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EXHIBIT 10.4
AMENDMENT
TO
JOINT DEVELOPMENT AGREEMENT
This Amendment to the Joint Development Agreement, dated January 28, 1999 by
and between Honeywell International, Inc. (formerly AlliedSignal Inc.), a
Delaware corporation acting through its Turbocharging Systems business unit
having an address of 00000 Xxxxxxxxx Xxxxxxxxx, Xxxxx 000, Xxxxxxxx, Xxxxxxxxxx
00000 ("Honeywell") and Turbodyne Technologies, Inc., a Delaware corporation
having an address of 0000 Xxxxxxxxxxx Xxxxxx, Xxxxxxxxxxx, Xxxxxxxxxx 00000 and
Turbodyne Systems, Inc. a Nevada corporation its fully owned subsidiary
(collectively "Turbodyne") (the "Joint Development Agreement"), is entered into
by the Parties on this 15th day of December 1999, Honeywell and Turbodyne shall
be referred to in this Amendment jointly as the "Parties" and individually, as
appropriate, as the "Party".
RECITALS
A. On even date herewith the Parties have entered into an agreement for the
assignment of intellectual property rights and rights to manufacture,
market and sell products in the Turbopac product line (the "Turbopac
Agreement").
B. This Amendment conforms the Joint Development Agreements to the intent of
the Parties in the Turbopac Agreement.
NOW, THEREFORE, in consideration of the Covenants and promises made herein
and in the Turbopac Agreement, in further consideration of the ongoing Joint
Development Agreement and other good and valuable consideration, the sufficiency
of which is acknowledged, the Parties agree to amend the Joint Development
Agreement as follows:
1. Section 3(c) shall be amended to reflect Honeywell's assumption of rights
to the Turbopac products and will read as follows:
c. Following the execution of this Agreement, both of the Parties
shall only engage in activities relating to the design, development,
manufacture, licensing or marketing of the Products or pursue the development of
technology relating to the Products as authorized in this Agreement or the
License Agreement. Honeywell shall have all rights to manufacture, market and
sell or otherwise exploit the Turbopac products as defined in Exhibit B to the
License Agreement. Turbodyne shall have the exclusive worldwide right pursuant
to the terms hereof to supply Components (as hereinafter defined) for the
Turbopac products. Notwithstanding the foregoing, Turbodyne shall be permitted
to continue design and development activities, marketing, sale or other
activities relating to products outside the scope of this Joint Development
Agreement and the License Agreement and AlliedSignal shall have no interest in
such products or activities.
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All schedules and exhibits have been omitted. Any omitted schedule or exhibit
will be furnished supplementally to the Securities and Exchange Commission on
request.
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2. Section 5 shall be amended to add the phrase "Honeywell shall have the
right to offer employment to personnel of Turbodyne engaged in the Development
Program."
3. Section 7(a) shall be amended to read as follows:
a. Pursuant to the License Agreement Honeywell holds the sole world wide
right, subject to the license granted to Turbodyne to manufacture and sell the
Component Parts as defined in 7.b below, to develop, manufacture, market and
sell any electrically assisted charge air product or other engine product,
including electrically assisted turbochargers and turbochargers employing an
electric motor/generator for power assist/take-off, (the "Products") or
employing Developed Intellectual Property as an Improvement under the License
Agreement, including Turbopac products.
3. Section 7(c) shall be amended to delete Turbodyne's retention of rights to
the Turbopac products and shall read as follows:
c. Honeywell under its rights pursuant to paragraph 7.a. grants to
Turbodyne a limited sublicense for the rights to manufacture and sell
electrical motor assistance systems for Cummins BHT turbochargers (the "BHT
Products") in the aftermarket pending development of Honeywell's capability,
capacity and interest in the sale and production of these products.
All terms and provisions of the Joint Development Agreement not specifically
modified or amended herein shall remain in full force and effect. The Joint
Development Agreement shall be interpreted to be in conformance with the terms
and provisions of the Turbopac Agreement, which shall take precedence if any
conflict shall arise.
IN WITNESS WHEREOF, the parties hereto have caused this Amendment to be
duly executed as of the day and year first above written.
Honeywell International Inc. Turbodyne Systems, Inc.
Turbocharging Systems
By: /s/ XXXXXXX XXXXXXXX By: /s/ XXXXXXX X. XXXX
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Name: Xxxxxxx Xxxxxxxx Name: Xxxxxxx X. Xxxx
Title: President Title: President
Turbodyne Technologies, Inc.
By: /s/ XXXXXXX X. XXXX
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Name: Xxxxxxx X. Xxxx
Title: CEO
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