THIS AGREEMENT is made the 24th day of June 1999 BETWEEN:
(1) SOIL WASH TECHNOLOGIES, INC. whose principal place of business is at 000
Xxxxx Xxxxxxx Xxxxxx, Xxxxx 000, Xxxxxxxx, Xxxxxxxxxx XXX 00000 ("The
Grantor") and
(2) SITE REMEDIATION SERVICES LIMITED whose principal place of business is at
Site Remediation Services Limited, Kings House, 00 Xxxxxxx Xxxxxx, Xxxxxxx,
XX0 0XX ("the Licensee")
IT IS AGREED as follows:
1. Definitions
The following terms shall have the following meanings:
"Accounting Period" each 4 week period of the Term beginning on the date
when the Plant is commissioned
"Commencement Date" the date of this Agreement
"Development Programme" the programme of research and development carried
on by the Grantor in respect of the Know-how
"Improvement" any more efficient system or apparatus for use on or with the
production of the Products or connected to the Know-how or System
"Initial Sum" the sum payable under clause 8.5
"Know-how" the chemicals and the oral and written instructions, diagrams
and similar information relevant to the use of the Plant, its controlling
apparatus and in order to manufacture and use of the System
"System" the processes which use the Know-how for the purpose of cleaning
contaminated land developed by the Generator
"Term" Perpetuity or any shorter period determined in accordance with terms
of this Agreement.
"Termination Date" the date of the termination of this Agreement
"Territory" the United Kingdom of Great Britain and Northern Ireland and
the Republic of Ireland
2. Recitals
2.1 The Grantor had developed the technology relating to and is the
exclusive possessor of the Plant, the Know-how and the System which is
had acquired in this connection.
2.2 The Licensee wishes to be exclusively licensed to use the Plant
Know-how and the System in the Territory
3. Grant
3.1 The Grantor agrees that in consideration of the Licensee's payments
and undertakings in accordance with this Agreement the Licensee
exclusively may use or manufacture the Know-how the Plant and the
System during the Term in the Territory
1
3.2 The Grantor shall not during the Term communicate the use of Know-how
the System or the Plant to any other party in the Territory
4. Initial training and support
4.1 The Grantor will arrange for the personal instruction of the
Licensee's personnel in the Know-how the System and the use of
the Plant by qualified members of the Grantor's staff at the
Grantor's premises
4.2 Such instruction shall be limited to two employees for 30 days
for no charge such instruction to be agreed between the parties
4.3 The Licensee's trainees shall be given an adequate opportunity to
study the Know-how, the System and the Plant and they may be
permitted to make notes and sketches
4.4 The Grantor's obligation to send skilled persons to the
Licensee's premises, whether for the purpose of assisting in the
start-up of the Licensee's manufacture of the Products or so as
to render to the Licensee assistance after start-up, shall be
limited to such reasonable number of suitably qualified persons
as can be released by the Grantor so as to cause minimum
interference with the Grantor's operations and current
commitments consistent with satisfying the reasonable needs to
the Licensee.
4.5 Persons sent by the Generator to the Licensee's premises to
assist the Licensee shall be furnished by Licensee with suitable
working facilities, clerical services and proper equipment,
materials and tools to enable any such person properly and
efficiently to perform their duties.
4.6 All such personnel of the Grantor shall maintain strict
confidentiality with regard to all aspects of the Licensee's
business coming to their knowledge save to the extent that duties
as employees of the Grantor may require their disclosure to the
Grantor.
4.7 Employees of either party visiting the premises of the other
party must be acceptable to the host party by exhibiting
reasonable standards of character behavior and competence and
they shall be required to conform to rules and customs generally
accepted as laid down by the host party for its own employees or
especially for visitors so far as those may be applicable.
4.8 Licensee shall pay the expense of its employees sent to Grantor's
facility for training, including travel, subsistence, and salary
expense. Licensee shall pay the reasonable cost of travel,
subsistence, and salary expense. Licensee shall pay the
reasonable cost of travel, subsistence, and salary of employees
of Grantor if Grantor's employees are required to work in the
Territory for any reason, including training or work in
connection with individual projects.
4.9 To the extent that the Grantor has the information in its
possession or control the Grantor will provide the Licensee all
information the Licensee may reasonably request from time to time
the Licensee to meet its business objectives in connection with
individual projects and generally
5. Protection of the Know-how
The Licensee agrees:
5.1 not at any time during or after the Term to divulge or allow to be
divulged to any person the Know-how System or the Plant or any other
2
confidential information imparted to it by the Grantor other than to
persons who have signed secrecy undertakings in the form approved by
the Grantor;
5.2 not to permit any person to act or assist in the business of the
Licensee until such person has signed such and undertaking;
5.3 that all aspects of the Know-how System or Plant shall be treated as
confidential information by the Licensee and:
5.3.1 shall be disclosed only those employees or sub-contractors of
the Licensee whose duties cannot be fulfilled without such
disclosure and then only to the extent necessary to enable them
to perform such duties;
5.3.2 visitors to the premises where drawings or other elements of the
Know-how System or Plant are present or are in use shall be
restricted so far as necessary to minimize disclosure of all
elements of the Know-how System or Plant;
5.3.3 the obligation of confidence shall continue after the end of the
Term until the Know-how System or Plant are in the public
domain; and
5.3.4 notwithstanding the obligation of confidence imposed under the
terms of this Agreement it shall not be breach of this Agreement
for either party to disclose in general terms relevant items of
the Know-how System or Plant to customers or potential customers
so far as it is bona fide necessary to do so in order to promote
sales.
6. Further provision for protection of the interests of the Grantor
The Licensee further agrees:
6.1 not to use the Know-how otherwise than as permitted by this Agreement;
6.2 on the expiry of this Agreement forthwith to cease to use the Know-how
System or Plant save as expressly authorized by the terms of this
Agreement or by the Grantor in writing;
6.3 not to apply for registration of any patent trade name or designation
associated with the Grantor as a patent trade xxxx or service xxxx but
to give the Grantor at Grantor's expense any assistance it may require
in connection with the registration of any such patent trade name or
designation as a trade xxxx in any part of the world and not to
interfere with in any manner nor to attempt to prohibit the use or
registration of any such patent trade name or designation by any other
licensee of the Grantor;
6.4 when required to do so to become a registered user of any trade xxxx
registered in respect of the Products and to pay the expenses
including registry fees involved in such registration an user;
6.5 not to tamper with any markings or name plates or other indication of
the source of origin of the Plant or any part of it which may be
placed by the Grantor on the Plant or upon the containers and
packaging in which any element of the System or Plant may be supplied;
6.6 not to use any name or xxxx similar to or capable of being confused
with any trade name or designation associated with the Grantor;
6.7 not to use any trade name or designation associated with the Grantor
or any derivation of them in its corporate name.
3
7. Improvements
7.1 Grantor agrees to maintain and support its development programme at
Grantor's discretion.
7.2 Each of the Parties shall notify the other of any Improvement which it
contemplates or develops, and subject to clause 7.4 shall, if required
by the other to do so, grant to the other a non-exclusive license to
use such Improvement.
7.3 Subject to clause 7.5 the Licensee shall have the right to use such
Improvement which shall be deemed to be part of the Know-how System or
Plant as appropriate.
7.4 Any notice of an Improvement shall be accompanied by a statement as to
intention to apply or not to apply for patent protection in respect of
such improvement and if to apply in which countries.
7.5 Where a party notifies the other of its intention to seek patent
protection in respect of such Improvement the recipient shall keep all
information communicated to it in respect of such Improvement as
confidential and take all such steps as will ensure that any patent
shall not be prejudiced by prior publication or similar defect.
7.6 If either Party obtains a patent in respect of any Improvement it
shall grant a license of it to the other at the expense of the grantee
upon terms which comply with an EC or other relevant competition law.
7.7 The Grantor shall have the right of first refusal of any research an
development study in respect of any Improvement where the carrying out
such a sturdy and the confidentiality associated with the Product
requires that such research and development should bot be carried out
by third parties.
7.8 The Plant shall be deemed satisfactorily commissioned from the dated
on the Grantor had transferred to Licensee all Know-how and System
design information which the Grantor has in it possession. The
Licensee shall have the right to photograph the system, make detailed
notes and drawings of the system, record chemical names and
concentrations used in the system, and obtain details of the plant and
system, including schematics and drawings, that the Licensee may, at
the Licensee's discretion, deem useful.
7.9 If opportunities to manufacture Plant arise in connection with any
project undertaken by the Licensee, the Grantor will be given right of
first refusal to manufacture the same in accordance with
specifications provided by Licensee provided that the Licensee shall
not be obliged to contract with the Grantor for the manufacture of
Plant unless Grantor can do so at a price reasonably competitive in
the relevant place.
8. Payments and shipment
8.1 For the supply of the Know-how and the System by the Grantor to the
Licensee and for the technical assistance provided by the Grantor to
the Licensee under the terms of this Agreement the Licensee shall pay
to the Grantor the sum of US $1.65 per short ton (2,000 lbs.) (to be
adjusted annually, on the anniversary of the date of this agreement,
in line with (pound)/US$ exchange rate so that the royalty payable for
the following year shall be the US dollar equivalent of (pound)1) of
earth successfully treated by the Know-how System or Plant by the
following installments and in the following manner:
8.2 The Licensee shall open a trust account for the benefit of the Grantor
at a bank to be nominated by the Grantor.
8.3 Following each relevant payment by the customer of the Licensee, the
Licensee shall designate a sum representing the fee mentioned in 8.1,
(net of any relevant taxed or levies) as represents that fee for the
then successfully treated number of tonnes of earth and pay the same
into the said trust account.
4
8.4 On dates and in a manner notified by the Grantor from time to time,
the Licensee agrees to pay such sum out of that available pursuant to
clause 8.3 to the Grantor, net of any deductible or chargeable taxes
or levies.
8.5 In addition to other payments in clause 8, the Licensee shall pay to
the Grantor one sum of US $33,000 concurrent with or in advance of the
transfer of the Know-how and Plant design.
8.6 The Licensee guarantees that during the twelve month period commencing
on the earliest of the date when the Plant is successfully
commissioned and the first anniversary of the date of this agreement
that it will treat at least 25,000 tonnes of earth and in relation to
each successive twelve month period will pay Grantor US $50,000 by the
end of the first four months of the relevant year as an advance
against the sums due under 8.1. If the Licensee fails to either treat
such volume of earth or pay such sum for good commercial reasons, the
parties will meet to discuss and agree any possible variations to the
terms of this agreement.
9. Accounting provisions for continuing fees
9.1 The Licensee shall on the first day of the third week after the end of
each Accounting Period render to the Grantor a statement showing all
uses of the Plant Know-how and System made by the Licensee during such
accounting period together (if requested in writing in accordance with
clause 8) with payment of the fees due in respect of such sales and
dispositions.
9.2 The Licensee shall keep proper books of account and records and
vouchers showing all matters connected with the manufacture sale
disposition or use of the Products the Know-how and the System and the
continuing fees due in respect of them.
9.3 The Licensee shall allow the Grantor by its duly appointed officers or
accountants at all reasonable times to inspect and take copies of or
extracts from such books, records, vouchers and any other apparently
relevant document as may be reasonably necessary for the purpose of
verifying the amount due in respect of the continuing fees, and for
that purpose shall produce to such officer or accountant all value
added tax receipts and returns or equivalents in respect of any
similar tax.
9.4 Such inspection may be made at any reasonable time and notwithstanding
termination of this Agreement.
10. Termination
10.1 General
This Agreement shall terminate:
10.1.1 on the occurrence of any of the following events which are
fundamental breaches of this Agreement failure to comply with
the terms of any Default Notice as defined in clause 10.2
within the time stipulated;
10.1.2 if the Licensee goes into liquidation, either compulsory or
voluntary (save for the purpose of reconstruction or
amalgamation), or if a receiver, administrative receiver or
administrator is appointed in respect of the whole or any part
of its assets, or if the Licensee makes an assignment for the
benefit of or composition with its creditors generally or
threatens to do any of these things, or it any similar
occurrence under any jurisdiction affects the Licensee;
10.2 Default Notice
In the event of a material breach by the Licensee of any of the
provisions of this Agreement above the Grantor may serve notice
5
requiring the breach to be remedied within a reasonable time
stipulated in that notice, but nothing in this clause shall require
the Grantor to serve notice of any breach before taking action in
respect of it.
11. Termination consequences
11.1 Procedure
On the expiry or other termination of this Agreement the Licensee
undertakes:
11.1.1 to dispose of all Plant and information relating to the
Know-how and the System in hand in accordance with the
Grantor's directions;
11.1.2 to return to the Grantor all samples and publicity, promotional
and advertising material
11.1.3 to return to the Grantor all originals and copies of all
documents, computer software and information in any form
containing or covering in any way any part of the Know-how;
11.1.4 forthwith to cease carrying on the activities permitted by this
Agreement;
11.1.5 to pay to the Grantor the balance of all continuing fees due
under clause 10 above and fees on all Plant disposed of in
accordance with the Grantor's directions under the provisions
of this clause.
11.2 Existing rights
The expiry or termination of this Agreement shall be without prejudice
to any rights which have already accrued to either of the parties
under this Agreement.
12. Inspection
The Licensee shall use its reasonable endeavors to permit the Grantor's
employees and duly appointed agents access to the premises where the Plant
is located or the System or Know-how used at all reasonable times and
without prior notice for the purpose of monitoring the Licensee's
compliance with the terms of this Agreement.
13. General
13.1 Currency
Any sum due under the provisions of this Agreement shall be expressed
and pain in US dollars as shall be converted into the same at the
official rate of exchange in London at the close of business on the
last day of the calendar month during which the Products were sold or
relevant tonne of earth cleaned.
13.2 Warranty of power to enter Agreement
13.2.1 Each of the parties warrants its power to enter into this
Agreement.
13.2.2 The Grantor warrants to the Licensee that it exclusively and
absolutely owns and will, so far as it is aware, remain owning
during the term of this agreement the rights which it purports
to grant to the Licensee hereunder and knows of no reason or
circumstance why the Licensee may not be able to have free and
unfettered rights to use those System, Plant or Know-how which
this agreement grants to the Licensee as anticipated by this
6
agreement and the Grantor further agrees to indemnify the
Licensee against all costs, claims, damages, losses or expenses
including all consequential losses suffered by it in the event
that this warranty is breached or proves to be untrue to any
degree.
13.3 Sale of Plant
13.3.1 If at any time the Licensee wishes to sell, transfer, assign or
otherwise part with the Plant or any interest in it the
Licensee shall immediately give notice of that desire to the
Grantor and offer by notice in writing to the Grantor to sell
the same to the Grantor.
13.3.2 If the Grantor accepts such offer within 60 days the Licensee
shall sell and the Grantor shall purchase the Plant for the
consideration and on the conditions ascertained as set out
below and such sale and purchase shall be completed within 30
days of the date of acceptance or the date on which the price
becomes ascertained later.
13.3.3 The price and the conditions of such sale and purchase shall be
as agreed between the parties, the price representing the net
market value of the Plant and the conditions shall be such as
in the circumstances would be normal and reasonable. In the
event of a failure to agree on the price and conditions these
shall be settled by a chartered accountant chosen by the
parties or (in the event of a failure to agree on the choice of
a chartered accountant within 14 days) by the President for the
time being of the Institute of Chartered Accountants in England
and Wales, and such chartered accountant shall act as an expert
and not as an arbitrator and his decision shall be conclusive
and binding on the parties and the costs of such chartered
accountant in certifying as above shall be shared equally by
the parties.
13.3.4 On sale or transfer by the Licensee of the Plant the rights of
the Licensee, in so far as they relate to such assets so
disposed of, shall terminate but without prejudice to the
existing obligations of the Licensee.
13.3.5 If within 60 days of receipt of such notice the Grantor has not
indicated to the Licensee its acceptance of such offer the
Licensee shall be free within 3 months of such notice to sell,
transfer, assign, lease or sublet or otherwise part with the
Plant and clause 13.3.3 shall apply.
13.3.6 No third party who acquires the Plant or any interest in it
shall receive disclosure of the Know-how or any part or it
unless such person has been approved by the Grantor and had
agreed to be bound by the terms and conditions set by the
Grantor.
13.4 Interest
All sums due from either of the parties to the other which are not paid on
the due date (without prejudice to the rights of the Grantor under this
Agreement) shall bear interest from the day to day at the annual rate of
18% (or the maximum rate allowed by law).
13.5 Force majeure
If either party is prevented from fulfilling its obligations under this
Agreement by reason of any supervening event beyond its control, including
(but not by way of limitation) war, national emergency, flood, earthquake,
strike or lockout (other than a strike or lockout induced by the party so
incapacitated), then:
13.5.1 the party unable to fulfill its obligations shall immediately give
notice of such event to the other party and shall do everything in
its power to resume full performance;
7
13.5.2 subject to clause 13.5.1 neither party shall be deemed to be in
breach of its obligations under this Agreement;
13.6 Whole Agreement
This Agreement contains the whole agreement between the parties and
supersedes any prior written oral agreement between them in relation to its
subject matter and the parties confirm that they have not entered into this
Agreement on the basis of any representations that are not expressly
incorporated into this Agreement.
13.7 No modification
This Agreement may not be modified except by an instrument in writing
signed by both of the parties or their duly authorized representatives.
13.8 Headings
Headings contained in this Agreement are for reference purposes only and
shall not be incorporated into this Agreement and shall not be deemed to be
any indication of the meaning of the clauses to which they relate.
13.9 Governing law
13.9.1 This Agreement shall be governed by the law of the State of
California. U.S.A. in every particular including formation and
interpretation and shall be deemed to have been made in California.
13.9.2 Any proceedings arising out of or in connection with this Agreement
must be brought in any court of competent jurisdiction in
California.
13.9.3 Any notice of proceedings or other notices in connection with or
which would give effect to any other method of service be served on
any party in accordance with clause 13.10 below.
13.9.4 The address for service of the Grantor shall be the address set out
at the head of this Agreement.
13.10 Notices
13.10.1 Any notice, consent or the like (in this clause referred to
generally as "notice") required or permitted to be given under
this Agreement shall not be binding unless in writing.
13.10.2 Notice may be given personally or sent to the party to be
notified by pre-paid first class post, or by electric mail or
facsimile transmission, sent to its address or number as set
out above or otherwise notified for the purposes of this
clause 13.
13.10.3 Notice given personally shall be deemed given at the time of
delivery.
13.10.4 Notice sent by post in accordance with this clause shall be
deemed given at the commencement of business on the seventh
business day next following its posting.
13.10.5 Notice sent by electronic mail or facsimile transmission in
accordance with this cause shall be deemed given at the expiry
of 24 hours from the time of transmission to the correct
electronic mail or facsimile number of the addressee.
8
13.11 Waiver
The failure by either party to enforce at any time or for any period
any one or more of the terms or conditions of this Agreement shall not
be a waiver of them or of the right at any time subsequently to
enforce all the terms and conditions of this Agreement.
13.12 Interpretation
Unless the context otherwise requires:
13.12.1 words importing the singular number shall include the plural
and vice versa;
13.12.2 words importing any particular gender shall include all other
genders;
13.12.3 reference to persons shall include bodies of persons whether
corporate or incorporate.
13.13 Survival of terms
The warranties and indemnities contained in this Agreement and the
provisions for payment of and accounting in respect of continuing fees
and other sums due to the Grantor under this Agreement shall survive
the termination or expiry of this Agreement.
13.14 VAT
All sums payable to the Grantor under this Agreement are exclusive of
valued added tax which shall, where applicable, be paid in addition at
the rate in force at the due time for payment subject to the Grantor
either supplying a VAT invoice to the Licensee or informing the
Licensee of his VAT registration number.
13.15 No agency or partnership
The Parties are not partners or joint ventures nor is the Licensee
entitled to act as the Grantor's agent nor shall the Grantor be liable
in respect of any representation act or omission of the Licensee of
whatever nature.
13.16 Severance
In the event that any provision of this Agreement is declared by any
judicial or other competent authority to be void, voidable, illegal or
otherwise unenforceable or indications of the same are received by
either of the parties from any relevant competent authority the
parties shall amend that provision in such reasonable manner as
achieves the intention of the parties without illegality
13.17 Sub Contracting
The Licensee may allow the use of the Know-how, System or Products to
a third party where necessary for the fulfillment of any obligations
sub-contracted to such third party by the Licensee provided that the
Licensee shall first take full account of any representations the
Grantor may have in relation to the same.
9
IN WITNESS to the agreement set out above the parties have caused this
agreement to be executive below.
Signed by for and on behalf of Soil Wash Technologies, Inc.
/s/ Xxxx X. Kitchen Date: June 24, 1999
-------------------------------------- -------------
Xxxx X. Kitchen, Senior Vice President
Signed by for and on behalf of Site Remediation Services Limited
/s/ Xxxx Xxxxxx
--------------------------------------
10
