Exhibit 10.2
EXECUTION VERSION
PATENT AND TECHNOLOGY SUB-LICENSE AGREEMENT
This Agreement is made as of July 15,
2005 by and among
PHARLO IP, LLC, a
Florida limited liability company
("Licensor"),
TASKER CAPITAL CORP.,
a Nevada
corporation ("Tasker"), and TASKER PRODUCTS IP HOLDINGS CORP., a Delaware
corporation and wholly-owned subsidiary of
Tasker ("Tasker Products").
RECITALS
A. Pursuant to that
certain License
Agreement by and
between Barry
Cummins
("Cummins") and
Licensor, dated July 15, 2005 and effective
as of March
18, 2005
(the "Base License"),
Licensor is the
exclusive licensee
under
certain
Intellectual
Property listed and described on the attached
Schedule
A;
B. Tasker Products and its affiliates desire to exploit the Intellectual
Property as set forth
herein;
C. Tasker has
previously
conveyed consideration to various affiliates of
Licensor
in exchange for the right to exploit the Intellectual Property
in
certain
Fields of Use;
D. Licensor desires to
grant a royalty free license to Tasker Products on the
terms and
conditions
set forth herein to
enable Tasker Products
and its
affiliates
to exploit the
Intellectual Property
in the Fields of Use and
in the
manner specified herein;
E. Licensor desires to get back a royalty free
license from Tasker
Products
under
certain other
intellectual property
rights identified
herein for
uses
outside the Fields of Use contemplated by this Agreement; and
F. Licensor desires to use Tasker as a
licensed source of supply for certain
products
to be used
outside the Fields of Use in the
manner specified
herein.
NOW,
THEREFORE, in
consideration of the premises, and for other good and
valuable consideration, the receipt of which is hereby acknowledged by the
Parties, the Parties hereto agree as
follows:
AGREEMENT
1. Definitions.
1.1
"Asset Purchase
Agreement"
shall mean an Asset
Purchase Agreement
dated as of July 15,
2005 by and among
Tasker, Tasker Products,
Indian River
Labs, L.L.C., Pharlo Citrus Technologies, Inc.
("PCTI"), Pharlo
Citrus Properties Partnership, LLLP, and Coast to
Coast Laboratories, LLC.
<PAGE>
1.2
"Effective Time"
shall mean the Effective Time which is specified in
the Asset Purchase Agreement.
1.3
"Field of Use"
shall mean the fields of use set forth on Schedule B
attached hereto. ----------
1.4
"Improvements"
shall mean any additions, enhancements, improvements,
or further
developments made by or on behalf of, or acquired by, or
under the control of Licensor relating to the Technology on or
after
the Effective Time having application in the Field of Use.
1.5
"Intellectual
Property" shall mean the Patents and Know How,
including without limitation that which is described on Schedule
A.
1.6
"Know
How" shall mean the know how, trade secrets and other
proprietary
information now known to and hereafter developed by or
on behalf of Licensor
relating to the
Technology
in the Field of
Use.
1.7
"Knowledge of
the Licensor" shall
mean the actual
knowledge of any
individual serving as an officer or manager of the Licensor.
1.8
"Party"
or "Parties" shall mean Licensor, Tasker and Tasker
Products.
1.9 "Patents" shall mean the
patents and reissue
application listed
on
Schedule A, and any patents obtained by Licensor on an
Improvement
in the Field of Use, whether or not listed on Schedule A.
1.10
"PCTI Transferred
Patents" shall mean
the patent applications which
are transferred
by PCTI to Tasker
Products pursuant to the Asset
Purchase Agreement,
together with any
patent resulting
therefrom,
including any
continuation,
continuation-in-part, divisional,
reexamination, or
reissue that claim
subject matter outside the
Field of Use.
1.11
"Products" shall mean
products, compounds
and devices embodying the
Technology provided in the Field of Use.
1.12
"Services"
shall mean services
that embody the Technology provided
in the Field of Use.
1.13
"Technology" shall
mean a certain anti-microbial compound disclosed
and claimed in the Patents, and methods, processes, and equipment
for making and using such anti-microbial compound for end use in
the
Field of Use. In order to further clarify the understanding of the
Parties to
this Agreement, the Technology includes by way of
example, and without
limitation,
(i) a concentrate
which results
from the combination of an acid with an ammonium compound in
accordance with the manufacturing processes disclosed in the
Patents
("Base Concentrate"),
and (ii) blends and end products derived from
the Base Concentrate ("Derivative Products").
1.14
"Territory" shall mean
the world.
2
<PAGE>
1.15
"Third Party Transaction" shall mean a transaction involving
Licensor and an unaffiliated third party (other than Tasker,
Tasker
Products or any of their affiliates) pursuant to which the relevant
third
party would acquire rights under, in or related to the Patents
outside the Field of Use.
1.16
"Wynn Starr Agreement"
shall mean the Exclusive Field of Use License
Agreement and Product Sale Agreement made effective as of
September
16, 2004, as amended,
by and between
Tasker, Wynn Starr Special
Products, LLC,
PCTI, Indian River Labs, LLC and Licensor, as in
effect on the date hereof.
2. Grant of License to
Tasker Products.
2.1
Licensor
hereby grants to
Tasker Products a
royalty free exclusive
(even as to Licensor),
right and license under the Intellectual
Property in the
Territory to import, export, make, have made,
manufacture, use,
offer for sale and
sell Products in the Field of
Use and offer to provide and provide Services in the Field of
Use.
2.2
Tasker
Products shall have the unqualified right, at its sole
discretion, to
sublicense and to assign to third parties all or any
portion of the rights and licenses granted to it by Licensor in
this
Agreement. Such third parties include subsidiaries and affiliates
of
Tasker Products as
well as entities having no affiliation to Tasker
Products. All such
assignees and
sublicensees shall
have the same
rights and obligations as Tasker Products hereunder.
2.3
Except
as specifically set forth in Section 10 hereof, Tasker
Products has no other obligation to import, export, make, have
made,
manufacture, use,
offer for sale or sell
Products, or to offer
to
provide or provide Services.
2.4
Upon reasonable
request from Licensor,
Tasker Products will
report
to Licensor regarding
its activities with respect to its use of the
Technology, Products or Services.
3. Improvements.
3.1
Licensor
agrees that all
Improvements
having application in the
Field of Use made on or after the Effective Time shall become a
part
of the Intellectual Property and shall be automatically and
immediately licensed
to Tasker Products
pursuant to this Agreement
without further act or writing required.
3.2
Licensor
agrees to disclose in
writing all
Improvements to
Tasker
Products promptly
upon discovery or development thereof in such
full, clear and
complete terms as to enable Tasker Products to make
and use the same in the Field of Use. Such disclosure shall include
without limitation
conveying
to Tasker Products any and all
pertinent documentation and data in written and electronic
form.
3.3
None of Tasker
or Tasker Products shall have any obligation to
provide further
consideration, payment
or compensation of any kind
to Licensor (or its
affiliates, successors
or assigns) in exchange
for licensing Improvements as provided herein.
3
<PAGE>
3.4
All such
Improvements
shall be entered by the Parties hereto on
Schedule A,
but it is understood that a failure to so list an
Improvement shall not
be construed to mean that such Improvement is
not a part of this
Agreement and not a part of the Intellectual
Property.
4. Patents on
Improvements.
4.1
Licensor
shall have the right,
but not the
obligation,
to pursue
timely patent
protection for any and
all Improvements
within the
Field of Use, in which case Licensor shall bear all costs and fees
of prosecuting and maintaining such patent protection.
4.2
Licensor
shall have
ninety (90) days from the development of an
Improvement in which to decide to pursue patent protection for that
Improvement. In the
event that Licensor elects not to pursue patent
protection for that
Improvement
in any country or jurisdiction,
Licensor shall notify
Tasker Products promptly in writing of its
decision.
4.3
Tasker
Products shall have
the right, but not the
obligation,
to
pursue any patent on an Improvement in any country or jurisdiction
upon being notified
that Licensor has
elected not to pursue patent
protection in such
country or
jurisdiction,
in which case
Tasker
Products shall
bear all costs and fees of prosecuting and
maintaining such patent protection.
4.4
Each Party shall
provide assistance and
cooperation to the other to
the
extent necessary to prosecute and maintain patent protection as
provided herein,
including
without limitation providing the
signatures of
inventors and providing necessary data and
documentation.
5. Right of First
Refusal.
5.1
If Licensor, from time to time desires to enter
into a Third Party
Transaction it shall first deliver to Tasker Products written
notice
of such intent
describing in detail the terms of the proposed Third
Party Transaction ("Licensor's Notice").
5.2
Tasker Products
may, within fifteen (15) calendar days after receipt
of any Licensor's
Notice, elect to enter into a transaction
with
Licensor for the same
consideration
and on the terms set
forth in
the Licensor's Notice. Such election shall be evidenced by a
writing
signed by Tasker
Products and
delivered to Licensor within such
fifteen (15)
calendar day period and shall be binding on Tasker
Products. A closing of
the transaction
between Licensor and Tasker
Products shall take place at a mutually agreed location as promptly
as is possible in the circumstances.
5.3
In the event
that Tasker Products does not elect to enter into a
transaction with
Licensor on the terms of Licensor's Notice within
fifteen (15) calendar
days after Tasker
Products' receipt of
such
Licensor's
Notice, Licensor
may enter into the Third Party
Transaction with the
applicable
third party free of
the rights of
first refusal
set forth in this Section 5 within ninety (90)
--------- calendar
days after the expiration of such 15-day period,
on terms no more
favorable to the third party licensee than those
described in the
Licensor's
Notice. In the event that the Third
Party Transaction is not consummated within such 90-day period, any
subsequent attempt to enter into such a transaction shall be
subject
to this Section 5. ---------
4
<PAGE>
6. Research and Development Assistance to Tasker and Tasker Products.
Licensor
shall supply research
and development
assistance to Tasker
and
Tasker
Products pursuant to the following terms and conditions:
6.1
Licensor
shall promptly
provide to Tasker and
Tasker Products
all
technical assistance
reasonably able to be
provided by Licensor to
implement, refine and exploit the Intellectual Property in the
Field
of Use.
6.2
Such
assistance
shall include such
planning,
administration,
and
management of research
and development
activities in the
Field of
Use as the
Parties hereto may agree upon and all reasonably
necessary
training,
documentation and
data that Licensor is
reasonably able to provide.
6.3
Such assistance
shall also include
Licensor promptly (but
no later
than ten (10) business days following a request by Tasker)
providing
qualified personnel,
including without limitation David Creasey,
Barry Cummins,
and/or David Dickinson (to the extent they are
available) to
facilities
designated
by Tasker ("On-Site
Assistance"), provided
however that Licensor shall not be obligated
to provide more than thirty (30) man-hours of On-Site Assistance by
its personnel in any calendar month pursuant to this Section 6.
6.4
Tasker and
Tasker Products shall
pay Licensor a fee ("R&D Fees") in
quarterly
installments
commencing at
the Effective Time and
terminating upon
the earlier to occur of (a) the later of the
Termination Date (as
defined in Section 16
hereunder) or the
date
this Agreement is no
longer in force or effect pursuant to Section
16 hereunder or, (b) the termination of this Agreement
pursuant to
Section 9.3
hereunder.
R&D Fees will be
paid by Tasker and Tasker
Products to Licensor in advance, prior to the calendar quarter for
which they are payable. The R&D Fees will be as follows:
<TABLE>
<CAPTION>
-------------- ---------- ---------- ---------- ---------- ---------- -----------------
For 2005 For 2006
For
2007
For 2008 For 2009
For
Calendar
Years after 2009
-------------- ---------- ---------- ---------- ---------- ---------- ----------------
<S>
<C>
<C>
<C>
<C>
<C>
<C>
First
-- $
75,000
$ 250,000 $1,000,000 $2,000,000 $2,000,000
Calendar
Quarter
-------------- ---------- ---------- ---------- ---------- ---------- ----------------
Second
-- $
75,000
$ 250,000 $1,000,000 $2,000,000 $2,000,000
Calendar
Quarter
-------------- ---------- ---------- ---------- ---------- ---------- ----------------
Third
$ 25,000
$ 100,000 $ 500,000 $1,000,000 $2,000,000 $2,000,000
Calendar
Quarter
-------------- ---------- ---------- ---------- ---------- ---------- ----------------
Fourth
$ 75,000
$ 100,000 $ 500,000 $1,000,000 $2,000,000 $2,000,000
Calendar
Quarter
-------------- ---------- ---------- ---------- ---------- ---------- ----------------
</TABLE>
6.5
In addition,
Tasker and Tasker
Products shall reimburse Licensor on
a monthly basis for reasonable travel expenses and any other
out-of-pocket costs
associated
with providing the research and
development assistance
pursuant to this Section 6, subject to
Tasker's reasonable
approval of Licensor's
substantiation
of the
same.
5
<PAGE>
7. Infringement.
7.1
In the event
that any Patent is infringed by an unauthorized party
and such infringement
occurs outside the Field of Use, Licensor
shall have the right but not the obligation to enforce its rights
under that Patent,
including without
limitation the
bringing of a
lawsuit for infringement of that Patent. In such event:
(a) Tasker
and Tasker Products shall cooperate to the extent
reasonably necessary,
including without limitation making
records
and personnel pertinent to the Patent, the Product and
the Intellectual Property available to Licensor.
(b) Licensor
shall bear all costs and retain all monetary recovery
resulting from any such litigation or other action to
enforce
that Patent.
(c) Tasker
Products shall have the right to participate in
negotiating the terms
of any settlement
reached in the event
that the settlement would affect the rights of Tasker Products
in the Field of Use.
7.2
In the event
that any Patent is infringed by an unauthorized party
and such infringement occurs within the Field of Use, Tasker
Products shall have
the right but not the obligation to enforce the
rights of Licensor under that Patent, including without limitation
the bringing of a lawsuit for infringement of that Patent.
In such
event:
(a) Licensor
shall cooperate to the extent reasonably necessary,
including without
limitation
allowing suit to be
brought in
its name, making records and personnel pertinent to the
Patent, the Product and the Intellectual Property available to
Tasker Products.
(b) Licensor may
elect to participate in the enforcement in which
case (i) Licensor and
Tasker Products
shall share all
costs
thereof evenly
between them and (ii) Licensor and Tasker
Products shall divide all monetary recovery resulting from any
such litigation
or other action to enforce that Patent (A)
first so that Licensor and Tasker Products are fully
reimbursed for their
costs and expenses relating to such
litigation, (B)
next, from any remaining amounts, until
Licensor and
Tasker Products recover the actual damages
incurred by Licensor
and Tasker Products as
a result of such
infringement and (C) any remaining recovery to be split evenly
between Licensor and
Tasker Products.
If Licensor elects
not
to participate in the enforcement, then Tasker Products shall
bear all costs and retain all monetary recovery resulting from
any such litigation or other action to enforce that Patent.
(c) Licensor
shall have the right
to participate
in negotiating
the terms of any
settlement reached
in the event that the
settlement would
affect the rights of
Licensor outside the
Field of Use.
7.3
In the event
that any Patent is infringed by an unauthorized party,
such infringement
occurs within the Field of Use and
