Exhibit 10.13
INTELLECTUAL PROPERTY TRANSFER AND
LICENSE AGREEMENT
CONTRIBUTION AGREEMENT BETWEEN
(1) SHELL OIL COMPANY
and
(2) SHELL EPOXY RESINS LLC
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INTELLECTUAL PROPERTY TRANSFER AND LICENCE AGREEMENT
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CONTENTS PAGE
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1. Definitions and Interpretation................................. 2
2. Patent Rights.................................................. 10
3. Invention Disclosures.......................................... 14
4. Technical Information.......................................... 15
5. Intellectual Property Agreements............................... 17
6. Technical Copyrights........................................... 18
7. Confidentiality................................................ 19
8. Indemnities; Liabilities....................................... 21
9. Export Control................................................. 22
10. Miscellaneous.................................................. 22
INDEX OF APPENDICES
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1. Intellectual Property Agreements
2. Patent Rights, Parts I-IV
3. Invention Disclosures, Parts I-III
4. Resins/Derivatives Technical Information
5. Excluded Technical Information
6. Shell Technical Information
7. IP Controversy Resolution
AN AGREEMENT made between
(1) SHELL OIL COMPANY
a company incorporated under the laws of the State of Delaware, United
States of America, and having an office at One Shell Plaza, ▇▇▇ ▇▇▇▇▇▇▇▇▇
▇▇▇▇▇▇, ▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇ (hereinafter referred to as "SOC")
and
(2) SHELL EPOXY RESINS LLC
a company formed under the laws of the State of Delaware
and having an office at One Shell Plaza, ▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇,
▇▇▇▇▇ ▇▇▇▇▇ (hereinafter referred to as "SER")
RECITALS
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1. SER has been created to develop, manufacture and sell certain resin and
derivative products, and SOC has contributed to SER certain manufacturing
and marketing assets of SOC relating to the Resins/Derivatives Business (as
defined in Clause 1.1).
2. SOC now desires to contribute to SER, by assignment or licence and subject
to Third Party rights, certain patents, technology and associated
agreements, which are owned or under the control of SOC and which are
related to the Resins/Derivatives Business, and SER desires to receive a
conveyance of the same from SOC.
3. SOC and SER now wish to set out in detail the manner in which such patents,
technology and agreements will be licensed or assigned.
NOW THEREFORE IT IS AGREED AS FOLLOWS:
CLAUSE 1 - DEFINITIONS AND INTERPRETATION
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1.1 In this Agreement:
"Associate" in respect of SER means, through the Effective Date, Shell
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Epoxy Resins, Inc., a company incorporated under the laws of Delaware,
Shell Epoxy Resins Research B.V., a company incorporated under the laws of
the Netherlands, and, after the Effective Date, any company controlling,
controlled by or under common control with SER, provided, however,
Associates in relation to SER shall not include at any time SOC or any of
its Associates or SIRM or any of its Associates or any portfolio companies
of Apollo Management IV, L.P. and its affiliates other than Shell Epoxy
Resins Inc. and subsidiaries of Shell Epoxy Resins Inc.
"Associate" in relation to ▇▇▇▇ means, through the Effective Date, Shell
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Epoxy Resins LLC and Shell Epoxy Resins, Inc., companies incorporated under
the laws of Delaware, and, after the Effective Date, any company
controlling, controlled by or under common control with ▇▇▇▇, provided,
however, Associates in relation to ▇▇▇▇ shall not include at any time SIRM
or any of its Associates or SOC or any of its Associates or any portfolio
companies of Apollo Management IV, L.P. and its affiliates other than Shell
Epoxy Resins Inc. and subsidiaries of Shell Epoxy Resins Inc.
"Associate" in relation to SIRM means N.V. Koninklijke Nederlandsche
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Petroleum Maatschappij, a Netherlands company, The "Shell" Transport and
Trading Company p.l.c., an English company and any company other than SIRM
or SOC or an Associate of SOC or
SER or an Associate of SER or ▇▇▇▇ or an Associate of ▇▇▇▇, which is at the
time in question directly or indirectly associated with these two companies
or either of them.
"Associate" in relation to SOC means any company which is at the time in
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question directly or indirectly associated with SOC, provided that
Associate shall not mean SER or an Associate of SER or ▇▇▇▇ or an Associate
of ▇▇▇▇.
For the purposes of the above definitions, a particular company is:
(i) directly associated with a company or companies if the latter
holds/hold shares carrying more than fifty per cent (50%) of the
votes exercisable at a general meeting (or its equivalent) of the
particular company; and
(ii) indirectly associated with a company or companies (hereinafter
called "the Parent Company or Companies") if a series of
companies can be specified, beginning with the Parent Company or
Companies and ending with the particular company, so related that
each company of the series, except the Parent Company or
Companies, is directly associated with one or more companies
earlier in the series.
"Agreement" means this agreement, together with all appendices thereto.
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"Conventional Resins Applications" means coatings and adhesives, provided,
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however, that this term shall not mean wood glue applications.
"Effective Date" means November 1, 2000.
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"Excluded Technical Information" means
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(a) technical information of the types described in Appendix 5, without
regard to its source or any prior usage by the Resins/Derivatives
Business; and
(b) that technical information to which the Resins/Derivatives Business
may have had access but which has not been used (whether for research,
development or commercial purposes) by or in the Resins/Derivatives
Business.
"Intellectual Property Agreements" means the agreements listed in Appendix
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1 hereof and any other agreements existing on the Effective Date to which
SOC or an Associate of SOC is a party and the exclusive purpose of which is
either (a) the disclosure or receipt of confidential information
exclusively for the purposes of the Resins/Derivatives Business, (b) the
grant of material rights in respect of patents and/or technical information
relating exclusively to the manufacture or sale of Products in the
Resins/Derivatives Field, or (c) the grant of material rights in respect of
patents and technical information which rights were acquired by SOC
exclusively for the purposes of the Resins/Derivatives Business.
"Invention Disclosures" means those written disclosures, listed in
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Appendix 3, which have been received prior to the Effective Date by the
Intellectual Property Services organisations of SOC, Shell International
Limited or Shell International B.V., of inventions for which no patent
application has been filed prior to the Effective Date.
"Invention Disclosure Rights" means the right to file patent applications
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in the U.S. in respect of the Invention Disclosures disclosing inventions
for which SOC has a right to file patent applications as of the Effective
Date, and all patent applications based thereon which may be subsequently
filed in any country, and any and all patents, issuing in any country
from such patent applications and any and all re-examinations, reissues
and extensions of all such patents, in each case to the extent any of the
claims thereof are directed to inventions which SOC or its Associates has
the right to license as of the Effective Date and which have been used in
or which were developed or acquired for purposes of the
Resins/Derivatives Business. For all purposes of this Agreement, a patent
application is referred to as based on another patent application or a
patent if the patent application in question claims priority from such
other patent application or such patent.
"Part I Patent Rights" means the Patent Rights listed in, or based on or
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issuing from those Patent Rights listed in, Part I of Appendix 2.
"Part II Patent Rights" means the Patent Rights listed in, or based on or
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issuing from those Patent Rights listed in, Part II of Appendix 2.
"Part III Patent Rights" means the Patent Rights listed in, or based on
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or issuing from those Patent Rights listed in, Part III of Appendix 2.
"Part IV Patent Rights" means the Patent Rights listed in, or based on or
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issuing from those Patent Rights listed in, Part IV of Appendix 2.
"Part I Invention Disclosures" means the Invention Disclosures listed in
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Part I of Appendix 3.
"Part II Invention Disclosures" means the Invention Disclosures listed in
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Part II of Appendix 3.
"Part III Invention Disclosures" means the Invention Disclosures listed
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in Part III of Appendix 3.
"Parties or Party" means as the context requires, both or each of SER and
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SOC.
"Patent Rights" means:
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(a) the patents and patent applications listed in Appendix 2 hereof;
(b) any other patent applications which may later be filed based on
(a) above in any country to the extent any of the claims thereof
cover inventions which SOC or an Associate of SOC has a right to
license as of the Effective Date and which have been used in the
Resins/Derivatives Field or which were developed or acquired for
purposes of the Resins/Derivatives Business;
(c) any patents issuing in any country from patent applications of (a)
or (b) above; and
(d) any re-examinations, reissues and extensions of patents of (a) or
(c) above.
"Products" means:
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(a) mono- or polyglycidyl ethers or esters having an epoxide content
from 10 to 9000 mmol/kg and prepared from compounds bearing one or
more optionally substituted or hydrogenated phenolic hydroxyl
groups or aliphatic or cycloaliphatic mono- or polyalcohol or
mono-or polycarboxylic acid, and epihalohydrin in the presence of
an acid or a base catalyst, or from (bis)carbonate ester
precursors or di-alpha glycol compound precursors; adducts and
derivatives of such polyglycidyl ethers or esters; epoxidized
vegetable oils prepared by peracid epoxidation; naturally
occurring epoxidized oils; and epoxidized bis allylether of
bisphenol acetone prepared by epoxidation via either peracid
epoxidation or reaction with hydrogen peroxide.
(b) aqueous stabilized dispersions of any of mono- or polyglycidyl
ethers and esters, adducts and derivatives thereof, liquid or
semi-solid polyester oligomer, acrylics, polyurethanes, glycidated
polyols and halogenated polyol adducts;
(c) epihalohydrin; allylhalide; inorganic byproducts of the reaction
of propene and halogens, including halogenated mineral acids and
calcium halides; and the direct organic byproducts of the reaction
of propene and halogens;
(d) polyphenolic compounds, halogenated or hydrogenated derivatives
thereof and alkyl-substituted polyphenolic compounds, derived from
mono- and polynucleic phenols (or mono- or polynucleic
alkyl-substituted phenols) and/or ketones, aldehydes, dicarbonyls
or compounds containing two or more double or triple bonds;
(e) alpha-, alpha-branched tertiary mono- and poly-carboxylic acids
having from 5 to 19 carbon atoms, prepared from CO, water and
alkene, or CO and an alkanol; the glycidyl ester and vinyl ester
derivatives respectively of said alpha-, alpha-branched tertiary
mono- and poly-carboxylic acids, prepared from said acids with
epihalohydrin in the presence of a base catalyst, or from said
acids and acetylene in the presence of a catalyst; and the
derivatives of said alpha-, alpha-branched tertiary mono- and
poly-carboxylic acids prepared via modification of their acid
function;
(f) polyesters prepared from a mono-, a di- and/or a tri-functional
aliphatic, ethylenically unsaturated or cycloaliphatic carboxylic
acid or anhydrides thereof, optionally mixed with a mono-, di-
and/or tri-functional aromatic carboxylic acid or anhydrides
thereof, and mono-, di-, tri-and/or tetra functional alcohol, and
optionally a hydroxy-acid and/or a dihydroxy-acid, said polyester
containing as functional groups mainly secondary and/or tertiary
carboxylic groups or primary and/or secondary alcohols in pendant
and/or terminal position, and the corresponding polyglycidyl
esters or epoxidized esters thereof, and having a number average
molecular weight of up to 10,000 g/mol;
(g) amine, acid (including acid anhydride) and/or phenol based curing
agents for epoxy resins, which are compounds having two or more
amine, acid and/or phenolic functionalities per molecule and which
may be optionally end-capped or adducted or blended with acids,
substituted phenols, epoxies, aldehydes, tertiary amines and/or
phenols, and imidizoles, and aqueous stabilized dispersions of
such amine, acid and/or imidazoles; excluding (i) any compounds
derived from optionally hydrogenated polymers of one or more of
isoprene, butadiene and styrene, having a total (or, in the case
of radial or star polymers, arm) number average molecular weight
between 1000 and 35,000, as determined by gel permeation
chromatography using polystyrene calibration standards, and (ii)
alternating polymers of CO and olefinic monomers;
(h) polyamides having two or more amine groups produced by
condensation of one or more mono- and/or polyfunctional acids or
anhydrides thereof with a polyamine, which polyamides have a
number average molecular weight of up to 10,000 g/mol;
(i) mono- or polyfunctional amines containing glycidyl groups
substituted on nitrogen;
(j) blends of the polyglycidyl ether products of part (a) of this
definition of Products or the polyamide products of part (g) with
acrylates, methacrylates, polyacrylates and/or styrene;
(k) organic compounds containing two or more cyanate (-O-C=N) groups
within each molecule, linked to an aliphatic or aromatic structure
containing more than 2 but not more than 200 carbon atoms, derived
from polyphenolic compounds and cyanogen halides;
(l) compounds containing at least two acetylenic (-C=C-)groups per
molecule and containing at least 10 but not more than 200 carbon
atoms per molecule, derived from polyphenolic compounds and
propargyl halides;
(m) dimers of an optionally halogenated cyclobutene compound having up
to thirty (30) carbon atoms, in which the cyclobutene compound is
fused with an aromatic or cycloaliphatic ring, which dimers are
linked through at least one divalent linking group; esters or
ethers of the reaction products of such an optionally halogenated
cyclobutene compound with a product as described in parts (a) or
(d) of this Products definition; and copolymer of one or more of
such optionally halogenated cyclobutene compounds and one or more
aryl compounds;
(n) [intentionally left blank]
(o) at least partly furanised linear CO/olefin polymer, as such or in
combination with a maleimide crosslinking agent, in which
furanised CO/olefin polymer monomer units originating from CO
alternate with olefinic monomer units, for making or for use as a
cross-linked resin which is thermo-reversible at a temperature
above 50C, manufactured by furanising a low molecular weight
polyketone, as described in part (p) below; and
(p) low molecular weight polyketone, which is a linear CO/olefin
polymer in which monomer units originating from CO alternate with
olefinic monomer units, said polymer being amorphous, having a
crystalline melting point of less than 150C, and having a limiting
viscosity number of less than 0.6 dl/g, measured in m-cresol at
60C.
"Resins/Derivatives Business" means for purposes of this Intellectual
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Property Transfer and Licence Agreement that business carried out in the
Resins/Derivatives Field by or for Shell Chemical Company or SER for the
manufacture of Products and for the marketing and sale of Products so
manufactured, together with research and development activities in the
Resins/Derivatives Field in support thereof, in each case within two (2)
years prior to the Effective Date.
"Resins/Derivatives Field" means the manufacture, use or sale of
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Products, including research and development in support thereof,
provided, however, in respect of any and all Products, Resins/Derivatives
Field excludes:
(a) use and/or sale of the Products of part (g) of the Products
definition for any purpose other than as curing agents;
(b) use and/or sale of Products of part (p) of the Products definition
for any purpose other than Conventional Resins Applications;
(c) manufacture of Products of part (p) of the Products definition for
all purposes other than as an intermediates in the preparation of
Products of part (o) of that definition; and
(d) combining any of the vinyl esters of part (e) of the definition of
Products with a silicate in a composition intended for use as
binder for polymer particles containing at least ninety percent
(90%) by weight, based on weight of the particles, of a polymer
containing at least 90% by weight of polymerised styrene, and to
sell and use such combinations (and to conduct research and
development in support thereof); and
(e) manufacture, use and/or sale of (and research and development in
support thereof for) any of the following:
(i) additive components alone or in combination ("Additives")
intended for use in any one or more of the following
applications:
(A) formulating finished lubricants or lubricant
additive packages of any kind;
(B) formulating finished fuels or fuel additive packages
of any kind;
(C) formulating hydraulic fluids;
(D) formulating power transmission fluids;
(E) dewaxing lube oil;
(F) transporting crude oil; and
(ii) intermediates ultimately intended for use in manufacturing
Additives for use in any one or more of the applications
specified in part (e)(i) above.
This Resins/Derivatives Field further encompasses using
Resins/Derivatives Technical Information and Shell Technical Information
for purposes of :
(I) upgrading the organic byproducts in part (c) of the
Products definition, and
(II) selling products resulting from (I) above other than as
Additives or as intermediates ultimately intended for use
in manufacturing Additives.
"Resins/Derivatives Technical Information" means: i) information of the
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types described in Appendix 4, and ii) other technical know-how, data and
information (including, without limitation, trade secrets) in which, in
each case, SOC or an Associate of SOC has assignable rights in the
Resins/Derivatives Field and which has been exclusively used (whether for
research, development or commercial purposes) in the Resins/Derivatives
Business; provided, however, that Resins/Derivatives Technical
Information shall not include Excluded Technical Information or Shell
Technical Information. For the avoidance of doubt, Resins/Derivatives
Technical Information shall not include any technical know-how, data or
information which has, in respect of either (i) or (ii), been received by
or on behalf of SOC or any of its Associates from a Third Party subject
to obligations which prohibit its disclosure to SER, unless and until
such obligations terminate or disclosure to SER is authorized pursuant to
efforts under Clause 5.2 or otherwise.
"Shell Technical Information" means all technical know-how, data and
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information (including, without limitation, trade secrets) which has been
used (whether for research, development or commercial purposes) by or in
the Resins/Derivatives Business but which has not been exclusively used
in the Resins/Derivatives Business. For all purposes of this Agreement,
technical information acquired or developed for purposes of the
Resins/Derivatives Business shall be considered to have been used in the
Resins/Derivatives
Business. Shell Technical Information includes but is not limited to
information of the types described in Appendix 6. Shell Technical
Information shall not include any Resins/Derivatives Technical
Information or Excluded Technical Information. For the avoidance of
doubt, Shell Technical Information shall not include any technical know-
how, data or information which has been received by or on behalf of SOC
or any of its Associates from a Third Party subject to obligations which
prohibit its disclosure to SER, unless and until such obligations
terminate or disclosure to SER is authorized pursuant to efforts under
Clause 5.2 or otherwise.
"▇▇▇▇" means Shell Epoxy Resins Research B.V., a company incorporated
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under the laws of the Netherlands and having its registered office at 30
Carel van Bylandltaan, The Hague, the Netherlands.
"SIRM" means Shell International Research Maatschappij B.V., a company
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incorporated under the laws of the Netherlands and having its registered
office at ▇▇ ▇▇▇▇▇ ▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇▇, ▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇.
"Technical Copyrights" means all rights world-wide of copyright to the
--------------------
extent such rights are owned or controlled by SOC in all documents,
drawings, plans and other works (other than software) to the extent they
recite, depict or describe Shell Technical Information.
"Third Party" means any person other than SOC or its Associates or SER or
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its Associates. For avoidance of doubt, SIRM and its Associates and ▇▇▇▇
and its Associates are Third Parties for purposes of this Agreement.
"United States" or "U.S." means the United States of America and the
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states, commonwealths, territories and possessions thereof.
1.2 The headings contained in this Agreement are for convenience of reference
only and shall not constitute a part of this Agreement for any other
purpose.
1.3 Except where and to the extent that a contrary intention otherwise
appears, words importing the singular number include the plural number
and vice-versa and words importing any gender include all other genders.
1.4 References to Clauses and Appendices are references to Clauses and
appendices of this Agreement, unless otherwise indicated.
CLAUSE 2 - PATENT RIGHTS
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2.1 With effect from the Effective Date, and subject to the rights of Third
Parties and Clause 2.7 hereof, SOC hereby assigns to SER all right, title
and interest of SOC and its Associates in and to the Part I Patent
Rights, subject to the grant-back to SOC of rights set out in Clause 2.3
below.
2.2 With effect from the Effective Date, and subject to the rights of Third
Parties and Clause 2.7 hereof, SOC hereby assigns to SER all right, title
and interest of SOC in and to the Part II Patent Rights, subject to the
grant-back to SOC of rights set out in Clause 2.3 below.
2.3 With effect from the Effective Date, and subject to the rights of Third
Parties, SER grants back to SOC in respect of Part I and Part II U.S.
Patent Rights assigned to SER hereunder:
(a) an irrevocable, transferable, fully paid-up, perpetual, non-
exclusive licence, subject to the rights of Third Parties, with
the right to grant sub-licences, to practise outside the
Resins/Derivatives Field inside of the U.S. the inventions
claimed in such Part I U.S. Patent Rights and to conduct research
and development in support thereof; and
(b) an irrevocable, transferable, fully paid-up, perpetual, exclusive
licence, subject to the rights of Third Parties, with all rights
to grant sub-licences, to practise outside the Resins/Derivatives
Field inside of the U.S. the inventions claimed in such Part II
U.S. Patent Rights and to conduct research and development in
support thereof; and
(c) an irrevocable, transferable, fully paid-up, perpetual,
non-exclusive licence in the Resins/Derivatives Field inside of
the U.S. the inventions claimed in such Part I and Part II U.S.
Patent Rights, with the right to grant sub-licences, to:
(i) manufacture, use and sell refinery products including fuels,
lubricants, bituminous compositions and chemical feedstocks,
and conduct research and development in support thereof; and
(ii) use and sell Products in connection with operations for the
exploration for and production of oil, gas and other
minerals, and conduct research and development in support
thereof.
2.4 With effect from the Effective Date and subject to the rights of Third
Parties, SOC grants to SER:
(a) an irrevocable, transferable, fully paid-up, perpetual, exclusive
(except as noted below in Clause 2.4(c)) licence, with all rights
to grant sub-licences, to practise in the Resins/Derivatives
Field inside of the U.S. the inventions claimed in the Part III
U.S. Patent Rights and to conduct research and development in
support thereof;
(b) an irrevocable, fully paid-up, perpetual, non-exclusive licence,
with the right to grant sub-licences but transferable only to an
Associate of SER or to a successor of substantially all of SER's
business in the Resins/Derivatives Field, to practise in the
Resins/Derivatives Field inside of the U.S. the inventions
claimed in the Part IV U.S. Patent Rights and to conduct research
and development in support thereof; and
(c) an irrevocable, transferable, fully paid-up, perpetual, non-
exclusive licence, with the right to grant sub-licences, to
practise in the Resins/Derivatives Field in the U.S. the
inventions claimed in the Part III U.S. Patent Rights, to:
(i) manufacture, use and sell refinery products including
fuels, lubricants, bituminous compositions and chemical
feedstocks, and conduct research and development in
support thereof; and
(ii) use and sell Products in connection with operations for
the exploration for and production of oil, gas and other
minerals, and conduct research and development in support
thereof.
2.5 Responsibility for the further filing, prosecution, issuance,
maintenance, defence and enforcement of the Part I and II Patent Rights
assigned to SER herein shall pass to SER on the Effective Date. SOC shall
notify any attorneys and/or agents who act for SOC in relation to such
Part I and Part II Patent Rights of the assignment of these Patent Rights
to SER, and that from the Effective Date such attorneys and agents are to
take their instructions from SER and charge all fees and costs incurred
after the Effective Date for filing, prosecuting, maintaining, defending
and enforcing such Patent Rights to SER (subject to the right of SER, in
its sole discretion to thereafter take action to terminate services of
such attorneys and/or agents and appoint different counsel). Such
attorneys and agents shall be requested promptly to send an invoice to
SOC for their fees in respect of services rendered up to the Effective
Date in relation to the Part I and Part II Patent Rights. SOC shall pay
promptly for all such services identified as being rendered prior to the
Effective Date. Case files (including but not limited to opposition and
interference files) relating to the Part I and Part II Patent Rights will
be transferred to SER. SOC undertakes to promptly forward to counsel
designated by SER all correspondence received from the United States
Patent and Trademark Office, during the six month period starting on the
Effective Date, in respect of the Part I and Part II Patent Rights. SOC
agrees to co-operate with SER to effect an orderly transition in respect
of the subject matter set forth in this Clause 2.5 and further agrees to
pay all patent maintenance renewal fees for Part I and II U.S. Patent
Rights which are required to be paid within sixty (60) days after the
Effective Date. In respect of such patent maintenance renewal fees, SOC
shall send an invoice to SER and SER shall promptly reimburse SOC for all
patent maintenance renewal fees paid by SOC for Part I and II U.S. Patent
Rights after the Effective Date.
2.6 Subject to Clauses 2.10, 2.11 and 2.12, each Party shall from the
Effective Date have responsibility for prosecuting, maintaining,
defending and enforcing those Patent Rights which it owns and under which
licences are granted to the other Party pursuant to this Agreement.
Except as expressly provided in Clauses 2.10, 2.11 and 2.12, neither
Clause 2.5 nor Clause 2.6 nor any other provisions of this Agreement
shall obligate either Party to further file, prosecute, issue, maintain,
defend or enforce any of the Patent Rights.
2.7 To the extent that any U.S. Patent Rights are in the name of an Associate
of SOC or SIRM or an Associate of SIRM, SOC shall procure that the holder
assigns or licenses to SER the Patent Right(s) as envisaged by this
Clause 2, and that such holder shall comply with the terms of this Clause
2. SER and SOC acknowledge that any non-US Patent Rights which are in the
name of an SOC or an Associate of SOC are to be assigned to ▇▇▇▇ pursuant
to Clause 2.7 of an Intellectual Property Transfer and License Agreement
between SIRM and ▇▇▇▇ of even date herewith.
2.8 SOC irrevocably waives in favour of SER all rights of SOC and SOC's
Associates to make, use and sell Products inside the Resins/Derivatives
Field under the Part I, Part II and Part III Patent Rights, in each case
for countries other than the United States, with the exception, in each
case, of rights relating to:
(i) manufacture, use and sale of refinery products including
fuels, lubricants, bituminous compositions and chemical
feedstocks, and research and development in support thereof;
and
(ii) use and sale of Products in connection with operations for
the exploration for and production of oil, gas and other
minerals, and research and development in support thereof.
2.9 SER shall be responsible for and shall bear all expenses, including but
not limited to official fees, associated with recordal at the relevant
patent offices, of the transfer to SER hereunder of title in the Part I
and Part II Patent Rights. SOC agrees to co-operate with SER in the
recordal of such transfer by executing required documents, in a form
consistent with the grants under this Agreement, which shall be prepared
by SER. Upon written request from a Party, the other Party shall arrange
for the execution and delivery of any other assignment documents or
other instruments necessary to effectuate any aspects of the assignments
or licences provided for in this Clause 2.
2.10 With effect from the Effective Date, each Party shall give written
notice to the other Party upon becoming aware of any infringement or
threatened or suspected infringement of, or of any challenge to, the
Part II or Part III U.S. Patent Rights and:
(a) SER will have the right (but is not obligated) at its cost to
bring proceedings to enforce such Part II and Part III U.S. Patent
Rights against infringement in the Resins/Derivatives Field. SOC
will have the right (but is not obligated) at its cost to bring
proceedings to enforce such Part II and Part III U.S. Patent
Rights against infringement outside the Resins/Derivatives Field.
Each Party shall have the right, at its own cost, to join in any
suit brought by the other Party pursuant to this Clause 2.10 (a)
to enforce, whether inside and/or outside of the
Resins/Derivatives Field, such Part II and Part III U.S. Patent
Rights and to participate in the defence of any challenge to such
Part II and Part III U.S. Patent Rights.
(b) A Party not joining an enforcement or participating in a defence
proceeding under this Clause 2.10 shall provide such assistance as
may reasonably be required by and at the expense of the Party
initiating or defending such proceeding and shall make no
admission as to liability nor agree to any settlement or
compromise.
(c) To the extent that damages, costs or other sums are recovered for
infringement of such Part II or Part III U.S. Patent Rights in the
Resins/Derivatives Field, they shall be for the account of SER. To
the extent that damages, costs or other sums are recovered for
infringement of such Part II or Part III U.S. Patent Rights
outside the Resins/Derivatives Field, they shall be for the
account of SOC.
2.11 SER shall notify SOC of each decision by SER not to continue to
prosecute or maintain any of the Part II U.S. Patent Rights. In respect
of a decision not to continue to prosecute, such notice shall be given
as soon as is practicable, and, if reasonable under the circumstances,
at least sixty (60) days prior to the ordinary due date set for a
response. In respect of a decision not to continue to maintain, such
notice shall be given promptly but in any event no later than ninety
(90) days prior to the date action is due to maintain the Patent Rights
in question. SER shall, at SOC's request, assign to SOC the rights of
SER in such of the Part II Patent Rights which it does not wish to
prosecute or maintain, and SOC shall grant back to SER an irrevocable,
transferable, fully paid-up, perpetual, world-wide, non-exclusive
licence, with the right to grant sub-licences, to practise in the
Resins/Derivatives Field the inventions claimed in the Part II Patent
Rights so assigned to SOC.
2.12 SOC shall notify SER of each decision by SOC not to continue to
prosecute or maintain any of the Part III U.S. Patent Rights. In respect
of a decision not to continue to prosecute, such notice shall be given
as soon as it practicable and, if reasonable under the circumstances, at
least sixty (60) days prior to the ordinary due date set for a response.
In respect of a decision not to continue to maintain, such notice shall
be given promptly but in any event no later than ninety (90) days prior
to the date action is due to maintain the Patent Rights in
question. SOC shall, at SER's request, assign to SER the rights of SOC
in such of the Part III Patent Rights which it does not wish to
prosecute or maintain, and SER shall grant back to SOC an irrevocable,
transferable, fully paid-up, perpetual, world-wide, non-exclusive
licence, with the right to grant sub-licences, to practise outside the
Resins/Derivatives Field the inventions claimed in the Part III Patent
Rights so assigned to SER, and also licences under the Part III Patent
Rights so assigned to SER which are equivalent to those set out in
Clause 2.3(c).
2.13 SOC acknowledges that no right or licence, either express or implied, is
granted to SOC under any patent or other intellectual property right
owned by SER or its Associates, except as expressly provided by the
terms of this Agreement.
2.14 SER acknowledges that no right or licence, either express or implied, is
granted to SER under any patent or other intellectual property right
owned by SOC or its Associates, except as expressly provided by the
terms of this Agreement.
2.15 As soon as practicable after the Effective Date, upon request by SER,
SOC shall make available to legal counsel for SER a copy of all final
written opinions of legal counsel prepared for the Resins/Derivatives
Business. The provisions of this Clause 2.15 are not intended and shall
not be construed by either Party as a waiver of privilege and both
Parties shall treat said opinions in a manner which is consistent with
their common interest in maintaining privilege.
CLAUSE 3 - INVENTION DISCLOSURES
--------------------------------
3.1 With effect from the Effective Date, and subject to the rights of Third
Parties, SOC hereby assigns to SER all right, title and interest of SOC
in and to the Invention Disclosure Rights for Part I Invention
Disclosures, subject to the grant-backs to SOC of rights set out in
Clause 3.2.
3.2 With effect from the Effective Date, and subject to the rights of Third
Parties, SER grants back to SOC under the Invention Disclosure Rights
for Part I Invention Disclosures:
(a) an irrevocable, transferable, fully paid-up, perpetual, exclusive
licence, with all rights to grant sub-licences, in the U.S. outside
the Resins/Derivatives Field; and
(b) an irrevocable, transferable, fully paid-up, perpetual, non-
exclusive licences in the U.S. in the Resins/Derivatives Field,
with the right to grant sub-licences, to:
(i) manufacture, use and sell refinery products including fuels,
lubricants, bituminous compositions and chemical feedstocks,
and conduct research and development in support thereof; and
(ii) use and sell Products in connection with operations for the
exploration for and production of oil, gas and other
minerals, and conduct research and development in support
thereof.
3.3 With effect from the Effective Date, and subject to the rights of Third
Parties, SOC grants to SER:
(a) an irrevocable, transferable, fully paid-up, perpetual, exclusive
(except as noted below in Clause 3.3(c)) licence under the
Invention Disclosure Rights for Part II Invention Disclosures,
with the right to grant sub-licences, in the Resins/Derivatives
Field in the U.S.;
(b) an irrevocable, fully paid-up, perpetual, non-exclusive licence in
the Resins/Derivatives Field in the U.S. under the Invention
Disclosure Rights for Part III Invention Disclosures, with the
right to grant sub-licences but transferable only to an
Associate of SER or to a successor of substantially all of SER's
business in the Resins/Derivatives Field; and
(c) an irrevocable, transferable, fully paid-up, perpetual, non-
exclusive licence under the Invention Disclosure Rights for Part
II Invention Disclosures, with the right to grant sub-licences, in
the Resins/Derivatives Field in the U.S to:
(i) manufacture, use and sell refinery products including fuels,
lubricants, bituminous compositions and chemical feedstocks,
and conduct research and development in support thereof; and
(ii) use and sell Products in connection with operations the
exploration for and production of oil, gas and other
minerals, and conduct research and development in support
thereof.
3.4 Upon written request from a Party, the other Party shall arrange for the
execution and delivery of any assignment documents or other instruments
necessary to effectuate any aspects of the assignments or licences
provided for in this Clause 3.
3.5 To the extent that any Invention Disclosure Rights are controlled by an
Associate of SOC, SOC shall procure that such Associate assigns or
licenses to SER the Invention Disclosure Rights as envisaged by this
Clause 3.
3.6 In the event Part I Invention Disclosures result in issued patents, such
patents shall thereafter be subject to the provisions of Clauses 2.10 and
2.11, in the same respect as Part II Patent Rights.
3.7 In the event Part II Invention Disclosures result in issued patents, such
patents shall thereafter be subject to the provisions of Clauses 2.10 and
2.12, in the same respect as Part III Patent Rights.
3.8 Notwithstanding any provision herein to the contrary, this Agreement does
not give any Party any cause of action for breach of contract with
respect to unpatented public domain subject matter.
3.9 Case files relating to the Part I Invention Disclosures will be promptly
transferred to SER.
CLAUSE 4 - TECHNICAL INFORMATION
--------------------------------
4.1 With effect from the Effective Date, subject to the rights of Third
Parties, SOC assigns to SER all rights of SOC and its Associates in and
to the Resins/Derivatives Technical Information, including but not
limited to the right to file patent applications therefor, copyrights
(including but not limited to registered copyrights) therein, and the
right to enforce against misappropriation by Third Parties, in all cases
subject to reservation by SOC of irrevocable, transferable, fully
paid-up, perpetual, worldwide, non-exclusive rights to use
Resins/Derivatives Technical Information in the Resins/Derivatives Field,
including the right to grant sub-licenses and the right to enforce
against misappropriation by Third Parties, to:
(i) manufacture, use and sell refinery products including fuels,
lubricants, bituminous compositions and chemical feedstocks,
and conduct research and development in support thereof; and
(ii) use and sell Products in connection with operations for the
exploration for and production of oil, gas and other
minerals, and conduct research and development in support
thereof;
and further subject to reservation by SOC of irrevocable, transferable,
fully paid-up, world-wide, perpetual, exclusive rights in respect of
Resins/Derivatives Technical Information outside the Resins/Derivatives
Field, including the right to grant sub-licenses and the right to enforce
against misappropriation by Third Parties.
The reservations of rights set forth in this Clause 4.1 shall further
include irrevocable, transferable, fully paid-up, world-wide, perpetual,
exclusive rights outside the Resins/Derivatives Field, with all rights to
grant sub-licenses, under any patents (other than Patent Rights and
Invention Disclosure Rights) owned or controlled by SER or any of its
Associates claiming inventions that are Resins/Derivatives Technical
Information prior to the Effective Date but for which patent claims are
first filed after the Effective Date.
4.2 With effect from the Effective Date, SOC grants to SER:
(a) an irrevocable, transferable, fully paid-up, perpetual, non-
exclusive licence in the Resins/Derivatives Field in the U.S., with
the right to grant sub-licences, and the right to enforce against
misappropriation, in respect of Shell Technical Information other
than that identified in Part A of Appendix 6; and
(b) an irrevocable, fully paid-up, perpetual, non-exclusive licence in
the Resins/Derivatives Field in the U.S., without any right to grant
sub-licenses and without the right to enforce against
misappropriation, and transferable only to an Associate of SER or a
successor of all or substantially all of the business of SER in the
Resins/Derivatives Field, in respect of Shell Technical Information
identified in Part A of Appendix 6.
The license granted in (a) above shall further include an irrevocable,
transferable, fully-paid, perpetual, non-exclusive license in the
Resins/Derivatives Field, with the right to grant sub-licenses and with
the right to enforce in the Resins/Derivatives Field, under any patents
(other than Patent Rights and Invention Disclosure Rights) owned or
controlled by SOC or any of its Associates claiming inventions that are
Shell Technical Information other than that identified in Part A of
Appendix 6 developed or acquired prior to the Effective Date but for
which patent claims are first filed after the Effective Date.
The license granted in (b) above shall further include an irrevocable,
fully-paid, perpetual, non-exclusive license for the use of Shell
Technical Information in the Resins/Derivatives Field, without any right
to grant sub-licenses and without the right to enforce against
misappropriation, and transferable only to an Associate of SER or a
successor of all or substantially all of the business of SER in the
Resins/Derivatives Field, under any patents (other than Patent Rights and
Invention Disclosure Rights) owned or controlled by SOC or any of its
Associates claiming inventions that are Shell Technical Information
identified in Part A of Appendix 6 developed or acquired prior to the
Effective Date but for which patent claims are first filed after the
Effective Date.
4.3 At its own cost, SOC shall use reasonable efforts to promptly provide to
SER Resins/Derivatives Technical Information assigned to SER, and such
Shell Technical Information licensed to SER hereunder as SOC believes is
reasonably necessary for the normal conduct of the Resins/Derivatives
Business, in each case to the extent that such information is as of the
Effective Date in the possession of SOC or Associates of SOC engaged in
the Resins/Derivatives Business in written or other tangible form. SOC
shall
further use reasonable efforts to promptly provide to SER, at SER's
request and cost, such other Shell Technical Information that is as of
the Effective Date in the possession of SOC or Associates of SOC engaged
in the Resins/Derivatives Business in written or other tangible form. The
nature of the physical transfer to SER of Shell Technical Information
shall be consistent with the manner in which such Shell Technical
Information has been available to the Resins/Derivatives Business.
Details as to the implementation of this provision shall be agreed as
circumstances reasonably require following the Effective Date.
4.4 This Agreement shall not be construed to grant SER any rights or licences
in respect of Excluded Technical Information.
CLAUSE 5 - INTELLECTUAL PROPERTY AGREEMENTS
-------------------------------------------
5.1 SOC shall assign, or shall cause the assignment, and SER agrees to accept
assignment, of those Intellectual Property Agreements that SOC or the SOC
Associate which is a party to the Intellectual Property Agreement has
authority to assign, so that SER shall be entitled to the benefit and
shall be subject to the burden thereof as of the Effective Date. SER
shall carry out, perform and complete all obligations and liabilities to
be discharged under such Intellectual Property Agreements on or after the
Effective Date, and shall indemnify, defend and hold harmless SOC and its
Associates and SIRM and its Associates and their respective officers,
directors, employees and agents from and against any claim in respect of
failure on the part of SER to carry out, perform and complete such
obligations and liabilities. SOC shall indemnify, defend and hold
harmless SER and its Associates and ▇▇▇▇ and its Associates and their
respective officers, directors, employees and agents against any claim in
respect of failure on the part of SOC and/or its Associates to carry out,
perform and complete all obligations or liabilities to be discharged
under the Intellectual Property Agreements prior to the Effective Date.
5.2 From the Effective Date, insofar as the benefit or burden of any of the
Intellectual Property Agreements cannot effectively be assigned to SER
except by an agreement for novation or with consent to the assignment
from a Third Party, at the request of SER, SOC shall , and shall cause
its Associates that are parties to such Intellectual Property Agreements
to, use commercially reasonable efforts (including participating in joint
letter to such Third Parties, responding to inquiries from such Third
Parties, and executing novation documents) to assist SER in pursuing
novation or consent for assignment of any Intellectual Property Agreement
material to the Resins/Derivatives Business, provided, however, that such
cooperation shall not include any requirement of SOC or any of its
Associates to pay money (not otherwise due or payable by SOC) to the
other party to the Intellectual Property Agreement, commence or
participate in any litigation or offer or grant any accommodation
(financial or otherwise) to any Third Party. No representation or
warranty has been given or can be given that the other parties to the
Intellectual Property Agreements will agree to the assignment or novation
thereof in favour of SER. From the Effective Date, and until any
necessary Third Party consent to the assignment of an Intellectual
Property Agreement may be obtained, a novation agreement may be entered
into or other arrangements may be effected, if it is permissible under
the Intellectual Property Agreement in question, SOC shall grant, or
cause the relevant Associate of SOC to grant, to SER a sub-licence under
the Intellectual Property Agreement, and SER shall, without limitation to
Clause 5.1, be liable for any royalties or other costs associated with
such sub-licence. Any technical information which is subject to an
Intellectual Property Agreement and can only be made available to SER
upon novation, receipt of consent or grant of such a sub-licence, shall
after such novation, consent or grant
promptly be provided to SER, provided that nothing in this Agreement
shall require SOC to retain copies of any technical information past the
second anniversary of Closing or through the termination of good faith
efforts to obtain novation, consent or grant of a sub-license, whichever
is later.
CLAUSE 6 - TECHNICAL COPYRIGHTS
-------------------------------
With effect from the Effective Date and subject to Clause 7 and the
rights of Third Parties existing at the Effective Date, SOC grants to SER
an irrevocable, transferable, non-exclusive, fully paid-up, perpetual
license in the Resins/Derivatives Field under its Technical Copyrights,
with the right to grant sub-licenses, and with the right to enforce the
Technical Copyrights against Third Parties other than SIRM or Associates
of SIRM.
No license is granted under this Clause 6 in respect of any copyrights in
any Excluded Technical Information, whether such Excluded Technical
Information is contained in any work alone or in combination with any
Shell Technical Information and/or Resins/Derivatives Technical
Information.
CLAUSE 7 - CONFIDENTIALITY
--------------------------
7.1 With the exception of the exercise of the rights of SOC under Clauses 2,
3, 4.1(i) and 4.1(ii), and of activities undertaken at the request of
SER, SOC undertakes for itself and its Associates that they:
(a) shall not use any Resins/Derivatives Technical Information in the
Resins/Derivatives Field; and
(b) shall not disclose any Resins/Derivatives Technical Information to
any Third Party for use in the Resins/Derivatives Field.
7.2 With the exception of the exercise of the rights of SER under Clauses 2
and 3 and of activities undertaken at the request of SOC, SER undertakes
for itself and its Associates that they:
(a) shall not use any Resins/Derivatives Technical Information outside
the Resins/Derivatives Field; and
(b) shall not disclose any Resins/Derivatives Technical Information to
any Third Party for use outside the Resins/Derivatives Field.
7.3 With the exception of the exercise of the rights of SER under Clauses 2
and 3 and of activities undertaken at the request of SOC, and subject to
the provisions of Clause 7.4 governing SER's obligations in respect of
Shell Technical Information identified in Part A of Appendix 6 and the
provisions of Clause 7.8 governing SER's obligations in respect of
Excluded Technical Information, with regard to (i) Shell Technical
Information, and (ii) any other technical information SER may receive
from or on behalf of SOC or its Associates in connection with SER's
acquisition of the Resins/Derivatives Business, SER undertakes that it:
(a) shall not use the same outside the Resins/Derivatives Field; and
(b) shall not disclose the same to any Third Party for use outside the
Resins/Derivatives Field.
7.4 With the exception of activities undertaken at the request of SOC, and
subject to the provisions of Clause 7.8 governing SER's obligations in
respect of Excluded Technical Information, with regard to Shell Technical
Information identified in Part A of Appendix 6, SER undertakes that it:
(a) shall not use the same for any purpose other than in relation to
its activities within the Resins/Derivatives Field; and
(b) shall not disclose the same to any Third Party.
7.5 The undertakings as to each obligated Party pursuant to Clauses 7.1, 7.2,
7.3 and 7.4 above, as well as any obligations of confidence and
restrictions on use of technical information, data and/or know-how which
the grants and assignments under Clause 4 may impose (either directly or
by implication) on the granting or assigning party, shall not apply to
information which as of the Effective Date the obligated Party can show
(a) is part of the public knowledge or literature;
and shall cease to apply to information which after the Effective Date
the obligated Party can show:
(b) has become part of the public knowledge or literature without
breach of said undertakings by said obligated Party; or
(c) has been received by it after the Effective Date from a Third
Party having a legal right to disclose it to said obligated Party.
The foregoing exceptions shall not, however, apply to:
(i) specific information merely because it is embraced by or
included with other information which falls within any one
or more of such exceptions; or
(ii) any combination of information merely because specific
information (but not the combination itself) falls within
any one or more of such exceptions.
7.6 In the event that the obligated Party is required or requested by any
court, legislative or administrative body to disclose any
Resins/Derivatives Technical Information, Shell Technical Information or
other information covered by its undertakings pursuant to this Clause 7,
then the obligated Party will, prior to disclosure, promptly notify the
other Party so that an appropriate protective order can be sought and/or
other action can be taken if possible. In the event that such protective
order is not, or cannot be, obtained, then:
(a) The obligated Party may disclose to the appropriate body that
portion of the information which it is advised in writing by legal
counsel that it is legally required to disclose, provided that it
shall use reasonable efforts to obtain assurances that
confidential treatment will be accorded to the information; and
(b) The obligated Party shall not be liable for such disclosure to the
appropriate body unless such disclosure was caused by or resulted
from a previous disclosure by the obligated Party that was not
permitted by this Agreement.
7.7 Except for the obligations set forth in Clause 7.4 for Shell Technical
Information described in Part A of Appendix 6, the obligations set forth
in Clause 7.8 for Excluded Technical Information and the obligations
undertaken in the Intellectual Property Agreements, all express and
implied restrictions in respect of disclosure and use of information
under Clause 4, Clause 6 and/or Clause 7 of this Agreement shall
terminate ten (10) years after the Effective Date.
7.8 It is not the intention of SOC to disclose Excluded Technical Information
to SER. In respect of any Excluded Technical Information which SER may
receive, SER agrees to hold the same in strict confidence, not to
disclose it to any third party and not to use it for any purpose
whatsoever. To the extent SER becomes aware that it is in possession of
Excluded Technical Information in written or other tangible form
(including but not limited to information stored electronically), SER
agrees promptly to return to SOC or destroy such information, or cause
such information to be returned to SOC or destroyed, in each case at
SOC's option.
7.9 The obligations imposed by this Clause 7 are in addition to obligations
of confidentiality and restrictions on use of technical information which
are imposed by the Intellectual Property Agreements.
7.10 In observing its obligations of confidentiality under Clauses 7.1 through
7.4, each Party shall apply at least the same degree of care which that
Party applies in protecting its own proprietary information of like kind,
and no less care than is typically applied in the chemical industry.
Whenever necessary or appropriate, a Party making disclosures which it is
entitled to make hereunder to a Third Party shall obtain prior written
agreement by the Third Party to use the same only for the purpose for
which it is disclosed and not to disclose the same to any other Third
Party.
CLAUSE 8 - INDEMNITIES; LIABILITIES
-----------------------------------
8.1 EXCEPT AS EXPRESSLY SET FORTH IN THIS CLAUSE 8, SOC MAKES NO
REPRESENTATION AND EXTENDS NO WARRANTIES, EXPRESS OR IMPLIED, AND ASSUMES
NO RESPONSIBILITY WHATSOEVER WITH RESPECT TO (I) ANY TECHNICAL
INFORMATION WHICH MAY BE DISCLOSED OR LICENSED IN CONNECTION WITH THIS
AGREEMENT, OR ITS SUITABILITY, COMPLETENESS OR ACCURACY OR ITS
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE; OR (II) THE SCOPE,
VALIDITY OR ENFORCEABILITY OF ANY PATENT RIGHTS.
8.2 Neither Party shall be liable for any loss, damage, injury (including, to
the full extent permitted by law and no further, personal injury or
death), demand or expense, direct or indirect, resulting from negligence,
gross negligence, strict liability or whatever the cause and arising out
of or in connection with the exercise by the other Party or any licensee
or sub-licensee of the other Party of the licences and rights granted to
such other Party under this Agreement. Each Party shall indemnify, defend
and hold harmless the other Party and its Associates (and their
respective officers, directors, employees and agents) against any claim
or action brought by any Third Party for any loss, damage, injury
(including, to the
full extent permitted by law and on further, personal injury or death),
demand or expense arising out of or in connection with the exercise by
that Party or any licensee or sub-licensee of that Party of the licences
and rights granted under to this Agreement.
CLAUSE 9 - EXPORT CONTROL
-------------------------
SER acknowledges that Resins/Derivatives Technical Information, Shell Technical
Information and other information to be made available hereunder may be subject
to export control under the Export Administration Regulations of the United
States of America Department of Commerce, and/or export regulations of other
United States of America Government agencies including the Department of State
and Department of Treasury.
CLAUSE 10- MISCELLANEOUS
------------------------
10.1 Execution in Counterparts. This Agreement may be executed in two or more
-------------------------
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same document.
10.2 Waivers. Except as specifically provided in this Agreement, no failure or
-------
delay on the part of any Party in exercising any right, power or remedy
hereunder and no course of dealing among the Parties shall operate as a
waiver by any party of such right, power or remedy unless the event
giving rise to such right, power or remedy no longer exists or has been
cured.
10.3 Amendment. This Agreement may be modified, supplemented or amended only
---------
by a written instrument executed by all parties thereto.
10.4 Entire Agreement. The Agreement (together with the appendices) constitute
----------------
the entire agreement of the parties thereto with respect to their subject
matter, and supersede all prior agreements and understandings of the
parties thereto, oral and written, with respect to their subject matter.
10.5 Headings. The headings contained in this Agreement are for the sole
--------
purpose of convenience of reference, and shall not in any way limit or
affect the meaning or interpretation of any of the terms or provisions of
such Transaction Document.
10.6 Successors/Assigns. Except as set forth in this Agreement, SER shall not
------------------
transfer or assign this Agreement, directly or indirectly, by operation
of law or otherwise, without the prior written consent of SOC, and any
purported transfer or assignment that does not comply with this Clause
10.06 shall be null and void ab initio; provided, that SER may assign
--------
this Agreement (a) after Closing, to an Associate of SER or in connection
with a sale or recapitalization of its business to which this agreement
relates (whether by merger, stock sale, sale of all or substantially all
assets or otherwise) or (b) to any lender (or agent therefor) for
security purposes or pursuant to the assignment thereof by any such
lender or agent in connection with the exercise by any such lender or
agent of all of its rights and remedies as secured creditor with respect
thereto. Each Party agrees to cause its successors
and permitted assigns to agree in writing to be bound by the terms of
this Agreement, provided, that nothing contained herein shall relieve SER
--------
from its obligations under this Agreement
To the extent that any right under this Agreement is designated as being
transferable, the holder of that right shall be entitled to pledge such
right for security purposes.
10.7 No Third-Party Beneficiaries. Except as may be expressly provided
----------------------------
otherwise, nothing in this Agreement is intended or shall be construed to
confer any rights or remedies upon any person, other than the Parties and
their respective successors and permitted assigns..
10.8 Interpretation. In construing any Transaction Document, no consideration
--------------
shall be given to the fact or presumption that either Party had a greater
or lesser hand in drafting the applicable Transaction Document.
10.9 Expenses, Transfer Taxes, Etc. Whether or not the transactions
-----------------------------
contemplated by this Agreement shall be consummated, except as otherwise
expressly provided herein, all fees and expenses (including all fees of
counsel, actuaries and accountants) incurred by any Party in connection
with the negotiation and execution of this Agreement shall be borne by
such Party, provided, however, that SER shall pay, or cause to be paid
all applicable taxes and recording fees.
10.10 Governing Law and Disputes Resolution. In the event of any "IP
-------------------------------------
Controversy" (as defined in Appendix 7 of this Agreement) between the
Parties arising out of this Agreement, the Parties will use good faith
efforts, for a period of thirty (30) days following notice by a Party to
the other Party that an IP Controversy exists, to resolve the IP
Controversy through negotiation and compromise. If such an IP Controversy
cannot be resolved during the period specified above, either Party may
require that the IP Controversy be finally resolved under the provisions
of Appendix 7 to this Agreement. Pending the completion of any
arbitration proceedings, obligations not in dispute will continue to be
performed.
THIS AGREEMENT SHALL BE GOVERNED AND CONSTRUED IN ACCORDANCE WITH THE
LAWS OF THE STATE OF NEW YORK WITHOUT GIVING EFFECT TO ANY OF THE
CONFLICT OF LAWS RULES THEREOF.
10.11 Bankruptcy. The licenses granted herein by SOC or SER, as the case may
----------
be, to the Patent Rights, Invention Disclosure Rights, Resins/Derivatives
Technical Information, Shell Technical Information and Technical
Copyrights shall be deemed to be, for purposes of Section 365(n) of the
U.S. Bankruptcy Code, to the fullest extent permitted by law, licenses to
rights in "intellectual property" as defined in Section 101 of the
Bankruptcy Code. The parties agree that the licensee to any such
licenses, as the case may be, shall retain and may fully exercise all of
its rights and elections under the Bankruptcy Code. In the event that a
bankruptcy proceeding under the Bankruptcy Code is commenced by or
against the licensor of any such licenses, the licensee shall be
entitled, at its option, to: (a) retain all of its rights under this
Agreement (including without limitation all rights and licenses granted
herein) pursuant to Section 365(n) of the U.S. Bankruptcy Code; or (b)
receive a complete duplicate of, or complete access to, all Patent
Rights, Invention Disclosure Rights, Resins/Derivatives
Technical Information, Shell Technical Information and Technical
Copyrights constituting "intellectual property" under Section 101 of the
Bankruptcy Code. If any of the foregoing are not already in the
licensee's possession, it shall be promptly delivered to such licensee
upon such licensee's written request (i) upon any such commencement of a
bankruptcy proceeding, unless the licensor of such rights elects to
continue to perform all of its obligations under this Agreement.
10.12 Notices. All notices and other communications given under this Agreement
-------
shall be in writing and shall be effective upon receipt by the addressee
at the address or telefax indicated below:
(i) if to SOC: Shell Oil Company
▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇
Fax No.:(▇▇▇) ▇▇▇-▇▇▇▇
Attention: Intellectual Property Services
(i) if to SER: Resolution Performance Products, Inc.
▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇
Fax No.:(▇▇▇) ▇▇▇-▇▇▇▇
Attention: Legal Department
Each Party may change its address for purposes of this Agreement by
giving the other Party written notice of the new address in the manner
set forth above.
10.13 Severability of Provisions. The invalidity, illegality or
--------------------------
unenforceability of any one or more of the provisions of this Agreement
shall in no way affect or impair the validity and enforceability of the
remaining provisions thereof.
AS WITNESS WHEREOF, the Parties have caused this Agreement to be
executed in duplicate original at the places and on the dates indicated below.
At _________________________, this 14th day of November, 2000
Signed: /s/ ▇.▇. ▇▇▇▇▇▇....................................
SHELL OIL COMPANY
At _________________________, this 14th day of November, 2000
Signed: .../s/.▇.▇. ▇▇▇▇▇▇.................................
SHELL EPOXY RESINS LLC