{"id":42331,"date":"2015-09-17T11:25:58","date_gmt":"2015-09-17T16:25:58","guid":{"rendered":"https:\/\/content.findlaw-admin.com\/ability-legal\/contracts\/uncategorized\/harsco-intellectual-property-agreement-harsco-corp-and-united.html"},"modified":"2015-09-17T11:25:58","modified_gmt":"2015-09-17T16:25:58","slug":"harsco-intellectual-property-agreement-harsco-corp-and-united","status":"publish","type":"corporate_contracts","link":"https:\/\/corporate.findlaw.com\/contracts\/operations\/harsco-intellectual-property-agreement-harsco-corp-and-united.html","title":{"rendered":"Harsco Intellectual Property Agreement &#8211; Harsco Corp. and United Defense LP"},"content":{"rendered":"<pre>                                 AMENDED AND RESTATED\n                        HARSCO INTELLECTUAL PROPERTY AGREEMENT\n\n         This Amended and Restated Intellectual Property Agreement\n('Agreement') is made as of October 6, 1997 ('Effective Date') by and between\nHarsco Corporation, a Delaware corporation ('Harsco'), and United Defense, L.P.\n('UD'), a Delaware limited partnership.\n\n         WHEREAS, the parties entered into the Harsco Intellectual Property\nAgreement dated January 1, 1994 ('Closing Date') in connection with the\nformation of UD, and the parties now wish to further clarify their respective\nrights and obligations thereunder;\n\n         WHEREAS, Harsco transferred certain assets to UD, including certain\nintellectual and proprietary property and rights which were exclusively used or\nintended by Harsco for exclusive use in the business of Harsco's BMY-Combat\nSystems Division prior to the Closing Date;\n\n         WHEREAS, as a condition of such transfer UD granted back to Harsco the\nexclusive right and license, with the right to sublicense, under and to such\nassets in all fields other than the fields of business of UD;\n\n         WHEREAS, Harsco is the owner of the letters patent, utility models,\ninventor's certificates and registered copyrights and applications therefor\nlisted in Schedule B appended hereto, the claimed or protected subject matters\nof which were made, used, sold or practiced or intended by Harsco for\nmanufacture, use, sale and practice, but not exclusively, in the business of\nHarsco's BMY-Combat Systems Division prior to the Closing Date;\n\n         WHEREAS, Harsco possesses, owns and\/or has rights in trade secrets,\nknow-how, information, unregistered copyrights and mask works and materials used\nor intended by Harsco for use, but not exclusively, in the business of Harsco's\nBMY-Combat Systems Division prior to the Closing Date;\n\n         WHEREAS, Harsco owns the registered and unregistered trademarks, trade\nnames and service marks and applications for registration listed in Schedule B\nappended hereto, which marks and names were used, but not exclusively, in the\nbusiness of Harsco's BMY-Combat Systems Division prior to the Closing Date; and\n\n         WHEREAS, UD desires to acquire a license under and to the Harsco\nLicensed Intellectual Property (as defined herein) subject to the terms and\nconditions set forth below.\n\n         NOW, THEREFORE, in consideration of the mutual covenants, and subject\nto the terms and conditions contained herein, the parties hereby agree as\nfollows.\n\n\n\n\n                                      ARTICLE I\n                                     DEFINITIONS\n\n         As used herein unless the context otherwise requires:\n\n    1.1  'Harsco Statutory Rights' means (i) letters patent, utility models,\ninventor's certificates, registered copyrights and registered mask works; (ii)\napplications for any of the foregoing and rights which may issue on such\napplication; and (iii) any reissues, continuations, continuations-in-part,\nextensions, divisions, re-examinations and renewals of the foregoing, in which\nHarsco owned all or a part of the right, title and interest on the Closing Date.\n\n    1.2  'Harsco Data Rights' means unregistered copyrights and mask work\nrights and trade secrets and confidential information and knowledge possessed by\nHarsco on the Closing Date, including, but not limited to, ideas, inventions,\nblueprints, know-how, formulae, manufacturing and production processes and\ntechniques, research and development information, software, drawings,\nspecifications, designs, plans, proposals, technical data, financial and\naccounting data, business and marketing plans and customer and supplier lists.\n\n    1.3  'Harsco Marks' means the registered and unregistered trademarks, trade\nnames, service marks, trade dress, logos and applications for registration\nthereof, all right, title and interest in which were owned by Harsco on the\nClosing Date, including, without limitation the BMY Mark.\n\n    1.4  'Harsco Transferred IP Rights' means Harsco Statutory Rights, Harsco\nMarks and Harsco Data Rights, exclusively used or intended for exclusive use in\nthe business of Harsco's BMY-Combat Systems Division on or prior to the Closing\nDate including, without limitation, the Harsco Statutory Rights and Harsco Marks\nlisted in Schedule A hereto together with the BMY Mark transferred to UD hereby.\n\n    1.5  'Harsco Licensed Intellectual Property' means Harsco Statutory Rights,\nHarsco Marks and Harsco Data Rights used or intended for use, but not\nexclusively, in the business of Harsco's BMY-Combat Systems Division on or prior\nto the Closing Date including, without limitation, the Harsco Statutory Rights\nand Harsco Marks listed in Schedule B hereto.\n\n    1.6  'The Field' means the development, manufacture, retrofit,\ninstallation, overhaul, repair, engineering, design, service, sale and marketing\nof (i) any military vehicle system or weapon system or station or component\nthereof and (ii) forgings, castings and fabrications for commercial customers.\n\n    1.7  'Harsco Defense Business' means the entire business and operations of\nthe BMY-Combat Systems Division, as conducted as of the Closing Date.\n\n                                          2\n\n\n    1.8  'Permitted Activities' means (i) the development, manufacture,\nretrofit, installation, repair, overhaul, engineer, design, service, sale and\nmarketing of armor and armor kits for sale to the military and other customers,\n(ii) such activities as are reasonably necessary for Harsco to complete the\ntermination and winding up of its former truck and bus business, and (iii) the\ndevelopment, manufacture, retrofit, installation, repair, overhaul, engineer,\ndesign, service, sale and marketing of any component part or subsystem of\nmilitary vehicle systems which are substantially the same as classes of products\nor services that primarily are commercially sold by Harsco for non-military\nuses.\n\n    1.9  'BMY Mark' means the registered trademarks in and to the name 'BMY.'\n\n\n                                      ARTICLE II\n                                        GRANTS\n\n    2.1  Harsco grants to UD an exclusive, irrevocable, worldwide, royalty-free\nright and license, with the right to sublicense, under and to Harsco Licensed\nIntellectual Property in The Field other than any Permitted Activity; for the\nPermitted Activity UD shall have a sole, irrevocable, worldwide, royalty-free\nright and license, with the right to sublicense.\n\n    2.2  UD grants to Harsco:\n\n         (a)  an exclusive, irrevocable, worldwide, royalty-free right and\nlicense, with the right to sublicense, under and to the Harsco Transferred IP\nRights and the BMY Mark in all fields other than The Field; and\n\n         (b)  a non-exclusive, irrevocable, worldwide, royalty-free right and\nlicense, without the right to sublicense, under and to the Harsco Transferred IP\nRights and the BMY Mark for use in any Permitted Activity.\n\n    2.3  Harsco hereby transfers, conveys and assigns to UD all of its right,\ntitle and interest in and to the BMY Mark and any goodwill associated therewith\n(subject to the license granted in Section 2.2 hereto).  Harsco agrees to take\nall actions reasonably requested by UD, at UD's expense, to record such\nassignment in all jurisdictions in which the BMY Mark is registered.\n\n    2.4  No right or license is granted hereby by implication or otherwise\nunder any patent, utility model, inventors certificate, copyright, trade secret,\nmask work or trademark except as specifically provided herein.\n\n                                          3\n\n\n                                     ARTICLE III\n                                     COOPERATION\n\n    3.1  UD agrees, at Harsco's request on reasonable notice, to disclose and\nmake available to Harsco, Harsco Data Rights constituting a part of Harsco\nTransferred IP Rights to the full extent required by Harsco to use the same and\nto replicate products, processes and the like in which the same are embodied or\nused.\n\n    3.2  Harsco agrees, at UD's request on reasonable notice, to disclose and\nmake available to UD Harsco Data Rights constituting a part of Harsco Licensed\nIntellectual Property to the full extent required by UD to use the same and to\nreplicate products, processes and the like in which the same are embodied or\nused.\n\n    3.3  UD and Harsco each agree, in performance of Section 3.1 and 3.2, to:\n\n         (a)  make copies of drawings, blue prints, manuals, internal\ndocumentation, and the like available as and to the extent requested and at the\nother party's expense;\n\n         (b)  provide access to files containing information responsive to\nSections 3.1 and 3.2; and\n\n         (c)  make qualified personnel available to assist the other at the\nreasonable request and at the expense of the other.\n\n    3.4  The provisions of this Article III shall terminate upon the twelfth\nanniversary of the Closing Date.\n\n    3.5  Should either party decide not to pay any or all of the required\nmaintenance fees on any of the intellectual property licensed hereunder, it\nshall immediately notify the other party of its decision, and that party shall\nhave the right (but not the obligation) to pay such maintenance fees.\n\n\n                                      ARTICLE IV\n                          PRESERVATION\/ENFORCEMENT OF RIGHTS\n\n    4.1  UD acknowledges and agrees that Harsco Licensed Intellectual Property\nincludes trade secrets and confidential information of Harsco and agrees not to\ndisclose to any third party (except pursuant hereto and notwithstanding\ntermination hereof) Harsco Data Rights except to the extent the same and its\nmanner of utilization and combination can be shown to be generally known in the\nrelevant trade(s), to have been in UD's possession prior to receipt from Harsco,\nto have been received from a third party not obligated to Harsco with respect\nthereto or to have been independently developed for UD by its employees who did\nnot have access to Harsco Data Rights.\n\n                                          4\n\n\n\nAny permitted disclosure to a third party shall be made pursuant to a written\nagreement containing restrictions on disclosure no less restrictive than those\ncontained herein.\n\n    4.2  Harsco and UD acknowledge and agree that Harsco Transferred IP Rights\ninclude trade secrets and confidential information and each agree not to\ndisclose to any third party Harsco Transferred IP Rights except to the extent\nthe same and its manner of utilization and combination can be shown to be\ngenerally known in the relevant trade(s), to have been in the recipient's\npossession prior to receipt from the other party, to have been received from a\nthird party not obligated to the other party with respect thereto or to have\nbeen independently developed by employees of the receiving party who did not\nhave access to the Harsco Transferred IP Rights.\n\n    4.3  Each party agrees to use Harsco Marks owned by the other only as an\nadjective and never in juxtaposition to a mark of any other person or entity.\nEach party agrees to identify the other as the owner of such Harsco Marks owned\nby the other and to indicate their registration, as appropriate, at least once\nin or on each document or thing where such Harsco Mark owned by the other is\nused and otherwise to fully comply with those steps and practices necessary to\npreserve the other party's title and rights in the Marks.\n\n    4.4  Each party agrees, in its manufacture of articles and products on or\nwith respect to which an Harsco Mark owned by the other is used, to conform to\nthe standards of quality established by Harsco during its operations of the\nHarsco Defense Business and such other quality standards as may hereafter\nreasonably be established by the party owning such Harsco Mark.  Each party\nshall, upon reasonable notice, be entitled to inspect the facilities of the\nother party to ensure that said quality standards are being maintained.\n\n    4.5  Each party shall notify the other of any infringement,\nmisappropriation, conversion, unauthorized use or the like by a third party of\nany Harsco Transferred IP Rights or Harsco Licensed Intellectual Property\ntransferred or licensed exclusively pursuant hereto which becomes known to it.\nThe parties agree to consult as to the appropriate action to be taken and, if\nthe parties fail to reach a timely agreement under the particular circumstances,\nUD shall have the right to take such action(s) as it deems appropriate to obtain\nredress with respect to such third party activity in The Field and Harsco shall\nhave the right to take such action(s) as it deems appropriate to obtain redress\nwith respect to such third party activity in fields other than The Field.  Any\naction taken by Harsco or UD singularly pursuant to this Section, shall be at\nthe expense and for the benefit (including any award of damages or compensation)\nof the party which takes action.  The parties agree to cooperate in the conduct\nof any action(s) brought or taken pursuant to this Section.\n\n                                          5\n\n\n                                      ARTICLE V\n                                     COMPENSATION\n\n    Each party agrees to compensate the other for copies of drawings, documents\nand things made available pursuant to Section 3.3(a) and personnel made\navailable pursuant to Section 3.3(c) in accordance with the standard practice of\nsuch party.\n\n\n                                      ARTICLE VI\n                                     TERMINATION\n\n    6.1  As to each Harsco Statutory Right licensed hereunder, all grants,\nobligations and provisions herein relating thereto shall continue in full force\nand effect, unless sooner terminated as herein provided, until its expiration\ndate or until a final decree of invalidity thereof from which no appeal can be\nor is taken.\n\n    6.2  Harsco may terminate the right and license granted to UD pursuant to\nSection 2.1 hereof with respect to Harsco Marks constituting Harsco Licensed\nIntellectual Property upon written notice to UD if UD remains in default of, or\nfails to correct a failure to comply with, Section 4.3 hereof for a period of\nsixty (60) days after written notice of such default or failure is given by\nHarsco to UD.\n\n    6.3  UD may terminate the right and license granted to Harsco pursuant to\nSection 2.2 hereof with respect to Harsco Marks constituting Harsco Transferred\nIP Rights upon written notice to Harsco if Harsco remains in default of, or\nfails to correct a failure to comply with, Section 4.3 hereof for a period of\nsixty (60) days after written notice of such default or failure is given by UD\nto Harsco.\n\n\n                                     ARTICLE VII\n                       INDEMNIFICATION; LIMITATION OF LIABILITY\n\n    7.1  Each party shall defend, indemnify and hold the other party and its\nsubsidiaries and affiliates, and its and their officers, directors,\nshareholders, employees and agents harmless and shall pay all losses, damages,\nfees, expenses or costs (including reasonable attorneys' fees) incurred by the\nindemnified party based upon any claim or action:  (a) arising from any act or\nomission of the indemnifying party, or its shareholders, officers, directors,\nemployees or agents constituting gross negligence or willful misconduct related\nto this Agreement; or (b) arising from the misuse, disclosure or\nmisappropriation by any third party of any confidential information of the\nindemnified party obtained from the indemnifying party by such third party in\nviolation of this Agreement.\n\n                                          6\n\n\n    7.2  EXCEPT AS SET FORTH IN THE PURCHASE AGREEMENT DATED AUGUST 25, 1997 BY\nAND AMONG HARSCO, FMC CORPORATION, HARSCO UDLP CORPORATION AND IRON HORSE\nACQUISITION CORP., HARSCO MAKES NO WARRANTY, EXPRESS OR IMPLIED, EXCEPT AS\nEXPRESSLY SET FORTH HEREIN, INCLUDING BUT NOT LIMITED TO ANY IMPLIED WARRANTIES\nOF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.\n\n    7.3  The dispute resolution procedures set forth in Article 29 of the\nPurchase Agreement dated August 25, 1997 by and among Harsco, FMC Corporation,\nHarsco UDLP Corporation and Iron Horse Acquisition Corp., shall apply to any\ndispute between the parties regarding this Agreement.\n\n                                     ARTICLE VIII\n                                    MISCELLANEOUS\n\n    8.1  Harsco may assign this Agreement and any rights hereunder in whole or\nin part by way of sale of assets, merger or consolidation, without the prior\nwritten consent of UD. UD may, without the prior written consent of Harsco,\nassign this Agreement (i) to any purchaser of all or substantially all of its\nassets, (ii) in part with respect to the intellectual property used in\nconnection with the business of any business unit, whether by way of sale of\nassets, merger or consolidation, of UD, to any purchaser of all or substantially\nall of the assets of such business unit of UD, or (iii) as collateral to any\nfinancing source of UD or its affiliates.  Subject to the foregoing, this\nAgreement will be binding upon and inure to the benefit of the parties and their\nrespective successors and assigns.\n\n    8.2  The disclosure and obligation to disclose classified information, as\nprovided in Part 125.3 of the United States Code of Federal Regulations, Title\n22, shall be subject to and in accordance with the requirements of the U.S.\nDepartment of Defense Industrial Security Manual.  The parties hereby agree to\nbe bound by and to comply with the requirements of said Security Manual in its\ntreatment and use of classified information disclosed by other pursuant hereto.\nIf required by the U.S. Office of Munitions Control, each agrees to execute a\nU.S. nontransfer and use certificate.  The obligation to disclose information\nwhich is unclassified shall be subject to the requirements of Part 125.2 of the\nU.S. International Traffic in Arms Regulations.\n\n    8.3  This Agreement is subject to all United States laws and regulations\nrelating to exports, and to all administrative acts of the U.S. Government\npursuant to such laws and regulations.\n\n    8.4  Sections 4.1, 4.2, 7.1 and 7.2 shall survive termination of this\nAgreement for any reason.\n\n                                          7\n\n\n    8.5  This Agreement is for the sole benefit of the parties hereto and their\npermitted assigns and nothing herein express or implied shall give or be\nconstrued to give to any person or entity, other than the parties hereto and\nsuch permitted assigns, any legal or equitable rights hereunder.\n\n    8.6  This Agreement may be amended, or any provision of this Agreement may\nbe waived; PROVIDED, HOWEVER, that any such amendment or waiver shall be binding\nupon a party only if set forth in a writing executed by such party and referring\nspecifically to the provision alleged to have been amended or waived.  No course\nof dealing between or among any persons having any interest in this Agreement\nshall be deemed effective to modify, amend or discharge any part of this\nAgreement or any rights or obligations of any person under or by reason of this\nAgreement.\n\n    8.7  All notices or other communications required or permitted to be given\nhereunder shall be in writing and shall be delivered by hand or sent by prepaid\ntelex, cable or telecopy, or sent, postage prepaid, by registered, certified or\nexpress mail, or reputable overnight courier service and shall be deemed given\nwhen so delivered by hand, telexed, cabled or telecopied, or if mailed, three\ndays after mailing (one business day in the case of express mail or overnight\ncourier service), as follows:\n\nIF TO UD,\n\n              United Defense, L.P.\n              1525 Wilson Blvd.\n              Arlington, Virginia  22209\n              Attention: Thomas W. Rabaut\n\n              WITH A COPY TO:\n\n              Latham &amp; Watkins\n              1001 Pennsylvania Avenue N.W. Suite 1300\n              Washington, D.C. 20004\n              Attention:  Bruce E. Rosenblum\n\nIF TO HARSCO,\n\n              Harsco Corporation\n              350 Poplar Church Road\n              Camp Hill, PA  17011\n              Telecopy No.:  (717) 763-6402\n              Attention:  Paul C. Coppock\n\n                                          8\n\n\n              WITH A COPY TO:\n\n              Morgan, Lewis &amp; Bockius\n              1800 M Street, N.W.\n              Washington, D.C.  20036\n              Telecopy No.: (202) 467-7176\n              Attention:  Lloyd H. Feller\n\n    8.8  The headings and captions contained in this Agreement or any exhibit\nor schedule hereto are for reference purposes only and shall not affect in any\nway the meaning or interpretation of this Agreement.   The use of the word\n'including' herein shall mean 'including without limitation.'\n\n    8.9  Notwithstanding the fact that this Agreement has been drafted or\nprepared by one of the parties, each of the parties confirms that each of them\nand their respective counsel have reviewed, negotiated and adopted this\nAgreement as the joint agreement and understanding of the parties, and the\nlanguage used in this Agreement shall be deemed to be the language chosen by the\nparties hereto to express their mutual intent, and no rule of strict\nconstruction shall be applied against any person.\n\n    8.10 This Agreement may be executed in one or more counterparts (including\nby means of telecopied signature pages), all of which shall be considered one\nand the same agreement, and shall become effective when one or more such\ncounterparts have been signed by each of the parties and delivered to the other\nparty.\n\n    8.11 This Agreement contains the entire agreement and understanding between\nthe parties hereto with respect to the subject matter hereof and supersede all\nprior agreements and understandings, whether written or oral, relating to such\nsubject matter.\n\n    8.12 The parties acknowledge that each of them has been represented by\ncounsel in connection with this Agreement and the transactions contemplated\nhereby.  Accordingly, any rule of law or any legal decision that would require\ninterpretation of any claimed ambiguities in this Agreement against the party\nthat drafted it has no application and is expressly waived.\n\n    8.13 Whenever possible, each provision of this Agreement shall be\ninterpreted in such manner as to be valid and effective under applicable law,\nbut if any provision of this Agreement or the application of any such provision\nto any person or circumstance shall be held invalid, illegal or unenforceable in\nany respect by a court of competent jurisdiction, such invalidity, illegality or\nunenforceability shall not affect any other provision hereof.\n\n    8.14 This Agreement shall be governed by and construed in accordance with\nthe internal laws of the State of Illinois applicable to agreements made and to\nbe performed entirely within such State, without regard to the conflicts of law\nprinciples of such State.\n\n                                          9\n\n\n\n    IN WITNESS WHEREOF, the parties hereto have executed this Agreement as of\nthe date first written above.\n\n\nHARSCO CORPORATION                          UNITED DEFENSE, L.P.\n\n\nBY:  \/s\/ Leonard A. Campanaro               BY:  UDLP Holdings Corp.\n     --------------------------\n\nITS: Sr. Vice President &amp; CFO               ITS: General Partner\n\n                                            BY:  \/s\/ Allan M. Holt\n                                                 ------------------------\n                                            ITS: President\n\n\n                                          10\n<\/pre>\n","protected":false},"template":"","meta":{"_acf_changed":false,"_stopmodifiedupdate":true,"_modified_date":"","_cloudinary_featured_overwrite":false},"corporate_contracts_companies":[7728,9167],"corporate_contracts_industries":[9477,9455],"corporate_contracts_types":[9613,9616],"class_list":["post-42331","corporate_contracts","type-corporate_contracts","status-publish","hentry","corporate_contracts_companies-harsco-corp","corporate_contracts_companies-united-defense-industries-inc","corporate_contracts_industries-aerospace__vehicles","corporate_contracts_industries-manufacturing__metal","corporate_contracts_types-operations","corporate_contracts_types-operations__ip"],"acf":[],"_links":{"self":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts\/42331","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts"}],"about":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/types\/corporate_contracts"}],"wp:attachment":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/media?parent=42331"}],"wp:term":[{"taxonomy":"corporate_contracts_companies","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_companies?post=42331"},{"taxonomy":"corporate_contracts_industries","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_industries?post=42331"},{"taxonomy":"corporate_contracts_types","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_types?post=42331"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}