NON EXCLUSIVE LICENSE AGREEMENT This Deed of License made and executed on the day of 2015 BETWEEN 1. Uttar Gujarat Vij Company Limited (UGVCL) a company incorporated under the provisions of The Indian Companies Act. 1956, having its registered and corporate office at Visnagar Road, Mehsana 384 001, Gujarat; and, 2. Vidhia Electrotrans Industries, a Proprietorship Unit having its office at 309, GIDC Engineering Estate, Sector-28. Gandhinagar, Gujarat -382 028. Hereinafter collectively referred to as the LICENSOR or PATENT APPLICATION PARTNERS on the FIRST PART; AND, successful bidder of Tender No. UGVCL / RO/ SP / 641/ R&D / PAT Design-Royalty hereinafter referred to as the LICENSEE on the SECOND PART; WHEREAS, the LICENSOR are the inventors of the Pilot Advanced Transformer (PAT) technology which is applied for patent under the Indian Patent Act 1970 and have the patent application No. 3072/MUM/2012 titled AN ENERGY CONSERVATION SYSTEM WITH A PLANNED LOAD SHEDDING TRANSFORMER or invention mentioned herein in Exhibit A; WHEREAS, Mr. Harendra Shukla is a proprietor of the Vidhia Electrotrans Industries, and has full authority to execute this agreement on behalf of Vidhia Electrotrans Industries and Mr. Saileshkumar Ratilal Patel, Chief Engineer(P&P) is the authorised signatory member of Uttar 1
Gujarat Vij Company Limited (UGVCL) to execute this agreement on behalf of the Uttar Gujarat Vij Company Limited (UGVCL). WHEREAS, the LICENSEE is desirous to acquire non-exclusive rights for this technology from LICENSOR for the commercial exploitation in India for the said inventions, and the LICENSOR is willing to grant such rights, NOW, THEREFORE, for valuable consideration which was set forth in Tender No. UGVCL/RO/SP/641/R&D/PAT Design-Royalty or Exhibit B, the receipt and adequacy of which are hereby acknowledged and in consideration of the mutual covenants and agreements contained herein and intending, to be legally bound, the parties have agreed as follows: 1 Definitions and interpretation: For the purposes of this Agreement, the terms hereunder shall have the meanings as defined below: 1.1 Assignment means all agreements licensing non-exclusive right for the commercial exploitation, use, and sale of the Intellectual Property Rights from the inventors and/or LICENSOR to the LICENSEE. 1.2 Intellectual Property Rights shall mean the rights in a specific patent application No. 3072/MUM/2012 titled AN ENERGY CONSERVATION SYSTEM WITH A PLANNED LOAD SHEDDING TRANSFORMER, as mentioned in Exhibit A, filed by LICENSORS; the same to be held by and enjoyed by the LICENSEE as per the terms and condition under this agreement to the full end of the term, though the patent application of this technology is pending before Indian Patent office and when the patent will be granted it will be termed as License of Patent. 1.3 Commercialization means any profit-making activity or similar financial gain related to the exploitation of an Invention and/ or 2
Intellectual Property Rights as defined herein. 1.4 Territory for the purposes of this Agreement, would mean throughout India; 1.5 Term means the period of THREE years from time beginning on the Effective Date of this agreement. 1.6 Know-How means the know-how of proprietary technology on the Pilot advanced Transformers (PAT) and said Intellectual Property Rights, which is invented by owned by UGVCL and Vidhia Electrotrans Industries or the LICENSOR, including but not limited to knowledge of requisite dimensions or design of the core, coil, tank, cooling, radiators, GA drawing associated with the Pilot advanced Transformers (PAT), including Technical Data and experience and skills which could not been recorded in writing. 1.7 "Licensed Products" means products or services that in the absence of this Agreement would infringe at least one claim of the Intellectual property rights, and products or services that are made or provided by LICENSEE using proprietary material, processes or methods described in patent application, and provided thereby to LICENSEE by the LICENSOR. 1.8 Net Sales means the amount billed, invoiced, or received (whichever occurs first) for sales, leases, or other transfers of Licensed Products, less: (i) amounts repaid or credited by reason of rejection or return; (ii) to the extent separately stated on purchase orders, invoices, or other documents of sale, taxes levied on and/or other Governmental charges made as to production, sale, transportation, delivery or use and paid by or on behalf of LICENSEE; and (iii) reasonable charges for delivery or transportation 3
provided by third parties, if separately stated. Net Sales also includes the fair market value of any non cash consideration received by Licensee for the sale, lease, or transfer of Licensed Products. 1.9 Royalty means, the purposes of this Agreement, shall be defined as in detailed in Tender No. UGVCL / RO/ SP / 641/ R&D / PAT Design-Royalty or in Exhibit B, the gross proceeds from the sale, rental or other commercial transactions with respect to the this technology. 2. Grant of Intellectual Property Rights License 2.1 The LICENSOR hereby grants LICENSEE to the extent it may lawfully do so the right and non-exclusive and non-transferable licence to make use and sell the Licensed technology and to practice under the Intellectual Property Right, mentioned in Exhibit A, to the end of the term, unless this agreement terminated sooner as provided herein. 2.2 The LICENSEE shall not have the right to sublicense the Intellectual Property Rights or proprietary information. 2.3 The LICENSOR reserves the right to practice Intellectual Property Rights for any commercial exploitation for its own purposes including but not limited to selling, using, making and licensing of the same to third parties within identical fields. 2.4 The LICENSEE acknowledge and agree that the LICENSEE do not have and shall not hereafter claim, acquire or assert any ownership rights in, or permanent right to the use of, or challenge the validity or grant of the said Intellectual Property Rights either during the term of this Agreement or after the expiration or termination thereof. 4
2.5 The LICENSOR hereby acknowledge and agree that on making the payment and executing the agreement by both the PARTIES, the LICENSOR shall provide GTP and GA drawings of PAT also shall give a one time demo of testing of PAT to the LICENSEE. 3 Warranty: 3.1 The LICENSOR are the sole owners of the Intellectual Property Rights subsisting in or relating to the Invention or patent application, mentioned in Exhibit A, and also the LICENSOR have not assigned, transferred, licensed, encumbered or otherwise conveyed any right, title or interest in or to any of the Intellectual Property Rights to any person or entity; 3.2 The LICENSOR are the true and first inventors of the invention or patent application, mentioned in Exhibit A and have the authority and capacity to licence whatever exists at present or will be generated in the said invention in future to the LICENSEE. 3.3 The LICENSOR shall have all the rights to commercialize and assign, transfer, license or otherwise convey rights, title or interest in and/ or the Invention and Intellectual Property Rights and/ or the documentation without informing the LICENSEE to any person and/ or entity in part or full, with or without revenue and at its sole discretion. 3.4 The LICENSEE hereby warrants that LICENSEE is qualified and competent to enter into this LICENCE as a successful bidder of Tender No. UGVCL/RO/SP/641/R&D/PAT Design-Royalty. Any fault or irregularities found in qualification will automatically 5
terminate this agreement any time after execution of this agreement. 3.5 The LICENSEE hereby warrants that Licensee will mark all Licensed Products in accordance with the statutes of the Indian Patent act relating to marking of patented or patent pending articles. Any such marking shall indicate that LICENSEE has a license from the LICENSOR. Otherwise, LICENSEE is prohibited from using the rights generated by this agreement in any such marking or any advertising, promotion or commercialization of Licensed Products without written approval of the LICENSOR. 3.6 The LICENSEE agrees that with consent of the LICENSOR they will not perform any research and development activity for the licensed product. 3.7 The LICENSEE agrees that any Licensed Products for use or sale in the India shall be substantially manufactured only in the India. 3.8 The LICENSEE agrees that the rights and license granted by the LICENSOR in this Agreement are personal to Licensee and shall not be assigned or otherwise transferred in whole or in part by merger or acquisition with any other entity after execution of this agreement. Otherwise Merger and acquisition of the LICENSEE is only permitted with written consent of the LICENSOR. 3.9 The LICENSEE hereby warrants that LICENSOR have right to publish any technical data resulting from research and development carried out by the LICENSOR in any type of media or any publishing platform. 6
3.10 In no case the LICENSOR shall be liable for failure/damage of PAT or its allied equipments within or out of guarantee/warrantee period 3.11 The LICENSOR and LICENSEE will keep informed about their contact details to each other whenever there is change within one month from said effect. 4 Liability: 4.1 The LICENSEE is liable to pay royalties as set forth in tendor No. UGVCL/RO/SP/641/R&D/PAT Design-Royalty as successful bidder or mentioned in Exhibit B of this agreement. The royalty amount shall have to be paid within 7 days from the sale or billing of PAT which ever is earlier. The payment of Royalty specified in Exhibit B shall be in the Indian Rupees only. 4.2 The LICENSEE is liable to provide true, accurate, and detailed written reports to the LICENSOR quarterly within forty-five (45) days from March 31 and September 30 of each year. Such reports shall include at least the following information in a form acceptable to the LICENSOR: (i) Number of Licensed Products sold by Licensee; (ii) Total billings for all such Licensed Products; (iii) The amount of royalty due thereon, or if no royalties are due for any reporting period, a statement that no royalties are due; (iv) Details of record pending orders. All reports shall be certified as correct by an officer of Licensee and shall include a detailed listing of all deductions from royalties. 4.3 The LICENSEE hereby agree and undertake that any or all 7
overdue payments of royalties mentioned in Exhibit B pursuant to this Agreement shall bear interest calculated from the due date until payment is received at the rate of 18%. 4.4 The LICENSEE hereby agree and undertake that they shall keep full, true and accurate books of account, in accordance with generally accepted accounting principles, containing all information that may be necessary for the purpose of showing amounts payable to the LICENSORS hereunder. Such books of account shall be kept at LICENSEE s principal place of business. 4.5 The LICENSEE hereby agree and undertake that any breach by the LICENCEE or its agent or their employees for confidentiality lead to liable for criminal and/or civil actions available to the LICENSORS. The LICENSOR shall not be liable to refund the charges once paid against technical know-how and royalty to the LICENSEE. 4.6 The LICENSEE hereby agree and undertake that any breach by the LICENCEE or its agent or their employees for confidentiality lead to liable for criminal and/or civil actions available to the LICENSORS. 4.7 The LICENSEE shall, on execution of this agreement of the Intellectual Property Rights with the LICENSOR, correspond all progress or technical advancement made by them on said invention to the LICENSOR who shall be getting its sole/exclusive advantage thereto and shall help the LICENSOR in doing all such acts, deeds and things compulsory to get a patent for such improvement as conferred in any of the statutory law. 8
5. Indemnification: The LICENSEE shall at all times during the term of this Agreement and thereafter indemnify, defend, and hold the LICENSOR, its trustees, officers, employees, and affiliates harmless against all claims and expenses, including legal expenses and reasonable attorney s fees, arising out of the death of or injury to any person or persons or out of any damage to property or the environment, and against any other claim, proceeding, demand, expense, and liability of any kind whatsoever resulting from the production, manufacture, sale, use, lease, consumption, or advertisement of Licensed Products or arising from any obligation of Licensee hereunder. LICENSOR MAKES NO REPRESENTAITONS AND EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED TO WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, AND VALIDITY OF INTELLECTUAL PROPERTY RIGHTS CLAIMS, ISSUED OR PENDING. NOTHING IN THIS AGREEMENT SHALL BE CONSTRUED AS A REPRESENTATION OR WARRANTY GIVEN BY LICENSOR THAT THE PRACTICE BY LICENSEE OF THE LICENSE GRANTED HEREUNDER SHALL NOT INFRINGE THE INTELLECTUAL PROPERTY RIGHTS OF ANY THIRD PARTY. LICENSOR ADDITIONALLY DISCLAIMS ALL OBLIGATIONS AND LIABILITIES ON THE PART OF LICENSOR FOR DAMAGES, INCLUDING, BUT NOT LIMITED TO DIRECT, INDIRECT, SPECIAL AND CONSEQUENTIAL DAMAGES, ATTORNEYS AND EXPERTS FEES, AND COURT COSTS ARISING OUT OF OR IN CONNECTION WITH THE MANUFACTURE, USE OR SALE OF THE PRODUCTS OR SERVICES LICENSED UNDER THIS AGREEMENT. LICENSEE ASSUMES ALL RESPONSIBILITY AND LIABILITY FOR LOSS OR DAMAGE CAUSED BY LICENSED PRODUCTS WHICH ARE MANUFACTURED, USED, OR SOLD BY LICENSEE. 9
6. Termination: The LICENSOR shall have the right to terminate this Agreement, upon written notice, if: LICENSEE defaults in the performance of any of the obligations herein contained and such default has not been cured within thirty (30) days after receiving written notice thereof from the LICENSOR; or, LICENSEE ceases to carry out its business, becomes bankrupt or insolvent, applies for or consents to the appointment of a trustee, receiver, or liquidator of its assets or seeks relief under any law for the aid of debtors; or, LICENSEE directly or indirectly challenges or causes to be challenged the validity or enforceability of Intellectual Property Rights, the value of proprietary information provided to LICENSEE by LICENSOR s ownership of Intellectual Property Rights or proprietary information incorporated therein anywhere in the India. 7. Infringement 7.1 LICENSEE will notify in writing to the LICENSOR of any actual or potential infringement of the Intellectual Property Rights. 7.2 The sole right to institute a suit for infringement rests with LICENSOR, and LICENSOR shall retain all the proceeds thereof. 7.3 LICENSEE agrees to cooperate with LICENSOR in all aspects of such infringement suit, including having any of LICENSEE s employees testify when requested by LICENSOR, and making available any records, papers, information, specimens, and the like. LICENSEE shall have the right to be represented by counsel at the suit proceedings 10
and to participate therein at its own cost, but shall not have the right to control the suit. LICENSEE agrees to cooperate with, and give reasonable assistance to, LICENSOR in abating or preventing an infringement. 8. Confidentiality 8.1 The LICENSEE must always maintain the highest degree of confidentiality and keep as confidential the records, documents and other Confidential Information relating to this agreement, which may be known to LICENSEE or its legal representative or their employees with reference to manufacturing, selling or commercial exploitation of the Licensed technology. For the purpose of this clause confidential information includes but not limited to knowledge of requisite dimensions or designs of the core, coil, tank, cooling, radiators, GA drawing associated with the Pilot advanced Transformers (PAT). 8.2 Breach of this clause by the LICENSEE or its employees or their agents by passing on the information to any third party attracts the provision of clause 6 of this agreement. 8.3 The terms and condition of this agreement is also qualified as confidential information under this agreement. 9. General: 9.1 This agreement constitutes the complete agreement of the parties and supersedes any other agreement, written or oral concerning the subject matter hereof. 9.2 If any one or more of the provisions of this agreement shall be held to be invalid, illegal or unenforceable, the validity, legality or enforceability of the remaining provisions of this agreement shall not in any way be affected or impaired thereby. 11
9.3 Any amendment to this agreement shall be in writing and signed by both the parties hereto. 10. Severability: The invalidity of any portion of this Agreement shall not affect the remaining portion of this Agreement or any part thereof and this Agreement shall be construed as if such invalid portion or portions had not been inserted therein. The LICENSOR and LICENSEE will replace an invalid provision or fill a gap with valid provision, which most closely approximates the intent and economic effect of the invalid provision. 11. Governing Law: This Agreement shall be governed and construed in accordance with the Laws of India. The Laws of India shall govern this Agreement including any matter relating thereto arising after its expiry or termination. 12. Waiver: No term or provision of this Agreement shall be deemed waived, and no breach excused, unless such waiver or consent shall be in writing and signed by the party claimed to have waived or consented. 13. Arbitration : Any dispute or difference whatsoever arising between the parties out of or relating to the construction, meaning, scope, operation, effect, existence, validity or termination of this agreement or the validity or the breach thereof, the same shall be referred to the arbitrator whose decision thereon shall be considered as final and conclusive. The LICENSOR shall appoint the arbitrator. 12
14. Jurisdiction: The LICENSEE agree, with respect to any litigation arising directly or indirectly out of, or that in any way relates to, this agreement, any other transaction, matter, or issue between the LICENSOR and LICENSEE, shall be initiated and maintained in a court of competent jurisdiction at Ahmedabad Gujarat, India. If there is more than one jurisdiction arise, the LICENSOR reserve the right to choose the jurisdiction. Effective Date: We both (LICENSOR and LICENSEE) have read and understood the Agreement. We both accept this Agreement in aggregate with the information containing in and hereby agree to abide by them. Witnesses 1.Name: Address: Signature: Parties For, Uttar Gujarat Vij Company Limited (UGVCL) (LICENSOR) 2. Name: Address : Signature: For, M/S Vidhia Electrotrans Industries (LICENSOR) 13
1. Name: Address : Signature: 2. Name: Address : Signature: For, (LICENSEE) Place: 14
EXHIBIT A Patent application No. 3072/MUM/2012 titled AN ENERGY CONSERVATION SYSTEM WITH A PLANNED LOAD SHEDDING TRANSFORMER (This shall be filled up at the time of execution of agreement) 15
EXHIBIT B ROYALTY STRUCTURE (This shall be filled up at the time of execution of agreement) 16