LICENSE AGREEMENT
This
Agreement is entered into as of April 21, 2008 between BioGold Fuels
Corporation, a Nevada corporation (“BioGold” or “Licensee’’) and Energy Dynamics
Corporation International, a Wyoming corporation (“EDCI” or
“Licensor’’).
WHEREAS
BioGold has licensed certain rights and technologies to certain waste processing
methods, systems and techniques capable of preparing waste and other feedstock’s
and organic matter in an autoclave (the “BioGold Rights”);
WHEREAS,
EDCI has licensed or otherwise has acquired certain rights and technologies
for
an advanced commercial thermal distillation system to convert various waste
materials including coal, municipal solid waste, medical waste, post-consumer
plastics, tires, bio-solids and biomass to highly valuable commodities of syngas
and carbon (the “EDCI Rights”);
WHEREAS
EDCI desires the right to utilize the BioGold Rights, and BioGold desires the
right to utilize the EDCI Rights.
WHEREFORE,
the parties agree as follows:
1. Certain
Definitions.
1.1 “Disclosing
Party’’ shall mean a party hereto that discloses its Proprietary
Information to the other party.
1.2 “EDCI
Products’’ shall include a gasification system known as the “ACTI Gasification
System.”
1.3 “BioGold
Products” shall mean a BioGold autoclave system.
1.4 “Proprietary
Information’’ of a Disclosing Party shall mean the following, to
the extent previously, currently or subsequently disclosed to the other party
hereunder or otherwise: information relating to Products, the properties,
composition or structure thereof or the manufacture or processing thereof or
machines therefor or to the Disclosing Party’s business (including, without
limitation, reagents, computer programs, algorithms, names and expertise of
employees and consultants, know-how, formulas, processes, ideas, inventions
(whether patentable or not), schematics and other technical, business,
financial, customer and product development plans, forecasts, strategies and
information). In particular, but without limitation, Technology and improvements
made by Licensor thereto shall be considered Proprietary Information of
Licensor.
1.5 “Proprietary
Rights’’ shall mean patent rights patents, patent applications, copyrights, mask
work rights, trade secret rights and all other intellectual and industrial
property rights of any sort.
1.6 “Receiving
Party’’ shall mean a party hereto that receives Proprietary Information of the
other party.
11-1
1.7 “Technology’’
shall mean inventions (whether or not patent able), ideas, processes, formulas
and know-how owned or
controlled by Licensor and used by it as of the date of this Agreement, or
hereafter during such portion of the term of this Agreement as Licensor is
required to provide improvements of Technology to Licensee, for producing
Products.
1.8 “Territory’’
shall mean the United States and various potential International
projects.
2. License
Grant.
Subject
to all the terms and limitations of this Agreement, Licensor hereby grants
Licensee a non-exclusive sub-licensable license under all applicable Proprietary
Rights in the Technology. The license is limited to and may be exercised solely
for the purpose of having made, using and marketing (including selling and
offering to sell) the EDCI Products in the Territory. Licensee grants to
Licensor a non-exclusive sub-licensable license under all applicable Proprietary
Rights in the Technology.
3. Improvements. Any
Licensor modification or improvement (including those made for Licensor by
employees or contractors) to or on the Technology licensed to Licensee made
before the earlier of (i) termination of this Agreement or (ii) 2
years following the date of this Agreement (except improvements created
specifically for a third party) shall be included in the license without
additional charge to Licensee. In addition, Licensee will promptly disclose
and
hereby grants back to Licensor a worldwide, royalty-free, sub licensable license
to fully exploit any modifications or improvements it makes during the same
period to or on Technology (the foregoing shall be deemed to include, without
limitation, (A) any patent covering an invention the manufacture, use or
sale of which would be covered by or within the scope of a claim of a patent
licensed hereunder and (B) any patent that (alone or together with others)
tends to define, describe or surround any part of the Technology or any
invention claimed in a patent licensed hereunder) and Licensee shall not license
to third parties the modifications or improvements derived from or based on
any
Licensor Proprietary Information. The parties agree to promptly disclose
modifications and improvements.
4. Marketing
Efforts.
Each
Party will use reasonable commercial efforts to market and sell the other
Party’s Products under its license.
5. Royalties;
Payments. No
specific royalties shall be due under this Agreement for the grant of the
License; however, the Parties hereby agree to supply the other Party’s
reasonable requirements of Products for the pre-determined price.
The Parties hereby agree that each Party shall maintain the exclusive right
to
manufacture its Product, and the Licensee shall purchase all EDCI Products
exclusively from Licensor. Licensor shall purchase all BGF Products exclusively
from Licensee. All other equipment required for construction and operation
of a
Project utilizing the Technology may be purchased from other vendors.
6. No
Restriction on Competition; Nonsolicitation.
EDCI
shall not directly or indirectly participate in any business within two hundred
(200) miles of a BioGold waste to energy project that utilizes the Technology.
This includes, but is not limited to, licensing the Technology to a business
in
that location, selling an EDCI Product in that location, or participating in
such a business or as a co-owner, investor, director, officer, consultant,
independent contractor, employee or agent of another business. The Parties
agree
that (1) the non-competition clause described above is limited to an autoclave
process utilizing the same principles of the BioGold Rights, which explicitly
does not include paralysis and other processes, and (2) the non-competition
clause described above is limited to a process utilizing the same principles
of
the BioGold Rights.
11-2
7. Confidentiality.
Each
party recognizes the importance to the other of the other’s Proprietary
Information. In particular Licensee recognizes that the Technology and other
of
Licensor’s Proprietary Information (and the confidential nature thereof) are
critical to the business of Licensor and that Licensor would not enter into
this
Agreement without assurance that such technology and information and the value
thereof will be protected as provided in this Section 10 and elsewhere in
this Agreement.
Accordingly,
each party agrees as follows:
7.1 The
Receiving Party agrees (i) to hold the Disclosing Party’s Proprietary
Information in confidence as a fiduciary and to take reasonable precautions
to
protect such Proprietary Information (including, without limitation, all
precautions the Receiving Party em ploys with respect to its confidential
materials), (ii) not to divulge (except pursuant to a sublicense expressly
authorized in this Agreement) any such Proprietary Information or any
information derived therefrom to any third person, (iii) not to make any
use whatsoever at any time of such Proprietary Information except as expressly
authorized in this Agreement, and (iv) not to remove or export from the
United States or reexport any such Proprietary Information or any direct product
thereof (e.g., Products by whomever made) except in compliance with and with
all
licenses and approvals required under applicable U.S. and foreign export laws
and regulations, including without limitation, those of the U.S. Department
of
Commerce. Any employee given access to any such Proprietary Information must
have a legitimate “need to know’’ and shall be similarly bound in writing.
Without granting any right or license, the Disclosing Party agrees that the
foregoing clauses (i), (ii) and (iii) shall not apply with respect to
information the Receiving Party can document (i) is in or (through no
improper action or inaction by the Receiving Party or any Affiliate, agent
or
employee) enters the public domain (and is readily available without substantial
effort), or (ii) was rightfully in its possession or known by it prior to
receipt from the Disclosing Party, or (iii) was rightfully disclosed to it
by another person without restriction, or (iv) was independently developed
by it by persons without access to such information and without use of any
Proprietary Information of the Disclosing Party. The Receiving Party must
promptly notify the Disclosing Party of any information it believes comes within
any circumstance listed in the immediately preceding sentence and will bear
the
burden of proving the existence of any such circumstance by clear and convincing
evidence. Each party’s obligations under this Section 10.1 (except under
clause (iv) of the first sentence) shall terminate 5 years after the date of
this Agreement.
7.2 Immediately
upon termination of the Receiving Party’s license under Section 13, the
Receiving Party will turn over to the Disclosing Party all Proprietary
Information of the Disclosing Party and all documents or media containing any
such Proprietary Information and any and all copies or extracts
thereof.
7.3 The
Receiving Party acknowledges and agrees that due to the unique nature of the
Disclosing Party’s Proprietary Information, there can be no adequate remedy at
law for any breach of its obligations hereunder, that any such breach may allow
the Receiving Party or third parties to unfairly compete with the Disclosing
Party resulting in irreparable harm to the Disclosing Party, and therefore,
that
upon any such breach or any threat thereof, the Disclosing Party shall be
entitled to appropriate equitable relief (without the posting of any bond)
in
addition to whatever remedies it might have at law and to be indemnified by
the
Receiving Party from any loss or harm, including, without limitation, lost
profits and attorney’s fees, in connection with any breach or enforcement of the
Receiving Party’s obligations hereunder or the unauthorized use or release of
any such Proprietary Information. The Receiving Party will notify the Disclosing
Party in writing immediately upon the occurrence of any such unauthorized
release or other breach. Any breach of this Section 10 will constitute a
material breach of this Agreement.
11-3
8. Patent
Matters.
Any
improvements to Technology (whether or not patentable or copyrightable) that
either party develops shall be owned solely by such party. Such party shall
have
the right, at its own expense and solely in its own name, to apply for,
prosecute and defend its Proprietary Rights with respect thereto. Licensor’s
existing relevant patents and patent applications in the Territory are listed
on
Exhibit C. Licensee agrees to place on all Products in a proper manner all
reasonable patent and patent application markings requested by Licensor.
9. Term
and Termination.
9.1 This
Agreement will remain in effect for a period of ten (10) years.
If
a party materially breaches a material provision of this Agreement, the other
party may terminate this Agreement upon 30 days’ notice unless the breach is
cured within the notice period.
9.2 In
the
event of any termination of this Agreement, the rights and licenses granted
Licensee under this Agreement and Licensee’s obligation under Section 6 shall
terminate and Licensor’s obligations to negotiate or provide goods, services,
facilities, technology or information shall cease but all other provisions
of
this Agreement will continue in accordance with their terms (except that if
the
termination is on account of a breach by Licensor, the license granted Licensor
in Section 5 shall also terminate, the license granted Licensee in Section
2
will continue for Technology licensed as of the termination date and Section
6
will continue and the Agreement will not be considered terminated for purposes
of Section 8 until Licensee’s royalty obligation terminates). Any licenses
surviving termination may be terminated by the granting party in the same manner
as provided in Section 13.2 if the other party materially breaches a material
surviving provision of this Agreement.
9.3 Neither
party shall incur any liability whatsoever for any damage, loss or expenses
of
any kind suffered or incurred by the other arising from or incident to any
termination of this Agreement (or any part thereof) by such party which complies
with the terms of the Agreement whether or not such party is aware of any such
damage, loss or expenses.
9.4 Termination
is not the sole remedy under this Agreement and, whether or not termination
is
effected; all other remedies will remain available.
10. INCIDENTAL
AND CONSEQUENTIAL DAMAGES.
EXCEPT
FOR BODILY INJURY OF A PERSON, NEITHER PARTY WILL BE LIABLE UNDER ANY CONTRACT,
NEGLIGENCE, STRICT LIABILITY OR OTHER THEORY FOR ANY INCIDENTAL OR CONSEQUENTIAL
DAMAGES WITH RESPECT TO ANY SUBJECT MATTER OF THIS AGREEMENT EXCEPT A BREACH
OF
SECTION 10.
11. LIMITATION
OF OBLIGATIONS AND LIABILITY.
EXCEPT
FOR BODILY INJURY OF A PERSON, LICENSOR WILL NOT BE LIABLE WITH RESPECT TO
ANY
SUBJECT MATTER OF THIS AGREEMENT UNDER ANY CONTRACT, NEGLIGENCE, STRICT
LIABILITY OR OTHER THEORY FOR COST OF PROCUREMENT OF SUBSTITUTE GOODS, SERVICES,
TECHNOLOGY OR RIGHTS OR FOR ANY AMOUNTS AGGREGATING IN EXCESS OF AMOUNTS PAID
TO
IT HEREUNDER.
12. Independent
Contractors.
The
parties are independent contractors and not partners, joint venturers or
otherwise affiliated and neither has any right or authority to bind the other
in
any way.
11-4
13. Assignment.
The
rights and obligations of the parties under this Agreement may not be assigned
or transferred (and any attempt to do so will be void) except this Agreement
and
the rights and obligations hereunder may be assigned to an acquiror of all
or
substantially all the assets, business or stock of a party.
14. Miscellaneous.
14.1 Amendment
and Waiver--Except as otherwise expressly provided herein, any provision of
this
Agreement may be amended and the observance of any provision of this Agreement
may be waived (either generally or any particular instance and either
retroactively or prospectively) only with the written consent of the
parties.
14.2 Governing
Law and Legal Actions--This Agreement shall be governed by and construed under
the laws of the State of California and the United States without regard to
conflicts of laws provisions thereof. Subject to Section 18.7 and unless
otherwise elected by Licensor in writing for the particular instance (which
Licensor may do at its option), the sole jurisdiction and venue for actions
related to the subject matter hereof shall be the California state and U.S.
federal courts having within their jurisdiction the location of Licensor’s
principal place of business. Both parties consent to the jurisdiction of such
courts and agree that process may be served in the manner provided herein for
giving of notices or other wise as allowed by California or federal law. In
any
action or proceeding to enforce rights under this Agreement, the prevailing
party shall be entitled to recover costs and attorneys’ fees.
14.3 Headings--Headings
and captions are for convenience only and are not to be used in the
interpretation of this Agreement.
14.4 Notices--Notices
under this Agreement shall be sufficient only if personally delivered, delivered
by a major commercial rapid delivery courier service or mailed by certified
or
registered mail, return receipt requested to a party at its addresses set forth
in the signature block below or as amended by notice pursuant to this
subsection. If not received sooner, notice by mail shall be deemed received
5
days after deposit in the U.S. mails.
14.5 Entire
Agreement--This Agreement supersedes all proposals, oral or written, all
negotiations, conversations, or discussions between or among the parties
relating to the subject matter of this Agreement and all past dealing or
industry custom.
14.6 WARRANTY
DISCLAIMER.
EXCEPT
FOR THE REPRESENTATION THAT THE LICENSOR OWNS OR OTHERWISE HAS THE RIGHT TO
LICENSE THE TECHNOLOGY, LICENSOR MAKES NO WARRANTY WITH RESPECT TO ANY
TECHNOLOGY, GOODS, SERVICES, RIGHTS OR OTHER SUBJECT MATTER OF THIS AGREEMENT
AND HEREBY DISCLAIMS WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR
PURPOSE AND NONINFRINGEMENT WITH RESPECT TO ANY AND ALL OF THE
FOREGOING.
14.7 Arbitration--Except
that either party may seek equitable or similar relief from a court, any
dispute, controversy or claim arising out of or in relation to this Agreement
or
at law, or the breach, termination or invalidity thereof, that cannot be settled
amicably by agreement of the parties hereto, shall be finally settled by
arbitration in accordance with the arbitration rules of the International
Chamber of Commerce (“ICC’’), Paris, then in force by one or more arbitrators
appointed in accordance with said rules; provided, however, that arbitration
proceedings may not be instituted until the party alleging breach of this
Agreement by the other party has given the other party not less than sixty
(60)
days to remedy any alleged breach and the other party has failed to do so.
The
appointing authority shall be the ICC Court of Arbitration. The place of
arbitration shall be Los Angeles. All documents and agreements relative to
any
such dispute shall be read, interpreted, and construed from the English versions
thereof. The award rendered shall be final and binding upon both parties.
Judgment upon the award may be entered in any court having jurisdiction, or
application may be made to such court for judicial acceptance of the award
and/or an order of enforcement as the case may be.
11-5
14.8 Force
Majeure--Neither party hereto shall be responsible for any failure to perform
its obligations under this Agreement (other than obligations to pay money or
obligations under Section 10 or 12) if such failure is caused by acts of God,
war, strikes, revolutions, lack or failure of transportation facilities, laws
or
governmental regulations or other causes that are beyond the reasonable control
of such party. Obligations hereunder, however, shall in no event be excused
but
shall be suspended only until the cessation of any cause of such failure.
14.9 Severability--If
any provision of this Agreement is held illegal, invalid or unenforceable by
a
court of competent jurisdiction, that provision will be limited or eliminated
to
the minimum extent necessary so that this Agreement shall otherwise remain
in
full force and effect and enforceable.
14.10 Basis
of
Bargain--Each party recognizes and agrees that the warranty disclaimers and
liability and remedy limitations in this Agreement are material bargained for
bases of this Agreement and that they have been taken into account and reflected
in determining the consideration to be given by each party under this Agreement
and in the decision by each party to enter into this Agreement.
| LICENSEE (BioGold Fuels): | ||
| Xxxxx Xxxxxxxx | ||
| |
|
|
| By: | /s/ Xxxxx Xxxxxxxx | |
|
|
||
|
Address:
|
|
|
|
LICENSOR (Energy Dynamics Corporation
International):
Xxxx Xxxxx
|
||
| By: | [sig] | |
|
Address:
|
0000 Xxxxxxx Xxxx Xxxxx
Xxxxxxxxx, XX 00000
|
|
11-6
