Patent License Agreement

Patent License Agreement


THIS AGREEMENT is made effective as of 5/30/95 by and between John Wilbur Hicks ("Hicks") of 312 Howard Street, Northborough, MA 01532 and Optical Corporation of America, a Massachusetts Corporation having a place of business at 170 Locke Drive ("OCA"). Marlborough, MA 01782.


Hicks is the owner of U.S. Patent 4,768,849, which was granted to Hicks by the U.S. Patent and Trademark Office on September 6, 1988, and corresponding foreign patent(s) and application(s) (collectively referred to herein as the "Patent"). In accordance with an agreement between Hicks and OCA dated February 21, 1995 (the "Prior Agreement"), and in consideration of the mutual agreements set forth here, Hicks and OCA agree as follows:


LICENSE GRANT


1. Hicks hereby grants and agrees to grant to OCA a world-wide irrevocable license, with a right to sub-license, to make, have made, use and sell products which are covered by any valid and subsisting claim(s) of the Patent. Such license is exclusive except that with respect to products which are covered by any valid and subsisting claim(s) of the Patent and which involve optical wavelenghs which are less than equal to 1.1u:
(a) Hicks retains the right to make, have made, use and sell such
products: and
(b) OCA shall sell such products only to Hicks unless Hicks
consents otherwise in writing.


2. Hicks warrants and represents that no continuation, divisional or continuation-in-part applications based on U.S. General No. 907,622, filed September 15, 1988 (the patent application from which U.S. Patent 4,768,849 issued) have been filed in the U.S. Patent and Trademark Office. Furthermore, with respect to products which are within the scope of any claim of the Patent, Hicks shall not assert against OCA or its sub-licensees, or the customers, agents, partners or suppliers of OCA or any sub-licensee, any intellectual property, including but not limited to any patents, which Hicks currently owns or may acquire during the term of this Agreement. Hicks shall not assign to any third party or otherwise dispose of any such intellectual property except in conjunction with an obligation on the assignee of such intellectual property to be bound by the non-assertion obligation of this Paragraph.


3. Hicks shall maintain the Patent in force for its maximum permissible time duration by timely payment of all maintenance fees, annuities or the like. Hicks may at any time during the term of this Agreement be discharged from this obligation to pay maintenance fees, annuities or the like, by offering to assign to OCA title to and all his rights i ...