Exhibit 10.25
LICENSE AGREEMENT
THIS LICENSE AGREEMENT (the "Agreement") is made by and among Balantum
Oy ("Newco"), a Finnish corporation having a place of business at x/x
Xxxxxxxxxxxxxxxx Xxxxxxxx & Xxxx Xx, Xxxxxxxxxxxxxx 24 A, 00130 Helsinki,
Finland, Aquamax (International) Holding B.V. ("Aquamax"), a Dutch corporation
having a place of business at Xxxxxxxxxxxxx 0, Xxxxxxxxxxxxxx, 0000 AZ
Amsterdam, X.X. Xxx 0000, 0000 XX Xxxxxxxxx, Xxx Xxxxxxxxxxx and Xxxxxx
Corporation N.V. ("Xxxxxx"), a Netherlands Antilles corporation having a place
of business at World Trade Center Curacao, Unit BC.II.01-04, Piscadera Bay,
Willemstad, Curaco, Netherlands Antilles (collectively, Aquamax and Xxxxxx are
referred to as "AK"). Newco, Aquamax, Xxxxxx and, depending on the context, AK,
may each be referred to herein as a "Party" and collectively as the "Parties."
WHEREAS, Newco is the owner of the Newco Technology (as defined below);
and
WHEREAS, AK desires to obtain a license to make, use and sell Licensed
Products (as defined below) under the terms and conditions of this Agreement.
NOW, THEREFORE, in consideration of the mutual covenants and promises
made in this Agreement and other consideration, the receipt and sufficiency of
which is hereby acknowledged, the Parties, intending to be legally bound by this
Agreement, agree to the following terms and conditions:
1. DEFINITIONS
As used in this Agreement, the following terms shall mean:
1.1 "Affiliate(s)" of a Party means any corporation, partnership or
other individual or entity that directly or indirectly: (i) owns fifty percent
(50%) or more of the voting stock or equity of the Party; (ii) is owned, fifty
percent (50%) or more of the voting stock or equity, by the Party; (iii)
otherwise controls the Party; or (iv) is otherwise controlled by the Party.
1.2. "Closing Date" means the "Completion Date" as that term is defined
in paragraph 6.1 of that certain Asset Purchase Agreement by and between
Assignee and Xxxxxxx Technology Oy, Ltd., dated 20 July, 2001.
1.3 "Confidential Information" means any information disclosed to a
Party that is confidential, including, without limitation, all ideas, concepts,
structures, specifications, documentation, designs, techniques, drawings,
hardware, software, data, prototypes, processes, technology, know-how, methods
of design and/or development, inventions, and/or other technical, business,
marketing, planning information and/or data regardless of how such information
is transmitted (including orally, and/or in documentary and/or machine-readable
form, and/or in the form of samples from which the information may be derived)
that if disclosed in tangible form, is marked "Confidential," "Proprietary," or
if disclosed orally, is stated by the Disclosing Party to be confidential, or is
of such a nature that the Receiving Party in the exercise of reasonable business
judgment should know is confidential.
1
1.4 "Disclosing Party" means the Party whose Confidential Information
is revealed to, and/or learned by, the Receiving Party and/or its employees or
agents under this Agreement.
1.5 "Field of Use" means those applications of the Newco Technology, as
said technology existed as of the Effective Date, that: (1) have as their sole
purpose the desalination of seawater; and (2) are not capable of processing more
than 1,000 cubic meters of seawater per day.
1.6 "Improvements" means any Technical Information pertaining to the
Newco Technology developed after the Effective Date.
1.7 "Licensed Product(s)" means any products practicing the Newco
Technology within the Field of Use.
1.8 "Newco Patents" means any Patents listed on Schedule A and any
Patents arising out of any Improvements during the term of this Agreement.
1.9 "Newco Technology" means (i) the Patents listed on Schedule A of
this Agreement and (ii) any Improvements to (i) made during the term of this
Agreement, including any and all Patents arising out of such Improvements.
Schedule A may be supplemented and revised by Newco from time to time to reflect
any changes to the list of Patents included in the Newco Technology during the
term of this Agreement.
1.10 "Patent(s)" means patents, patent applications and utility models
or their equivalents, as well as worldwide counterparts, reissues,
continuations, continuations-in-part or divisions relating to such patents,
patent applications and utility models.
1.11 "Receiving Party" means the Party who receives or otherwise
learns, and/or whose employees or agents receive or otherwise learn,
Confidential Information of the Disclosing Party under this Agreement.
1.12 "Technical Information" means discoveries, inventions, works of
authorship, trade secrets, Confidential Information and know-how. Technical
Information includes, but is not limited to, research, engineering and
manufacturing information, information with respect to environmental and safety
requirements, analytical procedures and techniques, operating procedures,
maintenance practices, design information on manufacturing facilities and
equipment, machinery and equipment specifications, product test methods,
drawings, product production processes, computer files, product information and
other general technical information.
2. LICENSE GRANTS
2.1 License. Subject to the terms and conditions of this Agreement and
to the terms and conditions of that certain Co-Operation and Sales Agreement
between the Parties dated 20 July, 2001 Newco hereby grants to AK a paid-up,
worldwide license under the Newco Technology to make, use and sell Licensed
Products in the Field of Use. The grant made by Newco to AK hereunder shall be
exclusive for the five-year period commencing on the Closing Date, and shall be
non-exclusive thereafter.
2
2.2 Restriction on Rights. AK shall not have the right to transfer,
relicense or sublicense any rights granted to it hereunder by Newco in any way
or for any purpose.
3. PATENT MARKING; MAINTENANCE AND PROSECUTION
3.1 Marking. AK shall xxxx all Licensed Products where appropriate with
the applicable patent numbers in a manner sufficient to give proper legal notice
under the applicable patent laws, including notices in any documentation
accompanying the Licensed Products. Anything in this Agreement to the contrary
notwithstanding, AK agrees to indemnify Newco and hold Newco harmless for any
limitation or diminution of patent damages otherwise recoverable by Newco in any
patent litigation, where such limitation or diminution is attributable to any
failure by AK to xxxx Licensed Products as provided herein. The liability of
Aquamax and Xxxxxx hereunder shall be joint and several.
3.2 Maintenance and Prosecution. Newco will continue to maintain
responsibility at its discretion, for the filing and prosecution of Patent
applications, and maintenance of the Patents related to the Newco Technology,
including Patents Newco may file, prosecute and maintain at its discretion that
arise out of Improvements. AK agrees to reasonably cooperate with Newco as
necessary in connection with the filing and prosecution of any Patent
applications that arise out of Improvements by AK.
4. TERM AND TERMINATION UPON DEFAULT
4.1 Term. This Agreement is conditional upon and shall enter into force
only on the Closing Date, and shall continue until expiration of the last Patent
listed on Schedule A, as said Schedule existed as of the Closing Date, unless
earlier terminated as provided below.
4.2 Default. A Party will be deemed in default under this Agreement if
(i) it becomes insolvent, bankrupt, or any of its assets are seized or placed in
trust for the benefit of creditors and such insolvency, bankruptcy or seizure is
not dissolved or cured in sixty (60) days; or (ii) it fails to perform any
obligation required of it under this Agreement and fails to cure such default
within sixty (60) days after written notice from the other Party.
4.3 Remedies for Default. Upon any occasion of default hereunder, the
non-defaulting Party may pursue any remedy available under this Agreement or
otherwise, including without limitation terminating this Agreement upon notice
to the Party in default.
4.4 Survival. The following Sections and Paragraphs shall survive the
termination of this Agreement: 1, 2.2, 3.1, 4.2, 4.3, 4.4, 5, 6, 7 and 9.
5. INFRINGEMENT
5.1 Notice. Each Party shall inform the other Party promptly, in
writing, of any alleged infringement or claim of invalidity or unenforceability
of any Newco Patent by a third party and of any available evidence thereof.
3
5.2 Suits.
(a) During the term of this Agreement, Newco shall have the right, but
shall not be obligated, to prosecute or defend at its own expense any action
relating to the Newco Technology including, but not limited to, any action
relating to any infringement or claim of invalidity or unenforceability of any
Newco Patent.
(b) Subject to Paragraph 5.3 hereof, the total cost of any action
commenced or defended by a Party or the Parties shall be borne as follows: (i)
where the Parties agree to join together to bring or defend the action, the
costs shall be shared equally by Newco and AK, and any and all sums collected or
recovered in any such suit, whether by decree, judgment, settlement or
otherwise, shall be shared equally by the Parties after accounting for fees and
expenses borne by each Party; or (ii) where Newco brings or defends the action
without the agreement from AK to join the action, all costs will be paid solely
by Newco and any and all sums collected or recovered in any such suit, whether
by decree, judgment, settlement or otherwise, shall belong to Newco.
5.3 Assistance. In any suit that Newco individually may institute or
defend relating to the Newco Technology including, but not limited to, any
action to enforce any Newco Patent pursuant to this Agreement, AK shall, at the
request of Newco, cooperate in all respects and, to the extent possible, have
its employees and agents testify when requested and make available relevant
records, papers, information, samples, specimens, and the like.
6. REPRESENTATIONS AND WARRANTIES
6.1 Newco. Newco hereby warrants and represents that:
(a) it has full right and power to grant the rights, licenses, and
privileges herein given;
(b) performance of its obligations under this Agreement shall not
violate any existing agreement to which it is subject or a party;
(c) the execution and performance of this Agreement is within its duly
authorized corporate powers; and
(d) there are no pending or threatened lawsuits, proceedings, claims,
governmental actions or investigations of which Newco is aware which could, in
any way, adversely affect its performance of its obligations hereunder or reduce
the value of the rights granted hereunder.
4
6.2 AK. AK, individually and together, hereby warrant and represent
that:
(a) they have the full right and power to grant the rights, licenses,
and privileges herein given;
(b) performance of their obligations under this Agreement shall not
violate any existing agreement to which they are subject or a party;
(d) the execution and performance of this Agreement is within their
duly authorized corporate powers; and
(e) there are no pending or threatened lawsuits, proceedings, claims,
governmental actions or investigations of which AK is aware which could, in any
way, adversely affect the performance of their obligations hereunder or reduce
the value of the rights granted hereunder.
7. CONFIDENTIAL INFORMATION
7.1 Disclosure. A Receiving Party may reproduce, use, and/or disclose
Confidential Information only to the extent necessary for the purposes of this
Agreement, and even then only to those persons who (a) have a "need to know" in
connection with that Party's obligations under this Agreement and (b) have
obligations to maintain the confidentiality of such information that are
comparable in scope to those set forth hereunder.
7.2 Exclusions. The following information shall not be deemed
Confidential Information and shall not be subject to the restrictions of this
Section 7:
(a) information independently developed by the Receiving Party without
the use of any of the Disclosing Party's Confidential Information;
(b) information lawfully received free of confidentiality restriction
from another source having the right to furnish such information;
(c) information that is or becomes generally available to the public
without breach of this agreement by the Receiving Party;
(d) information that, at the time of disclosure to the Receiving Party,
was known to the Receiving Party free of confidentiality restriction as
evidenced by documentation in the possession of the Receiving Party; or
(e) information that the Disclosing Party agrees in writing is free of
such restrictions.
7.3 Compliance. The prohibitions on the disclosure of Confidential
Information under this Agreement shall not preclude a Receiving Party, on the
advice of counsel, from complying with applicable law or other demand under
lawful process, including a discovery request in a civil litigation, so long as
the Receiving Party first gives the Disclosing Party notice of the required
disclosure and reasonably cooperates with the Disclosing Party, at the
Disclosing Party's sole expense, in seeking reasonable protective arrangements
with respect to such Confidential Information. In no event shall the Receiving
Party's cooperation with the Disclosing Party require the Receiving Party to
take any action that, on the advice of their counsel, could result in the
imposition of any sanctions or other penalties against them.
5
7.4 Return or Destruction. At the termination or expiration of this
Agreement, each Party shall, upon written request of a Party, promptly gather
and return or destroy all Confidential Information (and any copies thereof
regardless of the medium of the copies) disclosed to them by a Disclosing Party
pursuant to this Agreement. This obligation on the part of the Parties to gather
and return or destroy Confidential Information extends as well to any other
persons to whom any of them has disclosed Confidential Information of a Party.
This obligation may be discharged by a written representation and warranty by
the obligated Party that the Confidential Information required to be gathered
and returned has already been destroyed.
8. NOTICES
Any notice to be given by a Party shall be in writing and served
personally or by certified or registered mail, DHL or Federal Express or
equivalent guaranteed overnight courier services to the address given on the
first page of this Agreement. Notice to Newco shall be addressed to x/x
Xxxxxxxxxxxxxxxx Xxxxxxxx & Xxxx Xx, Xxxxxxxxxxxxxx 24 A, 00130 Helsinki,
Finland, with a courtesy copy to Xxxxxx X. XxXxxxx, Esq., at Xxxxx & Xxxxx P.C.,
000 Xxxxx Xxxxxx, Xxx Xxxx, Xxx Xxxx 00000, Xxxxxx Xxxxxx of America, and notice
to AK shall be addressed to: (1) Aquamax (International) Holding B.V.,
Locatellikade 1, Parnassustoren, 1076 AZ Amsterdam, X.X. Xxx 00000, 0000 XX,
Xxxxxxxxx, Xxx Xxxxxxxxxxx, attention: _________________; and (2) Xxxxxx
Corporation N.V., World Trade Center Curacao, Xxxx XX.XX.00-00, Xxxxxxxxx Xxx,
Xxxxxxxxxx, Xxxxxxx, Xxxxxxxxxxx Antilles, attention: _________________, with a
courtesy copy to: Xx. Xxxxx Xxxxxxx, Xxxxxx Xxxxxxx & Co., Xxxxxxxxxxxxxxxx 00,
Xxxxxxxx, Xxxxxxx 00000. The notice shall operate and be deemed to have been
given on the date such notice is received. The Parties shall notify each other
of any change of their address and any failure to provide such notification that
results in the prevention or delay in delivery of any notice of default shall
not affect the sufficiency of service of any notice of default. Any delay in
serving a notice of default shall not be construed as a waiver of any default
hereunder.
9. GENERAL PROVISIONS
9.1 No Other Rights. Nothing in this Agreement shall be construed as
conferring by implication, estoppel or otherwise any license or other right to a
Party under any Patents, copyrights, trade secrets or other intellectual
property or industrial property other than the Newco Technology, as said
technology existed as of the Closing Date.
9.2 Relationship. Nothing contained in this Agreement shall be
construed to place Newco and AK, or either Aquamax or Xxxxxx, in the
relationship of partners or joint venturers, and no Party shall have the power
to obligate, bind, or act as the agent for the other in any manner whatsoever.
9.3 Disclaimer. Except as provided in Section 6 of this Agreement or as
may otherwise be provided in a separate agreement between the Parties, the
Parties make no representation, extend no warranties of any kind, either
express, implied, or otherwise, nor assume any responsibilities or liabilities
whatever with respect to the manufacture, use, importation or sale by AK or
concerning products incorporating Newco Technology or made by use of any
invention or technical information licensed under this Agreement.
6
9.4 Limitation Of Liability. Except as provided in paragraph 3.1
hereof, or as may otherwise be provided in a separate agreement between the
Parties, in no event shall the Parties be liable to each other for any special,
consequential, indirect or incidental damages, however caused, on any theory of
liability whether or not it has been advised of the possibility of such damages,
arising in any way out of this Agreement.
9.5 Assignment. Neither this Agreement nor any interest hereunder is
assignable in whole or in part; provided, however, that Newco shall have the
option to terminate this Agreement upon thirty (30) days' written notice to AK
for any change in ownership of greater than fifty percent (50%) of the equity
ownership of either Aquamax or Xxxxxx or upon any change in which a controlling
interest in either Aquamax or Xxxxxx is transferred to a third party. The
Parties agree that Newco may assign its interests in this Agreement to any of
its Affiliates. Any assignment that is not in accordance with this Paragraph is
null and void.
9.6 Applicable Law. This Agreement shall be enforced, governed by, and
construed in accordance with the laws of Finland, except to the extent that any
rights in United States Patents are licensed hereunder, the patent laws of the
United States shall control.
9.7 Arbitration. Any dispute, controversy or claim arising out of or
relating to this Agreement or the breach, termination or invalidity thereof
shall be settled by arbitration in accordance with the Finnish Act on
Arbitration Procedure. The arbitration tribunal shall consist of three
arbitrators one of whom shall be appointed by the Seller and one of whom shall
be appointed by the Purchaser. The arbitrators so appointed shall jointly
appoint the third arbitrator to act as chairman. Unless a party has appointed
its arbitrator or the arbitrators have failed to appoint the third arbitrator
within twenty-one (21) days from being requested to appoint its arbitrator of
from the date the second arbitrator was appointed, as the case may be, the
relevant arbitrator shall be appointed by the Committee of Arbitration of the
Central Chamber of Commerce of Finland. The place of arbitration shall be
Helsinki and the arbitration proceedings shall be carried out in the English
language.
9.8 Authority. Each person whose signature appears hereon warrants and
guarantees that he has been duly authorized and has full authority to execute
this Agreement on behalf of the entity on whose behalf this Agreement is
executed.
9.9 Partial Invalidity. If any provision of this Agreement shall be
found or held to be invalid or unenforceable, the remainder of this Agreement
shall be valid and enforceable to the full extent allowed by law.
9.10 Counterparts. This Agreement may be executed in counterparts,
which, taken together, shall be regarded as one and the same instrument. True
and correct copies of signed counterparts may be used in place of the originals
for any purpose.
7
9.11 Modification. No alteration, amendment, waiver, cancellation or
any other change in any term or condition of this Agreement shall be valid or
binding on a Party unless the same shall have been mutually assented to in
writing by the Parties.
9.12 Waiver. The failure of a Party to enforce at any time the
provisions of this Agreement, or the failure to require at any time performance
by the other Party of any of the provisions of this Agreement, shall in no way
constitute a present or future waiver of such provisions, nor in any way affect
the ability of a Party to enforce each and every such provision thereafter. No
waiver shall be binding unless in writing and signed by the Party waiving the
breach.
9.13 Independent Legal Advice. The Parties acknowledge that they have
been advised or had the opportunity to be advised by their own independently
selected counsel and other advisors in connection with this Agreement and enter
into this Agreement solely on the basis of that advice and on the basis of their
own independent investigation of all of the facts, laws and circumstances
material to this Agreement or any provisions thereof, and not in any manner or
to any degree based upon any statement or omission by the other Party and/or its
counsel.
9.14 Construction. Each Party has cooperated in the drafting of this
Agreement. Hence, this Agreement shall not be construed against any Party on the
basis that that Party was the drafter. The headings are for the convenience of
the Parties and are not to be used in construing the meaning of any provision of
this Agreement. As used in this Agreement: (a) masculine, feminine, and neutral
pronouns and any derivations thereof shall be deemed to include their respective
counterparts as context may require; (b) singular terms shall be deemed to
include the plural and vice versa as context may require; (c) conjunctive terms
shall include the disjunctive and vice versa as context may require; and (d)
"herein," "hereof," "hereunder," and other similar terms shall refer to this
Agreement as a whole, including the attached Schedule.
REMAINDER OF THIS PAGE INTENTIONALLY LEFT BLANK
8
9.15 Entire Agreement. The terms and conditions contained in this Agreement, and
the accompanying Schedules and Exhibits, constitute the entire agreement between
the Parties and supersede all previous agreements and understandings, whether
oral or written, between the Parties hereto, with respect to the subject matter
hereof. The Schedule attached to this Agreement is intended by the Parties to
form an integral part of the Agreement. It is incorporated herein by reference,
and may be updated from time to time as permitted in the Agreement.
BY EXECUTING THIS AGREEMENT, EACH OF THE PARTIES ACKNOWLEDGES THAT IT
HAS READ THIS AGREEMENT AND UNDERSTANDS ITS TERMS AND PROVISIONS.
BALANTUM OY AQUAMAX (INTERNATIONAL)
HOLDING B.V.
By /s/ Xxxxxx Xxxxxx By /s/ Rainer Sjostrum
-------------------------------- ---------------------------------
Name Xxxxxx Xxxxxx Name Rainer Sjostrum
------------------------------ -------------------------------
Title CEO Title
----------------------------- ------------------------------
Date 20 July 2001 Date 20 July 2001
------------------------------ -------------------------------
XXXXXX CORPORATION N.V.
By /s/ Rainer Sjostrum
--------------------------------
Name Rainer Sjostrum
------------------------------
Title
------------------------------
Date 20 July 2001
------------------------------
9
SCHEDULE A
Newco Patents and Patent Applications
10
