Non-exclusive License
(With licensing of know-how)
Between
Symphony Energy Limited,
having its headquarters at 4 Aran Centre, Blessington Business Park, Blessington, Co Wicklow, Ireland represented by the chairman of the board of directors – hereinafter referred to as Licensor – and {CLIENT_COMPANY} having its headquarters at {CLIENT_ADDRESS} represented by its authorised person {CLIENT_REPRESENTATIVE} – hereinafter referred to as Licensee.
Preamble
(1) Licensor holds an exclusive license of a European patent and several national patents relating to a method and device for conditioning air, which is described in detail in Annex I. Licensor is willing to grant a non-exclusive, technically limited sub-license for the implementation of said device and conduction of said method within the scope of the patent listed in Annex I and the know-how described and listed in Annex II
(2) Licensor has the right to grant the sub-license. [He has already granted non-exclusive licenses to other parties.]
Based on these premises the parties agree as follows.
§ 1 Definitions
For the purposes of this Agreement, the following definitions shall apply:
(1) “Licensed Article” is the device and method according to the claims described in Annex I.
(2) “Know-how” is the knowledge of licensor, relating to the implementation of the licensed article and method, as far as it does not already fall under the definition (1) above.
(3) “Improvements of the Licensed Article” are such improvements which fall within the scope of the licensed patents, independent as to whether a patent of addition can be obtained for such improvements or not.
(4) “Developments of the Licensed Article” are inventions for which the licensor has obtained independent patent protection, regardless of whether these developments are within the scope of the licensed patent or not.
§ 2 License scope
(1) Licensor herewith grants licensee a non-exclusive sub-license for the production and implementation of the Licensed Article.
(2) The license is granted for the Contracting States of the European Patent Convention.
(2) The license is granted for the Contracting States of the United States Patent and Trademark Office.
(2) The license is granted for the Contracting States of the Canadian Intellectual Property Office.
(2) The license is granted for the Contracting States of the Commonwealth of Australia Patent Office.
(2) The license is granted for the Contracting States of the China National Intellectual Property Administration.
(2) The license is granted for the Contracting States of the Japan Patent Office.
(2) The license is granted for the Contracting States of the Korean Intellectual Property Office.
(2) The license is granted for the Contracting States of The National Industrial Property Institute (INAPI) of Chile.
(2) The license is granted for the Contracting States of The Eurasian Patent Office. These are: Armenia, Azerbaijan, Belarus, Kyrgyzstan, Kazakhstan, Russia, Tajikistan and Turkmenistan.
(2) The license is granted for the Contracting States of The New Zealand Patent Office.
(2) The license is granted for the Contracting States of The Republic of South Africa Patent Office.
(3) Licensor has the right to grant sub-licenses to third parties. Licensor shall not grant third parties an exclusive sub-license.
§ 3 Technical scope of the license
The license relates to the entire technical field encompassed by the patents.
§ 4 Assignment of the sub-license and further sub-licenses
The assignment of the sub-license and granting of further sub-licenses by the licensee is only permissible with written approval of the licensor.
§ 5 Subcontractors
(1) Licensee shall have the right to have the Licensed Article implemented by third parties. For this purpose, the licensee shall have the right to provide that information to the subcontractor which is needed to implement the Licensed Article.
§ 6 Royalties
(1) For the sub-license under this contract, licensee shall pay licensor a lump sum as noted in Annex IV in which the Licensed Article is used. Payment must be received by the licensor in order to activate this sub-license.
(2) In addition, an annual running royalty is to be paid. The amount to be paid will be calculated automatically using the same data as originally entered for this agreement.
(3) All value added taxes, sales taxes and indirect taxes that have to be paid for the royalties shall be borne by licensee.
(4) The lump sum and annual royalty amounts are determined by the licensor based on building related information provided by the licensee as noted in Annex IV. The licensee ascertains that the information provided in Annex IV is accurate.
§ 7 Accounting
(1) Licensee shall within 30 days submit to licensor copies of all invoices relating to the sale of Licensed Articles.
(2) Licensor will send annual invoices to licensee for the royalties due. Payment shall be made within 30 days from receipt of the invoice.
(3) Licensee shall have the right to make preliminary payments for the royalties prior to final billing.
§ 8 Records
(1) Licensor shall have the right to inspect the books of licensee by an independent accountant as far as they relate to the computation of the royalties, in particular the correctness of the information provided by the licensee concerning the building(s) in which the Licensed Article is implemented, and the building(s) listed in Annex IV of licensee by an independent engineer as far as they relate to the computation of the royalties.
(2) The inspection of the books and the building(s) can be done in January and July of each year.
(3) The right to inspect the books shall be excluded, if the licensee provides the report of an independent sworn accountant who is obligated to secrecy. The right to inspect the building(s) shall be excluded, if licensee provides the report of an independent sworn engineer who is obligated to secrecy.
§ 9 Warranties
(1) Licensor does not warrant that the licensed know-how and technical information is correct and without defects, that the use of the information is adequate for the implementation of the Licensed Articles or that the technical information is complete.
(2) Licensor does not warrant either that the use of the sub-license does not infringe third parties’ rights or does not cause damages to third parties.
(3) All warranty claims are excluded as far as they are based on the know-how transferred. No warranty is made for the reliability, the quality, the commercial utilization, the usefulness of the Licensed Article for the intended purpose or for any other purpose.
(4) Licensor guarantees the existence of the licensed patents on the date of the agreement. Any liability for later invalidation or lapse of the patent is excluded.
§ 10 No-challenge clause
In case of an attack on the licensed rights or the support in such an attack by Licensee licensor has the right to immediately terminate the agreement.
§ 11 Lapse and invalidity of licensed rights
(1) The expiration or invalidation of individual patents of this contract leaves the validity of the contract unchanged.
(2) Royalties which are due prior to the final declaration of invalidity, but which have not yet been paid, have to be paid by licensee in full.
§ 12 Defence and enforcement of licensed rights
(1) Licensor is obligated to defend the patents against challenge by third parties (opposition, nullity suit) at licensor’s cost.
(2) The parties shall inform each other about all infringements of patents under this contract in the contract territory.
(3) Licensor is not obligated to proceed against infringers, but licensor shall support licensee in the enforcement of the patents, and in particular shall provide him, if necessary, with the necessary procedural powers.
(4) Any damage payments shall belong to licensee if licensee conducted the litigation, but shall belong to licensor if licensor conducted the litigation.
§ 13 Duration
This contract shall have a duration of 1 year, beginning with the date of the agreement, and then is extended year by year, unless one of the parties terminates the agreement with at least a three months’ notice. If the licensee terminates the contract, the licensee has to provide the licensor with written confirmation from the relevant controls system maintenance contractor that the Licensed Article is no longer implemented in the building(s) for which this agreement was terminated.
§ 14 Termination
(1) In the case of breach of contract both parties shall have the right to terminate the contract for cause. This termination right has to be exercised within four weeks after one party has unsuccessfully requested of the other party, with a reasonable term, that the breach be terminated and remedied.
(2) With respect to licensor valid reasons for termination are, e. g. the non-compliance by licensee with the territorial limits of the sub-license and a late reporting or payment. For licensee, a significant reason for termination is the invalidation of the patent in Annex I.
§ 15 Assignment of patents
Licensor has the right to use the patents as collateral. An assignment of the patents to third parties has to be previously announced to licensee. The licensee shall have insofar a right of first option, which he has to exercise with the licensor and in writing within four weeks after receiving the information about the planned assignment.
§ 16 Jurisdiction
Place of performance is determined by the location of the building(s) mentioned in Annex IV. For all controversies under this agreement the jurisdiction of the District Court Dublin, Ireland is agreed upon.
[Place, Date Signatures]
ANNEX II : CRITERIA FOR IMPLEMENTATION
Symphony Cycle can be engaged when each of the following criteria is valid:
1) There is a demand for cooling water cooling to indoor equipment such as fan coil units or chilled beams or for process cooling.
2) Supply air that can be cooled or heated, is only being heated.
3) The cooler that provides cooling to the indoor equipment also can provide cooling to the supply air.
4) The temperature of the first air flow passing through the cooling coil is lower than the temperature of the cooling fluid in the cooling system.
Activate the Supply Air Cooling Coil
When the above conditions exist for Symphony Cycle, then the cooling coil can be activated. This process transfers waste heat from the cooling coil into the supply air while simultaneously cooling the cooling fluid. Consequently, less or no heat is required from the heater to heat the supply air, and less or no cooling is required from the cooler to cool the indoor equipment.
Eliminated or Reduced Heater Demand
Symphony Cycle can reduce or eliminate the supply air demand for heat from a heater.
If no heat is required from the heater for the supply air, then the heating circuit to the supply air heater can be turned off. If there is no other heat demand from the heater, then the entire heating system can be turned off.
If less heat is required for the supply air, then it may be possible to reduce the output from the pump that delivers the heat to the supply air and reduce the output of the heater.
Eliminated or Reduced Cooler Demand
Symphony Cycle can reduce or eliminate the indoor equipment demand for cooling from a cooler.
If no cooling is required from the cooler to meet the demand from the indoor equipment, then the cooler can be turned off but the pumps to the indoor equipment and the supply air remain in operation.
If less cooling is required for the supply air, then it may be possible to reduce the output of the cooler.
Managing a First Heating Coil
If the supply air passes through a first heater of some form before arriving at the first cooling coil, then it may be preferable to turn down, turn off or bypass the first heater so the cooling benefit for the cooling system can be optimised. This applies if there is a net saving in energy consumption by prioritising the cooling benefit for the cooling system. This is particularly likely if operation of the cooler in the cooling system can be eliminated through deployment of Symphony Cycle. Apart from the net energy savings benefit, there is also a likely maintenance and lifecycle cost benefit to reducing the operating hours on the cooler(s).
If the first heater is a heat recovery unit, then it may be possible to manage the amount of heat transferred into the supply air (or first air flow) by varying the speed of a rotary wheel or by varying the passage or air through a bypass damper.
With or without Symphony Cycle, any vulnerable equipment such as heating or cooling coils in the air handling units need to be protected from frost.
Implementation
Symphony Cycle can be implemented through programming applied to a BMS (Building Management System)/BAS (Building Automation System).
To maximise the Symphony Cycle heat transfer capacity, consideration may also be given to channelling the higher temperature cooling water returning from other cooling circuits directly into the cooling water supply to the air handling unit cooling coils. This can be done using a piped interconnector and motorised valves. The valves can be programmed to switch between normal cooling mode and Symphony Cycle mode. Normal cooling mode would be as though there was no interconnecting pipe. Symphony mode would divert the return water from the cooling system circuit(s) that are not connected to the circuit supplying the first ventilation system (typically the air handling units that draw in outdoor air), to the circuit supplying the first ventilation system.
