ADDENDUM TO EXCLUSIVE LICENSE AGREEMENT
EXECUTION VERSION
ADDENDUM TO EXCLUSIVE
LICENSE AGREEMENT
THIS ADDENDUM TO EXCLUSIVE LICENSE
AGREEMENT (this “Addendum”) is entered into on this 30th day of March,
2009 (the “Addendum Effective Date”), by and between PTJ Bioenergy Holdings
Ltd., a company organized and existing under the laws of the Republic of
Cyprus (“Licensor”)
and New Generation Biofuels, Inc., a Delaware corporation (formerly known as
H2Diesel, Inc.), having its principal offices located at ▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇.,
▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇, ▇▇▇▇▇ (the “Licensee”).
RECITALS
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A.
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Licensor
(as successor by assignment to ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇, an individual residing
at ▇▇▇ ▇▇▇▇▇▇▇▇, ▇▇▇▇, ▇▇▇▇ [Frosinone], Italy) and Licensee are parties
to that certain Exclusive License Agreement, dated 20 March, 2006 (as
amended, supplemented or otherwise modified to the Addendum Effective Date
in accordance with its terms, the “License”). Capitalized terms
used and not separately defined in this Addendum (including these
recitals) shall have the meanings given in the
License.
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B.
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Licensee
and Licensor now wish to set forth the terms and conditions of the
‘cross-licensing arrangement’ referenced at Section 13(b) of the License
with respect to Product Improvements made by
Licensee.
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NOW, THEREFORE, in
consideration for the mutual covenants and promises contained in this Addendum
and other good and valuable consideration, the receipt and sufficiency of which
are hereby acknowledged, the parties hereto agree as follows:
1. ROYALTY; PAYMENT; RECORDKEEPING AND
AUDIT RIGHTS.
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a.
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Royalty. In consideration of the
rights in Product Improvements granted to Licensor pursuant to Section
13(b) of the License, Licensor agrees to pay to Licensee, a royalty (the
“Royalty”) determined as follows (a) for sales outside the Territory, five
percent (5%) of the difference of (i) gross revenues realized from such
sales, whether realized by Licensor, its affiliates or agents less (ii)
direct expenses incurred by Licensor for travel and commissions paid to
third party sales agents in connection with such sales and (b) in all
other cases, five percent (5%) of gross revenues realized from
exploitation and commercialization of the Product Improvements outside the
Territory, whether realized by Licensor, its affiliates or
agents.
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b.
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Payment. The
Royalty shall be due and payable within thirty (30) calendar days of
receipt of such revenues referenced in Section
1(a).
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c.
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Recordkeeping.
Licensor shall, and shall ensure that its affiliates and agents maintain
all customary business records with respect to the exploitation and
commercialization of the Product Improvements outside the Territory,
including, without limitation, all sales records, invoices and other
documents reasonably related to calculation of the Royalty (collectively,
“Records”).
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d.
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Audit Rights.
During normal business hours, upon reasonable prior notice to Licensor,
and at no cost to Licensor, Licensee, its auditors and other advisors and
representatives shall have the right to audit and review any Records to be
maintained in accordance with this Addendum. Licensee
acknowledges that any audit or review of Records will be subject to the
confidentiality provisions in Section 14(k) of the
License.
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2. FURTHER
IMPROVEMENTS. For the avoidance of doubt, it is understood
that Licensee shall have the exclusive right and license to make, cause to be
made, use, distribute, sell, offer related services, sublicense others to do the
same and otherwise to commercialize and exploit within the Territory any and all
modifications, enhancements, variations and improvements on the Product
Improvements or new products related to the Product Improvements invented by
Licensor, its affiliates or independent contractors on and subject to the terms
and conditions of the License and without additional
compensation. Licensor and Licensee further agree to identify
opportunities to collaborate on joint research and development efforts in
connection with improvements of the Product.
EXECUTION VERSION
3. TECHNICAL ASSISTANCE; FACILITY
TOURS. At the request of Licensor from time to time, Licensee
through its Technical Department (including ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇, if an
employee of Licensee) will provide reasonable technical assistance to Licensor
in connection with presentations and implementation in coordination with
Licensee and cooperate with Licensor so as to assist Licensor in using the
Product Improvements; it being understood that Licensee will not be obligated to
incur material expenses or devote significant efforts in connection with such
technical assistance without adequate compensation. Among other things,
Licensor may request that Licensee permit third parties to tour Licensee’s
production facilities upon reasonable prior notice, during regular business
hours, without interruption to Licensee’s operations, and subject to
confidentiality restrictions substantially similar to those in Section 14(k) of
the License.
4. COMMISSION FOR SALES
ASSISTANCE. If Licensee introduces Licensor to a potential
customer or otherwise substantially assists in the making of any sale outside
the Territory, Licensor will pay to Licensee a commission (the “Sales
Commission”) with respect to that sale equal to five percent (5%) of the
difference of (a) gross revenues realized from such sale, whether realized by
Licensor, its affiliates or agents less (b) direct expenses incurred by Licensor
for travel and commissions paid to third party sales agents (other than the
Sales Commission) in connection with such sale. Any such Sales
Commission will be in addition to the Royalty to be paid in respect of such
sale, and will be due and payable within thirty (30) calendar days of receipt of
such revenues.
5. AMENDMENT TO FIRST
OFFER PERIOD; VALUATION OF PERFORMANCE-BASED OFFER. Section
1(d) of the License is amended to reduce the thirty (30) day period therein to
seven (7) days. In addition, to the extent that an offer Licensee is
making under Section 1(d) of the License is dependent on the level of
performance by Licensee, the parties shall evaluate the monetary value of
Licensee’s offer based on reasonable projections (by Licensee, subject to the
reasonable approval of Licensor) of the expected performance of Licensee over a
mutually agreed period. To the extent the value of Licensee’s offer
is being compared to that of a third party, the third party offer also shall be
evaluated as to monetary value based on reasonable projections (by the third
party, subject to the reasonable approval of Licensor) of the expected
performance, and such information shall be provided to Licensee, who shall have
another seven (7) day period to make a first offer based on such
valuation. If the third party is a major oil company within a
particular country outside the Territory (such as PetroChina in China or
Petrobras in Brazil), Licensee’s offer will be considered equivalent only if the
monetary value of such offer is at least one hundred twenty percent (120%) of
the monetary value of the third party offer. To the extent there are
any disputes about the value of Licensee’s offer (or whether the
third
party’s offer is equivalent),
the parties shall submit the dispute to an industry expert for expedited
resolution, to be binding on all
parties.
6. COMPLIANCE WITH
LAWS. In its exploitation and commercialization of any Product
Improvements outside the Territory, Licensor shall, and shall ensure that its
affiliates and agents shall, obtain all licenses and permits as required by, and
otherwise comply with, applicable laws and regulations of all applicable
jurisdictions (it being understood that Licensor shall not take or permit any
action to cause Licensee or its affiliates to not be in compliance with
applicable laws and regulations of all applicable jurisdictions), including all
such licenses, permits, laws and regulations as would be applicable to Licensee
(within or outside the Territory) if Licensee were to exploit and commercialize
such Product Improvements outside the Territory.
7. USE OF MARKS. For
the avoidance of doubt, without prior written consent by Licensee, Licensor
shall not use any trademarks, trade names, service marks or other identifying
information of Licensee, including without limitation “New Generation Biofuels”
and the “New Generation Biofuels” corporate logo, in connection with its
exploitation and commercialization of the Product Improvements.
EXECUTION
VERSION
8. TERM AND
TERMINATION. This Addendum shall be effective as of the
Addendum Effective Date and shall terminate upon any termination or expiration
of the License.
9. INCORPORATION WITH LICENSE; EFFECT ON
LICENSE. This Addendum is deemed to be incorporated in and
made part of the License as if fully set forth therein. Except as
amended or supplemented by this Addendum, the License remains in full force and
effect.
[Signatures
follow on next page.]
IN WITNESS WHEREOF, the
parties hereto have executed or caused this Addendum to be executed as of the
Addendum Effective Date.
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LICENSOR:
PTJ
Bioenergy Holdings, Ltd., a company organized and existing under the laws
of the Republic of Cyprus
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LICENSEE:
New
Generation Biofuels, Inc., a Delaware corporation
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Signature: /s/ ▇▇▇▇▇▇▇
▇▇▇▇▇▇
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Signature:
/s/ ▇▇▇
▇▇▇▇▇
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Name. ▇▇▇▇▇▇▇
▇▇▇▇▇▇,
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Name:
▇▇▇ ▇▇▇▇▇
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Title:
Chairman & CEO
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Title:
Chairman
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Signature:
/s/ ▇▇▇▇▇▇▇▇▇▇
▇▇▇▇▇▇▇▇
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Name. ▇▇▇▇▇▇▇▇▇▇
▇▇▇▇▇▇▇▇
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Title:
President
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