RESEARCH AND DEVELOPMENT AGREEMENT
AGREEMENT (this "Agreement") made this 11th day of January, 1998, by and
between Energy Related Devices, Inc., a New Mexico corporation having its
principal office at 0000 Xxxxxxx Xxxxxx, Xxx Xxxxxx, Xxx Xxxxxx 00000 ("ERDI"),
and Tamarack Storage Devices, Inc., a Texas corporation having its principal
office at 000 Xxxx Xxxx, Xxxxx Xx, XX 00000 (and together with Manhattan
Scientifics, Inc., a Delaware corporation and the sole shareholder of Tamarack
Storage Devices, Inc., collectively referred to as "MSI").
W I T N E S S E T H:
WHEREAS, MSI has the exclusive license to all of those patents (the
"Patents") pursuant to that certain License Agreement between DKY. Inc. (MSI's
predecessor-in-interest) and Xxxxxx Xxxxx Xxxxxxxx, the owner of 99% of the
issued and outstanding stock of ERDI (the remaining 1% of the issued and
outstanding stock being owned by Xxxxxxx Xxxx Xxxxxx), a copy of which is
attached hereto as Schedule A (the "License Agreement"), which License Agreement
relates to the exclusive worldwide rights with respect to (i) all of the Patents
relating to an invention referred to as the micro fuel cell (the "Fuel Cell
Patents"), and (ii) all of the Patents relating to an invention referred to as
the solar cell (the "Solar Cell Patents"); and
WHEREAS, MSI desires to commercialize, market, sell and license products
based on the Fuel Cell Patents (the "Fuel Cell Products") and products based on
the Solar Cell Patents (the "Solar Cell Products"); and
WHEREAS, MSI desires to engage ERDI to conduct all necessary research and
development efforts with respect to the Patents to produce a prototype suitable
for commercial sale or license and further development of each of the Fuel Cell
Product and the Solar Cell Product; and
WHEREAS, ERDI desires to provide such research and development services to
MSI to produce a prototype suitable for commercial sale or license and further
development of each of the Fuel Cell Product and the Solar Cell Product upon the
terms and conditions hereinbelow set forth; and
NOW THEREFORE, in consideration of the premises and the mutual covenants
and agreements hereinafter set forth, and for other good and valuable
consideration, the receipt and sufficiency of which is hereby acknowledged, the
parties hereto covenant and agree as follows:
1. Scope of Duties of ERDI.
ERDI agrees to use its best efforts in connection with its research and
development efforts with respect to the Patents to produce a prototype suitable
for commercial sale or license and further development of each of the Fuel Cell
Product and the Solar Cell Product as such products are described in ERDI's
business plan dated February 11, 1997, a copy of which is attached hereto as
Schedule X. XXXX agrees to provide the exclusive services of Xx. Xxxxxx Xxxxx
Xxxxxxxx in connection with the rendering of those services reasonably capable
of being performed by Xx. Xxxxxxxx pursuant to this Agreement and Xx. Xxxxxxxx
shall have primary responsibility for performing and overseeing all services to
be provided hereunder. Notwithstanding the foregoing, Xx. Xxxxxxxx shall be
entitled to devote up to five (5%) percent of his business time on a monthly
basis to providing personal services with respect to that certain electrostatic
print product referred to as "Permacharge," provided that such activities do not
have a material adverse effect on the performance of his duties hereunder. At
MSI's request, ERDI shall also provide to MSI the exclusive services of Xx.
Xxxxxxxx in those aspects reasonably capable of being performed by Xx. Xxxxxxxx
relative to the commercialization of the Fuel Cell Product and Solar Cell
Product, including but not limited to (i) raising capital in the United States
and any other geographic locations, (ii) participating in road shows, public
relations events, press conferences and other similar events, (iii) working on
matters related to the Los Alamos National Laboratory, the University of
California and United States Department of Energy, (iv) prototyping applications
of the Patents for potential users (by way of example, building a cellular phone
with a working micro fuel cell power source) and (v) managing the ERDI facility
located within MSI's facility in Los Alamos, New Mexico. The research and
development activities required of ERDI hereunder shall be conducted in Los
Alamos, New Mexico, or such other location or locations as the Parties shall
mutually agree upon from time to time.
2. Term of Agreement. This Agreement shall be for a term commencing on the
Commencement Date (as hereinafter defined) and terminating on the later of (i)
three (3) years after the Commencement Date or (ii) the date ERDI delivers to
MSI a prototype suitable for commercial sale or license with respect to each of
the Fuel Cell Product and Solar Cell Product (or substitute products therefor in
accordance with Section 9 hereof). For purposes of this Agreement, the term
"Commencement Date" shall mean the first date on which (i) that certain Limited
Offering of Grand Enterprises, Inc. (the predecessor-in-interest of MSI),
pursuant to the Limited Offering Memorandum dated November 12, 1997, shall have
been consummated, (ii) the Agreement and Plan of Reorganization among Grand
Enterprises, Inc., Grand Subsidiary, Inc. and Tamarack Storage Devices, Inc.
2
shall have been consummated, and (iii) MSI and ERDI shall have agreed upon the
Milestone Timetable (as hereinafter defined). Notwithstanding anything herein to
the contrary, each party shall have the right to terminate this Agreement on
sixty (60) days prior written notice (which written notice to be effective must
describe the alleged default with specificity) in the event that the other party
shall have materially breached this Agreement; provided, however, that in the
event that MSI or ERDI, as the case may be, shall, within such sixty (60) days,
cure the default complained of, then the notice shall cease to be operative and
this Agreement shall continue in full force and effect as though such default
has not occurred.
3. Payment to ERDI. As full and total consideration for the services to be
provided by MSI to ERDI hereunder, MSI shall pay to ERDI the following:
(a) the aggregate sum (the "Aggregate Sum") of up to one million dollars
($1,000,000), all in accordance with the terms and conditions of the Milestone
Timetable to be attached hereto and made a part hereof (for purposes of this
Agreement, the term "Milestone Timetable" shall mean a twelve (12) month
timetable commencing on the Commencement Date, to be agreed upon by MSI and ERDI
in writing after the date hereof, setting forth certain milestones that ERDI
must achieve within certain periods of time (each a "Milestone Period") prior to
receiving a portion of the Aggregate Sum), and in connection therewith, MSI and
ERDI hereby agree that (i) with respect to the six month period immediately
following the Commencement Date, the Milestone Timetable shall provide that ERDI
may receive no more than the sum of two hundred fifty thousand dollars
($250,000), and (ii) with respect to the seventh through twelfth months after
the Commencement Date, the Milestone Timetable shall provide that ERDI may
receive no more than the sum of seven hundred fifty thousand dollars ($750,000)
(the "$750,0000 Payment");
(b) in the event that ERDI delivers to MSI a prototype of a Fuel Cell
Product that MSI determines, in good faith, is suitable for commercial sale or
license, then MSI shall not be obligated to make any further payments to ERDI
pursuant to Section 3 (a) hereof and MSI shall immediately thereafter commence
to pay to ERDI the sum of ten thousand dollars ($10,000) per month until such
time as MSI is able to provide additional capital in an amount that MSI and ERDI
mutually determine, in good faith, to be sufficient to fund the research and
development efforts with respect to the Solar Cell Product; and
(c) in addition to the sums set forth in Sections 3(a) and 3(b) hereof,
MSI shall use its best efforts to provide up to an additional five hundred
thousand ($500,000) of funding to ERDI hereunder, subject to appropriate
modifications to be made to the Milestone Timetable to be agreed upon by the
parties hereto as a
3
result of such additional funding, in the event ERDI should receive same to
fulfill its obligation to deliver a prototype of a Fuel Cell Product that MSI
determines, in good faith, is suitable for commercial sale or license and
further development.
(d) Ten (10) days prior to the earlier of the completion of a milestone or
the expiration of the applicable Milestone Period, ERDI shall provide MSI with
(i) a detailed written report describing the extent to which ERDI is in
compliance with its milestones in respect of such Milestone Period, and (ii)
books of account of its expenditure of funds in respect of such Milestone
Period. In the event that the parties hereto, within ten (10) days after receipt
of (i) and (ii) in the preceding sentence (collectively, the "Milestone Report")
with respect to the applicable Milestone Period, mutually agree that ERDI has
achieved the milestones referred to in the Milestone Report, then the funds for
the next Milestone Period will promptly be transferred via wire transfer by MSI
to ERDI. In the event that (i) the parties hereto cannot agree that ERDI has
achieved the milestones with respect to a Milestone Period relative to the
Milestone Report, or (ii) MSI does not have sufficient funds available to make
the payment with respect to the next applicable Milestone Period notwithstanding
the fact that the parties are in agreement with respect to the Milestone Report,
then the payment of the funds for such next Milestone Period shall be delayed
and not transferred by MSI to ERDI until such time as such milestones have been
achieved by ERDI or MSI obtains the funds to make the applicable payment, as the
case may be (such period of time shall be referred to herein as the "Delayed
Payment Period"); provided; however, that in the event that there occurs a
Delayed Payment Period because MSI does not have sufficient funds to make a
payment with respect to the next Milestone Period, then MSI shall MSI shall pay
to ERDI the sum of seven thousand dollars ($7,000) per month until such time as
MSI obtains the funds to make the applicable payment, and in such event MSI
shall be entitled to offset from the Aggregate Sum five thousand dollars
($5,000) for each seven thousand dollar ($7,000) payment by MSI to ERDI during
the Delayed Payment Period.
In the event that upon eighteen (18) months after the Commencement Date
(excluding the elapsed time during the Delayed Payment Period, which such
elapsed time shall be subject to an eighteen (18) month limit), MSI shall not
have secured financing sufficient to fund the lesser of (i) the entire Aggregate
Sum or (ii) the full development of the prototype of the Fuel Cell Product in
accordance with the Milestone Timetable then MSI shall (i) grant to ERDI a
non-exclusive license to use, research, develop, market, and otherwise
commercialize the Patents pursuant to which ERDI shall be obligated to (i) make
payments to MSI upon the same royalty and net sales percentage terms and
conditions forth in Section 3 of the Assignment Agreement and (ii) release
4
ERDI and Xxxxxx Xxxxxxxx from all obligations and restrictions in Sections 1, 8
and 9 of this Agreement.
(e) On the date hereof, MSI shall deposit five hundred thousand dollars
($500,000) of the Aggregate Sum into a bank account of ERDI (the "ERDI
Account"). With respect to the first $250,000 of payments of the Aggregate Sum
to be paid to ERDI in accordance with the Milestone Timetable and the provisions
of Section 3 hereof, such $250,000 shall be payable from the ERDI Account to
ERDI and shall require only a signature of ERDI to be released from the ERDI
Account. With respect to the second $250,000 of payments of the Aggregate Sum to
be paid to ERDI in accordance with the Milestone Timetable and the provisions of
Section 3 hereof, such $250,000 shall be payable from the ERDI Account to ERDI
and shall require both the signature of ERDI and MSI to be released from the
ERDI Account. The parties hereto shall mutually agree on the banking
arrangements, including, without limitation, the type and number of accounts,
necessary to effectuate the matters set forth in this section 3(e).
4. Confidential Proprietary Information and Trade Secrets. Each party
hereto acknowledges that it shall receive written and oral confidential
information concerning the other in connection with this Agreement and
otherwise. Accordingly, each party agrees that all such confidential information
shall be treated as proprietary and strictly confidential by such party, and its
affiliates, principals, shareholders, officers, directors, employees and agents,
including professional advisors, and the confidential information shall only be
revealed to those affiliates, principals, shareholders, officers, directors,
employees and agents (including professional advisors) of such party who have a
need to know such information.
The obligations of this paragraph shall not apply to information that is
(i) independently publicly disclosed by parties unaffiliated to either of the
parties hereto, (ii) known to either party prior to the date hereof, or (iii)
readily and legitimately available from public sources.
It is expressly agreed that the provisions of this paragraph 4 shall apply
to all confidential information received by the parties hereto whether under
this Agreement or otherwise and that the provisions of this paragraph 4 shall
survive the expiration or termination hereof.
5. Status as Independent Contractor; Representations of the Parties. (a)
ERDI's engagement pursuant to this Agreement shall be as independent contractor
and not as an employee, officer or other agent of MSI. Neither party to this
Agreement shall represent or hold itself out to be the employer or employee of
the other.
5
(b) Each party hereby represents and warrants to the other that it has the
full right, power and authority to enter into this Agreement and upon the
execution hereof, this Agreement shall constitute a valid and binding agreement
of such party and be enforceable against such party in accordance with its
terms.
(c) ERDI represents and warrants that:
(i) ERDI is a corporation duly organized, validly existing and in
good standing under the laws of the State of New Mexico, and has all the
necessary corporate powers to own its properties, and carry on its business as
now owned and operated.
(ii) The execution and delivery of this Agreement and the
consummation by ERDI of the transactions described herein have been duly
authorized, and no further corporate action or authorization is necessary in
connection therewith.
(iii) The consummation by ERDI of the transactions contemplated
herein will not result in or constitute any of the following: a breach of any
term or condition of any agreements to which ERDI is a party; a default or an
event that, with notice or lapse of the time or both, would constitute a
default, breach or violation of the Articles of Incorporation or Bylaws of ERDI
or any license, promissory note or other agreement, instrument or arrangement to
which ERDI is a party; or an event that would permit any party to terminate an
agreement or accelerate the maturity of any obligation of ERDI.
(iv) ERDI shall use its best, diligent efforts to perform the duties
required of it hereunder as set out in the Milestone Timetable.
(v) ERDI in good faith believes that, based on facts now known to
ERDI and its research and development efforts to date concerning the Patents,
that inventions to be derived from the Patents will work, that they will be
commercially mass-producible at low cost, that they are practical and safe, that
they will substantially perform to the standards described to MSI in ERDI's
Business Plan attached hereto as Schedule B; provided, however that the parties
hereto expressly acknowledge that this assessment may change as the services to
be provided pursuant to this Agreement progress.
(vi) THE REPRESENTATIONS AND WARRANTIES SET FORTH IN SECTIONS
5(i)-(v) above, ARE IN LIEU OF ALL OTHER REPRESENTATIONS AND WARRANTIES, AND
ERDI DISCLAIMS ALL OTHER WARRANTIES, WHETHER EXPRESS OR IMPLIED, INCLUDING,
WITHOUT LIMITATION, ANY IMPLIED WARRANTY OF MERCHANTABILITY OR FITNESS FOR A
PARTICULAR PURPOSE, AND ANY WARRANTIES, REPRESENTATIONS OR AFFIRMATIONS OF FACT
(EXPRESS OR IMPLIED) CONTAINED IN THE SCHEDULES TO THIS AGREEMENT RELATING TO
PATENT SCOPE, VALIDITY, AND ENFORCEABILITY, R&D COST
6
AND THE SCHEDULES HERETO (EXCEPT FOR THE GOOD FAITH BASIS OF THE SAME), AND
CONTENT CONTAINED IN ERDI BUSINESS PLAN PERTAINING TO MARKET SIZE, POTENTIAL
PRODUCTS AND COMMERCIAL OPPORTUNITIES OR COMMERCIAL VIABILITY OF PRODUCTS
RELATING TO THE PATENTS. NO ORAL OR WRITTEN INFORMATION OR ADVICE GIVEN BY ERDI
OR A ERDI AUTHORIZED REPRESENTATIVE SHALL CREATE A WARRANTY OR IN ANY WAY
INCREASE THE SCOPE OF THIS WARRANTY OR ACT TO DEROGATE OR LIMIT ITS DISCLAIMER.
(d) MSI represents and warrants that:
a. MSI is a corporation duly organized, validly existing and in good
standing under the laws of the State of Delaware, and has all necessary
corporate powers to own its properties, and carry on its business as now owned
and operated.
b. The execution and delivery of this Agreement and the consummation
by MSI of the transactions described herein have been duly authorized, and no
further corporate action or authorization is necessary in connection therewith.
c. The consummation by MSI of the transactions contemplated herein
will not result in or constitute any of the following: a breach of any term or
condition of this Agreement; a default or an event that, with notice or lapse of
time or both, would constitute a default, breach or violation of the Articles of
Incorporation or Bylaws of MSI or any license, promissory note or other
agreement, instrument or arrangement to which MSI is a party; or an event that
would permit any party to terminate an agreement or to accelerate the maturity
of any obligation of MSI.
6. Lease. MSI hereby agrees to sublet space to ERDI at MSI's offices
located in Los Alamos, New Mexico on terms and conditions to be mutually
negotiated by MSI and ERDI in good faith.
7. Life Insurance; Patent Infringement Insurance. Prior to January 31,
1998, ERDI hereby agrees to obtain a key-man life insurance policy on the life
of Xxxxxx Xxxxxxxx, at MSI's cost and expense, in the amount of two million
dollars ($2,000,000) listing MSI as the owner and beneficiary of such policy. In
addition, as soon as practicable after the Commencement Date, ERDI hereby agrees
to obtain patent infringement insurance with respect to the Patents, to be paid
for by ERDI with funds provided to ERDI by MSI which are allocated for this
purpose.
8. Xxxxxx Xxxxxxxx'x Responsibilities. Xxxxxx Xxxxxxxx hereby personally
agrees to provide his services as ERDI's employee hereunder, and shall be
personally obligated to perform the covenants, relative to his personal services
set forth herein. In addition, Xxxxxx Xxxxxxxx hereby represents and warrants to
MSI that in good faith he believes that, based on
7
facts now known to Xxxxxx Xxxxxxxx and his research and development efforts to
date concerning the Patents, that inventions to be derived from the Patents will
work, that they will be commercially mass-producable at low cost, that they are
practical and safe, that they will substantially perform to the standards
described to MSI in ERDI's Business Plan attached hereto as Schedule B. The
parties hereto expressly acknowledge that this assessment may change as the
services to be provided pursuant to this Agreement progress. Further, with
respect to the representations and warranties set forth in this Section 8,
Xxxxxx Xxxxxxxx hereby also personally makes, to the same extent as ERDI, the
same disclaimers made by ERDI in Section 5(c) (vi) hereof.
9. Patent Substitution. In the event that ERDI is unable to deliver the
Fuel Cell Product and/or Solar Cell Product in accordance with terms and
conditions of this Agreement, Xxxxxxxx shall be obligated to substitute the Fuel
Cell Patents and/or Solar Cell Patents, respectively, with one portfolio of
patents now existing or hereafter created (or two portfolios of patents in the
event that he is unable to deliver both the Fuel Cell Product and the Solar Cell
Product) unrelated to the Fuel Cell Patents and Solar Cell Patents, which
substitute technology, by mutual agreement of the parties, could be
significantly different from the Fuel Cell or Solar Cell, and any such portfolio
of patents with respect to the substitution technology and products based on
such patents shall be subject to the terms and conditions of the Assignment
Agreement and this Agreement to the same extent as the Fuel Cell Patents (and
the Fuel Cell Product) or Solar Cell Patents (and the Solar Cell Product), as
the case may be; provided; however, that in the event that a substitution of the
Fuel Cell Patents or Solar Cell Patents, as the case may be, occurs pursuant to
this Section 9, then all of Licensee's right, title and interest to the Fuel
Cell Patents or Solar Cell Patents, respectively, shall automatically be deemed
to have been assigned to the Licensor. In connection with the immediately
preceding sentence, from time to time during the term hereof as the parties
hereto shall mutually determine, ERDI shall seek to develop other technologies
other than those related to the Fuel Cell Patents and Solar Cell Patents that
ERDI believes, in good faith, are capable of being commercialized.
10. Third Party Funding. MSI shall have the right to engage third parties
to provide all or part of the Aggregate Sum due to ERDI hereunder, and any funds
so provided by such third parties shall automatically be deemed (to the extent
of such payments) to fulfill MSI's obligations hereunder with respect to the
Aggregate Sum.
11. Exports. The Parties agree that neither the Patents nor any other
technical data, nor the direct product thereof, will be exported outside the
United States except as authorized
8
and as permitted by the laws and regulations of the United States.
12. Insurance. The parties hereto shall maintain in effect at all times
during the term hereof commercially reasonable insurance (including, without
limitation, worker's compensation, public liability, product liability, property
damage and automobile liability insurance) against reasonable business losses,
claims, demands, proceedings, damages, costs, charges and expenses for injuries
or damage to any person or property arising out of or in connection with this
Agreement which are the result of the fault or negligence of themselves, their
agents or subcontractors.
13. Waiver. The waiver by either party of a breach of any provision of
this Agreement shall not operate or be construed as a continuing waiver of any
subsequent breach by either party. No waiver by either party of any provision or
condition to be performed shall be deemed a waiver of similar or dissimilar
provisions or conditions at the same time or any prior or subsequent time.
14. Entire Agreement. This Agreement and the License Agreement embody and
constitute the full and complete understanding and agreement of the parties with
respect to the subject matter hereof, supersedes all prior understandings and
agreements, whether oral or written between ERDI and MSI, and shall not be
amended, modified or changed except by an instrument in writing executed by the
party to be charged. The invalidity or partial invalidity of one or more
provisions of this Agreement shall not invalidate any other provision of this
Agreement.
15. Notices. All notices, requests, and other communications hereunder
shall be deemed to be duly given if sent postage prepaid, by registered or
certified mail, return receipt requested, or by U.S. express mail or by private
overnight mail service (e.g., Federal Express) addressed to the other party at
the address as set forth herein below:
If to MSI, to:
Manhattan Scientifics, Inc.
c/o Projectavision, Inc.
0 Xxxx Xxxxx Xxxxx 000
Xxx Xxxx, XX 00000
Attention: Xxxxxx Xxxxxx
With a copy simultaneously by like means to:
Xxxxxxxx Xxxx & Brandeis, LLP
000 Xxxxx Xxxxxx
Xxx Xxxx, XX 00000
Attention: Xxxxxxxx X. Xxxxxxxx, Esq.
9
If to ERDI, to:
Energy Related Devices, Inc.
0000 Xxxxxxx Xxxxxx
Xxx Xxxxxx, XX 00000
Attention: Xxxxxx Xxxxx Xxxxxxxx
With a copy simultaneously by like means to:
Xxxxxxx Xxxxxx, P.C.
000 Xxxxxxxx Xx., Xxxxx 000
Xxxxx Xx, XX 00000
16. Choice of Law. Regardless of the place of execution or performance,
this Agreement shall be governed by and construed and enforced in accordance
with the laws of the State of New York, without giving effect to such State's
conflict of laws provisions.
17. Jurisdiction and Venue. With respect to any controversy or claim
arising out of or relating to this Agreement, or the alleged breach thereof,
each of the parties hereto irrevocably consent to the jurisdiction and venue of
the federal and state courts located in either the State of New York, City of
New York or the State of New Mexico, City of Santa Fe or Albuquerque.
18. No Assignment by ERDI. ERDI may not assign or delegate any of its
rights, duties or obligations under this Agreement without the express prior
written consent of MSI.
19. Binding Effect. This Agreement shall inure to the benefit of, be
binding upon and enforceable against, the parties hereto and their respective,
successors, heirs, beneficiaries and permitted assigns, which permission shall
not be unreasonably withheld.
20. Headings. The headings contained in this Agreement are for convenience
of reference only and shall not affect in any way the meaning or interpretation
of this Agreement.
21. Counterparts. This Agreement may be executed simultaneously in one or
more original or facsimile counterparts, each of which shall be deemed an
original, but all of which when taken together shall constitute one and the same
instrument.
10
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly executed as of the day and year first above written.
ENERGY RELATED DEVICES, INC.
By: /s/ Xxxxxx X. Xxxxxxxx 1/11/98
` -------------------------------------
Name: Xxxxxx Xxxxx Xxxxxxxx
Title: President
TAMARACK STORAGE DEVICES, INC.
By: /s/ Xxxxxx Xxxxxx
` -------------------------------------
Name: Xxxxxx Xxxxxx
Title: President 1/11/98
MANHATTAN SCIENTIFICS, INC.
By: /s/ Xxxxxx Xxxxxx
` -------------------------------------
Name: Xxxxxx Xxxxxx
Title: President 1/11/98
Solely with respect to
Sections 8 and 9 hereof:
/s/ Xxxxxx X. Xxxxxxxx 1/11/98
-----------------------------------
Xxxxxx Xxxxx Xxxxxxxx
