Document bo2RN6G032Qnxq58LzBaekno

m U M 6882 ...... la- `i--y -- INTERNATIONAL LEAD ZINC RESEARCH ORGANIZATION MUM # toAStSS SEE *UA*0i AVStoW*. ** TM ft. to V June 8$, 1565 cmmuBTiAL ten wegjBap To. All of tba Induetry Prolog--nt Oo--lttea, UA/TtZK) Subject :LC It): Plceloeura --a Hero-- Agraeaent with Union Carbide Oorp. for Ox--rclAlltatloc of OrgiViTrart Cberiirale Ueaful -- a Catalyat to Produce Polyurethane Po-- Attached la a copy of as agrai-- nt for dlacloaura and Ho-- tolcb baa tus negotiated with the Q-.ica.la Division, Union CartIda CcrporeLloc for s o b--rclall* aatloo of organoleed ch--leal* uarful aa a catalyat to producr polyurethane for--. Wa reco--ead your approval of this agree--nt with Uni00 Carbide Oorp. -* It baa writ rod la to th* brat advantage for all of our sponsor*, aa explained la drtall brlow. A ballot la attached for your vote vltb apace provided for ycwr cc--irta. Vb would appreciate return at tbla ballot by July 16. Slagle Catalyat ftrst-- Tbe preaect catalyat aywt-- uard to producr urethane for-- la a c--hi nation of tvo eboolaala; nearly, aa aalna (PABCO) aa aa crganotln chealcel. Iba lnvesctloa by oar contractor, tba TSO laboratory on projccv IX-lB, Involv-- a single catalyat of a or* or^aolaad compound to both foar and ^al tba urethane raw --trrlala. Oorpanlaa Approached ELfbt (6) coapanlee, vbo supply rev katrrlala to tba uratbanr fou producers, ware contacted vltb regard to tbrlr Interest is cur Invention. There >%a coor lderabla interest and cooarnrua vaa that thr cc--erclalliatloo of tbla product vlll re quire a aubrtantial eaount of develop--Dt effort botb froa tba technical standpoint and, aora l^iortact, In tba --rbeting pbaeei. Cooaldrrabla nrrket develop--nt vlll bava to be carried out In order to ccorlnoa urethane preducera to chance froa tbrlr preaant catalyat ayatr--. Therefore, an exclusive llcroaa would be required for tba company arlactrd to justify tbrlr expenditure of a large ana of aooey to prove and develop tbla new urethane foaa catalyat ayat--. ABBOClATID WITH AMtAlCAN X'MC INiTlTUTI. INC / LIAO INOUITNill MIOCATiON. HVC iiviiiaa>awge-- H*a.'iiiu'iiyi>i'''i>win". " a 1 v-- 1 --was--je----vs 1 unnyir mmm i ypp ii.iu|in)in,. LI A16P83 -B- O Selection of Onion Carbide Corporation Uhlon Carbide Corp. wi selected because they art a basic WBUfactumr of raw sterlal chemicals and catalysts for tha urathana industry. They art actively seeking a new catalyst #yste.j that can be along with the tvo eejor raw materials; namely, polyols aid isocyanates. In addition. CartIda aiao supplies silicone foes eurfactents, blowing agaots, chain stoppers and solvents. Cart Ida baa a substantial martating and technical talaa service organisation throughout tha world. They hart extensive urethans foam laboratorltt la Charleston, Utat Virginia. \ They art anxious to evaluate our orgaaolaau rhf leal eetalyete and hart elreedy at aalda rtttarch funda for expenditure la l^cy. ZUAO therefore rtco--trfli tbat wt proceed with Union CurbIda to eawercinliae our invention. Bsgotlatione Begotlatloca hart now proceeded with Uhlan Carbide to the point where LXA/XUV and Carbide bare agreed to tha tarat at tha attached dleeloeurt agiaawant end eaclualve llcanaicg arrsryja--Lit. Both HUD'S general counaal and patent eouneel bate bean lnrolred in tha negotiations reeultii* la thle a gifant and lleenee -- rerialao date 6/21/65. Tvrms at Ajerawnt/license (Bar. 6/21/6?) The critical terse of thla agiaaaaiit are e aeai-lted aa follow: 1- A la-months evaluation period (option period) la provided with full axrhanga of technical data and tha patent application# -- Article ID and A. 1 2. Onion Carbide will perpare report* for 11A/UUO on their evaluation teeta -- Article 6. S> All teeta and reeearch will be conducted under secrecy measures I described In Article ZJ. A. If the res.lL* of Chion Carbide' a evaluation are favorable, they will osrclee tha op.ion end obtain e royalty-free llcenaa under our peteute and patent applications In tha licensed Territory Included In the agree wot. Article 13 explains the par.od of license to be fire year* after lewisnce of U.C. Pa tect plus an a..tnsloo for an additional five year*. Union Carbide will here exclusive cuealcal aanufacturlng rights In tha llceneed Territory excluding tiie Benelux Countrlee and tha United Klagdon. E.tension of tbs license viil the a he ulecusaed. Alter the expiration o. the axel, sive period, the lleenee granted to Carbide shell he wholly nonexclusive. 5- Carbide shall pay LXA |1,000 after exareIsa of option - Article 1JD. 6. Articles 22, 23 and 2A relate to Carbide' performance and are our checx on their activity and effort to co^tarcialixe thla invention. UA/llUO can terminate their .ieense prior to the eon of liftO If we are not satlefled with Carbide'a aaount of incurred expenses < u we m dMMtwee mm "5WPWPWHPP m LI AL 6 B 8 4 1 In oocnoetioo vlth ocmnrelnlliatloa of our or^nnlonA ocnpouo&s. then, after lyifO, poor perfor-naca can load to our eaDrortlng tbolr exclusive license to noaoaclunive license. 7- Article SO explains that li^rovenents by Units Carbide minting to the proooM to produoo polyurethane foea (ball bo dlncloood to lit/ il zj o . 8. Article 21 -- production rtntlstlce on tbooo o^pnolead oetalyrts to bo dlncloood to iiymjc. Iter. c--mdatlOO Vo mcooBood your acceptance of thin agrseueot/Uoeoae. Vo fool that coUnbo rntioc vlth Union Carbide is In tbo boot latorortt of ZUBO'o verld-wldo epoMore. Please mtum tho nttnebod ballot by July Id. SnttJGfc Jo attach. Schrade f. fUd' J. J'J i.'. . a. - 'MfH inmwinjpw>i| mm tmmumm mmmmmmmmmmammmmimmtfmmammm**'"'1 LIA16860 ........... " ww 5/22/65; 6/B/65; 6/21/65 4 AOKiEAKT Mdi this day of , 1965 between IXAD DOCSTHUS A5S0CIATICH DIC. (hereinafter called *LIA*), a corporation, having an office at Wo. 292 NadIcon Avenue, We* York, New York, and OTIC* CAPSID* CORPORATION (hereinafter called "Eta loo Carbide*), a Ih Tortc corporation, haring an offloe at Wo. 270 Park Avenue, Wew Tortc, New Tortc, t 4 ! 111*11112* WHEREAS, LZA represents that It haa the right to sake agreements hereinafter made bp It and to grant the option, rlghta and licenses hereinafter granted bp It; and f WHEREAS, Onion Carbide wishes to obtain the option hereinafter described, and LIA Is willing to grant such option, upon the terns and conditions hereinafter set forth; L WOW, TKEREPORS, In consideration of the nutual agree* ments hereinafter set forth the parties hereto do hereby agree as followsi Part I - Definitions f 1. As used herein the following terms shall have the following meanings: A. "Agreement yield" shell mean any and all of the following) compounds and compositions useful In the production of polyurethane, processes and apparatus useful In the production of such compounds and/or compositions. i ^ 3348.01 LIA16861 prooessea and apparatus useful 1b producing polyurethane with the uss of such cowpounda and/or compositions, and tbs polyurethane produced with tbs us# of such compounds sad/or compositions. B. *ill's Patent Rights" shall mean say sad til of tbs following: (l) pstsnt applications dsscrlbod la fart X of Scboduls A, tbs patsnts Issuing on said pstsnt applications and tbs Inventions covered by said patsnts and patent applications, (ll) ill's rights with respefft to tbs patent applications described In fart XX of Schedule A, the patents Issuing thereon and tbs Inventions covered by said patent applications aad patents, (111) inventions within tbs Agreeeent field owned or controlled by iXA on the date of this Agreeeent or wade, discovered or acquired by iXA at any ties during the two (2)-year period thereafter, (lv) patent applications heretofore or hereafter filed through out the world by or on behalf of iXA on any Inventions covered by this paragraph B and the patents Issuing thereon, (v) iXA's rights obtained at any time during the aforesaid two (2)-year period with respect to Inventions, patent applications and patents In the Agreement field. C. "iXA's Technology" shall wean any and all technical Information and know-how relating to the Agreewent field possessed by iXA on the date of this Agreewent or at any tine during the two (2)-year period thereafter. Including but not Halted to descriptions of all cocpounds and ooapocltlons 2- own*3 by LIA to the Agrees*nt field, data oo the eoopoaltloo and behavior of such coapounds and compositions, research reporta, technical reports and laboratory data relating to the Agreement field and procedures followed in the laboratory and In the pilot plant for the synthesis and prodaetioo of such ooapounda, eoapoaitions and polyurethane foaai derived froa the use of such compound* and ooapoaltiees. D. 'Option Period* shall eean the period c o batenclng oo the date hereof and tereinatlng six (6) eontha thereafter unless sooner terminated by exercise of the Option or upon expiration of the Option in accordance with Article 10 hereof. X. 'Licensed Territory" shall awan tht countrlaa apecifled in the notice given In accordance with Article 3 hereof. P. 'Subeidler/' of Onion Carbide shall wean any corporation $0% or bo re of the voting stock of which la owned or controlled by Onion Carbide. Part II - Option 2. LIA hereby grants an exclusive option to tkiloo Carbide to obtain the license described in Part III hereof (said option being herein referred to ae the "Option"). 3. The Option nay be exercised by Onion Carbide et any tine during the Option Period by written notice to LIA specifying the countries selected by Onion Carbide to be 3 laolvded In th Lleiniid Territory and the aaount of Investment determined In acoordanoe with Article 10 hereof. A. LXA ahall proeptly disclose to Onion Carbide, la writing, all inrention Included In LXA'a Patent Rights on the date of this Agreement and/or at any tine during the Option Period, and all of LXA'a Technology (ineluding deaeriptiona of ooapounda and compositions in the Agreement Field) poaaeaeed by LXA oa the date of thia Agreement and/or at any tine during the Option Period. 5. LXA ahall promptly furnish to Onion Carbide a copy of each patent application and patent within LXA'a Patent Rights filed or leaved in the patent offloe of the United State* of America cr the Ketherlaade prior to or during the Option Period. LXA ahall promptly furnish to Onion Carbide the aerial nuwber and title of each other patent and patent application within LXA'a Patent Right* filed or leaved prior to or during the Option Period. 6. Within one (1) aonth after receipt of the dleclowure under Article 4 hereof of the description of eoapounde and ooopoaltlona possessed by LXA on the date of thia Agreement, Onion Carbide ahall aeleot and requeat from LXA aaaple* of one or wore such coepounds and c o bpositions. LXA ahall uee lta beat efforts to furnish to Onion Carbide, within thirty (30) day* after Onion Carbide's requeat, at LXA'a expense. L I A16864 sueh requested costpound* and cooposition* in quantities requested by Union Carbide up to 100 grass per compound or composition LIA shall use Its bast effort* to furnish such additional quantities of such compounds and composition* BJ may be requested by Union Carbide* at mutually agreed upon prices to be paid by Union Carbide. 7. Ublon Carbide shall evaluate samples* Information* know-how and inventions disclosed to It hereunder* to the extent It deens necessary. 8. Onion Carbide shall furnish to LIA protress report* on said evaluation every thirty (30) days during the Option Period* and at the end of the Option Period* Union Carbide shall notify LIA In writing of Its reasoos for exercising or falling to exercise the Option and shall provide LIA with a final report describing the work done In such evaluation and the results of such evalustlon. 9. During the Option Period, LIA shall not negotiate or enter Into any agreement with a third party relating In any way to any or all of LIA's Patent Rights and/or LIA's Technology except sgreesent* providing for the granting of rights and/or licenses which are not Inconsistent with the rights and licenses to be granted to Union Carbide In Part III hereof. -5* LIA16865 f l i o |i ( ruch requested compounds and compositions In quantities requested by Onion Carbide up to \00 (ran* par compound or composition. L1A shall ue lta beet effort* to furnish euoh additional quantities of such ooopounda and compositions as may be requested by talon Carbide, at mutually screed upon prices to be paid by Onion Carbide. I 7. Onion Carbide shall eraluata aaaplee. Information, know-how and Inventions disclosed to It hereunder, to the extent It deems necessary. 8. Onion Carbide shall furnish to LXA progress reports on said evaluation evsry thirty (30) days during the Option O Period, end at the and of the Option Period, talon Carbide shall notify LXA in writing of Its reasons for exercising or falling to oxarclse the Option and shall provide LXA with final report describing the work don* in such evaluation and the results of such evaluation. 9. During the Option Period, LXA shall not negotiate or enter Into any agreement with a third party relating In any way to any or all of LXA's Patent Rights and/or LXA's Technology except agreements providing for the granting of rights and/or licenses which are not Inconsistent with the rights and licenses to be granted to talon Carbide In Pert XIX hereof. e I pWfiMWMPimwiJUi IMPmu.llllK--llllUWlHj . * LlAl6P66 i 10. Cpoo the request of Union Cert 14e et any time prior I ) to the exerclee of the Option, L1A shell negotiate In good 1 f faith Kith Onion Carbide to determine the amount of Invest I i ment applicable to Article 22 hereof. LI* shell not, however, I i be obligated to do anything Bore than negotiate In good faith, and If LI* and Onion Carbide cannot agree on the amount of lnvestent applicable to Article 22 hereof then, notwithstand ing any other provision of this Agreement, the Option shall not be exercised by Onion Carbide and shall forthwith expire - upon tenslnatlon of such negotiations or upon expiration of the Option Period, whichever Is sooner. 11. In the event the Option Is exorcised In the time and the manner above provided, the provisions of Part i III shall thereupon become effective. 12. In the event the Optloo Is not exercised in the time and In the manner above provided, this Agreement i shall terminate upon expiration of the Option Period. Part III - License The provisions of this Part III shall beoome effective If end when the Option Is exercised. 13. A. L1A hereby grants to Onion Carbide, and Onion Carbide hereby accepte a royalty-free license, with the right to grant sublicenses, under the patente and patent applications of the Licensed Territory to the extent Included in LXA's 6 Tegaa.*'1-1 mm? TIBW.W Patent Rights, to practice the inventions oovered thereby and to use and sell the results thereof, for the tare of this Agreement after the exercise of the Option; provided, however, that such license shall not Include the right to manufacture and/or use, in the Benelux countries or the United Kingdom, any ooepounds, compositions or products. Subject to the terms of this Agreement, the aforesaid llomnea with the right to grant eubllcenaas shall be exclusive in all respects for the period hereinafter set forth except that the right to sell compounds, compositions and products shall be nonexclusive in the countries of Surope end the United Kingdom. The exclusive period grented hereunder shall commence on the date of exercise of the Option and shall continue until -the expiration of five (5) years after the issuance of the first U.3. petent Included in LIA's Patent Rights, and nay be extended for an additional five (5) years If Union Carbide shall so notify L1A In writing prior to the expiration of said original five (5)-Pw period. If at any time prior to the expiration of the second five (5)year period. Onion Carbide shall ao request, LIA shall discuss with Union Carbide the possibility of extending the exclusive period for e mutually agreed upon time. After the expiration of the exclusive period the license grented to Union Carbide hereunder shall be mholly nonexclusive. ' 8. Union Carbide shall not refuse to grant a eubllcsnee under any patent included In LXA't Petent Rights 7 I.IWWIHWWWP fUHjP'WHW.I|i.ill IW LIA1686B BglE' i i ; o Uc u h of a third party' refusal to use, In oonnaetlon with it* aetlTltlaa under auch sublloenee, compounds, cooposltlona or products sold by Onion Carbide, and sublicensee offered by Onion Carbide under any such patent ahall be Bade available to third parties without any discrimination based upon the source of the eoapounds, compositions or products used la oonnaetlon with such eublloense. C. As used la paragraph A above, 'Benelux countries* shall Bean Belglua, Netherlands, and Luxesbourg and all oountrles subject to the jurisdiction of their respective patent laws and the "Onlted Kingdom" shall mean the Qnlted Kingdom of Oreat Britain and Northern Ireland. 0. Promptly after exercise of the Option, Onion Carbide shall pay to IXA Coe Thousand Dollars ($1,000). lA. 1X1 shall promptly disclose to Union Carbide in 4 writing all of Ill's Technology and all Inventions in 1X1's Patent Rights obtained by IXA after the exercise of the Option. 15. ZXA shall furnish to Union Carbide copies of all patent applications within IXA' Patent Rights filed in government patent offloes In the Licensed Territory during the term of this Agreement after the exercise of the Option and ahall keep Union Carbide Informed of all patent offloe actions taken after the exercise of the Option with respect 9 to all patents and patent applications of tha Licensed 8 * w$ae* weens rrm1 - Nil-. - LI A1 6869 ^JL.. Territory within LXA'a Patent Rights. 16. Onion Carbide shall have tha right, tout not the obligation, to eue infringer* of LXA'e Patent Rights in tba Licensed Territory, at Onion Carbide'a expanse. LXA shall give to Onion Carbide all reasonable assistance requested, and Onion Carbide shall reinbursa LXA for its out-of-pocket expenses incurred in giving such assistance. Prior to taking any action against an infringer of UAto Patent Rights, Onion Carbide shall flrat dlseusa such proposed action with LXA, but Onion Carbide shall have the sole right to determine the action, if any, which it takes against such infringer. LXA shall in no event be obligated to eue infringers of LXA'e Patent Rights. 17 LXA hereby grants to Onion Carbide, during the tarn of this Agreenent, the right to use, in the Licensed Territory, LXA1s Technology and all unpatented inventions included in LXA'e Patent Rights. 18. Onion Carbide shall have the right to disclose to third parties who are in any way connected with the eonerclallzatlon of the inventions Included in LXA'e Patent Rights (including but not Halted to sublicensees under LXA's Patent Rights and purchasers of compounds, compositions and products sold under licenses granted hereunder) any and all of LXA's Technology and Inventions included lr LXA's Patent Rights which are required to be kept confidential toy 9- 'BP mv IJWJWII' H.pgJWUM 1-1 wfuf'i IU#1JI (**11 ^WjjMWS LIA16P70 Onion Carbide under the terse of thle Agreement} provided that such third pertlee sign e eecrecj agreement obligating thea at leaet to the ease extent at Onion Carbide it obligated under Article 27A of this Agreement. 19- A. until and to the extent Onion Carbide ahall notify LIA to the contrary* Onion Carbide ahall have the obligation to maintain at ita own expense, all patenta included in LlA's Patent Rights of such countries of the Licensed Territory in which at the time in question it has the complete exclusive license rights under said patents and all patenta included in LIA's Patent Rights of the countries of Europe (except the United Kingdom and the 9 Benelux countries) in which at the time In question it has the exclusive manufacturing license rights under said patents. With respect to each patent specified in any such notice to the contrary, OhIon Carbide shall be relieved of its obligation to so maintain, but any exclusive rights granted to Onion Carbide under such patent ahall thereupon be converted to nonexclusive. LIA shall have no obligation to maintain any patents included in LIA's Patent Rights except as provided In paragraph B] provided, however, that the obligations in paragraph B shall not apply to any patent specified in Onion Carbide's notloe under this paragraph A. -10- 'reeepi WiJI* LIA16P71 B. LIA shall notify Onion Carbide In writing before taking any action to abandon any patant application or patant within LIA'a Patant Bight* In tha Licensed Territory, and If requested by Onion Carbide LIA aball eontlnua auoh prosecution and maintenance, provided that Onion Carbide relabureee LIA for ita expenses In eonnaetlon tharawlth. At Ohlon Carbide'a request and expense, LIA ahall prapara, flla and proaeeutc patant applications, In auoh oountrlaa or tha Llcanaad Tarrltory daalgnatad In auch request, on auch InrantIona included in LIA'a Patent Bights as way be daalgnatad In such request. 20. A. If at any tie# during tha tarw of this Agreement Onion Carbide makee or dlscorera any Improve ant to any InrantIon Included In LIA'a Patant Bights, relating to a prooeaa for producing polyurethane foaa par sa or relating to a forwulatlon for producing auch a foaa. Ohlor Carbide ahall promptly notify LIA thereof; presided, however, that Onion Carbide ahall not be obligated to disclose to LIA any other laprorewents to inventions Included In LIA's Patent Rights (specifically excluding without limitation Improvements relating to catalyst compositions snd processes for asking ssae). B. Onion Carbide hereby grants to LIA the right to disclose all Improvements disclosed to LIA under paragreph A, to all lloensees of LIA under any of LIA's -11- JWU rwm i i i i i !  pi jump. >' 'o t h w w w pm W"MS.J pWWB'lijUAOUl LIA16872 fatsnt Right* who snter into agreements with LIA providing for the granting of the sane rights for the benefit of Onion Carbide with rsepsct to thir loprovements as Union Carbide provides for their benefit under thla Art!ole 20} provided that such licensees sign secrecy agreements obligating thaw to the same extent as LIA is obligated with respect to such Improvements under Article 2TB hereof. C. Onion Carbide hereby grants to LIA the right to grant to the aforesaid licensees receiving said disclosures of improvements under paragraph A, the right to use said unpatented improvements in the countries of their licenses under any of LXA's Patent Rights and a nonexclusive license under any and all patents issuing on said iaproveaenta to sales, use and sell said isprovesents la the said countries. 21. Within ninety (90) days after the expiration of each calendar year during the ters of this Agreesent. Onion Carbide will render to LXA a written report eettlng forth the quantity of lead contused during such calendar year In the operations of Onion Carbide, lte Subsidiaries and eubllcentee* relating to LXA's Technology and/or LXA'a Patent Rights. The contents of such reports way be used by LIA in the preparation of industrywide statistics. LIA shall not mention or dleclote the name of Onion Carbide or any of its Subsidiaries or sublicensees in connection with any statistics prepared frow such reports. 12 wmmmm Bpjnwwi.il j u n i. iwaWMWBIMWiWiWWW*"^ ^Alb873 iO 92. If for the calendar year 1966 or for ny calendar year thereafter during the ten* of this Agreement, On loo Carbide and lta Subsidiaries and sublicensees shall fall to Incur expense* in connection with LIA'a Technology, LIA'e Ratent Rights and/or compounds, compositions or products resulting therefrow (Including but not Halted to expenses with respect to research, development, 1 production, sales, marketing, advertising and adalnlstratlon) I totaling an amount equal to the aaount of Investment determined In accordance with Article 10 hereof, LXA shall have the right to terminate this Agreement If such failure occurs prior to the end of 1970 or If such failure occurs after the end of 1970 to convert the license granted to Onion Carbide hereunder to a wholly nonexclusive license, by written notice to Onion Carbide within sixty (60) days after Onion Carbide's giving i4 of the report for such year described In Article 23. The computation of the aforesaid amounts shall be determined In 4 accordance with Onion Carbide's standard accounting practice. LIA shall have the right to have an audit of Onion Carbide's records with respect to the aforesaid expenses, made by an Independent certified public accountant to determine the accuracy of the reports furnished under Article 23) provided, however, that the audit with respect to the records relating to any report be mede within two (2) years after the making of such report. 13 iwmn ij.ii j i j iiiiij ip w w n wnwwaaaawieanaaapewanipiewainwatawa!^,paiweiH^augireiR........ LIA1687A "*w* ; 23. Within alxty (60) daya after tha and of each calendar year during the tarn hereof, Onion Carbide ahall furnlah to LIA a written report deecriblng tha work done by Obion Carbide with raapaet to LXA'a Technology, LIA'a 1 Patent Rights and coopounda, ooopoaitlooa and products | resulting therefrom and generally netting forth tba i coapotatlon of tha aaount of lnvestatent daacribad la Article 22. Such report ahall alao include a general atatenant of tba marketing effort with raapaet to ooapounds, ooopoaitlooa and prodocta raeultlng frow LIA*a Technology and/or LIA'a Patent Rights aada by Delon Carbide, lta Subaldlarlea and sublicensees In each country of tha Lloeneed Territory. 2*. Zf In any calendar year after 1967, neither Dnloc Carbide nor any of lta Subaldlarlea or eubllcanaeaa ahall make any cowerclal marketing afforta In one or aore eountrlaa of tha Licenced Territory, with raapaet to any < eoopound, eoopoaltlon or product raeultlng froo LXA'a Technology and/or LXA'a Patent Rlghta, LXA ahall have the right to delete euch country or countries froa the Licenced Territory by written notice to Union Carbide within alxty (60) daya after Union Carbide'a giving of tha report for euch year under Article 23. "Coaaerolal marketing effort* i ahall aean a aarfcetlng effort other than for experlaental or teatlng purpoaea. -1*- wi.jLiiiiinmiiii i " ! mum LI A16B75 ! 25. LXA ni)(ii no representation or warranties, either &* to title or as to validity, with respeot to LIA's Patent Righta or LXA1a Technology, and will not defend or Indemnify Onion Carbide or lta Subsidiaries or sublicensees againat or becauae of any claims, demanda, actlona, etc., whether for Infringement or otherwise. fart XV - general Thla fart ahall apply to all other fart* of thla Agreement. 26. Anything In thla Agreement to the oontrary notwithatandlng, neither party to thla Agreement ahall be obligated to make any disclosure of any Information, know* how, lnventlona or lmprOTements In which a third party ahall have any Intereat or rlghta nor ahall either party to thla 1 Agreement be obligated to grant any right or lloenee to nee such Information, know-how. Invention* or improvement* or to operate under any patent or patent application* thereon If much party 1* prohibited by law or by agreement with 4 aueh third party free macing such dlaeloaure or from grant ing euch right or licence or if *uch party to thla Agreement would be obligated to pay ruch third party any compensation or other consideration by reason of making such disclosure or by reason of such other party's use of any such information, know-how, inventions or Improvements or by reason of granting such rights or license, unless such other party shall first i agree to reimburse such party therefor, *15* - ppp .--W.WW III m LIA16676 87. A. For a period of four (A) years aftsr disclosure to It hereunder and for such additional period as Union Carbide shall hav a eoeplets or partial exclusive license under this Agreement, Union Carbide shall refrain from using exoept In accordance with the terns or this Agree ment and shall use reasonable efforts to keep confidential within its corporation except to the extent permitted by the terms of this Agreement, any and all information, know-how. Inventions, lwproveeents, cowpounds and compositions disclosed to it by LXA in writing or in the form of samplesi exoept *>en, after and to the extent such information, know-how, inventions, improvements, oompounds and compositions ware known to Union Carbide prior to receipt of same from LXA or are generally available to the public or are subsequently received by Union Carbide in good faith from a third party other than from TNO or from any licensee or sublicensee under any of LXA'a Patent Rights or under any patent application or patent described in item (11) of LXA1s Patent Rights after LXA gives written notice to Union Carbide of the name of such licensee or sublicensee. Union Carbide shall have the right to dlaolose any and all information, know-how, inventions, compounds and aagiastilarm required to be kept confidential under this paragraph A, to WO and any and all licensees and sublicensee! under any of LXA'e Patent Rights or under any patent application or patent described in item (11) of LXA's Patent Right*. As used in this Agreement the term "TNO" shall mean Central Organisation for Applied Scientific Research in the Netherlands, WO, The Hague, Netherlands, and Xnatltuta of Organic Chemistry WO, Utrecht, The Netherlands. -16- LI A16877 8. DvrIn* the Option Period and for such additional period u Union Carbide Hall have a oowplate or partial axcluaiv* llcenee under this Agreewent, LIA shall refrain froe ueing and shall uae reaaonable efforte to keep confidential within lta corporation except to the extent permitted by the ten* of thla Agreewent, enjr and all Information, know-how, InyentIon* and lwprovewents dlacloaed by Onion Carbide to LIA In oOBoectloa with this Agreewent and any and all Information, know-how. Invention*, lwprovewent*, eowpouod* and composition* retired to be dlacloaed by LIA to Onion Carbide hereunder) exoept when, after and to the extent eueh Information, know-how. Inven tion*, lwprovewent*, ooepound* and eowpoaltlon* which were *o disclosed by Onion Carbide to LIA, were known to LIA prior to receipt of aawe frow Onion Carbide, or When, after and to the extent each Information, know-how. Invention*, lwprovewents, eoetpound* and eowpoaltlon* are generally avail able to the public or are subsequently received by LIA la good faith frow a third party. LIA ahall have the right to dlecloae, any and all such Information, knot how. Invention*, lwproveaenta, ooepounda end eowpoaltlon*, to lloensee* and sublicensees under any of LZA's Patent Rights who are granted right* end license* which are not Inconsistent with any of the rights and license* granted under this Agreewent) provided that such lleanaeea and tubllcenseaa sign secrecy agreewent* obligating thew at least to th* saw* axtent aa Onion Carbide is obligated. -17- LIA16878 C. Anything Id this Artiela 27 to the contrary notwithstanding, disclosure* re*ultln,j froa exawlnatlon or analysis of compounds, eonposltlons, products or equipment old or transferred In accordance with right* or lleanees granted under thla Agreement aha11 not be deemed a violatloo of any obligationa under thla Artlele. 26. Any aselgnment by althar party of thla Agreement or of any of the rlghte or llcanaaa grantad harauadar shall ba aoldj axcapt that LIA way aeelgn thla Agreement and any and all rights and obligations of LIA thereunder, to International Load tine Research Organisation whan asa# la Incorpo ratad , provided that said International Lead Zinc Research Organisation la the auecaaaor to all of LIA'a Technology, LIA1a patent Rights and LIA'a research and development activities. 29. This Agreement shall be construed and Its performance enforced in accordance with the laws of the state of Maw York, 0.3.A. 30. If either party shall fall to perform or fulfill any obligation or condition herein required to be performed or fulfilled by such party. In the wanner and at the time herein required, and If such default shall continue for sixty (60) days after written notice thereof frow the nondefaulting party, then the nendefeultlng party shall have the right to terminate this Agreement by written notloa of 18- L I A 16879 i i * 1 i i 1t 1 I 1 termination to the defaulting party at any time thereafter. Any termination of this Agreement pursuant to thla Article 30 ahall be in addition to, and ahall not be exclusive of or prejudicial to, any other rights or remedies, at lam or in equity, the nondefsulting party may have on aooount of soah default. 31. The term of thla Afreement ahall commence on the date of thle Agreement and oontlnue until the expiration of the laat expiring patent Included In XIA'e Patent Rights. 33. It ahall be a sufficient giving of any notice, request, report, stateeent or other ooemunleatlon hereunder If the party giving the same shall deposit a copy thereof In the post orflee in t registered or certified envelope, postage prepaid, addressed to the party to receive seme at ita address hereinabove aet forth or at such other address aa the receiving party ahall have theretofore In writing designated. All pay* ents to be made hereunder ahall be made at the address mhloh at the time of such payment any notice or other communication to the party to receive such payment la to be addressed here* under. The date of giving any such notice, request, report, statement or other communication, and the data of making any such payment, provided much payment is reoelved, ahall be the date on mhluh euoh envelope was deposited. The Poet Office receipt showing the date of such deposit shall be prims facie evldenoe of these facta. XX VXTXZ3S WHEREOP, the parties hereto have oeuaed -19- LI A16P80 thl A*rta*/nt to b* duly axtcutad u of tha day asd ynr firit abort wrlttao. UtD DOUSTRHS ASSOCIATION BC. _____________________________________________________ Tit la _ OTIC* CARS ml CORfCRATIOK By_______________________ Tice rraalflant of lta Chaalcala Dlrltloa r qrm gMajipqm.j >' "',j. -30- ** m LI A16881 SCHEDULE A Part I Country On1ted states Canada Australia Prance Germany Italy Japan Sweden Application No. Drto ? t .^04 ----- SepTO7CT 912,794 Oct. 13/64 50043 Oct. 2/64 990.643 Oct. 9/64 *25.604 Sept .?n/64 26.290 Sept.29/64 59.C71/6* Oc** II/6* 11235/6* Sept.16/64 Application No . Date loi.WO------ TO7" SS/oT 924,394 Kar. 1/65 Jan. 27/65 Peb. 23/65 N 26278 IV b Peb. 25/65 2754 Jan. 21/65 3256/65 Jan. 23/65 2505/65 Peb. 26/65 Country Netherlands Part II Application No. Cate 8W.W9 Set. Wb3 Application No. Date M/02097 TKr.-W 9 N 3348.02 mm LlAl 66B5 d IXfc-ILUO DOUBT EBVXLOBCir CCWOTBCX yWT mm wautrop w j u u x 8ub>ct: urro oucmK o o k po r c t t o r - ma d d d u b t r d s as s o c . . ac. ooBriDBfnAi DiscLosua aj d uaasi jcusBoatr ro ccwROAULmca cr la otcAXHtia czotioos ab UKtmxi cmorsTB - l &-u B Z appro** (da sot appro**) of th* laad Zadurtrl** Association, Zac. starlet Into *ufej*ct agr>--aot with Doles Qarblda Corporation- bac-uti !kzx i Rota: Mrturc Ballet To: hr- 8.7. fedtt* Intarnatiooal Lsad Zinc A***rch Orsaalsatiaa 292 Madison Avacua *r tort. Hr* lark 1D017 -mm/* 1 t J4LJfp il N 3348.03 s