INTELLECTUAL PROPERTY TRANSFER AGREEMENT
This Agreement, dated as of December 16, 1999
BETWEEN:
MHE TECHNOLOGIES, INC., a corporation organized and existing
under the laws of the State of Delaware,
(the "Transferor")
- and -
MONDEL ULC., an unlimited liability company organized and
existing under the laws of province of Nova Scotia
(the "Transferee")
WHEREAS:
A. The Transferor was established as an indirect subsidiary of Xxxxxx
Material Handling, Inc., a corporation existing under the laws of the
State of Delaware, for the purpose of providing a separate, single
entity for owning certain intellectual property used in the Material
Handling Division of Harnischfeger Corporation, a corporation existing
under the laws of the State of Delaware ("HarnCo").
B. Effective October 10, 1997, HarnCo assigned to the Transferor its
entire right, title and interest in and to certain letters patent,
patent applications, inventions, improvements, know-how and technical
or other proprietary information, used by HarnCo's then Material
Handling Division, pursuant to the Assignment of Patents, Inventions
and Know-How Agreement effective as of October 10, 1997 by and between
HarnCo and Grantor (the "October 1997 Intellectual Property Assignment
Agreement").
C. Effective October 10, 1997, HarnCo assigned to the Transferor its
entire right, title and interest in and to certain registered
trademarks and service marks and the registrations therefor and certain
common law trademarks, service marks and trade names together with the
goodwill symbolized by and associated therewith, which was previously
used by HarnCo's then Material Handling Division, pursuant to the
Trademark and Goodwill Assignment Agreement effective as of October 10,
1997 by and between HarnCo and the Transferor (the "October 1997
Trademark Assignment Agreement").
D. The Transferee is desirous of obtaining from the Transferor, and the
Transferor is desirous of transferring to the Transferee, certain
intellectual property assets previously licensed by the Transferor to
the Transferee pursuant to a Technology Sharing Agreement between
Harnco and the Transferee dated as of November 1, 1996 (the "Technology
Sharing Agreement"), which agreement has been terminated.
E. Capitalized terms not defined herein have the meanings ascribed in the
share purchase agreement dated the date hereof between 3016117 Nova
Scotia ULC, MagneTek Mondel Holding ULC and Xxxxxx Material Handling,
Inc. relating to the purchase and sale of all of the issued and
outstanding shares in the capital of the Transferee.
NOW THEREFORE, for the consideration contemplated herein, the receipt and
sufficiency of which is acknowledged, the Transferor and the Transferee hereby
agree as follows:
1. TRANSFER OF INTELLECTUAL PROPERTY
The Transferor does hereby ASSIGN, SELL, TRANSFER and CONVEY
to the Transferee, its successors, assigns, and other legal
representatives, the Transferor's entire right, title, and interest in
and to the intellectual property assets listed on Schedule 1
(collectively, the "Transferred Intellectual Property"), and the
Transferee hereby accepts such assignment. This assignment shall
include the right to xxx for and recover from past and future
violations in connection with or related to the Transferred
Intellectual Property.
2. PAYMENT OF PURCHASE PRICE
The purchase price for the Transferred Intellectual Property
shall be $1,250,000 payable in United States dollars by the Transferee
to the Transferor in accordance with a written direction from the
Transferor to the Transferee delivered by the Transferor to the
Transferee in connection with the execution of this Agreement.
3. REPRESENTATION AND WARRANTY
The Transferor warrants that at the time of execution of this
Agreement, subject to the rights of third parties identified in the
October 1997 Intellectual Property Assignment Agreement and the October
1997 Trademark Assignment Agreement, the Transferor has not received,
and is unaware of, any third party claims contesting or disputing its
ownership rights to the Transferred Intellectual Property, and further
warrants that the Transferor has the right to assign the Transferred
Intellectual Property, such assignment including the right to xxx for
and recover from past and future violations in connection with or
related to the Transferred Intellectual Property.
4. GOVERNING LAW
This Agreement shall be governed by and construed in
accordance with the laws of the Province of Ontario without giving
effect to any choice or conflict of law provision or rule that would
cause the application of laws of any jurisdiction other than the
Province of Ontario.
5. COUNTERPARTS
This Agreement may be executed in counterparts, each of which
shall be deemed to be an original, but all of which taken together
shall constitute one and the same instrument. This Agreement may be
executed by facsimile signatures.
6. ASSIGNMENT
Neither party may assign or transfer its rights or obligations
arising under this Agreement without the prior written consent of the
other party hereto, which consent shall not be unreasonably withheld;
provided, however that the Transferee shall be permitted to assign its
rights and obligations hereunder to an Affiliate without obtaining the
prior written consent of the Transferor.
7. SUPPLY OF KITS AND PANELS
Until such time that the Transferor has completed the transfer
of the kit and panel technology (as defined in Schedule 1) in a manner
sufficient to allow the Transferee to independently manufacture the
kits and panels for its own benefit, the Transferor shall supply kits
and panels (as defined in Schedule 1), or cause such kits and panels to
be supplied, to the Transferee consistent with current practice (and in
addition, a one (1) year repair or replacement warranty) for a period
of one (1) year from the date hereof, a description of such current
practices being attached hereto as Schedule 2. The Transferor shall
commence the transfer of the kit and panel technology within thirty
(30) days from the date of this Agreement and shall use its
commercially reasonable efforts to complete such transfer within ninety
(90) days thereafter.
The Transferor will provide such assistance, training and
information as the Transferee may reasonably request, at no charge to
the Transferee, in connection with the Transferred Intellectual
Property described in Schedule 2 in connection with the use of such
Transferred Intellectual Property by the Transferee and the
commencement by it of the manufacture and sale of the products to which
such Transferred Intellectual Property relates.
8. FURTHER ASSURANCES
Each of the Transferor and the Transferee agrees to execute
and deliver all such other documents, certificates and agreements and
to take, or cause to be taken, all actions, and to do, or cause to be
done, anything else that may reasonably be deemed necessary to perfect
and give effect to the transactions contemplated by this Agreement
IN WITNESS WHEREOF, the parties have executed this agreement as of the date
noted above.
MHE TECHNOLOGIES, INC.
By:
Name:
Title:
MONDEL ULC
By:
Name:
Title:
- 1 -
SCHEDULE 1
TRANSFERRED INTELLECTUAL PROPERTY
1. "Mondel" common law trademark, as listed on Exhibit C of the Trademark and
Goodwill Assignment Agreement effective as of October 10, 1997, and "Mondel
Engineering" trade name, and all goodwill associated therewith.
2. Proprietary know how for selection criteria for brakes to be used in movable
structures, and selection criteria for coils used in both brakes and magnets.
3. Computer programs for coil winding control.
4. Processes for coil winding of aluminium strip for use in magnets, and coil
winding of copper wire/strip for use in brakes and magnets.
5. All related service manuals and price books.
6. License with Boxmag Rapid Limited as referred to in both the Trademark and
Goodwill Assignment Agreement effective as of October 10, 1997 by and between
Harnischfeger Corporation and MHE Technologies, Inc., and the Assignment of
Patents, Inventions and Know-How Agreement effective as of October 10, 1997 by
and between Harnischfeger Corporation and MHE Technologies, Inc.
7. Notwithstanding anything else in this Schedule 1, Transferred Intellectual
Property does not include any intellectual property related to or which may be
applied to internally mounted disc brakes.
8. All technology needed by the Transferee to independently manufacture
hydraulic brake kits ("kits") and brake rectifier panels ("panels") that have
been supplied to the Transferee by the Transferor and/or by Xxxxxx Material
Handling , Inc., such technology to include drawings, patterns, parts lists,
information about suppliers, and related manufacturing know-how (collectively,
the "kit and panel technology").
SCHEDULE 2
SUPPLY OF KITS AND PANELS
[Please see attached.]
