LICENSE AGREEMENT
This
License Agreement (this “Agreement”),
dated
as of July 10, 2008 (the “Effective Date”), is entered into by and between 4C
Controls Inc., a corporation organized under the laws of the State of Nevada
and
having its principal place of business at Rockefeller Center, 1230 Avenue of
the
Americas, 0xx Xxxxx, Xxx Xxxx, XX 00000 (“Licensee”) and Xxxxxxxx Xxxxxxxx, an
individual with his address at Xxx Xxxxxxx x. 00, 00000 Xxxxxxx (XX), Xxxxx
(“Licensor”) (Licensee and Licensor each a “Party”, together the
“Parties”).
WHEREAS,
Licensor owns or controls sole dispositive power over all rights with respect
to
the Licensor Technology and Licensor Know-How as such terms are defined
herein;
WHEREAS,
Licensee desires to use Licensor Technology and Licensor Know-How for the
benefit of Licensee and desires to obtain a license from Licensor for such
use
and to file and obtain any and all additional patents which are derivative
of
Licensor Technology and Licensor Know-How;
NOW,
THEREFORE, in consideration of the foregoing premises and the mutual covenants
herein contained, the parties hereby agree as follows:
1.
Definitions
1.1
Affiliate: The term “Affiliate” means, with respect to any person, entity, or
any other person or entity that it directly or indirectly controls, is under
common control with, or is controlled by that person or entity. For purposes
of
this definition, “control” (including with correlative meaning, the terms
“controlled by” and under “common control with”), as used with respect to any
person, or entity, means the possession, directly or indirectly, of the power
to
direct or to cause the direction of the management and policies of such person
or entity, whether through the ownership of voting securities, by contract,
or
otherwise.
1.2
Effective Date: The term “Effective Date” means the date set forth in the
preamble to this Agreement.
1.3
First
Commercial Sale: The term “First Commercial Sale” means, after all necessary
marketing approvals have been obtained in a relevant country, the initial
transfer of a “Product”, as such term is defined herein, in such country to a
third party customer in exchange for cash or some cash equivalent to which
a
value can be assigned for the purpose of determining “Net Sales”, as such term
is defined herein.
1.4
Improvements: The term “Improvements” means any and all inventions, discoveries,
processes, works of authorship, mask works, designations, designs, know-how,
ideas, copyrights, trade secret rights, mask work rights, trademark rights,
methods, compositions, formulae, procedures, protocols, software, source code,
algorithms, developments and improvements, techniques, results of
experimentation and testing, information and data of any and all nature or
kind,
in any form or media, which have been conceived by Licensor or employees or
others acting on behalf of Licensor, either alone or jointly with others, as
of
the Effective Date of the Agreement, and which constitute modifications,
enhancements or improvements
to the Licensor Technology or Licensor Know-How or are conceived, developed
or
reduced to practice using the Licensor Technology or Licensor
Know-How.
1.5
Net
Sales: The term “Net Sales” means gross sales of the Products invoiced by
Licensee or any of its Affiliates to a third party, and accepted by the third
party, less shipping costs, warranty reserves, returns, allowances, taxes,
provided, however, (i) the “Net Sales” shall be deemed to occur on the later of
(x) the date of legal recognition by the Licensee of revenues derived from
such
sale as determined under Generally Accepted Accounting Principals applicable
to
United States public companies registered with the U.S. Securities &
Exchange Commission or (y) the date of actual receipt of proceeds from such
sale
as received by the Licensee. Any and all amounts of Product revenues which
are
deposits, escrows, warranty reserves, third-party custody funds, or security
interests, and all similar types of payments to Licensee, shall not be deemed
to
be “Net Sales” unless and until any and all such amounts are free and clear of
all obligations, claims or liabilities to customers or third parties on the
part
of Licensee. Net Sales shall be determined on a pro-forma basis by the chief
financial officer of Licensee and subject to audit by the Licensee’s independent
certified public accountants.
1.6
Person: The term “Person” means an individual, any incorporated entity, limited
liability company, partnership, trust, unincorporated organization or
association, government or any agency, instrumentality or political subdivision
of a government, or any other entity or organization.
1.7
Product: The term “Product” means any composition of matter, material, device,
apparatus, or system developed or commercialized by Licensee with respect to
the
Licensor Technology, Licensor Patents or Licensor Know-How.
1.8
Licensor Know-How: The term “Licensor Know-How” means all inventions,
discoveries, processes, methods, compositions, formulae, procedures, works
of
authorship, mask works, designations, designs, know-how, ideas, copyrights,
trade secret rights, mask work rights, trademark rights, protocols, software,
source code, algorithms, developments and Improvements, techniques, results
of
experimentation and testing, information and data of any and all nature or
kind,
in any form or media, which are known or not generally known, (i) embodying
or
produced through use of Licensor Technology and associated know-how, or (ii)
embodying or produced through inventions conceived, discovered or reduced to
practice, whether alone or with others, by Licensor employees or with facilities
or equipment utilized by Licensor, (iii) otherwise regarding the Licensor
Technology, in which Licensor has an ownership or other interest during the
Term
of this Agreement, (iv) further inventions (whether or not patentable),
discoveries, processes, methods, compositions, formulae, processes, works of
authorship, mask works, designations, designs, formulated and unformulated
know-how, ideas, copyrights, trade secret rights, mask work rights, trademark
rights, procedures, protocols, software developments, source code, algorithms,
techniques, results of experimentation and testing, information and data, works
of authorship, mask works, designations, designs, ancillary know-how, ideas
and
information of any nature or kind, in any and all media, made or conceived
or
reduced to practice, in whole or in part, by Licensor or by Licensor employee
or
Licensor facilities which are derivative from any and all of the foregoing
clauses (i) through (iii) hereinabove; and (v) any Improvements with respect
to
any and all of the foregoing clauses (i) through (iv) hereinabove.
1.9
Licensor Patents: The term “Licensor Patents” means (i) all patent applications
hereafter filed, having legal force in any country within the Territory,
embodying or produced through inventions conceived, discovered or reduced to
practice, whether alone or with others, by Licensor, or any of his employees,
or
any of Licensor’s facilities or equipment, or any facilities or equipment
Licensor controls, regarding or related to the Licensor Technology or Licensor
Know-How, which claim an invention in which Licensor has an ownership or other
interest during the Term of this Agreement, and (ii) all patents that in the
future issue from the applications described in Annex A hereto, and (iii) all
divisions, continuations, continuations-in-part which are directed to subject
matter specifically described in the applications described in Annex A hereto,
reissues, renewals, extensions or additions to any such applications, and any
Improvements thereto upon which a patent application has been filed or a patent
has issued.
2
1.10
Licensor Technology: The term “Licensor Technology” means any and all material,
notes, records, Improvements, developments, and trade secrets conceived, made
by
or discovered by Licensor in any capacity related, directly or indirectly,
to
the applications described in Annex A hereto. For purposes of clarity, the
Licensor Technology excludes any and all intellectual property previously
assigned, sold or transferred to a third party prior to the date of this
Agreement as evidenced by license agreements made available to the Company
for
examination thereof.
1.11
Territory: The term “Territory” means a territory consisting of the entire
world.
1.12
Royalty Year: The “Royalty Year” shall be a twelve-month calendar year ending on
December 31, except that the first Royalty Year, if the First Commercial Sale
of
Product should occur during the year, may be less than twelve
months.
2.
Representations and Warranties
Each
Party hereby represents and warrants to the other Party as follows:
2.1
Existence and Power. The Party hereto has the power and authority and the legal
right to own and operate its property and assets, and to carry on its business
as it is now being conducted. If the Party is a corporate Person, such Party
is
duly organized, validly existing and in good standing under the laws of the
jurisdiction in which it is incorporated.
2.2
Authorization and Enforcement of Obligations. Such Party (a) has the power
and
authority and the legal right to enter into this Agreement and to perform its
obligations hereunder and (b) has taken all necessary action on its part to
authorize the execution and delivery of this Agreement and the performance
of
its obligations hereunder. This Agreement has been duly executed and delivered
on behalf of such Party and constitutes a legal, valid and binding obligation
of
such Party, enforceable against such Party in accordance with its
terms.
2.3
No
Consents. To the knowledge of such Party, all necessary consents, approvals
and
authorizations of all governmental authorities and other persons required to
be
obtained by such Party in connection with this Agreement have been
obtained.
2.4
No
Conflict. The execution and delivery of this Agreement and the performance
of
such Party's obligations hereunder do not conflict with or violate any
requirement of applicable laws or regulations, and do not conflict with, or
constitute a default under, any contractual obligation of such
Party.
2.5
Licensor Representations and Warranties. Licensor furthermore hereby represents
and warrants to Licensee as follows:
(a)
Right, Title and Interest in the Licensor Technology and Licensor Know-How.
Licensor represents and warrants that (i) Licensor is the sole owner of, or
has
exclusive and irrevocable complete legal and equitable power of disposition
over, the entire right, title, and interest in the Licensor Technology and
Licensor Know-How, (ii) Licensor has the sole right to grant licenses
thereunder, and (iii) the Licensor has not granted licenses thereunder to any
other Person that would restrict rights granted to Licensee.
3
(b)
Third
Party Claims. No claim has been made by, and to the knowledge of Licensor,
no
claim is available to, any third party that any activity permitted by the
licenses granted to Licensee pursuant to this Agreement constitutes an
infringement of any right of any such third party anywhere in the world,
including, without limitation, any right under any copyright, trademark, trade
secret, patent, or other proprietary right of any such third party. For the
purposes of this section 2.5, third party shall mean any person other than
Licensor and Licensee and Licensee’s Affiliates.
(c)
Patent Documents. Licensor has provided Licensee with copies of all documents
relevant to the validity or enforceability of the Licensor Patents, including,
without limitation, copies of all patent searches and legal opinion letters
relating to any patents included within the Licensor Patents and copies of
all
documents relating to any potential infringement of the Licensor
Patents.
3.
License Grant
3.1
License Grant to Licensee. Licensor hereby grants to Licensee an exclusive
and
irrevocable worldwide license, including, without limitation, the right to
grant
any and all sublicenses at any time for any person on such terms as determined
at the sole discretion of Licensee, under the Licensor Technology, Licensor
Patents and Licensor Know-How, and all Improvements to Licensor Technology,
Licensor Patents and Licensor Know-How, to develop, make, have made, use, sell,
license, market and otherwise exploit Products in the Territory. For purposes
of
clarity, any and all revenues derived by the Licensor from sublicenses shall
be
within the scope of the Net Sales subject to payment of Royalties as provided
herein.
3.2
Technical Assistance. (a) Upon execution of this Agreement, Licensor shall
disclose and make available to Licensee all any and all further information
available to Licensor not previously disclosed to Licensee regarding the use
of
the Licensor Technology, Licensor Patents and Licensor Know-How.
(b)
During the Term of the Agreement, upon reasonable notice, Licensor without
additional consideration (i) shall promptly provide any and all technical
assistance regarding the Licensor Technology, Licensor Patents and Licensor
Know-How as Licensee reasonably requests, (ii) shall promptly train and advise
Licensee technical personnel as is deemed reasonably necessary by Licensee
to
provide the foregoing technical assistance, (iii) shall promptly disclose and
make available to Licensee all information regarding the Licensor Technology,
Licensor Patents and Licensor Know-How and (iv) shall promptly take any and
all
reasonable measures to safeguard and protect the Licensor Technology, Licensor
Patents and Licensor Know-How, including, without limitation, to establish
and
maintain duplicate secure offsite copies of all such Licensor Technology,
Licensor Patents and Licensor Know-How which may be accessed by Licensee
personnel under password and/or vault protected facilities.
3.3
Copies of Sublicenses. Licensee shall upon reasonable request furnish to
Licensor a copy of each sublicense agreement and each amendment thereto,
provided, however, Licensee may redact such information as Licensee deems
proprietary and confidential as determined at the sole and reasonable discretion
of Licensee. Each such sublicense agreement or amendment shall constitute
Confidential Information of Licensee.
3.4
Obligations of Sublicensees. Licensee agrees that any sublicenses granted by
it
shall contain provisions comparable to the provisions of this Agreement with
respect to confidentiality and all other material terms and conditions of this
Agreement which are reasonably necessary to protect the interests of Licensor
under this Agreement.
4
3.5
Limitation on Rights. The license granted hereunder shall not be construed
to
confer any rights upon Licensee by implication, estoppel or otherwise as to
any
technology not specifically licensed hereunder.
3.6
Patent and Registration Rights. Licensor expressly grants the right to Licensee
to file patent applications with respect to any and all Licensor Know-How,
Licensor Technology, and any and all future applications for patent and future
patents (all such Licensor Know-How, Licensor Technology, and any and all
patents which are derivative of Licensor Patents, collectively, the
“Derivative
Patents”).
Licensor hereby undertakes to assign to Licensee any and all such Derivative
Patents which are under prosecution, application or issued in the name of
Licensor as inventor, which shall become the sole property of Licensee for
the
duration of such patent. Licensor grants to Licensee the right to register
any
and all copyrights, trademarks and service marks which Licensee deems reasonable
and necessary for purposes of commercialization of any and all Licensor
Know-How, Licensor Technology, Improvements and Derivative Patents thereof.
For
purposes of the foregoing, Licensor hereby grants a limited power of attorney
to
Licensee for the purpose of taking any and all reasonable actions necessary
to
cause the prosecution of any and all such Derivative Patents and register any
and all copyrights, trademarks and service marks at Licensee’s sole discretion
and at Licensee’s sole cost and expense, in any and all jurisdictions worldwide
and to cause the assignment to Licensee of any and all rights pertaining to
derivative and ancillary Licensor Know-How and Licensor Technology obtained
or
further derived in connection with such Derivative Patents. The power of
attorney is expressly coupled with an interest duly acknowledged hereby and
shall survive for the duration of this Agreement. For purposes of clarity,
any
and all Derivative Patent applications: (i) shall mention Licensor as the
inventor, (ii) shall ascribe ownership rights to the Licensee, and (iii) shall
ascribe economic rights to the Licensee.
3.7
Scope
of Exclusive Rights. The rights granted to Licensee hereunder are exclusive
and
Licensee shall be the sole licensee of such rights during the Term of this
Agreement. So long as Licensee’s rights remain effective under this Agreement,
Licensor undertakes and agrees that it shall not use any part of the rights
licensed to Licensee under this Agreement for commercial use in the licensed
Territory for any commercial purpose outside of the scope of this Agreement
or
for the purpose of offering any service directed at any third party located
in
the licensed Territory, and in each case, shall not grant any license or
sublicense to any third party for any reason whatsoever.
4.
Royalty
4.1
Amount of Royalty: Licensee shall pay to Licensor, on a country-by-country,
Product-by-Product basis, a royalty of five
per mil (0.5%) of Net Sales
of
Product per Royalty Year (the “Royalties”).
4.2
Payment: Licensee shall submit a payment to Licensor annually that is equal
to
the royalties due for that Royalty Year, less applicable withholding taxes
and
credits, except that Licensee shall reserve and hold back an amount equal to
ten
percent (10%) of the Royalties payment each Royalty Year (the “Royalty
Reserve”)
to
account for warranties,
returns,
allowances, and write-offs of customer accounts. The Royalty Reserve, as
adjusted for warranty costs, returns, allowances, and write-offs of customer
accounts, will be paid with the following Royalty Year's Royalties payments.
The
Royalties payments to Licensor shall be made within twenty (20) days after
completion of the audit of the consolidated financial statements of Licensee
and
its subsidiaries with respect to the end of each Royalty Year in which Net
Sales
occurred (the “Payment
Due Date”).
With
each Royalties payment, Licensee shall submit to Licensor an itemized statement
setting forth the amount of Net Sales during the Royalty Year and the royalties
accrued.
5
4.3
Minimum Royalty. If, for any reason, commencing in Royalty Year two of this
Agreement, the total amount of Royalties paid by Licensee to Licensor during
any
Term of this Agreement will not be equal to or greater than Euro 250,000.00
(two
hundred fifty thousand Euros), Licensee shall pay to Licensor the difference
between the total amount of Royalties already paid with respect to such year
during the Term and Euro 250,000.00 (two hundred and fifty thousand Euros)
within twenty (20) days after the Payment Due Date. For purposes of clarity,
the
Minimum Royalty shall not apply to the first Royalty Year of this
Agreement.
4.4
Offset Credits: In the event any Licensee sales attributable to Net Sales within
one year after the date of determination for such Net Sales are, for any reason:
(i) reversed and the proceeds attributable to such Net Sales are returned,
reimbursed or credited to a customer of Licensee, or to a third party pursuant
to court order or pursuant to written settlement agreement between Licensee
and
the customer, or (ii) in the event any accounts receivable for Net Sales become
uncollectible or are written off with respect to which any Royalties were
previously paid to Licensor, then any and all Royalties attributable to such
Net
Sales which have been previously paid to Licensor shall be subject to offset
in
respect of future Royalties payments due from Licensee to Licensor
(“Offset
Credits”).
In
the event the Offset Credits exceed the Royalty Reserve, Licensor shall within
ninety (90) days pay Licensee the amount of such Offset Credits.
4.5
Records: The books and records of Licensee which relate to the royalties under
this Agreement shall be open for inspection by an independent accounting firm
appointed by Licensor (subject to the consent of Licensee, such consent not
to
be unreasonably withheld or delayed) for the sole purpose of verifying Royalties
payments during regular business hours at such place or places where such books
and records are customarily kept and upon suitable written notice, but not
more
frequently than once each year. The relevant records shall be maintained by
Licensee for a period of three (3) years after the expiration or termination
of
this Agreement. The cost of any such inspection shall be paid by Licensor.
Any
books and/or records received from Licensee during the course of any such
inspection shall be kept confidential.
5.
Term
and Termination
5.1
Term:
The Term of this Agreement shall begin on the Effective Date, and unless sooner
terminated by the parties as herein provided, shall continue in full force
and
effect for three (3) years (the “Initial
Term”).
Thereafter, the Agreement shall automatically renew for renewal terms of three
years (each, a “Renewal
Term”
and
the
Initial Term and Renewal Term as respectively in effect, a “Term”)
each
unless Licensee has provided written notice to Licensor of at least ninety
(90)
days before the start of such Renewal Term.
5.2
Termination:
(a)
By
Mutual Agreement: the Parties may terminate this Agreement at any time by mutual
written agreement.
(b)
For
Breach: if either Party breaches this Agreement, the non-breaching Party, at
its
option, may terminate this Agreement, provided that the non-breaching Party
has
provided written notice to the breaching Party of the breach and the
non-breaching Party's intention to terminate this Agreement, and the breaching
Party has failed to cure its breach within ninety (90) days following the date
such notice was received by the breaching Party.
6
License
Agreement
(c)
If
either Party shall breach its obligations under this Agreement, such breaching
Party shall be responsible to the other Party for all direct losses or damages
caused by such breach, including without limitation lost profits suffered by
the
non-breaching Party after the lapse of the cure period. The Parties expressly
agree that, in the event a Party violates, defaults or fails to perform any
of
its respective covenants, obligations, agreements, representations or warranties
contained herein, in addition to Licensor’s right to terminate under Section
5(b), full legal remedy shall remain available to the non-defaulting Party
in
such violation, default or failure, including the right to recover monetary
damages or to secure such other relief appropriate to the circumstances,
provided that no immaterial violation, default or failure to perform shall
result in relief that unreasonably disrupts the operation of the business of
Licensee or its Affiliates.
(d)
Notwithstanding anything to the contrary herein, Licensee, at its sole
discretion, may terminate this Agreement on the first anniversary of the date
hereof if Licensee makes a determination that the rights licensed hereunder
do
not have sufficient commercial viability (the “Early Termination
Determination”). Notice of any such termination shall be delivered in writing by
Licensee to Licensor no later than ten (10) days after the first anniversary
of
this Agreement. In the event of such Early Termination Determination, all rights
licensed to Licensee shall revert to Licensor and this Agreement shall terminate
without recourse by either party.
6.
Commercialization
6.1
Reasonable Efforts: Licensee by itself, or through its Affiliates or licensees,
throughout the Term, shall use commercially reasonable efforts to proceed with
the development and commercialization of Product, consistent with reasonable
business practices and judgments, determined in each case at the reasonable
and
sole discretion of Licensee.
7.
Confidentiality
(a)
“Confidential Information” means any and all proprietary information, technical
data, trade secrets or know-how provided by Licensee to Licensor, including,
but
not limited to Licensor Technology, Licensor Patents or Licensor Know-How,
as
well as any information, data, trade secrets or know-how developed by Licensor
regarding the Product whether provided in written, oral, graphic, visual, video,
computer or other form, including, but not limited to, research and product
plans, products, services, customer lists and customers (including, but not
limited to, customers of Licensee on whom Licensor called or with whom Licensor
became acquainted), markets, developments, inventions, processes, formulas,
technology, marketing, finances or other business information.
(b)
Licensor shall not use Confidential Information for any purpose whatsoever
other
than on behalf of Licensee, or disclose Confidential Information to any third
party. Licensor agrees that Confidential Information shall remain the sole
property of Licensee. Licensor further agrees to take all reasonable precautions
to prevent any unauthorized disclosure of Confidential Information.
Notwithstanding the above, Licensor's obligation under this Section 7.1 (b)
relating to Confidential Information shall not apply to
information:
|
(i)
|
which
is already known to Licensor (other than under an obligation of
confidentiality), at the time of disclosure by Licensee to the extent
that
Licensor has documentary evidence to that
effect;
|
|
(ii)
|
which
is generally available to the public or otherwise part of the public
domain at the time of its disclosure to
Licensor;
|
|
(iii)
|
which
becomes generally available to the public or otherwise part of the
public
domain after its disclosure or development, as the case may be, and
other
than through any act or omission of Licensor in breach of Licensor's
confidentiality obligations under this
Agreement;
|
7
License
Agreement
|
(iv)
|
which
is subsequently lawfully disclosed to Licensor by a third party who
had no
obligation to Licensee not to disclose such information to
others;
|
|
(v)
|
which
is approved for release by Licensee in
writing.
|
(c)
Licensor shall not improperly use or disclose any proprietary information or
trade secrets of any former or current employer or other person or entity with
which Licensor has an agreement or duty to keep in confidence information
acquired by Licensor in confidence and that Licensor shall not bring onto the
premises of Licensee any unpublished document or proprietary information
belonging to such employer, person or entity unless consented to in writing
by
such employer, person or entity.
(d)
Licensor recognizes that Licensee has received and in the future will receive
from third parties their confidential or proprietary information subject to
a
duty on Licensee's part to maintain the confidentiality of such information
and
to use it only for certain limited purposes. Licensor agrees that Licensor
owes
Licensee and such third parties a duty to hold all such confidential or
proprietary information in the strictest confidence and not to disclose it
to
any person, firm or corporation or to use it except as necessary in carrying
out
the services for Licensee consistent with Licensee's agreement with such third
party or to the extent necessary to comply with applicable laws, rules and
regulatory compliance incumbent upon Licensee.
(e)
Upon
the termination of the Agreement, or upon Licensee's earlier request, Licensor
shall deliver to Licensee all of Licensee's property relating to, and all
tangible embodiments of, Confidential Information in Licensor's possession
or
control.
(f)
Export Control. Both parties recognize that an export license must be obtained
before certain controlled materials and information can be exported and the
parties will make all reasonable efforts to obtain such license if required.
Licensee will not transfer any technical information that it receives from
Licensor or products made using such information to any country prohibited
from
obtaining such data by the U.S. Department of Commerce Export Administration
Regulations without first obtaining a validated export license, and Licensee
will otherwise comply with all export control laws and regulations of the United
States. The
parties will take reasonable steps to prevent any and all such U.S. controlled
materials and information from being imported into the United States and take
reasonable steps to prevent any U.S. Persons from coming into contact with
technical details pertaining to any U.S. controlled materials and information.
The
parties agree to cooperate with each other, including, without limitation,
providing required documentation, in order to obtain any necessary export
licenses or exemptions therefrom. Each Party warrants that it will comply with
all such applicable laws and regulations governing use, exportation and
re-exportation in effect from time to time.
8.
Enforcement.
(a)
Notice of Infringement. Licensee agrees to promptly notify Licensor in writing
of any infringement or misappropriation of any of the Licensee licensed
intellectual property hereunder to which Licensee or any sublicensee
becomes
aware and will provide Licensor with any and all evidence in its possession,
if
any, of such infringement or misappropriation. Licensor agrees to promptly
notify Licensee in writing of any infringement or misappropriation of any of
the
Licensee Licensed Intellectual Property to which Licensor becomes aware and
will
provide Licensee with any and all evidence in its possession, if any, of such
infringement or misappropriation.
8
License
Agreement
(b)
Enforcement Action. In the event of any infringement or misappropriation of
the
intellectual property licensed to Licensee hereunder, Licensor will have the
right to determine an appropriate course of action to enforce such Licensee
licensed intellectual property or otherwise xxxxx the infringement or
misappropriation thereof, to take (or refrain from taking) appropriate action
to
enforce such Licensee licensed intellectual property, and, in the event that
Licensor elects to take action, to control any litigation or other enforcement
action, to enter into or permit the settlement of any such litigation or any
other enforcement action with respect to such Licensee licensed intellectual
property, and to recover and retain any monetary damages, settlement, royalties
or other recovery arising from such litigation or other enforcement action.
Licensee will use reasonable efforts to cooperate with Licensor at Licensor’s
expense, in any litigation or enforcement action hereunder and Licensee will
join as a party to any such litigation or other enforcement action as required
by law at Licensor’s expense. Licensor shall indemnify and hold harmless
Licensee against any and all losses arising out of or in relation to (i) any
such cooperation given by Licensee to Licensor and (ii) Licensee joining as
a
party to such litigation or other enforcement action, which losses may include,
without limitation, payment by Licensee of any third party legal costs as a
result of Licensee joining as a party to such litigation or enforcement action.
In the event that Licensor takes no action against such infringer or
unauthorised user, within ninety days of the date on which it first learns
of
such misappropriation or infringement, then subject to Licensor’s consent (which
shall not be unreasonably withheld), Licensee may take such action in the name
of Licensor or in its own name, as it shall see fit and Licensor shall
co-operate fully, at Licensee’s expense, with Licensee in respect thereof.
Licensee shall be entitled to retain any monetary damages, settlement, royalties
or other recovery, if any, recovered or obtained in any proceedings or action
taken by Licensee at its own expense.
9.
Miscellaneous
9.1
Notice: Any notices required or permitted to be given under this Agreement
shall
be deemed given if communicated in the English language and delivered to the
Party to be notified at its address shown below or at such other address as
may
be furnished from time to time by the Party to be notified to the notifying
Party in writing.
If
to
Licensor, addressed to:
Xxxxxxxx
Xxxxxxxx
Xxx
Xxxxxxx x. 00
00000
Xxxxxxx (XX)
Xxxxx
If
to
Licensee, addressed to:
Rockefeller
Center
0000
Xxxxxx xx xxx Xxxxxxxx - 0xx
Xxxxx
Xxx
Xxxx,
XX 00000
Facsimile:
x0 (000) 000-0000
Attention:
Corporate Secretary
with
a
copy to : Wuersch & Xxxxxx LLP, 000 Xxxx Xxxxxx, 00xx
Xxxxx,
Xxx Xxxx, XX 00000.
9.2
Entire Agreement: This Agreement and the annexes hereto set forth the entire
agreement and understanding between the parties regarding its subject matter,
and supercedes and replaces any and all prior arrangements and understandings
relating to such matters. None of the terms of this Agreement may be modified
except as set forth in writing and signed by Licensor and
Licensee.
9
License
Agreement
9.3
Amendments and Waiver: No amendment, modification or alteration of the terms
or
provisions of this Agreement will be binding unless the same is in writing
and
duly executed by each of the Parties hereto, except that any of the terms or
provisions of this Agreement may be waived in writing at any time by the Party
which is entitled to the benefits of such waived terms or provisions. No waiver
of any of the provisions of this Agreement will be deemed to, or will,
constitute a waiver of any other provision hereof (whether or not similar).
No
delay on the part of any Party to this Agreement in exercising any right, power
or privilege hereunder will operate as a waiver thereof.
9.4
No
Agency, Partnership, or Joint Venture: Nothing in this Agreement shall be deemed
to make the parties partners, joint venturers, or agents of one another. No
Party to this Agreement shall have the power to bind or obligate the other.
Any
engagement of Licensor by Licensee or its Affiliates in any and all capacities
shall be separate and apart from this Agreement and shall have no force or
effect with respect to the agreement of the Parties under this Agreement.
9.5
Governing Law and Dispute Resolution: This Agreement shall be governed by and
construed in accordance with the laws of the State of New York, without giving
effect to any choice of law or conflict of law provision or rule (whether New
York or any other jurisdiction) that would cause the application of the laws
of
any jurisdiction other than New York. Any dispute, controversy or claim arising
out of or relating to this contract, including the formation, interpretation,
breach or termination thereof, including whether the claims asserted are
arbitrable, shall be referred to and finally determined by arbitration
administered by the American Arbitration Association in accordance with its
International Arbitration Rules. The tribunal shall consist of a three (3)
arbitrators. The place of arbitration shall be New York, New York. The
arbitration shall be conducted in English. The arbitrators may grant any remedy
or relief, including but not limited to specific performance. The prevailing
Party in any such arbitration shall be entitled to recover its share of the
arbitration costs, including but not limited to its attorneys’ fees and any
other costs incurred in its representation, in proportion to such Party’s award.
Judgment upon the award rendered by the arbitrators may be entered by any court
having jurisdiction thereof. Notwithstanding the foregoing arbitration
provisions above, each Party shall have the right to institute judicial
proceedings against the other Party or anyone acting by, through or under such
other Party in order to seek injunctive or other equitable relief in order
to
restrain an actual or threatened breach of this Agreement. The prevailing Party
in any such legal action for injunctive or equitable relief shall be entitled,
in addition to any other rights and remedies it may have, to reimbursement
for
its expenses, including court costs and reasonable attorneys' fees. With respect
to any such legal action for injunctive or equitable relief, the courts located
in the Borough of Manhattan in the City and State of New York shall have
exclusive jurisdiction. The service of process or of any other papers with
respect to such proceedings upon either Party by certified or registered mail
in
accordance with the provisions for notice herein shall for all purposes
constitute good, proper and effective in personam service.
9.6
Successors And Assigns : The terms and conditions of this Agreement will inure
to the benefit of, and be binding upon, the respective successors and assigns
of
the Parties hereto. Licensee may assign or sublicense any and all rights
hereunder at any time at its sole discretion subject to the terms and conditions
herein.
9.7
Third
Party Beneficiaries. Nothing in this Agreement, express or implied, is intended
to confer any rights or remedies hereunder on any Person other than Licensee
or
Licensor and their respective Affiliates or any of their respective successors
and permitted assigns.
10
License
Agreement
9.8
Severability: If any provision of this Agreement or the application of any
such
provision to any Person, Party or circumstance will be held invalid, illegal
or
unenforceable in any respect by a court of competent jurisdiction, such
invalidity, illegality or unenforceability will not affect any other provision
of this Agreement and this Agreement will remain in full force and effect and
will be effectuated as if such illegal, invalid or unenforceable provision
is
not part thereof.
9.9
Annexes: The Parties hereto acknowledge and agree that the Annexes attached
hereto are an integral part of this Agreement, and are hereby incorporated
by
reference herein and made a part hereof.
9.10
Section Headings: The headings of the articles, sections and paragraphs
contained in this Agreement are inserted for convenience only and will not
be
deemed to constitute part of this Agreement or to affect the construction
thereof.
9.11
Construction: Licensor and Licensee each acknowledge that this Agreement has
been prepared jointly by the Parties and shall not be construed against any
Party as the draftsperson.
9.12
Language: This Agreement is written in the English language. Any other language
version of this Agreement shall be for convenience purposes only and shall
not
affect the interpretation hereof.
9.13
Further Assurances: Each Party shall do and execute, or arrange for the doing
and executing of, each necessary act, document and thing to implement this
Agreement, including without limitation executing and delivering and recording
any license required by local law, with terms consistent with this Agreement
to
the extent permitted by such local law, in the relevant country or
jurisdictions.
9.14
Counterparts: This Agreement may be executed in two or more separate
counterparts, each of which taken together shall have the same force and effect
as one original and shall constitute an effective, binding agreement on the
part
of each of the undersigned.
[Signature
Page Follows]
11
License
Agreement
IN
WITNESS WHEREOF, the parties hereto have executed this Agreement as of the
date
first written above.
|
By:
|
/s/ Xxxxxxx X. Xxxx | ||
|
Name:
Xxxxxxx X. Xxxx
|
|||
|
Title:
Corporate Secretary
|
|||
|
XXXXXXXX
XXXXXXXX
|
|||
|
(Signature:)
/s/ Xxxxxxxx Xxxxxxxx
|
|||
|
Print
Name: Xxxxxxxx Xxxxxxxx
|
|||
12
License
Agreement
Annex
A
1
- Perimeter intrusion detection radars
Description
We
will
develop two radar systems for intrusion detection: the first, called more
properly GUIDAR is based on ranging leaky coaxial cable sensors and creates
a
volumetric protection zone; the second is a high performances free-space RADAR
and creates a virtual barrier. Both systems are designed to detect moving
targets.
The
GUIDAR exploits the features of Ultra Wide Band (UWB) radar signal transmitted
along a leaky coaxial cable and whose reflections, given by targets approaching
the cable, are received by another leaky coaxial cable and then processed,
detected, and classified by means of a complete and innovative Digital Signal
Processing (DSP) system.
The
leaky
coaxial double cable can be installed, buried or not, along a generic path
and
protect a cylindrical volume around the double cable with a diameter of about
2
m along its entire length. Each digital processing system, able to detect the
position and size of any target, can manage up to hundreds of meters of cable.
More digital processing systems can be networked using standard Ethernet and
then connected to a central managing system. This technology is generally
classified as active, volumetric, terrain following, all-weather, and immune
to
vegetation and blowing debris.
We
also
developed a mono-static UWB electronic scanning radar (ESR) using a new antenna
design and an advanced DSP system realizing a protection barrier. The processing
unit is developed implementing a signal processing scheme able to precisely
recognize the intruder radar cross section and position up to hundreds of meters
distance from the antenna. More processing units can be networked using standard
Ethernet and then connected to a central managing system. This technology is
classified as active, volumetric, all-weather, ideal for low profile targets,
and immune to vegetation and blowing debris.
Advantages
We
will
develop innovative cable geometry and innovative antennas that dramatically
improve the performances of our systems in terms of ranging with respect to
the
existing products. Moreover we will adopt innovative UWB radar analysis software
based on DSP architecture that permits us to reach very high detection
capabilities and performances and to be highly resilient to the environment
changes (nuisance).
Applications
These
systems are ideal to protect military and operation plants, airports, borders,
oil pipes, etc.
13
License
Agreement
2
- EMSEC (protection and eavesdropping)
Description
Electronic
equipment can emit unintentional signals from which eavesdroppers may
reconstruct processed data at some distance.
We
will
develop a single pc/laptop active protection system based on the emission of
correlated signals (innovative concept) that is intrinsically totally secure.
Emitting a composite correlated protection signal the received spectrum is
a non
discernible mix of the signal to be protected and the protecting signal. This
apparatus is low power, narrow band, impossible to violate and easy to be
installed.
We
will
develop a high performances (large distance and through the wall) eavesdropping
system on video display unit based on state-of-the-art digital signal
processing. The system is an all-digital system implementing a fast AD
conversion and digital front-end. Channel equalization, automatic choice of
spectral harmonic, automatic extraction of vertical and horizontal
synchronizations, and digital image enhancement permit to reach unprecedented
performances in terms of readability.
Advantages
A
completely and totally new concept is applied to the protection system and
a
totally digital system will be developed for eavesdropping permitting to reach
unprecedented performances.
Application
The
protection system can be applied in military installations, in governmental
buildings, during tactical operations, etc.
14
License
Agreement
3
- Real time positioning system
Description
Organizations
need a system able to locate objects or people. A real time positioning system
consists of a fixed infrastructure of base stations and associated hardware
and
software to enable accurate real-time tracking of small battery powered (active)
tags, which can be attached to people or objects, within the area covered by
the
base stations infrastructure. Compared to Global Positioning Systems (GPS),
this
system provides greater accuracy (typically to a resolution of a few
centimetres) and the ability to work in situations where GPS does not (such
as
inside buildings) and with very small devices (active tags) with very small
batteries.
The
sensors in each base station are very sensitive detectors for the low power
pulses emitted by the tags and can distinguish between reflections and directly
received signals. Each sensor independently determines the azimuth and elevation
directions of arrival of the incoming signals using special antenna array and
signal analysis. Sensors do not need to have optical line of sight contact
with
the tags since the signals go through walls and other objects. An infrastructure
of base stations can be installed and networked using standard Ethernet and
then
connected to a central management system.
Advantages
New
sensor antennas will be developed with improved performances. Innovative signal
processing techniques will improve range and precision. The main advantages
of
such technologies are: high precision, very good performance even in presence
of
obstacles or limited visibility, capability to work both outdoor and indoor,
capability to work also with important metal obstacles using a suitable topology
for the base stations, very high noise immunity, etc.
Applications
The
system can be applied wherever is necessary to track in real time the position
of people or objects, i.e. to associate the data from a bar code scanner with
its position in a warehouse, to provide the position of a pallet of goods placed
in a warehouse or a container in a storage area or airport, to automatically
detect the proximity between objects, to determine if during an emergency
procedure employees have all reached designated areas, etc.
15
License
Agreement
4
- Image processing codecs
Description
This
system is constituted of an off-the-shelf electronic board based on digital
signal processors running state-of-the-art image processing software algorithms
(embedded system). It gets an input from any video camera (or radar, or
eavesdropping system) and gives alarm and other outputs. It will perform the
following content video analyses: motion detection, abandoned/removed
object/vehicle detection, perimeter crossing detection, panic situation
detection, people/vehicle counting and speed evaluation, PTZ camera tracking,
plate recognition, behaviour analysis, face recognition.
Advantages
We
are
confident to reach incredible performances in terms of image resolution (> 1
mega-pixel) and video rate (> 25 frames per second).
Applications
The
system is ideal to protect military and operation plants, airports, borders,
vip
houses, highways, cities, etc.
16
