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EXHIBIT 10.17
GRANT PRIDECO, INC.
DST DISTRIBUTORS OF STEEL TUBES LIMITED
MASTER TECHNOLOGY LICENSE AGREEMENT
*** Denotes information intentionally omitted pursuant to a
confidential information treatment request pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.
This Agreement dated as of June 19, 1998, is by and between Grant
Prideco, Inc., a corporation organized and existing under the laws of Delaware,
U.S.A., having its principal place of business at 000 Xxxxx Xxx Xxxxxxx Xxxxxxx
Xxxx, Xxxxx 0000, Xxxxxxx, Xxxxx 77060-2409, U.S.A. (hereinafter "GRANT"), and
DST Distributors of Steel Tubes Limited, a corporation organized and existing
under the laws of Princedom of Liechtenstein, having its offices at Prafadant 11
949 Vaduz, Princedom of Lichtenstein (hereinafter "LICENSEE"):
WHEREAS, Grant is the owner of various U.S. and foreign patents
described on Schedule "A" hereto (the "GRANT PATENTS") and has the right to
license technical information and know-how, in each case, relating to the
Threading and Reconstruction of Atlas Bradford Oil Field Connections for
Products and Accessory Equipment (the "TECHNOLOGY");
WHEREAS, Grant is the owner of and has the right to license certain
trademarks, commercial names and other such designations listed in Schedule "B"
to this Agreement used in connection with the manufacture and sale of Atlas
Bradford Connections (hereinafter "LICENSED TRADEMARKS");
WHEREAS, Licensee is a company jointly owned by Dalmine
S.p.A.("DALMINE"), Siderca S.A. ("SIDERCA"), and Tubos xx Xxxxx de Mexico
("TAMSA"), all of which are major producers of seamless steel pipe for the oil
and gas drilling industry, highly recognized suppliers of oil country tubular
goods and services to major oil companies, who have developed proprietary
products besides production of API and API Plus tubular goods and threads, and
have several premium connection licenses from third parties and affiliated
companies;
WHEREAS, Siderca currently possesses only short term rights regarding
Technology and Licensee, on behalf of its Affiliates, is desirous of obtaining
Technology, Patents and Trademark licenses on a long term basis and receiving
Technical Assistance from Grant for use by its Affiliates and other
Sub-Licensees in order to supply its customers with a more predictable and
complete range of oil country tubular good (OCTG) products; and
WHEREAS, Grant is willing to grant technology, patent and trademark
licenses and to provide technical assistance to Licensee under certain
conditions;
NOW THEREFORE, in consideration of the premises and of the covenants
and undertakings of the parties herein below, the sufficiency of which is hereby
acknowledged, Grant and Licensee agree as follows:
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ARTICLE 1. DEFINITIONS
Unless otherwise defined or the context otherwise requires, capitalized
terms shall have the meanings ascribed to them in Schedule "C".
ARTICLE 2. LICENSE
SECTION 2.1 GRANT OF LICENSE BY XXXXX
Xxxxx hereby grants to Licensee, subject to the terms of this
Agreement, the following licenses:
(a) An exclusive license (with the right to sub-license as provided
herein) under Technology and Patents to Thread, Reconstruct and to sell Atlas
Bradford Oil Field Connections on (i) full length carbon steel Products having
9% or less Cr in the Exclusive Territory and (ii) full length Products of all
grades in Mexico and its offshore waters and territories.
(b) A non-exclusive license (with the right to sub-license as provided
herein) under Technology and Patents to Thread, Reconstruct and to sell Atlas
Bradford Oil Field Connections on full length Products of all grades in the
Non-Exclusive Territory (it being understood that the non-exclusive nature of
this license does not render non-exclusive the license granted under Section
2.1(a)).
(c) An exclusive license (with the right to sub-license as provided
herein) under Technology and Patents to Thread, Reconstruct and sell Accessory
Equipment with Atlas Bradford Connections (i) of carbon steel of 9% or less Cr
in the Exclusive Territory and (ii) of all grades in Mexico and its offshore
waters and territories.
(d) A non-exclusive license (with the right to sub-license as provided
herein) under Technology and Patents to Thread and Reconstruct Accessory
Equipment with Atlas Bradford Connections and to sell Atlas Bradford Connections
on Accessory Equipment of all grades in the Non-Exclusive Territory (it being
understood that the non-exclusive nature of this license does not render
non-exclusive the license granted under Section 2.1(c)).
(e) A non-exclusive license to use Trademarks in association with Atlas
Bradford Oil Field Connections on Products and Accessory Equipment that have
been Threaded or Reconstructed and sold by Licensee or its Sub-Licensees
pursuant to this Agreement.
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Schedule 2.1 sets forth in summary form the licenses granted by this
Agreement.
SECTION 2.2 RESTRICTED USE
(a) Licensee and its Sub-Licensees shall have no right or license to
use Technology, Patents or Trademarks for any purpose other than the Threading,
Reconstruction, use and sale of Atlas Bradford Oil Field Connections on Products
and Accessory Equipment in strict accord with the terms and conditions of this
Agreement. Licensee shall also restrict its customers (other than end users who
may purchase Products and Accessory Equipment for their use) from reselling in
the Grant Territory (other than Canada) or for use in the Grant Territory (other
than Canada) Products or Accessory Equipment that has been Threaded,
Reconstructed or sold by Licensee or its Sub-Licensees.
(b) Licensee and its Sub-Licensees shall notify its distributors,
agents and significant international customers that (i) Grant has granted
Licensee the exclusive licenses to the Atlas Bradford Connections contemplated
under this Agreement, but has retained its rights to the Atlas Bradford
Connections in the Grant Territory, (ii) except for customers who are end users
who are purchasing for their own use, no Products Threaded with Atlas Bradford
Oil Field Connections sold or provided by Licensee or its Sub-Licensees may be
resold or used in the Grant Territory (other than Canada), (iii) if the customer
desires Atlas Bradford Oil Field Connections for use in the Grant Territory
(except Canada), Licensee recommends that it should seek those Connections from
Grant and (iv) if the customer who is an end user purchases any Atlas Bradford
Oil Field Connections for ultimate use in the Grant Territory (except Canada),
the customer is requested by Licensee to advise Licensee of the sale or use.
Licensee and Grant further agree that while Licensee will not make any sale of a
Product with an Atlas Bradford Oil Field Connection to a customer that is an end
user if it has actual knowledge that the sale to the end user of the Atlas
Bradford Oil Field Connection is specifically intended to be resold or used in
the Grant Territory (except Canada), neither Licensee nor any of its Affiliates
or Sub-Licensees shall be required to make prior inquiry from a customer that is
an end user of the Product or Accessory Equipment and not engaged in the resell
or distribution of Products or Accessory Equipment regarding any order received
by it with respect to the territory in which the Atlas Bradford Connection is to
be sold or used and may rely solely on the purchase order and other
communications received at the time the order is placed. Licensee and its
Sub-Licensees further shall not be deemed to have actual knowledge that an order
is for sale in or use in the Grant Territory (except Canada) solely by reason of
Grant advising Licensee that it believes the order is for sale in or use in the
Grant Territory (except Canada).
(c) Licensee and its Sub-Licensees shall have no rights to Thread or
Reconstruct Connections on Products or Accessory Equipment or to sell or ship
Atlas Bradford Oil Field Connections on Products or Accessory Equipment
incorporating Technology, Patents or Trademarks to persons located in the United
States or its offshore waters or territories or any country or other location in
which it would be unlawful for a licensee of Grant to do so or for which an
export license is required by any applicable governmental entity absent the
receipt of such license or any applicable governmental approvals. Upon
Licensee's request, Grant shall, at Licensee's sole cost, give reasonable
assistance to support Licensee's efforts to obtain any required approvals.
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(d ) In recognition of the licenses being granted to Licensee hereunder
and Licensee's rights in the Exclusive Territory, Grant agrees that after the
Effective Date and during the term of this Agreement neither it nor any of its
Affiliates will quote or sell for delivery or use in the Exclusive Territory any
Atlas Bradford Oil Field Connections on Products of carbon steel having 9% or
less Cr except as expressly permitted herein.
(e) In recognition of the rights to the Technology and Patents being
retained by Grant and its Affiliates in the Grant Territory, Licensee agrees
that except as expressly permitted under Section 2.2(b), neither it nor any of
its Affiliates will quote or sell for delivery or use in the United States of
America or its offshore waters or territories any Atlas Bradford Oil Field
Connections on any Products.
SECTION 2.3 EXTENT OF EXCLUSIVE LICENSES
The licenses granted hereunder shall not restrict or prohibit the
following:
(a) Subject to Section 17.1 the rights of any existing licensee of
Grant to use Technology, Patents or Trademarks.
(b) The use or resale within the Territories of Atlas Bradford
Connections on Products or Accessory Equipment sold by Grant or its licensees,
distributors or Affiliates prior to the Effective Date or after the Effective
Date to the extent not in violation of this Agreement.
(c) Any repair or replacement of Atlas Bradford Connections on Products
or Accessory Equipment sold by Grant or its distributors or Affiliates prior to
the Effective Date or after the Effective Date to the extent not in violation of
this Agreement.
(d) The Threading, Reconstruction, sale or distribution of Connections
(other than Atlas Bradford Connections) on Products or Accessory Equipment.
(e) The completion of any outstanding orders or bids by Grant or its
Affiliates described on Schedule 2.3(e) hereto and any other orders that are
scheduled to be completed within two months after the Effective Date; provided,
however, Grant shall provide to Licensee prior to the Effective Date a schedule
setting forth all orders that are scheduled to be completed by it within two
months following the Effective Date.
(f) The Threading or Reconstruction of full-length Products and
Accessory Equipment by or on behalf of Grant or any of its Affiliates in any
country for export into any territory where Grant has the right to sell Products
and Accessory Equipment under this Agreement; provided, however, that prior to
engaging in or contracting for the Threading or Reconstruction of Atlas Bradford
Oil Field Connections in the Exclusive Territory pursuant to this Section
2.3(f), Grant shall give Licensee a reasonable opportunity to provide to Grant
such Threading and Reconstruction of Atlas Bradford Oil Field Connections in the
Exclusive Territory for import into the territories where Grant has a right to
sell Products and Accessory Equipment at a cost to Grant equal to or less than
the cost that would have been incurred by Grant to do the Threading and
Reconstruction of the Atlas Bradford Oil Field Connections in the Exclusive
Territory itself or through another third party.
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(g) Any Distribution Sales (other than Distribution Sales that are
subject to the restriction agreed to in Section 2.4(f)) and any International
Company Sales made by Xxxxx, Xxxxx Affiliates or Grant Licensees; provided,
however, that Grant shall (i) notify its distributors, agents and significant
international customers that it has granted the rights granted hereunder in the
Exclusive Territory and request such distributors, agents and customers to
inform Grant of any sales or shipments made to the Exclusive Territory (other
than the Home Territories) by such persons of Products or Accessory Equipment
containing Atlas Bradford Oil Field Connections that were sold to them by Grant
or Grant Licensees after the Effective Date and (ii) require any new Grant
Licensees to inform Grant of any sales or shipments of Products or Accessory
Equipment containing Atlas Bradford Oil Field Connections made to the Exclusive
Territory (other than the Home Territories) pursuant to Distribution Sales or
International Company Sales made by such Grant Licensees after the Effective
Date as contemplated in (i) above. From and after the Effective Date, Grant
agrees to convey such information to Licensee each quarter and pay Licensee the
commissions required under Section 2.8. The notice to distributors, agents and
customers under this Section 2.3(g) shall state that (i) Grant has granted
Licensee the exclusive licenses to the Atlas Bradford Connections contemplated
under this Agreement, (ii) if the customer desires Atlas Bradford Oil Field
Connections for use in the Exclusive Territories (other than the Home
Territories), Grant recommends that it should seek those Connections from
Licensee and (iii) if the customer ultimately sells any Atlas Bradford Oil Field
Connections for use in the Exclusive Territories, the customer is requested by
Grant to advise Grant of the sale so that Grant may pay the Licensee the
commissions to be paid by it under this Agreement.
(h) Any activity by Grant or its Affiliates involving the marketing,
sale or distribution of any Oil Field Connections (other than the Atlas Bradford
Connections) on Products or Accessory Equipment in the Exclusive Territory as
long as Grant or such Affiliate does not Thread or Reconstruct the Products or
Accessory Equipment in question, is merely a licensee of anothercompany that has
Threaded or Reconstructed the Connections on the Product or item of Accessory
Equipment and no use is made of the Patents, Technology or Trademark.
(i) The Threading, Reconstruction or sale in any Territory of
Connections (other than Atlas Bradford Connections) on Products or Accessory
Equipment pursuant to licenses from a person that is not Affiliated with Grant.
(j) The manufacture, repair, distribution and sale of Products, Product
components and Accessory Equipment to the extent such Products and Product
components and Accessory Equipment are sold by Grant or its Affiliates prior to
the Threading of Atlas Bradford Connections thereon.
(k) The use or resale by a customer or distributor (other than the
resale by a distributor of a Product that is Threaded with an Atlas Bradford
Connection to the Home Territories or for use in the Home Territories or an item
of Designated Accessory Equipment with an Atlas Bradford Oil Field Connection in
Mexico or for use in Mexico) of any tubular or other product (including
Accessory Equipment) which have been Threaded or Reconstructed by any Person;
provided, however, the provisions of this Section 2.3(k) will not limit Grant's
obligation to pay the commissions under Section 2.8 for any sales for which a
commission would otherwise be payable.
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(l) Any use or exploitation of the XL Technology or other technology to
which Grant or any of its affiliates may have a right to utilize or exploit.
(m) The rental of any Accessory Equipment with Atlas Bradford
Connections or the provision of well services for customers in any Territory by
any party.
(n) The Threading, Reconstruction and sale of Atlas Bradford
Connections on Accessory Equipment (other than an item of Designated Accessory
Equipment that is to be sold or used in Mexico) by Grant or Grant Affiliates or
their respective licensees as long as (i) the Threading and Reconstruction is
conducted in the Grant Territory, (ii) information as to all sales of such
Accessory Equipment in the Exclusive Territory by Grant, its Affiliates,
distributors and agents is provided to Licensee on a quarterly basis, (iii)
Grant and its Affiliates shall be responsible for all service with respect to
such Accessory Equipment, and (iv) Grant pays to Licensee the commissions
required on such sales as provided in Section 2.8.
SECTION 2.4 GRANT UNDERTAKINGS; DISTRIBUTION SALES
(a) Except as otherwise permitted by Sections 2.1 and 2.3 of this
Agreement, Grant and its Affiliates shall not Thread, Reconstruct or sell Atlas
Bradford Oil Field Connections on Products having 9% or less Cr for use in any
part of the Territories.
(b) (i) Except as otherwise permitted by Sections 2.1 and 2.3 of this
Agreement, Grant and its Affiliates shall not grant any rights to any Person to
Thread, Reconstruct or sell Atlas Bradford Oil Field Connections on Products or
Accessory Equipment having 9% or less Cr with Technology, Patents or Trademarks
in the Exclusive Territory.
(ii) Except as otherwise permitted by Sections 2.1, 2.3 and 2.8,
Grant and its Affiliates shall not grant to any Person any rights to
Thread, Reconstruct or sell Atlas Bradford Oil Field Connections on
Products having 9% or less Cr inside of the Grant Territory for use in
any part of the Exclusive Territories.
(iii) Except as otherwise permitted by Sections 2.1, 2.3 and 2.8,
Grant and its Affiliates shall not grant to any Person any right to
Thread, Reconstruct or sell Atlas Bradford Oil Field Connections on
Products or Designated Accessory Equipment in Mexico or in the Grant
Territory for use in Mexico.
(iv) Future licenses of Atlas Bradford Oil Field Connections by
Grant entered into after the Effective Date and during the term of
this Agreement shall provide that Licensee
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is a third party beneficiary for the enforcement of the restrictions
hereunder relating to the Exclusive Territories.
(c) Grant will take the actions required by Article 17 in connection
with all existing Grant licenses for Threading, Reconstructing and sale of Atlas
Bradford Oil Field Connections on Products and Accessory Equipment having 9% or
less Cr or of all grades in relation to Mexico.
(d) Except for export into the Grant Territory and as otherwise
permitted by this Agreement, during the life of this Agreement, Grant shall not
grant any rights to any Person to Thread or Reconstruct Atlas Bradford Oil Field
Connections on full length Products or to sell such Atlas Bradford Oil Field
Connections on full length Products of carbon steel having 9% or less Cr in the
Exclusive Territory.
(e) Licensee agrees that Grant has granted to Oil Country Tubular
Limited (AOCTL") a non-exclusive license to Thread, Reconstruct and sell Atlas
Bradford Oil Field Connections on Products and Accessory Equipment manufactured
under the Manufacturing Agreement between OCTL and Grant Prideco S.A., an
affiliate of Grant. Grant agrees that after the Effective Date and during the
term of this Agreement it will not consent to the manufacture of Products at the
OCTL facility in India except for sale and use in India. Licensee hereby
consents to the use by OCTL of such license and OCTL's manufacture and sale of
Products and Accessory Equipment with Atlas Bradford Oil Field Connections in
India.
(f) In consideration of the undertakings made by Licensee in Section
2.2, Licensee and Grant agree as follows:
(i) Grant and its Affiliates shall restrict their customers
(other than end users who may purchase for their own use) from
reselling (a) Products of carbon steel of 9% or less Cr with Atlas
Bradford Oil Field Connections that have been Threaded by Grant or its
Affiliates after the Effective Date into the Home Territories or for
use in the Home Territories and (b) Products and Designated Accessory
Equipment of all grades with Atlas Bradford Oil Field Connections that
have been Threaded by Grant and its Affiliates after the Effective in
Mexico or for use in Mexico. Except for sales of (a) Products of
carbon steel of 9% or less Cr with Atlas Bradford Oil Field
Connections that have been Threaded by Grant or its Affiliates after
the Effective in the Home Territories or for use in the Home
Territories and (b) Products and Designated Accessory Equipment of all
grades with Atlas Bradford Oil Field Connections that have been
Threaded by Grant and its Affiliates after the Effective in Mexico or
for use in Mexico, which shall be restricted as provided in the
preceding sentence, agents and distributors of Grant and its
Affiliates shall not be required to restrict their sales of Atlas
Bradford Oil Field Connections or Products and Accessory Equipment
acquired by them to the Grant Territory and that such distributors
shall, subject to such restrictions as Grant may from time itself and
in its sole discretion impose, be free to make such sales without any
claim from Licensee and its Affiliates and Sub-Licensees for
infringement or claim that the distributor does not have the right to
make such sales. In this regard, Licensee acknowledges that, except
for sales of (a) Products of carbon steel of 9% or less Cr with Atlas
Bradford Oil Field Connections that have been Threaded by Grant or its
Affiliates after the Effective in the Home Territories or for use in
the Home Territories and (b) Products and Designated Accessory
Equipment of all grades with Atlas Bradford Oil Field Connections that
have been Threaded by Grant and its Affiliates after the
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Effective in Mexico or for use in Mexico, which shall be restricted as
provided in the first sentence of Section 2.4(f)(i), it shall have no
rights against any distributor for sales of Atlas Bradford Connections
or Products and Accessory Equipment with Atlas Bradford Connections in
the Exclusive Territory or against any end user or other customer for
the use or resale thereof and that Licensee's remedy for any such
sales shall be the right to receive commissions pursuant to Section
2.8. The commissions payable under Section 2.8 by Grant shall not be
in lieu of any other remedy that Licensee may have for sales made by
Grant in the Home Territories in violation of this Agreement.
(ii) That while Grant agrees that it will not make any
Distribution Sale if it has actual knowledge that the sale of the
Atlas Bradford Oil Field Connection is specifically intended to be
sold or used in the Exclusive Territory, except for sales of (a)
Products of carbon steel of 9% or less Cr with Atlas Bradford Oil
Field Connections that have been Threaded by Grant or its Affiliates
after the Effective in the Home Territories or for use in the Home
Territories and (b) Products and Designated Accessory Equipment of all
grades with Atlas Bradford Oil Field Connections that have been
Threaded by Grant and its Affiliates after the Effective in Mexico or
for use in Mexico, which shall be restricted as provided in the first
sentence of Section 2.4(f)(i), neither Grant nor any of its Affiliates
or Sub-Licensees shall be required to make prior inquiry regarding any
order received by it with respect to the territory in which the Atlas
Bradford Connection is to be sold or used and may rely solely on the
purchase order and other communications received at the time the order
is placed. Grant further shall not be deemed to have actual knowledge
that an order is for sale in or use in the Exclusive Territory solely
by reason of Licensee advising Grant that it believes the order is for
sale in or use in the Exclusive Territory.
(iii) Grant agrees that it will not grant any licenses for
Atlas Bradford Oil Field Connections to any United States domestic steel mill
that would permit that mill to sell (a) Products of carbon steel of carbon steel
of 9% or less Cr with Atlas Bradford Oil Field Connections in the Exclusive
Territory or the Grant Territory for use in the Exclusive Territory or (b)
Products or Designated Accessory Equipment with Atlas Bradford Oil Field
Connection in Mexico or for use in Mexico.
SECTION 2.5 LICENSEE SUB-LICENSES
Licensee may grant sub-licenses to third parties with respect to its
rights hereunder subject to the following conditions:
(a) Sub-Licenses
Except for Affiliates of Licensee, no Sub-Licensee of Licensee or its
Affiliates shall be engaged or propose to be engaged in the business of the
Threading or Reconstruction of Connections for Products or Accessory Equipment
within the Grant Territory unless assurances reasonably satisfactory to Grant
are provided that such Sub-Licensee will not be able to utilize the Technology
and Patents in a manner that would adversely affect Grant; provided, however, no
Sub-Licensee shall have any rights under the Technology and Patents to Thread,
Reconstruct or sell Atlas Bradford Oil Field Connections in the Grant Territory
(other than Canada). Each Sub-Licensee (other than Affiliates of Licensee and
Sub-Licensees engaged solely in the Threading of Connections of
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Accessory Equipment) shall be required to be approved by Grant in advance, which
approval shall not be unreasonably withheld.
(b) Type of Sub-Licenses
Each sub-license from Licensee shall be "non-exclusive" and
"non-assignable" (other than the sub-licenses that may be granted to Affiliates
of Licensee). No Sub-Licensee of Licensee shall have the right to sub-license
its rights other than to the customer for use.
(c) Form of Sub-Licenses
Each sub-license from Licensee shall be in a form consistent with the
terms of this Agreement and that shall be submitted to Grant for prior approval
(which approval shall be deemed granted if Grant does not object to its terms
within 15 days from its submission). Licensee shall not be required to submit to
Grant any sub-license agreement which is substantially similar to a standard
form approved by Grant; provided, however that an executed copy of each
sub-license from Licensee shall be provided to Grant promptly following the
execution thereof. Each sub-license shall provide that Grant is a third party
beneficiary.
(d) Royalty Payments
Any royalty payments that may be agreed with Sub-Licensees (including
payments for the procurement of Tooling and Gauges) shall be for the benefit of
Licensee.
(e) Enforcement
Licensee shall be fully responsible for any breach of the licenses
granted hereunder by a Sub-Licensee that is an Affiliate of Licensee. Licensee
shall otherwise not be a guarantor for any Sub-Licensee and therefore the breach
of the terms of the sub-license by a Sub-Licensee which is not an Affiliate of
Licensee or the failure to obtain from any such Sub-Licensee the performance of
obligations under the sub-license shall not entitle Grant to regard Licensee as
being in breach of its obligations hereunder nor to terminate this Agreement so
long as Licensee continues to exercise and enforce its rights under the
sub-license or terminates, in accordance with its terms, the relevant
sub-license. Grant shall not be required to seek remedies against a Sub-Licensee
that is an Affiliate of Licensee and may act directly against Licensee for any
breach of any such Affiliate. The failure of a Sub-Licensee that is an Affiliate
of Licensee to comply with the terms of this Agreement shall entitle Grant to
regard Licensee as being in breach of its obligations hereunder and to terminate
this Agreement as provided in Section 10.4.
(f) Duration
The longest duration of any sub-license from Licensee shall be one day
shorter than the effective term of this Agreement according to whether it
expires or is previously terminated; provided that if this Agreement is
terminated prior to its initial term any Sub-Licensee which is not an Affiliate
of Licensee may upon termination apply directly to Grant for the adoption of the
sub-
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license directly whereupon Grant shall, if the Sub-Licensee is not an
Affiliate of Licensee nor is in default and there are no other legal impediments
to such adoption, adopt the same.
(g) Sub-License to Citra Tubindo
(i) Licensee shall assume the license with P.T. Citra Tubindo
("CITRA TUBINDO") attached hereto as Schedule "D" (the ACITRA
LICENSE"). Citra Tubindo may not grant sub-licensees of its rights,
except to H-Tech or an Affiliate of Citra Tubindo. Licensee may not
terminate the Citra License without the prior written consent of Grant
(other than as a result of an uncured material breach thereof), which
may be withheld by Grant in its sole discretion, and shall allow the
Citra License to be extended from time to time as requested by Grant.
In addition, Grant shall have the right to consent to the right of
Citra Tubindo to Thread and sell Atlas Bradford Oil Field Connections
under the Citra License in other territories; provided, however, Grant
agrees that it will not consent to the right of Citra Tubindo to
Thread or Reconstruct Atlas Bradford Oil Field Connections in
Argentina, Columbia, Italy, Mexico and Venezuela.
(ii) Licensee agrees that Citra Grant Prideco Limited, an
affiliate of Grant (XXXXXX XXXXX"), has been appointed a distributor
of Products and Accessory Equipment with Atlas Bradford Oil Field
Connections that have been Threaded or Reconstructed by Citra Tubindo
and its Affiliates pursuant to the Citra License in the territories
described therein. Licensee further agrees that the Citra License
shall continue in effect and not be required to be terminated and that
Citra Grant shall be entitled to continue to distribute Products and
Accessory Equipment that have been Threaded or Reconstructed by Citra
Tubindo and its sub-licensees.
(h) Sub-License Grant Prideco Limited
Licensee undertakes to grant to Grant Prideco Limited a non-exclusive
sub-license to Thread, Reconstruct and sell Accessory Equipment and to
Reconstruct Products with Atlas Bradford Connections within the North Sea
theater on customary terms and conditions to be agreed upon in good faith
between Grant Prideco Limited and Licensee recognizing Grant Prideco Limited's
current use of the technology. The license shall be subject to a royalty fee of
4% of the price paid to Grant Prideco Limited for the Atlas Bradford Connections
sold or provided by Grant Prideco Limited subsequent to the Effective Date and
during the term of such sub-license. In addition, Licensee agrees that it and
its Affiliates will offer to Grant Prideco Limited the opportunity to Thread any
full length Products with Atlas Bradford Connections within the North Sea
theatre as long as Grant Prideco Limited is able to provide such Threads at a
price to Licensee and its Affiliates equal to or less than the price at which a
Sub-Licensee of Licensee could provide such services. Licensee may not terminate
Grant Prideco Limited's Sub-License without the prior written consent of Grant
(other than as a result of an uncured material breach thereof), which may be
withheld by Grant in its sole discretion.
(i) Licensees to Grant and its Affiliates
Licensee agrees to grant to Grant or any of its Affiliates a
non-exclusive license under the Technology and Patents to Thread, Reconstruct
and sell Atlas Bradford Oil Field Connections on Accessory Equipment in the
Exclusive Territory to the extent Grant or such Affiliate enters into a
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sub-license agreement with Licensee and pays all required royalties thereunder
to Licensee; provided, Licensee shall not be obligated to license Grant or its
Affiliates if Licensee determines in its reasonable good faith that the granting
of such license would not be economically or commercially advantageous to
Licensee.
SECTION 2.6 PATENT INFRINGEMENT
(a) Grant covenants not to bring suit against Licensee or any of its
Sub-Licensees for infringement of any Patent arising from Licensee's and its
Sub-Licensee's performance in strict accord with this Agreement.
(b) Any claims for any infringement of Technology, Patents or
Trademarks shall belong solely to Grant and any recoveries with respect thereto
shall belong to Grant except to the extent such recoveries solely and
specifically relate to an infringement of the Technology or Patents for Threaded
or Reconstructed Atlas Bradford Oil Field Connections on full length Products in
the Licensee Territories for which an exclusive license has been granted to
Licensee in such territories, in which case such recoveries shall belong to
Licensee to the extent of its interest. Licensee shall be primarily responsible
for the defense of any infringement claims with respect to Technology, Patents
or Trademarks in the Licensee Territories for which an exclusive license has
been granted to Licensee to the extent the claim relates to the Exclusive
Territories; provided, however, in the event Licensee does not diligently
enforce its rights under Technology, Patents and Trademarks in the Exclusive
Territory, then, upon written notice to Licensee, Grant may enforce those
rights. Grant shall also have the exclusive right to defend any claims for
infringement in Grant Territory and a right to participate at its expense in any
actions in the Exclusive Territory. Licensee, however, shall have no right to
bring any action with respect to any infringement for the Technology, Patents or
Trademarks without the prior written consent of Grant, which shall not be
unreasonably withheld. Grant shall be entitled to participate in such actions.
Licensee shall not be entitled to take any action that would adversely affect
the right or validity of any of Technology or Trademarks without the prior
consent of Grant, which may be withheld in its sole and absolute discretion.
(c) In the event Grant enters into any settlement with respect to any
infringement claim with respect to Technology, Patents or Trademarks, Grant
agrees that it will not release or extinguish any rights of Licensee to the
Technology, Patents or Trademarks for use in the Exclusive Territory.
SECTION 2.7 USE OF PRODUCTS BY END USERS
Use of Products and Accessory Equipment by end users (drilling
contractors, oil companies and other similar users) is not restricted by this
Agreement and such end users may use and transfer such Products and Accessory
Equipment freely throughout the world without restriction hereunder. Grant or
Licensee, as the case may be, however, may be subject to commissions on such use
and transfer under Section 2.3(g) or to any other applicable remedy for
transactions made in violation of the provisions of this Agreement.
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SECTION 2.8 COMMISSIONS
(a) In consideration of the undertakings made by Licensee hereunder,
Grant agrees to pay to Licensee the following commissions:
(i) A commission equal to ***% of any royalties received by
Grant and its Affiliates from a party that is not Affiliated with Grant
from the Threading by such unAffiliated party (other than from Licensee
and its Affiliates and its Sub- Licensees) of any Atlas Bradford
Connections on (a) Products or Accessory Equipment of carbon steel of
9% or less Cr that are sold or delivered for use in the Exclusive
Territory and (b) Products and Accessory Equipment of all grades with
Atlas Bradford Oil Field Connections that are sold or delivered for use
in Mexico, in both cases by such unAffiliated Party (other than
Licensee and its Affiliates and its Sub-Licensees) after the Effective
Date and during the term of this Agreement.
(ii) A commission equal to ***% of any payments made to Grant
or its Affiliates by an unAffiliated customer or distributor for any
Atlas Bradford Oil Field Connections on (a) Products and Accessory
Equipment of carbon steel of 9% or less Cr or on Products or Accessory
Equipment of all grades in the case of Mexico (whether or not the
Product that is Threaded is owned by the Customer or Grant or its
Affiliates prior to the sale) that are Threaded by Grant or any of its
Affiliates after the Effective Date and during the term of this
Agreement and that are ultimately sold or used in the Exclusive
Territory; provided, however, if Grant or Licensee cannot or does not
demonstrate the amount of the payment made to Grant or its Affiliates
for such Atlas Bradford Oil Field Connections and Licensee is able to
demonstrate that such Atlas Bradford Oil Field Connections were
Threaded by Grant or one or more of its Affiliates after the Effective
Date and during the term of this Agreement, then the commission
payable will be based on Grant's or its Affiliates' then existing
price list for such Atlas Bradford Oil Field Connections.
(iii) The foregoing commissions shall only be applicable to
Products sold after the Effective Date and only for those Products and
Accessory Equipment that are sold or shipped during the term of this
Agreement for consumption in the Exclusive Territory. Grant agrees to
provide to Licensee a report within 60 days following the end of each
calendar quarter setting forth a list of all sales or shipments of
Products and Accessory Equipment of carbon steel of 9% or less Cr (and
in the case of Mexico Products and Accessory Equipment of all grades)
containing Atlas Bradford Oil Field Connections made into the Exclusive
Territory by Grant's and its Affiliates' distributors, agents and
customers during the quarter. Such report shall be based on information
provided to Grant and Grant Affiliates and Grant licensees from such
distributors, agents and customers, the Grant licensees and any other
data known to Grant and Grant Affiliates. Licensee shall be entitled to
object to such report and if it is able to demonstrate that sales or
shipments of Products of carbon steel of 9% or less Cr containing Atlas
Bradford Oil Field Connections were made after the Effective Date in
the Exclusive Territory by Grant, the Grant Affiliates or Grant
Licensees (other than Licensee, its Sub-Licensees, Citra Tubindo, OCTL
or Citra Grant), Grant will be required to pay a commission with
respect to such sales.
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(iv) Grant shall pay any required commission contemporaneous
with the delivery of the report under Section 2.8(a)(iii) and
will be entitled to a credit against the commission payable
pursuant to this Section 2.8(a) for (x) all actual documented
expenses incurred by Grant in providing Licensee support for
Products and Accessory Equipment sold by it, Grant Affiliates and
their distributors, agents and customers in the Exclusive
Territory and (y) any commissions payable to Grant under Section
2.8(b).
(v) The commissions payable by Grant under this Section
2.8(a) shall not be in lieu of any other rights that Licensee may
have against Grant or any distributor or customer of Grant for
any sales of Atlas Bradford Oil Field Connections into the Home
Territories or for use in the Home Territories in violation of
this Agreement; provided, however, that a breach by a distributor
or customer of Grant of the resell or use restrictions required
under this Agreement shall not be considered a breach by Grant
under this Agreement and Licensee shall be entitled to take
action against a distributor or customer that acts in violation
of the resell and use restrictions contained herein; provided
further, however, that if a distributor or customer of Grant
violates the resell or use restrictions required under this
Agreement, Grant shall be obligated to pay to Licensee all
profits realized by Grant from such distributor or customer on
the sale of such Product and Atlas Bradford Oil Field Connection
that was resold by the distributor or customer in violation of
such restrictions.
(b) Although Licensee and its Affiliates shall be restricted from
making any sales of Atlas Bradford Oil Field Connections in the Grant Territory
(excluding Canada) and shall be required to restrict sales by customers (other
than customers who are end users that are purchasing for their own use and not
for resale), in recognition of Grant's retained rights to the Technology and
Patents, Licensee agrees to pay to Grant the following commissions:
(i) A commission equal to ***% of any royalties received by
Licensee and its Affiliates from a party that is not Affiliated
with Licensee from the Threading by such unAffiliated party
(other than from Grant and its Affiliates and its sub- licensees)
of any Atlas Bradford Connections on Products or Accessory
Equipment that are sold or delivered for use in the Grant
Territory (excluding Canada) by such unAffiliated party (other
than Grant and its Affiliates and its sub-licensees) after the
Effective Date and during the term of this Agreement.
(ii) A commission equal to ***% of any payments made to
Licensee or its Affiliates by an unAffiliated customer or
distributor for any Atlas Bradford Oil Field Connections on
Products (whether or not the Product that is Threaded is owned by
the Customer or Licensee or its Affiliates prior to the sale)
that are Threaded by Licensee or any of its Affiliates after the
Effective Date and during the term of this Agreement and that are
ultimately sold or used in the Grant Territory (excluding
Canada); provided, however, if Grant or Licensee cannot or does
not demonstrate the amount of the payment made to Licensee or its
Affiliates for such Atlas Bradford Oil Field Connections and
Grant is able to demonstrate that such Atlas Bradford Oil Field
Connections were Threaded by Licensee or one or more of its
Affiliates after the Effective Date and during the term of this
Agreement, then the commission payable will be based on
Licensee's or its Affiliates' then existing price list for such
Atlas Bradford Oil Field Connections.
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after the Effective Date and during the term of this Agreement,
then the commission payable will be based on Licensee's or its
Affiliates' then existing price list for such Atlas Bradford Oil
Field Connections.
(iii) The foregoing commission shall only be applicable to
Products sold after the Effective Date and only for those
Products that are sold or shipped during the term of this
Agreement for consumption in the Grant Territory (excluding
Canada). Licensee agrees to provide to Grant a report within 60
days following the end of each calendar quarter setting forth a
list of all sales or shipments of Products containing Atlas
Bradford Oil Field Connections made into the Grant Territory
(excluding Canada) by Licensee's and its Affiliates'
distributors, agents and customers during the quarter. Such
report shall be based on information provided to Licensee and
Licensee Affiliates and Licensee's sub-licensees from such
distributors, agents and customers, the Licensee's sub-licensees
and any other data known to Licensee and Licensee's sub-licensee
Affiliates. Grant shall be entitled to object to such report and
if it is able to demonstrate that sales or shipments of Products
of Accessory Equipment containing Atlas Bradford Oil Field
Connections were made after the Effective Date in the Grant
Territory (other than Canada) by Licensee, Licensee Affiliates
and Licensee's Sub-Licensees (other than Grant, Grant's
Affiliates, OCTL, Citra Tubindo or Citra Grant).
(iv) Licensee shall pay any required commission
contemporaneous with the delivery of the report under Section
2.8(b)(iii) and will be entitled to a credit against the
commission payable pursuant to this Section 2.8(b) for any
commissions payable to Licensee under Section 2.8(a).
(v) The commissions payable by Licensee under this Section
2.8(a) shall not be in lieu of any other rights that Grant may
have against Licensee or any distributor or customer of Licensee
for any sales of Atlas Bradford Oil Field Connections into the
Grant Territory (other than Canada) or for use in the Grant
Territory (other than Canada) in violation of this Agreement;
provided, however, that a breach by a distributor orcustomer of
Licensee of the resell or use restrictions required under this
Agreement shall not be considered a breach by Licensee under this
Agreement and Grant shall be entitled to take action against a
distributor or customer that acts in violation of the resell and
use restrictions contained herein; provided further, however,
that if a distributor or customer of Licensee or its
Sub-Licensees or its Affiliates violates the resell or use
restrictions required under this Agreement, Licensee shall be
obligated to pay to Grant all profits realized by Licensee or its
Affiliates from such distributor or customer on the sale of such
Product and Atlas Bradford Oil Field Connection that was resold
by the distributor or customer in violation of such restrictions.
(c) (i) Except as provided in Section 2.8(a)(v), commissions payable by
Grant and its Affiliates shall be limited to the sales price of the Atlas
Bradford Oil Field Connections as determined above and shall be net of discounts
and not include taxes, shipping, delivery,
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insurance and other similar charges or the price of Products or
Accessory Equipment on which the Atlas Bradford Oil Field
Connection is threaded. No commissions shall be payable by Grant
or its Affiliates under this Section 2.8 in respect of Atlas
Bradford Connections on Products or Accessory Equipment sold by
(i) a sub-licensee of Licensee or (ii) OCTL, Citra Tubindo or
Citra Grant to the extent otherwise permitted by the Agreement.
(ii) Except as provided in Section 2.8(b)(v), commissions
payable by Licensee and its Affiliates shall be limited to the
sales price of the Atlas Bradford Oil Field Connections as
determined above and shall be net of discounts and not include
taxes, shipping, delivery, insurance and other similar charges or
the price of Products or Accessory Equipment on which the Atlas
Bradford Oil Field Connection is threaded. No commissions shall
be payable under this Section 2.8 in respect of Atlas Bradford
Connections on Products or Accessory Equipment sold by (i) Grant
or its licensees (other than Licensee and its Affiliates and
Sub-Licensees) or distributors in respect to sales that were made
by Grant or (ii) OCTL, Citra Tubindo or Citra Grant.
(d) All commissions payable by Grant required under this Section 2.8
shall be paid to an account in the United States designated by Licensee from
time to time. All commissions payable by Licensee under this Section 2.8 shall
be paid to an account in the United States designated by Grant from time to
time. All commissions provided for hereunder shall be subject to any applicable
withholding or other similar taxes.
ARTICLE 3. CONFIDENTIAL INFORMATION
SECTION 3.1 DELIVERY OF PROPRIETARY DOCUMENTATION
Grant will, during the term of this Agreement, provide Licensee with
access to Proprietary Documentation relating to Grant Technology and Grant
Patents. Licensee agrees to refrain from: copying or abridging such Proprietary
Documentation; providing such Proprietary Documentation or copies thereof to any
third party (other than as necessary to allow Sub-Licensees to exercise their
rights and perform their obligations under the Sub-Licenses and subject to
appropriate confidentiality agreements for the benefit of Grant); or using such
Proprietary Documentation for any purpose other than performance under this
Agreement. Licensee agrees to promptly return all Proprietary Documentation
relating to the Grant Technology, including all copies and abridgments thereof,
to Grant upon termination of this Agreement.
SECTION 3.2 EXCHANGE OF CONFIDENTIAL INFORMATION
During the term of this Agreement, each party to this Agreement may or
will receive, directly or indirectly from the other party or from licensees or
Sub-Licensees, information which the other party, the licensees or the
Sub-Licensees, as the case may be, consider confidential ("CONFIDENTIAL
INFORMATION"). Confidential Information may be received in tangible form, or may
be received visually or orally. The receiving party agrees to hold in strict
confidence, and not to disclose to third
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parties, or use for any purpose other than performance under this Agreement any
Confidential Information which the receiving party receives from the disclosing
party in tangible form, marked "Confidential", or receives visually or orally
and with confirmation in writing as confidential by the disclosing party.
Further, the receiving party agrees to refrain from disclosing the disclosing
party's Confidential Information to any Person or party, except employees and
subcontractors of the receiving party who have a need to know the Confidential
Information in order for the receiving party to perform and receive its full
benefit under this Agreement and who have agreed in writing to maintain the
confidentiality of Confidential Information. The receiving party agrees to
promptly return all documentation and other tangible things embodying the
disclosing party's Confidential Information which are in the possession of or
under the control of the receiving party, upon termination of this Agreement for
any reason.
The above obligations of confidentiality and non-use of Confidential
Information apply both during the term of this Agreement and thereafter.
However, these obligations of confidentiality and non-use shall not apply to any
information which:
(a) was known to the receiving party, as shown by suitable evidence, at
the time the information was received from the disclosing party and who is not
subject to an obligation of confidentiality to the disclosing party; or
(b) is available, or becomes available to the public through no fault
of the receiving party, its Affiliates, licensees, Sub-Licensees or agents; or
(c) is disclosed to the receiving party by a third party who is not
subject to an obligation of confidentiality to the disclosing party; or
(d) is required by a final, unappealable order of any court or
government agency having competent jurisdiction over the information; or
(e) is independently developed by any of the parties without reference
to Confidential Information.
ARTICLE 4. MARKING PRODUCTS
SECTION 4.1 OBLIGATION TO XXXX
Licensee agrees to xxxx each Product or item of Accessory Equipment on
which an Atlas Bradford Connection is Threaded or Reconstructed by Licensee
pursuant to this Agreement with marks showing:
(i) the Atlas Bradford Connection was Threaded or
Reconstructed by Licensee under license from Grant;
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(ii) the appropriate Grant Trademark(s) for the Atlas
Bradford Connection; and
(iii) the appropriate patent number or reference to patent
numbers.
SECTION 4.2 USE OF TRADEMARKS
(a) Licensee agrees to use Grant Trademarks only in conjunction with
Atlas Bradford Connections Threaded or Reconstructed by Licensee or its
Sub-Licensees at their facilities in the Licensee Territories pursuant to this
Agreement and in literature and advertising as approved in advance by Grant
which approval shall not be unreasonably withheld and deemed granted if Grant
does not object in writing to it within thirty (30) days of the written
submission to it for approval. All goodwill relating to the Grant Trademarks
shall belong exclusively to Grant and in the event of a termination of this
Agreement and Licensee's or its Sub-Licensees' rights with respect to the Grant
Trademarks, no payment shall be due or payable to Licensee or its Sub-Licensees.
Licensee has no license, either by grant or inference, to use Grant Trademarks,
except as specifically allowed under this Agreement. Use by Licensee of Grant
Trademarks shall inure solely to the benefit of Grant. Licensee agrees to
refrain from using or seeking registration of any trademark or trade name the
same or confusingly similar to Grant Trademarks, both during the term of this
Agreement and thereafter.
(b) Subject to the reimbursement of all costs relating thereto,
Licensee may designate where Trademarks and Patents are to be filed in the
Licensee Territories (other than Canada). (c) Grant will be responsible for the
filing and registration of all Trademarks and Patents worldwide. Licensee will
pay prosecution and maintenance fees (including legal and agency costs) of such
Trademarks and Patents in the Exclusive Territory.
ARTICLE 5. NEW TECHNOLOGY; TECHNOLOGY AND TECHNICAL
ASSISTANCE; SALES AND MARKETING
SECTION 5.1 OBLIGATION TO PROVIDE BUSINESS AND TECHNICAL INFORMATION
Grant agrees to make available to Licensee promptly following the
execution of this Agreement (at Licensee's cost) business and technical
information which, in accord with industry practice is required to Thread or
Reconstruct Atlas Bradford Oil Field Connections on Products and Accessory
Equipment as contemplated under this Agreement and which Grant has available.
Technical information shall include, as required, drawings, inspection manuals,
gauging manuals, Grant standards and specifications of quality and performance
of Atlas Bradford Oil Field Connections on Products and Accessory Equipment and
manufacturing processes and procedures. Technical information shall be in the
English language and shall use the English system of weights and measures (e.g.,
inches, feet, pounds, gallons, etc.). Once such information is initially
provided, Grant shall be required to supplement the same on a reasonable
frequency and Licensee shall reimburse for the reasonable costs incurred by
Grant in providing such supplements.
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SECTION 5.2 TOOLING AND GAUGES
Licensee shall procure from reputable international suppliers, on a
royalty free basis to Grant, the Tooling and Gauges required for Threading and
Reconstruction of Atlas Bradford Connections on Products and Accessory Equipment
by Licensee and its Sub-Licensees pursuant to the licenses granted hereunder to
it. Grant shall provide Licensee at Grant's cost plus 20% with the necessary
drawings and specifications. Licensee shall require Sub-Licensees to follow
procedural rules issued by Grant relating to the Patents and Technology
requiring calibration, verification, service or verification of Gauges against
master Gauges held by Licensee. Licensee master Gauges shall in turn be verified
against Grant's master Gauges. Licensee may also purchase Gauges from Grant upon
terms and conditions prevailing in the market at the time of the sale. Licensee
shall be entitled to purchase Gauges from third parties.
SECTION 5.3 RIGHT TO INSPECT GAUGES
Grant shall have the right, but not the obligation, to periodically
inspect all Gauges used by Licensee and its Sub-Licensees in connection with the
Threading and Reconstruction of Atlas Bradford Connections on Products and
Accessory Equipment using the Technology or Patents, upon Grant giving five (5)
days prior written notice to Licensee. Grant will provide Licensee with
procedures to determine from inspection of such Gauges when recalibration is
necessary. Licensee shall be responsible for calibration of such Gauges of
Licensee and of those Sub-Licensees which are Affiliates of Licensee. Each
Sub-Licensee of Licensee shall be responsible under the terms of the Sub-License
Agreement with such Sub-Licensee for the calibration of its Gauges.
SECTION 5.4 TRAINING OF PERSONNEL
Licensee may, from time to time, at its own expense send a reasonable
number of Licensee or its Sub-Licensees employees to Grant's facilities for a
reasonable period of time, for the purpose of receiving technical assistance and
studying methods employed by Grant in the Threading and Reconstruction of Atlas
Bradford Oil Field Connections on Products and Accessory Equipment. The time
schedule and number of employees will be mutually agreed between Grant and
Licensee. Such employees will be given access to Grant's facilities to the
extent necessary for such purpose. Licensee shall indemnify and hold Grant
harmless from any claim, award, or damages arising from injury, sickness or
death of such employees, including the injury, sickness or death resulting from
the sole or contributory negligence of Grant, its employees, officers or agents.
Licensee shall pay all salaries or wages, and all expenses of Licensee's
representatives sent to Grant's facilities and shall pay Grant a fee of $200.00
per person for each day of training, subject to an annual increase (effective
for training provided from January 1, 1999) equal to the annual change in the
United States Producers Price Index occurred during the preceding year;
provided, however, that no payment shall be due by the Licensee for the initial
training provided in Houston for five days and for up to ten Licensee employees
during one year from the Effective Date of this Agreement.
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SECTION 5.5 AVAILABILITY OF SPECIALISTS
At the request of Licensee, Grant shall provide technical specialists
to consult with Licensee concerning Threading and Reconstruction of Atlas
Bradford Oil Field Connections on Products and Accessory Equipment, and assist
Licensee or Sub-Licensees, as the case may be, with problems which may arise.
Should Licensee or a Sub-Licensee require the services of technical specialists
at any place other than Grant?s manufacturing facility at Navasota, Texas, USA,
Grant shall be entitled to be paid the amount of all reasonable travel and
living expense for the technical specialist provided at Grant?s then current
daily rate, (present daily rate is $500.00 and shall be increased by no more
than 5% in any one year), for each day a technical specialist is away from his
home office. Provision of technical specialists shall depend upon availability.
Grant shall indemnify and hold Licensee and Sub-Licensees, as the case may be,
harmless from any claim, award or damages arising from injury, sickness or death
of Grant technical specialists resulting from the sole or contributory
negligence of Licensee or Sub-Licensee, as the case may be, their employees,
officers or agents.
SECTION 5.6 PROVISION OF FIELD SERVICE
In the event a customer of Licensee requests field service with respect
to Atlas Bradford Oil Field Connections Threaded or Reconstructed using Patents
or Technology within the Territories, Licensee shall either provide such
services with the technical specialists/field service personnel of its
Affiliates or request Grant to provide such service, in which case Grant may,
but shall not be obligated to, provide such services at its then current charges
for such services. In the event the customer requests field services from Grant
with respect to Atlas Bradford Oil Field Connections Threaded or Reconstructed
using Patents or Technology within the Territories (other than Canada and the
jurisdictions in which Grant Prideco Limited has licenses), Grant will inform
its customer that Licensee provides field services through its Affiliates.
SECTION 5.7 CHANGES IN DESIGNS, STANDARDS, SPECIFICATIONS AND PROCESSES
Grant reserves the right to make any changes in the design, standards,
specifications, or Threading processes, for Atlas Bradford Oil Field
Connections, Tooling and Gauges. Grant shall, when such items are first utilized
on a regular commercial basis, for fees equal to Grant's cost plus 20%, make
available to Licensee with new drawings, specifications, Manual revisions,
updated drawings, etc., for the Threading or Reconstruction of Atlas Bradford
Oil Field Connections on Products and Accessory Equipment under this Agreement
in accordance with Grant's then current standards and specifications of quality
and performance. Prior to such time, Grant shall have no obligation to provide
the same; provided, however, it is understood that such fees shall not be
payable for the cost of the technological improvements or changes made in the
design, specifications or Threading processes that were not initiated or
requested by Licensee and will be limited to the cost of making available such
matters.
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SECTION 5.8 LICENSEE IMPROVEMENTS
In the event that Licensee or any of its Sub-Licensees shall develop
any modifications or improvements in the design or manufacture of Atlas Bradford
Oil Field Connections using Patents or Technology during the term of this
Agreement, Licensee shall communicate such modifications or improvements to
Grant and hereby grants a royalty-free non-exclusive license to Grant to make,
use and sell Atlas Bradford Oil Field Connections on Products and Accessory
Equipment incorporating such technology under terms and conditions similar to
those provided in this Agreement, including territory and limitation of use, and
only for as long as Licensee is allowed to use the Patents and Technology,
except in the case of termination of this Agreement under Section 10.5, in which
case such license would have the same duration as that of the patents, if any,
disclosed under that license or would be in force for so long as the know-how
disclosed under that license remained confidential and secret.
SECTION 5.9 MAINTENANCE OF INFORMATION, GAUGES AND TOOLING
Licensee and its Sub-Licensees shall be responsible for the maintenance
of all Grant Proprietary Documentation, Confidential Information and Tooling
provided to them. This includes proper storage, inventory, and protection as
deemed necessary and as directed by Grant. Further, Licensee agrees to follow
all procedures established by Grant and applied generally to all licensees,
concerning the maintenance and inventory of manuals, drawings, other Proprietary
Documentation, and Gauges of Grant and further agrees that repair or replacement
of abused damaged or lost manuals, drawings, and Gauges will be charged to
Licensee, normal wear and tear excepted.
SECTION 5.10 BREACH OF MAINTENANCE AND NON DISCLOSURE OBLIGATION
The parties agree that if any Proprietary Documentation relating to the
disclosing party, Confidential Information, Technology or Gauges, in whole or in
part, or any reproduction of same, is found outside the receiving party's
possession (other than the possession by a Sub-Licensee of Licensee) without
prior written consent of the disclosing party in a manner that would reasonably
lead to believe that the receiving party has materially breached its obligations
hereunder, then the disclosing party has, in addition to its other legal
remedies, the right to terminate this Agreement in accordance with Section 10.5.
Each of Grant and Licensee shall also be entitled to seek injunctive relief for
a breach of this section without the necessity of proving irreparable harm and
without posting bond.
SECTION 5.11 RESEARCH AND DEVELOPMENT
(a) In the event Grant or any of its Affiliates develop any New Grant
Connections Licensee may request that the patents, technology and trademarks for
the New Grant Connections be added to the technology, patents and trademarks
licensed to Licensee hereunder subject to the rights of any co-inventors or
owners. In such case, a license of the patents, technology and trademarks
subject to the rights of any co-inventors or owners for the New Connections
shall be granted subject to the Licensee reimbursing Grant an amount equal to
50% of the actual documented costs, including internal costs, associated with
the investment, development and testing thereof and
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the payment of any transfer or sub-license fees and payments of royalties for
third parties. Once such costs are paid, subject to the rights of other owners,
the license for the patents and technology for the New Grant Connections shall
be deemed to be fully paid and subject to the terms hereof, including
exclusivity, territory and field of use and be included within the definitions
of Technology, Patents, and Trademarks. Notwithstanding the foregoing, Grant or
any of its Affiliates may seek and obtain a license of patents and technology
relating to Connections from an unAffiliated third party without an obligation
to license the same under this Agreement. The foregoing shall also not apply to
XL Technology.
(b) In the event Grant or any Affiliate thereof acquires patents or
technology through an asset or stock purchase, merger or other transaction
(excluding a transaction under which patents or technology or other rights are
acquired pursuant to a license) for any New Grant Connections, Licensee may
request that such patents, technology and trademarks for the New Grant
Connections be added to the patents, technology and trademarks licensed to such
party hereunder. In such case, subject to any limitations or restrictions
relating to such patents, technology and trademarks prior to the date on which
such patents and technology are acquired and the payment of any transfer or
sub-license fees, payments or royalties that would be payable to any
unAffiliated third party, a license of the patents, technology and trademarks
for the New Grant Connections shall be granted subject to the Licensee
reimbursing Grant for the New Grant Connections an amount equal to 50% of the
allocated cost to Grant of the patents, technology and trademarks relating to
the New Grant Connections to be licensed. Once such costs are paid, the license
for the patents, technology and trademarks for the New Grant Connections shall
be deemed to be fully paid and subject to the terms hereof, including
exclusivity, territory and use and be included within the definition of
Technology, Patents, and Trademarks. Notwithstanding the foregoing, Grant or any
of its Affiliates may seek and obtain a license of patents and technology
relating to Connections from an unAffiliated third party without an obligation
to license the same under this Agreement. The foregoing shall also not apply to
XL Technology.
(c) Contemporaneous herewith, EVI, as the controlling Affiliate of
Grant, and Dalmine, Siderca and Tamsa, as Affiliates of Licensee, have executed
an agreement (the "Affiliates Agreement") to be bound by the provisions of this
Agreement to the extent there are obligations of Grant's and Licensee's
Affiliates. Any breach of the Affiliate Agreement shall be considered a breach
of this Agreement by the party affiliated with the breaching party.
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SECTION 5.12 INFORMATION TO CUSTOMERS
Grant and the Licensee agree to inform their customers of this
Agreement pursuant to a general notice and/or press release to be mutually
agreed by them. Such notice shall include a notice to distributors that (i) the
distributors of Grant shall be restricted from reselling Products with Atlas
Bradford Oil Field Connections sold by Grant to the distributor after the
Effective Date in the Home Territories or knowingly for use in the Home
Territories and (ii) the distributors of License and its Sub-Licensees shall be
restricted from reselling Products with Atlas Bradford Oil Field Connections
sold to the distributor after the Effective Date in the Grant Territory (other
than Canada) or knowingly for use in the Grant Territory (other than Canada).
SECTION 5.13 SALES LITERATURE
Grant agrees to assist Licensee, at Licensee's expense, in the
preparation of any sales literature used by Licensee or Sub-Licensees pursuant
to this Agreement. Licensee shall obtain Grant's prior written approval on all
sales literature for Atlas Bradford Connections threaded or reconstructed with
Patents or Technology (which approval shall not be unreasonably withheld) before
literature is distributed. Grant's approval shall be deemed granted whenever
Grant does not object to the proposed literature within 15 days of the written
request for approval made by Licensee.
ARTICLE 6. PRODUCT QUALITY AND PERFORMANCE
SECTION 6.1 COMPLIANCE OBLIGATIONS
Licensee understands that the safety of Atlas Bradford Connections and
protection of Trademarks are primary reasons for maintaining the quality and
performance of the licensed Atlas Bradford Connections. In this regard Licensee
agrees at all times to provide trained personnel and operate its facilities in
the manner necessary to Thread or Reconstruct Atlas Bradford Oil Field
Connections on Products and Accessory Equipment in accordance with Technology
and Patents and in strict conformance to the specifications and standards of
quality employed by Grant for products the same or similar to Atlas Bradford
Connections. Licensee further agrees to ensure that all manufacturing
procedures, finishing and gauging practices set forth in the aforementioned
Technology and Patents shall be strictly adhered to by Licensee. Any changes in
manufacturing procedures, such as threading, finishing and gauging shall be made
only with Grant's written consent. In the event any Atlas Bradford Connections
utilizing Patents and Technology that are Threaded or Reconstructed by Licensee
fail to comply with Grant's standards and specifications of quality, Licensee
shall refrain from marking any non-complying connections with any Trademark
called for in Article 4. To assure compliance with this provision, Grant shall
make available to Licensee on an ongoing basis Grant's current specifications
and standards for finishing.
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SECTION 6.2 RECORDS
Licensee shall record and maintain, in a reasonable manner, data sheets
containing measurements on each and every Atlas Bradford Connection Threaded and
Reconstructed by Licensee pursuant to this Agreement. Said data sheets shall be
available for Grant's auditor review and shall be retained by Licensee for a
period of five (5) years following the Threading or Reconstruction of the
licensed Atlas Bradford Connections.
SECTION 6.3 QUALITY PROBLEMS
Licensee and Grant shall cooperate to resolve problems Licensee or its
Sub-Licensees may have in complying with Atlas Bradford Connection standards and
specifications of quality. In the event Atlas Bradford Connections that are
Threaded or Reconstructed by Licensee or its Sub-Licensees utilizing the
licenses from Grant fail to comply with Grant standards and specifications of
quality, then Licensee and its Sub-Licensees, as the case may be, shall refrain
from marketing or selling such non-conforming Atlas Bradford Connections until
such time as the problems causing such non conformance are solved.
SECTION 6.4 COVENANT NOT TO XXXX NON PERFORMING PRODUCTS
Licensee shall not place any Trademark on any product which does not
comply with Grant standards and specifications of quality for its licensed Atlas
Bradford Connections. To assure compliance with this provision, Grant shall make
available to Licensee on an ongoing basis Grant's current specifications and
standards for finishing.
ARTICLE 7. EFFECTIVE DATE; CONSIDERATION
(a) This Agreement shall become effective if and only if the purchase
by Pridecomex Holding, S.A. de C.V. of the stock of TF de Mexico, S.A. de C.V.
pursuant to the Stock Purchase Agreement dated as of the Effective Date between
XXX Xxxxxxxxxxx, Inc., Pridecomex Holding, S.A. de C.V., Tamsa and Tamsider S.A.
de C.V. is consummated.. If such purchase is not consummated prior to October
31, 1998, this Agreement shall be terminated and void. Until this Agreement
becomes effective, Grant and its Affiliates shall have no obligations and will
not be restricted by the provisions of this Agreement.
(b) The licenses granted hereunder by Grant are being provided in
consideration for the agreements hereunder and other agreements that are being
entered into with Affiliates of Licensee.
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ARTICLE 8. WARRANTY
SECTION 8.1 WARRANTY
(a) Grant represents and warrants to Licensee that except as set forth
in Schedule 8.1(a), Grant is not currently aware of any claims by third parties
that the Technology infringes upon or violates the rights of any third party in
the Exclusive Territory.
(b) GRANT WARRANTS THAT THE TECHNOLOGY SUPPLIED TO LICENSEE PURSUANT TO
THIS AGREEMENT SHALL, IF PROPERLY APPLIED UNDER CIRCUMSTANCES EQUIVALENT AT
GRANT'S MANUFACTURING OPERATIONS, WILL PERMIT THE LICENSEE TO THREAD ATLAS
BRADFORD CONNECTIONS OF THE SAME KIND AND NATURE THREADED BY GRANT AT ITS
FACILITIES, PROVIDED, HOWEVER, NO REPRESENTATION OR WARRANTY IS MADE OR GIVEN AS
TO THE SUITABILITY OF THE TECHNOLOGY TO THREAD PRODUCTS IN ANY MANNER DIFFERENT
THAN THAT CONDUCTED BY GRANT. EXCEPT AS EXPRESSLY PROVIDED HEREIN, THE PATENTS,
TECHNOLOGY AND TRADEMARKS TO BE LICENSED UNDER THIS AGREEMENT ARE BEING LICENSED
WITHOUT REPRESENTATION OR WARRANTY OF ANY KIND OR NATURE, INCLUDING TITLE,
DESIGN, PERFORMANCE, FITNESS FOR A PARTICULAR PURPOSE, ABSENCE OF DEFECTS,
LATENT OR OTHERWISE, INFRINGEMENT OR MERCHANTABILITY. IT BEING UNDERSTOOD THAT
THE LICENSES GRANTED HEREUNDER ARE BEING PROVIDED STRICTLY ON AN "AS IS" WHERE
IS BASIS. GRANT'S SOLE OBLIGATION TO LICENSEE UNDER THIS WARRANTY IS LIMITED TO
REPLACEMENT OF NON-CONFORMING TECHNOLOGY.
SECTION 8.2 EXCLUSION OF TOOLING
Licensee is aware that Tooling, including threadform inserts, groove
tools, Teflon seal rings, and thread protectors supplied by Grant for each Atlas
Bradford Oil Field Connection for Products and Accessory Equipment which
Licensee Threads or Reconstructs pursuant to this Agreement may not be of
Grant's manufacture. Accordingly, Licensee agrees that Grant shall not be
warrantor with respect to any threadform inserts, groove tools, Teflon seal
rings, thread protectors or other Tooling which Licensee may purchase directly
from any vendor. Licensee shall be responsible for the inspection of said
Tooling from any of such vendors.
SECTION 8.3 WARRANTY TO CUSTOMERS
Whenever market practice may allow it, Licensee agrees to use
reasonable efforts, and to require its Sub-Licensees to use reasonable efforts,
to limit their warranty of all Atlas Bradford Oil Field Connections on Products
and Accessory Equipment Threaded or Reconstructed by it or its Sub-Licensees
pursuant to this Agreement to the terms stated in Schedule "E".
ARTICLE 9. INDEMNITY
Without prejudice to Grant's obligations under Section 8.1, Licensee
hereby agrees to indemnify, defend and hold Grant, its Affiliates and their
respective officers, directors, employees, agent, stockholders and controlling
persons and their respective successors and assigns harmless
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from and against in respect of any and all liabilities, losses, damages,
demands, assessments, claims, costs and expenses (including interest, awards,
judgments, penalties, settlements, fines, diminutions in value, cost and
expenses incurred in connection with investigating and defending any claims or
causes of action (including, without limitation, attorneys' fees and expenses
and all fees and expenses of consultants and other professionals)) actually
suffered, incurred or realized by such party arising out of or resulting from or
relating to the use of the Technology, Patents or Trademarks by Licensee or any
of its Affiliates, the Threading, the Reconstruction, sale or use of any Atlas
Bradford Oil Field Connections on Products or Accessory Equipment Threaded,
Reconstructed, sold or used by the Licensee or any of its Affiliates or for any
breach of any covenant or agreement by Licensee hereunder or its Affiliates
under the Affiliates Agreement.
ARTICLE 10. TERM AND TERMINATION
SECTION 10.1 DURATION
This Agreement shall become effective and the rights herein granted
shall commence from the Effective Date and continue in effect until December 31,
2027 and thereafter for successive three (3) year periods unless notice of
termination is given on or prior to December 31, 2026 or one (1) year prior to
the expiration of any subsequent extension. Grant, however, agrees that from the
date hereof until the earlier of the Effective Date and the date on which the
Stock Purchase Agreement dated as of June 19, 1998, between XXX Xxxxxxxxxxx,
Inc., Pridecomex Holding, S.A. de C.V., Tubos xx Xxxxx de Mexico S.A. and
Tamsider S.A. de C.V. is terminated pursuant to its terms prior to the Effective
Date, it will not (i) grant any new licenses or amend or renew any existing
licenses to Thread, Reconstruct or sell in the Exclusive Territory or inside of
the Grant Territory foruse in the Exclusive Territory, Atlas Bradford Oil Field
Connections on Products or Accessory Equipment of carbon steel of 9% or less Cr
unless such licenses are (x) entered into in the ordinary course of business,
(y) may be terminated without liability to Licensee on at least six months
notice and may be assigned to Licensee and (z) non-exclusive, (ii) take similar
action with respect to licenses as described in clause (i) (subject to the same
exceptions) with respect to Products or Accessory Equipment of all grades in
Mexico or for use in Mexico and (iii) take any action that would be prohibited
under the last sentence of Section 2.5(g)(i) had this Agreement been judged in
effect.
Whenever notice of termination is given during the remaining life of
this Agreement, Licensee or Grant, as the case may be, and any of its
Sub-Licensees shall (a) be entitled to complete the work as scheduled with their
customers on any orders requiring Products or Accessory Equipment placed prior
to the termination notice, irrespective of the agreed time for performance and
(b) may accept new orders for Threading or Reconstruction of Atlas Bradford
Connections on Products or Accessory Equipment derived from quotations dated
before the last day of the relevant period on which termination becomes
effective, as contemplated in this Agreement, provided that such Atlas Bradford
Connections are shipped not later than ninety (90) days from the last day of the
life of this Agreement. Notwithstanding the foregoing, nothing in this Agreement
shall be construed to provide for a license or other rights to use or employ
technology or patents inany jurisdiction in which such license or grant of
rights would not be lawful and the term of any license granted hereunder with
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respect to any patent in any jurisdiction shall not extend beyond the expiration
date of such patent in such jurisdiction.
SECTION 10.2 SURVIVING OBLIGATIONS
Neither party shall be relieved of its continuing obligations upon
termination of this Agreement. In this regard, subject to the provisions of this
Agreement:
(a) The parties shall abide by their continuing obligations of
confidentiality and non-use of Confidential Information, and shall, on the day
of termination, return all Confidential Information, including all copies
thereof, which are in their possession or under their control.
(b) Licensee shall promptly return to Grant all Grant Gauges, Tooling,
Proprietary Documentation, Technology and Confidential Information, including
all copies thereof, which are in the possession or under control of Licensee.
(c) Licensee and Grant shall abide by their obligations and indemnity
under this Agreement.
SECTION 10.3 INSOLVENCY
In the event Licensee, its successors or assigns shall become bankrupt
or insolvent, or enter into a composition with creditors, or if a receiver shall
be appointed, or if any petition or application for reorganization be filed by
or against it, then this Agreement may be terminated by Grant. However, Licensee
shall not be thereby discharged from any liability to Grant for any amounts due
at the time of termination or from antecedent liability and the licenses to
Grant shall continue in effect without impairment.
SECTION 10.4 MANUFACTURE OF PRODUCTS IN VIOLATION OF AGREEMENT
If Licensee or any of the Sub-Licensees that is an Affiliate of the
Licensee Threads, Reconstructs or sells any Atlas Bradford Connections on
Products or Accessory Equipment in violation of the terms and provisions of this
Agreement or uses or applies Technology, Patents or Trademarks in association
with products of a type other than those licensed under this Agreement, Grant
shall, upon 120 days written notice, be entitled to terminate the licenses
granted by it under this Agreement; provided, however if such breach is cured
within such time period Grant may not terminate the licenses; provided further,
however, that if Licensee or any Sub-Licensee that is an Affiliate of Licensee
within 18 months thereafter again violate the terms and conditions of this
Agreement, Grant may, upon written notice, immediately terminate all licenses
granted by it hereunder without any cure period. Licensee shall also be liable
to Grant for all damages of every nature resulting from such violations of this
Agreement or the Affiliates Agreement by Licensee's Affiliates, and further,
Licensee agrees that it shall be subject to an injunction of the appropriate
court against any further such violations without the requirement to prove an
inadequate remedy at law or obligation to post bond or similar security.
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SECTION 10.5 BREACH OF OTHER OBLIGATIONS
If either party shall fail to observe or perform any of its material
promises, agreements, or undertakings under this Agreement or a party's
Affiliate fails to observe any of its material promises, agreements or
undertakings under the Affiliates Agreement, and fails to remedy any such breach
within one hundred and twenty (120) days of notice to do so from the other
party, then the aggrieved party may, upon expiration of the one hundred and
twenty (120) days notice period, give written notice of termination of the
licenses granted by such party under this Agreement either forthwith or at a
future date designated by the aggrieved party. The parties agree that, without
prejudice to any indemnification rights they may be entitled to, the party in
breach of its obligations shall be subject to an injunction of the appropriate
court against any further such violations without the requirement to prove an
inadequate remedy at law or obligation to post bond or similar security.
ARTICLE 11. NOTICES
All notices, consents, waivers, and other communications under this
Agreement must be in writing and will be deemed to have been duly given when (a)
delivered by hand (with written confirmation of receipt), (b) sent by telecopier
(with written confirmation of receipt), provided that a copy is mailed by
certified mail, return receipt requested, or (c) when received by the addressee,
if sent by a nationally recognized overnight delivery service (receipt
requested), in each case to the appropriate addresses and telecopier numbers set
forth below (or to such other addresses and telecopier numbers as a party may
designate by notice to the other parties):
GRANT LICENSEE
Attention: Xxxx XxXxxxx Attention: Xxxxx Xxxxxxx
Grant Prideco, Inc. Simini 250
X.X. Xxx 00000 0000 Xxxxxxx, Xxxxxxxxx de Buenos Aires
Xxxxxxx, XX 00000-0000 Argentina
Facsimile No.: 000 000 0000 Facsimile No.: (54489) 3-3227
with a copy to: Xxxx X. Xxxxx Telephone No.:
Facsimile No.: 000 000 0000
Telephone No.: 000 000 0000
and copy to:
Xxxxxx X. Xxxx Xxxxxxxx X. X. Xxxxxxx
XXX Xxxxxxxxxxx, Inc. Xxxxxxx X. Xxxx 1067, piso 00
0 Xxxx Xxx Xxxx, Xxxxx 0000 1001 Buenos Aires
Xxxxxxx, XX 00000 Argentina
Facsimile No.: (000) 000-0000 Facsimile No.: (000) 000-0000
Telephone No.: (000) 000-0000 Telephone No.: (000) 000-0000
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ARTICLE 12. GOVERNMENTAL APPROVAL
SECTION 12.1 US EXPORT CONTROL REGULATIONS
Grant's obligations under this Agreement are subject to the export
control regulations of the government of the United States of America, the
European Union and other applicable governments. Compliance of the parties with
such export control Regulations is a condition of this Agreement. Nothing
contained in this Agreement shall be deemed to have granted any rights contrary
to such laws or Regulations.
SECTION 12.2 REGISTRATION OF AGREEMENT
Promptly upon execution and delivery of this Agreement, Licensee shall
register, if required, this Agreement in the appropriate departments, agencies,
and/or offices of government within the Territories, and shall gain all
necessary approvals as may be required by law in the Territories.
SECTION 12.3 COOPERATION TO OBTAIN APPROVALS AND LICENSES
Grant and Licensee shall cooperate in obtaining any approvals or
licenses which may be required in connection with the implementation of any
portion of this Agreement.
ARTICLE 13. FORCE MAJEURE
If performance of this Agreement or of any obligation under this
Agreement, except payment of moneys due and maintaining information and
documents in confidence, is prevented, restricted or interfered with by acts of
government, war, rebellion, riot, labor unrest, unavailability of materials,
Acts of God, or any other force, act or condition beyond the reasonable control
of the parties ("Force Majeure"), the party affected by Force Majeure shall be
excused from such performance to the extent of such prevention, restriction or
interference, provided that the party so affected promptly notifies the other
party of the Force Majeure condition, uses its best efforts to avoid or remove
the Force Majeure condition, and continues performance under this Agreement with
utmost dispatch when such Force Majeure condition is removed. In the event a
Force Majeure condition results in suspension of performance under this
Agreement for a continuous period of one year or more, the party not affected by
the Force Majeure condition may terminate this agreement by giving the affected
party written notice of termination.
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ARTICLE 14. GOVERNING LAW; CONSTRUCTION
SECTION 14.1 GOVERNING LAW
This Agreement shall be deemed made pursuant to, and shall be governed
by the laws of the State of New York, except the conflict of laws provisions
thereof.
SECTION 14.2 SEVERABILITY
Both parties expressly agree that it is not the intention of either
party to violate any public policy, statue or common law; and if any
provision(s) of this Agreement shall be held to be invalid, illegal or
unenforceable, in whole or in part, in any jurisdiction within which the
Agreement is to be performed, or if any appropriate government agency or
authority shall require the parties to delete any provision of this Agreement,
such invalidity, illegality, enforceability or deletion shall not impair or
affect the remaining provisions of this Agreement, so long as the material
purposes of this Agreement can be determined and effectuated. The parties shall
endeavor in good faith negotiations to replace the invalid, illegal,
unenforceable or deleted provisions by valid provisions, the effect of which
comes as close as legally possible to the intention of the parties upon entering
into this Agreement.
SECTION 14.3 NON WAIVER
The failure of one party hereto to enforce at any time any of the
provisions of this Agreement, or exercise any rights or any elections herein
provided, shall in no way be considered to be a waiver of such provisions,
rights or elections or in any way to affect the validity of this Agreement. The
exercise by said party of any rights or any elections under the terms of this
Agreement shall not preclude or prejudice said party from exercising the same or
any other rights or elections it may have under this Agreement.
ARTICLE 15. ASSIGNMENT
This Agreement shall be binding upon and inure to the benefit of the
parties, their successors and assigns, provided that the assignor shall remain
liable to the other party for the obligations arising under this Agreement.
Notwithstanding the foregoing Licensee may not assign its rights, directly or
indirectly, by merger, sale of assets, conversion or a change in control of
Licensee, to any person or entity that directly or through an Affiliate Threads,
Reconstructs or sells Connections on Products and Accessory Equipment in the
Grant Territory. Further any such assignment shall, at the election of Grant, be
void or result in an immediate termination of the licenses granted hereunder to
Licensee.
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ARTICLE 16. SETTLEMENT OF DISPUTES
If, during the term of this Agreement or after its termination,
disputes, controversies, claims or differences arising out or relating to this
Agreement (including any questions as to the existence, validity, termination,
discharge, breach or enforceability of this Agreement and of this arbitration
clause), arise between Grant and Licensee, the parties shall take every
reasonable effort to negotiate an amicable settlement. In the event the parties
are unable to reach a settlement within thirty (30) days after notice by any of
the parties is given to the other party acknowledging the existence of a dispute
to be solved in accordance with the provisions of this section, then either
party may request arbitration pursuant to the then current rules of the
International Chamber of Commerce domiciled in Paris for arbitration in
accordance with the rules of said organization. Each party shall appoint one
arbitrator of its choice, and the two appointed arbitrators shall appoint a
third arbitrator. A decision agreed to by at least two of the arbitrators shall
be the decision of the Arbitration proceeding. In the event either party fails
to appoint an arbitrator or in the event no agreement is reached between the two
arbitrators as to the appointment of the third arbitrator in accordance with the
foregoing provisions, such arbitrator or arbitrators shall be appointed, upon
application of the interested party, by the Court of Arbitration of the
International Chamber of Commerce. Unless the parties agree otherwise, the site
of the arbitration shall be New York, New York. Arbitration proceedings shall be
conducted in the English language. Any decision or award of the arbitrators
shall be based solely on the provisions of this Agreement, provided, however,
that to the extent that the subject matter for the decision or award is not
provided for in such provisions, the decision or award shall be based upon the
controlling law of this Agreement, excluding the conflicts of laws provisions
thereof. The arbitrators shall not be requested nor shall they have the power to
render any decision or award except in accordance with the preceding sentence.
The award rendered in any arbitration commenced hereunder shall be final and
conclusive and judgment thereon may be entered in any court having jurisdiction
for its enforcement. Neither party shall appeal to any court from the decision
of the arbitration panel. In addition, except for injunctive relief in aid of
arbitration, neither party shall have any right to commence or maintain any suit
or legal proceeding concerning a dispute hereunder until the dispute has been
determined in accordance with the arbitration procedure provided for herein and
then only for enforcement of the award rendered in such arbitration. Pending
settlement of any dispute, the parties shall abide by their obligations under
this Agreement without prejudice to a final adjustment in accordance with an
award rendered in an arbitration settling such dispute. A party may be entitled
to receive injunctive relief from a court of competent jurisdiction in aid of
arbitration.
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ARTICLE 17. MISCELLANEOUS
SECTION 17.1 EXISTING LICENSES
(a) Non Renewal and Termination
(i) Except as provided herein, including without limitation
Grant's rights to make Distribution Sales and International Company Sales and
the rights of customers and distributors as provided in Sections 2.3 and 2.8,
Grant shall refrain from renewing and shall promptly terminate or assign all
licenses with respect to the Technology and Patents granted to other Persons for
the Threading, Reconstruction of Atlas Bradford Oil Field Connections on
Products or Accessory Equipment outside of the Grant Territory; provided,
however, Grant will not be obligated to terminate any license under conditions
where Grant would suffer financial loss unless Licensee indemnifies Grant for
any such loss in a manner satisfactory to Grant.
(ii) Except as provided herein, including without limitation
Grant's rights to make Distribution Sales and International Company Sales and
the rights of customers and distributors as provided in Sections 2.3 and 2.8,
Grant shall refrain from renewing and shall promptly terminate all licenses with
respect to the Technology and Patents granted to other Persons for Threading,
Reconstruction or sale of Atlas Bradford Oil Field Connections on Products
within the Grant Territory but only with respect to the Threading,
Reconstruction or sale of Atlas Bradford Oil Field Connections on Products for
use outside of such territory.
(iii) The foregoing provisions of this Section 17.1 shall not
apply to any licenses relating to the sale of Atlas Bradford Oil Field
Connections by any distributor located in the Grant Territory (other than any
United States steel mill) or any use licenses granted to customers and end
users.
(iv) Grant agrees to provide to Licensee within two weeks from
the date hereof a list, together with copies thereof, of all licenses currently
existing and in effect granted by Grant with respect to the right to Thread,
Reconstruct or sell Atlas Bradford Oil Field Connections on Products and
Accessory Equipment in the Exclusive Territory and in the Grant Territory for
use in the Exclusive Territory excluding (i) licenses to sell granted to
distributors, (ii) rights of customers and end users to use and resale Products
and Accessory Equipment and (iii) those licenses that may be terminated by Grant
prior to the Effective Date.
(b) Amendment
Grant shall use reasonable efforts to have its current licenses with
other Persons to be amended in order to avoid any conflict with this Agreement.
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(c) Information and Evidence of Performance
Upon Licensee's request Grant shall disclose to Licensee the material
license terms of all of its existing licenses related to the Exclusive
Territories covering the Threading, Reconstruction or sale of Atlas Bradford Oil
Field Connections on Products and Accessory Equipment and shall give reasonable
evidence of having complied with the undertakings made in the preceding
subsections (a) and (b).
(d) Exception
The obligations of Grant set forth in this Section 17.1 shall not apply
to (i) the rights of any distributor, customer or end user, (ii) the Citra
License, (iii) the rights of OCTL described herein and (iv) the rights of Citra
Grant described herein.
SECTION 17.2 ENTIRE AGREEMENT
This Agreement contains the entire Agreement between the parties
applying to the matters herein contained and has been entered into relying only
upon the provisions contained herein and not upon any other representation by
either of the parties. This Agreement supersedes all representations, agreement,
statements and understandings whether written or oral, relating to such matters
made prior to execution of this Agreement. This Agreement can only be amended by
an agreement in writing executed by all the parties hereto. This Agreement may
not be modified, supplemented, explained or waived except as agreed to in a
writing executed by both parties.
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SECTION 17.3 HEADINGS
The headings used in this Agreement are inserted for convenience and
identification only, and are not intended to describe, interpret, define, or
limit the scope, extent or intention of this Agreement or any provision hereof.
SECTION 17.4 CHOICE OF LANGUAGE
This Agreement has been prepared in English and, notwithstanding any
translation of this Agreement into any other language, the English version of
this Agreement shall control in all respects.
SECTION 17.5 NO PARTNERSHIPS
Nothing contained in this Agreement shall be construed to constitute a
partnership or other similar relationship between Grant, Licensee or any of
their respective Affiliates nor to confer any fiduciary or similar relationship
between Grant, Licensee or any of their respective Affiliates.
IN WITNESS WHEREOF, each party has caused this Agreement in multiple
original to be subscribed by duly authorized representative on the Effective
Date.
GRANT PRIDECO, INC. DST DISTRIBUTORS OF STEEL
TUBES LIMITED
By: /s/ [Illegible] By: /s/ [Illegible]
-------------------------- ------------------------------
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GRANT PRIDECO, INC.
DST DISTRIBUTORS OF STEEL TUBES LIMITED
MASTER TECHNOLOGY LICENSE AGREEMENT
SCHEDULE "C"
DEFINITIONS
"ACCESSORY EQUIPMENT" means crossovers, connectors, pup joints, liner hangers,
landing nipples, packers, packer stringers, end line pressure control equipment,
safety valves, gas lift valve mandrels, lift plugs, lift caps, hydrostatic test
plugs, hydrostatic test caps, handling plugs, handling caps, discharge head
hangers, float shoes, float guides, float collars, flow couplings collars blast
joints, tubing anchors, side pocket mandrels, couplings and similar equipment.
"AFFILIATE" of any specified Person means any other Person directly or
indirectly controlling or controlled by or under direct or indirect common
control with such specified Person. For the purposes of this definition,
"control" when used with respect to any specified Person means the power to
direct the management and policies of such Person directly or indirectly,
whether through the ownership of voting securities, by contract or otherwise;
and the terms "controlling" and "controlled" have meanings correlative to the
foregoing. Dalmine, Siderca and Tamsa and their respective Affiliates and
successors and assigns shall be deemed Affiliates of Licensee. OCTL, Citra
Tubindo and Citra Grant, and any entity controlled by them, shall not be
considered Affiliates of Grant.
"ATLAS BRADFORD CONNECTIONS" mean the current line of Atlas Bradford Connections
described in Exhibit A and any additions or modifications made to that product
line in the future.
"ATLAS BRADFORD OIL FIELD CONNECTIONS" mean Oil Field Connections that utilize
an Atlas Bradford Connection.
"CONNECTIONS" mean premium connections for Products and Accessory Equipment and
shall specifically exclude API and similar connections.
"DESIGNATED ACCESSORY EQUIPMENT" means crossovers, couplings and pup joints.
"DISTRIBUTION SALES" means any sale in the Grant Territory to a distributor
or agent of Grant or any of its Affiliates or Grant Licensees of any Atlas
Bradford Oil Field Connections on Products that have been Threaded or
Reconstructed to the extent that such Atlas Bradford Oil Field Connection is
sold to such distributor for its inventory as long as Grant or the Grant
Affiliate, as the case may be, is not advised by the distributor or agent that
the Product to which such Atlas Bradford Connection is placed is destined for
use in a part of the Exclusive Territories; provided that a Distribution Sale
shall not include a sale of a Product with an Atlas Bradford Oil Field
Connection
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that is to be resold by the distributor in the Home Territories or the sale of
an item of Designated Accessory Equipment with an Atlas Bradford Oil Field
Connection that is to be resold in Mexico.
"EFFECTIVE DATE" means the date on which the purchase by Pridecomex Holding,
S.A. de C.V. of the stock of TF de Mexico, S.A. de C.V. pursuant to the Stock
Purchase Agreement dated as of June 19, 1998, between XXX Xxxxxxxxxxx, Inc.,
Pridecomex Holding, S.A. de C.V., Tamsa and Tamsider S.A. de C.V. is
consummated.
"EXCLUSIVE TERRITORY" means the world except Canada and the United States of
America and their respective offshore waters (including any country or
jurisdiction that may in the future lie within such areas).
"GAUGES", with respect to a party, means such party's proprietary gauges and
gauge tools necessary for the other party to Thread or Reconstruct Atlas
Bradford Connections on Products and Accessory Equipment pursuant to the
licenses granted hereunder to it.
"GRANT" means Grant Prideco, Inc.
"GRANT LICENSEES" means any Person to whom Grant or a Grant Affiliate has
licensed rights to Thread, Reconstruct and/or sell Atlas Bradford Oil Field
Connections on Products or Accessory Equipment in accordance with this
Agreement.
"GRANT TERRITORY" means the United States of America, Canada and their
respective offshore waters and territories (including any country or
jurisdiction that may in the future lie within the current territorial
boundaries of the United States of America, Canada and its respective offshore
waters and territories).
"HOME TERRITORY" means Mexico, Argentina and Italy and their respective offshore
waters and territories (including any country or jurisdiction that may in the
future lie within the current territorial bodies of Mexico, Argentina and Italy
and their respective offshore waters and territories).
"INTERNATIONAL COMPANY SALES" means any sale in the Grant Territory of Atlas
Bradford Connections that have been Threaded or Reconstructed on a Product or an
item of Accessory Equipment for an international contractor or exploration and
development company or similar entity that may purchase Products and Accessory
Equipment with Atlas Bradford Connections for use within its own organization
without reference to a specific location nor knowledge by Grant or the Affiliate
of Grant, as the case may be, of such specific locations.
"LICENSEE" means DST Distributors of Steel Tubes Limited.
"NEW GRANT CONNECTIONS" means any newly designed or acquired Oil Field
Connections for carbon and chromium steel Products and Accessory Equipment in
which Grant or its Affiliates may acquire an interest in the future excluding
any XL Technology or any Connection the rights to
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Thread, Reconstruct or sale are acquired pursuant to a license to Grant or one
or more of its Affiliates.
"NON-EXCLUSIVE TERRITORY" means the world, excluding the United States of
America and its offshore waters and territories (including any country or
jurisdiction that may in the future lie within such areas).
"OIL FIELD CONNECTIONS" mean Connections for (i) carbon and chromium steel
tubular Products having an outside diameter of less than 20" and designed for
the production of crude oil and (ii) Accessory Equipment; provided "Oil Field
Connections" shall specifically exclude (a) API and similar connections, (b)
Connections utilizing XL Technology and (c) Connections used for marine Products
and drill pipe. Chromium steel shall include, but not be limited to, 13% Cr,
Super 13% Cr, 22% Cr, Duplex and Super Duplex. "Products" shall not include
connections for tubular components and Accessory Equipment made of titanium,
graphite, nickel, nickel steel, composite materials, bimetallic lined, or other
non-carbon steel materials.
"PATENTS" means all patents and patent applications relating to the Threading or
Reconstruction of Atlas Bradford Oil Field Connections on Products and Accessory
Equipment described in Schedule "A" and future patents and patent applications
to the extent added as provided in this Agreement.
"PERSON" means any individual, corporation, partnership, joint venture,
association, joint-stock company, trust, unincorporated organization or
government or any agency or political subdivision thereof.
"PRODUCTS" mean tubular products, excluding drill pipe.
"PROPRIETARY DOCUMENTATION" means any drawing or document, in either
man-readable or machine-readable form, or any tangible thing which is the
property of the parties, including without limitation all price lists, discount
sheets, customer lists, supplier lists, quotations, analytical data, market
data, engineering data, drawings, computer software, manuals, specifications,
standards, designs, methods, procedures, techniques, formulations, instruments,
and other business and technical information in tangible form which are the
property of either of the parties.
"RECONSTRUCT" means recutting a worn or damaged thread for Atlas Bradford
Connections on Products and Accessory Equipment.
"TECHNOLOGY" means all current (and future to the extent provided in this
Agreement) technical information which Grant has the right to license in the
Licensee Territories and which is reasonably necessary for Licensee to Thread or
Reconstruct Atlas Bradford Oil Field Connections on Products and Accessory
Equipment, including Grant data, methods, procedures, specifications, standards,
drawings, know how, manuals, Proprietary Documentation and Confidential
Information. Notwithstanding the foregoing, Technology shall not include any XL
Technology.
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"TERRITORIES" means the Exclusive Territory and the Non-Exclusive Territory.
"THREAD" and "THREADING" means the processes of cutting threads embodying the
technology and patents licensed hereunder.
"TOOLING" means tooling and accessories made to a party's specification (either
by a party hereto or any other Person) for use in Threading or Reconstruction of
Atlas Bradford Connections on Products or Accessory Equipment in accordance with
a party's technology or patents, including without limitation thread form
inserts, groove tools, Teflon seal rings, thread protectors.
"TRADEMARKS" means those current trademarks and trade names listed in Schedule
"B" and any future trademarks and trade names that may identify Atlas Bradford
Connections which are or may be the subject of a license under this Agreement,
both registered and unregistered.
"XL TECHNOLOGY" means the technology, patents and other intellectual property
currently owned or utilized by XLS Systems, Inc. or to which XLS Systems, Inc.
and its subsidiaries has a right or license to use or exploit, including all
technology relating to the Connections currently Threaded and Reconstructed by
it and the technology, patents and know-how licensed to or by it under its
license agreement with Hydril Company.
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