AGREEMENT (as amended on July 24, 2006)
EXHIBIT
10.1
AGREEMENT
(as
amended on July 24, 2006)
This
License Agreement is made and
entered into as of the 9th day of
June, 2006,
by and between ▇▇▇▇▇▇▇▇▇▇▇▇.▇▇▇, Inc. (“PVDV”) located and doing business at ▇▇
▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇, (hereinafter “LICENSOR”), ▇▇▇▇▇▇▇▇
▇▇▇▇▇▇ at ▇.▇. ▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇, and Nuvo Energy,
Inc., a Colorado corporation (hereinafter “LICENSEE”).
WHEREAS,
LICENSOR is the owner of
Intellectual Property pertaining to the production and composition of
multi-stacked CdS/CdSe solar energy photovoltaic cells;
WHEREAS,
LICENSOR has filed United
States Provisional Patent Application Serial Number 60783638 and Patent
Co-operation Treaty (PCT) Application filed on April 12, 2006. Based
on the forgoing provisional application as set forth in Exhibit A;
WHEREAS,
LICENSOR desires to have
manufactured, sell and offer for sale LICENSOR’s photovoltaic solar energy
cells; and
WHEREAS,
LICENSOR desires to grant to
LICENSEE authorization to have manufactured, sell and offer for sale its
photovoltaic solar energy cells, subject to the terms and conditions in this
Agreement (the “Products”);
NOW,
THEREFORE, in consideration of the
premises and mutual covenants and provisions hereinafter set forth, it is agreed
by and between the parties hereto as follows:
1. Subject
to the terms and conditions hereof, LICENSOR grants to LICENSEE an exclusive
license on a worldwide basis for the Intellectual Property set forth in United
States Provisional Patent Application 60783638 and Patent Co-operation Treaty
(PCT) Application filed on April 12, 2006, including: all patents issued
pursuant to these applications or amendment thereof and the right to use all
applicable copyrights, trademarks and related intellectual property obtained
on
or in connection with the process and Products; the right to use all know-how,
technology, techniques and processes necessary or useful in connection with
the
licensed Intellectual Property; and the right to license and use any refinements
or improvements made to the licensed Intellectual Property during the term
of
this Agreement.
2. In
the manufacture and sale of Products, LICENSEE shall maintain standards of
quality in compliance with guidelines to be established by LICENSOR and with
all
applicable laws and regulations and shall conform to relevant industry standards
of quality and safety.
3. Upon
the request of LICENSOR, LICENSEE shall permit LICENSOR or its duly authorized
representatives to inspect on the premises of LICENSEE during normal business
hours.
4. Samples
of all advertising, promotional materials, catalogs, packages, containers,
labels, and labeling referring or relating to the Products must be submitted
to
LICENSOR and receive LICENSOR’s written approval prior to their
use. Approval or disapproval shall lie solely in LICENSOR’S
discretion. LICENSOR agrees to use reasonable efforts to complete
such review on a timely basis. In the event LICENSOR shall not have
provided written notice to LICENSEE of LICENSOR’s disapproval of any such
material within 30 days of LICENSOR’s receipt of the description thereof,
LICENSOR’s approval shall be deemed to have been given, in writing, in
accordance with the terms of this Agreement. LICENSEE shall provide
from time to time additional samples of all advertising, promotional materials,
catalogs, packages, containers, labels, and labeling referring or relating
to
the Products after
beginning
their approval use upon LICENSOR’s reasonable request.
5. LICENSEE
acknowledges LICENSOR’s exclusive right, title and interest in and to the
Intellectual Property and recognizes that all uses by LICENSEE shall inure
to
the benefit of LICENSOR. LICENSEE shall not at any time represent
that it has any ownership in the Intellectual Property. LICENSEE
shall not at any time represent that it has any rights other than the rights
to
use expressly provided for in this Agreement. If this Agreement is
terminated or expires, except as the parties may otherwise agree in writing,
all
rights granted to LICENSEE hereunder shall continue to be owned by
LICENSOR. LICENSEE shall cooperate with LICENSOR whenever LICENSOR
deems it necessary in claiming rights in the Intellectual Property throughout
the world, including executing all documents LICENSOR deems necessary or
desirable in connection with any registrations. Accordingly, LICENSEE
agrees that it shall not, during the term of this Agreement or thereafter,
attack the title or any rights of LICENSOR in and to the Intellectual Property
or attack the validity of this Agreement for the purpose of invalidating any
of
LICENSOR’s rights, title or interest.
6. LICENSEE
shall notify LICENSOR in writing of all instances of any potentially conflicting
or infringing use of any of the Intellectual Property or any confusingly
similar. LICENSOR shall have the exclusive right, at LICENSOR’s
expense, to determine what action, if any, is to be taken in each such
instance. If LICENSOR decides to take any action, LICENSEE agrees to
become a party to such action if necessary, and to cooperate with LICENSOR
in
the prosecution of any such action or proceeding involving any alleged
infringement or other conflict respecting LICENSOR’s rights. All
damages or other monetary relief recovered in such action by reason of a
judgment or settlement shall first be paid to LICENSEE for actual damages
representing injury sustained by LICENSEE, with the balance, if any, paid to
LICENSOR.
7. If
any claim, demand or suit for infringement shall be asserted against LICENSEE
on
account of LICENSEE’s use, LICENSEE shall give LICENSOR timely notice of such
claim, demand or suit, and LICENSOR shall have to the right at its discretion
to
either defend or settle such claim, demand or suit. LICENSEE agrees
to cooperate with LICENSOR in the defense or settlement of any such claim,
demand or suit for infringement. If LICENSOR declines at its
discretion to defend or settle any such claim, demand or suit, LICENSEE may
do
so at LICENSEE’s expense.
8. For
the rights granted to LICENSEE by this Agreement, LICENSEE shall pay LICENSOR
as
follows:
|
a.
|
Total
aggregate license fee of $250,000.
|
|
b.
|
$150,000
shall be payable upon signing and the $100,000 balance is payable
no later
than August 11, 2006.
|
9. The
term of this Agreement shall be for a ten year period from June 9, 2006 through
July 10, 2016. This license shall be automatically renewable for
successive ten year terms under the same terms and conditions as provided for
in
this Agreement, subject to any alterations and amendments as may be mutually
agreed to by the parties, unless either party notifies the other not less than
90 days prior to the termination date of their intention to terminate the
Agreement.
10. LICENSOR
or its representatives may upon reasonable notice at reasonable times during
any
business day of LICENSEE inspect, and make copies of, all books, ledgers,
accounts, correspondence, memoranda or other records and documents of LICENSEE
to the extent they pertain to transactions under this Agreement.
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11. This
Agreement and all rights and duties herein are personal to LICENSEE and shall
not, without LICENSOR’s prior written approval, be assigned, mortgaged,
sublicensed, or otherwise encumbered by LICENSEE or by operation of law, except
that LICENSEE may assign any of its rights or duties hereunder to a wholly-owned
direct or indirect subsidiary of LICENSEE; provided, however, LICENSEE shall
remain fully liable for all obligations imposed on LICENSEE by this
Agreement. Any attempt by LICENSEE to grant a sublicense or to
assign, mortgage, encumber or part with possession or control of the Agreement,
other than as expressly contemplated by the immediately preceding sentence,
shall be void and shall constitute a material breach of this
Agreement. This Agreement and any or all rights and duties may be
assigned by LICENSOR without the consent of LICENSEE provided no such assignment
shall release LICENSOR from its obligations hereunder.
12. Nothing
in this License shall be deemed or construed by LICENSOR, LICENSEE, or any
third
party as creating a relationship of principal and agent, joint venture, or
partnership between the parties hereto, and neither shall so hold itself out
to
the public.
13. This
Agreement shall be binding upon the successors and assigns of both
parties.
14. A
waiver by either party hereto of any right hereunder, or of any failure to
perform, or of any breach by the other party, shall not be a waiver of any
other
right hereunder or of any subsequent breach or failure by the other party,
whether of a similar nature or otherwise.
15. This
Agreement forms the entire understanding and agreement between the parties
with
respect to the subject matter of this Agreement and supersedes any and all
prior
negotiations, understandings, or agreements in regard to such subject
matter.
16. This
Agreement may be amended, modified or discharged only by a written instrument
expressly setting forth such amendment or modification and duly executed by
LICENSOR and LICENSEE, and the provisions of this paragraph may not be waived
except by a written instrument so executed.
17. Notices
under this Agreement shall be served by certified mail or express courier or
regular mail by the parties hereto at the addresses shown below.
18. In
the event of bankruptcy or insolvency of LICENSEE, this Agreement shall be
deemed null and void.
19. The
parties hereby agree that LICENSOR will provide LICENSEE certain services as
related to sales, marketing, manufacturing and order
fulfillment. These arrangements will be set forth in detail in a
separate agreement. LICENSEE agrees to pay LICENSOR an additional fee
of $5,000 per month for a period of 36 months for these
services. Monthly payments are made in arrears and begin 30 days
following the date of this Agreement.
20. The
LICENSOR is the sole and exclusive owner of all right, title and interest in
and
to the Intellectual Property subject to this License, free and clear of any
lien, security interest, claim of right or other encumbrance of any
sort.
21. The
LICENSOR has no knowledge or information of, and has received no notice of
any
sort from any party, asserting a lien, charge, claim or interest in the
Intellectual Property or challenging the right of the LICENSOR to the
Intellectual Property.
22. The
LICENSOR has not granted any license or other rights of any sort of, in or
to
the Intellectual Property to any other person or entity.
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23. There
have not been and there are no pending or threatened suits, claims, actions
or
other proceedings of any sort involving LICENSOR relating to the Intellectual
Property, including but not limited to any concerning alleged infringement,
improper use, or misappropriate of any of the Intellectual
Property.
24. There
are no actions, challenges to validity, interferences or other contested
proceedings before the United States Patent and Trademark Office, or in any
Federal, state or other court or before any other governmental entity relating
to the Intellectual Property or any pending application with respect to any
of
the Intellectual Property. LICENSOR has no knowledge of any prior art
or any claim by others of the existence of prior art or any other grounds that
would prevent LICENSOR from obtaining a patent for the Intellectual
Property.
25. The
LICENSOR has not asserted any claim of a violation or infringement by others
of
its rights to or in connection with any of the Intellectual
Property.
26. The
LICENSOR has filed patent application(s) and is diligently and timely pursuing
the process of obtaining one or more patents with respect to the Intellectual
Property, and has taken all reasonable and prudent steps to protect the
Intellectual Property from infringement by any other person or entity, and
agrees to take such future steps as is reasonably necessary to obtain and
perfect such patents.
27. The
consummation of the transaction provide for in this License will not alter,
impair or modify any of LICENSOR’S rights in the Intellectual Property, except
to the extent expressly provided for in the License.
28. Both
LICENSOR and LICENSEE are corporations that have been duly organized and are
in
good standing in their respective state of incorporation each with the power
to
carry out the terms and conditions of this Agreement as agreed to by their
executing representatives who have been duly authorized with the proper
corporate authority in compliance with all applicable laws.
29. There
are no orders, judgments, injunctions or directives of any Federal, state or
other court, or of any governmental agency that would restrain, limit or
otherwise interfere with the transactions provided for in this
License.
30. Contact
information is as follows:
LICENSOR: ▇▇.
▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇▇▇▇.▇▇▇,
Inc.
▇▇
▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇▇▇
▇▇▇▇▇▇, ▇▇▇▇▇▇▇
▇▇▇▇▇
LICENSEE: Mr.
▇▇▇▇▇ ▇▇▇▇, President
Nuvo
Energy, Inc.
▇▇▇
▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇
▇▇▇
▇▇▇▇
▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇
▇▇▇▇▇
(▇▇▇)
▇▇▇-▇▇▇▇
31. This
Agreement shall be deemed to be entered into in Florida and shall be governed
and interpreted according to the laws of the State of Florida, United States
of
America.
[Signature
Page Follows]
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Executed
by LICENSOR at ▇▇▇▇▇▇▇▇▇▇ Island, Florida this 9th
day of
June, 2006.
▇▇▇▇▇▇▇▇▇▇▇▇▇.▇▇▇,
Inc.
By:: /s/
▇▇▇▇▇▇▇▇
▇▇▇▇▇▇
Title: President
and
Individually
And
Individually as of June 9,
2006
Name: /s/
▇▇▇▇▇▇▇▇
▇▇▇▇▇▇
Executed
by LICENSEE at West Palm Beach, Florida this 9th day
of June, 2006.
Nuvo
Energy,
Inc.
By: /s/
▇▇▇▇▇
▇▇▇▇
Name: ▇▇▇▇▇
▇▇▇▇
Title: President
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