| 1 |
Definitions |
| 1.1 |
In this Agreement except where the context otherwise requires the following
terms shall have the following meanings:‑ |
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| associated company |
means either party's ultimate holding company or any subsidiary of such
ultimate holding company ("holding company" and "subsidiary" having the
meanings given in section 736 and section 736A of the Companies Act 1985); |
| essential products |
means those products specified in Schedule A, as amended from time to time,
which are necessary for a technically proper exploitation of the Licensed
Method; |
| field of use |
means the field of use specified in Schedule B ; |
| improvement |
means any improvement enhancement or modification to the Licensed Method or
to the Essential Products; |
| initiation fee |
means the fee payable on entry into this Agreement, specified in Schedule C;
|
| intellectual property |
means copyrights, moral rights, related rights, patents, supplementary
protection certificates, petty patents, utility models, trade marks, trade
names, service marks, design rights, database rights, semiconductor
topography rights, plant variety rights, rights in unfair competition,
rights in undisclosed or confidential information (such as know how, trade
secrets and inventions (whether patentable or not)), and other similar
intellectual property rights (whether registered or not) and applications
for such rights as may exist anywhere in the world; |
| licensed method |
means the method described in Schedule A; |
| licensed IP |
means all Intellectual Property relating to the Licensed Method and the
Essential Products owned by Licensor or which the Licensor has the right to
license under this Agreement ; |
| licensor's trademarks |
means all and any trademark(s) used by the Licensor in connection with the
Licensed Method and the Essential Products, whether or not registered; |
| method royalty rate |
means the sum specified in Schedule C for each litre of waste product
collected using the Licensed Method |
| non exclusive |
means in respect of a right granted under this Agreement that the grantor
may itself exercise that right and may authorise and assist others to
exercise that right; |
| persons(s) |
includes any person, firm or company or group of persons or unincorporated
body; |
| territory |
means the geographical area specified in Schedule B |
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| 1.2 |
The singular includes
the plural and vice versa.
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| 1.3 |
Unless the context
otherwise indicates, references to clauses, sub-clauses, recitals and to
Schedules are to clauses and sub-clauses of, and recitals and Schedules to this
Agreement. |
| 1.4 |
Headings to clauses
in this Agreement are included for the purpose of ease of reference only and
shall not have any effect on the construction or the interpretation of this
Agreement. |
| 1.5 |
References in this
Agreement to any statute or statutory provision shall include any statute or
statutory provision which amends, extends, consolidates or replaces the same and
shall include any orders, regulations, instruments or other subordinate
legislation made under the relevant statute.
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| 2 |
Grant |
| 2.1 |
The Licensor hereby
grants to the Licensee a non-exclusive license under the Licensed IP in the
Field of Use to perform the Licensed Method in the Territory ; |
| 2.2 |
Licensee shall have
no right to grant sub‑licenses under this Agreement. |
| 2.3 |
No further right or
license is granted to the Licensee under the Licensed IP save as set out
expressly in this Clause 2. |
| 2.4 |
The Licensee shall
not during the term of this Agreement exploit the Licensed IP in the
Territory outside the Field of Use or purport to grant others the right to
do so. |
| 2.5 |
The
Licensor has no obligation under this Agreement to provide the Licensee with any
technical information or know how of any nature except as expressly set out in
the Consulting Agreement between the parties of even date herewith. |
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| 3 |
IMPROVEMENTS |
| 3.1 |
If either party shall
at any time devise, discover or acquire rights in any Improvement it shall
to the extent that it is not prohibited by law or by any undertaking given
to any other person (other to an associated company) or by considerations
relating to the securing of a patent promptly notify the other in writing
giving details of it and provide to the other such information or
explanations as the other may reasonably require to be able effectively to
utilise the same and in any case where a party applies for a patent in
respect of any such Improvement it shall grant a non‑exclusive royalty-free
license throughout the world (irrevocable in the case of a license to the
Licensor) under such application and any patent granted pursuant to it to
the other. |
| 3.2 |
Such information as
is provided under Clause 3.1 shall be subject to the provisions of Clause 4
(Confidentiality). |
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| 4 |
Confidentiality |
| 4.1 |
The Licensee shall
keep and shall procure that its respective directors and employees keep
secret and confidential all know‑how, trade secrets relating to the
performance of the Licensed Method and other information (whether or not
technical) of a confidential nature, which has been communicated to it by
the Licensor either preparatory to or as a result of this Agreement or any
other agreement between the parties and shall not disclose the same or any
part of the same to any person whatsoever other than to its directors or
employees directly or indirectly concerned in the carrying out of the
Licensed Method PROVIDED THAT before any such disclosure takes place the
Licensee shall procure that each of the directors and employees concerned
shall execute a confidentiality undertaking with it in a form approved by
the Licensor such approval not to be unreasonably withheld. |
| 4.2 |
The provisions of
Clause 4.1 shall not apply to such know‑how and information as the Licensee: |
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|
(a) |
can prove to have
been in its possession (other than any obligation of confidentiality
owed directly or indirectly to the Licensor) at the date of receipt or
which becomes public knowledge otherwise than through a breach of an
obligation of confidentiality owed (whether directly or indirectly) to
the Licensor; or |
|
(b) |
is
necessarily disclosed as a result of carrying out the Licensed Method or the
marketing of the Licensed Products. |
|
|
4.3 |
The Licensee shall
upon the request of the Licensor but at its own expense take such steps as
the Licensor may require to enforce any confidentiality undertaking given by
a director or employee of the Licensee including in particular but without
prejudice to the generality of the foregoing obligation the initiation and
prosecution of any legal proceedings and the enforcement of any judgment
obtained. All such steps to be taken by the Licensee shall be taken as
expeditiously as possible and the Licensee agrees that in respect of its
obligation to enforce confidentiality undertakings time shall be of the
essence in complying with the requirements of the Licensor. |
|
4.4 |
The provisions of
Clauses 4.1 to 4.3 above shall apply mutatis mutandis to confidential
information of the Licensee provided to the Licensor, provided that the
Licensee shall have identified in writing that such information is
confidential at the time that it was provided to the Licensor. |
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The
provisions of this Clause 4 shall remain in force notwithstanding expiry or
earlier termination of this Agreement for any reason. |
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| 5 |
TRADEMARKS |
|
5.1 |
Essential Products
supplied by Licensor under this Agreement will bear the Licensor's
Trademarks. Licensee is hereby granted the right to use the Licensor's
Trademarks on and in connection with the Essential Products or in
advertising but only where such advertising directly refers to the Essential
Products or the Licensed Method. Such advertising must state that
these trademarks are proprietary to Licensor. |
|
5.2 |
Licensee agrees not
to remove, alter, or otherwise modify any identification marks or trademarks
affixed by Licensor to Essential Products. Licensor agrees that
Licensee may add its own trademarks to the Essential Products, provided that
Licensor has given prior approval for the proposed method of marking. |
|
5.3 |
Licensee agrees not
to register in its own name without the prior written permission of Licensor
the Licensor's Trademarks or any other trade or service mark confusingly
similar to the Licensor's Trademarks or any of them. |
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| 6 |
ROYALITY |
|
6.1 |
In consideration for
the rights granted under Clauses 2 and 5 the Licensee shall pay to the
Licensor: |
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|
(a) |
the Initiation Fee; and |
|
(b) |
a royalty for use of
the Licensed Method at the Method Royalty Rate |
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|
6.2 |
Royalties payable
under this Agreement are exclusive of any value added (or like) tax which
may be payable on them and shall be paid gross without deduction of any
withholding or other income taxes and if subject to withholding or other
income taxes Licensee shall ensure that such sum is paid to Licensor as
shall, after deduction of such withholding or other income tax, be
equivalent to the royalties otherwise payable under the Agreement. |
|
6.3 |
The Initiation Fee
shall be paid within 14 days of the effective date of this Agreement.
Royalties payable under this Agreement shall be paid in pounds sterling
within 30 days of the end of each successive quarterly period of three
months commencing on 1 October, 1 January, 1 April, 1 July in each year.
Interest shall be payable (calculated on a daily basis) on any overdue
payments from the date payment is due until the actual date of payment at a
rate of 3% over the base lending rate of Bank from time to time. |
|
6.4 |
At the same time as
payment of any such royalties falls due the Licensee shall submit or cause
to be submitted to the Licensor a statement in writing recording the
calculation of royalty payable under this Agreement in particular: |
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| (a) |
the
total quantity of waste product collected according to the Licensed Method
during the previous quarter; |
|
(b) |
the amount of
royalties due and payable and the amount of any tax deductible or due to
be deducted from such amount. |
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|
6.5 |
The Licensee shall
keep proper records and books of account showing the quantity of waste
product collected. Such records and books shall be open upon
reasonable notice to inspection and audit by the Licensor or its duly
authorised agent or representative who shall be entitled to take copies of
or extracts from the same. In the event such inspection or audit
should reveal a discrepancy in the royalties paid from those payable under
this Agreement the Licensee shall immediately make up the shortfall and
reimburse the Licensor in respect of any professional charges incurred for
such audit or inspection. |
|
6.6 |
Except as provided in
Clause 11 the provisions of this Clause shall remain in force
notwithstanding expiry or earlier termination of this Agreement for any
reason until the settlement of all subsisting claims of the Licensor under
this Agreement. |
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| 7 |
PROTECTION OF THE
LICENSED IP
|
| 7.1 |
In the event that: |
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| (a) |
the validity of any
Licensed IP is attacked or being a patent application is opposed; or |
| (b) |
any application for a
patent is made by or any patent is granted to a third party by reason of
which the third party in the Licensor's opinion may be granted or may
have been granted rights which conflict with any of the rights granted
to the Licensee under any of the Licensed IP; or |
| (c) |
any unlicensed
activities are carried on by any third party which in the Licensor's opinion
constitute an infringement of any Licensed IP; or
|
| (d) |
any application is
made for a compulsory licence under any Licensed Patent |
the Licensee shall
forthwith notify the Licensor of any such matters and shall join the Licensor in
taking all such steps (if any) as in the opinion of the Licensor (in its total
discretion) shall be desirable for the protection of the Licensor's rights under
the Licensed IP. The expenses incurred in taking such steps and any profits
which may be obtained shall, in the absence of agreement to the contrary, be for
the account of the Licensor.
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| 7.2 |
Nothing in this Agreement shall constitute any representation that the
Licensed IP (if patent or trademark applications) shall proceed to grant or
if granted shall be valid or that the Licensed Products do not fall within
the scope of any intellectual property rights other than the Licensed IP. |
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| 8 |
Essential Products |
| 8.1 |
The
Licensee agrees to purchase from the Licensor or its nominated sub-contractor
such Essential Products as it requires to carry out the Licensed Method in the
Territory. The parties agree that Schedule A may be amended from time to time
as new Essential Products are made available by the Licensor. |
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| 9 |
Training |
| 9.1 |
The Licensor will
provide training in performance of the Licensed Method and in use of the
Essential Products in accordance with Schedule D. |
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| 10 |
Duration, Termination & Terms for Termination |
| 10.1 |
This Agreement shall
come into force on the date on which it is signed by both parties and shall
unless determined in accordance with Clause 10.3 remain in force for [five]
years. |
| 10.2 |
Thereafter, the Licensee may renew this Agreement annually by giving at least
three months written notice to the Licensor, provided, however, that on each
renewal the Licensor shall be entitled to increase the Method Royalty Rate by an
amount not to exceed [5]%. After expiry of the initial term specified in clause
10.1, the Licensor may terminate this Agreement only if the Licensee is under
performing at the expiry of any subsequent annual term by giving not less than
six months written notice to the Licensee. |
| 10.3 |
The Licensor shall
have the right to terminate this Agreement immediately by notice in writing
to the Licensee if: |
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| (a) |
the Licensee shall
fail to make any payment when it becomes due or shall fail to perform or
observe any material obligation on its part to be performed or observed
under this Agreement PROVIDED THAT in a case where (in the reasonable
opinion of the Licensor) the breach is remediable such notice from the
Licensor shall also require the Licensee to remedy the breach and if the
Licensee so remedies within 30 days of the notice being served such
notice to terminate this Agreement shall be deemed to be void and of no
effect; or |
| (b) |
if an interim order
is applied for or made, or a voluntary arrangement approved, or if a
petition for a bankruptcy order is presented or a bankruptcy order is
made against the Licensee or if a receiver or trustee in bankruptcy is
appointed of the Licensee's estate or (the Licensee being a company) a
voluntary arrangement is proposed or approved or an administration order
is made, or a receiver or administrative receiver is appointed over any
of the Licensee's assets or undertaking or a winding-up resolution or
petition is passed or presented (otherwise than for the purposes of
reconstruction or amalgamation) or if any circumstances arise which
would entitle the Court or a creditor to appoint a receiver,
administrative receiver or administrator or to present a winding-up
petition or make a winding-up order or other similar or equivalent
action is taken against or by the Licensee by reason of its insolvency
or in consequence of debt; |
| (c) |
in any of the other
events expressly identified in this Agreement as giving a right to
terminate. |
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| 11 |
Consequences of
Termination |
| 11.1 |
On termination of
this Agreement however arising: |
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| (a) |
all outstanding sums
payable by the Licensee to the Licensor shall immediately become due and
payable; |
| (b) |
all rights and
licenses shall cease; |
| (c) |
the
Licensee shall cease all and any exploitation of the Licensed IP |
| (d) |
stock shall be
purchased back at the same price paid, depending if payment was
made. |
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| 11.2 |
The termination of
this Agreement, however arising, shall be without prejudice to the
provisions of Clause 4 and this Clause 11 and to any rights of either party
which may have accrued by at or up to the date of termination. |
| 12 |
General |
| 12.1 |
Except as expressly
permitted in this Agreement the Licensee shall not assign, transfer, charge,
encumber or otherwise deal with the whole or any part of this Agreement or
any of its rights or obligations under this Agreement. |
| 12.2 |
If any clause or any
part of any clause in this Agreement is declared invalid or unenforceable by
the judgement or decree, by consent or otherwise of a court of competent
jurisdiction from whose decision no appeal is or can be taken all other
clauses or parts of clauses in this Agreement shall remain in full force and
effect and shall not be affected thereby for the term of this Agreement. |
| 12.3 |
No relaxation
forbearance delay or indulgence by either party in enforcing any of the
terms and conditions of this Agreement or the granting of time by either
party to the other shall prejudice affect or restrict the rights and powers
of that party nor shall any waiver by either party of any breach of this
Agreement operate as a waiver of or in relation to any subsequent or any
continuing breach of this Agreement. |
| 12.4 |
This Agreement may
not be amended unless in writing signed by the duly authorised officer of
each party. |
| 12.5 |
The parties shall
execute all further documents as may be necessary or desirable to give full
effect to the terms of this Agreement and to protect the rights of the
parties under it. |
| 12.6 |
This Agreement
constitutes the entire agreement between the parties relating to its subject
matter and each party confirms to the other than it has not entered into
this Agreement on the basis of or in reliance on any representations or
warranties made or given by the other party its servants or agents. |
| 12.7 |
Any notice or other
document to be given under this Agreement shall be given by sending the same
in a pre-paid first class letter or by courier to the address of the
relevant party set out in this Agreement or to any other address which that
party may have notified to the other for such purpose. Any notice sent
by post shall be deemed (in the absence of evidence of earlier receipt) to
have been delivered 7 days after despatch and in proving the fact of
despatch it shall be sufficient to show that the envelope containing such
notice was properly addressed stamped and posted. Electronic communication
could be unreliable. |
| 12.8 |
This Agreement shall
be governed by and construed and interpreted in accordance with the laws of
England and the parties hereby submit to the exclusive jurisdiction of the
English courts. |
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