LICENSE AGREEMENT
This License Agreement (the "Agreement") is by and among the following
Parties:
Inventor: Xxx Xxxxxxxxx
X.X. Xxx 000
Xxxxxx, Xxxxxxx 00000
Licensee: American Soil Technologies, Inc.
000 Xxxxx Xxxxxxx Xxxxxx
Xxxxx 000
Xxxxxxxx, Xxxxxxxxxx 00000
Polymers Plus: Polymers Plus, L.L.C.
x/x Xxx Xxxxxxxxx
X.X. Xxx 000
Xxxxxx, Xxxxxxx 00000
and shall be effective on and as of January 4, 2000. Inventor and Licensee are
referred to herein as the "Parties." For and in consideration of the Employment
Contract and Royalties referred to herein, Parties agree as follows:
1. The Invention. Inventor has invented, conceived, developed and reduced
to practice a certain invention relating to the use of polymers as a soil
additive. The polymers improve moisture retention of the soil and reduce
fertilizer consumption of agricultural crops. This invention is referred to in
this Agreement as the "Invention." The Invention also includes any and all
improvements, enhancements and variations of the Invention heretofore or
hereafter made or acquired by Inventor. The Invention has been patented by
Inventor. The patents (referred to herein as the "Licensed Patents") covering
the Invention are United States Patent Nos. 5,649,495 and 5,868,087.
2. License. Inventor hereby grants to Licensee, and Licensee hereby accepts
from Inventor, an exclusive license to make, use, sell, copy, distribute, lease,
modify, improve and in any and every way commercialize the Invention (the
"License"). The License includes an exclusive license under the Licensed Patents
and any other intellectual property (e.g., trade secrets, know-how, copyrights
and trademarks) of Inventor relating to the Invention. The License includes the
right to grant sublicenses without approval of the Inventor, on any terms deemed
necessary or proper by Licensee, subject only the terms of this Agreement. The
scope of the License includes the United States of America and all foreign
countries and is not geographically limited. The term of the License if for the
life of the Licensed Patents plus, in the case of the other intellectual
property described above that is not covered by the Licensed Patents, ten years.
3. New Patent Applications. Whenever it deems it necessary or proper to do
so, Licensee shall be entitled to cause a patent application relating to any new
aspects or otherwise unpatented aspects of the Invention to be prepared and
filed with the United States Patent and Trademark Office ("Patent
Applications"). Each Patent Application shall be filed in Inventor's name as the
inventor. Licensee shall control and direct the preparation and prosecution of
all Patent Applications through Licensee's patent counsel and shall pay for the
costs and expenses of each Patent Application. Inventor shall fully and
completely cooperate with Licensee in the preparation, filing and prosecution of
any Patent Application. This Section 3 shall also apply to any and all
continuation, continuation-in-part, divisional and reissue patent applications
which, in whole or in part or directly or indirectly, are based upon or claim
any priority from the Licensed Patents or any Patent Application. The decision
to file any such continuation, continuation-in-part, divisional or reissue
patent application shall rest solely with Licensee.
4. Improvements. Licensee may file with the United States Patent and
Trademark Office additional patent applications claiming any improvement,
enhancement or variation of the Invention. Licensee shall control and direct the
preparation and prosecution of such patent applications through Licensee's
patent counsel and shall pay for the costs and expenses of such patent
applications. Inventor shall cooperate with Licensee in the preparation, filing
and prosecution of such patent applications. Ownership of such patent
applications and any patents issuing therefrom shall be in the name of Inventor.
5. Foreign Patent Applications. Licensee may file in any foreign countries
patent applications claiming the Invention, including any improvements,
enhancements or variations thereof. Licensee shall control and direct the
preparation and prosecution of such patent applications through Licensee's
patent counsel and shall pay for the costs and expenses of such patent
applications. Inventor shall cooperate with Licensee in the preparation, filing
and prosecution of such patent applications. Ownership of such foreign patent
applications and any foreign patents issuing therefrom shall be in the name of
Inventor but subject to this Agreement. The provisions of this Section 5 apply
to any existing foreign patent applications that have been made by Inventor
prior to the date of this Agreement.
6. Declined Applications. If Licensee decline to file a patent application
within the scope of Section 5 or 6 above, Inventor may do so at his cost and
expense. In such event, any patent issuing from the application declined by
Licensee shall not be deemed a Licensed Patent or included within the License.
Licensee shall have no obligation or responsibility with respect to such
declined application or declined patent.
7. Abandonment of Applications. Licensee may abandon or otherwise cease to
prosecute or maintain any patent application within the scope of Sections 4, 5
or 6. Prior to such abandonment, Licensee shall give notice of its intent to
abandon to Inventor and Inventor may, at his cost and expense, assume control of
and responsibility for the patent application in question and continue to
prosecute and maintain such application. Any patent issuing from an application
abandoned by Licensee shall not be deemed a Licensed Patent or included within
the License. Licensee shall have no obligation or responsibility with respect to
any such application abandoned by them.
8. Licensed Patents. As used in this Agreement the term "Licensed Patents"
shall mean any and all patents described above as Licensed Patents, together
with any patents issuing from any patent application within the scope of
Sections 4, 5 or 6 above. Ownership of all Licensed Patents shall be in the name
of Inventor but subject in all respects to the terms of this Agreement.
9. Enforcement. In the event that any third party infringes any Licensed
Patent or any right licensed to Licensee under this Agreement, Licensee is
authorized to bring suit against such third party in the names of Inventor and
Licensee and to settle any such suit or infringement. Licensee shall bear all
costs and expenses incurred in connection therewith and shall be entitled to
receive and retain any damages or other amounts awarded in such suit or obtained
through settlement.
10. Cooperation. Inventor shall cooperate fully with Licensee in the
protection and enforcement of Licensee's rights in and to the Invention and the
Licensed Patents. Without limiting the foregoing sentence, Inventor shall:
11. fully and completely disclose the Invention, and facts relating to the
Invention, to Licensee;
12. promptly disclose all improvements, enhancements and variations of the
Invention to Licensee after they are made or acquired by Inventor;
13. upon Licensee's request, execute a separate writing confirming and/or
expressing in more specific language the license of any improvement, enhancement
or variation hereunder;
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14. upon Licensee's request, sign all papers, make all rightful oaths and
do all requisite acts necessary or useful in obtaining, enforcing, sublicensing
or protecting any patent or patents to the Invention in the United States or in
any foreign country; and
15. fully cooperate with Licensee in every lawful way in any and every
legal proceeding involving the Invention or the Licensed Patents in the United
States or in any foreign country.
16. Warranty. Inventor hereby represents and warrants to Licensee that:
17. Inventor conceived the Invention;
18. Inventor is the actual and rightful owner of the Invention and all
patent rights and other intellectual property law rights therein;
19. no other person or entity has any rights, interest or title in or to
the Invention (including patent rights thereto); 20. the Invention (including
patent rights thereto) is not subject to any mortgage, lien, encumbrance or
defect in title;
21. Inventor has not entered into any license, obligation, assignment,
contract or understanding in conflict with this Agreement, other than that
certain Exclusive International License Agreement dated August 4, 1998, between
Polymers Plus and Inventor, covering United States Patent Nos. 5,649,495, and
that certain Exclusive International License Agreement dated May 7, 1999,
between Polymers Plus and Inventor, covering United States Patent Nos.
5,868,087, both of which Exclusive International License Agreements are hereby
terminated and replaced and superceded in their entirety by the provisions of
this Agreement; and
22. the Invention and the Licensed Patents are not subject to any dispute,
arbitration or litigation.
23. Royalties. Licensee shall pay to Inventor the below-described "Sales
Royalty." The Sales Royalty shall be equal to One and One-Half Percent (1.5%) of
the net sales received by Licensee as a result of Licensee's ownership of the
License under this Agreement. Sales Royalties shall be paid on a calendar
quarterly basis to Inventor and shall be due within 45 days of the end of each
quarter. Calendar quarters end on the last days of March, June, September and
December. Repayment of the Promissory Note executed by Inventor shall be deemed
as payment as referred to herein.
24. Minimum Royalties. No minimum Sales Royalties shall be due Inventor
under this Agreement.
25. Right to Surrender License. Licensee may elect at any time to surrender
the License by giving written notice thereof to Inventor. Upon surrender of the
License, the License and this Agreement shall terminate and neither Party shall
have any further obligation to the other under this Agreement. Sales Royalties
accrued prior to such surrender shall remain payable by Licensee to Inventor.
Any sublicenses granted by Licensee under the License prior to the surrender
shall remain in effect but Inventor shall receive 100% (rather than 20%) of the
sublicense fees and revenues from and after the date of any surrender by
Licensee of the License.
26. Manufacture of Prototypes. Inventor shall make and give to Licensee the
as many prototypes of the Invention as are reasonably requested by Licensee.
27. Confidentiality. Inventor understands and agrees that the Invention is
confidential and secret and that Inventor shall respect and protect the
confidentiality and secrecy of the Invention. Except as authorized in writing by
Licensee, Inventor agrees not to:
28. directly or indirectly disclose, report, reveal, publish or transfer to
any other person or entity the Invention, any aspect or part thereof, or any
information relating thereto;
29. directly or indirectly aid, encourage or allow any other person or
entity to gain possession of or access to any material or other tangible object
embodying any information relating to the Invention or any aspect or part
thereof; and
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30. directly or indirectly use, sell or exploit the Invention, any aspect
or part thereof, or any information relating thereto or aid, encourage, or allow
any other person or entity to use, sell or exploit the Invention, any aspect or
part thereof, or any information relating thereto.
Inventor's obligations under this Section shall not apply to anything that
Inventor can clearly establish is publicly known or generally employed in the
relevant industry through no fault of Inventor. If not already submitted to
Licensee, Inventor shall promptly submit to Licensee a list of all persons and
other entities to whom the Invention, any aspect or part thereof, or any
information relating thereto has been disclosed or submitted. Upon Licensee's
request Inventor shall provide to Assignee any and all information concerning
any such disclosure or submission.
31. Noncompetition. Inventor agrees that for a period of three years
following the effective date of this Agreement, Inventor shall not, except as
Licensee may approve in writing, engage in any employment or activity in or for
any business which sells any goods or products which, now or hereafter, compete
with the Invention.
32. Injunctive Relief. Inventor agrees that a breach by Inventor of any
obligation of Inventor under this Agreement may cause Licensee immediate and
irreparable harm which may not be adequately compensated by monetary damages
alone. Accordingly, in the event of a breach or threatened breach by Inventor,
Licensee shall be entitled to preliminary and permanent injunctive and other
equitable relief in addition to such other remedies as may be available to
Licensee for such breach or threatened breach, including the recovery of
damages.
33. Assignment. Licensee may assign this Agreement and the License to any
third party assignee who agrees to be bound by this Agreement in the same manner
as Licensee is bound hereby. Such assignment shall include an assignment of
rights and a delegation of duties and obligations under the Agreement to the
assignee. After such assignment and delegation, Licensee shall have no further
obligation under the Agreement. This Agreement is personal to Inventor and may
not be assigned by Inventor.
34. Breach. If either Party fails to perform any obligation under this
Agreement, said Party shall not be in breach or default of this Agreement unless
the other Party gives notice thereof to the Party and the Party fails to cure
the nonperformance within 30 days of receipt of such notice. The non performing
party shall have 90 days from said date in which to completely cure said Breach.
Upon Breach, Inventor shall be entitled to terminate this agreement without
further notice.
35. Licensee's Inventions. This Agreement shall not apply to any inventions
(including improvements, enhancements and variations) made by Licensee.
36. Relationship. Inventor is not an agent, employee, partner, joint
venturer or representative of Licensee.
37. Headings. The headings used in this Agreement are inserted for
reference purposes only and shall not be deemed to limit or affect in any way
the meaning or interpretation of any of the terms or provisions herein.
38. Entire Agreement. This Agreement constitutes the entire understanding
and agreement between the Parties and supersedes all prior agreements,
representations or understandings between the Parties relating to the subject
matter thereof.
39. Severability. If any provision in this Agreement is invalid or
unenforceable, such invalid or unenforceable provision shall be construed,
limited and narrowed as necessary (or severed if necessary) to eliminate the
invalidity or unenforceability of the provision and the other provisions of this
Agreement shall not be affected thereby.
40. Modification. This Agreement may not be rescinded or modified except by
an instrument in writing signed by the Parties hereto.
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41. Governing Law. This Agreement shall be interpreted, construed, and
enforced according to the laws of the State of Arizona. The Parties agree that
any controversy and all matters of dispute arising under this Agreement or
relating to the subject matter thereof are to be resolved and, if necessary,
litigated in the State of Arizona. The Parties hereby submit to the jurisdiction
of the State of Arizona, its courts and federal courts within the State of
Arizona for the resolution of any such controversy or dispute.
42. Notice. Any notice or communication under this Agreement shall be
addressed or delivered to the appropriate Party or to Polymers Plus at the
addresses set forth above, or to any such address as is given from time to time
by the Party or Polymers Plus to the other parties to this Agreement.
43. Attorneys' Fees. In the event any action or proceeding is brought by
either Party or by Polymers Plus against any other party to this Agreement, the
prevailing Party shall be entitled to recover attorneys' fees and costs in such
amount as the court may adjudge reasonable.
44. Duplicate Counterparts. This Agreement may be executed in counterparts
each of which shall be an original. Said counterparts shall form and represent
one and same agreement.
IN WITNESS WHEREOF, the Parties and Polymers Plus have entered into this
Agreement on the dates set forth below, to be effective as of the date first set
forth above.
Date: January 4, 2000 By: /s/ Xxxxxx Xxxxxxxxx
------------------------------------
XXXXXX XXXXXXXXX, Employee
CONSENTED TO BY XXXXX XXXXXXXXX, THE SPOUSE OF XXXXXX XXXXXXXXX:
Date: January 5, 2000 By: /s/ Xxxxx Xxxxxxxxx
------------------------------------
XXXXX XXXXXXXXX
Date: January 4, 2000 AMERICAN SOIL TECHNOLOGIES, INC.,
a Nevada corporation
By: /s/ Xxxx X. Kitchen
------------------------------------
Name: Xxxx X. Kitchen
----------------------------------
Title: President
---------------------------------
POLYMERS PLUS, L.L.C., an Arizona
limited liability company
Date: January 4, 2000 By: /s/ Xxx Xxxxxxxxx
------------------------------------
Name: Xxx Xxxxxxxxx
----------------------------------
Title: President
---------------------------------
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