Exh 10.4
AGREEMENT
This Agreement is made and entered into this 9th day of May , 2001,
by and between
XXXXXXXXXXX Vliesstoffe KG, a limited partnership
duly organized and existing under the
laws of Germany, having its principal
office at Xxxxxxxxx 0-0, 00000 Xxxxxxxx,
Xxxxxxx Xxxxxxxx of Germany (hereinafter
referred to as ,,FREUDENBERG")
and
Xxxxxx Technologies Inc., a corporation duly organized and
existing under the laws of Delaware, having its
principal office at 0000 Xxxxxx Xxxx Xxxxxxxxx,
Xxxxxxx-Xxxxx, Xxxxx Xxxxxxxx 00000, X.X.X.
(hereinafter referred to as,,XXXXXX").
WITNESSETH
WHEREAS, Xxxxxx produces and sells under the trademarks ComforTemp(R) and
Thermasorb(R) Microencapsulated and Bulk Phase Change Material (hereinafter
referred to as MicroPCM),
WHEREAS, Xxxxxx and Freudenberg have entered into a cooperation in relation to
the development and application of MicroPCM for use in apparel, accessories,
footwear and sporting goods applications, medical, packaging, constructions and
building products, transportations markets and applications worldwide,
WHEREAS, Xxxxxx and Freudenberg have jointly developed a technical Invention of
producing thermal controlled nonwovens using MicroPCM,
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WHEREAS, Both Parties acknowledge that this Invention has been equally based on
the contribution of both parties and would not have been possible without the
close cooperation between the parties,
WHEREAS, the inventors of the Invention, Xxxxxx Xxxxxx (employee of Xxxxxx),
Xxxxx X'Xxxxx and Dr. Xxxxx Grynaeus (both employees of Freudenberg) have
jointly applied for UNITED STATES LETTERS PATENT, Reg.-No.09/699,744, with the
title ,,NONWOVEN THERMAL CONTROL MATERIAL",
WHEREAS, Both Parties acknowledge that the quality of MicroPCM needed for a
technically satisfactory exploitation of the Invention can only be reached
through a controlled production of MicroPCM by Xxxxxx,
WHEREAS, Both Parties acknowledge that the production of thermal controlled
nonwovens using phase change materials in accordance with the Invention is
highly sophisticated and in the mutual interest of the parties and the END USERS
should be carried out solely by Freudenberg having the necessary expertise of
producing nonwovens,
WHEREAS, Both Parties acknowledge that significant investments are necessary on
the side of Freudenberg in order to produce a technically advanced product,
Now, therefore, in consideration of the mutual covenants hereinafter set forth,
the parties agree as follows;
1. Definitions
For the purpose of this Agreement, the terms defined in this article shall have
the meaning specified below and shall be applicable to both the singular and the
plural forms.
1.1 ,,Invention" as used in this Agreement shall mean all inventions
disclosed or claimed in the Application for United States Letters
Patent, registration number 09/699, 744 with the title ,,Nonwoven
Thermal Control Material".
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1.2 The ,,Patent" shall mean the ,,Application for United States Letters
Patent", registration number 09/699, 744, with the title ,,Nonwoven
Thermal Control Material" and all subsequent applications claiming only
the Invention as defined under section 1.1 of this Agreement and all
patents, if any, granted hereupon and thereupon.
1.3 ,,Protected Products" shall mean all thermal controlled nonwovens with
MicroPCM which will by use of the Invention and/or in exploitation of
the Patent be developed by either/or both parties and produced by
Freudenberg according to the technical specifications determined by
Xxxxxx as accepted by Freudenberg.
1.4 ,,Competing Products" shall mean all thermal controlled nonwovens with
MicroPCM which will by use of the Invention and/or in exploitation of
the Patent be produced by Freudenberg according to its own technical
specifications.
1.5 ,,Xxxxxx'x Trademarks" shall mean the trademarks ,,ComforTemp(R)",
,,Thermasorb(R)", the,,C-degree " symbol, the,,(0)" (degree) symbol
and,,The Ultimate Degree of Comfort".
1.6 ,,Xxxxxxxxxxx'x Trademarks" shall mean the trademarks which will be
introduced and/or registered in connection with Xxxxxxxxxxx'x Products.
1.7 ,,Territory" shall mean the entire world.
1.8 ,,Affiliate" shall mean, with respect to any PARTY hereto, any other
person or entity directly or indirectly controlling, controlled by, or
under common control with such PARTY. For the purposes of this
definition, ,,control", when used with respect to any person or entity,
means the possession, directly or indirectly, of the power to direct or
cause the direction of a management and policies of such person or
entity, whether through the ownership of voting securities, by contract
or otherwise; and the terms ,,controlling" and ,,controlled" have
meanings correlative to the foregoing.
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2. Interest in the Patent, Subsequent Patent Applications and Costs
2.1 Each party guarantees (i) that the inventors of the Invention employed
by a PARTY have, to the extent legally possible, assigned all of their
interests in the Invention and the Patent to the respective party, and
(ii) that they have and will satisfy claims of their respective
inventors connected therewith.
2.2 Representing both FREUDENBERG and XXXXXX, or representing the joint
inventors as provided for by the applicable law from time to time
Xxxxxxxxxxx Forschungsdienste KG - Patente und Xxxxxx -, 00000
Xxxxxxxx, Xxxxxxx Xxxxxxxx of Germany, shall be responsible for all
subsequent applications for the Patent, provided, however, that XXXXXX
is kept timely informed, XXXXXX can suggest claims to pursue, and
XXXXXX will be given the right to act in any instance, should
FREUDENBERG elect not to do so. In either case, FREUDENBERG and XXXXXX
agree to equally split all expenses (within 30 days of written notice
by FREUDENBERG or XXXXXX, as the case may be) related to these
responsibilities.
2.3 In case the cooperation between the PARTIES under this Agreement
should, during its term, lead to protectable inventions other than the
Invention as defined under Section 1.1 of this Agreement, the PARTY
being, in terms of the Employee Invention Act, employer of the
respective inventor shall own such invention, and shall be entitled to
apply for the corresponding industrial and/or intellectual property
right in its own name and at its own expense.
Inventions made jointly by inventors of both PARTIES shall be jointly
owned by both PARTIES and applications for industrial and/or
intellectual property rights shall be filed by both PARTIES together,
the application proceedings shall be conducted according to the
provisions of Section 2.2 of this Agreement mutatis mutandis. The
industrial and/or intellectual property rights resulting therefrom
shall be administered jointly and be exploited as agreed upon terms and
conditions on a case by case basis. The PARTIES agree that they will
make their best efforts in such negotiations to include such industrial
and/or intellectual property rights into this Agreement. Section 3.3 of
this Agreement also applies to such industrial and/or intellectual
property rights.
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3. Assignment of rights
3.1 No party is entitled to assign its interest in the Patent to a third
party without the other party's prior written consent.
3.2 The aforesaid notwithstanding either party may assign its interest in
the Patent without the consent of the other PArty to any of its
Affiliates. Such assignment does not in any way affect the
corresponding party's obligation to abide by the terms of this
Agreement.
3.3 Each party may at any time waive, in whole or in part, its interest in
the Invention or the Patent. In case a party hereto intends to do so,
it shall inform the other party without delay and assign to the other
party, upon such other party's request, its interest in the Invention
or the Patent, as the case may be. The costs relating to the Patent
(including subsequent applications) shall be borne by the assignee as
of the moment of assignment.
4. Subject matter of the contract
4.1 The parties agree that Freudenberg has, to the extent legally possible,
the exclusive right to manufacture the Protected Products and the
Competing Products during the term of the Patent. Xxxxxx is not
entitled to produce Protected Products within the Territory.
4.2 This Agreement shall apply to the Territory.
5. Purchase obligation
5.1 For the production of the Protected Products and the Competing Products
Freudenberg, during the term of the Patent shall purchase MicroPCM
exclusively
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from Xxxxxx according to the terms and conditions of a supply contract
to be agreed upon between THE PARTIES separately.
5.2 Section 5.1 shall not apply if, to the extent and as long as Xxxxxx is
not able to comply, for whatever reason, with the quantities, the
quality and/or the prices of delivery schedules requested by
FREUDENBERG or agreed upon between the parties.
5.3 Xxxxxx is entitled to supply MicroPCM to third parties. XXXXXX shall at
any and all times satisfy XXXXXXXXXXX'x demand for MicroPCM for the
production of Competing Products with priority over XXXXXXXXXXX'x
demand for MicroPCM for the production of Protected Products.
6. Production of Protected Products
6.1 Xxxxxx undertakes to have produced the Protected Products exclusively
by Freudenberg during the term of the Patent according to the terms and
conditions of the product specifications determined by XXXXXX and
accepted by Freudenberg.
6.2 Section 6.1 shall not apply if, to the extent and as long as
Freudenberg is not able to comply, for whatever reason, with the
quantities, the quality and/or the prices of delivery schedules
requested by Xxxxxx or agreed upon between the parties.
6.3 Freudenberg is entitled to produce Competing Products provided that it
shall at any and all times except as provided for in section 5.3
satisfy with priority XXXXXX'X demand for Protected Products.
Freudenberg has the right to use the Patent and the know-how and the
confidential technical information transferred to it by XXXXXX, if any,
under this Agreement and/or under the Secrecy Agreement executed by the
parties in March 1./3., 2000 for the production or the marketing of
Competing Products.
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6.4 Freudenberg is entitled to have Protected Products manufactured also by
Affiliates and - with the prior consent of XXXXXX - also by other third
parties.
7. Quality Control
7.1 Freudenberg shall produce the Protected Products compliant to the
technical specifications determined by Xxxxxx and accepted by
FREUDENBERG pursuant to section 6.1 of this Agreement. Xxxxxx has the
right to supervise the agreed-upon quality and to reject Protected
Products which do not comply with the technical specifications.
7.2 Xxxxxx will carry out technical tests for this purpose and at its costs
8. Confidentiality
8.1 The parties agree to keep confidential all documents and information
which have been submitted to them by the other party in execution of
this Agreement and not to provide it to third parties other than its
Affiliates both during this Agreement and after its expiration,
provided that such Affiliates abide by the confidentiality obligations
of this Agreement as if they were parties thereto
8.2 The Secrecy Agreement executed by the parties dated March 1./3., 2000
remains in full force and effect under this Agreement.
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9. Duration and Termination of the Agreement
9.1 This Agreement shall remain in full force and effect until refusal,
withdrawal, expiration, avoidance, lapse, abandonment or revocation of
the Patent.
9.2 Each party has the right to terminate this Agreement with a three
months written notice at any time for good cause in case that the other
party breaches its obligations under sections 4.1, 5.1, 6.1 and/or 8.1
this Agreement and does not cure such breach within a reasonable period
of time, however not longer than 30 days from the non-breaching party's
written request to do so.
9.3 Each party is furthermore entitled to terminate this Agreement giving
at least six months written notice with effect as of the end of the
corresponding calender year, however not earlier than with effect as of
December 31, 2005.
9.4 In the case that either PARTY and all of its Affiliates should at any
time decide not to proceed with the business of producing and/or
selling thermal controlled nonwovens with MicroPCM and with any other
business in the context of which the Patent is directly or indirectly
beeing used or exploited, such PARTY shall assign to the other PARTY
its interest in the Patent according to the procedure provided for in
section 3.3 of this Agreement.
10. Use of Trademarks
10.1 Xxxxxx will market Protected Products either by itself or by its
Affiliates solely under trademarks owned by Xxxxxx or said Affilates.
Xxxxxx agrees not to challenge or oppose either by itself or by an
Affiliate in any way the use and registration of Xxxxxxxxxxx'x
Trademarks used on/or in connection with Competing Products by
Freudenberg or its Affiliates. Xxxxxx further agrees that it will
neither by itself nor by an Affiliate use similar marks on/or in
connection with Competing Products.
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10.2 Freudenberg will market Competing Products either by itself or by its
Affiliates solely under its trademarks. Freudenberg agrees not to
challenge or oppose either by itself or by an Affiliate in any way the
use and registration of Xxxxxx'x Trademarks on/or in connection with
Protected Products by Xxxxxx or its Affiliates. Freudenberg further
agrees that it will neither by itself nor by an Affiliate use similar
marks on/or in connection with Protected Products.
11. Communication
11.1 the parties agree that they will use with regard to the
consumer-markets in which they market the Protected Products and
Competing Products respectively their best efforts to prevent a
confusion between XXXXXX'X Trademarks and XXXXXXXXXXX'X Trademarks used
in connection with the corresponding activities. the parties further
understand that in marketing the Protected Products and the Competing
Products respectively they will not make neither directly nor
indirectly any reference to the other PARTY'S trademarks.
11.2 Section 11.1 notwithstanding, XXXXXX can at the industry level with
respect to the sale of Protected Products refer for promotion purposes
to FREUDENBERG`s trademarks, e.g. in press releases, public relation,
stockholder newsletter, product announcements and other publications.
With regard to the sale of Protected Products and Competing Products
respectively FREUDENBERG is entitled to make reference, e.g. in the
above mentioned publications to the trademark ,,Thermasorb(R)" if
FREUDENBERG believes that such reference helps to promote the sale of
such products.
12. This Agreement shall be governed by and construed, interpreted and
enforced in accordance with the laws of the State of North Carolina
without reference to the conflict of laws principles thereof. Any
disputes arising out of this Agreement shall be adjudicated in a court
of competent jurisdiction in North Carolina and nowhere else. Each
party hereby irrevocably submits to the jurisdiction of such court for
the purposes of any suit or other proceeding arising out of this
Agreement.
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13. This Agreement contains the entire Agreement and understanding between
the parties hereto with respect to the subject matter hereof and no
modifications may be made to this Agreement except by a writing signed
by all of the parties hereto.
Wherefore, the parties have caused this Agreement to be duly executed and to
become effective as of the date of the year first above written.
Xxxxxx technologies inc. Xxxxxxxxxxx Vliesstoffe KG
By: /s/ Xxxxxx X. Xxxxxxx By: /s/ Xxxxxxx Xxxxx
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Xxxxxx X. Xxxxxxx Xxxxxxx Xxxxx
Title: President & COO Title: Managing Director & Chairman
Date: May 9, 2001 Date: May 15, 2001
Xxxxxx technologies inc. Xxxxxxxxxxx Vliesstoffe KG
By: /s/ Xxxxxxx X. Xxxxxx By: /s/ Xxxxxxxxx Xxxxxxx
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Xxxxxxx X. Xxxxxx Xxxxxxxxx Xxxxxxx
Title: Chairman & CEO Title: General Manager
Date: May 9, 2001 Date: May 15, 2001
