Master Technical Development Agreement

Exhibit 10.32


MASTER TECHNICAL DEVELOPMENT AGREEMENT


This MASTER TECHNICAL DEVELOPMENT AGREEMENT ("Development Agreement") is entered into as of June 12, 2001 ("Execution Date") by QUANTUM TECHNOLOGIES WORLDWIDE, INC., a Delaware corporation ("Quantum") and GENERAL MOTORS CORPORATION, a Delaware corporation ("GM"), each a Party and collectively the Parties. This Development Agreement shall have an Effective Date of January 1, 2001.


Recitals


A. Quantum designs, develops and manufactures advanced gaseous storage and handling modules, electronic controls and software, and systems integration involving compressed gaseous fuels.


B. GM designs and develops Fuel Cell Systems (defined below).


C. The Parties seek to cooperate with each other under this Development Agreement to facilitate the integration, interface, and optimization of the GM Fuel Cell Systems coupled with the Quantum gaseous fuel storage and handling modules.


Agreement


1 Definitions.


1.1 "Affiliate" of a Party means any person or entity which, through one or more intermediaries, controls, is controlled by or is under common control with such Party. "Control" shall be presumed if a person or entity holds the power, by equity ownership or otherwise, to elect at least fifty percent (50%) of the directors of the other person or entity or otherwise to direct the policies and business activities of the other person or entity.


1.2 "Corporate Alliance Agreement" means that certain Corporate Alliance Agreement executed between the Parties on June 12, 2001.


1.3 "Fuel Cell System" means a cell or cells, and/or its/their related customary support equipments (i.e., alone or in combination with cell(s)), for the electrochemical generation of electricity from hydrogen and oxygen (or generation of hydrogen from electricity and water), including (1) fuel cells and any other devices that generate electricity from hydrogen or hydrogen-rich fuel, (2) electrolyzers and any other devices that generate hydrogen from water, and (3) fuel processors and any other devices that produce hydrogen from hydrogen- containing materials other than water.


1.4 "GM Interface Technology" means Interface Technology used specifically to integrate the Quantum Products with the GM Products, created during the performance of a GM Program.


1.5 "GM Modifications" means any and all Intellectual Property pertaining to the Quantum Products developed solely by GM during the performance of a GM Program.


1.6 "GM Product" means a Fuel Cell System, and such related products that have been developed by or for GM using Intellectual Property owned or controlled by GM, or under which GM has rights, prior to the commencement of the relevant Project.


1.7 "GM Program" means a specific agreed cooperative activity under the purposes contemplated in this Development Agreement, and described in a Statement Of Work, the results of which are intended to facilitate the integration, interface, and optimization of the Quantum Products/Quantum Technology/GM Modifications for exclusive application to GM Fuel Cell Systems/GM Products/GM Technology/Quantum Modifications.


1.8 "GM Program Technology" means any and all Intellectual Property in each case created, conceived, discovered, developed and/or invented by or on behalf of one or both of the Parties during the performance of a GM Program (excluding GM Interface Technology). GM Program Technology, for purposes of this Development Agreement, can be further divided into: GM Technology, GM Modifications, Quantum Technology, and Quantum Modifications.


1.9 "GM Technology" means any and all Intellectual Property pertaining to the GM Fuel Cell Systems developed solely by GM during the performance of a GM Program.


1.10 "Generic Interface Technology" means Interface Technology that is conceived or first reduced to practice in the course of the work performed pursuant to this Development Agreement and is generally applicable, or common, to many interface technologies, but not specific to any one such technology. Hence, Generic Interface Technology would include general principles/concepts relating to interfacing, but not include the specific GM configuration that is GM Interface Technology, or specific Non-GM configurations that are Non-GM Interface Technology.


1.11 "Intellectual Property" means patents, patent applications and statutory invention registrations, trade secrets, know-how, inventions, manufacturing and production processes and techniques, research and development information, technologies, drawings, specifications, designs, plans, proposals, technical data, and other technical information, copyrights, mask works and designs, and all other intellectual and industrial property, including registrations and applications for registration thereof.


1.12 "Interface Technology" means any and all Intellectual Property relating to the processes, hardware and/or software which is/are used to integrate the Quantum Products with Fuel Cell Systems and is generated or developed in the performance of a Project.


1.13 "Non-GM Interface Technology" means Interface Technology, other than GM Interface Technology, that is used specifically to integrate Quantum Products with non-GM Fuel Cell Systems.


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1.14 "Non-GM Program" means a specific activity under the purposes contemplated in this Development Agreement, the results of which are intended for application to products manufactured by or for non-GM entities using Quantum Products and non-GM Fuel Cell Systems.


1.15 "Non-GM Program Technology" means any and all Intellectual Property in each case created, conceived, discovered, developed and/or invented by or on behalf of one or both of the Parties during the performance of a Non-GM Program. Non-GM Program Technology, for purposes of this Development Agreement, can be further divided into the following: Non-GM Program Technology From GM; and Non- GM Program Technology From Quantum.


1.16 "Non-GM Program Technology From GM" means any and all Intellectual Property in each case created, conceived, discovered, developed, and/or invented solely by GM in the performance of a Non-GM Program, solely as it relates to the Quantum Products.


1.17 "Non-GM Program Technology From Quantum" means any and all Intellectual Property in each case created, conceived, discovered, developed, and/or invented solely by Quantum in the performance of a Non-GM Program, solely as it relates to the GM Fuel Cell Systems.


1.18 "Project" means the specific Non-GM Programs and GM Programs, along with the associated research and development.


1.19 "Quantum Modifications" means any and all Intellectual Property pertaining to the GM Products developed solely by Quantum during the performance of a GM Program.


1.20 "Quantum Product" means Quantum's gaseous storage and handling equipment, controls and related software, and such related products that have been generated or developed by or for Quantum using Intellectual Property owned or controlled by Quantum, or under which Quantum has rights, prior to the commencement of the relevant Project.


1.21 "Quantum Technology" means any and all Intellectual Property pertaining to the Quantum Products developed solely by Quantum during the performance of a GM Program, relating to Quantum's gaseous storage and handling processes, equipment and/or software developed in support of GM Fuel Cell Systems.


1.22 "Statement of Work" means a detailed plan to implement a GM Program, as more fully defined in Section 3.1. A template Statement of Work shall be attached hereto as Exhibit A.


1.23 "Technical Team" means the combination of assignees from each Party that will create the Project Roadmap (as defined in Section 2 below) and manage work under this Development Agreement as described herein.


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2 Technical Team. Within ten (10) business days of the Effective Date, each Party shall assign one (1) member ("Member") to a joint technical steering team to meet and cooperate to define and manage the efforts associated with this Development Agreement ("Technical Team"). The Members shall include technical representatives with sufficient authority and experience to make recommendations with respect to the selection and implementation of the prospective Projects. Either Party may replace its Members in its sole discretion upon notice to the other Party. Each Party shall bear its own costs and expenses related to the Technical Team. The purpose of the Technical Team is to determine the types of Projects and timetables for each Project ("Project Roadmap"), to add Projects to the Project Roadmap, to change existing Projects, including, but not limited to schedule changes, and to cancel existing Projects ("Project Modification").


(a) The Technical Team shall determine the priority of different Projects, and the amount of engineering resources to be allocated to each Project.


(b) The Technical Team shall review all Jointly-Owned Technology (as defined in section 5.3) proposed for patenting, and make recommendations to the Commercial Team (see Corporate Alliance Agreement) as to the merits of seeking patent protection on such inventions. The Commercial Team shall make the final decision as to whether or not, and in what countries, to seek patent(s).


(c) At the first meeting of the Technical Team, to be held at a time and location as mutually agreed, the Members shall discuss and approve the initial Projects and the amount of engineering resources to be allocated to each Project ("Initial Project Roadmap"). At least the first meeting of the Technical Team shall be face-to-face. The Technical Team shall revise and publish the Project Roadmap as deemed necessary.


(d) If the Technical Team cannot reach a decision on a particular issue, senior managers of Quantum and GM will meet and negotiate in good faith to resolve the issue within a reasonable period of time. If the issue is not resolved within thirty (30) calendar days, the Project Roadmap will remain unchanged. Notwithstanding the foregoing, neither Party shall be required to implement a decision of the Technical Team if such decision may reasonably result in legal liability for such Party.


3 Development


3.1 Development Agreement and Statement(s) of Work. The Parties acknowledge that this agreement between Quantum and GM is a master agreement. This Development Agreement defines the terms and conditions that will apply to any Statement(s) of Work executed hereunder. The Parties understand that, from time to time, good faith negotiations may take place to supplement this Development Agreement with Statements of Work. Each Statement of Work will require that Quantum integrate, interface, and optimize specified Quantum Products/Quantum Technology/GM Modifications with GM Products/GM Technology/Quantum Modifications. Each Statement of Work will define the timetable, performance and delivery obligations of the Parties, and will be executed by GM and Quantum. Subject to the terms and conditions


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of this Development Agreement, Quantum agrees to use commercially reasonable efforts to perform in accordance with the specifications and schedule set forth in each Statement of Work. Finally, the Parties agree that there is no limit on the number of Statements of Work that may be executed during the term of this Development Agreement; provided, however, that Quantum shall have no obligation to fund work described in Statements of Work in excess of the aggregate amount set forth in the Corporate Alliance Agreement. Notwithstanding the foregoing, in the event that GM fails to execute any Statement of Work on or before the three (3) year anniversary of the Effective Date, Quantum shall be entitled to terminate this Development Agreement.


3.2 Reporting Development Progress. Each Party shall appoint a project manager who will coordinate and act as liaison with the other Party with respect to each Statement of Work. The project managers shall participate in project review meetings to be scheduled by mutual agreement of the respective project managers. GM personnel shall be entitled to visit Quantum's place of business upon reasonable prior notice to Quantum to discuss and inspect the status of progress under any Statement of Work. Quantum shall keep GM reasonably informed of its progress under each Statement of Work.


3.3 Performance. In the event that Quantum is unable to complete a GM Program identified under a Statement of Work within a reasonable amount of time as determined by the Parties, and despite its commercially reasonable efforts, the Technical Team may terminate the relevant GM Program (each a "Terminated Project").


3.4 Subcontractors. Either Party may use subcontractors (e.g. Thiokol) to perform any task assigned to such Party under a Statement of Work, provided that such subcontractor (a) is approved in writing by the Technical Team to perform such task, (b) agrees in writing to keep confidential all information and data received from the Parties or generated under the subcontract, and (c) agrees in writing to assign jointly to GM and Quantum (with rights as shall be negotiated between the Parties and reduced to writing before such subcontractor commences work) any and all inventions or improvements it, or its employees, make in connection with the subcontract.


3.5 Plant Visits. Personnel of either Party visiting facilities of the other Party will comply with all the then established and existing safety and environmental rules and regulations of the facility visited. The host Party shall not be responsible for death, damage, injury or loss suffered or incurred during visits to its facilities by any personnel in the employ of the other Party, except for death, damage, injury or loss resulting from the willful or negligent act or omission of the host Party, its agents, employees or third parties under the host Party's supervision or control.


4 License of Rights.


4.1 GM License to Quantum


(a) GM grants to Quantum and its Affiliates a non-exclusive, worldwide license under Non-GM Program Technology From GM and GM Modifications to make, have made, use, have used, sell, offer to sell, and import (i) gaseous storage and handling


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equipment, controls, software and related products for use with any GM or third party Fuel Cell System, and (ii) subject to future negotiations on a case-by- case basis, such non-Fuel Cell System related applications as the Parties may agree.


(b) GM grants to Quantum and its Affiliates a non-exclusive, worldwide license under GM Technology, GM Interface Technology, and GM Program Technology jointly owned by GM and Quantum to make, have made, use, have used, sell, offer to sell and import gaseous storage and handling equipment, controls, software and related products solely for use with GM Fuel Cell Systems.


(c) All rights in Intellectual Property and other proprietary rights of GM not expressly granted to Quantum in Sections 4.1(a) and (b), or elsewhere in this Development Agreement, are expressly reserved by GM.


4.2 Quantum License to GM.


(a) Quantum grants to GM and its Affiliates a paid-up, exclusive, worldwide license under GM Interface Technology and GM Program Technology jointly owned by GM and Quantum to make, have made, use, have used, sell, offer to sell, and import products solely for use with GM Fuel Cell Systems, and agrees not to use such technologies in connection with Non-GM Fuel Cell Systems.


(b) Quantum grants to GM and its Affiliates a paid-up, non-exclusive, worldwide license under Quantum Technology, Quantum Modifications, and Non-GM Program Technology From Quantum to make, have made, use, have used, sell, offer to sell, and import products solely for use with GM Fuel Cell Systems.


(c) All rights in Intellectual Property and other proprietary rights of Quantum not expressly granted to GM in Sections 4.2(a) and 4.2 (b), or elsewhere in this Development Agreement, are expressly reserved by Quantum


4.3 Quantum License for Terminated Projects. In the event of a Terminated Project (as defined above in Section 3.3), and in addition to the licenses granted to GM under Section 4.2, Quantum shall grant GM a limited, non- exclusive, worldwide, non-transferable right to sublicense the use of Quantum Products as identified in the relevant Statement of Work applicable to the Terminated Project, solely as follows: (1) to a sublicensee approved by the Technical Team, (2) for the sublicensee's internal use to continue development of the Project; (3) for a length of time to be agreed upon by the Technical Team; (4) subject to confidentiality provisions no less restrictive than those specified in Section 9 of this Development Agreement, and (5) with a contract provision that requires assignment of any inventions it, or its employees, make to GM.


(a) Upon the expiration of the term of such a sublicense, unless extended in a writin ...