EXHIBIT 4.1
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ATLAS BRADFORD TECHNOLOGY SUBLICENSE AGREEMENT
by and between
TENARIS CONNECTIONS BV.
and
TUBOS XX XXXXX DE MEXICO S.A.
Dated May 24, 2002
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ATLAS BRADFORD TECHNOLOGY SUBLICENSE AGREEMENT
This Atlas Bradford Technology Sublicense Agreement (this "Agreement") is
entered into as of May 24, 2002, by and between Tenaris Connection BV, a
corporation organized and existing under the laws of The Netherlands, having its
offices at Xxxxxxx Xxxxxxxxx 000, 0000 XX, Xxxxxxxxxx Shiphol, Amsterdam
(hereinafter referred to as "Tenaris") a wholly-owned subsidiary of Tenaris
Connections Ltd., a corporation organized and existing under the laws of
Princedom of Liechtenstein, having its offices at Prafadant 11 949 Vaduz,
Princedom of Liechtenstein (hereinafter "Tenaris-L") and Tubos xx Xxxxx de
Mexico S.A., a corporation organized and existing under the laws of Mexico,
having its principal place of business at Xx 000.0 Xxxxxxxxx Xxxxxx-Xxxxxx,
Xxxxxxxx, Xxxxxx, (hereinafter "Licensee"):
WHEREAS, as of June 19th, 1998, Tenaris-L (formerly known as DST
Distributors of Steel Tubes Ltd.) and Grant Prideco, Inc. ("Grant") have entered
into a Master Technology License Agreement pursuant to which Grant has granted
Tenaris-L the following: (i) the right to sub-license the use of certain
Patents; (ii) the right to sub-license certain technical information and
know-how, in each case, relating to the Threading and Reconstruction of Atlas
Bradford Oil Field Connections, and (iii) the right to sub-license certain
trademarks, commercial names and other designations used in connection with the
manufacture and sale of Atlas Bradford Connections;
WHEREAS, Tenaris-L has assigned in favor of Tenaris its rights to
sub-license certain technology, trademarks and Patents under the terms set forth
in the Master Technology License Agreement;
WHEREAS, Licensee is in the business of providing products and services
to the oil and gas drilling industry;
WHEREAS, Tenaris is willing to grant technology, patent and trademark
licenses and to provide technical assistance to Licensee under certain
conditions;
NOW THEREFORE, in consideration of the premises and of the covenants
and undertakings of the Parties herein below, the sufficiency of which is hereby
acknowledged, Tenaris and Licensee agree as follows:
ARTICLE 1. DEFINITIONS
Unless otherwise defined or the context otherwise requires, capitalized terms
shall have the meanings assigned to them in Schedule "A".
ARTICLE 2. LICENSE
SECTION 2.1 GRANTING OF LICENSES
Subject to the terms and conditions of this Agreement Tenaris hereby grants
Licensee the following licenses:
Sub-section 2.1.1 Threading and Reconstruction of Full Length
Products
A non-exclusive license (without right to sub-license) to Thread and
Reconstruct Atlas Bradford Oil Field Connections on full length
Products of all grades in the Territory.
Sub-section 2.1.2 Threading and Reconstruction of Accessory
Equipment
A non-exclusive license (without right to sub-license) to Thread and
Reconstruct Accessory Equipment with Atlas Bradford Oil Field
Connections of all grades in the Territory.
Sub-section 2.1.3 Sale of threaded Products and Accessory
Equipment
A non-exclusive license (without right to sub-license) to sell
worldwide (except for the United States of America) Products and
Accessory Equipment Threaded with Atlas Bradford Oil Field Connections
in accordance with this Agreement.
Sub-section 2.1.4 Use of Trademarks
A non-exclusive license to use Trademarks for the sale and marketing of
Atlas Bradford Oil Field Connections on Products and Accessory
Equipment that have been Threaded or Reconstructed by Licensees
pursuant to this Agreement.
SECTION 2.2 RESTRICTED USE
(a) Licensee shall have no right or license to use Technology, Patents or
Trademarks for any purpose other than the Threading, Reconstruction,
use and sale of Atlas Bradford Oil Field Connections on Products and
Accessory Equipment in strict accord with the terms and conditions of
this Agreement. Licensee shall also restrict its distributors, agents
and customers (other than end users who may purchase Products and
Accessory Equipment for their use) from reselling in the Grant
Territory (other than Canada) or for use in the Grant Territory (other
than Canada) Products or Accessory Equipment that has been Threaded,
Reconstructed or sold by Licensee.
(b) Licensee shall notify its distributors, agents and significant
international customers, by means of a notice provided by Tenaris, that
(i) Licensee has been granted the non-exclusive licenses to the Atlas
Bradford Connections
contemplated under this Agreement, excluding rights to the Atlas
Bradford Connections in the Grant Territory which have been retained by
Grant, (ii) except for customers who are end users purchasing for their
own use, no Products Threaded with Atlas Bradford Connections sold or
provided by Licensee may be resold or used in the Grant Territory
(other than Canada), (iii) if the customer desires Atlas Bradford Oil
Field Connections for use in the Grant Territory (other than Canada),
Licensee recommends that it should seek those Connections from Grant
and (iv) if the customer who is an end user purchases any Atlas
Bradford Oil Field Connections for ultimate use in the Grant Territory
(other than Canada), the customer is requested by Licensee to advise
Licensee of the sale or use. Licensee further agrees that, while
Licensee will not make any sale of Accessory Equipment Product with an
Atlas Bradford Oil Field Connection to a customer that is an end user
if it has actual knowledge that the sale to the end user of the Atlas
Bradford Oil Field Connection is specifically intended to be resold or
used in the Grant Territory (other than Canada), Licensee shall not be
required to make prior inquiry from a customer that is an end user of
the Product or Accessory Equipment and not engaged in the resale or
distribution of Products or Accessory Equipment regarding any order
received by it with respect to the territory in which the Atlas
Bradford Connection is to be sold or used and may rely solely on the
purchase order and other communications received at the time the order
is placed. Licensee further shall not be deemed to have actual
knowledge that an order is for sale in or use in the Grant Territory
(other than Canada) solely by reason of Grant or Tenaris advising
Licensee that it believes the order is for sale in or use in the Grant
Territory (other than Canada).
(c) Licensee shall have no rights to Thread or Reconstruct Connections on
Products or Accessory Equipment for, or to sell or ship Atlas Bradford
Oil Field Connections on Products or Accessory Equipment incorporating
Technology, Patents or Trademarks to persons located in the United
States or its offshore waters or territories or any country or other
location in which it would be unlawful for a licensee of Grant to do so
or for which an export license is required by any applicable
governmental entity absent the receipt of such license or any
applicable governmental approvals. Upon Licensee's request, Tenaris
shall, at Licensee's sole cost, give reasonable assistance to support
Licensee's efforts to obtain any required approvals.
(d) Licensee represents that either: (i) it is not engaged, nor does it
intend to be engaged in the business of the Threading or Reconstruction
of Connections for Products or Accessory Equipment within the Grant
Territory, or (ii) it is engaged, or intends to be engaged in the
business of the Threading or Reconstruction of Connections for Products
or Accessory Equipment within the Grant Territory, but reasonably
assurances satisfactory to Grant have been given that Licensee will not
be able to utilize the Technology and Patents in a manner that would
adversely affect Grant; provided, however, no Licensee shall have any
rights under the
Technology and Patents to Thread, Reconstruct or sell Atlas Bradford
Oil Field Connections in the Grant Territory (other than Canada).
SECTION 2.3 PATENT INFRINGEMENT
(a) TENARIS covenants not to bring suit against Licensee for infringement
of any Patent arising from Licensee's performance in strict accord with
this Agreement.
(b) TENARIS shall be primarily responsible for the defense of any
infringement claims made against Licensee relating to the use of the
Technology, Patents or Trademarks. Licensee shall promptly give notice
to TENARIS if Licensee becomes aware of any possible infringement of
the Technology, Patents or Trademarks in the Territory. Licensee shall
have no right to bring any action asserting any infringement of the
Technology, Patents or Trademarks without the prior consent of TENARIS.
TENARIS shall be entitled to participate and control such actions.
Licensee shall not be entitled to take any action that would adversely
affect the right or validity of any Patents, Technology or Trademarks
without the prior consent of TENARIS, which may be withheld in its sole
and absolute discretion.
SECTION 2.4 USE OF PRODUCTS BY END USERS
Use of Products and Accessory Equipment by end users (drilling contractors, oil
companies and other similar users) is not restricted by this Agreement and such
end users may use and transfer such Products and Accessory Equipment freely
throughout the world without restriction hereunder.
SECTION 2.5 COMMISSIONS
(a) Although Licensee shall be restricted from making any sales of Atlas
Bradford Oil Field Connections in the Grant Territory (other than
Canada) and shall be required to restrict sales by distributors, agents
and customers (other than customers who are end users that are
purchasing for their own use and not for resale), in recognition of
TENARIS's obligations deriving from Grant's retained rights to the
Technology and Patents in accordance with the terms of the Master
Technology License Agreement, Licensee shall pay to TENARIS the
following commissions (in addition to any other remedies TENARIS may
have due to Licensee violating this Agreement):
(i) A commission equal to: 4% of any payments made to Licensee by
a customer or distributor for any Atlas Bradford Oil Field
Connections on Products and Accessory Equipment (whether or
not the Product that is Threaded is owned by the customer or
Licensee or its affiliates prior to the sale) that are
Threaded by Licensee during the term of this Agreement and
that are ultimately sold or used in the Grant Territory (other
than Canada) plus any administrative expenses resulting from
collecting the amount set
forth above and any retention or taxes applicable to TENARIS
by the Netherlands fiscal authorities for transactions between
residents of the Netherlands and the country of Licensee;
provided, however, if TENARIS or Licensee cannot or does not
demonstrate the amount of the payment made to Licensee for
such Atlas Bradford Oil Field Connections and TENARIS is able
to demonstrate that such Atlas Bradford Oil Field Connections
were Threaded by Licensee during the term of this Agreement,
then the commission payable will be based on Licensee's then
existing price list for such Atlas Bradford Oil Field
Connections.
(ii) The foregoing commission shall only be applicable to Products
and Accessory Equipment sold or shipped during the term of
this Agreement for consumption in the Grant Territory
(excluding Canada). Licensee shall provide to TENARIS a report
within sixty (60) days following the end of each calendar
quarter setting forth a list of all sales or shipments of
Products and Accessory Equipment containing Atlas Bradford Oil
Field Connections made into the Grant Territory (other than
Canada) by Licensee's distributors, agents and customers
during the quarter. Such report shall be based on information
provided to Licensee from such distributors, agents and
customers, and any other data known to Licensee. TENARIS shall
be entitled to object to such report and if it is able to
demonstrate that sales or shipments of Products of Accessory
Equipment containing Atlas Bradford Oil Field Connections were
made in the Grant Territory (other than Canada) by Licensee.
Licensee shall be required to pay a commission with respect to
such sales.
(iii) Licensee shall pay any required commission contemporaneous
with the delivery of the report under Section 2.5(a)(ii).
(iv) The commissions payable by Licensee under this Section 2.5
shall not be in lieu of any other rights that TENARIS or Grant
may have against Licensee or any distributor or customer of
Licensee for any sales of Atlas Bradford Oil Field Connections
into the Grant Territory (other than Canada) or for use in the
Grant Territory (other than Canada) in violation of this
Agreement; provided, however, that a breach by a distributor
or customer of Licensee of the resale or use restrictions
required under this Agreement shall not be considered a breach
by Licensee under this Agreement and TENARIS shall be entitled
to take action against a distributor or customer that acts in
violation of the resale and use restrictions contained herein;
and provided further, however, that if a distributor or
customer of Licensee violates the resale or use restrictions
required under this Agreement, Licensee shall be obligated to
pay to TENARIS the highest of (i) commission set forth in
Section 2.5(a)(i)or (ii) all profits realized by Licensee from
such distributor or customer on
the sale of such Product and Atlas Bradford Oil Field
Connection that was resold by the distributor or customer in
violation of such restrictions.
(b) Except as provided in this Section 2.5, commissions payable by Licensee
shall be limited to the sales price of the Atlas Bradford Oil Field
Connections as determined above and shall be net of discounts and not
include taxes, shipping, delivery, insurance and other similar charges
or the price of Products or Accessory Equipment on which the Atlas
Bradford Oil Field Connections is threaded.
(c) All commissions payable by Licensee under this Section 2.5 shall be
paid to an account designated by TENARIS from time to time. All
commissions provided for hereunder shall be subject to any applicable
withholding or other similar taxes.
ARTICLE 3. PAYMENTS
SECTION 3.1 ROYALTIES
In consideration of the licenses granted herein, Licensee shall pay TENARIS
royalty amounts set forth in Schedule "B".
SECTION 3.2 PAYMENT OF ROYALTIES
Royalty payments shall accrue with respect of any Atlas Bradford Connection
Threaded or Reconstructed pursuant to this Agreement at the moment of its
Threading. Royalties shall be paid in U.S. Dollars by deposit in the bank
account previously designated by Tenaris in writing. Royalties shall be paid
within 60 (sixty) calendar days of the end of each calendar quarter in which
Atlas Bradford Connections have been Threaded. If Licensee fails to make payment
within such period of time (or fails to report the number of Atlas Bradford
Connections Threaded during a calendar quarter), interest on the unpaid amount
shall be due in addition to the principal at the three-month London Interbank
Offered Rate for U.S. dollars in effect at the time, plus 5 (five) percentage
points, until payment is made in full. If the delay in the payment of Royalties
extends for more than 90 days, Tenaris shall be entitled to terminate this
Agreement in accordance with Section 10.6.
SECTION 3.3 TAXES
All payments by Licensee to TENARIS shall be free of all taxes (including VAT)
which shall be borne by the Licensee. In the event that any withholding or
deduction from any payment to be made by Licensee is required in respect of any
taxes, then Licensee will:
(a) pay to the relevant authority the full amount required to be so
withheld or deducted;
(b) promptly forward to TENARIS an official receipt or other documentation
satisfactory to TENARIS evidencing such payment to such authority; and
(c) pay to TENARIS such additional amount or amounts as is or are necessary
to ensure that the net amount actually received by TENARIS will equal
to the full amount TENARIS would have received had no such withholding
or deduction been required.
SECTION 3.4 RECORDS
Licensee shall keep accounting documents and records reflecting complete, all of
the Threading, Reconstruction and sales of Products and Accessory Equipment
Threaded with Atlas Bradford Connections. Such documents and records shall
include all information necessary to calculate the amounts owed hereunder. The
records shall be kept at Licensee's facilities for TENARIS's auditor review for
a period of 4 (four) years following the Threading or Reconstruction of the
licensed Atlas Bradford Connections.
SECTION 3.5 REPORTS
Licensee shall promptly send Tenaris within 30 (thirty) calendar days of the end
of each calendar quarter, a statement in the format set forth in Schedule "C" of
the number of Atlas Bradford Connections Threaded or Reconstructed hereunder in
such quarter and indicating at least the sizes, types, invoices numbers, pricing
of Products, customer name and delivery places for such Atlas Bradford
Connections and calculation of royalties due.
SECTION 3.6 RIGHT TO AUDIT
Tenaris shall be entitled to audit Licensee's accounting records and
documentation related to this Agreement at least twice annually (including, but
not limited to, individual books and those documents mentioned under Section 3.4
above).
Tenaris agrees not to divulge to third parties any information gained on
occasion of such audits.
The cost of the audits shall be borne by Tenaris. However, if such audit should
bring to light any discrepancies between the accounting records or other
documentation and the real quantities of Atlas Bradford Connections Threaded or
Reconstructed and/or sold, or any other negligence in record keeping, Licensee
shall, without prejudice to any other rights or remedies of Tenaris hereunder or
under applicable law (including the termination of this Agreement), pay or
reimburse Tenaris, for the cost of the audit.
ARTICLE 4. CONFIDENTIAL INFORMATION
SECTION 4.1 DELIVERY OF PROPRIETARY DOCUMENTATION
TENARIS will, during the term of this Agreement, provide Licensee with access to
Proprietary Documentation relating to Atlas Bradford Connections. Licensee shall
refrain from: copying or abridging such Proprietary Documentation; providing
such Proprietary Documentation or copies thereof to any third party; or using
such Proprietary Documentation for any purpose other than performance under this
Agreement. Licensee shall promptly return all Proprietary Documentation,
including all copies and abridgments thereof, to TENARIS upon termination of
this Agreement.
SECTION 4.2 EXCHANGE OF CONFIDENTIAL INFORMATION
During the term of this Agreement, each party to this Agreement may or will
receive, directly or indirectly from the other party, information which the
other party considers confidential ("Confidential Information"). Confidential
Information may be received in tangible form, or may be received visually or
orally. The receiving party shall hold in strict confidence, and not to disclose
to third parties, or use for any purpose other than performance under this
Agreement any Confidential Information which the receiving party receives from
the disclosing party either tangible or intangible. Further, the receiving party
shall refrain from disclosing the disclosing party's Confidential Information to
any Person or party, except employees of the receiving party who have a need to
know the Confidential Information in order for the receiving party to perform
and receive its full benefit under this Agreement and who have agreed in writing
to maintain the confidentiality of Confidential Information. The receiving party
shall promptly return all documentation and other tangible things embodying the
disclosing party's Confidential Information which are in the possession of or
under the control of the receiving party, upon termination of this Agreement for
any reason.
The above obligations of confidentiality and non-use of Confidential Information
apply both during the term of this Agreement and thereafter. However, these
obligations of confidentiality and non-use shall not apply to any information
which:
(a) was known to the receiving party, as shown by suitable evidence, at the
time the information was received from the disclosing party and who is
not subject to an obligation of confidentiality to the disclosing
party; or
(b) is available, or becomes available to the public through no fault of
the receiving party, its Affiliates, or agents; or
(c) is disclosed to the receiving party by a third party who is not subject
to an obligation of confidentiality to the disclosing party; or
(d) is required by a final, unappealable order of any court or government
agency having competent jurisdiction over the information; or
(e) is independently developed by any of the parties without reference to
Confidential Information.
ARTICLE 5. MARKING PRODUCTS
SECTION 5.1 OBLIGATION TO XXXX
Licensee shall xxxx each Product or item of Accessory Equipment on which an
Atlas Bradford Connection is Threaded or Reconstructed with marks showing:
(a) the Atlas Bradford Connection was Threaded or Reconstructed by Licensee
under license from TENARIS;
(b) the appropriate logos and Trademark(s) for the Atlas Bradford
Connection; and
(c) the appropriate Patent number or reference to Patent numbers.
SECTION 5.2 USE OF TRADEMARKS
Licensee shall use Trademarks only in conjunction with Atlas Bradford
Connections Threaded or Reconstructed by Licensee at its facilities in the
Territory pursuant to this Agreement and in literature and advertising as
approved in advance by TENARIS. All goodwill relating to the Trademarks shall
belong exclusively to TENARIS and Grant and in the event of a termination of
this Agreement and Licensee's rights with respect to the Trademarks, no payment
shall be due or payable to Licensee. Licensee has no license, either by grant or
inference, to use Trademarks, except as specifically allowed under this
Agreement. Use by Licensee of Trademarks shall inure solely to the benefit of
TENARIS and Grant. Licensee shall refrain from using or seeking registration of
any trademark or trade name the same or confusingly similar to Trademarks, both
during the term of this Agreement and thereafter.
ARTICLE 6. NEW TECHNOLOGY; TECHNOLOGY AND TECHNICAL
ASSISTANCE SALES AND MARKETING
SECTION 6.1 OBLIGATION TO PROVIDE BUSINESS AND TECHNICAL INFORMATION
TENARIS shall make available to Licensee promptly following the execution of
this Agreement business and technical information which, in TENARIS's opinion is
reasonably required to Thread or Reconstruct Atlas Bradford Oil Field
Connections on Products and Accessory Equipment as contemplated under this
Agreement and which has been made available to TENARIS by Grant. Technical
information shall include, as required, drawings, inspection manuals, gauging
manuals, standards and specifications of quality and performance of Atlas
Bradford Connections on Products and Accessory Equipment and manufacturing
processes and procedures. Technical information shall be in the English
language. TENARIS shall make available to Licensee all changes or supplements to
the Technology that are incorporated.
SECTION 6.2 TOOLING AND GAUGES
Licensee shall purchase or rent solely from TENARIS, a TENARIS Affiliate or a
reputable manufacturer approved by TENARIS, the Tooling and Gauges required for
Threading and/or Reconstruction of Atlas Bradford Connections on Products and
Accessory Equipment by Licensee pursuant to the licenses granted hereunder.
Licensee shall follow the procedural rules and policies issued by TENARIS from
time to time relating to the calibration, verification, service or verification
of Gauges against master Gauges.
SECTION 6.3 RIGHT TO INSPECT GAUGES
TENARIS is entitled, but not obligated, to periodically inspect all Gauges used
by Licensee in connection with the Threading and Reconstruction of Atlas
Bradford Connections, upon giving one (1) day prior written notice to Licensee.
TENARIS will provide Licensee with procedures to determine from inspection of
such Gauges when re-calibration is necessary. Licensee will be responsible for
calibration of the Gauges. Licensee shall bear all costs incurred for the
shipping of Gauges from and to the calibration site, including customs fees,
duties, taxes and deposit expenses.
SECTION 6.4 MAINTENANCE OF GAUGES; LIABILITY FOR DAMAGES
Licensee shall return to Tenaris the leased Gauges in their entirety and
functionality, and in the event of damages (beyond normal wear and tear),
Licensee shall be responsible for repairing or replacing such Gauges.
SECTION 6.5 TRAINING OF PERSONNEL
Licensee may, from time to time, at its own expense send a reasonable number of
employees to the manufacturing facility of any Affiliate of Tenaris for a
reasonable period of time, for the purpose of receiving technical assistance and
studying methods employed by Tenaris in the Threading and Reconstruction of
Atlas Bradford Connections on Products and Accessory Equipment. The time,
schedule and number of employees will be mutually agreed between Licensee and
Tenaris. Licensee shall indemnify and hold Tenaris harmless from any claim,
award, or damage arising from injury, sickness or death of such employees,
including the injury, sickness or death resulting from the sole or contributory
negligence of Tenaris, its employees, officers or agents. Licensee shall pay all
salaries or wages, and all expenses of Licensee's representatives sent to
Tenaris' facilities and shall pay Tenaris a fee per person for each day of
training, subject to an annual increase (effective for training provided from
January 1, 2003) equal to the annual change in the United States Producers Price
Index occurred during the preceding year.
SECTION 6.6 AVAILABILITY OF SPECIALISTS
At the request of Licensee, TENARIS shall provide technical specialists to
consult with Licensee concerning Threading and Reconstruction of Atlas Bradford
Oil Field Connections on Products and Accessory Equipment, and assist Licensee
with any problems that may arise in relation thereto. Should Licensee require
the services of technical specialists at any place other than the manufacturing
facility of any Affiliate of TENARIS, Licensee will be required to pay to
TENARIS the amount of all reasonable travel and living expenses for the
technical specialist provided at TENARIS's then current daily rate, (present
daily rate is US$ 500.00 and shall be increased by no more than 5% in any one
year), for each day a technical specialist is away from his home office.
Provision of technical specialists shall depend upon availability. Should
Licensee's requirements cause TENARIS to hire technical specialists that are not
part of to TENARIS's personnel, the full cost of such technical specialists
shall be borne by Licensee.
SECTION 6.7 FIELD SERVICE
Unless otherwise agreed upon by the Parties, TENARIS shall not provide any
technical assistance for field service for Products or Accessory Equipment
Threaded or Reconstructed by Licensee under this Agreement.
SECTION 6.8 CUSTOMER QUALIFICATION TESTS
TENARIS shall conduct customer qualification tests requested by Licensee subject
to Licensee bearing the costs incurred in such qualification.
SECTION 6.9 MAINTENANCE OF INFORMATION, GAUGES AND TOOLING
Licensee shall be responsible for the maintenance of all Proprietary
Documentation, Confidential Information and Tooling provided to it. This
includes proper storage, inventory, and protection as deemed necessary and as
directed by TENARIS. Further, Licensee shall follow all procedures established
by TENARIS concerning the maintenance and inventory of manuals, drawings, other
Proprietary Documentation, and Gauges. Repair or replacement of damaged or lost
manuals, drawings, and Gauges will be charged to Licensee, normal wear and tear
excepted.
SECTION 6.10 BREACH OF MAINTENANCE AND NON-DISCLOSURE OBLIGATION
In the event that any Proprietary Documentation, Confidential Information,
Technology or Gauges, in whole or in part, or any reproduction of same, is found
outside the receiving party's possession without prior written consent of the
disclosing party in a manner that would reasonably lead one to believe that the
receiving party has materially breached its obligations hereunder, then the
disclosing party has, in addition to its other legal remedies, the right to
terminate this Agreement in accordance with Section 10.6, without any right to a
cure period. Each of the Parties shall also be entitled to seek
injunctive relief for a breach of this Section 6.10 without the necessity of
proving irreparable harm and without posting bond.
SECTION 6.11 SALES LITERATURE
Licensee shall obtain TENARIS's written approval on all sales literature for
Atlas Bradford Connections before such literature is distributed.
SECTION 6.12 LICENSEE IMPROVEMENTS
Should Licensee develop any modifications or improvements in the design or
manufacture of Atlas Bradford Oil Field Connections using Patents or Technology,
Licensee shall communicate such modifications or improvements to TENARIS and
hereby grants a royalty-free non-exclusive license to TENARIS and Grant to make,
use, sub-license and sell Atlas Bradford Oil Field Connections on Products and
Accessory Equipment incorporating such technology under terms and conditions
similar to those provided in this Agreement, and only for as long as Licensee is
allowed to use the Patents and Technology, except in the case of termination of
this Agreement under Section 10.6, in which case such license would have the
same duration as that of the Patents, if any, disclosed under that license or
would be in force for so long as the know-how disclosed under that license
remained confidential and secret.
ARTICLE 7. PRODUCT QUALITY AND PERFORMANCE
SECTION 7.1 COMPLIANCE OBLIGATIONS
Licensee understands that the safety of Atlas Bradford Connections and
protection of Trademarks are primary reasons for maintaining the quality and
performance of the licensed Atlas Bradford Connections. In this regard Licensee
shall at all times provide trained personnel and operate its facilities in the
manner necessary to Thread or Reconstruct Atlas Bradford Oil Field Connections
in accordance with Technology and Patents and in strict conformance to the
specifications and standards of quality directed by TENARIS from time to time.
Licensee shall comply with all manufacturing procedures, finishing and gauging
practices set forth in the Technology and Patents. Any changes in manufacturing
procedures, such as threading, finishing and gauging shall be made only with
TENARIS's prior written consent. In the event any Atlas Bradford Connections
that are Threaded or Reconstructed by Licensee fall to comply with the above
mentioned standards and specifications of quality, Licensee shall refrain from
marking any non-complying connections with any Trademark. To assure compliance
with this provision, TENARIS shall make available to Licensee on an ongoing
basis Grant's current specifications and standards for finishing.
SECTION 7.2 CERTIFICATION TO THREAD
As a condition precedent to the validity of the licenses granted herein,
Licensee shall obtain a certification by Tenaris of its ability to thread Atlas
Bradford Connections in
accordance with Technology. In order to obtain such certification Licensee shall
provide Tenaris with samples of Atlas Bradford Connections machined and/or
processed in the facility which meet Tenaris' standards and specifications of
quality and performance. Final certification, following the sample review, shall
be within the sole discretion of Tenaris. Thereafter, Tenaris may require at any
time the performance of tests. Failure to meet Tenaris' standards at any time
may result, notwithstanding any other remedy available, in termination under
Section 10.6.
SECTION 7.3 LICENSEE EVALUATION QUESTIONNAIRE
Licensee shall be required to complete and respond to evaluation questionnaires
in order to allow TENARIS to review technical and quality performance by
Licensee. Tenaris shall be entitled to make site evaluations on licensee's
facilities to review such technical and quality performance. TENARIS shall be
entitled to terminate this Agreement if Licensee does not meet TENARIS standards
of technical or quality performance.
SECTION 7.4 OBLIGATION TO PROVIDE ACCESS TO LICENSEE'S FACILITIES
Upon their request, Licensee shall provide free access to its facilities to
Tenaris officials assigned to perform inspections under Sections Section 6.3.
and Section 7.3.
SECTION 7.5 QUALITY PROBLEMS
TENARIS shall cooperate to resolve problems Licensee may have in complying with
Atlas Bradford Connection standards and specifications of quality. In the event
Atlas Bradford Connections that are Threaded or Reconstructed by Licensee fail
to comply with the Atlas Bradford standards and specifications of quality, then
Licensee shall refrain from marketing or selling such non-conforming Atlas
Bradford Connections until such time as the problems causing such non
conformance are solved. In the event that Licensee fails to resolve such
problems within reasonable time, Tenaris may terminate this Agreement by
notifying thereof to Licensee.
ARTICLE 8. WARRANTY
SECTION 8.1 WARRANTY
TENARIS warrants that the Technology supplied to Licensee pursuant to this
agreement shall conform to good engineering practice and, if properly applied
will allow Threading and Reconstruction of products meeting the standards and
specifications employed by Grant in the Threading and Reconstruction of the same
products. TENARIS makes no other or further warranties, either express or
implied, including title, performance, fitness for a particular purpose or use,
or merchantability. Without prejudice to the indemnification provisions herein,
TENARIS's sole obligation to Licensee under this warranty is limited to
replacement of the nonconforming Technology with Technology conforming to the
warranty.
SECTION 8.2 EXCLUSION OF TOOLING
Tooling, including thread form inserts, groove tools, Teflon seal rings, and
thread protectors supplied by TENARIS for each Atlas Bradford Oil Field
Connection may not be manufactured by Tenaris or Grant. Accordingly, Licensee
agrees that TENARIS shall not be warrantor with respect to any threadform
inserts, groove tools, Teflon seal rings, thread protectors or other tooling
which licensee may purchase directly (subject to Section 6.2) from any vendor.
Licensee shall be responsible for the inspection of such Tooling from any
vendors.
SECTION 8.3 WARRANTY TO CUSTOMERS
Whenever market practice may allow it, Licensee shall use reasonable efforts to
limit its warranty to customers for all Atlas Bradford Oil Field Connections on
Products and Accessory Equipment Threaded or Reconstructed by it to the terms
stated in Schedule "D".
ARTICLE 9. INDEMNITY
(a) Licensee and TENARIS; shall indemnify and hold harmless the respective
other parry, its directors, officers and employees from any loss,
damage or destruction of the property and equipment of the other party,
its directors, officers, employees and invitees (whether owned by such
one party or by a third party); and from all liability and expense
(including attorney's fees), arising from all claims, demands and
causes of action for the injury or death of any director, officer,
employee or invitee of such one party; arising from an incident or
performance under this Agreement without regard to the cause or causes
thereof or the negligence or fault (active or passive) of any party or
parties or whether based upon any theory of strict liability. In the
event this indemnity is limited by any law, then the indemnity herein
shall apply to the maximum extent allowed in the jurisdiction where the
loss, damage, destruction, injury or death occurs.
(b) Licensee shall indemnify, defend and hold Tenaris, Grant and Tenaris's
Affiliates and their respective officers, directors, employees, agent
stockholders and controlling persons and their respective successors
and assigns harmless from and against in respect of any and all
liabilities, losses, damages, demands, assessments, claims, costs and
expenses (including interest, awards, judgments, penalties,
settlements, fines, diminution in value, cost and expenses incurred in
connection with investigating and defending any claims or causes of
action (including, without limitation, attorneys' fees and expenses,
and all fees and expenses of consultants and other professionals)
actually suffered, incurred or realized by such party arising out of or
resulting from or relating to the use of the Technology, Patents or
Trademarks by Licensee, the Threading, the Reconstruction, sale or use
of any Atlas Bradford Connections on Products by Licensee or for any
breach of any covenant or agreement by Licensee hereunder except:
(i) for the portion of any claim, demand, cause of
action, loss or cost directly attributable to the
willful misconduct of TENARIS; and
(ii) for the conditions of mutual indemnity of ARTICLE
9(a) above.
SECTION 9.1 EXCLUSION OF CONSEQUENTIAL AND OTHER INDIRECT DAMAGES
Neither Party shall be liable to the other for any special, consequential,
incidental, exemplary or punitive damages arising from or incidental to
performance under this Agreement, including without limitation, loss of profits,
revenue or business.
ARTICLE 10. TERM AND TERMINATION
SECTION 10.1 DURATION
This Agreement shall become effective and the rights herein granted shall govern
the relationship of the parties retroactively from June 30, 2001 and continue in
effect until June 29, 2002, and will be automatically renewed every one (1) year
thereafter unless any Party otherwise notifies the other with sixty (60) days
prior written notice, or until the date of termination of the Master Technology
License Agreement (whichever occurs earlier), except as otherwise terminated in
accordance with the terms of this ARTICLE 10.
SECTION 10.2 EARLY TERMINATION BY TENARIS
TENARIS will be entitled to unilaterally terminate this Agreement at any time
prior to the expiration of the Master Technology License Agreement, by giving
Licensee sixty (60) days advanced written notice of its intention to terminate
this Agreement. In such case, Section 10.3 shall apply and TENARIS shall not be
required to pay any compensation to Licensee as a result of any losses suffered
by Licensee due to such unilateral termination by TENARIS.
SECTION 10.3 COMPLETION OF PENDING WORKS BY LICENSEE
Whenever notice of termination is given, during the remaining life of this
Agreement, Licensee shall be entitled to complete the work as scheduled with
their customers on any orders requiring Products or Accessory Equipment placed
prior to the termination notice, irrespective of the agreed time for
performance. Notwithstanding the foregoing, nothing in this Agreement shall be
construed to provide for a license or other rights to use or employ Technology
or Patents in any jurisdiction in which such license or grant of rights would
not be lawful and the term of any license granted hereunder with respect to any
Patent in any jurisdiction shall not extend beyond the expiration date of such
Patent in such jurisdiction.
SECTION 10.4 TERMINATION OF THE MASTER TECHNOLOGY LICENSE AGREEMENT
Should the Master Technology License Agreement terminate for any reason prior to
its initial term, Licensee shall be entitled to apply directly to Grant, subject
to its discretional acceptance, to convert this Agreement into a license from
Grant on the same or substantially the same terms and thereupon the Licensee
shall be entitled to call upon Grant to execute such agreement in favor of
Licensee, provided Licensee is not in default under this Agreement and there are
no other legal impediments for Grant and Licensee to enter into such an
agreement.
SECTION 10.5 INSOLVENCY
In the event Licensee, its successors or assigns shall become bankrupt or
insolvent, or enter into a composition with creditors, or if a receiver shall be
appointed, or if any petition or application for reorganization be filed by or
against it, then this Agreement may be terminated by TENARIS. However, Licensee
shall not be thereby discharged from any liability to TENARIS for any amounts
due at the time of termination or from antecedent liability and the licenses to
TENARIS shall continue in effect without impairment.
SECTION 10.6 TERMINATION FOR DEFAULT
If either Party shall fail to observe or perform any of its material promises,
agreements, or undertakings under this Agreement, and fails to remedy any such
breach within thirty (30) days of notice to do so from the other party, then the
aggrieved party may, upon expiration of the thirty (30) days notice period, give
written notice of termination of this Agreement either forthwith or at a future
date designated by the aggrieved party. The Parties agree that, without
prejudice to any indemnification rights they may be entitled to, the party in
breach of its obligations shall be subject to an injunction of the appropriate
court against any further such violations without the requirement to prove an
inadequate remedy at law or obligation to post bond or similar security.
SECTION 10.7 EFFECT OF TERMINATION
Termination shall cause the end of the Parties' rights and obligations under the
Agreement in relation to the license, with the exception of
(a) the obligations for which compliance is pending at
the time of the termination;
(b) the obligations of confidentiality and non-use of
Confidential Information;
(c) obligations of warranty and indemnity under this
Agreement;
(d) the agreement of the Parties regarding Notices,
Governing Law, Resolution of Disputes and
miscellaneous.
In addition the Parties shall promptly return to Tenaris all Gauges, Tooling,
Proprietary Documentation, Technology and Confidential Information, including
all copies thereof, which are in the possession or under control of Licensee.
ARTICLE 11. NOTICES
All notices, consents, waivers, and other communications under this Agreement
must be in writing and will be deemed to have been duly given when (a) delivered
by hand (with written confirmation of receipt), (b) sent by telecopier (with
written confirmation of receipt), provided that a copy is mailed by certified
mail, return receipt requested, (c) sent by electronic mail or (d) when received
by the addressee, if sent by a recognized overnight delivery service (receipt
requested), in each case to the appropriate addresses and telecopier numbers set
forth below (or to such other addresses and telecopier numbers as a party may
designate by notice to the other party):
TUBOS XX XXXXX DE MEXICO TENARIS CONNECTIONS B.V.
S.A.
Edificio Parque Reforma Xx Xxxxxx 250
Xxxxxx Xxxxxxx 400-17 Piso (2804) Campana
Col. Chapultepec Xxxxxxx Xxxxxxxxx xx Xxxxxx Xxxxx
00000 Xxxxxx, D.F., Mexico Argentina
Attention: Xxxxx Xxxx Attention: Xxxxx Xxxxxxxx
Facsimile No.: 00-0000-000000 Facsimile No.: 00-0000-000000
Telephone No.: 00-0000-000000 Telephone No.: 00-0000-000000
e-mail: xxx@xxxxx.xxx.xx e-mail: xxx@xxxxxxx.xxx
ARTICLE 12. APPROVALS
SECTION 12.1 US EXPORT CONTROL REGULATIONS
The obligations of the Parties under this Agreement may be subject to the export
control regulations of the government of the United States of America, the
European Union and other applicable governments. Compliance of the Parties with
such export control Regulations is a condition of this Agreement. Nothing
contained in this Agreement shall be deemed to have granted any rights contrary
to such laws or Regulations.
SECTION 12.2 REGISTRATION OF THE AGREEMENT
Promptly upon execution and delivery of this Agreement, Licensee shall register,
if required, this Agreement in the appropriate departments, agencies and/or
offices of
government within the Territory, and shall obtain all necessary approvals as may
be required by law in the Territory.
SECTION 12.3 COOPERATION TO OBTAIN APPROVALS AND LICENSES
TENARIS and Licensee shall cooperate in obtaining any approvals or licenses
which may be required in connection with the implementation of any portion of
this Agreement
SECTION 12.4 APPROVAL FROM GRANT
Other than with respect of the payment of royalties, Grant shall be deemed to be
a third party beneficiary of this Agreement, and shall be entitled to enforce
its rights and the rights of TENARIS upon termination of the Master Technology
License Agreement for any cause atttibutable to TENARIS. Licensee shall not be a
third party beneficiary of the Master Technology License Agreement (other than
with respect to Section 2.5(f) thereto, which sets forth that if this Agreement
is terminated due to the termination of the Master Technology Agreement prior to
its initial term, Licensee may apply directly to Grant for the adoption of the
sub-license directly, whereupon Grant shall, if Licensee is not an affiliate of
TENARIS nor is in default and there are no other impediments to such adoption,
adopt the same).
ARTICLE 13. FORCE MAJEURE
If the performance of this Agreement or of any obligation under this Agreement,
except payment of moneys due and maintaining information and documents in
confidence, is prevented, restricted or interfered with by acts of government,
war, rebellion, riot, labor unrest, unavailability of materials, acts of God, or
any other force, act or condition beyond the reasonable control of the parties
("Force Majeure"), the party affected by Force Majeure shall be excused from
such performance to the extent of such prevention, restriction or interference,
provided that the party so affected promptly notifies the other party of the
Force Majeure condition, uses its best efforts to avoid or remove the Force
Majeure condition, and continues performance under this Agreement with utmost
dispatch when such Force Majeure condition is removed. In the event a Force
Majeure condition results in suspension of performance under this Agreement for
a continuous period of 90 days or more, the party not affected by the Force
Majeure condition may terminate this Agreement by giving the affected party
written notice of termination.
ARTICLE 14. GOVERNING LAW; DISPUTE RESOLUTION
SECTION 14.1 GOVERNING LAW
This Agreement shall be deemed made pursuant to, and shall be governed by the
laws of the State of New York, except the conflict of laws provisions thereof.
SECTION 14.2 DISPUTE RESOLUTION
If, during the term of this Agreement or after its termination, disputes,
controversies, claims or differences arising out or relating to this Agreement
(including any questions as to the existence, validity, termination, discharge,
breach or enforceability of this Agreement and of this arbitration clause),
arise between TENARIS and Licensee, the Parties shall take every reasonable
effort to negotiate an amicable settlement. In the event the Parties are unable
to reach a settlement within thirty (30) days after notice by any of the Parties
is given to the other party acknowledging the existence of a dispute to be
solved in accordance with the provisions of this Section 14.2, then either party
may request arbitration pursuant to the then current rules of the International
Chamber of Commerce domiciled in Paris for arbitration in accordance with the
rules of such organization. Each Party shall appoint one arbitrator of its
choice, and the two appointed arbitrators shall appoint a third arbitrator. A
decision agreed to by at least two of the arbitrators shall be the decision of
the arbitration proceeding. In the event either party fails to appoint an
arbitrator or in the event no agreement is reached between the two arbitrators
as to the appointment of the third arbitrator in accordance with the foregoing
provisions, such arbitrator or arbitrators shall be appointed, upon application
of the interested party, by the Court of Arbitration of the International
Chamber of Commerce. Unless the Parties agree otherwise, the site of the
arbitration shall be New York, New York. Arbitration proceedings shall be
conducted in the English language. Any decision or award of the arbitrators
shall be based solely on the provisions of this Agreement, provided, however,
that to the extent that the subject matter for the decision or award is not
provided for in such provisions, the decision or award shall be based upon the
controlling law of this Agreement, excluding the conflicts of laws provisions
thereof. The arbitrators shall not be requested nor shall they have the power to
render any decision or award except in accordance with the preceding sentence.
The award rendered in any arbitration commenced hereunder shall be final and
conclusive and judgment thereon may be entered in any court having jurisdiction
for its enforcement. Neither party shall appeal to any court from the decision
of the arbitration panel. In addition, except for injunctive relief in aid of
arbitration, neither party shall have any right to commence or maintain any suit
or legal proceeding concerning a dispute hereunder until the dispute has been
determined in accordance with the arbitration procedure provided for herein and
then only for enforcement of the award rendered in such arbitration. Pending
settlement of any dispute, the parties shall abide by their obligations under
this Agreement without prejudice to a final adjustment in accordance with an
award rendered in an arbitration settling such dispute. A party may be entitled
to receive injunctive relief from a court of competent jurisdiction in aid of
arbitration.
ARTICLE 15. ASSIGNMENT, SUBLICENSING AND SUB-
CONTRACTING
SECTION 15.1 ASSIGNMENT
The licenses granted in this Agreement are personal to the Licensee and the
Licensee shall not assign the same or grant any sub-license thereunder without
the prior written consent of TENARIS. TENARIS shall be entitled to assign this
Agreement to an Affiliate at any time during the life of the Agreement.
SECTION 15.2 NO SUB-LICENSING OR SUB-CONTRACTING BY LICENSEE
Licensee may not grant any sublicenses in connection with the licenses herein
granted to Licensee nor subcontract any of the works that licensee is entitled
to perform under the licenses.
ARTICLE 16. MISCELLANEOUS
SECTION 16.1 SEVERABILITY
The Parties expressly agree that it is not the intention of either party to
violate any public policy, statute or common law rule; and if any provision(s)
of this Agreement shall be held to be invalid, illegal or unenforceable, in
whole or in part, in any jurisdiction within which the Agreement is to be
performed, or if any appropriate government agency or authority shall require
the Parties to delete any provision of this Agreement, such invalidity,
illegality, enforceability or deletion shall not impair or affect the remaining
provisions of this Agreement, so long as the material purposes of this Agreement
can be determined and effectuated. The Parties shall endeavor in good faith
negotiations to replace the invalid, illegal, unenforceable or deleted
provisions by valid provisions, the effect of which comes as close as legally
possible to the intention of the parties upon entering into this Agreement;
provided, however that any of the Parties shall be entitled to terminate the
Agreement should any provision of the Agreement is held to be invalid, illegal
or unenforceable in whole or in part.
SECTION 16.2 NON WAIVER
The failure of one party hereto to enforce at any time any of the provisions of
this Agreement, or exercise any rights or any elections herein provided, shall
in no way be considered to be a waiver of such provisions, rights or elections
or in any way to affect the validity of this Agreement. The exercise by such
party of any rights or any elections under the terms of this Agreement shall not
preclude or prejudice such party from exercising the same or any other rights or
elections it may have under this Agreement.
SECTION 16.3 ENTIRE AGREEMENT
This Agreement contains the entire Agreement between the parties applying to the
matters herein contained and has been entered into relying only upon the
provisions contained herein and not upon any other representation by either of
the Parties. This Agreement supersedes all representations, agreement,
statements and understandings whether written or oral, relating to such matters
made prior to execution of this Agreement. This Agreement can only be amended by
an agreement in writing executed by the Parties hereto. This Agreement may not
be modified, supplemented, explained or waived except as agreed to in a writing
executed by both parties, and subject to the approval of Grant in accordance
with the terms of Section 12.4.
SECTION 16.4 HEADINGS
The headings used in this Agreement are inserted for convenience and
identification only, and are not intended to describe, interpret, define, or
limit the scope, extent or intention of this Agreement or any provision hereof.
SECTION 16.5 CHOICE OF LANGUAGE
This Agreement has been prepared in English and, notwithstanding any translation
of this Agreement into any other language, the English version of this Agreement
shall control in all respects.
IN WITNESS WHEREOF, each party has caused this Agreement in multiple original to
be subscribed by duly authorized representative on the Effective Date.
TENARIS CONNECTIONS B.V. TUBOS XX XXXXX DE MEXICO S.A.
By: /s/ Xxxxxx Xxx By: /s/ Xxxxx Xxxx /s/ Xxxxxxx Xxxxxxxxx
Name: HBM Europe B.V. Name: Xxxxx Xxxx / Xxxxxxx Xxxxxxxxx
Title: Managing Director Title:
SCHEDULE A - DEFINITIONS
SCHEDULE B - ROYALTIES
SCHEDULE C - FORM OF STATEMENT OF SECTION 3.5
SCHEDULE D - TUBOS XX XXXXX DE MEXICO S.A. WARRANTY TO CUSTOMERS
SCHEDULE E - LIST OF LICENSED CONNECTIONS
SCHEDULE F - PATENTS
SCHEDULE G - TRADEMARKS
TENARIS CONNECTIONS B.V./TUBOS XX XXXXX DE MEXICO S.A.
ATLAS BRADFORD TECHNOLOGY SUBLICENSE AGREEMENT
SCHEDULE "A"
DEFINITIONS
1. "ACCESSORY EQUIPMENT" shall mean the threaded items necessary to
complete a well to produce oil and gas, such as crossovers, connectors,
pup joints, liner hangers, landing nipples, packers, packer stringers,
end line pressure control equipment, safety valves, gas lift valve
mandrels, lift plugs, lift caps, hydrostatic test plugs, hydrostatic
test caps, handling plugs, handling caps, discharge head hangers, float
shoes, float guides, float collars, flow couplings, collars, blast
joints, tubing anchors, side pocket mandrels, couplings and similar
equipment as defined in API Standards series 5, latest edition, but
excluding the items, casing, and tubing.
2. "AFFILIATE" of any specified Person means any other Person directly or
indirectly controlling or controlled by or under direct or indirect
common control with such specified Person. For the purposes of this
definition, "control" when used with respect to any specified Person
means the power to direct the management and policies of such Person
directly or indirectly, whether through the ownership of voting
securities, by contract or otherwise; and the terms "controlling" and
"controlled" have meanings correlative to the foregoing.
3. "ATLAS BRADFORD CONNECTIONS" means the current line of Atlas Bradford
Connections described in Schedule "E" and any additions or
modifications made to that product line in the future.
4. "ATLAS BRADFORD OIL FIELD CONNECTIONS" mean Oil Field Connections that
utilize an Atlas Bradford Connection.
5. "CONNECTIONS" means premium connections for Products and Accessory
Equipment and shall specifically exclude API and similar connections.
6. "GAUGES", means such TENARIS's proprietary gauges and gauge tools
necessary for Licensee to Thread or Reconstruct Atlas Bradford
Connections on Products and Accessory Equipment pursuant to the
licenses granted hereunder to it.
7. "GRANT TERRITORY" means the United States of America, Canada and their
respective offshore waters and territories (including any country or
jurisdiction that may in the future lie within the current territorial
boundaries of the United States of America, Canada and its respective
offshore waters and territories).
8. "MASTER TECHNOLOGY AGREEMENT" shall have the meaning assigned to it in
the first Whereas of this Agreement.
9. "OIL FIELD CONNECTIONS" mean Connections for (i) carbon and chromium
steel tubular Products having an outside diameter of less than 20" and
designed for the production of crude oil and (ii) Accessory Equipment;
provided "Oil Field Connections" shall specifically exclude (a) API and
similar connections, (b) Connections utilizing XL Technology and (c)
Connections used for marine Products and drill pipe. Chromium steel
shall include, but not be limited to, 13% Cr, Super 13% Cr, 22% Cr,
Duplex and Super Duplex. "Products" shall not include connections for
tubular components and Accessory Equipment made of titanium, graphite,
nickel, nickel steel, composite materials, bimetallic lined, or other
non-carbon steel materials.
10. "PATENTS" means all Patents and Patent applications relating to the
Threading or Reconstruction of Atlas Bradford Oil Field Connections on
Products and Accessory Equipment described in Schedule "F" and future
Patents and Patent applications to the extent added as provided in this
Agreement.
11. "PERSON" means any individual, corporation, partnership, joint venture,
association, joint-stock company, trust, unincorporated organization or
government or any agency or political subdivision thereof.
12. "PRODUCTS" means tubular products excluding drill pipe, manufactured
under API 5CT specifications.
13. "PROPRIETARY DOCUMENTATION" means any drawing or document, in either
man-readable or machine-readable form, or any tangible thing which is
the property of the Parties, including without limitation all price
lists, discount sheets, customer lists, supplier lists, quotations,
analytical data, market data, engineering data, drawings, computer
software, manuals, specifications, standards, designs, methods,
procedures, techniques, formulations, instruments, and other business
and technical information in tangible form which are the property of
either of the Parties.
14. "RECONSTRUCT" means re-cutting a worn or damaged thread for Atlas
Bradford Connections on Products and Accessory Equipment.
15. "TECHNOLOGY" means all current (and future to the extent provided in
this Agreement) technical information which TENARIS has the right to
license in the Territory and which is reasonably necessary for Licensee
to Thread or Reconstruct Atlas Bradford Oil Field Connections on
Products and Accessory Equipment, including Grant data, methods,
procedures, specifications, standards, drawings, know-how, manuals,
Proprietary Documentation and Confidential Information. Notwithstanding
the foregoing, Technology shall not include any XL Technology.
16. "TENARIS" means Tenaris-Connections BV.
17. "TERRITORY" means Mexico and its offshore waters.
18. "THREAD" and "THREADING" means the processes of cutting threads
embodying the Technology and Patents licensed hereunder.
19. "TOOLING" means tooling and accessories made to a party's specification
(either by a party hereto or any other Person) for use in Threading or
Reconstruction of Atlas Bradford Connections on Products or Accessory
Equipment in accordance with a party's Technology or Patents, including
without limitation thread form inserts, groove tools, Teflon seal
rings, thread protectors.
20. "TRADEMARKS" means those current trademarks and trade names listed in
Schedule "G" and any future trademarks and trade names that may
identify Atlas Bradford Connections which are or may be the subject of
a license under this Agreement, both registered and unregistered.
21. "XL TECHNOLOGY" means the technology, Patents and other intellectual
property currently owned or utilized by XLS Systems, Inc. or to which
XLS Systems, Inc. and its subsidiaries has a right or license to use or
exploit, including all technology relating to the Connections currently
Threaded and Reconstructed by it and the technology, Patents and
know-how licensed to or by it under its license agreement with Hydril
Company.
TENARIS CONNECTIONS B.V./TUBOS XX XXXXX DE MEXICO S.A.
ATLAS BRADFORD TECHNOLOGY SUBLICENSE AGREEMENT
SCHEDULE "B"
ROYALTIES
ATLAS BRADFORD PREMIUM CONNECTIONS
In consideration of the sublicenses granted herein by TENARIS to Licensee,
Licensee shall pay TENARIS royalties, as follows:
a) for Threading:
(1) for full length Products of 9% or less Cr threaded with Atlas Bradford
Oil Field Connections, the royalty shall be six per cent (6%) of the
Net Selling Price of the tubular product;
(2) for full length Products of more than 9% Cr threaded with Atlas
Bradford Oil Field Connections, the royalty shall be three percent (3%)
of the Net Selling Price of the tubular product;
(3) for couplings machined to the "modified" coupling design, the royalty
shall be two percent (2%) of the Net Selling Price of the couplings.
b) for Reconstruction of Products and Threading and Reconstruction of
Accessory Equipment:
SIZES (INCHES) USD/END
2 3/8" through 3 1/2" 10
4" through 5 1/2" 15
6 5/8" through 7 5/8" 20
8" through 9 5/8" 25
10 3/4" through 14" 34
Longer than 14" 45
Modified couplings (groove only) 10 per coupling
NOTES: If accessory or joint of pipe (pin or box) is machined on both ends, the
royalty will be twice the amount shown above.
A complete pipe joint with coupling bucked on or also a pin-pin pipe joint
without coupling will be considered as two ends for the purpose of royalty
payment.
TENARIS CONNECTIONS B.V./TUBOS XX XXXXX DE MEXICO S.A.
ATLAS BRADFORD TECHNOLOGY SUBLICENSE AGREEMENT
SCHEDULE "C"
FORM OF STATEMENT OF SECTION 3.5
FORM OF STATEMENT OF SECTION 3.5
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ROYALTY AND GAUGES RENT REPORT REGARDING CUT OF TENARIS CONNECTIONS
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LICENCEE FIRM LOCATION LICENCE AGREEM. NO
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YEAR QUARTERS - FROM MONTH: TO MONTH: DOC. PAGE: OF: DOC. ISSUE DATE:
------------------------------------------------------------------------------------------------------------------------------------
LICENCEE'S CONTACT NAME FAX NO PHONE NO E MAIL:
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THD. QUANTITY ROYALTY AMOUNT
PURCHASE INVOICE INVOICE CONNECTION STEEL THREAD ----------------------------------------
ORDER NUMBER CUSTOMER NUMBER DATE THREADED O.D. W.T. GRADE TYPE PIN BOX EACH ONE TOTAL
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GRAND TOTAL GR. TOTAL
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GAUGE RENT AMOUNT
PURCHASE -----------------------------
ORDER NUMBER PER DAY NO. OF DAYS TOTAL
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GRAND TOTAL
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NOTES
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CONTACT NAME - Xxxxxx Xxxxxx FAX # 0000 0000 000000
ADDRESS: XX XXXXXX 000 - XXXXXXX (0000) XXXXXX XXXXX - XXXXXXXXX PHONE # 0000 0000 000000
E MAIL Xxxxxxx@xxxxxxx.xxx
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- ROYALTY AND GAUGE RENT REPORT, MUST BE SENT TO TENARIS WITHIN 30 DAYS
AFTER END OF EACH QUARTER OF CALENDAR YEAR.
- ALSO IN CASE THAT NO ONE CONNECTION HAS BEEN CUT DURING A QUARTER OF
CALENDAR YEAR, FILL IN TOP PART OF REPORT, WRITE ON NOTE SPACE "NO
ACTIVITY DURING ABOVE MENTIONED QUARTER OF CALENDAR YEAR," AND SEND IT
TO THE CONTACT ADDRESS.
TENARIS CONNECTIONS B.V./TUBOS XX XXXXX DE MEXICOS S.A.
ATLAS BRADFORD TECHNOLOGY SUBLICENSE AGREEMENT
SCHEDULE "D"
TUBOS XX XXXXX DE MEXICO S.A. WARRANTY TO CUSTOMERS
Licensee warrants that all Materials delivered under this Order shall conform to
the specifications and descriptions listed on the face side hereof or if none
are listed, then to Licensee standard specifications for such Materials. The
foregoing warranty shall continue in effect until such Materials are accepted or
the time period to inspect the same expires, whichever shall first occur, except
for the warranty just given. Licensee HEREBY DISCLAIMS ALL OTHER WARRANTIES OF
EVERY KIND AND CHARACTER WHETHER EXPRESS OR IMPLIED, INCLUDING THOSE RELATING TO
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR INTENDED USE. Any misuse
of Materials or the improper application or alteration thereof after delivery by
Licensee shall be at the Buyer's risk and expense. Provided, however, in the
event the Buyer timely rejects any Materials which fail to conform to the
specifications and descriptions of this Order, then Licensee shall have the
option either to replace such Materials at its sole cost and expense or to give
the Buyer credit as to the price therefore. Unless specifically stated in this
Order to the contrary, Licensee shall not be liable for any transportation,
installation, fabrication, inspection, testing or other expenses incurred by the
Buyer or its customers as a result of any breach of warranty herein. In
addition, any claim made by the Buyer against Licensee shall in no event exceed
the invoice price for the specific Materials in question, nor Licensee be liable
for any consequential or incidental damages which may be suffered or incurred on
account of any nonconforming Materials shipped to the Buyer or its customer, it
being agreed that in all cases Licensee shall have the opportunity to remedy and
correct any breach of warranty in the manner provided above and that the
existence of any nonconforming shipment shall not constitute a default unless
the same reoccurs in more than one instance, and provided Licensee fails to give
adequate written assurances to the Buyer after a demand is made therefore.
TENARIS CONNECTIONS B.V./TUBOS XX XXXXX DE MEXICO S.A.
ATLAS BRADFORD TECHNOLOGY SUBLICENSE AGREEMENT
SCHEDULE "E"
LIST OF LICENSED CONNECTIONS
ATLAS BRADFORD CONNECTIONS
ATLAS BRADFORD CONNECTIONS
TC-II; TC-II SR; RTS-8; RTS-8 PR; RTS-6; RTS-6 PR; ST-L; FL-4S; HD-L; NJO; BIG
HD-L; BIG NJO; BTB; MODIFIED COUPLING; TC-4S., ANJO.
TENARIS CONNECTIONS B.V./TUBOS XX XXXXX DE MEXICO S.A.
ATLAS BRADFORD TECHNOLOGY SUBLICENSE AGREEMENT
SCHEDULE "F"
PATENTS
Grant Patents under which Licensee is licensed by TENARIS for Threading and
Reconstruction, use or sale of Products and Accessory Equipment pursuant to this
Agreement:
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ISSUANCE DATE OF
COUNTRY TITLE PATENT NO. DATE FILING
D/m/y d/m/y
-----------------------------------------------------------------------------------------------
USA 4.345.651 24/08/82 21/03/80
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USA 4.442.894 17/04/84 7/06/82
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USA 4.450.912 29/05/84 7/06/82
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USA 4.531.582 30/07/85 31/10/83
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USA 4.838.068 13/06/89 14/07/88
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USA Method and Apparatus for Forming Aventable 5.029.906 9/07/91 13/07/89
Seal
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USA Tubular Coupling With Ventable Seal 4.893.844 16/01/90 28/08/85
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USA 4.953.622 4/09/90 14/08/89
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USA 4.872.510 10/10/89 30/09/88
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USA Buttress Thread Form 5.092.635 3/03/92 27/04/90
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Canada Method and Apparatus for rethreading 1.193.842 24/09/85 18/10/82
tubular members and resulting product
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USA Threaded connection for enhanced fatigue 2/05/97
resistance
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ISSUANCE DATE OF
COUNTRY TITLE PATENT NO. DATE FILING
D/m/y d/m/y
-----------------------------------------------------------------------------------------------
Japan Threaded pipe joint having improved seal 7/03/90
ring entrapment
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USA Threaded pipe joint having improved seal 5066052 19/11/91 25/01/90
ring entrapment
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USA Threaded pipe joint having improved seal 4944538 31/07/90 8/03/89
ring entrapment
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Japan Threaded connection with energizing groove 7/03/90
(oil field tubular connection)
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USA Threaded connection with energizing groove 5064224 12/11/91 16/02/90
(oil field tubular connection)
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USA Threaded connection with energizing gave 4946201 7/08/90 8/03/89
(oil field tubular connection)
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USA Liner connection 4707001 17/11/87 20/06/86
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Japan Tool joint with internal / external make-up 1417078 15/05/87 17/12/82
shoulder
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TENARIS CONNECTIONS B.V./TUBOS XX XXXXX DE MEXICO S.A.
TECHNOLOGY SUBLICENSE AGREEMENT
SCHEDULE "G"
TRADEMARKS
ATLAS BRADFORD PREMIUM CONNECTIONS
Trademarks under which Licensee is licensed by TENARIS for Threading,
Reconstruction, use or sale of Products and Accessory Equipment pursuant to this
Agreement:
ATLAS XXXXXXXX
XX-II; TC-II SR; RTS-8; RTS-8 PR; RTS-6; RTS-6 PR; ST-L; FL-4S; HD-L; NJO; BIG
HD-L; BIG NJO; BTB; MODIFIED COUPLING; TC-4S, ANJO.
