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*CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTIONS OF THIS DOCUMENT
HAVE BEEN REDACTED AND HAVE BEEN SEPARATELY FILED WITH THE COMMISSION.
Exhibit 10.12
AGREEMENT
This Agreement (the "Agreement") is entered and if effective as of the 1st day
of January 1994 between Imperial Chemical Industries PLC whose registered office
is situated at Imperial Xxxxxxxx Xxxxx, Xxxxxxxx, Xxxxxx XX0X 0XX (hereinafter
"ICI") and ICI Composites Inc., of 0000 Xxxx Xxxxxxxxxx Xxxxxx, Xxxxx, Xxxxxxx
00000 (hereinafter "COMPOSITES").
WHEREAS, ICI has facilities and personnel capable of carrying out research and
development work in the Field as hereinafter defined, and
WHEREAS, COMPOSITES wishes to retain ICI to conduct research and development
work in the Field.
NOW THEREFORE, in consideration of good and valuable consideration and of the
mutual covenants herein contained and intending to be legally bound, ICI and
COMPOSITES agree as follows:
1. DEFINITIONS.
As used herein, the following terms shall have the following meanings:
1.1 "Field" means the development, analysis and testing of polymers, resins
and reinforced composite materials and basic and specialised research
regarding the same.
1.2 "Intellectual Property" means invention, patents and patent applications,
trade secrets, copyrights, maskworks, designs, know-how, proprietary tools,
methodologies, processes, materials, documentation and other intellectual
property rights.
1.3 "Composites IP" means all Intellectual property arising from work done
hereunder.
1.4 "Service Provider" means relevant personnel of the Characterization
Analytical & Polymer Science ("CAPS") Group within the Wilton Centre of ICI
as presently constituted or as restructured during the term of this
Agreement.
2. RESEARCH AND DEVELOPMENT SERVICES.
2.1 On the terms and subject to the conditions of this Agreement, ICI agrees to
provide to COMPOSITES, and COMPOSITES agrees to utilise the services of the
Service Provider (the "Services") in the Field for projects agreed in
writing between ICI and COMPOSITES from time to time but at a minimum as
described in paragraph 2.2 below.
2.2 ICI and COMPOSITES shall agree at least 3 months prior to the beginning of
each calendar year during the term of this Agreement on (a) the level of
effort (in terms of manpower) for which Services will be utilized during
the following calendar year and (b) the estimated cost (based on the
expected actual costs including full overhead recovery) of the Services for
such level of effort, provided however that COMPOSITES shall not be
obligated to pay more than [ * ] of the estimated cost of the Services
without its express written agreement. In the event that agreement under
this Section 2.2 cannot be reached,
*CONFIDENTIAL MATERIAL REDACTED AND FILED
SEPARATELY WITH THE COMMISSION
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the level of effort shall remain at the level of effort of the then
current calendar year.
2.3 ICI shall provide COMPOSITES with such reports and progress updates
regarding Services provided hereunder as COMPOSITES shall reasonably
request. In addition, within thirty (30) days following the end of each
calendar year during the term of this Agreement, ICI shall provide
COMPOSITES with a summary of topics and areas of study, research and
development to which it has devoted attention on behalf of COMPOSITES
during such year together with a statement of ICI's progress toward
established goals and summary of ICI's finding in conjunction therewith.
This report shall be cross referenced with individual project reports and
numbers as applicable.
3. PAYMENTS.
3.1 COMPOSITES shall pay the following charges for the Services: [ * ] of the
actual costs attributable to providing the Services as detailed in the
estimate provided for under paragraph 2.2 above.
3.2 ICI shall invoice COMPOSITES quarterly, within sixty (60) days of the end
of each calendar quarter.
3.3 COMPOSITES shall pay the amount of each invoice within thirty (30) days of
the date of the invoice.
4. INTELLECTUAL PROPERTY.
4.1 COMPOSITES IP shall be the exclusive property of COMPOSITES.
4.2 The decision to apply for patents on any of COMPOSITES IP shall be solely
at the discretion of COMPOSITES. Should COMPOSITES decide to seek patent
protection, ICI, at the expense of COMPOSITES, agrees to execute or cause
to be executed any assignment and/or other document as may be required to
obtain such patent protection and to vest title thereto in COMPOSITES.
5. CONFIDENTIALITY.
5.1 ICI will take all reasonable steps to ensure that the information acquired
from COMPOSITES hereunder and COMPOSITES IP is not for a period of ten (10)
years following the date hereof disclosed to any third party either by ICI
or by those of its employees to whom the same must necessarily be
communicated in the course of their duties PROVIDED THAT ICI shall not be
obligated to maintain secrecy in respect of any information which was
already known to it at the date of receipt or development hereunder without
obligation of secrecy or which subsequently comes into the public domain
from sources other than ICI or which ICI lawfully acquires from a third
party with the right to disclose the same.
*CONFIDENTIAL MATERIAL REDACTED AND FILED
SEPARATELY WITH THE COMMISSION
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6. TERM AND TERMINATION.
6.1 This Agreement shall be for an initial term of two years (i.e., until
December 31, 1995) and thereafter shall be automatically renewed for
additional one year periods (which shall correspond to calendar years)
unless earlier terminated by either party in accordance with Section 6.2.
6.2 Either party may terminate this Agreement at any time by providing written
notice to the other party at lest twelve (12) months prior to the effective
date of such termination.
6.3 In the event that notice of termination is given pursuant to Section 6.2
and the effective date of such termination is after the end of the then
current term (calendar year) of the Agreement (the period between the end
of the current term (calendar year) of the Agreement and the effective date
of termination of the Agreement is hereinafter called the "Concluding
Partial Term"), then in such event the parties shall mutually agree within
thirty (30) days following receipt of such termination notice on the scope
of Services, the corresponding level of effort and the estimated cost
thereof to be provided by ICI to COMPOSITES during the Concluding Partial
Term; provided, however, that , in the absence of agreement and not
withstanding the provisions of Section 2.2, the level of effort in the
provision of Services by ICI during the Concluding Partial Term shall be
that level of effort the cost of which is at least equal to seventy-five
percent (75%) of the cost of Services provided by ICI during the last full
term (calendar year) of the Agreement on a pro rata basis.
6.4 Termination of this Agreement shall not relieve ICI of its obligations
hereunder with respect to Confidentiality or COMPOSITES IP.
6.5 Immediately following termination of this Agreement, ICI shall deliver to
COMPOSITES, at COMPOSITES' expense, such documentation as may exist at
ICI's facilities or within ICI's control which represents, embodies or
contains COMPOSITES IP, provided, however, that ICI may redact therefrom
information which does not constitute COMPOSITES IP and may retain a copy
thereof.
7. EXCLUSION OF LIABILITY.
7.1 ICI shall not be liable to COMPOSITES for any loss, expense, claim or
damage arising out of or allegedly arising out of use by COMPOSITES of any
COMPOSITES IP. All Services provided hereunder shall be on a best efforts
basis only without warranty of any kind.
7.2 COMPOSITES shall not be liable to ICI for any loss, expense, claim or
damages arising out of or allegedly arising out of the performance of
Services by ICI at ICI's facilities.
7.3 ICI does not warrant that the use of any of COMPOSITES IP does not
constitute infringement of patents of persons not party hereto and further
ICI does not assume any responsibility for any such infringement; provided,
however, that, at COMPOSITES'
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specific request and expense, ICI shall use reasonable efforts to
investigate whether COMPOSITES IP infringes patents of such other persons
and shall notify COMPOSITES of the results of such investigations.
7.4 No license, right or immunity is granted by implication or otherwise with
respect to any Intellectual Property of ICI except as specifically set
forth in this Agreement.
8. MISCELLANEOUS.
8.1 This Agreement shall be binding upon and inure to the benefit of the
parties hereto, their respective heirs, executors, successors and assigns.
8.2 This Agreement shall be construed and interpreted in accordance with the
laws of Delaware, USA.
9. NOTICES.
9.1 Any notice, or payment provided for in this Agreement shall be deemed
sufficiently given when sent by certified or registered mail addressed to
the other party at its address appearing on the first page hereof or to
such other addresses as the parties shall have specified to each other for
this purpose from time to time.
10. IN WITNESS WHEREOF, each of the parties has caused this Agreement to be
executed in duplicate originals by its duly authorised representatives as
of the date and year first above written.
1. IMPERIAL CHEMICAL INDUSTRIES
PLC
2. By: /s/
3. Title: Wilton Research Support Group Manager
4. ICI COMPOSITES INC.
5. By: /s/ Xxxx X. Xxxxx
6. Title: President
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