Patent Assignment Agreement and LicenseIP Intellectual Property License Assignment Agreement |
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Search IP Intellectual Property License Assignment Agreement by:
Exhibit
10.8
[Form
of]
Patent
Assignment Agreement and License
This
Patent Assignment Agreement (this “Agreement”),
effective as of _________ , 2005 (the “Effective
Date”)
is between The Dow Chemical Company, a Delaware corporation (“Dow”)
and Millennium Cell Inc., a Delaware corporation (“MCEL”).
Dow and MCEL also may be referred to herein individually as a “Party”
or collectively as the “Parties.”
Recitals
WHEREAS,
the Parties entered into that certain Stock Purchase Agreement, dated as of
February 27, 2005 (the “Stock
Purchase Agreement”),
pursuant to which, among other things, at the First Closing (as defined in the
Stock Purchase Agreement), the Parties are to enter into this
Agreement;
WHEREAS,
the First Closing (as defined in the Stock Purchase Agreement) has occurred and,
simultaneously therewith, the Parties are entering into this Agreement pursuant
of the Stock Purchase Agreement;
WHEREAS,
simultaneously with the entering into of this Agreement, Dow and MCEL have also
entered into that certain Joint Development Agreement, dated as of the date
hereof (the “Joint
Development Agreement”);
WHEREAS,
simultaneously with the entering into of this Agreement, Dow and MCEL have also
entered into the Cross-Licensing and Intellectual Property Agreement, dated as
of the date hereof (the “Cross-Licensing
Agreement”);
WHEREAS,
prior to entering into the Joint Development Agreement, Dow and MCEL have
jointly filed the Patent (as defined below) that is the subject of this Patent
Assignment Agreement;
WHEREAS,
Dow now desires to assign to MCEL Dow’s interest in said jointly filed Patent,
and MCEL desires to accept such assignment; and
WHEREAS,
MCEL desires to grant, and Dow desires to accept, a license under said Patent,
in each case on the terms and conditions set forth herein.
NOW,
THEREFORE, the Parties hereto, in consideration of the mutual agreements
contained herein, the receipt and sufficiency of which are hereby acknowledged,
do hereby agree as follows:
Article
I - Definitions
1.01 “Affiliate”
means,
with respect to any person or entity (a “Person”),
any Person which, directly or indirectly, controls, is controlled by, or is
under common control with such Person, including, without limitation, any
partner, officer, director, or member of such Person; provided,
however,
that Dow is not an Affiliate of MCEL.
1.02
“Application”
has the meaning given such term in the Cross-Licensing Agreement.
1.03
“Field
of Use”
has the meaning given such term in the Cross-Licensing Agreement.
1.04
“JDA
Intellectual Property”
has the meaning given such term in the Cross-Licensing Agreement.
1.05
“MFN
License”
has the meaning given such term in the Cross-Licensing Agreement.
1.06 “Non-Exclusive
Areas”
means, collectively, outside of the Field of Use (whether or not within the
Application) and outside of the Application (whether or not within the Field of
Use).
1.07 “Patent”
means US Provisional Patent Application Serial No. 60/562,132, filed jointly
between MCEL and Dow on April 14, 2004, and all other intellectual property
rights claiming priority from such provisional patent application.
1.08 “Use”
means the right to use, practice, make, have made, reproduce, modify, enhance,
upgrade, create derivative works, import, export, copy and sell, offer for sale,
license and/or sublicense.
Article
II - Assignment
In
conjunction with and simultaneously with the First Closing (as defined in the
Stock Purchase Agreement), Dow agrees to make the following
contributions:
2.01 Dow
hereby assigns to MCEL as a contribution the entire right, title and interest of
Dow and its Affiliates in and to the Patent, and MCEL agrees to accept the
assignment from Dow.
2.02 Dow
will provide MCEL duly executed assignments in recordable form for the Patent no
later than thirty (30) days from the Effective Date.
Article
III - License
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3.01 |
MCEL, on behalf of itself and its Affiliates, hereby grants to Dow a fully paid-up, world-wide, non-cancelable, sub-licensable, non-exclusive license under the Patent for any Use in the Non-Exclusive Areas. |
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3.02 |
“Most
Favored Nation” License of the Patent within Field of Use and within
Application
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