[EXHIBIT 10.1]
EXCLUSIVE LICENSE AGREEMENT
LICENSE AGREEMENT made August 22, 2002 between Careful Sell
Holding, LTD, a Bahamian corporation, Saffrey Square, Ste. 106,
55 Xxxxxxx Avenue, Nassau N.P., Bahamas (the "Licensor") and
Carbon Recovery Corp., a New Jersey corporation, 0 Xxxxxxxxx
Xxxxx, Xxxxxxx, Xxx Xxxxxx, 00000 ("Licensee").
RECITALS:
A. The Licensor has made certain new and useful inventions
embracing processes and apparatus for recycling tires through the
use of proprietary technology utilizing wavelength specific
microwaves and sub atmosphere reverse polymerization xxxxxxxx.
B. The Licensor desires to have these inventions commercialized
through the granting of an exclusive license.
C. The Licensee desires to acquire an exclusive license to
commercialize such inventions and to operate and use such
processes and apparatus and to make, sell, use, and otherwise
dispose of products which may be processed thereunder.
Now, therefore, it is agreed as follows:
1. Exclusive License.
(a) The Licensor hereby grants to the Licensee the exclusive and
worldwide right and license to commercialize, use and exploit the
above described inventions; to practice the processes of
recycling tires through the use of proprietary technology
utilizing wavelength specific microwaves and sub atmosphere
reverse polymerization xxxxxxxx; to make, assemble, and use
apparatus, machinery, auxiliaries, and all devices for carrying
such inventions and processes into practice; and to make, use,
sell, or dispose of the products of such processes and apparatus,
machinery, auxiliaries, and devices (the "Process".)
(b) The Licensor hereby grants to the Licensee the right to grant
sublicenses on such terms as are consistent with the provisions
of this Agreement and to such sublicensees as are acceptable to
the Licensor.
(c) The exclusive rights and license herein granted shall include
all inventions, improvements, enhancements and modifications
thereto made or conceived during the term of this Agreement which
the Licensor owns or controls or hereafter owns or controls, and
all patent applications and patents based on or covering the same
which the Licensor now owns or controls or hereafter owns or
controls.
(d) If the Licensee desires to make or cause to be made any
apparatus, machinery, auxiliaries, devices, or parts therefore to
exercise the rights and licenses granted to the Licensee pursuant
to this Paragraph 1, then the Licensor shall provide the
Exhibit 10.1
Licensee, or its nominees, with such blueprints and working
drawings as are available to the Licensor, and all other data and
information reasonably necessary for the manufacture thereof.
2. Representations by Licensor.
The Licensor represents that:
(a) Such inventions, including the Process, are secret, have not
been revealed to anyone except Xxxxxx X. Xxxxxx P.C., patent
attorney for the Licensor, and shall not be revealed to anyone
during the term of the exclusive license without the prior
approval of the Licensee;
(b) The Licensor is the exclusive owner of all rights to such
inventions and any patent applications to be filed thereon, has
the right to grant the exclusive license hereby granted; has
executed no agreement in conflict herewith; and has not granted
to any other person, firm, or corporation any right, license,
shop-right, or privilege hereunder; and
(c) The Licensor has at no time filed, or caused to be filed,
applications for patents, or obtained in their name, or caused to
be obtained in the name of others, any patents in the United
States or elsewhere based on or covering any of the above
mentioned inventions.
3. Necessary Information and Documents.
The Licensor shall furnish to the Licensee, or to its nominees
and patent attorneys, all information and documents regarding
such inventions which are reasonably available to the Licensor,
including the apparatus, processes, and formulae in respect
thereof, to enable the Licensee to operate thereunder and to
enable its attorneys to prepare and prosecute patent applications
therefore; it being understood and agreed that, if so requested
by the Licensor, the Licensee's attorneys shall collaborate with
such other patent attorney as the Licensor may designate. The
Licensor shall render to the Licensee such services in a
consulting capacity as may be requested by the Licensee to
instruct the Licensee, or its appointed nominees, in all
operations pertaining to the industrial and commercial
exploitation of the above mentioned inventions.
4. Royalties and other Consideration.
(a) The Licensee shall pay to the Licensor royalties of 5% of all
net revenues derived from inventions licensed hereunder
(hereinafter "net earned royalties".) Net earned revenues, as
used herein, shall mean after-tax revenues as determined by the
year-end audit of the Licensee.
(b) The Licensee shall at all times keep, and require all
sublicensees to keep, an accurate account of the licensed
operations, and shall render a full statement of the same in
writing to the Licensor for each calendar quarter during the term
of this Agreement, within 30 days of the end of such calendar
quarter, and concurrently with the rendering of such statement
Exhibit 10.1
pay to the Licensor the amount of net earned royalties accrued
during the corresponding calendar quarter. The Licensee agrees
that the Licensor shall have the right, at its own expense and
not more often than once in each calendar year, to have a
certified public accountant acceptable to the Licensee examine
the books of the Licensee and sublicensees, if any, for the sole
purpose of verifying royalty statements and net earned royalties.
(c) In addition to the royalties set forth herein, the Licensee
shall issue to the Licensor, upon execution of this Agreement,
150,000 shares of Class A Convertible Preferred Stock, par value
$10.00 per share with the following attributes: the Preferred
Stock will receive a 6% per annum dividend; each share will be
automatically convertible into 50 shares of common stock bond the
fifth anniversary of issuance; and each Preferred Share has 50
votes on all matters that common shareholders may vote upon.
5. Term.
This Agreement shall remain and continue in full force and effect
on a continuous basis in perpetuity, but subject to the
following:
(a) The Licensee may at any time, upon one months' written notice
to the Licensor, terminate this Agreement and the licenses
granted hereunder, the foregoing being without prejudice,
however, to moneys due or to become due to the Licensor.
(b) If any payments are in default for 15 days after written
notice is given to the Licensee either by telegram, telex, or
registered mail, or if the Licensee is in default in performing
any of the other terms of this Agreement and such default
continues for a period of 60 days after written notice thereof is
given to the Licensee, then the Licensor shall have the right to
terminate this Agreement upon giving notice to the Licensee at
least ten days prior to the effective date of termination, and
thereupon the Agreement and the rights and licenses granted
hereunder to the Licensee shall become void without prejudice to
any remedy of the Licensor for the recovery of any moneys due it
under this Agreement.
(c) In the event of any adjudication of bankruptcy or of
insolvency under any statute for the relief of debtors or the
appointment of a receiver by a court of competent jurisdiction,
or the assignment for the benefit of creditors or levy of
execution directly involving the Licensee, this Agreement shall
thereupon terminate forthwith.
(d) Upon termination pursuant to this Paragraph 5, the Licensee
shall duly account to the Licensor and transfer to it all
rightswhich it may have to the patents, inventions, processes,
and apparatus, and all rights to any sublicense or sublicenses
which may have been granted pursuant to the terms hereof.
6. Indemnity
Exhibit 10.1
(a) The Licensor shall, at its expense, defend the Licensee
against a claim that the Process infringes a patent and/or
copyright granted or registered in the United States, or in a
foreign country provided such patent and/or copyright is
recognized, or the judgment of which claim is enforceable, in the
United States, and provided that (i) the Licensee notifies the
Licensor in writing promptly but not less than thirty (30) days
after the Licensee has actual notice of the claim; (ii) the
Licensor has sole control of the defense and all related
settlement negotiations; and (iii) the Licensee gives the
Licensor information and reasonable assistance for the defense.
If the Licensor fails or refuses to defend any such claim, the
Licensee may assume control of the defense and the Licensor shall
indemnify and hold harmless licensee for all fees, costs and
expenses associated with or arising from such defense. Subject
to the conditions and limitations of liability stated in this
Agreement, the Licensor shall indemnify and hold harmless the
Licensee, its officers, directors, employees and agents against
any such claims and shall pay all costs and damages finally
awarded against the Licensee by a court of law or equity, agreed
to in settlement or awarded by another body or person authorized
under law or contract to award such damages. This obligation
shall also apply in the event the Licensor, as set forth above,
fails or refuses to defend any such claim. The Licensor will not
be responsible for any settlement made without its prior written
consent, or for any costs, expenses or fees incurred by the
Licensee without the Licensor's prior written consent.
(b) The Licensee agrees that if the Process becomes, or in
Licensor's opinion is likely to become, the subject of such a
claim, the Licensee will permit the Licensor, at its option and
expense, either to procure the right for the Licensee to continue
using the Process or to replace or modify the Process so that it
becomes non-infringing. The Licensor's liability shall in no
event exceed the total amount of royalties paid to the Licensor
by the Licensee pursuant to this Agreement.
(c) The Licensor has no liability for any claim of patent and/or
copyright infringement based upon adherence to specifications,
designs or instructions furnished by the Licensee, nor for any
claim based upon the combination, operation or use of the Process
with products, software or data not supplied by the Licensor, nor
for any claim based upon alteration of the Process unless the
Licensor specifically approved the alteration or modification.
(d) This Paragraph sets forth the Licensor's entire liability for
patent and/or copyright infringement related to the Process.
7. New Inventions.
If during the term of this Agreement, the Licensor, individually
or collectively, makes any further improvements in such
inventions or the mode of using them, or becomes the owner of any
new improvements either through patents or otherwise, then the
Licensor shall communicate such improvements to the Licensee and
the Licensee shall have the right to include the same in this
Agreement without additional compensation.
Exhibit 10.1
8. Dispute Resolution.
The parties voluntarily agree that any dispute or claim
concerning or relating to this Agreement shall be resolved by
binding arbitration in Trenton, New Jersey. The parties
voluntarily waive their rights to seek judicial determination of
such disputes or claims. The arbitration proceedings shall be
conducted in accordance with the Commercial Rules of Arbitration
promulgated by the American Arbitration Association, as amended
from time to time. Any dispute arising under this Agreement or
with regard to its interpretation shall be submitted for
arbitration to the American Arbitration Association in Trenton,
New Jersey in accordance with the rules and regulations of said
Association. Any controversy or claim arising out of or relating
to this Agreement, or the breach thereof, shall be settled by
arbitration in accordance with the Commercial Arbitration Rules
of the American Arbitration Association, and judgment upon the
award rendered by the Arbitrator(s) may be entered in any court
having jurisdiction thereof.
9. Notice.
Any notice required under this agreement shall be addressed to
the addresses set forth herein.
10. Benefit.
This Agreement shall be binding upon and inure to the benefit of
the heirs, legal representatives, successors, and assigns of the
parties hereto; provided, however, the rights of either party
hereunder shall not be assignable nor transferable, except to
heirs, without the prior written consent of the other party.
11. Entire Agreement.
This Agreement and any attachments hereto constitute the entire
agreement and understanding of the parties with respect to the
subject matter hereof and supersede all prior agreements and
understandings, whether oral or written. No modification or
claimed waiver of any of the provisions hereof shall be valid
unless in writing and signed by the duly authorized
representative against whom such modification or waiver is sought
to be enforced.
12. Other Rights.
Nothing contained in this Agreement shall be construed as
conferring by implication, estoppel, or otherwise upon either
party any license or other right except the licenses and rights
expressly granted hereunder to that party.
Exhibit 10.1
13. Acceptance.
Each party hereby accepts the licenses and rights granted to it
by a party under this Agreement subject to all of the terms and
conditions of this Agreement.
IN WITNESS WHEREOF, and intending to be legally bound hereby, the
parties have each executed and delivered this Agreement as of the
day and year first above written.
W I T N E S S E T H:
__________________________ Careful Sell Holding, LTD
__________________________ By:____________________________
_________________________ Carbon Recovery Corp.,
_________________________ By:___________________________
Xxxx Xxxxxxxxx
Exhibit 10.1
