RENEWAL
NON-EXCLUSIVE PATENT LICENSE AGREEMENT
XXXX X. ERICSSON
INVENTOR
and
BIOMARINE TECHNOLOGIES, INC.
AND ITS JOINT VENTURE PARTICIPANT
GULF MARINE INSTITUTE OF TECHNOLOGY
Both Delaware Corporations
RE: SEA TREK MARICULTURE SYSTEM
Version: Thursday, September 30, 1993 12:34pm
Revised: Friday, February 04, 2000
RENEWAL
NON-EXCLUSIVE LICENSE AGREEMENT
Non-exclusive license Agreement made and entered into this 4th day of
February, 2000, by and between:
XXXX X. ERICSSON, an individual residing in (Gulf Breeze,
Florida, and having a mailing address of X.X. Xxx 0000, Xxxx
Xxxxxx, XX 00000 (hereinafter referred to as LICENSOR, on the
one hand;
and
BIOMARINE TECHNOLOGIES, INC., and its joint venture participant,
Gulf Marine Institute of Technology, (both Delaware
corporations) having a business address at 0000 Xxxx Xxxxxx
Xxxx., Xxxxx 0X & 8B, Gulf Xxxxxx, XX 00000 (hereinafter
referred to as "LICENSEES" on the other hand.
WHEREAS, LICENSOR has invented a Marine Ocean Farming System, on which
invention he has received design patent #Des. 362508 and utility U.S. patent
#5,453,958 entitled "Open Water Mariculture System" with the U.S., Patent
and Trademark Office;
WHEREAS, LICENSEE is desirous of securing, and LICENSOR is willing to
grant, a non-exclusive patent license under the Licensed invention to
manufacture, use, sell and otherwise practice the Licensed Invention;
NOW, THEREFORE, in consideration of the covenants and obligations
hereinafter set forth, to be well and truly performed, the parties hereto
hereby agree as follows:
I. NON-EXCLUSIVE PATENT LICENSE
LICENSOR agrees and does hereby grant LICENSEE the non-exclusive right
and license to manufacture, use, sell and otherwise practice the Licensed
Invention in the United States of America its territories and possessions
and all foreign countries, subject to any limitations below (all of which is
collectively termed the Licensed Territory), such right and license being
only. for LICENSEE and not sub-licensable, except as may otherwise be
explicitly permitted herein, until the expiration of the last to expire of
any and all Patent(s) or any reissue(s) or extension(s) thereof, which may
issue on the Licensed Invention (the Licensed Patent Rights), unless sooner
terminated in; accordance with any of the provisions hereof. LICENSEE
agrees that a will manufacture embodiments of the Licensed invention.
However, should LICENSEE or a related company use the Licensed Invention for
profit, or otherwise practice the Licensed Invention, the embodiments of the
Licensed Invention so used shall be considered as sold to LICENSEE at the
highest sales price charged to a third party for an embodiment of the
Licensed Invention for the purpose of calculating royalties.
II. ROYALTIES
LICENSEE agrees to pay to LICENSOR a royalty of FIVE PERCENT (5%) of the
gross seafood sale and/or FIVE PERCENT (5%) of equipment sales and/or 10% of
lease receipts due LICENSEE, on all devices and/or systems covered by the
Licensed Patent Rights or made or used in accordance with the Licensed
Invention or covered by one or more of the current or hereafter pending
claims of said U.S. patent or any continuation(s), division(s) or
continuation(s)-in-part thereof (the Licensed Patent Rights).
III. LICENSOR FULL OWNER OF INVENTION
LICENSOR warrants that he is the true inventor of the Licensed
Invention, has no liens or encumbrances thereon, and has the capacity and
right to alienate or encumber title on same.
IV. ROYALTY DUE DATES
All royalties provided for by this License Agreement shall be due and
Payable within thirty days after completion of each device or system covered
by the present agreement, and LICENSEE agrees to pay to LICENSOR or his
designee Within the thirty day period, time being of the essence, the total
amount of royalties due and payable on account of its operations under this
Agreement. Should any royalty payment(s) be late, additional interest
charges of one point five (1.5%) percent per month shall be immediately paid
by LICENSEE.
V. ROYALTY REPORTS & RECORDS
LICENSEE agrees that it will render to LICENSOR or its designee on or
before the 28th day of each of the months of January, April, July and
October of each year during which this Agreement is in force, a written
detailed report setting forth the total gross sales receipts from its
royalty-bearing sales, the country of ultimate destination, number of units
and parts involved and their serial numbers (which shall be provided by
LICENSOR for marking on the Licensed Devices by LICENSEE) and the royalty
calculation during the period covered by such report. LICENSEE shall
maintain accurate records as to all LICENSED DEVICES sold by it hereunder,
which shall be open to the inspection of LICENSOR or his duly authorized
agent at all reasonable times during normal business hours during the
continuance of this Agreement and for a period of six (6) months after
termination hereof, provided that LICENSEE will not be required to retain
any such record for more than three (3), years after the making thereof.
Should any such inspection show a significant shortage error was made
by LICENSEE in the amount of royalties due, LICENSEE shall pay for the costs
of the inspection.
VI. GUARANTEED MINIMUM PERFORMANCE
LICENSEE shall use good diligent efforts to manufacture, promote,
market and sell the licensed Invention throughout the Licensed Territory
within the quickest reasonable time and continuing thereafter as long as
this Agreement is in effect. LICENSEE warrants and guarantees that all
Device(s) which are embodiments of the Licensed Invention manufactured or
sold by it shall be of high, quality and proper manufacture, and within the
U.S. Occupational Health and Safety Administration (OHSA), The Environmental
Protection Agency (EPA) and other regulatory governmental agency standards.
Further, LICENSEE will allow (although LICENSEE is not required to)
final inspection and approval of each LICENSED DEVICE prior to the delivery
to the customer by LICENSOR where requested, which inspection by LICENSOR
must be satisfactory, regarding the manufacture and/or operation of the
device in accordance with plans or specifications submitted by LICENSOR, or
the LICENSED DEVICE will have to be modified according to LICENSOR's
instructions until approved by LICENSOR- Only upon final approval by
LICENSOR can the LICENSED DEVICE be used or sold by LICENSEE. LICENSOR
agrees that he will not unreasonably withhold approval of the LICENSED
DEVICE after inspection.
The present provision does not require LICENSOR to inspect the
LICENSED DEVICE, nor is LICENSOR responsible or otherwise liable for
manufacturing and/or design defects in LICENSED DEVICE- Further, LICENSOR
warrants, and guarantees that LICENSEE shall indemnify LICENSOR in the event
of any lawsuit involving the LICENSED INVENTION naming LICENSOR. In
addiction, LICENSEE will obtain and maintain liability insurance in the
amount of one million dollars ($1,000,000.00), naming licensor as co-
insured.
LICENSOR MAKES NO WARRANTIES, EXPRESS OR IMPLIED, AS TO THE VIABILITY
OR FITNESS OF THE LICENSED INVENTION.
LICENSEE warrants that it will sell or have in commercial operation at
least ONE (1) LICENSED DEVICE within three calendar years from the date of
execution of the present agreement, and ONE (1) LICENSED DEVICE every two
years thereafter, until termination or expiration of the present agreement.
Extension of this agreement may be made by requesting same in writing at the
option of the LICENSOR.
VIl. OPTION ON FOREIGN RIGHTS & OBLIGATIONS THEREFOR
LICENSEE shall have the option of securing like rights to the rights
granted herein on like terms for any and all foreign countries in which it
has sold or has prepaid orders to sell the LICENSED DEVICE in sufficient
numbers to establish a financially promising market presence. In order to
exercise its option for the foreign countries it wishes to have a license
in, LICENSEE shall inform LICENSOR, in writing of the names of the countries
desired and details regarding the pending orders in said countries,
including number of machines, amount of prepayment of U.S. dollars, and
customer destination name and address.
Promptly after all of the foregoing conditions of this section are met
LICENSOR and LICENSEE shall execute an "non-exclusive Patent LICENSE,
Agreement for the designated foreign counties (hereinafter the "Foreign
Patent Rights"), which agreement shall have the same or analogous terms as
this Agreement, LICENSEE shall pay EIGHTY PERCENT (80%), and LICENSOR shall
pay TWENTY PERCENT (20%) of all reasonable foreign patent and related legal
expenses, fees and costs involving the Licensed Invention in the Licensed
Territory for which LICENSEE exercised the present option, including filing,
prosecution and maintenance expenses. LICENSOR shall be free to secure as
he sees fit foreign patent rights in any countries which LICENSEE elects not
to pursue under the terms of this agreement, and LICENSEE shall have no
rights in other foreign countries which did not exercise its option in.
LICENSEE may sublicense the manufacture and sale of the Licensed
Invention under the Foreign Patent Rights to independent third parties in
arms' length transactions, and LICENSEE shall pay LICENSOR or his designee
immediately upon receipt twenty-five percent (25%) of all revenues or other
consideration it receives from the sublicensee(s).
LICENSOR shall pay for all reasonable foreign patent and related legal
expenses, fees and costs involving the Licensed Invention in the Licensed
Territory for which it exercised its option, including filing, prosecution
and maintenance, expenses.
VIII. PATENT MARKING
LICENSEE agrees to xxxx permanently and legibly all embodiments of the
Licensed Invention manufactured and sold by it under this Agreement with a
patent notice in compliance with the applicable statutes relating to the
marking of patent pending and patented articles. Further, LICENSEE agrees
to place on the Licensed Invention induce provided by LICENSOR which may
include a trade name or xxxx for the device, "or Patent No. #5,453,958" or
similar notice, as well as other indicia as LICENSOR sees fit.
IX. PATENT INFRINGEMENT SUIT(S)
LICENSEE agrees to notify LICENSOR of any infringement(s) by third
parties, and shall pay LICENSOR royalties on any monetary recoveries from
infringes on the present invention, to the extent that such moneys
recoveries by LICENSEE are held to be reasonable royalties or damages in
lieu thereof. LICENSOR shall have the right to enforce any patent licensed
hereunder on behalf of itself and LICENSEE, and LICENSEE shall join any such
suit as a named party, if required. In such events the amount of recovery
paid to LICENSOR shall be the sole property of LICENSOR. If LICENSOR does
not desire to enter into such suit, it shall be the obligation of LICENSEE
to do so. In such a case, LICENSEE during such suit has a right to offset
royalty payments to LICENSOR in the amount of TWENTY FIVE PERCENT (25%) of
current legal costs and fees during said royalty payment period, not to
exceed ONE-THIRD (1/3) of said royalty during any royalty payment period.
Once said suit has terminated LICENSEE'S right to offset royalty payments to
LICENSOR, as indicated above, terminates.
X. DEFAULT
In the event that LICENSEE defaults or breaches any of the provisions
of the license agreement or fails to account for. or pay to LICENSOR any of
the royalties to be due and payable to LICENSOR hereunder, LICENSOR reserves
the right to terminate this Agreement upon sixty (60) days prior written
notice to LICENSEE; provided, however, that LICENSEE, within the thirty (30)
day period referred to, cures the said default or breach, the license herein
granted and this Agreement shall continue in full force and effect if
LICENSEE collectively has been in default of any of the provisions of this
Agreement more than three (3) times, regardless of whether or not LICENSEE
thereafter cured its default(s), the period for LICENSEE to cure said
default or breach is reduced from the thirty (30) day period indicated supra
to a five (5) day period.
XI. BANKRUPTCY
In the event of any adjudication of bankruptcy, appointment of a receiver by
a court of competent jurisdiction, assignment for the benefit of Creditors
or levy of execution directly involving LICENSEE, this Agreement shall
thereupon forthwith automatically terminate.
XII. TERMINATION BY LICENSEE
LICENSEE: may, at its option, terminate this agreement by giving written
notice to LICENSOR, if LICENSOR is found not to be the inventor of the
Licensed Invention, and is unable to become sole owner of the Licensed
Invention within thirty (30) days from the discovery and notification
thereof;
XIII. TERMINATION BY LICENSOR
In the event of any of the following, LICENSOR may, at his option, terminate
this Agreement by giving written notice to LICENSEE, if
(a) LICENSEE does not meet its minimum performance guarantees under
Section VI hereof.
(b) Upon thirty (30) days written notice of LICENSEE shall breach or
default on any obligation under this License Agreement; provided, however,
that LICENSEE may avoid such termination before the end of such period
LICENSEE notifies LICENSOR that such breach has been cured and states the
matter of such cure.
XIV. TERMINATION EFFECTS
The termination hereof automatically or by either party shall not relieve
LICENSEE from making any royalty payment or report due LICENSOR or his
representative(s) for manufacturing or sales prior to the effective date of
termination.
XV. UN-ASSIGNABILITY
The rights of LICENSEE hereunder are unassignable and cannot be sub-
licensed without the written consent of LICENSOR.
XVI. LICENSEE NOT TO ACT FOR LICENSOR and VICE VERSA
LICENSEE agrees that it does not have the right to, and will not at any time
hereafter, transact any business in the name of LICENSOR or obligate
LICENSOR in any manner, character or description; and LICENSOR shall not
under any circumstances be liable for any agreement, contract,
representation or warranty, which LICENSEE may hereafter enter into or make,
except for the present agreement.
In addition, in the absence of agreement between LICENSEE and LICENSOR to
the contrary, LICENSOR agrees that it does not have the right to, and will
not at any time hereafter, transact any business in the name of LICENSEE or
obligate LICENSEE in any manner, character or description; and LICENSEE
shall not, under any circumstances, be liable for any agreement, contract
representation or warranty, which LICENSOR may hereafter enter into or make,
except for the present agreement.
XVII. LIMITATION ON EFFECT OF WAIVER
No waiver by either party, whether express or implied, of any provision
of this Agreement or of any breach or default of either party, shall
constitute a continuing waiver of such provision or of a waiver of any other
provisions of this Agreement.
XVIII. ENTIRE AGREEMENT; MODIFIED ONLY IN WRITING
This Agreement includes all the agreements of the parties and supersedes
and cancels all previous agreements, negotiations, commitments and writings
in respect to the subject matter hereof. No claimed oral agreement in
respect hereto shall be considered as any part thereof. No waiver of or
change in any of the terms hereof subsequent to the execution hereof claimed
to have been made by any representative of either party shall have any force
or effect unless in writing signed by the parties or duly authorized
representatives of the parties.
XIX. NOTICES
Notices required under this Agreement shall be in writing and shall
for all purposes be deemed to be fully given and received if sent by
certified mail, postage prepaid, return receipt requested, to the respective
party(ies) at the above identified: address(es). Either party hereto may
change its address for the purposes of this Agreement by giving the other
party(ies) written notice of its new address.
XX. SEVERABILITY
The provisions and sections hereof are severable and independent Should any
provision or section hereof be held or considered void or unenforceable, the
validity of the remaining provisions and sections shall not be affected,
and, they shall still be enforced.
XXI. FLORIDA LAW
This Agreement is being entered into in the State of Florida and the
interpretation and enforcement hereof shall be in accordance with the laws
of the State of Florida. LICENSEE agrees and admits that the Florida courts
have personal jurisdiction over it and is the proper, best and most
convenient forum for any contractual disputes.
XXII. LEGAL ADVICE
LICENSEE represents and warrants that the terms and legal effect of this
Agreement have been fully explained to him by an attorney at law of his own
selection.
IN WITNESS WHEREOF, the parties hereto have caused this agreement to
be executed personally or, in the case of LICENSEE, by their duly authorized
representatives and their corporate seals to be hereunto affixed, as of the
day and year first above written.
XXXX X. ERICSSON LICENSOR
Licensee: Licensee:
Gulf Marine Institute of Technology BioMarine Technologies, Inc.
By: By:
____________________________ ____________________________
Director Director
_____________________________ ____________________________
Director Director
_____________________________ ____________________________
Director Director
Attest: Attest:
_____________________________ ____________________________
Secretary Secretary
(SEAL) (SEAL)
Witnessed and signed Witnessed and signed
this ____ day of this _____ day of
___________, 20___ ____________,20___
______________________________ ________________________________
Notary (My Commission Expires _______) Notary (My Commission Expires _____)
