NCD980602163_20021011_Warren County PCB Landfill_SERB C_No 17 - BCD Technology License-OCR

Shaw Environmental & Infrastructure, Inc.
)
S aw The Shaw Group Inc.'·'
Memorandum
Date: 10/11 /02
To: Pat Backus (two copies)
CC: Jim Cloonan (two copies), John Funk (one copy)
From: Gary Duke (j9 ~
RE: Transmittals no. 66 and 67
The following submittals are attached:
Warren County PCB Landfill Detoxification
Project
Box 426 Route 4
Warrenton, NC 27589
Phone: [phone]
Fax: [phone]
1. Transmittal No . 66, Submittal No. 17, BCP patent licensing agreement.
2. Transmittal No . 67, Submittal No. 93, Name of proposed laboratories for the project.
Please contact me at 609-588-6373 if you have any questions or if I can provide any
additional information.
r
'· TRANSMITTAL COVER PAGE
WARREN COUNTY PCB LANDFILL DETOXIFICATION PROJECT
·R' Corp. Project #827062
S h Aw E 2,._ "I 5 hAuJ €&'I.
Submitted By:.ff Cein,e,121:tiSR -200 Horizon Center Boulevard, Trenton, New Jersey 08691
Transmittal Number (chronological sequence): _QQ
Transmittal Date: 10/9/02 --~---
Submittal Register Item Number: _l1
Resubmittal: No_.X Yes __
Specification Section: 01100 1.07
Description: BCD Patent Licensing Agreement
Drawing/Detail Number: NI A
Subcontractor/Supplier USEPA National Risk Management Research Laboratory
Comments: NIA
Number of Copies Submitted: _5~
Number of Copies to be Returned to Contractor_0~-
Submitter's Name and Signature: Gary W. Duke, P.E.
Earth Tech Engineer's Receipt Signature: ____________________ _
Comments:
Receipt Date:
Engineer's Approval
Comments:
Reviewer's Signature
Project Manager's Signature
□ A. "Reviewed and approved, no exceptions taken"
D B. "Reviewed and approved with comments
□ C. "Revise and Resubmit"
Date -------------------------
_______________ Date ________ _
..
August 7, 2002
Larry Fradkin, Director (MS-173)
FTT A Program
l ,' ',1
US. Environmental Protection Agency
2<? W . Martin Luther King Drive
Cincinnati, OH 45268
Re: EPA Approval of a Non-Exclusive Patent Licensing Agreement between Midwest Soil
and USEPA's National Rick Management Research Laboratory (NRMRL)
File No. 0227-02
Dear Mr. Fradkin:
Please find enclosed the executed original Licensing Agreement.
Please let me know if you have any questions.
Si?ic .ely,~ , ~ l'.-1rle;---
[I~
Mik~ Fetherlinge'~
1480 Sheldon Drive L · Elgin, Illinois 601 20 ii.,., Phone [phone] Ji:, Fax [phone]
~
t~_:,11,:> f
UNITED STATES ENVIRONMENTAL PROTECTION AGENCY
CINCINNATI. OHIO 45268
Mike Fetherling
Vice President of Operations
tvhdwest Soil
1480 Sheldon Drive
Elgin, IL 60120
JtJl.26~
Re: EPA Approval of a Non-Exclusive Patent Licensing Agreement between
··········· --··· ···-· ··· -·· -Jvliclwesr Soi1 -an:aUSEPA's1'raTionaI •RiskMatrn:gemenrRes-earchta1Yora-rory -·· · ··· --· -··· ···
(NRMRL)
File No. 0227-02
Dear Mr. Fetherling:
Attached is the EPA approved Non-Exclusive Patent Licensing Agreement between
Midwest Soil and NRMRL. Please sign the Agreement (pagel9) and forward the original
Agreement to me. Please include the following Budget Accounting Number
02/03-CR1-26CSX81-80401F along with the above file number on your check when mailing it
to the Lockbox as outline in Article 3 of the Agreement. My mailing address is as follows:
Larry Fradkin, Director (MS-173)
FTTA Program
U.S. Environmental Protection Agency
26 W. Martin Luther King Drive
Cincinnati, OH 45268
Please contact me at [phone] or E-mail at [e-mail] for further
questions.
-zerely,
Larry Fr
Director
U.S. EPA's
Federal Technology Transfer Act Program
cc: G. Huffman, NRMRL
S. Sikdar, NRMRL
•
EPA Model Non-Exclusive License Agreement January 200 I
NON-EXCLUSIVE LICENSE FOR DEVELOPMENT AND USE
This LICENSE AGREEMENT is made and entered by and between the National Risk
Management Research Laboratory (NRMRL), U.S. Environmental Protection Agency,
Cincinnati, OH, as the representative of the United States of America (hereafter LICENSOR),
acting under the authority of 15 U.S.C. § 3710a(a)(2), which was delegated to the Director of
·········-·--·-···--said-t;aboratoryby-EP.kDe-Iegation·t:.550fNavember28;t995-ct200TN4i-3)~-11mtMidwesr-
Soil, an Illinois Corporation having principal offices at 1480 Sheldon Dr., Elgin, Illinois, 60120
(hereafter LICENSEE).
W I T N ES S E T H:
WHEREAS, The United States of America is the owner by assignment of any undivided
right, title and interest to U.S. Patent No. 5,019,175 entitled "Method for the Destruction of
Halogenated Organic Compounds in a Contaminated Medium"; U.S. Patent No. 5,039,350
entitled "Method for the Decomposition of Halogenated Organic Compounds in a Contaminated
Medium"; and U.S. Patent No. 5,064,526 entitled "Method for the Base-Catalyzed
Decomposition of Halogenated and Non-Halogenated Organic Compounds in a Contaminated
Medium."
WHEREAS, LICENSOR desires the methods claimed and described in U.S. Patent Nos.
5,019,175; 5,039,350; and 5,064,526 be made available to the public in the shortest possible
time, thereby serving the public interest by providing improved products and processes for the
remediation of hazardous wastes containing chlorinated organic materials;
2
WHEREAS, under the authority of Title 35 United States Code§ 207, Title 15 United
States Code§ 3710a and 37 Code of Federal Regulations Part 404, LICENSOR has the right to
issue licenses under patents and patent applications assigned to the United States of America;
WHEREAS, LICENSEE desires a NON-EXCLUSIVE license in the LICENSOR's
Base-Catalyzed Decomposition technology;
--------------------· ------NOW; THEREFORE; irn';oh-s1clerati6n orme proifuse-s~--as"werra~rlne· ol5Iigationflierefn ------· -----
made and undertaken, the parties hereto, intending to be legally bound, agree as follows:
ARTICLE I
DEFINITIONS
1.01 Terms in this LICENSE AGREEMENT (other than names of parties and Article
headings) which are set forth in upper case letters have the meanings established for such terms
in the succeeding paragraphs of this ARTICLE I.
1.02 LICENSE AGREEMENT means this Document, "NON-EXCLUSIVE LICENSE
FOR DEVELOPMENT AND USE", including any exhibits attached hereto_
1.03 LICENSE means the NON-EXCLUSIVE license granted pursuant to paragraph
2.01 of this LICENSE AGREEMENT.
1.04 LICENSED PATENTS means U.S. Patent Nos. 5,019,175; 5,039,350; and
5,064,52 6.
3
1.05 LICENSED TECHNICAL INFORMATION means technical information including,
but not limited to, data, know-how, trade secrets, calculations, writings and drawings, whether or
not patented, relating to the LICENSED PA TENTS and disclosed and claimed in the LICENSED
PATENTS.
1.06 LICENSED TECHNOLOGY means LICENSED TECHNICAL INFORMATION
and any products, methods, processes or uses which are disclosed and claimed in the LICENSED
PATENTS.
1.07 LICENSED AREA means Warren County, North Carolina.
1.08 LICENSOR'S REPRESENTATIVE means the Director of the National Risk
Management Research Laboratory of the U.S. Environmental Protection Agency, Cincinnati,
OH.
ARTICLE Il
LICENSE GRANT
2.01 Upon the terms and conditions set forth herein and subject to the payment of fees as
set forth herein, LICENSOR grants to LICENSEE a NON-EXCLUSIVE LICENSE to make,
have made, use and sell the LICENSED TECHNOLOGY throughout the LICENSED AREA for
the term set forth in paragraph 9.02 of this LICENSE AGREEMENT. The NON-EXCLUSIVE
LICENSE shall be for both solid and liquid applications.
4
ARTICLE III
ROY AL TIES AND PAYMENTS
3.01 LICENSEE shall pay LICENSOR a LICENSING fee as follows:
a. LICENSEE shall pay to the LICENSOR a licensing fee of $26,250 for the first
year following the Effective Date of this LICENSE AGREEMENT as desc·ribed in
1Yaragraptr9:0t. · •· · ··· ·· · · · ·· ·· ··· -· · ·· ............ ·•·········-··-·· .. _
b. LICENSEE shall pay the licensing fee payment of paragraph 3.01 (a) by quarterly
payments of $6,562.50/quarter paid thirty (30) days after the end of each fiscal
quarter.
c. If the license is extended beyond the first year as specified in paragraph 9.02, from
the second year following the Effective Date of this LICENSE AGREEMENT and
thereafter, LICENSEE will pay LICENSOR a licensing fee of $17,500 per year.
d. LICENSEE shall pay the licensing fee payment of paragraph 3.01 (c) by quarterly
payments of $4,375/quarter paid thirty (30) days after the end of each fiscal
quarter.
e. Any payments due under paragraphs 3.01 (b) and (d) not received by LICENSOR
by the due date shall be subject to interest charges computed at ten percent ( 10%)
per annum.
f. LICENSEE shall pay LICENSOR fifty percent (50%) of all fees and royalties paid
to LICENSEE by a SUBLICENSEE of LICENSEE, payment to be made within
ninety (90) days of receipt by LICENSEE. Such payment shall be in addition to
payments under paragraph 3.01 (a), (b), (c) and (d) above .
5
g. Fees in paragraph 3.01 (a), (b), (c) and (d) above represent the standard licensing
fee of $75,000 for the first year and $50,000 for the second and each subsequent
year modified per the agreement between the U.S. EPA and the State of North
Carolina memorialized in a letter from Timothy Fields, Jr, Assistant
Administrator of the U.S. EPA, to James B. Hunt, Jr., Governor of the State of
North Carolina dated August 11, 2000. A copy of the August 11, 2000 letter is
attached hereto as appendix A.
3.02 Payments shall be made in United States dollars, paid by check made payable to
U.S. Environmental Protection Agency and mailed to:
U.S . Environmental Protection Agency
Cincinnati Financial Management Center
Patent Royalties
P.O. Box 371099M
Pittsburgh, Pennsylvania 15251
The check shall be accompanied by copies of the first page and signature page of this LICENSE
AGREEMENT.
ARTICLE IV
REPORTS AND RECORDS
4.01 LICENSEE shall provide LICENSOR'S REPRESENTATIVE with written annual
progress reports within ninety (90) days of the end of each twelve ( 12) month period following
the Effective Date of this LICENSE AGREEMENT describing its efforts, and the efforts of any
SUBLICENSEE, to apply the methods licensed under this LICENSE AGREEMENT. This
report should specify amounts of waste treated, dechlorination results in terms of feed and fin al
6
product concentrations, and important operating parameters applied such as temperatures and
reactor residence times.
4.02 The reports required under this ARTICLE N shall also be made within sixty (60)
calendar days of termination of this LICENSE AGREEMENT.
4.03 LICENSEE agrees to keep records showing all sublicensing fees or royalties
AGREEMENT. These records shall be retained for three years beyond the date of distribution or
sale and shall be in sufficient detail to enable the fees payable hereunder by LICENSEE to be
determined. These records may be examined from time to time to the extent necessary to verify
the claims made by the LICENSEE in determining the fees to be paid as described in ARTICLE
III, such examination to be made at the expense of the LICENSOR by any auditor appointed by
LICENSOR who shall be acceptable to LICENSEE, or, at the option and expense of LICENSEE,
by a certified public accountant appointed by LICENSOR.
ARTICLE V
SUBLICENSING
5.01 LICENSEE shall have the right to grant sublicenses to others under this NON-
EXCLUSTVE LICENSE so long as the fee is paid by each SUBLICENSEE to LICENSEE to
LICENSOR as set forth in paragraph 3.01 of this LICENSE AGREEMENT and so long as the
sublicenses are subject to the provisions of this LICENSE AGREEMENT. Any sublicense shall
make reference to this LICENSE AGREEMENT including those rights retained by LICENSOR.
7
A copy of any sublicense shall be furnished to LICENSOR'S REPRESENTATIVE within fifteen
(15) calendar days after its execution
5.02 In the event of termination of this LICENSE AGREEMENT SUBLICENSEES
under paragraph 5.01 may exercise their option to convert their sublicenses to licensees directly
from the LICENSOR. Any sublicense granted by LICENSEE shall contain provisions
corresponding to those of this ARTICLE respecting termination.
ARTICLE VI
LICENSEE PERFORMANCE
6.01 LICENSEE shall expend reasonable efforts and resources to carry out the
development and marketing of the LICENSED TECHNOLOGY and to bring the LICENSED
TECHNOLOGY to THE POINT OF PRACTICAL APPLICATION.
THE POINT OF PRACTICAL APPLICATION means the condition such that the
LICENSED TECHNOLOGY is being utilized and the benefits of the LICENSED
TECHNOLOGY are, to the extent permitted by law, being made available to the public on
reasonable terms on or before one year (1) from the inception date of this License Agreement, in
accordance with the plan for development and marketing the LICENSED TECHNOLOGY
attached as Exhibit A.
6.02 After bringing the LICENSED TECHNOLOGY to THE POINT OF PRACTICAL
APPLICATION in the LICENSE AREA, LICENSEE agrees to make the LICENSED
TECHNOLOGY available to the public on reasonable terms during the term of this LICENSE
8
AGREEMENT. LICENSEE shall promptly report discontinuance of its making the benefits of
the methods reasonably accessible to the public.
6.03 Failure to comply with the terms of this ARTICLE shall be cause for modification or
termination of this LICENSE AGREEMENT in accordance with the provisions of ARTICLE IX
below. No other rights or remedies accrue to LICENSOR or any third parties by reason of such
failure.
ARTICLE VII
PATENT ENFORCEMENT
7.01 LICENSOR and LICENSEE shall notify each other promptly in writing of any
infringement of the LICENSED PA TENTS which becomes known to either of them.
7 .02 LICENSEE agrees to furnish technical and other necessary assistance to assist
LICENSOR in conducting any litigation necessary to enforce the LICENSED PATENTS.
LICENSOR agrees to furnish technical and other necessary assistance to assist LICENSEE in
defending any litigation for patent infringement arising from LICENSEE' s practice of the
LICENSED PATENTS. Expenses for such assistance will be paid by the party requesting such
assistance.
ARTICLE VIII
RESERVATION OF RIGHTS
8.01. LICENSOR reserves the right to grant other NON-EXCLUSIVE LICENSES for
the development and use of the LICENSED TECHNOLOGY, including LICENSES to
competitors of the LICENSEE, without notice to the LICENSEE .
9
ARTICLE IX
TERM AND TERl\flNATION
9.01 The Effective Date of this LICENSE AGREEMENT is the date of the last signature
to this LICENSE AGREEMENT.
9.02 The term of this LICENSE AGREEMENT begins on its Effective Date as set forth
in paragraph 9.01. Unless sooner terminated or otherwise modified as provided for in this
ARTICLE IX, this LICENSE AGREEMENT shall remain in full force and effect for an initial
term of one (1) year from the Effective Date. LICENSEE shall have the right to renew this
LICENSE AGREEMENT for successive periods up to five (5) years upon written notice mailed to
LICENSOR'S REPRESENTATIVE at least sixty (60) days prior to the expiration of the initial
term and each subsequent renewal term, provided, however, that LICENSEE shall have no right to
renew this LICENSE AGREEMENT in the event that either party hereto has exercised a right of
termination under this ARTICLE IX or in the event that LICENSEE in not making good faith
efforts to bring the LICENSED TECHNOLOGY to THE POINT OF PRACTICAL
APPLICATION.
9.03 The LICENSOR may modify or terminate this NON-EXCLUSIVE LICENSE, in
whole or in part, if:
(a) LICENSEE fails to meet the obligations set forth in ARTICLE VI above;
(b) The LICENSOR determines that such action is necessary to meet requirements for
public use specified by Federal regulations and such requirements are not
reasonably satisfied by the LICENSEE;
10
(c) The LICENSEE has willfully made a false statement or willfully omitted a material
fact in its license application or in any report required by this LICENSE
AGREEMENT;
(d) The LICENSEE commits a substantial breach of a covenant or agreement
contained in this LICENSE AGREEMENT;
(e) The LICENSEE defaults in making any payment or report required by this
.. LICENSE"J\GREEMENT;··-....
(f). The LICENSEE is adjudged a bankrupt or has its assets placed in the hands of a
receiver or makes any assignment or other accommodation for the benefit of
creditors; or
(g). The LICENSEE or any of its sublicensees misuses the LICENSED PATENTS.
9.04 Prior to any modification or termination of this LICENSE AGREEMENT by
LICENSOR, LICENSOR shall furnish LICENSEE and any sublicensee of record a written notice
of LICENSOR's intention to modify or terminate, and the LICENSEE and any notified
sublicensee shall be allowed sixty (60) calendar days after the date of such notice to remedy any
breach or default of any covenant or agreement of this LICENSE AGREEMENT or to show cause
why this LICENSE AGREEMENT should not be modified or terminated.
9.05 Notwithstanding the provisions of paragraph 9.04 above, LICENSEE may, in its sole
discretion, terminate this LICENSE AGREEMENT at any time by giving LICENSOR'S
REPRESENTATIVE prior written notice not less than sixty (60) calendar days before the date of
such termination, subject to the provisions of paragraph 11 .07 .
1 1
9.06 The word "termination" and cognate words, such as "term" and "terminate," used in
this ARTICLE IX and elsewhere in this LICENSE AGREEMENT are to read, except where the
contrary is specifically indicated, as omitting from their effect the following rights and
obligations, all of which survive any termination to the degree necessary to permit their complete
fulfilJment or discharge:
(a) LICENSEE's obligation to supply a terminal report as specified in ARTICLE IV of
this LICENSE AGREEMENT;
(b) LICENSEE's right to use LICENSED TECHNOLOGY or to carry out work for
which LICENSEE has an outstanding order during a quarterly period for which
LICENSEE has paid LICENSOR a fee equivalent to the fee specified in paragraph
3.01 (d);
(c) LICENSOR's right to receive or recover and LICENSEE's obligation to pay fees
accrued for payment at the time of any termination;
(d) LICENSEE's obligation to maintain records and LICENSOR's right to conduct a
final audit as provided in ARTICLE IV of this LICENSE AGREEMENT;
(e) Any cause of action or claim of LICENSOR accrued or to accrue, because of any
breach or default by LICENSEE.
9.07 In the event of termination of this LICENSE AGREEMENT, any affected
sublicense of record granted pursuant to paragraph 5.01 of this LICENSE AGREEMENT may be
converted to a license with the LICENSOR in accordance with the provisions of ARTICLE V
herein.
12
9.08 LICENSOR and LICENSEE shall pay their own termination costs out of their own
funds. In no event shall LICENSOR or LICENSEE be liable for the direct termination costs of
the other party or the other party's expenses caused by or related to the termination.
ARTICLEX
REPRESENTATIONS AND WARRANTIES
(a) The National Risk Management Research Laboratory, U.S. Environmental
Protection Agency, Cincinnati, OH is a Federal laboratory of the EPA, wholly
owned by the U.S . Government, whose substantial purpose is the performance of
research, development or engineering by employees of said Government;
(b) The performance of the activities specified by this LICENSE AGREEMENT are
consistent with the mission of the National Risk Management Research
Laboratory, U.S. Environmental Protection Agency, Cincinnati, OH.;
(c) All prior reviews and approvals required by regulations or law have been obtained
by the LICENSOR prior to the execution of this LICENSE AGREEMENT. The
Laboratory official executing this LICENSE AGREEMENT on behalf of
LICENSOR has the requisite authority to do so;
( d) LICENSOR is the lawful owner of the LICENSED PATENTS and the LICENSED
TECHNOLOGY. LICENSOR has the right to license the LICENSED
TECHNOLOGY including the LICENSED PATENTS and LICENSOR has not
executed and is not aware of any assignment, license or other agreement
13
conflicting with any of the grants, assignments and transfers contained in this
LICENSE AGREEMENT; and
(e) No claim, whether or not embodied in an action past or present, of infringement by
the LICENSED TECHNOLOGY has been made or is pending against LICENSOR.
10.02 LICENSEE represents and warrants as follows:
(a) LICENSEE is a corporation duly organized, validly existing and in good standing
under the laws of the State of Illinois;
(b) LICENSEE has the requisite power and authority to enter into this LICENSE
AGREEMENT and to perform according to the terms thereof;
(c) The Board of Directors and shareholders of LICENSEE have taken all actions, if
any, required to be taken by law, LICENSEE's Articles of Incorporation, its bylaws
or otherwise, to authorize the execution and delivery of this LICENSE
AGREEMENT;
(d) The execution and delivery of this LICENSE AGREEMENT does not contravene
any material provision of, or constitute a material default under, any material
agreement binding on LICENSEE or any valid order of any court, or any
regulatory agency or other body having authority to which LICENSEE is subject,
nor, to the best of its knowledge, is LICENSEE the subject of any adversarial
proceeding by any regulatory governmental agency.
14
ARTICLE XI
GENERAL
11.01 This LICENSE AGREEMENT shall extend to any reissued patent which may be
derived from any of the LICENSED PATENTS, provided that LICENSOR has custody of the
right thereto and is able to grant a license without incurring liability to third parties.
11.02 This LICENSE AGREEMENT shall not be transferred or assigned by LICENSEE
to any party other than to a successor or assignee of the business interest of LICENSEE relating
to the LICENSED TECHNOLOGY without the approval of LICENSOR'S
REPRESENTATIVE.
11.03 This LICENSE AGREEMENT does not confer any immunity from or defenses
under the antitrust laws, the export laws, the laws and regulations of the United States pertaining
to or administered by the Environmental Protection Agency or the Food and Drug .
Administration, nor does it confer immunity from a charge of patent misuse. Furthermore,
LICENSEE'S or sublicensee's acquisition and exercise of rights hereunder are not immunized
from the operation of any state or Federal law by reason of the source of the grant. This
LICENSE AGREEMENT does not constitute an endorsement by LICENSOR of the LICENSED
TECHNOLOGY and LICENSEE shall not state or imply in any medium that such endorsement
exists as the result of this LICENSE AGREEMENT.
11.04 LICENSOR mak~s no warranty, express or implied, regarding the validity of any
LICENSED PA TENTS and makes no representations whatsoever with regard to the scope of
such patents or that such patents may be exploited without infringing other patents.
15
11.05 LICENSOR assumes no liability resulting from LICENSEE's exercise of its
rights under this LICENSE AGREEMENT or from LICENSOR's exercise of its rights under this
LICENSE AGREEMENT, including modification or termination thereof.
11.06 In performing work under this LICENSE AGREEMENT in the LICENSED
AREA, LICENSEE agrees to apply its best efforts to use, sell or otherwise distribute
LICENSED TECHNOLOGY manufactured substantially in the United States.
11.07 The decision of LICENSOR'S REPRESENTATIVE on any requirement, dispute,
interpretation, modification, or termination of this LICENSE AGREEMENT shall be reduced to
writing and a copy mailed or otherwise furnished to LICENSEE. Such decision shall be final,
provided that LICENSEE may, within thirty (30) calendar days of receiving notice of such
decision, submit a written appeal through LICENSOR's REPRESENTATIVE to the Associate
General Counsel, Finance & Operations Law Office, Office of General Counsel, U.S.
Environmental Protection Agency, which appeal shall set forth in detail the decision being
appealed and the basis of the appeal and may include appropriate supporting materials.
Implementation of such decision shall be stayed pending a final resolution of such appeal.
Pending such final resolution, LICENSEE shall proceed diligently with the performance of its
obligations under this LICENSE AGREEMENT.
11.08 The parties shall notify each other of any changes in name, address, or business
status, and any notice, payment or report required to be given under the provisions of this
LICENSE AGREEMENT shall be considered duly given if mailed by first class mail, postage
prepai d, and addressed as follows :
(a) If to LICENSOR:
(b) If to LICENSEE:
16
E. Timothy Oppelt
Director
National Risk Management Research Laboratory
Office of Research and Development
U.S. Environmental Protection Agency
26 W. Martin Luther King Drive
Cincinnati, OH 45268
Mike Fetherling
Vice President of Operations
Midwest-Suit · · · · -·--------------
1480 Sheldon Dr.
Elgin, IL 60120
11.09 Titles and headings of the Articles and paragraphs of this LICENSE
AGREEMENT are for the convenience of reference only and do not form a part of this LICENSE
AGREEMENT and shall in no way affect the interpretation thereof.
11.10 None of the provisions of this LICENSE AGREEMENT shall be considered
waived by any party hereto unless such waiver is given in writing to all other parties. The failure
of any party to insist upon strict performance of any of the terms and conditions hereof, or failure
or delay to exercise any rights provided herein or by law, shall not be deemed a waiver of any
rights of any party hereto.
11.11 The illegality or invalidity of any provisions of this LICENSE AGREEMENT
shall not impair, affect or invalidate the other provisions of this LICENSE AGREEMENT.
11.12 If LICENSOR or LICENSEE desires a modification in this LICENSE
AGREEMENT, the parties shall, upon reasonable notice of the proposed modification by the
party desiring the change, confer in good faith to determine the desirability of such modification.
17
Such modification shall not be effective until a written amendment is signed by the
representatives of LICENSOR and LICENSEE duly authorized to execute such amendment.
11.13 The relationship of the LICENSOR and LICENSEE is that of independent parties
and not as agents of each other or as joint venturers or partners. LICENSOR shall maintain sole
and exclusive control over its personnel and operations. LICENSEE shall maintain sole and
exclusive control over its personnel and operations.
-------------------------· ··--itt4··-TnetfCENS-EE shall ptace a propriera:tyhofice on a1r mformauon 1t clehvers ---------------------
to the LICENSOR under LICENSE AGREEMENT which it asserts is PROPRIETY
INFORMATION. The LICENSOR agrees that any information designated as PROPRIETARY
INFORMATION which is furnished by the LICENSEE to the LICENSOR under this LICENSE
AGREEMENT, or in contemplation of this LICENSE AGREEMENT, shall be used by the
LICENSOR only for the purpose of carrying out this LICENSE AGREEMENT. Information
designated as PROPRIETARY INFORMATION shall not be disclosed, copied, reproduced or
otherwise made available in any form whatsoever to any other person, firm, corporation,
partnership, association or other entity without consent of the LICENSEE except as such
information may be subject to disclosure under the Freedom of Information Act (5 U.S.C. § 552)
and EPA's regulations at 40 C.F.R. Part 2. To the extent permitted, the LICENSOR agrees to
use its best efforts to protect the information designated as PROPRIETARY INFORMATION
from unauthorized disclosure. The LICENSEE agrees that the LICENSOR is not liable for the
disclosure of PROPRIETARY INFORMATION which, after notice to and consultation with the
LICENSEE, the LICENSOR determines may not lawfully be withheld or which a court of
competent jurisdiction requires to be disclosed. If no claim of confidentiality accompanies
18
information at the time of submittal, the information may be made public with no further notice
to the LICENSEE.
11.15 The interpretation and application of the provisions of this LICENSE
AGREEMENT shall be governed by the laws of the United States as interpreted and applied by
the Federal courts in the District of Columbia, United States of America.
11.16 This LICENSE AGREEMENT constitutes the entire understanding between the
------·•----·----·-parties·amtm~ith·erpartysn:ait"beo1>itga:real>yanycon01fion-6Trepresemafionolner-1:nan-Those··---·-----------·--
expressly stated herein or as may be subsequently agreed to by the parties hereto in writing.
19
IN WITNESS WHEREOF, each of the parties hereto has caused this LICENSE
AGREEMENT to be executed in duplicate originals by its duly authorized officers or
representatives.
FOR LICENSOR:
E Timothy !p~~ Date: 7 /4 2--
-·---·---------Bi-rector--------------------·----·----------------------------------------------------------------------------------------------____ .. ________________ ----------------------------- ---------.. --·-
National Risk Management Research Laboratory
Office of Research and Development
U.S. Environmental Protection Agency
26 W. Martin Luther King Drive
Cincinnati, OH 45268
Mike Fetherling
Vice President of Operations
Midwest Soil
1480 Sheldon Dr.
Elgin, IL 60120
Date: ------
051Jl l 2002 FRI 5:09 FAX
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' 0513112002 FRI 5:11 FAX
APPLICATION FOR LICENSING
US ENVIRONMENTAL PROTECTION AGENCY INTELLECTUAL PROPERTY
SECTION I: IDENTIFICATION OF INYENTION(S) FOR WIDCH LICENSE IS SOUGHT
Title of Patent Application(s): Method for base catalyzed decomposition of halogenated and non-
halogenated organic compounds in a contaminated medium.
lnventor(s):
@005/009
Rogcrs; Charles J. (Cincinnati, OH); KorneJ; Alfred (Cincinnati, OH); Sparks; Harold L (Fayetteville, OH)
------··-··---------S--onrce-fromwhich-yotdeamedof-ava-itabi-lity--cf a--licens-e-to-the--pres-em-invernionfs}-----------------------------__________ _
Have followed the technology since it's developmental days. Have met with Charles Rodgers in Cincinatti in the
!ates 80s or early 90s.
SECTION 2: INFORMATION ABOUT APPLICANT
Name of Applicant's Primary Contact Person: _C~ar~l =S_w""'a"'"n~'-'-·tr'--'o""m-'------------
Title: Technical Director
1\:ftdv.,'est Sci!
1480 Sheldon Dr.
Elgin, IL 60; 20
Phone: (S47) 742 -4331
Fax: [phone]
E-Mail : Carl@mid west soil. net
Name of Applicant 's Licensing Representative: ~M-=i=k-=-e-=-F....::..et=h=erc...:.li=·n=g __________ _
Title: Vice President of Operations
Address lvli dwest Soil
1480 Sheldon Dr.
El gin. IL 60120
. 05/31/2002 FRI 5:11 FAX @0061009
Phone: [phone]
Fax: [phone]
E-Mail: [e-mail]
Ts Applicant a U.S. Corporation? _2Lyes _no
If no, state country of origin:
State of incorporation or citizenship (ifan individual): _Tl_li_no~1=·s ________ _
Is Applicant a Small Business Firm (<500 employees)? _no
Type of License sought (please circle one):
Exclusive Comrnerciafizatio11 License Nonexclusive Commercialization License
SECTION 3: PROPOSED FIELD(S) OF USE
On a separate attachment to this application, please provide the following information:
Description of Applicant: Include nature and type of applicant's business; number of employees;
corporateJdivisional commitment to R&D, production, sales & marketing; financial resources; products or services
successfully commercialized; and any unique capabilities of your company relative to the licensed technology
Other Licenses and Use of the Invention: Identify licenses previously granted to the Applicant for federaiiy-owned
inventions. AJso, identify, to the best of Applicant's knowledge, the extent to which the invention for which a
license is sought is be-ing practiceJ by private industry or Government, or is otherwise available commercially
Proposed License Terms: Include definitions of licensed products, processes or methods; geographic territories;
duration of license; claims (if known) of patent or patent application under which the proposed licensed
tedu1ology would fall; and other teims for which you wish to make a proposal at this time.
Research & Development and Marketing Plan: Include description of product( s) or mcthod(s) to be developed
with the licensed technology and, for each product or method to be developed, a description of expected product
research and development programs, including (where relevant) major manufacturing and marketing stages;
moneta.iy and personnel commitments for each development stage; and the projected time to accomplish each
stage of commercial development lj"you will he using the licensed technology in house but will not he directly
commercializin;:; the licensed rechnolof!Y or pro1,idi11K a service based on the technology, you need on~y descrihe
1he research program in which the licensed technolo,ry will he urilized.
05/31/2002 FRI 5:11 FAX @0071009
Market Analysis: Include relevant market segment(s) the licensed technology will serve when commercialized;
market size and projected growth of relevant markets during the duration of the license: estimated market share
once product is introduced; and sales projections based on market share analysis.
Tnclude a statement containing applicant's best knowledge of the extent to which the invention is being practiced
by private industry or Government, or both, or is otherwise available commercially.
Please provide any other information which will support a determination to grant the requested license.
For Applicants for Exclusive or Partially Exclusive Licenses ONLY: Include a detailed statement as to a) why
federal and public interests will be best served by exclusive licensing of this invention; b) why expeditious practical
application of the invention is unlikely to occur under a nonexclusive license; c) why the exclusive licensing of this
-------· --· · -------·· · i nvetnkfn -is-·a-r e-a:s·orn:i.iJte-arnt· nece~~-ary·rrrcentive· ·to attract ittvestments-uf·risk capital, -d-}--wh-y--the--exc--ltts:ive----
1 icensing of this invention will not tend substantially to lessen competition or result in undue market concentration;
and e) why the proposed license terms and scope of exclusivity are not greater than reasonably necessary.
I certify, to the best ofmy knowledge, that all of the information provided on this application and on attachments
to this application is true and accurate.
L/-2y-o;J_
Signature of Applicant or Authorized Representative Date
Please Print Name and Title:
Mike Fethcrlino-
Vice President of Operations
05/31/2002 FRI 5:12 FAX
Attachment
MSR-BCD License
@00810 09
SECTION 3: PROPOSED FIELD(S) OF USE
Description of Applicant:
Midwest Soil Remediation, Inc, (MSR) provides on-site thermal desorption treatment of
contaminated media such as soils and sludges. The company was established in 1990 and
averages about fifteen employees. The applicant currently has six systems available for thermal
treatment. One of the systems is identified as the High Capacity Indirect (HCI) thermal
desorption unit (TDU). The Base-Catalyzed Decomposition (BCD) process being licensed will
be used only in conjunction with the HCI TDU. This license is for use of the BCD technology
for a single project. The project is a state funded project managed by the North Carolina
---.. Departrnent.ofE.rulironment...and.Natu.ral_Re.s.QJ.l...rccs (NCDENRJ_ The_ remediation effort wi Il take
place at the Warren County Landfill in Warrenton, NC. ··--
Other Licenses and Use of the Invention__:
Th.is applicant has not been granted any licenses for other federally-owned inventions. MSR is
not aware of any current use of this invention by either the Government or private industry.
Proposed License Terms:
Product(s) -U.S Patent No. 5,019,175 entitled "Method for the Destruction of Halogenated
Organic Compounds in a Contaminated ~--1ediurn 1
'; U.S. Patent 1'Ic. 5,039,350 ~titled "Method
for the Decomposition of Halogenated Organic Compounds in a Contaminated Medium"; and
U.S. Patent No. 5,064,526 entitled "Method for the Base-Catalyzed Decomposition of
Halogenated and Non-halogenated Organic Compounds in a Contaminated Medium."
Geographic Territories -The BCD process being licensed will be used only in conjunction with
the HCl TDU. This license is for use of the BCD technology for a single project. The project is a
state funded project managed by the North Carolina Department of Environment and Natural
Resources (NCDENR). The remediation effort will take place at the Warren County Landfill
(WCLF) in Warrenton, NC.
Duration -The BCD shakedown operation is scheduled to start in mid-June of 2002 and to be
completed by the end of July of 2002 The WCLF project is funded in two phases The Phase 1
effort is fully funded and ends with the completion of the Demonstration Test for the thermal
desorption and the BCD processes. The status of Phase 2 funding, the actual remediation, is
unknown at this time. If the Phase 2 proceeds, the BCD technology will be utilized for a period
of approximately six months, if the technology is able to achieve the required treatment
standards.
The required license duration could be as short as tv.ro months, and should not be more than nine
months. MSR requests a yearly license, wirh quarterly payments, prorated on a monthly basis for
05/31 /2002 FRI 5:12 FAX
the months that the technology is utilized. MSR currently has no other remediation projects
scheduled that can utilize the BCD technology.
Research & Development and Marketing Plan:
No new product(s) or method(s) are anticipated to be developed with the licensed technology.
MSR intends to use the technology as it is defined in the applicable patents and with input from
the developers.
Market Analysis:
No market analysis has been performed. MSR intends to use the licensed technology as it was
designed for this single specific project. The WCLF project is a Superfund Site and the BCD
_____________________ .... t.edm.ofogy __ i_s_s_p~dfi_~_djp_th~-E-~~Q.r_~_Qf Decision {RODl IfMSR should be awarded another
@o 091009
project remediating PCB contaminated media in which the BCD technology was applicable. it --
would have to negotiate a new license