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EXHIBIT 10.1
EXCLUSIVE LICENSE AGREEMENT
This Agreement is entered into this 3rd day of January, 1994, and replaces
that certain Exclusive License Agreement between the parties dated the 2nd day
of November, 1992, between ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇ (herein called "Licensor"), and
A-55, L.P., a Nevada limited partnership (herein called "Licensee"), based on
the following facts:
A. Incident to the formation of Licensee and in consideration of the
issuance of partnership interests therein, Licensor is obligated to grant this
Exclusive License.
B. Licensor is and may in the future become the owner of certain Technology
as hereinafter defined, which Licensee wishes to acquire the right to use in the
Licensed Territory. Based on the foregoing the parties agree as follows:
1. Definitions
As used herein, the following terms shall have the meanings set forth
below.
1.1 "Field" means:
(a) methods, processes, compositions and apparatuses for carrying out
combustion for the generation of heat in internal combustion engines, either
compression or spark-ignited;
(b) aqueous fuels, including fuels described in the Patents, as well
as (i) methods, processes, apparatuses
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and compositions for their production and (ii) methods, processes, compositions
and apparatuses for their combustion; and
(c) methods, processes, compositions and apparatuses used for
production of chemicals, petrochemicals, plastics or pharmaceuticals utilized in
connection with any of the above;
1.2 "Patent" or "Patents" means all existing and future patents, patent
applications, and like grants in the Licensed Territory that (i) concern or
relate to the Field (including but not limited to the patents and patent
applications listed in Exhibit A hereto) and that (ii) as of the date of this
Agreement or during its term as defined below are or become owned or controlled
by Licensor or in which Licensor otherwise has or acquires the power to grant
rights thereunder, and all continuations, divisionals, continuations-in-part,
substitutes, extensions, reissues, confirmations, registrations, revalidations,
or additions of any of the foregoing.
1.3 "Service Marks" or "Trademarks" means all existing and future Service
Marks, Trademarks, applications for the same, and like grants in the Licensed
Territory that (i) concern or relate to the Field (including but not limited to
the Service Marks and Trademarks and applications therefor listed in Exhibit A
hereto) and that (ii) as of the date of this Agreement or during its term as
defined below are or
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become owned or controlled by Licensor or in which Licensor otherwise has or
acquires the power to grant rights thereunder.
1.4 "Technology" means all existing and future inventions, discoveries,
information, data, know-how, trade secrets, methods, processes, expertise,
confidential information, apparatuses, compositions and works of authorship,
whether or not protected by patent, copyrights, service marks or trademarks that
(i) are within the Field, and (ii) are owned or controlled by Licensor or as to
which Licensor has the power to grant rights thereunder, including but not
limited to Patents. Unless the context of this Agreement requires otherwise, the
term "Technology" shall include the Technology and know-how as defined in this
section, the Patents, the Service Marks, and the Trademarks.
1.5 "Licensed Territory" means the United States, Canada and Mexico.
1.6 "Licensed Products" means:
(a) products, compositions, services, and apparatuses, the
manufacture, use, importation or sale of which in the absence of the licenses
granted hereunder would infringe at least one claim of a Patent; and
(b) products, compositions and apparatuses which, in whole or in
part, employ or are within the definition of Technology.
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1.7 "Licensed Processes" means:
(a) processes and methods, the use of which in the absence of the
licenses granted hereunder would infringe at least one claim of a Patent; and
(b) processes and methods which, in whole or in part, employ or are
within the definition of Technology.
2. Patent License
2.1 Licensor hereby grants to Licensee, to the extent of the Licensed
Territory and to the exclusion of Licensor, the sole and exclusive license to
practice the Patents within the Field, including but not limited to the
manufacture, use, importation and sale of Licensed Products and use of Licensed
Processes.
3. Technology License
3.1 Licensor hereby grants to Licensee, to the extent of Licensed Territory
and to the exclusion of Licensor, the sole and exclusive license to practice the
Technology and know-how within the Field, including but not limited to the
manufacture, use, importation and sale of Licensed Products and use of Licensed
Processes.
3.2 Promptly after execution of this Agreement, Licensor shall make
available to Licensee for its use all Technology in Licensor's possession needed
to make Licensed Products and to use Licensed Processes.
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4. Service ▇▇▇▇ and Trademark License
4.1 Licensor hereby grants to Licensee, to the extent of the Licensed
Territory and to the exclusion of Licensor, the sole and exclusive license to
utilize the Service Marks and Trademarks within the Field.
5. Retained Ownership
5.1 Subject to the Patent license in Section 2., the Technology license in
Section 3., and the Service ▇▇▇▇ and Trademark license in Section 4., ▇▇▇▇▇▇ ▇.
▇▇▇▇▇▇▇▇▇ retains absolute ownership of all Technology.
6. Royalties
6.1 In consideration of this Agreement, the Licensee shall issue and
deliver to Licensor or a limited partnership in which Licensor is a general
partner certain partnership interests in Licensee.
6.2 There shall be no royalty or other monetary consideration payable to
Licensor as a result of or for this Agreement.
7. Sublicensing
7.1 Licensee shall have the right and obligation to grant sublicenses under
this Agreement as more fully set forth in the Limited Partnership Agreement of
Licensee, as
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the same may be amended or extended from time to time and to which this
Agreement is attached.
8. Representations and Warranties
8.1 Licensor represents and warrants to Licensee:
(a) that Licensor is the exclusive owner of all right, title and
interest in and to the Technology, has the right to grant the licenses
hereunder, has the right to enter into this Agreement, and has not granted to
any other party any similar or conflicting right, license, shop right, or
privilege under the Technology or with respect thereto;
(b) that Licensor is not now aware of any prior art, prior offers for
sale, or other events, circumstances or other facts that could in his opinion
result in a finding that any claim in the Patents are either invalid or
unenforceable;
(c) that Licensor is not now aware of any actual, potential or
threatened assertions of invalidity by third parties against the Technology,
including but not limited to pending or threatened litigation;
(d) that Licensor is not now aware of any potential, likely or actual
charges by third parties of infringement concerning or arising out of the
practice or use of the Technology; and
(e) that Licensor is not now aware of any potential, likely or actual
charges of infringement made or
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to be made or that could be made by or on behalf of Licensor against third
parties concerning or relating to the Field.
9. Term
9.1 The term of the Technology license under Section 3.1 and the Service
▇▇▇▇ and Trademark license under Section 4.1 above shall expire only upon the
dissolution of Licensee in accordance with terms and conditions of the Limited
Partnership Agreement of Licensee, as the same may be amended or extended from
time to time and to which this Agreement is attached.
9.2 The term of the Patent license under Section 2.1 above shall expire
only (a) upon the expiration of the last of the Patents to expire or (b) upon
the dissolution of Licensee in accordance with terms and conditions of the
Limited Partnership Agreement of Licensee, as the same may be amended or
extended from time to time and to which this Agreement is attached, whichever is
earlier.
10. Patents
10.1 ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇ shall from and after the date hereof, on behalf of
Licensee and at Licensee's sole expense, file, prosecute, and maintain all
Patents.
10.2 The parties acknowledge that the Licensee is being formed to exploit
the Technology in the Licensed Territory. ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇, on behalf of
Licensee and at Licensee's
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sole expense, shall proceed promptly and diligently to obtain patent, copyright,
or equivalent protection available under the laws of appropriate jurisdictions
with respect to the subject matter of the Technology. All consultants,
accountants, attorneys and other professionals utilized by ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇
on behalf of Licensee in discharging his obligations pursuant to Sections 10.1
and 10.2 shall be acceptable to and approved by Licensee.
10.3 Licensee shall have the right and obligation to institute or defend in
its name and on behalf of Licensor, prosecute, maintain, and settle or otherwise
compromise any actions by or against third parties for infringement. Licensor
shall cooperate fully in such actions when so requested by Licensee. Any such
defense shall be undertaken on behalf of Licensor and Licensee with counsel
acceptable to and approved by Licensor. In the event Licensee determines not to
institute or defend, prosecute, maintain, settle or otherwise compromise any
actions as contemplated in the first sentence of this section, then Licensor at
its option may undertake such actions at its expense, and Licensee shall
have no further interest in the Patent which is the subject of such action, the
proceeds therefrom, or any subsequent royalty or revenue from such Patent.
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11. Nonassignability
11.1 Licensee may not assign its rights or obligations hereunder, except
for sublicensing contemplated by Section 7. above.
12. Severability
12.1 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.
13. Marketing
13.1 Licensee shall place in a conspicuous location on any products made or
sold under any Patent, a patent notice in accordance with 35 U.S.C. Section 287.
Licensee agrees to ▇▇▇▇ any products made using a process covered by any Patent
with the number of each such patent and, with respect to Patents, to respond to
any request for disclosure under 35 U.S.C. Section 287(b)(4)(B) by only
notifying Licensor of the request for disclosure.
14. Confidentiality
14.1 Each party hereto for itself and on behalf of affiliates agrees not to
disclose to any third party any information, materials or documentation relating
to the Technology except to the extent such disclosure is required
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by law, or by the ordinary business operations of Licensor or Licensee (with any
sublicenses to contain similar confidentiality obligations), and agrees that
such information is proprietary and confidential. At any time that the
disclosure of proprietary and confidential information is required, Licensor or
Licensee shall obtain from the party to whom such disclosure is made an
appropriate written agreement protecting against the further disclosure or
dissemination of such information.
15. General Provisions
15.1 Notices. Any and all notices or other communication required or
permitted by this Agreement to be served on or given to any party hereto shall
be in writing and shall be deemed duly served and given when personally
delivered, given by facsimile, or deposited in the United States mail, by
certified mail, return receipt requested, or Express Mail, Federal Express, DHL,
or UPS Next Day Air addressed to the parties as follows:
Licensor: Licensee:
▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇ A-55 Limited Partnership
▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇ ▇▇▇. c/o ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇,
Suite 14-H Sr.Vice Pres.
▇▇▇▇, ▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇ ▇▇▇▇▇▇ ▇▇▇
Fax: (▇▇▇)▇▇▇-▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇ ▇▇▇▇▇
Fax: (▇▇▇)▇▇▇-▇▇▇▇
15.2 Relationship of the Parties. Nothing in this Agreement shall be
construed to create between the parties a partnership, association, joint
venture or agency.
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