License Agreement
THIS AGREEMENT, effective the _______ day of SEPTEMBER 1998, is between Clean
Water Technologies, Inc., a Florida corporation, ("CWT"), located at 000 Xxxxx
Xxxxxxx Xxxxxx, Xxxxx Xxxx Xxxxxxx, and the University of South Florida Research
Foundation, Inc., a University of South Florida (USF) direct-support not for
profit organization under Florida law ("USFRF").
Introduction
WHEREAS, CWT will be actively involved in the merchandising of technologies for
purifying water.
WHEREAS, USF developed the following technology:
Method for removing arsenic species from a aqueous liquid using modified zeolite
minerals. US patent applications 60/036,704 and 90/016,126. Inventor Xx. Xxxxxx
Xxxxxx. A copy of the patent application is contained in Appendix A.
WHEREAS, USFRF is the exclusive licensor of USF Technology and is willing to
grant CWT an exclusive license to use USF Technology and other USF research
results derived pursuant to this Agreement, on the terms and conditions therein;
and
WHEREAS, USFRF believes it is in public interest to grant CWT license set forth
below.
NOW THEREFORE, in consideration of the premises and mutual covenants set forth
herein, and intending to be legally bound, the parties agree as follows:
I. Definitions
A. "USF Patent Rights" shall mean the USF Patent Applications listed
above and any successor application, domestic or foreign resulting
therefrom, any US or foreign patents issuing therefrom.
B. "USF Technology" shall mean method for removing arsenic species
from a aqueous liquid using modified zeolite minerals. For this
technology, USF Technology shall include patent rights and know-how
related directly thereto.
C. "Licensed Product" shall mean any CWT product, system and/or
process in which USF Technology is used.
D. To "Commercially Exploit" or "Commercial Exploitation" of a
Licensed Product, shall mean to provide the Licensed Product to a
customer, in exchange for valuable consideration.
E. "Revenue for a Licensed Product shall mean consideration due or
paid to CWT for CWT's providing of a Licensed Product to a
customer.
F. "Territory" shall mean Worldwide.
II. Grant
Subject to USFRF's retained rights and covenants set forth in Section
VIII Below, CWT is granted the exclusive right and license to
Commercially Exploit Licensed Products in the Territory.
III. Best Efforts
CWT shall use its best efforts to develop and Commercially Exploit
Licensed Products in the Territory.
IV. License Fees and Running Royalties
CWT agrees to pay license fees, and running royalties (all payable to
USFRF) as follows:
A. For the arsenic removal technology (Xx. Xxxxxx Xxxxxx'x
technology) initial license fee of Seven Hundred Thousand
Common Shares of CWT (700,000) to be delivered within (30)
days after full execution of this License. This represents 7%
of the authorized shares of CWT.
B. Running Royalties equal to:
Two Percent (2%) of the Revenue resulting from Commercial
Exploitation for Licensed Products dealing with arsenic
removal technology.
C. CWT shall pay to USF a minimum royalty payments the following:
For the arsenic removal technology; Zero (0) dollars for the
first twenty four (24) months; Five thousand ($5,000.00)
dollars at the end of year three (3); Six thousand ($6,000.00)
dollars at the end of year four (4); Seventy-two hundred
($7,200.00) dollars at the end of year five (5);
Eight thousand six hundred forty ($8,640.00) dollars at the
end of year six (6); And ten thousand three hundred sixty
eight ($10,368.00) at the end of year seven (7); and same sum
for each successive year thereafter during the term of this
Agreement.
V. Patent Prosecution
The filing, prosecution and maintenance of all USF Patent Rights shall
be at the sole discretion of USF, provided that at CWT's request and
sole expense, USFRF will arrange for USF to seek, obtain and maintain
the USF Patent Rights and requested other protection, in the territory,
to the extent that USF is lawfully entitled to do so all of which shall
be incorporated in USF Patent Rights. Should CWT elect not to seek,
obtain or maintain a part of USF Patent Rights, all rights to such part
shall revert to USFRF, and CWT shall have no further interest therein.
VI. Assignability
This Agreement may be assigned to any person or entity without USFRF's
advance notice, and thereafter may be assigned to any person or entity
only with advanced written approval from USFRF; provided that USFRF
will not reasonably withhold such approval in a timely manner, and
further provided that any such assignee agrees to comply with all of
the terms and conditions hereunder.
VII. Sublicensing
CWT's rights and obligations under this Agreement may be sublicensed
without USFRF's advance written permission, provided CWT is in
compliance with all of its obligations under this Agreement.
USFRF will permit CWT to sublicense its rights to Commercially Exploit
Licensed Products, provided that CWT pay royalties to USFRF as if CWT
Had Commercially Exploited Licensed Products sold by it sublicenses
which may have been granted by CWT. All sub-licensees shall agree to
comply with all of the terms and conditions of this Agreement. CWT
shall provide USFRF with a copy of each executed sublicense within
fifteen (15) days of its execution.
VIII. USFRF Retained Rights and Covenants
USFRF retains for itself and for USF the right to do all things granted
to CWT under Section II, and USFRF covenants that USFRF will not
license others to Commercially Exploit USF Technology licensed to CWT
under this Agreement, and will not itself so Commercially Exploit,
unless
(A) authorized by this Agreement, or
(B) CWT becomes insolvent, or
(C) anyone files a lien against this Agreement, or
(D) CWT takes any action, or fails to take any action, the result
of which gives a third party the right to acquire a security
interest in this Agreement and/or USF Patent Rights, or
(E) CWT files for bankruptcy or a receiver is appointed, or
(F) CWT ceases to carry on its business, with the exception of
merger, reorganization, acquisition, or similar restructuring.
(G) CWT materially breaches this Agreement in a manner which
causes the Agreement to terminate or gives USFRF the right to
terminate under Section XII.
IX. Product Liability/Insurance
CWT shall, at all times during the term of this Agreement and
thereafter, be solely responsible for, and defend, hold harmless and
indemnify State of Florida, Board of Regents, USF, USFRF, their
trustees, officers, employees, agents and other representatives,
against any claims and expenses, including legal expenses and
reasonable attorney's fees, arising out of the death of or injury to
any person or property based upon products and/or services produced,
provided or developed for, or by CWT, or commercially exploited by CWT
pursuant to its rights under this Agreement. CWT shall obtain and carry
in full force and effect product liability insurance, in amounts
customary in the relevant industry in which CWT commercially exploits
licensed products which shall protect USF, USFRF, their trustees, the
Board of Regents, officers, employees, and agents and the State of
Florida and other representatives in regard to the foregoing events at
such time as CWT begins to supply licensed products to the marketplace.
X. Record Keeping
A. CWT shall keep full, true and accurate books of account
containing all particulars that may be necessary for the
purpose of showing the amounts payable to USFRF hereunder.
Said books of account shall be kept at CWT's principal place
of business. Said books and the supporting data shall be open
at all reasonable times, with reasonable advanced notice, for
five (5) years following the end of the calendar year to which
they pertain, to the inspection of USFRF or its agents for the
purpose of verifying CWT's royalty statement or compliance in
other respects with Agreement.
B. CWT within ninety (90) days after each six (6) months, shall
deliver to USFRF true and accurate reports, giving such
particulars of the business conducted by CWT during the six
(6) months as shall be pertinent to royalty accounting
hereunder. These shall include at least the following:
(i) the number of Licensed Products provided by CWT to
its customers, if any,
(ii) the Revenue derived by CWT from it Commercial
Exploitation of Licensed Products, if any, and
(iii) the royalties due pursuant to Section IV
With each such report submitted, CWT shall pay the royalties
and any other consideration due and payable under this
Agreement. If no royalties, fees or other consideration shall
be due, CWT shall so report.
C. On or before the ninetieth (90th) day following the close of
CWT's Fiscal year, CWT shall provide USFRF with CWT's
financial Statements for the preceding fiscal year including,
at a minimum, a Balance sheet and an Operating Statement.
D. The payments for royalties, fees or other consideration set
forth in This Agreement shall, if overdue, bear interest until
payment at the monthly rate of one percent (1%). The payment
of such interest shall not foreclose USFRF from exercising any
other rights either may have as a consequence of the lateness
of any payment.
E. CWT hereby agrees that it shall not sell, transfer, export or
re-export any Licensed Products or related information in any
form, or any direct products of such information, except in
compliance with all applicable laws, including the export laws
of any U.S. government agency and any regulations thereunder,
and will not sell, transfer, export or re-export any such
Licensed Products or information to any persons or any
entities with regard to which there exist grounds to suspect
or believe that they are violating such laws. CWT shall be
solely responsible for obtaining all licenses, permits or
authorizations required from the U.S. and any other government
for any such export or re-export.
XI. Non Use of Names
CWT shall not use the names of the USF or USFRF, nor any adaptation of
either, in any advertising, promotional or sales literature without
prior written consent obtained from USF and/or USFRF in each case,
except that CWT may sate that it is licensed under one or more of the
patents and/or applications comprising the USF Patent Rights.
XII. Term and Termination
A. Unless sooner terminated as provided herein, the royalty
Obligations of this Agreement will expire with respect to a
given Licensed Product the longer of twenty (20) years from
the date of the execution of this Agreement or the expiration
of the last to expire patent which covers the licensed
intellectual property in the Territory. Notwithstanding the
foregoing, the parties hereto agree that the royalty
provisions of Paragraph IV.B. and IV C., are not solely
dependent upon Patent Rights, and CWT's obligations to pay
royalties under paragraph IV.C.(I) hereinabove shall continue
unabated regardless of any of the foregoing expirations.
B. In the event either party files for bankruptcy or a receiver
is appointed, this Agreement may immediately thereafter be
terminated at the option of the other party.
C. Should CWT fail to pay the royalties, fees and/or other
consideration Due and payable hereunder, USFRF shall have the
right to terminate this Agreement on forty-five (45) days
written notice. Upon the expiration of the forty-five (45) day
period, if CWT shall not have paid all such royalties and
interest thereon, USFRF shall have the right to terminate this
Agreement. Upon any material breach or default of Agreement by
CWT, other than those occurrences set out hereinabove which
shall always take precedence in that order over any material
breach or default referred to in this Section, USFRF shall
have the right to terminate this Agreement and the rights,
privileges and license granted hereunder upon forty-five (45)
days' written notice to CWT. Such termination shall become
effective unless CWT shall have cured any such breach or
default prior to the expiration of forty-five (45) days from
the date CWT receives notice of the breach or default.
D. Upon termination of this Agreement for any reason, nothing
herein Shall be construed to release either party from any
obligation that matured prior to the effective date of such
termination. CWT may, however, after the effective date of
such termination, complete Commercial Exploitation of Licensed
Products for which CWT has received consideration at the time
of such termination and sell the same, provided that CWT shall
pay to USFRF the royalties or other consideration thereon as
required under the provisions of Section IV of this Agreement,
and shall submit the reports required under Section X
regarding the Commercial Exploitation of the Licensed
Products.
E. Upon termination of this Agreement for any reason, all
intellectual Property rights licensed hereunder, including
without limitation, all USF Patent Rights and all USF
Technology shall revert to USF and USFRF, and CWT shall have
no further right to or continuing Interest. In addition, any
sublicenses hereunder shall terminate, unless accepted by
USFRF.
F. CWT, its successors or assigns, shall have the option to
terminate This license agreement upon thirty (30) days written
notice and in That event, CWT shall cease using USF Technology
and return same to USF. In this event, it is understood that
all future Monetary obligations under this Agreement shall be
void and any Monies paid to date to USFRF shall be
non-refundable to CWT, or its Assigns.
XIII. Payments Notices and Other Communications
Any payment, notice or other communication made to any party pursuant
to this Agreement shall be sufficiently made or given on the date of
mailing if sent to such party by certified first class mail or air
courier, postage prepaid, addressed to it at its address below, or at
such other address as it shall have designated by written notice given
to the other party.
In the case of USF:
Director, Patents & Licensing
0000 Xxxx Xxxxxx Xxxxxx FAO 126
Xxxxx, Xxxxxxx 00000-0000
In the case of USFRF:
USF Research Foundation, Inc.
Xxxx Xxxxxx Xxx 00000
Xxxxx, Xxxxxxx 00000-0000
In the case of CWT:
Clean Water Technologies, Inc.
000 Xxxxx Xxxxxxx Xxxxxx
Xxxxx Xxxx, Xxxxxxx 00000
XIV. Infringement
CWT understands that USFRF makes no representative and provides no
assurances that Commercial Exploitation of Licensed Products under this
Agreement does not and will not in the future, infringe or otherwise
violate the rights of others.
XI. Miscellaneous Provisions
A. Each party represents and warrants that it has the authority
to enter Into this Agreement and that the execution, delivery
and performance of this Agreement does not conflict with any
agreement, or understanding, either written or oral, to which
it is a party or to which it is otherwise bound.
B. This Agreement shall be construed, governed, interpreted and
Applied in accordance with the laws of the State of Florida,
U.S.A.
C. The parties hereto acknowledge that this Agreement sets forth
the Entire agreement and understanding of the parties, hereto
as to the subject matter hereof, and shall not be subject to
any change or modification except by the execution of a
written instrument subscribed to by the parties hereto.
D. If any term, covenant or condition of this Agreement or the
Application thereof to any party or circumstance shall, to
any extent be held to be invalid or unenforceable,
(i) the remainder of this Agreement, or the application
of such term, covenant or condition to the parties or
circumstances other than those as to which it is held
invalid or unenforceable, shall not be affected
thereby and each term, covenant or condition of this
Agreement shall be valid and be enforced to the
fullest extent permitted by law; and
(ii) the parties hereto covenant and agree to renegotiate
any such term, covenant or application thereof in
good faith in order to provide a reasonably
acceptable alternative to the term, covenant or
condition of this Agreement or the application
thereof that is invalid or unenforceable, it being
the intent of the parties that the basic purpose of
this Agreement are to be effectuated.
E. In the event any provision of this Agreement is inconsistent
with USF Rules and Policy in effect as of March 1, 1998, USF
Rules And Policy shall control.
F. CWT agrees to use in connection with Licensed Products used
And/or provided in the United States all applicable United
States Patent numbers and/or copyright notices requested by
USFRF. All Licensed Products used and/or provided in other
countries shall be marked in such a manner as to conform with
the patent, copyright and other laws and practice of the
country.
G. The failure of any party to assert a right hereunder or to
insist upon Compliance with any term or condition of this
Agreement shall not constitute a waiver of that right or
excuse a similar subsequent failure to perform any such term
or condition by the other party.
H. EXCEPT AS OTHERWISE EXPRESSLY SET FORTH IN THIS AGREEMENT, USF
AND USFRF MAKE NO REPRESENTATION AND EXTEND NO WARRANTIES OF
ANY KIND, EITHER EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED
TO WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR
PURPOSE, NON-INFRINGEMENT, AND VALIDITY OF USF PATENT RIGHTS.
I. It is understood and agreed that USF is a third party
beneficiary of this Agreement.
J. This Agreement shall not be effective until such time that
USFRF Has received the up-front fee of Seven Hundred Thousand
(700,000) Shares of CWT. If these shares are not received
within thirty days (30) from the execution of this Agreement,
then this Agreement shall become null and void and the parties
shall be released from its terms and obligations.
K. This Agreement, together with any amendments hereto, shall
inure to the benefits of CWT, its successors and/or assigns.
IN WITNESS WHEREOF, the parties have hereunto set their hands and seals and duly
executed this Agreement the day and year set forth below.
UNIVERSITY OF SOUTH FLORIDA
RESEARCH FOUNDATION, INC.
BY:____________________________ WITNESS:___________________________
Name
Title_____________________
Date______________________
Clean Water Technologies, Inc.
BY:_____________________________ WITNESS:___________________________
Name
Title______________________
Date_______________________
