ADDENDUM AND AMENDMENT TO SUBLICENSE AGREEMENTS:
INTEGRAL CONCEPTS, INC./IAS COMMUNICATIONS, INC.
SUBLICENSE DATED JULY 10, 1995;
INTEGRAL CONCEPTS, INC./EMERGENT TECHNOLOGIES CORPORATION
SUBLICENSE DATED JANUARY 2, 1996
This Addendum and Agreement to the Sublicense Agreements ("Addendum and
Agreement") is made and entered into this 4th day of March, 1997, by and between
Integral Concepts, Inc., a West Virginia corporation ("ICI"), IAS
Communications, Inc., an Oregon corporation ("IAS") and Emergent Technologies
Corporation, a West Virginia corporation ("ETC").
W I T N E S S E T H:
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WHEREAS, ICI has a License Agreement from West Virginia University Research
Corporation of Morgantown, West Virginia ("WVURC"), for certain technologies
related to the design, construction and operation of the Toroidal Helical
Antenna, U.S. Patent Office Serial No. 07/992,970, et seq., and defined herein
to be embraced within the expression "the Technology"; and,
WHEREAS, IAS was granted an exclusive worldwide sublicense from ICI of its
right, title and interest in and to the Technology, excluding all military
applications and resulting procurement interests, pursuant to the sublicense
dated July 10, 1995, by and between ICI and IAS; and,
WHEREAS, ICI granted ETC an exclusive worldwide sublicense dated January 2,
1996, relating to all military/governmental applications and resulting
procurement interests of The Technology; and,
WHEREAS, ICI, IAS and ETC desire to incorporate and make this Addendum and
Agreement a part of the ICI/IAS and ICI/ETC sublicenses; and,
WHEREAS, the parties hereto acknowledge and agree that the efforts and
advances made in the Technology by ETC and the research and development funding
provided by IAS to ETC forms a part of the consideration for this Addendum and
Agreement; and,
WHEREAS, in additional consideration of the benefit derived from
clarification of the terms of the sublicenses and expansion of the definition of
the Technology, ICI, IAS and ETC have agreed to incorporate the following
clarification/definition of The Technology:
The military/government and commercial markets are easily distinguishable
and as such are covered by the two existing
sublicenses. The sublicensed technology can be defined by the end use
applications. If the application is for any government agency or agency use
(military, FBI, CIA, etc.), then the sale falls under the existing
military/government sublicense granted to ETC. If the government purchase
is for commercial end use (government purchase of technology for civilian
use or sale), then the sale falls under the commercial sublicense granted
to IAS.
WHEREAS, in additional consideration of the benefit derived from the
clarification of the terms of the ICI-IAS sublicense, ICI agrees to temporarily
reduce the amount of royalties IAS is to pay to ICI pursuant to the terms set
forth in Paragraph I hereinbelow.
NOW, THEREFORE, the parties hereto agree as follows:
I. ICI agrees to temporarily reduce the amount of royalties IAS is to pay
to ICI pursuant to the terms of the ICI-IAS sublicense by 50% in an amount not
to exceed $5,000,000.00 for up to three years from the date of this Addendum and
Amendment. This 50% reduction in royalties from IAS to ICI shall be completed
and expire either in the event the amount of royalties meets or exceeds
$5,000,000.00 or when the three-year period expires, and in no event shall the
reduction continue past the occurrence of either event. Upon completion and
expiration of the terms of the reduction, the original royalty agreement as set
forth in the ICI-IAS sublicense shall again be in full force and effect. This
agreement to temporarily reduce the amount of royalties payable to ICI in no way
affects or amends IAS's duty to pay royalties to WVURC as set forth in the ICI-
IAS sublicense.
II. The ICI-IAS Sublicense is hereby amended as follows:
(1) Section 2.1 is hereby amended to read in full as follows:
ICI hereby grants to IAS the exclusive commercial worldwide rights and
sublicense (i) to manufacture, sell copies of, sublicense and distribute
the Technology; and (ii) to sublicense others to manufacture, sell copies
of, license and distribute the Technology, excluding all military and
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governmental applications and resulting procurement interests.
Specifically, IAS or its sublicensees may not manufacture, market or sell
any products using the Technology for military or governmental application.
Also, ICI or any of its sublicensees including ETC may not manufacture,
market or sell any products using the Technology for commercial
applications.
(2) Section 1.1(a) is hereby amended to include the following:
The Technology shall also specifically include any and all new
developments, uses and enhancements to the Technology, whether developed
now or in the future, by any party, including, but not limited to, ICI, IAS
and ETC, as originally granted under the WVURC-ICI license.
(3) A new Section 1.1(e) is hereby added:
"Commercial" means any and all uses of the Technology that are not military
or governmental as defined in this Addendum and Agreement. Specifically,
commercial includes any purchases or uses by a government unit where the
end use is primarily commercial (i.e., a governmental purchase or use for
nongovernmental or civilian purposes).
(4) A new Section 1.1(f) is hereby added as follows:
"Governmental" means any and all uses of the Technology where the end use
is primarily for traditionally government purposes as defined in this
Addendum and Agreement. Specifically, if the end use is by a governmental
agency such as the police, military, FBI, CIA, etc., then the use is
governmental.
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III. The ICI-ETC Sublicense is hereby amended as follows:
(1) Section 1.1(a) is hereby amended to read in full as follows:
The Technology shall also specifically include any and all new
developments, uses and enhancements to the Technology, whether developed
now or in the future, by any party, including, but not limited to, ICI, IAS
and ETC, as originally granted under the WVURC-ICI license.
(2) A new Section 1.1(e) is hereby added:
"Commercial" means any and all uses of the Technology that are not military
or governmental as defined in this Addendum and Agreement. Specifically,
commercial includes any purchases or uses by a government unit where the
end use is primarily commercial (i.e., a governmental purchase or use for
nongovernmental or civilian purposes).
(3) A new Section 1.1(f) is hereby added as follows:
"Governmental" means any and all uses of the Technology where the end use
is primarily for traditionally governmental purposes. Specifically, if the
end use is primarily for tradionally government purposes as defined in this
Addendum and Agreement such as the police, military, FBI, CIA, etc., then
the use is governmental.
All other terms and conditions of the Sublicenses shall remain in full
force and effect.
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IN WITNESS WHEREOF, the parties hereto have executed this Addendum and
Amendment on the date shown below but with effect as of the date first above
written.
INTEGRAL CONCEPTS, INC.
a West Virginia corporation
BY: /s/ Xxxxx X. Xxxxx
------------------------
XXXXX X. XXXXX
Its President
IAS COMMUNICATIONS, INC.,
An Oregon corporation
BY: /s/ Xxxx X. Xxxxxxxxx
------------------------
XXXX X. XXXXXXXXX
Its President
EMERGENT TECHNOLOGIES CORPORATION,
a West Virginia corporation
BY: /s/ Xxxx Xxxxxxx
------------------------
XXXX XXXXXXX
Its President
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