Exhibit 10.34
CERTAIN MATERIAL (INDICATED BY AN
ASTERISK) HAS BEEN OMITTED FROM THIS DOCUMENT PURSUANT TO A REQUEST
FOR CONFIDENTIAL TREATMENT. THE OMITTED MATERIAL HAS BEEN FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
BIOLOGICAL MATERIALS SALES
AGREEMENT
THIS SALES AGREEMENT
(“ Agreement ”)
is entered into on September 18, 2008, by and between Shaw
Environmental, Inc., a Louisiana corporation (“ Shaw
”), and Basin Water, Inc. a Delaware corporation (“
Basin ”).
WHEREAS , Shaw cultures certain biological
material.
WHEREAS , Basin wishes to purchase from Shaw such
biological material on the terms and conditions set forth
herein.
NOW THEREFORE
, in consideration of the covenants
contained herein and for other good and valuable consideration, the
legal sufficiency of which is acknowledged, Shaw and Basin agree as
follows:
1. MATERIALS
. Basin hereby agrees to purchase
from Shaw, and Shaw agrees to sell to Basin, biological materials
listed in Schedule 1 and other biological materials as
agreed to by the parties hereafter (referred to collectively herein
as “ Materials ”) according to the terms and
conditions contained herein. The Materials covered by this
Agreement include all biological materials actually provided to
Basin plus any cells or molecules or other materials that are
grown, replicated or derived therefrom. The Materials, including
their names, are proprietary products of Shaw and are protected by
trademark laws.
2. OWNERSHIP RIGHTS.
By virtue of this Agreement, Basin
acquires only the right of use of the Material and does not acquire
any rights of ownership in the Material. Shaw shall at all times
retain all rights, title, and interest in the Materials. Basin
hereby assigns and agrees to assign all patentable and unpatentable
inventions in the following technology areas that are invented or
otherwise created during the Term of the Agreement to
Shaw.
Technology Areas for assignment to
Shaw
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(a)
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Microorganisms
contained in Shaw’s library of microorganisms at the time of
the execution of this agreement.
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(b)
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Microorganisms
derived in any way from Shaw’s library of microorganisms at
the time of the execution of this agreement.
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(c)
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Microorganisms
jointly developed by Shaw and Basin during the Term of the
Agreement.
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(d)
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Patents or
patentable inventions relating to uses of microorganisms in
situ and/or any treatment involving microorganisms below the
surface of the earth.
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Except as set forth herein, Basin
acknowledges and agrees that it does NOT acquire the right to
replicate, culture or manufacture the Materials, or any part of
Materials, nor the right to contract such manufacture or
reproduction of said Materials or parts thereof or there-from to a
third party. Information submitted to Basin by Shaw hereunder is
not intended nor shall such submission constitute inducement and/or
contribution to infringe any patent(s) owned by a third party, and
Shaw specifically disclaims any liability therefore. Materials may
be used by Basin for the designing, manufacturing, fabricating, and
installing Bioreactors for (a) the treatment of contaminated
groundwater in industrial, municipal or federal applications
whereby the treated groundwater is re-injected, discharged under a
National Pollution Discharge Elimination System permit, used for
“reuse water applications” or supplied to potable water
distributors; (b) for the treatment of wastewater in
industrial, municipal or federal applications; and (c) for the
treatment of air in industrial, municipal or federal applications
for odor control or contaminant removal. In this context, the term
“ Bioreactors ” shall be specifically defined
as:
CERTAIN MATERIAL (INDICATED BY AN ASTERISK) HAS
BEEN OMITTED FROM THIS DOCUMENT PURSUANT TO A REQUEST FOR
CONFIDENTIAL TREATMENT. THE OMITTED MATERIAL HAS BEEN FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
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1.
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fluidized bed
bioreactors (as such term is generally accepted in the water and
waste water treatment industry as of the Closing Date);
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2.
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membrane
bioreactors (as such term is generally accepted in the water and
waste water treatment industry as of the Closing Date);
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3.
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suspended
carrier reactors (as such term is generally accepted in the water
and waste water treatment industry as of the Closing Date), which
are also known generically as moving bed biofilm reactors or
integrated fixed-film activated sludge reactors;
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4.
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biofilters of a
configuration which utilizes microorganisms as fixed films attached
to lava rock, ceramic balls, wood chips, compost or other similar
material to target the removal of contaminants in air
streams;
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5.
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biotowers (also
known as biotrickling filters) of a configuration which utilizes
microorganisms as fixed films attached to polyurethane foam,
polypropylene or polyethylene foams, sponges or extruded shapes
(i.e., “ dumped ” media), or other similar
plastic structured or “dumped” media to target the
removal of contaminants in air streams.
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Such uses are referred to herein as
“ Limited Uses .” Except as set forth above,
Shaw does not transfer to Basin the right to use Materials for any
other purpose or project (research, commercial or otherwise).
However, Basin may resell the right to use any of the Materials to
third parties for the Limited Uses. Basin may use Materials outside
of Limited Uses only with Shaw’s prior written
approval.
3. PRICING.
Shaw agrees to offer Basin best
available wholesale pricing on Materials that will be less than or
equal to [**]% of Shaw’s then current retail price.
Schedule 1 reflects current pricing for listed Materials
which is subject to change upon notice to Basin. Upon request of
Basin, Shaw shall establish a retail price for any Material that
does not have an established retail price. Shaw reserves the right
to offer discount pricing equal to or less than the best available
wholesale pricing to clients for whom Shaw is contracted as a
consultant, engineer, or project manager. Shaw reserves the right
to offer best available pricing to other licensees. Shaw reserves
the right to fill orders taken prior to the execution of this
agreement without regard to the pricing restrictions of this
clause. Shaw agrees to notify Basin in writing of any changes in
its retail pricing and wholesale pricing.
4. CONFIDENTIALITY.
Shaw and Basin agree that any
information with respect to any party and its operations that the
other party receives in connection with the provision and receipt
of Materials pursuant to this Agreement is confidential and
proprietary to the originating party and shall be governed by the
confidentiality provisions of that certain Asset Purchase
Agreement, dated the even date herewith, by and amount Shaw, Basin,
Shaw Environmental and Infrastructure, Inc. and Envirogen,
Inc.
5. WARRANTY.
A. Material and Workmanship
Warranty .
(i) Basin accepts the Material with
the knowledge that it is biological material and is provided
without warranty other than the limited warranty stated
herein;
(ii) Shaw warrants that the Material
shall (1) be active upon delivery, (2) be free from
hazardous or toxic substances (except for the Material itself), and
(3) comply with all applicable written specifications (whether
such specifications are attached to this Agreement or are otherwise
provided by Shaw either prior to or contemporaneously with the
delivery of such Material (such specifications in each case,
the
Page 2 of 7
CERTAIN MATERIAL (INDICATED BY AN ASTERISK) HAS
BEEN OMITTED FROM THIS DOCUMENT PURSUANT TO A REQUEST FOR
CONFIDENTIAL TREATMENT. THE OMITTED MATERIAL HAS BEEN FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
“ Specifications ”)). If any
Material is not active upon delivery, fails to be free from
hazardous or toxic substances (except for the Material itself) or
does not comply with t
