Exhibit 10.6
NANOTECHNOLOGY
COLLABORATION AGREEMENT
Between
Centro Ricerche Fiat and Nanoworld Projects Corporation
COLLABORATION AGREEMENT
This Agreement is effective upon the day of execution, and is made between
C.R.F. S.C.p.A., a Societa Consortile per Azioni domiciled in Torino, Italy
("CRF"), and Nano World Projects Corporation ("NWPC"), a corporation domiciled
in Delaware, United States of America.
WHEREAS, each of the Parties have ongoing research in the fields of
nanotechnology and electro-optics;
WHEREAS, each of the Parties have existing know-how and patents autonomously
developed in the field of nanotechnology;
WHEREAS, CRF has particular know-how and patents in nanotechnology with respect
to optics, electro-optics and photonics;
WHEREAS, NWPC has particular know-how and patents in nanotechnology with respect
to the deposition of mono and multi-layers of particles and molecules, known as
Dynamic Thin Laminar Flow ("DTLF") that is a modification of the Langmuir-
Blodgett methodology and that has been patented by a member of the management of
NWPC, Dr. Picard;
WHEREAS, NWPC and CRF desires to continue to develop their proprietary technique
independently of the applications mentioned in this agreement and maintain any
and all rights to enter into research, development and commercialization
projects with other partners and in other nanotechnology application areas,
whether in the automotive industry or otherwise;
WHEREAS, NWPC desires to further develop the DTLF technology and apply it to new
products and commercial applications, including without limitation, in the
automotive industry.
WHEREAS, NWPC desires to collaborate with CRF and benefit from CRF's expertise
and ability to conform and set-up specific methodologies and tools for the
industrialization of new products;
WHEREAS, NWPC desires to maintain exclusive rights to any and all patents and
other intellectual property resulting from such collaboration, related to the
DTLF method with certain exceptions granted to CRF as set forth in detail
herein;
WHEREAS, CRF desires to participate in such collaboration with NWPC on the terms
and conditions expressed herein;
NOW THEREFORE, the Parties, intending to be bound by the consideration of the
premises and mutual promises made here, which consideration is deemed by each of
the parties to be adequate and sufficient in all respects, hereby agree as
follows:
1. PHASES OF COLLABORATION
1.1. The parties agree to collaborate on research and development of
nanotechnology, particularly in the areas of optics, electro-optics,
and photonics, on the terms and conditions set forth herein.
1.2. There shall be three (3) phases to the collaboration of the parties
under this Agreement: the Experimentation Phase, the Application Phase
and the Exploitation Phase.
1.3. The principal purpose of the Experimentation Phase is to guarantee the
uniformity of DTLF physical and chemical parameters on the deposited
molecular layers by setting up a suitable inspection technique (the
"Experimentation").
1.4. The principal purpose of the Application Phase is to structure and
implement a research and development program to develop nanotechnology
applications.
2
1.5. The principal purpose of the Exploitation Phase is to provide for
cooperation with respect to continuing identification and exploitation
of world-wide industrial needs for nanotechnology applications and to
jointly respond to such needs with regard to mutually beneficial
research, product development, product commercialization and
education.
1.6. CRF will focus and concentrate its activities under this Agreement on
the fields of optics, electro-optics and photonics. The scope of such
activities will be oriented to both the automotive and non automotive
markets.
2. EXPERIMENTATION PHASE
2.1. CRF and NWPC agree that the Experimentation procedure during the
Experimentation Phase shall initially be investigated only on rigid
substrates.
2.2. During the experimentation, mono or multi-layers will be applied on
rigid flat substrates addressing the development of novel electro-
optics films, including, without limitation, (a) electrochromic films,
(b) electroluminescent films, (c) antireflection films, (d)
antiscratch films, and (e) variable refractive index films.
2.3. NWPC undertakes to assure the reasonable availability of its operating
group in Canada for consultation with respect to scientific aspects of
proper use of the DTLF methodology.
2.4. For purposes of the Experimentation Phase, NWPC will Provide to CRF
support information reasonably necessary to properly execute the DTLF
technique, including without limitation, instructions on the physical-
chemical aspects at the base of the DTLF process.
2.5. For purposes of the Experimentation Phase, CRF shall utilize its
expertise in system design, experimentation and validation, purchase
of materials, and development of prototypes with industrial
characteristics. In addition, CRF shall engage such of its personnel,
laboratories, administrative premises and other instruments,
materials, computer systems, physical sites, external consultants and
additional resources to the extent deemed necessary by CRF to
implement, conduct and conclude the Experimentation Phase within the
time frame contemplated herein. CRF shall update the software required
to control the DTLF equipment as reasonably necessary.
2.6. CRF shall (a) create a data base of Experimentation information, (b)
record the procedures related to the Experimentation, (c) record
observations made with respect to future uses of DTLF and issue a
Experimentation Phase report compiling all of the foregoing
information and any incidental or ancillary Nanotechnology related to
the DTLF method obtained during the Experimentation Phase (the
"Experimentation Phase Report").
2.7. The parties agree that the Experimentation shall commence upon signing
the agreement. The first Report shall be completed by CRF and
delivered to NWPC no later than six months from such commencement
date.
2.8. CRF shall cover the cost of installation of the DTLF equipment in the
CRF facilities, including delivery and transport insurance costs.
2.9. Upon payment of the first installment of the Experimentation Phase
Invoice, NWPC shall be permitted to publicize the commencement of the
collaboration with CRF on NWPC's web site and other information
channels, provided that such disclosure is made in accordance with
mutually agreed-upon contents. In addition, CRF hereby permits NWPC to
disclose the existence of this Agreement as provided hereinafter.
2.10. During the period of the agreement, CRF shall permit representatives
of NWPC to visit the CRF facilities as such time as NWPC shall deem
reasonably necessary to monitor the progress of the work.
2.11. At the conclusion of the Agreement, CRF shall promptly return to NWPC
the DTLF equipment unless otherwise mutually agreed among the parties.
3
3. APPLICATION PHASE
3.1. During the Application Phase, the parties shall collaborate on
identifying significant areas that could benefit from nanotechnology
applications. The parties shall jointly structure a mutually beneficial
research and development program to develop such nanotechnology
applications.
3.2. [Insert additional provisions that are relevant to the Application
phase are reported in exibit B].
4. EXPLOITATION PHASE
4.1. The parties will collaborate with respect to identification and
exploitation of world-wide industrial needs for nanotechnology
applications and to jointly respond to such needs with regard to
mutually beneficial research, product development, product
commercialization and education as provided herein (the "Exploitation
Phase").
4.2. The Exploitation Phase shall include, without limitation, the following
activities, subject to the terms and conditions provided in this
Agreement:
(i) Continued joint nanotechnology research and product development,
including experimentation of mono and multilayers on flexible
substrates;
(ii) Exclusive for NWPC exploitation and commercialization of the
Nanotechnology related to the DTLF method described in Exhibit;
(iii) Joint education, training and collaboration on publishable
research;
(iv) Exchange of scientists;
(v) Execution of research topics of broad and specific industrial
interest; and
(vi) Benchmarking in the field of advanced nanotechnologies;
5. OWNERSHIP AND EXPLOITATION
5.1. The Nanotechnology related to the DTLF method developed at CRF
premises, according to this agreement, whether patentable or not, shall
be the exclusive property of NWPC.
5.2. The foregoing shall not limit the parties with respect to activities
outside of the three areas of optics, electro-optics, and photonics
under this Agreement to develop proprietary techniques independently of
the applications mentioned in this Agreement (if not based on DTLF
technology) and each party expressly reserves the right to enter into
research, development and commercialization projects with other
partners, whether in the automotive industry or otherwise. Except as
otherwise provided herein, this Agreement does not, and shall not be,
construed to limit the rights of either party to develop, market, sell
lease, service or manufacture competing products.
5.3. NWPC grants to CRF a non-exclusive , world wide license,to use the
Nanotechnoloy related to DTLF method for product developing and
experimentation in Vehicle Applications and industrial or general
lighting..
The exploitation, if decided by the customer, will be subject to the
patents right, according 5.1, and related exclusive royalties for NWPC.
However in no event may CRF transfer, assign disclose or sub-licence
nanotechnology related to DTLF without written consent of NWPC.
5.4. The Parties agree to jointly participate in preparation of patent
applications of the Nanotechnology related the DTLF method.
5.5. The expense to patent and maintain the Nanotechnology related to the
DTLF method rights under this Agreement shall be charged to NWPC.
5.6. Notwithstanding the property rights specified herein, each of the
parties shall have right to access and
4
maintain copies of all Nanotechnology related to the DTLF method
originated or derived under this Agreement, including without
limitation, all applications, products and processes.
5.7. Unless otherwise agreed in writing, nothing herein shall be deemed to
transfer any ownership of any technology, Confidential Information or
intellectual property, or other things, tangible or intangible, created
by a party, or acquired by a party from a third party, outside the
scope or term of this Agreement.
6. COSTS AND EXPENSES
6.1. The costs and expenses incurred under this Agreement shall be borne by
the parties as set forth on Exhibit A attached hereto.
7. REPRESENTATIONS AND WARRANTIES OF NWPC
NWPC hereby represents and warrants to CRF as follows:
7.1. NWPC is a corporation duly organized, validly existing and in good
standing under the laws of the State of Delaware. NWPC has the
corporate power to own or lease its properties and assets and to carry
on its business as now conducted.
7.2. NWPC has the right, power and authority to enter into this Agreement
and to perform all of its obligations hereunder. This Agreement has
been authorized by all necessary corporate action of, has been duly
executed and delivered by, and constitutes the valid and binding
obligation of, NWPC, enforceable in accordance with its terms.
7.3. The execution, delivery and performance of this Agreement will not
result in a breach in the terms or conditions of, or constitute a
default under, or violate, or conflict with, or require, as the case
may be: (i) any provision of any law, regulation or ordinance, (ii) the
Certificate of Incorporation or Bylaws of NWPC, (iii) any agreement,
lease, mortgage or other instrument or undertaking, oral or written, to
which NWPC is a party or by which it or any of its properties or assets
is or may be bound or affected, (iv) any judgment, order, writ,
injunction or decree of any Governmental Body, or (v) any action of or
by, or filing with, any Governmental Body.
7.4. There is no pending or, to the knowledge of NWPC, threatened, legal,
administrative, arbitration or other proceeding or governmental
investigation which is likely to have a material adverse effect on NWPC
or the performance by NWPC of this Agreement.
7.5. NWPC represents and warrants that it is in material compliance with all
laws, ordinances and regulations under the jurisdiction of its
organization and principal place of operations that are applicable to
this Agreement and the performance of its obligations hereunder, and
that the services and collaborative development work contemplated
hereunder will not violate any such laws except where any violation
would not result in a material adverse effect on the business of NWPC.
7.6. NWPC hereby represents and warrants that all its patents and patents
application with regard to the Nanothechnology related to DTLF method
do not infringe any rights of third party.
8. REPRESENTATIONS AND WARRANTIES OF CRF
CRF hereby represents and warrants to NWPC as follows:
8.1. CRF is a Societa Consortile per Azioni duly organized, validly existing
and in good standing under the laws of Italy. CRF has the corporate
power to own or lease its properties and assets and to carry on its
business as now conducted .
5
8.2. CRF has the right, power and authority to enter into this Agreement and
to perform all of its obligations hereunder. This Agreement has been
authorized by all necessary corporate action of, has been duly executed
and delivered by, and constitutes the valid and binding obligation of,
CRF, enforceable in accordance with its terms.
8.3. The execution, delivery and performance of this Agreement will not
result in a breach in the terms or conditions of, or constitute a
default under, or violate, or conflict with, or require, as the case
may be: (i) any provision of any law, regulation or ordinance, (ii) the
charter organizational and governance documents of CRF, (iii) any
agreement, lease, mortgage or other instrument or undertaking, oral or
written, to which CRF is a party or by which it or any of its
properties or assets is or may be bound or affected, (iv) any judgment,
order, writ, injunction or decree of any Governmental Body, or (v) any
action of or by, or filing with, any Governmental Body.
8.4. There is no pending or, to the knowledge of CRF, threatened, legal,
administrative, arbitration or other proceeding or governmental
investigation which is likely to have a material adverse effect on CRF
or the performance by CRF of this Agreement.
8.5. CRF represents and warrants that it is in material compliance with all
laws, ordinances and regulations under the jurisdiction of its
organization and principal place of operations that are applicable to
this Agreement and the performance of its obligations hereunder, and
that the services and collaborative development work contemplated
hereunder will not violate any such laws except where any violation
would not result in a material adverse effect on the business of CRF.
9. MANAGEMENT OF THE COLLABORATION AND UNDERTAKINGS
9.1. Within thirty (30) days following the date of execution of this
Agreement, the parties shall each appoint one representative to a joint
committee to monitor implementation of this Agreement (the
"Committee"). However NWPC shall have the right to appoint an
additional representative to the joint committee. The Committee shall
develop a program schedule which shall be carried out and implemented
by each of the parties, consistent with the policies and procedures
applicable to each party's facilities and employees. The parties agree
to conduct regular program reviews as shown on such program schedule to
ensure their mutual satisfaction with the performance of the
development work.
9.2. The Committee shall set delivery of the specific responsibilities and
obligations of the parties in accordance with the mandates of this
Agreement. The Committee shall meet at least once per month and at any
other mutually agreeable time when requested by the other party. The
parties undertake to exercise reasonable efforts to meet with the other
party following any request for a meeting by the other party at such
reasonable place and time as soon as reasonably possible, not to be
later than 14 days from the other party's date of request for such
meeting.
9.3. NWPC will invite a representative of CRF to attend meetings of the NWPC
technical committees and to at least one Board of Directors meeting (or
portion thereof) during each six month period at which NWPC plans and
policies will be discussed that are relevant to this Agreement and/or
the activities contemplated herein.
9.4. CRF will invite a representative of NWPC to attend meetings of the CRF
technical committees concerned with nanotechnology, and to at least one
Board of Directors meeting (or portion thereof) during each six month
period at which CRF plans and policies will be discussed that are
relevant to this Agreement and/or the activities contemplated herein.
9.5. Each party undertakes to use all reasonable efforts to perform its
obligations hereunder in a timely manner and to promptly provide to the
other party any and all Nanotechnology related to the DTLF method
developed hereunder, and such other data, information and/or other
results generated from the activities contemplated hereunder. In
addition to the foregoing, CRF shall deliver to NWPC one complete
summary of any and all Nanotechnology related to the DTLF method
developed pursuant to this Agreement during each six month period of
the term of this Agreement. The foregoing report shall be subject to
the provisions herein regarding Confidential Information.
6
9.6. In supplying any information or material to other party, each party
undertakes to use all reasonable efforts to ensure accuracy and in the
event of discovery of any error, to promptly notify the other party.
9.7. In the event that the parties exchange personnel, such exchange shall
only occur under a separate written agreement executed by each party.
The parties agree to instruct any such personnel to observe, during
their respective stay at the laboratories and offices of another
party, the laws of the country of said other party and the rules and
regulations applicable at the site of such other party's laboratories
and offices.
9.8. CRF is engaged in national and European projects within the area of
nanomaterials for optics and photonics. CRF, with two other partners
(CNR and a SME), have submitted a national proposal which is under
consideration. CRF has acted in the capacity of project coordinator
and principal proposer. CRF will make all reasonable efforts to
propose NWPC as a partner in any new proposal submitted in forthcoming
European or national calls, being understood that CRF will not be
liable for any third parities conditions requested to NWPC to
participate to the above projects.
10. REGULATORY COMPLIANCE
10.1. The parties shall not utilize the Nanotechnology related to the DTLF
method in a particular jurisdiction unless and until all regulatory
approvals, licenses and permits required by such jurisdiction or any
court of competent jurisdiction, governmental body or regulatory
agency (a "Governmental Body"), if any, have been obtained. The
parties, at their respective sole cost and expense, shall prepare and
submit any and all appropriate applications, data and other
information required by the jurisdiction of domicile or Governmental
Body with authority applicable to the respective party's place of
operations, to obtain any and all regulatory approvals, licenses and
permits in such jurisdictions.
10.2. In the event that any Governmental Body restricts or prohibits the
marketing, distribution, provision or licensing of the Nanotechnology
related to the DTLF method, the rights hereunder shall be subject to
and limited by any such restriction or prohibition without liability
to the other party of any type or nature except as expressly provided
herein to the contrary.
11. LIMITATIONS OF LIABILITY.
11.1. Except as otherwise provided herein, neither party makes any
representations or warranties to the other party, nor to any third
party, with respect to the Nanotechnology related to the DTLF method,
express or implied, including, but not limited to, implied warranties
of merchantability and fitness for a particular purpose or that the
Nanotechnology related to the DTLF method or derivative applications
as developed and designed will met any requirements of or will perform
error free or in conformance with the needs or requirements of either
party or any customer, partner, or third party affiliated or related
to the other party, by contract or otherwise.
11.2. CRF undertakes to use its best efforts to add NWPC as a co-insured
party on CRF's insurance policies with respect to casualty and
liability insurance coverage, only with regard the experimental phase.
11.3. Neither party shall have liability to the other party with respect any
and all indirect, special, incidental, consequential, punitive or
exemplary damages, whether in contract, in tort or otherwise,
including, but not limited to, loss of use, revenue or profit,
irrespective of whether such party has been advised of the possibility
of such damages, provided, however, that nothing herein shall be
construed to limit injunctive relief as may be ordered by any court or
arbitrator.
12. CONFIDENTIALITY AND INTELLECTUAL PROPERTY PROTECTION
12.1. During the term of the Agreement without the prior written consent of
the other party (which shall not be unreasonably withheld) neither
party shall (a) make any news release, public announcement, denial or
confirmation of the nanotechnology subject matter underlying this
Agreement and matters related to the parties' collaboration on
nanotechnology, or (b) advertise or publish any facts relating to the
foregoing. Each party agrees to promptly respond to requests for
approval of disclosure from the other party with respect to the
foregoing, and approval with respect to the foregoing shall be deemed
to have been given by the other party if such written consent, or
reason for denial thereof, is not received by the requesting party
within 5 business days of each such request.
7
12.2. Each of the parties acknowledge that during the term of this Agreement
and thereafter, one party may have in its possession or have access to
Confidential Information. NWPC agrees to keep confidential all such
Confidential Information of CRF which it had developed outside of the
Agreement, including without limitation, the terms and conditions of
this Agreement and other Confidential Information concerning the
business of the other party, however obtained, and shall not reveal or
disclose the same to any person or entity without the prior written
consent of the other party; provided, however, that either party may
disclose such information pursuant to a subpoena, order, statute, rule
or other legal requirement promulgated or imposed by a court or by a
judicial, regulatory or legislative body or agency in which such party
is involved; and provided, further, that either party may disclose the
terms of this Agreement and such Confidential Information to the
extent its counsel determines in good faith that such disclosure is
necessary to comply with applicable laws or as reasonably necessary to
enforce this Agreement. In the event that either party discloses such
Confidential Information in accordance with the previous sentence,
such party shall notify the other party.
12.3. Each of the parties acknowledge that during the term of this Agreement
and thereafter, one party may have in its possession or have access to
Confidential Information. CRF agrees to keep confidential all such
Confidential Information of NWPC or learned during the term of the
Agreement, including without limitation, the terms and conditions of
this Agreement and other Confidential Information concerning the
business of the other party, however obtained, and shall not reveal or
disclose the same to any person or entity without the prior written
consent of the other party; provided, however, that either party may
disclose such information pursuant to a subpoena, order, statute, rule
or other legal requirement promulgated or imposed by a court or by a
judicial, regulatory or legislative body or agency in which such party
is involved; and provided, further, that either party may disclose the
terms of this Agreement and such Confidential Information to the
extent its counsel determines in good faith that such disclosure is
necessary to comply with applicable laws or as reasonably necessary to
enforce this Agreement. In the event that either party discloses such
Confidential Information in accordance with the previous sentence,
such party shall notify the other party.
12.4. Except as specifically provided herein, CRF shall not permit any third
party to, (a) modify or alter, create or attempt to create, by reverse
engineering or otherwise, translate or decompile, translate or
transfer, or otherwise attempt to make unauthorized copies of the
software, hardware, algorithms or source code used in connection with
the Nanotechnology related to the DTLF method or any part thereof, (b)
make unauthorized use of or adapt the Nanotechnology related to the
DTLF method or any part thereof in any way, including using or
adapting the Nanotechnology related to the DTLF method or any part
thereof outside of the scope of this Agreement, (c) use the
Nanotechnology related to the DTLF method or any part thereof to
create a derivative work outside of the scope of this Agreement or (d)
rent, lease or otherwise provide temporary access to the
Nanotechnology related to the DTLF method or any part thereof to any
third party that could facilitate any of the foregoing. All
modifications, improvements, developments, refinements and
enhancements to the Nanotechnology related to the DTLF method shall
become a part of, and subject to, inclusion in the definition of
Nanotechnology related to the DTLF method under this Agreement.
12.5. The parties shall at all times undertake best efforts, and shall cause
their respective personnel and affiliates to use their respective best
efforts, to control, secure, maintain and protect the Nanotechnology
related to the DTLF method and all Confidential Information. Upon one
party's reasonable request, the other party shall, assist in securing,
maintaining and enforcing the Nanotechnology related to the DTLF
method rights, including, but not limited to, undertaking any and all
necessary and reasonably appropriate actions.
12.6. NWPC shall have the right in its sole discretion to select and include
any trademark or trade name to identify Nanotechnology related to the
DTLF method, provided, however, NWPC shall consult with CRF prior to
any such selection or implementation of identification.
12.7. CRF and NWPC shall promptly notify each other any alleged infringement
of any Nanotechnology related to the DTLF method. Upon reasonable
notice of any infringement, NWPC shall have the right, but not the
obligation, to bring any suit or action for infringement of its
Intellectual Property at its own expense. CRF shall, if requested by
NWPC, actively assist in the prosecution of such action at NWPC costs.
8
13. INDEMNIFICATION.
13.1. Indemnification. CRF or NWPC, as the case may be (the "Indemnifying
Party"), shall, at its sole cost and expense, indemnify and hold the
other party and their respective directors, officers, employees,
agents, representatives and affiliates (each, an "Indemnified Party")
harmless with respect to any liabilities, damages, loses, costs and
expenses, including reasonable attorney's fees (any or all of the
foregoing being hereinafter referred to as a "Loss"), insofar as such
Loss arises out of or is based upon (i) a misrepresentation or breach
(or alleged misrepresentation or breach) by the Indemnifying Party of
its warranties, covenants and agreements contained herein or (ii) a
claim that the Nanotechnology related to the DTLF method as used by
the Indemnifying Party within the scope of this Agreement, infringes
or violates any proprietary rights of any third party.
13.2. Notice of claim; defense. No claim for indemnification hereunder shall
be valid unless notice of the matter which may give rise to such claim
is promptly provided to the Indemnifying Party in writing. The
Indemnifying Party shall have the exclusive right to defend against
any claim and control such defense. The Indemnified Party shall
promptly and fully cooperate with the Indemnifying Party in defending
against such claim. In no event shall the Indemnified Party settle any
such claim, lawsuit or proceeding without the Indemnifying Party's
prior written approval.
14. RECORDS AND MONITORING.
14.1. If requested in writing by NWPC (the "Requesting Party"), CRF shall
permit the Requesting Party to have reasonable access to any and all
information, data, documentation (including without limitation,
related to scientific investigation or commercial exploitation) and
all other records relevant to the Nanotechnology related to the DTLF
method ("Nanotechnology Records"), at such other party's place of
business during customary business hours, or at the sole determination
of the party providing such access, to deliver electronically or by
commercial courier to the other party. Each party agrees to keep and
make available to the other party all Nanotechnology Records during
the term of the respective property rights reserved to each party
under this Agreement.
14.2. The NWPC (the "Requesting Party") may, in its sole discretion,
delegate review of the Nanotechnology Records of CRF to such persons,
consultants, auditors or otherwise as the Requesting Party deems
qualified to review such records on the Requesting Party's behalf,
provided, however, that the Requesting Party shall deliver executed
undertakings of confidentiality to the other party with respect to any
and all Nanotechnology Records and any other records to which such
third party shall have access during the course of its review. CRF
shall permit the Requesting Party to make and retain a reasonable
number of copies, in any reasonable media, digital or otherwise, of
any and all of the Nanotechnology Records.
15. DISPUTE RESOLUTION
15.1. The parties shall attempt in good faith to resolve any dispute arising
out of or relating to this Agreement promptly by negotiations, as
follows. Any party may give the other party written notice of any
dispute not resolved in the normal course of business. Executives of
both parties at levels one step above the project personnel who have
previously been involved in the dispute shall meet at a mutually
acceptable time and place within 10 days after delivery of such
notice, and thereafter as often as they reasonably deem necessary, to
exchange relevant information and to attempt to resolve the dispute.
All negotiations pursuant to this clause are confidential and shall be
treated as compromise and settlement negotiations and may not be
submitted as an admission or evidence in any adversarial proceeding or
arbitration. The parties, may, but shall not be obligated, to delegate
resolution of any dispute to a mutually agreed upon third party, such
as a lawyer or accountant, who may be empowered by the parties to
resolve such dispute. Each party shall bear its own expenses.
15.2. If the parties are unable to resolve the dispute by negotiations as
set forth above and at least 60 days have elapsed since notice was
given, such dispute shall be settled by arbitration as provided below,
or by mutual agreement modify or provide for other dispute resolution
procedures.
9
15.3. All disputes which the parties are unable to resolve among themselves
arising out of or in connection with this Agreement shall be finally
settled under the Rules of Arbitration of the International Chamber of
Commerce by three (3) arbitrators appointed in accordance with said
Rules, provided that each of such arbitrators shall have no less than
ten (10) years experience as practicing attorneys in international
commercial law and who have some knowledge of nanotechnology. Prior to
submitting any controversy for arbitration, the submitting party shall
provide not less than ten (10) business days' notice to the other
party of its intention to seek arbitration. The parties shall each
propose one arbitrator and the two such arbitrators shall select the
third arbitrator. Either party may disqualify the third proposed
arbitrator prior to the commencement of the arbitration if actual or
potential conflict of independence or conflict of interest can be
reasonably demonstrated. If the parties are unable to agree upon a
panel of arbitrators within 120 days of the commencement of notice of
arbitration, than the International Chamber of Commerce is
specifically empowered to appoint three (3) neutral arbitrators having
such qualifications as provided above as to whom the parties shall
have no rights of veto or disqualification.
15.4. The place of arbitration shall be London, U.K. The arbitration shall
be conducted on a confidential basis and conducted in the English
language. If any controversy involves or requires the application of
substantive law, this Agreement shall be interpreted in accordance
with the laws of the U.K., provided, however, that the interpretation
and enforceability of this agreement shall be governed by and
construed in accord with the international conventions of arbitration
to which the United States, Italy and England are adherents, as such
conventions are in effect as of the date of arbitration.
15.5. The parties to the dispute shall be limited to taking no more than ten
(10) depositions each. The length of each deposition shall be limited
to one (1) day. One initial set and one followup set of
interrogatories shall be permitted and must be responded to by the
opposing party within a reasonable period of time not to exceed thirty
(30) days. The arbitration shall be completed within six (6) months
from the date of empanelment of the entire arbitration panel. The
results of such arbitration shall be determined by majority vote of
the arbitration panel.
15.6. Each party shall bear its own expenses with respect to such
arbitration and the costs of such arbitration under the aegis of the
International Chamber of Commerce, including without limitation
customary compensation for the arbitrators, that shall be borne
equally by the parties, provided, however, that the arbitrators are
specifically empowered, at their sole discretion, to award to the
prevailing party (i) reimbursement for reasonable expenses incurred by
the prevailing party with respect to such arbitration, and (ii) the
allocated portion of the cost of such arbitration otherwise to be paid
by the prevailing party.
15.7. The judgment upon the award rendered by the arbitrators may be entered
and enforced in any court of competent jurisdiction. Neither party
shall be precluded hereby from seeking provisional remedies in the
courts of any jurisdiction including, but not limited to, temporary
restraining orders and preliminary injunctions, to protect its rights
and interest, but such shall not be sought as a means to avoid or stay
arbitration. The arbitrators are not empowered to award any
consequential, incidental, punitive, or exemplary damages nor are they
empowered to reallocate the ownership and property interests in the
Nanotechnology related to the DTLF method as specified herein. The
parties acknowledge that they have voluntarily agreed to arbitrate
their disputes in accordance with the foregoing and each party hereby
irrevocably waives any damages in excess of compensatory damages,
except for costs and expenses as provided above.
16. TERM
16.1. This Agreement shall be effective upon the day of execution and shall
have an initial term of three (3) years. Upon the expiration of such
term (or any renewal term), this Agreement shall be automatically
renewed for additional one (1) year periods provided that notice of
termination is not given by one of the parties (6) six months prior to
the expiration of the term then in effect (the initial term and any
renewal term shall be referred to as the "Term"). At the renewal of
any Term, the parties may by mutual consent modify terms and
conditions for the subsequent Term.
16.2. The non-defaulting party may terminate this Agreement immediately upon
written notice to the other party if the other party becomes
insolvent, seeks protection under any bankruptcy, trust deed,
creditors arrangement, composition or comparable proceeding,
proceedings in bankruptcy or insolvency are instituted against the
other party, or a receiver is appointed, or if any substantial part of
the
10
other party's assets is the object of attachment, sequestration or
other type of comparable proceeding and such other party is not
defending such action in good faith in a bona fide manner.
16.3. Either party may terminate this Agreement immediately upon written
notice if the other party commits a breach of any of the terms or
provisions of this Agreement and does not cure such breach within
sixty (60) days after receipt of written notice given by the other
party,
16.4. Upon termination of this Agreement by expiration of the Term or
otherwise, all further rights and obligations of the parties shall
cease, except that the parties shall not be relieved of any respective
obligations under Sections 5, 11, 12, 13, 14, 15, 16 and 18 which
shall survive the termination of this Agreement.
16.5. Without limiting any and all other remedies of the parties provided
for herein, in the event of the termination of this Agreement or a
breach by a party of its respective obligations set forth herein, each
party shall promptly return, at its sole expense, any and all
equipment, instruments, Nanotechnology related to the DTLF method,
Confidential Information and other property belonging to the other
party.
17. CERTAIN DEFINITIONS
17.1. "Vehicles Applications" shall mean: single parts, components,
materials, sub-systems and complete systems, than can find use in
vehicles such as Cars, Heavy and light weight trucks , buses , beased
on nanotechnologies resulting from the collaboration.
17.2. "Nanotechnology related to the DTLF method" shall mean all current and
future worldwide patents and patent rights, copyrights, trademarks,
trade names, trade secrets, know-how, utility models and other
intellectual property rights (including without limitation, all
applications and registrations with respect thereto) related to the
DTLF equipment under this Agreement.
17.3. "Confidential Information" shall mean all proprietary and confidential
information and, by way of example and without limitation, all matters
of a technical nature, such as scientific, trade and engineering
secrets, "know-how," formulas, secret processes, drawings, works of
authorship, machines, inventions, computer programs (including
documentation of such programs), services, materials, patent
applications, product or marketing plans, other plans, technical
information, technical improvements, manufacturing techniques,
specifications, ideas, manufacturing and test data, progress reports
and research projects, and matters of a business nature, such as
business plans, prospects, financial information, information about
costs, profits, markets or sales, lists of customers, accounts and
suppliers, procurement and promotional information, credit and
financial data, plans for future development, information relating to
management, operation and planning, the terms and provisions of
contracts, agreements, letters of intent, personnel information, and
all other information of a similar nature to the extent not available
to the public, of or relating to such party or its subsidiaries and
affiliates and their respective businesses, customers, suppliers and
accounts (collectively, "Confidential Information").
18. MISCELLANEOUS
18.1. FURTHER ASSURANCES. At any time or from time to time during the term
of this Agreement, each of the parties hereto shall execute and
deliver to the other party such additional documents, written
instruments, materials and information and take such other actions as
such other party may reasonably request to effectively obtain the
benefits of the terms and conditions made under this Agreement, and to
otherwise cause each of the parties hereto to fulfill their other
obligations under this Agreement and the activities contemplated
hereunder.
18.2. EXPORT CONTROL. CRF acknowledges that NWPC is subject to, and must
comply with, all applicable laws and regulations, including without
limitation the laws of the United States of America, respecting the
export, directly or indirectly, of any Nanotechnology related to the
DTLF method, Confidential Information
11
or any technical data acquired from the other under this Agreement or
any software utilizing any such data, and NWPC must adhere to the laws
or regulations of which at any time of export, require an export
license or other government approval including but not limited to
first obtaining such license or approval.
18.3. ETHICAL STANDARDS. The parties acknowledge that they are both subject
to, and must comply with, certain ethical standards requiring that it
shall not, and shall cause its employees, consultants, vendors and
affiliates not, to: (1) give or offer to give any gift or benefit to
any employees of the other party, (2) solicit or accept any
information, data, services, equipment, or commitment from an employee
of the other party unless same is (i) required under a contract, or
(ii) made pursuant to a written disclosure Agreement between the
parties, or (iii) specifically authorized in writing by such party's
management, (3) solicit or accept favoritism from any employee of the
other party, and (4) enter into any outside business relationship with
an employee of the other party without full disclosure to, and prior
approval of, the appropriate management of such employee. As used
herein: "employee" includes employees, consultants, and members of
management, as well as members of such person's immediate family and
household, plus any other person who is attempting to benefit from his
or her relationship to such person. "Gift or benefit" includes money,
goods, services, discounts, favors and the like in any form, but
excludes low value items such as pens, pencils, and calendars.
18.4. INDEPENDENT PARTIES. It is the intent of the parties that during the
term of this Agreement, the parties shall be independent contractors
with respect to each other, and nothing set forth herein shall be
deemed or construed to render the parties joint ventures, partners or
employer and employee. Neither party is authorized to make any
commitment or representation on the other's behalf. During the term of
this Agreement, if the term "partnership", "partner" or "development
partner" or the like is used to describe the parties' relationship,
the parties agree to make it clear to third parties that these terms
refer only to the spirit of cooperation between them and neither
describe, nor expressly or implied create, the legal status of
partners or joint ventures. Except as otherwise specifically provided
herein, the parties shall bear their own costs and expenses in
connection with execution and performance of this Agreement.
18.5. SUCCESSORS AND ASSIGNS. This Agreement shall be binding upon and shall
inure to the benefit of the parties hereto, and their respective
representatives, successors and permitted assigns. Distributor shall
not assign, transfer or otherwise dispose of this Agreement in whole
or in part to any individual, corporation or other entity without the
prior written consent of the other party, which consent shall not be
unreasonably withheld, including to any entity in which it has merged
or which has otherwise succeeded to all or substantially all of such
party's business and assets to which this Agreement pertains and which
has assumed in writing or by operation of law its obligations under
this Agreement. Any attempted assignment in violation of this
provision will be void. Notwithstanding the other provisions of this
section, in the event that either party is merged with or consolidated
into any other entity, or in the event that substantially all of the
assets of either party are sold or otherwise transferred to any other
entity, the provisions of this agreement will be binding upon, and
inure to the benefit of, such other entity.
18.6. THIRD PARTY BENEFICIARIES. Except as specifically provided for herein,
the terms and provisions of this Agreement are intended solely for the
benefit of each party hereto and their respective successors and
assigns, and it is not the intention of the parties to confer third-
party beneficiary rights, and this Agreement does not confer any such
rights, upon any other Person other than any Person entitled to
indemnity hereunder.
18.7. WAIVERS AND AMENDMENTS. Failure or delay of either party to exercise
any right or remedy under this Agreement or to require strict
performance by the other party of any provision of this Agreement
shall not be construed to be a waiver of any such right or remedy or
any other right or remedy hereunder. All of the rights of either party
under this Agreement shall be cumulative and may be exercised
separately or concurrently. This Agreement may be amended,
supplemented or modified only by a written instrument duly executed by
or on behalf of each party hereto.
18.8. FORCE MAJEUR. If the performance of any obligation (other than payment
and confidentiality obligations) under this Agreement is prevented,
restricted or interfered with by reason of war, revolution, civil
commotion, acts of public enemies, blockade, embargo, strikes, outage
of the Internet, law, order, proclamation, regulation, ordinance,
demand, or requirement having a legal effect of any government or any
judicial authority or representative of any such government, or any
other act whatsoever, whether similar or dissimilar to those referred
to in this Section, which is beyond the reasonable control of the
party affected,
12
then the party so affected shall, upon giving prior written notice to
the other party, be excused from such performance to the extent of
such prevention, restriction, or interference, provided that the
party so affected shall use reasonable commercial efforts to avoid or
remove such causes of nonperformance, and shall continue performance
hereunder with reasonable dispatch whenever such causes are removed.
18.9. REMEDIES CUMULATIVE. Except as otherwise set forth herein, any rights
of cancellation or termination, or remedies prescribed in this
Agreement are cumulative and are not intended to be exclusive of any
other remedy of which the injured party may be entitled to herein or
at law or in equity, including but not limited to the remedy of
specific performance.
18.10. ENTIRE AGREEMENT. This Agreement constitutes the entire agreement of
the parties as to the subject matter hereof and supersedes any and
all prior oral or written understandings and agreements as to such
subject matter, including any preprinted terms and conditions
contained in any purchase orders, invoices and acknowledgments issued
hereunder. Each and every exhibit or addendum referred to herein and
attached hereto is hereby incorporated by reference as if set forth
herein in full.
18.11. SEVERABILITY. If any provision of this Agreement or the application
thereof to any party or circumstances shall be declared void, illegal
or unenforceable, the remainder of this Agreement shall be valid and
enforceable to the extent permitted by applicable law. In such event,
the parties shall use their best efforts to replace the invalid or
unenforceable provisions by a provision that, to the extent permitted
by the applicable law, achieves the purposes intended under the
invalid or unenforceable provision. Any deviation by either party
from the terms and provisions of this Agreement to the limited extent
necessary to comply with applicable laws, rules or regulations shall
not be considered a breach of this Agreement.
18.12. SECTION HEADINGS AND CONSTRUCTION. The headings used in this
Agreement have been inserted for convenience of reference only and do
not define or limit the provisions hereof. The parties hereto agree
that this Agreement is the product of negotiation between
sophisticated parties and individuals, all of whom were represented
by counsel, and each of whom had an opportunity to participate in and
did participate in, the drafting of each provision hereof.
Accordingly, ambiguities in this Agreement, if any, shall not be
construed strictly or in favor of or against any party hereto but
rather shall be given a fair and reasonable construction without
regard to the rule of contra proferentum.
------ -----------
13
18.13. NOTICES. All notices and other communications in connection with this
Agreement shall be in writing and shall be sent to the respective
parties at addresses set forth below or to such other addresses as
may be designated by the parties in writing from time to time in
accordance with the conditions herein, by registered or certified air
mail, postage prepaid, or by express courier service, service fee
prepaid, or by telefax with a hard copy to follow via air mail or
express courier service. All notices shall be deemed received (i) if
given by hand, immediately, (ii) if given by air mail, five (5)
business days after posting, (iii) if given by express courier
service, three (3) business days after delivery to courier service,
or (iv) if given by telefax, upon receipt thereof by the recipient's
telefax machine as indicated either in the sender's identification
line produced by the recipient's telefax machine or in the sender's
transmission confirmation report as produced electronically by the
sender's telefax machine.
To: Nano World Projects Inc.
11715 North Creek Parkway
South Bothell, WA 98011
Attention: President
Tel: 001-604 6623667
With a copy to:
Steven D.Holmes
Holmes & Greenslade
Suite 1880, Oceanic Plaza
1066 west Hastings Street
Vancouver, B.C V6E 3X1
sdh@holmesgreenslade.com
To: Carlo Vittorio Folonari
CRF Executive Vice President
Strada Torino 50,
10043, Orbassano, Italy
Phone:++39 011 9083 210
Fax :++39 011 9083 674
With a copy to:
To: Massimo Casali
CRF Planning Director
Strada Torino, 50
I-10043 Orbassano (Torino), Italy
Phone:++39 011 9083 576
Fax :++39 011 9083 337
14
18.14. Counterparts. This Agreement may be executed in counterparts, each of
which shall be deemed to be an original and all of which together
shall be deemed to be one and the same instrument.
IN WITNESS WHEREOF, the parties have caused this Agreement to be executed by
their respective duly authorized representative as of the Effective Date.
September 6, 2000.
NANO WORLD PROJECTS INC.
By /s/ Robert Papalia
------------------
Name: Robert Papalia
Title: Director
By /s/ Giorgio Marinoni
--------------------
Name: Giorgio Marinoni
Title: President
By /s/ Battistino Fornero
----------------------
Name: Battistino Fornero
Title: Vice-President and Director
C.R.F. S.C.p.A.
By /s/ Carlo Vittorio Folonari
---------------------------
Name: Carlo Vittorio Folonari
Title: Executive Vice-President
15
Exhibit A
Costs and Expenses
NWPC hereby agrees to pay to CRF, at the following expirations the following
sums:
First year
. 300,000 $ US for experimental phase , already paid on
. 300,000 $ US on December 31th 2000.
. 300,000 $ US on March 31th 2001
. 300,000 $ US on June 31th 2001
( the payments above are inclusive of 200,000 $ US of entry fee)
Second year
. 250,000 $ US on September 30th 2001
. 250,000 $ US on December 31th 2001
. 250,000 $ US on March 31th 2002
. 250 ,000$ US on June 31th 2002
Third year
. 250,000 $ US on September 30th 2002
. 250,000 $ US on December 31th 2002
. 250,000 $ US on March 31th 2003
. 250,000 $ US on June 31th 2003
During all phases of this Agreement, CRF shall provide at least 3 researchers
and 2 external consultants. During the first year of this Agreement, CRF will
cover the expenses of any additional personnel.
CRF shall provide access to its existing laboratory equipment to all
collaboration personnel. The allocation of costs and expenses related to the
purchase of additional equipment for the collaboration shall be negotiated among
the parties.
At the end of the first year, the parties shall mutual evaluate the results of
the collaboration and the board of NWPC shall consider an increase of the annual
contribution to the collaboration activities.
16
Exibit B
Application Phase
Nanoworld - Centro Ricerche Fiat
Operating Unit located in Orbassano
The activities will be focused to the fields of Optics, Electro-optics and
Photonics.
Most of the work will be made in the existing Optics and Photonic laboratories
to which a new dedicated laboratory will be added with the necessary set-ups for
the specific activities. The equipment for this new lab will be chosen within
September 2000 with the intention to have them ready by February 2001.
The DTLF methodology will be considered as the first technology to experiment
all applications.
To be operative as soon as possible with the DTLF system, CRF will utilise its
expertise in system design, purchase of materials and development of equipment
to assist the NWPC operating units in charge for the development of the DTLF
machinery. If requested by NWPC, the personnel at CRF will contribute to the
first assembling of the DTLF system including the development of routines to
control the processes.
External consultants will be hired from the beginning so that the equipment
would better reflect the addressed applications in terms of flexibility of use
and in situ film control.
In this phase CRF will conduct a world-wide survey on equipment currently in use
to apply and monitor LB films. Companies or institutes that either produce or
are known for their specific set-ups will be visited. Reporting on this survey
to NWPC will be continuos.
The possibility of using a conventional LB system will be taken into
consideration as a reference for the DTLF method.
The application areas will be oriented to the automotive and non automotive
markets.
With the purpose to develop electroluminescent and photoluminescent devices the
experimentation will start applying to rigid substrates conductive polymers such
as derivations of PPV and polyacetylene. Specific care will be given to the
deposition of gel-like mono and multilayers at the perculation level with the
inclusion of electroluminescent nanoparticles, either inorganic and organic.
The technical programme will be revised every four months in accordance with
NWPC.
17