TECHNOLOGY TRANSFER AND RESEARCH AGREEMENT
Exhibit
10.10
between
Ecole
Polytechnique Xxxxxxxx xx Xxxxxxxx
XX -0000
Xxxxxxxx, Xxxxxxxxxxx
represented
by Prof. Xxxx-Xxxxx Scartezzini,
Head of
the Solar Energy and Building Physics Laboratory (LESO-PB)
hereinafter
referred to as "EPFL",
and
Swiss-Indo
Trade & Invest S.A
represented
by Xx Xxxxxx Gruering and Xx Xxxx Xxxxxxxx
Route de
Fribourg 00, XX - 0000 Xxxxx, Xxxxxxxxxxx
hereinafter
referred to as "COMPANY",
(hereinafter
individually referred to as "Party" or collectively as "Parties")
Preamble
EPFL/LESO-PB
has developed novel technologies for solar glazing applied to solar thermal
collectors and wishes that this technology is transferred to industry to benefit
the public.
Swiss-Judo
Trade & Invest S.A. is a private Swiss company founded in 2004, based in
Marly, Switzerland,
with a subsidiary in New Delhi, India. Swiss-Indo's primary focus is the
manufacture
and trade of advanced green technologies applied to environmentally neutral
industrial
applications characterized by strong economic growth. Target sectors are
renewable energies
and natural resources conservation and improvement. Swiss-Indo is interested in
having
the solar glazing technology developed at EPFL/LESO-PB transferred in order to
further
develop it and bring it to the
market.
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1. Statement
of Work
1.1 EPFL
hereby undertakes to make its best efforts to accomplish the transfer of
knowledge related to the technology of color glazing by magnetron sputtering for
solar thermal collectors stemming from the Solar Energy and Building Physics
Laboratory (LESO-PB) (hereafter "Technology") and to perform the research work
described in Enclosure 1 (hereinafter referred to as "the Project"), which shall
be an integral part of this Agreement. The Project shall be carried out by the
Solar Energy and Building Physics Laboratory, under the supervision of Xx
Xxxxxxx Xxxxxxx.
1.2 COMPANY
hereby undertakes to make its best efforts to collaborate with EPFL during the
Project and to bring its competencies for the benefit of the Project and to
furnish EPFL with documentation, information and data necessary to accomplish
the Project according to Enclosure 1. Whenever it is deemed necessary during the
Project, the Parties may mutually agree upon regular or separate meetings to be
held at the place of business of one of the Parties hereto.
1.3 Any
modifications to the scope of the Project, to the budget, any priorities and
scientific options to be decided in the course of the Project shall be subject
to prior mutual written agreement.
2. Term
of Agreement
This
Agreement shall become effective on January 1st,
2009 and remain effective for the duration of the Project, i.e. until December
31st,
2012. It may be extended subject to prior written agreement by both
Parties.
3. Payments
3.1 The
financial contribution of COMPANY to EPFL for the Project is agreed to be equal
to CHF 920'000 excluding VAT.
3.2 The
payment schedule shall be the following according to the budget
planning:
- CHF
300'000 on March 15th
2009
- CHF
300'000 on January 15th,
2010
- CHF
160'000 on January 15th,
2011
- CHF
160'000 on December 15th,
2012.
EPFL
shall send invoices to COMPANY according to this schedule and the payments shall
be done by COMPANY to EPFL within 30 days of receipt of the
invoices.
4.
Results and Intellectual Property
4.1 EPFL
shall transfer to COMPANY the scientific and technical knowledge with respect to
the Technology (hereafter "Background Knowledge") in order for COMPANY to
further develop and commercially exploit the Technology. EPFL shall not enter
into other such transfer agreements on the Technology in the Field of Use
(as defined in article 4.5 hereinafter) for the duration of the Project. The
Background Knowledge is summarized in Enclosure 1 to this Agreement. In
case COMPANY does not fulfill its obligations according to article 3 herewith,
EPFL shall have no more obligations according to this article 4
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7
4.2 Furthermore, all results,
patentable or not, copyrightable or not, obtained in the execution of the
Project by EPFL (hereinafter referred to as "EPFL Results") shall be
communicated to COMPANY in form of common meetings, reports or publication
drafts. Subject to the provisions of articles 4.3 to 4.11 of this Agreement,
EPFL and COMPANY shall be free to use such results.
4.3 COMPANY
shall notify EPFL in writing of its interest for legal protection of EPFL
Results, in which case COMPANY shall have the right to file a patent application in its
own name and at its own expenses. This notification shall reach EPFL within
three (3) months from the date the concerned results were first disclosed to
COMPANY, subject to the one month period set forth in Article 6.2 in case that
EPFL submit a draft of scientific publication.
4.4 Title to
an invention conceived or first reduced to practice by EPFL in the performance
of the Project shall be transferred from EPFL to COMPANY upon COMPANY filing a
patent application on such invention, provided that such filing occurs within
three (3) months from the date COMPANY notified EPFL of its interest according
to 4.2. COMPANY shall bear all costs related to the patent prosecution and shall
inform EPFL of all rhajor steps in such prosecution and of any decision to
abandon the patent; COMPANY shall provide EPFL with a copy of any patent
application(s) and of any issued patent(s).
During
the deadlines pursuant to Articles 4.3 and 4.4, each Party agrees to treat the
EPFL Results concerned as confidential.
4.5 In the event
that COMPANY files a patent application pursuant to 4.4, COMPANY shall
have under any such patent application and patent issued thereon (hereinafter
referred to as "a
Patent") exclusive exploitation rights for applications, which are within the
following field of
use:
Coatings by
magnetron sputtering for colored glazing of solar thermal
collectors
(referred to
in this Agreement as "the Field of Use").
COMPANY
hereby grants EPFL an exclusive, royalty-free and irrevocable license under any
Patent with the right to grant sublicenses for applications that are outside
tile Field of Use.
EPFL may
use any Patent for education and research purposes in any field;
4.6 COMPANY
shall demonstrate reasonable efforts to develop and commercialize the technology
covered by a Patent in the Field of Use.
4.7 In the
event that COMPANY fails to file a Patent according to 4.4, title to the
invention concerned shall remain with EPFL and EPFL shall be free to patent or
not such invention.
If
COMPANY files a Patent, but renounces to seek protection in the following
countries/region : USA, Japan, China and Europe, then COMPANY shall timely
inform EPFL and give the latter the opportunity to file in its own name and at
its, own costs a patent application in the abovementioned countries/region that
are not covered by COMPANY Patent.
Should
COMPANY decide to abandon a Patent in any countries, COMPANY shall offer to EPFL
the assignment of such Patent free of charge. COMPANY shall inform EPFL of such
decision at least four (4)
months before the deadline for the performance of the formalities necessary for the
maintain of the Patent.
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7
4.8 In the
event that EPFL is the owner of a patent application or patent under EPFL
Results according fo 4.7, EPFL hereby grants COMPANY a royalty-free,
non-exclusive and irrevocable license for the use of any such patent application
or patent in the Field of Use without the right to grant sub-licenses except to
Affiliates of COMPANY. For the purposes of this Agreement, theterm affiliate
(hereinafter referred to as "Affiliate") shall mean any legal entity which is
controlled by, has control over or is under common control with COMPANY whereby
"control" shall mean the holding of more than fifty (50) percent of the capital
stock or participating shares entitled to vote for the election of
directors.
4.9 For
computer software developed in the Project by EPFL, EPFL hereby grants COMPANY a
royalty-free non-exclusive license to copy, modify, adapt, translate,
distribute, sale, display and run such computer software, provided that COMPANY
shall not pass the source code of such software outside of COMPANY and
Affiliates without EPFL's prior written approval.
4.10 Any
intellectual property solely developed by COMPANY during the course of the
Project shall be COMPANY'S
property.
4.11 Subject
to article 4.1, it is hereby agreed that neither right of use nor license of any
kind is hereunder granted to COMPANY on EPFL's intellectual property obtained
before, after and/or outside of the Project.
5. Confidentiality
5.1 Each
Party (Recipient) agree to keep confidential and not to use for another purpose
than the performance of this Agreement all information belonging to the other
Party (the Disclosing Party) with which it may come in contact during the course
of the Project, provided that such information have been clearly labeled as
confidential by the Disclosing Party or, if disclosed orally, have been
confirmed in writing as being confidential within ten (10) days from their
disclosure. Each Party shall be responsible for the compliance by its personnel
with these confidentiality obligations.
5.2 The
obligations under article 5.1 shall not apply to any information that:
were in
the public domain or open to the public at the time they were transmitted to
Recipient, or became
public or open to the public for reasons other than an action or omission
attributable to Recipient, or were in
Recipient's possession, without any limitation regarding their disclosure at the
time they were transmitted to Recipient, provided that such prior possession is
supported by a written evidence, or were
obtained in good faith by Recipient and without any commitment relating to
confidentiality from a third party entitled to disclose them.
5.3 The obligations under
this article 5 shall remain effective for five (5) years after termination
of this Agreement or for a period defined by the Disclosing Party at tine time
of communication
of such confidential information to Recipient.
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7
6. Scientific
publications
6.1 COMPANY
recognizes that EPFL is entitled to publish its scientific results obtained in
the performance of the Project.
6.2 Prior to
the publication of such results, EPFL shall submit a draft of the information to
be disseminated to COMPANY for review. COMPANY shall then have one (1) month
to:
(a) notify
EPFL of any objection. If an objection is raised, discussion shall be held
without delay to determine acceptable modifications to resolve the issue and
allow dissemination within three (3) months; and/or
(b) request
the postponement, for no more than three (3) months, of the publication of EPFL
Results for which COMPANY wishes to file a patent application according to
Article 4.3.
Failure
to respond within the abovementioned one month period is considered as approval
of the publication by COMPANY.
6.3 In case of public
presentations in particular at scientific conferences; EPFL shall submit
to
COMPANY a written summary of the intended presentation and the provisions of
Article 6.2 shall
apply, whereby the time indicated under (a) shall be reduced to one (1)
month.
7. No
Warranties
7.1 EPFL
shall perform said Project by applying its best scientific knowledge and best
efforts.
7.2 EPFL
makes no warranties, either express or implied, including but not limited to
warranties of originality, accuracy, property, merchantability, fitness for a
particular purpose of the Background Knowledge and EPFL Results.
8. Liability
8.1 EPFL
shall be liable towards COMPANY only in the event of fraud or gross negligence
for any damages suffered in connection with this Agreement.
8.2 In the
event that COMPANY decides to use and commercially exploit the Background
Knowledge and/or EPFL Results, COMPANY shall bear the sole responsibility for
the implementation, use and commercial exploitation of the Background Knowledge
and/or EPFL Results and conception of products or services based thereon and
shall be liable towards third parties in connection with this implementation,
use and commercialization. COMPANY agrees to indemnify and defend EPFL against
any such claim from third parties brought against EPFL; to this end, COMPANY
agrees to maintain an adequate insurance covera
8.3 Neither
Party shall be entitled to commit the other Party to any obligation in
connection with this Agreement, without the prior written consent of the other
Party.
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7
9. Communication
Any
notice or communication to be given within the framework of this Agreement shall
be forwarded to the following contact persons:
For
COMPANY:
-
SWISS-INDO SA
Dr Yves
Ducprnmun
Xxxxxx xx
Xxxx 0
0000
Xxxxxxxx
e-mail:
xxxx.xxxxxxxx@xxxxx-xxxx.xx
Telephone:000
000 00 00
For
the EPFL:
-
Ecole
Polytechnique Federate de Lausanne
Laboratoire
d'Energie Solaire
Xx
Xxxxxxx Xxxxxxxx
Xxxxxxx
00
XX- 0000
Xxxxxxxx, Xxxxxxxxxxx
e-mail:
xxxxxxx.xxxxxxxx@xxxx.xx
Telephone:
000 000 00 00
Communications
pursuant to Article 4 (Results and Intellectual Property) shall also be sent
to:
Ecole
Polytechnique Federate de Lausanne
Industrial
Relations Office (SRI)
Xxxxx
Xxxxxx
CM -
Xxxxxxx 00
XX-0000
Xxxxxxxx, Xxxxxxxxxxx
e-mail:
xxxxx.xxxxxx@xxxx.xx
Telephone:
000 000 00 00
10. Assignment
Should
COMPANY assign its rights to EPFL Results and/or to a Patent, then COMPANY shall
impose all the obligations deriving from this Agreement on the
assignee.
11. Survival
The
provisions of articles 4, 7, 8, 10 and 12 shall survive any expiration or
termination of this Agreement.
12. Applicable
Law and place of jurisdiction
12.1 This
Agreement shall be governed by the laws of Switzerland.
12.2 The
exclusive place of jurisdiction shall be Lausanne.
This
Agreement is executed in two originals and duly signed by the authorized
representatives of the
Parties hereto, as printed below:
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|
Ecole
Polytechnique Federale de
Lausanne,
EPFL
|
COMPANY |
 |
 |
Enclosure 1:
Description (with milestones) of the Project (description of the Technology,
transfer of knowledge and research project), budget
Page
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