Exhibit 10.1
This Agreement is made and entered into effective this 10 day of May, 2004
("Effective Date") by and between Xxxxxx X. Xxxxxxxx (hereinafter referred to as
"Xxxxxxxx"), and U.S. Center for Energy Information Inc., incorporated under the
laws of Nevada, having a primary place of business at 00000 Xxxxxxxxxxx, Xxxxxx,
XX 00000, (hereinafter referred to as "USCEI"). The parties agree as follows:
1. RECITALS
1.1 Xxxxxxxx has developed the Technology.
1.2 Xxxxxxxx wishes to have the Technology commercialized at the earliest
possible time in order that products resulting therefrom may be available for
public use and benefit.
1.3 USCEI is a start-up corporation with expertise in the development of
the Technology as Xxxxxxxx is a principal of USCEI and USCEI desires an
exclusive license to further develop the Technology in the Territory.
1.4 Xxxxxxxx will grant USCEI a license to commercialize the Technology in
the Territory. In consideration of this license USCEI will pay a fee to Xxxxxxxx
as provided for in Article 5.
NOW THEREFORE, in consideration of the premises and mutual covenants contained
herein, the parties agree as follows:
2. DEFINITIONS
2.1 "Improvements" means any improvement, idea, design, engineering work,
concept, technique, discovery or invention relating to the Technology, whether
or not patentable, copyrightable, or otherwise protectable as intellectual
property, which is owned or developed under the direction of Xxxxxxxx or USCEI
during the term of this Agreement.
2.2 "Know-How" means all special knowledge, technical information and
information including but not limited to all data, results of experiments,
calculations, drawings, designs, devices, samples, processes, procedures, tests,
and other information pertaining to the Technology (including data generated
from its exploitation) which may be necessary or useful in the use of the
Technology.
2.3 "Territory" means the entire territory of United States of America.
2.4 "Technology" means all elements which make up the Oil & Gas Community
System developed by Xxxxxxxx including an internet portal and related source
code, providing online directories with current real time information, various
industry websites, website hosting, direct website access, e-mail hosting,
employment postings, equipment locators, local contractor locators, industry
reports, online equipment auctions and closed bidding, acquisitions and
divestments of properties, real time stock quotations, investor arena for annual
general meetings and road shows, association calendars of trade shows and
seminars, live chat forums, and other similar features as well as all Know-How,
and Improvements developed by USCEI in the course of the exploitation of this
License.
3. GRANT
3.1 Xxxxxxxx hereby grants and USCEI hereby accepts an exclusive License
in the Territory to use the Technology.
3.2 The license granted herein will be in force from the Effective Date of
this Agreement until this Agreement is terminated as set out below in Article 15
(Termination).
4. DUE DILIGENCE
4.1 In the course of the commercialization of the Technology USCEI agrees
to use all reasonable efforts and diligence to develop and improve the
Technology and to document all developments including any and all Improvements
and Know-How it makes to the Technology.
4.2 USCEI agrees to use reasonable efforts to develop markets for and
attract customers for use of various applications of the Technology.
4.3 USCEI agrees:
(a) to provide the consumer with high quality materials and manual; and,
(b) to exercise its best efforts in protecting the Technology from
disclosure to third parties.
4.4 USCEI agrees to pay a license fee as set out in Article 5. Xxxxxxxx
may elect to convert this license to non-exclusive upon USCEI's failure to pay
the license fee.
5. LICENSE FEE AND ROYALTY
5.1 In consideration of the rights granted herein, USCEI will pay Xxxxxxxx
a license fee of $99,000 in common shares at $0.01 which equals 9,900,000 common
shares.
5.2 In further consideration of the rights granted herein, USCEI will pay
to Xxxxxxxx within 60 days after the expiration of each anniversary of this
Agreement a royalty equal to 1% of the gross revenues generated by USCEI from
the commercial exploitation of the Technology pursuant to the license granted
pursuant to this Agreement. Each such payment shall be accompanied by a
statement signed by an authorized representative of USCEI setting forth in
sufficient detail the basis upon which the royalties were calculated during the
relevant period for which the royalties are due, which Xxxxxxxx may, in his
discretion and at the expense of USCEI, cause to be verified by an accountant of
Xxxxxxxx'x choosing.
IMPROVEMENTS
5.3 USCEI will promptly notify Xxxxxxxx of any and all significant
Improvements or Know-How which it develops and USCEI will use reasonable efforts
to cooperate with and support Xxxxxxxx'x efforts to protect or further develop
the Technology.
5.4 All Improvements and Know-how and data generated through the
exploitation of the Technology and any other suggestions, improvements,
enhancements, derivative works or modifications made to the Technology or any
part thereof shall be the property of Xxxxxxxx, including any copyright, patent
or other intellectual property rights therein. USCEI shall sign all documents,
assignments or agreements as Xxxxxxxx may require to protect his rights therein,
and any such Improvements or enhancements shall be considered the subject of the
license granted pursuant to this Agreement and USCEI shall have free limited
license thereto in the Territory for the term of this Agreement.
6. INFRINGEMENT
6.1 USCEI will inform Xxxxxxxx promptly in writing of any alleged
infringement of the Technology by a third party and of any available evidence
thereof.
6.2 During the term of this Agreement, USCEI will have the right, but will
not be obligated, to prosecute at its own expense all infringements of the
Technology and, in furtherance of such right, USCEI may include Xxxxxxxx as a
party plaintiff in any such suit without expense to Xxxxxxxx. The total cost of
any such infringement action commenced or defended solely by USCEI will be borne
by USCEI.
6.3 If within 90 days after having identified any alleged infringement,
Xxxxxxxx has been unsuccessful in persuading the alleged infringer to desist and
has not brought and/or is not diligently prosecuting an infringement action or
if Xxxxxxxx notifies USCEI at any time prior thereto of his intention not to
bring suit against any alleged infringer, then, and in those events only, USCEI
will have the right, but will not be obligated, to prosecute at its own expense
any infringement of the Technology and USCEI may, for such purposes, use the
name of Xxxxxxxx as a party plaintiff, provided, however, that such right to
bring such an infringement action will remain in effect only for so long as the
license granted herein remains exclusive. No settlement, consent judgment or
other voluntary final disposition of the suit may be entered into without the
consent of Xxxxxxxx, which consent will not be unreasonably withheld. USCEI will
indemnify Xxxxxxxx against any order for costs that may be made against him in
such proceedings.
6.4 Each party will promptly notify the other in writing in the event that
a third party brings a claim of infringement against Xxxxxxxx or USCEI relating
to the Technology. Xxxxxxxx will have the right to defend, at his own expense,
any such third party claim or action and to settle or compromise the same in
such manner as he will see fit. This includes the negotiation of a separate
license agreement with the third party. USCEI may participate in such litigation
or claim on its behalf at its own expense.
7.5 If the alleged infringement is so substantial as to threaten the
competitive position of USCEI and/or USCEI is temporarily enjoined from exercise
of its license hereunder, and if Xxxxxxxx elects not to defend against such
claim, then USCEI in its own name and at its sole
expense may defend such claim and compromise, settle or pursue such defense in
such a manner and on such terms as USCEI will see fit.
7.6 In the event that an action for infringement is brought against USCEI
alleging that the Technology infringes a patent or other intellectual property
right of a third party, and Xxxxxxxx elects not to defend, USCEI will have the
right to withhold 50% of the annual license fee otherwise due to Xxxxxxxx to
reimburse USCEI for costs and expenses incurred in the defense of such action if
it decides to defend such claim in its own name.
7.7 In the event USCEI is permanently enjoined from exercising its license
rights granted hereunder pursuant to an infringement action brought by a third
party, or if USCEI or Xxxxxxxx elect not to undertake the defense or settlement
of such a claim of alleged infringement for a period of 6 months from notice of
such claim or action then USCEI will have the right to terminate this Agreement
with respect to the infringed patent claims following thirty days' written
notice to Xxxxxxxx and in accordance with terms of Article 13.
7. AUTHORITY OF XXXXXXXX TO GRANT LICENSE AND RIGHTS
7.1 Xxxxxxxx covenants with and represents and warrants to USCEI that to
the best of his knowledge, Xxxxxxxx has the right to grant the license and
rights to the Technology, as provided herein. Xxxxxxxx has no knowledge of any
liens, encumbrances or claims of any nature respecting the Technology and
Xxxxxxxx is not aware of any action or other litigation pending or commenced
which may affect Xxxxxxxx'x ability to grant the License or rights pursuant to
Article
9. NEGATION AND WARRANTIES
9.1 Nothing in this Agreement will be construed as:
(a) A warranty or representation that anything made, used, sold or
otherwise disposed of under the License granted by this Agreement is or will be
free from infringement of patents, copyrights and trademarks of third parties;
or,
(b) Conferring rights to use in advertising, publicity or otherwise the
names of Xxxxxxxx or the Inventors; or,
(c) Granting by implication, estoppel or otherwise any License or rights
under patents of Xxxxxxxx, except for uses of the Technology consistent with
Article 3 above.
9.2 Notwithstanding Article 3.1(a), Xxxxxxxx knows of no patents, patents
pending, copyrights or trademarks which would be infringed by the Technology.
9.3 Except as set out in Article 9 (Authority of Xxxxxxxx to Grant License
and Rights), Xxxxxxxx makes no representations, extends no warranties of any
kind, either express or implied. There are no express or implied warranties of
merchantability of fitness for a particular purpose.
10. INDEMNIFICATION AND PRODUCT LIABILITY INSURANCE
10.1 USCEI agrees to indemnify, hold harmless and defend Xxxxxxxx and his
successors and assigns against any and all claims arising out of the exercise of
any rights under this Agreement, including, without limiting the generality of
the foregoing, against any damages, losses or liabilities whatsoever with
respect to death or injury to person or damage to property arising from or out
of the possession, use or operation of the Technology by USCEI or its customers.
10.2 Prior to any sale or use of the Technology under the license granted
herein, and for the full term of this license, USCEI agrees to obtain and carry
in full force and effect, insurance insuring against losses from claims on
terms, in amounts and with insurers reasonably satisfactory to Xxxxxxxx. Such
insurance will be written by a reputable insurance company authorized to do
business in the Province of Alberta. The policy will name Xxxxxxxx as an
additional named insured thereunder and will instruct the insurer to give
Xxxxxxxx 30 days prior written notice if the coverage is to be amended or
cancelled. USCEI will obtain an endorsement to this effect from its insurer and
provide Xxxxxxxx with a certified copy of the endorsement and a copy of the
insurance policy within 60 days of execution of this Agreement.
11. CONFIDENTIALITY
11.1 "Confidential Information" means all data, communications, market
data, patent applications and related documents, correspondence, drawings,
Know-How, trade secrets and any other information of a confidential nature of
either Xxxxxxxx or USCEI disclosed or provided by either party (the "Disclosing
Party") to the other ("Receiving Party") under this Agreement.
11.2 Receiving Party will use its best efforts to maintain as secret all
Confidential Information. Confidential Information will only be used for the
purposes of this Agreement and will only be disclosed to those employees of
Receiving Party who have a need to know such information. Receiving Party will
not disclose Confidential Information to any other company, firm or person
without the written consent of the Disclosing Party.
11.3 Receiving Party undertakes to inform each person to whom the
Confidential Information is disclosed in accordance with Article 12.2 of the
obligation of confidence and non-use imposed by this Agreement. Receiving Party
will enforce the obligation of confidence and non-use against any person that
leaves the employment of Receiving Party.
11.4 The obligation of confidence and non-use above will not apply to
information that Receiving Party can show:
(a) by written records to have been in its possession prior to disclosure
under this Agreement and which had not been previously acquired from Disclosing
Party; and
(b) is or becomes part of the public domain through no fault of Receiving
Party; and,
(c) is lawfully receiving without an obligation of confidence from a third
party legally entitled to disclose the information; and
(d) is required by law to be disclosed but only to the extent it is so
required.
12. NON-USE OF NAMES
12.1 USCEI agrees not to identify Xxxxxxxx in any promotional advertising
or other promotional materials to be disseminated to the public or any portion
thereof or to use the name of Xxxxxxxx or symbol of Xxxxxxxx without Xxxxxxxx'x
prior written consent.
13. ASSIGNMENT
13.1 USCEI may not assign this Agreement with out the written permission
of Xxxxxxxx, such permission not to be unreasonably withheld.
14. TERMINATION
14.1 If USCEI becomes bankrupt or insolvent or files a petition in
bankruptcy or makes an assignment for the benefit of creditors or if the
business of USCEI is placed in the control of a receiver, assignee or trustee
for the benefit of creditors, whether by the voluntary act of USCEI or
otherwise, the license granted by this Agreement will automatically terminate.
14.2 The rights granted in Article 3 (Grant) of this Agreement may be
terminated by Xxxxxxxx, or at Xxxxxxxx'x sole discretion, may be converted to
non-exclusive if:
(a) there is a default in the provision of any license fee; or,
(b) if after at least 30 days written notice by Xxxxxxxx as to the nature
of noncompliance to any terms of this Agreement, USCEI is still in
noncompliance; or,
(c) upon written notice by Xxxxxxxx if USCEI will cease for a period of
greater than 2 months to record any sales pursuant to the exploitation of the
Technology. Such termination will be without prejudice to any rights,
obligations or liabilities already accrued prior to such termination.
14.3 If Xxxxxxxx terminates the rights granted in Article 3 of this
Agreement according to the provisions above, then USCEI agrees to cease
exploiting the Technology provided that USCEI will have the right to continue to
honour obligations to its customers incurred prior to the termination of the
licence conferred pursuant to this Agreement.
14.4 Upon termination of the license conferred by this Agreement for any
reason, any sublicensee not then in default will have the right to seek a
license from Xxxxxxxx. Xxxxxxxx agrees to negotiate such license in good faith
under reasonable terms and conditions.
14.5 The rights granted in Article 3 of this Agreement may be terminated
by USCEI upon 30 days' written notice to Xxxxxxxx. If the rights are terminated
by USCEI, USCEI agrees to immediately cease any further exploitation of the
Technology by incurring any further obligations to customers.
14.6 Surviving any termination are:
(a) USCEI's obligation to pay any license fees accrued to the date of
termination; and
(b) the provisions of Article 10 (Negation and Warranties) and Article 11
(Indemnification and Product Liability Insurance); and
(c) any cause of action or claim of USCEI or Xxxxxxxx, accrued or to
accrue because of any breach or default by the other party.
15. NOTICES
15.1 All notices, communications, statements and payment which may be
required or permitted under this Agreement will be in writing and sent by
registered mail, courier service or electronic means which produces a physical
copy. The address of such party hereto will be as follows:
In the case of Xxxxxxxx: 000 Xxxxxxx Xxxx Xxxxxxx X.X., Xxxxxxx, Xxxxxxx, Xxxxxx
X0X 0X0 Phone: 000-000-0000 Fax: 000-000-0000
In the case of USCEI : 16219 Xxxxxxxxxxx, Xxxxxx, Xxxxx 00000 Attention:
President Fax: 000-000-0000
Either party may change its address upon written notice to the other party.
AGENCY
15.2 Notwithstanding any of the provisions of this Agreement, USCEI at no
time will enter into, incur or hold itself out to third parties as having
authority to enter into or incur, on behalf of Xxxxxxxx, any commitment, expense
or liability whatsoever, and all contracts, expenses and liabilities in
connection with or relating to the exploitation of the Technology will be made,
paid and undertaken exclusively by USCEI as sole independent contractor, and not
as an agent or representative of Xxxxxxxx.
16. SCOPE OF THE AGREEMENT
16.1 This Agreement is the only Agreement between USCEI and Xxxxxxxx
pertaining to the subject matters hereof and this Agreement supersedes all prior
negotiations, documents, agreements and representations.
17. APPLICABLE LAW
17.1 This Agreement will be construed, governed, interpreted and applied
in accordance with the laws of the Province of Alberta and the State of Texas.
18. MISCELLANEOUS
18.1 None of the terms, covenants and conditions of this Agreement can be
waived except by the written consent of the party waiving compliance.
18.2 In the event that any provision in this Agreement, or any part
hereof, is found invalid, illegal or unenforceable, the remainder of the
Agreement will be binding on the parties hereto, and will be construed as if the
invalid, illegal or unenforceable provision or part thereof has been deleted
from this Agreement.
18.3 Neither of the parties will be liable in damages or have the right to
cancel this Agreement for any delay or default in performing hereunder if such
delay or default is caused by conditions beyond its control, including acts of
God, government restrictions, warrants or insurrections.
18.4 Failure by either party to enforce any provision of this Agreement or
assert a claim on account of breach hereof will not be deemed a waiver of its
right to enforce the same or any other provision hereof on the occasion of a
subsequent breach.
18.5 This Agreement may be amended by a written document, duly executed by
Xxxxxxxx and USCEI.
IN WITNESS WHEREOF the parties hereto have executed this Agreement as of
the date above written.
SIGNED, SEALED AND DELIVERED in the presence of:
/s/ Xxxx Xxxxxx
------------------------
Xxxx Xxxxxx, President
U.S. Center for Energy Information Inc.
/s/ Xxxxxx X. Xxxxxxxx
------------------------
Xxxxxx X. Xxxxxxxx
/s/ Xxxxx Xxxxxxx
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Xxxxx Xxxxxxx, Witness
