EXHIBIT 10.24
LICENSE AGREEMENT
This License Agreement ("Agreement") is entered into and effective as of
January 3, 2003 between Integrated Technologies, Inc., a Delaware Corporation
("Licensee"), and Material Technologies, Inc., a Delaware corporation
("Licensor") with regard to the following facts:
R E C I T A L S
---------------
WHEREAS, Licensor has developed certain proprietary technology for
detecting metal fatigue and measuring metal stress (hereinafter more
particularly defined as the "Technology"); and
WHEREAS, Licensee desires to obtain certain rights to use and practice the
Technology in the Territory (as hereinafter defined) and Licensor desires to
license the Technology to the Licensee pursuant to the terms and conditions set
forth herein; and
WHEREAS, the parties hereto may have access to the other party's
Proprietary Information (as hereinafter defined) as a result of the rights and
obligations as provided herein; and
WHEREAS, the parties desire to confirm in writing the nature of their
confidential relationship in regard to each other's Proprietary Information and
the terms by which each party will maintain and agree to maintain the secrecy of
the other party's Proprietary Information; and
WHEREAS, Licensee has entered into a separate License Agreement (the
"Austin Tech Agreement") concurrently with the execution of this Agreement
whereby Licensee, has been granted a license to use certain technology (the
"Austin Tech Technology") developed and owned by Austin Tech, LLC., a Texas
limited liability company ("Austin Tech"); and
WHEREAS, the parties contemplate the development by the Licensee and its
sublicensees of markets which will make use of the Technology in the Territory;
and
NOW, THEREFORE, in consideration of the mutual promises, covenants,
agreements, representations and warranties contained herein, the parties agree
as follows:
A G R E E M E N T
-----------------
1. Definitions.
-----------
A. An "Affiliate" of a party shall mean an entity directly or
indirectly controlling, controlled by or under common control with that party
where control means the ownership or control, directly or indirectly, of more
than fifty percent (50%) of all of the voting power of the shares (or other
securities or rights) entitled to vote for the election of directors or other
governing authority, as of the date of this Agreement or hereafter during the
term of this Agreement; provided that such entity shall be considered an
Affiliate only for the time during which such control exists.
1
B. "Disclosing Party" shall mean a party hereto that discloses
its Proprietary Information to the other party.
C. "Improvements" shall mean all inventions, modifications,
revisions, alterations, enhancements, betterments, ideas, and discoveries
(whether or not patentable) conceived or reduced to practice (actually or
constructively) by Licensor or Licensee either individually, jointly or with
others which are based in any way on the Licensor's Proprietary Information,
Licensor's Proprietary Rights, or the Licensor's Technology or any such
invention, modification, revision, alteration, enhancement, betterment, idea or
discovery developed through reverse engineering or independent derivation.
D. "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: all trade secrets, confidential
knowledge and proprietary data of any kind or relating to the Disclosing Party's
business including, but not limited to, the Proprietary Rights, and the
Technology and all the Improvements thereto. Proprietary Information shall also
include information provided to a party by or on behalf of the other party prior
to the date of this Agreement as well as information obtained through reverse
engineering or independent derivation. Proprietary Information by way of example
shall include, but not be limited to, technical specifications, diagrams, flow
charts, methods, processes, discoveries, concepts, calculations, techniques,
formulas, systems, plans, designs, research and development plans, cost and
pricing data, records and general engineering know-how. Proprietary Information
shall include all information and any idea in whatever form, tangible or
intangible, including electronic data recorded or retrieved by any means.
Proprietary Information shall not apply to information a party can prove by
presently existing written documentation which: (i) is in or (through no
improper action or inaction by the party or any Affiliate, agent, or employee)
enters the public domain and is readily available without substantial effort;
(ii) was rightfully in its possession or known by it prior to receipt from the
Disclosing Party; or (iii) was rightfully disclosed to the non-disclosing party
by another person without restrictions or breach of any agreement express or
implied. The non-disclosing 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 a preponderance of the evidence.
E. "Proprietary Rights" shall mean patent rights, copyrights,
trade secret rights and similar rights including all rights to any Proprietary
Information.
F. "Receiving Party" shall mean a party hereto that receives
Proprietary Information of the other party.
G. "Technology" shall mean inventions (whether or not
patentable), ideas, processes, formulas and know-how owned or controlled by
Licensor and used by it as of the date of this Agreement, as described in
Exhibit "A" attached hereto, and all Improvements together with detailed
reports, records, explanations, Licensor's Proprietary Information, Licensor's
Proprietary Rights and other materials relating to the Technology and
Improvements and their use.
H. "Territory" shall mean the countries of Mexico, Brazil,
United States of America, Lebanon, Saudi Arabia, Argentina, United Arab
Emirates, Jordan, Qatar, Kuwait, Egypt, Canada, Norway, Sweden, Finland, Denmark
and Iceland.
2
2. License Grant. Subject to the terms and conditions set forth in
-------------
this Agreement, Licensor hereby grants Licensee an exclusive, royalty free
license to use and practice the Proprietary Rights in the Technology in the
Territory during the Term (as hereinafter defined) of, and for the permitted
uses (the "Uses") set forth in Exhibit A-1 of this Agreement. Licensee shall
have the right to sublicense its rights under this Agreement, but as a condition
to any sublicense, each such sublicensee shall agree to be bound by the terms
and conditions set forth herein. Licensee shall be primarily liable for the acts
of each of its sublicensees. Notwithstanding, the foregoing Licensee shall not
be liable for any acts or omissions of its sublicensees to the extent such acts
or omissions were performed or omitted pursuant to directions, orders,
instructions, recommendations or supervision of Licensor. Licensor agrees to
license to Licensee, on the same terms and conditions contained in this
Agreement, any patent that Licensor may obtain with respect to the Technology
that is enforceable in the Territory.
3. License Scope. Licensee's license hereunder is exclusive in the
--------------
Territory for the Uses stated in Section 2, and Licensor shall not grant further
licenses for any Use of the Technology in the Territory, except as provided in
Section 13. No Proprietary Rights granted under this Agreement will be marketed
directly or indirectly by or under the authority of Licensee outside the
Territory or by Licensor inside the Territory. Licensee shall not knowingly make
any use of the Technology which is not a permitted Use or which would violate
local law.
4. Ownership and Improvements.
---------------------------
A. Licensor as Sole Owner. Licensee acknowledges and agrees
-----------------------
that it does not now own, nor will it obtain any interest in, the Proprietary
Information, Proprietary Rights or the Technology except for the license granted
herein.
B. All Improvements Assigned to Licensor. Licensee
-------------------------------------
acknowledges and agrees that all Improvements with respect to the Licensor's
Proprietary Information, Proprietary Rights or the Technology which are based in
any way on the Licensor's Proprietary Information, Proprietary Rights or the
Technology, or any Improvement thereto shall be the exclusive property of
Licensor. Licensee agrees to assign, and does hereby assign, and agrees to cause
each of its Affiliates and sublicensees to assign to Licensor any and all right,
title, and interest it may obtain in any such Improvements, including but not
limited to, any and all applications for Letters Patent and all divisions,
renewals, continuations and continuations-in-part thereof, and all Letters
Patent of the United States which may be granted thereon and all reissues and
extensions thereof, and all rights of priority under international conventions
and applications for Letters Patent which may hereafter be filed for such
Improvements in any country or countries foreign to the United States, and all
Letters Patent which may be granted for such Improvements in any country or
countries foreign to the United States and all extensions, renewals, and
reissues thereof. Licensor agrees to license, and does hereby license, without
further consideration to Licensor, all such Improvements to Licensee pursuant to
the terms and conditions of this Agreement.
C. Cooperation. Licensee agrees to communicate to Licensor, in
------------
writing and promptly upon becoming aware thereof, any facts known to Licensee
respecting the Licensor's Proprietary Information, Proprietary Rights and the
Technology, and all Improvements thereto, and testify in any legal proceedings,
sign all lawful papers, execute all divisional, continuing and reissue
applications, make all rightful oaths and in general do everything possible to
cooperate to effectuate the terms of this Section 4, all at Licensor's expense.
3
D. No Challenge to Ownership. Except in asserting rights
---------------------------
granted hereunder, each party agrees not to take any action challenging or
opposing, on any grounds whatsoever, the ownership of any Proprietary
Information, Proprietary Rights, Technology, Improvements, intellectual property
rights of the other party therein, or the validity or enforceability thereof.
5. Reserved.
---------
6. No Restriction on Competition. Nothing in this Agreement shall be
-------------------------------
deemed to prohibit Licensee from developing, making, using, marketing or
otherwise distributing or promoting any proprietary rights competitive with the
Technology licensed hereunder, provided that:
i) Licensee does not breach any provision of Section 9 or
disparage the Proprietary Rights licensed hereunder in doing so; and
ii) Licensee will use its reasonable best efforts to primarily
promote, market, and use the Technology.
7. Representations and Warranties of Licensor. Licensor hereby makes the
------------------------------------------
following representations and warranties as of the date of this Agreement.
A. Organization and Power of Licensor. Licensor is a corporation
----------------------------------
duly incorporated, validly existing and in good standing under the laws of the
State of Delaware, with all necessary corporate power and corporate authority to
execute this Agreement, perform its obligations hereunder and conduct its
business and own its properties as presently conducted and owned.
B. Authority Relative to this Agreement. The execution,
--------------------------------------
delivery and performance of this Agreement by Licensor and the consummation of
the transactions contemplated hereunder have been duly authorized by any and all
necessary corporate action of Licensor and this Agreement constitutes a legal,
valid and binding obligation of Licensor enforceable against Licensor in
accordance with its terms.
C. No Violation of Other Instruments. The execution, delivery
----------------------------------
and performance of this Agreement by Licensor does not, and the consummation by
Licensor of the transactions contemplated hereunder will not: (a) violate any
provision of the Certificate of Incorporation or Bylaws of Licensor; (b) require
the consent of third parties, (c) violate any provision of, or constitute a
default under or breach of, or result in the imposition of any lien or
encumbrance or the acceleration of any obligation under, or result in the
termination of, any contract, mortgage, franchise, court order, arbitration
award, judgment or decree to which Licensor is a party, or (d) violate any
statute, rule, regulation or prohibition imposed by any regulatory authority
making it illegal for Licensor to consummate the transactions contemplated by
this Agreement.
D. License Grant. Licensor has the sole right to grant the
-------------
licenses granted by it hereunder.
4
E. Rights Granted.
--------------
(a) to the best knowledge of Licensor, Licensor owns the
patent or other rights granted hereunder and Licensor's ownership does not, and
will not, conflict with, infringe on, or otherwise violate any rights of others;
(b) Licensor has not sold, transferred or assigned, or agreed
to sell, transfer or assign, any patent or other rights granted hereunder for
the Permitted Uses and in the Territory described herein; and
(c) Licensor is informed and to its best knowledge, is not
aware of any infringement or alleged infringement by others of any such patent
or other rights granted hereunder. Licensor has not infringed, and is not now
infringing, on any patent or other rights granted hereunder belonging to any
other person or firm.
8. Representations and Warranties of Licensee.
------------------------------------------
A. Organization and Power of Licensee. Licensee is a
----------------------------------
corporation duly incorporated, validly existing and in good standing under the
laws of the state of Delaware with all necessary corporate power and corporate
authority to execute this Agreement, perform its obligations hereunder and
conduct its business and own its properties as presently conducted and owned.
B. Authority Relative to this Agreement. The execution,
------------------------------------
delivery and performance of this Agreement by Licensee and the consummation of
the transactions contemplated hereunder have been duly authorized by any and all
necessary corporate action of Licensee and this Agreement constitutes a legal,
valid and binding obligation of Licensee enforceable against Licensee in
accordance with its terms.
C. No Violation of Other Instruments. The execution, delivery
----------------------------------
and performance of this Agreement by Licensee does not, and the consummation by
Licensee of the transactions contemplated hereunder will not: (a) violate any
provision of the Certificate of Incorporation or Bylaws of Licensee; (b) require
the consent of third parties, (c) violate any provision of, or constitute a
default under or breach of, or result in the imposition of any lien or
encumbrance or the acceleration of any obligation under, or result in the
termination of, any contract, mortgage, franchise, court order, arbitration
award, judgment or decree to which Licensee is a party, or (d) violate any
statute, rule, regulation or prohibition imposed by any regulatory authority
making it illegal for Licensee to consummate the transactions contemplated by
this Agreement.
9. Confidentiality. Each party recognizes the importance to the other of
----------------
the other's Proprietary Information. Accordingly, each party agrees as follows:
A. The Receiving Party agrees (i) to hold the Disclosing
Party's Proprietary Information in confidence as a fiduciary and to take all
reasonable precautions to protect such Proprietary Information (including,
without limitation, all precautions the Receiving Party employs with respect to
its confidential materials), (ii) not to divulge (except pursuant to a
sublicense granted by Licensee as allowed under Section 2) any such Proprietary
5
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 except in compliance with and with all licenses and approvals
required under applicable export laws and regulations, including without
limitation, those of the U. S. Department of Commerce. 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 9 shall terminate two (2) years after the date of this Agreement.
Licensor shall have the right to review the measures used by Licensee and its
sublicensee(s) and suggest reasonable changes to protect the Licensor's
proprietary rights.
B. Immediately upon termination of this Agreement, 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.
C. 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 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 attorneys'
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 9 will constitute a material breach of this
Agreement.
10. Patent Matters.
---------------
A. Patent Applications. Licensor retains the sole right and
-------------------
discretion to file and prosecute patent applications and maintain patents in the
Territory relating to the Proprietary Rights or any Improvements made by
Licensor. At Licensee's request while Licensee remains an exclusive licensee
hereunder, Licensor will discuss its decisions on these matters with Licensee,
but Licensee will not attempt to file or prosecute any such patent applications
or maintain any such patent (i) except as Licensor may, in its sole discretion,
approve in writing, and (ii) except that Licensee may continue maintenance of
licensed patents issued in the Territory if Licensor elects not to do so. Any
improvements to Technology (whether or not patentable or copyrightable) that are
developed by either party shall be owned solely by Licensor. Each party shall
have the right, at its own expense, and solely in its own name, to apply for,
prosecute and defend its Proprietary Rights. Licensor's existing relevant
6
patents and patent applications in the United States of America and the
Territory are listed on Exhibit "B".
B. Patent Infringement. If Licensee becomes aware of any
--------------------
product or activity of any third party that involves infringement or violation
of any Licensor patent or other Proprietary Right with respect to the Technology
in the Territory, then Licensee shall promptly notify Licensor in writing of
such infringement or violation. Licensor may in its discretion take or not take
whatever action it believes is appropriate; if Licensor elects to take action,
Licensee will fully cooperate therewith at Licensor's expense. If Licensor does
not, within 90 days after receipt of such a notice of a patent infringement or
other infringement or violation within the scope of the exclusivity of
Licensee's license hereunder, commence action directed towards restraining or
enjoining such patent infringement, Licensee, so long as it is an exclusive
licensee hereunder, may take such legally permissible action as it deems
necessary or appropriate to enforce Licensor's patent or other rights and
restrain such infringement or violation. Licensor agrees to cooperate reasonably
in any such action initiated by Licensee including supplying essential
documentary evidence and making essential witnesses then in Licensor's
employment available. As part of such cooperation, Licensee may join Licensor as
a party, if the need arises.
C. Patent Awards. If Licensor initiates and prosecutes any
--------------
such an action under this Section 10, all legal expense (including court costs
and attorneys' fees) shall be for Licensor's account and Licensor shall be
entitled to all of the amounts awarded by way of judgment, settlement or
compromise after deduction of legal expenses. Similarly, if Licensee initiates
and prosecutes such an action, all legal expenses (including court costs and
attorneys' fees) shall be for Licensee's account and Licensee shall be entitled
to all amounts awarded by way of judgment, settlement, or compromise and no
royalties shall be owed Licensor on said sums. Any nonmonetary awards shall
inure to the benefit of the Licensor.
D. Patent Searches. Licensee and Licensor understand that each
----------------
of the parties has not conducted comprehensive patent searches in the Territory.
Licensor and Licensee agree to work cooperatively regarding issues concerning
patents and Proprietary Rights and similar matters and to exercise reasonable
business judgment in carrying out the objects of this Agreement to avoid
exposing either party to liability under patent or similar laws in the
Territory. Each party represents and warrants that it is not aware of
infringement or potential infringement issues that have not been communicated to
the other in writing before execution of this Agreement.
11. Term and Termination.
---------------------
This Agreement will remain in effect until January 1, 2005
("Term"), unless terminated pursuant to this Section.
If a party materially breaches a material provision of this
Agreement, the other party may terminate this Agreement upon 60 days written
notice unless the breach is cured within the notice period or if the breach is
incapable of being cured within the notice period the breaching party commences
curative action and diligently prosecutes curative action to completion.
Notwithstanding, the foregoing if Licensee fails to make payments pursuant to
this Agreement or the Austin Tech Agreement and such breach is not cured within
thirty (30) days after written notice of such breach, Licensor may terminate
this Agreement.
7
In the event of any termination of this Agreement, the rights
and licenses granted Licensee under this Agreement and Licensee's obligation
hereunder 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. Any
sublicenses surviving termination may be terminated by the granting party in the
same manner as provided in this Section 11 if the other party materially
breaches a material surviving provision of this Agreement. A sublicense will
survive termination and continue according to its terms provided that (i) it was
properly granted, (ii) all the restrictions and limitations of this Agreement
shall apply to the sublicensee as though this Agreement continued in effect,
(iii) Licensor shall receive all consideration due, if any, in connection with
the sublicense and (iv) in addition to any termination rights under the
sublicense agreement, Licensor shall be entitled to terminate such sublicense on
the same basis as is provided herein for termination of this Agreement.
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.
Termination is not the sole remedy under this Agreement and,
whether or not termination is effected, all other remedies will remain
available.
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.
13. Assignment. The rights and obligations of the parties under this
-----------
Agreement may not be assigned or transferred, without the prior written consent
of the other party which consent may be withheld in either party's sole and
absolute discretion.
14. Successors and Assigns. This Agreement and all the covenants,
----------------------
promises and agreements contained herein shall be binding upon and inure to the
benefit of Licensor and Licensee and their respective successors and assigns.
15. Intentionally not used.
-----------------------
16. Infringement. In the event of institution of any suit against
-------------
Licensee alleging infringement or misappropriation of any patent or other rights
of a third party by reason of the use of the Technologies or the Proprietary
Rights to the Technology, Licensor agrees, on request of Licensee, made
immediately after institution thereof,
(a) to undertake and diligently conduct, at Licensor's
expense, defense of such suit, and
(b) to indemnify and hold Licensee and its officers,
directors, agents and employees harmless from liability resulting from
infringement or misappropriation of any patents, copyrights or other rights and
any judgments, awards of damages, settlements, attorneys' fees and expenses
which may result therefrom.
8
Licensee shall render all reasonable assistance to Licensor in connection with
any suit to be defended by Licensor under this Section 16. Licensor shall have
full control of the defense of any such suit, but shall not be free to settle
the same without the consent of Licensee if by the settlement Licensee would be
obliged to make payments, or if the settlement would cause a material impairment
of the ability of Licensee to continue its operations.
17. Miscellaneous.
--------------
A. 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.
B. 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 and without
regard to the United Nations Convention on Contracts for the International Sale
of Goods. 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 County of Los Angeles. 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 otherwise 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.
C. Headings. Headings and captions are for convenience only
--------
and are not to be used in the interpretation of this Agreement.
D. Notices. All notices required or permitted under this
-------
Agreement shall be in writing, shall be sent to the party's address as set forth
immediately below, shall reference this Agreement, and shall be deemed given (i)
when delivered personally; (ii) three (3) days after having been sent by
registered or certified mail, return receipt requested, postage prepaid; (iii)
one (1) day after deposit with a commercial overnight carrier with verification
of receipt; or (iv) when sent by confirmed telex or facsimile.
"Licensor" Material Technologies, Inc.
Fax: ( )
"Licensee" Integrated Technologies, Inc.
00000 Xxx Xxxxxxx Xxxx., Xxx 000
Xxx Xxxxxxx, XX 00000
Fax: (000) 000-0000
9
A party may change its address for purposes of receiving notices by giving
notice of said change of address in the manner provided for herein.
E. 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. This Agreement and the attached Exhibits contains
the entire agreement and understanding of the parties hereto and there are no
promises, representations, warranties, or understandings other than those
contained herein.
F. Force Majeure. Neither party hereto shall be responsible
--------------
for any failure to perform its obligations under this Agreement 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
which 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. In the event that such force majeure
should obstruct performance of this Agreement for more than six (6) months, the
parties hereto shall consult with each other to determine whether this Agreement
should be modified. The party facing an event of force majeure shall use its
best endeavors in order to remedy that situation as well as to minimize its
effects. A case of force majeure shall be notified to the other party by telex
or telefax within thirty (30) days after its occurrence and shall be confirmed
by a letter.
G. Export Control. Each party hereby agrees to comply with all
--------------
export laws and restrictions and regulations of the Department of Commerce or
other United States or foreign agency or authority, and not to knowingly export,
or allow the export or re-export of any Technology or Proprietary Information or
any direct product thereof in violation of any such restrictions, laws or
regulations, without all required licenses and authorizations.
H. 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.
I. Basis of Bargain. Each party recognizes and agrees that the
-----------------
liability and remedy limitations in this Agreement are a materially bargained
for basis 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.
J. Counterparts. This Agreement may be executed in any number
-------------
of counterparts and by facsimile, and each such counterpart hereof shall be
deemed to be an original instrument, but all such counterparts together shall
constitute but one agreement. In the event of facsimile signature, the parties
hereto agree to deliver the original signature pages to counsel for the
respective parties within ten (10) calendar days after the date of this
Agreement.
10
K. Further Actions. The parties hereto hereby agree to execute
----------------
such other documents and to take such other action as may be reasonably
necessary to further the purposes of this Agreement.
IN WITNESS WHEREOF, the parties have executed this Agreement on the date
and year first written above.
LICENSEE: LICENSOR:
INTEGRATED TECHNOLOGIES, INC. MATERIAL TECHNOLOGIES, INC.
By: Xxxxxx X. Xxxxxxxxx
By: Xxxxxx X. Xxxxxxxxx
Title: President
Title: Chief Executive Officer
11
EXHIBIT A
TECHNOLOGY
Technologies that_____________________________________________.
12
EXHIBIT A-1
PERMITTED USES
The Permitted Uses for the Technology shall be defined as only those
applications in which the Technology is used in combination with, simultaneously
or as an integral part of the Austin Tech Technology. Additionally, the
Technology can only be used in the following markets: a) bridges, b) tunnels, c)
tank farms, and d) railroads.
In the event any application has the ability to use only the Technology or the
Austin Tech Technology without the use of the other technology such application
shall not be a Permitted Use for the Company. In such event Licensor, or Austin
Tech, as the case may be, may pursue such non permitted use of the respective
technology on its own.
13
EXHIBIT B
PATENTS AND PATENT APPLICATIONS
United States of America
None
Mexico
None
14
