Exhibit (10)(n)
LICENSE OF TECHNOLOGY AGREEMENT
This License of Technology Agreement ("Agreement") is made and effective this
29th day of November, 1999 by and between Startech Environmental Corp.
("Licensee"), and Media and Process Technology, Inc. ("Licensor").
WHEREAS, Licensor has developed and owns all rights, title and interest,
including related patent(s), to the manufacturing of Hydrogen Selective
Membranes (as more fully described in US Patent Number 5,414,891) and the use of
such membranes for certain hydrogen gas related separation process ("the
Technology").
WHEREAS, Licensee wishes to license said technology for exclusive use and
application within the parties the waste industry;
NOW, THEREFORE, in consideration of the premises and the mutual covenants
contained herein, the parties agree as follows:
1. Transfer and Term. Licensor hereby Licenses, assigns, conveys and transfers
to Licensee all of Licensor's right, title and interest in and to the Technology
for the Licensee's exclusive use within the Waste Industry, as that term is more
fully described in paragraph 8 of this Agreement: Licensor shall immediately,
upon execution of this Agreement, provide the Licensee with the supporting
documentation underlying all its intellectual property relating to the
Technology, including the final paperwork and patent number(s) involved. The
term of this transfer shall be for a period of fifteen (15) years.
2. Purchase Price. In consideration for the transfer of the Technology and the
promises of Licensor ore fully recited herein, Licensee shall pay to Licensor,
Two thousand five hundred dollars ($2,500.00) upon delivery of the necessary and
proper intellectual property referred to above for the Licensee's exclusive use
in the waste industry. In addition to the above referenced down payment the
Licensor shall also receive a royalty payment equal to four percent (4%) of the
total xxxx-up of the Licensor's equipment and Technology that is incorporated
into any sale made by the Licensee of its products and services. The Licensor
shall also be entitled to receive four percent (4%) of any tolling fees
negotiated by the Licensee for its machines that employ the active use of the
Technology. The accrued tolling fees and/or royalties shall be paid quarterly.
The Licensor shall also be the exclusive manufacturer of the Technology and its
systems for the Licensee, unless, for any reason whatsoever, the Licensor
becomes unwilling or unable to manufacture to sufficiently meet the needs of the
Licensee. In addition, the Licensee shall, wherever and whenever practicable,
arrange for the Licensor to act as a paid consultant to Licensee's customers
interested in incorporating the Technology into appropriate applications.
3. Representations and Warranties of Licensor. Licensor represents, warrants and
covenants as follows:
A. Title; Infringement. Licensor has good and marketable title to the
Technology, including the patent(s), and has all necessary rights to enter into
this Agreement without violating any other agreement or commitment of any sort.
Licensor does not have any outstanding agreements or understandings, written or
oral, concerning the Technology that will affect the Licensee's excusive right
to use the Technology in the specified field of endeavor. The Technology does
not infringe or constitute a misappropriation of any trademark, patent,
copyright, trade secret, proprietary right or similar property right. Licensor
agrees to indemnify and hold Licensee, its subsidiaries, affiliates and
licensees harmless against any action, suit, expense, claim, loss, liability or
damage based on a claim that the Technology infringes or constitutes a
misappropriation of any trademark, patent, copyright, trade secret, proprietary
right or similar property right. Licensee shall give licensor prompt written
notice of any such claim. Licensor shall indemnify the Licensee for the costs of
defending any suit or proceeding brought against Licensee based on any claim
that the Technology infringes or constitutes a misappropriation of any
trademark, patent, copyright, trade secret, proprietary right or similar
property right provided, however, that Licensee shall give Licensor prompt
notice in writing of the assertion of any such claim and of the threat or
institution of any such suit or proceeding, and all authority, information and
assistance required for the defense of the same. Licensor shall pay all damages
and costs awarded against Licensee, but shall not be responsible for any cost,
expense or compromise incurred without Licensor's consent. Notwithstanding
anything to the contrary contained above, in lieu of being responsible for the
indemnification of the Licensee for the defense costs associated with defending
the patent and/or Technology, the Licensor may elect, at the time a suit is
instituted, to amend this Agreement to provide the Licensee with a perpetual
exclusive license under the same terms and conditions as this Agreement, except
that the payment obligations of the Licensee owed to the Licensor contained
within Paragraph two (2) shall be suspended from the date the Licensor elects
not to participate in the defense of an infringement action as stipulated above.
Either party shall have the right to proceed to protect the patent and/or
Technology against any infringement and the non-proceeding party shall fully
cooperate in any such action or claim.
B. No Liens. The Technology is not subject to any lien, encumbrance,
mortgage or security interest of any kind.
C. Authority Relative to this Agreement. This Agreement is a legal, valid
and binding obligation of Licensor. The execution and delivery of this Agreement
by Licensor and the performance of and compliance by Licensor with the terms and
conditions of this Agreement will not result in the imposition of any lien or
other encumbrance on the Technology, and will not conflict with or result in a
breach by Licensor of any of the terms, conditions or provisions of any order,
injunction, judgment, decree, statute, rule or regulation applicable to
Licensor, the Technology, or any note, indenture or other agreement, contract,
license or instrument by which any of the Technology may be bound or affected.
No consent or approval by any person or public authority is required to
authorize or is required in connection with, the execution, delivery or
performance of this Agreement by Licensor.
4. No Brokers. All negotiations relative to this Agreement have been carried on
directly by the Licensee with the representative of the Licensor in such manner
so as not to give rise to any valid claim against the Licensee hereto for
brokerage commissions, finder's fees or other like payment.
5. Consents, Further Instruments and Cooperation. Licensee and Licensor shall
each use their respective best efforts to obtain the consent or approval of each
person or entity, if any, whose consent or approval shall be required in order
to permit it to consummate the transactions contemplated hereby, and to execute
and deliver such instruments and to take such other action as may be required to
carry out the transaction contemplated by this Agreement. Licensor shall
execute, or cause its employees and agents to execute any patent or copyright
application or other similar document or instrument, following Licensee's
reasonable request.
6. Limitation of Liability. OTHER THAN AS SET FORTH IN SECTION 3.A. OR UPON THE
BREACH OF ANY WARRANTY, NEITHER LICENSEE NOR LICENSOR SHALL BE LIABLE TO THE
OTHER FOR ANY INDIRECT, SPECIAL, INCIDENTAL OR CONSEQUENTIAL DAMAGES ARISING OUT
OF OR RELATED TO THIS AGREEMENT OR ANY PERFORMANCE HEREUNDER, EVEN IF SUCH PARTY
HAS ADVANCE NOTICE OF THE POSSIBILITY OF SUCH DAMAGES, WHETHER BASED ON A THEORY
OF CONTRACT, TORT, STRICT LIABILITY OR OTHERWISE.
7. Grant of License. Licensor represents, warrants and covenants as follows:
(a) Licensor hereby grants to Licensee the exclusive and indivisible right
and license throughout the world to develop, manufacture hardware and systems
and the right to have hardware and systems made for it (except and to the extent
that this Agreement calls for the Licensor to manufacture systems as specified
in paragraph 2), to use and sell same, to grant sublicenses thereon, and to
exploit the Technology within the Waste Industry pursuant to the scope of the
license (the Licensee recognizes that the patent portion of the Technology is
only a U.S. patent). This license shall include the Technology as currently
existing and developed, as well as any improvements or betterments developed by
the Licensor subsequent to the execution of this Agreement that directly relates
to the Technology.
(b) Licensor shall have the right to receive a notice, in writing, within a
period of twenty (20), days of the entire terms of any license, agreement, etc.
which has been entered into by Licensee on the subject matter of this Agreement.
(c) Licensee agrees that prior to execution of any license, agreement, or
other material document relating to the subject matter of this Agreement, it
will consult with Licensor prior to the consummation thereof. Licensor may
object, for good cause shown, prior to the consummation of any of the above.
(d) Licensee will not knowingly make any agreements which will affect
either the Licensor's ownership of the Technology or the validity of any
patents, and agrees herby to indemnify the Licensee in that respect.
8. Scope of License. The Licensee shall receive the exclusive right to exploit
the Technology for any and all applications in the plasma based waste management
business, plasma based waste recycling business, and/or any waste remediation
business involving the scientific principles of plasma technology. Licensor will
retain the ownership to any advances made in the Technology through its use in
the Licensee's products, as well as the right to use said advancements in any
applications outside the scope of this license, and the Licensee will receive
the exclusive right to use said advancements within the scope of this License.
9. Governing Law. This Agreement shall be construed and enforced in accordance
with the laws of the State of Connecticut.
10. Assignment. Licensor may not assign this Agreement or any obligations herein
without the prior written consent of Licensee, which consent shall not be
unreasonably withheld. This Agreement shall be binding upon and inure to the
benefit of the parties named herein and their respective heirs, executors,
personal representatives, successors and assigns.
11. Entire Agreement. This Agreement contains the entire understanding of the
parties, and supersedes any and all other agreements presently existing or
previously made, written or oral, between Licensee and Licensor concerning its
subject matter. This Agreement may not be modified except by a writing signed by
both parties.
12. Severability. If any provision of this Agreement is declared by a court of
competent jurisdiction to be invalid, void or unenforceable, the remaining
provisions of this Agreement nevertheless will continue in full force and effect
without being impaired or invalidated in any way.
13. Notices. All notices, requests, demands, and other communications hereunder
shall be deemed to have been duly given if delivered or mailed, certified or
registered mail with postage prepaid:
If to Licensee:
Xxxxx X. Xxxxx, Esq.
Senior Vice President & General Counsel
Startech Environmental Corp.
00 Xxx Xxxxxxx Xxxx
Xxxxxx, XX 00000
If to Licensor:
Xxxx X.X. Xxx, Ph.D
President
Media & Process Technology, Inc.
0000 Xxxxxxx Xxxx Xxx
Xxxxxxxxxx, XX 00000
14. Relationship of the Parties. The relationship between Licensee and Licensor
under this Agreement is intended to be that of Licensee and Licensor, and
nothing in this Agreement is intended to be construed so as to suggest that the
parties hereto are partners or joint venturers, or either party or its employees
are the employee or agent of the other. Except as expressly set forth herein,
neither Licensee nor Licensor has any express nor implied right or authority
under this Agreement to assume or create any obligations on behalf of or in the
name of the other or to bind the other to any contract, agreement or undertaking
with any third party.
15. Termination of Agreement. The Licensor shall have the right to terminate the
Agreement upon 90 days written notice if the Licensee fails to adequately pursue
the use of the Technology in the Licensee's product. The Licensor shall also
have the right to terminate if the Licensee goes into bankruptcy or
receivership. The Licensee may cancel the relationship at any time upon 90 days
written notice and payment of all fees and royalties due up until the date of
cancellation. Both parties shall have 30 days to cure any default.
16. Headings. Headings used in this Agreement are provided for convenience only
and shall not be used to construe meaning or intent.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the day and
year first above written.
Startech Environmental Corp. Media & Process Technology, Inc.
/S/ Xxxxxx X. Xxxxx /S/ Xxxx X. X. Xxx, Ph.D.
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Xxxxxx X. Xxxxx, President Xxxx X.X. Xxx, Ph.D, President
