EXHIBIT 10.14
TECHNOLOGY TRANSFER AGREEMENT
THIS TECHNOLOGY TRANSFER AGREEMENT, having an effective date as defined below by
and between RG Global Lifestyles, Inc., located at 00000 Xxxxx, Xxxxx 000,
Xxxxxx Xxxxx Xxxxxxxxx, XX 00000 ("RGGL"), and Catalyx, Inc., located at 000 X.
Xxxxxxx Xx. xx. 000, Xxxx, XX 00000 ("CFS"). Either CFS or RGGL may hereinafter
be individually referred to as a "Party" or collectively as the "Parties"; and
WHEREAS, CFS represents that it has invented and developed certain
intellectual property hereinafter referred to as "Technology", useful in
filtration of sodium from water produced in the process of extracting methane in
wet bed mining situation (more fully explained on Schedule 1 hereto); and
WHEREAS, RGGL desires to obtain from CFS, and CFS is willing to
transfer to RGGL the Technology.
NOW, THEREFORE, in consideration of the terms, conditions and
provisions hereinafter set forth, the sufficiency and adequacy of which are
hereby acknowledged, the Parties hereby agree as follows:
1.0 Definitions
1.1 AFFILIATE means any business entity that is owned or controlled by, or owns
or controls a Party to this Agreement, or that is owned or controlled by the
business entity which owns or controls a Party. Ownership, direct or indirect,
of at least fifty percent of the voting stock ordinarily entitled to vote in the
election of directors of a business entity or, if no such stock is issued, of at
least fifty percent of the ownership interest in the business entity, shall
constitute ownership thereof. An Affiliate shall not be considered to be a third
party under this Agreement.
1.2. EFFECTIVE DATE means the date of receipt by the Company of a qualified
multiyear contract or purchase order for usage, sale or lease of the Technology.
2.0 Technology Transfer
2.1 Subject to the terms of this Agreement, and subject to the terms and
conditions contained herein, CFS hereby transfers to RGGL and its Affiliates all
rights and title to the Technology.
2.2 Upon finalization and execution of this Agreement, CFS agrees to promptly
disclose all of the details of the Technology to RGGL including the transfer to
RGGL, at no cost to RGGL, of applicable reports, data, specifications, drawings
and other documents entirely owned by CFS at the time of the Effective Date and
to cooperate with and assist RGGL, including allowing inspection of equipment
and making available key CFS technical personnel to consult with RGGL subject to
the following conditions for the orderly transfer of the Technology to RGGL for
enabling RGGL to use the Technology in all respects.
2.3 RGGL or its Affiliates may not assign or transfer the rights and title to
the Technology to any unrelated third party; in the case of insolvency or
bankruptcy of RGGL, all rights and title to the Technology will transfer back to
CFS.
3.0 Royalties; Payments; Equity; Board Representation
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3.1 RGGL has paid $200,000 to CFS as a pre-payment against royalties.
3.2. RGGL shall pay CFS $0.01 per barrel royalty on revenue received from
Wyoming BOO deals.
3.3. RGGL shall pay CFS a 5% royalty on the sale price of the Technology on
Wyoming deals, if such customer chooses to buy the Technology, rather than lease
or sublicense it.
3.4. RGGL shall issue CFS warrants to purchase the following common stock of
RGGL:
(a) 4,000,000 restricted warrant shares at an exercise price of $.21.
(b) 2,000,000 restricted warrant shares at an exercise price of $.40.
Such restricted shares underlying the warrants in (a) and (b) will bear
the following legend upon exercise:
The shares represented hereby have not been registered under
the Securities Act of 1933, as amended, and may not be
transferred or otherwise disposed of unless they have been
registered under such Act or pursuant to an exemption from
registration under such Act.
(c) 2,000,000 warrant shares at an exercise price of $.40 with resale
registration rights whereby RGGL agrees to file a resale
registration statement on Form SB-2 within thirty days of the
Effective Date with the SEC and register the 2,000,000 shares
underlying this warrant.
3.5. CFS will have the right to nominate two members (one to be Xxxxx
Xxxxxxxxxxx) to the Board of Directors of RGGL to fill current open vacancies;
such nominations to be accepted by RGGLs current Board. To the extent
permissible by law, the ongoing rights and ability of CFS to control the
replacement of such Directors will be subject to a certain CFS Warrantholder
Voting Agreement, to be negotiated in good faith by the Parties.
4.0 Protection of Patent Rights
4.1 CFS (or its principal Xxxxx Xxxxxxxxxxx), in RGGL's name (or assigned to
RGGL) and at RGGL's expense, agrees to apply for any and all patents ( two at
the minimum) in relation to the Technology, and to maintain patent protection in
the United States and in those foreign countries deemed appropriate.
4.2 Any inventions or improvements relating to the Technology made jointly or
separately by employees or consultants of CFS and RGGL and its Affiliates after
the Effective Date of this Agreement shall be considered the property of RGGL,
and in any event, shall be transferred to RGGL under the terms of this
Agreement.
5.0 Indemnification for Intellectual Property Rights
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5.1 CFS agrees to defend, indemnify, and hold harmless RGGL and its Affiliates
from and against any claim, suit, demand, or action alleging that the
Technology, and/or the sublicense or use of the Technology, infringes any
patent, copyright, trade secret, or other proprietary right of any third party
under the laws of any country, and CFS shall indemnify RGGL and its Affiliates
against all costs, expenses and damages arising from any such claim, suit,
demand, or action; provided, that:
(a) RGGL shall have given CFS prompt written notice of such claim,
suit, demand, or action; and
(b) RGGL shall cooperate with CFS in the defense and settlement
thereof; and
(c) CFS shall have control of the defense of such claim, suit, demand
or action and the settlement or compromise thereof.
5.2 If conditions of legal interference ("Legal Interference") including but not
limited to, litigation filed by a third party, or an injunction, temporary or
final, is threatened or obtained by a third party in any particular country
against RGGL's sale, sublicense or use of the Technology by reason of
infringement of a patent, copyright trade secret, or other proprietary right of
any third party within that particular country, then CFS may, at its option and
expense:
(a) procure for RGGL the right to continue sale or use of the
Technology in the particular country; or
(b) in the particular country, replace or modify the Technology for
RGGL, or such infringing portion thereof, in order that it no
longer infringes such patent, copyright, trade secret, or other
proprietary right in that particular country, provided that the
utility or performance is not adversely affected by such
replacement or modification in that particular country; or
(c) authorize RGGL, at the expense of CFS and through written
instructions from CFS, to pursue legal action in the name of RGGL
and to join CFS as a voluntary party plaintiff in order to procure
continued use by RGGL of the Technology.
6.0 Warranty and Representations
6.1 CFS WARRANTS THAT IT OWNS THE RIGHTS AND TECHNOLOGY TRANSFERRED UNDER THIS
AGREEMENT. CFS AGREES TO DEFEND INDEMNIFY, AND HOLD HARMLESS RGGL FROM AND
AGAINST ANY CLAIM, SUIT, DEMAND, OR ACTION ARISING FROM A CHALLENGE BY A THIRD
PARTY TO CFS'S CLAIMS TO OWNERSHIP OR RIGHT TO TRANSFER THE TECHNOLOGY AND CFS
SHALL INDEMNIFY RGGL AGAINST ALL COSTS, EXPENSES AND DAMAGES ARISING FROM ANY
SUCH CLAIM, SUIT, DEMAND, OR ACTION.
6.2 CFS agrees to protect, defend, indemnify and hold harmless RGGL, its
officers, employees, agents, representatives and subcontractors from any and all
claims, liability, damages, losses, costs and expenses sustained by RGGL, its
officers, employees agents, representatives and subcontractors for the death of
or injury to officers, employees, agents, representatives and subcontractors of
CFS, even though CFS may be protected from direct suit by any workers'
compensation laws.
6.3 RGGL warrants that it is a California corporation in good standing, and is
qualified to do business in all required jurisdictions.
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6.4 RGGL represents that it has approximately 17,900,000 shares outstanding as
of the Effective Date, 8,217,600 options to purchase common stock issued under
its 2006 Incentive Stock Option Plan, 100,000 options to purchase common stock
issued outside of the 2006 Incentive Stock Option Plan, and 6,503,940 warrants
to purchase common stock.
7.0 Term and Termination
7.1 Unless terminated in accordance with Section 2.3, this Agreement shall
remain in full force and effect in perpetuity
7.2 If RGGL shall be in default in making any issuance of warrant shares
hereunder at the times and in the manner herein provided, CFS may give written
notice to RGGL specifying the particulars of such default and, in the event RGGL
shall not remedy such default within ninety (90) days after such notice, CFS may
at its option terminate this Agreement.
7.3 If CFS shall be in breach of any material term of this Agreement, RGGL may
give written notice to CFS specifying the particulars of such default and, in
the event CFS shall not remedy such default within ninety (90) days after such
notice, RGGL may at its option terminate this Agreement and receive a refund of
the prepaid $200,000 royalty fee.
8.0 General
8.1 This Agreement shall not be assignable by either Party without the prior
written consent of the other Party hereto, except that it may be assigned
without such consent to the successor of either Party or to a person, firm or
corporation acquiring all or substantially all of the business assets of such
Party.
8.2 No modification of this Agreement shall be effective unless in writing and
signed by the Parties hereto.
8.3 Any notice to be served by one Party on the other Party may be served by
mailing the same, certified mail, postpaid, or hand delivered by commercial air
courier to the following addresses, respectively, as follows:
For RGGL:
00000 Xxxxx, Xxxxx 000
Xxxxxx Xxxxx Xxxxxxxxx, XX 00000
For CFS:
000 X. Xxxxxxx Xx. xx. 000
Xxxx, XX 00000
or to such other address as to which either Party shall give due written notice
from time to time.
8.4 This Agreement shall be construed and the legal relations between the
parties determined in accordance with the laws of the State of California.
8.5 If any provisions of this Agreement shall be held unenforceable, such
holding shall not affect the enforceability of any other provisions herein as
long as the unenforceable provision(s) does not materially affect the rights
granted in this Agreement.
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8.6 Neither RGGL nor CFS shall be responsible for delays or failures in
performance resulting from acts beyond their control. Such acts shall include,
but not be limited to, acts of God, strikes, riots, acts of war, epidemics,
fire, communication line failures, earthquakes, floods, or other disasters.
8.7 This Agreement states the entire agreement between RGGL and CFS and
supersedes all prior proposals, oral or written, and all, other prior
communications between RGGL and CFS relating to the subject matter of this
Agreement.
9.0 Right of First Refusal. CFS grants to RGGl the first right of refusal to the
purchase of the rights and title, or the opportunity to license a certain
Capacitive Deionization Technology, further defined on SCHEDULE 1.
IN WITNESS WHEREOF, the Parties hereto have caused this Agreement to be executed
by their duly authorized officers as of the dates shown proximate the execution
signatures but which shall have the Effective Date shown above.
RGGL
By: /s/ Xxxxx Xxxxxxxxxxxxx
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Name: Xxxxx Xxxxxxxxxxxxx
Title: CEO
CFS
By: /s/ Xxxxx Xxxxxxxxxxx
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Name: Xxxxx Xxxxxxxxxxx
Title: President
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SCHEDULE 1
Technology; SelectIX
1) It uses the intricate qualities of a particular resin to get 3 times
the capacity during service cycles (in this particular application)
than any comparable system.
2) It has an engineered fluidized bed system to deal with the 100% resin
expansion. The laterals have been designed and engineered with extreme
precision. The iron and solids in the stream are removed by the HEM
media, which will prevent plugging up of the ion exchange columns.
Ordinary sand filters cannot achieve this, because the stream has iron
in it. HEM removes the iron very efficiently whereas sand filters do
not.
3) It has have a control loop to monitor and control influent water
quality with treated water quality and self adjust the flow paths.
Additionally, the unit telemetry for data transmission is very
sophisticated. This system will have real time data and alarms 24 hours
a day, accessible via internet.
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AMENDMENT NO. 1
RG GLOBAL LIFESTYLES, INC. ("RGBL") AND CATALYX FLUID SOLUTIONS, INC. ("CFS")
This Amendment No. 1 ("Amendment") to the Technology Transfer Agreement dated
December 24, 2006 and made effective January 26, 2007 ("Agreement"), is entered
into this 31st day of March 2007 with an effective date of January 26, 2007, by
and between RGBL and CFS.
WHEREAS, the parties wish to amend the Agreement to change certain warrant
registration rights and exercise terms.
NOW THEREFORE, the parties agree to amend the Agreement as follows:
1. Paragraph 3.4 of the Agreement shall be deleted and replaced with the
following:
"3.4 RGGL shall issue the following warrants to purchase the common stock of
RGGL:
(a) 800,000 restricted warrant shares to Noor Xxxxxxxx Xxxxxxx at an
exercise price of $0.21
600,000 restricted warrant shares to Xxx Xxxxx at an exercise
price of $0.21
600,000 restricted warrant shares to Xxxxxx Xxxxxx at an exercise
price of $0.21
(b) 1,600,000 restricted warrant shares to Noor Xxxxxxxx Xxxxxxx at an
exercise price of $0.40
1,200,000 restricted warrant shares to Xxx Xxxxx at an exercise
price of $0.40
1,200,000 restricted warrant shares to Xxxxxx Xxxxxx at an
exercise price of $0.40
The restricted share certificates underlying the warrants in (a) and
(b) above will bear substantially the following legend upon issuance:
The shares represented hereby have not been registered under the
Securities Act of 1933, as amended, and may not be transferred or
otherwise disposed of unless they have been registered under such Act
or pursuant to an exemption from registration under such Act.
(c) 800,000 warrant shares to Noor Xxxxxxxx Xxxxxxx at an exercise
price of $0.21
600,000 warrant shares to Xxx Xxxxx at an exercise price of
$0.21
600,000 warrant shares to Xxxxx Xxxxx at an exercise price of
$0.21
The shares underlying the warrants in (c) above have resale
registration rights whereby RGBL agrees to file a registration statement on Form
SB-2 within thirty days of March 13, 2007."
Agreed:
RG Global Lifestyles, Inc. Catalyx Fluid Solutions, Inc.
/s/ Xxx Xxxxxxxxxxxxx /s/ Xxxxx Xxxxxxxxxxx
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Name: Xxx Xxxxxxxxxxxxx Name: Xxxxx Xxxxxxxxxxx
Title: CEO Title: President
