LICENSE AGREEMENT Between RUTGERS, THE STATE UNIVERSITY OF NEW JERSEY And AXION INTERNATIONAL INC. Dated February 1, 2007
Exhibit
10.1
CONFIDENTIAL TREATMENT REQUESTED1
Between
RUTGERS,
THE STATE UNIVERSITY OF NEW JERSEY
And
AXION
INTERNATIONAL INC.
Dated
February 1, 2007
1 “**” indicates
portions of this document that have been deleted and have been filed separately
with the Securities and Exchange Commission. Confidential treatment
requested with regard to these deleted
portions.
Agreement
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Article
1.
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DEFINITIONS
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1
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Article
2.
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LICENSE
GRANT; SUBLICENSES
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2
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Article
3.
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ROYALTIES
AND PAYMENTS
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3
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Article
4.
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DILIGENCE
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4
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Article
5.
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PROGRESS
AND ROYALTY REPORTS
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4
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Article
6.
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BOOKS
AND RECORDS
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5
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Article
7.
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TERM
AND TERMINATION
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5
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Article
8.
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DISPOSITION
OF LICENSED
PRODUCTS UPON TERMINATION; RETURN OF PROPERTY
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6
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Article
9.
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USE
OF NAMES AND TRADEMARKS
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6
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Article
10.
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DISCLAIMER
OF WARRANTIES; LIMITATIONS OF LIABILITY
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6
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Article
11.
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PATENT
PROSECUTION AND MAINTENANCE
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7
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Article
12.
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-
PATENT MARKING
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7
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Article
13.
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THIRD
PARTY PATENT INFRINGEMENT
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8
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Article
14.
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INDEMNIFICATION;
INSURANCE
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9
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Article
15.
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NOTICES
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10
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Article
16.
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ASSIGNMENT
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10
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Article
17.
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GOVERNING
LAW; VENUE
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10
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Article
18.
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EXPORT
CONTROL; GOVERNMENT REGULATION
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10
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Article
19.
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CONFIDENTIALITY
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11
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Article
20.
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MISCELLANEOUS
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11
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EXCLUSIVE
LICENSE AGREEMENT
THIS
AGREEMENT (the “Agreement”) is made and is effective as of the 1st day of
February, 2007, (the “Effective Date”) by and between RUTGERS, THE STATE
UNIVERSITY OF NEW JERSEY, having its statewide Office of Corporate Liaison and
Technology Transfer at ASB Annex III, ▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇
▇▇▇▇▇-▇▇▇▇, (hereinafter referred to as “Rutgers”), and Axion International
Inc., a Delaware corporation having a principal place of business at ▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇ (hereinafter referred to as “Licensee”).
RECITALS
WHEREAS,
Rutgers owns all right, title and interest in and to certain technology, which
is the subject of the issued United States patents and patent applications
identified in Exhibit
A attached hereto; and
WHEREAS,
Licensee wishes to obtain a license under the Rutgers Patent Rights and Rutgers
Technology (as defined below), for the commercial development, manufacture, use
and sale of products, systems and services, and Rutgers is willing to grant such
rights on the terms and conditions set forth in this Agreement; and
WHEREAS,
Rutgers is desirous that the Rutgers Patent Rights and Rutgers Technology be
developed and utilized to the fullest extent so that their benefits can be
enjoyed by the general public;
NOW
THEREFORE, the parties agree as follows:
Article
1. – DEFINITIONS
1.1 “Affiliate”
means any corporation or business entity that directly or indirectly controls,
is controlled by, or is under common control with Licensee to the extent of at
least fifty percent (50%) of the outstanding stock or other voting rights
entitled to elect directors.
1.2 “Field
of Use” means all fields of use.
1.3 “Improvements”
mean any change, modification or enhancement which is an improvement to an
invention, the Rutgers Patent Rights or the Rutgers Technology, whether or not
patentable or copyrightable. It is anticipated that Rutgers and
Licensee may each make Improvements acting solely or jointly
1.4 “Licensed
Product(s)” means any material, product, service, procedure, or kit (including
Work-in-Process), whose discovery, development, registration, manufacture, use
or sale practices any issued or pending claim within the Rutgers Patent Rights,
or is based on or otherwise uses any of the Rutgers Technology.
1.5. “Net
Sales” means the total of the gross consideration received for Licensed Products
made, leased, transferred, distributed, sold or otherwise disposed of by
Licensee, its Affiliates or its Sub-licensees, as the case may be, less the sum
of reasonably and customary discounts, returns, transportation, third party
packaging and handling charges, insurance charges, sales taxes, excise taxes,
use taxes or import/export duties, and tariffs.
1.6 “Rutgers
Patent Rights” means the patents, patent applications and invention disclosures
identified in Exhibit A hereto, and any issued patents or patent applications
based on or that claims priority from such patents or invention disclosures, as
well as any foreign patent(s) and patent application(s) corresponding to any of
the foregoing (and regardless of whether a corresponding U.S. Patent issues or
is maintained). Reissues, extensions (including governmental
equivalents thereto), substitutions (as defined in MPEP Sec. 201.09),
continuations, and divisions of all of the foregoing, shall also be
included.
1.7 “Rutgers
Technology” means all information, data and know-how owned by Rutgers relating
to the Rutgers Patent Rights that is reasonably necessary to practice the
Rutgers Patent Rights and that was or is disclosed at any time to Licensee, or
its Affiliates, directly or indirectly from or through Rutgers, its units,
employees, or consultants.
1.8
“Territory” means the United States, Canada, Central America, Mexico, China,
South America, South Korea, Saudi Arabia, and Russia.
Page
1
Article
2. – LICENSE GRANT;
SUBLICENSES
2.1 License
Grant. Subject to the terms and conditions set forth in this
Agreement, Rutgers hereby grants to Licensee a royalty-bearing, exclusive
license, in the Territory to make, have made, use, offer for sale, sell, modify,
develop, import, export or otherwise exploit Licensed Products under the Rutgers
Patent Rights and Rutgers Technology (listed in Exhibit
A). Notwithstanding the foregoing, Licensee’s license rights with
respect to China shall not be exclusive, but shall be co-exclusive with existing
Rutgers licensee Micron Inc. Ltd.
2.2 Sublicenses. Rutgers
grants to Licensee the right to grant sublicenses (without the right to grant
further sublicenses) to third parties (“Sublicensees”) under any or all of the
licenses granted in Section 2.1, provided Licensee has current exclusive rights
(excluding co-exclusive rights) thereto under this Agreement at the time it
exercises a right of sublicense. Each such sublicense shall, to the
extent applicable for the protection of Rutgers, include all of the rights of
and obligations due to Rutgers (and to the United States Government) that are
contained in this Agreement including, without limitation, the terms contained
in Articles 2, 3.8, 4, 5, 6, 8, 9, 10, 12, 14, 17, 18, 19, 20.6 and 20.10 of
this Agreement. Licensee shall not without Rutgers’ prior written
approval include terms in any sublicense that depart from, lessen or conflict
with the terms and conditions of this Agreement. Rutgers shall have
the right to review and approve, at its expense, each sublicense (and any
amendments thereto) prior to execution, such approval not to be unreasonably
delayed (A response is required within twenty-one days of presentation,
otherwise Rutgers’ approval is considered to be affirmed.) or withheld, to
ensure that the sublicense does not contain terms inconsistent with or in
violation of this Section 2.2. Notwithstanding the fact that
Licensee has been granted license rights in the Territory to the Licensed
Technology, if Rutgers secures a third party who desires to sublicense the
Licensed Technology from Licensee (a “Proposed Sublicensee”) in any country
within the Territory where neither Licensee nor any of its Affiliates or
sublicensees is actively pursuing commercialization of the Licensed Technology,
then Licensee shall negotiate a non-exclusive sublicense in good faith with the
Proposed Sublicensee on terms reasonably acceptable to Licensee and the Proposed
Sublicensee.
2.3 Licensee
shall use good faith commercially reasonable efforts to enter into sublicenses
to develop and produce fire retardant applications, and shall not limit its
efforts to sublicensing non-fire retardant applications.
2.4 Payments
from Sublicense. Licensee shall promptly provide Rutgers with
a copy of each executed sublicense and all amendments
thereto. Licensee shall use commercially reasonable efforts to
collect and pay all payment obligations due Rutgers relating to the sublicenses
and summarize and deliver all reports due Rutgers relating to the
sublicenses.
2.5 Termination. Upon
termination of this Agreement for any reason, Rutgers shall continue any
sublicense so long as the terms thereof are no less favorable and no more
burdensome to Rutgers than they are in this Agreement. In the event
that terms of the sublicense are less favorable or more burdensome, Rutgers, in
its sole discretion, shall determine whether such sublicense shall be canceled
or assigned to Rutgers. If not assigned, Rutgers agrees to negotiate
in good faith for a period of ninety (90) days following the termination of this
Agreement with each Sublicensee for a license directly from
Rutgers.
2.6 Government
Rights. If any patent issues from the Rutgers Patent Rights
that resulted from funding by the U.S. Government, the licenses granted
hereunder shall be subject to the U.S. Government rights provided under 35
U.S.C. Sec.Sec. 200-212 and applicable governmental implementing regulations,
and to the royalty-free non-exclusive licenses thereunder to which the U.S.
Government is entitled as well as to any other applicable governmental
restrictions, if any.
2.7 Rutgers
Retained Rights. Rutgers expressly reserves all rights under
the Rutgers Patent Rights to exercise and otherwise use the Rutgers Patent
Rights, and any related intellectual property rights, for educational, research
and other non-commercial purposes, and to publish the results
thereof.
2.8 Ownership
of Improvements. Rutgers shall own all improvements to the
Rutgers Technology conceived or made by Rutgers during the term of this
Agreement (“Rutgers Improvements”). Licensee
shall own all improvements to the Rutgers Technology conceived or made by
Licensee during the term of this Agreement (“Licensee
Improvements”). All improvements to the Rutgers Technology that are
jointly conceived or made by Licensee and Rutgers shall be jointly owned (“Joint
Improvements”). Licensee shall promptly disclose to Rutgers the
details of any Licensee Improvements or Joint Improvements. Licensee
shall, at Rutgers’ request, cooperate with and assist Rutgers in obtaining
patent protection for any Joint Improvements. Rutgers shall promptly disclose to
Licensee the details of any Rutgers Improvements or Joint
Improvements. Rutgers shall, at Licensee’s request, cooperate with
and assist Licensee in obtaining patent protection for any Rutgers Improvements
and Joint Improvements. All Rutgers Improvements made by ▇▇.
▇▇▇▇▇▇ ▇▇▇▇▇▇ or members of his laboratory, to the extent available for
licensing, Licensee Improvements, and Joint Improvements shall be deemed
included within the license rights granted hereunder and products utilizing such
improvements shall be deemed Licensed Products subject to the royalty and
sublicense income payments described herein.
Page
2
Article
3. – ROYALTIES AND PAYMENTS
3.1 Issuance
of Equity. In partial consideration of the rights granted
hereunder, contemporaneously with the execution of this Agreement, Licensee
shall execute a Stock Issuance Agreement (pursuant to which the Company shall
issue to Rutgers fifteen percent (15%) of the founders’ equity in Axion
International Inc.) and Co-Sale Agreement in the forms attached hereto as
Exhibits C and D.
3.2 License
Fee. Licensee shall pay Rutgers a one-time payment of twenty
thousand dollars ($20,000) as a license fee, which shall become due upon the
closing by Licensee of an equity financing of at least one million dollars
($1,000,000).
3.3 Royalties.
(a) Licensee
&
Affiliates. Licensee
shall pay Rutgers a royalty equal to (the “License Royalty”): (i) one
and a half percent (1.5%) of Net Sales of ** by Licensee and its Affiliates, and
(ii) three percent (3%) of Net Sales of ** sold by Licensee and, its
Affiliates.
(b) Sub-licensees. In
the event that Licensee grants any entity (other than an Affiliate), a
Sub-license, Licensee shall pay Rutgers a royalty equal to the following to the
extent that such royalty is received by Licensee from any Sublicensee (the
“Sublicense Royalty”): (i) one and a half percent (1.5%) of Net Sales of ** by
such Sublicensee, and (ii) three percent (3%) of Net Sales of ** sold by such
Sublicensee.
3.4 Quarterly
Payments. Royalties payable to Rutgers shall be paid to
Rutgers quarterly on or before the following dates of each calendar
year: January 31, May 31, August 31, and October 31. Each
such payment will be for unpaid royalties that accrued within or prior to
Licensee’s most recently completed calendar quarter.
3.5 Royalty
Minimums.
During
the term of this Agreement, Licensee shall pay to Rutgers a minimum annual
royalty as follows:
License
Year
One: $0;
License
Year
Two: $10,000;
License
Year
Three: **;
License
Year
Four: **;
License
Year Five and later
years: $200,000.
For
purposes of this Section 3.5, “License Year One” shall mean the period from the
Effective Date through December 31, 2007, “License Year Two” shall mean the
calendar year 2008, and each subsequent “License Year” shall refer to each
subsequent calendar year. To the extent the total earned royalty paid
in any License Year is less than the minimum annual royalty due and owing for
that License Year, Licensee shall pay Rutgers the deficiency on or before
January 31st
of the following License Year. For example, any deficiency payment
for License Year Two shall be made to Rutgers on or before January 31,
2009.
3.6 Sublicense
Income. Licensee shall pay Rutgers twenty percent (20%) of all
non-royalty consideration that it receives from its Sublicensees from
sublicensing or transferring the rights licensed to Licensee hereunder with
respect to sublicenses of non-fire retardant technology (Exhibit A,
items 1-7, and 10), and shall pay forty percent (40%) of all non-royalty
consideration it receives from its Sublicensees from sublicensing or
transferring the rights licensed to Licensee hereunder with respect to
sublicenses of fire retardant technology (Exhibit A, items
8 and 9).
3.7 Payment
in U.S. Dollars. All amounts due Rutgers shall be payable in
United States Dollars in New Brunswick, New Jersey. When Licensed
Products are sold for monies other than United States Dollars, the earned
royalties will first be determined in the foreign currency of the country in
which such Licensed Products were sold, and then converted into equivalent
United States Dollars. The exchange rate will be the United States
Dollar buying rate quoted in the New York edition of the Wall Street Journal on
the last day of the reporting period. If at any time legal
restrictions prevent the acquisition or prompt remittance of United States
Dollars by Licensee with respect to any country where a Licensed Product is
sold, Licensee shall pay royalties or Sublicense Income due to Rutgers from
Licensee’s other sources of United States Dollars.
3.8 Sales
to Government. If a license to the Rutgers Patent Rights has
been granted to the United States Government, no royalties shall be payable
hereunder on Licensed Products sold to the U.S. Government. Licensee
and its Sublicensees shall reduce the amount charged for Licensed Products sold
to the United States Government by an amount equal to the royalty for such
Licensed Products otherwise due Rutgers as provided herein.
3.9 Taxes,
etc. Licensee shall be responsible for any and all taxes,
fees, or other charges imposed by the government of any country outside the
United States on the remittance of royalty income for sales occurring in any
such country. Licensee shall also be responsible for all bank
transfer charges.
** Certain information on this page has been deleted and have been
filed separately with the Securities and Exchange Commission. Confidential
treatment has been requested with regard to these deleted portions.
Page
3
Article
4. - DILIGENCE
4.1 Commercialization
Diligence. Licensee, from and after the Effective Date, shall
use all reasonable and diligent efforts to develop, test, and obtain regulatory
approvals required, if any, and manufacture, market and sell Licensed Products
in all countries of the Territory within a reasonable time after the Effective
Date of this Agreement and shall, within a reasonable time after obtaining any
requisite regulatory approvals (if any), earnestly and diligently endeavor to
market and sell the same in quantities sufficient to meet the market demands
herefore.
4.2 Commercialization
Milestones. Licensee shall achieve the following
milestone:
-
First commercial sale of a Licensed Product in at least one country of the
Territory prior to the end of calendar year 2007.
4.3 Termination
for Failure to Commercialize. If Licensee fails to achieve any
of the milestones described in Section 4.2 in a timely manner, Rutgers shall
have the right and option to give written notice of such default (“Notice of
Default”) to Licensee. If Licensee fails to achieve the milestone
requirements within sixty (60) days of receipt of the Notice of Default, Rutgers
shall have the right to terminate this Agreement and the licenses herein by
sending a second written notice (“Notice of Termination”) to
Licensee. This Agreement shall automatically terminate on the
effective date of the Notice of Termination.
4.4
Licensee
Obligations. During the term of this Agreement, Licensee shall
maintain a continuous membership in the AMIPP Advanced Polymer Center at Rutgers
as an Industrial member and pay the required member fee, which as of the
Effective Date is $15,000 per year.
Article
5. - PROGRESS AND ROYALTY REPORTS
5.1 Commercialization
Efforts Reports. Beginning in January, 2007, and semi-annually
thereafter, Licensee shall submit to Rutgers a progress report covering
Licensee’s activities related to the development and testing of all Licensed
Products and the obtaining of any governmental approvals necessary for
marketing. Such commercialization progress reports shall be made for
each Licensed Product in each country in the Territory. Such reports
shall include sufficient information to enable Rutgers to determine Licensee’s
progress in fulfilling its obligations under Article 4 (DILIGENCE), including,
but not limited to, the following topics:
- summary
of work completed
- summary
of work in process, including product development and testing and progress in
obtaining government approvals
5.2 Notice
of First Commercial Sale. Licensee shall report its first
commercial sale of a Licensed Product to Rutgers within thirty (30) days of such
sale. Licensee shall report its subsequent first commercial sales of
a Licensed Product in each new country in its next royalty and sublicense income
report following such first commercial sale.
5.3 Royalty
and Sublicense Income Reports. Upon and after the first
commercial sale by Licensee, its Affiliates or Sub-Licensees of a Licensed
Product anywhere in the world or receipt by Licensee of sublicense income under
section 3.6 herein, Licensee shall submit quarterly reports to Rutgers on or
before each January 31st,
May 31st,
August 31st
and October 31st
of each year together with the required payment. Each such report
shall cover Licensee’s most recently completed calendar quarter, and will show:
(a) the units and Net Sales of each type of Licensed Product sold by Licensee on
which royalties have not been paid, including a clear indication of how Net
Sales were calculated; (b) the Sublicense Income earned by Licensee, (c) the
Sublicense Royalties, in U.S. dollars, received by Licensee and payable
hereunder; (d) the amount of Sublicense Royalty payments due pursuant to any
Sublicense and the method used to calculate the Sublicense Royalty; (e) the
exchange rates used, if any; and (f) any other information relating to the
foregoing reasonably requested with 30 days notice by
Rutgers. If no sales of Licensed Products have been made during any
reporting period, and no Sublicense Income has been earned, Licensee shall
provide a statement to this effect in writing to Rutgers in lieu of a
report.
Page
4
Article
6. –
BOOKS
AND RECORDS
6.1 Duty
to Keep Records; Audit Right. Licensee shall keep, and shall
cause its Affiliates and Sublicensees to keep, books and records in accordance
with generally accepted accounting principles accurately showing all
transactions and information relating to this Agreement and any
sublicense. Such books and records shall be preserved for at least
five (5) years from the date of the entry to which they pertain, and shall be
open to inspection by representatives or agents of Rutgers at reasonable times
upon reasonable notice no more than one time per calendar year.
6.2 Audit
Costs. Rutgers shall be responsible for all fees and expenses
incurred in connection with its representatives’ performance of such an
examination. If an error in royalties or Sublicense Income share of
more than five percent (5%) of the total royalties or Sublicense Income share
due for any year is discovered, however, or if as a result of the examination it
is determined that Licensee is otherwise in material breach of its obligations
under this Agreement, then the fees and expenses of such representatives shall
be borne by Licensee, and Licensee shall promptly reimburse Rutgers for
reasonably-documented audit expenses, as well as all overdue royalty, and
Sublicense Income.
Article
7. - TERM AND
TERMINATION
7.1 Term. Unless
otherwise terminated by operation of law or by acts or omissions of the parties
in accordance with the provisions of this Agreement, this Agreement shall be in
force from the Effective Date, and shall remain in effect until the expiration
of the last-to-expire issued patent within the Rutgers Patent Rights licensed
under this Agreement (the “Expiration Date”).
7.2 Automatic
Termination. Notwithstanding the provisions set forth in
Section 7.1, if Licensee does not close an equity financing transaction of at
least one million dollars ($1,000,000) within six (6) months following the
Effective Date, this Agreement shall automatically terminate.
7.3 Termination
for Cause. If either party breaches or fails to perform any
provision of this Agreement, the other party may give written notice of such
default, specifying the breach and the country in which the breach is allegedly
occurring or whether such breach relates to the entire agreement (“Notice of
Default”) to the non-breaching party. If the breaching party fails to
cure such default within sixty (60) days of receipt of the Notice of Default,
the non-breaching party shall have the right to terminate this Agreement; except
if the breach is due to lack of commercialization diligence under Section 4.1 or
failure to make payment under Section 11.2(c), then the non-breaching party
shall have the right to terminate this Agreement only as to the country/ies
where the breach remains uncured and the licenses herein only as to the
country/ies where the breach remains uncured by sending a second written notice
(“Notice of Termination”) to the breaching party, specifying the country/ies to
be terminated. This Agreement shall automatically terminate on the Effective
Date of the Notice of Termination. During the 60 day aforementioned cure period,
the parties shall negotiate in good faith to resolve any dispute relating to any
alleged breach of this Agreement.
7.4 Voluntary
Termination. Licensee shall have the right to terminate this
Agreement in its entirety or as to any country by giving 120 days advance Notice
of Termination thereof to Rutgers. If the Licensee terminates this
Agreement as to the United States, within the first two (2) years of this
Agreement, Licensee shall pay Rutgers an early termination fee of Fifty Thousand
Dollars ($50,000).
7.5
Effect
of Termination. Any termination of this Agreement shall not
relieve Licensee of any obligation or liability accrued hereunder prior to such
termination or rescind anything done by Licensee prior to the time such
termination becomes effective. Any such termination shall not affect
in any manner any accrued or surviving rights of Rutgers arising under this
Agreement prior to such termination.
7.6
Effect
of Expiration. If the Licensee continues to sell Licensed
Product after the date of the Expiration Date, the license hereunder shall be
considered fully paid up and Licensee’s only obligations shall be as set forth
in Section 7.7.
7.7
Survival. Any
expiration or termination of this Agreement shall not affect the rights and
obligations set forth in the following Articles:
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Article
6
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Books
and Records
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Article
8
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Disposition
of Licensed Products upon Termination; Return of
Property
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Article
9
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Use
of Names and Trademarks
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Article
10
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Disclaimer
of Warranties; Limitations of
Liability
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Article
14
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Indemnification;
Insurance
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Article
17
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Governing
Law; Venue
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Article
19
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Confidentiality
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Article
20
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Miscellaneous
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Page
5
Article
8. - DISPOSITION OF LICENSED PRODUCTS UPON TERMINATION; RETURN OF
PROPERTY
8.1
Disposition
of Inventory. On termination of this Agreement by either
party, Licensee shall have the privilege to dispose of all previously-made or
partially-made Licensed Products (Licensee may complete partially-made Licensed
Products), but no more, within a period of sixty (60) days after the Notice of
Default pursuant to Section 7.3 or termination under Section 7.2. Any
Licensed Products remaining in Licensee’s possession after the expiration of the
60-day period shall, at Rutgers’s discretion, be destroyed by Licensee or
provided to Rutgers with the return of Rutgers property.
8.2
Certification. On
request by Rutgers, Licensee shall certify in writing that it has complied with
the requirements of Sections 8.1.
Article
9. - USE OF NAMES AND TRADEMARKS
9.1 Nothing
contained in this Agreement shall be construed as granting any right to Licensee
or any of its Affiliates, to use in advertising, publicity, or other promotional
activities or otherwise any name, trade name, trademark, or other designation of
Rutgers that is identified with Rutgers or any of its units (including
contractions, abbreviations or simulations of any of the
foregoing). Unless required by law or consented to in advance in
writing by an authorized representative of Rutgers, the use by Licensee of the
names, “Rutgers, The State University of New Jersey,” “Rutgers University,”
“Rutgers,” or the names of any campus or unit of Rutgers is expressly and
strictly prohibited.
Article
10. - LIMITED WARRANTY, DISCLAIMER OF WARRANTIES; LIMITATIONS OF
LIABILITY
10.1. The
Director of Rutgers’ Office of Corporate Liaison & Technology Transfer
warrants to the Licensee that to the best of his knowledge (a) Rutgers has the
lawful right to grant the licenses granted hereunder; including the right
related to the Rutgers Patent Rights and the Rutgers Technology; (b) Rutgers
owns or controls the entire right, title and interest in and to the Rutgers
Patent Rights and the Rutgers Technology; (c) Rutgers has no knowledge that (i)
any of the Rutgers Patent Rights are invalid, or (ii) the practice of the
Rutgers Patent Rights and the Rutgers Technology in the Territory violates
and/or infringes the patent or other intellectual property rights of any third
party; (d) Rutgers has no knowledge of any claims (with or without foundation),
licenses or other charges or encumbrances in the Territory upon the Rutgers
Patent Rights and the Rutgers Technology contemplated by this
Agreement
10.2
Disclaimer
of Warranties.
(a) Except
as set forth in Section 10.1, Rutgers makes no representation or warranty,
either expressed or implied, and no representation or warranty shall be implied,
with respect to the license rights granted hereunder other than that Rutgers has
the right to grant such license rights. The intellectual property and
the rights granted by Rutgers to Licensee hereto are provided “AS IS” AND
WITHOUT WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR ANY
OTHER WARRANTY, EXPRESS OR IMPLIED.
(b)
Except as set forth in Section 10.1, nothing in this Agreement shall be
construed as:
(i)
a warranty or representation by Rutgers as to the validity or scope of any
Rutgers Patent Rights;
(ii)
a warranty or representation that any product made, used, sold or otherwise
disposed of or any method practiced under any license granted under this
Agreement is or will be free from infringement or claims of infringement of
patents, copyrights or any other property right of third parties;
(iii)
granting by implication, estoppel or otherwise any licenses or rights under
patents or other property rights of Rutgers other than said Rutgers Patent
Rights, regardless of whether such patents are dominant or subordinate to any
Rutgers Patent Rights;
(iv)
an obligation to bring or prosecute actions or suits against third parties
except as provided in Article 13; or
(v)
an obligation to furnish any know-how not provided in the Rutgers Patent Rights
and/or the Rutgers Technology licensed hereunder.
Limitation
Of Liability. TO THE MAXIMUM EXTENT PERMITTED BY LAW, IN NO
EVENT WILL RUTGERS BE LIABLE FOR ANY INJURY, LOSSES, DIRECT, INCIDENTAL,
INDIRECT, SPECIAL, PUNITIVE, EXEMPLARY, CONSEQUENTIAL DAMAGES OR OTHER LOSSES
INCURRED BY LICENSEE, ITS CUSTOMERS AND SUBLICENSEES, OR ANY OTHER PARTY,
INCLUDING WITHOUT LIMITATION, LOST PROFITS, OR FOR ANY CLAIMS FOR SUCH DAMAGES,
LOSSES OR OTHER INJURIES ASSERTED AGAINST LICENSEE, RELATING TO, ARISING OUT OF
OR RESULTING FROM THE EXERCISE BY OR ON BEHALF OF LICENSEE OF THE RIGHTS GRANTED
TO IT UNDER THIS AGREEMENT, INCLUDING, WITHOUT LIMITATION, MANUFACTURE, SALE, OR
USE OF THE LICENSED PRODUCTS, OR RUTGERS PATENT RIGHTS AND RUTGERS
TECHNOLOGY LICENSED HEREUNDER.
Page
6
Article
11. - PATENT PROSECUTION AND MAINTENANCE
11.1 Prosecution
and Maintenance. Rutgers shall diligently prosecute and
maintain the United States applications and patents and international patent
applications and patents included in Rutgers Patent Rights using, unless
otherwise agreed, counsel of its choice. Unless otherwise agreed,
Rutgers’ counsel shall take instructions only from Rutgers, except that, Rutgers
shall give due consideration to amending any patent application included within
the Rutgers Patent Rights to include claims reasonably requested by the Licensee
to protect the Licensed Products contemplated to be sold under this
Agreement. Rutgers shall in a timely manner provide Licensee with
copies of all relevant documentation so that Licensee may be informed and
apprised of the continuing prosecution. Licensee agrees to keep this
documentation confidential.
11.2 Prosecution and Maintenance
Costs
(a) Licensee
shall pay Rutgers for all prosecution costs incurred by Rutgers prior to the
date of this Agreement for preparing, filing, prosecuting, defending, and
maintaining all patent applications and/or patents included within the Rutgers
Patents, including interferences and oppositions, and all corresponding foreign
patent applications and patents with respect to a country within the Territory
and included in the Rutgers Patent Rights. As of the Effective Date,
the amount of past patent prosecution costs incurred by Rutgers with respect to
the Rutgers Patent Rights is approximately $11,750. Licensee shall
pay three thousand dollars ($3,000) of such amount to Rutgers upon execution of
this Agreement, and shall pay the remaining amount in three (3) equal payments
made in forty-five (45) day intervals.
(b)
**
(c)
In the event that Licensee shall fail to make any payment due pursuant to this
Section 11.2, with respect to any country, Rutgers shall provide Licensee with
notice of the default specifying the country/ies to which such payments
relate. If Licensee does not cure such failure to pay on or before
thirty (30) days after Licensee’s receipt of such notice, Rutgers shall have the
right terminate this Agreement only with respect to the country/ies for which
the Licensee’s failure to pay remains uncured.
(d)
Upon request of Licensee, Rutgers’ patent counsel shall provide to Licensee
duplicate copies of invoices sent to Rutgers. Licensee shall be
entitled to make payments due pursuant to this Section 11.2 directly to patent
counsel only if instructed by Rutgers.
11.3 Coverage
in Additional Countries. Provided Licensee gives Rutgers
timely notice of its desire after the Effective Date and financial security to
cover the cost thereof, Rutgers shall, at the request of Licensee, endeavor to
file, prosecute, and maintain patent applications and patents covered by Rutgers
Patent Rights in additional countries, if available. Licensee
consents to the filing of all Patent Cooperation Treaty (PCT) and foreign patent
applications and maintenance of patents that have already been filed and/or
issued as of the Effective Date, which applications and patents are set forth on
Exhibit B annexed hereto.
11.4 Licensee’s obligation to pay for
preparing, filing, prosecuting, defending, and maintaining all patent
applications and/or patents, including interferences and oppositions, and all
corresponding foreign patent applications and patents shall continue for so long
as this Agreement remains in effect, provided, however, that Licensee may
terminate its obligations with respect to any given patent application and/or
patent upon three (3) months prior written notice to
Rutgers. Upon receiving any such notice, Rutgers shall
use reasonable efforts to curtail future patent costs with respect to any patent
application or patent for which such notice is received. Licensee
shall promptly pay patent costs which cannot be so curtailed. Commencing
on the effective date of such notice, Rutgers may continue its prosecution
and/or maintenance of any such application(s) or patent(s) at its sole
discretion and sole expense, Licensee shall have no further right or license nor
any further obligation to pay any patent costs with respect to such
application(s) or patent(s).
Article
12.
- PATENT MARKING
12.1
Licensee shall ▇▇▇▇ all Licensed Products in accordance with all applicable
patent marking laws so as to preserve all rights in and available damages
recoverable under the Rutgers Patent Rights.
** Certain information on this page has been deleted and have been
filed separately with the Securities and Exchange Commission. Confidential
treatment has been requested with regard to these deleted
portions.
Page
7
Article
13. - THIRD PARTY PATENT INFRINGEMENT
13.1 Notice;
Duty to Cooperate. In the event that Licensee shall learn of
an infringement of any patent right or other right licensed under this
Agreement, Licensee shall promptly notify Rutgers in writing and shall provide
Rutgers with reasonable evidence of such infringement. Both parties
to this Agreement, agree that during the period and in a jurisdiction where
Licensee has exclusive rights under this Agreement under the Rutgers Patent
Rights, neither party shall notify a third party of the infringement of any of
the Rutgers Patent Rights without first obtaining the consent of the other
party, which consent shall not be unreasonably withheld or
delayed. Both parties shall use their best efforts in cooperation
with each other to notify the infringing party and terminate such infringement
without litigation.
13.2 Initiation
of Suit. Licensee may request that Rutgers take legal action
against the infringement of Rutgers Patent Rights. Such request shall
be made in writing and shall include reasonable evidence of such infringement
and damage to Licensee. If the infringing activity has not been
abated within ninety (90) days following the effective date of such request,
Rutgers shall have the right to commence suit on its own account or jointly with
Licensee, or refuse to commence such suit. Rutgers shall give notice
to Licensee of its election in writing by the end of the one-hundredth (100th)
day after receiving notice of such request from Licensee. In the event Rutgers
exercises its option to enforce on its own, Licensee may elect to participate in
the enforcement of the Rutgers Patent Rights against the third party, in which
case, Licensee shall pay to Rutgers fifty percent (50%) of the cost of the
enforcement. In the event that Rutgers refuses to commence suit,
Licensee may thereafter bring suit for patent infringement on its own behalf and
in the name of Rutgers, if and only if Rutgers refuses to commence suit and if
the infringement occurred during the period and in a jurisdiction where Licensee
had exclusive rights under this Agreement. Each party agrees to
cooperate with the other in litigation proceedings instituted
hereunder. Each party shall pay for its own out-of-pocket expenses
and disbursements (including legal fees) incurred in connection with any such
litigation. Each party may be represented by counsel of its choice at
its own expense.
13.3 Recovery. (a)
Rutgers shall be entitled to retain all recoveries recovered from legal actions
brought by solely Rutgers under the Rutgers Patent Rights. (b) All
recoveries recovered from legal actions brought jointly by Rutgers and Licensee
shall be shared equally by them, after deducting the reasonable legal expenses
of both parties. (c) After deducting reasonable legal expenses, all recoveries
from legal actions brought solely by Licensee shall be treated as Sublicense
Income (Article 3.6). Such recoveries shall not relieve Licensee of any of its
obligations to make other payments due Rutgers hereunder.
13.4
Third
Party Infringement Claims. In the event that a claim or suit
is asserted or brought against Licensee alleging that the manufacture or sale of
any Licensed Product by Licensee or the use of such Licensed Product by any
customer of any of the foregoing, infringes proprietary rights of a third party,
Licensee shall give written notice thereof to Rutgers. Licensee may,
in its sole discretion, modify such Licensed Product to avoid such infringement
and/or may settle on terms that it deems advisable in its sole discretion,
subject to Section 13.5. Otherwise, Licensee shall have the right,
but not the obligation, to defend any such claim or suit. In the
event Licensee elects not to defend such suit, Rutgers shall have the right, but
not the obligation to do so at its sole expense. Rutgers shall have
the right in all events, at its own expense, to intervene in any action in which
the validity or enforceability of any of the Rutgers Patent Rights is placed in
issue.
13.5 Settlement. Licensee
shall not settle or compromise any suit in a manner that imposes any obligations
or restrictions on Rutgers, or impairs, restricts or grants any rights to the
Rutgers Patent Rights, without Rutgers’ written permission. Rutgers shall not
settle or compromise any suit in a manner that imposes any obligations or
restrictions on Licensee, or impairs, restricts or grants any rights to the
Rutgers Patent Rights, without Licensee’s written permission.
Page
8
Article
14. - INDEMNIFICATION; INSURANCE
14.1 Indemnification. To
the maximum extent permitted by applicable law, Licensee shall indemnify, defend
and hold Rutgers, its governors, trustees, officers, employees, students, and
agents harmless against any and all claims, suits, losses, liabilities, damages,
costs, fees and expenses (including reasonable attorneys’ fees) resulting from,
relating to or arising out of the exercise of the rights granted under this
license, or the manufacture, use, sale or other disposition of Licensed Products
by Licensee or any of its Affiliates. This indemnification shall
include, but is not limited to, any and all claims alleging products liability,
negligence, and any infringement or misappropriation of any intellectual
property or proprietary right. Notwithstanding the foregoing,
Licensee shall not have the right, without the consent of Rutgers, to assume the
defense of any claim prosecuted against both Licensee and Rutgers to the extent
there is an actual or potential conflict of interest requiring separate
representations, it being understood that Licensee shall nevertheless remain
responsible for indemnifying Rutgers for defense costs to the extent provided
herein. In the absence of such a conflict, any separate
representation of Rutgers with respect to a claim asserted against both Licensee
and Rutgers shall, if at Rutgers’ request, be at Rutgers’ expense.
14.2
Limitation
on Indemnification. Notwithstanding anything contained herein to the
contrary (including, but not limited to Section 14.1), (a) Licensee shall have
no obligation to indemnify, defend and hold Rutgers, its governors, trustees,
officers, employees, students, and agents harmless against, and Section 14.1
shall not apply to, any claims, suits, losses, liabilities, damages, costs, fees
and expenses (including reasonable attorneys’ fees) which relate to the
Rutgers Patent Rights or Rutgers Technology infringing or misappropriating any
intellectual property or proprietary right or any claim to the extent that a
court of competent jurisdiction has found such infringement and/or
misappropriation was caused solely by Rutgers or its governors, trustees,
officers, employees, students, and agents, and (b) Licensee’s obligation to a
indemnify, defend and hold Rutgers, its governors, trustees, officers,
employees, students, and agents harmless shall be limited to only those claims,
suits, losses, liabilities, damages, costs, fees and expenses (including
reasonable attorneys’ fees) which result from a third party action against
Rutgers, its governors, trustees, officers, employees, students, and agents.
Nothing contained herein shall be construed to in any way limit Licensee’s
obligation to indemnify, defend and hold Rutgers, its governors, trustees,
officers, employees, students, and agents harmless against any claim relating to
product liability or any action that was caused by or contributed to by
Licensee, its Affiliates or its sublicensees.
14.3
Rutgers shall promptly notify Licensee in writing of any claim or suit brought
against Rutgers in respect of which Rutgers intends to invoke the provisions of
Section 14.1. Licensee shall keep Rutgers informed on a current basis
of its defense of any claims pursuant to Section 14.1. Rutgers shall
provide full cooperation to Licensee in such defense and make available to
Licensee all documentary and other evidence in its possession with respect
thereto. Licensee shall not settle any claim or suit on terms that impose any
obligations or restrictions on Rutgers or Rutgers’ rights without Rutgers’
written permission.
14.4
Insurance. Commencing
upon Licensee’s first transfer of a Licensed Product to a third party, Licensee
shall, at its sole cost and expense, insure its activities in connection with
this Agreement and will maintain and keep in force throughout the term hereof,
with insurers acceptable to Rutgers, the following types of
insurance:
(a) Comprehensive
or Commercial General Liability, which shall include products liability with
minimum limits as follows:
$2,000,000
combined single limit as respects liability arising out of the Licensed
Products. This coverage may be maintained on either an occurrence or
claims made form. If products coverage is on a claims made form,
Licensee must maintain such coverage for six years after termination or
expiration of this Agreement; and
$5,000,000
General Aggregate.
(b)
It is expressly understood and agreed, however, that the insurance coverage and
limits stated in (a) above shall not in any way limit the liability of Licensee
and that the required insurance shall be primary coverage. Any
insurance Rutgers may purchase will be excess and
noncontributory. Licensee’s liability insurance will be endorsed to
specifically name Rutgers as an additional insured and to provide primary
coverage to Rutgers.
(c)
Licensee shall furnish Rutgers with a Certificate of Insurance evidencing the
coverage and limits required pursuant to (a) above. The Certificate
of Insurance shall:
(i)
Provide for thirty (30) day advance written notice to Rutgers of cancellation or
alteration of policy limits;
(ii)
Indicate that Rutgers has been endorsed as an additional insured under the
coverages referred to above; and
(iii)
State that the insurance will be primary to Rutgers and any valid and
collectible insurance or program of self-insurance maintained by Rutgers shall
be excess and noncontributory.
Page
9
Article
15. – NOTICES
15.1 Any
notice required to be given to either party shall be deemed to have been
properly given and to be effective (a) on the date of delivery if delivered in
person, (b) five (5) days after mailing if mailed by first-class certified mail,
postage paid and deposited in the United States mail, to the respective
addresses given below, or to such other address as it shall designate by written
notice given to the other party, or (c) on the date of delivery if delivered by
express delivery service such as Federal Express or DHL.
In
the case of Licensee:
Axion
International, Inc.
▇▇▇
▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attn:
▇▇▇▇ ▇▇▇▇▇
In
the case of Rutgers:
Rutgers, The State University of New
Jersey
Office of Corporate Liaison and
Technology
Transfer
3
Rutgers Plaza, ASB III
▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention:
Director
Article
16. - ASSIGNMENT
16.1
This Agreement may not be assigned by Licensee without the prior written consent
of Rutgers which shall not be unreasonably withheld, except that, Licensee may
assign this Agreement without Rutgers’ consent in connection with (i) Licensee’s
transfer of all or substantially all of its assets to another person or entity,
or (ii) Licensee’s merger, consolidation or combination with another
entity. This Agreement is binding upon and shall inure to the benefit
of the parties, their successors and permitted assigns.
Article
17. - GOVERNING LAW; VENUE
17.1 THIS
AGREEMENT SHALL BE INTERPRETED AND CONSTRUED IN ACCORDANCE WITH THE LAWS OF THE
STATE OF NEW JERSEY WITHOUT REGARD TO ITS CONFLICTS OF LAW PROVISIONS, but the
scope and validity of any patent or patent application shall be governed by the
applicable laws of the country that issued such patent or in which such patent
application was filed. Any and all disputes between the parties that
cannot be settled by mutual agreement shall be resolved solely and exclusively
in the state and federal courts located within the state of New Jersey, and each
party hereby consents to the sole and exclusive jurisdiction of such
courts.
Article
18. EXPORT CONTROL; GOVERNMENT REGULATION
18.1 Licensee
shall observe all applicable United States and foreign laws and regulations
controlling the export of technical data, computer software, laboratory
prototypes and other commodities (including, without limitation, the
International Traffic in Arms Regulations (ITAR) and the Export Administration
Regulations, the Arms Export Control Act, as amended and the United States
Department of Commerce Export Administration Regulations) with respect to the
transfer of Licensed Products and related technical data to foreign
countries. Rutgers shall have no responsibility or obligation to
obtain any necessary licenses, permits or clearances, or to give any assurances,
relating to any such laws or regulations. Licensee shall defend,
indemnify and hold Rutgers harmless from any claims, penalties, charges, fines
or assessments relating to any violation of any laws or regulations controlling
the export of technology and arising out of the exercise of the rights granted
to Licensee hereunder. Rutgers neither represents that a license
shall not be required nor that, if required, it shall be issued.
18.2 If
this Agreement or any associated transaction is required by the law of any
nation to be either approved or registered with any governmental agency,
Licensee shall assume all legal obligations to do so and the costs in connection
therewith.
Page
10
Article
19. – CONFIDENTIALITY
19.1 Licensee
and its Affiliates (if any): (i) shall not use any confidential information
within Rutgers Technology or unpublished Rutgers Patent Rights that is marked
“confidential” when provided, except for the sole purpose of exploiting such
information pursuant to this Agreement, (ii) shall safeguard the same against
disclosure to others with the same degree of care as it exercises with its own
data of a similar nature, and (iii) shall not disclose or permit the disclosure
of Rutgers Technology that is marked “confidential” when provided or unpublished
Rutgers Patent Rights to others (except to its employees, agents, subcontractors
or consultants who are bound to Licensee and Rutgers by a like obligation of
confidentiality), without the express written permission of
Rutgers.
19.2 Rutgers
shall not use any confidential information received from Licensee (including,
without limitation, business plans, Licensee Improvements or other information
that is marked “confidential” when provided) (“Licensee Confidential
Information”), except for the sole purpose of exploiting such information
pursuant to this Agreement, (ii) shall safeguard the same against disclosure to
others with the same degree of care as it exercises with its own data of a
similar nature, and (iii) shall not disclose or permit the disclosure of
Licensee Confidential Information to others (except to its employees, agents,
subcontractors or consultants who are bound to Licensee and Rutgers by a like
obligation of confidentiality), without the express written permission of
Licensee.
19.3 Notwithstanding
the foregoing, neither Licensee nor Rutgers shall be prevented from using or
disclosing any Rutgers Technology, other Rutgers Patent Rights, or Licensee
Confidential Information that:
|
|
(a)
|
it
can demonstrate by written records was previously known to it;
or
|
|
|
(b)
|
is
now, or becomes in the future, information generally available to the
public in the form supplied, other than through improper or unauthorized
acts or omissions of the receiving party;
or
|
|
|
(c)
|
is
lawfully obtained from sources third parties who were entitled to provide
such information to the receiving party;
or
|
|
|
(d)
|
it
can demonstrate by written records was developed independently without the
use of confidential information of the
other.
|
|
|
(e)
|
is
required by law to be disclosed, provided that it provides prior written
notice of such required disclosure to the disclosing party, and the
disclosing party is afforded an opportunity to prevent or limit such
disclosure.
|
The
obligations of Rutgers and Licensee under this Article 19 shall remain in effect
for five (5) years from the date of termination or expiration of this
Agreement.
Article
20 MISCELLANEOUS
20.1
Headings. The
headings of the several articles are inserted for convenience of reference only
and are not intended to be a part of or to affect the meaning or interpretation
of this Agreement.
20.2
Not
Binding. This Agreement will not be binding upon the parties
until it has been signed below on behalf of each party by a duly authorized
representative.
20.3
Amendments. No
amendment or modification hereof shall be valid or binding upon the parties
unless made in writing and signed on behalf of each party by a duly authorized
representative.
20.4
Complete
Agreement. This Agreement embodies the entire understanding of
the parties and shall supersede all previous and contemporaneous communications,
representations or understandings, either oral or written, between the parties
relating to the subject matter hereof.
20.5
Waiver. Failure
to enforce any provisions of this Agreement by a party shall not be deemed a
waiver of any breach or default hereunder by the other party. No
express waiver by either party hereto of any breach or default of any of the
covenants or agreements herein set forth shall be deemed a waiver as to any
subsequent and/or similar breach or default.
20.6
Agreements
with Rutgers Personnel. Licensee shall not knowingly enter
into any agreements relating to this Agreement with Rutgers employees or
students (“Rutgers Personnel”) in contravention of the legal rights or policies
of Rutgers, including, without limitation, Rutgers’ conflicts of interest
policy. Licensee acknowledges that Rutgers Personnel are subject to
Rutgers’ policies, including policies concerning consulting, conflicts of
interest, and intellectual property. If there is a conflict between
the obligations of Rutgers Personnel under Rutgers’ policies and any of their
obligations to Licensee under the terms of their employment or consultancy with
Licensee, the obligations of Rutgers Personnel under Rutgers’ policies take
priority over any obligations Rutgers Personnel may have to Licensee by reason
of such employment or consultancy. Licensee recognizes that, under
Rutgers’s policy on intellectual property, Rutgers Personnel have an obligation
to assign to Rutgers all intellectual property that is created within the scope
of their employment responsibilities using Rutgers’ facilities and
resources.
20.7
Severability. In
case any of the provisions contained in this Agreement shall be held to be
invalid, illegal or unenforceable in any respect, (i) such invalidity,
illegality or unenforceability shall not affect any other provisions hereof,
(ii) the particular provision, to the extent permitted by law, shall be
reasonably construed and equitably reformed to be valid and enforceable, and
(iii) this Agreement shall be construed as if such invalid or illegal or
unenforceable provisions had never been contained herein.
20.8
Bankruptcy. Rutgers
shall have the right to terminate this Agreement forthwith by giving written
notice of termination to Licensee at any time upon or after the filing by
Licensee of a petition in bankruptcy or insolvency, or upon or after any
adjudication that Licensee is bankrupt or insolvent, or upon or after the filing
by Licensee of any petition or answer seeking judicial reorganization,
readjustment or arrangement of the business of Licensee under any law relating
to bankruptcy or insolvency, or upon or after the appointment of a receiver for
all or substantially all of the property of Licensee, or upon or after the
making of any assignment or attempted assignment for the benefit of creditors,
or upon or after the institution of any proceeding or passage of any resolution
for the liquidation or winding up of Licensee’s business or for termination of
its corporate life.
20.9
Attorneys’
Fees. In the event that Licensee fails to perform any
obligation under the terms of this Agreement and if it becomes necessary for
Rutgers to undertake legal action against Licensee on account thereof, then, in
the event Rutgers prevails in such legal action, it shall be entitled to receive
from Licensee the payment of Rutgers’ reasonable attorneys’ fees in addition to
costs and necessary disbursements.
20.10
Publicity. Neither
Licensee or its Affiliates shall originate any publicity, news release or other
public announcement, written or oral, relating to this Agreement or the
existence of an arrangement between the parties, except as required by law,
without the prior written approval of Rutgers.
20.11
Counterparts. This
Agreement may be executed in any number of counterparts, each of which shall be
deemed an original, but all of which together shall constitute one and the same
instrument.
20.12 No
Agency. Nothing herein shall be deemed to constitute both
parties as joint venturers or partners. Each party is an independent
contractor. Nothing herein shall be deemed to establish a
relationship of principal and agent between Rutgers and Licensee, nor any of
their agents or employees for any purpose whatsoever. This Agreement
shall not be construed as constituting Rutgers and Licensee as creating any
other form of legal association or
arrangement which would impose liability upon one party for the act or failure
to act of the other party.
Page
11
IN
WITNESS WHEREOF, both Rutgers and Licensee have executed this Agreement, in
duplicate originals, by their duly authorized representatives on the day and
year hereinafter written.
Axion
International,
Inc. Rutgers,
The State University
of
New Jersey
By_/s/
▇▇▇▇▇
▇▇▇▇▇▇▇▇ By_/s/
▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇
▇▇▇▇▇
▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇
▇. ▇▇▇▇▇
Chief
Executive
Officer Director,
Office of Corporate Liaison and
Technology
Transfer
Date February
1,
2007 Date February
1, 2007
Page
12
Exhibit
A
1. RU
Docket 90-1126, U.S. Patent No. 5,298,214 entitled “Method of Deriving
Polystyrene and Polyolefin Plastics Composite from Recycled
Plastics”.
2. RU
Docket 96-0404, U.S. Patent No. 5,789,477 entitled “Composite Building Materials
from Recyclable Waste”.
3. RU
Docket 96-0404D, U.S. Patent No. 5,916,932 entitled “Composite Building
Materials from Recyclable Waste”.
4. RU
Docket 03-096 entitled “Structural Plastic I-Beams” Patent Pending.
5. RU
Docket 05-033 entitled “Structural Material Composed of PMMA with HDPE”, Patent
Pending.
6. RU
Docket 05-064 entitled “Processing Technology to Increase Toughness”, Patent
Pending.
7. RU
Docket 06-042 entitled “Railroad Tie Not Needing a Tie Plate”, Patent
Pending.
8. RU
Docket 06-094 entitled “Damage Resistant Fire Retardant and Intumescent Coatings
for the Protection of Substrates from Heat Flux” “, Patent Pending.
9. RU
Docket 07-005 entitled “Emissivity Based Silicone/Glass Fiber Composites for the
Protection of Substrates from Heat Flux “, Patent Pending.
10. RU
Docket 06-131 entitled “Method of Producing Long I-beams with Capability of
Variable Tapers from Structural Polymer Based Materials”, Patent
Pending.
Page
13
Exhibit
B
Status
of PCT and Foreign Patent Applications and Issued Foreign Patents
1. RU
Docket 90-1126, U.S. Patent No. 5,298,214 entitled “Method of Deriving
Polystyrene and Polyolefin Plastics Composite from Recycled
Plastics”.
No
Foreign Filings
2. RU
Docket 96-0404, U.S. Patent No. 5,789,477 entitled “Composite Building Materials
from Recyclable Waste”.
|
Serial
No
|
Patent
No
|
File
Date
|
Issue
Date
|
Country
|
Status
|
App
Type
|
|
2,262,634
|
2,262,634
|
08/28/1997
|
03/18/2003
|
Canada
|
Issued
|
Nationalized
PCT
|
|
970103927
|
01/01/1998
|
Argentina
|
Filed
|
Foreign,
non-PCT
|
||
|
97939666.0
|
08/28/1997
|
Europe
|
National
Phase
|
Nationalized
PCT
|
||
|
9901959
|
206781
|
08/28/1997
|
02/18/2002
|
Mexico
|
Issued
|
Nationalized
PCT
|
|
PI
9711376
|
08/28/1997
|
Brazil
|
▇▇▇▇▇▇▇▇
▇▇▇▇▇
|
▇▇▇▇▇▇▇▇▇▇▇▇
▇▇▇
|
||
|
▇▇▇▇/▇▇▇▇▇
|
08/30/1997
|
PCT
|
National
Phase
|
PCT
|
3. RU
Docket 96-0404D, U.S. Patent No. 5,916,932 entitled “Composite Building
Materials from Recyclable Waste”.
No
Foreign Filings
4. RU
Docket 03-096 entitled “Structural Plastic I-Beams” Patent Pending.
|
Serial
No
|
Patent
No
|
File
Date
|
Issue
Date
|
Country
|
Status
|
App
Type
|
|
03818032.9
|
05/12/2006
|
Europe
|
Filed
|
Nationalized
PCT
|
5. RU
Docket 05-033 entitled “Structural Material Composed of PMMA with HDPE”, Patent
Pending.
|
Serial
No
|
Patent
No
|
File
Date
|
Country
|
Status
|
App
Type
|
|
PCT/US06/019311
|
05/19/2006
|
PCT
|
Filed
|
PCT
|
6. RU
Docket 05-064 entitled “Processing Technology to Increase Toughness”, Patent
Pending.
No
Foreign Filings
7. RU
Docket 06-042 entitled “Railroad Tie Not Needing a Tie Plate”, Patent
Pending.
No
Foreign Filings
8. RU
Docket 06-094 entitled “Damage Resistant Fire Retardant and Intumescent Coatings
for the Protection of Substrates from Heat Flux” “, Patent Pending.
No
Foreign Filings
9. RU
Docket 07-005 entitled “Emissivity Based Silicone/Glass Fiber Composites for the
Protection of Substrates from Heat Flux “, Patent Pending.
No
Foreign Filings
10. RU
Docket 06-131 entitled “Method of Producing Long I-beams with Capability of
Variable Tapers from Structural Polymer Based Materials”, Patent
Pending.
No Foreign
Filings