4.22 Model Exclusive Patent License (Janicke)

4.22 Model Exclusive Patent License (Janicke)

AGREEMENT

1. Parties and consideration

1.1 This agreement is between Super Corp. (hereafter “SUPER”), a Delaware corporation having a place of business at ______, and Acme Corp. (hereafter “ACME”), a New York corporation having a place of business at ______.

1.2 The consideration for this agreement consists of the representations and undertakings expressed herein. Neither party is relying on any other representation or understanding not expressed herein.

2. Definitions

The following definitions apply to the terms used herein:

2.1 “Licensed Patents” means the following United States patents, foreign counterparts thereof, any reissues thereof, any reexamination certificates thereof, and any patents issued upon applications claiming the benefit of the filing date of an application on which the following patents are based:

(1) U.S. 4,000,000, issued 1/2/93 filed 1/2/91;

(2) U.S. 4,500,000, issued 1/2/95 filed 1/2/90;

(3) U.S. 5,000,000, issued 1/2/97 filed 1/2/94;

(4) U.S. 5,500,000 issued 1/2/01 filed 1/2/98;

(5) U.S. 6,000,000 issued 1/2/02 filed 1/2/97

2.2 “Subsisting claim” means any claim of any Licensed Patent, which claim has not: expired, been declared invalid in a final judgment from which no further right of appeal lies at a given time, been awarded to another in an interference, or been disclaimed. A claim shall be deemed to subsist only in the country of its issuance.

2.3 “Acme Residential Lighting Product” means any product designed primarily by Acme and intended to be sold by Acme under its trademarks and under its warranty, whose primary intended use is in lighting fixtures and circuitry in residential buildings. A product whose design is controlled by another entity is not an Acme Residential Lighting Product even if it is made by Acme.

2.4 “Licensed Product” means any Acme Residential Lighting Product covered by a subsisting apparatus claim, or whose manufacture or use involves a method or composition covered by a subsisting claim.

2.5 “Net selling price” means the actual price charged to an ACME customer for a product packed ready for shipment, excluding freight, sales taxes, and insurance. If such price is not in U.S. dollars, payments hereunder shall be calculated based upon the average currency exchange rate for the date in question, as appearing in the New York Times.

3. Representations

3.1 SUPER represents that it the owner of all right, title and interest in and to the Licensed Patents.

3.2 ACME represents that it is engaged in the business of manufacturing and selling copy machines, that it has never been the subject of a bankruptcy petition, and that it has never been insolvent.

4. Exclusive license grant

4.1 SUPER hereby grants to ACME an exclusive license:

(a) With respect to any apparatus covered by a subsisting claim of a Licensed Patent, to make, have made, sell, offer to sell, import, and use such apparatus in Licensed Products.

(b) With respect to any method covered by a subsisting claim of a Licensed Patent, to use such method and to sell the product of such method in connection with Licensed Products.

(c) With respect to any composition covered by a subsisting claim of a Licensed Patent, to make, use, and import such composition in connection with Licensed Products.

The licenses granted in this paragraph 4.1 are limited to activities in connection with Licensed Products as defined herein, and only within the geographic area wherein United States patents have lawful force. The parties recognize that subsisting claims of the Licensed Patents also embrace products whose intended use is outside the field of residential lighting. No license is granted with respect to such products.

4.2 The benefit of this license shall inure to wholly owned or majority owned subsidiaries of ACME, unless ACME gives written notice to the contrary with respect to a particular subsidiary. The license granted herein shall not be otherwise transferable or sublicensable without the consent of SUPER.

5. Payments

5.1 Upon the effective date of this agreement ACME shall pay to SUPER the sum of $100,000.

5.2 ACME shall make the following payments to SUPER in U.S. dollars during the term hereof, for transactions by ACME or such of its subsidiaries as have the benefit of this agreement pursuant to paragraph 4.2:

(a) Where a Licensed Product or its method of manufacture is covered by a subsisting claim of only one Licensed Patent, 5% of net selling price

(b) Where a Licensed Product or its method of manufacture is covered by a subsisting claim of only two Licensed Patents, 6% of net selling price

(c) Where a Licensed Product or its method of manufacture is covered by a subsisting claim of only three Licensed Patents, 7% of net selling price

(d) Where a Licensed Product or its method of manufacture is covered by a subsisting claim of only four Licensed Patents, 8% of net selling price

(e) Where a Licensed Product or its method of manufacture is covered by a subsisting claim of five or more Licensed Patents, 9% of net selling price

(f) Where materials used in the production of a Licensed Product are covered by a subsisting claim of one or more Licensed Patents, but the product does not otherwise fall under any of subparagraphs (a) through (e) hereof, 5% of the fair market value of the materials at the time of such production. If such materials are purchased from SUPER or a source authorized by SUPER, this subparagraph (f) shall not apply.

(g) Notwithstanding any of the above provisions for additional payments, during any year in which payment accruals exceed $500,000, subsequent royalty accruals during that year shall be calculated at one-half the rates stated above.

(h) Notwithstanding any of the above provisions for additional payments, when total payments for all years under this agreement have reached $4,000,000 dollars, all licenses hereunder shall become paid up, and no further payments shall be required.

5.3 Time for accrual of payment obligations. A payment obligation for a product does not accrue until the product is sold, even though other activities are licensed, e.g., making, offering to sell. Only one payment is due for each Licensed Product, regardless of how many licensed acts may have been performed with respect to it. A sale is deemed to occur whenever it is booked as such by ACME, but in no event later than the date of physical delivery of the product to the customer. A lease or other possessory arrangement with a customer shall be regarded as a sale for purposes of this paragraph, and in that event all monies received by ACME from the customer shall be regarded as parts of the selling price.

5.4 Time for payments. Payments accruing under this Article 5 shall be made based on accrual time periods. The first accrual period shall be the period from the effective date of this agreement to the end of the next full calendar quarter. From then on each accrual period shall be each calendar quarter during the term hereof. Payment for an accrual period shall be made within thirty days of the close of that accrual period.

5.5 Minimum payments. Beginning in the third full calendar year of the term hereof, if ACME’s payments to SUPER under the terms of this agreement are less than $200,000 for a given calendar year, ACME may make an additional payment for the fourth calendar quarter, such that its total payments for the year equal $200,000. For the sixth full calendar year hereunder and for each year thereafter, this amount shall be $300,000 per year. Upon ACME’s failure to make the specified minimum payments for any given year, SUPER may terminate this agreement by serving written notice to that effect within six months following the end of the year in question. The provisions of this paragraph shall not apply at all if the license has become paid up pursuant to paragraph 5.2(h) hereof.

5.6 Reports. Each payment under paragraph 5.2 shall be accompanied by a report stating the manner of calculation of the amount due. ACME shall maintain accurate records from which the correctness of each report can be verified. SUPER shall have the right to audit such records at reasonable times. If an audit reveals underpayment by 5% or more, ACME shall, in addition to promptly paying the difference, reimburse SUPER for the cost of the audit.

6. Term

6.1 The term of this agreement shall begin on the date when this agreement is signed by both parties, which date shall be the effective date hereof. Unless sooner terminated as herein provided, the term shall end when no claim of any Licensed Patent is subsisting.

6.2 If ACME shall default on any obligation hereunder, SUPER shall have the right to send a written notice thereof, which shall be effective upon dispatch. ACME shall have thirty days in which to cure such default. Upon ACME’s failure to timely cure the default, SUPER shall be entitled to terminate this agreement by sending written notice of termination, which shall be effective on dispatch.

6.3 No waiver by SUPER of default for any obligation of ACME hereunder shall operate as a waiver in the case of any subsequent default by ACME.

6.4 ACME shall have the right to terminate this agreement at any time by giving prior notice to that effect to SUPER at least six months before the effective date of such termination.

6.5 No termination shall affect any payment obligation that accrued prior to the termination date.

7. Warranties

7.1 Each party warrants that it has authority to enter this agreement.

7.2 There is no warranty by SUPER with respect to any patents other than Licensed Patents.

7.3 SUPER does not warrant that the Licensed Patents are valid or that ACME’s operating under subsisting claims thereof will not infringe patents of others.

7.4 In the event a third party shall be infringing any of the Licensed Patents by activities within the field of the licenses granted hereunder, ACME shall have the right to decide upon negotiations or appropriate litigation against the infringer, using outside counsel approved by SUPER, which approval shall not be unreasonably withheld. SUPER agrees to cooperate in such negotiations, and to join any such litigation if such joinder is requested by ACME and is otherwise proper. ACME will pay the costs reasonably incurred by SUPER for participating in the litigation.

8. Notices and miscellaneous

8.1 Notice to ACME shall be sufficient hereunder if in a writing addressed to ACME as follows: ______. Notice to SUPER shall be sufficient if in a writing addressed to SUPER at ______.

8.2 Except for terminations as provided for herein, this agreement may be modified only by a writing signed by both parties.

IN WITNESS WHEREOF, the parties have caused their duly authorized representatives to execute this agreement on their respective behalfs.

Super Corp. Acme Corp.

By: ______By: ______

Title: ______Title: ______

Date: ______Date: ______

Seg. 4, item 22 (2008) 5