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TECHNOLOGY LICENSE AGREEMENT
Between
Honeywell International Inc. and Honeywell Intellectual Properties Inc.
And
Laser Energetics Inc.
Relating to R-Line Optical Pumping of Alexandrite Lasers Using Semiconductor
Diode Lasers
Dated: March 23, 2000
--------------------------------------------------------------------------------
HONEYWELL AND LASER ENERGETICS PROPRIETARY
Page 1
TABLE OF CONTENTS
PREAMBLE.......................................................................3
RECITALS.......................................................................3
1. DEFINITIONS.............................................................3
2. LICENSE GRANT; CONFIDENTIALITY..........................................3
3. REPRESENTATIONS AND WARRANTIES; PATENT INDEMNITY; DISCLAIMERS;
TERMINATION.............................................................3
4. COMPENSATION............................................................3
5. CODE OF CONDUCT AND PROPER BUSINESS PRACTICES...........................3
6. INTERPRETATION AND ENFORCEMENT..........................................3
7. MISCELLANEOUS...........................................................3
8. ENTIRE AGREEMENT........................................................3
SIGNATORIES....................................................................3
EXHIBIT A......................................................................3
EXHIBIT B......................................................................3
HONEYWELL AND LASER ENERGETICS PROPRIETARY
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Technology License Agreement
Preamble
This Technology License Agreement ("Agreement") is made effective March
21, 2000 ("Effective Date") by and between Honeywell International Inc., a
Delaware corporation acting through its Defense Avionics Systems business unit
having an office at 000 Xxxxx 00 Xxxx, Xxxxxxxxx, XX 00000 and Honeywell
Intellectual Properties Inc., an Arizona corporation having an office at 0000
Xxxxx Xxxxx Xxxxx, Xxxxx, Xxxxxxx 00000 (collectively referred to as
"Honeywell"), and Laser Energetics Inc., a Florida corporation having a place of
business at 0000 Xxxxxx Xxxxxx Xxxx, Xxxxxxxxxxx, XX 00000 (referred to as
"Licensee"). Honeywell and Licensee hereinafter may also be referred to
collectively as "Parties" and separately as a "Party".
Recitals
WHEREAS, Honeywell is in possession of at least license rights in the
invention disclosed in Invention Record P.D. File 82-2716 entitled "R-Line
Optical Pumping of Alexandrite Lasers Using Semiconductor Diode Lasers"
("Invention Record") attached hereto as Exhibit A and claimed in U.S. Patent
Nos. 5,488,626 and 6,009,114, (such license rights being referred to herein as
"Invention Rights") and
WHEREAS, Licensee is interested in receiving, and Honeywell is interested
in transferring to Licensee, certain rights in Honeywell's Invention Rights
under mutually agreed upon terms and conditions.
NOW THEREFORE, in consideration of the mutual covenants, promises and
conditions set forth in this Agreement, the sufficiency of which is hereby
acknowledged, the Parties agree as follows:
1. Definitions
As used herein, the terms below have the following meanings. Any such terms,
unless the context otherwise requires, may be used in the singular or the
plural, depending upon the reference.
1.1 "Cash Payment" shall mean any and all sublicense fees or other similar
consideration paid to Licensee under Sublicenses that Licensee secures under
this Agreement.
1.2 "Royalties" shall mean any and all running royalties or other similar
consideration paid under Sublicenses secured by Licensee pursuant to this
Agreement.
HONEYWELL AND LASER ENERGETICS PROPRIETARY
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1.3 "Sublicensee" shall mean the person or entity who is granted by
Licensee a sublicense to use the Invention Rights to make, use, and sell the
Licensed Products in accordance with this Agreement.
1.4 "Sublicense" shall mean any and all sublicenses granted by Licensee to
the Sublicensees of the right and license to use the Invention Rights for the
sale of the Licensed Products pursuant this Agreement.
1.5 "Licensed Product" means the products listed in Exhibit B, the sale of
which by Licensee or its Sublicensees, would, but for rights, licenses, and
sublicenses granted pursuant to this Agreement, constitute infringement or
unauthorized use of any of the Invention Rights.
1.6 "Net Selling Price" means, with respect to a Licensed Product sold,
leased, exchanged, or put into use,
(a) if the sale or transfer is between Licensee or its
Sublicensee, as the case may be, and an unaffiliated buyer in
an arm's length sale or transfer for such Licensed Product,
the selling price (or value of property or consideration
received if not cash) actually obtained by Licensee or its
Sublicensee from an unaffiliated buyer in the form in which it
is sold, whether or not assembled (and without excluding
therefrom any components or subassemblies which are included
in such selling price);
(b) if the sale or transfer is between Licensee or its
Sublicensee, as the case may be, and any of its affiliates for
resale to a buyer unaffiliated with Licensee or its
Sublicensee and their affiliates, the selling price shall be
the actual selling price to such unaffiliated buyer; or
(c) for all sales or transfers other than 1.4 (a) and (b)
including a sale or transfer between Licensee or its
Sublicensee, as the case may be, and a buyer in any other
manner other than in an arm's length sale, (i) the selling
price of such licensed product which Licensee or its
Sublicensee charged when last selling such Licensed Products
per se and in comparable quantities; (ii) if Licensee or its
Sublicensee has not previously sold such Licensed Product per
se or has done so only in quantities which are not comparable
to the quantities of such Licensed Products, then the selling
price shall be the publicly available selling price, in
comparable quantities, charged by a third party which sells
substantially the same such product, or the average publicly
available selling price of third parties selling substantially
the same product if it is sold by more than one third party;
or (iii) if substantially the same product is not being sold
by a third party, then the selling price shall be 200% of
Licensee's or its Sublicensee's fully burdened direct
manufacturing cost for such Licensed Product;
HONEYWELL AND LASER ENERGETICS PROPRIETARY
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including in (a), (b) and (c) xxxxxxxx for sales or lease commissions and normal
packaging and less in (a), (b) and (c), the following to the extent invoiced and
actually paid or allowed by Licensee:
(i) extra packaging charges caused by special customer
requests;
(ii) usual trade discounts allowed to unaffiliated
persons or entities;
(iii) returns and allowances;
(iv) transportation and directly related duties; and
(v) excise and sales taxes.
1.7 "Term" of this Agreement shall mean the period beginning on the
Effective Date and continuing until and including the Termination Date.
1.8 "Termination Date" shall mean the termination date of this Agreement.
Unless this Agreement is terminated earlier in accordance with one or more
provisions of this Agreement, the Termination Date shall be the expiration date
of U.S. Patent No. 5,488,626 and 6,009,114.
1.9 "Territory" shall mean the United States.
2. License Grant; Confidentiality
2.1 Conveyance. Honeywell grants to Licensee a personal,
nontransferable (except as provided in Paragraph 6.4.1) exclusive,
royalty-bearing license in the Territory under the Invention Rights to
practice the technology described in the Invention Record and to sell
Licensed Products. Effective upon Honeywell being named the record owner
of U.S. Patent Nos. 5,488,626 and 6,009,114, as evidenced by USPTO
records, Honeywell hereby grants to Licensee a personal, royalty-bearing
nontransferable (except as provided in Paragraph 6.4.1) exclusive, fully
paid-up right in the Territory to sublicense others under the Invention
Rights to practice the technology described in the Invention Record and to
sell Licensed Products. Honeywell hereby acknowledges its intent to take
the reasonable steps to become the owner of record of U.S. Patent Nos.
5,488,626 and 6,009,114.
HONEYWELL AND LASER ENERGETICS PROPRIETARY
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Prior to Licensee entering Sublicenses under this Agreement, the parties
shall negotiate in good faith and mutually agreed on minimum sublicensing terms
and conditions to be included in all Sublicenses. Honeywell shall retain, and
does hereby retain, the exclusive right to enforce the Invention Rights and the
right to license the Invention Rights in connection with the settlement of any
enforcement of the Invention Rights against potential infringers. Upon
identifying a prospective Sublicensee, Licensee shall submit in writing to
Honeywell a term sheet delineating proposed terms and conditions of the
contemplated Sublicense. Honeywell hereby agrees to respond in writing within
ten (10) business days from the date of receipt of the term sheet. In the event
that Honeywell fails to respond within ten (10) days, such failure to respond
shall be deemed an acceptance of the terms detailed in the term sheet, and
Licensee shall be permitted to enter into a Sublicense with the Sublicensee on
those terms.
2.2 Scope of License. No license, either express or implied, is granted by
Honeywell to Licensee hereunder with respect to any patent, trade secret,
information or intellectual property rights except as expressly stated above.
2.3 Protection of Invention Rights. Honeywell shall at all times have the
sole right to take or not take whatever steps it deems necessary or desirable to
protect its rights in the Invention Rights.
2.4 Patent Markings. Licensee shall xxxx all products made thereby or
therefor, which embodies the invention disclosed in the Invention Record and
claimed in U. S. Patent Nos. 5,488,626 and 6,009,114. If it is impractical to so
xxxx such products, then Licensee shall use reasonable efforts to so xxxx the
packages, containers, or documentation distributed with the products. Licensee
shall furnish to the Honeywell on request representative samples of patent
markings used thereby in connection with such products.
2.5 Confidentiality. The Proprietary Information Exchange Agreement
entered between Honeywell and Licensee dated May 26, 1998 ("PIEA") is hereby
incorporated by reference and made a part hereof. In the event of a conflict
between the PIEA and this Agreement, the PIEA shall take precedence and control.
2.6 Minimum Level of Performance. Effective upon Honeywell being named the
record owner of U.S. Patent Nos. 5,488,626 and 6,009,114 as evidenced by USPTO
records, Licensee shall be obligated to certain minimum performance obligations
to be negotiated in good faith by the parties consistent with the following:
2.6.1 Licensee shall identify in writing to Honeywell Sublicensees
who are ready, able and willing to enter into Sublicenses;
HONEYWELL AND LASER ENERGETICS PROPRIETARY
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2.6.2 Licensee shall identify in writing to Honeywell potential
Sublicensees to which Licensee has actively marketed and
promoted the Invention Rights during the preceding year; and
2.6.3 Licensee shall use all reasonable means to effectively promote
the sublicensing of the Invention Rights. These means shall
include, but are not be limited to the following:
a. diligently and faithfully soliciting Sublicenses
for the Invention Rights;
b. providing knowledgeable and trained personnel to
assist in the sublicensing of the Invention
Rights;
c. making visits to potential Sublicensees from time
to time; and
d. make quarterly reports to Honeywell regarding its
efforts and progress made towards sublicensing the
Invention Rights.
3. Representations and Warranties; Patent Indemnity; Disclaimers;
Termination
3.1 Honeywell Representations and Warranties. Honeywell hereby
represents and warrants to Licensee, to Honeywell's knowledge, that it has the
right to grant to Licensee the rights and licenses granted herein and to enter
this Agreement; and Honeywell is receiving the Shares (as defined in Section
4.1) for investment purposes for its own account, and not with the view to or in
connection with any distribution thereof. Honeywell understands that the Shares
may not be sold, assigned, offered for sale, pledged or otherwise transferred
unless such transaction is registered under the Securities Act of 1933 and
applicable state securities laws, or exemptions from such registration
requirements are available or such requirements are not applicable.
3.2 Licensee Representation and Warranties. Licensee hereby
represents and warrants to Honeywell that, to Licensee's knowledge, Licensee has
the right to grant to Honeywell the rights granted herein and to enter this
Agreement. The authorized capital stock of Licensee consists of 25,000,000
shares of common stock, of which, on the date hereof, 4,344,580 shares are
issued and outstanding. The Shares (as defined in Section 4.1) have been validly
authorized and issued, are fully paid and nonassessable and have not been issued
in violation of any preemptive rights or of any federal or state securities
laws. In addition, options and contractual commitments exist relating to the
issuance of 440,000 shares of common stock. Exclusive of these 440,000 shares,
HONEYWELL AND LASER ENERGETICS PROPRIETARY
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there is no security, option, warrant, right, call, subscription agreement,
commitment or understanding of any nature whatsoever to which Licensee is a
party, that directly or indirectly (i) calls for the issuance, sale, pledge or
other disposition of any shares of capital stock of Licensee or any securities
convertible into, or other rights to acquire, any shares of capital stock of
Licensee, (ii) obligates Licensee to grant, offer or enter into any of the
foregoing or (iii) relates to the voting or control of such capital stock,
securities or rights. Licensee has, and will transfer to Honeywell at the
Closing, good and valid title to the Shares, free and clear of any lien,
encumbrance, charge or other security interest, proxies and voting or other
agreements.
3.3 Disclaimers. Honeywell does not make any representation to Licensee
regarding the scope, validity or enforceability of the Invention Rights. Other
than expressly provided in Paragraph 3.1 herein, Honeywell makes no
representations, extends no warranties of any kind and assumes no responsibility
or liability whatsoever with respect to the design, manufacture, assembly,
testing, sale, use or importation of any products or any portion thereof. THERE
ARE NO OTHER WARRANTIES, EITHER EXPRESS OR IMPLIED, INCLUDING, BUT NOT LIMITED
TO, THE IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR ANY PARTICULAR
PURPOSE, EVEN IF HONEYWELL HAS BEEN MADE AWARE OF SUCH PURPOSE, OR WARRANTIES
AGAINST INFRINGEMENT OF INTELLECTUAL PROPERTY RIGHTS OF THIRD PARTIES, EVEN IF
HONEYWELL HAS BEEN MADE AWARE OF SUCH INFRINGEMENT. EXCEPT FOR CONFIDENTIALITY
OBLIGATIONS HEREUNDER, NEITHER PARTY NOR ANY OF ITS AFFILIATES SHALL BE LIABLE
TO THE OTHER OR ITS AFFILIATES FOR INDIRECT DAMAGES, INCLUDING ANY LOST PROFITS
OR OTHER INCIDENTAL OR CONSEQUENTIAL, EXEMPLARY OR SPECIAL DAMAGES, HOWEVER
CAUSED AND ON ANY THEORY OF LIABILITY ARISING OUT OF THIS AGREEMENT, INCLUDING
THE USE OR INABILITY TO USE ANY PATENT OR PRODUCTS. HONEYWELL'S TOTAL LIABILITY
IN THE AGGREGATE UNDER THIS AGREEMENT IS LIMITED TO AND SHALL NOT EXCEED THE
MONIES RECEIVED UNDER THIS AGREEMENT UP TO FIVE HUNDRED THOUSAND DOLLARS
(US$500,000).
3.4 Termination.
3.4.1 Subject to the terms of Paragraph 3.4.3, Honeywell may
terminate this Agreement upon thirty (30) days prior written notice to Licensee
upon Licensee's default in the performance of the material terms, conditions,
obligations, undertakings, covenants or liabilities set forth herein. The
termination rights and remedies available to Honeywell provided herein are in
addition to all other rights and remedies available to Honeywell.
3.4.2 Subject to the terms of Paragraph 3.4.3, Licensee may
terminate this Agreement upon thirty (30) days prior written notice to Honeywell
upon Honeywell's default in the performance of any of the material terms,
conditions, obligations, undertakings, covenants or liabilities set forth
herein. The termination rights and remedies available to Licensee provided
herein are in addition to all other rights and remedies available to Licensee.
HONEYWELL AND LASER ENERGETICS PROPRIETARY
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3.4.3 If an event set forth in Paragraphs 3.4.1 or 3.4.2, above (a
"Default") occurs, the non-defaulting Party (the "Non-Defaulting Party") shall
provide written notice to the defaulting Party (the "Defaulting Party") of the
alleged occurrence of the event. The Defaulting Party shall have thirty (30)
days from the date that the notice was given in order to cure the Default. In
the event that the Default is not cured within the thirty (30) day period the
Non-Defaulting Party shall have the right to terminate the Agreement. Except as
otherwise provided in this Agreement, the Non-Defaulting Party's election to
terminate this Agreement in accordance with this Paragraph shall be without
prejudice to the Non-Defaulting Party's right to seek any and all additional
legal remedies to which it may be entitled as a result of the Default.
4. Compensation
4.1 Initial License Fee under this Agreement. Licensee shall deliver to
Honeywell (1) upon execution of the Agreement, stock certificates in the name of
Honeywell International Inc. for twenty thousand (20,000) shares of common stock
for Laser Energetics Inc. having an agreed value as of the Effective Date of one
hundred thousand dollars (US$100,000) (the "Shares") and (2) on or before the
second anniversary of the Effective Date, a non-refundable, non-creditable, one
time, lump sum payment in the amount of five hundred thousand United States
dollars (US$500,000) ("Initial Payment").
4.2 Further Payments under this Agreement.
4.2.2 Licensee shall pay to Honeywell running royalties of any and
all Licensed Products which are sold, exchanged, leased or put
into first use by Licensee or its Sublicensees, which royalty
shall be at the rate of six (6%) applied to the Net Selling
Price of such Licensed Products.
4.2.3 The first five hundred thousand dollars (US$500,000) in Cash
Payments received by Licensee under Sublicenses secured by
Licensee shall be paid to Honeywell, which Cash Payments shall
be creditable towards the Initial Payment until paid in full.
After the Initial Payment has been paid in full, Licensee
shall pay to Honeywell fifty percent (50%) of any Cash Payment
paid to Licensee under Sublicenses that Licensee secures.
Nothing contained in this Paragraph 4.2.3 shall relieve
Licensee from its obligation to pay to Honeywell the Initial
Payment in full on or before the second anniversary of the
Effective Date;
4.2.4 Commencing on the third anniversary of the Effective Date and
each anniversary thereafter, Licensee shall pay to Honeywell
minimum, guaranteed, annual payments comprising Cash Payments
and Royalties in the amount of fifty thousand US dollars
(US$50,000) ("Annual Minimums"). Cash Payments creditable
towards the Initial Payment as set forth in Paragraph 4.2.3
shall not be creditable towards the Annual Minimums; and
HONEYWELL AND LASER ENERGETICS PROPRIETARY
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4.2.5 In the event Honeywell grants a license to a potential
infringer under the Invention Rights in connection with the
settlement of an enforcement of the Invention Rights,
Honeywell agrees to share with Licensee the proceeds resulting
from such license after and less Honeywell's fair reasonable
costs and expenses associated with the enforcement effort as
follows:
(a) Honeywell shall pay to Licensee fifty percent (50%) of
any initial payments made by the potential infringers
for a license under the Invention Rights, which shall be
creditable towards the Initial Payment until paid in
full; and
(b) The first six percent (6%) of running royalties received
from a potential infringer for a license under the
Invention Rights shall belong exclusively to Honeywell.
Honeywell shall pay to Licensee a running of 50%
royalties received above and beyond six percent (6%) of
any and all Licensed Products which are sold, exchanged,
leased or put into first use by the potential infringer.
4.3 Payment schedule, calculation and method of payments. Unless otherwise
expressly stated herein, all payments due and payable to Honeywell under this
Agreement shall be made in accordance with the following payment schedule,
calculation and method of payments:
4.3.1 All royalties to Honeywell under Paragraph 4.2 of this
Agreement are to be paid each calendar quarter within thirty (30) days
following the end of such quarter.
4.3.2 Commencing on the third anniversary of the Effective Date and
within thirty (30) days after each anniversary of the Effective Date,
Licensee shall pay to Honeywell the difference between the Annual Minimums
and the actual payments made by Licensee during the twelve month period
preceding the anniversary of the Effective Date (excluding Initial
Payments and Cash Payments creditable towards the Initial Payment). In the
event Licensee fails to timely pay the Annual Minimums and comply with its
obligations under Paragraph 4.3.2, the exclusive licenses granted to
Licensee hereunder shall automatically become non-exclusive and nothing
contained hereunder shall prohibit Licensee from exploiting or licensing
the Invention Rights without restriction.
HONEYWELL AND LASER ENERGETICS PROPRIETARY
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4.3.3 All payments to Honeywell under Paragraph 4.2 of this
Agreement shall be accompanied by a report showing information reasonably
requested by Honeywell and reasonably necessary for Honeywell to calculate
payments due from Licensee under this Agreement.
4.3.4 Licensee shall pay interest to Honeywell at a rate of two
percent (2%) over the prime per annum interest rate in the country of
Licensee's domicile on any and all amounts that are at any time overdue
and payable to Honeywell under this Agreement, such interest being
calculated on each such overdue amount from the date when such amount
became due to the date of actual payment thereof. The payment of such
interest shall not replace any of Honeywell's other rights under this
Agreement resulting from Licensee's default by failure to pay any amounts
due hereunder.
4.3.5 Licensee shall at all times during the life of this Agreement,
and for three (3) years after termination, accumulate accurate and
up-to-date records which will contain the complete data from which amounts
due to Honeywell under this Agreement can be readily calculated, shall
preserve and permit audits and examination of such records by Honeywell's
representatives at reasonable intervals and under reasonable conditions
during the life of this Agreement and for three (3) years thereafter, and
shall supply to such Honeywell representatives upon request all
information useful in making a proper audit and verification of Licensee's
performance of its obligations under this Agreement. If an audit,
examination or verification shows that Licensee has paid less than
required under this Agreement, Licensee shall promptly pay the delinquent
amount, together with late payment charges as set forth in Paragraph
4.3.4. If the amount of underpayment exceeds ten percent (10%) of the
amount that should have been paid, Licensee shall also pay the full cost
of the audit described in this Paragraph 4.3.5.
4.4 All amounts payable to Honeywell under this Agreement are to be paid
in U.S.A. currency. Payments shall be made by electronic wire transfer as
follows:
Mellon Bank
Pittsburgh, PA
ABA 000000000
Honeywell Intellectual Properties Inc.
Account Number 009-7594
Advice: AE-O-716
5. Code of Conduct and Proper Business Practices
5.1 Licensee agrees that it shall take no action or use or spend any
funds, regardless of source, in violation of the laws of the United States of
America or any country or countries in which it performs under this Agreement,
including but not limited to the payment of bribes, kickbacks, political
contributions, or other prohibited payments.
HONEYWELL AND LASER ENERGETICS PROPRIETARY
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5.2 Licensee certifies that Honeywell has provided Licensee a copy of, and
that Licensee has read, understands and agrees to abide by the provisions of,
the Honeywell Code of Conduct and the United States Foreign Corrupt Practices
Act ("FCPA"), as amended, 15 USC sections 78(m)b, 78dd-1, 78dd-2, 78ff(c).
5.3 Documentation of all business transactions shall properly describe the
pertinent events and such records must not be false, distorted or misleading. No
undisclosed or unrecorded fund or asset shall be established for any purpose.
5.4 LICENSEE agrees to indemnify, defend and hold harmless Honeywell from
and against any and all demands, claims, suits, causes of action, liability,
losses, costs, expenses, settlements, and judgements (collectively "Claims"),
whether arising in equity, at common law, or by statute or regulation of any
country, or under the law of contract, or torts based upon, in connection with,
relating to or arising out of Licensee's failure to perform in accordance with
this Paragraph 5.
6. Interpretation and Enforcement
6.1 Relationship of Parties. The relationship between Honeywell and
Licensee is that of licensor and licensee. This Agreement does not create the
relationship of principal and agent between Honeywell and Licensee for any
purpose whatsoever. This Agreement shall not be construed as constituting
Licensee and Honeywell as partners, joint ventures, or as creating any other
form of legal association, franchise or arrangement which would impose liability
upon one Party for the act or omission of the other Party. Neither Party is
granted any express or implied right of authority by the other Party to assume
or to create any obligation or responsibility on behalf of or in the name of the
other Party, or to bind the other Party in any manner or thing whatsoever,
except as otherwise expressly stated herein.
6.2 Government Regulations. This Agreement is subject to all applicable
laws and regulations of the U.S. Government and foreign governments. Each Party
shall be responsible for obtaining any necessary import licenses, export
licenses or other governmental authorizations required in connection with any
disclosure by it under this Agreement, including disclosures to foreign
nationals located within a facility of a Party hereto, as the case may be.
Furnishing of information shall be subject to prior receipt of all necessary
governmental approvals.
6.3 No Interest in Honeywell. Licensee is not investing in or obtaining
any debt or equity interest in Honeywell under the terms of this Agreement.
HONEYWELL AND LASER ENERGETICS PROPRIETARY
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6.4 Assignment.
6.4.1 Licensee shall not assign or otherwise transfer, in whole or
part, its rights and obligations under Agreement, except in connection
with a sale of all or substantially all of its business or assets, without
the prior written consent of Honeywell, which consent shall not be
unreasonably withheld.
6.4.2 In the event assignment takes place in accordance with
Paragraph 6.4.1, this Agreement shall be binding upon and inure to the
benefit of the successors and assigns of the respective Parties hereto.
6.5 Notices. Any notice or other communication required or permitted
hereunder shall be in writing and shall be delivered personally, or sent by
facsimile transmission, commercial courier, or certified, registered or express
mail, postage prepaid and return receipt requested. Any such notice shall be
deemed given when so delivered personally or sent by express mail or commercial
courier; or, if mailed certified or registered, two (2) business days after the
date of deposit in the United States mail; or, if sent by facsimile
transmission, when actually received; addressed as follows:
If to Licensee to:
Licensee
Laser Energetics Inc.
0000 Xxxxxx Xxxxxx Xxxx
Xxxxxxxxxxx, XX 00000
Attention: Xxxxxx X. Xxxxxx
President & CEO
Facsimile: (000) 000-0000
Telephone: (000) 000-0000
With a copy to:
Xxxxx & Xxxxx
X.X. Xxx 0000
Xxxxxxxxx, XX 00000-0000
Attn.: Xxxxxx Xxxxxxxxxx Xxxxx
If to Honeywell to:
Honeywell Intellectual Properties Inc.
0000 Xxxxx Xxxxx Xxxxx
X.X. Xxx 00000
Xxxxx, XX 00000, XXX
Attention: President
Facsimile: 000-000-0000
Telephone: 000-000-0000
HONEYWELL AND LASER ENERGETICS PROPRIETARY
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Honeywell Defense Avionics Systems
000 Xxxxx 00 Xxxx
Xxxxxxxxx, XX 00000, XXX
Attention: Assistant General Counsel - Intellectual Property
Facsimile: (000) 000-0000
Telephone: (000) 000-0000
6.6 Severability. The invalidity or unenforceability of any section or
provision of this Agreement shall not affect the validity or enforceability of
any one or more of the other sections or provisions. If any section or provision
herein is held to be unenforceable for any reason, this Agreement shall be
adjusted rather than voided, in order to achieve the intent of the parties to
the extent possible. In that event, all other sections and provisions herein
shall be deemed valid and enforceable to the fullest extent permitted by
applicable law.
6.7 Controlling Law and Jurisdiction. This Agreement shall be governed by
and construed in accordance with the laws of the State of New Jersey, regardless
of the laws that might otherwise govern under applicable principles of conflicts
of law.
6.8 Arbitration.
6.8.1 "Dispute" shall be defined as any controversy, claim or
dispute arising out of or relating to this Agreement or the transactions
contemplated thereby, or the breach, termination, enforcement,
interpretation or validity thereof, including the determination of the
scope or applicability of this Agreement to arbitrate and the nature and
amount of any damages available to either Party as a result of any breach
of this Agreement by the other Party. Notwithstanding the termination of
this Agreement, in the event of any Dispute, the Parties shall attempt to
reach an amicable settlement. Failing such settlement, the Dispute shall
be settled by arbitration in New Jersey in accordance with the Commercial
Arbitration Rules of the American Arbitration Association. The arbitration
shall be conducted in the English language. The arbitration will be before
a sole arbitrator, provided, however, that if the Parties are unable to
agree upon a single arbitrator within twenty-five (25) days of the request
for arbitration, then each Party shall select an arbitrator within
twenty-five (25) days thereafter and the arbitrators so selected shall in
turn select a third arbitrator within ten (10) days of their respective
selections.
HONEYWELL AND LASER ENERGETICS PROPRIETARY
Page 14
6.8.2 No arbitrator shall be a current or former officer, employee,
director, or affiliate of any Party hereto or of its affiliates or any
other Representative and shall not otherwise have any interest in either
Party.
6.8.3 Any Party may seek interim or provisional relief from any
court that is necessary to protect the rights or property of that Party,
pending the appointment of the arbitrator(s) or pending the arbitrator's
determination of the merits of the controversy.
6.8.4 With respect to any Dispute that involves an issue regarding a
sum of money, each Party shall submit to the arbitrator(s) the amount of
money that the Party believes is the correct sum, along with an
explanation of how the Party determined the amount. The arbitrator's
determination shall be limited to choosing between the amounts submitted
by the Parties. The arbitrator(s) shall not have the ability to choose an
amount other than one of the amounts submitted by one of the Parties.
6.8.5 The Parties shall bear their own costs and expenses, including
attorneys' fees, but the arbitrator(s) may, in the award, allocate all of
the administrative costs of the arbitration (and the mediation, if
applicable), including the fees of the arbitrator and mediator, against
the Party who did not prevail.
6.8.6 The arbitration award shall be binding upon the parties
hereto, shall be in writing and shall specify the factual and legal bases
for the award. Judgment on the award may be entered in any court having
jurisdiction.
6.8.7 In no event shall the demand for arbitration be made after the
date when institution of legal or equitable proceedings based on such
claim, dispute or other matter in question shall be barred by the
applicable statute of limitations.
6.8.8 This Agreement to arbitrate shall be specifically enforceable
under the prevailing arbitration law.
HONEYWELL AND LASER ENERGETICS PROPRIETARY
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7. Miscellaneous
7.1 Public Announcement. All press releases and public announcements
relating to the matters contemplated by this Agreement shall be agreed to and
prepared jointly by the Parties. Notwithstanding anything herein to the
contrary, each Party is prohibited from using in advertising, publicity,
promotion, marketing, or other similar activity, any name, trade name,
trademark, or other designation including any abbreviation, contraction or
simulation of the other without the prior, express, written permission of the
other.
7.2 Costs. Each Party shall each bear their own costs and expenses in
performing their respective obligations under this Agreement.
7.3 Survival. The terms and conditions of this Agreement regarding
confidentiality, payment, warranties, liability, indemnification and all others
that by their sense and context are intended to survive the execution, delivery,
performance, termination or expiration of this Agreement survive and continue in
effect.
7.4 Reexport of Technical Data. Licensee acknowledges that any commodities
and/or technical data provided under this Agreement is subject to the Export
Administration Regulations ("the EAR") administered by the U.S. Commerce
Department and that any export or re-export thereof must be in compliance with
the EAR. Licensee agrees that it shall not export or reexport, directly or
indirectly, any commodities and/or technical data (or direct products thereof)
provided under this Agreement in any form to destinations in Country Groups D:1
or E:2, as specified in Supplement No. 1 to Part 740 of the EAR, and as modified
from time to time by the U.S. Department of Commerce, or to destinations that
are otherwise controlled or embargoed under U.S. law.
7.5 Captions. The Section headings contained in this Agreement are for
purposes of reference only and shall not limit, or otherwise affect the
construction of any provisions of this Agreement.
7.6 Waiver. Acceptance by either Party of any performance less than
required hereby shall not be deemed to be a waiver of the rights of such Party
to enforce all of the terms and conditions hereof. No waiver of any provision of
this Agreement shall be deemed to or shall constitute a waiver of any other
provision, whether or not similar, nor shall any waiver constitute a continuing
waiver. No waiver shall be binding unless reduced to writing and executed by the
Party making such waiver.
7.7 Binding Effect. This Agreement shall be binding and inure to the
benefit of the Parties and their successors or assigns.
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8. Entire Agreement
This Agreement and the Proprietary Information Exchange Agreement entered
by the Parties dated May 26, 1998 constitute the entire understanding and
agreement between the Parties relating to the subject matter hereof and
supersedes and cancels any and all previous or collateral agreements,
negotiations, commitments, representations or understandings between the Parties
in respect thereto. It may only be changed or supplemented by a written
amendment signed by the authorized representatives of the Parties. Each addendum
executed shall be considered part of this Agreement and the terms of each shall
control in the event of any inconsistency with the terms of this Agreement.
HONEYWELL AND LASER ENERGETICS PROPRIETARY
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IN WITNESS WHEREOF, the Parties have caused this Agreement to be executed
by their duly authorized representatives.
Signatories
Honeywell International Inc. Licensee
Signature: /s/ Signature: /s/ Xxxxxx X. Xxxxxx
--------------------------- ------------------------
By: By: Xxxxxx X. Xxxxxx
----------------------------------
Title: Title: President & CEO
-------------------------------
Date: Date: March 23, 2000
--------------------------------
Honeywell Intellectual Properties Inc.
Signature: /s/
---------------------------
By:
----------------------------------
Title:
-------------------------------
Date:
--------------------------------
HONEYWELL AND LASER ENERGETICS PROPRIETARY
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EXHIBIT A
Invention Record P.D. 82-2716
HONEYWELL AND LASER ENERGETICS PROPRIETARY
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EXHIBIT B
LICENSED PRODUCTS
Lasers, laser subassemblies, and discrete laser components and devices in lasers
thereof.
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