Exhibit 10.18
JOINT VENTURE AGREEMENT
BETWEEN
POLYFUEL, INC., SRI INTERNATIONAL AND PLUG POWER, L.L.C.
THIS JOINT VENTURE AGREEMENT is entered into by and between the parties
identified in Exhibit A (the "Parties").
WHEREAS, the Parties have been selected for participation in the Advanced
Technology Program administered by the National Institute of Standards and
Technology ("NIST") as a joint venture to conduct certain specified research;
WHEREAS, the Parties wish to enter into a joint venture agreement to define
their respective roles and responsibilities and thus successfully satisfy the
objectives of the Program; and
WHEREAS, the Parties have selected Plug Power, L.L.C., to serve as the
Administrator (the "Administrator") for the joint venture and wish to authorize
that organization to perform those functions set forth on Exhibit B,
specifically including executing the NIST Cooperative Agreement and thereby
binding the joint venture to the terms and conditions of that Agreement;
NOW, THEREFORE, the Parties agree as follows:
1. DEFINITIONS
1.1 "Agreement" means this Joint Venture Agreement.
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1.2 "Invention" means any invention that is not a Subject Invention.
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1.3 "Background Patent" means all patents and patent applications that are
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not Subject Patents.
1.4 "Background Technology" means any technical information generated by
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the Parties that is not Subject Technology.
1.5 "Government-Use License" means a nonexclusive, nontransferable,
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irrevocable, paid-up license to practice or have practiced by or on
behalf of the United States throughout the world any Subject
Invention.
1.6 "NIST Cooperative Agreement" means the funding agreement entered
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into between the Advanced Technology Program of the National Institute
of Standards and Technology (NIST) and the joint venture (as executed
by the
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Administrator) for the conduct of the Research Program.
1.7 "Party" or "Parties" means the parties identified in the Form NIST-
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1263 contained in the Proposal and attached to this Agreement as
Exhibit A.
1.8 "Program" or "Research Program" means the research program set forth
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in the Statement of Work attached hereto as Exhibit C.
1.9 "Program Expense" means use of funds by the Parties pursuant to the
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NIST Cooperative Agreement.
1.10 "Proposal" means the proposal submitted by the Parties to the
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Advanced Technology Program, and which has been accepted by the NIST
for funding.
1.11 "Subject Invention" means any invention conceived or first reduced to
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practice by a party or the Parties at Program Expense during the
course of the Program.
1.12 "Subject Patents" shall mean all patents and patent applications
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claiming Subject Inventions.
1.13 "Subject Technology" shall mean any technical information
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generated by a party or the Parties at Program Expense during the
course of the Program.
2. ADMINISTRATION AND GOVERNANCE
2.1 Obligations of the Parties. The parties agree to work together to
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accomplish the objectives of the Program by performing research
directly and through the use of contracts, and to that end agree to
carry out their responsibilities as set forth in the Program and the
NIST Cooperative Agreement. The Parties agree to contribute funds or
in-kind services substantially in the amounts set forth in the Form
NIST-1263 contained in the Proposal, attached hereto as Exhibit D.
2.2 Program Management. The Administrator shall perform the day-to-day
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management and administration of the Program in accordance with all
legal and regulatory requirements, including the NIST Cooperative
Agreement.
2.3 Management Committee. The Management Committee shall direct the
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conduct of the Program in all respects, through the Administrator.
3. PROPRIETARY INFORMATION
3.1 Proprietary Information. Unless otherwise agreed in writing, each of
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the Parties
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agrees that it will not, either during the term of this Agreement or
at any time after its termination, use Subject Technology, Subject
Inventions, Subject Patents, Background Inventions, Background Patents
or Background Technology of any other Party for any purpose except the
Program.
3.2 Exclusions. Background Technology, Subject Inventions, Background
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Inventions and Subject Technology shall not be considered proprietary,
and thus is not subject to the provisions of Paragraph 3.1 above,
which:
(a) is in the public domain at the time of disclosure or thereafter
enters the public domain other than through a breach of this
Agreement; or
(b) is in the possession of the receiving Party prior to its receipt
from the disclosing Party; or
(c) is lawfully obtained from a non-Party under circumstances
permitting the receiving Party to use or disclose the information
without restrictions; or
(d) is independently developed by the receiving Party without
reference to the disclosed information; or
(e) is required to be disclosed as a result of governmental or
judicial action.
4. INTELLECTUAL PROPERTY
The protection, allocation and commercialization of intellectual property
rights, including Subject Inventions, Subject Patents and Subject Technology
under the Research Program, will be as set forth on Exhibit E, attached hereto,
and will be in accordance with the NIST Cooperative Agreement and the Proposal,
and shall include provisions regarding the required Government Use License.
5. TERM
This Agreement may be terminated by any party, without penalty, upon five (5)
days prior written notice prior to the incurrence of Program Expense. After
either party has incurred expenses at Program Expense, the Agreement shall
continue in full force and effect until the Parties' obligations as set forth in
this Agreement and the NIST Cooperative Agreement have been completed, or until
the NIST Cooperative Agreement has been terminated. An individual Party may
cease participation in the Program only in a manner consistent with the NIST
Cooperative Agreement.
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6. LIABILITY, WARRANTY, INSURANCE
6.1 Indemnification. Each Party ("Indemnifying, Party") hereby agrees to
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indemnify, defend and hold the other Party, its employees, officers,
directors and agents ("Indemnified Party"), harmless from and against
any and all damages, liabilities, losses, costs and expenses,
including reasonable attorneys' fees, (collectively, "Damages") to any
third party, suffered or actually incurred by such Indemnified Party
as the result of any action, suit, proceeding, arbitration or demand
incurred in connection with or arising from breach of this Agreement
or any representation or warranty contained herein by the Indemnifying
Party. Each Party further agrees to indemnify and hold the other Party
harmless from any Damages suffered or actually incurred by such other
Party as the result of any action, suit, proceeding, arbitration or
demand incurred in connection with or arising from breach of this
Agreement, to the extent, a court of competent jurisdiction determines
that such breach was in whole, or in part, the responsibility of the
Party from whom indemnification is sought. Any Party or Indemnified
Party claiming indemnification pursuant to this provision shall
immediately upon notice or knowledge of any such action, suit,
proceeding, arbitration or demand provide notice to the Party from
whom indemnification is sought. Each Party shall immediately notify
the other Party of any infringement or potential infringement on the
intellectual property rights of any Party by any third party. Each
Party shall be responsible for all defense and other costs associated
with its own filing and maintenance of Subject Technology, Subject
Patents, Subject Inventions, Background Patents, Background Inventions
and Background Technology. Joint and several liability will not attach
to the Parties; no Party is responsible for the actions of any other
Party, but is only responsible for those tasks assigned to it and to
which it agrees in the NIST Cooperative Agreement. The Parties agree
that in no event will consequential or punitive damages be applicable
or awarded with respect to any dispute that may arise between the
Parties in connection with this Agreement. This Section 6.1 shall
survive termination of this Agreement.
6.2 Insurance. Each Party agrees to obtain and maintain appropriate public
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liability and casualty insurance, or adequate levels of self-coverage,
to cover any liability caused by that Party's obligations under this
Agreement and the NIST Cooperative Agreement.
7. NOTICES
Any notice or request with reference to this Agreement shall be made by
first class mail postage prepaid, telex, or facsimile to the addresses
shown in Exhibit F.
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8. GENERAL PROVISIONS
8.1 Amendments. No amendment or modification of this agreement shall be
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valid unless made in writing and signed by the Parties.
8.2 Assignment. This Agreement shall not be assigned by any Party without
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the express written consent of each Party to this Agreement, which
consent shall not be unreasonably withheld. This provision shall not
apply in the event a Party changes its name or as part of the sale of
the Party's business.
8.3 Effective Date. This Agreement shall be effective as of the date of
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the last signature below.
8.4 Force Majeure. No Party shall be liable for any delay in completion
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of work hereunder or of the non-performance of any term or condition
of this Agreement directly or indirectly resulting from delays caused
by Acts of God; acts of the public enemy; strikes; lockouts; epidemic
and riots; power failure; water shortage or adverse weather
conditions; or other causes beyond the control of the Parties. In the
event of any of the foregoing, the time for performance shall be
equitably and immediately adjusted, and in no event shall any Party be
liable for any consequential or incidental damages from its
performance or non-performance of any term or condition of this
Agreement. The Parties shall resume the completion of work under this
Agreement as soon as possible subsequent to any delay due to force
majeure.
8.5 Governing Law. This Agreement shall be governed by and interpreted in
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accordance with the laws of New York.
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8.6 Headings. Section headings contained in this Agreement are included
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for convenience only and form no part of the agreement among the
parties.
8.7 Authorization to Execute the NIST Cooperative Agreement. By signing
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this Agreement, each Party authorizes the Administrator to execute the
NIST Cooperative Agreement on behalf of the joint venture.
8.8 Precedence. Should there be any conflict between the terms and
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conditions of this Agreement and the NIST Cooperative Agreement, the
NIST Cooperative Agreement shall take precedence.
8.9 Severability. If any Provision of this Agreement is declared invalid
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by any court or government agency, all other provisions shall remain
in full force and effect.
8.10 Use of Names. No Party shall use in any advertising, promotional
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or sales literature the name of the other Party without prior written
consent.
8.11 Waivers. Waiver by any Party of any breach or failure to comply with
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any provision of this Agreement by the other Party shall not be
construed as, or constitute, a continuing waiver of such provision or
a waiver of any other breach of or failure to comply with any other
provision of this Agreement.
IN WITNESS WHEREOF, the Parties have caused this Agreement to be executed
by their duly authorized officers or representatives on the dates shown below.
PLUG POWER, L.L.C. POLYFUEL, INC.
a Delaware Limited Liability Company a Delaware Corporation
Name: /s/ Xxxx Xxxxxxxxx Name: /s/ Xxxxxx X.
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Title: President and CEO Title: President
Date: June 14, 1995 Date: April 6, 1999
SRI INTERNATIONAL
a California nonprofit public benefit Corporation
Name: /s/ Xxxxxxx X.
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Title: Contracts Manager
Date: April 6, 1999
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EXHIBITS
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Exhibit A: Parties to the Agreement
Exhibit B: Functions of Administrators
Exhibit C: Research Program
Exhibit D: Contributions of the Parties
Exhibit E: Intellectual Property Plan
Exhibit F: List of Names and Addresses for Notices Concerning this Agreement
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EXHIBIT A
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PARTIES TO THE AGREEMENT
Polyfuel, Inc.
Plug Power, L.L.C.
SRI International
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EXHIBIT B
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FUNCTIONS OF ADMINISTRATOR
1. DEFINITIONS
All terms, not otherwise defined herein, shall have the meaning set forth
in the Joint Venture Agreement between the Parties, as of the date hereof
("Agreement").
2. DUTIES OF ADMINISTRATOR
The Parties hereby appoint Plug as administrator of the joint venture and
the Program, and hereby grant Plug the absolute authority and discretion to
act on behalf of the joint venture to do the following:
2.1 Execute the NIST Cooperative Agreement, and, at the discretion of the
Management Committee, any amendments thereto;
2.2 Take responsibility for all primary contact with NIST, its employees
and agents in connection with the NIST Cooperative Agreement and the
Program:
2.3 With the assistance and cooperation of the Parties, prepare and submit
all necessary financial reports, including but not limited to
quarterly "Financial Status Report" (Form SF-269), quarterly "Federal
Cash Transactions Report" (Form SF-272), monthly "Schedule of Fund
Sources and Project Costs" (Form SF-270) and Final Financial Reports
(Form SF-269-A);
2.4 With the assistance and cooperation of the Parties, schedule projects,
tasks and deliverables, including delivery of technical progress and
budget reports; assign and authorize tasks; schedule weekly telephone
conversations; review biweekly e-mail reports summarizing current
activities;
2.5 With the assistance and cooperation of the Parties, review and respond
to technical progress and budget reports; integrate reports from
Polyfuel., SRI and Plug, for submission to NIST;
2.6 Review and report deviations from planned objectives to the Management
Committee, and, with the consent of the Management Committee, develop
and implement a corrective action plan;
2.7 At the direction of the Management Committee, report any material
deviations from planned objectives to NIST;
2.8 With the assistance and cooperation of the Parties, supervise
procurement of
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services, materials and equipment;
2.9 Collate and analyze monthly bills from the Parties and submit any
bills that are consistent with the budgets contained in the Proposal
to NIST for payment;
2.10 At the direction of the Management Committee, submit bills from the
Parties that are inconsistent with the budgets contained in the
Proposal to NIST for payment;
2.11 Remit payments to the Parties after receipt of funds from NIST;
2.12 With the assistance and cooperation of the Parties, authorize payment
for services, materials and equipment from Program funds;
2.13 Verify and monitor contract performance to assure compliance with
contractual obligations (i.e., reporting requirements, delivery
schedules, tests, inspections, budget, etc.); prepare monthly reports
to contract file regarding same;
2.14 Ensure that all vendor contracts and subcontractor contracts are
in place;
2.15 Coordinate submission of all relevant subject invention disclosures to
NIST;
2.16 Coordinate maintenance and update of government agency contract
procedures and procurement practices;
2.17 At the direction of the Management Committee, notify NIST of the
addition or substitution of Joint venture partners; and
2.18 Notwithstanding the foregoing, Plug shall have all power and authority
necessary or advisable to carry out its legal and ethical
responsibilities under the Program and/or the NIST Cooperative
Agreement.
3. DUTIES OF THE PARTIES
Each of the Parties shall individually be responsible for the following:
3.1 Provide a detailed monthly accounting of actual direct costs (direct
labor and direct materials) incurred on the Project, including a
comparison to the approved budget in accordance with the terms and
conditions of the award;
3.2 Calculate indirect costs, using an established indirect cost rate with
a Federal agency or negotiated as part of the award (note indirect
costs will not be allowable charges unless specifically included in
the approved budget);
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3.3 Prepare and submit all data necessary or requested by the
Administrator in connection with preparation of forms or documents
requested or required by NIST, including, but not limited to Form SF-
269, Form SF-272, Form SF-270 and Form SF-269-A;
3.4 Coordinate internal procedures (including administrative, legal,
purchasing receiving) to assure compliance with provisions of the NIST
Cooperative Agreement;
3.5 Ensure that all vendor or subcontractor contracts are in place;
3.6 Prepare all relevant Subject invention disclosures; maintain subject
invention disclosure database, continue to follow-up, in a timely
manner, on subject invention disclosure reporting requirements;
3.7 Maintain and update a current listing of all government property
inventory and its location;
3.8 Comply with all budgetary requirements and legal and ethical standards
pertaining to the Program and/or the NIST Cooperative Agreement; and
3.9 Maintain and update government agency contract procedures and
procurement practices.
4. MANAGEMENT COMMITTEE
The Management Committee shall have four (4) members, one appointed by Polyfuel,
one appointed by SRI, and two appointed by Plug. Each member of the Management
Committee shall serve until replaced by the appointing entity. All actions of
the Management Committee shall require approval by a majority of its members. In
the event the Management Committee is deadlocked or otherwise unable to reach a
decision on any of the matters set forth below, the Management Committee shall
refer the matter to the Chief Executive Officer of Plug, who shall have the
authority to make binding decisions for the Management Committee provided that
such decisions are consistent with the Agreement and the NIST Cooperative
Agreement. The Management Committee shall have authority to do the following:
4.1 Establish overall program and project objectives, including individual
tasks;
4.2 Approve amendments to the NIST Cooperative Agreement and the Program
4.3 Assess administrator reports of deviations from planned objectives and
determine when and whether deviations should be reported to NIST;
4.4 Develop and implement corrective action plans to correct any
deviations from
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planned objectives;
4.5 Determine when bills that are inconsistent with the budgets contained
in the Proposal should be submitted to NIST;
4.6 Determine whether, when and the terms under which additional or
replacement joint venture partners should be added; and
4.7 Determine when a joint venture party should be replaced, and who will
be admitted as a replacement joint venture partner, if any.
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EXHIBIT E
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INTELLECTUAL PROPERTY PLAN
WHEREAS, Polyfuel, Inc. ("Polyfuel"), SRI International ("SRI"), and Plug
Power, L.L.C. ("Plug", collectively, the "Parties"), have been selected for
participation in the Advanced Technology Program administered by the National
Institute of Standards and Technology ("NIST") as a joint venture to conduct
certain specified research; and
WHEREAS, this Intellectual Property Plan ("IP Plan") is entered into
between Polyfuel, SRI and Plug, as of this 29th day of January, 1999, and shall
be included as an exhibit and incorporated by reference into the Joint Venture
Agreement ("Agreement") between the Parties.
NOW, THEREFORE, Polyfuel, SRI and Plug agree as follows:
1. DEFINITIONS
1.1 "Agreement" means the Joint Venture Agreement between the Parties
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executed as of the date hereof.
1.2 "Background Invention" means any invention that is not a Subject
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Invention.
1.3 "Background Patent" means all patents and patent applications that
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are not Subject Patents.
1.4 "Background Technology" means any technical information generated by
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the Parties that is not Subject Technology.
1.5 "Confidential Information" means any proprietary information marked as
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proprietary or identified as proprietary, whether of a business or
technical nature relating to the Program. Confidential Information
shall not include information that (a) is or becomes public through no
breach of this IP Plan or the Agreement by the receiving party; (b) is
known by the receiving party at the time of disclosure, as shown by
competent written evidence; (c) is rightfully received from a third
party without a similar restriction and without breach of this IP
Plan; (d) is independently developed by the receiving party without
reference to disclosed information; or (e) is required to be disclosed
with result of governmental or judicial action.
1.6 "Gas Diffusion Layer" or "GDL" shall mean a component located between
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the membrane and anode or cathode plates which is used to diffuse and
distribute reactants and products and may have catalyst applied
thereto.
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1.7 "Fuel Cell System" means an electrochemical device that includes a
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Stack, MEA, fuel process and/or other systems to convert chemical
energy into electrical energy through the use of a catalyst.
1.8 "Membrane Electrode Assembly" or "MEA" shall mean an assembly of a
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membrane and electrodes (if not applied to the GDL and other
components integral to the membrane as well as the components
comprising such components and the methods of using such MEAs and
components.
1.9 "MEA Invention" is defined in Section 2.3.2, herein.
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1.10 "NIST Cooperative Agreement" means the funding agreement entered
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into between the Advanced Technology Program of the National Institute
of Standards and Technology (NIST) and the Parties (as executed by the
Administrator) for the conduct of the Research Program.
1.11 "IP Plan" means this Intellectual Property Plan.
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1.12 "Plug Competitor" means any manufacturer of PEM fuel cells,
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including but not limited to Energy Partners, Xxxxxxx, International
Fuel Cells, Analytic Power Corporation, Avista Corporation, Alta Vista
Labs, H Power Corp., Northwest Power Systems, Allied Signal.
1.13 "Product" shall mean a PEM fuel cell or any of its component
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parts that use or rely upon a Subject Invention.
1.14 "Program" or "Research Program" means the research program set
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forth in the Statement of Work attached to the Agreement as Exhibit B.
1.15 "Program Expense" means use of funds by the Parties pursuant to
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the NIST Cooperative Agreement.
1.16 "Proposal" means the proposal submitted by the Parties to the
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Advanced Technology Program, and which has been accepted by NIST for
funding.
1.17 "SRI" means SRI International.
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1.18 "Stack" shall mean end plates, anode and cathode plates, coolant
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plates, humidification plates and current collector plates (the
"Plates"), including ancillary components thereto, such as GDL,
screens, supports, and gaskets (the "Ancillary Components"), including
the materials comprising the Stack, Plates and the Ancillary
Components, and the methods of using the Stack, Plates and Ancillary
Components and the design, use, assembly, process, configuration and
know-how thereof, and the design, use, assembly, process,
configuration and know-how of sealing, compressing and operating the
plates and ancillary components, and the design, use, assembly,
process, configuration and
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know-how of interfacing the plates and ancillary components with the
fuel system, air system, power conditioning system, and control
system.
1.19 "Stack Invention" is defined in Section 2.2.2, herein.
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1.20 "Subject Invention" means any invention conceived or first
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reduced to practice by a party or the Parties at Program Expense
during the course of the Program.
1.21 "Subject Patents" shall mean all patents and patent applications
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claiming, Subject Inventions.
1.22 "Subject Technology" shall mean any technical information
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generated by a party or the Parties at Program Expense during the
course of the Program.
2. ALLOCATION OF INTELLECTUAL PROPERTY RIGHTS
2.1 Background Technology. Plug shall retain all rights to its Background
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Technology, Background Patents and Background Inventions. Polyfuel
shall retain all rights to its Back-round Technology, Background
Patents and Background Inventions. SRI shall retain all rights to its
Background Technology, Background Patents and Background Inventions.
Polyfuel shall not transfer any Polyfuel Invention or MEA Invention to
any Plug Competitor, or any affiliate thereof, under circumstances
that could allow tile Plug Competitor to refuse to make or delay in
making such inventions publicly available. SRI shall not transfer any
SRI Invention or MEA Invention to any Plug Competitor, or any
affiliate thereof, under circumstances that could allow the Plug
Competitor to refuse to make or delay in making such inventions
publicly available.
2.2 Plug's Rights. Subject to Section 2.5, below, Plug shall
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2.2.1 retain the entire right, title and interest throughout the
world in each Subject Invention, Subject Patent and Subject
Technology that is solely the invention of an employee,
consultant or intern of Plug ("Plug Invention");
2.2.2 retain the entire right, title and interest throughout the
world in each Subject Invention, Subject Patent and Subject
Technology that is not a Polyfuel Invention, an SRI Invention,
or an MEA Invention ("Stack Invention") whether or not jointly
invented.
2.2.3 be granted from Polyfuel, SRI and any transferee or licensee of
Polyfuel
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or SRI, the right to purchase any Products manufactured by
Polyfuel, SRI or such transferees or licensees of Polyfuel or
SRI, that include MEA Inventions, Polyfuel Inventions or SRI
Inventions ("MEA Products"), at the best per unit cash price
offered by Polyfuel, SRI or any transferee or licensee of
either of them to any of its customers or agents for the number
of units being purchased by Plug under any purchase order
("Best Price") for the period of two (2) years commencing as of
the date of the first commercial sale of the MEA Products
("Preferred Pricing Term"). Best Price available to Plug
hereunder shall be expressly limited to cash sales payable in
full at delivery and shall not include pricing arrangements
offered by Polyfuel, SRI or their transferees or licensees, to
others involving the leasing or financing of the MEA Products,
revenue sharing, or other hybrid arrangements with such
customers. Provided, however, that during the Preferred Pricing
Term, Plug may not sell any MEA Products purchased at a
discount to an unrelated third party unless it is sold as part
of a Fuel Cell System. The Parties further agree that prior to
commercialization of any MEA Products, they will negotiate in
good faith, a discount to Best Price or a profit share to
reflect Plug's contribution to development of the MEA Products.
2.2.4 be granted from Polyfuel and SRI and any transferee or licensee
of Polyfuel or SRI, an irrevocable light to purchase a non-
exclusive, transferable, irrevocable, fully paid up license to
make, use and sell MEA Inventions, SRI Inventions, Polyfuel
Inventions for use with Plug Products or any inventions
including Plug Inventions or Stack Inventions ("Transfer
License"), if Polyfuel, SRI or their Affiliates or transferees
or licensees fail to make Products that include Polyfuel
Inventions, SRI Inventions or MEA Inventions publicly available
within six (6) months of notice from Plug ("Plug Notice") that
it will have Products including Plug Inventions or Stack
Inventions commercially available within three (3) months of
the notice date provided, however, that Plug may not issue any
Plug Notice until one (1) calendar year after termination of
the Program. The Parties agree that if it is technologically
impossible to produce a Product within six (6) months, and
substantial progress (as determined by Plug in their sole
discretion) is being made toward production, the date on which
production must commence will be extended. In no event will the
extension exceed twelve (12) months from the notice date. The
Purchase Price for the Transfer License shall equal all costs
of the Program incurred by Polyfuel and/or SRI, as applicable,
including but not limited to out of pocket costs, cost sharing
funds spent by Polyfuel and/or SRI on the Program,
reimbursement for labor and overhead costs, and patent,
trademark and copyright fees paid or payable by Polyfuel and/or
SRI. For purposes of this section, a Product will not
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be deemed to be publicly available unless Polyfuel, SRI and
their transferees and licensees agree to sell Products to Plug
consistent with Plug's specifications (which must be consistent
with Program specifications) at the price set forth in Section
2.2.3, above, f~r the duration of the Preferred Pricing, Term.
2.3 Polyfuel's Rights. Subject to Section 2.5, below, Polyfuel shall
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2.3.1 retain the entire right, title and interest throughout the world in
each Subject Invention, Subject Patent and Subject Technology that
is solely the invention of an employee, consultant or intern of
Polyfuel ("Polyfuel Invention");
2.3.2 retain the entire right, title and interest throughout the world in
each Subject Invention, Subject Patent and Subject Technology that
is not a Plug Invention or an SRI Invention and is solely a part of
or integral to the MEA ("MEA Invention").
2.4 SRI's Rights. Subject to Section 2.5, below, SRI shall retain the entire
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right, title and interest throughout the world in each Subject Invention,
Subject Patent and Subject Technology that is solely the invention of an
employee, consultant or intern of SRI ("SRI Invention").
2.5 NIST's Rights.
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2.5.1 In accordance with the Advanced Technology Program (ATP) statute
and regulation, specifically 15 USC (S)278n(d)(11)(A) and 15 CFR
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(S)295.8(u)(1), title to Subject Invention(s) will vest in a company
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or companies incorporated in the United States. Title to any such
Subject Invention shall not be transferred or passed, except to a
company incorporated in the Unites States of America until the
expiration of the first patent obtained in connection with such
Subject Invention(s). Nothing in this section shall be construed to
prohibit the licensing to any company of intellectual property
rights arising from assistance provided under this section.
2.5.2 The United States reserves a non-exclusive, non-transferable,
irrevocable, paid up license to use for government purposes any
Subject Invention, but shall not, in the exercise of such license,
publicly disclose proprietary information related to such Subject
Invention.
3. CONFIDENTIALITY
3.1 Plug. Plug will, for a period of three (3) years from termination of
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the Agreement, maintain the confidentiality of all Confidential
Information provided to it by Polyfuel ("Polyfuel Confidential
Information") and SRI ("SRI Confidential Information") and will
assure that Polyfuel Confidential
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Information and SRI Confidential Information is not disclosed or
otherwise disseminated to any person, firm, corporation or other
entity, without first obtaining the prior written permission of a
duly authorized officer of Polyfuel or SRI, as applicable, provided
however, that Plug may distribute Polyfuel Confidential Information
and SRI Confidential Information to NIST, if required to do by the
NIST Cooperative Agreement or the Agreement and to its employees and
authorized agents for the purpose of reviewing and analyzing
Polyfuel Confidential Information and SRI Confidential Information,
but Plug, shall at all times remain responsible for maintaining the
confidentiality of Polyfuel Confidential Information and SRI
Confidential Information. Plug will retain Polyfuel Confidential
Information and SRI Confidential Information on its premises and the
Polyfuel Confidential Information and SRI Confidential Information
will not be moved off Plug's premises or copied without the express
prior written consent of Polyfuel or SRI, as applicable. Plug will
use reasonable means, not less than those used to protect its own
proprietary information, to safeguard the Polyfuel Confidential
Information and SRI Confidential Information. Plug will promptly
return all Polyfuel Confidential Information and all but one (1)
copy of the Polyfuel Confidential Information or documents created
based upon the Polyfuel Confidential Information (to be retained
solely to monitor compliance with this section), to Polyfuel, upon
termination of the Agreement, or sooner, upon Polyfuel's request.
Plug will promptly return all SRI Confidential Information and any
copies of the SRI Confidential Information or documents based on the
SRI Confidential Information to SRI upon termination of the
Agreement, or sooner upon SRI's request. Plug agrees and represents
that no portion of the Polyfuel Confidential Information, the SRI
Confidential Information or any other confidential information
concerning Polyfuel or SRI will be disclosed except as expressly
permitted by this IP Plan and the Agreement and that Plug will not
use the Polyfuel Confidential Information, the SRI Confidential
Information or any portion of them or any other Confidential
Information concerning Polyfuel or SRI for any purpose other than
the Program. In the event of a breach or threatened breach by Plug
of the provisions of this Section 3, Polyfuel and SRI shall each be
entitled to an injunction restraining Plug from disclosing, in whole
or in part, Polyfuel Confidential Information and SRI Confidential
Information. Nothing herein shall be construed as limiting Polyfuel
or SRI from pursuing any other remedies available to them for breach
or threatened breach of this Section 3, including the recovery of
damages from Plug. The provisions of this Section 3 shall survive
the termination of this IP Plan and the Agreement.
18
3.2 Polyfuel. Polyfuel will, for a period of three (3) years from
--------
termination of the Agreement, maintain the confidentiality of all
Confidential Information provided to it by Plug ("Plug Confidential
Information") and all SRI Confidential Information and will assure
that Plug Confidential Information and SRI Confidential Information is
not disclosed or otherwise disseminated to any person, firm,
corporation or other entity, without first obtaining the prior written
permission of a duly authorized officer of Plug or SRI, as applicable,
provided however, that Polyfuel may distribute Plug Confidential
Information and SRI Confidential Information to NIST, if required to
do by the NIST Cooperative Agreement or the Agreement and to its
employees and authorized agents for the purpose of reviewing, and
analyzing Plug Confidential Information and SRI Confidential
Information, but Polyfuel shall at all times remain responsible for
maintaining the confidentiality of Plug Confidential Information and
SRI Confidential Information. Polyfuel will retain Plug Confidential
Information and SRI Confidential Information on its premises and the
Plug Confidential Information and SRI Confidential Information will
not be moved off Polyfuel's premises or copied without the express
prior written consent of Plug or SRI, as applicable. Polyfuel will use
reasonable means, not less than those used to protect its own
proprietary information, to safeguard the Plug Confidential
Information and SRI Confidential Information. Polyfuel will promptly
return all Plug Confidential Information and all but one (1) copy of
the Plug Confidential Information or documents created based upon the
Plug Confidential Information (to be retained solely to monitor
compliance with this section), to Plug, upon termination of the
Agreement, or sooner, upon Plug's request, Polyfuel will promptly
return all SRI Confidential Information and any copies of the SRI
Confidential Information or documents based on the SRI Confidential
Information to SRI upon termination of the Agreement, or sooner upon
SRI's request. Polyfuel agrees and represents that no portion of the
Plug, Confidential Information, the SRI Confidential Information or
any other confidential information concerning Plug or SRI will be
disclosed except as expressly permitted by this IP Plan and the
Agreement and that Polyfuel will not use the Plug Confidential
Information, the SRI Confidential Information or any portion of them
or any other Confidential Information concerning, Plug or SRI for any
purpose other than the Program. In the event of a breach or threatened
breach by Polyfuel of the provisions of this Section 3, Plug and SRI
shall each be entitled to an injunction restraining Polyfuel from
disclosing, in whole or in part, Plug Confidential Information and SRI
Confidential Information. Nothing herein shall be construed as
limiting Plug or SRI from pursuing any other remedies available to
them for breach or threatened breach of this Section 3, including the
recovery of damages from Polyfuel. The provisions of this Section 3
shall survive the termination of this IP Plan and the Agreement.
3.3 SRI. SRI will, for a period of three (3) years from termination of the
---
Agreement, maintain the confidentiality of all Confidential
Information provided
19
to it by Polyfuel and Plug and will assure that Polyfuel Confidential
Information and Plug Confidential Information is not disclosed or
otherwise disseminated to any person, firm, corporation or other
entity, without first obtaining the prior written permission of a duly
authorized officer of Polyfuel or Plug, as applicable, provided
however, that SRI may distribute Polyfuel Confidential Information and
Plug Confidential Information to NIST, if required to do by the NIST
Cooperative Agreement or the Agreement and to its employees and
authorized agents for the purpose of reviewing and analyzing Polyfuel
Confidential Information and Plug Confidential Information, but SRI
shall at all times remain responsible for maintaining the
confidentiality of Polyfuel Confidential Information and Plug
Confidential Information. SRI will retain Polyfuel Confidential
Information and Plug Confidential Information on its premises and the
Polyfuel Confidential Information and Plug Confidential Information
will not be moved off SRI's premises or copied without the express
prior written consent of Polyfuel or Plug, as applicable. SRI will use
reasonable means, not less than those used to protect its own
proprietary information, to safeguard the Polyfuel Confidential
Information and Plug, Confidential Information. SRI will promptly
return all Polyfuel Confidential Information and all but one (1) copy
of the Polyfuel Confidential Information or documents created based
upon the Polyfuel Confidential Information (to be retained solely to
monitor compliance with this section), to Polyfuel, upon termination
of the Agreement, or sooner, upon Polyfuel's request. SRI will
promptly return all Plug Confidential Information and any copies of
the Plug Confidential Information or documents based on the Plug
Confidential Information to Plug upon termination of the Agreement, or
sooner upon Plug's request. SRI agrees and represents that no portion
of the Polyfuel Confidential Information, the Plug Confidential
Information or any other confidential Information concerning Polyfuel
or Plug will be disclosed except as expressly permitted by this IP
Plan and the Agreement and that SRI will not use the Polyfuel
Confidential Information, the Plug Confidential Information or any
portion of them or any other Confidential Information concerning
Polyfuel or Plug for any purpose other than the Program. In the event
of a breach or threatened breach by SRI of the provisions of this
Section 3, Polyfuel and Plug shall each be entitled to an injunction
restraining SRI from disclosing, in whole or in part, Polyfuel
Confidential Information and Plug Confidential Information. Nothing
herein shall be construed as limiting Polyfuel or Plug from pursuing
any other remedies available to them for breach or threatened breach
of this Section 3, including the recovery of damages from SRI. The
provisions of this Section 3, shall survive the termination of this IP
Plan and the Agreement.
4. MISCELLANEOUS
4.1 Subcontractor Restrictions. Polyfuel and Plug may enter into
--------------------------
subcontracts in connection with the Agreement. Each subcontractor must
agree to be bound by
20
Section 3, above, and agree to enter into a subcontractor agreement
that is consistent with the Agreement, the NIST Cooperative Agreement
and the allocation of intellectual property rights set forth in this
IP Plan.
4.2 Term. This IP Plan shall continue in full force and effect until the
----
Parties' obligations as set forth in the Agreement and the NIST
Cooperative Agreement have been completed, or until the NIST
Cooperative Agreement has been terminated.
4.3 Amendments. No amendment or modification of this IP Plan shall be
----------
valid unless made in writing and signed by Polyfuel, SRI and Plug.
4.4 Assignment. This IP Plan shall not be assigned by any party
----------
without the express written consent of the other parties hereto, which
consent shall not be unreasonably withheld. This provision shall not
apply in the event a party changes its name or as part of the sale of
the party's business.
4.5 Effective Date. This IP Plan shall be effective as of the date of the
--------------
last signature below.
4.6 Governing Law. This IP Plan shall be governed by and interpreted in
-------------
accordance with the laws of New York.
4.7 Headings. Section headings contained in this IP Plan are included for
--------
convenience only and form no part of the agreement among the Parties.
4.8 Severability. If any provision of this IP Plan is declared invalid by
------------
any court or government agency, all other provisions shall remain in
full force and effect.
4.9 Waivers. Waiver by any Party of any breach or failure to comply with
-------
any provision of this IP Plan by the other Party shall not be
construed as, or constitute, a continuing waiver of such provision or
a waiver of any other breach of or failure to comply with any other
provision of this IP Plan.
21
IN WITNESS WHEREOF, the Parties have caused this IP Plan to be executed by
their duly authorized officers or representatives on the dates shown below.
PLUG POWER, L.L.C. POLYFUEL, INC.
a Delaware Limited Liability Company a Delaware Corporation
Name: Name:
----------------------- -----------------------
Title: Title: President
----------------------- -----------------------
Date: Date: April 6, 1999
----------------------- -----------------------
SRI INTERNATIONAL
a California nonprofit public benefit Corporation
Name:
---------------------------------
Title: Contracts Manager
-----------------------------
Date: April 6, 1999
-------------------------
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