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Exhibit 10.1
NON-EXCLUSIVE LICENSE AGREEMENT
THIS NON-EXCLUSIVE LICENSE AGREEMENT (this “Agreement”)
is made and entered into as of November 9, 2007 (“Effective
Date”) by and between Aegis Assessments, Inc., a Delaware
corporation (“Aegis”), and Sentinel Emergency Response
Technology, Inc., a Nevada corporation
(“Licensee”).
RECITALS
WHEREAS, Aegis is the rightful and sole owner of certain
intellectual property, including, without limitation, patents
issued, patent applications, trademarks, know-how, data,
discoveries, inventions and technical information; and
WHEREAS, Licensee desires to acquire non-exclusive worldwide rights
to the Intellectual Property Rights (defined below) in accordance
with the terms and conditions hereinafter set forth.
NOW, THEREFORE, intending to be legally bound upon the terms,
conditions and mutual covenants hereinafter set forth, the parties
hereto agree as follows:
ARTICLE 1
DEFINITIONS
Unless otherwise provided in this Agreement, the following terms
when used with initial capital letters shall have the meaning set
forth below:
1.1
“ Intellectual Property Rights ” means,
collectively, with respect to Aegis, all of the following worldwide
intangible legal rights of Aegis, including those existing or
acquired by ownership, license, contract or other legal operation,
whether or not filed, perfected, registered or recorded and whether
now or hereafter existing, filed, issued or acquired:
(i) patents, patent applications, and patent rights, including
any and all continuations, continuations-in-part, divisions,
reissues, revisions, reexaminations or extensions thereof;
(ii) inventions (whether patentable or not in any country and
whether or not reduced to practice), invention disclosures,
industrial designs, improvements, trade secrets, proprietary
information, know-how, technology and technical data;
(iii) rights associated with works of authorship (including
audiovisual works), including, without limitation, copyrights,
copyright applications and copyright registrations and renewals in
connection therewith, moral rights, database rights, mask work
rights, mask work applications and mask work applications and
registrations and renewals in connection therewith;
(iv) rights in trade secrets, including, without limitation,
ideas, research and development, know-how, formulas, compositions,
manufacturing and production processes and techniques,
methodologies, technical data, designs, drawings, specifications,
models, pricing and cost information, business and marketing plans
and proposals, rights in industrial property, customer, vendor and
prospect lists and all associated information or databases and
other confidential or proprietary information, and all rights
relating to the protection of the same, including, without
limitation, rights under nondisclosure agreements; (v) any
other proprietary rights in technology,
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including software, firmware, all scripts and source and object
code (including descriptions, flow charts and other work product
used to design, organize or develop such computer software and any
related documentation), algorithms, architecture, structure,
display screens, layouts, inventions, development tools and all
documentation and media constituting, describing or relating to the
above, including, without limitation, manuals, memoranda, records,
business information, or trade marks, trade dress or names,
anywhere in the world; (vi) any rights analogous thereto in
the preceding clauses and any other proprietary rights relating to
intangible property, including, without limitation, brand names,
trademarks, service marks, domain names, trademark and service mark
registrations and applications therefore and renewals in connection
therewith, trade names, corporate names, logos, rights in trade
dress and packaging, together with all translations, adaptations,
derivations and combinations thereof, and all goodwill associated
with the same; (vii) all rights to sue or make any claims for
any past, present or future infringement, misappropriation or
unauthorized use of any of the foregoing rights and the right to
all income, royalties, damages and other payments that are now or
may hereafter become due or payable with respect to any of the
foregoing rights, including, without limitation, damages for past,
present or future infringement, misappropriation or unauthorized
use thereof; (viii) rights under license agreements for the
foregoing; and (ix) all intellectual property rights listed on
Exhibit A attached hereto.
“ Licensed Products ” shall mean (i) the
products set forth on Exhibit A attached hereto, and (ii)
any products derived from the Intellectual Property Rights.
“ Net Revenues ”
means the gross revenues actually received by Aegis, as
determined by generally accepted accounting practices
(“GAAP”), in connection with licensing, maintaining and
supporting the Licensed Products, (and any add-ons or ancillary
products or services related to the Licensed Products) but
excluding any gross revenues received by Aegis or its affiliates
following the Effective Date from the sale of any other products or
services of Aegis or its affiliates, including but not limited to
any hardware sales, hardware and other installation, maintenance,
add-ons or ancillary products or services unrelated to the Licensed
Products, less the following reductions of said gross revenues:
(a)
discounts on the Licensed Products (and any add-ons or ancillary
products or services related to the Licensed Products) allowed or
given;
(b)
credits or refunds allowed for the return of rejected, outdated,
damaged or returned Licensed Products (and any add-ons or ancillary
products or services related to the Licensed Products);
(c)
rebates and price adjustments allowed or given with respect to the
Licensed Products (and any add-ons or ancillary products or
services related to the Licensed Products) and;
(d)
sales and other excise taxes and duties directly related to the
sale, transportation or delivery of the Licensed Products (and any
add-ons or ancillary products or services related to the Licensed
Products), but only to the extent that such items are included in
the gross invoice price (but not including taxes assessed against
the income derived from such sale).
Each of the items set forth in clauses (a) through (d) above shall
be deducted from
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the gross amount received only to the extent charged against Aegis
and evidenced in Aegis’s books and records of account.
Deductions shall be determined in accordance with GAAP.
If any of the Licensed Products (and any add-ons or ancillary
products or services related to the Licensed Products) is sold for
compensation other than cash, Net Revenues shall be calculated
based on the gross list price of such Licensed Products on the date
of sale.
ARTICLE 2
GRANT OF LICENSE
2.1
Grant of License. Subject to the terms and conditions
contained in this Agreement, Aegis hereby grants to Licensee an
irrevocable (other than a termination pursuant to Section 7.2
below), non-exclusive, worldwide, fully paid-up, perpetual,
transferable, royalty-free, sublicensable license to (i)
make, have made, use, sell, have sold, offer for sale, import and
otherwise obtain or provide Licensed Products, (ii) use the
Intellectual Property Rights and to practice the inventions covered
thereby and (iii) modify, enhance, reverse engineer, decompile and
otherwise make derivative works of Intellectual Property Rights and
the Licensed Products; provided, however, that in no event
during the term of this Agreement shall Aegis license the
Intellectual Property Rights or rights with respect to Licensed
Products to any individual or entity set forth on Exhibit B
attached hereto.
2.2
Retained Rights. Aegis shall retain all rights to the
Intellectual Property Rights except as set forth in this
Agreement.
2.3
Right of First Refusal . Provided this Agreement has
not been terminated pursuant to Article 7 below, if Aegis receives
an offer, either written or verbal, or otherwise seeks to license,
sell, convey, encumber or otherwise transfer (including by
operation of law, through foreclosure, dissolution, bankruptcy or
other similar process) all or any portion of the Intellectual
Property Rights (“IP Sale”), Aegis shall immediately
notify Licensee in writing (the “First Refusal Notice”)
of such occurrence(s) and specify the material terms thereof,
including the identity and address of the proposed purchaser(s),
licensors or other transferees (the “Third Party
Purchaser”). Licensee shall then have the option and
right of first refusal within thirty (30) calendar days of receipt
of the First Refusal Notice to provide Aegis a written reply notice
electing to purchase the Intellectual Property Rights under the
same terms as the IP Sale.
If
Licensee elects to exercise its right of first refusal as set forth
above, Aegis and Licensee shall immediately begin negotiating
definitive documents and shall close the transaction as soon as is
practical but in no event later than sixty (60) calendar days from
the date of Licensee’s receipt of the First Refusal
Notice; provided, however, that if Licensee elects to
exercise its right of first refusal, the purchase price to be paid
by Licensee to Aegis shall be reduced by the lesser of (i)
$1,000,000 (the “Threshold”), or (ii) the amount of the
purchase price contained in the First Refusal Notice (the
“Reduced Purchase Price”).
If
Licensee does not elect to exercise its right of first refusal as
set forth above, the Third Party Purchaser shall be required to pay
directly to Licensee the lesser of the Threshold or the Reduced
Purchase Price by wire transfer of immediately available funds at
the closing of the IP Sale. In the event the IP Sale is
for an amount less than the Threshold, Aegis shall be
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required to pay directly to Licensee the difference between the
Threshold and the Reduced Purchase Price by wire transfer of
immediately available funds at the closing of the IP Sale.
In
connection with any transfer of the Intellectual Property Rights to
a third party, Aegis shall obtain the written agreement of such
third party indicating that such third party agrees to be bound by
the terms and provisions of this Agreement. Any transfer of
the Intellectual Property Rights in contravention of this Section
2.3 shall be null and void.
2.4
Modifications or Improvements . Inventions,
modifications, improvements, adaptations, derivative works or
additions to the Intellectual Property Rights conceived by Licensee
or its directors, officers, employees, affiliates or independent
contractors shall be owned exclusively by Licensee (collectively,
“Licensee IP”). To the extent any Intellectual
Property Rights are necessary for the enjoyment, practice, use or
other commercialization of Licensee IP, Aegis hereby grants to
Licensee an irrevocable, exclusive, worldwide, fully paid-up,
perpetual, transferable, royalty-free, sublicensable license to the
Intellectual Property Rights which shall survive any termination of
this Agreement. Aegis shall cooperate in good faith and shall
take such actions as are reasonably necessary to effect, correct or
make clear matters of title accordingly and to assist Licensee in
the development of such further inventions, modifications,
improvements, adaptations, derivative works or additions.
2.5
Competition by Licensee . Aegis and Licensee
understand and acknowledge that Licensee intends to develop and
distribute radio interoperability devices, and that such activity
may involve doing business with customers, prospective customers,
suppliers, and other business partners that Aegis has done business
with in the past. No provision in this Agreement shall be
interpreted as limiting such activity by Licensee in any way and
Aegis hereby consents such actions by Licensee.
2.6
Competition by Aegis . For a period of two years from
the Effective Date (the “Aegis Payment Period”), Aegis
shall make cash payments (each such payment an “Aegis
Payment”) to Licensee equal to 25% of Net Revenues resulting
from the sales of the Licensed Products up to a maximum of
$1,060,00 gross proceeds to Licensee.
Each Aegis Payment shall be payable by Aegis to Licensee 30 days
(such date the “Aegis Payment Date”) after the
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