IP Assignment and Licence
Exhibit 10.25
THIS AGREEMENT is dated 30 September 2021
PARTIES:
(1)SB ENERGY PRIVATE LIMITED (formerly SB Solar Services Private Limited), a company incorporated and registered in India with registered number CIN: U74140DL2015PTC283928 whose registered office is at ▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇-▇, ▇▇▇▇▇ ▇▇▇▇-▇, ▇▇▇▇▇▇▇▇, ▇▇-▇, ▇▇▇ ▇▇▇▇▇-▇▇▇▇▇▇ (“SB Energy India”);
(2)SB ENERGY HOLDINGS LIMITED], a company incorporated in England and Wales (registered number 09635024) whose registered office is at ▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇, ▇▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇ (“SB Energy”); and
(3)SB ENERGY DEVCO (US), INC., a corporation incorporated and registered in Delaware with company number 7232846 whose registered office is at Corporation Trust Center, ▇▇▇▇ ▇▇▇▇▇▇ ▇▇, ▇▇▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇ (“SB Energy US”),
(each a “Party” and, together, the “Parties”).
BACKGROUND
(A)Immediately prior to Completion (under and as defined in the SPA), each of the Parties was an indirectly held subsidiary of SoftBank Group Corp. (each of the Parties, together with their respective subsidiaries, is collectively the “SoftBank Energy Group of Companies”).
(B)The SoftBank Energy Group of Companies have created various elements of intellectual property in the normal course of operations of their business activities. Such intellectual property comprises:
(a)certain patent applications filed in India by or on behalf of SB Energy India which patents are owned by or belong to SB Energy India;
(b)rights (if any) to apply for patent protection outside India based upon the patent applications filed in India; and
(c)other non-patented documentation, software, digital resources and other materials protected primarily by copyright, know how or trade secrets
each in respect of various aspects of the SoftBank Energy Group of Companies’ technology collectively, and as further defined below, the “Relevant IP”).
(C)The Relevant IP has been developed by the SoftBank Energy Group of Companies using employees and resources located internationally, including SB Energy US personnel/resources located in the United States.
(D)The SoftBank Energy Group of Companies has not historically had in place joint development agreements setting out the legal position regarding ownership and on-going use or future development of the Relevant IP.
(E)The Parties therefore propose to regularize the position regarding ownership and future use of the Relevant IP.
(F)The Parties have considered that the assignments and licences granted under this Agreement are commensurate in value and therefore mutually beneficial to each of the Parties.
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AGREED TERMS:
1.INTERPRETATION
The following definitions and rules of interpretation apply in this Agreement.
1.1Definitions:
“Adani Group” means Adani Green Energy Limited and any of its Affiliates or related parties (as defined in the (Indian) Companies Act, 2013 or any applicable Indian Accounting Standards or any other accounting standards notified under the (Indian) Companies Act, 2013).
“Affiliate” means, in relation to a person, any other person which, directly or indirectly, Controls, is Controlled by or is under common Control with the first named person.
“Applicable Law” means all international, national, federal, state or local laws, treaties, government orders, regulations, regulatory constraints, obligations or rules (including binding codes of conduct and binding statements of principle incorporated and contained in such rules) applicable to the existence or operation of this Agreement or the licence granted hereunder from time to time.
“Business Day” means a day other than a Saturday, Sunday or public holiday in England, New Delhi and San ▇▇▇▇▇▇ when banks in London are open for business.
“Control” (which includes the terms “Controls”, “Controlled by”, “Controlling” and “under common Control with”) means in relation to a person:
(a)ownership or control of more than fifty per cent (50%) of the voting rights or issued share capital (or comparable equity interests) of such person;
(b)the right to appoint and/or remove all or the majority of the members of the board or other governing body of such person; or
(c)the power to direct or cause the direction of the management, and exercise significant influence on the management or policies of such person, in each case whether such control, right or power is obtained directly or indirectly, and whether obtained by ownership of share capital, the possession of voting rights, through contract or otherwise.
“Effective Date” means the date of this Agreement.
“Group Company” means in relation to any company, any body corporate which is from time to time a holding company of that company, a subsidiary of that company or a subsidiary of a holding company of that company, including, for the avoidance of doubt, Affiliates of that company.
“Intellectual Property Rights” means patents, rights to inventions, copyright and related rights, trade marks, business names and domain names, rights in get-up, goodwill and the right to sue for passing off, rights in designs, database rights, rights to use, and protect the confidentiality of, confidential information and trade secrets (including know-how) and all other intellectual property rights, in each case whether registered or unregistered and including all applications and rights to apply for and be granted, renewals or extensions of, and rights to claim priority from, such rights and all similar or equivalent rights or forms of protection which subsist or will subsist now or in the future in any part of the world.
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“Licensees” means SB Energy and SB Energy India.
“Relevant IP” means the Relevant Patent IP and the Relevant Non-Patent IP.
“Relevant Non-Patent IP” means the materials detailed in Part II of Schedule 1.
“Relevant Patent IP” means the Relevant Patent IP (India) and the Relevant Patent IP (Worldwide).
“Relevant Patent IP (India)” means the patent applications detailed in Part I of Schedule 1.
“Relevant Patent IP (Worldwide)” means rights (if and to the extent that any exist) in any jurisdiction outside India in respect of any method or process which falls within the scope of any of the claims of any of the patent applications detailed in Part I of Schedule 1.
“SPA” means the share purchase agreement relating to the sale and purchase of certain shares in the issued share capital of SB Energy entered into on 18 May 2021.
1.2In this Agreement, save where the context otherwise requires:
(a)words in the singular shall include the plural, and vice versa;
(b)a reference to a person shall include a reference to a firm, a body corporate, an unincorporated association or to a person’s executors or administrators;
(c)to the extent that a provision of a Schedule to this Agreement conflicts with a provision of the Agreement (excluding the Schedules), the relevant provision of this Agreement (excluding the Schedules) shall take precedence;
(d)a reference to a clause, sub-clause or Schedule shall be a reference to a clause, sub-clause or Schedule of this Agreement;
(e)the word “including” is without limitation;
(f)if a period of time is specified and dates from a given day or the day of an act or event, it shall be calculated exclusive of that day; and
(g)the headings in this Agreement are for convenience only and shall not affect the interpretation of any provision of this Agreement.
1.3This Agreement shall be binding on, and enure to the benefit of, the Parties to this Agreement and their respective personal representatives, successors and permitted assigns, and references to any Party shall include that Party’s personal representatives, successors and permitted assigns.
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2.TRANSFER OF RELEVANT IP
2.1In consideration of the mutual covenants contained in this Agreement, subject to the licence grant in clause 3, and, in each case, on an “as is, where is” basis:
(a)SB Energy US hereby assigns to SB Energy India any and all right title and interest that SB Energy US may have in relation to the Relevant Patent IP (India) as at the Effective Date including:
(i)any entitlement that it may have to any registrations granted in India pursuant to any of the applications comprised in the Relevant Patent IP (India); and
(ii)any right that it may have in India to bring, make, oppose, defend, appeal proceedings, claims or actions and obtain relief (and to retain any damages recovered) in respect of any infringement, or any other cause of action arising from ownership, of any of the Relevant Patent IP (India), whether occurring before, on, or after the date of this Agreement.
(b)SB Energy and SB Energy India hereby assign to SB Energy US any and all right, title and interest that SB Energy and SB Energy India may have in relation to the Relevant Patent IP (Worldwide) as at the Effective Date, including:
(i)any entitlement that they may have to make applications for patent protection (and any registrations subsequently granted as a result of such applications) in any jurisdiction other than India based on or claiming priority from the Relevant Patent IP (India); and
(ii)any right that they may have in any jurisdictions other than India to bring, make, oppose, defend, appeal proceedings, claims or actions and obtain relief (and to retain any damages recovered) in respect of any infringement, or any other cause of action arising from ownership, of any of the Relevant Patent IP (Worldwide), whether occurring before, on, or after the date of this Agreement.
(c)SB Energy and SB Energy India hereby assign to SB Energy US any and all right, title and interest that SB Energy India and/or SB Energy may have in relation to the Relevant Non-Patent IP as at the Effective Date, including any right that they may have to bring, make, oppose, defend, appeal proceedings, claims or actions and obtain relief (and to retain any damages recovered) in respect of any infringement, or any other cause of action arising from ownership, of any of the Relevant Non-Patent IP, whether occurring before, on, or after the date of this Agreement.
2.2SB Energy, SB Energy India and SB Energy US shall promptly execute such documents and perform such acts as may be required for the purpose of giving full effect to the assignments contemplated by clause 2.1 above.
2.3If, at any time, any of the Parties determines in good faith or otherwise becomes aware of any Intellectual Property Rights developed, created or acquired before the Effective Date that should reasonably have been included in the assignment of the Relevant Non-Patent IP contemplated by clause 2.1(c) above, but which for any reason were not listed in Part II of Schedule 1 (each, an “Omitted IPR”), SB Energy, SB Energy India and SB Energy US agree to take all actions necessary to effect the transfer, conveyance, assignment or delivery of all right, title and interest in and to such Omitted IPR, to SB Energy US, for no
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additional consideration. Prior to any such transfer, the Omitted IPR shall be held on trust for SB Energy US. All Omitted IPR shall automatically form part of the Licence granted to the Licensees under this Agreement. For the avoidance of doubt, ‘Omitted IPR’ does not include any improvements to Intellectual Property Rights that are created on or after the Effective Date.
3.LICENCE GRANT
3.1SB Energy US hereby grants to each of the Licensees a perpetual, irrevocable, assignable (subject to the terms of this Agreement), non-exclusive, sub-licensable (subject to the terms of this Agreement), royalty-free, worldwide, licence to use, exploit, modify or do any other act that would otherwise be an infringement of the Relevant Non-Patent IP and the Relevant Patent IP (Worldwide) (the “Licence”).
3.2SB Energy Private Limited hereby grants to SB Energy US a perpetual, irrevocable, assignable (subject to the terms of this Agreement), non-exclusive, sub-licensable (subject to the terms of this Agreement), royalty-free, licence to use, exploit, modify or do any other act that would otherwise be an infringement of the Relevant Patent IP (India).
4.OTHER PROVISIONS
4.1(i) SB Energy US and (ii) the Licensees agree that they shall not, and shall procure that their respective Affiliates shall not, assert any claim nor seek any indemnity against: (i) (in the case of SB Energy US) the Licensees or either of them or their sub-licensees or transferees; or (ii) (in the case of the Licensees) SB Energy US or its sub-licensees or transferees, in relation to any claim against them by any third party in relation to Relevant IP that is assigned or licensed to them pursuant to this Agreement.
4.2Upon request by any Party within six (6) months after the Effective Date, each Party shall provide access to, and/or copies of, the Relevant IP if and to the extent that the other Party or Parties do not have such access or possess a copy.
4.3For the avoidance of doubt:
(a)nothing in this Agreement will prevent or restrict the use or disclosure: by the Adani Group of information or processes which were or are developed independently of this Agreement by any member of the Adani Group other than SB Energy or SB Energy India or which are in the public domain;
(b)nothing in this Agreement will prevent or restrict the use, disclosure, modification or enhancement by SB Energy US of information, processes, or Intellectual Property Rights that SB Energy US has created or developed independently of SB Energy or SB Energy India or which are in the public domain;
(c)SB Energy US has no access to, or rights of use of, any Intellectual Property Rights developed, owned or acquired by SB Energy, SB Energy India or any member of the Adani Group other than those expressly granted, confirmed or assigned under this Agreement and in existence prior to Completion; and
(d)members of the Adani Group, SB Energy, and SB Energy India have no access to, or rights of use of, any Intellectual Property Rights developed, owned or acquired by SB Energy US
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or any other member of the SoftBank Energy Group of Companies (excluding for this purpose any entity that is or becomes a member of the Adani Group or its permitted successors in title from time to time), other than those expressly granted, confirmed or assigned under this Agreement and in existence prior to Completion.
5.IMPROVEMENTS
5.1If, after the Effective Date, any Party makes, devises, discovers, or otherwise acquires rights in, improvements in the Relevant Patent IP (India) or Relevant Patent IP (Worldwide) or modifications or amendments to, or derivative works incorporating developments, modifications or amendments to, other non-patented works comprised in the Relevant Non-Patent IP, ownership of the Intellectual Property Rights in such improvements, modifications, amendments, or derivative works shall vest in that Party, and no other Party shall acquire any right, title or interest in such Intellectual Property Rights pursuant to the Licence or otherwise by virtue of this Agreement.
6.RECORDAL OF LICENCE
6.1If SB Energy or SB Energy India wish to record the licence granted under clause 3.1, SB Energy US shall provide reasonable assistance to enable the Licensees to do so, at the Licensees’ cost.
6.2If SB Energy US wishes to record the licence granted under clause 3.2, SB Energy and/or SB Energy India shall provide reasonable assistance to enable SB Energy US to do so, at SB Energy US’s cost.
7.SUB-LICENSING
7.1The Licensees and SB Energy US shall have the right to grant to any of its Affiliates or any other third party a sub-licence of any of its rights under this Agreement provided that:
(a)all sub-licences granted shall terminate automatically on expiry or termination of this Agreement for whatever reason;
(b)the Licensees and SB Energy US, as applicable, shall be liable for all acts and omissions of any sub-licensee.
8.ASSIGNMENT AND OTHER DEALINGS
8.1This Agreement shall be binding on and ensure to the benefit of the Parties and their respective permitted successors in title and assignees.
8.2Each Party may, by giving prior written notice to the other Parties, assign or otherwise dispose of and be released from any or all of its rights and/or obligations in relation to this licence either in favour of any of its Affiliates or in favour of any entity which acquires the whole or substantially the whole of the business of that Party or all or substantially all of the assets of that Party or to any successor entity in a merger or acquisition of that Party, provided that such assigning Party shall ensure that, either prior to or contemporaneously with such assignment or transfer, it causes the relevant assignee or transferee to enter into a licence with the relevant counterparties to this Agreement which contains terms that are no less favourable than those set out in this Agreement.
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9.DURATION
9.1This Agreement shall commence on the Effective Date and shall remain in force until the expiry of all of the Intellectual Property Rights comprised in the Relevant IP.
10.SURVIVAL
10.1On expiry of this Agreement for any reason and subject to any express provisions set out elsewhere in this Agreement, the Parties shall co-operate in the cancellation of any licences registered pursuant to this Agreement and shall execute such documents and do all acts and things as may be necessary to effect such cancellation.
10.2Any provision of this Agreement that expressly or by implication is intended to come into or continue in force on or after expiry of this Agreement shall remain in full force and effect.
10.3Expiry of this agreement shall not affect any rights, remedies, obligations or liabilities of the Parties that have accrued up to the date of expiry, including the right to claim damages in respect of any breach of the Agreement which existed at or before the date of expiry.
11.CONFIDENTIALITY
11.1Subject to clause 11.2, each of the Parties shall treat as strictly confidential and not disclose any Confidential Information of the other Party provided or obtained pursuant to this Agreement, and shall use such Confidential Information of the other Party solely for the purposes of enjoying its rights or carrying out its obligations under this Agreement. For the purposes of this clause 11, “Confidential Information” shall include the existence and contents of this Agreement and any other agreement or arrangement contemplated by this Agreement, as well as:
(a)information of whatever nature concerning the business, finances, assets, liabilities, dealings, transactions, know how, customers, suppliers, processes or affairs of the other party; and
(b)any information which is expressly indicated to be confidential or is imparted by one party to the other in circumstances importing an obligation of confidence,
which either party may from time to time receive or obtain (orally or in writing or in disk or electronic form) as a result of entering into, or performing its obligations pursuant to, this Agreement.
Exceptions
11.2The provisions of clause 11.1 shall not prohibit the disclosure of Confidential Information if and to the extent:
(a)disclosed to the officers, employees or agents of the relevant Party or its parents or its Affiliates and the officers, employees or agents of its Affiliates (the “Disclosed Representatives”), in each case, to the extent required to enable such Party to enjoy its rights and carry out its obligations under this Agreement and provided that the Disclosed Representatives are informed of the confidential nature of the Confidential Information before disclosure and are required to comply with the provisions of this clause 11 in respect of such information as if they were a party to this Agreement or are bound by equivalent obligations of confidentiality;
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(b)required by Applicable Law or by the rules of any relevant stock exchange or regulatory or supervisory authority (including any tax authority) or for the purpose of any judicial proceedings arising out of this Agreement or any other agreement entered into under or pursuant to this Agreement or equivalent obligations;
(c)such disclosure is made to a tax authority and is reasonably necessary for the management of the tax affairs of the disclosing Party or the Affiliates of the disclosing Party;
(d)disclosed to the professional advisors of the relevant Party or its Affiliates (the “Advisors”), provided that the Advisors are informed of the confidential nature of the Confidential Information before disclosure and are bound by obligations and duties to maintain the confidentiality of such Confidential Information;
(e)the Confidential Information becomes publicly available (other than as a result of a breach of an obligation of confidentiality);
(f)the other Party has given its prior written consent to the disclosure;
(g)the Confidential Information is obtained from a third party without breach of any undertaking or duty as to confidentiality with respect thereto, whether express or implied;
(h)necessary for the relevant party to discharge its obligations under this Agreement; or
(i)the Confidential Information is independently developed.
11.3Except where prohibited by any Applicable Law, prior to disclosure of any Confidential Information pursuant to clause 11.2(b) (other than in respect of any disclosure to a tax authority) the Party being required to make the disclosure shall promptly notify the other Party of such requirement with a view to providing the other Party with the opportunity to resist such disclosure or otherwise to agree to the timing and content of such disclosure.
11.4For the avoidance of doubt, Relevant Non-Patent IP does not constitute Confidential Information for the purposes of this clause 11, and nothing in this clause 11 shall have the effect of prohibiting or restricting the exploitation of the Relevant IP by the Licensees as contemplated by clause 3 or any other provision of this Agreement.
12.WAIVER
12.1No failure or delay by a Party to exercise any right or remedy provided under this Agreement or by law shall constitute a waiver of that or any other right or remedy, nor shall it prevent or restrict the
further exercise of that or any other right or remedy. No single or partial exercise of such right or remedy shall prevent or restrict the further exercise of that or any other right or remedy.
13.ENTIRE AGREEMENT
13.1Each of the Parties to this Agreement confirms that this Agreement represent the entire understanding, and constitutes the whole agreement, in relation to its subject matter and supersedes any previous agreement between the Parties with respect thereto and, without prejudice to the generality of the foregoing, excludes any warranty, condition or other undertaking implied at law or by custom, usage or course of dealing except to the extent expressly set forth herein.
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13.2Each Party confirms that:
(a)in entering into this Agreement it has not relied on any representation or warranty or undertaking which is not contained in this Agreement; and
(b)in any event, without prejudice to any liability for fraudulent misrepresentation or fraudulent misstatement, no Party shall be under any liability or shall have any remedy in respect of misrepresentation or untrue statement in connection with this Agreement unless and to the extent that a claim lies under this Agreement.
14.VARIATION
14.1No variation of this Agreement shall be effective unless it is in writing signed by the Parties and no waiver of any term, provision or condition of this Agreement shall be effective unless it is in writing and signed by the waiving Party.
15.SEVERANCE
15.1If any term or provision of this Agreement shall be found by a court of competent jurisdiction to be invalid, illegal or otherwise unenforceable, the same shall not affect the other terms or provisions hereof or the whole of this Agreement, but such term or provision shall be deemed modified to the extent necessary in the court's opinion to render such term or provision enforceable, and the rights and obligations of the Parties shall be enforced accordingly, preserving to the fullest permissible extent the intent and agreements of the Parties in this Agreement.
16.COUNTERPARTS
16.1This Agreement may be executed in any number of counterparts and by the Parties to it on separate counterparts, each of which when so executed and delivered shall be an original, but all the counterparts shall together constitute one and the same instrument.
17.THIRD PARTY RIGHTS
17.1No term of this Agreement is enforceable by a person who is not a Party to this Agreement.
18.NO PARTNERSHIP OR AGENCY
18.1Nothing in this Agreement or in any document referred to in it or any arrangement contemplated by it shall be deemed or construed to create the relationship of principal and agent, or employer and employee, or constitute a partnership, between SB Energy US or any of its Affiliates on the one hand, and Licensees or any of their employees, agents or independent contractors, on the other hand.
19.NOTICES
19.1Any notice given to a Party under or in connection with this Agreement shall be in writing and shall be:
(a)delivered by hand or by pre-paid first-class post or other next working day delivery service at its registered office (if a company) or its principal place of business (in any other case); or
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(b)sent by email to the address notified by the relevant Party to the other Parties, as amended from time to time by notice to such other Parties.
19.2Any notice shall be deemed to have been received:
(a)if delivered by hand, on signature of a delivery receipt or at the time the notice is left at the proper address;
(b)if sent by pre-paid first-class post or other next working day delivery service to a local place of receipt, at 9.00 am on the second Business Day after posting;
(c)if sent by pre-paid first-class post or other next working day delivery service to an international place of receipt, at 9.00am on the seventh Business Day after posting; and
(d)if sent by email, at the time of transmission, or, if this time falls outside business hours in the place of receipt, when business hours resume. In this clause 19.2, business hours means 9.00 am to 5.00 pm Monday to Friday on a day that is not a public holiday in the place of receipt.
19.3This clause does not apply to the service of any proceedings or other documents in any legal action or, where applicable, any arbitration or other method of dispute resolution.
GOVERNING LAW
19.4This Agreement and any dispute or claim (including non-contractual disputes or claims) arising out of or in connection with it or its subject matter or formation shall be governed by and construed in accordance with the law of England and Wales.
20.JURISDICTION
20.1Each Party irrevocably agrees that the courts of England and Wales shall have exclusive jurisdiction to settle any dispute or claim (including non-contractual disputes or claims) arising out of or in connection with this Agreement or its subject matter or formation.
This Agreement has been entered into on the date stated at the beginning of it.
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IP Assignment and Licence
SCHEDULE 1 – RELEVANT IP
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IP Assignment and Licence
SIGNATURE PAGE
| Signed by | ▇▇ ▇▇▇▇▇▇▇▇▇▇▇▇ | /s/ ▇▇ ▇▇▇▇▇▇▇▇▇▇▇▇ |  | ||||||||||||||
for and on behalf of SB | |||||||||||||||||
| ENERGY PRIVATE LIMITED | |||||||||||||||||
| Director | |||||||||||||||||
| Signed by | |||||||||||||||||
for and on behalf of SB ENERGY | |||||||||||||||||
| HOLDINGS LIMITED | |||||||||||||||||
| Director | |||||||||||||||||
| Signed by | |||||||||||||||||
| for and on behalf of SB ENERGY | |||||||||||||||||
| DEVCO (US), INC. | |||||||||||||||||
| Director | |||||||||||||||||
IP Assignment and Licence
SIGNATURE PAGE
| Signed by | ||||||||||||||
for and on behalf of SB ENERGY | ||||||||||||||
| PRIVATE LIMITED | ||||||||||||||
| Director | ||||||||||||||
| Signed by | ▇▇▇▇▇ ▇▇▇▇▇ | |||||||||||||
for and on behalf of SB ENERGY | ||||||||||||||
| HOLDINGS LIMITED | /s/ Raman Nanda | |||||||||||||
| Director | ||||||||||||||
| Signed by | ||||||||||||||
for and on behalf of SB | ||||||||||||||
| ENERGY DEVCO (US), INC. | ||||||||||||||
| Director | ||||||||||||||
IP Assignment and Licence
SIGNATURE PAGE
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for and on behalf of SB ENERGY | ||||||||||||||
| PRIVATE LIMITED | ||||||||||||||
| Director | ||||||||||||||
| Signed by | ||||||||||||||
for and on behalf of SB ENERGY | ||||||||||||||
| HOLDINGS LIMITED | ||||||||||||||
| Director | ||||||||||||||
| Signed by | ▇▇▇▇▇▇▇▇ ▇▇▇▇▇ | |||||||||||||
for and on behalf of SB | ||||||||||||||
| ENERGY DEVCO (US), INC. | /s/ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇ | |||||||||||||
| Director | ||||||||||||||