CONFIDENTIAL
License Agreement
Between
Syntroleum Corporation
and
Syntroleum Australia Licensing Corporation
LICENSE AGREEMENT
-----------------
THIS LICENSE AGREEMENT is made and entered into as of this 2nd day of
August, 2000 by and between Syntroleum Corporation, a Delaware corporation
("Licensor"), and Syntroleum Australia Licensing Corporation, a Delaware
corporation ("Licensee").
RECITALS
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A. WHEREAS, Licensor has developed and owns certain patent rights and
technical information relating to a Conversion Process; and
B. WHEREAS, Licensee desires to enter into a non-exclusive limited
license with Licensor to acquire the rights to use Licensor Patent Rights and
Licensor Technical Information in practicing a Conversion Process in order to
grant a sublicense to the Commonwealth of Australia to use Licensor Patent
Rights and Licensor Technical Information in practicing a Conversion Process.
NOW, THEREFORE, in consideration of the mutual covenants and agreements set
forth in this Agreement, the Parties agree as follows.
1. DEFINITIONS
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The following terms (whether or not underscored) when used in this
Agreement, including its preamble and recitals, shall, except where the context
otherwise requires, have the following meanings (such meanings to be equally
applicable to the singular and plural forms thereof).
1.01 "AFFILIATE" means, with respect to each Party, any Person in which the
Party or its parent company(ies) (one or more parent companies in an upward
series) shall at the time in question directly or indirectly own a fifty percent
(50%) or more interest in such Person. It is understood that: (i) a Party or
its parent company(ies) directly owns a fifty percent (50%) or more interest in
a Person if that Party or its parent company(ies) individually or collectively
hold(s) shares carrying fifty percent (50%) or more of the voting power to elect
directors or other managers of such Person and (ii) a Party or its parent
company(ies) indirectly owns a fifty percent (50%) or more interest in a Person
if a series of companies can be specified beginning with a Party or its parent
company(ies), individually or collectively, and ending with such Person so
related that each company of the series, except such Person, directly owns a
fifty percent (50%) or more interest in a later company in the series.
1.02 "AGREEMENT" means this License Agreement.
1.03 "BARREL" means forty-two (42) gallons of two hundred thirty-one (231)
cubic inches each, measured at sixty degrees Fahrenheit (60 F) and one (1)
atmosphere pressure.
1.04 "CHAIN-LIMITING CATALYST" means a type of catalyst for use in a
▇▇▇▇▇▇▇-Tropsch Reaction the primary products of which are predominately
hydrocarbon molecules of twenty (20) or fewer carbon atoms which remain liquid
at ambient temperature and pressure.
1.05 "CONFIDENTIAL INFORMATION" means information of Licensor or Licensee
disclosed to the other Party under this Agreement, including any formula,
pattern, compilation, program, apparatus, device, drawing, schematic, method,
technique, know-how, process or pilot plant data, -and other non-public
information such as business plans or other technology that: (a) derives
economic value, actual or potential, from not being generally known to, and not
being readily ascertainable by proper means by, other persons who can obtain
economic value from its disclosure or use, and (b) is the subject of efforts
that are reasonable under the circumstances to maintain its secrecy, which
information shall be disclosed in writing and labeled as "Confidential" or the
equivalent, or if disclosed verbally or in other non-written form, identified as
such at the time of disclosure and thereafter summarized in writing by the
disclosing Party within thirty (30) days of such initial disclosure.
Confidential Information includes, without limit, Licensor Catalyst Information,
Licensor Technical Information, and Licensee Technical Information.
1.06 "CONVERSION PROCESS" means a process for the conversion of normally
gaseous hydrocarbons into a mixture of hydrocarbons which may be a combination
of normally gaseous, liquid, or solid hydrocarbons at ambient temperatures and
pressures and comprised of (a) autothermal reforming of a feed stream consisting
substantially of gaseous hydrocarbons in the presence of air, or oxygen-enriched
air to create an intermediate feed stream containing carbon monoxide and
molecular hydrogen, and (b) reacting the intermediate stream in the presence of
a ▇▇▇▇▇▇▇-Tropsch catalyst to produce a product stream consisting of any
combination of gaseous, liquid or solid hydrocarbons at ambient temperature and
pressure. The Conversion Process includes all associated internal processes and
technologies such as heat integration, separation, or the recycle, use, or
consumption of hydrocarbons or other products. The Conversion Process does not
include any technology related to (i) pre-treatment of the natural gas feedstock
or (ii) post-processing the ▇▇▇▇▇▇▇-Tropsch product stream for a purpose other
than that defined above.
1.07 "EFFECTIVE DATE" means the date set forth in the first paragraph of
this Agreement.
1.08 "▇▇▇▇▇▇▇-TROPSCH CATALYST" means any catalyst for use in a
▇▇▇▇▇▇▇-Tropsch Reaction including, but not limited to, Chain Limiting Catalyst
and High Alpha Catalyst.
1.09 "▇▇▇▇▇▇▇-TROPSCH REACTION" means the catalytic reaction of carbon
monoxide and hydrogen, the primary products of which are hydrocarbons.
1.10 "HIGH ALPHA CATALYST" means a type of ▇▇▇▇▇▇▇-Tropsch Catalyst,
whose alpha number, as calculated by the ▇▇▇▇▇▇-▇▇▇▇▇ distribution equation, is
0.85 or higher.
1.11 "INVENTIONS OR IMPROVEMENTS" means any process, formula, composition,
device, catalyst (including both autothermal reforming catalysts and
▇▇▇▇▇▇▇-Tropsch Catalysts), apparatus, technology, know-how, operating
technique, improvement, modification, or enhancement relating to the use,
operation, or commercialization of the Conversion Process and the products
(including Synthetic Product) of the Conversion Process, which is (a)
discovered, made, designed, developed or acquired by Licensee, solely or with
others, including Sublicensee, since the date of this Agreement, or (b) acquired
by Licensee from Sublicensee under the terms of the Sublicense Agreement, in
each instance whether patentable or not, including, without limitation, patents,
copyrights, and Confidential Information and further including the full scope
and content of the intellectual and tangible property included therein and
produced therefrom, e.g., drawings, prints, chemical formulae, prototypes, data,
computer programs and software, and the like. Inventions or Improvements shall
not include any information relating to methods of manufacturing catalysts for
use in the Conversion Process.
1.12 "LICENSE FEE" means the fee paid by Licensee to Licensor, as
consideration for granting the license pursuant to this Agreement, and does not
include fees related to the purchase of the associated Process Design Package
for such Licensed Plant, any catalyst or any catalyst markup.
1.13 "LICENSED FACILITIES" means one or more Licensed Plants.
1.14 "LICENSED PLANT" means a plant (including modification, expansion
or replacement thereof) licensed to operate pursuant to a Site License Agreement
issued under the terms of the Sublicense Agreement, at a site within the
Licensed Territory with a design production capacity measured in Barrels of
Synthetic Product per day, using or designed to use Licensor Technology to
practice the Conversion Process to produce Marketable Products.
1.15 "LICENSED TERRITORY" means the countries of Australia, Papua New
Guinea, East Timor and Indonesia and their respective territorial waters,
e-xcept (i) any such country that, from time to time, may be prohibited, or
whose citizens (considered as a group) may be prohibited, by the United States
government from receiving Licensor Technology or the products thereof or (ii)
any such country, the inclusion of which in the definition of Licensed Territory
is, or could in good faith be argued to be, prohibited by United States law,
including, without limitation, United States Executive Orders and administrative
orders, rules and regulations. Licensed Territory shall include territories or
territorial waters which are the subject of official dispute between or among
countries only if all countries claiming sovereignty, a sovereign right, or
jurisdiction over such territories or territorial waters are otherwise included
within the definition of such term.
1.16 "LICENSEE PATENT RIGHTS" means all rights with respect to patents
and patent applications of all relevant countries to the extent that the claims
cover features or aspects of Inventions or Improvements practiced in a Licensed
Plant, in each case to the extent that, and subject to the terms and conditions
under which, Licensee has acquired such rights under the terms of the Sublicense
Agreement and has the right to grant licenses, immunities or licensing rights
without having to make payment to others.
1.17 "LICENSEE TECHNICAL INFORMATION" means all unpatented Inventions
or Improvements practiced in a Licensed Plant, in each case to the extent that,
and subject to the terms and conditions under which, Licensee has acquired such
rights under the terms of the Sublicense Agreement and has the right to grant
licenses, immunities or licensing rights without having to make payment to
others.
1.18 "LICENSOR CATALYST INFORMATION" means, without limit, information
relating to any catalyst, catalyst formulation, conditioning procedure, start-up
procedure, regeneration procedure, or performance considered to be proprietary
by and to Licensor or acquired by Licensor which is useful in the practice of a
Conversion Process and which has been used commercially or is ready for
commercial use. Licensor Catalyst Information shall not include any information
relating to methods for manufacturing catalysts for use in a Conversion Process.
1.19 "LICENSOR CATALYST PATENT RIGHTS" means all rights with respect to
patents and patent applications of all relevant countries to the extent that the
claims cover features or aspects of catalysts useable in a Conversion Process
(including, without limitation, autothermal reforming catalysts and
▇▇▇▇▇▇▇-Tropsch Catalysts) and expressly excluding any process operating
techniques or apparatus or methods for manufacturing such catalysts, which are
acquired by Licensor (with right to sublicense) or are based on inventions
conceived by Licensor prior to termination of this Agreement; in each case to
the extent that, and subject to the terms and conditions, including the
obligation to account to and/or make payments to others, under which Licensor
has the right to grant licenses, sublicenses, immunities or licensing rights.
1.20 "LICENSOR PATENT RIGHTS" means all rights with respect to patents
and patent applications of all relevant countries to the extent that the claims
cover features or aspects of a Conversion Process (including, without
limitation, any operating techniques and apparatus and expressly excluding
Licensor Catalyst Patent Rights) which are acquired by Licensor (with right to
sublicense) or are based on inventions conceived by Licensor prior to
termination of this Agreement; in each case to the extent that, and subject to
the terms and conditions, including the obligation to account to and/or make
payments to others, under which Licensor has the right to grant licenses,
sublicenses, immunities or licensing rights.
1.21 "LICENSOR TECHNICAL INFORMATION" means all unpatented information
relating to a Conversion Process (including, without limitation, operating
techniques and apparatus for carrying out a Conversion Process and expressly
excluding Licensor Catalyst Information and Reactor Information) which (a)
either (i) has been commercially used or (ii) is in a stage of development
suitable for commercial use, and (b) has been made or acquired by Licensor (with
right to sublicense) prior to the termination of this Agreement; in each case to
the extent that, and subject to, the terms and conditions, including the
obligation to account to and/or make payments to others, under which Licensor
has the right to disclose and grant rights to others.
1.22 "LICENSOR TECHNOLOGY" includes Licensor Technical Information and
Licensor Patent Rights related to the practice of a Conversion Process and
Licensor Catalyst Information and Licensor Catalyst Patent Rights related to the
use of Licensor catalysts in the practice of a Conversion Process but expressly
excluding the right to make, have made, or sell Licensor Catalysts.
1.23 "LUBRICANTS" means hydrocarbon base oils which can be made into,
or blended with other base oils to be made into, without limit (a) automotive
lubricating oils such as PCMO, HDD, transmission and hydraulic fluids, and gear
oils; (b) industrial lubricants such as metalworking lubricants, process oils,
white oils, agricultural spray oils, de-foamers, cutting and quenching oils, and
rubber processing oils; (c) greases; (d) drilling fluids; or (e) any other
specialty product agreed to by the Parties which is not a Marketable Product.
1.24 "MARKETABLE PRODUCTS" means finished hydrocarbon fuels,
hydrocarbons consumed as fuel, or fuel blending stocks including, but not
limited to, diesel, kerosene, gasoline, and naphtha processed from Synthetic
Product and expressly excluding waxes, chemicals, Lubricants, or any other
specialty hydrocarbon products and subject to the express condition that
Marketable Products shall be produced from Synthetic Product at the Licensed
Plant or produced from Synthetic Product at a separate facility operated by the
Licensee, its Affiliates, or third Persons who are contractually committed to
Licensee or its Affiliate to produce only Marketable Products from such
Synthetic Product. Notwithstanding the foregoing, Marketable Products shall be
deemed to include any products:
(a) produced at any location by any Person from a blended stream of
Synthetic Product and at least 15 % by volume of produced crude oil or
condensate, in which the Synthetic Product, before any blending,
(i) remains a liquid at sixty degrees Fahrenheit (60 F) and one (1) atmosphere
pressure or,
(ii) has a chemical composition consisting of molecules having at least 85 % by
volume of which contain no more than 20 carbon atoms each and no more than 1 %
by volume of which contains more than 40 carbon atoms each; or
(b) produced at any location by any Person from a blended stream of
Synthetic Product and at least 40 % by volume produced crude oil or condensate
such that after blending the mixture is a transportable liquid, expressly
excluding slurries; or
(c) produced by blending individual fractions distilled from Synthetic
Product with at least 50 % by volume of like distilled fractions from produced
crude oil or condensate, in which each distilled fraction from Synthetic
Product, before any blending, has a chemical composition consisting of molecules
having at least 85 % by volume of which contain no more than 20 carbon atoms
each and no more than 1 % by volume of which contains more than 40 carbon atoms
each, wherein the blending is performed at any location by the Licensee, its
Affiliates, or third Persons who are contractually committed to Licensee or its
Affiliate to produce only Marketable Products from such Synthetic Product.
Notwithstanding the above language in this Section 1.24 hydrocarbons consumed
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as fuel by Licensee or its Affiliates at locations which satisfy the conditions
of this Section 1.24 are Marketable Products, regardless of whether or not they
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happen to be waxes, chemicals, Lubricants, or any other specialty hydrocarbon
products.
1.25 "PARTIES" means Licensor and Licensee.
1.26 "PARTY" means Licensor or Licensee.
1.27 "PERSON" means any natural person, corporation, partnership, limited
liability company, firm, association, trust, government, governmental agency or
any other entity, other than the Parties.
1.28 "PROCESS DESIGN PACKAGE" means a compilation of text, figures, drawings
and documentation, relating to the design and construction of a Licensed Plant,
which may be modified from time to time by mutual consent of the Parties, and
expressly excluding Reactor Information, which is necessary and sufficient to
prepare the detailed design and engineering necessary to construct and operate a
Licensed Plant.
1.29 "REACTOR INFORMATION" means all information, including but not limited
to data, processes, plans, specifications, flow sheets, designs, and drawings,
relating to the internal design or functions including, without limitation, tube
count, tube size and configuration and catalyst volume, relating to any Licensor
autothermal reformer or ▇▇▇▇▇▇▇-Tropsch reactors, which, at any time during the
term of this Agreement, Licensor discloses to Licensee.
1.30 "REACTOR VENDOR" shall mean those fabricators approved by Licensor to
perform the fabrication and/or maintenance and repair of autothermal reformer or
▇▇▇▇▇▇▇-Tropsch reactors for installation and use in Licensed Facilities.
Licensor may, from time to time, add or remove any vendor from being a Reactor
Vendor.
1.31 "SITE LICENSE AGREEMENT" means an agreement between Licensee and
Sublicensee, in the form attached to the Sublicense Agreement, and which may be
modified from time to time by mutual written consent of Licensee and
Sublicensee, granting the right to build and operate a single Licensed Plant,
specifying in each case the fixed site and the nominal design capacity, in
Barrels of Synthetic Product produced per day.
1.32 "START-UP DATE" means the first full calendar day following a five day
period, after completion of catalyst pre-treatment and other preliminary
operations, during which the applicable Licensed Plant produces quantities of
Synthetic Product in an amount equal to at least 75% of the per-day design
production capacity of such Licensed Plant averaged over such five day period.
1.33 "SUBLICENSEE" means the Commonwealth of Australia.
1.34 "SUBLICENSE AGREEMENT" means the License Agreement between Licensee and
Sublicensee dated August 2, 2000.
1.35 "SYNTHETIC PRODUCT" means those hydrocarbons, having a chemical
composition substantially consisting of molecules with five or more carbon atoms
each, produced using Licensor Technology in the practice of a Conversion Process
at a Licensed Plant.
2. LICENSOR GRANTS TO LICENSEE; SUBLICENSE RIGHTS
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2.01 Subject to the terms and conditions of this Agreement, Licensor grants
to Licensee a limited, non-exclusive, non-transferable (except as provided in
Section 2.05 and Section 8) right and license to use Licensor Patent Rights and
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Licensor Technical Information to practice a Conversion Process. Licensee shall
have the right to grant a sublicense of the rights licensed to Licensee under
this Section 2.01 to Sublicensee under the terms of the Sublicense Agreement for
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the purpose of granting Sublicensee the right to design, construct, operate and
maintain (including modify, expand and replace) Licensed Facilities under a
separate Site License Agreement for each Licensed Plant, to practice a
Conversion Process to manufacture Synthetic Product solely for the purpose of
producing, using, and selling Marketable Products anywhere in the world.
2.02 Subject to the terms and conditions of this Agreement, Licensor grants
to Licensee a limited, non-exclusive, non-transferable (except as provided in
Section 2.05 and Section 8) right to purchase from Reactor Vendors the
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appropriate ▇▇▇▇▇▇▇-Tropsch and autothermal reforming reactors for use in the
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practice of a Conversion Process. Licensee shall have the right to grant a
sublicense of the rights licensed to Licensee under this Section 2.02 to
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Sublicensee under the terms of the Sublicense Agreement for the purpose of
granting Sublicensee the right to purchase from Reactor Vendors the appropriate
▇▇▇▇▇▇▇-Tropsch and autothermal reactors for use in the practice of a Conversion
Process. Licensee shall have no right to make, have made, or sell any reactor
based on Reactor Information except as expressly provided in this Section 2.02.
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At the time a Request for Site License Agreement has been submitted by the
Sublicensee to the Licensee under the Sublicense, Licensor shall survey its
Reactor Vendors to determine the lead time for reactor fabrication for the
Licensed Plant. If delivery time for reactors is greater than 18 months,
Licensor agrees with Licensee to use its commercially reasonable efforts to
approve additional Reactor Vendors in order to reduce the delivery time.
2.03 Subject to the terms and conditions of this Agreement, Licensor grants
to Licensee (a) the right to purchase from Licensor the appropriate
▇▇▇▇▇▇▇-Tropsch Catalyst and, from either Licensor or a catalyst vendor
designated by Licensor, the appropriate autothermal reforming catalyst for use
in the practice of a Conversion Process, and (b) a limited non-exclusive,
non-transferable (except as provided in Section 2.05 and Section 8) right and
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license under Licensor Catalyst Patent Rights and Licensor Catalyst Information
to use such catalysts in the practice of a Conversion Process. Licensee shall
have the right to grant a sublicense of the rights licensed to Licensee under
this Section 2.03 to Sublicensee under the terms of the Sublicense Agreement for
------------
the purpose of granting Sublicensee the right to purchase and use such catalyst
at a Licensed Plant to manufacture Synthetic Product solely for the purpose of
producing, using, and selling Marketable Products anywhere in the world. The
purchase price for any catalyst purchased by Licensee from Licensor shall be
equal to Licensor's cost to produce or have produced such catalysts. Licensee
shall have no rights to make, have made, or sell any Licensor ▇▇▇▇▇▇▇-Tropsch
Catalyst or autothermal reforming catalyst, which is proprietary to Licensor.
Beyond the initial catalyst fill, for a Licensed Plant, Licensee will have the
right to buy replacement catalyst from other catalyst suppliers. If Licensor
specifies in the Process Design Package an autothermal reforming catalyst
commercially available from a third party, Licensee shall have the right to
purchase such catalyst directly from a third party.
2.03A Licensor agrees, where Licensee requests to purchase the appropriate
▇▇▇▇▇▇-Tropsch Catalyst because of a request from the Sublicensee to purchase
the same under the Sublicense, to supply that catalyst to the Licensee.
2.04 In the event Licensor for any reason is unable to supply Licensee with
such amounts of ▇▇▇▇▇▇▇-Tropsch Catalyst as may be reasonably necessary for the
operation of a specific Licensed Plant (or in accordance with Section 2.03A),
Licensor shall provide to one or more catalyst vendors designated by Licensor
the necessary catalyst recipe, together with a non-exclusive limited license to
make and sell such ▇▇▇▇▇▇▇-Tropsch Catalyst to Licensee for use in such Licensed
Plant (or for the purposes of Section 2.03A), and Licensee shall have the right
to purchase such ▇▇▇▇▇▇▇-Tropsch Catalyst from such vendor for use in such
Licensed Plant (or for the purposes of Section 2.03A) on the same terms
(including price) as set forth in Section 2.03.
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2.05 During the term of this Agreement, Licensee may extend this Agreement
to any Affiliate, provided that Licensee shall first notify Licensor in writing
of any such extension and the acceptance of such extension by such Affiliate
pursuant to this Section 2.05. The Affiliate to which this Agreement may be
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extended by Licensee shall be subject to and shall accept in writing (in the
form set forth in Attachment 2) the same obligations to which Licensee is
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subjected under this Agreement and all terms and conditions of this Agreement
shall apply to such Affiliate with respect to its obligations and its rights
(except the right of extension as set forth in this Section 2.05) as if such
------------
Affiliate had entered into this Agreement with Licensor effective as of the date
of such extension. Licensee warrants to Licensor the full performance by such
Affiliate of the obligations which are imposed upon such Affiliate as a result
of such extension of this Agreement and, notwithstanding any such extension,
Licensee shall still be liable to Licensor for all sums which become due from
such Affiliate to Licensor and for any default by such Affiliate in the
performance of its obligations under this Agreement.
3. TECHNICAL ASSISTANCE
------------------------
3.01 Licensee shall purchase and Licensor agrees to furnish to Licensee, or
to a contractor designated by Licensee, a Process Design Package for each
Licensed Plant according to the terms specified in Section 5.02 of this
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Agreement. Where Licensee has agreed to furnish a Process Design Package to
Sublicensee according to the Sublicensee, Licensor agrees to furnish that
Process Design Package to Licensee in a form sufficient for Licensee to satisfy
that obligation to Sublicensee.
3.02 Reactor Information necessary for each Licensed Plant shall be excluded
from the Process Design Package. However, those elements of Reactor Information
which are necessary to fabricate such reactors will be provided by Licensor
directly to the Reactor Vendors selected by Licensee or Sublicensee, as the case
may be, to manufacture the autothermal reformer and ▇▇▇▇▇▇▇-Tropsch reactors
from Licensor's then current list of Reactor Vendors. Licensor may, from time
to time, add or remove any Reactor Vendor.
3.03 Except as may be set forth in a Process Design Package, the obligations
of Licensor under this Agreement do not include the performing of any basic or
detailed design, engineering, training, consulting, start-up, operating or
maintenance services with respect to any Licensed Plant. Licensor's
responsibilities for any such services in the design, construction and operation
(including maintenance) of any Licensed Plant shall be as set forth in one or
more separate written engineering services agreement(s) (if any) between
Licensor and Licensee or Sublicensee, as the case may be, specifically
applicable to each Licensed Plant. Licensor will not refuse a request by
Sublicensee (or Licensee on behalf of Sublicensee) to enter into such an
agreement with Sublicensee for such services as are reasonably requested by
Sublicensee (or Licensee on behalf of Sublicensee) and the Parties will each act
reasonably in agreeing to the terms of such agreement. Licensee holds the
benefit of this Section 3.03 for itself and on trust for Sublicensee.
3.04 Licensor agrees to disclose to Licensee, upon reasonable request but at
least once a year, (a) additions to Licensor Technology and (b) improvements or
inventions developed by Licensor or its Affiliates relating to Licensor
Technology which have been commercially used or which Licensor determines are in
a stage of development suitable for commercial use. Licensor shall permit
Licensee to reasonably inspect, at mutually convenient times, the operating
procedures, process conditions, material balances, energy consumption, catalyst
performance, and analyses of internal streams and/or Synthetic Product at
Licensor's pilot plant which are applicable to such improvements or inventions.
Licensee may disclose those additions, improvements or inventions to Sublicensee
according to the Sublicense.
3.05 Licensee shall provide Licensor 90 days advance written notice of the
anticipated Start-up Date for each Licensed Plant. Licensee agrees to permit
Licensor and/or its representatives access to Licensee's Licensed Plants at
reasonable and convenient times, for inspection and if requested by Licensee,
training, by representatives of Licensor. Licensor shall have the right to
charge Licensee a reasonable fee for any training as may be agreed with the
Licensee on a case by case basis.
4. LICENSEE GRANTS TO LICENSOR
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4.01 Licensor may, no more than one (1) time per year, request and Licensee
agrees to disclose to Licensor in writing any Inventions or Improvements related
to a Conversion Process. Licensee may disclose those Inventions and
Improvements to Sublicensee under the Sublicense.
4.02 Subject to the terms and conditions of this Agreement, Licensee grants
to Licensor a limited, non-exclusive, irrevocable, royalty free, worldwide (i)
right and license under Licensee Patent Rights and (ii) right and license to use
Licensee Technical Information for the design, construction, operation and
maintenance (including modify, expand and replace) of facilities practicing the
Conversion Process, together with the right to grant corresponding sublicenses
of the Licensee Patent Rights and Licensee Technical Information to other
licensees of Licensor Technology for use at a licensed plant practicing a
Conversion Process, provided that any such licensee to whom a sublicense is to
be granted shall have granted reciprocal rights to Licensor to use and grant
sublicenses under such licensee's patent rights and technical information for
the benefit of Licensee. Licensee shall have the right to charge Licensor a
reasonable fee for any training with respect to Licensee Patent Rights and
Licensee Technical Information as may be agreed with the Licensor on a case by
case basis.
4.03 Should Licensee, during the term of this Agreement, make any patentable
Inventions or Improvements, Licensee may, at its sole discretion, file patent
applications with respect to such Inventions or Improvements in its own name and
at its own expense, and take such other steps as are necessary, in the sole
judgment of Licensee, to protect its rights in such Inventions or Improvements.
In the event Licensee declines to file any patent application with respect to
any Inventions or Improvements, it shall promptly notify Licensor in a timely
manner to allow Licensor, at its sole discretion, to file such patent
application at its sole expense, and to take such other steps as are necessary,
in its judgment, to protect the Parties' rights in such Inventions or
Improvements, subject to Licensee's obligation to account to third parties
therefore and provided that title to such Inventions or Improvements shall
remain in Licensee.
4.04 Licensor and Licensee each agree that they will take all actions and
execute all documents and shall cause their employees, agents and contractors to
take all actions and execute all documents as are necessary or appropriate to
carry out the provisions of this Section 4 or to assist each other in the
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preparation, filing and prosecution of patent applications or securing such
protection referenced in this Section 4 when so requested.
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4.05 Licensee shall permit Licensor and/or its representatives to reasonably
inspect, at mutually convenient times, the operating procedures, process
conditions, material balances, energy consumption, catalyst performance, and
analyses of internal streams and/or Synthetic Product which are applicable to
Licensee's Inventions or Improvements at any Licensed Plant incorporating such
Inventions or Improvements.
4.06 Licensee agrees to provide, from time to time and upon request by
Licensor, samples of Synthetic Product and Marketable Products as they are
produced by any of Licensee's Licensed Plants to verify compliance with this
Agreement. Licensor agrees to limit its analysis of samples of Marketable
Products to those analyses necessary to determine compliance with the definition
of Marketable Products.
5. LICENSE AND OTHER FEES
--------------------------
5.01 In consideration for the rights granted to Licensee by Licensor under
this Agreement, Licensee has paid Licensor a non-refundable amount of $100.00
U.S. dollars upon execution of this Agreement, the receipt of which is
acknowledged.
5.02 In addition to the amounts to be paid by Licensee to Licensor under
Section 5.01, Licensee agrees to pay Licensor for each Process Design Package, a
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fee equal to the costs actually incurred by Licensor in preparing the Process
Design Package. Such fee shall be invoiced by Licensor to Licensee after
delivery of a Process Design Package and payment shall be due within 30 days
from receipt of invoice by Licensee.
5.03 All amounts payable under this Agreement shall be paid by Licensee to
Licensor at Licensor's address specified in Section 10.08, or to an account at a
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bank specified by Licensor, in dollars of the United States of America.
5.04 In the event Licensee is required to withhold any taxes from amounts
payable to Licensor under this Agreement, Licensee agrees to provide Licensor at
the time of such withholding with a receipt or other evidence reflecting the
deposit of such taxes with the appropriate governmental agency.
6. WARRANTIES AND INDEMNITIES
------------------------------
6.01 Licensor represents and warrants that it is a corporation duly
organized, validly existing, and in good standing under the laws of the State of
Delaware, United States of America, and has full power and authority to enter
into and perform its obligations under this Agreement. The execution, delivery
and performance of this Agreement and all documents relating hereto by Licensor
have been duly and validly authorized by all requisite corporation action and
constitute valid and binding obligations of Licensor enforceable in accordance
with their respective terms.
6.02 Licensee represents and warrants that it is a corporation duly
organized, validly existing, and in good standing under the laws of Delaware,
United States of America, and has full power and authority to enter into and
perform its obligations under this Agreement including the right to grant the
rights and licenses as set forth in Section 4. The execution, delivery and
---------
performance of this Agreement and all documents relating hereto by Licensee have
been duly and validly authorized by all requisite corporate action and
constitute valid and binding obligations of Licensee enforceable in accordance
with their respective terms.
6.03 Except as otherwise expressly set forth in this Agreement or other
written agreement between the Parties, LICENSOR MAKES NO AND HEREBY DISCLAIMS
ANY EXPRESS OR IMPLIED WARRANTIES OR REPRESENTATIONS OF ANY KIND, INCLUDING ANY
WARRANTY OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, OR ANY OTHER
WARRANTIES OR REPRESENTATIONS OF ANY KIND TO LICENSEE, INCLUDING, WITHOUT
LIMITATION, ANY WARRANTY OR REPRESENTATION WITH RESPECT TO USE OF LICENSOR
TECHNOLOGY AS AUTHORIZED HEREUNDER.
6.04 EXCEPT FOR UNAUTHORIZED DISCLOSURE OR USE OF CONFIDENTIAL INFORMATION
OR UNAUTHORIZED USE OF PATENT RIGHTS UNDER THIS AGREEMENT, IN NO EVENT SHALL A
PARTY BE LIABLE TO THE OTHER FOR ANY SPECIAL, INDIRECT, INCIDENTAL, PUNITIVE, OR
EXEMPLARY DAMAGES, INCLUDING WITHOUT LIMITATION, LOST PROFITS OR SAVINGS,
REGARDLESS OF THE FORM OF ACTION GIVING RISE TO SUCH A CLAIM FOR SUCH DAMAGES,
WHETHER IN CONTRACT OR TORT INCLUDING NEGLIGENCE, EVEN IF LICENSOR OR LICENSEE
HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. BUT IF A PARTY IS FOUND
LIABLE, DESPITE THE ABOVE LANGUAGE, TO THE OTHER PARTY FOR SPECIAL, INDIRECT,
CONSEQUENTIAL, INCIDENTAL, PUNITIVE, OR EXEMPLARY DAMAGES THEN THE MAXIMUM LIMIT
OF SUCH DAMAGES IS AGREED TO BE $5,000.
6.05 A Party will promptly advise the other Party in writing of any claim
made or lawsuit alleging infringement of any patent or copyright or
misappropriation of Confidential Information based on the design, construction
and/or operation of Licensed Facilities (including Synthetic Product or
Marketable Products produced from Licensed Facilities).
(a) If Licensee has made a modification to the Process Design Package,
with respect to a Licensed Plant, and infringement or misappropriation by such
Licensed Plant would not exist in the absence of Licensee's modification,
Licensee will be solely responsible for any claim or lawsuit. Licensee will (i)
promptly undertake at its own expense the defense of the claim or lawsuit, and
(ii) hold Licensor, its Affiliates, and their officers, directors, and employees
harmless from any liability, damages and other sums that may be assessed in or
become payable under any decree or judgment by any court or other tribunal which
results from such claim or lawsuit and from any attorneys fees, costs of
litigation and other reasonable out of pocket expenses incurred in the defense
of such claim or lawsuit.
(b) If the design, construction and/or operation of a Licensed Plant
which is the basis for alleged infringement or misappropriation, is in
accordance with the designs, specifications and operating conditions (including,
but not limited to, catalysts) embodied in the Process Design Package for such
Licensed Plant, Licensor will (i) promptly undertake at its own expense the
defense of the claim or lawsuit, and (ii) hold Licensee, its Affiliates, and
their officers, directors, and employees harmless from any liability, damages
and other sums that may be assessed in or become payable under any decree or
judgment by any court or other tribunal which results from such claim or lawsuit
and from any attorneys fees, costs of litigation and other reasonable out of
pocket expenses incurred in the defense of such claim or lawsuit.
(c) A Party will render all reasonable assistance that may be required
by the other Party in the defense of claim or lawsuit alleging infringement or
misappropriation and such Party shall have the right to be represented therein
by advisory counsel of its selection and at its expense.
(d) In the event a court or other tribunal finds that infringement
and/or misappropriation has occurred not as a result of Licensee's
modifications, Licensor shall have the option, at its sole expense, to either
(i) provide designs, specifications and/or operating conditions (including, but
not limited to, catalysts) and make modifications to the Licensed Plant which
avoid such infringement and/or misappropriation without degrading the economics
or performance of the Licensed Facilities, or (ii) acquire the right to continue
using the design, construction and operating conditions (including, but not
limited to, catalysts), which were the subject of such infringement and/or
misappropriation.
(e) Except as provided in (d) above, a Party shall not settle or
compromise any claim or lawsuit alleging infringement or misappropriation
without the written consent of the other Party if such settlement or compromise
obligates the other Party to make any payment or part with any property, to
assume any obligation or grant any licenses or other rights, or to be subject to
any injunction by reason of such settlement or compromise.
6.06 Licensor agrees to indemnify and hold harmless Licensee, its
Affiliates, and their officers, directors, and employees from and against the
full amount of any and all claims, demands, actions, damages, losses, costs,
expenses, or liability whatsoever (including without limitation the costs of
litigation, including reasonable attorneys' fees), for patent infringement,
property (real and personal) damage, personal injury or death, fines, or
penalties arising in whole or in part out of the use of Licensee Patent Rights
and Licensee Technical Information in a plant operated by Licensor or Person
under license from Licensor.
6.07 Licensor agrees to indemnify and hold harmless Licensee, its
Affiliates, their officers, directors, and employees from and against the full
amount of any and all claims, demands, actions, damages, losses, costs,
expenses, or liability whatsoever (including without limitation the costs of
litigation, including reasonable attorneys' fees), for property (real and
personal) damage, personal injury or death, fines, or penalties arising in whole
or in part out of acts or omissions in the preparation and content (including
design, engineering, and specifications) of the Process Design Package for the
Licensed Facilities.
6.08 Licensee agrees to indemnify and hold harmless Licensor, its
Affiliates, their officers, directors, and employees from and against the full
amount of any and all claims, demands, actions, damages, losses, costs,
expenses, or liability whatsoever (including without limitation the costs of
litigation, including reasonable attorneys' fees), for property (real and
personal) damage, personal injury or death, fines, or penalties arising in whole
or in part out of acts or omissions outside the scope of or any modification to
the content (including design, engineering, and specifications) of the Process
Design Package for the Licensed Facilities.
6.09 Licensor's total obligation and liability to indemnify and hold
Licensee harmless for any and all claims (a) under this Section 6, including but
---------
not limited to all expenses incurred by Licensor in assuming Licensee's defense,
making modifications to the Licensed Plant and for paying any judgments or
settlements on Licensee's behalf, or for any other reason contemplated by this
Section 6, (b) for failure to meet any process guarantees that may have been
---------
provided under a separate agreement, or (c) for any other indemnification made
--
by Licensor pursuant to this Agreement, shall in no event exceed 50% of the
total License Fees received from the Licensee for any Licensed Plant that is
subject to the above claims.
6.10 Licensee's total obligation and liability to indemnify and hold
Licensor harmless for any and all claims (a) under this Section 6 including but
---------
not limited to all expenses incurred by Licensee in assuming Licensor's defense
and for paying any judgments or settlements on Licensor's behalf, or for any
other reason contemplated by this Section 6, or (b) for any other
----------
indemnification made by Licensee pursuant to this Agreement, shall in no event
exceed 50% of the total License Fees received by Licensor from Licensee for any
Licensed Plant that is subject to the above claims.
7. CONFIDENTIALITY AND LIMITATIONS
-----------------------------------
7.01 Licensee agrees that any Confidential Information disclosed by Licensor
or an Affiliate directly or indirectly to Licensee during the period from the
date of Licensee's execution of this Agreement through the term of this
Agreement, will be kept confidential by Licensee for a period of fifteen (15)
years after the date of each disclosure, but not to exceed five (5) years after
the termination of this Agreement or fifteen (15) years from the Effective Date,
whichever last occurs, with the same standard of care Licensee uses to protect
its own similar confidential information and, except as otherwise provided in
this Agreement will not be disclosed to others or copied or duplicated (except
for internal use, or for disclosure to Sublicensee), and will be used by
Licensee solely as it relates to this Agreement, and for no other purpose,
including Licensee's research, development or commercial activities related to a
Conversion Process for its own account. Licensee may disclose such Confidential
Information to third parties who have executed a secrecy agreement with Licensor
with confidentiality terms no less restrictive than those set forth in this
Section 7.01. To the extent reasonably necessary to carry out the purposes of
---------
this Agreement, Licensee may disclose any of the foregoing information to an
Affiliate, provided that the Affiliate has agreed in writing to be bound by this
Agreement.
7.02 Licensor agrees that any Confidential Information disclosed by Licensee
or an Affiliate directly or indirectly to Licensor during the term of this
Agreement will be kept confidential by Licensor for a period of fifteen (15)
years after the date of each disclosure, but not to exceed five (5) years after
the termination of this Agreement or fifteen (15) years from the Effective Date,
whichever last occurs, with the same standard of care Licensor uses to protect
its own similar confidential information, and except as otherwise provided in
this Agreement will not be disclosed to others or copied or duplicated, and will
be used by Licensor solely in the development, marketing and licensing of a
Conversion Process, and for no other purpose. Licensor may disclose such
Confidential Information to third parties who have executed a secrecy agreement
with confidentiality terms similar to the confidentiality provisions of this
Agreement. To the extent reasonably necessary to carry out the purposes of this
Agreement, Licensor may disclose any of the foregoing information to an
Affiliate, provided that the Affiliate has agreed in writing to be bound by the
relevant provisions of this Agreement.
7.03 A Party shall not be subject to the restrictions set forth in Sections
--------
7.01 and 7.02 as to the disclosure, duplication or use of disclosed Confidential
---- ----
Information, which the receiving Party can prove by competent evidence (a) was
already known to the receiving Party or an Affiliate prior to the disclosure
thereof by the disclosing Party; (b) is or becomes part of the public knowledge
or literature without breach of this Agreement by the receiving Party but only
after it becomes part of the public knowledge or literature; (c) shall otherwise
lawfully become available to the receiving Party or an Affiliate from a third
party but only after it becomes so available and provided the third party is not
under obligation of confidentiality to disclosing Party; or (d) is developed by
the receiving Party or an Affiliate independently of any disclosure by the
disclosing Party to the receiving Party or an Affiliate under this Agreement or
independently of any joint research and development activities of Licensee and
Licensor which may occur under a separate agreement. Any Confidential
Information disclosed shall not be deemed to fall within the confidentiality
exceptions of this Section 7.03 merely because it is embraced by more general
------------
information. In any such case set forth in Section 7.03(a), (b), (c), and (d),
----------------------------------
the receiving Party shall keep confidential and not disclose to any third party
that any such information was also made available to or acquired by the
receiving Party or an Affiliate from the disclosing Party, and such release from
the secrecy obligation shall not be considered as a license to make, sell, use
or operate under any of the disclosing Party's proprietary rights.
7.04 The receiving Party shall limit access to the Confidential Information
disclosed to it to those employees of the receiving Party or an Affiliate who
reasonably require the same and who are under a legal obligation of
confidentiality on the terms set forth in Section 7.01 and Section 7.03. The
------------ ------------
receiving Party shall be responsible to the disclosing Party for the performance
by its employees of their confidentiality obligations. The receiving Party
shall keep a record of any Confidential Information marked "Limited Access" and
the identity of each employee who has access to Confidential Information so
marked. The receiving Party shall inform the other Party of the identity of
each such employee within 30 days of disclosure.
7.05 In the event that a Party which is recipient of Confidential
Information from the other Party is requested or required by deposition,
interrogatory, request for documents, subpoena, civil investigative demand or
similar process to disclose any such Confidential Information, the receiving
Party shall provide the disclosing Party with prompt written notice of such
request or requirement prior to making the requested disclosure, and shall
cooperate with the disclosing Party so that the disclosing Party may seek a
protective order or other appropriate remedy or, if the disclosing Party so
elects, waive compliance with the terms of this Agreement. In the event that
such protective order or other remedy is not obtained, the receiving Party may
disclose only that portion of the Confidential Information which the disclosing
Party is advised by counsel is legally required to be disclosed.
7.06 The Parties agree that they will each take all actions and execute all
documents, and shall cause their employees, agents and contractors to take all
actions and execute all documents as are necessary or appropriate to carry out
the provisions of this Section 7 or to assist each other in securing protection
---------
of intellectual property and Confidential Information referenced in this Section
-------
7.
7.07 With respect to any catalyst furnished by Licensor to Licensee for use
by Licensee at the Licensed Facilities, Licensee will not, and Licensee will not
allow any other person to, analyze, break down, reverse engineer or otherwise
seek to determine the chemical composition, except for loss on ignition and bulk
density, of any such catalyst, except that Licensee (and Sublicensee) shall be
entitled to (a) perform analyses that Licensor may from time to time
specifically authorize in writing, to the extent required for monitoring the
performance of the Licensed Facilities and for regeneration, reclamation or
disposal of spent catalysts, such authorization not to be unreasonably withheld,
and (b) provide results of the aforementioned analyses to other parties to the
extent required for regeneration, reclamation or disposal of spent catalysts,
but only after such other parties have entered into an agreement with Licensor
in a form attached hereto as Exhibit E of the attached Site License Agreement.
---------
Licensor will be provided with a copy of all such analyses which has been
approved in writing prior to release to other parties.
8. ASSIGNMENT
--------------
Except for assignment to an Affiliate or the successor in interest, by purchase
or otherwise, of Licensee (but specifically excluding Exxon Corporation, Royal
Dutch Shell, Sasol Limited or any entity in which they have an equity interest),
which may be made without written consent of Licensor, this Agreement shall not
be assignable by Licensee without the prior written consent of the Licensor,
which consent will not be unreasonably withheld. Licensee will promptly notify
Licensor in writing of any assignment to an Affiliate, or such successor in
interest. Except for assignment to an Affiliate, or such successor in interest,
any attempted assignment of this Agreement by Licensee without consent of
Licensor shall be void.
9. TERM AND TERMINATION
------------------------
9.01 This Agreement shall be for a term beginning on the Effective Date and
continuing for the duration of the Sublicense.
9.02 Upon the written notice from Licensor to Licensee of any material
default under this Agreement (including any material default under a Site
License Agreement), all rights of Licensee under this Agreement, (with the
exception of Licensee's right to sublicence to Sublicensee) shall be suspended
until such default is cured by Licensee. Licensee's, an Affiliate's or the
Sublicensee's right to operate any Licensed Plant which is in compliance with
its Site License Agreement shall not be affected by either a default under this
Agreement or a default under another Site License Agreement for another Licensed
Plant. If a material default under this Agreement shall continue for a period of
one year following written notice of such default to Licensee from Licensor
without being cured by Licensee, then Licensor shall have the right to (a)
suspend all rights of Licensee under this Agreement, or (b) terminate this
Agreement upon written notice to Licensee. The actions by Licensor under this
Section 9.02 shall not prejudice Licensor from enforcing any claim which it may
------------
have for damages or otherwise on account of the default.
9.03 Termination of this Agreement shall not:
(a) relieve Licensee of its obligations to account for and pay all amounts
due Licensor under this Agreement and all Site License Agreements executed by
Licensee under this Agreement;
(b) affect any rights granted Licensee under Site License Agreements in
effect on the date of termination;
(c) affect any rights granted under Section 4 with respect to Licensee
----------
Patent Rights and Licensee Technical Information, which shall survive
termination in accordance with its terms;
(d) affect the obligations of Licensor and Licensee under Sections 6 and 7,
----------------
which shall survive termination in accordance with their terms;
9.04 No Party to this Agreement shall be in default in performing its
obligations under this Agreement to the extent that performing such obligations,
or any of them, is delayed or prevented by revolution, civil unrest, strike,
labor disturbances, epidemic, accident, fire, lightning, flood, storm,
earthquake, explosion, blockage or embargo, or any law, proclamation, regulation
or ordinance, or any other cause that is beyond the control and without the
fault or negligence of the Party asserting the benefit of this Section 9.04.
------------
Each Party shall do all things reasonably possible to remove the cause of such
default.
9.05 Licensee shall have the right to terminate this Agreement in its sole
discretion, with or without cause, upon the delivery of written notice of
termination to Licensor no less than 90 days prior to the date of such
termination.
9.06 Termination under any of the provisions of this Section 9 of the
license granted to Licensee under this Agreement shall also terminate the
sublicense granted by Licensee pursuant to the Sublicense Agreement.
10. MISCELLANEOUS
------------------
10.01 This Agreement embodies the entire intent of the Parties and merges
all prior oral and written agreements between the Parties hereto with respect to
subject matter hereof. No stipulation, agreement, representation or
understanding of the Parties hereto shall be valid or enforceable unless
contained in this Agreement or in a subsequent written agreement signed by the
Parties hereto. In the event of a conflict between this Agreement and a Site
License Agreement executed pursuant to this Agreement, this Agreement will
govern.
10.02 THIS AGREEMENT SHALL BE GOVERNED BY AND CONSTRUED IN ACCORDANCE WITH
THE LAWS OF THE STATE OF DELAWARE, UNITED STATES OF AMERICA, WITHOUT REGARD TO
CONFLICT OF LAW PROVISIONS THEREOF. The Parties expressly and irrevocably
consent and submit to the jurisdiction of any federal court sitting in Tulsa
County, State of Oklahoma and agree that, to the fullest extent allowed by law,
only such Tulsa County, State of Oklahoma federal courts, to the exclusion of
all others, shall have jurisdiction over any action, suit or proceeding arising
out of or relating to this Agreement. Provided, however, that in the event that
no federal court in Tulsa County, State of Oklahoma has jurisdiction over the
Parties and the subject matter of any action, suit, or proceeding, the Parties
expressly and irrevocably consent and submit to the jurisdiction of any state
court sitting in the Tulsa County, State of Oklahoma and agree that, to the
fullest extent allowed by law, only such Oklahoma state courts, to the exclusion
of all others, shall have jurisdiction over any such action, suit or proceeding
arising out of or relating to this Agreement. The Parties each irrevocably
waive, to the fullest extent allowed by law, any objection either of them may
have to the laying of venue of any such suit, action or proceeding brought in
any federal court sitting in Tulsa County, State of Oklahoma based upon a claim
that such court is inconvenient or otherwise an objectionable forum. Any
process in any action, suit or proceeding arising out of or relating to this
Agreement may, among other methods, be served upon any Party by delivering it or
mailing it to their respective addresses set forth herein. Any such delivery or
mail service shall be deemed to have the same force and effect as personal
service in the State of Oklahoma.
10.03 This Agreement does not grant and shall not be construed as granting
any license, authorization or consent, to either Party by the other Party
hereto, to use any name, trademark, service ▇▇▇▇ or slogan of the other Party.
A Party shall not use the other Party's name without written consent, except for
the identification of the other Party as a Licensee or Licensor of Licensor
Technology. The terms of this Agreement will be maintained in confidence by
each Party subject to the same standard of care each Party uses to protect its
confidential information, except as required by law (and for disclosure to
Sublicensee). A press release which includes the name of the other Party must
have prior written approval of the other Party, except as required by law.
10.04 Failure of either Licensor or Licensee at any time or from time to
time to exercise any of its rights under this Agreement or to insist upon strict
performance of the other Party's obligations hereunder shall not be deemed a
waiver of or to limit any of such rights or obligations with respect to such
rights or obligations or any subsequent occurrence.
10.05 Licensee may publish the existence of this Agreement but agrees not to
disclose, without the written consent of the Licensor, any of the terms of this
Agreement or any portion thereof, or any amendment concerning the same, except
to Persons directly involved with design, financing, construction, or operation
of a Licensed Plant on a need-to-know basis or as required by law or to
Sublicensee.
10.06 Licensee agrees that all Licensor information, technology, patents,
and the product produced directly by the use thereof, when used outside the
United States of America, shall be used by Licensee subject to and in accordance
with regulations of any department or agency of the United States of America and
Licensee shall not re-export or transship or agree to re-export or transship any
such Licensor information, technology, patents, and the product produced
directly by the use thereof to any destination prohibited by United States law
including, without limitation, United States executive orders and administrative
orders, rules, and regulations or to any destination requiring the approval of
the United States government for such re-exportation or transshipment until a
request to do so has been submitted to and approved by the United States
government and notice of such approval has been provided to Licensor. Licensee
shall not (i) enter into a transaction or dealing, including, without
limitation, re-exporting the Licensed Technology, or causing, financing,
guaranteeing, authorizing or facilitating an action to enter into a transaction
or dealing, that might reasonably be considered a violation of United States law
by either Licensor or Licensee, or (ii) disclose information in a way that might
reasonably be considered a violation of United States law by either Licensor or
Licensee.
10.07 Should any part or provision of this Agreement be held unenforceable
or in conflict with the law of any state or of the United States of America or
of any foreign country, the validity of the remaining parts or provisions shall
not be affected by such holding.
10.08 All notices hereunder shall be addressed to the Parties as follows:
(a) If to Licensor:
Syntroleum Corporation
▇▇▇▇ ▇. ▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇
Fax No.: (▇▇▇) ▇▇▇-▇▇▇▇
Phone No.: (▇▇▇) ▇▇▇-▇▇▇▇
ATTN: Office of the President
with copy to:
Syntroleum Corporation
▇▇▇▇ ▇. ▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇
Fax No.: (▇▇▇) ▇▇▇-▇▇▇▇
Phone No.: (▇▇▇) ▇▇▇-▇▇▇▇
ATTN: Office of the General Counsel
(b) If to Licensee:
Syntroleum Australia Licensing Corporation
▇▇▇▇ ▇. ▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇
Fax No.: (▇▇▇) ▇▇▇-▇▇▇▇
Phone No.: (▇▇▇) ▇▇▇-▇▇▇▇
ATTN: Office of the President
with copy to:
Syntroleum Australia Licensing Corporation
▇▇▇▇ ▇. ▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇
Fax No.: (▇▇▇) ▇▇▇-▇▇▇▇
Phone No.: (▇▇▇) ▇▇▇-▇▇▇▇
ATTN: Office of the General Counsel
Any notice required or permitted to be given under this Agreement by one of the
Parties to the other shall be deemed to have been sufficiently given for all
purposes hereof if mailed by registered or certified mail, postage prepaid,
addressed to such Party at its address indicated above, electronically
transmitted and acknowledged by the other Party or by actual delivery of written
notice to the other Party.
IN WITNESS WHEREOF, the Parties have executed this Agreement as of the date
set forth above.
Licensor
SYNTROLEUM CORPORATION
By: /s/
-----------------------------
▇▇▇▇▇▇▇ ▇. ▇▇▇▇
Chairman of the Board/CEO
Date: August 2, 2000
Licensee
SYNTROLEUM AUSTRALIA
LICENSING CORPORATION
By: /s/
--------------------------------
▇▇▇▇ ▇▇▇▇▇▇▇▇
Vice President/General Counsel
Date: August 2, 2000
ATTACHMENT 1
------------
AFFILIATE EXTENSION AGREEMENT
-----------------------------
THIS AGREEMENT, effective as of the _______ day of _______________, _____, by
and between ___________________________________________, a ______________
corporation (hereinafter "Affiliate-Licensee") and
_________________________________________, a _____________________ corporation
(hereinafter "Licensee").
WHEREAS, Licensee and Syntroleum Corporation (hereinafter "Licensor") have
previously entered into a certain License Agreement, dated August 2, 2000,
relating to the use of Licensor Technology in practicing the Conversion Process
at Licensed Facilities in the Licensed Territory to produce Marketable Products,
such capitalized terms being defined in the License Agreement;
WHEREAS, pursuant to the terms of the License Agreement, Licensee has the right
to extend the benefits of the License Agreement to its Affiliates; and
WHEREAS, Affiliate-Licensee desires to acquire the right to use Licensor
Technology in practicing the Conversion Process at Licensed Facilities in the
Licensed Territory to produce Marketable Products by extension to it by Licensee
of the benefits of the License Agreement.
NOW, THEREFORE, in consideration of the mutual covenants and agreements set
forth in this Agreement, the parties agree as follows:
1. Pursuant to the provisions of Section 2.05 of the License Agreement,
------------
Licensee hereby extends the License Agreement to Affiliate-Licensee for use of
Licensor Technology in practicing a Conversion Process in Licensed Facilities in
the Licensed Territory to produce Marketable Products.
2. Affiliate-Licensee hereby accepts the extension to it of the License
Agreement as set forth in Paragraph 1 above and agrees that it shall be subject
to the same obligations to which Licensee is subject under the License
Agreement, and that all of the terms and conditions of the License Agreement
shall apply to it with respect to both its obligations and rights (except for
the right of extension as set forth in Section 2.05 of the Master License
------------
Agreement) as if Affiliate-Licensee had entered into the License Agreement
effective as of the date of this Agreement.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the date set
forth above.
LICENSEE AFFILIATE-LICENSEE
______________________________ _______________________________
(COMPANY) (COMPANY)
By:___________________________ By:_____________________________
Title:________________________ Title:__________________________
Acknowledged and
Agreed to this ___ day
of _______, ________.
SYNTROLEUM CORPORATION
By:_______________