LICENSE AGREEMENT BETWEEN TECHNOLOGY INNOVATIONS, LLC AND NATURALNANO, INC. EFFECTIVE AS OF APRIL 27, 2005
Exhibit
10.1
[Redacted]
BETWEEN
TECHNOLOGY
INNOVATIONS, LLC
AND
NATURALNANO,
INC.
EFFECTIVE
AS OF APRIL 27, 2005
TABLE
OF
CONTENTS
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Page
No.
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RECITALS
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1
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ARTICLE
1 - DEFINITIONS
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1
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ARTICLE
2 - LICENSE GRANT
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3
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ARTICLE
3 - ROYALTIES
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4
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ARTICLE
4 - CONFIDENTIALITY
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7
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ARTICLE
5 - TERM AND TERMINATION
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7
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ARTICLE
6 - PATENT MAINTENANCE AND REIMBURSEMENT
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9
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ARTICLE
7 - INFRINGEMENT AND LITIGATION
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9
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ARTICLE
8 - DISCLAIMER OF WARRANTY; INDEMNIFICATION
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9
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ARTICLE
9 - USE OF NAME; INDEPENDENT CONTRACTOR
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12
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ARTICLE
10 - ADDITIONAL PROVISIONS
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12
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Attachment
1 Intellectual Property List
This
License Agreement (“AGREEMENT”) is made by and between Technology Innovations,
LLC (“LICENSOR”), having a place of business at 000 Xxxxxx Xxxxxx Xxxxx, Xxxxx
000, Xxxx Xxxxxxxxx, Xxx Xxxx 00000 and NaturalNano, Inc. (“LICENSEE”), having a
place of business at 000 Xxxxxx Xxxxxx Xxxxx, Xxxxx 000, Xxxx Xxxxxxxxx,
Xxx
Xxxx 00000.
This
AGREEMENT is effective as of April 27, 2005 (“EFFECTIVE DATE”).
RECITALS
WHEREAS,
LICENSOR owns and is proprietor of certain intellectual property listed in
Attachment 1 relating to applications of halloysite processes, structures
and
compositions; and
WHEREAS,
LICENSEE desires to secure an exclusive, field of use limited license to
make,
use and sell the intellectual property described in Attachment 1 hereto.
NOW,
THEREFORE, in consideration of the premises and of the promises and covenants
contained herein and intending to be legally bound hereby, the parties agree
as
follows:
ARTICLE
1 - DEFINITIONS
1.1 AFFILIATE
means, when used with reference to LICENSEE, any ENTITY directly or indirectly
controlling, controlled by or under common control with LICENSEE. For purposes
of this AGREEMENT, “control” means the direct or indirect ownership of over
fifty percent (50%) of the outstanding voting securities of an ENTITY, or
the
right to receive over fifty percent (50%) of the profits or earnings of an
ENTITY, or the right to control the policy decisions of an ENTITY.
1.2 BANKRUPTCY
EVENT means the ENTITY in question becomes insolvent, or voluntary or
involuntary proceedings by or against such ENTITY are instituted in bankruptcy
or under any insolvency law, or a receiver or custodian is appointed for
such
ENTITY, or proceedings are instituted by or against such ENTITY for corporate
reorganization or the dissolution of such ENTITY, which proceedings, if
voluntary, shall not have been dismissed within sixty (60) days after the
date
of filing, or such ENTITY makes an assignment for the benefit of creditors,
or
substantially all of the assets of such ENTITY are seized or attached and
not
released within sixty (60) days thereafter.
1
1.3 CALENDAR
QUARTER means each three-month period, or any portion thereof, beginning
on
January 1, April 1, July 1 and October 1.
1.4 CALENDAR
YEAR means a period of twelve (12) months beginning on January 1 and ending
on
December 31.
1.5 CONFIDENTIAL
INFORMATION means and includes all technical information, inventions, trade
secrets, developments, discoveries, software, know-how, methods, techniques,
formulae, data, processes and other proprietary ideas, whether or not patentable
or copyrightable, identified as confidential or proprietary at the time it
is
delivered or communicated to LICENSEE.
1.6 ENTITY
means a corporation, an association, a joint venture, a partnership, a trust,
a
business, an individual, a government or political subdivision thereof,
including an agency, or any other organization that can exercise independent
legal standing.
1.7 FIELD
OR
FIELD OF USE means non-medical uses of halloysite microtubule processes,
structures, compositions and applications; [ … ]
1.8 LICENSEE
shall include LICENSEE and its AFFILIATES.
1.9 NET
SALES
means the cash consideration or FAIR MARKET VALUE attributable to the SALE
of
any LICENSED PRODUCT(S), less qualifying costs directly attributable to such
SALE and actually identified on the invoice and borne by LICENSEE or its
sublicensee.
1.9.1 Such
qualifying costs shall be limited to the following:
1.9.1.1 Discounts,
in amounts customary in the trade, for quantity purchases, prompt payments
and
for wholesalers and distributors.
1.9.1.2 Credits
or refunds, not exceeding the original invoice amount, for claims or
returns.
1.9.1.3 Prepaid
transportation insurance premiums.
1.9.1.4 Prepaid
outbound transportation expenses.
1.9.1.5 Sales
and
use taxes imposed by a governmental agency.
1.10 LICENSED
PRODUCT(S) means product(s) which in the absence of this AGREEMENT would
infringe at least one claim of PATENT RIGHTS or product(s) made, at least
in
part, using LICENSOR’S TECHNICAL INFORMATION.
2
1.11 PATENTED
PRODUCT(S) means product(s) which are made, made for, used or sold, which
manufacture, use or sale is covered by any claim of the LICENSOR’S PATENT RIGHTS
in any country.
1.12 PATENT
RIGHTS means those United States patent applications listed in Attachment
1
hereto, and foreign counterparts including continuation, continuation-in-part,
divisional and re-issue applications thereof, together with any and all patents
issuing thereupon.
1.13 TECHNICAL
INFORMATION means research and development information, unpatented inventions,
know-how, trade secrets, and technical data in the possession of LICENSOR
on the
EFFECTIVE DATE of this AGREEMENT which is needed to produce LICENSED
PRODUCT(S).
1.14 SALE
means any bona fide transaction for which consideration is received for the
sale, use, lease, transfer or other disposition of LICENSED PRODUCT(S). A
SALE
of LICENSED PRODUCT(S) shall be deemed completed at the time LICENSEE or
its
sublicensee receives payment for such LICENSED PRODUCT(S).
ARTICLE
2 - LICENSE GRANT
2.1 LICENSOR
grants to LICENSEE for the term of this AGREEMENT an exclusive, world-wide
right
and license, with the right to grant sublicenses, to make, have made, use
and
sell LICENSED PRODUCT(S) in the FIELD OF USE. No other rights or licenses
are
granted hereunder.
2.2 The
right
to sublicense conferred upon LICENSEE under this AGREEMENT is subject to
the
following conditions:
2.2.1 In
each
such sublicense, the sublicensee shall be prohibited from further sublicensing
and shall be subject to the terms and conditions of the license granted to
LICENSEE under this AGREEMENT.
2.2.2 LICENSEE
shall forward to LICENSOR, within thirty (30) days of execution, a complete
and
accurate copy written in the English language of each sublicense granted
hereunder. LICENSOR’S receipt of such sublicense shall not constitute an
approval of such sublicense or a waiver of any of LICENSOR’S rights or
LICENSEE’S obligations hereunder.
3
2.2.3 If
LICENSEE becomes subject to a BANKRUPTCY EVENT, all payments then or thereafter
due and owing to LICENSEE from its sublicensees shall upon notice from LICENSOR
to any such sublicensee become payable directly to LICENSOR for the account
of
LICENSEE; provided however, that LICENSOR shall remit to LICENSEE the amount
by
which such payments exceed the amounts owed by LICENSEE to
LICENSOR.
2.2.4 Notwithstanding
any such sublicense, LICENSEE shall remain primarily liable to LICENSOR for
all
of the LICENSEE’S duties and obligations contained in this AGREEMENT, and any
act or omission of a sublicensee which would be a breach of this AGREEMENT
if
performed by LICENSEE shall be deemed to be a breach by LICENSEE of this
AGREEMENT.
ARTICLE
3 - ROYALTIES
3.1 ROYALTIES
3.1.1 In
consideration of the license granted herein, LICENSEE shall pay to LICENSOR
a
royalty of [ … ] percent ([ … ] %) of the NET SALES of LICENSED PRODUCT(S) made,
made for, used or sold by LICENSEE and any sublicensees.
3.1.2 LICENSEE
shall promptly pay to LICENSOR [ … ] percent ([ … ] %) of any sublicense
initiation fee or other such consideration, including, but not limited to,
license fees, royalties and minimum royalties paid by each sublicensee of
this
AGREEMENT.
3.1.3 In
the
event that more than one royalty or payment is applicable to LICENSED
PRODUCT(S), the royalty rate provided for in 3.1.1. or sublicensing fee or
consideration due under 3.1.2 shall be prorated. For example, in the event
two
royalties or fees/payments are applicable, the royalty rate and payment
percentage shall be reduced by one half, i.e. [ … ] % and [ … ] %, respectively.
In the event that three royalties or payments would be applicable, the royalty
rate and payment percentage shall be reduced by two thirds, i.e. [ … ] % and [ …
] %, respectively.
3.2 MILESTONES
AND MAINTENANCE FEES
4
3.2.1 LICENSEE
shall use its best efforts to develop for commercial use and to market LICENSED
PRODUCT(S) as soon as practical, consistent with sound and reasonable business
practices.
3.2.2 LICENSEE
shall provide LICENSOR on each June 1 and December 1 with written reports,
setting forth in such detail as LICENSOR may reasonably request, the progress
of
the development, evaluation, testing and commercialization of the LICENSED
PRODUCT(S). LICENSEE shall also notify LICENSOR within thirty (30) days of
the
first commercial sale of any LICENSED PRODUCT(S).
3.2.3 LICENSEE
shall pay to LICENSOR a nonrefundable minimum quarterly royalty fee of [
… ]
dollars ($[ … ]) commencing in the CALENDAR QUARTER that the first patent under
PATENT RIGHTS issues. A minimum royalty payment paid hereunder shall serve
as an
advanced payment against royalties due under Section 3.1 herein during the
period for which such minimum royalty payment was paid.
3.3 REPORTS
AND RECORDS
3.3.1 LICENSEE
shall deliver to LICENSOR within forty-five (45) days after the end of each
CALENDAR QUARTER a report, certified by the chief financial officer of LICENSEE
setting forth in reasonable detail the calculation of the royalties due to
LICENSOR for such CALENDAR QUARTER, including, without limitation:
3.3.1.1 Number
of
LICENSED PRODUCT(S) involved in SALES, listed by country.
3.3.1.2 Gross
consideration for SALES of LICENSED PRODUCT(S), including all amounts invoiced,
billed, or received.
3.3.1.3 Qualifying
costs, as defined in Section 1.13, listed by category of cost.
3.3.1.4 NET
SALES
of LICENSED PRODUCT(S) listed by country.
3.3.1.5 Royalties
owed to LICENSOR, listed by category, including without limitation earned,
sublicense derived, and minimum royalty categories.
3.3.1.6 Earned
royalty amounts credited against minimum royalty payments.
5
3.3.2 Payments
under Sections 3.1 and 3.2 hereof shall be paid within forty-five (45) days
following the last day of the CALENDAR QUARTER in which the royalties or
payments accrue and shall accompany the report of Section 3.3.1.
3.3.3 LICENSEE
will maintain and cause its sublicensees to maintain, complete and accurate
books and records which enable the royalties payable hereunder to be verified.
The records for each CALENDAR QUARTER shall be maintained for three years
after
the submission of each report under Article 3 hereof. Upon reasonable prior
notice to LICENSEE, LICENSOR and its accountants shall have access to all
books
and records relating to the SALES of LICENSED PRODUCT(S) by LICENSEE and
its
sublicensees to conduct a review or audit thereof. Such access shall be
available not more than once each CALENDAR YEAR, during normal business hours,
and for each of three years after the expiration or termination of this
AGREEMENT. If LICENSOR determines that LICENSEE has underpaid royalties by
5% or
more, LICENSEE will pay the costs and expenses of LICENSOR and its accountants
in connection with their review or audit.
3.4 CURRENCY,
PLACE OF PAYMENT, INTEREST
3.4.1 All
dollar amounts referred to in this AGREEMENT are expressed in United States
dollars. All payments to LICENSOR under this AGREEMENT shall be made in United
States dollars by check payable to “Technology Innovations, LLC”.
3.4.2 If
LICENSEE receives revenues from SALES of LICENSED PRODUCT(S) in currency
other
than United States dollars, revenues shall be converted into United States
dollars at the conversion rate for the foreign currency as published in the
eastern edition of The Wall Street Journal as of the last business day of
the
applicable CALENDAR QUARTER.
3.4.3 Amounts
that are not paid when due shall accrue interest from the due date until
paid,
at a rate equal to one and one-half percent (1.5%) per month (or the maximum
allowed by law, if less).
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ARTICLE
4 - CONFIDENTIALITY
4.1 LICENSEE
agrees to maintain in confidence and not to disclose to any third party any
CONFIDENTIAL INFORMATION of LICENSOR received pursuant to this AGREEMENT.
LICENSEE agrees to ensure that its employees have access to CONFIDENTIAL
INFORMATION only on a need-to-know basis and are obligated in writing to
abide
by LICENSEE’S obligations hereunder. The foregoing obligation shall not apply
to:
4.1.1 information
that is known to LICENSEE or independently developed by LICENSEE prior to
the
time of disclosure, in each case, to the extent evidenced by written records
promptly disclosed to LICENSOR upon receipt of the CONFIDENTIAL
INFORMATION;
4.1.2 information
disclosed to LICENSEE by a third party that has a right to make such
disclosure;
4.1.3 information
that becomes patented, published or otherwise part of the public domain as
a
result of acts by LICENSOR or a third person obtaining such information as
a
matter of right; or
4.1.4 information
that is required to be disclosed by order of United States governmental
authority or a court of competent jurisdiction; provided that LICENSEE shall
use
its best efforts to obtain confidential treatment of such information by
the
agency or court.
ARTICLE
5 - TERM AND TERMINATION
5.1 This
AGREEMENT, unless sooner terminated as provided herein, shall terminate upon
the
expiration of the last to expire or become abandoned of the PATENT
RIGHTS.
5.2 LICENSEE
may, at its option, terminate this AGREEMENT at any time by doing all of
the
following:
5.2.1 by
ceasing to make, have made, use and sell all LICENSED PRODUCT(S);
and
5.2.2 by
terminating all sublicenses, and causing all sublicensees to cease making,
having made, using and selling all LICENSED PRODUCT(S); and
5.2.3 by
giving
sixty (60) days’ notice to LICENSOR of such cessation and of LICENSEE’S intent
to terminate; and
5.2.4 by
tendering payment of all accrued royalties.
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5.3 LICENSOR
may terminate this AGREEMENT if any of the following occur:
5.3.1 LICENSEE
becomes more than sixty (60) days in arrears in payment of royalties or expenses
due pursuant to this AGREEMENT and LICENSEE does not provide full payment
immediately upon demand; or
5.3.2 LICENSEE
becomes subject to a BANKRUPTCY EVENT; or
5.3.3 LICENSEE
breaches this AGREEMENT and does not cure such breach within sixty (60) days
written notice thereof.
5.4 LICENSOR
may also terminate this AGREEMENT if:
5.4.1 five
(5)
years have elapsed from the EFFECTIVE DATE of this AGREEMENT; and
5.4.2 LICENSEE
has not made a SALE of a LICENSED PRODUCT(S) or has no sublicensees doing
so;
and
5.4.3 LICENSOR
has given LICENSEE sixty (60) days notice of intent to terminate.
5.5 If
LICENSEE becomes subject to a BANKRUPTCY EVENT, all duties of LICENSOR and
all
rights (but not duties) of LICENSEE under this AGREEMENT shall immediately
terminate without the necessity of any action being taken either by LICENSOR
or
by LICENSEE. To secure the complete and timely payment and satisfaction of
all
LICENSEE’S royalty obligations under this AGREEMENT, LICENSEE hereby grants to
LICENSOR a security interest, effective immediately, in LICENSEE’S entire right,
title and interest in and to this AGREEMENT and to all inventories of LICENSED
PRODUCT(S) now or hereafter owned by LICENSEE. In addition to any rights
or
remedies provided for under this AGREEMENT, LICENSOR shall have all of the
rights and remedies of a secured party under the Uniform Commercial Code.
Upon
the request and at the sole expense of LICENSOR, LICENSEE shall execute any
and
all instruments or documents as shall be reasonably necessary to evidence
and
perfect such security interest in any jurisdiction.
5.6 Upon
termination of this AGREEMENT, LICENSEE shall, at LICENSOR’S request, return to
LICENSOR all CONFIDENTIAL INFORMATION fixed in any tangible medium of expression
as well as any data generated by LICENSEE during the term of this AGREEMENT
which will facilitate the development of the technology licensed
hereunder.
8
5.7 LICENSEE’S
obligation to pay royalties accrued under Article 3 hereof shall survive
termination of this AGREEMENT. In addition, the provisions of Articles 4,
5, 8,
9 and 10 shall survive such termination.
ARTICLE
6 - PATENT MAINTENANCE
6.1 LICENSOR
shall control and diligently prosecute and maintain PATENT RIGHTS. All costs
associated with the prosecution and maintenance of the PATENT RIGHTS shall
be
paid by the LICENSEE.
6.2 LICENSEE
and its sublicensees shall comply with all United States and foreign laws
with
respect to patent marking of LICENSED PRODUCT(S).
ARTICLE
7 - INFRINGEMENT AND LITIGATION
7.1 LICENSOR
and LICENSEE are responsible for notifying each other promptly of any
infringement of PATENT RIGHTS which may come to their attention. The parties
shall consult one another in a timely manner concerning any appropriate response
thereto.
7.2 In
any
action to enforce any of the PATENT RIGHTS, either party, at the request
and
expense of the other party, shall cooperate to the fullest extent reasonably
possible. This provision shall not be construed to require either party to
undertake any activities, including legal discovery, at the request of any
third
party except as may be required by lawful process of a court of competent
jurisdiction.
ARTICLE
8 - DISCLAIMER OF WARRANTY; INDEMNIFICATION
8.1 THE
PATENT RIGHTS, TECHNICAL INFORMATION, LICENSED PRODUCT(S) AND ALL OTHER
TECHNOLOGY LICENSED UNDER THIS AGREEMENT ARE PROVIDED ON AN “AS IS” BASIS AND NO
REPRESENTATIONS OR WARRANTIES, EXPRESS OR IMPLIED, ARE MADE WITH RESPECT
THERETO. BY WAY OF EXAMPLE BUT NOT OF LIMITATION, NO REPRESENTATIONS OR
WARRANTIES ARE MADE (i) OF COMMERCIAL UTILITY; (ii) OF MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE; OR (iii) THAT THE USE OF THE PATENT RIGHTS,
TECHNICAL INFORMATION, LICENSED PRODUCT(S) AND ALL TECHNOLOGY LICENSED UNDER
THIS AGREEMENT WILL NOT INFRINGE ANY PATENT, COPYRIGHT OR TRADEMARK OR OTHER
PROPRIETARY OR PROPERTY RIGHTS OF OTHERS. LICENSOR SHALL NOT BE LIABLE TO
LICENSEE, LICENSEE’S SUCCESSORS OR ASSIGNS OR ANY THIRD PARTY WITH RESPECT TO:
ANY CLAIM ARISING FROM THE USE OF THE PATENT RIGHTS, TECHNICAL INFORMATION,
LICENSED PRODUCT(S) AND ALL TECHNOLOGY LICENSED UNDER THIS AGREEMENT OR FROM
THE
MANUFACTURE, USE OR SALE OF LICENSED PRODUCT(S); OR ANY CLAIM FOR LOSS OF
PROFITS, LOSS OR INTERRUPTION OF BUSINESS, OR FOR INDIRECT, SPECIAL OR
CONSEQUENTIAL DAMAGES OF ANY KIND.
9
8.2 LICENSEE
will defend, indemnify and hold harmless LICENSOR, its trustees, officers,
agents and employees (individually, an “Indemnified Party”, and collectively,
the “Indemnified Parties”), from and against any and all liability, loss,
damage, action, claim or expense suffered or incurred by the Indemnified
Parties
(including attorney’s fees) (individually, a “Liability”, and collectively, the
“Liabilities”) that results from or arises out of: (a) the development, use,
manufacture, promotion, sale or other disposition, of any TECHNICAL INFORMATION,
PATENT RIGHTS or LICENSED PRODUCT(S) by LICENSEE, its assignees, sublicensees,
vendors or other third parties; (b) breach by LICENSEE of any covenant or
agreement contained in this AGREEMENT; and (c) the enforcement by an Indemnified
Party of its rights under this Section. Without limiting the foregoing, LICENSEE
will defend, indemnify and hold harmless the Indemnified Parties from and
against any Liabilities resulting from:
8.2.1 any
product liability or other claim of any kind related to the use by a third
party
of a LICENSED PRODUCT(S) that was manufactured, sold or otherwise disposed
by
LICENSEE, its assignees, sublicensees, vendors or other third
parties;
8.2.2 a
claim
by a third party that the TECHNICAL INFORMATION or PATENT RIGHTS or the design,
composition, manufacture, use, sale or other disposition of any LICENSED
PRODUCT(S) infringes or violates any patent, copyright, trademark or other
intellectual property rights of such third party; and
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8.3 The
Indemnified Party shall promptly notify LICENSEE of any claim or action giving
rise to Liabilities subject to the provisions of the foregoing Section. LICENSEE
shall have the right to defend any such claim or action, at its cost and
expense. LICENSEE shall not settle or compromise any such claim or action
in a
manner that imposes any restrictions or obligations on LICENSOR or grants
any
rights to the TECHNICAL INFORMATION, PATENT RIGHTS or PATENTED PRODUCT(S)
without LICENSOR’S prior written consent. If LICENSEE fails or declines to
assume the defense of any such claim or action within thirty (30) days after
notice thereof, LICENSOR may assume the defense of such claim or action for
the
account and at the risk of LICENSEE, and any Liabilities related thereto
shall
be conclusively deemed a liability of LICENSEE. LICENSEE shall pay promptly
to
the Indemnified Party any Liabilities to which the foregoing indemnity relates,
as incurred. The indemnification rights of LICENSOR or other Indemnified
Party
contained herein are in addition to all other rights which such Indemnified
Party may have at law or in equity or otherwise.
8.4 INSURANCE
8.4.1 LICENSEE
shall procure and maintain a policy or policies of comprehensive general
liability insurance, including broad form and contractual liability, in a
minimum amount of [ … ] dollars ($[ … ]) combined single limit per occurrence
and in the aggregate as respects personal injury, bodily injury and property
damage arising out of LICENSEE’S performance of this AGREEMENT.
8.4.2 The
policy or policies of insurance specified herein shall be issued by an insurance
carrier with an A.M. Best rating of “A” or better and shall name LICENSOR as an
additional insured with respect to LICENSEE’S performance of this AGREEMENT.
LICENSEE shall provide LICENSOR with certificates evidencing the insurance
coverage required herein and all subsequent renewals thereof. Such certificates
shall provide that LICENSEE’S insurance carrier(s) notify LICENSOR in writing at
least 30 days prior to cancellation or material change in coverage.
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8.4.3 LICENSOR
shall periodically review the adequacy of the minimum limits of liability
specified herein. Further, LICENSOR reserves the right to require LICENSEE
to
adjust such coverage limits accordingly. The specified minimum insurance
amounts
shall not constitute a limitation on LICENSEE’S obligation to indemnify LICENSOR
under this AGREEMENT.
ARTICLE
9 - USE OF LICENSOR’S NAME; INDEPENDENT CONTRACTOR
9.1 LICENSEE
and its employees and agents shall not use and LICENSEE shall not permit
its
sublicensees to use LICENSOR’S name, any adaptation thereof, any LICENSOR
logotype, trademark, service xxxx or slogan or the name xxxx or logotype
of any
LICENSOR representative or organization in any way without the prior, written
consent of LICENSOR.
9.2 Nothing
herein shall be deemed to establish a relationship of principal and agent
between LICENSOR and LICENSEE, nor any of their agents or employees for any
purpose whatsoever. This AGREEMENT shall not be construed as constituting
LICENSOR and LICENSEE as partners, or as creating any other form of legal
association or arrangement which would impose liability upon one party for
the
act or failure to act of the other party.
ARTICLE
10 - ADDITIONAL PROVISIONS
10.1 LICENSEE
shall comply with all prevailing laws, rules and regulations pertaining to
the
development, testing, manufacture, marketing, sale, use, import or export
of
product(s). Without limiting the foregoing, it is understood that this AGREEMENT
may be subject to United States laws and regulations controlling the export
of
technical data, computer software, laboratory prototypes and other commodities,
articles and information, including the Arms Export Control Act as amended
in
the Export Administration Act of 1979, and that the parties obligations
hereunder are contingent upon compliance with applicable United States export
laws and regulations. The transfer of certain technical data and commodities
may
require a license from the cognizant agency of the United States Government
and/or written assurances by LICENSEE that LICENSEE shall not export data
or
commodities to certain foreign countries without prior approval of such agency.
LICENSOR neither represents that a license is not required nor that, if
required, it will issue.
12
10.2 This
AGREEMENT and the rights and duties appertaining thereto may not be assigned
by
LICENSEE without first obtaining the express written consent of LICENSOR.
Any
such purported assignment, without the written consent of LICENSOR, shall
be
null and of no effect.
10.3 Notices,
payments, statements, reports and other communications under this AGREEMENT
shall be in writing and shall be deemed to have been received as of the date
dispatched if sent by public overnight courier (e.g., Federal Express) and
addressed as follows:
If
for
LICENSOR:
Technology
Innovations, LLC
150
Xxxxxx Xxxxxx Drive, Suite 000
Xxxx
Xxxxxxxxx, Xxx Xxxx 00000
Attn: Xxxxxxx
X. Xxxxxx, Chief Executive Officer
If
for
LICENSEE:
NaturalNano,
Inc.
150
Xxxxxx Xxxxxx Drive, Suite 000
Xxxx
Xxxxxxxxx, Xxx Xxxx 00000
Attn: Xxxxxxx
Xxxxxxxxxx, President
Either
party may change its official address upon written notice to the other
party.
10.4 This
AGREEMENT shall be construed and governed in accordance with the laws of
the
State of New York, without giving effect to conflict of law
provisions.
10.5 Any
modification of this AGREEMENT shall be in writing and signed by an authorized
representative of each party.
10.6 In
the
event that a party to this AGREEMENT perceives the existence of a dispute
with
the other party concerning any right or duty provided for herein, the parties
shall, as soon as practicable, confer in an attempt to resolve the dispute.
If
the parties are unable to resolve such dispute amicably, then the parties
hereby
submit to the exclusive jurisdiction of and venue in the courts located in
the
State of New York with respect to any and all disputes concerning the subject
of
this AGREEMENT.
10.7 A
waiver
by either party of a breach or violation of any provision of this AGREEMENT
will
not constitute or be construed as a waiver of any subsequent breach or violation
of that provision or as a waiver of any breach or violation of any other
provision of this AGREEMENT.
13
10.8 Any
of
the provisions of this AGREEMENT which are determined to be invalid or
unenforceable in any jurisdiction shall be ineffective to the extent of such
invalidity or unenforceability in such jurisdiction, without rendering invalid
or unenforceable the remaining provisions hereof or affecting the validity
or
unenforceability of any of the terms of this AGREEMENT in any other
jurisdiction.
10.9 The
headings and captions used in this AGREEMENT are for convenience of reference
only and shall not affect its construction or interpretation.
10.10 Nothing
in this AGREEMENT, express or implied, is intended to confer on any person,
other than the parties hereto or their permitted assigns, any benefits, rights
or remedies.
14
IN
WITNESS WHEREOF the parties, intending to be legally bound, have caused this
AGREEMENT to be executed by their duly authorized representatives.
LICENSOR:
TECHNOLOGY
INNOVATIONS, LLC
By:______________________________________________
Xxxxxxx
X. Xxxxxx, CEO
LICENSEE:
NATURALNANO,
INC.
By:______________________________________________
Xxxxxxx
Xxxxxxxxxx, President
15
ATTACHMENT
1
Intellectual
Property List
Technology
to be licensed to NaturalNano, Inc. from Technology Innovations,
LLC
|
1.
|
Provisional
Patent application [ … ] and any subsequent patents including
continuations-in-part, titled: “[ … ]” filing date: October 7,
2004.
|
|
2.
|
Continuation-in-part
of Provisional Patent application [ … ] known also as [ … ] and now
referred to as [ … ] and titled: “[ … ]” with filing date of: April 4,
2005.
|
|
3.
|
PCT
known as [ … ] titled: “[ … ]” with filing date of April 5,
2005.
|
|
4.
|
Patent
application known as [ … ] with deposit date of January 25, 2005 titled:
“[ … ]”
|
16
