1
Exhibit 10.13
THE XXXXXXXX TECHNOLOGY EXCLUSIVE ASSIGNMENT AND ROYALTY
AGREEMENT
THIS AGREEMENT, effective this ____ day of January, 2000, made between:
Hadronic Press, Inc., 35246 XX 00 Xx., XXX 000, Xxxxx, Xxxxxxx 00000 and The
Institute for Basic Research 00 Xxxxxxxxx Xxxxx, Xxxx Xxxxxx, Xxxxxxx 00000 and
Ruggero Xxxxx Xxxxxxxx 00 Xxxxxxxxx Xxxxx, Xxxx Xxxxxx, Xxxxxxx 00000
(collectively "Assignor")
and
Xxxxx Technology Licensing Incorporated, Xxxxx 000, 0000 Xxxxx Xxxxx Xxxx,
Xxxxx, Xxxxxxx 00000, (" Assignee").
WITNESSETH THAT
WHEREAS, on October 26, 1999, Assignor and Assignee signed a Letter of Intent
substantially containing all terms and conditions of this Agreement;
WHEREAS, X. X. Xxxxxxxx, a U. S. physicist, initiated basic research on new,
clean, fuels and energies in 1978, as presented in a general 314 pages survey
recently published in the special issue of the JOURNAL OF NEW ENERGY, Vol. 4,
issue no. 1, 1999.
WHEREAS, HPI provided financial, logistic, and publication support for
Xxxxxxxx'x research from 1978 to present, as per an Agreement signed in
Cambridge, MA, on Jan. 5, 1984, which includes the assignment by Xx. Xxxxxxxx to
HPI of all patents resulting from said research.
WHEREAS, Xxxxxxxx has been scientific consultant to TTL since January 1998,
according to a consulting agreement renewed in January, 1999, which excludes new
patents, the latter to be the subject of separate agreements.
WHEREAS, Xxxxxxxx has applied the results of his research as identified above to
the development at TTL of those technologies herein defined as "Xxxxxxxx'x
Technology" which includes a new process using an electric arc within a
water-base, carbon rich liquid, is over-unity in the energy efficiency of its
production, and possesses a new chemical structure with enhanced energy release
known as "Xxxxxxxx'x Magnecules".
WHEREAS, the aforenoted scientific background has primary importance for the
industrial development of "Xxxxxxxx'x Magnegas", inasmuch as it provides
knowledge essential for: 1) the
1
2
improvement of the efficiency in the production of the gas; 2) the optimization
of the liquid needed for the production of said gas; 3) the improvement of the
combustion exhausts of said gas; 4) the recycling of liquid wastes; 5) the
selection of the embodiment for the optimal realization of the underlying
physical and chemical laws; and other important features.
WHEREAS, said research resulted in the following four patent applications, among
others, Patent Application #1:
NEW CHEMICAL SPECIES FOR GASES AND THEIR NEW TECHNOLOGIES,
by X. X. Xxxxxxxx
Serial Number 09/133,348
Filed 08/13/98
dealing with the new chemical structure of all gases produced under an electric
arc, known as "Xxxxxxxx'x Magnecules", which is inclusive of, but not limited to
"Xxxxxxxx'x Magnegas".
Patent Application #2:
DURABLE AND EFFICIENT EQUIPMENT FOR THE PRODUCTION OF A COMBUSTIBLE AND
NON-POLLUTANT GAS FROM UNDERWATER ARCS AND METHODS THEREOF
by X. X. Xxxxxxxx
Serial number 09/372.277
Filed on 08/11/99
dealing with all possible means for the production of "Xxxxxxxx'x Magnegas" by
keeping the liquid stationary, and moving the electrodes;
Patent Application #3:
MAGNEGAS, A novel, HIGHLY EFFICIENT, NONPOLLUTANT, OXYGEN RICH AND COST
COMPETITIVE, COMBUSTIBLE GAS, AND ASSOCIATED METHOD
by X. X. Xxxxxxxx
Serial Number 09/372,278
Filed on 08/11/99
dealing with all possible means of producing
"Xxxxxxxx'x Magnegas" by keeping the electrodes
stationary, and letting instead the liquid
to flow through the arc.
WHEREAS, Patent Application #1, with related scientific background and technical
know-how were assigned by Xxxxxxxx to TTL on August 12, 1998.
WHEREAS, as communicated to TTL with a letter dated September 30, 1999, Patent
Applications #2 and #3 were assigned in their entirety to HPI, in conformity
with the aforequoted Agreement between Xx. Xxxxxxxx and HPI dated January 5,
1984.
2
3
WHEREAS, the following, additional patent application is important for
"Xxxxxxxx'x Magnegas"
Patent Application #4
ELECROMAGNETION,
by Xxxxxxxx Perovetz and Ruggero Xxxxx Xxxxxxxx
Serial Number 09/106.170
Filed on 06/29/98
which deals with the new chemical species of "Xxxxxxxx'x Magnecules" for liquids
used in the production of "Xxxxxxxx'x Magnegas".
WHEREAS, years before initiating his scientific consultantlhip with TTL, and as
part of his research, Xxxxxxxx conducted research and development on the
so-called "hadronic reactors", which are new processes for the over-unity
production of heat without the production of a combustible gas. As such, these
studies are not in conflict with "Xxxxxxxx'x Magnegas", nor they were ever part
of TTL research and development, as a result of which they are not part of this
Agreement. The only technology granted a license hereby are those defined as
"Xxxxxxxx'x Technology" or "Assigned Technology."
WHEREAS, all parties herein involved wish TTL to be empowered with the
exclusive, worldwide rights on "Xxxxxxxx'x Technology", its underlying
scientific knowledge, and its technicaL know-how;
WHEREAS TTL is engaged in the business of commercializing technologies primarily
within the environmental marketplace;
WHEREAS the Assignor and Assignee are interested in undertaking together a joint
effort at designing, manufacturing, selling or otherwise commercializing the
Xxxxxxxx Technology as that term is hereinafter defined as by an Exclusive
Assignment and Royalty Agreement that provides for the Assignor to introduce TTL
to the technology and to authorize TTL to make and to commercialize Xxxxxxxx
Technology at an agreed royalty, so long as both parties perform in accordance
with this Agreement;
NOW, THEREFORE, the Assignor and Assignee, intending to be legally bound, agree
to undertake designing, manufacturing, and selling or otherwise commercializing
the Xxxxxxxx Technology upon the following terms and conditions:
1. Definitions
3
4
a. "Assigned Scientific Knowledge" means unpatented proprietary scientific
information disclosed to Assignee by the Assignor, and useful in identifying and
optimizing the basic physical and chemical effects underlying the Assigned
Products or performing Assigned Services.
b. "Assigned Know-how" means unpatented proprietary technical, professional, or
commercial information disclosed to Assignee by the Assignor, and useful in
designing, making or using Assigned Products or performing Assigned Services.
c. "Assigned Patent" means any patent or patent application Assigned to TTL
herein and containing a claim defining the composition, design, machine,
process, product by process, manufacturing, structure, operation, or use of the
Xxxxxxxx Technology subject matter, insofar as owned or licensable by Assignor
and so Assigned to TTL in or for the Assigned Territory.
d. "Assigned Product" means product or related composition whose production,
structure, or use embodies any Assigned Scientific Knowledge and Know-how, is
defined by a claim of a Assigned Patent or disclosed patent application and/or
would infringe a Assigned Patent in the absence of this Agreement, or displays
or is commercialized by a Assigned Trademark.
e. "Assigned Service" means any designing, making, specifying, or any
instruction, leasing, or performance of other services relating to any Assigned
Product for, to, or with a customer or other party, whether for compensation or
not.
f. "Assigned Specification" means any requirement or standard identified by the
Assignor to Assignee relating to composition, design, manufacturing method,
structure, workmanship and/or resulting appearance, form, identity, quality, or
presentation of an Assigned Product or a Assigned System,
g. "Assigned System" means any apparatus, assembly, device, or structure for
producing or using an Assigned Product, with or for use with (or without) other
accessories.
h. "Assigned Trademark" Xxxxxxxx'x Magnetiona, Xxxxxxxx'x MagneGasa, Xxxxxxxx'x
PlasmaArcFlowa Technology, Xxxxxxxx'x Magneculesa, Xxxxxxxx'x Magneliquidsa,
or other word and/or design, used with or without any other word and/or design,
in or as a brand name for Assigned Products or Assigned Services or Assigned
Systems.
i. "Improvement" means any substantial change in any foregoing defined item (a
to h) during this Agreement, whether made by the Assignor or by TTL, or both, or
otherwise owned and/or assignable by either of them to the other.
4
5
j. "Assignment Term" means the duration of this Agreement which shall be: the
same as the duration of all patents, trademarks or other similar devices plus a
period of five years following the expiration of Assigned Patents; or a period
of then years following the final denial of a in a given country, as more
appropriatedly specified below.
k. "Assigned Territory" means worldwide.
l. "Common Shares" means the $.001 par value Common Stock of Xxxxx Technology
Licensing, Inc. as may be legally issued.
m. "Xxxxxxxx Technology" or "Assigned Technology" means US Patents pending:
(i) number 09/133,348 filed 8/13/98 New Chemical Species for Gases and Their New
Technologies by X. X. Xxxxxxxx;
(ii) number 09/372,277 filed 8/11/99 Durable and Efficient Equipment for the
Production of a Combustible and Non-Pollutant Gas From Underwater Arcs and
Methods Thereof by X. X. Xxxxxxxx;
(iii) number 09/372,278 filed 8/11/99 MagneGas, a Novel, Highly Efficient,
Nonpollutant, Oxygen Rich and Cost Competitive Combustible Gas and Associated
Method by X. X. Xxxxxxxx; and
(iv) A new method for the recycling contaminated waters via the PlasmaArcFlow
technology, unsder preparation, by X. X. Xxxxxxxx.
n. "Assignor" means Xx. Xxxxxxx Xxxxx Xxxxxxxx, Hadronic Press, Inc., and The
Institute for Basic Research, Inc., and any and all other persons, entities or
others who are now and who may become co-patent owners, either through invention
or assignment or otherwise, of the Xxxxxxxx Technology.
o. "Assignee" shall means Xxxxx Technology Licensing, Inc., a Florida
Corporation which may also be abbreviated as "TTL."
2. License and Sublicenses
a. The Assignor hereby grants to the Assignee, for the Assignment Term only, an
indivisible, right and assignment to make, use, lease, sell, and otherwise
practice commercially the defined Assigned subject matter.
5
6
b. So long as Assignee is in good standing under this Agreement, this grant is
to be exclusive on a world-wide basis, meaning that the Assignor will not grant
any third party a similar assignment in the Assignment Territory.
c. TTL shall have the right to apply any Assigned Trademark to Assigned Products
and other components sold by TTL for construction of Assigned Systems, but TTL.
shall use Assigned Trademarks only in accordance with acceptable trademark
practice and subject to the provisions of this Agreement.
d. TTL customers will have an implied sublicense to assemble Assigned Products
into Assigned Systems, with or without other components.
e. TTL may grant sublicenses under this Agreement. In the event the Assignee
shall grant any sublicenses under this Exclusive Agreement anywhere in the
world.
3. License Term
a. Unless sooner terminated as provided herein, this Assignment Agreement will
continue for a period equal to the expiration date of any and all patents or
other devices enumerated heretofore as a part of the Assigned subject matter.
b. The Assignment Term shall be until the Assignor gives TTL notice that TTL is
no longer in good standing because of a specified breach or default of one or
more of TTL's obligations under this Agreement; TTL shall have the right to
remedy any such breach or default within forty-five (45) days thereafter to
return to good standing as to such breach or default. Likewise, if the Assignor
should be in breach or default of one or more of Assignor's obligations under
this Agreement, the Assignor shall have the right to remedy any such breach or
default within forty-five (45) days thereafter to return to good standing as to
such breach or default.
c. Obligations of this Agreement that are indicated as surviving beyond the end
of this Assignment Agreement shall continue for such time period as may be
lawful, despite notice by either party to the other of an election to
discontinue either party's participation in or under this Agreement.
d. The Term of this Agreement, if not sooner ended by the act of a party or the
operation of law, shall end upon expiration of the last to expire of the
Assigned Patents, if any, except as TTL is using a Xxxxxxxx Technology
trademark, or otherwise as noted below.
4. Confidentiality
6
7
a. To the extent that TTL receives Assigned Scientific Knowledge and Know-how,
or either party becomes aware of other proprietary information from the other
party via their relationship pursuant to this Agreement, each recipient of such
information will hold it in confidence so long as the other party effectively
treats it as confidential, except as specific information becomes public
knowledge otherwise than by or from TTL.
b. The foregoing obligation to keep proprietary information confidential and to
safeguard it within the organization of a party will survive any termination of
this Agreement to the extent that such information is not common trade
knowledge.
5. Assignment Activation
a. TTL shall make available facilities, equipment, and resources for the
Xxxxxxxx Technology design, development, and marketing purposes during the term
of this Agreement in order to enable the equipment and resultant products to be
analyzed, tested, and (as soon as feasible) to be demonstrated to prospective
customers, investors, and other interested persons.
b. The Assignor will provide the Xxxxxxxx Technology Assigned Scientific
Knowledge and Know-how to TTL from time to time as may be appropriate and will
participate regularly as a technical consultant relating to the Xxxxxxxx
Technology design, development, testing, and marketing, as TTL deems desirable.
6. Royalties
a. The Royalty rate for Assigned Product, Assigned Services, and Assigned
Systems is three percent (3%) of the gross proceeds of all that TTL receives in
money or other things of value for leasing, servicing, selling, or otherwise
commercializing the same, said royalty to be payable on a quaterly calendar
basis.
b. Royalty accrues upon invoice, lease, sale, or service by TTL but shall not be
payable until TTL's receipt of payment therefor and shall be without any
deduction from TTL's actual total revenue therefrom, except for customers'
related costs (such as insurance, shipping, or taxes) and then only if so
itemized on TTL's invoices to them.
c. Royalty payable for any given month becomes due at the end of the then
current calendar quarter, and shall be paid, according to item 6b hereinabove,
during the first month of the next calendar quarter, or will become overdue on
the first day of the next month.
7
8
d. As a part of Assignor's Royalties hereunder, upon signing this Agreement, TTL
shall cause to issue 75,000 shares of the Company's Common Shares Said Shares
shall be fully vested upon receipL Thereafter, TTL undertakes to bear all
expenses to cause for the registration of such Common Shares according to
applicable federal and state securities registration requirements within a
reasonable time following the execution of this Agreement.
e. As a part of the Assignor's Royalty, TTL shall grant an option for the
purchase of 150,000 Common Shares at $ 0.375 per share.
f. In the event one or all Patent Applications #1, #2 and #3 are not granted by
the U.S. Patent Office following due diligence by TTL patent attorneys and
representatives, TTL agrees to keep paying to HPI three percent (3%) of gross
revenues on sales and services on "Xxxxxxxx'x Magnegas" as set forth in
Paragraph 2.1, for the duration of ten years following the final denial of a
patent by the U. S. Patent Office, such payments in the absence of patents being
due in view of the aforementioned crucial importance of the scientific
background antechnical know-how acquired by TTL for the industrial development
of "Xxxxxxxx'x Magnegas", which scientific background and technical know-how are
independent from the granting of patents by the U. S. Patent Office on Patent
Applications #1, #2, and #3.
g. This License Agreement anticipates that a series of products shall be
developed such as desalinization of seawater, sewage recycling, liquid recycling
and other pieces of equipment designed for a specific purpose. As each such
mechanical device is deemed ready for commercialization, and independently from
the initiation of sales, the Company shall issue to the Assignor an option for
the purchase of 50,000 of its Common Shares at the "fair market value" defined
as the average of the closing "bid" price of the Company's Common Shares for the
five day period preceding the day in which said mechanical devices are declared
ready for commercialization. New product ready for commercialization shall mean
the first-time sale of a device with a particular application and shall not
include subsequent improvements or models of equipment designed for essentially
the same purpose as any equipment which shall meet the definition of "new
product ready for commercialization" as that term is herein defined.
h. All licenses granted by TTL anywhere in the world are conditioned upon TTL
paying to HPI: 1) Fifteen percent (15%) of all down payments in cash originating
from the granted of said licenses; 2) The equivalent in cash or in stock of five
percent (5%) of all TTL stock purchased by said licensees as direct part of said
license agreements; and 3) three percent (3%) of gross revenues on all sales, or
leases, or services for products manufactured and sold by said TTL licensee on
"Xxxxxxxx'x Magnegas" said gross percentage referring to all sales, or leases,
or services based in all or in part on the aforementioned rights on "Xxxxxxxx'x
MagneGas", related patent applications #1, #2, and #3, scientific
background, and technical know-how. Finally,
8
9
TTL has the obligation to provide HPI with a copy of all licenses granted
anywhere in the world on "Xxxxxxxx'x Magnegas", or on the related technology and
know-how, immediately following their signature, and as part of the closing
procedures themselves.
i. In the event, following due diligence by TTL patent attorneys, one or all
Patent Applications #1, #2 and #3 are not granted by the Patent Office of any
given foreign countries in which TTL has a license on "Xxxxxxxx'x Magnegas", TTL
licensees agrees to keep paying to HPI one and one-half percent (1-1/2%) of
gross revenues on sales, leases and services on "Xxxxxxxx'x Magnegas" as set
forth in Paragraph 2.3, for the duration of ten years following the final denial
of a patent by the Patent Office in the country under license, such payments in
the absence of patents being due in view of the aforementioned crucial
importance of the scientific background and technical know-how acquired by TTL
licensees for the industrial development of "Xxxxxxxx'x Magnegas", which
scientific background and technical know-how are independent from the granting
of patents by the Patent Office of the country under license on Patent
Applications #1, #2, and #3.
j. TTL shall reimburse to Assignor on or before December 31 2000, all
documented expenses sustained by Assignor for the partial payment of the
automatic feeder and/or other equipment, which amount is $4,800 and which is
currently used by TTL in demonstrations, developments and other uses of
"Xxxxxxxx Magnegas", and various miscellaneous purchases of parts related to the
same.
k. TTL and all its licensees, assignees, or nominees shall acknowledge the
scientific paternity of Magnegas by Xxxxxxxx, and use the terms "Xxxxxxxx'x
Magnegas" in: , in production labels of all equipment and related manuals;
headings of official communications, press releases, Web Sites; and other
documents, whenever appropriate.
j. TTL acknowledges that Xxxxxxxx is free to conduct research and development on
technologies and products not competitive to, or in conflict with those under
development, or already developed by TTL. New patent applications, scientific
backgrounds, and technical knowledge in developments, technologies and
applications other than those pertaining to "Xxxxxxxx'x MagneGas" which may
arise under the Scientific Consultant Agreement renewed on December 24, 1999,
are not part of said Scientific Consultant Agreement and its related
compensations.
7. Payments and Reports
a. TTL will report to Assignor, all Royalty for each calendar quarter of the
Assignment Term during the first month of the next ensuing calendar quarter and
may include with each such report full payment of royalty due for (and reported
for) the preceding quarter's operations.
9
10
b. Quarterly and annual royalty reports will be signed and be certified as
accurate and complete by an authorized officer of TTL.
c. TTL will keep accurate and complete records of all business done pursuant to
this Agreement and will make such records available to Assignor, no more than
two (2) persons at once-for inspection during regular business hours, upon at
least three (3) business days' advance notice, to determine Royalties accrued
and paid or unpaid, and any other information due hereunder.
d. The Assignor may cause an audit to be made of the applicable records in order
to verify statement for Royalties made hereunder. Any audits shall be conducted
by an independent certified public accountant, acceptable to both parties, and
shall be conducted during regular business hours at TTL's offices.
e. The Assignor shall bear the expenses of any such audit unless such audit
reveals that the Royalties paid by TTL under this Agreement for the Period
subject to the audit are less than ninety-five percent (95%) of the amount owed
by TTL for such period. In such event, the costs of the audit shall be borne by
TTL, in addition and without limitation to any right of remedy Assignor may
have, TTL agrees to pay the balance of such royalties due the Assignor within
forty-five (45) days after written notice is delivered of TTL's understatement
of Royalties due. Furthermore, TTL shall pay interest on all understated
Royalties at a rate of 1.5% per month or lesser amount as mandated by law,
computed from the day on which said Royalties were due and owing to the
Assignor.
f. Refusal by TTL to report or to pay Royalty, or to maintain or make available
records of business done hereunder, will forfeit TTL's good standing under this
Agreement, if not remedied within forty-five (45) days.
8. Processing Patents and Trademarks
a. TTL shall provide due diligence and best efforts to secure the granting of
patents from the U. S. Patent Office from the Patent Applications currently on
record on the Xxxxxxxx Technology as identified above.
b. On or before June 12, 2000, Assignor shall prepare, and TTL shall file at
least the following three patent applications,
(i) the new chemical species of Magnecules for gases;
(ii) the new PlasmaArcFlow methods for the production of Magnegas; and
(iii) the new PlasmaArcFlow method for the recycling of contaminated water;
10
11
in the following foreign countries:
1) European Common Market;
2) Japan;
3) Australia;
4) Canada;
5) Mexico;
6) Venezuela;
7) Brasil;
8) Argentina;
9) So. Africa;
10) Taiwan;
11) India;
12) Russia
13) China.
c. All costs for the filing and securing of patents on the Xxxxxxxx Technology
in the U.S.A. and in foreign countries shall be paid by TTL.
d. On or before December 31, 2000, TTL shall file at the Trademark and Patent
office in the US and in representative foreign countries for the following
Trademarks:
1) PlasmaArcFlow:
2) Magnegas;
3) Magneliquid;
e. All costs for the securing of trademarks on the Xxxxxxxx Technology in the
U.S.A. and Abroad shall be paid by TTL.
f. It is the intention of TTL to eventually file foreign patents in all
countries throughout the world.
g. In the event TTL is unable to file for any or all of of the aforesaid three
patents (i), (ii) and (iii) in any or all of the above listed foreign countries
1) to 13), TTL shall so notify Assignor in writing on or before May 12, 2000;
Assignor has then the option to file said foreign patent application(s) at his
own costs and such costs shall be fully reimbursed by TTL.
h. In the event TTL elects not to apply for the aforesaid Trademarks 1), 2) and
3) on the Xxxxxxxx Technology, TTL should so notify the Assignor on or before
November 31, 2000; TTL will then forfeit the use of the Trademark(s) not applied
for; and Assignor has then the option to apply for the aforesaid Trademarks.
11
12
9. Improvements
a. Any new composition, design, product, or service conducive to third party
competition with Assigned Product or Assigned Services or Assigned Systems,
invented or otherwise coming under the control of either party during the
Assignment Term, is deemed an "Improvement" and such party will disclose the
same to the other party promptly and in enough detail to enable the other party
to elect whether to have such Improvement included hereunder.
b. As to any such Improvement by either party, either party may elect to have
such Improvement included hereunder, within three (3) months after first
knowledge thereof, without change in Royalty, by promptly notifying the other
party of an election to do so; and the party that made or acquired such
Improvement need do no more if both parties fail to elect to include the
Improvement.
c. The originating party of an elected Improvement that appears possibly
patentable after a competent prior art search, will file and prosecute a patent
application thereon, and may discontinue prosecuting it or maintaining any
resulting patent, but only after giving the other party notice of such intention
plus ample opportunity to take such (or equivalent) action at its own sole
future discretion and expense.
d. If either party so elects to have any given Improvement included under this
Agreement, the electing party in doing so will become obligated to pay one-half
(1/2) the expense of undertaking to patent it within the Assigned Territory,
whereas the other one-half (1/2) of any such patent expense will be the
obligation of the originating party, whether or not the electing and originating
parties are the same, except that if TTL elects not to participate in the
payment of an Improvement made by the Assignor to be included, TTL shall not be
obligated to do so.
e. If the parties have joint inventorship/ownership patent rights in an issued
Improvement patent, the parties will share equally the related ownership rights
and expenses including any official patent maintenance fees for any one
Improvement patent. The parties need not exercise Improvement patent rights,
except as this Agreement may provide, nor need either party account to the other
party for any lawful activity regarding such patent rights outside this
Agreement.
f. The parties recognize that well-based differences may arise with regard to
origination of any given Improvement and that as to U.S. patents the
determination of inventorship and of patentability is exclusively within the
jurisdiction of the U.S. Patent and Trademark Office and the Federal Courts.
Unless the parties are/have joint inventors or successor(s) thereto and hence
12
13
are joint owners, they specifically agree that for any Improvement patent
application and for any resulting patent for an Improvement elected by either
party to be included hereunder, regardless of inventorship, the Improvement
originating or otherwise acquiring party will grant to the other party (if that
other party so elects) an unrestricted paid-up (free) license to practice the
Improvement for the Assignment Term, if such practice of it would not violate
any non-elected prior patent of the grantor-Assignor.
g. Each party's foregoing Improvement rights are executory in nature, including
the right to be informed of any Improvement by the other party, and to elect an
Improvement for inclusion hereunder (or not), and including rights to ongoing
prosecution of patent applications and maintenance of patents by an originating
party of an elected Improvement, and receipt of license or ownership rights
thereunder.
10. Infringement Rights
a. In the event one or all patents pending set forth under the definition
"Xxxxxxxx Technology" are not granted by the US Patent Office, TTL agrees to be
bound by the terms of this License Agreement, including the payment of all
Royalties and granting of all new product Common Stock Options for a period of
ten years following notification of such patent-pending denial. Each party shall
notify the other in writing at such time as any Xxxxxxxx Technology patent is
issued or denied.
b. In the event that TTL's commercialization of any Assigned Product, Assigned
Service, or Assigned System is accused of infringing a proprietary right of any
third party, the parties will cooperate in attempting to avoid such infringement
or to prove lack of infringement, and so long as TTL's license hereunder is
exclusive to the extent set forth above, TTL will have a right, but not an
obligation, to defend or assist in defending against any infringement action
brought by a third party, and shall have also the obligation to pay one-half
(1/2) of the costs of doing so, except as either party may voluntarily pay more
thereof incidental to participation therein.
c. Neither party will be liable to the other paty if unable or unwilling to
continue this Agreement because of such infringement of third-party rights, and
in that event TTL will cease commercializing Assigned Products, Assigned
Services, and Assigned Systems, and TTL will relinquish its rights hereunder in
that event, and thereby terminate its Royalty and attendant obligations to the
Assignor.
d. In the event that the activities of any third party are asserted (or
otherwise appear) to infringe an intellectual property right Assigned to TTL
hereunder, the parties will cooperate in attempting
13
14
to ascertain and to xxxxx such infringement. So long as TTL's Assignment
hereunder is exclusive to the extent set forth above, TTL will have a prior
right, but not an obligation, to xxxxx such infringement, whether by litigation
or otherwise, subject to paying all the costs of doing so other than such costs
or expenses as the Assignor may voluntarily pay incidental thereto or to
participation therein. Any moneys recovered from a third-party infringer will be
retained by the parties, prorated to their expenditures after determining what
portion of moneys recovered are due the Assignor as part of any Royalty, whose
action(s) had such result.
e. If third-party infringement is not abated, TTL may elect to continue as a
non-exclusive Assignee under this Agreement as its sole remedy, or alternatively
TTL may discontinue its license and cease royalty payments as its sole remedy.
11. Assurances
a. The Assignor assures TTL of its origination of the inventions and guarantee
TTL of the Assignor's invention priority to their best knowledge.
b. The Assignor warrants ownership to their best knowledge of the Assigned
Products and Assigned Services, in the specific sense that the Assignor has no
reason to believe that any third party has any right to prevent either the
Assignor or Assignee from practicing any Assigned Invention, or from using any
Assigned Trademark, as provided in this Agreement, and Assignor warrant such
practice or usage as noninfringing of third-party rights.
c The Assignor will instruct and/or assist TTL's personnel in design,
manufacturing, quality standards, testing, distribution, marketing, and sale, as
well as proper marking, of Assigned Product and Assigned Systems, and Assignor
will provide Assigned Know-how in doing so, as may be applicable.
d. The Assignor will have no liability whatever to TTL for TTL's actions or
inactions under this Agreement, and TTL will save the Assignor harmless against
any liability to third parties whether based upon agency, contract, negligence,
product liability, or other basis-for any claim based on action or inaction of
TTL relating to Assigned Products, Services, or Systems.
12. Product Marking
a. TTL will xxxx on Assigned Products (or containers) each patent number
applicable thereto upon being advised thereof by the Assignor. In the absence of
patents, TTL shall be under no product marking obligations relating to any use
of the Xxxxxxxx Technology, except for the identification of paternity as per
paragraph 6.j.
14
15
b. TTL will display a Assigned Trademark (if elected) on all Assigned Products
and in advertising copy, brochures, and publications by or for TTL about
Assigned Product. TTL will not use any Assigned Trademark in or as a trade name
(i) if not elected, or (ii) if elected, after TTL discontinues (or other
termination of) TTL's license under thisAgreement.
c. TTL will not make any material change in materials, production methods, or
otherwise that might affect the nature or quality of any the Xxxxxxxx Technology
product or service, without advance notice to the Assignor
g. If TTL elects to use one or more Assigned Trademark(s), TTL will display one
thereof on each container of Assigned Product made by or for it, and in all
Assigned Product advertising copy, product brochures, press releases, and
publications by or for TTL about Assigned Product plus the generic name of the
goods, together with occasional notice that such Trademark is the property of
the Assignor.
13. Termination
a. This Agreement may only be terminated according to law or in the event of a
specific breach of the terms and conditions herein set forth including but not
limited to the payment of royalties. Any breach of this Agreement shall require
the party which assets such breach to notify the other party and allow for a
period of forty-five days to effect a cure of any such breach.
b. Upon termination, TTL will refrain from exercising thereafter any right it
had by license hereunder, such as practicing the invention of any previously
Assigned Patent, or using a Assigned Trademark or confusingly similar
expression.
c. Whenever TTL is not in good standing hereunder, the Assignor may render TTL's
Assignment wholly non-exclusive, or if it is already non-exclusive for a prior
breach or default the Assignor may terminate TTL's rights hereunder, in the
absence of specific curative provisions for TTL's breach or default, or if TTL
has had an opportunity to comply such a curative provisions and failed or
refused to do so.
d. If either party becomes, or would become, disabled as by the other party's
choosing, or being subjected to, an act or a procedure for relief of debtors
from enforcing compliance with a given executory obligation of the other party
hereunder (e.g., compliance with standards, action with regard to infringers,
offer of Improvements) the thus disabled party may deem this Agreement and the
license and other rights under this Agreement terminated.
15
16
e. No inaction or overlooking by the Assignor or Assignee of any condition or
provision of this Agreement or of any breach or default thereof either party
shall be deemed to imply or to constitute a future waiver of any similar breach
or default of the same or other condition/provision.
f. This Agreement is automatically terminated in the event of TTL financial
insolvency and banktuptcy, in which case Assignor re-acquires the complete
rights granted hereinunder.
g. This Agreement is also automatically terminated in the event TTL has no sales
for the continuous duration of two years, in which case Assignor re-acquires
the entire rights granted hereinunder.
14. Notices
a. If to Assignor
The Institute for Basic Research
00 Xxxxxxxxx Xxxxx
Xxxx Xxxxxx, Xxxxxxx 00000
Hadronic Press, Inc.
35246 XX 00 Xx.
XXX 000
Xxxxx, Xxxxxxx 00000
Xx. Xxxxxxx Xxxxxxxx
00 Xxxxxxxxx Xxxxx
Xxxx Xxxxxx, Xxxxxxx 00000
b. If to Assignee
Xxxxx Technology Licensing, Inc.
0000 Xxxxx Xxxxx Xxxx
Xxxxx, Xxxxxxx 00000
15. Miscellaneous
a. If any one or more provision(s) or effect(s) of this Agreement should prove
to be invalid or unenforceable, and the Agreement be otherwise valid and
enforceable, the invalid or
16
17
unenforceable provision or portion thereof will be severed, and the remainder of
the Agreement be and remain valid and enforceable to the fullest extent
permitted by applicable law.
b. This Agreement is made for the benefit of the parties, their heirs,
successors, and assigns, and any other person or legal entity named in any
provision hereof, and not made to give any unnamed person or legal entity any
right of action whatever.
c. Each statement made in this Agreement is deemed material, and each party is
entitled to rely, and deemed to have relied, upon the truth and correctness
thereof in entering into this Agreement.
d. Each party acknowledges that he has received advice of independent counsel of
choice as to the inducements, provisions, and terms of this Agreement, and their
effect, whereupon entering into this Agreement is each party's free and
independent act.
e. This Agreement is to be governed by Federal law to whatever extent a
proprietary right granted by the United States is involved, and otherwise by
Florida law, except as activities of a party in any other State render that
other State's law applicable.
f. In the event that any action or proceeding is brought to enforce any of the
terms and conditions of this Agreement, then the party in whose favor relief is
granted and/or judgment is entered shall be entitled to have and recover from
the other party or parties all costs, prejudgement interest, and reasonable
attorney's fees incurred in connection with the enforcement action.
g. Notice to be given under this Agreement will be in writing and be addressed
to the other party at the address of such party hereinabove, unless such address
has been superseded by like notice, whereupon the latest noticed address thereof
is to be used. Notice will be effective when delivered to the addressee, or-if
not a change of address-when sent by Express or Registered Mail so addressed.
h. This Agreement sets forth the entire intent and understanding of the parties
with regard to the subject matter hereof, and merges any prior negotiations or
agreements by the parties as to such subject matter, and no addition, deletion,
or other modification of the wording hereof may be made except in writing
subsequent hereto and signed by the party or parties to be bound thereby.
i. This Agreement supersedes the Letter of Intent dated October 26, 1999, on and
between the Assignor and the Assignee, which Letter of Intent is, therefore,
null and void.
17
18
IN WITNESS WHEREOF the parties have caused this Agreement to be signed, sealed,
and attested by persons duly authorized so to do, as of the date first stated
hereinabove.
For Hadronic Press, Inc. For Xx. Xxxxxxx Xxxxxxxx
/s/ Xxxxx Xxxxxxxx, President Feb 3, 2000 /s/ Ruggero Xxxxx Xxxxxxxx Feb 3, 2000
------------------------------------------ ---------------------------------------
Xxxxx Xxxxxxxx, Date Ruggero Xxxxx Xxxxxxxx Date
President and CEO
For The Institute for For Xxxxx Technology
Basic Research Licensing, Inc.
/s/ Ruggero Xxxxx Xxxxxxxx Feb 3, 2000 /s/ Xxxx X. Xxxxx 2-3-00
------------------------------------------ ---------------------------------------
Ruggero Xxxxx Xxxxxxxx, Date Xxxx X. Xxxxx,
President and CEO President and CEO
18
