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Sample
Business Contracts
License
and Technology Transfer Agreement - Evergreen Solar Inc. and EverQ
GmbH
AMENDED
AND RESTATED
LICENSE
&
TECHNOLOGY
TRANSFER
AGREEMENT
BY AND BETWEEN
EVERGREEN SOLAR,
INC.
AND
EVERQ GMBH
<PAGE>
TABLE OF
CONTENTS
ARTICLE
1 DEFINITIONS
1.1
CONSTRUCTION
1.2
DEFINITIONS
ARTICLE
2 RIGHTS AND LICENSES
2.1 E
LICENSE GRANT TO VENTURECO
2.2
VENTURECO LICENSE GRANT TO E
2.3
RESERVATION OF RIGHTS; NO IMPLIED LICENSES
ARTICLE
3 TECHNOLOGY TRANSFER
3.1
QUARTERLY MEETINGS
3.2
DELIVERY OF TECHNICAL DELIVERABLES
3.3
COPIES
3.4
[****]
ARTICLE
4 CONSIDERATION AND PAYMENT
4.1
ROYALTY
4.2
ROYALTY EVALUATION BY EXPERTS
4.3
TAX AUTHORITY CHALLENGES
4.4
ROYALTY CALCULATIONS
4.5
PAYMENT
4.6
CURRENCY
4.7
TAXES
4.8
AUDIT
4.9
SEPARATE AGREEMENTS
4.10 PROSPECTIVE BASIS
4.11 WAIVER
ARTICLE
5 INTELLECTUAL PROPERTY RIGHTS
5.1
OWNERSHIP
5.2
ENFORCEMENT OF JOINTLY OWNED INTELLECTUAL PROPERTY RIGHTS
5.3
THIRD PARTY LICENSES
5.4
FURTHER COOPERATION
ARTICLE
6 WARRANTIES
6.1
REPRESENTATIONS AND WARRANTIES
6.2
REMEDY
6.3
DISCLAIMER
September
28 06 FINAL
-i-
<PAGE>
TABLE OF
CONTENTS
ARTICLE
7 CONFIDENTIAL INFORMATION
7.1
CONFIDENTIAL INFORMATION
ARTICLE
8 TERM
8.1
TERM
8.2
SPECIAL TERMINATION RIGHT
8.3
EFFECT OF TERMINATION
ARTICLE
9 GENERAL PROVISIONS
9.1
LIMITATION OF LIABILITY
9.2
NOTICES
9.3
LANGUAGE
9.4
AMENDMENTS AND WAIVERS
9.5
ASSIGNMENT
9.6
ENTIRE AGREEMENT; SEVERABILITY
9.7
OTHER REMEDIES; SPECIFIC PERFORMANCE
9.8
GOVERNING LAW AND DISPUTE RESOLUTION
9.9
COMPLIANCE WITH LAWS AND REGULATIONS
9.10 EXPORT
9.11 FORCE MAJEURE
9.12 INDEPENDENT CONTRACTORS
9.13 THIRD PARTY BENEFICIARIES
9.14 COUNTERPARTS
9.15 CONDITION
September
28 FINAL
-ii-
<PAGE>
AMENDED AND
RESTATED
LICENSE
&
TECHNOLOGY
TRANSFER
AGREEMENT
This Amended and Restated License &
Technology Transfer Agreement (this
"AGREEMENT")
is made by and between Evergreen Solar, Inc., a Delaware
corporation
("E"), and EverQ GmbH, a limited liability company (GmbH),
incorporated
under the laws of the Federal Republic of Germany ("VENTURECO" or
"EverQ"),
as of the Effective Date. E and VentureCo are hereinafter referred to
individually
by their respective names or as "PARTY" and collectively as
"PARTIES."
RECITALS:
WHEREAS, E, Q Cells AG ("Q") and
Renewable Energy Corporation ("REC") have
entered
into that certain Master Joint Venture Agreement (Notarial Deed nr.
287/2005
of the Berlin notary public Dr. Rudolf von Hanstein, the "MASTER
AGREEMENT")
which is deemed to be incorporated into this Agreement where this
Agreement
refers to the Master Agreement (and remains incorporated
notwithstanding
termination of the Master Agreement), pursuant to which, among
other
things, the Parties have agreed to enter this Agreement;
WHEREAS, Q and VentureCo have entered into
that certain License and
Technology
Transfer Agreement By and Between Q-Cells AG and EverQ GmbH (the "Q
LICENSE
AGREEMENT");
WHEREAS, REC and VentureCo have entered
into that certain License and
Technology
Transfer Agreement By and Between Renewable Energy Corporation and
EverQ
GmbH (the "REC LICENSE AGREEMENT");
WHEREAS, E and VentureCo have entered that
certain License & Technology
Transfer
Agreement ("PRIOR AGREEMENT");
WHEREAS, E and VentureCo wish to amend the
Prior Agreement and agree that
this
Agreement shall supersede and replace the Prior Agreement;
NOW, THEREFORE, in consideration of the
foregoing premises and the
representations,
warranties, covenants and agreements herein contained, and
other
good and valuable consideration, the receipt and sufficiency of which are
hereby
acknowledged and accepted, and intending to be legally bound hereby, the
Parties
hereto hereby agree as follows:
-1-
<PAGE>
ARTICLE 1
DEFINITIONS
1.1 Construction. Capitalized terms not
defined herein shall have the
meanings
set forth in the Master Agreement. The interpretation of this Agreement
shall
be governed by those principles set forth in SECTION 1.2 (Headings and
Other
Interpretation) of the Master Agreement.
1.2 Definitions. As used herein:
"ADDED VALUE" means increased
value through sale of a Licensed Product
attributable
to [****] incorporated into or used to manufacture that Licensed
Product,
for example, [****]. The "Added Value" is determined by comparison of
[****].
"DIRECT PRODUCTION COSTS" means
all [****] required for the production of a
Licensed
Product, and [****] associated with manufacturing a Licensed Product
incorporating
MNIP.
"COST SAVINGS" means the
aggregate reduction of Total Production Costs of a
Licensed
Product attributable to [****] incorporated into or used to manufacture
that
Licensed Product. Any change in yields and conversion efficiencies shall be
taken
into account in determining the "Cost Savings." The "Cost
Savings" is
determined
by comparison of [****] in manufacture of the Licensed Products, or
determined
by comparison to another agreed [****]. If royalty payments are based
on
a royalty determined under Section 4.1(f) (Alternative Royalty Rate
Calculation
Based on MNIP), then each quarter the "Cost Savings" will be
calculated
by comparing [****] to the agreed [****]. The mechanism for defining
such
[****] will not change during the term of the royalty payments, but the
[****].
"EFFECTIVE DATE" means [****].
"E IP" means the E Technology
and E Intellectual Property Rights.
"E INTELLECTUAL PROPERTY RIGHTS"
means all Intellectual Property Rights
owned
or Licensable by E or its Affiliates during the Initial Period and (with
respect
to certain MNIP and other Intellectual Property Rights as described in
this
Agreement) [****] Post Termination Period, that relate to the manufacture,
production,
assembly, use or sale of Licensed Products, or which would, without
the
licenses herein, be infringed or violated by the operation of VentureCo's
business
or its commercialization of products as contemplated in the Master
Agreement.
"E INTELLECTUAL PROPERTY RIGHTS" includes those Intellectual Property
Rights
listed in PART 1 OF EXHIBIT A and (once available for commercial use), in
PART
2 OF EXHIBIT A but excludes those Intellectual Property Rights listed in
PART
3 OF EXHIBIT A ("EXCLUDED E INTELLECTUAL PROPERTY RIGHTS"). For the
avoidance
of doubt, "E INTELLECTUAL PROPERTY RIGHTS" excludes (i) MNIP offered
to
VentureCo but which it has elected not
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<PAGE>
to
license, (ii) other Intellectual Property Rights for improvements or other
inventions
that are made after the [****] Post Termination Period (except to the
extent
regulated in the context of support services to VentureCo pursuant to an
applicable
agreement), and (iii) in the event of an acquisition of E,
Intellectual
Property Rights of the acquirer of E.
"E TECHNICAL DELIVERABLES" means any reasonably available
documentation,
records
and other tangible items constituting E Technology and E Intellectual
Property
Rights, including any such items specified in Part 1 of Exhibit A.
"E TECHNOLOGY" means all
Technology owned or Licensable by E or its
Affiliates
during the Initial Period and (with respect to certain MNIP and other
Technology
as described in this Agreement) [****] Post Termination Period, that
relates
to the manufacture, production, assembly, use or sale of Licensed
Products
and the operation of VentureCo's business and commercialization of
products
as contemplated in the Master Agreement. "E TECHNOLOGY" includes
Technology
relating to items described in PART 1 OF EXHIBIT A ("INCLUDED E
TECHNOLOGY")
and (once available for commercial use) relating to MNIP described
in
PART 2 OF EXHIBIT A, but excludes Technology relating to items described in
PART
3 OF EXHIBIT A ("EXCLUDED E TECHNOLOGY"). For the avoidance of doubt,
E
Technology
excludes (i) MNIP offered to VentureCo but which it has elected not
to
license, (ii) other Technology created after the [****] Post Termination
Period
(except to the extent regulated in the context of support services to
VentureCo
pursuant to an applicable agreement), and (iii) in the event of an
acquisition
of E, Intellectual Property Rights of the acquirer of E.
"EXCLUDED E TECHNOLOGY" has the
meaning set forth in SECTION 1.2
(Definitions
- E Technology).
"INITIAL PERIOD" means the time
period commencing on the License Effective
Date
and ending on the Termination Date.
"INTELLECTUAL PROPERTY RIGHTS"
means all rights in, to, or arising out of:
(i)
any Patents; (ii) inventions, discoveries (whether patentable or not in any
country),
invention disclosures, improvements, trade secrets, proprietary
information,
know-how, technology and technical data; (iii) copyrights,
copyright
registrations, mask works, mask work registrations, and applications
therefor
in any country, and all other rights corresponding thereto throughout
the
world; and (iv) any other proprietary rights in or to Technology anywhere in
the
world.
"JOINTLY OWN" has the meaning
set forth in SECTION 5.1(a)(i) (Definition).
"LICENSABLE" means possession of
the ability to grant a license or
sublicense
of, or within, the scope provided for in this Agreement without
payment
of any fee to, or violating the terms of any agreement or other
arrangements
with a Third Party and without violating any applicable laws, rules
or
regulations.
"LICENSE EFFECTIVE DATE" means
the Effective Date.
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<PAGE>
"LICENSED PRODUCTS" means
Wafers, Cells, and/or Modules, as the case may
be,
in which the Wafers are made using String Ribbon Technology.
"LICENSED PRODUCTS REVENUE"
means the cumulative Net Sales Price for all
Licensed
Products Sold in the respective period.
"MARKET RATE" means [****].
"MATERIAL NEW IP" or
"MNIP" means Intellectual Property Rights and
Technology
developed or Licensable by E only after the License Effective Date
[****].
Notwithstanding anything to the contrary, MNIP shall not include any
Excluded
E Intellectual Property Rights or, in the event of an acquisition of E,
Intellectual
Property Rights of the acquirer of E. In general Intellectual
Property
Rights and Technology that are legally protectible and reduce Total
Production
Costs of Licensed Products by, or provide an Added Value of, [****];
provided,
however, that MNIP may include Property Rights and Technology not
meeting
such criteria to the extent that it nevertheless provides a substantial
and
material benefit.
"NET SALES PRICE" means, (i) for
arm's length Sales for fair value, the
average
gross revenue received by VentureCo in the period for Sales of the
Licensed
Products, accounted for in accordance with generally accepted
accounting
principles, less any deduction for discounts, returns, freight,
insurance,
taxes, and duties and (ii) for Sales other than arm's length Sales
for
fair value, the greater of (a) the net average selling price of the same or
most
nearly same Licensed Product and (b) the average gross revenue for such
Sales
less any deduction for discounts, returns, freight, insurance, taxes, and
duties
in accordance with generally accepted accounting principles.
"PATENTS" means any German,
international or foreign patent or any
application
therefor and any and all reissues, divisions, continuations,
renewals,
extensions and continuations-in-part thereof.
"POST TERMINATION PERIOD" means
the time period commencing immediately
after
the Termination Date. "[****] POST TERMINATION PERIOD" means the
[****]
period
commencing immediately after the Termination Date.
"REGISTERED E INTELLECTUAL PROPERTY
RIGHTS" means all E Intellectual
Property
Rights (including Patents) that have been registered, filed, issued or
otherwise
perfected or recorded with or by any state, government or other public
or
quasi-public legal authority, including any applications for filings for any
such
rights.
"SOLD" or "SELL" means
any direct or indirect disposition, by sale, lease,
use
or otherwise, of a Licensed Product.
"STRING RIBBON" means [****].
"TECHNOLOGY" means information
and technology in tangible and/or intangible
form
and materials, embodiments, implementations or improvements of any
technology,
including, but not limited to: software, media, data collections,
databases,
techniques, methods, processes, formulae,
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<PAGE>
systems,
hardware, equipment, prototypes, proofs of concept, apparatuses,
hardware,
software, algorithms, files, routines, documents, designs, drawings,
plans,
specifications and the like.
"TERMINATION DATE" means the
earlier of the date on which the Master
Agreement
or this Agreement is terminated in accordance with its terms.
"TOTAL PRODUCTION COSTS" means
the total of the [****] and [****] to the
extent
such [****] is directly associated with the respective product.
"VENTURECO INTELLECTUAL PROPERTY
RIGHTS" means all Intellectual Property
Rights
developed and owned (solely or jointly) by VentureCo that relate to or
which
would, without the licenses set forth herein, be infringed or violated by
making,
using, selling, importing or otherwise exploiting Wafers, Cells and
Modules.
"VENTURECO IP" means VentureCo
Technology and VentureCo Intellectual
Property
Rights.
"VENTURECO TECHNOLOGY" means all
technology developed and owned (solely or
jointly)
by VentureCo that relates to the making, using, selling, importing or
other
exploiting Wafers, Cells and Modules.
ARTICLE 2
RIGHTS AND
LICENSES
2.1 E License Grant to VentureCo. Subject
to the terms and conditions of
this
Agreement, E hereby grants and agrees to grant to VentureCo, effective upon
the
License Effective Date, a world-wide, non-exclusive, non-transferable,
perpetual,
irrevocable, fully paid up and royalty-free (except as provided in
ARTICLE
4 (Consideration and Payment)) license, without the right to sublicense,
under
the E Intellectual Property Rights, to make (but not have made), use,
sell,
offer for sale, import or otherwise commercialize or exploit Licensed
Products,
to use the E Technology in connection with the foregoing, and to
otherwise
operate VentureCo and commercialize its products as contemplated in
the
Master Agreement. It is understood that the foregoing license to VentureCo
includes,
without limitation, the right to change and make improvements and
extensions
to the E Technology. Furthermore, it is understood that VentureCo
shall
have the right to commercially exploit such changes and improvements in
accordance
with such license.
2.2 VentureCo License Grant to E.
VentureCo hereby grants and agrees to
grant
to E a world-wide, non-exclusive, non-transferable (except pursuant to
SECTION
9.5 (Assignment)), perpetual, irrevocable, fully paid up, royalty-free,
fully
sublicensable, license, under the VentureCo Intellectual Property Rights
developed
in the Initial Period and [****] Post Termination Period, to make,
use,
sell, offer for sale, import or otherwise commercialize or exploit Wafers,
Cells
and Modules. In addition, VentureCo hereby grants and agrees to grant to E
a
world-wide, non-exclusive, non-transferable, perpetual, irrevocable, fully
paid
up, royalty-free, fully sublicensable,
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<PAGE>
license,
under the VentureCo Intellectual Property Rights, whenever developed,
[****]
to make, use, sell, offer for sale, import or otherwise commercialize or
exploit
Wafers, Cells and Modules. It is understood that the foregoing license
to
E includes, without limitation, the right for E to change and make
improvements
and extensions to such Technology licensed from VentureCo.
Furthermore,
it is understood that E shall have the right to commercially
exploit
said changes and improvements in accordance with such license.
2.3 Reservation of Rights; No Implied
Licenses. All rights not granted
herein
are reserved. Nothing in this Agreement shall be deemed to constitute the
grant
of any license or other right to a Party's Intellectual Property Rights or
Technology
except as expressly set forth herein.
ARTICLE 3
TECHNOLOGY
TRANSFER
3.1 Quarterly Meetings.
(a) New Developments. During the
Initial Period and [****] Post
Termination
Period, the Parties shall meet on a quarterly basis (or as otherwise
agreed
upon by the Parties) to discuss (and E shall advise VentureCo of) any
material
or other E IP or VentureCo IP that was acquired, developed or became
Licensable
since the prior quarterly meeting.
(b) Defining Material New IP. During
the quarterly meetings described
above,
the Parties shall also determine whether new Intellectual Property Rights
and
Technology of or Licensable by E comprise Material New IP. The Parties
intend
that if E develops MNIP, it may be appropriate for E to receive royalty
for
VentureCo's use thereof (and whichVentureCo has elected to acquire) in
accordance
with ARTICLE 4 (Consideration and Payment). The Parties' obligations
with
respect to MNIP will be governed by ARTICLE 4 (Consideration and Payment).
3.2 Delivery of Technical Deliverables. E
shall deliver to VentureCo at
least
one copy of all E Technical Deliverables, in electronic form when
practicable,
within [****] days after the License Effective Date or (as
applicable),
(a) in the case of MNIP listed in
EXHIBIT A PART 2, promptly upon
commercial
availability (subject to applicable royalties),
(b) in the case of MNIP available in
the Initial Period (other than
that
in EXHIBIT A PART 2), promptly after VentureCo's election to acquire that
MNIP
(subject to applicable royalties), and
(c) in the case of MNIP available
after the E Interest Reduction Date
or
Termination Date, promptly after VentureCo's election to acquire that MNIP
and
determination of applicable royalties.
Subject to ARTICLE 4 (Consideration and
Payment), during the Initial Period
and
the [****] Post Termination Period, E shall periodically and promptly
deliver
to VentureCo copies of E
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<PAGE>
Technical
Deliverables that have not been previously delivered, including E
Technical
Deliverables relating to E IP acquired or Licensable after the License
Effective
Date.
3.3 Copies. VentureCo may copy, modify and
otherwise use the E Technical
Deliverables
in accordance with and subject to the restrictions and licenses set
forth
herein as necessary to exercise the rights granted hereunder. VentureCo
agrees
to maintain a document control system to control copies of such E
Technical
Deliverables and otherwise treat such information as E's Confidential
Information
subject to the provisions of ARTICLE 7 (Confidential Information).
3.4 [****
(a)
****
(b)
****
(c)
****
(d)
****]
ARTICLE 4
CONSIDERATION AND
PAYMENT
4.1 Royalty. Subject to exceptions in this
Agreement, VentureCo shall pay
royalties
to E for the use of MNIP. The royalty shall be based on two main
elements:
the success of the relevant MNIP in achieving Cost Savings and the
success
of that MNIP in achieving Added Value, [****]. For the sake of
commercial
simplicity the product of the two base rate elements shall be
converted
into a combined royalty rate, at intervals specified in relevant
Sections
below. The detailed rules of royalty calculation, including exceptions,
follow
below.
The royalty and other fees (if any)
(collectively "ROYALTY") payable for
the
use of MNIP shall be [****] generally determined as set forth below. The
royalty
payment obligations commence (with respect to Licensed Products Sold
incorporating
that MNIP) the later of (1) January 1 2007, and (2) the date when
VentureCo
first Sells Licensed Products that incorporate that MNIP.
For purposes of this Agreement, Thin
Ribbon Technology (as described in
Exhibit
A, part [2] item [2], will be deemed MNIP.
(a) Royalty Rate in General. The
royalty rate applicable hereunder
("Royalty
Rate") shall be as set forth in the following table shall continue
until
[****] ("Royalty Renewal Date").
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<PAGE>
Licensed
Product Revenue Royalty Rate
------------------------ ------------
$0
to $100 million 5%
$100
million to $250 million 3.5%
$250
million to $1,000 million 2%
more
than $1,000 million 1%
(b) Annual Adjustments. The Royalty
Rate may be adjusted on annual
basis
as follows. While Annual Adjustments may be made as set forth below, in
making
such adjustments, the Parties shall give deference to the above rates,
and
any adjustments shall made primarily to account for changes after the above
rates
were established. At least [****] days in advance of the [****] of the
Royalty
Renewal Date, the Parties shall agree upon a new market based Royalty
Rate
that shall be applicable for the next [****] year period commencing on the
[****]
of the Royalty Renewal Date. In the event that VentureCo and E cannot
agree
on the Royalty Rate applicable to such next [****] year period, or at the
election
of either VentureCo and E, the Royalty Rate for currently used MNIP
shall
be determined in accordance with Section 4.1(f) (Alternative Royalty Rate
Calculation
Based on MNIP).
(c) Exceptional Adjustments. The
Royalty Rate may be modified before
the
annual adjustment of Section 4.1(b) (Annual Adjustments) at the request of
either
party as set forth below in Section 4.1(c)(i) (Performance) or Section
4.1(c)(ii)
(Compared to Conventional Silicon).
(i) Performance. In the event that the
performance of the MNIP
used
by VentureCo differs substantially from the performance anticipated at the
time
the Royalty Rate was determined in accordance with 4.1(b) (Annual
Adjustments),
the Royalty Rate may be modified in accordance with this Section
4.1(c)
(Exceptional Adjustments) to reflect this unexpected performance. For a
difference
in performance to merit a change of Royalty Rate under this section
4.1
(c) (Exceptional Adjustments), the change would comprise [****].
(ii) Compared to Conventional
Silicon. [****].
(iii) New Royalty Rate. In the
event that a change in Royalty
Rate
is requested and the change in Royalty Rate is merited based on Section
4.1(b)(i)
(Performance) or Section 4.1(b)(ii) (Compared to Conventional
Silicon),
Parties agree to negotiate in good faith to determine the new
applicable
Royalty Rate based on the actual and then anticipated performance of
the
MNIP or change in Costs/Value of the Licensed Products respectively. The
Party
asserting that the Royalty Rate should be changed shall have the burden of
proof
of showing that a change should be made. In the event that the Parties do
not
agree on the new applicable Royalty Rate merited based on Section 4.1(b)(i)
(Performance)
or Section 4.1(b)(ii) (Compared to Conventional Silicon), the
Royalty
Rate shall be determined based on the expected and actual performance of
the
MNIP in accordance with Section 4.2 (Royalty Evaluation by Experts).
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<PAGE>
(iv) Frequency of Adjustment. A
request to adjust the Royalty
Rate
under this Section 4.1(c) (Exceptional Adjustments) cannot be made more
frequently
than [****].
(d) Changes. Any adjustments to
Royalty Rate under Section 4.1(c)
(Exceptional
Adjustments) shall apply only to Sales made after the adjustment,
and
all royalties paid or due hereunder are non-refundable. In no event shall
the
Royalty Rate under this Agreement be less than zero.
(e) Royalty Payments. If the Royalty Rate
is determined under Section
4.1(a)
(Royalty Rate in General), then VentureCo shall pay E a royalty equal to
the
Royalty Rate multiplied by the Licensed Product Revenue. If the Royalty Rate
is
determined in accordance with Section 4.1(f) (Alternative Royalty Rate
Calculation
Based on MNIP), then (i) VentureCo shall pay E a royalty equal to
the
respective Royalty Rate multiplied by Net Sales Price of each Licensed
Product
Sold by VentureCo in the respective period that incorporates the MNIP
into
or uses the MNIP in the manufacture of such Licensed Product, and (ii) if
the
Royalty Rate is determined on a per unit basis (such as watts) then the Net
Sales
Price will be determined on the identical units and the product of these
shall
be multiplied by units Sold. VentureCo shall pay the royalty on a calendar
quarterly
basis, within [****] days of the end of the respective calendar
quarter.
(f) Alternative Royalty Rate
Calculation Based on MNIP. The provisions
in
this Section 4.1 (f) (Alternative Royalty Rate Calculation) shall be used to
determine
the Royalty Rate, only in the particular circumstances for which this
Section
is applicable as set forth in Section 4.1(a) (Royalty Rate in General).
(i) The "Base Rate"
means [****]% of the Cost Savings plus
[****]%
of the Added Value that was not already captured by the Cost Savings.
The
Royalty Rate applicable to any particular year shall depend on the [****]
and
the Base Rate in accordance with the following:
Production
[****] Royalty Rate
----------------- ------------
[****] Base Rate
[****]: [****] x Base Rate
[****]: [****] x Base Rate
[****]: [****] x Base Rate
[****] [****] x Base Rate
[****]: [****] x Base Rate
[****]: [****] x Base Rate
[****]. [****] x Base Rate
(ii) In accordance with the
above table, the Royalty Rate equals
the
Base Rate in the [****] and [****] thereafter. [****] in the above table to
which
respective Royalty Rates apply start upon the date of the first sale in
commercial
volumes of the Licensed Products
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incorporating
the respective MNIP. Successive [****] start on successive [****]
of
the date of such first sale. For example, if such first sale were to take
place
on [****].
(iii) Notwithstanding the
foregoing, the royalty for any
particular
item of MNIP shall not exceed [****]% of (Net Sales Price of the item
embodying
the MNIP (e.g., Wafer, Cell, or Module) - Incoming Product Purchase
Price)
for thin ribbon MNIP through [****], and other than with respect to such
thin
ribbon MNIP, the royalty for any particular item of MNIP shall not exceed
[****]%
of (Net Sales Price of the item embodying the MNIP (e.g., Wafer, Cell,
or
Module) - Incoming Product Purchase Price). If several different items of
MNIP
are used for the same Licensed Product, royalty shall be due for each of
such
items of MNIP, except that the total of all such royalties shall not exceed
[****]%
of (Net Sales Price - [****]). [****] but not the [****], (ii) the cost
of
[****] in the event that MNIP relates to [****] but not the respective
[****],
and (iii) [****] with respect to all other MNIP. For the purpose of
determining
the [****], the costs of such [****] and [****] shall be determined
based
on the prices at which Evergreen sells such products to third parties in
arm's
length transactions in commercial volumes in the respective quarter, or if
no
such arm's length transactions occur during such quarter, the market price of
multicrystalline
silicon [****] and [****] sold in arm's length sales by third
parties
and Evergreen in the respective quarter.
(iv) For the avoidance of doubt,
it is understood that the above
royalty
calculations are not based on reduction in costs or added value due to
factors
other than the respective MNIP. Further, it is understood that to the
extent
that the benefit is provided by more than one item of MNIP, the royalty
for
the respective items of MNIP shall be determined so as not to double count
the
same benefit provided for the same Licensed Product.
(v) [Deleted]
(vi) Notwithstanding the above, in
the event that the value and
savings
is not properly reflected through a royalty determined through the
requirements
set forth above, the parties shall promptly determine through good
faith
negotiation the [****] royalty applicable to such MNIP based on the value
of
such MNIP to EverQ. For example, in the event that the respective MNIP is
predominantly
a cost savings technology, the component of the Base Rate
determined
under this Section 4.1 (f) (Alternative Royalty Rate Calculation
Based
on MNIP) based on Cost Savings may be increased from [****]%, up to a
maximum
of [****] %. It is further agreed that the Value Added component
attributable
to thin wafer technology will be deemed to have value until [****].
Additionally,
if the Royalty Rate determined in accordance with the above is not
commercially
reasonable (e.g., either too high or too low) because of unforeseen
factors,
the parties shall negotiate a Royalty Rate determined under this
Section
4.1 (f) (Alternative Royalty Rate Calculation Based on MNIP) that is
commercially
reasonable in view of the value of the technology to EverQ and the
market
for such technology. As another example, in the event that a royalty is
originally
structured with a meaningful percentage attributed to Added Value and
the
Parties later determine that the Added Value has been eliminated or
substantially
reduced, the Parties agree to negotiate in good faith an increase
in
the amount of component of the Base Rate attributed Cost
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<PAGE>
Savings
as would have occurred had the royalty originally been structured around
Cost
Savings alone.
(vii) In the event that, in view
of the respective [****]
(collectively,
"COSTS/VALUE"), Licensed Products that include the MNIP are
[****]
than products made with [****], then the Royalty Rate for such MNIP shall
be
[****] such that in view of the Costs/Value, the Licensed Products having the
[****].
Notwithstanding the foregoing, the Royalty Rate shall never be less
[****].
(viii) The Party asserting that,
based on Sections 4.1(f)(v) -
(vi),
a Royalty Rate should be different from a royalty determined in accordance
with
the mechanism set forth in Sections 4.1(f)(i) - (iv) above, or that any
Royalty
Rate or component thereof already established under Section 4.1(f)
should
be changed in accordance with the mechanism set forth above, shall have
the
burden of proof of showing that the alternative approach should be adopted.
(ix) Any adjustments to royalty
shall apply on a going forward
basis
only (ie apply only to Sales made after the adjustments), and all
royalties
paid hereunder are non-refundable. In the event that the parties do
not
agree on the applicable Royalty Rate, the parties shall appoint a mutually
agreed
independent auditor who shall determine the Royalty Rate in accordance
with
the above and whose determination shall be binding; provided, however, that
the
Royalty Rate may be readjusted [****] months or later after the auditor's
determination
based on changed circumstances.
(g) "Used For." MNIP is
"USED FOR" Licensed Products (for purposes of
SECTION
4.1 (Royalty)) if incorporated into or used in the manufacture of those
Licensed
Products
(h) Royalty - MNIP developed and
available in the [****] Post
Termination
Period (not available in the Initial Period)
(i) The royalty payable for the
use of MNIP developed and
commercially
available in the [****] Termination Period is the Market Rate
royalty.
The Parties shall promptly enter into arm's length negotiations in good
faith
to determine the Market Rate royalty applicable to MNIP (of that
description)
that VentureCo wishes to acquire in that period. Either Party may
initiate
valuation/determination of the Market Rate royalty by experts subject
to
SECTION 4.2 (Royalty Evaluation by Experts).
(ii) That royalty agreed or
determined (as applicable) under this
Section
4.1(h) shall be the Market Rate royalty. The royalty will be calculated
on
a quarterly basis on all Licensed Products for which the MNIP was used, that
were
sold in that quarter.
(i) Royalty - on E IP and MNIP Post
Termination
(i) VentureCo shall continue to
be responsible for royalty for
MNIP
used after the Termination Date. Additionally, VentureCo shall pay E a
royalty
on any other E IP used (prior to and at the Termination Date) for
Licensed
Products sold in volumes in excess of the
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<PAGE>
Termination
Level Capacity. That royalty shall be [****] percent ([****]%) of
the
Market Rate royalty during the the first [****] years after the Termination
Date
and the Market Rate royalty thereafter.
(ii) Parties shall enter into
arm's length negotiations in good
faith
to determine the Market Rate royalty at commencement of the Post
Termination
Period for E IP not currently or previously subject to royalty
payments.
Either Party may initiate determination or valuation of the Market
Rate
royalty by experts subject to SECTION 4.2 (Royalty Evaluation by Experts).
The
agreed or (as applicable) specified royalty shall be the Market Rate
royalty.
The royalty will be calculated on a quarterly basis on all Licensed
Products
for which the E IP or MNIP was used, that were sold in that quarter,
subject
to SECTION 4.1 (Royalty Calculations).
(j) Royalty - on external IPR offered by E.
If E offers VentureCo IP
or
MNIP which carries an external running cost to E (e.g. a license fee/royalty
to
a third party holder of such Intellectual Property Rights), then the cost
incurred
by E in connection with sub-licensing to VentureCo shall be borne in
its
entirety by VentureCo; provided that the written agreement between VentureCo
and
E for the licensing of such IP or MNIP expressly includes the amount of such
running
cost. The aforementioned shall not reduce E's rights to royalty under
the
rules above.
(k) No royalty on VentureCo MNIP.
Notwithstanding anything in this
Agreement,
no royalty is due hereunder on Licensed Products incorporating any
MNIP,
where the directly associated development costs of that MNIP are
substantially
funded by VentureCo pursuant to written development agreements/
arrangements
between VentureCo and E. This is without prejudice to the terms of
written
development agreements/arrangements (if any) that provide for
proportionate
or other royalty reduction, where those costs are partially funded
by
VentureCo.
4.2 Royalty Evaluation by Experts. If the
Parties cannot agree on the
Market
Rate royalty, Added Value or Cost Savings for MNIP within [****] days
after
initiation or commencement of negotiations to determine such royalty or
value,
then the following applies: Each Party shall retain at its expense an
independent
professional Third Party expert with expertise evaluating licenses
in
the photovoltaic industry.
(a) Subject to execution of customary
confidentiality agreements by
the
independent experts, VentureCo and E shall provide or cause to be provided
to
each expert all material information, including any material changes in such
information,
reasonably necessary to make the determination or reasonably
requested
by the experts.
(b) Within [****] days after the
[****] day period referenced above,
each
Party shall submit a final proposal for the relevant Market Rate royalty,
Added
Value or Cost Savings for MNIP with a supporting analysis prepared in
writing
by its retained expert, to the other Party and to the "Arbitrator."
The
Arbitrator
shall be a person with expertise in evaluating licenses in the
photovoltaic
industry, shall not have a material business relationship with
either
Party and shall be reasonably acceptable to both Parties. If the Parties
have
not agreed on an Arbitrator, the Parties will each select an Arbitrator
(within
the stated [****] day period) satisfying the above criteria and the
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selected
Arbitrators will select a third. In that case, the decision of a
majority
of the Arbitrators will control and shall be final and binding on both
Parties.
(c) If one Party does not submit in a
timely manner a final proposal,
then
the proposal of the other Party shall be used to establish the relevant
Market
Rate royalty, Added Value or Cost Savings for MNIP.
4.3 Tax Authority Challenges. In the event
that the tax authority
successfully
challenges the adequacy or amount of the royalty or the applicable
tax
provisions change, then the parties will use best reasonable efforts to
renegotiate
to establish a royalty rate consistent with the requirements of
applicable
law in a manner that does not adversely affect or increase the
financial
burden on VentureCo.
4.4 Royalty Calculations. Royalties shall
not be due with respect to
Licensed
Products for which the purchase price has been refunded within [****]
of
delivery. In the event that only part of the purchase price is refunded, the
royalty
shall be applied in proportion to the amount of the purchase price not
refunded.
4.5 Payment. To the extent applicable,
VentureCo shall, within [****] days
after
the end of each calendar quarter during the term of this Agreement,
prepare
a report summarizing the royalty payable to E pursuant to ARTICLE 4
(Consideration
and Payment) including a description and basis of the calculation
thereof.
VentureCo shall provide copies of such report to E, and VentureCo's
payment
to E shall accompany such report.
4.6 Currency. All payments hereunder shall
be made in Euros.
4.7 Taxes. With respect to royalties
payable by VentureCo to E under this
Agreement,
VentureCo shall promptly notify E of any requirement under applicable
law
to deduct or withhold an amount on behalf of E on account of any tax and, if
so
required under applicable law, VentureCo shall: (i) pay to the relevant
authorities
the full amount required to be deducted or withheld promptly upon
determination
by VentureCo that such deduction or withholding is required; and
(ii)
promptly forward to E an official receipt (or certified copy), or other
documentation
reasonably acceptable to E, evidencing such payment to such
authorities.
To the extent that E cannot or will not be able to take a full
credit
against its tax liability for the current or prior taxable years for the
full
amount of the withholding tax deducted or withheld by VentureCo and is
otherwise
unable to reduce or eliminate such withholding tax liability on its
own,
then the Parties shall cooperate with each other and use all reasonable
efforts
to reduce or eliminate such tax liability in a lawful and appropriate
manner
to the extent such does not result in additional liability to VentureCo.
4.8 Audit. Each Party shall maintain
complete and accurate accounting
records,
in accordance with sound accounting practices, to support and document
the
royalties or payments payable in connection with this Agreement. Such
records
shall be retained for a period of at least [****] years after the
royalties
which relate to such records have been accrued and paid. Each Party
shall,
upon written request from the other, provide access to such records to
such
Party for the purposes of audit. If any such audit discloses a shortfall in
payment
(or an overcharge, as the case
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<PAGE>
may
be) of more than [****] percent ([****]%) for any quarter, the audited Party
agrees
to pay or reimburse the other Party for the expenses of such audit, and
the
Parties shall reconcile payments in accordance with the results of the
audit.
ARTICLE 5
INTELLECTUAL PROPERTY
RIGHTS
5.1 Ownership
(a) Joint Inventions. E and VentureCo
shall Jointly Own all right,
title
and interest in all Intellectual Property Rights that personnel of E and
VentureCo
(including third parties working on each Party's behalf) jointly
create.
(i) Definition. For purposes of
this SECTION 5.1 (Ownership),
"JOINTLY
OWN" means that, subject to the terms of the licenses granted and other
provisions
of this Agreement, each Party or owner thereof is free to exploit
such
rights and, subject to SECTION 5.2 (Enforcement of Jointly Owned
Intellectual
Property Rights), authorize others to do so, with no obligation to
account
to the other Party or owner, for profits or otherwise, and each Party
hereby
waives any right it may have under the laws of any country to require
such
consent or accounting. In the event that either or both Parties are
pursuing
enforcement pursuant to SECTION 5.2 (Enforcement of Jointly Owned
Intellectual
Property Rights), any licensing of the respective Jointly Owned
Intellectual
Property Right to the alleged Third Party infringer shall be
pursued
(with the intent that the actual or alleged infringement is regularized
by
appropriate license terms) by the Party or Parties pursuing the action until
the
conclusion of the respective action.
(ii) PROSECUTION AND MAINTENANCE
BY VENTURECO. SUBJECT TO SECTION
5.1(c)
(Expenses and Assistance), VentureCo shall have the initial right, at its
option,
to control the filing for, prosecution and maintenance of any
Intellectual
Property Rights that claim or disclose inventions that the Parties
Jointly
Own pursuant to SECTION 5.1(a) (Joint Inventions), provided that
VentureCo
shall consult with and keep E reasonably informed on matters regarding
such
filing, prosecution and maintenance. In such case, subject to 5.1(c)
(Expenses
and Assistance), E shall reasonably assist VentureCo, as VentureCo
reasonably
requests, in VentureCo's efforts to file for, prosecute and/or
maintain
the Jointly-Owned Intellectual Property Rights. For purposes of this
SECTION
5.1(a) (Joint Inventions), "PROSECUTION AND MAINTENANCE" of
Intellectual
Property
Rights shall be deemed to include, without limitation, responding to
office
actions, payment of maintenance and annuity fees, and conduct of
interferences
or oppositions, and/or requests for re examinations, reissues or
extensions
of patent terms.
(iii) By the Jointly Owning
Party. To the extent that VentureCo
elects
not to file, prosecute or maintain any Intellectual Property Right
jointly
owned by VentureCo and E and not Q or REC, or pay any fee related
thereto,
E shall have the right, at its option, to control the filing,
prosecution
and/or maintenance of any such Intellectual Property Right, provided
that
E shall consult with and keep VentureCo reasonably informed of matters
regarding
such filing, prosecution and maintenance. To the extent that VentureCo
elects
not to file, prosecute or maintain any Intellectual
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<PAGE>
Property
Right Jointly Owned by VentureCo, E, Q and REC, or pay any fee related
thereto,
VentureCo shall notify E, Q and REC, and E, Q and REC shall have the
right,
at their option, to jointly control the filing, prosecution and/or
maintenance
of any such Intellectual Property Right, provided that E, Q and REC
shall
consult with and keep VentureCo reasonably informed of matters regarding
such
filing, prosecution and maintenance. To the extent that E, Q or REC elects
not
to file, prosecute or maintain any such Jointly Owned Intellectual Property
Right,
or pay any fee related thereto, it shall inform the other party(ies), and
such
other party(ies) shall have the right, at its option, to control the
filing,
prosecution and/or maintenance of any such Intellectual Property Right,
provided
that such Party(ies) shall consult with the other party(ies) and
VentureCo
and keep such party(ies) reasonably informed of matters regarding such
filing,
prosecution and maintenance.
(b) Sole Inventions. Subject to the
foregoing, each Party shall own
all
right, title and interest in all Intellectual Property Rights invented or
authored
solely by such Party's personnel (including third parties working on
such
Party's behalf). For purposes of clarification, E retains ownership of
Intellectual
Property Rights developed as of the License Effective Date and
otherwise
developed outside of its cooperation with VentureCo, including without
limitation
any E Technology and E Intellectual Property Rights relating to
String
Ribbon Technology.
(i) Prosecution and Maintenance;
Sole Inventions Related to E
Technology.
Each Party shall have sole right, at its option, to control the
filing
for, prosecution and maintenance of any Intellectual Property Rights that
claim
or disclose inventions that the Party solely owns, subject to the
following.
To the extent that VentureCo elects not to file, prosecute or
maintain
any Intellectual Property Right relating to VentureCo's solely-owned
Intellectual
Property Rights relating to the E IP provided under this Agreement,
or
pay any fee related thereto, VentureCo shall notify E, and E shall have the
right,
at its option, to control the filing, prosecution and/or maintenance of
any
such Intellectual Property Right, and VentureCo, at E's written request,
shall
transfer and assign all of its right, title and interest to such
Intellectual
Property Right to E. In the event of such transfer, VentureCo
retains
a world-wide, non-exclusive, non-transferable, perpetual, irrevocable,
royalty-free,
sublicensable license of such transferred Intellectual Property
Rights.
(ii) Other Prosecution and
Maintenance. To the extent that
VentureCo
elects not to file, prosecute or maintain any Intellectual Property
Right
relating solely to VentureCo's solely-owned Intellectual Property Rights
other
than Intellectual Property Rights relating to improvements to the E IP
provided
under this Agreement or the Q IP provided under the Q License Agreement
or
the REC IP provided under the REC License Agreement, VentureCo shall notify
E,
Q and REC, and E, Q and REC shall have the right to jointly control the
filing,
prosecution and/or maintenance of any such Intellectual Property Right,
and
VentureCo, at E, Q and REC's written request, shall transfer and assign all
right
to such Intellectual Property Right to the joint ownership of E, Q and
REC.
In the event that either E, Q or REC elects not to participate in the
filing,
prosecution or maintenance of any Right, the other party(ies) shall have
the
right, at their/its option, to control the filing, prosecution and/or
maintenance
of such Intellectual Property Right, and VentureCo shall, at such
party(ies')
request, transfer and assign all of its right, title and interest to
such
party(ies). In the event of such transfer, VentureCo retains a world-wide,
non-exclusive,
non-
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<PAGE>
transferable,
perpetual, irrevocable, royalty-free, sublicensable license of
such
transferred Intellectual Property Rights which were originally solely owned
by
VentureCo.
(c) Expenses and Assistance. To the
extent a Party controls the
foregoing
filing, prosecution and maintenance activities of any Jointly Owned
Intellectual
Property Rights (or, pursuant to SECTION 5.1 (Ownership), another
Party's
Intellectual Property Right), such controlling entity shall be
responsible
for all costs and expenses incurred in connection therewith. In such
cases,
subject to the foregoing, VentureCo shall reasonably assist the Jointly
Inventing
Parties, as the Jointly Inventing Parties reasonably request, in
Jointly
Inventing Parties' efforts to file for, prosecute and/or maintain the
Jointly
Owned Intellectual Property Rights.
(d) Employee Inventors. VentureCo
shall take all necessary measures to
secure
all right, title and interest in inventions that are made by its
employees
under the regulations of the German Employee Inventor Law
(Arbeitnehmererfindergesetz)
to the maximum extent available under applicable
law
such that VentureCo may carry out its obligations of this ARTICLE 5
(Intellectual
Property Rights) and the Parties may obtain and exercise their
rights
to the applicable Intellectual Property Rights to the full extent and
term
available under applicable law. In connection therewith, VentureCo will
comply
with all applicable laws including without limitation any obligations to
employees
under applicable law with respect to employee inventions.
5.2 Enforcement of Jointly Owned
Intellectual Property Rights. Each Party
shall
promptly notify the other Party if it becomes aware of a possible
infringement
by a Third Party of any Jointly Owned Intellectual Property Rights.
If
either Party desires to take any action against such an infringing or
misappropriating
Third Party, such Party shall first notify the other Party
hereto
and consult with such notified Party regarding such action. If the
notified
Party desires to participate in such action, the Parties shall then
jointly
and cooperatively pursue such action, in which event they shall bear all
costs
equally and share in any damages, royalties, license fees or other
recoveries
equally, provided that either Party may at any time decide not to
participate
further in such action, in which case any further costs shall be
borne
by and all damages, royalties, license fees and other recoveries shall be
received
by the Party which continues to pursue such action. If a Party declines
to
participate in such action, the other Party shall then have the right to
pursue
such action alone, and shall bear all costs of and receive all damages,
royalties,
license fees and other recoveries from such action. Notwithstanding
the
foregoing, if a Party declines to participate in such an action or withdraws
from
such an action, such Party shall nevertheless, at the request of the other
Party,
cooperate with the other Party, at the cost of the other Party and
subject
to any reasonable conditions (including indemnification against
counterclaims
by the third party), to the extent which may be necessary to
enable
the other Party to pursue such action effectively, including without
limitation
joining such action as an indispensable party.
5.3 Third Party Licenses. To the extent
that VentureCo may desire or need
rights
with respect to any Intellectual Property Rights not licensed hereunder
or
covered by the representations or warranties of ARTICLE 6 (Warranties),
VentureCo
shall be solely responsible for obtaining such licenses and paying the
associated
costs.
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<PAGE>
5.4 Further Cooperation. Each of the
Parties hereto agrees, upon the
reasonable
request of the other Party, to the extent consistent with this
Agreement,
to deliver to the other such records, data or other documents
reasonably
requested by the other, and to take or cause to be taken all such
other
actions as are reasonably necessary or desirable in order to permit the
other
to obtain the full benefits of this Agreement (including the execution of
any
documents required in connection therewith).
ARTICLE 6
WARRANTIES
6.1 Representations and Warranties. E
hereby represents and warrants to
VentureCo
that:
(a) Registered E Intellectual
Property. EXHIBIT B is a complete and
accurate
list of all Registered E Intellectual Property Rights. E will
supplement
EXHIBIT B bi annually during the Initial Period and (with respect
MNIP
used by VentureCo in the [****] Post Termination Period) Post Termination
Period,
as additional Registered E Intellectual Property Rights are applied for
or
obtained.
(b) Completeness. The E IP
constitutes all (or a copy of all) of the
Intellectual
Property owned or Licensable by E that is related to or reasonably
necessary
for the conduct and operations of VentureCo as currently contemplated
to
be conducted, including, without limitation, the design, development,
manufacture,
use, marketing and sale of Licensed Products.
(c) Non-Infringement. To the
knowledge of E, VentureCo's use of the E
IP
pursuant to this Agreement in the operation of VentureCo as it is
contemplated
to be conducted following the Closing, including but not limited to
the
design, development, manufacture, use, marketing and sale of Licensed
Products
does not, and will not, infringe or misappropriate any Intellectual
Property
Rights of any Third Party, violate any right of any Third Party
(including
any right to privacy or publicity), or constitute unfair competition
or
trade practices under the laws of any jurisdiction. Without limiting the
foregoing,
E has not received notice from any Person claiming that such
operation
or any act, product, Intellectual Property Rights, Technology or
service
by E (including products, Intellectual Property Rights, Technology or
services
currently under development) infringes or misappropriates any
Intellectual
Property rights of any Person, violates any right of any Person or
constitutes
unfair competition or trade practices under the laws of any
jurisdiction
(nor does E have knowledge of any basis therefor). To the knowledge
of
E, no Person is infringing or misappropriating any E IP.
(d) Contracts. EXHIBIT C lists all
contracts, licenses and agreements
under
which both (1) E has been granted Intellectual Property Rights or rights
to
Technology from Third Parties and (2) such rights are Licensable and
constitute
E IP licensed hereunder.
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<PAGE>
6.2 Remedy. E's sole obligation and
liability for E's breach of the
representations
and warranties provided in this ARTICLE 6 (Warranties) shall be
pursuant
to ARTICLE 8 (Liability and Limitations of Liability) of the Master
Agreement.
6.3 Disclaimer. EXCEPT FOR THE WARRANTIES
SET FORTH IN THIS ARTICLE 6
(WARRANTIES)
OR EXPRESSLY PROVIDED IN THE MASTER AGREEMENT, THE PARTIES MAKE NO
WARRANTIES,
EXPRESS, IMPLIED, STATUTORY OR OTHERWISE, AND SPECIFICALLY DISCLAIM
ANY
IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE,
NONINFRINGEMENT
AND TITLE. NEITHER PARTY MAKES ANY GUARANTEES TO THE OTHER
CONCERNING
THE SUCCESS OR POTENTIAL SUCCESS OR COMMERCIAL VIABILITY OF THE
ACTIVITIES
CONTEMPLATED UNDER THIS AGREEMENT.
ARTICLE 7
CONFIDENTIAL
INFORMATION
7.1 Confidential Information. Any
Confidential Information exchanged
pursuant
to this Agreement (and the terms of this Agreement itself) will be
governed
by SECTION 9.5 (Confidentiality) of the Master Agreement, with the
Parties
hereunder deemed the Disclosing Party and/or Receiving Party as
applicable,
provided that, notwithstanding anything to the contrary, each Party
may
use and distribute any such confidential or proprietary information as
reasonably
required to exercise its rights under the licenses granted pursuant
to
ARTICLE 2 (Rights and Licenses).
ARTICLE 8
TERM
8.1 Term. This Agreement shall become
effective as of the Effective Date.
The
license of SECTION 2.1 (E License Grant to VentureCo) becomes effective only
as
of the License Effective Date. This Agreement may be terminated only as
follows:
(a) [deleted].
(b) This Agreement may terminate in
the event that E and VentureCo
mutually
agree in writing to terminate this Agreement (subject to the Master
Agreement).
8.2 Special Termination Right. [****]
8.3 Effect of Termination. Upon any
termination or expiration of this
Agreement,
the licenses continue as provided in this Agreement, unless otherwise
expressly
agreed in writing by E and VentureCo. SECTIONS 2.2 (VentureCo License
Grant
to E), 2.3 (Reservation of Rights), ARTICLE 3 (Technology Transfer),
ARTICLE
4 (Consideration and Payment), ARTICLE 7 (Confidential
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<PAGE>
Information),
SECTION 8.3 (Effect of Termination) and ARTICLE 9 (General
Provisions)
shall survive any termination or expiration of this Agreement.
SECTION
5.1 (Ownership) shall survive any termination or expiration of this
Agreement.
Notwithstanding anything to the contrary, SECTION 2.1 (E License
Grant
to VentureCo) will survive any termination of the Agreement pursuant to
SECTION
8.2 (Special Termination Right).
ARTICLE 9
GENERAL
PROVISIONS
9.1 Limitation of Liability.
(a) IN NO EVENT WILL EITHER PARTY
HAVE ANY LIABILITY FOR ANY SPECIAL,
INDIRECT,
INCIDENTAL OR CONSEQUENTIAL DAMAGES (INCLUDING WITHOUT LIMITATION
DAMAGES
FOR LOSS OF PROFITS) THAT RELATE IN ANY WAY TO THIS AGREEMENT, HOWEVER
CAUSED
ON ANY THEORY OF LIABILITY (INCLUDING NEGLIGENCE), AND WHETHER OR NOT
SUCH
PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF ANY SUCH DAMAGES.
(b) This SECTION 9.1 (Limitation of
Liability) shall not limit the
remedies
that may be available to the Parties pursuant to the Master Agreement
or
Concurrent Agreements. To the extent required by applicable law, nothing in
this
SECTION 9.1 (Limitation of Liability) shall limit the remedies that may be
available
to the Parties for fraud, bodily injury or death.
9.2
Notices. All notices, requests and other communications to any Party
hereunder
shall be in writing (including facsimile transmission) and shall be
given
as set forth in the Master Agreement as follows:
As to VentureCo: As set forth in the
Master Agreement.
As to E, Inc.:
Evergreen Solar, Inc.
138 Bartlett Street
Marlboro, MA 01752
Attention: Richard Feldt
Richard Chleboski
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<PAGE>
with a copy to:
Wilson Sonsini Goodrich &
Rosati
12 East 49th Street
New York, NY 10017 USA
Attention: Robert Sanchez
Robert O'Connor
Phone: 1 212 999-5800
Fax: 1 650 493-6811
and a copy to: Taylor Wessing
Jagerstrasse 51
D-10117 Berlin,
Germany
Attention: Dr. Eberhardt Kuhne
Philipp von
Alvensleben
Phone: ++49 30 885636 0
Fax: ++49 30 885636 46
As to Q: Q-Cells AG
Guardianstr. 16
D-06766 Thalheim
Attention: Anton Milner
Dr. Hartmut Schuening
Phone: +49-34 94-66 8-60
Fax: +49-34 94-66 8-777
with a copy to: VAN AUBEL
Rechtsanwaelte
Leibnizstr. 49
D-10629 Berlin,
Germany
Attention: Dr. Thomas van Aubel
Phone: +49-30-31 51 90 0
Fax: +49-30-31 51 90 90
As to REC: Renewable Energy Coporation
Veritasveien 14, PO
Box 280
N-1323 Hovik, Norway
Attention: Erik Sauar
Phone: +47 67 81 52 53
Fax: +47 67 81 52 01
With a copy to Renewal Energy Corporation
Veritasveien 14, PO
Box 280
N-1323 Hovik, Norway
-20-
<PAGE>
Attention: Bjorn Brenna
Phone: +47 67 81 52 74
Fax: +47 67 81 52 01
or, in each case, at such other address as
may be specified in writing to
the
other Parties hereto.
9.3 Language. All documentation,
communication and services in connection
with
this Agreement in shall be in English.
9.4 Amendments and Waivers.
(a) Any provision of this Agreement
may be amended or waived if, but
only
if, such amendment or waiver is in writing and is signed, in the case of an
amendment,
by each Party to this Agreement, or in the case of a waiver, by the
Party
against whom the waiver is to be effective. The same applies to any waiver
of
this written form requirement.
(b) No failure or delay by any Party
in exercising any right, power or
privilege
hereunder shall operate as a waiver thereof nor shall any single or
partial
exercise thereof preclude any or other further exercise thereof or the
exercise
of any other right, power or privilege. The rights and remedies herein
provided
shall be cumulative and not exclusive of any rights or remedies
provided
by law.
9.5
Assignment. Other than as expressly otherwise provided herein, this
Agreement
shall not be assignable or otherwise transferable by any Party hereto
without
the prior written consent of the other Party hereto and the prior
written
consent of Q and REC; provided, however, that neither Party shall be
obligated
to obtain the consent of the other Party or other parties under this
SECTION
9.5 (Assignment) solely by virtue of a Change of Control of such Party,
and
such Party shall have the right to assign this Agreement, in its entirety
including
all rights and obligations, to such Party's successor in such Change
of
Control. Subject to the foregoing, the provisions of this Agreement shall be
binding
upon and inure to the benefit of the Parties hereto and their respective
successors
and assigns. Any assignment or transfer (including through a change
of
control) of this Agreement in violation of this SECTION 9.5 (Assignment)
shall
be null and void.
9.6 Prior Agreement; Entire Agreement;
Severability. This Agreement
supersedes
and replaces the Prior Agreement. This Agreement, together with the
Master
Agreement and Concurrent Agreements, constitutes the entire agreement
between
the Parties hereto and any of such Parties' respective affiliates with
respect
to the subject matter of this Agreement and supersedes all prior
communications,
agreements and understandings, both oral and written, with
respect
to the subject matter of this Agreement. In the event any provision of
this
Agreement becomes or is declared by a court of competent jurisdiction to be
illegal,
unenforceable or void, this Agreement shall continue in full force and
effect
without said provision, and the Parties agree to negotiate, in good
faith,
a legal and enforceable substitute provision which most nearly effects
the
Parties' intent in entering into this Agreement.
-21-
<PAGE>
9.7 Other Remedies; Specific Performance.
Except as otherwise provided
herein,
any and all remedies herein expressly conferred upon a Party will be
deemed
cumulative with and not exclusive of any other remedy conferred hereby or
by
law or equity upon such Party, and the exercise by a Party of any one remedy
will
not preclude the exercise of any other remedy. The Parties hereto agree
that
irreparable damage may occur in the event that any of the provisions of
this
Agreement were not performed in accordance with their specific terms or
were
otherwise breached. It is accordingly agreed that the Parties may be
entitled
to seek an injunction to prevent breaches of this Agreement and to
enforce
specifically the terms and provisions hereof in a German court, this
being
in addition to any other remedy to which they are entitled at law or in
equity.
9.8 Governing Law and Dispute Resolution.
This Agreement shall be construed
in
accordance with and governed by the laws of the Federal Republic of Germany.
All disputes arising in connection with
this Agreement or its validity or
any
agreement provided herein which cannot be resolved by mutual agreement of
the
Parties shall be finally settled in accordance with the Arbitration Rules of
the
German Institution of Arbitration e.V. (DIS) without recourse to the
ordinary
courts of law (except for challenges to the validity of shareholder
resolutions
which shall be submitted to the competent court in Berlin, and
except
where the Parties seek injunctions as provided in Section 9.7). The place
of
arbitration is Berlin, Germany. The arbitral tribunal consists of three
arbitrators.
The arbitrators must be capable of being appointed a judge in
accordance
with the relevant German legal rules. The substantive law of the
Federal
Republic of Germany is applicable to the dispute. The language of the
arbitral
proceedings is English.
9.9 Compliance with Laws and Regulations.
Each Party will comply with all
applicable
laws, regulations and ordinances.
9.10 Export. No Party shall export or re
export, directly or indirectly,
any
technical information disclosed hereunder or direct product thereof to any
destination
prohibited or restricted by the applicable export control
regulations,
including the U.S. Export Administration Regulations and
regulations
of Germany, without the prior authorization from the appropriate
governmental
authorities. Without limiting the foregoing, E shall be responsible
for
obtaining government approvals, permits or the like necessary for the export
of
its technology from the United States to VentureCo in Germany, and VentureCo
shall
be responsible for obtaining all government approvals, permits or the like
required
for the import of any technology to VentureCo and into Germany and for
the
export of any technology or products by VentureCo from Germany.
9.11 Force Majeure. No Party shall be
liable to another Party for failure
to
perform its obligations under this Agreement if such failure is caused by any
event
or condition not reasonably within the control and anticipation of the
affected
Party, including, without limitation, by fire, flood, typhoon,
earthquake,
explosion, strike, labor trouble or other industrial disturbance,
unavoidable
accident, war (declared or undeclared), act of terrorism, sabotage,
embargo,
riot, or any other cause beyond the control of the Parties, provided
that
the affected Party promptly notifies the other Party
-22-
<PAGE>
of
the occurrence of such event or condition and takes reasonable steps
necessary
to resume performance of its obligations so interfered with.
9.12 Independent Contractors. The Parties
hereto are independent
contractors.
Nothing contained herein or done pursuant to this Agreement shall
constitute
either Party the agent of the other Party for any purpose or in any
sense
whatsoever, or constitute the Parties as partners or joint venturers.
9.13 Third Party Beneficiaries. No
provision of this Agreement is intended
to
confer upon any person or entity other than the Parties hereto (and their
permitted
assigns) any rights or remedies hereunder.
9.14 Counterparts. This Agreement may be
signed in any number of
counterparts,
each of which shall be an original, with the same effect as if the
signatures
thereto and hereto were upon the same instrument. This Agreement
shall
become effective when each Party hereto shall have received a counterpart
hereof
signed by the other Party hereto.
9.15 Condition.
This Agreement is entered into under the
conditions precedent that (i) the
share
capital in EverQ is increased to Euro [****]; (ii) that such capital
increase
is registered with the commercial register, and (iii) after
registration
of such capital increase, Evergreen, Q-Cells AG and Renewable
Energy
Corporation ASA holds shares in a total amount of Euro [****] each.
This Agreement is entered into under the
further conditions precedent that
the
Competent Cartel Offices have issued a letter or formal decision that they
will
not prohibit the increase of share capital in EverQ or that the respective
waiting
periods provided for in the national merger control laws have elapsed
without
any formal decision rendered or that the Competent Cartel Offices
confirmed
that the transactions contemplated herein are not notifiable under the
applicable
merger control law. Competent Cartel Offices means any national or
international
agency, body or other entity to which the transactions
contemplated
herein have to be notified under the applicable merger control
jurisdictions.
(The remainder of this page is
intentionally left blank.)
-23-
<PAGE>
IN WITNESS WHEREOF, the Parties hereto
have caused this Agreement to be
duly
executed by their respective authorized officers as of the day and year
first
above written.
EVERGREEN SOLAR,
INC.
BY: /s/
Phillipp von Alvensleben
------------------------------------
NAME:
----------------------------------
TITLE:
---------------------------------
VENTURECO GMBH
BY: /s/
Michael Naschke
------------------------------------
NAME:
----------------------------------
TITLE:
---------------------------------
-24-
<PAGE>
EXHIBIT A
E INTELLECTUAL PROPERTY
RIGHTS & E TECHNOLOGY
PART 1 -INCLUDED
ITEMS
****
1. ****
2. ****
3. ****
4. ****
5. ****
6. ****
7. ****.
8. ****
9. ****
10. ****
11. ****
12. ****
13. ****
14. ****
15. ****
16. ****
17. ****
****
****
****
1. ****
2. ****
3. ****
4. ****
-1-
<PAGE>
PART 3 -EXCLUDED
ITEMS
[****
1. ****
2. ****
3. ****
4. ****
5. ****
6. ****
7. ****
****
1. ****
2. ****
3. ****
4. ****
5. ****
6. ****
7. ****
8. ****
9. ****
10. ****
11. ****
12. ****
13. ****
14. ****
15. ****
16. ****
17. ****
18. ****
19. ****]
-2-
<PAGE>
EXHIBIT B
REGISTERED E INTELLECTUAL
PROPERTY RIGHTS
****
1. ****
2. ****
3. ****
4. ****
5. ****
6. ****
7. ****
8. ****
9.
****
10.
****
11.
****
12.
****
13.
****
14.
****
15.
****]
-3-
<PAGE>
EXHIBIT C
CONTRACTS INCLUDED AS
LICENSABLE E IP
[****]
