FIRST AMENDMENT TO ASSIGNMENT AGREEMENT
This FIRST AMENDMENT TO ASSIGNMENT AGREEMENT (this "First Amendment"),
effective as of December 15, 1996 ("Effective Date"), is by and between THE
DOW CHEMICAL COMPANY ("Dow"), a Delaware corporation with its principal
offices at 0000 Xxx Xxxxxx, Xxxxxxx, Xxxxxxxx 00000, and DESTEC ENERGY, INC.
("Destec") a Delaware corporation with its principal offices at 0000 XxxxXxxx
Xxxxxxxxx, Xxxxx 000, Xxxxxxx, Xxxxx 00000.
RECITALS:
X. Xxx and Destec entered into the Assignment Agreement effective as
of March 1, 1990 (the "Agreement"), which assigns from Dow to Destec certain
patents and technology pertaining to gasification of carbonaceous materials
and to lignite; and
X. Xxx and Destec desire to amend certain provisions of the Agreement.
NOW, THEREFORE, in consideration of the mutual covenants and agreements
set forth in this First Amendment, the receipt and sufficiency of which are
mutually acknowledged, the parties agree as follows:
1. Paragraph 3.1 of the Agreement is hereby deleted in its entirety and
replaced by the following text:
3.1 In consideration of the assignment contained in Paragraph 2.1 of
this Agreement, Destec hereby grants to Dow and to entities and
partnerships at least 49% owned by Dow (such entities and partnerships
being collectively termed "Subsidiaries") a non-exclusive,
royalty-free, worldwide license to practice the technology contained in
the Know How, Patent Disclosures and Patent Properties for internal use by
Dow or its Subsidiaries in their own facilities. This non-exclusive,
royalty-free, worldwide license includes any improvements made in the
technology by Destec or to which Destec has the right to sublicense between
the Effective Date and the later of (i) December 31, 1997, or (ii) during
any extension beyond December 31, 1997 of the term of the Research &
Development Agreement between Dow and Destec effective as of March 1, 1990,
under which Dow provides to Destec certain research and development
services with respect to the intellectual property assigned under the
Agreement.
2. Paragraph 3.2 of the Agreement is hereby deleted in its entirety and
shall have no further force or effect after the Effective Date of this First
Amendment.
3. Article IV of the Agreement is hereby deleted in its entirety and shall
have no further force or effect after the Effective Date of this First
Amendment.
4. Article V of the Agreement is hereby deleted in its entirety and shall
have no further force or effect after the Effective Date of this First
Amendment.
5. Paragraph 6.4 of the Agreement is hereby amended by changing the address
for notice to Dow to:
The Dow Chemical Company
Patent Department, 1790 Building
Attn.: Patent General Counsel
Xxxxxxx, XX 00000
6. Exhibits A, B and C of the Agreement are hereby deleted in their
entirety and replaced with Exhibits A, B and C attached to this First
Amendment.
7. Except as amended by this First Amendment, the Agreement remains in full
force and effect.
This First Amendment has been executed by authorized representatives of
the parties.
THE DOW CHEMICAL COMPANY
By: /s/ X. X. Xxxxxxxxx
--------------------------
Name: X. X. Xxxxxxxxx
Title: Corporate Director,
Mergers & Acquisitions
DESTEC ENERGY, INC.
By: /s/ Xxxxxxx X. Xxxxxxxxx
--------------------------
Name: Xxxxxxx X. Xxxxxxxxx
Title: Senior Vice President,
Chief Financial Officer
and Treasurer
