NON-EXCLUSIVE WARMAN
'318 PATENT LICENSE
AGREEMENT
ADMINISTRATIVE
FEE WAIVED
Make two copies, execute them, and
return
them to the address below ("Licensor").
This agreement ("Agreement") is effective on the day of , 2008.
1. Parties.
a. "Licensor".
V S.
Protective Shield Inc.
("Warman")
*
b. "Licensee". Name: ________________________
Address: .________________________
.________________________
.________________________
Auction
ID: .________________________
("Licensee")
2. Definitions.
a. "Licensed Patents".
(1). U.S. Patent Re. 35,318
("the
'318 patent").
Inventor: William J. Warman
Title: Viewing Screen Protective Shield
Issued :
Appl. No.:
276,983
Filed:
Expires:
which is a reissue of
U.S. Patent 5,132,588
Issued:
Appl. No.:
309,486
Filed:
(2). Any patent issued anywhere in the world on an
Improvement to a patent included in Licensed Patents.
b. "Licensed Apparatus". Any apparatus on which an
unexpired apparatus claim of a Licensed Patent reads, e.g., claims 6-9
of
the '318 patent.
c. "Licensed Method". Any
method on which an unexpired method claim of a Licensed Patent reads,
e.g.,
claims 2-5 of the
'318 patent.
d. "Screen Protector". Thin,
flexible, transparent, plastic film for use as a protective shield for
a face plate of an electronic
instrument in a Licensed Apparatus
or a
Licensed Method.
e. "Collateral Products or Sales".
Licensee's anticipated additional sales of products
the
substantial value of which is financially
or technologically dependent upon,
created by,
or related to a Screen Protector made, used, offered for sale, or sold
for use
in a Licensed Apparatus or a Licensed
Method of
a Licensed Patent, for example, including, but not limited to , those
products routinely purchased with a
Screen
Protector or used in conjunction with a Screen Protector, such as, a
Personal
Data Assistant ("PDA") Survival Kit
which includes a screen cleaner, a wiping cloth, a Screen Protector,
and a
writing
stylus.
f. "Improvement". Any method
or
apparatus which makes better any function, way or result achieved by a
Licensed
Apparatus or a Licensed Method of
a
Licensed Patent.
g. "Net Selling Price". The Net Selling Price is the gross selling price charged
to the
purchaser of a Screen Protector or a
Collateral Product less
charges for
packing, shipping, taxes, and standard trade discounts which shall not
exceed
an
amount which is ordinary and
reasonable for the sale of a Screen Protector or a Collateral Product
for use
in a
Licensed Apparatus or a
Licensed
Method of a Licensed Patent.
h. "Reseller License". A
Reseller License is a license to resell under Warman U.S. Patent Re.
unlicensed Screen Protector
or
Collateral Product subject to all of the terms and conditions of this
license
Agreement.
3. License
Grant. The non-exclusive, non-transferable, non-sublicenseable, right to
make, use, offer
for sale, and sell
Screen Protectors for use in a Licensed
Apparatus or a
Licensed Method of a Licensed Patent worldwide.
4. Payments By
Licensee. Licensee shall pay to Licensor:
a. One Time Administrative Fee. An initial, non-refundable,
payment,
for the recovery in part of research and development
expenses and expenses for the administration
of this licensing program, payable according to the terms and
conditions
set
forth in Exhibit A hereto hereby incorporated
herein by reference.
b. Royalties For Past Infringement
Per Use. Licensee shall pay Licensor a royalty for
each past manufacture,
use, offer for
sale, or sale of a Screen Protector or a
Collateral
Product by or on behalf of Licensee for use in or in conjunction
with a
Licensed Apparatus or a Licensed Method of a
Licensed
Patent prior to the effective date of this agreement in the amount
set forth in Exhibit A hereto hereby
incorporated
herein by reference.
c. Royalties For The Future Per Use. Licensee shall pay Licensor a royalty for each future
manufacture,
use, offer for sale,
or sale of a Screen Protector or a Collateral
Product
by or on behalf of Licensee for use in or in conjunction with a
Licensed
Apparatus or a Licensed Method of a Licensed
Patent
subsequent to the effective date of this agreement in the amount set
forth in Exhibit A hereto hereby incorporated
herein
by reference.
5. Government
Approvals. Licensee shall obtain all necessary
government
approvals, if any, at its expense and
shall
provide evidence of same to Licensor on
request.
Licensee shall comply with all state and federal laws and regulations
regarding the manufacture, use, offer for sale
or sale
of a Screen Protector or a Collateral Product by or on behalf of
Licensee for use in or in conjunction with a
Licensed
Apparatus or a Licensed Method of a Licensed Patent.
6. Patent
Marking. Licensee shall
mark each
Screen Protector sold by or on behalf of Licensee for use in a Licensed
Apparatus or a Licensed Method of a Licensed
Patent
with the applicable statutory patent notice as follows:
a. Manufacturing Licensee shall mark:
"Manufactured Under License Of Warman U.S. Patent Re 35,318."
b. Reseller Licensee shall
mark:
"Resold Under License Of Warman U.S. Patent Re 35,318."
Additionally, all advertised
sales by a
Reseller Licensee shall also clearly state in the advertisement the
applicable
statutory
patent notice set forth above.
c. A sample of the markings of all products will
be sent
to Mr. Warman within 5 days of
completion, but before the product release to
V S. Protective Shield Inc.
7. Reports.
a. Timing. A report of all
royalties
due shall be made within 7 days after the
end of each
calendar month and on termination
of sales by or on behalf of Licensee of Screen
Protectors and Collateral Products for use in or in conjunction with a
Licensed Apparatus or a Licensed Method of a
Licensed
Patent during the preceding calendar month.
Reseller Licensees only, shall make their
report of
their royalties due by close of business of the day following
completion
of each resale. Paypal payments, and
reports
will be accepted at either
All reports shall be mailed to:
V S. Protective Shield Inc.
b. Payment.
At the same time, Licensee shall pay the royalty due indicated by the
report.
Payments shall be made by check to
William J. Warman at the above address.
c. Content. The report shall
separately
state for each Screen Protector and for each Collateral Product sold by
or on
behalf
of Licensee: the
model
number, gross selling price, shipping or other setoff costs, net
selling price,
applicable royalty rate,
and calculation of the total royalty due.
d. Records. Licensee shall keep
detailed
and accurate records.
e. Audit. Licensor or its agent
may
inspect Licensee's books twice annually at Licensor's option during
working
hours on
reasonable notice.
8. Warranty And
Acknowledgments.
a. By Licensor. Licensor
warrants:
(1). Title. Licensor owns full and unencumbered title to the
Licensed
Patents, and
(2). Right To Contract. Licensor is
not
violating any contract, fiduciary duty or other obligation relating to
the
licensing of
the Licensed Patents and that it has the
right
to enter into this agreement.
b. By Licensee.
(1) Right To Contract. Licensee
warrants that it
has the right to enter into this Agreement.
(2) Voluntariness.
Licensee acknowledges that it enters this Agreement
voluntarily and
without any threat or coercion of any
type or nature and that Licensee's
agreement to
pay royalties on the basis of the net selling price of unpatented
Screen
Protectors and Collateral Products sold
by or on
behalf of Licensee for use in or in conjunction with a Licensed
Apparatus
or a Licensed Method of a Licensed
Patent is a
voluntary choice on the part of Licensee.
(3) Ownership. Licensee acknowledges that
Licensor
owns the invention described and claimed in the Licensed Patent.
9.
Indemnification. Licensee holds Licensor
harmless from
all claims or liabilities arising out of the manufacture, use,
offer for sale, or sale of a Screen Protector
or
Collateral Product by or on behalf of Licensee for use in or in
conjunction
with a Licensed Apparatus or a Licensed Method
of a
Licensed Patent.
a. Product Liability Insurance.
Licensee
shall maintain product and method liability insurance throughout the
term of
this
license and shall name Licensor as an
additional
insured thereunder.
10.
Improvements.
a. Disclosure. Licensee
shall
promptly disclose to Licensor any Improvement in a Licensed Apparatus
or a
Licensed Method
of a Licensed Patent invented by or on
behalf of
Licensee.
b. Licensee Pursuit Of Patents.
Licensee shall use reasonable diligence and
judgment in obtaining
and maintaining patents
worldwide on said Improvements at its own
expense and
shall give prompt and timely notice to Licensor of any Improvement
on which Licensee elects not to seek patent
protection
anywhere in the world and shall also give prompt and timely notice
to Licensor of any patent or patent
application of or
on behalf of Licensee on any Improvement anywhere in the world
which Licensee elects not to maintain.
c. Licensor Option To Pursue.
Licensor
shall have the option to obtain, own and maintain patents and patent
applications at its
own expense on any Improvement anywhere in the
world
for which it receives notice under paragraph (b).
d. Inclusion In Patent Rights and
License
Back. Licensor, in its sole discretion, may include in Licensed
Patents,
each patent
issued to Licensor or Licensee
which
covers an Improvement, unless objected to by Licensee. Licensor shall
have a
royalty-free, non-exclusive license back to
make, use,
offer for sale and sell worldwide any
Improvement
invented by or
on behalf of Licensee for the life of said
Improvement.
11. Term.
The life of each patent in Licensed Patents.
12. Patent
Invalidity. If all claims of Licensed Patents
which cover either a Licensed Apparatus or a Licensed Method
are held invalid by an unappealed
decision of a court of competent jurisdiction, the license shall
terminate, but
Licensee
shall still be obligated to pay
sums due
under this license prior to termination.
13.
Termination.
a. By Licensor. By
written notice of termination upon uncured default after 30 days of
written
notice of said default.
b. Bankruptcy Etc. Except
as prohibited by applicable state/federal law, upon filing of petition
in
bankruptcy, upon adjudication
that Licensee is bankrupt or insolvent, or
upon
assignment or appointment of a receiver for the benefit of creditors.
c. By Licensee. As to any patent in
the Licensed
Patents by written 60 days notice of termination, and, thereafter,
Licensee
shall cease and desist from use of any invention
covered by
said patent as to which the license was terminated.
d. Sell Off Period. Licensee has 60 days after termination
to sell
off its inventory of Screen Protectors and Collateral Products
for use in or in conjunction with a Licensed
Apparatus
or a Licensed Method of a Licensed Patent subject to the terms of
this Agreement and at the end of that period
all
unsold inventory shall be delivered in good
condition
to Licensor.
14. Patent
Prosecution. Licensor shall prosecute and
maintain the
Licensed Patents for the term of the Agreement
except as otherwise provided above
with
respect to improvement patents.
15. Patent
Infringement.
a. Notice By Licensee. Licensee
shall give
prompt notice to Licensor of any infringement of a Licensed Patent by a
third
party
of which it has knowledge.
b. Licensor To Enforce Licensed
Patents.
Licensor shall have the sole right to enforce the Licensed Patents
against
third
parties to enjoin infringements at its own
expense and
shall retain all recoveries received therefrom.
Licensee shall cooperate
fully with Licensor at Licensor's expense.
16.
Heirs And Assigns. The heirs of
the parties shall be bound by this
agreement. Licensor has the right to
assign this
Agreement. Licensee shall not assign
this
agreement without the consent of Licensor.
17.
Miscellaneous Provisions.
a. Notice. All notices or other
communications to be given by either party to the other party under the
provisions of this
agreement shall be telefaxed
and then forwarded, charges prepaid, by certified mail to the
respective
parties as follows:
If to Warman:
V S.
Protective Shield Inc.
* If to Licensee: Name:
_______________________
Address: _______________________
_______________________
Phone: _______________________
Fax: _______________________
Attn:
_______________________
Name, Title
b. Licensee Not Agent Or Legal
Representative. Licensee is an independent party and shall
not be considered as an agent or legal representative of
Licensor.
c. Entire Agreement. This Agreement
contains the
entire agreement and understanding between the parties and supersedes
any prior
understandings and agreements between or among them respecting the
subject
matter contained herein. There are no representations or warranties,
oral or
written, expressed or implied, between or among the parties hereby
relating to
the subject matter of this Agreement which
are not
fully expressed herein.
d. Modification. No modification,
alteration,
amendment, change or addition to this Agreement shall be binding upon
the
parties hereto unless reduced to writing
and signed by
both parties.
e. Disputes, Arbitration, Attorneys Fees.
The
parties agree that, in the event of a dispute, controversy or claim
relating to
or arising out of this Agreement, the parties to the dispute hereby
agree to
submit the matter to binding arbitration in accordance with the rules
of the
American Arbitration Association. The seat of arbitration shall be in
f. Governing Law.
IN WITNESS HEREOF, the parties have entered into this agreement effective as of the first date written above.
Dated:___________________ By:
______________________
William J. Warman
Company Name: ______________________
*Dated:
___________________ By: ______________________
Name: ______________________
Title: ______________________
Address: ______________________
______________________
E-Mail: ______________________
EXHIBIT A
SCHEDULE OF FEES AND ROYALTIES
1.
ADMINISTRATIVE FEE:
a. Manufacturing Licensee: $5,000.00 payable either (1)
upon
execution of this agreement, or (2) at the rate of $.01 per square inch
of
Screen Protector or $.05 per Screen Protector sold by or on behalf of
Licensee
plus 15% simple interest per annum on any unpaid balance until paid in
full,
unless otherwise agreed to in writing.
b. Reseller Licensee: $5,000.00 payable either (1) upon
execution
of this agreement, or (2) at the rate of $.05 per Screen Protector sold
by
Licensee plus 15% simple interest per annum on any unpaid balance until
paid in
full or until Licensee ceases to sell Screen Protectors or Collateral
Products,
whichever is earlier.
2.
ROYALTIES FOR PAST
INFRINGEMENT:
$________ payable in cash upon execution of this agreement, the
amount
being calculated according to 16.3% of the Net Selling Price of each
Screen
Protector and 16.3% of the Net Selling Price of each Collateral Product
sold in
the past by or on behalf of Licensee.
3.
ROYALTIES FOR FUTURE
LICENSED USE:
11.3% of the Net Selling Price of each Screen Protector and 11.3%
of the
Net Selling Price of each Collateral Product sold by or on behalf of
Licensee.
4. LATE
FEE ON MONTHLY
ROYALTY PAYMENTS:
Any late monthly royalty payments will be charged a 24% interest per
annum
on any unpaid balance until paid in full, unless otherwise agreed to in
writing. Once a notice of “late” has been sent out.
The 30-day notice begins.
Your
license will automatically be revoked until
paid in full.
CONTACT
INFORMATION
V S.
Protective Shield Inc.
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Software, Inc. Copyright © 2001 CompanionLink
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All rights are reserved
(R), This includes Copies, HTML, and
information from any of our
links, Unless previously authorized Legals
V.S. PROTECTIVE SHIELD Inc.