EXCLUSIVE LICENSE AGREEMENT
Between
CORNELL RESEARCH FOUNDATION, INC. and
ADVANCED REINFORCING TECHNOLOGIES, INC.
(CRF Refs. D-1576)
THIS AGREEMENT, effective as of the first day of March 1999, by and
between the CORNELL RESEARCH FOUNDATION, INC., having offices at Cornell
Business & Technology Park, 00 Xxxxxxxxx Xxxxx, Xxxxx 000, Xxxxxx, Xxx Xxxx,
00000, hereinafter referred to as "FOUNDATION" and Advanced Reinforcing
Technologies, Inc., having offices at 000 Xxxxx Xxxxxxx Xxxxxx, Xxxxx Xxxx,
Xxxxxxx, 00000, hereinafter referred to as "LICENSEE".
W I T N E S S E T H T H A T:
WHEREAS, United States Patent No. 5,613,334, entitled "Laminated
Composite Reinforcing Bar and Method of Manufacture" was issued on March 25,
1997, a copy of which is appended as Exhibit A;
WHEREAS, a Canadian patent application entitled "Laminated Composite
Reinforcing Bar", Patent Application No. 2,222,451 was filed on December 19,
1997, a copy of which has been appended as Exhibit B;
WHEREAS, the inventions disclosed and claimed in Exhibits A & B are
assigned to FOUNDATION and FOUNDATION is a wholly owned subsidiary corporation
of Cornell University and holds the ownership interests of patents issued on
inventions made by Cornell University's staff and administers licenses in a
manner consistent with the patent policy of Cornell University;
WHEREAS, FOUNDATION represents that it is assignee of the
above-identified patent and patent application and any patents issuing thereon
and has the right to grant licenses under said patent and/or patent application
and patents issuing thereon;
WHEREAS, if the work leading to the invention disclosed and claimed in
Exhibit A was supported in part by an agency of the U.S. Government, FOUNDATION
is obligated to comply with the U.S. Office of Management & Budgets Circular No.
A-124, or 37 CFR Part 401;
WHEREAS, LICENSEE is desirous of securing a license under the
discoveries and invention embodied in said patent and/or patent application and
patents issuing thereon to make, have made, use and sell Licensed Products in
the United States and throughout the world;
WHEREAS, FOUNDATION is willing to grant a license in said patent and/or
patent application and any patents issuing thereon to LICENSEE upon the terms
and conditions hereinafter set forth;
NOW, THEREFORE, in consideration of the covenants and obligations
hereinafter set forth, the parties hereto hereby agree as follows:
I
DEFINITIONS
The following definitions will apply throughout this agreement:
1. American Concrete Institute (Ad) acceptance shall mean recognition
by the procedure and protocol of the necessary committees within
American Concrete Institute (P0 Xxx 0000, Xxxxxxxxxx Xxxxx, XX,
00000, phone 000-000-0000) which will allow the inclusion of
inventions of the scope and manner of which include inventions
claimed in Licensed Patent in such code and design guidelines such
as those published by ACI, e.g. "ACI Manual of Concrete Practice" or
"ACI 319-89 - Building Code Requirements for Reinforced Concrete
2. Licensed Application shall mean Canadian Patent Application Serial
No. 2,222,451 attached as Exhibit B and any continuation,
continuation-in-part, or divisional applications thereof as well as
foreign counterparts thereof.
3. Licensed Patent shall mean U.S. Patent No. 5,613,334 any patents
issuing from a Licensed Application, and all reissues thereof as
well as foreign counterparts thereof.
4. Licensed Products shall mean any product, use, or method claimed in
Licensed Patent and Licensed Applications.
5. License Year shall mean each twelve (12) month period beginning on
the effective date of this Agreement first written above and
thereafter on the anniversary date thereof.
6. LICENSEE shall mean the above named company and any of its
affiliates in which it owns or controls at least 50% of the voting
stock.
7. Net Sales Price shall mean the gross amount of money billed by
LICENSEE to its customers FOB customers dock on sale or use of
Licensed Products subsequent to the effective date of this Agreement
where the Licensed Products were either made, used or sold in the
United States of America, and throughout the world LESS: (1) trade
and/or quantity discounts, (2) returns and allowances, (3)
retroactive price reductions, (4) transportation, (5) taxes, (6)
insurance, (7) handling, (8) export/import fees, and (9) any other
charge or fee not payable with respect to the Product itself.
II
GRANT
Subject only to the rights of and obligations to the U.S. Government as
set forth in U.S. Office of Management & Budget Circular A-124 or 37 CFR Part
401; FOUNDATION hereby grants to LICENSEE for the term set forth below and under
the royalty basis set forth below, an exclusive license to make, have made, use
or sell Licensed Products in the United States and throughout the world. The
term "exclusive license" as used hereinabove shall mean that FOUNDATION shall
not issue a license to another, within the period of exclusivity set forth
hereinafter or any agreed upon extension thereof.
FOUNDATION hereby retains its rights to Licensed Patent and Licensed
Application for all non-commercial, educational, or research purposes of Cornell
University.
III
TO HAVE MADE
The right of LICENSEE to make Licensed Products includes the right to
have made by contract with third parties within a country where LICENSEE is
licensed and patent protection for Licensed Products exists or is pending. Such
contractual arrangements with third parties shall be subject to and conditioned
upon appropriate supervision and quality assurance and control of the third
party by LICENSEE and the third party shall be bound in writing to respect all
rights of FOUNDATION and to supply all production bf Licensed Products
exclusively to LICENSEE.
IV
PAYMENTS MADE IN CONSIDERATION OF THE
EXECUTION OF THIS LICENSE AGREEMENT
FOUNDATION hereby acknowledges LICENSEE's reimbursement of
FOUNDATION's outstanding patent expenses and a payment of fifty thousand dollars
($50,000 - US Currency) made by LICENSEE as a consideration for entering into
this Agreement, which are nonrefundable and will not be considered as an advance
payment on royalties due hereunder. Reimbursement of FOUNDATION's patent
expenses, an amount equal to $13,053, is non-refundable and shall be due upon
signing of this Agreement. The payment of $50,000 as stated hereinabove shall be
paid within 120 days of the Effective Date of this Agreement. If said $50,000 is
not received by FOUNDATION within 120 days of the Effective Date of this
Agreement, this Agreement will be null and void.
V
FOREIGN PATENTS AND PAYMENT OF COSTS
As the Canadian patent application exists, LICENSEE agrees to pay for
all expenses incurred in the preparation, filing, prosecution, renewal and
continuation of Licensed Patents and Applications in Canada including all taxes,
official fees and attorney's fees incurred after the Effective Date of this
Agreement.
Notwithstanding the foregoing, LICENSEE may elect in writing to be
released from its license in any of the Licensed Patents and Applications in
Canada in which event it shall thereafter have no obligation to reimburse
FOUNDATION for any future expenses relating to such patent or patent
application.
VI
PAYMENT OF U.S. MAINTENANCE FEES
AND CONTINUING PROSECUTION COSTS
Where maintenance fees are due on a licensed patent and LICENSEE
remains exclusively licensed or is the sole nonexclusive licensee, LICENSEE
agrees to reimburse FOUNDATION for the costs of said fees within thirty (30)
days of Notice thereof to LICENSEE by FOUNDATION.
Where prosecution and maintenance fees are due on Licensed Applications
and LICENSEE remains exclusively licensed or is the sole nonexclusive licensee,
LICENSEE agrees to reimburse FOUNDATION for the costs of said fees within thirty
(30) days of Notice thereof to LICENSEE by FOUNDATION.
Where Licensed Applications are pending, LICENSEE agrees to pay all
reasonable prosecution costs for such Licensed Applications at least through an
appeal to a court of competent jurisdiction.
VII
ROYALTIES AND MINIMUM ROYALTIES TO BE
PAID DURING THE LICENSE AGREEMENT
LICENSEE will pay to FOUNDATION a royalty of three percent (3.0%) of
the Net Sales Price of Licensed Products made, used or sold by LICENSEE in the
United States and throughout the world.
LICENSEE'S obligation to pay royalty upon each such product shall
cease:
(i) if the applicable claims in the Licensed Patent in any particular
country are held invalid by an unappealed or unappealable
decision of a court of competent jurisdiction, in that particular
country, or
(ii) upon expiration of the last said Licensed Patent; or
(iii) if FOUNDATION abandons its patent solicitation efforts for all
Licensed Applications and no Licensed Patent is in force.
Royalty payments as above will also apply to Licensed Products sold by
LICENSEE prior to the date of this Agreement.
Beginning with the next License Year after American Concrete Institute
Acceptance, LICENSEE shall pay FOUNDATION a minimum royalty payment each License
Year thereafter. The minimum annual royalty paid by LICENSEE to FOUNDATION shall
adhere to the schedule provided below.
Schedule of Annual Minimum Royalties Per License Year After Acceptance
of Licensed Product By the American Concrete Institute
First License Year after Acceptance $5,000
Second License Year after Acceptance $7,000
Third License Year after Acceptance $9,000
Fourth License Year after Acceptance $13,000
Beyond Fourth License Year after Acceptance $17,000
Such minimum annual royalty payments shall be due in full at the
beginning of each License Year and will be considered as a credit for the
royalties due for that License Year. The royalty reports as provide in Section
VIII herein should reflect the use of such credit. Such provision is to be
construed as an annual minimum royalty payment requirement and none of the
minimum royalty payments are refundable or applicable to succeeding License
Years.
VIII
ACCOUNTING AND PAYMENT SCHEDULE
Payment, reporting and financial accounting shall be on a semi-annual basis and
LICENSEE will deliver to FOUNDATION within sixty (60) days after the end of the
first six month period of each License Year ("First Half of License Year") and
the end of the second six month period of each License Year ("Second Half of
License Year"), a report in writing setting forth sales of Licensed Products
(including a negative report if no sales were made during the period) and will
accompany such report with an appropriate payment of royalty or minimum royalty
due for such period.
LICENSEE will keep accurate records, certified by it, showing the
information by which LICENSEE arrived at a royalty determination and will permit
a person appointed by the FOUNDATION and acceptable to LICENSEE 'to make such
inspection of said records as may be necessary to verify royalty reports made by
LICENSEE.
The report for the first quarter of the first License Year will include
all sales of Licensed Products by LICENSEE prior to the date of this Agreement
and will be accompanied by appropriate payment of royalty therefor in U.S.
dollars.
Conversion from foreign currencies, if any, shall be based upon the
conversion rate as published in the Wall Street Journal on the date that payment
is due.
Payments which are delayed beyond the sixty (60) days after which they
become due shall be subject to an interest charge of Prime Rate, as published in
the Wall Street Journal on the date that payment is due plus two percent (2%).
IX
TERM
The aforesaid exclusive license under a Licensed Application or
Licensed Patent shall last for a period not to exceed the expiration date of the
last to expire Licensed Patent.
X
DUTY OF DILIGENCE
LICENSEE shall exercise its best efforts to effect American Concrete
Institutes acceptance of Licensed Products and to effect the introduction of
Licensed Products into the commercial market as soon as practical. LICENSEE
agrees to develop and exploit Licensed Products with its best efforts by
manufacture and sale of Licensed Products for the duration bf the term of this
Agreement. LICENSEE further agrees to maintain reasonable quality control over
Licensed Products and generally attend to proper, safe, fair, lawful and
reasonable development and exploitation of the market for Licensed Products.
Failure of LICENSEE to comply with the provisions of this Paragraph
shall be considered a material breach of this Agreement.
XI
INFRINGEMENT OF LICENSED PATENT RIGHTS BY THIRD PARTIES
In the event that any infringement of a Licensed Patent shall come to
the attention of FOUNDATION or LICENSEE, then FOUNDATION and LICENSEE shall duly
inform each other. FOUNDATION, shall, in its sole discretion determine whether
or not to prosecute a patent infringement action. If FOUNDATION determines and
elects not to prosecute a patent infringement action, then LICENSEE may cause
legal proceedings against the alleged infringer at its own expense if there is a
showing of substantial likelihood of infringement, that there is substantial
competition by the alleged infringer, and that no other action for infringement
is pending at the time so that only one such lawsuit is pending at any time.
LICENSEE may defray the expenses of any such lawsuit to the extent of
50% of royalties payable by LICENSEE during the course of such legal
proceedings. Out of any damages or awards recovered by LICENSEE in such action
conducted by LICENSEE, FOUNDATION will first recover all royalties up to the 50%
of royalties payable by LICENSEE to FOUNDATION and withheld by LICENSEE to
defray costs of such lawsuit. LICENSEE will then recover its expenses for
conducting said litigation beyond the costs defrayed by withheld royalties.
FOUNDATION will also recover any expenses which it incurred on behalf of the
litigation. Any amount remaining belongs to LICENSEE, if LICENSEE conducts the
litigation, provided that on such amount LICENSEE shall pay FOUNDATION a royalty
as provided for in Section VII above. If FOUNDATION conducts the litigation then
any amount recovered belongs to FOUNDATION.
In any proceedings, FOUNDATION shall be entitled to employ counsel and
control the course of litigation if, in FOUNDATION's sole discretion, LICENSEE's
defense of patent rights is insufficient, or if LICENSEE fails to carry on
vigorous prosecution of said patent rights.
In the event LICENSEE seeks, with justifiable cause, to prosecute more
than one lawsuit at a time, FOUNDATION will not unreasonably withhold permission
where such actions are conducted entirely at LICENSEE's expense including
reimbursement of FOUNDATION's expenses incurred on behalf of such action.
In any action brought by LICENSEE, LICENSEE undertakes to indemnify for
and hold FOUNDATION harmless from any damages, costs or expenses incurred by
reason of such litigation.
XIII
ASSIGNMENT
The rights and obligations of LICENSEE under this Agreement are not
assignable but with the exception that such rights and obligations shall be
assigned in their entirety to a successor in business as a result of
acquisition, merger, restructuring, or reorganization.
XIV
SUBLICENSING
LICENSEE may sublicense its license hereunder to third parties provided
that FOUNDATION finds the sublicensee generally acceptable (such acceptance will
not be unreasonably withheld), that all sublicensees shall be obligated to all
the terms and conditions of this Agreement beneficial to or protective of
FOUNDATION, that LICENSEE shall make all reasonable efforts to ensure compliance
of all sublicensees on all such provisions and that LICENSEE will pay to
FOUNDATION fifty percent (50%) of all income and consideration received by all
sublicensees including but not limited to royalty payments, minimum royalty
payments and any payments however styled.
XV
TERMINATION
FOUNDATION may terminate this Agreement for noncompliance by LICENSEE
with any of its provisions by giving notice of its intentions to do so six (6)
months before termination.
LICENSEE may terminate this Agreement by giving notice of its
intentions to do so six (6) months before termination.
XVI
ARBITRATION AND JURISDICTION
All disputes over the meaning and interpretation of this Agreement
shall be resolved by conciliation and mediation and if mediation is unsuccessful
then disputes shall be finally settled by an Arbitrator selected by FOUNDATION
and LICENSEE. If FOUNDATION and LICENSEE cannot agree on an Arbitrator, then
disputes shall be resolved by an Arbitration 'Panel comprising one arbitrator
appointed by FOUNDATION, one arbitrator appointed by LICENSEE, and a Chairman of
the Arbitration Panel appointed by the first two arbitrators. Any such
arbitration proceeding shall be conducted in accordance with generally accepted
arbitration rules; shall be held in the State of New York, unless otherwise
agreed by the parties; and judgment upon the arbitration award may be entered in
any court having jurisdiction.
In order to initiate procedures for dispute resolution by conciliation,
mediation and arbitration either party may give written notice to the other of
intention to resolve a dispute, and absent satisfactory resolution, then to
arbitrate. Such notice shall contain a statement setting forth the nature of the
dispute and the resolution sought. If, within thirty (30) days of such notice a
resolution by conciliation between the parties themselves or by mediation has
not been achieved to the satisfaction of both parties, and if within sixty (60)
days from said written notice an Arbitrator or Arbitration Panel has not been
appointed with an arbitration schedule satisfactory to both parties, then either
party may proceed with judicial remedies.
FOUNDATION reserves the right and power to proceed with direct judicial
remedies against LICENSEE without conciliation, mediation or arbitration for
breach of the royalty payment and sales reporting provisions of this Agreement
after giving written notice of such breach to LICENSEE followed by an
opportunity period of thirty (30) days in which to cure such breach. In
collecting overdue royalty payments and securing compliance with reporting
obligations, FOUNDATION may use all judicial remedies available.
XVII
OTHER
LICENSEE agrees that it will not use the indicia or names FOUNDATION or
of Cornell University or any of their personnel in advertising, promotion, or
labeling of Licensed Products without prior written approval of FOUNDATION.
FOUNDATION makes no representations other than those specified in the
WHEREAS clauses. FOUNDATION MAKES NO EXPRESS OR IMPLIED WARRANTIES OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
FOUNDATION by this Agreement makes no representation as to the
patentability and/or breadth of the inventions and/or discoveries involved in a
Licensed Patent.
FOUNDATION by this Agreement makes no representation as to patents now
held or which will be held by others in the field of the Licensed Products for a
particular purpose.
LICENSEE agrees to defend, indemnify and hold FOUNDATION harmless from
and against all liability, demands, damages, expenses or losses for death,
personal injury, illness or property damage (including reasonable attorney's
fees) arising (a) out of use by LICENSEE or its transferees of inventions
licensed or information furnished under this Agreement, or (b) out of any use,
sale or other disposition by LICENSEE or its transferees of products made by use
of such inventions or information. As used in this clause, FOUNDATION includes
its Trustees, Officers, Agents and Employees, and those of Cornell University,
and "LICENSEE" includes its Affiliates, Subsidiaries, Contractors and
Sub-Contractors.
In discharge of the above, at such time that LICENSEE brings to sell
Licensed Products, LICENSEE will maintain general liability insurance in the
amount of at least one million dollars per occurrence with a deductible of not
more than $10,000 per occurrence with such insurers and on such terms as
FOUNDATION approves in writing against damage to or destruction of property and
injury to or death of individuals and against such other risks as FOUNDATION may
reasonably request arising out of or in connection with any of the Licensed
Products, FOUNDATION, Cornell University and their respective officers,
trustees, members of their governing boards, and employees will be named
insureds under all such insurance. Such insurance will also provide that
FOUNDATION will be given notice of any modification thereof and at least ten
(10) days prior written notice of cancellation or termination and the reason
therefore. LICENSEE will furnish FOUNDATION upon request, and in any event prior
to selling Licensed Product and on each anniversary of the date of the first
sale of Licensed Product, written confirmation issued by the insurer or an
independent insurance agent confirming that insurance is maintained in
accordance with the above requirements.
This Agreement shall be interpreted under the Laws of the State of New
York.
Reports, notices and other communications to the FOUNDATION shall be
addressed to:
President
CORNELL RESEARCH FOUNDATION, INC.
Cornell Business & Technology Park
00 Xxxxxxxxx Xxxxx, Xxxxx 000
Xxxxxx, Xxx Xxxx 00000
and notices and other communications to the LICENSEE to:
Xx. Xxx Xxxxxxx
Advanced Reinforcing Technologies, Inc.
000 Xxxxx Xxxxxxx Xxxxxx
Xxxxx Xxxx, Xx0xxxx 00000
IN WITNESS WHEREOF, the parties have caused this instrument to be
executed in duplicate as of the day and year first above written.
ATTEST: CORNELL RESEARCH FOUNDATION, INC.
By:_______________
Xxxxxxx X. Xxxxxx
Vice President
ATTEST:
Title:
Date
ADVANCED REINFORCING TECHNOLOGIES , INC.
By:
Xxx Xxxxxxx, Ph.D.,M.D
Title: Executive Vice President
