EXHIBIT 10.10
COMBINED TECHNOLOGY AGREEMENT
(with Assignment of Trade Secrets)
THIS COMINED TECHNOLOGY AGREEMENT, made as of the 22nd day of September, 2006 by
and among:
XXXXX X. XXXXXXX, an adult individual, competent to contract, residing at 0
Xxxxxxxxx Xxxxx, Xxxxxxx, Xxx Xxxxxx 00000, hereinafter "XXXXXXX"; and
XXXX XXXXXXXXX-XXXXXXX, an adult individual, competent to contract, residing at
0 Xxxxxxxxx Xxxxx, Xxxxxxx, Xxx Xxxxxx 00000, hereinafter "AUGUSTINE"; and
MOBILSTREAM OIL, INC., a Delaware corporation with principal offices located at
000 Xxxxxxxxxx Xxxxx, Xxxxx #0 & #0, Xxxx Xxxxxx, Xxx Xxxxxx 00000, hereinafter
"MOI";
AND
CARBON RECOVERY CORPORATION, a New Jersey corporation with principal offices
located at 000 Xxxxxxxxxx Xxxxx, Xxxx #0, Xxxx Xxxxxx, Xxx Xxxxxx 00000,
hereinafter "CRC"; and
GLOBAL RESOURCE CORPORATION, a Nevada corporation with principal offices located
at 000 Xxxxxxx Xxxx, Xxxxxxxxx, Xxxxxxxx 00000, but as of the date hereof being
moved to 000 Xxxxxxxxxx Xxxxx, Xxxx #0, Xxxx Xxxxxx, Xxx Xxxxxx 00000,
hereinafter "GRC";
WITNESSETH THAT:
WHEREAS, XXXXXXX is an inventor who, since the 1990's has been
experimenting with the use of targeted, variable frequency microwaves for the
decomposition of various materials, especially hydrocarbons in various forms and
compositions and commercial uses;
WHEREAS, XXXXXXX has, over the years, made certain licensing agreements
with Careful Sell Holding relating to the technology and trade secrets developed
by him, with Careful Sell Holding transferring all of its rights such that the
end result of which was that the technology and trade secrets were ultimately
transferred, sold, conveyed, and assigned to MOI;
WHEREAS, AUGUSTINE was a member of Careful Sell Holding and executed
various related documents on its behalf and is accordingly joining herein;
WHEREAS, MOI sold an exclusive license for the use of the technology
and trade secrets to CRC in exchange for the issuance of 37,500,000 shares of
CRC's Common Stock, which license provided for certain on-going royalties;
WHEREAS, CRC has entered into a Plan and Agreement of Reorganization
with GRC, whereby in a so-called "C" Reorganization GRC is acquiring
substantially all of the assets of CRC, of which assets the primary one is the
license rights to the technology and the trade secrets;
WHEREAS, in view of the prior chain of title with respect to the
license rights, the parties desire to have a single, unified document combining
the prior assignments and confirming the transfer by Careful Sell Holding, the
ownership by MOI, the exclusive licensing by MOI of CRC, and the ownership of
such license rights by CRC, prior to the reorganization, and by GRC, after the
Closing;
NOW, THEREFORE, intending to be legally bound, in consideration of the promises
and covenants previously made and made hereby, the parties acknowledge their
understandings, as follows:
1. XXXXXXX hereby represents and warrants that it was his intent, consistently,
at all times, to have transferred the technology and trade secrets to Careful
Sell Holding. XXXXXXX further represents and warrants that, in fact, he
transferred all of his right, title and interest in and to the technology and
trade secrets to Careful Sell Holding, first the waste tire decomposition
application and subsequently the other applications. He hereby represents and
warrants that Careful Sell Holding was, at the time of the transfer by it to
MOI, the sole and exclusive owner of the technology and trade secrets, that
Careful Sell Holding had the full authority, right and power to transfer, sell,
convey and assign such technology and trade secrets to MOI, and that Careful
Sell Holding in fact made a full and complete transfer of all of its rights to
MOI. By joinder to this Agreement, Careful Sell Holding confirms such
representations and warranties and confirms that it was the sole and exclusive
owner of the technology and trade secrets, that it had the full authority, right
and power to transfer, sell, convey and assign such technology and trade secrets
to MOI, and that it in fact made a full and complete transfer of all of its
rights to MOI.
2. AUGUSTINE hereby represents and warrants that she was a fifty percent member
of Careful Sell Holding, that XXXXXXX first transferred the technology and trade
secrets pertaining to the waste tire decomposition application to Careful Sell
Holding and subsequently transferred the balance of the applications, and that
Careful Sell Holding transferred its entire right, title, and interest in and to
the technology and the trade secrets to MOI and that following such transfer MOI
was the sole and exclusive owner of the entire technology and trade secrets and
that Careful Sell Holding retained no interest therein..
3. MOI hereby represents and warrants that as of the date hereof it is the sole
and exclusive owner of the technology and trade secrets, subject only to the
rights previously conveyed to CRC. MOI represents and warrants that at the time
of its licensing of CRC it was the sole and exclusive owner of the technology
and trade secrets, that it had the full authority, right and power to license
CRC, on an exclusive basis, to use the technology and trade secrets.
3. XXXXXXX, XXXXXXXXX and MOI represent and warrant that (a) all of the
potential applications for the technology, (b) all of the components of the
technology, and (c) all of the trade secrets relating to the technology and the
potential applications have been, respectively, transferred to Careful Sell
Holding and in turn transferred to MOI, and in turn licensed, on an exclusive
license basis, to CRC and that CRC has the full authority, right and power to
transfer, as licensee, its license to GRC. By joinder to this Agreement, Careful
Sell Holding confirms such repressentations and warrantes.
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4. CRC hereby assigns all of its right, title and interest in and to the
license, the technology and the trade secrets to GRC. CRC represents and
warrants that such license is in good standing, with no event of default or
delinquency as of the date hereof and free of all liens and encumbrances. MOI
hereby confirms that such license is in good standing, with no event of default
or delinquency as of the date hereof. MOI acknowledges awareness of the transfer
and assignment of the license and consents thereto and accepts GRC as the
licensee, releasing CRC from all further responsibility thereunder.
5. MOI, CRC, and GRC acknowledge that over the years there have been various
transfer documents, various license documents, and expansions in the scope of
the technology applications and agree that it is desireable to have a single
document setting forth the terms of the license. Accordingly, while all such
prior transfers as summarized hereinabove are to remain in full force and effect
so that MOI is the sole owner of the technology and the trade secrets and the
licensor thereof and GRC is the sole and exclusive licensee thereof, in all
other respects this Combined Technology Agreement is intended to supersede and
replace all prior agreements, documents, writings, memoranda, understandings and
licenses and the relationship between MOI and GRC shall be governed by the terms
and conditions hereof.
6. (a) MOI (hereinafter the "Licensor") hereby grants to GRC (hereinafter the
"Licensee") the exclusive and worldwide right and license (the "License") to
commercialize, use and exploit the Inventions for any purpose whatsoever,
whether in recycling tires or in other commercial activities; to practice the
processes of recycling tires through the use of proprietary technology utilizing
wavelength specific microwaves and sub atmosphere vacuum xxxxxxxx; to make,
assemble, and use apparatus, machinery, auxiliaries, and all devices for
carrying such Inventions and processes into practice; and to make, use, sell, or
dispose of the products of such processes and apparatus, machinery, auxiliaries,
and devices (the "Process").
(b) The Licensor hereby grants to the Licensee the right to grant sublicenses on
such terms as are consistent with the provisions of this Agreement and to such
sublicensees as are acceptable to the Licensor, in its sole and exclusive
discretion.
(c) The exclusive rights and License herein granted shall include all
Inventions, improvements, enhancements and modifications thereto made or
conceived during the term of this Agreement which the Licensor owns or controls
or hereafter owns or controls, and all patent applications and patents based on
or covering the same which the Licensor now owns or controls or hereafter owns
or controls.
(d) If the Licensee desires to make or cause to be made any apparatus,
machinery, auxiliaries, devices, or parts therefor to exercise the rights and
License granted to the Licensee pursuant to this Section 1, then the Licensor
shall provide the Licensee, or its nominees, with such blueprints and working
drawings as are available to the Licensor, and all other data and information
reasonably necessary for the manufacture thereof.
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7. The Licensor represents that:
(i) Such Inventions, including the Process, are secret, have not been
revealed to anyone except the patent attorneys for the Licensor, and shall not
be revealed to anyone during the term of the License without the prior approval
of the Licensee;
(ii) The Licensor has the right to grant the License hereby granted,
has executed no agreement in conflict herewith and has not granted to any other
person, firm, or corporation any right, license, shop-right, or privilege
hereunder; and
(iii) The Licensor has at no time filed, or caused to be filed,
applications for patents, or obtained in their name, or caused to be obtained in
the name of others, any patents in the United States or elsewhere based or
covering any of the Inventions.
8. The Licensor shall furnish to the Licensee, or to its nominees and attorneys,
all information and documents regarding such Inventions which are reasonably
available to the Licensor, including the apparatus, processes, and formulae in
respect thereof, to enable the Licensee to operate thereunder and to enable its
attorneys to prepare and prosecute patent applications therefor; it being
understood and agreed that, if so requested by the Licensor, the Licensee's
attorneys shall collaborate with such other patent attorney as the Licensor may
designate. The Licensor shall render to the Licensee such services in a
consulting capacity as may be requested by the Licensee to instruct the
Licensee, or its appointed nominees, in all operations pertaining to the
industrial and commercial exploitation of the Inventions.
9. (a) Commencing on March 1, 2006, with respect to that application of the
technology pertaining to the disposal of waste tires, CRC began the payment to
MOI of a minimum annual royalty of $1,400,000 pursuant to an arrangement whereby
the royalty is the greater of 7.5% of the Revenues, as hereinafter defined, or
the minimum royalty. The minimum royalty is to incerease by $100,000 per annum
on March 1 of each year until it reaches $1,800,000. (b) The Licensee shall pay
to the Licensor royalties based upon the utilization of the various additional
included technologies, as follows:
Utilization % royalty Minimum Annual Royalty*
Dredged Sediments/Soils 7.5 same as waste tires
Plastic Waste 7.5 same as waste tires
Oil Shale Recovery 10 2.8 million, increasing $100,000 pa** for 5 years
Oil Sands Recovery 10 same as oil shale recovery
Cuttings Waste 10 same as oil shale recovery
Resid Oil 10 4.2 million, increasing $100,000 pa** for 5 years
Capped Well Recovery 10 same as Resid Oil
* Minimum Annual Roaylties will commence as provided in (c) following.
** "pa" means per annum, with each increase commencing on the anniversary date
of commencement of the utilization
(c) Payment of the Minimum Annual Royalty will not commence until such time as
(i) the Licensor certifies that a given technology is ready for actual field
utilization, following all laboratory and BETA testing required, and (ii)
Licensee (or a sub-licensee) commences actual utilization of the certified
technology.
(d) For the purposes of this Agreement, Revenues shall mean all consideration of
any value, from any sales of products, materials, energy, services or other
revenue generated through utilization of the technology but shall exclude
amounts for shipping, transmission, insurance or severance/sales tax.
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10. The Licensee shall at all times keep, and require all sublicensees to keep,
an accurate account of the licensed operations, and shall render a full
statement of the same in writing to the Licensor for each calendar quarter
during the term of this Agreement, within thirty (30) days of the end of such
calendar quarter, and concurrently with the rendering of such statement pay to
the Licensor the amount of Royalties accrued during the corresponding calendar
quarter. The Licensee agrees that the Licensor shall have the right, at its own
expense and not more often than once in each calendar year, to have a certified
public accountant acceptable to the Licensee examine the books of the Licensee
and sublicensees, if any, for the sole purpose of verifying Royalty statements
and Revenues.
11. This Agreement shall remain and continue in full force and effect on a
continuous basis in perpetuity, but subject to the following:
(a) The Licensee may at any time, upon thirty (30) days' written notice
to the Licensor, terminate this Agreement and the licenses hereunder, the
foregoing being without prejudice, however, to moneys due or to become due to
the Licensor.
(b) If any payments are in default for fifteen (15) days after written
notice is given to the Licensee either by certified mail, return receipt
requested or by commercial overnight delivery service with delivery fees paid,
or if the Licensee is in default in performing any of the other terms of this
Agreement and such default continues for a period of sixty (60) days after
written notice thereof is given to the Licensee, then the Licensor shall have
the right to terminate this Agreement upon giving notice to the Licensee at
least ten (10) days prior to the effective date of termination, and thereupon
the Agreement and the rights and License granted hereunder to the Licensee shall
become void without prejudice to any remedy of the Licensor for the recovery of
any moneys due it under this Agreement.
(c) In the event of any adjudication of bankruptcy or of insolvency
under any statute for the relief of debtors or the appointment of a receiver by
a court of competent jurisdiction, or the assignment for the benefit of
creditors or levy of execution directly involving the Licensee, this Agreement
shall terminate.
(d) Upon termination pursuant to this Section 5, the Licensee shall
duly account to the Licensor and transfer to it all rights which it may have to
the patents, inventions, processes, and apparatus, and all rights to any
sublicense or sublicenses which may have been granted pursuant to the terms
hereof.
12. (a) Licensor is not aware of any infringement by the Process or the
Inventions. If infringement is alleged, Licensor will cooperate with Licensee in
the defense of such claims and may, but shall have no obligation to, control
such defense. The establishment by any third-party of the Inventions' or the
Process's infringement of the rights of such third-party shall not be a breach
of this Agreement.
(b) This Section sets forth the Licensor's entire liability for patent and/or
copyright infringement related to the Process.
13. If during the term of this Agreement, the Licensor, individually or
collectively, makes any further improvements in the Inventions or the mode of
using them, or becomes the owner of any new improvements either through patents
or otherwise, then the Licensor shall communicate such improvements to the
Licensee and the Licensee shall have the right to include the same in this
Agreement without additional compensation. If during the term of this Agreement,
the Licensee, individually or collectively, makes any improvements in the
Inventions or the mode of using them, then the Licensee shall communicate such
improvements to the Licensor and Licensor shall have exclusive right, title and
interest in all such improvements.
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14. (a) Licensee hereby acknowledges that the Inventions and Process, including
design, drawings, documentation and other trade secret and intellectual property
rights pertaining to the Inventions and Process are valuable rights which shall
remain the sole property of Licensor and shall be maintained in confidence by
Licensee, its employees and agents during the term of this Agreement and
thereafter following termination of this Agreement, subject only to the use of
such rights by the Licensee pursuant to the terms of this Agreement, unless such
proprietary information is approved in writing by Licensor for release,
publication, dissemination or use or is required by applicable law to be
disclosed to a governmental authority; provided, however, that to the extent
permitted by applicable law, Licensee shall use its best efforts to obtain the
agreement of such governmental authority to maintain the confidentiality of any
such proprietary information.
(b) Licensee and Licensor shall keep in strict confidence any and all important
matters concerning the business terms covered by this Agreement. Licensee shall
treat and handle all technical information, design data, specifications and like
material pertaining to the Inventions and the Process or any improvements
thereto in confidence and will use such material only to make, have made, use
and sell products using the Inventions and the Process. Licensee shall return
all technology and other papers and items which are embodied in physical form to
Licensor promptly upon the termination of this Agreement. (c) The parties shall
take all reasonable steps to eliminate the risk of disclosure of confidential
information, including, without limitation, ensuring that only employees with a
need to know information relating to the Inventions and/or the Process have
access thereto and that such employees shall sign confidentiality agreements to
treat the Inventions and the Process as confidential information. Licensee shall
provide proper and secure storage for papers, drawings and other confidential
matters.
(d) Licensee shall require any permitted sublicensee to sign an Agreement
containing the same confidential provisions as are contained herein.
15. The parties voluntarily agree that any dispute or claim concerning or
relating to this Agreement shall be resolved by binding arbitration in Camden
County, New Jersey. The parties voluntarily waive their rights to seek judicial
determination of such disputes or claims. The arbitration proceedings shall be
conducted in accordance with the Commercial Rules of Arbitration promulgated by
the American Arbitration Association, as amended from time to time. Any dispute
arising under this Agreement or with regard to its interpretation shall be
submitted for arbitration to the American Arbitration Association in Camden
County, New Jersey in accordance with the rules and regulations of said
Association. Any controversy or claim arising out of or relating to this
Agreement, or the breach thereof, shall be settled by arbitration in accordance
with the Commercial Arbitration Rules of the American Arbitration Association,
and judgment upon the award rendered by the Arbitrator(s) may be entered in any
court having jurisdiction thereof.
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16. Any notice required under this agreement shall be addressed to Licensor at 0
Xxxxxxxxx Xxxxx, Xxxxxxx, Xxx Xxxxxx 00000 and to Licensee at Bloomfield
Business Park, 000 Xxxxxxxxxx Xxxxx, Xxxxx 0, Xxxx Xxxxxx, Xxx Xxxxxx 00000.
17. This Agreement shall be binding upon and inure to the benefit of the heirs,
legal representatives, successors, and assigns of the parties hereto; provided,
however, the rights of either party hereunder shall not be assignable, nor
transferable, except to heirs, without the prior written consent of the other
party, which consent may not be unreasonably withheld.
18. This Agreement and any attachments hereto constitute the entire agreement
and understanding of the parties with respect to the subject matter hereof and
supersede all prior agreements and understandings, whether oral or written. No
modification or claimed waiver of any of any of the provisions hereof shall be
valid unless in writing and signed by the duly authorized representative against
whom such modification or waiver is sought to be enforced.
19. Nothing contained in this Agreement shall be construed as conferring by
implication, estoppel, or otherwise upon either party any license or other right
except the License and rights expressly granted hereunder to that party.
In Witness Whereof, the undersigned have executed and delivered this
Combined Technology Agreement as of the day and year first above written.
GLOBAL RESOURCE CORPORATION
By:
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MOBILESTREAM OIL CORPORATION
By:
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CARBON RECOVERY CORPORATION
By:
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Xxxxx X. Xxxxxxx
Xxxx Xxxxxxxxx-Xxxxxxx
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