Form Date: 5 June 2009
United States of America
Spring Compactor - Up to Three Each
PROTOTYPES LICENSE AGREEMENT
TABLE OF CONTENTS
Section 1. - Definitions
Section 2. - Grant of License
Section 3. - Disclaimer
Section 4. - Due Diligence
Section 5. - Payments
Section 6. - Defaults
Section 7. - Assignment of Rights
Section 8. - Notices
Section 9. - No Waiver
Section 10. - Entirety of Agreement
Section 11. - Marking
Section 12. - Force Majeure
Section 13. - Governing Law
Section 14. - Headings in this Agreement
Section 15. - Severability
Section 16. - Term and Termination
Section 17. - Consultations
Appendix A - Best Rendition of Spring Compactor Invention
This License Agreement ("Agreement") is for limited to production rights for producing up to three prototypes of the Spring Compactor Invention for product development and market evaluation made effective as of _____________ (Date), by and between _________________________ ("Manufacturer"Manufacturer/Investor (Licensee)) and Cecil Ray Taylor, owner of the license ("Licensor" and "Inventor").
1.0. Definitions.
1.1. "Patent Pending" means that a U.S. Patent has been applied for but not yet granted via the United States Patent and Trademark Office..
1.2. "Valid Claim" means a claim in a Licensed Patent, including a pending patent application, an unexpired Licensed Patent or one whose expiration date has been extended by law, so long as such claim shall not have been held invalid in an unappealed or unappealable decision of a court or other authority of competent jurisdiction.
1.3. "Product" when used in this agreement, means "The Spring Compactor Invention machine."
1.4. "Foreign" when used in this agreement, means "A country other than the United States of America."
1.5. "Licensed patent rights," when used in this agreement, means the specific patent rights being transferred via this agreement from the Licensor to the Licensee as limited via Section 2.3. below.
2.0. Grant of License.
2.1. Manufacturer/Investor (Licensee) wishes to manufacture up to three prototypes of the Inventor's (Licensor's) Spring Compactor Invention as a component or in its entirety and Licensor wants Licensee to do so. Both parties are familiar with the business of the other and therefore enter into this Exclusive Agreement for production of up to three prototypes of the Spring Compactor Invention machine.
2.2. NOW, THEREFORE, in consideration of the mutual covenants and agreements set forth below, the parties covenant and agree as follows:
2.3. Licensor grants Licensee an exclusive license to produce up to three prototypes of the Spring Compactor Invention machine subject to the limitations specified as follows with regards to territory and other matters: territory is limited to the United States of America and its Possessions subject to the United States Patent Law and this agreement is limited to the production of up to three prototypes of the Spring Compactor Invention machine. The subject of this license is described in Exhibit A and the best likeness or sample available is also attached to that Exhibit.
2.4. The Licensee retains the right, with or without cause, to drop the product or products at any time without having any recourse to recover any monies already paid to Licensor but with no more responsibility to pay the Licensor any more money other than as strictly due under the last quarter sales made of the product or products in question via the Licensee or any Sub-licensee of the Licensee. This inalienable right to give up is an integral part of the Licensee's motivation to enter into this Agreement and therefore expects any Court of competent jurisdiction to honor this right as the full and complete intent of the parties.
2.5. If the Licensee and all of its Sub-licensees stop(s) producing the prototypes as indicated by the Licensee in writing to the Licensor, and exerts its rights under this clause in writing to the Licensor, all rights revert to the Licensor as long as the Licensor takes no further legal or collection action against the Licensee. This clause is intentionally in favor of the Licensee in order to induce them to enter into this Agreement and undertake their responsibilities under this Agreement.
2.6. Licensee agrees that it shall not make, use, have made, offer for sale, sell, export or import Licensor's Spring Compactor Invention machine except as permitted under this Agreement.
2.7. Licensee agrees that Licensee and any Sub-Licensee shall, throughout the Term, obtain and maintain, at its own expense, and shall at all times comply, through insurance or self-insurance, with all statutory workers' compensation and employers' liability requirements or their equivalents - covering any and all employees with respect to activities performed under this Agreement. In addition to the foregoing, Locemsee and any Sub-Licensee shall maintain, during the term of this Agreement, Comprehensive General Liability Insurance, including Products Liability Insurance, with reputable and financially secure insurance carrier(s) to cover the activities of Licensee and any Sub-Licensee. Such insurance shall be written to cover claims incurred, discovered, manifested, or made during or after the expiration of this Agreement.
2.8. Licensor retains the right and at its option may file at its own expense and for its separate benefit in any country other than the United States a patent application corresponding to any U.S. patent application included in the "licensed patent rights," except that the Licensee upon a one time non-refundable payment of $35,000/country (Price subject to change without notice.) shall cause the Licensor to file such foreign application in the country of _________ and that patent pending application shall become a part of this agreement with exclusive patent rights ownership going to the Licensee in said country.
3.0. Disclaimer.
3.1. Licensor shall endeavor to ensure that all of its Information is accurate. Licensor gives no warranties and makes no representations with respect to the accuracy, currency, or completeness of its Information. All representations and warranties, expressed and implied, including but not limited to any warranty of merchantability or fitness for a particular purpose are hereby expressly excluded by Licensor. Licensor shall not be held liable to the Licensee or to any other party for any inaccuracies, errors, or omissions contained in its Information or for any loss of profits or special indirect or consequential damages suffered by the Licensee or any other third party, whether or not due to reliance placed by the Licensee or third party on any statements of fact, regardless of validity, or expression of opinions contained in the Information.
4.0. Due Diligence.
4.1. Licensee and any Sub-Licensee is(are) responsible for performing its(their) own Due Diligence study(ies) prior to entering into this agreement and/or any sub-agreements hereto to identify local (For each recycling facility.) operating fees to include at a minimum permits, insurance and taxes..
4.2. Licensee and any Sub-Licensee is(are) responsible for performing its(their) own Due Diligence study(ies) that will identify local operation and maintenance fees.
4.3. Licensee and any Sub-Licensee is(are) responsible for performing its(their) own Due Diligence study(ies) that will identify any local manufacturing zoning requirements to include compliance with all environmental laws.
5.0. Payments.
5.1. Licensee will pay Licensor a one time royalty fee of $_____ to produce up to three prototypes of the Spring Compactor Invention machine, which is due and payable at the signing of this agreement via the Licensee.
5.2 Purposely omitted.
5.3. Should Licensee elect to sell their one, two or three Spring Compactor Invention prototype machines to a third party, beginning with Patent Pending and during the term of the patent, Licensee pays licensor 15% royalty of the sales price of the machine produced and sold excluding machine transportation and installation costs and any state or federal government imposed taxes on the sale of the machine. This payment only applies if and when the Licensee elects to sell
their Spring Compactor Invention prototype machines to a third party.
5.4. At all times during the term of this agreement - to include prototype prove out beyond 1000 mattresses - a license fee determined as follows:
| Spring Compactor Machine License Fee Table
All fees are in 2009 Value *** United States Dollars (USD) |
| Scrap Steel Price |
Patent Rights
Owner's
Fee/Mattress** |
Inventor's Fee
From Owner's
Fee/Mattress** |
| From $0.01 to $114.99 per Ton * |
$0.10 |
$0.05 |
| From $115.00 to $169.99 per Ton * |
$0.20 |
$0.10 |
| From $170.00 to $229.99 per Ton * |
$0.30 |
$0.15 |
| From $230.00 to $284.99 per Ton * |
$0.40 |
$0.20 |
| From $285.00 to $339.99 per Ton * |
$0.50 |
$0.25 |
| From $340.00 to $399.99 per Ton * |
$0.60 |
$0.30 |
| From $400.00 to $454.99 per Ton * |
$0.70 |
$0.35 |
| From $455.00 to $514.99 per Ton * |
$0.80 |
$0.40 |
| From $515.00 to $569.99 per Ton * |
$0.90 |
$0.45 |
| From $570 and up per Ton * |
$1.00 |
$0.50 |
*USD dollars per ton based upon actual machine output of number one steel, number two steel, general steel, or other steel classification. average scrap price for the quarter being reported and in the market area of actual sale of the scrap steel.
**Only applies to mattresses with steel springs that are processed using the Spring Compactor Machine.
** Inflation/deflation over time will alter the amounts shown to the current year of payment value.
5.5. Payment shall be due 15 Days after the end of each quarter. A written license fee report shall accompany each payment. Should the Licensee sell one of the Prototypes to a third party, the next quarterly report following the sale shall include a Royalty payment and Royalty report.
6.0 . Defaults.
6.1. If Licensee fails to abide by the obligations of this Agreement, including the obligation to make a royalty payment and/or licensing payment when due, Licensor shall have the option to cancel this Agreement by providing 30 days written notice to Licensee and permitting them another 30 Days to cure. Licensee shall have the option of preventing the termination of this Agreement by taking corrective action that cures the default, if such corrective action is taken prior to the end of the time period stated in the previous sentence, and if there are no other defaults during such time period.
7.0. Assignment of Rights.
7.1. Either party may assign their rights to this Agreement to any other party. This assignment will not relieve the assigning party of their responsibilities under this Agreement. The assigning party should, as a courtesy, notify the other party of the assignment. This responsibility remains a "courtesy only" because the assignor remains fully and completely responsible for all their duties prior to assignment.
8.0. Notices.
8.1. Any notice required by this Agreement or given in connection with it, shall be in writing and shall be given to the appropriate party by personal delivery or a recognized over night delivery service such as FedEx.
8.2. If to the Licensee:
____________________________________________________.
8.3. If to the Licensor: Cecil Ray Taylor, 601 W. 23rd St S, Independence, MO 64055-1101, USA.
9.0. No Waiver.
9.1. The waiver or failure of either party to exercise in any respect any right provided in this agreement shall not be deemed a waiver of any other right or remedy to which the party may be entitled.
10.0. Entirety of Agreement.
10.1. The terms and conditions set forth herein constitute the entire agreement between the parties and supersede any communications or previous agreements with respect to the subject matter of this Agreement. There are no written or oral understandings directly or indirectly related to this Agreement that are not set forth herein. No change can be made to this Agreement other than in writing and signed by both parties.
11.0. Marking.
11.1. Prior to the issuance of patents on the Invention, LICENSEE agrees to mark Licensed Products (or their containers or labels) made, sold, or otherwise disposed of by it under the license granted in this Agreement with the words "Patent Pending," and following the issuance of one or more patents, with the numbers of the Licensed Patent.
12.0. Force Majeure.
12.1. Neither party will be under any liability for any loss or any failure to perform any obligation under this Agreement due to causes beyond their control including, but not limited to, acts of God; war; riot; civil commotion; compliance with any law or governmental order, rule regulation or direction; accident; fire; flood or storm.
13.0.. Governing Law.
13.1. This Agreement shall be construed and enforced according to the laws of the State of Missouri and/or The United States and any dispute under this Agreement must be brought in one of these venues and no other.
14.0. Headings in this Agreement
14.1. The headings in this Agreement are for convenience only, confirm no rights or obligations in either party, and do not alter any terms of this Agreement.
15.0. Severability.
15.1. If any term of this Agreement is held by a court of competent jurisdiction to be invalid or unenforceable, then this Agreement, including all of the remaining terms, will remain in full force and effect as if such invalid or unenforceable term had never been included.
16.0. Term and Termination
16.1. This agreement and the license granted by it shall automatically terminate upon either 1.) Eighteen months from the date of signing if the Licensee elects to destroy the Prototypes, or 2.) the Expiration of the last to expire of all the U.S. and foreign patents included within the "licensed patent rights," and there are no longer any pending U.S. or foreign patent applications included within the "licensed patent rights."
17.0. Consultations
17.1. Licensors shall make themselves available, upon written request of the Licensee, at the earliest opportunity consistent with the responsibilities of their employment, to consult with Licensee at one of the Licensee's places of business at no charge to Licensee except that the latter shall reimburse Licensors for travel expenses and reasonable expenditures for food and lodging.
In Witness whereof, the parties have executed this Agreement as of the date first written above.
|
___________________
Licensee
___________________
Date |
___________________
Cecil Ray Taylor
___________________
Date |
Exhibit A: Material or Materials to Be Licensed; Best Rendition Available also attached. Spring Compactor Invention Patent Pending Application pages on this web site are our current best rendition.
