AGREEMENT
THIS AGREEMENT, entered into as of the 1st day of May, 1994, by and
between XXXXX LIMITED, the licensor, whose address is:
XX Xxx 000
Xxxxxx 0 & 0 Xxxxxxxxx Xxxxxxx
000 Xxxx Xxxxxx
Gibralter
hereinafter referred to as "XXXXX" and AB PLASTICS CORPORATION, the
licensee, whose address is:
00000 Xxxxx Xxxxxxxx Xxxxxx
Xxxxxxx, XX 00000
hereinafter referred to as the "COMPANY".
WHEREAS, XXXXX owns the entire right, title and interest in and to
United States Patent No. 4,101,617 and other Patents and Patent Applications in
the United States and other foreign countries listed in Schedule A attached;
WHEREAS, XXXXX is the owner of proprietary technology relating to
gas-assisted plastic injection molding, hereinafter called GAIN TECHNOLOGY and
is authorized to grant a license under Patents and Patent Applications covering,
and know-how related to, gas-assisted plastic injection molding processes and
equipment;
WHEREAS, the COMPANY desires to enter the field of manufacturing
products with this technology and is interested in the GAIN TECHNOLOGY for this
purpose; and
WHEREAS, the COMPANY is desirous of obtaining from XXXXX a nonexclusive
license to use GAIN TECHNOLOGY in the manufacture of plastic products.
NOW, THEREFORE, the parties agree as follows:
ARTICLE I -- DEFINITIONS
A. LICENSED PATENTS
The term "LICENSED PATENTS n shall refer to the United States Patents
and Patent Applications, and their foreign counterparts, identified in Schedule
A and to further acquired patents of XXXXX which XXXXX may add to Schedule A
from time to time.
B. KNOW-HOW
The term "KNOW-HOW" means any information furnished by XXXXX
to the COMPANY hereunder pertaining to gas-assisted plastic
injection molding, which includes, but is not limited to, that
information described in Schedule B.
C. LICENSED FACILITY
The term "LICENSED FACILITY" shall mean the molding facility
(or facilities), as identified in Schedule C, which is the only
facility (facilities) at which the COMPANY is authorized to use
GAIN TECHNOLOGY.
D. GAIN TECHNOLOGY
The term "GAIN TECHNOLOGY" shall refer to MELEA's proprietary
technology related to gas-assisted plastic injection molding as
identified by the LICENSED PATENTS and KNOW-HOW partially listed in
Schedules A and B.
E. PRODUCTS
The term "PRODUCTS" shall refer to articles produced using GAIN
TECHNOLOGY.
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ARTICLE II -- LICENSE
A. XXXXX
XXXXX grants to the COMPANY the nonexclusive license (with no
right to sub-license), to manufacture (except in Japan), use and/or
sell PRODUCTS produced at the LICENSED FACILITY using GAIN
TECHNOLOGY.
B. LIMITATIONS OF LICENSE
Nothing in this Agreement shall be construed as:
1. A warranty or representation by XXXXX as to the validity
or scope of any LICENSED PATENT; or
2. A warranty or representation that the practice or use of
GAIN TECHNOLOGY, or any plastic molded product produced, under this
Agreement is or will be free from infringement of patents or other
claims of third parties; or
3. A requirement that XXXXX shall file any patent
application, secure any patent or maintain any patent in force: or
4. An obligation to bring or prosecute actions or suits
against third parties for infringement; or
5. Licensing use of GAIN TECHNOLOGY for any equipment other
than that at the LICENSED FACILITY; or
6. Conferring rights to export PRODUCTS to other territories
for which such export is forbidden.
C. RIGHTS TO IMPROVEMENTS
Any improvements to the GAIN TECHNOLOGY made by the COMPANY or jointly
at the COMPANY's facility with XXXXX shall be the sole
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property of XXXXX. If any patents result from this development work, such
patents shall be solely owned by XXXXX and the COMPANY shall be automatically
granted a license for any such new patents under this Agreement.
D. EXISTING PATENTS
If any patents or patent applications concerning gas-assisted injection
molding technology are owned by the COMPANY before execution of this Agreement,
XXXXX shall be granted a royalty-free transferable license including the right
to grant sub-licenses for the life of such patents.
ARTICLE III -- TECHNICAL ASSISTANCE AND COOPERATION
A. TRAINING
XXXXX agrees to use its best efforts to make available technical
personnel who will provide training of the COMPANY's personnel at the LICENSED
FACILITY for a reasonable number of days to be determined by XXXXX at a charge
of Eight Hundred US Dollars ($US 800.00) per day to the COMPANY. The COMPANY
will pay any travel or other related expenses of such personnel. It is agreed
that XXXXX does not assume responsibility, nor shall it be liable for any injury
which may occur to any person, or damage to any property, during any training
period or otherwise.
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B. COOPERATION
XXXXX agrees to make available to the COMPANY from time to time upon
reasonable request KNOW-HOW to assist the COMPANY in utilizing this license.
ARTICLE IV -- PAYMENTS
A. ROYALTY TERMS
The COMPANY agrees to pay XXXXX royalties in the amount set
forth on Schedule D attached. The COMPANY, however, shall be
relieved of paying any royalties if all the LICENSED PATENTS are
held invalid by a court of final jurisdiction.
B. PAYMENTS
All payments made to XXXXX herein shall be in O.S. Dollars
deposited by wire transfer within ten (10) days of the date of this
Agreement and on each anniversary of this Agreement to the bank
designated by METFA. A facsimile of such wire transfer "hall be
sent to XXXXX on the same day after deposit is made. The COMPANY
will receive credit for only payments actually received by MEIEA in
the designated account.
C. RECORDS AND REPORTS
The COMPANY shall keep records in sufficient detail to allow it to
report to XXXXX on its net sales in conformity with the reporting requirements
established by XXXXX. Each annual royalty payment shall be accompanied by a
report of net sales utilizing the format required by XXXXX. Further, the COMPANY
shall complete the
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report attached as Schedule E for each applicable sold and submit it to XXXXX
prior to the production of any PRODUCTS from such mold. XXXXX shall also have
the right to have its duly authorized representative examine such records of the
COMPANY necessary to verify the accuracy of the sales reports made by the
COMPANY. In addition, XXXXX shall have the right to inspect during normal
business hours the LICENSED FACILITY and the PRODUCTS manufactured in such
facility.
ARTICLE V -- CONFIDENTIALITY
The COMPANY agrees to keep confidential all proprietary information
relating to GAIN TECHNOLOGY to the same extent that it protects its own
proprietary and confidential material. Further, the COMPANY agrees to reveal
such information only to such persons and to such extent as may be required to
permit the COMPANY to utilize such information for its benefit in practicing the
license granted herein. These obligations do not apply to information that is
generally available to the public from another source, is lawfully acquired from
a source that is not a party to this Agreement, or is lawfully in the possession
of the COMPANY prior to disclosure by XXXXX in written or other recorded form.
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ARTICLE VI -- TERM AND TERMINATION
A. TERM
This Agreement, unless terminated earlier as provided below, shall
continue for a period of five (5) years from the date it is entered into, or
until the expiration of the last-to-expire LICENSED PATENTS covered by this
agreement, whichever is later.
B. TERMINATION
1. BY XXXXX
x. Breach by the COMPANY
In the event of a material breach of any of the terms of this
Agreement by the COMPANY, XXXXX shall have the right to give the COMPANY written
notice of any such breach, and, if the breach is not cured by the COMPANY within
a period of thirty (30) days commencing with receipt of such notice, then XXXXX
shall have the right to terminate this Agreement by written notice to the
COMPANY without waiving any rights accrued prior to termination. Material breach
shall include, but not be limited to, unauthorized disclosure or use of MELEA's
confidential information and nonpayment of money due to XXXXX.
b. Receivership, Liquidation or Bankruptcy
This Agreement will immediately terminate upon the
appointment of a receiver or liquidator for, or the liquidation of, all or any
portion of the COMPANY's assets, the adjudication of the COMPANY as a bankrupt
or an assignment by the COMPANY for the benefit of its creditors.
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2. BY THE COMPANY
a. Breach by XXXXX
In the event of a material breach of any of the terms of this
Agreement by XXXXX, the COMPANY shall have the right to give XXXXX written
notice of any such breach, and if the breach is not cured by XXXXX within a
period of thirty (30) days commencing upon receipt of such notice, then the
COMPANY shall have the right to terminate this Agreement by written notice to
MET FA without waiving any rights accrued prior to termination.
b. Notice
The COMPANY shall have the right to terminate this Agreement on any
anniversary thereof after the fourth year by giving XXXXX six (6) months advance
written notice of its intention to terminate.
c. Procedure on Termination
Upon termination, the COMPANY will immediately discontinue all
production and delivery of any PRODUCTS and cease use of the KNOW-HOW, and at
MELEA's request, promptly return to XXXXX all documents and things including
copies containing or embodying KNOW--HOW and certify to XXXXX that all such
documents and things have been returned.
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ARTICLE VII -- DISPUTE RESOLUTION AND GOVERNING LAW
A. DISPUTE RESOLUTION
The parties agree that any claim based on a controversy arising out of
or relating to this Agreement shall be brought in the U.S. District Court for
the Eastern District of Michigan and the parties consent to the jurisdiction of
such Court.
B. LIMITATION OF REMEDIES
Any award against XXXXX cannot exceed one-half of any royalty
payments made to XXXXX the previous one year period before notice
to XXXXX of any dispute.
C. GOVERNING LAW
This Agreement shall be governed as to all matters including validity,
construction and performance, by the laws of the State of Michigan, U.S.A.
ARTICLE VIII -- OTHER MATTERS
A. ASSIGNMENT
This Agreement shall be binding upon and inure to the benefit of the
successors and assigns of the parties; provided, however, it shall not be
assigned by the COMPANY without the prior written consent of XXXXX, which
consent shall not be unreasonably withheld.
B. NOTICES
1. Any notice, order or communication to be given or made
under the Agreement shall be made in writing in the English
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language and delivered personally by hand or transmitted by cable, telex,
facsimile or registered air mail addressed to the following address of each
party or such changed address as shall be given by written notice:
If to XXXXX:
XXXXX Limited
XX Xxx 000
Xxxxxx 0 & 0 Xxxxxxxxx Xxxxxxx
000 Xxxx Xxxxxx
Gibralter
with copy to:
GAIN Technologies
0000 Xxxxxxxx Xxxxx Xxxxx
Xxxxxxxx Xxxxxxx, XX 00000
Fax: (000) 000-0000
ATTN: Xxx Xxxxxxx
If to the COMPANY:
AB PLASTICS CORPORATION
00000 Xxxxx Xxxxxxxx Xxxxxx
Xxxxxxx, XX 00000
ATTN: Mr. Xxx Xxxxx
FAX: (000) 000-0000
2. Notice, order or communication shall be deemed to have
been received:
a. If delivered by hand: at time of delivery.
b. If sent by telex: at time of transmission.
c. If sent by facsimile: at time of transmission. The
original copy shall be sent by air mail.
d. If sent by mail: ten (10) business days after the
date of mailing.
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Wherever possible, facsimile will be used to expedite communication
between the COMPANY and XXXXX.
C. NOTICE OF PATENTED PROCESS
The COMPANY agrees that it will include on any of it's blue prints or
engineering drawings, or engineering specifications for PRODUCTS the following:
"NOTE: This gas assisted injection molded part may embody a patented or
proprietary process which requires a license from XXXXX Limited for their "GAIN
TECHNOLOGY" process prior to manufacture under the following patents:
U.S.P.N. 4,101,617 4,781,554 4,750,409
4,830,812 4,855,094 4,913,644
4,942,006 4,943,407 4,944,910
4,848,547 5,028,377 5,032,345
5,069,858 5,069,859 5,098,637
5,114,660 5,137,680 5,110,535
5,131,226 4,555,225 4,474,717
D. NOTICE OF THIRD PARTY ACTIVITY
The COMPANY shall immediately notify XXXXX in writing as to possible
infringement by any third party of any of the LICENSED PATENTS, or wrongful
taking of any of the KNOW-HOW, and shall provide XXXXX with all details and
documents as are in its possession relating thereto. If XXXXX, at its
discretion, elects to take action in respect of such third party activity, then
the COMPANY shall, at the request of XXXXX, render reasonable
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assistance and shall be reimbursed by XXXXX for reasonable expenses
incurred by the COMPANY.
E. DEFENSE OF INFRINGEMENT SUITS
In the event XXXXX or the COMPANY receives from any third party
notification that the COMPANY's exercise of GAIN TECHNOLOGY is an infringement
of patents controlled by the third party, the party receiving such notice shall
promptly notify the other hereto in writing of its receipt of such notice
whereupon the following provisions shall become applicable:
1. The parties hereto shall mutually decide (but if the parties cannot
agree on the decision, XXXXX shall decide) whether to seek to obtain a license
from the third party or whether to defend any suit then filed or thereafter
filed by the third party for the alleged infringement.
2. If suit is filed for infringement, the parties hereto shall mutually
decide (but if the parties cannot agree on the decision, the COMPANY shall
decide) upon the selection of patent trial counsel for the responsibility and
conduct of the defense in such suit.
3. The legal expenses incurred by reason of all third party
infringement allegations shall be shared by XXXXX and the COMPANY according to
the following schedule:
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LEGAL EXPENSES COMPANY XXXXX
-------------------------------------------------------------------------------
Up to 1/2 of previous year's 50% 50%
royalties
In excess of 1/2 of previous 100% ---
year's royalties
4. Anything in the above to the contrary notwithstanding, it is
understood and agreed that in the event of such notification of infringement,
the COMPANY shall, prior to entering into any agreement or taking any action in
any litigation, notify XXXXX in writing of its intentions in this regard. If
XXXXX within sixty (60) days after receiving such notification and details,
notifies the COMPANY in writing that MEIEA will defend, at its own expense, and
indemnify and hold harmless the COMPANY with respect to the claim of the third
party of such infringement, then the COMPANY shall relinquish control thereof,
in favor of MEIEA. The COMPANY shall thereafter cooperate with MEIEA in the
prosecution of this suit, and it is agreed that the COMPANY shall bear its own
costs and expenses in connection with the suit.
F. NON-INTERFERENCE OF PATENT APPLICATIONS
In the event that the COMPANY shall commence any proceeding, such as by
formal opposition, challenging the validity or enforceability of any patent, or
the patentability of any application of MELEA'S anywhere in the world, such
conduct shall be cause for termination of this Agreement at the option of XXXXX.
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G. SEVERABILITY
The parties agree that if any term, provision or part of this Agreement
is illegal or invalid, such illegality or invalidity shall not invalidate this
entire Agreement, but this Agreement shall be construed as if it did not contain
the offending term, provision or part and the rights and obligation of the
parties hereto shall be construed and enforced accordingly.
H. SOLE AGREEMENT OF THE PARTIES
There are no agreements or understandings between the parties, either
oral or in writing, with respect to the LICENSED PATENTS, and this Agreement can
only be amended or modified in a writing signed by both parties. The terms and
conditions of this Agreement shall supersede those of any purchase order or
other agreement issued by the COMPANY for this license.
IN WITNESS WHEREOF, the parties hereto have hereunto set their
signatures as of the day and year written below.
XXXXX LIMITED AB PLASTICS CORPORATION
By: /s/ Signature By: /s/Xxxxxx X. Xxxxx
------------------------ ---------------------------
Its: Director Its: Vice President
----------------------- --------------------------
Date: 02/05/94 Date: May 1, 1994
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