LICENSE AGREEMENT
FROG Navigation Systems B.V.
and
Transbotics Corporation
Contents:
1. - Patent, Know-How, Frog Software and SuperFROG Software
License Agreement
2. - Exhibit A - Agreement Conditions
Patent, Know-How, FROG Software and SuperFROG Software
LICENSE-AGREEMENT
FROG Navigation Systems B.V.
and
Transbotics Corporation
THE UNDERSIGNED,
FROG Navigation Systems B.V.
A private company with limited liability established under the laws of the
Netherlands, having its registered office at Xxxxxxxxxxxxxx 00, 0000 XX Xxxxxxx,
the Netherlands, hereinafter referred to as licensor, of the one part
and
Transbotics Corporation
A public company with limited liability established under the laws of the
United States of America, having its registered office at 0000 Xxxxxxx Xxxxx,
Xxxxxxxxx XX 00000, Xxxxxx Xxxxxx of America, hereinafter referred to as
Licensee, at the other part.
WHEREAS:
i. Licensor has obtained exclusive rights to a developed system for navigating
a free ranging vehicle, hereinafter referred to as "FROG-system", to be
employed in automated guided vehicle systems and has developed know-how
relating to the design, development, manufacturing, installation, operation
and marketing thereof.
ii. Licensor has developed computer software to be employed in the use of
computer hardware configurations to operate automated guided vehicles, and
has developed know-how relating to the design, development, manufacturing,
installation, operation and marketing thereof.
iii. Licensor has obtained by experience methods, techniques and other data,
which in combination with and as part of its know-how, enables Licensor to
apply the aforesaid system to automated guided vehicle systems.
iv. Licensor is fully entitled to the copyrights of the said computer software,
hereinafter referred to as "FROG" and "SuperFROG".
v. Licensor is fully entitled to the trademarks FROG and SuperFROG.
vi. Licensor may freely dispose of the FROG and SuperFROG computer software,
the copyrights, trademarks and know-how relating thereto.
vii. Licensor would like to grant to Licensee the license and right under
Licensor's patents, other industrial property rights and know-how to
manufacture, use and/or market and sell, as the case may be, certain
automated guided vehicle systems by employing the FROG-system in the
licensed territory defined hereinafter.
viii. Licensor is willing to grant to Licensee the aforesaid license and right
on a non-exclusive basis with respect to Licensee's products - as defined
hereinafter - in licensed territory.
ix. Licensor would like to grant to the Licensee a non-exclusive right and
license under Licensor's copyright and other forms of industrial and
intellectual property protection and know-how, including the use of
trademarks relating thereto, and of providing services to the Licensee
subject to the terms and conditions hereinafter set out for the purpose of
enabling the Licensee to use and sub-license the same for operating
automated guided vehicles to end users.
x. Licensee would like to obtain from Licensor such non-exclusive right and
license.
xi. Licensee's business is essentially the same as Licensor's, namely the
supply of automated guided vehicle systems to end-users. Therefore Licensee
is familiar with the technology concepts and material handling industry
requirements.
xii. Licensee's has developed and licenses other vendor's computer software
employed in the use of computer hardware configurations to operate
automated guided vehicles, and has developed know-how relating to design,
development manufacturing, installation, operation and marketing thereof.
The Licensee will not transfer any rights of its property to the Licensor.
Now therefore, in consideration of the convenants, terms and conditions set
forth herein, the parties hereto agree as follows:
Article 1 - Definitions
1. Unless the context specifically indicates otherwise, the following terms
have the following meanings, when used hereinafter:
1.1. "The Invention" shall mean the patented system for navigating a free
ranging vehicle, the FROG-system.
1.2. "Patents" shall mean patents and patent applications presently owned or
filed by Licensor or in respect of which Licensor has acquired, or may
acquire the right to grant licenses in any or all countries of the world
during the term hereof, and which are applicable to, or may be used in, the
exploitation of navigating systems.
1.3. "Know-how", being all that knowledge and experience of a technical,
manufacturing, installation, commercial, administrative, cost estimation or
of any other nature, which are applicable to the invention and are
necessary or desirable for the proper use and application of the invention
to the extent at any time available.
1.4. "FROG" and "SuperFROG" shall mean any part, or combination of parts, of the
proprietary FROG and SuperFROG software to be employed in, or used in or
with a computer hardware configuration for operating automated guided
vehicles, and related user manuals; FROG is considered to be the vehicle
control software and SuperFROG is the supervisory control software with
functions such as: fleet management, vehicle dispatching, traffic control
and status monitoring.
1.5. "The Licensee's Products" and/or "Vehicle(s)" shall mean the products
manufactured and/or marketed by the Licensee by employing the Invention, as
specified in Exhibit A attached hereto.
1.6. "Licensed Territory" shall mean the countries as indicated or specified in
Exhibit A hereto.
1.7. "Services" shall mean services and assistance rendered, or to be rendered
by the Licensor with respect to FROG and SuperFROG under this agreement,
comprising: development, maintenance, engineering, training and
implementation of FROG and SuperFROG.
1.8. "Copyrights" shall mean the copyright, or other forms of industrial and
intellectual property protection of the licensed FROG and SuperFROG
applications therefore filed in, issued or applicable to the Licensed
territory, presently owned or hereafter acquired by Licensor and/or as to
which Licensor has, or may have, the right to grant license rights with
respect thereto to Licensee during the term hereof, and which are
applicable to, or may be used in the exploitation of the licensed FROG and
SuperFROG in the licensed territory.
1.9. "Improvements" shall mean: Any modification or betterment of FROG or
SuperFROG, provided that before applying any such modification and
betterment the approval in writing from Licensor is required if and when
the said modification and betterment has not been developed by or at the
instruction of Licensor.
1.10. "Effective Date" shall mean the date as set forth in Exhibit A attached
hereto.
1.11. "Affiliate" shall mean a company of which the majority of its issued
voting share capital is owned directly or indirectly by a party hereto, or
a company of which the majority of the issued voting share capital is owned
by the same company which owns the majority of the issued voting share
capital of a party hereto, or a company which owns directly or indirectly
the majority of the issued voting share capital of a party hereto.
1.12. "A Single System" shall mean a system of Licensee's products supervised
and/or connected by one and the same computer, regardless whether this
computer is a part of a computer network or other hardware configuration.
1.13. "End user" shall mean the sub-Licensee of the Licensee or in some cases a
separate licensee of the Licensor, who will use the sub-License granted to
it only for the purpose of carrying on the manufacturing of products or the
rendering of services within his normal and usual business, which will not
include the exploitation, manufacturing, development and marketing of FROG
and SuperFROG.
Article 2 - Nature and Scope Of License
2.1. Subject to the terms and conditions laid down herein Licensor grants to
Licensee the non-exclusive right to use and apply the Invention under the
patents, the use of FROG and SuperFROG computer software, know-how and
Licensor's other industrial property rights with respect to automated
guided vehicle systems, as laid down in Exhibit A attached hereto, and to
manufacture, have manufactured, use, sell and/or market the Licensee's
products.
2.2. Licensee shall manufacture the Licensee's products for a Licensed territory
only. Provided, however, Licensee shall be free to pursue customers in its
Licensed territory that have global operations.
2.3. Licensee irrevocably and unconditionally undertakes vis-a-vis Licensor not
to transfer or assign this agreement to any third party, except to its
affiliates, provided that for a transfer of assignment to an affiliate the
prior consent of Licensor is required, which consent shall not be
unreasonably withheld and provided that the affiliate confirms in writing
vis-a-vis Licensor to be bound in all respects by this agreement.
2.4. Licensee is entitled to grant sublicenses to use FROG and SuperFROG to end
users. Licensor's License term shall be included in the visual displays and
or customer interfaces provided by the Licensor.
2.5. Licensee shall not disassemble or reverse engineer FROG and SuperFROG or
any medium of physical embodiment thereof. The transfer of the source code
of FROG and SuperFROG is no part of this agreement.
2.6. It is agreed by and between the parties hereto that the right and license
granted pursuant to section 2 of this Article 2 will become effective as of
the date hereof.
Article 3 - Patent and License Registration
3.1. At the request of Licensor, Licensee shall make its best effort to give any
reasonable support to Licensor for the purpose of registering patents and
other forms of industrial protection in the Licensed territory or part
thereof, it being understood that any and all cost relating to such
registration will be borne by Licensor. In case Licensee applies for a
patent relating to AGV technology directly utilizing the Frog know-how,
Licensor will offer its support at Licensees cost and Licensor will have
the right to use said patents or technology.
3.2. If and when under the laws of the Licensed territory or part thereof any
kind of registration of the license granted hereunder is requested by
Licensee, Licensee shall act accordingly and Licensor shall give any and
all reasonable support to Licensee for the purpose of registering the said
license, it being understood that any and all cost relating to such
registration will be borne by Licensee.
3.3. Licensor shall take any and all reasonable action necessary to maintain
patents obtained and to acquire patents for which patent applications have
been filed.
Article 4 - Transmittal of Know-how
4.1. As soon as is reasonably practical after the effective date Licensor shall
convey to Licensee know-how in an adequate manner in order to enable
Licensee to use the invention, FROG and SuperFROG software for the purpose
of manufacturing, marketing and selling Licensee's products in accordance
with the terms and conditions laid down in this Agreement. Simultaneously
Licensor shall inform Licensee of the methods and techniques relating to
applying the invention, FROG, SuperFROG and its experience therewith in
order to enable Licensee's skilled technicians and automation-experts to
commence manufacturing of the Licensee's products within a reasonable
period of time. The know-how shall specifically include prints, drawings
and all relevant specifications, instruction manuals and literature.
4.2. No provision of this Agreement shall be construed to require Licensor to
furnish know-how acquired from others not being affiliates on terms
prohibiting or restricting disclosure by Licensor.
Article 5 - Training of Licensee's Employees
Licensor shall enable Licensee to participate in a training course relating
to the technical and commercial aspects of the subject matter of this Agreement
on the following terms and conditions:
5.1. Initially there will be two separate training courses, one dealing with the
technical and another dealing with the commercial aspects, each of one-week
duration. They will be held on Licensor's premises.
5.2. Participants in the training courses designated by Licensee should be
skilled and experienced in the matters dealt with in the two different
courses and be familiar with the know-how transmitted pursuant to Article 4
hereof.
5.3. Timing of the aforesaid training courses will be determined by Licensor
after consultation of Licensee, but in any event not earlier than one month
after the know-how has been fully transmitted by Licensor to Licensee
pursuant to section 1 of Article 4 hereof.
5.4. Maximum number of participants in each training course mentioned in this
Article 5 shall be 8 (eight) persons.
5.5. Subject to paragraph 8 of this Article 5 any and all training courses
mentioned in this Article 5 shall be free of charge.
5.6. Any and all travelling and accommodation cost as well as any and all out of
pocket expenses of Licensee's participants shall always be borne by
Licensee.
5.7. Licensor shall make available to Licensee free of charge two sets of
training materials in the English language for each training course
mentioned in this Article 5 and any and all expenses relating to
multiplying the aforesaid training materials shall be borne by Licensee.
5.8. If and when Licensee requests Licensor to organize the initial or any
additional training courses similar to those referred to above or any
assistance in its own training courses with respect to the subject matter
of this agreement, Licensor shall organize such training courses or grant
the assistance so requested during periods to be mutually agreed by and
between the parties hereto, provided that Licensee has to pay Licensor the
customary per diem fee and in the event of training courses to be organized
by Licensor the provisions laid down in the above subsections 2, 4 and 6
shall apply.
Article 6. Licensor's Services and Warranties.
6.1. Upon written request of Licensee, Licensor shall send to Licensee, subject
to availability, technical personnel and to mutual agreement, one or more
qualified automation-engineers and/or experts to render services to
Licensee in connection with Licensor's obligation laid down in Article 4
hereof and with respect to manufacturing, operating and testing the FROG
and SuperFROG for a reasonable period of time to be agreed upon by parties
hereto, provided that Licensee agrees to bear the cost of travelling,
living and accommodation of the said engineers and/or experts as well as
the customary per diem established by Licensor attributable to a similarly
qualified engineer and/or expert. Any and all additional costs directly
connected with the services rendered by the Licensor to Licensee, such as,
but not limited to, translation and interpreter expenses, shall be borne by
Licensee.
6.2. In providing Services Licensor shall act as an advisory capacity only.
Neither Licensor nor its employees shall have any responsibility for
manufacturing, using, marketing and trading the Licensee's products by
using or applying FROG and SuperFROG, nor for design, installation,
operation of FROG and SuperFROG in the Licensee's products, nor for any
decision which may be made in connection therewith. Furthermore Licensor
and its employees, when rendering services contemplated in section 1 of
this Article 6, shall not be liable for any damage whatsoever, except for
Licensor's or its employees' willful act or willful negligence or omission,
caused to Licensee, its employees and or third parties.
Article 7 - FROG and Sub-License
7.1. It is expressly understood by both parties that a sub-license, as referred
to in Article 2 section 4, is to be concluded by Licensee with any and all
end users for the use of Licensee's products wherein FROG and/or SuperFROG
are applied, on each separate hardware unit.
7.2. Licensee is not entitled to grant a corporate sub-license to an end user,
unless the Licensor has given prior approval.
Article 8 - Confidentiality
Licensee on behalf of itself, its subsidiaries, its sub-licensee's, its
suppliers, its employees and its advisors agrees:
8.1. That it will receive and retain the know-how received pursuant to this
Agreement from Licensor, made in written form, in confidence, and will not
disclose the know-how unless the know-how is readily available in written
form to the trade from sources not attributable to Licensee.
8.2. That it will take all necessary and reasonable precautions to receive and
retain the Know-how in confidence.
8.3. That it will obtain written undertakings form other persons including
sub-licensees who receive the know-how, or portions thereof, on a
need-to-know basis to the effect that the said person or persons receiving
the know-how agree to receive and retain it in confidence.
8.4. That any reproduction, note, summary or similar document relating to the
know-how received by it from Licensor marked "secret" of "confidential" by
Licensor shall become and remain, immediately upon their creation, the
property of Licensor.
8.5. That in the event of termination of this Agreement the know-how, whether it
is then in its original form or translated in another language, shall be
promptly returned with all copies to Licensor and Licensee agrees not to
use the know-how after the said termination as long as it is secret.
However, this provision does not apply to know-how necessary for Licensee
to implement firm commitments made by Licensee vis-a-vis its customers with
respect to After Sales services of the Licensee's products, provided that
the said After Sales services shall not continue for a period of more than
12 (twelve) months after termination of this Agreement. After the said
period of 12 (twelve) months has elapsed Licensee shall strictly act in
accordance with the provisions laid down in the first sentence of this
Section 5. Notwithstanding the above, Licensee will be able to acquire
spare parts or repair services from Licensor for the remaining life of the
systems Licensee has installed with end users.
8.6. In the event of the know-how becoming publicly known other than by action
of Licensee, it not being protected by a patent in the relevant licensed
territory or part thereof, Licensee shall discontinue to pay to Licensor
the License fee as set out in Article 9 hereof relating to the relevant
licensed territory or part thereof. In the event the know-how becoming
publicly known by action or omission of Licensee in breach of this
Agreement, Licensee shall owe to Licensor all actual damage directly
incurred by Licensor.
8.7. That the secrecy and confidentially provisions laid down in this Article 8
shall remain in force unconditionally and irrevocably during the term of
this Agreement and subsequently 2 (two) years after expiration of the said
term or 2 (two) years from the date for termination hereof whichever is the
longer period.
8.8. In the event the Licensee becomes aware of a third party violating the
confidentiality or any patent or industrial property right mentioned in
this Agreement, Licensee shall inform Licensor forthwith thereof and shall
give any reasonable assistance to Licensor at the latter's request for the
purpose of Licensor taking any action against such third party, provided
that the costs and expenses for the said assistance will be borne by
Licensor.
Article 9 - License Fees
9.1. In consideration of acquiring the non-exclusive right and license to use
the invention and/or Licensor's products FROG and SuperFROG for the purpose
of manufacturing, using, marketing and selling the Licensor's products
described in Article 2.1 hereof in Licensed territory, Licensee commits
itself to make payment of the License Fees in accordance with the terms of
the Exhibit A attached hereto.
9.2. It is agreed by the parties hereto that the payments of License Fees
referred to in this Article 9 shall never be refunded by the Licensor to
the Licensee in the event this Agreement will be terminated for any reason
whatsoever, provided that Licensor has to repay the License fees in the
event of a material breach of this Agreement on the part of Licensor
occurring within one year after any payment has been made.
Article 10 - Royalties
10.1. In addition to the License Fees due by Licensee to Licensor pursuant to
Article 9 hereof, Licensee owes to Licensor royalty in accordance with the
following: a royalty, as specified in Exhibit A attached hereto for each
separate vehicle, by employing the Invention, hereinafter referred to as
the vehicle whether or not equipped with FROG software, sold or transferred
or delivered in any other way to a third party by the Licensee. It is
expressly understood by the parties hereto, that in case a vehicle is
equipped with FROG software and hardware (FrogBox), Licensee shall be
obliged to pay the FROG software fee. In such a case Licensee will not be
obliged to pay the royalty as described in the first sentence of this
section hereof.
10.2. The payments of royalties due by Licensee to Licensor pursuant to section
1 of this Article 10 will be made within 30 (thirty) days from the
beginning of each calendar quarter with respect to the number of vehicles
actually delivered during the previous calendar quarter. Licensee shall
inform Licensor always forthwith in writing of any and all Licensee's
products delivered to end users.
10.3. In the event Licensee fails to make the payments of royalties in
accordance with section 2 of this Article 10 in time, Licensee shall owe
and pay to Licensor an interest of 8% (eight percent) per annum on the
amounts then due.
10.4. The provision laid down in Article 9 section 2 hereof shall apply mutatis
mutandis to the payments of the royalties mentioned in section 1 of this
Article 10.
Article 11 - FROG and SuperFROG Software Fee.
11.1 In addition to the License Fees due by Licensee to Licensor pursuant to
Article 9 hereof, Licensee owes to Licensor a software fee per vehicle
(Licensee's product) per the Licensor's annual price list. Parties to this
agreement acknowledge that this software fee replaces the royalty as agreed
upon by the parties and set forth in Article 10 hereof.
11.2 In addition to the License Fees due by Licensee to Licensor pursuant to
Article 9 hereof, and only if Licensee desires to implement the supervisory
system called SuperFrog, Licensee owes to Licensor a SuperFROG software
License fee, per installed system and/ or site according to Licensor's
annual price list.
Article 12 Reporting and Inspection
12.1. Licensee and Licensor will, if one of the parties will have a reasonable
interest therein, agree upon a procedure that will enable Licensor to
verify statements of account concerning the number of vehicles equipped
with FROG software, sold under this License and/or contents of sublicenses
concluded by the Licensee concerning the Licensee's products and the
administration with respect to any and all items relevant for the
calculations of the License Fees.
12.2. If such procedure is agreed upon by the parties Licensor and its
representatives shall be entitled at any time during normal business hours
to have access to the Licensee's administration referred to in section 1 of
this Article 12 and to examine the statement of account submitted pursuant
to section 1 of this Article 12.
Article 13 - Technical and Commercial Realization
13.1 Licensor undertakes no responsibility for the risks of the technical
realization of the Licensee's products, which are assumed solely by
Licensee. Subject to the transmittal of know-how and the participation of
Licensee's employees in training courses referred to in Articles 4 and 5
hereof, Licensee shall be deemed to fully understand the application of the
invention, Licensors' products and related know-how to the licensed
products and shall undertake its technical realization. Licensors
responsibility is limited to Licensors products, Frog software, Frog
hardware, SuperFrog and all other components supplied by Licensor.
13.2 Licensor does not warrant that the Licensee's products are capable of
commercial exploitation. Licensee shall solely assume the risks of such
exploitation.
Article 14. Merchandising, Trademarks.
14.1. The Licensee undertakes to make reasonable effort to safeguard the
interests of the Licensor in conformity with the best business practice, in
particular: to actively prospect the Licensed territory and to make
reasonable effort to increase the customers for Licensee's products; to
make adequate efforts to advertise and market Licensee's products; to
supply the Licensor with information relating to sales promotion, the
market situation in the Licensed territory and price developments; and to
inform the Licensor on legal provisions and requirements applying to
Licensee's products in the Licensed territory, in particular the legal
provisions which directly or indirectly affect Licensee's products.
Licensee undertakes to report the aforesaid information to Licensor on a
yearly basis in December.
14.2. The Licensee can undertake to fix or have fixed on the Licensee's products
the trademarks FROG and SuperFROG, likewise Licensor grants to Licensee
permission to use the said trademarks for marketing and trading of
Licensee's products and to market the same under its trademarks combined
with Licensor's trademarks. The parties hereto shall determine by mutual
agreement how the provision laid down in this section 2 will be carried out
in practice.
Article 15 - Notices.
15.1 Licensor undertakes to fix or have fixed on the Licensor's products the
notice "(P)" jointly with patent number or patent numbers, followed by the
words: "by FROG Navigation Systems, Utrecht, the Netherlands" as the case
may be in the form of plastic adhesive tape or metal plate having
dimensions of 15 mm x 50 mm at the minimum and 50 mm x 170 mm at the
maximum. In addition Licensee is entitled to fix also its trade marks on
the Licensee's products and to market the same under its trade marks
combined with Licensor's notice as described above.
Article 16. - Improvements
16.1 Subject to section 4 of this Article 16 Licensor agrees to transmit to
Licensee, at no additional expense to Licensee, all improvements developed
and/or acquired by Licensor and/or its affiliates during the term of this
Agreement relating to the Licensor's Products, and as to which Licensor
and/or its affiliates have the right and license to transmit to Licensee,
regardless whether the said improvements are or are not covered by
industrial property rights in the Licensed territory.
16.2. Subject to section 3 of this Article 16, Licensee agrees to transmit to
Licensor, at no expense to Licensor or otherwise agreed by both parties in
writing, all improvements relative to the invention developed and/or
acquired by Licensee during the term of this Agreement relating to the
Licensor's Products, and as to which Licensee has the right and/or license
to transmit to Licensor, together with the right to use and sublicense the
use thereof.
16.3. In the event that Licensee develops an improvement to Licensor's products,
then Licensee shall be entitled to file for, receive, and maintain patents
covering such improvements in or outside the Licensed territory, provided,
however, that Licensor shall be entitled to a license to manufacture, have
manufactured, use, sell, and sub-license such improvement within and
outside the Licensed territory, unless such Licensed territory and the
product to which it is to be applied are exclusive to Licensee, without
payment or compensation to Licensee during the term of this Agreement. In
the event that Licensee elects not to file any patent application covering
any of its improvements in or outside the Licensed territory, Licensee
shall in good time inform Licensor to this effect and licensor shall be
entitled to receive the full and active cooperation of Licensee for the
purpose of applying for, receiving, and maintaining, in its own name and at
its expense, patents covering the improvement in or outside the Licensed
territory, provided, however, that Licensee shall be entitled to the right
and license to use the same in the Licensee's products and to sublicense
the use of the improvement in the Licensed territory under the terms and
conditions of this Agreement, without the payment of any compensation to
Licensor during the term of this Agreement.
16.4. In the event that Licensor develops an improvement, then Licensor shall be
entitled to apply for, receive, and maintain patents, industrial and
intellectual property rights, covering such improvements in or outside the
Licensed territory, provided, however that Licensee shall be entitled to
the rights and license to use the same in the Licensee's products but not
in other products of Licensee, and to sublicense such improvement in the
Licensed territory under the terms and conditions of this Agreement,
without the payment of any compensation to Licensor during the term of this
Agreement.
16.5. In the event of an improvement, whether developed by Licensor or Licensee,
the parties hereto shall by mutual consent decide as to whether such
improvement shall be applied, taking into account the interests of both
Licensor and Licensee and it being understood that such consent shall not
be withheld unreasonably.
Article 17 - Infringement of Third Parties' Patent Rights
17.1. Licensor warrants that the patents have been granted and/or have been
filed for. Licensor undertakes for the benefit of Licensee to protect its
patents by all means and legal remedies available.
17.2. Should any claim be made by a third party against Licensee alleging that
manufacturing, using, marketing or selling of the Licensee's products
because of applying the invention in the Licensee's products infringes a
third parties intellectual or industrial property rights, Licensee shall
immediately notify Licensor in writing giving full particulars of the said
claim. In this event Licensor shall safeguard Licensee against any such
claim by acting as follows:
i. obtaining of a license to the third parties intellectual property
right; or
ii. altering of the invention in such a manner that the alleged
infringement shall be discontinued; or
iii. taking of all legal action to dispute the third parties claim.
17.3 Licensor shall, at its expense, defend and indemnify Licensee and its
officers, directors, agents and employees harmless for damages and
reasonable expenses (including attorney's fees) relating to any suits or
claims by a third party brought against Licensee alleging that the
Invention, Licensor patents and products, FROG and/or SuperFROG computer
software or any other item of intellectual property licensed to Licensee
herein infringes any patent, copyright, trademark, trade secret or similar
right. Licensee shall provide Licensor with a proper notice of any such
suit or claim.
17.4. Licensee is not entitled to make a settlement with respect to the third
party claim for infringements caused by manufacturing and/or selling the
Licensee's products by using the Invention and Licensor's products without
prior approval of Licensor. Licensor will in this case always respect
Licensee's business objectives, as Licensee will also respect Licensors
business objectives.
Article 18 - Protection of Licensor's Intellectual and/or Industrial Property
18.1. Licensor warrants that the Patents acquired on the date of execution of
this Agreement are valid and that to the best of its present knowledge the
aforesaid patents do not infringe the rights of any third party within the
Licensed territory.
18.2. Licensee undertakes to inform Licensor forthwith in writing as soon as it
becomes aware of the nature and scope of any activity of third parties
which may infringe the patents, or which otherwise may detrimentally affect
using, manufacturing, marketing and selling of the Licensee's products by
using the invention in the Licensed territory.
18.3. After having received such information Licensor and Licensee jointly shall
take any and all action against the said third party for the purpose of
preventing or discontinuing such activities as well as any and all action
to the extent required to uphold the patents granted in the Licensed
territory, taking into account the interest of both parties hereto.
Article 19 - Terms of Agreement
19.1. This Agreement enters into force on the effective date.
19.2 This Agreement shall extend for a period time as specified in Exhibit A
attached hereto from the effective date with respect Licensee's Products as
described in Articles 2.1. and 2.2. and will stay valid in case Licensor
has entered into a merger or is taken over by an other company.
19.3. This Agreement may be terminated by the non-defaulting party prior to the
expiration of the term set out in sections 2 and 3 of this Article 19 if
and when any of the following events occur:
i. A substantial breach of this Agreement not cured within 30 (thirty)
days after receipt of written notice thereof by the breaching party
from the aggrieved party; or
ii. Licensee or Licensor enters into bankruptcy, liquidation or
arrangement proceedings, or Licensee or Licensor becomes insolvent as
a result of its inability to pay its debts as they mature after
receipt of notice thereof by the party involved in the aforesaid
matters from the other party.
19.4. Licensor is entitled to terminate this Agreement by informing Licensee by
registered mail at 3 (three) months notice, if:
i. Licensee has entered into a merger involving the activities under this
Agreement and causes serious detriment to Licensor's rights under this
Agreement, or
ii. Licensee does not possess any more the governmental permits required,
if any, for the purpose of manufacturing and/or selling the Licensee's
products in part of the Licensed territory, it being understood that
this Agreement continues to apply to those parts of the Licensed
territory which are not affected by the absence or discontinuance of
the governmental permits required, or
iii. Licensee actively markets the Licensee's products outside its
territory and directly in any area for which Licensor has granted a
license to third parties, unless Licensor has given its prior approval
in writing, or
iv. Licensee has not been able to cure material lack of quality of the
Licensee's products, within a period of one year since Licensor has
exercised its right, as provided for in section 4 subsection ii. of
this Article 19.
19.5. Licensee is entitled to terminate this Agreement by informing Licensor by
registered mail at 3 (three) months notice, if:
i. It is established that a third party possesses rights to licensed
products prevailing over Licensor's rights with respect thereto in the
Licensed territory or part thereof, it being understood that this
termination only holds good for such parts of the Licensed territory
for which the prevailing rights of third parties have been
established; or
ii. Licensee does not possess any more the governmental permits required
for the purpose of manufacturing and/or selling the Licensee's
products in part of the Licensed territory, it being understood that
this Agreement continue to apply to those parts of the Licensed
territory which are not effected by the absence or discontinuance of
the governmental permits required, or
iii. The manufacture and sale of the Licensee's products is no longer
profitable due to change of circumstances of technical and/or economic
nature, it being understood that depending on the attending
circumstances this termination may have a bearing on part of the
Licensed territory only.
19.6. The termination of this Agreement pursuant to sections 4 to 6 inclusive of
this Article 19 does not affect any right or remedy that one party may have
against the other party as to claims for damages that exist immediately
before such termination.
Article 20 - Consequences of Termination
Upon termination of this Agreement:
20.1 i. Upon termination, Licensee shall cease exercising the rights under
Licensor's products and execute such documents, as may be reasonably
necessary for the purpose of evidencing the formal termination of
Licensee's right and license to use the Licensor's products from the
date of termination onwards, provided that Licensee may use such
Licensor's products as are necessary to fulfill obligations of
Licensee existing as of the date of termination, and provided further
that, Licensee may, at its option, return items of Licensor's products
held in inventory and be paid by Licensor an amount equal to
Licensee's costs for such inventory. Licensee's confidentiality
obligations hereunder shall continue in effect in accordance with
Article 8 hereof.
ii. Termination shall not affect the rights of Licensor and Licensee to
any sum due pursuant to articles 9 and 10 hereof until the date of
termination and without prejudice to the provision laid down in
Article 19 section 6 hereof; and
iii. Termination shall not affect the right of Licensee to complete any
contracts which cannot be terminated without liability on the part of
Licensee, or are not severable, or for which a purchase order has been
received prior to the date of termination, provided that Licensee
agrees to pay outstanding sums due and owing to Licensor.
20.2. This Article 20 shall not affect in any manner whatsoever any other
provision laid down in this Agreement, which has a bearing on consequences
of termination hereof.
Article 21 - Force Majeure
21.1 No failure or omission by the parties hereto in performance of any
obligation of this Agreement shall be deemed a breach of this Agreement nor
create any liability if the same shall arise from any cause or causes
beyond the control of the parties. Such causes shall, however, as much as
possible be remedied with all reasonable dispatch.
21.2. The affected party shall inform the other party promptly (but in no case
later than 30 (thirty) days after the occurrence) of the existence of a
force majeure event and neither party shall be responsible to the other for
any damage caused by or incurred through such force majeure event.
Article 22 - Taxes
22.1. All amounts mentioned in this Agreement and its Exhibit are net amounts.
22.2. Direct or indirect taxes payable incurred for the sale of the Licensee's
product shall be for Licensee's account.
22.3. When the laws of the Licensed territory require that tax must be paid by
Licensor, Licensee shall provide assistance to Licensor to enable Licensor
to comply with the obligations and formalities involved.
22.4. All taxes levied in accordance with the tax-laws of the Netherlands or any
other country within the licensed territory on the license-fee to be made
by Licensee to Licensor stipulated in Exhibit A attached hereto shall be
borne by Licensor. When, pursuant to such tax-laws, Licensee is obliged to
withhold such taxes and pay these to tax-authorities on Licensor's behalf,
Licensee is hereby authorized to withhold and deduct such taxes from the
applicable payments to Licensor, provided that Licensee is obliged to
furnish Licensor with any and all tax-receipts or other evidence showing
payment of such taxes.
Article 23 - Governmental Permits
23.1. This Agreement shall become effective on the effective date as set forth
in Exhibit A attached hereto, or if a governmental permit or approval is
required in respect of this Agreement in the country of Licensor and/or
Licensee, on the date, not exceeding a period of time of 3 (three) calendar
months from the effective date, when such permit or approval shall have
been obtained.
23.2. If at any time such governmental permits will be withdrawn or refused
after this Agreement has entered into force this Agreement shall be
terminated only for that part of the Licensed territory to which such
withdrawal or refusal shall apply.
Article 24 - Miscellaneous
24.1. This Agreement is in no way creating a firm or any form of association
between the parties hereto and Licensee acts as an independent merchant in
its own name and for its own account and risk both with regard to Licensor
and its customers.
24.2. The Exhibit A to this Agreement is by this reference included as an
integral part of this Agreement.
24.3. This Agreement is the entire Agreement between the parties hereto with
respect to the matters covered herein and cancels and supersedes any and
all previous agreements, proposals and offers, whether made in writing or
orally.
24.4. This Agreement cannot be modified or amended, except by mutual agreement
in writing between the parties hereto.
24.5. The headings of the articles of this Agreement are for the purpose of
convenience only and have no significance for the interpretation and
implementation of this Agreement.
24.6. Any notice given or to be given under this Agreement shall be sent to the
addresses referred to on the first page of this Agreement, unless a party
has changed its domicile or mail code and has informed the other party of
the said change in writing. Any and all notices shall be sent by fax, telex
or mail and shall be deemed to be given when sent.
24.7. If any provision or article of this Agreement is held to be invalid, void
or unenforceable by a competent court, the remaining provisions and
articles remain in force and shall not be affected in any way whatsoever.
24.8. Waiver by one part of any remedy against any breach of this Agreement
shall not be considered or be construed as a waiver by that party of any
subsequent remedy for breach of contract.
Article 25 - Governing Law & Settlement of Disputes
25.1. The conclusion, interpretation and enforcement of this Agreement shall in
all respects be governed by International laws.
25.2. All disputes arising in connection with this Agreement and further
agreements resulting thereof shall be finally settled under the rules of
Conciliation and Arbitration of the International Chamber of Commerce by
one or more arbitrators in accordance with the said rules. The arbitral
procedure shall be conducted in the English language. The arbitration shall
be held in Charlotte, NC.
IN WITNESS WHEREOF the parties hereto have caused this Agreement to be
executed by their duly authorized representatives in duplicate in Charlotte, on
December 19th, 2003.
/s/ Xxxxx X. xxx Xxxxxxxxxx /s/ Xxxxxx Xxxxxxx
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Licensor Licensee
