EXHIBIT 10.15
LICENSE AGREEMENT
THIS AGREEMENT is made effective as of the last date of execution set
forth below and is between Global Energy & Environmental Research Inc.,
hereinafter referred to as LICENSEE, a. corporation of the State of Florida and
having offices at 00000 Xxxxx Xxxxxxxx Xxxxxx; Xxxx, Xxxxxxx 00000, and Xxxx
Xxxxx, hereinafter referred to as LICENSOR, a person residing at 0000 Xxxxxx
Xxxx Xxxxx, Xxxxxxxx, Xxxxxxxxx 00000.
RECITALS
WHEREAS, LICENSOR possesses certain information and knowledge relating
to a LIGHT ENERGY SHUTTER SYSTEM, invented by Xxxx Xxxxx and comprising U. S.
Patent No. 6,000,170, issued December 14, 1999;
WHEREAS, LICENSOR desires that such information and knowledge be
developed and utilized in the public interest and is willing to enter into a
license agreement for those purposes;
WHEREAS, LICENSEE desires to obtain a license to make, use and sell
products utilizing such information and knowledge.
NOW, THEREFORE, in consideration of the representations above and the
mutual covenants and promises hereinafter set forth, the parties agree as
follows:
ARTICLE I - DEFINITIONS
A. "Technology" shall mean any knowledge, information, know-how and
devices, whether patentable or not, in the possession of the LICENSOR
and relating to LIGHT ENERGY SHUTTER SYSTEM and comprising U. S. Patent
No. 6,000,170, issued December 14, 1999.
B. "Improvements" shall mean any development or improvement of the
Technology, whether patentable or not, made by the LICENSOR or LICENSEE
or jointly and which, if unlicensed, would infringe one or more claims
of U. S. Patent No. 6,000,170, issued December 14, 1999. However,
"Improvements" shall not include any improvement or development made by
the LICENSOR which is more than three years from the date of the
signing hereof.
C. "Subject Patent Application(s)" shall mean any patent application in
the United States or in a foreign country that covers the Technology
and/or Improvements made solely by the LICENSOR or jointly by the
LICENSOR and LICENSEE.
D. "Subject Patent(s)" shall mean any patent that issues on a Subject
Patent Application.
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E. "Licensed Product(s)" shall mean any product which incorporates the
Technology or Improvements or which is made by a process or machine
which incorporates the Technology.
F. "Net Sales" shall mean the gross amount invoiced for sales or leases of
Licensed Product(s) by LICENSEE, its Affiliates or its sublicensees
less (i) all trade, quantity, and cash discounts actually allowed, (ii)
all credits and allowances actually granted on account of rejection,
returns, billing errors, or retroactive price reductions, (iii) duties,
and (iv) excise, sale and use taxes, and equivalent taxes.
G. "Affiliate(s)" shall mean any present or future domestic or foreign
corporation which shall be, at the pertinent time, owned or controlled,
directly or indirectly by LICENSEE.
ARTICLE II - INVENTIONS AND PATENT APPLICATIONS
A. Title in the Technology and Improvements made solely by the LICENSOR
shall rest solely and exclusively with the LICENSOR, subject to the
license grant of Article III. Title in Improvements made jointly by the
LICENSOR and LICENSEE shall be held jointly by the LICENSOR and
LICENSEE. Title in Improvements made solely by LICENSEE shall rest
solely and exclusively with LICENSEE.
B. Each party hereto shall promptly disclose to the other party any
Improvements conceived or reduced to practice by the first party.
C. LICENSEE shall reimburse the LICENSOR for all future maintenance fees,
filing fees, and registration fees pertaining to U .S. Patent No.
6,000,170, issued December 14, 1999. All such fees will be billed by
LICENSOR to LICENSEE at the end of each calendar quarter. Accrued to
date fees are the responsibility of LICENSOR. In the future, the
LICENSOR will invoice LICENSEE for such expenses at the end of each
calendar quarter. With respect to Improvements, all Subject Patent
Application(s) will be filed jointly in the names of LICENSOR and
LICENSEE. LICENSEE shall be responsible for such filings and
prosecution of the patent applications, both U. S. and foreign, and
bear all costs related to the Subject Patent Application(s) and Subject
Patent(s) issuing therefrom.
D. In the event LICENSEE does not desire to have Subject Patent
App1ication(s) filed or prosecuted, or does not desire to have Subject
Patent(s) maintained, LICENSEE shall promptly notify the LICENSOR.
Subsequent to this notice, such application(s), patents(s) issuing on
such application(s) and such patent(s) as LICENSEE does not desire to
be maintained shall no longer be considered Subject Patent
Application(s) or Subject Patent(s). The LICENSOR, upon such notice,
may file or prosecute such patent application(s) or maintain such
patent(s) at its sole option and expense.
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E. LICENSOR and LICENSEE agree to cooperate in connection with the filing
and prosecution of Subject Patent Application(s) relating to
Improvements.
ARTICLE III - LICENSE GRANT AND COMMERCIAL EFFORT
A. Subject to the terms and conditions herein, the LICENSOR hereby grants
and LICENSEE hereby accepts an exclusive worldwide license, with a
right to grant sublicenses, to make, use, and sell Licensed Product(s
B. Notwithstanding this license grant, the LICENSOR retains a nonexclusive
and nontransferable right to use for research purposes only the
Technology or Improvements made solely by the LICENSOR or jointly by
the LICENSOR and LICENSEE; this includes the right to make and use
devices incorporating the Technology or Improvements for those
purposes. LICENSEE hereby grants and the LICENSOR hereby accepts a
nonexclusive, nontransferable and irrevocable right to use for research
purposes any Improvements made solely by LICENSEE.
C. The exclusive license granted herein shall terminate upon the
termination of this Agreement in accordance with Article VI.
D. LICENSEE shall have the right to grant sublicenses to others with
respect to any rights conferred upon LICENSEE under this Agreement.
Provided, however, that any such sublicense shall be subject in all
applicable respects to the provisions contained in this Agreement, and
further provided that LICENSEE shall give the LICENSOR an opportunity
to review and comment on any sublicense prior to its execution. It is
the intent of this Agreement that the LICENSEE itself be the instrument
to develop and market licensed product(s). Accordingly, LICENSEE may
not fulfill its obligations to exercise its best efforts as provided in
Article III, paragraph E below by sublicensing essentially all of its
obligations to develop and market licensed products(s) to another
entity.
E. LICENSEE shall use its best efforts to effect commercial sales of
Licensed Product(s) as soon as practicable and to maximize these sales,
consistent with sound and reasonable business practices and judgment.
Best efforts shall be deemed to have been met if LICENSEE sells three
Licensed Products in the first year of the License, ten Licensed
Products in the second year of the License, and twenty Licensed
Products in the each year of the License thereafter. LICENSEE agrees
that Licensed Products for distribution in the United States will be
manufactured substantially in the United States. LICENSEE shall provide
the LICENSOR with written plans for effecting commercialization and
reports of LICENSEE'S efforts to effect commercialization. LICENSEE
shall provide these reports semiannually.
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F. LICENSEE shall sell Licensed Product(s) at pricing that will provide
the best opportunity for commercialization of the Product(s) and
refrain from making any extravagant claims in its advertising or
otherwise.
G. LICENSEE shall not use the names of the LICENSOR nor of any LICENSOR
employees in any manner without prior written approval from the
LICENSOR.
H. LICENSEE, its Affiliates, and its sublicensees shall alone have the
obligation to ensure that any Licensed Product they sell is not
defective.
ARTICLE IV - ROYALTIES, REPORTS AND RECORDS
A. For the license granted hereunder, LICENSEE shall pay or cause to be
paid to the LICENSOR a royalty of 8% (eight percent) on Net Sales of
Licensed Product(s). LICENSEE shall be responsible to the LICENSOR for
the payment of running royalties due with respect to sales made by
sublicensees (including Affiliates) as though they were sales by
LICENSEE. LICENSEE shall pay 50% (fifty percent), less attributable
costs, of all sublicensing lump sum payments, initial payments, minimum
royalties and like sums to LICENSOR.
B. Royalties shall be payable only once with respect to the same unit of a
Licensed Product regardless of the number of patented or nonpatented
portions of the Technology or Improvements incorporated in such
product.
C. Royalty payments as hereinabove required to be made by LICENSEE to the
LICENSOR shall be made in United States dollars within sixty (60) days
following each calendar quarter. Any currency translations that are
necessary to calculate payments shall be made at the exchange rate used
by LICENSEE for financial accounting purposes in accordance with
generally accepted accounting principles. Each such payment shall
include the royalties which shall have accrued during the calendar
quarter immediately preceding and shall be accompanied by a report
setting forth separately the Net Sales of Licensed Products(s) sold
during that quarter. Royalty checks shall be made payable to (LICENSOR)
and mailed to the address specified in Article X.
D. LICENSEE, its Affiliates and its sublicensees shall keep and maintain
records of sales of Licensed Product(s) that are subject to royalty
payments hereunder. Such records shall be open to inspection at
reasonable times by a certified public accountant chosen by the
LICENSOR and acceptable to the LICENSEE. Such inspection shall be made
at the LICENSOR'S expense. The records required by this paragraph shall
be maintained and available for inspection for a period of five (5)
years following the calendar quarter to which they pertain.
E. Annually, commencing on the first anniversary of the execution hereof
and continuing on each anniversary thereafter, LICENSEE shall pay to
LICENSOR a minimum royalty
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of $10,000.00. An annual minimum royalty may be offset against
royalties due on Net Sales of Licensed Products owed in the previous
calendar year.
ARTICLE V - INFRINGEMENT
A. In the event that the LICENSOR or LICENSEE determines that a third
party is making, using or selling a product that may infringe a Subject
Patent, it will promptly notify the other party in writing. LICENSEE
may, at it sole option, bring suit against such alleged infringer. In
the event LICENSEE decides to bring suit, it shall give prompt written
notice to the LICENSOR of that fact. All recoveries in such suit shall
inure to the benefit of LICENSEE, except that the LICENSOR shall have
the right to elect to pay up to fifty percent (50%) of the litigation
costs and receive a percentage of any recovery equal to the percentage
of litigation costs paid. The LICENSOR must make such election within
thirty (30) days of its receipt of notice that LICENSEE has decided to
bring suit. The LICENSOR shall also have the right to choose to be
represented by separate counsel in any such suit. If LICENSEE elects
not to bring a suit against the alleged infringer, it shall promptly
notify the LICENSOR of that fact and the LICENSOR shall have the right
to commence such action at its own cost and expense, in which case any
recoveries shall inure to the benefit of the LICENSOR.
B. In the event that LICENSEE, an Affiliate or a sublicensee is sued by a
third party charging patent infringement for the manufacture, use or
sale of a Licensed Product, LICENSEE shall promptly notify the
LICENSOR. LICENSEE shall be entitled to withhold up to fifty percent
(50%) of the royalties otherwise payable to the LICENSOR, and use that
withheld royalty to reimburse itself for legal defense costs incurred
in such infringement suit, provided, however, that the infringement
suit is based on a particular feature of the Licensed Product that is
covered by a Subject Patent. If LICENSEE avails itself of the
provisions of this paragraph, LICENSEE agrees to supply the LICENSOR
with proof of the legal costs incurred. LICENSOR's liability for such
infringement shall be limited to 50% (fifty percent) of all royalties
paid by LICENSEE to LICENSOR up to the date of judgment in such
infringement suit.
C. If LICENSEE, any of its Affiliates or any of its sublicensees is
required to pay a royalty to other than the LICENSOR as a result of a
final judgment or settlement in order to make and/or sell a Licensed
Product then in that event, the royalty payable to the LICENSOR shall
be reduced by the amount of royalty that LICENSEE, the Affiliate or the
sublicensee shall be required to pay to other than the LICENSOR, but in
no event shall the royalty payable to the LICENSOR be reduced by more
than fifty percent (50%) from the royalty rate specified in Article IV.
If LICENSEE avails itself of the provisions of this paragraph, LICENSEE
agrees to provide the LICENSOR with proof of such royalties paid to the
third party.
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D. In the event that any claim(s) of a Subject Patent are finally
determined by a court to be invalid or unenforceable, the parties
hereto agree to negotiate a reduced royalty provided for in Article IV,
clause A in view of such determination.
ARTICLE VI - TERM AND TERMINATION
A. This Agreement's term shall end with the expiration of the Subject
Patent last to expire or 20 (twenty) years, whichever occurs first.
B. The LICENSOR shall have the right to terminate this Agreement upon
sixty (60) days written notice by certified mail to LICENSEE under the
following circumstances:
(1) if royalties due the LICENSOR are unpaid;
(2) if there is a material breach or default of this
Agreement by LICENSEE;
(3) if LICENSEE fails to use its best efforts to effect
commercial sales of Licensed Product(s) in accordance
with Article III, paragraph E. At its sole option,
LICENSOR may offer LICENSEE a nonexclusive license in
this circumstance; and
(4) an assignment of this Agreement by LICENSEE to which
the LICENSOR has not given its consent, which consent
will not be unreasonably withheld by LICENSOR.
If LICENSEE does not cure the above specified conditions within sixty
(60) days of receipt of notice termination, such termination shall
become effective.
C. LICENSEE may terminate the license granted hereunder at any time upon
sixty (60) days notice by certified mail to the LICENSOR.
D. Upon termination of this Agreement for any reason, including the end of
term as specified above, nothing herein shall be construed to release
either party from any obligation which matured prior to the effective
date of termination. LICENSEE, its Affiliates or its sublicensees may
after the effective date of such termination sell all Licensed
Product(s) in stock and complete construction of all Licensed
Product(s) in the process of manufacture at the time of termination and
sell the same, provided that LICENSEE pay to the LICENSOR royalties on
such Licensed Product(s) as specified in this agreement.
ARTICLE VII - CONFIDENTIAL INFORMATION
Neither party shall disclose confidential information of the
other party to a third party. For this purpose, information regarding
or comprising Technology or Improvements that has not passed into the
public domain shall be considered confidential information.
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ARTICLE VIII - WARRANTIES
The LICENSOR represents and warrants that;
a. the LICENSOR has full right, power and authority to enter
into this Agreement and to grant all of the right, title, and interest
in the Technology and Improvements herein granted;
b. the LICENSOR has not previously assigned, transferred,
conveyed, or otherwise encumbered such right, title, and interest;
c. the LICENSOR is the sole and exclusive owner of the Technology
and Improvements, all of which is free and clear of any liens, charges,
and encumbrances, and no other person or entity has or shall have any
claim of ownership with respect to the Technology and Improvements;
d. the Technology and Improvements do not infringe any rights
owned or possessed by any third party, and
e. there are no claims, judgments or settlements to be paid by
the LICENSOR or pending claims or litigation relating to the Technology
and Improvements.
ARTICLE IX - INDEMNIFICATION AND INSURANCE
A. LICENSEE agrees to indemnify the LICENSOR and hold the LICENSOR
harmless against all liabilities, demands, damages, expenses, or losses
arising (i) from the manufacture, use, or sale of a Licensed Product by
LICENSEE, an Affiliate or a sublicensee of LICENSEE, (ii) from a third
party's use of a Licensed Product purchased or leased from LICENSEE, an
Affiliate or a sublicensee of LICENSEE, or (iii) from a third party's
manufacture of a Licensed Product at the request of LICENSEE.
B. LICENSEE agrees to maintain liability insurance to insure against any
of the above liabilities. LICENSEE shall provide LICENSOR with
certification of such insurance.
C. The provisions of this Article shall survive termination of this
Agreement for the duration of any stated or published warranties.
ARTICLE X - MISCELLANEOUS PROVISIONS
A. The rights and licenses granted by LICENSOR in this agreement are
personal to LICENSEE and may not be assigned or otherwise transferred
without the written consent of LICENSOR. Any attempted assignment or
transfer without such consent shall be void and shall automatically
terminate all rights of the LICENSEE under this agreement.
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B. LICENSEE hereby assures the LICENSOR that LICENSEE will comply with all
U. S. export controls as set forth in the Export Administration
Regulations, 15 C.F.R.ss.770 et seq.
C. This Agreement shall be governed by the Laws of the State of Minnesota.
D. For purposes of mailings of notices, payments, or other communications,
the addresses of the parties are given below.
In the case of the LICENSOR:
Xxxx Xxxxx
0000 Xxxxxx Xxxx Xxxxx
Xxxxxxxx, Xxxxxxxxx 00000
In the case of LICENSEE:
Global Energy & Environmental Research, Inc.
00000 Xxxxx Xxxxxxxx Xxxxxx
Xxxx, Xxxxxxx 00000
E. No term or provision of this Agreement shall be waived and no breach
excused, unless such waiver or consent shall be in writing and signed
by the party claimed to have waived or consented. No waiver of a breach
shall be deemed to be a waiver of a different or subsequent breach.
F. This Agreement may not be modified, changed or terminated orally. No
change, modification, addition or amendment shall be valid unless in
writing and signed by the parties hereto.
G. This Agreement constitutes and contains the entire Agreement of the
parties respecting the subject matter hereof and supersedes any and all
prior negotiations, correspondence, understanding, and agreements,
whether written or oral, between the parties respecting the subject
matter hereof.
In WITNESS WHEREOF, the LICENSOR and LICENSEE have caused this
Agreement to be executed by their duly authorized officers on the dates
indicated.
Global Energy & Environmental Research, Inc. Xxxx Xxxxx
By /s/ Xxxxxxx Xxxxx By /s/ Xxxx Xxxxx
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Title President Title Licensor
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Date 5/21/00 Date 5/21/00
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