Exhibit 10.1
EXCLUSIVE PATENT LICENSE AGREEMENT
BETWEEN
WESTINGHOUSE SAVANNAH RIVER COMPANY LLC
AND
FINGERPRINT DETECTION TECHNOLOGIES, INC. (FDTI),
A WHOLLY-OWNED SUBSIDIARY OF UTEK CORPORATION
FOR
LED INTENSE HEADBAND LIGHT SOURCE FOR FINGER PRINT ANALYSIS
WSRC LICENSE AGREEMENT NO. LA-02-003
WESTINGHOUSE SAVANNAH RIVER COMPANY LLC
AIKEN, SOUTH CAROLINA
TABLE OF CONTENTS
Article Page
------- ----
1. Definitions............................................................................ 1
2. License Grant.......................................................................... 2
3. Sublicenses............................................................................ 3
4. Due Diligence.......................................................................... 4
5. License Fees........................................................................... 5
6. Records and Reports.................................................................... 6
7. Technical Assistance................................................................... 7
8. Patent Prosecution and Maintenance..................................................... 7
9. Infringement By Third Parties.......................................................... 7
10. Representation and Warranties.......................................................... 8
11. Disclaimers............................................................................ 9
12. Term of Agreement and Early Termination................................................ 10
13. Rights of the Parties After Termination................................................ 11
14. Use of Names and Trademarks; Nondisclosure Agreement................................... 12
15. Force Majeure ......................................................................... 12
16. Assignability ......................................................................... 12
17. Non-Abatement of Royalties............................................................. 13
18. Notices................................................................................ 13
19. Dispute Resolution..................................................................... 14
20. Governing Law.......................................................................... 15
21. Waivers................................................................................ 15
22. Modifications.......................................................................... 15
23. Headings............................................................................... 15
Appendix A - WSRC Patent Rights............................................................... A.1
Appendix B - Development and Commercialization Plan
(Proprietary Information)........................................................ B.1
Appendix C - Issue Fee, Earned Royalties and Minimum Annual
Royalties (Proprietary Information).............................................. C.1
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EXCLUSIVE PATENT LICENSE AGREEMENT
This License Agreement, effective from the date of execution by the last signing
Party, is by and between WESTINGHOUSE SAVANNAH RIVER COMPANY LLC (hereinafter
"WSRC"), a Delaware corporation whose principal place of business is located at
Aiken, South Carolina and Fingerprint Detection Technologies, Inc. (FDTI),
(hereinafter "LICENSEE"), a Florida corporation whose principal place of
business is located at 000 X. Xxxxxxx Xxxxxx, Xxxxx Xxxx, XX 00000; the Parties
to this License Agreement being referred to individually as a "Party," and
collectively as "Parties."
BACKGROUND:
WHEREAS, WSRC, pursuant to Xxxxxxxx Xx. XX-XX00-00XX00000 (hereinafter "Prime
Contract") with the United States Government as represented by the Department of
Energy (hereinafter "DOE") has developed and/or obtained certain WSRC Patent
Rights relating to Licensed Products subject to a reservation in the Government
to a nonexclusive, nontransferable, irrevocable, paid-up license to practice and
have practiced throughout the world, by or on behalf of the Government, any and
all such rights as well as certain march-in rights and any other conditions of
waivers granted by DOE; and
WHEREAS, LICENSEE desires to obtain rights under WSRC Patent Rights.
THEREFORE, in consideration of the premises, covenants and agreements contained
herein, the Parties hereto agree to be bound as follows:
1. DEFINITIONS
1.1 "WSRC Patent Rights" shall mean any and all intellectual property rights
or patent rights to any subject matter claimed in or disclosed in Appendix
A to this Agreement and all United States and corresponding foreign
patents issuing from United States patent applications and corresponding
patent applications later filed in foreign jurisdictions, including all
divisions, continuations, continuations-in-part, re-examinations,
reissues, and temporal extensions of any of the foregoing.
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1.2 "Licensed Products" shall mean any and all items, methods or processes, or
parts thereof, which are produced by or employ the practice of any
inventions claimed in Appendix A, and whose manufacture, use or sale would
constitute, but for the license granted to LICENSEE pursuant to this
License Agreement, an infringement of any claim in WSRC Patent Rights.
1.3 "Net Sales" shall mean the total amounts invoiced to purchasers (other
than to Federal purchasers as set forth in Section 5.4 below) during the
accounting period in question for Licensed Products sold by LICENSEE, less
allowances for return of Licensed Products, discounts, commissions (but
not to regular employees), freight, and excise or other taxes on Licensed
Products. Net Sales in the case of Licensed Products used or transferred
by LICENSEE shall mean the fair market value of Licensed Products as if
they were sold to an unrelated third party in similar quantities.
2. LICENSE GRANT
2.1 Subject to the terms and conditions of this Agreement, WSRC hereby grants
to LICENSEE an exclusive, nontransferable, revocable, world-wide (subject
to Article 8 limitations), royalty-bearing license to manufacture, use,
sell or offer for sale Licensed Products in all fields of use.
2.2 WSRC hereby agrees not to grant to any other party a license to WSRC
Patent Rights in accordance with the grant hereinabove as long as LICENSEE
abides by the terms and conditions of this Agreement, unless required to
so grant such right and license in accordance with Federal Statutory or
Regulatory enactments conditioning the waiver of rights to WSRC by the
DOE, particularly as set forth in 41 CFR 9-9.109-(6)i; 10 CFR Part 781; or
37 CFR Part 404.
2.3 LICENSEE agrees to make available to WSRC and will grant a non-exclusive,
irrevocable, paid-up license to WSRC and the Government to make and use,
and to have made and used on their behalf, for non-commercial purposes,
any and all developments and improvements to WSRC Patent Rights as may be
made by LICENSEE.
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2.4 LICENSEE agrees that any Licensed Products for use or sale in the United
States shall be manufactured or practiced substantially in the United
States.
2.5 LICENSEE agrees to affix appropriate markings of the applicable WSRC
Patent Rights (and the fact that WSRC was the source of these rights) upon
or in association with LICENSEE's Licensed Products. LICENSEE further
agrees to use its best efforts to follow any guidance from WSRC concerning
such markings.
3. SUBLICENSES
3.1 WSRC grants to LICENSEE the right to grant Sublicenses to third parties to
practice and have practiced Licensed Products under this Agreement.
However, such Sublicenses may be granted only under the following
conditions:
(a) Licensed Products sold or used in the United States shall be
substantially manufactured in the United States; or
(b) (i) the Sublicensee has a business unit located in the United States
and significant economic and technical benefits will flow to the
United States as a result of the Sublicense agreement; and
(ii) in sublicensing any entity that is subject to the control of a
foreign company or government, said entity shall be limited to
the same extent as such foreign government permits United States
agencies, organizations, or other persons to enter into
cooperative R&D agreements and licensing agreements, and has
policies to protect United States intellectual property rights.
If LICENSEE determines that neither conditions (a) nor (b) can be met, it
must obtain written approval from WSRC prior to granting the Sublicense.
(c) Sublicenses which include the right to sell Licensed Products shall
expressly exclude the right of further sale without the express prior
written approval of Licensor. Sublicensee's right to practice and have
practiced WSRC
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Patent Rights (that is, to enter into use agreements with
Sub-sublicensees) is not subject to such limitation.
(d) Sublicenses granted under this Article must contain all of the other
conditions, restrictions and reservations of this Agreement, except for
those provisions related to License Issue Fees, and shall preserve the
rights and reservations of WSRC and the DOE/Government existing hereunder.
3.2 LICENSEE shall provide WSRC with a copy of any and all fully executed
Sublicenses and Sub-sublicenses within thirty (30) days after execution of
same.
3.3 LICENSEE shall collect payment of all royalties due WSRC from the sale of
Licensed Products by any Sublicensees in accordance with Article 5
("License Fees"); pay WSRC the amounts due and collected from Sublicensees
in a timely manner; and summarize and deliver to WSRC, in accordance with
Article 6 ("Records and Reports"), all reports required from Sublicensees
as shall be pertinent to a royalty accounting under said Sublicense
agreements.
3.4 LICENSEE shall not receive from Sublicensees anything of value in lieu of
cash payments based upon payment obligations of any Sublicense under this
License Agreement, without the express prior written approval of WSRC.
3.5 Termination of this License Agreement for any reason automatically
operates as an assignment by LICENSEE to WSRC of all of LICENSEE's rights,
title and interest in and to each Sublicense granted.
4. DUE DILIGENCE
4.1 LICENSEE shall give his commercially reasonable efforts to bring one or
more Licensed Products to market through a vigorous and diligent program
for exploitation of WSRC Patent Rights and shall demonstrate a continuing
effort to market such Licensed Products in sufficient quantities to meet
market demands for these products.
4.2 LICENSEE shall also adhere to the resource commitments, performance
milestones, and reporting requirements set forth in the Development and
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Commercialization Plan incorporated as Appendix B to this Agreement.
Should LICENSEE fail to meet the commercialization provisions and
milestones set forth in Appendix B of this Agreement, as it may be amended
by the Parties, or is unable or unwilling to demonstrate continuing due
diligence during the balance of the term of this Agreement, WSRC shall
have the option, to be exercised by giving LICENSEE written notice as to
the nature of the deficiency and providing him thirty (30) days to cure
the deficiency, to convert this license grant to a partially exclusive or
nonexclusive license. Such converted license shall have the same field of
use restrictions, if any, and the same royalty rates and minimum royalties
as this license.
5. LICENSE FEES
5.1 In consideration of the right and license granted herein, LICENSEE agrees
to pay the License Issue Fee, earned running royalty, and minimum annual
royalties set forth in Appendix C of this Agreement. Should LICENSEE fail
to make License Issue Fee payment to WSRC within thirty (30) days, this
agreement shall be null and void.
5.2 Royalties accruing to WSRC shall be paid to WSRC within sixty (60) days
after the Semi-annual Reporting Periods, hereby defined for royalty
reporting and payment purposes under this Agreement as being the six (6)
month periods of April 1 through September 30, and October 1 through March
31. Thus, corresponding payment due dates will be November 30 and May 31,
respectively. Each such payment will be for any and all royalties which
accrued to WSRC within the most recently completed Semi-annual Reporting
Period.
5.3 Should LICENSEE fail to make any payment to WSRC within the time period
prescribed for such payment, then the unpaid amount shall bear interest at
the rate of one and one half percent (1.5%) per month from the date when
payment was due until payment in full, with interest, is made.
5.4 No royalties shall be owing on any Licensed Products produced for or under
any Federal agency contract pursuant to the Government nonexclusive
license but only to the extent that LICENSEE can show that the Government
received a discount on Licensed Product sales, which discount is
equivalent to or greater
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than the amount of any such royalty that would otherwise be due. Any sales
for Federal governmental purposes shall be reported under Section 6 -
"Records and Reports" below by providing: (a) a Federal government
contract number; (b) identification of the Federal agency; and (c) a
description as to how the benefit of the royalty-free sale was passed on
to the Government.
5.5 The royalty provisions of Appendix C may be offset by any advances made by
LICENSEE pursuant to Section 9 - "Infringement by Third Parties" below.
5.6 Upon termination of this Agreement for any reason whatsoever, any
royalties that remain unpaid shall be properly reported and paid to WSRC
within thirty (30) days of any such termination.
6. RECORDS AND REPORTS
6.1 LICENSEE agrees to keep adequate records in sufficient detail of
LICENSEE's utilization of WSRC Patent Rights to enable royalties payable
hereunder to be determined and to provide such records for inspection by
authorized representatives of WSRC at any time during regular business
hours of LICENSEE. LICENSEE agrees that any additional records of
LICENSEE, as WSRC may reasonably determine are necessary to verify the
above records, shall also be provided to WSRC for inspection.
6.2 Within sixty (60) calendar days after the close of each semi-annual
reporting period during the term of this Agreement (i.e., May 31 and
November 30), LICENSEE will furnish WSRC a written report providing: (a)
all domestic Net Sales in U.S. Dollars during the preceding semi-annual
reporting period including any Federal governmental agency sales under
Section 5.4 above and all export Net Sales (if none, LICENSEE will so
indicate); and (b) the amount of royalties due in U.S. Dollars for the
preceding semi-annual reporting period pursuant to the provisions hereof.
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7. TECHNICAL ASSISTANCE
7.1 WSRC will provide to LICENSEE, on a non-reimbursement/free of charge
basis, the following level of technical assistance to help facilitate the
transfer of technology associated with WSRC Patent Rights:
Thirty-two (32) hours of technical assistance of its Inventor or others
equally skilled in the art on a non-interference basis at LICENSEE's
discretion. Travel expenses, if any, shall be the responsibility of the
LICENSEE.
7.2 WSRC further agrees to provide from time to time over the term of the
Agreement, on a non-interference basis and subject to the availability of
the Inventor or others equally skilled in the art, additional technical
assistance to help facilitate the transfer of technology associated with
WSRC Patent Rights. In the event that LICENSEE elects to exercise this
option, the full amount estimated by WSRC for its services must be paid in
advance prior to LICENSEE receiving any portion of such services.
8. PATENT PROSECUTION AND MAINTENANCE
8.1 WSRC shall diligently pursue United States patents for the inventions
identified in Appendix A, using counsel of its choice. The cost of
preparing, filing, prosecuting and maintaining the United States
patents(s) contemplated by this License Agreement shall be borne by WSRC.
The Parties acknowledge that foreign patent protection is presently
considered to be unavailable for the WSRC Patent Rights identified in
Appendix A.
9. INFRINGEMENT BY THIRD PARTIES
9.1 LICENSEE shall give notice of any discovered third-party infringement to
WSRC. WSRC shall, at its sole discretion, subject to DOE approval, take
appropriate action to stop or prevent such infringement upon consultation
with LICENSEE. WSRC shall also have the sole discretion to decide to take
no action against the alleged infringement. In the event that WSRC does
not take appropriate action to stop or prevent such infringement within
ninety (90) days after receiving such notice, LICENSEE has the right to
take appropriate action to
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stop and prevent the infringement, including the right to file suit.
9.2 In the event that LICENSEE files suit to stop infringement or defends any
action against the validity of the patent, LICENSEE shall indemnify and
hold WSRC harmless against all liability, expense and costs, including
attorneys' fees incurred as a result of any such suit.
9.3 LICENSEE may, however, apply up-to-fifty (50) percent of any such incurred
costs as a reduction of any royalties due and payable to WSRC under the
terms of this Agreement at such time as verified bills of costs actually
incurred are reported to WSRC in accordance with Section 6 - "Records and
Reports".
9.4 In the event LICENSEE secures a judgment against any third-party
infringer, after accounting for and paying all of LICENSEE's costs
associated with prosecution of such action as well as paying WSRC for any
reduction of royalties pursuant to Section 9.3, LICENSEE shall pay WSRC
its royalties as set forth hereinabove on any balance of proceeds actually
received and LICENSEE shall retain any such remaining balance of proceeds.
9.5 The Parties hereby agree to cooperate with each other in the prosecution
of any such legal actions or settlement actions undertaken under this
section and each will provide to the other all pertinent data in its
possession which may be helpful in the prosecution of such actions;
provided, however, that the Party in control of such action shall
reimburse the other Party for any and all costs and expenses in providing
data and other information necessary to the conduct of the action.
9.6 The Party having filed such action shall be in control of such action and
shall have the right to dispose of such action in whatever reasonable
manner it determines to be the best interest of the Parties hereto, except
that any settlement which affects or admits issues of patent validity
shall require the advance written approval of WSRC.
10. REPRESENTATIONS AND WARRANTIES
10.1 WSRC represents and warrants that Appendix A contains a complete and
accurate listing of all the WSRC Patent Rights licensed and that WSRC has
the
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right to grant the rights, licenses, and privileges granted herein.
10.2 WSRC represents and warrants that WSRC has no knowledge of any claims of
infringement filed against WSRC for practicing WSRC Patent Rights anywhere
in the world.
10.3 Except as set forth hereinabove, WSRC makes NO REPRESENTATIONS OR
WARRANTIES, express or implied, with regard to the infringement of
proprietary rights of any third party.
10.4 LICENSEE acknowledges that the export of any of the WSRC Patent Rights
from the United States or the disclosure of any of the WSRC Patent Rights
to a foreign national may require some form of license from the U.S.
Government. Failure to obtain any required export licenses by LICENSEE may
result in LICENSEE subjecting itself to criminal liability under U.S.
laws.
11. DISCLAIMERS
11.1 Neither WSRC, the DOE, nor persons acting on their behalf will be
responsible for any injury to or death of persons or other living things
or damage to or destruction of property or for any other loss, damage, or
injury of any kind whatsoever resulting from LICENSEE's manufacture, use,
or sale of materials, information, or WSRC Patent Rights hereunder.
11.2 EXCEPT AS SET FORTH HEREINABOVE, NEITHER WSRC, THE DOE, NOR PERSONS ACTING
ON THEIR BEHALF MAKE ANY WARRANTY, EXPRESS OR IMPLIED: (1) WITH RESPECT TO
THE MERCHANTABILITY, ACCURACY, COMPLETENESS, OR USEFULNESS OF ANY
SERVICES, MATERIALS, OR INFORMATION FURNISHED HEREUNDER; (2) THAT THE USE
OF ANY SUCH SERVICES, MATERIALS, OR INFORMATION WILL NOT INFRINGE
PRIVATELY OWNED RIGHTS; (3) THAT THE SERVICES MATERIALS, OR INFORMATION
FURNISHED HEREUNDER WILL NOT RESULT IN INJURY OR DAMAGE WHEN USED FOR ANY
PURPOSE; OR (4) THAT THE SERVICES, MATERIALS, OR INFORMATION FURNISHED
HEREUNDER WILL ACCOMPLISH THE INTENDED RESULTS OR ARE SAFE FOR ANY
PURPOSE, INCLUDING THE INTENDED OR PARTICULAR PURPOSE.
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FURTHERMORE, WSRC AND THE DOE HEREBY SPECIFICALLY DISCLAIM ANY AND ALL
WARRANTIES, EXPRESS OR IMPLIED, FOR ANY LICENSED PRODUCTS MANUFACTURED,
USED, OR SOLD BY LICENSEE. NEITHER WSRC NOR THE DOE SHALL BE LIABLE FOR
CONSEQUENTIAL, SPECIAL OR INCIDENTAL DAMAGES IN ANY EVENT.
11.3 LICENSEE agrees to indemnify WSRC, the DOE, and persons acting on their
behalf for all damages, costs, and expenses, including attorney's fees,
arising from, but not limited to, LICENSEE's making, using, selling, or
exporting of any WSRC Patent Rights, information, or Licensed Products, in
whatever form furnished hereunder.
11.4 LICENSEE agrees to obtain and maintain, at its sole expense, sufficient
liability insurance to protect itself, WSRC, DOE and parties acting on
their behalf against the events enumerated in Section 11.3 above. At
WSRC's request, LICENSEE further agrees to provide a certificate of
insurance in a form acceptable to WSRC in satisfaction thereof.
12. TERM OF AGREEMENT AND EARLY TERMINATION
12.1 Unless otherwise terminated by operation of law or by acts of the Parties
in accordance with the terms of this Agreement, this Agreement shall be
effective as of the date of execution by the last signing Party and shall
remain in effect for the longer of 17 years or the life of any issued
patent(s) or upon the extinguishment, including the appeal thereof, of all
WSRC Patent Rights, whichever occurs first.
12.2 Either Party shall have the right to terminate this Agreement without
judicial resolution after a breach of any provision by the other Party has
gone uncorrected for sixty (60) days after the other Party has been
notified in writing of such breach.
12.3 LICENSEE shall provide notice to WSRC of its intention to file a voluntary
petition in bankruptcy or of another party's intention to file an
involuntary petition in bankruptcy for LICENSEE, said notice to be
received by WSRC at least thirty (30) days prior to filing such a
petition. LICENSEE's failure to provide such notice to WSRC of such
intentions shall be deemed a material and incurable breach of this
Agreement.
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12.4 LICENSEE agrees that this Agreement shall automatically terminate upon any
attempt by LICENSEE to offer LICENSEE's rights under this Agreement as
collateral to a third party.
12.5 LICENSEE, if not then in breach of any portion of this Agreement, may
voluntarily terminate this Agreement upon giving sixty (60) days written
notice to WSRC and upon timely reporting/payment to WSRC of any and all
earned royalties due, including those royalties accruing during the notice
period, or the pro rata portion of any annual minimum royalties due in the
year of such termination, whichever is greater.
13. RIGHTS OF PARTIES AFTER TERMINATION
13.1 Neither Party shall be relieved of any obligation or liability under this
Agreement arising from any act or omission committed prior to the
effective date of such termination.
13.2 From and after any termination of this Agreement, LICENSEE shall have the
right to sell any Licensed Products that LICENSEE had already manufactured
prior to termination, provided that all royalties and reports required
hereinabove shall be timely submitted to WSRC.
13.3 From and after any termination of this Agreement, LICENSEE shall not
manufacture nor have manufactured any Licensed Products pursuant to this
Agreement.
13.4 The rights and remedies granted herein, and any other rights or remedies
which the Parties may have, either at law or in equity, are cumulative and
not exclusive of others. On any termination, LICENSEE shall duly account
to WSRC and transfer to it all rights to which WSRC may be entitled under
this Agreement.
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14. USE OF NAMES AND TRADEMARKS;
NONDISCLOSURE AGREEMENT
14.1 Except as provided for under this Agreement or as permitted by the express
written consent of the affected Party, the use of the name of either Party
or the Government, the U.S. Department of Energy, or the Savannah River
Site or abbreviations or contractions thereof in advertising, publicity or
other promotional activities is strictly prohibited.
14.2 Either Party may disclose the existence of this Agreement, the Parties,
the technology licensed, and the nature of the grant. Neither Party may
disclose to third parties those portions of this Agreement which have been
identified by either Party as being proprietary by written notice given
within thirty (30) days of the effective date of this Agreement, except
those portions WSRC may be required to release under applicable law.
15. FORCE MAJEURE
15.1 No failure or omission by WSRC or by LICENSEE in the performance of any
obligation under this Agreement shall be deemed a breach of this Agreement
or create any liability if the same shall arise from acts of God, acts or
omissions of any government or agency thereof, compliance with requests,
recommendations, rules, regulations, or orders of any governmental
authority or any office, department, agency, or instrumentality thereof,
fire, storm, flood, earthquake, accident, acts of the public enemy, war,
rebellion, insurrection, riot, sabotage, invasion, quarantine,
restriction, transportation embargoes, or failures or delays in
transportation.
16. ASSIGNABILITY
16.1 The Government may assign WSRC's interest in this Agreement to a successor
Contractor for the Savannah River Site without the consent of LICENSEE.
16.2 This Agreement may be assigned by LICENSEE to a third party only in
conjunction with the sale or transfer of substantially all of LICENSEE's
assets,
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and only with the written consent of WSRC, which shall not be unreasonably
withheld.
16.3 This Agreement may also be assigned by LICENSEE to Sequiam Corporation of
Orlando, Florida within thirty (30) days of execution of this Agreement.
17. NON-ABATEMENT OF ROYALTIES
17.1 WSRC and LICENSEE acknowledge that certain of the WSRC Patent Rights may
expire prior to the conclusion of the term of this Agreement; however,
WSRC and LICENSEE agree that the royalty rates provided for herein shall
be uniform and undiminished, except as otherwise provided pursuant to this
Agreement.
18. NOTICES
18.1 All notices and reports shall be addressed to the Parties hereto as
follows:
If to WSRC:
Attention: Xxxx X. Xxxxxxxx
Westinghouse Savannah River Company LLC
Savannah River Site, Xxxx. 000-00X
Xxxxx, XX 00000
Telephone (000) 000-0000 Facsimile: (000) 000-0000
If to LICENSEE:
Fingerprint Detection Technologies, Inc. (FDTI)
000 X. Xxxxxxx Xxxxxx, Xxxxx 000
Xxxxx Xxxx, XX 00000
ATTENTION: Xxx Xxxxxx
Facsimile: (000) 000-0000 Telephone: (000) 000-0000
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18.2 All payments due WSRC shall be sent to:
Westinghouse Savannah River Company
Attention: Accounts Receivable
X.X. Xxx 000000
Xxxxxxx, XX 00000-0000
18.3 Any notice, report or any other communication required or permitted to be
given by one Party to the other Party by this Agreement shall be in
writing and either (a) served personally on the other Party, (b) sent by
express, registered or certified first-class mail, postage prepaid,
addressed to the other Party at its address as indicated above, or to such
other address as the addressee shall have previously furnished to the
other Party by proper notice, (c) delivered by commercial courier to the
other Party, or (d) sent by facsimile to the other Party at its facsimile
number indicated above or to such other facsimile number as the Party
shall have previously furnished to the other Party by proper notice, with
machine confirmation of transmission.
19. DISPUTE RESOLUTION
19.1 The Parties shall attempt to settle any claim or controversy arising from
this License Agreement through consultation and negotiations in good faith
and a spirit of mutual cooperation. If those attempts fail, then the
dispute will be mediated by a mutually acceptable mediator chosen by the
Parties within 30 days after written notice by one Party demanding
mediation. Neither Party may unreasonably withhold consent to the
selection of a mediator, and the Parties will share the costs of the
mediation equally. If the dispute cannot be resolved by negotiation or
mediation, the matter will be referred to the cognizant DOE Contracting
Officer for WSRC's prime contract, who will render a final decision within
sixty (60) days. The decision will be final and binding upon the Parties.
19.2 It is the policy of WSRC that all employees, in the performance of their
responsibilities, shall adhere to the highest possible standards of
ethical and business conduct. WSRC has established an Ombudsman in the
WSRC Ethics Office. The Ombudsman is responsible for helping to resolve
LICENSEE complaints, disputes, or inquiries, arising under this Agreement
when such concerns have not been resolved by responsible WSRC officials.
The
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Ombudsman may be contacted by phone at (000) 000-0000. The Ombudsman will
investigate the complaint or inquiry and provide the caller with a
response. The caller may remain anonymous, if he or she chooses.
20. GOVERNING LAW
20.1 United States Federal Law shall govern this License Agreement to the
extent that there is such law. To the extent that there is no applicable
United States Federal Law, the law of the State of South Carolina shall
govern.
21. WAIVERS
21.1 The failure of WSRC at any time to enforce any provisions of this
Agreement or to exercise any right or remedy shall not be construed to be
a waiver or such provisions or of such rights or remedy or the right of
WSRC thereafter to enforce each and every provision, right or remedy.
22. MODIFICATIONS
22.1 It is expressly understood and agreed by the Parties hereto that this
instrument contains the entire agreement between the Parties with respect
to the subject matter hereof and that all prior representations,
warranties, or agreements relating hereto have been merged into this
document and are thus superseded in totality by this Agreement. This
Agreement may be amended or modified only by a written instrument signed
by the duly authorized representatives of both of the Parties.
23. HEADINGS
23.1 The headings for the sections set forth in this Agreement are strictly for
the convenience of the Parties hereto and shall not be used in any way to
restrict the meaning or interpretation of the substantive language of this
Agreement.
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IN WITNESS WHEREOF, the Parties hereto have caused this Agreement to be duly
executed in their respective names by their duly authorized representatives.
FINGERPRINT DETECTION WESTINGHOUSE SAVANNAH
TECHNOLOGIES, INC. (FDTI) RIVER COMPANY LLC
By: By:
--------------------------------- ----------------------------------
(Signature) (Signature)
Name: Xxx Xxxxxx Name:
------------------------------- --------------------------------
Title: President Title:
------------------------------ -------------------------------
Date: Date:
------------------------------- --------------------------------
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APPENDIX A
WSRC PATENT RIGHTS
Related to WSRC License Agreement No. LA-03-002
The component parts of this Appendix A are as follows:
WSRC Patent Application No. 09/578,662, filed with the U.S. Patent and Trademark
Office on May 25, 2000 for a LED Intense Headband Light Source for Fingerprint
Analysis and based on:
- WSRC Invention Disclosure No. SRS-99-053 entitled "LED Intense Headband
Light Source for Fingerprint Analysis" by Xxxxx Xxxxx-Xxxxxx dated
4/26/99.
- DOE Letter, X.X. Xxxxxx to M.B. Xxxxxx dated July 26, 1999, accepting
WSRC's request of July 6, 1999 to retain title to the LED Intense Headband
Light Source for Fingerprint Analysis technology.
ACCEPTANCE OF APPENDIX A:
FINGERPRINT DETECTION WESTINGHOUSE SAVANNAH
TECHNOLOGIES, INC. (FDTI) RIVER COMPANY LLC
By: By:
----------------------------------- ----------------------------------
(Signature) (Signature)
Date: Date:
--------------------------------- --------------------------------
APP. X-0/0
XXXXXXXX X
DEVELOPMENT AND COMMERCIALIZATION PLAN
Related to WSRC License Agreement No. LA-03-002
B.1 LICENSEE agrees to invest in the development of technology and market for
Licensed Products by committing LICENSEE's commercially reasonable efforts
and resources, to work towards achieving the following requirements:
- Prepare and deliver a commercialization business plan within sixty
(60) days.
- Issue a press release within 3 days of the license and transfer to
Sequiam as required by public companies
- Product ready for market by end of first quarter 2004
- Establish a website presence by end of first quarter 2004
- New product announcement by end of first quarter 2004
- Promote product at 4-5 law enforcement exhibitions, trade shows or
conferences per year
- Sell 1500-3000 units by the end of 2004
- Utilize our current relationship with the National Sheriff's
Association and their auxiliary members. Product will be a natural
extension into this market
- Introduce product to current national and international network of
law enforcement product distributors of Sequiam products and their
end-users upon roll out of product.
B.2 Progress and substantiation of LICENSEE meeting these requirements shall
be provided to WSRC in the form of a written report due on the first
anniversary and each anniversary thereafter of the effective date thereof.
The report shall include, but not be limited to, progress on research and
development, regulatory approvals, if any, status of performance
milestones, manufacturing issues, and marketing and sales figures for the
most recently completed year and projections for the next year. At WSRC's
option, LICENSEE further agrees to present the report at a meeting of the
Parties to be held at mutually convenient time and place. In the event
that LICENSEE fails to perform in accordance with Paragraph B.1 of this
Appendix B and is unable or unwilling to cure within thirty (30) days any
deficiencies found to WSRC's satisfaction, WSRC shall have the right and
option to convert this exclusive license to a partially exclusive or
nonexclusive license as provided in Section 4 "Due Diligence" of this
Agreement.
APP. B-1/2
N O T I C E
THIS APPENDIX CONTAINS FINANCIAL AND COMMERCIAL INFORMATION THAT IS BUSINESS
CONFIDENTIAL AND THE PARTIES HEREBY AGREE NOT TO USE OR DISCLOSE THIS APPENDIX
TO ANY THIRD PARTY WITHOUT THE ADVANCE WRITTEN APPROVAL OF THE OTHER PARTY
HERETO, EXCEPT TO THOSE NECESSARY TO ENABLE THE PARTIES TO PERFORM UNDER THIS
AGREEMENT OR AS MAY BE REQUIRED BY THE WSRC CONTRACT WITH THE DOE UNDER THE SAME
RESTRICTIONS AS SET FORTH HEREIN.
ACCEPTANCE OF APPENDIX B:
FINGERPRINT DETECTION WESTINGHOUSE SAVANNAH
TECHNOLOGIES, INC. (FDTI) RIVER COMPANY LLC
By: By:
---------------------------------- --------------------------------
(Signature) (Signature)
Date: Date:
-------------------------------- ------------------------------
APP. B-2/2
APPENDIX C
ISSUE FEE, EARNED ROYALTIES AND
MINIMUM ANNUAL ROYALTIES
Related to WSRC License Agreement No. LA-03-002
C.1 In consideration of the rights and licenses granted herein, LICENSEE
agrees to pay WSRC a License Issue Fee in the amount of twenty thousand
U.S. Dollars ($20,000) within thirty (30) days following final execution
of this Agreement. The License Issue Fee is non-refundable and is not an
advance against royalties. Should LICENSEE fail to make License Issue Fee
payment to WSRC within thirty (30) days, this agreement shall be null and
void.
C.2 LICENSEE further agrees to pay to WSRC an earned running royalty of four
and one half percent (4.5%) of Net Sales of Licensed Products made,
practiced, sold, leased or transferred by LICENSEE during the life of this
Agreement.
C.3 LICENSEE also agrees to pay WSRC a Minimum Annual Royalty for the life of
any license granted under this License Agreement, as set forth in the
following schedule:
Period Minimum Annual Royalty(*)
------ -------------------------
Year 1 $0
Year 2 $5,000
Year 3 $6,000
Year 4 plus each year $7,200
thereafter until the end of the patent life.
(*) This Minimum Annual Royalty shall be paid even if earned royalties are
less than the minimum required. Specifically, in the event that the earned
royalties under Paragraph C.2 of this Appendix C do not equal the Minimum
Annual Royalty amount, as set forth in this Paragraph C.3, then LICENSEE
shall pay the actual earned royalties due plus the difference between such
earned royalties (Paragraph C.2) and this Minimum Annual Royalty amount.
Such differential amount (if any) shall be due and payable no later than
November 30 of each year. No Minimum Annual Royalties shall be due for the
first 12 months after consummating the
APP. C-1/2
Licensing Agreement. Running royalties earned during any twelve-month
period subject to Minimum Royalty Payments are fully creditable against
the minimum due in that period.
C.4 If LICENSEE sublicenses third parties to practice and have practiced
Licensed Product pursuant to Section 3 of this Agreement, LICENSEE further
agrees to pay WSRC fifty percent (50%) of any and all consideration
received from such Sublicensees and Sub-sublicensees
N O T I C E
THIS APPENDIX CONTAINS FINANCIAL AND COMMERCIAL INFORMATION THAT IS BUSINESS
CONFIDENTIAL AND THE PARTIES HEREBY AGREE NOT TO USE OR DISCLOSE THIS APPENDIX
TO ANY THIRD PARTY WITHOUT THE ADVANCE WRITTEN APPROVAL OF THE OTHER PARTY
HERETO, EXCEPT TO THOSE NECESSARY TO ENABLE THE PARTIES TO PERFORM UNDER THIS
AGREEMENT OR AS MAY BE REQUIRED BY THE WSRC CONTRACT WITH THE DOE UNDER THE SAME
RESTRICTIONS AS SET FORTH HEREIN.
ACCEPTANCE OF APPENDIX C:
FINGERPRINT DETECTION WESTINGHOUSE SAVANNAH
TECHNOLOGIES, INC. (FDTI) RIVER COMPANY LLC
By: By:
--------------------------------- --------------------------------
(Signature) (Signature)
Date: Date:
------------------------------- ------------------------------
WSRC EXPL CAA0402 APP. C-2/2 LA-03-002 FDTI
