Exhibit 10.14
INTELLECTUAL PROPERTY TRANSFER AND
LICENSE AGREEMENT
CONTRIBUTION AGREEMENT BETWEEN
(1) SHELL INTERNATIONALE RESEARCH MAATSCHAPPIJ B.V.
and
(2) SHELL EPOXY RESINS RESEARCH B.V.
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INTELLECTUAL PROPERTY TRANSFER AND LICENCE AGREEMENT
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CONTENTS PAGE
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1. Definitions and Interpretation................................. 2
2. Patent Rights.................................................. 10
3. Invention Disclosures.......................................... 14
4. Technical Information.......................................... 16
5. Intellectual Property Agreements............................... 18
6. Technical Copyrights........................................... 19
7. Confidentiality................................................ 19
8. Indemnities; Liabilities....................................... 22
9. Export Control................................................. 23
10. Miscellaneous.................................................. 23
INDEX OF APPENDICES
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1. Intellectual Property Agreements
2. Patent Rights, Parts I-IV
3. Invention Disclosures, Parts I-III
4. Resins/Derivatives Technical Information
5. Excluded Technical Information
6. Shell Technical Information
AN AGREEMENT made between
(1) SHELL INTERNATIONALE RESEARCH MAATSCHAPPIJ B.V.
a company incorporated under the laws of the Netherlands and having its
registered office at 30 Carel van Bylandtlaan, The Hague, the Netherlands
(hereinafter referred to as "SIRM")
and
(2) SHELL EPOXY RESINS RESEARCH B.V.
a company incorporated under the laws of the Netherlands and having an
office at 30 Carel van Bylandtlaaan, The Hague, the Netherlands (hereinafter
referred to as "XXXX")
RECITALS
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1. XXXX has been created to perform research, and certain Associates of SIRM
have contributed to Associates of XXXX certain manufacturing and marketing
assets relating to the Resins/Derivatives Business (as defined in Clause
1.1).
2. SIRM now desires to contribute to XXXX, by assignment or licence and
subject to Third Party rights, certain patents, technology and associated
agreements, which are owned or under the control of SIRM and which are
related to the Resins/Derivatives Business, and XXXX desires to receive a
conveyance of the same from SIRM.
3. SIRM and XXXX now wish to set out in detail the manner in which such
patents, technology and agreements will be licensed or assigned.
NOW THEREFORE IT IS AGREED AS FOLLOWS:
CLAUSE 1 - DEFINITIONS AND INTERPRETATION
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1.1 In this Agreement:
"Associate" in relation to XXXX means, through the Effective Date, Shell
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Epoxy Resins, Inc. and Shell Epoxy Resins LLC, companies incorporated
under the laws of Delaware, and, after the Effective Date, any company
controlling, controlled by or under common control with XXXX, provided,
however, Associates in relation to XXXX shall not include at any time SIRM
or any of its Associates or SOC or any of its Associates or any portfolio
companies of Apollo Management IV, L.P. and its affiliates other than
Shell Epoxy Resins Inc. and subsidiaries of Shell Epoxy Resins Inc.
"Associate" in relation to SIRM means N.V. Koninklijke Nederlandsche
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Petroleum Maatschappij, a Netherlands company, The "Shell" Transport and
Trading Company p.l.c., an English company and any company other than SIRM
or SOC or an Associate of SOC or XXXX or an Associate of XXXX or SER or an
Associate of SER, which is at the time in question directly or indirectly
associated with these two companies or either of them.
"Associate" in relation to SOC means any company which is at the time in
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question directly or indirectly associated with SOC, provided that
Associate shall not mean XXXX or an Associate of XXXX or SER or an
Associate of SER.
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"Associate" in respect of SER means, through the Effective Date, Shell
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Epoxy Resins, Inc. and Shell Epoxy Resins Research B.V., a company
incorporated under the laws of the Netherlands, and, after the Effective
Date, any company controlling, controlled by or under common control with
SER, provided, however, Associates in relation to SER shall not include at
any time SOC or any of its Associates or SIRM or any of its Associates or
any portfolio companies of Apollo Management IV, L.P. and its affiliates
other than Shell Epoxy Resins Inc. and subsidiaries of Shell Epoxy Resins
Inc.
For the purposes of the above definitions, a particular company is:
(i) directly associated with a company or companies if the latter
holds/hold shares carrying more than fifty per cent (50%) of
the votes exercisable at a general meeting (or its equivalent)
of the particular company; and
(ii) indirectly associated with a company or companies (hereinafter
called "the Parent Company or Companies") if a series of
companies can be specified, beginning with the Parent Company
or Companies and ending with the particular company, so related
that each company of the series, except the Parent Company or
Companies, is directly associated with one or more companies
earlier in the series.
"Agreement" means this agreement, together with all appendices thereto.
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"Conventional Resins Applications" means coatings and adhesives, provided,
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however, that this term shall not mean wood glue applications.
"Effective Date" means November 1, 2000.
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"Excluded Technical Information" means
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(a) technical information of the types described in Appendix 5, without
regard to its source or any prior usage by the Resins/Derivatives
Business; and
(b) that technical information to which the Resins/Derivatives Business
may have had access but which has not been used (whether for
research, development or commercial purposes) by or in the
Resins/Derivatives Business.
"Intellectual Property Agreements" means the agreements listed in Appendix
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1 hereof and any other agreements existing on the Effective Date to which
SIRM or an Associate of SIRM is a party and the exclusive purpose of which
is either (a) the disclosure or receipt of confidential information
exclusively for the purposes of the Resins/Derivatives Business, (b) the
grant of material rights in respect of patents and/or technical
information relating exclusively to the
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manufacture or sale of Products in the Resins/Derivatives Field, or (c)
the grant of material rights in respect of patents and technical
information which rights were acquired by SIRM exclusively for the
purposes of the Resins/Derivatives Business.
"Invention Disclosures" means those written disclosures, listed in
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Appendix 3, which have been received prior to the Effective Date by the
Intellectual Property Services organisations of SOC, Shell International
Limited or Shell International B.V., of inventions for which no patent
application has been filed prior to the Effective Date.
"Invention Disclosure Rights" means the right to file patent applications
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outside the U.S. in respect of the Invention Disclosures disclosing
inventions for which SIRM has a right to file patent applications as of
the Effective Date, and all patent applications based thereon which may be
subsequently filed in any country, and any and all patents, issuing in any
country from such patent applications and any and all re-examinations,
reissues and extensions of all such patents, in each case to the extent
any of the claims thereof are directed to inventions which SIRM or its
Associates has the right to license as of the Effective Date and which
have been used in or which were developed or acquired for purposes of the
Resins/Derivatives Business. For all purposes of this Agreement, a patent
application is referred to as based on another patent application or a
patent if the patent application in question claims priority from such
other patent application or such patent.
"Part I Patent Rights" means the Patent Rights listed in, or based on or
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issuing from those Patent Rights listed in, Part I of Appendix 2.
"Part II Patent Rights" means the Patent Rights listed in, or based on or
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issuing from those Patent Rights listed in, Part II of Appendix 2.
"Part III Patent Rights" means the Patent Rights listed in, or based on or
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issuing from those Patent Rights listed in, Part III of Appendix 2.
"Part IV Patent Rights" means the Patent Rights listed in, or based on or
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issuing from those Patent Rights listed in, Part IV of Appendix 2.
"Part I Invention Disclosures" means the Invention Disclosures listed in
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Part I of Appendix 3.
"Part II Invention Disclosures" means the Invention Disclosures listed in
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Part II of Appendix 3.
"Part III Invention Disclosures" means the Invention Disclosures listed in
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Part III of Appendix 3.
"Parties or Party" means as the context requires, both or each of XXXX and
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SIRM.
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"Patent Rights" means:
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(a) the patents and patent applications listed in Appendix 2 hereof;
(b) any other patent applications which may later be filed based on (a)
above in any country to the extent any of the claims thereof cover
inventions which SIRM or an Associate of SIRM has a right to license
as of the Effective Date and which have been used in the
Resins/Derivatives Field or which were developed or acquired for
purposes of the Resins/Derivatives Business;
(c) any patents issuing in any country from patent applications of (a)
or (b) above; and
(d) any re-examinations, reissues and extensions of patents of (a) or
(c) above.
"Products" means:
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(a) mono- or polyglycidyl ethers or esters having an epoxide content
from 10 to 9000 mmol/kg and prepared from compounds bearing one or
more optionally substituted or hydrogenated phenolic hydroxyl groups
or aliphatic or cycloaliphatic mono- or polyalcohol or mono-or
polycarboxylic acid, and epihalohydrin in the presence of an acid or
a base catalyst, or from (bis)carbonate ester precursors or di-alpha
glycol compound precursors; adducts and derivatives of such
polyglycidyl ethers or esters; epoxidized vegetable oils prepared by
peracid epoxidation; naturally occurring epoxidized oils; and
epoxidized bis allylether of bisphenol acetone prepared by
epoxidation via either peracid epoxidation or reaction with hydrogen
peroxide.
(b) aqueous stabilized dispersions of any of mono- or polyglycidyl
ethers and esters, adducts and derivatives thereof, liquid or
semi-solid polyester oligomer, acrylics, polyurethanes, glycidated
polyols and halogenated polyol adducts;
(c) epihalohydrin; allylhalide; inorganic byproducts of the reaction of
propene and halogens, including halogenated mineral acids and
calcium halides; and the direct organic byproducts of the reaction
of propene and halogens;
(d) polyphenolic compounds, halogenated or hydrogenated derivatives
thereof and alkyl-substituted polyphenolic compounds, derived from
mono- and polynucleic phenols (or mono- or polynucleic
alkyl-substituted phenols) and/or ketones, aldehydes, dicarbonyls or
compounds containing two or more double or triple bonds;
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(e) alpha-, alpha-branched tertiary mono- and poly-carboxylic acids
having from 5 to 19 carbon atoms, prepared from CO, water and
alkene, or CO and an alkanol; the glycidyl ester and vinyl ester
derivatives respectively of said alpha-, alpha-branched tertiary
mono- and poly-carboxylic acids, prepared from said acids with
epihalohydrin in the presence of a base catalyst, or from said acids
and acetylene in the presence of a catalyst; and the derivatives of
said alpha-, alpha-branched tertiary mono- and poly-carboxylic acids
prepared via modification of their acid function;
(f) polyesters prepared from a mono-, a di- and/or a tri-functional
aliphatic, ethylenically unsaturated or cycloaliphatic carboxylic
acid or anhydrides thereof, optionally mixed with a mono-, di-
and/or tri-functional aromatic carboxylic acid or anhydrides
thereof, and mono-, di-, tri- and/or tetra functional alcohol, and
optionally a hydroxy-acid and/or a dihydroxy-acid, said polyester
containing as functional groups mainly secondary and/or tertiary
carboxylic groups or primary and/or secondary alcohols in pendant
and/or terminal position, and the corresponding polyglycidyl esters
or epoxidized esters thereof, and having a number average molecular
weight of up to 10,000 g/mol;
(g) amine, acid (including acid anhydride) and/or phenol based curing
agents for epoxy resins, which are compounds having two or more
amine, acid and/or phenolic functionalities per molecule and which
may be optionally end-capped or adducted or blended with acids,
substituted phenols, epoxies, aldehydes, tertiary amines and/or
phenols, and imidizoles, and aqueous stabilized dispersions of such
amine, acid and/or imidazoles; excluding (i) any compounds derived
from optionally hydrogenated polymers of one or more of isoprene,
butadiene and styrene, having a total (or, in the case of radial or
star polymers, arm) number average molecular weight between 1000 and
35,000, as determined by gel permeation chromatography using
polystyrene calibration standards, and (ii) alternating polymers of
CO and olefinic monomers;
(h) polyamides having two or more amine groups produced by condensation
of one or more mono- and/or polyfunctional acids or anhydrides
thereof with a polyamine, which polyamides have a number average
molecular weight of up to 10,000 g/mol;
(i) mono- or polyfunctional amines containing glycidyl groups
substituted on nitrogen;
(j) blends of the polyglycidyl ether products of part (a) of this
definition of Products or the polyamide products of part (g) with
acrylates, methacrylates, polyacrylates and/or styrene;
(k) organic compounds containing two or more cyanate (-O-C=N) groups
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within each molecule, linked to an aliphatic or aromatic structure
containing more than 2 but not more than 200 carbon atoms, derived
from polyphenolic compounds and cyanogen halides;
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(l) compounds containing at least two acetylenic (-C=C-)groups per
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molecule and containing at least 10 but not more than 200 carbon
atoms per molecule, derived from polyphenolic compounds and
propargyl halides;
(m) dimers of an optionally halogenated cyclobutene compound having up
to thirty (30) carbon atoms, in which the cyclobutene compound is
fused with an aromatic or cycloaliphatic ring, which dimers are
linked through at least one divalent linking group; esters or ethers
of the reaction products of such an optionally halogenated
cyclobutene compound with a product as described in parts (a) or (d)
of this Products definition; and copolymer of one or more of such
optionally halogenated cyclobutene compounds and one or more aryl
compounds;
(n) [Intentionally left blank.]
(o) at least partly furanised linear CO/olefin polymer, as such or in
combination with a maleimide crosslinking agent, in which furanised
CO/olefin polymer monomer units originating from CO alternate with
olefinic monomer units, for making or for use as a cross-linked
resin which is thermo-reversible at a temperature above 50C,
manufactured by furanising a low molecular weight polyketone, as
described in part (p) below; and
(p) low molecular weight polyketone, which is a linear CO/olefin polymer
in which monomer units originating from CO alternate with olefinic
monomer units, said polymer being amorphous, having a crystalline
melting point of less than 150C, and having a limiting viscosity
number of less than 0.6 dl/g, measured in m-cresol at 60C.
"Resins/Derivatives Business" means for purposes of this Intellectual
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Property Transfer and Licence Agreement that business carried out in the
Resins/Derivatives Field by or for Shell Nederland Chemie B.V., Shell
Chemicals U.K. Limited, Shell Epoxy Resins N.L., Shell Epoxy Resins GmbH
and Shell Epoxy Resins UK Limited for the manufacture of Products and for
the marketing and sale of Products so manufactured, together with research
and development activities in the Resins/Derivatives Field in support
thereof, in each case within two (2) years prior to the Effective Date.
"Resins/Derivatives Field" means the manufacture, use or sale of Products,
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including research and development in support thereof, provided, however,
in respect of any and all Products, Resins/Derivatives Field excludes:
(a) use and/or sale of the Products of part (g) of the Products
definition for any purpose other than as curing agents;
(b) use and/or sale of Products of part (p) of the Products definition
for any purpose other than Conventional Resins Applications;
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(c) manufacture of Products of part (p) of the Products definition for all
purposes other than as an intermediates in the preparation of Products of
part (o) of that definition; and
(d) combining any of the vinyl esters of part (e) of the definition of Products
with a silicate in a composition intended for use as binder for polymer
particles containing at least ninety percent (90%) by weight, based on
weight of the particles, of a polymer containing at least 90% by weight of
polymerised styrene, and to sell and use such combinations (and to conduct
research and development in support thereof); and
(e) manufacture, use and/or sale of (and research and development in support
thereof for) any of the following:
(i) additive components alone or in combination ("Additives") intended for
use in any one or more of the following applications:
(A) formulating finished lubricants or lubricant additive
packages of any kind;
(B) formulating finished fuels or fuel additive packages of any
kind;
(C) formulating hydraulic fluids;
(D) formulating power transmission fluids;
(E) dewaxing lube oil;
(F) transporting crude oil; and
(ii) intermediates ultimately intended for use in manufacturing Additives
for use in any one or more of the applications specified in part
(e)(i) above.
This Resins/Derivatives Field further encompasses using Resins/Derivatives
Technical Information and Shell Technical Information for purposes of :
(I) upgrading the organic byproducts in part (c) of the Products
definition, and
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(II) selling products resulting from (I) above other than as Additives or
as intermediates ultimately intended for use in manufacturing
Additives.
"Resins/Derivatives Technical Information" means: i) information of
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the types described in Appendix 4, and ii) other technical know-how,
data and information (including, without limitation, trade secrets) in
which, in each case, SIRM or an Associate of SIRM has assignable
rights in the Resins/Derivatives Field and which has been exclusively
used (whether for research, development or commercial purposes) in the
Resins/Derivatives Business; provided, however, that
Resins/Derivatives Technical Information shall not include Excluded
Technical Information or Shell Technical Information. For the
avoidance of doubt, Resins/Derivatives Technical Information shall not
include any technical know-how, data or information which has, in
respect of either (i) or (ii), been received by or on behalf of SIRM
or any of its Associates from a Third Party subject to obligations
which prohibit its disclosure to XXXX, unless and until such
obligations terminate or disclosure to XXXX is authorized pursuant to
efforts under Clause 5.2 or otherwise.
"Shell Technical Information" means all technical know-how, data and
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information (including without limitation, trade secrets) which has
been used (whether for research, development or commercial purposes)
by or in the Resins/Derivatives Business but which has not been
exclusively used in the Resins/Derivatives Business. For all purposes
of this Agreement, technical information acquired or developed for
purposes of the Resins/Derivatives Business shall be considered to
have been used in the Resins/Derivatives Business. Shell Technical
Information includes but is not limited to information of the types
described in Appendix 6. Shell Technical Information shall not include
any Resins/Derivatives Technical Information or Excluded Technical
Information. For the avoidance of doubt, Shell Technical Information
shall not include any technical know-how, data or information which
has been received by or on behalf of SIRM or any of its Associates
from a Third Party subject to obligations which prohibit its
disclosure to XXXX, unless and until such obligations terminate or
disclosure to XXXX is authorized pursuant to efforts under Clause 5.2
or otherwise.
"SER" means Shell Epoxy Resins LLC, a company incorporated under the
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laws of Delaware and having an office at One Shell Plaza, 910
Louisiana Street, Houston, Texas.
"SOC" means Shell Oil Company, a company incorporated under the laws
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of Delaware and having an office at One Shell Plaza, 000 Xxxxxxxxx
Xxxxxx, Xxxxxxx, Xxxxx.
"Technical Copyrights" means all rights world-wide of copyright to the
--------------------
extent such rights are owned or controlled by SIRM in all documents,
drawings, plans and other works (other than software) to the extent
they recite, depict or describe Shell Technical Information.
"Third Party" means any person other than SIRM or its Associates or
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XXXX.or its Associates. For avoidance of doubt, SOC and its Associates
and SER and its Associates are Third Parties for purposes of this
Agreement.
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"United States" or "U.S." means the United States of America and the
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states, commonwealths, territories and possessions thereof.
1.2 The headings contained in this Agreement are for convenience of reference
only and shall not constitute a part of this Agreement for any other
purpose.
1.3 Except where and to the extent that a contrary intention otherwise
appears, words importing the singular number include the plural number and
vice-versa and words importing any gender include all other genders.
1.4 References to Clauses and Appendices are references to Clauses and
appendices of this Agreement, unless otherwise indicated.
CLAUSE 2 - PATENT RIGHTS
------------------------
2.1 With effect from the Effective Date, and subject to the rights of Third
Parties and Clause 2.7 hereof, SIRM hereby assigns to XXXX all right,
title and interest of SIRM and its Associates in and to the Part I Patent
Rights, subject to the grant-back to SIRM of rights set out in Clause 2.3
below.
2.2 With effect from the Effective Date, and subject to the rights of Third
Parties and Clause 2.7 hereof, SIRM hereby assigns to XXXX all right,
title and interest of SIRM in and to the Part II Patent Rights, subject to
the grant-back to SIRM of rights set out in Clause 2.3 below.
2.3 With effect from the Effective Date, and subject to the rights of Third
Parties, XXXX grants back to SIRM in respect of Part I and Part II
non-U.S. Patent Rights assigned to XXXX hereunder:
(a) an irrevocable, transferable, fully paid-up, perpetual,
non-exclusive licence, subject to the rights of Third Parties, with
the right to grant sub-licences, to practise outside the
Resins/Derivatives Field outside the U.S. the inventions claimed in
such Part I non-U.S. Patent Rights and to conduct research and
development in support thereof; and
(b) an irrevocable, transferable, fully paid-up, perpetual,
exclusive licence, subject to the rights of Third Parties, with all
rights to grant sub-licences, to practise outside the
Resins/Derivatives Field outside the U.S. the inventions claimed in
such Part II non-U.S. Patent Rights and to conduct research and
development in support thereof; and
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(c) an irrevocable, transferable, fully paid-up, perpetual,
non-exclusive licence in the Resins/Derivatives Field outside the
U.S. the inventions claimed in such Part I and Part II non-U.S.
Patent Rights, with the right to grant sub-licences, to:
(i) manufacture, use and sell refinery products
including fuels, lubricants, bituminous compositions and
chemical feedstocks, and conduct research and development
in support thereof; and
(ii) use and sell Products in connection with operations for
the exploration for and production of oil, gas and other
minerals, and conduct research and development in support
thereof.
2.4 With effect from the Effective Date and subject to the rights of Third
Parties, SIRM grants to XXXX:
(a) an irrevocable, transferable, fully paid-up, perpetual,
exclusive (except as noted below in Clause 2.4(c)) licence, with all
rights to grant sub-licences, to practise in the Resins/Derivatives
Field outside the U.S. the inventions claimed in the Part III non-
U.S. Patent Rights and to conduct research and development in
support thereof;
(b) an irrevocable, fully paid-up, perpetual, non-exclusive
licence, with the right to grant sub-licences but transferable only
to an Associate of XXXX or to a successor of substantially all of
XXXX'x business in the Resins/Derivatives Field, to practise in the
Resins/Derivatives Field outside the U.S. the inventions claimed in
the Part IV non-U.S. Patent Rights and to conduct research and
development in support thereof; and
(c) an irrevocable, transferable, fully paid-up, perpetual, non-
exclusive licences, with the right to grant sub-licences, to
practise in the Resins/Derivatives Field outside the U.S. the
inventions claimed in the Part III non-U.S. Patent Rights to:
(i) manufacture, use and sell refinery products including fuels,
lubricants, bituminous compositions and chemical feedstocks,
and conduct research and development in support thereof; and
(ii) use and sell Products in connection with operations for the
exploration for and production of oil, gas and other
minerals, and conduct research and development in support
thereof.
2.5 Responsibility for the further filing, prosecution, issuance, maintenance,
defence and enforcement of the Part I and II Patent Rights assigned to
XXXX herein shall pass to XXXX on the Effective Date. SIRM shall notify
any attorneys and/or agents who act for SIRM in relation
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to such Part I and Part II Patent Rights of the assignment of these Patent
Rights to XXXX, and that from the Effective Date such attorneys and agents
are to take their instructions from XXXX and charge all fees and costs
incurred after the Effective Date for filing, prosecuting, maintaining,
defending and enforcing such Patent Rights to XXXX (subject to the right
of XXXX, in its sole discretion to thereafter take action to terminate
services of such attorneys and/or agents and appoint different counsel).
Such attorneys and agents shall be requested promptly to send an invoice
to SIRM for their fees in respect of services rendered up to the Effective
Date in relation to the Part I and Part II Patent Rights. SIRM shall pay
promptly for all such services identified as being rendered prior to the
Effective Date. Case files (including but not limited to opposition and
interference files) relating to the Part I and Part II Patent Rights will
be transferred to XXXX. SIRM undertakes to promptly forward to counsel
designated by XXXX all correspondence received from non U.S. patent
authorities, during the six month period starting on the Effective Date,
in respect of the Part I and Part II Patent Rights. SIRM agrees to co-
operate with XXXX to effect an orderly transition in respect of the
subject matter set forth in this Clause 2.5 and further agrees to pay all
patent maintenance renewal fees for Part I and II non-U.S. Patent Rights
which are required to be paid within sixty (60) days after the Effective
Date. In respect of such patent maintenance renewal fees, SIRM shall send
an invoice to XXXX and XXXX shall promptly reimburse SIRM for all patent
maintenance renewal fees paid by SIRM for Part I and II non-U.S. Patent
Rights after the Effective Date.
2.6 Subject to Clauses 2.10, 2.11 and 2.12, each Party shall from the
Effective Date have responsibility for prosecuting, maintaining, defending
and enforcing those Patent Rights which it owns and under which licences
are granted to the other Party pursuant to this Agreement. Except as
expressly provided in Clauses 2.10, 2.11 and 2.12, neither Clause 2.5 nor
Clause 2.6 nor any other provisions of this Agreement shall obligate
either Party to further file, prosecute, issue, maintain, defend or
enforce any of the Patent Rights.
2.7 To the extent that any non-U.S. Patent Rights are in the name of an
Associate of SIRM or SOC or an Associate of SOC, SIRM shall procure that
the holder assigns or licenses to XXXX the Patent Right(s) as envisaged by
this Clause 2, and that such holder shall comply with the terms of this
Clause 2. XXXX and SIRM acknowledge that any US Patent Rights which are in
the name of an SIRM or an Associate of SIRM are to be assigned to SER
pursuant to Clause 2.7 of an Intellectual Property Transfer and License
Agreement between SOC and SER of even date herewith.
2.8 SIRM irrevocably waives in favour of XXXX all rights of SIRM and SIRM's
Associates to make, use and sell Products inside the Resins/Derivatives
Field under the Part I, Part II and Part III Patent Rights, in each case
for the United States, with the exception, in each case, of rights
relating to:
(i) manufacture, use and sale of refinery products including
fuels, lubricants, bituminous compositions and chemical
feedstocks, and research and development in support thereof;
and
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(ii) use and sale of Products in connection with operations for
the exploration for and production of oil, gas and other
minerals, and research and development in support thereof.
2.9 XXXX shall be responsible for and shall bear all expenses, including but
not limited to official fees, associated with recordal at the relevant
patent offices, of the transfer to XXXX hereunder of title in the Part I
and Part II Patent Rights. SIRM agrees to co-operate with XXXX in the
recordal of such transfer by executing required documents in a form
consistent with the grants under this Agreement, which shall be prepared
by XXXX. Upon written request from a Party, the other Party shall arrange
for the execution and delivery of any other assignment documents or other
instruments necessary to effectuate any aspects of the assignments or
licences provided for in this Clause 2.
2.10 With effect from the Effective Date, each Party shall give written notice
to the other Party upon becoming aware of any infringement or threatened
or suspected infringement of, or of any challenge to, the Part II or Part
III Patent Rights outside the U.S. and:
(a) XXXX will have the right (but is not obligated) at its cost to bring
proceedings to enforce such Part II and Part III non-U.S. Patent
Rights against infringement in the Resins/Derivatives Field. SIRM
will have the right (but is not obligated) at its cost to bring
proceedings to enforce such Part II and Part III non-U.S. Patent
Rights against infringement outside the Resins/Derivatives Field.
Each Party shall have the right, at its own cost, to join in any
suit brought by the other Party pursuant to this Clause 2.10 (a) to
enforce, whether inside and/or outside of the Resins/Derivatives
Field, such Part II and Part III non-U.S. Patent Rights and to
participate in the defence of any challenge to such Part II and Part
III non-U.S. Patent Rights.
(b) A Party not joining an enforcement or participating in a defence
proceeding under this Clause 2.10 shall provide such assistance as
may reasonably be required by and at the expense of the Party
initiating or defending such proceeding and shall make no admission
as to liability nor agree to any settlement or compromise.
(c) To the extent that damages, costs or other sums are recovered for
infringement of such Part II or Part III non-U.S. Patent Rights in
the Resins/Derivatives Field, they shall be for the account of XXXX.
To the extent that damages, costs or other sums are recovered for
infringement of such Part II or Part III non-U.S. Patent Rights
outside the Resins/Derivatives Field, they shall be for the account
of SIRM.
2.11 XXXX shall notify SIRM of each decision by XXXX not to continue to
prosecute or maintain any of the Part II non-U.S. Patent Rights. In
respect of a decision not to continue to prosecute, such notice shall be
given as soon as is practicable, and, if reasonable under the
circumstances, at least sixty (60) days prior to the ordinary due date set
for a response. In respect of a decision not to continue to maintain, such
notice shall be given promptly but in any event no later than ninety (90)
days prior to the date action is due to maintain the Patent Rights in
question. XXXX
13
shall, at SIRM's request, assign to SIRM the rights of XXXX in such of the
Part II Patent Rights which it does not wish to prosecute or maintain, and
SIRM shall grant back to XXXX an irrevocable, transferable, fully paid-up,
perpetual, world-wide, non-exclusive licence, with the right to grant sub-
licences, to practise in the Resins/Derivatives Field the inventions
claimed in the Part II Patent Rights so assigned to SIRM.
2.12 SIRM shall notify XXXX of each decision by SIRM not to continue to
prosecute or maintain any of the Part III non-U.S. Patent Rights. In
respect of a decision not to continue to prosecute, such notice shall be
given as soon as it practicable and, if reasonable under the
circumstances, at least sixty (60) days prior to the ordinary due date set
for a response. In respect of a decision not to continue to maintain, such
notice shall be given promptly but in any event no later than ninety (90)
days prior to the date action is due to maintain the Patent Rights in
question. SIRM shall, at XXXX'x request, assign to XXXX the rights of SIRM
in such of the Part III Patent Rights which it does not wish to prosecute
or maintain, and XXXX shall grant-back to SIRM an irrevocable,
transferable, fully paid-up, perpetual, world-wide, non-exclusive licence,
with the right to grant sub-licences, to practise outside the
Resins/Derivatives Field the inventions claimed in the Part III Patent
Rights so assigned to XXXX , and also licences under the Part III Patent
Rights so assigned to XXXX which are equivalent to those set out in Clause
2.3(c).
2.13 SIRM acknowledges that no right or licence, either express or implied, is
granted to SIRM under any patent or other intellectual property right
owned by XXXX or its Associates, except as expressly provided by the terms
of this Agreement.
2.14 XXXX acknowledges that no right or licence, either express or implied, is
granted to XXXX under any patent or other intellectual property right
owned by SIRM or its Associates, except as expressly provided by the terms
of this Agreement.
2.15 As soon as practicable after the Effective Date, upon request by XXXX,
SIRM shall make available to legal counsel for XXXX a copy of all final
written opinions of legal counsel prepared for the Resins/Derivatives
Business. The provisions of this Clause 2.15 are not intended and shall
not be construed by either Party as a waiver of privilege and both Parties
shall treat said opinions in a manner which is consistent with their
common interest in maintaining privilege.
CLAUSE 3 - INVENTION DISCLOSURES
--------------------------------
3.1 With effect from the Effective Date, and subject to the rights of Third
Parties, SIRM hereby assigns to XXXX all right, title and interest of SIRM
in and to the Invention Disclosure Rights for Part I Invention
Disclosures, subject to the grant-backs to SIRM of rights set out in
Clause 3.2.
3.2 With effect from the Effective Date, and subject to the rights of Third
Parties, XXXX grants back to SIRM under the Invention Disclosure Rights
for Part I Invention Disclosures:
14
(a) an irrevocable, transferable, fully paid-up, perpetual, exclusive
licence, with all rights to grant sub-licences, outside the U.S.
outside the Resins/Derivatives Field; and
(b) an irrevocable, transferable, fully paid-up, perpetual, non-
exclusive licences outside the U.S. in the Resins/Derivatives Field,
with the right to grant sub-licences, to:
(i) manufacture, use and sell refinery products including fuels,
lubricants, bituminous compositions and chemical feedstocks,
and conduct research and development in support thereof; and
(ii) use and sell Products in connection with operations for the
exploration for and production of oil, gas and other
minerals, and conduct research and development in support
thereof.
3.3 With effect from the Effective Date, and subject to the rights of Third
Parties, SIRM grants to XXXX:
(a) an irrevocable, transferable, fully paid-up, perpetual, exclusive
(except as noted below in Clause 3.3(c)) licence under the Invention
Disclosure Rights for Part II Invention Disclosures, with the right
to grant sub-licences, in the Resins/Derivatives Field outside the
U.S.;
(b) an irrevocable, fully paid-up, perpetual, non-exclusive licence
in the Resins/Derivatives Field outside the U.S. under the Invention
Disclosure Rights for Part III Invention Disclosures, with the right
to grant sub-licences but transferable only to an Associate of XXXX
or to a successor of substantially all of XXXX'x business in the
Resins/Derivatives Field; and
(c) an irrevocable, transferable, fully paid-up, perpetual,
non-exclusive licence under the Invention Disclosure Rights for Part
II Invention Disclosures, with the right to grant sub-licences, in
the Resins/Derivatives Field outside the U.S. to:
(i) manufacture, use and sell refinery products including fuels,
lubricants, bituminous compositions and chemical feedstocks,
and conduct research and development in support thereof; and
(ii) use and sell Products in connection with operations for the
exploration for and production of oil, gas and other minerals,
and conduct research and development in support thereof.
15
3.4 Upon written request from a Party, the other Party shall arrange for the
execution and delivery of any assignment documents or other instruments
necessary to effectuate any aspects of the assignments or licences
provided for in this Clause 3.
3.5 To the extent that any Invention Disclosure Rights are controlled by an
Associate of SIRM, SIRM shall procure that such Associate assigns or
licenses to XXXX the Invention Disclosure Rights as envisaged by this
Clause 3.
3.6 In the event Part I Invention Disclosures result in issued patents, such
patents shall thereafter be subject to the provisions of Clauses 2.10 and
2.11, in the same respect as Part II Patent Rights.
3.7 In the event Part II Invention Disclosures result in issued patents, such
patents shall thereafter be subject to the provisions of Clauses 2.10 and
2.12, in the same respect as Part III Patent Rights.
3.8 Notwithstanding any provision herein to the contrary, this Agreement does
not give any Party any cause of action for breach of contract with respect
to unpatented public domain subject matter.
3.9 Case files relating to the Part I Invention Disclosures will be promptly
transferred to XXXX.
CLAUSE 4 - TECHNICAL INFORMATION
--------------------------------
4.1 With effect from the Effective Date, subject to the rights of Third
Parties, SIRM assigns to XXXX all rights of SIRM and its Associates in and
to the Resins/Derivatives Technical Information, including but not limited
to the right to file patent applications therefor, copyrights (including
but not limited to registered copyrights) therein and the right to enforce
against misappropriation by Third Parties, in all cases subject to
reservation by SIRM of irrevocable, transferable, fully paid-up,
perpetual, worldwide, non-exclusive rights to use Resins/Derivatives
Technical Information in the Resins/Derivatives Field, including the right
to grant sub-licenses and the right to enforce against misappropriation by
Third Parties, to:
(i) manufacture, use and sell refinery products including fuels,
lubricants, bituminous compositions and chemical feedstocks,
and conduct research and development in support thereof; and
16
(ii) use and sell Products in connection with operations for
the exploration for and production of oil, gas and other
minerals, and conduct research and development in support
thereof;
and further subject to reservation by SIRM of irrevocable, transferable,
fully paid-up, world-wide, perpetual, exclusive rights in respect of
Resins/Derivatives Technical Information outside the Resins/Derivatives
Field, including the right to grant sub-licenses and the right to enforce
against misappropriation by Third Parties.
The reservation of rights set forth in this Clause 4.1 shall further
include irrevocable, transferable, fully paid-up, world-wide, perpetual,
exclusive rights outside the Resins/Derivatives Field, with all rights to
grant sub-licenses, under any patents (other than Patent Rights and
Invention Disclosure Rights) owned or controlled by XXXX or any of its
Associates claiming inventions that are Resins/Derivatives Technical
Information prior to the Effective Date but for which patent claims are
first filed after the Effective Date.
4.2 With effect from the Effective Date, SIRM grants to XXXX:
(a) an irrevocable, transferable, fully paid-up, perpetual, non-
exclusive licence in the Resins/Derivatives Field outside the U.S.,
with the right to grant sub-licences and the right to enforce
against misappropriation, in respect of Shell Technical Information
other than that identified in Part A of Appendix 6; and
(b) an irrevocable, fully paid-up, perpetual, non-exclusive licence
in the Resins/Derivatives Field outside the U.S., without any right
to grant sub-licenses and without the right to enforce against
misappropriation, and transferable only to an Associate of XXXX or a
successor of all or substantially all of the business of XXXX in the
Resins/Derivatives Field, in respect of Shell Technical Information
identified in Part A of Appendix 6.
The license granted in (a) above shall further include an irrevocable,
transferable, fully-paid, perpetual, non-exclusive license in the
Resins/Derivatives Field, with the right to grant sub-licenses and with
the right to enforce in the Resins/Derivatives Field, under any patents
(other than Patent Rights and Invention Disclosure Rights) owned or
controlled by SIRM or any of its Associates claiming inventions that are
Shell Technical Information other than that identified in Part A of
Appendix 6 developed or acquired prior to the Effective Date but for which
patent claims are first filed after the Effective Date.
The license granted in (b) above shall further include an irrevocable,
fully-paid, perpetual, non-exclusive license for the use of Shell
Technical Information in the Resins/Derivatives Field, without any right
to grant sub-licenses and without the right to enforce against
misappropriation,
17
and transferable only to an Associate of XXXX or a successor of all or
substantially all of the business of XXXX in the Resins/Derivatives Field,
under any patents (other than Patent Rights and Invention Disclosure
Rights) owned or controlled by SIRM or any of its Associates claiming
inventions that are Shell Technical Information identified in Part A of
Appendix 6 developed or acquired prior to the Effective Date but for which
patent claims are first filed after the Effective Date.
4.3 At its own cost, SIRM shall use reasonable efforts to promptly provide to
XXXX Resins/Derivatives Technical Information assigned to XXXX, and such
Shell Technical Information licensed to XXXX hereunder as SIRM believes is
reasonably necessary for the normal conduct of the Resins/Derivatives
Business, in each case to the extent that such information is as of the
Effective Date in the possession of SIRM or Associates of SIRM engaged in
the Resins/Derivatives Business in written or other tangible form. SIRM
shall further use reasonable efforts to promptly provide to XXXX, at
XXXX'x request and cost, such other Shell Technical Information that is as
of the Effective Date in the possession of SIRM or Associates of SIRM
engaged in the Resins/Derivatives Business in written or other tangible
form. The nature of the physical transfer to XXXX of Shell Technical
Information shall be consistent with the manner in which such Shell
Technical Information has been available to the Resins/Derivatives
Business. Details as to the implementation of this provision shall be
agreed as circumstances reasonably require following the Effective Date
4.4 This Agreement shall not be construed to xxxxx XXXX any rights or licences
in respect of Excluded Technical Information.
CLAUSE 5 - INTELLECTUAL PROPERTY AGREEMENTS
-------------------------------------------
5.1 SIRM shall assign, or shall cause the assignment, and XXXX agrees to
accept assignment, of those Intellectual Property Agreements that SIRM or
the SIRM Associate which is a party to the Intellectual Property Agreement
has authority to assign, so that XXXX shall be entitled to the benefit and
shall be subject to the burden thereof as of the Effective Date. XXXX
shall carry out, perform and complete all obligations and liabilities to
be discharged under such Intellectual Property Agreements on or after the
Effective Date, and shall indemnify, defend and hold harmless SIRM and its
Associates and SOC and its Associates and their respective officers,
directors, employees and agents from and against any claim in respect of
failure on the part of XXXX to carry out, perform and complete such
obligations and liabilities. SIRM shall indemnify, defend and hold
harmless XXXX and its Associates and SER and its Associates and their
respective officers, directors, employees and agents against any claim in
respect of failure on the part of SIRM and/or its Associates to carry out,
perform and complete all obligations or liabilities to be discharged under
the Intellectual Property Agreements prior to the Effective Date.
5.2 From the Effective Date, insofar as the benefit or burden of any of the
Intellectual Property Agreements cannot effectively be assigned to XXXX
except by an agreement for novation or with consent to the assignment from
a Third Party, at the request of XXXX, SIRM shall, and shall cause its
Associates that are parties to such Intellectual Property
18
Agreements to, use commercially reasonable efforts (including
participating in joint letters to such Third Parties, responding to
inquiries from such Third Parties, and executing novation documents) to
assist XXXX in pursuing novation or consent for assignment of any
Intellectual Property Agreement material to the Resins/Derivatives
Business, provided, however, that such cooperation shall not include any
requirement of SIRM or any of its Associates to pay money (not otherwise
due or payable by SIRM) to the other party to the Intellectual Property
Agreement, commence or participate in any litigation or offer or grant any
accommodation (financial or otherwise) to any Third Party. No
representation or warranty has been given or can be given that the other
parties to the Intellectual Property Agreements will agree to the
assignment or novation thereof in favour of XXXX. From the Effective Date,
and until any necessary Third Party consent to the assignment of an
Intellectual Property Agreement may be obtained, a novation agreement may
be entered into or other arrangements may be effected, if it is
permissible under the Intellectual Property Agreement in question, SIRM
shall grant, or cause the relevant Associate of SIRM to grant, to XXXX a
sub-licence under the Intellectual Property Agreement, and XXXX shall,
without limitation to Clause 5.1, be liable for any royalties or other
costs associated with such sub-licence. Any technical information which is
subject to an Intellectual Property Agreement and can only be made
available to XXXX upon novation, receipt of consent or grant of such a
sub-licence, shall after such novation, consent or grant promptly be
provided to XXXX, provided that nothing in this Agreement shall require
SIRM to retain copies of any technical information past the second
anniversary of Closing or through the termination of good faith efforts to
obtain novation, consent or grant of a sub-license, whichever is later.
CLAUSE 6 - TECHNICAL COPYRIGHTS
-------------------------------
With effect from the Effective Date and subject to Clause 7 and the rights
of Third Parties existing at the Effective Date, SIRM grants to XXXX an
irrevocable, transferable, non-exclusive, fully paid-up, perpetual license
in the Resins/Derivatives Field under its Technical Copyrights, with the
right to grant sub-licenses, and with the right to enforce the Technical
Copyrights against Third Parties other than SIRM or Associates of SIRM.
No license is granted under this Clause 6 in respect of any copyrights in
any Excluded Technical Information, whether such Excluded Technical
Information is contained in any work alone or in combination with any
Shell Technical Information and/or Resins/Derivatives Technical
Information.
CLAUSE 7 - CONFIDENTIALITY
--------------------------
7.1 With the exception of the exercise of the rights of SIRM under Clauses 2,
3, 4.1(i) and 4.1(ii), and of activities undertaken at the request of
XXXX, SIRM undertakes for itself and its Associates that they:
19
(a) shall not use any Resins/Derivatives Technical Information in the
Resins/Derivatives Field; and
(b) shall not disclose any Resins/Derivatives Technical Information to
any Third Party for use in the Resins/Derivatives Field.
7.2 With the exception of the exercise of the rights of XXXX under Clauses 2
and 3, and of activities undertaken at the request of SIRM, XXXX
undertakes for itself and its Associates that they:
(a) shall not use any Resins/Derivatives Technical Information outside
the Resins/Derivatives Field; and
(b) shall not disclose any Resins/Derivatives Technical Information to
any Third Party for use outside the Resins/Derivatives Field.
7.3 With the exception of the exercise of the rights of XXXX under Clauses 2
and 3, and of activities undertaken at the request of SIRM, and subject to
the provisions of Clause 7.4 governing XXXX'x obligations in respect of
Shell Technical Information identified in Part A of Appendix 6 and the
provisions of Clause 7.8 governing XXXX'x obligations in respect of
Excluded Technical Information, with regard to (i) Shell Technical
Information, and (ii) any other technical information XXXX may receive
from or on behalf of SIRM or its Associates in connection with XXXX'x
acquisition of the Resins/Derivatives Business, XXXX undertakes that it:
(a) shall not use the same outside the Resins/Derivatives Field; and
(b) shall not disclose the same to any Third Party for use outside the
Resins/Derivatives Field.
7.4 With the exception of activities undertaken at the request of SIRM, and
subject to the provisions of Clause 7.8 governing XXXX'x obligations in
respect of Excluded Technical Information, with regard to Shell Technical
Information identified in Part A of Appendix 6, XXXX undertakes that it:
(a) shall not use the same for any purpose other than in relation to its
activities within the Resins/Derivatives Field; and
(b) shall not disclose the same to any Third Party.
20
7.5 The undertakings as to each obligated Party pursuant to Clauses 7.1, 7.2,
7.3 and 7.4 above, as well as any obligations of confidence and
restrictions on use of technical information, data and/or know-how which
the grants and assignments under Clause 4 may impose (either directly or
by implication) on the granting or assigning party, shall not apply to
information which as of the Effective Date the obligated Party can show
(a) is part of the public knowledge or literature;
and shall cease to apply to information which after the Effective Date
the obligated Party can show:
(b) has become part of the public knowledge or literature without
breach of said undertakings by said obligated Party; or
(c) has been received by it after the Effective Date from a Third
Party having a legal right to disclose it to said obligated
Party.
The foregoing exceptions shall not, however, apply to:
(i) specific information merely because it is embraced by or
included with other information which falls within any one or
more of such exceptions; or
(ii) any combination of information merely because specific
information (but not the combination itself) falls within any
one or more of such exceptions.
7.6 In the event that the obligated Party is required or requested by any
court, legislative or administrative body to disclose any
Resins/Derivatives Technical Information, Shell Technical Information or
other information covered by its undertakings pursuant to this Clause 7,
then the obligated Party will, prior to disclosure, promptly notify the
other Party so that an appropriate protective order can be sought and/or
other action can be taken if possible. In the event that such protective
order is not, or cannot be, obtained, then:
(a) The obligated Party may disclose to the appropriate body that
portion of the information which it is advised in writing by legal
counsel that it is legally required to disclose, provided that it
shall use reasonable efforts to obtain assurances that confidential
treatment will be accorded to the information; and
(b) The obligated Party shall not be liable for such disclosure to the
appropriate body unless such disclosure was caused by or resulted
from a previous disclosure by the obligated Party that was not
permitted by this Agreement.
21
7.7 Except for the obligations set forth in Clause 7.4 for Shell Technical
Information described in Part A of Appendix 6, the obligations set forth
in Clause 7.8 for Excluded Technical Information and the obligations
undertaken in the Intellectual Property Agreements, all express and
implied restrictions in respect of disclosure and use of information under
Clause 4, Clause 6 and/or Clause 7 of this Agreement shall terminate ten
(10) years after the Effective Date.
7.8 It is not the intention of SIRM to disclose Excluded Technical Information
to XXXX. In respect of any Excluded Technical Information which XXXX may
receive, XXXX agrees to hold the same in strict confidence, not to
disclose it to any third party and not to use it for any purpose
whatsoever. To the extent XXXX becomes aware that it is in possession of
Excluded Technical Information in written or other tangible form
(including but not limited to information stored electronically), XXXX
agrees promptly to return to SIRM or destroy such information, or cause
such information to be returned to SIRM or destroyed, in each case at
SIRM's option.
7.9 The obligations imposed by this Clause 7 are in addition to obligations of
confidentiality and restrictions on use of technical information which are
imposed by the Intellectual Property Agreements.
7.10 In observing its obligations of confidentiality under Clauses 7.1 through
7.4, each Party shall apply at least the same degree of care which that
Party applies in protecting its own proprietary information of like kind,
and no less care than is typically applied in the chemical industry.
Whenever necessary or appropriate, a Party making disclosures which it is
entitled to make hereunder to a Third Party shall obtain prior written
agreement by the Third Party to use the same only for the purpose for
which it is disclosed and not to disclose the same to any other Third
Party.
CLAUSE 8 - INDEMNITIES; LIABILITIES
-----------------------------------
8.1 EXCEPT AS EXPRESSLY SET FORTH IN THIS CLAUSE 8, SIRM MAKES NO
REPRESENTATION AND EXTENDS NO WARRANTIES, EXPRESS OR IMPLIED, AND ASSUMES
NO RESPONSIBILITY WHATSOEVER WITH RESPECT TO (I) ANY TECHNICAL INFORMATION
WHICH MAY BE DISCLOSED OR LICENSED IN CONNECTION WITH THIS AGREEMENT, OR
ITS SUITABILITY, COMPLETENESS OR ACCURACY OR ITS MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE; OR (II) THE SCOPE, VALIDITY OR
ENFORCEABILITY OF ANY PATENT RIGHTS.
8.2 Neither Party shall be liable for any loss, damage, injury (including, to
the full extent permitted by law and no further, personal injury or
death), demand or expense, direct or indirect, resulting from negligence,
gross negligence, strict liability or whatever the cause and arising out
of or in connection with the exercise by the other Party or any licensee
or sub-licensee of the other Party of the licences and rights granted to
such other Party under this Agreement. Each Party shall indemnify, defend
and hold harmless the other Party and its Associates (and their
22
respective officers, directors, employees and agents) against any claim or
action brought by any Third Party for any loss, damage, injury (including,
to the full extent permitted by law and on further, personal injury or
death), demand or expense arising out of or in connection with the
exercise by that Party or any licensee or sub-licensee of that Party of
the licences and rights granted under to this Agreement.
CLAUSE 9 - EXPORT CONTROL
-------------------------
XXXX acknowledges that Resins/Derivatives Technical Information, Shell Technical
Information and other information to be made available hereunder may be subject
to export control under the Export Administration Regulations of the United
States of America Department of Commerce, and/or export regulations of other
United States of America Government agencies including the Department of State
and Department of Treasury.
CLAUSE 10 - MISCELLANEOUS
-------------------------
10.1 Execution in Counterparts. This Agreement may be executed in two or more
-------------------------
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same document.
10.2 Waivers. Except as specifically provided in this Agreement, no failure or
-------
delay on the part of any Party in exercising any right, power or remedy
hereunder and no course of dealing among the Parties shall operate as a
waiver by any party of such right, power or remedy unless the event giving
rise to such right, power or remedy no longer exists or has been cured.
10.3 Amendment. This Agreement may be modified, supplemented or amended only
---------
by a written instrument executed by all parties thereto.
10.4 Entire Agreement. The Agreement (together with the appendices) constitute
----------------
the entire agreement of the parties thereto with respect to their subject
matter, and supersede all prior agreements and understandings of the
parties thereto, oral and written, with respect to their subject matter.
10.5 Headings. The headings contained in this Agreement are for the sole
--------
purpose of convenience of reference, and shall not in any way limit or
affect the meaning or interpretation of any of the terms or provisions of
such Transaction Document.
10.6 Successors/Assigns. Except as set forth in this Agreement, XXXX shall not
------------------
transfer or assign this Agreement, directly or indirectly, by operation of
law or otherwise, without the prior written consent of SIRM, and any
purported transfer or assignment that does not comply with this Clause
10.06 shall be null and void ab initio; provided, that XXXX may assign
--------
this Agreement (a) after Closing, to an Associate of XXXX or in connection
with a sale or recapitalization of its
23
business to which this agreement relates (whether by merger, stock sale,
sale of all or substantially all assets or otherwise) or (b) to any lender
(or agent therefor) for security purposes or pursuant to the assignment
thereof by any such lender or agent in connection with the exercise by any
such lender or agent of all of its rights and remedies as secured creditor
with respect thereto. Each Party agrees to cause its successors and
permitted assigns to agree in writing to be bound by the terms of this
Agreement, provided, that nothing contained herein shall relieve XXXX from
--------
its obligations under this Agreement
To the extent that any right under this Agreement is designated as being
transferable, the holder of that right shall be entitled to pledge such
right for security purposes.
10.7 No Third-Party Beneficiaries. Except as may be expressly provided
----------------------------
otherwise, nothing in this Agreement is intended or shall be construed to
confer any rights or remedies upon any person, other than the Parties and
their respective successors and permitted assigns..
10.8 Interpretation. In construing any Transaction Document, no consideration
--------------
shall be given to the fact or presumption that either Party had a greater
or lesser hand in drafting the applicable Transaction Document.
10.9 Expenses, Transfer Taxes, Etc. Whether or not the transactions
-----------------------------
contemplated by this Agreement shall be consummated, except as otherwise
expressly provided herein, all fees and expenses (including all fees of
counsel, actuaries and accountants) incurred by any Party in connection
with the negotiation and execution of this Agreement shall be borne by
such Party, provided, however, that XXXX shall pay, or cause to be paid
all applicable taxes and recording fees.
10.10 Governing Law and Disputes Resolution. This Agreement shall be governed by
-------------------------------------
and interpreted in accordance with English law, and any dispute which may
arise in connection with this Agreement, whether based in contract, tort
or otherwise, shall be exclusively submitted to English courts.
10.11 Notices. All notices and other communications given under this Agreement
-------
shall be in writing and shall be effective upon receipt by the addressee
at the address or telefax indicated below:
(i) if to SIRM: Shell Internationale Research Maatschappij B.V.
30 Carel van Xxxxxxxxxxx
Xxxxxxx 000, 0000 XX Xxx Xxxxx, Xxx Xxxxxxxxxxx
Fax No.: 00 00 000 0000
FAO: Intellectual Property Services
24
(ii) if to XXXX: Shell Epoxy Resins Research X.X.
Xxxxxxxxx 0, 0000 XX
Xxxxxxxxx, Xxx Xxxxxxxxxxx
Attention: Legal Department
Each Party may change its address for purposes of this Agreement by giving
the other Party written notice of the new address in the manner set forth
above.
10.12 Severability of Provisions. The invalidity, illegality or unenforceability
--------------------------
of any one or more of the provisions of this Agreement shall in no way
affect or impair the validity and enforceability of the remaining
provisions thereof.
25
AS WITNESS WHEREOF, the Parties have caused this Agreement to be executed in
duplicate original at the places and on the dates indicated below.
At _________________________, this 14th day of November, 2000.
Signed: [ILLEGIBLE]
..........................
SHELL INTERNATIONALE RESEARCH MAATSCHAPPIJ B.V.
At _________________________, this 14th day of November, 2000.
Signed: [ILLEGIBLE]
..........................
SHELL EPOXY RESINS RESEARCH B.V.
