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EXHIBIT (6)j
THIS AGREEMENT made the 17th day of June, 1998.
BETWEEN:
MPT MILLENNIUM PATENT TECHNOLOGIES CORPORATION LIMITED
(the "Licensor"),
AND
AXYN CANADA CORPORATION
(the "Licensee").
WHEREAS:
1. By virtue of an assignment from the Licensee, the Licensor is the exclusive
owner of a certain invention entitled DATE OVERLOADING(TM) and more fully
described and claimed in its application for patents in Canada and the
United States, as assigned;
2. As partial consideration for the said assignment, the Licensor is required
to grant and the Licensee desires to obtain a license exclusive to the
Licensee for sale and distribution in Canada of products embodying a claim
for the invention;
IN CONSIDERATION of the premises and of the mutual covenants set out together
with other good and valuable consideration (the receipt of which is
acknowledged), the parties agree as follows:
1. GRANT OF LICENSE
The Licensor gives and grants to the Licensee an exclusive license, for
Canada, to practice the inventions claimed in the Licensor's application for
patents in Canada and the United States;
2. SUPPORT AND MAINTENANCE PAYMENTS AND ROYALTY
(1) The Licensee agrees to pay to the Licensor an annual support and
maintenance payment of Thirty-Nine Thousand Five Hundred ($39,500.00 U.S.) U. S.
Dollars commencing upon execution of this agreement and continuing thereafter on
each anniversary thereafter during the currency of this agreement.
(2) The Licensee agrees to pay to the Licensor a royalty of Thirty-Nine
(39%) percent of the Net Sale Price of products sold within Canada embodying a
claim of the Licensor's invention (and/or patents when issued), the failure to
pay which shall be deemed to be a default by the Licensee under this agreement.
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(3) "Net Sale Price" as used in this paragraph shall be the price at which
any product licensed under this agreement is sold by the Licensee less sales or
excise taxes and less credits for any returned goods and allowances for
defective products.
3. WARRANTY
The Licensor warrants to the Licensee that it is the owner of the invention
covered by the application for patents in Canada and the United States and that
it has the sole right to grant the license granted free from all encumbrances.
4. VALIDITY OF PATENT
The Licensee covenants with the Licensor that it will not during the
subsistence of this license, raise or cause to be raised, any question
concerning or any objection to the validity of any claim in the letters patent
on any grounds whatsoever.
5. SUBLICENSES
The Licensee shall have the right to give and grant sublicenses of its
rights, provided that all articles sold under the sublicense shall be subject to
the royalty payments reserved to the Licensor, and the Licensee covenants with
the Licensor to make the royalty payments to the Licensor by reason of sales by
sublicensees and for the observance and performance by all sublicensees of all
the provisions of this agreement. The licensee shall provide the Licensor with a
copy of all sublicenses forthwith after their execution.
6. SALES PROMOTION
(1) The Licensee covenants with the Licensor that it will with all
reasonable dispatch produce, market and sell in Canada products embodying the
invention claimed in application for patents in Canada and the United States and
will use its best efforts to promote, continue and increase such sale during the
continuance of this agreement.
(2) The Licensor covenants with the Licensee that it will with all
reasonable dispatch produce, market and sell worldwide (except in Canada)
products embodying the invention claimed in application for patents in Canada
and the United States and will use its best efforts to promote, continue and
increase such sale during the continuance of this agreement.
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7. ASSISTANCE BY LICENSOR TO LICENSEE
Following the execution of this agreement and for the purpose of
facilitating the production of articles embodying the Licensor's claims by the
Licensee, the Licensor shall:
(a) promptly make available to the Licensee technical information on the
Licensor's developments, techniques and practices concerning the
construction and use of the articles;
(b) give to the Licensee, it agents and servants, if and whenever so
required by the Licensee, any assistance, explanation and information
and make known to the Licensee all drawings and blueprints as are
available to the Licensor, or as are in its possession or as are used
by the Licensor for the manufacture of the articles, and on written
request by the Licensee send, within a reasonable time, to any
designated production facility of the Licensee those of its personnel
who are qualified to provide advice, information and assistance;
provided that, if personnel are sent, the Licensee shall pay to the
Licensor at its request all travelling and general living expenses of
such personnel;
(c) make available to the Licensee from time to time technical information
regarding any improvements made or acquired by the Licensor in
processes, techniques or designs pertinent to the manufacture of the
articles; and make available to the Licensee promptly after the filing
of their respective applications information regarding improvements on
which the Licensor may determine to apply for letters patent;
(d) permit the Licensee at all reasonable times during the term of this
agreement to send its authorized representatives to the Licensor's
facilities for the purpose of witnessing any new or improved
processes, techniques, practices or designs pertinent to the
production and use of the articles; and
(e) in recognition of the value of the assignment of patent rights, pay to
the Licensee Eleven (11%) percent of the Net Sale Price, as defined
above, of products sold by the Licensor in any country of the world
other than Canada embodying a claim of the Licensor's invention
(and/or patents when issued).
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8. IMPROVEMENTS (CORRESPONDING OBLIGATION OF SUBLICENCES)
(1) If the Licensee shall discover or invent an improvement to the
subject-matter of any of the claims applied for and/or latterly granted in
letters patent during the term of this agreement, the Licensee agrees promptly
to disclose the same or cause the same to be disclosed to the Licensor and to
furnish to the Licensor all information pertaining thereto, including
blueprints, sketches, drawings, designs and other data. At the Licensor's
option, the Licensee agrees to assign or cause to be assigned to the Licensor
any discovery or invention and to assist the Licensor, at the Licensor's
expense, to secure patent protection covering discovery or invention in any and
all countries required by the Licensor. In connection therewith, the Licensee
shall furnish to the Licensor, all pertinent information and have executed any
patent applications, assignments or other instruments necessary or desirable,
without expense to the Licensor. Any discovery or invention as to which the
Licensor shall have exercised its option as mentioned shall be the property of
the Licensor, and any patents issued thereon shall be included as subject-matter
as to which the Licensee is licensed under this agreement.
(2) The Licensee shall, to the best of its ability, cause its employees to
disclose any discovery or invention made or developed by them during the term of
this agreement and falling within the terms of subparagraph (1) and to assign
discovery or invention of the Licensor as provided.
(3) At any time after the Licensee has made full disclosure in writing to
the Licensor of any discovery or invention, the Licensee may in writing request
the Licensor to advise the Licensee as to whether or not the Licensor desires to
exercise its option with respect to discovery or invention. If the Licensor
fails to exercise the option with respect to discovery or invention by written
notice sent to the Licensee within three months after receipt of the request,
the Licensee may at its own expense apply for a patent thereon, and if the
Licensor does elect to have discovery or invention assigned to it but does not
apply for patent protection in any country within a period of six months after
assignment, the Licensor shall, if so requested by the Licensee, re-assign to
the Licensee all rights to discovery or invention in respect of all or any
country, and the Licensee may at its own expense apply for letters patent in
that country or countries.
(4) The Licensor shall promptly disclose to the Licensee any discovery or
invention which is an improvement on the invention claimed by the Licensor which
it makes or acquires during the term of this agreement within a reasonable time
after a patent application has been filed, and shall make available to the
Licensee all information relating thereto, including blueprints, sketches,
drawings, designs and other data, and discovery or invention shall be deemed to
be part of the licensed subject-matter for all purposes of this agreement.
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9. INFRINGEMENT
If either party shall have information that any licensed claim is
infringed, the information with regard to it shall be promptly transmitted to
the other party, whereupon the Licensor shall have the right to enter suit to
prevent infringement and to prosecute the suit; provided that if the Licensor
shall fail to institute infringement proceedings within one month of a request
so to do, then the Licensee shall have the right to enter suit for infringement
and to join the Licensor as a party to the suit.
In the event that the Licensor shall institute proceedings pursuant to a
request of the Licensee, the parties agree that any recovery of damages in the
suit shall first be applied to the reimbursement of the parties for the cost of
the suit and the balance shall be paid to the Licensor and Licensee in
accordance with any award made by the court and failing an award equally between
the Licensor and Licensee.
In the event that the patent shall be held invalid in any infringement or
impeachment proceedings, the parties shall continue to make the payments
required of them by this agreement until a final determination of validity has
been made by a court of competent jurisdiction from which either no appeal has
been or can be taken.
10. IMPEACHMENT
The Licensor shall be entitled but shall not be bound to defend every
action, suit or proceeding instituted for the impeachment or a declaration of
non-infringement of the patent; provided that, if the Licensor shall decide not
to defend any action, suit or proceeding it shall so advise the Licensee who
shall be entitled but shall not be bound to defend at its own cost the action,
suit or proceeding.
11. RECORDS
The Licensee agrees to keep full, accurate and complete records and books
of account relating to its operation under this license for the accurate
determination of royalties to be made under this agreement. All of these records
and books of account of the Licensee necessary for the determination of the
royalty payments to be made shall be open at all reasonable times during
business hours during the term of this agreement for inspection and audit by
duly authorized independent chartered accountants designated by the Licensor to
ascertain the accuracy of the royalty payments made by the Licensee. The
chartered accountants shall be entitled to make notes and copies of any
information contained in those records and accounts applicable to the royalty
obligation and to report them to the Licensor.
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12. REPORTS
The Licensee shall deliver to the Licensor quarterly reports on the 30th
days of January, April, July, and October in each and every year during the term
of this agreement showing for the three preceding calendar months the amount of
net sales in respect of which a royalty is payable and each report shall be
accompanied by payment to the Licensor of the full amount shown by the report to
be payable to the Licensor.
13. TERM
(1) This agreement shall endure for an indefinite period unless terminated
in writing.
(2) This agreement may be terminated by the Licensee by delivery of a
notice in writing to the Licensor at least ninety days prior to any anniversary
date.
(3) If the Licensee shall be in default of any obligation on its part under
this agreement, then the Licensor may issue a notice in writing of default and
on failure of the Licensee to remedy the same or cause the same to be remedied
within sixty days after the issuance of the notice, the Licensor may at its
option terminate this license by notifying the Licensee in writing of its
election so to do. Termination shall not prevent the Licensor from collecting
from the Licensee any royalties accrued prior to termination.
14. AUTOMATIC TERMINATION
The license granted to the Licensee shall automatically cease and terminate
in the event of:
(a) the bankruptcy of the Licensee whether voluntary or involuntary, or
(b) the winding up or liquidation of the Licensee, whether voluntary or
involuntary,
and on termination the Licensor shall be entitled to the immediate payment of
all royalties accrued prior to termination.
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15. NOTICES
Any notice given by the Licensor to the Licensee under this agreement shall
be well and sufficiently given if mailed or delivered to the Licensee addressed
as follows:
AXYN Canada Corporation
000-000 Xxxxxxxx Xxxx
Xxxxxx, Xxxxxxx, Xxxxxx
X0x 0X0
Attention: Xxxxxx X. Xxxx
President and Chief Executive Officer
or to any other address as shall have been given by the Licensee in writing to
the Licensor for that purpose, and any notice given by the Licensee to the
Licensor shall be well and sufficiently given if mailed or delivered to the
Licensor addressed as follows:
MPT Millennium Patent Technologies Corporation Limited
227, Arch. Makarios III Avenue
Doma Xxxxxxxx, 0xx Xxxxx
0000 Xxxxxxxx, Xxxxxx
Attention: Licensing Manager
or to any other address as shall have been given by the Licensor in writing to
the Licensee for that purpose, and any notice shall be deemed to have been given
if delivered, when delivered, and if mailed, within ten days after the mailing
of the notice by prepaid registered post in the relevant government post office.
16. DISPUTE RESOLUTION
All disputes arising in relation to this agreement shall be finally settled
under the Rules of Conciliation and Arbitration of the International Chamber of
Commerce. If arbitration is commenced by either party it shall take place in
London, England.
17. SEVERABILITY
The invalidity or unenforceability of any provision of this agreement shall
not affect the validity or enforceability of any other provision of this
agreement.
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18. EXTENDED MEANINGS
Words importing the singular number include the plural and vice versa and
words importing gender include all genders.
19. APPLICABLE LAW
This agreement shall be governed by and shall be construed in accordance
with the laws of the Province of Ontario, Canada. The parties agree that the
application of the United Nations Convention on Contracts for the International
Sale of Goods to this agreement does not apply and is specifically excluded.
20. ENTIRE AGREEMENT
This agreement constitutes the entire agreement between the parties and
there are no other representations, undertakings or agreements of any kind
between the parties except where otherwise specifically acknowledged in this
agreement.
21. SUCCESSORS AND ASSIGNS
This agreement shall be binding upon and inure to the benefit of the
successors and assigns of both parties and all persons or corporations
succeeding them.
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IN WITNESS WHEREOF the parties have set their hands and seals this 17th day of
June, 1998.
AXYN CANADA CORPORATION MPT MILLENNIUM PATENT TECHNOLOGIES
CORPORATION LIMITED
Per Per
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XXXXXX X. XXXX, PRESIDENT & CEO
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A.D. XXXXXXXXX, CORPORATE SECRETARY
