Exhibit 10.1
LICENSE AGREEMENT
This LICENSE AGREEMENT, made as of the 9th day of August 2005, by and
between OVATION PRODUCTS CORPORATION, a Delaware corporation having its
principal place of business at 000 Xxxx Xxxxxxxxx Xxxx, Xxxxxx, Xxx
Xxxxxxxxx 00000 (hereinafter referred to as "Licensor"), GREENSHIFT
INDUSTRIAL DESIGN CORPORATION, a Delaware corporation having its principal
place of business at 000 Xxxxxx Xxxx, Xxxxx 000, Xxxxx Xxxxxxxxx, Xxx
Xxxxxx 00000 (hereinafter referred to as "GreenShift" or "Licensee").
BACKGROUND
WHEREAS, Licensor has invented new patented and patent-pending
implementations of a vapor compression water distillate process and a new
Clean Water Appliance (collectively, the "Invention"), with possible
applications in activities relating to the GreenShift Applications, as
such term is hereinafter defined; and,
WHEREAS, GreenShift wishes to develop and market the Invention for
activities relating to the GreenShift Applications.
NOW, THEREFORE, intending to be legally bound, and in consideration of the
mutual covenants contained herein, the parties hereby agree as follows:
1. Definitions
(a) "Patent Rights" shall mean the: (i) United States
Patents and United States Patent Applications described and included in
Exhibit A, attached hereto, and any United States Patents that issues
therefrom; (ii) any United States Letters Patent now owned or controlled
by Licensor or Inventor under which Licensor or Inventor has the right to
grant licenses that are related to the technology described in the Letters
Patent or that incorporate or improve upon such United States Letters
Patent; and (iii) any division, reissues, continuations-in-part, and
extensions of the foregoing now owned, or which may be owned, by Licensor
or Inventor or under which they now have, or may in the future have, the
right to grant licenses and shall include Foreign Patent Rights. "Foreign
Patent Rights" shall mean all letters patent claiming priority from or
based upon the Patent Rights and recognized in jurisdictions where the
Patent Rights are not, without further action, recognized, and which
provide the protection and benefits to the holder thereof substantially
the same as the holder of the Patent Rights enjoys in the United States.
(b) "GreenShift Applications" shall mean any and all
applications relating to GreenShift Wastes and By-Products and GreenShift
Advanced Applications (as such terms are defined below) and shall exclude
all other applications, including but not limited to, CERTAIN PRE-EXISTING
APPLICATIONS FOR WHICH LICENSES HAVE ALREADY BEEN GRANTED OR WHICH
LICENSOR HAS TARGETED, AS SET FORTH ON EXHIBIT B, ATTACHED HERETO:
(c) "GreenShift Wastes and By-products" shall be limited
to the following:
(i) Hazardous Wastes. Wastes that are hazardous or
otherwise harmful to human and animal health and
the environment, including medical or other
biologically active wastes;
(ii) Xxxxxxxxxx Wastes. Wastes that derive from
environmentally impaired real property, including
fixtures on or any appurtenances to such
property;
(iii) Municipal Solid Wastes. Wastes that derive from
the centralized processing, storage, disposal
and/or incineration of by-products, garbage,
trash or other discarded materials;
(iv) Human Waste. Wastes that derive from the
centralized processing of sewage at municipal or
other sewage treatment plants;
(v) Agricultural Waste. Wastes that derive from
farming activities, including the production of
crops and raising livestock, and including septic
wastes and other wastewaters deriving from
livestock and meat processing;
(vi) Food Service Waste. Wastes that derive from the
preparation of food and other related activity at
establishments that prepare and/or serve food;
(vii) Mining Wastes. Wastes that are or derive from
mining activity, mining tailings and/or acid mine
drainage;
(viii) Commercial Real Estate Development. Products for
the processing and purification of dirty water
for residents of multi-family buildings, hotels,
and/or commercial office buildings having a
minimum of fifty (50) separate apartments,
dwellings, rooms or other units and are located
in Boston, Providence, New York City,
Philadelphia, Washington D.C., Miami, New
Orleans, Houston, San Francisco, Seattle, Las
Vegas, Denver and/or Chicago;
(ix) Golf Courses. Products for the processing and
purification of dirty water for reuse for and at
golf courses; and
(x) Refining. Products and applications involving the
distillation and/or refining of inorganic and/or
organic liquids and gases with the purpose of
preferentially separating and/or removing
targeted constituents.
(d) "GreenShift Advanced Applications" shall be limited to
the following:
(i) Survival Gear. Portable products for the
processing of dirty water into water that is
safe for consumption and/or other use;
(ii) Fuel Cells. Products for the removal of
impurities from or other preparation of water or
other liquids for use in fuel cells and/or other
portable energy generation devices;
(iii) Ocean Exploration. Products for the processing
waste or other materials into water that is safe
for consumption or other use for all applica-
tions relating to subsurface ocean transporta-
tion and exploration; and,
(iv) Space Exploration. Products for the processing
waste or other materials into water that is safe
for consumption or other use for all applica-
tions relating to space or space exploration.
(e) "Market Segment" shall mean each individual application
listed above in Sections 1(c) and 1(d) above, i.e., "Hazardous Waste" in
Section 1(c)(i) is one specific Market Segment and so on.
2. License
(a) Non-Exclusive Grant. Under the terms and conditions
hereof, Licensor hereby grants to the Licensee a NON-EXCLUSIVE (except as
otherwise limited herein) license to the Invention, the Patent Rights
(including any Foreign Patent Rights), now held or hereafter acquired, to
develop, invent, make or have made, use, promote, distribute, sell and
sub-license the Invention, and to use and sub-license the Invention, the
Patent Rights and the technology and inventions inherent therein for
GreenShift Applications involving the GreenShift Wastes and By-Products
set forth above within the Territory defined below; provided, however,
that GreenShift may only sublicense the Invention and Patent Rights and
the technology and inventions inherent therein to GreenShift portfolio
companies and affiliates and only for so long as they remain portfolio
companies and affiliates Hereinafter the foregoing grant license, taken
in conjunction with the grant in Section 2(b) below, is referred to as the
"License." For the purposes of this Agreement, the term "portfolio
companies and affiliates" shall mean GreenShift Corporation and any
company in which the Licensee or GreenShift Corporation owns more that 15%
of the outstanding equity interests.
(b) Exclusive Grant. Under the terms and conditions
hereof, Licensor hereby grants to the Licensee an EXCLUSIVE (except as
otherwise limited herein including existing obligations to WMS Enterprises
under the Restated License Agreement dated June 30, 2004) license to the
Invention, the Patent Rights (including any Foreign Patent Rights), now
held or hereafter acquired, to develop, invent, make or have made, use,
promote, distribute, sell and sub-license the Invention, and to use and
sub-license the Invention, the Patent Rights and the technology and
inventions inherent therein for GreenShift Applications involving the
GreenShift Advanced Applications, and excluding GreenShift Applications
involving the GreenShift Wastes and By-Products, set forth above within
the Territory defined below; provided, however, that GreenShift may only
sublicense the Invention and Patent Rights and the technology and inventions
inherent therein to GreenShift portfolio companies and affiliates and only
for so long as they remain portfolio companies and affiliates. Hereinafter
the foregoing grant license, taken in conjunction with the grant in Section
2(a) above, is referred to as the "License."
(i) Exclusion - Direct Development. The Licensor
shall retain the right to directly sell products and/or provide services to
third parties for any of the GreenShift Advanced Applications provided
that, in any such instance, Licensor shall pay Licensee the royalties on
the same basis as the Licensee is obligated to pay Licensor hereunder, as
specified in Section 2(d) below.
(ii) Exclusion - Other Third Party Licenses. The
Licensor shall have the right to enter into license or distribution
agreements, on a non-exclusive basis, with a maximum of three (3) third
parties per Market Segment listed in Section 1(d) above, provided that, in
any such instance the Licensor shall pay Licensee royalties equal to TEN
PERCENT (10%) of any royalties paid to Licensor and TWO PERCENT (2%) of
any product or service sales revenues paid to Licensor under any such
third party license or distribution agreements.
(c) Territory. The Territory to which this exclusive
License applies is the maximum territory possible (the "Territory"); the
Licensor, Licensee and Inventor agree and acknowledge that the term
"Territory" shall, regardless of context, be construed as broadly as
possible.
(d) Royalties. During the term of this Agreement, for all
use by GreenShift of the Inventions, GreenShift shall pay a royalty fee
equal to ONE PERCENT (1%) of service revenue or product sale revenue or
TWENTY PERCENT (20%) of license revenue deriving from the use or license
by GreenShift of the Invention and any and all Developments and
Improvements thereto (the "Royalty Fee").
(e) Manufacturing Rights; License Fee. The Licensee shall
have the option of either purchasing the Clean Water Appliance from the
Licensor or manufacturing, at its expense, Clean Water Appliances and/or
equipment based on the Invention for all GreenShift Applications. If
Licensee purchases the equipment from Licensor, Licensor will sell units
to Licensee at not greater than a 50% gross margin. If Licensee
manufactures the equipment at its own expense, Licensee shall pay
Licensor, in addition to the royalty in 2(d) above, a license fee equal to
an additional NINE PERCENT (9%) of any resale price of the products sold
based on the Invention in the event of product sales, or an additional
NINE PERCENT (9%) of any service revenue relating to the Invention in the
event of the provision of services based on the Invention to third parties
("License Fee"). For the purposes of this agreement "gross margin" shall
mean the difference between the Product Selling Price and Product Cost of
Goods Sold. The "Product Selling Price" shall mean the revenue recorded on
the accounting records of the selling party for sale of a product under
Generally Accepted Accounting Principals (GAAP). The "Product Cost of
Goods Sold" shall mean the fully loaded manufacturing cost recorded on
the accounting records of the selling party under Generally Accepted
Accounting Principals (GAAP).
If Licensee desires to engineer units based on the License, Licensee
shall notify Licensor of its engineering and other needs and the best
pricing offered to Licensee for such engineering needs and permit Licensor
to make a proposal to meet Licensee's needs. Licensor must reply to
Licensee's notice within 5 days of the date of such notice, indicating
whether Licensor accepts or declines to make such proposal. If Licensor
elects to make such proposal, it will submit its proposal within 15 days.
Licensee shall be required to use Licensor to engineer units in the event
that Licensor makes a proposal and the proposal is at least as good to
Licensee as any competing proposal or otherwise at Licensee's reasonable
discretion.
In the event that Licensee outsources manufacturing to any unaffiliated
person or entity, Licensee agrees that it shall not allow any one vendor
to manufacture the Clean Water Appliance or any other product based upon
the Invention as a complete unit and will have the Clean Water Appliance
or any other product based upon the Invention manufactured in not less
than three separate components by not less than three separate vendors and
take any and all reasonable measures to prevent one unaffiliated
manufacturer from manufacturing the Clean Water Appliance or complete
units based on the Invention.
(f) Assignment to Affiliates Permitted. Except as permitted
in this Agreement, the License may not be assigned, or transferred by the
Licensee, without Licensor's prior written consent. The consent of
Licensor shall not be unreasonably withheld if the License is being
transferred to a 15% owned affiliate of Licensee.
(g) Clear Title. Licensor hereby warrants to the Licensee
(i) that it is the owner of the Invention and Patent Rights, free and
clear of liens and encumbrances (other than existing obligations to WMS
Enterprises, Lancy Water Technologies and X.X. Electro Systems ) and it
has full authority and right to grant the License to Licensee, and (ii)
that, to the best of its knowledge, neither the Patent Rights, the
Invention described in the patent application, nor this License infringe
upon the patent, trademark, trade secret, copyright, or other intellectual
or proprietary interests or property rights of any person.
(h) Ownership. Title to and ownership of all proprietary
rights in the Invention, the Patent Rights and the technology and
inventions inherent therein and all related proprietary information shall
at all times remain with Licensor. In the event that Licensee makes a
suggestion to Licensor regarding modifications to the Invention, the
Patent Rights and the technology and inventions inherent therein, such
modifications shall become the sole and exclusive property of Licensor.
(i) Confidentiality. Licensee agrees that it will use
the Invention, the Patent Rights and the technology and inventions inherent
therein only for the purposes permitted hereunder, and that during the
term of this Agreement and for a period of five (5) years thereafter, it
will use the same degree of care in protecting the confidentiality of such
information that it uses to protect its own confidential information of
like importance, that it will not disclose such information to any person
other than its employees, contract employees, agents, accountants and
attorneys, except as otherwise permitted by this Agreement. Licensee
shall be liable for any disclosure by its employees, contract employees,
agents, accountants and attorneys.
3. Markings and Designs
Licensee shall affix to all equipment based on the Invention manufactured
by Licensee, in the place and manner approved by Licensor from time to
time, the following notice: "MANUFACTURED AND DISTRIBUTED UNDER THE
FOLLOWING LICENSED UNITED STATES PATENTS: . . . . (FOLLOWED BY A LIST OF
APPLICABLE UNITED STATES PATENT NUMBERS AND FOREIGN PATENT NUMBERS
INCLUDED IN THE PATENT RIGHTS OR AS OTHERWISE INSTRUCTED BY LICENSOR)."
4. Quality Control
The manufacture and fabrication of all equipment based on the Invention by
or on behalf of the Licensee shall adhere to reasonable standards of
quality, which shall be presumed acceptable to the Licensor absent their
providing written notice to the Licensee detailing quality deficiencies.
In order to assure that the Licensee maintains such quality standards and
further complies with the marking requirements set forth in paragraph 3 of
this Agreement, from time to time during regular business hours, Licensor
shall have the right, but not the obligation, to inspect the equipment
based on the Invention in the process of manufacture, fabrication or
installation, samples of all parts and raw materials used to manufacture
or fabricate the equipment based on the Invention, and the site where the
equipment based on the Invention is manufactured or fabricated or
installed, and if the equipment based on the Invention is not manufactured
or fabricated or installed by Licensee, Licensee shall assure that the
manufacturer or fabricator or installer affords Licensor such inspection
rights.
5. Advertising
The Licensor shall permit, without limitation, Licensee's publishing of
photographs and other reproductions of the Clean Water Appliance and the
Invention, drawings and specifications included with the relevant patent
application, and narrative portions of any work authored by either the
Inventor or Licensor or the Licensee relating to or describing the
Invention or their uses, including but not limited to descriptions and
narratives in any patent application or submittal and in any submission to
the United States Patent Office, the United States Environmental
Protection Agency or any other governmental (Federal State or Municipal)
entity which has jurisdiction over the manufacture, sale, distribution,
promotion or use of the Invention. Licensor hereby grants to Licensee a
limited, royalty-free license to use any such works of authorship for such
purpose within the Territory. Nothing in this License Agreement shall be
construed as conferring upon the Licensee any right to include in
advertising, packaging or other commercial activities related to the
Licensed Patent Rights, any reference to the Licensor, its trade names,
trademarks or service marks in a manner that would be likely to cause
confusion or to indicate that any product manufactured pursuant to the
Licensed Patent Rights is certified by the Licensor.
6. Warranties
Licensor hereby warrants to, or as the case may be covenants with, the
Licensee: (i) that it has full authority and right to grant the License
and to enter into and perform its obligations hereunder, (ii) that the
Patent Rights are valid, and of a duration limited only by national
statutes relating thereto, (iii) that the License is valid (iv) that
neither the Invention, nor the Patent Rights, nor Licensee's rights
hereunder, are known to infringe upon the patent, trademark, license, or
other intellectual property rights of any person, and (v) that no person's
activities as of the date hereof are known to infringe upon the Licensor's
rights under the Patent Rights. Licensor does not warrant and it will be
the responsibility of Licensee to secure all required licenses, approvals,
permits, and authorizations necessary, for Licensee to manufacture, sell
or distribute equipment based on the Invention for the Permitted
Applications contemplated by this License everywhere such equipment based
on the Invention are intended to be manufactured, used, sold, or
distributed as contemplated by this License.
7. Infringement and Invalidation
(a) Licensor or Licensee may take appropriate action to
protect the integrity of the License and to stop infringement by any other
person upon the rights of Licensor and Licensee under the Patent Rights
and the rights of Licensee hereunder. Licensor shall have the primary
right (but not obligation) to bring legal action against a perceived
infringer of the Patent Rights within the Territory and within GreenShift
Applications at Licensor's own expense; provided, however, that if
Licensor fails to do so, Licensee may do so at Licensee's own expense. In
the event either Licensee or Licensor takes any such action, Licensor and
Licensee shall cooperate with each other, participating in any litigation
initiated as reasonably requested and providing oral and written testimony
in connection therewith. If Licensee takes any such action, it shall be
entitled to any and all money damages awarded (or received in settlement)
as a result of any such infringement.
(b) In the event the Patent Rights are invalidated in whole
by reexamination or reissue proceedings in the U.S. Patent and Trademark
Office, or by judgment of a U.S. District Court (which judgment is not
over-turned on appeal) and as a result thereof Licensee's right or ability
to manufacture, develop, sell, or otherwise deal with the Invention under
the terms of this License Agreement is terminated, then Licensee at its
sole election shall be entitled to terminate this Agreement without
further obligation to Licensor.
8. Payment of the Royalties
So long as Licensee is obligated to pay the Royalty Fee under this License
Agreement, the Licensee shall keep an accurate account of all sales,
leases, sub-license agreements, and gross revenues for the applicable
projects and, within 30 days after the end of each calendar year, render
to Licensor yearly gross income statements for the applicable projects to
Licensor, including statements of accrued or estimated Royalty Fees
payable, and Licensee shall pay to the Licensor the amount of the Royalty
Fees payable as and when cash flow permits but no less frequently than
annually and no later than forty-five (45) days following each calendar
year end. So long as Licensee is obligated to pay the License Fee under
this License Agreement, the Licensee shall keep an accurate account of all
sales, leases, sub-license agreements, and gross revenues for the
applicable projects and, within 30 days after the end of each calendar
quarter render to Licensor quarterly gross income statements for the
applicable projects to Licensor, including statements of accrued or
estimated License Fees payable, and Licensee shall pay to the Licensor the
amount of the License Fees payable no later than forty-five (45) days
following each calendar quarter. The Licensor shall have the right, at
Licensor's own expense and not more often than once in any calendar year,
to have an independent certified public accountant acceptable to Licensee
examine the books of the Licensee in relation to the applicable projects
to verify the Royalty Fees and License Fee statements and Royalty Fees,
and License Fees due Licensor pursuant to this License Agreement. If it
is determined after such examination that the Licensee owes the Licensor
additional fees, the Licensee shall reimburse the Licensor for all costs
associated with the examination and collection of funds.
9. Licensee's Operations
In its manufacture and sale of equipment based on the Invention, the
Licensee shall comply with all laws, rules, regulations, and orders
relating thereto, including but not limited to those relating to product
labeling and the exportation and importation of materials and equipment
based on the Invention, as the case may be.
10. Licensor's Obligations
In addition to all other obligations of Licensor hereunder, Licensor shall
either (i) pay all fees and annuities necessary to maintain the Patent
Rights and the Foreign Patent Rights, or (ii) notify Licensee on a timely
basis of its intent not to pay such fees or annuities and to provide
Licensee a reasonable opportunity to pay such maintenance fees or
annuities.
11. Improvements to the Invention
This License shall include future improvements and enhancements in and to
the Invention made by or at the instance of the Licensor or the Licensee
and/or its affiliates, either individually or collectively (referred to
herein as "Developments and Improvements"). So long as Licensee is
obligated to pay Royalty Fees under this License Agreement, if the
Licensor or the Licensee and/or its affiliates, individually or
collectively with others, makes any further improvements or enhancements
in the technology which is the subject of this License, or becomes the
owner of any new improvements or enhancements either through Patents or
otherwise that may improve the Invention, then Licensor or the Inventor
shall communicate such improvements and make them available to the
Licensee and the Licensee shall have the right to include the same within
the scope of the License granted in this Agreement for no additional
consideration. If any such Developments and Improvements are made at the
instance of the Licensee they shall remain the property of Licensor who
shall have the sole right to prepare and submit patent applications for
such Developments and Improvements. Licensee agrees that if so requested,
Licensee shall cooperate with such patent attorneys as Licensor may
designate. If Licensee creates any improvements and enhancements in and
to the Invention, the Licensee hereby grants to the Licensor a perpetual,
non-exclusive, transferable, sub-licensable, royalty free license to such
improvement or enhancement.
12. Term and Termination
(a) This Agreement and the License shall commence on the
date hereof and shall continue until the date which is FIVE (5) years from
the date hereof unless terminated earlier as provided herein.
In order to support such License at all times during the term of this
Agreement, Licensor shall supply GreenShift with copies of any and all
documents indicating its rights to patents, patent applications,
trademarks, copyrights, and any and all other related material that
substantiates Licensor's ability to grant the License to GreenShift to
manufacture and distribute equipment based on the Invention worldwide in
any and all domestic and international markets. Further, if Licensee
hires engineers or a design firm to design for manufacture by Licensee a
product for a GreenShift Application, , upon a written request from
GreenShift specifying the GreenShift Application, Licensor shall also
provide to Licensee any and all drawings, specifications, and any and all
other then-existing material necessary to support manufacture of the
product for the GreenShift Application.. Notwithstanding any provision of
this Agreement to the contrary, the Invention and the License shall be
defined as and shall be deemed to include any and all related trade
secrets and confidential information associated with the Invention and any
and all improvements or enhancements thereon, and accordingly, all such
related trade secrets and confidential information and improvements and
enhancements shall also be included within the scope of the Invention and
within the scope of the License.
Attached hereto as Exhibit "B" and made a part hereof by reference is a
schedule and enumeration of other licenses or other agreements (the "Prior
Licenses") which Licensor has previously granted to third parties with
respect to the Invention.
(b) Performance Benchmark. With respect to each specific
Market Segment, the Licensee's rights hereunder shall, upon reasonable
notice of no less than ninety (90) days, be terminable at will at the
option of Licensor in the event that the Licensee, either itself or
through its affiliated companies, fails to generate more than $100,000 in
revenue in such Market Segment deriving from use of the Invention in that
Market Segment during 2008 or any year thereafter.
(c) If the Licensee at any time defaults in fulfilling any
material obligations hereunder, or under any financing agreement between
Licensor and Licensee or any Licensee portfolio companies and affiliates,
and such default is not cured within thirty (30) days after written notice
thereof is given by Licensor to Licensee, Licensor shall have the right to
terminate this Agreement and the License by giving written notice of
termination to the Licensee.
(d) Licensor shall have the right to terminate this
Agreement and the License by giving written notice of termination to the
Licensee in the event of any one of the following, such termination being
effective upon receipt of such notice, or five days after such notice is
mailed, whichever is earlier: (i) dissolution of the Licensee, (ii)
insolvency or bankruptcy of the Licensee, whether voluntary or involuntary,
(iii) appointment of a trustee or receiver for the Licensee, or (iv) any
assignment by the Licensee for the benefit of its creditors.
(e) Licensee may terminate this License Agreement at any
time for any reason, by giving written notice of termination to the
Licensor, such termination being effective upon receipt of such notice, or
five days after such notice is mailed, whichever is earlier, and have no
further obligation to Licensor after such termination date, and no further
rights or license to the Invention, the Patent Rights and the technology
and inventions inherent therein hereunder and all sublicenses granted by
Licensee shall terminate, with the exception that Licensee must pay the
Royalty Fees and License Fees set forth in Section 2 as long as Revenues
continue to be received from the applicable projects and any other amounts
due to Licensor under this Agreement or under purchase orders.
(f) If this Agreement or the License is terminated for
any reason, thereafter the Licensee shall not manufacture or sell equipment
utilizing the Invention, the Patent Rights and the technology and
inventions inherent therein to any person except that for a period of 90
days after termination of the license by Licensor, the Licensee may sell
equipment based on the Inventions it has contracted to sell or has
manufactured prior to termination and that it has in inventory and, for so
long as any contracts between the Licensee and third parties relating to
the use of the Invention remain in effect, the Licensee may continue to
collect royalty or other income relating to the use of the Invention so
long as any and all Royalty Fees and License Fees payable to Licensor are
paid pursuant to the terms hereof.
13. Buy-out Option
If Licensor is liquidated as a result of bankruptcy, Licensee shall have
an option to pre-pay its royalty obligation under this License Agreement
by paying a fixed royalty sum for the License of two hundred and fifty
thousand dollars ($250,000). Licensor or its transferee shall be
obligated to give Licensee written notice of such transfer, setting forth
the date and manner of transfer and the name and address of the
transferee, and within Ninety (90) days of receiving such notification of
such transfer, Licensee shall notify Licensor and Licensor's transferee of
its intent to exercise this prepayment option, and payment of the
prepayment amount shall be made within Ninety (90) days after the date of
exercise. Upon exercise of this option and tender of the prepayment sum,
Licensee's royalty and License Fee payment obligation hereunder shall be
deemed satisfied in full, and Licensee shall have no further royalty and
License Fee payment obligation under this License Agreement and this
Agreement will otherwise remain in effect except that the exclusive
license rights granted in the Agreement shall henceforth be non-exclusive.
14. Notices
All notices, requests, demands and other communications under this
Agreement shall be given to or be made upon the respective parties as
follows:
If to Licensor: Ovation Products
000 Xxxxxxxxx Xxxx
Xxxxxx, Xxx Xxxxxxxxx 00000
Attn.: President
If to Licensee: GreenShift Industrial Design Corporation
000 Xxxxxx Xxxx., Xxxxx 000
Xxxxx Xxxxxxxxx, Xxx Xxxxxx 00000
Attn: Xxxxx Xxxxxxxx
All notices, requests, demands and other communications given or made in
accordance with the provisions of this Agreement (unless otherwise
specifically provided for herein) shall be in writing, shall be sent by
first class mailing, postage prepaid, Federal Express, United Parcel
Service, or other recognized international third party delivery service,
and shall be deemed to have been given three (3) days after deposited,
postage prepaid, addressed to the parties as specified, with the postal
service or permitted third party delivery service.
15. Miscellaneous
(a) This Agreement shall be binding upon and inure to the
benefit of the parties and their respective successors and assigns.
(b) Licensee may grant sub-licenses to the extent necessary
to sell equipment based on the Invention to its customers for Permitted
Applications in its Territory, and Licensee's customers shall have the
benefit of the License solely for their own use, and manufacturers,
fabricators and installers of the equipment based on the Invention
specifically for Licensee shall have the benefit of the License solely in
connection with their manufacturing, fabrication and installation
operations.
(c) This Agreement shall be considered made in New
Hampshire, and it shall be governed by and construed under the laws of the
United States of America and New Hampshire. In the event of litigation
between the parties pursuant to any term or provision of this Agreement,
then the prevailing party in any such litigation shall be entitled to an
additional award of its attorneys' fees actually incurred in the course of
such litigation.
(d) During the Term of this Agreement, Licensee shall
maintain adequate products liability insurance (as Licensee shall
determine) covering its manufacture and sale of the Products providing
coverage for damages (and legal defense), and Licensee shall provide
coverage for Licensor as additional insureds under such insurance policy.
(e) This Agreement contains the entire agreement of the
parties with respect to the subject matter hereof and supersedes all prior
agreements, understandings, negotiations, and communications relating to
its terms. Accordingly, notwithstanding any provision of this Agreement
to the contrary, GreenShift, if it elects to do so, shall be entitled to
assign its rights and obligations under this Agreement to its parent
company, GreenShift Corporation, or any of its subsidiaries. No amendment
or modification of this Agreement shall be binding unless signed by the
party against whom enforcement is sought.
(f) IN NO EVENT WILL LICENSOR'S LIABILITY UNDER THIS
AGREEMENT EXCEED THE AGGREGATE AMOUNT OF THE CUMULATIVE LICENSE FEES AND
ROYALTY FEES PAID UNDER THIS AGREEMENT AS OF THE DATE THE INDEMNIFICATION
OBLIGATION ARISES. IN NO EVENT SHALL LICENSOR BE LIABLE TO LICENSEE FOR
ANY LOST OR ANTICIPATED PROFITS, OR ANY SPECIAL, INCIDENTAL, EXEMPLARY OR
CONSEQUENTIAL DAMAGES.
(f) Either party's waiver of any default under this
Agreement by the other shall not constitute a waiver of any subsequent or
like default or of its right to insist upon strict performance thereof.
All remedies of either party shall be cumulative and no choice or remedy
shall be deemed an election to the exclusion of any other remedy.
[THIS SPACE IS INTENTIONALLY LEFT BLANK]
IN WITNESS WHEREOF, the parties have executed this Agreement as of the day
and year first above written.
OVATION PRODUCTS
By: /S/ Xxxxxx XxxXxxxxx
--------------------------------
Xxxxxx XxxXxxxxx
Chief Executive Officer
GREENSHIFT INDUSTRIAL DESIGN CORPORATION
By: /S/ Xxxxx Xxxxxxxx
--------------------------------
Xxxxx Xxxxxxxx
Chief Executive Officer
EXHIBIT A
DETAILED DESCRIPTION OF THE INVENTION
All patents and patent-applications for which the Licensor has received a
Notice of Allowance are attached in this Exhibit A.
Patent No. Date Title Inventor
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US 6,238,524 B1 May 29, 2001 Rotating Plate Heat Exchanger Xxxxxxx X. Xxxxxx
US 6,261,419 B1 July 17, 2001 Rotating Plate Heat Exchanger Xxxxxxx X. Xxxxxx
US 6,319,408 B1 Nov 20,2001 System for Processing Waste Water Xxxxxxx X. Xxxxxx
US 6,328,536 B1 Dec 11, 2001 Reciprocating Low Pressure Ratio Compressor Xxxxxxx X. Xxxxxx
US 6,423,187 B1 July 23, 2002 Heat Exchanger Mechanism Xxxxxxx X. Xxxxxx
US 6,592,338 B2 July 15, 2003 Rotating Compressor Xxxxxxx X. Xxxxxx
US 6,602,060 B2 Aug 5, 2003 Compressor Employing Piston Ring Check Valves Xxxxxxx X. Xxxxxx
US 6,689,251 B2 Feb 10, 2004 Cycled-Concentration Distiller Xxxxxxx X. Xxxxxx
US 6,802,941 B2 Oct 12, 2004 Distiller Employing Cyclical Evaporative-
Surface Wetting Xxxxxxx X. Xxxxxx
US 6,846,387 B1 Jan 25, 2005 Rotating Fluid Evaporator and Condenser Xxxxxxx X. Xxxxxx
US 6,908,533 B2 June 21, 2005 Rotating Heat Exchanger Xxxxxxx X. Xxxxxx
EXHIBIT B
PRIOR LICENSES AND EXCLUDED APPLICATIONS
1. Onsite septic market: X.X. Electro Systems, Inc.( Distribution
Agreement, Strategic Alliance Agreement, and License Agreement, December 29,
2000) license in the North American onsite septic market and partners planned
for the international onsite septic markets.
2. Casting impregnation, surface treatment, industrial washing: Lancy
Water Technologies, a subsidiary of Xxxxxx Xxx, plc.(Distribution Agreement,
December 16, 2002)
3. Counter top water distiller: WMS Enterprises (Restated License
Agreement, June 30, 2004, and Agreement, June 30,2004)
4. All applications in Japan: Twaine Associates, Inc (Agreement,
October 13, 2001 and April 4, 2003).
5. Industrial water polishing and other industrial applications to be
finalized: Houghton International (no current license)
6. Any and all applications as specified in the exclusionary language
in Sections 2(b)(i) and 2(b)(ii) hereof.
7. Residential incoming water applications: ITT Xxxxx Pump division (no
current license), or other, to be negotiated.
