This License Agreement involves
Title: NON-EXCLUSIVE LICENSE AGREEMENT
Governing Law: Arizona Date: 5/13/2008
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”).
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:
Unless otherwise provided in this Agreement, the following terms when used with initial capital letters shall have the meaning set forth below:
“ 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,
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:
discounts on the Licensed Products (and any add-ons or ancillary products or services related to the Licensed Products) allowed or given;
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);
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;
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
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.
GRANT OF LICENSE
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.
Retained Rights. Aegis shall retain all rights to the Intellectual Property Rights except as set forth in this Agreement.
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
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.
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.
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.
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 last day of each calendar quarter during the Aegis Payment Period (unless such Aegis Payment is subject to a good faith dispute, in which case such Aegis Payment shall be payable within the time period provided below). Licensee shall be entitled to no Aegis Payment for any (i) period after the Aegis Payment Period or (ii) amounts in excess of $1,060,000 gross proceeds to Licensee payable under this Section 2.6.
Aegis shall calculate and deliver to Licensee no later than 30 days after each Aegis Payment Date the calculation of Net Revenues for the portion of the Aegis Payment Period that ended on such Aegis Payment Date and the amount of the accrued but unpaid Aegis Payment for such portion. Each Aegis Payment shall be accompanied by a statement with the same level of detail regarding the Aegis Payment calculation as Licensee currently provides to Aegis. Licensee shall be entitled to review the books and records of Aegis relating to the Aegis Payments (i) twice during each calendar year and (ii) once during the six month period following
the last required Aegis Payment. If Licensee, following such review, disagrees with Aegis’s determination of the Net Revenues for such portion or the corresponding accrued but unpaid Aegis Payment, Licensee shall notify Aegis in writing with a reasonable description of the basis for such disagreement within 45 days of receipt of Aegis’s calculations (an “Aegis Payment Dispute Notice”). For a period of 20 days