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
|
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. |
|
3.02
|
“Most Favored Nation” License of the Patent within
Field of Use and within Application
. Upon the written request of Dow, MCEL shall grant to Dow, and Dow
shall accept from MCEL, an MFN License subject to the procedure
contained in the Cross-Licensing Agreement with respect to JDA
Intellectual Property. |
|
3
.03 |
Dow’s Right of First Refusal in th |
