EXHIBIT 10.15
AGREEMENT FOR THE EXPLOITATION OF JOINT INVENTION
THIS AGREEMENT FOR THE EXPLOITATION OF JOINT INVENTION (this
"Agreement") is made and entered into as of the __ day of _________, 1996, by
and between WORGAS BRUCIATORI SRL, an Italian company having its registered
office at Xxx Xxxxx 00, 00000 Xxxxxxxxx (Xxxxxx), Xxxxx ("WORGAS") and DESA
INTERNATIONAL, a Delaware, U.S.A. corporation having its registered office at
0000 Xxxxxxxxxx Xxxxx, Xxxxxxx Xxxxx, Xxxxxxxx 00000-0000, U.S.A., ("DESA").
WHEREAS, the method of preventing log impingement of yellow
flames in a vent-free artificial gas log set more fully described in Exhibit A
hereto, (the "Invention") was invented jointly by Xxxxxxx Xxxxxxxx ("Xxxxxxxx"),
an employee of WORGAS, and by Xxxx X.
Xxxxxx ("Xxxxxx"), an employee of DESA; and
WHEREAS, the parties acknowledge and agree that all rights to
exploit the Invention and/or the innovative concepts underlying the Invention
belong to WORGAS and DESA equally and that any exploitation of the Invention
and/or of said underlying concepts shall require the consent in writing of both
parties; and
WHEREAS, WORGAS and DESA intend, as soon as possible, to apply
together for one or more patents (the "Patents") covering the Invention in
various countries; and
WHEREAS, WORGAS and DESA wish to exploit commercially the
Patents, the Invention and the innovative concepts underlying the Invention in a
manner advantageous to both parties;
NOW, THEREFORE, the parties hereto hereby agree as follows:
1. For the term of this Agreement and subject to the
conditions hereof, WORGAS authorizes DESA to manufacture and sell products based
on the Invention and/or on any or all of the innovative concepts underlying the
Invention and products involving use of the Invention and/or of said underlying
innovative concepts (collectively, the "Products") and DESA agrees to exercise
its best efforts to maximize Product sales.
2. For the term of this Agreement, DESA agrees to purchase
exclusively from WORGAS the gas burners used in practicing the Invention and
used in manufacturing the Products, at the prices in effect at the time WORGAS
receives DESA'S written purchase order for said burners, as determined in
accordance with Exhibit B hereto, and subject to the general conditions of sale
in effect at said time. Any revisions to the general conditions of sale during
the term hereof must be mutually agreeable between DESA and WORGAS. Unless
otherwise agreed in writing by the parties, said revised general conditions of
sale shall be deemed effective thirty (30) days following mutual acceptance.
3. For the term of this Agreement, WORGAS agrees to sell
exclusively to DESA and to no other parties gas burners used in the practice of
the Invention (the "Product Burners") which WORGAS knows or reasonably should
know will be used in the practice of the Invention. Nothing herein shall
preclude WORGAS from selling Product Burners in the United
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States or any other country for applications other than the Products. On an
exception basis during the term hereof, WORGAS and DESA may mutually agree in
writing to authorize WORGAS to sell the Product Burners to third parties for the
manufacture and sale of the Products in clearly specified parts of the world.
Except as otherwise agreed in writing by WORGAS and DESA, any such agreement
with third parties shall provide that (a) the third party must purchase from
WORGAS all said burners, at WORGAS's list prices plus an applicable xxxx-up
agreeable between WORGAS and DESA at the time WORGAS receives the third party's
written order for said burners and (b) any xxxx-up paid by the third party shall
be divided equally between WORGAS and DESA. In addition, from time to time
during the term hereof, WORGAS and DESA may agree in writing to grant to third
parties royalty-bearing, non-exclusive licenses to manufacture and sell some or
all of the Products in clearly specified parts of the world. Except as otherwise
agreed in writing by WORGAS and DESA, any such license agreement shall provide
that (a) the licensee must purchase from WORGAS all gas burners used in
manufacturing the licensed Products, at WORGAS's applicable list prices in
effect at the time WORGAS receives the licensee's written order for said burners
and (b) any royalty paid by the Licensee shall be divided equally between WORGAS
and DESA.
4. This Agreement shall enter into force and effect as of the
date first set forth above and shall remain in effect for a minimum seven (7)
year period from said date, provided however, that, if at the expiration of said
seven (7) year period, the parties have previously obtained a United States
Patent covering the Invention (the "Issued U. S. Patent"), or have a United
States patent application pending with one or more claims covering the
Invention, the Agreement shall terminate either (1) when such Issued U.S. Patent
or a United States Patent issuing from such pending United States application,
has expired or has been held by a court or tribunal of competent jurisdiction to
be invalid or unenforceable in a judgment or decision from which no appeal is or
can be taken, or has had all of its claims cancelled by Reexamination, or (2)
when such application becomes abandoned, whichever occurs first. Either party
shall be entitled to terminate this Agreement with immediate effect at any time
in the event of a material breach by the other party of any obligation of said
other party hereunder, which breach is not cured within ninety (90) days
following the receipt by the breaching party of written notice of breach. In the
event of such termination, the breaching party shall have no rights under the
Invention or the Patents in any country of the world, and any application filed
by the breaching party, solely or jointly, or any Patent obtained by the
breaching party, solely or jointly, under the provisions of paragraphs 6A or 6B
below, shall become the property of the other party upon the date of such
termination.
5. If at any time during the term of this Agreement, DESA
ceases to engage in the manufacturing of the Products or WORGAS ceases to engage
in the manufacturing of gas burners ( the Discontinuing Party"), the other party
shall be immediately notified in writing and this Agreement shall terminate upon
the date of such written notice. The parties hereby agree that, from said
termination date forward, all rights to exploit the Invention and/or the
innovative concepts underlying the Invention shall belong exclusively to the
party which has not ceased to engage, respectively, in the manufacturing of the
Products or of gas burners (the "Continuing Party"), and any application filed
by the parties, or any Patent obtained by the parties, under the provisions of
paragraphs 6A or 6B, shall become the property of the Continuing Party upon the
date of such written notice. The parties further agree that the Continuing Party
shall have no obligation to compensate the other party for loss of said
exploitation rights.
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6A. DESA shall have the responsibility for filing and
prosecuting an application for Patent covering the Invention in the United
States Patent and Trademark Office (PTO) and for maintaining any resulting
patent. The application, any continuations or divisions thereof, and any
resulting Patent or Patents shall be owned equally by DESA and WORGAS; DESA and
WORGAS shall share equally all costs and expenses involved in preparing and
prosecuting the application or applications and in maintaining any resulting
Patent or Patents. If all claims of the United States application are finally
rejected by the PTO, either party may notify the other party in writing of its
intention to discontinue participating in the prosecution of the application
and, in that event, the costs and expenses of any continued prosecution of the
application shall be borne entirely by the other party. Any party deciding to
discontinue participating in the prosecution of a U.S. Patent application which
has been finally rejected by the PTO will have no rights under any patent
finally obtained. Further, any party deciding to discontinue the payment of
maintenance fees for any U.S. Patent shall thereafter have no right under any
such U.S. Patent. WORGAS agrees to use its best efforts to have Berthold sign
any and all papers as may be necessary to assist DESA in obtaining such Patent
or Patents. DESA agrees to use its best efforts to have Xxxxxx sign any and all
papers as may be necessary to assist DESA in obtaining such Patent or Patents.
6B. If either of the parties hereto desires to obtain a Patent
covering the Invention in any country other than the United States as provided
for in paragraph 6A above, such party shall advise the other party in writing.
The party receiving such notice may, within ninety (90) days from receipt of
such notice, advise the other party in writing of its intention to join the
notifying party in filing an application to obtain such Patent in which case the
notifying party shall be responsible for preparing and prosecuting the
application and maintaining any resulting Patent, provided however, that the
parties shall equally share all expenses incurred in preparing and prosecuting
the application and maintaining any resulting Patent. If the receiving party
does not so notify the other party within the aforesaid ninety (90) day period,
the receiving party shall have no rights under any Patent obtained in accordance
with this paragraph. Any party deciding to discontinue participating in the
prosecution and/or maintenance of an application or patent in countries, other
than the United States, shall have no rights under any such application or
patent.
6C. As to any jointly-owned Patent obtained under the
provisions of paragraphs 6A or 6B, either party desiring to enforce such
jointly-owned Patent by litigation or license shall notify the other party in
writing. The other party may advise the notifying party within ninety (90) days
of such notice of its intention to join the notifying party in such enforcement
in which all expenses incurred in such enforcement and all recovery by way of
damages or royalties shall be equally shared. If the receiving party does not so
reply within said ninety (90) day period, the notifying party may-proceed by
suit or otherwise in the names of both parties, but the receiving party shall
have no rights to any recovery by way of damages or royalties.
6D. DESA will pay all costs and expenses associated with the
patent prosecution and maintenance fees, and will invoice Worgas for 1/2 of
these expenses.
7. Each of the parties agrees to use the confidential
information received by it from the other party and relating to the Invention,
the Products and/or Product components (the "Confidential Information") solely
for the purposes described herein and to keep said Confidential Information in
the strictest confidence. Said confidentiality obligation shall not apply to
that information and those documents which:
(a) are publicly available at the time of their
disclosure;
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(b) following their disclosure become publicly available
through no fault of the receiving party;
(c) the receiving party can prove to have had in its
possession prior to the date of disclosure;
(d) the receiving party can prove to have obtained or
developed independently;
(e) or are required to be released by order of any
competent court or governmental authority.
8. The recitals hereto and the following exhibits constitute
integral parts of this Agreement:
Exhibit A: The Invention
Exhibit B: Product Component Prices
9. This Agreement constitutes the entire agreement of the
parties hereto and supersedes any and all prior agreements between the parties,
whether oral or in writing, with respect to the subject matter hereof. Any
amendment hereto shall be valid only if made in writing and signed by the
authorized representatives of both parties.
10. Neither party may assign its rights and/or delegate its
duties hereunder absent the prior written consent of the other party.
11. Any dispute arising out of or relating to this Agreement
shall be resolved exclusively by the court of competent jurisdiction for the
place in which the defendant's principal place of business is located, and the
applicable law shall be the law of the country or state in which such court is
located.
12. All notices provided for herein shall be sent by
facsimile, and confirmation by first class, registered mail, addressed as
follows:
(a) As to DESA:
President
DESA International
0000 Xxxxxxxxxx Xxxxx
Xxxxxxx Xxxxx, Xxxxxxxx 00000
XXX
(000) 000-0000 (facsimile)
(b) As to WORGAS;
President
Worgas Bruciatori SRL
Xxx Xxxxx 00
00000 Xxxxxxxxx (Xxxxxx)
Xxxxx
01139 59 557 640 (facsimile)
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IN WITNESS WHEREOF, the parties hereto have caused this
Agreement to be executed by their duly authorized representatives as of the date
first written above.
WORGAS BRUCIATORI SRL DESA INTERNATIONAL
BY:__________________________ BY:___________________________
TITLE:_______________________ TITLE:________________________
Exhibit A
The Invention
METHOD AND APPARATUS FOR PREVENTING IMPINGEMENT OF
YELLOW FLAMES ON AN ARTIFICIAL LOG(S) IN A GAS LOG OR GAS
HEATER APPLICATION
Description Of The Invention
The present invention resides in a configuration of gas burner
ports in a vent-free log heater that will allow yellow flames to be in closer
proximity to an artificial log than current art, resulting in a more realistic
wood fire appearance. Avoidance of impingement of yellow flames with any
material object, including an artificial log, is necessary to prevent excessive
undesirable emissions in an unvented application.
A second set of ports located between the ports of the yellow
flames and the artificial log can be used to eject blue flames. These blue
flames will act as a blanket separating the yellow flames from the log surface
thus preventing impingement of yellow flames with the log. Alternately, the
function of the second set of middle ports can be achieved by ducting or routing
exhaust gases from any other source.
Locating yellow flames in very close proximity to the
artificial log is not currently achievable in current art due to the likely
problem of undesirable emissions due to impingement. However, such a close
arrangement of yellow flames and artificial logs results in a more
realistic-looking fireplace log fire, making such a heater more desirable in the
marketplace.
Blue flame impingement upon a properly designed artificial
ceramic fiber log has been available for years in the vent-free heater industry
and is desirable because the surface of the log can be made to glow red by the
blue flames. This has proven to be an aesthetically preferred appearance for
such a log heater.
The middle flame set in the preferred configuration, if of
blue flames, can thus be used to create a glowing log, which would be visible
through the front yellow flames. Alternately, a gas control system can be used
which can shut-off the front yellow flames, so that a glowing log alone can be
the only heat source in that area of the log set.
Referring to FIGURE 1, an artificial log 10 of a gas log set
is made of a suitable ceramic material well known to those skilled in the art.
Of course, log 10 may be associated
with one or more other logs of the same material. A burner tube, generally
designated 12, includes a plurality of longitudinally arranged parts 14. These
ports are in communication with a gas source for producing yellow flames 16.
A separate burner tube 8 also having longitudinally arranged
ports 18 is in communication with a source of gas for producing a middle set of
blue flames 20. Alternatively, a single burner tube using a longitudinally
extending separate set of ports, and venturi tubes, and a gas supply source
which is internally separated, can be provided for combining burner tube 8 and
burner tube 12 to produce both blue and yellow flames.
The blue flames 20 act as a barrier between the log and the
yellow flames 16 thereby preventing undesirable emissions. The blue flames 20
permit the yellow flames 16 to be positioned as close as possible to the log 10
without creating the undesirable emissions referred to above. The provision of
allowing the yellow flames to be in close proximity to the artificial log 10
results in a more realisticlooking wood fire.
Using a conventional dual-circuit gas control, the vent-free
artificial gas log set may be operated in two modes. In the first mode, the
yellow and blue flames are emitted thereby producing the glowing log and the
yellow flames simulating to the extent possible a wood burning fireplace. In the
second mode, only the blue flames 20 will be provided for producing a glowing
log.
Referring now to the embodiment of FIGURE 2, ports 24 produce
a yellow flame 26. Flue gases 28 are ducted or channeled between the log 10 and
the yellow flame 26. The provision of the flue gases 28 permits the yellow
flames to be located as close as possible to the log without forming undesirable
emissions. The flue gases 28 act as a barrier between the log 10 and the yellow
flames 26 but nevertheless permit the flames 26 to be emitted in close proximity
to the log for providing a more realistic-looking wood fire flame.
Using a conventional manual or thermostatic gas control, the
vent-free artificial gas log set may be operated in an on-off mode, with both
blue and yellow flames being either "on" or "off'.
Exhibit B
Product Component Prices
For the first twelve months of the term of the Agreement, the
ex works prices for the Product components manufactured by WORGAS as of the
effective date of the Agreement including packaging in cardboard boxes measuring
(1100 x 850 x 1050h) and on wooden pallets (the "Prices") shall be as follows:
Product Component Price
Once during each twelve-month period thereafter, WORGAS shall
be entitled to increase the Prices to account for increases in the cost of
materials used in manufacturing the Product components and/or in relevant labor
costs. DESA shall be entitled to submit to WORGAS written summaries of United
States market conditions and market pricing changes affecting the Products at
the time said summaries are submitted to WORGAS, along with documentary evidence
supporting the statements made in said summaries, and WORGAS agrees to consider
any such summaries in its possession prior to increasing the Prices. It is
understood, however, that at no time shall WORGAS be required to reduce or to
consider reducing the then current prices of the products supplied by it to
DESA, except in the event that the cost of materials used in manufacturing the
Product components and/or relevant labor costs have decreased during the
twelve-month period in question, in which case WORGAS shall reduce the then
current prices of the Product components to account for said decrease. WORGAS
shall provide DESA with a list of the prices as revised from time to time in
accordance with the terms hereof. Unless otherwise agreed in writing by the
parties, said revised Prices shall be deemed effective 30 (thirty) days
following receipt thereof by DESA.
Should WORGAS commence manufacturing any Product components
not manufactured by WORGAS as of the effective date of the Agreement, the
parties shall agree on the initial prices to be paid by DESA to WORGAS for said
components and, thereafter, the price increase mechanism described in this
Exhibit B shall apply to those components as well.
