Exhibit 10.32
MASTER TECHNICAL DEVELOPMENT AGREEMENT
This MASTER TECHNICAL DEVELOPMENT AGREEMENT ("Development Agreement") is
entered into as of June 12, 2001 ("Execution Date") by QUANTUM TECHNOLOGIES
WORLDWIDE, INC., a Delaware corporation ("Quantum") and GENERAL MOTORS
CORPORATION, a Delaware corporation ("GM"), each a Party and collectively the
Parties. This Development Agreement shall have an Effective Date of January 1,
2001.
Recitals
A. Quantum designs, develops and manufactures advanced gaseous storage and
handling modules, electronic controls and software, and systems integration
involving compressed gaseous fuels.
B. GM designs and develops Fuel Cell Systems (defined below).
C. The Parties seek to cooperate with each other under this Development
Agreement to facilitate the integration, interface, and optimization of the GM
Fuel Cell Systems coupled with the Quantum gaseous fuel storage and handling
modules.
Agreement
1 Definitions.
1.1 "Affiliate" of a Party means any person or entity which, through one
or more intermediaries, controls, is controlled by or is under common control
with such Party. "Control" shall be presumed if a person or entity holds the
power, by equity ownership or otherwise, to elect at least fifty percent (50%)
of the directors of the other person or entity or otherwise to direct the
policies and business activities of the other person or entity.
1.2 "Corporate Alliance Agreement" means that certain Corporate Alliance
Agreement executed between the Parties on June 12, 2001.
1.3 "Fuel Cell System" means a cell or cells, and/or its/their related
customary support equipments (i.e., alone or in combination with cell(s)), for
the electrochemical generation of electricity from hydrogen and oxygen (or
generation of hydrogen from electricity and water), including (1) fuel cells and
any other devices that generate electricity from hydrogen or hydrogen-rich fuel,
(2) electrolyzers and any other devices that generate hydrogen from water, and
(3) fuel processors and any other devices that produce hydrogen from hydrogen-
containing materials other than water.
1.4 "GM Interface Technology" means Interface Technology used specifically
to integrate the Quantum Products with the GM Products, created during the
performance of a GM Program.
1.5 "GM Modifications" means any and all Intellectual Property pertaining
to the Quantum Products developed solely by GM during the performance of a GM
Program.
1.6 "GM Product" means a Fuel Cell System, and such related products that
have been developed by or for GM using Intellectual Property owned or controlled
by GM, or under which GM has rights, prior to the commencement of the relevant
Project.
1.7 "GM Program" means a specific agreed cooperative activity under the
purposes contemplated in this Development Agreement, and described in a
Statement Of Work, the results of which are intended to facilitate the
integration, interface, and optimization of the Quantum Products/Quantum
Technology/GM Modifications for exclusive application to GM Fuel Cell Systems/GM
Products/GM Technology/Quantum Modifications.
1.8 "GM Program Technology" means any and all Intellectual Property in
each case created, conceived, discovered, developed and/or invented by or on
behalf of one or both of the Parties during the performance of a GM Program
(excluding GM Interface Technology). GM Program Technology, for purposes of this
Development Agreement, can be further divided into: GM Technology, GM
Modifications, Quantum Technology, and Quantum Modifications.
1.9 "GM Technology" means any and all Intellectual Property pertaining to
the GM Fuel Cell Systems developed solely by GM during the performance of a GM
Program.
1.10 "Generic Interface Technology" means Interface Technology that is
conceived or first reduced to practice in the course of the work performed
pursuant to this Development Agreement and is generally applicable, or common,
to many interface technologies, but not specific to any one such technology.
Hence, Generic Interface Technology would include general principles/concepts
relating to interfacing, but not include the specific GM configuration that is
GM Interface Technology, or specific Non-GM configurations that are Non-GM
Interface Technology.
1.11 "Intellectual Property" means patents, patent applications and
statutory invention registrations, trade secrets, know-how, inventions,
manufacturing and production processes and techniques, research and development
information, technologies, drawings, specifications, designs, plans, proposals,
technical data, and other technical information, copyrights, mask works and
designs, and all other intellectual and industrial property, including
registrations and applications for registration thereof.
1.12 "Interface Technology" means any and all Intellectual Property
relating to the processes, hardware and/or software which is/are used to
integrate the Quantum Products with Fuel Cell Systems and is generated or
developed in the performance of a Project.
1.13 "Non-GM Interface Technology" means Interface Technology, other than
GM Interface Technology, that is used specifically to integrate Quantum Products
with non-GM Fuel Cell Systems.
2.
1.14 "Non-GM Program" means a specific activity under the purposes
contemplated in this Development Agreement, the results of which are intended
for application to products manufactured by or for non-GM entities using Quantum
Products and non-GM Fuel Cell Systems.
1.15 "Non-GM Program Technology" means any and all Intellectual Property
in each case created, conceived, discovered, developed and/or invented by or on
behalf of one or both of the Parties during the performance of a Non-GM Program.
Non-GM Program Technology, for purposes of this Development Agreement, can be
further divided into the following: Non-GM Program Technology From GM; and Non-
GM Program Technology From Quantum.
1.16 "Non-GM Program Technology From GM" means any and all Intellectual
Property in each case created, conceived, discovered, developed, and/or invented
solely by GM in the performance of a Non-GM Program, solely as it relates to the
Quantum Products.
1.17 "Non-GM Program Technology From Quantum" means any and all
Intellectual Property in each case created, conceived, discovered, developed,
and/or invented solely by Quantum in the performance of a Non-GM Program, solely
as it relates to the GM Fuel Cell Systems.
1.18 "Project" means the specific Non-GM Programs and GM Programs, along
with the associated research and development.
1.19 "Quantum Modifications" means any and all Intellectual Property
pertaining to the GM Products developed solely by Quantum during the performance
of a GM Program.
1.20 "Quantum Product" means Quantum's gaseous storage and handling
equipment, controls and related software, and such related products that have
been generated or developed by or for Quantum using Intellectual Property owned
or controlled by Quantum, or under which Quantum has rights, prior to the
commencement of the relevant Project.
1.21 "Quantum Technology" means any and all Intellectual Property
pertaining to the Quantum Products developed solely by Quantum during the
performance of a GM Program, relating to Quantum's gaseous storage and handling
processes, equipment and/or software developed in support of GM Fuel Cell
Systems.
1.22 "Statement of Work" means a detailed plan to implement a GM Program,
as more fully defined in Section 3.1. A template Statement of Work shall be
attached hereto as Exhibit A.
1.23 "Technical Team" means the combination of assignees from each Party
that will create the Project Roadmap (as defined in Section 2 below) and manage
work under this Development Agreement as described herein.
3.
2 Technical Team. Within ten (10) business days of the Effective Date, each
Party shall assign one (1) member ("Member") to a joint technical steering team
to meet and cooperate to define and manage the efforts associated with this
Development Agreement ("Technical Team"). The Members shall include technical
representatives with sufficient authority and experience to make recommendations
with respect to the selection and implementation of the prospective Projects.
Either Party may replace its Members in its sole discretion upon notice to the
other Party. Each Party shall bear its own costs and expenses related to the
Technical Team. The purpose of the Technical Team is to determine the types of
Projects and timetables for each Project ("Project Roadmap"), to add Projects to
the Project Roadmap, to change existing Projects, including, but not limited to
schedule changes, and to cancel existing Projects ("Project Modification").
(a) The Technical Team shall determine the priority of different
Projects, and the amount of engineering resources to be allocated to each
Project.
(b) The Technical Team shall review all Jointly-Owned Technology (as
defined in section 5.3) proposed for patenting, and make recommendations to the
Commercial Team (see Corporate Alliance Agreement) as to the merits of seeking
patent protection on such inventions. The Commercial Team shall make the final
decision as to whether or not, and in what countries, to seek patent(s).
(c) At the first meeting of the Technical Team, to be held at a time
and location as mutually agreed, the Members shall discuss and approve the
initial Projects and the amount of engineering resources to be allocated to each
Project ("Initial Project Roadmap"). At least the first meeting of the Technical
Team shall be face-to-face. The Technical Team shall revise and publish the
Project Roadmap as deemed necessary.
(d) If the Technical Team cannot reach a decision on a particular
issue, senior managers of Quantum and GM will meet and negotiate in good faith
to resolve the issue within a reasonable period of time. If the issue is not
resolved within thirty (30) calendar days, the Project Roadmap will remain
unchanged. Notwithstanding the foregoing, neither Party shall be required to
implement a decision of the Technical Team if such decision may reasonably
result in legal liability for such Party.
3 Development
3.1 Development Agreement and Statement(s) of Work. The Parties
acknowledge that this agreement between Quantum and GM is a master agreement.
This Development Agreement defines the terms and conditions that will apply to
any Statement(s) of Work executed hereunder. The Parties understand that, from
time to time, good faith negotiations may take place to supplement this
Development Agreement with Statements of Work. Each Statement of Work will
require that Quantum integrate, interface, and optimize specified Quantum
Products/Quantum Technology/GM Modifications with GM Products/GM
Technology/Quantum Modifications. Each Statement of Work will define the
timetable, performance and delivery obligations of the Parties, and will be
executed by GM and Quantum. Subject to the terms and conditions
4.
of this Development Agreement, Quantum agrees to use commercially reasonable
efforts to perform in accordance with the specifications and schedule set forth
in each Statement of Work. Finally, the Parties agree that there is no limit on
the number of Statements of Work that may be executed during the term of this
Development Agreement; provided, however, that Quantum shall have no obligation
to fund work described in Statements of Work in excess of the aggregate amount
set forth in the Corporate Alliance Agreement. Notwithstanding the foregoing, in
the event that GM fails to execute any Statement of Work on or before the three
(3) year anniversary of the Effective Date, Quantum shall be entitled to
terminate this Development Agreement.
3.2 Reporting Development Progress. Each Party shall appoint a project
manager who will coordinate and act as liaison with the other Party with respect
to each Statement of Work. The project managers shall participate in project
review meetings to be scheduled by mutual agreement of the respective project
managers. GM personnel shall be entitled to visit Quantum's place of business
upon reasonable prior notice to Quantum to discuss and inspect the status of
progress under any Statement of Work. Quantum shall keep GM reasonably informed
of its progress under each Statement of Work.
3.3 Performance. In the event that Quantum is unable to complete a GM
Program identified under a Statement of Work within a reasonable amount of time
as determined by the Parties, and despite its commercially reasonable efforts,
the Technical Team may terminate the relevant GM Program (each a "Terminated
Project").
3.4 Subcontractors. Either Party may use subcontractors (e.g. Thiokol) to
perform any task assigned to such Party under a Statement of Work, provided that
such subcontractor (a) is approved in writing by the Technical Team to perform
such task, (b) agrees in writing to keep confidential all information and data
received from the Parties or generated under the subcontract, and (c) agrees in
writing to assign jointly to GM and Quantum (with rights as shall be negotiated
between the Parties and reduced to writing before such subcontractor commences
work) any and all inventions or improvements it, or its employees, make in
connection with the subcontract.
3.5 Plant Visits. Personnel of either Party visiting facilities of the
other Party will comply with all the then established and existing safety and
environmental rules and regulations of the facility visited. The host Party
shall not be responsible for death, damage, injury or loss suffered or incurred
during visits to its facilities by any personnel in the employ of the other
Party, except for death, damage, injury or loss resulting from the willful or
negligent act or omission of the host Party, its agents, employees or third
parties under the host Party's supervision or control.
4 License of Rights.
4.1 GM License to Quantum
(a) GM grants to Quantum and its Affiliates a non-exclusive,
worldwide license under Non-GM Program Technology From GM and GM Modifications
to make, have made, use, have used, sell, offer to sell, and import (i) gaseous
storage and handling
5.
equipment, controls, software and related products for use with any GM or third
party Fuel Cell System, and (ii) subject to future negotiations on a case-by-
case basis, such non-Fuel Cell System related applications as the Parties may
agree.
(b) GM grants to Quantum and its Affiliates a non-exclusive,
worldwide license under GM Technology, GM Interface Technology, and GM Program
Technology jointly owned by GM and Quantum to make, have made, use, have used,
sell, offer to sell and import gaseous storage and handling equipment, controls,
software and related products solely for use with GM Fuel Cell Systems.
(c) All rights in Intellectual Property and other proprietary rights
of GM not expressly granted to Quantum in Sections 4.1(a) and (b), or elsewhere
in this Development Agreement, are expressly reserved by GM.
4.2 Quantum License to GM.
(a) Quantum grants to GM and its Affiliates a paid-up, exclusive,
worldwide license under GM Interface Technology and GM Program Technology
jointly owned by GM and Quantum to make, have made, use, have used, sell, offer
to sell, and import products solely for use with GM Fuel Cell Systems, and
agrees not to use such technologies in connection with Non-GM Fuel Cell Systems.
(b) Quantum grants to GM and its Affiliates a paid-up, non-exclusive,
worldwide license under Quantum Technology, Quantum Modifications, and Non-GM
Program Technology From Quantum to make, have made, use, have used, sell, offer
to sell, and import products solely for use with GM Fuel Cell Systems.
(c) All rights in Intellectual Property and other proprietary rights
of Quantum not expressly granted to GM in Sections 4.2(a) and 4.2 (b), or
elsewhere in this Development Agreement, are expressly reserved by Quantum
4.3 Quantum License for Terminated Projects. In the event of a Terminated
Project (as defined above in Section 3.3), and in addition to the licenses
granted to GM under Section 4.2, Quantum shall xxxxx XX a limited, non-
exclusive, worldwide, non-transferable right to sublicense the use of Quantum
Products as identified in the relevant Statement of Work applicable to the
Terminated Project, solely as follows: (1) to a sublicensee approved by the
Technical Team, (2) for the sublicensee's internal use to continue development
of the Project; (3) for a length of time to be agreed upon by the Technical
Team; (4) subject to confidentiality provisions no less restrictive than those
specified in Section 9 of this Development Agreement, and (5) with a contract
provision that requires assignment of any inventions it, or its employees, make
to GM.
(a) Upon the expiration of the term of such a sublicense, unless
extended in a writing signed by Quantum, GM shall ensure that sublicensee packs
the Quantum Products as originally delivered, including any derivative works or
copies made, and ships them as directed by Quantum for receipt by Quantum no
more than thirty (30) calendar days after the expiration of the limited
sublicense (the "Return Period"). GM acknowledges that the Quantum Products
provided to such sublicensees may embody
6.
valuable Intellectual Property of Quantum, and as such, agrees to work with each
sublicensee under this Section 4.3 to ensure that the Quantum Products are
returned to Quantum within the Return Period, as evidenced by normal commercial
shipping documents. In addition, in the event that the Quantum Products received
are not, in Quantum's reasonable determination, returned in the same good
condition, less normal wear and tear, in which they were delivered to GM or its
sublicensee, GM shall pay to Quantum a reasonable amount as agreed by the
Technical Team.
(b) If any sublicensee breaches its obligations with respect to the
limited sublicense granted under Section 4.3, and/or its obligations with
respect to the treatment of the Quantum Products, and: (i) GM fails to use its
reasonable efforts to remedy the breach and prevent further breaches by the
sublicensee and: (ii) such failure materially jeopardizes Quantum's Intellectual
Property rights and interests in and to any Quantum Products, Quantum may, at
its election and in addition to any other remedies that it may have, obtain
injunctive relief and/or undertake enforcement directly against the breaching
third party.
4.4 Background License. Each Party grants to the other, and its
Affiliates, a paid-up, non-exclusive, non-transferable, license under such of
its Background Patents and Background Technology as is needed by the licensed
Party to use any of the technology that results from any activities contemplated
by this Development Agreement, where (i) "Background Patents" are understood to
mean all patents, domestic or foreign, that are owned or controlled by a Party,
that cover an invention directly related to the purpose of this Development
Agreement, and which were not conceived or first reduced to practice in the
course of the work performed pursuant to this Development Agreement, and (ii)
"Background Technology" is understood to mean technical information owned or
controlled by a Party and directly related to the purpose of this Development
Agreement and which was not conceived or first reduced to practice in the course
of the work performed pursuant to this Development Agreement. Quantum shall
secure from its parent company, IMPCO Technology, Inc., all intellectual
property rights necessary for Quantum to grant the background license called for
in this Section 4.4.
5 Ownership and Patent Prosecution
5.1 GM Ownership As between the Parties, all right, title and interest in
the GM Products, GM Technology, GM Modifications, Non-GM Program Technology From
GM, and any other Intellectual Property, designs, data, documentation,
technology, and/or know-how provided by GM to Quantum shall be owned exclusively
by GM (collectively the "GM-Owned Technology").
5.2 Quantum Ownership As between the Parties, all right, title and
interest in the Quantum Products, Quantum Technology, Quantum Modifications,
Non-GM Program Technology From Quantum, Non-GM Interface Technology, and any
other Intellectual Property designs, data, documentation, technology, and/or
know-how provided by Quantum to GM shall be owned exclusively by Quantum
(collectively the "Quantum-Owned Technology").
7.
5.3 Joint Ownership. As between the Parties, all right, title and interest
in the GM Interface Technology, Generic Interface Technology, Non-GM Program
Technology jointly created by the Parties, GM Program Technology jointly created
by the Parties and any other Intellectual Property, designs, data,
documentation, technology, and/or know-how jointly created or developed by the
Parties while performing a Project (or through sublicensees identified under
Section 4.3), shall be jointly owned by the Parties (collectively the "Jointly-
Owned Technology").
5.4 Patents. The Parties acknowledge that Quantum shall have the right and
responsibility to prosecute patents for the Jointly-Owned Technology, subject to
review by GM legal counsel. GM and Quantum will each pay fifty percent (50%) of
the reasonable costs incurred by Quantum to prosecute such patents as are
approved in writing by GM for filing, including filings and attorney fees.
Quantum agrees that its counsel will make diligent efforts to file patent
applications and obtain patents in all countries or territories of the world as
are approved by GM in a timely fashion.
(a) Quantum and GM will agree on the selection of patent counsel for
the handling of Jointly-Owned Technology. Quantum shall take such actions as are
necessary or appropriate to obtain patent protection with respect to any of the
Jointly Owned Technology in the United States and any other country. Quantum
agrees to obtain GM's written consent prior to the filing of any patent
applications, it being agreed that any costs of such patent applications made
without GM's prior written consent shall be born by Quantum, alone. GM agrees
that its prior written consent shall not be unreasonably withheld. Quantum
agrees to provide to GM copies of the patents pertaining to the Jointly-Owned
Technology (including Patent Office pending applications and office actions),
and such other information with respect thereto as GM may reasonably request. In
the event that either Party does not wish to file for patent protection on
Jointly-Owned Technology in a particular country, all rights with respect to the
Jointly-Owned Technology in that country will revert to the Party funding a
patent application in such country.
(b) Quantum shall consult with GM and its counsel concerning the
preparation and prosecution of all patent applications and shall provide GM with
copies of all material documentation after receipt from, or prior to, submission
to any governmental agency with jurisdiction to issue patents, so that GM may
make comments with respect thereto which Quantum shall consider in good faith.
5.5 Disclosure of Inventions. All inventions or improvements relating to a
Project that are developed in whole or in part by GM or Quantum personnel while
performing such Project shall be promptly disclosed to GM and Quantum for patent
worthiness consideration, and each Party shall execute, or obtain the execution
of, any papers as may be necessary to perfect ownership thereof in the
appropriate Party or Parties as set forth above, or as may be necessary in the
obtainment, maintenance or enforcement of any patent, trade secret, trademark,
copyright or other proprietary right
8.
pertaining thereto. All expenses incident to such obtainment, maintenance and/or
enforcement will be borne by the Party or Parties owning such
inventions/improvements.
6 Support.
6.1 Obligations. Each Party agrees that it shall: (a) consult with the
other Party regarding any advertising or trade practice which might adversely
affect the good name, trademarks, goodwill, or reputation of the other Party;
(b) obtain and maintain all necessary government licenses, permits, and
approvals when necessary or advisable for implementation of this Development
Agreement; and (c) comply with all applicable laws, statutes, and regulations.
6.2 Rights in Data. Both Parties acknowledge that all software and
software-related items licensed pursuant to this Development Agreement and any
Statement of Work are "Commercial Computer Software" or "Commercial Computer
Software Documentation" as defined in FAR 12.212 for civilian agencies and DFARS
227.7202 for military agencies, and that in the event that Quantum is permitted
under this Development Agreement to provide such items to the U.S. government,
such items shall be provided under terms at least as restrictive as the terms of
this Development Agreement and the applicable Statement of Work.
7 Warranties & Disclaimers.
7.1 WARRANTIES. Each Party warrants and represents to the other that: (a)
it will perform all development and other services described in any Statement of
Work in a professional and workmanlike manner, using reasonable skill and care
in a manner consistent with the industry standards; and (b) it has the full
power and authority to enter into this Development Agreement and all Statements
of Work.
7.2 DISCLAIMERS. EXCEPT AS PROVIED IN SECTION 7.1 AND ELSEWHERE IN THIS
DEVELOPMENT AGREEMENT, NEITHER PARTY MAKES ANY WARRANTY REGARDING THE
INFORMATION AND SERVICES PROVIDED, AND EXPRESSLY DISCLAIMS ALL IMPLIED OR
STATUTORY WARRANTIES WITH RESPECT TO ANY INFORMATION OR SERVICES, INCLUDING
WITHOUT LIMITATION THE IMPLIED WARRANTIES OF TITLE, MERCHANTABILITY, FITNESS FOR
A PARTICULAR PURPOSE, AND NON-INFRINGEMENT.
8 Limitation of Liability. NEITHER PARTY WILL BE LIABLE FOR ANY LOST PROFITS
OR OTHER INCIDENTAL, CONSEQUENTIAL, INDIRECT, OR SPECIAL DAMAGES ARISING FROM OR
RELATING SOLELY TO THIS AGREEMENT, EVEN IF ADVISED OF THE POSSIBILITY OF SUCH
DAMAGES AND EVEN IF ANY EXCLUSIVE REMEDY STATED IN THIS AGREEMENT IS DEEMED TO
FAIL OF ITS ESSENTIAL PURPOSE.
9 Confidentiality
9.
9.1 Definition of Confidential Information. Confidential Information shall
mean documents and hardware disclosed by a Party which are directly related to
the purpose of this Agreement and which the disclosing Party deems confidential.
9.2 Handling of Confidential Information. During the term of and pursuant
to this Development Agreement, the Parties, to the extent of their right and
willingness to do so, may exchange Confidential Information relating to the
purpose of the relevant Project(s). A Party receiving such Confidential
Information agrees to take reasonable efforts to avoid disclosure thereof to
third parties, subject to the provisions and exceptions of this Development
Agreement, for a period of three (3) years from the Effective Date of this
Development Agreement. Reasonable efforts shall mean efforts which are
equivalent to those which the receiving Party uses to protect its own
Confidential Information of a similar nature, related to the purpose of this
Development Agreement. In order to be deemed Confidential Information subject to
the requirements of this Section 9, the information must be identified as such
with a conspicuous marking which refers to this Development Agreement by title
and Effective Date as follows:
"This document/hardware is to be protected from
disclosure to third parties, pursuant to the Master
Technical Development Agreement between Quantum
Technologies and GM dated June 12, 2001."
Moreover for the same period, neither Party will decompile, reverse engineer, or
disassemble any Confidential Quantum Products or GM Products it receives from
the other Party except as provided in a Statement of Work or otherwise approved
in writing by the Party providing such products.
9.3 Return of Confidential Information. Confidential Information disclosed
by a Party shall remain the property of that Party and shall be returned, at the
request of the disclosing Party, upon completion of the relevant Project or upon
earlier request of the disclosing Party. Notwithstanding the above, Project
results identified as deliverables in a Statement of Work shall not be deemed
Confidential Information.
9.4 Confidentiality of Development Agreement. Each Party agrees that the
terms and conditions of this Development Agreement shall be treated as
confidential and that neither Party will disclose the terms or conditions of
this Development Agreement to any third party without the prior written consent
of the other Party, provided, however, that each Party may disclose the terms
and conditions of this Development Agreement, to the extent necessary: (a) as
required by any court or other governmental body; (b) required by law; (c) in
confidence to legal counsel of the Parties, accountants, and other professional
advisors; (d) in confidence, to banks, investors and other financing sources and
their advisors; (e) in connection with the enforcement of this Development
Agreement or rights under this Development Agreement; or (f) in confidence, in
connection with an actual or prospective merger or acquisition or similar
transaction. With respect to disclosure required by a court or governmental
order, the disclosing Party shall provide prior notification of such impending
disclosure to the non-disclosing Party.
10.
All reasonable efforts to preserve the confidentiality of the terms of this
Development Agreement shall be expended by the disclosing Party in complying
with such an order, including obtaining a protective order to the extent
reasonably possible. Any SEC filings required by law shall be made after any
sensitive information in the Agreement has been afforded confidential protection
under applicable SEC rules and regulations.
10 Compensation. The payment obligations of GM, if any, will be described
in each Statement of Work.
11 Termination
11.1 Term. The term of this Development Agreement shall commence as
of the Effective Date and, unless terminated earlier in accordance with Section
11.2, shall be co-terminus with the Corporate Alliance Agreement; provided that
the term of any Statement of Work will remain effective through the effective
term as specified in the Statement of Work unless otherwise agreed by the
Parties in writing.
11.2 Termination.
(a) Material Breach. Notwithstanding Section 11.1, either Party
may terminate this Development Agreement or individual Statements of Work
without liability if the other Party materially breaches any of its obligations
under this Development Agreement or the relevant Statement of Work (a
"Default"), which Default is not cured within thirty (30) business days after
the non-defaulting Party has given the defaulting Party written notice
sufficiently describing the nature of the Default. Both Parties reserve the
right to terminate the Development Agreement and other Statement(s) of Work upon
thirty (30) business days written notice to the other Party, if a Statement of
Work is breached by or on behalf of the other Party in such a manner that the
terminating Party reasonably determines in its sole discretion that it is
unfeasible for the terminating Party to continue its business relationship with
the other Party under the Development Agreement and Statement(s) of Work. This
termination right includes Quantum's rights to terminate under Section 3.1
(failure of GM to execute a Statement of Work within three (3) years of the
Effective Date).
(b) Mutual Consent. Notwithstanding Section 11.1, this
Development Agreement may be terminated at any time by mutual consent of the
Parties.
(c) Rights on Termination. Upon any termination or expiration
of this Development Agreement for any reason, each Party shall promptly return
to the other Party or (at the other Party's option) destroy, all GM Products, GM
Technology, Quantum Modifications, Quantum Products, Quantum Technology, GM
Modifications, GM Program Technology, and Non-GM Program Technology of the other
Party, as appropriate, delivered pursuant to this Development Agreement and the
Statements of Work thereunder. Statement(s) of Work pending as of the
termination of the Development Agreement shall remain in effect through the term
of the applicable Statement(s) of Work unless either Party terminates the
applicable Statement(s) of Work
11.
separately. Deliverables called for under Statements of Work that survive
termination of this Development Agreement shall not be subject to return or
destruction as otherwise called for in this Section 11.2(c), until such time as
the applicable Statement(s) of Work are actually terminated or reach expiration.
Upon termination of any Statement(s) of Work, GM shall be entitled to updates
for materials provided under such Statement(s) of Work up until the termination
date, but not thereafter.
11.3 Survival. Any termination hereunder shall be in addition to any other
remedy either Party may have at law or in equity, which remedies shall survive
any such termination. In addition, the provisions of Sections 4 (License of
Rights) as it relates to technology created before the termination date, 5
(Ownership and Patent Prosecution), 6.2 ("Rights in Data"), 7 ("Warranties and
Disclaimer"), 8 ("Limitation of Liability"), 9 ("Confidentiality"), 11.2(c)
("Rights on Termination"), and 12 ("General Terms and Conditions") shall survive
any termination, cancellation or expiration of this Development Agreement or
Statement(s) of Work.
12 General.
12.1 Notices. All notices, requests, demands, and other communications
under this Agreement shall be in writing and shall be deemed to have been duly
given (a) on the date of service if served personally on the Party to whom
notice is to be given, (b) upon confirmation of receipt by fax by the Party to
be notified, (c) one business day after deposit with a reputable overnight
carrier, prepaid for overnight delivery and addressed as set forth in (d), or
(d) upon confirmation of receipt if mailed by first class mail, registered or
certified, postage prepaid, and properly addressed as follows:
If to Quantum: QUANTUM TECHNOLOGIES WORLDWIDE, INC. With a copy to: Xxxxxxx Coie
00000 Xxxxxxxxxx Xxxx 0000 00/xx/ Xxxxxx (0/xx/Xxx).
Xxxxxx, XX 00000 Xxxxx Xxxxxx XX 00000
Attention: Xxxx Xxxxxxx, President
Fax: 000-000-0000 Attention: X. Xxxxxx
Fax 000-0000000:
If to GM: General Motors Corporation :
000 Xxxxxxxxxxx Xxxxxx
X.X. Xxx 000
Xxxxxxx, XX 00000-0000
MC 482-C25-D81
Attention: General Counsel
Fax: 000-000-0000
Each Party may change its address by notice given in accordance with this
Section.
12.2 Export. Each Party agrees that it will not export, or attempt to
export, from any country any technical data received hereunder or the product
produced by use of such technical data, without first obtaining all necessary
licenses and consents under
12.
any applicable treaties, statutes and regulations, including, without
limitation, the Export Administration Act of 1979, as amended, any successor
legislation, and the Export Administration Regulations issued by the Department
of Commerce, International Trade Administration, or Office of Export Licensing.
Each donor Party will notify the receiving Party of any technical data or
hardware that the donor Party supplies and knows to be controlled data/hardware
under any of the aforesaid treaties, statutes and regulations.
12.3 Governing Law and Forum Selection. This Development Agreement shall
be governed by New York law, excluding its conflict of laws rules. With the
exception of either Party's right to enforce its proprietary rights through
injunctive relief, all disputes arising out of this Development Agreement shall
be subject to the exclusive jurisdiction and venue of the California state and
federal courts located in Orange County, California, and the Parties consent to
the personal and exclusive jurisdiction and venue of these courts. The Parties
expressly disclaim the application of the United Nations Convention on the
International Sale of Goods to this Development Agreement.
12.4 Attorneys' Fees. In the event of any action, suit or proceeding,
including arbitration, between the Parties hereto, each Party shall be
responsible for its own costs and attorneys' fees.
12.5 Waiver. The delay or failure of a Party to exercise any right, power,
remedy, or privilege hereunder or failure to strictly enforce any breach,
violation, default, provision or condition shall not impair any such right,
power, remedy or privilege nor shall it constitute a waiver thereof or
acquiescence thereto. Any waiver, permit, consent, or approval of any kind
regarding any breach, violation, default, provision or condition of this
Development Agreement must be in writing and shall be effective only to the
extent specifically set forth in such writing. No partial waiver of any such
right, power, privilege, breach, violation, default, provision, or condition on
any one occasion shall preclude any other or further exercise thereof or
constitute a waiver thereof or acquiescence thereto on any subsequent occasion
unless clear and express notice thereof in writing is provided.
12.6 Assignment. This agreement shall not be assigned by either Party
without the prior written approval of the other Party except to the successor in
ownership by sale, merger, consolidation or divestiture of all or substantially
the whole of the relevant business (i.e. Fuel Cell Systems for GM and gaseous
storage and handling equipment for Quantum) of the Party wishing to make the
assignment. The Development Agreement will be binding upon and inure to the
benefit of each Party's authorized successors and permitted assigns.
12.7 Captions. All Section captions and headings are for reference only and
shall not be considered in interpreting or construing this Development
Agreement.
12.8 Severability. If any provision of this Development Agreement is
declared invalid, illegal, or unenforceable by any tribunal, then such provision
shall be deemed automatically adjusted to conform to the requirements for
validity as declared at such
13.
time and, as so adjusted, shall be deemed a provision of this Development
Agreement as though originally included herein. In the event that the provision
deemed invalid, illegal or unenforceable is of such a nature that it cannot be
so adjusted, the provision shall be deemed deleted from this Development
Agreement as though the provision had never been included herein. If any
provision or portion of this Development Agreement is held to be unenforceable
or invalid, the Parties agree to negotiate, in good faith, a substitute valid
provision which most nearly effects the Parties' intent in entering into this
Development Agreement. In either case, the remaining provisions of this
Development Agreement shall remain in full force and effect. WITHOUT LIMITING
THE FOREGOING, IT IS EXPRESSLY UNDERSTOOD AND AGREED THAT EACH AND EVERY
PROVISION OF THIS DEVELOPMENT AGREEMENT WHICH PROVIDES FOR A LIMITATION OF
LIABILITY, DISCLAIMER OF WARRANTY OR EXCLUSION OF DAMAGES IS INTENDED BY THE
PARTIES TO BE SEVERABLE AND INDEPENDENT OF ANY OTHER SUCH PROVISION. FURTHER, IN
THE EVENT THAT ANY REMEDY HEREUNDER IS DETERMINED TO HAVE FAILED OF ITS
ESSENTIAL PURPOSE, ALL LIMITATIONS OF LIABILITY AND EXCLUSIONS OF DAMAGES SHALL
REMAIN IN EFFECT.
12.9 Independent Contractors. The Parties are each independent contractors
and neither Party shall be, nor represent itself to be, the franchiser, joint
venturer, franchisee, partner, broker, employee, servant, agent, or legal
representative of the other Party for any purpose whatsoever. Neither Party is
granted any right or authority to assume or create any obligation or
responsibility, express or implied, on behalf of or in the name of the other
Party, or bind the other Party in any matter or thing whatsoever, including but
not limited to, the right or authority to obligate the other Party to accept or
deliver any order, or to sell or refuse to sell to any potential customer.
12.10 Remedies Cumulative. All remedies, either under this Development
Agreement or by law or otherwise afforded to any Party, shall be cumulative and
not exclusive or alternative and shall be in addition to all remedies given
hereunder or now or thereafter existing, at law or in equity, by statute or
otherwise. The election of any one or more remedies by any Party shall not
constitute a waiver of the right to pursue other available remedies.
12.11 Injunctive Relief. The Parties acknowledge that any breach of the
provisions of this Development Agreement relating to proprietary rights of
either Party may cause irreparable harm and significant injury to an extent that
may be difficult to ascertain. Accordingly, each Party agrees that the other
Party will have, in addition to any other rights or remedies available to it at
law or in equity, the right to seek injunctive relief to enjoin any breach or
violation of such sections.
12.12 Force Majeure. Either Party shall be excused from any delay or
failure in performance hereunder, except the payment of monies, caused by reason
of any occurrence or contingency beyond its reasonable control, including but
not limited to, acts of God, earthquake, floods, lightning, labor disputes and
strikes, other labor or
14.
industrial disturbances, riots, war, acts of the public enemy, insurrections,
embargoes, blockages, regulations or orders of any government, agency or
subdivision thereof, shortages of materials, rationing, utility or communication
failures, casualty, novelty of product manufacture or other unanticipated
product development problems, and governmental requirements. The obligations and
rights of the Party so excused shall be extended on a day-to-day basis for the
period of time equal to that of the underlying cause of the delay; provided that
such Party shall give notice of such force majeure event to the other Party as
soon as reasonably possible.
12.13 Counterparts. This Development Agreement may be executed in one or
more counterparts, each of which shall constitute an original, but taken
together shall constitute one and the same document.
12.14 Entire Agreement. This Development Agreement and the other
agreements, documents, Exhibits, and writings attached and/or delivered pursuant
hereto or concurrently herewith, including without limitation, the Corporate
Alliance Agreement, the Stock Transfer Agreement, and the Registration Rights
Agreement referenced therein, contain and constitute the sole, complete and
entire agreement and understanding of the Parties concerning the matters
contained herein and therein and may not be altered, modified or changed in any
manner except by writing duly executed by the Parties. No statements, promises
or representations have been made by any Party to another, or are relied upon,
and no consideration has been or is offered promised, expected or held out,
other than as stated in this Development Agreement or the other agreements and
documents referenced herein. No Party is relying on any representations other
than those expressly set forth herein or therein. No conditions precedent to the
effectiveness of this Development Agreement exist, other than as may be
expressly provided herein.
In Witness Whereof, the Parties, by their duly authorized representatives,
have executed this Agreement as of the Effective Date.
Quantum Technologies, General Motors,
WORLDWIDE, Inc. Corporation
By: /s/ Xxxx X. Xxxxxxx By: /s/ Xxxxxxxx X. Xxxxx
------------------------------- ----------------------------------
Name: Xxxx X. Xxxxxxx Name: Xxxxxxxx X. Xxxxx
Title: President and CEO Title: Vice President, GM Research &
Development and Planning
15.
EXHIBIT A
---------
TEMPLATE - STATEMENT OF WORK
----------------------------------------------------------
STATEMENT OF WORK No.__
Between
General Motors Corporation
Global Alternative Propulsion Center
And
Quantum Technologies Worldwide, Inc.
_________________ __, 2001
Under:
Master Technology Development Agreement
June 12, 2001
----------------------------------------------------------
GAPC Project Manager
___________ (___)___-___
__________@xx.xxx
QUANTUM Project Manager
___________ (___)___-___
__________@xxxx.xxx
16.
Table of Contents
1.0 Introduction
2.0 Program Overview
3.0 Module Description
4.0 Program Management
4.1 Expectations/Responsibilities
4.2 Project Plan
4.3 Meeting Requirements
4.3.1 Preliminary Design Review Meeting (Kick Off)
4.3.2 Design Review Meeting
4.3.3 Final Design Review Meeting
4.4 Communication
5.0 Deliverables
6.0 Timing
1.0 Introduction
This Statement of Work No. __ ("SOW__") is made effective as of _____ __, 2001
("SOW__ Effective Date"), and is governed by the Master Technical Development
Agreement dated June 12, 2001 ("Development Agreement"), by and between General
Motors Corporation ("GM") and Quantum Technologies Worldwide, Inc. ("Quantum").
All of the terms and conditions of the Development Agreement are incorporated
herein and shall apply to this SOW__. Unless otherwise indicated, all
capitalized terms shall have the meanings assigned in the Development Agreement.
2.0 Project Overview
2.1 Task 1 - Description of task and deliverables therefrom
2.2 Task 2 - Description of Task and deliverables therefrom
2.3 Task 3 - Description of Task and deliverables therefrom
3.0 Statement of Requirements
See the Statement of Requirements that is attached hereto as Appendix A for
detailed information regarding: GM Fuel Cell Systems (GM Products); Quantum
gaseous storage and handling systems (Quantum Products), and requirements for
interfacing, integration and optimization of these systems (GM Interface
Technology).
4.0 Program Management
4.1 Expectations/Responsibilities
4.2 Project Plan
4.3 Meeting Requirements
17.
4.3.1 Preliminary Design Review Meeting (Kick Off)
4.3.2 Design Review Meeting
4.3.3 Final Design Review Meeting
4.4 Communication
5.0 Products and Delivery Schedules
5.1 GM Products. GM agrees to use commercially reasonable efforts to
provide the following deliverables (hardware and software) to Quantum
in accordance with the delivery milestones contained below. GM
acknowledges that its failure to provide the GM Products in accordance
with this delivery schedule may prevent Quantum from timely completion
of the project (as detailed below in Section 6):
---------------------------------------------------------------------
GM Products Delivery Schedule
---------------------------------------------------------------------
_____________________________________________________________________
_____________________________________________________________________
_____________________________________________________________________
5.2 Quantum Products. Quantum agrees that the following Quantum Products
are to be used in the performance of this Project. Quantum
acknowledges that its failure to have these Quantum Products available
for use in accordance with the stated delivery schedule may prevent
timely completion of the project (as detailed below in Section 6):
---------------------------------------------------------------------
Quantum Products Data Available
---------------------------------------------------------------------
_____________________________________________________________________
_____________________________________________________________________
_____________________________________________________________________
6.0 Timing. The following table describes the deliverables/milestones and
delivery dates within each task of the project.
---------------------------------------------------------------------
Delivery/Milestone Responsible Party Date
---------------------------------------------------------------------
_____________________________________________________________________
_____________________________________________________________________
_____________________________________________________________________
In Witness Whereof, an authorized representative of each party has signed this
Statement of Work No. 1 as of the SOW1 Effective Date.
QUANTUM TECHNOLOGIES GENERAL MOTORS CORPORATION
WORLDWIDE, INC.
By: __________________________________ By:_____________________________
Print Name: ___________________________ Print Name: ____________________
Title: ___________________________ Title: ____________________
18.
