LICENSE AGREEMENT Between Regeneca International Inc. and Vivakor Inc.
Exhibit
10.11
Between
Regeneca
International Inc.
and
Vivakor
Inc.
This agreement (“Agreement”) is made
and entered into by and between Regeneca International Inc., a Nevada
corporation with principal offices in Irvine, California, (“LICENSEE”) and
Vivakor, Inc. a Nevada corporation with principal offices in Coralville, Iowa,
(“VIVAKOR”), collectively referred to as the “Parties” and individually as a
"Party."
WITNESSETH:
WHEREAS,
VIVAKOR is the owner of a certain intellectual property related to various
nutraceutical formulations, including, but not limited to
VivaBoost, as well as possible future formulations that may be
developed by VIVAKOR for LICENSEE; and
WHEREAS,
VIVAKOR desires that such intellectual property be commercialized into the
consumer markets; and
WHEREAS,
LICENSEE has represented that it has certain marketing, manufacturing and
financial capabilities, and that it shall commit itself to a thorough and
diligent program of development and commercialization of VIVAKOR’s intellectual
property into the consumer markets; and
WHEREAS,
VIVAKOR is willing to grant to LICENSEE, and LICENSEE is willing to accept, a
license to use VIVAKOR’s intellectual property, upon the terms and conditions
set forth below.
NOW
THEREFORE, in consideration of the mutual covenants and premises contained in
this Agreement, the receipt and sufficiency of which is acknowledged, the
Parties agree as follows:
ARTICLE I –
DEFINITIONS
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1.01
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“LICENSED
PRODUCT” shall mean any of VIVAKOR’s proprietary products or technologies
relating to the ingredients, production and manufacture of VivaBoost, as
well as possible future formulations and products that may be developed by
VIVAKOR for LICENSEE, including any products or technologies that are made
part of this AGREEMENT and become within the scope of trade secrets as
defined under the Uniform Trade Secrets Act or United States
PATENT RIGHTS that may be acquired in the future. Such future
formulations and products shall be added to this Agreement through future
written amendments as mutually agreed to by the
Parties.
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1.02
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“PATENT
RIGHTS” shall mean each United States patent application filed for
protection of LICENSED PRODUCT; each patent issuing from the foregoing
applications; each divisional, continuation, or continuation-in-part
application of the foregoing United States applications; each equivalent
patent application in each country other than the United States which
claims priority under such applications; each patent issuing from the
foregoing applications; and each extension or reissue of such
patents.
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1.03
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“EFFECTIVE
DATE” shall mean the date this Agreement has been executed by the last
Party.
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1
ARTICLE II - LICENSE
GRANT
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2.01
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Grant.
VIVAKOR grants to LICENSEE an exclusive license to use, and sell the
LICENSED PRODUCTS in the Distribution Territory, and to grant sublicenses
of the same scope, during the term of this
Agreement.
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2.02
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Exclusive
Distribution Agreement. In addition to the grant for the
exclusive license of the LICENSED PRODUCT, LICENSEE shall be the exclusive
distributor of the LICENSED PRODUCT. As long as VIVAKOR is able to meet
LICENSEE’s production demand in a reasonable time frame, LICENSEE is
required to purchase all LICENSED PRODUCT from
Vivakor.
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2.03
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Reservation.
VIVAKOR reserves an irrevocable, nonexclusive, royalty-free right to
utilize any LICENSED PRODUCT for research and educational purposes only,
and not for commercial purposes or for the commercial benefit of third
parties.
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2.04
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Distribution
Territory. LICENSEE shall be the exclusive distributor of the LICENSED
PRODUCT in the direct-to-consumer markets (defined herein as internet
sales, network marketing, infomercial, radio, television shopping, print
and catalog markets) worldwide.
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ARTICLE III –
CONSIDERATION
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3.01
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License
Fee. In consideration for the license granted in this Agreement, LICENSEE
shall make an initial payment to VIVAKOR of fifteen percent (15%) of its
issued and outstanding common shares as of the EFFECTIVE
DATE. Delivery of stock certificate[s] for said shares must be
delivered no later than thirty (30) days following the EFFECTIVE
DATE. Failure to make this delivery within the specified period
shall cause this Agreement to immediately
terminate.
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3.02
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LICENSEE
shall purchase the LICENSED PRODUCT from VIVAKOR at the initial purchase
prices for LICENSED PRODUCT as set forth in Exhibit A. Prices may be
changed upon 90 days written notice. In the event LICENSEE does
not accept a revised purchase price, it may give notice of its intent to
modify this Agreement to exclude the particular LICENSED PRODUCT and any
related milestone upon the price change. This notice must be
given within 30 days of receiving notice of the price change from
VIVAKOR.
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ARTICLE IV
–SUBLICENSES
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4.01
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Sublicenses.
LICENSEE may grant sublicenses to third parties under such conditions as
it may arrange, as consistent with the terms of this Agreement, with
VIVAKOR’S prior written consent, which shall not be unreasonably withheld.
Upon requesting Vivakor’s consent, LICENSEE shall provide VIVAKOR with
copy of the sublicense agreement for review and Vivakor shall respond to
LICENSEE within five business days.
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4.02
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Sublicensee
Consideration. Sublicensee will be required to purchase all sublicensed
products directly from LICENSEE.
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5.01
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Milestones.
In accomplishing the commercialization under this Agreement, LICENSEE has
committed to the followings:
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(a)
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LICENSEE agrees to purchase at
least Five Million dollars ($5,000,000) of LICENSED PRODUCT over the first
Thirty Six (36) months of the term of this
Agreement.
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(b)
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LICENSEE
agrees to purchase at least Five Hundred-Thousand dollars ($500,000) of
LICENSED PRODUCT over the first Twelve (12) months of the term of this
agreement and at least One Million dollars ($1,000,000) of LICENSED
PRODUCT over the first Twenty Four (24) months of the term of this
agreement.
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(c)
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Other Milestones may be added as
additional LICENSED PRODUCTS are added to this
Agreement.
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2
LICENSEE
shall provide written notification to VIVAKOR within thirty (30) days of
achieving each milestone.
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5.02
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Failure
to Accomplish Milestones. In the event LICENSEE has not
purchased $500,000 of LICENSED PRODUCT during the first Twelve (12) month
period or in the event LICENSEE has not purchased $1,000,000 of LICENSED
PRODUCT during the initial Twenty Four (24) month period, then VIVAKOR, at
its sole option, may waive the requirement to achieve the milestone, may
revise the license granted herein to a nonexclusive license, may
renegotiate the missed milestone, or may terminate this Agreement upon 60
days notice.
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5.03
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Legal
Compliance. LICENSEE must comply with all applicable federal,
state and local laws and regulations in its exercise of all rights granted
to it by VIVAKOR under this
Agreement.
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ARTICLE VI –
PATENTS
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Patent
Filing and Prosecution. Within 180 days of the EFFECTIVE DATE, VIVAKOR
shall proceed in filing one or more United States patent applications for
LICENSED PRODUCT, the number and scope of such applications to be
determined in consultation with VIVAKOR patent counsel, inventors and
LICENSEE. VIVAKOR shall prosecute to completion at least one U.S. patent
application related to LICENSED PRODUCT. “Prosecute to
completion” shall include prosecution of the original and any continuing
applications to issuance or to a final rejection by the U.S. Patent and
Trademark Office. VIVAKOR is not required to, but may at its discretion;
pursue an appeal to the Board of Patent Appeals and Interferences, or the
Federal Circuit Court, or similar action in countries other than the
United States. In order to protect its proprietary information,
the type of patent filing as well as the scope of and details disclosed in
any patent applications and filings required to be filed by VIVAKOR under
this Agreement shall be determined solely by Vivakor. In the
judgment of Vivakor and its legal counsel, if it is determined that it is
best not to file a patent, in order to protect proprietary products,
processes, formulas, etc., then VIVAKOR will not be in violation of this
Agreement for not proceeding with patent applications as otherwise
required by this Agreement.
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6.02
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Patent
Maintenance. VIVAKOR shall continue to maintain at least one U.S. patent
resulting from any prosecution described
hereinabove.
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6.03
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Non-U.S.
Patent Applications. LICENSEE may request VIVAKOR to file and
prosecute patent applications in countries other than the United States
corresponding to each U.S. patent
application.
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6.04
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Election
not to file. LICENSEE will request VIVAKOR in writing no later
than nine (9) months following the date of filing for each U.S. patent
application as to LICENSEE's selection of countries outside the United
States in which it requests VIVAKOR to seek corresponding patent
protection. Once financial responsibility is determined in
accordance with section 6.06, VIVAKOR shall proceed with filing the
foreign patent applications and LICENSEE will receive the benefit of any
such foreign PATENT RIGHTS during the term of this
Agreement.
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VIVAKOR
shall then have the right to file corresponding patent applications, at
its own expense, in those countries not selected by LICENSEE; however,
such applications will be excluded from PATENT RIGHTS and the foreign
countries in which such patent applications are filed may be removed from
the Distribution Territory, at VIVAKOR’s
option.
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6.05
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Prosecution
and Maintenance of Non-U.S. Patents. Should LICENSEE select a
country other than the United States in which to file each corresponding
patent application, and subsequently elects not to bear its share of
costs, if any, as agreed under Section 6.06, it shall so notify VIVAKOR in
writing and will be responsible for any of its costs under Section 6.06
incurred or committed to as of the date of
notification. VIVAKOR shall then have the right to continue
maintenance or prosecution of each such patent or application at its own
expense; however, any PATENT RIGHTS received as a result of such patent or
applications will be excluded from LICENSEE’s PATENT RIGHTS and the
related country may be removed from the Distribution Territory, at
VIVAKOR’s option.
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6.06
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Financial
Responsibility. VIVAKOR shall be responsible for all expenses incurred in
filing, prosecuting, and maintaining each United States patent application
and patent. In the event LICENSEE requests VIVAKOR to file and
prosecute patent applications in countries other than the United States,
the Parties shall mutually agree as to which Party will be responsible (or
will agree on a cost sharing formula) for the related patent costs to be
incurred for such patent
applications.
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3
ARTICLE VII - PAYMENTS AND
REPORTS
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7.01
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When
Payments are Due. Unless otherwise specified, as in the case of an advance
payment required to initiate production, payments shall be made
quarterly. Payments shall be made to VIVAKOR, not later than
sixty (60) days after the last day of the calendar quarter in which they
accrue.
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7.02
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Interest
Charges. Overdue payments may, at the sole discretion of
VIVAKOR, be subject to a daily charge commencing on the 31st day after
such payment is due, compounded monthly, at the rate of either one and
one-half percent (1.5%) per month or the highest legal interest rate,
whichever is lower. The payment of such interest will not preclude VIVAKOR
from exercising any other rights it may have as a consequence of the
lateness of any payment.
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ARTICLE VIII – TERM AND
TERMINATION
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8.01
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Expiration. After
an initial term of 36 months, this Agreement will automatically renew for
additional 12-month terms until either party elects to terminate upon 60
days written notice prior to the end of a renewal term, unless sooner
terminated as provided herein.
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8.02
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Termination
by Licensee. LICENSEE may terminate this Agreement by providing
written notice to VIVAKOR at least ninety (90) days before the termination
is to take effect.
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8.03
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Termination
by System. If LICENSEE materially breaches this Agreement,
VIVAKOR may give LICENSEE written notice of the
breach. LICENSEE shall have a period of five (5) days from
receipt of the notice to cure the material breach. If LICENSEE
does not cure the material breach within this period, VIVAKOR may
terminate this Agreement without further
notice.
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8.04
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Matters
Surviving Termination. All accrued obligations and claims,
including reimbursement of patent expenses, license fee obligations,
royalty obligations, minimum annual consideration obligations, interest
charge obligations, and all other financial obligations, and claims or
causes of action for breach of this Agreement, shall survive termination
of this Agreement. Obligations of confidentiality shall survive
termination of this Agreement. This section controls in the
case of a conflict with any other section of this
Agreement.
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9.01
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Indemnification.
LICENSEE SHALL AT ALL
TIMES DURING THE TERM OF THIS AGREEMENT AND THEREAFTER INDEMNIFY, DEFEND,
AND HOLD HARMLESS VIVAKOR, ITS SHAREHOLDERS, OFFICERS, AGENTS AND
EMPLOYEES AGAINST ANY CLAIM, PROCEEDING, DEMAND, LIABILITY OR EXPENSE
(INCLUDING LEGAL EXPENSE AND REASONABLE ATTORNEYS’ FEES) WHICH RELATES TO
INJURY TO PERSONS OR TO PROPERTY, ANY ACTION BROUGHT BY A THIRD PARTY
ALLEGING INFRINGEMENT OF INTELLECTUAL PROPERTY RIGHTS, OR AGAINST ANY
OTHER CLAIM, PROCEEDING, DEMAND, EXPENSE, AND LIABILITY OF ANY KIND
WHATSOEVER RESULTING FROM THE SALE, COMMERCIAL USE, LEASE, CONSUMPTION, OR
ADVERTISEMENT OF LICENSED PRODUCTS OR ARISING FROM ANY OBLIGATION OF
LICENSEE OR SUBLICENSEE(S) UNDER THIS
AGREEMENT.
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9.02
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Representation.
VIVAKOR represents that it owns and has title to LICENSED PRODUCT and has
the full right and power to grant the license set forth in this Agreement,
and that there are no outstanding agreements, assignments, or encumbrances
inconsistent with the provisions of this Agreement. VIVAKOR MAKES NO OTHER
REPRESENTATIONS AND EXTENDS NO OTHER WARRANTIES OF ANY KIND, EITHER
EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED TO WARRANTIES OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE, NOR DOES VIVAKOR
ASSUME ANY OBLIGATIONS WITH RESPECT TO INFRINGEMENT OF PATENT RIGHTS OR
OTHER RIGHTS OF THIRD PARTIES DUE TO LICENSEE’S ACTIVITIES UNDER THIS
AGREEMENT.
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4
ARTICLE X –
NOTICES
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10.01
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Notices.
Payments, notices, or other communications required by this Agreement
shall be sufficiently made or given if mailed by certified First Class
United States mail, postage pre-paid, or by commercial carrier (e.g.,
FedEx, UPS, etc.) when such carrier maintains receipt or record of
delivery, addressed to the address stated below, or to the last address
specified in writing by the intended
recipient.
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If
to VIVAKOR:
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Tannin
Xxxx, Ph.D
CEO
VIVAKOR
0000
Xxxxxxx Xxxx Xxxxx 000
Xxxxxxxxxx,
XX 00000
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If
to LICENSEE for
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Legal
Matters:
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for
Financial Matters:
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Xxxxx
Xxxxxx
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Xxxxxx
Xxxxxx
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Regeneca,
Inc.
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Regeneca,
Inc.
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00
Xxxxxxxxxx, Xxxxx 000
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18
Technology, Xxxxx 000
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Xxxxxx
XX 00000
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Xxxxxx
XX 00000
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ARTICLE XI - MISCELLANEOUS
PROVISIONS
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Notice
of Infringement. VIVAKOR and LICENSEE shall promptly notify one another in
writing of any alleged infringement of any LICENSED
PRODUCT. Within thirty (30) days after receipt of such notice,
VIVAKOR and LICENSEE shall formulate a strategy for resolving the alleged
infringement. LICENSEE acknowledges that VIVAKOR’s involvement,
participation, and representation in any litigation requires the prior
written consent of VIVAKOR.
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11.02
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Export
Controls. It is understood that VIVAKOR is subject to United
States laws and regulations controlling the export of technical data,
computer software, laboratory prototypes and other commodities, and that
its obligations hereunder are contingent on compliance with applicable
United States export laws and regulations. The transfer of
certain technical data and commodities may require a license from the
cognizant agency of the United States Government or written assurances by
LICENSEE that LICENSEE shall not export data or commodities to certain
countries without prior approval of such agency. VIVAKOR neither
represents that a license shall not be required nor that, if required, it
shall be issued.
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11.03
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Non-Use
of Names. LICENSEE shall not use the names of VIVAKOR, nor of
any of its employees or components, nor any adaptation thereof, in any
press release, announcement, website, advertising, promotional or sales
literature without the prior written consent obtained from
VIVAKOR.
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11.04
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Trademarks. LICENSEE
may select, own and use its own trademark on LICENSED
PRODUCTS. However, nothing herein shall be construed as
granting to LICENSEE any license or other right under any trade name,
trademark, or service xxxx owned or licensed by
VIVAKOR. Conversely, VIVAKOR shall have no rights to trade
names, trademarks, or service marks owned by
LICENSEE.
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11.05
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Assignment
of this Agreement. This Agreement, with the rights and
privileges it creates, is assignable only with the written consent of both
Parties. In the event of a corporate transaction, such as a change in
control of either party, such consent shall not be unreasonably
withheld.
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5
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11.06
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Force
Majeure. Other than an obligation for the payment of money, VIVAKOR, upon
receipt of documentation from LICENSEE which it deems appropriate, shall
excuse any breach of this Agreement, which is proximately caused by war,
strike, act of God, or other similar circumstance normally deemed outside
the control of well-managed
businesses.
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11.07
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Entire
Agreement. This Agreement contains the entire understanding of
the Parties with respect to PATENT RIGHTS, and supersedes all other
written and oral agreements between the Parties with respect to PATENT
RIGHTS. It may be modified only by a written amendment signed
by the Parties.
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11.08
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11.09
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Headings. Headings
appear solely for convenience of reference. Such headings are
not part of, and shall not be used to construe, this
Agreement.
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11.10
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No
Waiver; Severability. If any provision of this Agreement shall
be held to be invalid, illegal, or unenforceable, the validity, legality
and enforceability of the remaining provisions shall not in any way be
affected or impaired thereby. No waiver of any breach of this
Agreement shall constitute a waiver of any other breach of the same or
other provision of this Agreement and no waiver shall be effective unless
made in writing.
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[SIGNATURE
PAGE TO FOLLOW]
6
The
Parties have caused this Agreement to become effective as of the date last
executed below.
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Regeneca,
Inc.
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___________________________________
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______________________________________
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By:
Xxxxx Xxxxxx
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Tannin
Xxxx
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Title:
_______________________________
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Chief
Executive Officer
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Date:
_______________________________
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Date:
_________________________________
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7
EXHIBIT
A
INITIAL
PRICES OF LICENSED PRODUCT
8
