AGREEMENT, made as of the 7 day of March, 1991.
between
INTERNATIONAL LEAD ZINC RESEARCH ORGANIZATION, INC., a North Carolina Non-Profit
Corporation with offices at 0000 Xxxxxxxx Xxxxxxx, Post Office Box 12036,
Research Xxxxxxxx Xxxx, Xxxxx Xxxxxxxx 00000 ("Sponsor").
and
SOLMECS (ISRAEL) LTD, corporation with offices at Xxxx Xxxxxx, Xxxxx 000, 00
Xxxxx Xxxx, Xxxxxxxxx 00000, Israel ("Contractor");
WHEREAS, Sponsor desired Contractor to carry out the program of research
(hereinafter called the "Project"), set forth in contractor's proposal dated
June 1990, attached hereto as Exhibit A and made a part hereof, and Contractor
is willing and able to perform such work, identified as:
LM-391, Use of Lead in LMMHD Cogeneration Systems
NOW, THEREFORE, the parties agree as follows:
1. Research on Project
(a) Contractor shall initiate and carry out the Project in accordance with
the provisions of Exhibit A and shall provide laboratory facilities, equipment,
materials, personnel and supervision, all as set forth in Exhibit A. If at any
time during the term of this Agreement, Contractor becomes aware of any
impending change of personnel assigned to the Project, for whatever reason,
Contractor will immediately notify Sponsor of the impending change, and
furthermore, will notify Sponsor of the name(s) and duties of the new personnel,
so assigned, as soon as this information is known to Contractor. Work on the
Project shall begin with three (3) months of the date of this Agreement and
Contractor shall promptly notify Sponsor of the date when work begins.
(b) All work done by contractor, and all employment and other contracts
made by Contractor, in the performance of this Agreement shall be done or made
by it as principal, and not as the agent of Sponsor, and Sponsor shall not have
any liability whatsoever for any such work or under any such contracts or for
the payment of any claims made by any person on account of any property damage
or personal injury arising out of Contractor's performance of this Agreement.
Contractor shall discharge the duties and obligations of principal with respect
to such work and such contracts, including, but not limited to, the withholding
and payment of all applicable taxes and the filing of all necessary returns.
Upon Sponsor's request, Contractor at its own expense will defend any action or
claim brought or made by any person against Sponsor arising out of Contractor's
performance of this Agreement, provided that Sponsor shall have the right to
participate through counsel of its choice in the defense thereof. Contractor
will hold Sponsor harmless from any and all damages, costs or other liabilities
incurred by Sponsor as the result of the bringing of any such action or the
assertion of any such claim, including Sponsor's reasonable attorney's fees.
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2. Subcontracting
With the prior written approval of Sponsor's President, Contractor may
subcontract all or any part of the work on the Project to a subcontractor. Any
subcontract shall contain provisions, substantially similar to the provisions of
this Agreement, protecting all of Sponsor's rights under this Agreement,
including, without limitation, provisions substantially similar to paragraph (b)
of Section 5 and Sections 6, 9, 12, 14, and 15. However, no subcontract shall
relieve Contractor of any of its obligations under this Agreement.
3. Terms and Termination
(a) This Agreement shall terminate one (1) year from the date when work on
the Project begins, unless terminated earlier as provided in Paragraph (b) of
this Section 3, or renewed as provided in Section 4.
(b) Either party may terminate this Agreement at any time upon sixty (60)
days' prior written notice to the other party.
(c) Termination of this Agreement shall bring an end to the Project and to
Sponsor's obligation to reimburse Contractor for costs of the Project incurred
thereafter. It shall not, however, affect rights and obligations already accrued
or clearly intended to survive, including, without limitation, Sponsor's
obligation under paragraph (a) Section 5 to reimburse Contractor for costs
theretofore incurred and Sponsor's rights and Contractor's obligations under
paragraph (b) of Section 1, paragraph (b) of Section 5, and Sections 6, 9, 12,
13, 14, 15, and 17 all of which shall survive.
4. Renewal
If this Agreement has not theretofore been terminated pursuant to paragraph
(b) of Section 3, Contractor shall, not later than June 1 of the year in which
the Agreement, or any renewal thereof is to terminate, advise Sponsor in writing
as to the desirability of doing further research work on the subject matter of
the Project. If further work is recommended, the recommendation shall be
accompanied by a formal proposal for renewal of this Agreement, setting forth in
detail the additional work recommended, the time required and the estimated
costs of performing the recommended work. Sponsor may accept the renewal
proposal by notifying the Contractor in writing prior to the expiration of the
original term of the contract or any subsequent renewal period, whereupon this
Agreement shall be renewed and extended for the term provided in the renewal
proposal or for one year, whichever is less. All terms and conditions of this
Agreement shall apply during any renewal term, except that during the renewal
term (i) the expression "Exhibit A" as used herein shall mean the renewal
proposal, (ii) the expression "Project" as used herein shall mean the program of
research set forth in the renewal proposal and (iii) Sponsor's liability under
Section 5 to reimburse Contractor for costs incurred during the renewal term
shall not exceed the dollar limit stated in Sponsor's letter accepting the
renewal proposal.
5. Costs
(a) Sponsor shall reimburse Contractor for the costs of the Project up to
but not exceeding a total of $387,229. Contractor shall render itemized
invoices, quarterly, for the costs actually incurred during the previous
quarter, and Sponsor shall pay invoices promptly upon presentation, provided
that Sponsor shall not be required to pay any invoice until any reports under
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Section 13 due at the time the invoice is rendered have been submitted to
Sponsor. Payment schedule:
$100,00 each in 1991 and 1992
$85,000 in 1993
$50,000 in 1994
$52,229 in 1995
(b) Contractor shall keep books of account showing all costs of the
project, which shall be open at all times to inspection by representatives of
Sponsor.
(c) For the purposes of this Section 5, the term "costs" shall include only
costs of the types contemplated by Exhibit A, and shall not include
administrative overhead or indirect costs except to the extent specifically
stated in Exhibit A.
6. Technical Data
All developments, inventions, improvements, information, data or ideas
(hereinafter referred to as "Technical Data") which flow from work on the
Project shall be the equally shared property of Contractor and Sponsor,
regardless of whether such Technical Data are patentable, and regardless of
whether patent applications are filed in respect thereto. In furtherance of this
provision:
(i) Contractor represents and agrees that it has required, or will promptly
require, each of its personnel engaged in work on the Project to agree in
writing (x) to disclose promptly to Contractor all Technical Data which flow
from work on the project and to specify whether such Technical Data (1)
Incorporate any information turned over to Contractor by Sponsor or (2) embody
any invention made in whole or in part in the United States; (y) to assign to
Contractor or whomever Contractor specifies, the entire right, title and
interest, for the United States and all other countries, in and to any such
Technical Data as contractor shall request; and (z) to execute at any time
during the term of this Agreement or thereafter, all applications for patents
covering any of such Technical Data, as well as any other instruments which may
be considered necessary or appropriate to vest in and secure to the assignee the
rights to be assigned under this subparagraph (i) of Section 6 to aid in the
prosecution of applications for such patents.
(ii) Contractor further agrees (x) to disclose promptly to Sponsor all
Technical Data which flow from work on the project and to specify whether such
Technical Data (1) incorporate any information turned over to Contractor by
Sponsor or (2) embody any invention made in whole or in part in the United
States; (y) to formally assign to Contractor and Sponsor the entire right, title
and interest, for the United States and all other countries in and to such
Technical Data as Contractor and Sponsor will agree upon; and (z) at the
agreement of the Contractor and the Sponsor, to execute, or obtain the execution
of, at any time during the term of this Agreement or thereafter, all
applications for patents covering any such Technical Data, and any and all
instruments as may be considered necessary or appropriate by Contractor and
sponsor to vest in and secure to Contractor and to Sponsor the equally shared
rights assigned to Contractor and Sponsor, provided, however, that Sponsor shall
bear the expense of the preparation, filing and prosecution of such patent
applications and of the preparation of such instruments.
(iii) Contractor further agrees that it shall not file, cause to be flied,
or authorize the filing of nor allow any of its personnel to file, cause to be
filed, or authorize the filing of patent applications anywhere in the world
directed to any inventions embodied in such Technical Data or to any inventions
disclosed in any information turned over the Contractor by Sponsor without the
prior written approval of Sponsor's President together with (x) notification
that a license has been issued by the United States Government authorizing such
filing as required by the laws of the United States or (y) written confirmation
that such license is not required.
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7. Intellectual Property
(i) All data, findings, discoveries, etc. (hereinafter called
"Information") that will accrue during research until the point that is ceases,
and which is not patentable, will remain the property of the parties themselves,
and shall not be transferrable to a third party.
(ii) The non-transferability of the above rights to the information shall
expire five (5) years after the cessation of the mutual project, and each party
will be free to dispose of his rights according to his own judgment and
interest.
(iii) Notwithstanding the aforementioned above, each party will be free to
continue research at his own expense after cessation of the mutual project.
(iv) In the event that as a result of the continued research mentioned in
subsection (iii) above, information worthy of a patent is discovered and/or
developed, then the other party will be entitled to consideration in an amount
to be determined in negotiations between the parties at such a time.
8. Patents
(i) In the event that a patent is obtained, it shall be registered in the
name of both of the parties as co-owners.
(ii) Use of the patent shall be together, such that no party will sign a
contract with a third party without the other party's signature, and the patent
will only be transferrable with the signature of both parties.
(iii) The right of each party to transfer his rights shall be subject to
the other party's right of first refusal according to the same price and
conditions that were offered by the third party.
(iv) In the event that Sponsor will not be interested in patent
registration somewhere, Contractor will have the right to register the patent in
its own name, at its own expense. Sponsor will give prompt response to any such
notification received from Contractor.
9. Confidence
Contractor shall take all reasonable precautions, including requiring
personnel engaged in work on the Project to execute Agreements substantially
similar to this Section 9, to keep confidential all information turned over to
Contractor by Sponsor, Sponsor's interest in the Project, and all Technical Data
as defined (i) Section 6 hereof, and shall not disclose nor allow its personnel
to disclose any such information or Technical Data to third persons, and shall
not publish nor allow its personnel to publish any such information or Technical
Data; provided, however, that the obligations of this Section 9 shall not apply
(a) in any case where prior written approval is obtained from Sponsor's
President or (b) to the extent that such information or Technical Data (i) is
generally available to the public, otherwise than as a consequence of a breach
of Contractor's obligations hereunder to maintain such matters in confidence, or
(ii) is already in Contractor's written records prior to the date of this
Agreement. Such approval shall not be unreasonably withheld.
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10. Modification of Project
Both parties recognize that the program of research set forth in Exhibit A
may have to be modified as research results indicate that changes in emphasis of
direction are appropriate. Modifications may be agreed to at any time and from
time to time by Sponsor's President and the person designated by Contractor
pursuant to Section 11 to maintain liaison with Sponsor's President. Any
modification may be oral unless one of the persons agreeing to the modification
requests that it be in writing.
11. Liaison
Contractor shall designate a person to represent Contractor under this
Agreement and to maintain liaison for Contractor with Sponsor's President.
Prompt written notice of the person so designated, and of any subsequent change
of designation, shall be given to Sponsor. The person so designated shall keep
Sponsor's President fully and currently informed of the status of work on the
Project and of all research results. When requested by Sponsor's President, the
person so designated, and any other personnel of Contractor assigned to the
Project, shall meet with any persons designated by Sponsor's President to review
the Project. If the meeting takes place outside the State of Israel, Sponsor
will cover the costs involved in it, unless agreed otherwise.
12. Research Records
Contractor shall require personnel assigned to the Project to keep
sufficiently detailed records of work done on the Project, the findings and the
conclusions, such records shall be open at all times to inspection and copying
by representatives of Sponsor. Contractor will keep these records for one year
after termination of Project as defined in the attached Exhibit A.
13. Reports
Subject to the limitations set forth in Section 14, Contractor shall make
the following reports; each of which must begin with an Executive Summary of the
principal results detailed in the main body of the report. This Executive
Summary should be limited to one page in length, if possible; should state the
overall objective of the research program; should clearly summarize the results
obtained during the latest reporting period; and should describe the work
proposed for the next reporting period. As this Summary will be read by some
persons who have no special knowledge of the research area, simple language is
recommended.
During each calendar year that the contract, or its continuation, is in
force, two written progress reports must be submitted in accordance with the
following schedule:
Type of Report Date Due at Il ZRO Office Copies Required
-------------- ------------------------- ---------------
Semi-Annual July 15 - July 30 20
Annual/Final (Cumulative) February 1 - February 15 30
Within 60 days of
Contract termination date
At the agreement of Contractor and Sponsor, and subject to the provisions
of Section 9, Contractor shall prepare and submit to Sponsor a written summary
setting forth the data and conclusions resulting from Contractor's research, in
a form suitable for publication, in a journal to be mutually agreed upon between
Sponsor and Contractor.
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14. Disclosure of Patentable Material
Contractor shall promptly call Sponsor's attention to any Technical Data
flowing from work on the Project which appear to contain patentable inventions.
Contractor shall not include information as to such Technical Data in the
reports required by Section 13, but shall furnish Sponsor with copies of a
special report marked "Industrial Confidential" containing a full disclosure as
to such Technical Data. Such special report shall specify whether any inventions
contained in such Technical Data (a) were disclosed in whole or in part in
information turned over to Contractor by Sponsor or (b) were made in whole or in
part in the United States.
15. Materials and Equipment
All unconsumed materials and equipment purchased or fabricated by
Contractor and charged to Sponsor under Section 5 shall be the property of
Sponsor. Upon termination of this Agreement, Contractor shall notify Sponsor of
any such materials and equipment that were not consumed on the Project and, if
Sponsor so requests, shall deliver such materials and equipment, at Sponsor's
expense, to such place as Sponsor may direct.
16. Plant
(i) According to the Appendix the plant will be erected on the property of
Ben-Gurion University of the Negev at the expense of Sponsor including parts and
labor.
(ii) At the end of the period of the mutual project the plant will become
the property of Sponsor.
(iii) Sponsor will notify Contractor within six (6) months from the date of
the cessation of the mutual project what is to be done with the plant.
(iv) In the event that Sponsor has not notified Contractor by the end of
six (6) months the ownership of the plant will be automatically transferred to
Contractor.
(v) In the event that the University demands the removal of the plant
before the expiration of the six-month period, Sponsor must notify Contractor of
its decision regarding disposition of the plant no later than fifteen (15) days
before the removal date which the University has given to Contractor.
17. Payments by Contractor to ILZRO
In consideration of Sponsor's substantial five-year commitment to the
Project, Contractor agrees to remit yearly payments to Sponsor based upon the
usage of lead in LMMHD systems which generate steam, electricity, or both in
facilities intended for all except solely research purposes. To calculate such
payments, Contractor will determine at the end of the calendar year, the number
of facilities brought to initial operation during that year which are based on
the LMMHD technology developed by Contractor. The total amount of lead used in
such facilities will be calculated from actual purchasing documents for each
facility or by assuming that 200 metric tons are required for each MW of
generated power and adjusting for steam production. Based upon this total,
Contractor will remit payments to Sponsor based upon the following schedule:
o $1.37 for each metric ton of lead up to a total sum of $932,000
o $0.27 for each additional ton of lead until another $932,000 is paid.
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Each payment shall be due and payable within sixty (60) days after the end
of the calendar year, and the full amount of such payment shall be remitted in
U.S. currency and paid to Sponsor's account with a bank designated by Sponsor in
writing. Contractor shall not make any deduction whatsoever from such payments.
18. Delegation by President
The powers and duties assigned to Sponsor's President under this Agreement
may be delegated by him to any member of Sponsor's staff. Contractor shall not
be required to recognize such delegation until it has received written notice
thereof from Sponsor's President.
19. Interpretation
In the case of any inconsistency between the provisions of Exhibit A and
the provisions of this Agreement, the latter shall govern.
20. Notices
Any notice, report or other communication required to be given or made
under this Agreement by one party to the other shall be deemed to have been
sufficiently given or made for all purposes if mailed prepaid by registered mail
addressed to such other party at its address set forth at the beginning of this
Agreement. Either party may, at any time, change its address for the purposes of
this Section 20, by giving written notice of such change to the other party.
21. Assignability
This Agreement may not be assigned by Contractor without Sponsor's prior
written consent. Subject to the foregoing restriction on assignment, this
Agreement shall inure to the benefit of and be binding upon the parties and
their respective successors and assigns.
22. Governing Law
This Agreement shall be governed by and construed in accordance with the
laws of the State of North Carolina.
IN WITNESS WHEREOF, the parties have executed this Agreement on the day and
year first above written.
SOLMECS (ISRAEL) LTD. INTERNATIONAL LEAD ZINC
RESEARCH ORGANIZATION, INC.
By: /s/ X. Xxxxxxxx By: /s/ [ILLEGIBLE]
---------------------- ----------------------
President
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