Exhibit 10.28
JOINT TECHNOLOGY
DEVELOPMENT AGREEMENT
This contract is entered into on 23 September, 2002 between
EUROTECH, LTD., 00000 XXXXX XXXXX, XXX.000, XXXXXXX, XX 00000, XXX (hereinafter
"EUROTECH" or "PARTY/PARTIES"), a company registered in the District of
Columbia, United States of America
and
LOGSTOR ROR A/S, XXXXXXXXXXX 00, XX-0000 XXXXXXX, XXXXXXX
(hereinafter "LR" or "PARTY/PARTIES")
Whereas, EUROTECH has developed certain materials which the Parties believe may
be useful for foam insulation of pipes, and EUROTECH has applied for patent
protection thereon; and
Whereas LR and EUROTECH desire to further develop EUROTECH's material for this
market, all other markets for this material being exclusively reserved to
EUROTECH, unless otherwise agreed in writing by both parties in the future; and
Whereas EUROTECH is willing to forego any opportunity during the term of this
agreement to pursue business relationships with third parties in the area of
interest to LR, on the terms indicated below;
Now, therefore, the Parties agree as follows:
ARTICLE 1. GENERAL
1.1. The purpose of this Agreement is to establish and clearly
define the business relationship between EUROTECH and LR. Upon
entering into this Agreement both Parties intend to use their
best endeavours to develop polyurethane foam free from
isocyanates for foam insulation for preinsulated pipe systems.
1.2. Each Party hereto is an independent contractor and is not an
agent for, partner or joint venture with the other Party. The
rights and obligations of both Parties shall be only those
expressly set forth herein. Neither Party shall have the
authority to bind the other except to the extent authorised
herein. Neither Party shall act as an agent for or
representative of the other, and the employees of one shall
not be deemed to be employees of the other. No relationship
other than that created by and set forth in this Agreement
shall be established by any reference to the Parties as
working for each other.
ARTICLE 2. ASSIGNMENT
2.1. The obligations, interests or rights of either party herein
shall not be assignable without prior written consent of the
other Party, which will not be unreasonably withheld. However,
in the event that either Party assigns or otherwise thereon
transfers the entire business relating to the subject matter
of this Agreement to a third party, this Agreement shall
automatically be assigned to that third party.
ARTICLE 3. INTERPRETATION
3.1. No heading, index, title, subtitle, subheading, marginal note,
singular or plural of this Agreement shall limit, alter or
affect the meaning of an operation of this Agreement.
3.2. In case of conflict or inconsistency between this Agreement
and any other document (e.g. foam agreement of 18 June 2001)
this Agreement shall prevail.
3.3. All correspondence and documentation shall be in the English
language only and in writing, which shall be addressed between
the Parties. This Agreement and the Parties relationships
shall be conducted in the English language only.
3.4. Conventional polyurethane based foams are formed by reacting
polyols and isocyanates. HNIPU based foam requires use of
cyclocarbonates and primary amines. The terms "HNIPU foam
binder" and "HNIPU binder" as used in this Agreement,
specifically Articles 6.3, 7.5 and 7.6, in the context of the
constituents of HNIPU and HNIPU based foam refer to a two part
mixture. These two parts, when mixed in the proper ratio and
manner, react to form HNIPU foam.
ARTICLE 4. AGREEMENT TERM
4.1. This Agreement shall expire on the later of (1) the expiration
of the last of the patents hereunder to expire, (2) the end of
the confidentiality period in Article 13.3.
ARTICLE 5. TERMINATION; EARLY TERMINATION
5.1. This agreement shall expire as set forth in Article 4.1
provided however that it may be terminated earlier as follows:
5.1.1 For cause by either Party.
5.1.2 After two (2) years from the date first written above by
LR or EUROTECH.
5.1.3 In the event of bankruptcy of either Party, unless cured
within thirty (30) days of such bankruptcy.
In the event of early termination under this Article 5.1, the
obligations and duties of the Parties under Articles 7.1, 7.2,
7.3, 7.4, 7.5, 7.7 and 13 shall survive such early
termination.
ARTICLE 6. PERFORMANCE OF THE PARTIES
6.1. Each Party shall perform its own special separate part using
its best endeavours for the best of the development of
polyurethane foam made without the use of isocyanates, and may
exchange confidential samples.
6.2. LR shall supply process technology knowledge, testing and
general know-how regarding foam.
6.3 EUROTECH shall conduct research and development, on HNIPU foam
binder to achieve foam(s) with two thermal stabilities as
provided in Table 1, based on EUROTECH's technology known as
HNIPU, and also based technical input from LR as to its needs.
Research on either thermal stable foam hereinafter may be
referred to as Research, Research Project 1 or Research
Project 2.
6.4 LR shall provide to EUROTECH written technical reports on the
status of its research, testing and progress related to HNIPU
binder. These reports shall be provided at least quarterly in
electronic format.
ARTICLE 7. PATENT RIGHTS AND KNOW HOW
7.1. Any patents on foam insulated pipes deriving from the research
under this Agreement and filed as patent applications after
the date first written above are possessed and owned by both
Parties jointly. The Parties shall make all decisions jointly.
Neither Party may on its own and in its own name register/file
for any patent right in relation hereto.
7.2 Any know how on foam insulated pipes deriving from the
research under this Agreement after the date first written
above are possessed and owned by both Parties jointly.
7.3. Patent applications shall be filed for registration as soon as
possible under the Patent Cooperation Treaty to preserve
rights, and to allow the Parties time to decide upon countries
in which patents are to be pursued.
7.4. Any costs regarding registering or obtaining any patents are
to be shared equally between the Parties. If one of the
Parties elects not to seek or continue any patent, but the
other Party decides to continue with that patent, the Party
which wishes to continue shall take sole assignment of that
patent and be solely responsible for the expenses involved. In
the latter event, the other Party shall have a nonexclusive
license thereunder, with the right to sublicense.
7.5. LR shall both have the right to use any patent rights in
accordance with Article 7.1 and/or know how developed by
either party under this agreement for the purposes of the
performance under this Agreement in the field of foam
insulated pipes. However, EUROTECH shall have the exclusive
right without cost to use such patents and/or in fields other
than foam insulated pipes.
7.6. The objective of this Agreement is the development of a two
part HNIPU binder that when reacted forms polyurethane foam.
Neither constituent, cyclocarbonates or primary amines, of the
binder will have or use isocyanates in its formation or final
form. The foam(s) developed as a result of Research under
thermal stability Research Project 1 [edited to excise Logstor
Confidential Information] to have properties as defined in
Table 1. and a total installed cost [edited to excise Logstor
Confidential Information]. Upon successful development of
either thermal stable foam, LR commits to incorporate the
corresponding HNIPU based foam into its respective product
line to a level sufficient to generate royalty revenue as
defined in Article 7.8.
TABLE 1
---------------------- ----------- ---------------------------------------------
EUROPEAN
STANDARD
PROPERTY UNITS EN-253
---------------------- ----------- ---------------------------------------------
PUR foam shall have a uniform cell structure
Cell Size mm free from smears.
---------------------- ----------- ---------------------------------------------
Closed Cell Ratio % >88%
---------------------- ----------- ---------------------------------------------
Voids and bubbles shall not constitute more
Voids & number than 5% of the cross sectional area. No
Bubbles single void shall leave less than 1/3 of the
nominal insulation thickness between the
steel service pipe and the casting.
---------------------- ----------- ---------------------------------------------
Foam Density kg(m)-3 >60kg/m3
---------------------- ----------- ---------------------------------------------
Compressive
Strength MPa With 10% deformation 0,30 N/mm2
---------------------- ----------- ---------------------------------------------
Cell Gas Pressure kPa LOGSTOR TO DEFINE
---------------------- ----------- ---------------------------------------------
Tangential Shear
Strength >2,20 N/mm2
---------------------- ----------- ---------------------------------------------
Water Absorption
(Boiled) Water absorption, if boiled <10%
---------------------- ----------- ---------------------------------------------
Thermal Conductivity At 50o C < 0,03 W/m k
---------------------- ----------- ---------------------------------------------
Core Density > 60 kg/m3
---------------------- ----------- ---------------------------------------------
The average size of the cells in a radial
Average Cell Size mm direction shall be less than 0,5 mm.
---------------------- ----------- ---------------------------------------------
Axial Shear Strength 0,12 N/mm2
---------------------- ----------- ---------------------------------------------
R&D PROJECT 1
-------------
Maximum Operating Temperature 140o C
(HNIPU foam for district heating and marine
Thermal applications per European Standard EN-253)
Stability ---------------------------------------------
R&D PROJECT 2
-------------
[edited to excise Logstor
Confidential Information]
---------------------- ----------- ---------------------------------------------
7.7. LR is entitled to an exclusive worldwide right to the use of
any result from the research in LR's area, the field of foam
insulated pipes. In return LR shall pay EUROTECH a royalty of
$ [*] USD/pound of binder or [*]% of binder price to LR
whichever is the lessor amount for all HNIPU foam based binder
used, adjusted annually for inflation. Such royalties shall be
paid to EUROTECH quarterly, in USA dollars, within thirty (30)
days of each quarterly anniversary of the date first written
above. LR shall keep written records in sufficient detail to
permit sums due to EUROTECH hereunder to be determined. LR
shall grant EUROTECH reasonable access to such records. [*
edited Eurotech and Logstor Confidential Information]
7.8. If by thirty-six (36) months from the date of final
qualification to the specifications given in section 7.5 Table
1, royalties do not reach and maintain $200,000 (two hundred
thousand) per year thereafter, the license to LR hereunder
may, subject to negotiations between the parties, be converted
to a nonexclusive license, and the royalty due to EUROTECH
shall be reduced to $ [*] USD/pound or [*]% of binder price
whichever is the lessor amount for all HNIPU foam based binder
used, adjusted annually for inflation. LR will be entitled to
receive similar Royalty from sales to potential new Licensee
within the area of foamed pipe insulation. (* edited Eurotech
and Logstor Confidential Information]
7.9. Each Party shall notify the other Party promptly of
infringement by a third party of any patent hereunder.
7.10. No right is granted hereunder by either Party as to any
trademark or trade name of the other.
ARTICLE 8. LIABILITY
8.1. Each Party is only responsible for its own performance and
agrees that neither Party can be held liable towards each
other in any way for the other Party's performance, except
that LR shall make payment to EUROTECH as specified in Article
7.7.
8.2. In no event neither Party shall be liable to the other for
indirect losses, loss of revenue, cost of business
interruption, loss of profit or anticipated profit, loss of
production etc.
ARTICLE 9. COMPETITION CLAUSE
9.1. For the duration of this Agreement neither of the Parties may
engage in any kind of development activity in foam insulation
for pipes that uses HNIPU binder as defined in Articles 3.4
and 7.6 which may directly or indirectly through a company or
engagement of business compete with the present activities of
either Party.
ARTICLE 10. PRODUCT LIABILITY
10.1. A Party shall be liable for personal injuries if it is proved
that the injury is due to negligence on the part of that
Party.
10.2. A Party is only liable for damages to real and movable
property if it is proven that the damage is due to gross
negligence of that Party.
ARTICLE 11. FORCE MAJEURE
11.1. Either Party to this Agreement shall not be liable for any
failure to perform its obligations to the extent that such
failure is due to a force majeure occurrence.
11.2. The circumstances or events which shall be within the
definition of force majeure are
a) riot, war, invasion, act of foreign enemies, hostilities,
(whether war be declared or not) acts of terrorism,
malicious damage, civil war, rebellion, revolution,
insurrection of military or usurped power;
b) ionising radiations or contamination by radioactivity
from any nuclear fuel or from any nuclear waste from the
combustion of nuclear fuel, radioactive toxic explosive
or other hazardous properties of any explosive nuclear
assembly or nuclear component thereof;
c) pressure waves caused by aircraft or other aerial devices
travelling at sonic or supersonic speed;
d) strikes/lock-outs at a national or regional level or
industrial disputes at a national or regional level, or
strikes or industrial disputes by labour employed or not
by the affected party its subcontractors or its suppliers
and which affect a substantial or essential portion of
the Parties performance.
11.3. The Party claiming force majeure shall notify the other Party
promptly and in any event within three (3) days if possible
and shall provide full particulars thereof, including its
intended actions to resolve the event. The Party affected
shall use its best endeavours to mitigate the effects of the
force majeure event at its own costs.
ARTICLE 12. NOTICES
12.1. Notices under this Agreement shall be addressed to the address
stated in page 1 by hand-registered letter, telex or
facsimile. Day-to-day correspondence may be conducted by
E-mail.
ARTICLE 13. CONFIDENTIALITY
13.1. As this Agreement is a joint technology development agreement
confidentiality is of the essence in every concern regarding
the work under this Agreement.
13.2. Unless required by judicial or other governmental rules or
rulings, the Parties shall at no time, without prior written
approval of the other Party, disclose to any third party the
existence of this Agreement or any proprietary information
disclosed or developed hereunder, or any information
concerning the development or the Parties' technical and
business interests and know-how or make any promotional
display, announcement or advertisement. Such provision shall
not apply to the information within the following categories
a) information which was known to one of the Parties, prior
to the receipt hereunder, as evidenced by prior written
records;
b) information which was or becomes publicly known through
no fault of any of the Parties;
c) information which, subsequent to receipt hereunder, is
made available to at least one (1) of the Parties by a
third party, who is not a signatory to this Agreement,
and who is legally entitled to do so;
d) information which is developed by either of the Parties
independently before making this Agreement, as shown by
prior written records;
e) information which is necessary to disclose to enable a
Party to perform its obligations under this Agreement.
It is understood however, that in the fields other than foam
insulation for pipes, EUROTECH may make disclosures to third
parties.
13.3. The confidentiality term shall remain in force for fifteen
(15) years from date of last portion of Confidential
Information disclosed to LR by EUROTECH hereunder.
13.4. Termination of this Agreement shall not relieve either of the
Parties any obligation with respect to confidential
information disclosed or developed hereunder, or confidential
samples submitted hereunder prior to termination.
ARTICLE 14. GOVERNING LAW AND DISPUTE SETTLEMENT
14.1. This Agreement shall be governed by, construed and interpreted
in accordance with the laws of Geneva, Switzerland.
14.2. To the exclusion of any conflict or law rules, which would
refer the matter to another jurisdiction, any dispute,
controversy or claim arising out of or relating to this
Agreement or breach, termination or invalidity thereof, which
cannot be settled by conciliation between the Parties
themselves, shall be settled finally and conclusively by
arbitration according to the rules and procedures of the
International Chamber of Commerce. Any proceedings shall be
conducted in the English language, and any documents to be
relied upon in such a proceeding shall be in the English
language. Any arbitration shall be conducted by a single
arbitrator, acceptable to both Parties, and shall be held in
Geneva or such other location as the Parties may agree.
on behalf of EUROTECH, Ltd.:
/s/ Xxx X. Xxxxxxxxx
---------------------------------------
President and CEO
on behalf of Logstor Ror A/S:
/s/ Jorgen Berth, Senior Vice President
---------------------------------------
Jorgen Berth, Senior Vice President
