Exhibit 10.10
LICENSE AGREEMENT DATED JANUARY 23, 1997 BETWEEN THE COMPANY AND
XXXXX XXXXXX DIVISION, MARMOM HOLDINGS, INC.
INFORMATION PLACED IN BRACKETS [ ] HAS BEEN
OMITTED IN ACCORDANCE WITH A CONFIDENTIAL
TREATMENT REQUEST PURSUANT TO RULE 406 AND
HAS BEEN FILED SEPARATELY WITH THE COMMISSION
LICENSE AGREEMENT
This License Agreement, entered into this 23rd day of January, 1997 (referred
to as the "Agreement") is between:
Xxxxx Xxxxxx Division, Xxxxxx Holdings, Inc., a corporation doing business at
0000 Xxxx Xxxxx Xxxxxx, Xxxxx, Xxxxxxxx, 00000-0000, hereinafter referred to as
"Xxxxx Xxxxxx ", and
Xxxxxx Technologies, Inc., a corporation organized under the laws of the State
of North Carolina, with its principal place of business at 000 Xxxxx Xxxx
Xxxxxx, Xxxxxxxx, Xxx Xxxx 00000, hereinafter referred to as "Frisby".
RECITALS
WHEREAS, Frisby is the exclusive worldwide licensee of certain patented and
proprietary thermal management technologies and information relating to
microencapsulated phase change materials (hereinafter "MicroPCMs"); and
WHEREAS, Xxxxx Xxxxxx wishes to sublicense Xxxxxx'x technologies relating to
MicroPCMs for Xxxxx Xxxxxx'x exclusive use in the worldwide handwear marketplace
and selected other thermal protection products in the worldwide marketplaces
listed in Exhibit A; and
NOW, THEREFORE, in consideration of the premises and covenants herein contained,
receipt of which is hereby acknowledged, and intending to be legally bound
hereby, the parties hereto agree as follows:
ARTICLE I - DEFINITIONS
1.01 MicroPCMs. "MicroPCMs" means microencapsulated phase change materials.
1.02 Thermasorb. "Thermasorb" means ThermasorbTM which is the name of Xxxxxx'x
thermal additive products based upon its licensed MicroPCM technology.
Thermasorb is a trademark of Frisby.
1.03 ComforTemp. "ComforTemp" means ComforTempTM which is the name of Xxxxxx'x
insulating foam products based upon Xxxxxx'x licensed MicroPCM technology.
ComforTemp is a trademark of Frisby.
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1.04 Technology. "Technology" means all of Xxxxxx'x interest in any inventions,
developments, proprietary information, patents, trademarks, trade names, trade
secrets, know-how and improvements, whether present or future, relating to
MicroPCMs, Thermasorb, and ComforTemp and their incorporation into commercial,
industrial and military products, but specifically excluding fibers or fabrics
which are coated or embedded with MicroPCMs.
1.05 End-Use Product. "End-Use Product" means any item containing the Technology
or service performed incorporating the Technology into an End-Use Product that
is presently, or may one day be, a salable product or service of Xxxxx Xxxxxx,
and which is included in the list of licensed products in Exhibit "A".
1.06 Royalty. "Royalty" means [This information has been omitted in accordance
with a Confidential Treatment Request and has been filed separately with the
Commission.]
1.07 Sublicensee Payments. "Sublicensee Payments" means all monies or other
consideration received by Xxxxx Xxxxxx from any sublicensees for use of the
Technology.
1.08 Patent. "Patent" means all patents and applications for patents, including,
but not limited to, those that are identified in Exhibit "C" and foreign
counterparts thereof, as well as all continuations, continuations-in-part,
divisions and renewals thereof, all patents which may be granted thereon, and
all reissues, reexaminations, extensions, patents of additions and patents of
importation thereof, and any common law rights associated therewith.
1.09 Proprietary Information. " Proprietary Information" means all of the
following information and materials, whether or not patentable or protected by a
copyright, to which Xxxxx Xxxxxx receives, or has received, access or which
Xxxxx Xxxxxx develops or has developed, all or in part, as a result, whether
direct or indirect, of the Agreement set forth herein: (i) production processes,
marketing techniques, purchasing or supply information, price lists, financial
information, customer names and requirements, customer data and other
information relating to the MicroPCMs, Thermasorb, ComforTemp and/or any
derivation thereof; (ii) discoveries, context and ideas, and the embodiment
thereof, including without limitation the nature and results of research and
development activities, processes, formulations, techniques and "know how";
(iii) any other materials or information related to the MicroPCMs, Thermasorb,
ComforTemp and/or any derivation thereof; and (iv) all inventions and ideas
which are derived from, or relate to, Xxxxx Lamont's access to or knowledge of
any of the above-enumerated materials and information.
1.10 Net Sales Revenues. "Net Sales Revenues" means the revenues generated by
Xxxxx Xxxxxx from the sale of End-Use Products whether during the term of this
Agreement or thereafter, less the following amounts: reasonable discounts,
rebates, or returns actually allowed or granted, all applicable taxes related to
the sale and/or use of the End-Use Product, and initial transportation charges
of the Xxxxx Xxxxxx product(s) to customers.
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1.11 Effective Date. This Agreement is effective when duly signed by the Parties
and Frisby receives the License Fee, or the initial installment of the License
Fee as the case may be.
ARTICLE II - GRANT OF LICENSE
2.01 Exclusive License. Frisby grants to Xxxxx Xxxxxx a worldwide license to
utilize the Technology in order to make, use, sublicense, sell and lease End-Use
Products as listed in Exhibit A for a period of three (3) years and to use
Xxxxxx'x ComforTemp and Thermasorb Trademarks in the promotion, advertising, and
marketing of such products. This License is exclusive with respect to utilizing
the Technology in the End-Use Products, but does not preclude or limit Frisby
from licensing the Technology to others for products and services other than
those listed in Exhibit "A". Any sublicensing by Xxxxx Xxxxxx may only be for
End-Use Products and shall require that any sublicensee use Frisby as the sole
source of supply for ComforTemp and Thermasorb. Xxxxx Xxxxxx will not disclose
the Technology to any sublicensee or subcontractor unless that party has agreed
in writing to hold all information in confidence and to use the Technology
solely for the purpose of designing, developing, manufacturing, assembling or
selling the End-Use Product or components thereof for Xxxxx Xxxxxx.
2.02 Term of Agreement. The term of the license granted by this Agreement is
three (3) years which commences upon the Effective Date. Provided Xxxxx Xxxxxx
is not in breach of this Agreement, it shall have two (2) consecutive options to
extend this Agreement, each option being for an additional one (1) year period.
To exercise an option, Xxxxx Xxxxxx must give a written notice delivered to
Frisby not later than November 1st of the year preceding the year for which the
option would apply. The notice must commit Xxxxx Xxxxxx to make the annual
minimum purchase specified for the particular option year as stated under the
Annual Purchase Minimums section of this Agreement.
2.03 Relationship of Parties. Each Party is an independent contractor and under
no circumstances shall any party be deemed to be a legal representative, express
or implied agent, or employee of another party. No act of any party, and no
assistance given from one Party to the other, shall be construed to alter this
independent contractor relationship.
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ARTICLE III - PROVISION OF COMFORTEMP AND THERMASORB
3.01 Provision of Thermasorb and ComforTemp. Sole Source Supply. The sole source
of supply for all Thermasorb and ComforTemp to Xxxxx Xxxxxx (for use by Xxxxx
Xxxxxx, its subcontractors, sublicensees, or affiliates) to support product
development and production shall be Frisby, unless Frisby provides an express
written waiver of that right and any such waiver will be only as to a particular
order and not of Xxxxxx'x right to be the sole source of supply under this
Agreement. Frisby shall arrange for the supply of all Thermasorb and ComforTemp
required by Xxxxx Xxxxxx, its subcontractors, Sublicensees, and/or affiliates,
to be delivered FOB at the site of manufacture of the Thermasorb or ComforTemp.
Frisby agrees to supply all such products to Xxxxx Xxxxxx at terms no less
favorable than the most favorable terms offered to comparable commercial
customers during the term of this Agreement. Frisby agrees that the ComforTemp
and Thermasorb supplied hereunder shall meet the specifications represented by
Frisby. If, from time to time, such materials do not meet the specifications
represented by Frisby, Xxxxx Xxxxxx shall notify Frisby of such failure. Frisby
shall promptly provide replacement goods which meet the previously represented
specifications or, if such specifications cannot be reasonably met, Frisby shall
return the purchase price of the unacceptable goods to Xxxxx Xxxxxx which shall
be Xxxxxx'x sole liability to Xxxxx Xxxxxx for materials not meeting
specifications.
3.02 Annual Purchase Minimums. Xxxxx Xxxxxx agrees to make the annual minimum
purchases ("APM") of ComforTemp foams and/or bulk Thermasorb. If the annual
total of all purchases by Xxxxx Xxxxxx of ComforTemp or Thermasorb does not meet
or exceed the APM level of a given year, Xxxxx Xxxxxx agrees to pay Frisby the
sum of [This information has been omitted in accordance with a Confidential
Treatment Request and has been filed separately with the Commission.] on the
difference between the actual purchases and the APM for that given year which
amount shall be Xxxxx Lamont's sole liability to Frisby for Xxxxx Xxxxxx'x
failure to meet the APM. Any such difference must be paid within thirty (30)
days of the end of the calendar year that the APM is not met. If Xxxxx Lamont's
purchases within a given year exceed the APM, the excess volume may be applied
toward the APM for the following year. For calculation of purchase volumes, a
1/2 lb. purchase of Thermasorb is equal to 1 Lineal Yard of ComforTemp.
Annual Purchase Minimum (APM)
Calendar Year (In Lineal Yards at 45 inch width)
------------- ----------------------------------
1997 10,000
1998 40,000
1999 70,000
2000 90,000 (1st Option Year)
2001 100,000 (2nd Option Year)
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3.03 Delivery of Product. Not later than December 1st of each year during this
Agreement and any option periods, Xxxxx Xxxxxx and Xxxxxx shall establish a
blanket purchase order for Xxxxx Lamont's needs during the coming calendar year.
The establishment of a blanket purchase order does not void or alter Xxxxx
Xxxxxx'x responsibilities under this Agreement for the APM. When Frisby releases
specific shipments to be applied against the blanket purchase order, the
shipments shall be released not less than ninety (90) days preceding the date
Xxxxx Xxxxxx needs the shipment on-dock as expressly communicated to Frisby at
time of establishing the blanket purchase order. Xxxxx Xxxxxx agrees to maintain
an adequate on-hand inventory of ComforTemp to support all its orders due within
ninety (90) days. Xxxxx Xxxxxx and Frisby will determine all other terms and
conditions of sale prior to the first blanket order for ComforTemp.
3.04 Late Delivery. If Frisby fails to meet a specific delivery date as
established in accordance with the above procedure and Xxxxx Xxxxxx is unable to
fulfill an order as a direct result of that failure, Frisby will pay Xxxxx
Xxxxxx a fee equal to thirty percent (30%) of the price Xxxxx Xxxxxx was to pay
on the ComforTemp or Thermasorb required to support the unfulfilled order which
amount shall be Xxxxxx'x sole liability to Xxxxx Xxxxxx for such failure. If two
(2) deliveries from Frisby are late in a given calendar year and the lateness
results in lost sales by Xxxxx Xxxxxx, then the APM for that year will not
apply.
ARTICLE IV - PAYMENTS
4.01 Payments to Frisby. All amounts owed by Xxxxx Xxxxxx to Frisby for supply
of Thermasorb and ComforTemp or any products or services related thereto
provided by Frisby to Xxxxx Xxxxxx shall be paid within thirty (30) days after
billing by Frisby.
4.02 License Fees. In addition to Royalties, Xxxxx Xxxxxx agrees to pay Frisby a
License Fee of [This information has been omitted in accordance with a
Confidential Treatment Request and has been filed separately with the
Commission.] The License Fee will be payable as follows: [This information has
been omitted in accordance with a Confidential Treatment Request and has been
filed separately with the Commission.]
4.03 Royalty Payments. In addition to the License Fee, Xxxxx Xxxxxx agrees to
pay Frisby royalties ("Royalties") of [This information has been omitted in
accordance with a Confidential Treatment Request and has been filed separately
with the Commission.], whether such sales occur during the effective term of the
License or thereafter. The Royalties due shall be paid to Frisby within thirty
(30) days following the end of each calendar quarter.
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4.04 Sublicensee Payments. In addition to License Fees and Royalties, Xxxxx
Xxxxxx agrees to pay Frisby [This information has been omitted in accordance
with a Confidential Treatment Request and has been filed separately with the
Commission.] of any and all Sublicensee Payments paid to Xxxxx Xxxxxx. Such
payments shall be due and payable to Frisby within thirty days following the end
of each calendar quarter in which payments were received by Xxxxx Xxxxxx.
4.05 Records Inspection. Xxxxx Xxxxxx shall maintain adequate books and records
in connection with activity under this Agreement. Frisby may audit the relevant
books and records of Xxxxx Xxxxxx to ensure compliance with the terms of this
Agreement upon reasonable notice to Xxxxx Xxxxxx. Any such audit shall be
conducted during regular business hours at Xxxxx Xxxxxx'x offices and shall not
interfere unreasonably with Xxxxx Lamont's business activities.
ARTICLE V - INTELLECTUAL PROPERTY
5.01 Xxxxxx'x Intellectual Property. Xxxxx Xxxxxx acknowledges that the
Technology and the chemical formulation of Thermasorb is proprietary and
confidential and constitutes a valuable commercial asset of Frisby. Xxxxx
Xxxxxx, and any of its related parties, consultants, subcontractors,
sublicensees, or affiliates, shall not incorporate the Technology in any
applications other than those licensed to Xxxxx Xxxxxx herein. Proprietary
information disclosed by either party hereunder shall be subject to the terms of
the Reciprocal Secrecy Agreement between the parties which is attached to this
Agreement, and made a part of it, as Exhibit "D".
5.02 Reports of Technical Results. Xxxxx Xxxxxx agrees that all information and
evaluation results generated by Xxxxx Xxxxxx, its consultants, subcontractors,
affiliates, or sublicensees, or otherwise obtained during the term of this
License, which are related to the Technology, shall be the exclusive property of
Frisby, with rights to same licensed to Xxxxx Xxxxxx for the term of this
License.
5.03 Reporting Obligations. If Xxxxx Xxxxxx or its employees, contractors,
affiliates, agents, or sublicensees makes a discovery or invention during the
term of this License which relates to the Technology, Xxxxx Xxxxxx shall
promptly make such discovery known to Frisby in writing. If the parties jointly
develop, or Xxxxx Xxxxxx independently develops, patentable intellectual
property related to the Technology, then that technology will be deemed
Technology under this Agreement and licensed to Xxxxx Xxxxxx accordingly.
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5.04 Trademarks. ComforTemp and Thermasorb are Xxxxxx'x Trademarks regarding the
Technology licensed in this Agreement. Except for the licensed right to use
Xxxxxx'x Trademarks as set forth herein, during the term of this Agreement and
any time after, Xxxxx Xxxxxx shall not obtain any right, title or interest to
Xxxxxx'x Trademarks. All licensed products sold by Xxxxx Xxxxxx under the terms
of this License Agreement shall appropriately reference one or more of Xxxxxx'x
Trademarks for ComforTemp or Thermasorb, as designated by Frisby. Further, Xxxxx
Xxxxxx shall not obtain any Trademarks or use any Tradenames that are similar
thereto at any time.
ARTICLE VI - REPRESENTATIONS AND WARRANTIES
6.01 Representation. Frisby represents that it has the right to license the
Technology, that it has not and will not enter into any conflicting agreement,
and that it will pay any renewal fees necessary for the maintenance of the
Patents. If use of the Technology is enjoined, Frisby shall provide a suitable
substitute or refund all License Fees paid under this Agreement
6.02 Indemnification. Frisby agrees to protect, defend, indemnify and hold Xxxxx
Xxxxxx harmless from any action brought by a third party alleging an
infringement based on the licensed use of the Technology. The monetary limit of
this indemnity is reasonable defense costs and the extent of License Fees paid
to Frisby under this Agreement. This indemnification specifically excludes any
action brought by a third party which claims that Xxxxx Xxxxxx has breached any
prior or existing agreement with the third party. Further, Xxxxx Xxxxxx agrees
to protect, defend, indemnify and hold Frisby harmless from any action against
Frisby which arises out of any such claims.
ARTICLE VII - TECHNICAL AND MARKETING ASSISTANCE
7.01 Support. The parties agree to use their mutual best efforts in support of
the development and introduction of new products which incorporate the
Technology, as well as the promotion and sales of the End-Use Products. As to
Xxxxx Xxxxxx, this will mean the active introduction and marketing of the
End-Use Products and the use of Xxxxxx'x ComforTemp and Thermasorb Trademarks in
the promotions, marketing, and advertising for the End-Use Products. For Frisby,
this will mean the promotion of the End-Use Products to the United States
Government, as well as the active promotion of the End-Use Products as a
prominent part of advertising and promotions for ComforTemp and Thermasorb.
Depicting the End-Use Products or Xxxxx Lamont's name as a part of Xxxxxx'x
advertising and promotions will be subject to the reasonable approval of Xxxxx
Xxxxxx. For purposes of this Agreement, Frisby will be considered to have
actively promoted ComforTemp and Thermasorb during a given year if it sets and
expends an annual promotional budget for ComforTemp and Thermasorb equal to at
least ten percent (10%) of the ComforTemp Net Sales Revenue paid by Xxxxx Xxxxxx
to Frisby for the prior year. If Xxxxxx'x advertising and promotional
expenditures during a given year exceed that level, the excess over 10% will be
carried forward and applied to the advertising requirements for the subsequent
years under this Agreement.
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ARTICLE VIII - MISCELLANEOUS PROVISIONS
8.01 Effect of Waiver. No waiver whether express or implied, of any breach of
any term, condition, or obligation of this Agreement shall be construed as a
waiver of any subsequent breach of that term, condition, or obligation, or any
other term, condition, or obligation of this Agreement of the same or different
nature.
8.02 Notices. Any notice provided for in this Agreement must be in writing. If
the notice is given by certified mail, the notice will be deemed to have been
given when such certified letter, properly addressed, is mailed. If such notice
is given by any other means, it will be deemed to have been given at the time of
receipt by the addressee. If such notice is to be given to Xxxxx Xxxxxx, copies
shall be addressed to Xx. Xxxxxx Xxxxxxx, Vice President, Xxxxx Xxxxxx, 0000
Xxxx Xxxxx Xxxxxx, Xxxxx, Xxxxxxxx 00000-0000. If given to Frisby, copies shall
be addressed to Xx. Xxxx Xxxxxx, Chief Executive Officer, Xxxxxx Technologies,
Inc., 000 X. Xxxx Xxxxxx, Xxxxxxxx, XX 00000. Either party hereto may at any
time, by thirty (30) days written notice to the other, designate any other
address in place of those provided in this paragraph.
8.03 Severability. It is understood and agreed by the parties to this Agreement
that if any part, term or provision of this Agreement is held to be illegal by
United States courts or in conflict with applicable law, the validity of the
remaining portions of provision shall not be affected, and the rights and
obligations of the parties hereto shall be construed and enforced consistent
with the intent of this Agreement.
8.04 Interpretation Presumption. This Agreement has been negotiated by the
parties hereto and by the respective attorneys for each party. The parties
represent and warrant to one another that each has, by counsel or otherwise,
actively participated in the finalization of this Agreement, and in the event of
a dispute concerning the interpretation of this Agreement, each party hereby
waives the doctrine that an ambiguity should be interpreted against the party
which has drafted the document.
8.05 Remedies and Defaults. Each party acknowledges and agrees that unless
otherwise stated herein the remedies provided in this Agreement shall be in
addition to, and not in lieu of, any other remedies provided at law or in
equity, including, but not limited to, such injunctive or other equitable relief
as may be deemed appropriate by a court of competent jurisdiction. If a party
defaults in the performance of its obligations under this Agreement and fails to
cure such default within thirty (30) days after receipt of written notice of
such default, the non-defaulting party shall have the right to immediately
terminate this Agreement and the license provided herein. Notwithstanding
termination of this Agreement, the obligation to pay Royalties shall not
terminate for so long as End-Use Products are sold.
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8.06 Successors and Assigns. This Agreement shall inure to the benefit of the
successors, heirs, representatives, or assigns of the parties. However, Xxxxx
Xxxxxx shall not assign its obligations or interests under this Agreement
without prior written approval from Frisby.
8.07 Choice of Law and Dispute Resolution. This Agreement is to be governed by
and interpreted in accordance with the laws of the State of New York. If a
dispute arises between the parties regarding the interpretation or enforcement
of this Agreement, the prevailing party shall be entitled to an award of its
reasonable attorneys' fees in addition to any other relief awarded.
8.08 Complete Agreement. This document, including its exhibits, comprises the
entire agreement with respect to the subject matter hereof and supersedes all
negotiations, representations and warranties, commitments, offers, contracts and
writings prior to the date of this Agreement. Otherwise, the parties to this
Agreement are not to be bound by any representations or warranties other than
those set forth herein or in a written amendment hereinafter entered into by the
parties and duly executed by each party.
8.09 Counterparts. This Agreement may be executed in one or more counterparts,
each of which shall be deemed an original but all of which shall constitute one
and the same instrument.
8.10 Warranty of Authority. The individuals actually executing this Agreement
personally represent and warrant that they have the necessary power and
authority to execute this Agreement on behalf of the party they represent, and
that their signatures are sufficient to make this Agreement the binding and
enforceable obligation of such party.
IN WITNESS WHEREOF, THE PARTIES HERETO HAVE CAUSED THIS AGREEMENT TO BE DULY
EXECUTED.
XXXXX XXXXXX DIVISION XXXXXX TECHNOLOGIES, INC.
XXXXXX HOLDINGS, INC.
By: ________________________ By: ______________________
Its: _______________________ Its: Chief Executive Officer
Exhibits to be attached:
"A" - Products to which License Applies
"B" - [This information has been omitted in accordance with a Confidential
Treatment Request and has been filed separately with the Commission.]
"C" - Patent List
"D" - Reciprocal Secrecy Agreement
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Exhibit A
Licensed End-Use Products
1. Protective handwear, including gloves, mittens, oven mitts and the like.
2. [This information has been omitted in accordance with a Confidential
Treatment Request and has been filed separately with the Commission.]
3. [This information has been omitted in accordance with a Confidential
Treatment Request and has been filed separately with the Commission.]
Exhibit B
COMFORTEMP(TM) FOAM [This information has been omitted in
accordance with a Confidential Treatment Request and has been filed separately
with the Commission.
Exhibit C
MicroPCM Patent Protection Listing
In accordance with the Exclusive License Agreement between Xxxxxx Technologies,
Inc. and Triangle Research and Development Corporation (hereinafter TRDC) dated
1 May, 1995, TRDC has greanted to Frisby the exclusive worldwide license to
develop and commercialize all patented and proprietary bulk PCM and MicroPCM
technologies of TRDC, whether present or future, with the exception of fibers
and fabrics embedded or coated with MicroPCMs. Xxxxxx'x legal Licensse includes,
but is not limited to, U.S. Patent numbers:
US Patent No. 4,807,696 MicroPCM Thermal Energy Storage
US Patent No. 4,911,232 Heat Transfer Using MicroPMC Slurries
US Patent No. 5,141,079 Two Component Cutting and Cooling Fluids
US Patent No. 5,224,356 Thermal Energy Absorbing and Conducting
Potting Materials
US Patent No. 5,415,222 Microclimate Cooling Garments
US Patent No. 5,499,460 Moldable Foams with Reversible Enhanced
Thermal Storage
US Patent (pending) Thermal Insulating Coatings Using MicroPCMs
US Patent (pending) Thermally Enhanced Foam Insulation
*US Patent No. 5,366,801 Coated Fabric With Reversible Enhanced
Properties
*US Patent No. 5,290,904 Thermally Enhanced Heat Xxxxxxx
*Note: Xxxxxx'x License for these patents include all applications except fibers
and fabrics embedded or coated with MicroPCMs.
Exhibit D
RECIPROCAL SECRECY AGREEMENT
This Agreement is made by and between Xxxxx Xxxxxx Division, Xxxxxx Holdings,
Inc. having an office at 0000 Xxxx Xxxxx, Xxxxx, Xxxxxxxx 00000 (hereinafter
"Xxxxx Xxxxxx"), and Frisby Technologies having an office at 000 Xxxxx Xxxx
Xxxxxx, Xxxxxxxx, Xxx Xxxx 00000 (hereinafter "Frisby").
Each and all of the above-mentioned companies shall also be hereinafter referred
to as "the party" or "the parties" respectively.
WHEREAS, the parties propose to hold discussions and exchange information that
each respectively considers proprietary to itself to assist considerations of
mutual business interest in relation to the development and application of
Microencapsulated & Bulk Phase Change Materials incorporated into gloves and
related apparel for commercial, industrial and military applications worldwide
(hereinafter "INFORMATION").
NOW, THEREFORE, the parties agree as follows:
1. Each party agrees that for a period ending December 31, 2000, they will not
disclose INFORMATION as shall be disclosed by the other party in
documentary form or, if disclosed orally, as shall be confirmed in writing
within thirty (30) days thereafter, to any third party or use the same for
any purpose other than that contemplated herein, without the disclosing
party's prior written consent. Each party further agrees to limit access to
such INFORMATION within its company to those of its employees, affiliates
and representatives who may reasonably require the same in order to enable
it to fulfill the purpose stated above for which it is receiving the
INFORMATION. Each such employee or representative shall have entered into
an agreement with the receiving party pursuant to which she/he has agreed
to retain in confidence all INFORMATION which may come into her/his
possession as a result of employment activities;
2. The obligation of paragraph 1 shall not apply to such portions of the
INFORMATION disclosed hereunder that (i) are known to the receiving party
prior to the time of disclosure, as demonstrated by appropriate documentary
evidence antedating disclosure to the receiving party by the disclosing
party, or (ii) shall have been or become in the public domain through no
act or failure to act on the party of the receiving party or its employees,
representatives or affiliates or (iii) shall be lawfully furnished to the
receiving party by a third party having a bona fide right to disclose same
without restriction to the benefit of the disclosing party to this
Agreement or (iv) shall be independently developed by the receiving party
subsequent to receipt from the disclosing party and substantiated by
reasonable documentation or (v) are required by law to be disclosed.
3. Each party agrees that it will not, without the written permission of the
other party, use the INFORMATION which it is obligated hereunder to
maintain in confidence for any reason other than to enable the receiving
party to determine the technical and economic feasibility of its business
interests based on the INFORMATION; and that in no event will the receiving
party itself commercially practice or cause to be practiced by a third
party the technology represented by the INFORMATION which it is obligated
hereunder to hold confidential without the expressed written permission of
the disclosing party.
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4. It is understood that no right or license is granted to the receiving party
by the disclosing party in connection with the INFORMATION disclosed
hereunder.
5. Nothing herein shall obligate either party to disclose to the other party
particular information and the receiving party shall have the right to
refuse or accept any particular proprietary information which is offered.
6. Any documents, data, drawings, materials, samples or specifications
supplied by either party, and all copies thereof, shall be returned upon
request or within 30 days after expiration or termination of this
Agreement.
7. Samples, data and materials supplied by either party or prepared at either
party's direction hereunder shall be deemed to contain confidential
information of the supplying party.
8. Xxxxx Xxxxxx acknowledges that the chemical formulation of the shell of the
Microencapsulated Phase Change Materials is proprietary and confidential
and constitutes a valuable commercial asset of Frisby. Neither Xxxxx
Xxxxxx, nor any of its subcontractors, affiliates or customers shall do any
evaluation of the MicroPCMs which would cause Xxxxx Xxxxxx to become
knowledgeable of the chemical composition of the microcapsule shell
material.
9. Neither Xxxxx Xxxxxx nor any of its customers, subcontractors or affiliates
shall place any Bulk or Microencapsulated Phase Change Material technology
into production unless a mutually acceptable License Agreement has been
executed between Xxxxx Xxxxxx and Frisby.
10. This Agreement shall be governed by and interpreted in accordance with the
laws of the State of New York.
IN WITNESS WHEREOF, the parties have caused this Agreement to be executed by
their duly authorized officers or representatives as of this day and year given
below.
XXXXX XXXXXX DIVISION, XXXXXX TECHNOLOGIES, INC.
XXXXXX HOLDINGS, INC.
By /s/ Xxxxx Xxxx By /s/ Xxxxxxx X. Xxxxxx
--------------------------------- ---------------------------------
Name Xxxxx Xxxx Name Xxxxxxx X. Xxxxxx
--------------------------------- ---------------------------------
Title Vice President & Controller Title Chief Executive Officer
--------------------------------- ---------------------------------
Date January 15, 1996 Date January 12, 1996
--------------------------------- ---------------------------------
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