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EXHIBIT 10.3
AGREEMENT
This Agreement dated May 24, 2000 is made by and among Xxxxxx
X. Xxxxxxxx ("Xxxxxxxx"), GP Strategies Corporation, a Delaware corporation ("GP
Strategies"), and Millennium Cell Inc., a Delaware corporation (f/k/a Millennium
Cell LLC and hereinafter the "Company").
WHEREAS, Xxxxxxxx and GP Strategies, f/k/a National Patent
Development Corporation, entered into a License Agreement dated July 31, 1997
(the "License Agreement") pursuant to which, inter alia, Xxxxxxxx granted GP
Strategies an exclusive worldwide license to use and develop the invention
relating to United States Letters Patent No. 5,804,329 (f/k/a U.S. Application
Serial No. 08/579,781) including any improvements or modifications thereto
(hereinafter "Covered Technology");
WHEREAS, GP Strategies and the Company, with the consent of
Xxxxxxxx, entered into an agreement dated December 17, 1998 styled "Assignment
and Assumption of License Agreement," whereby the Company acquired all rights
and obligations of GP Strategies relating to the License Agreement in
consideration for certain royalty payments; and
WHEREAS, each party to this Agreement represents and warrants
that he or it has the full and unencumbered right and authority to enter into
this Agreement;
NOW, THEREFORE, in consideration of the foregoing premises and
for other good and valuable consideration, the receipt and sufficiency of which
is hereby acknowledged, the parties agree as follows:
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1. License Agreement
Xxxxxxxx and the Company hereby agree that, as of the date of
this Agreement, the License Agreement is hereby terminated. Xxxxxxxx agrees to
execute as of the date hereof the Assignment, attached hereto as Appendix A,
whereby all right, title and interest in and to "Covered Technology" is and is
hereby assigned from Xxxxxxxx to the Company, including the right to xxx for any
past infringement of said "Covered Technology." In consideration for the
foregoing Assignment, the Company agrees to issue 206,897 options in the Company
("Options") with an exercise price of $2.90 per share to Xxxxxxxx; and Xxxxxxxx
agrees that the Company is fully, forever, irrevocably and unconditionally
discharged and released from all past, present and future claims, obligations,
duties, promises, agreements and liabilities to make royalty payments of any
kind relating to "Covered Technology."
2. Assignment and Assumption of License Agreement
GP Strategies and the Company hereby agree that the Assignment
and Assumption of License Agreement is terminated concurrently with the
termination of the License Agreement. In consideration for terminating the
Assignment and Assumption of License Agreement, the Company agrees to issue to
GP Strategies 250,000 Options in the Company with an exercise price equal to the
price of the common stock of the Company at its initial public offering. GP
Strategies agrees that the Company is fully, forever, irrevocably and
unconditionally discharged and released from all past, present and future
claims, obligations, duties, promises, agreements and liabilities to make
royalty payments of any kind relating to the Assignment and Assumption
Agreement.
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3. Representations by and Covenants of Xxxxxxxx and GP
Strategies
(a) Each of Xxxxxxxx and GP Strategies acknowledges that the
Company is a private corporation which intends to file a registration statement
(the "Registration Statement") for its initial public offering on Form S-1 with
the Securities and Exchange Commission ("SEC") pursuant to the registration
requirements of the Securities Act of 1933, as amended (the "Act").
(b) Each of Xxxxxxxx and GP Strategies recognizes that the
acceptance of the Options involves a high degree of risk in that (i) the Company
will need additional capital but has no assurance of additional necessary
capital; (ii) an investment in the Company is highly speculative and only
investors who can afford the loss of their entire investment should consider
investing in the Company and Options; (iii) an investor may not be able to
liquidate his investment; (iv) transferability of the securities comprising the
Options is extremely limited; and (v) an investor could sustain the loss of his
entire investment, as well as other risks, as more fully set forth herein and in
the Offering Documents (as hereinafter defined).
(c) Each of Xxxxxxxx and GP Strategies represents that he or
it is able to bear the economic risk of an investment in the Options and can
afford the loss of his or its entire investment.
(d) Each of Xxxxxxxx and GP Strategies acknowledges that he or
it has prior investment experience, including investments in non-listed and
non-registered securities, or he or it has employed the services of an
investment advisor, attorney or accountant to read all of the documents
furnished or made available by the Company both to him and to all other
prospective investors in the Options and to evaluate the merits and risks of
such an
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investment on his or its behalf, and that he or it recognizes the highly
speculative nature of this investment.
(e) Each of Xxxxxxxx and GP Strategies acknowledges receipt
and careful review of a draft of the Registration Statement (draft dated April
7, 2000) and the attachments thereto (the "Offering Documents") and hereby
represents that he or it has been furnished by the Company during the course of
this transaction with all information regarding the Company which he or it had
requested or desired to know; that all documents which could be reasonably
provided have been made available for his or its inspection and review; that he
or it has been afforded the opportunity to ask questions of and receive answers
from duly authorized officers or other representatives of the Company concerning
the terms and conditions of the Offering, and any additional information which
he or it had requested.
(f) Each of Xxxxxxxx and GP Strategies acknowledges that the
offering of Options contemplated hereby may involve tax consequences, and that
the contents of the Offering Documents do not contain tax advice or information.
Each of Xxxxxxxx and GP Strategies acknowledges that he or it must retain his or
its own professional advisors to evaluate the tax and other consequences of an
investment in the Options.
(g) Each of Xxxxxxxx and GP Strategies acknowledges that the
offering of Options contemplated hereby has not been reviewed by the SEC because
of the Company's representations that this is intended to be a nonpublic
offering pursuant to Section 4(2) of the Act. Each of Xxxxxxxx and GP Strategies
represents that the Options to be acquired by him or it pursuant hereto are
being acquired for his or its own account, for investment and not for
distribution or resale to others. Each of Xxxxxxxx and GP Strategies agrees that
he or it will
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not sell or otherwise transfer such securities unless they are registered under
the Act or unless an exemption from such registration is available.
(h) Each of Xxxxxxxx and GP Strategies understands that the
Options have not been registered under the Act by reason of a claimed exemption
under the provisions of the Act which depends, in part, upon his or its
investment intention. In this connection, each of Xxxxxxxx and GP Strategies
understands that it is the position of the SEC that the statutory basis for such
exemption would not be present if his or its representation merely meant that
his or its present intention was to hold such securities for a short period,
such as the capital gains period of tax statutes, for a deferred sale, for a
market rise, assuming a market develops, or for any other fixed period. Each of
Xxxxxxxx and GP Strategies realizes that, in the view of the SEC, acceptance of
Options now with an intent to resell would create a purchase with an intent
inconsistent with his or its representation to the Company, and the SEC might
regard such a sale or disposition as a deferred sale to which such exemptions
are not available.
(i) Each of Xxxxxxxx and GP Strategies understands that there
is no public market for the Options. Each of Xxxxxxxx and GP Strategies
understands that even if a public market were to exist following the Company's
proposed initial public offering for the Common Stock, Rule 144 (the "Rule")
promulgated under the Act requires, among other conditions, a one year holding
period prior to the resale (in limited amounts) of securities acquired in a
nonpublic offering without having to satisfy the registration requirements under
the Act. Each of Xxxxxxxx and GP Strategies understands that the Company makes
no representation or warranty regarding its fulfillment in the future of any
reporting requirements under the Securities Exchange Act of 1934, as amended, or
its dissemination to the public of any current financial or other information
concerning the Company, as is required by the Rule as one
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of the conditions of its availability. Each of Xxxxxxxx and GP Strategies
understands and hereby acknowledges that the Company is under no obligation to
register the Options to be issued pursuant to this Agreement under the Act. Each
of Xxxxxxxx and GP Strategies consents that the Company may, if it desires,
permit the transfer of the securities comprising the Options out of his or its
name only when his or its request for transfer is accompanied by an opinion of
counsel reasonably satisfactory to the Company that neither the sale nor the
proposed transfer results in a violation of the Act or any applicable state
"blue sky" laws (collectively "Securities Laws"). Each of Xxxxxxxx and GP
Strategies agrees to hold the Company and its directors, officers and
controlling persons and their respective heirs, representatives, successors and
assigns harmless and to indemnify them against all liabilities, costs and
expenses incurred by them as a result of any misrepresentation made by him or it
contained herein or any sale or distribution by each of Xxxxxxxx and GP
Strategies in violation of any Securities Laws.
(j) Each of Xxxxxxxx and GP Strategies consents to the
placement of one or more legends on any certificate or other document evidencing
his or its Options and the common Stock stating that they have not been
registered under the Act and setting forth or referring to the restrictions on
transferability and sale thereof.
4. Representations of The Company
The Company represents and warrants to Xxxxxxxx and GP Strategies that:
(a) The Company is a corporation duly organized, existing and
in good standing under the laws of the State of Delaware and has the corporate
power to conduct the business which it conducts and proposes to conduct.
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(b) The execution, delivery and performance of this Agreement
by the Company will have been duly approved by the Board of Directors of the
Company and all other actions required to authorize and effect the offer, sale
and transfer of the Options and the securities contained therein will have been
duly taken and approved.
(c) The Options have been duly and validly authorized and when
exercised, the shares of Common Stock, upon payment of the applicable exercise
price, will be validly issued, fully paid and nonassessable.
(d) The Company has obtained, or is in the process of
obtaining, all licenses, permits and other governmental authorizations necessary
to the conduct of its business; such licenses, permits and other governmental
authorizations obtained are in full force and effect; and the Company is in all
material respects complying therewith.
(e) The Company knows of no pending or threatened legal or
governmental proceedings to which the Company is a party which could materially
adversely affect the business, property, financial condition or operations of
the Company.
(f) The Company is not in violation of or default under, nor
will the execution and delivery of this Agreement, the issuance of the Options,
and the incurrence of the obligations herein and therein set forth and the
consummation of the transactions herein or therein contemplated, result in a
violation of, or constitute a default under, the certificate of incorporation or
by-laws of the Company, in the performance or observance of any material
obligations, agreement, covenant or condition contained in any bond, debenture,
note or other evidence of indebtedness or in any material contract, indenture,
mortgage, loan agreement, lease, joint venture or other agreement or instrument
to which the Company is a party or by which it or any of its properties may be
bound or in violation of any material order, rule, regulation, writ,
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injunction, or decree of any government, governmental instrumentality or court,
domestic or foreign.
5. Miscellaneous
(a) This Agreement and the rights of the parties hereto shall
be governed as to the validity, construction, enforcement and in all other
respects by the laws of the State of New York, without regard to its conflict of
laws rules.
(b) At any time, and from time to time, each party hereby
agrees with the other party that it will execute such additional instruments and
take such actions as may be reasonably requested by such other party in order
for it to realize the benefit of the transactions contemplated hereby.
(c) This Agreement embodies the entire agreement and
understanding among the parties hereto and supersedes any and all prior
agreements and understandings between the parties hereto, written or oral,
relating to the subject matter hereof.
(d) This Agreement may be executed in one or more counterparts
which, taken together, shall constitute the original action of the signatories
hereto.
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IN WITNESS WHEREOF, the parties hereto have executed this
Agreement as of the date first above written.
MILLENNIUM CELL INC.
By: /s/ Xxxxxxx X. Xxxx
________________________________
Name: Xxxxxxx X. Xxxx
Title: CEO and President
GP STRATEGIES CORPORATION
By: /s/ Xxxxx X. Xxxxxxxxx
________________________________
Name: Xxxxx X. Xxxxxxxxx
Title: Executive Vice President
/s/ Xxxxxx X. Xxxxxxxx
________________________________________
XXXXXX X. XXXXXXXX
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APPENDIX A
ASSIGNMENT
WHEREAS, I, XXXXXX X. XXXXXXXX, a citizen of the United States
of America, whose post office address is 00 Xxxxxxx Xxxxxxx Xxxxx, Xxxxx, Xxx
Xxxxxx 00000, have made the inventions identified in the attached Schedule A;
WHEREAS, the inventions identified in Schedule A were the
subject of a License Agreement dated July 31, 1997, which has now been
terminated;
WHEREAS, the inventions identified in Schedule A constitute
all of the Covered Technology as that term is defined in the Agreement dated May
24, 2000 attached hereto; and
WHEREAS, MILLENNIUM CELL INC., a corporation organized and
existing under the laws of the State of Delaware, and having an office for the
transaction of business at 0 Xxxxxxxxxx Xxx Xxxx, Xxxxxxxxx, Xxx Xxxxxx 00000,
is desirous of acquiring the entire right, title and interest in and to the
inventions identified in Schedule A and in and to the applications for Letters
Patent therefor, and any Letters Patent which may be obtained therefor,
including any reissued or re-examined patents and each and every foreign
counterpart of said inventions, all as set forth in Schedule A;
NOW, THEREFORE, TO ALL WHOM IT MAY CONCERN, BE IT KNOWN, that
I, XXXXXX X. XXXXXXXX, for the consideration recited in the attached AGREEMENT,
hereby acknowledge at or before the ensealing and delivery of these presents,
and the receipt of which is hereby acknowledged, have sold, assigned,
transferred and conveyed and by these presents do sell, assign, transfer and
convey, unto said MILLENNIUM CELL INC., its successors and assigns the entire
right, title and interest in and to the inventions identified in
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Schedule A, including all rights, past, present and future, to enforce any and
all patents issuing thereon, and any and all improvements thereon, and in and to
said applications and any divisions, continuations or continuations-in-part
thereof, and in and to any Letters Patent of the United States of America which
may be issued on any of said applications, and any reissues and/or
re-examinations thereof, and in and to any and all applications for Letters
Patent filed in foreign countries for said inventions or improvements including
all priority rights, and any and all Letters Patent which may be granted in
foreign countries therefor, TO HAVE AND TO HOLD THE SAME to the full end of the
term or terms for which any and all said Letters Patent may be granted;
AND I, XXXXXX X. XXXXXXXX, do hereby authorize and request the
Commissioner of Patents and Trademarks to issue Letters Patent of the United
States of America to said MILLENNIUM CELL INC., as the assignee of the entire
right, title and interest in and to the same, for the sole use and benefit of
said MILLENNIUM CELL INC., its successors and assigns;
AND I, XXXXXX X. XXXXXXXX, do hereby covenant and agree to and
with said MILLENNIUM CELL INC., its successors and assigns, that I have the full
power to make this assignment, and that the rights assigned are not encumbered
by any grant, license or right heretofore given, and that I, my executors or
administrators, shall and will do all lawful acts and things and make, execute
and deliver without further compensation, any and all other instruments in
writing, further applications, papers, affidavits, powers of attorney,
assignments, and other documents which, in the opinion of counsel for said
MILLENNIUM CELL INC., its successors and assigns, may be required or necessary
more effectively to secure to and vest in said MILLENNIUM CELL INC., its
successors and assigns, the entire right, title and interest in
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and to said inventions and improvements, applications, Letters Patent, rights,
titles, benefits, privileges, and advantages hereby sold, assigned, transferred
and conveyed, and that I will sign any applications for reissue or
re-examination which may be desired by the owner of the patents assigned hereby.
IN WITNESS WHEREOF, I, XXXXXX X. XXXXXXXX, have hereunto set
my hand and seal on the date below written.
/s/ XXXXXX X. XXXXXXXX
DATED:______________________ ____________________________________
XXXXXX X. XXXXXXXX
STATE OF ____________________)
) ss.:
COUNTY OF ___________________)
BE IT KNOWN, that on this ___ day of ____________, 2000,
before me personally came XXXXXX X. XXXXXXXX, to me known and known to me to be
the person mentioned in and who executed the foregoing assignment, and he
acknowledged to me that he executed the same as his free act and deed for the
use and purposes therein mentioned.
____________________________________
Notary Public
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SCHEDULE A
United States Patent No. 5,804,329
for ELECTROCONVERSION CELL
(Appln. Ser. No. 08/579,781)
Australian Appln. Ser. No. 14320/97
Canadian Appln. Ser. No. 2241862
Chinese Appln. Ser. No. 96180019.4
European Patent Convention Appln. Ser. No. 96944546.9
Israeli Appln. Ser. No. 125,126
Indian Appln. Ser. No. 0000/XXX/00
Xxxxxxxx Appln. Ser. No. 9-524601
Mexican Appln. Ser. Xx. 00 0000
Xxxxxxxxx Xxxxx. Ser. Xx. 00000000
Xxxxxxxxxx xx Xxxxxx Appln. Xxx. Xx. 00 000000
Xxxxxxxxx Patent No. 104555
WIPO Appln. Ser. Xx. XX00/00000
Xxxxx Xxxxxxx Xxxxxx Xx. 00/00000
Xxxxxx Xxxxxx Appln. Ser. No. 08/883,859
for ELECTROCONVERSION CELL
(CIP of Appln. Ser. No. 08/579,781)
