EXECUTION VERSION
ADDENDUM TO EXCLUSIVE LICENSE
AGREEMENT
THIS
ADDENDUM TO EXCLUSIVE LICENSE AGREEMENT (this “Addendum”) is entered into on
this 30th day of March, 2009 (the “Addendum Effective
Date”), by and between PTJ Bioenergy Holdings Ltd., a company
organized and existing under the laws of the Republic of
Cyprus (“Licensor”) and New Generation Biofuels,
Inc., a Delaware corporation (formerly known as H2Diesel, Inc.),
having its principal offices located at 1000 Primera Blvd., Suite
3130, Lake Mary, Florida, 32746 (the
“Licensee”).
RECITALS
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A.
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Licensor (as
successor by assignment to Ferdinando Petrucci, an individual
residing at Via Stazione, 133A, Arce [Frosinone], Italy) and
Licensee are parties to that certain Exclusive License Agreement,
dated 20 March, 2006 (as amended, supplemented or otherwise
modified to the Addendum Effective Date in accordance with its
terms, the “License”). Capitalized terms
used and not separately defined in this Addendum (including these
recitals) shall have the meanings given in the License.
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B.
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Licensee and
Licensor now wish to set forth the terms and conditions of the
‘cross-licensing arrangement’ referenced at Section
13(b) of the License with respect to Product Improvements made by
Licensee.
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NOW,
THEREFORE , in
consideration for the mutual covenants and promises contained in
this Addendum and other good and valuable consideration, the
receipt and sufficiency of which are hereby acknowledged, the
parties hereto agree as follows:
1. ROYALTY; PAYMENT; RECORDKEEPING AND AUDIT
RIGHTS.
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a.
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Royalty . In consideration of the rights in Product
Improvements granted to Licensor pursuant to Section 13(b) of the
License, Licensor agrees to pay to Licensee, a royalty (the
“Royalty”) determined as follows (a) for sales outside
the Territory, five percent (5%) of the difference of (i) gross
revenues realized from such sales, whether realized by Licensor,
its affiliates or agents less (ii) direct expenses incurred by
Licensor for travel and commissions paid to third party sales
agents in connection with such sales and (b) in all other cases,
five percent (5%) of gross revenues realized from exploitation and
commercialization of the Product Improvements outside the
Territory, whether realized by Licensor, its affiliates or
agents.
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b.
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Payment . The Royalty shall be due and payable within
thirty (30) calendar days of receipt of such revenues referenced in
Section 1(a).
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c.
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Recordkeeping . Licensor shall, and shall ensure that its
affiliates and agents maintain all customary business records with
respect to the exploitation and commercialization of the Product
Improvements outside the Territory, including, without limitation,
all sales records, invoices and other documents reasonably related
to calculation of the Royalty (collectively,
“Records”).
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d.
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Audit
Rights . During normal
business hours, upon reasonable prior notice to Licensor, and at no
cost to Licensor, Licensee, its auditors and other advisors and
representatives shall have the right to audit and review any
Records to be maintained in accordance with this
Addendum. Licensee acknowledges that any audit or review
of Records will be subject to the confidentiality provisions in
Section 14(k) of the License.
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2. FURTHER IMPROVEMENTS.
For the avoidance of doubt, it is
understood that Licensee shall have the exclusive right and license
to make, cause to be made, use, distribute, sell, offer related
services, sublicense others to do the same and otherwise to
commercialize and exploit within the Territory any and all
modifications, enhancements, variations and improvements on the
Product Improvements or new products related to the Product
Improvements invented by Licensor, its affiliates or independent
contractors on and subject to the terms and conditions of the
License and without additional co
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