EXCLUSIVE BROWNFIELD LICENSE AGREEMENT
EXCLUSIVE
XXXXXXXXXX LICENSE AGREEMENT
THIS
EXCLUSIVE LICENSE AGREEMENT dated as of October 27, 2008 (this “Agreement”),
by and
between SOLUCORP INDUSTRIES LTD., and 1 Lane Technologies Corp. (1
Lane)
a
Delaware Corporation.
WHEREAS,
Solucorp is the owner of the MBS Process (as hereinafter defined), a patented
hazardous heavy metal remediation process;
WHEREAS,
1
Lane wishes
to purchase
a exclusive worldwide license, with the exclusion of the following territories,
North America, Central America, South America, Russia and China, of the MBS
Process for remediating Xxxxxxxxxx and Redevelopment Sites (as hereinafter
defined) and may or may not, in conjunction with associate developers, States,
Cities or Towns develop and operate such Xxxxxxxxxx and Redevelopment Sites
for
industrial, commercial, residential, recreational or other productive
uses;
WHEREAS,
1
Lane
desires
to have Solucorp provide expertise for all remediation work, including
remediation of heavy metal pollution in soils and other untreated wastes, in
the
Xxxxxxxxxx and Redevelopment Sites by the use of the MBS Process. Solucorp
desires to do so; and
WHEREAS,
Solucorp desires to grant 1
Lane
an
exclusive worldwide license, with the exception of the following territories,
North America, Central America, South America, Russia and China, to use the
MBS
Process claimed in the MBS Patents for Xxxxxxxxxx and Redevelopment Sites and
conditions hereinafter set forth;
WHEREAS,
Solucorp desires to grant 1
Lane
a
non-exclusive license for the use of the MBS Process for the remediation of
“Contaminated Sites” and “Superfund like Sites” as defined below. In an effort
to allow 1
Lane
to
penetrate the market, Solucorp will not sub-license the MBS technology within
1
Lane’s
territory for a period of 18 months. Should either 1
Lane
not have
secured at least 5 projects or not adhered to commitments as stated in paragraph
3.2 (b) during the 18-month period, Solucorp has the right to sub-license the
MBS technology to other entities.
NOW,
THEREFORE, in consideration of the mutual promises and undertakings herein
set
forth, and other good and valuable consideration, the receipt and sufficiency
of
which are hereby acknowledged, Solucorp and 1
Lane
hereby
agree as follows:
1.
DEFINITIONS
For
all purposes of this Agreement, the following terms shall have the meanings
specified below:
1
“Contaminated
Site”:
a site
contaminated with hazardous heavy metals and may also be contaminated with
low-level radioactive waste.
“Xxxxxxxxxx”:
any
real estate site, which may or may not be, designated by the local or other
governmental authorities as a “Xxxxxxxxxx Site” otherwise suitable for
commercial, residential or other for-profit productive use but which, due to
the
presence or suspected presence at such site of heavy metal contaminants in
the
soil, is currently either not being utilized at all, or is being underutilized,
for commercial or other productive use.
“Superfund
like Site”:
any
site determined by the governing regulatory Agency
to
be contaminated o such a degree that it constitutes a health hazard to
the
local
community and environment.
“Redevelopment
Site”:
any
project involving the remediation of a Contaminated
Site and the development and operation of such Contaminated Site
or
industrial, commercial, residential, recreational or other productive use which
may be owned by 1Lane.
“MBS
Patents”:
(i)
the U.S. and foreign patents listed in Exhibit
A
hereto;
(ii) any patents which shall issue on any of the patent listed on Exhibit
A
hereto
or on any improvements thereof, and any reissues, reexamination, renewals or
extensions thereof; (iii) any divisional, continuation or continuation-in-part
patent which shall be based on the patents described in Exhibit
A;
and
(iv) patents and patent corresponding to each of the above-described patents
which shall subsequently issue are issued, filed, or to be filed in any foreign
country, any patents which shall subsequently issue thereof, and any renewals,
divisions, reissues, continuations or extensions thereof. “U.S.
Patent Office”:
the
United States Patent and Trademark Office.
“MBS
Process”:
Solucorp’s long term heavy metal soil remediation process, for which
patent have been filed as listed Exhibit
A
hereto,
to stabilize by
the
addition of proprietary non-hazardous reagents to the contaminated materials
under increased moisture conditions in order to convert such contaminated
materials into an insoluble, stable, non-hazardous metal sulfide, together
with any improvement, enhancement or expansion of such long term heavy
metal soil remediation process.
2
2. RIGHTS
GRANTED BY SOLUCORP TO 1 Lane
| 2.1 |
Solucorp
hereby grants 1
Lane
and 1
Lane
hereby accepts from Solucorp, a worldwide exclusive license except
for the
following territories, Xxxxx Xxxxxxx, Xxxxxxx Xxxxxxx, Xxxxx Xxxxxxx,
Xxxxx license under the MBS Patents to use the MBS Process for the
purpose
of remediating Xxxxxxxxxx and Redevelopment Sites and a non-exclusive
license for other Contaminated and Superfund like Sites as previously
defined in this agreement.
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3. COMPENSATION
FOR RIGHTS GRANTED
| 3.1. |
Solucorp
shall receive the following compensation from 1
Lane
for the rights granted by Solucorp
hereunder:
|
| 3.2 |
A
payment of $4,000,000 U.S. at closing to be paid in the form of common
shares of 1
Lane,
which will be 8,890,000 shares of 1
Lane
which will be issued within 10 days of the signing of this agreement
and
convertible into free trading common shares of the company’s stock.
Conversion will take place at six months from date of this agreement.
1
Lane
will also pay Solucorp the sum of $1,000,000 within 12 months of
this
signing of this agreement as
follows:
|
| · |
$100,000.00
within 15 days of the signing of this
agreement.
|
| · |
$900,000.00
within 12 months of the signing of this
agreement.
|
| (a) |
Should
1
Lane
purchase and sell or purchase and develop the Xxxxxxxxxx or Redevelopment
property after remediation, Solucorp will receive a 1% royalty of
the sale
price. Should 1
Lane,
it’s officers partners or affiliates participate in ownership in any
way
with the development of the property after the sale of the property
Solucorp must receive it’s 1% royalty of the total development
cost.
|
| (b) |
Solucorp
will provide all in-house technical expertise as required for free.
1
Lane
will pay for all out-of-pocket expenses associated with site visits
and
other travel such as airfare, hotels, meals and ground
transportation.
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4.
SUBLICENSING
4.1
During any period when the license granted to 1
Lane
pursuant
to Section
2.1
shall be
exclusive, 1
Lane
shall
have the right to sublicense, on a site-by-site basis or geographical basis,
the
MBS Process to any third party upon commercially reasonable terms and conditions
negotiated by, and satisfactory to,
1 Lane
in its
sole discretion.
3
5.
REPRESENTATIONS AND WARRANTIES
| 5.1 |
Solucorp
represents and warrants that:
|
| (a) |
It
is the sole owner of the entire right, title, and interest in and
to the
MBS Patents and the MBS Process, that it has the full and unrestricted
right and power to grant the licenses granted herein and that it
knows of
no prior art or other information which would invalidate the MBS
Patents;
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| (b) |
The
execution, delivery and performance of this Agreement has been duly
authorized by all necessary corporate action on the part of Solucorp
(no
consent of its shareholders or any trustee or holder of any debt
or other
obligation of Solucorp being required); such execution, delivery
and
performance by Solucorp will not violate any indenture, agreement,
contract, commitment, judgment, decree, order or legal restriction
binding
upon it or to which it is a party; and this Agreement has been duly
executed and delivered by Solucorp and constitutes the legal, valid
and
binding obligation of Solucorp;
|
| (c) |
It
has filed the patent listed in Exhibit
A
to
this Agreement with the governmental authorities specified on such
Exhibit
A;
|
| (d) |
Solucorp
has not licensed the MBS Process to any other party, and except in
connection with remediation work being performed by or to be performed
by
Solucorp in connection with contracted or negotiated remediation
projects
involving Solucorp existing on the date hereof, Solucorp has not
agreed
that any other person may use the MBS Process;
|
| (e) |
To
the best knowledge of Solucorp, the grant to 1
Lane
of
the licenses granted herein does not infringe any rights of any third
party; and
|
| (f) |
There
are no claims or actions asserting infringement with respect to the
MBS
Patents or the MBS Process pending or, to the best knowledge of Solucorp,
threatened against Solucorp in the territories mentioned in the
agreement.
|
| (g) |
Solucorp
will (a) take all actions necessary to prosecute the patent listed
in
Exhibit
A
to
issue and (b) diligently seek patent protection under U.S. and foreign
laws for the patenting of the MBS
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| (h) |
If
Solucorp fails to deliver or manufacture the MBS materials needed
for the
MBS process, 1
Lane
will be granted with the right for the manufacture of these materials
as
long as 1
Lane
orders chemicals from Solucorp in a timely manner and meets the accepted
payment terms. Should 1
Lane
manufacture the MBS chemicals, 1
Lane
must pay Solucorp a Royalty of 25% of costs in recognition of Solucorp’s
ownership and development of the MBS patented process and for Solucorp’s
continued need for know-how relevant to remediation projects. In
any event
1
Lane
will not sell the MBS patented chemicals or chemical process to any
third
party without Solucorp’s written approval. Such an action would be in
violation of this agreement and of Solucorp’s patent rights. Solucorp will
have the right to audit all cost records of 1
Lane on
a Quarterly basis should 1
Lane
manufacture chemicals for the MBS process as may be allowed in this
paragraph.
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4
| (i) |
Except
to the extent prohibited by law, either party may, at its option
and
without notice, terminate this Agreement, effective immediately,
in the
event the other party hereto (i) admits in writing its inability
to pay
its debts (ii) is adjudicated by a court of competent jurisdiction
as
being insolvent (iii) has a decree entered against it by a court
of
competent jurisdiction appointing a receiver, liquidator, trustee
or
assignee in insolvency covering all or substantially all of such
party’s
property ( which appointment is not vacated within sixty (60) days
of the
entry of the order of appointment) or providing for such liquidation
of
such party’s property or business
affairs.
|
| (j) |
Should
Solucorp sell, assign or merge with another company, the rights under
this
contract shall survive and be transferred to new owners. In the event
of a
bankruptcy or other liquidation of Solucorp, 1
Lane
will maintain its rights to the MBS process pursuant to this
agreement.
|
| 5.2 |
1
Lane
represents and warrants that;
|
| (a) |
It
has the full and unrestricted right to enter into and fully perform
this
Agreement;
|
| (b) |
The
execution and delivery of this Agreement and the performance hereof
by it
will not violate and indenture, agreement, contract, commitment,
judgment,
decree, order or legal restriction binding upon it or which it is
a party;
and
|
| (c) |
The
Agreement has been duly authorized, executed and delivered by 1
Lane
and constitutes the legal, valid and binding obligation of 1
Lane.
|
| (d) |
1
Lane
also agrees to perform the following
tasks:
|
| · |
Hire
(or identify for hiring) a core staff, consultants and key personnel
experienced in land use, zoning, real estate development and financial
analysis and management;
|
| · |
Retain
necessary consultants (environmental, land use,
etc.);
|
5
| · |
Identify,
when known, with Solucorp, a selection of Xxxxxxxxxx locations that
show a
high degree of potential for successful
development;
|
| · |
Develop,
with Solucorp, detailed feasibility studies with respect to 2-4 Xxxxxxxxxx
locations selected for immediate development;
and
|
| · |
Raise
capital sufficient to promote the marketing and sales of the MBS
Xxxxxxxxxx Technology;
|
| · |
Provide
Solucorp with written quarterly sales, marketing and performance
reports.
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6.
ASSISTANCE
Solucorp
will provide 1
Lane
with
such technical assistance and other materials and information related to the
MBS
Process as 1
Lane,
in
faith, deems of significant importance to the promotion and application of
the
MBS Process.
7. INFRINGEMENT
|
7.1
|
Solucorp
agrees to enforce the MBS Patents (after issuance thereof) against
infringement by third parties upon notification by 1
Lane
to
Solucorp with the request that Solucorp proceed to take such steps
to end
such infringement. If Solucorp does not institute an infringement
suit
within 90 days after 1
Lane
written request that it do so, or if Solucorp institutes such action
but
thereafter fails to press such action vigorously, 1
Lane
may institutes and prosecute such lawsuit in the name of Solucorp
and add
Solucorp to such action as a party plaintiff, and Solucorp hereby
consents
thereto.
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|
7.2
|
Any
action for infringement of the MBS Patents (whether by Solucorp or
1
Lane as
it relates to this contract) shall be prosecuted solely at the cost
and
expense of Solucorp. Any sums recovered in any such action shall
be
divided proportionately between Solucorp and 1
Lane
after deduction of all reasonable expenses and attorney’s fees, on the
basis of their respective actual damages suffered as a result of
such
infringement.
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|
7.3
|
Each
party hereto agrees to inform the other party hereto of the possible
infringement by a third party of the MBS Patents and to fully cooperate
with the other party hereto in the prosecution of any action for
infringement of the MBS Patents.
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|
7.4
|
Without
1
Lane
prior written consent, Solucorp may not agree to any compromise or
settlement of any third party claim relating to the MBS Process,
which
could reasonably be expected to have an adverse effect on the rights
granted by Solucorp to 1
Lane
hereunder. This consent may not be unreasonably
withheld.
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6
8. INDEMNITY
| 8.1 |
Solucorp
agrees to defend, indemnify and hold 1
Lane
its members, officers, directors, agents, sublicenses and employees
harmless from any and all claims, demands, causes of action, costs,
expenses and losses (including reasonable attorney’s fees and costs)
resulting from (i) any action brought by a third party claiming that
the
exercise by 1
Lane
of
its rights under the license granted to it pursuant to Section
2
infringed the rights of such third party or (ii) any representation
or
warranty of Solucorp contained in Section
5.1 being
false or incorrect or breached in material respect. The provisions
of this
Section
10.1
shall survive the expiration or termination of this Agreement for
any
reason and shall not be affected thereby.
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|
8.2
|
1
Lane
agrees to defend, indemnify and hold Solucorp, its shareholders,
officers,
directors, agents, sublicenses and employees harmless from any and
all
claims, demands, causes of action, costs, expenses and losses (including
reasonable attorneys’ fees and costs) resulting from any representation or
warranty of 1
Lane
contained in Section
5.2
being false or incorrect or breached in any material respect. The
provisions of this Section 10.1 shall survive the expiration or
termination of this Agreement for any reason and shall not be affected
thereby.
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9. TERM
|
9.1
|
The
term of this Agreement shall be 15 years or, from the date of issuance
of
any of the patents listed in Exhibit A attached as granted to Solucorp
by
the U.S. Patent Office with respect to the MBS Process, until the
expiration of the last of such patents, whichever is
longer.
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10. CONFIDENTIALITY
| 10.1 |
Each
party hereto shall maintain as strictly confidential the terms and
conditions of this Agreement between 1
Lane and
Solucorp, and shall not disclose the same to any other person,
provided, however,
that (i) any party may disclose any such terms and conditions (a)
to such
parties officers, employees, counsel, accountants, auditors and
representatives who, in any such case, have a need to know such
information in connection with the performance of their services
for such
party; (b) to, or as required by, any governmental body or regulatory
authority pursuant to such party’s good faith interpretation of any law,
rule or regulation to which such party may subject, including, without
limitation, or any other legal proceeding between the parties; and
(c)
1
Lane
may disclose any such terms and conditions to potential investors
in
1
Lane
and its investment bankers and advisors on a confidential basis;
and (ii)
the obligations of the parties hereunder with respect to confidentiality
shall not apply to any information that is or becomes publicly known
or
available through no fault of the disclosing
party.
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7
| 10.2 |
I
Lane acknowledges
that the MBS Patents and the MBS Process constitutes a
valuable asset and trade secret of Solucorp and further acknowledges
that
Solucorp has an exclusive proprietary right and interest in and to
the MBS
Patents and the MBS Process and that any information, corrections,
programs and work product conceived, created or developed alone or
with
1
Lane
and others relating in any way to the MBS Patents and the MBS Process
is
confidential trade secret information and may not be made available
to nor
disclosed to any third party without prior consent of Solucorp.Upon
the
expiration of the term of this Agreement, 1
Lane shall
promptly return to Solucorp all proprietary and confidential information
in this possession relating to the MBS Patents and the MBS Process
delivered or disclosed to 1
Lane
during the performance of this
Agreement.
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11. NOTICES
| 11.1 |
Notices
and other communications given hereunder shall be in writing and
shall
be deemed to have been adequately given and delivered when received
by the
party to which such notice is being given after the same shall have
been
deposited in the mail, registered or certified, with postage prepaid,
or
deposited with any telegraphic or cable agency, with charges prepaid
for
immediate transmission, or delivered by express courier, or transmitted
by
facsimile and receipt of such transmission appropriately confirmed,
and
addressed as follows:
|
|
If
to Solucorp to:
|
Solucorp
Industries, Ltd.
|
|
000
Xxxx Xxxxx Xxxx
|
|
|
Xxxx
Xxxxx, Xxx Xxxx 00000
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|
|
Attn:
Xx. Xxxxx Xxxx
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|
If
to 1 Lane, to:
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Xxxxxx
Xxxxxx St. Hod Hasharon, Isreal
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|
Attn:
Xxxxxx Xxxxx
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8
Or
to
such other address as the party to receive such notice may from time to time
designate in writing to the other party.
12. MISCELLANEOUS
| 12.1 |
This
Agreement shall inure to the benefit of and shall be binding upon
Each
of the party’s hereto and there respective successors and assigns. Neither
party hereto may assign this Agreement or its rights hereunder to
any
other party without the prior written consent of the other party
hereto.
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| 12.2 |
THIS
AGREEMENT SHALL BE GOVERNED BY AND CONSTRUES IN ACCORDANCE WITH THE
LAWS
OF THE STATE OF NEW YORK. ANY CASE, CONTROVERSY, SUIT, ACTION OR
PROCEEDING ARISING OUT OF OR IN CONNECTION WITH OR RELATED TO THIS
AGREEMENT SHALL BE BROUGHT IN ANY FEDERAL OR STATE COURT LOCATED
IN THE
COUNTRY AND STATE OF NEW YORK AND EACH OF GLOBAL AND SOLUCORP IRREVOCABLY
SUBMITS TO THE JURISDICTION OF ANY SUCH COURT INANY SUCH SUIT, ACTION
OR
PROCEEDING.
|
| 12.3 |
This
Agreement embodies the entire agreement and understanding between
1
Lane and
Solucorp relating to the subject matter hereof and supersedes all
prior
agreements and understandings relating to the subject matter
hereof.
|
| 12.4 |
This
Agreement may be executed in any number of counterparts, each of
which
shall be an original, but all of which together shall constitute
one
Instrument.
|
| 12.5 |
The
division of this Agreement into Sections and the insertion of headings
are
for convenience of reference only and shall not affect the construction
or
interpretation of this
Agreement.
|
| 12.6 |
This
Agreement shall not in any manner be amended, supplemented or modified
except by a written instrument executed on behalf of the parties
hereto
by their duly authorized
representatives.
|
| 12.7 |
Any
provision of this Agreement that is prohibited or unenforceable in
any
jurisdiction
shall, as to such jurisdiction, ineffective to the extent of such
prohibition
or unenforceability in any jurisdiction shall (to the full extent
permitted by law) not invalidate or render unenforceable such provision
in
any other jurisdiction.
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9
| 12.8 |
Each
covenant contained herein shall be construed (absent express provision
to the contrary) as being independent of each other covenant herein,
so that compliance with any one covenant shall not (absent such an
express
contrary provision) be deemed to excuse compliance with any other
covenant. Where any provision herein refers to action to betaken
by any
person, or which such person is prohibited from taking, such provision
shall be applicable whether such action is taken directly by such
person.
|
IN
WITNESS WHEREOF,
the
parties hereto have caused this Agreement to be executed by their duly
authorized representatives.
|
SOLUCORP
INDUSTRIES LTD.
|
|
|
By:
/s/ Xxxxx Xxxx
Name:
Xxxxx Xxxx
Title:
President/Director
|
|
|
By:
/s/ Xxxxxx Xxxxx
Name:
Xxxxxx Xxxxx
Title:
President
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