WSRC EXPL CAA0402 LA-03-002 FDTI
Exhibit 10.6 Exclusive Patent License Agreement, between Fingerprint
Detection Technologies, Inc. and Westinghouse Savannah River Company LLC.
EXCLUSIVE PATENT LICENSE AGREEMENT
Between
WESTINGHOUSE SAVANNAH RIVER COMPANY LLC
and
FINGERPRINT DETECTION TECHNOLOGIES, INC. (FDTI),
a wholly-owned subsidiary of UTEK Corporation
for
LED INTENSE HEADBAND LIGHT SOURCE FOR FINGER PRINT ANALYSIS
WSRC License Agreement No. LA-02-003
Westinghouse Savannah River Company LLC
Aiken, South Carolina
xxviii
TABLE OF CONTENTS
Article Page
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1. Definitions . . . . . . . . . . . . . . . . . . . . . . 1
2. License Grant . . . . . . . . . . . . . . . . . . . . . 2
3. Sublicenses . . . . . . . . . . . . . . . . . . . . . . 3
4. Due Diligence.. . . . . . . . . . . . . . . . . . . . . 4
5. License Fees. . . . . . . . . . . . . . . . . . . . . . 5
6. Records and Reports . . . . . . . . . . . . . . . . . . 6
7. Technical Assistance. . . . . . . . . . . . . . . . . . 7
8. Patent Prosecution and Maintenance. . . . . . . . . . . 7
9. Infringement By Third Parties . . . . . . . . . . . . . 7
10. Representation and Warranties . . . . . . . . . . . . . 8
11. Disclaimers . . . . . . . . . . . . . . . . . . . . . . 9
12. Term of Agreement and Early Termination . . . . . . . . 10
13. Rights of the Parties After Termination . . . . . . . . 11
14. Use of Names and Trademarks; Nondisclosure Agreement. . 12
15. Force Majeure . . . . . . . . . . . . . . . . . . . . . 12
16. Assignability.. . . . . . . . . . . . . . . . . . . . . 12
17. Non-Abatement of Royalties. . . . . . . . . . . . . . . 13
18. Notices . . . . . . . . . . . . . . . . . . . . . . . . 13
19. Dispute Resolution. . . . . . . . . . . . . . . . . . . 14
20. Governing Law . . . . . . . . . . . . . . . . . . . . . 15
21. Waivers . . . . . . . . . . . . . . . . . . . . . . . . 15
22. Modifications . . . . . . . . . . . . . . . . . . . . . 15
23. Headings. . . . . . . . . . . . . . . . . . . . . . . . 15
Appendix A - WSRC Patent Rights. . . . . . . . . . . . . . . . . . . A.1
Appendix B - Development and Commercialization Plan
(Proprietary Information) . . . . . . . . . . . . . . . B.1
Appendix C - Issue Fee, Earned Royalties and Minimum Annual
Royalties (Proprietary Information) . . . . . . . . . . C.1
EXCLUSIVE PATENT LICENSE AGREEMENT
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This License Agreement, effective from the date of execution by the last signing
Party, is by and between WESTINGHOUSE SAVANNAH RIVER COMPANY LLC (hereinafter
"WSRC"), a Delaware corporation whose principal place of business is located at
Aiken, South Carolina and Fingerprint Detection Technologies, Inc. (FDTI),
(hereinafter "LICENSEE"), a Florida corporation whose principal place of
business is located at ▇▇▇ ▇. ▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇; the Parties
to this License Agreement being referred to individually as a "Party," and
collectively as "Parties."
BACKGROUND:
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WHEREAS, WSRC, pursuant to ▇▇▇▇▇▇▇▇ ▇▇. ▇▇-▇▇▇▇-▇▇▇▇▇▇▇▇▇ (hereinafter "Prime
Contract") with the United States Government as represented by the Department of
Energy (hereinafter "DOE") has developed and/or obtained certain WSRC Patent
Rights relating to Licensed Products subject to a reservation in the Government
to a nonexclusive, nontransferable, irrevocable, paid-up license to practice and
have practiced throughout the world, by or on behalf of the Government, any and
all such rights as well as certain march-in rights and any other conditions of
waivers granted by DOE; and
WHEREAS, LICENSEE desires to obtain rights under WSRC Patent Rights.
THEREFORE, in consideration of the premises, covenants and agreements contained
herein, the Parties hereto agree to be bound as follows:
1. DEFINITIONS
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1.1 "WSRC Patent Rights" shall mean any and all intellectual property
rights or patent rights to any subject matter claimed in or disclosed
in Appendix A to this Agreement and all United States and
corresponding foreign patents issuing from United States patent
applications and corresponding patent applications later filed in
foreign jurisdictions, including all divisions, continuations,
continuations-in-part, re-examinations, reissues, and temporal
extensions of any of the foregoing.
1.2 "Licensed Products" shall mean any and all items, methods or
processes, or parts thereof, which are produced by or employ the
practice of any inventions claimed in Appendix A,
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and whose manufacture, use or sale would constitute, but for the
license granted to LICENSEE pursuant to this License Agreement, an
infringement of any claim in WSRC Patent Rights.
1.3 "Net Sales" shall mean the total amounts invoiced to purchasers (other
than to Federal purchasers as set forth in Section 5.4 below) during
the accounting period in question for Licensed Products sold by
LICENSEE, less allowances for return of Licensed Products, discounts,
commissions (but not to regular employees), freight, and excise or
other taxes on Licensed Products. Net Sales in the case of Licensed
Products used or transferred by LICENSEE shall mean the fair market
value of Licensed Products as if they were sold to an unrelated third
party in similar quantities.
2. LICENSE GRANT
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2.1 Subject to the terms and conditions of this Agreement, WSRC hereby
grants to LICENSEE an exclusive, nontransferable, revocable,
world-wide (subject to Article 8 limitations), royalty-bearing license
to manufacture, use, sell or offer for sale Licensed Products in all
fields of use.
2.2 WSRC hereby agrees not to grant to any other party a license to WSRC
Patent Rights in accordance with the grant hereinabove as long as
LICENSEE abides by the terms and conditions of this Agreement, unless
required to so grant such right and license in accordance with Federal
Statutory or Regulatory enactments conditioning the waiver of rights
to WSRC by the DOE, particularly as set forth in 41 CFR 9-9.109-(6)i;
10 CFR Part 781; or 37 CFR Part 404.
2.3 LICENSEE agrees to make available to WSRC and will grant a
non-exclusive, irrevocable, paid-up license to WSRC and the Government
to make and use, and to have made and used on their behalf, for
non-commercial purposes, any and all developments and improvements to
WSRC Patent Rights as may be made by LICENSEE.
2.4 LICENSEE agrees that any Licensed Products for use or sale in the
United States shall be manufactured or practiced substantially in the
United States.
2.5 LICENSEE agrees to affix appropriate markings of the applicable WSRC
Patent Rights
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(and the fact that WSRC was the source of these rights) upon or in
association with LICENSEE's Licensed Products. LICENSEE further agrees
to use its best efforts to follow any guidance from WSRC concerning
such markings.
3. SUBLICENSES
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3.1 WSRC grants to LICENSEE the right to grant Sublicenses to third
parties to practice and have practiced Licensed Products under this
Agreement. However, such Sublicenses may be granted only under the
following conditions:
(a) Licensed Products sold or used in the United States shall be
substantially manufactured in the United States; or
(b)(i) the Sublicensee has a business unit located in the United States
and significant economic and technical benefits will flow to the
United States as a result of the Sublicense agreement; and
(ii) in sublicensing any entity that is subject to the control of a
foreign company or government, said entity shall be limited to
the same extent as such foreign government permits United States
agencies, organizations, or other persons to enter into
cooperative R&D agreements and licensing agreements, and has
policies to protect United States intellectual property rights.
If LICENSEE determines that neither conditions (a) nor (b) can be met, it
must obtain written approval from WSRC prior to granting the Sublicense.
(c) Sublicenses which include the right to sell Licensed Products shall
expressly exclude the right of further sale without the express prior
written approval of Licensor. Sublicensee's right to practice and have
practiced WSRC Patent Rights (that is, to enter into use agreements with
Sub-sublicensees) is not subject to such limitation.
(d) Sublicenses granted under this Article must contain all of the other
conditions, restrictions and reservations of this Agreement, except for
those provisions related to License Issue Fees, and shall preserve the
rights and reservations of WSRC and the DOE/Government existing hereunder.
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3.2 LICENSEE shall provide WSRC with a copy of any and all fully executed
Sublicenses and Sub-sublicenses within thirty (30) days after
execution of same.
3.3 LICENSEE shall collect payment of all royalties due WSRC from the sale
of Licensed Products by any Sublicensees in accordance with Article 5
("License Fees"); pay WSRC the amounts due and collected from
Sublicensees in a timely manner; and summarize and deliver to WSRC, in
accordance with Article 6 ("Records and Reports"), all reports
required from Sublicensees as shall be pertinent to a royalty
accounting under said Sublicense agreements.
3.4 LICENSEE shall not receive from Sublicensees anything of value in lieu
of cash payments based upon payment obligations of any Sublicense
under this License Agreement, without the express prior written
approval of WSRC.
3.5 Termination of this License Agreement for any reason automatically
operates as an assignment by LICENSEE to WSRC of all of LICENSEE's
rights, title and interest in and to each Sublicense granted.
4. DUE DILIGENCE
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4.1 LICENSEE shall give his commercially reasonable efforts to bring one
or more Licensed Products to market through a vigorous and diligent
program for exploitation of WSRC Patent Rights and shall demonstrate a
continuing effort to market such Licensed Products in sufficient
quantities to meet market demands for these products.
4.2 LICENSEE shall also adhere to the resource commitments, performance
milestones, and reporting requirements set forth in the Development
and Commercialization Plan incorporated as Appendix B to this
Agreement. Should LICENSEE fail to meet the commercialization
provisions and milestones set forth in Appendix B of this Agreement,
as it may be amended by the Parties, or is unable or unwilling to
demonstrate continuing due diligence during the balance of the term of
this Agreement, WSRC shall have the option, to be exercised by giving
LICENSEE written notice as to the nature of the deficiency and
providing him thirty (30) days to cure the deficiency, to convert this
license grant to a partially exclusive or nonexclusive license. Such
converted license shall have the same field of use restrictions, if
any, and the same royalty rates and minimum royalties as this license.
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5. LICENSE FEES
------------
5.1 In consideration of the right and license granted herein, LICENSEE
agrees to pay the License Issue Fee, earned running royalty, and
minimum annual royalties set forth in Appendix C of this Agreement.
Should LICENSEE fail to make License Issue Fee payment to WSRC within
thirty (30) days, this agreement shall be null and void.
5.2 Royalties accruing to WSRC shall be paid to WSRC within sixty (60)
days after the Semi-annual Reporting Periods, hereby defined for
royalty reporting and payment purposes under this Agreement as being
the six (6) month periods of April 1 through September 30, and October
1 through March 31. Thus, corresponding payment due dates will be
November 30 and May 31, respectively. Each such payment will be for
any and all royalties which accrued to WSRC within the most recently
completed Semi-annual Reporting Period.
5.3 Should LICENSEE fail to make any payment to WSRC within the time
period prescribed for such payment, then the unpaid amount shall bear
interest at the rate of one and one half percent (1.5%) per month from
the date when payment was due until payment in full, with interest, is
made.
5.4 No royalties shall be owing on any Licensed Products produced for or
under any Federal agency contract pursuant to the Government
nonexclusive license but only to the extent that LICENSEE can show
that the Government received a discount on Licensed Product sales,
which discount is equivalent to or greater than the amount of any such
royalty that would otherwise be due. Any sales for Federal
governmental purposes shall be reported under Section 6 - "Records and
Reports" below by providing: (a) a Federal government contract number;
(b) identification of the Federal agency; and (c) a description as to
how the benefit of the royalty-free sale was passed on to the
Government.
5.5 The royalty provisions of Appendix C may be offset by any advances
made by LICENSEE pursuant to Section 9 - "Infringement by Third
Parties" below.
5.6 Upon termination of this Agreement for any reason whatsoever, any
royalties that remain unpaid shall be properly reported and paid to
WSRC within thirty (30) days of any such termination.
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6. RECORDS AND REPORTS
-------------------
6.1 LICENSEE agrees to keep adequate records in sufficient detail of
LICENSEE's utilization of WSRC Patent Rights to enable royalties
payable hereunder to be determined and to provide such records for
inspection by authorized representatives of WSRC at any time during
regular business hours of LICENSEE. LICENSEE agrees that any
additional records of LICENSEE, as WSRC may reasonably determine are
necessary to verify the above records, shall also be provided to WSRC
for inspection.
6.2 Within sixty (60) calendar days after the close of each semi-annual
reporting period during the term of this Agreement (i.e., May 31 and
November 30), LICENSEE will furnish WSRC a written report providing:
(a) all domestic Net Sales in U.S. Dollars during the preceding
semi-annual reporting period including any Federal governmental agency
sales under Section 5.4 above and all export Net Sales (if none,
LICENSEE will so indicate); and (b) the amount of royalties due in
U.S. Dollars for the preceding semi-annual reporting period pursuant
to the provisions hereof.
7. TECHNICAL ASSISTANCE
--------------------
7.1 WSRC will provide to LICENSEE, on a non-reimbursement/free of charge
basis, the following level of technical assistance to help facilitate
the transfer of technology associated with WSRC Patent Rights:
Thirty-two (32) hours of technical assistance of its Inventor or
others equally skilled in the art on a non-interference basis at
LICENSEE's discretion. Travel expenses, if any, shall be the
responsibility of the LICENSEE.
7.2 WSRC further agrees to provide from time to time over the term of the
Agreement, on a non-interference basis and subject to the availability
of the Inventor or others equally skilled in the art, additional
technical assistance to help facilitate the transfer of technology
associated with WSRC Patent Rights. In the event that LICENSEE elects
to exercise this option, the full amount estimated by WSRC for its
services must be paid in advance prior to LICENSEE receiving any
portion of such services.
8. PATENT PROSECUTION AND MAINTENANCE
----------------------------------
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8.1 WSRC shall diligently pursue United States patents for the inventions
identified in Appendix A, using counsel of its choice. The cost of
preparing, filing, prosecuting and maintaining the United States
patents(s) contemplated by this License Agreement shall be borne by
WSRC. The Parties acknowledge that foreign patent protection is
presently considered to be unavailable for the WSRC Patent Rights
identified in Appendix A.
9. INFRINGEMENT BY THIRD PARTIES
-----------------------------
9.1 LICENSEE shall give notice of any discovered third-party infringement
to WSRC. WSRC shall, at its sole discretion, subject to DOE approval,
take appropriate action to stop or prevent such infringement upon
consultation with LICENSEE. WSRC shall also have the sole discretion
to decide to take no action against the alleged infringement. In the
event that WSRC does not take appropriate action to stop or prevent
such infringement within ninety (90) days after receiving such notice,
LICENSEE has the right to take appropriate action to stop and prevent
the infringement, including the right to file suit.
9.2 In the event that LICENSEE files suit to stop infringement or defends
any action against the validity of the patent, LICENSEE shall
indemnify and hold WSRC harmless against all liability, expense and
costs, including attorneys' fees incurred as a result of any such
suit.
9.3 LICENSEE may, however, apply up-to-fifty (50) percent of any such
incurred costs as a reduction of any royalties due and payable to WSRC
under the terms of this Agreement at such time as verified bills of
costs actually incurred are reported to WSRC in accordance with
Section 6 - "Records and Reports".
9.4 In the event LICENSEE secures a judgment against any third-party
infringer, after accounting for and paying all of LICENSEE's costs
associated with prosecution of such action as well as paying WSRC for
any reduction of royalties pursuant to Section 9.3, LICENSEE shall pay
WSRC its royalties as set forth hereinabove on any balance of proceeds
actually received and LICENSEE shall retain any such remaining balance
of proceeds.
9.5 The Parties hereby agree to cooperate with each other in the
prosecution of any such legal actions or settlement actions undertaken
under this section and each will provide to the
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other all pertinent data in its possession which may be helpful in the
prosecution of such actions; provided, however, that the Party in
control of such action shall reimburse the other Party for any and all
costs and expenses in providing data and other information necessary
to the conduct of the action.
9.6 The Party having filed such action shall be in control of such action
and shall have the right to dispose of such action in whatever
reasonable manner it determines to be the best interest of the Parties
hereto, except that any settlement which affects or admits issues of
patent validity shall require the advance written approval of WSRC.
10. REPRESENTATIONS AND WARRANTIES
------------------------------
10.1 WSRC represents and warrants that Appendix A contains a complete and
accurate listing of all the WSRC Patent Rights licensed and that WSRC
has the right to grant the rights, licenses, and privileges granted
herein.
10.2 WSRC represents and warrants that WSRC has no knowledge of any claims
of infringement filed against WSRC for practicing WSRC Patent Rights
anywhere in the world.
10.3 Except as set forth hereinabove, WSRC makes NO REPRESENTATIONS OR
WARRANTIES, express or implied, with regard to the infringement of
proprietary rights of any third party.
10.4 LICENSEE acknowledges that the export of any of the WSRC Patent Rights
from the United States or the disclosure of any of the WSRC Patent
Rights to a foreign national may require some form of license from the
U.S. Government. Failure to obtain any required export licenses by
LICENSEE may result in LICENSEE subjecting itself to criminal
liability under U.S. laws.
11. DISCLAIMERS
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11.1 Neither WSRC, the DOE, nor persons acting on their behalf will be
responsible for any injury to or death of persons or other living
things or damage to or destruction of property or for any other loss,
damage, or injury of any kind whatsoever resulting from LICENSEE's
manufacture, use, or sale of materials, information, or WSRC Patent
Rights
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hereunder.
11.2 EXCEPT AS SET FORTH HEREINABOVE, NEITHER WSRC, THE DOE, NOR PERSONS
ACTING ON THEIR BEHALF MAKE ANY WARRANTY, EXPRESS OR IMPLIED: (1) WITH
RESPECT TO THE MERCHANTABILITY, ACCURACY, COMPLETENESS, OR USEFULNESS
OF ANY SERVICES, MATERIALS, OR INFORMATION FURNISHED HEREUNDER; (2)
THAT THE USE OF ANY SUCH SERVICES, MATERIALS, OR INFORMATION WILL NOT
INFRINGE PRIVATELY OWNED RIGHTS; (3) THAT THE SERVICES MATERIALS, OR
INFORMATION FURNISHED HEREUNDER WILL NOT RESULT IN INJURY OR DAMAGE
WHEN USED FOR ANY PURPOSE; OR (4) THAT THE SERVICES, MATERIALS, OR
INFORMATION FURNISHED HEREUNDER WILL ACCOMPLISH THE INTENDED RESULTS
OR ARE SAFE FOR ANY PURPOSE, INCLUDING THE INTENDED OR PARTICULAR
PURPOSE. FURTHERMORE, WSRC AND THE DOE HEREBY SPECIFICALLY DISCLAIM
ANY AND ALL WARRANTIES, EXPRESS OR IMPLIED, FOR ANY LICENSED PRODUCTS
MANUFACTURED, USED, OR SOLD BY LICENSEE. NEITHER WSRC NOR THE DOE
SHALL BE LIABLE FOR CONSEQUENTIAL, SPECIAL OR INCIDENTAL DAMAGES IN
ANY EVENT.
11.3 LICENSEE agrees to indemnify WSRC, the DOE, and persons acting on
their behalf for all damages, costs, and expenses, including
attorney's fees, arising from, but not limited to, LICENSEE's making,
using, selling, or exporting of any WSRC Patent Rights, information,
or Licensed Products, in whatever form furnished hereunder.
11.4 LICENSEE agrees to obtain and maintain, at its sole expense,
sufficient liability insurance to protect itself, WSRC, DOE and
parties acting on their behalf against the events enumerated in
Section 11.3 above. At WSRC's request, LICENSEE further agrees to
provide a certificate of insurance in a form acceptable to WSRC in
satisfaction thereof.
12. TERM OF AGREEMENT AND EARLY TERMINATION
---------------------------------------
12.1 Unless otherwise terminated by operation of law or by acts of the
Parties in accordance with the terms of this Agreement, this Agreement
shall be effective as of the date of execution by the last signing
Party and shall remain in effect for the longer of 17 years or
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the life of any issued patent(s) or upon the extinguishment, including
the appeal thereof, of all WSRC Patent Rights, whichever occurs first.
12.2 Either Party shall have the right to terminate this Agreement without
judicial resolution after a breach of any provision by the other Party
has gone uncorrected for sixty (60) days after the other Party has
been notified in writing of such breach.
12.3 LICENSEE shall provide notice to WSRC of its intention to file a
voluntary petition in bankruptcy or of another party's intention to
file an involuntary petition in bankruptcy for LICENSEE, said notice
to be received by WSRC at least thirty (30) days prior to filing such
a petition. LICENSEE's failure to provide such notice to WSRC of such
intentions shall be deemed a material and incurable breach of this
Agreement.
12.4 LICENSEE agrees that this Agreement shall automatically terminate upon
any attempt by LICENSEE to offer LICENSEE's rights under this
Agreement as collateral to a third party.
12.5 LICENSEE, if not then in breach of any portion of this Agreement, may
voluntarily terminate this Agreement upon giving sixty (60) days
written notice to WSRC and upon timely reporting/payment to WSRC of
any and all earned royalties due, including those royalties accruing
during the notice period, or the pro rata portion of any annual
minimum royalties due in the year of such termination, whichever is
greater.
13. RIGHTS OF PARTIES AFTER TERMINATION
-----------------------------------
13.1 Neither Party shall be relieved of any obligation or liability under
this Agreement arising from any act or omission committed prior to the
effective date of such termination.
13.2 From and after any termination of this Agreement, LICENSEE shall have
the right to sell any Licensed Products that LICENSEE had already
manufactured prior to termination, provided that all royalties and
reports required herein above shall be timely submitted to WSRC.
13.3 From and after any termination of this Agreement, LICENSEE shall not
manufacture nor have manufactured any Licensed Products pursuant to
this Agreement.
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13.4 The rights and remedies granted herein, and any other rights or
remedies which the Parties may have, either at law or in equity, are
cumulative and not exclusive of others. On any termination, LICENSEE
shall duly account to WSRC and transfer to it all rights to which WSRC
may be entitled under this Agreement.
14. USE OF NAMES AND TRADEMARKS;
----------------------------
NONDISCLOSURE AGREEMENT
14.1 Except as provided for under this Agreement or as permitted by the
express written consent of the affected Party, the use of the name of
either Party or the Government, the U.S. Department of Energy, or the
Savannah River Site or abbreviations or contractions thereof in
advertising, publicity or other promotional activities is strictly
prohibited.
14.2 Either Party may disclose the existence of this Agreement, the
Parties, the technology licensed, and the nature of the grant. Neither
Party may disclose to third parties those portions of this Agreement
which have been identified by either Party as being proprietary by
written notice given within thirty (30) days of the effective date of
this Agreement, except those portions WSRC may be required to release
under applicable law.
15. FORCE MAJEURE
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15.1 No failure or omission by WSRC or by LICENSEE in the performance of
any obligation under this Agreement shall be deemed a breach of this
Agreement or create any liability if the same shall arise from acts of
God, acts or omissions of any government or agency thereof, compliance
with requests, recommendations, rules, regulations, or orders of any
governmental authority or any office, department, agency, or
instrumentality thereof, fire, storm, flood, earthquake, accident,
acts of the public enemy, war, rebellion, insurrection, riot,
sabotage, invasion, quarantine, restriction, transportation embargoes,
or failures or delays in transportation.
16. ASSIGNABILITY
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16.1.1 The Government may assign WSRC's interest in this Agreement to a
successor Contractor for the Savannah River Site without the consent
of LICENSEE.
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16.2 This Agreement may be assigned by LICENSEE to a third party only in
conjunction with the sale or transfer of substantially all of
LICENSEE's assets, and only with the written consent of WSRC, which
shall not be unreasonably withheld.
16.3 This Agreement may also be assigned by LICENSEE to Sequiam Corporation
of Orlando, Florida within thirty (30) days of execution of this
Agreement.
17. NON-ABATEMENT OF ROYALTIES
--------------------------
17.1 WSRC and LICENSEE acknowledge that certain of the WSRC Patent Rights
may expire prior to the conclusion of the term of this Agreement;
however, WSRC and LICENSEE agree that the royalty rates provided for
herein shall be uniform and undiminished, except as otherwise provided
pursuant to this Agreement.
18. NOTICES
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18.1 All notices and reports shall be addressed to the Parties hereto as
follows:
If to WSRC:
Attention: ▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
Westinghouse Savannah River Company LLC
Savannah River Site, ▇▇▇▇. ▇▇▇-▇▇▇
▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Telephone (▇▇▇) ▇▇▇-▇▇▇▇ Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
If to LICENSEE:
Fingerprint Detection Technologies, Inc. (FDTI)
▇▇▇ ▇. ▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇
▇▇▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇
ATTENTION: ▇▇▇ ▇▇▇▇▇▇
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇ Telephone: (▇▇▇) ▇▇▇-▇▇▇▇
18.2 All payments due WSRC shall be sent to:
Westinghouse Savannah River Company
Attention: Accounts Receivable
▇.▇. ▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇
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18.3 Any notice, report or any other communication required or permitted to
be given by one Party to the other Party by this Agreement shall be in
writing and either (a) served personally on the other Party, (b) sent
by express, registered or certified first-class mail, postage prepaid,
addressed to the other Party at its address as indicated above, or to
such other address as the addressee shall have previously furnished to
the other Party by proper notice, (c) delivered by commercial courier
to the other Party, or (d) sent by facsimile to the other Party at its
facsimile number indicated above or to such other facsimile number as
the Party shall have previously furnished to the other Party by proper
notice, with machine confirmation of transmission.
19. DISPUTE RESOLUTION
------------------
19.1.1 The Parties shall attempt to settle any claim or controversy arising
from this License Agreement through consultation and negotiations in
good faith and a spirit of mutual cooperation. If those attempts fail,
then the dispute will be mediated by a mutually acceptable mediator
chosen by the Parties within 30 days after written notice by one Party
demanding mediation. Neither Party may unreasonably withhold consent
to the selection of a mediator, and the Parties will share the costs
of the mediation equally. If the dispute cannot be resolved by
negotiation or mediation, the matter will be referred to the cognizant
DOE Contracting Officer for WSRC's prime contract, who will render a
final decision within sixty (60) days. The decision will be final and
binding upon the Parties.
19.2 It is the policy of WSRC that all employees, in the performance of
their responsibilities, shall adhere to the highest possible standards
of ethical and business conduct. WSRC has established an Ombudsman in
the WSRC Ethics Office. The Ombudsman is responsible for helping to
resolve LICENSEE complaints, disputes, or inquiries, arising under
this Agreement when such concerns have not been resolved by
responsible WSRC officials. The Ombudsman may be contacted by phone at
(▇▇▇) ▇▇▇-▇▇▇▇. The Ombudsman will investigate the complaint or
inquiry and provide the caller with a response. The caller may remain
anonymous, if he or she chooses.
20. GOVERNING LAW
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20.1 United States Federal Law shall govern this License Agreement to the
extent that there is such law. To the extent that there is no
applicable United States Federal Law, the law of the State of South
Carolina shall govern.
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21. WAIVERS
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21.1 The failure of WSRC at any time to enforce any provisions of this
Agreement or to exercise any right or remedy shall not be construed to
be a waiver or such provisions or of such rights or remedy or the
right of WSRC thereafter to enforce each and every provision, right or
remedy.
22. MODIFICATIONS
-------------
22.1 It is expressly understood and agreed by the Parties hereto that this
instrument contains the entire agreement between the Parties with
respect to the subject matter hereof and that all prior
representations, warranties, or agreements relating hereto have been
merged into this document and are thus superseded in totality by this
Agreement. This Agreement may be amended or modified only by a written
instrument signed by the duly authorized representatives of both of
the Parties.
23. HEADINGS
--------
23.1 The headings for the sections set forth in this Agreement are strictly
for the convenience of the Parties hereto and shall not be used in any
way to restrict the meaning or interpretation of the substantive
language of this Agreement.
IN WITNESS WHEREOF, the Parties hereto have caused this Agreement to be duly
executed in their respective names by their duly authorized representatives.
FINGERPRINT DETECTION WESTINGHOUSE SAVANNAH
TECHNOLOGIES, INC. (FDTI) RIVER COMPANY LLC
By: By:
---------------------------- ----------------------------
(Signature) (Signature)
Name: ▇▇▇ ▇▇▇▇▇▇ Name:
-------------------------- --------------------------
Title: President Title:
------------------------- -------------------------
Date: Date:
-------------------------- --------------------------
14/16
APPENDIX A
WSRC PATENT RIGHTS
Related to WSRC License Agreement No. LA-03-002
The component parts of this Appendix A are as follows:
WSRC Patent Application No. 09/578,662, filed with the U.S. Patent and Trademark
Office on May 25, 2000 for a LED Intense Headband Light Source for Fingerprint
Analysis and based on:
- WSRC Invention Disclosure No. SRS-99-053 entitled "LED Intense Headband
Light Source for Fingerprint Analysis" by ▇▇▇▇▇ ▇▇▇▇▇-▇▇▇▇▇▇ dated 4/26/99.
- DOE Letter, ▇.▇. ▇▇▇▇▇▇ to M.B. ▇▇▇▇▇▇ dated July 26, 1999, accepting
WSRC's request of July 6, 1999 to retain title to the LED Intense Headband
Light Source for Fingerprint Analysis technology.
ACCEPTANCE OF APPENDIX A:
FINGERPRINT DETECTION WESTINGHOUSE SAVANNAH
TECHNOLOGIES, INC. (FDTI) RIVER COMPANY LLC
By: By:
---------------------------- ----------------------------
(Signature) (Signature)
Date: Date:
-------------------------- --------------------------
App. ▇-▇/▇
▇▇▇▇▇▇▇▇ ▇
DEVELOPMENT AND COMMERCIALIZATION PLAN
--------------------------------------
Related to WSRC License Agreement No. LA-03-002
B.1 LICENSEE agrees to invest in the development of technology and market
for Licensed Products by committing LICENSEE's commercially reasonable
efforts and resources, to work towards achieving the following
requirements:
- Prepare and deliver a commercialization business plan within sixty
(60) days.
- Issue a press release within 3 days of the license and transfer to
Sequiam as required by public companies
- Product ready for market by end of first quarter 2004
- Establish a website presence by end of first quarter 2004
- New product announcement by end of first quarter 2004
- Promote product at 4-5 law enforcement exhibitions, trade shows or
conferences per year
- Sell 1500-3000 units by the end of 2004
- Utilize our current relationship with the National Sheriff's
Association and their auxiliary members. Product will be a natural
extension into this market
- Introduce product to current national and international network of law
enforcement product distributors of Sequiam products and their
end-users upon roll out of product.
B.2 Progress and substantiation of LICENSEE meeting these requirements shall be
provided to WSRC in the form of a written report due on the first
anniversary and each anniversary thereafter of the effective date thereof.
The report shall include, but not be limited to, progress on research and
development, regulatory approvals, if any, status of performance
milestones, manufacturing issues, and marketing and sales figures for the
most recently completed year and projections for the next year. At WSRC's
option, LICENSEE further agrees to present the report at a meeting of the
Parties to be held at mutually convenient time and place. In the event that
LICENSEE fails to perform in accordance with Paragraph B.1 of this Appendix
B and is unable or unwilling to cure within thirty (30) days any
deficiencies found to WSRC's satisfaction, WSRC shall have the right and
option to convert this exclusive license to a partially exclusive or
nonexclusive license as provided in Section 4 "Due Diligence" of this
Agreement.
App. B-2/2
N O T I C E
-----------
This Appendix contains financial and commercial information that is BUSINESS
CONFIDENTIAL and the Parties hereby agree not to use or disclose this Appendix
to any third Party without the advance written approval of the other Party
hereto, except to those necessary to enable the Parties to perform under this
Agreement or as may be required by the WSRC contract with the DOE under the same
restrictions as set forth herein.
ACCEPTANCE OF APPENDIX B:
FINGERPRINT DETECTION WESTINGHOUSE SAVANNAH
TECHNOLOGIES, INC. (FDTI) RIVER COMPANY LLC
By: By:
---------------------------- ----------------------------
(Signature) (Signature)
Date: Date:
-------------------------- --------------------------
App. B-2/2
APPENDIX C
ISSUE FEE, EARNED ROYALTIES AND
MINIMUM ANNUAL ROYALTIES
Related to WSRC License Agreement No. LA-03-002
C.1 In consideration of the rights and licenses granted herein, LICENSEE agrees
to pay WSRC a License Issue Fee in the amount of twenty thousand U.S.
Dollars ($20,000) within thirty (30) days following final execution of this
Agreement. The License Issue Fee is non-refundable and is not an advance
against royalties. Should LICENSEE fail to make License Issue Fee payment
to WSRC within thirty (30) days, this agreement shall be null and void.
C.2 LICENSEE further agrees to pay to WSRC an earned running royalty of four
and one half percent (4.5%)of Net Sales of Licensed Products made,
practiced, sold, leased or transferred by LICENSEE during the life of this
Agreement.
C.3 LICENSEE also agrees to pay WSRC a Minimum Annual Royalty for the life of
any license granted under this License Agreement, as set forth in the
following schedule:
Period Minimum Annual Royalty(*)
------ -------------------------
Year 1 $0
Year 2 $5,000
Year 3 $6,000
Year 4 plus each year $7,200
thereafter until the
end of the patent life.
(*) This Minimum Annual Royalty shall be paid even if earned royalties are
less than the minimum required. Specifically, in the event that the earned
royalties under Paragraph C.2 of this Appendix C do not equal the Minimum
Annual Royalty amount, as set forth in this Paragraph C.3, then LICENSEE
shall pay the actual earned royalties due plus the difference between such
earned royalties (Paragraph C.2) and this Minimum Annual Royalty amount.
Such differential amount (if any) shall be due and payable no later than
November 30 of each year. No Minimum Annual Royalties shall be due for the
first 12 months after
32
consummating the Licensing Agreement. Running royalties earned during any
twelve-month period subject to Minimum Royalty Payments are fully
creditable against the minimum due in that period.
C.4 If LICENSEE sublicenses third parties to practice and have practiced
Licensed Product pursuant to Section 3 of this Agreement, LICENSEE further
agrees to pay WSRC fifty percent (50%) of any and all consideration
received from such Sublicensees and Sub-sublicensees
N O T I C E
-----------
This Appendix contains financial and commercial information that is BUSINESS
CONFIDENTIAL and the Parties hereby agree not to use or disclose this Appendix
to any third Party without the advance written approval of the other Party
hereto, except to those necessary to enable the Parties to perform under this
Agreement or as may be required by the WSRC contract with the DOE under the same
restrictions as set forth herein.
ACCEPTANCE OF APPENDIX C:
FINGERPRINT DETECTION WESTINGHOUSE SAVANNAH
TECHNOLOGIES, INC. (FDTI) RIVER COMPANY LLC
By: By:
---------------------------- ----------------------------
(Signature) (Signature)
Date: Date:
-------------------------- --------------------------
33