Exhibit 10.1
SUBLICENSE AGREEMENT
THIS SUBLICENSE AGREEMENT (the "Agreement"), dated this 30th day of April,
2003 by and between XXXXXX INTERNATIONAL. LTD., having a business address at
0000 Xxxxxxx 00 & Xxxxxxxxx Xxxx, Xxxx Xxxxxxxx, Xxx Xxxxxx 00000-0000 (the
"LICENSOR") and XXXXXX MOTORCYCLE COMPANY, LTD, having a business address at
0000 Xxxxxxx 00 & Xxxxxxxxx Xxxx, Xxxx Xxxxxxxx, XX 00000-0000 (the "LICENSEE").
BACKGROUND
WHEREAS, LICENSOR owns and/or has the exclusive right to sublicense
certain Patent Rights and Technical Information (as hereinafter defined)
relating to Licensed Products (as hereinafter defined) to make, use and sell
motorcycles in the United States of America and the Western Hemisphere.
WHEREAS, LICENSOR desires to grant to LICENSEE certain rights under such
Patent Rights and Technical Information in the Territory (as hereinafter
defined);
WHEREAS, LICENSEE desires to acquire such rights in accordance with the
terms and conditions hereinafter set forth.
NOW THEREFORE, in consideration of the premises and covenants, and other
good and valuable consideration, and the mutual promises of the performance of
the undertakings set forth herein, it is agreed by and among the parties hereto
as follows:
ARTICLE l - DEFINITIONS
As set forth herein, the following terms shall be defined as follows:
1.1 - CSRV Valve System shall mean a cylinder head or heads for an
internal combustion engine manufactured in accordance with the Patent Rights
and/or Technical Information (as hereinafter defined) pertaining to the Xxxxxx
Spherical Rotary Valve System.
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1.2 - CSVR Valve Seal shall mean a valve seal for use with a CSRV Rotary
Valve Sphere (as hereinafter defined) in the Xxxxxx Spherical Rotary Valve
System.
1.3 - A CSRV Rotary Valve Sphere shall mean a spherical rotary valve used
in the CSRV Valve System in accordance with the Technical Specifications.
1.4 - Dollars and $ shall mean the official currency of the government of
the United States of America.
1.5 - Field of Use shall mean utilizing in the Territory the CSRV Valve
System solely, and for no purpose other than, the manufacturing, use and sale of
motorcycles and gasoline-powered internal combustion engines used in motorcycles
for street, racetrack, etc. This Sublicense and Field of Use shall also include
the right to sublicense and/or make franchise agreements with third parties.
1.6 - Head Part as defined in Section 1.12.
1.7 - Head Unit as defined in Section 1.12.
1.8 - Improvement shall mean any improvement, change or modification to
the CSRV System which may be developed, created or acquired by either party to
this Agreement, but only to the extent that the same comes within the scope of
one or more claims in the Patent Rights (as hereinafter defined).
1.9 - Improvement Patent is a patent that covers an Improvement.
1.10 - LICENSEE shall mean LICENSEE as specified on the title page of this
Agreement and any subsidiary thereof having more than 50% of its ordinary voting
shares held and/or controlled by LICENSEE.
1.11 - License Period as defined in Section 2.1.
1.12 - Licensed Product shall mean internal combustion engine heads
installed in motorcycles and gasoline-powered internal combustion engines used
in motorcycles for street, racetrack, etc., as limited by the Field of Use,
incorporating the Patent Rights and/or Technical Information in its design and
manufacture ("Head Unit(s)") as well as parts and accessories
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incorporating in their design and manufacture the Patent Rights and/or Technical
Information and which form a part of the Head Unit ("Head Part(s)"). Licensed
Product shall also mean any other product manufactured and/or sold by LICENSEE,
with the written permission of LICENSOR, based on the Patent Rights and/or
Technical Information.
1.13 - Licensing Fee as defined in Section 5.1.
1.14 - Sold Unit shall mean a Licensed Product, that has been sold by
Licensee or any of its sublicensees as permitted under this Sublicense and the
sales price from such sale has been received or collected by the Licensee and as
a result, is included in the determination of royalty payments due and owing to
LICENSOR pursuant to the terms of this Agreement.
1.15 - Patent Rights shall mean the patents and patent applications and
all patents which may be issued pursuant to such patent applications, as listed
in Attachment 1.15, together with any continuations or continuations in part
thereof, and all patents issuing thereon including reissues, patents of addition
and any registration or confirmation patents corresponding thereto and all
corresponding foreign patents and patent applications.
1.16 - Payment Computation Period as defined in Section 5.3.
1.17 - Regulatory Approval shall mean all governmental approvals necessary
for LICENSEE to have the right to market or use the Licensed Product in the
Territory.
1.18 - Regulatory Authority shall mean the national, state or local
authority responsible for granting Regulatory Approval in the Territory.
1.19 - Royalty and/or Royalties as defined in Section 5.2.
1.20 - Technical Information shall mean all information concerning the
Xxxxxx Spherical Rotary Valve System disclosed by LICENSOR to LICENSEE, together
with all proprietary information, trade secrets, skills and experience, recorded
and unrecorded, accumulated from time to time during the term of this Agreement,
relating to the Licensed Product and all designs, drawings, specifications and
the like, owned by LICENSOR, insofar as the same relate to the Licensed Product.
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1.21 - Technical Specifications shall mean the specifications and
performance parameters developed by LICENSOR for the Xxxxxx Spherical Rotary
Valve System.
1.22 - Territory shall mean all of the countries and their possessions
comprising North America, Central America and South America.
ARTICLE II - LICENSES GRANTED
2.1 - Licenses Granted to LICENSEE
Subject to the terms and conditions set forth herein, for a license period
equal to the duration of the Patents commencing upon the Payment Date, as
defined in Section 5.1 (the "License Period"), unless terminated pursuant to
Article VIII, LICENSOR hereby grants to LICENSEE:
(a) Engines. An exclusive license, with the right to grant sublicenses to
make, use, sell or franchise to others, throughout the Territory within the
Field of Use under the Patent Rights and Technical Information subject to the
payment of royalties as provided herein, to make or retrofit motor vehicle
engines that incorporate the CSRV Valve System in accordance with the Technical
Specifications, and to sell, lease or otherwise dispose of such motor vehicle
engines; and
(b) CSRV Valve Seals. Within the limitations set forth in subsections
2.1(a), a non-exclusive license to use CSRV Valve Seals solely in the
manufacture of CSRV Valve Systems for incorporation into motor vehicle engines
throughout the Territory within the Field of Use under the Patent Rights and
Technical Information subject to the payment of royalties as provided herein.
2.2 - Limitation of Licenses Granted. The licenses granted in Section 2.1
are subject to the following:
(a) No license is granted to LICENSEE to make or have made CSRV Valve
Seals. It is understood and agreed that one such CSRV Valve Seal shall be used
in conjunction with each CSRV Rotary Valve Sphere incorporated in the CSRV Valve
System by LICENSEE and only
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CSRV Valve Seals shall be used in the manufacture, or in the subsequent
servicing, of any CSRV Valve System or any internal combustion engine that
incorporates the CSRV Valve System, a CSRV Valve Seal or a CSRV Rotary Valve
System. As set forth in Section 5.8 of this Agreement, the terms and conditions
pursuant to which the LICENSOR shall sell CSRV Valve Seals to the LICENSEE shall
be set forth in a separate contract.
(b) No license is granted to LICENSEE with respect to CSRV Valve Systems
which are sold, leased or used except under the name and the warranties of
LICENSEE. The manufacture and sale of Licensed Products on a subcontract basis,
where the name of LICENSEE is not clearly associated with the manufacture of the
Licensed Product, is expressly excluded from, and prohibited by, this
Sublicense.
(c) No license is granted to LICENSEE with respect to any other purpose or
use except the Field of Use, including any new vehicle or new engine, the power
source for the generation of electrical energy, the pressurization and
distribution of natural gas or well gas for commercial use or for private use or
for individual homes or for any other purpose, use or application, any truck of
any size, motor home, SUV, tractor, farm equipment, motorized or self-propelled
equipment, watercraft, marine engines, helicopters, airplanes, rockets,
generators, turbines, compressors, any engine not fueled by gasoline, any power
source for any equipment or product other than motor vehicles, such as
lawnmowers, Porsche engines, Ford engines, General Motors engines, engines for
Ford automobiles, engines for General Motors automobiles, engines for Porsche
automobiles and any other engine the rights to which have previously been, or
which may subsequently be, the subject of a license agreement between CIL and
any third party).
(d) No license is granted to LICENSEE to permit the manufacture or
processing of any CSRV Valve System components by a subcontractor except
pursuant to the express prior written consent of LICENSOR which the LICENSOR
shall not be obligated to grant.
2.3 - Furnishing Know-How and Supporting Services.
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LICENSOR will promptly upon execution of this Agreement, furnish to
LICENSEE copies of all documents and items comprising the Technical Information
and Technical Specifications so that LICENSEE, as its own cost and expense, can
create the design and specifications for the Licensed Product.
2.4 - Improvements.
(a) If LICENSOR has heretofore brought about or shall hereafter during the
License Period bring about any Improvement to Licensed Products, LICENSOR shall
promptly disclose such Improvement to LICENSEE.
(b) If LICENSEE has heretofore brought about or shall hereafter during the
License Period bring about any Improvement, LICENSEE shall promptly disclose
such Improvement to LICENSOR. If such Improvement appears to be patentable,
LICENSOR shall have the first option to file a patent application thereon in
LICENSOR'S name. The expense of filing, securing and maintaining patent
protection on such Improvement shall be borne by LICENSOR. If LICENSOR shall
elect not to file any such patent application, then LICENSEE shall have the
option to do so in its own name and at its own expense.
(c) LICENSEE agrees to grant and hereby grants to LICENSOR a
non-exclusive, royalty-free license, together with the right to grant
sublicenses to other LICENSEES of LICENSOR under each of said patent
applications and any patents issuing as set forth in subsection 2.4(b).
(d) If LICENSOR receives from another LICENSEE of the Xxxxxx Spherical
Rotary Valve System a non-exclusive, royalty-free license, together with a right
to grant sublicenses for an Improvement, LICENSOR shall promptly inform LICENSEE
of such Improvement and shall include such patent applications and/or patents
issuing thereon in Attachment 1.15.
2.5 - Patent Markings.
LICENSEE shall xxxx on an exposed surface of all Licensed Products made
pursuant to the authority set forth in this Agreement appropriate patent
markings identifying LICENSOR as
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owner of the patents and/or patent applications. The content, form and language
used in such markings shall be in accordance with all applicable laws and shall
be approved in advance, in writing, by LICENSOR.
2.6 - Acknowledgement of License.
On all CSRV Valve Systems, LICENSEE shall acknowledge that the same are
manufactured under license from LICENSOR. Unless otherwise agreed to by the
parties, the following notice shall be used by LICENSEE on an exposed surface of
all Licensed Products: "Manufactured under license from Xxxxxx International
Ltd." Such notice shall also be used in all descriptive materials and
instruction and service manuals relating to the Xxxxxx Spherical Rotary Valve
System.
ARTICLE III - TECHNICAL COOPERATION AND APPROVALS
3.1 - Technical Cooperation.
Upon request by LICENSEE, LICENSOR shall furnish to LICENSEE technical
assistance with respect to the design and product engineering of the Xxxxxx
Spherical Rotary Valve System. Such technical assistance and the compensation
that LICENSEE is to pay to LICENSOR will be provided under the terms of a
separate engineering contract.
3.2 - Regulatory Approval.
During the License Period, LICENSEE assumes the complete responsibility,
at LICENSEE'S sole cost and expense, for obtaining Regulatory Approval, where
required, from each Regulatory Authority, for the manufacture, sale and use of
the Xxxxxx Spherical Rotary Valve System in the Territory.
LICENSOR, at the sole cost and expense of LICENSEE, agrees to provide
LICENSEE with all reasonable assistance and cooperation in the preparation and
submission of any application for Regulatory Approval.
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ARTICLE IV - CONFIDENTIAL INFORMATION
4.1 - LICENSEE shall use all Technical Information and Technical
Specifications obtained heretofore or hereafter from LICENSOR for the sole
purpose of manufacturing and selling Licensed Products under this Agreement.
4.2 - LICENSE shall hold in confidence any and all Technical Information
and Technical Specifications disclosed directly or indirectly to LICENSEE by
LICENSOR, under this Agreement except that such obligation does not extend to:
(a) Technical Information and Technical Specifications which at the time of the
disclosure are in the public domain; (b) Technical Information and Technical
Specifications which after disclosure is published or otherwise becomes part of
the public domain through no fault of LICENSEE (but only after, and only to the
extent that, it is published or otherwise becomes part of the public domain);
(c) Technical Information and Technical Specifications which LICENSEE can prove
was in its possession (as evidenced by LICENSEE'S written records) at the time
of the disclosure and was not acquired, directly or indirectly from LICENSOR or
from a third party under an obligation of confidence; and (d) Technical
Information and Technical Specifications which LICENSEE can prove was received
by it (as evidenced by LICENSEE'S written records) after the expiration of the
License Period from a third party who did not require LICENSEE to hold such
information in confidence and who did not acquire it, directly or indirectly
from LICENSOR under an obligation of confidence.
4.3 - LICENSEE shall upon request by LICENSOR, obtain from its officers,
employees and other persons having access to Technical Information and Technical
Specifications, a duly-binding agreement to maintain such information in
confidence by any such person in a form acceptable to LICENSOR.
4.4 - Within thirty (30) days of the expiration of the License Period
LICENSEE shall return to LICENSOR all Technical Information and Technical
Specifications together with all other confidential information belonging to
LICENSOR.
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ARTICLE V - PAYMENTS
5.1 - Licensing Fee. In consideration of the rights granted hereunder,
LICENSEE (a) shall pay LICENSOR a Licensing Fee, subject to adjustment increases
as described below, of 2,550,000 common shares of Xxxxxx Motorcycle Company,
Ltd., representing more than fifty (50%) percent of the currently issued and
outstanding LICENSEE shares of common stock, deliverable on the date on which
LICENSEE executes this Agreement, and; (b) LICENSEE hereby grants to the
LICENSOR an absolute anti-dilution right, to be recognized and applied as
follows:
A. LICENSOR and LICENSEE hereby acknowledge that there are currently
5,060,000 common shares of LICENSEE outstanding which amount includes the
2,550,000 common shares issued to LICENSOR pursuant to the terms of this
Agreement.
B. The parties intend that the anti-dilution right granted to LICENSOR
herein shall require that the LICENSEE issue from time to time a sufficient
amount of its equity securities to LICENSOR so that at all times during the
corporate existence of LICENSEE, LICENSOR shall own and control in excess of
fifty (50%) percent of all classes or series of all of the outstanding equity
securities of LICENSEE at all times. The parties further intend that by virtue
of this anti-dilution right granted by LICENSOR, LICENSOR shall at all times be
deemed the parent and the LICENSEE a subsidiary of the parent under the Delaware
General Corporation Law.
C. LICENSEE covenants to LICENSOR that it shall issue to the LICENSOR that
number of additional shares of its equity securities identical in nature
and equal in amount to any issuance or issuances of LICENSEE'S equity securities
that may be made to any third party or parties following the date hereof.
D. LICENSEE shall apply the anti-dilution right in accordance with the
following example: currently there are 5,060,000 LICENSEE common shares
outstanding, including the 2,550,000 common shares issued to the LICENSOR today;
in the event the LICENSEE should issue 500,000 shares of its common stock in a
private placement to investors
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following the date hereof, LICENSEE shall issue to LICENSOR, as soon as
practicable after any such issuance and in accordance with its obligation to
issue to LICENSOR its equity securities in identical nature and in an equal
amount, 500,000 shares of its common stock..
5.2 - Royalties.
(a) In further consideration for the grant of the License set forth in
Article II of this License Agreement, LICENSEE shall pay LICENSOR a royalty for
each Sold Unit in the amount of $50.00 per each 1,000 cc. The royalties provided
for in this Section 5.2 shall be payable with respect to each Sold Unit.
(b) Except as otherwise specified, the royalty payments required by
Section 5.2 shall accrue when a Licensed Product becomes a Sold Unit as sold by
LICENSEE or its permitted sublicensees.
5.3 - LICENSEE shall pay the royalties accruing during each Payment
Computation Period (consisting of each day during each calendar month for each
calendar year, including the first and the last day of each calendar month), ten
(10) days after the end of such Payment Computation Period and such payment
shall be accompanied by a royalty report stating the following:
(a) the number of Sold Units of each Licensed Product type sold during
such Payment Computation Period; and
(b) the amount of the royalty payment due for each such Licensed Product
during each such Payment Computation Period, broken down to reflect the
derivation of such amount.
5.4 - Mode of Payment. All amounts payable under this Agreement shall be
paid in U.S. Dollars in immediately available federal funds.
5.5 - Taxes. Any taxes required to be paid or withheld with respect to
amounts payable to LICENSOR under this Agreement shall be deducted at the rates
specified by applicable law, regulation or treaty from the amount of the
payments due hereunder. LICENSEE for
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LICENSOR'S account shall promptly provide receipts from the relevant government
or taxing authority evidencing payment of such taxes.
5.6 - Place of Payment. All payments under this Agreement shall be
remitted to LICENSOR at its offices at the address specified in Article XVI.
5.7 - Books and Records. Until five (5) years after the termination of the
License Period, LICENSEE shall keep full and accurate books and records setting
forth the sales records and the amount of compensation payable with respect to
the Sold Units of each Licensed Product. LICENSEE shall permit an independent
certified public accountant selected by LICENSOR to examine such books and
records, upon reasonable notice during working hours, at any time, but not later
than two (2) years following the payment in question, for the purpose of
verifying the reports, accounting and payments required by this Agreement.
5.8 - Product Prices. Based upon prices, terms and conditions set forth in
a separate agreement, LICENSEE shall buy all of the CSRV Valve Seals to be
utilized under this Agreement from LICENSOR. LICENSOR agrees to provide LICENSEE
with such other subsystems of the Xxxxxx Spherical Rotary Valve System as
LICENSEE may require, subject to prices, terms and conditions set forth in a
separate contract. Prices to LICENSEE shall be competitive to prices charged to
other LICENSEES for similar quantities of components or assemblies.
ARTICLE VI - PATENT ENFORCEMENT
6.1 - LICENSEE shall immediately inform LICENSOR of any infringement,
potential or actual, of the Patent Rights which may come to LICENSEE'S
attention. LICENSOR in its sole discretion may, but shall not be obligated to,
take whatever steps it deems advisable to terminate any such potential or actual
infringement of any of the Patent Rights. If LICENSOR shall elect not to pursue
such third party, LICENSEE, at its sole cost and expense and with LICENSOR's
approval, may take such action to terminate such infringement, in which event
LICENSOR agrees to cooperate with LICENSEE.
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ARTICLE VII - REPRESENTATIONS, OBLIGATIONS,
WARRANTIES AND DISCLAIMERS
7.1 - LICENSOR represents and warrants as follows:
(a) All Technical Information delivered prior to the date of the execution
hereof has been, and all Technical Information delivered hereafter will be, to
the best of LICENSOR'S knowledge, substantially accurate and complete with
respect to material matters.
(b) LICENSOR is the rightful owner of the Patent Rights and has the
exclusive right to license all of the Patent Rights, and all such Patent Rights
pertaining to the CSRV Valve System under LICENSOR'S control and possession are
set forth in Attachment 1.15.
(c) LICENSOR has the power and authority to execute, deliver and perform
its obligations under this Agreement, and that neither the execution nor
delivery of this Agreement nor the performance of its obligations hereunder will
constitute a breach of the terms or provisions of any contract or agreement to
which it is a party.
(d) LICENSOR shall not compete with LICENSEE at any time in the Territory
only with respect to the Field of Use.
(e) LICENSOR is a duly organized, validly existing corporation of the
State of Delaware and its corporate charter has never been revoked or suspended.
7.2 - LICENSEE represents and warrants as follows:
(a) LICENSEE has the power and authority to execute, deliver and perform
its obligations under this Agreement, and that neither the execution nor
delivery of this Agreement nor the performance of its obligations hereunder will
constitute a breach of the terms or provisions of any contract or agreement to
which it is a party.
(b) LICENSEE is a duly organized, validly existing corporation of the
State of Delaware and its authority to operate as a corporation has never been
revoked or suspended.
(c) LICENSEE has the financial capability to pay the consideration that is
required by Article V.
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7.3 - Obligations of LICENSEE. LICENSEE will:
(a) execute all such tasks as may be necessary to bring about the speedy
manufacture, sale and use of Licensed Products consistent with good business
practice;
(b) ensure that all steps within its power are undertaken with all
reasonable speed to ensure that Licensed Products made by LICENSEE comply with
all relevant governmental regulations in the Territory; and
(c) make or have made Licensed Products in a professional and workmanlike
manner to meet general engineering standards.
7.4 - Limitation of LICENSOR'S Warranties.
(a) Nothing contained in this Agreement shall be construed as a warranty
or representation by LICENSOR as to the validity or scope of any patent included
in the Patent Rights. Furthermore, no warranty or representation is made by
LICENSOR that the manufacture, use or sale or other disposition by LICENSEE of
Licensed Products will be free of infringement of any patent or other rights of
persons not a party hereto. LICENSOR shall not be obliged to defend, indemnify
or hold LICENSEE harmless against suit, claim, demand or action based on actual
or alleged infringement of any patent or other rights belonging to persons not a
party to this Agreement. Any such suit, claim, demand or action based on actual
or alleged infringement by LICENSEE shall not relieve LICENSEE from the
performance of its obligations hereunder.
(b) LICENSOR makes no representations, extends no warranties of any kind,
express or implied, and assumes no responsibility whatsoever with respect to the
use, sale or other disposition by LICENSEE or its vendees or other transferees
of products incorporating, or made by use of, Patent Rights, Technical
Information and/or Technical Specifications furnished under this Agreement.
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7.5 - Indemnification and Insurance.
(a) LICENSEE shall indemnify and hold LICENSOR harmless from and against
any and all expenses (including attorneys fees and costs), claims, demands,
liabilities or money judgments for death or bodily injury arising from the
testing, manufacturing, sale or use of any Licensed Product by LICENSEE, or its
vendees or transferees; provided, however, that LICENSEE shall give LICENSOR
notice as soon as practicable of any claim or action to which the foregoing
provisions apply. LICENSOR shall have the right, but not the obligation, to
participate in any compromise, settlement or defense of any such claim or
action.
(b) LICENSEE for the benefit of LICENSOR shall secure product liability
insurance and comprehensive general liability insurance coverage designating
LICENSOR as a named insured, for bodily injury and property damage, with a
combined single limit coverage of not less than $10,000,000.00, from a
recognized insurance company qualified to do business in the State of New Jersey
that is acceptable to LICENSOR. As proof of insurance coverage, LICENSEE shall,
within thirty (30) days of the Payment Date, provide a certificate of fully paid
insurance, naming LICENSOR as an insured party, for LICENSOR'S approval, to be
effective before LICENSEE makes, uses or sells any Licensed Product. Such
insurance shall be maintained throughout the term of this License Agreement, and
at all times LICENSEE shall ensure that LICENSOR is provided with a copy of the
effective certificate of insurance.
(c) Each of the parties hereto shall indemnify and save harmless the other
of, from and against any losses, damages and expenses (including legal fees and
costs) which the other may suffer or incur by reason of a breach of any
agreement, representation or warranty set forth in this Agreement.
(d) The provisions of Section 7.5 shall survive the termination or
expiration of this Agreement.
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ARTICLE VIII - DURATION AND TERMINATION
8.1 - Subject to the provisions of Section 8.3, all rights and obligations
under this Agreement shall expire upon the expiration of the last to expire
patent comprising the Patent Rights and any Improvement Patent added thereto.
8.2 - If either LICENSEE or LICENSOR commits a material breach of any
provision of this Agreement, and such breach is not cured within thirty (30)
days after the date on which a written notice of breach is sent to the breaching
party, the non-breaching party shall have the right to terminate this Agreement
upon ten (10) days further written notice.
8.3 - This Agreement shall terminate effective immediately upon:
(a) The filing by LICENSEE of an involuntary petition in bankruptcy, the
entry of a decree or order by a court or agency or supervisory authority of
competent jurisdiction for the appointment of a conservator, receiver, trustee
in bankruptcy or liquidator for LICENSEE in any insolvency, readjustment of
debt, marshaling of assets and liabilities, bankruptcy or similar proceedings,
or the winding up or liquidation of its affairs, and the continuance of any such
petition, decree or order undismissed or unstayed and in effect for a period of
sixty (60) consecutive days; or
(b) The consent by LICENSEE to the appointment of a conservator, receiver,
trustee in bankruptcy or liquidator in any insolvency, readjustment of debt,
marshaling of assets and liabilities, bankruptcy or similar proceedings of or
relating to LICENSEE, or relating to substantially all of its property, or if
LICENSEE shall admit in writing its inability to pay its debts generally as they
become due, file a petition to take advantage of any application insolvency,
reorganization or bankruptcy statute, make an assignment for the benefit of its
creditors or voluntarily suspend payment of its obligations.
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8.4 - Termination shall not release either LICENSEE or LICENSOR from any
obligation arising prior to such termination or any requirement pursuant to
Article VII.
8.5 - In the event of any termination of this Agreement, other than
because of LICENSEE'S default, LICENSEE shall be entitled to fill orders for
Licensed Products already received and to make and to use and/or to sell
Licensed Products for which commitments to customers have been made at the time
of such termination, subject to the payment of applicable royalties.
8.6 - Any termination of this Agreement shall be without prejudice as to
any obligation of either party to the other accruing prior to or at such
termination. Applicable royalties shall be payable under Section 5.2 of Article
V with respect to sales of all Licensed Products which were manufactured or were
in the course of being manufactured prior to such termination or for which
LICENSEE had accepted orders prior to such termination.
8.7 - The provisions of Article IV shall survive the termination or
expiration of this Agreement.
ARTICLE IX - WAIVER
9.1 - No provision of this Agreement shall be deemed to have been modified
by any acts of LICENSOR, its agents or employees, or by failure to object to any
acts of LICENSEE which may be inconsistent herewith, or otherwise, except by a
subsequent agreement in writing signed by both parties. No waiver of a breach
committed by either party in one instance shall constitute a waiver or a license
to commit or continue breaches in other or like instances.
ARTICLE X - LIMITATIONS OF RIGHTS AND AUTHORITY
10.1 - No right or title whatsoever in the Patent Rights, Licensed
Products, Technical Specifications or Technical Information is granted by
LICENSOR to LICENSEE, or shall be taken or assumed by LICENSEE, except as is
specifically set forth or granted in this Agreement.
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10.2 - Neither party shall in any respect whatsoever be taken to be the
partner, agent or representative of the other party and neither party shall have
any authority to assume any obligation for the other party or to commit the
other party in any way.
10.3 - Neither party shall at any time heretofore or hereafter publicly
state nor imply that the terms and conditions specified herein, or that the
relationship between LICENSOR and LICENSEE, are in any way different from those
specifically set forth in this Agreement. If requested by one party, the other
party shall promptly supply the first party with copies of all public statements
and of all promotional material relating to this Agreement and to Licensed
Products.
ARTICLE XI - FORCE MAJEURE
11.1 - Neither LICENSOR nor LICENSEE shall be liable for the failure to
perform or delay in performing obligations set forth in this Agreement and
neither LICENSOR nor LICENSEE shall be deemed in breach of its obligations to
the extent, and for so long as, such failure or delay or breach is due to
natural disaster or any cause reasonably beyond the control of LICENSOR or
LICENSEE. Either LICENSOR or LICENSEE desiring to invoke this Article shall
notify the other party promptly of such desire and shall use reasonable efforts
to resume performance of its obligations as soon as is reasonably possible.
However, if performance by either LICENSOR or LICENSEE becomes impossible for
more than one consecutive twelve (12) month period by reason thereof, this
Agreement will be terminated upon either party giving thirty (30) days' advance
written notice.
ARTICLE XII - INJUNCTIVE RELIEF FOR BREACH;
SEVERABILITY AND ENFORCEABILITY
12.1 - LICENSEE agrees that LICENSOR may not be adequately compensated by
damages at law for a breach or threatened breach by LICENSEE of any of the
provisions of Articles II, IV and XIII and sections 7.4 and 17.2 of this
Agreement, and that LICENSOR shall
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be entitled to injunctive relief and specific performance in connection
therewith, in addition to all other remedies.
12.2 - Each of the covenants contained in this Agreement shall be
construed as separate covenants, and if any court of last resort shall determine
that any such covenants are too broad as to the area, activity or time set forth
therein, said area, activity or time shall be deemed reduced to whatever extent
the court deems reasonable and such covenants shall be enforced as to such
reduced area, activity or time, without limiting the scope or enforceability of
the remaining provisions of those sections.
12.3 - If any provision of this Agreement is declared invalid by a court
of last resort or by any court from the decision of which an appeal is not taken
within the time provided by law, then, and in such an event, this Agreement will
be deemed to have been terminated only as to the portion thereof which relates
to the provision invalidated by that judicial decision, but this Agreement, in
all other respects, will remain in force.
12.4 - It is specifically agreed that no provision in any manner violative
of the anti-trust laws of the United States of America or other governmental
authority within the Territory as now or hereafter enacted or construed, is
intended to be or will be considered to be incorporated into this Agreement or
will be binding upon the parties.
ARTICLE XIII - LIMITATION OF ASSIGNMENT BY LICENSEE
13.1 - The rights, duties and privileges of LICENSEE hereunder shall not
be transferred or assigned by it, either in part or in whole, without prior
written consent of LICENSOR, which may be denied, withheld or conditioned by
LICENSOR in its sole discretion. However, LICENSEE shall have the right to
transfer and assign its rights, duties and privileges under this Agreement in
connection with its merger or consolidation with another firm or the sale of its
entire business to another person or firm, provided that such person or firm
shall have agreed with LICENSOR to perform all of the transferring party's
obligations and duties hereunder.
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ARTICLE XIV - GOVERNING LAW
14.1 - This Agreement shall be governed by, construed and enforced in
accordance with the laws of the State of New Jersey and each party hereby
submits to the exclusive jurisdiction of any state or federal court located in
the State of New Jersey in the event of any claims arising under this Agreement.
ARTICLE XV - ENTIRE AGREEMENT
15.1 - This Agreement sets forth the entire agreement and understanding by
and between LICENSOR and LICENSEE as to the subject matter hereof and has
priority over all documents, verbal consents and understandings made before the
execution of this Agreement, and none of the terms of this Agreement shall be
amended or modified except in a written document signed by LICENSOR and
LICENSEE.
15.2 - In the event of an inconsistency between any of the terms of this
Agreement and any translation thereof into another language, the English
language version shall control.
ARTICLE XVI - NOTICES
16.1 - Any notice, consent or approval required under this Agreement shall
be in English and in writing, and shall be delivered to the following addresses
(a) personally by hand, (b) by certified mail, postage prepaid, with return
receipt requested, or (c) by telefax, confirmed by such certified mail:
If to LICENSOR:
XXXXXX INTERNATIONAL, LTD.
0000 XXXXXXX 00 & XXXXXXXXX XXXX
XXXX XXXXXXXX, XX 00000-0000
(000) 000-0000
(000) 000-0000
If to LICENSEE:
XXXXXX MOTORCYCLE COMPANY, LTD.
0000 XXXXXXX 00 & XXXXXXXXX XXXX
XXXX XXXXXXXX, XX X0000-0000
Tel. No.: (000) 000-0000
Fax No.: (000) 000-0000
105
All notices shall be deemed effective upon the date delivered. If either
party desires to change the address to which notice is sent to such party, it
shall so notify the other party in writing in accordance with the foregoing.
ARTICLE XVII - MISCELLANEOUS
17.1 - Headings and References. Headings in this Agreement are included
herein for ease of reference only and have no legal effect. References herein to
Sections or Attachments are to Sections and Attachments to this Agreement,
unless expressly stated otherwise.
17.2 - Restriction on Disclosure of Terms and Provisions.
(a) This Agreement shall be distributed solely to:
(i) those personnel of LICENSOR and LICENSEE who shall have a
need to know its contents;
(ii) those persons whose knowledge of its contents will
facilitate performance of the obligations of the parties under this
Agreement;
(iii) those persons, if any, whose knowledge of its contents
is essential in order to permit LICENSEE or LICENSOR to place or
maintain or secure benefits under policies of insurance; or
(iv) as may be required by law, regulation or judicial order.
(b) In the event disclosure is required by law, regulation or judicial
order, the disclosing party shall request that any disclosure be kept secret and
shall attempt to minimize disclosure of the financial terms of this Agreement.
Any party may publicly announce the existence of this Agreement, the manner in
which the parties shall operate, and the areas of responsibility of each party.
Except as legally required, no party may disclose the amount of payments or
royalty rates without the consent of the other party. The parties will consult
with each other prior to any press release relating to this Agreement.
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IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
executed as of the date first above written above in duplicate by their duly
authorized representatives.
LICENSOR:
ATTEST: XXXXXX INTERNATIONAL, LTD.
/s/ Xxxxxxx Xxxxxx By: /s/ Xxxxxx X. Xxxxxx
----------------------------------- -------------------------------------
Secretary Xxxxxx X. Xxxxxx, President
ATTEST: LICENSEE:
XXXXXX MOTORCYCLE COMPANY, LTD.
/s/ Xxxxxxx Xxxxxx By: /s/ Xxxxxxx X. Xxxxxx
----------------------------------- -------------------------------------
Secretary Xxxxxxx X. Xxxxxx, President
ATTACHMENT 1.15
PATENTS AND PATENT APPLICATIONS
Date Date
US Patent No. Application Filed of Patent
------------- ----------------- ---------
4,989,576 (Xxxx I) July 26,1982 February 5,1991
4,953,527 (Xxxx XX) November 14,1998 September 4,1990
4,989,558 (Xxxx XX) September 14,1998 February 5, 1991
4,944,261 (Xxxx IIB) October 16,1989 July 31,1990
4,976,232 (Valve Seal) December 6,1989 December 11,1990
5,109,814 (Spherical Valve) May 10,1991 May 5,1992
5,361,739 (Xxxx III) May 12,1993 November 8,1994
5,048,979 (Self-Adjusting
Bearing Assembly) June 13, 1990 September 17, 1991
5,601,405 (Valve Apparatus
for Steam Turbines) August 14, 1995 February 11, 1997
6,008,710 (Magnetic Inductor
Water Conditioner) May 17, 1999 December 28, 1999
6,308,676B1 (Cooling System
for Rotary Valve Engine) September 8, 2000 October 30, 2001
6,293,098B1 (Methods &
Apparatus for Joining
Pressurized Exhaust
Manifold Sections) August 29, 2000 September 25, 2001
In addition to the foregoing issued patents, the following U.S. patent
applications are pending to obtain protection for further inventions covering:
Application No. Description
--------------- -----------
10/074311 Improved Valve Seals for Rotary Valve Engine
PCT/USO1/26872 Cooling Assembly for Spherical Rotary Valve Engine
10/336,896 Rotary Valve & Valve Seal Assembly
10/313,540 Improved Spherical Rotary Intake Valve
10/287,419 Piston Head for Internal Combustion Engine
235-0035 Piston Head for Diesel Engine
235-034 Bearing Assembly
20010023 Xxxx IIIB (Divisional Spheres)
107
ATTACHMENT 1.15
PATENTS AND PATENT APPLICATIONS -CONTINUED:
The Xxxx I, Xxxx XX, Xxxx IIB, and Xxxx III patents were also the subject
of foreign filings by Xx. Xxxxxx who has been issued foreign patents with
respect to some of these filings by Austria, Belarus, Belgium, China, Denmark,
Finland, France, Republic of Georgia, Germany, Great Britain, Greece, Hungary,
India, Indonesia, Ireland, Israel, Italy, Jordan, Korea, Luxembourg, The
Netherlands, Portugal, Spain, Sweden, Switzerland as well as by Australia,
Brazil, Bulgaria, Canada, Chile, the Czech Republic, Egypt, Hong King, Japan,
Luxemburg, Malaysia, Mexico, New Zealand, Nigeria, Pakistan, Philippines,
Poland, Romania, Republic of Russia, Saudi Arabia, Slovakia, Singapore, South
Africa, Taiwan, Thailand, Turkey, Ukraine and Venezuela. Xx. Xxxxxx continues to
have patent applications pending in some of these as well as other foreign
countries.
108
