EX-10.1.2.1 - EKOR Agreement dated as of May 15, 2000 between Euro-Asian
Physical Society and Eurotech, Ltd. Modifying the EKOR license
EKOR AGREEMENT
MOSCOW - WASHINGTON MAY 15, 2000
This Agreement, made this 15 day of May, 2000, between the International Union
of Public Associations "Euro-Asian Physical Society" (EAPS), a corporation of
the Russian Federation, having a place of business at 119034, Kursovoy bystr.
17, Moscow, Russian Federation (hereafter referred to as "Licensor") and
EUROTECH, Ltd, a corporation of the District of Columbia, USA, having a place
of business at 00000 Xxxxx Xxxxx, Xxxxx 000, Xxxxxxx, XX 00000 (hereafter
referred to as "Licensee").
Witnesseth that:
Whereas, Licensor has certain patent and technical information rights
relating to certain organo-silicon compositions used to produce
so-called EKOR materials for environmental protection,
Whereas, Licensor is willing to exclusively license to Licensee its
patent rights filed anywhere in the world (including the Russian
Federation) and its worldwide technical information rights to make and
commercialize EKOR materials,
Whereas, Licensee shall appoint Licensor as its exclusive
representative for the territory of the Russian Federation, on the
basis specified below, it being understood that Licensee retains the
right to sign contracts in the Russian Federation and Licensee shall
provide other consideration to Licensor as set forth herein
Therefore, Licensor and Licensee agree as follows:
1. Prior Agreements
1.1 All prior agreements and oral understandings by Licensor
granting rights relating to EKOR are cancelled as of the date
of this Agreement, whether with Licensee or third parties, as
are any prior obligations or Licensee debts of relating to the
subject matter of this agreement.
2. Scope of Patent Rights and Technical Information
2.1 "Patents" are all patent rights filed anywhere in the world in
the possession of Licensor as of the date of this Agreement
and relating to EKOR materials and their production and use,
including but not limited to the patents and patent
applications listed in the attached Schedule A, as well as any
patents granted on any such patent application, or on any
continuing, or divisional application based thereon, as well
as any patent granted on any of those patent applications, and
any reexamined or reissued patent based thereon, and any
extension of any such patent.
2.2 'Technical Information" is all technical information in the
possession of Licensor as of the date of this Agreement
relating to EKOR materials, their production, and use.
Page l
EX-10.1.2.1 - EKOR Agreement dated as of May 15, 2000 between Euro-Asian
Physical Society and Eurotech, Ltd. Modifying the EKOR license
3. Licensee Grant
3.1 In return for the consideration specified herein, Licensor
grants to Licensee the exclusive worldwide right to use and
disclose the Technical Information and exclusive rights under
the Patents, provided however that:
3.1.1 Licensee appoints Licensor as its exclusive sales
representative for EKOR materials in the territory of
the Russian Federation, provided however that
Licensee retains for itself the sole right to sign
contracts in the Russian Federation.
3.2 The rights of Licensee include, but are not limited to, the
right to manufacture and use EKOR components and materials,
sell the same, and assist customers in using the same.
3.3 Licensee may sublicense its rights hereunder, subject to the
payment provisions set forth herein.
3.4 In the event that any of the Patent rights or Confidential
Information rights licensed hereunder are infringed by a third
party, Licensee shall have the right, at its own expense and
in its own name, to pursue legal action to cause such
infringement to stop. All proceeds from any such legal an
action shall be retained by Licensee.
3.5 Licensor agrees that it will provide assistance to Licensee in
obtaining and enforcing patents, and protecting confidential
information, and will execute such papers as may be needed to
do so.
4. Engineering Specifications
4.1 All the engineering specifications indispensable and
sufficient for manufacturing the products under the license
are to be transferred by Licensor to an authorized
representative of Licensee after the completion of all the
necessary investigations along with test samples.
4.2 The transfer of Engineering Specifications to Licensee shall
be acknowledged by an acceptance report.
4.3 Licensor may retain a copy of the Engineering Specifications
for its own internal needs, but shall maintain it in
confidence.
5. Improvements
5.1 During the term of the Agreement, Licensor shall promptly
inform Licensee in writing of all improvements by Licensor
concerning the Patents and production under the Agreement. All
such improvements by Licensor shall be subject to the License
grant in paragraph 3.
Page 2
EX-10.1.2.1 - EKOR Agreement dated as of May 15, 2000 between Euro-Asian
Physical Society and Eurotech, Ltd. Modifying the EKOR license
6. Other Representations
6.1 Licensor represents that as of the date of this Agreement it
knows of no patent or other rights of third parties that would
be infringed by practicing the license granted herein, and
that Licensor has the right to grant the Patent and Technical
Information rights as set forth herein. Page 2
6.2 Licensor represents that it is technically feasible to make
the products subject to the license using the Technical
Information granted hereunder
6.3 Upon presentation of bills, Licensee shall pay all patent
expenses of attorneys and governments relating to the patent
rights granted hereunder, it being understood that decisions
as to incurring further patent expenses shall hereafter be
made by Licensee.
6.4 Licensor shall fund its research and development effort
necessary to develop experimental samples and technical
guidelines for the production of the licensed product in
commercial quantities.
7. Technical Assistance in the Manufacture of the Products under the
License
7.1 At the request of Licensee, Licensor shall continue to work on
development of technical information relating to EKOR
materials and other technology development the budget for any
such work shall be submitted in advance in writing by Licensor
to Licensee. Licensee shall reimburse Licensor for the work
involved authorized by Licensee promptly upon submission of
written statements. It is understood mat Licensor shall work
only with Licensee on the technology subject to this
Agreement, it being an exclusive relationship between Licensor
and Licensee as to the subject matter of this Agreement. Thus,
Licensor may not offer its services in areas relating to the
subject matter of this Agreement to third parties without the
written permission of Licensee. Thus, Licensor may not accept
payments from third parties relating to the subject matter of
this Agreement, for work done in the past or in the future.
7.2 To render technical assistance to Licensee in perfecting
production under the license, and also to teach the staff of
the Licensee the methods of operation concerning the
manufacture and application of the products under the license,
the Licensor, at the request of the Licensee, is obliged to
send to a place designated by Licensee the required number of
experts. Licensee shall inform the Licensor of its request, as
soon as practically possible, prior to the date of expected
departure of experts from the Russian Federation, and such
experts shall be dispatched as soon as possible.
7.3 Licensee shall provide the experts of the Licensor, during the
time of their stay at the place designated by Licensee, a
hotel, vehicles for traveling to a place of work and back, and
reasonable food and telephone service.
7.4 All the expenses associated with sending the experts of
Licensor to assist Licensee in producing the licensed product,
including the payment for visas, passports, cost of tickets to
a place of their destination and back, and also a fee
depending on qualification of the experts, are borne by
Licensee. The fee for such experts shall be reasonable and
shall be agreed upon by the Parties prior to any trip, in
writing.
7.5 Licensor is obligated to keep together the technical team and
maintain its technical expertise required to provide the
assistance specified under this Paragraph 7.
Page 3
EX-10.1.2.1 - EKOR Agreement dated as of May 15, 2000 between Euro-Asian
Physical Society and Eurotech, Ltd. Modifying the EKOR license
7.6 Should Licensor and Licensee agree that it is desirable for
Licensor to send technical experts to other sites designated
by Licensee to assist in use of products made under this
Agreement, the parties shall agree in writing in advance on
all financial arrangements for such assistance.
8. Payments to Licensor
8.1 In addition to payments previously made to Licensor on behalf
of Licensee for the rights and information provided by
Licensor to Licensee hereunder and any payments under
Paragraph 7, in return for the initial rights under Paragraph
3 and improvement rights under Paragraph 5 hereof, Licensee
shall pay Licensor:
8.1.1 Ten thousand USA dollars (US $10,000) per month for
sixty (60) months following the date of this
Agreement, and
8.1.2 After the sixty (60) month period mentioned in 8.1, a
royalty of one tenth of one percent (0.1%) of the
sales of product made hereunder, for any product
imported, made, used, or sold under any Patent
licensed hereunder and/or made using any Technical
Information provided by Licensee hereunder during the
confidentiality term set forth in Paragraph 9.1.
8.1.3 The US $10,000 payments under Paragraph 8.1.1 shall
be reduced for any month by the amount that Licensee
in that month has paid Licensor under Paragraph 7.1,
up to a maximum of US $10,000 per month.
8.2 No other payments shall be due to Licensor from Licensee for
the rights hereunder, either by an Agreement directly between
Licensor and Licensee or through an intermediate party.
8.3 Licensee shall pay all U.S. taxes incurred in connection with
payments to Licensor hereunder. Otherwise, each of the parties
shall each be responsible for its own taxes due to any
government.
9. Confidentiality
9.1 For a period of fifteen (15) years from the date of this
Agreement (the date first written above), the parties shall
keep confidential the technical information provided by
Licensor to Licensee hereunder (including but not limited to
engineering specifications, production information, commercial
information, etc.), and shall take all reasonable steps
necessary to maintain confidentiality. Licensee shall use the
information to make and sell products; Licensor shall use the
information only to assist Licensee.
9.2 Only those persons on the staff of the Licensor and Licensee
and their associates who are connected directly with the
transfer of the technical documentation and information are
permitted to receive disclosures regarding production of the
licensed product.
Page 4
EX-10.1.2.1 - EKOR Agreement dated as of May 15, 2000 between Euro-Asian
Physical Society and Eurotech, Ltd. Modifying the EKOR license
10. Protection of the Rights Being Transferred
10.1 Licensee shall maintain in force the licensed Patents during
the term of the present Agreement, provided however that if
Licensee believes that any particular patent or patent
application in any particular country has insufficient
commercial value, it may abandon that patent application or
patent after first giving Licensor the opportunity to pay the
relevant expenses. Licensor shall respond to any such notice
within two (2) months or be considered to have no interest. If
Licensor does elect to pay the expenses of any such patent
right, Licensee and its sublicensees and customers shall have
a royalty-free license thereunder.
10.2 If Licensee decides to patent further inventions of the
Licensor, Licensee may do it upon written notice to the
Licensor.
10.3 This Agreement may be modified only in writing, signed by both
parties.
10.4 This Agreement and the rights and obligations herein may not
be assigned by either party, except that Licensee may assign
the same to a successor of Licensee as to the entire business
relating to this Agreement.
10.5 This Agreement is executed in duplicate on 6 (six) pages in
both Russian and English each to have the same legal effect.
In the event of an inconstancy, the English version shall
govern.
10.6 This Agreement shall be governed by the law of the District of
Columbia and the USA.
10.7 In the event of a dispute, the parties shall first attempt in
good faith to resolve the dispute by discussions.
11. Term of Agreement
11.1 The term of this Agreement shall be the longer of the life of
the Patents or the term of confidentiality set forth in
Paragraph 9.1
12. Addresses and data on the Parties
12.1 Licensor:
International Union of the Public 'Euro-Asian Physical
Society' (EAPS) 119034, Kursovoy bystr. 17, Moscow, Russian
Federation
Ph. 000-00-00, Fax 000-00-00
Account number: 40703840538200200216
Name of the Bank: Saving Bank of the Russian Federation Moscow
Bank (Khoroshevskoye branch 7972)
Bank address: 123060, Xxxxxxxxxx Xxx. 00, Xxxxxx, Xxxxxxx
Federation
Bank account 3030184063800603820
Swift code: SABR RU MM 100
Correspondent Bank: Bank of New York New York, NY, USA
Account of Saving Bank of the RF with correspondent bank:
000-0000-000
Swift Code: IRVT US 3N
Page 5
EX-10.1.2.1 - EKOR Agreement dated as of May 15, 2000 between Euro-Asian
Physical Society and Eurotech, Ltd. Modifying the EKOR license
12.2 Licensee:
EUROTECH, Ltd. 00000 Xxxxx XX, Xxxxx 000, Xxxxxxx, XX 00000
Ph. 000-000-0000, Fax 000-000-0000
BANK of America N.A. 0000 Xxxxxxxxx Xxxxx
Xxxxxxxx, Xxxxxxxx 00000
Account Number: 003918966754
In Witness Whereof, the parties hereto have caused this Agreement to be executed
as of the date first written above.
Licensor:
INTERNATIONAL UNION OF PUBLIC ASSOCIATIONS
"EURO-ASIAN PHYSICAL SOCIETY" (EAPS)
/S/ DR. MARINA KOZODAEVA
----------------------------------------------------
Signature
DR. MARINA KOZODAEVA
--------------------
Typed or printed name:
EAPS DIRECTOR GENERAL
---------------------
Title:
Licensee:
EUROTECH, LTD.
/S/ XXX X. XXXXXXXXX
----------------------------------------------------
Signature
XXX X. XXXXXXXXX
----------------
Typed or printed name:
PRESIDENT & CEO
---------------
Title:
Page 6
