Agreement
Entered into as of the 1st day of January, 1998, by and between Xxxx Aprimov,
Israeli Identification Number 1679561, ("Xxxx") and Solmecs (Israel) Ltd.
("Solmecs").
WHEREAS in July 1993, the parties entered into an agreement, a copy of
which is attached hereto as Exhibit 1 (the "Initial Agreement");
and
WHEREAS pursuant to the Initial Agreement, the parties agreed to commence
a project (the "Project") for the development and exploitation of
technology relating to electronic display systems for
solar/electrical heaters; and
WHEREAS pursuant to the Initial Agreement, Xxxx agreed to transfer all of
his know-how, including any patent applications, relating to
electronic display systems for solar/electrical water heaters (as
set forth in Exhibit 2, the "Know-how") to the Project and to
provide the Project with certain consulting services; and
WHEREAS pursuant to the Initial Agreement, Solmecs, with the assistance
of certain consulting services provided by Xxxx, has further
developed the ideas contained in the Know-how and has funded the
Project; and
WHEREAS pursuant to the Initial Agreement, after the initial stages, the
Project was to be performed in the context of a limited liability
company, Heatex Ltd, 85% of the shares of which are owned by
Solmecs and 15% of which are owned by Xxxx; and
WHEREAS to date, the Project has been performed by Solmecs; and
WHEREAS the parties wish to terminate the Initial Agreement and replace
it with this Agreement.
NOW THEREFORE, the parties have agreed as follows:
1. The Initial Agreement is hereby terminated and of no further force and
effect.
2. The term "Technology" as used in this Agreement shall mean all information,
data and know-how, including but not limited to, inventions, creations,
ideas, discoveries, copyrights, programs, and trade secrets, in whatever
form or medium, owned or developed by Xxxx, relating to electronic display
systems for electric and solar water heater, and all improvements,
modifications, enhancements, refinements and the like thereto (whether
patentable or unpatentable) owned or developed by Xxxx, and all patent
applications and patents, whether filed or issued now or in the future,
with respect thereto.
3. Xxxx hereby irrevocably assigns, effective as of July 1993, to Solmecs all
rights, title and interest he may have in and to any and all Technology,
whether existing at that time or
developed thereafter. Xxxx hereby waives any claims he may have in and to
any of the Technology.
4. In consideration for the assignment set forth in Section 2, Solmecs shall
pay Xxxx royalties based on net revenues received by Solmecs from the sale
or licensing of the Technology or of products incorporating the Technology
as follows:
a. For purposes of this Agreement, "Net Revenues" shall mean gross
revenues received by Solmecs from the sale or licensing of the
Technology or of products incorporating the Technology less: (i)
shipping, handling, insurance, taxes and other similar charges; and
(ii) rebates and other allowances actually paid or allowed, provided,
however, that in the case of sale or licensing of the Technology or of
products incorporating the Technology to an Affiliate of Solmecs, the
Net Revenues shall be determined by the gross revenues which would be
obtained from a purchaser who is not an Affiliate. For purposes of
this Section, "Affiliate" means with respect to any person, any other
persons that, directly or indirectly, control, are controlled by or
are under common control with such person.
b. With respect to the first US$200,000 in Net Revenues received by
Solmecs, Xxxx will not be entitled to royalties on Net Revenues
received by Solmecs from the sale of products incorporating the
Technology.
c. Once Solmecs has received an aggregate of $200,000 in Net Revenues,
Xxxx will be entitled to 1.5% of any additional Net Revenues received
by Solmecs from the sale of products incorporating the Technology.
d. With respect to the first US$300,000 in Net Revenues received by
Solmecs, Xxxx will not be entitled to royalties on Net Revenues
received by Solmecs from the sale or licensing of the Technology.
e. Once Solmecs has received an aggregate of $300,000 in Net Revenues,
Xxxx will be entitled to 8% of any additional Net Revenues received by
Solmecs from the sale and/or licensing of the Technology.
f. Royalties pursuant to this Section shall accrue and be payable on a
quarterly basis within thirty (30) days after the end of each calendar
quarter in which Solmecs receives Revenues. Each payment of royalties
pursuant to this Section 3 shall be accompanied by a statement setting
forth such details as may be necessary for the calculation of the
royalty payment. Xxxx shall bear all taxes, to which Xxxx may be
subject, in connection with such payments and
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Solmecs may withhold any taxes on such payments to the extent required
by applicable law.
5. Xxxx recognizes and acknowledges that all of the specifications, programs
and documentation, the methods and data, and the developments, designs,
inventions, improvements and trade secrets, which Solmecs exclusively owns,
plans or develops, including the Technology, are confidential and are the
property of Solmecs. All of these materials and information will be
referred to below as "Proprietary Information." Xxxx shall not (a) directly
or indirectly reveal, report, publish, disclose or transfer the Proprietary
Information or any part thereof to any person or entity; (b) use any of the
Proprietary Information or any part thereof for any purpose other than for
the benefit of Solmecs; or (c) assist any person or entity other than
Solmecs to secure any benefit form the Proprietary Information or any part
thereof.
6. All notices, requests, consents and other communications, required or
permitted to be given hereunder, shall be in writing and shall be deemed to
have been duly given if delivered personally or sent by prepaid telegram,
telex, telefax, or mailed first-class, postage pre-paid, by registered or
certified mail, as follows (or to such other address as either party shall
designate by notice in writing to the other in accordance herewith):
Solmecs: Xxxxx Lesim
Xxxx Xxxxxxxxxx Xxxx
X.X. Xxx 0000, Xxxx 00000, XXXXXX
Xxxx: Xxxx Aprimov
Mavu Xxxxx 3, Kiryat Savioniw
Xxxx, ISRAEL
7. This Agreement shall be governed by and construed and enforced in
accordance with the laws of the State of Israel.
8. This Agreement contains the entire understanding of the parties. There are
no restrictions, agreements, promises, warranties, covenants or
undertakings between the parties with respect to the subject matter hereof.
All prior agreements with respect to the subject matter hereof are
superseded by this Agreement and are of no further force and effect.
9. This Agreement may be altered, modified or amended except by a written
instrument signed by the parties.
10. This Agreement shall be binding upon and shall inure to the benefit of
Solmecs, its successors and assigns and Solmecs shall require successor or
assign to expressly assume and agree to perform this Agreement in the same
manner and to the same extent that the company would be required to perform
it if no such succession or assignment had taken place. The term
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"successors and assigns" as used herein shall mean a corporation or other
entity acquiring all or substantially all the assets and business of
Solmecs (including this Agreement) whether by operation of law or
otherwise.
11. The provisions of this Agreement shall be deemed severable and the
invalidity or unenforceability of any provision shall not affect the
validity or enforceability of the other provisions hereof.
IN WITNESS WHEREOF, the parties have signed this Agreement on the day first
above written.
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Solmecs Xxxx
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