Exhibit 10.4
TECHNOLOGY LICENSE AGREEMENT
THIS TECHNOLOGY LICENSE AGREEMENT ("AGREEMENT") is made this 20th day of March,
2002 by and between MEGAWATT ENERGY CORPORATION, a California corporation,
having principal mailing address at ▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇, ▇▇▇
▇▇▇▇▇, ▇▇ ▇▇▇▇▇ ("LICENSOR") and NEW ENERGY CORPORATION, a Utah corporation,
having principal offices at ▇▇▇▇ ▇▇ ▇▇▇▇▇ ▇▇▇▇., ▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇
("LICENSEE"). LICENSOR and LICENSEE hereinafter individually "PARTY" or
collectively "PARTIES."
RECITALS
WHEREAS, LICENSOR is licensed by owner by assignment and otherwise to certain
proprietary intellectual property claims (filed or currently being filed under
U.S. International and Pan-American Intellectual Property Conventions) and
possesses the technology, proprietary methods and resources to manufacture High
Concentration Photovoltaic Solar Generators ("HCPV") capable of delivering
electric and thermal energy to residential, commercial, industrial and utility
scale end-users; and,
WHEREAS, LICENSEE desires to license under said proprietary intellectual
property rights, proprietary technology and methods and possesses component
parts inventories for the manufacture of HCPV Solar Generators, resources to
market HCPV Solar Generators and a unique financing method to access funding of
customer orders.
NOW THEREFORE, in consideration of the mutual covenants and promises herein
contained, the PARTIES agree as follows:
AGREEMENT
1. DEFINITIONS: as used herein, the term:
1.1 "Proprietary Technology" shall mean a multi-purpose dual-axis tracking
system to allow the Solar Generator HCPV collectors to follow the sun
whereby the sun's rays are maintained at a perpendicular angle to the
collectors in order to maximize efficiency.
1.2 "Proprietary Methods" shall mean the planning, design, construction
and installation of HCPV Solar Generators utilizing the methods and
experience of LICENSOR.
1.3 "Proprietary Intellectual Property Rights" and "Licensor Rights" shall
mean Copyrights, Tradenames, Trademarks and potential Patent Pending
claims supporting the proprietary ownership position in certain unique
intellectual property and proprietary methods associated with the HCPV
Solar Generators as may or may not be granted by U.S. Patent Office
and under International and Pan-American Intellectual Property
Conventions that MEC has with owner.
1.4 "Licensor Rights" shall mean all letters patent and patent
applications, current or contemplated, claiming priority from or based
on "Licensor Proprietary Intellectual Property Rights" and all
unregistered proprietary methods employed in the manufacturing of HCPV
Solar Generators.
1.5 "HCPV Solar Generators" shall mean High Concentration Photovoltaic
Dual-Axis Tracking Solar Electro-Thermal Generators.
1.6 "Designated Territories" shall mean Worldwide. The ability to market
NECO HCPV Solar Generators for sale or to sell energy produced
therefrom anywhere in the world.
1.8 "Customers" shall mean either purchasers of NECO HCPV Solar Generators
or entities that purchase energy from LICENSEE under NECO Energy
Purchase Agreement(s).
2. GRANT OF LICENSE
2.1 Upon terms and conditions set forth herein, LICENSOR hereby grants to
LICENSEE a license for the Designated Territory for a proprietary NECO
HCPV Solar Generator product line for designated commercial and
residential applications, under the claims of LICENSOR Patent Rights
MEGAWATT / NECO TECHNOLOGY LICENSE AGREEMENT Page 1 of 6
and employing LICENSOR proprietary methods to use the NECO HCPV Solar
Generators in conjunction with any energy facilitator program that
LICENSEE desires.
2.2 The NECO HCPV Solar Generator product line shall be agreed upon by the
PARTIES regarding the size(s), model(s) and rated output(s) of the
electric and thermal energy generated. These models shall comprise
LICENSEE's unique and proprietary NECO Solar Generator products.
2.3 LICENSOR
2.3.1 shall not sell or manufacture HCPV Solar Generators to other
parties that use the same model, size or energy output of
LICENSEE's product line.
2.3.2 can design, sell and manufacture other HCPV product lines
utilizing different sizes or outputs as long as these
product lines do not copy the NECO size, models or output.
3. NON EXCLUSIVE AGREEMENT
3.1 This AGREEMENT is for the license and use of Proprietary Technology
and is not to be construed as to any other relation between the
PARTIES such as a joint venture, common enterprise, partnership,
common entity or the transfer of any rights, title and interest in the
Proprietary Technology.
3.2 This AGREEMENT is for the sale and factory financing of LICENSORS HCPV
Solar Generators. The design models are proprietary to LICENSEE as
granted by LICENSOR and other than price discounts of HCPV Solar
Generators and the five (5) year warranty, no other relationship
exists between the parties.
3.3 LICENSEE recognizes that LICENSOR may in the future become active in
other gainful endeavors and acknowledges and agrees that LICENSOR is
not expected nor require its full time or attention to the duties
hereunder.
3.4 LICENSEE understands by this AGREEMENT, LICENSOR is not transferring
any rights, title or interests other than provided herein to LICENSEE.
3.5 LICENSOR retains the sole right to enter into HCPV Solar Generator
sales or license agreements for its Proprietary Technology and designs
with other private or public parties, including agencies of Federal,
State and/or City governments, institutions.
3.6 LICENSOR retains the right to promote or conduct direct sales for
other models or product lines utilizing LICENSOR's HCPV technology.
4. SALES TERMS
4.1 LICENSEE agrees to promptly pay LICENSOR sixty percent (60%) of the
LICENSOR's standard retail sales price upon the placement of an order
for a NECO HCPV Solar Generator.
4.2 LICENSOR
4.2.1 agrees to extend financing terms for the balance of forty
percent (40%) of the LICENSOR's standard retail sales price.
The financing is to be in the form of a long-term note
payable by LICENSEE to LICENSOR.
4.2.2 agrees to provide to LICENSEE a thirty percent (30%)
discount of the LICENSOR's standard retail sales price.
LICENSOR shall provide a retail price schedule on all HCPV
Solar Generators to NECO.
4.3 In the event LICENSOR utilizes any of the component parts from the
LICENSEE's inventory, LICENSOR agrees to reimburse LICENSEE based on
appraised value of inventory.
5. ADDITIONAL TERMS
5.1 OBLIGATIONS OF LICENSOR: LICENSOR
5.1.1 is responsible for the manufacturing of any and all NECO
HCPV Solar Generators purchased by LICENSEE. LICENSOR
warranties all materials, labor and performance of NECO HCPV
Solar Generators for a period of five (5) years. 5.1.2
agrees to provide technical and engineering support to
LICENSEE as required.
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5.2 OBLIGATIONS OF LICENSEE: LICENSEE
5.2.1 is responsible for the installation and maintenance of all
NECO HCPV Solar Generators purchased.
5.2.2 is also responsible for the extended warranty of all
materials, labor and performance of NECO HCPV Solar
Generators subsequent to the five (5) year warranty period.
5.3 Customers which have had no prior contact with LICENSOR or its
affiliates must be registered by LICENSEE with and approved by
LICENSOR in writing (via Email). Subject to receiving the Customer
information and after confirmation by LICENSOR, LICENSEE shall be
granted a twenty four (24) month exclusive time period to complete the
transaction with Customer. After the end of this period, exclusivity
ends.
6. NON DISCLOSURE, CONFIDENTIALITY AND NON COMPETITION
6.1 LICENSOR is disclosing certain information believed to be proprietary
relating to its HCPV Solar Generators and in particular relating to
the Rankine Cycle turbine generator system. Such information is fully
confidential and should not be disclosed through presentation,
commerce, research or in any other way without subsequent written
agreement or written approval by LICENSOR.
6.2 LICENSOR has the right to disclose this information and any written
matter and LICENSEE agrees said information will be preserved in
complete confidence and promptly returned to LICENSOR upon request.
6.3 LICENSEE covenants they will not compete with or cause anyone else to
compete with LICENSOR or its designees in respect to the substance of
this information.
6.4 The PARTIES of this AGREEMENT agree that even though this document is
confidential between the PARTIES, the original or copies of this
document in possession of members of either PARTY may be used in
camera before a court of proper jurisdiction for purposes of securing
an ex-parte order enjoining either PARTY or their directors, officers,
employees, agents or consultants from disclosing or continuing to
disclose any of the names of principals and/or the business of either
PARTY to anyone, anything or specifically to the media.
6.5 The PARTIES to this AGREEMENT hereby waive the mandatory four hour
notice required by law to seek an injunction against the other PARTY
if either PARTY breaches this Non-Disclosure section of this
AGREEMENT.
6.6 All PARTIES individually and severally agree that if they breach this
portion of this AGREEMENT, the PARTY to have breached this AGREEMENT
shall be severally liable for attorneys fees, court costs, staff time,
and any reasonable damage the other Part may prove in a court of law.
7. DURATION AND TERMINATION
7.1 This AGREEMENT shall continue in full force and effect until December
31, 2025 and be automatically renewable for two successive and equal
terms, at the option of the LICENSEE, provided however, that the
AGREEMENT and Licenses are in good standing, full force and effect.
7.2 If LICENSEE shall at any time default in the payment of any monies due
hereunder, or the rendering any other obligations hereof, and such
default shall not be cured within forty five (45) days after such
written notice by LICENSOR to LICENSEE, this AGREEMENT is void and
shall automatically terminate.
7.3 If default should occur, LICENSOR shall have the right to seek
administrative and legal relief as provided hereunder.
7.4 LICENSOR shall have the right to terminate this AGREEMENT by giving
written notice of termination to LICENSEE in the event of any one of
the following should occur:
7.4.1 Liquidation of LICENSEE.
7.4.2 Insolvency or bankruptcy of LICENSEE, whether voluntary or
involuntary.
7.4.3 Failure of LICENSEE to immediately satisfy any judgment
against it.
7.4.4 Appointment of a trustee or receiver for LICENSEE; or,
7.4.5 Any assignment by LICENSEE for the benefit of creditors.
7.5 The waiver of any default under this AGREEMENT by either PARTY shall
not constitute a waiver of the right to terminate this AGREEMENT for
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any subsequent or like default, and the exercise of the right of
termination shall not have the effect of waiving any damages to which
either PARTY might otherwise be entitled.
7.6 Termination of this AGREEMENT, for any cause whatsoever, shall in no
manner interfere with, affect or prevent the collection by LICENSOR of
any and all sums of money due to it under this AGREEMENT.
8. DISPUTES
The PARTIES understand there are many documents needed to carry out their
objectives as described herein and that they will negotiate in good faith
to resolve any differences of opinion in order to carry out the express
intent of this relationship. In the unlikely event that the PARTIES are not
able (through good-faith negotiation and mediation) to resolve any
differences of opinion or dispute, they agree as follows:
8.1 Any Dispute, controversy or claim arising under, out of or relating to
this AGREEMENT (and subsequent amendments thereof) and its valid
conclusion, binding effect, interpretation, performance, breach or
termination, including tort claims (hereinafter referred to as "the
Dispute") shall be submitted to Mediation in accordance with the Rules
of the American Arbitration Association in force at the time of
initiating the mediation procedure.
8.2 If the Dispute has not been settled pursuant to the Mediation
procedure within 60 days of the initiation of the Mediation, or if
either Party will not participate in the Mediation, the Dispute shall
be referred to and finally determined by arbitration in accordance
with the Rules of Arbitration of the International Chamber of Commerce
in force when initiating the arbitral procedure.
8.3 The arbitral tribunal shall consist of a sole arbitrator. The place of
arbitration shall be San Diego, USA. The language to be used in the
arbitral proceedings shall be English. All disputes, controversies or
claims referred to arbitration including those on any statute of
limitations, set-off claims, tort claims and interest claims shall be
governed by the substantive law of California, U.S.A.
9. INDEMNIFICATION
9.1 LICENSOR agrees to indemnify and hold LICENSEE harmless from and
against any and all liability, damage, expense, claims, or judgments,
including reasonable attorneys' fees, resulting from fiscal loss or
damages resulting from Intellectual Property infringement issues
wherein LICENSEE is named as a defendant from third party law suits
arising out of the development, commercialization, use and
exploitation of the HCPV Solar Generator technology.
9.2 The PARTIES shall mutually hold each harmless against any losses,
claims, damages, fines, expenses or liabilities, joint or several,
including amounts paid in settlement to which either PARTY may become
subject, insofar as such losses, claims, damages, fines, expenses, or
liabilities (or actions in respect thereof) arise out of, or are based
upon any act or failure to act by either PARTY and, directly or
indirectly, relate to the services of either PARTY or its director,
officer, employee, agent or consultant or of any other corporation,
partnership, joint venture, trust or other enterprise which, as the
representative of either PARTY, served as such, serves or will serve
at the request of either PARTY.
9.3 The indemnification provided by this AGREEMENT shall cover any
indemnified party who is or was a party or is threatened to be made a
party to any threatened, pending or contemplated action or
investigation, including to the extent permitted by applicable law an
action by or in the right of Indemnified Party, either PARTY or any of
its subsidiaries, (the "Companies"), and shall apply to the extent
permitted by applicable law despite any judgment, order, settlement,
conviction or plea of nolo contendere or its equivalent and despite
any adjudication of liability, negligence, misconduct or unlawful
conduct, if the Indemnified Party acted in good faith with respect to
the PARTIES and in a manner which the Indemnified Party reasonably
believed to be in or not opposed to the best interest of the PARTIES.
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9.4 Indemnification payments under this AGREEMENT shall be made by either
PARTY promptly as any legal or other expenses are incurred by an
Indemnified Party and, except to the extent required by applicable
law, no further authorization or approval by the Board of Directors or
shareholders of either PARTY or by any court shall be required for
such payment.
9.5 Following receipt by any Indemnified Party of notice of the
commencement of any legal action, the Indemnified Party will notify
the other PARTY of the commencement thereof and the other PARTY shall
be entitled to participate therein to the extent that it may desire,
with counsel satisfactory to the Indemnified Party; provided, however,
that failure to give notice as provided by this paragraph shall not
constitute a waiver of any rights under this AGREEMENT. Whether or not
either PARTY has counsel in any such legal action, any Indemnified
Party shall be entitled to select his own counsel and to be reimbursed
for legal expenses as provided herein.
9.6 The indemnification provided by this AGREEMENT shall not be deemed
exclusive of any other rights to which any Indemnified Party may be
entitled under charter or by-law provisions, agreement, vote of
directors or shareholders or otherwise. The termination or
modification of this AGREEMENT and the termination of services of the
Indemnified Party to the other party and its subsidiaries hereunder
shall not affect the indemnification rights of the Indemnified Party
for any act or failure to act occurring prior to such termination or
modification, without regard to whether legal action was instituted or
threatened after termination.
10. INSOLVENCY OR MERGER
In the event of a bankruptcy, insolvency, change of control or if either
PARTY or its assigns shall at any time be merged or consolidated into or
with any other company or corporation, or if substantially all of the
assets or control of either PARTY are at any time sold or transferred to
any other company or corporation, the provisions of this AGREEMENT shall be
binding upon and inure to the benefit of the company or corporation
resulting from such merger, sale, transfer or consolidation and these
provisions shall apply in the event of any subsequent merger, transfer,
sale or consolidation.
11. FORCE MAJEURE
Neither PARTY shall be deemed to be in default if performance of the
obligations required by this AGREEMENT is delayed or becomes impossible
because of any act of God, war, earthquake, fire, strike, sickness,
accident, civil commotion, epidemic, act of government, its agencies or
officers, or any other legitimate cause beyond the control of LICENSEE or
LICENSOR. Upon occurrences of any such event, or if the PARTIES fail to
perform any or all of the conditions or covenants of this AGREEMENT because
of circumstances beyond the control of the PARTIES and not induced or
brought about by the unreasonable acts of the PARTIES, then the PARTIES, in
addition to any other rights and remedies they may have, may elect, by
giving notice to one another, to extend the term of this AGREEMENT for a
period equivalent to all or any part of the period that any such conditions
shall prevail or that the PARTIES shall be in default. In the event of any
such extension, specific dates, periods and time requirements referred to
herein shall be postponed or extended accordingly.
12. ASSIGNABILITY
12.1 This AGREEMENT shall not be assignable by LICENSEE except with prior
written consent of LICENSOR provided LICENSOR consents to a transfer
to any company owned by LICENSEE. Any attempt to assign shall be void
and, if completed, cause automatic termination of this Agreement.
12.2 In the event LICENSEE wishes to sell any of its rights, LICENSOR shall
have a right of first refusal.
13. RIGHTS OF HEIRS
The rights and benefits of both PARTIES under this AGREEMENT are personal
to them, including persons having an interest therein, and except for the
foregoing, no such right or benefit shall be subject to voluntary or
involuntary alienation, assignment or transfer.
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14. NOTICES
Any notices or other communication related to this AGREEMENT shall be
deemed sufficiently given if sent by facsimile transmission or Email
followed by courier to the PARTY at its address set forth at the beginning
of this AGREEMENT; provided however, that either PARTY may change the
address to which any such notice or communication is to be sent or
delivered by giving the other PARTY written notice of such change.
15. FUTURE AGREEMENTS AND MODIFICATIONS TO THIS AGREEMENT
15.1 The PARTIES agree and understand that a more definitive agreement
shall be created by the PARTIES to fulfill the scope and intent of
this AGREEMENT.
15.2 This AGREEMENT embodies all of the understanding and obligations
between the PARTIES with respect to the subject matter hereof. No
amendment or modification of this AGREEMENT shall be valid or binding
upon the PARTIES unless made in writing, signed on behalf of each of
the PARTIES by their respective proper officers thereunto duly
authorized.
16. PROVISIONS
In the event that one or more of the provisions contained herein shall be
invalid, illegal or unenforceable in any respect, the validity, legality
and enforceability of the remaining provisions contained herein shall not
in any way be affected or impaired thereby, it being the intention of the
PARTIES hereto that indemnification be provided to the Indemnified Party to
the fullest extent allowable under applicable law.
IN WITNESS WHEREOF, the respective duly authorized representatives of the
PARTIES have caused this AGREEMENT to be executed as of the date first above
written in the City of San Diego, County of San Diego, State of California.
MEGAWATT ENERGY CORPORATION NEW ENERGY CORPORATION
(LICENSOR) [NECO Energy Corporation]
(LICENSEE)
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By: ▇▇▇▇▇ ▇▇▇▇▇▇▇▇, President By: ▇▇▇▇ ▇▇▇▇▇▇▇▇, President
WITNESS: WITNESS:
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By: ▇▇▇▇ ▇▇▇▇▇▇▇▇▇, Secretary By: Tor ▇▇▇▇▇, Secretary
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