(This is a License Agreement assumed to have been signed post-grant of the
Patent to VPPSM & Co.)
THIS AGREEMENT (hereinafter referred to as the "Agreement") is made by and
between VPPSM & Co. (hereinafter referred to as "Licensor"), a corporation with
principal office at No.6, Dubai Main Road, Dubai Cross, Dubai, Republic of TNNLU,
and MMP Company, a limited company with principal office at 004, Staffroom
Province, State of UG Block, Republic of TNNLU (hereinafter referred to as
WHEREAS, Licensor is the owner of all right, title, and interest in India Patent
No. 10000023 (which is hereinafter referred to as the "Licensed Patent");
WHEREAS, Licensee is in the business of wholesale trading of handicap aids and
equipment, and desires to obtain an exclusive license to make, use, and sell
product and to practice the inventions covered by the Licensed Patent;
WHEREAS, Licensor and Licensee desire to enter into a license agreement covering
the Licensed Patent; and
WHEREAS, Licensor has the right to grant an exclusive license to Licensee under
the Licensed Patent and is willing to do so on the terms and conditions recited
in this Agreement.
The parties agree as follows:
1.1 Licensed Patent. "Licensed Patent" as used in this Agreement shall mean
claims derived from India Patent No. 10000023, and any patent issued in the
future from any reissue, reexamination, divisional, continuation, and/or
continuation-in-part of the Licensed Patents, including any foreign counterpart
1.2 Territory. "Territory" as used in this Agreement shall mean the India and
its territories and possessions.
1.3 Effective Date. "Effective Date" shall mean
1.4 Term. "Term" as used in this Agreement shall mean the period beginning on
the Effective Date and ending with the expiration of the Licensed Patent or the
termination of this Agreement, whichever occurs first. This Agreement shall, if
not terminated sooner, terminate at the end of the Term.
1.5 Licensed Product. "Licensed Product" as used in this Agreement shall mean
certain units made, used, imported, sold, or offered for sale by Licensee,
including, but not limited to Locomotion Smart Multipurpose Suit for the
2.1 License Grant. Subject to the terms and conditions of this Agreement and the
due performance by Licensee of Licensee's obligations under this Agreement and
in reliance on Licensee's representations and warranties set forth in this
Agreement, Licensor hereby grants to Licensee an exclusive, nontransferable
license under the Licensed Patent for the Term in the Territory to make, use,
import, offer to sell, and sell Licensed Product, with no right to sublicense.
This license shall not extend to any third party, subsidiary, division, or any
entity acquired after the Effective Date.
2.2 Basis. The foregoing license is granted solely under the Licensed Patent. No
license under any other patents or intellectual property of Licensor is granted,
either expressly or by implication.
2.3 Marking. During the Term of this Agreement, Licensee shall affix to Licensed
Products a statement in substantially the form: "U.S. Patent Nos. 10000023." The
Licensee shall provide Licensor with the samples of its Licensed Products
evidencing proper marking as required hereunder. From time to time, and within a
reasonable time after written notice from Licensor, Licensor shall have the
right to inspect Licensee's Licensed Products to determine if Licensee is
marking in accordance with this paragraph.
3.1 Running Royalty.
3.1.1 Royalty Payment. For the rights granted in this Agreement, and subject to
Paragraphs 3.2 and 3.3 herein below, Licensee shall pay Licensor a royalty of
three percent (3%) of Licensee's selling price for each Licensed Product
manufactured, used, or sold by Licensee in the Territory or imported by Licensee
into the Territory.
3.1.2 Termination of Royalty on Invalidity or Unenforceability. The royalty
payments shall terminate if all of the Licensed Patents are held invalid or
unenforceable. A Licensed Patent shall be deemed invalid or unenforceable under
this Agreement if a court or tribunal of competent jurisdiction makes such a
determination, and the determination becomes final in that it is not further
reviewable through appeal or exhaustion of all permissible petitions or
applications for rehearing or review.
3.2 Accrual. A running royalty as to a unit of Licensed Product shall accrue on
the day the unit is shipped or invoiced to a Licensee customer, whichever occurs
3.3 Payment. All royalty payments to Licensor shall be made quarterly by
Licensee, with the first quarter being defined as January 1 through March 31,
the second quarter as April 1 through June 30, the third quarter as July 1
through September 30, and the fourth quarter as October 1 through December 31.
Payment of royalties shall be made to Licensor not later than the thirtieth
(30th) day (the "Due Date") after the end of the period to which the payment
relates. Each royalty payment as defined herein above shall be subject to and be
no less than a minimum royalty of ten Lakhs Rupees (?10,00,000) per quarter.
3.4 Accounting Statements. Licensee shall provide Licensor with a statement of
royalties due Licensor under this Agreement quarterly (as that term is defined
in Paragraph 3.3) on or before the Due Date, setting forth the amount due to
Licensor for the period and, in reasonable detail, the factual basis for
calculating the amount.
3.5 Interest. Subject to the limits imposed by any applicable usury law,
interest shall accrue on payments made more than ten (10) days after they are
due at the rate of twelve percent (12%) per annum, compounded daily, from the
due date until paid.
3.6 Books and Records and Audit. Licensee shall keep full, complete, and
accurate books of account and records covering all transactions relating to this
Agreement. Licensee shall preserve such books and records for a period of three
(3) years after the Due Date to which the material relates. Acceptance by
Licensor of an accounting statement or payment hereunder will not preclude
Licensor from challenging or questioning the accuracy thereof. During the Term
and for a period of one (1) year thereafter, Licensor may, upon reasonable
notice in writing to Licensee, cause an independent audit to be made of the
books and records of Licensee in order to verify the statements rendered under
this Agreement, and prompt adjustment shall be made by the proper party to
compensate for any errors disclosed by the audit. The audit shall be conducted
only by an independent accountant during regular business hours and in a
reasonable manner so as not to interfere with normal business activities. Audits
shall be made hereunder no more frequently than annually. Before any audit may
be conducted, the auditor must represent that the auditor's fee will in no
manner be determined by the results of the audit and must agree to maintain the
confidentiality of all confidential material to which the auditor is given
access. Licensor will bear all expenses and fees of the audit, but if the audit
reveals an underpayment for any quarter of more than five percent (5%), Licensee
shall pay all such expenses and fees. Licensee shall provide samples of any new
visual display units, and/or a complete written description thereof, sufficient
to enable Licensor to determine whether such product is covered by any of the
claims of any of the Licensed Patents.
3.7 Confidentiality. Licensor and Licensee acknowledge that the amount of
Licensee's payments actually made to Licensor under this Agreement is
confidential and proprietary information relating to this Agreement and the
business of Licensor and Licensee. Accordingly, the parties agree that each of
them shall keep that information confidential and shall not disclose it, or
permit it to be disclosed, to any third party (other than to agents or
representatives who need to know such information). Licensor shall have the
right, however, to disclose that Licensor and Licensee have entered into this
Agreement, the royalty rate(s) set forth in this Agreement, and that Licensee
has consented to the validity, enforceability, and infringement of the Licensed
4.1 Licensee Indemnification. Licensee shall at all times during the term of
this Agreement and thereafter indemnify, defend, and hold Licensor, its
directors, officers, employees, and affiliates harmless against all claims,
proceedings, demands, and liabilities of any kind whatsoever, including legal
expenses and reasonable attorneys' fees, arising out of the death of or injury
to any person or out of any damage to property, or resulting from the
production, manufacture, sale, use, lease, or advertisement of Licensed Products
or arising from any obligation of Licensee under this Agreement.
4.2 Licensor Indemnification. Licensor shall at all times during the term of
this Agreement and thereafter indemnify, defend, and hold Licensee, its
directors, officers, employees, and affiliates harmless against all claims,
proceedings, demands, and liabilities of any kind whatsoever, including legal
expenses and reasonable attorneys' fees, arising out of any breach of any
representation, warranty, or covenant expressly made by Licensor in this
5.1 Termination by Licensor. In addition to all other remedies Licensor may
have, Licensor may terminate this Agreement and the licenses granted in this
Agreement in the event that:
(a) Licensee defaults in its payment to Licensor and such default continues
unremedied for a period of thirty (30) days after the Due Date of this
(b) Licensee fails to perform any material obligation, warranty, duty, or
responsibility or is in default with respect to any term or condition undertaken
by Licensee hereunder, and such failure or default continues unremedied for a
period of thirty (30) days after written notice thereof to Licensee by Licensor;
(c) Licensee is liquidated or dissolved;
(d) Any assignment is made of Licensee's business for the benefit of creditors;
(e) Licensee liquidates a substantial portion of its business or engages in a
distress sale of substantially all of its assets;
(f) A receiver, or similar officer, is appointed to take charge of a substantial
part of Licensee's assets;
(g) Licensee is unable to pay its debts as they mature; or
(h) Any petition in bankruptcy is filed by or against Licensee that remains
undischarged for sixty (60) days.
5.2 Termination by Licensee. If the Licensed Patent is determined to be invalid
or unenforceable by any court or tribunal of competent jurisdiction, and the
determination becomes final in that it is not further reviewable through appeal
or exhaustion of all permissible petitions or applications for rehearing or
review, Licensee may terminate this Agreement at will and shall have no further
5.3 Effect of Termination. After the termination of this Agreement, Licensee
shall have no rights under the Licensed Patent.
5.4 No Discharge on Termination. No termination of this Agreement for any reason
shall relieve or discharge either Licensor or Licensee from any duty,
obligation, or liability that was accrued as of the date of the termination
(including, without limitation, the obligation to indemnify or to pay any
amounts owing as of the date of termination).
6. REPRESENTATIONS AND WARRANTIES OF LICENSOR
6.1 Right to Grant License. Licensor represents and warrants that Licensor has
the right and authority to grant the licenses granted to Licensee in this
Agreement and that this Agreement and the licenses granted in this Agreement do
not and will not conflict with the terms of any agreement to which Licensor is a
6.2 Disclaimers. Except as otherwise expressly set forth in this Agreement,
Licensor, its directors, officers, employees, and agents make no representations
and extend no warranties of any kind, either express or implied. In particular,
and without limitation, nothing in this Agreement shall be construed as:
(a) a warranty or representation by Licensor as to the validity or scope of the
(b) a warranty or representation by Licensor that anything made, used, sold, or
otherwise disposed of under any license granted in this Agreement is or will be
free from infringement of patents of third parties;
(c) an obligation on the part of Licensor to bring or prosecute actions against
third parties for infringement of the Licensed Patent or other proprietary
(d) an obligation on the part of Licensor to furnish any manufacturing or
(e) the granting by implication, estoppel, or otherwise of any licenses or
rights under patents other than the Licensed Patent; or
(f) the assumption by Licensor of any responsibilities whatever with respect to
use, sale, or other disposition by Licensee or its vendees or transferees of
6.3 Limitation of Liability. In no event shall Licensor, its directors,
officers, employees, or affiliates be liable for incidental or consequential
damages of any kind, including economic damage or injury to property and lost
profits, regardless of whether Licensor shall be advised, shall have other
reason to know, or in fact shall know of the possibility.
7. REPRESENTATIONS AND WARRANTIES OF LICENSEE
Licensee represents and warrants that Licensee has the right and authority to
enter into this Agreement and that this Agreement and the exercise of the
licenses granted hereunder do not and will not conflict with the terms of any
agreement to which Licensee is a party. Except as otherwise expressly set forth
in this Agreement, Licensee, its directors, officers, employees, and agents make
no representations and extend no warranties of any kind, either express or
implied. In particular, and without limitation, nothing in this Agreement shall
be construed as an obligation on the part of Licensee to furnish any
manufacturing or technical information.
8. RELATIONSHIP OF THE PARTIES
Nothing in this Agreement will be construed to constitute the parties as
partners or joint venturers or constitute either party as agent of the other,
nor will any similar relationship be deemed to exist between them. Neither party
shall hold itself out contrary to the terms of this paragraph and neither party
shall become liable by reason of any representation, act, or omission of the
other contrary to the provisions of this paragraph. This Agreement is not for
the benefit of any third party and shall not be deemed to give any right or
remedy to any such party, whether referred to in this Agreement or not.
9.1 No Assignment. This Agreement, the rights granted to Licensee, and the
duties and obligations of Licensee are all personal to Licensee and Licensee
agrees not to sell, assign, transfer, mortgage, pledge, or hypothecate any such
rights in whole or in part, or delegate any of its duties or obligations under
this Agreement; nor shall any of Licensee's rights or duties be assigned,
transferred, or delegated by Licensee to any third party by operation of law.
Any purported transfer, assignment, or delegation in violation of the foregoing
sentence shall be void and without effect, and this Agreement shall thereupon
become terminable without further notice by Licensor. In the context of this
provision, "assignment" shall include the transfer of substantially all of the
assets of Licensee, or of a majority interest in the voting stock of Licensee,
or the merger, consolidation, or reorganization of Licensee with one or more
9.2 Binding on Successors. This Agreement will inure to the benefit of and be
binding upon Licensor, its successors, and assigns.
10. DISPUTE RESOLUTION
10.1 Arbitration of Royalty Disputes.
(a) Any dispute between Licensor and Licensee concerning the amount of royalties
payable to Licensor under this Agreement shall be submitted for binding
arbitration in accordance with the provisions of this Section 10 and the
then-applicable rules of the American Arbitration Association (the
"Association"). Judgment upon the arbitration award may be entered in any court
of competent jurisdiction.
(b) The power of the arbitrators shall be limited to resolving the specific
issues stated by determining the royalties Licensee owes or should receive
credit for, if any, under this Agreement. The power of the arbitrators shall not
extend to any other matters. All other disputes shall be subject to litigation
in a court of competent jurisdiction.
(c) The arbitration panel or tribunal shall consist solely of neutral
(d) The parties agree that arbitration proceedings under this Agreement shall
not be stayed on the ground of pending litigation to which either or both of
them is a party.
10.2 Remedies. Except as expressly provided herein, all specific remedies
provided for in this Agreement are cumulative and are not exclusive of one
another or of any other remedies available in law or equity.
11. LIMITATIONS OF RIGHTS AND AUTHORITY
11.1 Limitation of Rights. No right or title whatsoever in the Licensed Patents
is granted by Licensor to Licensee, or shall be taken or assumed by Licensee,
except as is specifically set forth in this Agreement.
11.2 Limitation of Authority. Neither party shall, in any respect whatsoever, be
taken to be the agent or representative of the other party, and neither party
shall have any authority to assume any obligation for the other party, or to
commit the other party in any way.
12.1 Computation of Time. The time in which any act provided in this Agreement
is to be done shall be computed by excluding the first day and including the
last day, unless the last day is a Saturday, Sunday, or legal holiday, and then
it shall also be excluded.
12.2 Notices. All notices given in connection with this Agreement shall be in
writing and shall be deemed given upon actual receipt by the addressee. Notices
shall be personally delivered or sent by telex or facsimile (with prompt
confirmation by registered or certified air mail, postage prepaid) or by
registered or certified air mail, postage prepaid, addressed to the party to be
notified at the following address, or at such other address as the party may
designate by notice:
1 Main Street
Attention: John Smith
250 Zhong Zhen Road
Attention: Kevin Chen
12.3 Survival. The provisions of this Agreement relating to payment obligations,
confidentiality, indemnification, remedies, and arbitration shall survive the
expiration or termination of this Agreement.
12.4 Severability. If any provision of this Agreement is declared by a court of
competent jurisdiction to be invalid, illegal, unenforceable, or void then both
parties shall be relieved of all obligations arising under such provision, but
only to the extent that such provision is invalid, illegal, unenforceable, or
void. If the remainder of this Agreement is capable of substantial performance,
then each provision not so affected shall be enforced to the extent permitted by
12.5 Waiver and Modification. No modification of any of the terms of this
Agreement will be valid unless in writing and signed by both parties. No waiver
by either party of a breach of this Agreement will be deemed a waiver by such
party of any subsequent breach.
12.6 Headings. The headings in this Agreement are for reference only and shall
not in any way control the meaning or interpretation of this Agreement.
12.7 Interpretation. No provision of this Agreement is to be interpreted for or
against any party because that party or its attorney drafted the provision.
12.8 Governing Law. This Agreement shall be construed, governed, interpreted,
and applied in accordance with the laws of the State of Delaware, United States
12.9 No Other Agreement. The parties each represent that in entering into this
Agreement, they rely on no promise, inducement, or other agreement not expressly
contained in this Agreement; that they have read this Agreement and discussed it
thoroughly with their respective legal counsel; that they understand all of the
provisions of this Agreement and intend to be bound by them; and that they enter
into this Agreement voluntarily.
12.10 Entire Agreement. This Agreement constitutes the complete and exclusive
statement of the terms and conditions between the parties, which supersedes and
merges all prior proposals, understandings, and all other agreements, oral and
written, between the parties relating to the subject of this Agreement.
12.11 Counterparts. This Agreement may be executed in counter-parts, which taken
together shall constitute one document.
The Parties agree to the terms of this Agreement above and have executed this
Agreement by their duly authorized representatives.
|For and on behalf of
|For and on behalf of
A Limited Company