Execution Copy
Exhibit 10.10
NON-EXCLUSIVE LICENSE
AGREEMENT
THIS
NON-EXCLUSIVE LICENSE AGREEMENT is entered into by and between West
Virginia University Research Corporation (referred to in this
Agreement as “WVURC” or “Licensor”), acting
for and in behalf of West Virginia University, having its principal
office at 886 Chestnut Ridge Road, Morgantown, West Virginia, and
IAS Communications Inc., having a place of business located at
Suite 1103 – 11871 Horseshoe Way, Richmond, British Columbia
V7A 5H5 Canada (referred to in this Agreement as
“LICENSEE”).
WHEREAS,
WVURC is the owner of certain technology related to contrawound
toroidal helical antennas; and
WHEREAS,
LICENSEE desires to obtain a non-exclusive license for the
commercial development, manufacture, use and sale of the said
technology; and
WHEREAS,
WVURC is willing to grant a royalty bearing, worldwide,
non-exclusive license to the said technology to LICENSEE on the
terms set forth herein.
NOW,
THEREFORE, WITNESSETH, that for and in consideration of the mutual
promises and agreements herein contained, and other good and
valuable consideration, the receipt and sufficiency of all of which
are hereby acknowledged, the parties hereto expressly agree as
follows:
1.
Definitions
A.
As
used in this Agreement, “TECHNOLOGY” means the PATENT
RIGHTS.
B.
“PATENT RIGHTS” means WVURC’s rights arising from
the U.S. patents or applications, including any continuing
applications, divisionals, and reissues thereof, and the patents
issuing from applications which are identified in Schedule 1
attached to this Agreement.
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C.
In
this Agreement, the term “LICENSED METHOD” means any
method or process, the use of which would constitute an
infringement of a patent or patent application identified in
Schedule 1 in the absence of the license granted to LICENSEE in
this Agreement.
D.
“LICENSED
PRODUCT” means any article of manufacture or product which,
in the absence of the license granted to LICENSEE in this
Agreement, would infringe a claim of a patent or patent application
identified in Schedule 1.
E.
“LICENSED
INVENTION” means any LICENSED PRODUCT or LICENSED
METHOD.
F.
“SALES”
means the sale, lease, or other transaction for consideration of a
LICENSED PRODUCT, or practicing a LICENSED METHOD in exchange for
consideration.
G.
In
this Agreement, the term “NET SALES” means SALES by
LICENSEE and its sublicensees, if any, less (a) sales returns; (b)
normal and customary allowances; (c) trade discounts; (d) sales to
the U.S. Government pursuant to Paragraph 4.B. of this Agreement;
and (e) transportation charges, duties and tariffs if separately
stated on an invoice, but before the deduction of sales and excise
taxes, costs of insurance, and agents’
commissions.
2.
Grant
A.
WVURC
grants to LICENSEE, and LICENSEE hereby accepts, subject to the
provisions of this Section, a non-exclusive license to make, have
made, use, import, sell and offer to sell LICENSED INVENTIONS under
the PATENT RIGHTS, with a right to sublicense others under the
terms of Section 3 of this Agreement.
B.
Rights
not expressly granted to LICENSEE in this Agreement are expressly
reserved to WVURC.
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C.
WVURC
expressly reserves the right to use the TECHNOLOGY in any manner,
including, without limitation, the right to license to others and
the right to make, have made and use LICENSED INVENTIONS for any
commercial or noncommercial purpose.
D.
[Intentionally
Omitted].
E.
Under
Title 35 U.S.C. Section 203, the United States Government has the
right to require LICENSEE to grant a non-exclusive, partially
exclusive or exclusive license under the PATENT RIGHTS in any field
of use to a responsible applicant or applicants in accordance with
48 C.F.R. § 27.304 -1(g).
F.
LICENSEE
will make available to WVURC and will grant an irrevocable,
paid-up, royalty-free non-exclusive license to WVURC to make, have
made, use, and have used any improvements or developments to the
TECHNOLOGY made by LICENSEE for any purpose permitted under this
Agreement.
3.
Sublicenses
A.
Subject
to the prior approval of WVURC, which approval may be withheld for
any reason, WVURC grants to LICENSEE the right to grant sublicenses
to third parties to make, have made, use, import and sell LICENSED
INVENTIONS in which LICENSEE has rights under this Agreement.
Sublicenses granted under this clause must contain all of the
conditions, restrictions and reservations of this Agreement and
must preserve the rights and reservations of WVURC under this
Agreement.
B.
LICENSEE
agrees to provide WVURC with a copy of each sublicense at least
thirty (30) days prior to its execution.
C.
LICENSEE
agrees to pay to WVURC the payments specified in Section 4 of this
Agreement. With respect to any sublicense,
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this obligation shall continue as
long as a sublicense granted by LICENSEE is in effect, and shall be
deemed to be an obligation of LICENSEE to WVURC, whether or not
royalty payments are actually received by LICENSEE from its
sublicensees.
D.
LICENSEE
agrees to deliver to WVURC copies of all progress and financial
reports delivered to LICENSEE by LICENSEE’s sublicensees.
With respect to any sublicense, this obligation continues as long
as a sublicense granted by LICENSEE is in effect
E.
Termination
of this Agreement by either party shall automatically operate as a
termination of each sublicense granted by LICENSEE.
4.
Fees and Royalties
A.
As
consideration for the rights, privileges and license granted under
this Agreement, LICENSEE agrees to pay to WVURC the fees and
royalties set forth below:
1.
An
Annual License Fee of Three Thousand Dollars ($3,000.00) payable no
later than January 15 of each calendar year during the term of this
Agreement beginning in January, 2005. WVURC acknowledges that it
has received from LICENSEE the $3,000.00 annual license fee for the
calendar year 2005;
2.
A
royalty of Ten (10%) percent of NET SALES during the term of this
License Agreement; and
3.
Fifty
(50%) percent of other payments, including, but not limited to,
Sublicense Revenue and annual fees received from sublicensee(s) for
use of LICENSED INVENTIONS. For purposes of this Agreement, the
term “Sublicense Revenue” shall mean all cash,
sublicensing fees, royalties and all other payments and credits,
or, in the event of non-cash consideration, the cash equivalent
thereof, paid to or received by LICENSEE from sublicensees of
LICENSEE of its rights hereunder, other than research and
development funding paid to LICENSEE
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to conduct research on the
Licensed Products.
B.
Royalty
payments are to be calculated based on NET SALES during the
quarterly periods extending from January 1 through March 31 (first
quarter), April 1 through June 30 (second quarter), July 1 through
September 30 (third quarter), and from October 1 through December
31 (fourth quarter) of each calendar year, for as long as this
Agreement remains in effect. Royalty payments for the first,
second, third and fourth quarters are due on April 30, July 30,
October 30, and January 30, respectively, of each year. The first
royalty payment due under this Agreement is based on NET SALES from
the effective date of this License Agreement until the end of the
quarterly period, which includes such effective date.
C.
All
payments due to WVURC shall be paid in U.S. currency to WVURC, at
the address set forth in Section 19 of this Agreement.
5.
Diligence
A.
LICENSEE will use its best efforts to commercialize one or more
LICENSED INVENTIONS through a program for commercial exploitation
of the PATENT RIGHTS, throughout the Term of this
Agreement.
B.
This
Section 5 is a material condition of this Agreement, in the absence
of which the license conveyed under Section 2 of this Agreement
would not have been granted.
6.
Reports
A.
LICENSEE
shall submit semiannual progress reports to WVURC on the dates that
second quarter and fourth quarter royalty payments are due, when
any payment is made. The progress reports shall describe
LICENSEE’s activities related to the development of the
TECHNOLOGY and the securing of approvals necessary for
commercialization of the TECHNOLOGY, including but not limited to
LICENSEE’s
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progress towards
commercialization; any problems encountered; LICENSEE’s
pre-commercialization marketing efforts; any variations from the
LICENSEE’s business plan; the expected product launch date;
any improvements, new patents, derivative works, etc. arising from
LICENSEE’s work; the first commercial sale of products in the
United States; the first commercial sale of products outside the
United States; sales, production or other royalty-generating
activity; royalty calculations and royalties due; continued efforts
in evolving the product/service; improvements; sublicenses; foreign
registrations, licenses, commercialization, etc.; any problems
which would potentially affect this Agreement; any infringement of
the intellectual property rights licensed under this Agreement; and
any potential litigation involving the licensed intellectual
property rights. Reports marked by LICENSEE as proprietary
financial or business information of LICENSEE will be treated by
WVURC as proprietary information.
B.
LICENSEE
shall submit quarterly financial reports to WVURC on the dates that
payments of royalties are due under Section 4 of this Agreement.
Such reports must be submitted whether or not any payment is
actually made. The financial reports shall be certified by an
officer of LICENSEE, and must specify the period for which royalty
payments are calculated, must show total SALES or commercial uses
made of LICENSED INVENTIONS by LICENSEE and any sublicensee(s)
during the reporting period, and all other necessary information
for WVURC to determine the royalties due and paid for the
particular reporting period, including but not limited to
LICENSEE’s fiscal year; U.S. Government, domestic and foreign
sales of licensed products; a description of the licensed products;
unit prices (sale, lease, and/or use); the number of units sold or
leased; gross sales; net sales; royalties due in U.S. dollars;
foreign sales by country; the currency exchange rate applied, if
any. If no
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SALE, sublicense, or use of
licensed product or licensed method has been made during a
reporting period, a statement to this effect shall be made. Reports
marked by LICENSEE as proprietary financial or business information
of LICENSEE will be treated as such by WVURC.
7.
Books and Records
A.
LICENSEE
shall keep books and records according to Generally Accepted
Accounting Principles, accurately showing all SALES of LICENSED
PRODUCTS or use of the LICENSED METHODS by LICENSEE or sublicensees
under the terms of this Agreement. Such books and records shall be
open to confidential inspection and audit by representatives or
agents of WVURC at reasonable times, but in no event more than once
for each calendar year, for the purpose of verifying the accuracy
of the semiannual financial and progress reports and the royalties
due. LICENSEE may request that any such inspection and audit be
conducted by an independent auditor, in which event LICENSEE will
pay the costs of the auditor.
B.
The
fees and expenses of WVURC’s representatives performing the
inspection and audit will be bo
