Exhibit 10.3
PATENT LICENSE AGREEMENT
This Patent License Agreement (the “
Agreement ”) is entered into as of the 10 th day of
July, 2007 (the “ Effective
Date ”) by and between PCP
Acquisition, Inc., a Colorado corporation (“
Licensor ”), and Perfect Circle Projectiles, LLC, an Illinois
limited liability company (“ PCP ”).
RECITALS
WHEREAS, Licensor is the owner of all right, title
and interest in and to the patents set forth on
Exhibit A attached hereto (the “ Licensed Patents ”);
WHEREAS, PCP desires to secure the exclusive rights
to manufacture, have manufactured, use and sell products embodying
any claim of the Licensed Patents anywhere in the world
(“ Spherical
Projectiles ”) solely in the
Field of Use (defined below);
NOW, THEREFORE, in consideration of the mutual
covenants and promises set forth herein, the payment of $1 by PCP
to Licensor, and for other good and valuable consideration, the
receipt and sufficiency of which is hereby acknowledged, the
parties agree as follows:
AGREEMENT
Subject to the terms and conditions of this
Agreement, Licensor hereby grants to PCP, during the Term (defined
below), an exclusive license of the Licensed Patents, in the Field
of Use, to manufacture, have manufactured, use, offer for sale,
sell, distribute and otherwise commercialize, on a worldwide basis,
Spherical Projectiles (“ Licensed
Products ”). This grant is to
the exclusion of all others including Licensor, however, Licensor
retains all rights under the Licensed Patents outside the Field of
Use and Licensor retains the non-exclusive right (along with PCP)
to use the Licensed Patents for “Animal Deterrent
Use” (as such term is defined in the
Asset Purchase Agreement between Licensor, PCP, Gary E. Gibson and
Security With Advanced Technology, Inc. of even date herewith (the
“ Purchase
Agreement ”)). “
Field of Use ” shall mean any market in which Spherical Projectiles
are used for a purpose other than a “Tactical Use” (as
such term is defined in the Purchase Agreement). In addition,
Licensor hereby grants to PCP a limited, non-exclusive, revocable
license of the Licensed Patents to manufacture, have manufactured,
use, offer for sale, sell and distribute the Licensed Products
solely in connection with the PTI Agreement (as such term is
defined in the Purchase Agreement) and solely in order to enable
PCP to comply with its obligations with respect to the PTI
Agreement under Section 6.10 of the Purchase Agreement.
PCP shall promptly notify Licensor of all
improvements to the technology embodied in the Licensed Patents
conceived of by employees or contractors acting on behalf of PCP.
The term “conceived” as used in this Agreement shall
have the meaning ascribed to it under United States patent law.
Upon such notification, Licensor and PCP shall enter into
discussions in good faith regarding the ownership and licensing of
such improvements.
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3.
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PROSECUTION AND MAINTENANCE OF
PATENTS
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Licensor shall have the sole right and
responsibility to prosecute and maintain the Licensed Patents
(subject to Licensor’s obligations under the Security
Agreement). PCP hereby consents to cooperate fully with Licensor in
any such prosecution or maintenance activity. Licensor agrees to
reimburse PCP for all reasonable expenses necessarily incurred by
PCP in providing such Licensor requested cooperation.
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4.
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PROTECTION AND ENFORCEMENT OF
PATENTS
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Licensor shall have the right, but shall not be
obligated, to prosecute at its own expense all infringements of the
Licensed Patents. With respect to the infringements of the Licensed
Patents in the Field of Use, if within three (3) months after
having been notified of an infringement of the Licensed Patents in
the Field of Use, the infringer has not ceased and desisted from
the infringing activities and Licensor has not brought and is not
diligently prosecuting an infringement action or otherwise
attempting an alternative resolution of the infringement with the
infringer, or if Licensor shall notify PCP at any time prior
thereto of its intention not to bring suit against or to take other
action to resolve the infringement in the Field of Use, then, and
in those events only, PCP shall have the right, but shall not be
obligated, to prosecute at its own expense any infringement of the
Licensed Patents in the Field of Use, and PCP may, for such
purposes, include Licensor as party plaintiff without expense to
Licensor. No settlement, compromise, consent judgment or any
voluntary final disposition of the suit may be entered into by PCP
without the prior written consent of Licensor, such consent which
shall not be unreasonably withheld.
In the event either Licensor or PCP shall undertake
the enforcement and/or defense of the Licensed Patents by
litigation, any recovery of damages by the party undertaking such
enforcement or defense for each such suit shall be applied first to
reimburse each party for expenses and reasonable attorney’s
fees incurred by such party in connection with such suit, and the
portion of the damages remaining, if any, that are attributable to
infringement of the Licensed Patents within the Field of Use shall
be shared by the parties in proportion with their respective shares
of the litigation expenses in such infringement action.
In any infringement or misappropriation action that
either party may institute to enforce the Licensed Patents pursuant
to this Agreement, the other party hereto shall, at the request and
expense of the party initiation, such suit, cooperate in all
reasonable respects and, to the extent possible, have its employees
testify when requested and make available relevant records, papers,
information, samples, specimens, and the like.
If Licensor initiates a suit to enforce or defend
the Licensed Patents, and PCP is requested to provide assistance to
Licensor, Licensor agrees to reimburse PCP for all reasonable
expenses necessarily incurred by PCP in providing such cooperation.
Likewise, if PCP initiates a suit to enforce or defend the Licensed
Patents, and Licensor is requested to provide assistance to PCP,
PCP agrees to reimburse Licensor for all reasonable expenses
necessarily incurred by Licensor in providing such
cooperation.
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5.
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INTELLECTUAL PROPERTY OWNERSHIP
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PCP acknowledges and agrees that Licensor owns all
right, title and interest in and to the Licensed Rights and the
Proprietary Rights (as such term is defined in the Purchase
Agreement). PCP agrees that it will take no action inconsistent
with Licensor’s ownership of the Licensed Rights or the
Proprietary Rights and will not challenge the validity of the
Licensed Rights or the Proprietary Rights. PCP agrees not to use
the Product Rights and Patents for any purpose not authorized by
this Agreement.
PCP agrees to comply with the marking provisions of
35 U.S.C. § 287 with respect to all Licensed Products which
are manufactured and/or sold by PCP and its distributors and which
are covered by any claim contained in the Licensed Patents. The
proper statutory notice shall likewise be conspicuously marked on
all packages and containers containing and on all advertisements,
literature and promotional material describing or mentioning all
such Licensed Products which are manufactured and/or sold by PCP
and its distributors and which are covered by any claim contained
in the Licensed Patents.
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7.
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FIELD OF USE DETERMINATION
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If PC
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