EXCLUSIVE LICENSE AGREEMENT
X. X. XXXXX SHOE TECHNOLOGIES, INC.
d/b/a DICON TECHNOLOGIES
to
RSI ENTERPRISES, INC.
Prepared by
XXXXXX X. XXXXX, ESQ.
Xxxxxx, Xxxxx, Xxxxxxxxxx,
Xxxxxxxx & Mentlik, LLP
Westfield, New Jersey
XXXX XXXXXX, ESQ.
Counsel
RSI Enterprises, Inc.
DATED: July 1, 2001
EXCLUSIVE LICENSE AGREEMENT
THIS AGREEMENT made as of the 1st day of July, 2001 between:
X.X. XXXXX SHOE TECHNOLOGIES,INC.
d/b/a DICON TECHNOLOGIES
a Delaware Corporation
having a place of business at
0-00 Xxxxx Xxxxx
Xxxx Xxxx, Xxx Xxxxxx 00000
hereinafter DICON, and
RSI ENTERPRISES, INC.
A Delaware Corporation
having a place of business at
000 Xxxxxxx Xxxxxx
Xxxxx 000
Xxx Xxxx, Xxx Xxxx 00000
hereinafter RSI.
STATEMENT
As of even date herewith, the parties entered into a Supply and
Requirements Agreement (REQUIREMENTS AGREEMENT), which is incorporated by
reference, for DICON to manufacture, sell and supply to RSI certain molded
hydrophilic foam products with superabsorbent polymer and detergents, soaps and
waxes defined in said REQUIRMENTS AGREEMENT as RSI SPONGE PRODUCTS and granting
to RSI for such products an exclusive field of use for the cleaning and
polishing of land, sea and air transportation vehicles.
Further, DICON, with the assistance of Xxxxxxx Xxxxxxxxxx, an employee from
RSI, designed and developed an improved Molded Sponge Design particularly
adapted for the said RSI SPONGE PRODUCTS, on which the parties have agreed to
cooperate for the preparation and filing of an Application for a U.S. Design
Letters Patent thereon, with the understanding that such improved Molded Sponge
Design would be assigned and transferred by the inventors to DICON, and RSI
shall have an exclusive right and license to use and sell such improved Molded
Sponge Design.
The purpose of this Agreement is to confirm this understanding between the
parties and to provide the exclusive right and license to RSI, all terms and
conditions as hereinafter set forth.
NOW THEREAFTER, in consideration of One Dollar ($1.00) and other good and
valuable considerations, the receipt of which is acknowledged by the parties,
the parties mutually covenant and agree as follows:
ARTICLE I
THE APPLICATION
1.1 In consideration of the assignment by the co-inventor, Xxxxxxx Xxxxxxxxxx,
of his entire right, title and interest in, to and under the invention, the
application and any design patents which may issue on the Molded Sponge
Design, DICON agrees to pay all the expenses for the preparation, due
execution, transmission and filing with the U.S. Patent and Trademark
Office (PTO), the prosecution and issue expenses of the Application for
U.S. Design Letters Patent made or to be made on said Molded Sponge Design,
and the preparation and recording of all documents with the PTO necessary
to vest title thereto in DICON.
1.2 RSI hereby grants and conveys to DICON any right, title and interest it may
have in the said Molded Sponge Design and authorizes Xxxxxxx Xxxxxxxxxx to
execute any applications and to assign his entire right, title and interest
in, to and under the said invention, and any such applications that may be
made thereon and any patents which issue from said applications, directly
to DICON.
1.3 In the event any applications that may be made on said Molded Sponge Design
shall be finally rejected, DICON shall have sole discretion in determining
whether an Appeal should be filed on any such rejected applications,
provided, further, however, if DICON shall elect to Appeal any such Final
Rejection, then the fees, costs and expenses incurred for such Appeal shall
be shared equally between DICON and RSI.
1.4 Until advised otherwise, DICON shall keep the Attorney for RSI advised
regarding the status of the filing and prosecution of any Applications for
the U.S. Design Letters Patent including Appeals thereon.
1.5 All maintenance or annual taxes, which shall become due and payable to
prevent any issued U. S. Design Patents on said Molded Sponge Design from
lapsing shall be paid by DICON.
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ARTICLE II
THE GRANT
2.1 DICON has granted and hereby grants to RSI a personal, exclusive,
royalty-free right and license to use and sell the said RSI SPONGE PRODUCTS
worldwide as covered or coming within the scope of the invention, the
pending application and any patents which may issue on the said Molded
Sponge Design for the RSI exclusive field of use for such RSI SPONGE
PRODUCTS, for the cleaning and polishing of land, sea and air
transportation vehicles.
2.2 DICON agrees not to grant any other right or license, which may conflict
with the exclusive right and license, granted to RSI hereunder.
2.3 No other right or license under any DICON Technical Know-How or under any
other DICON utility or design patents is deemed to be granted, either
expressly or implied by reason of the making or execution of the present
Agreement between the parties either alone or in association of any other
agreements between the parties.
2.4 In the event that DICON shall develop any improvements to the Molded Sponge
Design, they shall be included within the terms and conditions of this
Agreement without any additional royalty charge.
ARTICLE III
DESIGN PATENT MARKING
3.1 Until the said Application for U.S. Design Letters Patent issues on said
Molded Sponge Design, RSI agrees to place a legend, either on the RSI
SPONGE PRODUCTS or on the packaging in which said RSI SPONGE PRODUCTS are
sold, an in any sales literature used on and in connection with the marking
of said RSI SPONGE PRODUCTS as follows:
Licensed under the Dicon Technologies
Pending Application for a Design Patent
and DICON agrees to notify RSI when said pending application for the design
patent matures into a U.S. Design Patent, and within a reasonable time
thereafter, RSI shall change the legend, with the approval of DICON, to
show the Design Patent Number of the Design Patent granted on such Molded
Sponge Design.
3.2 In the event this Agreement is terminated for any reason, RSI agrees to
terminate all further use of the legend or reference to DICON on the RSI
SPONGE PRODUCTS, the packaging and the sales literature within three (3)
months after such termination or any extensions thereof on which the
parties shall agree in writing.
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ARTICLE IV
DURATION AND TERMINATION
4.1 Unless sooner cancelled or terminated for any reason, this Agreement shall
be a continuing one for the full life of any Design Patent which may issue
on said Molded Sponge Design as disclosed in said filed or to be filed
Application for U.S. Design Letters Patent.
4.1.1 In the event that the use and sale of the RSI SPONGE PRODUCTS shall
drop below the minimum quantities as provided in said REQUIREMENTS
AGREEMENT, then DICON shall have the right to exercise the same
options with respect to this License that it exercises with respect to
the said REQUIREMENTS AGREEMENT.
4.3 In the event that said REQUIREMENTS AGREEMENT between the parties shall be
terminated for any reason, then simultaneously with the termination of said
REQUIREMENTS AGREEMENT, the present Agreement shall automatically
terminate.
ARTICLE V
REPRESENTATION AND LIABILITY FOR INFRINGEMENT
5.1 DICON cannot and does not make any representations as to the validity of
any patent which may issue on the Molded Sponge Design, and DICON does not
agree to save harmless and indemnify and come in and defend RSI against
liability for alleged or actual infringement of any Design Patents covering
the Molded Sponge Design held by other third parties.
5.2 If after any U.S. Design Letters Patent shall issue on said Molded Sponge
Design, RSI or DICON shall learn of a third party believed to be infringing
such issued U.S. Design Letters Patent, they shall notify each other
regarding this, and if such infringing conduct shall materially affect the
marketing and sale of the RSI SPONGE PRODUCTS, then the parties shall,
within thirty (30) days of such noise, mutually agree on the best course of
action for abating such infringing conduct.
5.3 When the course of action for abating such infringement is determined
between the parties or if the parties are unable to agree on such best
course of conduct within said thirty (30) day period or such extensions
thereof on which the parties agree in writing, DICON shall have the sole
right to either settle with or pursue litigation against such infringer,
and the fees, costs and other expenses incurred therefore shall be shared
equally between the parties. RSI shall be provided with an itemized
statement and billing showing the expenses incurred by DICON, and on
presentation and receipt thereof, shall pay the RSI pro rata equals shares
of such itemized billing.
5.4 DICON shall not incur any liability to RSI or any third party in prvity
with RSI, if DICON is unable to settle or to xxxxx the infringing conduct
of any such third party.
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ARTICLE VI
CONDITION SUBSEQUENT
6.1 In the event that DICON, for any reason, ceases its business operation,
either totally or just with respect to the manufacture of the Molded Sponge
Design within the scope of the Design Invention, the pending application or
any Design Patents which may issue thereon, then subject to the provisions
as set forth in this ARTICLE, all of DICON'S right, title and interest in,
to and under the Design Invention, the pending application and any Design
Patents which may issue thereon shall automatically be transferred to RSI,
and effective with the automatic transfer of the Design Invention, pending
application and any Design Patens that issue thereon, RSI shall become
liable for the further fees and the expenses incurred for recording the
transfer documents to vest title in RSI, for the prosecution of any pending
applications and for the annual maintenance fees, if any, for any Design
Patents that may issue on said Molded Sponge Design.
6.2 When the automatic transfer shall occur, as set forth in paragraph 6.1 of
this Article, DICON agrees to execute any documents necessary to vest title
in RSI, and in the event that DICON or their personnel are required to
provide information or to testify in connection with any administration
proceeding or litigation related to the prosecution of the pending
application or the obtaining of any Design Patents thereon or the
enforcement of any Design Patents which may issue thereon, DICON agrees to
provide all the reasonable assistance, available witnesses and/or available
documents as may be necessary, and RSI agrees to pay the reasonable cost,
expenses, including travel and related expenses, and all reasonable
attorney's fees incurred by DICON for this purpose.
6.3 Where DICON incurs any such costs, expenses or attorney's fees in
performing its obligations under paragraphs 6.1 and 6.2 of this Article,
they shall present RSI with an itemized xxxx therefore, and within fifteen
(15) days of the receipt of such xxxx, RSI shall pay such itemized xxxx by
forwarding their check in payment thereof to DICON at the address set forth
in any such billing.
ARTICLE VII
GENERAL CONDITIONS
7.1 This Agreement contains the entire understanding between the parties and
supersedes any previous oral and written agreements, if any, and there are
no other agreements, representations, warranties or obligations between the
parties for the purpose of this Agreement other than those set forth
herein. This Agreement cannot be modified or changed except by another
mutual agreement in writing signed by both parties.
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7.2 Where notice is to be given herein, such notice shall be by first class
certified mail, hand delivered, or sent by express mail to the address of
the other party as shown herein or to such other address on which a party
has notified the other in writing.
7.3 This Agreement shall only be assignable or transferable by RSI, without the
written consent of DICON, in the same manner, terms and conditions as set
forth in Article IX, paragraph 9.3 of the said REQUIREMENTS AGREEMENT.
7.4 This Agreement shall be interpreted and enforced in accordance with the
laws of the State of New Jersey or of the United States, as the case may
be.
SEPARATE LAST PAGE
ALL SIGNATURES AND DRYZ LOGO ON FILE
IN WITNESS WHEREOF, the parties have caused this agreement to be duly
executed by their authorized representative and the effective date of this
agreement to be the date first above set forth.
Signed at Fairlawn, New Jersey
On this 11th day of July, 2001
X.X. XXXXX SHOE TECHNOLOGIES, INC.
d/b/a/ DICON TECHNOLOGIES
By /s/Xxxxx Xxxxx
XXXXX XXXXX, VICE PRESIDENT
Signed at Fairlawn, New Jersey
On this 11th day of July, 2001
RSI ENTERPRISES, INC.
By /s/Xxxxxxx Xxxxxx
XXXXXXX X. XXXXXX, PRESIDENT
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