Exhibit B-6
Exhibit C to the Master Separation and Distribution Agreement
INTELLECTUAL PROPERTY OWNERSHIP AGREEMENT
INTELLECTUAL PROPERTY OWNERSHIP AGREEMENT
BETWEEN
ALLEGHENY ENERGY, INC.
AND
[SUPPLY HOLDCO]
TABLE OF CONTENTS
ARTICLE I
DEFINITIONS
ARTICLE II
INTELLECTUAL PROPERTY ALLOCATION OF OWNERSHIP
2.1 Assignment 2
2.2 Prior Grants 2
2.3 Assignment Disclaimer 2
2.4 Third Party Technology. 2
ARTICLE III
PROTECTION OF INTELLECTUAL PROPERTY
3.1 Protection Of Intellectual Property 3
3.2 Additional Obligations With Regard To Intellectual Property 3
3.3 Defensive Protection Measures 3
ARTICLE IV
DATABASE INFORMATION AND RIGHTS
ARTICLE V
CONFIDENTIALITY
ARTICLE VI
DISPUTE RESOLUTION
ARTICLE VII
LIMITATION OF LIABILITY
ARTICLE VIII
MISCELLANEOUS PROVISIONS
8.1 No Implied Licenses 5
8.2 Infringement Suits 5
8.3 No Other Obligations 5
8.4 Entire Agreement 5
8.5 Governing Law 5
8.6 Descriptive Headings 5
8.7 Notices 6
8.8 Nonassignability 6
8.9 Severability 6
8.10Failure Or Indulgence Not Waiver; Remedies Cumulative 7
8.11Amendment 7
8.12Counterparts 7
8.13Governmental Approval 7
INTELLECTUAL PROPERTY OWNERSHIP AGREEMENT
INTELLECTUAL PROPERTY OWNERSHIP AGREEMENT (the
"Agreement"), dated ______________ (the "Effective Date"),
between Allegheny Energy, Inc., a Maryland corporation
("Allegheny") and [___________], a Maryland corporation ("Supply
Holdco").
RECITALS
WHEREAS, the Board of Directors of Allegheny has
determined that it is in the best interest of Allegheny and its
stockholders to separate Allegheny's existing business into two
independent businesses;
WHEREAS, pursuant to such determination, Allegheny and
Supply Holdco have entered into a Master Separation Agreement (as
defined below), which provides, among other things, for the
separation of Allegheny and Supply Holdco, the transfer between
Allegheny and Supply Holdco of certain assets and liabilities,
the initial public offering of Supply Holdco common stock, the
distribution of such common stock and the execution and delivery
of certain other agreements in order to facilitate the foregoing;
and
WHEREAS, in connection with the foregoing, Allegheny
and Supply Holdco desire to resolve and assign ownership of
certain technology and intellectual property.
NOW, THEREFORE, in consideration of the foregoing and
the covenants and agreements set forth below, Allegheny and
Supply Holdco agree as follows:
ARTICLE I
DEFINITIONS
For the purpose of this Agreement the following
capitalized terms shall have the meanings specified herein.
Capitalized terms used in this Agreement and not otherwise
defined shall have the meanings for such terms set forth in the
Master Separation Agreement.
"Confidential Disclosure Agreement" means the
Confidential Disclosure Agreement between Allegheny and Supply
Holdco.
"Database Information and Rights" means any database
information and related legal rights, including, but not limited
to, trade secrets, rights arising under agreements and copyrights
under the laws of the United States or any other jurisdiction,
whether registered or unregistered, and any applications for
registration thereof.
"Licensed Technology" means licensed technology and
related intellectual property rights granted by a third party to
one of the parties to this agreement.
"Master Separation Agreement" means the Master
Separation and Distribution Agreement between Allegheny and
Supply Holdco.
"Supply IP" means the intellectual property, and
applications therefor and registrations thereof, listed on
Exhibit A.
ARTICLE II
INTELLECTUAL PROPERTY
ALLOCATION OF OWNERSHIP
Section 2.1 Assignment. Subject to Sections 2.2 and 2.3
below, Allegheny hereby grants, conveys and assigns (and agrees
to cause its appropriate Subsidiaries to grant, convey and
assign) to Supply Holdco, by execution hereof (or, where
appropriate or required, by execution of separate instruments of
assignment), all its (and their) worldwide right, title and
interest in and to the Supply IP. Allegheny further grants,
conveys and assigns (and agrees to cause its appropriate
Subsidiaries to grant, convey and assign) to Supply all its (and
their) worldwide right, title and interest in and to any and all
causes of action and rights of recovery for past infringement of
the Supply IP and for past misappropriation of trade secrets in
and to the Supply IP. Allegheny further covenants that Allegheny
will, without demanding any further consideration therefor, at
the request and expense of Supply Holdco (except for the value of
the time of Allegheny employees), do (and cause its Subsidiaries
to do) all lawful and just acts that may be or become necessary
for evidencing, maintaining, recording and perfecting Supply
Holdco's rights to such Supply IP consistent with Allegheny's
general business practice as of the Separation Date, including
but not limited to, execution and acknowledgment of (and causing
its Subsidiaries to execute and acknowledge) assignments and
other instruments in a form reasonably required by Supply Holdco.
Supply Holdco hereby waives any and all claims of any right,
title and interest in and to any intellectual property of
Allegheny not within the definition of Supply IP.
Section 2.2 Prior Grants. Supply Holdco acknowledges and
agrees that the foregoing assignment is subject to any and all
licenses or other rights that may have been granted by Allegheny
or its Subsidiaries with respect to the Supply IP prior to the
Separation Date. Allegheny shall respond to reasonable inquiries
from Supply Holdco regarding any such prior grants.
Section 2.3 ASSIGNMENT DISCLAIMER. SUPPLY HOLDCO ACKNOWLEDGES
AND AGREES THAT THE FOREGOING ASSIGNMENTS ARE MADE ON AN "AS IS,"
QUITCLAIM BASIS AND THAT NEITHER ALLEGHENY NOR ANY SUBSIDIARY OF
ALLEGHENY HAS MADE OR WILL MAKE ANY WARRANTY WHATSOEVER, EXPRESS,
IMPLIED OR STATUTORY, INCLUDING WITHOUT LIMITATION ANY IMPLIED
WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE,
TITLE, ENFORCEABILITY OR NON-INFRINGEMENT.
Section 2.4 Third Party Technology.
(a) Allegheny hereby agrees to sublicense or to use reasonable
commercial efforts to obtain, or to cause to be obtained, any
consent, approval or amendment required to convey a license or
sublicense in Licensed Technology to Supply Holdco pursuant to
the same or substantially the same terms as Allegheny's license,
upon request from Supply Holdco.
(b) Supply Holdco hereby agrees to sublicense or to use
commercially reasonable efforts to obtain or cause to be obtained
any consent, approval or amendment required to obtain a license
or sublicense in Licensed Technology to Allegheny pursuant to the
same or substantially the same terms as Supply Holdco's license,
upon request from Allegheny.
ARTICLE III
PROTECTION
OF INTELLECTUAL PROPERTY
Section 3.1 Protection Of Intellectual Property. Allegheny
and Supply Holdco shall assist each other, at the other's request
and expense, in the procurement and maintenance of the other's
intellectual property rights transferred hereunder. Allegheny and
Supply Holdco agree to execute all documents reasonably requested
by the other to effect further registration, maintenance and
renewal of the intellectual property of the other.
Section 3.2 Additional Obligations With Regard To Intellectual
Property. Allegheny and Supply Holdco each acknowledges that its
employees and contractors have a continuing duty to assist the
other with the prosecution of applications and, accordingly,
agree to make available to each other, inventors and other
persons for interviews and/or testimony to assist in good faith
in further prosecution, maintenance or litigation with respect to
intellectual property, including the signing of documents related
thereto. Each party will make reasonable efforts to obtain the
cooperation and assistance of its former employees as requested
by the other party. Any actual and reasonable out-of-pocket
expenses associated with such assistance shall be borne by the
company being assisted, expressly excluding the value of the time
of current employees of the company providing assistance;
provided, however, that in the case of assistance with
litigation, the parties shall agree on a case by case basis on
compensation, if any, for the value of the time of the employees
as reasonably required in connection with such litigation.
Section 3.3 Defensive Protection Measures. The parties shall
cooperate reasonably and in good faith to the extent consistent
with each party's own business objectives in the event that
either party is involved in intellectual property litigation or
controversies in which it would be helped in some way by the
other party's intellectual property or relevant knowledge. Such
cooperation may include, by way of example, (i) cooperation with
respect to knowledge of prior art (whether the other party's or a
third party's), (ii) consent to the granting of licenses to such
other party's patents, and (iii) assignment to such party of such
other party's patents for the purpose of bringing a counterclaim
against a third party. The party requesting such cooperation
shall bear the actual and reasonable out-of-pocket expenses of
the cooperating party (except for the value of the time of the
cooperating party's employees).
ARTICLE IV
DATABASE INFORMATION AND RIGHTS
Allegheny and Supply Holdco hereby covenant and agree
to cooperate fully with each other in licensing and assigning to
each other, on mutually agreeable terms, such Database
Information and Rights as may be required by the other for its
business operations.
ARTICLE V
CONFIDENTIALITY
The terms of the Confidential Disclosure Agreement
between the parties shall apply to any Confidential Information
(as defined therein) which is the subject matter of this
Agreement.
ARTICLE VI
DISPUTE RESOLUTION
The parties shall make a good faith attempt to resolve
any dispute or claim arising out of or related to this Agreement
through negotiation. Within thirty(30) days after notice of a
dispute or claim, which notice shall contain the particulars of
the claim, is given by either party to the other party, the
parties' senior executives responsible for intellectual property
(or their delegates) shall meet to attempt to resolve the matter.
If the parties' representatives are unable to resolve the
dispute, the dispute resolution procedures set forth in the
Master Separation Agreement shall be followed.
ARTICLE VII
LIMITATION OF LIABILITY
IN NO EVENT SHALL EITHER PARTY OR ITS SUBSIDIARIES BE
LIABLE TO THE OTHER PARTY OR ITS SUBSIDIARIES FOR ANY SPECIAL,
CONSEQUENTIAL, INDIRECT, INCIDENTAL OR PUNITIVE DAMAGES OR LOST
PROFITS, HOWEVER CAUSED AND ON ANY THEORY OF LIABILITY (INCLUDING
NEGLIGENCE) ARISING IN ANY WAY OUT OF THIS AGREEMENT, WHETHER OR
NOT SUCH PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH
DAMAGES; PROVIDED, HOWEVER, THAT THE FOREGOING LIMITATIONS SHALL
NOT LIMIT EACH PARTY'S OBLIGATIONS EXPRESSLY ASSUMED IN THE
MASTER SEPARATION AGREEMENT; PROVIDED FURTHER THAT THE EXCLUSION
OF PUNITIVE DAMAGES SHALL APPLY IN ANY EVENT.
ARTICLE VIII
MISCELLANEOUS PROVISIONS
Section 8.1 No Implied Licenses. Nothing contained in this
Agreement shall be construed as conferring any intellectual
property or other right by implication, estoppel or otherwise,
other than the rights expressly granted in this Agreement.
Neither party is required hereunder to furnish or disclose to the
other any technical or other information, except as specifically
provided herein.
Section 8.2 Infringement Suits. To the extent to which
intellectual property rights have been transferred hereunder,
neither party shall have any obligation hereunder to institute
any action or suit against third parties for infringement of said
intellectual property, or to defend any action or suit brought by
a third party which challenges or concerns the validity of any of
such rights or which claims that said intellectual property
infringes any technology or other intellectual property right of
any third party or constitutes a misappropriated trade secret of
any third party. Allegheny shall not have any right to institute
any action or suit against third parties for infringement of any
Supply IP and Supply Holdco shall not have any right to institute
any action or suit against third parties for infringement of any
of the technology or intellectual property of Allegheny.
Section 8.3 NO OTHER OBLIGATIONS. NEITHER PARTY ASSUMES ANY
RESPONSIBILITIES OR OBLIGATIONS WHATSOEVER, OTHER THAN THE
RESPONSIBILITIES AND OBLIGATIONS EXPRESSLY SET FORTH IN THIS
AGREEMENT OR A SEPARATE WRITTEN AGREEMENT BETWEEN THE PARTIES.
Without limiting the generality of the foregoing, neither party,
nor any of its Subsidiaries, is obligated to provide any
technical assistance.
Section 8.4 Entire Agreement. This Agreement, the Master
Separation Agreement and the other Ancillary Agreements (as
defined in the Master Separation Agreement) constitute the entire
agreement between the parties with respect to the subject matter
hereof and shall supersede all prior written and oral and all
contemporaneous oral agreements and understandings with respect
to the subject matter hereof. To the extent there is a conflict
between this Agreement and the Master Separation Agreement, the
terms of this Agreement shall govern.
Section 8.5 Governing Law. This Agreement shall be governed
by and construed and enforced in accordance with the laws of the
State of Maryland as to all matters regardless of the laws that
might otherwise govern under principles of conflicts of laws
applicable thereto.
Section 8.6 Descriptive Headings. The descriptive headings
herein are inserted for convenience of reference only and are not
intended to be part of or to affect the meaning or interpretation
of this Agreement.
Section 8.7 Notices. All notices and other communications
hereunder shall be in writing and shall be deemed to have been
duly given when delivered in person, by telecopy with answer
back, by express or overnight mail delivered by a nationally
recognized air courier (delivery charges prepaid), by registered
or certified mail (postage prepaid, return receipt requested) to
the respective parties as follows:
if to Allegheny:
Allegheny Energy, Inc.
000 Xxxxx Xxxx Xxxxx
Xxxxxxxxxx, XX 00000
Attention: General Counsel
if to Supply Holdco:
[_____________]
00000 Xxxxxxxxxx Xxxx
Xxxxxxxxxx, XX 00000
Attention: General Counsel
or to such other address as the party to whom notice is given may
have previously furnished to the other in writing in the manner
set forth above. Any notice or communication delivered in person
shall be deemed effective on delivery. Any notice or
communication sent by telecopy or by air courier shall be deemed
effective on the first business day following the day on which
such notice or communication was sent. Any notice or
communication sent by registered or certified mail shall be
deemed effective on the third business day following the day on
which such notice or communication was mailed.
Section 8.8 Nonassignability. Neither party may, directly or
indirectly, in whole or in part, whether by operation of law or
otherwise, assign or transfer this Agreement, without the other
party's prior written consent, and any attempted assignment,
transfer or delegation without such prior written consent shall
be voidable at the sole option of such other party.
Notwithstanding the foregoing, each party (or its permitted
successive assignees or transferees hereunder) may assign or
transfer this Agreement as a whole without consent to an entity
that succeeds to all or substantially all of the business or
assets of such party. Without limiting the foregoing, this
Agreement will be binding upon and inure to the benefit of the
parties and their permitted successors and assigns.
Section 8.9 Severability. If any term or other provision of
this Agreement is determined by a nonappealable decision of a
court, administrative agency or arbitrator to be invalid, illegal
or incapable of being enforced by any rule of law or public
policy, all other conditions and provisions of this Agreement
shall nevertheless remain in full force and effect so long as the
economic or legal substance of the transactions contemplated
hereby is not affected in any manner materially adverse to either
party. Upon such determination that any term or other provision
is invalid, illegal or incapable of being enforced, the parties
hereto shall negotiate in good faith to modify this Agreement so
as to effect the original intent of the parties as closely as
possible in an acceptable manner to the end that the transactions
contemplated hereby are fulfilled to the fullest extent possible.
Section 8.10 Failure Or Indulgence Not Waiver; Remedies
Cumulative. No failure or delay on the part of either party
hereto in the exercise of any right hereunder shall impair such
right or be construed to be a waiver of, or acquiescence in, any
breach of any representation, warranty or agreement herein, nor
shall any single or partial exercise of any such right preclude
other or further exercise thereof or of any other right. All
rights and remedies existing under this Agreement are cumulative
to, and not exclusive of, any rights or remedies otherwise
available.
Section 8.11 Amendment. No change or amendment will be made to
this Agreement except by an instrument in writing signed on
behalf of each of the parties to such agreement.
Section 8.12 Counterparts. This Agreement may be executed in
two or more counterparts, all of which, taken together, shall be
considered to be one and the same instrument.
Section 8.13 Governmental Approval. The parties acknowledge
that in the past they have Licensed Technology to each other in
accordance with certain existing regulatory authority. The
parties intend to implement this Agreement to the fullest extent
permissible under such existing regulatory authority and to
cooperate toward obtaining and maintaining in effect such
governmental agency approvals as may be required in order to
implement this Agreement as fully as possible in accordance with
its terms, and to cooperate so as to revise and mutually agree on
such revisions as become necessary in the event regulatory
approval is withheld.
WHEREFORE, the parties have signed this Intellectual
Property Ownership Agreement effective as of the date first set
forth above.
ALLEGHENY ENERGY, INC. [___________________________]
By: _________________________ By: ________________________________
Name: Name:
Title: Title:
ANNEX A
SUPPLY IP
