Exhibit 6.2
LANL Control Number: 00-00-00000
EXCLUSIVE FIELD OF USE PATENT LICENSE AGREEMENT BETWEEN THE REGENTS OF THE
UNIVERSITY OF CALIFORNIA AND DCH TECHNOLOGY, INC.
LANL Control Number: 00-00-00000
TABLE OF CONTENTS
BACKGROUND 1
1. DEFINITIONS 1
2. GRANT 3
3. SUBLICENSES 3
4. FEES AND ROYALTIES 4
5. DILIGENCE 5
6. REPORTS 5
7. BOOKS AND RECORDS 6
8. TERM OF THE LICENSE AGREEMENT 6
9. TERMINATION BY THE UNIVERSITY 7
10. TERMINATION BY THE LICENSEE 8
11. PATENT PROSECUTION AND MAINTENANCE 8
12. USE OF NAMES, TRADENAMES, AND TRADEMARKS 8
13. WARRANTY BY THE UNIVERSITY 9
14. INFRINGEMENT 10
15. WAIVER 10
16. ASSIGNABILITY 11
17. INDEMNIFICATION - PRODUCT LIABILITY 12
18. LATE PAYMENTS 12
19. NOTICES 13
20. FORCE MAJEURE 13
21. EXPORT CONTROL LAWS 13
22. PREFERENCE FOR UNITED STATES INDUSTRY 13
23. DISPUTE RESOLUTION 13
24. CONFLICT OF INTEREST 13
25. PATENT MARKING 14
26. SURVIVOR 14
27. GOVERNMENT APPROVAL OR REGISTRATION 14
28. DISPOSITION OF LICENSED PRODUCTS 14
29. MISCELLANEOUS 14
Appendix A - PATENT RIGHTS AND FIELD OF USE 00
Xxxxxxxx X - CONFIRMATORY LICENSE 18
Appendix C - FEES AND ROYALTIES 19
Appendix D - MILESTONES 20
Appendix E - PROGRESS REPORT FORMAT 21
Appendix F - FINANCIAL REPORT FORMAT 22
Appendix G - DESIGNATION OF LICENSING TEAM 23
LIMITED EXCLUSIVE FIELD OF USE PATENT LICENSE AGREEMENT
DCH TECHNOLOGY, INC.
THIS LICENSE AGREEMENT is entered into by and between THE REGENTS OF THE
UNIVERSITY OF CALIFORNIA, a nonprofit educational institution and a public
corporation of the State of California, hereinafter referred to as the
"University;" and DCH Technology, Inc., 00000 Xxx. Xxxxxxx, Xxxxx 0, Xxxxxxxx,
XX 00000, a Colorado Corporation, hereinafter referred to as the "Licensee," the
parties to this License Agreement being referred to individually as a "Party,"
and collectively as "Parties."
BACKGROUND
The University conducts research and development at the Los Alamos National
Laboratory (LANL) for the U.S. Government under Contract No. W-7405-ENG-36 with
the U.S. Department of Energy (DOE).
Rights in inventions and technical data made in the course of the University's
research and development at LANL are governed by the terms and conditions of the
Contract.
Certain TECHNOLOGY relating to an Annular Feed Air Breathing Fuel Cell Stack has
been developed in the course of the University's research and development at
LANL and is covered by the University's PATENT RIGHTS as defined hereinbelow.
The University desires that such TECHNOLOGY be developed and utilized to the
fullest extent possible so as to enhance the accrual of economic and
technological benefits to the U@S. domestic economy and to provide the benefit
of federally sponsored research to U.S. industrial competitiveness.
The University is therefore willing to grant to Licensee, and the Licensee
desires to obtain from the University certain exclusive rights for the
commercial development, manufacture, use, and sale of the TECHNOLOGY.
NOW, THEREFORE, the Parties agree as follows-
1. DEFINITIONS
1.1 "TECHNOLOGY" means technical information, know-how, data and PATENT RIGHTS
owned or controlled by the University and relating to Annular Feed Air Breathing
Fuel Cell Stacks.
1.2 "PATENT RIGHTS" means the University's rights arising from U.S. patents or
applications, including any continuing applications, divisionals, and reissues
thereof (but not including continuations-in-part); and any patents issuing on
said applications where elected by Licensee and identified in Appendix A,
attached hereto.
1.3 "LICENSED METHOD" means any method, procedure or process whose use would
constitute, but for the license granted to Licensee herein, an infringement of
any subsisting claim of any patent or patent application identified in Appendix
A.
1.4 "LICENSED PRODUCT" means any article of manufacture, machine or
composition of matter whose manufacture, use, sale, or offer for sale would
constitute, but for the license granted to Licensee herein, an infringement of
any subsisting claim of any patent or patent application identified in Appendix
A, and any article of manufacture, machine or composition of matter produced
through the practice of LICENSED METHOD or whose only substantial use is to
practice LICENSED METHOD.
1.5 "LICENSED INVENTION" means any LICENSED PRODUCT or LICENSED METHOD.
1.6 "SALES" means disposing of LICENSED PRODUCTS by sale, lease, or other
delivery or practicing LICENSED METHOD. A Sale occurs when LICENSED PRODUCTS are
invoiced, or when delivered to a third person, whichever occurs first.
1.7. "SALES PRICE" means the invoice prices for SALES or, if LICENSED
INVENTIONS are not sold but otherwise disposed of, the selling price at which
products of similar kind and quality, sold in similar quantities in which
LICENSED INVENTIONS are being disposed of, are being offered for sale by
Licensee. Where such LICENSED PRODUCTS are not currently being offered for Sale
by Licensee, the SALES PRICE for purposes of computing royalties is the average
selling price at which similar kind and quality, sold in similar quantities, are
then currently being offered for sale by other companies. If such products are
not currently sold or offered for sale by others, then the SALES PRICE, for
purposes of computing royalties, is Licensee's cost of manufacture determined by
Licensee's customary accounting procedures, plus Licensee's standard xxxx-up.
1.8 "NET SALES" means the gross amounts for SALES at SALES PRICE by Licensee
and its' sublicensee(s), less the following deductions where applicable: (a)
SALES returns; (b) normal and customary allowances, (c) trade discounts; (d)
SALES to the U.S. Government pursuant to Paragraph 4.2 and (e) transportation
charges, duties and tariffs only if separately stated on an invoice; but before
deduction of sales and excise taxes, costs of insurance, and agents'
commissions.
1.9 "AFFILIATE" means:
a) any business entity that owns fifty (50%) percent or more of Licensee's
outstanding stock; or
b) any business entity of which Licensee owns fifty (50%) or more of such
entity's outstanding stock.
1.10 "FIELD OF USE" means a limitation of the application or utilization of
PATENT RIGHTS and is defined in Appendix A.
2. GRANT
2.1 The University grants to the Licensee, subject to Paragraphs 2.2 and 2.3,
an exclusive license to make, have made, use, import, sell and offer to sell
LICENSED INVENTION under the PATENT RIGHTS, with the right to sublicense
others under the terms of Article 3, limited to the FIELD OF USE recited in
Appendix A.
2.2 Rights not expressly granted to Licensee herein are expressly reserved to
the University.
2.3 The University expressly reserves the right to use the TECHNOLOGY,
including the right to make, have made, use and have used LICENSED INVENTION for
any purpose, including Cooperative Research and Development Agreements (CRADAs),
Work for Others (WFOs), and User Facility Agreements (UFAs).
2.4 The U.S. Government has a nonexclusive, nontransferable, irrevocable,
paid-up license to practice or have practiced throughout the world, for or on
behalf of the United States Government, inventions covered by the University's
PATENT RIGHTS, and has certain other rights under 35 U.S.C. 200-212 and
applicable implementing regulations and under the U.S. Department of Energy
Confirmatory License, attached as Appendix B to this License Agreement.
2.5 Under 35 U.S.C. 203, the U.S. Department of Energy has the right to
require the Licensee to grant a nonexclusive, partially exclusive or exclusive
license under the PATENT RIGHTS in any field of use to a responsible applicant
or applicants, 48 CFR 27.304-1(g).
2.6 The Licensee will make available to the University and will grant an
irrevocable, paid-up, royalty-free nonexclusive license to the University to
make and use for purposes of performing work for and on behalf of the U.S.
government any improvements or developments to the TECHNOLOGY made by Licensee.
3. SUBLICENSES
3.1 The University grants to Licensee the right to grant sublicenses to third
parties to make, have made, use and sell LICENSED INVENTIONS in which the
Licensee has current limited exclusive rights under this License Agreement.
(a) Sublicenses granted under this clause must contain all of the conditions,
restrictions and reservations of this License Agreement, except for those
provisions related too the fees and royalties, and shall preserve the rights and
reservations of the University and the U.S. Government existing under this
License Agreement.
3.2 Licensee shall provide the University with a copy of each sublicense by at
least thirty (30) days prior to its execution.
3.3. Licensee must pay to the University the payments prescribed in Appendix C,
and deliver all reports due the Licensor from sublicensees. With respect to any
sublicense, this obligation continues as long as a sublicense granted by
Licensee is in effect, and is an obligation of the Licensee whether or not
royalty payments are actually received by Licensee from its sublicensee(s).
3.4 Termination of this License Agreement automatically operates as an
assignment by Licensee to the University of all Licensee's right, title and
interest in and to each sublicense granted by Licensee. If this License
Agreement is terminated by either Party, any sublicensee(s) not in default of
the terms and conditions of its sublicense agreement with Licensee, may make a
written election to continue such sublicense agreement as a license agreement
with the University. Licensee will give its' sublicensee(s) written notice
thirty (30) days prior to the effective date of termination of this License
Agreement. Sublicensee(s) must submit a written election to the University
within thirty (30) days thereafter.
4. FEES AND ROYALTIES
4.1 For the rights, privileges and license granted under this License
Agreement, Licensee shall pay to the University the fees and royalties specified
in Appendix C.
4.2 Notwithstanding Paragraph 4.1 above, Licensee has no obligation to pay
royalties on any SALE of any LICENSED INVENTION to the U.S. Government or any
agency thereof or any U.S. Government contractor who certifies that its purchase
of the LICENSED INVENTION is for or on behalf of the U.S. Government. Licensee
will not impose royalty charges on SALES of LICENSED INVENTION to U.S.
Government entities, and will refund to them any royalty collected on such
SALES.
4.3 The first royalty payment due under this License Agreement is based on
NET SALES by Licensee from the effective date of this License Agreement through
June 30" of the same calendar year, if the effective date is before June 30th,
or, through December 31st, if the effective date is after June 30th. Payment
must be made within one month from the end of such period. Subsequent royalty
payments shall be calculated based on NET SALES by Licensee during the
semiannual periods extending from January lst through June 30th and from July
1st through December 31st of each year, for as long as this License Agreement
remains in effect. Royalty payments must be paid within one month from the end
of the respective semiannual period (i.e. July 30th and January 31st).
4.4 All payments due the University must be paid in United States currency to
the University of California, Los Alamos National Laboratory, at the address set
forth in Paragraph 19.1. Licensee must convert NET SALES invoiced in foreign
currencies into equivalent United States currency at the exchange rate for the
foreign currency prevailing as of the last day of the reporting period, as
reported in the Wall Street Journal.
5. DILIGENCE
5.1 Licensee shall use its best efforts to bring one or more LICENSED
INVENTION to market through a thorough, vigorous and diligent program for
exploitation of the PATENT RIGHTS and to continue active, diligent marketing
efforts for one or more LICENSED INVENTION throughout the life of this License
Agreement.
5.2 To be in compliance with Paragraph 5.1, Licensee must adhere to the
Milestones set out in Appendix D.
5.3 Article 5 is a material term of this Agreement, without which the license
grant under Article 2 would not have been made, and Licensee's failure to
perform in accordance with Paragraphs 5.1 and 5.2 above shall be grounds for the
University to terminate this License Agreement pursuant to Paragraph 9.1 of this
License Agreement.
6. REPORTS
6.1 Progress Reports. Licensee must submit semiannual Progress Reports
certified by an officer of the Licensee. Such reports are due on the date that
royalty payments are due (July 30th and January 31st), AND MUST BE SUBMITTED
REGARDLESS OF WHETHER ANY PAYMENT IS MADE. This report covers the Licensee's
activities related to the development of the TECHNOLOGY and the securing of
approvals necessary for commercialization of the TECHNOLOGY. The Progress
Reports must conform with the Progress Report Format set forth in Appendix E
hereof. Progress Reports marked by Licensee as proprietary financial or business
information of Licensee will be treated by the University as proprietary
information.
6.2 Financial Reports. Licensee must submit semiannual Financial Reports. Such
reports are due on the date that royalty payments are due (July 30th and January
31st), AND MUST BE SUBMITTED REGARDLESS OF WHETHER ANY PAYMENT IS ACTUALLY MADE.
Financial Reports must be certified by an officer of the Licensee, must conform
with the Financial Report Format set forth in Appendix F hereof, must cover the
period for which royalty payments are calculated, and must show total SALES or
commercial uses made of LICENSED INVENTION by Licensee and any sublicensee(s)
during the reporting period. IF NO SALE, SUBLICENSE, OR USE OF LICENSED PRODUCT
OR LICENSED METHOD HAS BEEN MADE DURING A REPORTING PERIOD, A STATEMENT TO THIS
EFFECT MUST BE MADE. Financial Reports marked by Licensee as proprietary
financial or business information of the Licensee will be treated as such by the
University. Licensee's failure to submit Financial Reports pursuant to this
Paragraph shall be grounds for the University to terminate this License
Agreement pursuant to Paragraph 9.1.
7. BOOKS AND RECORDS
7.1 The Licensee must keep books and records according to Generally Accepted
Accounting Principles, accurately showing all SALES of LICENSED PRODUCTS or
practice of the LICENSED METHOD by Licensee or sublicensees under the terms of
this License Agreement. Such books and records must be open to inspection and
audit on a proprietary basis by representatives or agents of the University at
reasonable times, but in no event more than once for each calendar year, for the
purpose of verifying the accuracy of the semiannual Financial and Progress
Reports and the royalties due. Licensee may request that any such inspection and
audit be conducted by an independent auditor, in which event, Licensee will pay
the reasonable costs of such auditor.
7.2 The fees and expenses of the University's representatives performing the
inspection and audit will be borne by the University. However, if an error in
royalties owed the University of more than ten thousand U.S. Dollars
($10,000.00) is discovered by the representatives of the University, then
Licensee will pay the fees and expenses of said representatives within thirty
(30) days after receipt of invoice.
7.3 The books and records required by Article 7 must be preserved for at
least three (3) years from the date that the royalty payments were due.
8. TERM OF THE LICENSE AGREEMENT
8.1 This License Agreement is effective as of the later of the dates of
execution by the Parties and the University's receipt of the License Issue Fee
(as specified in Appendix C).
8.2 This License Agreement is in full force and effect from the effective
date and remains in effect until the expiration of the last to expire of the
patents included within the University's PATENT RIGHTS, unless sooner terminated
by operation of law or by acts of either of the Parties in accordance with the
terms of this License Agreement.
8.3 Licensee shall provide notice to University of its intention to file a
voluntary petition in bankruptcy or of another party's intention to file an
involuntary petition in bankruptcy for Licensee, said notice to be received by
University at least thirty (30) days prior to filing such petition. The
University may terminate this License Agreement upon receipt of such notice at
its sole discretion. Licensee's failure to provide such notice to University
will be deemed a material, pre-petition, incurable breach of this License
Agreement and the Agreement will terminate automatically on the date of filing
such voluntary or involuntary petition in bankruptcy.
9. TERMINATION BY THE UNIVERSITY
9.1 If the Licensee fails to deliver to the University any report when due, or
fails to pay any royalty or fee when due, or if the Licensee breaches any
material term of this License Agreement, including, but not limited to, Article
5. DILIGENCE, the University may give written notice of default to the Licensee.
If the Licensee fails to cure the default within thirty (30) days from the date
of delivery of notice to Licensee, the University has the right to terminate
this License Agreement. This License Agreement will terminate upon delivery of
written notice of termination to the Licensee. Termination does not relieve the
Licensee of its obligation to pay any royalty or license fees due or owing at
the time of termination and does not impair any accrued right of the University.
Licensee will return all tangible property given to Licensee by the University
in support of the rights granted hereunder and return or destroy all intangible
property as directed by the University.
10. TERMINATION BY THE LICENSEE
10.1 The Licensee may terminate this License Agreement by giving written notice
to the University. Such termination will be effective ninety (90) days from the
date of delivery of the notice, and all the Licensee's rights under this License
Agreement will cease as of that date.
10.2 If Licensee exercises its option to terminate this License Agreement
without cause, then Licensee agrees to pay the University, the Annual License
Fee multiplied by the number of years remaining under this License Agreement
(from the date of notification of termination to the expiration of the last to
expire of the patents included within the University's PATENT RIGHTS) multiplied
by 0.70, in a lump sum as liquidated damages, on the effective date of
termination.
10.3 Termination pursuant to this Article does not relieve the Licensee of any
obligation or liability accrued by Licensee prior to the effective date of
termination or affect any rights of the University arising under this Agreement
prior to termination. Licensee will return all tangible property given to
Licensee by the University in support of the rights granted hereunder and return
or destroy all intangible property as directed by the University.
11. PATENT PROSECUTION AND MAINTENANCE
11.1 The University will diligently prosecute any U.S. patent applications
identified in Appendix A, and will maintain any U.S. patents identified in
Appendix A, using counsel of its choice. The University will provide the
Licensee, on request, with copies of relevant documentation relating to any such
patent prosecution. The Licensee will hold such documentation in confidence.
11.2 The University will use its best efforts to amend any patent application
to include claims reasonably requested by the Licensee and required to protect
the LICENSED INVENTION.
11.3 The Licensee acknowledges that Patent Rights in foreign countries are not
available under the University's PATENT RIGHTS.
12. USE OF NAMES, TRADENAMES, AND TRADEMARKS
12.1 Nothing contained in this License confers any right to use in advertising,
publicity, or other promotional activities any name, tradename, trademark, or
other designation of either Party hereto (including any contraction,
abbreviation, or simulation of any of the foregoing). Unless required by law,
the use of the name "the University of California" or the name of any facility
or campus of the University of California is expressly prohibited.
12.2 The University may disclose to third parties the existence of this License
Agreement and the extent of the grant in Article 2, but must not disclose
information identified as proprietary by Licensee under 12.4, except where the
University is required to release the information under either the California
Public Records Act or other applicable law. A decision to release information
under applicable law will be at the sole discretion of the University.
12.3 Licensee may disclose to third parties the existence of this License
Agreement and the terms and conditions to the extent determined appropriate by
Licensee.
12.4 Licensee will xxxx those portions of a copy of this License Agreement
which Licensee believes contain proprietary business information of Licensee and
return such copy to the University within thirty (30) days of the effective date
of this License Agreement.
13. WARRANTY BY THE UNIVERSITY
13.1 The University warrants that it has the lawful right to grant this
license, subject to DOE assignment of rights in the TECHNOLOGY to the University
in the event such rights are not owned by the University, and that it has not
granted any rights under the University's PATENT RIGHTS to any other party that
diminish any right granted to Licensee, except as required by action of law or
by the University's prime contract with DOE.
13.2 This license is provided WITHOUT warranty of merchantability or fitness
for a particular purpose or any other warranty, express or implied. The
University makes no representation or warranty that the LICENSED PRODUCTS or
LICENSED METHODS will not infringe any patent or other proprietary right.
13.3 IN NO EVENT WILL THE UNIVERSITY BE LIABLEFORANY INCIDENTAL, SPECIAL, OR
CONSEQUENTIAL DAMAGES RESULTING FROM EXERCISE OF THIS LICENSE OR THE USE OF
LICENSED PRODUCTS OR LICENSED METHODS.
13.4 Nothing in this License Agreement shall be construed as:
a. a warranty or representation by the University as to the validity or
scope of University's PATENT RIGHTS;
b. an obligation to bring or prosecute actions or suits against third
parties for patent infringement, except as provided in Article 14
(infringement);
c. conferring by implication, estoppel, or otherwise any license or rights
under any patents of the University other than University's PATENT RIGHTS,
copyrights, or other intellectual property of the University; or
d. an obligation by University to furnish any know-how, technical
assistance, or technical data that is unrelated or unnecessary to the transfer
of the TECHNOLOGY to the Licensee for the purpose of implementing this License
Agreement.
14. INFRINGEMENT
14.1 In the event that either Party to this License Agreement learns of the
infringement of any of University's PATENT RIGHTS, that Party will inform the
other Party in writing and will provide the other Party with available evidence
of the infringement.
14.2 Both Parties will use their best efforts in cooperating with each other to
terminate the infringement without litigation.
14.3 If the efforts of the Parties are not successful in abating the
infringement within ninety (90) days after the infringer has been formally
notified of infringement by the University, the University has the right to:
a. commence suit on its own account; or
b. commence suit jointly with the Licensee; or
c. refuse to participate in a suit.
The University shall give written notice to the Licensee, of its election,
within ten (10) working days after the expiration of the ninety (90) day period.
If the University elects not to commence suit on its own account or not to
commence suit jointly with the Licensee, then Licensee shall have the right to
commence suit on its own account, and, if required by law, University will join
the suit as nominal party plaintiff if the infringement occurred during the term
of this Agreement and in a country where the Licensee had exclusive rights under
this License Agreement.
14.4 The Party bringing suit under this Article will bear all expenses arising
from the action, including attorney fees and costs of both Parties and the
defense of any counter-claim brought by the infringer. If legal action is
brought by Licensee, the University will be entitled to [*] percent of any
damage recovery based on lost profits of Licensee or a reasonable royalty or
both. Legal action brought jointly by the University and the Licensee and fully
participated in by both will be at the joint expense of the Parties and all
recoveries will be shared jointly by them in proportion to the share of expenses
paid by each.
14.5 Each Party will cooperate with the other in proceedings instituted
hereunder, provided expenses are borne by the Party bringing suit. Litigation
will be controlled by the Party bringing suit, except that the University will
control the litigation if brought jointly. The University may be represented by
its choice of counsel in any suit brought by the Licensee.
14.6 Neither Party will settle or compromise any suit without the other Party's
written consent.
15. WAIVER
15.1 It is agreed that no waiver by either Party hereto of any breach or
default of any of the covenants or agreements herein set forth shall be deemed a
waiver as to any prior or subsequent and/or similar breach or default.
16. ASSIGNABILITY
16.1 This License Agreement is binding upon and shall inure to the benefit of
the University, its successors and assigns, but shall be personal to the
Licensee and assignable by Licensee to an AFFILIATE without the prior written
consent of the University, provided however, that such AFFILIATE is not.-
a) an entity-
(1) located in, doing business with, or being organized under the laws of a
country, which is considered a sensitive country by DOE based on DOE internal
policies and procedures at the time Licensee requests such assignment, or;
(ii) substantially controlled by an entity located in, doing business with,
or being organized under the laws of a country, which is considered a sensitive
country by DOE based on DOE internal policies and procedures at the time
Licensee requests such assignment.
[*] Omitted pursuant to request for confidentiality filed with the Securities
and Exchange Commission.
This License Agreement is assignable by the Licensee to a non-AFFILIATE only
with the written consent of the University, which consent shall not be
unreasonably withheld.
16.2 In the event the University ceases to be the management and operating
contractor for the Los Alamos National Laboratory, the University may assign
this License Agreement to DOE or to the succeeding management and operating
contractor for LANL, as directed by DOE.
16.3 In the event that a foreign company or government acquires a controlling
interest in Licensee, the University, at its sole option and discretion, may
terminate this License Agreement in accordance with DOE policies. Licensee
agrees to notify the University of any change in its ownership that results in a
foreign company or government acquiring a controlling interest in Licensee,
within thirty (30) days prior to any such occurrence.
17. INDEMNIFICATION - PRODUCT LIABILITY
17.1 The Licensee will indemnify the U.S. Government and the University, and
their officers, employees, and agents, against any damages, costs and expenses,
including attorneys' fees, arising from the commercialization and utilization of
LICENSED PRODUCTS by Licensee and its' sublicensee(s), including but not limited
to the making, using, selling or exporting of products, processes, or services
derived therefrom. This indemnification will include, but will not be limited
to, product liability. To the maximum extent permitted by applicable state and
federal law, Licensee has the option to control the defense of any suit that may
result in Licensee's liability under this section.
17.2 Licensee will insure its activities relating to the License Agreement at
its own expense with an insurance company acceptable to the University or
provide a Certification of Self-Insurance acceptable to the University. Licensee
will obtain, keep in force, and maintain a minimum of [*] of Comprehensive or
Commercial Form General Liability Insurance (including contractual liability and
product liability) or an amount no less than [*], whichever amount is greater.
These coverages will not limit the liability of Licensee in any way. Licensee
will provide the University with certificates of insurance, if requested by the
University, including renewals, that show compliance with these requirements at
least thirty (30) days before the first commercial sale or distribution of
LICENSED PRODUCTS. Licensee's failure to maintain this insurance will be
considered a material breach of this License Agreement.
a. If such insurance is written on a claims-made form, coverage shall provide
for a retroactive date of placement prior to or coinciding with the effective
date of this License Agreement.
b. Licensee shall maintain the general liability insurance specified herein
during (a) the period that the LICENSED PRODUCT is being commercially
distributed or sold (other than for the purpose of obtaining regulatory
approvals) by Licensee or by a sublicensee, AFFILIATE, or agent of Licensee, and
(b) a reasonable period thereafter, but in no event less than five (5) years
from the effective date of this License Agreement.
17.3 Insurance coverage as required under Paragraph 17.2 above shall:
a. Provide for thirty (30) day advance written notice to the University of
cancellation or of any modification.
[*] Omitted pursuant to request for confidentiality filed with the Securities
and Exchange Commission.
b. Indicate that DOE, The Regents of the University of California and its
officers, employees, students, and agents, have been endorsed thereon as
additional named insured.
c. Include a provision that the coverages will be primary and will not
participate with, nor will be excess over, any valid and collectible insurance
or program of self-insured carried or maintained by University.
18. LATE PAYMENTS
18.1 In the event royalty payments or fees are not received by the University
when due, the Licensee will pay to the University interest charges at the rate
of ten percent (10%) per annum on the amount of the royalty payments or fees
overdue. Such interest charges will be calculated from the date the payment or
fee was due to the date payment is actually received by the University.
19. NOTICES
19.1 Any payment, notice, or other communication required or permitted to be
given to either party hereto is properly given and effective on the date of
delivery if delivered in person or by first-class certified mail, postage paid,
or by facsimile transmission with confirmation, to the respective address or
facsimile number given below, or to any other address designated by written
notice to the other Party as follows:
In the case of the Licensee:
DCH Technology, Inc.
00000 Xxx. Xxxxxxx, Xxxxx 0 Xxxxxxxx, XX 00000
Attn.: Xxxxx Xxxxxx
FAX Number: (000) 000-0000
In the case of the University:
Los Alamos National Laboratory
Civilian and Industrial Technology Program Xxxxxx
X.X. Xxx 0000, Xxxx Xxxx X000
Xxx Xxxxxx, Xxx Xxxxxx 00000
Attn: License Administrator
FAX Number: (000) 000-0000 or (000) 000-0000
20. FORCE XXXXXX
20.1 Neither party is responsible for delay or failure in performance of any of
the obligations imposed by this License Agreement, if the failure is caused by
fire, flood, explosion, lightning, windstorm, earthquake, subsidence of soil,
court order or government interference, civil commotion, riot, war, or by any
cause of like or unlike nature beyond the control and without fault or
negligence of a party.
21. EXPORT CONTROL LAWS
21.1 Licensee acknowledges and understands that the export of certain goods or
technical data from the United States requires an export control license from
the United States Government, and that failure to obtain an export control
license may result in violation of U.S. laws.
22. PREFERENCE FOR UNITED STATES UINDUSTRY
22.1 Licensee represents that it has a business that is located in the United
States that will conduct the Licensee's activities under this License Agreement.
Licensee further represents that it is not subject tot he control of a foreign
company or government.
22.2 Any product embodying LICENSED PRODUCTS or produced through the use of a
LICENSED METHOD will be manufactured substantially in the United States.
23. DISPUTE RESOLUTION
23.1 The Parties will use their best efforts to resolve disputes arising from
this Agreement. Any dispute that cannot be resolved by the Parties will be
resolved by non-binding arbitration in accordance with the rules and procedures
of the American Arbitration Association, acting in the state of New Mexico, and
shall be enforceable in accordance with New Mexico law.
24. CONFLICT OF INTEREST
24.1 Licensee represents that Licensee does not now employ and has made no
offers of employment to members of the University Licensing Team set out in
Appendix G herein. Licensee agrees to make no offers of employment to any member
of the University Licensing Team for a period of two years after the effective
date of this Agreement, without the express written permission of the
University. Licensee understands that this clause is a material undertaking by
Licensee without which the University would not enter into this Agreement. The
University has the option to terminate this Agreement for breach of this clause
by Licensee.
25. PATENT MARKING
25.1 Licensee agrees to xxxx, in accordance with the applicable patent marking
statute, all LICENSED PRODUCTS, and their containers, which have been made,
used, sold or otherwise transferred to a third party, under the terms of this
License Agreement.
26. SURVIVOR
26.1 When this License Agreement expires or is terminated in accordance with
the terms hereof, Paragraphs 3.3, 3.4, 7.3, 9.1, 10.3, 12.1, 17.1, 17.2, 17.3,
24.1, 26.1 shall survive said expiration or termination.
27. GOVERNMENT APPROVAL OR REGISTRATION
27.1 If this License Agreement or any associated transaction is required by the
law of any nation to be either approved, permitted or registered with any
governmental agency, Licensee will assume all legal obligations to do so.
Licensee will notify University if Licensee becomes aware that this License
Agreement is subject to a U.S. or foreign government reporting, permitting, or
approval requirement. Licensee will make all necessary findings and pay all
costs including fees, penalties and all other out-of-pocket costs associated
with such reporting, permitting or approval process.
28. DISPOSITION OF LICENSED PRODUCTS ON HAND UPON TERMINATION
28.1 Upon termination of this License Agreement by either Party the Licensee
shall provide the University with a written list of all LICENSED PRODUCTS in the
process of being sold, sublicensed, or in use by Licensee, and shall destroy all
LICENSED PRODUCTS in the possession of Licensee unless otherwise directed by
University.
29. MISCELLANEOUS
29.1 The headings of the several sections of this Agreement are included for
convenience of reference only and are not intended to be a part of or to affect
the meaning or interpretation of this License Agreement.
29.2 No amendment or modification of this Agreement is binding on the Parties
unless made in a writing executed by duly authorized representatives of the
Parties.
29.3 This License Agreement embodies the entire understanding of the Parties
and shall supersede all previous communications, representations, or
understandings, either oral or written, between the Parties relating to this
License Agreement.
29.4 In the event any one or more of the provisions of this License Agreement
is held to be invalid, illegal, or unenforceable in any respect, the invalidity,
illegality, or unenforceability will not affect any other provisions hereof, and
this License Agreement will be construed as if such invalid or illegal or
unenforceable provisions had never been part of this License Agreement.
29.5 This License Agreement will be interpreted and construed in accordance
with the laws of the State of New Mexico.
IN WITNESS WHEREOF, both the University and the Licensee have executed this
License Agreement, in duplicate originals, by their respective officers on the
day and year hereinafter written.
THE REGENTS OF THE UNIVERSITY OF CALIFORNIA
/s/ XXXX X. XXXXXX
By: Xxxx X. Xxxxxx, Director
Los Alamos National Laboratory
Date: March 10, 1999
DCH TECHNOLOGY, INC.
By: /s/ XXXXX XXXXXXXX
Printed Name: Xxxxx Xxxxxxxx
Title: Vice President
Date: March 15, 1999
APPENDIX A PATENT RIGHTS
LANL Case No. S-80,409, U.S. Patent No. 5,514,486, issued on May 7,1996,
"ANNULAR FEED AIR BREATHING FUEL CELL STACK," by Xxxxxx X. Xxxxxx; and
LANL Case No. S-84,928, U.S. Patent No. 5,595,834, issued on January 21, 1997,
"ANNULAR FEED AIR BREATHING FUEL CELL STACK," by Xxxxxx X. Xxxxxx et al.
FIELD OF USE
Power generation for marine, aerospace, military, portable, and remote-area
applications.
APPENDIX B CONFIRMATORY LICENSE
CONFIRMATORY LICENSE
Application for: ANNULAR FEED AIR BREATHING FUEL CELL STACK
Inventor(s): Xxxxxx X. Xxxxxx
Serial No.: 08/522,885
Filing Date: September 1, 1995
Contract No.: W-7405-ENG-36
Contractor: THE REGENTS OF THE UNIVERSITY OF CALIFORNIA
The invention identified above is a "Subject Invention" under the above-numbered
contract. A copy of the provisions of the above-numbered contract (certified on
January 12, 1996) governing patent rights in the Subject Invention at the time
the invention was made, has been submitted to the U.S. Department of Energy.
The contractor hereby confirms that under the provisions of the above-numbered
contract governing patent rights, it has granted to the Government a
nonexclusive, nontransferable, irrevocable, paid-up license to practice or have
practiced for or on behalf of the United States the Subject Invention throughout
the world. This license applies to the invention in the above-identified patent
application and any and all divisions or continuations thereof and any resulting
patent or reissue patent which may be granted thereon.
It is understood and agreed that this document does not preclude the Government
from asserting rights under the provisions of said contract or any other
agreement between the Government and the Contractor, or any other rights of the
Government with respect to the above-identified invention.
The Contract hereby grants the Government an irrevocable power to inspect and
make copies of the above-identified application.
Signed this 16th day of January, 1996,
THE REGENTS OF THE UNIVERSITY OF CALIFORNIA
Xxxxxxx X. Xxxxxx
Senior Counsel for Business and Patent Law
If the invention was made under a subcontract, please identify the Prime
Contractor:
Prime Contract No.
Rev. 01/03/96
DOE Docket No. S-84,928
CONFIRMATORY LICENSE
Application for: ANNULAR FEED AIR BREATHING FUEL CELL STACK
Inventor(s): Xxxxxx X. Xxxxxx, Xxx X. Neutzier
Serial No.: 08/587,430
Filing Date: January 17,1996
Contract No.: W-7405-ENG-36
Contractor: THE REGENTS OF THE UNIVERSITY OF CALIFORNIA
The invention identified above is a "Subject Invention" under the above-numbered
contract. A copy of the provisions of the above-numbered contract (certified on
January 12, 1996) governing patent rights in the Subject Invention at the time
the invention was made, has been submitted to the U.S. Department of Energy.
The contractor hereby confirms that under the provisions of the above-numbered
contract governing patent rights, it has granted to the Government a
nonexclusive, nontransferable, irrevocable, paid-up license to practice or have
practiced for or on behalf of the United States the Subject Invention throughout
the world. This license applies to the invention in the above-identified patent
application and any and all divisions or continuations thereof and any resulting
patent or reissue patent which may be granted thereon.
It is understood and agreed that this document does not preclude the Government
from asserting rights under the provisions of said contract or any other
agreement between the Government and the Contractor, or any other rights of the
Government with respect to the above-identified invention.
The Contract hereby grants the Government an irrevocable power to inspect and
make copies of the above-identified application.
Signed this 4th day of April, 1996,
THE REGENTS OF THE UNIVERSITY OF CALIFORNIA
Xxxxxxx X. Xxxxxx
Senior Counsel for Business and Patent Law
If the invention was made under a subcontract, please identify the Prime
Contractor:
Prime Contract No.
APPENDIX C
FEES AND ROYALTIES
1. FEES
a) License Issue Fee of [*], which is due on the effective date of this License
Agreement.
b) An Annual License Fee of [*], payable in advance, is due on January 31, 2000.
Subsequently, an Annual License Fee of [*], payable in advance, is due on
January 31, 2001. Thereafter, Licensee shall pay the University an Annual
License Fee of [*], which is payable in advance on January 31st of each year,
beginning on January 31, 2002. The University will credit thew Annual License
Fee for a particular year against any royalties earned during that same year.
c) In addition to royalties pursuant to Section 2 of this Appendix, [*] of other
payments, including, but not limited to, sublicense issue and annual fees
received from sublicensee(s) in consideration of the LICENSED INVENTION.
2. ROYALTIES
2.1 The Licensee will pay the University a royalty rate of [*] of NET SALES
during the term of this License Agreement.
APPENDIX D MILESTONES
[*] Omitted pursuant to request for confidentiality filed with the Securities
and Exchange Commission.
[*]
[*] Omitted pursuant to request for confidentiality filed with the Securities
and Exchange Commission.
