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Exhibit 10.1
LICENSE AGREEMENT
THIS AGREEMENT dated for reference the 5th day of August, 2012.
BETWEEN:
VERIFY SMART CORP, a corporation existing under the laws of the State
of Nevada with its executive office at 40 Hillside Ave, Mahwah, New
Jersey 07430
(herein called "Licensor")
AND:
ASSURED MOBILE TECHNOLOGIES LLC., a limited liability corporation
existing under the laws of the State of Nevada with its executive
office at 6644 North Ocean Blvd., Ocean Ridge, Florida 33435
(herein called "Licensee")
WHEREAS:
A. The Licensor owns certain software and intellectual property, called the
"System and Method for Verifying a users Identity in electronic Transactions",
embodied in Patent Application Serial No. PCT2007/001639 (the "VERIFY PATENT").
B. The Licensor and the Licensee wish to enter into a license agreement whereby
the Licensor will grant to the Licensee an exclusive worldwide license, to
exploit the Verify Patent in all fields of use for a period of 20 years (the
"Patent LICENSE");
C. The Licensor has agreed to grant Licensee the License under the terms and
conditions as set forth in this License Agreement.
NOW THEREFORE in consideration of the premises and the respective covenants,
agreements representations, warranties and indemnities of the parties herein
contained and for other good and valuable consideration (the receipt and
sufficiency of which is hereby acknowledged) the parties hereto covenant and
agree as follows:
1. DEFINED TERMS
1.1 For the purposes of this Agreement, unless the context otherwise requires,
the following terms will have the respective meanings set out below and
grammatical variations of such terms will have corresponding meanings:
(a) "Affiliate" has the meaning given to that term in the Securities Act
of 1933, as amended, and the Rules and Regulations of the Securities
and Exchange Commission promulgated thereunder;
(b) "Associate" has the meaning given to that term in the Securities Act
of 1933, as amended, and the Rules and Regulations of the Securities
and Exchange Commission promulgated thereunder;
(c) "Business Day" means any day which is not a Saturday, Sunday or
statutory holiday in Nevada;
(d) "Effective Date" means the later of the date first written above or
the date of the last signature completing the execution of this
Agreement;
(e) "Gross Sales" means the aggregate of all sums actually received from
all third party sources by Licensee, by any affiliate of Licensee, or
by any authorized entity acting on Licensee's behalf, which sums are
derived from the applicable exploitation of the Licensed IP. There
shall be excluded from the Gross Sales the following:
(i) Any sums received and thereafter refunded, and if any such sums
shall have theretofore been taken into account, then an amount
equal to the sum refunded shall be eliminated from subsequent
receipts;
(ii) Any withholding, sales tax, consumption tax or other applicable
taxes collected in respect of the sales;
(iii)Any and all sales which are refundable until earned or forfeited
(but all non-refundable advances or advances which are subject
only to delivery or the passage of time shall be included in
Gross Sales); and
(iv) Any payments of Gross Sales payable to any non Affiliate of
Licensee.
(f) "Licensed IP" means the Verify Patent and all intellectual property of
the Licensor related thereto;
(g) "Verify Patent" means the "System and Method for Verifying a users
Identity in electronic Transactions" patented technology described in
Schedule 1 hereto and represented by Patent Application Serial No.
PCT2007/001639
(h) "Currency. Unless otherwise indicated, all dollar amounts in this
License Agreement are expressed in United States funds.
1.2 Sections and Headings. The division of this License Agreement into
Articles, sections and subsections and the insertion of headings are for
convenience of reference only and will not affect the interpretation of
this License Agreement. Unless otherwise indicated, any reference in this
License Agreement to an Article, section, subsection or Schedule refers to
the specified Article, section or subsection of or Schedule to this License
Agreement.
1.3 Number, Gender and Persons. In this License Agreement, words importing the
singular number only will include the plural and vice versa, words
importing gender will include all genders and words importing persons will
include individuals, corporations, partnerships, associations, trusts,
unincorporated organizations, governmental bodies and other legal or
business entities of any kind whatsoever.
1.4 Accounting Principles. Except as otherwise stated, any reference in this
License Agreement to generally accepted accounting principles refers to
generally accepted accounting principles that have been established in the
United States of America, including those approved from time to time by the
American Institute of Certified Public Accountants or any successor body
thereto.
1.5 Entire Agreement. This License Agreement constitutes the entire agreement
between the parties with respect to the subject matter hereof and
supersedes all prior agreements, understandings, negotiations and
discussions, whether written or oral. There are no conditions, covenants,
agreements, representations, warranties or other provisions, express or
implied, collateral, statutory or otherwise, relating to the subject matter
hereof except as herein provided.
1.6 Time of Essence. Time will be of the essence of this License Agreement.
1.7 Applicable Law. This License Agreement will be construed, interpreted and
enforced in accordance with, and the respective rights and obligations of
the parties will be governed by, the laws of the State of Nevada and the
federal laws of United States applicable therein, and each party
irrevocably and unconditionally submits to the non-exclusive jurisdiction
of the courts of such state and all courts competent to hear appeals there
from and waives, so far as is legally possible, its right to have any legal
action relating to this License Agreement tried by a jury.
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1.8 Amendments and Waivers. No amendment or waiver of any provision of this
License Agreement will be binding on either party unless consented to in
writing by such party. No waiver of any provision of this License Agreement
will constitute a waiver of any other provision, nor will any waiver
constitute a continuing waiver unless otherwise provided.
1.9 Schedules. The following Schedules are attached to and form part of this
License Agreement: All terms defined in the body of this License Agreement
will have the same meaning in the Schedule attached hereto.
Schedule 1 - Description of Patent
2. GRANT OF LICENSE
2.1 The Licensor hereby grants to the Licensee, effective as of the Effective
Date and for a period of 20 years, an exclusive worldwide license to use
and exploit the Licensed IP.
2.2 Licensee may assign or sublicense the rights granted under this license in
whole or in part, in its sole discretion.
2.3 The Licensee agrees to assist the Licensor in recording this License
Agreement with appropriate government authorities where such recording is
required by law or regulation or where such recording is permitted or
desired by the Licensor.
2.4 The Licensor shall not continue to use the Licensed IP for its business and
shall not sell or agree to sell all or any portion of the Licensed IP,
other than as set out in Section 5.
3. OWNERSHIP
3.1 Licensee acknowledges and agrees that, as between the parties to this
License Agreement and subject to the rights and licenses granted herein,
Licensor is, and at all times shall remain, the sole and exclusive owner of
all right, title and interest, throughout the world, in and to all Licensed
IP, and any copies of the Licensed IP, whether made on or behalf of
Licensor or Licensee.
4. PURCHASE PRICE
4.1 In consideration of the license granted to Licensee in above Section 2.1,
Licensee shall pay to Licensor the following purchase price (the "Purchase
Price"):
* $100 upon execution of this Agreement;
* $10,000 within three (3) months of the Effective Date;
* $40,000 within 6 months of the Effective Date;
* $249,900 within 12 months of the Effective Date; and
* 8,500,000 common shares in the capital stock of Licensee within
30 days of the Effective Date.
Any cash component of the Purchase Price in arrears shall bear interest at
a variable rate equal to the prime rate publicly announcend by the Bank of
America from time to time as its prime rate plus one (1) percent. Interest
shall commence accruing on the date that the relevant portion of the
Purchase Price becomes in arrears and shall be computed on the basis of a
365 day year and to the actual number of days elapsed.
4.2 As additional consideration, Licensee shall pay to Licensor a royalty equal
to 2.5 percent of the Gross Sales derived from the exploitation of the
Licensed IP (the "ROYALTY").
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4.3 The Royalty shall be payable within thirty (30) days following the end of
the then-current calendar quarter. All payments to be made hereunder shall
be made in United States dollars. Payments originating in any other
currency shall be converted to United States dollars using the rate of
exchange as published by Bank of America on the date such payment is due.
4.4 The Royalty payable hereunder shall cease to accrue and terminate on a
going forward basis in the event that Licensor enters into any any
agreement, indenture, instrument or arrangement that results, directly
or indirectly, in a change of Control of Licensor. "Control" means,
with respect to Licensor, direct or indirect, beneficial ownership of
more than 50% of the voting securities of Licensor, including any
securities which are voting only upon the occurrence of a contingency
where such contingency has occurred and is continuing;
5. RIGHT OF FIRST PURCHASE
5.1 The Licensor shall give the Licensee a first right of purchase for the
Verify Patent, for so long as this License Agreement is in effect.
5.2 Licensor shall notify Licensee prior to any sale by Licensor of the Verify
Patent to any third party (an "ROFP Event").
5.3 The right of first purchase may be exercised by the Licensee within 30 days
following notice of a ROFP Event by notifying the Licensor in writing.
6. TERMINATION AND EXTENSION
6.1 Except as otherwise provided, this License Agreement shall terminate
automatically at the end of the term specified in Section 1.
7. INDEMNIFICATION, REMEDIES, SURVIVAL
7.1 For the purposes of this Section 7 the terms "LOSS" and "LOSSES" mean any
and all demands, claims, actions or causes of action, assessments, losses,
damages, liabilities, costs, and expenses, including without limitation,
interest, penalties, fines and reasonable attorneys, accountants and other
professional fees and expenses, but excluding any indirect, consequential
or punitive damages suffered by Licensor or Licensee including damages for
lost profits or lost business opportunities.
7.2 Agreement of Licensor to Indemnify
(a) Licensor will indemnify, defend, and hold harmless, to the full extent
of the law, for a period of three years from the termination of the
License Agreement, the Licensee and its shareholders from, against,
and in respect of any and all Losses asserted against, relating to,
imposed upon, or incurred by the Licensee and its shareholders by
reason of, resulting from, based upon or arising out of:
(i) the breach by Licensor of any representation or warranty of
Licensor contained in or made pursuant to this License Agreement,
any Licensor document or any certificate or other instrument
delivered pursuant to this License Agreement; or
(ii) the breach or partial breach by Licensor of any covenant or
agreement of Licensor made in or pursuant to this License
Agreement, any Licensor document or any certificate or other
instrument delivered pursuant to this License Agreement.
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7.3 Agreement of Licensee to Indemnify
(a) Licensee will indemnify, defend, and hold harmless, to the full extent
of the law, for a period of three years from the termination of this
License Agreement, the Licensor from, against, for, and in respect of
any and all Losses asserted against, relating to, imposed upon, or
incurred by Licensor by reason of, resulting from, based upon or
arising out of:
(i) the breach by Licensee of any representation or warranty of
Licensee contained in or made pursuant to this License Agreement,
any Licensee document or any certificate or other instrument
delivered pursuant to this License Agreement; or
(ii) the breach or partial breach by Licensee of any covenant or
agreement of Licensee made in or pursuant to this Agreement, any
Licensee document or any certificate or other instrument
delivered pursuant to this License Agreement.
8. REPRESENTATIONS AND WARRANTIES OF THE LICENSOR
8.1 The Licensor represents and warrants to the Licensee, with the intent that
the Licensee will rely thereon in entering into this License Agreement and
in concluding the transactions contemplated hereby, as follows:
(a) Licensor warrants that to the best of its knowledge the use of the
Licensed IP as intended through this License Agreement, does not
infringe upon the rights of third parties;
(b) Licensor warrants that to the best of its knowledge the Licensed IP is
valid, maintained and enforceable towards third parties worldwide,
other than France, Iran or Russia, and that the Licensed IP shall be
properly maintained during the term of this License Agreement.
(c) the execution and delivery of this License Agreement and the
completion of the transactions contemplated hereby have been duly and
validly authorized by all necessary limited liability company action
on the part of the Licensor, and this License Agreement constitutes a
valid and binding obligation of the Licensor enforceable against the
Licensor in accordance with its terms; except as enforcement may be
limited by bankruptcy, insolvency and other laws affecting the rights
of creditors generally and except that equitable remedies may be
granted only in the discretion of a court of competent jurisdiction;
(d) except as will be remedied by the consents, approvals, releases, and
discharges described in Schedule 2 - Consents attached hereto, neither
the execution and delivery of this License Agreement nor the
performance of the Licensor's obligations hereunder will:
(i) violate or constitute default under any order, decree, judgment,
statute, by-law, rule, regulation, or restriction applicable to
the Licensor, the IP, or any contract, agreement, instrument,
covenant, mortgage, or security, to which the Licensor is a party
or which are binding upon the Licensor,
(ii) to the knowledge of the Licensor, result in any fees, duties,
taxes, assessments, penalties or other amounts becoming due or
payable by the Licensee under any sales tax legislation. .
(iii)give rise to the creation or imposition of any encumbrance on
the IP,
(iv) violate or constitute default under any license, permit,
approval, consent or authorization held by the Licensor, or
(v) violate or trigger any liability on behalf of the Licensee
pursuant to any legislation governing the licensing of the IP by
the Licensor;
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(e) the Licensor owns and possesses and has good and marketable title to
the IP free and clear of all encumbrances of every kind and nature
whatsoever;
(f) no person other than the Licensee has any written or oral agreement or
option or any right or privilege (whether by law, pre-emptive or
contractual) capable of becoming an agreement or option for the
purchase or acquisition from the Licensor of any of the Licensed IP;
(g) There are no actions, suits, proceedings, investigations, complaints,
orders, directives, or notices of defect or noncompliance by or before
any court, governmental or domestic commission, department, board,
tribunal, or authority, or administrative, licensing, or regulatory
agency, body, or officer issued, pending, or to the best of the
Licensor's knowledge threatened against or affecting the Licensor or
in respect of the IP;
(h) there is no requirement applicable to the Licensor to make any filing
with, give any notice to or to obtain any license, permit,
certificate, registration, authorization, consent or approval of, any
governmental or regulatory authority as a condition to the lawful
consummation of the transactions contemplated by this Agreement,
except for the filings, notifications, licenses, permits,
certificates, registrations, consents and approvals described in
Schedule 2 - Consents, or that relate solely to the identity of the
Licensee or the nature of any business carried on by the Licensee
except for the notifications, consents and approvals described in
Schedule 2 - Consents;
9. REPRESENTATIONS OF THE LICENSEE
9.1 The Licensee represents and warrants to the Licensor as follows, with the
intent that the Licensor will rely thereon in entering into this License
Agreement and in concluding the transactions contemplated hereby, that:
(a) the Licensee is a corporation duly incorporated, validly existing, and
in good standing under the laws of the State of Nevada and has the
power, authority, and capacity to enter into this License Agreement
and to carry out its terms;
(b) the execution and delivery of this License Agreement and the
completion of the transactions contemplated hereby has been duly and
validly authorized by all necessary corporate action on the part of
the Licensee, and this Agreement constitutes a valid and binding
obligation of the Licensee enforceable against the Licensee in
accordance with its terms; except as enforcement may be limited by
bankruptcy, insolvency and other laws affecting the rights of
creditors generally and except that equitable remedies may be granted
only in the discretion of a court of competent jurisdiction;
(c) there is no requirement for the Licensee to make any filing with, give
any notice to or obtain any license, permit, certificate,
registration, authorization, consent or approval of, any government or
regulatory authority as a condition to the lawful consummation of the
transactions contemplated by this License Agreement;
(d) neither the execution and delivery of this License Agreement nor the
performance of the Licensee's obligations hereunder will violate or
constitute a default under the constating documents, by-laws, or
articles of the Licensee, any order, decree, judgment, statute,
by-law, rule, regulation, or restriction applicable to the Licensee,
or any contract, agreement, instrument, covenant, mortgage or security
to which the Licensee is a party or which are binding upon the
Licensee;
10. NON MERGER
10.1 The representations, warranties, covenants, and agreements of the Licensor
contained herein and those contained in the documents and instruments
delivered pursuant hereto or in connection herewith will survive the
Closing Date and the term of this License Agreement, and notwithstanding
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the completion of the transactions contemplated hereby, the waiver of any
condition contained herein (unless such waiver expressly releases the
Licensor of such representation, warranty, covenant, or agreement), or any
investigation by the Licensee, same will remain in full force and effect.
10.2 The representations, warranties, covenants, and agreements of the Licensee
contained herein and those contained in the documents and instruments
delivered pursuant hereto or in connection herewith will survive the
Closing Date and the term of this License Agreement, and notwithstanding
the completion of the transactions contemplated hereby, the waiver of any
condition contained herein (unless such waiver expressly releases the
Licensee of such representation, warranty, covenant, or agreement), or any
investigation by the Licensor, same will remain in full force and effect.
11. FURTHER ASSURANCES
11.1 From time to time subsequent to the Closing Date, the parties covenant and
agree, at the expense of the requesting party, to promptly execute and
deliver all such further documents and instruments and do all such further
acts and things as may be required to carry out the full intent and meaning
of this Agreement and to effect the transactions contemplated hereby.
12. ASSIGNMENT
12.1 This Agreement may not be assigned by any party hereto without the prior
written consent of the other parties hereto.
13. SUCCESSORS AND ASSIGNS
13.1 This Agreement will enure to the benefit of and be binding upon the parties
hereto and their respective successors and permitted assigns.
14. COUNTERPARTS
14.1 This Agreement may be executed in several counterparts, each of which will
be deemed to be an original and all of which will together constitute one
and the same instrument.
15. NOTICES
15.1 Any notice required or permitted to be given under this Agreement will be
in writing and may be given by personal service or by prepaid registered
mail, and addressed to the proper party or transmitted by electronic
facsimile generating proof of receipt of transmission at the address of the
applicable party first stated above.
16. TENDER AND EXTENSIONS
16.1 Tender may be made upon the Licensor or Licensee or upon the solicitors for
the Licensor or Licensee and such solicitors are expressly authorized by
their respective clients to confirm extensions of the Closing Date.
17. REFERENCE DATE
17.1 This Agreement is dated for reference as of the date first above written,
but will become binding as of the date of execution and delivery by all
parties hereto and subject to compliance with the terms and conditions
hereof, the transfer and possession of the Business Assets will be deemed
to take effect as at the close of business on the Closing Date. References
herein to the date of the Agreement or to the date hereof shall be deemed
to mean the date set forth in the preamble to this Agreement.
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IN WITNESS WHEREOF the parties have executed and delivered these presents on the
dates indicated below.
VERIFY SMART CORP.
Per: /s/Tony Cinotti
--------------------------------
Authorized Signatory
Dated: September 19, 2012
ASSURED MOBILE TECHNOLOGIES LLC.
Per: /s/Murray Polischuk
--------------------------------
Authorized Signatory
Dated: September 19, 2012
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LIST OF SCHEDULES
Schedule Description
1 Description of Patent
International
Application Number PCT/CA2007/001639
South African
Patent
Application No. 2009/2149
U.S. Patent
Application No. 11/537,461 filed September 29, 2006
International
Filing Date: 14.09.2007
Publication Date: 03.04.2008
Inventors: Goodin, Stewart
Title: (EN) A SYSTEM AND METHOD FOR VERIFYING A USER'S IDENTITY IN
ELECTRONIC TRANSASCTIONS
Abstract: The invention described herein is a method and system for
verifying the identity of a user by a verifier in the
course of an electronic transaction. The invention provides
a process and a system for blocking an account until a
verifier completes an identity verification process for
verifying the identity of the person initiating the
transaction. The process comprises pre-enrolling the person
and the person's personal communication device. Optionally,
one or more accounts are enrolled by flagging the accounts
such that transactions are subject to user identity
verification. At the time a transaction is initiated, a
verifier sends an identification verification request (IVR)
to the portable communication device of the person
initiating the electronic transaction. The person then
verifies his/her identity by supplying a secure identifier
in response to the IVR. Optionally, the person is asked to
authorize the transaction before the transaction is
accepted.
