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EXHIBIT 10.8
Q-MAX (TM) PROCESS
LICENSE AGREEMENT
BETWEEN
BTL SPECIALTY RESINS CORP.
AND
UOP
FOR
Q-MAX PROCESS UNIT
BLUE ISLAND, ILLINOIS
2
CONTENTS
Article
1 Definitions
2 Warranty
3 Grant-Forward of Patent Rights
4 Grant-Back of Patent Rights
5 Technical Information
6 Records of Operation
7 Royalties
8 Patent Infringement
9 Default
10 Termination
11 Assignment or Transfer
12 General Provisions
Schedule
A Definitions
B Royalties
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THIS AGREEMENT, dated November 21, 1994, is made between BTL SPECIALTY
RESINS CORP., a corporation of Ontario, Canada ["LICENSEE"] and UOP, a
company organized and existing under the laws of the State of New York,
United States of America ["UOP"].
ARTICLE 1
DEFINITIONS
1.1 Certain words used in this agreement are defined in Schedule A.
ARTICLE 2
WARRANTY
2.1 UOP warrants that it has the right to grant to LICENSEE a license
under UOP's Patent Rights as set forth in Article 3.
ARTICLE 3
GRANT-FORWARD OF PATENT RIGHTS
3.1 Subject to the provisions of this agreement, UOP grants to LICENSEE a
nonexclusive, nontransferable license under UOP's Patent Rights to use
the Process in the Unit, to use in carrying out the Process in the
Unit any apparatus or catalysts therefor, and to export to, sell or
use in any country the products of the Process produced in the Unit.
ARTICLE 4
GRANT-BACK OF PATENT RIGHTS
4.1 LICENSEE grants to UOP and its Subsidiaries (i) the rights to (a) use
the Process, (b) any apparatus or catalysts for carrying out the
Process, and (c) export to, sell or use in any country the products of
the Process free from suit for any infringement of LICENSEE's Patent
Rights occurring during the life of LICENSEE's Patent Rights, and (ii)
the right to pass on the immunity described in (i) above to other
licensees of UOP.
ARTICLE 5
TECHNICAL INFORMATION
5.1 UOP's Technical Information shall be available to LICENSEE through UOP
or its nominee. LICENSEE shall only use UOP's Technical Information
furnished to
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LICENSEE directly or indirectly, in writing or otherwise, in
LICENSEE's operation of the Process in the Unit. LICENSEE shall not
duplicate or disclose to others such Technical Information; however,
LICENSEE may furnish portions of such Technical Information, to the
extent necessary for LICENSEE's operations hereunder, to others who
have entered into an appropriate agreement with UOP for the
protection of such Technical Information. UOP shall not be
unreasonable with respect to the provisions of any such agreement or
with respect to the approval of LICENSEE's selection of any party to
such agreement. LICENSEE shall not analyze any catalysts acquired
directly or indirectly from UOP for use in the Unit and LICENSEE
shall prevent others from acquiring from LICENSEE information
concerning or samples of such catalysts.
5.2 Article 5.1 shall not be construed as requiring UOP to furnish
Technical Information in the form of specific services such as
preparation of engineering design specifications or detailed design or
other services such as construction, computer utilization, operating,
training or software development services unless UOP is appropriately
compensated for such services. UOP is willing to furnish such services
pursuant to an agreement or agreements separate from this agreement
under provisions mutually satisfactory to LICENSEE and UOP. Upon
LICENSEE's request and subject to provisions similar to those then
being offered to others for similar services, UOP shall prepare and
furnish to LICENSEE engineering design specifications for the Unit.
5.3 LICENSEE's Technical Information shall be available to UOP. UOP shall
not duplicate or disclose to others LICENSEE's Technical Information
furnished to UOP directly or indirectly, in writing or otherwise,
except to the extent necessary in the performance of UOP's business.
5.4 The restrictions on use, duplication and disclosure in this Article 5
shall not apply to:
(i) Technical Information which was developed by the recipient and
was in the recipient's possession before its receipt from the
other party;
(ii) Technical Information which at the time of its disclosure to the
recipient is, or thereafter becomes through no act or failure to
act on the part of the recipient, part of the public domain; or
(iii) Technical Information which has been rightfully furnished to the
recipient by a third party without restriction on disclosure or
use.
The occurrence of any of the above exceptions shall not be construed
as an express or implied grant of any rights under any of either
party's patents. An individual feature of Technical Information shall
not be considered within the above exceptions merely because the
feature is embraced by more general information within the exceptions.
A combination of features of Technical
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Information shall not be considered within the above exceptions unless
the combination itself and its principle of operation are within the
exceptions.
ARTICLE 6
RECORDS OF OPERATION
6.1 LICENSEE will keep detailed and accurate records of the character and
amount of charge and products and operating conditions and catalysts
used in the Unit, and will keep such records as are necessary to
determine royalties payable hereunder, and will furnish copies thereof
to UOP at UOP's request. The amount of charge and products shall be
determined by accurate tank gauges or other methods of measurement
approved by UOP. UOP may, on reasonable notice and during business
hours, make such examinations as it may deem necessary to verify such
records.
ARTICLE 7
ROYALTIES
7.1 LICENSEE will pay royalties and provide statements to UOP as set forth
in Schedule B.
ARTICLE 8
PATENT INFRINGEMENT
8.1 LICENSEE will promptly advise UOP in writing of any claim of
infringement and of the commencement against it of any suit or action
for infringement of patents made or brought against LICENSEE and based
upon the use hereunder by LICENSEE of the Process in accordance with
designs and specifications furnished by UOP or approved by UOP in
writing.
8.2 UOP (i) will undertake at its own expense the defense of any such suit
or action and (ii) will hold LICENSEE free and harmless from any
damages or other sums that may be assessed in or become payable under
any decree or judgment by any court which results from such suit or
action; provided that the aggregate amounts that may become payable by
UOP under the provisions of (ii) above shall not in any event exceed
one-half (1/2) of the total royalties received by UOP under this
agreement. The provisions of (i) and (ii) above shall be the exclusive
remedy of LICENSEE in connection with patent infringement.
8.3 UOP will be fully responsible for and will have sole charge in the
defense of any such suit or action. LICENSEE will render UOP all
reasonable assistance that may be required by UOP in the defense of
such suit or action and LICENSEE shall have the right to be
represented therein by advisory counsel of its own selection and at
its own expense.
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8.4 Neither UOP nor LICENSEE shall settle or compromise any such suit or
action without the written consent of the other party if the
settlement or compromise obliges the other to make any payment or part
with any property or assume any obligation or grant any licenses or
other rights by reason of such settlement or compromise.
ARTICLE 9
DEFAULT
9.1 If LICENSEE shall delay in paying royalties or providing statements to
UOP as provided in Article 7 or default on any other obligation under
this agreement, UOP may give written notice to LICENSEE specifying the
claimed particulars of such default. If such default is not remedied
within thirty (30) days after submission of such notice, UOP may (i)
terminate this agreement by giving written notice to LICENSEE, (ii)
assess a finance charge (not to exceed the maximum amount permitted by
law) for the period of any delay in paying royalties, and/or (iii)
enforce the defaulted obligation by any available lawful means. Any
indulgence by UOP shall not be construed as a waiver of UOP's rights
under this paragraph either with respect to such default or to similar
subsequent defaults.
ARTICLE 10
TERMINATION
10.1 LICENSEE may terminate this agreement at any time after ten (10) years
from the Commencement Date, provided LICENSEE has first acquired a
fully paid license for the design capacity or demonstrated capacity of
the Unit, whichever is greater. LICENSEE shall notify UOP, in writing,
of the Commencement Date within thirty (30) days thereafter. UOP may
terminate this agreement at any time after ten (10) years from the
Commencement Date. In each case, termination shall be effected by at
least six (6) months prior written notice. In any event, this
agreement shall terminate ten (10) years after the date of this
agreement should the Commencement Date not have occurred by such date.
10.2 After termination, neither party shall have any further rights or
obligations under this agreement except (i) LICENSEE shall remain
liable under Article 7 for any royalties accrued prior to termination,
(ii) the restrictions on use, duplication and disclosure of Technical
Information under Article 5 shall remain in effect, (iii) UOP's rights
under Article 4 and the right to use LICENSEE's Technical Information
under Article 5.3 shall remain in effect, and (iv) after termination
under this Article 10, LICENSEE's rights under Article 3 and the right
to use UOP's Technical Information under Article 5.1 shall remain in
effect to the extent of any fully paid license(s) acquired by
LICENSEE.
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ARTICLE 11
ASSIGNMENT OR TRANSFER
11.1 This agreement shall not be assignable by either party without the
prior written consent of the other party; however, it may be assigned
without such consent by either party to the successor in interest of
all or substantially all of the business and assets of such party or
by UOP to the successor in interest of all or substantially all of
UOP's licensing business. No assignment shall be valid until the
assignee has assumed the rights and obligations of the assignor under
this agreement.
11.2 Prior to any sale, lease or other disposition of the Unit, LICENSEE
shall (i) acquire a fully paid license for the demonstrated capacity
or the design capacity of the Unit, whichever is greater, (ii)
transfer the fully paid licenses acquired hereunder to the purchaser,
lessee or other operator of the Unit, and (iii) require as a condition
of such sale, lease or other disposition that the purchaser, lessee or
other operator of the Unit enter into an appropriate agreement with
UOP restricting the use (to the extent of said transferred fully paid
licenses), duplication and disclosure of UOP's Technical Information.
11.3 Any assignment of this agreement or any sale, lease or other
disposition by LICENSEE of the Unit shall not relieve LICENSEE or UOP
of the restrictions on use, duplication and disclosure of Technical
Information under Article 5.
ARTICLE 12
GENERAL PROVISIONS
12.1 Notices and written statements required under this agreement shall be
deemed to have been given upon mailing, postpaid, to the recipient
party at the following address or at such other address as may from
time to time be designated in writing to the other party:
LICENSEE: BTL Specialty Resins Corp.
0000 X. 000xx Xxxxxx
X.X. Xxx 000
Xxxx Xxxxxx, Xxxxxxxx 00000-0000
tel: 000-000-0000
fax: 000-000-0000
UOP: UOP
00 Xxxx Xxxxxxxxx Xxxx
X.X. Xxx 0000
Xxx Xxxxxxx, Xxxxxxxx 00000-0000
X.X.X.
tel: 000-000-0000
fax: 000-000-0000
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12.2 "Q-Max" is proprietary and LICENSEE shall not claim any rights or
interests in the word "Q-Max". LICENSEE shall make no commercial use
of the word "Q-Max" as a trademark, service xxxx or otherwise unless
such commercial use, including the manner of use, has first been
approved in writing by UOP.
12.3 This agreement embodies the entire agreement between the parties
relating to the subject of this agreement and there are no prior
representations or agreements relating thereto.
12.4 No change in, addition to, or waiver of the provisions of this
agreement shall be binding upon either party unless approved in
writing by its authorized representative and no modifications shall be
effected by the acknowledgment or acceptance of purchase order forms
containing other or different provisions.
12.5 Nothing contained in this agreement shall be construed as granting any
rights to LICENSEE, express or implied, to use the Process other than
in the Unit.
12.6 This agreement shall be construed and the legal relations between the
parties shall be determined according to the laws of the State of
Illinois, U.S.A.
12.7 Upon execution by the parties, this agreement shall be deemed
effective as from the date of this agreement.
ARTICLE 13
SPECIAL PROVISIONS
13.1 Prior to the Commencement Date, all operations of the Unit shall be
exclusively governed by the provisions of the Cat Con License
Agreement.
13.2 On the Commencement Date: (a) the Cat Con License Agreement shall
terminate and all fully paid licenses acquired by LICENSEE under the
Cat Con License Agreement shall cease to exist; (b) any UOP Technical
Information furnished to LICENSEE under the Cat Con License Agreement
shall be deemed to have been furnished under and shall be governed by
the provision of this agreement; and (c) all operations of the Unit
shall be exclusively governed by the provisions of this agreement.
13.3 If LICENSEE decides not to revamp the Unit for operation under this
agreement: (a) this agreement shall terminate, and the payments
specified in paragraph 1 of Schedule B will not come due; and (b)
LICENSEE shall promptly return to UOP all of the UOP Technical
Information furnished by UOP for the revamp of the Unit, and LICENSEE
shall have no further right to use such information for any purpose.
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AGREED: AGREED:
BTL SPECIALTY RESINS CORP. UOP
U O P
By /s/ By /s/ /s/
--------------------------- --------------------------- -------
Title President Title President. INITIAL
------------------------ ---------------------------
WITNESSED: WITNESSED:
By /s/ By /s/
--------------------------- ---------------------------
Title Sales & Marketing Mgr. Title Secretary.
------------------------ ---------------------------
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SCHEDULE A
DEFINITIONS
1. "Q-Max Process" or "Process" means a process for producing cumene
by reacting benzene with a C3 alkylating agent or a polyisopropylbenzene
transalkylating agent in the presence of a catalyst containing a molecular
sieve.
2. "Patent Rights" shall mean rights with respect to or transferable
interests in patents and patent applications of all countries only to the
extent that they or the claims thereof cover the Process, any apparatus and
catalysts for carrying out the Process, and the products of the Process (i)
acquired by the company in question prior to the Cut-off Date, or (ii)
based on inventions conceived and under the control of the company in
question prior to the Cut-off Date; in each case to the extent that, and
subject to the conditions (including the obligation to account to and/or
make payments to others) under which, the company in question has the right
to grant licenses, immunities or licensing rights.
3. "Technical Information" shall mean (i) improvements and
developments relating to the Process made or acquired by the company in
question prior to the Cut-off Date, and (ii) operating technique necessary
for the operation of the Process made or acquired by the company in
question prior to the termination of this agreement; in each case to the
extent that, and subject to the conditions (including the obligation to
account to and/or make payments to others) under which, the company in
question has the right to disclose such information to others. Technical
Information shall not include any information relating to the composition
of and methods for the manufacture of catalysts for use in the Process.
4. "Unit" shall mean the existing UOP Catalytic Condensation Process
unit which LICENSEE has been operating under the provisions of the Cat Con
License Agreement and which LICENSEE intends to revamp for operations
hereunder at Blue Island, Illinois, whose present contemplated revamp
design capacity is 186.3 metric tons of Cumene Product per operating day
(or 65,883 metric tons of Cumene Product per calendar year, based on 8490
operating hours per calendar year), as such unit may from time to time be
modified or enlarged but not replaced.
5. "Commencement Date" shall mean the date when LICENSEE first
commences operation of the Process in the Unit.
6. " Cut-off Date " shall mean (i) the date four (4) years after the
Commencement Date, (ii) the date seven (7) years after the date of this
agreement, or (iii) the date of termination of this agreement, whichever
occurs first.
7. "Cumene Product" shall mean the total quantity of cumene produced
in and leaving the Unit.
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8. "Subsidiary" shall mean any company in which the company in
question, directly or indirectly, shall at the time in question own, or
have the power to exercise control of, a majority of the stock having the
right to vote for the election of directors.
9. "Annual Average BLS Index" as applied to any calendar year shall
mean the average of the monthly indices for the consecutive twelve month
period ending October 31 of the preceding calendar year from the Producer
Price Index of "Industrial Commodities" as published by the Bureau of Labor
Statistics, United States Department of Labor, using the year 1982 as the
base index equal to 100. It is understood that the Annual Average BLS Index
applicable for calculation of royalties due as a result of actual
operations shall be the Annual Average BLS Index applicable to the year of
such operations. If at any time during the term of this agreement the
Producer Price Index of " Industrial Commodities" should cease to be
published, another suitable index published by the Government of the United
States of America or other authoritative organization and generally
recognized by the trade as authoritative with respect to changes in the
United States of America of equivalent commodity costs shall be used.
10. "Cat Con License Agreement" shall mean the UOP Catalytic
Condensation Process License Agreement dated October 1, 1985 between
LICENSEE and UOP.
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