Technology Purchase Agreement
This Technology Purchase Agreement (the Agreement) is made and entered
into this 1st day of January, 1998 by and between Xxxx. Xxxx X. Xxxxxxxx with
offices located at 00/0 Xxxxxx xxx., Xxxxx 00000, Xxxxxx (referred to herein as
the "Inventor") and Eurotech, Ltd., a District of Columbia corporation with
offices at 0000 Xxxxxxxx Xxxxxx, Xxxxx 000, Xx Xxxxx, Xxxxxxxxxx 00000 XXX
("Company").
RECITALS
A. Inventor is the developer of the technology known as Liquid Ebonite
Material in application to the Chemical Industry as a substitute for existing
rubber coatings as protection for materials in contact with aggressive media
(the Technology) a description of which and the uses therefor are set forth in
Schedule A hereto ("the Technology"). It is also understood that the Technology
is applicable to the Oil and Gas Pipeline Industry and that the Technology may
substitute and or compete with existing epoxy coatings. With the knowledge that
the approval and development process for the Technology may take some time, the
parties of this Agreement have agreed that the conditions of this Agreement will
apply to the Technology in application to the Chemical Industry only. At the
same time, the Inventor commits to sign an agreement with the Company at a later
date for the application of the Technology to the Oil and Gas Pipeline Industry
under the terms later discussed and will not transfer the rights for the
Technology application to the Oil and Gas Pipeline Industry to any other Party
B. Inventor is willing to sell and assign the Technology to the Company on
the terms and conditions set forth herein.
AGREEMENTS
In consideration of the foregoing premises, and of the agreements,
covenants, representations, warranties, and indemnities contained herein, the
parties hereto agree as follows:
1. Sale and Assignment
1.1 Sale and Transfer of Interests. Inventor hereby sells, assigns, and
transfers to the Company all of his right, title, and interest in and to the
Technology, including each and every invention, whether machine, manufacture,
method, composition or design, or any of them, or system concepts which employ
the Technology, as subject to the provisions of Section 3.1 hereof.
1.2 Additional Assistance. Inventor shall, upon request from the Company,
execute any further instruments or documents and take any additional actions
which further the intent of this Article I. The obligations of the Inventor to
assist the Company shall continue beyond the termination of their employment by
the Company, but the Company shall compensate Inventor at a reasonable rate
after such termination for time actually spent by the Inventor at the Company's
request of such assistance.
2. Consideration
In consideration of the sale and assignment of the Technology, the Company
(i) shall pay Inventor the sum of fifteen thousand United States dollars
(US$15,000) (the "Purchase Price") upon the execution hereof, and (ii) for a
period of 15 years from the date hereof, the Company shall pay to Inventor a
royalty equal to forty nine percent (49%) of net revenues generated by the
Company from the sale or license of any products incorporating the Technology,
provided,
however, that the Company shall be entitled to deduct the entire amount of the
Purchase Price from the first royalty payments which become due to Inventor
hereunder until the entire Purchase Price shall have been repaid in full.
3. Improvements and Patents
3.1 Improvements. Inventor covenants that any improvements to the
Technology developed or invented by the Inventor, after the date hereof, except
any improvement as to which the Inventors can prove that (a) no equipment,
supplies, facility, or trade secret information of the Company was used; (b) it
was developed entirely on the Inventor's own time; and (c)(i) it does not relate
to the business or the actual or demonstrably anticipated research or
development of the Company; or. (ii) it does not result from any work performed
by the Inventor for the Company, shall belong solely to the Company, and the
Inventor shall promptly inform the Company thereof and provide the Company with
any documentation necessary or desirable to enable the Company to practice fully
such improvements.
3.2 Applications. Upon the request of and at the expense of the Company,
the Inventor shall file such applications for letters patent or copyrights in
the United States, or in foreign countries, on the Technology and improvements
thereto, as the Company deems necessary. Inventor shall, coincident with such
application, assign it to the Company, or, as otherwise requested by the
Company, convey all right, title, and interest in and to such application.
4. Inventor's Representations
Inventor represents and warrants as follows:
(a) that he is the sole owner of all title and interest in the Technology
and has not assigned or hypothecated any rights in or to any of the
Technology.
(b) that he does not have rights to any other trade secret, or other
proprietary information, patents, copyrights, patent applications, or
other patentable inventions in the same field as the Technology.
(c) to the best of his knowledge, without having conducted any special
investigation, that the Technology does not infringe upon any letters
patent heretofore issued in the United States or upon any other
applications for letters patent.
(d) to the best of his knowledge, that the manufacture, marketing, and use
of products embodying the Technology will not require the unauthorized use
of any technology to which any third parties have proprietary rights, and
to the best of his knowledge, without having conducted any special
investigation, that such manufacturing, marketing, and use will not
involve infringement or claimed infringement by the Company of any
copyright, trademark, trade name, service xxxx, trade secret, or other
proprietary right of any other person.
(e) that there are no outstanding options, licenses, or agreement of any
kind relating to the Technology or to the manufacture, use, or sale of the
Technology or improvements thereto.
(f) that he has full power to grant the rights, licenses, and privileges
herein given.
(g) that any invention, development, or modification made by the Inventor
and amounting to an improvement to the Technology shall be added to this
Agreement, in accordance with the other terms of this Agreement.
(h) that the Inventor shall enjoy no right, title, or interest in any
improvements to the Technology made by the Company, its employees, or
licensees.
(i) that he has been advised by counsel of the actions which he might take
to impair the validity or enforceability of the Technology, and that he
has not taken any such actions.
5. Inventor's Covenants
5.1 As soon as practicable following the execution of this Agreement, the
Inventor shall deliver to the Board of Directors of the Company in written form
all such documentation, paperwork, computer code, and other written or
electronic media as the Company may request, containing all proprietary and
trade secret information relating to the Technology. The Company will treat such
information with the same degree of care as it treats its other confidential
information and will use its best efforts to prevent unauthorized disclosure
thereof.
5.2 Assistance in Utilizing Technology. While an employee of or consultant
to the Company, Inventor shall assist the Company's employees in utilizing all
existing and future information which the Company or its employees own or might
obtain in order to use fully and efficiently the Technology or any improvements
thereto.
5.3 Confidentiality. The Inventor agrees that he will not disclose any
proprietary information of the Company with respect to the Technology and any
improvements thereto to any other person or entity (except to employees of the
Company in connection with their performance as employees, or to prospective
employees of the Company who sign appropriate nondisclosure agreements) without
the written consent of the Company's Board of Directors, nor will he use the
Technology for the benefit of any person or entity other than the Company
without such consent. This covenant shall survive the termination of this
Agreement, except for termination pursuant to Articles 6 or 7.
6. Litigation
6.1 Prosecution by Company. The Company shall have the sole right to
prosecute any action, suit, or proceeding necessary to prevent the infringement
by others of any protectable Technology, shall pay all expenses associated with
any such action, suit, or proceeding, and shall retain all sums recovered
therefrom.
6.2 Defense. The Company shall defend all actions, suits, or proceedings
based on claims that may be brought against it and the Inventor on account of
the ownership, manufacture, use, or sale of the Technology, shall pay all
expenses associated with such action, suit, or proceeding, and shall, subject to
the other provisions of this article 6, pay all sums for which the Company is
liable as a result thereof; provided, however, that if the Inventor elects to
participate actively in the defense of any such action, suit, or proceeding, the
Inventor shall pay all its own expenses. In any event, Inventor shall be
entitled to receive copies of all filings and documents and to participate in
all meetings in connection with such action, suit, or proceeding; provided that
the Company reserves the right not to disclose or provide any documents or
portion thereof, and to exclude the Inventor from any meeting or portion
thereof, if such disclosure or attendance by Inventor could, in the opinion of
counsel to the Company, adversely affect the attorney-client privilege between
the Company and its counsel.
6.3 Assistance. In connection with any such actions, suits, or
proceedings, the Inventor shall assist the Company and shall testify, whenever
requested to do so by the Company at the Company's expense, and shall execute
all agreements, instruments, or other documents necessary or desirable for such
assistance.
7. Development of Technology
7.1 Funding. The Company agrees to budget and to make available in the
frame of the mutually agreed budget of the Israel Research Center the funds
needed for transfer of the Technology to the Company which may include but are
not limited to the preparation of the samples, needed research, travel,
patenting, and other associated costs.
7.2 Repurchase of Technology. In the event that the Company materially
breaches its obligation under Section 7.1, the Inventor shall have the right to
purchase and receive all of the Technology (including all improvements thereon,
source and object code, marketing materials, and other documentation with
respect to the Technology and improvements) for the sum of $1.00.
7.3 Repurchase of Equipment. If the Inventor exercises its rights under
Section 7.2, the Inventor shall also have the right to purchase and receive all
equipment purchased by the Company after the date hereof specifically in
connection with the development and production of the products based on the
Technology and improvements thereto at a price equal to the sum of the aggregate
cost of such equipment incurred by the Company and depreciation of such
equipment to the date of purchase by the Inventors.
7.4 Exercise of Repurchase Option. The Inventor may, on or before the
earlier of sixty days after such breach or one year after the date hereof,
exercise his rights under Section 7.2 and 7.3 by executing and delivering to the
Company a written notice as provided in Section 8.7 which notice shall specify
the facts constituting the breach and that the Inventor is exercising such
rights. The date, time, and place of such purchases shall be established by
mutual agreement of the parties, but in no event more than ninety days after the
date of the notice.
8. Miscellaneous
8.1 Survival of Warranties. The warranties, representations, and covenants
of the Inventors and covenants of the Company contained in or made pursuant to
this Agreement shall survive the execution and delivery of this Agreement and
shall in no way be affected by any investigation of the subject matter thereof
made by or on behalf of the other parties hereto.
8.2 Successors and Assigns. The terms and conditions of this Agreement
shall inure to the benefit of and be binding upon the respective successors and
assigns of the parties, except that the rights of the Inventor contained in
Article VII are not assignable (except by will or by the laws of descent and
distribution) and any such attempted assignment shall be null and void. Nothing
in this Agreement, express or implied, is intended to confer upon any parry
other than the parties hereto or their respective successors and assigns any
rights, remedies, obligations, or liabilities under or by reason of this
Agreement, except as expressly provided in this Agreement
8.3 Governing Law. This Agreement shall be governed by and construed under
the laws of the state of New York as applied to agreements among New York
residents entered into and to be performed entirely within New York.
8.4 Counterparts. This Agreement may be executed in two or more
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.
8.5 Titles and Subtitles. The titles and subtitles used in this Agreement
are used for convenience only and are not to be considered in construing or
interpreting this Agreement.
8.6 Notices. Unless otherwise provided, any notice required or permitted
under this Agreement shall be given in writing and shall be deemed effectively
given upon personal delivery to the party to be notified or upon deposit with
the U.S. Post Office, by registered or certified mail, postage prepaid, and
addressed to the party to be notified at the address indicated for such party on
the signature page hereof, or at such other address as such party may designate
by ten (10) days' advance written notice to the other parties.
8.7 Amendments and Waivers. Any term of this Agreement may be amended and
the observance of any term of this Agreement may be amended and the observance
of any term of this Agreement may be waived (either generally or in a particular
instance and either retroactively or prospectively), only with the written
consent of the Company and the Inventor.
8.8 Severability. If one or more provisions of this Agreement are held to
be unenforceable under applicable law, such provision shall be excluded from
this Agreement and the balance of the Agreement shall be interpreted as if such
provision were so excluded and shall be enforceable in accordance with its
terms.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the date
first above written.
Inventor: Company:
Xxxx. XXXX X. XXXXXXXX EUROTECH, LTD.
/s/ Xxxx X. Xxxxxxxx By:/s/ Xxxxxxxx Xxxxxx, Xx.
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Chief Executive Officer
Schedule A.
LIQUID EBONITE MATERIAL
Liquid Ebonite Material (LEM) are a type of liquid rubber with superior
mechanical, permeable and anticorrosive properties in comparison to conventional
sheet rubber coverings. LEM coverings display excellent resistance to such harsh
chemicals as acids, alkalis, benzene, etc., and can be applied as a protective
covering for materials with intricate surfaces, such as the mesh of sieves,
helping to facilitate its operation. LEM coverings are most efficient in
protecting the intricately shared and perforated parts of pumps, fans,
centrifuge rotors, small-diameter pipes and outlets. LEM can be easily applied
using such simple coating techniques as brushing, spraying or dipping. LEM can
be utilized in various industries such as the chemical, oil, and gas pipeline
industries.
