EXHIBIT 10.24
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 applications
relating to subsurface ocean transportation 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 applications
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
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.
