\n 3.4 LICENSEE UNDERTAKINGS…………………………………………………………………11
\n 3.5 NON-TRADEMARK USE…………………………………………………………………….12
\n 3.6 RESERVATION OF RIGHTS…………………………………………………………………12
\n 3.7 SUBLICENSES………………………………………………………………………….12
\n 3.8 ENFORCEMENT OF AGREEMENTS……………………………………………………………..12
\n 3.9 ROYALTIES……………………………………………………………………………13
\n 3.10 TRADEMARK USAGE GUIDELINES……………………………………………………………13
\n 3.11 OWNERSHIP AND RIGHTS…………………………………………………………………13
\n 3.12 PROTECTION OF MARKS………………………………………………………………….13
\n 3.13 SIMILAR MARKS……………………………………………………………………….13
\n 3.14 INFRINGEMENT PROCEEDINGS……………………………………………………………..14
\n 3.15 TERMINATION…………………………………………………………………………14
\n 3.16 USE OF MARKS FOLLOWING TERMINATION…………………………………………………….14
\nARTICLE IV – PATENTS ALLOCATION OF OWNERSHIP AND LICENSE GRANTS…………………………………..14
\n 4.1 PATENT OWNERSHIP……………………………………………………………………..14
\n 4.2 LICENSE GRANTS TO SOUTHERN…………………………………………………………….15
\n 4.3 LICENSE GRANTS TO SOUTHERN ENERGY………………………………………………………15
\n 4.4 IDENTIFICATION OF LICENSED PATENTS……………………………………………………..15
\n 4.5 SUBLICENSE RIGHTS…………………………………………………………………….15
\n 4.6 DURATION…………………………………………………………………………….15
\n 4.7 ROYALTIES……………………………………………………………………………15
\n 4.8 PATENT APPLICATIONS AND INVENTION DISCLOSURES……………………………………………15
\n 4.9 ADDITIONAL OBLIGATIONS WITH REGARD TO SOUTHERN PATENTS……………………………………16
\n 4.10 DEFENSIVE PROTECTION MEASURES…………………………………………………………16
\n 4.11 STANDARDS BODIES…………………………………………………………………….16
\n 4.12 ASSIGNMENT OF PATENTS………………………………………………………………..16
\n 4.13 RESPONSE TO REQUESTS…………………………………………………………………16
\n 4.14 RECORDATION OF LICENSES………………………………………………………………17
\nARTICLE V CONFIDENTIALITY…………………………………………………………………….17
\nARTICLE VI DISPUTE RESOLUTION…………………………………………………………………17
\nARTICLE VII LIMITATION OF LIABILITY……………………………………………………………18
\nARTICLE VIII MISCELLANEOUS PROVISIONS………………………………………………………….18
\n 8.1 DISCLAIMER…………………………………………………………………………..18
\n 8.2 NO IMPLIED LICENSES…………………………………………………………………..18
\n 8.3 INFRINGEMENT SUITS……………………………………………………………………18
\n 8.4 NO OTHER OBLIGATIONS………………………………………………………………….19
\n 8.5 ENTIRE AGREEMENT……………………………………………………………………..19
\n 8.6 GOVERNING LAW………………………………………………………………………..19
\n 8.7 DESCRIPTIVE HEADINGS………………………………………………………………….19
\n 8.8 NOTICES……………………………………………………………………………..19
\n 8.9 NONASSIGNABILITY……………………………………………………………………..20
\n 8.10 SEVERABILITY………………………………………………………………………..20
\n 8.11 FAILURE OR INDULGENCE NOT WAIVER; REMEDIES CUMULATIVE……………………………………21
\n 8.12 AMENDMENT…………………………………………………………………………..21
\n 8.13 COUNTERPARTS………………………………………………………………………..21
\n 8.14 GOVERNMENTAL APPROVAL………………………………………………………………..21
\n<\/c><\/s><\/table>\n 4<\/p>\n
TECHNOLOGY AND INTELLECTUAL PROPERTY OWNERSHIP AND LICENSE AGREEMENT<\/p>\n
This Technology and Intellectual Property Ownership and License
\nAgreement (the “Agreement”) dated as of September 1, 2000 (the “Effective
\nDate”), between The Southern Company, a Delaware corporation (“Southern”),
\nhaving an office at 270 Peachtree Street, N.W., Atlanta, Georgia 30303, and
\nSouthern Energy, Inc., a Delaware corporation (“Southern Energy”), having an
\noffice at 900 Ashwood Parkway, Suite 500, Atlanta, Georgia 30338-4780.<\/p>\n
WHEREAS, the Board of Directors of Southern has determined that it is
\nin the best interest of Southern and its stockholders to separate Southern’s
\nexisting businesses into two independent businesses;<\/p>\n
WHEREAS, as part of the foregoing, Southern and Southern Energy have
\nentered into a Master Separation Agreement (as defined below), which provides,
\namong other things, the initial public offering of Southern Energy stock, the
\ndistribution of such stock and the execution and delivery of certain other
\nagreements in order to facilitate and provide for the foregoing; and<\/p>\n
WHEREAS, also as part of the foregoing, Southern and Southern Energy
\ndesire to resolve and assign ownership of certain technology and intellectual
\nproperty and each party desires to license to the other party certain of its
\ntechnology and intellectual property.<\/p>\n
NOW, THEREFORE, in consideration of the mutual promises of the
\nparties, and of good and valuable consideration, it is agreed by and between
\nthe parties as follows:<\/p>\n
ARTICLE I
\n DEFINITIONS<\/p>\n
For the purpose of this Agreement the following capitalized terms are
\ndefined in this Article I and shall have the meaning specified herein:<\/p>\n
1.1 AFFILIATED COMPANY. “Affiliated Company” shall have the same
\nmeaning as defined in the Master Separation Agreement.<\/p>\n
1.2 ALLOCATED PATENT ASSETS DATABASE. “Allocated Patent Assets
\nDatabase” means the Allocated Patent Assets Database as set forth on the
\nattached Exhibit A, as it may be updated by the parties upon mutual agreement
\nfrom time to time to add Patents, patent applications and Invention
\nDisclosures.<\/p>\n
1.3 ASSIGNED PATENTS. “Assigned Patents” means only those;<\/p>\n
(a) Patents, patent applications and Invention Disclosures
\nallocated to Southern Energy in the Allocated Patent Assets Database;<\/p>\n
5<\/p>\n
(b) Patent applications filed on the foregoing Invention
\nDisclosures described in Section (a);<\/p>\n
(c) continuations, continuations-in-part, divisions and
\nsubstitutions of any of the foregoing Patent applications described in Sections
\n(a) and (b);<\/p>\n
(d) Patents which may issue on any of the foregoing Patent
\napplications described in Sections (a)-(c);<\/p>\n
(e) renewals, reissues, reexaminations and extensions of the
\nforegoing Patents described in Sections (a) and (d); and<\/p>\n
(f) foreign Patent applications and Patents that are counterparts
\nof any of the foregoing Patent applications or Patents described in Sections
\n(a)-(e), including any Patent application or Patent to the extent that it
\nclaims priority from any of the foregoing Patent applications or Patents
\ndescribed in Sections (a)-(e); but<\/p>\n
(g) excluding from any Patent or Patent application described in
\nSections (c)-(f) any claim (i) directed to subject matter that does not appear
\nin any Patent application having a First Effective Filing Date prior to the
\nSeparation Date and (ii) of which neither Southern Energy nor any person having
\na legal duty to assign his\/her interest therein to Southern Energy is entitled
\nto be named as an inventor.<\/p>\n
1.4 CHANGE OF CONTROL DATE. “Change of Control Date” means the earlier
\nof: (a) the Distribution Date, or (b) the first date on which Southern ceases
\nto control at least 33 1\/3% of the common stock of Southern Energy then
\noutstanding.<\/p>\n
1.5 COPYRIGHTS. “Copyrights” mean collectively (i) any copyright in
\nany original works of authorship fixed in any tangible medium of expression as
\nset forth in 17 U.S.C. Section 101 et seq., whether registered or unregistered,
\nincluding any applications for registration thereof, (ii) any corresponding
\nforeign copyrights under the laws of any jurisdiction, in each case, whether
\nregistered or unregistered, and any applications for registration thereof, and
\n(iii) moral, common law or other rights in creative works however vested under
\nthe laws of any jurisdiction.<\/p>\n
1.6 CORPORATE IDENTITY MATERIALS. “Corporate Identity Materials” means
\nmaterials that are not products or product-related and that Southern Energy may
\nnow or hereafter use to communicate its identity, including, by way of example
\nand without limitation, business cards, letterhead, stationery, paper stock and
\nother supplies, signage on real property, buildings, fleet and uniforms.<\/p>\n
1.7 DATABASE RIGHTS. “Database Rights” means any rights in databases
\nunder the laws of the United States or any other jurisdiction, whether
\nregistered or unregistered, and any applications for registration thereof. As
\nused in this Agreement, Database Rights shall not include any databases needed
\nto provide the Services provided for in the Master Services Agreement, and the
\nAncillary Agreements as provided therein.<\/p>\n
2
\n 6<\/p>\n
1.8 DISTRIBUTION DATE. “Distribution Date” shall have the meaning set
\nforth in the Master Separation and Distribution Agreement.<\/p>\n
1.9 FIRST EFFECTIVE FILING DATE. “First Effective Filing Date” means
\nthe earliest effective filing date in the particular country for any Patent or
\nany application for any Patent. By way of example, it is understood that the
\nFirst Effective Filing Date for a United States Patent is the earlier of (i)
\nthe actual filing date of the United States Patent application which issued
\ninto such Patent, (ii) the priority date under 35 U.S.C. Section 119 for such
\nPatent, or (iii) the priority date under 35 U.S.C. Section 120 for such Patent.<\/p>\n
1.10 IMPROVEMENTS. “Improvements” to Technology means (i) with respect
\nto Copyrights, any modifications, derivative works, and translations of works
\nof authorship, (ii) with respect to Database Rights, any database that is
\ncreated by extraction or re-utilization of another database, and (iii) with
\nrespect to trade secrets and other intellectual property rights included within
\nthe definition of Technology and not covered by Sections (i) – (ii) herein, any
\nimprovements of Technology. For the purposes of clarification, an item of
\nTechnology will be deemed to be an Improvement of another item of Technology
\nonly if it is actually derived from such other item of Technology and not
\nmerely because it may have the same or similar functionality or use as such
\nother item of Technology.<\/p>\n
1.11 INVENTION DISCLOSURE. “Invention Disclosure” means a disclosure
\nof an invention (i) written for the purpose of allowing legal and business
\npeople to determine whether to file a Patent application with respect to such
\ninvention and (ii) recorded with a control number in the owning party’s
\nrecords.<\/p>\n
1.12 LICENSED MARKS. “Licensed Marks” means the Marks set forth on
\nExhibit B hereto as mutually amended by the parties hereto from time to time.<\/p>\n
1.13 LICENSED SOUTHERN ENERGY TECHNOLOGY. “Licensed Southern Energy
\nTechnology” means, specifically including without limitation as listed on
\nExhibit C as mutually amended by the parties hereto from time to time pursuant
\nto the procedure set forth in Article II herein, any Technology:<\/p>\n
(a) which, as of the Separation Date, Southern Energy or any
\nSubsidiary or Affiliated Company of Southern Energy (i) owns or controls or
\n(ii) otherwise has the right to grant any licenses of the type and on the terms
\nherein granted to Southern without the obligation to pay royalties or other
\nconsideration to Third Parties;<\/p>\n
(b) which is in the possession of Southern or its Subsidiaries or
\nAffiliated Companies as of the Separation Date and necessary to the ongoing
\nbusiness operation of Southern; and<\/p>\n
(c) the competitive harm to Southern Energy resulting from the
\nlicense granted in Article II herein does not greatly outweigh the benefit to
\nSouthern resulting from the license.<\/p>\n
1.14 LICENSED SOUTHERN TECHNOLOGY. “Licensed Southern Technology”
\nmeans, specifically including without limitation as listed on Exhibit D as
\nmutually amended by the<\/p>\n
3
\n 7<\/p>\n
parties from time to time pursuant to the procedure set forth in Article II
\nherein, any Technology:<\/p>\n
(a) which, as of the Separation Date, Southern or any Subsidiary
\nor Affiliated Company of Southern (i) owns or controls or (ii) otherwise has
\nthe right to grant any licenses of the type and on the terms herein granted to
\nSouthern Energy without the obligation to pay royalties or other consideration
\nto Third Parties;<\/p>\n
(b) which is in the possession of Southern Energy, its
\nSubsidiaries or Affiliated Companies as of the Separation Date and necessary to
\nthe ongoing business operation of Southern Energy; and<\/p>\n
(c) the competitive harm to Southern resulting from the license
\nto Southern Energy granted in Article II herein, does not greatly outweigh the
\nbenefit to Southern Energy resulting from the license.<\/p>\n
1.15 MARK. “Mark” means any trademark, service mark, trade name, and
\nthe like, or other word, name, symbol or device, or any combination thereof,
\nused or intended to be used by a Person to identify and distinguish the
\nproducts or services of that Person from the products or services of others and
\nto indicate the source of such goods or services, including without limitation
\nall registrations and applications therefor throughout the world and all common
\nlaw and other rights therein throughout the world.<\/p>\n
1.16 MASTER SEPARATION AGREEMENT. “Master Separation Agreement” means
\nthe Master Separation and Distribution Agreement between the parties executed
\nsimultaneously herewith.<\/p>\n
1.17 PATENTS. “Patents” means patents, utility models, design patents,
\ndesign registrations, certificates of invention and other governmental grants
\nfor the protection of inventions or industrial designs anywhere in the world
\nand all reissues, renewals, re-examinations and extensions of any of the
\nforegoing.<\/p>\n
1.18 PERSON. “Person” means an individual, a partnership, a
\ncorporation, a limited liability company, an association, a joint stock
\ncompany, a trust, a joint venture, an unincorporated organization, and a
\ngovernmental entity or any department, agency or political subdivision thereof.<\/p>\n
1.19 SELL. To “Sell” a product means to sell, transfer, lease or
\notherwise dispose of a product. “Sale” and “Sold” have the corollary meanings
\nascribed thereto.<\/p>\n
1.20 SEPARATION DATE. “Separation Date” shall have the same meaning as
\nused in the Master Separation Agreement.<\/p>\n
1.21 SOUTHERN ENERGY SERVICES. “Southern Energy Services” means any
\nand all services which Southern Energy or any of its Subsidiaries or Affiliated
\nCompanies provide as of the Separation Date.<\/p>\n
4
\n 8<\/p>\n
1.22 SOUTHERN ENERGY OWNED TECHNOLOGY. “Southern Energy Owned
\nTechnology” means as listed on Exhibit E (i) all Technology developed solely by
\nSouthern Energy, its Subsidiaries or its subcontractors for Southern Energy or
\nits Subsidiaries, (ii) all Technology for which the direct costs were solely
\npaid by Southern Energy.<\/p>\n
1.23 SOUTHERN PATENTS. “Southern Patents” mean the Patents:<\/p>\n
(a) identified on the Allocated Patent Assets Database as owned
\nby Southern and licensed to Southern Energy; and<\/p>\n
(b) which are in the possession of Southern Energy, its
\nSubsidiaries or Affiliated Companies as of the Separation Date and necessary to
\nthe ongoing business operation of Southern Energy; and<\/p>\n
(c) the competitive harm to Southern resulting from the license
\nto Southern Energy granted in Article IV herein, does not greatly outweigh the
\nbenefit to Southern Energy resulting from the license.<\/p>\n
1.24 SOUTHERN SERVICES. “Southern Services” means any and all services
\nand products which Southern or any of its Subsidiaries or Affiliated Companies
\nprovide as of the Separation Date.<\/p>\n
1.25 SUBLICENSED SOUTHERN ENERGY TECHNOLOGY. “Sublicensed Southern
\nEnergy Technology” means, specifically including, without limitation, the
\nTechnology set forth on Exhibit F as mutually amended from time to time, any
\nTechnology:<\/p>\n
(a) which as of the Separation Date, Southern Energy or any
\nSubsidiary or Affiliated Company of Southern Energy (i) is licensed to use
\npursuant to a license agreement from any Third Party Person; and<\/p>\n
(b) which is in the possession of Southern, its Subsidiaries or
\nAffiliated Companies as of the Separation Date.<\/p>\n
1.26 SUBLICENSED SOUTHERN TECHNOLOGY. “Sublicensed Southern
\nTechnology” means, specifically including without limitation, the Technology
\nset forth on Exhibit G as mutually amended from time to time, any Technology:<\/p>\n
(a) which as of the Separation Date, Southern or any Subsidiary
\nor Affiliated Company of Southern: (i) is licensed to use pursuant to a license
\nagreement from any Third Party; and<\/p>\n
(b) which is in the possession of Southern Energy, its
\nSubsidiaries or Affiliated Companies as of the Separation Date.<\/p>\n
1.27 SUBSIDIARY. “Subsidiary” means the same as defined in the Master
\nSeparation Agreement.<\/p>\n
5
\n 9<\/p>\n
1.28 TECHNOLOGY. “Technology” means Copyrights, Database Rights, trade
\nsecrets and any other intellectual property right, but expressly does not
\ninclude (i) any Mark, trademark, trade name, trade dress or service mark, or
\napplications for registration thereof, or (ii) any Patents or applications
\ntherefor but does include trade secret rights in and to inventions disclosed in
\nsuch Patent applications and Invention Disclosures.<\/p>\n
1.29 THIRD PARTY. “Third Party” means a Person other than Southern and
\nits Subsidiaries and Affiliated Companies and Southern Energy and its
\nSubsidiaries and Affiliated Companies.<\/p>\n
1.30 TRADEMARK USAGE GUIDELINES. “Trademark Usage Guidelines” means
\nthe guidelines for proper usage of the Licensed Marks, as in use immediately
\nprior to the Separation Date, as such guidelines may be revised and updated in
\nwriting by Southern from time to time.<\/p>\n
ARTICLE II – TECHNOLOGY
\n ALLOCATION OF OWNERSHIP AND
\n LICENSE GRANTS<\/p>\n
2.1 ASSIGNMENT. Subject to Sections 2.2 and 2.3 below, Southern hereby
\ngrants, conveys and assigns (and agrees to cause its appropriate Subsidiaries
\nto grant, convey and assign) to Southern Energy, by execution hereof (or, where
\nappropriate or required, by execution of separate instruments of assignment),
\nall its (and their) right, title and interest in and to the Southern Energy
\nOwned Technology, to be held and enjoyed by Southern Energy, its successors and
\nassigns. Southern further grants, conveys and assigns (and agrees to cause its
\nappropriate Subsidiaries to grant, convey and assign) to Southern Energy all
\nits (and their) right, title and interest in and to any and all causes of
\naction and rights of recovery for past infringement of Copyrights and Database
\nRights in and to the Southern Energy Owned Technology, and for past
\nmisappropriation of trade secrets in and to the Southern Energy Owned
\nTechnology. Southern further covenants that Southern will, without demanding
\nany further consideration therefor, at the request and expense of Southern
\nEnergy (except for the value of the time of Southern employees), do (and cause
\nits Subsidiaries to do) all lawful and just acts that may be or become
\nnecessary for evidencing, maintaining, recording and perfecting Southern
\nEnergy’s rights to such Southern Energy Owned Technology consistent with
\nSouthern’s general business practice as of the Separation Date, including but
\nnot limited to, execution and acknowledgment of (and causing its Subsidiaries
\nto execute and acknowledge) assignments and other instruments in a form
\nreasonably required by Southern Energy for each Copyright or Database Right
\njurisdiction. Southern Energy hereby waives any and all claims of any right,
\ntitle and interest in and to any Technology not within the definition of
\nSouthern Energy Owned Technology subject to the licensees granted in this
\nArticle.<\/p>\n
2.2 PRIOR GRANTS. Southern Energy acknowledges and agrees that the
\nforegoing assignment is subject to any and all licenses or other rights that
\nmay have been granted by Southern or its Subsidiaries with respect to the
\nSouthern Energy Owned Technology prior to the Separation Date. Southern shall
\nrespond to reasonable inquiries from Southern Energy regarding any such prior
\ngrants.<\/p>\n
6
\n 10<\/p>\n
2.3 ASSIGNMENT DISCLAIMER. SOUTHERN ENERGY ACKNOWLEDGES AND AGREES
\nTHAT THE FOREGOING ASSIGNMENTS ARE MADE ON AN “AS IS,” QUITCLAIM BASIS AND THAT
\nNEITHER SOUTHERN NOR ANY SUBSIDIARY OR AFFILIATED COMPANY OF SOUTHERN HAS MADE
\nOR WILL MAKE ANY WARRANTY WHATSOEVER, EXPRESS, IMPLIED OR STATUTORY, INCLUDING
\nWITHOUT LIMITATION ANY IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR A
\nPARTICULAR PURPOSE, TITLE, ENFORCEABILITY OR NON-INFRINGEMENT.<\/p>\n
2.4 LICENSE TO SOUTHERN.<\/p>\n
(a) Southern Energy grants (and agrees to cause its appropriate
\nSubsidiaries or Affiliated Companies to grant) to Southern and its Subsidiaries
\nand Affiliated Companies, the following personal, nonexclusive, worldwide,
\nfully paid up, royalty-free and non-transferable (except as specified in
\nSection 8.9 below) licenses:<\/p>\n
(i) under its and their Copyrights in and to the
\n Licensed Southern Energy Technology, (A) to reproduce and have
\n reproduced the works of authorship included in the Licensed Southern
\n Energy Technology and Improvements thereof prepared by or for
\n Southern, in whole or in part, as part of Southern Services, (B) to
\n prepare Improvements or have Improvements prepared for it based upon
\n the works of authorship included in the Licensed Southern Energy
\n Technology in order to provide Southern Services, (C) to distribute
\n (by any means and using any technology, whether now known or unknown,
\n including without limitation electronic transmission) copies of the
\n works of authorship included in the Licensed Southern Energy
\n Technology and Improvements thereof prepared by or for Southern to the
\n public by sale or other transfer of ownership or by rental, lease or
\n lending, as part of Southern Services, and (D) to perform (by any
\n means and using any technology, whether now known or unknown,
\n including without limitation electronic transmission) and display the
\n works of authorship included in the Licensed Southern Energy
\n Technology and Improvements thereof prepared by or for Southern, as
\n part of Southern Services;<\/p>\n
(ii) under its and their Database Rights in and to the
\n Licensed Southern Energy Technology, to extract data from the
\n databases included in the Licensed Southern Energy Technology and to
\n re-utilize such data to design, develop, Sell and offer for sale
\n Southern Services and to Sell such Southern Services that incorporate
\n such data, databases and Improvements thereof prepared by or for
\n Southern; and<\/p>\n
(iii) under its and their trade secrets and other
\n intellectual property rights in and to the Licensed Southern Energy
\n Technology (except the intellectual property rights excluded from the
\n definition of Technology), to use the Licensed Southern Energy
\n Technology and Improvements thereof prepared by or for Southern to
\n design, develop, Southern Services.<\/p>\n
(b) Without limiting the generality of the foregoing licenses
\ngranted in Section 2.4 (a)<\/p>\n
7
\n 11<\/p>\n
above, with respect to software included within the Licensed Southern Energy
\nTechnology, such licenses include the right to use, modify, and reproduce such
\nsoftware and Improvements thereof made by or for Southern as part of the
\nSouthern Services, in source code and object code form, and to Sell such
\nsoftware and Improvements thereof made by or for Southern, in source code and
\nobject code form, solely as part of the Southern Services.<\/p>\n
(c) Southern, its Subsidiaries and Affiliated Companies may not
\ngrant sublicenses under Sections (a) and (b) above.<\/p>\n
(d) The license granted in this Section may be assigned to a
\nPerson that succeeds to all or substantially all of the assets of Southern or
\nits Subsidiaries or Affiliated Companies, but may not be sublicensed by such
\nfuture assigns.<\/p>\n
2.5 LICENSE TO SOUTHERN ENERGY.<\/p>\n
(a) Southern grants (and agrees to cause its appropriate
\nSubsidiaries or Affiliated Companies to grant) to Southern Energy and its
\nSubsidiaries and Affiliated Companies the following personal, nonexclusive,
\nworldwide, fully paid up, royalty-free and non-transferable (except as
\nspecified in Section 8.9 below) licenses:<\/p>\n
(i) under its and their Copyrights in and to the
\n Licensed Southern Technology, (A) to reproduce and have reproduced the
\n works of authorship included in the Licensed Southern Technology and
\n Improvements thereof prepared by or for Southern Energy, in whole or
\n in part, as part of Southern Energy Services, (B) to prepare
\n Improvements or have Improvements prepared for it based upon the works
\n of authorship included in the Licensed Southern Technology in order to
\n create Southern Energy Services, (C) to distribute (by any means and
\n using any technology, whether now known or unknown, including without
\n limitation electronic transmission) copies of the works of authorship
\n included in the Licensed Southern Technology and Improvements thereof
\n prepared by or for Southern Energy to the public by sale or other
\n transfer of ownership or by rental, lease or lending, as part of
\n Southern Energy Services, and (D) to perform (by any means and using
\n any technology, whether now known or unknown, including without
\n limitation electronic transmission) and display the works of
\n authorship included in the Licensed Southern Technology and
\n Improvements thereof prepared by or for Southern Energy, as part of
\n Southern Energy Services;<\/p>\n
(ii) under its and their Database Rights in and to the
\n Licensed Southern Technology, to extract data from the databases
\n included in the Licensed Southern Technology and to re-utilize such
\n data to design, develop, manufacture and have manufactured Southern
\n Energy Services and to Sell such Southern Energy Services that
\n incorporate such data, databases and Improvements thereof prepared by
\n or for Southern Energy; and<\/p>\n
(iii) under its and their trade secrets and other
\n intellectual property rights in and to the Licensed Southern
\n Technology (except the intellectual property rights excluded from the
\n definition of Technology), to use the Licensed Southern Technology and
\n Improvements<\/p>\n
8
\n 12<\/p>\n
thereof prepared by or for Southern Energy to Sell such Southern
\n Energy Services.<\/p>\n
(b) Without limiting the generality of the foregoing licenses
\ngranted in Section 2.5(a) above, with respect to software included within the
\nLicensed Southern Technology, such licenses include the right to use, modify,
\nand reproduce such software and Improvements thereof made by or for Southern
\nEnergy as part of the Southern Energy Services, in source code and object code
\nform, and to Sell such software and Improvements thereof made by or for
\nSouthern Energy, in source code and object code form, solely as part of the
\nSouthern Energy Services.<\/p>\n
(c) Southern Energy, its Subsidiaries and Affiliated Companies
\nmay not grant sublicenses under Sections (a) and (b) above.<\/p>\n
(d) The license granted in this Section may be assigned to a
\nPerson that succeeds to all or substantially all of the assets of Southern
\nEnergy or its Subsidiaries or Affiliated Companies, but may not be sublicensed
\nby such future assigns.<\/p>\n
2.6 IDENTIFICATION OF LICENSED TECHNOLOGY. Prior to the Separation
\nDate, and thereafter from time to time as the parties identify applicable
\nTechnology, Southern Energy shall use reasonable best efforts to identify to
\nSouthern the Licensed Southern Technology, and Southern shall use reasonable
\nbest efforts to identify to Southern Energy the Licensed Southern Energy
\nTechnology. The parties shall also identify to each other the Technology each
\nbelieves should be specifically excluded from Licensed Southern Technology and
\nLicensed Southern Energy Technology. As thereafter mutually agreed upon by the
\nparties, the Licensed Southern Energy Technology and Licensed Southern
\nTechnology shall be set forth on Exhibit C and Exhibit D, respectively, as
\namended from time to time. The tangible copies of all documents or other
\nmaterials embodying excluded Technology shall either be returned to its owner
\nor destroyed, as directed by its owner. In the absence of an express exclusion,
\nTechnology within the definition of Southern Licensed Technology and Southern
\nEnergy Licensed Technology shall be licensed pursuant to Sections 2.4 and 2.5
\nherein, even if not listed in Exhibit C or Exhibit D. The parties’ senior
\nexecutives responsible for intellectual property, or their designees, shall
\nmutually agree upon such procedures as necessary or helpful to comply with the
\nrequirements of this Section. Disputes between the parties regarding this
\nSection which cannot be resolved by such procedures shall follow the procedures
\nfor disputes as set forth in the Master Separation Agreement.<\/p>\n
2.7 IMPROVEMENTS. As between the parties, after the Separation Date,
\nSouthern Energy hereby retains all right, title and interest, including all
\nintellectual property rights, in and to any Improvements to Licensed Southern
\nTechnology made by or for Southern Energy in the exercise of the licenses
\ngranted to it hereunder, subject only to the ownership of Southern in the
\nunderlying Licensed Southern Technology, and Southern hereby retains all right,
\ntitle and interest, including all intellectual property rights, in and to any
\nImprovements to Licensed Southern Energy Technology made by or for Southern in
\nthe exercise of the licenses granted to it hereunder, subject only to the
\nownership of Southern Energy in the underlying Licensed Southern Energy
\nTechnology. Upon the request of the licensing party, the licensee shall grant
\nthe licensing party a license in and to any such Improvements pursuant to the
\nterms of Section 2.4 or 2.5 herein as applicable.<\/p>\n
9
\n 13<\/p>\n
2.8 DURATION OF LICENSE. The licenses granted above to the Licensed
\nSouthern Technology and Licensed Southern Energy Technology shall continue in
\nperpetuity (or, in the case of Copyrights and Database Rights, until the
\nexpiration of the term thereof).<\/p>\n
2.9 NO PATENT LICENSES. Nothing contained in this Agreement shall be
\nconstrued as conferring to either party by implication, estoppel or otherwise
\nany license or right under any Patent or applications therefor, whether or not
\nthe exercise of any right herein granted necessarily employs an invention of
\nany existing or later issued Patent. The applicable licenses granted between
\nSouthern and Southern Energy with respect to Patents are set forth in Article
\nIV herein.<\/p>\n
2.10 THIRD PARTY TECHNOLOGY.<\/p>\n
(a) Southern hereby agrees to sublicense or to use reasonable
\ncommercial efforts to obtain, or to cause to be obtained any consent, approval
\nor amendment required to convey a license or sublicense in the Sublicensed
\nSouthern Technology to Southern Energy pursuant to the same or substantially
\nthe same terms as Southern’s license.<\/p>\n
(b) Southern Energy hereby agrees to sublicense or to use
\ncommercially reasonable efforts to obtain or cause to be obtained any consent,
\napproval or amendment required to obtain a license or sublicense in the
\nSublicensed Southern Energy Technology to Southern pursuant to the same or
\nsubstantially the same terms as Southern Energy’s license.<\/p>\n
2.11 TERMINATION.<\/p>\n
2.11.1 VOLUNTARY TERMINATION. By written notice to the other
\nparty, each party may voluntarily terminate all or a specified portion of the
\nlicenses and rights granted to it hereunder by such other party. Such notice
\nshall specify the effective date of such termination and shall clearly specify
\nany affected Technology, product or service.<\/p>\n
2.11.2 SURVIVAL. Any voluntary termination of licenses and
\nrights of a party under Section (a) herein shall not affect such party’s
\nlicenses and rights with respect to any licensed product made or service
\nfurnished prior to such termination, and shall not affect the licenses and
\nrights granted to the other party hereunder.<\/p>\n
2.11.3 NO OTHER TERMINATION. Each party acknowledges and
\nagrees that its remedy for breach by the other party of the licenses granted to
\nit hereunder or of any other provision hereof shall be, subject to the
\nrequirements of Article VI, to bring a claim to recover damages subject to the
\nlimits set forth in this Agreement and to seek any other appropriate equitable
\nrelief, other than termination of the licenses granted by it in this Agreement.<\/p>\n
ARTICLE III – TRADEMARKS
\n ALLOCATION OF OWNERSHIP AND LICENSE
\n GRANTS<\/p>\n
10
\n 14<\/p>\n
3.1 ASSIGNMENT. Southern Energy hereby grants, conveys and assigns
\n(and agrees to cause its appropriate Subsidiaries to grant, convey and assign)
\nto Southern, by execution hereof (or, where appropriate or required, by
\nexecution of separate instruments of assignment), all its (and their) right,
\ntitle and interest in and to the mark “Southern Energy” and any and all
\nvariants incorporating the mark “Southern Energy,” including all applications
\nand registrations therefor, and goodwill associated therewith, to be held and
\nenjoyed by Southern, its successors and assigns and waives any and all claims
\nto such Mark, subject to the license granted herein.<\/p>\n
3.2 LICENSE GRANT. Southern grants (and agrees to cause its
\nappropriate Subsidiaries to grant) to Southern Energy a personal, nonexclusive,
\nworldwide, fully-paid up and non-transferable (except as set forth in Section
\n8.9) license to use the Licensed Marks solely in connection with the
\nadvertisement, promotion and Sale of the Southern Energy Services.<\/p>\n
3.3 LICENSE RESTRICTIONS.<\/p>\n
(a) Once Southern Energy abandons the use of a Licensed Mark for
\nthe Southern Energy Services, then Southern Energy agrees that its license
\ngranted hereunder with respect to that Licensed Mark shall thereupon terminate.<\/p>\n
(b) Southern Energy may not use any Licensed Mark in direct
\nassociation with another non-Licensed Mark such that the two Marks appear to be
\na single Mark or in any other composite manner with any Marks of Southern
\nEnergy or any Third Party (other than the Southern Energy Business Marks as
\npermitted herein).<\/p>\n
(c) In all respects, Southern Energy’s usage of the Licensed
\nMarks pursuant to the license granted hereunder shall be in a manner consistent
\nwith the high standards, reputation and prestige represented by the Licensed
\nMarks, and any usage by Southern Energy that is inconsistent with the foregoing
\nshall be deemed to be outside the scope of the license granted hereunder. As a
\ncondition to the license granted hereunder, Southern Energy shall at all times
\npresent, position and promote the Southern Energy Business when using one or
\nmore of the Licensed Marks in a manner consistent with the high standards and
\nprestige represented by the Licensed Marks.<\/p>\n
3.4 LICENSEE UNDERTAKINGS. As a condition to the licenses granted
\nhereunder, Southern Energy undertakes to Southern that:<\/p>\n
(a) Southern Energy shall not use the Licensed Marks (or any
\nother Mark of Southern) in any manner contrary to public morals, in any manner
\nwhich is deceptive or misleading, which ridicules or is derogatory to the
\nLicensed Marks, or which compromises or reflects unfavorably upon the goodwill,
\ngood name, reputation or image of Southern or the Licensed Marks, or which
\nmight jeopardize or limit Southern’s proprietary interest therein.<\/p>\n
(b) Southern Energy shall not use the Licensed Marks in
\nconnection with any products or services other than in connection with the
\nSouthern Energy Services.<\/p>\n
(c) Southern Energy shall not (i) misrepresent to any Person the
\nscope of its authority<\/p>\n
11
\n 15<\/p>\n
under this Agreement, (ii) incur or authorize any expenses or liabilities
\nchargeable to Southern, or (iii) take any actions that would impose upon
\nSouthern any obligation or liability to a Third Party other than obligations
\nunder this Agreement, or other obligations which Southern expressly approves in
\nwriting for Southern Energy to incur on its behalf.<\/p>\n
(d) All press releases and corporate advertising and promotions
\nthat embody the Licensed Marks and messages conveyed thereby shall be
\nconsistent with the high standards and prestige represented by the Licensed
\nMarks.<\/p>\n
3.5 NON-TRADEMARK USE. Each party may make appropriate and truthful
\nreferences to the other party, the party’s services and affiliation between the
\nparties.<\/p>\n
3.6 RESERVATION OF RIGHTS. Except as otherwise expressly provided in
\nthis Agreement, Southern shall retain all rights in and to the Licensed Marks,
\nincluding without limitation:<\/p>\n
(a) All rights of ownership in and to the Licensed Marks;<\/p>\n
(b) The right to use (including the right of Southern’s
\nSubsidiaries and Affiliated Companies to use) the Licensed Marks, either alone
\nor in combination with other Marks, in connection with the marketing, offer or
\nprovision of any product or service, including any product or service which
\ncompetes with Southern Energy Business products or services; and<\/p>\n
(c) The right to license Third Parties to use the Licensed Marks.<\/p>\n
3.7 SUBLICENSES.<\/p>\n
Subject to the terms and conditions of this Agreement, including all
\napplicable Trademark Usage Guidelines and other restrictions in this Agreement,
\nSouthern Energy may grant sublicenses to its Subsidiaries and Affiliated
\nCompanies to use the Licensed Marks in accordance with the license grant above;
\nprovided, that (i) Southern Energy enters into a written sublicense agreement
\nwith each such Subsidiary or Affiliated Company sublicensee, and (ii) such
\nagreement does not include the right to grant further sublicenses other than,
\nin the case of a sublicensed Subsidiary or Affiliated Company of Southern
\nEnergy, to another Subsidiary or Affiliated Company of Southern Energy.
\nSouthern Energy shall provide copies of such written sublicense agreements to
\nSouthern upon request. If Southern Energy grants any sublicense rights pursuant
\nto this Section (a) and any such sublicensed Subsidiary or Affiliated Company
\nceases to be a Subsidiary or Affiliated Company, then the sublicense granted to
\nsuch Subsidiary pursuant to this Section shall terminate one hundred eighty
\n(180) days from the date of such cessation.<\/p>\n
3.8 ENFORCEMENT OF AGREEMENTS. Southern Energy shall take all
\nappropriate measures at Southern Energy’s expense promptly and diligently to
\nenforce the terms of any sublicense agreement or other agreement with any
\nSubsidiary or Affiliated Company, and shall restrain any such Subsidiary or
\nAffiliated Company from violating such terms, including without limitation (i)
\nmonitoring the Subsidiaries’ and Affiliated Companies’ compliance with the
\nrelevant Trademark Usage Guidelines and causing any noncomplying Subsidiary or
\nAffiliated<\/p>\n
12
\n 16<\/p>\n
Company promptly to remedy any failure, (ii) terminating such agreement and\/or
\n(iii) commencing legal action, in each case, using a standard of care
\nconsistent with Southern’s practices as of the Separation Date. In the event
\nthat Southern determines that Southern Energy has failed promptly and
\ndiligently to enforce the terms of any such agreement using such standard of
\ncare, Southern reserves the right to enforce such terms, and Southern Energy
\nshall reimburse Southern for its fully allocated direct costs and expenses
\nincurred in enforcing such agreement, plus all out-of-pocket costs and
\nexpenses, plus five percent (5%) (or, if such costs and expenses are incurred
\nmore than two (2) years after the Separation Date, ten percent (10%)).<\/p>\n
3.9 ROYALTIES. The license granted in this Article III shall be
\nroyalty-free.<\/p>\n
3.10 TRADEMARK USAGE GUIDELINES. Southern Energy and its Subsidiaries
\nand Affiliated Companies shall use the Licensed Marks only in a manner that is
\nconsistent with the Trademark Usage Guidelines.<\/p>\n
3.11 OWNERSHIP AND RIGHTS. Southern Energy agrees not to challenge the
\nownership or validity of the Licensed Marks. Southern Energy shall not
\ndisparage, dilute or adversely affect the validity of the Licensed Marks.
\nSouthern Energy’s use of the Licensed Marks shall inure exclusively to the
\nbenefit of Southern, and Southern Energy shall not acquire or assert any rights
\ntherein. Southern Energy recognizes the value of the goodwill associated with
\nthe Licensed Marks, and that the Licensed Marks may have acquired secondary
\nmeaning in the minds of the public.<\/p>\n
3.12 PROTECTION OF MARKS. Southern Energy shall assist Southern, at
\nSouthern’s request and expense, in the procurement and maintenance of
\nSouthern’s intellectual property rights in the Licensed Marks. Southern Energy
\nwill not grant or attempt to grant a security interest in the Licensed Marks,
\nor to record any such security interest in the United States Patent and
\nTrademark Office or elsewhere, against any trademark application or
\nregistration belonging to Southern. Southern Energy agrees to, and to cause its
\nSubsidiaries and Affiliated Companies to, execute all documents reasonably
\nrequested by Southern to effect further registration of, maintenance and
\nrenewal of the Licensed Marks, recordation of the license relationship between
\nSouthern and Southern Energy, and recordation of Southern Energy as a
\nregistered user. Southern makes no warranty or representation that trademark
\nregistrations have been or will be applied for, secured or maintained in the
\nLicensed Marks throughout, or anywhere within, the world. Southern Energy shall
\ncause to appear on all documents, instruments or other materials bearing the
\nLicensed Marks, such legends, markings and notices as may be required by
\napplicable law or reasonably requested by Southern.<\/p>\n
3.13 SIMILAR MARKS. Southern Energy agrees not to use or register in
\nany country any Mark that infringes Southern’s rights in the Licensed Marks, or
\nany element thereof. If any application for registration is, or has been, filed
\nin any country by Southern Energy which relates to any Mark that infringes
\nSouthern’s rights in the Licensed Marks, Southern Energy shall immediately
\nabandon any such application or registration or assign it to Southern. Southern
\nEnergy shall not challenge Southern’s ownership of or the validity of the
\nLicensed Marks or any application for registration thereof throughout the
\nworld. Southern Energy shall not use or register in any country any copyright,
\ndomain name, telephone number or any other intellectual<\/p>\n
13
\n 17<\/p>\n
property right, whether recognized currently or in the future, or other
\ndesignation which would create a likelihood of confusion or otherwise affects
\nthe ownership or rights of Southern in and to the Licensed Marks, or otherwise
\nto take any action which would adversely affect any of such ownership rights,
\nor assist anyone else in doing so. Southern Energy shall cause its
\nSubsidiaries, Affiliated Companies and Authorized Dealers to comply with the
\nprovisions of this Section.<\/p>\n
3.14 INFRINGEMENT PROCEEDINGS. In the event that Southern Energy
\nlearns of any infringement or threatened infringement of the Licensed Marks, or
\nany unfair competition, passing-off or dilution with respect to the Licensed
\nMarks, Southern Energy shall notify Southern or its authorized representative
\ngiving particulars thereof, and Southern Energy shall provide necessary
\ninformation and assistance to Southern or its authorized representatives at
\nSouthern’s expense in the event that Southern decides that proceedings should
\nbe commenced. Notwithstanding the foregoing, Southern Energy is not obligated
\nto monitor or police use of the Licensed Marks by Third Parties other than any
\nsublicenses granted by it. Southern shall have exclusive control of any
\nlitigation, opposition, cancellation or related legal proceedings. The decision
\nwhether to bring, maintain or settle any such proceedings shall be at the
\nexclusive option and expense of Southern, and all recoveries shall belong
\nexclusively to Southern. Southern Energy shall not and shall have no right to
\ninitiate any such litigation, opposition, cancellation or related legal
\nproceedings in its own name, but, at Southern’s request, agrees to be joined as
\na party in any action taken by Southern to enforce its rights in the Licensed
\nMarks. Southern shall incur no liability to Southern Energy or any other Person
\nunder any legal theory by reason of Southern’s failure or refusal to prosecute
\nor by Southern’s refusal to permit Southern Energy to prosecute, any alleged
\ninfringement by Third Parties, nor by reason of any settlement to which
\nSouthern may agree.<\/p>\n
3.15 TERMINATION.<\/p>\n
(a) By written notice to Southern, Southern Energy may
\nvoluntarily terminate all or a specified portion of the licenses and rights
\ngranted to it hereunder by Southern. Such notice shall specify the effective
\ndate of such termination and shall clearly specify any affected Licensed Marks.<\/p>\n
(b) The licenses, sublicenses and rights granted to Southern
\nEnergy hereunder shall terminate on the Change of Control Date unless extended
\nin Southern’s sole discretion and confirmed in writing.<\/p>\n
3.16 USE OF MARKS FOLLOWING TERMINATION. Southern shall not use the
\nmarks “Southern Energy,” “Southern Company Energy Marketing” or any mark
\nincorporating “Southern Energy” for eighteen (18) months from the date Southern
\nEnergy ceases use of such marks, unless shortened in Southern Energy’s sole
\ndiscretion and confirmed in writing.<\/p>\n
ARTICLE IV – PATENTS
\n ALLOCATION OF OWNERSHIP
\n AND LICENSE GRANTS<\/p>\n
4.1 PATENT OWNERSHIP. Southern Energy hereby waives any and all claims
\nof any<\/p>\n
14
\n 18<\/p>\n
right, title and interest in and to any Patents not within the definition of
\nAssigned Patents, subject to the licenses granted in this Article.<\/p>\n
4.2 LICENSE GRANTS TO SOUTHERN. Southern Energy grants (and agrees to
\ncause its appropriate Subsidiaries or Affiliated Companies to grant) to
\nSouthern, under the Southern Energy Patents, a personal, irrevocable,
\nnonexclusive, worldwide and non-transferable (except as set forth in Section
\n8.9) license solely to Sell and offer for sale Southern Services.<\/p>\n
4.3 LICENSE GRANTS TO SOUTHERN ENERGY. Southern grants (and agrees to
\ncause its appropriate Subsidiaries or Affiliated Companies to grant) to
\nSouthern Energy, under the Southern Patents, a personal, irrevocable,
\nnonexclusive, worldwide, and non-transferable (except as set forth in Section
\n8.9) license solely to Sell and offer for sale Southern Energy Services.<\/p>\n
4.4 IDENTIFICATION OF LICENSED PATENTS. Prior to the Separation Date,
\nand thereafter from time to time upon additions to the Allocated Patent Assets
\nDatabase, (a) Southern Energy shall use reasonable best efforts to identify to
\nSouthern the Southern Patents, and (b) Southern shall use reasonable best
\nefforts to identify to Southern Energy the Southern Energy Patents. The parties
\nshall also identify to each other the Patents specifically excluded from
\nSouthern Patents and Southern Energy Patents. As thereafter mutually agreed
\nupon by the parties, the Southern Patents and Southern Energy Patents shall be
\nidentified on Exhibit A, as amended from time to time. In the absence of an
\nexpress exclusion, the Patents within the definition of Southern Patents and
\nSouthern Energy Patents shall be licensed pursuant to Article IV herein. The
\nparties’ senior executives responsible for intellectual property shall mutually
\nagree upon such procedures as necessary or helpful to comply with the
\nrequirements of this Section. Disputes between the parties regarding this
\nSection which cannot be resolved by such procedures shall follow the procedures
\nfor disputes as set forth in the Master Separation Agreement.<\/p>\n
4.5 SUBLICENSE RIGHTS.<\/p>\n
(a) Southern Energy may grant sublicenses to its Subsidiaries and
\nAffiliated Companies within the scope of its license hereunder (with no right
\nto grant further sublicenses other than, in the case of a sublicensed
\nSubsidiary or Affiliated Companies, to another Subsidiary or Affiliated Company
\nof such party).<\/p>\n
(b) the license granted in this Section may be assigned to a
\nPerson that succeeds to all or substantially all of the assets of Southern
\nEnergy or its Subsidiaries or Affiliated Companies, but may not be sublicensed
\nby such future assigns.<\/p>\n
4.6 DURATION. All licenses granted herein with respect to each Patent
\nshall expire upon the expiration of the term of such Patent.<\/p>\n
4.7 ROYALTIES. The licenses granted in this Article shall be subject
\nto the same royalties (if any) as paid by Southern for the subject Patent.<\/p>\n
4.8 PATENT APPLICATIONS AND INVENTION DISCLOSURES. Each party agrees,<\/p>\n
15
\n 19<\/p>\n
at its own expense, to provide to the other party copies of any Patents, Patent
\napplications and Invention Disclosures that are listed in the Allocated Patent
\nAssets Database in the form that such Patents, Patent applications and
\nInvention Disclosures exist as of the Separation Date. Neither party has any
\nobligation to disclose or provide copies to the other party any other Patents,
\nPatent applications or Invention Disclosures. The licenses granted under this
\nAgreement cover only statutory rights under Patents and statutory rights (if
\nany) under Patent applications. Trade secret and other non-Patent licenses with
\nrespect to inventions described in Invention Disclosures and Patent
\napplications shall be solely as set forth in Article IV herein.<\/p>\n
4.9 ADDITIONAL OBLIGATIONS WITH REGARD TO SOUTHERN PATENTS. Southern
\nEnergy acknowledges that its employees and contractors who are former Southern
\nemployees and contractors have a continuing duty to assist Southern with the
\nprosecution of Southern Patent applications and, accordingly, Southern Energy
\nagrees to make available, to Southern or its counsel, inventors and other
\npersons employed by Southern Energy for interviews and\/or testimony to assist
\nin good faith in further prosecution, maintenance or litigation of the Southern
\nPatents, including the signing of documents related thereto. Any actual and
\nreasonable out-of-pocket expenses associated with such assistance shall be
\nborne by Southern, expressly excluding the value of the time of such Southern
\nEnergy personnel; provided, however, that in the case of assistance with
\nlitigation, the parties shall agree on a case by case basis on compensation, if
\nany, of Southern Energy for the value of the time of Southern Energy’s
\nemployees as reasonably required in connection with such litigation.<\/p>\n
4.10 DEFENSIVE PROTECTION MEASURES. The parties shall cooperate
\nreasonably and in good faith to the extent consistent with each party’s own
\nbusiness objectives in the event that either party is involved in Patent
\nlitigation or controversies in which it would be helped in some way by the
\nother party’s Patents or relevant knowledge. Such cooperation may include, by
\nway of example, (i) cooperation with respect to knowledge of prior art (whether
\nthe other party’s or a Third Party’s), (ii) consent to the granting of licenses
\nto such other party’s Patents, and (iii) assignment to such party of such other
\nparty’s Patents for the purpose of bringing a counterclaim against a Third
\nParty. The party requesting such cooperation shall bear the actual and
\nreasonable out-of-pocket expenses of the cooperating party (except for the
\nvalue of the time of the cooperating party’s employees).<\/p>\n
4.11 STANDARDS BODIES. The parties agree to cooperate reasonably and
\nin good faith with each other with respect to the licensing of each party’s
\nPatents in the context of standards bodies, to the extent consistent with each
\nparty’s own business objectives.<\/p>\n
4.12 ASSIGNMENT OF PATENTS. Southern shall not assign or grant any
\nrights under any of the Southern Patents unless such assignment or grant is
\nmade subject to the licenses granted in this Agreement. Southern Energy shall
\nnot assign or grant any rights under any of the Southern Energy Patents unless
\nsuch assignment or grant is made subject to the licenses granted in this
\nAgreement.<\/p>\n
4.13 RESPONSE TO REQUESTS. Each party shall, upon a request from the
\nother party sufficiently identifying any Patent or Patent application, inform
\nthe other party as to the extent to which said Patent or Patent application is
\nsubject to the licenses and other rights granted<\/p>\n
16
\n 20<\/p>\n
hereunder. If such licenses or other rights under said Patent or Patent
\napplication are restricted in scope, copies of all pertinent provisions of any
\ncontract or other arrangement creating such restrictions shall, upon request,
\nbe furnished to the party making such request, unless such disclosure is
\nprevented by such contract or other arrangement, and in such event, a statement
\nof the nature of such restriction shall be provided.<\/p>\n
4.14 RECORDATION OF LICENSES.<\/p>\n
(a) For any country, now or in the future, that requires the
\nexpress consent of all inventors or their assignees to the grant of licenses or
\nrights under Patents issued in such countries for joint inventions:<\/p>\n
(i) each party shall give such consent, or shall obtain
\n such consent from its employees, its Subsidiaries or employees of any
\n of its Subsidiaries, as required to make full and effective any such
\n licenses and rights respecting any joint invention granted to a
\n grantee hereunder by such party; and<\/p>\n
(ii) each party shall take steps that are reasonable
\n under the circumstances to obtain from Third Parties whatever other
\n consents are necessary to make full and effective such licenses and
\n rights respecting any joint invention purported to be granted by it
\n hereunder. If, in spite of such reasonable steps, such party is unable
\n to obtain the requisite consents from such Third Parties, the
\n resulting inability of such party to make full and effective its
\n purported grant of such licenses and rights shall not be considered to
\n be a breach of this Agreement.<\/p>\n
(b) Each party agrees, without demanding any further
\nconsideration, to execute (and to cause its Subsidiaries or Affiliated
\nCompanies to execute) all documents reasonably requested by the other party to
\neffect recordation of the license relationship between the parties created by
\nthis Agreement.<\/p>\n
ARTICLE V
\n CONFIDENTIALITY<\/p>\n
The terms of the Master Confidential Disclosure Agreement between the
\nparties shall apply to any Confidential Information (as defined therein) which
\nis the subject matter of this Agreement.<\/p>\n
ARTICLE VI
\n DISPUTE RESOLUTION<\/p>\n
The parties shall make a good faith attempt to resolve any dispute or
\nclaim arising out of or related to this Agreement through negotiation. Within
\nthirty (30) days after notice of a dispute or claim is given by either party to
\nthe other party, the parties’ senior executive responsible for intellectual
\nproperty (or his or her delegate) shall meet to attempt to resolve the matter.
\nSuch meeting shall constitute the vice president meeting required in Section
\n5.7(c) of the Master Separation Agreement. If the parties’ representatives are
\nunable to resolve the dispute, the<\/p>\n
17
\n 21<\/p>\n
dispute resolution procedures set forth in the Master Separation Agreement
\nshall be followed.<\/p>\n
ARTICLE VII
\n LIMITATION OF LIABILITY<\/p>\n
IN NO EVENT SHALL EITHER PARTY OR ITS SUBSIDIARIES, AFFILIATED
\nCOMPANIES, DIRECTORS, OFFICERS OR EMPLOYEES BE LIABLE TO THE OTHER PARTY OR ITS
\nSUBSIDIARIES OR AFFILIATED COMPANIES FOR ANY SPECIAL, CONSEQUENTIAL, INDIRECT,
\nINCIDENTAL OR PUNITIVE DAMAGES OR LOST PROFITS, HOWEVER CAUSED AND ON ANY
\nTHEORY OF LIABILITY (INCLUDING NEGLIGENCE) ARISING IN ANY WAY OUT OF THIS
\nAGREEMENT, WHETHER OR NOT SUCH PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF
\nSUCH DAMAGES; PROVIDED, HOWEVER, THAT THE FOREGOING LIMITATIONS SHALL NOT LIMIT
\nDAMAGES FOR INFRINGEMENT AVAILABLE TO EITHER PARTY UNDER APPLICABLE LAW IN THE
\nEVENT OF BREACH BY THE OTHER PARTY OF THE LICENSES GRANTED HEREIN AND SHALL NOT
\nLIMIT EACH PARTY’S OBLIGATIONS EXPRESSLY ASSUMED IN THE MASTER SEPARATION
\nAGREEMENT; PROVIDED FURTHER THAT THE EXCLUSION OF PUNITIVE DAMAGES SHALL APPLY
\nIN ANY EVENT.<\/p>\n
ARTICLE VIII
\n MISCELLANEOUS PROVISIONS<\/p>\n
8.1 DISCLAIMER. EACH PARTY ACKNOWLEDGES AND AGREES THAT ALL
\nTECHNOLOGY, INTELLECTUAL PROPERTY AND ANY OTHER INFORMATION OR MATERIALS
\nLICENSED OR PROVIDED HEREUNDER IS LICENSED OR PROVIDED ON AN “AS IS” BASIS, AND
\nTHAT NEITHER PARTY NOR ANY OF ITS SUBSIDIARIES OR AFFILIATED COMPANIES MAKES
\nANY REPRESENTATIONS OR EXTENDS ANY WARRANTIES WHATSOEVER, EXPRESS, IMPLIED OR
\nSTATUTORY, WITH RESPECT THERETO, INCLUDING WITHOUT LIMITATION ANY IMPLIED
\nWARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, TITLE,
\nENFORCEABILITY OR NON-INFRINGEMENT. Without limiting the generality of the
\nforegoing, neither party nor any of its Subsidiaries or Affiliated Companies
\nmakes any warranty or representation that any manufacture, use, importation,
\noffer for sale or sale of any product or service will be free from infringement
\nof any intellectual property right of any Third Party.<\/p>\n
8.2 NO IMPLIED LICENSES. Nothing contained in this Agreement shall be
\nconstrued as conferring any rights by implication, estoppel or otherwise, under
\nany intellectual property right, other than the rights expressly granted in
\nthis Agreement. Neither party is required hereunder to furnish or disclose to
\nthe other any technical or other information (including copies of the Licensed
\nSouthern Energy Technology and the Licensed Southern Technology), except as
\nspecifically provided herein.<\/p>\n
8.3 INFRINGEMENT SUITS. Neither party shall have any obligation
\nhereunder to institute any action or suit against Third Parties for
\ninfringement of any technology or intellectual property licensed to the other
\nparty hereunder, or to defend any action or suit brought by a Third<\/p>\n
18
\n 22<\/p>\n
Party which challenges or concerns the validity of any of such rights or which
\nclaims that any technology or intellectual property assigned or licensed to the
\nother party hereunder infringes any technology or other intellectual property
\nright of any Third Party or constitutes a misappropriated trade secret of any
\nThird Party. Southern shall not have any right to institute any action or suit
\nagainst Third Parties for infringement of any technology or intellectual
\nproperty of Southern Energy and Southern Energy shall not have any right to
\ninstitute any action or suit against Third Parties for infringement of any of
\nthe technology or intellectual property of Southern.<\/p>\n
8.4 NO OTHER OBLIGATIONS. NEITHER PARTY ASSUMES ANY RESPONSIBILITIES
\nOR OBLIGATIONS WHATSOEVER, OTHER THAN THE RESPONSIBILITIES AND OBLIGATIONS
\nEXPRESSLY SET FORTH IN THIS AGREEMENT OR A SEPARATE WRITTEN AGREEMENT BETWEEN
\nTHE PARTIES. Without limiting the generality of the foregoing, neither party,
\nnor any of its Subsidiaries or Affiliated Companies, is obligated to provide
\nany technical assistance.<\/p>\n
8.5 ENTIRE AGREEMENT. This Agreement, the Master Separation Agreement
\nand the other Ancillary Agreements (as defined in the Master Separation
\nAgreement) constitute the entire agreement between the parties with respect to
\nthe subject matter hereof and shall supersede all prior written and oral and
\nall contemporaneous oral agreements and understandings with respect to the
\nsubject matter hereof. To the extent there is a conflict between this Agreement
\nand the Master Separation Agreement between the parties, the terms of this
\nAgreement shall govern.<\/p>\n
8.6 GOVERNING LAW. This Agreement shall be governed by and construed
\nand enforced in accordance with the laws of the State of Georgia as to all
\nmatters regardless of the laws that might otherwise govern under principles of
\nconflicts of laws applicable thereto.<\/p>\n
8.7 DESCRIPTIVE HEADINGS. The descriptive headings herein are inserted
\nfor convenience of reference only and are not intended to be part of or to
\naffect the meaning or interpretation of this Agreement.<\/p>\n
8.8 NOTICES. All notices and other communications hereunder shall be
\nin writing and shall be deemed to have been duly given when delivered in
\nperson, by telecopy with answer back, by express or overnight mail delivered by
\na nationally recognized air courier (delivery charges prepaid), by registered
\nor certified mail (postage prepaid, return receipt requested) to the respective
\nparties as follows:<\/p>\n
19
\n 23<\/p>\n
if to Southern:
\n The Southern Company
\n 270 Peachtree Street, N.W.
\n Atlanta, Georgia 30303
\n Attention: General Counsel
\n Telecopy: (404) 506-0564<\/p>\n
if to Southern Energy:
\n Southern Energy, Inc.
\n 900 Ashwood Parkway
\n Suite 500
\n Atlanta, Georgia 30338-4780
\n Attention: General Counsel
\n Telecopy: (770) 821-6767<\/p>\n
or to such other address as the party to whom notice is given may have
\npreviously furnished to the other in writing in the manner set forth above. Any
\nnotice or communication delivered in person shall be deemed effective on
\ndelivery. Any notice or communication sent by telecopy or by air courier shall
\nbe deemed effective on the first Business Day following the day on which such
\nnotice or communication was sent. Any notice or communication sent by
\nregistered or certified mail shall be deemed effective on the third Business
\nDay following the day on which such notice or communication was mailed. As used
\nin this Section 8.8, “Business Day” means any day other than a Saturday, a
\nSunday or a day on which banking institutions located in the State of Georgia
\nare authorized or obligated by law or executive order to close.<\/p>\n
8.9 NONASSIGNABILITY. Neither party may, directly or indirectly, in
\nwhole or in part, whether by operation of law or otherwise, assign or transfer
\nthis Agreement, without the other party’s prior written consent, and any
\nattempted assignment, transfer or delegation without such prior written consent
\nshall be voidable at the sole option of such other party. Notwithstanding the
\nforegoing, each party (or its permitted successive assignees or transferees
\nhereunder) may assign or transfer this Agreement as a whole without consent to
\na Person that succeeds to all or substantially all of the business or assets of
\nsuch party. Without limiting the foregoing, this Agreement will be binding upon
\nand inure to the benefit of the parties and their permitted successors and
\nassigns.<\/p>\n
8.10 SEVERABILITY. If any term or other provision of this Agreement is
\ndetermined by a nonappealable decision of a court, administrative agency or
\narbitrator to be invalid, illegal or incapable of being enforced by any rule of
\nlaw or public policy, all other conditions and provisions of this Agreement
\nshall nevertheless remain in full force and effect so long as the economic or
\nlegal substance of the transactions contemplated hereby is not affected in any
\nmanner materially adverse to either party. Upon such determination that any
\nterm or other provision is invalid, illegal or incapable of being enforced, the
\nparties hereto shall negotiate in good faith to modify this Agreement so as to
\neffect the original intent of the parties as closely as possible in an
\nacceptable manner to the end that the transactions contemplated hereby are
\nfulfilled to the fullest extent possible.<\/p>\n
20
\n 24<\/p>\n
8.11 FAILURE OR INDULGENCE NOT WAIVER; REMEDIES CUMULATIVE. No failure
\nor delay on the part of either party hereto in the exercise of any right
\nhereunder shall impair such right or be construed to be a waiver of, or
\nacquiescence in, any breach of any representation, warranty or agreement
\nherein, nor shall any single or partial exercise of any such right preclude
\nother or further exercise thereof or of any other right. All rights and
\nremedies existing under this Agreement are cumulative to, and not exclusive of,
\nany rights or remedies otherwise available.<\/p>\n
8.12 AMENDMENT. No change or amendment will be made to this Agreement
\nexcept by an instrument in writing signed on behalf of each of the parties to
\nsuch agreement.<\/p>\n
8.13 COUNTERPARTS. This Agreement may be executed in two or more
\ncounterparts, all of which, taken together, shall be considered to be one and
\nthe same instrument.<\/p>\n
8.14 GOVERNMENTAL APPROVAL. The parties acknowledge that in the past
\nthey have licensed Technology to each other in accordance with certain existing
\nregulatory authority. The parties intend to implement this Agreement to the
\nfullest extent permissible under such existing regulatory authority and to
\ncooperate toward obtaining and maintaining in effect such governmental agency
\napprovals as may be required in order to implement this Agreement as fully as
\npossible in accordance with its terms, and to cooperate so as to revise and
\nmutually agree on such revisions as become necessary in the event regulatory
\napproval is withheld.<\/p>\n
21
\n 25<\/p>\n
WHEREFORE, the parties have signed this Technology and Intellectual
\nProperty Ownership and License Agreement effective as of the date first set
\nforth above.<\/p>\n
THE SOUTHERN COMPANY SOUTHERN ENERGY, INC.:<\/p>\n
By: By:
\n —————————– ——————————
\nName: H. Allen Franklin Name: S. Marce Fuller
\nTitle: President and Chief Title: President and Chief
\n Operating Officer Executive Officer<\/p>\n
22
\n 26<\/p>\n
EXHIBIT A
\n “ALLOCATED PATENT ASSETS DATABASE”
\n (SECTION 1.2)<\/p>\n
A. Southern Energy, Inc.<\/p>\n
None.<\/p>\n
B. Southern Company<\/p>\n
1. 5,968,254, Oct. 19, 1999, Concrete mix containing coal ash and
\n organic plant ash, Dodgen, Harold Dean, Hiram, Georgia Larrimore,
\n Charles Lamar, Birmingham, Alabama, Southern Company Services,
\n Birmingham, Alabama. (LICENSED)<\/p>\n
2. 5,951,200, Sep. 14, 1999, Enclosement to shield structure which
\n secures entrance-deterring cap to manhole opening from water and dirt
\n containments, Barton, David L., Avondale Estates, Georgia, Barton
\n Southern Company, Inc., Conyers, Georgia.<\/p>\n
3. 5,912,916, Jun. 15, 1999, Electric furnace with insulated electrodes
\n and process for producing molten metals, Hendrix, Charles F., Pell
\n City, Alabama, Alabama Power Company, Birmingham, Alabama.<\/p>\n
4. 5,882,374, Mar. 16, 1999, Process for producing foundry iron with an
\n insulated electrode, Hendrix, Charles F., Pell City, Alabama, Alabama
\n Power Company, Birmingham, Alabama.<\/p>\n
5. 5,834,686, Nov. 10, 1998, Insulated electrical equipment, Barrett,
\n Donald Christopher, Swindon, England Cook, Michael Robert, Swindon,
\n England Spalding, Matthew, Newark, Delaware, Raychem Limited,
\n Swindon, United Kingdom (03), Date Transaction Recorded: May 17, 1999
\n ASSIGNMENT OF ASSIGNOR’S INTEREST (SEE DOCUMENT FOR DETAILS). GEORGIA
\n POWER COMPANY 333 PIEDMONT AVENUE ATLANTA, GEORGIA 30308 Reel & Frame
\n Number: 009974\/0524. (LICENSED)<\/p>\n
6. 5,821,656, Oct. 13, 1998, Magnetic bearing with reduced
\n control-flux-induced rotor loss, Colby, Roy S., Tariffville,
\n Connecticut Piech, Zbigniew, E. Hampton, Connecticut, United
\n Technologies Corporation, Hartford, Connecticut (02), Date
\n Transaction Recorded: Mar. 31, 1999 ASSIGNMENT OF ASSIGNOR’S INTEREST
\n (SEE DOCUMENT FOR DETAILS). SOUTHERN COMPANY ENERGY SOLUTIONS, INC.
\n 241 RALPH MCGILL BOULEVARD<\/p>\n
27<\/p>\n
ATLANTA, GEORGIA 30308 Reel & Frame Number: 009857\/0726. (LICENSED)<\/p>\n
7. 5,747,907, May 5, 1998, Backup bearings for positive re-centering of
\n magnetic bearings, Miller, Robin M., Ellington, Connecticut, United
\n Technologies Automotive, Inc., Dearborn, Michigan (02), Date
\n Transaction Recorded: Jul. 09, 1998 ASSIGNMENT OF ASSIGNOR’S INTEREST
\n (SEE DOCUMENT FOR DETAILS). SOUTHERN COMPANY ENERGY SOLUTIONS, INC.
\n 241 RALPH MCGILL BOULEVARD ATLANTA, GEORGIA 30308 Reel & Frame
\n Number: 9297\/0204. (LICENSED)<\/p>\n
8. 5,682,015, Oct. 28, 1997, Squirrel shield device, Harben, Michael,
\n Acworth, Georgia, Georgia Power Company, Atlanta, Georgia. (LICENSED)<\/p>\n
9. 5,679,922, Oct. 21, 1997, Squirrel shield device, Harben, Michael,
\n Woodstock, Georgia, Georgia Power Company, Atlanta, Georgia.
\n (LICENSED)<\/p>\n
10. 5,654,976, Aug. 5, 1997, Method for melting ferrous scrap metal and
\n chromite in a submerged arc furnace to produce a chromium containing
\n iron, Cowx, Peter, Oslo, Norway Rognsaa, Hjalte, Oslo, Norway, Elkem
\n Technology a\/s, Norway (03), Date Transaction Recorded: Jun. 16, 1998
\n ASSIGNMENT OF ASSIGNOR’S INTEREST (SEE DOCUMENT FOR DETAILS). ALABAMA
\n POWER COMPANY, AN ALABAMA CORPORATION BIRMINGHAM, ALABAMA Reel & Frame Number: 009289\/0025 Date Transaction Recorded: Feb. 12, 1999
\n FREE FORM TEXT GRANT-BACK LICENSE ELKEM ASA HOFFSVEIEN 65 B OSLO,
\n NORWAY N-0303 Reel & Frame Number: 009746\/0756.<\/p>\n
11. 5,640,472, Jun. 17, 1997, Fiber optic sensor for magnetic bearings,
\n Meinzer, Richard A., Glastonbury, Connecticut Grudkowski, Thomas W.,
\n Glastonbury, Connecticut Polley, Evan C., Hartford, Connecticut,
\n United Technologies Corporation, Hartford, Connecticut (02), Date
\n Transaction Recorded: Mar. 31, 1999 ASSIGNMENT OF ASSIGNOR’S INTEREST
\n (SEE DOCUMENT FOR DETAILS). SOUTHERN COMPANY ENERGY SOLUTIONS, INC.
\n 241 RALPH MCGILL BOULEVARD ATLANTA, GEORGIA 30308 Reel & Frame
\n Number: 009857\/0726. (LICENSED)<\/p>\n
12. 5,634,960, Jun. 3, 1997, Scrap melting in a submerged arc furnace,
\n Cowx, Peter, Oslo, Norway, Elkem A\/S, Norway (03), Date Transaction
\n Recorded: Jun. 16, 1998 ASSIGNMENT OF ASSIGNOR’S INTEREST (SEE
\n DOCUMENT FOR DETAILS). ALABAMA POWER COMPANY, AN ALABAMA CORPORATION,
\n BIRMINGHAM, ALABAMA Reel & Frame Number: .009289\/0025 Date
\n Transaction Recorded: Feb. 12, 1999 FREE FORM TEXT GRANT-BACK LICENSE
\n ELKEM ASA HOFFSVEIEN 65 B OSLO, NORWAY N-0303 Reel & Frame Number:
\n 009748\/0756.<\/p>\n
2
\n 28<\/p>\n
13. 5,590,569, Jan. 7, 1997, Energy storage flywheel device, Nardone,
\n Vincent C., South Windsor, Connecticut Thompson, Mark S., Vernon,
\n Connecticut Meyer, Thomas G., Lebanon, Connecticut, United
\n Technologies Corporation, Hartford, Connecticut, Date Transaction
\n Recorded: Mar. 13, 1998 ASSIGNMENT OF ASSIGNOR’S INTEREST (SEE
\n DOCUMENT FOR DETAILS). SOUTHERN COMPANY ENERGY SOLUTIONS, INC. 241
\n RALPH MCGILL BLVD. ATLANTA, GEORGIA 30308 Reel & Frame Number:
\n 9027\/0701 Date Transaction Recorded: Apr. 29, 1998 ASSIGNMENT OF
\n ASSIGNOR’S INTEREST (SEE DOCUMENT FOR DETAILS). SOUTHERN COMPANY
\n ENERGY SOLUTIONS, INC. 241 RALPH MCGILL BLVD. ATLANTA, GEORGIA 30308
\n Reel & Frame Number: 9138\/0243 Date Transaction Recorded: Aug. 26,
\n 1998 ASSIGNMENT OF ASSIGNOR’S INTEREST (SEE DOCUMENT FOR DETAILS).
\n SOUTHERN COMPANY ENERGY SOLUTIONS, INC. 241 RALPH MCGILL BLVD.
\n ATLANTA, GEORGIA 30308 Reel & Frame Number: 9405\/0733. (LICENSED)<\/p>\n
14. 5,588,982, Dec. 31, 1996, Process for producing foundry iron,
\n Hendrix, Charles F., Pell City, Alabama, Alabama Power Company,
\n Birmingham, Alabama, Date Transaction Recorded: Jun. 16, 1998
\n ASSIGNMENT OF ASSIGNOR’S INTEREST (SEE DOCUMENT FOR DETAILS). ALABAMA
\n POWER COMPANY, AN ALABAMA CORPORATION BIRMINGHAM, ALABAMA Reel & Frame Number: 009289\/0025 Date Transaction Recorded: Feb. 12, 1999
\n FREE FORM TEXT GRANT-BACK LICENSE ELKEM ASA HOFFSVEIEN 65 B OSLO,
\n NORWAY 1-0303 Reel & Frame Number: 009748\/0756.<\/p>\n
15. 5,588,754, Dec. 31, 1996, Backup bearings for extreme speed touch
\n down Applications, Miller, Robin M., Ellington, Connecticut, United
\n Technologies Automotive, Inc., Dearborn, Michigan, Date Transaction
\n Recorded: Jul. 9, 1998 ASSIGNMENT OF ASSIGNOR’S INTEREST (SEE
\n DOCUMENT FOR DETAILS). SOUTHERN COMPANY ENERGY SOLUTIONS, INC. 241
\n RALPH MCGILL BOULEVARD ATLANTA, GEORGIA 30308 Reel & Frame Number:
\n 9297\/0204. (LICENSED)<\/p>\n
16. 5,586,471, Dec. 24, 1996, Energy storage flywheel device, Nardone,
\n Vincent C., South Windsor, Connecticut Thompson, Mark S., Vernon,
\n Connecticut Meyer, Thomas G., Lebanon, Connecticut, United
\n Technologies Corporation, Hartford, Connecticut, Date Transaction
\n Recorded: Mar. 13, 1998 ASSIGNMENT OF ASSIGNOR’S INTEREST (SEE
\n DOCUMENT FOR DETAILS). SOUTHERN COMPANY ENERGY SOLUTIONS, INC. 241
\n RALPH MCGILL BLVD. ATLANTA, GEORGIA 30308 Reel & Frame Number:
\n 9027\/0701 Date Transaction Recorded: Apr. 29, 1998 ASSIGNMENT OF
\n ASSIGNOR’S INTEREST (SEE DOCUMENT FOR DETAILS). SOUTHERN COMPANY
\n ENERGY SOLUTIONS, INC. 241 RALPH MCGILL BLVD. ATLANTA, GEORGIA 30308
\n Reel & Frame Number: 9138\/0243 Date Transaction Recorded: Aug. 26,
\n 1998 ASSIGNMENT OF ASSIGNOR’S INTEREST (SEE DOCUMENT FOR DETAILS).
\n SOUTHERN COMPANY ENERGY<\/p>\n
3
\n 29<\/p>\n
SOLUTIONS, INC., 241 RALPH MCGILL BLVD. ATLANTA, GEORGIA 30308 Reel & Frame Number: 9405\/0733. (LICENSED)<\/p>\n
17. 5,481,198, Jan. 2, 1996, Method and device for measuring corrosion on
\n a portion of a metallic path carrying an undetermined load current,
\n Patel, Shashikant G., Atlanta, Georgia, The Georgia Power Company,
\n Atlanta, Georgia.<\/p>\n
18. 5,479,059, Dec. 26, 1995, Thin film superconductor magnetic bearings,
\n Weinberger, Bernard R., Avon, Connecticut, United Technologies
\n Corporation, Hartford, Connecticut (02), Date Transaction Recorded:
\n Apr. 29, 1996 ASSIGNMENT OF ASSIGNOR’S INTEREST (SEE DOCUMENT FOR
\n DETAILS). UNITED TECHNOLOGIES AUTOMOTIVE INC. DEARBORN, MICHIGAN Reel
\n & Frame Number: 7921\/0516 Date Transaction Recorded: Jun. 22, 1998
\n ASSIGNMENT OF ASSIGNOR’S INTEREST (SEE DOCUMENT FOR DETAILS) –
\n SOUTHERN COMPANY ENERGY SOLUTIONS, INC. 241 RALPH MCGILL BOULEVARD
\n ATLANTA, GEORGIA 30308 Reel & Frame Number: 9257\/0724. (LICENSED)<\/p>\n
19. 5,460,240, Oct. 24, 1995, Stabilized ladder and platform, Jones,
\n Cecil G., Gulfport, Mississippi, Mississippi Power Company, Gulfport,
\n Mississippi. (LICENSED)<\/p>\n
20. 5,452,625, Sep. 26, 1995, Energy storage flywheel device, Nardone,
\n Vincent C., South Windsor, Connecticut Thompson, Mark S., Vernon,
\n Connecticut Meyer, Thomas G., Lebanon, Connecticut, United
\n Technologies Corporation, Hartford, Connecticut, Date Transaction
\n Recorded: Apr. 29, 1996 ASSIGNMENT OF ASSIGNOR’S INTEREST (SEE
\n DOCUMENT FOR DETAILS). UNITED TECHNOLOGIES AUTOMOTIVE, INC. DEARBORN,
\n MICHIGAN Reel & Frame Number: 7921\/0524 Date Transaction recorded:
\n Oct. 22, 1996 ASSIGNMENT OF ASSIGNOR’S INTEREST (SEE DOCUMENT FOR
\n DETAILS). THE SOUTHERN COMPANY, ATLANTA, GEORGIA Reel & Frame Number:
\n 8194\/0658 Date Transaction Recorded: Nov. 18, 1997 ASSIGNMENT OF
\n ASSIGNOR’S INTEREST (SEE DOCUMENT FOR DETAILS). SOUTHERN DEVELOPMENT
\n AND INVESTMENT GROUP, INC., THE 333 PIEDMONT AVENUE ATLANTA, GEORGIA
\n 30308 Reel & Frame Number: 8800\/0972 Date Transaction Recorded: Apr.
\n 29, 1998 ASSIGNMENT OF ASSIGNOR’S INTEREST (SEE DOCUMENT FOR
\n DETAILS). SOUTHERN COMPANY ENERGY SOLUTIONS, INC. 241 RALPH MCGILL
\n BLVD. ATLANTA, GEORGIA 30308 Reel & Frame Number: 9138\/0243.
\n (LICENSED)<\/p>\n
21. 5,387,451, Feb. 7, 1995, Flywheel containment device, Miller, Robin
\n M., Ellington, Connecticut, United Technologies Corporation,
\n Hartford, Connecticut, Date Transaction Recorded: Sep. 18, 1995
\n ASSIGNMENT OF ASSIGNOR’S INTEREST (SEE DOCUMENT FOR DETAILS) – UNITED
\n TECHNOLOGIES AUTOMOTIVE, INC. DEARBORN, MICHIGAN Reel & Frame Number:<\/p>\n
4
\n 30<\/p>\n
7658\/0048 Date Transaction Recorded: Oct. 22, 1996 ASSIGNMENT OF
\n ASSIGNOR’S INTEREST (SEE DOCUMENT FOR DETAILS). THE SOUTHERN COMPANY,
\n ATLANTA, GEORGIA Reel & Frame Number: 8186\/0791 Date Transaction
\n Recorded: Nov. 18, 1997 ASSIGNMENT OF ASSIGNOR’S INTEREST (SEE
\n DOCUMENT FOR DETAILS) SOUTHERN DEVELOPMENT AND INVESTMENT GROUP,
\n INC., THE 333 PIEDMONT AVENUE ATLANTA, GEORGIA 30308 Reel & Frame
\n Number: 8800\/0972 Date Transaction Recorded: Apr. 29, 1998 ASSIGNMENT
\n OF ASSIGNOR’S INTEREST (SEE DOCUMENT FOR DETAILS). SOUTHERN COMPANY
\n ENERGY SOLUTIONS, INC. 241 RALPH MCGILL BLVD. ATLANTA, GEORGIA 30308
\n Reel & Frame Number: 9138\/0243. (LICENSED)<\/p>\n
22. 5,058,272, Oct. 22, 1991, Tool apparatus for applying large forces,
\n Steube, Gary J., Pass Christian, Mississippi, Mississippi Power
\n Company, Gulfport, Mississippi.<\/p>\n
23. 4,868,547, Sep. 19, 1989, Transformer alarm annunciator, Thomas,
\n Clifford .1 Hephzibah, Georgia Johnson, John P., Evans, Georgia,
\n Georgia Power Company, Atlanta, Georgia. (LICENSED)<\/p>\n
24. 4,833,917, May 30, 1989, Three-component velocity probe for large
\n scale application, Wilson, Steve M., Birmingham, Alabama, Southern
\n Company Services, Inc., Birmingham, Alabama. (LICENSED)<\/p>\n
25. 4,828,943, May 9, 1989, Battery having indicia for correcting
\n specific gravity determination at varying electrolyte levels,
\n Pritchard, Sue P., Birmingham, Alabama, Southern Company Services,
\n Inc., Atlanta, Georgia. (LICENSED)<\/p>\n
26. 4,776,180, Oct. 11, 1988, Updraft integrated heat pump, Patton, Sr.,
\n James M., Gulfport, Mississippi Blackshaw, Andrew L., Dunwoody,
\n Georgia Reid, Matthew S., Atlanta, Georgia Channell, Ray E., Decatur,
\n Georgia Hogan, James T., Roswell, Georgia McGuffey, Jerry O., Stone
\n Mountain, Georgia, Mississippi Power Company, Gulfport, Mississippi.<\/p>\n
27. 4,647,296, Mar. 3, 1987, Spacers for straightening warped
\n precipitator curtains, Tuck, Morris B., Pascagoula, Mississippi,
\n Mississippi Power Company, Gulfport, Mississippi. (LICENSED)<\/p>\n
28. 4,598,557, Jul. 8, 1986, Integrated heat pump water heater, Robinson,
\n Glen P., Atlanta, Georgia Blackshaw, Andrew L., Dunwoody, Georgia,
\n Southern Company Services, Inc., Atlanta, Georgia.<\/p>\n
29. 4,497,630, Feb. 5, 1985, Kit for teaching characteristics and use of
\n Electrical devices, Oliver, Roland A. G., Tuscaloosa, Alabama,
\n Alabama Power Company, Birmingham, Alabama.<\/p>\n
5
\n 31<\/p>\n
30. 4,252,398, Feb. 24, 1981, Electric power meter, Avara, Teddy W.,
\n Clinton, Michigan Dixon, James A., Clinton, Michigan, Mississippi
\n Power and Light Company, Jackson, Michigan a part interest.<\/p>\n
C. Joint Patents<\/p>\n
None.<\/p>\n
6
\n 32<\/p>\n
EXHIBIT B
\n “LICENSED MARKS”
\n (SECTION 1.12)<\/p>\n
SOUTHERN ENERGY<\/p>\n
All marks incorporating “SOUTHERN ENERGY”<\/p>\n
TRIANGLE LOGO<\/p>\n
ENERGY TO SERVE YOUR WORLD<\/p>\n
SOUTHERN COMPANY ENERGY MARKETING<\/p>\n
SOUTHERN COMPANY<\/p>\n
33<\/p>\n
EXHIBIT C
\n “LICENSED SOUTHERN ENERGY TECHNOLOGY”
\n (SECTION 1.13)<\/p>\n
None.<\/p>\n
34<\/p>\n
EXHIBIT D
\n “LICENSED SOUTHERN TECHNOLOGY”
\n (SECTION 1.14)<\/p>\n
\n
\nEXHIBIT D
\nSOFTWARE DESCRIPTION
\n75 Check Environmental software
\nACCC Sort PSSE (application) results sorting software
\nAVM Account Validation for STARS
\nCFM Consolidated financial modeling software
\nCHEM RTK Chemical analysis software
\nHowler Weather regression analysis model
\nLoad Forecast Viewer Load forecasting software
\nMobius Document Direct Viewing SCS reports
\nPeopleNet\/JobNet Custom web application
\nPPAT Financial performance projection tool<\/p>\n SHIPS HUMAN RESOURCES
\n INFORMATION SYSTEM
\nSTARS Timekeeping system<\/p>\n
METHODS, MANUALS, OTHER DESCRIPTION
\nCorporate Welding Manual SCS welding procedure
\nCorporate Auditing Manual SCS auditing procedure
\nGeneral Specification for Boiler Tubes & Tube
\nSections
\nPerformance Management Philosophy
\nPersonal Leadership Questionnaire 360 degree feedback survey
\nVision Progress Survey Survey, feedback, action & follow-up
\n process
\nSkills Training
\nGPC Positive Discipline Program
\nWorkforce Planning
\nSoco College Individual Development Planning
\nWorkboook
\nAction Forum Process Power plant problem-solving process
\nSRCM Workstation Streamlined Reliability-Centered
\n Maintenance
\nNew Generation Power Island
\nTechnical Specifications for Condenser & Auxiliaries
\nTechnical Specifications for Combined Cycle
\nPower Plants
\nTechnical Specifications for Steam Turbine for
\nCombined Cycle Power Plants
\nGeneral Specifications for Unit Reserve
\nAuxiliaries Transformers
\nGeneral Specifications for Generator Step-Up
\nPower Transformers
\nTechnical Specifications for Instrumentation & Control Equipment
\n<\/c><\/s><\/table>\n
35<\/p>\n
\n
\n GENERAL PROCEDURE #2075 PLANT CLEARANCE AND
\n TAGGING PROCEDURE
\nContractor Control Manual
\nSCS Compliance Support Documents
\nSC Audit Program Overview and Safety & Health
\nProtocols
\nSC Environmental Audit Protocols
\nGPC Safety & Health Programs
\nDevelopment Methodology
\nMaintenance Methodology
\nDevelopment Project Plan Template & supporting SCS IR methodology
\nmethodology
\nMaintenance Project Plan Template & supporting SCS IR methodology
\nmethodology
\nVision Progress Survey Survey, feedback, action & follow-up
\n process
\nSkills Training
\nGPC Positive Discipline Program
\nWorkforce Planning
\nSoco College Individual Development Planning
\nWorkbook
\nPerformance Management Philosophy
\nPersonal Leadership Questionnaire 360 degree feedback survey
\nCoal Gasification Studies performed for SEI
\nprojects in Florida and Europe
\nAction Forum Process Power plant problem-solving process
\n<\/c><\/s><\/table>\n 36<\/p>\n
EXHIBIT E
\n “SOUTHERN ENERGY OWNED TECHNOLOGY”
\n (SECTION 1.23)<\/p>\n
1. Southern Company Energy Marketing Technology<\/p>\n
37<\/p>\n
EXHIBIT F
\n “SUBLICENSED SOUTHERN ENERGY TECHNOLOGY”
\n (SECTION 1.26)<\/p>\n
None.<\/p>\n
38<\/p>\n
EXHIBIT G
\n “SUBLICENSED SOUTHERN TECHNOLOGY”
\n (SECTION 1.27)<\/p>\n
\n
\nSYSTEM: SOFTWARE & HARDWARE DESCRIPTION<\/p>\n3Com Hubs, data switches
\nACCS Sort Sorts PSSE (see below) software results
\nACL for Windows Audit software
\nCEMS Emission monitoring system
\nCorp Tax \/ Corp Int’l Tax Tax reporting software
\nE-monitor Odyssey Vibration monitoring analytic software
\nEnerlink Energy Management software for C&I accounts
\nEntek Vibration monitoring software
\nEnvironmental Compliance Tracking of plant’s compliance activities
\nManagement System
\nExpress Options Employee stock grant option software
\nFront Page Web editing software (Microsoft)
\nGRS Web Page* Governmental Resources System web page
\nHenwood suite of dispatching products Dispatching tool
\nHewlett Packard Operating System
\nIBM Server Servers
\nInternet Router
\nIPP database Independent Power Producer reports
\nLDIS Legal Department Information System
\nMaximo Work order management system
\nMeta Group Technology research service
\nMicro Gads NERC GADS reporting software
\nss. Microsoft Desktop suite of Microsoft products
\nss. Microsoft contract for CEPA’s Home Run
\n environment
\nMV90 Meter data collection software
\nMyriad Electronic document viewer
\nNortel VPN Boxes VPN Boxes
\nOracle database Database license
\nOracle Financials (incl. Purchasing) Financial (ERP) suite
\nParagon Construction scheduling and budgeting
\n software
\nPI Plant historian\/ plant information system
\nPivotal Relationship 99 Customer relationship management suite
\nPolycom VC Equipments Video conference equipment
\nPower Dat, Coal Dat, Gas Dat, Base Case, Power Map Historical power market database,
\nPower Player Tax credit \/ modeling calculation software
\nPrism Compensation market pricing software
\nPSSE Transmission planning study software
\nSchenk Vibration Analysis Vibration monitoring system
\nSecretariat SoCo Corporate Secretary function database
\n<\/c><\/s><\/table>\n
39<\/p>\n
\n
\nSiemens 3 Com switches, PABX
\nToxic Release Inventory Environmental reporting software
\nVisio Graphics software
\nWonderware Plant historian\/plant information system
\nWRQ Billing system
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