BARDENPHO LICENSE AGREEMENT
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BARDENPHO PROCESS LICENSE AGREEMENT
THIS AGREEMENT is entered into by and between EIMCO PROCESS
EQUIPMENT COMPANY, with offices at 669 West 200 South, Salt Lake City, Utah
84110 (the "LICENSOR"), and the City of Clearwater, Florida (the
"LICENSEE"), effective upon execution by the LICENSEE, as follows:
WHEREAS, the LICENSOR represents that it has full authority and
right to grant a non-exclusive, non-assignable sublicense under United
States Patent Number 3,964,998 (the " PATENT" ), for a sewage treatment
process known as the BARDENPHO Method ("METHOD")* and to assist LICENSEE
and/or its designated consulting Engineer, Briley, wild 'Associates,
Inc. ("ENGINEER") in the design, construction and operation of a
BARDENPHO System (" SYSTEM" )** for the clearwater, Florida Marshall
street Wastewater Treatment Plant (" WCATION" ); and
WHEREAS, LICENSOR is willing to indemnify and hold harmless the
LICENSEE and its ENGINEER with respect to the METHOD, Installation
(" INSTALLATION" )*** and PATENT, on the terms and conditions set forth
herein;
NOW, THEREFORE, in consideration of the mutual premises and
agreements contained herein, the sufficiency of which is hereby
acknowledged, the parties hereby agree as follows:
* The BARDENPHO METHOD is defined, for purposes of this Agreement, as
that part of the Installation which includes the first anoxic,
aerobic, second anoxic and reaeration basins at the Installation at
the WCATION.
** The BARDENPHO SYSTEM includes the METHOD plus an initial
fermentation basin.
*** INSTALLATION refers to the design, construction, and operation of the
proposed METHOD at the WCATION.
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AKl'ICLE ONE
Grant of License
1.1 The LICENSOR hereby grants to the LICENSEE a paid-up non-
exclusive perpetual sublicense to use the BARDENPHO METHOD and BARDENPHO
SYSTEM (Ref. U.S. Patent 3,964,998) and EIMCO proprietary know-how with
respect to the Patent to construct, own and operate the INSTALLATION at
said WCATION.
1.2 The LICENSOR further grants to LICENSEE a paid-up, non-
exclusive perpetual license under any patents or patent application owned
or controlled by LICENSOR which is an improvement to said PATENT and is
utilized in the design, construction or operation of the INSTALLATION as
originally designed and constructed.
1.3 The LICENSOR further grants to LICENSEE, its ENGINEER and
Contractor, the right to use, for the purpose of design, construction,
operation and maintenance of the METHOD and SYSTEM, any LICENSOR technical
data on the BARDENPHO METHOD and BARDENPHO SYSTEM which is transmitted to
LICENSEE or its ENGINEER by LICENSOR. LICENSOR shall furnish during the
design phase of the INSTALLATION to LICENSEE or the ENGINEER any such
technical data in its possession, namely design information, equipment
specifications, and general operating instructions for the BARDENPHO METHOD
and SYSTEM.
1.4 The LICENSOR agrees that it will provide three copies of
a written process operation manual (specific to this INSTALLATION) which
will provide a detailed description of the process and its intended methods
of start-up, operation and control.
The LICENSOR also agrees that it will provide at no
additional cost to LICENSEE three working days (at the INSTALLATION) of
LICENSEE for operator training with respect to BARDENPHO process operation
and control as described in the process operation manual.
Assistance provided by telephone shall be provided by the
LICENSOR during the LICENSOR's reasonable business hours at no charge to the
LICENSEE.
All other assistance shall be provided by separate contract
at the LICENSOR's hourly rate then in effect for all its customers,
including its most valued customers (including personnel travel time to and
from the INSTALLATION and including those reimbursable expenses previously
agreed to by the parties).
1.5 LICENSOR shall indemnify and hold harmless the LICENSEE and
its Engineer and Contractor from and against any and all claims, damages,
judgements, losses and expenses arising out of or resulting from the use
of the BARDENPHO METHOD and BARDENPHO SYSTEM (reference U.S. Patent No.
3,964,998) at the WCATION.
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LICENSOR's duty to indemnify and hold harmless the LICENSEE
and its Engineer and Contractor against any and all claims, damages, or
judgement shall include but not be limited to claims, damages or judgements
arising out of or resulting from any litigation alleging infringement of a
presently existing patent right alleged to belong to Air Products and
Chemicals, Inc. including any litigation alleging infringement of U. S.
Patents 4,488,967; 4,488,968, 4,271,026; 4,257,897; 4,162,153 and/or
4,056,465 owned or controlled by Air Products and Chemicals, Inc. caused by
the construction, operation and/or use of the BARDENPHO SYSTEM at the
LOCATION.
The LICENSOR shall have the obligation and full authority
and sole charge and direction to defend any infringement litigation and
LICENSEE and its ENGINEER will give LICENSOR reasonable information and
assistance to enable it to do so.
ARTICLE TWO
License Fee
2.1 In consideration of the grant of the licenses and supply
of technical data under ARTICLE ONE, the LICENSEE hereby agrees to pay a
lump sum license fee of $366,000.00, which is based on the representation
by LICENSEE that the installed capacity to be provided for in the
construction contract is 10.0 MGD at the INSTALLATION. Such fee shall be
considered earned and payment shall be due within 60 days from the date of
the Contractor's notice to proceed with the construction contract for this
Installation.
2.2 In the event that the 10.0 MGD capacity of the
INSTALLATION shall be increased by any additions or enlargements at any time
during the life of the PATENT, then the LICENSEE shall payor cause to be
paid to the LICENSOR, an additional lump-sum, non-refundable license fee
calculated by multiplying (i) the ratio of the total new capacity over the
original capacity by (ii) the lump sum fee set forth in Article 2.1 above,
adjusted only to reflect the change from the 1st quarter 1989, up or down,
in the National Sewage Treatment Construction Cost Index of the United
States Environmental Protection Agency, Office of Water Program Operations.
The LICENSEE agrees to advise LICENSOR of any additions or enlargements of
the BARDENPHO METHOD of any contract to construct an addition or enlargement
thereof, in order to determine the amount of any additional license fee
payable hereunder. Changes in plant operational methods or minor LICENSEE
plant modifications shall not be considered an addition or enlargement.
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ARTICLE THREE
Representations and A~reements of Licensor
3.1 The LICENSOR is duly authorized to enter into this
Agreement and to perform its obligations hereunder. LICENSOR expressly
represents and warrants that LICENSOR is legally entitled to enter into the
undertakings contained in this Agreement.
3.2 For a period of twelve months after the date of substantial
completion of the installation, the LICENSOR shall continue to consult with,
and render prompt and competent assistance to the ENGINEER or the LICENSEE.
Such assistance shall be limited to six (6) man days. Compensation for
further assistance will be negotiated upon reasonable terms.
3.3 LICENSOR represents that it has reviewed the INSTALLATION'S
design, proposed application, and use of the BARDENPHO METHOD by the
LICENSEE and its ENGINEER and that the same should be capable of satisfying
design effluent limitations, provided the INSTALLATION receives a
biologically treatable influent. Under no circumstances is the LICENSOR
responsible for any deviation from expected performance in connection with,
for example, the design effluent limitations.
ARTICLE FOUR
Representations and A~reements
of the Licensee
4.1 The INSTALLATION, when constructed by the LICENSEE, may be
marked with the PATENT, pursuant to 35 U.S.C. Sec. 287, and may be marked
with the trademark "BARDENPHO" in a reasonable manner of display, as
provided and directed by the LICENSEE, provided that said trademark shall
not be displayed in a manner which would at any time violate any local
ordinance or regulation.
4.2 Upon a reasonable request by the LICENSOR, LICENSEE will
provide LICENSOR and other existing or prospective licensees of LICENSOR
or their consulting engineers with access, during regular business hours and
upon acceptable prior notice to LICENSEE, to the INSTALLATION and to the
operating records and operating data relating to the INSTALLATION for a
period of five (5) years from the date of this Agreement and for such
additional periods as shall be agreed upon by the parties hereto. For such
visits, the LICENSOR shall provide satisfactory releases of liability to
LICENSEE, the proposed forms for which will be agreed upon with LICENSEE
prior to their use.
4.3 The LICENSEE is duly authorized to enter into this
Agreement and to perform its obligations hereunder.
4.4 The LICENSEE agrees, consistent with the LICENSEE's duty
to disclose under state law to the extent applicable, to keep secret and
confidential any knowledge, information, and technical data which is not in
the public domain which is specifically furnished to LICENSEE by LICENSOR
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hereunder and LICENSEE shall not knowingly reveal same except as required
in its exercise of the rights and license granted hereunder.
ARTICLE FIVE
l1iscellaneous
5.1 The LICENSOR expressly disclaims any representations and
warranties not provided by this Agreement.
5.2 This Agreement shall inure to the benefit of, and be
binding upon, the parties hereto and their respective successors and
assigns.
5.3 This Agreement and the parties obligations hereunder shall
be governed by and construed in accordance with the laws of the State of
Florida.
Ri a Garvey
Mayor-Commissioner
CITY OF CLEARWATER, FLORIDA
By:
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Ron H. Rabun
City Manager
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Approved as to form
and correctness:
Attest:
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City Clerk --.:
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M1 A. Galbraith,
City Attorney
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STATE OF FLORIDA )
COUNTY OF PINELLAS )
BEFORE ME personally appeared Rita Garvey, Ron H. Rabun, M. A. Galbraith,
Jr., and Cynthia E. Goudeau, to me well known, and known to be the individuals
described in and who executed the foregoing instrument as Mayor-Commissioner,
City Manager, City Attorney and City Clerk, respectively, of the above-named City
and that the seal affixed to the foregoing instrument is the City seal of said
City and the said instrument is the free act and deed of said City.
_~ITNESS my hanq and official seal this
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Notary' ublic
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Brent Black
Vice President
SWORN to and SUbS~/ freely and vOlun;;-;t)~r t~e purposes
t~r expressed before me b '4f!1/AL& th . b1/U~f the
4?t~? ~~/ , known to me to e the person described in and who
e cuted the foregoing, this ~ day of~.LI1989.
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otary ublic
My COII1IIlission Expires: #rc1/-f'~
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