JOINT DEVELOPMENT AGREEMENT
Exhibit
10.5
This
Joint Development Agreement is made and entered into this 3rd day of
June, 2009 (the "Effective Date"), by and between:
CheckPoint
Fluidic Systems International, Limited, a limited partnership organized under
the laws of the state of Texas, whose registered office is at 00000 Xxxxxx Xxxx,
Xxxxxxxxxx, XX 00000, (hereinafter referred to as “CheckPoint”);
and
Helix
Wind Inc., a company incorporated under the laws of the State of Nevada, having
its registered address at 0000 Xxxxxxxxxx Xxxxxx, Xxx Xxxxx, XX 00000,
(hereinafter referred to as “Helix”).
CheckPoint
and Helix are referred to collectively as the “Parties” and each individually as
a “Party.”
WHEREAS,
CheckPoint has extensive worldwide expertise in precision chemical injection
pumping systems for the oil and gas industries, and has developed unique
Technology related thereto (as such term is defined in Section 2, below, and
holds all rights, including Intellectual Property Rights to the Technology;
and
WHEREAS,
Helix has developed an advanced and unique wind turbine Rotor (as such term is
defined in Section 2, below), and holds all rights, including Intellectual
Property Rights to the Rotor; and
WHEREAS,
the Parties wish to jointly develop, integrate and test a prototype and
subsequent production product that stores wind energy as compressed air,
enabling precision chemical injection pumping into oil and gas for CheckPoint
applications around the world, as well as for both parties in other processes,
and to enter into a joint commercial relationship on mutually agreeable
terms.
NOW
THEREFORE, in consideration of the mutual promises and covenants set forth
herein, the Parties hereby agree as follows:
1.
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Purpose and
Scope
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1.1.
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The
Parties shall jointly carry out the development, integration, testing and
demonstration (hereinafter referred to collectively as the “Development”)
of a joint product to be developed by the Parties by integration of the
CheckPoint expertise and technology with the Rotor to form an advanced
complete wind turbine pneumatic pumping system (the
“Prototype”).
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1.2.
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The
Parties are entering this Agreement with the understanding that following
the successful Development, the Parties will then participate in a mutual
commercial relationship, on mutually acceptable terms and
conditions.
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1.3.
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The
terms of this Agreement shall not apply to any work performed by any
Party, jointly or severally, outside the scope of this Agreement, and the
results of such work performed not strictly pursuant to this Agreement
shall not be governed by the provisions of this
Agreement.
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2.
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Definitions
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2.1.
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"Technology"
means individually and collectively, the pneumatic pumping technology
developed by CheckPoint for wind turbines and any associated CheckPoint
products and all components contained and/or incorporated therein and/or
the technology, know-how, techniques, methods and/or designs incorporated
and/or utilized in connection therewith, any pumping systems, computer
hardware or software - whether or not such bears the trade name and/or
trademark of CheckPoint, patents, inventions, etc. which CheckPoint (or
its affiliates) has developed, acquired or licensed, and all corrections,
modifications, and/or enhancements thereto and any modules and/or elements
thereof and all the manuals and other Documentation included therewith
and/or accompanying same.
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2.2.
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"Documentation"
means CheckPoint's and Helix’s printed and electronic technical materials
and specifications related to each of their Technologies, including but
not limited to manuals and promotional materials and software each may
provide to the other Party
hereunder.
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2.3.
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"Rotor"
means the wind turbine rotor developed by Helix and all components
contained and/or incorporated therein and/or the technology, know-how,
techniques, methods and/or designs incorporated and/or utilized in
connection therewith, any computer hardware or software - whether or not
such bears the trade name and/or trademark of Helix, patents, inventions,
micro-chips, etc. which Helix (or its affiliates) has developed, acquired
or licensed, and all corrections, modifications, and/or enhancements
thereto and any modules and/or elements thereof and all the manuals and
other documentation included therewith and/or accompanying
same.
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2.4.
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“Prototype”
means at least one single functioning complete wind turbine system
including the Rotor (as may be further developed hereunder) and the
Technology (as may be further developed hereunder), which together
compress and store wind energy as compressed air, for continuous or
intermittent use by a wide range of pneumatically operated
devices.
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3.
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Stages of Development
of the Prototype
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3.1.
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Definition of
Components and Providence of Background Information
Stage
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3.1.1.
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Within
ten (10) days of the Effective Date, the Parties shall jointly determine
the milestones and deadlines of this Development Project, and CheckPoint
shall then produce a suitable Xxxxx or other work process chart showing
the agreed milestones, the major work processes and assignments and
responsibilities of each party.
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3.1.2.
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Within
ten (10) days, Helix will nominate an internal delegate to join
CheckPoint’s Internet-based Project Management Tool (PMT) as a
participant, and CheckPoint will add such person as a member of the PMT
immediately upon nomination. As such, henceforth Helix will be aware of
all activities CheckPoint is involved in relative to the project. Helix’s
delegate agrees to use said PMT to enter any activities for which it is
responsible connected to this project so that CheckPoint is also aware of
Helix’s activities.
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3.1.3.
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Within
thirty (30) days from the Effective Date, Helix shall be responsible to
purchase (at its own cost) and ship the Rotor to CheckPoint facilities in
Mandeville.
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3.1.4.
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CheckPoint
shall ensure that all of its representatives who come onto any
Helix-controlled premises enter into Helix‘s standard Non-Disclosure
Agreement, comply with Helix’s (and any applicable landlord’s) standard
safety policies, rules and regulations, and comply with all applicable
laws related to such premises. The Parties understand that all such
requirements shall be reciprocal when applied to CheckPoint-controlled
facilities and Helix
representatives.
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3.1.5.
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Each
of the Parties shall provide the other Party, within a period of thirty
(30) days from the Effective Date, such technical and any other essential
information required for the initial phase of the Development of the
Prototype (the “Background Information”). In addition, upon purchasing the
Rotor, Helix shall provide CheckPoint any and all relevant information and
technical data regarding the Rotor as required by CheckPoint for the
preparation of the Technology for integration with the other components.
On an ongoing basis, each Party shall disclose to the other Party, all
information which is reasonably relevant or required for the
accomplishment of the Development.
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3.1.6.
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Within
ninety (90) days from the Effective Date, or sooner if possible, the
Parties will finalize the list of components to be integrated by the
Parties for the Prototype. Accordingly, if possible, CheckPoint, in
consultation with Helix, shall select a compression system or systems to
be used in the Prototype (the "Compressor(s)"). However, the Parties
acknowledge that it is likely that no readily available compressor may
exist to meet the needs of this project, in which case the Parties shall
jointly agree on the design parameters of such Compressor and CheckPoint
shall undertake the design and manufacture of the prototype of such
Compressor at its sole cost. The Parties acknowledge and agree that should
CheckPoint need to develop such Compressor, the Milestones of the
Development Project will probably need to be adjusted to accommodate any
additional engineering time
required.
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3.2.
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Separate Development
Stage
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3.2.1.
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Within
a reasonable period of time as outlined in 3.1.1, and adjusted from time
to time as may be required and agreed by the Parties, after receiving the
Background Information, each of the Parties shall prepare and adjust its
part (the "Separate Development") of the Prototype in order to enable the
integration of all components to one product. Accordingly, CheckPoint
shall prepare and adjust its Technology, using its own development
know-how and skills, for integration with the Rotor, and Helix shall
prepare and adjust its Rotor, using its own development know-how and
skills, for integration with the Pumps with which the Technology will be
integrated.
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3.3.
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Integration
Stage
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3.3.1.
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Upon
the completion of the Separate Development Stage, CheckPoint shall make
available adequate facilities and its professional personnel as necessary
for execution of the integration stage and the testing of the Prototype.
The representatives of CheckPoint or Helix will travel to CheckPoint
facilities to work with CheckPoint personnel to integrate the Technology,
the Compressor(s), and the Rotor to form the Prototype each at
CheckPoint’s and Helix’s respective own
cost.
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3.3.2.
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The
integration of the components to create the Prototype shall be conducted
according to the general outlines as detailed in Exhibit A
hereto.
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3.3.3.
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The
Parties undertake to provide all required manpower and/or tools as
required in order to complete the integration process in a timely and
efficient manner. The forecasted time-frame for the completion of the
integration stage is ninety (90)
days.
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3.3.4.
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Each
of the parties shall appoint a representative who shall be responsible for
the proper and efficient coordination and cooperation between the
Parties.
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3.4.
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Testing and
Development Completion Stage
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3.4.1.
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Upon
completion of the integration stage, the Parties shall jointly conduct
testing of the Prototype to evaluate the success of the integration of the
various components and to test the functioning and production capacity of
the Prototype. The testing shall be carried out by the Parties mutually
and in full cooperation and shall be considered as completed successfully
based on parameters that will be determined and agreed upon by both
Parties.
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3.4.2.
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Helix
agrees that a Prototype in which the Turbine portion operates in a manner
that Helix determines is consistent with its expectations for a period of
not to exceed 60 days shall be deemed sufficient information to proceed
with activities related to production of commercial product based around
the Prototype.
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3.4.3.
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CheckPoint
agrees that a Prototype in which Compressor(s) and air storage portions
prove to meet the needs of the chemical pumps CheckPoint intends to drive
using for a period not to exceed 60 days shall be deemed sufficient
information to proceed with activities related to production of commercial
product based around the Prototype.
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4.
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Expenses
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4.1.
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Each
Party shall bear their own expenses except for the purchase of the Rotor
and its associated expenses, which shall be borne solely by Helix, and the
Technology and Pumps, which shall be borne solely by CheckPoint. Any
money, expenses or losses expended or incurred by either Party related to
this Agreement shall be such Party’s sole cost and
expense.
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5.
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Interim
Reporting
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5.1.
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The
Parties’ representatives shall hold meetings or conference calls for
information, whether regularly or as required, at which meeting/conference
they shall each report their progress, results and other matters of the
Development to the other and deliberate any technical issues if
necessary.
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6.
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Confidentiality
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6.1.
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The
Parties covenant and undertake that, during the Term and for a period of
five (5) years thereafter, absent the disclosing Party’s prior written
consent, all information, written or oral, relating to the disclosing of
either Party’s technology, business or any other information (actual or
planned) which has been or will be disclosed to the other Party prior to
the signing hereof and/or during the course of and pursuant to this
Agreement, and specifically but not limited to the Documentation and
documentation of a similar nature to be provided by CheckPoint or Helix to
the other hereunder, whether or not same has been designated by the
disclosing Party as confidential, which by its nature would ordinarily be
thought to be confidential (the "Confidential Information"), shall be
maintained by the receiving Party in full and absolute confidence, and the
receiving Party shall not use such Confidential Information, directly or
indirectly, in whole or in part, for its own benefit or any purpose
whatsoever except as specifically and explicitly provided hereunder. The
confidentiality undertakings herein shall not apply to specific
information which: (i) is in, or enters into, the public domain other than
by reason of a breach hereof; (ii) is already known to the receiving Party
prior to receipt thereof from the disclosing Party; (iii) is disclosed to
the receiving Party after the date hereof from a third party who has the
right to transfer or disclose such information, without violation of a
confidentiality obligation; (iv) the receiving Party has independently
developed, prior to this Agreement, and without breach of this Agreement;
or (v) is disclosed pursuant to applicable law or regulation, by order,
requirement of a court, administrative agency, or other governmental body.
In the event that the receiving Party shall determine that sub-part (ii)
applies to otherwise Confidential Information, the receiving Party shall
give 30 days advance written notice to the disclosing Party of its intent
to disclose such information so that the disclosing Party may seek any
legal remedies it deems necessary including but not limited to and order
of injunction against such
disclosure.
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6.2.
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The
Parties will not use any Confidential Information otherwise than in
accordance with the aforesaid in this Paragraph 6 and for the execution of
their undertaking according to this Agreement. Notwithstanding anything in
this Agreement to the contrary, all joint evaluation and test results
(including but not necessarily limited to Paragraph 3.4) shall be deemed
to be the joint Confidential Information of the Parties, each of which
shall have joint and equal rights to use such Confidential Information
internally only.
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6.3.
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Upon
termination of this Agreement for any reason whatsoever, each Party shall
promptly return to the other Party all documentation and other tangible
property which was received from the disclosing Party in respect of the
Confidential Information, and any copies made
thereof.
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6.4.
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The
confidentiality undertakings contained herein shall remain in full force
and effect for a period of five (5) years following the later of: (i) the
termination of this Agreement, for any reason or for no reason; or (ii)
from the end of the Term.
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7.
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Ownership of
Intellectual Property Rights
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7.1.
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As
between the Parties, all Intellectual Property Rights in any Invention (as
such terms are defined in Paragraph 7.3) in the exclusive possession of a
Party prior to signature of the Agreement or developed by it at any time
outside the scope of the Agreement alone or in collaboration with one or
more third parties ("Background Technology") shall remain the sole
property of such Party. By way of example, all rights of CheckPoint in the
Technology or any development and/or derivative thereof, shall remain its
sole property. Conversely, by example, all rights of Helix in the Rotor or
any development and/or derivative thereof, shall remain its sole property.
At the end of the Development or Term, whichever is earlier, the Prototype
shall be considered equally shared and owned and remain in CheckPoint’s
possession, with all title, right and interest therein vested equally in
CheckPoint and Helix in equal portion (50% by each
Party).
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7.2.
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It
is further understood and agreed that no Party’s Background Technology
shall become technology developed under this Agreement and shall not
become a Development Result (as defined below) merely because it is used
by the other Party or incorporated into the Prototype (or any
commercialized version thereof).
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7.3.
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As
between the Parties, all rights, title and interest (including all patent
rights, copyrights, trade secret rights, mask work rights, sui generis
database rights and all other intellectual and industrial property rights
throughout the world (collectively, “Intellectual Property Rights” ) in
any inventions (whether or not patentable), works of authorship, mask
works, ideas or information (“Inventions”) made or conceived or reduced to
practice solely by one Party in the course of the Development under this
Agreement (hereinafter collectively referred to as “Development Results”)
, and not based on any Confidential Information of the other Party, shall
be solely owned by the Party that created such Development
Results.
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7.4.
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As
between the Parties, all Intellectual Property Rights in any Inventions
made or conceived or reduced to practice jointly by the Parties in the
course of the Development under this Agreement (hereinafter collectively
referred to as “Joint Development Results” shall be owned as
follows:
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7.4.1.
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If
a particular Joint Development Result relates primarily to CheckPoint
Technology, they shall be owned solely by
CheckPoint.
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7.4.2.
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If
a particular Joint Development Result relates primarily to the Helix
Rotor, they shall be owned solely by
Helix.
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7.4.3.
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If
the Parties cannot agree, after exerting their best diligent good faith
efforts, on whether a particular Joint Development Result relates
primarily to CheckPoint’s Technology or Helix’s Rotor (including their
respective related technology as per Paragraphs 2.1 and 2.3), then each
Party will equally and jointly own the Intellectual Property Rights with
respect only to such particular Joint Development Result. CheckPoint shall
have the exclusive right within the Oil and Gas industry to unilaterally
fully exploit such rights without further accounting to or consent from
Helix (except to the minimum extent required under applicable law) except
within the countries of Brazil, Argentina and Aruba. CheckPoint, however,
will purchase from Helix (at the price tier of Helix’s best sales price to
its Distributors or customers) any Rotor used in its exploitation within
the Oil and Gas industry of such Intellectual Property Rights. Helix shall
have the exclusive right within all other industries to unilaterally fully
exploit such rights without accounting to or further consent from
CheckPoint (except to the minimum extent required under applicable law) on
a worldwide basis. Helix, however, shall purchase from CheckPoint (at the
price tier of CheckPoint’s best sales price to it customers) compressors,
pumps, and any other items sold by CheckPoint which is related to its
Technology and used by Helix in the exploitation of Intellectual Property
Rights, in all industries other than the Oil and Gas Industry. The Parties
shall cooperate and do such things as may be reasonably necessary or
prudent to obtain, maintain, and enforce Intellectual Property Rights in
such Joint Development Results.
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7.5.
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The
Parties hereby shall make any assignments necessary to accomplish the
foregoing ownership provisions. In interpreting such provisions anything
made or conceived or reduced to practice by an employee or contractor of a
Party in the course of performance under this Agreement will be deemed so
made or conceived or reduced to practice by that Party. A Party being
assigned any Intellectual Property Right under this Agreement shall have
the exclusive right to, and, at such Party’s expense, the assigning Party
agrees to assist such Party in every proper way (including, without
limitation, becoming a nominal party) to, evidence, record and perfect the
assignment and to apply for and obtain recordation of and from time to
time cooperate in the enforcement, maintenance, and defense of such
Intellectual Property Right (all at the expense of the Party seeking to
exploit such Intellectual Property Right). In the event that a Party is
unable for any reason whatsoever to secure the other Party’s signature to
any document it is entitled to under this Paragraph 7.4, the Party may
seek enforcement of such provision of Paragraph 7.4 pursuant to binding
arbitration before the American Arbitration Association “AAA”, located in
Phoenix, Arizona, pursuant to the AAA’s Large, Complex Commercial Disputes
Procedures.
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8.
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Strategic Partnership
Relationship
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8.1.
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Upon
the completion of the Development, the Parties shall commence to form the
terms of a Strategic Partnership Agreement for the manufacturing,
marketing and sale of the Prototype or commercial version thereof, which
may be by means of purchase / supply from one Party to another or in any
other commercial model agreed upon between the
Parties.
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9.
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Representations by the
Parties
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9.1.
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EXCEPT
AS EXPRESSLY SET FORTH HEREIN, NEITHER PARTY MAKES ANY WARRANTIES, EXPRESS
OR IMPLIED, WITH RESPECT TO INFORMATION AND/OR MATERIAL TO BE SUPPLIED BY
ANY OF THEM TO THE OTHER, AS TO ANY INFRINGEMENT OF THIRD-PARTY RIGHTS,
MERCHANTABILITY, OR FITNESS FOR ANY PARTICULAR
PURPOSE.
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9.2.
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Each
of the Parties hereby represents and warrants that: (i) it has the means
and ability to duly carry out all of its undertakings pursuant hereto,
including but not limited to the necessary know-how, manpower, finance and
equipment, and the permits and licenses required under any law (if any);
(ii) it has not assigned, transferred, licensed, pledged or otherwise
encumbered any of its Background Technology or Intellectual Property
Rights with respect thereto in a manner inconsistent with the terms of
this Agreement, or agreed to do so; and (iii) it is not aware of any
actual or potential violation, infringement or misappropriation of any
third party rights (or any claim or potential claim thereof) by any of its
Background Technology (or inherent in the development, use or production
thereof) or Intellectual Property Rights with respect
thereto.
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9.3.
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Each
Party represents and warrants to the other Party that the execution and
delivery of this Agreement and the fulfillment of the terms hereof: (i)
will not constitute a default under or conflict with any agreement or
other instrument to which it is a party or by which it is bound; and (ii)
do not require the consent of any person or entity, which consent has not
been acquired prior to the date hereof; and (iii) are and will not be
precluded by any legal, commercial or other
restriction.
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9.4.
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Except
as provided herein, no license or other right is granted, by either of the
Parties to the other one, by implication, estoppels or otherwise, under
any jurisdiction or law.
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10.
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Term and
termination
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10.1.
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The
term of this Agreement shall be the earlier of three (3) years as of the
Effective Date or upon the completion of the Development, manufacture,
marketing and sale of the Joint Development Results, as mutually
determined by the Parties.
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10.2.
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Upon
the termination or expiration of this Agreement, the Parties shall each
immediately return to the other Party any materials and Confidential
Information which they may have received from such
Party.
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10.3.
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Sections
6, 7 and 9-11 shall survive the termination of this
Agreement.
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10.4.
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Either
one of the Parties may terminate this Agreement if: (i) it is reasonably
clear that the Development of the Prototype is not possible for technical
reasons or a commercial version thereof is not commercially feasible; or
(ii) if the other Party commits a breach of this Agreement and fails to
cure such breach within reasonable time not to exceed thirty (30) days
after written receipt of a demand to do
so.
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11.
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Miscellaneous
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11.1.
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Choice
of Law. This Agreement shall be governed by and construed in accordance
with the laws of the State of Louisiana and the United States of America,
without regard to the conflict of laws provisions thereof. Any dispute
arising under or in relation to this Agreement shall be resolved pursuant
to binding arbitration before the American Arbitration Association “AAA”,
located in Phoenix, Arizona, pursuant to the AAA’s Large, Complex
Commercial Disputes Procedures.
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11.2.
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Entire
Agreement. This Agreement constitutes the entire agreement between the
Parties with respect to the matters referred to herein, and supersedes all
prior understandings, promises, representations, agreements and
negotiations between the Parties, oral and
written.
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11.3.
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Assignment
and Amendment. This Agreement may not be assigned by either of the Parties
to any third party without the consent of the other Party, except that a
Party may assign and transfer this Agreement and its rights and
obligations hereunder to any third party who succeeds to substantially all
its business or assets. Subject to the foregoing, this Agreement is
binding upon, inures to the benefit of, and is enforceable by each of the
Party successors and assignees. This Agreement may not be amended or
modified, except by the written consent of both Parties
hereto.
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11.4.
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Relationship
of the Parties. Notwithstanding any provision hereof, for all purposes of
this Agreement each Party shall be and act as an independent contractor
and not as partner, joint venturer, or agent of the other and shall not
bind nor attempt to bind the other to any
contract.
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11.5.
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No
failure or delay on the part of any Party hereto in exercising any right,
power, or remedy hereunder shall operate as a waiver
thereof.
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11.6.
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No
liability or loss of rights hereunder shall result to either Party from
delay or failure in performance caused by force majeure, that is,
circumstances beyond the reasonable control of the Party affected thereby,
including, without limitation, acts of God, fire, flood, war, government
action, compliance with laws or regulations (including, without
limitation, those related to infringement), strikes, lockouts or other
serious labor disputes, or shortage of or inability to obtain material or
equipment.
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11.7.
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Export
Control. Each Party shall comply with all applicable export laws,
restrictions, and regulations of any United States or foreign agency or
authority and will not export or re-export, or authorize the export or
re-export of any product, technology or information it obtains or learns
pursuant to this Agreement (or any direct product thereof) in violation of
any such laws, restrictions or
regulations.
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11.8.
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Headings
of Sections herein are for the convenience of the Parties only, and are
not intended to be or to affect the meaning or interpretation of this
Agreement.
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11.9.
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In
the event that any covenant, condition or other provision contained in
this Agreement is held to be invalid, void or illegal by a court of
competent jurisdiction, the same shall be deemed severable from the
remainder thereof, and shall in no way affect, impair or invalidate any
other covenant, condition or other provision therein contained. If such
condition, covenant or other provision shall be deemed invalid due to its
scope or breadth, such covenant, condition or other provision shall be
deemed valid to the extent permitted by
law.
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11.10.
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All
notices required to be delivered under this Agreement shall be effective
only if in writing and shall be deemed given if delivered personally upon
delivery, if by facsimile or other confirmed electronic means upon
successful transmission and if by registered mail within seventy-two (72)
hours of posting to the addresses set forth in the preamble of this
Agreement.
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[Signature
page follows]
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IN WITNESS WHEREOF, the
Parties have executed this Agreement as of the date first above
written.
/s/
Xxxx Xxxxxxx
CheckPoint
By:
Xxxx Xxxxxxx
Title:
CEO
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/w/
Xxx Xxxxxxx
Helix
By:
Xxx Xxxxxxx
Title: CEO
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JOINT
DEVELOPMENT AGREEMENT
Exhibit
A
General
Description of Development Process Responsibilities
·
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Technical
Specifications: CheckPoint/Helix
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·
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Engineering
Design: CheckPoint
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·
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S322
turbine minus electrical generator portion:
Helix
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·
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Modifications
to Turbine, if needed: Helix
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·
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Design
for housing for compressor(s), if needed:
Helix/CheckPoint
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·
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Fabrication
of housing for compressor(s), if needed:
CheckPoint
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·
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Pneumatic
components: CheckPoint
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·
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Prototype
construction: CheckPoint
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·
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Prototype
testing plan: Helix/CheckPoint
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·
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Prototype
testing: CheckPoint
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