Exhibit 10.1
EXCLUSIVE TECHNOLOGY LICENSE
AND
RIGHT TO PURCHASE PATENTS AGREEMENT
THIS AGREEMENT, effective May 25, 2004, is entered into by ▇▇▇▇ ▇. ▇▇▇▇,
as an individual, with offices located at ▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇ ▇▇., ▇▇▇▇▇▇▇ ▇▇▇▇,
▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇ (herein called LICENSOR) and Integrated Micrometallurgical
Systems, Inc., a corporation organized pursuant to the laws of the state of
Nevada, with its principal place of business at ▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇ ▇▇., ▇▇▇▇▇▇▇,
▇▇ ▇▇▇▇▇ (herein called LICENSEE).
ARTICLE I
BACKGROUND OF AGREEMENT
LICENSOR represents that he it is the owner of the right to file PATENTS
and IMPROVEMENTS, PROPRIETARY INFORMATION, TRADE SECRETS, TECHNICAL and
SCIENTIFIC information and KNOW-HOW, all pertaining to several designs of the
Chemically enhanced micro diffusion techniques for advanced lubricity and
corrosion protection (herein called TECHNOLOGY). LICENSOR is prepared to grant
an exclusive license to LICENSEE and assign all right, title and interest in
all domestic and foreign patents granted at a future date, subject to certain
terms and conditions.
1.01 LICENSEE wishes to acquire an exclusive license pursuant to
the issuance of future domestic and foreign PATENTS and IMPROVEMENTS,
PROPRIETARY INFORMATION, TRADE SECRETS, TECHNICAL and SCIENTIFIC information,
KNOW-HOW and registered TRADEMARKS of LICENSOR for purposes of making, using
and selling the TECHNOLOGY on a worldwide basis.
1.02 LICENSEE wishes to acquire all right, title and interest in
all domestic and foreign patents filed as of the date of this agreement that
related to the TECHNOLOGY and any domestic or foreign patents filed and granted
in the future by the LICENSOR, including all improvements on domestic or
foreign patents filed or to be filed in the future, pursuant to certain
considerations in the form of a Product Royalty to be paid to the LICENSOR, by
the LICENSEE or SUBLICENSES.
ARTICLE II
DEFINITIONS
As used herein, the following terms shall have the meanings set forth
below:
2.00 CONFIDENTIAL INFORMATION is that information that is
transmitted by LICENSOR and received by LICENSEE that is considered by LICENSOR
to be CONFIDENTIAL and PROPRIETARY INFORMATION.
2.01 EFFECTIVE DATE shall be May 25, 2004.
2.02 GROSS PRODUCTION means the number of units of commercially
saleable products produced by utilization of the LICENSED TECHNOLOGY, with the
LICENSED PRODUCT and sold to customers of LICENSEE or sold by SUB-LICENSEE(S)
of LICENSEE.
2.03 IMPROVEMENTS means any modification of a method, process,
composition of matter, process or product described in a PATENT, TRADE SECRET,
TECHNICAL and SCIENTIFIC information, KNOW-HOW, or in any PROPRIETARY or
CONFIDENTIAL INFORMATION of LICENSOR, provided such a modification, if
unlicensed, would infringe one or more claims of an issued patent, PATENT
APPLICATION, TRADE SECRET, TECHNICAL and SCIENTIFIC information, KNOW-HOW, or
in any other PROPRIETARY or CONFIDENTIAL INFORMATION. IMPROVEMENTS further
mean any modifications or changes in the composition of matter, change in the
design or use of the LICENSED PRODUCT or LICENSED TECHNOLOGY by LICENSEE.
2.04 KNOW-HOW means that special knowledge, skill and experience,
as applied to the LICENSED PRODUCT and the LICENSED PROCESS and TECHNOLOGY,
that is possessed by the LICENSOR that is PROPRIETARY or CONFIDENTIAL
INFORMATION.
2.05 LICENSED FIELD means, and is limited to, the practice of
PATENT(S) and IMPROVEMENTS, PATENTS that may issue in the future, PROPRIETARY
INFORMATION, TRADE SECRETS, TECHNICAL and SCIENTIFIC information and KNOW-HOW
for purposes of using the LICENSED PRODUCT and the LICENSED TECHNOLOGY on an
exclusive worldwide basis.
2.06 LICENSED PRODUCTS or DESIGNS means any and all products which
fall within the LICENSED FIELD and which are covered by, marked or are produced
using a process or method covered by a claim of a PATENT(S) and IMPROVEMENTS,
PROPRIETARY INFORMATION, TRADE SECRETS, TECHNICAL and SCIENTIFIC information
and KNOW-HOW of LICENSOR for purposes of commercially using the LICENSED
TECHNOLOGY.
2.07 LICENSED PROCESS AND TECHNOLOGY means any and all process or
proprietary technology, engineering and design features or components which
fall within the LICENSED FIELD which were developed by the LICENSOR or his
affiliates and which are covered by, marked or are produced using a process or
method covered by a claim of a PATENT(S) and IMPROVEMENTS, PROPRIETARY
INFORMATION, TRADE SECRETS, TECHNICAL and SCIENTIFIC information and KNOW-HOW
of LICENSOR for purposes of commercially utilizing the LICENSED PRODUCT.
2.08 LICENSED TERRITORY shall mean all countries of the world.
2.09 LICENSEE means INTEGRATED MICROMETALLURGICAL SYSTEMS, INC., a
corporation domiciled in the state of Nevada.
2.10 LICENSOR means ▇▇▇▇ ▇. ▇▇▇▇ as an individual.
2.11 NET SELLING PRICE means the gross amount received by LICENSEE
or a SUBLICENSE relating to any and all products (consumable or equipment) or
services sold by LICENSEE or SUBLICENSE resulting from the use of the LICENSED
PRODUCT AND LICENSED TECHNOLOGY, less the cost of freight required for the
transport of the product sold to a third party buyer.
2.12 PATENT(S), PROVISIONAL PATENT(S) or PATENT APPLICATION(S)
means any PATENT(S) granted or PATENT APPLICATION(S) made by LICENSOR pursuant
thereto, and all divisions, continuations, continuations in part, reissues,
substitutes, and extensions thereof.
2.13 PRIVATE LABEL means the exclusive labeling, trade name and/or
trademark for the LICENSED PRODUCT or LICENSED TECHNOLOGY used by the LICENSEE
or a SUBLICENSEE in the LICENSED TERRITORY.
2.14 PROPRIETARY INFORMATION means all information possessed by
the LICENSOR that is CONFIDENTIAL in nature and that the LICENSOR has exclusive
rights in and to. It includes TRADE SECRETS, TECHNICAL and SCIENTIFIC
information, and KNOW-HOW as related to the LICENSED PRODUCTS and the LICENSED
TECHNOLOGY.
2.15 PRODUCT ROYALTY means a royalty payment made by the LICENSEE
or SUBLICENSEE(S) to the LICENSOR on the products actually sold by LICENSEE or
SUBLICENSEE(S) and paid for by customers of the LICENSEE OR SUBLICENSEE(S).
The ROYALTY shall be THREE PERCENT (3%) of the NET SELLING PRICE, of all
products, equipment, consumables and services sold by LICENSEE directly to
third parties or SUBLICENSEE(S). In the event the LICENSEE enters into a
SUBLICENSE AGREEMENT, the LICENSOR shall receive 30% of all PRODUCT ROYALTY
income paid to the LICENSEE by any SUBLICENSEE(S), less ROYALTIES previously
paid on from previous sales product or PRODUCT ROYALTY, if any, actually paid
by LICENSEE to LICENSOR.
2.16 SUBLICENSE means an Exclusive License granted to a third
party by the LICENSEE of the LICENSED PRODUCT or LICENSED TECHNOLOGY, in the
LICENSED FIELD and IN A PORTION of the LICENSED TERRITORY.
2.17 TECHNICAL and SCIENTIFIC information means all PROPRIETARY
INFORMATION, TRADE SECRETS, KNOW-HOW and all information contained in PATENT(S)
that may issue or PATENT APPLICATION(S) and IMPROVEMENTS that is the exclusive
property of LICENSOR developed or acquired as of the date of this agreement
which would be useful in the making, using and selling of the LICENSED PRODUCTS
in the LICENSED TERRITORY.
2.18 TRADE SECRET means any CONFIDENTIAL INFORMATION that is the
personal property of LICENSOR and in which he has an exclusive right.
ARTICLE III
LICENSE GRANT
3.00 LICENSOR hereby grants to LICENSEE, to the extent of the
LICENSED FIELD, a license under any PATENT(S) or PATENT APPLICATION(S) to be
filed and IMPROVEMENTS, PROPRIETARY INFORMATION including TRADE SECRETS,
TECHNICAL and SCIENTIFIC information, and KNOW-HOW for the purpose of using the
LICENSED PRODUCTS and the LICENSED PROCESS and TECHNOLOGY, that is an
integrated operating system and related technology collectively and commonly
referred to as the Nanomet Technology, which in general relates to Chemically
enhanced micro diffusion techniques for advanced lubricity and corrosion
protection, in the LICENSED TERRITORY.
No LICENSE under the PATENT(S) or PATENT APPLICATION(S) to be filed and
IMPROVEMENTS, PROPRIETARY INFORMATION including TRADE SECRETS, TECHNICAL and
SCIENTIFIC information, KNOW-HOW is granted, and no license should be implied,
with respect to activities of LICENSOR outside the LICENSED FIELD and LICENSED
TERRITORY.
(A) The Parties agree that any IMPROVEMENTS, design changes,
modifications or developments of the LICENSED PRODUCT or the LICENSED
TECHNOLOGY, made by LICENSOR shall be available to LICENSEE in the LICENSED
TERRITORY at no additional cost or increased ROYALTY. In the event LICENSOR
makes application for any new patent, LICENSEE shall have the right to use and
purchase for $1.00 and other good and valuable consideration, any newly
developed product, process or technology under this Agreement.
(B) The Parties further agree that any IMPROVEMENTS, design
changes, modifications or developments of the LICENSED PRODUCT or LICENSED
TECHNOLOGY made by LICENSEE, which may be patented, may be made or used in the
LICENSED TERRITORY by the LICENSEE. LICENSEE shall promptly inform LICENSOR of
any such IMPROVEMENTS or of the filing of any patent applications by LICENSEE.
LICENSEE shall grant to LICENSOR, for no consideration, and on a ROYAL free
basis, an exclusive license on a worldwide basis. Any IMPROVEMENTS, design
changes, modifications or developments of the LICENSED PRODUCT or LICENSED
TECHNOLOGY by LICENSEE are construed to be a part of this Agreement and
LICENSEE shall be bound to all terms and conditions contained in this
Agreement.
3.01 LICENSOR further grants to LICENSEE, to the extent of the
LICENSED FIELD and LICENSED TERRITORY, a license to use any registered
TRADEMARK, owned, acquired, developed or filed for by the LICENSOR, relating to
the LICENSED PRODUCT or LICENSED PROCESS and TECHNOLOGY.
3.02 The PRODUCT LICENSE granted pursuant to Sections 3.00 and
3.01 shall be exclusive, with the right to grant EXCLUSIVE SUBLICENSES
thereafter for the term of this Agreement as defined in Article VI. Such
approval shall not be unreasonably withheld. Any
EXCLUSIVE SUBLICENSE agreement of LICENSEE shall be bound by all terms of this
Agreement, unless expressly excluded in writing, by LICENSOR.
ARTICLE IV
LICENSE FEES, ROYALTIES AND PAYMENTS FOR PATENTS
4.00 LICENSEE shall, on the EFFECTIVE DATE, due on May 25, 2007,
as a one time only LICENSEE FEE, pay to LICENSOR, Twenty Five Thousand Dollars
($25,000), which shall be non-refundable and credited against the ROYALTY
called for under Section 4.01. The LICENSE FEE of Twenty Five Thousand
($25,000), to be paid to the LICENSOR by the LICENSEE will at the option of the
LICENSOR be made up of One Hundred Twenty Five Thousand (125,000) shares of
restricted common stock of Integrated Micrometallurgical Systems, Inc valued at
$.20 per share or a cash payment of Twenty Five Thousand ($25,000) Dollars and
a five (5) year stock option to purchase an additional One Hundred Twenty Five
(1,250,000) shares of restricted common stock at $.20 per share.
4.01 LICENSEE shall pay to LICENSOR a royalty on the products,
equipment, consumables and services sold by LICENSEE and paid for by customers
of the LICENSEE. The PRODUCT ROYALTY shall be THREE PERCENT (3%) of the NET
SELLING PRICE of LICENSED PRODUCT, of all products, equipment, consumables and
services sold by LICENSEE directly to third parties or SUBLICENSEE, less
ROYALTIES paid on product returned from previous sales of product, equipment,
consumables and services sold, if any, actually paid by LICENSEE or the
SUBLICENSEE. In the event the LICENSEE enters into a SUBLICENSE AGREEMENT, the
LICENSOR shall receive 30% of all PRODUCT ROYALTY income paid to the LICENSEE
by any SUBLICENSEE(S). The ROYALTY due from the LICENSEE to the LICENSOR will
remain in perpetuity and continued to be paid beyond the life of any PATENTS or
termination of this agreement or any SUBLICENSE agreements. Payments and
accounting are to be made quarterly,within 30 days of the quarter just ending.
ARTICLE V
RIGHT TO PURCHASE PATENTS AT THE TIME OF GRANT
5.00 In the event the LICENSOR is granted domestic or foreign
patents issued in the future, the LICENSOR hereby agree that within Sixty (60)
days they will execute any and all documents necessary to legally assign or
transfer all right, title and interest of the PATENTS to the LICENSEE for One
Dollar ($1.00) and other good and valuable consideration. It being understood
that so long as this AGREEMENT remains in good standing, the LICENSEE agrees to
assume financial responsibility to pay directly or reimburse the LICENSOR for
all costs related preparing and prosecution patent applications on behalf of
the LICENSOR, including but not limited to legal fees, filing fees, maintenance
fees and translation costs.
ARTICLE VI
SUBLICENSES
6.0 Any SUBLICENSE in the LICENSED FIELD and LICENSED TERRITORY shall
be the responsibility of LICENSEE so long as this Agreement remains exclusive.
It is the intent of the parties that SUBLICENSES shall be available to
qualified third parties on fair and reasonable terms. A SUBLICENSE shall be an
exclusive license that is transferable only from LICENSEE with written
authorization of LICENSOR. Written authorization shall not be unreasonably
withheld. LICENSEE shall supply LICENSOR with a copy of each such SUBLICENSE
agreement thirty (30) days prior to the proposed date of the execution of the
SUBLICENSE agreement. LICENSOR shall within a fifteen day (15) period, provide
written authorization or state in writing the issues it believes are legally
valid justifications for not providing authorization to the LICENSEE to execute
the SUBLICENSE agreement.
6.01 LICENSEE shall pay to LICENSOR fifty percent (50%) of any
fees or consideration received by the LICENEE pursuant the execution of a
SUBLICENSE agreement or other considerations resulting from the execution of a
SUBLICENSE agreement. SUBLICENSE fees and other considerations paid to
LICENSOR shall be applied to the ROYALTY due LICENSOR under Sections 4.01.
LICENSOR will be entitled to Thirty Percent (30%) of all PRODUCT ROYALTY income
generated by LICENEE as a result of any SUBLICENSE(S) agreement(s).
6.02 PRODUCT ROYALTY for a SUBLICENSE shall be not less than that
set forth for in Sections 4.01.
6.03 LICENSEE shall pay to LICENSOR thirty percent (30%) of
PRODUCT ROYALTY income or the equivalent, received by LICENSEE from a
SUBLICENSE or other such similar agreement. Payment of LICENSOR'S share of
SUBLICENSE income shall be made to LICENSOR quarterly basis as provided for in
ARTICLE 10.00. SUBLICENSE fees paid to LICENSOR shall be applied to the total
amount due LICENSOR pursuant to ARTICLE 12.00 and to the ROYALTY due LICENSOR
under Section 4.01.
6.04 If this Agreement becomes nonexclusive or if it is terminated
for any reason, LICENSEE shall immediately assign all of its right, title and
interest to all SUBLICENSES to LICENSOR, including the right to receive all
income from the SUBLICENSE. LICENSEE shall, prior to execution of each
SUBLICENSE, make the SUBLICENSEE aware of this contingency. All terms and
conditions of any SUBLICENSE agreement will be consistent with the terms and
conditions of this LICENSE AGREEMENT.
6.05 Any SUBLICENSE Agreement of LICENSEE shall incorporate and
contain the terms of this Agreement. Any modifications, additions or deletions
of this Agreement, as incorporated into a SUBLICENSE Agreement, must be
approved by LICENSOR in writing.
6.06 SUBLICENSEE must inform LICENSOR of any IMPROVEMENTS of the
LICENSED PRODUCT by SUBLICENSEE. SUBLICENSEE must comply with the terms of
Section 3.00(b) of this Agreement.
ARTICLE VII
EXPORTATION
7.00 LICENSEE shall be limited to the use of the LICENSED PRODUCT
or LICENSED PROCESS and TECHNOLOGY in the LICENSED FIELD to the LICENSED
TERRITORY. LICENSEE shall not export the LICENSED PRODUCT or LICENSED PROCESS
and TECHNOLOGY to countries or territories that would be deemed to be high risk
with regard to utilizing the technology without legal authorization. Any
country to which the LICENSEE proposes to grant SUBLICENSES to, must have
without written authorization and consent from the LICENSOR.
7.01 SUBLICENSE agreements shall be limited to the use of the
LICENSED PRODUCT or LICENSED TECHNOLOGY in the LICENSED FIELD to the LICENSED
TERRITORY. SUBLICENSEE(S) shall not export LICENSED PRODUCT or LICENSED
TECHNOLOGY to any customer in any country or territory without written
notification to and receipt of written authorization and consent from LICENSOR.
7.02 In the event the LICENSEE grants and executes a SUBLICENSE
agreement that is approved by LICENSOR, it is understood that all proprietary
components of the LICENSED PRODUCT shall be purchase exclusively through the
LICENSEE or the LICENSOR.
ARTICLE VIII
CONFIDENTIALITY
8.00 LICENSEE, LICENSEE'S employees and SUBLICENSEES shall not disclose,
by any method of communication, any PROPRIETARY INFORMATION, TRADE SECRETS,
TECHNICAL and SCIENTIFIC information, KNOW-HOW or other CONFIDENTIAL
INFORMATION expressly or implied disclosed by LICENSOR to LICENSEE without the
expressed written permission of LICENSOR.
8.01 LICENSEE shall sign a separate Confidentiality Agreement relative
to any PROPRIETARY INFORMATION, TRADE SECRETS, TECHNICAL and SCIENTIFIC
information, KNOW-HOW or other CONFIDENTIAL INFORMATION disclosed by LICENSOR
to LICENSEE.
8.02 Any SUBLICENSE Agreement of LICENSEE shall incorporate and
contain the terms of Article VI and VII of this Agreement and any SUBLICENSE
shall sign a separate Confidentiality Agreement with LICENSEE relative to
PROPRIETARY and CONFIDENTIAL INFORMATION received as the result of this
Agreement.
ARTICLE IX
PRIVATE LABELS
9.00 All LICENSED PRODUCT used pursuant to this LICENSE AGREEMENT,
may be used under any TRADEMARK(S) developed or owned by the LICENSOR or a
TRADEMARK developed and owned by the LICENSEE. In the event that any TRADEMARK
utilized by the LICENSEE, is in conflict with another company operating within
any country in the TERRITORY, any other such PRIVATE LABEL selected by LICENSEE
or SUBLICENSEE may be used.
9.01 The PRIVATE LABEL of the LICENSED PRODUCT shall comply with the
appropriate regulations of all governmental agencies of the country within the
TERRITORY.
9.02 As long as this exclusive LICENSEE AGREEMENT or any modification or
extension thereof remains in force and effect, LICENSEE shall own each such
PRIVATE LABEL or trademark to be used exclusively by LICENSEE on LICENSED
PRODUCT.
ARTICLE X
PAYMENTS
10.00 Not later than the last day of each January, April, July and
October, LICENSEE and all SUBLICENEE(S) shall furnish to LICENSOR a written
statement in such detail as LICENSOR may reasonably require of all amounts due
pursuant to Sections 4.01 for the quarterly periods ended the last days of the
preceding March, June, September and December, respectively, and shall pay to
LICENSOR, all amounts due to LICENSOR.
10.01 Payments provided for in this Agreement, when overdue, shall
bear interest at a rate per annum equal to three percent (3%) in excess of the
"PRIME RATE" published by the U.S. Edition of "The Wall Street Journal" at the
time such payment is due, and for the time period until payment is received by
LICENSOR.
10.02 If this Agreement is for any reason terminated before all of
the payments herein provided for have been made, LICENSEE shall immediately
submit a terminal report, and pay to LICENSOR any remaining unpaid balance even
though the due date as above provided has not been reached.
ARTICLE XI
REPRESENTATIONS AND DISCLAIMER OF WARRANTIES
11.00 NOTHING IN THIS AGREEMENT SHALL BE DEEMED TO BE A
REPRESENTATION OR WARRANTY BY LICENSOR OF THE VALIDITY OF ANY PATENTS, PATENTS
THAT MAY ISSUE, PATENT APPLICATIONS AND IMPROVEMENTS, PROPRIETARY KNOWLEDGE,
TRADE SECRETS, TECHNICAL AND SCIENTIFIC INFORMATION, KNOW-HOW AND REGISTERED
TRADEMARKS LICENSOR SHALL HAVE NO LIABILITY WHATSOEVER TO LICENSEE OR ANY OTHER
PERSON FOR, OR ON ACCOUNT OF ANY INJURY, LOSS OR DAMAGE OF ANY KIND OR NATURE,
SUSTAINED BY, OR ANY DAMAGE ASSESSED OR ASSERTED AGAINST, OR ANY OTHER
LIABILITY INCURRED BY OR IMPOSED UPON LICENSEE OR ANY OTHER PERSON, ARISING OUT
OF OR IN CONNECTION WITH, OR RESULTING FROM:
(A) THE PRODUCTION, USE OR SALE OF ANY APPARATUS OR PRODUCT, OR
THE PRACTICE OF ANY PATENTS THAT MAY ISSUE, PATENT APPLICATIONS OR
IMPROVEMENTS; OR
(B) ANY ADVERTISING OR OTHER PROMOTIONAL ACTIVITIES WITH RESPECT
TO ANY OF THE FOREGOING.
LICENSEE SHALL HOLD LICENSOR, AND ITS PARTNERS, AGENTS OR EMPLOYEES
HARMLESS IN THE EVENT LICENSOR, OR ITS OFFICERS, AGENTS OR EMPLOYEES, IS HELD
LIABLE.
11.01 LICENSOR shall have the right to file, prosecute and maintain
PATENT APPLICATIONS and IMPROVEMENTS that are the property of LICENSOR and
shall have the right to determine whether or not, and where to file a patent
application or to abandon the prosecution of any patent or patent application.
ARTICLE XII
TERMINATION
12.00 This Agreement shall terminate:
(A) upon the expiration of the last to expire of any PATENT(S),
PATENT(S) that may issue; or
(B) upon the abandonment of the last to be abandoned of any
PATENT APPLICATIONS and IMPROVEMENTS, included herein; and
(C) upon termination of this Agreement the PRODUCT ROYALTY shall
continue in perpetuity.
(D) IF THE ONE TIME ONLY LICENSE FEE TOTALING $25,000 IS NOT PAID
ON OR BEFORE MAY 24, 2007.
12.01 LICENSEE may terminate this Agreement at any time upon sixty
(60) days written notice in advance to LICENSOR.
12.02 If either party shall be:
(A) in default of any obligation hereunder; or
(B) shall be adjudged bankrupt; or
(C) shall become insolvent; or
(D) shall make an assignment for the benefit of creditors; or
(E) shall be placed in the hands of a receiver or a trustee in
bankruptcy, the other party may terminate this Agreement by giving sixty (60)
days notice by Registered Mail to the other party, specifying the basis for
termination. If within sixty (60) days after the receipt of such notice, the
party receiving notice shall remedy the condition that formed the basis for
termination, such notice shall cease to be operative, and this Agreement shall
continue in full force.
12.03 The word "termination" and cognate words, such as "term" and
"terminate", used in Article XII and elsewhere in this agreement, are to read,
except where the contrary is specifically indicated, as omitting from their
effect, the following rights and obligations, all of which survive any
termination to the degree necessary to permit their complete fulfillment or
discharge:
(A) LICENSEE'S obligation to supply a terminal report as
specified in paragraph 10.02 of this Agreement;
(B) LICENSOR'S right to receive or recover, and LICENSEE'S
obligation to pay royalties (including minimum ROYALTIES) accrued or accruable
for payment at the time of any termination;
(C) LICENSEE'S obligation to maintain records under Section under
15.00 of this Agreement;
(D) licenses, releases and agreements of nonassertion running in
favor of customers or transferees of LICENSEE in respect to products sold or
transferred by LICENSEE prior to any termination and on which ROYALTIES shall
have been paid as provided in paragraph 4.01 of this Agreement;
(E) any cause of action or claim of LICENSOR accrued or to
accrue, because of any breach or default by LICENSEE; and
ARTICLE XIII
ARBITRATION
13.00 Any controversy or dispute arising out of or in connection
with this Agreement, its interpretation, performance, or termination, which the
parties are unable to resolve within a reasonable time after written notice by
one party to the other of the existence of such controversy or dispute, may be
submitted to arbitration by either party and if so submitted by either party,
shall be finally settled by arbitration conducted in accordance with the rules
of conciliation and arbitration of the Chamber of Commerce in effect on the
date hereof. Any such arbitration shall take place in the City of Las Vegas,
Nevada. Such arbitration shall be conducted in the English language and the
arbitrators shall apply the laws of the Country of the United States.
3.01 The institution of any arbitration proceeding hereunder shall
not relieve LICENSEE of its obligation to make payments accrued hereunder
pursuant to Sections 4.00 hereof to LICENSOR during the continuance of such
proceeding. The decision by the arbitrators shall be binding and conclusive
upon the parties, their successors, and assigns and they shall comply with such
decision in good faith, and each party hereby submits itself to the
jurisdiction of the courts of the place where the arbitration is held, but only
for the entry judgment with respect to the decision of the arbitrators
hereunder. Notwithstanding the foregoing, judgment upon award may be entered
in any court where the arbitration takes place, or any court having
jurisdiction.
13.02 Any SUBLICENSE agreement of LICENSEE shall incorporate and
contain the terms of Article 13.00 of this Agreement.
ARTICLE XIV
LITIGATION
14.00 Each party shall notify the other party in writing of any
suspected infringement(s) of any PATENT(S) or PATENT(S) that may issue, PATENT
APPLICATIONS and IMPROVEMENTS, PROPRIETARY INFORMATION, TRADE SECRETS,
TECHNICAL and SCIENTIFIC information, KNOW-HOW and registered TRADEMARKS in the
LICENSED TERRITORY, and shall inform the other party of any evidence of such
infringement(s).
14.01 LICENSOR shall have the first right to institute suit for
infringement(s) in the LICENSED FIELD and the LICENSED TERRITORY. LICENSEE
agrees to join as a party plaintiff in any such lawsuit initiated by LICENSOR,
if requested by LICENSOR, with all costs, attorney fees, and expenses to be
paid by LICENSOR. However, if LICENSEE does not institute suit for
infringement(s) within ninety (90) days of receipt of written notice from
LICENSEE of LICENSOR'S desire to bring suit for infringement in its own name
and on its own behalf, then LICENSEE may, at its own expense, bring suit or
take any other appropriate action.
14.02 If this Agreement is non-exclusive at the time of
infringement(s), the sole right to institute suit for infringement and to
recover damages shall rest with LICENSOR.
14.03 LICENSEE shall be entitled to any recovery of damages
resulting from a lawsuit brought by it pursuant to paragraph 14.01. LICENSOR
shall be entitled to recovery of damages resulting from any lawsuit brought by
LICENSOR to enforce any patent that my issue pursuant to paragraph 14.01.
14.04 Either party may settle with an infringer without the prior
approval of the other party if such settlement would not affect the rights of
the other party under any patent that may issue, PATENT APPLICATIONS and
IMPROVEMENTS, PROPRIETARY INFORMATION, TRADE SECRETS, TECHNICAL and SCIENTIFIC
information, KNOW-HOW and registered TRADEMARKS.
14.05 Any SUBLICENSE agreement of LICENSEE shall incorporate and
contain the terms of Article XIV of this Agreement.
ARTICLE XV
RECORDS
15.00 LICENSEE shall keep accurate records of all operations
affecting payments hereunder, and shall permit LICENSOR or its duly authorized
agent to inspect all such records and to make copies of or extracts from such
records during regular business hours throughout the term of this Agreement and
for a reasonable period of not less than three (3) years thereafter.
15.01 Any SUBLICENSE agreement of LICENSEE shall incorporate and
contain the terms of Article XV of this Agreement.
ARTICLE XVI
PATENT MAINTENANCE FEES
16.00 Pursuant to PATENT(S) and in the event that patents issue on
PATENT APPLICATIONS and IMPROVEMENTS, described in Section 2.11, or other
patents subsequently issue related to the LICENSED PRODUCT and LICENSED
TECHNOLOGY, maintenance fees shall be paid by LICENSOR and reimbursed by
LICENSEE and all documentation of payment shall be provided to LICENSEE.
LICENSOR, upon request by LICENSEE, shall provide LICENSEE with records and
schedule of maintenance fee due dates.
ARTICLE XVII
NON-ASSIGNABILITY
17.00 The parties agree that this agreement imposes personal
obligations on LICENSEE. LICENSEE shall not assign any rights under this
Agreement not transferable by terms without the written consent of LICENSOR.
LICENSOR may assign his rights hereunder.
ARTICLE XVIII
SEVERABILITY
18.00 The parties agree that if any part, term or provision of this
Agreement shall be found illegal or in conflict with any valid controlling law,
the validity of the remaining provisions shall not be affected thereby.
18.01 In the event the legality of any provision of this agreement
is brought into question because of a decision by a court of competent
jurisdiction, LICENSOR, by written notice to LICENSEE, may revise the provision
in question or may delete it entirely so as to comply with the decision of said
court.
ARTICLE XIX
NON-USE OF LICENSOR'S NAME
19.00 In publicizing anything used under this Agreement, LICENSEE
shall not use the name of LICENSOR or otherwise refer to any organization
related to LICENSOR, except with the written approval of LICENSOR. LICENSEE is
authorized to make public the name of the LICENSOR and describe the contractual
relationship between the LICENSOR and LICENSEE if LICENSEE becomes a publicly
traded company and the disclosures are a requirement and pursuant to the
requirements of the Securities Act of 1933 or 1934.
ARTICLE XX
WAIVER, INTEGRATION, ALTERATION
20.00 The waiver of a breach hereunder may be affected only by a
writing signed by the waiving party and shall not constitute a waiver of any
other breach.
20.01 This Agreement represents the entire understanding between
the parties, and supersedes all other agreements, express or implied, between
the parties concerning PATENT APPLICATIONS and IMPROVEMENTS, PROPRIETARY
INFORMATION, TRADE SECRETS, TECHNICAL and SCIENTIFIC information, KNOW-HOW and
registered TRADEMARKS.
20.02 A provision of this Agreement may be altered only by a
writing signed by both parties, except as provided in Sections 20.00 and 20.01,
above.
ARTICLE XXI
MARKING
21.00 LICENSEE shall place in a conspicuous location on LICENSED
PRODUCT, a patent notice, in accordance with the Statutes of U.S. or Foreign
Patent Law. LICENSEE agrees to ▇▇▇▇ any LICENSED PRODUCT or LICENSED PROCESS
and TECHNOLOGY used or covered by any PATENT(S), with the serial number of each
such patent. With respect to PATENT APPLICATIONS and IMPROVEMENTS, PROPRIETARY
INFORMATION, TRADE SECRETS, TECHNICAL and SCIENTIFIC information, KNOW-HOW and
registered TRADEMARKS, LICENSEE will respond to any request for disclosure in
accordance with the Statutes of Patent Law of any and all countries where
application has been made and/or the patent laws of any countries affected in
the LICENSED TERRITORY, by only notifying LICENSOR of the request for
disclosure.
ARTICLE XXII
APPLICABLE LAW
22.00 This Agreement shall be constructed in accordance with the
substantive laws of the state of Nevada.
1.1 The language under which this Agreement shall be interpreted,
arbitrated or litigated shall be English.
ARTICLE XXIII
NOTICES UNDER THE AGREEMENT
23.00 For the purpose of all written communications and notices
between the parties, their addresses shall be:
LICENSOR: ▇▇▇▇ ▇▇▇▇
▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇ ▇▇.
▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇
Phone: (▇▇▇) ▇▇▇-▇▇▇▇
Fax: (▇▇▇) ▇▇▇-▇▇▇▇
Attention: ▇▇. ▇▇▇▇ ▇. ▇▇▇▇
LICENSEE: Integrated Micrometallurgical Systems, Inc.
▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇ ▇▇.
▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Phone: (▇▇▇) ▇▇▇-▇▇▇▇
Fax: (▇▇▇) ▇▇▇-▇▇▇▇
Attention: ▇▇▇▇▇ ▇. ▇▇▇▇▇, Secretary
or any other addresses of which either party shall notify the other party in
writing.
IN WITNESS WHEREOF the parties have caused this Agreement to be executed
by their duly authorized officers and/or as an individual on the respective
dates and at the respective places hereinafter set forth.
LICENSEE
INTEGRATED MICROMETALLURGICAL
SYSTEMS, INC.
By: /s/ ▇▇▇▇▇ ▇▇▇▇▇
--------------------------------
Title: ▇▇▇▇▇ ▇. ▇▇▇▇▇, Secretary
Date: May 25, 2004
LICENSOR
▇▇▇▇ ▇. ▇▇▇▇
By: /s/ ▇▇▇▇ ▇. ▇▇▇▇
--------------------
Date: May 25, 2004