Royalty Report: Energy & Environment, Energy Resources & Svcs, Alternative and Renewable Energy – Collection: 28329

License Grant

University hereby grant to LICENSEE a worldwide exclusive right and license under the Patent Rights, to make, have made, use, lease and/or sell the Licensed Product(s) under the Patent Rights and Copyrights rights, and to practice the Licensed Process(es) to the full end of the term for which the Patent Rights and copyright Rights are granted unless sooner terminated as hereinafter provided.

License Property

The University have filed a number of patent applications relating to electron acceptor compositions, and charged generators in heterolamellar multilayer thin films and anticipate filing additional patents on inventions made during the course of the Sponsored Research project technologies (the -Technology') which inventions arose out of research.

INTELLECTUAL PROPERTY RIGHTS

Title Electron Acceptor Compositions Technical Field
Patent Number 5,500,297
Issued Date March 19, 1998

Title Heterolamellar Photoelectrochemical Films and Devices
Patent Number 5,695,890
Issued Date December 9, 1997

Title Catalytic Production of Hydrogen Peroxide
Patent Number 5,480,829
Issued Date January 2, 1998

Title Electron Acceptor Compositions on Polymer Templates
Filing Date August 21, 1995

Title Method for Catalytic Production of Hydrogen Peroxide and Catalysts Therefore

Title Charge Generators in Heterolamellar Thin Films
Filing Date July 11, 1997 (provisional)

License Grant

The Licensor owns and is proprietor of certain intellectual property and under the agreement they granted the Licensee a secure an exclusive, field of use, limited license to make, use and sell the intellectual property.

License Property

Technology to be Licensed to the Licensee is as follows  1. Provisional Patent application # 60/616,655 and any subsequent patents including continuations-in-part, titled Hydrogen Storage Apparatus, filing date October 7, 2004.  2. Continuation-in-part of Provisional Patent application # 60/559,555 known also as XW-676 and now referred to as XW-820 and titled Hydrogen Storage Apparatus Comprised of Halloysite with filing date of April 4, 2005.  3. PCT known as XW-823 titled Hydrogen storage apparatus with filing date of April 5, 2005.  4.  Patent application known as MLW-776 with deposit date of January 25, 2005 titled Halloysite Microtubule Processes, Structures, and Compositions.  In return for the technology the licensor will receive royalties.  The Licensee is an advanced materials company engaged in extracting, refining and commercializing naturally occurring nanomaterials that add competitive properties to a wide range of applications.

Field of Use

Field of Use means non-medical uses of halloysite microtubule processes, structures, compositions and applications; for example, hydrogen storage using halloysite.

License Grant

Licensor grants to Licensee during the License Term the exclusive right and license in the Field of Use throughout the Territory under the Licensed Technology to manufacture, have manufactured, use, market, have marketed, sell, have sold, import, and have imported Licensed Product.

The rights in Licensed Technology granted by Licensor to Licensee include the right to grant sublicenses as Licensee deems prudent.

Licensor hereby assigns to Licensee any and all of Licensor’s right, title, and interest in and to the mark SUNCONE (the 'Trademark').

License Property

The Licensed Technology to applies it to distributed energy systems, electric power plants, saline water desalination systems, and other applications.

Licensor has invented certain technology which may be able to economically collect solar energy using a novel method of non-imaging optics. Among other uses, this technology may be able to be used to produce steam to drive a generator to produce electrical power or to produce desalinated water from seawater or brackish water.

'Licensed Commodity Product' shall mean generated electrical power or desalinated water or other pumped liquids that are generated or purified, as applicable, using any product or device which, or the manufacture, use or sale of which, is covered by a Valid Claim of the Patent Rights. For purposes of clarity, Licensed Commodity Products are a subset of Licensed Products.

'Licensed Product' means any product or device which, or the manufacture, use, or sale of which, is covered by a Valid Claim of the Patent Rights, including but not limited to Licensed Commodity Products. A solar collector that resembles the invention described in Article 1.2 but does not have a flexible film cone reflector does not fit this definition of 'Licensed Product.' If a cable tracking system defined in the patent application of Article 1.2 is used to point an array of solar collectors, then the cable tracking system part of the system may be a 'Licensed Product' if it is covered by a Valid Claim of the Patent Rights.

These applications are (a) Provisional U.S. Patent Application Serial No. 60/648,865, filed February 1, 2005, and (b) nonprovisional patent applications in the U.S. and abroad claiming priority to that provisional patent application, namely, (b.i) Nonprovisional U.S. Patent Application Serial No. 11/341,628, titled 'Concentrating Solar Power' and filed at the U.S. Patent and Trademark Office (USPTO) on January 27, 2006, (b.ii) International Patent Application No. PCT/US06/03071, titled 'Concentrating Solar Power' and filed at the USPTO’s Receiving Office pursuant to the Patent Cooperation Treaty (PCT) on January 27, 2006, and (b.iii) Gulf Cooperation Council (GCC) Patent Application No. GCC/P/2006/5739, titled 'Concentrating Solar Power' and filed at the GCC Patent Office in the Middle East on January 31, 2006. These applications (a), (b.i), (b.ii), and (b.iii) are hereinafter referred to as the 'Patent Applications'.

Field of Use

'Field of Use' means the collecting of solar energy to generate electricity, desalinate water, and all other industrial applications.

License Grant

University grants to Licensee an exclusive license under the Rice Intellectual Property to make, have made, use, import, offer for sale, sell, lease, or otherwise transfer University's Licensed Products in the Field of Use in the Territory, with the right to sub-license, during the Term of this Agreement.

The Licensee has obtained the exclusive rights to License and subLicense to develop, manufacture, market and exploit the Licensor's inventions, patent applications and any issued patents in the case of the Licensee, for the manufacture and sale of photovoltaic cells and photovoltaic applications and in the case of Licensee for the manufacture and sale of quantum dots for electronic and medical applications (excluding photovoltaic applications).

License Property

The University is the owner of certain inventions and patent applications, know-how and rights pertaining to the synthesis of uniform nanoparticle shapes with high selectivity.

Nanoparticle are materials with features in the nanoscale, which features can be beneficial in a number of applications. Quantum dots are atomic crystals, tiny nanoparticles which can operate as up converters or down converters, emitting either photons or electrons when excited. The color of light emitted varies depending on the size of the quantum dot so that photonic emissions can be tuned by the creation of quantum dots of different sizes. Their unique properties as highly efficient, next generation semiconductors have led to the use of quantum dots in a range of electronic and other applications, including in the biomedical, display and lighting industries. Quantum dots also have applications in solar cells, where their characteristics enable conversion of light energy into electricity, with the potential for significantly higher efficiencies and lower costs than existing technologies, thereby creating the opportunity for a step change in the solar energy industry through the use of quantum dots in printed photovoltaic cells.

With respect to the Licensor's patent applications, the Licensor made a provisional filing for an invention disclosure titled “synthesis of uniform nanoparticle shapes with high selectivity” with the United States Patent and Trademark Office on April 13, 2007 and a subsequent utility filing on April 11, 2008 under the Patent Cooperation Treaty.

PCT enables the U.S. applicant to file one application, 'an international application,' in a standardized format in English in the U.S. Receiving Office (the U.S. Patent and Trademark Office), and have that application acknowledged as a regular national or regional filing in any State or region that is party to the PCT. Dr. Michael Wong is a director of the Licensee Parent and is the inventor of the Licensor’s patent application Licensed by the Licensee.

Patents
Rice
Tech ID
Invention
Disclosure
Received
Invention Disclosure Title Patent Title Filing Date Serial Number Patent Type Country Inventors Pa
27014 8/31/06 Synthesis of Uniform Nanoparticle Shapes
with High Selectivity
Synthesis of Uniform Nanoparticle Shapes
with High Selectivity
4/13/07 60/911,721 Provisional U.S. Michael Wong,
Subashini Asokan
Synthesis of Uniform Nanoparticle Shapes with high Selectivity 4/11/08 PCT/US2008/060129 PCT PCT Michael Wong, Subashini Asokan On an “as is” basis as of the Effective Dae

Field of Use

“Field of Use” means the manufacture and sale of photovoltaic cells and the manufacture and sales of quantum dots for electronic and medical applications.

The Licensee is a start-up solar technology and quantum dot manufacturing firm with the opportunity to acquire a significant amount of both quantum dot and solar photovoltaic market share by commercializing a low cost quantum dot processing technology and a low cost quantum dot based third generation photovoltaic technology/solar cell, pursuant to an exclusive license agreement the University Licensor.

Our objective is to become the first bulk manufacture of high quality tetrapod quantum dots and the first solar cell manufacturer to be able to offer a solar electricity solution that competes on a non-subsidized basis with the price of retail electricity in key markets in North America, Europe, the Middle East and Asia.

License Grant

The Canadian Licensor hereby grants to the Licensee of Isle of Man the Exclusive Right to the Technology for the Licensed Use in the Territory and the right to improve, modify and develop the Technology for the Licensed Use in the Territory.

License Property

The Licensor has developed inventions, know-how, trade-secrets relating to the use of an optical rectenna for converting solar energy into electrical energy.

'Licensee’s Products' means any product or service made, used, sold, offered for sale, or otherwise distributed by the Licensee that includes the Technology.

'Patent Rights' means issued patents and pending patent applications in any country in respect of an invention owned by the Licensor relating to the Technology, including provisionals, continuations-in-part, continuations, divisionals, re-issues and extensions of those issued patents and pending patent applications, including inventions described in the specifications of United States Patent Application Numbers 60/911,847, 60/911,815, 60/911,823 and 60/911837 filed on April 13, 2007.

Field of Use

'Licensed Use' means the right to use and commercially exploit the Technology for the Licensee’s Products for use with solar panels.

License Grant

The license is exclusive and worldwide for the defined field of use of collecting solar energy to generate electricity, desalinate water and for all other industrial applications.

The Parties entered into an amended and restated technology license agreement with the licensor, pursuant to which we have agreed to license from the licensor certain patent rights and technology which we refer to as Sunconeâ„¢ CSP (Concentrated Solar Power).

License Property

Sunconeâ„¢  CSP relates to the collection of solar energy using a novel method of non-imaging optics, a process which provides an economical method of collecting thermal power for the production of electricity.

These applications are (a) Provisional U.S. Patent Application Serial No. 60/648,865, filed February 1, 2005, and (b) nonprovisional patent applications in the U.S. and abroad claiming priority to that provisional patent application, namely, (b.i) Nonprovisional U.S. Patent Application Serial No. 11/341,628, titled “Concentrating Solar Power” and filed at the U.S. Patent and Trademark Office (USPTO) on January 27, 2006, (b.ii) International Patent Application No. PCT/US06/03071, titled “Concentrating Solar Power” and filed at the USPTO’s Receiving Office pursuant to the Patent Cooperation Treaty (PCT) on January 27, 2006, and (b.iii) Gulf Cooperation Council (GCC) Patent Application No. GCC/P/2006/5739, titled “Concentrating Solar Power” and filed at the GCC Patent Office in the Middle East on January 31, 2006. These applications (a), (b.i), (b.ii), and (b.iii) are hereinafter referred to as the “Patent Applications”.

License Grant

License Grant – Patent Rights.
License Grant Onshore Subfield –  University grants to the Company upon receipt of the License Issue Fee and the Company accepts, an exclusive, license to University’s interest in valuable intangible property rights in Patent Rights to make, have made, import, have imported, use, market, sell, and distribute Licensed Product, and practice Licensed Method within the OnShore SubField and in the Territory.

License Grant Offshore Subfield – University also grants to the Company upon receipt of the License Issue Fee and the Company accepts, a non-exclusive, license to University’s interest in valuable intangible property rights in Patent Rights to make, have made, import, have imported, use, market, sell, and distribute Licensed Product, and practice Licensed Method within the OffShore SubField and in the Territory.

License Grant – Technical Information.
University grants to the Company upon receipt of Prior Patent Costs and the License Issue Fee and the Company accepts, a nonexclusive license to Technical Information to make, have made, import, have imported, use, market, sell, and distribute Licensed Product, and practice Licensed Method within the Field of Use and in the Territory consistent with the purpose of this Agreement subject to the confidentiality provisions of Article 9.  These rights are specifically subject to Paragraphs 2.4 and 2.5 as well as the general terms and conditions set forth herein.

Sublicensing Grant – SubLicensing in OnShore SubField. University grants to the Company as long as the Company possesses an exclusive right to University’s interest in Patent Rights of this Agreement, and the Company accepts, the right to issue to third parties sublicenses with respect to Licensed Product and Licensed Method within the scope of the grant of rights provided by University to the Company only but only the Technical Information applies to the OnShore SubField.  Any and all sublicense agreements within the Field of Use granted by the Company shall include all of the rights and obligations contained in this Agreement due University, and, if applicable, due the United States Government.

License Property

Work at the University has led to the creation of Technical Information and inventions claimed in Patent Rights.

This grant does not relinquish University ownership of Patent Rights and does not grant, by implication or otherwise, any other rights to the Company for any other technologies owned, invented, or discovered by University, whether past, present, or future.

Patent Rights shall mean U.S. patents and patent applications, and their foreign counterparts if any, assigned to University by University Inventors, including any reissues, continuations, divisionals, and extensions, but excluding new matter claimed in continuation-in-part applications, based on the subject matter claimed in or covered by the following  International Application, serial number PCT/US09/67005, entitled, Vertical Axis Wind Turbine filed on December 7, 2009.

SubLicensing in the OffShore SubField.  No rights to sublicense under the grant are given by University to the Company.

Field of Use

Field of Use shall mean the field of electricity generation by wind turbines consisting of the following subfields of use in their entirety onshore applications (OnShore SubField); and
offshore applications (OffShore SubField) .