Exhibit 10.29
JOINT DEVELOPMENT
AGREEMENT
THIS AGREEMENT, effective this 23 day of March, 2004
(“Effective Date”), between
Nanophase Technologies
Corporation
1319 Marquette Drive
Romeoville, Illinois
60446
(hereinafter
“NTC”)
and
Altana Chemie AG
Abelstrasse 45
46483 Wesel
Germany
(hereinafter
“Altana”)
WHEREAS, Altana develops, produces and sells additives
for paints and plastics in the coatings and plastics industry,
products for coatings and sealants for the packaging and coil
industry, and compounds and varnishes in the electrical insulation
business, and Altana has an interest in developing improvements and
new products related thereto; and
WHEREAS, NTC has manufacturing and technical capabilities
for the production of nanocrystalline metal oxide particles, coated
and dispersed nanocrystalline metal oxides and surface treated
nanocrystalline metal oxide particles; and
WHEREAS, concurrently with this Agreement, Altana has
entered into a Stock Purchase Agreement with NTC under which Altana
has purchased for $10 million an equity ownership position in NTC
in support of Altana’s strategic objective of obtaining
exclusive access to emerging nanotechnologies and commercial supply
of Nanomaterials important to Altana’s growth; and
WHEREAS, NTC and Altana wish both to engage in a program
to develop improvements and new products involving application of
nanomaterials in the Field of Application (as defined in Article
1.3 below), and to enter into exclusive supply arrangements for
Altana’s purchase of such nanomaterials from NTC, as
described below.
NOW THEREFORE,
in consideration of the mutual
covenants herein and other good and valuable consideration, the
receipt and sufficiency of which is hereby acknowledged, Altana and
NTC agree as follows:
Article 1.
Definitions
As used in this Agreement, the following terms
shall have the meanings set forth below:
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1.1
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“Technology” shall mean any
discovery, invention, know-how, trade secret, formulation or other
works, technical information or data, together with any and all
patent rights associated therewith.
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1.2
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“Technology Development” shall mean
any development or modification in or to the Technology, whether
patentable or not, conceived or developed in connection with a
Specific Development Project (as defined in Article 2.2
below).
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1.3
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“Field of
Application” shall mean, individually and collectively,
Nanomaterials for use or usable directly or indirectly
in:
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(a) paints, coatings and inks (for
example, general industrial coatings, architectural coatings, coil
coatings, printing inks, automotive OEM and refinish coatings, wood
coatings, consumer goods packaging coatings and coatings for
electrical insulation applications; such paints, coatings and inks
being based on any technology, including without limitation
solvent-based coatings, water-based coatings, powder coatings,
UV/EB curable coatings, one-component coatings and two-component
coatings);
(b) polymers and plastics (for
example, thermoset applications, PVC, and other
thermoplastics);
(c) overprint varnishes, closure
compounds and can end sealants for packaging applications;
and
(d) varnishes, compounds and
sealants for electrical insulation applications.
The Field of Application does
not include:
(w) applications involving thermal
spray, cosmetics, personal care, antimicrobials in pressure-treated
wood, applications for dielectrics and other electronic
applications other than industrial permanent coatings;
(x) NTC’s future sale to any
customer (and its affiliates) of one hundred (100) kilograms or
less during any twelve (12) month period of Nanomaterials for use
in the Field of Application with specifications the same as or
similar to those products depicted in the product catalogues posted
on NTC’s website at www.nanophase.com ;
(y) for a transition period of one
hundred twenty (120) days after the Effective Date of this
Agreement (the “Transition Period”), NTC’s sales
to, or on-going work with, any customer to whom NTC has supplied
Nanomaterials for potential uses within the Field of Application
before the Effective Date of this Agreement (together with its
affiliates, a “Pre-Existing Customer”), provided that
NTC and Altana will jointly formulate a transition plan for each
Pre-Existing Customer identifying the party primarily responsible
for managing and communications with each such Pre-Existing
Customer within the Field of Application; or
(z) after the Transition Period, NTC
may continue to sell Nanomaterials for use in the Field of
Application (i) having an aggregate sales price of not more than
Thirty Thousand Dollars ($30,000) to any Pre-Existing Customer
during any twelve (12) month period and not more than Two Hundred
Fifty Thousand Dollars. ($250,000) in the aggregate to all such
Pre-Existing Customers during any such period, provided that NTC
has used during the Transition Period and uses after the Transition
Period reasonable efforts to transition such Pre-Existing Customers
to Altana; and (ii) to one (1) Pre-Existing Customer (a paint
company whose identity NTC will make reasonable efforts to obtain
the customer’s consent to disclose to Altana), with such
sales limited to Nanomaterials consisting of water-based
dispersions of zinc oxide for use only in paint to be sold to the
discount retail home do-it-yourself market in the U.S., provided
that, despite NTC’s reasonable efforts, such Pre-Existing
Customer declines any transition to Altana.
The customers to which NTC may sell
Nanomaterials under Article 1.3(z) shall not, in any event, (i) be
known by NTC to be competitors of Altana or (ii) based outside the
United States. As to sales made pursuant to Article 1.3(x)-(z), NTC
shall, except to the extent prohibited by a confidentiality
agreement in effect on the Effective Date, disclose quarterly to
Altana in writing
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such sales by amount, purchaser,
Nanomaterial and the application to which NTC anticipates the
customer will put the Nanomaterials within the Field of
Application.
The parties further agree that, if
any potential commercial use of Nanomaterials within the Field of
Application arises in which NTC has an opportunity to participate,
including business that NTC offers to transition to Altana pursuant
to Article 1.3(y) or 1.3(z), but in which Altana expresses no
interest within sixty (60) days after NTC notifies Altana of the
potential use, that potential use shall be deemed to be outside the
Field of Application.
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1.4
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“Nanomaterial-based Products” shall
mean products in the Field of Application (unless otherwise
specifically provided herein), including those described in Article
1.3(a)-(d), which consist solely of or contain Nanomaterials. The
products may be additives, coatings, paints, varnishes, compounds,
sealants or the like containing the Nanomaterials or, if the
Nanomaterials can be sold by Altana without mixing into additives,
coatings, etc., the Nanomaterials themselves as prepared by
NTC.
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1.5
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“Nanomaterials” shall mean all
materials produced or capable of being produced by NTC during the
Term of this Agreement.
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1.6
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“NTC’s Patents” shall mean any
and all technology and know-how disclosed, taught, suggested or
claimed in:
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(a) United States Patent Nos.
6,669,823; 6,416,818; 6,033,781; 5,993,967; 5,460,701; 5,514,349;
5,874,684; 5,128,081; 5,320,800; and any patents and/or
applications which are continuations, continuations in part,
divisionals, re-examinations or reissues of these U.S. Patents,
including any related patents issued by governments other than the
United States;
(b) pending United States Patent
Applications Nos. 09/726,686; 10/174,955; 10/287,144; 10/047,552;
10/357,941; 10/368,941; 10/452,736; 10/658,178; and any
subsequently issued patent and/or applications which are
continuations, continuations in part, divisionals, re-examinations
or reissues of those U.S. Patent Applications, including any
related patents issued by governments other than the United States;
and
(c) any other patent applications
for uses within the Field of Application that NTC files before or
after the Effective Date of the Agreement.
The foregoing patents and any
enhancements or improvements thereof are intellectual property as
defined by U.S. Code Title 11, Section 101 et seq. and shall
be treated as such.
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1.7
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“Target
Price” shall mean the price per kilogram of Nanomaterial at
which the parties contemplate (before commencing the given Specific
Development Project) NTC selling to Altana and Altana purchasing
from NTC reasonable commercial volumes of the particular
Nanomaterial that the parties seek to obtain through a given
Specific Development Project (as defined in Article 2.2 below) and
as set forth in the Specific Development Project Agreement. The
principles by which the Target Price shall be set are set forth in
Exhibit A hereto.
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Article 2. Scope of
Development Program
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2.1
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Initiation of Development
Program . During the Term
of this Agreement, Altana will inform NTC of specific technical
features of certain Nanomaterials which Altana wishes NTC to
develop or modify through a cooperative development project with
NTC. Altana and NTC will discuss the technical approaches which
might be utilized in order to achieve the desired
technical
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features. The parties may agree
to embark on one or more specific development projects wherein each
party shall use its reasonable efforts to achieve the desired
technical features (each, a “Specific Development
Project” and collectively, the “Development
Program”). Before conducting any work under the Development
Program, the parties will agree upon an initial Specific
Development Project (as defined in Article 2.2 below). Altana and
NTC subsequently may undertake one or more additional Specific
Development Projects during the Term of this Agreement.
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2.2
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Specific
Development Project .
Each Specific Development Project agreed upon by the parties shall
be memorialized in a written agreement, signed by the parties
before starting work on the Specific Development Project. The
agreement will include a description of:
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(a) the goals and objectives of the
Specific Development Project;
(b) the milestones by which progress
in achieving the goals and objectives will be measured;
(c) the anticipated timing of both
each milestone and the parties’ periodic mutual assessment of
the Project;
(d) the Target Price;
(e) the resources each party will
provide to the Project (e.g., personnel, equipment, materials,
etc.); and
(f) the reasonably negotiated
allocation between Altana and NTC of the cost of the respective
resources each party provides to the Project and funding for the
Project; whereby the parties expect that each party shall bear its
own costs and only in the following circumstances will Altana be
requested to bear more than the cost of its own employees, their
travel expenses and its other internal costs, such as laboratory
costs: (i) where the duration of the Project is expected to be
greater than twelve (12) months; (ii) where NTC has to purchase
additional equipment to carry out the Project; or (iii) where NTC
has to hire additional personnel to carry out the
Project.
The parties contemplate that, in
connection with each Specific Development Project, NTC will provide
Altana with certain samples and other information, and Altana will
evaluate those samples and information. Altana shall report to NTC
on the results of Altana’s evaluations. Upon achieving the
technical features sought through the Project, NTC will notify
Altana whether NTC expects to be able to produce the Nanomaterials
resulting from the Specific Development Project for a sales price
at or within ten percent (10%) of the Target Price.
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2.3
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Project
Cooperation and Coordination . Altana and NTC agree to use their commercially
reasonable efforts to cooperate with one another and work together,
with the involvement of their respective senior management, to
formulate Specific Development Projects that will lead to
co-development of products in the Field of Application. The
parties’ cooperation will include:
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(a) communicating clearly and openly
about contemplated applications and expected commercial acceptance
and results;
(b) forming joint teams to formulate
specific goals and milestones for customer-focused product
solutions;
(c) exchanging quarterly written
reports setting forth each party’s progress to date,
including in relation to the initial milestones, estimated time
necessary to conclude the Specific Development Project, an estimate
of the likelihood of success and any modification of the sales
price in relation to the Target Price;
(d) holding quarterly meetings,
shortly after each party’s receipt of the other party’s
report described in Article 2.3(c); and
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(e) integrating each party’s
resources and capabilities (e.g. personnel) to achieve customer
acceptance of the resulting products in the Field of
Application.
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2.4 (a)
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NTC agrees to
work exclusively with Altana in the development of products in the
Field of Application and not to (i) sell any Nanomaterials or
Nanomaterial-based Products or (ii) license any Technology, which
in either such case (i or ii) is used or NTC believes may be used
in the Field of Application, except with respect to
Altana.
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2.4 (b)
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NTC agrees to
offer to Altana any product which NTC believes may be used in the
Field of Application, whether or not developed pursuant to this
Agreement, but solely for use in the Field of Application. If
Altana expresses no interest in such product within sixty (60) days
after NTC offers the product to Altana, such product shall be
deemed to be outside the Field of Application. If Altana expresses
an interest in such product, the product shall be deemed subject to
Article 2.4(c).
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2.4 (c)
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Altana agrees
to purchase exclusively from NTC (as provided in the relevant
Supply Agreement) Nanomaterials developed by NTC pursuant to a
Specific Development Project.
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2.4 (d)
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Altana agrees
not to work with other companies to develop or purchase products to
substitute Nanomaterials developed under a Specific Development
Project and sold to Altana by NTC (as provided in the relevant
Supply Agreement).
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Article 3. Future
Supply
If any Specific Development Project
undertaken in connection with the Development Program results in
the development of one or more commercially viable Nanomaterials,
the parties will enter into a supply agreement (the “Supply
Agreement”) having an initial term of at least three (3)
years and a price at or within ten percent (10%) of the Target
Price and customary terms, including those set forth in Exhibit B
hereto.
Article 4. Ownership of
Technology and Technology Developments
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4.1
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Previously
Developed Technology .
All Technology owned or controlled by either party to this
Agreement before the Effective Date, or developed or acquired by
that party independent of activities undertaken in connection with
the Development Program, shall remain in the ownership and/or
control of that party or its assignee, licensee or other
designee.
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4.2
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Protection
of Subsequent Technology Developments
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4.2 (a)
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The parties
shall meet regularly, at least once every three (3) months. At or
prior to the meeting, (i) NTC shall disclose to Altana all
Technology Developments which are a result of a Specific
Development Project undertaken in connection with the Development
Program, and (ii) Altana shall disclose to NTC the results of its
analysis and application of NTC’s Technology Developments as
Altana believes will be helpful in pursuing the Specific
Development Project. Such meetings may be held concurrently with
the parties’ periodic mutual assessment of a Specific
Development Project.
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4.2(b)
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Altana shall
have exclusive worldwide ownership rights in Technology
Developments, including any trade secrets, patents and patent
applications relating thereto and directed to Nanomaterial-based
Products (hereinafter “Altana’s Interests”).
Altana, at its sole discretion and expense, will have the right
(except as limited below) to prepare, file and prosecute patent
applications directed to Nanomaterial-based Products, which are a
result of a Specific Development Project. However, Altana shall not
have any ownership rights in or be entitled to prepare, file or
prosecute any such patent applications which include or are based
upon:
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(i)
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the methods or
processes by which the Nanomaterials are manufactured;
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(ii)
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the composition
of the Nanomaterials; or
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(iii)
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any products in
areas other than the Field of Application.
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Nothing herein shall give Altana any
ownership rights with respect to any technology or know-how
disclosed in NTC’s Patents.
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4.2 (c)
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NTC shall have
exclusive worldwide ownership rights in Technology Developments,
including any patents and patent applications relating thereto or
directed to any methods, processes or the composition of the
Nanomaterials and any products in areas other than the
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