Exhibit 10(v) Amended BORS Lift License Agreement
THE BALANCED OIL RECOVERY SYSTEM LIFT LICENSE AGREEMENT
THIS AGREEMENT, effective this 19th day of June 1998, made I between
Lift-Pump, L. L. C., an Oklahoma Limited Liability Company located at I 104
South Missouri, Suite 200. Claremore, Rogers County, Oklahoma, 74017 ("LLC") by
its Manager Mack Greever;
And
Toups Technology Licensing Incorporated, Suite 105, 7887 Bryan Dairy I
Road, Largo, Florida 33777, (" TTL"), by its President and Chief Executive
Officer, Leon H, Toups;
WlTNESSETH THAT
WHEREAS Gerold Allen, one of the principals of the LLC has developed a process
of producing oil with minimal water production. The principals of the LLC in the
past have been investigating a pumping device for oil wells to complement the
production process and together with TTL, are now improving a pumping device for
oil wells that is referred to as the Balanced Oil Recovery System Lift ("BORS
Lift") and desires to grant an exclusive, world-wide license to commercialize
the balanced oil recovery system and the BORS Lift; AND
WHEREAS TTL is engaged in the business of developing market-ready technological
products and services protected by intellectual property rights, especially
patents, by application of a systems approach to identifying, funding,
developing, and marketing technological products and services; AND
WHEREAS LLC and TTL are jointly interested in undertaking together a joint
effort at designing, manufacturing, selling or otherwise commercializing BORS
Lift, as by a License Agreement that provides for the LLC to introduce TTL to
the technology within the limits of this Agreement and to authorize TTL to make
and to commercialize BORS Lift equipment at an agreed royalty, so long as both
parties perform in accordance with this Agreement;
NOW, THEREFORE, LLC and TTL, intending to be legally bound, agree to
undertake designing, manufacturing, and selling or otherwise I commercializing
THE BORS LlFT upon the following terms and conditions:
1. Definitions
a. "Licensed Know-how" means unpatented proprietary technical, professional, or
commercial information disclosed to TTL by LLC. and useful in designing. making.
or using Licensed i Products or performing Licensed Services.
b. "Licensed Patent" means any patent (or disclosed patent application) licensed
to TTL herein and containing a claim defining the composition, design, machine,
process, manufacturing, structure, operation, or use THE BORS LlFT subject
matter, insofar as owned or licensable by LLC and so licensed to TTL in or for
the License Territory.
c. "Licensed Product" means by-product or related composition whose production,
structure, or use embodies any Licensed Know-how, is defined by a claim of a
Licensed Patent or disclosed patent application and/or would infringe a Licensed
Patent in the absence of this License Agreement, or displays or is
commercialized by a Licensed Trademark.
d. "Licensed Service" means any designing, making, specifying. or any
instruction, leasing, or performance of other services relating to any License
Product for, to, or with a customer or other party, whether for compensation or
not.
e. "Licensed Specification" means any requirement or standard identified by LLC
to TTL relating to composition, design, manufacturing method, structure,
workmanship and/or resulting appearance, form, identity, quality, or
presentation of a Licensed Product or a Licensed System,
f. "Licensed System" means any apparatus, assembly, device, or structure for
producing or using a Licensed Product, with or for use with (or without) other
accessories.
g. "Licensed Trademark" Balanced Oil Recovery System Lift, BORS Lift or other
word and/or design, used with or without any other word and/or design, in or as
a brand name for Licensed Products or Licensed Services or Licensed Systems.
h. "improvement" means any substantial change in any foregoing o~ defined item
(a to g) during this Agreement, whether made by ~ LLC or by TTL.
I. "License Term" means the duration of this Agreement, as follows: (i) an
Initial Period, beginning on the aforesaid effective date with a Startup Time
ending on exactly twelve months thereafter, and continuing, if TTL so elects, to
the end of the' year 2001; and (ii) further continuing (at TTL's advance notice
of election to do so) for one or more successive Renewal Periods of three (3)
calendar years, noted further below.
j. "License Territory" means worldwide.
k. "Startup Time" means the time period from the beginning of the Initial Period
of this Agreement on the identified effective date. to end exactly twelve months
thereafter.
License and Sublicenses
a. LLC hereby grants to TTL, for the License Term only, an indivisible,
non-assignable right and license to make, use, lease, sell, and otherwise
practice commercially the defined Licensed subject matter. TTL recognizes and
agrees that the LLC will analyze all wells that are to receive BORS Lifts and
will determine the proper setting for each application and such information as
may be required to install the BORS Lifts. Notwithstanding anything to the
contrary contained in this paragraph 2.a or otherwise in this Agreement, TTL
recognizes and agrees that the LLC and its principals and employees shall not be
required to disclose to TTL any data, information, specifications, formulas or
know how of the LLC or its principals or employees used to obtain balanced
production of oil with minimal water production. Both the LLC and ~TTL recognize
and agree that the Licensed Know-how and the knowledge to obtain balanced oil
production with minimal water production is and shall remain the property of the
LLC and its principals.
b. So long as TTL is in good standing under this Agreement, this grant is to be
exclusive, meaning that LLC will not grant any third party a similar license in
the License Territory.
c. TTL shall have the right to apply any Licensed Trademark to Licensed Products
and other components approved by LLC and sold by TTL for construction of
Licensed Systems, but TTL. shall use Licensed Trademarks only in accordance with
acceptable trademark practice and subject to the provisions of this Agreement.
d. TTL customers will have an implied sub license to assemble Licensed Products
into Licensed Systems, with or without other components.
e. TTL will not license, sell or market any other product or technology under
the "BORS" name or trademark without the prior written consent of the LLC.
License Term
a. The Initial Period begins on the effective date of this Agreement
will extend at least to the end of the Startup Time, when it will terminate if
TTL fails to notify LLC in writing at least thirty (30) days theretofore that
TTL elects to continue for the rest of the Initial Period. Such notice would
extend the Initial Period to end on the anniversary of the License Agreement in
the year 2001.
b. Unless sooner terminated, the License Term may continue for a succeeding
Renewal Period, from the end of the Initial Period or of any Renewal Period, at
the election of TTL if then in good standing; such election to be made by TTL
giving written notice to LLC within the last calendar quarter of any Period, of
intention to continue this Agreement for a succeeding Renewal Period, beginning
on the first day of January of the next year and continuing for three (3) more
years.
c. The License Term shall continue from Period to Period so long as TTL timely
renews, or until LLC gives TTL notice that TTL is no longer in good standing
because of a specified breach or default of one or more of TTL's obligations
under this Agreement; TTL shall have the right to remedy any such breach or
default within forty-five (45) days thereafter to return to good standing as to
such breach or default. Likewise, if LLC should be in breach or default of one
or more of LLC's obligations under this Agreement, LLC shall have the right to
remedy any such breach or default within forty-five (45) days to return to good
standing as to such breach or default.
d. Obligations of this Agreement that are indicated as surviving beyond the end
of a Period or of the License Term shall continue for such time period as may be
lawful, despite notice by either party to the other of an election to
discontinue either party's participation in or under this Agreement.
e. The Term of this Agreement, if not sooner ended by the act of a party or the
operation of law, shall end upon expiration of the last to expire of the
Licensed Patents, if any, except as TTL is using a THE BORS LlFT trademark, or
otherwise as noted below.
4. Confidentiality
a. To the extent that TTL receives Licensed Know-how, or either party becomes
aware of other proprietary information from the other party via their
relationship pursuant to this Agreement, each recipient of such information will
hold it in confidence so long as the other party effectively treats it as
confidential, except as specific information becomes public knowledge otherwise
than by or from TTL
b. The foregoing obligation to keep proprietary information confidential and to
safeguard it within the organization of a party will survive any termination of
this Agreement to the extent that such information is not common trade
knowledge.
c. TTL shall require all of its employees to sign a confidentiality and
non-disclosure agreement that will prevent its employees from disclosing any
information regarding the Licensed Knowhow and any information learned by any
employee by or through contact with the LLC or its principals or employees.
d. ~TL shall require all of its employees to disclose to ~TL and the LLC any
improvements to or invention that arises from or is related to the Licensed
Know-how or the BORS Lifts.
5. Startup Time
a. TTL will provide facilities, equipment, and resources for the BORS LlFT
design, development, and marketing purposes during the Startup Time in order to
enable the equipment and I~ resultant products to be analyzed, tested, and (as
soon as to be demonstrated to prospective customers, and other interested
persons. The facilities, equipment and resources set forth above shall be
provided in a timely fashion and in sufficient amounts to accomplish the purpose
of this Agreement and upon consultation and agreement with the LLC.
b. LLC will provide THE BORS LlFT Licensed Know-how to TTL from time to time as
may be appropriate and will participate regularly as a technical consultant upon
THE BORS LIFT~ design, development, testing, and marketing, as TTL deems
desirable.
feasible) investors.
6. Royalties
a. An advance first year Running Royalty payment of eighty thousand and no1100
dollars ($80,000) shall be paid to the LLC in four equal installments of twenty
thousand and no1100 dollars ($20.000) each, with the first payment being made
upon the execution of this agreement. The second payment shall be made no later
than 90 days thereafter; the third payment shall be made no later than six
months thereafter and the fourth and final payment shall be made no later than
nine-months thereafter. All advance Running Royalty payments !hereafter be
applied toward any amounts due the pursuant to this License Agreement
b. The Running Royalty rate for Licensed Product, Licensed Services, and
Licensed Systems is Six Percent (6%) of all that TTL receives in money or other
thing of value for leasing, servicing, selling, or otherwise commercializing the
same.
c. Running Royalty accrues upon invoice, lease, sale, or service by TTL but
shall not be payable until thirty (30) days thereafter or upon TTL's receipt of
payment therefor (whichever occurs first), and shall be without any deduction
from TTL's actual total revenue therefrom, except for customers' related costs
(such as insurance, shipping, or taxes) and then only if so itemized on TTL's
invoices to them.
d. Running Royalty payable for any given month becomes due at the end of the
then current calendar quarter, and shall be paid by the 15th of the next month
following said calendar quarter.
e. As a part of LLC's Royalties hereunder, upon signing this Agreement,TTL shall
issue to LLC 500,000 of its restricted $.001 par value Common Shares. Said
Shares shall be fully vested upon receipt. These Shares shall be considered to
be a guaranteed performance amount for the Startup Period (19891999), but shall
not be applied against the Running Royalty:
Payments and Reports
a. TTL will report to LLC, all Running Royalty for each calendar quarter of the
License Term during the first month of the next ensuing calendar quarter and
will include with each such report full payment of royalty due for (and reported
for) the preceding quarter's operations.
b. Quarterly and annual royalty reports will be signed and be certified as
accurate and complete by an authorized officer of TTL.
c. TTL will keep accurate and complete records of all business done pursuant to
this Agreement and will make such records available to LLC, no more than two (2)
persons at once-for inspection during regular business hours, upon at least
three (3) business days' advance notice, to determine Royalties accrued and paid
or unpaid, and any other information due hereunder.
d. LLC may cause an audit to be made of the applicable records in order to
verify statement for Running Royalties made hereunder Any audits shall be
conducted by an independent certified public accountant, acceptable to both
parties, and shall be conducted during regular business hours at TTL's offices.
e. LLC shall bear the expenses of any such audit unless such audit reveals that
the Royalties paid by TTL under this Agreement for the Period subject to the
audit are less than ninety-five percent (95%) of the amount owed by TTL for such
period. In such event, the costs of the audit shall be borne by TTL, in addition
and without limitation to any right of remedy LLC may have. TTL agrees to pay
the balance of such royalties due LLC within forty-five (45) days after written
notice from LLC of TTL's understatement of Royalties due. Furthermore. TTL shall
pay interest on all understated Royalties at a rate of 1.5% per month or lesser
amount as mandated by law, computed from the day on which said Royalties were
due and owing to
f. Refusal by TTL to report or to pay Royalty, or to maintain or make available
records of business done hereunder, will forfeit TTL's good standing under this
Agreement, if not remedied within thirty (30) days, unless limited to nonpayment
of money, which may be remedied within forty-five (45) days.
8. improvements
a. Any new composition, design, product, or service conducive to third party
competition with Licensed Product or Licensed Services or Licensed Systems,
invented or otherwise coming under the control of either party during the
License Term, is deemed an "Improvement" and such party will disclose the same
to the other party promptly and in enough detail to enable the LLC to elect
whether to have such Improvement included hereunder.
b. As to any such Improvement by either party, the LLC may elect to have such
Improvement included hereunder, within three (3) months after first knowledge
thereof, without change in Royalty, by promptly notifying ~TL of an election to
do so.
c In the event ~L is the originating party of an improvement that appears
possibly patentable after a competent prior art search, TTL will disclose such
improvement to the LLC and the LLC will file and prosecute a patent application
thereon in the name of the LLC as the inventor and originating party, and may
discontinue prosecuting it or maintaining any resulting patent.
d. If the LLC elects to have in improvement included under this Agreement, the
LLC will pay the expense of undertaking to patent it with the License Territory
9. Infringement Rights
a. TTL acknowledges that the exclusive ownership of the Licensed Know-How, the
Licensed Patents and the Licensed Trademarks and any improvements thereof or
thereto during the term of this Agreement and any extensions or renewals thereof
is and shall remain in the LLC and not at all in the 7TL.
b. In the event that TTL's commercialization of any Licensed Product, Licensed
Service, or Licensed System is accused of infringing a proprietary right of any
third party, the parties will cooperate in attempting to avoid such infringement
or to prove lack of infringement, and so long as TTL's license hereunder is
exclusive to the extent set forth above, ~TL will have a right, but not an
obligation, to defend or assist in defending against any infringement action
brought by a third party, and shall have also the obligation to pay one-half
(1/2) of the costs of doing so, except as either party may voluntarily pay more
thereof incidental to participation therein.
c. Neither party will be liable to the other party if unable or unwilling to
continue this Agreement because of such infringement of third-party rights, and
in that event TTL will cease commercializing Licensed Products, Licensed
Services, and Licensed Systems, and TTL will relinquish its rights hereunder in
that event, and thereby terminate its Royalty and attendant obligations to LLC.
d. In the event that the activities of any third party are asserted (or other-
wise appear) to infringe an intellectual property right licensed to TTL
hereunder, the parties will cooperate in attempting to ascertain and to abate
such infringement. So long as TTL's license hereunder is exclusive to the extent
set forth above, TTL will have a prior right, but not an obligation, to abate
such infringement, whether by litigation or otherwise, subject to paying all the
costs of doing so other than such costs or expenses as LLC may voluntarily pay
incidental thereto or to participation therein. Any moneys recovered from a
third-party infringer will be retained by the parties, pro-rated to their
expenditures after determining what portion of moneys recovered are due LLC as
part of his Running Royalty, whose action(s) had such result.
e. If third-party infringement is not abated, ~TL may elect to continue as a
non-exclusive licensee under this Agreement as its sole remedy, or alternatively
TTL may discontinue its license and cease royalty payments as its sole remedy.
10. Assurances
a. LLC assures TTL of its origination of the inventions but LLC cannot guarantee
TTL of LLC's invention priority.
b. LLC warrants ownership of the Licensed Products and Licensed Services, in the
specific sense that LLC has no reason to believe that any third party has any
right to prevent 1 either LLC or TTL from practicing any Licensed Invention, or
d from using any Licensed Trademark, as provided in this Agreement, but LLC
cannot and does not warrant such practice or usage as non-infringing of
third-party rights.
c. LLC will instruct and/or assist TTL's personnel in design, manufacturing,
quality standards, testing, distribution, i marketing, and sale, as well as
proper marking, of Licensed Product and Licensed Systems, and LLC will provide
Licensed Know-how in doing so, as may be applicable.
d. LLC will have no liability whatever to TTL for TTL's actions or inactions
under this Agreement, and TTL will save LLC harmless against any liability to
third parties whether based upon agency, contract, negligence, product
liability, or other basis-for any claim based on action or inaction of TTL
relating to Licensed Products, Services, or Systems.
e. The LLC has disclosed that a prior license has been granted to New Lift, Inc.
who in turn has granted one sub-license. However, the LLC acknowledges that
without the know-how, which is possessed solely by the LLC, New Lift and/or its
licensees would have difficulty and be unable to effectuate a balanced oil
recovery. Further, the LLC states that its current license agreement with New
Lift, Inc., does not require that the LLC divulge any such information.
11. Product Marking
a. ~TL will mark on Licensed Products (or containers) each patent number
applicable thereto upon being advised thereof by LLC.
b. TTL will display a Licensed Trademark (if elected) on all Licensed Product
and in advertising copy, brochures, and publications by or for TTL about
Licensed Product. ~TL will not use any Licensed Trademark in or as a trade name
(i) a not elected, or (ii) if elected, after ~TL discontinues (or other
termination of) TTL's license under this Agreement.
c. TTL will provide access for LLC, at agreed times, to all Licensed Product to
enable LLC to ascertain that the nature and quality thereof meet standards
required by trademark law of products bearing a Licensed Trademark.
d. TTL will not make any material change in materials, production methods, or
otherwise that might affect the nature or quality of any THE BORS LlFT product
or service, without advance notice to LLC and ample opportunity for LLC to
confirm compliance of such product or service with applicable quality
standards-or not.
e. TTL will provide representative specimens of each Licensed Product or
Licensed Service or Licensed System label and advertising copy, and of each
product or service brochure, before publication thereof, to enable LLC to assure
that they meet accepted trademark usage standards.
f. TTL will not manufacture, sell, or distribute any Licensed Product that does
not meet LLC's quality standards, nor distribute any product literature that
does not meet accepted trademark usage standards.
g. If TTL elects to use one or more Licensed Trademark(s), TTL will display one
thereof on each container of Licensed Product made by or for it, and in all
Licensed Product advertising copy, product brochures, press releases, and
publications by or for TTL about Licensed Product plus the generic name of the
goods, together with occasional notice that such Trademark is the property of
LLC.
12. Termination
a. During the last calendar quarter of the initial or any Renewal Period, TTL
may notify LLC of TTL's election to continue the Agreement for a Renewal Period,
to begin at the end of the then current Period; or, by failing to do so, TTL
will terminate its rights under this Agreement, whereupon TTL will be obligated
to discontinue its participation in licensed activities by the end of the
existing Period, except as the parties otherwise agree in a signed written
agreement. In the event of a termination of this Agreement for any reason, TL
shall immediately return to the LLC all records, orders, works-in-progress,
blueprints, drawings, plans and specifications, sales records, billing
information and records and any other data, however, captured whether by
electronic means or on paper, documents or information which, in the opinion of
the LLC, is necessary for the continuation of the manufacturing and sales of the
BORS lift and use of licensed know-how.
b. Upon termination, ~TL will refrain from exercising thereafter any right it
had by license hereunder, such as practicing the of any previously Licensed
Patent, or using a Licensed Trademark or confusingly similar expression or using
any Licensed Know-How.
c. Whenever 7TL is not in good standing hereunder, LLC may render TTL's license
wholly non-exclusive, or if it is already non-exclusive for a prior breach or
default LLC may terminate TTL's rights hereunder, in the absence of specific
curative provisions for TTL's breach or default, or if TTL has had an
opportunity to comply such a curative provisions and failed or refused to do so.
d. If either party becomes, or would become, disabled-as by the other party's
choosing, or being subjected to, an ad or a procedure for relief of debtors from
enforcing compliance with a given executor obligation of the other party
hereunder (e.g., compliance with standards, action with regard to infringers,
offer of improvements) the thus disabled party may deem this Agreement and the
license and other rights under this Agreement terminated.
e. No inaction or overlooking by LLC of any condition or provision of this
Agreement or of any breach or default thereof by ~TL shall be deemed to imply or
to constitute a future waiver of any similar breach or default of the same or
other conditional provision.
f. LLC reserves the right to cancel this Agreement if at any time and for any
reason, the ownership or effective control of TTL is altered. This provision
includes any tender offer for the purchase of twenty-five percent (25%) or more
of the common stock of 7TL by any party. In such an event, LLC may terminate
this Agreement immediately and TTL shall promptly return to the LLC all records,
orders, works-in-progress, blueprints, drawings, plans and specifications, sales
records, billing information and records and any other data, documents or
information which, in the opinion of The LLC, is necessary for the continuation
of the manufacturing and sales of the BORS lift and use of licensed know-how.
13. Miscellaneous
a. If any one or more provision(s) or effect(s) of this Agreement should prove
to be invalid or unenforceable, and the Agreement be otherwise valid and
enforceable, the invalid or unenforceable provision or portion thereof will be
severed, and the remainder of the Agreement be and remain valid and enforceable
to the fullest extent permitted by applicable law.
b. This License Agreement is made for the benefit of the parties, their heirs,
successors, and assigns, and any other person or legal entity named in any
provision hereof, and not made to give any unnamed person or legal entity any
right of action whatever.
c. Each statement made in this Agreement is deemed material, and each party is
entitled to rely, and deemed to have relied, upon the truth and correctness
thereof in entering into this Agreement.
d. Each party acknowledges that he has received advice of independent counsel of
choice as to the inducements, provisions, and terms of this Agreement, and their
effect. whereupon entering into this License Agreement is each party's free and
independent act.
e. This Agreement is to be governed by Federal law to whatever extent a
proprietary right granted by the United States is involved, and otherwise by
Florida law, except as activities of a party in any other State render that
other State's law applicable.
f. In the event that any action or proceeding is brought to enforce any of the
terms and conditions of this Agreement, then the party in whose favor relief is
granted and/or judgment is entered shall be entitled to have and recover from
the other party or parties all costs, prejudgement interest, and reasonable
attorney's fees incurred in connection with the enforcement action.
g. Notice to be given under this Agreement will be in writing and be addressed
to the other party at the address of such party hereinabove, unless such address
has been superseded by like notice, whereupon the latest noticed address thereof
is to be used. Notice will be effective when delivered to the addressee, or-if
not a change of address-when sent by Express or Registered Mail so addressed.
h. This Agreement sets forth the entire intent and understanding of the parties
with regard to the subject matter hereof, and merges any prior negotiations or
agreements by the parties as to such subject matter, and no addition, deletion,
or other modification of the wording hereof may be made except in writing
subsequent hereto and signed by the party or parties to be bound thereby.
IN WITNESS WHEREOF the parties have caused this Agreement to be signed, sealed,
and attested by persons duly authorized so to do, as of the date first stated
hereinabove.
S/S MACK GREEVER S/S LEON H. TOUPS
Mack Greever, Manager Leon H. Toups, President
Attest: S/S GEROLD ALLEN S/S MARK CLANCY
Gerold Allen Mark Clancy, Vice President