[CONFIDENTIAL TREATMENT REQUESTED. CERTAIN PORTIONS OF THIS
AGREEMENT HAVE BEEN REDACTED AND SEPARATELY FILED WITH THE COMMISSION]
Exhibit 10.1
DEVELOPMENT AND LICENSE AGREEMENT
THIS DEVELOPMENT AND LICENSE AGREEMENT (the "AGREEMENT"), dated as of
August 2, 2004 (the "EFFECTIVE DATE"), is made by and between U.S. GLOBAL
NANOSPACE, INC. a Delaware corporation ("USGN"), on the one hand, and KIDDE FIRE
FIGHTING INC. a Pennsylvania corporation ("Kidde") (as used herein the term
"party" means either USGN or Kidde and the term "parties" means both USGN and
Kidde).
BACKGROUND
WHEREAS, USGN has entered into that certain TIAX AGREEMENT (as defined
in Section 1.20 below), pursuant to which it acquired an exclusive license to
practice certain patent and technology rights related to the commercialization
of products and/or services in the field of non-hazardous biological and
chemical decontamination by or through the use of an aqueous, sprayable foam;
and
WHEREAS, USGN has developed and/or acquired the technology and rights
necessary to manufacture a non-toxic, non-hazardous, aqueous, sprayable,
biological and chemical decontaminant foam, which it has marketed under the
trademark "All-Clear(TM);" and
WHEREAS, Kidde is engaged in the development, production and
worldwide commercialization of industrial foam and foam distribution systems;
and
WHEREAS, USGN and Kidde desire to enter into a development and license
agreement, under which (i) USGN shall sublicense to Kidde the patent and
technology rights licensed by USGN under the TIAX AGREEMENT, including any
patent and technology rights developed and/or acquired by USGN necessary for the
manufacture, use and sale of non-toxic, non-hazardous, aqueous, sprayable foam
products in the field of biological and chemical decontamination, and (ii) USGN
and Kidde shall agree upon the terms and conditions for the worldwide
development, production, marketing and commercialization of non-toxic,
non-hazardous, aqueous, sprayable, decontaminant foam products, including such
products marketed under the All-Clear(TM) trademark.
NOW, THEREFORE, in consideration of the foregoing premises and the
covenants and obligations set forth in this Agreement, and for such other good
and valuable consideration, the receipt and sufficiency of which are hereby
acknowledged, the parties hereby agree as follows:
ARTICLE 1
DEFINITIONS
As used herein, the following terms will have the following meanings:
1.1 "AFFILIATE" means any entity that directly or indirectly Owns, is
Owned by or is under common Ownership with, a party to this Agreement, where
"Own" or "Ownership"
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means direct or indirect possession of at least fifty percent (50%) of the
outstanding voting securities of a corporation or a comparable ownership in any
other type of entity.
1.2 "APPLICATION" means a use for a Product that is distinct from other
uses for the Products. The determination that a use is distinct will be based on
either (a) a significant distinction in the general business characteristics of
the intended end user or (b) a significant distinction in the functional
purposes for which the end user will acquire the Product.
1.3 The non-capitalized term "application" means the application of a
Product through a foam distribution system.
1.4 "COVER" (including variations thereof such as "Covered,"
"Coverage," or "Covering") shall mean that the manufacture, import, use, sale or
offer for sale of a particular product would infringe a Valid Claim of an issued
and unexpired patent in the absence of rights under such patent. The
determination of whether a product is Covered by particular patent rights shall
be made on a country by country basis.
1.5 "DAMAGES" means any and all costs, losses, claims, suits, actions,
liabilities, fines and penalties for death, illness, personal injury and
property damage, damages, and expenses incurred by a party or its Affiliates
hereto with respect thereto (including any interest payments which may be
imposed in connection therewith).
1.6 "EQUIVALIZED GALLONS" means the amount of Product required to
deliver one (1) Gallon of `deployed foam' in application. By way of example, the
`All-Clear pre-mix' requires no dilution so its actual Gallonage and Equivalized
Gallonage are the same. By way of further example, should Product be made as a
ten percent (10%) concentrate, then following dilution, one (1) Gallon of
concentrated Product would generate ten (10) Equivalized Gallons of deployable
foam. By way of additional example, should Product be made as a five percent
(5%) concentrate, then following dilution, one (1) Gallon of concentrated
Product would generate twenty (20) Equivalized Gallons of deployable foam, etc.
1.7 "FIRST COMMERCIAL SALE" means the first Sale, in any particular
country, by Kidde or its Affiliates or sublicensees of Product for use by the
government or general public after Kidde has obtained the required marketing,
safety, efficacy and/or pricing approval from the governing health, safety or
other regulatory authority for which approval is required in that country.
1.8 "GALLON" means a United States standard gallon.
1.9 "INVENTION" means any new or useful process, manufacture, compound,
composition of matter, improvements, discoveries, claims, formulae, processes,
trade secrets, technologies and know-how (including confidential data and
Proprietary Information), to the extent relating to, derived from, necessary
and/or useful for the manufacture, use, import, sale or offer for sale of a
Product within the field of non-toxic, non-hazardous biological and chemical
decontamination, including, without limitation, synthesis, preparation, recovery
and purification processes and techniques, control methods and assays, chemical
data, toxicological data and techniques, clinical data, medical uses, product
forms and product formulations and specifications, whether patentable or
unpatentable, that is conceived or first reduced to practice or demonstrated to
have utility during the Term of this Agreement.
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1.10 "JOINT PATENT RIGHTS" means the rights under or in information or
discoveries claimed in any invention disclosures, patents, and/or patent
applications, both foreign and domestic, and all divisionals, continuations,
continuations-in-part, refilings, reissues, substitutions, renewals,
reexaminations, patents of addition, inventors' certificates, patent term
extensions, supplementary protection certificates, and any letters patent that
issue thereon that are owned jointly by Kidde and USGN and which: (a) Cover a
non-toxic, non-hazardous, aqueous, sprayable, decontaminant foam, or its
manufacturing formulation or use within the field of non-toxic, non-hazardous
biological and chemical decontamination; and/or (b) are based on an Invention
made at any time during the Term of this Agreement.
1.11 "KIDDE KNOW-HOW" means all proprietary inventions, technology,
trade secrets, and any physical, chemical or biological material, or other
information, which are not claimed in Kidde Patent Rights, that during the Term
of this Agreement are owned, or acquired with right to sublicense during the
term of this Agreement by Kidde or any Affiliate of Kidde and are necessary or
useful to Kidde in (i) the development, formulation, manufacture, use or sale of
Products, or (ii) the practice of Kidde Patent Rights.
1.12 "KIDDE PATENT RIGHTS" means the rights under or in information or
discoveries claimed in any invention disclosures, patents, and/or patent
applications, both foreign and domestic, and all divisionals, continuations,
continuations-in-part, refilings, reissues, substitutions, renewals,
reexaminations, patents of addition, inventors' certificates, patent term
extensions, supplementary protection certificates, and any letters patent that
issue thereon which (a) Cover a non-toxic biological and/or chemical
decontaminant foam, or its manufacturing formulation or use, and (b) are based
on an Invention made at any time during the Term of this Agreement that would be
necessary or useful to Kidde in the development, formulation, manufacture, use
or sale of Products, and (c) are owned or acquired by Kidde or any Kidde
Affiliate, with the right to sublicense during the Term of this Agreement.
1.13 "NET SALES" means, with respect to Product, gross sales invoiced
by Kidde, its Affiliates or sublicencees for Sales of the Product to Third
Parties (other than any agent, distributor or sublicensee of Kidde or its
Affiliates) less deductions for costs related to: (a) product returns (including
recalls, withdrawals, credits and refunds); (b) volume, cash and trade
discounts, discounts granted at the time of invoicing, discounts granted later
than at the time of invoicing, rebates, chargebacks and any other allowances
which effectively reduce the net selling price; (c) excise, use, value added and
sales taxes, duties, unrecoverable taxes, and other such taxes directly linked
to and included in the gross revenues amount; (d) sales expenses (such as agent
or distributor commissions, sales discounts and other direct sales expenses);
(e) the costs of outbound freight and transportation insurance; (f) the costs of
import, export or custom duties if taken on as the responsibility of Kidde
versus the customer directly; and (g) bad debt in accordance with Section 6.4
below. Such amounts shall be determined from books and records maintained in
accordance with generally accepted accounting principles in the United States.
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In the event that Products are sold incorporated in other services or
products, the gross sales invoiced for the Sale of such Products shall be
calculated by using the average price per Equivalized Gallon for similar bulk
Product during that same Kidde Fiscal Quarter multiplied by the number of
Equivalized Gallons of Product bundled in the other services and products. Net
Sales shall then be calculated by making appropriate deductions from such gross
sales in accordance with this Section.
Notwithstanding the foregoing, amounts received by Kidde or its
Affiliates or sublicensees for the Sale of Product among Kidde and its
Affiliates or sublicensees for resale to end users shall not be included in the
computation of Net Sales hereunder.
In determining the Net Sales in each country, on a country-by country
basis, the local currency shall be converted to U.S. dollars as of the last
business day of each Kidde Fiscal Quarter, based on applicable currency exchange
rates then in effect as reported by the Wall Street Journal (U.S. edition);
accordingly, all monetary figures set forth in this Agreement shall be stated in
U.S. dollars.
1.14 "PRODUCT(S)" means any and all aqueous, sprayable foam products
that are (i) intended for the non-hazardous and non-toxic neutralization and/or
decontamination of biological pathogens and/or chemical agents, and (ii) covered
by USGN Patent Rights.
1.15 "PROPRIETARY INFORMATION" means, subject to the limitations set
forth in Section 10.1 hereof, all information disclosed by a party hereto to the
other party pursuant to this Agreement that is marked "confidential" or
"proprietary".
1.16 "SAFETY ACT" means the Support Anti-terrorism by Fostering
Effective Technologies Act of 2002, 6 U.S.C. xx.xx. 441-444, Pub. L. 107-296
Title VIII, Subtitle G (xx.xx. 861-865) and the Regulations Implementing the
Support Anti-terrorism by Fostering Effective Technologies Act of 2002, 6 CFR
25.
1.17 "SIGNIFICANT MARKETS" means the United States, European common
markets and other worldwide industrialized countries.
1.18 "SOLD" or "SALE" means the transfer or disposition of a Product
for value.
1.19 "THIRD PARTY" means any person or entity other than USGN, Kidde or
an Affiliate of either party hereto.
1.20 "TIAX AGREEMENT" means that certain Patent and Technology License
Agreement between USGN and TIAX LLC dated July 24, 2003, as amended by Amendment
No. 1 dated as of October 3, 2003. The TIAX AGREEMENT (including Amendment No.
1) is attached as Exhibit A hereto. USGN shall provide Kidde with a true,
complete and correct copy of any subsequent amendments to the TIAX AGREEMENT
within thirty (30) days after the execution date of such amendment.
1.21 "TRADEMARK" means the xxxx "All-Clear."
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1.22 "USGN KNOW-HOW" means all inventions, technology, technical
information, clinical and preclinical results, know-how, processes, procedures,
compositions, devices, methods, formulae, protocols, techniques, software,
designs, drawings, data, trade secrets, and any physical, chemical or biological
material, or other information or rights in such information, which are: (i)
proprietary to USGN; and (ii) not claimed in USGN Patent Rights; and (iii) owned
or exclusively licensed, with the right to sublicense, by USGN or any Affiliate
of USGN (including but not limited to such information exclusively licensed by
USGN or any Affiliate of USGN under the TIAX Agreement), to the extent necessary
or useful to Kidde in, or related to or derived from: (a) the development,
formulation, manufacture, use, import, sale or offer for sale of Products,
and/or (b) the practice of USGN Patent Rights.
1.23 "USGN PATENT RIGHTS" means the rights under or in information or
discoveries claimed in any invention disclosures, patents, and/or patent
applications, both foreign and domestic, and all divisionals, continuations,
continuations-in-part, refilings, reissues, substitutions, renewals,
reexaminations, patents of addition, inventors' certificates, patent term
extensions, supplementary protection certificates, and any letters patent that
issue thereon that are: (i) owned or exclusively licensed, with the right to
sublicense, by USGN or any Affiliate of USGN under the TIAX AGREEMENT (including
without limitation with respect to the information and discoveries claimed in
U.S. Patent Application Serial No. 10/182,821, Canadian Patent Application
Serial No. 2397075 and European Patent Application Serial Number EPO/01 918
985.1) and/or (ii) based on an Invention made at any time prior to or during the
Term of this Agreement that are necessary or useful to Kidde in, or relate to or
are derived from the development, formulation, manufacture, use, import, sale or
offer for sale of Products and that are owned or exclusively licensed, with the
right to sublicense, by USGN or any USGN Affiliate.
1.24 "VALID CLAIM" means a claim in the USGN Patent Rights or the Joint
Patent Rights, which has not been disclaimed or held invalid by a decision
beyond the right of review or otherwise has been finally determined by a court
of competent jurisdiction to be unenforceable.
ARTICLE 2
GRANT OF RIGHTS
2.1 TECHNOLOGY LICENSE. Subject to the terms of this Agreement, and in
particular subject to the rights reserved in Article 3 hereof, USGN hereby
grants to Kidde and its Affiliates an exclusive, worldwide license (with the
right to sublicense pursuant to Section 2.2 of this Agreement) under the USGN
Patent Rights, USGN's interest in the Joint Patent Rights, and the USGN Know-How
to develop, manufacture or have manufactured, use, import, sell and offer to
sell the Products worldwide for use within the field of biological and/or
chemical decontamination. Kidde agrees not to use the USGN Patent Rights and the
USGN Know-How for any other purpose, without the prior written consent of USGN,
which shall not be unreasonably withheld. USGN shall retain a non-exclusive
license (with no right to sublicense) under the USGN Patent Rights and USGN
Know-How solely for the limited purpose of making and using Products for
internal research purposes. For purposes of clarity, the parties acknowledge and
agree that the license to the rights described Section 1.23(i) of this Agreement
is limited by the scope of the license granted in Section 3.1 of the TIAX
AGREEMENT.
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2.2 SUBLICENSING. Kidde shall have the right to sublicense the rights
granted under Section 2.1 to Third Parties upon obtaining the prior written
consent of USGN, which USGN shall not unreasonably withhold or deny. If Kidde
grants a sublicense, all of the terms and conditions of this Agreement shall
apply to the sublicensee to the same extent as they apply to Kidde for all
purposes of this Agreement. Kidde assumes full responsibility for the
performance of all obligations so imposed on such sublicensee and will itself
pay and account to USGN for all royalties due under this Agreement by reason of
the operations of any such sublicensee.
2.3 USGN SUBLICENSES. The USGN Patent Rights with respect to the
information and discoveries claimed in U.S. Patent Application Serial No.
10/182,821 were acquired by or licensed to USGN pursuant to the terms of the
TIAX AGREEMENT, and the license to those rights granted under Section 2.1 of
this Agreement is and will be limited by the scope of the license granted in
Section 3.1 of the TIAX AGREEMENT.
2.4 DISCLOSURE OF USGN KNOW-HOW. Within thirty (30) days following the
Effective Date, USGN shall make available to Kidde, subject to the terms of this
Agreement, all USGN Know-How. Thereafter, USGN shall promptly make such revised
and updated USGN Know-How available to Kidde throughout the Term of this
Agreement.
2.5 PATENT MARKING. Kidde agrees that all packaging containing Products
or documentation therefore will be permanently and legibly marked with the
number of the patent issued with respect to the information and discoveries
claimed in U.S. Patent Application Serial No. 10/182,821 in accordance with each
country's patent laws, including Xxxxx 00, Xxxxxx Xxxxxx Code. Kidde agrees to
include the logo of USGN, in a size not less than one half (1/2) inch square, on
all Product packaging and containers; provided, however, that USGN agrees to
consider in good faith a request by Kidde on a product by product basis to
include a USGN logo less than one half (1/2) inch square and to not to
unreasonably deny such a request where it is commercially impracticable to
include a one half (1/2) inch square logo.
2.6 RELATED TECHNOLOGY. During the Term of this Agreement, if: (i) USGN
acquires rights, from a Third Party other than TIAX LLC, under any patented
technology within the field of non-hazardous, non-toxic biological and/or
chemical decontamination by or through the use of an aqueous, sprayable foam;
and (ii) Kidde desires to sublicense such patented technology, the parties
shall, in good faith, attempt to negotiate mutually acceptable terms and
conditions applicable to the sublicensing of such technology. If the parties
fail to negotiate a written agreement governing the use thereof, such technology
shall not be included within the definition of Products under this Agreement and
neither party shall be under any further obligation to, or have rights against,
the other party with respect to such technology. Notwithstanding the foregoing,
Kidde may acquire rights from a Third Party with respect to any biological
and/or chemical decontamination products and/or technology that are not Covered
by the USGN Patent Rights and such products and/or technology shall not be
deemed to fall within the definition of Products under this Agreement and shall
not be subject to any royalty obligations hereunder.
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2.7 ASSIGNMENT OF TRADEMARK. On the Effective Date, USGN shall deliver
to Kidde an assignment agreement, in the form of Exhibit G, whereby USGN shall,
subject to the terms of this Agreement, assign to Kidde all of its right, title
and interest in the Trademark, including all goodwill associated therewith (the
"Trademark Assignment Agreement"). After the Effective Date, USGN, for no
further consideration, shall execute and deliver, or cause to be executed and
delivered, such other instruments of conveyance, assignment, transfer and
delivery, and will take such other actions, as Kidde may reasonably request in
order to more effectively transfer, convey, assign and deliver to Kidde the
Trademark, or to enable Kidde to exercise and enjoy all rights and benefits of
USGN with respect thereto and put Kidde in actual possession and control of the
Trademark. Kidde shall be responsible for any and all future expenses associated
with registration and prosecution of the Trademark. During the Term of this
Agreement, Kidde undertakes to use commercially reasonable efforts to protect
the Trademark against infringement worldwide. During the Term of this Agreement,
Kidde shall not use the Trademark except in connection with the manufacture,
marketing and sale of the Products. During the Term of this Agreement, Kidde
shall not assign any interest in the Trademark except to Affiliates for use
solely in connection with the manufacture, marketing and sale of the Products
during the Term of this Agreement. During the Term of this Agreement, Kidde may
license use of the Trademark to its Affiliates, or sublicensees under Section
2.2 of this Agreement, for use in connection with the manufacture, marketing and
sale of the Products.
ARTICLE 3
RESEARCH AND DEVELOPMENT
3.1 PRIMARY RESPONSIBILITIES. USGN shall be responsible for research
and development with respect to the quality and formulation of existing
Products, at its sole cost and expense. Kidde shall be responsible for research
and development with respect to the manufacturing processes of existing
Products, at its sole cost and expense.
3.2 PROPOSALS. Either party may, from time to time and on a project by
project basis, submit written project proposals to the other party for research
and development opportunities to be conducted for Kidde by USGN regarding: (i)
new Products for existing Applications and/or (ii) new Applications for existing
Products (each such proposal is hereinafter referred to as a "Proposal"). Each
Proposal will contain, at a minimum, detailed information describing: (i) the
scope of the new Product and/or new Application, (ii) the market research
conducted demonstrating the market for such new Product and/or new Application,
(iii) the budgetary cost for such research and development opportunity and (iv)
delivery schedules and targets. For purposes of clarity, the parties agree that
any such research and development opportunity shall not be treated as
consideration received by USGN under Section 4.1(e) of the TIAX AGREEMENT and
further that the budgetary cost for such research and development opportunity
shall not be marked up to compensate for any amounts USGN might otherwise have
owed TIAX under Section 4.1(e) of the TIAX AGREEMENT. Thereafter, the submitting
party shall discuss the Proposal with the receiving party, and shall provide
such additional information as the receiving party reasonably requests. Provided
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that the submitting party complies with the foregoing obligations, the receiving
party shall inform the submitting party in writing, within sixty (60) days after
receipt of the Proposal as to whether or not the receiving party desires USGN to
undertake such research and development project. If the receiving party accepts
such a Proposal, then USGN shall notify TIAX LLC of the research and development
activities to be performed under such Proposal and shall obtain a written (i)
consent from TIAX LLC approving such research and development activities
pursuant to Section 5.1 of the TIAX AGREEMENT and (ii) waiver from TIAX LLC of
any right to claim a license, pursuant to Section 13.4(d) of the TIAX AGREEMENT,
with respect to any technology developed in connection with such research and
development activities. If USGN provides Kidde with an original of such written
consent and waiver from TIAX LLC, the parties will negotiate, in good faith, a
separate written agreement setting forth the specific terms and conditions
(including but not limited to cost and delivery obligations) of any accepted
research and development opportunity. If the parties fail to negotiate a written
agreement governing such proposed research and development activities, neither
party shall be under any further obligation to, or have rights against, the
other party with respect to such research and development activities. If Kidde
rejects a Proposal submitted by USGN, USGN may undertake such Proposal at USGN's
sole cost and expense and market or manufacture such improved Product. Nothing
in this Section shall prevent Kidde from conducting its own research and
development projects at Kidde's sole cost and expense.
3.3 PAYMENTS. Upon execution of a written agreement governing the
Proposal, USGN shall promptly begin performing the research and development
work. Within ten (10) days after the end of a calendar month, USGN shall submit
written invoices and supporting documentation of work performed, such as time
sheets, during the previous calendar month. Kidde shall pay USGN for such
research and development work within thirty (30) days of receipt of such
invoices and supporting documentation, provided that the total amount to be
received by USGN for such research and development work shall not exceed the
amount agreed upon by the parties in the written agreement with respect to the
Proposal. Notwithstanding anything in this Agreement to the contrary, USGN
agrees that all research and development work performed by USGN for Kidde
pursuant to a Proposal, including but not limited to any Inventions arising out
of such work, and any and all products, information and results thereof,
including but not limited to any and all new product formulations and data,
shall: (i) be considered a "work made for hire" under the copyright laws of the
United States, (ii) be the sole and exclusive property of Kidde, (iii) not
constitute or be deemed an "improvement" made by USGN under or pursuant to
Section 13.4(d) of the TIAX AGREEMENT, and (iv) not be considered a Joint
Invention, USGN Know-How or lead in any way to the creation of Joint Patent
Rights or any other patent rights on behalf of USGN. Kidde shall exclusively own
all right, title and interest in and to the products, information and results of
the research and development work performed for Kidde by USGN, including but not
limited to any Inventions or patent rights resulting from such efforts. USGN
shall take any and all necessary actions including but not limited to executing
assignment agreements needed to secure to Kidde full and exclusive ownership of
such products, information and results and any and all Inventions and patent
rights related thereto.
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3.4 AUDIT RIGHTS. USGN shall keep complete and accurate records
pertaining to the costs incurred in performing research and development for any
accepted Proposal in sufficient detail to permit Kidde to confirm the accuracy
of such costs. At Kidde's written request, USGN will prepare abstracts of USGN's
relevant business records for review by Kidde and/or it's independent certified
public accountants. If, based on a review of such abstracts, Kidde reasonably
believes that a full audit of said business records would be necessary for the
confirmation of the accuracy of the research and development costs, Kidde's
independent certified public accountants shall have full access to review all
work papers and supporting documents pertinent to such abstracts, and shall have
the right to discuss such documentation with USGN's independent certified public
accountants. Such audit rights may be exercised no more often than once a year,
within three (3) years after the period to which such records relate, upon
written notice to USGN and during normal business hours. Kidde will bear the
full cost of such audit unless such audit discloses an overpayment by Kidde of
more than five percent (5%) from the amount due in which case USGN shall
promptly refund any such overpayment and reimburse the costs incurred by Kidde
for such audit. The terms of this Section 3.4 shall survive any termination or
expiration of this Agreement for a period of three (3) years.
3.5 RIGHT OF FIRST REFUSAL. Kidde shall inform USGN in writing, within
sixty (60) days after USGN completes agreed upon research and development work
under a Proposal, as to whether or not Kidde will undertake the marketing and/or
manufacturing of the Products for the new Product or new Application. In the
event Kidde decides to market and/or manufacture such new Product or
Application, the parties shall in good faith mutually agree upon a reasonable
schedule and agree upon apportioning the financial commitments required for
Kidde to begin marketing and/or manufacturing the Products. For purposes of
clarity, Kidde may agree to both manufacture and market the Products for the
improved Product or Application or it may elect to either manufacture or market
the Products for such Product or Application.
3.6 EXCLUDED APPLICATIONS. In the event that Kidde does not agree to
market and/or manufacture the new Product or new Application, then Kidde shall
in good faith endeavor to license such research and development products,
information and results to USGN upon such terms and conditions, including but
not limited to terms and conditions of use, and subject to a reasonable royalty
rate to be mutually agreed upon by the parties in a separate written agreement.
ARTICLE 4
LIMITATION OF LIABILITY
4.1 LIMITATION OF LIABILITY. REGARDLESS OF WHETHER ANY REMEDY PROVIDED
FOR HEREIN FAILS OF ITS ESSENTIAL PURPOSE BY LAW, IN NO EVENT SHALL EITHER PARTY
BE LIABLE FOR ANY SPECIAL, INDIRECT, INCIDENTAL, OR CONSEQUENTIAL LOSSES OR
DAMAGES (INCLUDING, WITHOUT LIMITATION DAMAGES FOR LOSS OF USE OF FACILITIES OR
EQUIPMENT, LOSS OF REVENUE, LOSS OF PROFITS OR LOSS OF GOODWILL) SUFFERED BY THE
OTHER PARTY IN CONNECTION WITH THIS AGREEMENT, EVEN IF SUCH PARTY SHALL HAVE
BEEN ADVISED OF THE POSSIBILITY OF SUCH LOSS OR DAMAGE.
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ARTICLE 5
MANUFACTURING AND MARKETING
5.1 MANUFACTURING. Kidde shall be solely and exclusively responsible at
its own expense for commercial manufacture of the Products, either through
itself, its Affiliates or Third Parties, and shall be responsible for complying
with local manufacturing protocols in the event it elects to manufacture
Products outside of the United States.
(a) KIDDE WARRANTY AND PRODUCT LIABILITY CLAIMS. Kidde shall be
responsible for recalls, warranty claims, and product liability claims to the
extent resulting from: (i) the failure of Kidde to manufacture the Products in
conformance with the Product Specifications set forth on Exhibit B (and such
future Product Specifications as mutually agreed upon by the parties in writing)
and/or (ii) the failure of the Product to conform to the application standards
set forth in Exhibit D (and such future application standards as mutually agreed
upon by the parties in writing) as a result of an error in Kidde's foam
distribution system for the Products.
(b) USGN WARRANTY AND PRODUCT LIABILITY CLAIMS. USGN shall be
responsible for recalls, warranty claims, and product liability claims to the
extent resulting from: (i) the Products failing to perform in accordance with
the Performance Requirements of the Products as set forth on Exhibit C (and such
future Performance Requirements as mutually agreed upon by the parties in
writing), and/or (ii) the Products failing to conform to the safety standards
set forth in Exhibit E (and such future safety standards as mutually agreed upon
by the parties in writing) and/or (iii) products marketed or manufactured by
USGN under Section 3.2 or 3.6 of this Agreement.
5.2 PRICING. Kidde shall determine, in its sole discretion, the
pricing, discounting policy and other commercial terms relating to sale of the
Products.
5.3 PROSECUTION OF USGN PATENT RIGHTS. USGN shall be responsible for
preparing, filing, prosecuting and maintaining patent applications (including
handling interferences), and for obtaining patent extensions, supplementary
protection certificates, and the like for the USGN Patent Rights (including all
payment obligations) in any countries and territories where Kidde desires to
commercialize the Products and such applications, extensions and certificates
shall be included within the USGN Patent Rights. USGN shall promptly furnish
copies of all such related documents to Kidde within 30 days of receipt or
filing. USGN shall consult with Kidde in all aspects of the preparation, filing,
prosecution and maintenance of the USGN Patent Rights and shall provide Kidde
sufficient opportunity to comment on any document that USGN intends to file or
to cause to be filed with the relevant intellectual property or patent office,
which comments shall be reasonably considered by USGN. USGN shall promptly
inform Kidde as to all matters that come to its attention that may affect the
preparation, filing, prosecution, or maintenance of the USGN Patent Rights and
permit Kidde to provide comments and suggestions with respect to such
activities, which comments and suggestions shall be reasonably considered by
USGN. USGN shall not surrender or abandon any USGN Patent Rights without the
prior written consent of Kidde, not to be unreasonably withheld, and shall
immediately notify Kidde in the event it becomes aware that TIAX LLC intends to
surrender or abandon any rights under the USGN Patent Rights, in which case USGN
shall undertake its obligations under this Section.
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5.4 REGULATORY APPROVAL. Kidde shall be responsible for obtaining all
necessary governmental and regulatory approvals (including but not limited to
all required marketing, safety, efficacy and pricing approvals) required to
manufacture, market and sell the Products worldwide. USGN agrees to provide
reasonable cooperation and assistance to Kidde with respect to obtaining such
approvals. The parties further both agree to diligently complete (including
providing all required information and such missing or additional information as
requested by the Department of Homeland Security) and simultaneously submit
separate Safety Act applications, within a prompt period of time following the
Execution Date, for both: (i) "Designation" of the Product as a "Qualified
Anti-Terrorism Technology" ("QATT"), and (ii) "Certification" of the Product as
an "Approved Product for Homeland Security," for purposes of obtaining the
liability protections set forth in the Safety Act (including, but not limited
to, the government contractor defense). Kidde and USGN shall reasonably
cooperate with respect to such applications and shall use reasonable commercial
efforts to require TIAX LLC to file such an application.
5.5 MARKETING. Upon obtaining the requisite governmental and/or
regulatory approvals as required by Section 5.4 of this Agreement, Kidde and/or
its sublicensees shall use commercially reasonable efforts to promote and market
the Product in all Significant Markets.
5.6 COMMERCIAL SUCCESS. Upon obtaining the requisite governmental
and/or regulatory approvals as required by Section 5.4 of this Agreement, Kidde
shall use commercially reasonable efforts to commercialize the Product in
substantially all major channels and major geographic markets in the world in
accordance with the annual sales targets for such channels and markets as set
forth in Exhibit F, which is incorporated herein by such reference. The parties
shall update such sales targets on an annual basis. If, during the time period
beginning on the date of the First Commercial Sale in the U.S. and ending five
(5) years thereafter, annual sales of Products invoiced by Kidde and its
Affiliates and any sublicensees with respect to major channels and major
geographic markets continuously fall short of the sales targets set forth in
Exhibit F for such channels and geographic markets, then the parties agree to
meet and confer in good faith regarding the most appropriate corrective actions
to take in such channels and markets. The following factors shall be considered
by the parties in determining the most appropriate course of action to take with
respect to such channels and markets: (i) Kidde's and its Affiliates and
sublicensees competitive position, including promotional spending levels, sizes
of field sales forces and market development expenditures, relative to
competitive products in such channels and markets; (ii) USGN's interest in, and
ability to increase revenues by, assuming all/or partial rights to the Product
in such channels and markets and (iii) the policy of the governing health,
safety or other applicable regulatory authority in such channels and markets
with respect to any required marketing, safety, efficacy and/or pricing
approval. USGN shall not have the right to terminate Kidde's license in Section
2.1 of this Agreement with respect to any such channel and/or market where Kidde
can show that it used commercially reasonable efforts and that there are
impediments beyond Kidde's reasonable control to commercializing the Products in
the channel and/or market in question. In the event the parties agree in writing
that all or partial rights to the Product shall revert to USGN with respect to
such channel and market, the parties shall thereupon mutually agree on
appropriate commercial terms for the reversion of such rights.
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5.7 SECURITIES EXCHANGE ACT COMPLIANCE. Each party will promptly
provide the other on a timely basis such information as it reasonably requests
in order to satisfy filing and disclosure obligations under the Securities
Exchange Act of 1934, as amended, the Rules and Regulations of the Securities
and Exchange Commission promulgated hereunder, and under the laws, rules and
regulations pertaining to the London Stock Exchange or any foreign securities
exchange.
5.8 INSURANCE. In addition to and separate from any other obligations
of the parties contained herein, during the Term of this Agreement, each party
represents and warrants that it and its Affiliates are covered by and shall
maintain a reasonable program of commercial insurance, with respect to Products,
in amounts no less than the amounts, types and terms reasonably required by the
Department of Homeland Security under the Safety Act in connection with the
Safety Act applications of Kidde and USGN for Product to be "Designated" as a
QATT and "Certified" as an "Approved Product for Homeland Security." The parties
shall reasonably endeavor to obtain such other insurance amounts, types and
terms as required by such similar agencies or regulatory authorities in each of
the other countries in which Product is to be manufactured, used and sold.
Throughout the Term of this Agreement, each party will promptly notify the other
if at any time such insurance is not in effect, and each party will deliver to
the other a certificate of insurance evidencing the insurance required herein no
less than once during each calendar year. Each party shall endeavor to maintain
such insurance program, or other program with comparable coverage, beyond the
expiration or termination of this Agreement for a commercially reasonable
period.
ARTICLE 6
COMPENSATION
6.1. LICENSE FEE. In consideration of the license set forth in Section
2.1 hereof, Kidde shall pay to USGN a total fee of One Hundred Thousand Dollars
($100,000) to be paid as follows: (i) Fifty Thousand Dollars ($50,000) shall be
payable within ten (10) days following the Effective Date and (ii) the remaining
Fifty Thousand Dollars ($50,000) shall be payable within ninety (90) days of the
Effective Date. Such license fee shall be nonrefundable and noncrediatble.
6.2 FEE FOR TRADEMARK. In consideration of the assignment of the
Trademark set forth in Section 2.7 hereof, Kidde shall pay to USGN a total fee
of One Hundred Thousand Dollars ($100,000) to be paid as follows: (i) Fifty
Thousand Dollars ($50,000) shall be payable within ten (10) days following the
Effective Date and (ii) the remaining Fifty Thousand Dollars ($50,000) shall be
payable within ninety (90) days of the Effective Date. This assignment fee shall
be nonrefundable and noncreditable to Kidde in the event the Trademark reverts
back to USGN pursuant to Section 7.9 of this agreement.
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6.3 ROYALTY PAYMENTS; ADJUSTMENTS.
(a) ROYALTY ON PRODUCTS. During the Term of this Agreement, Kidde
agrees to pay USGN, a royalty payment on Equivalized Gallons of Product Sold
during a Kidde Fiscal Quarter (as defined in Section 6.4 below) by Kidde, its
Affiliates and sublicensees (the "Royalty"), according to the following rates,
as may be adjusted in accordance with subsection (b) below:
(i) *** per Equivalized Gallon for the first *** Equivalized
Gallons Sold during a "Kidde Fiscal Year";
(ii) *** per Equivalized Gallon for each Equivalized Gallon Sold,
during a "Kidde Fiscal Year," in excess of *** Equivalized Gallons and up to
*** Equivalized Gallons; and
(iii) *** per Equivalized Gallon for each Equivalized Gallon Sold
in excess of *** Equivalized Gallons during a "Kidde Fiscal Year".
No multiple royalties shall be payable because the use, manufacture, or
sale of any Product is, or shall be, Covered by more than one Valid Claim under
the USGN Patent Rights. Kidde shall identify the dates of the "Kidde Fiscal
Year" prior to the commencement of each such fiscal year, which fiscal year
shall consist of four (4) Kidde Fiscal Quarters. Upon the beginning of each new
Kidde Fiscal Year, the measure of Product Sold by Kidde, its Affiliates and
sublicensees shall begin at *** for purposes of calculating the appropriate rate
to apply under subsections (i), (ii) and (iii) above.
(b) ROYALTY ADJUSTMENTS. Upon request by Kidde from time to time, the
parties agree to enter into good faith discussions to determine whether the
royalty rate set forth in subsection (a) above should be reduced, on a product
by product and/or worldwide or country by country basis, either: (i) with
respect to specific large contracts or sales opportunities; provided, however,
that in the event a such a reduced royalty rate is agreed to, any Equivalized
Gallons of Product Sold under any such contract or opportunity shall not count
towards the volume breakpoints set forth in Section 6.3(a), until such time as
the royalty rate established under 6.3(a) is *** the royalty rate under such
contract or opportunity, at which point the total cumulative amount of
Equivalized Gallons of Product previously Sold under such contract or
opportunity shall count (and any additional Equivalized Gallons of Product Sold
shall continue to count) towards such volume breakpoints; and/or (ii) because of
material changes or developments in the commercial environment adversely
affecting profitability. Material changes or developments in the commercial
environment would include, but not be limited to, situations where (i) lower
selling prices are necessary to effectively compete with competitive products,
and as a result reduce profitability; (ii) the co-ownership by any United States
government agency or other Third Party in the USGN Patent Rights, the Joint
Patent Rights and/or the USGN Know-How legally or effectively reduces or limits
Kidde's ability to derive the full benefit of the rights granted to Kidde under
Section 2.1 of this Agreement, and/or (iii) any Third Party's patent
*** CONFIDENTIAL TREATMENT REQUESTED
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or patent application legally or effectively reduces or limits Kidde's ability
to derive the full benefit of the rights granted to Kidde under Section 2.1 of
this Agreement. Notwithstanding the foregoing, in the event that (i) the USGN
Patent Rights or Joint Patent Rights do not Cover the manufacture, import, use,
sale or offer for sale of a Product and/or (ii) no patents have issued by ***,
with respect to Product covered by the information and discoveries claimed in
***, the parties shall in good faith, *** the rate of the Royalty on a product
by product basis and/or worldwide or country by country basis, to be
commercially competitive with the cost of alternative sources of supply.
6.4 PAYMENTS. The Royalty shall be paid within *** days after the
completion of each Kidde Fiscal Quarter with respect to Product Sold during the
completed Kidde Fiscal Quarter. Kidde shall, prior to each calendar year,
identify the dates of each "Kidde Fiscal Quarter" for the upcoming calendar
year. Kidde shall be entitled to *** against and *** of any Royalty paid on
Product Sold during a Kidde Fiscal Quarter where (i) payment is not received
within *** days past the applicable *** for such Product, which in no event
shall exceed *** days of the invoice date for such Product and (ii) the total
amount of such *** exceeds *** of the overall value of Net Sales of Product
during any Kidde Fiscal Quarter. Such *** shall then be applied against the next
Royalty payment. Any payments due hereunder shall be payable in United States
dollars to USGN by wire transfer at such bank in the United States as USGN shall
specify to Kidde in writing from time to time. Not less than one (1) business
day prior to such wire transfer, the remitting party shall telefax the receiving
party advising it of the amount and of the payment to be made.
6.5 REPORTS. Each payment of Royalties owing to USGN shall be
accompanied by a statement, on a country-by-country basis, of the amount of
Equivalized Gallons of Product Sold during the relevant Kidde Fiscal Quarter.
6.6 RECORDS AND AUDIT. Kidde shall keep complete and accurate Product
records pertaining to the number of Equivalized Gallons of Product Sold and of
the Royalty and other amounts payable under this Agreement in sufficient detail
to permit USGN to confirm the accuracy of all payments due hereunder. At USGN's
written request, Kidde will prepare abstracts of Kidde's relevant business
records for review by USGN. If, based on a review of such abstracts, USGN
reasonably believes that a full audit of said business records would be
necessary for the confirmation of the accuracy of all payments due hereunder,
USGN's independent certified public accountants shall have full access to review
all work papers and supporting documents pertinent to such abstracts, and shall
have the right to discuss such documentation with Kidde's independent certified
public accountants. Such audit rights may be exercised no more often than *** a
year, within *** years after the payment period to which such records relate,
upon written notice to Kidde and during normal business hours. USGN will bear
the full cost of such audit unless such audit discloses an underpayment of more
than *** from the amount of royalties due. Kidde shall promptly make up any
underpayment. The terms of this Section 6.6 shall survive any termination or
expiration of this Agreement for a period of *** years.
*** CONFIDENTIAL TREATMENT REQUESTED
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6.7 SUBLICENSE. In the event Kidde sublicenses its right to sell or
manufacture a Product, such sublicenses shall include an obligation for the
sublicensee to account for and report its Sales of such Product on the same
basis as if such sales were Sales of Product by Kidde, and Kidde shall pay the
applicable Royalty to USGN as if the Sales of the sublicensee were sales of
Kidde.
6.8 EXPIRATION OF ROYALTY OBLIGATIONS. The royalty obligations set
forth in Section 6.3 above shall expire on a country-by-country and
product-by-product basis upon the later of: (i) in those countries in which a
USGN Patent Right or Joint Patent Right Covers the manufacture, use or sale of a
Product sold by Kidde, its Affiliate or its sublicensees, the date upon which
the manufacture, use or sale of such Product would no longer infringe a Valid
Claim of a USGN Patent Right or Joint Patent Right in the absence of rights
hereunder; or (ii) ten (10) years from the Effective Date.
ARTICLE 7
TERM AND TERMINATION
7.1 TERM. The "Term" of this Agreement shall commence upon the
Effective Date. Unless earlier terminated as provided in this Article 7, the
Term shall expire on the expiration of royalty obligations as set forth in
Section 6.8 of this Agreement.
7.2 LICENSES UPON EXPIRATION. In the event that the Agreement expires
as set forth in Section 7.1 above without early termination by USGN for a
material breach by Kidde as provided in Section 7.3 or upon the filing by or
against Kidde of a bankruptcy event as provided in Section 7.4, the license
granted under Section 2.1 shall automatically become a non-exclusive,
irrevocable, perpetual, fully-paid license to use and/or sublicense the use of
USGN Know-How to manufacture, use and sell Products in each country where such
license had previously been in effect. In the event one or more channels or
markets are eliminated from the scope of the Kidde license pursuant to Section
5.6, the license to Kidde in this Section 7.2 shall not apply to such channels
or markets.
7.3 TERMINATION FOR BREACH. Each party shall have the right to
terminate this Agreement and its obligations hereunder for material breach by
the other party, which breach remains uncured for ninety (90) days after written
notice is provided to the breaching party, or in the case of an obligation to
pay a Royalty or other payments owing under this Agreement, which breach remains
uncured for thirty (30) days after written notice to the breaching party unless
there exists a bona fide dispute as to whether such Royalty or other payments
are owing. For this purpose only, a termination by TIAX LLC of the TIAX
AGREEMENT will be deemed a material breach of this Agreement by USGN, unless, in
Kidde's reasonable judgment, such termination has no material adverse effect on
the ability of Kidde to practice the rights provided in Section 2.1 of this
Agreement in connection with the manufacture, marketing and sale of the
Products. In the event USGN acquires all of the stock of TIAX LLC, such
acquisition shall not constitute a material breach of this Agreement, unless
such termination has a material adverse effect on the ability of Kidde to
practice the rights provided in Section 2.1 of this Agreement in connection with
the manufacture, marketing and sale of the Products and provided further that
the license provided for in Section 2.1 of this Agreement shall remain in effect
upon the terms and conditions of this Agreement. Notwithstanding any termination
under this Section 7.3, any obligation to pay Royalty or other payments which
had accrued or become payable as of the date of termination shall survive
termination of this Agreement. After the effective date of any termination under
this Section 7.3, Kidde may sell all Products and parts therefore on hand at the
date of termination provided Kidde pays the Royalty thereon unless Kidde is
terminating due to the material breach of USGN, in which case no Royalty shall
be owed.
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7.4 TERMINATION FOR BANKRUPTCY. If either USGN or Kidde (1) makes a
general assignment for the benefit of creditors; (2) files an insolvency
petition in bankruptcy; (3) petitions for or acquiesces in the appointment of
any receiver, trustee or similar officer to liquidate or conserve its business
or any substantial part of its assets; (4) commences under the laws of any
jurisdiction any proceeding involving its insolvency, bankruptcy,
reorganization, adjustment of debt, dissolution, liquidation or any other
similar proceeding for the release of financially distressed debtors; or (5)
becomes a party to any proceeding or action of the type described above in (3)
or (4) and such proceeding or action remains undismissed or unstayed for a
period of more than sixty (60) days, then the other party may by written notice
terminate this Agreement in its entirety with immediate effect.
(a) Notwithstanding anything to the contrary, each of the parties
hereto acknowledges and agrees that this Agreement (a) constitutes a license of
Intellectual Property as such term is defined in the United States Bankruptcy
Code, as amended (the "Code"), and (b) is an executory contract, with
significant obligations to be performed by each party hereto. All rights and
licenses granted under or pursuant to this Agreement by USGN to Kidde are, for
all purposes of Section 365(n) of the Code or such replacement provision
therefore, licenses of rights to "intellectual property" as defined in the Code.
The parties agree that Kidde, as a licensee of such rights under this Agreement,
shall retain and may fully exercise all of its rights and elections under the
Code. If a proceeding under the Code is commenced by or against USGN and this
Agreement is rejected as provided in the Code, then USGN (in any capacity,
including debtor-in-possession) shall take such steps as are necessary to permit
Kidde to exercise its rights under this Agreement. All rights, powers and
remedies of Kidde provided in this Section 7.4(a) are in addition to and not in
substitution for any and all other rights, powers and remedies now or hereafter
existing at law or in equity (including, without limitation, the Code) in the
event of any such commencement of a bankruptcy proceeding by or against USGN.
Kidde, in addition to the rights, powers and remedies expressly provided herein,
shall be entitled to exercise all other such rights and powers and resort to all
other such remedies as may now or hereafter exist at law or in equity (including
the Code) in such event.
7.5 TERMINATION FOR USGN'S BREACH. In the event Kidde terminates this
Agreement pursuant to Section 7.3 or Section 7.4 above, all licenses granted to
Kidde under this Agreement shall survive and USGN shall use best efforts to
effectuate a continuation of Kidde's sublicenses under Section 3.5 of the TIAX
AGREEMENT. In addition, the restrictions on use of the Trademark set forth in
Section 2.7 hereof shall terminate. Kidde shall retain all of its rights to
bring an action against USGN under Article 12, including all of its rights for
recovery of damages.
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7.6 TERMINATION BY KIDDE. In the event that either: (i) after one (1)
year from the Effective Date, for any two (2) consecutive Kidde Fiscal Quarters
the total Royalty payments for Product Sold during each such Kidde Fiscal
Quarter, as a percentage of Net Sales of Product Sold during such Kidde Fiscal
Quarter, is equal to or greater than eighteen percent (18%), and/or (ii) the
co-ownership of any United States government agency or other Third Party in the
USGN Patent Rights, the Joint Patent Rights and the USGN Know-How, or, any Third
Party's patent, patent application or other intellectual property rights,
legally or effectively prevents Kidde's ability to derive the full benefit of
the rights granted to Kidde under Section 2.1 of this Agreement, and/or (iii)
the USGN Patent Rights or Joint Patent Rights do not Cover the manufacture, use,
import, sale or offer for sale of a Product, and/or (iv) no patents are issued
by July 31, 2007, with respect to Products covered by the information and
discoveries claimed in U.S. Patent Application Serial No. 10/182,821, Canadian
Patent Application Serial No. 2397075 and European Patent Application Serial
Number EPO/01 918 985.1), and/or (v) following submission of a Safety Act
application for Product to be "Designated" as a QATT and "Certified" as an
"Approved Product for Homeland Security," the Department of Homeland Secuirty
denies Kidde's or USGN's application for "Designation" or "Certification" of the
Product, or fails to extend the term of a "Designation" or "Certification"
previously issued to Kidde or USGN, then Kidde shall have the right to terminate
this Agreement, on a product-by-product basis and/or worldwide or
country-by-country basis, upon sixty (60) days prior written notice.
7.7 MUTUAL TERMINATION FOR SIGNIFICANT TECHNOLOGY; UNILATERAL
TERMINATION FOR LITIGATION COSTS. If a Third Party introduces significant
technology into the world marketplace, which reduces profit factors and
substantially eliminates the possibility of competing with such technology, to
the extent it is no longer viable to manufacture, market and sell Product, then
both parties agree to mutually terminate this Agreement over a six (6) month
period, minimizing such losses as are reasonably possible. In the event that
Kidde and/or USGN incur litigation costs, expenses, damages and/or awards, with
respect to Product, totaling in excess of twenty-five percent (25%) of Net Sales
of Product during any prior twelve (12) month period, then Kidde and/or USGN
shall have the option to terminate this Agreement over a six (6) month period,
minimizing such losses as are reasonably possible.
7.8 PRODUCT REVERSION. In the event USGN terminates this Agreement for
a material breach by Kidde as provided in Section 7.3 or upon the filing by or
against Kidde of a bankruptcy event as provided in Section 7.4, all licenses
granted to Kidde under Section 2.1 hereof shall terminate, all rights to
Products shall automatically revert to USGN. Kidde shall use commercially
reasonable efforts to effect the transfer to USGN of Product development,
manufacturing and marketing activities. If Kidde loses its rights in one or more
channels or markets pursuant to Section 5.6, this Section 7.8 shall apply only
in the countries in which such termination is effective. If such termination
occurs on a worldwide basis, then Kidde shall (i) provide such supply of
Products until its inventory of Products is depleted in exchange for
reimbursement of Kidde's cost of goods sold with respect to the supply.
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7.9 REVERSION OF TRADEMARK. In the event USGN terminates this Agreement
for a material breach by Kidde as provided in Section 7.3 or upon the filing by
or against Kidde of a bankruptcy event as provided in Section 7.4, Kidde and its
Affiliates shall be deemed to assign to USGN on the effective date of
termination all of their right, title and interest in the Trademark. Any
sublicense of the Trademark granted by Kidde shall terminate on the effective
date of termination of this Agreement pursuant to said Sections. In those
circumstances, Kidde will provide to USGN such written forms of assignment and
acknowledgments as are reasonably requested by USGN to secure to USGN full
rights to the Trademark. Notwithstanding any Trademark reversion under this
Section 7.9, Kidde and its Affiliates and sublicensees shall have a limited
license to use the Trademark to sell all Products and parts therefore on hand at
the effective date of termination, provided Kidde and its Affiliates and
sublicensees pay the Royalty thereon.
7.10 SURVIVAL. Articles 1, 4, 9, 10 and 12, and Sections 3.4, 5.1(a),
5.1(b), 5.7, 6.6, 7.2, 7.3, 7.4(a), 7.5, 7.6, 7.8, 7.9, 7.11 and 13.4 of this
Agreement, shall survive termination of this Agreement and continue thereafter
in full force and effect until fully observed and performed as required under
this Agreement, subject to applicable statute of limitations.
7.11 Limitation of Remedies. Upon termination of this Agreement for any
reason whatsoever, neither party shall have any obligation to the other for
compensation or for damages of any kind (excluding any obligation to pay
Royalties or other payments as provided under this Agreement which had accrued
or become payable as of the date of termination), whether on account of the loss
by the other of present or prospective sales, investments or goodwill,
advertising costs, supplies, termination of employees, employees' salaries and
other like or unlike items, and each party hereby waives any rights in
connection therewith which may be granted to it by statute or otherwise which
are not granted to it by this Agreement.
ARTICLE 8
INTELLECTUAL PROPERTY
8.1 OWNERSHIP OF INVENTIONS. Each party shall own any Inventions
pertaining to the Products that are made solely by its or its Affiliates'
respective employees or agents ("USGN Patents" or "Kidde Patents" respectively);
provided, however, that unless otherwise agreed in a writing signed by both
parties, the parties agree that any Invention made by USGN or Kidde in
connection with work performed for Kidde by USGN under or in connection with a
Proposal shall be deemed to be and be owned solely by Kidde. Except with respect
to any work performed for Kidde by USGN under or in connection with a Proposal,
any Inventions made jointly by employees or agents of both USGN and Kidde or
their Affiliates shall be owned jointly by the parties ("Joint Inventions") as
determined in accordance with U.S. patent laws.
8.2 PROSECUTION OF PATENTS.
(a) USGN PATENTS. USGN Patents shall be prosecuted (including the
handling of interferences) and maintained by USGN or its licensors. USGN shall
furnish Kidde with copies of draft submissions to the relevant patent
authorities and will consider Kidde's comments in good faith. If Kidde does not
provide USGN with comments within thirty (30) days of receipt of a draft, USGN
shall be free to proceed with its submission or other contemplated action.
Further, USGN shall always be entitled to proceed with any submission or other
contemplated action if it determines time is of the essence, provided that USGN
makes reasonable efforts to inform Kidde as early as practicable and to consider
its comments where possible. USGN shall not abandon claims Covering Products
without prior notice to and consultation with Kidde, and shall not abandon
patent applications Covering Products without first offering assignment of such
applications to Kidde, which if Kidde accepts such assignment it shall
thereafter prosecute such applications at its sole expense and in its sole
discretion. In the event such applications are assigned to Kidde, USGN shall
retain a nonexclusive license with respect to the claims stated therein. Outside
of the field of decontamination, USGN's use of such license shall be royalty
free. Within the field of decontamination, USGN's use of such license shall be
subject to a reduction in the rate of the Royalty set forth in Section 6.3, as
mutually agreed upon by the parties in good faith. USGN shall bear the costs
incurred in connection with the prosecution and maintenance of USGN Patents.
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(b) KIDDE PATENTS COVERING PRODUCTS. It is anticipated that as part of
this collaborative development program, patents may be filed by and issued to
Kidde that may Cover Products, including without limitation patents over
compositions of matter (including formulations) of Products as well as
biological uses or processes for the manufacture or application of Products.
Kidde Patents shall be prosecuted (including the handling of interferences) and
maintained by Kidde, its Affiliates or sublicensees, at its expense. Kidde shall
furnish USGN with copies of draft submissions to the relevant patent authorities
and will consider USGN's comments in good faith. If USGN does not provide Kidde
with comments within thirty (30) days of receipt of a draft, Kidde shall be free
to proceed with its submission or other contemplated action. Further, Kidde
shall always be entitled to proceed with any submission or other contemplated
action if it determines time is of the essence, provided that Kidde makes
reasonable efforts to inform USGN as early as practicable and to consider its
comments where possible. Kidde shall not abandon claims Covering Products
without prior notice to and consultation with USGN, and shall not abandon patent
applications Covering Products without first offering assignment of such
applications to USGN, which if USGN accepts such assignment shall thereafter
prosecute such applications at its sole expense and in its sole discretion. In
the event such applications are assigned to USGN, Kidde shall retain a
nonexclusive license with respect to the claims stated therein. Outside of the
field of decontamination, Kidde's use of such license shall be royalty free.
Within the field of decontamination, Kidde's use of such license shall be
subject to the Royalty set forth in Section 6.3.
(c) JOINT PATENTS. With respect to Joint Inventions, the parties shall
meet and agree upon which party shall prosecute patent applications Covering
such Joint Invention. If either party prosecutes a patent application on a Joint
Invention, such party shall bear its own internal costs, and the external costs
for outside counsel, filing fees, etc. shall be borne equally by the parties,
except as otherwise provided in the second to last sentence of this paragraph.
Except for the licenses granted herein, each party may only practice and
sublicense Joint Inventions upon mutual written agreement of the other party on
terms and conditions reasonably acceptable to such party and the practicing or
sublicensing party shall have an obligation to account to the other party.
Either party may disclaim its interest in any particular patent or patent
application Covering a Joint Invention, in which case (i) the disclaiming party
shall assign its ownership interest in such patent or patent application to the
other party without consideration, (ii) the party which is then the sole owner
shall be solely responsible for all future costs of such patent or patent
application, and (iii) the disclaiming party shall hold no further rights
thereunder, except for a nonexclusive license. Such license shall be royalty
free outside of the field of decontamination, and if the licensee is Kidde shall
be subject to the Royalty set forth in Section 6.3 within the field of
decontamination and if the licensee is USGN shall be subject to a reduction in
the rate of the Royalty as mutually agreed upon by the parties in good faith.
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8.3 INFRINGEMENT OF PATENTS BY THIRD PARTIES.
(a) NOTIFICATION. Each party shall promptly notify the other in writing
of any alleged or threatened infringement or violation of the USGN Patent
Rights, Joint Patent Rights or Kidde Patent Rights of which it becomes aware and
provide any available information to the other relating to such alleged
infringement or violation. USGN shall be responsible for notifying TIAX LLC as
required under Article 7 of the TIAX AGREEMENT; provided, however, that for
purposes of clarity, Kidde shall only be required to notify USGN as provided in
the previous sentence.
(b) USGN PATENT RIGHTS. Kidde shall have the primary right, but not the
obligation, to bring, at Kidde's expense and in its sole control, an appropriate
action against any person or entity infringing or violating a USGN Patent Right
directly or contributorily. If Kidde does not bring such action within sixty
(60) days of notification thereof to or by USGN, USGN shall have the right, but
not the obligation, to bring at USGN's expense and in its sole control, such
appropriate action. The party not in control (the "non-controlling party") of
any action brought under this Section 8.3(b) shall: (i) join in and reasonably
cooperate with the party bringing such action (the "controlling party") to the
extent necessary to initiate and maintain such action (e.g. by providing
relevant documents, witnesses and testimony, etc.), provided that the
controlling party reimburses the non-controlling party for its reasonable costs
and expenses (excluding attorney's fees) incurred in connection therewith; and
(ii) be entitled to hire a separate counsel of its own choice and at its own
expense, to monitor the status of such action. In the event that the
non-controlling party elects, pursuant to Section 8.3(e) below, to and timely
contributes fifty percent (50%) of the costs of litigation against such Third
Party infringer, then the controlling party shall reasonably consider, in good
faith, such non-controlling party's suggestions with respect to litigation
strategy and/or settlement or resolution of such actions; provided, however,
that in such situation the controlling party shall have ultimate control
regarding such decisions. Notwithstanding anything to the contrary in this
Section 8.3(b), the controlling party shall not enter into a settlement, consent
judgment or other voluntary final disposition without the consent of the
non-controlling party where such settlement, consent judgment or other voluntary
final disposition would reasonably materially alter, derogate or diminish the
non-controlling party's rights under this Agreement, which consent shall not be
unreasonably withheld or delayed by the non-controlling party.
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(c) KIDDE PATENT RIGHTS. Kidde, in its sole control, may take such
action as it deems in its best interests with respect to any person or entity
that directly or contributorily infringes or violates a Kidde Patent Right. USGN
shall reasonably cooperate with Kidde in such action to the extent necessary to
initiate and maintain such action (e.g. by providing relevant documents,
witnesses and testimony, etc.), provided that Kidde reimburses USGN for its
reasonable expenses (excluding attorney's fees) incurred in connection with such
cooperation. USGN shall be entitled to hire a separate counsel of its own choice
and at its own expense, to follow the status of such action. In the event that
USGN elects, pursuant to Section 8.3(e) below, to and does contribute fifty
percent (50%) of the costs of litigation against such Third Party infringer,
then Kidde shall reasonably consider, in good faith, USGN's suggestions with
respect to litigation strategy and/or settlement or resolution of such actions;
provided, however, that Kidde shall have ultimate control regarding such
decisions. Notwithstanding anything to the contrary in this Section 8.3(c),
Kidde shall not enter into a settlement, consent judgment or other voluntary
final disposition without the consent of USGN where such settlement, consent
judgment or other voluntary final disposition would reasonably materially alter,
derogate or diminish USGN's rights under this Agreement, which consent shall not
be unreasonably withheld or delayed by USGN.
(d) JOINT PATENT RIGHTS. With respect to Third Party infringement of
Joint Patent Rights, the parties shall confer and the parties shall take such
action, allocate expenses and recoveries and determine how they will exercise
control over such action, in such manner, as they may agree.
(e) COSTS AND AWARDS. The non-controlling party under any action
brought pursuant to Section 8.3(b) or (c) may elect to contribute fifty percent
(50%) of the costs of litigation against such Third Party infringer, by
providing written notice to the controlling party of its desire to so contribute
within ninety (90) days after such action is first brought. If the
non-controlling party elects to bear fifty percent (50%) of such litigation
costs and reimburses the controlling party within thirty (30) days of the
controlling party's written request for such costs, then the parties shall, in
good faith, negotiate a pro rata apportionment of any damage award or settlement
resulting from such action according to the established adverse commercial
impact respectively incurred by each party as a result of such Third Party
infringement (where "adverse commercial impact" refers to the lost sales of
Products and lost Royalty amounts associated therewith). If the non-controlling
party does not elect to share such litigation costs or does not timely reimburse
the controlling party for such costs, it shall not participate in any damage
award or settlement resulting from such action.
(f) ALLOCATION OF PROCEEDS. In the event of any recovery of monetary
damages from a Third Party infringer, whether such damages result from the
infringement of USGN Patent Rights or Kidde Patent Rights, such recovery shall
be allocated first to un-reimbursed external costs and expenses incurred by the
controlling parties and non-controlling parties as provided for in this Section
8.3, and thereafter as provided in Section 8.3(e). If the amount recovered from
the Third Party is less than the aggregate expenses of the parties incurred in
connection with such litigation, the recovery shall be shared pro rata between
USGN and Kidde in proportion to their respective expenses.
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8.4 INFRINGEMENT OF THIRD PARTY PATENTS. In the event that any Product
manufactured, used or sold under this Agreement, becomes the subject of a Third
Party claim or potential claim for patent infringement, anywhere in the world,
and irrespective of whether USGN or Kidde is charged with said infringement, the
parties shall promptly meet to consider the claim and the appropriate course of
action; provided, however, that USGN shall be solely responsible for any Third
Party infringement claims relating to any products manufactured, used or sold by
USGN pursuant to Sections 3.2 and/or 3.6 of this Agreement. Unless the parties
otherwise agree, in the event of an actual claim the parties shall appoint an
independent counsel, selected by mutual consent and paid equally by Kidde and
USGN, and split the expense of such defense. The parties shall reasonably
cooperate with the independent counsel in the defense of the claim, including if
required to conduct such defense, furnishing a power of attorney. Neither party
shall enter into any settlement that materially alters, derogates or diminishes
the other party's rights under this Agreement, without such other party's
written consent, which consent shall not be unreasonably withheld or delayed. If
in the opinion of Kidde's counsel, a license with respect to such Third Party
patents is necessary to avoid substantial risks which could prevent Kidde from
making, using, selling, offering for sale or importing Product, then Kidde shall
notify USGN of such conclusion and the basis for it and give USGN a reasonable
opportunity to discuss Kidde's opinion. If USGN concurs in Kidde's opinion,
Kidde shall have the right to negotiate directly with such Third Party for a
license, and Kidde shall be entitled to offset fifty percent (50%) of the
Royalties accruing, in the country where the claim exists, during each Kidde
Fiscal Quarter (as defined in Section 6.4) during the term of such Third Party
license, as a credit against the Royalties due under Section 6.3. If USGN does
not concur with Kidde's opinion, the matter shall be submitted to an independ
ent counsel, selected by mutual consent and paid equally by Kidde and USGN, to
determine whether there is a substantial risk of infringement of such Third
Party rights. If such independent counsel determines that a substantial risk
exists, then Kidde may negotiate directly with such Third Party and receive a
Royalty credit as set forth above. If such independent counsel determines that a
substantial risk does not exist, then Kidde may still negotiate for a license
from such Third Party if it elects to do so, but Kidde shall not have the right
of Royalty reduction provided for in this Section 8.4.
8.5 PATENT MARKING. Products marketed and sold by Kidde hereunder shall
be marked with appropriate patent numbers or indicia at USGN's request, subject
to Kidde's consent, not to be unreasonably withheld. Kidde, in it's sole
discretion, may also xxxx any Products with Kidde's own patent numbers.
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ARTICLE 9
INDEMNIFICATION
9.1 INDEMNIFICATION BY USGN. USGN hereby agrees to indemnify, hold
harmless and defend Kidde and its Affiliates and their directors, officers,
employees and agents, from and against any and all Damages incurred or suffered
by Kidde and its Affiliates and their directors, officers, employees and agents
(excluding incidental and consequential Damages suffered or incurred by Kidde
directly (as opposed to incidental or consequential Damages suffered or incurred
by Third Parties, who are, in turn, seeking the same from Kidde, which shall be
covered by the indemnity set forth herein)) as a consequence of Third Party
claims or actions to the extent that such Damages: (i) arise out of any breach
or alleged breach of any representation or warranty by USGN hereunder, and/or
(ii) are caused by the negligence or misconduct of USGN and/or its Affiliates,
including, without limitation, all warranty and product liability claims and
recalls resulting from the Products failing to perform in accordance with the
Performance Requirements of the Products as set forth in Exhibit C (and such
future Performance Requirements as mutually agreed upon by the parties in
writing) and the Products failing to conform to the safety standards set forth
in Exhibit E (and such future safety standards as mutually agreed upon by the
parties in writing); and/or (iii) are caused by any products manufactured or
marketed by or for USGN and/or its Affiliates pursuant to Sections 3.2 and/or
3.6 of this Agreement; provided that USGN agrees that it shall not raise the
sophisticated user/bulk supplier defense in any litigation in order to shift or
avoid its indemnification obligations under this Section.
9.2 INDEMNIFICATION BY KIDDE. Kidde hereby agrees to indemnify, hold
harmless and defend (a) USGN and its Affiliates and their directors, officers,
employees and agents, from and against any and all Damages incurred or suffered
by USGN and its Affiliates and their directors, officers, employees and agents
(excluding incidental and consequential Damages suffered or incurred by USGN
directly (as opposed to incidental or consequential Damages suffered or incurred
by Third Parties, who are, in turn, seeking the same from USGN, which shall be
covered by the indemnity set forth herein)), and (b) TIAX LLC (and its
directors, officers, employees and agents) from and against any and all Damages
incurred or suffered by TIAX LLC (and its directors, officers, employees and
agents) (excluding incidental and consequential Damages suffered or incurred by
TIAX LLC directly (as opposed to incidental or consequential Damages suffered or
incurred by Third Parties, who are, in turn, seeking the same from TIAX LLC,
which shall be covered by the indemnity set forth herein)), as a consequence of
Third Party claims or actions to the extent that such Damages: (i) arise out of
any breach or alleged breach of any representation or warranty by Kidde
hereunder; and/or (ii) are caused by the negligence or misconduct of Kidde,
including without limitation all warranty and product liability claims and
recalls resulting from the failure of Kidde to manufacture the Products in
conformance with the Product Specifications set forth on Exhibit B (and such
future specifications as mutually agreed upon by the parties in writing) and/or
failure of the Products to conform to the application standards set forth in
Exhibit D as a result of an error in Kidde's foam distribution system for the
Products; provided that such indemnities shall not apply to the extent such
claims are covered by USGN's indemnity set forth in Section 9.1 above.
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9.3 MECHANICS. Promptly after receipt by a party hereto of notice of
any claim or action which could give rise to a right to indemnification pursuant
to Sections 9.1 or 9.2, such party (the "Indemnified Party") shall give the
other party (the "Indemnifying Party") written notice describing the claim or
action in reasonable detail. The failure of an Indemnified Party to give notice
in the manner provided herein shall not relieve the Indemnifying Party of its
obligations under this Article 9, except to the extent that such failure to give
notice materially prejudices the Indemnifying Party's ability to defend or
settle such claim or action. The Indemnifying Party shall have the exclusive
right, at its option, to assume and control the defense and settlement, at its
own expense and by its own counsel, of any such matter involving the asserted
liability of the party seeking such indemnification. The Indemnifying Party
shall promptly (and in any event not more than twenty (20) days after receipt of
the Indemnified Party's original notice) notify the Indemnified Party in writing
of its intention to assume the control and defense of such matter, and the
Indemnified Party agrees to cooperate fully with the Indemnifying Party and its
counsel in the defense against any such asserted liability. All reasonable costs
and expenses incurred in connection with such cooperation shall be borne by the
Indemnifying Party. In the event the Indemnifying Party intends to settle a
claim or action under this Section 9.3, the Indemnifying Party shall provide at
least five (5) business days prior written notice to the Indemnified Party
describing the proposed settlement in order that the Indemnified Party may
comment and/or object. Notwithstanding the foregoing, neither the Indemnifying
Party nor the Indemnified Party may settle any claim or action under this
Section 9.3 over the written objection of the other party if such settlement
could reasonably materially alter, diminish or derogate the other party's rights
under this Agreement. In any event, the Indemnified Party may participate, at
its own expense, in the defense of such asserted liability. If the Indemnifying
Party defends any claim or action, the Indemnified Party shall make available to
the Indemnifying Party any books, records or other documents within its control
that are necessary or appropriate for such defense. Notwithstanding anything to
the contrary in this Section 9.3, (i) the party conducting the defense of a
claim or action shall (a) keep the other party informed on a reasonable and
timely basis as to the status of the defense of such claim or action (but only
to the extent such other party is not participating jointly in the defense of
such claim), and (b) conduct the defense of such claim or action in a prudent
manner, and (ii) the Indemnifying Party shall not cease to defend any claim or
action (except pursuant to a permitted settlement thereof) without the prior
written consent of the Indemnified Party (which consent shall not be
unreasonably withheld or delayed).
9.4 INDEMNIFICATION PAYMENT ADJUSTMENTS. The amount of any Damages for
which indemnification is provided under this Article 9 shall be reduced by the
insurance proceeds received and any other amount recovered, if any, by the
Indemnified Party with respect to any Damages; provided, however, that an
Indemnified Party shall not be subject to an obligation to pursue an insurance
claim relating to any Damages for which indemnification is sought hereunder. If
any Indemnified Party shall have received any payment pursuant to this Section 9
with respect to any Damages and shall subsequently have received insurance
proceeds or other amounts with respect to such Damages, then such Indemnified
Party shall pay to the Indemnifying Party an amount equal to the difference (if
any) between (1) the sum of the amount of those insurance proceeds or other
amounts received and the amount of the payment by such Indemnifying Party
pursuant to this Article 9 with respect to such Damages and (2) the amount
necessary to fully and completely indemnify and hold harmless such Indemnified
Party from and against such Damages; provided, however, that in no event will
such Indemnified Party have any obligation pursuant to this sentence to pay to
such Indemnifying Party an amount greater than the amount of the payment by such
Indemnifying Party pursuant to this Article 9 with respect to such Damages.
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9.5 INDEMNIFICATION PAYMENT. Upon the final determination of liability
and the amount of the indemnification payment under this Article 9, the
appropriate party shall pay to the other in immediately available funds, within
thirty (30) business days after such determination, the amount of any claim for
indemnification made hereunder.
9.6 SURVIVAL. The provisions of this Article 9 shall survive any
termination of this Agreement with respect to actions of the parties during the
term of this Agreement. Each Indemnified Party's rights under this Article 9
shall not be deemed to have been waived or otherwise affected by such
Indemnified Party's waiver of the breach of any representation, warranty,
agreement or covenant contained in or made pursuant this Agreement, unless such
waiver expressly and in writing also waives any or all of the Indemnified
Party's right under this Article 9.
ARTICLE 10
CONFIDENTIALITY
10.1 PROPRIETARY INFORMATION; EXCEPTIONS. Each party will maintain all
Proprietary Information received by it under this Agreement in trust and
confidence and will not disclose any such Proprietary Information to any Third
Party or use any such Proprietary Information for any purposes other than those
necessary or permitted for performance under or in furtherance of this
Agreement. In particular, neither Kidde nor USGN shall use any USGN Know-How or
Kidde Know-How respectively for any purposes other than in furtherance of those
expressly licensed under Section 2.1 and for the commercialization of the
Products hereunder. Each party may use the other's Proprietary Information only
to the extent required to accomplish the purposes of this Agreement. Proprietary
Information shall not be used for any purpose or in any manner that would
constitute a violation of any laws or regulations, including without limitation
the export control laws of the United States. Proprietary Information shall not
be reproduced in any form except as required to accomplish the intent of this
Agreement. No Proprietary Information shall be disclosed to any employee, agent,
consultant, Affiliate, or sublicensee who does not have a reasonable need for
such information. To the extent that disclosure is authorized by this Agreement,
the disclosing party will obtain prior agreement from its employees, agents,
consultants, Affiliates, sublicensees or clinical investigators to whom
disclosure is to be made to hold in confidence and not make use of such
information for any purpose other than those permitted by this Agreement. Each
party will use at least the same standard of care as it uses to protect its own
Proprietary Information of a similar nature to ensure that such employees,
agents, consultants and clinical investigators do not disclose or make any
unauthorized use of such Proprietary Information, but no less than reasonable
care. Each party will promptly notify the other upon discovery of any
unauthorized use or disclosure of the Proprietary Information.
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Proprietary Information shall not include any information which:
(a) is now, or hereafter becomes, through no act or failure to act on
the part of the receiving party in breach hereof, generally known or available;
(b) is known by the receiving party at the time of receiving such
information, as evidenced by its written records;
(c) is hereafter furnished to the receiving party by a third party, as
a matter of right and without restriction on disclosure;
(d) is independently developed by the receiving party without any
breach of this Agreement; or
(e) is the subject of a written permission to disclose provided by the
disclosing party.
10.2 AUTHORIZED DISCLOSURE. The parties shall issue a joint press
release upon signing this Agreement. The parties agree that the material
financial terms of the Agreement will be considered Proprietary Information of
both parties. Notwithstanding the foregoing, either party may make disclosures
required by law or regulation, provided prior notice is given to the other party
whenever possible and that protective measures requested to the extent available
under such law or regulation, and may disclose the material financial terms of
the Agreement to bona fide potential corporate partners, to the extent required
or contemplated by this Agreement, and to financial underwriters, prospective
investors and other parties with a need to know such information. Any such
disclosures, and any disclosure of the development and marketing of Products or
other developments under this Agreement, including but not limited to press
releases, will be reviewed and consented to by each party prior to such
disclosure. Such consent shall not be untimely or unreasonably withheld by
either party. All such disclosures shall be made only to parties under an
obligation of confidentiality.
Notwithstanding any other provision of this Agreement, each party may
disclose Proprietary Information if such disclosure:
(a) is in response to a valid order of a court or other governmental
body of the United States or a foreign country, or any political subdivision
thereof; provided, however, that the responding party shall first have given
notice to the other party hereto and shall have made a reasonable effort to
obtain a protective order requiring that the Proprietary Information so
disclosed be used only for the purposes for which the order was issued;
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(b) is otherwise required by law or regulation, including SEC related
documents, provided such party provides the other with a reasonable prior
opportunity to comment on its confidential treatment request; or
(c) is otherwise necessary to file or prosecute patent applications,
prosecute or defend litigation or comply with applicable governmental
regulations or otherwise establish rights or enforce obligations under this
Agreement, but only to the extent that any such disclosure is necessary.
10.3 RETURN OF PROPRIETARY INFORMATION. In the event this Agreement is
terminated early, each party shall use diligent efforts (including without
limitation a diligent search of files and computer storage devices) to return
all Proprietary Information received by it from the other party, provided,
however, that each party may keep one copy of such Proprietary Information for
legal archival purposes. Access to the copy so retained by such party's legal
department shall be restricted to counsel and such Proprietary Information shall
not be used except in the resolution of any claims or disputes arising out of
this Agreement.
10.4 TIAX. Kidde will not use the name of TIAX LLC in any advertising,
promotional or sales literature or on its web site or for the purpose of raising
capital without the advance express written consent of TIAX LLC; provided,
however, that Kidde may use the name of TIAX LLC in routine business
correspondence, or as needed in appropriate regulatory submissions without such
express written consent.
10.5 PUBLICATIONS. Except as required by law, neither party shall
publish or present, or cause to be published or presented, the results of
studies carried out with respect to Products without the opportunity for prior
review by the other party. Each party shall provide to the other the opportunity
to review any proposed abstracts, manuscripts or presentations which relate to
Products (and USGN shall provide such materials to Kidde in the event USGN
receives such materials form TIAX) at least thirty (30) days prior to their
intended submission for publication and such submitting party agrees, upon
written request from the other party, not to submit such abstract or manuscript
for publication or to make such presentation until the other party is given a
reasonable period of time to seek patent protection for any material in such
publication or presentation that it believes is patentable.
10.6 The parties confidentiality obligations under this Article 10
shall remain in force during the Term of this Agreement and for a period of
three (3) years after the expiration or termination thereof.
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ARTICLE 11
REPRESENTATIONS AND WARRANTIES
11.1 MUTUAL REPRESENTATIONS AND WARRANTIES. As of the Effective Date,
each party hereby represents and warrants to the other that:
(a) CORPORATE POWER. Such party is duly organized and validly existing
and in good standing under the laws of the state of its incorporation and has
full corporate power and authority and the legal right to own and operate its
property and assets and to carry on its business as it is now being conducted
and to enter into this Agreement and to carry out the provisions hereof,
including without limitation, the right to grant the licenses granted hereunder.
(b) DUE AUTHORIZATION. Such party has the corporate power and authority
and the legal right to enter into this Agreement and perform its obligations
hereunder; (b) has taken all necessary corporate action on its part required to
authorize the execution and delivery of the Agreement and the performance of its
obligations hereunder; and (c) the Agreement has been duly executed and
delivered on behalf of such party, and constitutes a legal, valid and binding
obligation of such party and is enforceable against it in accordance with its
terms.
(c) BINDING AGREEMENT. This Agreement is a legal and valid obligation
binding upon it and is enforceable in accordance with its terms. The execution,
delivery and performance of this Agreement by such party does not conflict with
any agreement, instrument or understanding, oral or written, to which it is a
party or by which it may be bound, nor violate any law or regulation of any
court, governmental body or administrative or other agency having authority over
it.
(d) CONSENTS. Except as otherwise described in this Agreement, each
party represents and warrants to the other that all necessary consents,
approvals and authorizations of all governmental authorities and other persons
or entities required to be obtained by such party in connection with entry into
this Agreement have been obtained.
11.2 USGN REPRESENTATIONS AND WARRANTIES. USGN warrants and represents
that:
(a) SAFETY DATA. The Products that result from the practice of the USGN
Know-How or the USGN Patent Rights pose no significant or unreasonable risk of
harm to people or property and are safe and effective for their intended uses as
contemplated by this Agreement and any other foreseeable uses, except those
disclosed on Exhibit E of this Agreement. Release of such Products into the
atmosphere will not cause legally actionable contamination of soil, air or
groundwater and exposure to these Products will not cause disease or injury to
any foreseeable users who may use, consume, be exposed to, or otherwise be
affected by such Products.
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(b) EFFICACY. The Products that result from the practice of the USGN
Know-How or the USGN Patent Rights will effectively neutralize or decontaminate
the biological and/or chemical substances as set forth in Exhibit C and are fit
for the purpose of neutralizing or decontaminating such substances as set forth
in Exhibit C.
(c) TIAX AGREEMENT. The TIAX AGREEMENT is in full force and effect as
of the Effective Date, and USGN has no knowledge suggesting that TIAX intends to
assert a right to terminate the TIAX AGREEMENT. USGN shall not amend, modify or
knowingly breach the TIAX AGREEMENT in a manner that would deprive Kidde of its
ability to successfully commercialize the rights granted in Section 2.1 of this
Agreement. USGN is not aware of information that would render invalid and/or
unenforceable claims contained in U.S. Patent Application Serial No. 10/182,821,
Canadian Patent Application Serial No. 2397075 and/or European Patent
Application Serial Number EPO/01 918 985.1. Except for that certain Amendment
No. 1 to the TIAX AGREEMENT, dated October 3, 2003, there have been no other
amendments to the TIAX AGREEMENT. USGN shall provide Kidde with a true, complete
and correct copy of any subsequent amendments to the TIAX AGREEMENT within
thirty (30) days after the execution date of such amendment.
(d) PATENT MATTERS. Kidde's manufacture, use or sale of the Products in
the biological and/or chemical decontamination field, in accordance with the
terms of this Agreement, would not infringe upon or conflict with any patent or
other proprietary rights worldwide of any Third Party. Notwithstanding the
foregoing, if a patent or patent application held by a Third Party is identified
which covers Products being manufactured, used or sold by Kidde under this
Agreement, the parties will meet and discuss possible resolutions of the patent
situation. If the resolution involves a license from the Third Party to its
patent rights and/or a license to the Third Party under USGN Patent Rights,
Joint Patent Rights or Kidde Patent Rights, the parties acknowledge that the
economic assumptions underlying this Agreement may no longer be valid, and in
such case the parties will renegotiate the terms, including the Royalty, of this
Agreement in good faith in order to reflect such resolution.
(e) TRADEMARK. USGN is the sole owner of, or has exclusive rights to,
the Trademark as of the Effective Date, and has the exclusive right to assign
the Trademark. The Trademark is valid, in full force and effect and has been
maintained to date, and is not the subject of any opposition proceedings. USGN
(i) is not aware of or received notice of any asserted or unasserted claims,
oppositions or demands of any Third Party against the Trademark in existence as
of the Effective Date; and (ii) Kidde's exercise of any rights to the Trademark
as contemplated by this Agreement will not infringe any other intellectual
property right of any Third Party. All of the data and information provided to
Kidde by USGN relating to the Trademark is accurate and complete in all material
respects and contains no material errors or omissions.
(f) USGN PATENTS AND KNOW-HOW. USGN has rights to all of the USGN
Know-How and USGN Patent Rights in existence on the Effective Date and the right
to grant all rights with respect thereto granted to Kidde pursuant to this
Agreement. There is no patent issued to a Third Party as of the Effective Date
that would be infringed by the manufacture, use or sale of a Product. USGN
represents and warrants to Kidde that prior to the Effective Date USGN has not
granted any licenses or covenants-not-to-xxx to Third Parties with respect to
the USGN Patent Rights or USGN Know-How.
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(g) ABSENCE OF LITIGATION. As of the Effective Date, USGN represents
and warrants to Kidde that it is not aware of any pending or threatened
litigation (and has not received any communication relating thereto) which
alleges that USGN's activities, with respect to the Products, USGN Know-How or
the USGN Patent Rights or otherwise related to this Agreement, have infringed or
misappropriated, or that by conducting the activities as contemplated herein by
Kidde would infringe or misappropriate, any of the intellectual property rights
of any Third Party. To the best of USGN's knowledge, there is no material
unauthorized use, infringement or misappropriation of any of USGN's intellectual
property rights licensed hereunder.
(h) PATENTS; PRIOR ART. Except as USGN has otherwise advised Kidde in
writing prior to the Effective Date, USGN represents and warrants to Kidde that
as of the Effective Date, (a) it has sufficient legal and/or beneficial title
and ownership under its intellectual property rights necessary for it to fulfill
its obligations under this Agreement; (b) it has granted Kidde a license to all
patents and patent applications which USGN owns or controls or has rights under
in connection with the Products as of the Effective Date; and (c) there is no
material unauthorized use, infringement or misappropriation of any of its
intellectual property rights by Third Parties relevant to the Product or other
rights granted under this Agreement. As used herein, "intellectual property
rights" shall mean all patent rights, copyrights, trademarks, trade secrets, and
confidential and/or proprietary chemical substances, biological materials,
technical information, data and assays necessary or useful to make, use or sell
the Product. USGN is not aware of any pending interference, opposition,
cancellation or any other protest proceeding with respect to the USGN Patent
Rights.
11.3 NO OTHER REPRESENTATIONS. THE EXPRESS REPRESENTATIONS AND
WARRANTIES STATED IN THIS ARTICLE 11 ARE IN LIEU OF ALL OTHER REPRESENTATIONS
AND WARRANTIES, EXPRESS OR IMPLIED, INCLUDING WITHOUT LIMITATION, THE WARRANTY
OF MERCHANTABILITY.
ARTICLE 12
DISPUTE RESOLUTIONS; VENUE AND GOVERNING LAW
12.1 DISPUTES. In the event of any dispute relating to this Agreement,
prior to instituting any lawsuit, arbitration or other dispute resolution
process on account of such dispute, the Parties shall attempt in good faith to
settle such dispute first by negotiation and consultation between themselves,
including referral of such dispute to the senior executive officers designated
below.
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Said designated officers are as follows:
For Kidde: Kidde Fire Fighting President (Currently Xxxx Xxxxxxx)
For USGN: USGN CEO (Currently Xxxx Xxxxxxxx)
In the event said executives are unable to resolve such dispute or agree upon a
mechanism to resolve such dispute within sixty (60) days of the first written
request for dispute resolution under this Section 12.1, the Parties shall then
consider other forms of alternative dispute resolution as a means of resolving
any such dispute. Thereafter, either party shall be free to institute litigation
and seek such remedies as may be available. Notwithstanding anything in this
Agreement to the contrary, either party shall be entitled to institute
litigation immediately if the same shall be necessary to prevent irreparable
harm to either party.
12.2 This Agreement and the rights and obligations of the parties
hereunder shall be governed by and construed in accordance with the laws of
Pennsylvania, regardless of the laws that might otherwise govern under
applicable principles of conflicts of law thereof and any legal action or
proceeding arising out of or in connection with this Agreement shall be brought
in the state or federal courts of Pennsylvania. The parties agree to irrevocably
waive all right to trial by jury in any action, proceeding or counterclaim
(whether based on contract, tort or otherwise) arising out of or relating to
this Agreement. Neither party shall knowingly take or fail to take any action
that might cause it or the other party to be in violation of any law or
regulation of the United States.
ARTICLE 13
MISCELLANEOUS
13.1 AGENCY. Neither party is, nor will be deemed to be, an employee,
agent or legal representative of the other party for any purpose. Neither party
will be entitled to enter into any contracts in the name of, or on behalf of the
other party, nor will a party be entitled to pledge the credit of the other
party in any way or hold itself out as having authority to do so. This Agreement
is an arm's-length license agreement between the parties and shall not
constitute or be construed as a joint venture.
13.2 ASSIGNMENT. Except as otherwise provided herein, neither this
Agreement nor any right, obligation or interest hereunder will be assignable in
part or in whole by any party without the prior written consent of the other;
provided, however, that either party may assign this Agreement to any of its
Affiliates or to any successor by merger or sale of all or substantially all of
its business assets to which this Agreement relates in a manner such that the
assignor will remain liable and responsible for the performance and observance
of all its duties and obligations hereunder. This Agreement will be binding upon
and inure to the benefit of the successors, legal representatives and permitted
assigns of the parties and the name of a party herein will be deemed to include
the names of such party's successors and permitted assigns to the extent
necessary to carry out the intent of this Agreement. Any assignment which is not
in accordance with this Section 13.2 will be void.
-31-
13.3 AMENDMENT. This Agreement may be amended, modified or supplemented
only by a writing signed by duly authorized representatives of both parties.
13.4 NOTICES. Any notice, requests, consents and other communications
required or permitted to be given to either party hereto shall be in writing
unless otherwise specified herein and shall be deemed to have been properly
given and to be effective on the date of delivery if delivered in person or by
facsimile (with a return receipt and followed with a hard copy via regular mail
or overnight courier with a national reputation) or one (1) business day after
tender to an overnight courier with a national reputation, and addressed to the
other party at the following address:
In the case of USGN: U.S. Global Nanospace, Inc.
0000 Xxxxx Xxxxxx, Xxxxx 0000
Xxxxxx Xxxx, XX 00000
Telephone: (000) 000-0000
FAX: (000) 000-0000
Attention: Corporate Secretary
In the case of Kidde: Kidde Fire Fighting Inc.
000 Xxxxxx Xxxxx
Xxxxx, XX 00000
Telephone: (000) 000-0000
FAX: (000) 000-0000
Attention: Office of the President
Either party may change its address for communications by a notice to
the other party in accordance with this Section 13.4.
13.5 FORCE MAJEURE. Excluding any obligation by either party to make
any payment required under this Agreement, if a Force Majeure Event occurs, the
Nonperforming Party is excused from whatever performance is prevented by the
Force Majeure Event to the extent prevented. "Force Majeure Event" means any act
or event, whether foreseen or unforeseen, that meets all three of the following
requirements: (i) the act or event prevents a party (the "Nonperforming Party"),
in whole or in part, from performing its obligations under this Agreement; and
(ii) the act or event is beyond the reasonable control of and not the fault of
the Nonperforming Party; and (iii) the Nonperforming Party has been unable to
avoid or overcome the act or event by the exercise of reasonable diligence. In
furtherance of the definition of Force Majeure Event and not in limitation of
that definition, each of the following acts and events is deemed to meet the
above requirements of and to be a Force Majeure Event: war, flood, lightning,
earthquake, fire, hurricane, explosion, civil disturbance, act of God or the
public enemy, terrorist act, military action, epidemic, famine or plague, action
of a court or public authority, or strike, work-to-rule action, go-slow or
similar labor difficulty, either on an industry-wide, region-wide or nationwide
basis or directly only against a party that continues for a period of seven (7)
or more consecutive days; provided, however, that no party shall be required to
settle any strike, work-to-rule action, go-slow or similar labor difficulty
directly against a party on terms it considers unfavorable in order to meet the
requirement stated in (iii) above. Despite the preceding definition of a Force
Majeure Event, a Force Majeure Event excludes economic hardship, changes in
market conditions or insufficiency of funds. When the Nonperforming Party is
able to resume performance of its obligations under this Agreement, it shall
promptly give the other party written notice to that effect and shall promptly
resume performance under this Agreement.
-32-
13.6 AFFILIATES. The parties hereto acknowledge that Kidde will carry
out many of the activities required or permitted pursuant to this Agreement
through its Affiliates. Kidde hereby represents and warrants to USGN that this
Agreement shall be binding on its Affiliates and further guarantees the
performance of its Affiliates in accordance with this Agreement as if such
Affiliates were parties to this Agreement. In the event either party to this
Agreement is acquired by another company, then the technology and programs of
the acquiring company in existence at the time of such transaction shall not be
subject to this Agreement.
13.7 EXPORT CONTROL. This Agreement is made subject to any restrictions
concerning the export of products or technical information from the United
States of America or other countries which may be imposed upon or related to
USGN or Kidde from time to time. Each party agrees that it will comply with all
applicable export laws and regulations in connection with its activities under
this Agreement.
13.8 SEVERABILITY. If any term, condition or provision of this
Agreement is held to be invalid or unenforceable for any reason, such term,
condition or provision shall, if possible, be interpreted, to achieve the intent
of the parties to this Agreement to the extent possible rather than voided and
the remainder of the Agreement will remain in full force and effect. If such
term, condition or provision is not capable of such interpretation, the parties
shall in good faith seek to agree on an alternative provision reflecting the
intent of the parties which is enforceable.
13.9 WAIVER. No term or provision hereof will be considered waived by
either party, and no breach shall be excused by either party, unless such waiver
or consent is in writing signed on behalf of the party against whom the waiver
is asserted. No consent by either party to, or waiver of, a breach by either
party, whether express or implied, will constitute a consent to, waiver of, or
excuse of any other, different, or subsequent breach by either party.
13.10 CUMULATIVE RIGHTS. Except as otherwise provided herein, the
rights, powers and remedies hereunder shall be in addition to, and not in
limitation of, all rights, powers and remedies provided at law or in equity, or
under any other agreement between the parties. All of such rights, powers and
remedies shall be cumulative, and may be exercised successively or cumulatively.
-33-
13.11 ENTIRE AGREEMENT. This Agreement contains the entire agreement
and understanding of the parties with respect to the subject matter hereof and
shall supersede all previous or simultaneous communications, representations,
agreements or understandings, either oral or written, between the parties
relating to the subject matter hereof.
13.12 COUNTERPARTS. This Agreement may be executed in one or more
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.
13.13 HEADINGS. The headings contained in this Agreement are for
convenience of reference only and shall in no way modify or affect the meaning
or construction of any of the terms or provisions hereof.
13.14 INTERPRETATION. This Agreement has been jointly prepared by the
parties and their respective legal counsel and shall not be strictly construed
against either party.
13.15 CONFLICT. This Agreement is without prejudice to all
confidentiality rights implied by law. In the event of a conflict between the
express provisions of this Agreement and such implied rights, the express
provisions herein shall prevail.
13.16 EXECUTION OF FURTHER DOCUMENTS. Each party agrees to execute and
deliver without further consideration any further applications, licenses,
assignments or other documents, and to perform such other lawful acts as the
other party may reasonably require to fully secure and/or evidence the rights or
interests provided for herein.
13.17 EXHIBITS. Any exhibits, appendixes or attachments to this
Agreement are fully incorporated into and form a part of this Agreement as if
fully set forth herein.
[REMAINDER OF PAGE INTENTIONALLY LEFT BLANK]
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IN WITNESS WHEREOF, the parties hereto, intending to be legally bound
hereby, have executed this Development and License Agreement by their respective
duly authorized officer, as of the Effective Date.
U.S. GLOBAL NANOSPACE, INC. KIDDE FIRE FIGHTING INC.
By:/s/ Xxxx Xxxxxxxx By: /s/ Xxxx Xxxxxxx
--------------------------- ---------------------------
Xxxx Xxxxxxxx, CEO Xxxx Xxxxxxx, President
-35-
Exhibit A
TIAX AGREEMENT
(see attached)
A-1
Exhibit B
PRODUCT SPECIFICATIONS
(see attached)
B-1
Exhibit C
PERFORMANCE REQUIREMENTS
(see attached)
C-1
Exhibit D
APPLICATION STANDARDS
(see attached)
D-1
Exhibit E
SAFETY STANDARDS
(see attached)
E-1
Exhibit F
ANNUAL SALES TARGETS FOR MAJOR CHANNELS AND MAJOR
GEOGRAPHIC MARKETS
----------------------------------------------------------------------------------------------------------------------------
Estimated Sales Targets - Equivalized Gallons - All-Clear
----------------------------------------------------------------------------------------------------------------------------
Market Segment Year 1 Sales Year 2 Sales Year 3 Sales
(Equivalized Gallons) (Equivalized Gallons) (Equivalized Gallons)
----------------------------------------------------------------------------------------------------------------------------
*** *** *** ***
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*** *** *** ***
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*** *** *** ***
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*** *** *** ***
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*** *** *** ***
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*** *** *** ***
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*** *** *** ***
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Total *** *** ***
----------------------------------------------------------------------------------------------------------------------------
The above volumes are based on deployed foam (equivalent finished foam solution
from pre-mix or concentrate).
*** CONFIDENTIAL TREATMENT REQUESTED
F-1
Exhibit G
TRADEMARK ASSIGNMENT AGREEMENT
(see attached)
G-1
TRADEMARK ASSIGNMENT AGREEMENT
This TRADEMARK ASSIGNMENT AGREEMENT (this "Assignment") is entered into
by and between U.S. Global Nanospace, Inc., a Delaware corporation, having its
principal place of business at 0000 Xxxxx Xxxxxx, Xxxxx 0000, Xxxxxx Xxxx, XX
00000, ("Assignor"), as assignor, in favor of Kidde Fire Fighting Inc., a
Pennsylvania corporation, having its principal place of business at 000 Xxxxxx
Xxxxx, Xxxxx, XX 00000 ("Assignee"), as assignee.
WHEREAS, Assignor and Assignee have entered into a Development And
License Agreement, dated as of ___August 2,___, 2004 (the "License Agreement"),
which along with the promises contained herein, constitute mutual consideration
for the promises herein;
WHEREAS, all capitalized terms not defined herein shall have the
meanings ascribed to such terms in the License Agreement;
WHEREAS, Assignor is the sole and exclusive owner of certain trademark
applications and registrations as shown on the attached Schedule A (the
"Marks"), and further is the sole and exclusive owner of all business goodwill
related thereto; and
WHEREAS, Assignee desires to acquire the entire right, title and
interest in, to and under the Marks, and the registrations and related rights
thereof, together with the goodwill of the business in connection with which the
Marks are used and that is symbolized by the Marks, along with the right to
recover for damages and profits for past infringements thereof.
NOW, THEREFORE, for and in consideration of the sum of One Dollar
($1.00), to it in hand paid by Assignee, and other good and valuable
consideration, the receipt and sufficiency of which are hereby acknowledged, the
parties agree as follows:
1. Assignment. Assignor does hereby sell, assign, transfer and set over
to Assignee all its right, title and interest, whether statutory or at common
law, in, to and under the Marks and all applications and registrations thereof,
together with the goodwill of the business in which the Marks are used and
symbolized by the Marks in all countries throughout the world, together with all
rights and privileges granted and secured thereby and such other trademarks,
service marks, trade names and trade dress as may be owned by Assignor and used
in connection with the Marks, including without limitation all registration
rights with respect thereto and renewals therefore, all rights to prepare
derivative marks, the right to xxx and recover, either at law or in equity, for
any past, present and future infringement (and the right to receive and retain
the proceeds relating to those infringements), said rights to be held and
enjoyed by Assignee, for its own use and benefit and for the use and benefit of
its successors, assigns or other legal representatives as fully and entirely as
the same would have been held and enjoyed by Assignor if this Assignment and
sale had not been made.
1
2. Representations and Warranties. Assignor represents and warrants to
Assignee that: (i) Assignor has the right, power and authority to enter into
this Assignment; (ii) Assignor is the exclusive owner of all right, title and
interest, including all intellectual property rights, in the Marks and has used
the Marks; (iii) The Marks are free of any liens, security interests,
encumbrances or licenses; (iv) the Marks do not infringe the rights of any
person or entity; (v) there are no claims, pending or threatened, with respect
to Assignor's rights in the Marks; (vi) this Assignment is valid, binding and
enforceable in accordance with its terms; and (vii) Assignor is not subject to
any agreement, judgment or order inconsistent with the terms of this Assignment.
3. Covenant by Assignee. Assignee covenants and agrees that, during the
Term of the License Agreement, it shall only use the Marks (i) in connection
with the manufacture, marketing and sale of the Products and (ii) subject to the
terms and conditions with respect to the Trademark set forth in the License
Agreement.
4. Amendment. This Assignment may only be amended, modified or
supplemented by a writing signed by duly authorized representatives of both
parties.
5. Severability. If any part of this Assignment is found invalid or
unenforceable, that part will be amended to achieve as nearly as possible the
same effect and intent as the original provision and the remainder of this
Assignment will remain in full force.
6. Headings. The headings contained in this Assignment are for
convenience of reference only and shall in no way modify or affect the meaning
or construction of any of the terms or provisions hereof.
7. Entire Agreement. This Assignment constitutes the entire agreement
and understanding between the parties with respect to the subject matter hereof
and supersedes all prior or simultaneous representations, discussions,
negotiations, and agreements, whether written or oral, with respect to the
subject matter hereof.
8. Further Actions. Assignor agrees to execute and deliver all papers,
instruments and assignments and to perform such other reasonable acts as
Assignee may deem necessary to secure to Assignee the rights herein assigned
and/or which may be necessary to obtain, renew, issue or enforce the Marks.
Assignor further expressly agrees that Assignee may singly, and without
assistance or consent from Assignor, undertake procedures to record the transfer
of the Marks to Assignee in the United States Patent and Trademark Office.
9. Counterparts. This Assignment may be executed in one or more
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.
2
IN TESTIMONY WHEREOF, Assignor has caused this Trademark Assignment
Agreement to be executed and delivered by its officers duly authorized as of
this 2nd day of __August__, 2004.
U.S. GLOBAL NANOSPACE, INC.
By: /s/ Xxxx Xxxxxxxx
--------------------------------------------
Name: Xxxx Xxxxxxxx
Title: CEO
STATE OF )
COUNTY OF )
On _______________________, before me, , Notary Public, personally appeared Xxxx
Xxxxxxxx, personally known to me (or proved to me on the basis of satisfactory
evidence) to be the person whose name is subscribed to the within instrument and
acknowledged to me that he executed the same in his authorized capacity, and
that by his signature on the instrument the entity upon behalf of which he acted
executed the instrument.
WITNESS my hand and official seal.
[SEAL] _____________________________
Notary Public
IN WITNESS WHEREOF, Assignee accepts this Trademark Assignment Agreement, which
has been executed and delivered as of this _____ day of _________________, 2004.
KIDDE FIRE FIGHTING INC.
By:
--------------------------------------------
Name: Xxxx Xxxxxxx
Title: President
3
SCHEDULE A
TRADEMARKS
----------------------------------------------------------------------------------------------------------------
XXXX COUNTRY APPLICATION NO. REGISTRATION NO. FILING DATE
----------------------------------------------------------------------------------------------------------------
ALL-CLEAR United States 78/282106 N/A August 1, 2003
----------------------------------------------------------------------------------------------------------------
ALL-CLEAR United States 76/601089 N/A July 16, 2004
(stylized
w/US Global
Nanospace logo)
----------------------------------------------------------------------------------------------------------------
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A-1
