Exhibit 10.17
AGREEMENT ("Agreement") made as of this day of April, 2003,
between Nocopi Technologies, Inc., a Maryland corporation having a principal
place of business at 000 Xxxxx Xxxxxx, Xxxx Xxxxxxxxxxxx, Xxxxxxxxxxxx 00000
("Nocopi") and Euro-Nocopi, S.A., a societe anonyme registered with the Paris
Company Registry under the number B 395 113 335 ("Euro") having a principal
place of business at 61, rue Xxxx Xxxxxx, XXX Xxx Xxxxxxx, 00000, Xxxxxxxx,
Xxxxxx.
Recitals
A. The parties entered into a written agreement dated June 10,
1994 (the "License Agreement"), a copy of which agreement (as originally
executed) is annexed hereto as Exhibit A, and a copy of which as hereby amended,
and referred to hereinafter sometimes as the "Amended and Restated License
Agreement" is attached hereto as Exhibit M; and
B. The parties entered into a written agreement dated July 17,
1997 (the "1997 Settlement Agreement"), a copy of which agreement is annexed
hereto as Exhibit B; and
C. Certain disputes have arisen between the parties regarding
their respective rights and obligations under the License Agreement and under
The 1997 Settlement Agreement as a result of which the parties are presently
adversaries in an arbitration proceeding before the American Arbitration
Association in New York City under Case # 50-T133-00107-01 ("Arbitration
Proceeding") and
D. The parties, without acknowledging fault, wrongdoing or
liability whatsoever, desire to settle all controversies, claims, causes of
action and disagreements which as of the date hereof exist, or may exist,
between and among them and wish to discontinue the Arbitration Proceeding with
prejudice, it being the intent of the parties that the only legally enforceable
contractual obligations between them from the date hereof shall be the terms,
provisions and covenants contained in this Agreement and the Amended and
Restated License Agreement.
AGREEMENT
In consideration of the mutual promises and agreements herein
contained and the good and valuable consideration set forth below, the parties
agree as follows:
1. Recitals. The Recitals are incorporated herein by
reference, constitute representations of the parties and are a material part of
this Agreement.
2. Mutual Releases. (a) Except for the obligations of this
Agreement and the Amended and Restated License Agreement executed
contemporaneously herewith accruing on and after the Closing, Nocopi, for
itself, its officers, directors, employees, and agents hereby releases, remises,
acquits and forever discharges Euro, Euro's officers, directors, and employees,
of and from any and all actions, causes of action, claims, suits, demands,
debts, dues, obligations, accounts, contracts, agreements, controversies,
rights, judgments, damages, losses, costs, expenses, fees, attorneys fees,
sanctions, executions, liabilities, obligations and any and all other
liabilities of any kind whatsoever, either in law or equity, whether known or
unknown, fixed or contingent, suspected or unsuspected, which against any of
them Nocopi now has or may have, on or before the date of this Agreement.
(b) Except for the obligations of this Agreement and
the Amended and Restated License Agreement executed contemporaneously herewith
accruing on and after the Closing, Euro, for itself, its officers, directors,
and employees, hereby releases, remises, acquits and forever discharges Nocopi,
its officers, directors, former directors, affiliates, employees, and agents of
and from any and all actions, causes of action, claims, suits, demands, debts,
dues, obligations, accounts, contracts, agreements, controversies, rights,
judgments, damages, losses, costs, expenses, fees, attorneys fees, sanctions,
executions, liabilities, obligations and any and all other liabilities of any
kind whatsoever, either in law or equity, whether known or unknown, fixed or
contingent, suspected or unsuspected, which against any of them Euro now has or
may have, on or before the date of this Agreement.
3. Dismissal of Arbitration With Prejudice. At Closing,
counsel for the parties shall execute the Stipulation and Order of Dismissal
attached as Exhibit C and made a part hereof dismissing the Arbitration with
prejudice which shall promptly thereafter be filed by counsel for Nocopi with
the American Arbitration Association with copies delivered by facsimile to the
members of the arbitral panel.
4. Closing; Closing Date. "Closing" shall refer to the
delivery and payment of monies and exchange of executed documents required
herein. Closing shall take place at the offices of Euro's attorney, Xxxxxx X.
Xxxxxx, Esquire, 6th Floor, 000 Xxxxxxxxx Xxx., Xxx Xxxx, XX on the date of the
delivery of fully executed counterparts hereof by each party to the other, and
not later than April __, 2003, at 10 AM (the "Closing Date").
5. Euro's Performances.
(a) At Closing, Euro shall remit to Xxxxxxx Xxxxxxxxx
Xxxxx & Xxxxxx, as attorneys, by attorney escrow check drawn on an escrow
account maintained by Xxxxxx X. Xxxxxx, or, at Nocopi's option, by wire transfer
to an account designated in writing by said attorneys, the sum of Nine Hundred
Thousand (US$900,000) Dollars (the "Initial Payment") for the benefit of Nocopi.
(b) At Closing, Euro shall remit by wire transfer for
the benefit of Nocopi subject to the provisions of this Agreement, in escrow
nevertheless, to Xxxxxx X. Xxxxxx, Esq., as Escrow Agent, the sum of Two Hundred
Thousand (US$200,000) Dollars, to be used and disbursed pursuant to the
provisions of this Agreement, and Xx. Xxxxxx shall deliver to Nocopi an
acknowledgement that he has received such funds and holds them under and subject
to the terms and conditions of this Agreement.
(c) At Closing, Euro shall deliver to Nocopi or its
designee, and Nocopi shall deliver to Euro or its designee, such duly executed
documents in the form or forms attached as Exhibit D, as are necessary and
sufficient (i) to terminate with prejudice the proceedings initiated before the
Paris Tribunal de Grande Instance (the "Shareholder Proceeding") by writ of
summons dated March 13, 2001, by certain of Euro's current and/or former
shareholders (the "Shareholder Proceeding Plaintiffs"), Groupama-Vie, Maison
Xxxxxxx Xxxx, Courcoux Bouvet, Vitali Maritime Corporation, Mizebourne
Investment Corporation, Greenacres Enterprises, Inc., ING Xxxxx, Banque Finama,
Guernroy Limited, Fiduciare Suisse, Banque Privee Saint Dominique and Philippe
Patrimoine against Xxxxxx Xxxxxxx, Xxx Xxxxx, Xxxxxxx Xxxxx, Esquire, Xxxx
Xxxxxx, Esquire, and Xxxxxxx Xxxxxxxxx, M.D., Westvaco Brand Security, Inc.,
Westvaco Corporation, and Xxxxxxx X. Xxxx (the "Shareholder Proceeding
Defendants"), and (ii) to release all claims of each Shareholder Proceeding
Plaintiff against all Shareholder Proceeding Defendants, and all claims of each
Shareholder Proceeding Defendant against each Shareholder Proceeding Plaintiff
if any, to the extent they were actually asserted in the Shareholder Proceeding
or could have been asserted based upon the commencement of the Shareholder
Proceeding against such Shareholder Proceeding Defendant. Without limiting the
foregoing, the Shareholder Proceeding Plaintiffs shall irrevocably withdraw the
Shareholder Proceedings as to all Shareholder Proceeding Defendants and the same
shall constitute a settlement of the Shareholder Proceeding within the meaning
of Article 2044 et seq. of the French Civil Code, and a matter finally judged
between the parties which is not subject to appeal. The Shareholder Proceeding
Plaintiffs and the Shareholder Proceeding Defendants shall file a brief with the
tribunal stating their withdrawal in the form or forms attached as Exhibit E.
(d) At Closing, Euro shall execute and deliver all
documents necessary to terminate with prejudice the proceedings initiated by
Euro against Westvaco Brand Security, Inc. and Westvaco Corporation on December
28, 2000 and January 8, 2001 in the Paris Commercial Court provided (i) Westvaco
Brand Security, Inc. and Westvaco Corporation delivers to counsel for Euro at
Closing duly executed and acknowledged releases releasing Euro from any claims,
demands and causes of action which it brought, or could have brought, against
Euro in the said proceeding in the form or forms attached as Exhibit F.
(e) Euro's performances under this Agreement are
contingent upon the execution and delivery to Euro, at Closing, of a letter
executed by Nocopi on its letterhead signed by Nocopi's president to Bosch in
the form annexed as Exhibit G.
6. Representations regarding French legal proceedings. (a)
Euro represents and warrants that the proceedings initiated by Euro on January
4, 2000 before the Paris Tribunal de Grande Instance which resulted in a ruling
on March 13, 2001 have heretofore been terminated.
(b) Nocopi represents and warrants that proceedings
initiated by Nocopi on June 14, 2001 alleging the denigration of Nocopi by Euro
have heretofore been terminated.
(c) Nocopi represents and warrants that proceedings
initiated by Nocopi pertaining to the replacement of Xxxxxxx Xxxxxx as escrow
agent under the License Agreement have heretofore been terminated.
7. Nocopi's Performances.
(a) At Closing Nocopi shall deliver to Euro an
appropriately executed and acknowledged release and assignment in the form(s)
attached hereto as Exhibit H as to cause the release to Euro of all monies held
in escrow pursuant the March 13, 2001 order of the Paris Tribunal de Grande
Instance.
(b) Nocopi hereby waives and relinquishes any and all
claims which it may have, or which it heretofore asserted, to (i) monies
withheld and (ii) claims and accounts receivable for which monies have not been
withheld or otherwise set aside, but which may be due and owing from and by
Procter & Xxxxxx [Europe] (including but not necessarily limited to Procter &
Xxxxxx Service GmbH, NV Procter & Xxxxxx European Supply Company S.A., and
Procter & Xxxxxx UK together referred to herein for convenience as Procter &
Xxxxxx [Europe]) by reason of the payment of license fees, including minimum
fees and additional royalties, for the purchase and use of Nocopi Technology and
products incorporating Nocopi Technology as defined in the License Agreement, or
services related thereto from and after December 1, 2000. Nocopi acknowledges
that under the provisions of the License Agreement (which the parties hereby
agree shall be treated as continuing in full force and effect without
interruption from the inception date of June 10th, 1994 to the Closing Date) and
a separate agreement between Euro and Procter & Xxxxxx [Europe], all license
fees earned or due by reason of the sale to, purchase by or use or license of
products by Procter & Xxxxxx (Europe) incorporating Nocopi Technology or
services related thereto from and after December 1, 2000 belong to Euro. At
Closing Nocopi shall deliver an appropriately executed and acknowledged waiver,
release and assignment in the form(s) attached hereto as Exhibit I to transfer
to Euro its claims to and interests in all monies held in escrow or otherwise
retained or withheld by Procter & Xxxxxx [Europe] and all claims and accounts
receivable for which monies have not been withheld or otherwise set aside, but
which may be due and owing from and by Procter & Xxxxxx [Europe] by reason of
the premises.
(c) Nocopi represents and warrants that (i) it has
not sold, conveyed, transferred, assigned or encumbered to any person, business
organization or other entity, the right to receive, or ownership of, any of the
monies withheld by, or accounts receivable due from, Procter & Xxxxxx [Europe],
and (ii) it has received no payments directly or indirectly from or on behalf of
Procter & Xxxxxx [Europe] (on account of its use of Nocopi Technology) by reason
of the payment of license fees or for the purchase and use of products
incorporating Nocopi Technology or services related thereto from and after
December 1, 2000 to the Closing Date.
(d) Nocopi hereby discloses to Euro that Nocopi
Technology has heretofore been marketed to Procter & Xxxxxx (Europe) by or
through Sicon Sign Control System, having (or recently having) an office at
Xxxxxxxx Xxxxxxx 00, X-00000, Xxxxxx, Xxxxxxx, or with any affiliates,
successors or assigns thereof (together, "Sicon"), or with Xxx. Xxxxxxxxx Xxxx
("Xxxx") or any company with which Xxxx is affiliated, and that Sicon and/or
Xxxx claims a right to be compensated in connection therewith. Nocopi represents
to Euro that neither Sicon nor Xxxx is an affiliate of Nocopi.
(e) At closing Nocopi shall deliver to Euro an
authorization and consent in the form attached hereto as Exhibit J, requesting,
authorizing and permitting Procter & Xxxxxx (Europe) and its packaging providers
to disclose to Euro all information and statistics, including but not limited to
marking statistics, concerning the use of Nocopi technology by or on behalf of
Procter & Xxxxxx (Europe) since December 1, 2000.
(f) Following the Closing, Euro shall discuss an
agreement with Xxxx (or her organization) pursuant to which she may be
authorized to provide the Nocopi Technologies and related products and supplies
to certain of her German customers as a sales agent of Euro, in return for
reasonable compensation acceptable to Euro. Euro's obligations under this
Section are strictly limited to determining in good faith positions on all
relevant issues that are acceptable to it in its sole discretion and seeking in
good faith to negotiate an agreement with Xxxx. Nocopi understands and agrees
that neither Sicon nor Xxxx shall be considered a third party beneficiary of
this Agreement including, without limitation, this subsection 7 (f).
(g) Nocopi represents covenants and warrants that the
only agreements to which it is a party, directly or indirectly, which are
binding on it or which confer any rights on any other person or organization as
of the Closing Date, and which as of the Closing Date or in the future grant
legally enforceable rights to third parties by way of license or otherwise,
permitting the marketing, promoting, use (other than as an End User), sale,
licensing or exploitation of Nocopi Technology, as that term is defined in the
License Agreement of June 10, 1994 between the parties hereto, within the
Territory, are a certain license agreement between Nocopi and Westvaco Brand
Security, Inc. dated September 1, 2000, amended December 19, 2000, again amended
March 2, 2001 and again amended September 10, 2002. By the foregoing amendment
of its agreement with Westvaco Brand Security, Inc. of September 10, 2002, the
term of such agreement was extended to and expires on December 31, 2004
(hereinafter, the "Westvaco License"). Nocopi further represents and warrants
that except for the Westvaco License, no other person, entity, governmental or
Business Organization has acquired any rights to the use, sale or exploitation
of the Nocopi Technology within the Territory. Nocopi further represents,
covenants and warrants that upon the consummation of closing on the Closing
Date, no person, entity or Business Organization, other than Westvaco Brand
Security, Inc. pursuant to the Westvaco License and Euro, and their permitted
successors and assigns, has or shall have the right within the Territory,
pursuant to license agreement with Nocopi, as an authorized agent, licensee or
distributor of Nocopi, to manufacture, market or license to others the right to
use the Nocopi Technology as defined in the License Agreement or herein, or to
promote, use (except as an End User), sell, further license or exploit Nocopi
Technology. Nocopi further agrees, covenants and warrants that after the Closing
Date, it will not enter into any agreement with any person, entity or Business
Organization, granting any such rights within the Territory. The term "End User"
for the purpose hereof and for the purpose of the Amended and Restated License
Agreement shall mean (a) the Existing Customers of Euro (as hereafter defined),
(b) the Existing Customers of Nocopi (as hereafter defined), or (c) a person or
company which sells or distributes a product incorporating the Nocopi Technology
within the Territory pursuant to a valid agreement with Nocopi or Euro, or an
authorized licensee of Nocopi or Euro, but which itself obtains no rights in and
to the Nocopi Technology, and obtains no rights to license or sublicense the
Nocopi Technology in the Territory. An "authorized licensee" for the purpose
hereof, shall mean only the grantee or holder of a valid license not entered
into in breach of this Agreement or the License Agreement or the Amended and
Restated License Agreement.
(h) At Closing, Nocopi will deliver a duly executed
modification, and amendment to the license agreement between Nocopi and Westvaco
Brand Security, Inc. dated September 1, 2000, as thereafter amended, in the form
annexed hereto as Exhibit K, pursuant to which the license granted therein to
Westvaco Brand Security, Inc. shall be restricted as follows:
(i) prohibiting Westvaco Brand Security,
Inc. and its affiliates from the marketing, promoting, use, sale, licensing or
exploitation of Nocopi Technology within the Territory except that they shall
have the right, which shall expire on December 31, 2004, to sell and distribute
within the Territory paperboard or paper-based materials intended to be used for
the manufacture or assembly of packaging products, incorporating Nocopi
Technology, provided same is applied during the manufacturing process of such
paperboard or paper-based materials, but not including the coding or other
application of Nocopi Technology to finished packing or packaging materials;
(ii) prohibiting Westvaco Brand Security,
Inc. and its affiliates from assigning, transferring or further licensing,
within the Territory, the license granted to it in the license agreement of
September 1, 2000, as amended.
(i) Nocopi represents and warrants that to its
knowledge Westvaco has not entered into any agreement permitting a licensee to
manufacture, license, sell or otherwise exploit the Nocopi Technology in the
Territory.
(j) Nocopi shall not, without the prior written
consent of Euro or its permitted successors and assigns, enter into any
agreement to renew or extend the term of the Westvaco License (as it pertains to
the Territory). In addition, Nocopi covenants and agrees that it will give to
Westvaco on the Closing Date, written notice of its intention not to extend or
renew such term in a timely manner under its license agreement with Westvaco in
the form attached as Exhibit L.
(k) Nocopi represents and warrants that as of the
Closing Date there will be no legally enforceable contract prohibiting Xx.
Xxxxxxxx Xxxxxxxx (or such other person or persons designated by Euro) from
consulting with or otherwise performing services for Euro or from divulging to
Euro any technical (engineering or scientific) or other information relating to
the Nocopi Technology; provided, however, that the foregoing shall not be
interpreted or construed so as to diminish or limit the extent of any
confidentiality or non-disclosure obligation applicable to him, whether under
contract or at law, covering any non-technical financial or commercial business
information of Nocopi.
(l) At closing, Nocopi shall deliver to Euro the
Amended and Restated License Agreement, duly executed by Nocopi, in the form
attached as Exhibit M.
8. Mutual Indemnification. In the event that a Party or its
affiliates assert a suit or claim against a party to this agreement in any court
or tribunal which suit or claim is subject to the mutual releases herein
contained, Nocopi, in the case of a suit or claim brought by a Nocopi or a
Nocopi affiliate, or Euro, in the case of a suit or claim brought by Euro or a
Euro affiliate, shall, if such suit or claim is covered in whole or in part by
the mutual release, indemnify and hold the other harmless, but only to the
extent that any such suit or claim is covered by the mutual release, against any
and all liabilities incurred or to be incurred by the other by reason of any
such suit or claim, including but not limited to costs of defense (allocable to
covered claims(s)). It is the intent of the parties that the other party shall
not be required to expend monies in the defense of any claim described in this
Section 8, nor shall it be required to expend monies in the satisfaction of any
award or judgment which may be rendered against it thereon. Accordingly, (i) the
party whose affiliate instituted such suit or claim shall, within thirty (30)
days of receipt of an invoice therefor, pay all bills for attorneys' services
and disbursements submitted by the other party's counsel to the extent allocable
to the defense of any such claim, and (ii) shall procure and deliver, to the
other party, a complete satisfaction of any award or judgment obtained by the
affiliate of such party against the other party (on such claim), in proper form
for filing, or in the alternative at the option of the party whose affiliate
instituted such suit or claim, (iii) deliver to the other party sufficient
monies to satisfy any such judgment entered against the other party by reason of
the circumstances contemplated in this Section 8, including interest at the rate
accruing on judgment in the jurisdiction in which such judgment is entered, to a
date five (5) business days after the date of such delivery.
9. Termination of Nocopi's Ownership Interest in Euro.
(a) Nocopi represents and warrants that as of the
execution of this Agreement it is the owner of 2,492 common shares of Euro and
of certain warrants to purchase additional shares of Euro, all of which
represent 100% of the equity interests ("Interests") owned or claimed to be
owned by Nocopi, directly or indirectly, beneficially or otherwise, in Euro, and
that it has not sold, assigned, pledged, liened or otherwise hypothecated any of
such Interests, and is duly authorized to sell, convey, assign and transfer such
Interests to Euro free and clear of any liens, encumbrances and claims.
(b) Nocopi hereby transfers by gift and donation, and
without consideration, and in such manner Nocopi hereby assigns, conveys,
relinquishes, and releases, to all remaining shareholders of Euro of record as
of the date of Closing (except for Nocopi, as if Nocopi were never a
shareholder), in joint ownership in proportion to their respective shareholder
interests in Euro, any and all interests it ever had, now has or claims to have
in and to shares and warrants of Euro, whether issued or unissued, together with
all rights associated therewith, including but not limited to voting rights,
management rights, dividend rights (accrued or unaccrued), pre-emptive rights,
derivative rights, rights to receive notices, accounting rights, as well as any
and all other rights appurtenant to the ownership of shares or other interests
in Euro under the laws of any jurisdiction free and clear of any liens,
encumbrances and claims. In amplification and not by way of limitation of the
foregoing, Nocopi at the Closing shall execute and deliver the Share Transfer
Instrument attached as Exhibit N hereunder and in the future and from time to
time, without charge and without delay, execute and deliver any other instrument
reasonably required to effectuate the foregoing as requested in writing from
time to time by Euro.
(c) All oral or written shareholder agreements
pertaining to ownership and disposition of shares of Euro to which Nocopi is a
party are hereby canceled, terminated and declared null and void to the extent
they obligate or grant rights to Nocopi or any affiliate thereof.
10. Nondisparagement.Each of the parties agrees not to demean
or disparage the other with respect to the Arbitration or the matters covered
hereby, including but not limited to the claims asserted or which could have
been asserted in the Arbitration Proceeding or any of the proceedings described
in Articles 4 and 5 hereof, or the business, products or services of the other.
In amplification and not by way of limitation of the foregoing, each of the
parties covenants that it shall not make or cause to disseminate any statement,
written or otherwise, to any financial institution, brokerage institution,
insurance institution, rating agency, news and other media, which reasonably can
be construed as disparaging the other party and its reputation in the business
and industry in which it is ordinarily engaged. In further amplification and not
by way of limitation of the foregoing, neither party shall make or cause to
disseminate any statement, written or otherwise, stating, that it was the
"winner," or "xxxxxx" in the Arbitration Proceeding or any of the other
proceedings described in Articles 4 and 5 hereof. Nothing herein contained shall
preclude any party from making any disclosure of information reasonably
necessary (i) to enforce any claims arising from this Agreement, or (ii) to
fulfill its reporting obligations to its shareholders or to any government
agency to which such reporting is required, or in the case of Nocopi, its
obligations regarding the disclosure of information under and pursuant to the
Securities Exchange Act of 1934, as amended. The only press release to be made
by either of the parties pertaining to the dispute, the Arbitration and the
settlement of the dispute shall be in the form set forth herein as Exhibit O, or
as required, in the reasonable opinion of counsel to Nocopi, by the Securities
Exchange Act of 1934, as amended, and the rules and regulations thereunder.
11. Confidentiality. Except as contemplated by this Agreement,
the terms, conditions and provisions of this Agreement are and shall be kept
confidential, and neither party shall, directly or indirectly, use or disclose
the contents hereof or any information with respect thereto (other than the fact
that the parties have settled and resolved their differences and executed a
settlement agreement) except (i) under compulsion of legal process, (ii) as may
be required by any governmental, federal, state or local securities or other
law, or represent appropriate public reporting under such laws by a publicly
held company, (iii) in any action or proceeding brought to enforce this
Agreement or any portion thereof, and (iv) as will be required by Euro to obtain
shareholder approval. Nothing herein contained shall prohibit a Party from
disclosing to a prospective customer (a) the License Agreement and the Amended
and Restated License Agreement, and (b) the pertinent provisions of this
Agreement amending and modifying the License Agreement. To announce this
settlement, the parties shall jointly issue the press release attached hereto as
Exhibit O.
12. License Agreement Ratified. The parties hereby ratify the
License Agreement as a contractually binding, legally enforceable obligation
according to its terms, subject, however, to the modifications and amendments
thereto contained in this Agreement. The Amended and Restated License Agreement,
amending and restating the License Agreement, is attached hereto as Exhibit M,
and, in such form, will be executed and delivered by the parties at the Closing.
If and to the extent that any of the provisions of this Agreement conflict or
are otherwise inconsistent with any of the provisions of the Amended and
Restated License Agreement, whether or not such inconsistency is expressly noted
in this Agreement, the provisions of this Agreement shall prevail. To the extent
that either party has heretofore terminated, or attempted to terminate, the
License Agreement, by reason of alleged default or otherwise, any such
termination or attempted termination is, effective immediately, hereby vacated,
withdrawn, canceled, void and of no force and effect. Defined terms used herein
shall have the same meanings as provided in the License Agreement unless
otherwise provided.
13. Modifications and Amendments to License Agreement; Other
License Matters.
(a) The parties hereby amend and restate the License
Agreement to read in full in the form attached hereto as Exhibit M.
(b) In the event at any time following the execution
of this Agreement Nocopi improves, modifies, alters, adds to or otherwise
changes the Nocopi Technology (including but not limited to Know-How and
Patents) it shall notify Euro (which notice shall contain a brief description of
the improvement, alteration, addition or change) and offer to license the right
to the use of such improvements, modifications, alterations, additions and
changes to Euro for use by Euro in the Territory pursuant to this Agreement for
a reasonable additional royalty to be negotiated by the parties in good faith.
In determining the reasonableness of such additional royalty, the royalties
charged by Nocopi to other licensees shall be considered. With respect to any
change or improvement reflected by the filing of any new or amended patent
application, such notice shall be given within thirty days after such filing is
made. With respect to other changes or improvements, such notice shall be given
every six months for all changes and improvements first offered to any other
customer or client of Nocopi since the prior notice to Euro. Nothing herein
contained shall be deemed to require Euro to accept the offer.
(c) Nocopi represents and warrants that as of the
execution of this Agreement it is, and on the Closing Date shall be, the
exclusive owner of the Nocopi Technology, that it has not sold or transferred
any of the Nocopi Technology, that it has the right and authority to grant to
Euro the rights granted herein with respect thereto, that such grant will not
infringe on any other agreement, and that Euro's use and exploitation thereof in
any manner authorized hereby will not infringe on the rights of any third party.
Nocopi further represents and warrants that (i) it has not granted to any other
person any conflicting right or license to the Nocopi Technology in the
Territory, (ii) to its knowledge, there are as of the date hereof no pending or
threatened claims, demands, proceedings or actions with respect to the Nocopi
Technology, contesting its right to full ownership of the Nocopi Technology, and
(iii) that it has the full power and authority to grant to Euro hereunder the
rights in the Nocopi Technology granted to Euro under the License Agreement as
herein amended.
(d) It is the intent of the parties pursuant to the
Amended and Restated License Agreement, and this Agreement that Euro receive all
information, data, specifications and know-how in Nocopi's possession relating
to the assembly, manufacture and production of all components or any part of any
component or ink or revealer incorporating Nocopi Technology. Nocopi represents
and warrants that all such information, data, specifications and know-how will
be delivered to Euro on the Closing Date. To effectuate compliance with the
foregoing, Nocopi shall make all such information, data, specifications and
know-how presently existing available, no later than ten (10) business days
prior to the Closing Date, for the purpose of examination thereof by an expert
of Euro's selection (which may be Ashavir Gundjian at Euro's option). The expert
shall agree to hold such information, data, specifications and know-how in
confidence prior to the Closing and shall not disclose, disseminate or
distribute such material other than for the purpose herein contemplated, but may
provide to Euro in advance of closing his assessment concerning the quality and
completeness of the information made available.
(f) Notwithstanding anything to the contrary
contained in Section 13.01 of the Amended and Restated License Agreement as
herein modified and amended, Euro and its successors in interest shall be
permitted, to assign, in whole and not in part, its rights hereunder and under
the License Agreement and Amended and Restated License Agreement, to any
business organization acquiring or succeeding in any manner to Euro's business.
Notwithstanding anything to the contrary contained herein, a transfer of the
license agreement as herein modified and amended shall not constitute an
assignment provided such transfer is part of a corporate merger, consolidation,
amalgamation, or consolidation of Euro or is part of a sale of substantially all
of the business of Euro and its successors in interest.
14. Licensed Trademarks.
(a) "Licensed Trademarks" means the trademark
registrations and trademark applications of Nocopi within the Territory. Nocopi
hereby grants to Euro the right, subject to the conditions and limitations set
forth in this Agreement and the Amended and Restated License Agreement, in the
Territory and no where else, to use and exploit the Licensed Trademarks only in
connection with its permitted use of the Nocopi Technology. Upon prior written
notice to Nocopi Euro shall have the right, at its sole cost and expense, within
the Territory, to pursue legal action against any party for infringement by such
party, occurring within (but not outside) the Territory, of the Licensed
Trademarks filed within the Territory (provided that, if requested by Nocopi,
Euro shall consult with Nocopi concerning such legal action and the anticipated
consequences thereof). Any recovery or recoveries thereunder shall belong
exclusively to Euro. In connection with its use of the Licensed Trademarks, Euro
shall only use the name "Euro-Nocopi" or another name as a trade name in the
Territory and as a website domain in the Territory provided that Euro shall not
use the name "Nocopi" as a trademark, trade name or domain name inside the
Territory unless it is immediately preceded by the term "Euro". In no event
shall Euro use "Nocopi" or "Euro-Nocopi" in any manner to promote or market
products and services outside the Territory except as otherwise permitted
herein. Further, Euro shall not use the Licensed Trademarks in order to suggest
any association or affiliation between Nocopi and Euro.
(b) Nocopi represents and warrants that it is the
exclusive owner of the Licensed Trademarks, that it has the right and authority
to grant to Euro the rights granted herein with respect thereto, and that Euro's
use and exploitation thereof in any manner authorized hereby will not infringe
the rights of any third party. Nocopi further represents and warrants that (i)
it has not granted to any other person any right or license to the Licensed
Trademarks in the Territory, (ii) to its knowledge, there are as of the date
hereof no pending or threatened claims, demands, proceedings or actions with
respect to the Licensed Trademarks, contesting its right to full ownership of
the Licensed Trademarks or alleging that the Licensed Trademarks infringe or
otherwise violate the rights of third persons, or asserting that a third person
has infringed or otherwise violated the Licensed Trademarks; and (iii) that it
has the full power and authority to grant to Euro hereunder the rights in the
Licensed Trademarks hereby granted to Euro.
15. European Patents.Exhibit P is a schedule of all unexpired
patents issued by any issuing jurisdiction in the Territory and all applications
filed by Nocopi for any such Patents, in either case, covering or affecting the
Nocopi Technologies (collectively, the "European Patents"). Nocopi hereby grants
to Euro the right, under the Amended and Restated License Agreement and subject
to the conditions and limitations set forth therein and in this Agreement, in
the Territory and no where else, to use and exploit the European Patents only in
connection with its permitted use of the Nocopi Technology except for such
patent rights which are in the public domain on the expiration thereof. Nocopi
represents and warrants that it is the exclusive owner of the European Patents
that it has the right and authority to grant to Euro the rights granted herein
with respect thereto, and that Euro's use and exploitation thereof in any manner
authorized hereby will not infringe the rights of any third party. Nocopi
further represents and warrants that, except as described herein with respect to
Westvaco and end users (i) it has not granted to any other person any right or
license to the European Patents in the Territory which conflict with, diminish
or impair the rights granted to Euro herein and in the Amended and Restated
License Agreement, (ii) to its knowledge, there are as of the date hereof no
pending or threatened claims, demands, proceedings or actions with respect to
the European Patents, contesting its right to full ownership of the European
Patents or alleging that the European Patents infringe or otherwise violate the
rights of third persons, or asserting that a third person has infringed or
otherwise violated the European Patents; and (iii) that it has the full power
and authority to grant to Euro hereunder the rights in the European Patents
hereby granted to Euro. Any action that may be needed or desirable to prosecute,
perfect or continue the European Patents in effect, and to enforce its rights
against infringements thereon, may be taken by Euro at its expense in its
discretion; provided that Nocopi shall cooperate (at Euro's expense) in all such
filings as the owner of the European Patents. Any recovery or recoveries
thereunder shall belong exclusively to Euro.
16. Internet Activities. Each party shall, on any Internet
website which it uses directly or indirectly, include a legend that it is not
affiliated with the other party, which legend shall be prominently displayed to
customers originating from or interested in sales in (for Nocopi's website) or
outside (for Euro's website) the Territory, in either case, along with a
hyperlink to the other party's website. Nocopi shall not solicit orders or
otherwise directly advertise to potential customers in the Territory, and Euro
shall not solicit orders or otherwise directly advertise to potential customers
outside the Territory via the Internet.
17. Restrictive Covenants.
(a) Nocopi covenants that it shall not, directly or
indirectly, without the written consent of Euro or Euro's permitted successors
and assigns, establish, maintain, keep or operate an office, plant, factory,
warehouse or other physical location in the Territory, nor shall it establish,
maintain, or keep (i) a mailing address within the Territory, (ii) a telephone
number having an area code or exchange in the Territory, or (iii) a telephone
listing in any telephone directory that (A) is published for exclusive or
principal use by persons within the Territory, or (B) includes exclusively or
principally businesses located within the Territory; or (iv) an Internet domain
having a suffix designated for use primarily within the Territory (such as .De
or .Fr), nor shall it advertise its products and services in publications
published and distributed for principal use within the Territory. Nocopi further
agrees, warrants and covenants that it shall not, directly or indirectly,
without the written consent of Euro or its successors and assigns, contract
with, engage or otherwise hire the services of a manufacturer's representative
or sales agent the principal place of business of which is located in the
Territory. To facilitate the exclusive license granted to Euro in paragraph 2.01
of the Amended and Restated License Agreement, Nocopi further agrees, warrants
and covenants that it shall not, directly or indirectly, without the written
consent of Euro (or its successors and assigns), promote or market, or license
or sell any products or services containing or incorporating, the Nocopi
Technology to any person, governmental or municipal entity, academic institution
the principal headquarters or executive offices of which is located in the
Territory or any European-based Business Organization, other than currently
Existing Customers of Nocopi. The negative covenants contained in this
subsection shall not, directly or by implication, be construed as evidencing any
intent of the parties to expand the scope of Euro's licensed rights beyond those
expressly set forth herein or in the License Agreement as hereby amended.
(b) Euro covenants that it shall not directly or
indirectly, without the written consent of Nocopi or Nocopi's successors and
assigns, establish, maintain, keep or operate an office, plant, factory,
warehouse or other physical location outside of the Territory, nor shall it
establish, maintain, or keep (i) a mailing address outside of the Territory,
(ii) a telephone listing in any telephone directory that (A) is published for
exclusive or principal use by persons outside the Territory, or (B) includes
exclusively or principally businesses located outside the Territory, (iii) a
telephone number having an area code or exchange outside the Territory, or (iv)
an Internet domain having a suffix or designation established outside the
Territory, nor shall it advertise its products and services incorporating the
Nocopi Technology in publications published and distributed for principal use
outside the Territory. Euro further agrees, warrants and covenants that it shall
not, directly or indirectly, without the written consent of Nocopi or Nocopi's
successors and assigns, contract with, engage or otherwise hire the services of
a manufacturer's representative or sales agent the principal place of business
of which is located in outside the Territory. To facilitate the license granted
to Euro in paragraph 2.01 of the Amended and Restated License Agreement granting
Euro the exclusive right to market, promote, sell, use, manufacture and license
the Nocopi Technology only in the Territory, Euro further agrees, warrants and
covenants that it shall not, directly or indirectly, without the written consent
of Nocopi or Nocopi's successors and assigns, solicit, market, promote, use,
manufacture, exploit, license or sell any products or services containing or
incorporating the Nocopi Technology to any person, governmental or municipal
entity, academic institution or Business Organization except for such of the
foregoing as have their principal headquarters or executive offices within the
Territory or any European Based Business Organization. The negative covenants
contained in this subsection shall not, directly or by implication, be construed
as evidencing any intent of the parties to expand the scope of Euro's licensed
rights beyond those expressly set forth herein or in the License Agreement as
hereby amended.
(c) "Business Organization" means any business firm,
corporation, partnership, limited liability company or other entity engaged in
business or commerce. It is the intent of the parties to respect the territorial
exclusivity described in this Agreement and in the License Agreement, as
amended, by limiting Euro's business involving Nocopi Technology to
"European-based" Business Organizations and prohibiting Nocopi from transacting
business involving Nocopi Technology with "European-based" Business
Organizations in either case, other than existing clients. For the purpose of
determining whether or not a Business Organization is European-based, the
location of the headquarters or executive offices of a Business Organization as
being within or outside of the Territory shall be a significant consideration.
Parent entities, brother/sister entities and subsidiary entities which do
business together as a single integrated concern shall each be deemed to
constitute a single Business Organization with its headquarters or executive
offices in the place in which the parent entity maintains its headquarters.
However, entities which, although related, do not do business as a single
integrated concern, shall be deemed to be separate Business Organizations whose
headquarters are located at the respective places where each of the parent
entities, brother/sister entities and/or subsidiary business entities maintain
its or their separate headquarters and or executive offices. [By way of example,
Volvo does not do business as a single integrated concern with Ford Motor
Company and Procter & Xxxxxx (US) is distinct from Procter & Xxxxxx (Europe)].
Accordingly the headquarters or executive offices of Volvo is, for the purposes
hereof, different from the headquarters and executive offices of Ford Motor
Company, and the headquarters or executive offices of Procter & Xxxxxx (US) is
different from the headquarters and executive offices of Procter & Xxxxxx
(Europe)]. In the case of Business Organizations which maintain headquarters or
executive offices in locations of convenience, such as tax xxxxxx or locations
of limited liability, such Business Organization shall be considered
"European-based" if its predominant business activities are conducted within the
Territory and not European-based if its predominant business activities are
conducted elsewhere.
It is the intent of the parties to respect the
territorial exclusivity described in this Agreement and in the License
Agreement, as amended. The parties acknowledge that the proliferation of
multi-national Business Organizations and the various manners in which such
organizations conduct business, including the use of affiliates, subsidiaries
and related entities, may make it difficult to determine whether, under a given
set of circumstances, a company is "European-based" or is not "European-based,"
which is and shall be the determining factor and intent of the parties in
complying with and enforcing the territorial exclusivity described in this
Agreement and in the License Agreement, as amended. Accordingly, in the event of
a dispute between the parties as to whether a company with which a party
transacts business is "European based" or is not "European based," that issue
shall be determined by expedited arbitration in the City of New York under the
commercial arbitration rules of the American Arbitration Association by a single
arbitrator who shall be an attorney at law admitted to practice in the State of
New York.
(d) Notwithstanding anything herein contained to the
contrary, and without otherwise limiting or waiving the express terms of this
Agreement, Euro shall have the right to sell products and services containing or
incorporating Nocopi Technology to the Existing Customers of Euro identified in
Exhibit Q notwithstanding that some or all of such Existing Customers of Euro
manufacture, use or otherwise deal in products outside the Territory, and
Nocopi, agrees, covenants and warrants that it will not directly or indirectly
solicit, market or sell products or services containing or incorporating Nocopi
Technology to such Existing Customers of Euro.
(e) Notwithstanding anything herein contained to the
contrary, and without otherwise limiting or waiving the express terms of this
Agreement, Nocopi shall have the right to sell products and services containing
or incorporating Nocopi Technology to the Existing Customers of Nocopi
identified in Exhibit R notwithstanding that some or all of such Existing
Customers of Nocopi manufacture, use or otherwise deal in products in the
Territory, and Euro agrees, covenants and warrants that it shall not directly or
indirectly solicit, market or sell products or services containing or
incorporating Nocopi Technology to such Existing Customers of Nocopi.
(f) Notwithstanding anything contained herein to the
contrary, the licensed technology may be used within the Territory by an End
User pursuant to agreement with Nocopi or a distributor provided that the
license granted by Nocopi either (a) to such End User, or (b) to such
distributor, in either case does not violate this Agreement or the Amended and
Restated License Agreement, and the licensed technology may be used outside the
Territory by an End User pursuant to agreement with Euro or a distributor
provided that the license granted by Euro either (a) to such End User, or (b) to
such distributor, in either case, does not violate this Agreement or the Amended
and Restated License Agreement.
18. Release of Existing Escrow. Nocopi hereby releases Xxxxxxx
Xxxxxx, Esq. ("Xxxxxx") from the provisions and restrictions of a certain escrow
agreement dated June 10, 1994 pursuant to which Xxxxxx held in escrow certain
documents allegedly containing secret, non-public and proprietary information
and hereby authorizes Xxxxxx to turn over all items kept by him in escrow
pursuant thereto to Euro. Nocopi further releases Xxxxxx from any and all claims
and causes of action it has or ever had, known or unknown, against Xxxxxx by
reason of the escrow and escrow agreement herein described.
19. Escrow. The Escrow Agent shall, from the escrowed amount
described in paragraph 4(c) of this Agreement, remit to or on behalf of Nocopi
the sum of $50,000 from the escrowed amount on March 1, 2004, $50,000 on March
1, 2005, $50,000 on March 1, 2006 and $50,000 on March 1, 2007 (the "Payment
Dates") unless, prior to any such Payment Date, the Escrow Agent receives
evidence reasonably satisfactory to him that an action has been commenced by
Euro against Nocopi in a court of competent jurisdiction which contains an
allegation that Nocopi has committed an unremedied material breach of this
Agreement or the Amended and Restated License Agreement and seeks an order of
such court effectively restricting the Escrow Agent from remitting escrowed
funds to Nocopi (a "Restraining Order"), in which case the Escrow Agent shall
retain the then escrowed funds in escrow until (a) receipt of written consent
from Euro or its designee that a payment may be made, or (b) receipt of a final
decision or award of such court authorizing or effectively permitting the
disposition of the balance of the escrowed funds. Notwithstanding the foregoing,
if the Escrow Agent, having received reasonable evidence of the commencement of
such action, has not received, within sixty (60) days following a Payment Date,
either (i) the Restraining Order, or (ii) Euro's legally enforceable written
undertaking to pay to Nocopi, in the event that it is determined to be entitled
to the escrowed funds, such funds together with interest thereon until paid, at
a rate per annum of twelve percent (12%), then, in such event, the Escrow Agent
shall remit the sum then due to Nocopi. Nothing herein contained shall be
construed as limiting the amount of damages or other relief which may be
available by reason of any breach or default.
(i) The duties of the Escrow Agent are only as herein
specifically described, are purely ministerial in nature, and the Escrow Agent
shall incur no liability whatsoever except for willful misconduct or gross
negligence as long as the Escrow Agent has acted in good faith and the Escrow
Agent is hereby released from any act done or omitted to be done in good faith
in the performance of his duties (except for willful misconduct or gross
negligence); the Escrow Agent shall be entitled to rely upon any document,
instrument or signature believed by him to be genuine; the Escrow Agent may
assume that any person purporting to give any notice of instructions in
accordance with the provisions hereof has been duly authorized to do so; the
Escrow Agent shall not be bound by any modification, cancellation or rescission
of this Agreement unless in writing and signed by each of the parties hereto.
(ii) The parties shall, jointly and severally, reimburse,
indemnify the Escrow Agent for, and hold him harmless against, any and all loss,
liability, costs or expenses, including reasonable attorneys's fees and
disbursements, incurred without gross negligence or willful misconduct (or lack
of good faith) on the part of the Escrow Agent, arising out of or in connection
with any dispute among the parties pertaining to the escrow fund and the
distribution thereof, including but not limited to any action or proceeding in
connection therewith.
(iii) The Escrow Agent shall not have any liability or
obligation for loss of all or any portion of the proceeds being held in escrow
by reason of the insolvency of failure to the institution or depository with
whom the escrow is maintained. The escrow shall be maintained in an XXXX account
regularly maintained by the Escrow Agent with Chase Manhattan Bank or in an
interest bearing account or Certificate(s) of Deposit issued by such bank. Any
interest earned on the escrow fund shall be the property of the Escrow Agent as
partial compensation to him.
(iv) The Escrow Agent has executed this Agreement solely
to confirm that the Escrow Agent shall act in such capacity and will hold the
escrowed amount, as and when received, in escrow pursuant to the provisions of
this Agreement.
20. Noncircumvention.This Agreement and the Amended and
Restated License Agreement are and shall be binding on the parties, their
respective successors and permitted assigns. Neither party shall directly or
indirectly circumvent or attempt to circumvent, the terms, provisions, covenants
and agreements herein contained and the intent of and reasonable expectations of
the parties as embodied in this Agreement and the License Agreement. The
covenant of good faith and fair dealing, implied in each aspect of this
Agreement, shall be particularly applicable here. As used herein, the phrase
"directly or indirectly," when pertaining to actions to be taken or not taken by
a party or a restriction imposed on a party, includes both direct actions by the
party itself and indirect actions by the party acting by proxy, agency, by the
use of artifice or device, third party, nominee, or in any other manner
(including, without limitation, by or through any officer, director or any
affiliate under its control, or through the establishment of any subsidiary or
controlled business organization, or by causing or inducing any third party or
affiliate); provided, however, that a party's causing or inducing another party
to act shall be presumed only where the third party directly acting is under the
effective control of the party to this Agreement alleged to have acted
indirectly.
21. Notices. Any notice required or permitted to be given
under this Agreement will be addressed as follows:
If to Nocopi: Nocopi Technologies, Inc.
000 Xxxxx Xxxxxx
Xxxx Xxxxxxxxxx, XX 00000
Attention: President
with a copy to: Xxxxxx X. Xxxxxx, Esq.
Xxxxxxx Aronchick Xxxxx & Xxxxxx
Xxx Xxxxx Xxxxxx
Xxxxxxxxxxxx, Xxxxxxxxxxxx 00000-0000
If to Euro: Euro Nocopi, S.A.
Attention: Xxxxxx xx Xxxxxxxx
61, rue Xxxx Xxxxxx, XXX Xxx Xxxxxxx, 00000
Xxxxxxxx, Xxxxxx.
with a copy to: Xxxxxx X. Xxxxxx, Esq.
000 Xxxxxxxxx Xxxxxx - 0xx Xxxxx
Xxx Xxxx, Xxx Xxxx 00000
All notices shall be effective upon receipt.
22. Remedies on Breach or Default. (a) The parties represent
and acknowledge to each other that apart from the agreements herein contained
requiring the payment of money, the breach by or on behalf of a party, its
affiliates, assigns, nominees and successors, of the provisions, agreements,
covenants, warranties and conditions of this Agreement and the License Agreement
will cause irreparable harm not fully compensable in damages. Accordingly, each
party shall have the absolute right, in the event of a breach or threatened
breach of any of the agreements, covenants, warranties and conditions of this
Agreement other than those requiring the payment of money, to file for, request
and obtain, in any appropriate jurisdiction, a temporary, preliminary, and/or
permanent injunction, including a temporary restraining order during the
pendency of proceedings, judicially prohibiting, enjoining and restraining the
other party from engaging in acts or omissions prohibited by or in violation of
the express provisions of this Agreement. Each of the parties hereby waives and
relinquishes any requirement for the filing of a bond or undertaking as a
condition of obtaining such temporary restraining order, or temporary,
preliminary, or permanent injunction, except, however, that if it is finally
determined that the party seeking such injunction or restraining order was not
entitled thereto, such party will be liable to pay to the other party all
damages and costs which were sustained, if any, by reason of the granting of the
temporary restraining order or injunction. For the purposes hereof, a temporary
restraining order may be granted without notice on motion or application for a
preliminary injunction to a court of competent jurisdiction on a showing to such
court of facts demonstrating a breach or threatened breach of any of the
non-monetary agreements, covenants, warranties and conditions of this Agreement.
The parties shall thereafter be subject to the due process requirements of such
jurisdiction regarding judicial determination of the dispute.
(b) Nothing herein contained shall restrict or limit
a party's right to seek monetary damages sustained as a result of a breach of
this Agreement, nor shall the right of a party to seek monetary damages
therefore preclude its ability to obtain temporary or permanent injunctive
relief.
23. Representations and Warranties. Each of the parties hereto
represents and warrants, with respect to itself, as follows:
(a) Due Authorization. It has all necessary capacity,
corporate or other power and authority to execute, deliver and perform its
obligations under this Agreement, the License Agreement and each related
document (which means any document, instrument or agreement to be entered into
by a party hereto pursuant to this Agreement); the execution, delivery and
performance by it of this Agreement, the Amended and Restated License Agreement
and each related document have been duly authorized by all necessary corporate
action on its part; and this Agreement, the Amended and Restated License
Agreement and each related document has been (or, as the case may be, will be)
duly and validly executed and delivered by it and constitutes its legal, valid
and binding obligation, enforceable against it in accordance with its terms,
except as enforceability may be limited by applicable bankruptcy, insolvency,
reorganization, moratorium or similar laws affecting the rights of creditors
generally and general principles of equity.
(b) No Consent or Approvals. No consent, approval or
authorization of, or declaration, filing or registration with, any governmental
or regulatory authority, or any other Person which has not been obtained is
required to be made or obtained by it in connection with the execution, delivery
and performance of this Agreement, the Amended and Restated License Agreement
and each related document and the consummation of the transactions contemplated
hereby and thereby.
(c) No Breach. None of the execution and delivery of
this Agreement, the Amended and Restated License Agreement and each related
document, the consummation of the transactions herein or therein contemplated or
compliance with the terms and provisions hereof or thereof will violate,
conflict with or result in a breach of, its articles of incorporation or
by-laws, any applicable law or regulation, any order, writ, injunction or decree
of any court or governmental authority or agency, any agreement or instrument to
which it is a party or by which it is bound or to which it is subject, or
constitute a default under any such agreement or instrument, or result in the
creation or imposition of any lien upon any of its revenue or assets pursuant to
the terms of any such agreement or instrument.
24. General Provisions.
(a) Amendments. This Agreement contains all of the
agreements, understandings, conditions, warranties, and covenants made between
the parties, whether oral or written, and, except as expressly set forth therein
to the contrary, it may not be altered, modified, terminated, or discharged
except by a writing signed by the party against whom such alteration,
modification, termination or discharge is sought.
(b) No Waiver. None of the terms of this agreement
can be waived or modified or terminated except by an express agreement, in
writing, signed by both parties. The failure of either party hereto to enforce,
or the delay by either party in enforcing any of its rights under this Agreement
shall not be deemed a continuing waiver or a modification thereof and either
party may, within the time provided by applicable law, commence appropriate
proceedings to enforce any or all of such rights. No person, firm, group,
partnership, association or corporation other than the parties hereto shall be
deemed to have acquired any rights by reason of anything contained in this
Agreement.
(c) Additional Documents. Each of the parties hereto,
without cost to the other shall, at any time and from time to time, hereafter
execute and deliver any and all further instruments, documents and assurances
and shall perform any acts that the other party may reasonably request for the
purpose of giving full force and effect to the provisions of this Agreement.
(d) Notices.Unless otherwise provided herein, all
Notices to be given, shall be given or made at the respective addresses of the
parties unless notification of a change of address is given, in writing, and the
date of delivery shall be deemed the date the Notice is given.
(e) Binding Effect. This Agreement shall be binding
upon, and shall inure to the benefit of the parties hereto and their respective
affiliates, officers, directors, shareholders, successors and assigns.
(f) Governing Law - Prevailing Party in Disputes.
This Agreement and the Amended and Restated License Agreement, and the rights
and obligations created thereby between the parties shall be governed by and
construed in accordance with the laws of the State of New York. The
substantially prevailing party in any action or proceeding brought by reason of
this Agreement shall be entitled to recover all reasonable attorney's fees and
costs of litigation actually incurred, including costs of investigation and
disbursements reasonably incurred in preparation for such litigation, including
travel and lodging.
(g) Severability. This Agreement is intended to be
performed in accordance with, and only to the extent permitted by, all
applicable laws, ordinances, rules and regulations of the jurisdiction in which
enforcement may be made. If any provision of this Agreement or its application
to any person or circumstance shall, for any reason and to any extent, be found
to be invalid or unenforceable, the remainder of this Agreement or the
application of such provision to other persons or circumstances shall not be
affected thereby, but rather shall be enforced to the greatest extent permitted
by law.
(h) 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 agreement.
(i) Captions. The captions used herein are inserted
for reference purposes only and shall not affect the interpretation or meaning
of this Agreement.
(j) Gender - plural. Words of gender used in this
Agreement shall be interpreted to include the other gender or a corporate or
other business entity, and words in the singular number shall be interpreted to
include the plural (and vice-versa), where the sense so requires. Accordingly,
the use of the word "he" shall include "she" and "it" where the sense so
requires.
(k) No representations - merger. This Agreement and
the Amended and Restated License Agreement contains the entire understanding of
the parties and any promises or representations not herein contained shall have
no force and effect, unless in writing and duly signed by the party to be
charged and expressly stated therein to survive execution of this Agreement. All
other agreements, representations or understandings between or among the parties
are merged herein and are null and void except as herein contained. Each party
specifically represents and warrants that he has not relied on any written or
oral statement or representation made by another party prior to executing this
Agreement, either pertaining to the terms and conditions of this Agreement, the
Premises or otherwise, and each party represent and warrants to the other that
he has relied on his own due diligence in investigating and ascertaining all
relevant and material facts and circumstances prior to executing this Agreement,
has had the opportunity to and did consult with attorneys, accountants and other
professionals pertaining to the Premises and to the terms and conditions of this
Agreement, and has executed this Agreement relying solely thereon.
(l) No Joint Venture.Nothing herein contained shall
be deemed or construed to constitute or create between the parties a
partnership, joint venture or agency, and neither party shall have the power to
obligate or bind the other party in any manner whatsoever, except as expressly
set forth herein. Each party is an independent contractor engaged in its own and
entirely separate business from that of the other, and shall remain as such
except as limited by the express provisions of this Agreement.
IN WITNESS WHEREOF the parties hereto have executed this
Agreement as of the day and year first above written.
Nocopi Technologies, Inc. Euro-Nocopi, S.A.
By: By:
-------------------------------- -------------------------------------
Xxxxxxx Xxxxxxxxx, CEO Xxxxxx xx Xxxxxxxx, Liquidateur
-----------------------------------
Xxxxxx X. Xxxxxx, Escrow Agent
as to Escrow Provisions Only
Schedules and Exhibits
----------------------
Exhibit No. Exhibit
----------- -------
A. License Agreement of June 10, 1994
B. 1997 Settlement Agreement
C. Stipulation and Order of Dismissal
D. French Shareholder Proceeding Terminations
E. Shareholder Proceeding Plaintiff and Defendant Briefs of Withdrawal
F. Euro's Discontinuance of Paris proceeding against Westvaco and
Westvaco release of Euro.
G. Letter to Bosch
H. Release and Assignment (Paris judicial escrow)
I. Release and Assignment (P & G Escrow)
J. Letter of authorization to Procter and Xxxxxx [Europe]
K. Modification of Westvaco License Agreement
L. Notice to Westvaco
M. Form of Amended and Restated License Agreement
N. Share Transfer Instrument
O. Press Release
P. European Patents
Q. Existing Customers of Euro
R. Existing Customers of Nocopi
