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International Hydrolytics Ltd. |
MASTER
LICENSE AGREEMENT
THIS MASTER LICENSE AGREEMENT
(hereinafter referred to as the "AGREEMENT") is made and entered into
this __th day of ________, 20__ between INTERNATIONAL HYDROLYTICS, LTD, an
Irish corporation whose business address is “SIDEAN” Castlewoods, Glengarriff,
County Cork, Ireland, (hereinafter referred to as the "LICENSOR"),
party of the first part; and _______________________________________
_______________ a ________
corporation whose principal place of business is located at
_____________________________________ (hereinafter referred to as
"LICENSEE"), party of the second part; and THE HERA CORPORATION, a New
Mexico Corporation whose business address is P.O. Box 93218, Albuquerque, New
Mexico 87199 (hereinafter referred to as “ATTESTER”), party of the third part.
WITNESSETH
WHEREAS, the requisite advanced
hydrolytic composite (AHC) materials (hereinafter referred to as “AHC
MATERIALS”) for a revolutionary line of low cost, waterproof, fire-rated,
energy efficient, EPA–certified, and environmentally friendly materials have
evolved through the technology acquisition, research and development, and
patent protection efforts of the ATTESTER; and
WHEREAS, the
ATTESTER is beneficial owner of the entire right, title, and interest to any
and all formulations or derivatives of AHC MATERIALS, methods, procedures, and
inventions for the production thereof, and concepts, plans, drawings, designs,
specifications, and data associated with the application and manufacture of
products therefrom (hereinafter referred to as "AHC TECHNOLOGY") as
evidenced by United States patents, patent assignments, and other related
archives, the particulars of which are set out in the First Schedule hereto
(hereinafter referred to as the "LETTERS PATENT"); and
WHEREAS, the ATTESTER has
previously transferred to the LICENSOR exclusive world rights, under Master
License No. IHL-95-02, to exploit AHC TECHNOLOGY insofar as it may apply to the
applications specified in the Second Schedule hereto (hereinafter referred to
as the “DEFINED PRODUCTS”); and
WHEREAS, the LICENSEE desires the
exclusive right, privilege, and master license to commercialize and otherwise
to exploit the DEFINED PRODUCTS, through direct and sublicensed manufacture,
use, sale, lease, and other forms of legitimate trade within the geographical
boundaries defined in the Third Schedule hereto (hereinafter referred to as the
"TERRITORY"), which specifically excludes those countries listed in
the Fourth Schedule hereto (hereinafter referred to as the “PACIFIC RIM”); and
WHEREAS, as set
forth in the Fifth Schedule hereto (hereinafter referred to as the “PAYMENT
SCHEDULE”), the LICENSOR has credited the LICENSEE with a master license fee
deposit of ___________________ United States dollars ($_______.00) and arranged
for payment by the LICENSEE, over time, of the
master license fee balance; and
WHEREAS, the license and
sublicense fees, direct and sublicense royalties, and consulting rates,
hereinafter reserved on behalf of the LICENSOR, the direct sales revenues,
sublicense fees, and sublicense royalties hereinafter reserved on behalf of the
LICENSEE, and the covenants on behalf of the parties hereto are deemed fair,
equitable, and consistent with standard business practices;
NOW, THEREFORE, for the mutual
performance of the undertakings herein described, it is agreed by and between
the parties hereto as follows:
1. LICENSE GRANT
The LICENSOR hereby grants to
the LICENSEE, or any distributors, divisions, subsidiaries, and affiliates
thereof, the exclusive, nontransferable, non-divisible, and personal right,
privilege, and master license to manufacture, use, sell, lease, sublicense, and
otherwise to commercialize the DEFINED PRODUCTS, in which are incorporated AHC
MATERIALS as integral parts thereof, throughout the TERRITORY for the term and
upon the conditions and subject to certain rights of conversion or
cancellation, all of which are hereinafter set forth.
2. STATUTORY EFFECT
The LICENSOR hereby agrees to
execute, at the written request of the LICENSEE, any additional documentation
that may be necessary to give effect to this AGREEMENT in the TERRITORY to
which this license applies.
3. REGULATORY COMPLIANCE
The LICENSOR and LICENSEE shall
use all reasonable means to comply fully with applicable laws and regulations
of the TERRITORY in which the DEFINED PRODUCTS are manufactured, used, sold,
leased, or otherwise commercialized.
4. EXPORT RESTRICTIONS
LICENSOR hereby warrants that,
during the full TERM of this AGREEMENT, any holder of a license to manufacture
DEFINED PRODUCTS which incorporate AHC MATERIALS as integral parts thereof
within the PACIFIC RIM shall be restrained from export of said products into
the TERRITORY, and, reciprocally, the LICENSEE, and its distributors,
divisions, subsidiaries, or affiliates, shall, in relation to said products,
not engage in any form of trade, through which the same are used, sold, resold,
leased, licensed, sublicensed or otherwise commercialized within the PACIFIC
RIM unless a written agreement allowing such trade has been executed between
the LICENSEE, the LICENSOR, and any such holder of an AHC TECHNOLOGY license for specific countries within the PACIFIC
RIM.
5. COMPETITION
Subject to the conversion
provisions hereinafter described, this master license shall be exclusive even
as against the LICENSOR who shall not, during the continuance of same,
manufacture, use, sell, lease, or otherwise commercialize the DEFINED PRODUCTS
within the TERRITORY, grant licenses within the TERRITORY to any person, firm,
or corporation other than the LICENSEE for the legitimate exploitation of AHC
TECHNOLOGY, insofar as it relates to the DEFINED PRODUCTS, or render technical
support services to any person, firm, or corporation within the TERRITORY other
than the LICENSEE for the development of any products which incorporate AHC
MATERIALS as integral parts thereof and are, or would thereby become, in direct
competition with the DEFINED PRODUCTS.
6. CONFLICT OF INTEREST
LICENSEE shall not, without
previous written consent from the LICENSOR, disclose to any nonaffiliated person,
firm, or corporation, during or after the term of this AGREEMENT, any nonpublic
information relating to AHC TECHNOLOGY acquired pursuant hereto or undertake to
manufacture, use, sell, or otherwise commercialize any product or products
other than the DEFINED PRODUCTS, in which are incorporated AHC MATERIALS as
integral parts thereof.
7. PROTECTION OF RIGHTS
The LICENSOR agrees and
undertakes to defend the LICENSEE, and any divisions, subsidiaries, and
affiliates thereof, in any patent infringement actions or suits brought by
third parties, provided, however, that, if any such actions or suits are
prosecuted to final judgment or judgments, the LICENSOR will pay such judgment
or judgments as well as all costs, expenses, and charges thereunder, and further
provided that any legal expenses incurred by the LICENSEE in connection with
such litigation shall be promptly reimbursed by the LICENSOR.
8. LICENSE COMPLIANCE
Except as otherwise prohibited
by law, regulations, or prior contract arrangements, the LICENSEE shall permit
any duly authorized representative of the LICENSOR, upon reasonable notice, to
enter into and upon any premises of the LICENSEE where the DEFINED PRODUCTS are
manufactured or stored, during normal business hours, for the purpose of inspecting
the same and generally ascertaining that the provisions of this AGREEMENT are
being complied with.
9.
SUBLICENSES
The LICENSEE shall endeavor to
solicit, and is hereby authorized to grant, non-exclusive sublicenses which
include provisions no broader than those contained herein, subject to the
following terms and conditions: any
such sublicense shall require approval, which shall not be unreasonably
withheld, by the LICENSOR; any such sublicense shall be granted only during the
time that, and for a term no longer than the period during which, the LICENSEE
continues to have an exclusive license hereunder; any such sublicense shall
contain provisions for termination similar to those hereinafter provided and,
at the discretion of the LICENSOR, ipso facto termination in the event of, and
contemporaneously with, the termination of this AGREEMENT; any such sublicense
shall be personal and nonassignable, nontransferable, and nondivisible by the
sublicensee; any such sublicense shall contain covenants which, so far as the
same are applicable and capable of observance, effectively bind the sublicensee
to this AGREEMENT; any such sublicense shall contain adequate provisions for
quarterly audit statements to be furnished to the LICENSEE, payments to be made
to the LICENSEE, and inspection and maintenance of the sublicensee’s books and
records by either the LICENSEE or the LICENSOR, all as herein provided with
respect to the LICENSEE’s books and records, quarterly audit statements,
payments, and inspection; and, at the time any such sublicense is granted, the
LICENSEE shall furnish to the LICENSOR a photocopy of the signed agreement
entered into with such sublicensee.
10. TERM
Subject as hereinafter
provided, this AGREEMENT shall continue in full force during the subsistence of
the LETTERS PATENT, domestic or foreign, last to expire, or until the LICENSEE,
after 3 years of commercial operation, ceases to actively exploit the DEFINED
PRODUCTS, as evidenced by annual royalty payments to the LICENSOR by the LICENSEE
which are less than One Hundred Thousand United States dollars ($100,000.00).
11. LICENSE FEE
The total fee for the master
license herein granted is Five Hundred Thousand United States dollars
($500,000.00), provided, however, that in the event this AGREEMENT is cancelled
for default during the license fee amortization period, all previous license
fee payments by the LICENSEE shall be forfeited to the LICENSOR.
12. DIRECT ROYALTIES
The LICENSEE shall make direct royalty
payments to the LICENSOR, from revenues actually received by the LICENSEE or
any distributors, divisions, subsidiaries, or affiliates thereof, according to
the following accounting procedures – four percent (4%) of adjusted gross
revenues from the manufacture and sales of DEFINED PRODUCTS.
13. SUBLICENSE FEES AND ROYALTIES
The LICENSEE shall, in
consideration for the sublicense rights herein granted, make payments to the
LICENSOR in the amount of forty percent (40%) of all sublicense fees and royalties
actually received by the LICENSEE under any sublicense or sublicenses which the
LICENSEE may have granted pursuant to the terms of this AGREEMENT, provided,
however, that this percentage shall be fifty percent (50%) if the sublicense is
obtained primarily as a result of the LICENSOR’s product development activity
and marketing efforts.
14. DRY MIX SALES REVENUES
The LICENSEE shall, in
consideration for the master license herein granted, make payments to the
LICENSOR according to the following allocations: thirty percent (30%) of net revenues realized by the LICENSEE, or
any distributors, divisions, subsidiaries, or affiliates thereof, from ordinary
AHC dry mix sales to sublicensees.
15.
ADJUSTED GROSS REVENUES
Adjusted gross revenues for any
period shall be interpreted to mean the amounts actually received in the period
by the LICENSEE, or any distributors, divisions, subsidiaries, or affiliates
thereof, from sales of DEFINED PRODUCTS, AHC dry mixes, or AHC product
development activities, less: all
trade, quantity, and cash discounts actually taken (in such amounts as are
customary in the trade); all amounts prepaid or credited by reason of returns,
rejections, and retroactive price reductions; all applicable sales taxes and
other governmental charges, where not paid by the customer; and all costs borne
by the LICENSEE for shipping and transporting DEFINED PRODUCTS to customers, if
it becomes standard in the LICENSEE’s industry for such costs to be borne by
sellers.
16. AUDIT REPORTS
The LICENSEE shall, at all
times during the continuance of this AGREEMENT, keep complete and accurate
records of all transactions in relation to the DEFINED PRODUCTS upon which
royalties may accrue hereunder and deliver to the LICENSOR a quarterly audit report
listing the revenues generated throughout the TERRITORY by the LICENSEE, or any
distributors, divisions, subsidiaries, or affiliates thereof, and any and all
sublicensees, in relation to the DEFINED PRODUCTS.
17. EXAMINATION OF RECORDS
Except as otherwise prohibited
by law, regulations or prior contract arrangements, the LICENSEE shall, at all
times during the continuance of this AGREEMENT, and until the settlement of all
outstanding claims following the termination thereof, permit, at LICENSOR’s expense,
free access during normal business hours, upon reasonable notice by a duly
authorized representative of the LICENSOR, to accounting records, vouchers,
invoices, and other evidence of performance in relation to the DEFINED
PRODUCTS, for the purpose of examining the same and verifying the accuracy of
quarterly audit reports and direct payments required hereunder, provided,
however, that such representative shall acknowledge and promise in writing,
addressed to the parties hereto, to keep and hold confidential and in trust,
for the sole benefit of the LICENSEE, any and all information that is not
directly related to sublicense fees, direct and sublicense royalty accruals,
consulting services, and the accuracy of quarterly audit reports submitted, or
payments made, to the LICENSOR under this AGREEMENT.
18. PAYMENT
All payments due under this
AGREEMENT shall be payable in United States dollars and any income, remittance,
or other taxes on such payments required to be withheld at the source shall be borne
exclusively and solely by the LICENSOR as deductions from any amounts payable
to LICENSOR; and, if any funds constituting net revenues are for any reason not
legally available for transfer to LICENSOR in the United States, LICENSEE may
discharge the payment obligations hereunder by depositing said funds to the
credit of the LICENSOR in the country in which the sales are made and in the
currency of that country.
19. DEFAULT
In the event that the LICENSEE
shall become 30 days in arrears with regard to scheduled amortization of the
master license fee, submissions of quarterly audit reports, or payments of
direct royalties, sublicense fees, sublicense royalties, and consulting service
vouchers, all as herein required, the LICENSOR may give 30 days written notice
of cancellation to the LICENSEE, and this AGREEMENT shall become canceled,
unless the LICENSEE shall, before the expiration of such 30 day period, have
submitted the necessary reports and made all required payments, provided,
however, that the LICENSOR’s right of cancellation shall be in addition to all
other rights hereunder to enforce this AGREEMENT or to seek damages for any
breach hereof, and further provided that the exercise of this cancellation
right by the LICENSOR shall not relieve the LICENSEE of the obligation to pay
any and all direct royalties, sublicense fees, sublicense royalties, and
consulting service vouchers that may become due hereunder prior to the
effective date of cancellation, and the obligation to assign to the LICENSOR all
rights to any sublicenses which the LICENSEE may have granted pursuant to the
terms hereof, and the obligation to otherwise comply with and observe any and
all covenants of the LICENSEE herein contained not terminating upon such
cancellation.
20. BREACH
In the event the LICENSEE shall
breach any provision herein, the LICENSOR may give 60 days written notice of
cancellation to the LICENSEE, and this AGREEMENT shall become canceled, unless
the LICENSEE shall, before the expiration of such 60 day period, have
corrected said breach or lack of performance to the reasonable satisfaction of
the LICENSOR, provided, however, that no prior coordination, waiver, overlooking,
or lack of notice of any act or event giving rise to a right to terminate this
AGREEMENT shall operate to restrict, limit, or otherwise affect a subsequent
right of the LICENSOR to terminate hereunder, and further provided that the
exercise of this breach of contract right by the LICENSOR shall not relieve the
LICENSEE of the obligation to pay any and all direct royalties, sublicense
fees, sublicense royalties, and consulting service vouchers that may become due
hereunder prior to the effective date of cancellation, and the obligation to
assign to the LICENSOR all rights to any and all sublicenses which the LICENSEE
may have granted pursuant to the terms hereof, and the obligation to otherwise
comply with and observe any and all covenants of the LICENSEE herein contained
not terminating upon such cancellation.
21. TERMINATION
Anything to the contrary
notwithstanding, this AGREEMENT may be terminated, at the option of the
LICENSEE, by giving the LICENSOR written notice of termination, during the
first 18 months of this AGREEMENT, on the grounds that the LICENSEE's due
diligence has shown AHC TECHNOLOGY to be inadequate in the LICENSEE's sole
opinion from the standpoints of technical performance, patent protection,
environmental impact, or corporate viability; or by giving 30 days written
notice of termination on the grounds that the LETTERS PATENT and all
applications of AHC TECHNOLOGY within the scope of this AGREEMENT shall have
been declared invalid by a court of competent jurisdiction in a final decision
from which no appeal is or can be taken; or, at any time, by giving the
LICENSOR 120 days written notice of termination; provided, however, that no
termination of this AGREEMENT shall release the LICENSEE from any liability to
report and make payments to the LICENSOR for any amount of direct royalties,
sublicense fees, sublicense royalties, and consulting service vouchers which
shall have accrued to the LICENSOR hereunder prior to the effective termination
date of this AGREEMENT, nor rescind any actions taken or payment or other
consideration made or given by either party hereto to the other party, nor
affect in any way the obligation of the LICENSEE to assign to the LICENSOR all
rights to any sublicenses which the LICENSEE may have granted pursuant to the
terms hereof, nor affect in any way the survival of any right duty, or
obligation of either party hereto which is expressly stated elsewhere in this
AGREEMENT to survive termination; and further provided that nothing in this
provision shall effect, or be construed to operate as a waiver of, the rights
at law or in equity of the LICENSOR or LICENSEE to be compensated for any
injury or damage incurred prior to the effective termination date of this
AGREEMENT from any breach hereunder.
22.
CONVERSION
TO NON-EXCLUSIVE LICENSE
The LICENSOR shall, at all
times during the continuance of this AGREEMENT, have the right, in addition or
in substitution for any other remedy provided hereunder, to give written notice
to the LICENSEE terminating, for noncompliance with the provisions hereof, the
exclusive rights herein granted, and if, within 90 days after such notice shall
have been received by the LICENSEE, any and all noncompliances therein
identified have not been cured by the LICENSEE, this AGREEMENT shall cease to
be exclusive, any sublicenses theretofore entered into by the LICENSEE shall
inure to the benefit of, and be binding upon, the LICENSOR, and the LICENSOR
shall be free to grant such nonexclusive rights to other persons, firms, or
corporations.
23. TRADE SECRETS
The LICENSEE shall, during the
continuance of this AGREEMENT, bind to secrecy in writing any and all
employees, distributors, divisions, subsidiaries, and affiliates who may have
access to nonpublic aspects of AHC TECHNOLOGY, or information with respect
thereto originating with or conceived, acquired, or developed by the LICENSEE,
either solely or jointly with the LICENSOR, as a result of performance
hereunder, provided, however, that this provision shall survive any and all
cancellation or termination dates that may become effective hereunder until
AHC TECHNOLOGY shall have become generally available to the public, and further
provided, that the LICENSEE shall undertake to similarly include this provision
in any and all sublicenses which the LICENSEE may grant pursuant to the terms
hereof.
24. CONSULTATION
The LICENSOR shall, within 15
days following receipt of the LICENSEE’s written order, provide consulting
services in relation to the DEFINED PRODUCTS at individual rates per manday,
plus expenses, which are consistent with the labor categories listed in the
Sixth Schedule hereto, provided, however, that such consulting services shall
be limited to technology transfer, prototype development, sublicensee training,
promotional activities, automated manufacturing processes, increased production
rates, and all aspects of products improvement, quality control, and cost
reduction.
25. PROTOTYPE DEVELOPMENT
At the written request of the
LICENSEE, LICENSOR shall initiate a best‑effort engineering program to
provide any and all research, design, development, materials procurement,
process modification, or equipment re-tooling support necessary to fabricate
prototype DEFINED PRODUCTS in accordance with specified operational constraints,
provided, however, that the LICENSEE shall reimburse the LICENSOR for all costs
incurred in such prototype development activities through payment of regularly
submitted invoices or vouchers for manpower, travel, reasonable per diem, and delivery charges, if any.
26. PROTOTYPE CERTIFICATION
The LICENSEE shall bear the
total responsibility and expense, if any, of having prototype DEFINED PRODUCTS
certified or recertified, as the case may be, by a reputable independent test
laboratory under prescribed operational conditions, and, at the written request
of the LICENSEE, the LICENSOR shall make all arrangements for such tests,
deliver the prototype DEFINED PRODUCTS to said independent test laboratory, and
oversee, monitor, or otherwise advise the certification test team, provided,
however, that the LICENSEE shall reimburse the LICENSOR for all costs incurred
in any such certification test support activities through payment of regularly
submitted invoices or vouchers for manpower, travel, reasonable per diem, and
delivery charges, if any.
27. TECHNOLOGY TRANSFER
The LICENSOR shall disclose to
the LICENSEE any and all aspects of AHC TECHNOLOGY under the LETTERS PATENT,
insofar as the same may relate to the manufacture, production, and operation of
DEFINED PRODUCTS, then in the possession of the LICENSOR, provided, however,
that such disclosure shall, at the LICENSEE's option, take place at the
LICENSOR's facilities and include one week of hands-on instruction to
designated employees of the LICENSEE in the stepwise procedures for producing
DEFINED PRODUCTS which incorporate AHC MATERIALS as integral parts thereof, and
further provided that all transportation and per diem costs incurred by the
LICENSEE's designated employees shall be borne by the LICENSEE.
28. PRODUCT IMPROVEMENT
The LICENSOR shall communicate
to the LICENSEE any improvements made in, and any further inventions discovered
with respect to, AHC TECHNOLOGY and the DEFINED PRODUCTS, whether such
improvements or further inventions shall be patentable or not, and shall, at
the written request and expense of the LICENSEE, disclose to the LICENSEE the
nature and manner of performing the same.
29. PRODUCT MARKETING
The LICENSEE shall, during the
continuance of this AGREEMENT, have wide discretion in the methods used to
promote the licensed manufacture, use, sale, lease, and other forms of
disposition of the DEFINED PRODUCTS within the TERRITORY, and the LICENSOR
shall, at LICENSEE's request, cooperate fully in such promotional efforts and
provide copies of the LICENSOR's then-current promotional material, if any, in
relation to the DEFINED PRODUCTS, provided, however, that any and all
individuals engaged by the LICENSEE, or any distributors, divisions,
subsidiaries, or affiliates thereof, and any sublicensees hereunder, shall have
no claim against the LICENSOR for salaries, expenses, commissions, or other
items of cost.
30. PRODUCT TRADEMARKS
The LICENSOR hereby grants to
the LICENSEE a nonexclusive right to use and have used, during the continuance
of this AGREEMENT, as part of the identification of the DEFINED PRODUCTS, the
LICENSOR's trademark or marks and the designation, if any, allotted to the
DEFINED PRODUCTS in the commercialization thereof by the LICENSEE under the
condition that no substantial deviation from AHC TECHNOLOGY has been
incorporated into the DEFINED PRODUCTS as integral parts thereof, except as
permission may be granted by the LICENSOR, in each instance, upon application
by the LICENSEE to make any such substantial deviation from AHC TECHNOLOGY.
31. PRODUCT LIABILITY
The LICENSEE shall, in accordance
with LICENSEE's corporate insurance policy and industry practices, maintain
insurance to protect against product liability claims.
32. MANAGEMENT
The parties hereto agree to
establish a means of direct communication between the LICENSOR and the
LICENSEE by appointing, within 30 days of the effective date hereunder,
representatives with full authority to approve schedules, interface with customers,
expedite marketing, production, and administrative activities, and authorize
expenditures or other actions necessary to assure a mutually rewarding and
effective business relationship.
33. WARRANTY OF TITLE
The ATTESTER, as full owner of
AHC TECHNOLOGY under the LETTERS PATENT, has the entire right and authority to
enter this AGREEMENT and represents and warrants that there are no outstanding
assignments, grants, mortgages, options, or agreements, expressed or implied,
other than those herein referred to, which may or can in any manner whatsoever
abridge, modify, or defeat the rights herein conveyed or intended to be
conveyed to the LICENSEE.
34. PATENT REGISTRATION
In the event the LICENSOR
registers the LETTERS PATENT in any country or countries outside of the United
States which are included in the TERRITORY hereunder, the LICENSEE shall be
obligated to mark or cause to be marked in a legible manner on some conspicuous
part of the DEFINED PRODUCTS, or where it is difficult to mark the actual
product and standard industry practice is to place such markings instead on all
literature, and where this satisfies legal requirements, words indicating that
a patent has been applied for in respect of the DEFINED PRODUCTS, and upon
LETTERS PATENT being granted, mark the words "Patent
No." together with the number and country of the relevant patent on such
DEFINED PRODUCTS, and the LICENSEE and all sublicensees hereunder shall be further obligated, in relation to
the DEFINED PRODUCTS, to observe the applicable laws of the United States and
any country or countries which may become part of the TERRITORY in which the
same is commercialized hereunder, regarding the marking of patented articles to
such an extent as shall be necessary to assure that the LICENSOR shall not be
or become liable for loss or suffer any detriment by reason of the LICENSEE's
failure to comply with or take full advantage of the provisions of any such
laws.
35. PATENT FEES
The LICENSOR shall bear the
full cost of all registration and renewal fees that may be or become necessary
to place or keep in force, as appropriate, the LETTERS PATENT; provided,
however, that the LICENSEE, in its sole discretion, may make payment of such
costs and shall be entitled to prompt reimbursement therefore by LICENSOR, or,
at LICENSEE's option, to deduct the full amount thereof from payments due the
LICENSOR hereunder.
36. PATENT INFRINGEMENT
The LICENSEE shall give to
LICENSOR written notice of any infringement or potential infringement of the
LETTERS PATENT by third parties which may come to its notice, and LICENSOR
agrees to use its best efforts, but shall not be obligated to commence
proceedings against the infringer to stop any such infringement, provided,
however, that, if LICENSOR decides to commence proceedings, LICENSOR shall be
responsible for any legal costs incurred and be entitled to retain any damages
recovered, and further provided that, should LICENSOR decide not to commence
proceedings, LICENSEE shall be entitled to do so in its own name against the
infringer, in which event, LICENSEE shall be responsible for all legal costs
incurred, without recourse to LICENSOR, but will be entitled to retain any
damages recovered.
37. PATENT APPLICATIONS
The LICENSEE shall be entitled,
in its sole discretion, to prepare, file, and prosecute, jointly in the names
of the LICENSOR and the LICENSEE, applications for LETTERS PATENT with respect
to AHC TECHNOLOGY in such countries which are included in the TERRITORY
hereunder, and LICENSEE shall deduct expenses incurred in connection therewith
from any direct or licensed royalties then or thereafter due to the LICENSOR
hereunder at a rate of not more than 50% of the royalties due at any time.
38. HOLD HARMLESS
The LICENSOR and LICENSEE
hereby agree to indemnify and hold harmless the other against any loss, damage,
or expense which the other may suffer or incur through any breach by the
breaching party of the provisions herein contained.
39. FORCE MAJEURE
None of the parties hereto
shall be liable to the other parties for loss, injury, delay, damages, or other
casualties suffered by such other parties due to strikes, riots, storms, fires,
terrorism, Acts of God or Government, or any cause whether similar or
dissimilar to the foregoing beyond the reasonable control of such parties.
40. RELATIONSHIP
Neither the making of this
AGREEMENT nor the performance of the provisions hereof shall be construed to
constitute the other parties hereto agents, employees, or legal representatives
of the other parties for any purpose, and this AGREEMENT shall not be deemed to
establish a joint venture or partnership, and none of the parties hereto shall
have any right or authority to create any obligation, warranty,
representation, or responsibility, expressed or implied, on behalf of the other
parties in any manner whatsoever.
41. WAIVER
In the event that the parties
hereto shall waive any right to a breach by the other parties of any of the
provisions hereunder, such waiver shall not be construed as a continuing waiver
of other breaches of the same or other provisions of this AGREEMENT.
42. INFORMATION RETRIEVAL
On the expiration of this
AGREEMENT, or its termination in accordance with the terms hereof or cancellation
on the initiative of the LICENSOR for cause, the parties hereto agree to seek,
furnish, and otherwise return any and all nonpublic information and materials
which relate to the business of the other parties and were obtained from any
source as a result of this AGREEMENT.
43. ASSIGNMENT
The rights, duties, and
privileges of the parties hereto shall not be transferred or assigned, either
in whole or in part, without the prior written consent of the other parties,
which consent shall not be unreasonably withheld.
44. SOLE AGREEMENT
This AGREEMENT and the
schedules hereto set forth constitute the entire agreement between the parties
hereto as to the subject matter hereunder and merges all prior discussions
between them, and neither of the parties hereto shall be bound by any conditions,
definitions, warranties, or representations with respect to any of the terms
and conditions hereof other than as expressly provided in this AGREEMENT or as
set forth on or subsequent to the date hereof in writing signed by a duly
authorized officer or representative of each of the parties hereto, and any
and all information in relation to the LETTERS PATENT, AHC TECHNOLOGY, or the
DEFINED PRODUCTS which the LICENSOR has furnished to the LICENSEE in
contemplation of this AGREEMENT shall be deemed to have been furnished
hereunder.
45. SUCCESSORS
This AGREEMENT and the master license
herein granted shall inure to the benefit of and be binding upon the parties
hereto, their successors, assigns, divisions, subsidiaries, and affiliates
thereof.
46. GOVERNING LAW
The terms of this AGREEMENT
shall be construed and interpreted according to the laws of the State of New
Mexico, the United States of America, and Ireland.
47. NOTICES
All notices required to be
given hereunder shall be sent certified mail, return receipt requested,
postage prepaid, and shall be deemed to have been given on the date when
received by the other parties, provided, however, that each party hereto may
from time to time change the address to which notices are to be sent by giving
written notice of such change to the other parties hereto.
48. CONSTRUCTION
The headings of the sections
and provisions of this AGREEMENT are included for convenience only and shall
not be used in construing or interpreting same.
IN WITNESS
WHEREOF, the parties hereto have caused this instrument to be executed by
setting the respective hands and seals of their duly authorized representatives
as of the day and year first hereinabove written.
INTERNATIONAL HYDROLYTICS,
LTD
______________________________
Dr. Bill E. Laney, Managing
Director
DATE: ________________________
THE HERA CORPORATION
_____________________________
Dr. Bill E. Laney, President
DATE: ________________________
State of New Mexico
Notary Seal
County of Bernalillo
Subscribed and sworn to before
me
by Bill E. Laney this __th day
of _______, ____
_______________________________
Notary Public
My commission expires:
DATE:
__________________________
SCHEDULE 1
THE LETTERS PATENT
The following historical
documentation provides a clear and auditable ownership trail which establishes
the ATTESTER as beneficial owner of the entire right, title, and interest to
any and all facets of AGC TECHNOLOGY.
·
Japanese
Patent Application No. 12366/55: SELF-HARDENING COMPOSITION AND COMPOSITE
THEREFROM; February 4, 1980; HEIT INC., a New Mexico corporation.
·
United
States Patent No. 4,263,048: SELF-HARDENING COMPOSITION AND COMPOSITE
THEREFROM; APRIL 21, 1981;
·
United
States Patent No. 4,303,450: SPRAYABLE INSULATION COMPOSITION; December 1,
1981.
·
Assignment
of United States Patent No. 4,263,048 to HEIT, INC., a New Mexico corporation
(1981).
·
Assignment
of United States Patent No. 4,303,450 to HEIT, INC., a New Mexico corporation
(1981).
·
Canadian
Patent No. 1128257: SELF-HARDENING COMPOSITION AND COMPOSITE THEREFROM; July
27, 1982; HEIT INC., a New Mexico corporation.
·
Trademark
Registration in the name of HEIT, INC., a New Mexico corporation (1982).
·
Transfer
of Trademark Registration, Patent Assignments, Patent Applications, and any and
all related future developments from HEIT, INC., a New Mexico Corporation, to
the LICENSOR (1983).
·
Korean
Patent No. 15509: SELF-HARDENING COMPOSITION; November 3, 1983; HEIT INC., a
New Mexico corporation.
·
United
States Patent Application: Identification No. 159345; ADVANCED GEOPOLYMER
COMPOSITES; February 23, 1988.
·
United
States Patent Application: Identification No. 07/635,735; GEOPOLYMER-MODIFIED,
GYPSUM-BASED, CONSTRUCTION MATERIALS; December 26, 1990.
·
United
States Patent No. 5,194,091: GEOPOLYMER-MODIFIED, GYPSUM-BASED, CONSTRUCTION
MATERIALS; March 16, 1993; Assigned to the LICENSOR.
·
United
States Patent No. 5,244,726: ADVANCED GEOPOLYMER COMPOSITES; September 14,
1993; Assigned to the LICENSOR.
SCHEDULE 2
THE DEFINED PRODUCTS
The DEFINED PRODUCTS shall
include any and all commercial applications which not only incorporate AHC
MATERIALS as integral parts thereof but also address, separately, the following
specific issues of worldwide concern __________________________________________
______________________________________________________
As a minimum, each application will be certified , as appropriate, by
independent test laboratories, e.g., Underwriters Laboratories, Factory Mutual,
Southwest Research Institute, Waste Education and Research Consortium, etc.,
under test standards, specified by the following United States government
regulatory agencies: Environmental Protection Agency; Nuclear Regulation
Commission; Department of Energy; Department of Transportation; Federal
Aeronautics Agency; etc.
SCHEDULE 3
THE TERRITORY
The TERRITORY within which
DEFINED PRODUCTS may be manufactured, used, sold, leased, licensed, or
otherwise commercialized shall be worldwide, except for those territories already
included in licenses that predate this AGREEMENT (see Schedule 4).
SCHEDULE 4
THE PACIFIC RIM
For the purposes of this
AGREEMENT, the PACIFIC RIM shall, by specific reference to exclusive licenses
that pre-date this AGREEMENT, be interpreted to include the following
countries: License No. FKL 87-01 (Fujimori Kogyo, Ltd.) -- Japan; and License
No. FCL 92-01 (Fletcher Challenge, Ltd.) -- New Zealand, Australia,
Malaysia, Thailand, People’s Republic of China, and Taiwan.
SCHEDULE 5
PAYMENT SCHEDULE
The LICENSOR is hereby credits the LICENSEE with a master license fee deposit of __________________ United States dollars ($_______.00). In addition, the license fee balance of ________________________ United States dollars ($_________.00) shall be paid according to the amortization projections listed on Table 5-1. Finally, in the event the LICENSEE receives sublicense payments during the amortization period, fifty percent (50%) of the LICENSEE’s portion of said sublicense fee payments shall be allocated, as master license fee prepayments, to partially or totally amortize the LICENSEE’s license fee balance, as appropriate.
Table 5-1
PROJECTED AMORTIZATION OF MASTER LICENSE FEE
|
PAYMENT AMOUNT |
PAYMENT DATE |
CUMMULATIVE TOTAL OF PAYMENTS |
|
|
|
|
|
|
|
|
|
|
|
|
SCHEDULE 6
CONSULTATION RATES
The LICENSOR will provide the
LICENSEE with estimates, for requested consultation support, and invoices, for
services actually performed, in accordance with Table 6-1. In this regard,
consulting rates will increase at an average rate of five percent (5%) per
year, while materials, supplies, and other direct expenses will bear an
administrative loading of 21% which escalates 1% per year starting ____________.
Table 6 -1
LABOR GRADE AND RATE SCHEDULE *
GRADE DAILY RATE (U.S. Dollars)
Sr. Principal $1,459.00
Sr. Scientist $1,459.00
Principal $1,216.00
Scientist $1,216.00
Sr. Engineer $1,158.00
Engineer/Chemist/Physicist $973.00
Sr. Technician $608.00
Technician $486.00
Data Clerk/Typist $426.00
* Applicable taxes are not
included.
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