EXHIBIT 10.1
SALES, DISTRIBUTION AND
PATENT LICENSE AGREEMENT
Effective January 1, 1998, Giorgio Reverberi ('REVERBERI") an Italian
entrepreneur having a place of business at Xxx Xxxxxx 0 00000 Xxxxxxxxxx ne'
Monti (RE) Italy and Xxxxxx X. Xxxxxx and/or his assignee ('XXXXXX X.XXXXXX"), a
distributor having a place of business at 000 Xxxxxxxxx Xxxxxxx Xxxx, Xxx Xxxxx
Village, Illinois, U.S.A., agree as follows:
Article 1
BACKGROUND OF THE AGREEMENT
1.01 REVERBERI represents that it owns the REVERBERI PATENTS as
herein defined and that is prepared to grant to XXXXXX
X.XXXXXX a license under the REVERBERI PATENTS.
1.02 REVERBERI wishes to appoint XXXXXX X.XXXXXX as its exclusive
distributor in the TERRITORY for REVERBERI PRODUCTS as herein
defined.
1.03 XXXXXX X.XXXXXX wishes to acquire a license to practice the
REVERBERI PATENTS, and to be appointed REVERBERI's exclusive
distributor for REVERBERI PRODUCTS as herein defined in the
TERRITORY.
Article 2
DEFINITION
2.01 POWER CONTROL PRODUCT means any power or lighting controller
for energy saving disclosed in the REVERBERI PATENTS and any
improvements thereon.
2.02 REVERBERI PATENTS means any U.S. Patents which may issue on or
claim priority from U.S. Application No 08/ filed November 10,
1997, which claimed priority from Italian Patent Application
No. N197A-001185, filed May 21, 1997, and any corresponding
foreign letters patent and including but not limited to
patents of implementation, improvement or addition, utility
model and appearance design patents and inventors
certificates, as well as any continuation,
continuation-in-part, divisional, reexamination, reissue,
renewal and extension, patent applications and letters patent
that may issue from such applications.
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2.03 RELATED PATENT means any U.S. or foreign patent of any type
having one or more claims relating to a POWER CONTROL PRODUCT.
2.04 TERRITORY means North America, including the United States of
America, its territories and possessions, Canada, and Mexico;
Central America; South America; and the Caribbean excluding:
CUBA, ARGENTINA, CHILE PARAGUAY URUGUAY. REVERBERI expressly
reserves the right to grant patent to thirty party resident
out of the mentionee above TERRITORY.
2.05 ROYALTY-BEARING PRODUCT means any product covered by one more
claims of the REVERBERI PATENTS, and manufactured or assembled
by or for XXXXXX X. XXXXXX.
2.06 XXXXXX X.XXXXXX means Xxxxxx X. Xxxxxx and/or assignees and
any subsidiary there of presently owned or acquired during the
term of this Agreement.
2.07 REVERBERI PRODUCT means any POWER CONTROL PRODUCT manufactured
or sold by REVERBERI.
Article 3
LICENSE GRANT
3.01 REVERBERI grants to XXXXXX X.XXXXXX an exclusive license to
make, have made, import, use and sell in the LICENSED
TERRITORIES any product or method covered by one or more
claims of the REVERBERI PATENTS.
3.02 The term of the license garanteed in section 3.01 shall be for
the full life of the REVERBERI PATENTS.
3.03 XXXXXX X. XXXXXX allow, till this moment, REVERBERI, or his
deputies to effect supervising inspection in his own
commercial organization, with the autority to also audit
REVERBERI's accounts and books, in order to assure the the
observance of the obligations assumed by means of this
agreement.
XXXXXX X. XXXXXX authorizes this inspection both by his offices and by
other third party.
XXXXXX X. XXXXXX is obligated to xxxx each sold, assembled and anyhow
commercial product, by an electrochemistry engraving or similar or
anyhow now removable and indelible, having the following inscription:
XXX.PEND. REVERBERI PATENT MI 97/A 001185; MANUFACTURED ON TRADING
LICENCE" and each product will report progressive number by means of
the same formality.
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3.04 The license to XXXXXX X. XXXXXX may be transferred or assigned
to a corporation or others legal entity so long as XXXXXX X.
XXXXXX retains a controlling interest in said legal entity.
Article 4
ROYALTIES
4.01 XXXXXX X. XXXXXX will pay to Reverberi a Royalty of 300$
Dollars for each Royalty-Bearing Product made by or for XXXXXX
X. XXXXXX and wich is sold by XXXXXX X. XXXXXX in the
TERRITORY.
4.02 No later than the last day of January, May or September of
each year that this Agreement is in effect XXXXXX X. XXXXXX
will provide REVERBERI with write statement of all amounts due
under paragraph 4.01 for the periods ending the lasts days of
the preceding December, April and August and submit payment to
REVERBERI within the following thirty days.
Article 5
APPOINTMENT AS DISTRIBUTOR
5.01 REVERBERI hereby appoints XXXXXX X.XXXXXX its sole and
exclusive distributor and reseller within the TERRITORY of
REVERBERI PRODUCTS.
5.02 REVERBERI will supply REVERBERI PRODUCTS to XXXXXX X.XXXXXX
for distribution in the TERRITORY, for which XXXXXX X.XXXXXX
shall pay REVERBERI the then-prevailing most favorable
wholesale price wich REVERBERI charges its best customers for
such products.
Article 6
PRESENTATIONS, WARRANTIES
6.01 REVERBERI represent and warrants that it is the owner of each
of the REVERBERI PATENTS and that it has not made and will not
make any commitment or restriction incosistent with the
Agreement or will material affect the rights granted by the
exclusive license granted herein.
6.02 REVERBERI represents and warrants tha it does not presently
own, control or have rights under any RELATED PATENT or
pending application for a RELATED PATENT other than the
REVERBERI PATENTS.
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6.03 REVERBERI represents and warrants that it will not assert any
RELATED PATENT against any third partty that purchases or
otherwise lawfully receives or uses any POWER CONTROL PRODUCT
or ROYALTY BEARING PRODUCT, provided that such POWER CONTROL
PRODUCT or ROYALTY BEARING PRODUCT is obtained from XXXXXX
X.XXXXXX.
Article 7
ENFORCEMENT AND MAINTENANCE OF PATENT RIGHTS
7.01 REVERBERI and XXXXXX X.XXXXXX agree to provide written notice
to each other within 20 days of becoming aware of a need to
defend the validity or enforceability of any REVERBERI PATENTS
or within 20 days of becoming aware of any potential
infringement of any REVERBERI PATENTS.
7.02 REVERBERI shall have the first right to defend any of the
REVERBERI PATENTS or to xxx for infringement thereon. If
REVERBERI chooses not to defend or xxx on any REVERBERI
PATENTS withing 30 days of a written rrequest by XXXXXX
X.XXXXXX to do so XXXXXX X. XXXXXX shall have the power to
defend or bring suit on said REVERBERI PATENTS, and if
required by law, REVERBERI will join as party plaintiff in
such action. If XXXXXX X.XXXXXX chooses to defend or xxx for
infringement of a REVERBERI PATENTS XXXXXX X.XXXXXX will
retain any damages or expenses covered as a result of the
suit.
7.03 REVERBERI agrees that it will provide written notice to XXXXXX
X.XXXXXX within 10 days after becoming aware of any of the
following: the failure to timely pay a maintenance fee or
annuity; and the expiration, lapse, unintentional abandorument
or other termination of any REVERBERI PATENTS.
7.04 REVERBERI agrees that it will pay all maintenance fees and
other payments required to maintain such REVERBERI PATENT in
force for the full term of each patent permitted by law.
7.05 REVERBERI agrees that XXXXXX X.XXXXXX can pay any maintenance
fee, annuity or other payment required to maintain any
REVERBERI PATENT in force in the event that REVERBERI refuses,
or otherwise fails to pay the fee and that fees and related
expenses paid by XXXXXX X. XXXXXX under this paragraph can be
deducted from royalties due REVERBERI under Paragraph 4.01.
7.06 REVERBERI shall freely utilize the patent and its invention in
his own activity: on this matter we state that any
responsability regarding the product, the manufacturing
procedure the commercialization of the producct exclusively
pertain to XXXXXX X. XXXXXX.
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XXXXXX X.XXXXXX will provide to assume the most appropriate
guarantees and he engages himself to give any useful and
necessary guarantee to make the product work. Any
responsability is expressly excluded from REVERBERI.
Article 8
TERMINATION
8.01 The licenses garanted herein shall terminate on the last day
of the term of the last- expiring REVERBERI PATENT. The term
relating to the appointment of XXXXXX X. XXXXXX as exclusive
distributor shall remain in full force and effect for ten 10
years from the date of this Agreement, with an automatic
renewal term of another ten 10 years unless either party gives
written notice to the other of its intention not to renew no
less than ninety (90) days prior to the expiration of the
original term.
8.02 XXXXXX X. XXXXXX may terminate this Agreement upon sixty (60)
days written notice to REVERBERI.
8.03 If XXXXXX X.XXXXXX terminates in part, the written notice
shall clearly state the patent or no longer considered to be
subject to the Agreement.
8.04 Either party may terminate this Agreement for breach by the
other party of any material provision of this Agreement if
such breach remains uncured for sixty (60) days after written
notice to the breaching party.
Article 9
NOTICES UNDER THE AGREEMENT
9.01 All written comunication to XXXXXX X.XXXXXX shall be addressed
to: XXXXXX X.XXXXXX, 000 Xxxxx Xxxxxxxxx Heights Road, Elk
Xxxxx Xxxxxxx, Xxxxxxxx 00000, XXX.
9.02 All written communication to REVERBERI should be addressed to:
ELETTRONICA REVERBERI, Via Artigianale Xxxxx 13/13a 42035
Castelnove ne Monti (RE) Italy.
Article 10
CONSTRUCTION
10.01 This Agreement shall be construed in accordance with the
substantive laws of italian State
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Each debate that should rise or anyhow that should come from this
Agreement, it'd be transferred to the Italian Jurisdictional Autority,
sole competent court of XXXXXX XXXXXX.
10.02 This Agreement constitutes the entire agreement of the parties
with respect to the subject matter hereof, and supersedes all
prior agreement and understandings of the parties written or
oral.
10.03 This Agreement may be modified only in writhin signed by both
parties.
10.04 Nothing provided herein shall be deemed to create any
relationship between the parties of agency_partnership or
joint venture.
10.05 In the event that any provision of this Agreement is held
invalid or unenforceable for any reason, this Agreement shall
be construed as if that provision had never been a part
hereof.
10.06 This Agreement is written both in Italian than in English and
unanimously will Italian shall be the official language and
it'll prevail in case of any contrast.
Article 11
PLANS AND DOCUMENTS
11.01 REVERBERI engages himself to give to XXXXX X.XXXXXX all
reproducing designs plans and technical characteristic,
necessary to manufacture the patent products, and he engages
himself to keep the secret over them, even after the end of
this Agreement.
11.02 REVERBERI engages himself to trasmit and to place at XXXXXX
X.XXXXXX'x disposal, all changes and improvings, realized on
licenced products, without any increase of royalties.
11.03 REVERBERI engages himself to supply XXXXXX X. XXXXXX, in good
faith and without any reserve, all his technical service and
advice necessary and usuful to realize the patent in an
industrial way.
11.04 REVERBERI, engages himself, for a period, strictly necessary
to instruct at his charge, XXXXXX X.XXXXXX'x staff, by his
firm, as it concerns the manufacturing of the licenced
product, excluded formation and training costs.
11.05 XXXXXX X. XXXXXX can't modify or improve the licenced product,
without REVERBERI's previous consent.
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11.06 XXXXXX X. XXXXXX can't manufacture and sell concurrent
products, during and till to five years after the expiry of
this Agreement.
11.07 XXXXXX X.XXXXXX engages himself to buy to REVERBERI (EXCEPT
OTHER AGREEMENT NEGOTIABLE FROM THE PARTS) the following
components: control modules, EDR,SDL,MI/O,GOC, MCL. SGM, SGL,
MMO, AUTOTRASFORMER ,RELAY card and all necessary and not
replaceable by an identical material locally dealt and
produced.
This Agreement is written on December 24rd, 1997
In witness the parties;
REVERBERI GIORGIO XXXXXX X. XXXXXX
/s/ Reverberi Giorgio /s/ Xxxxxx X. Xxxxxx
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