EXHIBIT 10.16
LICENSE AGREEMENT
-----------------
This Agreement is effective as of the latest date of signing below and
is by and between Brookhaven Science Associates LLC, ("Licensor"), operator of
Brookhaven National Laboratory, Xxxxx, Xxx Xxxx 00000, under contract with the
U.S. Department of Energy, and Circle Group Holdings Inc., ("Licensee") having a
principal place of business at 0000 Xxxxxx Xx., Xxxxxxxxx, XX.
Licensor represents that it is the owner by assignment of all rights,
title and interest in the patent properties covering Method for Removal of
Anthrax and Bacterial Spores.
Licensor represents that it has the right to grant licenses under said
patent properties, subject to a non-exclusive, non-transferable, irrevocable,
paid-up license heretofore granted to the U.S. Government to practice or have
practiced the invention(s) covered by said patent properties for or on behalf of
the United States Government.
Licensor desires to have said patent properties utilized in the public
interest and is willing to grant a license thereunder on the terms and
conditions set forth herein.
Licensee desires to secure an exclusive license under said patent
properties on the terms and conditions set forth herein.
Accordingly, in consideration of the premises and the mutual covenants
of this Agreement, the parties hereto agree as follows:
I - DEFINITIONS
---------------
(a) The term "Patent Rights" shall mean:
1. U.S. Patent Application Serial No. 10/396,091 filed 3/26/2003
in the names of
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Xxxx Xxxxxxxxxx and Xxxxxxx Xxxxxx entitled Spore Collection and
Elimination Apparatus and Method, and any continuations,
continuations-in-part, or divisionals of said application, and any
patents or reissue of patents that issue thereon.
(b) The term "Valid Claim" means and includes a claim contained in the
Patent Rights which has not expired, which has not been held invalid or
unenforceable by final decision of a court or other governmental agency of
competent jurisdiction, unappealable or unappealed within the time allowed for
appeal, and which has not been admitted to be invalid or unenforceable through
reissue, disclaimer or otherwise.
(c) The term "Licensed Products" shall mean any products covered by a
Valid Claim in the Patent Rights, and any product the manufacture, use or sale
of which is covered by a Valid Claim in the Patent Rights.
(d) The term "Net Sales Proceeds" shall mean the actual price at which
each Licensed Product is sold by Licensee, f.o.b. Licensee's place of business,
less the following sums actually paid or credited by Licensee:
i. sales or other excise taxes directly imposed with reference to
particular sales;
ii. outbound transportation charges prepaid or allowed;
iii. insurance coverage for such outbound transportation;
iv. amounts allowed or credited on returns;
v. amounts allowed as customary trade discounts.
II - GRANT
----------
Subject to the rights of the U.S. Government, defined in Public Law
98-620 and the related implementing regulations at 37 CFR Part 401, Licensor
hereby grants to Licensee an
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exclusive license under the Patent Rights to make, have made, use, and/or sell
Licensed Products.
III - LICENSE FEE
-----------------
As partial consideration for the granting of this license, Licensee
agrees to issue to Licensor unregistered shares of Circle Group Holdings, Inc.,
0000 Xxxxxx Xx., Xxxxxxxxx, XX, (OTCBB symbol CRGQ) stock with a total valuation
of seventy five thousand U.S. Dollars (U.S. $75,000.00). The actual number of
shares to be issued to Licensor will be based on the closing price of CRGQ stock
on the day prior to the effective date of this Agreement. Said shares shall be
delivered by Licensee to Licensor within thirty (30) days of the effective date
of this Agreement.
IV. - REIMBURSEMENT OF LICENSOR'S PATENT COSTS
----------------------------------------------
(a) As partial consideration for the granting of this license, Licensee
will pay to Licensor ten thousand U.S. dollars (U.S. $10,000.00) as
reimbursement for Licensor's existing patent costs for said Patent Rights. This
payment will be made by Licensee to Licensor within thirty (30) days of the
effective date of this Agreement.
(b) As partial consideration for the granting of this license, Licensee
will pay to Licensor four thousand U.S. dollars (U.S. $4,000.00) as further
reimbursement for Licensor's patent costs for said Patent Rights. This payment
will be made by Licensee to Licensor within one hundred and fifty (150) days of
the effective date of this agreement.
(c) Licensee will reimburse Licensor for all costs incurred after
6/01/03 in connection with the filing prosecution, and maintenance of all
patents and patent applications included in the Patent Rights. Licensor will
submit periodic invoices to Licensee covering such expenses and Licensee will
reimburse Licensor for these expenses within thirty (30) days of receipt of an
invoice.
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(d) Patent prosecution reimbursement by Licensee to Licensor for Spore
Collection and Elimination Apparatus and Method shall not exceed $15,000.00 U.S.
dollars, not including post issuance U.S. patent maintenance fees, without
Licensee's prior written consent.
(e) Licensee shall, at its own expense, be responsible for the filing
and prosecution of any foreign patent applications and the maintenance of
foreign patents based on the U.S. patent application identified in Article I.
Licensee will require that any such foreign patent filings be filed and issued
in the name of Licensor.
V - REPORTS AND ROYALTIES
-------------------------
(a) Commencing in the calendar year 2004, Licensee agrees to make
written reports to Licensor biannually, within sixty (60) days after the first
day of each January and July during the life of this Agreement, and, as of such
dates, stating in each such report the total Net Sales Proceeds during the
preceding six calendar months. The first such report shall include all Net Sales
Proceeds from the effective date of this Agreement to the date of said report.
Such bi-annual reports shall provide the particulars of the business conducted
by Licensee during the preceding six (6) month period under this license
Agreement as are pertinent to a royalty accounting. These shall include at least
the following:
1. all Licensed Products manufactured, used, sold or otherwise disposed
of;
2. total xxxxxxxx for Licensed Products sold, used or otherwise
disposed of;
3. deductions applicable, if any; and
4. total royalties due.
(b) Concurrently with the making of each such report required by
paragraph (a) of this Article V, Licensee will pay to Licensor royalties at the
rate of 3% percent of Net Sales Proceeds.
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(c) Minimum Annual Royalties:
a. For the calendar year ending December 31, 2004, Licensee
agrees to pay a minimum royalty of ten thousand United States
Dollars (U.S. $10,000.00). In the event that the actual
royalties for that calendar year exceed $10,000.00, it is
understood that no minimum royalties are to be paid for that
year. In the event that the actual royalties paid for a
calendar year are less than this minimum royalty of
$10,000.00, Licensee shall be obligated to pay within sixty
(60) days of December 31, 2004, the difference between the
actual royalties it paid during said year and the minimum
royalty of $10,000.00 to satisfy this minimum royalty
provision.
b. For the calendar year ending December 31, 2005 and each
calendar year thereafter, Licensee agrees to pay a minimum
royalty of fifteen thousand United States Dollars (U.S.
$15,000.00). In the event that the actual royalties for any
calendar year exceed $15,000.00, it is understood that no
minimum royalties are to be paid for that year. In the event
that the actual royalties paid for a calendar year are less
than this minimum royalty of $15,000.00, Licensee shall be
obligated to pay within sixty (60) days of each December 31,
thereafter, the difference between the actual royalties it
paid during said year and the minimum royalty of $15,000.00 to
satisfy this minimum royalty provision.
(d) Licensee agrees to make a written report to Licensor within sixty
(60) days after the date of any termination of this Agreement, stating in such
report the total Net Sales Proceeds
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up to such date of termination which were not previously reported to Licensor.
Concurrently with the making of this report, Licensee will pay to Licensor all
royalties due on the basis of this report at the rate defined in paragraphs (b)
and (c) of this Article.
(e) All monies payable hereunder shall be paid in United States
Dollars.
VI - SUBLICENSES
----------------
(a) The grant under Article II above includes the right to grant
sublicenses. Any sublicense granted by Licensee shall be subject to the terms
and conditions of this Agreement, including the insurance requirement in Article
VIII hereof, and shall contain an express provision to that effect. No
sublicense shall relieve Licensee of any of its obligations under this
Agreement. Licensee agrees to forward to Licensor a fully executed copy of each
sublicense agreement it enters into within thirty (30) days after execution
thereof.
(b) Licensee agrees to include in its reports required in Article V
above an accounting of all consideration received by Licensee from its
sublicensees. Licensees agrees to pay Licensor, in addition to all of the
amounts provided for in Article V above, fifty percent (50%) of all
consideration of any nature, including, for example, license fees, earned
royalties, and minimum royalties, received by Licensee from its sublicensees.
(c) Upon the termination of this Agreement for any cause, any and all
existing sublicenses hereunder shall thereupon automatically terminate. This
shall be made a condition of any sublicense that may be granted by Licensee.
VII - AUDITING
--------------
(a) Licensee agrees to keep for a period of three years the records used to
prepare the reports required by Article V hereof. Such records shall be in
sufficient detail to enable the
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royalties and licensing fees payable hereunder by Licensee to be clearly and
fully determined. Licensee further agrees to permit such records to be examined
from time to time to the extent necessary to verify the reports provided for in
Article VI hereof, such examination to be made at the expense of Licensor by an
auditor appointed by Licensor, or at the option and expense of Licensee, by an
independent Certified Public Accountant who shall be appointed by Licensee and
who shall be acceptable to Licensor.
(b) Licensor agrees to use its best efforts to maintain in confidence
the information reported to it in Licensee's biannual sales reports and any
confidential information it obtains through its audit rights. Licensor will use
its best efforts to neither disclose this information outside of its
organization or use this information for any purpose other than collection of
royalties from Licensee under this Agreement.
(c) Licensee agrees that the confidentiality and use provisions of this
Article shall not apply to the following:
(1) any information which appears in printed publications or which
otherwise is or become generally known in the trade other than through the fault
of Licensor;
(2) any information which Licensor can show by written records was in
its possession prior to the disclosure hereunder; or
(3) any information which comes into the possession of Licensor without
covenants of secrecy from another party who is under no obligation to Licensee
to maintain the confidentiality of the information.
VIII - DISCLAIMER, INDEMNIFICATION, HOLD HARMLESS AND INSURANCE
---------------------------------------------------------------
(a) Licensor makes no representation or warranty, either expressed or
implied, and no
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representation or warranty shall be implied, with respect to the License herein
granted other than that Licensor has the right to grant said license.
(b) Nothing in this Agreement shall be construed as:
(1) a warranty or representation by Licensor as to the validity or
scope of any Patent Rights;
(2) a warranty or representation that any product made, used, sold
or otherwise disposed of or any method practiced under any license
granted under this Agreement is or will be free from infringement or
claims of infringement of patents, copyrights or any other property
right of third parties; or
(3) granting by implication, estoppel or otherwise any licenses or
rights under patents or other property rights of Licensor other than
said Patent Rights, regardless of whether such patents are dominant or
subordinate to any Patent Rights.
(c) Licensor shall not be liable for any injury, losses or damages,
including special or consequential damages or losses incurred by Licensee, nor
for claims for such damages, losses or other injuries asserted or levied against
Licensee, arising out of Licensee's practice of the Grant set forth in Article
II of this Agreement. Licensee shall indemnify and hold harmless Licensor and
the U.S. government from any claims, actions, judgments or awards arising out
of Licensee's practice of the Grant set forth in Article II, or out of
Licensee's manufacture, use, sale or disposition of Licensed Products.
(d) Licensee shall, at the time of signing of this Agreement, deliver
to Licensor a certificate of liability insurance showing Licensor as a named
insured an evidencing that Licensee maintains insurance, in an amount of at
least two million dollars ($2,000,000.00), for
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all liabilities, obligations or claims arising out of the manufacture, use,
sale or disposition of Licensed Products and the indemnification, hold harmless
and other obligations undertaken by Licensee under this Agreement. Licensee
agrees that it will provide such certification of insurance at no expense to
Licensor. Licensee further agrees to periodically provide evidence of its
continuing to maintain substantively and fiscally equivalent liability
insurance for the term of this Agreement and for twenty (20) years thereafter.
The specified minimum amount of insurance coverage shall not be construed to
create a limitation on the obligation of Licensee.
IX - INFRINGEMENT OF LICENSOR'S PATENT RIGHTS BY THIRD PARTIES
--------------------------------------------------------------
(a) Should Licensor or Licensee become aware of any infringement or
alleged infringement in the United States, its territories and possessions, of
any of the Patent Rights, that party shall promptly notify the other party in
writing of the name and address of the alleged infringer and of the alleged acts
of infringement, and provide any available evidence of the alleged acts of
infringement.
(b) Neither Licensor nor Licensee shall be obligated to institute suit
against any alleged infringer of any of the Patent Rights.
(c) Licensee shall have the right to bring legal action again an
alleged infringer of any of the Patent Rights in its own name or in the joint
name of the Licensee and Licensor. In the event that Licensee elects to initiate
an infringement action in its own name, or in the joint name of Licensee and
Licensor, any and all expenses, judgments or sanctions incurred in connection
with such legal action shall be borne solely by Licensee, who shall retain for
itself, any and all monies or other benefits derived from such legal action,
except for monies due to Licensor under this License Agreement.
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(d) Licensor and Licensee hereby agree to cooperate with each other in
the prosecution of any legal infringement action or settlement discussions and
each agrees to provide the other with all pertinent data and evidence which may
be helpful in the prosecution of such action of which it may have knowledge or
which may be readily available to it without incurring substantial expense.
(e) Should Licensee commence a suit under the provisions of this
Article and thereafter elect to abandon this suit, it shall give timely notice
to the Licensor who may, if it so desires, continue prosecution of such suit,
provided however that the sharing of expenses and any recovery in such continued
suit shall be as agreed upon between Licensor and Licensee.
(f) If, at any time during this Agreement, Licensor or Licensee shall
be unable to uphold the validity of any of the Patent Rights against any alleged
infringer, Licensee shall not have or assert any damage claim or a claim for
refund or reimbursement against Licensor.
X - SUCCESSOR RIGHTS
--------------------
(a) The obligations of Licensee hereunder, including the obligations to
make reports and pay royalties, shall run in favor of the successors, assigns or
other legal representatives of Licensor.
(b) Licensee's rights under this Agreement and the license herein
granted shall not be assigned for the benefit of creditors of Licensee or
otherwise, nor shall such rights or license pass to any receiver of Licensee's
assets, except for a person or corporation succeeding to the entire business and
good will of Licensee in the manufacture and sale of Licensed Products as the
result of a sale, consolidation, reorganization or otherwise, provided such
person or corporation shall, without delay, accept in writing the provisions of
this Agreement and agree to become in all
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respects bound thereby in the place and stead of Licensee. Licensee's rights
under this Agreement and the license herein granted shall not be otherwise
transferred without the written consent of Licensor.
XI - UNITED STATES GOVERNMENT EXPORT CONTROL REGULATIONS
--------------------------------------------------------
(a) The Export Control Regulations of the U.S. Department of Commerce
prohibit, except under a special validated license, the exportation from the
United States of technical data relating to certain commodities listed in the
Regulations, unless the exporter has received certain written assurance from the
foreign importer. In order to facilitate the exchange of technical information
under this Agreement, Licensee therefor hereby gives its assurance to Licensor
that it will comply with all of the requirements of the U.S. Export Control
Regulations.
(b) Violation of the U.S. Export Control laws or regulations by
Licensee shall constitute grounds for Licensor, in its sole discretion, to
terminate this license agreement. Failure to obtain any needed export control
license may result in criminal liability under the United States law.
XII - TERM AND TERMINATION
--------------------------
(a) Unless previously terminated in accordance with the following
provisions of this Article XII, this Agreement shall become effective as of the
date set forth at the outset of this Agreement and shall run to the end of the
term of the last to expire patent in the Patent rights licensed hereunder, and
shall thereupon expire.
(b) If Licensee shall at any time default in the payment of any license
fee or royalty or in the making of any report hereunder, or shall commit any
breach of any covenant herein contained, and shall fail to remedy any such
default or breach within thirty (30) days after written
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notice thereof by Licensor, then Licensor may, at its option, terminate the
license and all other rights herein granted, by giving notice to Licensee in
writing to such effect.
(c) After two years from the effective date of this Agreement, Licensee
shall have the right to terminate the prospective effect of the license
hereunder at any time by written notice given to the Licensor at least six (6)
months prior to the date when such termination its to become effective.
(d) Any termination or expiration of this Agreement shall not relieve
Licensee from its obligations under Article V hereof to make a terminal report
and maintain records, or from its liability for payment of royalties on Licensed
Products sold or otherwise disposed of hereunder prior to the date of such
termination or expiration, or for payment of annual minimum royalties due, and
shall not prejudice the right of Licensor to recover any royalty or other sums
or consideration due or accrued at the time of such termination or expiration
shad shall not prejudice any cause of action or claim of Licensor accrued on
account of any breach or default by Licensee.
(e) Any termination or expiration of this Agreement shall not prejudice
the right of Licensor to conduct a final audit of the records of Licensee in
accordance with the provisions of Article VII hereof.
XIII - ADVERTISING
------------------
Neither the granting of the license herein granted by Licensor nor the
acceptance of the license fee or royalties hereunder by Licensor shall
constitute Licensor's approval of, or acquiescence in, advertising or other
business practices of Licensee or Licensee's sublicensees, nor an approval of or
acquiescence in any use of the corporate name of Licensor, or any use of the
name Brookhaven National Laboratory, or any use of the name(s) of the inventors
of the
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Patent Rights licensed, or of the names of any agencies of the U.S. Government,
in connection with the manufacture, advertising, use, sale or sublicensing of
Licensed Products, and Licensor hereby expressly reserves all rights of actions
with respect thereto. Licensee must obtain Licensor's prior written consent
before using Licensor's name in any advertising, press release, or other
business materials meant for public distribution.
XIV - NOTICES
-------------
(a) Any notice pursuant to this Agreement shall be sufficiently made or
given on the date of mailing if sent to a party by certified mail, postage
prepaid, addressed to it at its address below:
For Licensor:
Xxxxxxxx X. Xxxxxxxx
Manager
Office of Intellectual Property and Sponsored Research
Brookhaven National Laboratory
Building No. 475D
X.X. Xxx 0000
Xxxxx, Xxx Xxxx 00000-0000
For Licensee:
Xxxx Xxxxxxx, CEO
Circle Group Holdings, Inc.
0000 Xxxxxx Xxxxx
Xxxxxxxxx, XX 00000
Alternatively, such notices may be delivered to such other address or
addresses as either Licensor or Licensee, respectively, may later establish by
written notice to the other.
(b) Any payments due from Licensee to Licensor hereunder shall be made
as follows:
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CHECK PAYABLE TO: Brookhaven Science Associates
CHECK MAILED TO: Xxxxxxxx X. Xxxxxxxx
Manager
Office of Intellectual Property and Sponsored Research
Brookhaven National Laboratory
Xxxx. 000X, X.X. Xxx 0000
Xxxxx, XX 00000-0000
XV - APPLICABLE LAW
-------------------
This Agreement shall be construed, interpreted and applied in
accordance with the laws of the United States and the State of New York.
XVI - LICENSEE'S DILIGENCE
--------------------------
(a) License agrees to use its best efforts to promote the development
and marketing of Licensed Products.
(b) Without limiting the generality of Licensee's obligation under
paragraph (a) above, Licensee agrees specifically as follows: Within five (5)
calendar years of the execution of this Agreement, Licensee will have a Licensed
Product available for purchase on the open market.
XVII - PREFERENCE FOR UNITED STATES INDUSTRY
--------------------------------------------
Consistent with the provisions of 35 USC 204, Licensee agrees that any
products embodying technology covered by the Patent Rights or produced through
the use of technology covered by the Patent Rights will be substantially
manufactured in the United States.
XVIII - ENTIRE UNDERSTANDING
----------------------------
This Agreement constitutes the entire understanding between the parties
hereto with respect to the subject matter hereof, and any modification of this
Agreement shall be in writing and shall be signed by a duly authorized
representative of each party. There are no
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understandings, representations or warranties with respect to the subject matter
hereof, except as herein set forth, and no rights are granted hereunder except
as expressly set forth herein.
The parties hereto have duly executed this Agreement.
LICENSOR:
BROOKHAVEN SCIENCE ASSOCIATES LLC
By /s/ Illegible
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Title Patent Counsel
----------------------
Date 7/21/03
-----------------------
LICENSE:
By /s/ ?????CEO circle Group Holdings, Inc.
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Title CEO
-------------------------------------
Date 7/22/03
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