STM/GSI-OCEAN POWER LICENSING AGREEMENT
THIS AGREEMENT (hereinafter "Agreement"), made on the Effective Date as
defined herein, is by and between Ocean Power Corporation ("OCEAN POWER"), a
Delaware corporation having a principal place of business at 5000 Xxxxxx X.
Xxxxxxx Xxxxxxx, Xx Xxxxxx Xxxxx, Xxxxxxxxxx 00000, and STM Corporation ("STM"),
a Delaware corporation having a principal place of business at 000 Xxxxx Xxxxx,
Xxx Xxxxx, Xxxxxxxx 00000, which is owned by General Stirling, Inc. ("GSI"), a
Michigan Corporation having a principal place of business at 000 Xxxxx Xxxxx,
Xxx Xxxxx, XX 00000 (collectively known as the "Parties").
WHEREAS, STM and/or GSI own and control rights to certain patented and
unpatented technology related to Stirling cycle heat engines as defined herein
as STM Technology; and
WHEREAS, OCEAN POWER desires to obtain from STM and GSI, and STM and
GSI desire to grant to OCEAN POWER, certain exclusive rights to the STM
Technology for specific applications;
NOW, THEREFORE, in consideration of the terms, conditions, and
agreements contained herein and other good and valuable consideration, the
receipt and sufficiency of which are hereby acknowledged, the Parties hereby
agree as follows:
Article 1
Definitions
As used in this Agreement, the following terms have the meanings set
out below and as further defined elsewhere in this Agreement.
1.1 "Affiliate(s)" means any entity:
a) in which STM, GSI or OCEAN POWER controls, or is under common
control, or is directly or indirectly owned by or under common
ownership to the extent of over fifty percent (50%) or more of
the voting shares, including shares owned beneficially by a
Party; or
b) which owns or controls STM, GSI or OCEAN POWER.
1.2 "Effective Date" of this Agreement is the date of complete execution by
both Parties of the signature page of this Agreement.
1.3 "Field" means seawater desalination.
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1.4 "Improvements" means any Technical Information which:
a) reduces production costs, improves performance, increases
service life, increases marketability, or improves the
appearance of Licensed Products;
b) any modification to Licensed Products which comes within the
scope of one or more claims of any STM Patent;
c) any product, apparatus, or process which is similar to,
competitive to, a substitute or alternative for, or
supplements or complements Licensed Products;
d) any invention or discovery of any new apparatus or method for
producing Licensed Products, or
e) any new product which may be produced as Licensed Products.
1.5 "Licensed Product(s)" means:
(i) STM Power Cells, parts, components or sub-assemblies thereof,
or
(ii) a power module, parts, components, complete, partial
assemblies thereof, incorporating products practicing or
incorporating STM Technology for any desalination system sold
by OCEAN POWER, its Affiliate(s) or approved sublicensees
where such power module is a complete system for producing
electricity and/or heat for said desalination system.
1.6 "Licensors" means STM and/or GSI and any Affiliates of each of them.
1.7 "Net Selling Price" means the gross sales price of Licensed Products as
invoiced to OCEAN POWER's customers, less (i) any amount attributable
to the cost of printing, decorating, or labeling of any of the Licensed
Products, (ii) any transportation charges consisting of freight,
packaging expense, or shipping expense paid by OCEAN POWER, (iii) the
cost of insurance, (iv) discounts or commissions for quantity, (v)
returns, and (vi) any sales taxes, invoice taxes, or any other duties
or fees levied on sales paid by OCEAN POWER. In order to avoid any
doubt, and without limiting the generality hereunder, the Net Selling
price will be determined, under the applicable circumstances, from the
greater invoiced value of (a) STM Power Cells, parts, components or
sub-assemblies thereof, or (b) the power module, parts, components,
complete, partial assemblies thereof, incorporating products practicing
or incorporating STM Technology for any OCEAN POWER desalination system
where such power module is a complete system for producing electricity
and/or heat for said desalination system. OCEAN POWER will include any
Licensed Products as a line item on any invoice to its customers that
includes Licensed Products as a component thereof.
1.8 "North America and Western Europe" means the United States of America,
Canada, Mexico, the United Kingdom, Germany, France, Spain, Portugal,
Denmark, Norway, Sweden, Finland, Iceland, Italy, Malta, and The
Netherlands.
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1.9 "STM Patents" means all patents issued in the United States or any
foreign country, or any applications for patents, including any patents
of addition, utility models, utility patents, design patents,
re-issues, divisions, continuations, or the like: (i) owned by
Licensors on the Effective Date or during the term of this Agreement
and (ii) to which Licensors have rights during the term of this
Agreement that may be granted, transferred or otherwise conveyed to
OCEAN POWER without violating the terms of any obligations with respect
to third parties. A current list of STM Patents is attached hereto as
Schedule A.
1.10 "STM Power Cell" means a heat engine incorporating STM Technology
including a displacer, regenerator, cooler and heater, and using a
gaseous working fluid, or components for such an engine. This
definition specifically includes, but is not limited to, the existing
STM Model 4-120 engine.
1.11 "STM Technical Information" means Technical Information owned by or in
the lawful possession of Licensors.
1.12 "STM Technology" means any STM Patents and STM Technical Information
owned by and/or in the lawful possession of Licensors.
1.13 "Technical Information" means inventions, trade secrets, confidential
information, and know-how applicable within the Field on the Effective
Date or during the term of this Agreement which the Licensor has the
legal right to convey. Technical Information includes, but is not
limited to, research, engineering and manufacturing information,
information with respect to environmental and safety requirements,
analytical procedures and techniques, operating procedures, maintenance
practices, design information on manufacturing facilities and
equipment, machinery and equipment specifications, product test
methods, drawings, product production processes, computer files,
product information and other general information related to the
Licensed Products.
Article 2
Grant of Rights
2.1 Principal Rights Licensed: STM hereby grants to OCEAN POWER the
exclusive, worldwide right and license to make, have made in North
America and/or Western Europe, use, install, and sell Licensed Products
within the Field for the term of this Agreement. Notwithstanding OCEAN
POWER's right to have Licensed Products made pursuant to this
Agreement, no unconditional right to sublicense is granted to OCEAN
POWER. Licensors agree, however, to consider in good faith any written
request from OCEAN POWER for Licensors' consent for OCEAN POWER to
sublicense the rights granted to OCEAN POWER herein (other than OCEAN
POWER's right to have made Licensed Products hereunder) under this
Agreement. Any sublicensing by OCEAN POWER (other than its right to
have made Licensed Products hereunder) under this Agreement shall only
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take place with the consent of Licensors pursuant to a separate written
agreement among the Parties hereto. Licensors agree that they will not
unreasonably withhold or delay such consent to sublicense and will
negotiate said separate agreement(s) with diligence and in good faith.
2.2. Rights to Improvements: The grant of rights provided by paragraph 2.1,
shall include rights to Improvements owned by Licensors. OCEAN POWER
hereby grants Licensors with rights to sublicense, a non-exclusive,
worldwide right and license to make, have made, use, install and sell
products encompassing Improvements discovered or owned by OCEAN POWER
("OCEAN POWER Improvement(s)") during and for the term of this
Agreement with rights to sublicense.
2.3 Reserved Rights of Licensors: This Agreement shall not restrict
Licensors' rights to engage in research and development with respect to
STM Technology or engage in any other activity which is not
inconsistent with this Agreement. If Licensor produces STM Power Cells
for commercial utility applications having performance capabilities
comparable with Licensed Products, or licenses rights for such
applications, Licensor will notify the third party purchasers or
licensees in writing of OCEAN POWER's exclusive rights under this
Agreement.
Article 3
Parts
3.1 OCEAN POWER, its Affiliates and licensees will have the right to
purchase from Licensors parts for the Licensed Products (including STM
Power Cells) if available for delivery anywhere in the world at prices
to be negotiated between the Parties, which price shall in no event
exceed the Licensors' current lowest quoted sales prices.
Article 4
Term of Agreement
4.1 This Agreement shall become effective as of the Effective Date and
shall continue in effect for a period of thirty (30) years from the
Effective Date. However, the Grant of Rights pursuant to Article 2 and
the Technology Transfer pursuant to Article 10 shall become effective
when:
a) STM and/or GSI has/have not merged with OCEAN POWER by June 1,
2000. For this provision "merged" refers to the consolidation
of STM or GSI and OCEAN POWER into a single legal entity;
and
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b) Payment of five hundred thousand dollars ($500,000) has been
paid by OCEAN POWER to STM which shall be considered a
non-refundable royalty payment recoupable against future
royalties.
4.2 Upon termination of this Agreement, by expiration or otherwise, all
licenses, rights, privileges and obligations hereunder shall cease and
terminate except that the licenses and rights granted under Article 2
hereof shall continue as to all Licensed Products manufactured, or
actually in manufacture, during the term of this Agreement by OCEAN
POWER or by any of its Affiliates or licensees, for the full term of
the STM Patents and life of the Licensed Products, except that no
termination of this Agreement by expiration or otherwise will release
OCEAN POWER from any of its obligations accrued hereunder.
Article 5
Default
5.1 Default by OCEAN POWER: OCEAN POWER will be deemed in default under
this Agreement if a) OCEAN POWER fails to pay any amount due and
payable under this Agreement within sixty (60) days after written
notice that the same has become due and payable; b) OCEAN POWER becomes
insolvent, bankrupt, or any of its assets are seized or placed in trust
for the benefit of creditors and such insolvency, bankruptcy or seizure
is not dissolved or cured in sixty (60) days; d) OCEAN POWER fails to
perform any other obligation required to be performed by OCEAN POWER
under this Agreement or to cure, or begin to effect a cure for any such
failure, within sixty (60) days after written notice from Licensors
that the time herein provided for such performance has passed.
5.2 Default by Licensors: Licensors will be deemed in default under this
Agreement if Licensors fail to perform any obligation required to be
performed by Licensors under this Agreement or to cure any such failure
within sixty (60) days after written notice from OCEAN POWER that the
time herein provided for such performance has passed.
5.3 Remedy for Default: Each of the Parties may pursue any remedy under
this Agreement or otherwise available, based on the default of the
other Party.
Article 6
Royalties
6.1 Royalties:
a) OCEAN POWER will pay a royalty of ten percent (10%) of the Net
Selling Price to Licensors (the "Royalty") until one million
dollars ($1,000,000) has been paid in any annual period from
the Effective Date. In the event that Royalties for any annual
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period from the Effective Date exceed one million dollars
($1,000,000), additional royalties incurred in such annual
period will be reduced to seven-and-one-half percent (7.5%) of
the Net Selling Price. In the event that Royalties for any
annual period from the Effective Date exceed five million
dollars ($5,000,000), additional royalties incurred in such
annual period will be reduced to five percent (5.0%). However,
Royalty payments will not be required for Licensed Products
used for demonstration, testing or development purposes only
by OCEAN POWER, its Affiliates or approved sublicensees.
b) Licensors will pay OCEAN POWER fifty percent (50%) of any
license royalty or amount(s) of a similar nature Licensors
receive from any third party to make, use, install and/or sell
OCEAN POWER Improvement(s) to the extent that such amounts are
attributable to the OCEAN POWER Improvement(s), as the Parties
shall negotiate in good faith to agree. Where Licensors enter
into an agreement or other arrangement with a third party that
includes a license or right to make, use, install and/or sell
OCEAN POWER Improvement(s) without negotiating, or before
completing negotiations, with OCEAN POWER as to the
appropriate amount OCEAN POWER shall receive, it will be
presumed that the amount is completely attributable to the
OCEAN Power Improvements and Licensors shall pay-over to OCEAN
POWER fifty percent (50%) of any amount Licensors receive from
such third party within forty-five (45) days of Licensors'
receipt of such license royalty or amount(s) of a similar
nature.
6.2 Time of Payment of Royalties: All Royalty payments will be payable
within ninety (90) days of shipping of a Licensed Product.
6.3 Minimum Annual Royalty Payments: In order to maintain the exclusive
license rights granted OCEAN POWER in this Agreement, OCEAN POWER's
aggregate minimum annual Royalty payments to Licensors made by the
indicated due dates (the "Minimum Annual Royalty Payments") shall match
or exceed the following:
Year Anniversary Minimum Annual Royalty Due Date
================== ======================== ==========================
Year 1 $ 500,000 Effective Date
------------------ ------------------------ --------------------------
Year 2 $ 500,000 One year after the
Effective Date
------------------ ------------------------ --------------------------
Year 3 $1,500,000 Two years after the
Effective Date
------------------ ------------------------ --------------------------
Year 4 $2,000,000 Three years after the
Effective Date
------------------ ------------------------ --------------------------
Year 5 $3,000,000 Four years after the
Effective Date
------------------ ------------------------ --------------------------
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Licensors acknowledge that the five hundred thousand dollar ($500,000)
payment from OCEAN POWER to Licensors provided in subparagraph 4.1(b)
shall be in lieu of the Minimum Annual Royalty Payments for Year 1 of
this Agreement. The Parties will negotiate in good faith any future
Minimum Annual Royalty Payments by OCEAN POWER after Year 5 for the
remainder of the term of this Agreement necessary to maintain the
exclusive license rights granted to OCEAN POWER herein, however, such
amounts shall not fall below the amount agreed upon for Year 5. Such
amount will be determined by taking into consideration Licensors'
ability to provide, procure and maintain sufficient manufacturing
capacity to satisfy OCEAN POWER's demonstrable demand for Licensed
Products. In any event: (a) Royalty payments made that exceed the
Minimum Annual Royalty Payments in any year will be credited toward
Minimum Annual Royalty Payments due in subsequent years; and (b)
Minimum Annual Royalty Payments may be deferred if Licensors are unable
to provide, procure and maintain sufficient manufacturing capacity to
satisfy OCEAN POWER's demonstrable demand for Licensed Products during
those years, or that Licensor has failed to transfer STM Technology
necessary for OCEAN POWER to obtain alternate sources of Licensed
Products and that such inability or failure materially affects OCEAN
POWER's ability to achieve Net Sales at a level necessary to meet the
Minimum Annual Royalty applicable in any annual period. Such deferral
shall equal the time duration necessary for OCEAN POWER to obtain
suitable alternate suppliers for Licensed Products, but shall in no
event exceed two (2) years.
6.4 Non-exclusivity: In the event that OCEAN POWER fails to make the
Minimum Annual Royalty Payments specified in paragraph 6.3, then all
rights granted in this Agreement shall remain effective except that
OCEAN POWER's license shall become non-exclusive and remain in all
other aspects as provided herein. If OCEAN POWER has allowed this
Agreement to lapse into non-exclusivity, Licensor shall have the right
to negotiate a new exclusive license with a third party, provided that
Licensor makes its best efforts to have a most favored pricing clause
included for OCEAN POWER'S benefit in such new exclusive license
agreement. Upon execution of such new license agreement by Licensors
and its new licensee, OCEAN POWER shall, except as otherwise provided
in this Agreement, relinquish its rights to the Licensed Products for
the term of such new exclusive license.
6.5 Maintenance of License. In the event that OCEAN POWER's rights become
non-exclusive pursuant to Article 6.5, such non-exclusive rights shall
be maintained unless Royalty Payments paid by OCEAN POWER are less than
twenty-five percent (25%) of the amounts specified as Minimum Royalty
Payments for any two (2) consecutive annual periods. In such event,
Licensors shall have the right to terminate license rights.
6.6 Wire Transfer: Payment of Royalties shall be made by wire transfer
payable to STM's account in the bank identified below or as otherwise
requested by Licensors in writing:
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Name of Bank: Comerica Bank
Account No.: 0000-00000-0
Address of Bank: X.X. Xxx 00000
Xxxxxxx, XX 00000-0000
Account Name: Stirling Thermal Motors, Inc.
Article 7
Confidentiality of Technical Information
7.1 Licensors and OCEAN POWER each acknowledge that, in the course of
performing their respective obligations hereunder, they will obtain or
come in contact with Technical Information of another Party. Each Party
will:
a) use another Party's Technical Information only in connection
with fulfilling such Party's obligations under this Agreement.
Officers, employees, agents or independent contractors of
OCEAN POWER or Licensors will be given access to the Technical
Information on a need to know basis. Each Party shall obtain
an agreement in a form satisfactory to the other Party or
Parties, as the case may be, from each such person to whom
such disclosure is made pursuant to which such person will
agree to be bound by the provisions of this Article 7,
including, but not limited to, any third parties OCEAN POWER
will have make any part of the Licensed Products. Each Party
hereto shall be responsible for any breach of these provisions
by it or any of its employees, officers, agents or independent
contractors. In the event that any Party hereto believes it is
compelled by law to disclose Technical Information of another
Party, it shall immediately notify the Party and shall
cooperate with any effort by the Party to obtain a protective
order or otherwise limit the disclosure of any such Technical
Information. These obligations shall extend for a period ten
(10) years from the date of disclosure; and
b) hold all of another Party's Technical Information in strict
confidence and exercise due care with respect to its handling
and protection, consistent with such Party's own policies
concerning protection of its confidential information of like
importance, but in no event less than reasonable care.
7.2 The obligations set forth in paragraph 7.1 will not apply to any
Party's Technical Information which:
a) now or later becomes generally known or available through no
act or omission by the receiving Party;
b) the receiving Party can demonstrate it independently developed
its technical information without the use of, or access to,
the information furnished to it by the disclosing Party;
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c) is or becomes publicly available through issued patents(s), or
other printed publications;
d) is hereafter disclosed to the disclosing Party by a third
party having no obligations of confidentiality to the
disclosing Party with respect to such information; or
e) was known to the receiving Party prior to its receipt from the
disclosing Party as established by written records of that
party.
7.3 The Parties may disclose the contents of this Agreement to lenders,
other financing sources and potential financing sources or as may be
required in filings with federal and/or state securities authorities
provided that such lenders and the other financing sources and
potential persons have a need to know and agree to be bound by a
confidential agreement acceptable to the Parties.
7.4 The provisions of this Article 7 shall survive for ten (10) years after
the end of the term or the termination of this Agreement.
Article 8
Records, Reports, and Audits
8.1 Records: OCEAN POWER will make and maintain accurate business records
according to generally accepted accounting principles showing the
number of units of Licensed Products made by or made for, and/or sold
by or for OCEAN POWER under this Agreement and scrap parts, returns,
and parts destroyed in shipment. Licensors will make and maintain
accurate business records according to generally accepted accounting
principles showing the amounts received by Licensors pursuant to
subparagraph 6.1(b). The Parties will maintain such records for a
period of three (3) years after the end of the calendar year in which
the Licensed Products or amounts described in such records are sold or
received, as the case may be.
8.2 Inspection: Upon a Party's written request, from time to time during
the term of this Agreement (but not more than once per year) and for
two (2) years thereafter, a Party will permit an independent Certified
Public Accountant selected by the other Party and acceptable to OCEAN
POWER or Licensors, as the case may be (acceptance not to be
unreasonably withheld), during normal business hours, to inspect all
the records (at the requesting Party's expense) which the Parties are
required to maintain pursuant to paragraph 8.1. Such records will be
considered Technical Information by the Parties and will be the subject
of a confidentiality agreement before disclosure to any independent
Certified Public Accountant. The independent Certified Public
Accountant shall report to the requesting Party (and simultaneously to
the Party whose records have been inspected) only the amount of any
discrepancy identified in the course of such audit.
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Article 9
Warranties and Representations
9.1 By Licensors:
a) STM and GSI represent and warrant that individually or
together they (i) have title, ownership and control of all
interests in and to the STM Patents or have the right, power
and authority to grant all licensed rights thereto, (ii) have
the right, power and authority to grant all licensed rights,
including rights to STM Technology and STM Technical
Information not covered by the STM Patents under this
Agreement, (iii) have the right, power and authority to enter
into this Agreement, and (iv) that Licensors' performance of
this Agreement will not violate any agreement between STM
and/or GSI and any third party.
b) Licensors represent and warrant that OCEAN POWER can
manufacture, have made, use, install and/or sell the Licensed
Products in the United States of America, so long as such
activities do not materially deviate from the STM Technology
without infringing or otherwise violating the patent,
copyright, trademark, service xxxx, trade secrets, design
rights or other intellectual or industrial property rights of
a third party. This warranty does not apply if manufacturing
processes or designs materially deviate from those used or
approved by Licensor.
c) Licensors represent and warrant that they have the requisite
and necessary Technical Information and expertise to repair,
maintain and service the Stirling cycle heat engines,
including STM Power Cells and any Improvements thereto, for
use with the Licensed Products.
9.2 By OCEAN POWER: OCEAN POWER represents and warrants that it has the
right, power and authority to enter into this Agreement and that OCEAN
POWER's performance of this Agreement will not violate any agreement
between OCEAN POWER and any third party.
Article 10
Technical Assistance and Technology Transfer
10.1 The Parties contemplate that OCEAN POWER may require technical
assistance from Licensors in order to achieve the objectives of this
Agreement. Accordingly, Licensors will make available to OCEAN POWER,
its Affiliates, licensees and their employees and agents, technical
consulting services for the mutual convenience of the Parties at
Licensors' lowest quoted consulting rates for such services.
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10.2 Licensors will provide disclosure of the STM Technology to OCEAN POWER
to the extent specified above. OCEAN POWER will bear the direct cost of
the transfer of the information, including technical assistance and
time required for the disclosure. Initial information to be provided to
OCEAN POWER by Licensor is that necessary for use and sale of the
Licensed Products. In the event STM cannot comply with OCEAN POWER's
demonstrable production, quality, and reasonable delivery requirements,
STM shall provide all such STM Technology as necessary for OCEAN POWER
to make, or have made, Licensed Products. Additional technology
transfer will be provided by STM to the extent as needed to carry out
the objectives of this Agreement throughout the term of this Agreement.
Article 11
Patent Maintenance
11.1 Licensors will continue to maintain responsibility (and costs
associated therewith) for filing, prosecution, and maintenance of the
STM Patents. In the event that Licensors desire to discontinue such
activity, OCEAN POWER will be provided an option to receive an
assignment of ownership for such patents and assume responsibility for
their continued maintenance or prosecution.
Article 12
Assignment
12.1 Nonassignability: Unless otherwise provided in this Agreement, no Party
shall be entitled to transfer, assign, convey, sell, encumber,
sublicense, or in any way alienate ("Transfer") all or any part of its
rights or obligations under this Agreement, except that a Party may at
any time Transfer all, but not less than all, of its rights and
obligations under this Agreement (a) to another Party to this
Agreement, (b) with the prior written consent of the other Parties,
such consent not to be unreasonably withheld or delayed, or (c) to any
entity that owns or acquires a controlling portion of the stock or
assets of such Party, and such rights and obligations may only be
Transferred by any such assignee subject to the provisions of this
Article 12. Transfers in violation of this Article 12 or in violation
of any other provision of this Agreement shall be void ab initio and of
no effect whatsoever.
Article 13
Covenants
13.1 Licensors covenant to disclose to OCEAN POWER on a reasonably prompt
basis all Improvements it or its Affiliates develop during the term of
this Agreement.
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13.2 OCEAN POWER covenants to disclose to Licensor on a reasonably prompt
basis all Improvements it or its Affiliates develop during the term of
this Agreement.
13.3 Licensors covenant, to the extent that any director, member, officer or
employee of Licensors or Affiliates or any agents thereof over which
Licensors has/have control (the "Licensors' Agent(s)") has or have
knowledge of the Field, including, without limitation, the STM Power
Cell, STM Technology, STM Technical Information and Improvements
thereof, that the Licensors' Agents will be available, and Licensors
will make Licensors' Agents available, to OCEAN POWER for consultation
regarding the Field and the Licensed Products during the term of this
Agreement.
Article 14
Integration
14.1 This Agreement sets forth the entire agreement and understanding
between the Parties as to the subject matter hereof and merges all
prior discussions between them. No Party shall be bound by any
warranties, understanding or representations with respect to such
subject matter other than as expressly provided herein or in a writing
signed with or subsequent to execution hereof by an authorized
representative of the Party to be bound thereby except as provided for
under the terms of that certain Letter of Intent between GSI and OCEAN
POWER, dated February 15, 2000 (the "Letter of Intent"). In the event
that any term of this Agreement is inconsistent or contrary to any term
of the Letter of Intent, this Agreement shall be controlling.
Article 15
Severability
15.1 If at any time during the term of this Agreement any provision hereof
proves to be or becomes invalid or unenforceable under any applicable
law, then such provision shall be deemed modified to the extent
necessary in order to render such provision valid and enforceable; if
such provision may not be saved, it shall be severed and the remainder
of this Agreement shall remain in full force and effect.
Article 16
Headings
16.1 The captions in this Agreement are for convenience only and shall not
be considered a part of or affect the construction or interpretation of
any provision hereof.
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Article 17
Relationship of the Parties
17.1 Nothing in this Agreement shall be construed as making any Party the
partner, joint venturer, agent, employer, or employee of another Party.
No Party shall have the authority to make any statements,
representations or commitments of any kind, or to take any action which
shall be binding on another, except as provided for herein or
authorized in writing by the Party to be bound.
Article 18
Authority and Enforceability
18.1 The signature of a Party's representative constitutes an express
representation that said representative has the authority to bind that
Party to the terms of this Agreement and that the Agreement is a
binding obligation of that Party, enforceable according to its terms.
Article 19
Communications
19.1 For the purpose of all written communications and notices between the
Parties, their addresses shall be:
Licensors: STM Corporation
000 Xxxxx Xxxxx
Xxx Xxxxx, Xxxxxxxx 00000
Attn: Xxxxxxx Xxxxxxxxx, President
and
OCEAN POWER: Ocean Power Corporation
5000 Xxxxxx X. Xxxxxxx Xxxxxxx
Xx Xxxxxx Xxxxx, Xxxxxxxxxx 00000
Attn: Xxxxxx X. Xxxxxx, President
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or any other addresses of which a Party shall notify the other Parties
in writing. All notices required or permitted to be given under this
Agreement shall be in writing and will be deemed effectively given upon
personal delivery or delivery by confirmed fax to the Party to be
notified or two (2) days after deposit with a recognized overnight
courier service with tracking capability to the above address(es).
Article 20
Force Majeure
20.1 No Party shall be held liable to another Party to perform its
obligations where such performance is prevented or interfered with by
riots, war or hostilities between any nation, acts of God, fire, storm,
flood, earthquake, strikes, labor disputes, shortage or curtailment of
raw materials, labor power or other utility services or any
governmental restrictions.
Article 21
Governing Law
21.1 All matters of construction, validity, and performance, shall be
governed by and construed and enforced in accordance with the laws of
the State of Delaware, as applied to contracts made, executed, and to
be fully performed in such state by citizens of such state, without
regard to its conflict of law rules. The Parties agree that any suit
brought in connection with this Agreement shall be brought in the
federal or state courts in Delaware. EACH PARTY HEREBY IRREVOCABLY
WAIVES ANY OBJECTION TO VENUE, INCLUDING AN OBJECTION BASED ON THE
GROUNDS OF FORUM NON CONVENIENS, THAT SUCH PARTY NOW HAS OR HEREAFTER
MAY HAVE TO THE BRINGING OF ANY ACTION OR PROCEEDING IN SUCH
JURISDICTION.
Article 22
Entire Agreement: Modifications
22.1 This Agreement contains the entire understanding of the Parties and
supersedes all previous communications, representations, or
understandings, either verbal or written, between the Parties
concerning this Agreement except as provided for under the terms of the
Letter of Intent. No changes, alterations, or modifications to this
Agreement shall be effective unless in writing and signed by all
Parties.
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Article 23
Waiver
23.1 No waiver of any right or remedy in respect to any occurrence or event
on one occasion will be deemed a waiver of such right or remedy in
respect of such occurrence or event on any subsequent occasion.
Article 24
Publications
24.1 In the event that a Party desires to publish or disclose to a third
party the terms of this Agreement, a description of the nature of the
relationship created by this Agreement, data, costs, or performance
attributes of any Licensed Products, such intent will be communicated
to the other Parties, and such publication shall be permitted only upon
prior agreement of all the Parties. Notwithstanding any agreement
between the Parties to the contrary, OCEAN POWER may publish that the
Parties' have entered into an exclusive licensing agreement for the STM
Technology in the Field.
Article 25
Supplier Relationship
25.1 Unless provided otherwise herein, OCEAN POWER will regard Licensors as
its preferred supplier for certain critical STM Power Cell-Specific
Components. STM Power Cell-Specific Components include: regenerator,
air preheater, variable swashplate actuator, and heater head. OCEAN
POWER will purchase such STM Power Cell-Specific Components from
Licensors provided that reasonable standards for quality, delivery, and
price are met by Licensors. Licensor will be the initial supplier to
OCEAN POWER for the Licensed Products, provided that reasonable
standards for quality, delivery, and price are met by Licensors. In the
event that Licensors cannot meet such reasonable requirements, third
party suppliers may be used to the extent provided by this Agreement.
Article 26
Patent Marking
26.1 OCEAN POWER agrees to xxxx all Licensed Products sold by it under the
license granted, with the word "Patent" or "Patents", and the number or
numbers of the STM Patent or STM Patents applicable thereto. Licensors
agree to do the same, or require the same from third parties, for
products that encompass OCEAN POWER Improvements patented during the
term of this Agreement.
15
Article 27
Infringement of Third Party's Intellectual Property Rights
27.1 Licensors will defend at their expense and indemnify and hold harmless
OCEAN POWER, its Affiliates and licensees, their officers, directors,
employees and agents from and against any third party claim(s) made
within the United States of America based on the laws of the United
States so long as such defendant materially complied with the STM
Technology, that any patent, trade secret, or other intellectual or
industrial property right, of the type exclusively licensed to or from
OCEAN POWER under Article 2 of this Agreement, of the claimant are
infringed by any manufacture, use, installation and/or sale of the
Licensed Products. Licensors shall pay those amounts awarded against
OCEAN POWER or as a result of any such claim(s), or settlement thereof
that are attributable to such claim(s), provided that (i) OCEAN POWER
promptly notify Licensors in writing of any such claim(s); (ii)
Licensors shall be accorded control of the defense and of all
negotiations for settlement or compromise of such claim(s); and (iii)
OCEAN POWER cooperates with Licensors in the defense and settlement of
such claim(s). Licensors and OCEAN POWER shall mutually agree to the
terms of any settlement of any such claim(s) under this Article 27.
27.2 If any award or settlement is received as a result of any claim(s)
brought in connection with the rights granted in Article 2, any award
received shall be applied first to reimburse Licensors for their
litigation expenses, next to reimburse Licensors for royalties and
damages not paid by the alleged infringer, and any additional amounts
shall be shared equally by Licensors and OCEAN POWER.
27.3 Article 27 will survive the end or termination of this Agreement, but
only to the extent that such third party claims relate to activity
occurring during the term of this Agreement.
Article 28
Miscellaneous
28.1 Patent, Trademarks and Tradenames: No Party to this Agreement grants to
any other Party any rights in any patents, trademarks, service marks or
tradenames of such Party other than those rights specifically set out
in this Agreement.
THE REMAINDER OF THE PAGE IS INTENTIONALLY LEFT BLANK.
16
IN WITNESS WHEREOF, the Parties have executed this Agreement as of the
Effective Date, and this Agreement will be deemed dated as of such date.
STM CORPORATION
By:/s/
-----------------------------------
Name: Xxxxxxx Xxxxxxxxx
-----------------------------------
(typed or printed)
Title:President, CEO
Date: April 10, 2000
GENERAL STIRLING, INC.
By:/s/
-----------------------------------
Name: Xxxxxxx Xxxxxxxxx
-----------------------------------
(typed or printed)
Title:President, CEO
Date: April 10, 2000
OCEAN POWER CORPORATION
By:/s/
-----------------------------------
Name: Xxxxxx X. Xxxxxx
-----------------------------------
(typed or printed)
Title:President
Date: April 10, 2000
17
SCHEDULE A
STM PATENTS
U.S. Patents:
-------------
Patent
Number: Title:
============ =================================================================
5,938,207 Heat engine rod seal system
------------ -----------------------------------------------------------------
5,921,764 Heat engine combustor
------------ -----------------------------------------------------------------
5,884,481 Heat engine heater assembly
------------ -----------------------------------------------------------------
5,865,091 Piston assembly for stirling engine
------------ -----------------------------------------------------------------
5,864,770 Speed and power control of an engine by modulation of the
load torque
------------ -----------------------------------------------------------------
5,836,846 Electric swashplate actuator for stirling engine
------------ -----------------------------------------------------------------
5,813,229 Pressure relief system for stirling engine
------------ -----------------------------------------------------------------
5,771,694 Crosshead system for striling engine
------------ -----------------------------------------------------------------
5,758,938 Solar concentration elevational drive mechanism
------------ -----------------------------------------------------------------
5,735,262 Solar energy diffuser
------------ -----------------------------------------------------------------
5,722,239 Stirling engine
------------ -----------------------------------------------------------------
5,706,659 Modular construction stirling engine
------------ -----------------------------------------------------------------
5,611,201 Stirling engine
------------ -----------------------------------------------------------------
5,388,409 Stirling engine with integrated gas combustor
------------ -----------------------------------------------------------------
5,074,114 Congeneration system with a stirling engine
------------ -----------------------------------------------------------------
4,996,841 Stirling cycle heat pump for heating and/or cooling systems
------------ -----------------------------------------------------------------
4,994,004 Electric actuator for swashplate
------------ -----------------------------------------------------------------
4,977,742 Stirling engine with integrated gas combustor
------------ -----------------------------------------------------------------
4,911,44 Spherical solar energy collector
------------ -----------------------------------------------------------------
4,901,790 Self heated diffuser assembly for a heat pipe
------------ -----------------------------------------------------------------
4,897,997 Shell and tube heat pipe condenser
------------ -----------------------------------------------------------------
4,885,980 Hydordynamic bearing
------------ -----------------------------------------------------------------
4,386,094 Yieldably mounted lubricant control assemblies for piston rods
------------ -----------------------------------------------------------------
4,825,814 Combination gas combustor and heat pipe evaporator device
------------ -----------------------------------------------------------------
4,785,875 Heat pipe working liquid distribution system
------------ -----------------------------------------------------------------
4,785,633 Solar evaporator
------------ -----------------------------------------------------------------
4,781,242 Exhaust heat recovery system for compartment heating
------------ -----------------------------------------------------------------
4,715,183 Dual source external heating system for a heat pipe
------------ -----------------------------------------------------------------
4,707,990 Solar powered stirling engine
------------ -----------------------------------------------------------------
4,703,796 Corrosion resistant heat pipe
------------ -----------------------------------------------------------------
4,669,736 Stirling engine with improved sealing piston ring assembly
------------ -----------------------------------------------------------------
4,632,179 Heat pipe
------------ -----------------------------------------------------------------
4,515,261 Stirling engine with improved piston ring assembly
------------ -----------------------------------------------------------------
4,579,046 Yieldably mounted lubricant control assemblies for piston rods
------------ -----------------------------------------------------------------
4,532,855 Two part drive shaft for thermal engine
------------ -----------------------------------------------------------------
4,523,636 Heat pipe
------------ -----------------------------------------------------------------
4,481,771 Heat exchanger stack apparatus
------------ -----------------------------------------------------------------
18
STM PATENTS
Foreign Patents:
Patent
Number: Title:
------------ -----------------------------------------------------------------
EP0922156 Electric swashplate actuator stirling engine
------------ -----------------------------------------------------------------
EP0914582 Solar concentrator elevational drive mechanism
------------ -----------------------------------------------------------------
EP0914581 Solar energy diffuser
------------ -----------------------------------------------------------------
XX0000000 Heat engine heater assembly
------------ -----------------------------------------------------------------
AU8404998 Heat engine combustor
------------ -----------------------------------------------------------------
XX0000000 Heat engine rod seal system
------------ -----------------------------------------------------------------
AU8402798 Piston assembly for stirling engine
------------ -----------------------------------------------------------------
XX0000000 Xxxxxxx xxx seal assembly for stirling engine
------------ -----------------------------------------------------------------
EP0900328 Speed and power control of an engine by modulation of the
load torque
------------ -----------------------------------------------------------------
XX0000000 Heat engine combustor
------------ -----------------------------------------------------------------
WO9904154 Heat engine rod seal system
------------ -----------------------------------------------------------------
WO9902898 Piston assembly for stirling engine
------------ -----------------------------------------------------------------
WO9902841 Heat engine heater assembly
------------ -----------------------------------------------------------------
WO9901655 Xxxxxxx xxx seal assembly for stirling engine
------------ -----------------------------------------------------------------
EP0850353 Stirling engine
------------ -----------------------------------------------------------------
AU3723797 Solar concentrator elevational drive mechanism
------------ -----------------------------------------------------------------
AU3656697 Solar energy diffuser
------------ -----------------------------------------------------------------
AU3374297 Electric swashplate actuator for stirling engine
------------ -----------------------------------------------------------------
XX0000000 Electric swashplate actuator for stirling engine
------------ -----------------------------------------------------------------
WO9803824 Solar concentrator elevational drive mechanism
------------ -----------------------------------------------------------------
WO9803823 Solar energy diffuser
------------ -----------------------------------------------------------------
AU2126997 Speed and power control of an engine by modulation of the
load torque
------------ -----------------------------------------------------------------
AU1699897 Modular construction stirling engine
------------ -----------------------------------------------------------------
AU1579297 Crosshead system for stirling engine
------------ -----------------------------------------------------------------
WO9734080 Speed and power control of an engine by modulation of the
lad torque
------------ -----------------------------------------------------------------
WO9727391 Crosshead system for stirling engine
------------ -----------------------------------------------------------------
WO8727390 Modular construction stirling engine
------------ -----------------------------------------------------------------
AU7202996 Stirling engine
------------ -----------------------------------------------------------------
WO9712140 Stirling engine
------------ -----------------------------------------------------------------
EP0457399 Congeneration system with a striling engine
------------ -----------------------------------------------------------------
EP0411699 Stiling cycle heat pump for heating and/or cooling systems
------------ -----------------------------------------------------------------
XX0000000 Self heated diffuser assembly for a heat pump
------------ -----------------------------------------------------------------
EP0355921 Shell and tube heat pipe condenser
------------ -----------------------------------------------------------------
EP0332272 Thermal engine with hydrodynamic bearing
------------ -----------------------------------------------------------------
EP0332271 Yieldably mounted lubricant control assemblies for piston rods
------------ -----------------------------------------------------------------
EP0332267 Improved solar evaporator
------------ -----------------------------------------------------------------
EP325339 Two part drive shaft for thermal engine
------------ -----------------------------------------------------------------
EP0316044 Heat pipe working liquid distribution system
------------ -----------------------------------------------------------------
XX0000000 Solar powered stirling engine
------------ -----------------------------------------------------------------
19
------------ -----------------------------------------------------------------
EP0282114 External heating system
------------ -----------------------------------------------------------------
EP0198126 Heat pipe
------------ -----------------------------------------------------------------
EP0198125 Two part drive shaft for thermal engine
------------ -----------------------------------------------------------------
EP0181021 Stirling engine with improved piston ring assembly
------------ -----------------------------------------------------------------
EP0180278 Yieldably mounted lubricant control assemblies for piston rods
------------ -----------------------------------------------------------------
EP0169610 Heat exchanger fins and method of making
------------ -----------------------------------------------------------------
DE69116727T No title available
------------ -----------------------------------------------------------------
DE69116727D No title available
------------ -----------------------------------------------------------------
DE69010421T No title available
------------ -----------------------------------------------------------------
DE69010421D No title available
------------ -----------------------------------------------------------------
DE68916959T No title available
------------ -----------------------------------------------------------------
DE68916595D No title available
------------ -----------------------------------------------------------------
DE68907356T No title available
20
