1
EXHIBIT 10.10
PATENT LICENCE AGREEMENT
THIS AGREEMENT is dated the 5 day of July 1999 BETWEEN FINGLAS
TECHNOLOGIES LIMITED whose registered office is situated at McKee Avenue,
Finglas Dublin 11 (hereinafter "Finglas" which expression shall include its
successors, administrators and permitted assigns) a Company organized and
existing under the Laws of Ireland of the One Part AND CENTURION INTERNATIONAL,
LIMITED having its registered office at 2A Alton Business Park, Gatehouse Way,
Aylesbury, Buckinghamshire, HP 19 3XU, United Kingdom (hereinafter "Licensee"
which expression shall include its successors, administrators and permitted
assigns) a Company organized and existing under the Laws of England and Wales of
the Other Part.
WHEREAS:
A. Finglas is the owner and proprietor of certain registered Patents
specified in the First Schedule hereto.
B. Finglas is willing to grant to the Licensee, and the Licensee is
willing to accept, a Licence to use the Patents in accordance with the
provisions of this Agreement.
NOW, THEREFORE, in consideration for the mutual payments and provisions herein
contained, this Agreement witnesseth as follows:
1. DEFINITIONS
In this Agreement the following words shall have the following meanings:
"COMMENCEMENT DATE"
"IMPROVEMENTS" Any development to the inventions claimed in
the Patents which comprise an original
inventive step.
"INVENTIONS" The inventions claimed in the Patents.
"LICENSED PRODUCTS" Any and all products that are manufactured
by the Licensee or its sub Licensees and are
within any of the claims of the Patents.
"PARTIES" Finglas and the Licensee and "Party" shall
mean either of them.
"PATENTS" Any and all of the Patents and Patent
Applications referred to in the attached
Schedule including any continuations,
continuations in part, extensions,
re-issues, divisions and including any
patents, supplementary protection
certificates
2
and similar rights that are based on or
derive priority from the foregoing.
2. GRANT
2.1 LICENCE
Finglas hereby grants to the Licensee, subject to the provisions of
this Agreement, a Licence to use the Patents with the right to
sub-licence subject to Clause 2.3 below, to import, develop,
manufacture, have manufactured, use and sell Licensed Products or to
use the Inventions in any Licensed Products in any part of the world.
2.2 FORMAL LICENCES
The Parties shall execute such formal Licences as may be necessary or
appropriate for registration with Patent Offices and other relevant
authorities.
2.3 SUB LICENSING
The Licensee shall be entitled to grant sub licences of its rights
under this Agreement to any person without prejudice to the continuing
obligations of the Licensee; and provided that within 30 days of the
grant of any sub licence, the Licensee shall provide to Finglas a true
copy of it and that the sub licence shall include obligations on the
sub licensee which are equivalent to the obligations on the Licensee
under this Agreement.
3. ROYALTY PAYMENTS
3.1 In respect of the period up to and including the 31st December 1999,
the Licensee shall pay to Finglas royalties as follows:
(a) On the Commencement Date, the sum of IR pound sterling 50,000.
(b) Within 30 days of the Commencement Date the sum of IR pound
sterling 50,000.
3.2 In respect of the period 1st January 2000 up to and including 31st
December 2000, the Licensee shall pay to Finglas a royalty of IR pound
sterling 50,000 on the first working day after the 1st January 2000.
3.3 In respect of the period from 1st January 2001 and thereafter until the
expiration of this agreement as set forth in Clause 6.1, the Licensee
shall pay to Finglas royalties of IR pound sterling 1 per annum on the
first working day of each year.
2
3
3.4 All sums due under this Agreement:
(a) are exclusive of Value Added Tax which, where applicable,
would be paid by the Licensee to Finglas in addition;
(b) shall be paid in Irish Punts;
(c) shall be paid without deduction of Income Tax or other taxes,
charges or duties that may be imposed, except and insofar as
the Licensee is required to deduct the same to comply with
applicable laws despite all reasonable cooperation on the part
of the Licensee;
(d) shall be made by the due date failing which Finglas may charge
interest on any outstanding amount on a daily basis at a rate
equivalent to 4% above the Midland Bank base lending rate then
in force.
3.5 The Licensee agrees to cooperate with Finglas at Finglas' reasonable
cost to procure permission from the United Kingdom Inland Revenue
authorities to have the royalties paid gross without deduction of tax.
4. INFRINGEMENT QF THE PATENTS
The Parties shall inform each other promptly if either of them becomes
aware of any infringement or potential infringement of any of the
Patents.
5. WARRANTIES AND LIABILITY
5.1 Finglas warrants, represents and undertakes as follows:
(a) Finglas has not previously granted any Licences to use the
Patents to any third party.
(b) Finglas shall not grant any Licences to use the Patents to any
third party for the duration of this Agreement without the
consent of the Licensee.
(c) The Patents are not subject to any encumbrance, mortgage,
charge, (fixed or floating), pledge, lien, hypothecation,
trust, right of set-off or any third party security right or
interest (legal or equitable), including right of assignment
by way of security, reservation of title or any other security
interest of any kind.
(d) Finglas shall not transfer the Patents to any third party
(other than the Licensee, its holding company or any
subsidiary of the Licensee or its holding company) for the
duration of this Agreement.
3
4
5.1.1 NO OTHER WARRANTIES
Each of the Licensee and Finglas acknowledges that in entering into
this Agreement it does not do so in reliance on any representation,
warranty or other provision except as expressly provided in this
Agreement and any conditions, warranties or other terms implied by
statute or common law are excluded from this Agreement to the fullest
extent permitted by law.
5.1.2 Without limiting the scope of clause 5.1.2. nothing in this Agreement
or the Licence granted hereunder shall be construed:
(a) as a representation or warranty that the Patents or any of
them are valid or subsisting or (in the case of patent
applications) will proceed to grant save that Finglas will not
withdraw any of the Patents which comprise patent applications
without prior consent of the Licensee;
(b) as a representation or warranty that the activities licensed
hereunder or any of them are not an infringement of any
intellectual property rights of any third parties;
(c) as a representation or warranty that the inventions or any
other information communicated by Finglas to the Licensee
under or in connection with this Agreement will produce
Licensed Products of satisfactory quality or fit for the
purpose for which the Licensee intended;
(d) as imposing any obligation on Finglas to bring or prosecute
actions or proceedings against third parties for infringement
or to defend any action or proceedings for revocation of any
of the Patents save that Finglas shall provide reasonable
cooperation and assistance to the Licensee, at Licensee's cost
in respect of any such actions or proceedings.
5.2 INDEMNITY
The Licensee shall indemnify Finglas against any loss, damages, costs
or expenses which are awarded against or incurred by Finglas as a
result of any claim or threatened claim concerning the use by the
Licensee or any of its sub Licensees of the Patents or otherwise in
connection with the manufacture, use or sale of, or any other dealing
in, any of the Licensed Products by Licensee or any of its sub
Licensees.
5.3 LIABILITY UNDER THIS AGREEMENT
To the extent permitted by law, the maximum limit of either party's
liability under this Agreement whether in contract, tort, negligence,
breach of statutory duty or otherwise
4
5
shall be IR pound sterling 50,000 in aggregate. The parties agree no
claim shall be brought against thE other under this Agreement for any
amount less than IR pound sterling 10,000 (save in respect of payment
obligations of the Licensee).
5.4 Notwithstanding any other provision of this Agreement, Finglas shall
not be liable to Licensee in contract, tort, negligence, breach of
statutory duty or otherwise for any loss, damage, costs or expenses of
any nature whatsoever incurred or suffered by Licensee or its
affiliates of an indirect or consequential nature including and without
limitation any economic loss or other loss of turnover, profits,
business or goodwill.
6. DURATION AND TERMINATION
6.1 COMMENCEMENT AND TERMINATION BY EXPIRY
This Agreement and the Licences granted hereunder shall come into
effect on the Commencement Date, shall continue in force until the date
on which all the Patents have expired or been revoked without a right
of further appeal, until the Parties agree to terminate this Agreement
or until Finglas no longer owns the Patents.
7. GENERAL
7.1 AMENDMENT
This Agreement may only be amended in writing signed by duly authorized
representatives of Finglas and the Licensee.
7.2 NO AGENCY
Neither Party shall act or describe itself as the Agent of the other
nor shall it make or represent that it has authority to make any
commitments on the other's behalf.
7.3 ASSIGNMENT AND THIRD PARTY RIGHTS
7.3.1 Subject to Clause 7.3.2 below, neither Party shall assign, mortgage,
charge or otherwise transfer any rights or obligations under this
Agreement nor any of the Patents or rights under the Patents without
the prior written consent of the other Party save to the other Party or
any United Kingdom incorporated subsidiary of either Party or a United
Kingdom incorporated subsidiary of either Party's holding company.
7.3.2 Either Party may assign all its rights and obligations under this
Agreement together with its rights in respect of the Patents to any
Company to which it transfers all or part of its assets or business, or
to any United Kingdom incorporated subsidiary of the Party conducting
the transfer or a United Kingdom incorporated subsidiary company of
that
5
6
Party's holding company provided that the Assignee undertakes to the
reasonable satisfaction of the other Party to be bound by and perform
the obligations of the Assignor under this Agreement.
7.4 INTERPRETATION
In this Agreement the headings are used for convenience only and shall
not affect its interpretation.
7.5 LAW AND JURISDICTION
The validity, construction and performance of this Agreement shall be
governed by the Law of the Republic of Ireland and shall be subject to
the exclusive jurisdiction of the Irish Courts.
7.6 SURVIVAL
This agreement shall be binding upon and endure for the benefit of the
successors, administrators and permitted assigns of the Parties.
7.7 ARBITRATION PROCEDURE
(a) Except as otherwise expressly provided herein, all claims or
controversies between the parties (or their permitted
assignees) arising out of or related to this Agreement shall
be finally determined by arbitration in accordance with the
rules in effect from time to time of the Chartered Institute
of Arbitrators in Ireland by one Arbitrator (selected in
default of Agreement between the parties by the President for
the time being of the Law Society of Ireland) who is
knowledgeable concerning the Law governing the dispute and
such Arbitration shall constitute an Arbitration for the
purposes of the Arbitration Acts 1954 to 1980.
(b) The arbitration shall take place in Dublin, Ireland and the
Language of the arbitration shall be English.
(c) The arbitrator shall be empowered to permit reasonable
discovery and shall have the authority to award all forms of
relief determined to be just and equitable. Any arbitral award
rendered pursuant to this clause shall be final and binding on
Buyer and Seller and may be enforced in any court of competent
jurisdiction. For this and any other purpose, each of Buyer
and Seller (i) waives any bond, surety or other security that
might be required of any other party with respect thereto, and
(ii) agrees that any part may make service on any other Party
by sending or delivering a copy of the process to such Party
at the address and in the manner
6
7
provided for the giving of notices in Section 7.9 below or in
any other manner permitted by law.
(d) In all instances of arbitration, the costs of arbitration
shall be borne by the unsuccessful party, except in the event
that determination of success is not clear- cut, in which case
the costs of arbitration shall be allocated by the arbitrator,
having due regard for the nature of the dispute, the
contentions of the parties and his or her decision on the
merits of the dispute.
7.8 NOTICES
All notices, demands, and other communications given or delivered under
this Agreement will be in writing and will be deemed to have been given
when personally delivered, mailed by first class mail or recorded post
or delivered by express courier service or telecopied. Notices, demands
and communications will, unless another address is specified in
writing, be sent to the address indicated above in the case of Licensee
for the attention of Gary Kuck and in the case of Finglas for the
attention of Peter Crowley.
SCHEDULE I
PRODUCT TYPE JURISDICTION PATENT NO. APPLICATION NO.
Plated Helix (II) UK N/A C766.00/S
Top Loading Cylinder Ireland S66918 (S950767)
* * * * *
7
8
IN WITNESS WHEREOF, the Parties have caused this Agreement to be
executed by their duly authorized representatives the day and year first above
written.
SIGNED for and on behalf of
FINGLAS TECHNOLOGIES LIMITED /s/ James A. Boyle
by
in the presence of: /s/ Michael G. McGinley
SIGNED for and on behalf of /s/ Gary L. Kuck
LICENSEE by
in the presence of: /s/ V. Stoiljkovic
8