NON-EXCLUSIVE PATENT LICENSE AGREEMENT
JOHN D. ERICSSON
INVENTOR
and
SEA PRIDE INDUSTRIES, INC.
AND ITS AFFILIATE SUBSIDIARY
SEA STAR INDUSTRIES, INC.
RE: SEA STAR TM OYSTER
RELAY SYSTEM
Version: Thursday, June 27, 1996
NON-EXCLUSIVE LICENSE AGREEMENT
Non-exclusive license Agreement made and entered into this _____ day of ______,
19___, by and between:
JOHN D. ERICSSON, an individual residing in (Gulf Breeze, Florida,
and having a mailing address of PO Box 6211, Gulf Breeze, FL 32561
(hereinafter referred to as LICENSOR, on the one hand;
and
SEA STAR INDUSTRIES, INC., and its affiliate parent company, SEA
PRIDE INDUSTRIES, INC., (both Delaware corporations) having a
business address at 91 Baybridge Drive, Gulf Breeze, FL 32561
(hereinafter referred to as "LICENSEE" on the other hand.
WHEREAS, LICENSOR has invented an Oyster Relay System, on which invention he
has filed utility U.S. patent application(s) entitled "Oyster
Cleansing/Purification Array" with the U.S. Patent and Trademark Office;
WHEREAS, LICENSEE is desirous of securing, and LICENSOR is willing to grant, a
non-exclusive patent license under the Licensed invention to manufacture, use,
sell and otherwise practice the Licensed Invention;
NOW, THEREFORE, in consideration of the covenants and obligations
hereinafter set forth, to be well and truly performed, the parties hereto
hereby agree as follows:
I. NON-EXCLUSIVE PATENT LICENSE
LICENSOR agrees and does hereby grant LICENSEE the non-exclusive right and
license to manufacture, use, sell and otherwise practice the Licensed Invention
in the United States of America its territories and possessions and all foreign
countries, subject to any limitations below (all of which is collectively
termed the Licensed Territory), such right and license being only for LICENSEE
and not sub-licensable, except as may otherwise be explicitly permitted herein,
until the expiration of the last to expire of any and all Patent(s) or any
reissue(s) or extension(s) thereof, which may issue on the Licensed Invention
(the Licensed Patent Rights), unless sooner terminated in; accordance with any
of the provisions hereof. LICENSEE agrees that a will manufacture embodiments
of the Licensed invention. However, should LICENSEE or a related company use
the Licensed Invention for profit, or otherwise practice the Licensed
Invention, the embodiments of the Licensed Invention so used shall be
considered as sold to LICENSEE at the highest sales price charged to a third
party for an embodiment of the Licensed Invention for the purpose of
calculating royalties.
II. ROYALTIES.
LICENSEE agrees to pay to LICENSOR a royalty of FIVE PERCENT (5%) of the
gross sales of the gross sales from the processing of the shellfish or FIVE
PERCENT (5%) lease receipts of the equipment sales or TEN PERCENT (10%) of
lease receipts due LICENSEE, less manufacturing labor and materials costs on
all devices and/or systems covered by the Licensed Patent Rights or made or
used in accordance with the Licensed Invention or covered by one or more of the
current or hereafter pending claims of said U.S. patent application or any
continuation(s), division(s) or continuation(s)-in-part thereof (the Licensed
Patent Application Rights).
However, should the U.S. patents on the Licensed invention become
invalidated or expire, or should LICENSOR fail to secure a patent on the
licensed invention three years from the date hereof, LICENSEE may thereafter at
its option, cease payment of royalties, except for arty Device(s) destined for
a foreign market in which case royalties will continue to be paid on those
foreign sales where patent rights exist.
However, if LICENSOR thereafter secures a U.S. patent on the Licensed
Invention, the royalty rate will again become due and royalties again payable
to LICENSOR, retroactively including as due and payable those payments
suspended by LICENSEE.
III. LICENSOR FULL OWNER OF INVENTION
LICENSOR warrants that he is the true inventor of the Licensed Invention, has
no liens or encumbrances thereon, and has the capacity and right to alienate or
encumber title on same.
IV. ROYALTY DUE DATES
All royalties provided for by this License Agreement shall be due and
Payable within thirty days after completion of each device or system covered by
the present agreement, and LICENSEE agrees to pay to LICENSOR or his designee
Within the thirty day period, time being of the essence, the total amount of
royalties due and payable on account of its operations under this Agreement.
Should any royalty payment(s) be late, additional interest charges of ONE POINT
FIVE (1.5%) percent per month shall be immediately paid by LICENSEE.
V. ROYALTY REPORTS & RECORDS
LICENSEE agrees that it will render to LICENSOR or its designee on or
before the 28th day of each of the months of January, April, July and October
of each year during which this Agreement is in force, a written detailed report
setting forth the total gross sales receipts from its royalty-bearing sales,
the country of ultimate destination, number of units and parts involved and
their serial numbers (which shall be provided by LICENSOR for marking on the
Licensed Devices by LICENSEE) and the royalty calculation during the period
covered by such report. LICENSEE shall maintain accurate records as to all
LICENSED DEVICES sold by it hereunder, which shall be open to the inspection of
LICENSOR or his duly authorized agent at all reasonable times during normal
business hours during the continuance of this Agreement and for a period of six
(6) months after termination hereof, provided that LICENSEE will not be
required to retain any such record for more than three (3), years after the
making thereof.
Should any such inspection show a significant shortage error was made by
LICENSEE in the amount of royalties due, LICENSEE shall pay for the costs of
the inspection.
VI. GUARANTEED MINIMUM PERFORMANCE
LICENSEE shall use "good diligent efforts" to manufacture, promote, market and
sell the licensed Invention throughout the Licensed Territory within the
quickest reasonable time and continuing thereafter as long as this Agreement is
in effect. LICENSEE warrants and guarantees that all Device(s) which are
embodiments of the Licensed Invention manufactured or sold by it shall be of
high, quality and proper manufacture, and within the U.S. Occupational Health
and Safety Administration (OHSA), The Environmental Protection Agency (EPA) and
other regulatory governmental agency standards.
Further, LICENSEE will allow (although LICENSEE is not required to)
final, inspection and approval of each LICENSED DEVICE prior to the delivery to
the customer by LICENSOR where requested, which inspection by LICENSOR must be
satisfactory, regarding the manufacture and/or operation of the device, in
accordance with plans or specifications submitted by LICENSOR, or the LICENSED
DEVICE will have to be modified according to LICENSOR's instructions until
approved by LICENSOR. Only upon final approval by LICENSOR can the LICENSED
DEVICE be used or sold by LICENSEE. LICENSOR agrees that he will not
unreasonably withhold approval of the LICENSED DEVICE after inspection.
The present provision does not require LICENSOR to inspect the LICENSED DEVICE,
nor is LICENSOR responsible or otherwise liable for manufacturing and/or design
defects in LICENSED DEVICE. Further, LICENSOR warrants, and guarantees that
LICENSEE shall indemnify LICENSOR in the event of any lawsuit involving the
LICENSED INVENTION naming LICENSOR. In addiction, LICENSEE will obtain and
maintain liability insurance in the amount of one million dollars
($1,000,000.00), naming licensor as co-insured.
LICENSOR MAKES NO WARRANTIES, EXPRESS OR IMPLIED, AS TO THE VIABILITY OR
FITNESS OF THE LICENSED INVENTION.
LICENSEE warrants that it will sell at least ONE (1) LICENSED DEVICE within two
calendar years from the date of execution of the present agreement, and ONE (1)
LICENSED DEVICE every two years thereafter, until termination or expiration of
the present agreement.
VIl. OPTION ON FOREIGN RIGHTS & OBLIGATIONS THEREFOR
LICENSEE shall have the option of securing like rights to the rights granted
herein on like terms for any and all foreign countries in which it has sold or
has prepaid orders to sell the LICENSED DEVICE in sufficient numbers to
establish a financially promising market presence. In order to exercise its
option for the foreign countries it wishes to have a license in, LICENSEE no
later than OCTOBER 15, 1994, time being of the essence, shall inform LICENSOR,
in writing of the names of the countries desired and details regarding the
pending orders in said counties, including number of machines, amount of
prepayment of U.S. dollars, and customer destination name and address.
Promptly after all of the foregoing conditions of this section are met LICENSOR
and LICENSEE shall execute an "non-exclusive Patent LICENSE, Agreement for the
designated foreign counties (hereinafter the "Foreign Patent Rights"), which
agreement shall have the same or analogous terms as this Agreement, LICENSEE
shall pay EIGHTY PERCENT (80%), and LICENSOR shall pay TWENTY PERCENT (20%) of
all reasonable foreign patent and related legal expenses, fees and costs
involving the Licensed Invention in the Licensed Territory for which LICENSEE
exercised the present option, including filing, prosecution and maintenance
expenses. LICENSOR shall be free to secure as he sees fit foreign patent
rights in any countries which LICENSEE elects not to pursue under the terms of
this agreement, and LICENSEE shall have no rights in other foreign countries
which did not exercise its option in.
LICENSEE may sublicense the manufacture and sales of the Licensed
Invention under the Foreign Patent Rights to independent third parties in arms'
length transactions, and LICENSEE shall pay LICENSOR or his designee
immediately upon receipt twenty-five percent (25%) of all revenues or other
consideration it receives from the sublicensee(s).
LICENSOR shall pay for all reasonable foreign patent and related legal
expenses, fees and costs involving the Licensed Invention in the Licensed
Territory for which it exercised its option, including filing, prosecution and
maintenance, expenses.
VIII. PATENT MARKING
LICENSEE agrees to mark permanently and legibly all embodiments of the Licensed
Invention manufactured and sold by it under this Agreement with a patent notice
in compliance with the applicable statute(s) relating to the marking of patent
pending and patented articles. Further, LICENSEE agrees to place on the
Licensed Invention induce provided by LICENSOR which may include a trade name
or mark for the device, "Patent Pending" or similar notice, as well as other
indicia as LICENSOR sees fit.
IX. PATENT INFRINGEMENT SUIT(S)
LICENSEE agrees to notify LICENSOR of any infringement(s) by third parties, and
shall pay LICENSOR royalties on any monetary recoveries from infringes on the
present invention, to the extent that such moneys recoveries by LICENSEE are
held to be reasonable royalties or damages in lieu thereof. LICENSOR shall
have the right to enforce any patent licensed hereunder on behalf of itself and
LICENSEE, and LICENSEE shall join any such suit as a named party, if required.
In such events the amount of recovery paid to LICENSOR shall be the sole
property of LICENSOR. If LICENSOR does not desire to enter into such suit, it
shall be the obligation of LICENSEE to do so. In such a case, LICENSEE during
such suit has a right to offset royalty payments to LICENSOR in the amount of
TWENTY FIVE PERCENT (25%) of current legal costs and fees during said royalty
payment period, not to exceed ONE-THIRD (1/3) of said royalty during any
royalty payment period. Once said suit has terminated, LICENSEE'S right to
offset royalty payments to LICENSOR, as indicated above, terminates.
X. DEFAULT
In the event that LICENSEE defaults or breaches any of the provisions of the
license agreement or fails to account for or pay to LICENSOR any of the
royalties to be due and payable to LICENSOR hereunder, LICENSOR reserves the
right to terminate this Agreement upon sixty (60) days prior written notice to
LICENSEE; provided, however, that LICENSEE, within the thirty (30) day period
referred to, cures the said default or breach, the license herein granted and
this Agreement shall continue in full force and effect if LICENSEE collectively
has been in default of any of the provisions of this Agreement more than three
(3) times, regardless of whether or not LICENSEE thereafter cured its
default(s), the period for LICENSEE to cure said default or breach is reduced
from the thirty (30) day period indicated supra to a five (5) day period.
XI. BANKRUPTCY
In the event of any adjudication of bankruptcy, appointment of a receiver
by a court of competent jurisdiction, assignment for the benefit of Creditors
or levy of execution directly involving LICENSEE, this Agreement shall
thereupon forthwith automatically terminate.
XII. TERMINATION BY LICENSEE
LICENSEE may, at its option, terminate this agreement by giving written
notice to LICENSOR, if LICENSOR is found not to be the inventor of the Licensed
Invention within thirty (30) days from the discovery and notification thereof;
XIII. TERMINATION BY LICENSOR
In the event of any of the following, LICENSOR may, at his option,
terminate this Agreement by giving written notice to LICENSEE, if
(a) LICENSEE does not meet its minimum performance guarantees under
Section VI hereof.
(b) Upon thirty (30) days written notice of LICENSEE shall breach or
default on any obligation under this License Agreement; provided, however, that
LICENSEE may avoid such termination before the end of such period LICENSEE
notifies LICENSOR that such breach has been cured and states the matter of such
cure.
XIV. TERMINATION EFFECTS
The termination hereof automatically or by either party shall not relieve
LICENSEE from making any royalty payment or report due LICENSOR or his
representative(s) for manufacturing or sales prior to the effective date of
termination.
XV. UN-ASSIGNABILITY
The rights of LICENSEE hereunder are unassignable and cannot be sub-
licensed without the written consent of LICENSOR.
XVI. LICENSEE NOT TO ACT FOR LICENSOR and VISA VERSA
LICENSEE agrees that it does not have the right to, and will not at any
time hereafter, transact any business in the name of LICENSOR or obligate
LICENSOR in any manner, character or description; and LICENSOR shall not under
any circumstances be liable for any agreement, contract, representation or
warranty, which LICENSEE may hereafter enter into or make, except for the
present agreement.
In addition, in the absence of agreement between LICENSEE and LICENSOR to
the contrary, LICENSOR agrees that it does not have the right to, and will not
at any time hereafter, transact any business in the name of LICENSEE or
obligate LICENSEE in any manner, character or description; and LICENSEE shall
not, under any circumstances, be liable for any agreement, contract
representation or warranty, which LICENSOR may hereafter enter into or make,
except for the present agreement.
XVII. LIMITATION ON EFFECT OF WAIVER
No waiver by either party, whether express or implied, of any provision
of this Agreement or of any breach or default of either party, shall constitute
a continuing waiver of such provision or of a waiver of any other provisions of
this Agreement.
XVIII. ENTIRE AGREEMENT; MODIFIED ONLY IN WRITING
This Agreement includes all the agreements of the parties and supersedes and
cancels all previous agreements, negotiations, commitments and writings in
respect to the subject matter hereof. No claimed oral agreement in respect
hereto shall be considered as any part thereof. No waiver of or change in any
of the terms hereof subsequent to the execution hereof claimed to have been
made by any representative of either party shall have any force or effect
unless in writing signed by the parties or duly authorized representatives of
the parties.
XIX. NOTICES
Notices required under this Agreement shall be in writing and shall for all
purposes be deemed to be fully given and received if sent by certified mail,
postage prepaid, return receipt requested, to the respective party(ies) at the
above identified address(es). Either party hereto may change its address for
the purposes of this Agreement by giving the other party(ies) written notice of
its new address.
XX. SEVERABILITY
The provisions and sections hereof are severable and independent. Should
any provision or section hereof be held or considered void or unenforceable,
the validity of the remaining provisions and sections shall not be affected,
and, they shall still be enforced.
XXI. FLORIDA LAW
This Agreement is being entered into in the State of Florida, and the
interpretation and enforcement hereof shall be in accordance with the laws of
the State of Florida. LICENSEE agrees and admits that the Florida courts have
personal jurisdiction over it and is the proper, best and most convenient forum
for any contractual disputes.
XXII. LEGAL ADVICE
LICENSEE represents and warrants that the terms and legal effect of this
Agreement have been fully explained to him by an attorney at law of his own
selection.
IN WITNESS WHEREOF, the parties hereto have caused this agreement to be
executed personally or, in the case of LICENSEE, by their duly authorized
representatives and their corporate seals to be hereunto affixed, as of the day
and year first above written.
JOHN D. ERICSSON
LICENSOR
_______________________
Licensee:
Sea Pride Industries, Inc., By:
_______________________
Director
_______________________
Director
Attest:
_______________________
Secretary/Treasurer
Witnessed and Signed
this ____ day of __________, 19__.
(SEAL) _______________________
Notary (Commission Expires _____)