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JOINT DEVELOPMENT AGREEMENT DATED MARCH 23, 2004

Development Agreement

JOINT DEVELOPMENT AGREEMENT DATED MARCH 23, 2004 | Document Parties: NANOPHASE TECHNOLOGIES CO You are currently viewing:
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NANOPHASE TECHNOLOGIES CO

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Title: JOINT DEVELOPMENT AGREEMENT DATED MARCH 23, 2004
Governing Law: Illinois     Date: 3/30/2004
Industry: Misc. Fabricated Products     Sector: Basic Materials

JOINT DEVELOPMENT AGREEMENT DATED MARCH 23, 2004, Parties: nanophase technologies co
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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:

 

1.1

“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.

 


1.2

“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).

 

1.3

“Field of Application” shall mean, individually and collectively, Nanomaterials for use or usable directly or indirectly in:

 

(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.

 

1.4

“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.

 

1.5

“Nanomaterials” shall mean all materials produced or capable of being produced by NTC during the Term of this Agreement.

 

1.6

“NTC’s Patents” shall mean any and all technology and know-how disclosed, taught, suggested or claimed in:

 

(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.

 

1.7

“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.

 

Article 2. Scope of Development Program

 

2.1

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

 

3


 

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.

 

2.2

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:

 

(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.

 

2.3

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:

 

(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.

 

2.4

Exclusivity.

 

 

2.4 (a)

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.

 

 

2.4 (b)

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).

 

 

2.4 (c)

Altana agrees to purchase exclusively from NTC (as provided in the relevant Supply Agreement) Nanomaterials developed by NTC pursuant to a Specific Development Project.

 

 

2.4 (d)

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).

 

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

 

4.1

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.

 

4.2

Protection of Subsequent Technology Developments

 

 

4.2 (a)

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)

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:

 

 

(i)

the methods or processes by which the Nanomaterials are manufactured;

 

 

(ii)

the composition of the Nanomaterials; or

 

 

(iii)

any products in areas other than the Field of Application.

 

Nothing herein shall give Altana any ownership rights with respect to any technology or know-how disclosed in NTC’s Patents.

 

 

4.2 (c)

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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