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EXHIBIT NUMBER 10.13
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OPTION AND LICENCE AGREEMENT
DATED [15] MARCH 2000
BETWEEN
AUCKLAND UNISERVICES LIMITED
UNISERVICES
AND
PACIFIC LITHIUM LIMITED
PLL
▇▇▇▇▇ ▇▇▇▇▇
Lawyers Corporate Advisers Strategists
Auckland
Option and Licence Agreement
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OPTION AND LICENCE AGREEMENT
PARTIES
1. AUCKLAND UNISERVICES LIMITED a duly incorporated company having its
registered office at Auckland ("UNISERVICES") and
2. PACIFIC LITHIUM LIMITED a duly incorporated company having its
registered office at Auckland ("PLL")
BACKGROUND
A. UNISERVICES is the owner of the proprietary rights in certain valuable
Products comprising polymer compounds for use as electrolytes in
battery applications which proprietary rights include patents,
copyright and confidential information.
B. UNISERVICES wishes PLL to carry out additional research and development
on the Products to develop them into commercially feasible products.
C. UNISERVICES grants PLL an option to take an exclusive licence of the
rights to the Licensed Products on the terms and conditions in this
Agreement.
THE PARTIES AGREE
1. The terms set out in Parts 1, 2 and 4 of this Agreement shall apply as
from the Commencement Date.
2. The terms set out in Parts 1, 2, 3 and 4 of this Agreement shall apply
in the event that the Option set out in Part 3 is exercised by PLL.
THIS AGREEMENT WAS EXECUTED AS OF THE 15TH DAY OF MARCH 2000
SIGNED by PACIFIC LITHIUM
LIMITED in accordance with its
Constitution by:
/s/ ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇
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Signature of authorised person Signature of authorised person
Managing Director
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Office held Office held
▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇
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Name of authorised person (print) Name of authorised person (print)
SIGNED by AUCKLAND UNISERVICES
LIMITED in accordance with its
Constitution by:
/s/ ▇▇▇▇ ▇▇▇▇▇▇▇ /s/ ▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
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Signature of authorised person Signature of authorised person
Operations Manager Chief Executive Officer
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Office held Office held
▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
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Name of authorised person (print) Name of authorised person (print)
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PART 1
INTERPRETATION
PRESUMPTIONS OF INTERPRETATION
1.0 Unless the context otherwise requires, a word which denotes:
1.1 The singular denotes the plural and vice versa;
1.2 Any gender denotes the other genders; and
1.3 A person includes an individual, a body corporate and a
government.
2.0 Unless the context otherwise requires, a reference to:
2.1 Any legislation includes any regulation or instrument made
under it and where amended, re-enacted or replaced means that
amended, re-enacted or replacement legislation;
2.2 Any other agreement or instrument where amended or replaced
means that agreement or instrument as amended or replaced;
2.3 A Clause, Schedule or annexure is a reference to a clause of,
annexure to, schedule to or exhibit to this Agreement;
2.4 A group of persons includes any one or more of them;
2.5 A party or parties is a reference to a party to or the parties
to this Agreement; and to their related companies ("related
companies" having the same meaning given to it in section 2(3)
of the Companies Act 1993); and
2.6 A thing or amount is a reference to the whole and each part of
it.
JOINT AND SEVERAL
3.0 An agreement warranty representation or obligation which binds or
benefits 2 or more persons under this Agreement binds or benefits those
persons jointly and separately.
SUCCESSORS AND ASSIGNS
4.0 A person includes the trustee, executor, administrator, successor in
title and assign of that person. This Clause must not be construed as
permitting a party to assign any right under this Agreement.
BUSINESS DAY
5.0 A business day is a day during which banks are open for general banking
business in Auckland.
6.0 Unless the context otherwise requires, a term of this Agreement which
has the effect of requiring anything to be done on or by a date which
is not a business day must be interpreted as if it required it to be
done on or by the next business day.
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DEFINITIONS
7.0 Where commencing with a capital letter:
"COMMENCEMENT DATE" means the date of this Agreement
"CONFIDENTIAL INFORMATION" means, in respect to each disclosing party,
all information provided by that party including its Intellectual
Property, and all other information relating to its processes, business
and products where knowledge of such information is not in the public
domain and might reasonably be regarded by the receiving party to be
confidential.
"CONFIRMATION DATE" means the date on which PLL gives notice of its
intention to take up its Option under Clause 9.
"CONTRACT YEARS" refers to the 12 month periods commencing on 1 April
2000.
"INTELLECTUAL PROPERTY" means, in respect to each party, all
intellectual property of such party and of any related entity including
the patents, patents pending, copyright, secret information and
processes, all trade marks, trade names, know-how and all other
information which is commercially sensitive or commercially valuable to
that party;
"LICENCE" means a Licence of the Patents and Products in accordance
with the terms of Part 3 of this Agreement.
"LICENCE TERM" means the period starting on the Confirmation Date and
continuing until the last expiry date of the Patents.
"MAXIMUM ROYALTY FEE" means the aggregate Royalty Fees of $1,000,000.
"NEW DEVELOPMENTS" means all improvements, variations, or derivatives
of the Products or the Patents developed by PLL and the processes
developed by PLL which enable or will enable it to synthesise the
Products or any New Developments on a commercial basis BUT SHALL NOT
INCLUDE any developments of the Patents which name ▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇ as
co-inventor where the costs of such developments have not been directly
funded by PLL.
"OPTION" means the option to take a licence of the Patents described in
clause 9.
"PATENTS" means the patents for the Products set out in SCHEDULE A, any
subsequent developments of the Patents which name ▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇ as
co-inventor and have not been directly funded by PLL, and such other
patents owned by UNISERVICES which are added by mutual agreement with
PLL to SCHEDULE A during the Licence Term.
"PRODUCTS" means the polymer products described in the Patents for use
as electrolytes in battery applications which have been developed by or
licensed or assigned to UNISERVICES.
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"ROYALTY FEES" means the fees or share of revenue payable by PLL to
UNISERVICES on the Licensed Products set out in SCHEDULE B as amended
under this agreement.
"$" and "DOLLARS" mean NZ dollars.
"TERRITORY" means the World
EXTENSION OF DEFINITIONS
8.0 Where a word or phrase is given a defined meaning, another part of
speech or other grammatical form in respect of that word or phrase has
a corresponding meaning.
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PART 2
OPTION ON PRODUCTS AND OWNERSHIP OF NEW DEVELOPMENTS
GRANT OF OPTION
9.0 In consideration for PLL agreeing to undertake further research and
development on the Products, UNISERVICES hereby irrevocably grants to
PLL the right to take a Licence of the Products on the following terms:
9.1 The Option must be exercised by PLL by giving UNISERVICES notice in
writing of its intention to exercise on or before 31 December 2001.
9.2 The terms of the Licence shall be as set out in Part 3.
9.3 UNISERVICES may not grant any option, licence or other rights to any
third party in relation to the Patents (whether conditional upon the
lapse of the Option or otherwise) during the term of this Agreement
without PLL's prior approval.
9.4 UNISERVICES shall not itself produce, manufacture or otherwise
distribute the Products except for bona fide research purposes.
CONDUCT OF FURTHER RESEARCH AND DEVELOPMENT
10.0 UNISERVICES agrees to permit PLL to conduct further research and
development on the Products prior to its exercise of the Option
PROVIDED THAT PLL shall cease all research and development if it does
not exercise the Option.
11.0 UNISERVICES shall provide PLL with access to all research materials,
laboratory books and other information relating to the Patents and the
Products in its possession or in the possession of the inventors named
in the Patents. UNISERVICES shall also co-operate with PLL where
reasonably possible to provide PLL with the services of the inventors
and other persons who may assist PLL in its research and development on
the Products, and PLL shall pay UNISERVICES its reasonable charges for
such services.
OWNERSHIP OF NEW DEVELOPMENTS
12.0 UNISERVICES acknowledges that all New Developments (including all
accretions to the Patents developed by UNISERVICES at the request and
cost of PLL) shall be the sole and exclusive property of PLL.
UNISERVICES shall at the request of PLL, provide PLL with all documents
required by PLL to effect the filing of the patent applications for
such developments, including assignments of rights signed by the
persons employed by UNISERVICES.
RESTRICTION ON SALE OF LICENSED PRODUCTS
13.0 PLL may not sell the Licensed Products prior to the exercise of the
Option. PLL may, however, provide samples of the Licensed Products to
potential buyers of the Licensed Products for evaluation purposes
provided PLL has obtained Non-Disclosure Agreements from such persons
in PLL's standard form (which shall include a prohibition on analysis).
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PAYMENT OF PATENT COSTS
14.0 PLL shall manage the prosecution, grant and continuing registration of
all patents filed or required by the parties to be filed in respect to
the Products and shall promptly pay all such costs.
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PART 3
LICENSING OF PATENTS AND PRODUCTS
CONFIRMATION OF UPTAKE OF LICENCE RIGHTS
15.0 This Part 3 shall commence and be in full force and effect if PLL gives
notice to UNISERVICES that it exercises the Option and takes up this
Licence on or before 31 December 2001 or such later date agreed by
UNISERVICES, failing which, this Part 3 shall have no effect.
GRANT OF LICENCE
16.0 Subject to the exercise of the Option, UNISERVICES grants to PLL and
PLL accepts the sole and exclusive rights to exploit the Patents and
the Products owned by UNISERVICES or exclusively licensed or assigned
to UNISERVICES as at the Confirmation Date for the Licence Term,
whether by manufacture, distribution, sub-licence or otherwise.
PAYMENT OF ROYALTY FEES
17.0 PLL shall pay to UNISERVICES the lower of the Royalty Fees or the
Maximum Royalty Fee during the Licence Term in consideration for the
Licence.
18.0 The Royalty Fees, shall be calculated quarterly and payable no later
than 30 days following the end of each Contract Year quarter.
ADJUSTMENT TO ROYALTY FEES
19.0 UNISERVICES acknowledges that if PLL establishes to UNISERVICES'
reasonable satisfaction that there may be strong commercial advantages
in combining third parties' know-how with the Patents, it will join in
negotiations with PLL and such third parties and shall in good faith,
use its best efforts to agree on the amount of royalties to be paid by
PLL to UNISERVICES and the third parties PROVIDED THAT PLL shall not be
obliged to agree to pay royalties to all parties where the total amount
would exceed the Royalty Fees that would have been payable to
UNISERVICES if the third parties' know-how had not been used. Multiple
Royalty Fees shall not be due to UNISERVICES if the sale, use, lease or
manufacture of any Products is covered by more than one of the Patents.
MAXIMISE SALES
20.0 PLL shall use its best endeavours to maximise the sale of the Products
during the Licence Term.
INFORMATION AND AUDIT
21.0 UNISERVICES shall be entitled to receive such information that
UNISERVICES may reasonably require to calculate the amount of Royalty
Fees computed as per Schedule B
22.0 UNISERVICES may from time to time, by its representative or by an
independent accountant or auditor, examine or audit the records of PLL
relating to any information
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which PLL has provided to UNISERVICES or which PLL is required to have
provided to UNISERVICES but has failed to do so.
23.0 UNISERVICES shall pay the cost of any inspection or audit carried out
pursuant to the immediately preceding Clause 22.
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PART 4
GENERAL TERMS AND CONDITIONS
OWNERSHIP OF INTELLECTUAL PROPERTY
24.0 PLL acknowledges and agrees that UNISERVICES has ownership, Licence or
other rights to the Intellectual Property in respect to the Patents. In
order to protect and maintain UNISERVICES' rights in the above, PLL
shall use UNISERVICES' Intellectual Property solely in accordance with
this Agreement.
25.0 UNISERVICES acknowledges and agrees that PLL has sole and exclusive
rights to the Intellectual Property in respect to the New Developments.
In order to protect and maintain PLL's rights in the above, UNISERVICES
shall use PLL's Intellectual Property solely in accordance with this
Agreement.
26.0 UNISERVICES warrants and undertakes to PLL that UNISERVICES and/or its
related companies have full right, power and entitlement to grant to
PLL the rights in respect to the Patents and the Products set out in
this Agreement and shall provide PLL with such evidence as PLL shall
reasonably require to establish such claim.
RIGHTS IN THE INTELLECTUAL PROPERTY UPON TERMINATION OF THIS AGREEMENT
27.0 On termination of this Agreement PLL and UNISERVICES will:
27.1 Immediately cease to use the Intellectual Property of the
other;
27.2 Not thereafter do or display or suffer or permit to be done or
displayed any act matter or thing which may lead or induce or
shall be calculated or likely to lead or induce members of the
public to believe that the parties are still connected or
associated in any way with each other or are still entitled to
market or distribute the Products.
28.0 If any party fails to comply with Clause 27.2 then the other party by
its employees and agents may enter the defaulting party's premises and
remove all of its Intellectual Property and material relating to its
Intellectual Property. All costs and expenses incurred in so doing
shall be recoverable as a debt owing by the defaulting party.
CONFIDENTIALITY
29.0 No party will disclose to any person any Confidential Information,
unless that disclosure is expressly authorised in writing by the owner
of such Confidential Information.
30.0 Other than may be necessary to reasonably carry out either party's day
to day commercial activities, neither party shall disclose the terms of
this Agreement nor issue any promotional material or other public
announcement or disclosure in respect to the existence or nature of the
relationship between PLL and UNISERVICES without the prior approval of
the other.
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SPECIFIC SECRECY OBLIGATIONS
31.0 Each of the Parties shall:
31.1 Treat as confidential and keep absolutely secret, all the
Confidential Information received by it from the other party;
31.2 Take all proper and effective precautions to prevent the
disclosure of the Confidential Information and to preserve the
secrecy and confidentiality of the Confidential Information
including, without limitation, taking all necessary action to
prevent unauthorised persons from obtaining access to the
Confidential Information whether by a direct or indirect
exposure to it or otherwise;
31.3 Take all reasonable steps to ensure that its employees or
agents also observe the secrecy requirements of this
Agreement; and
31.4 Return to the owner all physical or written records containing
the Confidential Information or documentation relating to or
concerning the Confidential Information including copies of
documentation then in existence immediately upon the
termination or expiration of this Agreement.
CIRCUMSTANCES WHEN DISCLOSURE OF CONFIDENTIAL INFORMATION IS PERMITTED
32.0 A party is relieved of its obligations to preserve the confidentiality
of the Confidential Information if and only to the extent that:
32.1 Such Confidential Information is or becomes generally publicly
available other than as a result of a breach of this Agreement
by the party; or
32.2 Such Confidential Information was developed independently by
the party; or
32.3 Specific disclosure is required by law.
BEST ENDEAVOURS
33.0 Each of the parties shall do all things necessary to carry out the
terms of this Agreement to the fullest effect in accordance with best
business practice. In particular, each of the parties shall diligently
and fully exploit (or support the exploitation of) the rights under
this Agreement.
PROHIBITIONS
34.0 None of the parties:
34.1 Use the Intellectual Property of the other parties except in
the manner permitted in this Agreement;
34.2 Be a party to the doing of any act whereby the goodwill trade
or business of the other party may be prejudicially affected;
34.3 Hold itself out as a related party of the other;
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34.4 Pledge the credit of the other party;
INDEMNITY AND WARRANTIES
35.0 Each of the parties ("the indemnifying party") unconditionally and
irrevocably indemnifies the other against any loss, liability, costs or
expenses which that other party may incur because the indemnifying
party:
35.1 Fails to pay any moneys due and payable to the other party (or
within any applicable period of grace) or in the manner
required;
35.2 Fails to perform any of the indemnifying party's obligations
under this Agreement or under any other contractual
arrangement between the indemnifying party and the other
party;
35.3 Has infringed the intellectual property rights of any other
person.
And the indemnifying party will on demand pay to the other party the
amount of that loss, liability, cost or expense
PROVIDED THAT
35.4 PLL acknowledges that UNISERVICES does not make any express or
implied warranty to PLL that the exercise by PLL of the rights
granted to PLL under this agreement will not infringe the
rights of any other party and that PLL indemnifies UNISERVICES
against any loss, liability, costs or expenses which
UNISERVICES may incur as a result of the exercise by PLL of
the rights in this agreement.
RIGHT TO PROSECUTE INFRINGEMENTS OF THE INTELLECTUAL PROPERTY
36.0 PLL shall have the right under its control and at its own expense to
prosecute any third party infringements of UNISERVICES' Intellectual
Property so long as it is the sole and exclusive licensee of
UNISERVICES' Intellectual Property. UNISERVICES shall cooperate with
PLL on any action brought by PLL under this clause subject only to PLL
paying UNISERVICES' reasonable costs.
37. Nothing in Clause 36 shall oblige PLL to take any action that it does
not consider to be in its best interests. However, in such
circumstances, UNISERVICES may at its discretion and cost, take such
action and any recovery obtained by UNISERVICES shall be the property
of UNISERVICES. PLL shall cooperate with UNISERVICES on any action
brought by UNISERVICES under this Clause subject only to UNISERVICES
paying PLL's reasonable costs.
TERMINATION
38.0 PLL shall have the right to terminate this Agreement at the end of any
Contract Year for any reason upon at least 3 month's written notice to
UNISERVICES or immediately without notice in the event that any third
party claims that it is the owner of the UNISERVICES Intellectual
Property.
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39.0 Either Party may elect to terminate this Agreement by giving notice in
writing to the other party of its intention to do so if the other
party:
39.1 Commits a breach of any of the provisions of this Agreement
and fails to rectify the breach (if capable of being
rectified) within 30 days of being required to do so in
writing;
39.2 Commits an act of bankruptcy or fails to contest within ten
working days of service of any petition in liquidation;
39.3 Becomes the subject of any proceedings to obtain an order or
resolution for its winding up (except as part of a bona fide
reconstruction scheme);
39.4 Has a receiver/manager, official manager or provisional
liquidator appointed over the whole or part of its
undertakings or assets;
39.5 Has an execution or other process of any court or authority or
any distress levied upon any of its property without it being
paid out, set aside or withdrawn within 14 days of its issue;
39.6 Has a substantial part of its assets resumed, confiscated or
forfeited;
39.7 Agrees with the other party in writing to terminate this
Agreement at the end of any Contract Year; or
39.8 After remedying any default in respect to which notice
requiring it to remedy such default was given, continues to
engage in the same non-compliance whether or not corrected
after such notice.
CONSEQUENCES OF TERMINATION OR EXPIRATION
40.0 In the event that this Agreement expires or is terminated:
40.1 All rights of PLL under this Agreement will terminate;
40.2 PLL will forthwith;
(a) Pay to UNISERVICES any outstanding Royalty Fees or
charges due to UNISERVICES at the effective date of
termination or expiration within 30 days of the
effective date of termination or expiration;
(b) Cease to hold itself out as a licensee of the Patents
or Products or that it is associated with UNISERVICES
in any way;
(c) Cease using UNISERVICES's Intellectual Property;
(d) Return to UNISERVICES all documents and other
material or matters relating to its Intellectual
Property.
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41.0 Termination or expiration of this Agreement shall be without prejudice
to any claim any party may have against the other or others under this
Agreement as at the date of effective termination or expiration.
GENERAL ACKNOWLEDGEMENTS
42.0 Each of the parties acknowledges that:
42.1 This Agreement contains all the terms conditions and
obligations of the parties.
42.2 It shall make, do perform and execute all documents acts
matters and things required to ensure that no term of this
Agreement shall be breached by it.
NOTICES
43.0 Any notice, demand or other document under or relating to this
Agreement will be sufficiently served if delivered personally or if
sent by E-mail, fax, or prepaid registered letter to the party to be
served at the address of such party at such address as may from time to
time be notified in writing by such party to the other parties.
44.0 Any notice, demand or other document will be deemed to have been served
at the time of delivery or, if service is effected in any other manner
described, at the time when it would in the ordinary course be
delivered.
AMENDMENT
45.0 This Agreement may only be varied by the written agreement of the
parties.
APPROVALS AND CONSENT
46.0 Except when the contrary is stated in this Agreement, a party may give
or withhold an approval or consent to be given under this Agreement in
that party's absolute discretion and subject to those conditions
determined by the respective party.
47.0 A party is not obliged to give its reasons for giving or withholding a
consent or for giving a consent subject to conditions.
COUNTERPARTS
48.0 This Agreement may be executed in a number of counterparts and if so
executed, the counterparts taken together constitute one Agreement.
NO WAIVER
49.0 No failure by a party to exercise any power given to it or to insist
upon the strict compliance by the other or others with any obligations
or conditions and no customary practice of the parties or variances
with the terms of this Agreement shall constitute a waiver of that
party's right to demand exact compliance with the terms of this
Agreement other than in relation to breaches which have been waived nor
shall a waiver by it of any particular default affect or impair its
right in respect of any subsequent default of the same or different
nature, nor any delay or omission by that party to exercise any right
arising from default shall affect or impair its rights as to the said
default or any subsequent default.
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FURTHER ASSURANCE
50.0 Each party shall promptly execute all documents and do all things that
another party from time to time reasonably requests to effect, perfect
or complete this Agreement and all transactions incidental to it.
LEGAL COSTS
51.0 The Parties shall each pay all their own legal and other expenses
relating directly or indirectly to the negotiation, preparation and
execution of this Agreement and all documents incidental to it.
SEVERANCE
52.0 In the event of illegality, each of the terms of this Agreement is
severable from the other terms of this Agreement and the severance of
one term does not affect the other terms.
DISPUTE RESOLUTION
53.0 The parties agree that any dispute arising out of or relating to this
Agreement shall be resolved solely by:
53.1 Negotiation between the chief executive officers of the
parties in good faith discussions, such discussions to be held
within 5 working days of one party notifying the other of a
dispute and the nature of such dispute;
53.2 If the parties fail to resolve the dispute through mediation
within 120 working days, either party shall have the right to
pursue any other remedies available to it.
54.0 This Agreement shall be governed by the laws of New Zealand, except
that any questions affecting the construction or effect of any of the
Patents shall be determined by the law of the country in which the
Patent shall have been granted.
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SCHEDULE A
PATENTS
Australia
Lithium Conducting Electrolyte Application No. PQ3895
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SCHEDULE B
ROYALTY FEES
ROYALTY FEES TO BE CALCULATED AS:
a. 2.5% of the Licence fees earned by PLL or a related party from the
sub-licensing to a third party of the rights to the Products whether
such fees are paid by the sub-licensee in one sum or by instalments,
and
b. 2.5% of Net Sales where Licensed Products are manufactured by PLL or a
related party of PLL.
PROVIDED THAT "Net Sales" shall be calculated according to the following
formula:
NS = S x CF
Where:
NS means Net Sales
S means the FOB sales value of finished cells containing the Products
before taxes
CF means the proportion that the cost of the Products bear to the total
cost of the materials used in the manufacture of the finished cells.
This is the final page of the Agreement.
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