EXHIBIT 10.27
Confidential treatment has been
requested for portions of this document,
deleted portions are blacked out.
Represented by
[***]
AGREEMENT
by and between
FUEL CELL ENERGY, INC. ("FCE")
(Formerly Energy Research Corporation)
and
MTU MOTOREN-UND TURBINEN-UNION
FRIEDRCHSHAFEN GmbH ("MTU")
(Successor to Messerschmitt-Bolkow-Blohm GmbH)
This Agreement is made and entered into this 15 th day of Dec., 1999 (the
Effective Date) by and between FCE and MTU.
WHEREAS
FCE and MTU presently are parties to the Balance of Plant Cross-License of July
16,1998 (the BOP CROSS-LICENSE), and the License Agreement of September 29, 1989
(the PREVIOUS LICENSE) which is superseded by this Agreement (the "CELL
LICENSE").
FCE has developed Carbonate Fuel Cell technologies known as the "Direct Fuel
Cell (TM)" (DFC(TM)) including fuel cell stacks, components thereto, and
manufacturing methods, processes and procedures thereto.
FCE intends to continue development of the DFC(TM) Know How (as defined below)
and provide the results to MTU in accordance with Article V below.
FCE has established a fuel cell manufacturing facility in Torrington,
Connecticut, USA which is capable of providing reasonable DFC(TM) cell and stack
production requirements for both FCE and MTU.
FCE and MTU retain the right to independently pursue the development of
Carbonate Fuel Cell technologies as each Party sees fit at its sole discretion.
Notwithstanding this right, FCE and MTU shall endeavor to develop the best
Carbonate Fuel Cell technology with as much global product commonality as is
reasonable.
MTU plans to develop the [***] CELL (as defined below) and may provide the [***]
CELL Know How to FCE in a license to be negotiated.
MTU's sales or licenses of carbonate fuel cell power plants using the [***] CELL
are subject to and not exempt from the royalties owed to FCE under this Cell
License Agreement so long as the [***] CELL uses DFC(TM) Know How. [***] CELL
Know How developed by MTU is not subject to the Cell License Agreement even if
one or more [***] CELL elements are developed in parallel by FCE.
MTU has, under the Previous License, developed Existing Carbonate Fuel Cell
improvements (EXISTING IMPROVEMENTS) as defined below, which have or may be used
by FCE hereunder.
FCE and MTU agree to work in the spirit of a fair partnership between equals and
each Party acknowledges the intellectual property contributions and rights of
the other Party.
FCE warrants, represents and agrees that it has the capacity and authority to
grant the licenses hereunder and to be bound by the terms of this CELL LICENSE.
MTU warrants, represents and agrees that it has the capacity and authority to
grant the licenses hereunder and to be bound by the terms of this CELL LICENSE.
The substance of those terms of the Previous License which were intended to
survive the termination of the Previous License have been incorporated herein.
THEREFORE
In consideration of the mutual covenants contained herein, FCE and MTU agree as
follows:
Article I - Definitions
1. The term "DIRECT FUELCELL(TM) (DFC(TM))" means a molten carbonate
electrochemical device, in cell or stack form, for use in converting
hydrocarbon or any other appropriate fuel or fuel mixtures by an
electrochemical reaction into electricity; said device representing the
current state of the art achieved by FCE at the signing date of this
Agreement and presently being characterized by, but not limited to, the
following:
o bipolar plate with integral wet seal area
o corrugated steel anode and cathode collectors
o porous nickel oxide cathode, manufactured by dry-doctoring of nickel
powder
o porous nickel-aluminum anode, manufactured by organic solvent tape
casting
o reaction bonded matrix, manufactured by organic solvent tape casting
o extruded reforming catalyst integrated into the corrugated anode
current collector
o reforming units for the indirect internal reforming of fuel
The term DFC(TM) includes individual components and materials and all such
components and materials collectively when used in fuel cell stacks.
2. [***]
3. The term "RATING" means the minimum rating of the electrical output of the
DFC(TM) in kilowatts at an average voltage of 0.70 volts per cell as
determined after a 100 hour uninterrupted acceptance test.
4. a. The term "DFC(TM) KNOW-HOW" means any and all information (whether
patented, patentable or not) of FCE in respect of DFC(TM) including, but
not by way of limitation, laboratory and manufacturing data and
developments, engineering and processing information, drawings,
descriptions and specifications, which presently and/or during the life of
this CELL LICENSE are or may be useful in the design, development,
manufacture and/or use of DFC(TM) and are known to and/or possessed and/or
acquired by FCE during the life of this CELL LICENSE, subject to any
obligations on the part of FCE to maintain information of (either developed
by or for) third parties confidential and excluding information of third
parties obtained under other agreements.
4.b. The term [***] CELL KNOW-HOW" means any and all information (whether
patented, patentable or not) of MTU in respect of [***] CELL including, but
not by way of limitation, laboratory and manufacturing data and
developments, engineering and processing information, drawings,
descriptions and specifications, which presently and/or during the life of
this CELL LICENSE are or may be useful in the design, development,
manufacture and/or use of the [***] CELL and are known to and/or possessed
and/or acquired by MTU during the life of this CELL LICENSE, subject to any
obligations on the part of MTU to maintain information of (either developed
by or for) third parties confidential and excluding information of third
parties obtained under other agreements.
5. The term"PATENT RIGHTS" means severally and collectively:
a. Any and all patents presently owned and patent applications owned and
filed presently and/or during the life of this CELL LICENSE by FCE or
MTU in any country of the Exclusive Territory describing and claiming
DFC(TM)
b. Any and all patents to issue on or result from the patent applications
included in Section 5.a. above; and
c. Any and all reissues and extensions of any and all of the above
patents.
6. The term "EXISTING IMPROVEMENTS" means any and all information (whether
patented, patentable or not) of MTU and/or its Affiliates, in respect of
DFC(TM) products including, but not by way of limitation, laboratory and
manufacturing data and developments, engineering and processing
information, drawings, descriptions, and specifications, which are or may
be useful in the design, development and/or manufacture of DFC(TM) known to
and/or possessed and/or acquired by MTU during the life of the Previous
License Agreement, subject to any obligations on the part of MTU to
maintain information of third parties confidential, including but not
limited to:
o Water based slurry systems,
o Double layer cathode,
o High Velocity Oxygen Flame (HVOF) aluminizing of wet seals, o
Multi-layer protection for Anode Current Collectors, and
o Thermal treatment of Cathode Current Collectors for improved
conductivity.
7. The term "EXCLUSIVE TERRITORY" shall mean: (i) the countries of Western
Europe, Eastern Europe and the Middle East as set forth in Parts A, B and
C, respectively, of Schedule 1 which is attached hereto and made part
hereof.
8. The term "EXCLUSIVE" shall mean that the granting party shall have no
further right to grant to third parties the same or any other licenses in
respect of such Patents and/or Know-How and itself retains no such licenses
or other rights in respect of same, in the
field of use and geographic area covered by, and for the term of, the grant,
unless such licenses or rights are specifically retained herein, as provided in
Article II Section 6 below.
9. The term"NON-EXCLUSIVE TERRITORY" shall mean the countries of South America
and Africa.
10. The term "NON-EXCLUSIVE" shall mean, when used in connection with a
specific grant of a license under Patents and/or Know-How hereunder, that
the granting party may grant the same or any other licenses to third
parties in respect of such Patents and/or Know-how, and itself retains for
itself as provided in Article II Section 6 below such licenses and other
rights in respect of same, in the field of use and geographic area covered
by, and for the term of, the grant.
11. The term "AFFILIATE" shall mean any entity in which FCE or MTU respectively
own at least 30% of the equity or any entity which is owned by or under
common ownership with FCE or MTU respectively.
12. The term "CONSORTIUM or CONSORTIA" shall mean an agreement between MTU
(including Affiliates as the case may be) and one or more non-MTU
affiliates for exploiting the development, manufacture, use and sale of the
DFC(TM) Know How.
13. The term "COMPETITOR" shall mean a business rival of FCE or MTU which is
selling or planning to sell fuel cell power plants to FCE's or MTU's
intended carbonate fuel cell power plant customers.
Article II - Licenses
1. FCE hereby grants to MTU an Exclusive license, with the right to sublicense
as provided in Article II Section 7 (the DFC(TM) License) to sell, develop,
make or have made, use and/or practice FCE's DFC(TM) Patent Rights and
DFC(TM) Know How in the Exclusive Territory. FCE also hereby grants to MTU
a Non-Exclusive license, to sell, develop, make or have made, use and/or
practice FCE's DFC(TM) Patent Rights and DFC(TM) Know how in the
Non-Exclusive Territory.
2. MTU hereby agrees to negotiate in good faith the grant of [***] CELL KNOW
HOW licenses for territories to be defined and for royalty payments
discussed under Article IV, once the [***] CELL KNOW HOW is substantiated
and ready for commercialization.
3. MTU hereby grants to FCE an Exclusive royalty-free license, with the right
to sublicense as provided in Article II Section 8 (the Existing
Improvements License), to sell, use, make or have made, use and/or practice
the Existing Improvements anywhere except the MTU exclusive territory.
4. MTU may convert the DFC(TM) License to a Non-Exclusive DFC(TM) License at
its sole option at the end of each succeeding calendar year from the
effective date of this CELL LICENSE, upon thirty (30) days prior notice to
FCE. In such case, royalties shall be revised in accordance with Article V
below. MTU shall continue to have access to the DFC(TM) Patents and
Know-how if the license becomes non-exclusive, however MTU's right to
sub-license shall terminate per Article II Section 7 below.
5. This DFC(TM) license is subject to existing and future commitments by FCE
to the United States Government and the Electric Power Research Institute,
and is subject to the applicable export controls of the United States
Government in effect at the time of exercise of the license by MTU.
6. FCE retains a Non-Exclusive right to make, have made, use, develop and/or
sell and have sold DFC(TM) products under the Patent Rights and/or Know-how
in South America and Africa alone or jointly with third parties (including,
without limitation, joint ventures, partnerships and any other contractual
arrangements).
7. MTU sub-licenses of FCE's DFC(TM) Patent Rights and Know How may only be
granted upon prior written approval by FCE (except to MTU's Affiliates).
Approval of MTU sub-licenses granted to Consortia members who are not
members of the existing Consortium comprising the companies Ruhrgas, RWE
Energie, Elkraft and Haldor Topsoe, may be withheld by FCE in the event
that the Consortia member is a Competitor of FCE, which shall be determined
in FCE's sole and exclusive discretion. In the event the license granted in
Article II Section 1 becomes Non-Exclusive (i) any and all sub-licenses
granted by MTU shall become Non-Exclusive; and (ii) MTU's right to grant
further sub-licenses shall terminate.
8. FCE sub-licenses of MTU's Existing Improvements do not require prior
written approval by MTU except if this sub-license is planned with an MTU
Competitor which shall be determined in MTU's sole and exclusive
discretion.
9. MTU agrees to use its best efforts and to diligently promote the marketing
of DFC(TM) Products in their territory.
10. MTU hereto contemplates establishing marketing, distribution and service
agreements with third parties in their Exclusive territory. It is
understood that each such agreement shall require notification of the other
Party only, notwithstanding Article II Section 7 above.
Article III - DFC(TM) Selling
1. It is understood by the Parties that the DFC(TM) License is based on and
includes the selling of DFC(TM) stacks and components by FCE to MTU.
2. FCE agrees to sell MTU DFC components and stacks. The price to be charged
to MTU by FCE shall be equal to FCE's direct and indirect costs determined
in accordance with the Federal Acquisition Regulation Part 31 plus a [***]
([***] %) fee. At the beginning of each fiscal year FCE will establish
Overhead and G&A rates as part of its budgeting process. MTU will agree in
advance as to the volume and timing of production which has been included
for their orders in the FCE budget . The budgeted rates will then be
"fixed" for purposes of all billing to MTU for DFC components and stacks
purchased during that fiscal year. FCE will be at risk for any deviation
from these fixed rates. If MTU modifies the volume and/or the schedule for
their work then MTU shall bear the changes in Manufacturing Overhead and
G&A rates resulting from these modifications
Article IV - Payments
1. The license fee set forth in the Previous License Agreement is cancelled.
2. MTU shall pay FCE a royalty of [***] dollars ($[***]) for the Exclusive
DFC(TM) License for each kilowatt of Rating upon shipment of any power
plant in the Exclusive Territory which utilizes the licensed DFC(TM)
products made by or for MTU, used by, sold by or for MTU or leased by MTU
and/or any sub-licensee to MTU. In the event MTU exercises its right to
convert the DFC(TM) license in the Exclusive Territory to a Non-Exclusive
License and for all shipments into the Non-Exclusive Territory, the above
royalty shall be reduced to [***] ($[***]). Escalation shall be applied per
Article IV Section 4 below.
3. MTU shall pay a minimum annual royalty based on the following:
a. for the Exclusive DFC(TM) License the greater of $[***], or the [***]
per kilowatt ($[***]) royalty rate per Article IV Section 2 above with
escalation calculated per Article IV Section 4 below times [***] of
the total kilowatts of United States, Canada and Mexico shipments of
DFC(TM) products, or
b. for the Non-Exclusive DFC(TM) License the greater of $ [***], or the
[***] per kilowatt ($[***]) royalty rate per Article IV Section 2
above with escalation calculated per Article IV Section 4 below times
[***] of the total kilowatts of United States, Canada and Mexico
shipments of DFC(TM) products, and
c. This minimum royalty shall be offset as a credit against actual future
royalties owed by MTU to FCE per Article IV Section 2 above.
4. The royalty payment rates set forth in Article IV Section 2 and 3 above,
shall be adjusted by the increase in the United States Consumer Price Index
(CPI) from September, 1999 to the date of each sale, based on the ratio of
the CPI as of September, 1999 compared to the CPI at the month of the sale.
This adjustment shall be subject to a limit of increase per year of 7%.
5. All payment required under this Article IV shall be made within thirty (30)
days of the close of the calendar quarter of each year of this CELL LICENSE
Agreement.
6. The Parties agree to negotiate in good faith the terms of a [***] CELL
license based on the proportion of [***] CELL Know How and DFC(TM) Know How
and related benefits.
Article V - DFC(TM) KNOW HOW
1. FCE shall provide MTU all information embodying DFC(TM) Know How during the
life of this CELL LICENSE upon a time schedule and in accordance with MTU's
requirements as mutually agreed by the Parties.
2. MTU agrees to control and treat as secret and proprietary any DFC(TM) Know
How received from FCE. MTU shall develop and implement such procedures as
may be required to prevent the intentional or negligent disclosure to third
parties of any DFC(TM) Know How communicated by FCE. The following shall
not be considered or treated as secret and proprietary under this
provision:
2.1 any DFC(TM) Know How that has been or become published or generally
known to the trade of others without breach or fault of MTU,
2.2 any DFC(TM) Know How received prior to the disclosure of FCE legally
by MTU from any third party who, to the best of MTU's knowledge, after
reasonable inquiry, did not obtain same by breach of any obligation
owed to FCE, and who imposes no obligation of secrecy on MTU with
respect to such any DFC(TM) Know How.
3. Any rights of FCE related to its DFC(TM) Know How remain with FCE
regardless of any contributions of MTU related to the DFC(TM) Know How.
Article VI - Existing Improvements
1. MTU has provided the Existing Improvements to FCE as of the date of this
Agreement, in accordance with the terms of the Previous License.
2. The term "Existing Improvements" shall not be deemed to include technology
independently owned, developed, purchased or licensed by any MTU Consortium
member or Affiliate, unless such technology is developed and intended for
use by any such member or Affiliate as Improvements to the manufacture,
sale or use of DFC(TM) products licensed hereunder. In the event FCE
desires to use such technology which was not developed and intended for use
as an Improvement, FCE must separately license such technology from its
owner.
Article VII - Records, Reports and Notices
MTU shall keep separate records of sales and use of any DFC(TM) products and
shall report to FCE on a quarterly basis. Such records shall include records of
sub-licensees as applicable.
Notices under this CELL LICENSE shall go to the respective signers of this CELL
LICENSE Agreement or their successors.
Article VIII - Term, Termination
1. The DFC(TM) Licenses in Article II, Section 1 shall terminate at the end of
5 (five) years from the effective date of this CELL LICENSE Agreement (the
"Initial Term"). MTU shall have the right to extend the Initial Term of the
DFC(TM) Licenses for an additional 5 (five) year period by giving FCE
advance written notice of extension not less than 180 (one hundred eighty)
days prior to expiration of the Initial Term of this CELL LICENSE
Agreement. Any extension after a term of 10 years needs mutual consent of
the Parties related to terms and conditions. The Parties endeavor to reach
such consent 9 months prior to expiration of the CELL LICENSE Agreement.
2. Upon termination of this CELL LICENSE Agreement MTU shall continue to enjoy
in perpetuity FCE's DFC(TM) Licensed Know How as set forth in Article II
hereof with respect to patent rights owned by FCE as of the date of
termination and with respect to know how required to be provided to MTU to
the date of termination, provided that such licenses and rights shall
automatically be converted from Exclusive to Non-Exclusive rights and
licenses and provided that MTU shall pay a royalty at the full exclusive
rate specified in Article IV Section 2 ($[***] /kW Rating) plus escalation
as specified in Article IV Section 4, but without any minimum annual
royalty requirement.
3. Upon termination hereunder, all DFC(TM) Licensed Know How shall be held in
confidence by MTU for 15 (fifteen) years after the date of termination,
unless exempt by Article V, Section 2.1 and/or 2.2.
4. In case one Party fails to perform any of its obligations hereunder,
including without limitation, the failure to pay the royalties defined in
Article IV, the other Party claiming default may notify the first Party in
writing of such default.
4.1 In the case of a material or a non-material default, the Party
claiming default shall have the right to treat this CELL LICENSE
Agreement as in full force and effect and to take proper steps to
enforce compliance.
4.2 In the case of a material default, the Party claiming default shall
have the further option to terminate this CELL LICENSE.
4.3 In either event the Party claiming default shall also have the right
to recover any sums payable hereunder and any damages for breach
hereof.
4.4 In case the Party claiming default so elects to terminate this CELL
LICENSE Agreement, it shall first send to the other Party written
notice of its intention, together with a statement as to the grounds
upon which the intended action is based. If within a period of ninety
(90) days after such notice the other Party shall have met the
objections presented and shall have complied with the provisions of
this CELL LICENSE Agreement, then the notice shall become null and
void and of no effect and the other Party shall not be obliged to pay
any damages; otherwise, the notice shall remain effective and this
CELL LICENSE Agreement shall cease and terminate at the expiration of
such period.
5. In the event either Party is adjudicated a bankrupt and can no longer
fulfill its obligations under this CELL LICENSE Agreement, the non-bankrupt
party shall have a right to terminate this CELL LICENSE Agreement upon
giving the bankrupt party fifteen (15) days advance written notice of such
termination.
6. In case of a [***] CELL License grant under Article II Section 2 the rules
set forth under Article VIII Section 1 to 5 above will apply accordingly.
7. Upon natural expiration of this CELL LICENSE at the end of the Initial Term
or any extended term under Article VIII Section 1, so long as FCE continues
to utilize MTU Existing Improvements provided pursuant to Article VI
hereto, MTU shall provide FCE with a comprehensive list of the Improvements
of MTU's employees giving rise to the obligation on the part of MTU to pay
employee royalties under German law. FCE shall promptly pay quarterly to
MTU sixty-five Cents ($0.65) per kilowatt Rating plus escalation as
specified in Article IV Section 4, for each DFC(TM) Product made using one
or more Improvements of MTU's employees and made by or for, used by, sold
by or for or leased by FCE, its permitted sublicensees under this or its
other permitted third parties under this (the "Employee Royalty
Reimbursement Payment") for all periods from and after such expiration.
Article IX - Arbitration, Governing Law
1. Should any dispute, controversy or claim arise between FCE and MTU in
connection with, relating to or rising out of this CELL LICENSE Agreement,
efforts to resolve such an issue shall be made by the respective Parties.
If a resolution is not achieved, either Party may refer the issue to the
executive officers of FCE and MTU, who shall endeavor to reach a mutually
acceptable resolution.
2. In the event an acceptable resolution is not reached within thirty (30)
days of the request to the officers made per Article IX Section 1, the
Parties shall submit the dispute to nonbinding mediation with a certified
mediator to be mutually agreed upon by the Parties. Each Party shall bear
its own expenses (including attorneys' fees) for such mediation proceeding.
3. In the event an acceptable resolution is not reached within thirty (30)
days of the initiation of mediation proceedings per Article IX Section 2,
then the issue shall be submitted to arbitration before the American
Arbitration Association in accordance with the Rules of the American
Arbitration Association then in effect. The arbitration shall take place in
the
County and State of New York, U.S.A. and the substantive law applicable to
the arbitration shall be that of the State of New York, U.S.A. The
arbitration award shall be final and binding upon the parties. Such award
may be confirmed in any court having jurisdiction and reduced to final
judgment.
Article X - Infringements
1. In the event of an infringement by a third party against any claim of any
DFC(TM) patent licensed hereunder, or in the event of a claim of
infringement against either Party for use of any such patent, the Parties
shall each have the right to undertake appropriate legal action or defense
in their own name, or if so required by law, in the name of the patent
owner. The Party to such action shall have the full cooperation and support
of the other Party, including for example, access to records and employee
testimony as needed and shall provide full communication of the status of
such action.
2. Each Party hereunder shall be responsible for its own legal and other costs
in case of an infringement suit brought by a Party hereunder.
3. The Party owning the Patent against which a claim of infringement is
brought shall always be responsible for legal costs of defending against a
claim of infringement (i.e. FCE shall be responsible for the cost of
defending an infringement suit against MTU regarding MTU's use of an
FCE-owned European patent, and MTU shall be responsible for the cost of
defending an infringement suit against FCE regarding FCE's use of an
MTU-owned U.S. patent).
4. In the event of an award of damages resulting from any infringement suit
brought by FCE or MTU, the Parties shall mutually agree on division of such
award.
5. Neither Party may consent to settlement of any infringement claim against
itself if such settlement would result in elimination or decrease of any
patent rights owned by the other party without the consent of the other
Party.
6. In the event a patent infringement suit results in a final judicial
decision or settlement resulting in damages charged against either Party
for use of the other Party's patents, the Patent owner shall be obligated
to share in such damages at 50% of the total damage award up to a maximum
of $250,000 in total.
7. The provisions of this Article X shall survive the termination of this CELL
LICENSE Agreement for fifteen years or until expiration of the last
surviving patent licensed hereunder, whichever is later.
Article XI - Filing Of Patent Applications
1. FCE, acting in its sole discretion, may cause to be filed or may have filed
in FCE's name patent applications in countries of the Exclusive Territory,
either individually, or under the European Patent Convention, counterpart
to U.S. patent applications filed by FCE during the term of this Agreement
and included in the Patent Rights; provided, however, that such
counterparts shall at least be filed nationally or under the European
Patent Convention to cover Germany.
2. In each year of this Agreement, MTU shall pay the cost of maintenance fees
for maintaining the Patent Rights ("Maintenance Costs") up to and including
the first Ten Thousand United States Dollars ($10,000.00) FCE shall pay the
cost of all prosecution fees and expenses (including, without limitation,
costs for attorneys fees, filing fees, prosecution expenses, issuance fees
and any other fees and expenses) for seeking and
obtaining the Patent Rights and making the filings contemplated under this
Article XI ("Prosecution Costs") up to and including the first Twenty Five
Thousand United States Dollars ($25,000.00). All Maintenance Costs which
exceed Ten Thousand United States Dollars ($10,000.00) and all Prosecution
Costs which exceed Twenty Five Thousand United States Dollars ($25,000.00)
in any year of this Agreement shall be shared equally by FCE and MTU.
Article XII - Other Agreements, Successors and Assigns
1. MTU acknowledges that FCE shall have the exclusive right to: (i) seek and
undertake contracts related to DFC(TM) Products and Know How with the U.S.
Government, U.S. industry and other entities in the U.S.; and (ii) seek and
undertake contracts for developmental or demonstration power plants
utilizing DFC(TM) Products and Know How in the U.S. MTU and its Affiliates
and/or Consortia members, only those who have had access to DFC(TM)
Know-how shall not compete directly or indirectly with FCE for the
contracts identified in the previous sentence and/or in the manufacture
and/or sale of DFC(TM) Products and Know How in the United States, Canada
or Mexico.
2. FCE acknowledges that provided the licenses granted to MTU hereunder do not
become Non-Exclusive, MTU shall have the exclusive right to: (i) seek and
undertake contracts related to DFC(TM) Products and Know How or related
funding with the German Government, the European Union or any commercial,
industrial, utility and governmental entities in Europe, provided such
contracts and funding are for activities to be conducted in Europe; and
(ii) seek and undertake contracts for developmental or demonstration power
plants contracts related to DFC(TM) Products and Know How in Europe.
3. This Agreement is to extend to and be binding upon the permitted successors
and assigns of FCE and MTU.
4. Neither Party shall have the right to assign or otherwise transfer this
Agreement or any of its rights or obligations hereunder without the prior
written consent of the other party. Notwithstanding anything herein to the
contrary, either Party shall have the right to assign this Agreement and
its rights and obligations hereunder to an Affiliate to said Party,
provided, however, that, prior to any such assignment, (i) said Affiliate
delivers to the other Party a counterpart of this Agreement executed by
said Affiliate including a statement that the Affiliate agrees to be bound
by and perform the obligations of the assigning Party and (ii) the
assigning Party delivers to the other Party a written agreement providing
that the assigning Party shall remain primarily liable for the performance
of the assignee's obligations under this Agreement and a guarantee of such
Affiliate's performance satisfactory in all respects to the other Party.
The provisions of this Section 4 shall continue after natural expiration or
termination of this Agreement with respect to all rights and obligations
which continue after or survive such expiration or termination.
Article XIII - Substitution of Provisions, Order of Precedence, Survival of
Provisions
1. If any provision of this CELL LICENSE Agreement should be or become fully
or partly invalid or unenforceable for any reason whatsoever or should
violate any applicable law, this CELL LICENSE Agreement is to be considered
divisible as to such provision and such provision is to be deemed deleted
from this CELL LICENSE Agreement, and the remainder of this CELL LICENSE
Agreement shall be valid and binding as if such provision were not included
herein. There shall be substituted for any such provision deemed to be
deleted a suitable provision which, as far as is legally possible, comes
nearest to what the parties desired or would have desired according to the
sense and purpose of this CELL LICENSE Agreement, had they considered the
point when concluding this CELL LICENSE Agreement.
2. In the event of any conflict between the provisions of this CELL LICENSE
and the Previous License the provisions of this CELL LICENSE shall prevail
over the Previous License.
3. The provisions listed below shall survive termination of this CELL LICENSE:
Export Control provisions set forth in Article II Section 4;
Confidentiality provisions set forth in Article V Section 2 and Article
VIII Section 3; Continuing license rights set forth in Article VIII Section
2; Royalty obligations set forth in Article VIII Section 7; Article X,
Infringements in its entirety; and Article XII, Other Agreements,
Successors and Assigns, in its entirety.
Article XIV - No Requirement for Specific Research
It is acknowledged by both Parties hereto that nothing in this CELL LICENSE
Agreement requires or shall be construed as requiring either Party to conduct
any specific research or development for the other Party.
Article XV - Publicity Releases and Disclosure of Agreement
1. Neither Party hereto shall issue or release to any third party information
in any way related to the execution, performance or terms and conditions of
this Agreement (except as specifically allowed and/or contemplated
hereunder) without the prior written consent of the other party, which
consent shall not be unreasonably withheld, except for disclosures which
are required to be made by applicable laws or rules and regulations.
2. If as part of a grant application or other process to receive funding from
a government or governmental agency including the European Union and any of
its agencies (a "Governmental Authority"), it is necessary for either Party
or its sublicensees to disclose the other Party's Know-how, then the Party
desiring to make such disclosure will submit to the other Party the
required disclosure prior to such party incurring the obligation to
disclose the same to the respective Governmental Authority. If either Party
believes that such a disclosure will de detrimental to its interest, then
such information may only be disclosed if such Governmental Authority
agrees to keep such information confidential substantially in accordance
with the confidentiality provisions contained in Article V Section 2.
Article XVI - Entire Agreement, Modifications
This CELL LICENSE Agreement constitutes the entire agreement between the Parties
hereto with respect to the DFC(TM) License hereof and merges any and all prior
agreements, understandings and representations. No modification of this CELL
LICENSE Agreement shall be valid unless in writing and signed by each of the
parties hereto.
IN WITNESS WHEREOF, the parties hereto have caused this CELL LICENSE Agreement
to be executed in a manner binding upon them by their duly authorized officers
as of the date shown below.
FUEL CELL ENERGY, INC.
By: /S/ Jerry D. Leitman
--------------------
Name: Jerry D. Leitman
Title: President and Chief Executive Officer
Date: Dec 15, 1999
MTU MOTOREN-UND TURBINEN-UNION FRIEDRICHSHAFEN GmbH
By: /S/ M. A. Bode /S/ P. Kraus
----------------------- -------------
Name: Bode Kraus
Title:
Date: Dec 15, 1999 Dec 15, 1999
Exhibit I of FCE / MTU CELL LICENSE Agreement
Part A Western Europe Part B Eastern Europe
Andorra Albania
Austria Bulgaria
Belgium Czech Republic
Cyprus Slovakia
Denmark Hungary
Federal Republic of Germany Poland
Finland Romania
France All states of the former USSR
Great Britain and including, but not limited to
Northern Ireland CIS (Commonwealth of Independent
Greece States)
Greenland Yugoslavia
Ireland Slovenia
Iceland Croatia
Italy
Liechtenstein
Luxembourg
Malta
Monaco
Netherlands
Norway
Portugal
San Marino
Spain
Sweden
Switzerland
The Vatican State
Part C Middle East
Bahrain Syria
Iran Turkey
Iraq United Arab Emirates (UAE)
Israel Yemen, Arab. Rep.
Jordan Yemen, Peoples Rep.
Kuwait
Lebanon
Oman
Qatar
Saudi-Arabia
TABLE OF CONTENTS
WHEREAS
Article I - Definitions
Article II - Licenses
Article III - DFC(TM) Selling
Article IV - Payments
Article V - DFC(TM) KNOW HOW
Article VI - Existing Improvements
Article VII - Records, Reports and Notices
Article VIII - Term, Termination
Article IX - Arbitration, Governing Law
Article X - Infringements
Article XI - Filing Of Patent Applications
Article XII - Other Agreements, Successors and Assigns
Article XIII - Substitution of Provisions, Order of Precedence,
Survival of Provisions
Article XIV - No Requirement for Specific Research
Article XV - Publicity Releases and Disclosure of Agreement
Article XVI - Entire Agreement, Modifications
Exhibit I of FCE / MTU CELL LICENSE Agreement