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EXHIBIT 10.8
PROPRIETARY RIGHTS AGREEMENT
This Agreement, effective as of May 1, 2000, is between
DaimlerChrysler Corporation, 0000 Xxxxxxxx Xxxxx, Xxxxxx Xxxxx, Xxxxxxxx 00000
("DaimlerChrysler") and Millennium Cell, Inc., 0 Xxxxxxxxxx Xxx Xxxx, Xxxxxxxxx,
XX 00000 ("Millennium").
WHEREAS, DaimlerChrysler has undertaken a program to test the Sodium
Borohydride hydrogen generation system at the level of performance appropriate
for vehicle application (the "Program"), this Program to be performed in
cooperation with selected suppliers and agents of DaimlerChrysler including
Millennium (the "Program Team"); and
WHEREAS, Millennium has certain experience and expertise in the field
of energy storage and hydrogen generation technology and DaimlerChrysler and
Millennium desire to share information and potentially work together in this
Program.
NOW THEREFORE, in consideration of the foregoing, DaimlerChrysler and
Millennium agree as follows:
DEFINITIONS
1.1 "PROPRIETARY INFORMATION" shall mean all information of a
confidential nature that a party receives or is given access to in conjunction
with the Program, including but not limited to data, know-how, trade secrets,
samples, prototype parts and all technical, marketing, performance and cost
information related to the Program. Proprietary Information shall further
include all inventions, ideas, discoveries, developments, prototype parts and
any non-public information generated under the Program by either party, its
employees, subcontractors or agents, and all media containing Proprietary
Information. To the extent possible, all Proprietary Information developed or
transmitted in the course of this Program shall be marked as "Confidential" or
with a similar indication of its proprietary status.
1.2 "MILLENNIUM BACKGROUND TECHNOLOGY" shall mean Proprietary
Information, notebooks, patents, patent applications, articles, computer
records, compositions, devices and methods conceived, acquired, reduced to
practice or developed by Millennium prior to or outside of Millennium work on
the Program.
1.3 "MILLENNIUM DEVELOPED PROGRAM TECHNOLOGY" shall mean all
Proprietary Information, articles, compositions, devices and/or methods
conceived, developed or acquired by Millennium as a direct result of or in the
course of its work on the Program or which otherwise constitutes an improvement
upon any idea first made known to Millennium by DaimlerChrysler specifically
related to or in the course of the Program. Where a design or development
originates from Millennium Background Technology and is applied to the Program,
only those developments which occur within the Program shall be considered
within this definition. Millennium Developed Program Technology specifically
excludes all Millennium Background Technology.
1.4 "DAIMLERCHRYSLER FUNDED TECHNOLOGY" shall mean any portion of the
Millennium Developed Program Technology that DaimlerChrysler has paid Millennium
to develop, either by direct
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payment or issuance of a purchase order, excluding however Millennium Background
Technology. It is understood that as of the date of the signing of this
agreement no such technology yet exists that fits the definition of this
paragraph.
PROPRIETARY INFORMATION
2.1 HANDLING OF PROPRIETARY INFORMATION. Unless otherwise authorized in
writing by a disclosing party, all Proprietary Information shall be maintained
in confidence for five (5) years from the date of first receipt by exercising
reasonable precautions to prevent its disclosure. Each party shall use
reasonable efforts to limit the dissemination of Proprietary Information to its
employees or to employees of its parent, subsidiaries, affiliates or companies
under common control therewith, to other members of the Program Team, as well as
to other third parties retained by DaimlerChrysler in conjunction with
DaimlerChrysler's exercise of any of the rights granted in sub-paragraphs 3.1
and 3.2 herein, who have a need to know and who have agreed to observe
equivalent obligations. The standard of care imposed on each party for
protecting the Proprietary Information shall be that degree of care that it uses
to protect its own confidential information of like importance. These
obligations of confidentiality shall not apply to any Proprietary Information
which:
was rightfully in the possession of the receiving party at the time of
disclosure;
becomes publicly known through no wrongful act on the receiving party's
part;
is rightfully received from a third party; or
is independently developed by the receiving party without any reliance
on Proprietary Information of the disclosing party.
2.2 RETURN OF PROPRIETARY INFORMATION. To the extent reasonable or
possible, upon written request of the disclosing party, any writing containing
Proprietary Information shall be returned by the receiving party and all
software, data or models provided hereunder shall be wiped from all media, along
with all derivatives thereof.
INTELLECTUAL PROPERTY RIGHTS
3.1 MILLENNIUM DEVELOPED PROGRAM TECHNOLOGY. In consideration for the
advantages gained by working with DaimlerChrysler on the Program, Millennium
hereby grants to DaimlerChrysler, its present and future parent, subsidiaries
and companies under common control therewith ("DaimlerChrysler Companies"), a
non-exclusive, world-wide, paid-up, irrevocable and perpetual license to make,
have made, use, offer to sell, sell and import only in connection with
DaimlerChrysler Companies' automotive business, articles, compositions, devices
and/or methods which embody any Millennium Developed Program Technology.
3.2 DAIMLERCHRYSLER FUNDED TECHNOLOGY. Notwithstanding the above,
Millennium hereby agrees to and does hereby assign, transfer and convey to
DaimlerChrysler all of Millennium right, title and interest in and to all
DaimlerChrysler Funded Technology, including all intellectual property rights
therein.
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3.3 MILLENNIUM BACKGROUND TECHNOLOGY. Millennium agrees to make
available to DaimlerChrysler, only in connection with DaimlerChrysler Companies'
business, a non-exclusive license on reasonable terms and conditions with
respect to any Millennium Background Technology which is reasonably required by
DaimlerChrysler for its full enjoyment of the rights otherwise transferred in
sub-paragraphs 3.1 and 3.2 hereunder. Millennium's obligations under this
subsection 3.3 shall terminate at the end of twelve (12) months after delivery
of the first hydrogen generator to DaimlerChrysler.
3.4 DISCLOSURE OBLIGATIONS. Millennium agrees to disclose promptly to
DaimlerChrysler any invention, copyrightable work, patent application or patent
to which DaimlerChrysler is entitled to a license or assignment hereunder and to
perform any act, including without limitation, executing and delivering upon
request any document that DaimlerChrysler may reasonably deem necessary to enjoy
the full benefit of that intellectual property.
3.5 OTHER OBLIGATIONS. Except as expressly provided herein, no
license, express or implied, in the Proprietary Information or other proprietary
right is granted hereunder. In no event shall either party make any attempt to
reverse engineer any software or other technology provided hereunder. The
parties agree to make no attempt to analyze or otherwise determine the chemical
composition of any material or other substance provided under this Agreement
without the express written permission of the other party and any supplier of
the material or substance to that party. Neither party shall use any Proprietary
Information in a manner inconsistent with this Agreement.
GENERAL
4.1 ENTIRE AGREEMENT. This Agreement constitutes the entire agreement
between the parties with respect to the subject matter herein and supercedes all
prior communications, negotiations, understandings and agreements between the
parties, whether express or implied, either written or oral, with respect to the
subject matter herein. This Agreement may only be amended by a writing executed
by both parties. To the extent any term of a purchase order issued to Millennium
by DaimlerChrysler for Millennium's work under the Program conflicts with any
term of this Agreement, the terms of this Agreement will govern.
4.2 RELATIONSHIP OF THE PARTIES. This Agreement does not constitute
either party as the agent, representative or partner of the other party for any
purpose. Neither party has the authority to assume or create an obligation on
behalf of, or in the name of, the other party.
4.3 EXPIRATION AND TERMINATION. Unless earlier terminated by mutual
agreement of the parties, this Agreement shall expire five (5) years from the
effective date of this Agreement. The respective rights and obligations of each
party accruing prior to termination or expiration of this Agreement shall
survive termination or expiration of this Agreement.
4.4 GOVERNING LAW. This Agreement shall be governed by and construed in
accordance with the laws of the State of Michigan, without regard to its
conflict of laws provisions, and/or the federal laws of the United States.
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4.5 ASSIGNMENT. No party may assign any right or obligation under this
Agreement without the prior written consent of the other, except that either
party may assign, in whole or in part, its right, title and interest in this
Agreement to any company with which it may merge or consolidate or which
acquires substantially all of the business or assets of such party. The terms
and conditions hereof will inure to the benefit of and be binding upon agents
and successors in interest of each party.
IN WITNESS HEREOF, the parties hereto have caused this instrument to
be executed by their respective authorized representatives.
DAIMLERCHRYSLER CORPORATION MILLENNIUM CALL LLC
BY: BY:
TITLE: TITLE:
DATE: DATE:
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