INTERNATIONAL LICENSE AGREEMENT executed on January 1st, 2005.
BETWEEN: WKF 5 LTD., a corporation existing under the laws of MALTA;
(hereinafter referred to as "Licensor")
AND: XL GENERATION AG, a corporation existing under the laws of
SWITZERLAND;
(hereinafter referred to as "Licensee")
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PREAMBLE
WHEREAS Licensor possesses certain intellectual and industrial property rights;
WHEREAS Licensor is willing to grant, and Licensee desires to acquire, exclusive
rights as provided below on a worldwide basis, as that term is defined below;
NOW, THEREFORE, in consideration of the premises and mutual promises, terms and
conditions hereinafter set forth, and other good and valuable consideration, the
receipt and sufficiency of which are hereby acknowledged, THE PARTIES HERETO
AGREE AS FOLLOWS:
1. DEFINITIONS
As used herein, the following terms shall have the following definitions.
1.1 Affiliates. "Affiliates" of a party hereto shall mean (i) companies the
majority of whose voting shares are now or hereafter owned or controlled
directly or indirectly by such party; (ii) companies which now or
hereafter own or control directly or indirectly a majority of the voting
shares of such party; and (iii) companies a majority of whose voting
shares are now or hereafter owned or controlled directly or indirectly by
any company mentioned in (i) or (ii) of this definition. A company shall
be considered an "Affiliate" for only so long as such ownership or control
exists. For the purposes of this definition, partnerships or similar
entities where a majority-in-interest of its partners or owners are a
party hereto and/or Affiliates of such party shall also be deemed to be
Affiliates of such party.
1.2 Business Day. "Business Day" shall mean a day on which banks are open for
business in Switzerland.
1.3 Confidential Information. "Confidential Information" shall mean that part
of the Technical Information, whether in written, oral or visual form,
which is (i) not publicly known and (ii) annotated by a legend, stamp or
other written identification as confidential or proprietary information,
or if disclosed orally or visually, is followed by a written statement
within thirty (30) days after its disclosure that it is confidential or
proprietary. In addition, "Confidential Information" shall include
information disclosed by either party to the other party in accordance
with Section 2.11 (Modifications and/or Improvements of Products) here of.
1.4 Chosen currency of payment. Chosen currency of payment shall means EUROS
or US DOLLARS as the case may be.
1.5 Effective Date. "Effective Date" shall mean the later of (a) the date on
which Licensor executes this Agreement (b) the date on which Licensee
executes this Agreement; and (c) otherwise as determined by the partie to
become effective.
1.6 Inventor(s). "Inventor(s)" shall mean ▇▇▇▇▇ ▇▇▇▇▇▇▇.
1.7 Invoice Price. "Invoice Price" shall mean Licensee's invoiced sale price
of a Product ex works Licensee's facility in Switzerland or in the country
from which the Products are shipped excluding any taxes, freight,
shipping, transport, handling, packaging, insurance, export fees, duties,
discounts, rebates, commissions, similar such charges and the amounts paid
to Licensor for any components, parts or other materials purchased in
connection with the manufacture or assembly of such Product.
1.8 Licensed Technology. "Licensed Technology" shall mean the Rights,
Products, Trademarks and Technical Information.
1.9 Payment Period. "Payment Period" shall mean the period commencing on the
Effective Date and ending on the next March 31, June 30, September 30 or
December 31, whichever occurs first, and then each three (3) month period
thereafter.
1.10 Product. "Product" shall mean any and all products that can be actually
manufactured or to be manufacture from time to time in respect of the
Patents.
1.11 Rights. "Rights" shall mean, the PATENT and PATENT PENDING AS PER SCHEDULE
1.11 including the Trade Marks and any and all patents, patent
applications and trademarks rights and other intellectual property rights
with respect to any inventions, which patents, patent applications,
copyrights, mask work rights and other rights (i) are granted or to be
granted to Licensor (either directly or through its Affiliates,
successors, assigns, agents or employees) or to the Inventor(s) or (ii)
with respect to which Licensor (either directly or through its Affiliates,
successors, assigns, agents or employees) or the Inventor(s) shall have
the right to grant licenses, sublicenses and rights of the type described
in Article 2 below; and provided, however, that with respect to this
Section 1.11 if any patents, copyrights, mask work rights or other
intellectual property rights have been or are in the future issued,
granted or registered by or with any government in the Territory based on
or as embodied in any Product or any part of the Technical Information,
such patents, copyrights, mask work rights and other rights shall be
deemed included in this definition.
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1.12 Technical Information. "Technical Information" shall mean all trade
secrets, know-how, computer programs (including copyrights in said
software), knowledge, technology, means, methods, processes, practices,
formulas, techniques, procedures, technical assistance, designs, drawings,
apparatus, written and oral rectifications of data, specifications,
assembly procedures, schematics and other valuable information of whatever
nature, whether confidential or not, and whether proprietary or not, which
is now in (or hereafter during the term of this Agreement comes into) the
possession of Licensor or any of the Inventors and which is relevant to
the manufacture, assembly, sale, distribution, use, installation,
servicing or testing of any Product.
1.13 Territory. "Territory" shall mean the world.
1.14 Trademarks. "Trademarks" shall mean any and all trademarks, trade names,
service marks and other commercial symbols either listed in Schedule 1.11
below or which Licensor may from time to time designate to be included
within this definition by written notice to Licensee. Once included in
this definition, such trademarks, trade names, service marks and other
commercial symbols shall not be removed from this definition without the
mutual agreement of the parties hereto.
2. GRANT OF RIGHTS AND LICENSES
Subject to all of the terms and conditions set forth in this Agreement:
2.1 Use of Rights.
2.1.1 Licensor hereby grants to Licensee an exclusive right and license
during the term of this Agreement to practice the Rights in order to
make, use and sell the Products in the Territory. This right and
license includes, without limitation, the rights: (i) to maintain
the Products; (ii) to practice the methods and processes involved in
the use of the Products; (iii) to make and have made, to use and
have used, and to maintain machines, tools, instrumentalities and
materials; and (iv) to use and have used methods and processes
insofar as such machines, tools, instrumentalities, materials,
methods and processes are involved in or incidental to the
development, manufacture, sale, installation, testing or repair of
the Products.
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2.1.2 Each system, component or item of equipment used to practice the
Rights shall be designated, identified and labeled in a form
approved by Licensor with an appropriate patent, copyright or mask
work right notice or other notice relating to manufacture by
Licensee, its sub licensees and its assigns being permitted under
license from Licensor.
2.1.3 Each Product shall be labeled in a form approved by Licensor with an
appropriate patent, copyright or mask work right notice or other
notice relating to manufacture by Licensee, its sub licensees and
its assigns being permitted under license from Licensor.
2.2 Use of Technical Information.
2.2.1 Licensor grants to Licensee an exclusive right during the term of
this Agreement to use the Technical Information, if any, in the
Territory in connection with Licensee's exercise of its rights and
licenses granted hereunder.
2.2.2 As soon as practicable after the Effective Date, Licensor shall
provide to Licensee free of charge all of the Technical Information
and all patent or other searches and prior art in the possession of
Licensor or of any of the Inventors.
2.3 Right to Use Trademarks; Promotion on Internet.
2.3.1 Licensee may use trademarks, trade names, service marks and
commercial symbols in connection with the sale, distribution,
marketing and promotion of the Products hereunder.
2.3.2 Licensee shall follow Licensor's instructions with respect to each
of the following: (i) use of any information about Licensor or the
Products available on the Internet; (ii) linking of any site on the
Internet to any site on the Internet established, operated or
sponsored by Licensor; and (iii) use of any of the Trademarks on any
site on the Internet. Licensee acknowledges that it shall cease the
activities described in (i), (ii) and/or (iii) above, if so
instructed by Licensor. The License is also hereby granted the right
to establish, operate, sponsor or contribute content to any site on
the Internet which incorporates the word "XL Turf" as its URL
address or any part of such address. The use and the content of any
Web Site should be implemented with the consultation of the
Licensor.
2.4 Quality Control.
2.4.1 In order to comply with Licensor's quality control standards,
Licensee shall:
2.4.1.1 maintain the quality of the Products identified by a
Trademark by adhering to those specific quality control standards
that Licensor may from time to time promulgate and communicate to
Licensee with respect to such Products; provided, however, that
those standards shall be reasonable;
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2.4.1.2 use the Trademarks in compliance with all relevant laws and
regulations;
2.4.1.3 accord Licensor the right to inspect Licensee's facilities
used in connection with the Products during normal business hours,
without prior advance notice, to confirm that Licensee's use of such
Trademarks is in compliance with this provision and provide the
Licensor with sample, from time to time as requested by the
Licensor;
2.4.1.4 not modify any of the Trademarks in any way and not use any
of the Trademarks on or in connection with any goods or services
other than the Products.
2.5 Territorial Limitations. There is no Territorial Limitations.
2.6 Right to Sublicense or Assign. Licensee shall not have the right to
sublicense or assign any of the rights or licenses granted hereunder
without Licensor's prior written consent, which consent shall not be
unreasonably withheld. Even if Licensor gives its consent, such a
sublicense or assignment shall not become effective until such sub
licensee or assignee, as the case may be, confirms in writing to Licensor
that it agrees to be bound by all of the terms and conditions contained in
this Agreement.
2.7 No Rights by Implication. No rights or licenses with respect to Licensed
Technology are granted or deemed granted hereunder or in connection
herewith, other than those rights or licenses expressly granted in this
Agreement.
2.8 Non-Competition. During the term of this Agreement, Licensee shall not
engage in any negotiations with third parties with a view towards, or
engage in, directly or indirectly, in the Territory the manufacture,
distribution or sale of any products which are similar to or competitive
with the Products.
2.9 Modifications and/or Improvements of Products. Each party agrees to notify
the other party of each modification or improvement in a Product which it
has developed and decided to introduce in its production of such Product.
Each party also agrees to advise the other party of the cost of delivering
one reproducible copy of manufacturing drawings and engineering
specifications relating to such modification or improvement. The
developing party shall upon request of the other party deliver such
drawings and specifications to the other party upon receipt of payment
covering such cost. The developing party may apply each such modification
or improvement to the Products, without the consent of the other party.
The other party may also use each such modification or improvement,
without paying any amounts to the developing party (other than, in the
case of Licensor as the developing party, the royalty on the modified or
improved Products which would otherwise be payable in accordance with of
this Agreement).
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In addition, where Licensee is the developing party, Licensor may
sublicense Licensee's modifications and improvements to Licensor's other
licensees outside the Territory, without paying any amounts to Licensee.
2.9.1 If a modification or improvement is made by Licensor, any and all
warranties given by Licensor with respect to the Product so modified
or improved shall also extend to such modification or improvement.
The modified or improved Product shall be deemed a "Product" for the
purposes of this Agreement.
2.9.2 If a modification or improvement is made by Licensee, any and all
warranties given by Licensor with respect to the Product so modified
or improved shall not extend to such modification or improvement.
2.9.3 The modified or improved Product shall be deemed a "Product" for the
purposes of this Agreement, but the royalty for manufacturing and
selling such modified or improved Product shall be included in the
royalties provided below in this agreement.
2.9.4 For the purposes of this Section, a modification or an improvement
shall mean any invention, discovery, modification or improvement,
whether patentable or not, which can be employed to reduce
manufacturing or assembly costs of any Product, improve performance
of any Product, increase service life of any Product, broaden the
applicability or range of uses of any Product or create a wholly-new
product, item of software, equipment, component, part, tool or test
equipment. A modification or improvement shall also include, without
limitation, modifications to existing copyrightable works of
authorship.
2.10 Use of Licensed Technology for Other Purposes. In addition to the rights
and licenses granted to Licensee pursuant to Sections 2.1 and 2.2 hereof,
Licensee may, subject to the prior written consent of Licensor, which
consent shall not be unreasonably withheld, use the Licensed Technology
for the manufacture, assembly, sale, distribution, servicing, installing,
use, leasing and testing of products, items, equipment, or mechanical
devices which are not Products. Licensee shall pay Licensor a royalty on
such products, items, equipment and mechanical devices at a rate which is
agreed to by the parties, but in no event more than the royalty rate
payable pursuant to this Agreement hereof, and which shall otherwise be
computed and paid in accordance with Article 5 hereof.
2.11 Intellectual Property Maintenance Fees. Licensor shall keep current all
Rights relevant to the Products, and shall pay all fees and expenses in
connection therewith promptly as such fees and expenses become due and
payable.
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3. OBLIGATIONS OF LICENSOR
3.1 Product Information and Literature. Licensor shall provide Licensee with
catalogues, maintenance manuals and other descriptive literature with
respect to the Products which Licensor has previously generated, as well
as which Licensor otherwise generates during the term of this Agreement.
All the cost shall be payable by the Licensee. Licensee shall follow any
and all marketing suggestions described therein. However, Licensor has the
right to require Licensee to provide such advertising and promotional
material but all such material shall be approved by the Licensor.
3.2 Training and Technical Assistance. To assist Licensee in exercising its
rights hereunder, Licensor agrees to provide appropriate training and
technical assistance to Licensee, its employees and its permitted
sublicensees, so that Licensee will be able to practice the Patents and
use the Licensed Technology to its full potential. Such training and
assistance shall be rendered by Licensor at no expense to Licensee unless
otherwise agreed between the parties; provided, however, that Licensor
shall not devote more than reasonable time during the term of this
Agreement in rendering such training and technical assistance to Licensee.
The parties hereto shall from time to time determine whether particular
training and assistance shall be rendered at Licensor's facilities or at
Licensee's facilities. Travel costs, lodging and all related expenses
incurred by one party in connection with sending its employees or
permitted sublicensees to the other party's location shall be paid in full
by the party sending such individuals unless, otherwise agreed between the
parties.
3.3 Evaluations. Licensor may provide Licensee free of charge with evaluations
of Licensee's manufacturing, assembly, service, testing, installation and
technical proposals; provided, however, that Licensor shall not devote
more than reasonable time during the term of this Agreement in rendering
such evaluations to Licensee. The parties may however determine a fee for
such an evaluation process if the time spent is more important than
expected.
3.4 Preparing Bids. Licensor may assist, on a case by case file according to
Licensor own discretion, Licensee in the preparation of any and all
contractual, tender and other bids for the Products which Licensee may
from time to time submit to a prospective customer. Licensor and Licensee
shall each bear the costs, unless otherwise agreed, which it shall
respectively incur during the preparation of such bids for the Products;
provided, however, that in the event that Licensee is awarded a contract
as the result of any such bid, Licensee shall reimburse Licensor for its
services in the preparation of such bid. The amount of such reimbursement,
should a contract be awarded, shall be set by the parties hereto in
advance of Licensor rendering any assistance under this Section.
Notwithstanding anything contained in this provision to the contrary,
Licensor shall not devote more than reasonable time during the term of
this Agreement in rendering such assistance to Licensee, on a case by case
situation.
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3.5 Testing.
3.5.1 The parties hereto acknowledge that Products can only be
proven and accepted by many prospective customers after rigorous
testing. Licensee shall take all necessary steps to operate an
adequate test program for Products.
3.5.2 Licensor shall have the right to have its personnel present at
any and all tests of Products.
3.5.3 Based on Sections 3.5.1 and 3.5.2 above, Licensor and Licensee
agree as follows:
3.5.3.1 Any design fault or design defect in any Product not
modified or improved by Licensee in accordance with Section 2.11
above, whether manufactured by Licensor or Licensee, discovered as
the result of any such test, shall be corrected by Licensor, at no
additional cost to Licensee;
3.5.3.2 Any fault or defect in any Product manufactured by Licensor,
which is discovered as the result of any such test and which arises
from inferior workmanship and/or inferior materials, shall be
corrected by Licensor, at no additional cost to Licensee;
3.5.3.3 Any fault or defect in any Product manufactured by Licensee,
which is discovered as the result of any such test and which arises
from inferior workmanship and/or inferior materials, shall be
corrected by Licensee, at Licensee's expense; provided, however,
that: (A) the obligations set out in this Section 3.5.3 shall not
extend beyond the duration of the testing program, which may be
terminated at any time by the mutual agreement of the parties
hereto; and (B) such testing program shall automatically end on the
date this Agreement expires or is terminated.
3.6 Written Inquiries. Licensor shall, at no additional cost to Licensee,
answer all written inquiries from Licensee directly concerning the
manufacture, assembly, installation, testing, use and servicing of the
Products; provided, however, that Licensor shall not devote more than
reasonable time during the term of this Agreement in responding to such
written inquiries and provided that the Licensee is not able to answer,
first, to such inquiries.
3.7 Locating Sources for Components. Licensor shall not be obliged to identify
suppliers of components, parts, tools and test equipment for Products, nor
to then assist Licensee in negotiating supply agreements with such
suppliers but may from time to time assist the Licensee to find such
location, at its own discretion.
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3.8 Additional Services.
3.8.1 Licensor may, but with no obligation, use its reasonable efforts to
provide Licensee with any and all additional assistance reasonably
requested by Licensee, including without limitation: producing
technical, sales, advertising and other reports and information for
Licensee which Licensee believes might be useful in selling the
Products manufactured hereunder; and assisting Licensee in
attempting to obtain from third parties technical information,
drawings, plans, specifications and other data which are not
proprietary to Licensor and which Licensor does not otherwise have
the right to use, in order to enable Licensee to respond to requests
of any potential customer.
3.8.2 Licensor may ▇▇▇▇ Licensee for any such services not expressly
provided free of charge in the agreement at prices to be agreed in
advance by the parties hereto.
3.8.3 Such services shall be invoiced monthly by Licensor, shall be due
within thirty (30) days after Licensee's receipt of each of
Licensor's invoices therefore, and shall otherwise be paid in
accordance with Section 5.7 (Payment of Royalties and License Fees)
below.
3.9 Visitors. Employees and representatives of either party visiting the
facilities of the other party shall be required to observe the rules and
regulations of the facilities being visited and the security requirements
imposed by the controlling government. Each party agrees to hold the other
party harmless from any responsibility for injuries to or the death of its
employees or representatives while visiting the other party's facilities,
except in cases of gross negligence or intentional tortious acts.
4. SALES BY LICENSOR TO LICENSEE
4.1 It is not expected that the Licensor will made any sales to the Licensee
in the execution of the obligations of both parties under this Agreement.
5. COMPENSATION PAYABLE TO LICENSOR
5.1 License Fee. Subject to section 5.7, Licensee shall pay a once and for all
lump sum License Fee. The amount shall be negotiated agreed upon before
June 30, 2005.
5.2 Royalty.
5.2.1 Licensee agrees to pay Licensor, for the rights granted to Licensee
with respect to the Licensed Technology and for the services to be
rendered by Licensor pursuant to Sections 2.2.2, 3.1 (Product
Information and Literature), 3.2 (Training and Technical
Assistance), 3.3 (Evaluations), 3.4 (Preparing Bids), 3.5 (Testing),
3.6 (Written Inquiries) and 3.7 (Locating Sources of Components)
above, a royalty for each and every Product manufactured and sold by
or on behalf of Licensee or its permitted sublicensees or assigns
(excluding returns). Such royalty for a Product shall be equal to
the amount which is 5 % of the Invoice Price for such Product.
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5.2.2 If Licensee or its permitted sublicensees or assigns install or have
installed at any location any Product by replacing at such location
a Product that has previously been installed pursuant to this
Agreement, then the royalty on such replacement Product shall be the
percentage royalty otherwise provided for under this Section 5.1
applied to the following amount: (i) the Invoice Price of such
replacement Product, less (ii) the Invoice Price of the Product
being replaced.
5.3 Contents of Licensee's Reports. Licensee shall deliver to Licensor within
thirty (30) days after the end of each Payment Period, beginning with the
first Payment Period, a written report describing, for the applicable
Payment Period: the number and full description of each Product
manufactured and sold, leased or used in accordance with one of the
subsections of Section 5.1 above by or on behalf of Licensee or its
permitted sublicensees or assigns during such Payment Period; (b) the
Invoice Price for each such Product; (c) Licensee's ability to collect
amounts owed on Products does not affect the royalty due to Licensor on
such Product and (d) the total royalty due on such payments under Section
5.1 hereof
5.4 Payments Accompany Licensee's Reports. Each report for a Payment Period
required in Section 5.2 hereof shall be accompanied by full payment to
Licensor of the royalties payable under Section 5.1 hereof.
5.5 Royalties Mistakenly Paid on Returned Products. If Licensee pays a royalty
on a Product which has been or is subsequently returned to Licensee or its
permitted sublicensees or assigns, the amount of the royalty so paid shall
be deemed a credit against royalties payable by Licensee for subsequent
Payment Periods. If no royalties are payable for a subsequent Payment
Period, the remaining balance of such credits shall be refunded to
Licensee within thirty (30) days after Licensor's receipt of Licensee's
report for such Payment Period prepared pursuant to Section 5.2 hereof.
5.6 Minimum Royalty. There is no minimum royalty payable under this Agreement.
5.7 License Fees. In addition to the royalties payable hereunder, for the
rights granted hereunder Licensee shall pay Licensor license fees of 1
Euro per year:
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5.8 Payments of Royalties and License Fees.
5.8.1 All payments under Section 5.3 (Payments Accompany Licensee's
Reports), and Section 5.6 (License Fees) hereof shall be made by
wire transfer, to such bank or account as Licensor may from time to
time designate in writing. All payments shall be made in Euro: ,
unless a Product sale occurs in another currency, in which case the
royalty owed on such Product shall be paid in such other currency
unless if the Licensor give other instruction to the Licensee.
5.8.2 Whenever any payment hereunder shall be stated to be due on a day
which is not a Business Day, such payment shall be made on the
immediately succeeding Business Day.
5.8.3 Payments hereunder shall be considered to be made as of the day on
which they are received in Licensor's designated bank or account.
5.8.4 Unless different instruction given by the Licensor to the Licensee:
If the Invoice Price or internal transfer price of any Product is
stated in a currency other than Euro, then, for the purpose of
calculating the royalty payable hereunder, such Invoice Price or
internal transfer price shall be converted into Euro at the exchange
rate between those two currencies quoted in the Wall Street Journal
in New York five (5) business days immediately preceding the date on
which such royalty becomes due. If no such exchange rate is quoted
in that edition, such Invoice Price or internal transfer price shall
be converted into Euro at the exchange rate between those two
currencies most recently quoted in the Wall Street Journal in New
York. If no such exchange rate has been quoted in the Wall Street
Journal in New York at any time during the twelve (12) month period
preceding the date on which such royalty becomes due, such Invoice
Price or internal transfer price, as the case may be, shall be
deemed to be equal to the Invoice Price or internal transfer price,
respectively, most recently charged by anyone in a sale or use of a
similar Product in Euro:
5.8.4.1 All payments due under Section 5.4 (Payments Accompany
Licensee's Reports) or Section 5.7 (License Fees) hereof but not
paid by Licensee on the due date thereof shall bear interest in EURO
at the rate which is the lesser of: (i) one per cent (1%) per annum
above the then applicable prime interest rate announced by the
Licensor's Bank or 90-day loans in such currency to prime commercial
customers in Switzerland; and (ii) the maximum lawful interest rate
permitted under applicable law. Such interest shall accrue on the
balance of unpaid amounts from time to time outstanding from the
date on which portions of such amounts become due and owing until
payment thereof in full.
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5.8.5 No part of any amount payable to Licensor hereunder may be reduced
due to any counterclaim, set-oft adjustment or other right which
Licensee might have against Licensor, any other party or otherwise,
except as is provided in Section 13.11.2 (Responsibility for Taxes)
hereunder.
5.9 Licensee's Books and Records. Licensee agrees to make and keep full and
accurate books and records in sufficient detail to enable royalties
payable hereunder to be determined.
5.10 Licensor's Right to Audit. On seven (7) days prior written notice to
Licensee, Licensor and its certified public accountants and other auditors
shall have full access to the books and records of Licensee pertaining to
activities under this Agreement and shall have the right to make copies
there from at Licensor's expense. Licensor, its certified public
accountants and other auditors shall have such access at all reasonable
times and from time to time during normal business hours. Prompt
adjustment shall be made by the proper party to compensate for any errors
or omissions disclosed by such audit.
5.11 Audit Information Confidential. Licensor agrees to hold confidential all
information leamed in the course of any examination of Licensee's books
and records hereunder, except when it is necessary for Licensor to reveal
such information in order to enforce its rights under this Agreement in
court, or similar dispute resolution or enforcement proceeding or action,
or except when compelled by law.
5.12 Licensee's Reports Conclusively Correct. All reports and payments not
disputed as to correctness by Licensor within six (6) months after receipt
thereof shall thereafter conclusively be deemed correct for all purposes.
6. INVENTIONS
6.1 Registering Patents and Other Intellectual Property Rights.
6.1.1 If either Licensor or any Inventor formulates, makes or conceives a
patentable invention or develops any other intellectual property
rights which constitute a modification and/or improvement of a
Product, Licensor or such Inventor, as the case may be, may apply,
at its or his own expense, for appropriate patent and other
intellectual property right registrations of such invention or
rights in any and all jurisdictions. In each jurisdiction where
Licensor or such Inventor, as the case may be, does not apply for
such patent or registration within ninety (90) days after having
formulated, made or conceived such patentable invention or developed
such right, then Licensee may either: (i) apply for such patent or
registration in such jurisdiction, at its own expense; or (ii)
request Licensor or such Inventor, as the case may be, to apply for
such patent or registration in such jurisdiction and then assign all
of its or his rights in such applications to Licensee, all at
Licensee's expense.
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6.1.2 If Licensee formulates, makes or conceives a patentable invention or
develops any other intellectual property rights which constitute a
modification and/or improvement of a Product, Licensee may apply, at
its own expense, for appropriate patent and other intellectual
property right registrations of such invention and rights in any and
all jurisdictions. In each jurisdiction where Licensee does not
apply for such registration within ninety (90) days after having
formulated, made or conceived such patentable invention or developed
such right, then Licensor may either: (i) apply for such patent or
registration in such jurisdiction, at its own expense; or (ii)
request Licensee to apply for such patent or registration in such
jurisdiction and then assign all of its rights in such application
to Licensor, all at Licensor's expense.
6.1.3 Each party hereto shall, at the request of the other party, both
during and after the term of this Agreement, execute such documents
and render such assistance as may be appropriate to enable the other
party to maintain or obtain registrations of patents or intellectual
property rights in any jurisdiction in accordance with this Section
6.1.
6.2 Export Licenses. Any and all obligations of Licensor or Licensee, as the
case may be, under Section 2.11 (Modifications and/or Improvements of
Products) above or under this Article to provide the other party with any
invention or intellectual property right are expressly conditioned upon
the obtaining of any and all export, re-export and other authorizations
and licenses that may from time to time be required by the relevant
governments. Licensor and Licensee each agrees to use its best efforts to
obtain such authorizations and licenses with respect to its inventions and
intellectual property rights, but its inability to obtain such
authorizations and licenses shall not constitute a breach of this
Agreement.
7. CONFIDENTIAL INFORMATION
7.1 Confidentiality Maintained. Each party agrees that the other party hereto
has a proprietary interest in its Confidential Information. During and
after the term of this Agreement, all disclosures to the receiving party,
its agents and employees shall be held in strict confidence by such
receiving party, its agents and employees, and such receiving party shall
disclose the Confidential Information only to those of its agents and
employees to whom it is necessary in order properly to carry out their
duties as limited by the terms and conditions hereof. During the term of
this Agreement and after the term of this Agreement, the receiving party
shall not use the Confidential Information except for the purposes of
exercising its rights and carrying out its duties hereunder. The
provisions of this Section 7.1 shall also apply to any consultants or
subcontractors during the term of this Agreement g and after the term of
this Agreement that the receiving party may engage in connection with its
obligations under this Agreement.
13
7.2 Liability for Disclosure. Notwithstanding anything contained in this
Agreement to the contrary, neither party shall be liable for a disclosure
of the other party's Confidential Information if the information so
disclosed:
7.2.1 was in the public domain at the time it was disclosed by the
disclosing party to the receiving party; or
7.2.2 was known to or contained in the records of the receiving party from
a source other than the disclosing party at the time of disclosure
by the disclosing party to the receiving party and can be so
demonstrated; or
7.2.3 was independently developed by the receiving party and is so
demonstrated promptly upon receipt of the documentation and
technology by the receiving party; or
7.2.4 becomes known to the receiving party from a source other than the
disclosing party without breach of this Agreement by the receiving
party and can be so demonstrated; or
7.2.5 if in writing, was not identified as Confidential Information in
accordance with Section 1.3 (Definition of Confidential Information)
hereof or
7.2.6 must be disclosed pursuant to a contract or subcontract with a
governmental agency in order to obtain/retain a procurement
contract; or
7.2.7 was disclosed pursuant to court order or as otherwise compelled by
law.
8. PROTECTION OF LICENSED TECHNOLOGY
8.1 Infringements of Licensed Technology.
8.1.1 Licensor may, but is not required to, take any and all actions,
legal or otherwise, which are necessary to: (i) terminate
infringements of any part of the Licensed Technology; or (ii)
terminate any attempted passing-off by imitation of any Product,
including without limitation obtaining damages, injunction and all
other appropriate relief Licensee shall have the right to be kept
informed of the status and progress of all actions instituted by
Licensor pursuant to this subsection 8.1.1. Licensor shall bear all
the expenses of all actions which it initiates pursuant to this
subsection 8.1.1 (including without limitation attorneys' fees).
8.1.2 If Licensor does not institute an action within one hundred twenty
(120) days after receiving notice from Licensee of an infringement
of any part of the Licensed Technology or of an attempted
passing-off by imitation of any Product, then Licensee may institute
an action with respect thereto. Licensor shall have the right to be
kept informed of the status and progress of all such actions
instituted by Licensee pursuant to this subsection 8.1.2. Licensor
shall bear all the expenses of all actions which Licensee initiates
pursuant to this subsection 8.1.2 (including without limitation
attorneys' fees).
14
8.1.3 Any recoveries or settlement fees received from suits or settlements
involving an action initiated pursuant to subsections 8.1.1 or 8.1.2
above or agreed to shall be paid: (i) first, to Licensor as
reimbursement for the expenses of such action (including without
limitation attorneys' fees) which it incurred (either directly or
through Licensee); and (ii) the balance (if any) to the party which
initiated such action in accordance with subsections (a) or (b)
hereof, for such party's own use and benefit.
8.1.4 Notwithstanding subsections 8.1.1, 8.1.2 and 8.1.3 above, Licensor
and Licensee may agree to jointly institute an action in order to
(i) terminate infringements of any part of the Licensed Technology;
or (ii) terminate any attempted passing-off by imitation of any
Product. Licensor and Licensee shall share equally (x) the expenses
of all actions which they initiate pursuant to this subsection (d)
(including without limitation attorneys' fees) and (y) the proceeds
of any judgment rendered therein or settlement resulting there from.
8.2 Use of Name in Suit. Where, in the judgment of the party initiating an
action under Section 8.1 (Infringements of Licensed Technology), it is
necessary to use the other party's name to prosecute such action, such
other party agrees to allow the initiating party to so use the name of
such other party; provided, however, that the initiating party agrees to
hold such other party harmless against any award of court costs or damages
resulting solely from the use of such other party's name by the initiating
party in such action.
8.3 Detect and Report Infringements. Licensee agrees to keep watch to detect
any actual or suspected unauthorized use of any part of the Licensed
Technology and any attempted passing-off by imitation of any Product, and
shall notify Licensor of any such actual or suspected unauthorized use and
any such attempted passing-off within thirty (30) days after receiving
knowledge of the actual or suspected unauthorized use or the attempted
passing-off.
9. DEFENSIVE LITIGATION
9.1 Indemnity by Licensor.
9.1.1 Except as provided in subsection 9.1.3 below, Licensor shall defend
and indemnify Licensee from and against any damages, liabilities,
costs and expenses (including reasonable attorneys' fees and court
costs) either (i) arising out of any claim that Licensee's practice
or use of the Rights or making, use or sale of the Products
infringes a valid intellectual property right or represents a
misappropriation of a trade secret of a third party, or (ii)
resulting from or caused by or claimed to have resulted from any
sale or use of any Product, whether based on negligence, strict
liability or other grounds; provided, however, that: (1) Licensee
shall have promptly provided Licensor with written notice thereof
and reasonable cooperation, information, and assistance in
connection therewith; (2) Licensor shall have sole control and
authority with respect to the defense, settlement, or compromise
thereof; and (3) this indemnity shall not apply if such damage,
liability, cost or expense results solely from or is caused solely
by an intentional tortious act or the gross negligence of Licensee.
15
9.1.2 Should any Products delivered hereunder become or, in Licensor's
reasonable opinion, be likely to become the subject of a claim
described in subsection 9.1.1(i) above, Licensor may, at its option,
either procure for Licensee the right to continue purchasing and
using such Products, or replace or modify such Products so that they
become non-infringing. In such event, Licensor may direct Licensee
to withhold further shipments of infringing or potentially
infringing Products.
9.1.3 Licensor shall have no liability or obligation to Licensee under
this Section with respect to any claim based upon: (i) use of the
Products by Licensee or its customers in an application or
environment for which such Products were not designed or
contemplated; (ii) modifications and/or improvements of the Products
introduced by Licensee or its customers; or (iii) injuries or
damages caused by the Products which were attributable to faulty
materials or workmanship in the manufacture or assembly of the
Products by or on behalf of Licensee. In the event a claim is based
partially on an indemnified claim described in subsection 9.1.1 and
partially on a non-indemnified claim described in this subsection or
in Section 9.1.1(3) above, any payments and reasonable attorney fees
incurred in connection with such claim are to be apportioned between
the parties in accordance with the degree of cause attributable to
each party.
9.1.4 This Section 9.1 states Licensee's sole and exclusive remedy in the
event that a Product infringes on the intellectual property rights
of any third party.
9.1.5 During the term of this Agreement and for four (4) years thereafter,
Licensor shall maintain an insurance policy issued by a reputable
insurance company, naming Licensee as an additional insured, which
policy shall insure against any and all damages, liabilities, costs
and expenses (other than those excluded from Licensor's indemnity
pursuant to subsections 9.1.1(3) or 9.1.3 above) resulting from or
caused by (or claimed to be resulting from or caused by) either (i)
Licensee's practice or use of the Rights or making, use or sale of
the Products which infringes a valid intellectual property right or
which represents a misappropriation of a trade secret of a third
party or (ii) any sale or use of any Product by Licensee, whether
based on negligence, strict liability or other grounds. Such
insurance policy shall provide coverage in the amounts of at least
200 000 Euros per claim and 5 000 000 Euros in the aggregate or any
other amounts approved and agreed by the parties from time to time.
16
9.2 Indemnity by Licensee.
9.2.1 Licensee shall defend and indemnify Licensor from and against any
damages, liabilities, costs and expenses (including reasonable
attorneys' fees and court costs): (i) arising out of the use of the
Products by Licensee or its customers in an application or
environment for which such Products were not designed or
contemplated or (ii) arising out of modifications and/or
improvements to the Products introduced by Licensee or its
customers; or (iii) arising out of injuries or damages caused by the
Products which were attributable to faulty materials or workmanship
in the manufacture or assembly of the Products by Licensee or to
Licensee's intentional tortious act or gross negligence; provided,
however, that:
9.2.1.1 Licensor shall have promptly provided Licensee with written
notice
thereof and reasonable cooperation, information, and assistance in
connection therewith; and
9.2.1.2 Licensee shall have sole control and authority with respect
to the defense, settlement, or compromise thereof In the event a
claim is based partially on an indemnified claim described in this
subsection and partially on a non-indemnified claim, any payments
and reasonable attorney fees incurred in connection with such claim
are to be apportioned between the parties in accordance with the
degree of cause attributable to each party.
9.2.1.3 During the term of this Agreement and for four (4) years
thereafter, Licensee shall maintain an insurance policy issued by a
reputable insurance company, naming Licensor as an additional
insured, which policy shall insure against any and all damages,
liabilities, costs and expenses resulting from or caused by (or
claimed to be resulting from or caused by) (i) the use of the
Products by Licensee or its customers in an application or
environment for which such Products were not designed or
contemplated; or (ii) modifications and/or improvements to the
Products introduced by Licensee or its customers; or (iii) injuries
or damages caused by the Products which were attributable to faulty
materials or workmanship in the manufacture or assembly of the
Products by Licensee or to Licensee's intentional tortious act or
gross negligence. Such insurance policy shall provide coverage in
the amounts of at least 200 000 Euros per claim and 5 000 000 Euros
in the aggregate or any other amounts approved and agreed by the
parties from time to time
17
9.3 Use of Name in Suit. Where, in the judgment of the indemnifying party it
is necessary to use the other party's name to prosecute or defend an
action pursuant to Section 9.1 (Indemnity by Licensor) or 9.2 (Indemnity
by Licensee), the indemnified party agrees to allow the indemnifying party
to so use its name; provided, however, that the indemnifying party agrees
to hold the indemnified party harmless against any award of court costs or
damages resulting solely from the use of the indemnified party's name by
the indemnifying party in such action.
9.4 Notification of Suit. The indemnified party shall give the indemnifying
party written notice of any suit or action described in Section 9.1
(Indemnity by Licensor) or 9.2 (Indemnity by Licensee) wherein the
indemnified party is named as a party. Such notice shall be given within
thirty (30) days after acquiring such knowledge or prior to the expiration
of time in which a response must be filed with a court or other judicial
body, whichever is first to occur.
10. WARRANTIES AND AFTER-SALES SUPPORT
10.1 Limited Warranty. As to the Products purchased from Licensor by Licensee,
Licensor makes the warranty set forth in Schedule 1.10 attached hereto and
made a part hereof.
10.2 No Other Warranties.
10.2.1 THE WARRANTIES IN SCHEDULE 10.1 AND THE WARRANTIES UNDER SECTION
3.5.3 (Testing) ARE IN LIEU OF ANY OTHER WARRANTY, WHETHER EXPRESS
OR IMPLIED, WRITTEN OR ORAL (INCLUDING ANY WARRANTY OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE).
10.2.2 LICENSOR'S LIABILITY ARISING OUT OF THE MANUFACTURE, SALE OR
SUPPLYING OF THE PRODUCTS OR THEIR USE OR DISPOSITION, WHETHER BASED
UPON WARRANTY, CONTRACT, TORT OR OTHERWISE, SHALL NOT EXCEED THE
ACTUAL PURCHASE PRICE PAID BY LICENSEE FOR THE PRODUCTS.
10.2.3 IN NO EVENT SHALL LICENSOR BE LIABLE TO LICENSEE OR ANY OTHER
PERSON OR ENTITY FOR SPECIAL, INCIDENTAL OR CONSEQUENTIAL DAMAGES
(INCLUDING, BUT NOT LIMITED TO, LOSS OF PROFITS, LOSS OF DATA OR
LOSS OF USE DAMAGES) ARISING OUT OF THE MANUFACTURE, SALE OR
SUPPLYING OF THE PRODUCTS, EVEN IF LICENSOR HAS BEEN ADVISED OF THE
POSSIBILITY OF SUCH DAMAGES OR LOSSES.
18
10.2.4 THE FOREGOING WARRANTIES EXTEND TO LICENSEE ONLY AND SHALL NOT BE
APPLICABLE TO ANY OTHER PERSON OR ENTITY INCLUDING, WITHOUT
LIMITATION, CUSTOMERS OF LICENSEE.
10.2.5 Licensee shall not bind or purport to bind Licensor to any
affirmation, representation or warranty with respect to the Products
to any third party.
10.3 Product Support Provided by Licensee. Licensee undertakes to provide its
customers to whom it supplies the Products with after-sales support of a
standard comparable to that provided by Licensee for its own products.
Such product support shall include adequate technical liaison with
customers in order to ensure the timely identification, prevention or
solution to problems encountered by such customers in respect of the
maintenance, repair of the Products and parts thereof Licensee agrees to
supply Licensor (for the purpose of Licensor's own product support) such
information on the Products that Licensor may request; provided, however,
that this information can be supplied without infringement to Licensee's
obligations of secrecy towards its own customers.
11. REPRESENTATIONS, WARRANTIES AND COVENANTS
Each of Licensor and Licensee hereby represents warrants and covenants to the
other as follows:
11.1 Right, Power and Authority. It has full right, power and authority to
enter into this Agreement and there is nothing which would prevent it from
performing its obligations under the terms and conditions imposed on it by
this Agreement.
11.2 Binding Obligation. This Agreement (including without limitation Sections
13.2 (Governing Law) and 13.3 (Dispute Resolution)) has been duly
authorized by all necessary corporate and stockholder action of Licensor
and Licensee, respectively, and constitutes a valid and binding obligation
on Licensor and Licensee, respectively, enforceable in accordance with the
terms hereof
11.3 Corporate Good-Standing. Licensor or Licensee, as the case may be, is a
corporation duly organized and validly existing and in good standing under
the laws of its jurisdiction of incorporation and is duly qualified and
authorized to do business wherever the nature of its activities or
properties requires such qualification or authorization.
11.4 No Government Approvals Needed. No registration with or approval of any
government agency or commission of any jurisdiction is necessary for the
execution, delivery or performance by it of any of the terms of this
Agreement, or for the validity and enforceability hereof or with respect
to its obligations hereunder, except such registrations and approvals as
have been made or obtained, certified copies of which are attached as
Schedule 11.4 hereto.
19
11.5 No Provisions Contravened. There is no provision in its company or
corporate charter, articles of incorporation, By-Laws or equivalent
governing documents, and no provision in any existing mortgage, indenture,
contract or agreement binding on it which would be contravened by the
execution, delivery or performance by it of this Agreement.
11.6 No Consent of Third Parties Needed. No consent of any trustee or holder of
any of its indebtedness is or shall be required as a condition to the
validity of this Agreement, except such consents as have been obtained,
certified copies of which are attached as Schedule 11.6 hereto.
11.7 No Proceedings Pending. There is no action or proceeding pending or
insofar as it knows or ought to know threatened against it before any
court, administrative agency or other tribunal which might have a material
adverse effect on its business or condition, financial or otherwise, or
its operation of any business. Licensor knows of no claim by any third
party of infringement by Licensor or any Inventor on such party's patent,
trademark, service ▇▇▇▇, copyright, mask work, trade secret or other
intellectual property rights.
11.8 No Law Contravened. Neither its execution nor its delivery of this
Agreement nor its fulfillment of or compliance with the terms and
provisions hereof shall contravene any provision of the laws of any
jurisdiction, including, without limitation, any statute, rule,
regulation, judgment, decree, order, franchise or permit applicable to it.
11.9 Licensed Technology. Licensor has the right to use, and to grant licenses
to use, the Licensed Technology. Licensor has not, and shall not in the
future during the term of this Agreement, grant rights or licenses to any
other person or entity which infringe upon rights and licenses granted to
Licensee hereunder. The use by Licensee of the Licensed Technology under
the terms of this Agreement shall not infringe on any third-party rights,
including intellectual property rights.
11.10 Validity of Patents. There are no patents issued by any country in the
Territory or any other prior art which invalidate or would invalidate any
of the patents included in the Licensed Technology, or issuance of any of
those patents in any country in the Territory. Each patent included in the
Licensed Technology was validly issued under the laws of the country which
issued it.
11.11 Performance of Products. Licensor represents and warrants to Licensee that
each Product manufactured by Licensee shall, when properly manufactured,
operated and maintained, achieve the performance specifications
established by Licensor for such Product which are attached as Schedule
11.11hereto.
11.12 Disclaimer of Liability. EXCEPT AS IS PROVIDED IN THIS ARTICLE 11,
LICENSOR MAKES NO EXPRESS OR IMPLIED WARRANTY, STATUTORY OR OTHERWISE,
CONCERNING THE LICENSED TECHNOLOGY OR ANY OTHER INFORMATION COMMUNICATED
TO LICENSEE, INCLUDING WITHOUT LIMITATION NO WARRANTY OF FITNESS FOR A
PARTICULAR PURPOSE, AND NO WARRANTIES AS TO QUALITY OR THE USEFULNESS OF
THE LICENSED TECHNOLOGY FOR ITS INTENDED PURPOSE; provided, however, if
Licensor or Licensee shall discover any errors in the Licensed Technology
during the term of this Agreement, Licensor shall use its best efforts to
correct such errors in the Licensed Technology without cost to Licensee.
20
IN NO EVENT, HOWEVER, SHALL LICENSOR BE LIABLE TO LICENSEE FOR ANY
LOSSES OR DAMAGES INCLUDING WITHOUT LIMITATION ANY SPECIAL,
CONSEQUENTIAL, INCIDENTAL OR INDIRECT LOSSES OR DAMAGES RESULTING FROM
SUCH ERRORS IN THE LICENSED TECHNOLOGY.
12. TERMINATION OR EXPIRATION
12.1 Term of Agreement. Unless it is terminated earlier pursuant to this
Article, this Agreement shall continue in full force and effect until it
automatically expires upon the later of (a) the termination or expiration
date of the latest Patent granted covered by agreement and (b) the
expiration date of any extension made by Licensee in accordance with
Section 12.2 hereof. The term of this Agreement shall be from the
Effective Date to the date of termination or expiration of this Agreement,
as the case may be.
12.2 Licensee Extensions. Licensee shall have the right to automatically extend
the term of this Agreement for one additional period ten (10) years by
written notice given by Licensee to Licensor at least 90 days prior to the
expiration date under Section 12.1 above.
12.3 Termination for Cause. This Agreement may be terminated by either party
(the "terminating party") by giving written notice of termination to the
other party, such termination immediately effective upon the giving of
such notice of termination, after the occurrence of any of the following
events:
12.3.1 the filing of a petition in bankruptcy, insolvency or
reorganization against or by the other party, or the other party
becoming subject to a composition for creditors, whether by law or
agreement, or the other party going into receivership or otherwise
becoming insolvent; or
12.3.2 it is understood that the non payment of royalties is not a cause
for early termination. In such a situation, the only remedy shall be
to use legal procedure into Court to be paid.
12.3.3 a material breach of contract that is so important that it cannot
be solved or remedied by using the usual legal network procedure
into proper Court and Jurisdiction to compensate for the damage
caused by one party from the other.
21
12.3.4 Notwithstanding paragraph 12.3.3 the licensor shall introduced
legal procedure and have a judgment into proper Court and
Jurisdiction in order to terminate this agreement before the
termination date.
12.4 After Termination or Expiration.
12.4.1 The parties hereto agree that, once this Agreement is terminated or
expires, Licensee shall immediately cease: (i) any use or practice
of the Licensed Technology; and (ii) any making, use or sale of the
Products, except as is provided in Section 12.4.2 below. Upon
termination or expiration of this Agreement, Licensor shall take the
place of Licensee for any and all purposes in each and every
sublicense granted by Licensee during the term of this Agreement.
Each party to this Agreement shall, at its own expense, return to
the other party all Confidential Information provided by such other
party as soon as practicable after the date of such termination or
expiration, including, but not limited to, original documents,
drawings, computer diskettes, models, samples, notes, reports,
notebooks, letters, manuals, prints, memoranda and any copies
thereof, which have been received or derived by such party. During
the term of this Agreement and thereafter, all such Confidential
Information shall remain the exclusive property of the party which
provided it.
12.4.2 The parties hereto agree that, once this Agreement is terminated or
expires, Licensee shall have the right:
12.4.2.1 after such date of termination or expiration, as the case
may be, subject to the same terms and conditions which existed
immediately prior to such date, to manufacture, assemble, sell,
distribute, service, install, use, lease, test any and all Products,
whose manufacture or assembly commenced on or prior to such date of
termination or expiration, for a period of one year after such date
of termination or expiration;
12.4.2.2 for a period of ten (10) years after such date of
termination or expiration, to service and install any and all
Products sold by Licensee; and
12.4.2.3 to continue to use the Licensed Technology solely in
connection with Licensee's activities in accordance with subsections
12.4.2.1 and 12.4.2.2 above.
12.4.3 Licensor may, if it so elects, purchase any or all of the Products
manufactured by Licensee, its sublicensees and its assigns which are
unsold on the date of termination or expiration of this Agreement, as the
case may be. This right of Licensor shall take precedence over Licensee's
right to sell-off its inventory in accordance with subsection (b) above.
The price to Licensor shall be Licensee's manufacturing cost (including a
reasonable allocation of overhead expenses and license fees paid under
this Agreement pursuant to Section 5.6 (License Fees)), but without any
profit. Licensor may also in such event buy at depreciated cost and
without profit to Licensee all dies, jigs, tools, fixtures and patterns
applicable to the Products. To exercise this option, Licensor must notify
Licensee in writing of its exercise of this option and pay Licensee in
full within thirty (30) days after receiving Licensee's inventory of
Products subject to purchase by Licensor pursuant to this subsection.
After exercising such option, Licensor shall take delivery of such
Products ex works the facilities of Licensee, its sublicensees and its
assigns.
22
12.5 Payment Obligations Continue. Upon termination or expiration of this
Agreement, nothing shall be construed to release Licensee from its
obligations to pay Licensor any and all royalties or other amounts
accrued but unpaid hereunder prior to the date of such termination
or expiration.
12.6 No Damages for Termination. The parties hereto agree that if either
party terminates this Agreement pursuant to this Article 12, then
the terminating party shall not be liable for damages or injuries
suffered by the other party as a result of that termination.
13. MISCELLANEOUS
13.1 Assignments. Except as provided in Sections 2.6 (Right to Sublicense
or Assign), above, this Agreement and any and all of the rights and
obligations of either party hereunder shall not be assigned,
delegated, sublicensed, sold, transferred or otherwise disposed of,
by operation of law or otherwise, without the prior written consent
of the other party; provided, however, that either party may assign,
delegate, sublicense, sell, transfer or otherwise dispose of rights
and obligations hereunder to any of its respective Affiliates
including parent corporation without such prior written consent.
This Agreement shall be binding upon, and inure to the benefit of,
Licensor and Licensee and their respective successors and assigns,
to the extent such assignments are in accordance with this Section
13.1.
13.2 Governing Law. This Agreement shall be governed, interpreted and
construed in accordance with the laws of SWITZERLAND applicable to
agreements made and to be fully performed therein.
13.3 Dispute Resolution
13.3.1 The parties irrevocably submit to the jurisdiction of the
courts of Switzerland, canton of Zug; provided, however, that
nothing herein shall preclude either party from instituting
proceedings against the other party or anyone acting by,
through or under the other party in any place which may have
jurisdiction for the purpose of protecting and enforcing such
party's rights either hereunder or pursuant to any other
agreements, documents, instruments or otherwise.
23
13.3.2 In the alternative, service of process may be made by postage
prepaid registered or recorded delivery air-mail letter
transmitted by either party to the other party at the address
for notices set forth above, or address provided by the
parties, for such other party with a duplicate copy sent by
postage prepaid registered or recorded delivery air mail
letter to the agent appointed by such other party hereunder.
13.3.3 Each party hereby irrevocably waives any objection which it
may now or hereafter have to the laying of venue of any suit,
action or proceeding relating to this Agreement in Zug and
further irrevocably waives any claim that Zug is not a
convenient forum for any such suit, action or proceeding.
13.4 Waiver. A waiver of any breach of any provision of this Agreement
shall not be considered as a continuing waiver of other breaches of
the same or other provisions of this Agreement.
13.5 Relationship of the Parties. The parties hereto are independent
contractors. Nothing herein contained shall be deemed to create a
joint venture, agency or partnership relationship between the
parties hereto. Neither party shall have any power to enter into any
contracts or commitments in the name of, or on behalf of, the other
party, or to bind the other party in any respect whatsoever.
13.6 Notices.
13.6.1 Each notice required or permitted to be sent under this
Agreement shall be given by telecopy transmission or by
registered or recorded delivery air mail letter to Licensor
and to Licensee at the addresses and telecopy numbers
indicated below.
For Licensor:
ADDRESS:
CITY:
STATE/PROVINCE:
POSTAL OR ZIP CODE:
COUNTRY:
ATTENTION:
TELECOPY:
For Licensee:
ADDRESS:
CITY:
STATE/PROVINCE:
POSTAL OR ZIP CODE:
COUNTRY:
ATTENTION:
TELECOPY:
24
Either party may change its address and/or telecopy number
for purposes of this Agreement by giving the other party
written notice of its new address and/or telecopy number.
13.6.2 Any properly addressed notice if given or made by registered
or recorded delivery air mail letter shall be deemed to have
been received on the earlier of the date actually received and
the date ten (10) Business Days after the same was posted (and
in proving such it shall be sufficient to prove that the
envelope containing the same was properly addressed and posted
as aforesaid) and if given or made by telecopy transmission
shall be deemed to have been received at the time of dispatch,
unless such date of deemed receipt is not a Business Day, in
which case the date of deemed receipt shall be the next
succeeding Business Day.
13.7 Entire Understanding. This Agreement embodies the entire
understanding between the parties relating to the subject matter
hereof and there are no prior representations, warranties or
agreements between the parties, whether written or oral, not
contained in this Agreement.
13.8 Invalidity. If any provision of this Agreement is declared invalid
or unenforceable by a court having competent jurisdiction, it is
mutually agreed that this Agreement shall endure except for the part
declared invalid or unenforceable by order of such court. The
parties shall consult and use their best efforts to agree upon a
valid and enforceable provision which shall be a reasonable
substitute for such invalid or unenforceable provision in light of
the intent of this Agreement.
13.9 Amendments. Any amendment or modification of any provision of this
Agreement must be in writing, dated and signed by both parties
hereto.
13.10 Fees Payable. Licensor and Licensee acknowledge that there are no
broker's commissions, finder's fees or other amounts payable with
regard to this transaction, and Licensor and Licensee agree to
indemnify and hold the other harmless from and against all
liabilities, claims, demands, damages or costs of any kind arising
from or connected with any broker's or finder's commission, fee or
other amount claimed to be due any person arising from the
indemnitor's conduct with respect to this Agreement and the
transactions contemplated herein.
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13.11 Responsibility for Taxes.
13.11.1 Taxes in the Territory now or hereafter imposed with respect
to the transactions contemplated hereunder (with the exception
of income taxes or other taxes imposed upon Licensor and
measured by the gross or net income of Licensor) shall be the
responsibility of Licensee, and if paid or required to be paid
by Licensor, the amount thereof shall be added to and become a
part of the amounts payable by Licensee hereunder.
13.11.2 Taxes outside the Territory now or hereafter imposed with
respect to the transactions contemplated hereunder (with the
exception of income taxes or other taxes imposed upon Licensee
and measured by the gross or net income of Licensee) shall be
the responsibility of Licensor, and if paid or required to be
paid by Licensee, the amount thereof shall be deducted from
the amounts payable by Licensee hereunder.
13.11.3 Notwithstanding the foregoing, if Licensee is required to
withhold taxes from any amount payable by Licensee hereunder,
then Licensee shall pay to Licensor an additional amount as
may be necessary so that Licensor will receive, after
deduction of such withholding tax, the amount which Licensor
would have received in the absence of such withholding tax.
13.12 All written material, correspondence, Technical Information, notices
and oral assistance supplied by either party hereunder shall be in
the English or French language.
13.13 Force Majeure.
13.13.1 Neither Licensor nor Licensee shall be liable in damages, or
shall be subject to termination of this Agreement by the other
party, for any delay or default in performing any obligation
hereunder if that delay or default is due to any cause beyond
the reasonable control and without fault or negligence of such
party; provided, however, that (i) in order to excuse its
delay or default hereunder, a party shall notify the other
party of the occurrence or the cause, specifying the nature
and particulars thereof and the expected duration thereof and
(ii) within ten (10) business days after the termination of
such occurrence or cause, such party shall give notice to the
other party specifying the date of termination thereof all
obligations of both parties shall return to being in frill
force and effect upon the termination of such occurrence or
cause (including without limitation any payments which became
due and payable hereunder prior to the termination of such
occurrence or cause).
13.13.2 For the purposes of this Section 13.14, a "cause beyond the
reasonable control" of a party shall include, without
limitation, any act of God, act of any government or other
authority or statutory undertaking, industrial dispute, fire,
explosion, accident, power failure, flood, riot or war
(declared or undeclared).
26
13.14 Compliance With Laws. Each of Licensor and Licensee covenants and
agrees that all of its activities under or pursuant to this
Agreement shall comply with all applicable laws, rules and
regulations. Specifically, but without limitation, Licensee shall be
responsible for obtaining all licenses, permits and approvals which
are necessary or advisable for sales of the Products in one or
several countries covered by the territory and for the performance
of its duties hereunder.
13.15 Table of Contents and Headings. Any table of contents accompanying
this Agreement and any headings contained herein are for directory
purposes only, do not constitute a part of this Agreement, and shall
not be employed in interpreting this Agreement.
13.16 Counterparts. This Agreement may be executed in one or more
counterparts, each of which shall be deemed an original, but all of
which together shall constitute one and the same instrument.
13.17 Exhibits. All exhibits referred to in this Agreement are attached
hereto and incorporated herein by this reference.
(SIGNATURES APPEAR ON THE FOLLOWING PAGE: 43)
27
SIGNATURES
WKF 5 LTD
-----------------------------------
per: Title,
XL GENERATION AG
-----------------------------------
per: Title,
Agreed and Accepted as of the date indicated below on my behalf and on behalf of
my heirs, successors and assigns:
/s/ ▇▇▇▇▇ ▇▇▇▇▇▇▇
----------------------------------------
▇▇▇▇▇ ▇▇▇▇▇▇▇, inventor
28
SCHEDULE 1.11
29
SCHEDULE 10.1
WARRANTY
30
SCHEDULE 11.4
31
SCHEDULE 11.6
32
SCHEDULE 11.11
33