Exhibit 10.24
TECHNOLOGY LICENSE AGREEMENT
THIS TECHNOLOGY LICENSE AGREEMENT (the "Agreement") is made of this the 31st day
of December, 2008
BETWEEN:
Xxxxxx International, whose registered office is at 0000 Xxxxxx Xxxxx, Xxxxxxx,
XX 00000 (the "Licensor");
AND
SUSTAINABLE POWER CORP., a company incorporated in Nevada, whose registered
office is at 0000 Xxx 000 X, Xxxxxxx, Xxxxx 00000 (the "Licensee");
WHEREAS:
A. The Licensor has developed and is the sole and exclusive owner of the
Intellectual Property Rights in the Technology (as these terms are defined
herein).
B. The Licensor is prepared to grant to the Licensee, an exclusive,
non-transferable and revocable right and license to the Technology within the
Territory, subject to the terms and conditions set forth herein.
NOW, THEREFORE, in consideration of the foregoing and the mutual covenants and
agreements contained herein, the receipt and sufficiency are acknowledged, the
parties hereby agree as follows:
1. DEFINITIONS
"CONFIDENTIAL INFORMATION" means all information (whether in print, oral,
magnetic, optical or electronic form) which is expressly marked as confidential
or which is manifestly of a confidential nature or which is confirmed in writing
to be confidential within thirty (30) days of its disclosure. It shall include,
but shall not be limited to, all information of the Licensor which relates to:
(a) the subject matter of this Agreement;
(b) the content of the Technology, including all directions, instructions,
manual, drawings and/or processes (whether in tangible form or otherwise)
provided to the Licensee arising out of connection with the use of the
Technology or any part thereof.
(c) the personnel, policies, product plans, designs, costs, finances, marketing
plans, research development or business strategies of the Licensor; and
(d) the terms upon which the Technology is being supplied pursuant to this
Agreement. Information shall not be considered confidential to the extent that
it is publicly disclosed through no fault of the receiving party hereto, either
before or after it becomes known to the receiving party.
"EFFECTIVE DATE" means the 31st day of December 2008
"IMPROVEMENTS" means any and all changes, modifications, additions, alterations,
enhancements, upgrades and development to the Technology, but shall not include
any part of the Technology, which remains
proprietary to the Licensor.
"INTELLECTUAL PROPERTY RIGHTS" mean any and all the vested, contingent or future
inventions, innovations, discoveries, design rights, inventions, innovations,
discoveries, design rights, model rights, patents, patent applications, trade
secrets, copyrights, codes, technical information and know-how, including but
not limited to any methods, techniques, processes, discoveries, inventions,
innovations, unpatentable processes, technical information, specifications,
recipes, formulae, designs, plans documentation, drawings, data and other
technical information, relating to the Technology and the Licensed Product,
registrations of and applications to register any of the aforesaid rights,
rights in the nature of any of the aforesaid rights in any country, rights in
the nature of unfair competition rights and rights to xxx for passing off
relating to the Technology and any other proprietary information belonging to
the Licensor, whether solely, jointly or otherwise.
"LICENSE" means the license granted to the Licensee under Clause 2.
"LICENSE FEE" means the fees payable by the Licensee to the Licensor as set out
in Clause 3.1.1.
"LICENSED PRODUCT" means any end product, in the form of liquid biofuel, carbon
ash, and/or biogas, which was derived using the Technology.
"PARTIES" means the Licensor and Licensee collectively and "Party" means either
the Licensor or the Licensee as the context dictates.
"REVENUE" means any and all revenues received and receivable by the Licensee,
including but not limited to transaction fees, subscription fees, and all other
revenue sources attributable to the use of the Technology under this Agreement.
For the purposes of this definition, the Revenue shall be computed prior to any
taxes, refund, discount, credit or other offset that the Licensee may deduct
from the Revenue.
"SALE PRICE" means the price quoted and charged by the Licensee in direct sales
to any party of any part of the Licensed Product, which price shall be
determined at a later date.
"TECHNOLOGY" means the "Xxxxxx Process", a state-of-the-art manufacturing
technology which uses a highly efficient process to break down vegetable
feedstock, as the same exists on the Effective Date and to be licensed to the
Licensee under this Agreement.
"TERM" means the license duration as stipulated in Clause 11.1 below.
"TERRITORY" means the United States of America.
1.2 In this Agreement, unless contrary intention appears:
(a) the clause headings are for ease of reference only and shall not be relevant
to interpretation;
(b) a reference to a clause number is a reference to its subclauses;
(c) words in the singular number include the plural and vice versa;
(d) words importing a gender include any other gender;
(e) a reference to a person includes individuals, bodies corporate and
unincorporated associations and partnerships;
(f) a reference to a clause is a reference to a clause of this Agreement;
(g) the recitals to this Agreement do not form part of the Agreement; and
(h) monetary references are references to the United States currency.
2. LICENSE
2.1 Subject to the Licensee's compliance with the terms and conditions of this
Agreement, the Licensor hereby grants to the Licensee an exclusive,
non-transferable, revocable for cause right and license, to use the Technology
solely for the purposes of deriving and sales or other uses of the Licensed
Product.
2.2 The Licensee agrees and acknowledges that this license transfers to the
Licensee neither title nor interest in the property or Intellectual Property
Rights to the Technology and Licensed Product. The Technology and Licensed
Product and the Intellectual Property Rights of whatever nature therein
(including any copies, alterations, modifications or amendments made thereto)
are and shall remain the sole property of the Licensor and the Licensor reserves
the right to grant licenses to use the Technology and/or Licensed Product to
third parties.
2.3 All rights not expressly granted herein to the Licensee are reserved to the
Licensor.
3. FEES
3.1. In consideration of the grant of the license herein, the Licensee agrees to
pay the Licensor a non-refundable upfront license fee consisting of One Hundred
Fifty Million (150,000,000) restricted shares of the Licensee's common stock.
100,000,000 of such Shares were issued and delivered to Licensee on or about
April 19, 2007 in connection with a previous license agreement. 50,000,000 of
such Shares shall be issued and delivered immediately upon execution of this
Agreement.
3.2. No royalty payments shall be due and payable to any party hereunder.
3.3 All Licensed Products derived from the Technology shall be the sole
possession of the Licensee for the Term of this Agreement. Any and all revenues
generated from the sale of such Licensed Products shall belong to the Licensee.
4. LICENSOR'S OBLIGATIONS
4.1. Upon the execution of this Agreement, the Licensee hereby confirms that the
Licensor has effected full delivery of the Technology and nothing in this
Agreement shall be construed as requiring the Licensor to prepare or deliver to
the Licensee the Technology or any further information, documents or data
relating thereto or engage in any technical studies or research or development
or any other obligation with regards to the use and operation of any part of the
Technology for and on behalf of the Licensee.
5. LICENSEE'S OBLIGATIONS
5.1. The Licensee warrant(s) and undertake(s) that during the Term or the
continuance of the license granted under this Agreement:
5.1.1. the Technology shall be used solely by the Licensee and no other third
party and only for the purposes contemplated by Clause 2 of this Agreement;
5.1.2. the Licensee shall not take any action which may impair the Licensor's
ownership and exclusive rights to the Intellectual Property Rights;
5.1.3. the Licensee shall not provide, disclose, divulge or make available or
permit use of the Technology by any third party without the Licensor's prior
written consent (save for the Licensee's employees and then only such employees
with the need to know);
5.1.5. as to each employee that is provided access to the Technology and/ or the
Licensed Product, the Licensee shall secure the employee's execution of a
confidentiality agreement which provides that the employee may access and/or use
the Technology and/ or derive the Licensed Product only under terms and
conditions of the confidentiality agreement, which terms shall be determined by
the Licensee with the approval of the Licensor, and which shall include, without
limitation, express acknowledgement by the employee of the Licensor's property
and rights in the Technology and the Licensed Product and express provisions
prohibiting the employee to:
5.1.5.1. sub-license, sell, lease, transfer, distribute the Technology or the
Licensed Product in any manner whatsoever to any third party;
5.1.5.2. make, manufacture, reproduce or replicate the Technology or the
Licensed Product in any manner whatsoever to any third party;
5.1.5.3. make modifications, additions, alterations, enhancements, improvements,
upgrades or new versions of the Technology or Licensed Product in any manner
whatsoever to any third party;
5.1.6. the Licensee shall effect and maintain adequate security measures
acceptable to the Licensor to safeguard the Technology from access and misuse by
any unauthorized persons.
5.2. The Licensee shall be responsible for obtaining all necessary governmental
approvals for the development and production of any Licensed Product, at the
Licensee's expense, including, where applicable and without limitation, any
safety or feasibility studies. The Licensee shall have the sole responsibility
for any warning labels, packaging and instructions as to the use of the Licensed
Product and for the quality control for any Licensed Product.
5.3. To the extent required by applicable laws, if at all, the Licensee agrees
that the Licensed Product will be manufactured and/ or provided in such
countries, subject to such consents as may be required or obtained, if at all,
from the relevant regulatory and/ or administration and/ or governmental
authorities.
5.4. The Licensee shall have the right to use the logo or trademarks relative to
the Technology whether obtained by the Licensor or the Licensee or any variation
thereof, including without limitation the right to utilize the trademark
"Vertroleum(R)".
5.5. The Licensee shall maintain complete and accurate records of:
5.5.1. all transactions relating to the Technology and the Licensed Product;
5.5.2. the Revenue received by the Licensee,
which records the Licensee shall produce to the Licensor on request from time to
time.
5.6. At the end of six (6) months from the Effective Date and thereafter on a
quarterly basis, the Licensee shall submit or caused to be submitted to the
Licensor accurate and complete sales reports indicating the actual sales volume
for the relevant half-year and individual sale prices. All sales reports shall
be accompanied by copies of sale transaction documents, including all invoices
to end-users of the Licensed Product.
6. WARRANTY AND LIABILITY
6.1. The Licensor represents and warrants that it has full right and power to
enter into this Agreement.
6.2. The Technology is provided on an "As-Is" basis without any warranty of any
kind, express or implied. The Licensor does not make or give any representation,
warranty or undertakings to the following effect:
6.2.1. that the functions contained in the Technology will meet the Licensee's
specific requirements or that the functions contained in the Technology or the
operation of the Technology will be uninterrupted or error free or that any
defects will be corrected;
6.2.2. that the Technology will be effective or fit for any purpose or that it
is supplied by the Licensor free from any defect or error; or
6.2.3. that the use or sale of the Licensed Product or the use of the Technology
will not infringe any of the copyright or other intellectual property rights or
any other rights belonging to or alleged to belong to any third party.
6.3. The express terms of this Agreement are in lieu of all warranties,
conditions, terms, undertakings and obligations implied by statute, common law,
custom, trade usage, course of dealing or otherwise, all of which are hereby
excluded to the fullest extent permitted by law.
6.4. The Licensor shall not be liable to the Licensee or any third party for any
special, indirect, incidental, compensatory, punitive, consequential, exemplary
or any other damages whatsoever (including, without limitation, damages for loss
of profits or revenues, business interruption, loss of data, loss of business
information, other pecuniary loss and costs of legal expense) in connection with
this Agreement and, without limitation, the use or performance of the
Technology.
6.5. The total and cumulative liability of the Licensor to the Licensee for any
claims or damages under this Agreement, whether arising out of contract, tort or
any other cause of action, shall be limited to direct damages and shall in no
event exceed the sums paid by the Licensee to the Licensor under this Agreement
in the last twelve (12) months prior to the event giving rise to the claim.
7. INTELLECTUAL PROPERTY RIGHTS
7.1. The Licensee shall have no right to apply for registration of any of the
Intellectual Property Rights anywhere in the world and the Licensee shall at no
time challenge the validity and the Licensor's ownership of the same.
7.2. Interest and tide to all Improvements carried out by the Licensee (the
"Licensee's Improvements"), if any, shall be the subject-matter of intellectual
property and shall vest solely and exclusively in the Licensor.
7.3. Licensee shall report in writing to the Licensor the details of any and all
Improvements carried out by the Licensee and shall produce to the Licensor such
written reports one month after the Effective Date and thereafter on the first
day of every month thereafter, without demand. The Licensor shall be entitled
at any time to be availed of further details of any such report furnished,
including any record or document in support thereof.
7.4. Notwithstanding anything to the contrary, nothing in this Agreement shall
be construed as according to the Licensee any right whatsoever to customize,
adapt alter or make any changes to the Technology.
7.5. For the avoidance of doubt, the Licensee shall not be entilted to, and the
Licensor shall not be obliged to provide, any Improvements, or any upgrade,
development or improvement to the Technology and/ or Licensed Product.
8. CONFIDENTIALITY
8.1. The Parties agree that during the Term of this Agreement and for a period
of five (5) years after this Agreement expires or is terminated (as the case may
be), a party receiving Confidential Information of the other party will
continue:
8.1.1. to maintain in confidence such Confidential Information to the same,
extent such party maintains its own proprietary and confidential information;
8.1.2. not to disclose such Confidential Information to any third party without
prior written consent of the other party;
8.1.3. not to use such Confidential Information for any purpose except those
permitted by this Agreement; and
8.1.4 not to directly or indirectly own or operate, advise or consult, or engage
or participate in, any business that is producing or selling any product or
products similar to or competitive with the Technology
8.2. Provided that where the Licensor is the party receiving Confidential
Information, the Licensor may disclose all or part of that Confidential
Information to its affiliates and associates on the basis that such affiliates
and associates shall also observe and be bound by the provisions of this
Agreement. For the purpose of this Agreement, the affiliates and associates of
the Licensor shall include the Licensor's related corporations, any funding
agency, its employees and professional and legal advisors.
8.3. Notwithstanding any other provision in this Agreement and for the avoidance
of doubt, the Licensor shall be entitled to disclose to any third parties the
fact of this Agreement and the Licensor's ownership of the Intellectual Property
Rights and such disclosure may be for any purpose whatsoever.
9. INDEMNITY
9.1. The Licensee shall indemnify and hold the Licensor harmless from and
against any and all costs, losses, liabilities and expenses (including legal
costs on a full indemnity basis) in connection with or arising out of:
9.1.1. any breach of the Licensee's obligations in this Agreement, including
without limitation, any breach of warranties herein, or any third party claim,
action or allegation brought about against the Licensor related to the
Licensee's use or misuse of the Technology, or the Licensed Product or
Documentation or any Intellectual Property Rights, or any dispute between the
Licensee and any third party; or
9.1.2. any act or omission or default by the Licensee or its agents, employees
and contractors pursuant to this Agreement.
9.2. The Parties acknowledge that the Intellectual Property Rights, Technology
and the Licensed Product or Documentation are unique and valuable assets of the
Licensor and that any unauthorized use, alteration, modification, reproduction,
disclosure or transfer of such assets will result in irreparable injury to the
Licensor for which monetary damages alone will not be an adequate remedy.
Therefore, in addition to any other remedies available to the Licensor under
this Agreement or otherwise, the Parties agree that any unauthorized use,
alteration, modification, reproduction; disclosure or transfer of the
Intellectual Property Rights, Technology, or the Licensed Product will entitle
the Licensor to any and all available equitable remedies against the Licensee,
including injunctive relief.
10. INFRINGEMENT ACTIONS
10.1. If any claim is made or threatened against the Licensee by any third party
that the exercise by the Licensee of any rights granted under this Agreement by
the Licensor infringes any intellectual property rights of any other person, the
Licensee shall fully notify the Licensor as soon as it becomes aware of the
claim or threatened claim.
10.2. The Licensor shall be given full control of any proceedings or
negotiations in connection with the claim and shall be exclusively entitled to
appoint and instruct legal advisors and counsel in connection with any such
proceedings or negotiations and to determine the forum for any such proceedings.
10.3. The Licensee shall, at its own costs, give the Licensor all reasonable
assistance for the purpose of any such proceedings or negotiations.
10.4. The Licensee shall not pay or accept any such claim, or compromise any
such proceedings without the written consent of the Licensor.
10.5. The Licensor shall be entitled to require the Licensee to take such steps
as the Licensor may reasonable require to mitigate or reduce any loss or damage.
10.6. The Licensee shall permit any action to be brought in its name if required
by law.
10.7. The Licensor shall have no liability to the Licensee in respect of any
claim for infringement of any intellectual property rights which is based on the
use of or any other dealing in any of the Intellectual Property Rights otherwise
than in accordance with this Agreement.
11. TERM AND TERMINATION
11.1. This Agreement shall last for a period of fifty (50) years from the
Effective Date.
11.2. This Agreement may be terminated forthwith by either party if the other
commits any breach of any term of this Agreement and which (in the case of a
breach capable of being remedied) is not remedied within fourteen (14) days of a
written request to remedy the same.
11.3. Any termination of this Agreement howsoever occasioned shall be without
prejudice to any other rights or remedies a party may be entitled to hereunder
or at law and shall not affect any accrued rights or liabilities of any party
nor the coming into or continuance in force of any provision hereof which is
expressly or by implication intended to come into or continue in force on or
after such termination.
11.4. Upon expiration or any termination of this Agreement (howsoever
occasioned):
11.4.1. the Licensee's rights to use the Technology and Licensed Product and all
other rights as set forth in this Agreement shall cease with immediate effect;
and
11.4.2. the Licensee shall within fourteen (14) days deliver up, at its own cost
and expense, to the Licensor the Technology and the Licensed Product; and
11.4.3. the Licensee shall not use, have used, make, have made, sell, have sold
and lease, sell or otherwise apply any technology which are similar to the
Technology except through a license of the Technology to be granted by the
Licensor on terms and conditions to be agreed in writing between the Licensor
and Licensee.
12. GENERAL PROVISIONS
12.1. The relationship between the Licensor and Licensee is that of independent
contractors. The Licensor and Licensee are not joint venturers, partners,
principal and agent, master and servant, employer or employee, and have no other
relationship other than independent contracting parties. The Licensor and
Licensee shall have no power to bind or obligate each other in any manner, other
than as is expressly set forth in this Agreement.
12.2. Neither this Agreement nor any rights granted hereunder may be assigned or
transferred by the Licensee without the prior written consent of the Licensor.
12.3. This Agreement sets forth the entire agreement and understanding between
the parties as to the subject matter hereof. There shall be no amendments or
modifications to this Agreement, except by a written document which is signed by
all parties.
12.4. The headings for each article and section in this Agreement have been
inserted for convenience of reference only and are not intended to limit or
expand on the meaning of the language contained in the particular article or
section.
12.5. Should anyone or more of the provisions of this Agreement be held invalid
or unenforceable by a court of competent jurisdiction, it shall be considered
severed from this Agreement and shall not serve to invalidate the remaining
provisions thereof. The Parties shall make a good faith effort to replace any
invalid or unenforceable provision with a valid and enforceable one such that
the objectives contemplated by them when entering this Agreement may be
realized.
12.6. This Agreement shall be construed and enforced in accordance with the laws
of Texas.
12.7. Except as provided in section 9.2 of this Agreement, any and all disputes
arising out of or in connection with this Agreement including any question
regarding its existence, validity or termination, shall be referred to
arbitration in the State of Texas. The arbitrator's decision shall be final and
binding upon the parties and shall provide the sole and exclusive remedies of
the parties. Any judgment upon the award so rendered may be entered in any
court having jurisdiction or application may be made to such court for a
judicial acceptance of the award or orders of enforcement. The commencement of
any arbitration proceedings under this Clause shall in no way affect the
continual performance of the obligations relates to the subject matter of such
proceedings.
12.8. Any delay in enforcing a party's rights under this Agreement or any waiver
as to a particular default or other matter shall not constitute a waiver of such
party's rights to the future enforcement of its rights under this Agreement,
excepting only as to an express written and signed waiver as to a particular
matter for a particular period of time.
12.9. Any notices required by this Agreement shall be in writing, shall
specifically refer to this Agreement and shall be sent by registered or
certified mail, return receipt requested, postage prepaid, or by overnight
courier and shall be forwarded to the respective addresses set forth below
unless subsequently changed by written notice to the other Parties.
For the Licensor:
0000 Xxxxxx Xxxxx
Xxxxxxx, XX 00000
Attn: Xxxx X. Xxxxxx
For the Licensee:
Sustainable Power Corp.
0000 Xxx 000 X
Xxxxxxx, XX 00000
Attn: M. Xxxxxxx Xxxxxx, President and CEO
Phone: 000-000-0000
Copy to:
Xxxxxx Law Group
0000 Xxxx Xxxxxxxxx Xx.
Xxxxxxx, XX 00000
Attn: M. Xxxxxxx Xxxxxx
Phone: 000-000-0000
Notice shall be deemed delivered upon the earlier of (i) when received, (ii)
three (3) days after deposit into the mail or (ill) the day immediately
following delivery to overnight courier (except Sunday and holidays).
IN WITNESS WHEREOF THIS AGREEMENT HAS BEEN DATED AS OF THE DAY AND YEAR FIRST
SET FORTH ABOVE.
For and on behalf of the Licensor:
XXXXXX INTERNATIONAL
By: \s\ Xxxx X. Xxxxxx
------------------
Xxxx X. Xxxxxx
For and on behalf of the Licensee:
SUSTAINABLE POWER CORP.
By: \s\ M. Xxxxxxx Xxxxxx
---------------------
M. Xxxxxxx Xxxxxx, President and Chief Executive Officer
