This ADDENDUM is dated effective 7th December 2021
Exhibit 10.2
This ADDENDUM is dated effective 7th December 2021
PARTIES
| (1) | INNOVATIVE EYEWEAR, INC (Licensee) |
| (2) | LUCYD LTD. a company incorporated and registered in England with company number 09522087 whose registered office is at ▇▇▇▇ ▇▇▇▇▇, ▇▇-▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇, ▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇ (Licensor) |
BACKGROUND
The Licensor and Licensee executed Licence Agreements on 1st April 2020 and 15th September 2021 and as amended on 5th October 2021 (Licenses).
Agreed terms
| 1. | Addendum |
The Intellectual Property granted by the Licensor to the Licensee will include all patents and trademarks set out in the attached Appendix.
| 2. | Further assurance |
Each party shall use all reasonable endeavours to procure that any necessary third party shall, promptly execute such documents and perform such acts as may reasonably be required for the purpose of giving full effect to this agreement.
| 3. | Waiver |
No failure or delay by a party to exercise any right or remedy provided under this agreement or by law shall constitute a waiver of that or any other right or remedy, nor shall it prevent or restrict the further exercise of that or any other right or remedy. No single or partial exercise of such right or remedy shall prevent or restrict the further exercise of that or any other right or remedy.
| 4. | Variation |
No variation of this agreement shall be effective unless it is in writing and signed by the parties (or their authorised representatives).
| 5. | Severance |
| 5.1 | If any provision or part-provision of this agreement is or becomes invalid, illegal or unenforceable, it shall be deemed deleted, but that shall not affect the validity and enforceability of the rest of this agreement. |
| 5.2 | If any provision or part-provision of this agreement is deemed deleted under Clause 28.1 the parties shall negotiate in good faith to agree a replacement provision that, to the greatest extent possible, achieves the intended commercial result of the original provision. |
| 6. | Counterparts |
This agreement may be executed in any number of counterparts, each of which when executed and delivered shall constitute a duplicate original, but all the counterparts shall together constitute the one agreement.
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| 7. | Notices |
| 7.1 | Any notice or other communication given to a party under or in connection with this agreement shall be in writing and shall be: |
| (a) | delivered by hand or by pre-paid first-class post or other next working day delivery service at its registered office (if a company) or its principal place of business (in any other case); or |
| (b) | sent by email to the main contacts email address. |
| 7.2 | Any notice or communication shall be deemed to have been received: |
| (a) | if delivered by hand, on signature of a delivery receipt or at the time the notice is left at the proper address; and |
| (b) | if sent by pre-paid first-class post or other next working day delivery service, at 9.00 am on the second Business Day after posting or at the time recorded by the delivery service; and |
| (c) | if sent by email, at the time of transmission, or, if this time falls outside business hours in the place of receipt, when business hours resume. In this clause (23.2(c)), business hours means 9.00am to 5.00pm Monday to Friday on a day that is not a public holiday in the place of receipt. |
| 7.3 | This clause does not apply to the service of any proceedings or other documents in any legal action or, where applicable, any arbitration or other method of dispute resolution. |
| 8. | Governing law |
This agreement and any dispute or claim (including non-contractual disputes or claims) arising out of or in connection with it or its subject matter or formation shall be governed by and construed in accordance with the law of England and Wales.
| 9. | Jurisdiction |
Each party irrevocably agrees that the courts of England and Wales shall have exclusive jurisdiction to settle any dispute or claim (including non-contractual disputes or claims) arising out of or in connection with this agreement or its subject matter or formation.
This agreement has been entered into on the date stated at the beginning of it.
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SIGNATURES
| Signed by ▇▇▇▇▇▇▇▇ ▇▇▇▇▇ for and on behalf of | |
| INNOVATIVE EYEWEAR INC. | |
| /s/ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇ | |
| Director |
| Signed by ▇▇▇ ▇▇▇▇▇▇ | |
| for and on behalf of LUCYD LTD. | /s/ ▇▇▇ ▇▇▇▇▇▇ |
| Director |
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APPENDIX
|
Application/Patent Number |
Title | Country | Filing/Issue Date | Status | Grant Date |
Anticipated Expiration Date |
| 10,908,419 |
Smartglasses and Methods and Systems for Using Artificial Intelligence to Control Mobile Devices Used for Displaying and Presenting Tasks and Applications and Enhancing Presentation and Display of Augmented Reality Information |
US | June 28, 2018 | Issued | February 2, 2021 |
October 5, 2038
(Patent Term Adjustment – 99 days) |
| D899,493 | Smart Glasses | US | March 22, 2019 | Issued | October 20, 2020 | October 20, 2035 |
| D900,203 | Smart Glasses | US | March 22, 2019 | Issued | October 27, 2020 | October 27, 2035 |
| D899,494 | Smart Glasses | US | March 22, 2019 | Issued | October 20, 2020 | October 20, 2035 |
| D899,495 | Smart Glasses | US | March 22, 2019 | Issued | October 20, 2020 | October 20, 2035 |
| D899,496 | Smart Glasses | US | March 22, 2019 | Issued | October 20, 2020 | October 20, 2035 |
| D900,204 | Smart Glasses | US | March 22, 2019 | Issued | October 27, 2020 | October 27, 2035 |
| D900,205 | Smart Glasses | US | March 22, 2019 | Issued | October 27, 2020 | October 27, 2035 |
| D900,920 | Smart Glasses | US | March 22, 2019 | Issued | November 3, 2020 | November 3, 2035 |
| D900,206 | Smart Glasses | US | March 22, 2019 | Issued | October 27, 2020 | October 27, 2035 |
| D899,497 | Smart Glasses | US | March 22, 2019 | Issued | October 20, 2020 | October 20, 2035 |
| D899,498 | Smart Glasses | US | March 22, 2019 | Issued | October 20, 2020 | October 20, 2035 |
| D899,499 | Smart Glasses | US | March 22, 2019 | Issued | October 20, 2020 | October 20, 2035 |
| D899,500 | Smart Glasses | US | March 22, 2019 | Issued | October 20, 2020 | October 20, 2035 |
| 29/716,878 |
Round Smartglasses Having Flat Connector Hinges |
US | December 12, 2019 | Pending | n/a | n/a |
| 29/716,882 |
Round Smartglasses Having Pivot Connector Hinges |
US | December 12, 2019 | Pending | n/a | n/a |
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| Application/Patent Number | Title | Country | Filing/Issue Date | Status | Grant Date | Anticipated Expiration Date |
| 29/716,892 |
Sport Smartglasses Having Flat Connector Hinges |
US | December 12, 2019 | Pending | n/a | n/a |
| 29/716,895 |
Wayfarer Smartglasses Having Pivot Connector Hinges |
US | December 12, 2019 | Pending | n/a | n/a |
| 62/941,466 | Wireless Smartglasses with Quick Connect Front Frames | US | November 27, 2019 |
Non-Provisional Application filed on November 25, 2020; U.S. App. No. 17/104,849 |
n/a | November 27, 2020 |
| 29/717,878 | Flat Connector Hinges for Smartglasses Temples | US | December 19, 2019 | Pending | n/a | n/a |
| 29/717,884 | Pivot Hinges for Smartglasses Temples | US | December 19, 2019 | Pending | n/a | n/a |
| 16/829,841 | Voice Assistant Management | US | March 25, 2020 | Notice of Allowance received 11/30/2021 | ▇▇▇ | ▇▇▇ |
| 29/743,256 | Wayfarer Smartglasses | US | July 20, 2020 | Pending | n/a | n/a |
| 29/743,258 | Round Smartglasses | US | July 20, 2020 | Pending | n/a | n/a |
| 17/104,849 |
Wireless Smartglasses with Quick Connect Front Frames |
US | November 25, 2020 | Pending | n/a | n/a |
| 29/806,200 | Smartglasses | US | September 1, 2021 | Pending | n/a | n/a |
| 29/806,204 | Smartglasses | US | September 1, 2021 | Pending | n/a | n/a |
| 29/806,207 | Smartglasses | US | September 1, 2021 | Pending | n/a | n/a |
| 29/806,209 | Smartglasses | US | September 1, 2021 | Pending | n/a | n/a |
| 207516 | Smartglasses | Canada | October 29, 2021 | Pending | n/a | n/a |
| 207517 | Smartglasses | Canada | October 29, 2021 | Pending | n/a | n/a |
| 207518 | Smartglasses | Canada | October 29, 2021 | Pending | n/a | n/a |
| 207519 | Smartglasses | Canada | October 29, 2021 | Pending | n/a | n/a |
| 29/814,016 | Safety Smartglasses | US | November 2, 2021 | Pending | n/a | n/a |
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| Application/Patent Number | Title | Country | Filing/Issue Date | Status | Grant Date | Anticipated Expiration Date |
| 29/814,017 | Safety ▇▇▇▇▇▇▇ | US | November 2, 2021 | Pending | n/a | n/a |
| 63/274,920 | Safety Glasses | US | November 2, 2021 | Pending | n/a | n/a |
| 29/815,040 | Charging Cradle | US | November 10, 2021 | Pending | n/a | n/a |
| 207956 | Safety Smartglasses | Canada | November 17, ▇▇▇▇ | ▇▇▇▇▇▇▇ | ▇/▇ | ▇/▇ |
| ▇▇▇▇▇▇ | ▇▇▇▇▇▇ ▇▇▇▇▇▇▇ | ▇▇▇▇▇▇ | November 17, 2021 | Pending | n/a | n/a |
| 2021307950576 | Safety Smartglasses | China | December 2, 2021 | Pending | n/a | n/a |
| 2021307955902 | Safety ▇▇▇▇▇▇▇ | China | December 2, 2021 |
Awaiting confirmation of filing from Chinese associate |
n/a | n/a |
| TradeMark | TradeMark Number | Status | Jurisdiction | TradeMark |
| LUCYD | UK00003258030 | Registered | UK | LUCYD |
| Lucyd Lens | UK00003258093 | Registered | UK | Lucyd Lens |
| Lucyd Loud | UK00003400531 | Registered | UK | Lucyd Loud |
| Upgrade your eyewear | UK00003400579 | Registered | UK | Upgrade your eyewear |
| GaaS | UK00003451728 | Registered | UK | ▇▇▇▇ |
| ▇▇▇▇ | ▇▇▇▇▇▇▇▇▇▇▇▇▇ | ▇▇▇▇▇▇▇▇▇▇ | ▇▇ | ▇▇▇▇ |
| Lyte | UK00003526151 | Registered | UK | Lyte |
| Upgrade your eyewear | Application No. 90/407,646 | Application | US | Upgrade your eyewear |
| LUCYD | Application No. 90/407,723 | Application | US | LUCYD |
| Lyte | Application No. 90/381051 | Application | US | Lyte |
| Vyrb | Application No. 90/820713 | Application | US | Vyrb |
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