Exhibit 10.29
TECHNOLOGY LICENSING AGREEMENT MADE AND ENTERED INTO IN XXX XXXX XXX XXXXXXXX XX
XXXXXXXX, XX THE 2ND DAY OF MAY, 1997
BY AND BETWEEN: H POWER CORP., a Delaware corporation, having its head office
and principal place of business in the City of Belleville,
State of New Jersey,
(hereinafter referred to as the "Licensor")
PARTY OF THE FIRST PART
AND: 3362469 CANADA INC., a body politic and corporate, duly
incorporated according to the Canada Business Corporations
Act, having its head office and principal place of business in
the City of Montreal, Province of Quebec,
(hereinafter referred to as the "Licensee")
PARTY OF THE SECOND PART
SECTION 1 - PREAMBLE
1.1 WHEREAS Licensor and the Investors (as hereinafter defined) have each
subscribed for shares in the capital stock of the Licensee;
1.2 WHEREAS Licensor has acquired, developed and possesses certain intellectual
property rights to specialized, novel and unique techniques, inventions,
practices, knowledge, know-how, skill, experience and other proprietary
information relating to fuel cells and hydrogen generating systems;
1.3 WHEREAS Licensee wishes to acquire rights to use the intellectual property
of the Licensor that is relevant and necessary for the operation of the proposed
business of Licensee;
1.4 WHEREAS Licensor has agreed to grant to Licensee a license to Licensor's
relevant intellectual property as Licensor's capital contribution to Licensee.
NOW, THEREFORE, THE PARTIES HERETO AGREE AS FOLLOWS:
SECTION 2 - DEFINITIONS
2.1 Definitions. In this Agreement:
2.1.1 "Art" has the meaning ascribed thereto in paragraph 8.3.3;
2.1.2 "Asset Sale" has the meaning ascribed thereto in subsection 6.4;
2.1.3 "Common Shares" means shares of Licensor's common stock, having the
rights, privileges and preferences as set forth in the Amended and
Restated Articles of Incorporation of Licensor dated May 2, 1997;
2.1.4 "Confidential Information" means all concepts, methods, procedures,
inventions, know-how, secrets, data and other information, whether in
written, printed, electronic, unrecorded or any other form whatsoever,
and whether known now or developed throughout the duration of this
Agreement and which relates in any way to the confidential information
of the Disclosing Party, including the technical knowledge, processes,
methods, know-how, copyrights, industrial designs, circuits designs and
use and manufacture thereof, and all communications and documentation
relevant thereto, or which relates in any way to the business of the
Disclosing Party, except for information that the Receiving Party can
reasonably demonstrate:
2.1.4.1 is in the public domain (provided that information in the public
domain has not or does not come into the public domain as the result of
disclosure by the Receiving Party);
2.1.4.2 is known to the Receiving Party prior to disclosure by the
Disclosing Party; or
2.1.4.3 has become available to the Receiving Party on a
non-confidential basis from a source other than the Disclosing Party;
2.1.5 "Disclosing Party" has the meaning ascribed thereto at subsection 9.1;
2.1.6 "Equipment" means any machinery or equipment developed or patented by
the Licensor using the Technology to be used in order to manufacture the
Products;
2.1.7 "Event of Default" has the meaning ascribed thereto at subsection 6.3;
2.1.8 "Exchange Right" has the meaning ascribed thereto in the Stock Exchange
Agreement;
2.1.9 "Expiry Date" means May 2, 2001;
2.1.10 "Fairness Committee" has the meaning ascribed thereto in subsection
14.1;
2.1.11 "Fuel Cell" means a device that uses the electrochemical reaction of a
fuel (including but not limited to hydrogen) and oxidants (including but
not limited to oxygen) to produce electrical energy;
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2.1.12 "Fuel Cell Based System" means a system, comprised of a number of
components (such as Fuel Cell, fuel processor, Fuel Cell system
controller and power conditioner), that provides electric power either
to operate a product or for such other purpose for which the system is
designed. Different Fuel Cell Based Systems may be required for
different products and purposes;
2.1.13 "Intellectual Property Based on Patentable Inventions" shall include new
discoveries as well as improvements, developments and betterments
relating to existing Fuel Cell Based System technologies for which
patent applications have been filed, patents have been issued
(including, without limitation, the Patents) or protection is afforded
by other similar statutory rights;
2.1.14 "Investors" means Societe Innovatech du Grand Montreal, Sofinov Societe
Financiere d'Innovation Inc. and 0000-0000 Xxxxxx Inc.;
2.1.15 "Licensee's Intellectual Property" has the meaning ascribed thereto at
subsection 5.2;
2.1.16 "Licensor Improvements" has the meaning ascribed thereto at subsection
5.1 hereof;
2.1.17 "Patents" means the patents and patent applications set forth in
Schedule 2.1.17 attached hereto and all improvements, modifications,
additions, developments and alterations thereto, including, without
limitation, Licensor Improvements, made by the Licensor or by any
licensee of Licensor for which Licensor may have the right to grant
licenses, as well as all other patents relating to the Technology which
may hereafter be issued to or acquired by Licensor or for which Licensor
may have the right to grant licenses;
2.1.18 "Person" means an individual, partnership, joint venture, trustee,
trust, corporation, division of a corporation, unincorporated
organization or other entity or a government, state or agency or
political subdivision thereof, and pronouns have a similarly extended
meaning;
2.1.19 "Products" means Fuel Cell Based Systems that can provide electric power
of 2kW or more for use as on-site, stationary power sources;
2.1.20 "Proprietary Information and Data" means all improvements, developments,
betterments, information and data relating to Fuel Cell Based Systems
that are patentable or not patentable, including: formulae, designs,
compilations, devices, methods, techniques, processes, arrangements,
drawings, data calculations, configurations and reports that derive
independent economic values, actual or potential, from not being
generally known to, and not being reasonably ascertainable by, third
Persons and are the subject of efforts that are reasonable under the
circumstances to maintain their secrecy;
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2.1.21 "Purchaser" has the meaning ascribed thereto in subsection 6.4;
2.1.22 "Receiving Party" has the meaning ascribed thereto at paragraph 9.1.2;
2.1.23 "Representatives" has the meaning ascribed thereto at subsection 9.2;
2.1.24 "Stock Exchange Agreement" means the stock exchange agreement entered
into on the date hereof among the Licensor, Societe Innovatech du Grand
Montreal and Sofinov Societe Financiere d'Innovation Inc.;
2.1.25 "Share Sale" has the meaning ascribed thereto in subsection 6.4;
2.1.26 "Technology" means Licensor's Intellectual Property Based on Patentable
Inventions and Licensor's Proprietary Information and Data relating to
Fuel Cells and Fuel Cell Based Systems, as exist on the date hereof and
as may be improved, developed or bettered by Licensor hereafter;
2.1.27 "Technical Information" means all data and information, whether
proprietary or not, that is relevant and necessary for: the design, and
production of the Products, the manufacture of all the components of the
Products, the integration, incorporation and assembly of all components
of the Products, and the marketing, sale, servicing and maintenance of
the Products, as may now be or hereafter become the sole property of the
Licensor, including such things as: designs, drawings, models, prints,
photographs, production techniques, processes and methods, engineering,
performance and production specifications, and technical reports;
2.1.28 "Term" has the meaning ascribed thereto in subsection 6.1 hereof;
2.1.29 "Territory" has the meaning ascribed thereto in subsection 3.2 hereof;
2.1.30 "Trade Marks" means all trade marks listed in Schedule 2.1.30 annexed
hereto and all trademarks, whether or not registered, that Licensor may
own or have the right to use anywhere in the Territory in relation to
Products.
SECTION 3 - GRANT OF LICENSE
3.1 Grant of License. Subject to the terms and conditions hereof, Licensor
hereby grants to Licensee, the latter hereby accepting,
3.1.1 the non-exclusive and fully paid right and license to use the Technology
that is relevant and necessary to conduct research and development
activities in connection with the design, development and production of
Products,
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3.1.2 the non-exclusive and fully paid right and license to use the Equipment
and Technology that is relevant and necessary for the manufacture,
integration, incorporation and assembly of all the components of the
Products,
3.1.3 the exclusive and fully paid right and license (excluding even Licensor)
to use the Technology and the Trade Marks that are relevant and
necessary for the marketing, promotion, advertising, sale, servicing,
distribution and merchandising of the Products,
all within the Territory and not elsewhere.
3.2 Territory. For the purposes hereof, "Territory" means Canada provided,
however, that in the event that the Exchange Right is fully exercised by each of
the holders of Class A common shares of Licensee on or prior to 5:00 pm.
(Montreal time) on the Expiry Date, "Territory" shall be deemed to mean Xxxxx
Xxxxxxx, Xxxxxxx Xxxxxxx xxx Xxxxx Xxxxxxx (excluding, for the purposes of
paragraph 3.1.3 hereof only, the States of Ohio, West Virginia and Pennsylvania
and such other states as may be mutually agreed upon by Licensee and Licensor).
3.3 Sublicenses. Licensee shall not grant manufacturing sublicenses hereunder,
except upon such terms and conditions as may be acceptable to Licensor, in its
sole discretion. Licensee shall be entitled to sublicense its right and license
to market, promote, advertise, sell, service, distribute and merchandise
Products throughout the Territory, subject to Licensor's prior written approval,
which approval shall not be unreasonably withheld or delayed, it being
understood that whenever Licensor shall not have disapproved of any such
proposed sublicensee within thirty (30) days following Licensor's receipt of a
written notice from Licensee in connection therewith, Licensor shall be deemed
to have approved such sublicensee.
3.4 Exclusivity. Provided Licensee is not in default hereunder, Licensor shall
not market, promote, advertise, sell, service, distribute or merchandise
Products or products which are similar to the Products anywhere in the
Territory, or grant to others the rights and license to perform any of the
activities referred to in paragraph 3.1.3 hereof anywhere in the Territory.
Moreover, Licensor hereby covenants and agrees that in the event that Licensor
proposes to grant to any Person (other than Licensee), at any time between the
date hereof and the earlier of the Expiry Date or the date upon which the
Exchange Right is fully exercised by each of the holders of Class A common
shares of Licensee, the rights and license to perform any of the activities
referred to in paragraph 3.1.3 hereof anywhere in South America, Central America
or North America (other than the States of Ohio, West Virginia and Pennsylvania
and such other states as may be mutually agreed upon by Licensee and Licensor),
(i) same shall be subject to Sofinov Societe Financiere d'Innovation Inc.'s
prior written approval, which approval shall not be unreasonably withheld or
delayed, it being understood that whenever Sofinov Societe Financiere
d'Innovation Inc. shall not have disapproved of any such proposed Person within
thirty (30) days following Sofinov Societe Financiere d'Innovation Inc.'s
receipt of a written notice from Licensor in connection therewith, Sofinov
Societe Financiere d'Innovation Inc. shall be deemed to have approved such
Person, (ii) same shall be on
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commercially reasonable terms and (iii) Licensor will cause such Person, if
approved as aforesaid, to acknowledge and agree that (x) any such rights or
license so granted by Licensor will be terminated immediately as of the date
upon which the Exchange Right is fully exercised by each of the holders of Class
A common shares of Licensee or (y) upon exercise of the Exchange Right as
described above, the Licensee will be substituted for the Licensor in such
arrangement and will fully succeed in the rights and obligations of Licensor
thereunder.
3.5 Referrals. Licensee shall refer to Licensor all inquiries concerning
Products received from anywhere in the world other than for sales in the
Territory. Licensor shall refer to Licensee all inquiries concerning Products
received from anywhere in the world for sales in the Territory.
3.6 Purchase of Products. Notwithstanding the rights granted by Licensor to
Licensee pursuant to paragraph 3.1.2 hereof, Licensee shall be entitled to
purchase Products from Licensor or any licensee of Licensor on terms and
conditions which are at least as favourable as those offered to comparably or
similarly situated customers of Licensor.
SECTION 4 - LICENSOR'S OBLIGATIONS
4.1 Licensor's Initial Obligations. Following the execution of this Agreement,
Licensor shall make available to Licensee Technology and Technical Information
that is relevant and necessary for Licensee to be able to benefit from the
rights and licenses granted to it pursuant to this Agreement.
4.2 Licensor's Future Obligations. From time to time, Licensor shall make
available to Licensee all additional Technology and Technical Information that
is relevant and necessary for Licensee to be able to benefit from the rights and
licenses granted to it pursuant to this Agreement, including Licensor
Improvements.
SECTION 5 - DEVELOPMENTS AND IMPROVEMENTS
5.1 Improvements by Licensor. The parties hereby agree that should any
improvements, modifications, developments, additions and alterations be made to
the Technology, Equipment or Products by or on behalf of Licensor, its agents,
employees, consultants or representatives at any time (the "Licensor
Improvements"), then they shall be the exclusive property of Licensor. Licensor
shall promptly furnish Licensee with complete details of all Licensor
Improvements in sufficient detail to make use of them for the purposes provided
for in this Agreement. All Licensor Improvements shall be deemed licensed to
Licensee hereunder without any compensation therefor and shall be deemed to form
part of the Technology for the purposes of this Agreement.
5.2 Improvements by Licensee. The parties hereby agree that any improvements,
modifications, developments, additions and alterations made to the Technology,
Equipment or Products by or on behalf of Licensee, its agents, employees,
consultants or representatives at any time shall be the exclusive property of
Licensee (the "Licensee's Intellectual Property"). Licensee
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shall promptly farmish Licensor with complete details of all Licensee's
Intellectual Property in sufficient detail to enable Licensor to make use of it
to the same. extent as Licensee and, subject to subsection 5.3 hereof, to
sublicense their use to Licensor's other licensees. All Licensee's Intellectual
Property shall be licensed to Licensor for the Territory without any
compensation therefor. Licensor shall cooperate fully with and assist Licensee
in obtaining patents, copyrights, industrial designs and other intellectual
property registration with respect to Licensee's Intellectual Property.
5.3 Limitation on Rights of Licensor to Licensee's Intellectual Property.
Notwithstanding subsection 5.2 hereof, Licensor shall not be entitled to make
Licensee's Intellectual Property available to any licensee of Licensor unless
such licensee has permitted its improvements to the Technology, Equipment and
Products to be made available to Licensee under the same terms and conditions
pursuant to which Licensor has permitted its improvements to the Technology,
Equipment and Products to be made available to Licensee hereunder. In addition,
Licensor and Licensee will negotiate, in good faith, Licensee's share of any
license fee or other compensation payable to Licensor by Licensor's other
licensees in connection with Licensee's Intellectual Property.
SECTION 6 - TERM AND EVENT OF DEFAULT
6.1 Term. Subject to the terms and conditions hereof, the initial term of this
Agreement shall be twenty-five (25) years, with Licensee having the option to
renew this Agreement for additional successive terms of twenty-five (25) years
each (the initial term and any renewal term being hereinafter collectively
referred to as the "Term").
6.2 Termination of Agreement. If an Event of Default occurs with respect to
either party, the non-defaulting party shall have the right to terminate this
Agreement immediately upon written notice to the defaulting party.
Notwithstanding the foregoing but subject to subsection 6.4 hereof, Licensor
shall not be entitled to terminate this Agreement without the written consent of
Sofinov for so long as (i) Licensor owns all of the issued and outstanding
voting shares of Licensee, (ii) Sofinov owns at least 250,000 of the issued and
outstanding voting shares of Licensor (on an as-converted basis) and (iii)
Licensor, in good faith, determines that the business conducted by Licensee is
commercially viable and competitive in the marketplace.
6.3 Definition of Event of Default. As used herein, "Event of Default" means,
with respect to either party, the occurrence of any of the following events:
6.3.1 such party commits an act of bankruptcy, makes an assignment for the
benefit of its creditors or otherwise takes advantage of or shelter
under any legislation for the protection of debtors; or
6.3.2 such party is declared bankrupt or a receiver is appointed in respect of
such party or a substantial portion of its property and such action is
not reversed or stayed within 90 days; or
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6.3.3 such party is dissolved, liquidated or wound-up; or
6.3.4 such party fails to perform any of its material obligations under the
provisions of this Agreement and such default is not remedied within
thirty (30) days of receipt of a written notice to that effect received
from the other party.
6.4 Sale of Assets or Shares of Licensee. Notwithstanding any provision of this
Agreement, in the event that (a) Licensee sells all its assets to any Person
(the "Purchaser") (the "Asset Sale"), or (b) the majority of the issued and
outstanding voting shares of Licensee are sold to any Person other than any of
the Investors or Licensor (the "Share Sale"), Licensor may terminate this
Agreement only if the Licensor provides the Purchaser or Licensee (in the event
of a Share Sale) at the time of such Asset Sale or Share Sale, subject to the
Purchaser's or Licensee's acceptance, a new technology licensing agreement
identical to this Agreement, with the exception that such new agreement shall
provide (i) for the payment to Licensor of royalties on net sales of Products at
a reasonable royalty, such royalty to be determined in accordance with the then
applicable industry standards and United States law; and (ii) for a term equal
to the unexpired portion of the Term. In the event that Licensor does not
provide the Purchaser or Licensee (in the event of a Share Sale) with such new
agreement as provided for herein, then this Agreement shall continue in full
force and effect in favour of the Purchaser or Licensee (in the event of a Share
Sale).
SECTION 7 - EFFECT OF TERMINATION OR EXPIRATION OF THE TERM
7.1 Effect of Termination. Upon the termination of this Agreement for any reason
whatsoever or the expiration of the term of this Agreement:
7.1.1 all rights of the parties hereunder shall cease immediately;
7.1.2 amounts owing by one party to the other shall immediately become due and
payable;
7.1.3 subject to paragraph 7.1.4 hereof, each party shall forthwith deliver to
the other party all forms, documents and materials relating to Products
which are the property of such other party without retaining any copy
thereof, and Licensee shall forthwith deliver to Licensor all
promotional and advertising materials, instruction sheets, documents and
other items bearing any of the Trade Marks, unless a new technology
licensing agreement is entered into as provided for in subsection 6.4
hereof;
7.1.4 Licensee shall have the right to distribute and sell its remaining
inventory of Products and raw materials, in the ordinary course of
business and pursuant to instructions received from Licensor, unless a
new technology licensing agreement is entered into as provided for in
subsection 6.4 hereof.
The parties agree to sign all documents and do all things as may be
necessary to give effect to the foregoing provisions.
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7.2 Surviving provisions. Termination of this Agreement for any reason
whatsoever or the expiration of the term of this Agreement shall not release any
party from any of its obligations which remain unfulfilled at such time or
release any party from those obligations which survive such termination or
expiration.
SECTION 8 - TRADE MARKS
8.1 Rights and Ownership in Trade Marks. Neither this Agreement nor the
operations of Licensee hereunder shall in any way give or be deemed to give
Licensee any interest in the Trade Marks, except for its right and license to
use the Trade Marks, in accordance with the terms hereof. Licensee agrees that
each of the Trade Marks and the goodwill symbolized thereby is the sole and
exclusive property of Licensor and nothing in this Agreement shall prohibit or
curtail in any manner Licensor's right to use, directly or indirectly, the Trade
Marks.
8.2 No action by Licensee. Licensee agrees that it has no power or right to and
shall not during the term of this Agreement or thereafter take any action which
might invalidate the Trade Marks or impair any rights of Licensor therein or
create any rights adverse to those of Licensor therein or attempt to register
the Trade Marks anywhere in the Territory.
8.3 Use of Trade Marks
8.3.1 Licensee agrees that it will use the Trade Marks only in connection with
the Products and label, package and advertise the Products only in such
manner as to preserve at all times all rights of Licensor in the Trade
Marks;
8.3.2 Licensor shall provide to Licensee from time to time information
regarding the use of the Trade Marks, including the typeface,
configuration and orientation of the Trade Marks, specifications and
restrictions on the size, colour and backgrounds for the Trade Marks,
and Licensee shall use the Trade Marks only in the manner so specified;
8.3.3 Licensee shall submit all original mechanical art (the "Art") for all
labels, packaging, advertisements, promotional materials and other
materials used in connection with the sale of the Products which bear
any Trade Xxxx to Licensor for approval prior to the use of the Art,
which approval shall not be unreasonably withheld or unduly delayed. In
the event that Licensor does not notify Licensee in writing of its
disapproval of same within thirty (30) days of its receipt of the Art,
the Art shall be deemed to be approved by Licensor;
8.3.4 Licensee shall not change or modify any party of the Art without the
written approval of Licensor, which approval shall not be unreasonably
withheld or unduly delayed. In the event that Licensor does not advise
Licensee in writing that it disapproves of such change or modification
within ten (10) days of receipt thereof, Licensor shall be deemed to
have accepted such change or modification;
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8.3.5 Licensee shall forward to Licensor, at Licensee's expense, such
representative samples of the labels, packaging, advertisements and
promotional and other materials used in connection with the sale of the
Products in which any of the Trade Marks appear once a year or at such
other times as Licensor may reasonably request, in order to verify that
the Trade Marks are being used in accordance with the terms of this
Agreement;
8.3.6 Each label package, advertisement, item or promotional or other material
used in connection with the sale of the Products which bears t any Trade
Xxxx shall contain the following legend:
"[the particular Trade Marks used]"(R) are Trade Marks
of H Power Corp. and are used by [Licensee's Name] under
License."
or such other legend, inscriptions and markings thereon as Licensor may
request;
8.3.7 Licensee shall not use the Trade Marks or any similar xxxx, name or logo
to identify its business or any product (other than Products) that
Licensee manufactures or sells;
8.3.8 Licensee shall use the Trade Marks only as depicted in their respective
registrations or applications for registration or as prescribed by
Licensor.
8.4 Delivery of Documents. Licensee shall execute and deliver such documents,
applications and other writings and do such things as may be requested by
Licensor in order to confirm Licensor's ownership of the Trade Marks, maintain
the validity of same and obtain, maintain or renew any registration thereof. The
expenses to confirm Licensor's ownership of the Trade Marks shall be borne by
Licensor. The expenses to maintain the validity of the Trade Marks and to
obtain, maintain or renew any registration thereof shall be borne in the manner
provided for in subsections 11. 1 and 11.2 hereof. Failure to obtain or maintain
registration of any of the Trade Marks anywhere in the Territory shall not
constitute a breach of the terms hereof by Licensor.
SECTION 9 - CONFIDENTIAL INFORMATION
9.1 Confidential Information. Each party hereby acknowledges that it may
receive Confidential Information from the other party (the "Disclosing
Party"). Each party hereby acknowledges, accepts and agrees that:
9.1.1 the Confidential Information designated as such in the manner provided
for in this Section 9 is nonpublic and confidential and shall at all
times remain the property of the Disclosing Party;
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9.1.2 the disclosure by the Disclosing Party of the Confidential Information
to the other party (the "Receiving Party") is for the sole purpose of
enabling it to carry out its obligations under the terms of this
Agreement; and
9.1.3 the Receiving Party shall not assert, directly or indirectly, any right
with respect to the Confidential Information which may impair or be
adverse to the Disclosing Party's ownership thereof.
9.2 Obligations of parties. Each party shall keep the Confidential Information,
and the fact that the Confidential Information has been provided, confidential
at all times (regardless of the extent or duration of the relationship of the
parties and regardless of whether such Confidential Information was disclosed
before or after the date of this Agreement) and shall not disclose such
Confidential Information, in whole or in part, to any person other than to its
agents, employees and other authorized representatives (collectively herein
referred to as the "Representatives") who need to know such information in
connection with the performance of its obligations under the terms of this
Agreement, without the prior written consent of the Disclosing Party. Each party
shall inform its Representatives of the confidential nature of the Confidential
Information and shall require such Representatives to keep such information
confidential. Each party shall be fully responsible for any breach of this
Agreement by its Representatives. Each party shall exercise careful judgment to
minimize the number of its Representatives who have access to the other party's
Confidential Information and to limit them to individuals reasonably known to be
trustworthy and of sound judgment. Nothing herein shall be deemed to impair
Licensor's right to disclose the Confidential Information of Licensee to its
other licensees, subject to appropriate safeguards and the said licensees
signing confidentiality agreements, and provided further that Licensor has the
right to disclose the confidential information of such other licensee to
Licensee.
9.3 Property of Confidential Information. Any Confidential Information disclosed
by the Disclosing Party shall remain the sole and exclusive property of the
Disclosing Party.
9.4 Information disclosed prior to this Agreement. Any Confidential Information
supplied to the Receiving Party by the Disclosing Party prior to the execution
of this Agreement shall be considered in the same manner and be subject to the
same treatment as the Confidential Information made available after the
execution of this Agreement.
9.5 Breach of Confidentiality. In the event of a material breach of the
undertakings of either party under this Section 9, money damages may be
inadequate and the Disclosing Party shall be entitled to seek injunctive relief
and specific performance. Such remedy shall not be deemed to be the exclusive
remedy for any such breach but shall be in addition to all other remedies
available at law. The Disclosing Party shall be entitled to reasonable legal
fees (including reasonable attorney's fees and expenses) and other costs
reasonably incurred to remedy any and all material breaches by the Receiving
Party of this Agreement.
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9.6 Transfer of Confidential Information. All confidential information finished
hereunder shall either be in writing, plainly marked "Confidential Information"
or, if disclosed by demonstration or orally, shall be designated as confidential
and shall be confirmed in writing to the Receiving Party within thirty (30)
days, the writing to be clearly marked "Confidential Information" and setting
forth the information so disclosed with such sufficient specificity to clearly
establish the content and scope of what is deemed Confidential Information.
SECTION 10 - REPRESENTATIONS, WARRANTIES AND COVENANTS
10.1 Representations of Licensor. Licensor hereby represents, warrants and
covenants:
10.1.1 that it is duly incorporated, validly existing and in good standing
under the laws of its jurisdiction of incorporation;
10.1.2 that it has the necessary corporate power and authority to execute this
Agreement and to perform its obligations hereunder. The execution of
this Agreement by Licensor and the performance by Licensor of its
obligations hereunder have been duly authorized by all necessary action
on its part and do not require any action, consent or approval of, any
registration with, or notification to any Person, or any action or
consent under any laws to which Licensor is subject;
10.1.3 that Schedule 10. 1.3 annexed hereto contains a true and complete list
and copy of all Patents, which have not been opposed or held
unenforceable and which are in full force and effect;
10.1.4 that as of the date hereof there are no Trade Marks;
10.1.5 that it is the sole owner of all the Technology;
10.1.6 that the registrable Technology has been duly registered with, filed in
or issued by, as the case may be, the appropriate authorities and such
registrations, patent pendings, filing and issuances remain in full
force and effect;
10.1.7 that, on the date hereof and for the duration of the term of this
Agreement, the Technology is and will be, and the Trade Marks will be,
free and clear of any hypothecs, charges, liens or encumbrances, except
for (i) the liens described in Schedule 10.1.7, all of the holders of
such liens having taken cognizance of this Agreement and agreed to be
bound by the provisions hereof in the event that any of them realizes on
its security and (ii) subsequent security granted in favour of any
lender of Licensor, provided that such secured lender takes cognizance
of this Agreement and agrees to be bound by the provisions hereof in the
event that it realizes on its security;
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10.1.8 that it has not granted any options, licenses or other rights to the
Technology or the Trade Marks to any Person except as set forth in
Schedule 10.1.8 attached hereto;
10.1.9 that the Technology is sufficient to enable Licensee to exercise all of
the licenses and rights granted to it hereunder;
10.1.10 that the execution, delivery and performance of this Agreement, the
granting of the rights and license provided herein and the consummation
of the transactions contemplated hereby will not, in any material
respect, breach, violate or conflict with any instrument, agreement or
undertaking, written or oral, governing the Technology or Trade Marks,
including, without limitation, that certain agreement dated May 16, 1995
between Licensor and Aerojet-General Corporation, and will not cause the
forfeiture or termination or give rise to a right of forfeiture or
termination of Licensor's rights to the Technology or Trade Marks or in
any way impair the right of Licensor to bring any action for the
infringement of the Technology or Trade Marks or any part thereof;
10.1.11 that on the date hereof, the Technology and the Trade Marks do not, to
the best of Licensor's Knowledge, infringe any rights of any Person;
10.1.12 that there are no pending or threatened proceedings, litigation or other
adverse claims affecting, or with respect to, the Technology, the Trade
Marks or any part thereof and, to the best of Licensor's knowledge, no
Person is infringing or threatening to infringe the Technology or the
Trade Marks;
10.1.13 that all its Representatives, officers and directors other than those
Representatives who are not privy to any of Licensor's confidential
information are bound by confidentiality, non-competition and assignment
of intellectual property agreements, and such agreements do not confer
on any such Person any rights to the Technology or Trade Marks;
10.1.14 that it has not received any offer from any Person for the purchase of
any part of its assets or shares;
10.1.15 that, to the best of its knowledge, there are no other facts or
circumstances which, if known by Licensee, would dissuade Licensee from
entering into this Agreement or any other agreements entered into
between Licensor and Licensee on the date hereof.
10.2 Representations of Licensee. Licensee hereby represents, warrants and
covenants:
10.2.1 that it has all the rights and power to enter into this Agreement;
10.2.2 that the undersigned officer has full authority to execute this
Agreement;
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10.2.3 that this Agreement does not violate the terms of any other agreement to
which Licensee is subject or to which Licensee is bound;
10.2.4 that it will market, promote, advertise, sell, service, distribute and
merchandise the Products to the best of its ability using commercially
acceptable standards.
SECTION 11 - COSTS, VALIDITY AND INFRINGEMENT OF TECHNOLOGY AND TRADE MARKS
11.1 Validity of Patents and Trade Marks. Licensor will maintain the validity of
the Patents and the Trade Marks by paying all required fees and other costs
associated with maintaining the validity of the Patents and the Trade Marks in
the Territory. Similarly, Licensee will maintain the validity of all patents and
trade marks, if any, issued or registered in respect of Licensee's Improvements
by paying all required fees and other costs associated with maintaining the
validity of such patents and the trade marks in the Territory.
11.2 Notice of infringement . Each party shall promptly notify the other party
in writing of any infringement or threatened infringement by a third party of
the Technology or Trade Marks or the Licensee's Intellectual Property, including
without limitation, any actual or intended common law passing-off, as well as
any action to invalidate or revoke the Technology, the Trade Marks or the
Licensee's Intellectual Property which may come to its attention, including
without limitation, any third party claim that any of the Trade Marks causes
deception or confusion with or infringes upon its trade marks, service marks or
other property rights in any manner.
11.3 Proceedings. The parties shall inform each other of each infringement or
violation of the Technology, the Trade Marks or the Licensee's Intellectual
Property. Whenever the owner of the Technology, the Trade Marks or the
Licensee's Intellectual Property concludes that proceedings should be taken with
respect to any such infringement or violation of its rights, the owner of such
intellectual property shall promptly and diligently prosecute same at its cost
and expense and shall be entitled to all recoveries and awards therefrom. If
such owner advises the other party that it does not intend to participate in any
such proceedings, the other party shall be free to prosecute same and shall pay
all costs and expenses related thereto and be entitled to all recoveries and
awards therefrom. The parties shall at all times fully cooperate in the
prosecution of all such proceedings.
11.4 One party institutes proceedings. It is understood that the party that did
not institute suit or action shall render all reasonable assistance to the party
that did institute suit or action, including, but not limited to, executing all
documents as may be reasonably requested by the party that did institute such
suit or action, and providing all necessary documentation evidencing the
infringement that such party has in its possession or may acquire thereafter.
11.5 Licensee's proceedings. In the event that Licensee initiates any and all
lawsuits involving or relating to the Technology or the Trade Marks, it shall do
so in good faith and to the best of its ability.
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11.6 Licensor's proceedings. In the event that Licensor initiates any and all
lawsuits involving or relating to the Licensee's Intellectual Property, it shall
do so in good faith and to the best of its ability.
11.7 Ownership of Technology and Trade Marks. Licensee shall not contest the
ownership or validity of the Technology or Trade Marks, whether directly or
indirectly, at any time during the term of this Agreement or at any time
thereafter.
11.8 Ownership of Licensee's Intellectual Property. Licensor shall not contest
the ownership or validity of the Licensee's Intellectual Property, whether
directly or indirectly, at any time during the term of this Agreement or at any
time thereafter.
SECTION 12 - INSURANCE AND INDEMNIFICATION
12.1 Indemnification of Licensee. Licensor shall indemnify and save and hold
Licensee harmless from and against any debts, liabilities, claims, actions,
causes of action, suits, damages, losses, costs and expenses, including damage
to property and reasonable attorneys' fees and expenses, which Licensee is or
may become liable for or be compelled to pay as a result or by reason of (i) any
breach or default by Licensor or its directors, officers, servants, agents or
employees in connection with Licensor's performance under the terms of this
Agreement, or (ii) any defects in the Technology or Trade Marks that prevent or
limit Licensee from fully exercising all of the rights and licenses granted to
it pursuant to this Agreement, or (iii) any proceeding of a third party claiming
that the use of all or any part of the Technology or Trade Marks by Licensee
constitutes an infringement of its rights provided that the Licensor is not in
breach or default pursuant to Section 10 hereof. In the event that a decision in
favour of a third party is rendered pursuant to any claim by such third party
that the use of all or any part of the Technology or Trade Marks by Licensee
constitutes an infringement of its rights and that Licensor loses its ownership
of all or any part of the Technology or Trade Marks or its right to grant rights
and licenses relating to the Technology or Trade Marks, Licensor shall deploy
its best efforts to ensure that Licensee obtains any license which is necessary
for the manufacturing and marketing of Products from such third party.
12.2 Indemnification of Licensor. Licensee shall indemnify and save and hold
Licensor harmless from and against any debts, liabilities, claims, actions,
causes of actions, suits, damages, losses, costs and expenses, including, damage
to property and reasonable attorneys' fees and expenses, which Licensor is or
may become liable for or be compelled to pay (i) as a result or by reason of any
breach or default of Licensee or its directors, officers, servants, agents or
employees in connection with Licensee's performance under the terms of this
Agreement, or (ii) arising or resulting in any way from the use of the
Technology and Trade Marks, subject to the provisions of subsection 11.1 hereof.
12.3 Insurance. Each of the parties hereto hereby agrees that, once either of
them commences manufacturing Products, it shall maintain comprehensive general
public liability insurance, including blanket contractual liability and personal
injury liability endorsements, against claims for product
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liability and such other claims as are contemplated herein. Such insurances
shall be for an amount which is reasonable given the nature of such party's
operations, and shall be written with a reputable insurer.
SECTION 13 - SALE OF TECHNOLOGY
13.1 Sale of Technology. Licensor hereby agrees and undertakes not to assign,
sell or alienate to any Person all or any part of the Technology or Trade Marks
unless such Person agrees to be bound by this Agreement.
SECTION 14 - FAIRNESS COMMITTEE AND ARBITRATION
14.1 Fairness Committee. In the event of any dispute, controversy or
disagreement between the parties arising out of or in relation to the validity,
interpretation or performance of the provisions of this Agreement, the parties
shall first meet and try in good faith to resolve their differences. In the
event they are unable to meet within ten (10) days of either party requesting a
meeting or are unable to resolve their differences within ten (10) days of their
meeting, then the parties shall forthwith appoint a fairness committee
("Fairness Committee") comprised of three representatives of each of Licensor
and Licensee (provided that the three representatives of Licensee shall be
chosen by the Investors only) who shall meet together in an effort to resolve
their differences.
14.2 Arbitration. In the event that the parties are unable to appoint a Fairness
Committee within five (5) days of either party requesting same or the Fairness
Committee is unable to meeting within five (5) days of its creation or the
Fairness Committee is unable to resolve any dispute through negotiation as set
forth in subsection 14.1 within ten (10) days of its meeting, then such dispute
shall be definitively dealt with using the rules of conciliation and arbitration
of the International Chamber of Commerce, by one or more arbitrators appointed
in accordance with said rules, and to the exclusion of any courts, except for
injunctive relief and any provisional remedy, including seizure before judgment,
which may be obtained from any court or tribunal having jurisdiction. Any
arbitration proceeding required pursuant to the terms thereof shall take place
in New York, New York and shall be conducted in both the English and French
language. The cost of the arbitration shall be borne in the manner provided for
in the arbitration award.
SECTION 15 - MISCELLANEOUS PROVISIONS
15.1 Notices. All notices, requests, demands and other communications hereunder
shall be given in writing and shall be given by telecopier, or delivered by
hand, to the other party at the following addresses:
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if to the Licensee 3362469 CANADA INC.
x/x Xxxxxxxx Xxxxxxxxxx
0000 Xxxx-Xxxxxxxx Blvd. West
Suite 1400
Xxxxxxxx, Xxxxxx
X0X 0X0
Attention: Xxxxxx Xxxxxxxx
Telecopier: (000) 000-0000
if to the Licensor: H POWER CORP.
00 Xxxxxxxxxx Xxxxxx
Xxxxxxxxxx, Xxx Xxxxxx
00000, X.X.X.
Attention: the President
Telecopier: (000) 000-0000
with a copy in
all cases to: SOFINOV SOCIETE FINANCIERE D'INNOVATION INC.
0000 XxXxxx Xxxxxxx Xxxxxx
Xxxxxxxx, Xxxxxx
X0X 0X0
Attention: the President
Telecopier: (000) 000-0000
SOCIETE INNOVATECH DU GRAND MONTREAL
0000 Xxxxxxxxxx Xxxxxx
Xxxxx 0000
Xxxxxxxx, Xxxxxx
X0X 0X0
Attention: President and Chief Executive Officer
Telecopier: (000) 000-0000
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0000-0000 XXXXXX INC.
x/x Xxxxxxxx Xxxxxxxxxx
0000 Xxxx-Xxxxxxxx Blvd. West
Suite 1400
Xxxxxxxx, Xxxxxx
X0X 0X0
Attention: Xxxxxx Xxxxxxxx
Telecopier: (000) 000-0000
with a copy in
all cases to: XXXXXXXX XXXXXXXXXX
0000 Xxxx-Xxxxxxxx Blvd. West
Suite 1400
Xxxxxxxx, Xxxxxx
X0X 0X0
Attention: Xxxxxx Xxxxxxxx
Telecopier: (000) 000-0000
XXXXX XXXXXXXXXXXX ET AL
000 Xxxx 00xx Xxxxxx
00xx Xxxxx
Xxx Xxxx, XX 00000
Attention: Xxxxx Xxxxxxx
Telecopier: (000) 000-0000
or at such other address as each party may have previously indicated to the
other party in writing in conformity with the foregoing. Any such notice,
request, demand or other communication shall be deemed to have been received on
the date of delivery if delivered by hand, or the next business day immediately
following the date of transmission if sent by telecopier. The original copy of
any notice sent by telecopier shall be forwarded to the other party by
registered mail, receipt return requested.
15.2 Further Documents. The parties undertake to execute and deliver such
documents and do such things as may be necessary or advisable to give full
effect to the terms of this Agreement.
15.3 Gender. Any reference in this Agreement to any gender shall include both
genders and the neutral, and words used herein importing the singular number
only shall include the plural and vice versa.
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15.4 Headings. The division of this Agreement into Sections, subsections and
other subdivisions, and the insertion of headings are for convenience of
reference only and shall not affect or be utilized in the construction or
interpretation of this Agreement.
15.5 Severability. Any Section, subsection or other subdivision of this
Agreement or any other provision of this Agreement which is, or becomes,
illegal, invalid or unenforceable shall be severed therefrom and shall be
ineffective to the extent of such illegality, invalidity or unenforceability and
shall not affect or impair the remaining provisions hereof, which provisions
shall be severed from an illegal or unenforceable Section, subsection or other
subdivision of this Agreement or any other provisions of this Agreement.
15.6 Entire Agreement. This Agreement together with any other instruments to be
delivered pursuant hereto, constitute the entire agreement among the parties
pertaining to the subject matter hereof and supersede all prior agreements,
understandings, negotiations, and discussions, whether oral or written, between
the parties.
15.7 Amendments. No amendment of this Agreement shall be binding unless
otherwise expressly provided in an instrument duly executed by each party
hereto.
15.8 Waiver. Except as otherwise provided in this Agreement, no waiver of any of
the provisions of this Agreement shall be deemed to constitute a waiver of any
other provisions (whether or not similar), nor shall such waiver constitute a
continuing waiver unless otherwise expressly provided in an instrument duly
executed by the parties.
15.9 Delays. When calculating the period of time within which or following which
any act is to be done or step taken pursuant to this Agreement, the day which is
the reference day in calculating such period shall be excluded. If the day on
which such delay expires is not a business day, then the delay shall be extended
to the next succeeding business day.
15.10 Preamble. The preamble hereof shall form an integral part of this
Agreement.
15.11 Governing Law. This Agreement shall be governed in all respects by the
laws of the State of New York as they are applied to agreements entered into in
New York between New York residents and performed entirely within New York.
15.12 Separate entities. This is an agreement between separate entities and
neither is the agent or servant of or possesses the power to obligate the other.
This Agreement shall not be construed so as to constitute Licensor and Licensee
partners or joint venturers or so as to create any other form of legal
association which imposes liability upon either party for the acts or omissions
of the other party.
15.13 Successors and assigns. This Agreement and the provisions hereof shall
enure to the benefit of and be binding upon the parties and their respective
successors and permitted assigns. Any
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party shall not assign any of its rights, title and interest in and to this
Agreement without the other party's prior written consent, which consent shall
not be unreasonably withheld or delayed.
15.14 Currency and conversion rate. All amounts due hereunder shall be paid in
the lawful currency of the United States of America, at the address designated
by either party from time to time. If any amounts are expressed in a foreign
currency, such amount shall be converted at the noon rate as reported by the
Royal Bank of Canada for the conversion of such foreign currencies into U.S.
dollars on the due date of such amounts.
15.15 Counterparts. This Agreement may be executed in any number of
counterparts, each of which shall be deemed to be an original, but all of which
together shall constitute one and the same document.
15.16 Language. The parties hereto state their express wish that this Agreement
as well as all documentation contemplated hereby or pertaining hereto or to be
executed in connection herewith be drawn up in English; les parties expriment
leur xxxxx explicite a l'effet que cette convention de meme que tous documents
envisages par les presentes ou y ayant trait ou qui seront signes relativement
aux presentes soient rediges en anglais.
IN WITNESS WHEREOF, the parties have signed at the place and on the date
first hereinabove mentioned.
H POWER CORP. 3362469 CANADA INC.
Per: /s/ H. Xxxxx Xxxxxxx Per: /s/ Xxxxxx Xxxxxxxx
----------------------------- ------------------------------------
H. Xxxxx Xxxxxxx, President Xxxxxx Xxxxxxxx, Chairman of the
Board and Secretary
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