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Exhibit 10.11
INTELLECTUAL PROPERTY TRANSFER AGREEMENT
THIS AGREEMENT, made as of the 28th day of December 1999, by and
between UCAR Carbon Technology Corporation, a Delaware corporation having
offices at 0000 Xxxx Xxx Xxxxxx, Xxxxxxxxx, Xxxxxxxxx, 00000 ("Transferor"), and
UCAR Graph-Tech Inc., a Delaware corporation having offices at 00000 Xxxxxxx
Xxxxxx, Xxxxxxxx, Xxxx, 00000 ("Transferee").
WHEREAS UCAR Carbon Company Inc. did enter into a Transfer Agreement
with Transferee effective January 1, 2000, (the "Transfer Agreement"); and
WHEREAS Transferor is a wholly-owned subsidiary of UCAR Carbon Company
Inc. and in furtherance of the Transfer Agreement enters into this Agreement;
NOW THEREFORE INTENDING TO BE LEGALLY BOUND, and for and in
consideration of the premises and the mutual covenants and agreements
hereinafter set forth, the parties agree as follows:
ARTICLE I. DEFINITIONS
1.01 Assets. "Assets" shall mean, the following intellectual
property rights of Transferor including:
(i) All United States and foreign patents and patent
applications, listed in Schedule B attached hereto, which are
owned solely or jointly by Transferor and all continuations,
continuations-in-part, divisions, reissues and other patents
which may be issued by any country based in whole or in part
on the patents and/or applications listed in Schedule B (the
"Patents").
(ii) All technology contracts (including Patent
Licenses) listed in Schedule C attached hereto (the
"Technology Contracts");
(iii) All technical information, know-how and trade
secrets in any physical form including but not limited to all
notebooks, records, reports, data, documents, drawings,
specifications, manuals, memoranda, and computer
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programs developed, licensed or otherwise acquired by
Transferor and relating to the natural, acid-treated or
flexible graphite business (the "Technology").
(iv) All trademarks, trade names and service marks,
registrations and applications therefor, and trademark license
agreements listed on Schedule D attached hereto (the
"Trademarks");
(v) All copyrights, and registrations and
applications therefore, and copyright licenses related to the
natural or flexible graphite business (the "Copyrights"); and
(vi) All (1) improvements made on any invention
covered by the Patents and on the Technology, and (2) other
technological inventions and developments (whether or not
patented) made, licensed or otherwise acquired by Transferor
at any time subsequent to December 28, 1999 (the
"Improvements").
1.02 Transfer Date. "Transfer Date" shall mean December 28, 1999.
1.03 Third Party. "Third Party" shall mean any and all parties
other than Transferor or Transferee, and shall include without limitation,
all affiliated and subsidiary companies of Transferor.
ARTICLE II. TRANSFER OF ASSETS
2.01 Transfer of Assets. Effective as of the Transfer Date, Transferor
hereby conveys, transfers, assigns and delivers to Transferee, and Transferee
hereby accepts from Transferor as a contribution to Transferee's capital stock,
all of Transferor's right, title and interest in and to the Assets. Transferor
shall execute and deliver to Transferee all necessary Assignment both U.S. and
Foreign in a form sufficient to convey title to the Assets; including:
(i) Assignments of all the Patents and Patent Applications to
Transferee.
(ii) An Assignment of the Technology Contracts to Transferee.
(iii) An Assignment of the Technology to Transferee.
(iv) Assignments of all the Trademarks to Transferee.
(v) An Assignment of all the Copyrights to Transferee.
(vi) An Assignment of all the Improvements to Transferee.
2.02 Representation as to Title. Transferor hereby represents and
warrants that it has good title to the Patents and to the Technology, including
that obtained by way of
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assignment. Except for the warranty of title, Transferor makes no other
representation and grants no other warranty with respect to the Patents or the
Technology and none is to be implied at law or equity of any country or other
jurisdiction.
2.03 Capitalization. Transferor holds One Hundred (100) shares of
Transferee's voting common stock, $1.00 par value (the "Stock") which shares are
fully paid and non-assessable and which constitute all the issued and
outstanding shares of Transferee capital stock. Transferor's transfer of the
Assets shall be an additional contribution to capital.
2.04 Transfer Deliveries. On the Transfer Date or as Transferee shall
require, Transferor and Transferee shall deliver or cause to be delivered to one
another:
(a) The executed and acknowledged Assignments with respect to the
Patents and Patent Applications identified on Schedule B.
(b) One (1) executed and acknowledged Assignment and Assumption of
Technology Contracts.
(c) One (1) executed and acknowledged Assignment with respect to
the Technology owned by Transferor and set forth in the
document entitled "Assignment of Technology".
(d) Executed and acknowledged Assignments with respect to the
Trademarks and trademark license agreements owned by
Transferor and identified in Schedule D.
(e) One (1) executed and acknowledged Assignment with respect to
the Copyrights.
(f) One (1) executed and acknowledged Assignment with respect to
the Improvements.
ARTICLE III. OBLIGATION AFTER TRANSFER
3.01 Further Transfers and Assurances. From time to time and after
the Transfer Date, Transferor shall execute, acknowledge and deliver any further
assignments, conveyances and other assurances, documents and instruments of
transfer, and take any other action consistent with this Agreement, reasonably
required to assign, transfer, convey, record and confirm to Transferee any and
all of the Assets, and Transferee shall execute, acknowledge and deliver any
further assurances, documents and instruments of assumption, and take any other
action
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consistent with this Agreement, reasonably required to transfer, assume and
confirm to Transferee any and all of the Assets. Notwithstanding anything in
this Agreement to the contrary, this Agreement shall not be deemed to act as a
transfer of any specific Asset, the transfer of which would constitute a
violation of applicable law or regulation or a material breach of an agreement
or obligation with or to a Third party. With respect to any such Asset,
Transferor and Transferee shall take all necessary and appropriate actions to
complete the transfer thereof as soon as practicable following the Transfer Date
in a manner consistent with the requirements of such law, regulation, agreement
or obligation. Anything in this Agreement to the contrary, Transferor shall not
be obligated to assign, transfer or convey in and to any specific Asset without
first obtaining all approvals, consents and waivers necessary for the valid
transfer thereof; and Transferor shall use all reasonable efforts (and
Transferee shall cooperate) to obtain such necessary approvals, consents and
waivers as soon as practicable; provided however, that any cost associated
therewith shall be borne by Transferor.
3.02 Cooperation After Transfer. Each party will cooperate, and
will use all reasonable efforts to have its officers, directors and other
employees cooperate with the other party at its request in furnishing
information, evidence, testimony and other assistance in connection with any
actions, proceedings, arrangements or disputes relating to adjustment of income
and other taxes of Transferor for all periods prior to the Transfer Date, and in
connection with any other actions, proceedings, arrangements or disputes
involving either party or based upon any of Transferor's contracts, agreements,
acts or omissions which were in effect or occurred on or prior to the Transfer
Date. Transferee shall permit Transferor and its authorized representatives,
accountants, attorneys and engineers to have full access to any reasonable time
or times to the books, records and other data relating to the Assets delivered
by Transferor to Transferee, and Transferor shall permit Transferee and its
authorized representatives,
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accountants, attorneys and engineers to have full access at any reasonable time
or times to any books, tax returns (but only insofar as they relate solely
or primarily to the Assets), records and other data of Transferor relating
to Assets. Each of the parties agrees to preserve the books, records and
data referred to in the preceding sentence for the period from and after
the Closing as prescribed in each parties' records retention policies in
effect on the Closing, and will not destroy any of the same at any
time without reasonable prior written notice to the other party and without
affording the other party a reasonable opportunity to make copies of or to
obtain books, records or other data so intended to be destroyed.
3.03 Confidentiality.
(a) Transferor shall be permitted to retain for record
purposes, one copy of all documents and the like
(such as computer programs) which may constitute the
Assets delivered or transferred hereunder and which
may contain confidential technical or business
information. However, except as permitted by express
written agreement between the parties, Transferor
shall not, directly or indirectly, use, permit any
Third Party to use or disclose to any Third Party any
confidential information contained in, or pertaining
to, the Assets owned by Transferee on and after the
Transfer Date, except when, after, and to the extent,
such information is or becomes generally available to
the public. Notwithstanding the foregoing, Transferor
may disclose such information to such of its
employees, attorneys and
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agents who require the same in the exercise of their
duties, and governmental authorities, to the extent
required by law; provided, however, that Transferor
gives Transferee not less than ten (10) days prior
written notice, and the opportunity to oppose such
disclosure.
(b) Transferor and Transferee shall each keep in
confidence all business and technical information
owned by the other which may be disclosed to it and
which is not part of the Assets, except when, after
and to the extent such information is or becomes
generally available to the public.
3.05 Recording of Documents. Transferee shall be responsible, at
Transferee's expense, for the filing or recording of such deeds, assignments,
instruments or documents delivered by Transferor hereunder, and for the
preparation and recording of such additional assignments, instruments or
documents as may be necessary or appropriate to perfect Transferee's title to or
interest in the Assets.
ARTICLE IV. MISCELLANEOUS
4.01 Entire Agreement; Modification; Waiver. This Agreement and the
attachments hereto constitute the entire agreement between the parties
pertaining to the subject matter contained herein and supercede all prior and
contemporaneous agreements, representations and understandings of the parties.
No supplement, modification or amendment of this Agreement shall be binding
unless executed in writing by both parties. No waiver of any of the provisions
of this Agreement shall constitute a waiver of any other provision, whether or
not similar, nor shall any waiver constitute a continuing waiver. No waiver
shall be binding
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unless executed in writing by the party making such waiver.
4.02 Effect of Headings. The subject headings of the Articles and
Sections of this Agreement are included for purposes of convenience only, and
shall not affect the construction or interpretation of any of its provisions.
4.03 Notices. All notices, requests, demands, and other
communications under this Agreement shall be in writing and shall be deemed to
have been duly given on the date of service if served personally on the party to
whom notice is give, or on the fifty day after mailing if mailed to the party to
whom notice is to be given by first class mail, registered or certified, postage
pre-paid, property addressed as first set forth above. Any party may change its
address for purposes of this paragraph by giving the other party written notice
of the new address in the manner set forth above.
4.04 Assignment. This Agreement shall not be assignable without the
mutual consent of the parties.
4.05 Governing Law. The validity, interpretation and performance of
this Agreement shall be governed by and construed in accordance with the laws of
the State of Delaware, without regard to its conflicts of laws, rules or
principles.
IN WITNESS WHEREOF, the parties have duly executed this Agreements as
of the date and year first above written.
UCAR CARBON TECHNOLOGY CORPORATION
(Transferor)
By: /s/ Xxxxxxx XxXxxxxxxx
Title: Controller
UCAR GRAPH-TECH INC.
(Transferee)
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By: Xxxx X. Xxxxxx
Title: President
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SCHEDULE B TO EXHIBIT 10.11
[Omitted]
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Schedule C
[Omitted]
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SCHEDULE D TO EXHIBIT 10.11
[Omitted]
