Exhibit 17
PATENT LICENSE AGREEMENT
License Number: 97-1022LFA
THIS AGREEMENT, made effective on the 25th day September of 1997, by and
between The Federal Manufacturing & Technologies business unit of AlliedSignal
Inc. (hereinafter "AlliedSignal"), a corporation organized and existing under
the laws of the State of Delaware and having a place of business at 0000 Xxxx
00xx Xxxxxx, X.X. Xxx 000000, Xxxxxx Xxxx, Xxxxxxxx 00000-0000, and FIXCOR
Industries, Inc., (hereinafter "Licensee"), a corporation organized and existing
under the laws of the State of Delaware and having a place of business at 0000
Xxxxx Xxxxxxx, Xxxxx, Xxxx 00000.
WITNESSETH:
WHEREAS, AlliedSignal, pursuant to Xxxxxxxx Xx. XX-XX00-00XX00000
(hereinafter "Prime Contract") with the United States Government, as represented
by the Department of Energy (hereinafter "DOE") has developed and/or obtained
rights to the Proprietary Rights, subject to the DOE nonexclusive,
nontransferable, irrevocable, paid-up license for the United States Government
and certain march-in rights and any other conditions of waivers granted by the
DOE; and
WHEREAS, Licensee desires to obtain non-exclusive rights in a limited field
of use in the Proprietary Rights.
NOW THEREFORE, in consideration of the foregoing premises, covenants, and
agreements contained herein, AlliedSignal and Licensee (collectively the
"Parties") hereto agree to be bound as follows:
1. DEFINITIONS
1.1. "Proprietary Rights" shall mean the patents and patent applications
listed in Exhibit A, which is attached to and incorporated into this Agreement.
1.2. "Products" shall mean any and all products manufactured, used, sold or
transferred by Licensee covered by one or more claims of the Proprietary Rights.
1.3. "Services" shall mean any and all services provided which utilize the
methods encompassed in one or more of the claims of the Proprietary Rights.
1.4. "Gross Sales" shall mean the total amounts invoiced to purchasers during
the accounting period in question for Products and/or Services sold by Licensee.
Gross Sales in the case of Products used or transferred or Services performed
shall mean the total amounts invoiced for such Products or Services, but not
less than the fair market value of Products and/or Services as if they were sold
to an unrelated third party in similar quantities. Gross Sales shall exclude
sales tax or similar tax shown on the invoice to be paid by buyer to Licensee.
2. GRANTS
2.1. Subject to the terms and conditions of this Agreement, AlliedSignal
hereby grants to Licensee a non-exclusive, nontransferable, worldwide license to
practice the methods and to make, use, and sell, the Products and/or Services
covered by the Proprietary Rights limited to the field of use of separating and
recovering motor oil from high-density polyethylene plastic (HDPE). No license,
either express or implied, is granted by AlliedSignal to Licensee hereunder with
respect to any patent or information except as specifically provided herein.
AlliedSignal agrees not to grant any third party company a license in the
Proprietary Rights during the first 24 months of this Agreement and thereafter
an additional 36 months provided the milestones setforth in Exhibit D, which is
attached to and incorporated into this Agreement, have been accomplished.
2.2. No license, either express or implied, is granted hereunder to use as a
trademark or otherwise the words "AlliedSignal" or any other trademark or
product name of AlliedSignal or any word or xxxx similar thereto unless
otherwise specified herein.
2.3. Licensee may indicate the Products are made under license from
AlliedSignal by suitable legend, if the form of such legend and the extent of
Licensee's use thereof have received prior written approval of AlliedSignal.
AlliedSignal may amend or revoke prior approvals to use such legends at any time
during the term of this agreement, and all rights to use such legends shall
terminate with this agreement.
2.4. No rights to sublicense are granted Licensee under this agreement.
2.5. Licensee agrees that manufacture of Products for sale in the United
States shall occur substantially in the United States.
2.6. Nothing in this Agreement shall constitute, or be construed to be, a
limitation or restriction upon any right otherwise possessed by Licensee to
export or sale for export any Product, or parts therefor, in any country and on
which royalties shall be paid as provided in Section 3 and Exhibits B and C of
this Agreement.
2.7. Licensee agrees to observe all applicable United States and foreign
laws, regulations, rules and decrees with respect to the transfer of the
Proprietary Rights and related technical data to foreign countries. FAILURE TO
CONFORM TO SUCH LAWS, REGULATIONS, RULES AND DECREES MAY RESULT IN CRIMINAL
LIABILITY UNDER U.S. LAWS.
2.8. The grant hereunder is subject to the DOE nonexclusive, nontransferable,
irrevocable, paid-up license for the United States Government and certain
march-in rights and any other conditions of waivers granted to the Proprietary
Rights.
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3. CONSIDERATION
3.1. In consideration of the rights and licenses granted in this Agreement,
Licensee agrees to the provisions of Exhibit B and Exhibit C attached to and
incorporated into this Agreement.
3.2. No royalties shall be owed to AlliedSignal on any Products sold to
AlliedSignal its parent company and to their subsidiaries or affiliates, but
only to the extent that Licensee can show that AlliedSignal Inc. received a
discount on Licensed Product sales which discount is equivalent to or greater
than the amount of any such royalty that would otherwise be due.
3.3. Upon termination of this Agreement for any reason whatsoever, any
royalties that remain unpaid shall be properly reported and paid to AlliedSignal
within thirty (30) days of any such termination.
3.4. Payment of royalties due shall be made during the month following the
calendar quarter covered thereby in U.S. Dollars, payable to the order of
AlliedSignal Inc., Federal Manufacturing & Technologies, pursuant to the report
to be transmitted in accordance with section 4 below. All amounts paid in USA
currency are to be calculated at the official rate of exchange on the last day
of the calendar quarter for which the payment is due, or if more than one rate
of exchange is available, then at the most favorable rate to AlliedSignal for
such day.
3.5. Should Licensee fail to make any payment to AlliedSignal within the time
period prescribed for such payment, then the unpaid amount shall bear interest
at the rate of one and one-half percent (1.5%) per month from the date when
payment was due until payment in full is made with interest. The payment of such
interest shall not replace any of AlliedSignal's other rights under this
agreement resulting from Licensee's default by failure to pay any amounts due
hereunder.
3.6. Licensee grants and agrees to grant to AlliedSignal a free, irrevocable,
non-exclusive, nontransferable, worldwide license to make, have made, use, sell
and/or practice the Proprietary Rights and related products or services, under
any improvement patent rights or technical information relating to Proprietary
Rights as to which Licensee has the right, during the life of this agreement, to
make the grants herein provided. Licensee shall (a) provide AlliedSignal with a
copy of each patent and patent application licensed hereunder within sixty (60)
days after this agreement is executed or after the filing or acquisition by
Licensee, and (b) at AlliedSignal's expense provide in complete detail the
technical information licensed hereunder, and (c) execute any documents and
agreements AlliedSignal deems necessary to perfect its rights under this
section.
4. RECORDS AND REPORTS
4.1. Licensee agrees to keep adequate and sufficiently detailed records of
utilization of the Proprietary Rights to enable royalties payable hereunder to
be determined and to make such records available for inspection by authorized
representatives of AlliedSignal at any time during the regular business hours of
Licensee. Licensee agrees that any additional records of Licensee,
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as AlliedSignal may reasonably determine are necessary to verify the utilization
of Proprietary Rights, shall also be made available. All records required
pursuant to this Agreement shall be maintained during and for a minimum of three
(3) years following termination of this Agreement.
4.2. Within thirty (30) calendar days after the close of each calendar
quarter during the term of this Agreement, Licensee shall furnish AlliedSignal a
written report providing:
(a) a list of all separately identifiable types (i.e. by model
numbers or equivalent) of Products sold, leased or otherwise
utilized, or Services rendered,
(b) the quantity of each type of Product or Service,
(c) the Gross Sales for each type of Product or Service,
(d) sales to any governmental agency,
(e) a separate report shall be prepared for each country in which
Products or Services are sold, and
(f) amount of royalties due in U.S. Dollars for the preceding
calendar quarter pursuant to the provisions hereof.
5. TECHNICAL ASSISTANCE
5.1. AlliedSignal agrees, upon the written request of Licensee, to assist
Licensee in obtaining necessary approvals for technical assistance at
AlliedSignal's facilities under appropriate agreements. The cost of such
technical assistance shall be paid by the Licensee.
6. PATENT PROVISIONS
6.1. AlliedSignal agrees to incur the cost of filing the application for U.S.
Letters Patent, including expenses associated with prosecution.
6.2. Licensee agrees to pay domestic maintenance fees, including attorneys
fees, and any foreign application issuance and maintenance fees. AlliedSignal
agrees to file and prosecute patent applications in those foreign countries
mutually agreed upon by AlliedSignal and Licensee. Licensee shall bear all cost
and expenses assessable against or incurred by AlliedSignal in obtaining, owning
and maintaining patent protection in such designated countries; including
filing, prosecution, working and maintenance cost and taxes. Licensee shall pay
such costs and expenses within thirty (30) days after receiving an invoice
therefor from AlliedSignal.
6.3. Licensee shall place appropriate patent notices on Products which
incorporate any invention covered by any licensed Proprietary Rights.
6.4. Licensee shall give notice of any suspected or discovered third party
infringement to AlliedSignal. AlliedSignal may, in its sole discretion, take
appropriate action to stop or prevent such infringement, including the filing
and prosecution of patent litigation; and AlliedSignal shall have the right to
include Licensee as a party in such litigation where necessary for the conduct
thereof. If AlliedSignal and Licensee desire and agree to joint participation in
any
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infringement suit or other enforcement action with respect to any of the
Products or Services, the respective responsibilities of the parties, and their
contributions to the costs and participation in recoveries, will be agreed upon
in writing prior to undertaking such joint enforcement action.
6.5. Licensee and AlliedSignal agree to cooperate in the prosecution of any
such legal actions or settlement actions undertaken under this section and each
will provide to the other all pertinent data in its possession which may be
helpful in the prosecution of such actions.
6.6. In the event of any actual or threatened infringement suit against
Licensee or its customers which would affect the manufacture, use, or sale of
Products or Services, Licensee shall promptly give written notice of such actual
or threatened suit to AlliedSignal and AlliedSignal will make available to
Licensee free of charge and information on in its possession on which
AlliedSignal believes will assist Licensee in defending or otherwise dealing
with such suit.
6.7. Licensee is aware that DOE concurrence may be required in certain
situations including those involving litigation and/or changes to patent rights.
7. REPRESENTATIONS AND WARRANTIES
7.1. AlliedSignal represents and warrants that Exhibit A contains a complete
and accurate listing of all the Proprietary Rights licensed pursuant to this
Agreement and that AlliedSignal has the right to grant the rights, licenses, and
privileges granted herein.
7.2. AlliedSignal represents and warrants that it has received no notice of
any claim of infringement made to date against AlliedSignal for practicing the
Proprietary Rights anywhere in the world. AlliedSignal makes no representation
to Licensee regarding the scope or enforceability of the Proprietary Rights and
does not warrant that any Products manufactured or sold or Services performed
pursuant to this agreement will not infringe patents of others.
7.3. Except as set forth above, AlliedSignal makes NO REPRESENTATIONS AND
WARRANTIES, express or implied, with regard to the infringement of Proprietary
Rights of any third party.
7.4. Licensee is hereby put on notice that export of any goods or technical
data from the United States may require some form of license from the U.S.
Government. Failure to obtain necessary export licenses may result in criminal
liability of Licensee under U.S. laws.
8. Disclaimers
8.1. Neither AlliedSignal, DOE, nor persons acting on their behalf will be
responsible for any injury to or death of persons or other living things or
damage to or destruction of property or for any other loss, damage, or injury of
any kind whatsoever resulting from Licensee's manufacture, use, or sale of
materials, information, or Proprietary Rights hereunder.
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8.2 EXCEPT AS SET FORTH ABOVE, NEITHER AlliedSignal, DOE, NOR PERSONS ACTING
ON THEIR BEHALF MAKE ANY WARRANTY, EXPRESS OR IMPLIED: (1) WITH RESPECT TO THE
MERCHANTABILITY, ACCURACY, COMPLETENESS, OR USEFULNESS OF ANY SERVICES,
MATERIALS, OR INFORMATION FURNISHED HEREUNDER; (2) THAT THE USE OF ANY SUCH
SERVICES, MATERIALS, OR INFORMATION MAY NOT INFRINGE PRIVATELY OWNED RIGHTS; (3)
THAT THE SERVICES, MATERIALS, OR INFORMATION FURNISHED HEREUNDER WILL NOT RESULT
IN INJURY OR DAMAGE WHEN USED FOR ANY PURPOSE; OR (4) THAT THE SERVICES,
MATERIALS, OR INFORMATION FURNISHED HEREUNDER WILL ACCOMPLISH THE INTENDED
RESULTS OR ARE SAFE FOR ANY PURPOSE, INCLUDING THE INTENDED OR PARTICULAR
PURPOSE. FURTHERMORE, AlliedSignal, AND DOE HEREBY SPECIFICALLY DISCLAIM ANY
AND ALL WARRANTIES, EXPRESS OR IMPLIED, FOR ANY PRODUCTS OR SERVICES
MANUFACTURED, USED, OR SOLD BY LICENSEE. NEITHER AlliedSignal, NOR THE DOE SHALL
BE LIABLE FOR CONSEQUENTIAL OR INCIDENTAL DAMAGE IN ANY EVENT.
8.3. Except for patent infringement actions, Licensee agrees to indemnity
AlliedSignal, the DOE, and persons acting on their behalf for all damages,
costs, and expenses, including attorney's fees, arising from, but not limited
to, Licensee's making, using, selling or exporting of any Products or performing
Services, in whatever form furnished. Licensee warrants that it has sufficient
insurance to cover its indemnification and hold harmless liabilities under this
provision including coverage that recognizes this contractual liability.
Licensee cannot, without 30 days prior notification to AlliedSignal Inc., as
listed in section 12.1, materially alter or change its coverage respecting its
liabilities under this section of the Agreement. AlliedSignal shall have the
option within such 30 days to terminate Licensee's rights under this Agreement
or seek an alternative mutually satisfactory to the parties.
8.4. AlliedSignal shall provide Licensee with accurate technical information,
but AlliedSignal does not make any warranty and shall have no liability with
respect to the technical information, Proprietary Rights or the use thereof; nor
does AlliedSignal assume any responsibility or make any warranty with respect to
Products or Services, manufactured, sold or used under or as a result of this
agreement.
9. TERM OF AGREEMENT AND EARLY TERMINATION
9.1. This Agreement shall be in effect for a period often (10) years from the
effective date of this Agreement and shall automatically renew for one year
periods unless written notice is given by either party to the other party of
termination of this Agreement on the expiration of its original period or any of
such additional yearly periods, such notice of termination by either party to be
given at least 90 days prior to the effective termination date.
9.2. If either party defaults for any reason in any of its obligations
hereunder, the other party will have the right to terminate this Agreement by
giving written notice of termination at least sixty (60) days prior to the
effective date of such termination, such notice specifying the default;
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however, that such notice will be of no effect and termination will not occur if
the specified default is remedied prior to said effective date of termination.
9.3. AlliedSignal may terminate this Agreement forthwith in the event of the
bankruptcy or insolvency of Licensee, an assignment for the benefit of creditors
of Licensee, the nationalization of the industry with encompasses any of the
Products and/or Services, any suspension of payments hereunder by governmental
regulation, Licensee's failure to commence the manufacture of Products in
production quantities within two (2) years from the effective date of the
Agreement, a substantial change in ownership of Licensee (whether resulting from
merger, acquisition, consolidation or otherwise), another company or person
acquiring control of Licensee, or the existence of a state of war between the
United States of America and any country where the Licensee has a License to
manufacture Products and/or Services. Such termination shall be without
prejudice to any other rights or claims AlliedSignal may have against Licensee.
9.4. At least 30 days prior to filing a petition in bankruptcy, either party
must inform the other of its intention to file the petition or of another's
intention to file an involuntary petition in bankruptcy. Further, failure to
conform to this requirement shall be deemed a material, pre-petition, incurable
breach.
9.5. If this Agreement is for any reason terminated before all of the
payments herein provided for have been made (including minimum royalties for the
year in which the agreement is terminated), Licensee shall immediately submit a
terminal report and pay to AlliedSignal any remaining unpaid balance even though
the due date as provided herein has not been reached.
9.6. This Agreement shall automatically terminate upon any attempt by
Licensee to transfer its interest in whole or in part in this Agreement to any
other party not expressly authorized in writing by AlliedSignal.
10. RIGHTS OF PARTIES AFTER TERMINATION
10.1. Neither party shall be relieved of any obligation or liability under
this Agreement arising from any act or omission committed prior to the effective
date of such termination which obligation or liability accrued as of the date of
such termination.
10.2. From and after any termination of this Agreement, Licensee shall have
the right to sell any Products that Licensee had already manufactured prior to
termination, provided that all royalties and reports required above shall be
submitted to AlliedSignal.
10.3. From and after any termination of this Agreement, Licensee shall not
manufacture nor have manufactured any Products pursuant to this Agreement.
10.4. The rights and remedies granted herein, and any other rights or remedies
which the parties may have, either at law or in equity, are cumulative and not
exclusive of others. On any termination, Licensee shall duly account to
AlliedSignal and transfer to it all rights to which
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AlliedSignal may be entitled under this Agreement under any valid U.S. Patent
resulting from Proprietary Rights as set forth in Exhibit A. Licensee's duty to
pay outstanding royalties includes, but is not limited to royalty payments from
Products or Services provided pursuant to paragraph 10.2 or 10.3.
11. FORCE MAJEURE
11.1. No failure or omission by AlliedSignal or by Licensee in the performance
of any obligation under this Agreement shall be deemed a breach of this
Agreement or create any liability if the same shall arise from acts of God; acts
or omissions of any government or agency thereof, compliance with rules,
regulations, or orders of any governmental authority; fire; storm; flood;
earthquake; accident; acts of the public enemy; war; rebellion; insurrection;
riot; sabotage; invasion; quarantine; restriction; or failures or delays in
transportation.
12. NOTICES
12.1. All notices and reports shall be addressed to the parties hereto as
follows:
If to AlliedSignal:
Attn: Licensing Manager, D/28 1, El H6 Telephotocopy No.
AlliedSignal Inc. (816) 997-4013
0000 Xxxx 00xx Xxxxxx
Xxxxxx Xxxx, XX 00000-0000 Verify No.
(000) 000-0000
If to Licensee:
Xxxx XxXxxxxxxxxx Telephotocopy No.
FIXCOR Industries, Inc. (614) 928-8902
0000 Xxxxx Xxxxxxx Xxxxxx Xx.
Xxxxx, XX 00000 (000) 000-0000
12.2. All payments due AlliedSignal shall be identified with the words
"Royalty Payment" and the License Agreement number, 97-1022R, and should be made
payable to "AlliedSignal Inc.," and mailed to the following address:
AlliedSignal Inc.,
Federal Manufacturing & Technologies
Attn: Office of Industrial Partnerships, Royalty Payments, D/281, E1H6
0000 Xxxx 00xx Xxxxxx
Xxxxxx Xxxx, Xxxxxxxx 00000-0000
12.3. All notices provided herein shall be in writing and shall be deemed to
have been duly given when received, if delivered personally, sent by
telephotocopy, or sent by First Class U.S. Mail, postage prepaid, to the party
entitled thereto at its above address or at such other address as designated in
writing by the party in accordance with the provisions of this section.
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13. NON-ABATEMENT OF ROYALTIES
13.1. AlliedSignal and Licensee acknowledge that certain of the Proprietary
Rights may expire prior to the conclusion of the term of this Agreement;
however, AlliedSignal and Licensee agree that the royalty rates provided for
above shall be uniform and undiminished, except pursuant to this Agreement.
14. WAIVERS
14.1. The failure of AlliedSignal at any time to enforce any provision of this
Agreement or to exercise any right or remedy shall not be construed to be a
waiver of such provisions or of such rights or remedy or the right of
AlliedSignal thereafter to enforce each and every provision, right, or remedy.
15. MODIFICATIONS
15.1. It is expressly understood and agreed by the parties hereto that this
instrument contains the entire agreement between the parties with respect to the
subject matter hereof and that all prior representations, warranties, or
agreements relating hereto have been merged into this document and are thus
superseded in totality by this Agreement. This Agreement may be amended or
modified only by a written instrument signed by the duly authorized
representatives of both of the parties.
16. HEADINGS
16.1. The headings for the sections set forth in this Agreement are strictly
for the convenience of the parties and shall not be used in any way to restrict
the meaning or interpretation of the substantive language of this Agreement.
17. LAW
17.1. This Agreement shall be construed according to the laws of the State of
Missouri and the United States of America.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly executed, in duplicate, in their respective names by their duly authorized
representatives.
ALLIEDSIGNAL INC., FEDERAL MANUFACTURING & TECHNOLOGIES
By:
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Name: (typed)
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Title:
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Date:
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LICENSEE
By:
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Name: (typed)
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Title:
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Date:
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