Form of] Patent Assignment Agreement and License
Exhibit
10.8
[Form
of]
This
Patent Assignment Agreement (this “Agreement”),
effective as of _________ , 2005 (the “Effective
Date”)
is between The Dow Chemical Company, a Delaware corporation (“Dow”)
and Millennium Cell Inc., a Delaware corporation (“MCEL”).
Dow and MCEL also may be referred to herein individually as a “Party”
or collectively as the “Parties.”
Recitals
WHEREAS,
the Parties entered into that certain Stock Purchase Agreement, dated as of
February 27, 2005 (the “Stock
Purchase Agreement”),
pursuant to which, among other things, at the First Closing (as defined in the
Stock Purchase Agreement), the Parties are to enter into this
Agreement;
WHEREAS,
the First Closing (as defined in the Stock Purchase Agreement) has occurred and,
simultaneously therewith, the Parties are entering into this Agreement pursuant
of the Stock Purchase Agreement;
WHEREAS,
simultaneously with the entering into of this Agreement, Dow and MCEL have also
entered into that certain Joint Development Agreement, dated as of the date
hereof (the “Joint
Development Agreement”);
WHEREAS,
simultaneously with the entering into of this Agreement, Dow and MCEL have also
entered into the Cross-Licensing and Intellectual Property Agreement, dated as
of the date hereof (the “Cross-Licensing
Agreement”);
WHEREAS,
prior to entering into the Joint Development Agreement, Dow and MCEL have
jointly filed the Patent (as defined below) that is the subject of this Patent
Assignment Agreement;
WHEREAS,
Dow now desires to assign to MCEL Dow’s interest in said jointly filed Patent,
and MCEL desires to accept such assignment; and
WHEREAS,
MCEL desires to grant, and Dow desires to accept, a license under said Patent,
in each case on the terms and conditions set forth herein.
NOW,
THEREFORE, the Parties hereto, in consideration of the mutual agreements
contained herein, the receipt and sufficiency of which are hereby acknowledged,
do hereby agree as follows:
Article
I - Definitions
1.01 “Affiliate”
means,
with respect to any person or entity (a “Person”),
any Person which, directly or indirectly, controls, is controlled by, or is
under common control with such Person, including, without limitation, any
partner, officer, director, or member of such Person; provided,
however,
that Dow is not an Affiliate of MCEL.
1.02
“Application”
has the meaning given such term in the Cross-Licensing Agreement.
1.03
“Field
of Use”
has the meaning given such term in the Cross-Licensing Agreement.
1.04
“JDA
Intellectual Property”
has the meaning given such term in the Cross-Licensing Agreement.
1.05
“MFN
License”
has the meaning given such term in the Cross-Licensing Agreement.
1.06 “Non-Exclusive
Areas”
means, collectively, outside of the Field of Use (whether or not within the
Application) and outside of the Application (whether or not within the Field of
Use).
1.07 “Patent”
means US Provisional Patent Application Serial No. 60/562,132, filed jointly
between MCEL and Dow on April 14, 2004, and all other intellectual property
rights claiming priority from such provisional patent application.
1.08 “Use”
means the right to use, practice, make, have made, reproduce, modify, enhance,
upgrade, create derivative works, import, export, copy and sell, offer for sale,
license and/or sublicense.
Article
II - Assignment
In
conjunction with and simultaneously with the First Closing (as defined in the
Stock Purchase Agreement), Dow agrees to make the following
contributions:
2.01 Dow
hereby assigns to MCEL as a contribution the entire right, title and interest of
Dow and its Affiliates in and to the Patent, and MCEL agrees to accept the
assignment from Dow.
2.02 Dow
will provide MCEL duly executed assignments in recordable form for the Patent no
later than thirty (30) days from the Effective Date.
Article
III - License
|
3.01 |
MCEL, on behalf of itself and its Affiliates, hereby grants to Dow a fully paid-up, world-wide, non-cancelable, sub-licensable, non-exclusive license under the Patent for any Use in the Non-Exclusive Areas. |
|
3.02 |
“Most Favored Nation” License of the Patent within Field of Use and within Application. Upon the written request of Dow, MCEL shall grant to Dow, and Dow shall accept from MCEL, an MFN License subject to the procedure contained in the Cross-Licensing Agreement with respect to JDA Intellectual Property. |
| 3.03 | Dow’s Right of First Refusal in the Patent. In the event MCEL proposes to grant an exclusive license or exclusive transfer of the Patent to any third party licensee or transferee for any Use within the Field of Use and within the Application, Dow shall have a right of first refusal to enter into such license or transfer agreement with respect to the Patent on substantially similar terms as the terms in which MCEL proposes to license or transfer the Patent to such third party licensee or transferee, subject to the procedure contained in the Cross-Licensing Agreement. |
Article
IV - Investment in MCEL
4.01 In
consideration of the undertakings of Dow pursuant to this Agreement, Dow will be
issued Preferred Shares (as defined in the Stock Purchase Agreement) and
Warrants (as defined in the Stock Purchase Agreement) of MCEL pursuant to the
terms of the Stock Purchase Agreement between Dow and MCEL.
Article
V - Warranties, Indemnifications and Representations
5.01
Except
as expressly stated in this Agreement, the Patent is provided to MCEL “as is”.
5.02 Dow’s
only duties under this Agreement are those expressly set out herein. Dow
disclaims any other oral or implied duties or obligations with respect to the
Patent. In particular and without limitation, this Agreement does not grant
MCEL
any right to receive technical assistance or impose upon Dow or its Affiliates
any duty to provide technical assistance.
5.03 In
no event will either Party be liable to the other Party for any consequential,
special, punitive, exemplary, indirect or incidental damages as a result of
activities under this Agreement. This Section 5.03 will apply regardless of
whether the damages were foreseeable, and irrespective of the theory or cause of
action upon which such damages might be based, including but not limited to
negligence or other tort, contract, strict liability, breach of warranty, or
otherwise.
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5.04 MCEL
will be solely responsible for and assumes all risks of its practice under the
Patent. Dow expressly disclaims any warranty and obligation with respect to the
performance or operability of any practice under the Patent.
5.05 MCEL
agrees to hold harmless and indemnify Dow, its officers, directors, employees
and agents and its Affiliates’ officers, directors, employees and agents, from
and against any claims, demands, or causes of action whatsoever, including
without limitation those arising on account of any injury or death of persons or
damage to property caused by, or arising out of, or resulting from, the exercise
or practice of the Patent by MCEL.
5.06
Dow
warrants and represents to MCEL as of the Effective Date that:
| (a) | it has the full right to convey the interests in the Patent herein assigned; |
| (b) | it has no actual knowledge of any cause, claim or other matter that would preclude issuance of the Patent, provided, however, that Dow makes no warranty or representation that any such cause, claim or other matter does not exist; |
5.07 Except
as specifically provided herein, Dow and its Affiliates disclaim any and all
express or implied warranties (1) with respect to the Patent including, but not
limited to, any warranty that the Patent is valid or enforceable, or that
MCEL’s
practice of the Patent will not infringe patents owned by third parties; and (2)
as to the operability or fitness for any particular purpose of the intellectual
property encompassed within the Patent.
Article
VI - Miscellaneous
6.01 No
Party shall assign any rights or obligations under this Agreement without the
prior written consent of the other Party, provided, however, that Dow may assign
any and all rights and obligations under this Agreement to any of its
Affiliates.
6.02 This
Agreement shall be governed by and construed in accordance with the laws of the
State of Delaware without regard to its principles of conflicts of
laws.
6.03 All
notices and other communications given or made pursuant to this Agreement shall
be in writing and shall be deemed effectively given: (i) upon personal delivery
to the Party to be notified, (ii) when sent by confirmed electronic mail or
facsimile if sent during normal business hours of the recipient, and if not so
confirmed, then on the next Business Day (as defined in the Stock Purchase
Agreement), (iii) five (5) days after having been sent by registered or
certified mail, return receipt requested, postage prepaid, or (iii) one (1) day
after deposit with a nationally recognized overnight courier, specifying next
day delivery, with written verification of receipt. All communications shall be
sent to the address or facsimile number set forth below or to such other address
or facsimile number as delivered by notice to the other in accordance with this
Section
6.03:
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If
to MCEL:
0
Xxxxxxxxxx Xxx Xxxx
Xxxxxxxxx,
Xxx Xxxxxx 00000
Attention:
President
Facsimile:
732.542.4010
With
a copy to:
Dickstein,
Shapiro, Xxxxx & Xxxxxxxx LLP
0000
X Xxxxxx, X.X.
Xxxxxxxxxx,
X.X. 00000-0000
Attention:
Xxxx Xxxxxxxxx
Facsimile:
202.887.0689
If
to Dow:
The
Dow Chemical Company
0000
Xxx Xxxxxx
Xxxxxxx,
Xxxxxxxx 00000
Attention:
Director, Emerging Energy, Dow Ventures
Facsimile:
989.638.7133
With
a copy to:
The
Dow Chemical Company
0000
Xxx Xxxxxx
Xxxxxxx,
Xxxxxxxx 00000
Attention:
Business Counsel, Dow Ventures
Facsimile:
989.636.7594
King
& Spalding LLP
0000
Xxxxxxxxxxxx Xxxxxx, X.X.
Xxxxxxxxxx,
X.X. 00000
Attention:
Xxxxx Xxxxxxx
Facsimile:
202.626.3737
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6.04 Each
Party will, at any time and from time to time, after the Effective Date, upon
request of any other Party, do, execute, acknowledge and deliver, all such
further documents, assignments, agreements, and the like, as may be appropriate,
necessary or required to carry out the transactions contemplated in this
Agreement.
6.05 This
Agreement may be executed in two or more identical counterparts, each of which
will be valid as an original, but all of which together shall constitute one and
the same instrument.
6.06 This
Agreement and the other Transaction Agreements (as defined in the Stock Purchase
Agreement) constitute the full and entire understanding and agreement between
the Parties with respect to the subject matter hereof, and any other written or
oral agreement relating to the subject matter hereof existing between the
Parties are expressly canceled.
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IN
WITNESS WHEREOF, the parties hereto have duly executed and delivered this
Agreement, as of the date first above written.
By: _____________________________________
Name:
Title:
THE
DOW CHEMICAL COMPANY
By: _____________________________________
Name:
Title:
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