LICENSE AGREEMENT
dated 8 October, 1998
between RENTECH, INC.
and TEXACO NATURAL GAS INC.
TABLE OF CONTENTS
Page
1. Definition. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1
2. General Terms . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5
2.1 Grant of License. . . . . . . . . . . . . . . . . . . . . . . . . . . .5
2.2 Exclusivity of Licensed Field . . . . . . . . . . . . . . . . . . . . .5
2.3 Grantback License . . . . . . . . . . . . . . . . . . . . . . . . . . .5
2.4 Sublicenses . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6
(a) Joint Ventures with Third Parties . . . . . . . . . . . . . . . . 6
(b) Any Person. . . . . . . . . . . . . . . . . . . . . . . . . . . . 6
(c) Conditions. . . . . . . . . . . . . . . . . . . . . . . . . . . . 6
2.5 Reservation of Rights by Rentech. . . . . . . . . . . . . . . . . . . 6
2.6 Plans . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7
2.7 Independent Contractor Agreement. . . . . . . . . . . . . . . . . . . 7
2.8 Hiring Prohibition. . . . . . . . . . . . . . . . . . . . . . . . . . 7
2.9 Exhibits and Attachments. . . . . . . . . . . . . . . . . . . . . . . 7
3. Initial Payment and License Payments. . . . . . . . . . . . . . . . . 8
3.1 Initial Payment. . . . . . . . . . . . . . . . . . . . . . . . . . . 8
3.2 License Payments. . . . . . . . . . . . . . . . . . . . . . . . . . . 8
(a) Surrendering Exclusivity Before Deployment. . . . . . . . . . . . 8
(b) Conversion of Exclusivity After Deployment. . . . . . . . . . . . 8
(c) Recovery of License Payments. . . . . . . . . . . . . . . . . . . 9
4. Royalties . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9
4.1 Rentech Royalties . . . . . . . . . . . . . . . . . . . . . . . . . . 9
(a) Rentech Royalties . . . . . . . . . . . . . . . . . . . . . . . . 9
(b) Natural Gas and Still Gas as Feedstock. . . . . . . . . . . . . . 10
(c) Rentech Catalyst Markup . . . . . . . . . . . . . . . . . . . . . 11
(d) Percentage of Income and Other Consideration. . . . . . . . . . . 12
4.2 Valuation and Collection of Royalties . . . . . . . . . . . . . . . . 14
(a) Fair Market Value of Consideration. . . . . . . . . . . . . . . . 14
(b) Collection of Royalties . . . . . . . . . . . . . . . . . . . . . 14
4.3 * Rentech Royalties. . . . . . . . . . . . . . . . . . . 14
4.4 Reduced Royalties for Use of Technical Information. . . . . . . . . . 14
5. Facility Access . . . . . . . . . . . . . . . . . . . . . . . . . . . 15
5.1 Access to Licensee's Facility . . . . . . . . . . . . . . . . . . . . 15
6. Payments. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15
* Omitted material filed separately.
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6.1 Manner of Payment . . . . . . . . . . . . . . . . . . . . . . . . . . 15
6.2 Non-Business Days . . . . . . . . . . . . . . . . . . . . . . . . . . 15
6.3 Receipt . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15
6.4 Payment Due Date. . . . . . . . . . . . . . . . . . . . . . . . . . . 16
6.5 Late Payments . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16
6.6 Taxes Withheld. . . . . . . . . . . . . . . . . . . . . . . . . . . . 16
6.7 No Set-Offs or Counterclaims. . . . . . . . . . . . . . . . . . . . . 16
7. Reports and Records . . . . . . . . . . . . . . . . . . . . . . . . . 17
7.1 Records and Books of Account. . . . . . . . . . . . . . . . . . . . . 17
7.2 Production Reports. . . . . . . . . . . . . . . . . . . . . . . . . . 17
(a) Quantities. . . . . . . . . . . . . . . . . . . . . . . . . . . . 17
(b) Calculations. . . . . . . . . . . . . . . . . . . . . . . . . . . 17
(c) Estimates . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17
7.3 Need for Report . . . . . . . . . . . . . . . . . . . . . . . . . . . 17
7.4 Right to Audit. . . . . . . . . . . . . . . . . . . . . . . . . . . . 17
8. Confidentiality . . . . . . . . . . . . . . . . . . . . . . . . . . . 18
8.1 Obligation of Confidentiality . . . . . . . . . . . . . . . . . . . . 18
8.2 Exception to Confidentiality. . . . . . . . . . . . . . . . . . . . . 18
8.3 Published Disclosure. . . . . . . . . . . . . . . . . . . . . . . . . 19
8.4 Legal Disclosures . . . . . . . . . . . . . . . . . . . . . . . . . . 19
8.5 Notice of Unauthorized Disclosures. . . . . . . . . . . . . . . . . . 19
8.6 Press Releases and Use of Names and Terms . . . . . . . . . . . . . . 19
9. Disclaimer of Warranties, Damages and Liability of Parties. . . . . . 19
9.1 Disclaimer. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19
9.2 Assumption of Risk. . . . . . . . . . . . . . . . . . . . . . . . . . 20
9.3 Indemnification . . . . . . . . . . . . . . . . . . . . . . . . . . . 20
9.4 Defense of Patent Infringement by Rentech . . . . . . . . . . . . . . 20
9.5 Notice of Claims to Rentech . . . . . . . . . . . . . . . . . . . . . 21
9.6 Advisory Counsel. . . . . . . . . . . . . . . . . . . . . . . . . . . 21
9.7 Indirect Damage Disclaimer. . . . . . . . . . . . . . . . . . . . . . 21
9.8 Notification of Suit. . . . . . . . . . . . . . . . . . . . . . . . . 21
9.9 Liability Limit . . . . . . . . . . . . . . . . . . . . . . . . . . . 22
10. Title to Patents, Copyright, and Information. . . . . . . . . . . . . 22
10. 1 Rentech Ownership . . . . . . . . . . . . . . . . . . . . . . . . . . 22
10.2 Texaco Ownership. . . . . . . . . . . . . . . . . . . . . . . . . . . 22
11. Representations, Warranties and Covenants . . . . . . . . . . . . . . 22
11.1 Representations, Warranties and Covenants to Texaco . . . . . . . . . 22
(a) Right, Power and Authority. . . . . . . . . . . . . . . . . . . . 22
(b) Binding Obligation. . . . . . . . . . . . . . . . . . . . . . . . 22
(c) Corporate Good Standing . . . . . . . . . . . . . . . . . . . . . 22
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(d) No Government Approval Needed . . . . . . . . . . . . . . . . . . 22
(e) No Provisions Contravened . . . . . . . . . . . . . . . . . . . . 23
(f) No Consent of Third Parties Needed. . . . . . . . . . . . . . . . 23
(g) No Proceedings Pending. . . . . . . . . . . . . . . . . . . . . . 23
(h) Not Contravene Any Law. . . . . . . . . . . . . . . . . . . . . . 23
11.2 Representations, Warranties and Covenants of Rentech. . . . . . . . . 23
(a) Right, Power and Authority. . . . . . . . . . . . . . . . . . . . 23
(b) Binding Obligation. . . . . . . . . . . . . . . . . . . . . . . . 23
(c) Corporate Good Standing . . . . . . . . . . . . . . . . . . . . . 23
(d) No Government Approval Needed . . . . . . . . . . . . . . . . . . 24
(e) No Provisions Contravened . . . . . . . . . . . . . . . . . . . . 24
(f) No Consent of Third Parties Needed. . . . . . . . . . . . . . . . 24
(g) No Proceedings Pending. . . . . . . . . . . . . . . . . . . . . . 24
(h) Not Contravene Any Law. . . . . . . . . . . . . . . . . . . . . . 24
(i) No Patent Invalidity. . . . . . . . . . . . . . . . . . . . . . . 24
(j) Rentech Owner of Licensed Technology. . . . . . . . . . . . . . . 24
(k) No Current Restrictions on Providing Information to Texaco. . . . 24
(l) Licensing All Rights. . . . . . . . . . . . . . . . . . . . . . . 25
12. Term and Termination. . . . . . . . . . . . . . . . . . . . . . . . . 25
12.1 Term. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 25
12.2 Termination for Breach. . . . . . . . . . . . . . . . . . . . . . . . 25
12.3 License Abatement, Termination and Damage Recovery for Infringement . 25
(a) License Termination by Texaco Based on Infringement . . . . . . . 25
(b) License Abatement Based Upon Infringement . . . . . . . . . . . . 25
(c) Recovery of Indemnification from Rentech Royalties. . . . . . . . 26
12.4 Survival of Obligations . . . . . . . . . . . . . . . . . . . . . . . 26
12.5 No Damage . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 26
13. Licensing Existing, Gasification Plants and Still Gas Plants. . . . . 26
14. Appraisal . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 26
15. Miscellaneous . . . . . . . . . . . . . . . . . . . . . . . . . . . . 27
15.1 Assignment. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 27
15.2 Arbitration and Injunctive Relief . . . . . . . . . . . . . . . . . . 27
(a) Procedure for Arbitration; Judgment . . . . . . . . . . . . . . . 27
(b) Judicial Action for Specific Performance or Injunction. . . . . . 28
15.3 Governing Law; Jurisdiction; Venue. . . . . . . . . . . . . . . . . . 28
15.4 No Other Relationship . . . . . . . . . . . . . . . . . . . . . . . . 29
15.5 Conversion to Dollars . . . . . . . . . . . . . . . . . . . . . . . . 29
15.6 Dollar Transaction. . . . . . . . . . . . . . . . . . . . . . . . . . 29
15.7 Fees Payable. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 29
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15.8 Force Majeure . . . . . . . . . . . . . . . . . . . . . . . . . . . . 29
(a) No Liability for Certain Delays or Defaults . . . . . . . . . . . 29
(b) Cause Beyond the Reasonable Control . . . . . . . . . . . . . . . 30
15.9 Rights, Powers, Remedies Cumulative; Waiver; Time . . . . . . . . . . 30
15.10 Table of Contents and Headings. . . . . . . . . . . . . . . . . . . . 30
15.11 Notices . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 30
15.12 Integration . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 31
15.1 Construction. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 31
15.14 Invalidity of Provision . . . . . . . . . . . . . . . . . . . . . . . 31
15.15 Further Assurances. . . . . . . . . . . . . . . . . . . . . . . . . . 31
15.16 Counterparts. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 31
EXHIBIT A Secrecy Agreement . . . . . . . . . . . . . . . . . . . . . . 33
EXHIBIT B Affiliate's Acceptance. . . . . . . . . . . . . . . . . . . . 36
EXHIBIT C Independent Contractor Agreement. . . . . . . . . . . . . . . 38
* . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 44
Attachment 2 - Equal Employment Opportunity . . . . . . . . . 46
EXHIBIT D Agreement for Secrecy and Assignment of Invention
* . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 49
*Omitted material filed separately.
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LICENSE AGREEMENT
THIS AGREEMENT is made and entered into as of ___________________, 1998
by and between RENTECH, INC., a Colorado corporation having an address of
0000 00xx Xx., Xxxxx 000, Xxxxxx, XX 00000 ("Rentech") and TEXACO NATURAL GAS
INC., a Delaware corporation having an office at 0000 Xxxxx Xxxxxx, Xxxxxxx,
XX 00000 ("Texaco").
WHEREAS, Rentech has developed a synthesis gas to liquids process
incorporating Xxxxxxx-Tropsch technology with a slurry reaction bed and an
iron based catalyst and has filed patent applications on said process, some
of which have issued;
WHEREAS, Texaco and its Affiliates have substantial expertise in
petroleum chemistry and processes associated therewith, and in particular,
have developed and are developing substantial expertise in synthesis gas and
Xxxxxxx-Tropsch technologies;
WHEREAS, Rentech wishes to license its Xxxxxxx-Tropsch technology to
Texaco, who will (1) engage Affiliates of Texaco to further develop and
improve the technology, and (2) market and sublicense the technology in the
Licensed Field (subsequently defined in this Agreement) should it prove to be
commercially successful;
WHEREAS, Rentech and Texaco therefore wish to define the rights and
obligations of the parties under this License Agreement; and
THEREFORE, for and in consideration of the premises and mutual covenants
herein contained, the parties hereto agree as follows:
1. Definitions
1.1 "AFFILIATE " of a party shall mean any company (including a
corporation, partnership, joint venture, or other entity) in which the party
or its parent company shall at the time in question directly or indirectly
own a fifty percent (50%) or more interest in such company. It is understood
that (i) a party or its parent company directly owns a fifty percent (50%) or
more interest in a particular company if that party or its parent company
holds shares carrying fifty percent (50%) or more of the votes exercisable to
vote for directors of the said particular company, and (ii) a party or its
parent company indirectly owns a fifty percent (50%) or more interest in a
particular company if a series of companies can be specified beginning with a
parent company and ending with a particular company so related such that each
company of the series, except the particular company, directly owns a fifty
percent (50%) or more interest in a
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later company in the series; PROVIDED, HOWEVER, no company shall be deemed an
Affiliate of Texaco unless Texaco or its parent company directly owns at
least twenty-five percent (25%) of the equity ownership of the company.
1.2 "XXXXXX IMPROVEMENTS" shall mean those inventions and improvements
developed solely or jointly by Xxxxxxx X. Xxxxxx in which title is assigned
to Texaco under the Independent Contractor Agreement between the parties and
related exhibits executed concurrently herewith.
1.3 "CATALYST IMPROVEMENT AREAS" shall mean the specific areas of iron
catalyst formulation, iron catalyst manufacturing and iron catalyst
separation, but excluding any and all rights relating to reactor design.
1.4 "CONFIDENTIAL INFORMATION" shall have the meaning set forth in
Section 8. 1.
1.5 "DEPLOYMENT" shall mean that time after Texaco has initiated the
payment of Rentech Royalties for one or more plants licensed under this
Agreement in the Licensed Field that are designed to produce at least five
hundred (500) barrels of F-T Products (measured at the U.S. standard of
forty-two (42) gallons per barrel) per day, each gallon consisting of two
hundred thirty-one (231) cubic inches, measured at sixty degrees Xxxxxxxxxx
(00XXX. F) and one (1) atmosphere pressure.
1.6 "EFFECTIVE DATE" shall mean the date of execution of this
Agreement if signed by both parties on the same date or the later of the
dates of execution if signed by the parties on different dates. The Effective
Date of Exhibits C and D will be different (See Section 2.7).
1.7 "F-T PRODUCTS" shall mean hydrocarbon products which have five (5)
or more carbon atoms produced by the use of Rentech Technology through a
Xxxxxxx-Tropsch reaction.
1.8 "IMPROVEMENT PATENT AND COPYRIGHT RIGHTS" shall mean all United
States and foreign patent and copyright rights specifically developed by
Texaco or its Affiliates to improve the Rentech Technology in the Catalyst
Improvement Areas; and further including patent and copyright improvements to
Rentech Technology in the Catalyst Improvement Areas by sublicensees of
Texaco which Texaco has the right to sublicense to Rentech and its licensees
without the obligation to account to third parties therefor.
1.9 "IMPROVEMENT TECHNICAL INFORMATION" shall mean any technical
information, data, know-how and unpatented inventions specifically developed
by Texaco or its Affiliates to improve the Rentech Technology in the Catalyst
Improvement Areas; and further including any
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improvements to Rentech Technology in the Catalyst Improvement Areas by
sublicensees of Texaco which Texaco has the right to sublicense to Rentech
and its licensees without the obligation to account to third parties therefor.
1.10 "LICENSE PAYMENTS" shall have the meaning set forth in Section 3.2.
1.11 "LICENSED FIELD" shall mean a Xxxxxxx-Tropsch process where (i)
the source of synthesis gas is the product of a gasification process or the
combination of a gasification process and one or more synthesis gas
production methods such as, but not limited to, steam methane reforming or
autothermal reforming and (ii) the feed for the gasification process is not
one hundred percent (100%) by weight Natural Gas.
1.12 "LICENSED PLANT" shall mean a facility incorporating a
Xxxxxxx-Tropsch reactor utilizing Rentech Technology, including Rentech
Patent and Copyright Rights and Rentech Technical Information, which is
licensed under this Agreement.
1.13 "MARKET RATE" shall mean the license fees and royalties, or other
consideration in lieu thereof, that can be reasonably obtained under the
market conditions prevailing at the time for a Xxxxxxx-Tropsch plant of
comparable size under similar terms and conditions, taking into account
comparable recent transactions and license fees for the synthesis gas license
using similar feedstocks, if applicable. If there is a disagreement as to the
Market Rate in effect from time to time, the Market Rate shall be determined
by an appraiser selected as provided for in this Agreement.
1.14 "NATURAL GAS" shall mean a mixture of hydrocarbon compounds,
primarily methane, which may contain small quantities of various
non-hydrocarbons, all existing either in gaseous phase or in solution with
crude oil in natural underground reservoirs at reservoir conditions.
1.15 "PERSON" shall mean any individual, corporation, partnership,
joint venture, association joint stock company, limited liability company,
trust estate, unincorporated organization or governmental body, excluding a
Third Party.
1.16 "RENTECH CATALYST" shall mean an iron-based catalyst licensed by
Rentech or an improvement catalyst derived from such by Texaco.
1.17 "RENTECH CATALYST MARKUP" shall have the meaning set forth in
Section 4.1 (c).
1.18 "RENTECH PATENT AND COPYRIGHT RIGHTS" shall mean all United States
and foreign rights related to Rentech Technology existing, at the Effective
Date, including but not limited to,
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rights accruing to Rentech and its Affiliates from filings of U.S. Patent
Nos. 5,324,335, issued June 28, 1994; 5,504,118, issued March 19, 1996;
5,645,613, issued April 2, 1996; 5,621,155 issued April 9, 1996; 5,500,449
issued August 6, 1996; 5,506,272 issued April 15, 1997; 5,543,437 issued
April 15, 1997; 5,620,670 issued July 8, 1997; and 5,763,716 issued June 9,
1998; any subsequent continuations, continuations-in-part and divisionals
which claim priority to the above-identified patents and patent applications;
any foreign filed patent equivalents of the above; and any copyright rights
(including but not limited to derivative rights) which Rentech may have in
the Rentech Technology; and further including patent and copyright
improvements to Rentech Technology in the Catalyst Improvement Areas by
Rentech or Rentech's licensees other than Texaco and its Affiliates, which
Rentech has the right to sublicense to Texaco, its Affiliates and their
licensees without the obligation to account to third parties therefor.
1.19 "RENTECH ROYALTY(IES)" shall have the meaning set forth in
Sections 4.1 and 4.2.
1.20 "RENTECH TECHNICAL INFORMATION " SHALL mean any Confidential
Information, including technical information, data, know-how and unpatented
inventions, of Rentech and its Affiliates related to the Rentech Technology
existing at the Effective Date and further including improvements to Rentech
Technology in the Catalyst Improvement Areas by Rentech or Rentech's
licensees other than Texaco and its Affiliates, which Rentech has the right
to sublicense to Texaco, its Affiliates and their sublicensees without the
obligation to account to third parties therefor.
1.21 "RENTECH TECHNOLOGY" shall mean the synthesis gas to liquids
process of Rentech incorporating Xxxxxxx-Tropsch technology with a slurry
reaction bed and an iron based catalyst.
1.22 "REPORTING PERIOD" shall mean a calendar quarter until the sum of
Rentech Royalties and Rentech Catalyst Markup exceed Ten Thousand Dollars
($10,000) a month, whereupon the Reporting Period shall become a calendar
month.
1.23 "STILL GAS" shall mean any mixture of gas produced in refineries
by distillation, cracking, reforming, and other processes. The principal
constituents may be methane, ethane, ethylene, normal butane, butylene,
propane, and propylene.
1.24 "TECHNICAL INFORMATION" shall mean either Rentech Technical
Information or Improvement Technical Information, or both, as the case may be.
1.25 "TEXACO GASIFICATION PROCESS" shall mean the process licensed by a
Texaco Affiliate and improvements therein producing carbon monoxide and
hydrogen by partial oxidation of carbonaceous substances.
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1.26 "THIRD PARTY" shall mean an independent third party in a joint
venture with Texaco or an Affiliate, wherein the equity interest of Texaco
and its Affiliates is at least ten percent (10%).
2. General Terms
2.1 GRANT OF LICENSE. Rentech grants to Texaco, its Affiliates, and
joint ventures with Third Parties subject to the terms and conditions of this
Agreement, an irrevocable, nonexclusive, worldwide license to make, have
made, practice and use (including the right to sell or lease parts,
equipment, and Rentech Catalyst to Affiliates and sublicensees, and the right
to sell or lease produced hydrocarbon products to any person or third party ,
and the right to sublicense one or more manufacturers to furnish Rentech
Catalyst to Licensed Plants) the Rentech Technology, including Rentech Patent
and Copyright Rights and Rentech Technical Information, in their business,
including joint ventures with Third Parties, anywhere in the world, except in
the country of India, for which an exclusive license has been granted;
PROVIDED, HOWEVER, notwithstanding the grant of license made in this section,
no grant of license to any Affiliate of Texaco or joint venture with Third
Parties shall be effective unless Texaco has first provided to Rentech the
Affiliate's (or said joint venture's) written and signed undertaking (in the
form set forth in Exhibit B to this Agreement) by which the Affiliate agrees
that the Affiliate is subject to and accepts many of the same conditions and
obligations to which Texaco is subjected to under this Agreement, but with no
right to extend the license to any other Affiliates or Persons as if the
Affiliates had signed and entered into this Agreement as modified by Exhibit
B directly with Rentech as of the date of the Affiliate's written and signed
undertaking. If it desires, Texaco may condition an Affiliate's rights under
this Section 2.1 grant to an Affiliate signing a license agreement with
Texaco (instead of Exhibit B), said license agreement containing terms at
least as restrictive as Exhibit B and Section 2.4(c). If the excepted
exclusive license rights for the country of India are terminated or expire,
then the country of India shall be included within the scope of this Section
2.1 grant to Texaco and its Affiliates.
2.2 EXCLUSIVITY OF LICENSED FIELD. Subject to Section 13, the grant
to Texaco and its Affiliates under Sections 2.1 and 2.4(a) shall be exclusive
within the Licensed Field.
2.3 GRANTBACK LICENSE. Subject to Section 2.2, Texaco agrees to
disclose to and grants to Rentech a nonexclusive, royalty-free, irrevocable,
worldwide license, including the right to grant sublicenses to make, have
made, practice and use Improvement Patent and Copyright Rights and
Improvement Technical Information. Notwithstanding any other language in this
Agreement, Improvement Patent and Copyright Rights and Improvement Technical
Information originating from sublicensees of Texaco or its Affiliates may not
be sublicensed by Rentech unless such sublicensees of Rentech agree to the
royalty-free licensing of such
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sublicensees' improvements in the Catalyst Improvement Areas to Texaco, its
Affiliates and their sublicensees.
2.4 SUBLICENSES.
(a) JOINT VENTURE WITH THIRD PARTIES. Rentech grants to Texaco the
irrevocable, nonexclusive right to grant sublicenses to joint ventures with
Third Parties (and Third Parties for practice only in such joint ventures) only
within the Licensed Field of any and all rights granted under this Agreement on
terms consistent with this Agreement, specifically excluding Sections 4.2, 11.1,
13, 14 and 15.2;
(b) ANY PERSON. Rentech grants to Texaco the exclusive right to
grant sublicenses to any person only within the Licensed Field of any and all
rights granted under this Agreement on terms consistent with this Agreement,
specifically excluding Sections 4.2, 11.1, 13, 14 and 15.2;
(c) CONDITIONS. As express conditions of any sublicense under
(a) or (b) above, the sublicensee shall be required to agree in writing that
the sublicense is subject to commercially reasonable reporting of license
fees, royalties and other consideration due in lieu thereof, record keeping
and inspection provisions for the benefit of Texaco, and confidentiality
obligations substantially similar to the terms of the Confidentiality
Agreement attached as Exhibit A to this Agreement and incorporated herein.
Each sublicense shall also expressly state that the covenants of the
sublicensee run for the benefit of Texaco and Rentech, and Rentech is an
express and intended third-party beneficiary of the covenants of the
sublicensee. Texaco acknowledges and agrees that the grant of one or more
sublicenses and the use of any rights granted under this Agreement by any
sublicensee shall not relieve Texaco of any of its obligations, duties or
limitations under this Agreement. Notwithstanding any other language in this
Agreement, Texaco may not sublicense to any Person unless that sublicensee
agrees to the royalty-free grantback licensing of such sublicensee's
improvements in Catalyst Improvement Areas to Rentech and its licensees
through Texaco.
2.5 RESERVATION OF RIGHTS BY RENTECH. Rentech reserves to itself and
its successors and assigns, subject only to the license grants described in
Sections 2.1, 2.2, 2.3 and 2.4, all rights of ownership and use of the
Rentech Technology, including but not limited to: (i) the right, by itself or
with others, to develop, design, construct, operate and sell gas conversion
plants using Rentech Technology except in the Licensed Field for the
production of F-T Products anywhere in the world; (ii) the right to license,
sublicense, lease, use, produce, patent, protect and sell all or any parts of
the Rentech Technology, except in the Licensed Field, to anyone anywhere in
the world; (iii) the right to sell F-T Products produced by Rentech
Technology, in any fields of use other than the Licensed Field, anywhere in
the world; (iv) the right to use and license, except in the Licensed Field,
all trade names and trademarks used by Rentech in connection with the
-6-
Rentech Technology, including products covered or produced by use of the
technology; (v) all rights for use of the Rentech Technology in the country
of India; and (vi) all rights to the Rentech Technology and other rights of
Rentech not specifically granted to Texaco in this Agreement.
2.6 PLANS. Rentech will prepare and deliver to Texaco, within sixty
(60) days of the Effective Date, a set of plans, drawings and technical
information relating to Rentech's bubble column reactor and associated
separation equipment (gas-liquid-solid) in existence at the Effective Date
useful in the construction of a bubble column reactor system.
2.7 INDEPENDENT CONTRACTOR AGREEMENT. Concurrently with this
Agreement, Texaco and Rentech are executing an Independent Contractor
Agreement (Exhibit C) whereby Rentech is serving as a contractor to Texaco *
2.8 HIRING PROHIBITION. Neither party will solicit for employment or
hire as an employee or contractor any employee of the other party and its
Affiliates working in a technical or management position for Xxxxxxx-Tropsch
or synthesis gas supply, including Texaco Gasification Process during the
term of this Agreement, without the written consent of the other party,
unless such other party is under legal protection for relief of debts,
including but not limited to Chapters 7 and 11 of the Federal bankruptcy
laws, or has made an assignment for the general benefit of creditors.
2.9 EXHIBITS AND ATTACHMENTS. The following Exhibits and Attachments
are incorporated into and made subject to the terms of this Agreement:
Exhibit A Secrecy Agreement
Exhibit B Affiliate's Acceptance
Exhibit C Independent Contractor Agreement
Attachment 1 *
Attachment 2 Equal Employment Opportunity
Exhibit D Agreement for Secrecy and Assignment of Inventions *
* Omitted material filed separately.
-7-
3. Initial Payment and License Payments
3.1 INITIAL PAYMENT. Concurrently with execution of this Agreement,
Texaco shall pay One Hundred Thousand Dollars ($100,000) to Rentech as
consideration for this Agreement, including Rentech's reactor plans, the
exclusivity of Section 2.2, and the grant clauses of Section 2. In no event
shall this payment or any portion of it be refunded to Texaco.
3.2 LICENSE PAYMENTS BEFORE DEPLOYMENT. Starting on the first day of
the first full calendar month following Effective Date, and continuing on the
first day of each succeeding month thereafter until Deployment, Texaco shall
pay the sum of Twenty Thousand Dollars ($20,000) a month to Rentech ("License
Payments"). The License Payments shall be a credit against any license fees,
royalties or other consideration in lieu thereof received by Rentech from
Texaco. Rentech shall not have any obligation to credit License Payments
except as an offset against Rentech Royalties. Payment of the License
Payments shall cease upon the earlier to occur of the following events: (i)
upon Deployment, (ii) termination by Texaco due to a material breach by
Rentech or an adverse judgment as specified in Section 12.3(a), or (iii) the
month after Texaco has given written notice thirty (30) days in advanced to
Rentech, by registered or certified mail, that Texaco has elected to
surrender its exclusive license as provided in Section 3.2(a).
(a) SURRENDERING EXCLUSIVITY BEFORE DEPLOYMENT. In its sole
discretion, Texaco may surrender its exclusive license in the Licensed Field
under Section 2.2 and its sublicensing right under Section 2.4(b) in the
Licensed Field, while retaining its license and sublicense grants under
Sections 2.1 and 2.4(a) by giving Rentech written notice, said surrender
effective not earlier than thirty (30) days after Rentech has received the
notice. If Rentech has not received Two Hundred Forty Thousand Dollars
($240,000) in License Payments on the effective date of the surrender, Texaco
will pay the difference to Rentech on the effective date of the surrender. If
Texaco surrenders its exclusive license before Deployment has occurred,
Rentech's obligations for repayment of the License Payments shall be deemed
waived and released by Texaco.
(b) SURRENDERING OF EXCLUSIVITY AFTER DEPLOYMENT. For a period of *
if total Rentech Royalties and Rentech Catalyst Markup received from
plants in the Licensed Field do not equal at least a minimum of Two Hundred
Forty Thousand Dollars ($240,000) per year then Rentech may terminate the
exclusive license in the Licensed Field of Section 2.2 by giving Texaco
written notice. The surrender of Section 2.2 rights shall be effective not
earlier than thirty (30) days after Texaco has received the notice. Texaco
and its Affiliates will continue to have their license and sublicense rights
under Sections 2.1 and 2.4(a) but no rights to grant sublicenses under
Section 2.4(b). Texaco may, in its sole discretion, pay Rentech Royalties
from its own internal funds to satisfy the minimum requirement of this
*Omitted material filed separately.
-8-
Section 3.2(b) to prevent surrender of the exclusive grant under Section 2.2
and sublicense grant under Section 2.4(b) ("Makeup Funds") for a period of
five (5) years after Deployment. For the time period of *
years after Deployment, Texaco may, in its sole discretion, use its own
internal funds to pay up to fifty percent (50%) of the minimum requirement of
this Section 3.2(b). The Makeup Funds shall not be recoverable from Rentech
in any event. Notwithstanding the provisions of Section 4.1 or any other
provision of this Agreement, after the effective date of surrender of
exclusivity, for any future plants in the Licensed Field Rentech shall be
paid Rentech Royalties and Rentech Catalyst Markup at the percentage rate
then in effect at time of surrender of exclusivity after Deployment
established in accordance with the table titled Rentech Royalties and Rentech
Catalyst Markup in Section 4.1(d) for those equity portions of any future
Licensed Plant owned by Texaco or its Affiliates, and at the rate of one
hundred percent (100%) for those equity portions of any future Licensed Plant
owned by Third Parties. For purposes of satisfying the minimum payment in
multiple years of this Section 3.2(b) only, Texaco, in its sole discretion,
may allocate royalties and other consideration received as a paid-up license
to multiple years as if the royalties and other consideration had been
received over multiple years as a running royalty. Regardless of the
foregoing, Texaco will still pay the proper Rentech Royalties and Rentech
Catalyst Markup at the contractually obligated time.
(c) RECOVERY OF LICENSE PAYMENTS. Once Deployment occurs, Texaco may
recover the License Payments paid to Rentech by offsets against fifty percent
(50%) of Rentech Royalties and Rentech Catalyst Markup originating in
relation to Licensed Plants that are licensed after Deployment occurs, and by
an offset against fifty percent (50%) of Rentech Royalties and Rentech
Catalyst Markup originating in relation to the five hundred (500) barrels per
day of liquid hydrocarbons required for Deployment, until all License
Payments have been returned to Texaco. If the license is terminated, as
provided in Section 3.2(b) after Deployment has occurred, Texaco may recover
the License Payments paid to Rentech by offsets only against Rentech
Royalties originating in relation to Licensed Plants operating at the time of
termination.
4. Royalties.
4.1 RENTECH ROYALTIES AND RENTECH CATALYST MARKUP.
(a) RENTECH ROYALTIES. As partial consideration for the license
granted to Texaco in this Agreement, Texaco shall pay to Rentech throughout
the term of this Agreement, and thereafter so long as F-T Products are
produced by use of Rentech Technical Information or practice under Rentech
Patent and Copyright Rights at a Licensed Plant, by Texaco, its Affiliates
and their sublicensees, the following percentage of all license fees,
royalties and other consideration in lieu thereof, actually received by
Texaco, for such production or practice, excluding any consideration for
production, sales and use of Rentech Catalyst, the consideration for which is
calculated separately, at the percentages set forth below in the table in
Section
*Omitted material filed separately.
-9-
4.1(d) titled "Rentech Royalties and Rentech Catalyst Markup." Except as
provided in Section 3.2(b), the percentage of Rentech Royalties applicable to
a specific Licensed Plant shall be determined according to the applicable
period of time described in the Section 4.1(d) table when a sublicense is
granted for a specific plant site or for a Licensed Plant where a sublicense
is not executed, the authorization by Texaco or its Affiliates with an
Approval for Expenditure (AFE) or equivalent thereof. When the percentage of
Rentech Royalties is established for a particular Licensed Plant, the same
percentage shall continue to apply without change, except that after Rentech
Royalties have been paid for a Licensed Plant for * years,
there will be no further Rentech Royalties due for that Licensed Plant for
the production capacity for which Rentech Royalties have been paid unless
Texaco or its Affiliate is receiving license fees, royalties or other
consideration in lieu thereof, in which event the payment of Rentech
Royalties shall continue. Reasonable amounts received for a Process Design
Package ("PDP") or an Engineering Services Agreement shall not be included in
"license fees, royalties and other consideration in lieu thereof."
(b) NATURAL GAS AND STILL GAS AS FEEDSTOCK. Notwithstanding the
rates of Rentech Royalties previously described in Section 4.1(a) as to Third
Parties and Persons, in the event that the energy content of Natural Gas or
Still Gas or any combination thereof (based on the project design or any
design modification increasing original design capacity by ten percent (10%)
or more) fed to either the gasification process, steam methane reforming
system, autothermal reforming system or any other synthesis gas generation
process of a Licensed Plant *
*
*
*Omitted material filed separately.
-10-
*
*
*
(c) RENTECH CATALYST MARKUP. As partial consideration for the
license granted to Texaco in this Agreement, and regardless of whether Texaco
or one or more of its Affiliates manufactures Rentech Catalyst or the
catalyst is manufactured by a catalyst sublicensee of Texaco or one or more
of its Affiliates, and supplied by Texaco or one or more of its Affiliates to
a Licensed Plant, Texaco shall pay to Rentech throughout the term of this
Agreement, and thereafter so long as F-T Products are produced using Rentech
Catalyst at a Licensed Plant including sales and use by Texaco, its
Affiliates and their sublicensees, the percentages ("Rentech Catalyst
Markup") determined according to the table titled Rentech Royalties and
Rentech Catalyst Markup in Section 4.1(d), of those sums or consideration in
lieu thereof actually received by Texaco from Affiliates, sublicensees and
manufacturers of Rentech Catalyst * of the cost
to produce or have produced the Rentech Catalyst for use in a Licensed Plant
if Texaco or an Affiliate is the Rentech Catalyst manufacturer. For example,
if the manufacturing cost is One Dollar ($1.00), the Rentech Catalyst Markup
would be calculated on any amount received by Texaco *
. If any other person or third party is the Rentech
Catalyst manufacturer, then the Rentech Catalyst Markup will be the Section
4.1(d) table percentages of those sums or consideration in lieu thereof
actually received by Texaco * of the amount charged by the
manufacturer for the Rentech Catalyst. Regardless of the amount of money
Texaco receives from an Affiliate relating to Rentech Catalyst, in the event
Texaco
*Omitted material filed separately.
-11-
receives from an Affiliate less than the average sum bargained to be received
from non-Affiliate sublicensees in a bona fide arm's-length transaction
during the preceding six (6) months, Texaco will be assumed to have received
such an average sum. Upon ten (10) days advance written request by Rentech,
Texaco and its Affiliates will, at least once each calendar year, provide
Rentech or its accountants reasonable access to the relevant books of Texaco
or its Affiliates to verify the cost of Rentech Catalyst, any markup, and any
sums received by Texaco and its Affiliates in connection with Rentech
Catalyst.
(d) PERCENTAGE OF INCOME AND OTHER CONSIDERATION. The following
percentages shall apply to the calculation of Rentech Royalties and Rentech
Catalyst Markup.
*The following page 13 and the table appearing on that page is entirely omitted.
-12-
-13-
4.2 VALUATION AND COLLECTION OF ROYALTIES.
(a) FAIR MARKET VALUE OF CONSIDERATION. The Rentech Royalties
payable by Texaco and its Affiliates for all purposes of Section 4.1, shall
be calculated upon the Market Rate. If Texaco receives consideration in some
form other than money from any person or third party, then the consideration
for the licensing transaction shall be automatically valued at the Market
Rate for determination of the Rentech Royalties due. At least twice a year,
Rentech shall have the right to access as may be necessary the applicable
books and records of Texaco or its Affiliates, which Texaco shall provide
upon reasonable written notice given by Rentech at least ten (10) days in
advance. If the parties do not reach mutual agreement on the Market Rate
within sixty (60) days of either party's request to the other to determine
the value, the fair market value shall be determined by appraisal as provided
for in this Agreement.
(b) COLLECTION OF ROYALTIES. Texaco will use commercially
reasonable efforts to collect and receive the full amount of Rentech
Royalties and Rentech Catalyst Markup due from its sublicensees and its
Affiliates under this Agreement.
4.3 * RENTECH ROYALTIES. Notwithstanding any
provisions of this Agreement to the contrary, the Rentech Royalties and
Rentech Catalyst Markup payable for up to the first 750 barrels per day of
production capacity licensed under this Agreement are * by Rentech,
but such * shall not apply to all or any part of the five hundred (500)
barrels per day of liquid hydrocarbons required for Deployment. It is solely
within Texaco's discretion to elect to achieve Deployment at any time by
initiating the payment of Rentech Royalties pursuant to Section 1.6. If
Texaco or its Affiliates elect to achieve Deployment before any other
production capacity is constructed, the * shall no longer apply.
Texaco or its applicable Affiliate shall permit Rentech to reasonably
inspect, at mutually convenient times, and receive data from the
Xxxxxxx-Tropsch portion of Licensed Plants in the Catalyst Improvement Areas
and analyses of F-T Products. Rentech understands that inspection of and
Texaco disclosure of subject matter outside the Catalyst Improvement Areas is
solely within the discretion of Texaco. Rentech Royalties and Rentech
Catalyst Markup, as provided in Section 4.1 and 4.2, shall be paid for all
production capacity in excess of those that may be waived under this
Agreement.
4.4 REDUCED ROYALTIES FOR USE OF TECHNICAL INFORMATION.
Notwithstanding the foregoing provisions of this Section 4, if a Licensed
Plant of Texaco, an Affiliate, or any sublicensee is no longer practicing
under any valid, non-lapsed or non-expired patents under Rentech Patent and
Copyright Rights, but uses Rentech Technical Information for its operation,
Texaco shall continue to pay Rentech Royalties and Rentech Catalyst Markup
(if Rentech Catalyst is used in such Licensed Plant), except that the Section
4.1(d) percentage for Rentech Royalties and Rentech Catalyst Markup shall be
reduced to * of the percentage in effect immediately preceding the
date of last expiration, lapsing or declaration of
*Omitted material filed separately.
-14-
invalidity. Texaco acknowledges and agrees that the Rentech Technical
Information contains at least * of the value inherent
in the Rentech Technology, and that the Rentech Patent and Copyright Rights
constitute only a minor part of the value of the Rentech Technology. Texaco
therefore acknowledges and agrees that the reduced rate of *
of Rentech Royalties and Rentech Catalyst Markup is fair consideration for
its continued use of the Rentech Technical Information after expiration of
the term.
5. Facility Access
5.1 ACCESS TO LICENSEE'S FACILITY. Up to once a year upon reasonable
notice, Texaco and its Affiliates will permit Rentech (through the services
of an independent auditor) to have access during business hours to any plant
utilizing Rentech Technology under the control of Texaco or an Affiliate and
to business records of Texaco and the Affiliate for the limited purpose of
verifying compliance by Texaco and its Affiliates with its obligations under
this Agreement. Upon at least ten (10) days written notice, Rentech may show
a mutually agreed upon facility utilizing Rentech Technology under the
control of Texaco or an Affiliate during normal business hours, whether under
construction or in operation, to Rentech's prospective licensees, financiers,
joint ventures, purchasers, construction contractors, consultants or others
whose tour of such a facility might enhance the rights reserved by Rentech to
the Rentech Technology. Rentech recognizes that certain portions of a Texaco
or Affiliate facility that embody and would disclose information to which
Rentech and its other licensees are not entitled may be declared off-limits
to a showing by Rentech, such as reactor design, if applicable, and Texaco
Gasification Process. All persons attending such a tour and inspection must
first have executed and delivered to Texaco (i) confidentiality agreements
with substantially the same provisions as Exhibit A. and (ii) since
hydrocarbon plants are inherently dangerous, a reasonable disclaimer of
Texaco and Affiliate liability and an assumption of risk by any such person
touring a Texaco or Affiliate facility.
6. Payments
6.1 MANNER OF PAYMENT. All payments made under this Agreement shall be
calculated and made in U.S. dollars, by electronic transfer of immediately
available funds, to such banks and accounts as Rentech designates from time
to time in writing.
6.2 NON-BUSINESS DAYS. Whenever any payment or calculation of payment
due hereunder shall be stated to be due or made on a day that is not a
business day, the payment or calculation shall be made on the immediately
succeeding business day.
6.3 RECEIPT. Payments shall not be considered to be made until the day
they are received at Rentech's final bank account that is designated by it
for such purpose.
*Omitted material filed separately.
-15-
6.4 PAYMENT DUE DATE. All Rentech Royalties and Rentech Catalyst
Markup shall be due one (1) month after the end of a calendar quarter for the
receipt of royalties in that quarter by Texaco. Once the total of Rentech
Royalties and Rentech Catalyst Markup exceeds Ten Thousand Dollars ($10,000)
per month, Rentech Royalties and Rentech Catalyst Markup shall be due on the
last day of each month for the previous month's receipts of royalties by
Texaco. If Texaco must calculate a royalty from a Texaco or Affiliate
Licensed Plant from production figures based upon the Market Rate for
determination of Rentech Royalties and Rentech Catalyst Markup, then the
"license fees, royalties and other consideration in lieu thereof" will be
deemed to be received by Texaco in the second month following the production
month. If Texaco must calculate a royalty from a sublicensee's (other than an
Affiliate) Licensed Plant based on Market Rate due to some consideration
being paid in a form. other than money (Section 4.2(a)), then the
consideration paid in a form other than money will be deemed to be received
by Texaco in the second month following the production month. The portion of
consideration paid by such a sublicensee in the form of money shall be
subject to Rentech Royalties and Rentech Catalyst Markup as stated above in
the Section 6.4 when such money is actually received.
6.5 LATE PAYMENTS. In the event any payment of any type by Texaco to
Rentech shall at any time be overdue, Texaco shall pay interest to Rentech on
any and all such late payments at the simple rate of ten percent (10%) per
annum, such interest being calculated on a per diem basis for each late
payment from the date it became due to the date of actual payment. Payment of
such interest shall be in addition to any of Rentech's other rights under
this Agreement resulting from Texaco's default in making timely payments.
Interest shall accrue on late payments from the due date regardless of
whether Rentech has given Texaco written notice of the default.
6.6 TAXES WITHHELD. If Texaco is required by any government with
jurisdiction to withhold any tax or tax payment from any payment due by it to
Rentech, Texaco shall remit the net amount of the payment to Rentech,
together with official receipts or other evidence acceptable to Rentech
establishing payment of such tax payments. Any such tax payments shall be
made by Texaco on time and in the proper amount to relieve Rentech from all
liabilities for failure to pay such payments timely or fully.
6.7 NO SET-OFFS OR COUNTERCLAIMS. Under no circumstances shall any
amount payable to Rentech be reduced, either by set-off, counterclaim,
adjustment or otherwise, except for taxes withheld in accordance with
provisions of the preceding section, by virtue of any claim of any person
other than Texaco or its Affiliates, except as noted in Sections 7.4 and
12.3(c).
-16-
7. Reports and Records
7.1 RECORDS AND BOOKS OF ACCOUNT. Texaco shall make and keep complete
and accurate records and books of account describing all activities by it
under this Agreement in sufficient detail to enable Rentech Royalties and
Rentech Catalyst Markup to be determined for each Licensed Plant. The records
shall include, without limitation by reason of enumeration, separate reports
on the construction and operation of each Licensed Plant, estimates of the
composition of materials used as feedstock for the gasification process and
for the Xxxxxxx Tropsch reactor, the names and current addresses of the
Licensed Plants and sublicensees, and records showing the quantities of all
F-T Products produced. Whenever Texaco conducts audits of one or more of its
sublicensees during the term of this Agreement, Texaco shall promptly provide
complete copies of the audit reports, free of charge, to Rentech.
7.2 PRODUCTION REPORTS. Texaco shall deliver to Rentech within one (1)
month after the end of each Reporting Period a written report describing for
the applicable Reporting Period and separately for each Licensed Plant:
(a) QUANTITIES. The quantities of all F-T Products produced
during the Reporting Period, together with all other data necessary for the
calculation of Rentech Royalties and Rentech Catalyst Markup.
(b) CALCULATIONS. Calculations showing the total Rentech
Royalties and Rentech Catalyst Markup, if any, due for the Reporting Period
and the calendar year to date, and confirmation that payment to Rentech has
been or will be made as of the same due date as the report.
(c) ESTIMATES. If Texaco has not received actual reports from
Licensed Plants in time to prepare these production reports, Texaco will
prepare reports containing estimates, xxxx the reports as estimates, and
correct promptly when actual production data is available in the future.
7.3 NEED FOR REPORT. If Rentech Royalties have never become payable by
Texaco for a Licensed Plant under this Agreement, then no report to Rentech
is required by this Agreement. If Rentech Royalties and Rentech Catalyst
Markup are not due for the Reporting Period, this report need not contain any
information other than the statement, "No payments are due for this Reporting
Period."
7.4 RIGHT TO AUDIT. Texaco agrees, upon ten (10) days written notice
of Rentech, to permit up to once a calendar year, Rentech's certified public
accountants to have fall access during customary business hours to the books
and records of Texaco pertaining to activities
-17-
under this Agreement, and they shall have the right to make copies therefrom
to the extent useful for purposes of their audit at Rentech's expense. The
right to examine may be exercised at any time during the term of this
Agreement and for a period of two years after its expiration or termination.
Prompt adjustments shall be made to compensate for any errors or omissions
disclosed by the examination. If payments (limited to amounts actually
received and Market Rate already determined between the parties or by
appraisal for specific Licensed Plants) due by Texaco are determined to have
been underpaid by fifteen (15 %) or more, Texaco shall pay a penalty of ten
percent (10%) of the underpaid amount, which includes any interest owed under
Section 6.5. If the Rentech Royalties and Rentech Catalyst Markup are
determined- to have been overpaid, then Texaco shall be entitled to recover
such overpayment by offsets against future Rentech Royalties without regard
to the fifty percent (50%) limitation on recovering License Payments.
8. Confidentiality
8.1 OBLIGATION OF CONFIDENTIALITY. All information which does not fall
within the Section 8.2 exceptions to confidentiality is confidential
information ("Confidential Information"). For a period of *
from the date of disclosure, each party agrees to not disclose to third
parties any Confidential Information received from the other party (including
that received during visits to the other party's Licensed Plants and audits
and inspections conducted under this Agreement) following the same standard
of care the receiving party uses to protect its own Confidential Information
of a similar nature except to the extent required to be disclosed by law or
as expressly permitted by this Agreement. A party shall not disclose received
Confidential Information to anyone except to its employees or those of its
Affiliates that have a need to know in connection with the development,
financing, design, construction or operation of the technology or where
knowledge of such Confidential Information is necessary to effect the
purposes of this Agreement. A receiving party may disclose received
Confidential Information to a contractor, licensee, Rentech licensee, or
potential licensee if such party has executed a confidentiality agreement in
substantially the form of Exhibit A attached hereto.
8.2 EXCEPTION TO CONFIDENTIALITY. A receiving party shall not have any
obligations of nondisclosure or confidentiality under Section 8.1 as to
information, as shown by competent evidence, that (i) is or becomes, through
no fault of the receiving party in the public domain; (ii) is lawfully
obtained by the receiving party or an Affiliate from a source other than the
disclosing party; (iii) was already known by the receiving party or an
Affiliate at the time of its receipt, (iv) is independently developed by
employees or contractors of the receiving party or an Affiliate without
access to the disclosed information; or (v) is required to be disclosed by
law or order of any court or governmental authority having jurisdiction.
Disclosures that are specific, including but not limited to operating
conditions such as pressures, temperatures, formulae, procedures and
*Omitted material filed separately.
-18-
other like standards and conditions, shall not be deemed to be within the
foregoing exceptions merely because they are embraced by general disclosures
within the foregoing exceptions. Additionally, any combination of features
shall not be deemed to be within the foregoing exceptions merely because the
individual features are within the foregoing exceptions.
8.3 PUBLISHED DISCLOSURE. It is agreed that the disclosure of certain
information by a disclosing party in a publication, such as in letters patent
or by otherwise placing it in the public domain, will not free the receiving
party from its obligation to maintain in confidence any information not
specifically disclosed in or fairly ascertainable from the publication or
other disclosure, such as, for example, the fact that information in the
publication or any portion of it is or is not used by the disclosing party.
8.4 LEGAL DISCLOSURES. A receiving party shall promptly inform the
disclosing party of any required disclosure falling under Section 8.2(v), and
aid (or at a minimum not oppose) a motion or similar request by the
disclosing party for an order protecting the confidentiality of such
information, including joining or agreeing to (or nonopposition to) a motion
for leave to intervene by the disclosing party.
8.5 NOTICE OF UNAUTHORIZED DISCLOSURES. A receiving party shall
promptly notify the disclosing party in writing of any actual or suspected
unauthorized disclosures of which it becomes aware; provided, however, it
shall not be a material breach of this Agreement for mere negligence of the
receiving party to fail to provide such written notice to the disclosing
party as required.
8.6 PRESS RELEASES AND USE OF NAMES AND TERMS. This Agreement does not
grant and shall not be construed as granting any license, authorization or
consent, to either party by the other party hereto, to use any name,
trademark, service xxxx or slogan of the other party. A party shall not use
the other party's name without written consent, except for the identification
of the other party as a licensor, licensee, or as a party to this Agreement.
The terms of this Agreement will be considered Confidential Information under
Section 8, by each party except as required by law. A press release which
includes the name of the other party must have prior written approval of the
other party, except as required by law.
9. Disclaimer of Warranties, Damages and Liability of Parties
9.1 DISCLAIMER. Except as stated in this Article 9.0, ANY TECHNOLOGY,
APPARATUS, DESIGN, ORAL OR WRITTEN REPORT, DATA, COMPUTER PROGRAM,
REFERENCE/USER MANUALS OR OTHER INFORMATION PROVIDED BY ANY PARTY HEREUNDER
SHALL BE PROVIDED ON AN "AS IS" BASIS WITHOUT ANY WARRANTIES, EXPRESSED OR
IMPLIED, including but not limited to the results or effects
-19-
obtained through use of any apparatus or information, or that it is fit for
any use intended, or can be used without infringing the patent or copyright
rights of third parties. Without limitation on the preceding, ANY IMPLIED
WARRANTY OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE IS EXPRESSLY
EXCLUDED, BY AGREEMENT OF THE PARTIES, FROM THIS AGREEMENT AND FROM ANY
APPARATUS OR INFORMATION PROVIDED HEREUNDER. IN NO EVENT WILL ANY PARTY BE
LIABLE FOR ANY DAMAGES WHATSOEVER, INCLUDING DIRECT DAMAGES OR INDIRECT
DAMAGES, SUCH AS LOSS OF PROFITS, SPECIAL OR PUNITIVE DAMAGES, RESULTING FROM
THE OTHER PARTY'S USE OR DISCLOSURE OF ANY APPARATUS OR INFORMATION. The use
by a party or its Affiliate of any apparatus or information shall be solely
at its own risk, and the other party shall not be liable for any damage
resulting from inaccuracy, incorrectness, unsoundness, and/or unreliability
resulting from use by such party or its Affiliate thereof, whether or not
such is caused by negligence of the other party or Affiliate.
9.2 ASSUMPTION OF RISK. Should any party disclose or sublicense
apparatus or information of the other party to any third party within the
bounds of this Agreement, the party disclosing or sublicensing same shall
assume all risks arising out of the third party's use thereof and shall
notify such third party in a sublicense, or other writing if no sublicense is
granted, that the other party to this Agreement makes no warranties and
disclaims all liabilities concerning the information so disclosed or
sublicensed.
9.3 INDEMNIFICATION. Each party hereto indemnifies and holds the other
party hereto harmless from and against any and all damages, including injury
or death of individuals and property damages, which arise out of, or are
directly related to the indemnifying party's practice under or use of the
other party's information, the indemnifying party's rightful disclosure or
sublicensing of apparatus or information pursuant to this Agreement, and the
use of such information by any third party or sublicensee to whom such
information is so disclosed without regard to the cause or causes or the
negligence of any party or parties. Each party agrees that its licensee or
sublicensee in all agreements which grant rights under the other party's
technology or information will disclaim the right to xxx for or collect any
and all damages from the other party, without regard to the cause or causes
of the negligence of any party or parties. Nothing herein is intended to or
shall be construed as an admission of liability on the part of any party
hereto with respect to third parties, and each party hereto expressly
disclaims any intention that any third party shall be a third party
beneficiary under this section.
9.4 DEFENSE OF PATENT INFRINGEMENT BY RENTECH. Rentech agrees to
indemnify, defend, at its sole expense and with counsel of its own choice and
by conduct solely determined by Rentech, hold harmless Texaco, its
Affiliates, licensees of Texaco or its Affiliates, and employees, directors,
officers and agents of each ("Texaco Indemnified Parties") from any and
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all claims of (i) patent infringement against any of the Texaco Indemnified
Parties asserting infringement by practice of one or more patents licensed
under Rentech Patent and Copyright Rights by reason of use by any of the
Texaco Indemnified Parties of such patents as permitted under this Agreement,
and (ii) copyright infringement or theft of trade secrets asserted against
any of the Texaco Indemnified Parties as the result of use or sublicensing of
Rentech Technology as delivered by Rentech. If Rentech does not defend or in
the reasonable judgment of Texaco, which judgment has been reached after
giving at least twenty (20) days prior written notice of its concerns to
Rentech, is not vigorously and adequately defending against any such action,
including the appropriate appeals, Texaco may defend against such an action
and Rentech shall reimburse Texaco for its reasonable expenses incurred in
connection with such defense. Rentech shall have the right to be kept fully
and promptly informed of the status and progress of each such defense by
Texaco. Rentech does not have any authority to bind the Texaco Indemnified
Parties to pay damages in any action related to this Section 9.4 without
prior written consent of each of the Texaco Indemnified Parties.
9.5 NOTICE OF CLAIMS TO RENTECH. Texaco shall, to the extent it
becomes aware thereof, give prompt written notice to Rentech of each legal
action or claim or threat thereof made against a Texaco Indemnified Party,
with respect to technology, patent or copyright infringement or unfair
competition. Texaco shall give such written notice within ten (10) days after
acquiring such knowledge but at least ten (10) days prior to the expiration
of time in which a response must be filed with a court or other judicial
body, whichever is the first to occur. It shall not be a material breach of
this Agreement justifying termination of this Agreement for mere negligence
of Texaco in failing to provide such written notice to Rentech as required
hereby, but shall support claims for damages.
9.6 ADVISORY COUNSEL. A Texaco Indemnified Party may, at its expense
and with advisory counsel of its own choosing, participate in the defense of
any legal action, claims, or threat thereof under Sections 9.3 and 9.4.
9.7 INDIRECT DAMAGE DISCLAIMER. Except for the unauthorized disclosure
of Confidential Information where indirect damages may be awarded, neither
party shall be liable to the other for any indirect damages, including but
not limited to loss of profits, special or punitive damages.
9.8 NOTIFICATION OF SUIT. Each party shall promptly notify the other
party in writing of any suit or action which to its knowledge directly or
indirectly relates to the use of the Rentech Technology.
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9.9 LIABILITY LIMIT. Regardless of any terms in this Agreement (except
for Rentech Royalties and Rentech Catalyst Markup due and owing), in no event
shall any party's liability to the other party exceed the greater of Five
Million Dollars ($5,000,000) or the amount of Rentech Royalties and Rentech
Catalyst Markup paid in the last two (2) years in which liability existed.
10. Title to Patents, Copyright. and Information
10.1 RENTECH OWNERSHIP. Subject to the terms and conditions set out
herein, ownership and title to Rentech Technical Information and Rentech
Patent and Copyright Rights shall remain with Rentech.
10.2 TEXACO OWNERSHIP. Subject to the terms and conditions set out
herein, ownership of and title to Improvement Technical Information,
Improvement Patent and Copyright Rights, Xxxxxx Improvements, and
improvements made by employees or agents of Texaco and its Affiliates that do
not fall within other categories in this Section 10.2 shall remain with
Texaco or its Affiliates.
11. Representations, Warranties and Covenants
11.1 REPRESENTATIONS, WARRANTIES AND COVENANTS OF TEXACO. Texaco hereby
represents, warrants and covenants to Rentech as follows:
(a) RIGHT, POWER AND AUTHORITY. Texaco has full right, power and
authority to enter into this Agreement, and there is no impediment that would
inhibit its ability to perform the terms and conditions imposed upon it by
this Agreement.
(b) BINDING OBLIGATION. This Agreement has been duly authorized
by all necessary corporate and stockholder action and constitutes a valid and
binding obligation of Texaco, enforceable in accordance with its terms.
(c) CORPORATE GOOD STANDING. Texaco is a corporation duly
organized and validly existing and in good standing under the laws of the
place of its organization and is duly qualified and authorized to do business
wherever the nature of its activities or properties requires such
qualification or authorization.
(d) NO GOVERNMENT APPROVAL NEEDED. No registration with or
approval of any government agency or commission is necessary for the
execution, delivery or performance by Texaco of any of the terms of this
Agreement, or for the validity and enforceability hereof or with respect to
the obligations of Texaco hereunder, except such registrations and approvals
as have been previously made or obtained, or will be obtained.
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(e) NO PROVISIONS CONTRAVENED. There are no provisions in the
memorandum or articles of association or articles of incorporation, as the
case may be, or bylaws or operating agreement, if any, of Texaco, and no
provision in any existing mortgage, indenture contract or agreement binding
upon Texaco that would be contravened by the execution, delivery or
performance by Texaco of this Agreement.
(f) NO CONSENT OF THIRD PARTIES NEEDED. No consent of any
lender, trustee or holder of any indebtedness of Texaco or any other third
party is or shall be required as a condition to the validity of this
Agreement, except such consents as have been previously obtained, certified
copies of which have been delivered to Rentech.
(g) NO PROCEEDINGS PENDING. No actions or proceedings are
pending or insofar as Texaco knows or ought to know threatened against
Texaco, or any or its officers or directors in their capacities as officers
and directors of Texaco, before any court, administrative agency or other
tribunal that might have a material adverse effect on its business or
condition, financial or otherwise, or its operation.
(h) NOT CONTRAVENE ANY LAW. Neither the execution nor the
delivery of this Agreement by Texaco nor the fulfillment of or compliance
with its terms and provisions by Texaco will contravene any provision of law
including, without limitation, any statute, rule, regulation, judgment,
decree, order, franchise or permit applicable to Texaco.
11.2 REPRESENTATIONS, WARRANTIES AND COVENANTS OF RENTECH. Rentech
hereby represents, warrants and covenants to Texaco as:
(a) RIGHT, POWER AND AUTHORITY. Rentech has full right, power
and authority to enter into this Agreement, and there is no impediment that
would inhibit its ability to perform the terms and conditions imposed upon it
by this Agreement.
(b) BINDING OBLIGATION. This Agreement has been duly authorized
by all necessary corporate and stockholder action and constitutes a valid and
binding obligation of Rentech, enforceable in accordance with its terms.
(c) CORPORATE GOOD STANDING. Rentech is a corporation duly
organized and validly existing and in good standing under the laws of the
state of Colorado, United States of America, and is duly qualified and
authorized to do business wherever the nature of its activities or properties
requires such qualification or authorization.
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(d) NO GOVERNMENT APPROVAL NEEDED. No registration with or
approval of any government agency or commission is necessary for the
execution, delivery or performance by Rentech of any of the terms of this
Agreement, or for the validity and enforceability hereof or with respect to
the obligations of Rentech hereunder, except such registrations and approvals
as have been previously made or obtained or will be obtained.
(e) NO PROVISIONS CONTRAVENED. There are no provisions in the
memorandum or articles of association or articles of incorporation as the
case may be, or bylaws or operating agreement, if any, of Rentech, and no
provisions in any existing mortgage, indenture, contract or agreement binding
on Rentech that would be contravened by the execution, delivery or
performance by Rentech of this Agreement.
(f) NO CONSENT OF THIRD PARTIES NEEDED. No consent of any
lender, trustee or holder of any indebtedness of Rentech or any other third
party is or shall be required as a condition to the validity of this
Agreement, except such consents as have been previously obtained, certified
copies of which have been delivered to Texaco.
(g) NO PROCEEDINGS PENDING. There are no actions or proceedings
pending or insofar as Rentech knows or ought to know threatened against
Rentech, or any of its officers or directors in their capacities as officers
or directors of Rentech, before any court, administrative agency or other
tribunal that might have a material adverse effect on its business or
condition, financial or otherwise, or its operation.
(h) NOT CONTRAVENE ANY LAW. Neither the execution nor the
delivery of this Agreement by Rentech nor the fulfillment of or compliance
with the terms and provisions by Rentech will contravene any provision of law
including, without limitation, any statute, rule, regulation, judgment,
decree, order, franchise or permit applicable to Rentech.
(i) NO PATENT INVALIDITY. To the best of Rentech's knowledge,
there are no U.S. letters patent or foreign patents that invalidate the
patents included within the Rentech Patent and Copyright Rights, and the
practice by Texaco, its Affiliates and sublicensees under the Rentech Patent
and Copyright Rights and the Rentech Technology will not infringe upon any
third party patent and copyright rights.
(j) RENTECH OWNER OF LICENSED TECHNOLOGY. To the best of
Rentech's knowledge, Rentech has the right to use the Rentech Technology and
has the right to grant the licenses of this Agreement to Texaco and its
Affiliates under the Rentech Technology.
(k) NO CURRENT RESTRICTIONS ON PROVIDING INFORMATION TO TEXACO.
Rentech is not a party to any contract, confidence or obligation that would
create liability for Rentech by
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reason of: (i) disclosure by Rentech of information not formulated in whole
or in part by Rentech which pertains to applications to patent the Rentech
Technology or (ii) the use of such information by Rentech or Texaco.
(l) LICENSING ALL RIGHTS. The Rentech Technology disclosed and
licensed hereunder represents all rights of Rentech with respect to
technologies and equipment for Rentech Technology.
12. Term and Termination
12.1 TERM. The term of this Agreement shall commence on the date of
this Agreement and, shall extend until the latter of (i) the last expiration
date of a patent which has not lapsed or been declared invalid within Rentech
Patent and Copyright Rights, and (ii) final and complete discontinuance of
use of Rentech Technical Information and practice under Rentech Patent and
Copyright Rights in all Licensed Plants, unless earlier terminated.
12.2 TERMINATION FOR BREACH. Either party shall have the right to
terminate this Agreement as a result of the other party's material breach.
The party claiming breach of the Agreement shall give the other party written
notice of the breach, specifying the nature thereof, and the other party
shall have sixty (60) days after such notice to cure such breach. Upon the
failure of the party in material breach to cure the breach within the sixty
(60) day period or to commence a cure and diligently proceed thereafter to
complete the cure, the other party shall have the right to terminate this
Agreement as of the date set forth in the written termination notice. The
right of a party to terminate this Agreement for material breach shall be in
addition to and not in lieu of any other right or remedy that the terminating
party may have under this Agreement.
12.3 LICENSE ABATEMENT, TERMINATION AND DAMAGE RECOVERY FOR
INFRINGEMENT.
(a) LICENSE TERMINATION BY TEXACO BASED ON INFRINGEMENT. Should an
adverse judgment be entered against Rentech or a Texaco Indemnified Party for
reason of infringement of third party patents and copyrights resulting from
practice under Rentech Patent and Copyright Rights or Rentech Technical
Information, Texaco shall have the right in its sole discretion to terminate
this Agreement effective thirty (30) days after receipt by Rentech of written
notice. If the judgment materially affects Texaco's ability to use the
Rentech Technology, Texaco will not be required to pay any License Payments
after termination. No such termination shall be effective to terminate any
license grantback to Rentech pursuant to the provisions of Section 2.3.
(b) LICENSE ABATEMENT BASED UPON INFRINGEMENT. If an adverse judgment
partially reduces Texaco's ability to use the Rentech Technology, Texaco
shall have the right to reduce
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the amount of Rentech Royalties by a percentage equal to the percentage
decrease in the value of the use of the Rentech Technology to Texaco and
other Indemnified Parties due to such adverse judgment. The amount of such
percentage decrease in the value of the Rentech Technology shall be
determined by the parties hereto, or in the case of failure to reach an
agreement, by appraisal under Section 14.
(c) RECOVERY OF INDEMNIFICATION FROM RENTECH ROYALTIES. Texaco shall
have the right to reduce the amount of Rentech Royalties without regard to
any fifty percent (50%) limit in Section 3.2 to recover any damages a Texaco
Indemnified Party is liable for that are not indemnified by Rentech under
Sections 9.3 and 9.4.
12.4 SURVIVAL OF OBLIGATIONS. Texaco's obligation to pay Rentech
Royalties and Rentech Catalyst Markup, and other moneys due and owing, and
the provisions of Sections 2.1, 2.3, 2.4(a), 7, 8, 9, 10, and 15.2 shall
survive any termination.
12.5 NO DAMAGE. Neither party shall be liable for damages of any kind
as a result of properly exercising its respective right to terminate this
Agreement, and termination according to the terms of this Agreement shall not
affect any other right or remedy of either party.
13. LICENSING EXISTING GASIFICATION PLANTS AND STILL GAS PLANTS. If Texaco
or an Affiliate elects not to license Rentech Technology within the scope of
the Licensed Field (i) to any gasification facility in existence as of the
date of Deployment, or (ii) to process any Still Gas at a facility, Rentech,
notwithstanding the exclusive license within the Licensed Field granted to
Texaco by this Agreement, shall have the right, at its option, to license
Rentech Technology to said gasification facility or to said facility to
process Still Gas. Any license fees, royalties or other consideration in lieu
thereof that are paid for such a Rentech Technology license, work and
equipment shall be the sole property of Rentech.
14. APPRAISAL. If either Rentech or Texaco invoke any right they may have
under this Agreement to an appraisal of the Market Rate for royalties,
Rentech Catalyst Markup, the energy content of feedstock, or other issues
expressly subject to appraisal by the provisions of this Agreement
("Appraisal Issue"), the Appraisal Issue shall be resolved by appraisal
conducted in accordance with the provisions of this section. The Appraisal
Issue shall be determined by an independent appraisal conducted by Xxxxxx X.
Xxxxxx Consulting or any other firm with knowledge of Xxxxxxx-Tropsch
business issues in accordance with generally accepted appraising standards.
If the parties have not agreed upon the firm to serve as the appraiser within
thirty (30) days of a written request given by one to the other, the
appraisal firm shall be designated by the chief executive officer of the
Denver office of the American Arbitration Association from among the nominees
submitted to him by any one or both of the parties. Both parties shall
provide the appraiser with complete and detailed information in their
possession or knowledge about the
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subject matter of the appraisal , including full access to the records and
documentation within their control pertaining to any issue in question,
subject to a secrecy agreement binding the Appraiser similar to Exhibit A.
The costs of appraisal shall be borne equally by Rentech and Texaco. The
valuation determined by the appraisal shall be binding and conclusive-upon
the parties.
15. Miscellaneous
15.1 ASSIGNMENT. Except for assignment to an Affiliate, which accepts
all obligations and rights of the assignor as if it was an original signatory
to this Agreement, which may be done without consent, neither this Agreement
nor any of the rights and obligations of a party hereunder may be assigned by
any party without the prior written consent of the other party, which will
not be unreasonably withheld. It is reasonable for a party to withhold
consent for the reason that the proposed assignee is a competitor in the
licensing of Xxxxxxx-Tropsch technology.
15.2 ARBITRATION AND INJUNCTIVE RELIEF.
(a) PROCEDURE FOR ARBITRATION; JUDGMENT. Except as specified in
Section 15.2(b), any dispute, controversy or claim arising out of or relating
to this Agreement (including all Exhibits and Attachments), including its
interpretation or performance, that the parties are unable to resolve shall
be submitted to binding arbitration before a single arbitrator, in the sole
discretion of any party, by giving the other party written notice. The
arbitration shall be in accordance with the commercial rules of the American
Arbitration Association, which shall administer the arbitration and act as
appointing authority. The arbitration, including the rendering of the award,
shall take place in the city of Denver, Colorado, United States of America,
which shall be the exclusive forum for resolving such dispute, controversy or
claim. For the purpose of the arbitration, the provisions of this Agreement
and all rights and obligations hereunder shall be governed or construed in
accordance with the laws of the state of Colorado, United States of America,
without regard to the conflicts of law doctrine observed in Colorado. The
arbitration award shall be in writing and specify the factual and legal basis
for the award, and shall be accompanied by a reasoned opinion. The decision
of the arbitrator shall be final and binding upon the parties hereto, and the
expense of the arbitration (including without limitation the award of
attorneys' fees to the prevailing party) shall be paid as the arbitrator
determines. Each party hereby submits itself to the jurisdiction of the
courts of the place arbitration is held for the entry of judgment thereunder.
Notwithstanding this provision, judgment upon the award of the arbitration
may be entered in any court where the arbitration takes place or any court
having jurisdiction thereof, and application may be made to any court for a
judicial acceptance of the award and order of enforcement. If the parties
cannot agree on an arbitrator within thirty (30) days of receipt of notice of
arbitration, then either party may elect to have the arbitrator appointed by
the chief executive officer of the American Arbitration Association; provided,
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however, that the arbitrator shall be a licensed member of the U.S. patent
bar who is skilled in licensing agreements.
(b) JUDICIAL ACTION FOR SPECIFIC PERFORMANCE OR INJUNCTION.
Notwithstanding anything contained in the preceding section to the contrary,
each party shall have the right to institute judicial proceedings against the
other party or anyone acting by, through or under such other party in order
to enforce the instituting party's rights for injunctive relief.
15.3 GOVERNING LAW; JURISDICTION; VENUE.
The provisions of this Agreement and all rights and obligations
hereunder shall be governed and construed in accordance with the substantive
and procedural laws of the state of Colorado, United States of America,
without regard to the conflicts of law doctrine observed in Colorado. The
parties irrevocably submit to the jurisdiction of the courts of the state of
Colorado and of the United States of America for the District of Colorado for
these purposes; provided, however, that nothing herein shall preclude either
party, if it deems fit, from instituting proceedings for injunctive relief
against any other party or anyone acting by, through or under such other
party in any country or place which may have jurisdiction for the purpose of
protecting and enforcing the instituting party's rights either under this
Agreement or pursuant to any other agreements, documents, instruments or
rights. If the notice address of Section 15.11 is not a valid Colorado
address, the parties designate and appoint the Secretary of State of Colorado
as their agent for the service of process in Colorado and agree to consider
any legal process or any demand or notice made or served on said agent as
being made on it; provided, however, that the serving party shall within
twenty-four (24) hours of such service send to the other party a copy of the
documents so served, and such copies shall be sent by air courier to the
other party's address (as set out in Section 15.11 and a second known address
if the noticing party knows the address has changed). In the alternative,
service of process may be made by postage prepaid, certified or recorded
delivery air mail letter transmitted by either party to the other party at
the address for notices in Section 15.11 and a second known address if the
noticing party knows the address has changed. The foregoing, however, shall
not limit the right of either party to serve process in any other manner
permitted by law or to bring any proceeding to protect and enforce through
injunctive relief its rights either hereunder or pursuant to any other
agreements, documents, instruments or rights or to obtain execution or
judicial recognition of judgment of arbitration in any court of competent
jurisdiction. Each party hereby irrevocably waives any objection that it may
now or hereafter have to the laying of venue of any suit, action or
proceeding relating to this Agreement in the state of Colorado and further
irrevocably waives any claim that the state of Colorado is not a convenient
forum for any such suit, action or proceeding or to object to venue to the
extent of any proceeding brought in accordance with this section. Each party
stipulates that the state and federal courts located in the City and County
of Denver, Colorado shall have IN PERSONAM jurisdiction and venue over such
party for the purpose of
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obtaining execution of judicial recognition of judgment of arbitration
arising out of or related to this Agreement.
15.4 NO OTHER RELATIONSHIP. Nothing herein contained shall be deemed to
create an agency, joint venture, partnership, franchise or similar relation
between the parties hereto. Each party shall conduct all business in such
party's own name as an independent contractor. Neither party shall be liable
for the representations, acts, or omissions of the other party contrary to
the terms of this Agreement. Neither party has the right or power to act for
or on behalf of the other or to bind the other in any respect whatsoever,
other than as expressly provided for herein.
15.5 CONVERSION TO DOLLARS. If Rentech Royalties are stated in a
currency other than U.S. Dollars, such payment shall be converted into U.S.
Dollars using a rate determined by averaging the exchange selling rate quoted
by Telerate in the Wall Street Journal for the first and last business days
of each month.
15.6 DOLLAR TRANSACTION. To the extent this is an international
licensing transaction, the specification of U.S. Dollars and payment in
Denver, Colorado, United States of America, is of the essence. U.S. Dollars
shall be the currency in which all obligations between the parties are paid.
Except to the extent of possible Texaco offsets of Rentech Royalties and
Rentech Catalyst Markup, the payment obligations hereunder shall not be
discharged by an amount paid in another currency or in another place.
15.7 FEES PAYABLE. Rentech and Texaco acknowledge that there are no
broker's commissions, finder's fees or other like amounts payable with regard
to this transaction. Rentech and Texaco agree to indemnify and hold the other
harmless from and against all liability, claims, demands, damages or costs of
any kind arising from or connected with any broker's or finder's fee,
commission or charge claimed to be due any person arising from the
indemnitor's conduct with respect to this Agreement and the transactions
contemplated herein.
15.8 FORCE MAJEURE.
(a) NO LIABILITY FOR CERTAIN DELAYS OR DEFAULTS. Neither Rentech
nor Texaco shall be liable in damages, or have the right to terminate this
Agreement, for any delay or default in performing any obligation hereunder if
that failure or delay is due to any cause beyond the reasonable control and
without default or negligence of that party and it is making efforts in good
faith to comply with the terms of this Agreement; provided, however, in order
to excuse its delay or default hereunder, a party shall promptly notify the
other party of the occurrence or the cause specifying the nature and
particulars thereof and the expected duration thereof, and provided, further,
that such party shall promptly give notice to the other party specifying the
date of termination thereof. All obligations of both parties shall return to
being in full force and effect
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upon the termination of such occurrence or cause (including, without
limitations any payment that became due and payable hereunder prior to the
termination of such occurrence or cause). However, in the event that the
duration of such occurrence or cause extends beyond one year, the non-excused
party shall then have the right, by giving sixty (60) days prior written
notice to the other party, to terminate this Agreement unless the other party
shall substantially cure such occurrence or cause within said sixty (60) days.
(b) CAUSE BEYOND THE REASONABLE CONTROL. For the purposes of
this section, a "cause beyond the reasonable control" of a party shall mean
any act of any government or other authority or statutory undertaking, labor
walkout or work stoppage that compels termination of work; fire; explosion;
accident; power failure; failure of electric power supply; flood;
catastrophic hardware or software failure; riot or war (declared or
undeclared) that renders a party unable to proceed with performance or
continue, despite all reasonable commercial efforts to proceed or continue to
perform.
15.9 RIGHTS, POWERS, REMEDIES CUMULATIVE; WAIVER; TIME. Except for
binding arbitration and limitation of rights for legal action in Section
15.2, each and every power and remedy in this Agreement specifically given to
a party shall be cumulative and shall be in addition to every other right,
power and remedy herein or now or hereafter existing at law, in equity, or by
statute, and each and every right, power and remedy whether specifically
provided in this Agreement or otherwise existing may be exercised from time
to time and as often and in such order as may be deemed expedient by a party.
Failure by either party to enforce any provision of this Agreement shall not
be construed as a waiver of that provision. The acceptance by a party of any
payment shall not be deemed a waiver of any right to take advantage of any
future ground for termination or of any past ground for termination not
completely cured thereby, unless expressly waived in writing.
15. 10 TABLE OF CONTENTS AND HEADINGS. Any table of contents
accompanying this Agreement and any section headings contained herein are for
ease of reference only, do not constitute a part of this Agreement, and shall
not be employed in interpreting this Agreement.
15. 11 NOTICES. Any notice, payment, request, demand or other
communication hereunder shall be in writing and shall be deemed to have been
duly given (i) when delivered personally, upon personal delivery to the party
to be notified; or (ii) one business day after sending by facsimile
transmission with confirmation that the facsimile message was transmitted to
the party to be notified, or (iii) three (3) business days after sending by
registered or certified mail, postage paid, to the party to be notified; or
(iv) three (3) business days after sending by ordinary mail, postage paid, to
the party to be notified, at the address set forth below:
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Rentech, Inc. Texaco Natural Gas Inc.
0000 00xx Xx., Xxxxx 000 1111 Bagby
Denver, CO 80202 Xxxxxxx, XX 00000-0000
Facsimile: (000) 000-0000 Facsimile: (000) 000-0000
Either Rentech or Texaco may change its address, facsimile number or
representative to be notified by written notice to the other party given in
accordance with this section.
15.12 INTEGRATION. This Agreement, which includes Exhibits and
Attachments, represents the entire agreement of the parties with respect to
the subject matter herein contained and supersedes and cancels all prior
correspondence, conversations, negotiations, understandings and agreements
with respect to those subjects. This Agreement may not be modified orally,
but only by a writing signed by both parties.
15.13 CONSTRUCTION. This Agreement has been prepared, examined,
negotiated and revised by each party and their respective attorneys, and no
implication shall be drawn and no provision shall be construed against any
party to this Agreement by virtue of the purported identity of the drafter of
this Agreement, or any portion thereof.
15.14 INVALIDITY OF PROVISION. If any of the provisions of this
Agreement shall be held by a court or administrative agency of competent
jurisdiction to contravene the laws of any country, it is agreed that such
invalidity, illegality or unenforceability shall not invalidate the whole
Agreement, but this Agreement shall be construed as if it did not contain the
provision or provisions held to be invalid, illegal or unenforceable in the
particular jurisdiction concerned, and insofar as such construction does not
affect the substance of this Agreement and the rights and obligations of the
parties hereto, it shall be construed and enforced accordingly. In the event,
however, that such invalidity, illegality or unenforceability shall
substantially alter the relationship between the parties hereto, affecting
adversely the interest of either party, then the parties hereto shall
negotiate a mutually acceptable alternative provision not conflicting with
such laws.
15.15 FURTHER ASSURANCES. Each party shall execute and deliver all such
further documents and instruments and take all such further actions as may be
reasonably required or appropriate to carry out the intent and purposes of
this Agreement.
15.16 COUNTERPARTS. This Agreement may be executed in several
counterparts, and all counterparts so executed shall constitute but one and
the same agreement, which shall be binding on all the parties hereto
notwithstanding that less than all of the parties may have signed the same
original or the same counterpart.
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IN WITNESS WHEREOF, the parties have executed duplicate originals of
this Agreement by their duly authorized officers as of the date first
mentioned above.
RENTECH, INC. ATTEST:
By: (signature) (signature)
--------------------------------- ----------------------------
Xxxxxx X. Xxxxxxxx, President Xxxxxx X. Xxxx, Secretary
Date: 8 October 1998
TEXACO NATURAL GAS INC.
By: (signature)
---------------------------------
Name: Xxxxxx Xxxxxxxxx
Title: Executive Vice President
Date: October 6, 1998
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EXHIBIT A
SECRECY AGREEMENT
Xxxxxxx-Tropsch Technology
This AGREEMENT is effective the ____ day of ____________________, 19_,
by and between TEXACO NATURAL GAS INC., a Delaware corporation, having a
principal place of business at 0000 Xxxxx Xxxxxx, Xxxxxxx, Xxxxx 00000-0000
hereinafter referred to as "Texaco", and ________________________________,
having a principal place of business at
________________________________________________, hereinafter referred to as
"Company";
WHEREAS, Texaco has conducted substantial research and development work
with respect to Xxxxxxx-Tropsch technology, and has acquired by license from
third parties and has developed proprietary and confidential technical data
and information relating to the subject matter, identified above, methods,
apparatus, formulations and use thereof (hereinafter "Confidential
Information"); and
WHEREAS, Company is considering the licensing of Confidential
Information from Texaco or the furnishing of services to Texaco or its
licensees relating to Confidential Information;
NOW, THEREFORE, for and in consideration of the premises and of the
covenants hereinafter set forth, the parties hereto covenant and agree as
follows:
1. Texaco will furnish certain of its Confidential Information to
Company solely for the purpose of Company (a) performing evaluations to
determine whether or not to license technology from Texaco which will be
governed by another agreement, or (b) furnishing services to Texaco, its
affiliates or licensees.
2. Company agrees that it will:
(a) use the same care and discretion to avoid disclosure and
dissemination of Confidential Information it receives from Texaco, its
affiliates or licensees as it uses to protect its own confidential
information of a similar nature;
(b) use such Confidential Information so received from Texaco, its
affiliates or licensees solely for the above stated purpose; and
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(c) make no commercial or other use of such Confidential Information
received from Texaco, its affiliates or licensees without first obtaining
prior written approval therefor from the party furnishing the Confidential
Information.
3. The foregoing restrictions shall not apply to any Confidential
Information that:
(a) is or becomes public information or otherwise becomes generally
available to the public through no act or fault of Company;
(b) is, prior to disclosure hereunder, already in the possession of
Company and was not received by it directly or indirectly from Texaco, its
affiliates or licensees;
(c) is hereafter rightly received by Company from a third party who
did not receive the same directly or indirectly from Texaco, its affiliates
or licensees; or
(d) is independently developed by employees of Company without access
to the received Confidential Information.
Specific information shall not be deemed to be within the exceptions of
the preceding sentence merely because it is embraced by more general
information within such exceptions, nor shall a combination of features be
deemed to be within such exceptions merely because the individual features
are within such exceptions.
4. Supplying of Confidential Information hereunder shall not be
considered to provide any license or proprietary rights, including any
implied patent license.
5. Company shall limit access to disclosed Confidential Information
to those of its employees and employees of its parent and subsidiary
companies reasonably requiring the same for the purpose aforesaid and advise
each such employee of the existence and importance of the confidentiality
provisions of this Secrecy Agreement, and ensure by appropriate measures that
such employees hold Texaco's Confidential Information in strict confidence
according to this Agreement. Company shall notify Texaco promptly upon
discovery of any unauthorized use or disclosure of Texaco's Confidential
Information.
6. Company may disclose Confidential Information to the extent
required by law if it gives prompt written notice to Texaco and makes a
reasonable effort to obtain a protective order or substitute therefor.
Company shall also aid (or at a minimum not oppose) a motion or similar
request by Texaco for an order protecting the confidentiality of such
Confidential Information, including joining or agreeing to (or nonopposition
to) a motion for leave to intervene by Texaco.
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7. Confidential Information may be disclosed to Company not only in
writing or other tangible form but in part through discussions between
respective technical representatives, demonstrations, observations and other
tangible methods including possible visits to the facilities of Texaco.
8. All Confidential Information is disclosed on an "as is" basis. Use
of such Confidential Information is at Company's own risk. Texaco will not be
liable for any damages arising out of evaluation or use of disclosed
Confidential Information.
9. The obligations of restricted use and non-disclosure will extent
for a term of ten (10) years from the effective date of the Agreement noted
on page 1.
10. THIS SECRECY AGREEMENT SHALL BE CONSTRUED AND THE LEGAL RELATIONS
BETWEEN THE PARTIES SHALL BE DETERMINED IN ACCORDANCE WITH THE SUBSTANTIVE
AND PROCEDURAL LAWS OF THE STATE OF NEW YORK, WITHOUT REGARD TO CONFLICT OF
LAW PROVISIONS THERE OF.
TEXACO NATURAL GAS INC.
By
--------------------------------
Name
--------------------------------
Title
--------------------------------
Date
--------------------------------
--------------------------------
By
--------------------------------
Name
--------------------------------
Title
--------------------------------
Date
--------------------------------
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EXHIBIT B
AFFILIATE'S ACCEPTANCE
This Agreement is entered into this ____ day of _______________, 1998 by
___________________________________, a _______________ corporation having an
address of _______________________________________________________
("Accepting Party").
WHEREAS, Accepting Party is an"Affiliate" of Texaco Natural Gas Inc.
("Texaco"), a Delaware corporation, as that term is defined in the License
Agreement dated _______________, 1998 ("License Agreement") by and between
Rentech, Inc. and Texaco.
WHEREAS, Rentech, Inc. has granted a certain license to Texaco and its
Affiliates by the License Agreement, and an Affiliate license grant is
effective upon Texaco's delivery to Rentech, Inc. of the Affiliate's written
and signed acceptance of this Exhibit B.
WHEREAS, the Accepting Party desires to receive the benefits of the
license grant along with the obligations of the License Agreement.
THEREFORE, for and in consideration of the premises and mutual covenants
herein contained, the Accepting Party agrees with Rentech, Inc. as follows:
1. ACCEPTANCE OF LICENSE OBLIGATIONS. Accepting Party acknowledges
having, received from Texaco a complete copy of the License Agreement.
Accepting Party agrees to accept, be bound by, and be subject to all
conditions and obligations set forth in the License Agreement that apply to
Texaco, except those provisions relating to the obligations Texaco has for
the actions, inactions, liabilities and royalties of its Affiliates and
sublicensees practicing Rentech Technology, such as provisions concerning
Affiliates and sublicensees included within Sections 2.4, 3, 4, 6 and 7, as
if Accepting Party had signed and entered into the License Agreement directly
with Rentech, Inc. without the exception provisions described above.
Accepting Party accepts responsibility and liability for its own action and
inaction, but not for the action or inaction of Affiliates or sublicensees.
2. ACKNOWLEDGMENT BY ACCEPTING PARTY. Accepting Party acknowledges
and agrees that it has no right to, and will not, further sublicense or
extend the license granted by the terms of the License Agreement to any
Person, including another Affiliate of Texaco, as those terms are defined in
the License Agreement.
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Executed by the Accepting Party as of the date previously given.
Accepting Party:
--------------------------------
By:
--------------------------------
Authorized Officer
Name:
--------------------------------
Title:
--------------------------------
Date:
--------------------------------
Receipt acknowledged as of _______________, 19__ by
RENTECH, INC.
By
--------------------------------
Authorized Officer
Name:
------------------------------
Title:
-----------------------------
Date:
------------------------------
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EXHIBIT C
INDEPENDENT CONTRACTOR AGREEMENT
This Exhibit C is between TEXACO NATURAL GAS INC. (hereinafter referred to as
"Texaco") having an office and place of business at 0000 Xxxxx, Xxxxxxx,
Xxxxx 00000-0000 and RENTECH, INC. (hereinafter referred to as "Rentech"
having an office and place of business at 0000 00xx Xxxxxx, Xxxxx 000,
Xxxxxx, Xxxxxxxx 00000. The Effective Date of this Exhibit C is defined in
Section 2.7 of the License Agreement.
WHEREAS, Rentech is in the business of licensing its patented and proprietary
synthesis gas to liquids process incorporating Xxxxxxx-Tropsch technology; and
WHEREAS, Texaco desires to have Rentech furnish one of its employees Xxxxxxx
X. Xxxxxx to provide services as described in Attachment 1.
NOW, THEREFORE, for and in consideration of the mutual covenants herein
contained, the parties agree as follows:
1. NOT ASSIGNABLE
Rentech shall not assign this Exhibit C to any other party without prior
written consent by Texaco.
2. NOT EXCLUSIVE
It is understood that Texaco does not bind itself to use Rentech's services
exclusively for work required by Texaco of the nature listed herein, nor is
Rentech bound hereby to perform such services for Texaco exclusively during
or beyond the term of this Exhibit C.
3. INDEPENDENT CONTRACTOR
Texaco and Rentech expressly agree that Rentech is performing the services
described herein as an independent contractor and not as an agent or employee
of Texaco; and that Texaco has no right to control the manner or details of
how Rentech performs the work called for hereunder. Texaco does not set hours
of work for Rentech. Rentech will provide its own working materials. Rentech
is responsible for hiring, supervising, and paying its own employees. No
employee of Texaco will be employed by the Rentech under this Exhibit C.
4. COMPENSATION
Rentech shall be compensated as specified in Attachment 1 which is attached
hereto and incorporated herein by reference.
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5. COMPLIANCE WITH LAW
Rentech accepts full and exclusive responsibility and liability for payment
of unemployment insurance. old age pension, annuities, retirement, and other
benefits imposed by law, and measured by wages, salaries, or other
remuneration paid or payable by Rentech to employees of Rentech engaged in
the services or related activities, or by voluntary or contractual benefit
plans between Rentech and its employees which require contributions by
Rentech and agrees that each subcontractor who performs any part of the
services accepts the same responsibility and liability with respect to
employees of that subcontractor.
During the performance of this Exhibit C, Rentech will be in full compliance
with Executive Orders 11246 (as amended by 11375), 11701, 11625, 11758, 12138
and the provisions of 15 USC Section 637, and with the regulations, rules and
orders issued thereunder, to the extent such requirements are applicable to
Rentech. Rentech must certify its compliance by signing the Certificate
attached as Attachment 2 to Exhibit C which is hereby incorporated into this
Exhibit C by reference.
6. TAXATION
Rentech shall be responsible for the timely reporting and payment to the
proper taxing authorities of all federal, state, and local taxes applicable
to the amounts paid to Rentech by Texaco. Rentech further agrees to indemnify
and save Texaco harmless against all claims and taxes (including interest,
penalties, and any other costs which are claimed or assessed against Texaco
and are attributable to this Exhibit C or the payments made hereunder).
Rentech expressly agrees that the sole compensation under this Exhibit C will
be the sum paid for the specific services rendered, that Rentech's employees
will not be entitled by virtue of this Exhibit C to participate in any of the
benefit plans available to Texaco employees, and that Rentech hereby waives
and releases all rights to any such participation, provided however, that any
rights or benefits that Rentech's employees may have under such benefit plans
by virtue of formerly having been an employee of Texaco (if he/she has any
such rights or benefits) shall not be affected hereby. Rentech is responsible
for providing any insurance necessary in conjunction with this Exhibit C and
recognizes that Texaco shall carry no insurance of any type whatsoever under
this Exhibit C.
7. INDEMNITY AND HOLD HARMLESS PROVISION EACH PARTY AGREES TO INDEMNIFY AND
HOLD HARMLESS THE OTHER PARTY, ITS AFFILIATES, AND THEIR OFFICERS, DIRECTORS,
EMPLOYEES AND AGENTS FROM AND AGAINST THE FULL AMOUNT OF ANY AND ALL CLAIMS,
DEMANDS, ACTIONS, DAMAGES, LOSSES, COSTS, EXPENSES, OR LIABILITY WHATSOEVER
(INCLUDING WITHOUT LIMITATION THE COSTS OF LITIGATION, INCLUDING REASONABLE
ATTORNEYS' FEES) ("DAMAGES"), FOR PROPERTY (REAL AND PERSONAL) DAMAGE,
PERSONAL INJURY OR DEATH, FINES, OR PENALTIES ARISING IN WHOLE OR IN PART OUT
OF THE SERVICES PERFORMED FOR TEXACO UNDER THIS EXHIBIT C, TO THE EXTENT SUCH
DAMAGES RESULT FROM THE NEGLIGENT OR WILLFUL ACTIONS OR INACTIONS OF THE
INDEMNIFYING PARTY AND ITS EMPLOYEES, CONTRACTORS, OR REPRESENTATIVES. IN THE
EVENT OF A CONFLICT BETWEEN THIS SECTION 7 AND THE LICENSE AGREEMENT SECTIONS
9.4 AND 9.5, SECTIONS 9.4 AND 9.5 SHALL GOVERN AND CONTROL.
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8. CONFIDENTIALITY
Except as to Rentech's ownership of Rentech Technology, Rentech understands
and agrees that all of the data and information submitted to it by Texaco and
that all work product of Xxxxxxx X. Xxxxxx, including studies, data and
information produced while performing obligations under this Exhibit C and
any and all inventions and improvements of Xxxxxxx X. Xxxxxx relating to the
subject area of Section 2(a) of Exhibit D, whether patentable or not, are the
sole property of Texaco and are confidential and proprietary to Texaco.
Improvements shall not include the scale-up of Rentech Technology, including
Rentech Patent and Copyright Rights and Rentech Technical Information, or any
part thereof. Rentech agrees to follow the obligations of Section 8 of the
License Agreement with Texaco executed concurrently with this Agreement, and
further to not disclose, license or use in any way any Texaco Confidential
Information of which it becomes aware through Xxxxxxx X. Xxxxxx outside of
Catalyst Improvement Areas as that term is defined in said License Agreement
between the parties. Rentech further agrees that Xxxxxxx X. Xxxxxx shall
execute the Secrecy Agreement attached to the License Agreement between the
parties as Exhibit D. The provisions of this paragraph 8 shall survive the
termination or expiration of this Exhibit C according to Section 8 of the
License Agreement.
9. INTELLECTUAL PROPERTY
This Exhibit C is related to the subject matter of the License Agreement
executed concurrently between Rentech and Texaco. It is the intention of the
parties to this Exhibit C that all inventions and improvements related to the
subject matter of Section 2(a) of Exhibit D made solely or jointly by Xxxxxxx
X. Xxxxxx during the term of this Exhibit C and for six (6) months after
termination, whether patentable or not, whether or not made on time working
for Texaco, are to be solely titled in Texaco. Rentech hereby assigns title
to such inventions and improvements made by Xxxxxxx X. Xxxxxx during the
effective term of this Exhibit C and for six (6) months thereafter to Texaco
Natural Gas Inc. Rentech will also, at no expense to Rentech, execute and
deliver all papers deemed proper and necessary by Texaco in connection with
patent preparation and prosecution, and assist Texaco to obtain and sustain
patent, copyright and trade secret protections.
10. SUBSTANCE ABUSE PROGRAM
As a condition of having access to Texaco's premises, and subject to
applicable law, Rentech agrees that:
a. Rentech's employees shall be subject to rules of conduct
relating to substance abuse which prohibit:
(1) the manufacture, sale, purchase, transfer, use or
possession of illegal drugs, narcotics or other unlawful
substances or materials on Texaco's premises, or while
conducting business for Texaco; and
(2) the manufacture, sale, purchase, transfer, use or
possession on Texaco's premises of substances or materials not
authorized by Texaco
-40-
(such as firearms, weapons, intoxicating beverages, drug
paraphernalia, or medically authorized drugs used improperly or
unsafely).
b. Any employee of Rentech who has violated any of the rules of
conduct in a., above, shall be removed from Texaco's premises and
shall not be allowed to reenter such premises without Texaco's
permission.
c. Rentech's employees shall be subject to searches of their
persons and personal effects when entering Texaco's premises, while
on Texaco's premises, and when leaving Texaco's premises. Such
searches shall be conducted by Texaco or by a third party, at
Texaco's direction, without prior announcement and at such times
and locations as Texaco in its sole discretion may determine.
d. Texaco reserves the right to conduct or have conducted
unannounced drug testing of employees of Rentech while they are
performing services on Texaco's premises, to the extent permitted by
applicable law.
e. Rentech shall be responsible for advising and discussing with
any unions representing Contractor's employees, the application to
such employees of the conditions described in 10 a., b., c., and d.,
above.
f. Rentech shall be responsible for including in any subcontract
for work to be performed on Texaco's premises the requirements and
conditions described in 10 a., b., c., d., and e., above, so that
such requirements and conditions will be binding upon each of
Rentech's subcontractors.
11. INSURANCE
Rentech shall maintain, at its sole cost, at all times while performing
services, the insurance coverage set forth below. Before commencing services,
Rentech shall provide a certificate evidencing the coverage and naming Texaco
an additional insured. The certificate shall provide that any change
restricting or reducing coverage or the cancellation of any policies under
which certificates are issued shall not be valid with respect to Texaco until
Texaco has received thirty (30) days notice in writing of such change or
cancellation:
a. Workers' Compensation Insurance as required by laws and
regulations applicable to and covering employees of Rentech engaged in the
performance of services under this Agreement.
b. EMPLOYER'S LIABILITY INSURANCE protecting Contractor against
common law liability, in the absence of statutory liability, for employee
bodily injury arising out of the masterservant relationship with a limit of
not less than One Million Dollars ($1,000,000).
c. AUTOMOBILE LIABILITY INSURANCE including non-owned and hired
vehicle coverage with limits of liability of not less than One Million
Dollars ($ 1,000,000), such policy shall be endorsed with an MCS-90
endorsement as determined by services provided.
-41-
Each policy shall be endorsed to provide waiver of subrogation rights in
favor of Texaco, its subsidiaries and affiliates, and all other parties
owning an interest in the property on which services covered by this Exhibit
C are to be performed.
Failure of the Contractor to keep the required insurance policies in full
force and effect during the performance of services covered by this Exhibit C
and during any extensions, extra or additional services agreed to by the
Contractor and Texaco shall constitute a breach of this Exhibit C and Texaco
shall have the right, in addition to any other rights, to withhold payment
under this Exhibit C without penalty arid/or immediately terminate this
Exhibit C without further cost to Texaco.
12. EQUIPMENT
All equipment furnished to Rentech by Texaco shall be used by Rentech for
only Texaco business, unless otherwise authorized by Texaco in writing. All
right, title and interest in the equipment shall remain at all times in
Texaco. Upon the termination of this Exhibit C, all such equipment shall be
returned to Texaco by Rentech, in the same condition in which it was
received, reasonable wear and tear excepted.
13. TERMINATION OF AGREEMENT
Texaco shall have the right to terminate this Exhibit C upon thirty (30) days
notice effective at the one (1) year anniversary of the Effective Date.
Thereafter Texaco shall have the right to terminate this Exhibit C upon
thirty (30) days notice and the payment of three (3) months severance pay.
This Exhibit C shall not extend, in any event, for more than two (2) years
from the Effective Date. Upon termination of the License Agreement between
the parties that is executed as of the date hereof, this Exhibit C shall
automatically terminate at the same time. Texaco shall have no obligation of
severance pay if this Exhibit C or the License Agreement is terminated due to
a Rentech material breach.
The obligations to pay money due and owing and Sections 5, 6, 7, 8 and 9
shall survive the termination or expiration of this Agreement.
14. CHOICE OF LAW AND MERGER CLAUSE
This Exhibit C shall be subject to and construed in accordance with the laws
of the State of Colorado and sets forth the entire Agreement between the
parties hereto with respect to the employment of Rentech as an independent
contractor for Texaco. Except for the License Agreement and all Exhibits and
Attachments, this Exhibit C supersedes and cancels all
-42-
previous understandings, negotiations, commitments, and representations with
respect hereto, and such Exhibit C may not be changed or modified orally but
only by a writing signed by both parties hereto.
TEXACO NATURAL GAS INC.
By (signature)
--------------------------------
Name Xxxxxx Xxxxxxxxx
Title Executive Vice President
Date October 6, 1998
RENTECH, INC.
By (signature)
--------------------------------
Name Xxxxxx X. Xxxxxxxx
Title President
Date 8 October 1998
-43-
ATTACHMENT 1 TO EXHIBIT C
*This page 44 and the material appearing on this page is entirely omitted and
filed separately.
-44-
*This page 45 and the material appearing on this page is entirely omitted and
filed separately.
-45-
ATTACHMENT 2 TO EXHIBIT C
EQUAL EMPLOYMENT OPPORTUNITY
During the performance of the contract described above, Contractor agrees to
the following, additional terms and conditions to the extent they may be
applicable to the work to be performed under such contract in accordance with
the provisions of the following described Executive Orders, Acts, and
implementing rules and regulations issued thereunder.
A. E.O. 1 1246. as amended by E.O.1 1375 (Race, Color, Religion, Sex and
National Origin).
1. If the contract is in excess of Ten Thousand dollars ($10,000),
the Contractor agrees to comply with the provisions of Section 202 of
such Order (the "Equal Opportunity Clause"), which clause is
incorporated herein by reference pursuant to the regulations
promulgated under such Order (41 C.F.R. See. 601.4(d)).
2. If the contract is in excess of Ten Thousand Dollars ($10,000),
the Contractor certifies that it does not maintain or provide, nor
will it maintain or provide for its employees any segregated
facilities at any of its establishments, and that it does not permit
nor will it permit its employees to perform their services at any
location, under its control, where segregated facilities are
maintained.* Contractor agrees that a breach of this certification is
a violation of the Equal Opportunity Clause of Executive Order 11246.
Contractor further agrees that (except where it has obtained
identical certifications from proposed subcontractors for specific
time periods) it will obtain identical certifications from proposed
subcontractors prior to the award of subcontractors exceeding Ten
Thousand Dollars ($10,000) which are not exempt from the provisions
of the Equal Opportunity Clause; that it will retain such
certifications in its files; and that it will forward the prescribed
notice to such proposed subcontractors (except where the proposed
subcontractors have submitted identical certifications for specific
time periods).**
-------------------------
* As used in this certification, the "segregated facilities" means any
waiting rooms, work areas, rest room and wash rooms, restaurants and other
eating areas, time clocks, locker rooms and other storage or dressing areas,
parking lots, drinking fountains, recreation or entertainment areas,
transportation and housing facilities provided for employees which are
segregated by explicit directive or are in fact segregated on the basis of
race, creed, color or national origin because of habit, local custom or
otherwise.
** The form of the prescribed notice is as follows: NOTICE TO PROSPECTIVE
SUBCONTRACTORS OF REQUIREMENT FOR CERTIFICATIONS OF NONSEGREGATED FACILITIES.
A Certificate of Nonsegregated facilities as required by the May 9, 1967
order on Elimination of Segregated Facilities, by the Secretary of Labor (32
Fed. Reg. 7439, May 19, 1967), must be submitted prior to the award of a
subcontract exceeding $10, 000 which is not exempt from the provisions of the
Equal Opportunity Clause. The certification may be submitted either for each
subcontract or for all subcontracts during a period (i.e. quarterly,
semiannually or annually). Note: The penalty for making false statements in
offers is prescribed in 18 U.S.C. Section 1001.
-46-
3. If the contract is in excess of Fifty Thousand Dollars
($50,000) and the Contractor has more than 50 employees, the
Contractor agrees (a) to file annually, on or before March 31 of each
year, (or within thirty (30) days after the award of such contract if
not filed within twelve (12) months preceding the date of the award),
complete and accurate reports on Standard Form 100 (EEO-1) with the
appropriate governmental agency, in accordance with the regulations
issued by the Secretary of Labor (41 C.F.R. Sec. 60-1.7), and (b) to
develop a written affirmative action compliance program for each of
its establishments in accordance with the regulations issued by the
Secretary of Labor (41 C.F.R. Sec. 60-1.40).
B. E.O. 11701 (Section 4.02-Veterans Readjustment Act of 1974)
If the contract is in excess of Ten Thousand Dollars ($10,000), the
Contractor agrees to comply with the affirmative action clause and
regulations promulgated under such Order (41 C.F.R. Sec. 60-250) which
clause is incorporated herein by reference pursuant to Section 60-250.22 of
such regulations.
C. E.O. 11758 (Section 503 -Rehabilitation Act of 1973)
If the contract is in excess of Two Thousand Five Hundred Dollars ($2,500),
the Contractor agrees to comply with the affirmative action clause and the
regulations promulgated under such Order (41 C.F.R. Sec. 6-741), which
clause is incorporated herein by reference pursuant to Section 60-741.22 of
such regulations.
D. PUBLIC LAW 95-507. SECTION 211. 15 U.S.C. SEC. 637 (Small Businesses and
Small Socially and Economically Disadvantaged Businesses).
1. If the contract is in excess of Ten Thousand Dollars
($10,000), the Contractor agrees to use its best efforts to provide
small business concerns and small business concerns owned and
controlled by socially and economically disadvantaged individuals,
with the maximum practicable opportunity to participate in the
performance of such contract to the fullest extent consistent with
the efficient performance thereof, and in accordance with the
statutes and regulations promulgated thereunder which are herein
incorporated by reference.
2. Negotiated and Sealed Bid Contracts. If the contract is
in excess of Five Hundred Thousand Dollars ($500,000), the Contractor
agrees to comply with the small business and small disadvantaged
business subcontracting plan as set forth in the statute and any
regulations promulgated thereunder, which are incorporated herein by
reference.
E. E.O. 12138 AS AMENDED BY E.O. 2608 (Women's Business Enterprises Program).
If the contract is in excess of Ten Thousand Dollars ($10,000), the
Contractor agrees to use its best efforts to provide women-owned
business, with the maximum practicable opportunity to participate in
the performance of such
-47-
contract to the fullest extent consistent with the efficient
performance thereof, in accordance with the regulations and Executive
Orders promulgated thereunder and which are herein incorporated by
reference.
ACCEPTED THIS 8th DAY OF OCTOBER, 1998.
RENTECH, INC.
(signature)
---------------------------------------------
SIGNATURE OF AUTHORIZED REPRESENTATIVE
Xxxxxx X. Xxxxxxxx
---------------------------------------------
PRINTED NAME OF AUTHORIZED REPRESENTATIVE
President
---------------------------------------------
TITLE OF AUTHORIZED REPRESENTATIVE
Please indicate by check xxxx if you are:
Minority Business Enterprise
------------
Small Business Concern X
Small Business Concern Owned and Controlled ------------
By Socially and Economically ------------
Disadvantaged Individuals
Women-owned Business Concern
------------
Return To:
Texaco Natural Gas Inc.
0000 Xxxxx
Xxxxxxx, XX 00000-0000
-48-
EXHIBIT D
AGREEMENT FOR SECRECY AND ASSIGNMENT OF INVENTIONS
*
This AGREEMENT is between TEXACO NATURAL GAS INC., a Delaware
corporation, having a principal place of business at 0000 Xxxxx, Xxxxxxx,
Xxxxx 00000, hereinafter referred to as " Texaco", *
and RENTECH, INC., a Colorado corporation, having an office
and place of business at 0000 00xx Xxxxxx, Xxxxx 000, Xxxxxx, Xxxxxxxx 00000.
The Effective Date of this Exhibit D Agreement is defined in Section 2.7 of
the License Aareement.
WHEREAS, Texaco and Rentech, Inc. are entering into a licensing and
development agreement for gas to liquids technology owned by * Rentech.
*
WHEREAS, it is important for inventions and improvements * to be
assigned to Texaco under the overall agreement, *
(hereinafter "Technical Information"), and for certain proprietary and
confidential technical data and information of Texaco and third parties
relating to gas to liquids, their methods, apparatus, formulations and use
thereof (hereinafter also "Technical Information") to be disclosed to *
NOW, THEREFORE, for and in consideration of the premises and of the
covenants hereinafter set forth, including the employment of *
under the Contractor Agreement, the parties hereto covenant and agree as
follows:
1 . Texaco will furnish certain of its Technical Information to *
solely for the purpose of * using the Technical Information to
fulfill his and Rentech's duties under the Contractor Agreement.
2. * agrees that he will:
(a) use reasonable care and discretion to avoid disclosure and
dissemination to any Person, including Rentech, of Technical Information he
(i) receives from Texaco, (ii) he develops during his work under the
Contractor Agreement, and (iii) embodied in sole or joint *
inventions and improvements which relate to the subject area of synthesis gas
to liquids technology; such as incorporating and improving Rentech Technology
in the Licensed Field; integrating Rentech Technology with the Texaco
Gasification Process, both as defined in the License Agreement entered into
concurrently between Texaco and Rentech and which incorporates
Xxxxxxx-Tropsch technology with a slurry reaction bed and an iron-based
catalyst; the production of hydrocarbons through the Xxxxxxx-Tropsch
reaction; catalyst formulation;
*Omitted material filed separately.
-49-
manufacturing; separation; process design and control; reactor design and
manufacturing; synthesis gas feedstocks; by-products; products; waste
streams; recycling; and environmental treatments;
(b) use such Technical Information solely for the above stated
purpose;
(c) make no commercial or other use of such Technical
Information without first obtaining prior written approval therefor from
Texaco.
3. * may disclose Technical Information to Rentech if such
is specifically developed by Texaco, its Affiliates or their sublicensees *
to improve Rentech Technology in the specific areas of iron catalyst
formulation, iron catalyst manufacturing, and iron catalyst separation. Such
disclosure to Rentech will be considered to be a disclosure to Rentech as a
receiving party from Texaco as a disclosing party under Section 8 of the
License Agreement between Texaco and Rentech;
4. The foregoing restrictions of Section 2 shall not apply to any
Technical Information that may be shown by written evidence:
(a) is or becomes public information or otherwise becomes
generally available to the public through no act or fault of *
Rentech;
(b) is, prior to disclosure by Texaco or sole or joint
development by * hereunder, already in the possession of *
Rentech and was not received by them directly or indirectly from Texaco or
its Affiliates thereof; or
(c) is hereafter rightly received by * Rentech
from a third party who did not receive the same directly or indirectly from
Texaco or its Affiliates.
Specific information shall not be deemed to be within the
exceptions of the preceding sentence merely because it is embraced by more
general information within such exceptions, nor shall a combination of
features be deemed to be within such exceptions merely because the individual
features are within such exceptions.
5. Supplying of Technical Information * or development
of inventions or improvements * within the scope of the
Section 2(a) subject matter shall not be considered to provide any license or
proprietary rights to * Rentech, including any implied patent
license or technical information license.
6. The obligations of restricted use and non-disclosure will extend
for a term of * years from the date of disclosure to or
development by * .
7. * will make a prompt written communication to Texaco
detailing the important features of the conception of any new and useful art,
machine, manufacture, composition of matter, or any new and useful
improvements thereof relating to the subject matter of Section 2(a), whether
patentable or not, which * solely or jointly conceives or develops
during the term of up to two (2) years (See Section 13) of the Exhibit C
Independent Contractor Agreement and six (6) months thereafter.
*Omitted material filed separately.
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8. * hereby assigns his entire right, title and interest in
and to any and all of such conceptions or improvements described in Section 7
above and any applications for patents thereon, whether domestic or foreign,
to Texaco, or its designee, and will, when requested by Texaco and at no
expense to * , execute and deliver all papers deemed proper and
necessary by Texaco in connection with the preparation, assignment, filing
and prosecution of applications for patent covering such conceptions and will
make all rightful oaths useful to Texaco in obtaining, perfecting or
enforcing such patents. * will at no expense to himself assist Texaco
in every lawful way to obtain and sustain patent, copyright and trade secret
protections, all for the benefit of Texaco, as and when requested by Texaco.
9. All of the covenants herein contained shall inure to the benefit
of the Company, its successors, assigns or designees.
10. THIS AGREEMENT (EXHIBIT D) SHALL BE CONSTRUED AND THE LEGAL
RELATIONS BETWEEN THE PARTIES SHALL BE DETERMINED IN ACCORDANCE WITH THE
SUBSTANTIVE AND PROCEDURAL LAWS OF THE STATE OF COLORADO, WITHOUT REGARD TO
CONFLICT OFF LAW PROVISIONS THEREOF. THIS AGREEMENT (EXHIBIT D) SHALL ALSO BE
SUBJECT TO THE BINDING ARBITRATION PROVISIONS OF AND LIMITATION OF RIGHTS FOR
LEGAL ACTION SET FORTH IN SECTION 15.2 OF THE LICENSE AGREEMENT.
*Omitted material filed separately.
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11. This Exhibit D may not be assigned by * Rentech
without the prior written consent of Texaco.
TEXACO NATURAL GAS INC.
By: (signature)
--------------------------------
Name: Xxxxxx Xxxxxxxxx
Title: Executive Vice President
Date: October 6, 1998
RENTECH, INC.
By: (signature)
--------------------------------
Name: Xxxxxx X. Xxxxxxxx
Title: President
Date: 8 October 1998
*
*
*
*Omitted material filed separately.
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