18
Draft License for Gemini Electric Motor.
THIS AGREEMENT is made this day of 2004 by and
between Gemini Electric Motor Company Pty.Ltd. ( hereinafter referred to as “the
Licensor” which expression shall, where the context admits, include successors and
assigns) of the one part, and (hereinafter referred to as “the Licensee” which expression
shall, where the context admits, include successors and assigns) of the other part.
WHEREAS
A. The Licensor has and is entitled to Patent rights for the invention of an electric
motor and generator represented by the following Patents and Patent Applications
(hereinafter referred to as “Patent Rights”
PCT International Application. PCT/AU 99/00261
International Publication Number. WO99/54990
International Publication Date. 28 October 1999
With a Priority Date of 16th April 1998.
U.S.A. Patent No. US6812615
European Patent No. 1072084
German Patent No. 69915604.1-08
Italy Patent No. 1072084
France Patent No. 1072084
Spain Patent No. EPN. 1-072-084
Chinese Patent No. ZL99805093.8
Japan Application No. 2000-545238
United Kingdom Patent No. 2338840
Australian Patent No. 757966
Indian Application No. 2000/00307/DEL
WHEREAS
B. The Licensee desires to acquire the NON EXCLUSIVE rights and licence to
manufacture and market the electric motor and generator, and to have such
protection as is available and may be provided under the Licensors Patent Rights
to enable the manufacture and sale of the electric motor or generator within the
territorial boundaries of ( nominate countries the license is to cover )
NOW, THEREFORE in consideration of the promises and covenants herein
contained, it is agreed as follows.
1.0 DEFINITIONS
The parties hereto, hereby agree that the following words or phrases shall in this
agreement bear the meaning set against them as follows.
1.01 Technical Information: Technical and all other relevant information
relating to drawings, samples, designs, models, technical data,
techniques and methods of, and practices in, the manufacture of the
Product Line.
1.02 Net Sales Price: The invoiced price exclusive of –
(a) Insurance and packaging charges.
(b) Purchase or sales tax on any other governmental taxes or charges.
(c) (Provided that they are bona fide) trade and other discounts, rebates and
commissions.
(d) Allowances for returned products or parts thereof.
(e) Freight, forwarding agents` and similar charges.
1.03 Affiliate Company: Any company which is a subsidiary of the Licensee or
of which the Licensee is a subsidiary or which is a subsidiary of a company
of which the Licensee is also a subsidiary, where “subsidiary” in each case
bears the meaning ascribed to it in the relevant section of the Companies Act
of the State of incorporation of the Licensee.
1.04 Net Sales: Shall include sales and transfers by the Licensee to its
subsidiaries, divisions, affiliated companies and enterprises controlled by
any of its offices, directors or principal stockholders, and/or the Licensee’s
own uses at the same prices charged for the same or like product to its
regular customers and/or distributors. Sales for the purpose of computing
sales fees due, shall be deemed made when goods are shipped by the
licensee or sub-licensees from their source of manufacture.
1.05 Gemini Electric Motor or Generator: Refers to any rights afforded to the
Patent Rights for the Patents and Patent Applications referred to above for
an Electric Motor or Generator.
1.06 Licensor: Refers to Gemini Electric Motor Company Pty. Ltd.
acn No. 092 633 246 the holder of a sole manufacturing and Licensing
agreement for the Patent Rights to the Gemini Electric Motor.
1.07 Licence: Will be a non-exclusive licence for the manufacture and sale of
the Gemini Electric Motor or Generator. The licence cannot be transferred
to another licensee without the written permission of the licensor first had
been obtained.
1.08 Licensee: Refers to .( name of company to whom the license is issued )
2.00 GENERAL TERMS AND CONDITIONS
The Licensor will:
2.01 Grant to the Licensee a licence which will provide non-exclusive use of the
patents, know-how and the right to manufacture and sell the Gemini Electric
Motor or Generator in ( countries license is to cover ) on the terms and
conditions hereinafter set forth.
2.02 Convey to the Licensee all Technical Information which is available and is
in its possession, pertaining to the Gemini Electric Motor, and hereby grants
to the Licensee an non-exclusive right and licence to make use thereof in the
manufacture and sale of the Gemini Electric Motor in ( countries license is
to cover ), as hereinafter provided.
2.03 Supply all such promotional, advertising and sales literature as may be
produced by or for the Gemini Electric Motor and required by the Licensee
at cost to the Licensee.
2.04 Maintain the ( patents in the countries covered by this license )
2.05 Use its best endeavours to assist the Licensee in adapting its designs and
methods of manufacture of the Gemini Electric Motor so as to meet the
standards and market requirements normally applicable in ( the countries
covered by this license ).
2.06 The non-exclusive license can not be sold or transferred to another Licensee
without the written permission of the Licensor first had been obtained. Such
written permission will not be unreasonably withheld, but commercial
consideration of the Licensor will be paramount, and the ability of the
proposed new licensee to fulfil the terms of this licence play an important
consideration in the giving of written approval of the transfer of the licence.
2.07 This licence does not give the licensee the right to grant sub-licences, and
the granting of sub-licences is forbidden under this licence.
The Licensee will:
2.06 Make an initial payment of an amount of US$100,000 on the signing of
this agreement.
2.07 In addition to the aforementioned initial payment fees the Licensee will pay
to the Licensor a royalty amounting to 5% of the net sales price as defined
herein. The Licensor’s claim to these royalties will arise at the time of
invoicing by the Licensee to their customers.
2.08 Extend every reasonable effort to enter into and continue manufacture and
sales of the Gemini Electric Motor sufficient to provide an annual licensing
fee of at least US$100,000 and make annual payments of not less than
such amount, If the amount paid in the calendar year is less that
US$100,000 an amount to make up the difference to the minimum
US$100,000 will be due and payable on the anniversary date of that year.
2.09 Have a licence to use any drawings for the purpose of this agreement only
and the copyright in the same shall remain vested in the Licensor.
2.10 Treat all Technical Information and drawings disclosed in confidence by
the Licensor by virtue of this agreement as confidential unless and until the
same is published by the disclosing party or is contained in a published
patent specification or is in the public domain otherwise than by breach of
this agreement, or such disclosure occurred by its use in the products
manufactured by the receiving party to its customers or users of the products
in connection with the receiving parties normal sales, demonstration and
service activities including supplying copies of Technical Information.
The obligations under this sub-section shall remain after the termination of
this licensing agreement.
3.00 TECHNICAL ASSISTANCE AND SERVICE
3.01 The Licensor will furnish to the Licensee without charge to the Licensee one
working prototype, one set of reproducible drawings of the Gemini Electric
Motor or Generator, including material specifications, and performance
specifications. In addition the Licensor will furnish Technical Information in
its possession which is pertinent to the manufacture of the Gemini Electric
Motor or Generator by the Licensee.
3.02 When requested by the Licensee, the Licensor will advise the Licensee, to
the best of its ability, by consultation or by correspondence, relative to the
Licensee’s manufacturing or engineering problems in connection with the
manufacture of the Gemini Electric Motor or Generator.
3.03 The Licensor agrees to allow the Licensee to periodically send the
Licensee’s engineers and technicians at the Licensee’s expense to the
Licensor’s factory for the purpose of studying manufacturing methods
Employed in producing the Gemini Electric Motor.
3.04 Upon request, the Licensor is prepared to offer counsel regarding the
Licensee’s promotion, sales and service activities. Such counsel will be
Extended by correspondence or during visits scheduled by the Licensor’s
representative.
4.00 CHANGES AND IMPROVEMENTS
4.01 The Licensor will inform the Licensee of changes and improvements in
design and production which are pertinent to the Licensee’s manufacturing
program for the Gemini Electric Motor and related parts, but the Licensee
will not be obliged to adopt same unless the principle of quality standards is
involved.
4.02 The Licensee shall, in event it makes, owns or controls ( in the sense of
having power to grant licenses or immunities thereon or thereunder ) any
invention, discovery or improvement upon the Gemini Electric Motor, as
covered by this agreement, promptly advise the Licensor thereof and, if
requested by the Licensor, as soon thereafter as reasonably practicable,
furnish to the Licensor, f.o.b. the Licensee’s factory, a complete description
thereof in one complete set of Technical Information in connection
therewith.
If the Licensee or any of its officers or employees files and application for
Patent on any such invention or improvement and the patent is issued
thereon in the China, or elsewhere, then the Licensee will, upon request by
the Licensor grant to the Licensor a non-exclusive right and licence to
employ such invention, discovery or improvement with the right to license
others for manufacturing, use and sale there under.
4.03 The Licensor shall make available to the Licensee all Technical Information
and protective rights under Patents Designs and Trade Marks, relative to the
Gemini Electric Motor, which are acquired by, from or through others of its
licensees under provisions similar to sub-section 4.02 above as part of the
licensed Technical Information and Rights of the present agreement.
4.04 The discontinuance of manufacture by the Licensor of any products of
Gemini Electric Motor or Generator shall relieve the Licensor of direct
obligation of providing engineering and consulting services as regards
subsequent engineering and manufacturing problems of the Licensee in
regard thereto but shall not otherwise change or affect the present agreement.
The Licensor will however make every endeavour to assist with superseded
Equipment if it is preferable to continue with it in the Licensee’s area or if
the engineering services required of the Licensor by the Licensee are in
respect of plant already in existence.
5.00 MAINTENANCE OF QUALITY
5.01 The Licensee agrees that the Gemini Electric Motor and parts therefore
manufactured hereunder shall follow the drawings and specifications
furnished by the Licensor and that no major changes will be made therefrom
without the prior written approval of the Licensor. The Licensor recognises
that variations in materials available in ( the countries this license covers )
may require some deviations and that market demands may require the
Licensee to manufacture products that differ in size and features from
prescribed specifications and agrees to consider all requests for deviations in
the light thereof.
5.02 In its manufacture of the Gemini Electric Motor and any product bearing
licensed Trade Marks the Licensee agrees to maintain the quality standards
set therefore by the Licensor. The Licensee further agrees that –
(a) It will permit representatives of the Licensor to inspect its operations
For the purpose of ascertaining that the Licensor’s quality standards are
maintained and
(b) At the request of the Licensor it will make available thereto annually
without charge, f.o.b. the Licensee’s plant one sample of each Gemini
Electric Motor produced by the Licensee for testing and examination as
to performance and quality.
6.00 FEES AND REPORTS
6.01 All fees required to be paid to the Licensor shall be paid in U.S. Dollars to
such depository in Australia or elsewhere as shall be designated by the
Licensor.
6.02 Licence fees due hereunder shall be computed and paid quarterly within
30 days following the close of each calendar quarter and commencing with
the first quarter of the first year of production shall not be less than one-
fourth of the minimum annual fee provided under 2.08.
6.03 The Licensee shall furnish to the Licensor two copies of a statement of
operations covering each quarterly accounting period and which shall
include the net sales by general product classification in both physical
quantities and money and the computation of the fee and shall be certified
by independent chartered or certified public accountants by the Licensee and
acceptable to the Licensor.
Provided that the Licensor will have the right to have an audit made
independently of the public accountant selected by the Licensee, the
Licensor will pay all expenses connected therewith.
6.04 The Licensor or its duly authorised representative shall have the right at any
reasonable time during business hours to inspect and audit the records of the
Licensee relating to the manufacture, sale or disposal of the Gemini Electric
Motor or Generator and of the net and gross sales price and all other matters
relevant to the calculation of the amount of royalties due. Such
representatives shall be entitled to take copies or extracts from any such
records.
6.05 The fees payable hereunder shall be remitted to the Licensor in U.S. Dollars
less annual income taxes, if applicable and required to be withheld under the
laws of Australia as effected by the terms of any reciprocal arrangements by
treaties which may exist between China and Australia.
7.00 ACTIONS AND INFRINGEMENTS UNDER PATENTS ACT
7.01 The Licensor will have sole discretion as to what action it will take against
infringements of its patents and patent rights, with regards to possible legal
costs and commercial considerations.
7.02 The Licensee will inform the Licensor if he/she should become aware of any
possible infringements of the patent rights and if the Licensor decides to
take no action the Licensee must indemnify the Licensor of any
infringement actions it may decide to commence on it own behalf in a court
of competent jurisdiction.
7.03 The Licensee will inform the Licensor if he/she should be sued for breach of
a patent. The Licensee shall give the Licensor the opportunity to involve