TECHNOLOGY TRANSFER AGREEMENT
Exhibit
10.1
This
TECHNOLOGY
TRANSFER AGREEMENT
is
entered into as of July 7, 2006 and shall be effective for all purposes as
of
December 15, 2004 (the “Effective
Date”)
by and
between Duck
Marine Systems, Inc., a British Columbia corporation (“Duck”),
Disaster Preparedness Systems, Inc., a Nevada corporation f/k/a Global
Preparedness Systems, inc. (“DPSI”),
Xxxx
X. Xxxxxxxxxx and Xxxxxx X. Xxxxxx (collectively, the “Inventors”).
WHEREAS,
the
Inventors formed DPSI in November 2004;
WHEREAS,
the
Inventors are directors, employees and shareholders of each of Duck and DPSI
and
are also inventors of and/or have rights to the Transferred Assets;
WHEREAS,
as of
the Effective Date, Duck and DPSI entered into a Licensing Agreement (the
“Licensing
Agreement”)
pursuant to which the Transferred Assets were exclusively and perpetually
licensed to DPSI on a worldwide basis in consideration of 8,000,000 shares
of
DPSI common stock (the “Duck
Shares”)
and
USD$200,000 in cash (which amount, it is acknowledged, has not, with the consent
of Duck, been paid by DPSI);
WHEREAS,
the
intent of the Parties as of the Effective Date was that DPSI should have the
exclusive, perpetual, worldwide right to exploit, manufacture, market,
distribute, license, sub-license and sell or otherwise transfer or encumber
the
Transferred Assets or products incorporating the Transferred Assets;
and
WHEREAS,
in
light of such intention: (i) Duck and DPSI now desire to amend and restate
the
Licensing Agreement, in its entirety and effective for all purposes as of the
Effective Date, to provide for the outright sale, assignment and transfer by
Duck, and acquisition by DPSI of, all right, title and interest in and to the
Transferred Assets for the consideration and on the terms and conditions herein
contained and (ii) notwithstanding and in addition to any agreements to do
so in
effect either as of the Effective Date or the date hereof, the Inventors desire
to acknowledge and confirm their agreement to assign, on a perpetual, worldwide
and royalty free basis, all right, title and interest in and to the Transferred
Assets that they may hold.
NOW,
THEREFORE,
in
consideration of the foregoing and of the covenants, agreements and mutual
consideration contained in this Agreement, Duck and DPSI hereby amend and
restate the Licensing Agreement in its entirety, and Parties hereby agree,
as
follows:
1. Definitions.
When
used
in this Agreement, the following capitalized terms shall have the following
meanings. Other capitalized terms are defined elsewhere in this
Agreement.
“Agreement”
means
this agreement including any recitals and schedules to this agreement, as
amended, supplemented or restated from time to time.
“Business
Day”
means
a
day other than a Saturday, Sunday or statutory holiday in New York, New
York.
“Governmental
Authority”
means
any domestic or foreign government, including any federal, provincial, state,
territorial or municipal government, and any government agency, tribunal,
commission or other authority exercising executive, legislative, judicial,
regulatory or administrative functions of, or pertaining to,
government;
“Improvements”
means
any improvements, revisions or other modifications made to, or replacement
of,
any art, process, machine, manufacture or composition of matter inherent in
the
Transferred Assets in existence as of the Effective Date or occurring
thereafter.
“Intellectual
Property”
means
any ideas, research, discoveries, designs, systems, patterns, specifications,
technology, Know-how, formulae, process, composition, manufacture or composition
of matter, prototypes, confidential information, data, computer software
development tools, operating systems, source code, object code, algorithms,
methods and processes including, without limitation, patents, trade-marks,
copyrights and trade secrets and applications for and the right to apply for
patent, copyright, trademark or any other intellectual property rights
protection (including all patents to be issued pursuant thereto, and all
divisions, continuations, reissues, substitutes, and extensions thereof existing
as of the Effective Date or in existence thereafter).
“International
Rights”
means
the exclusive, perpetual Intellectual Property rights in the Transferred Assets,
including, but not limited to, the right to make, have made, use, sell, license,
reproduce, modify, make Improvements, create derivative works, distribute,
display, transmit, and publish the Transferred Assets anywhere in the
world.
“Know-how”
means
all know-how, knowledge, expertise, inventions, works of authorship, prototypes,
technology, information, know-how, materials and tools relating thereto or
to
the design, development, manufacture, use and commercial application of the
Transferred Assets.
“Licenses
and Permits”
means,
to the extent they may be assigned or transferred by Duck, all licenses,
permits, approvals, authorizations and consents held by Duck for the operation
of the Transferred Assets.
“Parties”
means
the parties to this Agreement and “Party”
means
either one of them.
“Person”
means
any natural person, sole proprietorship, limited or general partnership, limited
liability company, corporation, trust, joint venture, any Governmental Authority
or any incorporated or unincorporated entity or association of any
nature.
“Records”
means
all operating records, data, manuals, books, correspondence, notes, files,
documents and records of Duck and the Inventors (including, without limitation,
user documentation and source code listings) relating to the Transferred Assets,
including customer lists, financial accounting and credit records,
correspondence, certifications, and similar documents and records.
“USD”
means
dollars in the lawful currency of the United States of America.
“Transferred
Assets”
means
the assets
(and all Intellectual Property related thereto) set forth on Schedule
A
hereto.
The Transferred Assets shall include all assets and Intellectual Property
purported to be licensed to DPSI pursuant to the Licensing Agreement and all
presently existing and future Improvements, International Rights, Know-how,
Licenses and Permits, Records and Warranties included in or associated with
the
Transferred Assets.
“Warranties”
means
all conditions, warranties, guarantees, indemnities, representations, service
contracts, patent indemnities or other agreements of any nature whatsoever,
verbal or written, expressed or implied, legal, statutory, conventional,
collateral or otherwise, in respect of or that shall in any manner apply to
any
of the Transferred Assets or part thereof and whether given by manufacturers,
vendors, maintenance providers or otherwise.
2
2. Purchase,
Sale and Conveyance.
2.1. Purchase
and Sale.
Duck
hereby sells, assigns, transfers, conveys, sets over and contributes to DPSI
the
Transferred Assets, and all rights, claims and demands Duck may have thereunder
or in the connection therewith, including the waiver of any moral rights Duck
may have in the Transferred Assets, on the terms and conditions set forth in
this Agreement effective as of the Effective Date, and DPSI hereby purchases
and
accepts the Transferred Assets from Duck, to have and to hold the same together
with all benefits and advantages to be derived therefrom, absolutely. For the
avoidance of doubt, the transfer of rights contemplated this Section 2.1 is
intended by the Parties to be an assignment and not a license of the Transferred
Assets and the Intellectual Property rights contained therein.
2.2. Purchase
Price.
The
purchase price to be paid by DPSI to Duck for the Transferred Assets (the
“Purchase
Price”)
shall
consist of: (i) the Duck Shares issued pursuant to the Licensing Agreement
as of
the Effective Date and (ii) USD$200,000 cash, to be paid in accordance with
Section 2.3.
2.3. Payment
of Purchase Price.
DPSI
shall pay the cash portion of the Purchase Price to Duck as follows: USD$15,000
shall be paid as of the initial closing of any equity financing of DPSI wherein
DPSI raises a gross minimum of USD$500,000 and, thereafter, $15,000 shall be
paid on a quarterly basis beginning on the first business day of the first
calendar quarter following such initial closing.
2.4. Assignment
of Inventor Rights.
In
consideration of their respective employment relationships with DPSI, and for
other good and valuable consideration, the receipt and sufficiency of which
is
hereby acknowledged by all Parties, and notwithstanding any agreement between
each Inventor and Duck or DPSI to the contrary, each Inventor, severally and
not
jointly, hereby irrevocably assigns and transfers to DPSI, effective as of
the
Effective Date and on a perpetual, worldwide and royalty-free basis, his entire
right, title and interest in and to all Transferred Assets (including all moral
rights therein). Each Inventor furthermore consents to the transfer to the
Transferred Assets from Duck to DPSI as provided for herein.
2.5. Effective
Date, etc.
The
Parties hereby agree, acknowledge and declare that this Agreement and the
transfer and assignment of the Transferred Assets from Duck to DPSI, and the
assignment of the Inventors’ right as contemplated by Section 2.4, in each case
upon the terms and conditions set out herein, shall be deemed to be effective
as
of the Effective Date, and the Parties agree that all benefits and obligations
with respect to the Transferred Assets are transferred from Duck to DPSI as
of
the Effective Date, and that Duck has no further interest therein or rights
thereto. For the avoidance of doubt, the Parties hereby acknowledge and agree
that neither Duck nor the Inventors shall hereinafter be entitled to any
royalty, accounting, consent rights or other amount or obligation from or
related to the use, manufacture, exploitation, assignment, sale, divestiture,
license, sublicense or transfer, in whole or in part, of the Transferred
Assets.
3. Representations
of Duck.
Duck
hereby represents and warrants to DPSI that:
3.1. Duck
has
the power and authority and right to enter into this Agreement and to perform
its obligations as therein and herein contained to sell and transfer the
Transferred Assets in accordance with the terms of this Agreement.
3
3.2. The
execution and delivery of this Agreement and the consummation of the
transactions contemplated herein will not violate, nor be in conflict with,
any
provision of any agreement, instrument, license, judgment, decree, order,
statute, rule or regulation applicable to Duck. No consent of any third party
(including any licensor of any portion of the Transferred Assets) is required
in
order to effect the transactions contemplated by this Agreement.
3.3. This
Agreement has been duly executed and delivered by Duck and all documents
required hereunder to be executed and delivered by Duck have been duly executed
and delivered and this Agreement and such documents constitute legal, valid
and
binding obligations of Duck enforceable in accordance with their respective
terms.
3.4. Duck
has
as of the date hereof and the Effective Date good and marketable title, free
and
clear of any and all claims, liens, encumbrances, mortgages, demands and
royalties created by, through or under Duck, security interests and charges,
licenses or rights of other persons whatsoever to the Transferred Assets. Duck
has taken all reasonable actions to protect its rights in all of the Transferred
Assets.
3.5. Duck
is
not a party to any action, suit or other legal, administrative arbitration
proceeding or government investigation, actual or threatened, which might
reasonably be expected to result in impairment or loss of Duck’s interest in the
Transferred Assets or any part thereof, and there is no particular circumstance,
matter or thing known to Duck which could reasonably be anticipated to give
rise
to any such action, suite or other legal, administrative or aberration
proceeding or government investigation.
3.6. Duck
has
not used or enforced or failed to use or enforce any Intellectual Property
rights or other rights associated with the Transferred Assets in any manner
which could adversely affect the validity or enforceability of Duck’s
Intellectual Property rights in the Transferred Assets.
3.7. There
is
not, and has not been any infringement or violation of Duck’s Intellectual
Property rights in the Transferred Assets. Except for the Licensing Agreement,
Duck has not granted any license with respect to the Transferred Assets to
any
person or entity.
3.8. Duck
has
not received notice of any claim of adverse ownership, invalidity or other
opposition to or conflict with the Transferred Assets. To Duck’s knowledge, Duck
is not in violation or infringement of, and has not violated or infringed,
any
intellectual property rights of any other person or entity.
4. Representations
and Warranties of the Inventors.
Each
Inventor, severally and not jointly, hereby represents and warrants to Duck
and
DPSI that:
4.1. Such
Inventor has the full right, power, authority and capacity to enter into this
Agreement and effect the transactions contemplated hereby. This Agreement
constitutes a valid and legally binding obligation of such Inventor, enforceable
in accordance with its terms, subject to laws of general application relating
to
bankruptcy, insolvency and the relief of debtors and rules of law governing
specific performance, injunctive relief or other general principals of equity,
whether such enforcement is considered in a proceeding in equity or
law.
4.2. There
are
no actions, suits, proceedings or investigations pending against the Inventor
or
the his properties before any court or governmental agency (nor, to such
Inventor’s knowledge, is there any threat thereof) which would impair in any way
the Investor’s ability to enter into and fully perform the Investor’s
commitments and obligations under this Agreement or the transactions
contemplated hereby.
4
4.3. Such
Inventor has not received notice of any claim of adverse ownership, invalidity
or other opposition to or conflict with the Transferred Assets.
5. Miscellaneous.
5.1. Recitals
incorporated herein.
Each of
the recitals contained at the beginning of this Agreement are incorporated
in
and shall be deemed operative provisions of this Agreement.
5.2. Invalidity
of Provisions.
If, for
any reason, any provision of this Agreement or the application of any provision
of this Agreement to any Person or circumstance is to any extent held or
rendered invalid, unenforceable or illegal, then such provision shall: (i)
be
deemed to be independent of the remainder of this Agreement and to be severable
and divisible from this Agreement and its invalidity, unenforceability or
illegality shall not affect, impair or invalidate the remainder of this
Agreement or any other part of this Agreement; and (ii) continue to be
applicable to the enforceable to the fullest extent permitted by law against
any
Person in and any circumstances other than those in respect of which it has
been
held or rendered invalid, unenforceable or illegal.
5.3. Binding
Arbitration.
Any
controversy or claim arising out of or relating to this Agreement, or the breach
thereof, between any Party hereto shall be settled by binding arbitration to
be
held in Vancouver in the Province of British Columbia, Canada before a panel
of
three arbitrators. Any Party may demand arbitration in writing, serving on
the
other Party(ies) a statement of the dispute, controversy, or claim, and the
facts relating to it, in reasonable detail, and the arbitrator nominated by
that
Party. Within thirty (30) days after such demand, the other Party(ies) will
name
their arbitrator, and the two arbitrators named by the Parties will, within
ten
(10) days, select a third arbitrator. The arbitrators may not amend or disregard
any provision of this Section 4.3. The judgment upon the award rendered by
the
arbitrators may be entered in any court having jurisdiction thereof.
5.4. Governing
Law.
This
Agreement shall be governed in accordance with the substantive laws of the
State
of Nevada, USA, without regard to the conflicts of laws principals thereof.
5.5. Waiver.
No
waiver by a Party of any provision or the breach of any provision of this
Agreement shall be effective unless it is contained in a written instrument
duly
executed by the Party granting the waiver. Such waiver shall affect only
the matter specifically identified in the instrument granting the waiver and
shall not extend to any other matter, provision or breach. The failure of
a Party to give notice to any other Party or to take any other steps in
exercising any right, or in respect of the breach or non-fulfillment of any
provision of this Agreement, shall not operate as a waiver of that right, breach
of provision nor shall any single or partial exercise of any right preclude
any
other or future exercise of that right or the exercise of any other right,
whether in law or in equity or otherwise.
5.6. Further
Assurances.
Each
Party shall, from time to time, promptly execute and deliver further documents
and take all further action reasonably necessary or appropriate to give effect
to the provisions and intent of this Agreement and to complete the transactions
contemplated by this Agreement. Without limiting the generality of the
foregoing, Duck and each Inventor shall assist DPSI in every legal way to
evidence, record and perfect the transfers and assignments evidenced by this
Agreement and to apply for and obtain recordation of, and from time to time
enforce, maintain and defend, the assigned rights embodied in the Transferred
Assets. To the extent that any of the Transferred Assets are provisional
patents, Duck and each Inventor shall cooperate with DPSI and the applicable
patent authorities to attempt to obtain a final grant of those provisional
patents and, to the extent any such provisional patents are actually issued
in
an Inventor’s name, the Inventor shall promptly assign and transfer such
patents, at no cost, to DPSI. If DPSI is unable, for any reason whatsoever,
to
secure an Inventor’s signature to any document it is entitled to under this
Agreement, such Inventor hereby irrevocably designates and appoints DPSI and
its
duly authorized officers and agents as the Inventor’s agent and attorney-in-fact
with full power of substitution to act for and on the Inventor’s behalf and
instead of the Inventor, to execute and file any such document or documents
and
to do all other lawfully permitted acts to further the purposes of the foregoing
with the same legal force and effect as if executed by the Inventor. Such power
of attorney shall be coupled with an interest.
5
5.7. Entire
Agreement.
This
Agreement and all documents contemplated by or delivered under or in connection
with this Agreement, constitute the entire agreement between the Parties with
respect to the subject matter of this Agreement and supersede all prior
agreements, negotiations, discussions, undertakings, representations, warranties
and undertakings, whether written or oral, express or implied, statutory or
otherwise (including, without limitation, the Licensing Agreement).
5.8. Successors
and Assigns.
This
Agreement shall ensure to the benefit and be binding upon the Parties and their
respective successors and permitted assigns.
5.9. Headings.
Headings are inserted for convenience of reference only and shall not affect
the
construction or interpretation of this Agreement.
5.10. Subdivisions.
Unless
otherwise stated, reference in the Agreement to a section, paragraph, schedule
or other subdivision is a reference to such section, paragraph, schedule or
other subdivision within this Agreement.
5.11. Number
and Gender.
Wherever the context so requires, any term used in this Agreement importing
the
singular number only shall include the plural and vice versa and words importing
any gender shall include all other genders.
5.12. Statutes
and Regulations.
Any
reference in this Agreement to any statute shall be a reference to that statute
as amended, substituted, replaced, or re-enacted from time to time and any
reference to a statute includes the regulations made pursuant to that
statute.
5.13. Use
of
the Word “Including”.
In this
Agreement, the word “including” when following any general term or statement
will not be construed as limiting the general term or statement to the specific
matter immediately following the word “including” or to similar matters, and the
general term or statement will be construed as referred to all matters that
reasonably could fall within the broadest possible scope of the general term
or
statement.
5.14. Counterparts.
This
Agreement may be executed in any number of counterparts (including by facsimile
transmission), each of which shall be deemed to be an original and all of which
will be construed together as one agreement.
[Signature
Page Follows]
6
IN
WITNESS WHEREOF,
the
Parties hereto have executed this Agreement as of the date first written above,
intending to be legally bound as of the Effective Date.
DUCK
MARINE SYSTEMS, INC.
/s/
Xxxxxx X. Xxxxxx
By:
___________________________
Name:
Xxxxxx X. Xxxxxx
Title:
President
DISASTER
PREPAREDNESS SYSTEMS, INC.
/s/
Xxxx
X. Xxxxxxxxxx
By:
___________________________
Name:
Xxxx X. Xxxxxxxxxx
Title:
President
/s/
Xxxx
X. Xxxxxxxxxx
______________________________________
Xxxx
X.
Xxxxxxxxxx
/s/
Xxxxxx X. Xxxxxx
______________________________________
Xxxxxx
X.
Xxxxxx
7
Exhibit
A
Transferred
Assets
Capitalized
terms used on this Exhibit shall have the meanings ascribed to such terms in
the
Agreement to which this Exhibit is attached.
The
Transferred Assets include all Intellectual Property rights, Improvements,
International Rights, Licenses and Permits, Records and Warranties in and to
the
following:
|
1.
|
Products
in development:
|
| 1. |
Shark
High Pressure Pump.
|
| 2. | F-50 High Output Pump. |
| 3. | Series 2000 and 4000 Hydraulic Power Modules. |
| 4. | Portable on Demand (P-O-D) vehicle containers. |
| 5. | Drone, remotely controlled amphibious vehicle. |
| 6. | Amphibious Utility Vehicle (AUV). |
|
2.
|
Draft
provisional patents:
|
| 1. |
“A
means of deploying a pump in shallow
water”;
|
| 2. |
“Remote
Controlled Amphibious Robotic Drone Platform for Marine Fire Fighting,
Rescue, Remote Surveillance and Sensory Systems, Delivering Payloads,
Oil
and Hazardous Spill Control/Recovery”
|
| 3. |
“Increasing
the hull speed of an amphibious utility vehicle in water”;
|
| 4. |
“Toxic
and volatile patching system in conjunction with a remote controlled
amphibious drone platform”.
|
|
3.
|
Patents
in development:
|
| 1. |
Series
2000 & 4000 “Multi
function disaster response hydraulic power supply
module”
|
| 2. |
P-O-D
“Multi
function disaster response hydraulic power supply
module”
|
| 3. |
F50
“Billet aluminum pump apparatus
|
4. Production Materials:
| 1. |
CNC
Tape for machining the manifold block Model
2000
|
| 2. |
CNC
Tape for billet machined
pump.
|
5. Manuals
relating to:
| 1. |
Shark
Pump
|
| 2. |
Model
2000
|
A-1
6. Moulds
relating to:
| 1. |
Shark
Pump
|
7. Drawings
relating to:
| 1. |
Shark
Pump
|
| 2. |
Model
2000
|
8. Contacts and Potential Customer List:
Travco
Industrial Housing Ltd. - Xxxx Xxxxxxxxxxx - 000-000-0000
CanCode
Safety Services Inc. - Xxxx Xxxxx- 000-000-0000
Bureau
of
Fire Standards & Training (Florida) - Chief Xxxxx Xxxxx - 000-000-0000
Division
of Emergency Management Florida - Xxxxx Xxxxxxxx - 000-000-0000
Hazard
Control Technologies, Inc. - Xxxx Xxxxxxx, President - 770-719-5112
Porta
Energy - Xxxx Eng Ong - 000-000 0000
Radix
Marine - Xxxx Xxxxxxxxx, President - xxxxxxxx@xxx.xxx
Freightliner
of Vancouver Ltd.- Xxxxx Xxxxxxx, Director of Sales & Marketing -
000-000-0000
American
XxXxxxxx of B.C. - Xxxx Xxxxxx - 000-000-0000
American
XxXxxxxx Corporation - Xxxxxxx XxXxxx - Sales Manger - 000-000-0000
American
XxXxxxxx Corporation - Xxxxx X. Xxxxxx - VP Sales & Marketing -
000-000-0000
City
of
Richmond - Chief Xxx Xxxxxxx - 000-000-0000
Ministry
of Forests Province of XX - Xxxx Taudin-Xxxxxx - 000-000-0000
Ford
Motor Company - Xxxx Xxxxxxxxxx, FFD Mgr. -877-594-3673
Xxxxxxx
Power Tools - Xxxx Xxxxxxxxxx - 000-000-0000
Fort
Xxxxx Industries - Xxxx Sushe, President - 800-565-3473
Fort
Xxxxx Fire Truck Division - Brain Xxxx, National Sales Manager -
800-565-3473
Xxxx
Deere Company - Xxxxx Xxxxx, Product Manager - XxxxxXxxxxX@XxxxXxxxx.xxx
AMW
Cuyuna Engine Co. Inc. - Xxx Xxxxxxxxxxx, President - XXxxxxxxxxxx@0xx.xxx
Hydro
Traxx Amphibious - Sun Lake Products, Inc. - Xxx McLerry, President -
000-000-0000
Sportogo
Inc. - Xxx Xxxxx, President - 000-000-0000
Power
Air
Corporation - Xxxx Xxxxx, Chairman - 000-000-0000
Defence
Business Large-Scale System, Inc. - XX Xxxx, VP Marketing - 000-000-0000
CDN
TrailMaster - Xxxxx Xxxxx xxxxxxx@xxxxxxxxx.xxx
Phone
000-000-0000 Fax 000-000-0000
A-2
