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AMENDED AND RESTATED LICENSE AGREEMENT
THIS AMENDED
AND RESTATED AGREEMENT dated December 8 1997 is made
ENSYN
TECHNOLOGIES INC. , a
corporation incorporated under the laws of Canada, having its
principal place of business at 6847 Hiram Drive, Greely, Ontario,
Canada K4P 1A2 (“ENSYN”)
ENSYN GROUP,
INC. , a corporation
incorporated under the laws of Delaware, USA, having its principal
place of business at 124 Mount Auburn Street, Suite 200N,
Cambridge, Massachusetts, USA, 02138
(“GROUP”)
1. ENSYN has
developed and presently possesses certain technical know-how,
equipment, operating experience and knowledge of processes relating
to the rapid heating of carbonaceous material at a rate of over 400
degrees Centigrade per second, to a temperature of at least 400
degrees Centigrade and retaining the said carbonaceous materials
together with the initial pyrolysis products in a pyrolysis reactor
at a temperature of at least 400 degrees Centigrade for less than 2
seconds (“RTP”, as defined below);
2. GROUP desires to
obtain a license for RTP and ENSYN is willing to grant this license
subject to the existing licenses set out in
Schedule C;
3. ENSYN has
expertise relating to the design, construction, and operation of
RTP Reactors and GROUP wishes to utilize this expertise;
4. The parties have
entered into a License Agreement dated August 30, 1996 and
wish to amend and restate this License Agreement as provided
herein.
NOW
THEREFORE for good and
valuable consideration, the receipt and sufficiency of which are
hereby acknowledged, the parties agree as follows:
In this
Agreement, unless the context otherwise requires, the following
words shall have the following meanings:
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1.1
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“Business
Day” means and day other than a Saturday,
Sunday or statutory holiday;
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1.2
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“Boiler
Fuels” means fuel oil intended for use in
steam or hot water boiler systems or in oil burners or furnaces,
for the production of heat, electricity, steam, or other uses to
which #2 to #6 fuel oil is put to;
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1.3
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“Engine Fuel”
means a liquid fuel oil
intended for use in an engine, for the production of electricity,
mechanical power, steam, or other uses to which kerosine and other
fuels are put to;
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1.4
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“Feedstocks”
means wood, wood
residues, agricultural biomass, organic municipal waste, fossil
fuels and any other matter, whether liquid, solid or gaseous,
capable of being processed in the RTP Reactor;
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1.5
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“Know-how”
means all confidential
information, trade secrets, know-how, operating and business data
of ENSYN relating to the design, construction, and use of the RTP
Reactors for the manufacture of Product, and includes without
limitation, methods, processes, procedures, formulae, compositions,
designs, illustrations, drawings, photographs, graphs, tables,
specifications, instruction manuals, lists, charts and programs,
disclosed orally, visually or in writing to GROUP by ENSYN or
gathered by GROUP from inspection;
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1.6
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“Improvement”
means any modification
or refinement of the Technology or Product or the development or
acquisition of a new Product, whether patentable or not, that is
developed or acquired by or on behalf of GROUP or ENSYN during the
term of this Agreement and would, if exploited, improve the
operational quality or economic characteristics of the
Technology;
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1.7
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“Liquid
Smoke” means liquid smoke for use for smoke
flavouring purposes, food and pharmaceutical specialty chemicals,
fragrances, food flavourings, food browning compounds and food
additives produced by fast pyroysis from food stocks or other
biomass feed stocks;
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1.8
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“Other
Chemicals” means any chemical or material
derived from or that may be made in a RTP Reactor but not including
Liquid Smoke;
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1.9
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“Product”
mean Boiler Fuels,
Engine Fuel, Turbine Fuels, Other Chemicals and any liquids, gases
or solids which may result from processing in an TRP Reactor from
the pyrolysis of Feedstocks but does not include Liquid
Smoke;
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1.10
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“Royalty
Territory” means Canada;
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1.11
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“RTP”
means the rapid heating
of carbonaceous material, at a rate of 400 degrees Centigrade per
second, to a temperature of at least 400 degrees Centigrade and
retaining the said carbonaceous materials together with the initial
pyrolysis products in a pyrolysis reactor at a temperature of at
least 400 degrees Centigrade for less than 2 seconds;
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1.12
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“RTP Reactor”
means a reactor for the
rapid heating of carbonaceous materials, at a rate of over 400
degrees Centigrade per second, to at least 400 degrees Centigrade
and retaining the said carbonaceous materials together with the
initial pyrolysis products in a pyrolysis reactor at least 400
degrees Centigrade for less than 2 seconds;
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1.13
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“Technology”
means all patents and
patent applications set out in Schedule A and Know-how
relating to the construction, design, manufacture of RTP Reactors
and to the operation of RTP Reactor for the production of
Product;
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1.14
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“Territory”
means the
world;
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1.15
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“this
Agreement” means this agreement (including all
schedules to this Agreement) as the same may from time to time be
amended by agreement in writing signed by the parties;
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1.16
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“Turbine
Fuels” means a liquid fuel oil intended for
use in a turbine, for the production of electricity, mechanical
power, steam, or other uses to which kerosine and other turbine
fuels are put to.
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GRANT OF TECHNOLOGY
LICENSE
2.1
License. Subject to the terms and conditions of this
Agreement including Section 5.1.3 and the restrictions in
Section 2.2 and the existing licenses set out in
Schedule C, ENSYN hereby grants to GROUP and GROUP accepts a
non-transferable exclusive right in the Territory, with the right
to grant sub-licenses, to:
2.1.1 use the
Technology to operate an RTP Reactor;
2.1.2 make, use and
sell Product; and
2.1.3 use any
Improvements.
2.2.1 ENSYN hereby
reserves to itself the exclusive right to use the Technology in the
Territory for the sole purpose of engineering, designing and
constructing RTP Reactors.
2.2.2 Unless
otherwise agreed to in writing, GROUP shall not use any ENSYN owned
Technology for any purpose other than those pertaining to the
exercise of the rights granted by ENSYN or the obligations accepted
by GROUP pursuant to this Agreement.
GRANT OF TRADE-MARK
LICENSE
3.1
License. Subject to the terms and conditions of this
Agreement, ENSYN hereby grants to GROUP with the right to grant
sub-licenses, a non-exclusive, non-transferable license to use
the
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MARKS set out
in Schedule B hereto as it may be amended from time to time
(“MARKS”), in the Territory in association with RTP
Reactor and Product provided that;
3.1.1 GROUP accepts
that its usage of the MARKS shall at all times be under the control
of ENSYN, and GROUP co-operates with ENSYN in facilitating the
exercise of such control by ENSYN;
3.1.2 GROUP adheres
to the standards that are set from time to time by ENSYN governing
the quality of RTP Reactor and Product, and all related advertising
and promotional material provided in association with the
MARKS;
3.1.3 ENSYN shall
have the right of access to GROUP’S premises during normal
business hours, for the purpose of inspecting the RTP Reactor and
Product provided by GROUP in association with the MARKS in order to
ensure the quality thereof;
3.1.4 GROUP
supplies to ENSYN once each year during the term of this Agreement,
or more often if requested by ENSYN, specimens of its usage of the
MARKS;
3.1.5 GROUP uses
the MARKS only in the form and manner and only with the following
legend, or such other legend as may be prescribed from time to time
by ENSYN “trade-mark owned by ENSYN Technologies Inc. used
under license” or such similar notice in the appropriate
language(s) where the MARKS are being used;
3.1.6 GROUP uses
the MARKS only in association with the RTP Reactor and Product and
with no other goods or services; and
3.1.7 GROUP does
nothing inconsistent with the validity of the MARKS or inconsistent
with ENSYN’S ownership of the MARKS.
3.2
Amendments. The parties may from time to time amend the
contents of Schedule B hereto by adding or deleting
trade-marks. Such amendments may be effected by an authorized
signing officer of each party initialing and dating an amended
Schedule B, with the amended Schedule B becoming
effective on the date on which both signing officers have initialed
the same. The terms and conditions of this Agreement shall apply to
such amended Schedule B as fully and completely as though it
had always formed part of this Agreement.
3.3
Restrictions. GROUP shall not use the MARKS, or any of them,
in its business name without the prior written consent of ENSYN. In
the event that such consent is given, GROUP agrees that all such
usage shall enure to the benefit of ENSYN and shall be in strict
accordance with any terms and conditions set by ENSYN. ENSYN hereby
confirms its consent to the use of the MARK “ENSYN” as
part of the corporate and trade name of GROUP.
3.4
Consequences upon Termination. Upon the termination of this
Agreement, for any reason, whatsoever, GROUP shall immediately
cease any and all use of the MARKS and discontinue the provision of
all RTP Reactor and Product in association with the MARKS.
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applicable,
GROUP shall also immediately change its business name to delete the
MARKS, or any of them, from its name. Further, following
termination, GROUP shall not do anything inconsistent with the
validity of the MARKS or inconsistent with ENSYN’S ownership
of the MARKS. Without limitation, GROUP shall not use any of the
MARKS, or any word or design which may be confused with any of the
MARKS, either as a trade-mark or a trade name, or as an element in
a trade-mark or a trade name.
4.1
Improvements. If either party develops any Improvements,
each party shall notify the other party of such Improvement and, in
the case of ENSYN, such notice shall also contain a statement of
the costs incurred in developing or acquiring such Improvement.
Subject to the terms and conditions of this Agreement, each party
which owns an Improvement shall grant the other party a paid-up,
non-exclusive, non-transferable license to use the Improvement for
the purposes set forth in this Agreement.
4.2
Exclusions. Section 4.1 does not apply to Improvements
relating to any non-fast pyrolysis technology.
5.1
Obligations. In consideration for the grants
herein:
5.1.1 GROUP hereby
agrees to pay to ENSYN a cash royalty payment in an amount equal to
three percent (3%) of the cost of construction of the RTP at the
time of the initial commissioning of each and every RTP Reactor in
the Royalty Territory during the term of this Agreement.
5.1.2 GROUP hereby
undertakes to use its best efforts to commercially exploit the
Technology through the grant of sub-licenses and construction of
RTP reactors throughout the Territory.
5.1.3 GROUP and
ENSYN shall enter into an agreement whereby ENSYN shall be
appointed to provide all design, engineering, supervision and
training services relating to the construction and commissioning of
RTP Reactors by an sub-licensee utilizing Technology so that ENSYN
may use its reserved rights to permit full utilization of
sub-licenses granted by GROUP.
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5.1.4 If ENSYN is
unable to materially perform said design, engineering, supervision
and training services for any specific sub-licensee, and remains
unable to do so after 60 days written notice by GROUP to ENSYN
specifying in detail the lack of performance, GROUP may, for that
specific sub-licensee, use or sub-license others to use, the
Technology in the Territory to design and construct the RTP
Reactor.
6.1
Ownership. GROUP acknowledges that ENSYN owns all rights in
the Technology With respect to all Improvements, it is agreed that
the party that has developed or acquired such Improvements shall
own them, it
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