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PATENT SUB-LICENSE AGREEMENT
THIS AGREEMENT is made the 18th day of October l996.
BETWEEN: 0X2 ENGINE (DISTRIBUTION) LTD a company incorporated in Vanuatu under
the International Companies Xxx 0000 having its registered office at
0xx Xxxxx, Xxxxxxx Xxxxx, Xxxxx Xxxxxxx, Xxxx Xxxx, Xxxxxxxx of
Vanuatu ('the grantor') of the first part.
AND: ADVANCED ENGINE TECHNOLOGIES, INC a company incorporated in the United
States of America having its registered office in Colorado.
('the sub-licensee') of the second part.
RECITALS
A. By a license a copy of which is set out in Schedule I ('the head license')
dated [18th October 1996] and made between 0X2 INTELLECTUAL PROPERTY INC as
licenser and the grantor as licensee the said 0X2 INTELLECTUAL PROPERTY INC
granted to the grantor an exclusive license to manufacture, distribute and
market the 0X2 combustion engine as defined in International Patent
Application No, PCT/AU95/00815 for the life of the Patent throughout the
world subject to the terms and conditions of the head license.
B. The grantor in accordance with CL 2.1.2 of the head license has agreed to
grant to the sub-licensee a sub-license to manufacture, distribute and market
the OX2 combustion engine the subject of the Patent in the territory
specified in Schedule 2 on the following terms and conditions.
NOW THE PARTIES AGREE as follows--
Article 1 Sub-license
1.1 The grantor agrees to grant the sub-licensee, a exclusive license to
manufacture, distribute and market the 0X2 combustion engine the subject of
the Patent in the territory specified in Schedule 2 during the subsistence
of the head license.
1.2 In the event that the product the subject of the Patent is manufactured in
the territory but is distributed in a country outside the territory then the
sub licensee is to pay to the sub license holder for the country of
distribution an amount equivalent to 75% of the base royalty payable on the
product so distributed.
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Article 2 Consideration
2.1 The sub-licensee shall issue thirty nine million (39,000,000) of its common
shares to the grantor or his nominee as follows--
2.1.1. On the date of execution of this agreement twenty million shares
(20,000,000)
2.1.2 upon the presentation of emission test result verified by a
recognized independent testing authority - nineteen million shares
(19,000,000)
Article 3 Royalties
3.1 The sub-licensee shall during the continuance of the sub-license hereby
granted pay to the grantor a royalty of 15% of the gross proceeds (net of
payments made in accordance with CL 1.2) received by the sub-licensee on all
products manufactured in accordance with the Patent and sold leased used or
otherwise disposed of by the sub-licensee (including any agent thereof).
3.2 The royalty shall be computed at the end of each quarter which, for the
purpose of this agreement shall end on the last day of the month of March,
June, September and December.
3.3 If this agreement is terminated for any reason during a quarter then, for
the purpose of this clause, the date of termination shall be the end of that
current quarter.
3.4 Subject to sub-CL 3.6 below the sub-licensee shall pay the royalty for each
quarter free of all taxes or charges within 30 days of the end of the
quarter.
3.5 Each payment provided for in sub-CL 3.1 shall be paid in United States
Dollars and the rate of exchange shall be that prevailing on the last day of
the relevant quarter.
3.6 The sub-licensee shall notify the grantor with each quarterly adjustment of
the royalty of--
3.6.1 the number of products distributed during the quarter;
3.6.2 the detailed profit and loss statement of the sub-licensee for the
quarter;
and such notification shall, if required by the grantor, be certified as
correct by the auditor of the sub-licensee, or if the sub-licensee does not
have an auditor, by a person approved by the grantor for this purpose.
3.7 The sub-licensee shall maintain for a period of seven (7) years in a manner
approved by the grantor separate and accurate records and accounts in
sufficient detail to provide the information required to be notified under
this clause and any other information reasonably required by the grantor.
Such separate and accurate records and accounts shall be in sufficient
detail so that the grantor need not refer to the other records and accounts
of the sub-licensee.
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3.8 The sub-licensee shall permit an accountant or auditor of the grantor from
time to time during ordinary business hours to inspect and verify all or any
records required to be maintained by the sub-licensee under this clause and
the sub-licensee shall give all assistance necessary to such accountant or
auditor to carry out such inspection and verification and permit such
accountant or auditor to take copies of any such records.
Article 4 Grant
4.1 In consideration for the payment of the license fee and royalty set out in
CL 2 and 3 the grantor hereby grants to the sub-licensee the following--
4.1.1 an exclusive license for the territory for the term to manufacture
distributes and markets the product;
4.1.2 the right to grant sub-licenses of any rights referred to in the
preceding paragraph on condition that the sub-licensee first obtain
the written consent of the grantor to each and every sub-license
which consent shall not be unreasonably or arbitrarily withheld.
Article 5 Covenants in head license to be observed
5.1 The sub-licensee shall during the continuance of this sub-license perform
and observe the terms and conditions contained in the head license in so far
as the same are consistent with this sub-license. In particular the sub -
licensee shall perform and observe those terms and conditions as set out
Articles 5, 7, 8, 9,10.1.5 and 11 of the head license.
Article 6 Appointments to Board of Directors of Sub-Licensee
6.1 The grantor has the right to appoint two nominees at its sole discretion to
the Board of Directors of the Sub-licensee.
Article 7 Assignment of license
7.1 The sub-license hereby granted is personal to the sub-licensee and the
sub-licensee shall not assign mortgage charge or grant any sub-licenses in
respect of the sub-license without the previous written consent of the
grantor.
Article 8 General
8.1 Waiver. Any waiver or forbearance in regard to the performance of this
agreement shall operate only if in writing and shall apply only to the
specified instance, and shall not affect the existence and continued
applicability of the terms of it thereafter.
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8.2 Entire agreement This agreement embodies all the terms binding between the
parties and replaces all previous representations or proposals not embodied
therein.
8.3 Assignment
8.3.1 the sub-licensee shall not assign all or any of its rights hereunder
without the prior written consent of the grantor, which consent shall
not be unreasonably or arbitrarily withheld;
8.3.2 the grantor may at its discretion assign all or any of its rights
hereunder.
8.4 Applicable law. This agreement shall be governed by and construed in
accordance with the laws of Vanuatu but all questions relating to the scope
validity or interpretation of any patent and/or trade xxxx licensed
hereunder shall be determined according to the laws of the country of the
patent and/or trade xxxx hereby licensed the subject of such question.
8.5 Jurisdiction, Each party irrevocably and unconditionally submits to the
non-exclusive jurisdiction of the courts of Vanuatu and each waives any
immunity or any objection it may have to any action in those courts and to a
claim that any action has been brought in an inconvenient forum or to those
courts not having jurisdiction. The parties agree that any judgment, order
or determination of such courts may be registered and/or enforced in the
courts of any State or jurisdiction where the sub-licensee has assets.
8.6 Amendments. This agreement may not be varied except in writing signed by the
parties.
8.7 Severability. If any provision of this agreement is held by a court to be
unlawful, invalid, unenforceable or in conflict with any rule of law,
statute, ordinance or regulation the validity and enforceability of the
remaining provisions shall not be thereby affected.
8.8 Notices. All notices shall be in writing and shall be given by any one of
the following means--
8.8.1 by delivering it to the address of the party on a business day during
normal business hours;
8.8.2 by sending it to the address of the party by pre-paid airmail post or
if airmail post is not available by ordinary post; or
8.8.3 by sending it by facsimile transmission to the facsimile number of
the party and on the next business day giving it by either of the
means set forth in sub-CL 8.8.1 or 8.8.2 above.
8.9 A notice shall be deemed to be given and received--
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8.9.1 if given in accordance with CL 8.8.1 on the next business day after
the day of delivery in the place of delivery;
8.9.2 if given in accordance with CL 8.8.2 five (5) clear business days
after the day of posting in the place of delivery;
8.9.3 if given in accordance with CL 8.8.3 on the next business day after
transmission in the place of delivery.
8.10 The address and facsimile numbers referred to in CL 8.8 shall in the
absence of notice to the contrary be as set out below:
Grantor:
Address: X0 Xxx 000, Xxxx Xxxx, Xxxxxxxx of Vanuatu
Facsimile: x000-00000
Sub-licensee:
Address:
Facsimile:
8.11 Further agreements. Each party shall execute such agreements, deeds and
documents and do or cause to be executed or done all such acts and things
as shall be necessary to give effect to this agreement.
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8.12 Charges. All stamp duties and governmental charges arising out of or
incidental to this agreement shall be the responsibility of and payable by
the sub-licensee.
EXECUTED as a deed.
Schedule 1
[Head license]
Patent License Agreement
THIS AGREEMENT is made the l8 day of October 1996
BETWEEN: 0X2 INTELLCTUAL PROPERTY, INC a company incorporated in Vanuatu under
the International Companies Xxx 0000 having its registered office at
0xx Xxxxx, Xxxxxxx Xxxxx, Xxxxx Xxxxxxx, Xxxx Xxxx, Xxxxxxxx of
Vanuatu ('the licenser') of the first part
AND: 0X2 ENGINE (DISTRIBUTION) LTD a company incorporated in Vanuatu under
the Internationa1 Companies Xxx 0000 having its registered office at
0xx Xxxxx, Xxxxxxx Xxxxx, Xxxxx Xxxxxxx, Xxxx Xxxx, Xxxxxxxx of
Vanuatu ('the licensee') of the second part.
RECITALS
A. By an agreement for sale by way of assignment dated [27th February 1996]
between ZEROPRIZE LTD as seller and the licenser as purchaser ('the
assignment agreement'), the licenser has acquired or is entitled to acquire
with effect from the payment of the license fee all right, title and interest
in and to International Patent Application No. PCT/AAU95/008l5 including the
right to apply for or obtain corresponding letters patent in any country in
the world, relating to an invention known as the 0X2 combustion engine upon
the terms set out in the assignment.
B. The licensee desires to manufacture, distribute and market the 0X2 combustion
engine and has sought license for that purpose.
C. The licenser has agreed to grant the license sought on the following terms
and conditions.
NOW THE PARTIES AGREE as follows--
Article 1 Interpretation
'License fee' US$40,000,000 such sum to be paid progressively from and
to be a first charge on the net revenue until paid in full. The license
fee must be paid as to US$10,000,000 from each of the 4 scheduled
territories, namely--
European Union
NAFTA
Asia
Rest of the World.
'Licensee's improvements' means all technical information (including
patentable inventions and trade secrets insofar as they originate with
licensee or are acquired by licensee before licenser knows them)
relating to the development, manufacture, distribution or marketing of
the product developed or acquired by the licensee during the term of
this agreement.
'Licenser's improvements' means all technical information including
patentable inventions, trade secrets and copy rights insofar as they
originate with or are acquired by licenser before licensee knows them
relating to the development, manufacture, distribution or marketing of
the product developed or acquired by the licenser during the term of
this agreement.
Net revenue' means the revenue of the licensee from all sources,
including income and the sale of capital items and sublicenses, after
making such provision for taxation including corporation tax and any
other present or future statutory charge or levy whether against
capital or income and whether imposed directly by any Government or
indirectly through any organ of government or local or other public
authority in any relevant jurisdiction) rents rates insurance's
interest and other usual or recurring charges expenses or outgoing and
for depreciation.
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'Patents' means all present and future patents and applications filed
in any jurisdiction in the territory insofar as they relate to the
product and all divisions, continuation, continuation in part,
supplemental disclosure and reissues thereof and thereto.
'Product' means the 0X2-combustion engine as defined in International
Patent Application No. PCT/AU95/00815
'Royalty' means 5% of the net revenue of the licensee for each calendar
year.
'Term' means the period from the date of this agreement for until the
day on which the last of the patents expires, whichever is the later.
'Territory'
EUROPEAN UNION
Belgium Greece Netherlands
Denmark Ireland, Republic of Portugal
France Italy Spain
Germany Luxembourg United Kingdom
NAFTA
Canada Mexico United States of America
ASIA
All countries of continental Asia (excluding Russia, Thailand and
Indonesia)
REST OF THE WORLD
All countries, territories and jurisdictions not comprised in the above
3 categories.
'Trade secrets' means all secret processes, formulae and technical
information relating to the product now possessed or developed or
acquired by the licenser or the licensee prior to or during the term of
this agreement.
1.1 A reference to person shall include corporations; words including
singular number shall include plural number and vice versa; words
including a gender shall include all other genders.
1.2 A reference in this agreement to a Statute or a section of a statute
includes all amendments to that statute or section passed in
substitution for the statute or section referred to or incorporating
any of its provisions.
1.3 Clause headings have been inserted for the purpose of guidance only,
and shall not be part of this agreement
Article 2 Grant
2.1 In consideration for the payment of the license and royalty set out in CL 3
the licenser hereby grants to the licensee the following--
2.1.1 an exclusive license for the territory for the term to manufacture,
distribute and market the product,
2.1.2 the right to grant sub-licenses of any rights referred to in the
preceding paragraph on condition that the licensee first obtains the
written consent of the licenser to each and every sub-license, and the
consenting licenser may include as a condition of such consent that
the sub-license include provision--
2.1.2.1 the sub-licensee shall maintain for a period of seven (7)
years in a manner approved by the licenser separate and
accurate records and accounts of the distribution of the
products, the net sale price at which the products are sold
and any other information reasonably required by the licenser
relevant to the products distributed and marketed and the
determination of net sales price. Such separate and accurate
records and accounts shall be in sufficient detail so that the
licenser need not refer to the other records and accounts of
the sub-licensee;
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2.1.2.2 the sub-licensee shall permit an accountant or auditor of the
license from time to time during ordinary business hours to
inspect and verify all or any records required to be
maintained by the sub-licensee under this clause and the
sub-licensee shall give all assistance necessary to such
accountant or auditor to carry out such inspection and
verification and permit such accountant or auditor to take
copies of any such records.
2.1.2.3 as contained in Article 5, Article 8, Article 9, Article
14.4.1.
Article 3 License Fee & Royalty
3.1 In consideration of the licenses granted in CL 2 the licensee shall pay the
license fee and royalty to the licenser.
3.2 The license fee and royalty shall be computed at the end of each quarter
which, for the purpose of this agreement shall end on the last day of the
month of March, June, September and December.
3.3 If this agreement is terminated for any reason during a quarter then, for
the purpose of this clause, the date of termination shall be the end of that
current quarter.
3.4 Subject to sub-CL 3,6 below the licensee shall pay the license fee and
royalty for each quarter free of all taxes or charges within 30 days of the
end of the quarter.
3.5 Each payment provided for in sub-CL 3.1 shall be paid in United States
Dollars and the rate of exchange shall be that prevailing on the last day of
the relevant quarter.
3.6 The licensee shall notify the licenser with each quarterly adjustment of the
license fee and royalty of--
3.6.1 the number of products manufactured and distributed during the
quarter;
3.6.2 the number of sub-licenses granted during the quarter and the
consideration received for such sub-licenses;
3.6.3 the detailed profit and loss statement of the licensee for the
quarter;
and such notification shall, if required by the licenser, be certified as
correct by the auditor of the licensee, or if the licensee does not have an
auditor, by a person approved by the licenser for this purpose.
3.7 The licensee shall maintain for a period of seven (7) years in a manner
approved by the licenser separate and accurate records and accounts in
sufficient detail to provide the information required to be notified under
this clause and any other information reasonably required by the licenser.
Such separate and accurate records and accounts shall be in sufficient
detail so that the licenser need not refer to the other records and accounts
of the licensee.
3.8 The licensee shall permit an accountant or auditor of the licenser from time
to time during ordinary business hours to inspect and verity all or any
records required to be maintained by the licensee under this clause and the
licensee shall give all assistance necessary' to such accountant or auditor
to carry out such inspection and verification and permit such accountant or
auditor to take copies of any such records.
3.9 The obligations in this clause on the licensee to account to the licenser
and maintain relevant records in respect of royalty shall apply to any
amounts due to the licenser from the licensee pursuant to the terms on which
the licenser provides his consent to a sub-license under CL 2.1.2 above.
Article 4 Registration
4.1 The licensee may at any time during the currency of this agreement request
the licenser to grant to the licensee formal licenses in respect of any of
the patents in a form that complies with the requirements of law and public
authorities in such part of the territory as the licenser approves to enable
the licensee at its expense, to become duly registered as the licensee under
the patents.
4.2 The licensee hereby undertakes to bear all costs and expenses incurred in
the grant, registration and maintenance of formal licenses and of any formal
sub-licenses granted under CL 2.1.2 in respect of the patents to the license
pursuant to CL 5.1.
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Article 5 Grant back - 1icensee's improvements
5.1 The licensee by this agreement agrees to transfer to the licenser or its
nominee all intellectual property in the licensee's improvements in any
jurisdiction throughout the world for the life of the licensee's
improvements.
5.2 Promptly and periodically me licensee shall disclose to licenser information
and technical data then available to the licensee to enable the licenser to
fully exploit the licensee's improvements.
Article 6 Assistance to Licensee
6.1 For the term of this agreement the licenser shall in good faith promptly and
regularly supply to the licensee and all of me licensee's sub-licensees'
assistance, within fourteen (14) days of a reasonable request for same
including(but without limitation)--
6.1.1 advice on the technical characteristics of the product;
6.1.2 operating manuals for the product;
6.1.3 all details of all improvements to the product which come to the
licenser's knowledge and other developments in trade Secrets which
hereafter become known to or owned by the licenser including (but
without limitation) general information concerning the use of the
trade secrets and all changes in trade secrets previously supplied as
they relate to the product.
6.2 Nothing in this clause shall be deemed to require either party to furnish
information or technical data which is not suitable for commercial use or
for which it does not have the right (but only to the extent that it does
not have the right) to disclose for use within the territory.
Article 7 Exploitation of license
7.1 The licensee at its expense shall use its best endeavors to commercialize
patents, trade secrets, improvements and to manufacture, distribute and
market the product or to appoint sub-licensees for the purpose of such
commercialization.
Article 8 Product Liability
8.1 The licensee shall not manufacture, distribute or market any product which
fails to meet the requirements and specifications of the minimum standards
of the licenser and any applicable standards set forth by the country in the
territory where the particular product is to be distributed
8.2 The licensee shall keep the licenser indemnified against all damages, costs
or expenses, including legal costs, in respect of all claims, demands,
actions, proceedings or prosecutions which may be brought, commenced or
prosecuted against the licenser in consequence or relating to or arising out
of the manufacture, distribution or commercial utilization of the product
where such claims, demands actions or prosecutions arise for a reason other
than defective design.
8.3 The licensee shall at all times maintain and keep current in respect of its
manufacture and distribution of the product, product liability insurance
obtained from a reputable insurer in an amount and upon terms approved by
the licenser and shall make available to the licenser such policy for
inspection upon request by the licenser.
8.4 The licensee shall permit the licenser by its servant or agents (which shall
not be competitors of the licensee) from time to time on reasonable notice
in writing to enter the licensee's premises or the premises of any
sub-licensee' for the purpose of inspecting the product, to verify the use
or non-use of the patents, licenser's improvements or trade secrets.
Article 9 Secrecy obligations
9.1 The licensee shall--
9.1.1 keep confidential all trade secrets and disclosures in the patents
(other than issued patents included with the patents) licensed under
this agreement and all other information and technical data disclosed
by the licenser to the licensee, provided that the licensee shall
have the right to disclose such information to its employees who
first sign an employee confidentiality agreement in terms approved by
the licenser insofar as it is necessary for them to know the
information for the use of the liicenses granted herein, and to
representatives of potential or actual sub-licensees after execution
by each such representative of a confidentiality agreement acceptable
to the licenser; and
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9.1.2 not use any trade secrets, disclosures or other information technical
data, except for the purposes of the licenses granted herein and en
the terms of this agreement;
9.1.3 the licensee shall remain liable to the licenser for all breaches of
confidentiality by any of the licensee's employees notwithstanding
the signing of an employee confidentiality agreement.
9.2 The licenser shall keep confidential all matters relating to their
licensee's improvements and any other information of a confidential nature
supplied by the licensee to the licenser for the purposes of this agreement,
including but not limited to financial data and royalties.
9.3 Notwithstanding the provisions of sub-CL 9.1 and 9,2, the licensee and
licenser may disclose information if and to the extent that--
9.3.1 such disclosure is fored by laws, regulations or orders;
9.3.2 the information is generally available in the public domain except
Where that is a result of a disclosure in breach of this agreement;
and
9.3.3 a party can prove that it knew the information before it was
disclosed to it by the other party.
Article 1O Licenser's warranties
10.1 The licenser hereby represents, warrants and undertakes to the licensee
that--
10.1.1 neither the execution of this agreement nor the performance by the
licenser of its obligations will cause it to be in breach of any
agreement to which it is party or is subject;
10.1.2 the licenser has and for the duration of this agreement will
continue to have the rights to the patents and the trade secrets the
subject of this agreement;
10.1.3 the patents include all patents or applications for a patent
material to the product or any of the trade secrets;
10.1.4 all designs, specifications, plus, drawings and other trade Secrets
supplied to the licensee by the licenser will be to the best of the
knowledge and belief of the licenser true, accurate, reliable and
up-to-date;
10.1.5 the licenser will use its best endeavors to procure the patent
applicant to obtain the grant of a patent pursuant to each
application made at the date of this agreement and made in respect
of any of the patents or any patentable licenser's improvement to
the product in any jurisdiction in the territory, and (without
prejudice to the foregoing) will at the licensee's expense--
10.1.5.1 procure publication thereof.
10.1.5.2 to the extent that it has not already done so, cause
requests to be made to the patent office in the prescribed
form for a preliminary examination and search and pay the
prescribed fee,
10.1.5.3 cause requests to be made to the patent office to make a
substantive examination and pay the prescribed fee,
10.1.5.4 so far as may be required make observations and cause the
application to be amended;
10.1.5.5 in respect of the patents pay all renewal fees necessary to
keep such patents in force, each such payment to be
effected not later than seven days before the last date
thereof and upon demand produce to the licensee each
renewal certificate in respect thereof. Such renewal fees
are to be reimbursed to the licenser by the licensee; and
10.1.5.6 notify the licensee forthwith of any withdrawal of or
amendment to any application and if any application is
treated as refused.
10.2 the licenser will indemnify and at all times hereafter hold the licensee
fully and effectively indemnified against any losses, costs, actions,
claims, demands, expenses, judgments, court orders or other liabilities
arising directly or indirectly out of or in connection with--
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10.2.1 any breach by the licenser of any of the representations, warranties
or undertakings contained in clause 10.1;
10.2.2 any claim or action against the licensee by any sub-licensee of the
licensee resulting from any breach of this agreement by the
licenser.
Article 11 Patent infringement
11.1 The licenser appoints and constitutes the licensee its agent and attorney
during the term of this agreement, to assert from time to time in the name
of the patent holder and/or licenser and for the account of the licenser
but for the benefit of and at the expense of the licensee whatever claims
and rights the patent holder and/or licenser may have arising from any
actual or apparent infringement of the patents within the territory or
unauthorized use of any of the trade secrets, and it is a fundamental
condition of this agreement that the licensee shall promptly assert and
enforce all such claim and rights and institute and prosecute an action
against any infringement which comes to its notice.
11.2 In the event the licensee asserts a claim or institutes an action as a
result of an actual or apparent infringement of the patents or unauthorized
use of any of the trade secrets, the licensee shall immediately notify the
licenser.
11.3 The licenser shall, if required by the licensee and if necessary for the
purposes of sub-CL 11.1, lend its name and shall otherwise do all acts and
things the licensee may reasonably require to assist in performing its
obligations under sub-CL 11.1.
11.4 The licensee shall keep the licenser indemnified from and against all loss
costs and damage suffered or incurred by the licenser arising out of the
licensee exercising its powers and performing its obligations under this
clause.
11.5 The proceeds from any judgment or settlement made by the licensee in any
action brought by it pursuant to sub-CL 11.1 shall be used to reimburse the
licenser for all expenses incurred by it in assisting the licensee in
prosecuting the action, and to pay the licensee's costs and expenses
incurred in such prosecution and the remainder shall be the licensee's.
11.6 The licenser shall execute all documents and do all things reasonably
necessary to aid and co-operate In the prosecution of any action brought by
the licensee pursuant to sub-CL 11.1,
Article 12 Termination
12.1 The licenser may at any time immediately terminate this agreement upon the
happening of any of the following events--
12.1.1 if an order is made or a resolution passed for the winding up or the
dissolution without winding up of the licensee, provided always that
default shall not be deemed to have occurred where the winding up is
for the purpose of reconstruction or amalgamation and the scheme for
reconstruction or amalgamation has the licenser's prior written
consent (which consent shall not be unreasonably withheld);
12.1.2 if the licensee suspends payment of its debts or becomes insolvent
within the meaning of any relevant legislation or law;
12.1.3 if without the licenser's prior written consent the licensee enters
into an arrangement reconstruction or composition with its creditors
or any of them;
12.1.4 if a receiver is appointed to the licensee;
12.1.5 if pursuant to the provisions of any relevant legislation or the
licensee is placed under official management or an inspector is
appointed to investigate the affairs of the licensee,
12.1.6 if without the licenser's prior written consent the licensee signs,
transfers or parts with possession of any material undertaking or
assets otherwise than in the ordinary course of business of the
licensee,
12.1.7 if default is made by the licensee in payment of royalty, and such
default is not remedied within 30 days after notice specifying such
default and requiring the licensee to remedy the same has been given
by the licenser to the licensee.
12.l.8 if default is made by the licensee in performance or observance of
any provision of this agreement other than those provisions referred
to in sub-CL 12.1.7 and where such default is capable of remedy such
default is not remedied within 30 days after notice, specifying such
default and requiring the licensee to remedy the same has been given
by the licenser to the licensee; or
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12.1.9 there is a change in control of the licensee without the prior
'written consent of the licenser.
12.2 For the purposes of sub-CL 12.1.9 a change in control of the licensee means
that there is such a change in the shareholders of the licensee, or such a
change in the composition of the board of directors of the licensee which,
in the opinion reasonably held of the licenser, has the effect of taking
control of the licensee away from its existing board of directors or puts
the licensee under the control, direct or indirect, of persons or companies
different from those in control at the latter of the date hereof and the
date on which the licenser last consented in writing to particular changes
in the shareholders or board of directors of the licensee.
12.3 The licensee may at any time terminate this agreement by notice upon the
happening if any of the following events-
12.3.1 if an order is made or a resollution passed for the winding up of
the licenser other than for the purpose of amalgamation or
reconstruction;
12.3.2 if the licenser suspends payment of its debts or becomes insolvent
within the meaning of any relevant legislation or law; or
12.3.3 if substantial default is made by the licenser in the performance or
observance of any provisions of this agreement, and where such
default is capable of remedy such default is not remedied within 30
days after notice specifying such default and requiring the licenser
to remedy the same has been given by the licensee to the licenser,
Article 13 Effects of termination
13.1 Upon termination of this agreement for any reason whatsoever--
13.1.1 the licensee shall deliver up to licenser all technical manuals,
advertising materials and brochures in respect of the patents, trade
secrets, licenser's improvements and the products in its possession
or under its control, or in the possession or under the control of
its servants or agents;
13.1.2 subject to sub-CL 13.1.3 below the licensee shall have no further
rights to manufacture, distribute or market the products, the
patents, or the trade secrets whether under common or other law,
statute or otherwise and, at the licensee's expense, it shall
execute and deliver to the licenser such instruments and take all
other action as the licenser deems reasonably necessary to ensure
the termination of any such rights which the licensee might
otherwise have, and to vest in the licenser every interest therein;
13.1.3 this clause, CL 14, CL 9 and the provisions of CL 3.7 and CL 8.2
shall continue to bind the parties;
13.1.4 the provisions of CL 3.3' CL 3.4 and CL 3.6 shall continue to bind
the parties until the licenser is satisfied that all royalties
payable under this agreement are paid.
13.2 The termination of this agreemennt shall not affect any right of action
which may have accrued to either party in respect of any breach prior to
the date of such termination.
13.3 Upon the termination of this agreement pursuant to CL 12.3 the licensee
shall be entitled to complete all contracts already entered into for
manufacture & distribution of products and to the extent necessary use the
patents and trade secrets and licenser's improvements.
Article 14 General
14.1 Sub licenses. The licensee shall deliver to the licenser copies of any
sub-licensing agreement entered into in accordance with CL 2 and amendments
thereto within thirty (30) days of execution.
14.2 Waiver. Any waiver or forbearance in regard to the performance of this
agreement shall operate only if in writing and shall apply only to the
specified instance, and shall not affect the existence and continued
applicability of the terms of it thereafter.
14.3 Entire agreement. This agreement embodies all the terms binding between the
parties and replaces all previous representations or proposals not embodied
therein.
page 13
14.4 Assignment
14.4.1 the licensee shall not assign all or any of its rights hereunder
without the prior written consent of the licenser, which consent the
licenser may grant or not in its absolute discretion;
14.4.2 the licenser may at its discretion assign all or any of its rights
hereunder.
14.5 Applicable law. This agreement shall be governed by and construed in
accordance with the laws of Vanuatu but a]l questions relating to the scope
validity or interpretation of any patent and/or trade xxxx licensed
hereunder shall be determined according to the laws of the country of the
patent and/or trade xxxx hereby licensed the subject of such question.
14.6 Jurisdiction. Each party irrevocably and unconditionally submits to the
non-exclusive jurisdiction of the courts of Vanuatu and each waives any
immunity or any objection it may have to any action in those courts and to
a claim that any action has been brought in an inconvenient forum or to
those courts not having jurisdiction. The parties agree that any judgment,
order or determination of such courts may be registered and/or enforced in
the courts of any State or jurisdiction where the licensee has assets.
14.7 Amendments. This agreement may not be varied except in writing signed by
the parties.
14.8 Severability. If any provision of this agreement is held by a court to be
unlawful, invalid, and unenforceable or in conflict with any rule of law,
statute, ordinance or regulation the validity and enforceability of the
remaining provisions shall not be thereby affected.
14.9 Notices, All notices shall be in writing and shall be given by any one of
the following means--
14.9.1 by delivering it to the address of the party on a business day
during normal business hours;
14.9.2 by sending it to the address of the party by pre-paid airmail post
or if airmail post is not available by ordinary post; or
14.9.3 by sending it by facsimile transmission to the facsimile number of
the party and on the next business day giving it by either of the
means set forth in sub-CL 14.9.1 or 14.9.2 above.
14.10 A notice shall be deemed to be given and received--
14.10.1 if given in accordance with CL 14.9.1 on the next business day
after the delivery in the place of delivery;
14.10.2 if given in accordance with CL 14.9.2 five (5) clear business days
after the day of posting in the place of delivery;
14.10.3 if given in accordance with CL 14.9.3 on the next business day
after transmission in the place of delivery.
14.11 The address and facsimile numbers referred to in CL 14.9 shall in the
absence of notice to the contrary be asset out below:
Licenser:
Address: X0 Xxx 000, Xxxx Xxxx, Xxxxxxxx of Vanuatu
Facsimile: x000-00000
Licensee:
Address: X0 Xxx 000, Xxxx Xxxx, Xxxxxxxx of Vanuatu
Facsimile: x000-00000
14.12 Further agreements. Each party shall execute such agreements, deeds and
documents and do or cause to be executed or done all such acts and things
as shall be necessary to give effect to this agreement.
14.13 Charges. All stamp duties and governmental charges arising out of or
incidental to this agreement shall be the responsibility of and payable by
the licensee.
EXECUTED as a deed.
page 14
THE COMMON SEAL OF Common Seal SOUTHPAC NOMINEES LIMITED
OX2 INTELLECTUAL PROPERTY, INC. OX2 Intellectual by its duly authorised
was hereunto affixed in accordance Property Inc. Officer:
with its constitution and in the
presence of
EQUITY HOLDINGS LIMITED /s/
by its duly authorised -------------------------
Officer: Director
/s/
--------------------------------
Director
THE COMMON SEAL OF Common Seal SOUTHPAC NOMINEES LIMITED
OX2 ENGINE (DISTRIBUTION)LTD . OX2 Engine by its duly authorised
was hereunto affixed in accordance (Distribution) Officer:
with its constitution and in the Limitied
presence of
EQUITY HOLDINGS LIMITED /s/
by its duly authorised -------------------------
Officer: Director
/s/
--------------------------------
Director
Schedule 0
(Xxxxxxxxx)
XXXXX
Xxxxxx Xxxxxx Xxxxxx Xxxxxx of America
THE COMMON SEAL OF Common Seal SOUTHPAC NOMINEES LIMITED
OX2 ENGINE (DISTRIBUTION)LTD . OX2 Engine by its duly authorised
was hereunto affixed in accordance (Distribution) Officer:
with its constitution and in the Limitied
presence of
EQUITY HOLDINGS LIMITED /s/
by its duly authorised -------------------------
Officer: Director
/s/
--------------------------------
Director
THE COMMON SEAL of ADVANCED
ENGINE TECHNOLOGY INC.
was hereunto affixed in accordance with
it articles of association and in the
presence of
/s/ /s/ X. Xxxxxx
-------------------------------- --------------------------
Director Director/Secretary
