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MICROLATCH LICENSES PREVAIL

 

Microlatch Exclusive License Agreements Prevail

 

Microlatch Limited (Hong Kong) holds exclusive license agreements for all Chris Burke’s patent portfolio since 2013.  These agreements prevail over any other arrangements.  The agreements are perennial and enforceable.  Any company or person attempting to subvert the license agreements is violating them and will be legally held accountable.

 

Chifley Advisory will be the beneficiary of 5% proceeds from the License Patent Asserion program with those patents under Securicom and Microlatch in Australia, but excludes new patents and manufacturing income.  Should any company wish to conduct business with Chris Burke’s patent portfolio, they need to formally request.

 

 

www.microlatch.hk

www.microlatch.com

 

 

Microlatch Limited Exclusive License Agreement:

PATENT LICENSE DEED

 

 

 

BETWEEN

 

 

 

SECURICOM (NSW) PTY LIMITED

(ACN 053 874 089)

 

 

 

MICROLATCH LIMITED

(Bus Reg 34223585)

 

 

THIS AGREEMENT is made on 23rd August 2013 and entered into between:

 

SECURICOM (NSW) PTY LTD (ACN 053 874 089) Unit 53, 139 Gooding Drive, Merrimac, QLD 4226, (hereinafter referred to as the Licensor)

 

And

 

MICROLATCH LIMITED (Bus Reg 34223585) Unit H, 53/F, Tower 1, The Pacifica, 9 Sham Shing Road, Lai Chi Kok, Kowloon, Hong Kong, (hereinafter referred to as the Licensee).

 

            WHEREAS, The Licensor owns intellectual property rights (including Patents, Patent Applications, trademark and software, copyright designs, confidential information or other intellectual property rights) (“IPR”) and is the assignee of Patent Applications set out in Schedule 1;

 

            WHEREAS, The Licensor has agreed to license all the intellectual property rights in the patent applications to the Licensee on the terms set out in this agreement; and

 

Subject to the Patent Act 1990 and the relevant laws of Australia:

 

 

            NOW, THEREFORE, in consideration of the premises and the mutual covenants contained herein, and for other good and valuable consideration, the Parties hereby agree as follows:

 

1.         Definitions.  In this Agreement the following terms shall have the meanings set forth below:

 

 

“Licensee’s Improvements” means all technical information (including patentable inventions and trade secrets and software insofar as they originate with the Licensee or are acquired by the Licensee before the Licensor knows of them) relating to the manufacture and sale of the products developed or acquired by the Licensee during the term of this Deed.

 

“Licensor’s Improvements” means all technical information (including patentable inventions and trade secrets and software insofar as they originate or are acquired by the Licensor before the Licensee knows of them) relating to the manufacture and sale of the products developed or acquired by the Licensor during the Term of this Deed.

 

            “Effective Date” means the date of the last signature at the end hereof.

 

“Intellectual Property Rights” (IPR) means patents, patent applications, trademark and software, copyright designs, confidential information or other intellectual property rights of the Licensor and the Licensor’s improvements.

 

“Licensee’s Product” means the patents range of biometric and non-biometric switches and activators and other products which the Licensee proposes to market both in Australia and overseas produced or capable of being produced using the patent, know-how and trade secrets available to the Licensee under this Deed.

 

“Term” means the period from the date of this Deed until the day on which the last of the patents expires.

           

“Trade Secrets” means all secret processes, formulae and technical information relating to production of the Product now possessed or developed or acquired by the Licensor or the Licensee prior to or during the Term of this Agreement.

 

 

2.         License Grant.  The Licensor grants to the Licensee in perpetuity an, exclusive license for the Term of this Deed to enjoy, commercialise and exploit the IPR and to manufacture, have manufactured, use, market and sell the Products in all the world subject to Clause 10 – termination.  Subject to permission of the Licensor which shall not be unreasonably withheld, the Licensor grants to the Licensee the right to issue sublicenses to enable the Licensee to enjoy, commercialise and exploit the IPR, and to manufacture, have manufactured, use, market and sell the products in all of the world.

 

 

3.         Term.  Licensee’s rights hereunder remain in effect until the earlier of (i) written notice of termination from Licensor to Licensee and (ii) ten (10) days after Licensor’s receipt of a written notice from Licensee of the occurrence of a Change in Control of Licensee if Licensor has not consented to such Change in Control in writing.  In the event that there is an occurrence of Change in Control of Licensee, Licensee shall give Licensor written notice within ten (10) days of such occurrence.  Licensee’s obligations hereunder shall remain in effect for so long as Licensee possesses Products and Patents, in whole or in part.

 

4.         Technology Transfer.  For the Term of this Deed the Licensor must in good faith promptly supply to the Licensee upon request: (i) advice on the technical characteristics of the Products and the equipment and processes used to manufacture the Products, (ii) for details of the processing and manufacture of the Products and the use of the Patents and trade secrets, (iii) operating manuals relating to the equipment used in the manufacture of the Product to ensure the full exploitation of the licenses granted under this Deed, and (iv)  all details of all improvements and other developments in Trade Secrets which became known to or owned  by the Licensor.

 

5.         Royalties.  This exclusive license for the Term of this Deed, to commercialise and exploit the IPR and to manufacture, have manufactured, use, market and sell the Products in all the world is at the Licensee’s total commercial and financial commitment.  However, in the event the Licensee completes any financial arrangement with a third party for license or sub-license of the Intellectual Property Asset contained within this License Agreement, a 5% Royalty payment from the GROSS sales value will be due and payable immediately upon receipt of funds from the third party to the Licensor.  Failure to pay this Royalty payment will deem this Agreement terminated until payment is made.

 

6.         Governing Law.  This Agreement shall be governed by the law of the State of Queensland and the parties submit to the jurisdiction of the Courts of that State.

 

7.         Notices.  Any reports, disclosures or notices required by the Parties in this Agreement shall be given in writing and shall be effective when either (a) served by personal delivery or (b) deposited, postage prepaid, in first class mail, addressed to the Parties respectively at the following addresses provided as in (a) or (b) above:

 

 

 

Licensor:

Securicom (NSW) Pty Limited

Unit 53, 139 Gooding Drive,

Merrimac, QLD 4226

Attn.: Chris Burke

Email: c.burke@securicom.com.au

 

 

Licensee:

Microlatch Limited

Unit H, 53/F, Tower 1, The Pacifica,

9 Sham Shing Road,

Lai Chi Kok, Kowloon, Hong Kong

Attn.: Chris Burke

Email: c.burke@microlatch.com

 

or to such other address or addresses as either Party may later designate by written notice to the other Party.

 

8.         Entire Agreement, Amendments etc.  Nothing contained in this Agreement shall be construed as creating a joint venture, partnership or similar arrangement between the parties.  This Agreement constitutes the entire understanding and agreement between the parties relating to the subject-matter hereof and supersedes and cancels all previous agreements or other commitments in respect thereto.  This Agreement may not be amended in any manner except by instrument in writing of subsequent date signed by a duly authorized representative of each party hereto.

 

9.         Confidentiality.  The parties hereto agree that the terms and conditions contained in this Agreement shall not be disclosed to any third party, without the concurrence of the other Party hereto, except for disclosures to permitted assigns, successors, sub-licensees and others contemplated herein, and except as may be required by applicable law, court order or similar governmental action.

 

 

10.       Warrantees.  The Licensor appoints and constitute the Licensee as their agent and attorney during the Term of this Deed, to assert from time to time in the name of and for the account of the Licensor, but for the benefit of and at the expense of the Licensee, whatever claims and rights the Licensee may have arising from any actual or apparent infringement of the Patents or unauthorized use of any of the trade Secrets.  The Licensee must promptly assert and enforce all such claims and rights and institute and prosecute an action against such infringement and hold the Licensor free and harmless from any liability or obligations arising there from.

 

(a)                              The Licensor warrant to the Licensee that is has the right to grant the license contained herein.  The Licensor further warrants that the IPR were developed by Licensor, or that Licensor is authorized to license the IPR to Licensee;

 

(b)                             The Licensors have and for the duration of this Deed will continue to have full right and title to the Patents and Trade Secrets;

 

(c)                              The Patents include all Patents or Applications for a Patent made, owned by or registered in the name of the Licensors or to which the Licensors are beneficially entitled which is or may be material to the product or any of the Trade Secrets;

 

(d)                             The use and license for use by the Licensee of the trade mark, registered design, copyright or similar or other industrial commercial property rights of any person, nor give rise to payment by the Licensee of any royalty to any third party or to any liability to pay compensation;

 

 

(e)                              All designs, specifications, plans, drawings and other trade Secrets supplied to the Licensee by the Licensor will be to the best of the knowledge and belief of Licensors true, accurate, reliable and up-to-date;

 

 

11.       Indemnities

 

(a)                              The Licensors indemnify the Licensee against any losses, costs, actions, claims, demands, expenses and damages suffered by the Licensee arising out of a breach by the Licensor of any representation contained in Clause 9;

 

(b)                             In the event that the Licensor has or may have a course of action against a third party in respect of such breach, the Licensor authorizes the Licensee to institute proceedings in the name of the Licensor to pursue that cause of action in the Licensor’s name but a the Licensee’s cost and for the Licensee’s benefit; and

 

(c)                              The Licensor will provide whatever assistance the Licensee may require to pursue the cause of action and will do all things and sign all documents which the Licensee may reasonably require.

 

 

12.       Assignment.  The Licensee may at its discretion assign all or any of its rights under this Deed.

 

13.       Amendments.  This Deed may not be varied except in writing signed by all of the parties.

 

 

14.       Termination

 

(a)                              Either party may terminate this Deed at any time by written notice to the other party in the event the other party fails to perform any obligation under this deed and such failure is not remedied within 90 days after service of the notice specifying the nature of such failure and requiring it to be remedied.  Such right of termination shall not be exclusive of any other remedies or means of redress to which the non-defaulting party may be lawfully entitled;

 

(b)                             Licensor may terminate this deed by written notice to Licensee in the event that a creditor or other claimant takes possession of, or a receiver, administrator or similar officer is appointed over any of the assets of Licensee, or in the event that the Licensee makes any voluntary arrangement with its creditors or becomes subject to any court or administration order pursuant to any bankruptcy or insolvency law; and

 

(c)                              Upon the termination of this deed by Licensor, the Licensee or sub-licensee shall immediately cease to “exploit” the IPR or have any enforceable right to the IPR under this Agreement in law or equity and all rights granted under this Agreement shall be from the date of termination void ab initio (see the definition in Schedule 1 of the Patent Act 1990 for the meaning of “exploit”).

 

 

 

 

 

 

IN WITNESS WHEREOF, each of the Parties hereto has caused this Agreement to be executed by their respective duly authorized officer.

 

Executed as a Deed:

 

SECURICOM (NSW) PTY LIMITED

 

By: ___ ___________

Typed: __Chris Burke___________________

Title: _____Sole Director and Secretary_____

Date: ___23rd August 2013_______________

 

MICROLATCH LIMITED.

 

By: ___ ___________

Typed: __Chris Burke___________________

Title: _____Sole Director and Secretary_____

Date: _____23rd August 2013_____________

 

 

 

SCHEDULE A

 

LICENSOR’S & LICENCEE’S PATENT APPLICATIONS LIST

 

 

Updated from Spruson and Ferguson on 23/08/2013

 

Documents as below;

 

 

Microlatch Pty Ltd _7766142_1

 

Securicom (NSW) Pty Ltd_7766374_1

 

SCHEDULE B

 

LICENSOR’S PRODUCTS LIST

 

 

RF Keyfobs,

Biometrics devices, including;

BIOFOB RF

BIOFOB BT

BIOFOB ID
BIOCARD ID

BIO-14S

                                                                                                BIO-15S