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EXHIBIT 10.8
EXECUTION COPY
INTELLECTUAL PROPERTY AGREEMENT
BETWEEN
ALCAN INTERNATIONAL LIMITED
AND
NOVELIS INC.
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TABLE OF CONTENTS
<TABLE>
<S>
<C>
1.0
PREAMBLE...............................................................
1
2.0
DEFINITIONS............................................................
1
3.0 TRANSFER OF
TECHNOLOGY.................................................
7
4.0 LICENSE RIGHTS
GRANTED.................................................
10
5.0 EXCLUDED
TECHNOLOGY....................................................
12
6.0 TERMINATION OF PARTICIPATION IN
JTA.................................... 14
7.0 PROTECTION OF
INFORMATION..............................................
15
8.0 TERM AND
TERMINATION...................................................
17
9.0 SURVIVAL OF
OBLIGATIONS................................................
19
10.0
REPRESENTATIONS.......................................................
19
11.0
DISCLAIMER............................................................
19
12.0 TRADEMARK, TRADE NAME AND
LOGO........................................ 20
13.0
NON-WAIVER............................................................
20
14.0 NO PARTNERSHIP, JOINT
VENTURE......................................... 20
15.0 FURTHER ASSURANCES, CONSENTS,
ETC..................................... 21
16.0
NOTICES...............................................................
21
17.0
ASSIGNMENT............................................................
22
18.0
INDEMNIFICATION.......................................................
22
19.0 ENTIRE AGREEMENT,
AMENDMENTS.......................................... 24
20.0 DISPUTE
RESOLUTION....................................................
25
21.0
MISCELLANEOUS.........................................................
25
22.0 GOVERNING
LAW.........................................................
26
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INTELLECTUAL PROPERTY AGREEMENT
This Intellectual Property Agreement is
entered into with effect as of the
Effective Date.
BETWEEN: Alcan International Limited,
a Canadian corporation having its head
office at 1188 Sherbrooke Street West, Montreal, Quebec, Canada
(hereinafter referred to as "ALCANINT")
AND:
Novelis Inc., a Canadian corporation having its registered office
at
1188 Sherbrooke Street West, Montreal, Quebec, Canada
(hereinafter
referred to as "NOVELIS ") acting as principal and as agent for
other
members of Novelis Group, as herein provided.
WHEREAS, Alcanint is a wholly-owned
subsidiary of Alcan; and
WHEREAS, Alcan Inc. and Novelis have
entered into the Separation Agreement with
effect as of the Effective Date, which
provides, among other things, for the
transfer of certain assets from Alcan to
Novelis and the assumption by Novelis
of certain liabilities in connection with
the distribution of common shares of
Novelis to Alcan shareholders and the
execution and delivery of certain other
agreements, including this Agreement;
and
WHEREAS Alcanint owns and manages certain
technology on behalf of and for the
benefit of Alcan and its Affiliates and
desires to transfer or license to
Novelis certain rights in technology owned
by it;
WHEREAS a further purpose of this Agreement
is to achieve compliance with
regulatory requirements in respect of the
separation of certain aluminum rolling
assets from Alcan in a manner which allows
them to continue to be viable;
NOW THEREFORE, in consideration of the
foregoing and the mutual agreements set
forth below, and other good and valuable
consideration, the receipt and adequacy
of which is hereby acknowledged, the
parties hereto agree as follows:
1.0 PREAMBLE
The preamble
hereto shall be considered an integral part of this Agreement.
2.0 DEFINITIONS
2.1 "AEROSPACE INDUSTRY" shall mean
the production of aircraft,
spacecraft, satellites and similar craft for manned or unmanned
flight;
2.2 "AFFILIATE" shall mean, with
respect to any corporation, association
or other business entity, any other entity directly or
indirectly
controlling, controlled by or
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under common control with such specified corporation, association
or
entity. For purposes of this definition, "control" (including,
with
correlative meanings, the terms "controlling," "controlled by"
and
"under common control with"), means the possession, directly or
indirectly, of the power to direct or cause the direction of
management or policies, whether through the ownership of voting
securities, by agreement or otherwise; provided, however, that
beneficial ownership of 10% or more of the securities or other
interest entitled to vote generally in the election of directors
shall
be deemed to be control;
2.3 "AGREEMENT" shall mean this
Intellectual Property Agreement and all
other documents that are made a part hereof;
2.4 "ALCAN" shall mean Alcan Inc., a
Canadian corporation;
2.5 "ALCAN GROUP COMPANY" shall mean
Alcan or any entity of which a
majority of the total voting power of capital stock or other
interests
entitled (without regard to the occurrence of any contingency) to
vote
in the election
of directors, managers or trustees thereof is at the
time owned or controlled, directly or indirectly, by Alcan;
2.5A
"ARRANGEMENT" shall have the meaning ascribed to such term in
the
Separation Agreement;
2.6 "AUTOMOTIVE SHEET" shall mean
aluminum Sheet products destined or
intended for use in or principally related to the production of
inner
and outer body panels (including closures, skin, hoods, deckslids
and
fenders) and Sheet-based body-in-white structures for road
vehicles;
2.7 "AUTOMOTIVE SHEET PATENTS" shall
mean the patents and patent
applications in respect of Automotive Sheet as listed in Appendix
ASP;
2.8 "COCAST TECHNOLOGY" shall mean the
Technology originally developed by
Wagstaff Inc. and further developed by Alcan Group Companies,
primarily at the Solatens Facility, related to the casting of
composite ingots with distinct regions having different alloy
compositions as
generally described in the patents and patent
applications listed in Appendix CCT;
2.9 "DESIGNATED PATENTS" shall mean
patents and patent applications owned
by Alcanint and listed in Appendix DP;
2.10 "EFFECTIVE
DATE" shall mean the Effective Date as defined in the
Separation Agreement;
2.11 "EXCLUDED
TECHNOLOGY" shall mean the Technology described in Section
5.1;
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2.12 "FLEXCAST
TECHNOLOGY" shall mean the Technology specific to continuous
casting of a thin strip between two chilled metallic belts as
generally described in the patents and patent applications listed
in
Appendix FCT;
2.13 "FLEXSTREME
TECHNOLOGY" shall mean the Technology and equipment
designs originally developed by Wagstaff Inc. and further developed
by
Alcan Group Companies, primarily at the Solatens Facility, related
to
the horizontal direct chill casting of small diameter ingots
suitable
for use as forging stock as generally described in the patents
and
patent applications listed in Appendix FST;
2.14 "INSITU
HOMOGENIZATION TECHNOLOGY" shall mean ***.
2.15 "JOINT
TECHNOLOGY AGREEMENTS" or "JTAS" shall mean the Agreements
between Alcanint and various other Alcan Group Companies for
joint
research and technical assistance in the field of aluminum and
other
materials fabricating and/or aluminum reduction and/or the
production
of raw materials for the production of aluminum and/or
manufacturing
packaging using aluminum foil and other materials;
2.16 "LICENSED
PATENTS" shall mean the patents and patent applications
listed in Appendix LP;
2.17 "LICENSED
EQUIPMENT PATENTS" shall mean the patents and patent
applications listed in Appendix LEP;
2.18 "LICENSED
TECHNOLOGY" shall mean any and all, copyrights, trade
secrets, information, data, inventions, designs and similar
rights
that have been used or developed, or are being used or developed
for
use by Novelis or any Novelis Subsidiaries on or immediately
before
the Effective Date for or in connection with the use and
exploitation
of any one of the facilities that form part of Novelis as of
the
Effective Date that are related to the following:
- Sheet
ingot casting and metallurgy and associated melting,
metal cleaning, molten metal delivery, quality measurement
and environmental technologies;
----------
*** Certain information on this page
has been omitted and filed separately with
the Securities
and Exchange Commission. Confidential treatment has been
requested with
respect to the omitted portions.
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-
laminated products as pursued as of the Effective Date at
the Ohle, Ludensheid, Berlin, Bridgnorth or Etobicoke foil
operations of Alcan;
-
Technology specific to the production of rolled Plate with a
thickness of less than 12mm to the extent that such
technology was in use immediately prior to the Effective
Date at manufacturing facilities that will form a part of
Novelis as of the Effective Date;
- the Ouro
Preto/Aratu/Petrocoque Technology;
Licensed Technology shall also include all Technology related
to
management systems and business processes including environment
health
and safety, value based management, continuous improvement,
production
scheduling and management and individual performance and career
management and all business forms, contract forms, and other
written
and electronic business materials used by Novelis or a Novelis
Subsidiary prior to the Effective Date subject in each case to
Novelis
obtaining at its sole cost any necessary consents, provided that
all
such Technology and materials have been modified as necessary
to
delete any reference to brand names, trademarks, service marks
being
retained by Alcan Group Companies.
2.19 "NETCAST
TECHNOLOGY" shall mean the Technology originally developed by
Wagstaff Inc. and further developed by Alcan Group Companies,
primarily at the Solatens Facility, related to the direct chill
casting of complex shapes certain aspects of which are described
in
the patents and patent applications listed in Appendix NCT;
2.19A "NOVELIS
GROUP" means Novelis and the Novelis Subsidiaires.
2.20 "NOVELIS
SUBSIDIARY" shall mean, as of and from the Effective Date,
(i) Petrocoque S.A. - Industria E Comercio, Aluminium Norf GmbH
and
Logan Aluminum Inc, in each case for so long as Novelis retains
at
least its current ownership stake in such entity and (ii) any
other
entity of which a majority of the total voting power of capital
stock
or other interests entitled (without the occurrence of any
contingency) to vote in the election of directors, managers or
trustees thereof is at the time owned or controlled, directly
or
indirectly by Novelis;
2.21 "OURO
PRETO/ARATU/PETROCOQUE TECHNOLOGY" shall mean the Technology
employed in the operations of any one or more of the facilities
known
as Ouro Preto, Aratu and Petrocoque as of the Effective Date.
Ouro
Preto is a bauxite mine, alumina refinery and aluminum smelter,
Aratu
is an aluminum smelter with an associated electricity
generating
facility; and
Petrocoque is a facility that produces calcined
petroleum coke;
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2.21A "PECHINEY"
means Pechiney, a wholly-owned subsidiary of Alcan,
together with all entities that were subsidiaries of Pechiney
when
Pechiney became a subsidiary of Alcan, in December 2003.
2.22 "PAE TWIN
ROLL CASTING TECHNOLOGY" shall mean Technology specific to
the continuous casting of a relatively thin metal strip between
two
chilled rolls which is marketed by Pechiney Aluminium
Engineering
certain aspects of which are described in the patents and
patent
applications listed in Appendix TRCT;
2.23 "PAE METAL
TREATMENT TECHNOLOGY" shall mean Technology specific to the
melting, holding and casting of aluminum, treatments of molten
aluminum to remove hydrogen, solid and liquid inclusions and
alkali
metal and related equipment namely IRMA, JetCleaner, Alpur, PDBF,
CCF
and Autopak which is marketed by Pechiney Aluminium Engineering as
of
the Effective Date, certain aspects of which are described in
the
patents and patent applications listed in Appendix MTT;
2.24 "PLATE"
shall mean rolled and/or cast aluminum product with a
thickness of greater than 6.5mm that is not intended for
further
rolling to a thickness of 6.5mm or less (reroll);
2.25 "ROLLED
PRODUCTS" means rolled aluminum products in the form of Foil,
Sheet and rolled Plate of a thickness of less than 12 mm;
2.26 "SECONDARY
INTELLECTUAL PROPERTY AGREEMENT" shall mean that other
Intellectual Property Agreement of even date herewith between
Novelis
as party of the first part and Alcanint as party of the second
part;
2.27 "SEPARATION
AGREEMENT" shall mean the Separation Agreement herewith
between Alcan and Novelis, as described in the Preamble to this
Agreement;
2.28 "SHEET" and
"FOIL" shall have the same meaning as is commonly ascribed
to those expressions in the aluminum industry in reference to
rolled
aluminum provided that it is of a thickness of 6.5mm or less;
2.29 "SOLATENS
FACILITY" shall mean the facility in Spokane, Washington
known as Solatens;
2.30
"TECHNOLOGY" shall mean any and all patents, patent
applications,
copyrights, trade secrets, information, data, inventions,
designs,
manufacturing processes, know-how, technical information,
specifications, creative works and similar rights either conceived
or
first reduced to practice on or before the Effective Date that
are
owned, licensable or otherwise under the control and direction
of
5
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Alcanint or any other Alcan Group Company before the Effective
Date,
including Novelis Subsidiaries;
2.31
"TRANSFERRED TECHNOLOGY" shall mean the Technology described in
Section 3.1; and
2.32
"UNRESTRICTED LICENSED TECHNOLOGY" shall mean any and all,
copyrights,
trade secrets, information, data, inventions, designs and
similar
rights that have been used or developed, or are being used or
developed for use in connection with research, development,
production, marketing or sale of Rolled Products by Novelis or
any
Novelis Subsidiary on or immediately before the Effective Date or
in
connection with the use and exploitation of any of the
facilities
owned or operated by Novelis or a Novelis Subsidiary as of the
Effective Date that are freely licensable by Alcanint or any
Alcan
Group Company and related to the following:
- Recycling aluminum,
scalping, homogenization and preheating
technology, hot rolling, cold rolling, foil rolling,
coiling, cooling and lubrication, continuous and batch heat
treatment, quenching, mechanical finishing, slitting,
cutting to length, laser blanking and all associated
technologies (e.g. profile, gauge and shape measurement and
control and pollution reduction and control);
-
Mechanical finishing, surface texturing, chemical
pre-treatment, painting, lacquering and curing technologies
for Sheet and Foil;
-
Metallurgy related to the properties and microstructural
evolution through continuous casting, hot rolling, coiling,
cooling, cold rolling, foil rolling, heat-treatment,
quenching, mechanical finishing, and downstream finishing
and
fabrication processes for sheet, foil and sheet ingot
applied internally or by customers for Sheet and Foil (e.g.
forming, rolling, painting and lacquering, curing and
etching of Sheet and Foil);
-
Manufacture of rigid and semi-rigid aluminum foil containers
and closures;
- Metal
property and alloy composition specifications related
to Rolled Products;
-
In-service
sheet and foil product performance in terms of
mechanical property changes, corrosion (bare and surface
treated Sheet) in final applications;
6
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- All
process simulation models, scheduling and productivity
models and historic information to the extent recorded and
relevant to the Licensed Technology, Unrestricted Licensed
Technology or Transferred Technology;
- Enabling
Technologies and know-how related to processes and
application of aluminum Rolled Products materials used by
customers (e.g. AVT automotive body-in-white assembly
process, spot welding, adhesive bonding, riveting
technologies, etching and finishing, structural simulation
models pertinent to applications); and
-
Technology for the production of Foil to the extent it is
being used or has been used under existing or past practices
at the former Pechiney Annecy, Rugles, Dudelange and
Flemalle sites for the sole purpose of painting Sheet or
producing circles from Sheet or producing Foil.
-
Technology specific to making and using the inventions
claimed in the Designated Patents and the Automotive Sheet
Patents;
- All
other Technology, other than Excluded Technology, that
is in use or held for use as of the Effective Date in
connection with the research, development, production,
marketing or sale of Rolled Products at the facilities of
Novelis and the Novelis Subsidiaries as of the Effective
Date subject to Alcanint's right, upon reasonable request,
to be informed as to the identity, scope and use of such
other Technology;
2.33 In the
event of any ambiguity as to the inclusion of a particular
Technology within Excluded Technology, Licensed Technology,
Transferred Technology, or Unrestricted Licensed Technology,
such
Technology still be allocated in the following order of
preference:
(1) Transferred Technology; (2) Excluded Technology; (3)
Licensed
Technology; and (4) Unrestricted Licensed Technology.
3.0 TRANSFER OF TECHNOLOGY
3.1 Alcanint hereby grants, conveys,
transfers and assigns and agrees to
deliver (and agrees to cause any appropriate Alcan Group Company
to
grant, convey, transfer, assign and agree to deliver) to Novelis,
in
its capacity as principal for the sole purpose of acquiring
legal
title therein, and in its capacity as agent for the relevant
members
of Novelis Group for the purpose of acquiring all beneficial
ownership
therein and for all other purposes, all right, title and interest,
of
whatever nature or kind throughout the world of Alcanint or any
Alcan
Group Company in and to the following:
7
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3.1.1 the Designated Patents;
3.1.2 the Automotive Sheet Patents and related Technology which
is
only useful in the production of Automotive Sheet and which
originated: (i) without use of or reference to Technology owned
or developed by Pechiney, and (ii) within a business unit or
manufacturing facility that will be owned by Novelis Group as
of
the Effective Date;
3.1.3 Technology that is only useful in the production of beverage
can
body Sheet, beverage can end Sheet and tab stock (for beverage
cans) which originated: (i) without use of or reference to
Technology owned or developed by Pechiney, and (ii) within any
business unit or manufacturing facility that will form part of
Novelis as of the Effective Date;
3.1.4 NetCast Technology, CoCast Technology, FlexStreme Technology
and
Insitu Homogenisation Technology;
3.1.5 PAE Twin Roll Casting Technology and FlexCast Technology,
in
both cases subject to Schedule FT;
3.1.6 PAE Metal Treatment Technology;
3.1.7 the right to grant licenses and rights under and with respect
to
any of the foregoing and to sue for any infringement occurring
before or after the Effective Date as well as all statutory,
contractual and other claims, demands and causes of action for
royalties, fees or other income from, or infringement,
misappropriation or violation of, any of the foregoing, and all
of the proceeds from the foregoing that are accrued and unpaid
as
of, and/or accruing after, the Effective Date;
3.1.8 all causes of action and rights of recovery against third
parties for past infringement in and to the Transferred
Technology, and for past misappropriation by third parties of
trade secrets in and to the Transferred Technology; and
3.1.9 the right to apply for and obtain statutory rights and
registrations with respect to any of the foregoing Technology.
3.2 The foregoing transfer and
assignment shall be subject to the licenses
granted to Alcanint and other Alcan Group Companies pursuant to
the
Secondary Intellectual Property Agreement.
3.3 If and to the extent that, as a
matter of law in any jurisdiction,
ownership, title, or any rights of interest in or to any of the
Transferred Technology cannot be assigned as provided in Section
3.1,
(i) Alcanint agrees subject to the other
8
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terms and
conditions of this Agreement to assign and transfer, and
hereby assigns and transfers to Novelis (as agent for the
relevant
member of Novelis Group) all rights (including, without
limitation,
all economic and commercialization rights) that can be assigned
pursuant to Section 3.1 to the fullest extent permissible; and
(ii)
Alcanint agrees subject to the other terms and conditions of
this
Agreement to grant, and hereby grants, Novelis (as agent for
the
relevant member of Novelis Group) an unlimited, exclusive,
irrevocable, worldwide, perpetual, royalty-free license, to
use,
exploit and commercialize in any manner now known or in the
future
discovered and for whatever purpose, any rights to Transferred
Technology that cannot be assigned as contemplated by Section
3.1.
3.4 Alcanint further covenants that it
will, without demanding any further
consideration therefor, at the request and expense of Novelis
(except
for the value of the time of Alcanint employees), do (and cause
Alcan
Group Companies to do) all lawful and just acts that may be or
become
necessary for evidencing, maintaining, recording and perfecting
Novelis' rights to such Transferred Technology consistent with
Alcan's
general business practice as of the Effective Date, including but
not
limited to, execution and acknowledgement of (and causing Alcan
Group
Companies to execute and acknowledge) assignments and other
instruments in a form reasonably required by Novelis for each
relevant
jurisdiction.
3.5 Alcanint and each other Alcan
Group Company shall retain any
Technology not
transferred to Novelis by virtue of the foregoing.
Novelis warrants to Alcanint that neither it nor any Novelis
Subsidiary owns any Technology (other than the Transferred
Technology
and only to the extent conveyed hereunder) as of the Effective
Date
and further acknowledges that any other Technology that it or
any
Novelis Subsidiary may be deemed to have owned prior to the
Effective
Date was intended to be owned by Alcanint and shall be deemed to
have
been held by Novelis or such Novelis Subsidiary for the benefit
of
Alcanint. This provision shall not apply to that Technology
described
in the final paragraph of Section 2.18.
3.6 Each of Alcanint and Novelis shall
deliver to the other all documents
and instruments necessary or appropriate to be duly executed
where
appropriate by the applicable party(ies) and notarized where
indicated
in the exhibits to this Agreement.
3.7 Novelis acknowledges and agrees
that the foregoing assignment is
subject to any and all licenses or other rights that may have
been
granted by Alcanint or any other Alcan Group Company with respect
to
the Transferred Technology prior to the Effective Date.
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3.8 The determination regarding which
Novelis Group company (sometimes
referenced in this Agreement as the "relevant member of Novelis
Group") shall be entitled to beneficial ownership of
Transferred
Technology or to a license of Licensed Patents, Unrestricted
Licensed
Technology or Licensed Technology shall be made having regard to
the
following factors:
3.8.1 whether the relevant member of Novelis Group was a party to
any
JTA while such entity was an Alcan Group Company;
3.8.2 whether the relevant member of Novelis Group reasonably
requires
the relevant beneficial ownership or license in connection with
the ownership or operation of one or more of its businesses on
and after the Effective Date, based on the use of Technology in
connection with such business prior to the Effective Date; and
3.8.3 such other factors as may reasonably be taken into account
by
Novelis and as are consistent with the provisions of this
Agreement.
3.9 Novelis covenants that it will
enter into such agreements with the
relevant members of Novelis Group as may be necessary or desirable
for
the orderly management of the Technology mentioned in section
3.8.
4.0 LICENSE RIGHTS GRANTED
4.1.1 Alcanint hereby grants to Novelis and Novelis hereby accepts,
as
agent for the relevant members of Novelis Group and subject to
the terms and conditions of this Agreement a royalty free
license
to use and commercialize the Licensed Patents, Unrestricted
Licensed Technology and Licensed Technology to operate,
maintain,
repair, reconstruct, rebuild and expand any present or future
facilities of Novelis Group and to use and sell the products
produced using the Licensed Patents, Unrestricted Licensed
Technology and/or the Licensed Technology pursuant thereto
world
wide; provided that the royalty free license in respect of the
Ouro Preto/Aratu/Petrocoque Technology shall be limited such
that
it may be used only at the same geographic sites.
4.1.2 Pursuant to the license granted under Section 4.1.1,
Novelis
shall be permitted to sublicense any Unrestricted Licensed
Technology except to the extent the use of such Unrestricted
Licensed Technology is covered by patents held by Alcanint or
any
other Alcan Group Company.
4.1.3 Novelis may grant sublicenses under the Licensed Patents and
the
Licensed Technology (i) to third parties (such as customers and
vendors)
10
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to the extent necessary or appropriate to give commercial
effect
to the rights sought to be transferred, assigned or licensed
hereunder and (ii) to Novelis Subsidiaries provided that any
such
sublicense may be made effective retroactively but not prior to
the sublicensee's becoming a Novelis Subsidiary and any such
sublicense shall terminate immediately upon such sublicensee no
longer being a Novelis Subsidiary, except in a transaction that
meets the conditions of Section 17.2.
4.2 All licenses granted to Novelis
under this Agreement are personal,
indivisible, royalty-free, non-exclusive, and non-transferable
except
as otherwise specifically provided herein, and shall be subject to
all
terms and conditions herein set forth
