EXHIBIT 99.1
EXCLUSIVE LICENSE AGREEMENT
THIS AGREEMENT made and entered into by and between Spreelast A.G.
(hereinafter called "Spreelast"), and MAGNUM D'OR RESOURCES, INC., a corporation
of the State of Nevada, having a principal office AT 0000 X.X 00xx Xxxxxx, #000,
Xxxx Xxxxxxxxxx Xxxxxxx, X.X.X. (hereinafter called "MAGNUM").
The effective date of this Agreement is December 21, 2007.
WHEREAS, SPREELAST is The exclusive Licensee of certain patent and
intellectual property set forth on Exhibit A annexed hereto and made a part
hereof; and
WHEREAS, SPREELAST has right to certain technical data and information
("Technology" as set forth in said Exhibit A); and
WHEREAS, SPREELAST has developed extensive know-how ("Know-how") in
utilizing the Technology covered under the Pated: to develop end products; end
WHEREAS, SPREELAST desires to have the Technology, Patent Rights and
Know-how utilized in the public interest and is willing to grant a sublicense to
MAGNUM thereunder which sublicense shall be exclusive in and throughout the
Territory; and
WHEREAS, MAGNUM has represented to SPREELAST, to induce SPREELAST to
enter into this Agreement, that it shall commit itself to a thorough, vigorous,
commercially reasonable and diligent program of exploiting the Patent Rights,
Technology and Know-how so that public utilization shall result therefrom; and
WHEREAS, SPREELAST is desirous of granting such a sub-license to MAGNUM
in accordance with the terms of this Agreement.
NOW, THEREFORE, in consideration of the foregoing premises the parties
hereto agree as follows:
I. DEFINITIONS
As used in this Agreement, the following words and phrases shall have
the meanings ascribed to them in this section.
1.1 AFFILIATED COMPANY: Any company (1) in which MAGNUM has a controlling
interest or (2) is under common control with MAGNUM by third party.
1.2 LICENSED PROCESSES: Any process which, but for the sights granted in
this Agreement would infringe one or more of an issued, unexpired, or
pending claim contained in the Patent Rights.
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1.3 PATENT RIGHTS: All present and future patent applications, described in
Exhibit A and claimed therein, and any divisions, continuations,
continuations-in-part to the extent the claims are directed to subject
matter specifically described in patents, as set forth on Exhibit A,
issuing thereon or reissues thereof; and any and all foreign patents
and patent applications corresponding thereto; which will be
automatically incorporated in and added to this Agreement.
1.4 KNOW-HOW. All confidential data, methodology, state-of- the-art
technology and trade secrets now or hereinafter developed by SPREELAST,
and conveyed to Magnum, in the utilization of the Technology and Patent
Rights in the development of end products.
1.5 TERRITORY: United States, Canada and China
1.6 TECHNOLOGY: Existing technical data and information to be provided to
MAGNUM and as set forth on Exhibit A hereto.
1.7 TERM. As defined in Section 7.1
1.8 EXCLUSIVE LICENSE: A license under which SPREELAST shall not grant
further licenses to a third party to use Technology, Patent Rights and
Know-how within the Territory and will not itself utilize such
Technology, Patent Rights and Know-how within the Territory.
II. GRANT
2.1 EXCLUSIVITY: SPREELAST hereby grants and MAGNUM hereby accepts subject
to the terms and conditions hereof, an Exclusive License within the
Territory, and to the extent not prohibited by other patents not
licensed or owned by SPREELAST, to make and have made, to use, sell,
offer to sell, and import Licensed Products and products made with the
use of Licensed. Processes and to use Licensed Processes during the
Term of this Agreement within the Territory
2.2 SUBLICENSE: MAGNUM shall have the right to sublicense for use any or
all of the rights and privileges granted to MAGNUM in this Agreement
subject to the following:
a) MAGNUM agrees that any such sublicense will contain provisions,
which obligate its sub- licensee to MAGNUM to at least the same extent
that MAGNUM is obligated to SPREELAST under this Agreement;
b) MAGNUM agrees to inform SPREELAST of every fully executed sublicense
involving the Patent Rights, 'technology and Know-how or any part
thereof;
2.3 RESEARCH AND PUBLICATION RIGHTS: SPREELAST retains rights, within the
Territory, to make and to use and to grant non-exclusive licenses to
make and to use for research purposes only and to publish on the
subject matter described in Patent Rights, Technology and Know-how.
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III. CONSIDERATIONS
3.1 LICENSE FEE AND ROYALTY: In consideration for the license granted to it
hereunder, MAGNUM will pay to SPREELAST:
a) within 7 days from the date hereof 200,000 shares of its fully paid
and non-assessable Common Shares; and
b) during the term of this Agreement a royally of Three percent of all
Gross Revenues derived by Magnum, from plant facilities in which Magnum
owns a Majority interest, utilizing the Technology licensed hereunder.
c) in the case of sublicenses, MAGNUM shall a pay to SPREELAST thirty
percent (30%) of royalty income received by Magnum from such
sub-licensees
3.2 MINIMUM ROYALTIES: SPREELAST shall have the right to terminate this
license in the event that MAGNUM does not pay to SPREELAST the
following nonrefundable minimum royalties, which are creditable against
running royalties:
April 1 2008 50,000 Euros
April 1 2009 150,000 Euros
April 1, 2010 and yearly thereafter 300,000 Euros
Anything to the contrary herein contained notwithstanding, it is
expressly understood and agreed that, in the event, Spreelast shall be
in default in the payment of royalties due to the Patent Holder(s),
under the terms of the license agreement between the Patent Holder(s)
and SPREELAST, MAGNUM may elect, in its sole discretion, to pay the
royalties provided for in paragraphs 3.1 (b), 3.1 (c) and 3.2, hereof
directly to the Patent Holder(s).
3.3 This duty to pay royalties under 3.1 and 3.2 shall expire with the
last-to-expire Patent Rights on a country-by-country basis. If no
Patent Rights exist in a country, this duty to pay royalties shall
expire 10 years after the first commercial sale in that country.
3.4 In the event that MAGNUM develops a combination product(s), which shall
mean a product sold by MAGNUM, its Affiliated Company (ies), or Sub
licensees, that contains a Licensed Technology plus other non-Licensed
Componentry that (i) can be sold separately by MAGNUM without
infringing, contributing to the infringement of, or dependent upon
Patent Rights; and (ii) adds value to the final product being sold by
the MAGNUM, SPREELAST will consider renegotiating royalties for the
combination product(s).
IV. ROYALTY PAYMENT, REPORTS, AND RECORDS
4.1 SEMI-ANNUAL REPORTS: MAGNUM, within sixty (60) days after June 30, and
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December 31, of each year commencing with June 30, 2008, shall deliver
to SPREELAST true and accurate reports, giving such particulars of the
business conducted by MAGNUM, its Affiliated Companies, and its sub
licensees during the preceding six month period under this Agreement as
shall be pertinent to a royalty accounting hereunder.
4.2 MINIMUMS: If royalties for any calendar year do not meet or exceed the
minimum royalties established in Section 3.4, MAGNUM shall include the
balance of the minimum royalty with the payment for the period ending
December 31.
4.3 ROYALTY PAYMENT: Simultaneously with the delivery of each such
accounting, MAGNUM shall make disbursements in United States currency,
drawn on a United States bank, of the royalties due for the period
covered by such report. Such payments shall be without deduction of
exchange, collection or other charges.
4.4 LATE PAYMENT: Late payments shall be subject to an interest charge of
one and one-half percent (1.50 %) per month.
4.5 Confidentiality: All such reports shall be maintained in confidence by
SPREELAST, except as required by law.
V. INFRINGEMENT
5.1 NOTIFICATION: MAGNUM shall inform SPREELAST promptly in writing upon
learning of any alleged infringement of the Patent rights by a third
Party and of any available evidence thereof.
5.2 ENFORCEMENT BY SPREELAST: During the term of this Agreement, SPREELAST
shall have the right, but shall not be obligated to prosecute at its
own expense all infringements of the Patent Rights and, in furtherance
of such right, MAGNUM hereby agrees that SPREELAST may include MAGNUM
as party plaintiff in any such suit, without expense to MAGNUM. The
total cost of any such infringement action commenced or defended solely
by SPREELAST shall be borne by SPREELAST and SPREELAST shall keep any
recovery or damages for past infringement derived therefrom.
5.3 ENFORCEMENT BY MAGNUM: If within three (3) months after having been
notified of any alleged infringement, SPREELAST shall have been
unsuccessful in persuading the alleged infringer to desist and shall
not have brought and shall not be diligently prosecuting an
infringement action, or if SPREELAST shall notify MAGNUM at any time
prior thereto of its intention not to bring suit against any alleged
infringer then, and in those events only, MAGNUM shall have the right,
but not be obligated, to prosecute at its own expense any infringement
of the Patent Rights (in the Territory ), and MAGNUM may, for such
purposes, use the name of SPREELAST as party plaintiff; provided,
however, that such right to bring such an infringement action shall
remain in effect only for so long as the license granted herein remains
effective. No settlement, consent judgment or other voluntary final
disposition of the suit maybe entered into without the consent of
SPREELAST, such consent shall not
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unreasonably be withheld. MAGNUM shall indemnify SPREELAST against any
order for costs that may be made against SPREELAST in such proceedings.
5.4 EXPENSE AND RECOVERY: In the event that MAGNUM shall undertake the
enforcement and/or defense of the Patent Rights by litigation, MAGNUM
may withhold up to fifty percent (50%) of the payments otherwise
thereafter due SPREELAST under Article IV hereunder and apply the same
toward reimbursement of up to half of MAGNUM'S expenses, including
reasonable attorneys' fees, in connection therewith. Any recovery of
damages by MAGNUM for each such suit shall be applied first in
satisfaction of any unreimbursed expenses and legal fees of MAGNUM
relating to such suit, and next toward reimbursement of SPREELAST for
any payments under Article IV past due or withheld and applied pursuant
to this Article V. The balance remaining from any such recovery divided
equally between MAGNUM and SPREELAST.
5.5 DEFENSE OF INVALIDITY OF PATENT RIGHTS: In the event that a declaratory
judgment action alleging invalidity or noninfringement of any of the
Patent Rights shall be brought against MAGNUM, SPREELAST, at its
option, shall have the right, within thirty (30) after commencement of
such action, to intervene and take over the sole defense of the action
at its own expense.
5.6 COOPERATION: In any infringement suit as either party may institute to
enforce the Patent Rights pursuant to this Agreement, the other party
hereto shall, at the request and expense of the party initiating such
suit, cooperate in all respects and, to the extent practicable, have
its employees testify when requested and make available relevant
record, papers, information, samples, specimens, and the like.
5.7 SUBLICENSE: MAGNUM during the exclusive period of this Agreement shall
have the sole right in accordance with the terms and conditions herein
to sublicense to any alleged infringer in the Territory for future use
of the Patent Rights. Any up-front fees as part of such a sublicense
shall be shared equally between MAGNUM and SPREELAST; other royalties
shall be treated in Articles III and IV hereof.
VI. INDEMNIFICATION AND WARRANTEES
6.1 INDEMNIFICATION: SPREELAST shall at all times during the term of this
Agreement indemnify, defend and hold MAGNUM, its officers, employees
and affiliates, and harmless against all claims, proceedings, demands,
liabilities and expenses resulting from the utilization of any
Technology, Patent Rights or Know-how granted hereunder, by SPREELAST.
6.2 AUTHORIZATION TO CONTRACT AND DISCLAIMER OF WARRANTY: SPREELAST
represents and warrants that it holds the exclusive license to the
patents and technology in the patent applications or patents comprising
the Patent Rights and that SPREELAST has the authority to issue
licenses under said Patent Rights.
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EXCEPT AS OTHERWISE MAY BE EXPRESSLY SET FORTH IN THIS AGREEMENT, THE
TECHNOLOGY, PATENT RIGHTS AND KNOW-HOW ARE LICENSED "AS IS" WITHOUT ANY
EXPRESSED OR IMPLIED WARRANTIES WHATSOEVER. SPREELAST EXPRESSLY
DISCLAIMS IMPLIED WARRANTIES OF MERCHANTABILITY AND/OR FITNESS FOR A
PARTICULAR PURPOSE WITH RESPECT TO THE TECHNOLOGY AND PATENT RIGHTS.
SPREELAST MAKES NO REPRESENTATION WHATSOEVER THAT THE TECHNOLOGY IS
ERROR FREE.
VII. TERM AND TERMINATION
7.1 TERM: Unless terminated earlier as provided herein, the Term of this
Agreement shall commence on the Effective Date and expire on expiration
of the last duty to pay royalties under 3.3 hereof
7.2 TERMINATION BY SPREELAST: SPREELAST shall have the right and option of
terminating this Agreement upon written notice to MAGNUM in the
following events: If MAGNUM:
a) fails to make any payment whatsoever due and payable to
SPREELAST hereunder, SPREELAST shall have the right to terminate this
Agreement effective on forty-five (45) days' notice, unless MAGNUM
shall make all such payments to SPREELAST plus interest within said
period. Upon the expiration of the forty-five (45) day period, if
MAGNUM shall not have made all such payments to SPREELAST, the rights,
privileges and license granted hereunder shall automatically terminate;
or
b) is declared insolvent or bankrupt by a court of competent
jurisdiction, or a voluntary petition of bankruptcy is filed in any
court of competent jurisdiction, or MAGNUM shall make or execute an
assignment for the benefit of creditors; SPREELAST shall then have the
right and option to terminate this Agreement and the rights and
obligations hereunder forthwith by notice in writing to MAGNUM.
7.3 ROYALTIES AT TERMINATION: Any termination of this Agreement and the
rights and obligations hereunder shall not release MAGNUM from the
payment of any earned royalties accrued or expense reimbursement
accrued and unpaid up to the date of such termination. Upon termination
a final report shall be submitted and any royalty payments and
unreimbursed patent expenses due SPREELAST become immediately payable.
7.4 OBLIGATIONS CONTINUE: Upon termination of this Agreement for any
reason, nothing herein shall be construed to release either party from
any obligation that matured prior to the effective date of such.
VIII. CONFIDENTIALITY
8.1 CONFIDENTIAL INFORMATION: MAGNUM hereby agrees not to disclose to third
parties information, which relates to the Technology, Patent Rights and
Know-how which information is not yet published in an issued patent.
MAGNUM agrees to take the same degree of care as it signed by both
parties.
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9.6 SEVERABILITY: If one or more of the provisions of this Agreement be
held to be invalid illegal or unenforceable in any respect, the
validity, legality and enforceability of the remaining provisions shall
not in any way be affected or impaired thereby. The invalid or
unenforceable part or provisions shall be replaced with a provision
which accomplishes, to the extent possible. The original business
purpose of such part or provisions in a valid enforceable manner.
(SIGNATURE PAGE FOLLOWS)
IN WITNESS WHEREOF the parties have set their hands and seals this 21St day of
December 2007
SPREELAST A.G.
BY: /s/ Xxxxx X. Xxxxxxx
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Xxxxx X. Xxxxxxx Managing Director
MAGNUM D'OR RESOURCES, INC.
BY: /s/ Xxxx X. Xxxxxx
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Xxxx X. Xxxxxx Authorized Officer
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