EXHIBIT
10.1
LICENSE AGREEMENT
License Agreement made effective
this 14th day of October, 2009 (the "Effective Date") by and
between Global Resource Corporation as Licensor (hereinafter called
"Licensor"), a Nevada corporation having a principal place of
business at 1000 Atrium Way, Suite 100, Mount Laurel, New Jersey
08054 and Universal Alternative Fuels, Inc., as Licensee
(hereinafter called "Licensee"), a Nevada corporation having a
principal place of business at 1400 Old Country Road, Suite 206,
Westbury, NY 11590.
WHEREAS, Licensor has developed certain
microwave technology for the recovery of commercially usable energy
or energy-producing materials, such as oil and gas, together with
by-products which may have commercial value, and Licensor has filed
certain patent applications for the protection of such technology,
which patent applications are pending;
WHEREAS, Licensor continues, and has continued,
directly, and indirectly through contractors (e.g., Ingersoll
Production Systems), to perform research and development and has
improved upon, added to, and enlarged its technology beyond the
content of the patents pending, and intends to continue to do
so;
WHEREAS, Licensee desires to establish a
business of (a) selling machines embodying the microwave technology
of Licensor as applied to oil shale and coal to recover
commercially usable energy, energy-producing materials and
by-products from such sources and (b) using such machines itself
for the recovery of energy, energy-producing materials and
by-products from oil shale and/or coal and (c) sub-licensing the
use of the Technology, the pending Continuation Application and the
process hereinafter described within the Licensed Field of
Use;
WHEREAS, Licensor has filed a continuation
application with the U.S. Patent and Trademark Office ("PTO") for
the microwave processing of (i) oil shale and (ii) coal, a true and
complete copy of which is attached as Schedule A to this License
Agreement (the "Continuation Application");
WHEREAS, Licensee desires to secure an
exclusive, royalty-free world-wide license for the application of
the Licensor's Technology (now or hereafter acquired) and the
patents pending to the recovery of energy, energy-producing
materials and by-products from oil shale and/or coal, for the
foregoing business purposes;
WHEREAS, Licensor is agreeable to licensing
Licensee, on an exclusive and royalty-free basis, world-wide, for
the use of the Technology solely in the Licensed Field of Use and
the patents pending for the recovery of energy, energy-producing
materials and by-products from oil shale and/or coal, for the
foregoing business purposes of Licensee;
WHEREAS, Licensee acknowledges that Licensor has
entered into a JDA with Schlurnberger for the development of the
technology as applied to heavy oils, and Licensor and Licensee
agree that this License Agreement does not include any application
covered by the subject matter of the JDA with Schlumberger; and
Licensee also acknowledges its awareness of a Marketing and
Licensing Agreement (the "C6 Agreement") entered into by Licensor
with C6 Energy Pty. Ltd ("C6") which is the subject of a
termination notice by Licensor;
WHEREAS, the parties have negotiated and have
reached certain understandings, and desire a document to evidence
and formalize such understandings;
WHEREAS, in connection and simultaneous with the
execution of this License Agreement, the Licensor has executed a
Security Agreement (the "Security Agreement") granting the Licensee
security interests in the Continuation Application and the Existing
Prototype Machine currently located at the Ingersoll plant in
Rockford, Illinois (together, the "Security interests");
NOW, THEREFORE, intending to be legally bound
and in consideration of the mutual promises and covenants contained
herein, and for other good and valuable consideration, the receipt
and adequacy of which are hereby acknowledged, the parties have
agreed, and do hereby agree, as follows:
ARTICLE I -
DEFINITIONS
For the purpose of this License
Agreement, and solely for that purpose, the terms set forth
hereinafter shall be defined as follows:
(a) "Cost to
Manufacture" shall mean all direct costs the Licensor incurs in
connection with the manufacture of any machine, such as (i) raw
materials, parts and sub-assemblies, (ii) direct, manufacturing
labor, (iii) utilities, and (iv) reasonable depreciation of
directly-used tools, machines, and the manufacturing facility but
there shall be specifically excluded from this calculation of cost
all of the following: any research and development expenses of
Licensor and or its contractor(s) (e.g., Ingersoll Production
Systems); the general and administrative overhead (G&A) of
Licensor and/or its contractor(s), salaries and employee benefits
of Licensor's and its contractor(s)' employees other than of those
engaged directly in the manufacturing process; and any and all
other non-manufacturing costs and expenses of Licensor and/its
contractor(s).
(b) "Existing
Prototype Machine" shall mean that certain existing prototype
machine of the Licensor at the date hereof located in Rockford,
Illinois known as the "PPS-TR Microwave Prototype Processor", as
more specifically described in Schedule B attached hereto and made
a part hereof.
(c) "Licensed Field of
Use" shall mean microwave energy applications relating to the
recovery from (i) oil shale and (ii) coal to recover commercially
usable energy, energy-producing materials and by-products from such
sources, whether by its own use of machines embodying the
Technology, the sale of machines embodying the Technology or the
sub-licensing of the Technology in the Licensed Field of
Use.
(d) "Licensed Process"
shall mean a method or process in the Licensed Field of Use either
covered by the Patent Rights or by the Technology (now or hereafter
acquired).
(e) "Licensed Product(s)" shall mean
a product in the Licensed Field of Use that is covered by the
Continuation Application, Patent Rights and/or
Technology.
(f) "Licensed
Territory" shall mean all countries of the world.
(g) "Parties" shall
mean Licensor and Licensee, and "Party" shall mean Licensor or
Licensee as the text may dictate.
(h) "Patent Rights" shall mean the
patents and/or patent applications identified in the Continuation
Application, together with any divisional, continuation, or
continuation-in-part applications based thereon, any patents
resulting from any of said applications and any reissues or
extensions that may be based on any of said patents, and shall also
include all improvements, modifications, enlargements and
extensions made to any of the Patent Rights during the term of this
License Agreement. For the avoidance of doubt, the Patent Rights
relating to the License shall be limited to the Licensed Field of
Use.
(i) The phrase "covered by the
Patent Rights" and equivalent language as used herein shall mean
covered by a valid claim of an issued, unexpired patent within the
Patent Rights or by a claim being presented in a pending patent
application within the Patent Rights. Any claim being presented in
a pending patent application shall be deemed to be the equivalent
of a valid claim of an issued, unexpired patent for purposes of the
grant of the License.
(j) "Seller" shall mean
one who sells.
(k) "Sublicensee" shall mean a
sublicensee pursuant to Article IV (a) hereof;
(l) "Technology" shall mean the
microwave technology of Licensor as applied to oil shale and/or
coal only and shall include for this purpose not only the content
of the Patent Rights and the content of any future patents issued
or applied for in the Licensed Field of Use, but all improvements,
modifications, enlargements and extensions thereto, now or
hereafter existing, whether or not Licensor seeks additional patent
protection thereon, together with all software programs used to
design, install and operate the machines, all proprietary data and
trade secrets, all know-how, inventions and discoveries (whether
patentable or not), invention disclosures, improvements, trade
secrets, proprietary information, know-how, technology, technical
data, supplier lists and customer lists and all documentation
relating to any of the foregoing; databases, data collections and
content and all rights therein, throughout the world (collectively
"Data Collections"); all computer software, including all source
code, object code, firmware, development tools, files, records
data, and documentation (including design documents, flowcharts and
specifications therefor), and all media on which any of the
foregoing is recorded (collectively "Software");
(m) "Trademarks" shall
mean all trademarks, trade names, service marks, corporate names
brand names, trade dress, designs and logos and other source
indicators, and all registrations and applications for registration
thereof and all other rights corresponding thereto throughout the
world, together with the goodwill of any business symbolized
thereby of the Licensor that relate to the Patent Rights in the
Licensed Field of Use; and
(n) "Used" (or "Use") shall mean use
of the Patent Rights or the Technology within the Licensed Field of
Use in return for any form of consideration having monetary value
including for this purpose equity ownership or investment in any
entity regardless of the form of ownership or
investment.
ARTICLE II -
LICENSE
(a) (i) Licensor
hereby grants and agrees to grant to Licensee and Licensee hereby
accepts and agrees to accept from Licensor, upon the terms and
conditions herein specified, an exclusive, world-wide, royalty-free
license, with right to sublicense, in the Licensed Field of Use
under the Patent Rights and the Technology (i) to practice the
Licensed Process as a service to others or for the Licensee itself,
(ii) to make, to have made, to use in the practice of the Licensed
Process and to sell, offer to sell, lease, distribute, export and
import Licensed Products in the country or countries in which the
Patent Rights are or shall be in effect and in each such country's
territories and possessions, and (iii) to use the Licensor's
Trademarks associated therewith, to the full end of the term or
terms for which the Patent Rights and the Technology are or shall
be issued, unless the license or this License Agreement shall be
sooner terminated as hereinafter provided.
(a) (ii) Licensor agrees to
indemnify and hold harmless Licensee and each of its respective
members, managers, officers, directors, agents, employees and
affiliates (a "Licensee Party") from and against any and all
losses, claims, damages or liabilities, including penalties on
reserves, to which it may become subject that result from any claim
asserted by any other party licensed by or contracting with
Licensor against Licensee Party arising out of, related to or in
connection with any Licensor contract regardless of how such claim
is denominated or described, and including all suits, actions,
proceedings, demands, assessments, judgments, costs, reasonable
attorneys' fees and expenses incident to any of the foregoing
matters, including those reasonable costs, charges and expenses
(including any expenses resulting from any investigation or
inquiry) with respect to the participation of any Licensee Party in
defense thereof, whether or not the Licensee Party is named as a
party.
(b) The foregoing
grant and acceptance of the License is specifically made subject to
an option on the part of the Licensor to repurchase the License and
retain the Existing Prototype Machine upon certain terms and
conditions as follows:
(i) Contemporaneously with the
execution of this License Agreement, Licensee has given Licensor a
Purchase Order for an initial machine (Licensed Product) embodying
the technology adapted for use with oil shale (referred to in this
License Agreement as the "initial machine" as differentiated from
the Existing Prototype Machine, as defined), Licensee shall have a
"wait and see" period of hundred eighty (180) days from the date of
this License Agreement) to terminate that purchase order for the
initial machine; but such right is dependent upon Licensor's
failure, within one hundred fifty (150) days from the date of this
License Agreement, to raise at least Three Million Four Hundred
Thousand Dollars ($3,400,000) in additional equity capital (which
for this purpose shall include debt, if convertible into common
stock of the Licensor). If Licensor fails to achieve such
financing, Licensee shall have the right (but not the obligation)
to terminate the Purchase Order. In the event that Licensee so
elects, then Licensor shall have a period of ten (10) days in which
to determine whether it wishes to repurchase this License and
retain the Existing Prototype Machine in Rockford, Illinois. The
repurchase and retention price shall be $1,700,000, including
return of the Seven Hundred Fifty Thousand Dollars ($750,000) paid
as license fee hereunder and reimbursement to Licensee of the
$843,000 in costs incurred in connection with this License
Agreement. If Licensor elects to repurchase and retain, it shall
pay the sum of $1,700,000 within twenty (20) further days. If the
repurchase/retention is not timely accomplished by Licensor, its
option to repurchase/retain shall be null and void and of no
further effect.
(ii) During the one hundred eight
(180) day "wait and see" period, Licensor and Licensee shall
cooperate in performing the necessary tests, analyses, experiments,
and research to determine the efficacy and efficicney of the
Technology to (i) oil shale and (ii) coal. If Licensee determines
within its sole discretion and whether or not reasonably, that such
Technology is not sufficiently viable, efficacious or efficient
within the Licensed Field of Use, then Licensee shall have the
right (but not the obligation), to terminate the Purchase Order. In
the event that Licensee so elects, then Licensor shall have a
period of ten (10) days in which to determine whether it wishes to
repurchase this License and retain the Existing Prototype Machine
in Rockford. The repurchase price shall be $1,700,000, including
return of the Seven Hundred Fifty Thousand Dollars ($750,000) paid
as license fee hereunder and reimbursement to Licensee of the
$843,000 in costs incurred in connection with this License
Agreement. If Licensor elects to repurchase and retain, it shall
pay the sum of $1,700,000 within twenty (20) further days. If the
repurchase/retention is not timely accomplished by Licensor, its
option to repurchase/retain shall be null and void and of no
further effect.
(c) In the event that
Licensee exercises its option to terminate the purchase order and
Licensor either (i) does not elect to repurchase this License
Agreement and retain the Existing Prototype Machine in Rockford,
Illinois or (ii) elects to repurchase and retain but fails to
timely pay the $1,700,000, then in such case Licensee shall retain
the exclusive license for which it has paid, shall have the right
to foreclose its security interest in and to the Patent Rights and
the Existing Prototype Machine, pursuant to the contemporaneously
granted Security Agreement, and shall have the right to take
immediate and exclusive possession and ownership of the Existing
Prototype Machine.
(d) In the event that
Licensee exercises its option to terminate the purchase order and
Licensor elects to repurchase this License Agreement and retain the
Existing Prototype Machine and timely pays the $1,700,000, then
this License Agreement shall terminate and (i) Licensee shall have
no further rights hereunder and (ii) Licensor's twenty percent
(20%) equity interest in Licensee shall terminate and be rescinded
ab initio, and (iii) all Security Interests on the Technology and
Existing Prototype Machine shall terminate and be
released.
ARTICLE III -
EXCLUSIVITY
(a) Subject to the
provisions of Articles IV and XIII hereof, the license herein
granted under the Patent Rights shall be exclusive to Licensee
worldwide for a period of time extending until the first to occur
of either: (i) termination of this License Agreement; or (ii) the
expiration or lapsing of the last patent to expire within the
Patent Rights in the respective countries in which applications for
the Patent Rights have been filed.
(b) The Licensor shall
manufacture all machines to be sold to Licensee or Sublicensees
under this License Agreement; provided, however, that in the event
the Licensor is unable to manufacture any machine for any order
hereunder within the time period allotted for any specific contract
of purchase, then the Licensee shall have the right to undertake to
manufacture any such machine at its own cost and expense for its
own use or for resale to a Sublicensee, and such action by the
Licensee shall not constitute a breach of or default under this
Agreement. In any such ease, the Licensor shall not be entitled to
receive any payment under Article VI of this License Agreement. All
machines manufactured and delivered by Licensor shall comply in all
respects with all governmental and regulatory permits and
authorizations including but not limited to environmental and
pollution matters, worker safety and fire and other hazards. If
Licensor's failure to manufacture a machine in response to a
Licensee order occurs more than twice within any successive 24
month period, then Licensee shall be permitted to organize its own
methods for manufacturing new machines and in such case, Licensor
shall not be entitled to receive any fixed payments for the
machines under Article VI.
ARTICLE IV - SUBLICENSING
PROVISIONS
(a) Licensor hereby grants and
agrees to grant to Licensee, and Licensee hereby accepts and agrees
to accept from Licensor, upon the terms and conditions herein
specified, within the Licensed Field of Use a nonassignable right
and power to grant to others (Sublicensees"), upon reasonable terms
and conditions, nonassignable royalty-bearing or royalty-free
sublicenses under the Patent Rights to use or resell the Licensed
Product and/or practice the Licensed Process in the country or
countries in which the Patent Rights are or shall be in effect and
in each such country's territories and possessions solely within
the Licensed Field of Use.
(b) Any Sublicense in effect at the
termination of this License Agreement shall remain in effect, but
for the benefit of Licensor and Licensee; providing the Sublicensee
shall continue to make all reports and payments due and owing under
its sublicensing agreement and is not otherwise in breach or
default thereunder, such reports and payments then to be made to
Licensor and Licensee rather than Licensee alone.
ARTICLE V - LICENSE
FEE
(a) Upon execution and delivery of
this License Agreement, Licensee shall pay to Licensor, an
aggregate license fee comprised of the following:
(1) a one-time payment
of Seven Hundred Fifty Thousand Dollars ($750,000);
(2) restricted shares
of Licensee equal to twenty percent (20%) of the issued and
outstanding shares of common stock of Licensee at the date of
issuance (the "Ownership Percentage Amount"). Licensee agrees to
issue additional shares of common stock to Licensor such that
Licensor always shall own that number of shares of Licensee common
stock as is equal to the Ownership Percentage Amount at any time
through and including the period that ends one (1) year after the
"reorganization" of Licensee as defined in the next following
sentence. For a period ending one (1) year after the Reorganization
(the "Period") (except as provided in subsection (3) following),
Licensor shall maintain its Ownership Percentage Amount on the
reorganization of Licensee, whether by exchange agreement, merger,
consolidation or any other form of recapitalization or restructure
into or with a public corporation (the "Reorganization"). Licensee
shall take all actions reasonably necessary to ensure that Licensor
maintains its Ownership Percentage Amount in Licensee at the
Reorganization date and throughout the Period; provided, however,
that after the expiration of the Period Licensor shall be subject
to dilution of its Ownership Percentage Amount together with all
other stockholders of Licensee.
(3) Licensor acknowledges that
Licensee and any public corporation with which it may engage in a
Reorganization will be required to seek either or both of private
and/or public financing. In such event, Licensor's Ownership
Percentage Amount shall be subject to dilution pro rata with all
other shareholders, notwithstanding any language to the contrary in
subsection (a) (2) of this Article V.
ARTICLE VI - PURCHASE OF
LICENSED PRODUCT; MANUFACTURE AND PURCHASE OF PROTOTYPE AND
MACHINES
(a) As provided in
Article III (b), subject to Licensor's ability to manufacture
machines for Licensee, whether for the use of the Licensee or for
resale by the Licensee, Licensor shall have the exclusive right to
manufacture all machines to be sold to Licensee or Sublicensees
under this License Agreement. Licensor's right to manufacture the
machines may be exercised by the Licensor directly or via the
outsourcing of such manufacture to one or more subcontractors as
Licensor shall determine in its sole and absolute
discretion.
(b) Contemporaneous
with the execution of this License Agreement, Licensee shall place
an order with Licensor for the manufacture of an initial machine
specifically intended to be used on oil shale. The Purchase Order
for such machine shall be subject to termination, as provided in
Article II (b). The purchase price for such initial machine
shall be (1) the Licensor's Cost to Manufacture the Licensed
Product plus (ii) twenty percent (20%) of the Licensor's Cost to
manufacture the Licensed Product, plus (iii) such mutually agreed
amount for research and development and testing, but not to exceed
Three Million Five Hundred Thousand Dollars ($3,500,000). Licensor
acknowledges that Licensee has incurred various costs and expenses
mutually agreed to total Eight Hundred Forty Three Thousand Dollars
($843,000) in preparation for this License Agreement and,
accordingly, Licensor shall give Licensee a credit of $843,000
against the purchase price which shall be deducted from the final
payment. The balance shall be paid by Licensee as
follows:
(i) $500,000 at the end of six (6)
months from the date of the Purchase Order,
(ii) $500,000 at the
end of nine (9) months from the date of the Purchase Order;
and
(iii) the balance, after
the application of the $843,000 credit, upon completion of the
initial machine, demonstration that it meets the warranted purpose,
and acceptance by Licensee.
(c) The Purchase Order
shall be subject to the right of Licensee to terminate the purchase
order at the end of one hundred (180) days from the date of this
License Agreement as provided in Article II (b). Licensor's
right to terminate shall he subject to Licensor's right to
repurchase this License Agreement and retain the Existing Prototype
Machine as further provided in Article II (b). Depending upon the
events that then occur, the provisions of Articles II (c) and/or
Article shall be applicable.
(d) During such period
that Licensor shall have the exclusive right to manufacture
machines, Licensee shall order all machines, whether for its own
use or for resale to Sublicensees, from Licensor and shall pay to
Licensor therefor a purchase price determined as
follows:
(1) The Licensor's Cost to
Manufacture the Licensed Product, and the lesser of
(2) either (i) fifty percent (50%)
of the difference between the Licensor's Cost to Manufacture the
Licensed Product and the Licensor's actual sale price of the
Licensed Product to arm's length bona fide third party customers or
(ii) twenty percent (20%) of the Licensor's Cost to manufacture the
Licensed Product.
All revenues of the Licensee from the sale or
resale of the Licensed Products to a third party above the total of
(1) and (2) shall belong to the Licensee.
Such purchase price shall be paid by
Licensee as follows:
(i) one-third upon
placement of the order;
(ii) one-third upon
completion by Licensor of fifty percent (50%) of the machine;
and
(iii) one-third upon completion of
the machine, demonstration that it meets the warranted purpose, and
acceptance by Licensee.
ARTICLE VII - PATENT
RIGHTS
(a) Licensor shall
upon request of Licensee advise Licensee as to the status of any
patents and patent applications within the Patent Rights and the
Technology as applicable or potentially applicable within the
Licensed Field of Use.
(b) In the event that
Licensor does not desire to file a particular patent application in
the Licensed Field of Use or discontinues its responsibility for
prosecution or maintenance of a particular patent application or
applications or discontinues its responsibility for the maintenance
of a particular patent in Patent Rights listed in Schedule A,
Licensor shall notify Licensee promptly in writing of its intention
and, in the case of proposed discontinuances, at least sixty (60)
days prior to the effective date thereof, in order to permit
Licensee to determine whether it wishes to assume the
responsibility therefor. Licensee shall have the right and option,
but not the obligation, to assume the responsibility for filing,
prosecution and maintenance of such patent applications and patents
therefor which Licensor desires not to prosecute or to discontinue.
Licensee shall inform Licenser in writing of its decision to assume
the responsibility for filing, prosecution and maintenance of such
patent applications and patents, and Licensor promptly execute and
deliver such documents and take such actions as are reasonably
necessary or appropriate to assign such patent or patent
application to Licensee and making the inventor reasonably
available to assist in the prosecution of any such applications.
Upon assignment of patent or patent application to Licensee, said
patent and/or patent application shall be removed from the Patent
Rights and no longer subject to this License Agreement.
(c) Licensor shall promptly inform
Licensee in writing of any Patent Rights in the Licensed Field of
Use that were filed with a Patent Office or invented subsequent to
the effective date of this License Agreement. Licensor covenants
that Patent Rights in the Licensed Field of Use that were filed
with a Patent Office or invented subsequent to the effective date
of this License Agreement shall be included in their entirety
within the scope of this License Agreement upon the same terms and
conditions and without any additional payment or alteration of the
existing fixed payments or royalties payable by Licensee to
Licensor under this Agreement.
(d) Licensor shall upon request of
Licensee inform Licensee of the issuance of all licenses granted by
it to other Licensees under any of the Patent Rights in the event
that any such licenses shall be legally required to be
granted.
ARTICLE VIII - DEVELOPMENT AND
REGULATORY APPROVAL
(a) Licensor will develop the
Licensed Product and the Licensed Process for commercialization at
Licensor's sole and complete expense including the research,
planning, development and manufacture of prototypes and finished
product working models of all Licensed Product using the Licensed
Process and the Technology to be sold to Licensee or any
Sublicensee. Licensor shall also be responsible for all costs of
obtaining all regulatory and governmental permits and
authorizations as may be required. (b) Licensee shall control the
process for obtaining marketing licenses and approvals for the
Licensed Product and the Licensed Process. Licensee shall bear the
complete costs for obtaining the regulatory and marketing approvals
for the Licensed Product and the Licensed Process including all
costs arising out of or related to modifying or altering any
machine after it has been manufactured to conform to said
requirements. (c) Licensor will in good faith participate in and
provide necessary information, and data which may be necessary for
obtaining regulatory and/or marketing approvals for the Licensed
Product and the Licensed Process, and Licensee agrees to reimburse
Licensor for all commercially reasonable expense incurred by such
participation; provided, however, that all regulatory licenses and
approvals that require modifications to the prototypes or any
existing Licensed Products shall future be at the sole cost and
expense of the Licensor.
ARTICLE IX -
DILIGENCE
(a) Licensor shall use
commercially reasonable efforts in developing, testing, and
manufacturing Licensed Products. Licensee shall use commercially
reasonable efforts in promoting, advertising and selling the
Licensed Products and the Licensed Process under this License
Agreement and in seeking responsible Sublicensees.
(b) Licensor shall use
reasonable efforts, at its expense, to prosecute any patent
applications within the Licensed Field of Use, to obtain patents
thereon and to maintain any such patents.
(c) Licensor shall use reasonable
efforts to submit to the appropriate authority in the United States
and overseas patent claims related to the Patent Rights. Licensor
shall promptly provide Licensee with copies of all patents, patent
applications and other filings and any communications with the
applicable patent office, including without limitation, all office
actions and responses related to the Patent Rights. Licensee shall
have no obligation to contribute, in whole or part, to the costs of
preparing, filing, prosecuting, issuing, defending or maintaining
the patents and patent applications under this Article IX (c),
except as otherwise provided in Article VII (b).
ARTICLE X -
TERMINATION
(a) Upon any breach of or default
under this License Agreement by License, Licensor may terminate
this License Agreement by sixty (60) days' written notice to
Licensee specifying in reasonable detail the nature of the default.
Said notice shall become effective at the end of said period,
unless during said period Licensee shall substantially cure such
breach or default.
(b) If the Licensor dissolves,
becomes insolvent or has a receiver appointed for all or any part
of its property, or makes an assignment for the benefit of
creditors, or voluntarily commences or has filed against it an
involuntary proceeding under any bankruptcy or insolvency laws
which results in the entry of an order for relief or which remains
undismissed, undischarged or unbonded for a period of 60 days or
more, and Licensee is unable to continue to use the license granted
hereunder for the Licensed Process or the Licensed Products, then
(1) the Continuation Application, the Patent Rights, the Technology
and the Trademarks within the Licensed Field of Use shall, ipso
facto , and without any additional documentation become the
property of and ownership and title shall vest in, the Licensee. In
such a case, Licensee shall, subject to applicable federal
bankruptcy and state insolvency laws, be permitted to assume this
Agreement and to perform hereunder, and Licensor shall cooperate in
all respects and furnish all assistance reasonably necessary or
required to enable Licensee to continue to obtain the benefits of
this License Agreement. Licensor hereby irrevocably appoints
Licensee as the Licensor's attorney-in-fact, with full authority in
the place and stead of Licensor and in the name of Licensor or
otherwise, from time to time in Licensee's discretion, upon the
Licensor's failure or inability to do so, to take any action and to
execute any instrument and make any filing with any regulatory
authority or otherwise which Licensee may deem necessary or
advisable to accomplish the purposes of this Agreement,
including:
(i) To modify, in its
sole discretion, this License Agreement without first obtaining
Licensor's approval of or signature to such modification by
amending the definitions of Patents, Patent Rights, Technology and
Trademarks hereof, as appropriate within the Licensed Field of Use,
to include reference to any right, title or interest in any
Patents, Patent Rights, Technology and Trademarks acquired by
Licensor after the execution hereof or to delete any reference to
any right, title or interest in any Patents, Patent Rights,
Technology and Trademarks in which Licensor no longer has or claims
any right, title or interest; and
(ii) To file, in its
sole discretion, one or more financing or continuation statements
and amendments thereto, or filings with the U.S. Patent and
Trademark Office or any similar foreign office performing a similar
function relative to any of the foregoing without the signature of
Licenser where permitted by law.
ARTICLE XI -
ASSIGNMENT
This License Agreement shall not be
assigned by either party without the prior written consent of the
other Party hereto; provided, however, that a change of control of
the Licensee, or its Reorganization with or into a public company
us provided in Article V, regardless of the form of the
Reorganization, shall not be deemed an assignment for purposes of
this License Agreement.
ARTICLE XII -
INFRINGEMENT
(a) (i) In the event that any legal
proceeding shall be instituted or threatened against Licensee or
any of its Sublicenses involving any claim of infringement relating
to the development, manufacture, import, use, purchase or sale of a
Licensed Product, or Licensed Process, Licensee will notify
Licenser thereof. Licensor shall have thirty (30) days after
receipt of the above-mentioned notice to undertake, conduct and
control, through counsel of its own choosing (subject to the
consent of
Licensee, such consent not to be unreasonably withheld) and at its
expense, the settlement or defense thereof, and the Licensee shall
cooperate with Licensor in connection therewith; provided that (i)
Licensor shall not thereby permit to exist any lien, encumbrance or
other adverse charge upon any asset of Licensee; (ii) in the event
it appears likely, in the reasonable judgment of the Licensee, that
different defenses are available to the Licensee or that a conflict
of interest may arise between the Licensee and the Licensor with
respect to such claim, the Licensee shall choose its own counsel,
and the reasonable fees and expenses of such counsel shall be home
by the Licensor; (iii) in the event it appears that no conflict of
interest will arise between the Licensee and the Licensor and the
Licensee desires to choose its counsel, the Licensor shall permit
the Licensee to participate in such settlement or defense through
such counsel chosen by the Licensee, provided that the fees and
expenses of such counsel shall be borne by the Licensee; and (iv)
the Licensor shall agree promptly to reimburse the Licensee for the
full amount of any loss resulting from such claim and all related
expenses incurred by the Licensee. So long as the Licensor is
reasonably contesting any such claim in good faith, the Licensee
shall not pay or settle any such claim. Notwithstanding the
foregoing, and provided that no rights of Licensor are thereby in
any way compromised or infringed, the Licensee shall have the right
to pay or settle any such claim, provided that in such event the
Licensee shall waive any right to indemnity, contribution or any
other form of repayment therefor (however described) by the
Licensor, and reimburse the Licensor for any payments made to the
date of the settlement. If the Licensor does not notify the
Licensee within thirty (30) days after receipt of the Licensee's
notice of a claim of indemnity hereunder that it elects to
undertake the defense thereof, the Licensee or its Sublicensee
shall have the right to contest, settle or compromise the claim in
the exercise of its exclusive discretion at the expense of the
Licensor, and the reasonable costs and expenses (including but not
limited to reasonable attorneys' fees and expenses) incurred by
them in connection with the defense of such claim, at the expense
of Licensor. Licensee shall bill Licensor monthly for all costs and
expenses incurred in the defense of any such claim, and Licensor
shall promptly remit payment of all such bills to Licensee
Licensor's failure to make such payment shall be a material default
under this License Agreement. Licensor shall be entitled to
participate in any such suit or action with its own counsel at its
own expense. In the event of any claim under this Article XII, each
of Licensor and Licensee shall (1) fully cooperate with each other
in connection with any such claim, (2) on reasonable notice have
any of its employees, officers, directors, agents and other
representatives testify when necessary, and (3) on reasonable
notice make available to each other as necessary all relevant
records, specimens, samples and other information in its possession
at its own expense.
(a) (ii) If, as a
result of any such claim described in "(a)" above, Licensee or its
Sublicensee is required by reason of an order of a court,
arbitration board or other similar body or by reason of a
settlement between the parties, to pay a royalty or make other
similar payments to a third party, on if as a result of such claim,
Licensee or its Sublicensee is obligated to pay damages other than
a royalty to a third party, Licensor shall be responsible for all
such damages, and shall defend, indemnify and hold harmless
Licensee with respect thereto.
(b) Licensee, as exclusive
Licensee, shall have the power, but not the obligation, to
institute, prosecute and settle, at its own expense, suits for
infringement of the Patent Rights and/or Licensed Process within
the Licensed Field of Use, and if, required by law, Licensor will
join as parry plaintiff in such suits. Licensee shall be entitled
to all recoveries in such suits.
Licensor shall (1) fully cooperate with Licensee
in connection with any such proceeding, (2) on reasonable notice
have any of its employees, officers, directors, agents and other
representatives testify when necessary, and (3) on reasonable
notice make available to Licensee as accessary all relevant
records, specimens, samples and other information in its possession
all at commercially reasonable expense of Licensee.
(c) In the event that Licensee
declines to pursue any claim of infringement of the Licensed
Patents or Licensed Process brought to its attention by Licensor
within ninety (90) days following written notice from Licensor,
Licensor may thereafter, and at its sole cost and expense, pursue
such infringement independently of Licensee, and shall be entitled
to retain all resulting proceeds or recoveries.
ARTICLE XIII -
GENERAL
(a) This License
Agreement and the Security Agreement, together with the Purchase
Order, constitute the entire agreement between the parties as to
the Licensed Process, the Patent Rights, the Technology and the
Licensed Field of Use, and all prior negotiations, representations,
agreements and understandings, written or oral, are merged into,
extinguished by and completely expressed by it.
(b) Any notice
required or permitted to be given by this License Agreement shall
be given by personal delivery, prepaid overnight courier, prepaid
registered or certified mail addressed to: Licensor: Global
Resource Corporation, 408 Bloomfield Drive., Unit # 1 West Berlin,
NJ 08091, and Licensee: Universal Alternative Fuel, Inc., 1400 Old
Country Road, Suite 206, Westbury, New York 11590.
Such addresses may be altered by
notice so given.
(c) This License
Agreement and its effect are subject to and shall be construed and
enforced in accordance with the law of the State of New York
without giving effect to any applicable conflicts of laws
principles, except as to any issue which by the law of New York
depends upon the validity, scope or enforceability of any patent
within the Patent Rights, which issue shall be determined in
accordance with the applicable parent laws of the country of such
patent.
(d) Nothing in this
License Agreement shall be construed so as to require the
commission of any act contrary to law, and wherever there is any
conflict between any provision of this License Agreement or
concerning the legal right of the parties to contract and any
statute, law, ordinance or treaty, the latter shall prevail, but in
such event the affected provisions of this License Agreement shall
be curtailed and limited only to the extent necessary to bring it
within the applicable legal requirements.
(e) Licensee agrees to take all
reasonable and necessary steps to register this License Agreement
in any country, other than the United States of America, where such
is required to permit the transfer of funds and/or payment of
royalties to Licensee hereunder or is otherwise required by the
government or law of such country to effectuate or carry out this
License Agreement.
(f) It shall be the
full and sole responsibility of Licensor to use appropriate care in
the manufacture of any Licensed Product.
(g) Licensor shall be
required to provide Licensee, at no additional cost, with all
know-how, data, software operating programs, trade secrets,
proprietary information or operating instructions or other
information with respect to any such Licensed Process or Licensed
Product.
(h) Licensee agrees to
indemnify and hold harmless Licensor from and against any and all
claims, damages and liabilities asserted by third parties (whether
governmental or private) arising from Licensee's and Sublicensee's
practice of any Licensed Process or Use or Sale of any Licensed
Product or the use thereof by any third party unless any such
claim, damage or liability arises in whole or in part from the
willful recklessness, negligence or breach of an obligation under
this License Agreement.
(i) As used in this
License Agreement, singular includes the plural and plural includes
the singular, wherever so required by the context. The headings
appearing at the beginning of the numbered Articles hereof have
been inserted for convenience only and do not constitute a part of
this License Agreement.
(j) The Licensee will maintain or
cause to be maintained, with financially sound and reputable
insurers, appropriate products liability insurance with respect to
Licensed Products and Licensed Process in the Licensed Field of Use
against loss or damage of the kinds customarily carried or
maintained by corporations of established reputation engaged in
similar businesses.
ARTICLE XIV - EXTENSION OF
PATENT RIGHTS
(a) Licensor shall
seek any extension that is available or that becomes available in
respect of the term of any patent within the Patent Rights
including any patent that may issue on a patent application within
the Patent Rights.
(b) Upon request
Licensee shall reasonably cooperate with Licensor in seeking any
extension that is available or that becomes available with respect
to the term of any patent within the Patent Rights including any
patent that may issue on a patent application within the Patent
Rights.
(c) Licensee shall
advise Licensor of any governmental approval to use or market
Licensed Products or to practice Licensed Process or any other
governmental approval obtained by or on behalf of Licensee or a
Sublicensee that is material to any such extension, and Licensee
shall supply Licensor with any pertinent information and data in
its possession or that is in the possession of any
Sublicensee.
(d) Licensee shall
supply Licensor with material information and data required to
comply with 35 USC §156 Extension of Patent Term (and any
successor legislation) and any administrative rules or regulation
thereunder or required to comply with any corresponding laws and
regulations that are or shall be in effect in any country within
the Patent Rights. Licensee shall require its Sublicensees to
comply with this Article XIV, and each sublicensing agreement shall
include a clause essentially like this Article XIV.
ARTICLE XV - EFFECTIVE DATE AND
TERM
This License Agreement shall become
effective on the day and year first above written