PROCESS TECHNOLOGY LICENSE AGREEMENT
THIS AGREEMENT is made, entered into by and between:
A. C.W. CHEMICAL WASTE TECHNOLOGIES LTD (hereafter called the " Licensor"), a
corporation organized and existing under the laws of Cyprus, having a
principle office at 00 Xxxx 00xx Xxxxxx, Xxx Xxxx, X.X. 00000, X.X.X., and
B. (hereafter called the "Licensee") having its principle office at
__________________________.
WITNESSETH:
WHEREAS Licensor is the owner of proprietary technology regarding:
1. a First Process for the treatment of waste phosphogypsum that can
produce a substantially non-toxic First Product with numerous useful
end uses and which in many cases can be used as a substitute for
other materials currently in use with superior results, and
2. a Second Process for the production of Ceramic Like Material (CLM)
Second products, which are composite materials containing
appropriately conditioned treated phosphogypsum, synthetic resins
and other materials.
WHEREAS for both above mentioned Processes Licensor owns or controls a
pending patent application in Poland, as set forth in Appendix I, and certain
PCT applications as set forth in Appendix II hereof, and Licensor is in
possession of and owns or controls Know-How related to these Processes.
WHEREAS, Licensee desires to obtain a license to use the Know-How for the
treatment of waste phosphogypsum and for its conversion into an environmentally
friendly material by the First Process and a license under the Patents covering
such treatment and conversion that are owned or controlled by Licensor, as
exemplified in Appendix I hereof, as well as to obtain the relevant Know-How and
design and engineering assistance from Licensor in connection with such
treatment and conversion First Process, and sale of the licensed First Product,
on the terms
and conditions referred to herein.
WHEREAS, Licensee desires to obtain, an option to license to use the
technology and Know-How related to the production of a Second Product, sometimes
referred to as CLM, by the Second Process, and as referred to in Patents that
are exemplified by those that are set forth in Appendix II hereof.
NOW, THEREOF, in consideration of the mutual covenants herein contained,
the parties hereto agree as follows:
ARTICLE 1
DEFINITIONS
In this Agreement, the following expressions shall have the following
meanings assigned to them in this article.
1.1 "Agreement" shall mean this Licensing Agreement together with Appendixes
hereto, as entered into between the Licensor and the Licensee whereby
granting to the Licensee a License to use the First Process, together with
all of the documents to which reference has been made in this Agreement,
including any amendments made to those documents by mutual agreement
between the parties.
1.2 "Licensor" shall mean the party named as such in this Agreement or his
successor or permitted assigns.
1.3 "Licensee" shall mean the party named as such in this Agreement or his
successor or permitted assigns.
1.4 "Patent(s)" shall mean the patent(s) and patent application(s) relevant to
the First or Second Processes Owned or controlled by the Licensor, as
exemplified by the Patents set forth in Appendix I and Appendix II, as the
case may be.
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1.5 "Effective Date" shall mean the last date on which any party executes this
Agreement, whereupon this Agreement comes into effect.
1.6 "Improvements" shall mean any modification or refinement of either of the
Processes and/or Know-How related thereto, whether patented or not, which
has been developed or acquired during the period covered by this
Agreement, and which is capable of improving the technical and/or economic
characteristics of the First or Second Products and/or the First or Second
Processes.
1.7 "Know-How" shall mean all the technical data, information, drawings and
designs and instructions relevant to the First or Second Processes,
respectively and/or the First or Second Products, respectively, that is in
the possession of the Licensor, and is applicable to commercial use of the
respective Processes by the Licensee, and which are sufficient to enable
the Licensee to construct the Plant, and to enable the Licensee's
personnel to operate the Plant so as to carry out at least the First
Process and manufacture at least the First Product.
1.8 "Plant" shall mean the manufacturing facilities to be built by the
Licensee, at its own expense, at a site in Greece, using the First Process
for the manufacturing of the First Product at nameplate capacity of one
hundred fifty thousand (150,000) metric tons of treated phosphogypsum per
annum based on 300 operating days per annum.
1.9 "Process" shall mean the latest commercially proven process, with respect
to the First Process, developed or acquired, and owned or controlled by
the Licensor at the Effective Date.
1.10 "First Product" shall mean the waste phosphogypsum treated by the First
Process.
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ARTICLE 2
LICENSE
2.1 The Licensor expressly and unreservedly guarantees that it is the
proprietary licensee of, and/or that it owns or controls and has lawful
and full access to, the relevant Know-How and that it possesses the lawful
and unlimited right and authority to grant rights to the Licensee to use
the Know-How and, subject to the payment of the sums in the amounts and at
the time referred into Article 4 hereof, hereby grants to the Licensee a
license with the full right and authority to use said Know-How, to plan,
construct, operate, repair and maintain the necessary installations for
the earning out the First Process and thereby manufacturing the First
Product; to purchase, acquire make or have made any equipment apparatus,
materials or other items necessary for the construction and operation of
the relevant installations; to use, sell, export or otherwise dispose of
the First Product, and/or to improve, modify or up-date the First Process
and/or the First Product.
2.2 Said license shall be non-exclusive for the manufacture and production of
the First Product, and shall also include the right for the Licensor to
grant one or more sub- license(s), under the relevant Patents and to use
the Know-How, to others for the same purposes and with the same
limitations as expressed herein. Said license and above rights granted
hereunder to Licensee shall be limited to the specific Plant referred to
above for the manufacturing of up to one hundred fifty thousand (150,000)
metric tons of First Product yearly, which shall be the maximum designed
capacity of the Plant.
2.3 Said Processes are covered by certain patents that include those set forth
in Appendix I and Appendix II, as they may apply to each process and/or
product, (including, inter alia, patent and/or patent application
identification and description of the respective Patent rights, the name
of the Patentee and/or Licensee, dates of issuance, country(ies) and dates
of their filing, and their expiration date(s), if applicable). The
Licensor hereby expressly declares that by the expiration of ninety (90)
days from the Effective Date of this Agreement, it shall have caused
corresponding applications for patent to be filed in , _________ expressly
agrees to use its best efforts to obtain the issuance of patents on said
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application(s), and to use its best efforts to maintain such patent
application(s) and patent(s) in force for their respective entire term(s)
or the entire term of this Agreement, whichever is shorter. Licensor shall
inform Licensee in writing, immediately after the filing of said patent
application(s), that said patent application(s) have been duly filed; of
the progress of the prosecution of said patent application(s); of the
granting of said patent application; and of the time and requirements for
maintaining such patent and/or patent application(s) in force, as well as
provide Licensee with copies of all related patent applications and issued
patents, and any other relevant documents.
2.4 All formalities, procedures, costs and expenses (including, legal costs,
Government fees, renewal fees, and any other reasonably associated costs)
relating to the, filing, prosecution, issuance and maintenance in force of
the Patents throughout their respective life (including any patented
improvements thereof), shall be the responsibility of and at the cost and
expense of the Licensor. Should Licensor decide that it will not pursue or
maintain any patent, it shall immediately (at least thirty (30) days
before a terminating event is to take place) inform Licensee of such
decision and permit Licensee to take over the patent property in question.
Under these circumstances, Licensee shall have no obligation to pay any
running royalty with respect to such patent property.
ARTICLE 3
IMPROVEMENTS
The Licensor undertakes, to make available to the Licensee all
improvements in the Know-How developed or acquired by the Licensor and of which
he is entitled to dispose, and specifically to make available, free of charge,
all developments and improvements in operating techniques, preventive
maintenance and safety measures, and process developments applicable to the
First Process and/or the First Product and the relevant installations, as well
as all other relevant data and proprietary information which is made available,
free of charge, by the Licensor to other licensed users of the Know-How.
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ARTICLE 4
LUMP-SUM PAYMENT AND ROYALTIES
4.1 In consideration of the license under the Patents referred into Appendix I
hereof and for the license to use the respective Know-How, the Licensee
shall pay the Licensor (a) a lump sum of US$________ ( ) million according
to the following schedule:
- Within a period of fifteen (15) working days after the signing of
this Agreement, the Licensee shall pay US$________ to the following
bank account of the Licensor:
EUROPEAN POPULAR BANK
00, Xxxxx Xxxxxxxxxxxx xxx Xxxxxx Xxx.,
Xxxxxxx - Xxxxxx
A/C No: 004-030086
In favour of: C.W. CHEMICAL WASTE TECHNOLOGIES LTD
- Twelve months after the Effective Date this Agreement, the Licensee
shall pay US$________ - to the above Licensor's Bank account;
- Upon completion of the Plant, but in any case no later than twenty
four (24) months after the Effective Date of this Agreement, the
Licensee shall pay US$________ - to the above Licensor's Bank
account.
Additionally, in further consideration for the rights and licensed granted
by this Agreement, Licensee agrees to pay Licensor a running royalty of three
percent (3%) of the net sales price of any First Product that is sold or
otherwise disposed of. In the event that First Product is disposed of without
compensation to the Licensee, the net sales price of that First Product shall be
assumed to be the average of the net sales prices of the last preceding ten (10)
tons of First Product that were actually sold by Licensor.
Said sale price shall be calculated without any deduction. All expenses
incurred for the manufacture, marketing, promotion, advertising, hand outs,
brochures, financing, etc., of the First Product, will be exclusively born by
Licensee and will not be deducted from the net sales price
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used to calculate the running royalties that are due to Licensor. Those
royalties are net, and not to be diminished for any tax in (country). Licensee
will pay every tax that could diminish the above mentioned royalties.
Running Royalties shall be due and payable for the entire life of any
patent in the applicable country that contains at least one claim that is
infringed by said Product and/or said Process.
If the First Product is further processed/converted by Licensee, or is
assembled in combination with other materials by the Licensee, the net sale
price on which royalties shall be calculated, shall be the net sales price of
whatever product the Licensee finally sells to a third party.
Licensee will provide Licensor with a monthly report, submitted by not
later than the tenth (10th) of the following month, detailing the quantity sold
of each First Product, the total dollar value of the net sales price of each
First Product, and the running royalty to be paid to Licensor for the preceding
month. Licensee shall pay the royalties to Licensor along with the monthly
report. At Licensor's option the running royalty may be paid by crediting the
corresponding amount to one or more accounts designated by Licensor and that
Licensor communicates in writing to Licensee on or before the tenth day prior to
the closing of the Licensee's monthly accounting period for which running
royalties are being paid. Licensee shall notify Licensor of its closing date.
The provisions of this Section 4.1, relating to the calculation and payment of
royalties shall apply hereto mutatis-mutandis.
4.2 In addition to all of the above payments, and in the event that Licensee
exercises the option referred to in Article 8 hereof, the Licensee shall
immediately pay to the Licensor a lump sum of United States Dollars
___________ million (US$______________) for the license to use the
Know-How and technology covered by the Patents referred into Appendix II
hereof, related to the production of CLM Second Products. Additionally and
as part of the total price for the relevant License under these Appendix
II Patents and the relevant technology, the Licensee shall pay to the
Licensor a running royalty of three percent (3%)
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of the net sales price of the produced CLM Second Products. The running
royalties calculated according to this section shall be calculated in the
same manner as the running royalties were calculated above.
ARTICLE 5
OTHER OBLIGATIONS OF THE LICENSOR
5.1 Upon signing of this Agreement, payment by the Licensee of 10% of the
agreed lump sum referred into paragraph 4.1, and execution and delivery to
the Licensor of the guarantee agreement referred into Article 6.4 hereof,
the Licensor shall make available to the Licensee all of the Know-How
specified under this Agreement, except for the Process Specification Book
referred to below.
5.2 Within three months from the date the Licensee notifies the Licensor as to
the location of the Plant pursuant to Article 6.2 hereof, the Licensor
shall provide the Licensee with the "Process Specification Book", which
consists of:
(a) Process Flow sheets with material and energy balances,
(b) Technical Description of the Process,
(c) Basic Equipment Specification (at a level sufficient for detailed
engineering to be completed),
(d) Preliminary Process Instrumentation and Control Diagram,
(e) Proposed Plan Layout.
5.3 Within one month from the date the Licensee provides the Licensor with the
Detailed Engineering as referred below in Article 6.2, the Licensor must
have reviewed the Detailed Engineering and advice the Licensee of any
alterations required for the appropriate construction of the Plant.
5.4 Licensee shall use its best efforts to cause the Plant to be constructed
in an expeditious manner. Upon completion of the Plant, the Licensor shall
provide the Licensee, at the Licensee's expense, the technical assistance
of three (3) qualified personnel trained in the
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Process techniques to train up to ten (10) members of the Licensee's
personnel for a period of thirty (30) days, in order to ensure proper and
adequate use of the transferred Know-How. Licensee shall reimburse
Licensor for its entire cost for such training personnel including, but
not limited to: US$________ - per day per person provided, any
accommodation, traveling, food and other local expenses. Licensor shall
consider any reasonable request for additional training personnel and/or
technical assistance and support. For any additional training personnel,
technical assistance and support that may be supplied by the Licensor, all
expense, including those enumerated above, shall be borne exclusively by
the Licensee.
ARTICLE 6
OTHER OBLIGATIONS OF THE LICENSEE
6.1 As to the Processes and/or the Products licensed under this Agreement, the
Licensee shall exercise its best efforts and diligence in undertaking, at
its own expense, all investigating, as far as those are required, to
obtain and maintain required governmental approvals to manufacture, market
and sell the Product(s) in ________, and shall diligently proceed to
secure and maintain, as may be required from time to time, government
registration and any kind of approvals, authorizations and permits
necessary in ________.
In no case may the Licensor be held responsible for any claims or disputes
arising from, or for any damages caused by, the non compliance of the
Licensee with any Governmental requirements regarding environmental
protection or any other matter.
6.2 The Licensee shall notify the Licensor of the exact, specific location of
the Plant within 30 days from the Effective Date of this Agreement. For
the construction of the Plant, the Licensee may hire any competent
international Engineering Contractor with experience in similar plant
design and construction. This Engineering Contractor will perform the
detailed engineering based on the "Process Specification Book" referred to
above in Article 5.2. The Licensee must provide the detailed engineering
to the Licensor for review and comments as mentioned above in Article 5.3
as soon as it is completed and especially the following:
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(a) Detailed Specification Sheets of all Equipment
(b) Detail Engineering Drawings of all Equipment
(c) Detail Construction and Erection Plans of all required Process and
Auxiliary Equipment.
6.3 Throughout the term of this Agreement the Licensor and any personnel,
assistants, consultants thereof shall have free access to the Plant during
normal business hours and upon ten (10) days written notice. Licensor
shall have the obligation to maintain the confidentiality of any
information obtained as a result of these visits that is so designated in
writing as confidential by Licensee.
6.4 As a condition precedent to the Licensor's undertaking to satisfy its
obligations hereunder, the Licensee shall procure and provide the Licensor
with a guarantee agreement by the holders of all the shares in the
Licensee. Such guarantee agreement shall have to be in form and substance
satisfaction, to and supplied by the Licensor in all respects at the
Licensor's sole and absolute discretion.
ARTICLE 7
SECRECY AND CONFIDENTIALITY
The Licensee shall treat all Processes and technical information,
proprietary Know-How, patented processes, product specifications, patent
applications, documents and drawings supplied by the Licensor as "Confidential
Information" and shall not disclose such confidential information to a third
party except if required by law, and only then if the Licensee informs the
Licensor at least thirty (30) days in advance of the required date of
disclosure. These obligations shall begin with the first supply or disclosure of
the confidential information. The Licensee shall not utilize the confidential
information for any purpose other than for completing, operating, maintaining or
modifying the Plant, and/or formulating and/or selling the Product(s).
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The Licensee shall cause all of its employees to be bound by the same
obligations of confidentiality as the Licensee. The same applies for the
Engineering company(ies) that will take care of the detailed engineering and the
erection and construction of the plant.
Information received from the Licensor shall not be deemed Confidential
Information when:
(a) it enters the public domain by publication or otherwise from a
source having the legal right to publish such information: or
(b) it was documented to have been in the possession of the Licensee at
the Effective Date of the Agreement; or
(c) it is made available to the Licensee independently by a third party,
who has the legal right to do so.
ARTICLE 8
OPTION
Within a period of 24 months commencing with the Effective Date of this
Agreement, the Licensee shall have the option to request and obtain from the
Licensor a license to use the additional patents owned or controlled by the
Licensor and relevant Know-How owned or controlled by the Licensor, with regard
to the manufacturing and/or sale of Ceramic Like Material (CLM) end Second
Products, as referred to in the Patents set forth in Appendix II hereof.
Should the Licensee exercise the above option, and upon payment by the
Licensee of the agreed lump sum referred into Article 4.2 hereof, the Licensor
shall make available to the Licensee all the Know-How and other technical
information related to the subject matter of the Patents referred into Appendix
II hereof.
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ARTICLE 9
TERM
The term of this Agreement is agreed to be from the Effective Date hereof
until the last patent containing at least one claim that covers the First or
Second Process, respectively, or any portion thereof, expires.
ARTICLE 10
TERMINATION
10.1 In the event either party fails to perform its obligations or conditions
herein required to be performed or fulfilled and if any default shall
continue for thirty (30) days after receipt of written notice thereof from
the non-defaulting party, the non-defaulting party shall have the right to
terminate this Agreement by written notice of such termination at any
time. Any right to terminate this Agreement, pursuant to this paragraph,
shall be in addition to, and shall not be exclusive of, or prejudicial to,
any other rights or remedies the non- defaulting party may have on account
of the default of the other party. No waiver by either party of any breach
of any of the provisions herein contained to be performed by the other
party shall be construed as a waiver of any succeeding breach of the same
or any other provision hereof.
10.2 In the event that either party shall be adjudicated as bankrupt; go into
liquidation, receivership, or trusteeship; make a compromise with its
creditors or enter into any similar proceedings or the same nature; or
that governmental regulations, policies, or laws are promulgated, or
proceedings initiated by the government in the domiciliary country of
either party which preclude performance hereunder of the obligations of
either party of a prolonged period of time, the other party shall be
entitled without liability therefor to terminate this Agreement effective
immediately before such action by notice in writing thereof to the other
party. In the event that this Agreement becomes the property of a trustee
or custodian or receiver in bankruptcy or similar situation for the
Licensee, said trustee, custodian or receiver shall be disabled from
granting any sub-license hereunder and shall be obliged to transfer the
Know-How and Patent licenses back to Licensor.
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ARTICLE 11
APPLICABLE LAW
This Agreement shall governed by and construed in accordance with the laws
of the State New York, U.S.A.
ARTICLE 12
ARBITRATION
12.1 In the event of any dispute in the interpretation or meaning of any of the
articles to this Agreement, both parties shall promptly endeavor to
resolve the dispute by mutual discussions and agreement. Should the
dispute continue to remain unresolved, both parties to this Agreement
shall resort to Arbitration as provided for herein.
Either the Licensee or the Licensor may demand Arbitration with respect to
any claim, dispute or other matter that has arisen between the parties.
However, no demand for Arbitration for any such claim, disputes or other
matter shall be made until the latter of:
(a) the date on which either of the parties has indicated his final
position on such claim, dispute or matter, or
(b) the twentieth (20th) day after one party has notified the other of
his complaint in written form and no written reply has been received
within twenty (20) days after such notification.
12.2 No demand for Arbitration shall be made after the thirtieth (30th) day
following the date on which either of the parties has rendered its written
final decision, in respect of the claim, dispute or other matter as to
which Arbitration is sought. The Licensee or the Licensor, as the case may
be, shall be obliged to specify that the written decision is in fact their
final position within the meaning of this Sub-Article. Failure to demand
Arbitration
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within said 30 day period, shall result in the expressed position becoming
the final decision and therefore being binding upon the other party.
12.3 All claims, disputes and other matters arising out of, or relating to,
this Agreement or the breach thereof, which cannot be resolved by the
parties, shall be decided by Arbitration in accordance with the rules of
the American Arbitration Association and, where applicable, the laws of
the State of New York, U.S.A. The Arbitrator shall be chosen by Agreement
between the parties. Should the parties be unable to agree on the naming
of the Arbitration within ten (10) days, the selection of the Arbitrator
shall be made by the American Arbitration Association. The Arbitration
proceedings shall be conducted in English and shall be held in a place at
the discretion of the party against whom a decision is sought, but not
more than 25 miles from an international airport. The party seeking the
Arbitration shall bear the cost, if any, of the location of the
Arbitration and of the travel expenses of not more than two (2) people
representing the other party and not more than two (2) of its counsel, in
coming to the Arbitration, but each party shall bear its entire cost of
counsel, excluding such travel expenses. The award rendered by the
Arbitrator shall be final, and judgments may be entered upon it in any
court having jurisdiction thereof. The party losing the arbitration shall
bear the cost of the Arbitrator.
12.4 The Licensor and the Licensee shall continue to carry out their
obligations under the Agreement and maintain the agreed progress and
running royalty payment schedule during any Arbitration proceedings,
unless otherwise agreed by the parties in writing. In the event that the
Arbitration concerns the amount or running royalties that are due,
interest shall be owed by the Licensee at the rate of 1.5% per month on
the amount of the arbitration award, if any, from the first day of the
month that the running royalties were due until payment thereof.
12.5 In the event of Arbitration, the Licensor and the Licensee agree that the
Arbitrator(s) shall have unrestricted access to the Plant, and to all of
the books and records thereof, for the purpose of the said Arbitration.
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ARTICLE 13
MISCELLANEOUS
13.1 In the event any term or provision of this Agreement shall for any reason
be held to be invalid, illegal or unenforceable in any respect, then,
unless otherwise agreed, this Agreement shall continue to be in full force
and effect except that the said term or provision shall be deemed to be
excised therefrom, so that the Agreement shall be interpreted and
construed as if such term or provision, to the extent the same shall have
been held to be invalid, illegal or unenforceable, had never been
contained herein.
13.2 This agreement supersedes all communications, negotiations, and
agreements, either written or oral, made prior to the Effective Date.
13.3 Licensor makes no representation that the practice of either or both
Processes, or the making using and/or selling of either Product does not
infringe any claim of any patent in any country of the world. Should a
third party make claim against Licensee that there is such an
infringement, Licensor agrees to assist Licensee, as requested and at
Licensee's expense, in the defense against such a claim.
13.4 Licensee hereby agrees to indemnify and hold Licensor harmless against any
claim against Licensor and/or Licensee by any third party in connection
with the Licensee's using the instant licensed technology, carrying out
either or both of the instant licensed Processes, and/or making, using
and/or selling either or both of the instant licensed Products. Licensee
further agrees to indemnify and hold Licensor harmless against any claim
brought by a government or a governmental agency in connection with the
practice of the technology licensed hereunder, and/or the making, using
and/or selling of the Product(s) produced thereby.
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In witness whereof the parties have read, accepted and signed this
Agreement.
C.W. CHEMICAL WASTE _______________________
TECHNOLOGIES LTD.
(LICENSOR) (LICENSEE)
----------------------------------- ----------------------------------
Dated this day of , 199 Dated this day of , 199
-- ------- - -- ------- _
[CORPORATE SEAL] [CORPORATE SEAL]
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