AMENDMENT
This Amendment dated this 1st day of April, 2004 by and among Xxxxxx
International, Ltd., having a business address at Highway 34 and Xxxxxxxxx Xxxx,
Xxxx Xxxxxxxx, Xxx Xxxxxx 00000-0000, and Xxxxxx Xxxxxx, having an address at
Highway 34 and Ridgewood Road, Wall Township, New Jersey 07719-9738 (the above
identified parties are collectively referred to as the "Licensor") and XxXxxx,
England and Associates, LLC, having its principal offices located at Xxx Xxxxxxx
Xxxxxx, Xxxxx 0000, Xxxxxx Xxxx, Xxxxxxxx 00000 (the "Licensee").
WHEREAS, Licensor and Licensee entered into a License Agreement
originally on April 12, 2002 and have operated pursuant to their agreement
through the date of this Amendment ("License Agreement");
WHEREAS, Licensor has retrofitted the No.1 Diesel 855 engine
incorporating the Xxxxxx CSRV System, which engine is operational on a test
stand. This engine is not ready for final testing and many costly modifications
are to be carried out before it is ready for final testing.
WHEREAS, Licensee has requested Licensor to retrofit another 855 No. 2
engine to gasoline incorporating the CSRV by doing so has placed an extra
expense and burden on Licensor. Currently, it is not financially feasible for
Licensor to complete both engines concurrently without considerable additional
funding and staff.
WHEREAS, in the interest of time and efficiency Licensor and Licensee
have agreed to allow Licensee at its own expense to undertake various
modifications and refinements to the No. 1 855 Diesel powered CSRV truck engine;
WHEREAS, in order to accomplish the aforesaid mutual objective of
Licensor and Licensee, it is necessary to supplement the License Agreement
solely as specified in, and limited by, this Amendment. The permission granted
by Licensor pursuant to this Amendment is not intend to, and does not constitute
a novation of the License Agreement.
NOW, THEREFORE, in consideration of the premises and covenants, and
other good and valuable consideration, and the mutual promises of the
performance of the undertaking set forth in the License Agreement and in this
Amendment, it is agreed, by and among Licensor and Licensee, as follows:
1. DEFINED TERMS. Except as specifically defined herein, all
definitions of terms used herein shall be in accordance with the
License Agreement.
2. POSSESSION. For the limited purpose set forth in paragraph 6 below,
Licensor shall permit Licensee to take possession of, but not title
to, and to remove from Licensor's business premises, a single diesel
powered internal combustion engine that Licensor has retro-fitted
with the CSRV Valve System ("No. 1 Test Engine") together with one
of the two trucks containing an 855 Cummins Engine owned by Licensee
("Test Truck"). Unless or until otherwise specified in the License
Agreement, Licensor shall retain title to the Test Engine, with
exception of the trucks which are the property of Licensee. The
parties agree that the Test Engine is currently in a state of
development, which Licensee will attempt to refine. The Test Engine
is not ready for testing and certification, and does not constitute
a delivery of such an engine as contemplated by the Confidential
Addendum to the License Agreement.
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3. TEST MATERIAL. Licensor shall provide Licensee with, but not title
to, the Test Engine on test stand, all related drawings or other
intellectual property, that Licensor feels would aid Licensee in its
refinement efforts (collectively the "Test Material"). If Licensee
requires any parts from Licensor, Licensee must pay for parts made
by Licensor.
4. SHIPPING. Licensee shall be responsible for packing, crating,
shipping and transporting the Test Material and all costs associated
therewith. Licensee shall be responsible for all damage from
whatever cause or source caused to the Test Material, while the Test
Material is off of Licensor's business premises. Within five (5)
days of taking possession of the Test Material Licensee shall
deliver the Test Material to Ram Industries 0000 Xxxxxxxx Xx., Xxxxx
Xxxxxx Xxxx, 00000 ("Ram Premises").
5. INSURANCE. Licensee shall insure the Test Material against all
damage and loss for its full replacement value which is currently
estimated to be $250,000 with Licensor named as the sole loss payee;
Licensor calculates it has expended approximately $2,500,000.00 on
Licensee's Diesel 855 engine. Moreover, Licensee shall provide
Licensor with an insurance policy providing general comprehensive
liability coverage for Licensor in relation to the Test Material
that meets the specifications of the License Agreement. The
insurance policy(ies) shall be delivered by Licensee to Licensor
before the Test Material is removed from Licensor's business
premises. Each insurance policy shall be issued by an insurance
company that is reasonably acceptable to Licensor and which is
authorized to do business both in the State of New Jersey and in the
State of Arkansas.
6. PURPOSE. Licensor grants its permission for Licensee at its own
expense to use third party firms in its refinement efforts, which
will be required to protect the confidentiality of Licensor's
patents and trade secrets; each such consultant shall be required to
sign a confidentiality agreement. The required confidentiality
agreement is attached hereto as Exhibit A ("Confidentiality
Agreement"). Licensee shall be responsible to enforce the
Confidentiality Agreement and shall indemnify the Licensor against
any loss associated with a breach of the Confidentiality Agreement
caused by, or related to, an act or omission of Licensee. Licensor
will be the owner of all work and improvements made by Licensee and
its third party contractors. Licensee's efforts are intended to
supplement those of Licensor and to accelerate the time when the
Test Engine can be tested at Southwest Research Institute for EPA
certification purposes. Licensor, however, without having any
obligation to do so, may, in its sole and absolute discretion,
continue to work on the No. 2 gasoline engine project to completion.
7. PAYMENT. All payments due Licensor by Licensee shall become due, and
will be paid, in accordance with the License Agreement, except that
if Licensee through its efforts produces an engine that satisfies
the criteria specified in the License then the precondition to
Licensee's payment obligation shall have been satisfied as if the
Licensor had produced an engine that satisfied the criteria
specified in the License and payment shall be due from the Licensee
pursuant to the terms of the License Agreement.
8. REPORTS. Licensee shall provide Licensor with a written progress
report every fifteen (15) days detailing the progress that is being
made on the Test Engine.
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9. LOCATION. Licensee shall not remove the Test Material from the Ram
Premises without the prior written approval of the Licensor.
Licensor and its agents, employees, contractors and consultants, on
two (2) business days notice, shall have the absolute right, but not
the obligation, to enter the Ram Premises, during normal business
hours, to inspect the Test Engine and/or the Test Truck and all
related data, plans, results, reports and documents relating to the
Test Engine and/or the Test Truck.
Licensee represents to Licensor that the Ram Premises are safe and
secure and that access to the Test Material will be limited to the
Licensee and its consultant which access shall be governed by the
terms of the Confidentiality Agreement.
10. INDEMNIFICATION. Indemnification between the parties will be in
accordance with the License Agreement and paragraphs 4, 6 and 9
hereof.
11. CONFIDENTIALITY. The confidentiality of Licensor's patents and trade
secretes shall be maintained in accordance with the License
Agreement and paragraphs 6 and 9 hereof.
12. BREACH; REMEDIES. In the event of a breach by either party of this
Amendment the remedies of the parties shall be governed in
accordance with the License Agreement.
13. NOTICES. All notices between the parties shall be made in accordance
with License Agreement.
14. APPLICABLE LAW. The law applicable to this Amendment Agreement shall
be in accordance with License Agreement.
15. SEVERABILITY. If any term, covenant, condition or provision of this
Amendment, or the application thereof to any person or circumstance,
shall, at any time or to any extent, be invalid or unenforceable,
the remainder of this Amendment, or the application of such term or
provision to persons or circumstances other than those as to which
it is held invalid or unenforceable, shall not be affected thereby,
and each term, covenant, condition and provision of this Amendment
shall be valid and be enforced to the fullest extent permitted by
law.
16. INTERPRETATION. Wherever herein the singular number is used, the
same shall include the plural, and the masculine gender shall
include the feminine and neuter genders, and vice versa, as the
context shall require.
17. COUNTERPARTS. This Amendment may be executed in several
counterparts, each of which shall be an original, but all of which
shall constitute one and the same instrument.
18. SECTION HEADINGS. The section headings in this Amendment are
inserted only as a matter of convenience in reference and are not to
be given any effect whatsoever in construing any provision of this
Amendment.
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19. ASSIGNMENT. Neither this Amendment nor the License Agreement may be
assigned by Licensee except as permitted by the License Agreement.
ATTEST: XXXXXX INTERNATIONAL, LTD.
/s/ Xxxxxxx Xxxxxx BY: /s/ Xxxxxx X. Xxxxxx
--------------------------------- --------------------------------
Xxxxxxx Xxxxxx Xxxxxx X. Xxxxxx, President
Notary Public - New Jersey
My Commission Expires Dec. 27, 2005
as to Both Signatures of
Xxxxxx X. Xxxxxx
/s/ Xxxxxxx Xxxxxx /s/ Xxxxxx X. Xxxxxx
--------------------------------- --------------------------------
Xxxxxxx Xxxxxx Xxxxxx X. Xxxxxx, Individually
ATTEST: XxXXXX, ENGLAND & ASSOCIATES, LLC
(Illegible) By: /s/ Xxxx Xxxxxxx
--------------------------------- -------------------------------
Xxxx Xxxxxxx
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