Exhibit 6.3
i
LANL Control Number: 00-00-00000
NONEXCLUSIVE FIELD OF USE PATENT LICENSE AGREEMENT
Biz-TWEEN THE REGENTS OF THE UNIVERSITY OF CALIFORNIA AND DCH TECHNOLOGY, INC.
LANL Control Number: 00-00-00000
TABLE OF CONTENTS
BACKGROUND .1
1 . DEFINITIONS 1
2. GRANT 3
3. FEES AND ROYALTIES 3
4. DILIGENCE 4
5. REPORTS 4
6. BOOKS AND RECORDS 5
7. TERM OF THE LICENSE AGREEMENT 5
8. TERMINATION BY THE UNIVERSITY 6
9. TERMINATION BY THE LICENSEE 6
10. PATENT PROSECUTION AND MAINTENANCE 7
11. USE OF NAMES, TRADENAMES, AND TRADEMARKS 7
12. WARRANTY BY THE UNIVERSITY 7
13. INFRINGEMENT 8
14. WAIVER 8
15. ASSIGNABILITY 9
16. INDEMNIFICATION - PRODUCT LIABILITY 9
17. LATE PAYMENTS 10
18. NOTICES 11
19. FORCE MAJEURE 11
20. EXPORT CONTROL LAWS 11
21. PREFERENCE FOR UNITED STATES INDUSTRY 11
22. DISPUTE RESOLUTION 12
23. PATENT MARKING 12
24. SURVIVOR 12
25. GOVERNMENT APPROVAL OR REGISTRATION 12
26. DISPOSITION OF LICENSED PRODUCTS 12
27. MISCELLANEOUS 13
Appendix A - PATENT RIGHTS AND FIELD OF USE 00
Xxxxxxxx X - CONFIRMATORY LICENSE 16
Appendix C - FEES AND ROYALTIES 17
Appendix D - MILESTONES 18
Appendix E - PROGRESS REPORT FORMAT 19
Appendix F - FINANCIAL REPORT FORMAT 20
Appendix G - DESIGNATION OF LICENSING TEAM 21
LIMITED NONEXCLUSIVE FIELD OF USE PATENT LICENSE AGREEMENT
DCH TECHNOLOGY, INC.
THIS LICENSE AGREEMENT is entered into by and between THE REGENTS OF THE
UNIVERSITY OF CALIFORNIA, a nonprofit educational institution and a public
corporation of the State of California, hereinafter referred to as the
"University;" and
DCH Technology, Inc., 00000 Xxx. Xxxxxxx, Xxxxx 0, Xxxxxxxx, XX 00000, a
Colorado Corporation, hereinafter referred to as the "Licensee," the parties to
this License Agreement being referred to individually as a "Party," and
collectively as "Parties."
BACKGROUND
The University conducts research and development at the Los Alamos National
Laboratory (LANL) for the U.S. Government under Contract No. W-7405-ENG-36 with
the U.S. Department of Energy (DOE).
Rights in inventions and technical data made in the course of the University's
research and development at LANL are governed by the terms and conditions of the
Contract.
Certain TECHNOLOGY relating to an Annular Feed Air Breathing Fuel Cell Stack has
been developed in the course of the University's research and development at
LANL and is covered by the University's PATENT RIGHTS as defined hereinbelow.
The University desires that such TECHNOLOGY be developed and utilized to the
fullest extent possible so as to enhance the accrual of economic and
technological benefits to the U.S. domestic economy and to provide the benefit
of federally sponsored research to U.S. industrial competitiveness.
The University is therefore willing to grant to Licensee, and the Licensee
desires to obtain from the University certain exclusive rights for the
commercial development, manufacture, use, and sale of the TECHNOLOGY.
NOW, THEREFORE, the Parties agree as follows-:
1. DEFINITIONS
1.1 "TECHNOLOGY" means technical information, know-how, data and PATENT
RIGHTS owned or controlled by the University and relating to Annular Feed Air
Breathing Fuel Cell Stacks.
1.2 "PATENT RIGHTS" means the University's rights arising from U.S. patents
or applications, including any continuing applications, divisionals, and
reissues thereof (but not including continuations-in-part); and any patents
issuing on said applications where elected by Licensee and identified in
Appendix A, attached hereto.
1.3 "LICENSED METHOD" means any method, procedure or process whose use would
constitute, but for the license granted to Licensee herein, an infringement of
any subsisting claim of any patent or patent application identified in Appendix
A.
1.4 "LICENSED PRODUCT" means any article of manufacture, machine or
composition of matter whose manufacture, use, sale, or offer for sale would
constitute, but for the license granted to Licensee herein, an infringement of
any subsisting claim of any patent or patent application identified in Appendix
A, and any article of manufacture, machine or composition of matter produced
through the practice of LICENSED METHOD or whose only substantial use is to
practice LICENSED METHOD.
1.5 "LICENSED INVENTION" means any LICENSED PRODUCT or LICENSED METHOD.
1.6 "SALES" means disposing of LICENSED PRODUCTS by sale, lease, or other
delivery or practicing LICENSED METHOD. A Sale occurs when LICENSED PRODUCTS are
invoiced, or when delivered to a third person, whichever occurs first.
1.7. "SALES PRICE" means the invoice prices for SALES or, if LICENSED
INVENTIONS are not sold but otherwise disposed of, the selling price at which
products of similar kind and quality, sold in similar quantities in which
LICENSED INVENTIONS are being disposed of, are being offered for sale by
Licensee. Where such LICENSED PRODUCTS are not currently being offered for Sale
by Licensee, the SALES PRICE for purposes of computing royalties is the average
selling price at which similar kind and quality, sold in similar quantities, are
then currently being offered for sale by other companies. If such products are
not currently sold or offered for sale by others, then the SALES PRICE, for
purposes of computing royalties, is Licensee's cost of manufacture determined by
Licensee's customary accounting procedures, plus Licensee's standard xxxx-up.
1.8 "NET SALES" means the gross amounts for SALES at SALES PRICE by Licensee,
less the following deductions where applicable: (a) SALES returns; (b) normal
and customary allowances; (c) trade discounts; (d) SALES to the U.S. Government
pursuant to Paragraph 3.2 and (e) transportation charges, duties and tariffs
only if separately stated on an invoice; but before deduction of sales and
excise taxes, costs of insurance, and agents' commissions.
1.9 "AFFILIATE" means:
a) any business entity that owns fifty (50%) percent or more of Licensee's
outstanding stock; or
b) any business entity of which Licensee owns fifty (50%) or more of such
entity's outstanding stock.
1.10 "FIELD OF USE" means a limitation of the application or utilization of
PATENT RIGHTS and is defined in Appendix A.
2. GRANT
2.1 The University grants to the Licensee, subject to Paragraphs 2.2 and 2.3,
a nonexclusive license to make, have made, use, import, sell and offer to sell
LICENSED INVENTION under the PATENT RIGHTS, limited to the FIELD OF USE recited
in Appendix A.
2.2 Rights not expressly granted to Licensee herein are expressly reserved to
the University.
2.3 The Licensee will make available to the University and will grant an
irrevocable, paid-up, royalty-free nonexclusive license to the University to
make and use for any purpose permitted under the Contract any improvements or
developments to the TECHNOLOGY made by Licensee.
2.4 The Licensee will make available to the University and will grant an
irrevocable, paid-up, royalty-free nonexclusive license to the University to
make and use for purposes of performing work for and on behalf of the U.S.
government any improvements or developments to the TECHNOLOGY made by Licensee.
3. FEES AND ROYALTIES
3.1 For the rights, privileges and license granted under this License
Agreement, Licensee shall pay to the University the fees and royalties specified
in Appendix C.
3.2 Notwithstanding Paragraph 4.1 above, Licensee has no obligation to pay
royalties on any SALE of any LICENSED INVENTION to the U.S. Government or any
agency thereof or any U.S. Government contractor who certifies that its purchase
of the LICENSED INVENTION is for or on behalf of the U.S. Government. Licensee
will not impose royalty charges on SALES of LICENSED INVENTION to U.S.
Government entities, and will refund to them any royalty collected on such
SALES.
3.3 The first royalty payment due under this License Agreement is based on
NET SALES by Licensee from the effective date of this License Agreement through
June 30th of the same calendar year, if the effective date is before June 30th
or, through December 31st, if the effective date is after June 30th. Payment
must be made within one month from the end of such period. Subsequent royalty
payments shall be calculated based on NET SALES by Licensee during the
semiannual periods extending from January 1st through June 30th and from July
1st through December 31st of each year, for as long as this License Agreement
remains in effect. Royalty payments must be paid within one month from the end
of the respective semiannual period (i.e. July 30th and January 31st).
3.4 All payments due the University must be paid in United States currency to
the University of California, Los Alamos National Laboratory, at the address set
forth in Paragraph 19.1. Licensee must convert NET SALES invoiced in foreign
currencies into equivalent United States currency at the exchange rate for the
foreign currency prevailing as of the last day of the reporting period, as
reported in the Wall Street Journal.
4. DILIGENCE
4.1 Licensee shall use its best efforts to bring one or more LICENSED
INVENTION to market through a thorough, vigorous and diligent program for
exploitation of the PATENT RIGHTS and to continue active, diligent marketing
efforts for one or more LICENSED INVENTION throughout the life of this License
Agreement.
4.2 To be in compliance with Paragraph 4.1, Licensee must adhere to the
Milestones set out in Appendix D.
4.3 Article 4 is a material term of this Agreement, without which the license
grant under Article 2 would not have been made, and Licensee's failure to per-
form in accordance with Paragraphs 4.1 and 4.2 above shall be grounds for the
University to terminate this License Agreement pursuant to Paragraph 8.1 of this
License Agreement.
5. REPORTS
5.1 Progress Reports. Licensee must submit semiannual Progress
Reports certified by an officer of the Licensee. Such reports are due on the
date that royalty payments are due (July 30th and January 31st), AND MUST BE
SUBMITTED REGARDLESS OF WHETHER ANY PAYMENT IS MADE. This report covers the
Licensee's activities related to the development of the TECHNOLOGY and the
securing of approvals necessary for commercialization of the TECHNOLOGY. The
Progress Reports must conform with the Progress Report Format set forth in
Appendix E hereof. Progress Reports marked by Licensee as proprietary financial
or business information of Licensee will be treated by the University as
proprietary information.
5.2 Financial Reports. Licensee must submit semiannual Financial Reports.
Such reports are due on the date that royalty payments are due (July 30th and
January 31st), AND MUST BE SUBMITTED REGARDLESS OF WHETHER ANY PAYMENT IS
ACTUALLY MADE. Financial Reports must be certified by an officer of the
Licensee, must conform with the Financial Report Format set forth in Appendix F
hereof, must cover the period for which royalty payments are calculated, and
must show total SALES or commercial uses made of LICENSED INVENTION by Licensee
and any sublicensee(s) during the reporting period. IF NO SALE, SUBLICENSE, OR
USE OF LICENSED PRODUCT OR LICENSED METHOD HAS BEEN MADE DURING A REPORTING
PERIOD, A STATEMENT TO THIS EFFECT MUST BE MADE. Financial Reports marked by
Licensee as proprietary financial or business information of the Licensee will
be treated as such by the University. Licensee's failure to submit Financial
Reports pursuant to this Paragraph shall be grounds for the University to
terminate this License Agreement pursuant to Paragraph 8.1.
6. BOOKS AND RECORDS
6.1 The Licensee must keep books and records according to Generally Accepted
Accounting Principles, accurately showing all SALES of LICENSED PRODUCTS or
practice of the LICENSED METHOD by Licensee under the terms of this License
Agreement. Such books and records must be open to inspection and audit on a
proprietary basis by representatives or agents of the University at reasonable
times, but in no event more than once for each calendar year, for the purpose of
verifying the accuracy of the semiannual Financial and Progress Reports and the
royalties due. Licensee may request that any such inspection and audit be
conducted by an independent auditor, in which event, Licensee will pay the
reasonable costs of such auditor.
6.2 The fees and expenses of the University's representatives performing the
inspection and audit will be borne by the University. However, if an error in
royalties owed the University of more than [*] is discovered by the
representatives of the University, then Licensee will pay the fees and expenses
of said representatives within thirty (30) days after receipt of invoice.
6.3 The books and records required by Article 6 must be preserved for at
least three (3) years from the date that the royalty payments were due.
7. TERM OF THE LICENSE AGREEMENT
7.1 This License Agreement is effective as of the later of the dates of
execution by the Parties and the University's receipt of the License Issue Fee
(as specified in Appendix C).
7.2 This License Agreement is in full force and effect from the effective
date and remains in effect until the expiration of the last to expire of the
patents included within the University's PATENT RIGHTS, unless sooner terminated
by operation of law or by acts of either of the Parties in accordance with the
terms of this License Agreement.
7.3 Licensee shall provide notice to University of its intention to file a
voluntary petition in bankruptcy or of another party's intention to file an
involuntary petition in bankruptcy for Licensee, said notice to be received by
[*] Omitted pursuant to request for confidentiality filed with the Securities
and Exchange Commission.
University at least thirty (30) days prior to filing such petition. The
University may terminate this License Agreement upon receipt of such notice at
its sole discretion. Licensee's failure to provide such notice to University
will be deemed a material, pre-petition, incurable breach of this License
Agreement and the Agreement will terminate automatically on the date of filing
such voluntary or involuntary petition in bankruptcy.
8. TERMINATION BY THE UNIVERSITY
8.1 If the Licensee fails to deliver to the University any report when due,
or fails to pay any royalty or fee when due, or if the Licensee breaches any
material term of this License Agreement, including, but not limited to, Article
4. DILIGENCE, the University may give written notice of default to the Licensee.
If the Licensee fails to cure the default within thirty (30) days from the date
of delivery of notice to Licensee, the University has the right to terminate
this License Agreement. This License Agreement will terminate upon delivery of
written notice of termination to the Licensee. Termination does not relieve the
Licensee of its obligation to pay any royalty or license fees due or owing at
the time of termination and does not impair any accrued right of the University.
Licensee will return all tangible property given to Licensee by the University
in support of the rights granted hereunder and return or destroy all intangible
property as directed by the University.
9. TERMINATION BY THE LICENSEE
9.1 The Licensee may terminate this License Agreement by giving written
notice to the University. Such termination will be effective ninety (90) days
from the date of delivery of the notice, and all the Licensee's rights under
this License Agreement will cease as of that date.
9.2 If Licensee exercises its option to terminate this License Agreement
without cause within [*] years from the date of execution of this License
Agreement, then Licensee agrees to pay the University [*] in a lump sum as
liquidated damages, on the effective date of termination. Licensee shall not be
subject to the payment of liquidated damages should Licensee exercise its option
to terminate this License Agreement without cause following the completion of
this [*] year period.
9.3 Termination pursuant to this Article does not relieve the Licensee of any
obligation or liability accrued by Licensee prior to the effective date of
termination or affect any rights of the University arising under this Agreement
prior to termination. Licensee will return all tangible property given to
Licensee by the University in support of the rights granted hereunder and return
or destroy all intangible property as directed by the University.
10. PATENT PROSECUTION AND MAINTENANCE
10.1 The University will diligently prosecute any U.S. patent applications
identified in Appendix A, and will maintain any U.S. patents identified in
Appendix A, using counsel of its choice. The University will provide the
Licensee, on request, with copies of relevant documentation relating to any such
patent prosecution. The Licensee will hold such documentation in confidence.
[*] Omitted pursuant to request for confidentiality filed with the Securities
and Exchange Commission.
10.2 The University will use its best efforts to amend any patent application
to include claims reasonably requested by the Licensee and required to protect
the LICENSED INVENTION.
10.3 The Licensee acknowledges that Patent Rights in foreign countries are not
available under the University's PATENT RIGHTS.
11. USE OF NAMES, TRADENAMES, AND TRADEMARKS
11.1 Nothing contained in this License confers any right to use in
advertising, publicity, or other promotional activities any name, tradename,
trademark, or other designation of either Party hereto (including any
contraction, abbreviation, or simulation of any of the foregoing). Unless
required by law, the use of the name "the University of California" or the name
of any facility or campus of the University of California is expressly
prohibited.
11.2 The University may disclose to third parties the existence of this
License Agreement and the extent of the grant in Article 2, but must not
disclose information identified as proprietary by Licensee under 11.4, except
where the University is required to release the information under either the
California Public Records Act or other applicable law. A decision to release
information under applicable law will be at the sole discretion of the
University.
11.3 Licensee may disclose to third parties the existence of this License
Agreement and the terms and conditions to the extent determined appropriate by
Licensee.
11.4 Licensee will xxxx those portions of a copy of this License Agreement
which Licensee believes contain proprietary business information of Licensee and
return such copy to the University within thirty (30) days of the effective date
of this License Agreement.
12. WARRANTY BY THE UNIVERSITY
12.1 The University warrants that it has the lawful right to grant this
license, subject to DOE assignment of rights in the TECHNOLOGY to the University
in the event such rights are not owned by the University, and that it has not
granted any rights under the University's PATENT RIGHTS to any other party that
diminish any right granted to Licensee, except as required by action of law or
by the University's prime contract with DOE.
12.2 This license is provided WITHOUT warranty of merchantability or fitness
for a particular purpose or any other warranty, express or implied. The
University makes no representation or warranty that the LICENSED PRODUCTS or
LICENSED METHODS will not infringe any patent or other proprietary right.
12.3 IN NO EVENT WILL THE UNIVERSITY BE LIABLE FOR ANY INCIDENTAL, SPECIAL, OR
CONSEQUENTIAL DAMAGES RESULTING FROM EXERCISE OF THIS LICENSE OR THE USE OF
LICENSED PRODUCTS OR LICENSED METHODS.
12.4 Nothing in this License Agreement shall be construed as:
a. a warranty or representation by the University as to the validity or
scope of University's PATENT RIGHTS;
b. an obligation to bring or prosecute actions or suits against third
parties for patent infringement, except as provided in Article 13
(infringement);
c. conferring by implication, estoppel, or otherwise any license or rights
under any patents of the University other than University's PATENT RIGHTS,
copyrights, or other intellectual property of the University; or
d. an obligation by University to furnish any know-how, technical
assistance, or technical data that is unrelated or unnecessary to the transfer
of the TECHNOLOGY to the Licensee for the purpose of implementing this License
Agreement.
13. INFRINGEMENT
13.1 In the event the Licensee shall learn of the infringement of any of the
University's PATENT RIGHTS by a third party, Licensee shall inform the
University and shall provide the University with available evidence of such
infringement. The University shall use its best efforts to terminate such
infringement without litigation, and may in its sole discretion initiate
litigation at its own expense, but shall be under no obligation under this
License Agreement to bring any such legal action.
14. WAIVER
14.1 It is agreed that no waiver by either Party hereto of any breach or
default of any of the covenants or agreements herein set forth shall be deemed a
waiver as to any prior, subsequent and/or similar breach or default.
15. ASSIGNABILITY
15.1 This License Agreement is binding upon and shall inure to the benefit of
the University, its successors and assigns, but shall be personal to the
Licensee and assignable by Licensee to an AFFILIATE without the prior written
consent of the University, provided however, that such AFFILIATE is not-
a) an entity-.
(i) located in, doing business with, or being organized under the laws of a
country, which is considered a sensitive country by DOE based on DOE internal
policies and procedures at the time Licensee requests such assignment, or;
(ii) substantially controlled by an entity located in, doing business with,
or being organized under the laws of a country, which is considered a sensitive
country by DOE based on DOE internal policies and procedures at the time
Licensee requests such assignment.
This License Agreement is assignable by the Licensee to a non-AFFILIATE only
with the written consent of the University, which consent shall not be
unreasonably withheld.
15.2 In the event the University ceases to be the management and operating
contractor for the Los Alamos National Laboratory, the University may assign
this License Agreement to DOE or to the succeeding management and operating
contractor for LANL, as directed by DOE.
15.3 In the event that a foreign company or government acquires a controlling
interest in Licensee, the University, at its sole option and discretion, may
terminate this License Agreement in accordance with DOE policies. Licensee
agrees to notify the University of any change in its ownership that results in a
foreign company or government acquiring a controlling interest in Licensee,
within thirty (30) days prior to any such occurrence.
16. INDEMNIFICATION - PRODUCT LIABILITY
16.1 The Licensee will indemnify the U.S. Government and the University, and
their officers, employees, and agents, against any damages, costs and expenses,
including attorneys' fees, arising from the commercialization and utilization of
the LICENSED PRODUCTS by Licensee, including but not limited to the making,
using, selling or exporting of products, processes, or services derived
therefrom. This indemnification will include, but will not be limited to,
product liability. To the maximum extent permitted by applicable state and
federal law, Licensee has the option to control the defense of any suit that may
result in Licensee's liability under this section.
16.2 Licensee will insure its activities relating to the License Agreement at
its own expense with an insurance company acceptable to the University or
provide a Certification of Self-Insurance acceptable to the University. Licensee
will obtain, keep in force, and maintain a minimum of [*] of Comprehensive or
Commercial Form General Liability Insurance (including contractual liability and
product liability) or an amount no less than [*], whichever amount is greater.
These coverages will not limit the liability of Licensee in any way. Licensee
will provide the University with certificates of insurance, if requested by the
University, including renewals, that show compliance with these requirements at
least thirty (30) days before the first commercial sale or distribution of
LICENSED PRODUCTS. Licensee's failure to maintain this insurance will be
considered a material breach of this License Agreement.
a. If such insurance is written on a claims-made form, coverage shall provide
for a retroactive date of placement prior to or coinciding with the effective
date of this License Agreement.
b. Licensee shall maintain the general liability insurance specified herein
during (a) the period that the LICENSED PRODUCT is being commercially
distributed or sold (other than for the purpose of obtaining regulatory
approvals) by Licensee, an affiliate, or agent of Licensee, and (b) a reasonable
period thereafter, but in no event less than five (5) years from the effective
date of this License Agreement.
16.3 Insurance coverage as required under Paragraph 16.2 above shall:
a. Provide for thirty (30) day advance written notice to the University of
cancellation or of any modification.
b. Indicate that DOE, The Regents of the University of California and its
officers, employees, students, and agents, have been endorsed thereon as
additional named insured.
c. Include a provision that the coverages will be primary and will not
participate with, nor will be excess over, any valid and collectible insurance
or program of self-insured carried or maintained by University.
17. LATE PAYMENTS
17.1 In the event royalty payments or fees are not received by the University
when due, the Licensee will pay to the University interest charges at the rate
of ten percent (10%) per annum on the amount of the royalty payments or fees
overdue. Such interest charges will be calculated from the date the payment or
fee was due to the date payment is actually received by the University.
18. NOTICES
[*] Omitted pursuant to request for confidentiality filed with the Securities
and Exchange Commission.
18.1 Any payment, notice, or other communication required or permitted to be
given to either party hereto is properly given and effective on the date of
delivery if delivered in person or by first-class certified mail, postage paid,
or by facsimile transmission with confirmation, to the respective address or
facsimile number given below, or to any other address designated by written
notice to the other Party as follows..
In the case of the Licensee:
DCH Technology, Inc.
00000 Xxx. Xxxxxxx, Xxxxx 0 Xxxxxxxx, XX 00000
Attn.: Xxxxx Xxxxxx
FAX Number: (000) 000-0000
In the case of the University:
Los Alamos National Laboratory
Civilian and Industrial Technology Program Xxxxxx
X.X. Xxx 0000, Xxxx Xxxx X000
Xxx Xxxxxx, Xxx Xxxxxx 00000
Attn.: License Administrator
FAX Number: (000) 000-0000 or (000) 000-0000
19. FORCE MAJEURE
19.1 Neither party is responsible for delay or failure in performance of any
of the obligations imposed by this License Agreement, if the failure is caused
by fire, flood, explosion, lightning, windstorm, earthquake, subsidence of soil,
court order or government interference, civil commotion, riot, war, or by any
cause of like or unlike nature beyond the control and without fault or
negligence of a party.
20. EXPORT CONTROL LAWS
20.1 Licensee acknowledges and understands that the export of certain goods or
technical data from the United States requires an export control license from
the United States Government, and that failure to obtain an export control
license may result in violation of U.S. laws.
21. PREFERENCE FOR UNITED STATES INDUSTRY
21.1 Licensee represents that it has a business unit that is located in the
United States that will conduct Licensee's activities under this License
Agreement. Licensee further represents that it is not subject to the control of
a foreign company or government.
21.2 Any products embodying LICENSED PRODUCTS or produced through the use of a
LICENSED METHOD will be manufactured substantially in the United States.
22. DISPUTE RESOLUTION
22.1 The Parties will use their best efforts to resolve disputes arising from
this Agreement. Any dispute that cannot be resolved by the Parties will be
resolved by non-binding arbitration in accordance with the rules and procedures
of the American Arbitration Association, acting in the state of New Mexico, and
shall be enforceable in accordance with New Mexico law.
23. PATENT MARKING
23.1 Licensee agrees to xxxx, in accordance with the applicable patent marking
statute, all LICENSED PRODUCTS, and their containers, which have been made,
used, sold or otherwise transferred to a third party, under the terms of this
License Agreement.
24. SURVIVOR
24.1 When this License Agreement expires or is terminated in accordance with
the terms hereof, Paragraphs 6.3, 8.1, 9.3, 11.1, 16.1, 16.2, 16.3, and 24.1
shall survive said expiration or termination.
25. GOVERNMENT APPROVAL OR REGISTRATION
25.1 If this License Agreement or any associated transaction is required by
the law of any nation to be either approved, permitted or registered with any
governmental agency, Licensee will assume all legal obligations to do so.
Licensee will notify University if Licensee becomes aware that this License
Agreement is subject to a U.S. or foreign government reporting, permitting, or
approval requirement. Licensee will make all necessary findings and pay all
costs including fees, penalties and all other out-of-pocket costs associated
with such reporting, permitting or approval process.
26. DISPOSITION OF LICENSED PRODUCTS ON HAND UPON TERMINATION
26.1 Upon termination of this License Agreement by either Party the Licensee
shall provide the University with a written list of all LICENSED PRODUCTS in the
process of being sold, or in use by Licensee, and shall destroy all LICENSED
PRODUCTS in the possession of Licensee unless otherwise directed by University.
27. MISCELLANEOUS
27.1 The headings of the several sections of this Agreement are included for
convenience of reference only and are not intended to be a part of or to affect
the meaning or interpretation of this License Agreement.
27.2 No amendment or modification of this Agreement is binding on the Parties
unless made in a writing executed by duly authorized representatives of the
Parties.
27.3 This License Agreement embodies the entire understanding of the Parties
and shall supersede all previous communications, representations, or
understandings, either oral or written, between the Parties relating to this
License Agreement.
27.4 In the event any one or more of the provisions of this License Agreement
is held to be invalid, illegal, or unenforceable in any respect, the invalidity,
illegality, or unenforceability will not affect any other provisions hereof, and
this License Agreement will be construed as if such invalid or illegal or
unenforceable provisions had never been part of this License Agreement.
27.5 This License Agreement will be interpreted and construed in accordance
with the laws of the State of New Mexico.
IN WITNESS WHEREOF, both the University and the Licensee have executed this
License Agreement, in duplicate originals, by their respective officers on the
day and year hereinafter written.
THE REGENTS OF THE UNIVERSITY OF CALIFORNIA
/s/ XXXX X. XXXXXX
By: Xxxx X. Xxxxxx, Director
Los Alamos National Laboratory
Date: March 10, 1999
DCH TECHNOLOGY, INC.
By: /s/ XXXXX XXXXXXXX
Printed Name: Xxxxx Xxxxxxxx
Title: Vice President
Date: March 15, 1999
APPENDIX A PATENT RIGHTS
LANL Case No. S-80,409, U.S. Patent No. 5,514,486, issued on
May 7,1996, "ANNULAR FEED AIR BREATHING FUEL CELL STACK," by Xxxxxx X. Xxxxxx;
and
LANL Case No. S-84,928, U.S. Patent No. 5,595,834, issued on
January 21,1997, "ANNULAR FEED AIR BREATHING FUEL CELL STACK," by Xxxxxx X.
Xxxxxx et al.
FIELD OF USE
All fields of use except for the following: Power generation for marine,
aerospace, military, portable, and remote-area applications.
APPENDIX B CONFIRMATORY LICENSE
Rev. 01/03/96
DOE Docket No. S-80,409
CONFIRMATORY LICENSE
Application for: ANNULAR FEED AIR BREATHING FUEL CELL STACK
Inventor(s): Xxxxxx X. Xxxxxx
Serial No: 08/522,885
Filing Date: September 1, 1995
Contract No: W-7405-ENG-36
Contractor: THE REGENTS OF THE UNIVERSITY OF CALIFORNIA
The invention identified above is a "Subject Invention" under the above-numbered
contract. A copy of the provisions of the above-numbered contract (certified on
January 12, 1996) governing patent rights in the Subject Invention at the time
the invention was made, has been submitted to the U.S. Department of Energy.
The contractor hereby confirms that under the provisions of the above-numbered
contract governing patent rights, it has granted to the Government a
nonexclusive, nontransferable, irrevocable, paid-up license to practice or have
practiced for or on behalf of the United States the Subject Invention throughout
the world. This license applies to the invention in the above-identified patent
application and any and all divisions or continuations thereof and any resulting
patent or reissue patent which may be granted thereon.
It is understood and agreed that this document does not preclude the Government
from asserting rights under the provisions of said contract or any other
agreement between the Government and the Contractor, or any other rights of the
Government with respect to the above-identified invention.
The Contract hereby grants the Government an irrevocable power to inspect and
make copies of the above-identified application.
Signed this 16th day of January, 1996,
THE REGENTS OF THE UNIVERSITY OF CALIFORNIA
Xxxxxxx X. Xxxxxx
Senior Counsel for Business and Patent Law
If the invention was made under a subcontract, please identify the Prime
Contractor:
Prime Contract No:
Rev. 01/03/96
DOE Docket No. S-84,928
CONFIRMATORY LICENSE
Application for: ANNULAR FEED AIR BREATHING FUEL CELL STACK
Inventor(s): Xxxxxx X. Xxxxxx, Xxx X. Neutzier
Serial No: 08/587,430
Filing Date: January 17,1996
Contract No: W-7405-ENG-36
Contractor: THE REGENTS OF THE UNIVERSITY OF CALIFORNIA
The invention identified above is a "Subject Invention" under the above-numbered
contract. A copy of the provisions of the above-numbered contract (certified on
January 12, 1996) governing patent rights in the Subject Invention at the time
the invention was made, has been submitted to the U.S. Department of Energy.
The contractor hereby confirms that under the provisions of the above-numbered
contract governing patent rights, it has granted to the Government a
nonexclusive, nontransferable, irrevocable, paid-up license to practice or have
practiced for or on behalf of the United States the Subject Invention throughout
the world. This license applies to the invention in the above-identified patent
application and any and all divisions or continuations thereof and any resulting
patent or reissue patent which may be granted thereon.
It is understood and agreed that this document does not preclude the Government
from asserting rights under the provisions of said contract or any other
agreement between the Government and the Contractor, or any other rights of the
Government with respect to the above-identified invention.
The Contract hereby grants the Government an irrevocable power to inspect and
make copies of the above-identified application.
Signed this 4th day of April, 1996,
THE REGENTS OF THE UNIVERSITY OF CALIFORNIA
Xxxxxxx X. Xxxxxx
Senior Counsel for Business and Patent Law
If the invention was made under a subcontract, please identify the Prime
Contractor:
Prime Contract No.
APPENDIX C
FEES AND ROYALTIES
1. FEES
a) License Issue Fee of [*], which is due on the effective date of this License
Agreement.
b) Annual License Fees of [*], payable in advance, are due on January 31, 2000
and January 31, 2001. Thereafter, Licensee will pay the University an Annual
License Fee of [*], which is payable in advance on January 31" of each year,
beginning on January 31, 2002. The University will credit the Annual License Fee
for a particular year against any royalties earned during that same year.
1. ROYALTIES
2.1 The Licensee will pay the University a royalty rate of [*] of NET SALES
during the term of this License Agreement.
APPENDIX D MILESTONES
[*]
[*] Omitted pursuant to request for confidentiality filed with the Securities
and Exchange Commission.
