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EXHIBIT 10.2
LICENSE AGREEMENT
THIS AGREEMENT made and effective this 28th day of January, 1999, is
between, TURBODYNE TECHNOLOGIES, INC., a Delaware corporation having an address
of 0000 Xxxxxxxxxxx Xxxxxx, Xxxxxxxxxxx, Xxxxxxxxxx 00000 and TURBODYNE SYSTEMS,
INC., a Nevada corporation its fully owned subsidiary (collectively "Turbodyne")
and ALLIEDSIGNAL INC. acting by and through its AlliedSignal Turbocharging
Systems business unit having an office at 00000 Xxxxxxxxx Xxxxxxxxx, Xxxxxxxx,
Xxxxxxxxxx hereinafter "AlliedSignal".
RECITALS:
WHEREAS AlliedSignal is now and has been engaged in the business among
others of manufacturing and selling systems and components for charge air
boosting and control for internal combustion engines; and
WHEREAS Turbodyne has developed technology and acquired patents relating
to electrically assisted turbochargers for use with combustion engines
technology and may hereafter develop improvements directed to the such
technology; and
WHEREAS AlliedSignal desires to acquire an exclusive license under
Turbodyne's proprietary and Licensed Patents;
NOW, THEREFORE in consideration of the premises and mutual covenants
herein contained and other good and valuable considerations it is hereby agreed
as follows:
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All schedules and exhibits have been omitted. Any omitted schedule or exhibit
will be furnished supplementally to the Securities and Exchange Commission on
request.
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1. DEFINITIONS
As used in this Agreement, the following terms shall have the meanings
set forth herein:
1.(a) "Effective Date" shall mean the date first written above
1.(b) "Patent and Proprietary Rights" shall mean all proprietary rights
relating to the Technology (as hereinafter defined) and all rights under those
patents and patent applications and trademark rights identified in Exhibit A
attached hereto and all patents issuing from any such applications, all
counterpart patents and patent applications thereof now and hereafter filed
and/or issuing in any country of the world and all continuation, continuation in
part and reissued patent applications of any of the preceding and all patents
issuing therefrom and all related design rights, if any, and utility models. The
Parties agree that the patents and patent applications identified are
intellectual property within the statutory definition of the Bankruptcy Code.
1 (c) "Improvements" shall mean all inventions and discoveries, whether
patentable or not, directed to the Technology and conceived and/or first reduced
to practice after the Effective Date. "Turbodyne Improvements" shall mean all
such Improvements made solely through the efforts of Turbodyne and/or controlled
by Turbodyne and/or for which Turbodyne has the right to grant licenses to
others. "AlliedSignal Improvements" shall mean any Improvements made solely by
employees of AlliedSignal. "Joint Improvements" shall mean inventions and
discoveries comprising Improvements made jointly by employees of Turbodyne and
AlliedSignal.
1.(d) "Licensed Patents" shall mean the patents and patent applications
of the Patent and Proprietary Rights and any patents arising from the
Improvements.
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1.(e) "Licensed Products" shall mean electrically assisted charge air
product or other engine product, including electrically assisted turbochargers
and turbochargers employing an electric motor / generator for power assist /
take-off, within the scope of any one or more claims of the Licensed Patents.
1.(f) "Net Sales of Licensed Products" shall mean the invoiced sales
price less any discounts or rebates not itemized in the invoiced sales price and
not including any transportation or insurance costs of products within the scope
of Licensed Patents sold by AlliedSignal and all Subsidiaries of AlliedSignal
during the Reporting Period which are manufactured or sold in any country in
which the Licensed Patents are enforceable less the total number of returns to
AlliedSignal during such Reporting Period of such Licensed Products.
1.(g) "Party" shall mean AlliedSignal and/or Turbodyne as apparent from
the context in the Section in which it is used.
1.(h) "Reporting Period" shall mean each successive three (3) month
period during the term of this Agreement the first of which shall commence on
the Date of First Commercial Production.
1.(i) "Subsidiary" shall mean any entity (including. but not limited to
any corporation. partnership or joint venture) that directly or indirectly
through one or more intermediaries controls or is controlled by or is under
common control with a Party. Control shall mean the ownership directly or
indirectly of at least thirty-five percent (35%) or more of the outstanding
voting shares of the entity or the maximum percent allowed under the laws of the
country or organization of the entity in the event the maximum percent allowed
is less than 35%.
1.(j) "Technology" shall mean any designs, processes, data, inventions,
developments or other proprietary information relating to electrically assisted
turbochargers and motors and controls therefore.
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1. (k) "Component Parts" shall mean any light metals, motors, generators
and electronic controls employed in an electrically assisted turbochargers
employing the Technology. 1. (l) "Third Party" shall mean any entity other than
any Party and any Subsidiary.
1.(m) "Production Commitment" shall mean an order placed by a Third
Party with AlliedSignal for Licensed Products in production quantities.
1. (n) "Joint Development Agreement" shall mean that certain agreement
entered into by the Parties entitled Joint Development Agreement and dated
January 28, 1999.
2. GRANT AND SUPPORT
2.(a) Turbodyne hereby grants to AlliedSignal the worldwide exclusive
license under Patent and Proprietary Rights and Turbodyne Improvements, with the
right to sublicense, to make, have made, use and sell products incorporating the
Technology. Turbodyne and AlliedSignal shall report to each other on a monthly
basis all Improvements made within the preceding month which are to be employed
in Licensed Products.
2.(b) Turbodyne also grants to AlliedSignal an exclusive worldwide
license under Turbodyne's owned portion of any Joint Improvement.
2 (c) Turbodyne shall make available to AlliedSignal all proprietary and
confidential information relating to the Technology necessary for the design and
manufacture of products pursuant to this Agreement and will provide technical
support at AlliedSignal's request for Component integration into Licensed
Products and for customer support regarding the Technology.
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2 (d) Notwithstanding the terms of paragraph 2.(a), Turbodyne shall
retain the rights and AlliedSignal hereby grants a royalty free non-exclusive
sublicense under the Patent and Proprietary Rights to manufacture and sell any
motor driven compressor products currently sold in Turbodyne's Turbopac product
line, defined in Exhibit B hereto, including any developments or improvements to
such products limited to integration of the control electronics into those
products and other changes not substantially affecting form, fit or function.
Turbodyne further shall retain the rights and AlliedSignal hereby grants a
royalty free non-exclusive sublicense under the Patent and Proprietary Rights to
manufacture and sell electrical motor assistance systems for Cummins BHT
turbochargers in the independent aftermarket.
2 (e) AlliedSignal shall be the sole owner of any and all rights to
Licensee Improvements including any patents and patent applications arising
therefrom.
2 (f) AlliedSignal shall grant to Turbodyne, pursuant to a sublicense
under this Agreement acceptable to both parties ("Turbodyne License Agreement"),
the sole world wide right, subject to any license granted to third parties by
AlliedSignal pursuant to paragraph 6. b. of the Joint Development Agreement, to
manufacture, market and sell all light metals, motors, generators and electronic
controls for the Licensed Products and AlliedSignal shall license to Turbodyne
any Developed Intellectual Property necessary to manufacture, market and sell
the Component Parts. Turbodyne shall produce and provide exclusively to
AlliedSignal and to other licensees pursuant to 6.b above, and AlliedSignal
shall acquire the Component Parts solely from Turbodyne, pursuant to
AlliedSignal's standard terms and conditions for purchase under a Long Term
Supply Agreement, to be negotiated by the Parties, which shall be subject to
Turbodyne remaining competitive in cost, quality and delivery, and the price to
AlliedSignal for the
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Component Parts shall not exceed cost plus seven percent (7%).
3. ROYALTIES
3.(a) In exchange for the exclusive license granted in Section 2 above
AlliedSignal shall pay to Turbodyne an earned royalty for each Reporting Period.
in an amount equal to the Net Sales of Licensed Products multiplied by three and
seven tenths percent (3.7) for each Licensed Product applicable to the Reporting
Period in question. If Turbodyne does not maintain its 40% share of investment
in the Development program in response to Development Committee assessments
pursuant to paragraph 3a of the Joint Development Agreement, the royalty rate of
the License Agreement shall be adjusted by a ratio of actual percentage share of
investment divided by 40% times 3.2% to which shall be added a 0.5% base
royalty.
3 (b) Only one royalty shall be due with respect to any royalty bearing
Licensed Product regardless of whether such Licensed Product is covered by more
than one claim and/or patent and/or patent application of Licensed Patents.
4. REPRESENTATIONS AND WARRANTIES
4.(a) Turbodyne represents and warrants that, to the best of its
knowledge, the exploitation by AlliedSignal of Licensed Patents and/or Turbodyne
Improvements and the manufacture, use or sale of Licensed Products does not
infringe any patent right or other proprietary right or alleged right of any
Third Party known to Turbodyne at the time of execution of this License.
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4.(b) TURBODYNE MAKES NO REPRESENTATION OR WARRANTY. EXPRESS OR IMPLIED
REGARDING THE MERCHANTABILITY OF LICENSED PRODUCTS NOR THE FITNESS THEREOF FOR
ANY PARTICULAR PURPOSE.
4 (c) Turbodyne represents and warrants that it has all right, title and
interest in and to the Patents and Proprietary Rights and has the power and
authority to enter into the License granted in this Agreement. Further,
Turbodyne has not sold, assigned, licensed, hypothecated or otherwise
transferred ownership or title to the Patents and Proprietary Rights and is not
a party to any agreement or instrument or subject to any restriction having a
materially adverse effect on its ability to perform its obligations under this
Agreement or any agreement or instrument thereunder and is not in default in the
performance, observance, or fulfillment of the material obligations, covenants,
or agreements contained in any agreement or instrument or by which any of its
Patents and Propretary Rights is bound. Turbodyne has disclosed to AlliedSignal
an Agreement in Principle (the "3K Agreement") it entered into in April 1997
with XX Xxxxxx, Xxxx & Xxxxxx now know as 3K-Warner Turbosystems GmbH
("3K-Warner"). Although the validity and scope of the 3K Agreement and
Turbodyne's obligations thereunder are uncertain, the Parties agree that
Turbodyne's obligations, if any, under the 3K Agreement shall be fulfilled by
sub-license under this Agreement and AlliedSignal and Turbodyne shall share any
benefits accruing to Turbodyne under the 3K Agreement on a 60%/40% basis,
respectively.
5. PATENT INFRINGEMENT
5.(a) In the event a claim of infringement of a patent has been asserted
against AlliedSignal by a third party as a result of AlliedSignal's manufacture,
use or sale of Licensed
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Products Turbodyne shall make reasonable efforts to assist AlliedSignal in
modifying the Licensed Products to the extent necessary to avoid such claim of
infringement.
5.(b) Turbodyne agrees to defend, at its expense, any claim or suit
against AlliedSignal based on an assertion or claim that any Component Part
employed in a Licensed Product infringes any patent or other intellectual
property right, where such assertion or claim is based solely on the Technology
and not on any substantial combination or addition designed or created by
AlliedSignal. Turbodyne further agrees to hold AlliedSignal harmless and
indemnify AlliedSignal for any cost, expense, damages, attorney's fees or other
financial loss resulting from any settlement, judgment or final award in any
suit or other action arising from such claim or assertion, provided that
Turbodyne is notified by AlliedSignal in a timely manner of the claim and
Turbodyne is tendered the defense of such claim at its own expense. Turbodyne
shall as a portion of this indemnity use reasonable efforts to obtain for
AlliedSignal and its customers the right to use the Licensed Products and
Technology. Failure of Turbodyne to perform under this paragraph 5 (b) which
results in costs or damages to AlliedSignal shall be directly setoff against any
royalties due or prospective royalties arising under this Agreement.
5.(c) Any claim or suit against AlliedSignal or Turbodyne based on any
assertion or claim that any Licensed Product infringes any patent or other
intellectual property right shall be defended jointly by the Parties with costs
of the defense and any cost expense, damage or other financial loss resulting
from any settlement, judgment or final award in any such suit or other action
borne by the Parties in the proportion of 60% AlliedSignal and 40% Turbodyne.
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6. PATENT ENFORCEMENT
6.(a) In the event either Party discovers tangible evidence of the
manufacture use or sale by another of a product which infringes any claim of
patents comprising a portion of Licensed Patents and/or Improvements the Party
that discovered the evidence shall notify the other Party promptly in writing
upon such discovery. Such notification shall include such tangible evidence
discovered by the notifying Party.
6.(b) AlliedSignal shall have the right but not the obligation to
initiate an action to enforce Licensed Patents. Any such enforcement shall be at
the expense of AlliedSignal and all damages awarded as a result of such action
shall be for AlliedSignal's account provided, however, that AlliedSignal shall
pay to Turbodyne a portion of any damages award after deduction of all
AlliedSignal's reasonable costs and expenses for pursuing the action (the "Net
Award"), to compensate Turbodyne for its proportional loss of royalties under
this Agreement comparable to AlliedSignal's proportionate loss of profits from
sales of Licensed Products suffered as a result of the infringement AlliedSignal
shall, within one hundred twenty (120) days after becoming aware of such
infringement by, a Third Party of Licensed Patents and/or any patents and/or
patent applications of Improvements whether by AlliedSignal's discovery of such
evidence or by notification from Turbodyne , notify Turbodyne whether
AlliedSignal intends to bring an action for enforcement of such Licensed
Patents. If AlliedSignal notifies Turbodyne of election to initiate legal
action, AlliedSignal shall promptly thereafter commence and prosecute to final
resolution such action, whether by judgment or settlement. In the event
AlliedSignal notifies Turbodyne that AlliedSignal is electing not to bring art
action for infringement of such Licensed Patents, Turbodyne shall have the
right, but not the obligation, to initiate and prosecute any legal action for
infringement by such Third Party thereof at Turbodyne's sole cost and expense.
Any
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proceeds from such litigation undertaken by Turbodyne shall be for Turbodyne's
account provided, however, that Turbodyne shall pay to AlliedSignal a portion of
any damages award after deduction of all Turbodyne's reasonable costs and
expenses for pursuing the action (the "Net Award"), to compensate AlliedSignal
for its proportional loss of profits from sales of Licensed Products under this
Agreement comparable to Turbodyne's proportionate loss of royalties suffered as
a result of the infringement. The Parties agree to cooperate in any litigation
or action taken under the Licensed Patents at the expense of the litigating
party.
7. FILING & MAINTAINING PATENTS
7.(i) Turbodyne shall maintain active and enforceable patents and patent
applications in Exhibit A and on Turbodyne Improvements provided however that
any time after the seventh anniversary of this Agreement, Turbodyne shall have
the option to forego payment of maintenance fees or annuities in the event that
Turbodyne shall have first offered to AlliedSignal the option to pay the fees
and to take title to the patents for no additional royalty payments.
AlliedSignal shall maintain active and enforceable any patents issuing on
AlliedSignal and Joint Improvements. If AlliedSignal elects not to maintain such
patents and forego payment of maintenance fees, AlliedSignal shall notify
Turbodyne of such election and Turbodyne shall have the right to acquire title
to such patents subject to the Grant of License herein.
7.(b) At the request of AlliedSignal and at AlliedSignal's expense for
the preparation, filing, prosecution and maintenance thereof, Turbodyne shall
with respect to patents and patent applications in Exhibit A and Turbodyne
Improvements file and cause to be filed patent application(s) in such additional
countries as AlliedSignal may designate. AlliedSignal shall
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have no obligations to maintain active and enforceable any patents and/or patent
applications for which it incurred any costs.
8. PAYMENTS
8.(a) All payments shall become due under any provision of this
Agreement shall be made by AlliedSignal to Turbodyne , without discount or
offset, in lawful money of the United States, or to such bank or other location
that Turbodyne may designate. All taxes shall be paid by and be for the account
of Turbodyne, provided however, that AlliedSignal may deduct income taxes
required to be withheld under law, if any. With such payments AlliedSignal shall
deliver to Turbodyne a certified copy of the receipt by the government of
payment of such taxes.
8.(b) Within ninety (90) days after the end of each Reporting Period
AlliedSignal shall render to Turbodyne accounting statement showing the Net
Sales of Licensed Products sold during such Reporting Period, the amount of
royalties payable to Turbodyne and, at the same time AlliedSignal shall pay to
Turbodyne the royalties shown by the report to be due.
8 (c) Acceptance by Turbodyne of any payment tendered hereunder whether
or not the amount thereof shall be in dispute shall not constitute acceptance of
the account or schedules on which such payment is based, provided however, that
the correctness of any such payment shall be conclusively presumed unless
questioned within two (2) years from the date of receipt thereof.
9. BOOKS
9.(a) AlliedSignal shall keep adequate records in sufficient detail to
enable the royalties payable to Turbodyne hereunder to be determined and shall
permit said records to be inspected at Turbodyne's expense at any time during
regular business hours by an independent auditor,
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appointed by Turbodyne for this purpose and not objectionable to AlliedSignal,
who shall report to Turbodyne the Net Sales of Licensed Products and the amount
of the royalties payable hereunder. However, AlliedSignal shall not be obligated
to retain said records longer than two (2) years after receipt by Turbodyne of
such payment unless the amount of the payment is disputed. In the event the
auditor determines that additional royalties are due Turbodyne, AlliedSignal
shall within (30) days of receipt by AlliedSignal of a copy of such auditors
determination pay to Turbodyne all additional royalties due and the reasonable
costs of the audit.
10. TERM AND TERMINATION
10.(a) The term of this Agreement shall commence on the Effective Date
and. unless sooner terminated as provided in this Section 10, shall continue in
force until the date of expiration of the earlier of the date of the last to
expire of Licensed Patents or the twentieth anniversary of the Effective Date of
this Agreement, unless extended by mutual agreement of the Parties, upon which
date the rights granted under Article 2 above shall become fully paid up and
thereafter irrevocable.
10.(b) This Agreement may be terminated by Turbodyne at any time by
giving not less than sixty (60) days prior written notice of termination if: (i)
AlliedSignal fails to make any payment due under this Agreement when due or
fails to perform any material obligation hereunder when due and such nonpayment
and/or failure continues for sixty (60) days after receipt of notice from
Turbodyne; (ii) AlliedSignal is dissolved or becomes bankrupt or insolvent or
makes any assignment for the benefit of creditors, or if a trustee or receiver
of its property is appointed, or (iii) if AlliedSignal takes or is subjected to
any other action based upon its inability to meet its
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financial obligations. In the event of such termination all rights and licenses
granted to AlliedSignal hereunder shall cease and terminate.
10.(c) This Agreement may be terminated by AlliedSignal if the Licensed
Products fail to obtain commercial or technical viability. No termination by
AlliedSignal under this Section 10(c) shall relieve AlliedSignal of its
obligation to make all payments due to Turbodyne resulting from activities
conducted by AlliedSignal on or before the date of termination and Turbodyne
shall under no circumstances be obligated to reimburse any proper payments made
prior to such termination.
10(d) Turbodyne may terminate this Agreement if Production Commitments
pursuant to paragraph 17 (c) are not obtained by AlliedSignal.
10 (e) During the period of one (1) year commencing on the date of
termination of this Agreement pursuant to Sections 10(b), 10(c), or 10(d) above
AlliedSignal may, subject to the payment to Turbodyne of the running royalty
amount due to it in accordance with Section 3(b) above sell Licensed Products
which it had on hand as of the date of termination.
10(f) The Parties agree that this Agreement is governed by Section
365(n) of the Bankruptcy Code and the terms herein shall be modified as
necessary pursuant to paragraph 15 for continuation of the License granted
herein at AlliedSignal's option upon any rejection of the Agreement by a duly
appointed Trustee in Bankruptcy.
11. FORCE MAJEURE
11.(a) If either Party is rendered unable wholly, or in part, to carry
out any of its duties or obligations under this Agreement by reason of (i) act
of God; or the public enemy, fire, explosion; perils of the sea, flood, drought,
war, riot, sabotage, accident, embargo, or (ii) without limiting
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the foregoing circumstances of circumstances of like or different character
beyond the reasonable control of the party so failing; or (iii) inadequacy, or
shortage or failure of supply of materials or breakdowns, labor trouble from
whatever cause arising and whether or not the demands of the employees involved
are reasonable and within said Party's power to concede or (iv) compliance by
either Party with any order , action, failure to act, direction or request of
any governmental officer, department, agency, authority, or committee thereof;
and (v) whether in any case the circumstance now exists or hereafter arises such
Party shall forthwith give written notice thereof to the other Party (such
notice briefly to describe the circumstances causing such inability) and
thereupon to the extent that the Party giving such notice is unable to perform
such duty or obligation shall be suspended during but no longer than the
continuance of such circumstances.
12. ASSIGNABILITY
12(a) Either Party shall have the right to assign this Agreement to any
Subsidiary, or any Third Party acquiring substantially the entire business or
assets of the Party to which this Agreement pertains;
12.(b) In the event that AlliedSignal assigns any of the Licensed
Patents to any Subsidiary, AlliedSignal will procure the due performance by such
Subsidiary with all of the obligations set out in this Agreement is if such
Subsidiary were a part of this Agreement and will indemnify Turbodyne for and
against all damages, costs, claims and proceedings incurred by Turbodyne as a
result of any breach by such Subsidiary.
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13. NOTICES AND COMMUNICATIONS
13.(a) Any notice or other communication required or authorized to be
given by either party to the other hereunder shall be in writing and shall be
delivered personally or by air mail, registered with postage prepaid and return
receipt requested or by telex confirmed by air mail in either case addressed to
the Party to receive the same at the address set forth below or such other
address as such party shall have specified by written notice hereunder, and
shall be effective when received. It is the responsibility of each party to
notify the other within a reasonable period of time of any change of address.
If to AlliedSignal
AlliedSignal Inc.
Turbocharging Systems
00000 Xxxxxxxxx Xxxxxxxxx
Xxxxxxxx, XX 00000
Attention: President Turbocharging Systems
With copy to:
AlliedSignal Inc.
Law Department
000 Xxxxxxxx Xxxx
XX Xxx 0000
Xxxxxxxxxx, XX 00000
Attn: Licensing
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If to Turbodyne:.
Turbodyne Technologies, Inc.
0000 Xxxxxxxxxxx Xxxxxx
Xxxxxxxxxxx, Xxxxxxxxxx 00000
Attn: Xx Xxxxxx
With copy to:
Kelly, Lytton, Xxxxx & Xxxx LLP
1900 Avenue of the Stars
Xxxxx 0000
Xxx Xxxxxxx, Xxxxxxxxxx 00000
Attn: Xxxxx X. Xxxxx
14. WAIVER
14(a) Failure of either Party to insist upon the strict performance of
any provision of this Agreement or to exercise any right or remedy shall not be
deemed to be a waiver of such right or remedy or of any right or remedy with
respect to any subsequent breach or default, the election by either Party of any
right or remedy shall not be deemed to exclude any other and all rights and
remedies of either Party shall be cumulative.
15. SEVERABILITY
If any provision or provisions of this Agreement are held invalid by a
court of competent jurisdiction or other court appointed authority the remaining
provisions of this agreement shall not be effected and this Agreement shall be
modified to conform with such laws or regulations provided, however, that either
Party shall have the right to terminate this Agreement in the event its rights
hereunder are significantly, adversely affected by such invalidation.
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16. INDEMNIFICATION
Turbodyne shall indemnify AlliedSignal from any damages, losses,
expenses or costs, including attorney's fees, based on any breach of
representations made herein , including, without limitation, any claim by a
Third Party based on any agreement in conflict with or frustrating the purpose
and benefits of this Agreement. Turbodyne shall defend, at its sole expense, and
hold harmless AlliedSignal from any such claim. Notwithstanding the
indemnification of this paragraph 16, in no event shall Turbodyne be liable to
AlliedSignal for consequential damages or damages for loss of business.
17. CONTINUING DEVELOPMENT
17 (a) Turbodyne and AlliedSignal commit to using their best efforts to
continue development of the Technology pursuant to the Joint Development
Agreement during the term of this Agreement for the mutual benefit of the
Parties.
17 (b) The Parties mutually agree to enter into good faith negotiations
for formation of a joint venture for more fully exploiting the Technology upon
full reinstatement of Turbodyne on its listing stock exchanges and receipt of an
opinion of competent counsel that Turbodyne is not liable under any claim,
action, suit, agreement or other obligation which would encumber either Party's
rights with respect to a joint venture.
17(c) Unless this Agreement is superceded by a joint venture negotiated
pursuant to paragraph 17 (b), AlliedSignal will conduct development of the
Licensed Products pursuant to the Joint Development Agreement and obtain a
Production Commitment from a Third Party customer by July 1, 2001 or the License
granted herein will become non-exclusive, at Turbodyne's option. If AlliedSignal
is unable to obtain a Production Commitment by January 1, 2002, Turbodyne may,
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at its option, terminate this Agreement. If the License granted pursuant to
paragraph 2(a) becomes non-exclusive by operation of this paragraph 17(c), the
royalty rates defined in paragraph 3(a) shall be reduced by one-half percent
(.5%).
18. CONFIDENTIALITY AND PUBLICITY
18 (a) Each Party shall maintain in confidence any and all information
received from the other Party which is known to be confidential or proprietary
("Confidential Information") and will not disclose such Confidential Information
to any third party without the written consent of the Party owning the
Confidential Information. Confidential Information shall not include any
information which by demonstrable evidence
i. is known by the receiving Party prior to its disclosure by the
disclosing Party;
ii. is in the public domain;
iii. is received from a third party not having any duty to
maintain the information in confidence; and
iv. is independently created by the receiving Party.
This duty of confidentiality shall not be breached by disclosure of Confidential
Information pursuant to any court order or other process of law or regulatory
requirement, however, the Party required to disclose shall notify the Party
owning the Confidential Information of the requirement to disclose in a timely
manner prior to such disclosure and shall cooperate with that Party in any
efforts to minimize the disclosure of the Confidential Information. The terms
and obligations of this paragraph 18(a) shall survive any termination of the
Agreement.
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18(b) Any statement, publication, press release or announcement by
Turbodyne regarding this Agreement, the License granted hereunder or the
Technology shall be approved by AlliedSignal prior to any publication or
disclosure to a Third Party.
19. GOVERNING LAW
19 (a) This Agreement may be executed in two or more counterparts, each
of which shall constitute an original, but all of which, when taken together,
shall constitute but one instrument and this Agreement shall be governed by and
interpreted in accordance with the laws of the State of California, United
States of America, disregarding any conflicts of law rules which may dictate the
application of the laws of another jurisdiction.
19(b) Any dispute arising under this License which cannot be resolved by
the Parties themselves shall be settled by arbitration before a panel of three
arbitrators in accordance with the Commercial Arbitration Rules of the American
Arbitration Association. The arbitration will be conducted at a location agreed
to by the Parties or, if the Parties fail to agree, in the Los Angeles,
California metropolitan area. The award rendered in any arbitration conducted
may provide for equitable remedies, an accounting and/or reimbursement for
attorneys' fees and costs. Either party may apply to the arbitration panel or an
appropriate court of law for a preliminary injunction or other provisional
remedy to preserve the status quo pending arbitration. Any award shall be
enforceable in any court of competent jurisdiction.
20. ENTIRETY OF AGREEMENT
This Agreement contains the entire agreement and understanding between
the Parties hereto with respect to the subject matter hereof and merges and
supersedes all prior
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discussions and writings with respect thereto. Unless expressly set forth in
this Agreement, no warranties, express or implied are made and no statement,
promises or inducements made or offered by either Party or by any agent or
representative of either Party shall be valid or binding. No modification or
alteration of this Agreement shall be effective unless made in writing and
signed by both Parties hereto.
IN WITNESS WHEREOF the Parties hereto have caused this Agreement to be
executed and delivered in duplicate as of the day and year first written above.
AlliedSignal, Inc. Turbodyne Technologies, Inc.
By: By:
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Title: Title:
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Turbodyne Systems, Inc.
By:
Title:
Attested: Attested:
By: By:
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Title: Assistant Secretary Title: Secretary
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