensor will make available to Licensee and Licensee agrees to receive
during the term of the Agreement and all extensions thereof, such Proprietary
Information as may be necessary or appropriate to enable Licensee to
manufacture, use, sell and service the Products according to specifications and
quality substantially equivalent to the specifications and quality of Products
manufactured and sold by Licensor. Licensee will be required to pay for the
costs related to transfers of information.
103
3. Representations
3.1 No Conflict. Licensor and Licensee warrant that they have full power
and authority to enter into this Agreement. Licensor represents and
warrants that it has not previously granted any rights with respect
to the Proprietary Information and Rights that are inconsistent
with, limit or affect Licensee's rights or Licensor's obligations
under this Agreement.
3.2 Sole Rights. Licensor warrants that it has such right, title and
interest in and to the Proprietary Information as to enable it to
vest in Licensee the right, privilege and licenses herein conveyed.
Licensor further warrants that it is not aware of any pending or
threatened litigation or claims regarding such rights, title and
interest, that it is not aware of any evidence that would render any
Rights invalid or unenforceable, and that it is not aware of any
evidence that would impair the value of any other part of the
Rights.
3.3 Infringement by Third Parties. Licensor and Licensee shall promptly
notify each other in writing if they acquire knowledge of any
infringement of any of the Products, Rights or Proprietary
Information. Licensor and Licensee shall take all steps required to
prevent alleged infringement of the Rights or Proprietary
Information.
4. Technology Transfer and Consulting
Licensor shall make available to Licensee Licensor's personnel who shall
assist in transfer of the Proprietary Information and Rights to Licensee to
enable Licensee to manufacture, use, sell and service the Products and to train
Licensee's employees to enable Licensee to manufacture, use, sell and service
the Products. Licensor shall also make available to Licensee, at Licensee's
reasonable request, additional consulting services. Licensor shall provide such
personnel at the standard rates provided hereinafter, plus travel and other
out-of-pocket expenses.
104
5. Royalties and Other Payments:
5.1 Royalties. For and in consideration of the rights, continuing
obligations and licenses granted above, Licensee hereby agrees to
pay Licensor a royalty equal to the percent of the Net Sales of all
Products, including spares, therefore sold by Licensee in the
Territory indicated in Exhibit D attached. "Net Sales" means all
amounts received by Licensee or its sublicensees for any sale of any
Product, less the value of any Products supplied by Licensor, and
less the separately stated charges for (a) trade and cash discounts
actually allowed, (b) credits or refunds actually allowed for
damaged or returned goods (c) sales, excise and value added taxes,
and (d) packaging costs, insurance, transportation charges,
commissions and import duties. All computations relating to royalty
payments shall be made in accordance with generally accepted
accounting principles, applied consistently. Licensee shall obtain a
properly authenticated certificate evidencing payment of withholding
tax, which shall show the Licensor's name as the recipient of the
royalties and shall forward same to Licensor as promptly as
reasonably possible following royalty remittances. Payment of the
royalty to Licensor shall be upon Licensee's invoicing of sale to
its customer and not upon collection.
5.2 Other Payments. Licensee shall also pay Licensor for technology and
consulting services as provided for in Section 4. at the rate of
US$500.00 per day plus related expenses subject to annual
adjustment.
6. Reports; Inquiries; Promotion; Inspection:
6.1 Reports. Payments due Licensor under Section 5.1 hereof will be
calculated quarterly and shall be made in the currency of the
Licensor. Payment shall be made within sixty (60) days after the
last day of each calendar quarter. Accompanying each quarterly
payment, Licensee will deliver to Licensor a quarterly statement of
revenues received from the sale of all Products.
105
In addition, Licensee shall also when making its first payment
hereunder in any calendar year include and furnish to Licensor a
full and true statement giving particulars of all Products
manufactured and sold by Licensee during the preceding twelve-month
period.
6.2 Inquiries from Territory. During the term of this Agreement,
Licensor agrees to forward to Licensee copies of all sales inquires
from prospective users and purchasers of Products located in, or
which involve shipment of Products to, the Territory. Licensee
agrees to forward to Licensor all sales inquiries received from
prospective users and purchasers of Products located outside of the
Territory or which involve shipment of Products outside of the
Territory. If because of the customer's situation, a sale is outside
the Territory and in a territory not otherwise exclusively licensed
by Licensor, Licensee must notify Licensor in advance and pay to
Licensor a fee of 5% of the Net Sales Price of the Product sold into
such territory, except in mutually agreed upon unusual or
extraordinary circumstances. Such 5% fee is in addition to the
royalties imposed in Section 5.1 of this Agreement. It is understood
that under no circumstances shall Licensee sell Products outside the
Territory and into a territory in which Licensor has entered into an
exclusive license.
6.3 Promotion of Products. Licensee shall exercise its best efforts to
promote the sale of Products in the Territory.
6.4 Inspection. Licensee and any sublicensees shall keep full and
accurate records of all Products manufactured and sold and give same
to any representative selected by Licensor, upon reasonable notice
and during normal business hours, but no more often than once each
year, complete access to inspect the records of Licensee on which
Net Sales are based. Licensee's determination of the payments due
Licensor under this Agreement will be deemed conclusive unless,
within twenty-four (24) months from the date of payment thereof,
Licensor notifies
106
Licensee in writing of any error in such payments.
Licensee shall permit Licensor at all reasonable times through its
duly appointed agent or agents to inspect manufacturing operations
used by Licensee in the manufacture of Products.
7. Confidentiality
7.1 Nondisclosure. Licensee agrees that it will keep confidential all
Proprietary Information and any other confidential business or
technical information disclosed to Licensee in furtherance of this
Agreement, and will insofar as it is reasonably practicable bind to
secrecy its officers, managers, and employees concerned in or who
may have knowledge of the Proprietary Information. The provisions of
this Section 7 shall survive termination of this Agreement for a
period of five (5) years.
7.2 Exclusion. Notwithstanding the above, the following materials will
not be deemed confidential:
(a) Information which at the time of disclosure is in the public
domain;
(b) Information which after disclosure is published or otherwise
becomes part of the public domain through no fault of
Licensee;
(c) Information which Licensee can show was received by it from a
third party who did not acquire it, directly or indirectly,
from Licensor; and
(d) Information which before the time of disclosure by Licensor to
Licensee was independently developed by Licensee, and which
can be shown by written documentation.
8. New Developments & Improvements
8.1 Developed by Licensor. If, during the term of this Agreement,
Licensor shall make any further improvements in Products and develop
any improvement in the Proprietary Information, then
107
Licensor shall notify Licensee of such improvements. Upon the
request of Licensee, Licensor shall provide Licensee with full
information regarding such improvements and Licensee shall be
entitled to use the improvements with all rights which are hereby
granted to Licensee under Section 1 hereof.
8.2 Developed by Licensee. If, during the term of this Agreement,
Licensee shall make any improvements in the Products or develop any
improvements in the Proprietary Information, then:
(a) Licensee shall have the sole option of deciding whether to
apply for a patent. If it does, Licensor shall give all
necessary cooperation and assistance in preparing and
prosecuting Licensee's patent application. Upon issuance of a
patent, Licensor shall receive from Licensee a royalty-free
license (with the right to sublicense) to use the patent,
outside the Territory which is designated as exclusive to
Licensee, for the term of this Agreement.
(b) If Licensee decides not to file a patent application, Licensor
has the option to do so. In such event, all costs of obtaining
the patent and consequent royalty payments will be for the
account of the Licensor and Licensor will grant to Licensee a
royalty-free perpetual license to use the patent to
manufacture, use and sell Licensed Products, including the
right to sublicense, in the Territory which is designated as
exclusive to Licensee.
(c) If the improvements are not patentable, or both parties choose
not to patent them, Licensee agrees to submit to Licensor,
during the term of this Agreement, all available information
on the improvements, now or hereafter found, owned or
controlled by Licensee. Both Licensor and Licensee shall have
a perpetual royalty-free license to use all of these
improvements.
108
9. No Contest; Use of Trademarks and Advertising Matter:
Licensee acknowledges Licensor's right to control the Proprietary
Information and the Rights, and will not at any time do or cause to be done any
act or thing contesting or in any way impairing Licensor's investment and rights
in such property. In accordance with Licensor's instructions, Licensee shall use
Licensor's trademarks in connection with Products it manufactures and sells
under this Agreement.
Licensee may use packaging, catalogs, labels, letterheads and
advertisements carrying or including the trademarks covered by this Agreement in
connection with the Products.
10. Term:
Except as provided for in Section 11, this Agreement shall begin as of the
date first written above, and shall end on September 30, 1998, provided that it
shall automatically be renewed and continue in full force and effect thereafter
from year to year, unless and until notice is given by Licensor or Licensee of
its intention to terminate this Agreement at the expiration of the original term
or any renewal term, such notice to be given at least sixty (60) days prior to
any such expiration date.
11. Termination:
11.1 For Breach. In the event either party hereto fails, refuses or
neglects to perform any obligation on its part under this Agreement,
or if any warranty or representation made by either party hereto
proves to be false or misleading in any material respect, the other
party may then terminate this Agreement upon sixty (60) days' prior
written notice, provided, however, that in the event the defaulting
party shall rectify such default within the notice period, this
Agreement shall remain in full force and effect. Any cancellation or
termination of this Agreement shall be without prejudice to any
other right of action or remedy for the recovery of royalties or for
the breach of
109
any covenant herein contained.
11.2 Other:
(a) In the event of compulsory or voluntary liquidation of
Licensee, or the appointment of a receiver; or in case
Licensee should make an assignment for the benefit of
creditors; or should Licensee go out of business; then in any
such event this Agreement shall automatically terminate.
(b) This Agreement may be terminated at the option of Licensor if
controlling interest in Licensee shall pass to any party or
parties not holding controlling interest at the date of
execution of this Agreement, unless written notice of such
change in structure or ownership is given to Licensor prior to
such change and is agreed to in writing by Licensor.
Controlling interest is defined as the ownership of 51% of the
voting stock of a corporation.
12. Effects of Termination
Upon termination of this Agreement for any reason:
(a) Licensee shall not thereafter seek or accept any additional orders
to manufacture or sell any Products; and
(b) Licensee will have the right to complete and sell or use all
Products, the production of which commenced prior to termination and
to sell or use all Products in its possession on the date of
termination.
(c) Licensee will be obligated to pay Licensor the royalties related to
any sales described in section 12 (b).
13. Force Majeure:
If, by reason of acts of God, natural events, accidents, war, governmental
controls or any cause
110
beyond control of either party, performance of one or both parties is prevented,
then in such event performance by both parties hereunder shall be excused or
deferred, as appropriate, until the effects of such intervening cause have
ended. Either party has the right to terminate if a Force Majeure event remains
in effect for more than ninety (90) days.
14. Governing Law:
To the extent not prohibited by other applicable law, this Agreement is
made under the laws of Germany and shall be interpreted in accordance with such
laws.
15. Miscellaneous:
15.1 Entire Agreement; Amendments. This Agreement states the entire
agreement between the parties with respect to the Products and
Rights provided for herein. No amendment or modification of this
Agreement may be made except by an instrument in writing signed by
both parties.
15.2 Assignment. This Agreement may not be assigned in whole or in part
by either party without the written consent of the other, which such
consent should not be unreasonably withheld.
15.3 Notice. Any notice required or committed to be sent hereunder will
be deemed delivered five (5) days after the date mailed or otherwise
dispatched in the mail, postage prepaid, by registered, express or
certified mail, return receipt requested, or by a recognized private
express courier, to either party at the address listed above, or
such other address of which either party may so notify the other.
Notice will also be deemed given on the date notice is faxed to the
other party.
15.4 Legal Fees. In the event that any legal action, including
arbitration, is required in order to enforce or interpret any of the
provisions of this Agreement, the prevailing party in such action
111
shall recover all reasonable costs and expenses, including
attorneys' fees, incurred in connection therewith.
15.5 No Waiver; Headings. The failure of either party to enforce any
provision of this Agreement shall not be deemed a waiver of that or
any other provision of this Agreement. The sections and paragraphs
of this Agreement are for convenience only and will not be of any
effect in construing the meanings of such sections or paragraphs.
15.6 Severability. In the event any clause, section or obligation stated
herein is determined to be illegal, invalid or unenforceable in a
particular jurisdiction, then in that jurisdiction this Agreement
may be read and understood as not including such clause, section or
obligation, and the other clauses, sections and obligations will
remain in effect.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement
as of the date first written above.
Hosokawa Micron Corporation Hosokawa Alpine Aktiengesellschaft
(Licensor) (Licensee)
By: /s/ Xxxxxx Xxxxxxxx By: /s/ X. Xxxxxxxxxxx
----------------------- -------------------------------
Name: Name:
Title: President Title: Vorstand
112
EXHIBITS A and B
to the
LICENSE AGREEMENT
By and Between
Hosokawa Micron Corporation
and
Hosokawa Alpine Aktiengesellschaft
dated October 1, 1997
EXHIBIT A
Licensed Product(s):
Micron Innomizer, INM Series
Micron Jet T, MJ-T Series
Micron Separators, MS, MS-N Series
Micron Victory Mill, VP Series
Micron Fine Victory Mill, FVP Series
Micron Feather Mill, FM-S, FM-F Series
EXHIBIT B
Proprietary Information and Rights:
All related Hosokawa Micron Corporation patents and trademarks registered
in the Territory with related know-how.
113
EXHIBITS C and D
to the
LICENSE AGREEMENT
By and Between
Hosokawa Micron Corporation
and
Hosokawa Alpine Aktiengesellschaft
dated October 1, 1997
EXHIBIT C
Territory:
Exclusive Territory: Germany
Non-Exclusive Territory: All other European countries, Africa, Middle
East, India and all Asian countries west of India.
EXHIBIT D
Royalty Rate(s):
4%: Micron Innomizer, INM Series 2.5% Micron Separators, MS, MS-N Series
Micron Jet T, MJ-T Series Micron Victory Mill, VP Series
Micron Fine Victory Mill, FVP Series
Micron Feather Mill, FM-S, FM-F Series
114
LICENSE AGREEMENT
This License Agreement, made with effect from the 1st day of
October, 1997, by and between Hosokawa Micron Corporation, a Japanese
corporation, with offices at 5-14, 2-chome, Xxxxxxxxxxx, Xxxx-xx Xxxxx 000,
Xxxxx ("the Licensor") and Hosokawa Bepex GmbH, a German limited liability
company, with offices at Xxxxxxxxxxxxxx 0, X-00000 Xxxxxxxxxx-Xxxxxxxxx, Xxxxxxx
("the Licensee").
WITNESSETH
WHEREAS Licensor owns and possesses certain confidential technical
information, trade secrets and other data, including designs, drawings,
information, skills, know-how and test engineering, production, performance and
other technical data, customer lists and marketing information (hereinafter
collectively referred to as "Proprietary Information") relating to the
manufacture, sale and servicing of equipment, products and systems, which are
listed and described in Exhibit A, attached hereto and made a part hereof
(hereinafter collectively referred to as the "Products," which term includes any
and all such items and all component and accessories for replacement or
otherwise); and
WHEREAS Licensor owns or controls certain trademarks and patent rights, or
applications therefore, as such may be listed on the date hereof or from time to
time hereafter in Exhibit B attached hereto and made a part hereof (hereinafter
referred to as the "Rights"); and
WHEREAS Licensor and Licensee are desirous that Licensee should have the
right, privilege and license to manufacture, use and sell the Products based
upon and using such Proprietary Information and Rights in such territories and
countries and on an exclusive and non-exclusive basis as are listed on the date
hereof or from time to time hereafter in Exhibit C attached hereto and made a
part hereof (hereinafter referred to as the "Territory");
115
NOW THEREFORE, in consideration of the promises, covenants and
undertakings contained herein, it is mutually agreed as follows:
1. Grants of Licenses:
1.1 Grants. Licensor hereby grants to Licensee, and Licensee accepts,
the right, privilege and license to use all Proprietary Information
and Rights which Licensor presently possesses or which it may
hereafter possess for the purpose of manufacturing, using and
selling the Products in the Territory. Such grants shall either be
on an exclusive or non-exclusive basis for a particular country as
set forth in Exhibit C. Licensor reserves the right to license
future Proprietary Information and Rights at royalty rates different
from those set forth in Exhibit D.
1.2 Sublicenses. Licensee may enter into sublicenses of the Proprietary
Information and Right provided that the terms of such agreements are
at least as restrictive on the sublicensee as the terms of this
Agreement are restrictive on Licensee and provided that the
sublicensee shall not have the right to sublicense. Licensee shall
provide Licensor with a copy of any and all executed sublicense
agreements as soon as practicable after execution.
2. Supply of Information
Licensor will make available to Licensee and Licensee agrees to receive
during the term of the Agreement and all extensions thereof, such Proprietary
Information as may be necessary or appropriate to enable Licensee to
manufacture, use, sell and service the Products according to specifications and
quality substantially equivalent to the specifications and quality of Products
manufactured and sold by Licensor. Licensee will be required to pay for the
costs related to transfers of information.
3. Representations
116
3.1 No Conflict. Licensor and Licensee warrant that they have full power
and authority to enter into this Agreement. Licensor represents and
warrants that it has not previously granted any rights with respect
to the Proprietary Information and Rights that are inconsistent
with, limit or affect Licensee's rights or Licensor's obligations
under this Agreement.
3.2 Sole Rights. Licensor warrants that it has such right, title and
interest in and to the Proprietary Information as to enable it to
vest in Licensee the right, privilege and licenses herein conveyed.
Licensor further warrants that it is not aware of any pending or
threatened litigation or claims regarding such rights, title and
interest, that it is not aware of any evidence that would render any
Rights invalid or unenforceable, and that it is not aware of any
evidence that would impair the value of any other part of the
Rights.
3.3 Infringement by Third Parties. Licensor and Licensee shall promptly
notify each other in writing if they acquire knowledge of any
infringement of any of the Products, Rights or Proprietary
Information. Licensor and Licensee shall take all steps required to
prevent alleged infringement of the Rights or Proprietary
Information.
4. Technology Transfer and Consulting
Licensor shall make available to Licensee Licensor's personnel who shall
assist in transfer of the Proprietary Information and Rights to Licensee to
enable Licensee to manufacture, use, sell and service the Products and to train
Licensee's employees to enable Licensee to manufacture, use, sell and service
the Products. Licensor shall also make available to Licensee, at Licensee's
reasonable request, additional consulting services. Licensor shall provide such
personnel at the standard rates provided hereinafter, plus travel and other
out-of-pocket expenses.
5. Royalties and Other Payments:
117
5.1 Royalties. For and in consideration of the rights, continuing
obligations and licenses granted above, Licensee hereby agrees to
pay Licensor a royalty equal to the percent of the Net Sales of all
Products, including spares, therefore sold by Licensee in the
Territory indicated in Exhibit D attached. "Net Sales" means all
amounts received by Licensee or its sublicensees for any sale of any
Product, less the value of any Products supplied by Licensor, and
less the separately stated charges for (a) trade and cash discounts
actually allowed, (b) credits or refunds actually allowed for
damaged or returned goods (c) sales, excise and value added taxes,
and (d) packaging costs, insurance, transportation charges,
commissions and import duties. All computations relating to royalty
payments shall be made in accordance with generally accepted
accounting principles, applied consistently. Licensee shall obtain a
properly authenticated certificate evidencing payment of withholding
tax, which shall show the Licensor's name as the recipient of the
royalties and shall forward same to Licensor as promptly as
reasonably possible following royalty remittances. Payment of the
royalty to Licensor shall be upon Licensee's invoicing of sale to
its customer and not upon collection.
5.2 Other Payments. Licensee shall also pay Licensor for technology and
consulting services as provided for in Section 4. at the rate of
US$500.00 per day plus related expenses subject to annual
adjustment.
6. Reports; Inquiries; Promotion; Inspection:
6.1 Reports. Payments due Licensor under Section 5.1 hereof will be
calculated quarterly and shall be made in the currency of the
Licensor. Payment shall be made within sixty (60) days after the
last day of each calendar quarter. Accompanying each quarterly
payment, Licensee will deliver to Licensor a quarterly statement of
revenues received from the sale of all Products.
In addition, Licensee shall also when making its first payment hereunder
in any calendar year
118
include and furnish to Licensor a full and true statement giving
particulars of all Products manufactured and sold by Licensee during
the preceding twelve-month period.
6.2 Inquiries from Territory. During the term of this Agreement,
Licensor agrees to forward to Licensee copies of all sales inquires
from prospective users and purchasers of Products located in, or
which involve shipment of Products to, the Territory. Licensee
agrees to forward to Licensor all sales inquiries received from
prospective users and purchasers of Products located outside of the
Territory or which involve shipment of Products outside of the
Territory. If because of the customer's situation, a sale is outside
the Territory and in a territory not otherwise exclusively licensed
by Licensor, Licensee must notify Licensor in advance and pay to
Licensor a fee of 5% of the Net Sales Price of the Product sold into
such territory, except in mutually agreed upon unusual or
extraordinary circumstances. Such 5% fee is in addition to the
royalties imposed in Section 5.1 of this Agreement. It is understood
that under no circumstances shall Licensee sell Products outside the
Territory and into a territory in which Licensor has entered into an
exclusive license.
6.3 Promotion of Products. Licensee shall exercise its best efforts to
promote the sale of Products in the Territory.
6.4 Inspection. Licensee and any sublicensees shall keep full and
accurate records of all Products manufactured and sold and give same
to any representative selected by Licensor, upon reasonable notice
and during normal business hours, but no more often than once each
year, complete access to inspect the records of Licensee on which
Net Sales are based. Licensee's determination of the payments due
Licensor under this Agreement will be deemed conclusive unless,
within twenty-four (24) months from the date of payment thereof,
Licensor notifies Licensee in writing of any error in such payments.
119
Licensee shall permit Licensor at all reasonable times through its
duly appointed agent or agents to inspect manufacturing operations
used by Licensee in the manufacture of Products.
7. Confidentiality
7.1 Nondisclosure. Licensee agrees that it will keep confidential all
Proprietary Information and any other confidential business or
technical information disclosed to Licensee in furtherance of this
Agreement, and will insofar as it is reasonably practicable bind to
secrecy its officers, managers, and employees concerned in or who
may have knowledge of the Proprietary Information. The provisions of
this Section 7 shall survive termination of this Agreement for a
period of five (5) years.
7.2 Exclusion. Notwithstanding the above, the following materials will
not be deemed confidential:
(a) Information which at the time of disclosure is in the public
domain;
(b) Information which after disclosure is published or otherwise
becomes part of the public domain through no fault of
Licensee;
(c) Information which Licensee can show was received by it from a
third party who did not acquire it, directly or indirectly,
from Licensor; and
(d) Information which before the time of disclosure by Licensor to
Licensee was independently developed by Licensee, and which
can be shown by written documentation.
8. New Developments & Improvements
8.1 Developed by Licensor. If, during the term of this Agreement,
Licensor shall make any further improvements in Products and develop
any improvement in the Proprietary Information, then Licensor shall
notify Licensee of such improvements. Upon the request of Licensee,
Licensor
120
shall provide Licensee with full information regarding such
improvements and Licensee shall be entitled to use the improvements
with all rights which are hereby granted to Licensee under Section 1
hereof.
8.2 Developed by Licensee. If, during the term of this Agreement,
Licensee shall make any improvements in the Products or develop any
improvements in the Proprietary Information, then:
(a) Licensee shall have the sole option of deciding whether to
apply for a patent. If it does, Licensor shall give all
necessary cooperation and assistance in preparing and
prosecuting Licensee's patent application. Upon issuance of a
patent, Licensor shall receive from Licensee a royalty-free
license (with the right to sublicense) to use the patent,
outside the Territory which is designated as exclusive to
Licensee, for the term of this Agreement.
(b) If Licensee decides not to file a patent application, Licensor
has the option to do so. In such event, all costs of obtaining
the patent and consequent royalty payments will be for the
account of the Licensor and Licensor will grant to Licensee a
royalty-free perpetual license to use the patent to
manufacture, use and sell Licensed Products, including the
right to sublicense, in the Territory which is designated as
exclusive to Licensee.
(c) If the improvements are not patentable, or both parties choose
not to patent them, Licensee agrees to submit to Licensor,
during the term of this Agreement, all available information
on the improvements, now or hereafter found, owned or
controlled by Licensee. Both Licensor and Licensee shall have
a perpetual royalty-free license to use all of these
improvements.
121
9. No Contest; Use of Trademarks and Advertising Matter:
Licensee acknowledges Licensor's right to control the Proprietary
Information and the Rights, and will not at any time do or cause to be done any
act or thing contesting or in any way impairing Licensor's investment and rights
in such property. In accordance with Licensor's instructions, Licensee shall use
Licensor's trademarks in connection with Products it manufactures and sells
under this Agreement.
Licensee may use packaging, catalogs, labels, letterheads and
advertisements carrying or including the trademarks covered by this Agreement in
connection with the Products.
10. Term:
Except as provided for in Section 11, this Agreement shall begin as of the
date first written above, and shall end on September 30, 1998, provided that it
shall automatically be renewed and continue in full force and effect thereafter
from year to year, unless and until notice is given by Licensor or Licensee of
its intention to terminate this Agreement at the expiration of the original term
or any renewal term, such notice to be given at least sixty (60) days prior to
any such expiration date.
11. Termination:
11.1 For Breach. In the event either party hereto fails, refuses or
neglects to perform any obligation on its part under this Agreement,
or if any warranty or representation made by either party hereto
proves to be false or misleading in any material respect, the other
party may then terminate this Agreement upon sixty (60) days' prior
written notice, provided, however, that in the event the defaulting
party shall rectify such default within the notice period, this
Agreement shall remain in full force and effect. Any cancellation or
termination of this Agreement shall be without prejudice to any
other right of action or remedy for the recovery of royalties or for
the breach of any covenant herein contained.
122
11.2 Other:
(a) In the event of compulsory or voluntary liquidation of
Licensee, or the appointment of a receiver; or in case
Licensee should make an assignment for the benefit of
creditors; or should Licensee go out of business; then in any
such event this Agreement shall automatically terminate.
(b) This Agreement may be terminated at the option of Licensor if
controlling interest in Licensee shall pass to any party or
parties not holding controlling interest at the date of
execution of this Agreement, unless written notice of such
change in structure or ownership is given to Licensor prior to
such change and is agreed to in writing by Licensor.
Controlling interest is defined as the ownership of 51% of the
voting stock of a corporation.
12. Effects of Termination
Upon termination of this Agreement for any reason:
(a) Licensee shall not thereafter seek or accept any additional orders
to manufacture or sell any Products; and
(b) Licensee will have the right to complete and sell or use all
Products, the production of which commenced prior to termination and
to sell or use all Products in its possession on the date of
termination.
(c) Licensee will be obligated to pay Licensor the royalties related to
any sales described in section 12 (b).
13. Force Majeure:
If, by reason of acts of God, natural events, accidents, war, governmental
controls or any cause beyond control of either party, performance of one or both
parties is prevented, then in such event
123
performance by both parties hereunder shall be excused or deferred, as
appropriate, until the effects of such intervening cause have ended. Either
party has the right to terminate if a Force Majeure event remains in effect for
more than ninety (90) days.
14. Governing Law:
To the extent not prohibited by other applicable law, this Agreement is
made under the laws of Germany and shall be interpreted in accordance with such
laws.
15. Miscellaneous:
15.1 Entire Agreement; Amendments. This Agreement states the entire
agreement between the parties with respect to the Products and
Rights provided for herein. No amendment or modification of this
Agreement may be made except by an instrument in writing signed by
both parties.
15.2 Assignment. This Agreement may not be assigned in whole or in part
by either party without the written consent of the other, which such
consent should not be unreasonably withheld.
15.3 Notice. Any notice required or committed to be sent hereunder will
be deemed delivered five (5) days after the date mailed or otherwise
dispatched in the mail, postage prepaid, by registered, express or
certified mail, return receipt requested, or by a recognized private
express courier, to either party at the address listed above, or
such other address of which either party may so notify the other.
Notice will also be deemed given on the date notice is faxed to the
other party.
15.4 Legal Fees. In the event that any legal action, including
arbitration, is required in order to enforce or interpret any of the
provisions of this Agreement, the prevailing party in such action
shall recover all reasonable costs and expenses, including
attorneys' fees, incurred in connection
124
therewith.
15.5 No Waiver; Headings. The failure of either party to enforce any
provision of this Agreement shall not be deemed a waiver of that or
any other provision of this Agreement. The sections and paragraphs
of this Agreement are for convenience only and will not be of any
effect in construing the meanings of such sections or paragraphs.
15.6 Severability. In the event any clause, section or obligation stated
herein is determined to be illegal, invalid or unenforceable in a
particular jurisdiction, then in that jurisdiction this Agreement
may be read and understood as not including such clause, section or
obligation, and the other clauses, sections and obligations will
remain in effect.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement
as of the date first written above.
Hosokawa Micron Corporation Hosokawa Bepex GmbH
(Licensor) (Licensee)
By: /s/ Xxxxxx Xxxxxxxx By: /s/ X. Xxxxxx
------------------------ ----------------
Name: Name:
Title: President Title: Geschaftsfuhrer
125
EXHIBITS A and B
to the
LICENSE AGREEMENT
By and Between
Hosokawa Micron Corporation
and
Hosokawa Bepex GmbH
dated October 1, 1997
EXHIBIT A
Licensed Product(s):
Micron Agglomasters, AGM Series
EXHIBIT B
Proprietary Information and Rights:
All related Hosokawa Micron Corporation patents and trademarks registered
in the Territory with related know-how.
126
EXHIBITS C and D
to the
LICENSE AGREEMENT
By and Between
Hosokawa Micron Corporation
and
Hosokawa Bepex GmbH
dated October 1, 1997
EXHIBIT C
Territory:
Exclusive Territory: Germany
Non-Exclusive Territory: All other European countries, Africa, Middle
East, India and all Asian countries west of India.
EXHIBIT D
Royalty Rate(s):
4%: Micron Agglomasters, AGM Series
127
LICENSE AGREEMENT
This License Agreement, made with effect from the 1st day of
October, 1997, by and between Hosokawa Micron Corporation, a Japanese
corporation, with offices at 5-14, 2-chome, Xxxxxxxxxxx, Xxxx-xx Xxxxx 000,
Xxxxx ("the Licensor") and Hosokawa Micron Australia Pty. Ltd., an Australian
corporation, with offices at 0 Xxxxxx Xxxx, Xxxxxxxxx Xxxx, XXX 0000, Xxxxxxxxx
("the Licensee").
WITNESSETH
WHEREAS Licensor owns and possesses certain confidential technical
information, trade secrets and other data, including designs, drawings,
information, skills, know-how and test engineering, production, performance and
other technical data, customer lists and marketing information (hereinafter
collectively referred to as "Proprietary Information") relating to the
manufacture, sale and servicing of equipment, products and systems, which are
listed and described in Exhibit A, attached hereto and made a part hereof
(hereinafter collectively referred to as the "Products," which term includes any
and all such items and all component and accessories for replacement or
otherwise); and
WHEREAS Licensor owns or controls certain trademarks and patent rights, or
applications therefore, as such may be listed on the date hereof or from time to
time hereafter in Exhibit B attached hereto and made a part hereof (hereinafter
referred to as the "Rights"); and
WHEREAS Licensor and Licensee are desirous that Licensee should have the
right, privilege and license to manufacture, use and sell the Products based
upon and using such Proprietary Information and Rights in such territories and
countries and on an exclusive and non-exclusive basis as are listed on the date
hereof or from time to time hereafter in Exhibit C attached hereto and made a
part hereof
128
(hereinafter referred to as the "Territory");
NOW THEREFORE, in consideration of the promises, covenants and
undertakings contained herein, it is mutually agreed as follows:
1. Grants of Licenses:
1.1 Grants. Licensor hereby grants to Licensee, and Licensee accepts,
the right, privilege and license to use all Proprietary Information
and Rights which Licensor presently possesses or which it may
hereafter possess for the purpose of manufacturing, using and
selling the Products in the Territory. Such grants shall either be
on an exclusive or non-exclusive basis for a particular country as
set forth in Exhibit C. Licensor reserves the right to license
future Proprietary Information and Rights at royalty rates different
from those set forth in Exhibit D.
1.2 Sublicenses. Licensee may enter into sublicenses of the Proprietary
Information and Right provided that the terms of such agreements are
at least as restrictive on the sublicensee as the terms of this
Agreement are restrictive on Licensee and provided that the
sublicensee shall not have the right to sublicense. Licensee shall
provide Licensor with a copy of any and all executed sublicense
agreements as soon as practicable after execution.
2. Supply of Information
Licensor will make available to Licensee and Licensee agrees to receive
during the term of the Agreement and all extensions thereof, such Proprietary
Information as may be necessary or appropriate to enable Licensee to
manufacture, use, sell and service the Products according to specifications and
quality substantially equivalent to the specifications and quality of Products
manufactured and sold by Licensor. Licensee will be required to pay for the
costs related to transfers of information.
129
3. Representations
3.1 No Conflict. Licensor and Licensee warrant that they have full power
and authority to enter into this Agreement. Licensor represents and
warrants that it has not previously granted any rights with respect
to the Proprietary Information and Rights that are inconsistent
with, limit or affect Licensee's rights or Licensor's obligations
under this Agreement.
3.2 Sole Rights. Licensor warrants that it has such right, title and
interest in and to the Proprietary Information as to enable it to
vest in Licensee the right, privilege and licenses herein conveyed.
Licensor further warrants that it is not aware of any pending or
threatened litigation or claims regarding such rights, title and
interest, that it is not aware of any evidence that would render any
Rights invalid or unenforceable, and that it is not aware of any
evidence that would impair the value of any other part of the
Rights.
3.3 Infringement by Third Parties. Licensor and Licensee shall promptly
notify each other in writing if they acquire knowledge of any
infringement of any of the Products, Rights or Proprietary
Information. Licensor and Licensee shall take all steps required to
prevent alleged infringement of the Rights or Proprietary
Information.
4. Technology Transfer and Consulting
Licensor shall make available to Licensee Licensor's personnel who shall
assist in transfer of the Proprietary Information and Rights to Licensee to
enable Licensee to manufacture, use, sell and service the Products and to train
Licensee's employees to enable Licensee to manufacture, use, sell and service
the Products. Licensor shall also make available to Licensee, at Licensee's
reasonable request, additional consulting services. Licensor shall provide such
personnel at the standard rates provided hereinafter, plus travel and other
out-of-pocket expenses.
130
5. Royalties and Other Payments:
5.1 Royalties. For and in consideration of the rights, continuing
obligations and licenses granted above, Licensee hereby agrees to
pay Licensor a royalty equal to the percent of the Net Sales of all
Products, including spares, therefore sold by Licensee in the
Territory indicated in Exhibit D attached. "Net Sales" means all
amounts received by Licensee or its sublicensees for any sale of any
Product, less the value of any Products supplied by Licensor, and
less the separately stated charges for (a) trade and cash discounts
actually allowed, (b) credits or refunds actually allowed for
damaged or returned goods (c) sales, excise and value added taxes,
and (d) packaging costs, insurance, transportation charges,
commissions and import duties. All computations relating to royalty
payments shall be made in accordance with generally accepted
accounting principles, applied consistently. Licensee shall obtain a
properly authenticated certificate evidencing payment of withholding
tax, which shall show the Licensor's name as the recipient of the
royalties and shall forward same to Licensor as promptly as
reasonably possible following royalty remittances. Payment of the
royalty to Licensor shall be upon Licensee's invoicing of sale to
its customer and not upon collection.
5.2 Other Payments. Licensee shall also pay Licensor for technology and
consulting services as provided for in Section 4. at the rate of
US$500.00 per day plus related expenses subject to annual
adjustment.
6. Reports; Inquiries; Promotion; Inspection:
6.1 Reports. Payments due Licensor under Section 5.1 hereof will be
calculated quarterly and shall be made in the currency of the
Licensor. Payment shall be made within sixty (60) days after the
last day of each calendar quarter. Accompanying each quarterly
payment, Licensee will deliver to Licensor a quarterly statement of
revenues received from the sale of all Products.
131
In addition, Licensee shall also when making its first payment
hereunder in any calendar year include and furnish to Licensor a
full and true statement giving particulars of all Products
manufactured and sold by Licensee during the preceding twelve-month
period.
6.2 Inquiries from Territory. During the term of this Agreement,
Licensor agrees to forward to Licensee copies of all sales inquires
from prospective users and purchasers of Products located in, or
which involve shipment of Products to, the Territory. Licensee
agrees to forward to Licensor all sales inquiries received from
prospective users and purchasers of Products located outside of the
Territory or which involve shipment of Products outside of the
Territory. If because of the customer's situation, a sale is outside
the Territory and in a territory not otherwise exclusively licensed
by Licensor, Licensee must notify Licensor in advance and pay to
Licensor a fee of 5% of the Net Sales Price of the Product sold into
such territory, except in mutually agreed upon unusual or
extraordinary circumstances. Such 5% fee is in addition to the
royalties imposed in Section 5.1 of this Agreement. It is understood
that under no circumstances shall Licensee sell Products outside the
Territory and into a territory in which Licensor has entered into an
exclusive license.
6.3 Promotion of Products. Licensee shall exercise its best efforts to
promote the sale of Products in the Territory.
6.4 Inspection. Licensee and any sublicensees shall keep full and
accurate records of all Products manufactured and sold and give same
to any representative selected by Licensor, upon reasonable notice
and during normal business hours, but no more often than once each
year, complete access to inspect the records of Licensee on which
Net Sales are based. Licensee's determination of the payments due
Licensor under this Agreement will be deemed conclusive unless,
within twenty-four (24) months from the date of payment thereof,
Licensor notifies
132
Licensee in writing of any error in such payments.
Licensee shall permit Licensor at all reasonable times through its
duly appointed agent or agents to inspect manufacturing operations
used by Licensee in the manufacture of Products.
7. Confidentiality
7.1 Nondisclosure. Licensee agrees that it will keep confidential all
Proprietary Information and any other confidential business or
technical information disclosed to Licensee in furtherance of this
Agreement, and will insofar as it is reasonably practicable bind to
secrecy its officers, managers, and employees concerned in or who
may have knowledge of the Proprietary Information. The provisions of
this Section 7 shall survive termination of this Agreement for a
period of five (5) years.
7.2 Exclusion. Notwithstanding the above, the following materials will
not be deemed confidential:
(a) Information which at the time of disclosure is in the public
domain;
(b) Information which after disclosure is published or otherwise
becomes part of the public domain through no fault of
Licensee;
(c) Information which Licensee can show was received by it from a
third party who did not acquire it, directly or indirectly,
from Licensor; and
(d) Information which before the time of disclosure by Licensor to
Licensee was independently developed by Licensee, and which
can be shown by written documentation.
8. New Developments & Improvements
8.1 Developed by Licensor. If, during the term of this Agreement,
Licensor shall make any further improvements in Products and develop
any improvement in the Proprietary Information, then
133
Licensor shall notify Licensee of such improvements. Upon the
request of Licensee, Licensor shall provide Licensee with full
information regarding such improvements and Licensee shall be
entitled to use the improvements with all rights which are hereby
granted to Licensee under Section 1 hereof.
8.2 Developed by Licensee. If, during the term of this Agreement,
Licensee shall make any improvements in the Products or develop any
improvements in the Proprietary Information, then:
(a) Licensee shall have the sole option of deciding whether to
apply for a patent. If it does, Licensor shall give all
necessary cooperation and assistance in preparing and
prosecuting Licensee's patent application. Upon issuance of a
patent, Licensor shall receive from Licensee a royalty-free
license (with the right to sublicense) to use the patent,
outside the Territory which is designated as exclusive to
Licensee, for the term of this Agreement.
(b) If Licensee decides not to file a patent application, Licensor
has the option to do so. In such event, all costs of obtaining
the patent and consequent royalty payments will be for the
account of the Licensor and Licensor will grant to Licensee a
royalty-free perpetual license to use the patent to
manufacture, use and sell Licensed Products, including the
right to sublicense, in the Territory which is designated as
exclusive to Licensee.
(c) If the improvements are not patentable, or both parties choose
not to patent them, Licensee agrees to submit to Licensor,
during the term of this Agreement, all available information
on the improvements, now or hereafter found, owned or
controlled by Licensee. Both Licensor and Licensee shall have
a perpetual royalty-free license to use all of these
improvements.
134
9. No Contest; Use of Trademarks and Advertising Matter:
Licensee acknowledges Licensor's right to control the Proprietary
Information and the Rights, and will not at any time do or cause to be done any
act or thing contesting or in any way impairing Licensor's investment and rights
in such property. In accordance with Licensor's instructions, Licensee shall use
Licensor's trademarks in connection with Products it manufactures and sells
under this Agreement.
Licensee may use packaging, catalogs, labels, letterheads and
advertisements carrying or including the trademarks covered by this Agreement in
connection with the Products.
10. Term:
Except as provided for in Section 11, this Agreement shall begin as of the
date first written above, and shall end on September 30, 1998, provided that it
shall automatically be renewed and continue in full force and effect thereafter
from year to year, unless and until notice is given by Licensor or Licensee of
its intention to terminate this Agreement at the expiration of the original term
or any renewal term, such notice to be given at least sixty (60) days prior to
any such expiration date.
11. Termination:
11.1 For Breach. In the event either party hereto fails, refuses or
neglects to perform any obligation on its part under this Agreement,
or if any warranty or representation made by either party hereto
proves to be false or misleading in any material respect, the other
party may then terminate this Agreement upon sixty (60) days' prior
written notice, provided, however, that in the event the defaulting
party shall rectify such default within the notice period, this
Agreement shall remain in full force and effect. Any cancellation or
termination of this Agreement shall be without prejudice to any
other right of action or remedy for the recovery of royalties or for
the breach of
135
any covenant herein contained.
11.2 Other:
(a) In the event of compulsory or voluntary liquidation of
Licensee, or the appointment of a receiver; or in case
Licensee should make an assignment for the benefit of
creditors; or should Licensee go out of business; then in any
such event this Agreement shall automatically terminate.
(b) This Agreement may be terminated at the option of Licensor if
controlling interest in Licensee shall pass to any party or
parties not holding controlling interest at the date of
execution of this Agreement, unless written notice of such
change in structure or ownership is given to Licensor prior to
such change and is agreed to in writing by Licensor.
Controlling interest is defined as the ownership of 51% of the
voting stock of a corporation.
12. Effects of Termination
Upon termination of this Agreement for any reason:
(a) Licensee shall not thereafter seek or accept any additional orders
to manufacture or sell any Products; and
(b) Licensee will have the right to complete and sell or use all
Products, the production of which commenced prior to termination and
to sell or use all Products in its possession on the date of
termination.
(c) Licensee will be obligated to pay Licensor the royalties related to
any sales described in section 12 (b).
13. Force Majeure:
If, by reason of acts of God, natural events, accidents, war, governmental
controls or any cause
136
beyond control of either party, performance of one or both parties is prevented,
then in such event performance by both parties hereunder shall be excused or
deferred, as appropriate, until the effects of such intervening cause have
ended. Either party has the right to terminate if a Force Majeure event remains
in effect for more than ninety (90) days.
14. Governing Law:
To the extent not prohibited by other applicable law, this Agreement is
made under the laws of Australia and shall be interpreted in accordance with
such laws.
15. Miscellaneous:
15.1 Entire Agreement; Amendments. This Agreement states the entire
agreement between the parties with respect to the Products and
Rights provided for herein. No amendment or modification of this
Agreement may be made except by an instrument in writing signed by
both parties.
15.2 Assignment. This Agreement may not be assigned in whole or in part
by either party without the written consent of the other, which such
consent should not be unreasonably withheld.
15.3 Notice. Any notice required or committed to be sent hereunder will
be deemed delivered five (5) days after the date mailed or otherwise
dispatched in the mail, postage prepaid, by registered, express or
certified mail, return receipt requested, or by a recognized private
express courier, to either party at the address listed above, or
such other address of which either party may so notify the other.
Notice will also be deemed given on the date notice is faxed to the
other party.
15.4 Legal Fees. In the event that any legal action, including
arbitration, is required in order to enforce or interpret any of the
provisions of this Agreement, the prevailing party in such action
137
shall recover all reasonable costs and expenses, including
attorneys' fees, incurred in connection therewith.
15.5 No Waiver; Headings. The failure of either party to enforce any
provision of this Agreement shall not be deemed a waiver of that or
any other provision of this Agreement. The sections and paragraphs
of this Agreement are for convenience only and will not be of any
effect in construing the meanings of such sections or paragraphs.
15.6 Severability. In the event any clause, section or obligation stated
herein is determined to be illegal, invalid or unenforceable in a
particular jurisdiction, then in that jurisdiction this Agreement
may be read and understood as not including such clause, section or
obligation, and the other clauses, sections and obligations will
remain in effect.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement
as of the date first written above.
Hosokawa Micron Corporation Hosokawa Micron Australia Pty. Ltd.
(Licensor) (Licensee)
By: /s/ Xxxxxx Xxxxxxxx By: /s/ X. Xxxxx
----------------------- --------------------------------
Name: Name: X. Xxxxx
Title: President Title: Managing Director
By: /s/ X. X. Xxxxx
--------------------------------
Name: X. X.Xxxxx
Title: Company Secretary
138
EXHIBITS A and B
to the
LICENSE AGREEMENT
By and Between
Hosokawa Micron Corporation
and
Hosokawa Micron Australia Pty. Ltd.
dated October 1, 1997
EXHIBIT A
Licensed Product(s):
Micron Denspack
Micron Vacu-Jet, CVX Series
Micron Dryers, MDV, MDH, MDF Series
Micron Agglomasters, AGM Series
Micron Innomizer, INM Series
Mechanofusion system, AM, AM-F Series
Micron Jet T, MJ-T Series
Micron Separators, MS, MS-N Series
Micron Victory Mill, VP Series
Micron Fine Victory Mill, FVP Series
Micron Feather Mill, FM-S, FM-F Series
EXHIBIT B
Proprietary Information and Rights:
All related Hosokawa Micron Corporation patents and trademarks registered
in the Territory with related know-how.
139
EXHIBITS C and D
to the
LICENSE AGREEMENT
By and Between
Hosokawa Micron Corporation
and
Hosokawa Micron Australia Pty. Ltd.
dated October 1, 1997
EXHIBIT C
Territory:
Exclusive Territory: Australia and New Zealand
Non-Exclusive Territory: None
EXHIBIT D
Royalty Rate(s):
4%: Micron Denspack
Micron Vacu-Jet, CVX Series
Micron Dryers, MDV, MDH, MDF Series
Micron Agglomasters, AGM Series
Micron Innomizer, INM Series
Mechanofusion system, AM, AM-F Series
Micron Jet T, MJ-T Series
2.5%: Micron Separators, MS, MS-N Series
Micron Victory Mill, VP Series
Micron Fine Victory Mill, FVP Series
Micron Feather Mill, FM-S, FM-F Series
140
TRADEMARK LICENSING AGREEMENT
THIS AGREEMENT is entered into the 1st day of October, 1997, by and
between Hosokawa Micron Corporation, a Japanese corporation, with offices
at 5-14, 2-chome, Xxxxxxxxxxx, Xxxx-xx Xxxxx 000, Xxxxx ("HMC") and
Hosokawa Micron International Inc., a Delaware corporation, with offices
at 000 Xxxxx Xxxxxx, Xxx Xxxx, Xxx Xxxx 00000 ("HMII").
W I T N E S S E T H:
WHEREAS, HMC owns the Hosokawa Micron tradename and logo (the "Trademarks");
WHEREAS, HMII desires to use the Trademarks within North, Central and South
America (the "Territory");
WHEREAS, HMC is willing to grant to HMII the right to use the Trademarks subject
to the terms and conditions of this Agreement, and HMII is willing to
accept such rights and obligations;
NOW, THEREFORE, in consideration of the mutual agreements, the
parties hereby agree as follows.
ARTICLE I
GRANT OF RIGHT TO USE TRADEMARKS
Section 1.1. Grant by Licensor. HMC grants to HMII the exclusive
right to use the Trademarks, as listed in Exhibit A in the Territory.
141
Section 1.2. Sublicenses and Transfers. Except to a 50% or more owned
affiliate, HMII shall not assign, sublicense, make available, or otherwise
transfer any right to use or otherwise enjoy the Trademarks without the written
consent of HMC.
ARTICLE II
ROYALTY PAYMENT
Section 2.1. Compensation. HMII shall pay to HMC a royalty equal to
$50,000 per year plus governmental costs to maintain Trademarks in the
Territory.
Section 2.2. Payment and Accounting. Royalties due to HMC shall be due
and payable by HMII semi-annually within thirty (30) days after March 31st and
September 30th each year. HMII shall withhold the necessary withholding tax and
forward to HMC the tax documentation supporting such royalty payment and related
withholding tax.
Section 2.3. Currency. All royalties due under this Agreement shall be
payable in Japanese yen.
ARTICLE III
WARRANTIES AND REPRESENTATIONS
Section 3.1. HMC warrants that:
142
a. It owns the exclusive right, title, and interest in the Trademark;
b. The Trademark is valid and enforceable;
c. Use of the Trademark does not infringe any rights of Third Parties;
and
d. It has the right and authority to enter into this Agreement.
Section 3.2. HMII warrants that it has the right and authority to enter
into this Agreement.
ARTICLE IV
TRADEMARK OWNERSHIP
HMII acknowledges HMC's exclusive right, title, and interest in the
Trademarks. HMII shall not at any time do or cause to be done, or fail to do or
cause to be done, any act or thing, directly or indirectly, contesting or in any
way impairing HMC's right, title, or interest in the Trademark. Every use of the
Trademark by HMII shall inure to the benefit of HMC.
ARTICLE V
TERM AND TERMINATION
Section 5.1. Term. This Agreement shall remain in effect for a period of
three (3) years from October 1, 1997, provided that it shall automatically be
renewed and continue in full force and effect thereafter from year to year,
unless and until notice is given by HMC or HMII of its intention to terminate
this Agreement at the expiration of the original term or any renewal term, such
notice
to be given at least sixty (60) days prior to any such expiration date.
Section 5.2. Termination. In the event either party hereto fails, refuses
or neglects to perform any obligation on its part under this Agreement, or if
any warranty or representation made by either party hereto proves to be false or
misleading in any material respect, the other party may then terminate this
Agreement upon sixty (60) days prior written notice, provided, however, that in
the event the defaulting party shall rectify such default within the notice
period, this Agreement shall remain in full force and effect. Any cancellation
or termination of this Agreement shall be without prejudice to any other right
of action or remedy for the recovery of royalties or for the breach of any
covenant herein contained.
a. In the event of compulsory or voluntary liquidation of HMII, or the
appointment of a receiver; or in case HMII should make an assignment for
the benefit of creditors; or should HMII go out of business; then in any
such event this Agreement shall automatically terminate.
Section 5.3. Effects of Termination. On termination of this Agreement for
any reason:
a. HMC shall have the right to retain any sums already paid by HMII under
this Agreement, and HMII shall pay all sums accrued that are then due
under this Agreement; and
b. HMII shall discontinue all use of any Trademark and shall have no further
right, title, or interest in any Trademark.
143
c. HMII must remove Trademark from everything in its possession on the date
of termination.
ARTICLE VI
MISCELLANEOUS
Section 6.1. Notices. Any notice required will be deemed delivered five
(5) days after the date mailed or otherwise dispatched in the mail, postage
prepaid, by registered, express or certified mail, return receipt requested, or
by a recognized private express courier, to either party at the address listed
above, or such other address of which either party may so notify the other.
Notice will also be deemed given on the date notice is faxed to the other party.
Section 6.2. Force Majeure. If, by reason of acts of God, natural events,
accidents, war, government controls or any cause beyond control of either party,
performance of one or both parties is prevented, then in such event performance
by both parties hereunder shall be excused or deferred, as appropriate, until
the effects of such intervening cause have ended. Either party has the right to
terminate if a Force Majeure event remains in effect for more than ninety (90)
days.
Section 6.3. Amendment. No change, modification, or amendment of this
Agreement shall be valid or binding on the parties unless such change or
modification shall be in writing signed by the party or parties against whom the
same is sought to be enforced.
Section 6.4. Remedies Cumulative. The remedies of the parties under this
Agreement are cumulative and shall not exclude any other remedies to which the
party may be lawfully entitled.
144
Section 6.5. Further Assurances. Each party hereby covenants and agrees
that it shall execute and deliver such deeds and other documents as may be
required to implement any of the provisions of this Agreement.
Section 6.6. No Waiver. The failure of any party to insist on strict
performance of a covenant hereunder or of any obligation hereunder shall not be
a waiver of such party's right to demand strict compliance therewith in the
future, nor shall the same be construed as a novation of this Agreement.
Section 6.7. Integration. This Agreement constitutes the full and
complete agreement of the parties with regard to the subject matter of this
Agreement.
Section 6.8. Captions. Titles or captions of articles and paragraphs
contained in this Agreement are inserted only as a matter of convenience and for
reference, and in no way define, limit, extend, or describe the scope of this
Agreement or the intent of any provision hereof.
Section 6.9. Counterparts. This Agreement may be executed in multiple
copies, each of which shall for all purposes constitute an Agreement, binding on
the parties, and each partner hereby covenants and agrees to execute all
duplicates or replacement counterparts of this Agreement as may be required.
Section 6.10. Applicable Law. This Agreement shall be governed by and
construed in
145
accordance with the laws of the state of New York, USA.
Section 6.11. Severability. In the event any provision, clause, sentence,
phrase, or word hereof, or the application thereof in any circumstances, is held
to be invalid or unenforceable, such invalidity or unenforceability shall not
affect the validity or enforceability of the remainder hereof, or of the
application of any such provision, sentence, clause, phrase, or word in any
other circumstances.
Section 6.12. Costs and Expenses. Unless otherwise provided in this
Agreement, each party shall bear all fees and expenses incurred in performing
its obligations under this Agreement.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
executed on the date first written above by their duly authorized officers.
Hosokawa Micron Corporation Hosokawa Micron International Inc.
(Licensor) ("HMII") (Licensee) ("HMII")
By: /s/ Xxxxxx Xxxxxxxx By: /s/ Xxxxxxx X. Xxxxxxx
------------------------ -------------------------------
Name: Name: Xxxxxxx X. Xxxxxxx
Title: President Title: E.V.P.
EXHIBIT A
TRADEMARKS
HOSOKAWA MICRON U.S. Patent and Trademark Office
Reg. No. 1,303,472 &
Reg. No. 1,312,202
146