Exhibit 10(z)(3)
NXT GENERAL LICENSE
BETWEEN
1. New Transducers Limited a company incorporated in England under No: 3135528
and having its registered office at 00 Xxxxxxx Xxxxx, Xxxxxx XX0 0XX,
Xxxxxxx ("NXT"); and
2. NCT Group, Inc. a corporation incorporated under the laws of Delaware, USA
and having its principal office at 00 Xxxxxxx Xxxxxx, Xxxxxxxx, Xxxxxxxxxxx
00000 XXX (the "Licensee")
WHEREAS
A. NXT has a broad spectrum of patents, trade marks and other intellectual
property rights concerning panel loudspeakers and other wide ranging
applications, and has rights to sublicense in specific fields the related
technologies of the British Defence Evaluation k Research Agency and the
US-based Sound Advance Systems, Inc.
B. NXT has taken comprehensive measures to protect its intellectual property
worldwide, and both the technology and trademarks of NXT have acquired
valuable goodwill and reputation.
C. In order to protect such goodwill and reputation and to provide optimal
technical solutions for end users, NXT needs to ensure that its
intellectual property is used only by those who have appropriate licenses
and technical expertise.
D. NXT is prepared to make available to the Licensee certain of its
intellectual property rights, know how and trade marks as specified in this
Agreement, and to offer ongoing technical, design and marketing support on
mutually and separately agreed terms and conditions
E. The licensee intends to exploit the commercial potential of NXT's
intellectual property and therefore wishes to enter into this NXT General
License.
NOW IT IS AGREED AS FOLLOWS:
DEFINITIONS
"Agreement" This NXT General License, the Blue Book and the White Book.
"Blue Book" 8. "White Book" The publications (whether in print or on
electronic media) produced and amended from time to time by NXT which include
(a) in the case of the Blue Book, the trade marks licensed under this Agreement,
the manner in which such marks may be used, intellectual property notices,
quality control and other relevant information and requirements, and (b) in the
case of the White Book, the patents and/or patent applications which are
licensed under this Agreement.
"Commencement Date" The date of this Agreement which is the date on which
it is duly signed for and on behalf of NXT.
"Field(s) of Use" All fields of use, subject to the limitations and
restrictions set out in the White Book,
"IPR" All rights identified in; a) the White Book; and b) the Blue Book
together with: c) the Know How; and d) the Software,
"Know How" Any confidential information, advice, description and other
technical data (whether written, oral (and subsequently confirmed in writing) or
in any other form) which is supplied by NXT, its agents or representatives to
the Licensee at any time prior to or during the term of this Agreement except to
the extent that such material:
a) is in the public domain (otherwise than by the unauthorized disclosure
of the Licensee); or
b) is already known by the Licensee (with the Licensee to bear the burden
of proof in such circumstances); or
c) is disclosed to the Licensee by a third party (other than NXT's agents
or representatives and disclosures by an unauthorized third party).
"Licensed Product(s)" Licensed Loudspeakers, together with such Other
Licensed Products as may be negotiated and agreed by the parties.
a) "Licensed Loudspeaker(s)" means anything which with the use of an
appropriate signal is capable of producing or reproducing sound and
which, or any part of which, incorporates, uses or is subject to any
of the IPR.
b) "Other Licensed Product(s)" means anything which incorporates, uses or
is subject to any of the IPR and is not a Licensed Loudspeaker,
"Licensed Subsidiary(ies)" Such subsidiaries of the Licensee as are listed
in Schedule 1 (or are subsequently added with NXT's prior written consent) and
which, by signing Schedule 1, have agreed to be bound by the terms and
conditions of this Agreement. A subsidiary shall automatically cease to be a
Licensed Subsidiary upon it ceasing to be a subsidiary of the Licensee.
"Licensee's Marks" Any of the following brand names of the Licensee;
1. 2.
3. 4.
5. 6.
7. 8.
9. 10.
(together with such other brand names as are proposed by the Licensee and
agreed in writing by NXT) so long, in each case, as the Licensee retains
its existing legal interest in and control of such brand names.
"Net Sales Revenue" the revenues received from the sale e by the Licensee
of the Licensed Products less:
(a) costs of packing, transportation and insurance;
(b) sales, value added and other taxes not based on income;
(c) ordinary trade discounts and commissions;
(d) customs duties and expenses; and
(e) royalties payable to third parties.
In the event of sales of Licensed Products by the Licensee other than to a
third party in a commercial arm's length transaction, the Net Sales Revenue
shall be the amount which would have been charged by the Licensee in a
commercial arm's length transaction.
"NXT Licensee(s)" Any third party who has the right under a license
agreement with NXT to use the IPR to design, develop, manufacture, assemble,
fit, distribute, market or sell Licensed Products in its fields of use.
"NXT Master Licensee" A party which has entered into a license agreement in
the same terms (or substantially the same terms) as this Agreement.
"Royalty Rate"
(a) the greater of 2% of Net Sales Revenue or US $0.10, in respect of each
Licensed Product which is manufactured, assembled, supplied or sold as
a finished product destined for sale to end users; or
(b) US $0.92 per electrodynamic transducer and US $0.74 per piezoelectric
transducer, in respect of each Licensed Product which is manufactured,
assembled, supplied or sold as a product adapted or destined for
incorporation into products of third parties. However, where NXT
agrees royalty rates with other NXT Master Licensees which are lower
than the rates specified in this paragraph (ii) (the "Third Party
Rate"), then the Royalty Rate payable by the Licensee shall be reduced
to the Third Party Rate less 8% (the "New Royalty Rate"). The New
Royalty Rate shall be payable by the Licensee with effect from the
quarter day immediately following notification of the New Royalty Rate
by NXT. Further, in order to take into account market conditions, the
parties may need to renegotiate separate Royalty Rates for Licensed
Products for the different Fields of Use provided that the concept of
the New Royalty Rate shall continue to apply to such renegotiated
rates.
"sale" (Including "sales", "sell", "sold" etc.) sale or any other disposal
whether for value or not including lease, hire or any other transaction which
transfers ownership or possession to any third party (including, for the
avoidance of doubt, Licensed Subsidiaries and other NXT Licensees) but excluding
sales where full credit has been given for the return of an item.
"Software" The software suite ("NXT Designer") supplied by NXT, including
programmes such as the panel design algorithm ("Panda") and the panel simulation
software ("Pass"), together with any other proprietary software supplied by NXT
to the Licensee from time to time.
"subsidiary" A company is a "subsidiary" of another company if that other
company:
a) holds the majority of the voting rights in it; or b) is a member of it
and has the right to appoint or remove a majority of its board of
directors; or c) is a member of it and controls alone, pursuant to an
agreement with other shareholders or members, a majority of the voting
rights in it.
2. GRANT
2.1 In consideration for the payments payable under this Agreement and subject
to all the terms and conditions of this Agreement, NXT grants to the
Licensee and its Licensed Subsidiaries a worldwide, non-exclusive,
non-assignable license to use the IPR to design, develop, manufacture,
assemble, fit, distribute, market, sell and use Licensed Products in and
for the Field of Use. The Licensee and its Licensed Subsidiaries shall not
sub-license the rights granted under this clause and, other than as
provided in clause 2.4, shall not permit sub-contractors to use such
rights. The Licensee shall immediately notify NXT upon a Licensed
Subsidiary ceasing to be a subsidiary of the Licensee.
2.2 Each of the Licensed Subsidiaries agrees to be bound by all the terms and
conditions of this Agreement (including all limitations and exclusions) as
though it were the Licensee, and the Licensee shall procure that each
Licensed Subsidiary will comply with all such terms and conditions. The
Licensee shall fully and promptly indemnify and hold harmless NXT against
all damage, loss, expenses and costs (including legal costs) arising out
of:
a) any failure by its Licensed Subsidiaries to comply with the terms and
conditions of this Agreement; and
b) any activities or threatened activities of its Licensed Subsidiaries
(whether such activities or threatened activities are authorized by
the Licensee or not) which are inconsistent with the terms and
conditions of this Agreement.
2.3 In order to maintain the reputation which NXT holds in respect of the IPR,
including the NXT brand, and also to ensure that other parties using the
IPR have the appropriate technical expertise, NXT must ensure that only NXT
Licensees or their authorized sub-contractors may design, develop,
manufacture, assemble and fit Licensed Products. Thus the Licensee may only
sell Licensed Products as follows:
a) any Licensed Loudspeaker which is ready for sale in its final form and
packaging, bears the Licensee's Marks and is not destined to form an
integral part of another product, may be sold to any third party;
b) any other Licensed Loudspeaker, including any sold on an OEM basis for
resale under the purchaser's own brands, may be sold only to NXT
Licensees (and, where appropriate, NXT will offer royalty-free user
licenses to third parties wishing to purchase such Licensed
Loudspeakers);
c) Other Licensed Products may only be sold subject to further agreement
between the parties.
2.4 Without relieving the Licensee of any of its obligations under this
Agreement, the Licensee may sub-contract the design, development,
manufacture, assembly and fitting of Licensed Products to a third party
provided that:
a) such sub-contractor is of good standing and repute;
b) the Licensee gives prior written notice to NXT of the identity of such
sub-contractor and the address of the place of design, development,
manufacture, assembly and fitting; and
c) the Licensee has a separate written agreement with the sub-contractor
which expressly prohibits the sub- contractor from supplying Licensed
Products produced for the Licensee to any other party.
The Licensee shall fully and promptly indemnify and hold harmless NXT
against all damage, loss, expenses and costs (including legal costs)
arising out of any activities or threatened activities of its
sub-contractors (whether such activities or threatened activities are
authorized by the Licensee or not) which are inconsistent with the terms
and conditions of this Agreement.
3. ROYALTIES AND PAYMENTS
3.2 The Licensee shall pay royalties to NXT in respect of all sales of Licensed
Products by the Licensee and its Licensed Subsidiaries. For administrative
convenience NXT may accept payment of royalties direct from Licensed
Subsidiaries, but this shall not in any way relieve the Licensee of its
obligations to ensure that all royalty payments are made in accordance the
terms of this Agreement. If the Licensee fails to pay in whole or in part
any royalties as required by this clause 3, then each Licensed Subsidiary
shall be jointly and severally liable with the Licensee to pay direct to
NXT in accordance with all the provisions of this clause 3 all outstanding
and subsequent royalties on sales of Licensed Products by the Licensed
Subsidiary.
3.3 The amount of royalty payable in respect of each Licensed Product sold by
the Licensee or its Licensed Subsidiaries shall be calculated by reference
to the Royalty Rate.
3.4 NXT at its sole discretion may apply a discount to the above rates
depending on the annual sales volumes of the Licensee and its Licensed
Subsidiaries and the Fields of Use. Any such discount shall be subject to
additional conditions and in any event is subject to annual review by NXT
in the light of the Licensee's performance.
3.5 No royalty shall be payable by the Licensee on the sale of any Licensed
Loudspeaker which has been purchased from another NXT Licensee and on which
royalty has already been paid to NXT.
3.6 If the parties agree to include any Other Licensed Products within this
Agreement then the royalty and other special terms applicable to such Other
Licensed Products shall be as negotiated and agreed in writing between the
parties.
3.7 With effect from January 1, 1999 the royalty rates applicable under this
Agreement shall be adjusted annually by any increase in the US Consumer
Price Index (or its generally recognized successor) over the immediately
preceding calendar year and rounded down to the nearest cent.
3.8 The royalties payable to NXT shall be calculated on the first day of
January, April, July and October of each year and shall account for all
sales of Licensed Products made prior to that date but not included in any
previous royalty calculation.
3.9 The Licensee shall pay the royalties to NXT within one month of the date
referred to in clause 3.8, and at the same time provide NXT with a true and
accurate written statement of:
a) the number and type of Licensed Products (together with the number,
type and power rating of the actuators that they contain) sold by the
Licensee and its Licensed Subsidiaries during that quarter (or at any
earlier time if not included in a previous royalty calculation),
together with the identity of those purchasers who are NXT Licensees;
b) how the royalty has been calculated;
c) where applicable, the number and type of Licensed Products purchased
by the Licensee and its Licensed Subsidiaries during that quarter
together with the identity of the suppliers; and
d) such other details as NXT may require from time to time to ensure
compliance with the provisions of this Agreement.
3.10 The Licensee shall pay all sums due under this Agreement in United States
Dollars in immediately available funds to such account as NXT shall
nominate in writing from time to time.
3.11 The Licensee shall pay to NXT interest on all overdue sums at the rate of
5% per annum over US Prime.
3.12 All sums payable under this Agreement are exclusive of Value Added Tax,
consumption tax or other sales tax which shall where applicable be payable
by the Licensee in addition.
3.13 All sums payable by the Licensee under this Agreement shall be paid in full
without any set off or counterclaim and without deduction or withholding on
any ground whatsoever save as may be required by law. If any such deduction
or withholding is required by law in respect of any sum payable, then the
Licensee shall be obliged to pay NXT such grossed up sum as ensures that
NXT receives the full value of the sums payable under this Agreement. To
the extent that NXT receives tax credit in the United Kingdom in respect of
the grossed up sums then the Licensee shall be entitled to deduct the value
of this credit from subsequent payments to NXT under this Agreement. For
this purpose, no credit shall be regarded as having been received by NXT
unless it shall have relieved NXT of an obligation to pay tax.
3.14 The Licensee shall keep detailed, true and accurate books of account with
regard to all royalty statements and all sales and purchases of Licensed
Products. NXT or its appointed representatives may inspect on five days'
notice such of the Licensee's records as may be necessary to verify the
accuracy of the books of account, the royalty statements and the payments
due under this Agreement. NXT shall pay the fees of its appointed
representatives in performing such verification. If the verification
reveals an underpayment, a correcting payment together with the applicable
interest shall be made by the Licensee within 30 days of notification.
4. OBLIGATIONS OF NXT
4.1 NXT shall:
a) provide or arrange, free of charge, an initial technical training
session at such time and place and for such duration as may be
mutually agreed by the parties.
b) provide or arrange further or on-going training and/or technical
support at such time and place and for such duration and cost as may
be mutually agreed by the parties (with any intellectual property
rights created or generated through such support being owned
exclusively by NXT);
c) if required by the Licensee, and on terms to be mutually agreed, NXT
shall offer a product design service for products incorporating the
IPR (with any intellectual property rights created or generated
through such design service being owned exclusively by NXT);
d) evaluate any samples sent to NXT pursuant to clause 6.2 in a timely
manner and NXT shall where possible, and if requested by the Licensee,
recommend technical solutions to enable the Licensed Products to meet
the required standards;
e) take commercially reasonable steps to publicize the NXT brand,
prosecute and maintain the IPR and restrain acts of infringement of
the IPR by third parties; and
f) keep the Licensee generally informed of developments at NXT.
5. INTELLECTUAL PROPERTY
5.1 This Agreement licenses a package of rights including patents, know how and
trade marks on a worldwide basis. Accordingly the Licensee acknowledges
NXT's right to receive royalties for the full period during which the
Licensee continues to design, develop, manufacture, assemble, fit,
distribute, market, sell or use the Licensed Products under this Agreement,
notwithstanding that within some countries patents and/or trade marks may
expire, may fail to proceed to grant or may not be applied for. The
Licensee acknowledges that the obligations and restrictions in this
Agreement are reasonable, particularly in view of the Licensee's right
under clause 10.2 to terminate this Agreement at any time.
5.2 NXT shall not withdraw from the White Book any patents licensed to the
Licensee under this Agreement which NXT has not abandoned, and which NXT is
legally entitled to continue licensing to the Licensee. Any rights granted
under this Agreement in relation to any IPR licensed by a third party to
NXT shall automatically terminate upon termination of such third party
license to NXT.
5.3 Other than the rights expressly granted under this Agreement, the Licensee
acknowledges that it shall not acquire or hold any rights in respect of the
IPR, which shall at all times belong to NXT and/or NXT's licensors. The
Licensee also acknowledges that any goodwill resulting from its use of the
licensed trademarks shall accrue to the benefit of NXT and, at the request
of NXT, the Licensee shall promptly execute a confirmatory assignment of
such rights to NXT.
5.4 At the request of NXT, the Licensee shall provide all reasonable
information and assistance to enable any of the IPR to be registered or
maintained with any appropriate body. The Licensee shall also assist NXT in
any public registration of this Agreement and authorizes NXT to cancel any
such registration upon termination of this Agreement. NXT shall reimburse
any reasonable out-of-pocket expenses of the Licensee in relation to its
obligations under this clause 5.4.
5.5 If during the term of this Agreement the Licensee makes or acquires any
addition, development, improvement, modification or adaptation of any of
the IPR which is to be the subject of a patent application ("Improvement")
then, as soon as practicable and prior to the filing of such an
application, the Licensee shall give NXT full written particulars of such
Improvement. NXT may only use such disclosure for evaluating whether there
is any infringement of the IPR and whether NXT wishes to obtain a license
for such Improvement. If requested by NXT, the Licensee shall grant to NXT
a non-exclusive license to use and sub-license such Improvement on terms
and conditions to be separately negotiated in good faith and mutually
agreed between the parties.
5.6 The Licensee shall not use or register any name, word or device identical
or similar to the trade marks identified in the Blue Book as part of a
corporate, business, trading or Internet name, or apply to register
anywhere in the world any xxxx identical or similar to the trade marks
identified in the Blue Book in respect of any goods or services.
5.7 The Licensee shall not do or say anything which is detrimental to or
otherwise diminishes the reputation or goodwill of NXT, nor assist any
third party to do the same.
6. QUALITY CONTROL AND MARKING
6.1 The Licensee shall comply with the contents and directions of the latest
versions of the White Book and the Blue Book. The Licensee acknowledges
that a failure to comply with the marking requirements will result in the
distribution, marketing, sale or use (as the case may be) of unlicensed
products and will constitute both a material breach of this Agreement and
an infringement of the IPR.
6.2 The Licensee shall not demonstrate, distribute or sell any Licensed
Products until a sample thereof(together with associated promotional and/or
packaging material) has been approved in writing by NXT as meeting the
requirements of the Blue Book and the White Book, and standards of quality
acceptable to NXT. Such approval shall not be unreasonably withheld and
shall not affect the provisions of clause 7.2.
6.3 The Licensee shall ensure that all Licensed Products (including their
promotional and/or packaging material) will substantially correspond with
the relevant sample approved and retained by NXT. NXT may from time to time
inspect the Licensee's manufacturing facilities and samples of Licensed
Products.
6.4 The Licensee shall ensure that each Licensed Product shall comply at all
times with all applicable laws and regulations of governmental or other
competent authorities in the countries of origin and destination.
7. WARRANTIES AND LIABILITY
7.1 NXT warrants that it is the owner or licensee of the IPR and that it has
the right and power to grant the license in this Agreement.
7.2 Subject to clause 7. l:
a) NXT does not warrant that what is licensed under this Agreement is
useful, of merchantable or satisfactory quality or fit for any purpose
or is in any good commercial form, or will not give rise to a claim or
action by a third party against the Licensee for infringement of any
intellectual property right. NXT also excludes all warranties as to
the accuracy of the Know How and the validity and enforceability of
the IPR;
b) NXT shall not be liable to the Licensee for any injury, loss or damage
of any kind sustained or incurred by the Licensee or by any third
party arising from or in connection with the design, development,
manufacture, assembly, fitting, distribution, marketing, sale, supply
or use of any Licensed Product;
c) the Licensee shall fully and promptly indemnify and hold harmless NXT
against all liabilities, claims, damages, losses, expenses and costs
arising out of the design, development, manufacture, assembly,
fitting, distribution, marketing, sale, supply and use of Licensed
Products by the Licensee or its customers or otherwise arising out of
the use of the IPR by the Licensee.
7.3 Nothing in clause 7.2 shall exclude, restrict or modify any condition or
warranty implied by law where to do so would render such clause void or
unenforceable.
8. INFRINGEMENT
8.1 The Licensee shall promptly report to NXT any infringement or threatened
infringement or unauthorized disclosure or use of the IPR which comes to
its attention, giving full particulars of all information available to the
Licensee in respect of such infringement, disclosure or use.
8.2 At NXT's request, the Licensee shall promptly provide all reasonable
information and assistance in respect of potential or actual proceedings
concerning the IPR including, without limitation, the giving of written and
oral evidence by the relevant employees and officers of the Licensee. NXT
will reimburse any reasonable expenses of the Licensee in relation to its
obligations under this clause 8.2.
8.3 The Licensee shall have no right to bring proceedings or counterclaims
against third parties in respect of the IPR and shall not make any
admissions in respect of the IPR without the written consent of NXT.
8.4 If a third party makes or brings a claim, action or demand against the
Licensee which arises from the use of the IPR (an "IP Action"), then the
Licensee shall:
a) immediately give NXT full written details;
b) allow NXT immediate and sole control over the defense and all
negotiations for a settlement or compromise of the IP Action;
c) cooperate fully with NXT in the defense and all negotiations for a
settlement or compromise of the IP Action and, at the request of NXT,
provide all information and assistance including, without limitation,
the giving of written and oral evidence by its relevant officers,
employees and agents; and
d) immediately comply with any direction of NXT to modify the Licensed
Products and/or cease the activities which are the subject of the IP
Action.
Conditional upon the Licensee complying with the provisions of (a) to (d) above,
NXT shall promptly indemnify the Licensee against any final award for actual
damages assessed by a court of competent jurisdiction in an IP Action
(excluding, without limitation, any award for increased, punitive, penal or
similar damages and any legal costs) in respect of the period commencing 14 days
after the date of notification under (a) above.
8.5 Clause 8.4 does not affect the provisions of clause 7.2(a) and states and
limits the liability of NXT to the Licensee with regard to any IP Action.
Accordingly, but subject to clause 8.4, NXT shall not be liable to the
Licensee for any injury, loss or damage of any kind howsoever sustained or
incurred by the Licensee arising from or caused by an IP Action or
consequences thereof (including, without limitation, loss or damage caused
by business interruption or any other indirect or consequential loss or
damage). Nothing in this clause shall exclude, restrict or modify any
condition or warranty implied by law where to do so would render this
clause 8.5 void or unenforceable.
9. CONFIDENTIALITY
9.1 The Licensee agrees for itself, its officers, employees and agents that it
will not at any time use the Know How for any purpose other than as
expressly permitted by the terms and conditions of this Agreement and that
it will keep such Know How confidential at all times. The Licensee may only
disclose the Know How to:
a) such of its officers and employees as are bound by an obligation of
confidence and who need the Know How to enable the Licensee to
exercise its rights fully under this Agreement; and
b) sub-contractors (authorized pursuant to clause 2.4) to the extent that
this is necessary to enable the sub- contracting to be carried out.
9.2 Each party agrees for itself, its officers, employees and agents that it
will keep confidential at all times all commercial, financial and product
information relating to the other party, but excluding such information as
is published or otherwise in the public domain other than by any
unauthorized disclosure. Such information may only be disclosed:
a) to such of its officers, employees, agents and professional advisers
as are bound by an obligation of confidence and who need such
information for the purposes of carrying out their duties; or
b) to the extent that such disclosure is required by law or any
regulatory body.
9.3 For the avoidance of doubt, NXT shall not be bound by any duty of
confidentiality or non-disclosure in respect of any technical information
or data which is disclosed to NXT by the Licensee unless such disclosure is
made in compliance with an express obligation under this Agreement or a
separate obligation is expressly accepted in writing by NXT prior to such
disclosure.
9.4 Any press release which the Licensee intends to issue and which refers to
NXT or the IPR must be submitted to NXT for prior written approval (not to
be unreasonably withheld or delayed).
9.5 The provisions of clauses 9.1 to 9.3 shall survive termination of this
Agreement.
10. COMMENCEMENT, DURATION AND TERMINATION
10.1 This Agreement shall come into effect on the Commencement Date and shall
continue until terminated in accordance with its terms. If any governmental
or other approval of this Agreement is required, then the Licensee shall
use reasonable endeavours to secure such approval and the Commencement Date
shall be the date of such approval. If such approval is not obtained within
one year of the date of NXT signing this Agreement then this Agreement
shall automatically cease to be of any further effect.
10.2 The Licensee may terminate this Agreement at any time and without cause by
giving 30 days' written notice to NXT.
10.3 NXT may terminate this Agreement by giving 30 days' written notice to the
Licensee only if:
a) the Licensee commits any breach of this Agreement which either cannot
be remedied or, if capable of remedy, is not remedied within a period
of 30 days after notification, or if the Licensee commits a material
breach of the same term of this Agreement (whether capable of remedy
or not) on more than one occasion; or
b) the Licensee challenges or assists others to challenge the validity,
subsistence or scope of the IPR or NXT's ownership of or entitlement
to use and license the IPR.
10.4 This Agreement shall automatically terminate if the Licensee becomes
insolvent, is adjudicated bankrupt or compounds with or makes any
arrangement with or makes any general assignment for the benefit of its
creditors or enters into liquidation, whether compulsory or voluntary
(except for the purposes of bona fide reconstruction or amalgamation) or
has a receiver, administrative receiver or administrator (or equivalent
under the relevant local insolvency or bankruptcy law) appointed over the
whole or any part or its undertaking or assets or a similar occurrence
under any jurisdiction affects the Licensee, or if the Licensee ceases or
threatens to cease its business or if there is a change of control of the
Licensee, meaning any transaction that gives effective control of the
Licensee to a third party.
10.5 Unless terminated sooner in accordance with any other provision of this
Agreement, this Agreement and the License granted herein shall terminate
upon the expiry (whether by the passing of time or revocation) of the last
to expire of the patent rights identified in the White Book as at the
Commencement Date.
1l. RIGHTS AFTER TERMINATION
11.1 Upon termination of this Agreement howsoever arising: a) the license
granted under clause 2.1 shall terminate forthwith; b) all monies due under
this Agreement shall be paid forthwith; and c) the Licensee shall promptly
arrange for the destruction on oath or, at the option of NXT, the return to
NXT of all copies of the White Book, the Blue Book and all other documents
or media on which the Know How or Software is contained, incorporated or
stored which are within the custody, power, possession or control of the
Licensee or its sub-contractors.
l1.2 Notwithstanding termination of the license granted under clause 2.1, for a
period of six months following the termination and subject to all the terms
and conditions of this Agreement, the Licensee may:
a) continue to use the IPR to fulfill any order received prior to
termination of this Agreement; and
b) effect sales of Licensed Products which are held in stock at the time
of termination or which are manufactured subsequently under clause I
l.2(a).
11.3 The termination of this Agreement howsoever arising shall not relieve
either of the parties of any obligation to the other arising prior to
termination.
12. MISCELLANEOUS
12.1 The Licensee shall not sub-license, assign, transfer, mortgage, charge or
otherwise howsoever part with its rights, duties or obligations under this
Agreement without the previous written consent of NXT. NXT may assign the
benefit and burden of this Agreement together with its rights in and to the
IPR.
12.2 If any provision of this Agreement is determined to be illegal or
unenforceable by any court of law or any competent governmental or other
authority, the remaining provisions shall be severable and enforceable in
accordance with their terms so long as this Agreement without such terms or
provisions does not fail in its essential purpose. The parties shall
negotiate in good faith to replace any such illegal or unenforceable
provisions so as to maintain as far as possible the purposes and effect of
this Agreement. Should the parties fail to agree such a replacement
provision within 30 days of such determination of illegality or
unenforceability, this Agreement shall terminate.
12.3 No modification, waiver, alteration or amendment to or of this Agreement
shall be valid unless set out in writing and duly executed by or on behalf
of NXT and the Licensee.
12.4 Any failure by either party at any time or from time to time to enforce or
require the other party strictly to observe and perform any of the terms
and conditions of this Agreement shall not constitute a waiver of such
terms or conditions or in any way affect the right of either party at any
time to avail itself of such remedies as it may have under this Agreement
or otherwise for any breach of such terms and conditions.
12.5 This Agreement constitutes the entire agreement between the parties as to
its subject matter and supersedes and cancels all prior agreements,
understandings and negotiations in connection with it. Each of the parties
confirms and acknowledges that it has not agreed to enter into this
Agreement in reliance upon any statements, warranties or representations
(whether of fact or otherwise) made by the other which are not set out in
this Agreement.
12.6 Nothing in this Agreement shall constitute or be deemed to constitute a
partnership between the parties or constitute NXT as agent for the Licensee
or vice versa for any purpose and neither party shall have the right or
authority to and shall not do any act, enter into any contract, make any
representation, give any warranty, incur any liability, assume any
obligation, whether express or implied, of any kind on behalf of the other
or binding on the other in any way.
12.7 Any notice given under this Agreement shall be given in writing and shall
be served by sending the same by pre- paid air mail (or by first class post
if being sent within the United Kingdom) or facsimile or by delivering the
same by hand to the address of the party set out above (or such other
address as either party has specified by notice to the other). Any notice
served in accordance with this clause 12.7 shall be deemed to have been
served when delivered by hand at the time of such delivery, when sent
through the post five calendar days after the date of dispatch, and when
sent by facsimile on the date of transmission.
13. DISPUTE RESOLUTION AND JURISDICTION
13.1 The parties shall meet as soon as possible to discuss and attempt to
resolve all differences, disputes or disagreements which may arise out of
or in connection with this Agreement. If the parties are unable to resolve
any such matter or dispute then it shall be referred to the Chairman of NXT
and the Chairman (or equivalent officer) of the Licensee, and they or their
nominated representatives shall meet within fourteen days of being
requested to do so and shall in good faith attempt to resolve the matter or
dispute.
13.2 The parties agree to refer any matter or dispute which is not able to be
resolved pursuant to clause l 3.1 to the Centre for Dispute Resolution in
London, England in an attempt to settle the same in good faith by
Alternative Dispute Resolution ("ADR").
13.3 Subject to clause 13.5, neither party shall be precluded from taking such
interim formal steps as may be considered necessary to protect its position
while the procedures referred to in clauses 13.1 and 13,2 are being
pursued. 3.4 In the event that the matter remains unresolved by such ADR
procedure within thirty days of the commencement of such procedure, then
the parties shall be at liberty to take such other Proceedings (as defined
below) as they think fit.
13.5 Except as provided for in clauses 13.1 and 13.2, in relation to any legal
action or proceedings to enforce this Agreement or arising out of or in
connection with this Agreement ("Proceedings") the Licensee irrevocably
submits to the exclusive jurisdiction of the English Courts and waives any
objection to Proceedings in such Courts on the grounds of venue or on the
grounds that Proceedings have been brought in an inappropriate forum. This
clause 13.5 operates for the benefit of NXT which shall retain the right to
take Proceedings in any other court having jurisdiction.
13.6 This Agreement shall be governed by and construed in accordance with
English law.
IN WITNESS WHEREOF the duly authorized representatives of the parties have
executed this License Agreement.
Signed by /s/XXXXXXX X. XXXXXXXX Signed by /s/XXXXX XXXXX
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for & on behalf of for & on behalf of
the Licensee New Transducers Limited
This 11th day of April 2001
