TECHNOLOGY LICENSE AGREEMENT
EXHIBIT
10.14
This
Technology License Agreement (the “Agreement”) is made and entered into
December15, 2004, between Bio-Products International, Inc. (“Bio-Products”), a
company incorporated under the laws of the State of Alabama (the “Licensor”),
and International Waste Processors, Inc. (“IWP”), a company incorporated under
the laws of the State of Nevada (the “Licensee”) (the Licensor and Licensee may
hereinafter be either individually referred to as the “Party” or collectively
referred to as the “Parties”).
PREMISES:
Whereas,
Dr. Xxxxxxx XX. Xxxx (“Xxxx”), in his continuous capacity as an employee of the
University of Alabama in Huntsville (“UAH”), developed certain proprietary
intellectual property, patented processes, and patent pending processes for
the
volume reduction, separation, recovery, and recycling of various components
of
waste materials, including without limitation, Municipal Solid Waste (“MSW”),
which technology has been reduced to U.S. Patent No. 6,306,248 (the “U.S.
Patent”) and Patent Cooperation Treaty, International Application No.
PCT/US01/50049 (the “PCT”) (collectively, the “UAH Technology”). The UAH
Technology constitutes the first of the two parts of the “Technology” (as
defined herein). Xxxx is also a major stockholder, President and CEO of
Bio-Products;
Whereas,
pursuant to that certain Amended and Restated License Agreement, effective
August 18, 2003, which supersedes and replaces the original license agreement
date November 13, 1992, and all amendments thereto, between UAH and Bio-Products
(the “Amended and Restated UAH License”) (a complete copy of which is attached
as Exhibit
A),
UAH
granted an exclusive worldwide license to Bio-Products covering the UAH
Technology, including the rights to make, have made, use, lease and sell certain
products, and to practice certain processes, and to license some or all of
the
rights granted to others, such products and processes being more specifically
defined in the UAH License;
Whereas,
Xxxxxx X. Xxxxxx (“Xxxxxx”) developed certain proprietary intellectual property,
equipment designs, and process operating procedures related to the UAFI
Technology, including the expertise and know-how for fabrication and continuous
operation of a small waste reduction process plant at a commercial sanitary
landfill for a period of eighteen months (collectively, the “M & M
Technology”). Malley, the developer, and M & M Consulting, Inc. (“M &
M”), a company incorporated under the laws of the State of Mississippi and owner
of the M & M Technology, have assigned all rights to the M & M
Technology to Bio-Products (a complete copy of the Amended and Restated Stock
Purchase and Assignment Agreement is attached as Exhibit
B).
The M
& M Technology constitutes the second of the two parts of the “Technology”
(as defined herein). M & M is also a minority stockholder in Bio-Products,
and Malley is a Vice President of ho-Products;
Whereas,
Bio-Products desires to enter into a license agreement with the Licensee to
provide the Technology and future improvements for the construction and
operation of commercial scale municipal solid waste processing and recycling
facilities subject to the terms and conditions set forth
herein;
Whereas,
the Licensee either has the financial resources, or has agreed to use their
best
efforts to secure the financial resources, for the design, engineering,
fabrication and purchase of processing equipment, construction and operation
of
processing facilities, and marketing and promotion of commercial facilities
that
are compatible with the Technology;
Whereas,
the Licensee desires to enter into a license agreement with Bio-Products to
use
the Technology for commercial purposes upon the terms and conditions hereinafter
set forth;
Now,
therefore, in consideration of the premises and the mutual covenants contained
herein, the Parties hereto agree as follows:
ARTICLE
I -
DEFINITIONS
For
purposes of the Agreement, the following words and phrases shall have the
following meaning:
1.1 “Technology”
shall mean the inventions, technology, and proprietary intellectual property
and
information developed by Bio-Products, Eley, Malley, M & M, and UAFI created
or discovered prior to or after the effective date of this Agreement, including,
but not limited to, inventions, processes, process operating procedures and
discoveries, patents, patent applications, trade secrets, developments, facility
designs, equipment designs, works of authorship, formulas, software programs,
techniques, information, expertise, know-how, data research, mask works, all
intellectual and industrial property rights of any sort, all rights of
integrity, disclosure and withdrawal, copyrights, trade names and trademarks,
which are related to the recycling, processing, collection, storage, disposal,
treatment, utilization or reduction of waste or waste components or the
conversion of cellulosic materials to fuels or other materials or other use
of
cellulosic materials for the production of energy or otherwise. Technology
includes without limitation, the UAH Technology, the M & M Technology,
United States Patent Number 6,306,248 and Patent Cooperation Treaty
International Application Number PCTIUSOI/50049.
1.2
“Third
Party” shall mean any person or entity other than Bio-Products, Eley, Malley, M
& M, UAH, the Licensee and Sub-Licensees of the Licensee.
1.3 “Operating
Day” shall mean a day in which the facility (i) processes waste equal to or in
excess of the facility’s daily design capacity; or (ii) processes all of the
waste brought to the facility for processing on such day; or (iii) processes
as
much waste as allowed by any downstream, limitation, such as but not limited
to,
any limitations on the downstream processing or disposal of the cellulosic
product.
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ARTICLE
II -
GRANT
OF LICENSE
2.1
Subject
to the terms and conditions of the Agreement, Bio-Products hereby grants a
license to the Licensee to utilize the Technology to construct and operate
commercial scale municipal solid waste processing and recycling facilities
in
the following countries: China, Japan, Korea, France Iraq, Afghanistan, United
Arab Emirates, Bahrain, Kuwait, Oman, Qatar, Saudi Arabia, Yemen, Jordan, Egypt,
and Israel.
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The
license granted by Bio-Products to the Licensee under this Agreement
shall be
exclusive in all of the above named
countries.
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(b)
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For
each facility to be constructed and operated under this Agreement
by the
Licensee, a proposal on the economic feasibility of the facility
shall be
prepared and submitted to Bio-Products for review and comment.
Bio-Products shall submit its comments in writing to the Licensee
in a
timely manner, not to exceed sixty (60) days. If the Licensee, at
its
discretion, decides to proceed with said facility, then the Licensee
shall
grant a site-specific sub-license to a USA entity (the “Sub-Licensee”)
that shall own and/or operate the facility. Such sub-license agreement
shall be subject to the approval of Bio-Products, which approval
shall not
be unreasonably withheld.
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2.2
The
term
of this license shall extend from the effective date of the this Agreement,
for
a period of twenty (20) years, unless extended, terminated or replaced by
agreement of the Parties hereto, or unless otherwise extended or terminated,
as
elsewhere provided in this agreement. This Agreement shall be extended
automatically in any of the countries named in Paragraph 2.1 until the
expiration date of the last patent issued to Bio-Products and/or UAH covering
the Technology in any of the said countries.
2.3
Anything
to the contrary contained elsewhere in this Agreement notwithstanding,
Bio-Products shall retain all of the exclusive rights granted under the UAI-I
License and all of the exclusive rights obtained by assignment from Malley
and M
& M, including the worldwide exclusive right to license some or all of its
rights not granted to the Licensee under this Agreement to Third Parties to
utilize the Technology.
ARTICLE
III
- FEES,
ROYALTIES. AND OTHER CONSIDERATION
3.1
Licensee
shall pay a one-time licensing fee of one hundred thousand dollars ($100,000
USD) per country upon obtaining a contract to construct a facility in any of
the
countries in Paragraph 2.1. All amounts of money in this Agreement shall be
in
United States Dollars (“USD”).
3.2
The
Licensee or its Sub-Licensee shall pay to Bio-Products a one-time royalty of
ten
thousand dollars ($10,000.00 USD) per ton of capacity for each facility to
be
constructed in the countries named in Paragraph 2.1 until this Agreement or
any
extension thereof expires or is terminated. The one-time royalty shall be paid
in five (5) installments as follows: (i) Twenty percent (20%) within thirty
(30)
days after the effective date of the sub-license agreement for the facility,
(ii) twenty percent (20%) within thirty (30) days after completion of plant
design and equipment specifications for the facility, (iii) twenty percent
(20%)
within thirty (30) days after completion of equipment vendor selection and
issuance of equipment purchase orders for the facility, (iv) twenty percent
(20%) within thirty (30) days after final equipment shipment from the USA to
the
facility site, and (v) twenty percent (20%) within thirty (30) days after
completion of employee training. All of the above shall be performed either
in
the USA or a mutually satisfactory foreign location. Design engineering,
equipment specifications, equipment vendor selection shall be completed in
cooperation with a qualified engineering firm that is acceptable to Bio-Products
and that will supervise the on-site construction and equipment installation.
Payment of said royalties shall be by wire transfer of funds to a Bio-Products
bank account.
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3.3
As
additional consideration and for their experience and know-how regarding the
Technology, the Licensee or its Sub-Licensees shall pay Bio-Products a monthly
fee for technical services. Such technical services shall initially be provided
by Xxxx and Xxxxxx who are employees of Bio-Products, and who agree to provide
whatever technical services are reasonably requested of them by Licensee or
its
Sub-Licensees. Payments to Bio-Products for the technical services shall be
ten
thousand dollars ($10,000 USD) per month payable on or before the first
(1st)
business day of the month following the Licensee’s or its Sub-Licensees’ initial
down payment for the process vessels for construction of the licensee’s plant
and continuing each month thereafter until the facility has been in operation
for thirty (30) Operating Days, as defined in Paragraph 1 .3 (the “Operational
Date”). During any above period Bio-Products shall provide whatever services are
reasonably requested of it by Licensee or its Sub-Licensees. Bio-Products and
Licensee agree that all phases of the design and construction of a facility
in
the countries named in Paragraph 2.1, including employee training shall occur
in
the United States or a mutually agreeable foreign location.
If
at any
time Bio-Products fails to undertake technical services requested, then Licensee
or its Sub-Licensees may cease all payments as set forth in this Paragraph
3.3,
until such time as the failure to undertake the technical services request
is
remedied.
3.4
All
facilities to be constructed and operated under this Agreement shall be
connected to Bio-Products via the Internet and video communications for
monitoring the operation of key pieces of equipment and videoconferences with
facility management and maintenance personnel. For technical services to be
provided by Bio-Products during periods not included in Paragraph 3.3, Licensee
or its Sub-Licensees shall pay five hundred dollars ($500 USD) per day, based
on
eight (8) hours per day, per person payable in ten (10) days after receipt
of an
invoice from Bio-Products. Bio-Products shall invoice Licensee or its
Sub-Licensees for such technical services no more than once each month. The
daily rate for technical services provided by Bio-Products of five hundred
dollars ($500 USD) shall be adjusted January 1 of each year based on the United
States Department of Labor’s Bureau of Labor Statistics’ Consumer Price Index,
using the date of this Agreement for determining the base for computing the
adjustment. For example, assuming the base for the date of this Agreement is
100
and the index figure on the date for adjustment is 105, the adjustment would
be
105/100=105%. The existing daily rate of five hundred dollars ($500 USD) would
then be increased by five percent (5%) or twenty-five dollars ($25 USD) to
five
hundred twenty-five dollars ($525 USD).
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3.5 Additionally,
with respect to the technical services provided by Bio-Products, the Licensee
or
its Sub-Licensees shall either provide pre-paid expense accounts or reimburse
Bio-Products and/or its employees for the reasonable transportation, lodging,
food, and other expenses incurred by Bio-Products and/or its employees in the
performance of such technical services for the Licensee or its Sub--Licensees.
In either case, itemized expense reports and receipts shall be submitted to
the
Licensee or its Sub-Licensees by Bio-Products and/or its employees within ten
(10) business days of completion of travel or a specific project in which
expenses arc incurred. The Licensee shall establish a travel expense policy
and
procedure, which policy and procedure its Sub-Licensees and Bio-Products and/or
its employees shall adhere to unless the Parties agree, in writing, otherwise.
Any reimbursement for expenses shall be paid by the Licensee or its
Sub-Licensees within ten (10) business day of receipt of such expense reports
submitted by Bio-Products and/or its employees.
3.6
For
all
facilities to be sub-licensed under this Agreement, the Licensee agrees that
the
facility design, equipment designs and specifications, on-site engineering
firm,
and all facility management and maintenance personnel must be approved by
Bio-Products, which approval shall not be unreasonably withheld.
3.7
Due
to
the proprietary nature of the process vessel design, the Licensee agrees that
Bio-Products shall maintain the exclusive right of vessel manufacture, and
the
Licensee and its Sub-licensees shall purchase all required vessels exclusively
from Bio-Products. The purchase price shall be cost plus fifteen percent (15%),
not including shipping costs or taxes. All other equipment required for
construction and operation of waste processing and recycling facilities
utilizing the Technology may be purchased from other vendors with mutual
agreement between the Licensee, its Sub-Licensees, Bio-Products, and the on-site
engineering firm. All vessels to be constructed under this Agreement are to
be
built to Bio-Products’ specifications by or under the supervision of Mississippi
Tank Company (“MTC”) and shipped to the requested locations. Shipping costs and
applicable taxes shall be itemized and included in the cost of vessels and
shall
be invoiced to and paid by the Licensee or its Sub-Licensees. Bio-Products
shall
from time to time seek the qualifications of and obtain cost quotations from
alternative vessel manufacturers to manufacture future process vessels as needed
such that the same may be provided to Licensee or its Sub-Licensees having
equal
or higher quality than that established by Bio-Products from MTC and may be
transported to the required facility at a cost equal to or less than that
established by Bio-Products from MTC, including the cost of shipping and taxes.
If future vessels arc purchased at a cost, excluding shipping costs and taxes,
below the most recent purchase price, Licensee and its Sub-Licensees agrees
to
pay Bio-Products an amount equal to twenty-five percent (25%) of the cost
savings.
3.8
The
Licensee shall maintain all such books and records as are necessary to
accurately determine all amounts due and payable to Bio-Products, Eley, Malley,
or its other employees under Article III of this Agreement, which books and
records the Licensee and/or its Sub-Licensees shall make reasonably available,
upon the submission of a written request from Bio-Products for inspection by
Bio-Products and/or its designated representative at a time mutually convenient
to Bio-Products and the Licensee. Bio-Products agrees to treat all such
information respecting Licensee’s books and records as
confidential.
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3.9
All
payments shall be paid by wire transfer of funds to a bank account to be
designated by Bio-Products.
ARTICLE
IV -
INVENTIONS
AND DISCOVERIES
4.1
All
rights, title, and interest in and to the Technology and all patent applications
and patents thereon or relating thereto as presently exist, both foreign and
domestic, shall remain the sole and exclusive property of Bio-Products and/or
UAH. In addition, patents and patent applications, both foreign and domestic,
with respect to the existing Technology shall be applied for and prosecuted,
and
if received, shall issue solely in Bio-Products’ or UAH’s name.
4.2
All
rights, title, and interest in and to all future inventions, processes,
enhancements, improvements and other discoveries made by Bio-Products, or any
person acting for and under the direction of Bio-Products or the Licensee,
or
any other employee or agent of Bio-Products, or the Licensee, relating to the
Technology shall be owned by Bio-Products and/or UAH. All patent applications
and patents thereon, foreign and domestic, whether made by any of the Parties
or
UAH, or jointly by the Parties and UAH or jointly by at least one employee
of
each Party, shall be owned exclusively by Bio-Products and/or UAH. Bio-Products
shall provide the Licensee with detailed information concerning all such
related, future inventions, processes, enhancements, improvements and other
discoveries upon request. To the extent required to accomplish the foregoing,
the Licensee shall execute any and all assignments of patents or other documents
to Bio-Products and/or UAH, if required for any such patents to issue in
Bio-Products’ or UAH’s name. For future patents to be applied for and prosecuted
in any of the countries named in Paragraph 2.1, Licensee shall request such
action and agree to reimburse Bio-Products for the costs of such application
and
prosecution, and if granted also reimburse Bio-Products for the issuance and
maintenance fees. Bio-Products hereby grants to the Licensee an exclusive
license in the countries named in Paragraph 2.1, subject to the same terms
and
conditions set forth in this Agreement, to utilize all such future inventions,
processes, enhancements, improvements and other discoveries at no additional
royalty or cost, except that the term of this Agreement shall be extended by
agreement of the Parties or automatically to the expiration date of any
subsequently issued patent in any of the countries named in Paragraph
2.1.
4.3
The
Technology of Bio-Products and/or UAU shall be maintained by the Licensee free
and clear of all liens and encumbrances or rights of any Third Party. Neither
Bio-Products nor Licensee shall sub-license, encumber, transfer or assign the
Technology of Bio-Products and/or UAH without the written consent of the other
party, except as provided in this Agreement.
4.4
The
provisions of this Article shall apply to both foreign and domestic inventions,
processes, enhancements, improvements and other discoveries relating to the
Technology and to all patent applications and patents related
thereto.
4.5
The
Parties shall cooperate in good faith to protect any such invention, process,
enhancement, improvement or other discovery, and to make all necessary
applications, assignments, as provided herein, and filings, including patents,
industrial designs, copyright registrations, trademark registrations and other
legal protections, necessary or helpful to protect their interests
therein.
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ARTICLE
V -
REPRESENTATIONS
AND WARANTIES
OF
BIO-PRODUCTS
Bio-Products
hereby represent and warrants, as of the date hereof, as follows:
5.1
Bio-Products
is a corporation, duly organized, validly existing and in good standing under
the laws of Alabama. Bio-Products has all requisite power and authority,
corporate and otherwise, to execute, deliver, observe, and perform its
obligations under, this Agreement. The execution, delivery and performance
by
ho-Products of this Agreement have been duly authorized by all necessary
corporate action and does not and will not violate Bio-Products’ Articles of
Incorporation or Bylaws or any provision of any agreement, law, rule,
regulation, order, writ, judgment, injunction, decree, determination, or award
presently in effect to which Bio-Products is a party or is subject.
5.2
Bio-Products
possesses all such franchises, licenses, patents, or other rights necessary
to
enter into, and satisfy its obligations under, this Agreement, without (to
the
best of Bio-Products knowledge) any conflict with, or infringement of, the
franchises, licenses, patents or other rights of Third Parties.
5.3
Bio-Products
has the exclusive rights to grant some or all of its rights or licenses to
Third
Parties to utilize the Technology not granted to the Licensee under this
Agreement in various geographical locations worldwide.
5.4
There
is
no action, suit, proceeding or claim pending or, to the knowledge of
Bio-Products, threatened against Bio-Products in any way relating to the
Technology. There is no action, suit, proceeding or claim pending or, to the
knowledge of Bio-Products, threatened against Bio-Products’ properties, assets
or business which might have a materially adverse effect on Bio-Products’ rights
or ability to perform this Agreement in accordance with its terms. No
investigation by any governmental agency is pending or threatened against
Bio-Products or the properties, business, or goodwill of Bio-Products, which
has
or might have a materially adverse effect on Bio-Products’ rights or ability to
perform this Agreement in accordance with its terms. There is no outstanding
order, writ, injunction, or decree of any court, government or governmental
agency against Bio-Products or its assets, business or goodwill. Bio-Products
is
not in violation of any law or governmental regulation applicable to it, to
the
Technology, or to its properties or business, including but not limited to
any
applicable safety, environmental control, or similar law or
regulation.
5.5 There
is
no claim or demand of any Third Party pertaining to, or any proceedings, which
are pending or, to the knowledge of Bio-Products, threatened which challenge
the
rights of Bio-Products in respect of any of the Technology. No technology owned,
licensed or used by Bio-Products is subject to any outstanding order, decree,
judgment, or stipulation by or with any court, arbitrator or administrative
agency, or, to the best of Bio-Products’ knowledge, infringes upon the rights of
Third Parties.
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5.6
Bio-Products
reserves the right to, but as of the effective date of this Agreement has not,
put any Third Party on notice of, and is not a party to any suit alleging,
any
infringement or alleged infringement of any of the Technology. Bio-Products
is
aware that there are currently bases for putting certain Third Parties on notice
and/or filing claims, action, or litigation alleging infringement of the
Technology.
ARTICLE
VI- INDEMNITY AND INSURANCE
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6.1
(a)
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The
Licensee and its Sub-Licensees shall indemnify defend and hold
Bio-Products, M&M, and UAH and their respective directors, trustees,
officers and employees harmless from and against any and all claims
and
expenses, including reasonable attorneys’ fees and other legal expenses,
arising our of the death or injury of any person or persons, any
damage to
the property, or any other claim, proceeding, demand, expense,
or
liability of any kind whatsoever resulting from, or attributable
to
utilization of the Technology in any of the countries named in
Paragraph
2.1 (see Paragraph 10.3 below and Exhibit
A).
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(b)
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At
least ten (10) days prior to commencement of any activities on the
site of
each facility of the Licensee or its Sub-Licensees to be constructed
and
utilize the Technology pursuant to this Agreement, the Licensee or
its
Sub-licensee shall provide to Bio-Products copies of certificates
evidencing the purchase of policies of insurance against the liabilities
described in Paragraph 6.1 (a), naming UAH and all of the Parties
hereto
as additional insured, in amounts not less than one million dollars
($1,000,000 USD) per claim.
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ARTICLE
VII- PATENT INFRINGEMENT
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7.1 (a)
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Bio-Products
shall notify the Licensee, and the Licensee shall notify Bio-Products,
of
any infringement suits that may be brought against any Party to
this
Agreement within three days after learning of the existence thereof.
Bio-Products and/or UAFI shall defend at their own expense all
infringement suits relating to the existing Technology, and any
future
discoveries, inventions, improvements, processes and enhancements
described in Paragraphs 4.1 and 4.2 of the Agreement. In connection
with
the defense by Bio-Products and/or UAH of any Third Party claim,
the
Licensee shall take reasonable actions as are necessary or desirable
to
assist Bio-Products and/or UAH in any such action. If the Licensee
is
called upon to take action in a way, which requires it to make
available
its own personnel or to retain counsel and/or experts, Bio-Products
shall
reimburse the Licensee for the direct costs of the Licensee’s personnel
involved and for the fees and disbursements incurred on account
of the
Licensee’s counsel and experts. Such reimbursement of the Licensee shall
be by deduction from amounts to be paid to Bio-Products by the
Licensee
for use of the Technology under this
Agreement.
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(b)
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The
Licensee shall at its own expense defend all infringement suits relating
to any variations, modifications and alterations of the Technology
that
were made by the Licensee without the written acknowledgement and
consent
of Bio-Products to make any such variations, modifications, and
alterations of the Technology. The Licensee shall not be entitled
to any
deduction from amounts due Bio-Products on account of such
expenses.
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7.2
Bio-Products
shall have the sole right (but not the obligation) to take enforcement action
against or settle infringement activity arising under any of the patents
covering the Technology. If Bio-Products is unable to take enforcement action
or
settle infringement activity for financial reasons, Bio-Products may request
Licensee to provide financing to jointly with Bio-Products take such action.
Licensee shall, at its sole discretion, determine whether to provide the
financial resources for any such action. The Licensee shall take all reasonable
actions as are necessary to assist Bio-Products in any such action. If the
Licensee is called upon to take action in a way, which shall require it to
make
available its own personnel or to retain counsel and/or experts, Bio-Products
shall reimburse the Licensee for the direct cost of the Licensee’s personnel
involved and for the fees and disbursements incurred on account of the
Licensee’s counsel and experts. Such reimbursement of the Licensee shall be by
deduction from amounts to be paid to Bio-Products by the Licensee for use of
the
Technology under this Agreement.
7.3
In
connection with the defense by Bio-Products of any Third Party claims not
addressed in Paragraphs 7.1 or 7.2, the Licensee shall participate and
cooperate, as Bio-Products shall, from time to time, reasonably request. If
the
Licensee is called upon to take action in a way which shall require it to make
available its own personnel or to retain counsel and/or experts, the Licensee
shall be entitled to a deduction from any amounts due Bio-Products under this
Agreement. If there are no such amounts due Bio-Products under this Agreement,
then Bio-Products agrees to pay Licensee all personnel, counsel, expert and
courts costs thirty days after notification of such expenses by the Licensee
in
connection with Bio-Products’ defense of such suits.
ARTICLE
VIII -
FABRICATION
AND CONSTRUCTION
8.1
The
Licensee and its Sub-Licensees shall use their best efforts to assure that
all
construction and any fabrication that takes place in any of the countries named
in Paragraph 2.1 meets or exceeds all safety standards that would be required
in
the USA and in the countries wherein the Technology shall be
utilized.
8.2
Bio-Products
will use its best efforts to assure that all engineering designs, fabricated
equipment, processes, formulas, recipes, and plans to be provided to the
Licensee and its Sub-Licensees meet or exceed all applicable and material safety
standards of the USA and any of the countries wherein the Technology shall
be
utilized.
8.3
The
Licensee and its Sub-Licensees shall use their best efforts to obtain, or cause
to be obtained, all material local, regional, and national permits necessary
for
the construction and operation of any facility in any of the countries that
will
utilize the Technology.
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ARTICLE
IX -
CONFIDENTIALITY
9.1
The
Parties hereto each possess confidential information of both a technical and
a
non--technical nature. It is understood that it has been and may be necessary
for one to disclose same to the other, and the Parties agree such disclosures
have been and will be made under and subject to the Confidentiality,
Non-Disclosure, and Non-Use Agreement previously executed by the Parties
(attached hereto as Exhibit C)
ARTICLE
X -
AGREEMENT
BETWEEN BIO-PRODUCTS AND UAH
10.1
Bio-Products
shall comply with all of the terms and conditions of, and perform all of its
obligations under, the UAH License. Bio-Products shall not agree to any
amendment or modification of the UAH License that would materially affect the
terms and conditions of this Agreement without the written consent of
Licensee.
10.2
If
at any
time Bio-Products defaults in its duties in connection with, or by its conduct
attempts to or actually terminates the UAII License which default and/or
termination affects or terminates the ability of Bio-Products to grant the
license contained in this Agreement, then the Licensee will be automatically
entitled to and may at its sole discretion enter into contractual agreements
with and pay directly to UAH the amounts necessary to obtain or maintain the
UAH
License. If Licensee does not enter into contractual agreements with UAH, but
rather cures any financial default of Bio-Products only, then such sums paid
to
UAH on behalf of Bio-Products shall be deducted from any royalties owed to
Bio-Products under this Agreement. If no such royalties are owed to Bio-Products
under this Agreement then such sums will be treated as an interest free loan
to
Bio-Products.
10.3
Any
provision of this Agreement to the contrary notwithstanding, this Agreement
shall be construed and interpreted so that the terms and conditions hereof
shall
not be inconsistent with the terms and conditions of the UAH License, attached
hereto as Exhibit
A.
ARTICLE
XI- PUBLICITY OF LICENSE
11.1 Upon
the
request of the Licensee, Bio-Products shall cooperate and provide assistance
in
the development of public statements, advertising, sales literature or
promotional materials to describe or promote the Technology.
ARTICLE
XII -
VISITS
TO PREMISES
12.1
The
Licensee shall, from time to time, permit Bio-Products to bring visitors to
tour
any facility utilizing the Technology, provided, that Bio-Products shall notify
the Licensee at least seventy--two (72) hours in advance of any proposed visit,
that such visits shall be limited to reasonable times and intervals, and
contingent upon each visitor signing an appropriate Confidentiality,
Non-Disclosure and Non-Use Agreement, and such visitors shall also be subject
to
all relevant safety and other regulations that apply to any other visitors
to
the facility. No persons other than those designated by Bio-Products shall
have
the right to visit any facility utilizing the Technology without the Licensee’s
express written consent.
10
ARTICLE
XIII -
EVENTS
OF DEFAULT AND REMEDIES
13.1
The
Licensee shall be in breach of this Agreement in the event of:
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(a)
|
The
Licensee’s failure to make payment hereunder on or before the date on
which such payment becomes due and payable and the continuation of
such
failure unremedied for thirty (30) days after written notice thereof
has
been given to the Licensee by
Bio-Products;
|
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(b)
|
The
Licensee’s failure to observe or perform any covenant, condition or
agreement contained in this Agreement and the continuation of such
failure
unremedied for thirty (30) days after written notice thereof has
been
given to the Licensee by Bio-Products, unless such breach can not
be
remedied within such thirty (30) days for reasons beyond the Licensee’s
control, in which case the Licensee shall have a reasonable time
within
which to remedy such breach; or
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|
(c)
|
Any
warranty or representation made herein by the Licensee and contained
in
this Agreement, shall prove to have been false, misleading or incorrect
in
any material respect as of the date made, or shall have failed to
state a
fact necessary in order to make the statements made not
misleading.
|
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(d)
|
No
termination of this Agreement shall relieve the Licensee of the obligation
to pay Bio-Products all royalties, fees, and other payments accrued
at the
time of the termination, and to continue to pay all royalties, fees,
and
other payments from the continued operation of existing
facilities.
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13.2
Bio-Products
shall be in default of this Agreement in the event of:
|
(a)
|
Bio-Products’
failure to observe or perform any covenant, condition or agreement
contained in this Agreement or in the UAH License and the continuation
of
such failure unremedied for thirty (30) days after written notice
thereof
shall have been given to Bio-Products by the
Licensee;
|
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(b)
|
Any
warranty or representation made herein by or on behalf of Bio-Products,
contained in this Agreement or in the UAH License, shall prove to
have
been false, misleading or incorrect in any material respect as of
the date
made, or shall have failed to state a fact necessary in order to
make the
statements made not misleading; or
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(c)
|
If
at any time Bio-Products defaults in its duties in connection with,
or by
its conduct attempts to or actually terminates the UAH License which
default and/or termination affects or terminates the ability of
Bio-Products to grant the license contained in this Agreement, or
affects
or terminates the Licensee’s ability to continue operation of existing
plants or build new plants.
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11
13.3
The
Licensee shall have the following remedies for breach or default of this
Agreement or the UAH License by Bio-Products:
|
(a)
|
Upon
Bio-Products’ breach or termination of the UAH License or this Agreement,
such that the breach or termination has affected the ability of Licensee
to continue operation of existing plants and preclusion of building
new
plants; the Licensee may at its option terminate this Agreement and
contract directly with UAFI as provided in this Agreement. The Licensee
and any sub-licensee shall utilize the Technology, free of any royalties,
fees, and other amounts accrued through the date of such default
or breach
and thereafter.
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|
(b)
|
In
addition to any other right or remedy available to the Licensee under
this
Agreement or in law or equity, upon Bio-Products’ breach or default of
this Agreement or the UAH License, the Licensee shall be entitled
to
withhold and/or offset any and all royalties or other fees due to
Bio-Products under this Agreement.
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(c)
|
Notwithstanding
anything to the contrary in this Agreement, the Licensee may terminate
this Agreement at any time upon six (6) months prior written notice
to
Bio-Products, at which time the Licensee will cease utilizing the
Technology, and pay to Bio-Products any royalties, fees and other
amounts
accrued though the date of such termination. Immediately upon termination
of this Agreement all rights, privileges and licenses granted to
the
Licensee hereunder shall revert to Bio-Products, including all
sub-licenses of facilities granted by the
Licensee.
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13.4
Upon the
Licensee’s breach of this Agreement and its failure to cure said breach as
provided above in 13.1, Bio-Products may, at its option, (i) terminate this
Agreement, at which time Licensee shall cease utilizing the Technology and
such
termination shall relieve Licensee of its obligations to pay Bio-Products any
further royalties or fees other than those fees and royalties already accrued
through the date of termination and all sub-licenses granted by the Licensee
shall be assigned to Bio-Products; or (ii) Bio-Products may seek to recover
such
damages to which it may be entitled by applicable law, including but not limited
to, equitable and injunctive relief.
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13.5(a)
|
Any
claim or controversy arising out of or relating to this Agreement,
or the
breach thereof, including without limitation the right of any Party
hereto
to terminate this Agreement, shall be settled by binding arbitration
administered by the American Arbitration Association in accordance
with
its then current Commercial Arbitration Rules, and judgment upon
the award
rendered by the arbitrator may be entered in any court having jurisdiction
thereof The arbitration shall be before one neutral arbitrator to
be
selected in accordance with the then current Commercial Arbitration
Rules
of the American Arbitration Association. The parties shall have all
rights
to pre-arbitration discovery pursuant to the Federal Code of Civil
Procedure.
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12
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(b)
|
Neither
of the Parties nor the arbitrator may disclose the existence, content
or
results of any arbitration hereunder without the prior written consent
of
the Parties except to counsel, accountants, and other need to know
professionals.
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(c)
|
All
fees and expenses of the arbitration shall be born by the Parties
equally.
However, each Party shall bear the expense of its own counsel, experts,
witnesses, and preparation of
proofs.
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(d)
|
In
the event that a claim or controversy over the right of any Party
to
terminate this Agreement shall be submitted for arbitration, this
Agreement shall continue in full force and effect, and the termination
shall be of no effect, until the arbitrator renders a final
decision.
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13.6
In the
event of the commencement of a voluntary case under the Bankruptcy Code by
the
Licensee, or Licensee’s acquiescence in any involuntary petition under the
Bankruptcy Code which voluntary or involuntary case remains undismissed for
a
period of ninety (90) days or more, the right and license conferred under this
Agreement shall automatically become and shall thereafter be null and void.
The
commencement of a voluntary case under the Bankruptcy Code by Bio-Products,
or
Bio-Products’ acquiescence in an involuntary petition under the Bankruptcy Code,
which voluntary or involuntary case remains undismissed for a period of ninety
(90) days or more, shall be treated as a material breach of the
Agreement.
ARTICLE
XIV -
GENERAL
PROVISIONS
14.1
The
titles of the various articles and sections of this Agreement are solely for
convenience of reference and are not part of this Agreement for purposes of
interpreting the provision hereof.
14.2
The
Licensee may assign all of its rights and obligations under, and all of its
interest in, this Agreement, including without limitation the license granted
hereby, either (i) in a transaction accompanied by the sale or other transfer
of
the Licensee’s entire business, its stock, or substantially all of its assets,
or (ii) to any other entity owned by the same shareholders of Licensee and
this
Agreement shall be binding upon, and inure to the benefit of, any such successor
or assign of the Licensee, provided that Bio-Products consents in writing,
such
assignment shall not be unreasonably conditioned, withheld, or
delayed.
14.3
Nothing
in this Agreement shall be deemed or construed to constitute or to create a
partnership, joint venture or agency between the Parties. Except as may be
otherwise provided herein, neither Party shall have any authority to bind the
other Party in any respect.
14.4
If
any
provision of this Agreement is or becomes unenforceable under any law of
mandatory application, it is the intent of the Parties hereto that such
provision will be deemed severed and omitted herefrom, the remaining portions
hereof to remain in full force and effect as written.
13
14.5
The
waiver by any Party of any failure on the part of any other Party to perform
any
of its obligations under this Agreement shall not be construed as a waiver
of
any failure or continuing failure or failures, whether similar or dissimilar
thereto.
14.6
This
Agreement, including the exhibits hereto, constitutes the entire Agreement
between the Parties with respect to the subject matter hereof and supersedes
all
prior and contemporaneous agreements between the Parties, whether oral or
written, related to the subject matter hereof This Agreement may be amended
or
modified only by a written instrument executed by the authorized representatives
of the Parties hereto.
14.7
This
Agreement may be executed in one or more counterparts, each of which shall
be
deemed to be a duplicate original, but all of which, taken together, constitute
a single document. This Agreement may be executed by each Party on separate
copies, which copies, when combined so as to include the signatures of all
Parties, shall constitute a single counterpart of this Agreement.
14.8
This
Agreement shall be governed by and construed in accordance with the laws of
the
State of Alabama.
14.9
Each
Party to this Agreement shall execute all instruments and documents and take
all
actions as may be reasonably required to effectuate this Agreement.
14.10
For
purposes of venue and jurisdiction, this Agreement shall be deemed made and
to
be performed in the City of Huntsville, Alabama.
14.11
This
Agreement and all exhibits contain the entire agreement between the Parties
to
this Agreement with respect to the subject matter of this Agreement, is intended
as a final expression of such Parties’ agreement with respect to such terms as
are included in this Agreement, is intended as a complete and exclusive
statement of the terms of such agreement, and supersedes all negotiations,
stipulations, understanding, agreements, representations and warranties, if
any,
with respect to such subject matter, which precede or accompany the execution
of
this Agreement.
14.12
Whenever
the context so requires in this Agreement, all words used in the singular shall
be construed to have been used in the plural (and vice versa), each gender
shall
be construed to include any other genders.
14.13
Subject
to any restriction on transferability contained in this Agreement, this
Agreement shall be binding upon and shall inure to the benefit of the
successors-in-interest and permitted assigns of each Party to this Agreement.
Nothing in this Paragraph shall create any rights enforceable by any Third
Party
that is not a Party to this Agreement, except for the rights of the
successors-in-interest and permitted assigns of each Party to this Agreement,
unless such rights are expressly granted in this Agreement to other specifically
identified Third Parties.
14
14.14 Except
as
otherwise provided in this Agreement, in the event any litigation, arbitration,
mediation, or other proceeding (“Proceeding”) in initiated by any Party against
any other Party to enforce, interpret or otherwise obtain judicial or
quasi-judicial relief in connection with this Agreement, the prevailing Party
in
such Proceeding shall be entitled to recover from the unsuccessful Party all
costs, expenses, and reasonable attorneys’ fees relating to or arising out of
(a) such Proceeding (whether or not such Proceeding proceeds to judgment),
and
(b) any post-judgment or post-award proceeding including without limitation
one
to enforce any judgment or award resulting from any such Proceeding. Any such
judgment or award shall contain a specific provision for the recovery of all
such subsequently incurred costs, expenses, and actual attorneys’
fees.
14.15
Any
notice or other communication pursuant to this Agreement shall be sufficiently
made or given five days after the date sent, postage pre-paid, by certified
mail, return receipt requested, if sent to the following addresses or to such
other address as the Party may from time to time designate other Parties in
writing:
In
the case of Bio-Products International, Inc.:
Xx.
Xxxxxxx X. Xxxx, President & CEO
BlO-PRODUCTS
INTERNATIONAL, INC.
0000
Xxxxxxxx Xxxx, XX
Xxxxxxxxxx,
Xxxxxxx 00000 XXX
|
000-000-0000
|
(phone)
|
|
000-000-0000
|
(cellular)
|
|
000-000-0000
|
(fax)
|
e1eym~xxxxx.xxx.xxx
(e-mail)
In
the case of International Waste Processors, Inc.:
Xxxxxx
X.
Xxxxx, President
INTERNATIONAL
WASTE PROCESSORS, INC.
00000
Xxx
Xxxxxxxxx, Xxxxx 000
Xxxxxxxx,
Xxxxxxxxxx 00000 XXX
|
000-000-0000
|
(phone)
|
|
000-000-0000
|
(cellular)
|
|
000-000-0000
|
(fax)
|
xxxx@xxxxxxxx.xxx
(e-mail)
Each
Party shall make a reasonable, good faith effort to ensure that it will accept
or receive notices to it that are given in accordance with this paragraph.
A
Party may change its address for purposes of this paragraph by giving the other
Parties written notice of a new address in the manner set forth
above.
14.16
In
the event either Party hereto shall be rendered wholly or partly unable to
perform its obligations under this Agreement by reason of causes beyond its
control, including but not limited to acts of Nature, acts of terrorism, acts,
omissions, or regulation of any government or agency thereof, judicial action,
labor disputes, or transportation failure, except as specified herein, the
performance of the obligations of such Party insofar as it is affected by such
conditions shall be suspended for the duration of such condition, provided
the
Party affected advises the other Party of the basis of its inability within
ten
(10) days of the beginning of
such
known inability. After the cessation of
the
condition causing such inability, the Party suffering such inability shall
have
a period of thirty (30) days to restore its operation(s) and restore its
obligations to the other Party.
15
14.17
No
representations have been made regarding taxes, it being understood by each
of
the Parties that each such Party accepts full responsibility for calculation
of
and payment of his or its taxes,
levies,
duties or other charges incurred or imposed as a consequence of this Agreement
and the transactions described herein.
14.18
This
Agreement shall become effective when it has been executed by all of the Parties
to this Agreement.
IN
WITNESS WHEREOF, the Parties have caused their duly authorized representatives
to duly execute and deliver this Agreement effective as of the date written
above.
BIO-PRODUCTS
INTERNATIONAL, INC.
|
By:
|
/s/
Xxxxxxx X. Xxxx
|
|
|
Xx.
Xxxxxxx X. Xxxx, President & CEO
|
||
INTERNATIONAL
WASTE PROCESSORS, INC.
|
By:
|
/s/
Xxxxxx Xxxxx
|
|
|
Xxxxxx
X. Xxxxx, President
|
||
16
