Attached files
| file | filename |
|---|---|
| S-1/A - MANTHEY REDMOND Corp | v165393_s1a.htm |
| EX-10.2 - MANTHEY REDMOND Corp | v165393_ex10-2.htm |
| EX-10.3 - MANTHEY REDMOND Corp | v165393_ex10-3.htm |
| EX-23.1 - MANTHEY REDMOND Corp | v165393_ex23-1.htm |
PATENT
LICENSING AGREEMENT BETWEEN MANTHEY REDMOND CORPORATION AND MANTHEY REDMOND
(AUST) PTY LIMITED
THIS
AGREEMENT is made on May 1, 2009.
BETWEEN:
MANTHEY REDMOND (AUST) PTY LTD
(“the
owner”),
AND
MANTHEY REDMOND CORPORATION
(“the
licensee”),
(hereinafter
collectively the “Parties”)
WITNESSETH:
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A.
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WHEREAS,
the owner is the registered proprietor of or applicant for the
Patents.
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B.
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The
owner is willing to grant to the Licensee, and the Licensee is willing to
accept, a licence under the Patents in accordance with the provisions of
this Agreement.
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WHEREBY
IT IS AGREED:
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1.
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Definitions
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In this
Agreement the following words shall have the following meanings:
“Commencement
Date”
July 1, 2009
“Invention”
the invention claimed in the Patents;
“Licensed
Products”
any and all products that are manufactured by the Licensee or its sub-licensee
and are within any of the claims of the Patents;
“Parties”
the Owner and the Licensee, and “Party” shall mean either
of them;
“Patents”
any and all of the patents that are, or will be granted in the future based on
the description of invention referred to in schedule 1, including any
continuations, continuations in part, extensions, reissues, divisions, and
including any patents, supplementary protection certificates and similar rights
that are based on or derive priority from the foregoing;
“Supply”
any disposition of Licensed Products whether under a contract of sale, hire,
leasing or otherwise, including the supply by the Licensee to itself for its own
use, but excluding the supply to itself for the purposes of supply to
others;
“Territory”
any territory in which the Owner holds a patent or has made application for a
patent to protect the invention referred to in the patents.
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2.
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Grant
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1.
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Licence
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The Owner
hereby grants to the Licensee, subject to the provisions of this Agreement and
payment as set out in clause 3, a license under the Patents with the right to
sublicense, subject to clause 2.3 below, to develop, manufacture, have
manufactured, use and sell or supply Licensed Products in the
Territory.
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2.
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Formal
licences
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The
Parties shall execute such formal licences as the Licensee’s patent advisers
consider may be necessary or appropriate for registration with Patent Offices
and other relevant authorities to particular territories.
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3.
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Sub-licensing
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The
Licensee shall be entitled to grant sub-licences of its rights under this
Agreement to any person provided that:
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a.
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the
sub-licence shall include obligations on the sub-licensee which are
equivalent to the obligations on the Licensee under this
Agreement;
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b.
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the
sub-licence shall terminate automatically on the termination of this
Agreement for any reason;
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c.
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within
30 days of the grant of any sub-licence the Licensee shall provide to the
owner a true copy of it; and
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d.
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the
Licensee shall be responsible for any breach of the sub-licence by the
sub-licensee, as if the breach had been that of the Licensee under this
Agreement, and the Licensee shall indemnify the Owner against any loss,
damages, costs, claims or expenses which are awarded against or suffered
by the Owner as a result of any such breach by the
sub-licensee.
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4.
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Information and
Improvements
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Upon
execution of this agreement by the Parties and upon the execution of a
confidentiality agreement by the Licensee, the Owner shall:
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a.
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Inform,
if requested, the Licensee of all technical information concerning the
Inventions known to the Owner;
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b.
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supply
the Licensee with any documents or drawings relevant to the Inventions;
and
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c.
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License
the Licensee to use such documents, drawings and technical
information.
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2.
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If
during the continuation of this Agreement the Owner shall develop or
discover any improvement to the Invention (“Improvement”), the Owner
shall promptly notify the Licensee and provide full details to the
Licensee.
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3.
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At
the request of the Licensee, the Owner shall grant to the Licensee a
royalty-free licence to make use of any
improvement(s).
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5.
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No other
licence
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It is
acknowledged and agreed that no licence is granted by the Owner to the Licensee
other than the licence expressly granted by the provisions of this clause
2.
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6.
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Quality
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The
Licensee shall ensure that all of the Licensed Products marketed by it and its
sub-licensees comply with all applicable laws and regulations in each part of
the Territory.
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7.
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Patent
markings
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The
Licensee shall mark or cause to be marked in a legible manner on some
conspicuous part of the Licensed Products (or if this is not possible on the
packaging of the Licensed Products) words indicating, as applicable, either that
patents have been applied for or patents have been granted in respect of the
Licensed Product and giving the relevant patent application number(s) or patent
number(s).
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3.
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Payments
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1.
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Initial
Payment
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The
Licensee is not required to pay an initial payment.
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2.
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Royalties
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The
Licensee is required to pay a royalty equal to 5% of its gross annual profits
earned as a result of this licence.
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4.
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Intellectual
property
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1.
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Obtain and maintain
Patents
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The Owner
shall, at the costs and expense to be paid by the Licensee for the duration of
this agreement:
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a.
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endeavour
to obtain valid patents pursuant to each of the patent applications based
on the invention described in Schedule 1(or improvements thereto) so as to
secure the broadest monopoly reasonably available;
and
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b.
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pay
all renewal fees in respect of the Patents as and when
due.
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c.
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Pay
all costs necessary to ensure the Owner maintains ownership of all patents
for the duration of this agreement.
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Infringement
of the Patents
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1.
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Each
Party shall inform the other Party promptly if it becomes aware of any
infringement or potential infringement of any of the Patents, and the
Parties shall consult with each other to decide the best way to respond to
such infringement.
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2.
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If
the Parties fail to agree on a joint programme of action, including how
the costs of any such action are to be borne and how any damages or other
sums received from such action are to be distributed, then the Licensee
shall be entitled to take action against the third party at is sole
expense and it shall be entitled to all damages or other sums received
from such action, after reimbursing the Owner for any reasonable expenses
incurred in assisting it in such action. The Owner shall agree to be
joined in any suit to enforce such rights subject to being indemnified and
secured in a reasonable manner as to any costs, damages, expenses or other
liability and shall have the right to be separately represented by its own
counsel at its own expense. After recovery of the Owner’s and the
Licensee’s costs of
taking such action, any net sum recovered by the Licensee from a third
party infringer shall be treated as if it were the Net Sales Value of
Licensed Products on which the Licensee shall pay royalties to the Owner
in accordance with the provisions of this
Agreement.
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2.
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Infringement of third party
rights
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1.
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If
any warning letter or other notice of infringement is received by a Party,
or legal suit or other action is brought against a Party, alleging
infringement of third party rights in the manufacture, use or sale of any
Licensed Product or use of any Patents, that Party shall promptly provide
full details to the other Party, and the Parties shall discuss the best
way to respond.
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2.
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The
Licensee shall have the right but not the obligation to defend such suit
and shall have the right to settle with such third party, provided that if
any action or proposed settlement involves the making of any statement,
express or implied, concerning the validity of any Patents, the consent of
the Owner must be obtained before taking such action or making such
settlement.
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3.
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The
Licensee shall be entitled to deduct from royalties payable under this
Agreement any sums paid to third parties (including without limitation
damages, payments in settlement of litigation and royalty payments) and
costs and expenses incurred in relation to any alleged or actual
infringement of third party rights in the manufacture, use or sale of any
Licensed Product.
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5.
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Warranties and
liability
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1.
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The
Owner warrants, represents and undertakes to the Licensee as
follows:
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a.
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it
is the exclusive legal and beneficial owner of all rights, title and
interest in the Patents;
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b.
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Schedule
1 is a complete description of the invention (as at the date of this
Agreement) and of other intellectual property of which the Owner is aware
relating to the Invention;
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c.
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The
Owner is entitled to license the Patents to the Licensee and has not
previously entered into any agreement relating to them or to the
Invention, which might affect its ability to license the Patents to the
Licensee in accordance with the provisions of this Agreement or enter into
this Agreement or which would be inconsistent with the Owner’s warranties
and obligations under this
Agreement;
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d.
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It
is registered as the proprietor of the Patents (or, in the case of patent
applications, as the applicant), all registrations and filings necessary
to preserve the rights of the Owner have been made and are in good
standing, and the Owner has not done or omitted to do anything which may
cause the Patents to lapse prematurely or be the subject of a compulsory
licence;
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e.
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It
is not aware of any allegation or claim that it is not entitled to the
Patents or to be registered as the exclusive owner of
them;
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f.
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The
Patents are or will be upon grant valid and
enforceable;
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g.
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There
are no allegations or proceedings, pending or threatened, which assert
that development, manufacture, use or sale of any Licensed Product
infringes or will infringe third party rights or which challenge the
validity or enforceability of the
Patents;
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2.
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No other
warranties
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1.
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Each
of the Licensee and the Owner acknowledges that, in entering into this
Agreement, it does not do so in reliance on any representation, warranty
or other provision except as expressly provided in this Agreement, and any
conditions warranties or other terms implied by statute or common law are
excluded from this Agreement to the fullest extent permitted by
law.
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2.
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Without
limiting the scope of clause 5.2.1, the Owner does not give any warranty,
representation or undertaking:
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a.
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as
to the efficacy or usefulness of the Patents;
or
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b.
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that
any of the Patents are or will be valid or subsisting or (in the case of
an application) will proceed to
grant.
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3.
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Indemnity
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The
Licensee shall indemnity the Owner against any loss, damages, costs or expenses
which are awarded against or incurred by the Owner as a result of any claim or
threatened claim concerning the use by the Licensee or any of its sub-licensees
of the Patents or otherwise in connection with the manufacture, use or sale of
or any other dealing in any of the Licensed Products by Licensee or any of its
sub-licensees.
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6.
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Duration and
Termination
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1.
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Commencement and Termination
by Expiry
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This
Agreement, and the licences granted hereunder, shall come into effect on the
Commencement Date and, unless terminated earlier in accordance with this clause
6, shall continue in force on a country by country basis until the date on which
all the Patents have expired or been revoked without a right of further appeal,
and on such date this Agreement and the licences granted hereunder shall
terminate automatically by expiry.
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2.
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Early
termination
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1.
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The
owner and Licensee may only terminate this agreement in writing signed by
duly authorised representatives of the Owner and the
Licensee.
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2.
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The
Owner may terminate this Agreement if an external administrator or
controller is appointed to control the Licensee (irrespective of whether
the appointment is voluntary or on an Order by a Court or an authorised
regulatory body), or the Licensee becomes insolvent, or the Licensee seeks
protection from its creditors under any Federal or State insolvency law
enacted in the United States of
America.
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7.
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General
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1.
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Force
majeure
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Neither
Party shall have any liability or be deemed to be in breach of this Agreement
for any delays or failures in performance of this Agreement which result from
circumstances beyond the reasonable control of that Party, including without
limitation labour disputes involving that Party.
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2.
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Amendment
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This
Agreement may only be amended in writing signed by duly authorised
representatives of the Owner and the Licensee.
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3.
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Assignment and third party
rights
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Neither
party shall assign, mortgage, charge or otherwise transfer any rights or
obligations under this Agreement, nor any of the Patents or rights under the
Patents, without the prior written consent of the other Party.
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4.
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Waiver
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No
failure or delay on the part of either Party to exercise any right or remedy
under this Agreement shall be construed or operate as a waiver thereof, nor
shall any single or partial exercise of any right or remedy preclude the further
exercise of such right or remedy.
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5.
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Invalid
clauses
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If any
provision or party of this Agreement is held to be invalid or unenforceable,
this Agreement shall be deemed to be amended by the addition or deletion of
wording as appropriate to remove the invalid part or provision but otherwise to
retain the provision and the other provisions of this Agreement to the maximum
extent permissible under applicable law.
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6.
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No-agency
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Neither
Party shall act or describe itself as the agent of the other, nor shall it make
or represent that it has authority to make any commitments on the other’s
behalf.
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7.
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Interpretation
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In this
Agreement:
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a.
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the
headings are used for convenience only and shall not affect its
interpretation;
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b.
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references
to persons shall include incorporated and unincorporated persons;
reference to the singular include the plural and vice versa; and
references to the masculine include the
feminine.
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8.
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Notices
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Any
notice to be given under this Agreement shall be in writing and shall be sent by
first class mail or air mail, or by fax (confirmed by first class mail or air
mail), to the address of the relevant Party, or to the relevant fax number
utilised by the relevant Party.
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9.
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Law and
Jurisdiction
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The
validity, construction and performance of this Agreement shall be governed by
the law of Queensland, Australia.
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10.
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Further
action
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Each
Party agrees to execute, acknowledge and deliver such further instruments, and
do all further similar acts, as may be necessary or appropriate to carry out the
purposes and intent of this Agreement.
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11.
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Entire
agreement
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This
Agreement, including its Schedules, sets out the entire agreement between the
Parties relating to its subject matter and supersedes all prior oral or written
agreements, arrangements or understandings between them relating to such subject
matter. The parties acknowledge that they are not relying on any representation,
agreement, term or condition which is not set out in this
Agreement.
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12.
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This
agreement is a deed.
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IN
WITNESS the Parties hereto have duly executed this Agreement on the date first
above written:
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EXECUTED
BY
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MANTHEY
REDMOND CORPORATION
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)
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By
its duly authorised officer
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)
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Steven
Charles Manthey- President
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EXECUTED
BY
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MANTHEY
REDMOND (Aust)
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PTY
LTD
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)
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by
its duly authorised officer
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)
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Steven
Charles Manthey- Director
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SCHEDULE
1
The
Linear Convergent Engine invented by Steven Charles Manthey