Exhibit 10.2
TECHNOLOGY TRANSFER AND LICENSE AGREEMENT
by and between
XXXX CORPORATION
and
PRIMEX TECHNOLOGIES, INC.
TABLE OF CONTENTS
-----------------
1. DEFINITIONS...............................................................3
2. ASSIGNMENT OF INTELLECTUAL PROPERTY.......................................7
3. LICENSES..................................................................7
4. SECRECY..................................................................10
5. DURATION AND TERMINATION.................................................11
6. RIGHTS UPON TERMINATION OTHER THAN UNDER SECTION 6.1.....................12
6. FORCE MAJEURE............................................................12
7. GUARANTEES, LIABILITIES AND INDEMNITIES..................................13
8. NOTICES..................................................................13
9. EXPORTATION CONTROL......................................................14
10. ASSIGNMENT..............................................................14
11. MISCELLANEOUS...........................................................15
12. SETTLEMENT OF DISPUTES..................................................16
EXHIBIT A .................................................................18
EXHIBIT B .................................................................19
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TECHNOLOGY TRANSFER AND LICENSE AGREEMENT
THIS AGREEMENT is made and entered into as of this 1st___ day of January,
__________ 1996 by and between:
XXXX CORPORATION, having a place of business at [427 Xxxxx Xxxxxxxx Xxxxxx, Xxxx
Xxxxx, Xxxxxxxx 00000], (hereinafter referred to as "OLIN")
AND
PRIMEX TECHNOLOGIES, INC., having a place of business at 00000 Xxxxx Xxxxxx
Xxxxx, Xx. Xxxxxxxxxx, Xxxxxxx 00000-0000 (hereinafter referred to as "PRIMEX")
(hereinafter collectively the "PARTIES " and each individually a "PARTY").
W I T N E S S E T H:
- - - - - - - - - -
WHEREAS, OLIN and PRIMEX are contemplating entering into a Distribution
Agreement concerning the spin-off of PRIMEX from OLIN (the "Distribution
Agreement");
WHEREAS, prior to entering into the Distribution Agreement, OLIN possesses
certain INTELLECTUAL PROPERTY and TECHNOLOGY primarily used in the PRIMEX
business, as that business was part of a single corporate entity and parent-
subsidiary corporate structure;
WHEREAS, PRIMEX desires to own or have the right to use such certain
INTELLECTUAL PROPERTY and TECHNOLOGY used its business;
WHEREAS, to allow each of OLIN and PRIMEX (and their respective shareholders) to
obtain the full value of its respective rights under the Distribution Agreement,
PRIMEX and OLIN desire to enter into and execute this AGREEMENT concerning the
assignment and licensing of certain INTELLECTUAL PROPERTY and TECHNOLOGY;
NOW, THEREFORE, in consideration of the above, and the mutual promises set forth
below, OLIN and PRIMEX agree as follows:
1. DEFINITIONS
-- -----------
Whenever used in this agreement, the following terms shall have the following
meanings, on the understanding that words in the singular include the plural and
vice-versa. Headings and subheadings are used for convenience only and are not
intended as limitations in the AGREEMENT or for use in interpreting the
AGREEMENT.
1.1 AFFILIATE
--- ---------
"AFFILIATE" shall mean, when used with respect to a specified PERSON, another
PERSON that directly, or indirectly through one or more intermediaries, CONTROLS
or is CONTROLLED by or is under common CONTROL with the PERSON specified.
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1.2 AGREEMENT
--- ---------
"AGREEMENT" shall mean this agreement as amended and/or supplemented from time
to time, including all the EXHIBITS attached hereto.
1.3 AMMUNITION
--- ----------
"AMMUNITION" shall mean cartridges, shotshells, projectiles, and blanks, capable
of being fired from a firearm, artillery piece, xxxxxx, industrial gun or other
gun (collectively "Gun") by a propellant charge in such Gun or cartridge
(including but not limited to armor-piercing rounds, trace rounds, incendiary
rounds and/or explosive rounds), but shall not include (i) unpropelled bombs,
and (ii) rockets, mortars and other projectiles substantially propelled by
propellant contained within the projectile.
1.4 CONFIDENTIAL INFORMATION
--- ------------------------
"CONFIDENTIAL INFORMATION" shall mean any and all information disclosed to the
receiving PARTY by the disclosing PARTY pursuant to the AGREEMENT, in any form
such as, but not limited to, visual, oral, written, graphic, electronic or model
form, including but not limited to know-how and trade secrets, whether patented
or not and whether in the laboratory, pilot plant or commercial plant stage
(including drawings, operating conditions, specifications, safety instructions,
recommendations for effluent disposal, emergency instructions, etc.) owned or
controlled by a PARTY.
1.5 CONTROL
--- -------
"CONTROL" shall mean the possession, directly or indirectly, of the power to
direct or cause the direction of the management or policies of a Person, whether
through the ownership of voting securities, by contract or otherwise, and the
terms "CONTROLLING" and "CONTROLLED" shall have meanings correlative thereto.
1.6 EFFECTIVE DATE
--- --------------
"EFFECTIVE DATE" shall mean the Effective Time specified in the Distribution
Agreement.
1.7 GOCO OPERATION
--- --------------
"GOCO OPERATION" shall mean any activity conducted by a Party hereto pursuant to
an agreement existing on or prior to the date first above written (or an
extension, renewal or other continuation of such an agreement concerning the
same facility as the prior agreement) with the federal government of the United
States of America by which such party operates or maintains an AMMUNITION or
AMMUNITION components (including powder) production facility for and on behalf
of such government; provided, however, that such term shall not include any
activity conducted at such facility that is not conducted by the respective
party on behalf of such government pursuant to such agreement (such as, but not
limited to, activity conducted by a respective party for its own account at such
facility, whether pursuant to a facilities use agreement with the government or
otherwise).
1.8 INTELLECTUAL PROPERTY
--- ---------------------
"INTELLECTUAL PROPERTY" shall mean all classes or types of patents, utility
models, design patents, copyrights and applications for the aforementioned, of
all countries of the world, owned by a PARTY and in existence on or before the
EFFECTIVE DATE.
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1.9 JOINT TECHNOLOGY
--- ----------------
"JOINT TECHNOLOGY" shall mean TECHNOLOGY in existence on or before the EFFECTIVE
DATE which (i) was derived from the joint efforts or used (a) by or on behalf of
OLIN's Ordnance and/or Aerospace divisions on the one hand and (b) by or on
behalf of OLIN's Brass and/or Chemicals and/or Chlor-Alkali Products and/or
Winchester and/or Olin Microelectronic Materials, Divisions on the other hand or
(ii) is neither OLIN TECHNOLOGY nor PRIMEX TECHNOLOGY.
1.10 MEDIUM & LARGE CALIBER AMMUNITION & COMPONENTS
---- ----------------------------------------------
"MEDIUM & LARGE CALIBER AMMUNITION & COMPONENTS" shall mean (i) fully-loaded
rounds of Ammunition having a diameter of 20 millimeters or larger, other than
shotshells and (ii) components of such fully-loaded rounds.
1.11 NONLETHAL AMMUNITION
---- --------------------
"NONLETHAL AMMUNITION" shall mean AMMUNITION that is designed and intended to
minimize or avoid any injury, damage or death resulting from its use or
otherwise intended to be less-than-lethal, including but not limited to having
the effect of slowing or temporarily incapacitating an aggressor through means
intended to minimize or avoid permanent physical damage to the aggressor. The
term "NONLETHAL AMMUNITION" does not include: (i) blanks, and (ii) any
AMMUNITION produced on or before the EFFECTIVE DATE by the parties hereto, nor
any developments therefrom based on techniques historically used in the
AMMUNITION industry for delivering lethal or injurious force to an aggressor
through the use of a metal projectile.
1.12 OCSW & OICW AMMUNITION
---- ----------------------
"OCSW AND OICW AMMUNITION" shall mean AMMUNITION used in objective crew served
weapon (OCSW) and OICW objective individual combat weapon (OICW), respectively,
being developed by PRIMEX for the U.S. Army.
1.13 OLIN BUSINESSES
---- ---------------
"OLIN BUSINESSES" shall mean the businesses of the Brass, Chlor Alkali Products,
Chemicals, Winchester and Microelectronic Materials, Divisions of OLIN as they
were carried out on or before the EFFECTIVE DATE but excluding Ball Powder(R).
1.14 OLIN TECHNOLOGY
---- ---------------
"OLIN TECHNOLOGY" shall mean all the TECHNOLOGY, other than JOINT TECHNOLOGY,
which was used by or derived from efforts by or on behalf of the Brass, Chlor
Alkali Products, Chemicals, Winchester and Microelectronic Materials, divisions
of Xxxx Corporation on or before the EFFECTIVE DATE.
1.15 OLIN INTELLECTUAL PROPERTY
---- --------------------------
"OLIN INTELLECTUAL PROPERTY" shall mean the INTELLECTUAL PROPERTY owned by OLIN
on or before the EFFECTIVE DATE other than the PRIMEX INTELLECTUAL PROPERTY.
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1.16 OLIN PRODUCTS
---- -------------
"OLIN PRODUCTS" shall mean those products which were made by the Brass, Chlor
Alkali Products, Chemicals, Winchester and Microelectronic Materials, divisions
of OLIN on or before the EFFECTIVE DATE and products acquired, developed or
established by or for OLIN or any of its AFFILIATEs after the EFFECTIVE DATE.
Notwithstanding the foregoing, OLIN PRODUCTS shall, without limitation, not
include MEDIUM & LARGE CALIBER AMMUNITION & COMPONENTS and Ball Powderr except
for: (i) individual component primers, fuses, cups, propellants containing or
derived from HAN (hydroxyamoniumnitrate), shellcases, and cones for shaped
charges prior to their assembly into AMMUNITION, and/or oil well penetrator
cones; and/or (ii) engaging in research and development of propellant powder as
part of the development, testing, trial production, prototype construction, and
similar activities in the business relating to SMALL CALIBER AMMUNITION &
COMPONENTS; and/or (iii) engaging In any of its GOCO OPERATIONS, including the
Lake City Army Ammunition Plant located in Independence, Missouri and the
Ravenna Army Arsenal Plant located in Ravenna, Ohio; and/or (iv) engaging In the
business relating to NONLETHAL AMMUNITION; and/or (v) engaging In the business
relating to high explosives and other primer material.
1.17 PERSON
---- ------
"PERSON" shall mean any natural person, corporation, business trust, joint
venture, association, company, partnership or government, or any agency or
political sub-division thereof.
1.18 PRIMEX BUSINESSES
---- -----------------
"PRIMEX BUSINESSES" shall mean the businesses of the Ordnance and Aerospace
Divisions of OLIN as they were carried out on or before the EFFECTIVE DATE.
1.19 PRIMEX PRODUCTS
---- ---------------
"PRIMEX PRODUCTS" shall mean those products which were made by the Ordnance and
Aerospace divisions of OLIN or their constituent companies and their predecessor
companies on or before the EFFECTIVE DATE and products acquired, developed or
established by or for PRIMEX or any of its AFFILIATES after the EFFECTIVE DATE.
Notwithstanding the forgoing, PRIMEX PRODUCTS shall, without limitation, not
include, SMALL CALIBER AMMUNITION & COMPONENTS except for: (i) engaging in the
development, testing, trial production, prototype construction and similar
activities associated with, but for the first five years after the EFFECTIVE
DATE not the selling of, OCSW AND OICW AMMUNITION; and/or (ii) engaging In the
business relating to NONLETHAL AMMUNITION.
1.20 PRIMEX TECHNOLOGY
---- -----------------
"PRIMEX TECHNOLOGY" shall mean all the TECHNOLOGY, other than JOINT TECHNOLOGY,
which was used by or derived from efforts by or on behalf of the Ordnance and
Aerospace Divisions of OLIN or their constituent companies and their
predecessors on or before the EFFECTIVE DATE .
1.21 PRIMEX INTELLECTUAL PROPERTY
---- ----------------------------
"PRIMEX INTELLECTUAL PROPERTY" shall mean the INTELLECTUAL PROPERTY set forth in
EXHIBIT A.
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1.22 PRODUCTS
---- --------
"PRODUCTS" shall mean the OLIN PRODUCTS and the PRIMEX PRODUCTS.
1.23 SMALL CALIBER AMMUNITION & COMPONENTS
---- -------------------------------------
"SMALL CALIBER AMMUNITION & COMPONENTS" shall mean (i) shotshells of any gauge,
(ii) fully-loaded rounds of AMMUNITION, other than MEDIUM & LARGE CALIBER
AMMUNITION & COMPONENTS, (iii) components of such shotshells and fully-loaded
rounds, other than propellant powder; and (iv) ejection cartridges (also known
as "ARDs") for aircraft stores ejection.
1.24 TECHNOLOGY
---- ----------
"TECHNOLOGY" shall mean the body of knowledge owned by a PARTY and in existence
as of the EFFECTIVE DATE including: (i) information such as technical,
engineering, maintenance, environmental and safety information with respect to
the design, equipment selection, construction, installation, staffing and
operation of facilities and equipment for the manufacture of PRODUCTS; (ii)
formulae, process drawings and descriptions, chemical recipes, know-how, and
technological and processing information, for the manufacture of PRODUCTS; and
(iii) specifications and properties of the PRODUCTS.
1.25 TERM
---- ----
"TERM" shall mean the period of time during which the AGREEMENT shall be in full
force and effect pursuant to ARTICLE 6.
2. ASSIGNMENT OF INTELLECTUAL PROPERTY
-- -----------------------------------
2.1 Assignment
--- ----------
OLIN agrees to assign and transfer to PRIMEX as of the EFFECTIVE DATE all of its
right, title and interest, together with all rights of priority, in and to the
PRIMEX INTELLECTUAL PROPERTY and to the PRIMEX TECHNOLOGY, which were owned by
OLIN as of December 31, 1996, pursuant to assignment documents in the form as
set forth in EXHIBIT B.
2.2 Disclaimer
--- ----------
XXXX CORPORATION MAKES NO REPRESENTATION OR WARRANTY, EXPRESS OR IMPLIED, WITH
RESPECT TO THE INTELLECTUAL PROPERTY OR TECHNOLOGY ASSIGNED HEREBY, INCLUDING
WITHOUT LIMITATION AS TO THEIR VALIDITY, ENFORCEABILITY OR FITNESS FOR ANY
PARTICULAR USE OR PURPOSE.
3. LICENSES
-- --------
3.1 GENERAL LICENSE TO PRIMEX
--- -------------------------
OLIN and its AFFILIATES hereby grants to PRIMEX an irrevocable, royalty free,
worldwide, nonexclusive license, with the right to sublicense, to use the OLIN
TECHNOLOGY AND OLIN INTELLECTUAL PROPERTY, which have been used by or on behalf
of the PRIMEX BUSINESSES on or before the EFFECTIVE DATE, solely for the making,
having made, use, offering for sale, selling and import of PRIMEX PRODUCTS,
provided that no rights or licenses are granted with respect to PRODUCTS other
than PRIMEX PRODUCTS. OLIN and its
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AFFILIATES hereby further grants to PRIMEX an irrevocable, royalty free,
worldwide, nonexclusive license, with the right to sublicense, to use the OLIN
INTELLECTUAL PROPERTY and the OLIN TECHNOLOGY, which has been used by PRIMEX in
the PRIMEX BUSINESSES on or before the EFFECTIVE DATE solely for engaging in any
GOCO OPERATIONS.
3.2 JOINT PROPERTY LICENSE TO PRIMEX
--- --------------------------------
OLIN and its AFFILIATES hereby grants to PRIMEX an irrevocable, royalty free,
worldwide, nonexclusive license, with the right to sublicense, to use the JOINT
INTELLECTUAL PROPERTY and JOINT TECHNOLOGY solely for the making, having made,
use, offering for sale, selling and import of PRIMEX PRODUCTS. No rights or
licenses are granted with respect to PRODUCTS other than PRIMEX PRODUCTS.
3.3 PRIMEX OPTION FOR FUTURE LICENSE
--- --------------------------------
OLIN and its AFFILIATES hereby grants to PRIMEX an option to nonexclusively
license, upon reasonable terms and conditions to be agreed upon, the use of the
OLIN TECHNOLOGY AND OLIN INTELLECTUAL PROPERTY known to PRIMEX on or before the
EFFECTIVE DATE but which have not been used by or on behalf of the PRIMEX
BUSINESSES on or before the EFFECTIVE DATE, solely for the making, having made,
use, offering for sale, selling and import of PRIMEX PRODUCTS, provided that no
rights or licenses will be granted with respect to PRODUCTS other than PRIMEX
PRODUCTS.
3.4 GENERAL LICENSE TO OLIN
--- -----------------------
PRIMEX and its AFFILIATES hereby grants to OLIN an irrevocable, royalty free,
worldwide, nonexclusive license, with the right to sublicense, to use the PRIMEX
INTELLECTUAL PROPERTY and the PRIMEX TECHNOLOGY, which have been used by or on
behalf of OLIN in the OLIN BUSINESSES on or before the EFFECTIVE DATE, solely
for the making, having made, use, offering for sale, selling and import of OLIN
PRODUCTS, provided that no rights or licenses are granted with respect to
PRODUCTS other than OLIN PRODUCTS. PRIMEX and its AFFILIATES hereby further
grants to OLIN an irrevocable, royalty free, worldwide, nonexclusive license,
with the right to sublicense, to use the PRIMEX INTELLECTUAL PROPERTY and the
PRIMEX TECHNOLOGY, which has been used by OLIN in the OLIN BUSINESSES on or
before the EFFECTIVE DATE solely for engaging in any GOCO OPERATIONS.
3.5 JOINT PROPERTY LICENSE TO OLIN
--- ------------------------------
PRIMEX and its AFFILIATES hereby grants OLIN an irrevocable, royalty free,
worldwide, nonexclusive license, with the right to sublicense, to use the JOINT
INTELLECTUAL PROPERTY and JOINT TECHNOLOGY solely for the making, having made,
use, offering for sale, selling and import of OLIN PRODUCTS. No rights or
licenses are granted with respect to PRODUCTS other than OLIN PRODUCTS.
3.6 OLIN OPTION FOR FUTURE LICENSE
--- ------------------------------
PRIMEX and its AFFILIATES hereby grants to OLIN an option to nonexclusively
license, upon reasonable terms and conditions to be agreed upon, the use of the
PRIMEX TECHNOLOGY AND PRIMEX INTELLECTUAL PROPERTY known to OLIN on or before
the EFFECTIVE DATE but which have not been used by or on behalf of the OLIN
BUSINESSES on or before the EFFECTIVE DATE, solely for the making, having made,
use, offering for sale, selling and import
Page 8
of OLIN PRODUCTS, provided that no rights or licenses will be granted with
respect to PRODUCTS other than OLIN PRODUCTS.
3.7 CONTINGENT LICENSE TO OLIN
--- --------------------------
The PARTIES acknowledge that OLIN has guaranteed the performance of PRIMEX with
respect to certain contracts with the government of the United States of America
(hereinafter referred to as the "Government Contracts"). In the event of a
default by PRIMEX under such Government Contracts and the exercise by the
government of its rights under the OLIN guarantee, PRIMEX and its AFFILIATES
hereby grants to OLIN a royalty free, worldwide, nonexclusive license, with the
right to sublicense, to use the PRIMEX TECHNOLOGY and PRIMEX INTELLECTUAL
PROPERTY and any OLIN TECHNOLOGY or OLIN INTELLECTUAL PROPERTY subject to the
licenses of Section 3.1 for the sole purpose of enabling OLIN to fulfill
PRIMEX's obligations under such Government Contracts defaulted by PRIMEX. In
such event PRIMEX and its AFFILIATES agrees to cooperate with OLIN and take all
reasonable actions which are deemed necessary by OLIN to enable OLIN to fulfill
PRIMEX's or its AFFILIATE's obligations under such Government Contracts,
including without limitation, disclosing to OLIN any PRIMEX TECHNOLOGY
reasonably requested by OLIN in order to fulfill such obligations.
3.8 SUBLICENSE TERMS
--- ----------------
Any sublicense granted pursuant to this ARTICLE 3 shall be consistent with and
subject to the terms and conditions of this AGREEMENT.
3.9 LIMITATIONS
--- -----------
Notwithstanding any other provision of this AGREEMENT, no PARTY or its
AFFILIATES shall be obligated to: (i) grant any license, or make any disclosure,
to the other PARTY, with respect to INTELLECTUAL PROPERTY, owned or controlled
by such PARTY or its AFFILIATES, if to do so would violate an agreement with an
unrelated third party or (ii) grant any license, to the other PARTY, with
respect to INTELLECTUAL PROPERTY, which are owned or controlled by such PARTY or
its AFFILIATES, if to do so would be in violation of law. If the violation can
be avoided by a lesser license, then the PARTIES or their AFFILIATES agree to
grant same to the extent possible. The PARTIES or their AFFILIATES shall use
reasonable commercial efforts to avoid such restrictions in agreements entered
into following the EFFECTIVE DATE. PRIMEX hereby acknowledges, without
limitation, that OLIN has granted an exclusive license to a third party with
respect to shaped charge liners for oil field applications which are covered by
a certain OLIN patent. Notwithstanding any other provision of this AGREEMENT,
following the EFFECTIVE DATE, neither PARTY or their AFFILIATES shall be
obligated to make any further disclosure to the other PARTY with respect to any
TECHNOLOGY or INTELLECTUAL PROPERTY licensed hereunder.
3.10 THIRD PARTY ROYALTIES
---- ---------------------
If a licensor under this ARTICLE 3 is obligated to pay royalties to a third
party with respect to a license or right granted herein, then notwithstanding
the above, the licensee shall be obligated to pay such royalties as a condition
of its license.
Page 9
3.11 WARRANTY
---- --------
The PARTIES warrant that, except as set forth in this Agreement, they have not
granted and will not grant any licenses which will conflict with the rights and
licenses set forth in this AGREEMENT. The PARTIES also warrant that they have
the right to grant the rights and licenses set forth in this Agreement. NO
OTHER WARRANTY, OF ANY KIND, WHETHER EXPRESS OR IMPLIED, IS GIVEN BY ONE PARTY
TO THE OTHER PARTY AND IN PARTICULAR THE PARTIES DISCLAIM ANY WARRANTY THAT
THEIR RESPECTIVE INTELLECTUAL PROPERTY ARE VALID OR ENFORCEABLE OR USEFUL FOR
ANY PURPOSE.
3.12 EXPRESS LICENSES ONLY
---- ---------------------
Except for licenses expressly granted pursuant to ARTICLE 3, no licenses are
granted hereby, and nothing in the AGREEMENT shall be construed as, or result
in, conveying by implication, waiver or estoppel any right or license to either
PARTY or to any third party.
3.13 ABANDONING INTELLECTUAL PROPERTY
---- --------------------------------
If either PARTY wishes to abandon in any country any INTELLECTUAL PROPERTY right
or application therefor licensed hereunder, it shall not do so without first
notifying the other PARTY and giving it a reasonable opportunity to take over
the prosecution or maintenance of such INTELLECTUAL PROPERTY right at its own
expense. If the other PARTY agrees to take over the prosecution and maintenance
of such INTELLECTUAL PROPERTY the abandoning PARTY shall transfer its interest
therein to such other PARTY.
4. SECRECY
-- -------
4.1 SECRECY OBLIGATION
--- ------------------
Each of the PARTIES agrees to keep confidential and neither disclose to others
nor use except as permitted herein any CONFIDENTIAL INFORMATION received from
the other PARTY or its AFFILIATES pursuant to the AGREEMENT.
4.2 LIMITS ON DISCLOSURE
--- --------------------
The receiving PARTY shall treat such CONFIDENTIAL INFORMATION in the same manner
and with the same degree of care as it uses with respect to its own CONFIDENTIAL
INFORMATION of like nature and shall disclose CONFIDENTIAL INFORMATION of the
other PARTY only to its employees who have a need to know it, provided that such
employees are bound to respect all secrecy obligations provided for in the
AGREEMENT.
4.3 EXCEPTIONS
--- ----------
The obligation set forth in Section 4.1 shall not apply with respect to any
CONFIDENTIAL INFORMATION which:
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4.3.1 PUBLIC KNOWLEDGE
----- ----------------
Is generally available to the public or subsequently becomes generally available
to the public through no breach by the receiving PARTY of secrecy obligations
under this Agreement or prior agreements between the PARTIES concerning the
CONFIDENTIAL INFORMATION; or
4.3.2 RECEIVED FROM THIRD PARTY
----- -------------------------
Is received from a third party who is legally free to disclose such CONFIDENTIAL
INFORMATION and who did not receive such CONFIDENTIAL INFORMATION in confidence
from the disclosing PARTY; or
4.3.3 APPROVED FOR DISCLOSURE
----- -----------------------
Is approved in writing for release by the disclosing PARTY or its AFFILIATES; or
4.3.4 SUCCESSOR IN INTEREST
----- ---------------------
Is disclosed to any permitted assignee of the AGREEMENT, provided that such
assignee agrees to be bound by the provisions of the AGREEMENT; or
4.3.5 INDEPENDENTLY DEVELOPED
----- -----------------------
Is independently developed by the receiving PARTY without reference to the
CONFIDENTIAL INFORMATION received from the disclosing PARTY or its AFFILIATES.
4.4 PERMITTED DISCLOSURES
--- ---------------------
The provisions of Section 4.1 notwithstanding, in exercising the rights granted
under the AGREEMENT, any PARTY may disclose CONFIDENTIAL INFORMATION to others
for purpose of licensing (as permitted hereunder), design, engineering,
construction or operation of permitted facilities using the disclosing PARTY's
or its AFFILIATES licensed TECHNOLOGY; or obtaining or giving consulting
services under a license agreement permitted hereunder, provided that any third
party, to which such CONFIDENTIAL INFORMATION is disclosed shall have first
entered into a written secrecy and non-use obligation at least as stringent as
that imposed on the PARTIES pursuant to the AGREEMENT.
4.5 SUBPOENA OR DEMAND
--- ------------------
The provisions of Section 4.1 notwithstanding, a PARTY may disclose CONFIDENTIAL
INFORMATION pursuant to a subpoena or demand for production of documents in
connection with any suit or arbitration proceeding, any administrative procedure
or before a governmental or administrative agency or instrumentality thereof or
any legislative hearing or other similar proceeding, provided that the receiving
PARTY shall promptly notify the disclosing PARTY or its AFFILIATES of the
subpoena or demand and provided further that in such instances, the PARTIES use
their best efforts to maintain the confidential nature of the CONFIDENTIAL
INFORMATION by protective order or other means.
5. DURATION AND TERMINATION
-- ------------------------
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5.1 TERM OF AGREEMENT
--- -----------------
This AGREEMENT shall become effective on the EFFECTIVE DATE, and shall continue
in full force and effect until the expiration of the last to expire of the
INTELLECTUAL PROPERTY licensed hereunder or ten (10) years from the EFFECTIVE
DATE, which ever is greater, at which time it shall terminate unless renewed by
agreement of the PARTIES. After expiration of the AGREEMENT pursuant to this
Section 5.1 the rights and obligations set forth in ARTICLES 3, 4, and 10 shall
survive.
5.2 TERMINATION FOR MATERIAL BREACH
--- -------------------------------
If either PARTY commits a material breach with respect to any of their
obligations hereunder, the other PARTY may give written notice to the allegedly
breaching PARTY specifying the alleged material breach and an intention to
terminate the AGREEMENT. The PARTY charged with the alleged material breach
shall have sixty (60) days from the date of receipt of such written notice to
cure the alleged material breach. If the alleged material breach is not cured
within said sixty (60)-day period, the other PARTY may terminate the AGREEMENT
by sending a written notice of termination to the breaching PARTY and in this
event, neither PARTY waives any legal rights to recover damages resulting from
the termination of the AGREEMENT.
5.3 INSOLVENCY
--- ----------
In the event that either PARTY shall: (i) become insolvent or go into
liquidation or receivership or be admitted to the benefits of any procedure for
the settlement or postponement of debts or be declared bankrupt; or (ii) become
party to dissolution proceedings; then the AGREEMENT and any and all obligations
assumed hereby (except as otherwise expressly provided for herein) may be
terminated by the other PARTY, if permitted by law, by giving written notice of
such termination on a date specified therein.
6. RIGHTS UPON TERMINATION OTHER THAN UNDER SECTION 6.1
-- ----------------------------------------------------
6.1 TERMINATION OF LICENSES
--- -----------------------
Notwithstanding the foregoing, the licenses granted under ARTICLE 3 to the PARTY
committing the material breach under Section 5.2, may be canceled immediately by
the PARTY terminating the AGREEMENT and such breaching PARTY shall promptly
forward to the other PARTY all copies of CONFIDENTIAL INFORMATION, blue prints,
drawings and data which it may have in written or graphic or machine readable
form and which have been proposed or reproduced by it from the CONFIDENTIAL
INFORMATION received from the other PARTY. The termination of this AGREEMENT
pursuant to Section 5.2 shall not affect the rights and licenses previously
granted to the non-breaching PARTY, which shall continue in full force and
effect.
6.2 OBLIGATIONS SURVIVING TERMINATION
--- ---------------------------------
Upon termination pursuant to Sections 5.2 or 5.3, the obligations of each PARTY
to the other shall cease except, subject to Section 6.1, the obligations set
forth in ARTICLES 3,4 and 10 shall continue in full force and effect until
completely discharged.
7. FORCE MAJEURE
-- -------------
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7.1 ACTS CONSTITUTING FORCE MAJEURE
--- -------------------------------
Neither PARTY shall be liable to the other arising out of a delay in its
performance of this Agreement arising from causes beyond its reasonable control.
Without limiting the generality of the foregoing, such events include any act of
God; accident; explosion; fire; earthquake; flood; strikes; labor disputes;
riots; sabotage; embargo; equipment failure; federal, state, or local legal
restriction or limitation; failure or delay of transportation; shortage of, or
inability to obtain, raw materials, supplies, equipment, fuel, electricity, or
labor. Neither PARTY shall be required to resolve labor disputes or disputes
with suppliers of raw material, supplies, equipment, fuel, or electricity, but
shall use commercially reasonable efforts to seek alternative sources to the
extent practicable.
7.2 NOTICE REQUIREMENT
--- ------------------
When circumstances occur which delay the performance of either PARTY under this
Agreement, whether or not such circumstances are excused pursuant to Section 7.1
above, said PARTY shall, when it first becomes aware of such circumstances,
promptly notify (or, if the circumstances occur on a holiday or weekend, on the
first succeeding business day) the other PARTY, by facsimile or by telephone
confirmed in writing within two (2) business days in the case of oral notice.
Within ten (10) business days of the date when either PARTY first becomes aware
of the event which it contends is responsible for the delay, it shall supply to
the other PARTY in writing the reason(s) for and anticipated duration of such
delay, the measures taken and to be taken to prevent or minimize the delay, and
the timetable for the implementation of such measures.
8. GUARANTEES, LIABILITIES AND INDEMNITIES
-- ---------------------------------------
8.1 LAWFUL POSSESSION
--- -----------------
Each PARTY represents that to the best of its knowledge and belief, it will be
in the lawful possession of any CONFIDENTIAL INFORMATION when disclosed by it
pursuant to the AGREEMENT and that the disclosure of said CONFIDENTIAL
INFORMATION shall not in any way violate any agreement to hold such CONFIDENTIAL
INFORMATION in confidence.
8.2 DISCLAIMER
--- ----------
Neither PARTY shall be liable to the other for indirect, special or
consequential damages arising out of any use of CONFIDENTIAL INFORMATION or
INTELLECTUAL PROPERTY rights obtained by it from the other PARTY hereunder.
9. NOTICES
-- -------
Notices or requests to be given or made hereunder shall be delivered in person
or sent by registered mail or telefax or telex acknowledged by the operator of
the addressee at the following addresses or other addresses that each PARTY may
from time to time designate
(a) for PRIMEX:
PRIMEX TECHNOLOGIES, INC.
00000 Xxxxx Xxxxxx Xxxxx
Page 00
Xx. Xxxxxxxxxx, Xxxxxxx 00000-0000
ATTENTION: General Counsel
Tel: (000)000-0000
Fax: (000)000-0000
(b) for OLIN:
XXXX CORPORATION
000 Xxxxxxx Xxxxx
Xxxxxxx, Xxxxxxxxxxx 00000-0000
Attention: Corporate Secretary
Tel: (000) 000-0000
Fax: (000) 000-0000
10. EXPORTATION CONTROL
--- -------------------
Each PARTY agrees not to export or reexport, or cause to be exported, any
CONFIDENTIAL INFORMATION furnished hereunder by the other PARTY or the equipment
constructed on the basis of such CONFIDENTIAL INFORMATION, or the products
manufactured with such CONFIDENTIAL INFORMATION to any country to which, under
the laws of the country of origin of the CONFIDENTIAL INFORMATION, it is or may
be prohibited from exporting such CONFIDENTIAL INFORMATION or the direct product
thereof.
11. ASSIGNMENT
--- ----------
11.1 LIMITATIONS ON ASSIGNMENT
---- -------------------------
The AGREEMENT shall not be assigned by either PARTY to a third party without the
prior written consent of the other PARTY, except to: an AFFILIATE of a PARTY, or
a successor in the business to which the AGREEMENT relates, or a successor in
all or substantially all of the assets of either PARTY, provided that the
successor agrees in writing to accept the rights and to be bound by the
obligations of the assigning PARTY, any other assignment being void. The
PARTIES agree to guarantee the performance of their AFFILIATEs under this
AGREEMENT.
11.2 CHANGE OF CONTROL
---- -----------------
For purposes of Section 11.1. the following shall be deemed an assignment
by a PARTY of this AGREEMENT:
11.2.1: a PERSON (or two or more PERSONS acting as a "person" within the
meaning of Section 13(d)(3) of the Securities Exchange Act of 1934, as
amended (the "1934 Act")), other than such PARTY, or an employee benefit
plan (or related trust) of such PARTY, becomes the "beneficial owner" (as
defined in Rule 13d-3 under the 0000 Xxx) of 15% or more of the then
outstanding voting stock of such PARTY, or during any period of two
consecutive years, individuals who at the beginning of such period
constitute the Board of Directors of such PARTY (together with any new
director whose election by the Board or whose nomination for election by
such PARTY's shareholders was approved by a vote of at least two-thirds
of the directors then still in office who either were directors at the
beginning of such period or whose election or nomination for election was
previously so approved) cease for any reason to constitute a majority of
the new directors then in office, and/or
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11.2.2: any consolidation or merger of such PARTY in which such PARTY is
not the continuing or surviving corporation or pursuant to which shares
of such PARTY's common stock would be converted into cash, securities or
other property other than a merger in which holders of such PARTY's
common stock immediately prior to the merger will have the same
proportionate ownership of common stock of the surviving corporation
immediately after the merger, and/or
11.2.3: any sale, lease, exchange or other transfer (in one transaction
or a series of related transactions) of all or substantially all the
assets of such PARTY, and/or
11.2.4: adoption of any plan or proposal for the liquidation or
dissolution of such PARTY.
11.3 VIOLATION
---- ---------
Any assignment in violation of this ARTICLE 115 shall be considered void.
12. MISCELLANEOUS
--- -------------
12.1 ENTIRE AGREEMENT
---- ----------------
The AGREEMENT embodies the entire understanding of the PARTIES. No amendment or
modification of the AGREEMENT shall be valid or binding upon the PARTIES unless
it is in writing and signed by the respective duly authorized officers of the
PARTIES.
12.2 PARTIES ARE INDEPENDENT
---- -----------------------
The AGREEMENT does not and shall not be deemed to make either PARTY the agent,
legal representative or partner of the other PARTY for any purpose whatsoever,
and neither PARTY shall have the right or authority to assume or create any
obligation or responsibility whatsoever, expressed or implied, on behalf of or
in the name of the other PARTY or to bind the other PARTY in any respect
whatsoever.
12.3 WAIVER
---- ------
The failure of either PARTY at any time to require performance by the other
PARTY of any provision hereof shall in no way affect the full right to require
such performance within a reasonable time or thereafter the performance of that
and all other provisions, nor shall the waiver of any succeeding breach of such
provision or any other provision operate as a waiver of the provision itself.
12.4 SEVERABILITY
---- ------------
The invalidity or unenforceability of any one or more of the provisions of the
AGREEMENT shall not affect the validity or enforceability of the remaining
provisions.
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12.5 GOVERNING LAW
---- -------------
This Agreement shall be construed and governed, in all respects, by the
law of the State of [Illinois ] applicable to contracts made and to be
performed in that state without reference to any provisions relating to
conflicts of law.
12.6 JURISDICTION
---- ------------
Each PARTY hereby irrevocably and unconditionally submits, for itself and its
property, to the nonexclusive jurisdiction of any [Illinois] State court or
Federal court of the United States of America sitting anywhere within a radius
of 50 miles from East Xxxxx, [Illinois], and any appellate court from any
thereof, in any action or proceeding arising out of or relating to this
Agreement, or for recognition or enforcement of any judgment, and each of the
PARTIES hereby irrevocably and unconditionally agrees that all claims in respect
of any such action or proceeding may be heard and determined in such [Illinois]
State or, to the extent permitted by law, in such Federal court. Each of the
PARTIES hereto agrees that a final judgment in any such action or proceeding
shall be conclusive and may be enforced in other jurisdictions by suit on the
judgment or in any other manner provided by law.
12.7 VENUE
---- -----
Each PARTY hereby irrevocably and unconditionally waives, to the fullest extent
it may legally and effectively do so, any objection that it may now or hereafter
have to the laying of venue of any suit, action or proceeding arising out of or
relating to this Agreement in any [Illinois] State court or such Federal court
located in the State of [Illinois]. Each of the PARTIES hereto hereby
irrevocably waives, to the fullest extent permitted by law, the defense of an
inconvenient forum to the maintenance of such action or proceeding in any such
court.
12.8 SERVICE OF PROCESS
---- ------------------
Each Party to this Agreement irrevocably consents to service of process in the
manner provided for notices in ARTICLE 910 hereof. Nothing in this Agreement
will affect the right of any party to this Agreement to serve process in any
other manner permitted by law.
13. SETTLEMENT OF DISPUTES
--- ----------------------
In the event of any disputes arising out of or in connection with the execution,
interpretation, performance or nonperformance of this AGREEMENT, except for
disputes relating to infringement, validity or enforceability of INTELLECTUAL
PROPERTY, PRIMEX and OLIN shall use the following procedure prior to either
PARTY pursuing other available legal remedies:
13.1 ALTERNATIVE DISPUTE RESOLUTION
---- ------------------------------
Upon signing of this Agreement each PARTY will designate one representative
("Representative") for the purpose of resolving disputes which may arise from
time to time. Upon a dispute arising, either or both Representatives may
request in writing a conference with the other. If so requested, the conference
shall occur within ten (10) days of the initial written request and shall be
held via telephone or at East Alton, Illinois, or elsewhere, at the option of
the Representatives. The purpose and scope of the conference shall be limited
to issues related to resolving the dispute. At the conference, each
Representative, or his or her designee, shall use best efforts to attempt to
resolve the dispute. If the dispute has not been settled within thirty (30)
days of the first meeting of the Representatives, the parties shall establish a
Management Appeal Board ("MAB") within ten (10) days of receipt of a request by
either PARTY to set up an MAB. The MAB shall
Page 16
consist of two (2) members of each respective PARTY's management. The President
of OLIN shall appoint two members to represent OLIN and the President of PRIMEX
shall appoint two members to represent PRIMEX. The sole purpose of MAB shall be
to resolve any dispute over which the Representatives failed to resolve. The MAB
members shall be persons other than the Representatives. The MAB shall meet at
East Alton, Illinois or otherwise confer to resolve the dispute by good faith
negotiations, which may include presentations by the Representatives or others.
13.2 ARBITRATION
---- -----------
In the event the parties are unable to resolve their disputes after availing
themselves of the processes set forth in Section 13.1 above for a period of
ninety (90) days, such disputes, shall be solely and finally settled by three
arbitrators in accordance with the Commercial Arbitration Rules of the AAA (the
"Arbitration Rules"). The PARTY electing arbitration shall so notify the other
PARTY in writing in accordance with the Arbitration Rules, and such notice shall
be accompanied by the name of the arbitrator selected by the PARTY serving the
notice. The second arbitrator shall be chosen by the other PARTY, and a neutral
arbitrator shall be chosen by the two arbitrators so selected. If a PARTY fails
to select an arbitrator or to advise the other PARTY of its selection within
thirty (30) days after receipt by such a PARTY of the notice of the intent to
arbitrate, the second arbitrator shall be selected by the AAA. If the third
arbitrator shall not have been selected within thirty (30) days after the
selection of the second arbitrator, the appointment shall be made by the AAA.
All such proceedings shall be conducted in New York, New York. The arbitrator
shall make detailed findings of fact and law in writing in support of the
decision of the arbitrator panel, and is empowered to award reimbursement of
attorneys' fees and other costs of arbitration to the prevailing PARTY, in such
manner as the arbitrator panel shall deem appropriate. The provisions of this
Section 13.2 shall not be deemed to preclude any PARTY hereto from seeking
preliminary injunctive relief to protect or enforce its rights hereunder, or to
prohibit any court from making preliminary findings of fact in connection with
granting or denying such preliminary injunctive relief, or to preclude any PARTY
hereto from seeking permanent injunctive or other equitable relief after and in
accordance with the decision of the arbitrator panel. Whether any claim or
controversy is arbitrable or litigable shall be determined solely by the
arbitrator panel pursuant to the provisions of this Section 13.2. Any monetary
award of the arbitrators panel shall include interest from the date of any
breach or any violation of this Agreement. The arbitrators shall fix an
appropriate rate of interest from the date of the breach or other violation to
the date when the award is paid in full. The parties agree that judgment on the
arbitration award may be entered in any court having jurisdiction over the
parties or their assets.
13.3 CONTINUING OBLIGATIONS
---- ----------------------
It is expressly agreed that the failure of the parties to resolve a dispute on
any issue to be resolved hereunder shall not relieve either PARTY from any
obligation set forth in this Agreement. In addition, notwithstanding the
pendency of any such dispute, neither PARTY will be excused of its obligations
hereunder to cooperate with the other to effectuate the purposes of this
Agreement.
13.4 COUNTERPARTS
---- ------------
This Agreement may be executed in any number of counterparts, each of
which shall be deemed an original, but all of this shall constitute one and
the same instrument.
Page 17
IN WITNESS WHEREOF the PARTIES hereto have caused this AGREEMENT to be executed
in duplicate as of the date first written above.
XXXX CORPORATION PRIMEX TECHNOLOGIES, INC.
Name________________________ Name ________________________
Title_______________________ Title________________________
Date________________________ Date_________________________
Page 18
