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Exhibit 10.12
EXCLUSIVE LICENSE AGREEMENT
AGREEMENT made as of the 15th day of December, 1999, By and between Xxxxx
Technology Licensing, Inc, a Florida Corporation headquartered at 0000 Xxxxx
Xxxxx Xx xxxxx 000 Xxxxx, Xxxxxxx 00000 ("TTL", the "Company" or "Licensee") and
Xxxx Xxxxxx (Inventor) and Tomorrows Innovative Technology Today headquartered
at 0000 XX 000 Xxx, Xx Xxxxxxxxxx XX. 00000 (collectively "TTL" or "Licensor").
WHEREAS Licensee is a technology development company which for the past
twelve months has been developing a pyrolytic carbon extraction ("PCE")
technology for which there are now two patents pending and that the inventor of
such devices has suffered a nervous breakdown making his continued involvement
impossible. That the Licensee successfully demonstrated the PCE technology to
include a 5 to 10-ton per day prototype PCE device and that the nervous
breakdown of the inventor has mandated the Company complete the development of
the PCE technology separate and apart from such patents pending, and;
WHEREAS, Licensor is the possessor of rights and information related to
PCE and other pyrolosys and carbon processing devices and other processes or
systems, including, but not limited to, patent applications, inventions,
inventive concepts, improvements, modifications, trade secrets, and/or know-how
related to pyrolosys devices, processes or systems (all of the aforesaid being
hereinafter jointly referred to as the "PCE and/or GWE Technology"), and
WHEREAS, Licensee desires to acquire all of Licensor's rights in the PCE
and/or GWE Technology through the granting of an exclusive world-wide license as
hereinafter described, the parties hereto intent to be legally bound and it is
therefore agreed:
1. Exclusive License.
(a) The Licensor hereby grants to the Licensee the exclusive world-wide
right and license to use, commercialize, and exploit the PCE and/or
GWE Technology, including, but not limited to: (i) all rights which
Licensor has to use, commercialize or exploit PCE and/or GWE
devices, processes or systems; (ii) all rights which Licensor has to
use, commercialize or exploit patents pending related to PCE and/or
GEE devices, processes or systems: (iii) all rights which Licensor
has to use, commercialize or exploit PCE and/or
/s/ [ILLEGIBLE] TTL Inventor /s/ [ILLEGIBLE]
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GWE, processes processes or systems based in whole or in part on
patents pending all rights Licensor may have to use, commercialize
or exploit PCE and/or GWE devices, processes or systems based on
other patents, patent applications, inventive concepts,
improvements, modifications, inventions, trade secrets, and/or
know-how owned or possessed by TITT; and (v) all rights Licensor may
have to make, assemble, and use apparatus, machinery, auxiliaries,
and devices necessary to put the PCE and/or GWE Technology into use,
and to make, use, sell, or dispose of said apparatus, machinery,
auxiliaries, and devices necessary to the use of the PCE and/or GWE
Technology.
(b) The Licensor further grants to the Licensee the right to grant
sublicenses on such terms as the Licensee may deem advisable
provided any such sublicenses are not granted on terms less
favorable to TITT than the terms and conditions herein set forth.
2. Licensor Assistance, Ownership of Patents Pending
(a) Licensor shall make available to Licensee all reports, notes,
specifications, drawings, vendor contracts, and other items
possessed by Licensor related to the PCE and/or GWE Technology.
(b) Licensor shall provide, as necessary, upon terms mutually agreeable
to the parties, consultation related to the engineering,
fabrication, construction, maintenance and operation of devices,
processes and systems based on the PCE and/or GWE Technology.
(c) All patents pending and any resultant patents on the PCE and/or GWE
Technology shall be the exclusive property of the Licensor, subject
to the exclusive license hereby granted. The Licensor shall, upon
demand, execute and deliver to Licensee such documents as may be
reasonably necessary to evidence the license hereby given.
3. PCE and/or GWE development As an inducement to Licensee to enter this
Exclusive Agreement, Licensor represents and warrants:
(a) Licensor has, prior to the execution of this Exclusive Agreement, at
TTL's Largo, Florida facilities, assembled and operated a PCE and/or
GWE device which efficiently reduced the mass of approximately two
pounds of swine manure into approximately one-half ounce. This
successful testing of a prototype PCE and/or GWE device was
paramount to the Licensee entering this exclusive agreement.
/s/ [ILLEGIBLE] TTL Inventor /s/ [ILLEGIBLE]
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(b) Licensor shall now undertake, as a pertinent incentive for the
Licensee to enter this agreement, the design of a commercial PCE
and/or GWE device including all required engineering drawings, parts
lists, operating manuals and any and all other items necessary to
fabricate and successfully commercialize a PCE and/or GWE device no
later than three months following the execution of this agreement,
and;
(c) All engineering and other resources required to comply with items
3(b) are at the expense of the Licensee.
(d) Licensor shall take all steps necessary to file pertinent patent,
trademark, copyright and any and all other intellectual filings
necessary, in the opinion of Licensee, to provide commercial
protection so as to ensure the exclusivity of the rights granted
Licensee in this Exclusive Agreement. Such actions shall be at the
expense of the Licensee. Licensor shall take all steps necessary to
initiate such filings with three months following the execution of
this agreement.
(e) Licensor shall now undertake to write a developmental plan which
plan shall include but not be limited to (i) a commercial unit
developmental time-line commencing on the date of this agreement and
ending on such date at the first commercial unit is ready to be
sold; (ii) shall prepare a complete list of parts, components, and
any and all costs and expenses anticipated to occur in the course of
item 3(d)(i) hereinabove; (iii) shall prepare a summary of all
technical and or engineering support estimated to be used in the
course of item 3(d)(i) hereinabove and; (iv) shall attach such
schedules, lists and other necessary parts of such developmental
plans hereto as Exhibit A no later than 60 days following the
execution of this exclusive agreement. Such Exhibit A, when
attached, shall become a part hereof and shall be binding on the
parties hereto as if it were a part of this Exclusive Agreement on
such date as this agreement is executed.
4. Limitations to Licensor. The Licensor agrees that as a part of this
Exclusive License agreement, it shall:
(a) operate within the frame work of the Licensee's existing company and
shall serve as the Project Manager for the PCE and/or GWE
technology;
(b) not under any circumstance submit bids, quotes or any binding
agreement related to
/s/ [ILLEGIBLE] TTL Inventor /s/ [ILLEGIBLE]
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the PCE and/or GWE technology to any party without the express
written consent of the Licensee;
(c) not approve any expenditure whatsoever in connection with this
License Agreement and/or the development of the PCE and/or GWE
technology without the express written consent of the Licensee
5. Licensee Commercialization Licensee shall use its best efforts to
commercialize the PCE and/or GWE Technology world-wide, including, but not
limited to:
(a) providing for all support engineering required to make current shop
specifications and shop drawings related to the PCE and/or GWE
Technology as required to commercialize the PCE and/or GWE
technology world-wide.
(b) providing for all metal fabrication, construction, assembly or any
other requirement necessary to construct, ship, install and operate
a plant using PCE and/or GWE Technology (reserving the right to TTL
to fabricate and assemble PCE and/or GWE Technology related items at
its facilities in Largo, Florida, or from an outsourcing supplier
qualified for such purposes) as mutually agreed upon.
(c) causing an evaluation of the current pending patents, trademarks,
copyrights and other intellectual property to be filed or registered
on the PCE and/or GWE Technology so as to ascertain any additional
protective measures available and to recommend additional filings or
registration which may extend the life of protection currently
enjoyed by any PCE and/or GWE Technology.
(d) providing for the marketing of the PCE and/or GWE Technology,
including but not limited to, prospective client solicitation,
education and presentation of all pertinent aspects of the PCE
and/or GWE Technology.
6. Royalties. Licensee shall pay Licensor:
(a) A minimum annual royalty of one Hundred and Fifty Thousand Dollars
per Year with the first such payment made upon receipt of payment
for any G.W.E. related device or service on a 50/50 division of
profits received from such initial sale. Thereafter, TTL shall pay
the $150,000 annual fee on the first day of January during each year
this License
/s/ [ILLEGIBLE] TTL Inventor /s/ [ILLEGIBLE]
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Agreement remains in force. TTL shall pay the minimum royalty as a
part of the fees indicated in item 4(2) and (3) and the minimum
royalty shall not be additive thereto.
(b) 50% of all initial sub-license fees when a G.W.E. sublicense is
sold.
(c) 50% of all royalties and profits, derived from the sale of G.W.E.
(d) As part of this License Agreement, T.T.L. and T.I.T.T. herein amend
that certain Finder's Agreement by and between T.T.L. and Xxxx
Xxxxxx such that Xx. Xxxxxx shall earn the 2,000,000 T.T.L. common
shares in full upon the execution of this agreement.
7. Payment of Royalties. The Licensee shall at all times keep, and shall
require all sublicenses to keep and to forward copies thereof to Licensee,
accurate accounts of the operations corning under the scope of this
license and shall render a full statement of the same in writing to the
Licensor within fifteen(15) days after each quarterly period of each
calendar year during the life of this agreement, and at the same time
shall pay the Licensor the amount of earned royalties accrued during the
corresponding quarterly period as provided in paragraph 4, hereof, with
the understanding that the Licensor shall have the right, at his own
expense and not more often than twice in each calendar year, to have a
certified public accountant examine the books of the Licensee for the sole
purpose of verifying royalty statements of the operations corning under
the scope of this agreement. All such records shall be made fully
available to the Licensor for such inspection.
8. Term This agreement shall continue for a term of twenty (20) years from
this date, subject to the following:
(a) If Licensee is adjudged bankrupt, this agreement shall forthwith
terminate, and in the event Licensee is adjudged insolvent, or a
receiver is appointed therefor, Licensor may, at Licensor's
election, terminate this agreement upon written notice to Licensee.
(b) The Licensor or the Licensee may terminate this Agreement upon
thirty(30) days notice in writing to the other of cause for
termination. Cause for termination shall be limited to the breach by
such other party of any material provision of this Agreement,
unless such breach is remedied or cured by the appropriate party
within said notice period. Any failure of a Party to exercise this
option to terminate for cause shall not be deemed to be a waiver of
the right to exercise such option at any other time because of the
same or any other cause
/s/ [ILLEGIBLE] TTL Inventor /s/ [ILLEGIBLE]
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for termination. The foregoing right to terminate for cause is
without prejudice, however, to any cause of action or claim accrued
on account of any such breach or to any royalties due or to become
due to the Licensor.
(c) Upon termination of this agreement, the Licensee shall duly account
to the Licensor and transfer to it all rights which it may have to
patents, inventions, processes, and apparatus acquired hereunder,
and shall further provide Licensor copies of all records relevant to
the operations of TTL under this agreement, including but not
limited to, customer lists, account information and engineering
data.
9. Infringement Unless this agreement is terminated, or the parties agree
otherwise in writing, the Licensee shall defend all infringement suits
that may be brought against it or the Licensor on account of the
manufacture, use, or sale of any item covered by this agreement, and when
information is brought to its attention indicating that others without
license are unlawfully infringing on the rights granted by Paragraph 1
hereof, it shall prosecute diligently such infringes. If the Licensee
finds it necessary or desirable in any suit which the Licensee may
institute, the Licensee may join the Licensor as party-plaintiff. In
connection with such suits, the Licensor shall execute all papers
necessary or desirable and the Licensor shall testify in any suit whenever
requested so to do by the Licensee. In such event, the Licensor shall not
be chargeable for any costs or expenses other than those set forth above.
10. New Developments (a) If during the continuance of this license the
Licensor makes any further improvements in the PCE and/or GWE Technology,
or becomes the owner of any such improvements either through patents or
otherwise, it shall communicate such improvements to the Licensee and give
the Licensee full information regarding the mode of using them and the
Licensee shall be entitled, subject to the terms of this agreement, to use
the same with all rights which are hereby granted to the Licensee as
though such improvements had been included in this license when said
license was made and entered into by the parties.
11. Arbitration, Jurisdiction and Venue
(a) Any dispute between Licensor and Licensee under or related to this
agreement shall, subject to paragraph (b), below, be resolved by
binding arbitration in Jacksonville, Florida, pursuant to the rules,
then obtaining, of the American Arbitration Association. Upon the
request of either party upon initiation of arbitration on any issue,
or upon request of either party made within 10 days after receiving
demand for arbitration as to
/s/ [ILLEGIBLE] TTL Inventor /s/ [ILLEGIBLE]
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such issue, three arbitrators rather than a single arbitrator shall
serve jointly as an arbitration panel in the disposition of said
arbitration. If three arbitrators are chosen, each party shall choose
a single arbitrator from the list of available arbitrators provided
by the American Arbitration Association and these two arbitrators
shall choose a third from the list of available arbitrators provided
by the American Arbitration Association. Arbitration shall be
initiated by either party giving notice to the other of demand for
arbitration in accordance with paragraph 10, below.
(b) Initiation of arbitration pursuant to this paragraph shall be
without prejudice to any right a party may have to terminate this
agreement pursuant to paragraph 6, above. However, such termination
shall not terminate or conclude any arbitration initiated prior to
the effective date of termination. Any such arbitration shall remain
binding and valid as to any issues on which such arbitration has
been demanded.
12. Notice. Any notice required under this agreement shall be addressed as
follows:
If to Licensee:
Xxxxx Technology Licensing, Inc,
attn: Xxxx Xxxxx, Chief Executive Officer
0000 Xxxxx Xxxxx Xx xxxxx 000
Xxxxx, Xxxxxxx 00000
If to Licensor
Tomorrows Innovative Technology Today
attn: Inventor Xxxx Xxxxxx
0000 XX 000 Xxx,
Xx. Xxxxxxxxxx, XX 00000
13. Benefit. 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, that no assignment of this agreement shall be
made without the express written consent of Licensor.
14. Interpretation. (a) This agreement has been entered into by the parties
with advice of counsel. or after independently waiving such advice, and
represents the best efforts of both
/s/ [ILLEGIBLE] TTL Inventor /s/ [ILLEGIBLE]
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parties to arrive at a document expressing their mutual agreements and
covenants. Its terms shall not, therefore, be strictly construed against
either party as the drafter or preparer thereof.
(b) This agreement shall be interpreted and construed in accordance with
the laws of the State of Florida.
15. Representations (a) Licensee represents that nothing in this License
Agreement conflicts with any existing agreement or with Licensee's bylaws
or Articles or Incorporation. It further represents that the person
executing this License Agreement on behalf of Licensee has been fully
empowered to do so on behalf of TTL by its Board of Directors.
(b) Licensor represents that it has unencumbered ownership of the PCE
and/or GWE Technology and is legally empowered to enter into this
License Agreement. Licensor further represents that the execution
and fulfillment of the terms of this License Agreement is not and
will not be in conflict with any existing similar agreements or
understandings.
IN WITNESS WHEREOF the Parties have executed this agreement in duplicate
as of the day and year first above written.
For Licensee For Licensor
/s/ Xxxx X. Xxxxx, Pres. Xxxx Xxxxxx
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Xxxx X. Xxxxx, President Xxxx Xxxxxx, Inventor
/s/ Xxxxxxx Xxxxxxxxx, Pres. & CEO
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Xxxxxxx Xxxxxxxxx, President
/s/ [ILLEGIBLE] TTL Inventor
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