EXHIBIT 10.65
LICENSE AGREEMENT
This Agreement, entered into as effective as of the as of the 10th day of
October, 2000, by between Xxxxxxx Xxxxxxx, an individual whose address is 000
Xxxxx Xxxx, Xxxxx, Xxxxxxxxx 00000 (hereinafter ALICENSOR@), and Karts
International, Inc., a Nevada corporation, with offices at 00000 Xxxxxxxxxx
Xxxxxx, Xxxxxxxx, Xxxxxxxxx 00000 (hereinafter ALICENSEE@).
WITNESSETH
WHEREAS, LICENSOR owns U.S. Patents and U.S. Patent Applications as
fisted on Appendix B, attached hereto and made a part hereof relating to safety
fuel tanks and certain technology relating thereto; and
WHEREAS, LICENSEE desires to acquire an exclusive license with the right
to sublicense under the LICENSOR=s Patents and Patent Applications and the
technology for use in the development, manufacture, use, offer to sell and sale
of apparatus embodying the inventions described in the Patents and Patent
Applications and technology and the licensing of others thereon;
WHEREAS, LICENSOR has the power and authority to grant to LICENSEE such
license.
NOW, THEREFORE, for and in consideration of the covenants and agreements
herein contained and other good and valuable consideration, the receipt of which
is hereby acknowledged by both parties, it is agreed as follows:
I. DEFINITIONS
1.1 The term APATENTS@ as used herein shall mean any patent or patent
application listed in Appendix B including divisionals, continuations,
substitutes and reissues thereof and to any patent(s) which mature from any
corresponding applications filed in countries within the LICENSED TERRITORY
including any applications for utility models or inventor=s certificates.
1.2 The term "VALID CLAIM(s)" as used herein shall include any claim(s)
pending in a patent application or in an unexpired patent included within the
PATENTS which has not been held unenforceable, unpatentable, or invalid by a
court of competent jurisdiction, is unappealable or unappealed within the time
allowed for appeal, and which has not been admitted to be invalid or
unenforceable through reissue proceedings or disclaimer.
1.3 The term ATECHNOLOGY@ as used herein shall include all know how,
including formulas, designs, data, processes, prototypes, or specifications that
relate to the PRODUCTS, and was developed prior to or during the term of this
Agreement by LICENSOR, either solely or jointly with others, including employees
or agents of LICENSEE.
1.4 The term APRODUCTS @ as used herein shall mean safety fuel tank and
filler cap apparatus which embodies, or the manufacture of which uses, in the
country of manufacture, use, or sale, (a) an invention falling within the scope
of a VALID CLAIM of any of the PATENTS, or (b) TECHNOLOGY.
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1.5 The term "NET SALES" as used herein shall mean: (1) for sales of
PRODUCTS, the total of sales invoices to customers less any deduction for
returns, transportation costs, tariffs, and all sales and excise taxes actually
paid in the course of selling PRODUCTS; and (2) for uses including the delivery
of PRODUCTS to another for less than the usual selling price; the total amounts
which would otherwise be invoiced (less the above deductions) had PRODUCTS used
by LICENSEE or a sublicensee been sold.
1.6 The term AUNITS@ as used herein shall mean the aggregate numbers of
PRODUCTS represented in NET SALES of PRODUCTS.
1.7 The term "LICENSOR IMPROVEMENTS" as used herein shall mean all
technology, developments, inventions, discoveries, technical information and
data relating to PRODUCTS and process for making same which are hereafter
conceived and/or made during the Term of this Agreement from LICENSOR=s and/or
LICENSEE's use or evaluation of the TECHNOLOGY, whether conceived by: (i) one or
more employees, contractors or agents of LICENSOR; (ii) one or more employees,
contractors or agents of LICENSEE; or (iii) jointly by one or more employees,
contractors or agents of LICENSOR and one or more employees, contractors or
agents of LICENSEE, including all that disclosed or embodied in patents, patent
applications, letters patent, related information, software, software
applications (including object code, source code and all other media and
applications), copyrights, copyright applications, copyright registrations,
inventions, and other intellectual property related to the foregoing.
II. GRANT
2.1 LICENSOR hereby grants to LICENSEE and LICENSEE hereby accepts a
worldwide, exclusive, nontransferable license including the right to grant
sublicenses, to make, have made, use, offer to sell and sell PRODUCTS.
2.2 LICENSEE shall have no right to grant any sublicense hereunder without
the prior express written consent of LICENSOR, which consent shall not be
unreasonably withheld. LICENSEE may have PRODUCTS manufactured for it
exclusively for use or resale by LICENSEE to others, all for which royalties
shall be paid under Paragraph III of this Agreement.
2.3 LICENSOR hereby grants and LICENSEE hereby accepts a restricted
worldwide, exclusive, nontransferable license to LICENSOR IMPROVEMENTS to make,
have made, use, offer to sell and sell PRODUCTS in the TERRITORY.
2.4 LICENSEE hereby transfers and assigns to LICENSOR all of right, title and
interest in and to LICENSOR IMPROVEMENTS as it shall have by the conception
thereof by (i) one or more employees, contractors or agents of LICENSEE; or (ii)
jointly by one or more employees, contractors or agents of LICENSOR and one or
more employees, contractors or agents of LICENSEE, and any and all rights to
patent and copyright included inventions, the same to be held and enjoyed by
LICENSOR, for its own use and benefit, and for the use and benefit of its
successors, assigns, or other legal representatives and for that purpose
LICENSEE shall deliver to LICENSOR no later than thirty (30) days after the
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development of any such LICENSOR IMPROVEMENTS a full and complete description in
writing of the improvements and included inventions and the manner of their use
including therein all particulars, instructions, drawings and prototypes.
LICENSEE further covenants and agrees that it will, at any time, upon request,
execute and deliver any and all papers that may be necessary or desirable to
perfect the title of said improvements and included inventions to LICENSOR, its
successors, assigns, or other legal representatives and that if LICENSOR, its
successors, assigns, or other legal representatives shall desire to secure a
patent or copyright on such inventions, upon request, will sign all papers, make
all rightful oaths and do all lawful acts requisite for such application and the
procuring thereof, and for the filing of such continuations, counterparts
divisionals and reissues thereof, without further compensation.
2.5 Upon execution of this Agreement, LICENSOR shall furnish LICENSEE with
such TECHNOLOGY licensor possesses relating to PRODUCTS as LICENSEE shall
require relating to PRODUCTS.
2.6 During the term of this Agreement, LICENSOR shall provide to LICENSEE
technical assistance and advisory services in the field of PRODUCT. Such
services shall be provided upon reasonable notice and request of LICENSEE, and
subject to LICENSOR=s availability.
2.7 LICENSOR shall have the right to file and prosecute patent applications
corresponding to the PATENTS listed in Schedule B and any of LICENSEE
IMPROVEMENTS in United States and foreign countries at its discretion. In the
event that LICENSEE desires that a corresponding patent application of any other
country, territory, or possession be filed in a country, it shall notify
Licensor of that desire, and LICENSOR shall thereupon promptly file such other
patent application. Such patent application, any patent issuing thereon, and any
renewals and extensions thereof shall be added to the aforesaid PATENTS, and
LICENSOR shall have the title thereto. Payment of costs for the filing and
prosecution of any application or patent which matures from that application
including divisionals, continuations, substitutes and reissues thereof and any
patent(s) which mature from any corresponding applications filed including
applications for utility models or inventor=s certificates and all costs,
charges and expenses, including but not limited to any government fees and
attorneys=s charges, incurred in connection with the payment of any such taxes,
annuities, working fees, maintenance fees, and/or renewal and extension charges
shall initially be the responsibility of LICENSOR, however, LICENSEE shall
reimburse LICENSOR for such costs within thirty (30) days of a report of such
LICENSOR costs submitted to LICENSEE.
III. LICENSE FEES AND ROYALTIES
3.1 In consideration of the grant of this License, LICENSEE shall pay
LICENSOR an annual License Fee of Two Hundred Fifty Thousand Dollars ($250,000),
the first annual installment of which License Fee being due in two equal
payments with One Hundred Twenty Five Thousand Dollars ($125,000) upon execution
hereof and One Hundred Twenty Five Thousand Dollars being due prior to December
31, 2000, with subsequent annual License Fees being due on the anniversary date
of a License Year. For the purposes of this Agreement, the first License Year
shall terminate December 31, 2001 and subsequent years on the end of the
calendar year. This License Fee shall be non-refundable and not creditable
against any royalty called for under this Section.
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3.2 LICENSEE shall pay LICENSOR a royalty of one dollar ($1.00) for each unit
of all PRODUCTS made, used, sold or otherwise disposed of by LICENSEE after the
date of this Agreement.
3.3 The royalties payable shall be due and payable at LICENSOR's office on or
before thirty (3 0) days following the end of each calendar quarter after the
effective date of this Agreement, and each payment shall cover PRODUCTS
manufactured by LICENSEE or used or sold by LICENSEE during the preceding
calendar quarter.
3.4 Subject to the provisions of Paragraph V, hereafter, Royalties shall be
payable for the use of TECHNOLOGY under this Paragraph III for a period often
(10) years commencing on the execution hereof whether any additional patent
application be filed, or for the life of any of PATENTS for PRODUCTS or the
manufacture thereof coming within the scope of VALID CLAIMS, including any
extension, reissue or regrant of any of PATENTS, whichever is longer unless this
Agreement is earlier terminated as a result of a breach. Upon the expiration of
the last of any of PATENTS, the license to LICENSEE of all PATENTS and
TECHNOLOGY shall be deemed fully paid, subject to the provisions of Section 3.7
below, and no further royalties or payments shall be due hereunder.
3.5 Payments provided for in this Agreement, when overdue, shall bear
interest at a rate per annum equal to three percent (3%) in excess of the APRIME
RATE@ published by XXxx Xxxx Xxxxxx Journal@ at the time such payment is due,
and for the time period until payment is received by LICENSOR.
3.6 If this Agreement is for any reason terminated before all of the payments
herein provided for have been made, LICENSEE shall immediately submit a terminal
report and pay to LICENSOR any remaining unpaid balance even though the due date
as above provided has not been reached.
3.7 Under this Agreement PRODUCTS shall be considered to be sold when shipped
or when an invoice is sent out, whichever occurs first, except that upon
expiration of any patent covering PRODUCTS, or upon any termination of a license
or sublicense, all PRODUCTS made by LICENSEE or a sublicensee, on or prior to
the date of such expiration or termination that have not been shipped or
invoiced prior thereto shall be subject to royalty and reported to LICENSOR in
the Post Termination Report called for in Section 3.6. Royalties paid on
PRODUCTS that are not accepted by a purchaser or user shall be credited to
LICENSEE.
3.8 In order to maintain the exclusivity of the License granted, LICENSEE
shall pay to LICENSOR royalties as required under Paragraph 3.3, but in no event
shall royalties for a calendar year for practice of the PATENTS and TECHNOLOGY
be less than the following minimum royalties, for the License Years indicated:
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License Years U.S. Dollars per License Year
1 $500,000
2 $500,000
3 and thereafter $1,000,000
In the event that royalties under this Paragraph 3.8 for a License Year do not
aggregate the sums above required, LICENSOR may, at its option, convert the
exclusive license granted to a nonexclusive license without the fight to
sublicense, by thirty (30) days notice in writing to LICENSEE, served on
LICENSEE within thirty (30) days after receipt of the last report for such
License Year, unless LICENSEE shall within thirty (30) days from the receipt of
such notice by it, pay LICENSOR such additional sums as may be necessary to
bring the payment of royalties for PRODUCTS to the specified minimum.
3.9 LICENSEE=s right to grant sublicenses to others shall be for fees or at
royalty rates to be determined by LICENSEE, subject to the provisions of this
Agreement and at License Fees and Royalties no less than contained herein. Any
sublicense shall make reference to this Agreement including those rights
retained by LICENSOR A copy of any sublicense shall be furnished to LICENSOR
promptly after its execution. It is understood and agreed that any such
sublicense shall include the requirement that the sublicensee shall do all
things necessary to effectuate LICENSEE=S compliance with the terms of this
Agreement. Further, sublicense fees shall be due and payable on PRODUCTS which
had been made, sold, leased, or otherwise used or put into commerce by the
sublicensee.
3.10 LICENSEE shall pay over to LICENSOR as sublicense income, fifty percent
(50%)of all License Fees, royalties, advance royalties, minimum royalties or
other payments accrued or received in respect to the granting or maintaining of
sublicenses, provided however, in no instance shall the amount paid to LICENSOR
be less than one dollar ($1.00) for each unit of all PRODUCTS made, used, sold
or otherwise disposed of by a sublicensee after the date of this Agreement. For
any sublicense granted, LICENSEE shall guarantee the timely payment of
LICENSOR=s share of sublicense income.
3.11 Termination under any of the provisions of Paragraph V of the license
granted to LICENSEE in this Agreement shall not terminate any sublicenses which
may have been previously granted by LICENSEE. In the event of such Termination,
LICENSEE shall assign such sublicenses to LICENSOR.
IV. ACCOUNT AND AUDIT
4.1 On or before thirty (30) days following the end of each calendar quarter
after the effective date of this Agreement, LICENSEE shall provide to LICENSOR a
complete written report setting forth the NET SALES and UNITS of PRODUCTS
manufactured by or for LICENSEE that have been used or sold by LICENSEE during
the preceding calendar quarter. Such written report shall also include the NET
SALES and UNITS of PRODUCTS manufactured by or for each sublicensee that have
been used or sold by a sublicensee required to be reported during the preceding
calendar quartet.
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4.2 LICENSEE shall keep true and correct books of account adequate to verify
a reports and payments due LICENSOR under this Agreement, and such books of
account shall be available for examination or inspection by a certified public
accountant or similarly qualified individual, on reasonable notice, and at
regular business hours to the extent and only to the extent necessary to verify
said reports and payments.
4.3 LICENSEE=s obligations under Paragraph III hereof to pay royalties to
LICENSOR, or under Paragraph IV hereof to report to LICENSOR with respect to any
products used or sold hereunder shall cease when all of PATENTS have expired
and/or adjudged to be invalid or unenforceable by a judgment of a court of
competent jurisdiction.
V. TERM AND TERMINATION
5.1 Unless sooner terminated as herein provided, this Agreement shall
continue for a Term of three (3) years from the date hereof and shall be
automatically renewed annually thereafter unless either of the parties provides
at least sixty (60) days notice of non-renewal prior to an anniversary date
hereof, unless earlier terminated in accordance with the provisions of this
Paragraph.
5.2 If LICENSEE shall fail to pay a License Fee or any royalties in
accordance with the terms of this Agreement, or if LICENSEE shall otherwise fi@
to comply with any terms of this Agreement, LICENSOR shall have the right to
terminate this Agreement upon giving sixty (60) days written notice to LICENSEE.
If LICENSEE shall fail to pay all royalties in arrears, or otherwise fail to
comply with the terms of the Agreement within such sixty-day period, LICENSOR
shall have the right to terminate this Agreement by sending LICENSEE written
notice to that effect,
5.3 If LICENSEE is adjudicated as bankrupt, or makes a general assignment, or
goes out of business, or takes the benefit of any solvency act, or if a receiver
or trustee is appointed, or if any attachment or legal process is levied or
attempted to be levied on the interest of LICENSEE hereunder, and such
attachment or process is not forthwith bonded by LICENSEE, then, and in that
event, this Agreement shall terminate at the option of LICENSOR,
The word Atermination@ and cognate words, such as Aterm@ and Aterminate,
@ used in this Article IX and elsewhere in this Agreement are to be read, except
where the contrary is specifically indicated, as omitting from their effect the
following rights and obligations, all of which survive any termination to the
degree necessary to permit their complete fulfillment or discharge:
a. LICENSEE=s obligation to supply a terminal report as specified in
Section 3.6 of this Agreement;
b. LICENSOR=s right to receive or recover and LICENSEE=s obligation
to pay royalties (including minimum royalties) accrued or accruable for payment
at the time of any termination;
c. LICENSEE=s obligation to maintain records under Paragraph IV of
this Agreement;
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d. Licenses, releases, and agreements of non-assertion running in
favor of customers or transferees of LICENSEE in respect to products sold or
transferred by LICENSEE prior to any termination and on which License Fees and
royalties shall have been paid as provided in Sections 3.1 and 3.2 of this
Agreement;
e. Any cause of action or claim of LICENSOR accrued, or to accrue,
because of any breach or default by LICENSEE; and
f. The representation and disclaimer of warranties of Section 7.8.
VI. PATENT ENFORCEMENT
6.1 LICENSOR and LICENSEE shall notify each other promptly in writing of any
infringement of the PATENTS, which becomes known to either of them LICENSEE
shall notify LICENSOR promptly of any action taken in accordance with this
Paragraph VI to xxxxx or eliminate such infringement. LICENSEE shall have the
right to xxxxx the infringement by grant of sublicense in accordance with the
provisions of Paragraph III, or to xxx for the infringement in LICENSEE=s own
name and expense, and to collect for its own use all damages, profits, and
awards of whatever nature recovered for such infringement, however, such
damages, profits and awards shall be included as income for royalty calculations
less reasonable legal fees incurred in the enforcement of said PATENTS.
6.2 In the event LICENSOR shall bring to the attention of LICENSEE any
infringement of the LICENSED PATENT, and LICENSEE shall not, within six (6)
months:
a) Secure abatement or cessation of the infringement;
b) Enter suit against the infringer; or
c) Provide LICENSOR with evidence of the pendency of a bona fide
negotiation for the acceptance by the infringer of a sublicense under the
PATENTS, LICENSOR shall thereafter have the right to xxx for the infringement at
LICENSOR'S own expense, and to collect for its own use all damages, profits, and
awards of whatever nature recoverable for such infringement.
6.3 LICENSOR and LICENSEE mutually agree to furnish technical and other
necessary assistance to each other in conducting any litigation necessary to
enforce the PATENTS against others. Out of pocket expenses for such assistance
will be paid by the party requesting such assistance.
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VII. MISCELLANEOUS
7.1 LICENSEE agrees to assume all financial and service obligations for
PRODUCTS manufactured and sold by it hereunder, and LICENSOR shall be absolved
of all liability or responsibility to LICENSEE or to any others for any failure
in production, design, operation or otherwise of PRODUCTS manufactured and sold
by LICENSEE and hold LICENSOR harmless from any claim or threat of claim by a
third party.
7.2 This Agreement and the license herein granted shall not be assigned by
LICENSEE without the written consent of LICENSOR, including if a part of a sale
of its business to which this Agreement pertains, whether by merger, sale of
assets or otherwise, but LICENSOR may assign or otherwise dispose of its rights
and obligations under this Agreement at its sole option. Subject to the
provisions of this Paragraph 7.2, this Agreement shall be binding on and inure
to the benefit of the parties hereto, their successors and assigns.
7.3 Any waiver by LICENSOR of any rights arising from the breach of any terms
of this Agreement shall not be construed as a continuing waiver of any other
breaches of the same or other terms of this Agreement.
7.4 Should any part, term or provision of this Agreement be, by a court,
decided to be illegal or in conflict with any law, judicial decision or rule of
law, the validity of the remaining portions or provisions shall not be affected
thereby.
7.5 This Agreement shall be governed by and construed according to the laws
of the state of Nevada and the United States Patent Laws.
7.6 Any notice or other communication required or permitted by this Agreement
shall be deemed to have been received by the receiving party if mailed by
registered or certified mail, or an equivalent form of mailing, with postage
prepaid and addressed to the proper party, at the following address:
if to LICENSEE:
Karts International Incorporated
00000 Xxxxxxxxxx Xxxxxx
Xxxx Xxxxxx Xxx 000
Xxxxxxxx, Xxxxxxxxx 00000
Attention: President
If to LICENSOR:
Xxxxxxx Xxxxxxx
000 Xxxxx Xxxx
Xxxxx, Xxxxxxxxx 00000
with a copy to:
Xxxxxxx X. Xxxxxx, Xx., Esq.
Garvey, Smith, Xxxxxxxx & Xxxxx, L.L.C.
0000 Xxxxx Xxxxxxxx Xxxx.
Xxxxx 0000
Xxxxxxxx, Xxxxxxxxx 00000-0000
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7.7 The parties agree that, in the event of any disputes arising out of or
connection with this Agreement, both parties will use their best efforts to
reach an amicable and prompt resolution of such dispute. Failing amicable
resolution, Disputes will be settled by arbitration. The settlement of the
dispute and arbitration will be conducted in compliance with the procedures set
out in Appendix A, attached hereto and made a part hereof, and a decision by the
arbitrator will be binding on both parties.
The cost of the arbitration shall be borne as follows: fifty percent
(50%) by LICENSEE and fifty percent (50%) by LICENSOR.
Written notice given by one party to the other requiring a dispute to be
submitted to arbitration shall be deemed to constitute a joint submission to
arbitration by both parties.
7.8 NOTHING IN THIS AGREEMENT SHALL BE DEEMED TO BE A REPRESENTATION OR
WARRANTY BY LICENSOR OF THE VALIDITY OF ANY OF THE PATENTS. LICENSOR SHALL HAVE
NO LIABILITY WHATSOEVER TO LICENSEE OR ANY OTHER PERSON FOR OR ON ACCOUNT OF ANY
INJURY, LOSS, OR DAMAGE, OF ANY KIND OR NATURE SUSTAINED BY, OR ANY DAMAGE
ASSESSED OR ASSERTED AGAINST, OR ANY OTHER LIABILITY INCURRED BY OR IMPOSED UPON
LICENSEE OR ANY OTHER PERSON, ARISING OUT OF OR IN CONNECTION WITH OR RESULTING
FROM (A) THE PRODUCTION, USE, OR SALE OF ANY PRODUCT, OR THE PRACTICE OF THE
LICENSED INVENTION OR PATENTS; OR (B) ANY ADVERTISING OR OTHER PROMOTIONAL
ACTIVITIES WITH RESPECT TO ANY OF THE FOREGOING, AND LICENSEE SHALL DEFEND,
INDEMNIFY, AND HOLD LICENSOR, AND ITS OFFICERS, DIRECTORS, AGENTS, AND
EMPLOYEES, HARMLESS AGAINST ALL COSTS, EXPENSES, AND LOSSES (INCLUDING
REASONABLE ATTORNEY FEES AND COSTS) INCURRED THROUGH CLAIMS OF THIRD PARTIES
AGAINST LICENSOR BASED ON (A) THE PRODUCTION, USE, OR SALE OF ANY PRODUCT, OR
THE PRACTICE OF THE LICENSED TECHNOLOGY OR PATENTS; OR (B) ANY ADVERTISING OR
OTHER PROMOTIONAL ACTIVITIES WITH RESPECT TO ANY OF THE FOREGOING,.
LICENSEE shall, throughout the Term of the Agreement, obtain and maintain
at its own cost and expense from a qualified insurance company licensed to do
business in Louisiana and having a Xxxxx'x rating of B+ or better, standard
Product Liability Insurance naming LICENSOR, and its officers, directors,
employees, agents, and shareholders, as an additional insured. Such policy shall
provide protection against all claims, demands, and causes of action arising out
of any defects or failure to perform, alleged or otherwise, of the PRODUCTS or
any material used in connection therewith or any use thereof. The amount of
coverage shall be a minimum of Two Million Dollars ($2,000,000) combined single
limit, with a deductible amount not to exceed One Hundred Thousand Dollars
($100,000), for each single occurrence for bodily injury and/or for property
damage The policy shall provide for thirty (30) days notice to Licensor from the
insurer by registered or certified mail, return receipt requested, in the event
of any modification, cancellation, or termination thereof. LICENSEE agrees to
furnish LICENSOR a certificate of insurance evidencing same within sixty (60)
days after execution of this Agreement and, in no event, shall LICENSEE
manufacture, distribute, or sell the PRODUCTS prior to receipt by LICENSOR of
such evidence of insurance.
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7.9 LICENSOR shall have the sole right to file, prosecute, and maintain all
of the PATENTS that are the property of LICENSOR and shall have the right to
determine whether or not, and where, to file a patent application, to abandon
the prosecution of any patent or patent application, or to discontinue the
maintenance of any patent or patent application.
7.10 LICENSEE shall place in a conspicuous location on PRODUCTS a patent
notice in accordance with 35 U.S.C. `287. LICENSEE agrees to xxxx any products
made using a process covered by any PATENT with the number of each such patent
and, with respect to such PATENTS, to respond to any request for disclosure
under 35 U. S.C. `287(b)(4)(B) by only notifying LICENSEE of the request for
disclosure.
IN WITNESS WHEREOF, the parties, intending to be legally bound, have
executed this Agreement as of the day and year first above written.
KARTS INTERNATIONAL INCORPORATED
Attest:
________________________________ By:________________________________
Witness
Chairman of the Board
XXXXXXX XXXXXXX
Attest:
________________________________ By:________________________________
Witness Xxxxxxx Xxxxxxx
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Appendix A
1. In the event of an anticipated need for arbitration under Paragraph 7.7,
the parties agree that, prior to submitting the dispute to arbitration, a
preliminary attempt will be made to resolve the dispute in the following way;
(a) A designated representative of LICENSEE and LICENSOR shall meet
and participate in a good faith discussion of the item(s) in dispute with a view
toward achieving a compromise resolution of such item(s). Both individuals shall
have sufficient decision making authority to resolve the dispute. In the event
that these two individuals agree upon a compromise resolution of the matter,
that resolution shall be reduced to writing and signed by both individuals and
the. decision shall be binding upon the Parties to the Agreement.
(b) In the event that the two above-named individuals fail to reach
agreement regarding how the disputed item(s) should be resolved within thirty
(30) days after such meeting, then the matter shall be submitted to formal
arbitration under Paragraph 7.7 of the Agreement and this Appendix A.
2. If the preliminary attempt to resolve the dispute as described in
Paragraph 1 above fails, the two individuals shall attempt to agree upon a joint
statement of the question at issue, said statement to define the scope of the
matter to be referred to arbitration. The two individuals shall also reduce to
writing their respective best proposals for resolution of the matter.
3. In the event of an arbitration under Paragraph 7.7 and this Appendix A, a
single arbitrator shall be appointed jointly by the parties. The arbitrator
shall be limited in the scope of his/her powers in the following manner: the
arbitrator shall request a formal written proposal from each party to resolve
the dispute. Having received such written proposals, the arbitrator shall accept
one proposal or the other. The arbitrator shall not be free to impose any other
decision upon the parties without the specific written consent of both parties.
If the parties are unable to agree upon the appointment, the sole arbitrator
shall be chosen based upon the rules of and with assistance from, the American
Arbitration Association.
4. The arbitrator shall not be free to refer matters, including matters of
law, to any court.
5. In any arbitration, the decision of the arbitrator shall be in writing
and shall be binding upon the parties to the Agreement. Such decision shall be
final and the parties shall have no form of appeal from the decision of the
arbitrator.
6. Prior to rendering a final decision, the arbitrator shall call a
settlement conference with the parties and attempt to mediate the dispute and
affect a settlement. If no settlement is possible at such conference, the
arbitrator shall render the decision.
7. Any arbitration hereunder shall take place in New Orleans, Louisiana.
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XXXXXXXX X
Schedule of Patents and Patent Applications
Patent/Application Title Date of Issue/
------------------ ----- --------------
Number Filing
------ ------
6,112,714 Safety Fuel Tank And Filler Apparatus Sept. 5, 2000
09/452,653 Safety Fuel Tank And Filler Apparatus Dec. 1, 1999
09/655,033 Safety Fuel Tank And Filler Apparatus Sept. 5, 2000
PCT/US 00/24281 Safety Fuel Tank And Filler Apparatus Sept. 1, 2000
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