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Exhibit 10(c)
TECHNOLOGY LICENSE AGREEMENT
THIS AGREEMENT, effective as of September 2, 1997, by and between Xxxxx
U.S.A., Inc. a Delaware Corporation, having offices at 000 Xxxxx Xxxxx Xxxxx,
Xxxx Xxxxxx, XX 00000 ("Xxxxx") and Angstrom Technologies, Inc. a Delaware
corporation with offices at 0000 Xxxxxxx Xxxxxxxx Xxxx., Xxxxxxxx, XX 00000
("Angstrom").
WHEREAS, Angstrom has developed and is the owner of certain innovative
and proprietary technology in the security filed and;
WHEREAS, Xxxxx is engaged in the business of selling security products
and is interested in licensing Angstrom's technology and;
WHEREAS, Angstrom is willing license Xxxxx on the terms and conditions
hereinafter set forth;
NOW THEREFORE, for and in consideration of the premises and the
respective rights and obligations recited hereinafter, the parties agree as
follows:
When used in this Agreement, the following terms shall have the meaning set
forth below (terms defined in the singular shall have the same meaning when used
in the plural and vice versa).
DEFINITIONS
TECHNOLOGY shall mean technology owned by Angstrom relating to fluorescent inks
and scanners and readers as more particularly set forth in Schedule A, including
Improvements thereto developed during the Term of this Agreement.
TERRITORY shall mean the world.
LICENSED RIGHTS shall mean all patents, copyrights, trade secrets and know how,
relating to the Technology licensed to Xxxxx under this Agreement.
PRODUCT shall mean any products (i.e. documents, business forms) produced using
the fluorescent inks.
IMPROVEMENTS shall mean any improvement, modification or enhancement of the
Technology.
CONTRACT YEAR shall mean each year during the Term commencing on the date of
this Agreement and each anniversary thereof.
TERM shall mean the Initial Term and any additional term as defined in Section
10.
NET SALES shall mean the invoice price for Products after deductions of regular
trade and quantity discounts, but before deduction of any other items including
but not limited to freight allowances, cash discounts, and agents' commission.
1. LICENSE GRANT In consideration of the mutual promises contained herein
including the royalty provisions of Section 4, Angstrom hereby grants to Xxxxx
subject to the terms and conditions of this Agreement. A non-exclusive,
non-transferable, non-assignable license during the Term of this Agreement to
make, use, service and support the Technology and to sell, transfer and
otherwise provide Products utilizing the Technology, throughout the Territory.
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1.1 Prior to granting an exclusive license to the Technology or under the
Licensed Rights, Angstrom agrees to promptly notify Xxxxx, and Xxxxx shall have
the option of acquiring the exclusive license to the Technology and Licensed
Rights and will communicate its intent to Angstrom within thirty (30) days after
notice.
2. IMPROVEMENTS Angstrom agrees to promptly notify and fully disclose to Xxxxx
any Improvements to the Technology of which it becomes aware and to offer to
include such Improvements in the Licensed Rights.
3. TECHNOLOGY/DOCUMENTATION
3.1 TRAINING/SUPPORT Upon request, Angstrom agrees to provide sales and
marketing training, support and assistance to Xxxxx during the Term at a
mutually acceptable facility, in a manner calculated to enable the professional
use of the Technology. Angstrom will make available to Xxxxx telephone and
facsimile support.
3.2 TECHNICAL PUBLICATIONS Angstrom will provide Xxxxx with a reasonable supply
of supporting material including but not limited to technical publications,
technical documentation, instructional materials and other associated text and
date for the Technology that Angstrom deems necessary or advisable to facilitate
the use of the Technology.
4. ROYALTY Xxxxx agrees to pay Angstrom for the license granted herein a
continuing royalty as set forth below:
Percent Amount of Sales
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6% $0-$3,000,000
5% $3,000,001-$10,000,000
4% $10,000,001-$35,000,000
3% $35,000,001+
Calculation for royalty payments will be made according to each Contract Year.
5. PAYMENTS Xxxxx shall make the payments of royalties required hereunder within
sixty (60) days following the expiration of each calendar quarter (i.e. within
thirty days of March 31, June 30, September 30 and December 31) each year, and
shall accompany each such payment with a report stating the volume of Products
sold in the preceding quarter and showing the calculation of royalties payable.
6. U.S. DOLLARS All payments hereunder by Xxxxx shall be made in United States
dollars by company check.
7. REVENUES The use, sale, provision or transfer of the Products shall be
recorded for purposes of royalty payment in the calendar quarter in which they
occur. A credit will be given to Xxxxx in the amount of royalties paid to
Angstrom on Products accepted for return by Xxxxx.
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8. RECORDS/AUDIT Xxxxx agrees to keep accurate records, for two (2) years from
the date of entry, showing the total volume of Products sold under this
Agreement in such detail as to enable the amounts payable hereunder to be
determined. Xxxxx agrees to permit its books and records to be examined from
time to time to the extent necessary to verify the written reports provided
herein; such examination may be made by an accountant designated by Xxxxx and
upon written notice given thirty (30) days in advance. Such examination maybe
done no more than twice annually. Such an examination will be at Angstroms'
expense, except that if a discrepancy of more than ten percent (10%) is found
between the amount actually due and that reported by Angstrom, then the
examination will be at Xxxxx'x expense.
9. NOTICE The parties respective addresses for notices or reports under this
Agreement shall be the addresses set forth at the head of this Agreement. In the
future, either party hereto may request, in writing, to the other to direct
notices, reports or other communications to specific persons and/or addresses
other than those set forth above.
10. TERM AND TERMINATION
10.1 TERM Unless terminated sooner or otherwise varied pursuant to the terms and
conditions of this Agreement, this Agreement shall continue for a period of five
(5) years from the date set forth above ("Initial Term") and shall thereafter
automatically renew for additional three (3) year terms, unless either party
provides the other with written notice of its intent not to renew the Agreement
at least ninety (90) days prior to the end of the Initial Term or any such
additional Term.
10.2 TERMINATION This Agreement may be terminated by either party upon thirty
(30) days written notice, if a party hereto (i) breaches any term or condition
of this Agreement and fails to remedy the breach within thirty (30) days after
being given notice thereof, (ii) becomes the subject to any voluntary or
involuntary bankruptcy or insolvency proceeding or (iii) cease to be actively
engaged in business.
10.3 CONTINUATION OF USE AFTER TERMINATION In the event that this Agreement is
terminated, then upon request of Xxxxx, the parties shall enter into good faith
negotiations to agree upon reasonable terms and conditions, including reasonable
compensation to Angstrom, to enable Xxxxx to continue using Technology.
10.4 CONTINUANCE OF OBLIGATIONS All the rights and obligations of the parties
hereto shall remain in effect throughout the Term of this Agreement, and it is
understood and agreed that the cancellation, expiration or other termination of
this Agreement shall not relieve any party hereto of any obligation hereunder
which shall have accrued prior to such cancellation, expiration or other
termination.
10.5 REMEDIES The parties hereto agree that each shall be entitled to all
remedies available at law or in equity for the breach of this Agreement,
including the remedies of specific performance and injunctive relief. Failure of
any party to execute such rights shall not constitute or be construed as a
waiver of any such rights.
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11. CONFIDENTIALITY Xxxxx and Angstrom are parties to a confidentiality
agreement dated October 10, 1996 the terms and conditions of which shall govern
future disclosures.
12. INDEMNITY Angstrom shall indemnify and hold Xxxxx harmless from and against
any and all liabilities, costs, damages, and expenses (including reasonable
attorneys' fees) incurred by Angstrom in responding to or defending any demand,
assessment, action, cause of action, suit, claim (including infringement claim),
or investigation resulting from or relating to the fact that a Product infringes
on any patent or copyright of a third party; provided, however, this paragraph
shall not apply if such infringement is caused in whole or in part, by any
changes or modifications made to Angstrom's Technology by Xxxxx or the
combination by Xxxxx of any Technology with other technology components where
the Technology alone would not be infringing. Angstrom's obligation to indemnify
Xxxxx shall be conditioned on Xxxxx giving prompt notice of any such claim and
all information and assistance reasonably required by Angstrom to defend against
such claim. Angstrom shall have the right to assume full responsibility for the
defense and to approve in advance, any settlement of such claim.
(a) In the event that a Product is determined to be infringing,
Angstrom's sole responsibility to Xxxxx, in addition to any indemnification
obligation, and at Xxxxx'x option shall be to (1) obtain for Xxxxx the right to
use the infringing Product, (2) replace the infringing Product with a
non-infringing alternative, or (3) modify the infringing Product so that it
becomes non-infringing.
13. LIABILITY IN NO EVENT, WILL EITHER PARTY HAVE ANY LIABILITY FOR ANY
SPECIAL, INDIRECT, OR CONSEQUENTIAL DAMAGES INCLUDING, WITHOUT LIMITATION,
DAMAGES FOR LOST PROFITS, LOSS OF DATA OR COSTS OF PROCUREMENT OF SUBSTITUTE
GOODS OR SERVICES, ARISING IN ANY WAY OUT OF THIS AGREEMENT UNDER ANY CAUSE OF
ACTION, WHETHER OR NOT A PARTY HERETO HAS BEEN ADVISED OF THE POSSIBILITY OF
SUCH DAMAGES. THESE LIMITATIONS WILL APPLY NOTWITHSTANDING THE FAILURE OF THE
ESSENTIAL PURPOSE OF ANY LIMITED REMEDY.
14. FORCE MAJEURE Neither party shall be liable to the other for any default
hereunder if such default is caused by an event beyond the non-performing
party's control, including without limitation acts or failures to act, strikes
or labor disputes, component shortages, unavailability of transportation,
floods, fires, governmental requirements and acts of God (a "Force Majeure
Event"); provided however, that a Force Majeure Event shall not operate to
excuse Angstrom's failure to make any payment required hereunder when due. In
the event of threatened or actual non-performance as a result of any of a Force
Majeure Event, the non-performing party will exercise commercially reasonable
efforts to avoid and cure such non-performance. Provided however, that a Force
Majeure Event shall not operate to excuse Xxxxx'x or Angstrom's obligation to
make any payment or provide any credit which may be due.
15. COMPLIANCE
15.1 MARKINGS Xxxxx will make the Products in accordance with written
instructions received from Angstrom.
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15.2 HEALTH, SAFETY AND ENVIRONMENTAL STANDARDS Angstrom represents and warrants
that the manufacture and use of the Products does not violate any applicable
health, safety or environmental standards and requirements, and Angstrom
covenants for Xxxxx'x benefit and for the benefit of Xxxxx'x agents, employees
and controlling persons that it will comply with all such standards and
requirements.
16. RELATIONSHIP The relationship between the parties created hereunder is that
of licensor and Angstrom only and not, a partnership, joint venture or any other
relationship. Each party is acting as an independent contractor.
17. ENTIRE AGREEMENT This is the entire Agreement between the parties and
supersedes all other agreements, discussions, understandings and communications
between the parties relating to the subject matter hereof. This Agreement shall
not be modified or altered except by written instrument duly executed by both
parties. If any provision of this Agreement shall be held to be invalid, illegal
or unenforceable, the validity, legality and enforceability of the remaining
provisions shall in no way be affected or impaired thereby.
18. ASSIGNMENT All rights and obligations provided herein shall be binding upon
and inure to the benefit of the parties hereto, their assigns acquiring all or
substantially all of the business of the parties comprising the subject matter
of this license, trustees in bankruptcy or receivers.
19. LAWS This Agreement will be governed by the laws of the State of Illinois,
excluding its conflict of laws provisions and the parties agree to the In
Personam jurisdiction and exclusive subject matter jurisdiction of the courts
situated in Illinois in regard to any claim arising under this Agreement.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
executed by their duly authorized Officers.
Xxxxx U.S.A., Inc. Angstrom Technologies, Inc.
By: /s/ Xxxxxxx X. Xxxxxxx By: /s/ Xxxxxx X. Xxxxxxxxx
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Name: Xxxxxxx X. Xxxxxxx Name: Xxxxxx X. Xxxxxxxxx
Title: V.P. Product Management & Title: President & CEO
Development
Xxxxx Document Solutions
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