LICENSE AGREEMENT
AGREEMENT made this 16th day of September, 1996, between ERBC
Holdings, Ltd. a British Virgin Island corporation having an address at
Xxxxxxxxx Xxxxxxx 00X, X-00000, Xxxxxx, Xxxxxxx (the "Licensor") and Eurotech,
Ltd. a District of Columbia corporation having an address at 0000 Xxxxxxxxx
Xxxxxx, Xxx Xxxxx, Xxxxxxxxxx 00000 (the "Licensee") and.
WITNESSETH:
WHEREAS, the Euro-Asian Physical Society ("EAPS") has prepared and
filed patent applications for international patents, No.s PCT/RU96/00193 and
PCT/RU96/00194 (the "Patent Applications") encompassing certain useful
technologies (the "Technologies") and inventions (the "Inventions") relating to
a silicon organic foam with many applications, including, possibly, the
encapusulation of radioactive materials, which has been designated by EAPS as
EKOR Foam (the "EKOR Foam")(the Patent Applications, Technologies, Inventions
and EKOR Foam and all proprietary information, formulae, papers, engineering
specifications and documents and other related proprietary technologies
principally relating thereto are herein referred to as the "Intellectual
Property"); and
WHEREAS, by agreement dated September 6, 1996, EAPS granted to the
Licensor a license to use and exploit the Intellectual Property in the United
States, Ukraine, Canada, China, Japan, Republic of Korea, all European countries
and all of the members of the European Patent Agreement (herein referred to as
the "Territory"), a copy of which license and all of the exhibits and
appendicies thereto is appended hereto as Exhibit A (the "EAPS License") and
which is incorporated herein and made a part hereof; and
WHEREAS, EAPS has represented to the Licensor in the EAPS License
that (i) on the date of execution of the EAPS License it was not aware that the
license granted in the Intellectual Property infringed upon any rights of others
(ii) it is the sole and exclusive owner of the Intellectual Property, (iii) it
has not licensed or otherwise authorized any other person or entity to use,
exploit or commercialize the Intellectual Property; and
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WHEREAS, the EAPS License permits the Licensor to grant sublicenses
of the Intellectual Property and Licensor desires to grant the exclusive,
unrestricted license of the Intellectual Property to Licensee in the Territory
to exploit, commercialize and use the Patent Applications, the Technologies, the
Inventions, the EKOR Foam and the proprietary information, formulae, engineering
specifications, papers and documents and other related proprietary technologies
principally relating thereto, and to convey to and vest in Licensee all of the
rights of the Licensor granted to it by the EAPS License, with the right to
grant sublicenses to others, free and clear of all liabilities, charges, liens,
mortgages, obligations or encumbrances, subject completely to the rights of the
Licensor as defined, enumerated and elucidated in the EAPS License; and
WHEREAS, Licensee is desirous of acquiring an exclusive,
unrestricted license to exploit, use, commercialize and market the Inventions
and the EKOR Foam and the proprietary information, formulae, papers and
documents and other related proprietary technologies principally relating to the
Patent Applications and the Technologies, on the terms and conditions and for
the consideration set forth herein.
NOW THEREFORE, in consideration of the foregoing premises and the
mutual promises and covenants contained herein the parties agree as follows:
ARTICLE I
LICENSE OF TECHNOLOGIES PRODUCT AND INVENTIONS
Section 1.01. Exclusive License. Licensor hereby grants to the
Licensee, on the date hereof free and clear of all liabilities, liens, claims,
mortgages, encumbrances, security interests and any other restrictions
whatsoever, subject completely to the rights of the Licensor defined by and
elucidated and enumerated in the EAPS License, the exclusive, unrestricted and
irrevocable right and license to commercialize, use, exploit and market the
Intellectual Property.
Section 1.02. Necessary Information and Documents. Licensor shall
furnish and shall use its best efforts to cause EAPS to furnish, to Licensee, or
its nominees and patent attorneys, all information and documents regarding such
inventions) including the apparatus, processes,
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engineering specifications, technical information and formulae in respect of the
Intellectual Property, to enable Licensee to operate hereunder, it being agreed
and understood that, if so requested by Licensee, that Licensor shall
collaborate with and provide full cooperation, and shall use its best efforts
to cause EAPS to collaborate with and provide full cooperation, in favor of
Licensee in all operations pertaining to the use and exploitation of the
Intellectual Property.
Section 1.03. Rights to Improvements to the Product, the
Technologies and the Inventions. The exclusive right and license herein granted
shall include all inventions, improvements, enhancements and modifications and
all information now or hereafter developed, controlled or acquired by the
Licensor in respect of the Intellectual Property.
Section 1.04. Right to Receive Information Relating to Improvements,
Enhancements and Modifications. Licensor hereby covenants and agrees with
Licensee that it shall furnish to Licensee, or its nominees, immediately upon
receipt thereof from EAPS, all information and documents relating to
improvements, enhancements and modifications hereafter developed, controlled or
acquired by the Licensor in respect of the Intellectual Property and the
Licensor shall provide the Licensee with such information, working drawings,
blueprints, formulae and all other data and information necessary effect the
exploitation and use of such improvements, enhancements and modifications as
they relate to the Intellectual Property and Licensee shall be entitled to use
and exploit all such improvements, enhancements and modifications hereafter
developed, controlled or acquired by the Licensor in respect of the Intellectual
Property without additional charge hereunder.
Section 1.05. Sublicenses. Licensor hereby grants to Licensee the
right to grant sublicenses in respect of the Intellectual Property licensed by
this Agreement to third parties on terms consistent with this Agreement.
Section 1.06. Term. (a) This Agreement shall commence upon the
execution hereof and, subject to the provisions of this Agreement, the rights
and licenses granted hereby shall continue until the expiration of the term of
the EAPS License, provided, however, that if royalty payments due Licensor
hereunder are in arrears for sixty (60) days after the due date, or if the
Licensee is adjudicated a bankrupt or becomes insolvent, or enters into a
composition with creditors
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or if a receiver is appointed for it, then the Licensor shall have the right to
terminate this Agreement upon giving written notice to the Licensee thirty (30)
days prior to the effective date of the termination, and if the cause of such
termination is not cured within the thirty (30) days, then at the expiration of
the thirty (30) days, the Agreement and all rights and licenses granted to the
Licensee, hereunder shall terminate, without prejudice to the Licensor's right
to collect monies due or to become due under the Agreement and without prejudice
to any other rights of the Licensor.
(b) Upon termination of this Agreement for any cause, the
Licensee shall duly account to the Licensor for all royalties within sixty (60)
days of such termination, and shall immediately transfer to Licensor all rights
that Licensee may possess in sub-licenses, patent's, information, and trademarks
relating to the Intellectual Property, transferred hereunder and all rights and
licenses granted to Licensee pursuant to this Agreement shall immediately
terminate.
Section 1.07. Intent of License. It is the intent of the Licensor to
grant to and vest and convey in the Licensee all of the rights acquired by the
Licensor pursuant to the EAPS License. In view thereof, all of the rights
granted to the Licensor by said EAPS License are hereby granted to the Licensee
and Licensee shall enjoy and be entitled to all such rights and privileges as
those enjoyed by the Licensor pursuant to the EAPS License and in the case of
any question relating to the rights of the Licensee to the Intellectual
Property, the parties shall refer to and be bound by the terms of the EAPS
License.
Section 1.08. Ownership of Improvements to Intellectual Property
Developed by Licensee. Licensor hereby agrees with Licensee that Licensee shall
be the outright and sole owner of any and all improvements, enhancements and
modifications hereafter developed, controlled or acquired by the Licensor in
respect of the Intellectual Property.
Section 1.09. Further Assurances. Licensor shall at any time and
from time to time after the date hereof upon the request of Licensee, execute,
acknowledge, and deliver, or cause to be delivered, any and all such deeds,
assignments, transfers, conveyances, and assurances as may be reasonably
required for assigning, transferring, granting, conveying, assuring, and
confirming the license to Licensee, or to its successors and assigns, or for
aiding and assisting in the use and exploitation of the Intellectual Property
and the manufacture and sale of the Product herein describedo
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or derived therefrom.
ARTICLE II
Section 2.01. Payment of Royalties. (a) Subject to the provisions of
subsection (b) hereof, the Licensee shall pay to the Licensor a royalty equal to
one percent (1%) in excess of that which Licensor is required to pay to EAPS
pursuant to the EAPS License.
(b) In the event that Licensee hereunder shall make the
required royalty payments to Licensor within the period prescribed by this
License, and Licensor does not make the corresponding royalty payments required
to be made by it to EAPS within the time period prescribed by the EAPS License,
Licensee shall not be required to pay the penalty imposed upon the Licensor by
the EAPS License for late payments and the payment of any such penalty shall be
the responsibility of the Licensor.
Section 2.02. Accounting. Licensee shall, at all times, maintain a
separate account of all Products sold, royalties received and all revenues
received by it or from its sub-licensees which are the subject of this Agreement
and render written statements thereof to Licensor within thirty (30) days after
the end of each calendar quarter during the term of this Agreement, together
with the amount of all royalties earned during the corresponding calendar
quarter. The Licensor or its authorized representatives or agent, shall have the
right, at its own expense, to examine the Licensee's financial records for the
purpose of verifying such royalty statements. In any and all sub-licensing
agreements, the Licensee shall procure for the Licensor a similar right to have
the financial records of the sub-licensee examined for the purpose of verifying
the royalty statements.
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ARTICLE III
REPRESENTATIONS AND WARRANTIES OF LICENSOR
Section 3. Licensor hereby represents, warrants and covenants to
Licensee as follows:
Section 3.01. Organization, Qualification, Power and Authority.
Licensor is an corporation duly and validly organized and existing in good
standing under the laws of International Business Companies Act of the British
Virgin Islands and has all requisite power and authority to execute and deliver
this Agreement and any of the documents provided for hereunder and to perform
its obligations and to consummate the transactions contemplated hereunder and
has all requisite power and authority and all material licenses and permits to
carry on its business as it has been and is now conducted, and to own, lease,
and operate the properties and assets issued in connection therewith. The
execution, delivery, and performance of this Agreement, the Exhibits, and any
other documents provided for hereunder by Licensor, and the consummation of the
transactions contemplated hereunder have been duly authorized by all necessary
requisite action of Licensor and do not violate or conflict with, constitute a
default under, or an event that, with the giving of notice, the passage of time
or both, would constitute a default under, any provision of Licensors
certificate of association, by-laws, laws, orders, writings, injunctions,
decrees, rules, or regulations of any court, administrative agency, or any other
governmental authority or any agreement or other document or instrument to which
Licensor is a party or by which Licensor is, or may be, bound. This Agreement
has been duly and validly executed and delivered by Licensor and constitutes a
legal, valid, and binding obligation of Licensor enforceable in accordance with
its terms.
Section 3.02. Technological Data and Proprietary Information.
Exhibit A hereto sets forth and includes a true and complete copy of the license
agreement between the Licensor and EAPS and all exhibits and appendices thereto
as referenced therein, including all of the Patent Applications, trade secrets,
formulae, processes, inventions, know-how, engineering specifications and other
proprietary information, papers and documents relating to the Technology and the
Inventions, representing all such documents currently in the possession of the
Licensor or in which Licensor has any rights or licenses or which are used by
Licensor in connection with the foregoing and which are being licensed by
Licensor to Licensee hereunder.
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Section 3.03. Prior Disclosure of Intellectual Property. Licensor
has not revealed any proprietary information encompassing the Intellectual
Property to any one other than its employees, agents, representatives and others
to whom communication of said information was essential in the development
thereof. All such persons who have received or been privy to said information
have agreed or will agree not to disclose any such information without first
obtaining the written consent of the Licensee.
Section 3.04. Finders and Brokers. No finder's fee, brokerage
payment, or other payment is payable by Licensor to any third party or parties
in connection with the origination or negotiation of this Agreement or the
consummation of the transactions contemplated by this Agreement.
Section 3.05. Full Disclosure. To the best of Licensor's knowledge
no representation or warranty by Licensor in this Agreement, in any Schedule or
Exhibit, or in any certificate or other document expressly provided for herein
contains any untrue statement of a material fact or omits to state any material
fact necessary to make nay statement herein or therein not misleading.
Section 3.06. Right to Grant Sublicense. Licensor has the right to
grant this License and has not granted to any other person, firm, corporation or
other entity, any right, license or privilege thereunder.
ARTICLE IV
REPRESENTATIONS AND WARRANTIES OF LICENSEE
Section 4. Licensee represents and warrants to and covenants with
the Licensor as follows.
Section 4.01. Organization, Qualification, Power and Authority.
Licensee is a corporation duly and validly organized and existing in good
standing under the laws of the District of Columbia and has all requisite power
and authority to execute and deliver this Agreement and any other documents
provided for hereunder and to perform its obligations and to consummate the
transactions contemplated hereunder and thereunder and is duly qualified to do
business as a foreign
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corporation in all jurisdictions where such qualifications are necessary. The
execution, delivery, and performance of this Agreement, the Exhibits, and any
other documents provided for hereunder by Licensee, and the consummation of the
transactions contemplated hereunder, have been duly authorized by all necessary
corporate action of Licensee, including, where appropriate, shareholder
approval, and do not violate or conflict with, constitute a default under or an
event that with the giving of notice, the passage of time or both, constitute a
default under, any provision of Licensee's certificate of incorporation, bylaws,
laws, orders, writings, injunctions, decrees, rules, or regulations of any
court, administrative agency, or any other governmental authority or any
Agreement or other document or instrument to which Licensee is a party, or by
which Licensee is or may be bound. This Agreement has been duly and validly
executed and delivered by Licensee and constitutes a legal, valid and binding
obligation of Licensee enforceable in accordance with its terms.
Section 4.02. Finders and Brokers. No finder's fee brokerage
payment, or other payment is payable by Licensee to any third party or parties
in connection with the origination or negotiation of this Agreement or the
consummation of the transactions contemplated by this Agreement.
ARTICLE V
COVENANTS OF LICENSOR
Section 5.01. Compliance with EAPS License. Licensor hereby
covenants to and agrees with Licensee that it shall use its best efforts to act
in accordance and remain in full compliance with the terms, provisions and
conditions of the EAPS License and will not take any action proscribed thereby
or omit to take any action required thereunder which in any way would constitute
a default thereunder or a breach thereof or in any way jeopardize the rights of
the Licensor thereunder or the rights of the Licensee hereunder. Licensor hereby
further covenants to and agrees with Licensee that it shall notify Licensee in
writing (in accordance with the notice provisions of Section 7.05 hereof) at
such time as Licensor shall become aware of any act or omission to act on the
part of the Licensor which could in any way be construed as a default or breach
of the EAPS License by the Licensor or which could in any way impact negatively
or jeopardize the Licensor's rights thereunder or Licensee's rights hereunder.
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Section 5.02. License of Patents, Patent Applications, Technologies
and Inventions Developed After the Date Hereof. Subject to the provisions of the
EAPS License, Licensor hereby covenants to and agrees with Licensee to grant a
license to Licensee in respect of any and all patents, patent applications,
technologies, inventions, products, engineering specifications and proprietary
information in respect of the Technologies, Inventions, Patent Applications and
proprietary information licensed hereby now or hereafter developed, controlled
or acquired by the Licensor in respect of the Intellectual Property and to
execute, deliver and file all such documents and papers necessary to perfect
Licensee's right thereto.
Section 5.03. Covenant to Interface with EAPS. Licensor agrees to
establish and maintain all lines of communication with EAPS in respect of the
Intellectual Property and to use its best efforts to cause EAPS to collaborate
with and provide full cooperation to the Licensee as necessary to operate under
this License.
Section 5.04 Further Actions. Licensor agrees to execute and deliver
such instruments and take such other actions as may be reasonably required to
consummate the transactions contemplated by this Agreement including executing
consents necessary to identify Licensee as a registered user of the Patents and
Trademarks of Licensor used by Licensee.
ARTICLE VI
COVENANTS OF LICENSEE
Section 6.01. Payment of Taxes and Fees. Licensee agrees to pay all
transfer, sales, use and other taxes, fees, and charges incurred in connection
with the consummation of the transactions contemplated by this Agreement.
Licensee shall prepare and file any returns and other filings and remit payment
relating to such taxes, fees and charges on a timely basis to proper
governmental authorities.
Section 6.02. Further Actions. Licensee agrees to execute and
deliver such instruments and take such other actions as may be reasonably
required to consummate the transactions contemplated by this Agreement.
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ARTICLE VII
GENERAL PROVISIONS
Section 7.01 Survival of Representations and Warranties. Each party
hereto covenants and agrees that its representations and warranties contained in
this Agreement, in any Schedule or Exhibit, or in any certificate delivered in
connection with the consummation of the transactions contemplated by this
Agreement shall survive the Closing for a period of one (1) year,
notwithstanding investigation by or on behalf of either party.
Section 7.02. Assignment. Licensee may assign its rights under this
Agreement to any affiliate of Licensee or any successor or purchaser of Licensee
which agrees to assume all of the obligations of Licensee pursuant to this
Agreement. Except for the foregoing, this Agreement may not be assigned by
either party hereto without the prior written consent of the other party which
shall not be unreasonably withheld.
Section 7.03. Expenses. Licensee shall pay all expenses and fees
including but not limited to attorney's and accountants' fees and fees of other
experts incurred in connection with the consummation of the transactions
contemplated by this Agreement.
Section 7.04. Waiver. The failure of either party to act to enforce
rights hereunder shall not be deemed a waiver and shall not preclude enforcement
of any rights hereunder. No waiver of any term or condition of this Agreement on
the part of either party shall be effective for any purpose whatsoever unless
such waiver is in writing and signed by such party.
Section 7.05. Notices. Any notice, request, demand, waiver, consent,
approval, or other communication ("Notice") which is required to be or may be
given under this Agreement shall be in writing and shall be deemed given only if
delivered to the party personally or sent to the party by telegram, telex, or
facsimile transmission, by courier, or by registered or certified mail, return
receipt requested, postage prepaid, to the parties as follows:
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To Licensor: EREC Holdings, Ltd.
Xxxxxxxxxxx Xxxxxxx 00X
X-00000, Xxxxxx Xxxxxxx
Phone/Fax 00-00-000-0000
To Licensee: Eurotech, Ltd.
0000 Xxxxxxxxx Xxxxxx
Xxx Xxxxx, Xxxxxxxxxx 00000
or to such other address as either party may designate from time to time by
notice to the other party sent in like manner; and any notice if personally
delivered or sent by telegram, telex, or facsimile transmission shall be deemed
given on the date of delivery or transmission, and any notice mailed shall be
deemed given three (3) days after the date of mailing.
Section 7.06. Entire Agreement. This Agreement, the Exhibits,
Schedules, and the instruments referred to herein constitute the entire
Agreement between the parties and supersede all prior Agreements and
understandings, oral and written, between the parties hereto with respect to the
subject matter hereof, and the parties are not bound by any Agreements,
understandings, or conditions other than expressly set forth herein or therein.
Section 7.07. Heading. The article and section headings contained in
this Agreement are for reference purposes only and shall not be deemed to be
part of this Agreement or to affect the construction or interpretation of this
Agreement.
Section 7.08. Exhibits and Schedule. All Exhibits and Schedules
referred to herein have been delivered by the parties hereto to each other prior
to or simultaneously with the execution of this Agreement, and such Exhibits and
Schedules shall be deemed to be a part of this Agreement as if set forth herein.
All information set forth in the Schedule is intended to be responsive to each
provision of the Section or requirement of this Agreement to which it can be
applied and is qualified by the contents of any documents to which reference is
made. The listing in the Schedules of any matter shall not be construed as an
admission that the matter is material or not in the ordinary course of business
or as establishing a standard of materiality.
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Section 7.09. Counterparts. This Agreement may be executed in one
or more counterparts, each of which shall constitute an original and all of
which together shall constitute one and the same instrument.
Section 7.10. Governing Law. This Agreement shall be governed by and
construed in accordance with the domestic laws of the State of New York without
giving effect to any choice or conflict of law provision or rule (whether of the
State of New York or any other jurisdiction) that would cause the application of
the laws of any jurisdiction other than the State of New York.
Section 7.11. Submission to Jurisdiction. Each of the Parties
submits to the jurisdiction of any state or federal court sitting in New York,
in any action or proceeding arising out of or relating to this Agreement and
agrees that all claims in respect of the action or proceeding may be heard and
determined in any such court. Each Party also agrees not to bring any action or
proceeding arising out of or relating to this Agreement in any other court. Each
of the Parties waives any defense of inconvenient forum to the maintenance of
any action or proceeding so brought and waives any bond, surety, or other
security that might be required of any other Party with respect thereto.
Section 7.12. Severability. The invalidity or unenforceability of
any provision of this Agreement shall not affect the validity or enforceability
of any other provision. If any provision of this Agreement is so broad as to be
unenforceable, such provision shall be construed to be only so broad as is
enforceable.
Section 7.13. No Benefit to Others. The representations, warranties,
covenants, and Agreements contained in this Agreement are for the sole benefit
of the parties hereto and their respective successors and assigns, and shall not
be construed to confer and are not intended to confer any rights on any other
persons.
Section 7.14. Amendments and Waivers. No amendment of any provision
of this Agreement shall be valid unless the same shall be in writing and signed
by the Licensor and the Licensee. No waiver by any Party of any default,
misrepresentation, or breach of warranty or
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covenant hereunder, whether intentional or not, shall be deemed to extend to any
prior or subsequent default, misrepresentation, or breach of warranty or
covenant hereunder or affect in any way any rights arising by virtue of any
prior or subsequent such occurrence.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement
to be executed as of the day and year first written.
Attest: EREC HOLDINGS LTD.
/s/ [Illegible] By: /s/ [Illegible]
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Attest: EUROTECH, LTD.
/s/ [Illegible] By: /s/ [Illegible]
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EXHIBIT A
