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EXECUTION COPY
EXHIBIT 10.9
INTELLECTUAL PROPERTY AGREEMENT
BETWEEN
NOVELIS INC.
AND
ALCAN INTERNATIONAL LIMITED
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TABLE OF CONTENTS
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1.0 PREAMBLE
..............................................................
1
2.0 DEFINITIONS
...........................................................
1
3.0 LICENSE RIGHTS GRANTED
................................................ 4
4.0 ROYALTY AND ROYALTY PAYMENT
........................................... 7
5.0 TECHNICAL ASSISTANCE
.................................................. 7
6.0 PROTECTION OF INFORMATION
............................................. 7
7.0 TERM AND TERMINATION
.................................................. 9
8.0 SURVIVAL OF OBLIGATIONS
............................................... 10
9.0 REPRESENTATIONS
.......................................................
10
10.0 DISCLAIMER
...........................................................
10
11.0 TRADEMARK, TRADE NAME AND LOGO
....................................... 11
12.0 NON-WAIVER
...........................................................
11
13.0 NO PARTNERSHIP, JOINT VENTURE
........................................ 11
14.0 FURTHER ASSURANCES, CONSENTS, ETC
.................................... 11
15.0 NOTICES
..............................................................
11
16.0 ASSIGNMENT
...........................................................
12
17.0 INDEMNIFICATION
...................................................... 12
18.0 ENTIRE AGREEMENT, AMENDMENTS, ETC
.................................... 14
19.0 DISPUTE RESOLUTION
................................................... 15
20.0 MISCELLANEOUS
........................................................
15
21.0 GOVERNING LAW
........................................................
15
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INTELLECTUAL PROPERTY AGREEMENT
This Intellectual Property Agreement is
entered into with effect as of the
Effective Date.
BETWEEN: 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
the
other members of Novelis Group, as herein provided.
AND: Alcan
International Limited, a Canadian corporation having its head
office at 1188 Sherbrooke Street West, Montreal, Quebec, Canada
(hereinafter referred to as "ALCANINT")
WHEREAS,
Alcanint is a wholly-owned subsidiary of Alcan Inc.; and
WHEREAS, Alcan
Inc. and Novelis have entered into the Separation Agreement
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 the holders
of the common
shares of Alcan and the execution and delivery of certain
other agreements
including this Agreement; and
WHEREAS Alcanint
has pursuant to the Principal Intellectual Property
Agreement (as
defined below) entered into, transferred and assigned
ownership of
certain Technology to Novelis and desires to retain certain
rights in
respect thereof;
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
As used herein, the following terms shall have the following
meanings:
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 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
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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" means 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 or at
the
time owned or controlled, directly or indirectly, by Alcan.
2.6 "AUTOMOTIVE SHEET" shall mean
aluminum Sheet products destined or
intended for use in or principally related to the production of
body
panels (including closures, skin, hoods, decks, lids 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 "EFFECTIVE DATE" shall mean the
Effective Date as defined in the
Separation Agreement;
2.10 "FLEXCAST
TECHNOLOGY" shall mean the Technology specific to continuous
casting of a thin strip between two chilled metallic belts and
as
generallydescribed in the patents and patent applications listed
in
Appendix FCT;
2.11 "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;
2.12 "INSITU
HOMOGENIZATION TECHNOLOGY" shall mean ***;
2.13 "LICENSED
NOVELIS PATENTS" shall mean the patents and patent
applications
listed on Appendix LNP;
2.14 "LICENSED
NOVELIS TECHNOLOGY" shall mean the technology licensed by
Novelis to Licensee pursuant to Section 3.1.hereof;
----------
*** 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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2.15 "LICENSEE"
shall mean Alcanint or any of its Affiliates as determined
by the context or as otherwise designated for any particular
purpose
by Alcanint, provided that an Alcan Group Company other than Alcan
or
Alcanint shall be a Licensee under this Agreement only if such
company
agrees to be bound by the terms of this Agreement and provided
further
that Alcanint shall remain liable for license related obligations
on a
joint and several basis for any of its Affiliates as determined by
the
context or as
otherwise designated for any particular purpose by
Alcanint.
2.16 "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 as more particularly described in the
patents and patent applications listed in Appendix NCT;
2.17 "NOVELIS
GROUP" shall mean Novelis and the Novelis subsidiaires.
2.18 "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;
2.19 "NOVELIS
TECHNOLOGY" shall mean any and all patents, patent
applications, copyrights, trade secrets, information, data,
inventions, designs and similar rights either conceived or
first
reduced to practice on or before the Effective Date that are owned
or
licensable by Novelis or under the control of Novelis pursuant to
the
Principal Intellectual Property Agreement and forming the
subject
matter hereof;
2.20 "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
as
more particularly described in the patents and patent
applications
listed in Appendix TRCT;
2.21 "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 including but not limited to IRMA,
JetCleaner, Alpur, PDBF, CCF and Autopak which is marketed by
Pechiney
Aluminium Engineering as more particularly described in the
patents
and patent applications listed in Appendix MTT.
2.22 "PRINCIPAL
INTELLECTUAL PROPERTY AGREEMENT" shall mean that other
Intellectual Property Agreement, of even date herewith, between
Alcanint as the party of the first part and Novelis as the party
of
the second part;
2.23 "SEPARATION
AGREEMENT" shall mean the Separation Agreement of even
date herewith between Alcan and Novelis, as described in the
Preamble
of this Agreement;
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2.24 "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 6.5 mm or less;
2.25 "SIERRE
TECHNOLOGY shall mean the patents and patent applications
listed on Appendix SP which are a subset of the Automotive
Sheet
Patents as well as the Technology used from time to time in
connection
with the operation of the business and manufacturing activities at
the
Sierre North Building;
2.26 "SIERRE
NORTH BUILDING LEASE" shall mean the lease for the premises
commonly referred to as the "SIERRE NORTH BUILDING" between an
Alcan
Group Company as lessor and Novelis or one of its Affiliates as
lessee
which lease is further referred to in, annexed to or defined in
the
Separation Agreement.
2.27
"SUBSIDIARY" shall mean, with respect to any corporation,
association
or other business entity, any other 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 such
corporation,
association or entity or one or more of its other Subsidiaries;
and
2.28 "TECHNICAL
ASSISTANCE" shall mean the services rendered by Novelis, or
a third party selected by Novelis, to the Licensee, to install,
test
and operate and maintain the Novelis Technology.
3.0 LICENSE RIGHTS GRANTED
3.1 Novelis hereby grants to Licensee
and Licensee hereby accepts, subject
to the terms and conditions of this Agreement, the following
rights
and licenses:
3.1.1 a royalty-bearing right and license to use the NetCast
Technology to build, operate, maintain, repair, reconstruct,
rebuild and expand present or future facilities of Licensee and
to use and sell the products produced using the NetCast
Technology on a world-wide basis,
3.1.2 a royalty-bearing right and license to use the CoCast
Technology
to build, operate, maintain, repair, reconstruct, rebuild and
expand present or future facilities of Licensee and to use and
sell the products using the CoCast Technology produced
world-wide; provided, however, that Licensee shall have no
right
under this license to make or sell products using the CoCast
Technology other than in respect of products destined for use
in
the Aerospace Industry;
3.1.3 a conditional royalty-bearing right and license to use
the
FlexStreme Technology to build, operate, maintain, repair,
reconstruct, rebuild and expand present or future facilities of
Licensee and to use and sell the products produced using the
FlexStreme Technology on a world-wide basis,
3.1.4 a royalty-free right and license to use the InSitu
Homogenization Technology to build, operate, maintain, repair,
reconstruct, rebuild and
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expand any present or future facilities of Licensee and to use
and sell the products produced using InSitu Homogenization
Technology on a world-wide basis,
3.1.5 a royalty-free right and license to use, commercialize
and
sublicense the PAE Metal Treatment Technology on a world-wide
basis, including without limitation to build, operate,
maintain,
repair, rebuild and expand any present or future facilities of
Licensee, to manufacture and sell products using the PAE Metal
Treatment Technology and to assign, sublicense or otherwise
convey to any person for any of the foregoing purposes,
3.1.6 a royalty-free right and license to use and commercialize
the
Licensed Novelis Patents to build, operate, maintain, repair,
reconstruct, rebuild and expand any present or future
facilities
of Licensee and to use and sell the products produced using the
Licensed Novelis Patents on a world-wide basis,
3.1.7 A royalty-free right and license to use and commercialize
the
Automotive Sheet Patents and related Technology, as referred to
in paragraph 3.1.2 of the Principal Intellectual Property
Agreement, to build, operate, maintain, repair, reconstruct,
rebuild and expand any present or future facilities of Licensee
and to use and sell the products produced using the Automotive
Sheet Patents and said related Technology on a world-wide basis
provided that Licensee's rights and Licenses in respect thereto
shall not extend to permitting the use and commercialization of
same for Automotive Sheet applications other than for products
destined or intended for use in public or mass transportation,
3.1.8 A conditional royalty-free right and license to use and
commercialize the Sierre Technology to build, operate,
maintain,
repair, reconstruct, rebuild and expand any present or future
facilities of Licensee and to use and sell the products
produced
using the Sierre Technology on a world-wide basis, and
3.1.9 Rights and/or licenses in the FlexCast Technology and the
PAE
Twin Roll Casting Technology under the terms and conditions in
Appendix CNC hereto.
3.2 To the extent that (i) Novelis
continues the commercial sale of
equipment for implementing the FlexStreme Technology and (ii)
Novelis
offers such equipment to Licensee for sale on terms and
conditions
(including royalties) at least as favourable to Licensee as the
best
of those offered to any third party during the preceding 12
months
(such conditions (i) and (ii) being referred to herein as a
"COMMERCIAL LICENSE"), then Licensee shall operate under the terms
of
such Commercial License rather than the licenses granted in
paragraph
3.1.3 herein until the occurrence of condition (i) or (ii) above.
At
any time thereafter, Licensee shall be entitled to operate under
the
license granted under paragraph 3.1.3, as the case may be, with
no
further action required by either Novelis or Licensee, provided
that
Licensee shall provide reasonably prompt notice to Novelis that
Licensee is operating under the license set forth in paragraph
3.1.3.
The licenses
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provided for in paragraphs 3.1.3 shall not apply to any
equipment
purchased
by Licensee prior to the date of such notice for
implementing FlexStreme Technology to the extent that equipment
has
been acquired with a valid Commercial License. Such previously
purchased equipment shall continue to be operated under the terms
and
conditions specified at the time such equipment was acquired by
Licensee.
3.3 The license granted in paragraph
3.1.8 shall be subject to the
condition that it shall only take effect upon the termination
or
expiry of the Sierre North Building Lease provided such termination
is
not as the result of a default on the part of Alcan.
3.4 Except as otherwise provided for
herein, all licenses granted to
Licensee under this Agreement shall be personal, indivisible,
non-exclusive, and non-transferable except as otherwise
provided
herein and shall be subject to all terms and conditions herein
set
forth. The licenses granted hereunder shall exist as long as
this
Agreement is effective in accordance with Article 7.0, provided
however that, the non-exclusive licenses granted hereunder are
subject
to termination in accordance with Article 7.0.
3.5 Except as otherwise specifically
provided in this Agreement, Licensee
is not granted and does not have the right to assign, sub-license
or
otherwise dispose of the Licensed Novelis Technology or any
part
thereof without the express written consent of Novelis.
3.6 Licensee may grant sublicenses (i)
to third parties (such as customers
and vendors) to the extent necessary or appropriate to give
commercial
effect to the rights sought to be licensed hereunder and (ii) to
Alcan
Group Companies provided that any such sublicense may be made
effective retroactively but not prior to the sublicensee's becoming
an
Alcan Group Company and any such sublicense shall terminate
immediately upon such sublicensee no longer being an Alcan
Group
Company, e
