TECHNOLOGY LICENSE AGREEMENT (SUNSPRING DISH)
TECHNOLOGY LICENSE AGREEMENT
(SUNSPRING DISH)
THIS AGREEMENT made the 26th day of November, 2001.
BETWEEN:
▇▇▇▇ ▇▇▇▇▇▇, an individual having an address at ▇▇▇ ▇▇ ▇▇▇▇▇ ▇▇., ▇▇▇ ▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
(the "Licensor")
AND:
Sunspring Inc. (SUNS), a Nevada corporation whose address is ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇ ▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
(the "Licensee")
WHEREAS:
1. RECITALS
1.1 Licensor is the owner of certain technology, including a solar dish used to produce desalinated water using solar energy (herein referred to as the "Sunspring Dish Technology"), and further particularized in Schedule "A".
2. DEFINITIONS
As used in this Agreement the following terms shall, unless the context otherwise requires, have the following meanings:
2.1 "Confidential Information" means any information relating to or disclosed in the course of this Agreement which is or should be reasonably understood to be confidential or proprietary. "Confidential Information" does not include information: 1) already lawfully known to the receiving party, 2) disclosed in published materials, 3) generally known to the public, or 4) lawfully obtained from any third party.
2.2 "Field" means the production of desalinated water, and the use of solar energy.
2.3 "Licensed Product" means any product or device which incorporates a feature or element of the Licensed Technology.
2.4 "Commencement Date" means the date on the first page of this Agreement.
2.5 "Term" means the period from the Commencement Date to the earlier of (a) twenty five years from the Commencement Date, or (b) the date this Agreement is terminated pursuant to Article 7 of this Agreement.
2.6 "Licensed Technology" means the following:
(a) the Sunspring Dish Technology;
(b) Any improvements, enhancements, and additions to any of the Sunspring Dish Technology and modifications and derivations thereto, conceived or reduced to practice by Licensor either before or during the Term; and
(c) Licensor's proprietary techniques and knowledge directly related to the Sunspring Dish Technology known by Licensor either before or during the Term; but
(d) excluding the MECH technology included therein.
2.7 "Gross Receipts" means gross receipts from sales or leases of Licensed Products, including spare parts, components and sub-assemblies thereof, after deducting actual allowances for returned or defective goods, less trade discounts, but before cash discounts and sale of potable water.
3. LICENSES
3.1 Grant of Licensed Technology. Licensor grants to Licensee during the Term the exclusive right and license in the Field throughout the world, to use the Licensed Technology and to manufacture, have manufactured, use, market, have marketed, sell and have sold Licensed Products. Licensor further grants Licensee during the Term the nonexclusive right and license throughout the world, to use the Licensed Technology outside the Field.
3.2 Sublicenses. The rights in Licensed Technology granted by Licensor to Licensee include the right to grant sublicenses, subject to the prior written consent of Licensor, on such terms as may be approved by Licensor and Licensee.
3.3 Modifications and Improvements. Licensor will disclose to Licensee, as soon as reasonably practicable, all modifications, improvements and enhancements to the Licensed Technology.
3.4 Assignment. The licenses granted herein may be assigned in whole or in part by Licensee.
3.5 Exploitation of Licensed Rights. Licensee will use reasonable efforts to exploit the rights granted by this Agreement, with a view to generating royalties for Licensor.
4. REPRESENTATIONS
4.1 Representations by Licensor. Licensor represents that the following representations are true now and will be true with respect to the Licensed Technology.
(a) To the best of his knowledge, Licensor owns the exclusive right, free and clear of all liens, claims and restrictions of third parties, to use the Licensed Technology without infringing upon or otherwise acting adversely to any right or claimed right of others and to bring actions for the infringement of the Licensed Technology.
(b) To the best knowledge of Licensor, there is no pending or threatened claim or litigation against Licensor contesting Licensor's right to the Licensed Technology, nor does there exist any basis for such claim or litigation, nor has Licensor received any notice that any right of Licensor to the Licensed Technology conflicts with the asserted rights to others.
(c) All previously executed license agreements relating to the Licensed Technology have been terminated and are of no force and effect.
5. CONFIDENTIALITY
5.1 Confidentiality.
(a) During and after the term of this Agreement, each party will keep confidential and not disclose to employees, vendors, customers or others all Confidential Information disclosed to it by the other party under this Agreement except that, on a need to know basis, Licensee may disclose Confidential Information to employees, subcontractors, customers or others who have executed confidentiality agreements obligating them to Licensee at least to the same extent that Licensee is obligated to Licensor under this Article.
(b) Licensee will obtain from all prospective sublicensees confidentiality agreements covering information disclosed to them by Licensee. The agreements shall obligate the sublicensees to Licensee with respect to Confidential Information at least to the same extent the Licensee is obligated to Licensor under this Article.
6. ROYALTIES
6.1 Licensed Technology. For the grant of Licensed Technology, Licensee will pay Licensor (i) a royalty equal to 1% of Gross Receipts from the sale or lease of Licensed Products by Licensee or anyone controlling or controlled by Licensee.
6.2 Form of Lease and Sale. Royalties payable under this Article will be paid for each Licensed Product that is leased or sold by or for Licensee or its sublicensees, regardless of whether the Licensed Product is sold or leased alone or incorporated into subassemblies or finished products.
6.3 Accounting Period. The accounting of royalties under this Article will be on the basis of one year periods ending on the anniversary of the Commencement Date, beginning with the one year period ending on the first anniversary of the Commencement Date. Each such one year period is called in this Agreement a "Royalty Period".
6.4 Statements and Payments to Licensor. Within 15 days following the end of each Royalty Period, Licensee will furnish Licensor with a written statement certified by Licensee, of the royalties due to Licensor hereunder for such Royalty Period, setting forth the computation of the royalties. The statement will also include information reasonably necessary to facilitate verification of the royalty calculation and the identification of Licensed Products for which royalties are due. Payment by Licensee will accompany each such statement.
6.5 Books of Account; Examination. Licensee will at all times keep complete, true and correct books of account containing a current record of leases, sales, sublicense royalties, and other data in sufficient detail to enable the royalties payable under this Agreement to be computed and verified. Subject to reasonable confidentiality restrictions and undertakings, Licensee will permit Licensor, Licensor's duly authorized agent, or an independent certified public accountant appointed by Licensor to have access for inspection and make copies of pertinent books of account at reasonable times during business hours.
6.6 Currency. All royalties due hereunder will be paid in United States Dollars. All royalties for a Royalty Period computed in other currency will be converted into United States Dollars at the buying rate for the transfer of such other currencies to United States Dollars on the date of payment, as quoted by The Chase Manhattan Bank, N.A., or another reputable international bank.
6.7 Taxes. In the event any national government imposes any taxes on any part of the payments by Licensee to Licensor required hereunder and requests Licensee to withhold taxes from such payment, Licensee may deduct such taxes from such payments. Tax receipts indicating payments or withholding of taxes on behalf of Licensor will be promptly submitted to Licensor. Licensee will cooperate with Licensor in a determination of the property of imposition of any such tax.
6.8 Exchange Restriction. In the event any national government imposes any exchange restriction applying to payments required under this Agreement, an account in the name of Licensor will be established in a financial institution of Licensor's choice in the country of such national government, and all monies due Licensor will be paid into such account, or, at Licensor's election, payment will be made to any account designated by Licensor that complies with such restriction.
7. TERM OF GRANTS AND TERMINATION
7.1 Termination of Agreement. This Agreement and the license granted pursuant to this Agreement will terminate upon the earliest to occur of the following events:
(a) Written notice by either party to the other party that the other party has committed a substantial breach of this Agreement, specifying such breach, if such breach is not cured within the 90 day period following receipt of such notice;
(b) Cessation of Licensee doing business with the Licensed Technology;
(c) The commencement of proceedings by or against Licensee under the Bankruptcy Code or state insolvency laws; or
(d) The expiry of the Term.
7.2 License Following Termination. Following any termination of this Agreement other than as a result of breach by either party, Licensee, at its option, will be entitled to a license limited to: (i) all Licensed Products then on hand (whether in the possession of Licensee or its sublicensees, assignees, agents or distributors), (ii) all Licensed Products that Licensee (or such sublicensees, assignees, agents or distributors) can manufacture with materials then on hand that were specifically purchased for the purpose of manufacturing Licensed Products, and (iii) Licensed Products need to fill bona fide orders placed prior to the date of termination.
7.3 Royalty Payments. Licensee's obligation to pay royalties hereunder through the date of any termination of this Agreement will survive termination of this Agreement, and all such royalties will be due and payable within 30 days following such termination accompanied by the statement described in Article 6. After termination, royalties will continue to accrue hereunder upon the sale, lease, or other disposition of Licensed Products.
8. MARKING
8.1 Affixed to Licensed Products. Licensee will affix (or require any sublicensee or assignee of Licensee to affix) to each Licensed Product or to the package containing such Licensed Product or to an insertion slip in the package with each Licensed Product, a legible notice reading: "Licensed under one or more of the following patents", followed by a list of patent numbers applicable to such Licensed Product.
9. INFRINGEMENT
9.1 Who May ▇▇▇. Upon learning of any infringement or misappropriation by any third party of any claim of any issued patent included within the Licensed Technology, either party will promptly notify the other party in writing of such infringement or misappropriation, giving details thereof. Licensor and Licensee both will have the option, either alone or jointly, to take such measures as may be required to terminate any infringement or misappropriation. When either party brings an infringement or misappropriation action, the other party may join as plaintiff and, whether or not it joins as a plaintiff, will cooperate and assist in the preparation and prosecution of the action.
9.2 Allocation of Expenses and Damages. In the case of mutual agreement on the institution of an infringement or misappropriation action against a third party, Licensee will bear one-half and Licensor will bear one-half of all expenses, unless one party declines to participate financially in the prosecution of such action, in which case the party declining to participate will be excused from bearing its share of such expenses and will be excluded from any share of the damages, fees, costs and penalties recovered. In the case of mutual agreement on the institution of an infringement or misappropriation action, Licensee will receive one-half and Licensor will receive one-half of all damages, fees, costs and penalties recovered that remain after first reimbursing each of them for any amounts expended in prosecuting such infringement or misappropriation action.
9.3 Defense of Licensed Technology. If any judicial, administrative or other action or proceeding is commenced in which any right purported to be granted to Licensee by this Agreement is challenged or is the subject of investigation, or in which the validity of any patent or patent claim that is part of Licensed Technology is challenged, Licensee (or its assignee), at its own expense, will have the obligation to defend against any such action or proceeding, in its own name or in the name of Licensor, or both. Licensor will cooperate fully in such defense. In each Royalty Period, Licensee may apply up to 50% of Royalties due Licensor for Licensed Technology to pay its attorney fees and other expenses of defense.
10. PATENT EXPENSES
10.1 During the Grant of Licensed Technology:
(a) Licensee may renew and maintain and pay all costs of renewing and maintaining patents included in Licensed Technology.
(b) Licensee will have the right to cause Licensor to apply in Licensor's name for all United States and non-United States patents which Licensee, in its reasonable discretion after consultation with Licensor, determines are necessary to exploit the rights and licenses granted hereunder. The legal expense to Licensor of applying for such patents will be paid by Licensee to Licensor.
11. NOTICES
11.1 Notices. All notices or other communications required by this Agreement will be in writing and will be hand delivered or sent by certified mail, and will be regarded as properly given if sent to the parties or their representatives at the addresses located below:
If to Licensee:
Sunspring Inc. (SUNS)
▇▇▇ ▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇ ▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇
If to Licensor:
▇▇▇▇ ▇. ▇▇▇▇▇▇
▇▇▇ ▇▇▇▇▇▇▇▇
▇▇▇ ▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇
From time to time during the term of this Agreement, the parties may, at their discretion, designate other representatives, addresses or addressees.
12. EXPORT COMPLIANCE
12.1 Compliance With Law. At all times during the License Term, Licensee and Licensor will comply in all respects with the Export Administration Act of 1979, 50 U.S.C. paragraph 2401, et seq., the Arms Export Control Act, both as from time to time amended, with regulations promulgated under either, and with administrative acts pursuant to either, and with other applicable statutes and regulations of the United States
13. BINDING EFFECT
13.1 Writing Required. This Agreement constitutes the complete agreement of the parties and cannot be modified except in writing signed by the parties. This Agreement shall bind, and inure to the benefit of, each of the parties and their personal representation, successors in interest and any approved assigns of Licensee. This Agreement and all amendments hereto shall be governed by and construed and enforced in accordance with the laws of the State of New Mexico, except that questions affecting the construction and effect of any patent shall be determined by the law of the country in which the patent was granted.
14. SURVIVAL
14.1 Survival. The provisions set forth in Articles 4, 5, 7, 8 and 12 through 16 will survive the termination of any license granted hereunder and survive the termination of this Agreement.
15. COUNTERPARTS
15.1 Counterparts. This Agreement may be executed by facsimile and in several counterparts, each of which shall be deemed to be an original and all of which shall together constitute one and the same instrument.
16. ARBITRATION
16.1 Agreement to Arbitrate. All disputes between Licensee and Licensor arising under this Agreement shall be resolved by binding arbitration in Albuquerque, New Mexico, pursuant to the Commercial Arbitration Rules of the American Arbitration Association and the then current New Mexico Uniform Arbitration Act, and judgment upon the award may be entered in any court having jurisdiction.
DATED: 26 NOV 2001
LICENSOR:
/s/ ▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇ ▇. ▇▇▇▇▇▇
LICENSEE:
SUNSPRING INC. (SUNS),
a Nevada Corporation
By /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
Its President
SCHEDULE "A"
Crisp Design for a SUNSPRING dish.
[graphic omitted]
I have been struggling for a good solid design for SUNSPRING that would allow us to have something unique, and reliable to sell in a very short time. Here is my design. It should produce 20,000 gallons of sweet water a day on a minimum footprint of land. As a matter of fact, 1000 of these dishes will supply the San Diego project and require only about 75 acres. The system comprises a dish, a steam boiler on the boom, a steam turbine, a gear box, a double Mech that will utilize the power from the turbine and the pressure recovery (also a Mech) to pressurize the sea water to produce 20,000 gallons of sweet water a day. All of this can be ordered from proven vendors except for the Mech. The cost of a first copy of the system and a copy at high production rate is shown in the Table I.
Table I
|
Component |
First Copy Cost $ Thousand |
Nth copy Cost in Thousands |
|
Solar Dish |
100 |
24 |
|
Boiler |
5 |
1 |
|
Steam turbine ( 30 kW) |
25 |
2 |
|
Gear Box |
5 |
.5 |
|
Double Wet Mech |
40 |
1.5 |
|
RO Stuff |
15 |
5 |
|
Seawater Pump and Misc |
5 |
1 |
|
Totals |
195 |
30.5 |
The only question with this is the adaptation of Mech to this water pumping mission. Everything else is proven hardened and durable. We need to get on with proving Mech for this a soon as possible. Based on a capital cost recovery of 10 % year, the cost of water from this system should be 50 cents per thousand gallons plus a little for labor, nothing for fuel. This is very near our goal and has the uncertainty localized to a single mechanical component.