EXHIBIT 10.2
DOE Patent License
UNITED STATES DEPARTMENT OF ENERGY
WASHINGTON, D.C. 2058
EXCLUSIVE PATENT LICENSE
This Agreement made this 26 day of August, 2005, by and between the United
States of America, as represented by the United States Department of Energy
(hereinafter called "LICENSOR"), and HydroGen LLC (hereinafter called
"LICENSEE").
ADDRESS OF LICENSEE: ▇▇▇▇ ▇▇▇▇▇ ▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇▇ ▇
▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇
LICENSED INVENTION(S): U.S. Patent No. 4,978,591, entitled
"Corrosion-free Phosphoric Acid Fuel Cell"; U.S.
Patent No. 4,732,822, entitled "Internal
Electrolyte Supply System For Reliable Transport
Throughout Fuel Cell Stacks"; U.S. Patent No.
4,853,301, entitled "Fuel Cell Plates With
Skewed Process Channels For Uniform Distribution
Of Stack Compression Load; and U.S. Patent No.
5,096,786, entitled "Integral Edge Seal For
Phosphoric Acid Fuel Cells"
EFFECTIVE DATE: July 1, 2005
LICENSE TERMINATION DATE: Upon expiration of the U.S. patents listed under
LICENSED INVENTIONS
PRACTICAL APPLICATION
TARGET DATE: December 1, 2005
SCOPE OF LICENSE: In addition to any worldwide rights LICENSEE
already has in the LICENSED INVENTIONS, the
exclusive license to make and sell LICENSED
INVENTIONS in the United States of America.
WITNESETH:
WHEREAS: LICENSOR is the owner of the above-identified LICENSED INVENTIONS;
WHEREAS: LICENSEE'S predecessor company developed the LICENSED INVENTIONS under
a federal grant, and pursuant to that grant, LICENSEE'S predecessor company
acquired an unlimited, royalty and bonus free, non-exclusive license on the
LICENSED INVENTIONS, which license has been transferred to LICENSEE;
WHEREAS: LICENSEE seeks to commercialize technology that was, in part, developed
as a result of the federal grant;
WHEREAS: to the knowledge of LICENSOR and LICENSEE, no other person or entity
has sought to acquire a license on the LICENSED INVENTIONS, and the LICENSOR had
determined to allow some or all of the LICENSED INVENTIONS to lapse, absent the
LICENSEE'S agreement to pay the maintenance fees for the LICENSED INVENTIONS;
WHEREAS: LICENSEE desires to obtain an exclusive license in the above-identified
LICENSED INVENTIONS.
WHEREAS: The interests of Federal Government and the public will be served by
the granting of the license, as indicated by the LICENSEE'S intentions, plans,
and ability to bring the invention to practical application, or otherwise
promote the invention's utilization by the public.
WHEREAS: Exclusive licensing is a reasonable and necessary incentive to call
forth the investment capital and expenditures needed to bring the LICENSED
INVENTIONS to practical application, or otherwise promote the invention's
utilization by the public.
WHEREAS: The proposed scope of exclusivity is not greater than reasonably
necessary to provide the incentive for bringing the invention to practical
application, as proposed by LICENSEE or otherwise to promote the invention's
utilization by the public.
NOW, THEREFORE, in consideration of the foregoing premises and of the mutual
covenants and obligations hereinafter contained, and other good and valuable
consideration, the Parties hereto agree as follows:
1. LICENSOR hereby grants to Licensee, and Licensee hereby accepts, subject to
the terms and conditions recited, an exclusive license to practice the LICENSED
INVENTIONS as specified herein for the period of this license.
2. LICENSEE agrees to carry out the plan for development and/or marketing of the
invention by the practical application target date set forth herein, and
thereafter to continue to make the benefits of the LICENSED INVENTIONS
reasonably accessible to customers in the United States and elsewhere. In this
regard, LICENSEE agrees at a minimum, to expend at least $1,000,000 within
twelve months of the date of the license, directed toward development and
commercialization of LICENSED INVENTION.
3. The LICENSE may extend to subsidiaries of the LICENSEE, but is not assignable
without approval of the LICENSOR in writing.
4. Sublicenses under this License may not be granted without the approval of
LICENSOR. Licensee shall promptly furnish LICENSOR with a copy of any proposed
sublicense, and if in a foreign language, an English text thereof. Any
sublicense shall not be effective until approval is secured from LICENSOR in
writing. A sublicense shall make reference to the License, including the rights
retained by the Government.
5. LICENSEE agrees that any products embodying the LICENSED INVENTIONS or
produced through the use of the inventions will be manufactured substantially in
the United States.
6. LICENSEE shall submit periodic written reports, annually within 30 days of
the anniversary date of this License and when specifically requested by the
LICENSOR, on its efforts to bring the LICENSED INVENTIONS to a point of
practical application, with particular reference to the development and
marketing plan submitted, and the extent to which the LICENSEE thereafter
continues to make the benefits of the invention reasonably accessible to the
public.
7. ROYALTY PROVISIONS. This License is granted free of royalty or other payment
obligations by LICENSEE.
8. MAINTENANCE COSTS OF THE LICENSED INVENTIONS. LICENSEE has paid or shall pay
all costs for maintaining the LICENSED INVENTIONS at the U.S. Patent and
Trademark Office.
9. The license shall be subject to the irrevocable, royalty-free right of the
Government of the United States to practice and have practiced the LICENSED
INVENTIONS on behalf of the United States and on behalf of any foreign
government or international organization under any existing or future treaty or
agreement with the United States. LICENSOR also reserves the right to grant
research licenses for non-commercial use(s) of LICENSED INVENTIONS.
10. LICENSOR reserves the right to require LICENSEE to grant sublicenses to
responsible applicants, on reasonable terms, when necessary to fulfill health or
safety needs.
11. LICENSEE shall promptly report to LICENSOR and change in mailing address,
name or company affiliation during the period of this License, and LICENSEE
shall promptly report discontinuance of his making the benefits of this LICENSED
INVENTION reasonably accessible to the licensed country(s).
12. LICENSOR makes no warranty or representation as to the validity of any
licensed patent(s) or patent application(s) or that the exercise of this License
will not result in the infringement of any patent(s), nor shall LICENSOR assume
any liability whatsoever resulting from the exercise of this License.
13. LICENSOR makes no representations, extends no warranties of any kind, either
express or implied and assumes no responsibilities whatever with respect to
manufacture, use, sale, or other disposition by LICENSEE, or its vendees or
transferees, of products incorporating or made by use of LICENSED INVENTIONS.
14. The grant of this License or anything related thereto shall not be construed
to confer on any person any immunity from or defenses under the antitrust laws
of from a charge of patent misuse, and the acquisition and use of rights
pursuant to this License shall not be immunized from the operation of State or
Federal law by reason of the source of grant.
15. Nothing contained in this License shall be interpreted to give LICENSEE any
rights with respect to any invention(s) other than the LICENSED INVENTIONS.
16. If the License involves application(s) for Letters of Patent, LICENSOR makes
no representation or warranty that Letter of Patent will issue on such patent
applications (s).
17. This License may be terminated by LICENSOR in whole or in part, (a) if DOE
determines that licensee is not executing the plan submitted with its request
for license, and that licensee has not otherwise demonstrated to the
satisfaction of DOE that it has taken, or can be expected to take within the
practical application target period specified herein, effective steps to achieve
practical application of the invention and to continue thereafter to make the
benefits of the invention reasonably accessible to the public, (b) for failure
to make any payments or periodic reports required by this License, (c) for
willfully making a false statement, willful omission, or misrepresentation of a
material fact in the License application and follow-up correspondence which
resulted in this License, or an any required report, (d) for substantial breach
of any covenant or agreement contained herein, or (e) of DOE determines that
such action is necessary to meet requirements for public use as specified by
Federal regulations used after the date of the license, and such requirements
are not reasonably satisfied by the LICENSEE.
18. Before modifying or terminating this License for any cause, LICENSOR shall
furnish LICENSEE, and to any sublicensee of record, a written notice of
LICENSOR'S intention to modify or terminate the License, with reasons therefore,
and LICENSEE, and any sub licensee of record, shall be allowed sixty (60) days
from the date of the mailing of such notice to remedy any breach of any term or
condition referred to in the notice, or to shoe cause why the License should not
be modified or terminated.
19. It shall be sufficient giving of any notice or other communication in
writing by a Party to this License to the other Party, if the Party desiring to
give such notice or other communication shall deposit a copy of such notice or
other communication in the Post Office for transmission by registered or
certified mail in an envelope properly addressed to the address set forth
herein, or at such other address furnished as specified herein. The date of such
notice or other communication shall be construed to be the date on which said
copy was deposited in the Post Office in an envelope properly addressed and
mailed, as aforesaid. The Post Office receipt showing the deposit of such
envelope and the date of such deposit shall be prima facie evidence of these
facts.
20. LICENSEE has a right to appeal, in accordance with procedures specified in
10 CFR 781, any decision concerning the modification or termination, in whole or
in part, of this License.
21. LICENSEE may terminate this License, after the first or any subsequent
anniversary date of this License, upon not less than sixty (60) days prior
written notice to the LICENSOR.
22. LICENSEE is responsible for compliance with all applicable Federal, state
and local regulatory requirements, including, without limitation, compliance
with U.S. Export Control statutes and regulations.
23. LICENSEE shall ▇▇▇▇ all licensed products in accordance with the statutes of
the United States relating to marking of patented articles (35 U.S.C. 287).
24. In the event of any legal proceeding challenging the validity of LICENSED
INVENTIONS, LICENSOR shall promptly provide notice thereof to LICENSEE. LICENSEE
and LICENSOR shall, within thirty days of said notice, mutually agree on an
appropriate level of cost-sharing of direct and indirect expenses that may be
involved in participating in defending the validity of LICENSED INVENTIONS. If
mutual agreement cannot be reached within said thirty day period, LICENSOR may
take any action at its discretion concerning the subject matter thereof,
including allowing the LICENSED INVENTION, and therefore this EXCLUSIVE LICENSE,
to lapse.
IN WITNESS WHEREOF, the Parties have executed this Agreement as the date and
year first written above.
UNITED STATES DEPARTMENT OF ENERGY
BY: /s/ PD
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Assistant General Counsel
for Technology Transfer
and Intellectual Property
WITNESS:
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HYDROGEN, LLC
BY: /s/ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇
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▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇ President
WITNESS:
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