Back to top

PATENT LICENSE AGREEMENT

Patent License Agreement

PATENT LICENSE AGREEMENT | Document Parties: Advanced Technology, Inc | PCP Acquisition, Inc | Perfect Circle Projectiles, LLC You are currently viewing:
This Patent License Agreement involves

Advanced Technology, Inc | PCP Acquisition, Inc | Perfect Circle Projectiles, LLC

. RealDealDocs™ contains millions of easily searchable legal documents and clauses from top law firms. Search for free - click here.
Title: PATENT LICENSE AGREEMENT
Governing Law: Delaware     Date: 7/13/2007
Law Firm: Brownstein Hyatt    

PATENT LICENSE AGREEMENT, Parties: advanced technology  inc , pcp acquisition  inc , perfect circle projectiles  llc
50 of the Top 250 law firms use our Products every day

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

 

1.

LICENSE

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.

2.

IMPROVEMENTS

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.

 



 

3.

PROSECUTION AND MAINTENANCE OF PATENTS

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.

4.

PROTECTION AND ENFORCEMENT OF PATENTS

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.

 

2

 



 

5.

INTELLECTUAL PROPERTY OWNERSHIP

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.

6.

PATENT MARKING

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.

7.

FIELD OF USE DETERMINATION

If PC


 
SITE SEARCH

AGREEMENTS / CONTRACTS

Document Title:

Entire Document: (optional)

Governing Law:(optional)


Try our advanced search >>
 

CLAUSES

Search Contract Clauses >>

Browse Contract Clause Library>>

Get Email Updates
Email:
This is only a partial view of this document. We have millions of legal documents and clauses drafted by top law firms. learn more search for free browse for free learn more