Exhibit 10.8
LICENSE AGREEMENT
This ageement, dated January 19, 1996, is made by and between: AlliedSignal
Technologies Inc., an Arizona corporation ("Licensor"), and Virginia
Accelerators Corporation, a Virginia corporation ("Licensee").
BACKGROUND
Whereas, Licensor has developed certain proprietary information and patent
rights relating to rapid solidification of HTA-8022 bar stock and foil (as
defined below); and
Whereas, Licensee is interested in acquiring a license from Licensor under such
proprietary information and patent rights for use in making electron beam
accelerator windows; and
Whereas, Licensor is willing to grant Licensee such a license under the terms
and conditions of this Agreement;
NOW, THEREFORE, in consideration of the mutual promises herein set forth, the
parties hereto agree as follows:
SECTION 1 - DEFINITIONS
As used in this Agreement, the following terms shall have the indicated meanings
set forth below:
1.1 "RS HTA-8022" shall mean high temperature aluminum alloy 8022 produced
by rapid solidification from the melt at a quench rate of at least
10 DEG. C/sec, as described in U.S. Patent 4,879,095.
1.2 "Product" shall mean RS HTA-8022 bar stock and foil.
1.3 "Devices" shall mean electron beam accelerator windows made from Product.
1.4 "Technical Information" shall mean existing information owned and/or
controlled by Licensor relating to RS HTA-8022, as set forth in Section 3.1
below, excluding, however, such information unrelated to the use of RS HTA-8022
as a window for high power electron guns (the "Excluded Information").
1.5 "Patents" shall mean U.S. Patents 4,650,130 (issued 3/17/87), 4,805,686
(issued 2/12/89), 4,878,967 (issued 11/7/89), 4.879,095, (issued 11/7/89),
4,828,632(issued 5/9/89), 4,869,751 (issued 9/26/89) and 4,898,612 (issued
2/6/90), which are owned by Licensor, and any reissue or reexamination of any
such issued patents.
1.6 "Net Sales Price" shall mean the amount actually billed by Licensee, as
shown on its invoices, on arms-length sales of Product after deducting from the
gross sales (i) normal and customary cash and trade discounts and credits for
returns and allowances, (ii) insurance costs and transportation charges, if any,
paid or allowed by Licensee, and (iii) sales or other excise taxes or duties
imposed upon and paid by Licensee. If Licensee uses rather than sells Product,
then the Net Sales Price shall mean the average Net Sales Price of Product sold
by Licensee during the period in question; if there are no such sales during
such period, then the parties shall agree on a reasonable Net Sales Price for
the purpose of calculating royalties, such as based on the sales price published
by Licensee in its product list.
1.7 "Territory" shall mean the United States of America.
1.8 "Effective Date" shall be the date first above written.
1.9 "License Year" shall be a year period commencing on January 1 and ending on
December 31 during the term of this Agreement.
SECTION 2 - LICENSE
2.1 Subject to the provisions of this Agreement, Licensor grants to Licensee, an
exclusive right and license in the Territory, with the right to grant
sublicenses to third parties upon terms and conditions consistent with this
Agreement and subject to Licensor's consent, under Technical Information and
Patents to manufacture, use, and sell Product solely for the purpose of making
Devices in the Territory.
2.2 Licensee shall diligently pursue any and all means to market and promote the
commercial use of Product in Devices during the term of this Agreement. In order
to maintain the exclusive right and license granted under Section 2.1 Licensee
must meet the minimum annual royalty obligation set forth under Section 4.22. If
Licensee does not meet such minimum annual royalty obligation by the end of the
second License Year, then Licensor may at its option at any time terminate this
Agreement and the license of Section 2.1.
SECTION 3 - TECHNICAL INFORMATION AND CONFIDENTIALITY
3.1 As soon as practicable after execution of this Agreement, Licensor shall
furnish to Licensee Technical Information as follows:
a. Production process;
b. Methods of analysis;
c. Equipment list; and
d. Materials of construction.
The information to be disclosed to Licensee shall be in the documentary form in
which it exists in Licensor's files.
3.2 For a period of twenty (20) years from the Effective Date, Licensee shall
maintain all Technical Information in strict confidence and shall not disclose
the same to others or use the same during or after the term of this Agreement
unless such use is expressly licensed hereunder or by a separate agreement.
However, Licensee may disclose to a contractor Technical Information limited to
that necessary for the manufacture of the Product for Licensee, provided that
such party agrees to a confidentiality obligation at least as stringent as that
set forth herein.
3.3 It is agreed that Licensee's obligation of confidentiality hereunder
shall not extend to any Technical Information which Licensee can prove:
(a) was in the public domain prior to disclosure, or thereafter comes into
the public domain without any breach by Licensee; or
(b) was known by Licensee prior to disclosure, as shown by written records;
or
(c) was disclosed to Licensee by a third party not in violation of any
obligation of confidentiality from or through Licensor.
Any combination of known information shall only be within any of the
foregoing exclusions only if the combination as such is within such
exclusion.
3.4 Licensee agrees that no Technical Information furnished to it by Licensor,
nor any direct product of such Technical Information, is intended to or will be
exported directly or indirectly to any prohibited destination as defined in the
regulations of the United States Department of Commerce or Department of State
now or hereafter in effect governing the export of technical data, except after
compliance with such regulations.
3.5 Licensor shall, at the written request of Licensee, furnish technical
assistance to Licensee, provided Licensor has available, in its sole judgment,
sufficient manpower at the time of request to perform such services. Licensee
shall reimburse Licensor for all costs, expenses and any taxes incurred by and
in connection with furnishing the services of any of Licensor's representative,
including but not limited to a fee of Three Thousand Dollars ($3,000.00) per day
per representative plus cost of transportation, hotel accommodations, meals,
insurance and communications. Such technical assistance shall be limited to 20
man-days and shall be provided within six (6) months following the Effective
Date.
SECTION 4 - ROYALTIES
4.1. Lump Sum Royalty Payment
4.1.1 For the rights and licenses granted in Section 2.1 above, upon execution
of this Agreement Licensee shall pay to Licensor, the non-refundable sum of
Twenty-Five Thousand US Dollars ($25,000 US), such sum not being creditable
against the running royalty due to Licensor in accordance with Section 4.2,
hereinbelow.
4.2 Running Royalties.
4.2.1 In addition to the Lump Sum Royalty Payment specified in Section 4. 1. 1,
Licensor shall pay to Licensee a running royalty of ten percent (10%) based on
the Net Sales Price of Product manufactured and sold or used by Licensee.
4.2.2. In order to maintain the exclusive right and license granted under
Section 2.1, running royalties paid to Licensor by Licensee during the second
License Year must equal or exceed Twenty Thousand US Dollars ($20,000 US).
4.3 Royalties shall be paid on revenues received within thirty (30) days of the
end of each calendar quarter in U.S. Dollars at Licensor's address specified in
Article 9.2 or as otherwise stated by Licensor, and shall be net of all taxes.
If Licensee and a customer of Licensee (or any sublicensee) agree that payment
shall be made in a currency other than U.S. Dollars, Licensee shall pay Licensor
royalties using the retail exchange rate (listed in the Wall Street Journal) in
effect on the date that Licensee (or its sublicensee) receives payment from the
customer.
4.4 Licensee shall pay interest to Licensor at a rate of two (2) percent over
the prime interest rate published in the Wall Street Journal on any and all
amounts that are at any time overdue and payable to Licensor under this
Agreement. The payment of such interest shall not replace any of Licensor's
other rights under this Agreement resulting from Licensee's failure to pay any
amounts due hereunder.
SECTION 5 - RECORDS
5.1 Licensee shall furnish a written statement with each royalty payment
specifying the amount of Product manufactured and sold or used by Licensee and
any sublicensee, and a calculation of the royalty due.
5.2 Licensee shall keep, and require its sublicensees to keep, detailed and
accurate records of the amount of Product produced and sold or used for each
application to enable the determination of royalties payable hereunder, and will
furnish copies thereof to Licensor at Licensor's request.
5.3 Licensor shall have the right, not more than once annually, to have
Licensee's books and records examined by an independent certified accountant
reasonably acceptable to Licensee for the purpose of verifying such royalty
statements. The cost of such examination shall be borne by Licensor; provided,
however, if such audits reveal an error of ten (10) percent or more in favor of
Licensor, then the cost of such audit shall be at the expense of Licensee. In
all sublicensing agreements, Licensee shall procure for Licensor similar rights
to have the books and records of the sublicensee examined for the purpose of
verifying royalty statements and shall impose the same obligations relative to
payment for such examination.
SECTION 6 - PATENT RIGHTS
6.1 Licensor warrants that it has good title to the Patents and to the Technical
Information furnished to Licensee under this Agreement and that it has the right
to grant to Licensee the license granted hereunder.
6.2 Licensee shall be responsible at its own cost and expense for maintaining
the Patents. Licensor shall pay the maintenance fees due on the Patents and
shall invoice Licensee for the amount of the maintenance fees paid. Licensee
shall reimburse Licensor for such maintenance fees within thirty (30) days of
receipt of such invoice.
6.3 If one or more of the patents comprising the Patent Rights is declared or
becomes invalid or unenforceable by a final, unappealable decision, Licensee
shall be relieved of further payments to Licensor with respect to such
patent(s).
6.4 If a third party appears to be infringing any of the Patents, Licensee shall
promptly notify Licensor, and vice versa, and the parties shall mutually agree
on a proper course of action. Licensor shall have the sole right to bring suit
against any infringer of the Patents.
6.5 Licensee shall promptly advise Licensor in writing of any claim of
infringement and of the commencement against it of any suit or action for
infringement of patents made or brought against Licensee and based upon the
manufacture and sale by Licensee of the Product. Licensee shall be fully
responsible for and shall have sole charge in the defense of any suit or action.
Licensor shall render Licensee reasonable assistance to Licensee in the defense
of such suit or action and Licensor shall have the right to be represented
therein by advisory counsel of its own selection and at its own expense.
6.6 Licensor makes no warranty or guaranty of non-infringement by the practice
of the Technical Information and/or Patents and shall not be liable for any
infringement of any adversely held patent.
SECTION 7 - TERMINATION
7.1 If Licensee shall delay in paying royalties or providing statements to
Licensor as provided in Article 5 or default on any other obligation under this
Agreement, Licensor may give written notice to Licensee specifying the claimed
particulars of such default. If such default is not remedied within thirty (30)
days after submission of such notice, Licensor may (a) terminate this Agreement
by giving written notice to Licensee, and/or (b) enforce the defaulted
obligation by any available lawful means. Any indulgence by Licensor shall not
be construed as a waiver of Licensor's rights under this paragraph either with
respect to such default or to similar subsequent defaults. Termination of this
Agreement shall not relieve Licensee of its obligations under Section 3.2.
SECTIONS - TERM
8.1 Unless sooner terminated as provided herein, the term of this Agreement
shall extend for a period of fifteen (15) years from the date of the first
commercial sale of Product or to the expiration date of the last to expire of
the Patents, whichever date is the later.
8.2 After expiration of this Agreement in accordance with Article 8.1, neither
party shall have any further rights or obligations under this Agreement except
that the confidentiality obligations of Article 3 shall remain in effect for the
period therein specified.
SECTION 9 - GENERAL PROVISIONS
9.1 This Agreement shall not be assignable by Licensee without the prior written
consent of Licensor. No assignment shall be valid until the assignee has assumed
the rights and obligations of the assignor under this Agreement.
9.2 Notices and written statements required under this Agreement shall be deemed
to have been given upon mailing, postpaid, to the recipient party at the
following address or at such other address as may from time to time be
designated in writing to the other party:
If to Licensor:
AlliedSignal Technologies Inc. One Gateway ▇▇▇ ▇. ▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇
▇▇▇▇▇ ▇.▇.▇.
Attention: President
If to Licensee:
Virginia Accelerators Corporation
▇▇▇ ▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇
▇.▇. ▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇,
Managing Director
9.3 Licensor assumes no responsibility and does not make any warranty with
respect to the Technical Information or any Product manufactured, used or sold
by Licensee. Licensee shall exonerate, defend, indemnify and hold Licensor
harmless against any loss, cost, expense, payment or damage in any way resulting
from or connected with any and all claims, demands, liabilities and suits
arising out of the manufacture, use or sale by Licensee of the Product or the
use of the Technical Information.
Licensor makes no representation or warranty as to the merchantability or
suitability or fitness for any particular purpose of the Product, including but
not limited to the suitability for use in Devices.
9.4 This Agreement embodies the entire agreement and understanding between the
parties relating to the subject of this Agreement and there are no other
representations or agreements relating thereto.
9.5 No change in, addition to, or waiver of the provisions of this Agreement
shall be binding upon either party unless approved in writing by its authorized
representative and no modifications shall be effected by the acknowledgment or
acceptance of purchase order forms containing other or different provisions.
9.6 This Agreement shall be construed and the legal relations between the
parties shall be determined according to the laws of the State of Delaware,
without regard to its conflicts of law principles.
9.7 Upon execution by the parties, this Agreement shall be deemed effective as
from the date first written above.
IN WITNESS WHEREOF, the parties have caused this Agreement to be executed in
duplicate by their authorized representatives.
AGREED:
Virginia Accelerators Corporation
By: /s./ ▇▇▇▇▇ ▇ ▇▇▇▇▇▇▇▇
▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇, President
AGREED:
AlliedSignal Technologies Inc.
By: /s./ ▇.▇. ▇▇▇▇▇▇▇▇▇
▇.▇. ▇▇▇▇▇▇▇▇▇, President