EXHIBIT 10.9
INTELLECTUAL PROPERTY TRANSFER AND LICENSE AGREEMENT
BY AND BETWEEN
▇▇▇▇ CORPORATION
AND
ARCH CHEMICALS, INC.
CONFIDENTIAL DRAFT DEC. 29, 1998
TABLE OF CONTENTS
-----------------
1. DEFINITIONS....................................................... 3
2. ASSIGNMENT OF INTELLECTUAL PROPERTY............................... 6
3. LICENSES.......................................................... 7
4. SECRECY........................................................... 9
5. DURATION AND TERMINATION.......................................... 10
6. RIGHTS UPON TERMINATION OTHER THAN UNDER SECTION 5.1.............. 11
7. FORCE MAJEURE..................................................... 12
8. GUARANTEES, LIABILITIES AND INDEMNITIES........................... 12
9. NOTICES........................................................... 12
10. EXPORTATION CONTROL.............................................. 13
11. ASSIGNMENT....................................................... 13
12. MISCELLANEOUS.................................................... 14
13. SETTLEMENT OF DISPUTES........................................... 15
EXHIBIT A............................................................ 17
EXHIBIT B............................................................ 18
EXHIBIT C............................................................ 19
EXHIBIT D............................................................ 20
EXHIBIT E............................................................ 25
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CONFIDENTIAL DRAFT DEC. 29, 1998
INTELLECTUAL PROPERTY TRANSFER AND LICENSE AGREEMENT
THIS AGREEMENT is made and entered into as of this ___ day of, __________ 1999
by and between:
▇▇▇▇ CORPORATION, having a place of business at ▇▇▇ ▇▇▇▇▇▇▇ ▇, ▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
(hereinafter referred to as "▇▇▇▇")
AND
ARCH CHEMICALS, INC., having a place of business at ▇▇▇ ▇▇▇▇▇▇▇ ▇, ▇▇▇▇▇▇▇, ▇▇
▇▇▇▇▇-▇▇▇▇ (hereinafter referred to as "ARCH") (hereinafter collectively the
"PARTIES " and each individually a "PARTY").
W I T N E S S E T H:
- - - - - - - - - --
WHEREAS, OLIN and ARCH have entered into a Distribution Agreement of even date
herewith concerning the spin-off of ARCH from OLIN (the "Distribution
Agreement");
WHEREAS, prior to entering into the Distribution Agreement, OLIN possesses
certain INTELLECTUAL PROPERTY, TECHNOLOGY and trademarks primarily used in the
ARCH Business (as defined below), as the ARCH Business was part of a single
corporate entity and parent-subsidiary corporate structure;
WHEREAS, ARCH desires to own or have the right to use such certain INTELLECTUAL
PROPERTY, TECHNOLOGY and trademarks used in the ARCH Business;
WHEREAS, to allow each of OLIN and ARCH to obtain the full value of its
respective rights under the Distribution Agreement, ARCH 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 ARCH 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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CONFIDENTIAL DRAFT DEC. 29, 1998
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 ARCH BUSINESS
------------------
"ARCH BUSINESS" shall have the meaning assigned to such term in the DISTRIBUTION
AGREEMENT.
1.4 ARCH INTELLECTUAL PROPERTY
-------------------------------
"ARCH INTELLECTUAL PROPERTY" shall mean the INTELLECTUAL PROPERTY set forth in
EXHIBIT A.
1.5 ARCH PRODUCTS
------------------
"ARCH PRODUCTS" shall mean those products which were made by the ARCH BUSINESS
or its constituent companies and their predecessor companies on or before the
EFFECTIVE DATE and products acquired, developed or established by or for ARCH or
any of its AFFILIATES after the EFFECTIVE DATE. Notwithstanding the foregoing,
ARCH PRODUCTS shall, without limitation, not include PRODUCTS for pulp and paper
----
applications, TYSAR(R) electrodes and OMNX(R) software.
1.6 ARCH TECHNOLOGY
--------------------
"ARCH TECHNOLOGY" shall mean all the TECHNOLOGY, other than JOINT TECHNOLOGY,
which was used by or derived from efforts by or on behalf of the ARCH BUSINESS
or its constituent companies and its predecessors on or before the EFFECTIVE
DATE.
1.7 ARCH TRADEMARKS
--------------------
"ARCH TRADEMARKS" shall mean the trademarks set forth in EXHIBIT B.
1.8 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.
1.9 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.
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CONFIDENTIAL DRAFT DEC. 29, 1998
1.10 DISTRIBUTION AGREEMENT
---------------------------
"DISTRIBUTION AGREEMENT" shall have the meaning specified in the recitals.
1.11 EFFECTIVE DATE
-------------------
"EFFECTIVE DATE" shall mean the Distribution Date specified in the DISTRIBUTION
AGREEMENT.
1.12 INTELLECTUAL PROPERTY
--------------------------
"INTELLECTUAL PROPERTY" shall mean all Memoranda of Invention, and 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.
1.13 JOINT INTELLECTUAL PROPERTY
--------------------------------
"JOINT INTELLECTUAL PROPERTY" shall mean the INTELLECTUAL PROPERTY in existence
on or before the EFFECTIVE DATE as set forth in Exhibit C.
1.14 JOINT TECHNOLOGY
---------------------
"JOINT TECHNOLOGY" shall mean TECHNOLOGY in existence on or before the EFFECTIVE
DATE as set forth in Exhibit C.
1.15 ▇▇▇▇ BUSINESS
------------------
"▇▇▇▇ BUSINESS" shall have the meaning assigned to such term in the DISTRIBUTION
AGREEMENT.
1.16 OLIN INTELLECTUAL PROPERTY
-------------------------------
"OLIN INTELLECTUAL PROPERTY" shall mean the INTELLECTUAL PROPERTY owned by OLIN
on or before the EFFECTIVE DATE other than the ARCH INTELLECTUAL PROPERTY.
1.17 OLIN PRODUCTS
------------------
"OLIN PRODUCTS" shall mean those products which were made by the ▇▇▇▇ BUSINESS
or ITS constituent companies and their predecessor companies 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 calcium hypochlorite or
----
PRODUCTS for swimming pool, spa or hot tub applications.
1.18 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 ▇▇▇▇ BUSINESS
on or before the EFFECTIVE DATE.
1.19 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.
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CONFIDENTIAL DRAFT DEC. 29, 1998
1.20 PRODUCTS
-------------
"PRODUCTS" shall mean the OLIN PRODUCTS and the ARCH PRODUCTS.
1.22 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, development,
packaging and handling of PRODUCTS; and (iii) specifications and properties of
the PRODUCTS.
1.23 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 ASSIGNMENTS
----------------
OLIN agrees to assign and transfer to ARCH, and shall cause its AFFILIATES to
assign and transfer to ARCH, as of the EFFECTIVE DATE: (i) all of its and its
AFFILIATES right, title and interest, together with all rights of priority, in
and to the ARCH INTELLECTUAL PROPERTY and the ARCH TECHNOLOGY; and (ii) all of
its and its AFFILIATES right, title and interest, together with all rights of
priority in and to the ARCH TRADEMARKS and the good will of the businesses to
which they relate; provided that such ARCH TECHNOLOGY, ARCH INTELLECTUAL
PROPERTY and ARCH TRADEMARKS are owned by OLIN or its AFFILIATES as of the
EFFECTIVE DATE. The assignment documents pursuant to this Section 2.1 shall be
substantially in the form as set forth in EXHIBIT D. In the event that ARCH
INTELLECTUAL PROPERTY, ARCH TECHNOLOGY and ARCH TRADEMARKS are owned by
AFFILIATES of OLIN which as of the EFFECTIVE DATE are part of the ARCH BUSINESS
then such ARCH INTELLECTUAL PROPERTY, ARCH TECHNOLOGY and ARCH TRADEMARKS shall
be considered as having been assigned to ARCH pursuant to this Section 2.1.
2.2 PRE-EXISTING LICENSE OBLIGATIONS
-------------------------------------
ARCH INTELLECTUAL PROPERTY, ARCH TECHNOLOGY, ARCH TRADEMARKS, JOINT INTELLECTUAL
PROPERTY and JOINT TECHNOLOGY (hereinafter "ARCH IP Assets") may be subject to
one or more pre-existing obligations which were granted by OLIN or its
AFFILIATES. Solely to the extent that such pre-existing obligations relate to
ownership, use, license or assignment of the ARCH IP Assets they shall comprise
"Pre-existing Obligations". Pre-existing Obligations shall include without
limitation, those obligations set forth in the agreements listed in EXHIBIT E.
To the extent that ARCH IP Assets are subject to such Pre-existing Obligations
ARCH agrees to be bound by the Pre-existing Obligations whether such agreements
are transferred to ARCH pursuant to the Distribution Agreement or are retained
by OLIN. OLIN will identify to ARCH and provide ARCH with copies of the Pre-
existing Obligations.
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CONFIDENTIAL DRAFT DEC. 29, 1998
2.3 DISCLAIMER
---------------
OLIN MAKES NO REPRESENTATION OR WARRANTY, EXPRESS OR IMPLIED, WITH RESPECT TO
THE ARCH INTELLECTUAL PROPERTY OR ARCH TECHNOLOGY OR ARCH TRADEMARKS, 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 ARCH
----------------------------
OLIN hereby grants and shall cause its AFFILIATES to grant to ARCH 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 ARCH BUSINESS on or before the EFFECTIVE
DATE, solely for the making, having made, use, offering for sale, selling and
import of ARCH PRODUCTS, provided that no rights or licenses are granted with
respect to PRODUCTS other than ARCH PRODUCTS.
3.2 JOINT PROPERTY LICENSE TO ARCH
-----------------------------------
OLIN hereby grants and shall cause its AFFILIATES to grant to ARCH 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 ARCH
PRODUCTS, provided that no rights or licenses are granted with respect to
PRODUCTS other than ARCH PRODUCTS.
3.3 ARCH OPTION FOR FUTURE LICENSE
-----------------------------------
OLIN hereby grants and shall cause its AFFILIATES to grant to ARCH 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 ARCH on
or before the EFFECTIVE DATE but which have not been used by or on behalf of the
ARCH BUSINESS on or before the EFFECTIVE DATE, solely for the making, having
made, use, offering for sale, selling and import of ARCH PRODUCTS, provided that
no rights or licenses will be granted with respect to PRODUCTS other than ARCH
PRODUCTS.
3.4 GENERAL LICENSE TO OLIN
----------------------------
ARCH hereby grants and shall cause its AFFILIATES to grant to OLIN an
irrevocable, royalty free, worldwide, nonexclusive license, with the right to
sublicense, to use the ARCH INTELLECTUAL PROPERTY and the ARCH TECHNOLOGY, which
have been used by or on behalf of OLIN in the ▇▇▇▇ BUSINESS 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.
3.5 JOINT PROPERTY LICENSE TO OLIN
-----------------------------------
ARCH hereby grants and shall cause its AFFILIATES to grant to 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, provided that no rights or licenses are granted with respect to
PRODUCTS other than OLIN PRODUCTS.
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CONFIDENTIAL DRAFT DEC. 29, 1998
3.6 OLIN OPTION FOR FUTURE LICENSE
-----------------------------------
ARCH hereby grants and shall cause its AFFILIATES to grant to OLIN an option to
nonexclusively license, upon reasonable terms and conditions to be agreed upon,
the use of the ARCH TECHNOLOGY and ARCH INTELLECTUAL PROPERTY known to OLIN on
or before the EFFECTIVE DATE but which have not been used by or on behalf of the
▇▇▇▇ BUSINESS 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 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 ARCH 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 ARCH under such Government Contracts and the exercise by the
government of its rights under the OLIN guarantee, ARCH and its AFFILIATES
hereby grant to OLIN a royalty free, worldwide, nonexclusive license, with the
right to sublicense, to use the ARCH TECHNOLOGY and ARCH INTELLECTUAL PROPERTY
for the sole purpose of enabling OLIN to fulfill ARCH's obligations under such
Government Contracts defaulted by ARCH. In such event ARCH and its AFFILIATES
agree to cooperate with OLIN and take all reasonable actions which are deemed
necessary by OLIN to enable OLIN to fulfill ARCH's or its AFFILIATE's
obligations under such Government Contracts, including without limitation,
disclosing to OLIN any ARCH 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
----------------
All licenses granted herein are subject to any pre-existing rights or licenses
granted by Olin to a third party. 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.
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.
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CONFIDENTIAL DRAFT DEC. 29, 1998
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 PROPERTIES OR TECHNOLOGY 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. No license of any kind, express or implied, is
granted pursuant to this Agreement with respect to the use by ARCH of OLIN
TRADEMARKS. No license of any kind, express or implied, is granted pursuant to
this Agreement with respect to the use by OLIN of ARCH TRADEMARKS.
3.13 ABANDONING INTELLECTUAL PROPERTY
---------------------------------------
If either PARTY wishes to abandon in any country any JOINT 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 JOINT 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 in any event with no less of a degree of care
than is reasonable for such CONFIDENTIAL INFORMATION) and shall disclose
CONFIDENTIAL INFORMATION of the other PARTY only to its employees who have a
need to know it, provided that such employees agree in writing to be bound by
all confidentiality obligations provided for in the AGREEMENT.
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CONFIDENTIAL DRAFT DEC. 29, 1998
4.3 EXCEPTIONS
-----------------
The obligation set forth in Section 4.1 shall not apply with respect to any
CONFIDENTIAL INFORMATION which:
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 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 agreement imposing obligations on
such party that are at least as stringent as those 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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CONFIDENTIAL DRAFT DEC. 29, 1998
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 this AGREEMENT 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 5.1
-----------------------------------------------------------
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 non-breaching PARTY terminating the AGREEMENT and such breaching PARTY shall
promptly forward to the non-breaching 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.
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7. FORCE MAJEURE
--------------------
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,
INTELLECTUAL PROPERTY or TECHNOLOGY 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
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CONFIDENTIAL DRAFT DEC. 29, 1998
(a) for ARCH:
ARCH CHEMICALS, INC.
▇▇▇ ▇▇▇▇▇▇▇ ▇
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇-▇▇▇▇
ATTENTION: General Counsel
Tel:
Fax:
(b) for OLIN:
▇▇▇▇ CORPORATION
▇▇▇ ▇▇▇▇▇▇▇ ▇
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇-▇▇▇▇
Attention: Corporate Secretary
Tel: (▇▇▇) ▇▇▇-▇▇▇▇
Fax: (▇▇▇) ▇▇▇-▇▇▇▇
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
--------------------------------
11.1.1 - The AGREEMENT shall not be assigned by either PARTY to a third party
without the prior written consent of the other PARTY and any other assignment
shall be void.
11.1.2 - Notwithstanding the foregoing, this AGREEMENT may be assigned 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. The PARTIES agree to
guarantee the performance of their AFFILIATEs under this AGREEMENT.
11.2 CHANGE OF CONTROL
------------------------
For purposes of Section 11.1..2 the following shall be deemed an assignment by a
PARTY of this AGREEMENT which shall require the written assumption of
obligations provided for therein:
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 ▇▇▇▇ ▇▇▇) 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
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CONFIDENTIAL DRAFT DEC. 29, 1998
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
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 made in violation of this ARTICLE 11 shall be 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.
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CONFIDENTIAL DRAFT DEC. 29, 1998
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.
12.5 GOVERNING LAW
--------------------
This Agreement shall be construed and governed, in all respects, by the law of
the State of Connecticut 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 Connecticut State court or
Federal court of the United States of America sitting anywhere within a radius
of 50 miles from Norwalk, Connecticut, 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 Connecticut State court
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 Connecticut State court or such Federal court
sitting within a radius of fifty (50) miles from Norwalk, Connecticut. 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 9 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 or TRADEMARKS, ARCH 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,
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CONFIDENTIAL DRAFT DEC. 29, 1998
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 Norwalk,
Connecticut, 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 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 ARCH shall
appoint two members to represent ARCH. 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
Norwalk, Connecticut 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 within ninety (90)
days after the establishment of a MAB, upon election of either PARTY, 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 as the third arbitrator 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 arbitrators
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.
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CONFIDENTIAL DRAFT DEC. 29, 1998
13.4 NO THIRD PARTY BENEFICIARIES
-----------------------------------
This AGREEMENT is made for the exclusive benefit of OLIN and ARCH, and not for
the benefit of any third party.
13.5 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
IN WITNESS WHEREOF the PARTIES hereto have caused this AGREEMENT to be executed
in duplicate as of the date first written above.
▇▇▇▇ CORPORATION ARCH CHEMICALS, INC.
Name__________________________ Name__________________________
Title_________________________ Title_________________________
Date__________________________ Date__________________________
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