Confidential Treatment Requested for American Superconductor Corporation

Clause

Subject matter

Page

1.

DEFINITIONS

1

2.

LICENCE

4

3.

PROVISION OF KNOW-HOW AND TECHNICAL ASSISTANCE

5

4.

OWNERSHIP

6

5.

ACCEPTANCE OF PRODUCTION ECS

6

6.

CONFIDENTIALITY

8

7.

LICENCE FEES

9

8.

REPORTING PROCEDURES AND COMPLIANCE

11

9.

WARRANTIES

11

10.

LIABILITY AND INDEMNITIES

12

11.

DURATION AND TERMINATION

13

12.

EFFECT OF TERMINATION

14

13.

EXPORT CONTROLS

15

14.

ANTI-CORRUPTION

15

15.

NON-SOLICITATION

15

16.

ASSIGNMENT AND OTHER DEALINGS

16

17.

WAIVER

16

18.

ENTIRE AGREEMENT

16

19.

VARIATION

16

20.

SEVERANCE

17

21.

COUNTERPARTS

17

22.

THIRD PARTY RIGHTS

17

23.

NO PARTNERSHIP OR AGENCY

17

24.

FORCE MAJEURE

17

25.

NOTICES

18

26.

DISPUTE RESOLUTION PROCEDURE

18

27.

GOVERNING LAW AND JURISDICTION

20

AMSC AUSTRIA GMBH, a corporation registered and existing under the laws of the Republic of Austria, having its principal office at Lakeside B08, 9020 Klagenfurt, Austria (“AMSC Austria”); and

AMERICAN SUPERCONDUCTOR CORPORATION, a corporation organised under the laws of the State of Delaware, having its principal office at 64 Jackson Road, Devens, MA 01434 (“AMSC”); and

INOX WIND LIMITED, a corporation registered and existing under the laws of India, having its principal office at Inox Towers, 17, Sector 16A, Noida, Uttar Pradesh 201301, India (“Inox”).

AMSC Austria owns or has a licence in respect of certain intellectual property rights, know-how and technical information relating to electric control system sets for use in the Wind Turbines (as defined below) and their assembly and manufacture.

AMSC Austria has agreed to grant to Inox a licence of all such intellectual property rights, know-how and technical information in relation to the ECS (as defined below) to enable Inox to set up a facility, and assemble, manufacture and supply the Products (as defined below) in accordance with the terms of this Agreement.

Inox desires to obtain the technology and a perpetual licence to manufacture, assemble and supply the Products (as defined below). AMSC Austria has agreed to provide Inox with such technology and a perpetual licence on the terms set out herein.

AMSC owns the entire share capital of AMSC Austria.  As the parent company of AMSC Austria and the owner of certain intellectual property rights referred to in Recital (A) above, AMSC is willing to provide certain warranties in relation to the intellectual property rights licensed to Inox under this Agreement.  

Definitions

In this Agreement, the following expressions shall, unless the context otherwise requires, have the following meanings:

enabling Inox to set up a plant for the manufacture and assembly of the Products, including draft layouts, controlled conditions, if any, lists and specifications of equipment, Procurement Specifications of equipment, and details of suppliers of the equipment;

the manufacture and assembly of the Products at the plant set up by Inox, including purchase information of components, Procurement Specifications of components and details of suppliers, assembly of third party components for integration into the Products, quality inspection, testing, and installation of the Products; and

the operations and maintenance of the ECS;

Unless otherwise expressly stated, the following rules of interpretation apply in this Agreement.

The contents page and headings in this Agreement are for ease of reference only and do not affect the meaning of this Agreement.

Words in the singular include the plural and vice versa.

A reference to a “Party” is to a party to this Agreement and includes the respective successors or permitted assigns of the original parties.

Any words following the terms “include” and “including” or any similar expression are illustrative and do not limit the meaning of the words preceding those terms.

A reference to a Clause or Schedule is to a clause of or schedule to this Agreement and a reference to this Agreement includes its schedules and appendices.

A reference to legislation is a reference to all legislation having effect in the United Kingdom from time to time and a reference to particular legislation is a reference to that legislation as amended, modified, consolidated, re-enacted or replaced from time to time and to all subordinate legislation made under it from time to time. 

A reference to a document in this Agreement is to that document as amended, varied or novated from time to time as permitted by the terms of that document.

A requirement that a notice or other communication to be given or made under or in connection with this Agreement must be signed by the person giving or making it will be deemed to be satisfied if the notice or other communication is signed on behalf of the person giving or making it.

LICENCE

AMSC Austria hereby grants Inox the Licence subject to, and conditional on the completion of all of the following conditions (the “Conditions”):

Inox and AMSC executing the ECS Supply Agreement;

payment by Inox to AMSC of the Advance (as defined in the ECS Supply Agreement); and

payment by Inox to AMSC Austria, in cleared funds, of USD$6,000,000 pursuant to clause 8.1.1.

Subject to the Conditions being satisfied and the remainder of this clause 2, and with effect from the Effective Date, AMSC Austria hereby grants to Inox:

an exclusive and (subject to clauses 12.2, 12.3 and 13.2) perpetual licence, without the right to sub-license (except as provided below), to use and exploit the Technology (including the Software) to make, manufacture, use and Supply, the Products for use (and only for use) in the Wind Turbines, in India during the Term including providing related customer services such as repair, installation, maintenance, assembly and testing of the Products in India; and

a non-exclusive and (subject to clauses 12.2, 12.3 and 13.2) perpetual licence, without the right to sub-license (except as provided below), to use and exploit the Technology (including the Software) to make, manufacture, use, import, export, distribute and Supply, the Products for use (and only for use) in the Wind Turbines, in the rest of the world (excluding all territories to which exports are prohibited under Export Control Laws) during the Term.

Inox may sub-license the rights granted to it under clause 2.2 in respect of any part of the Technology (but excluding the Power Converter Module) to third party vendors and suppliers of components of the ECS, but only to the extent necessary for, and for the sole purpose of, enabling such vendors and suppliers to supply relevant components of the ECS to Inox and to be able to maintain or repair them.  Inox may not otherwise sub-license the rights granted to it under clause 2.2.  To the extent that Inox engages in sub-licensing under this clause 2.3, Inox shall be and remain liable for all acts and omissions of its sub-licensees inconsistent with the terms of this Agreement as if they were the acts and omissions of Inox.

In respect of the Software:

its use shall be restricted to use of the Software in binary code form;

except as expressly stated in this clause 2, Inox shall not (and shall not permit any third party to) copy, adapt, reverse engineer, decompile, disassemble, modify, the Software in whole or in part except to the extent permitted by law or as may be strictly necessary for debugging purposes or for the purposes of embedding the Software in any apparatus or machine for the purposes of enabling the exploitation of the Technology consistent with the purposes of this Agreement.

For so long as the ECS Supply Agreement in effect, the Licence is subject to the limits on the Products permitted to be assembled and / or manufactured by Inox as set out in the ECS Supply Agreement. 

PROVISION OF KNOW-HOW AND TECHNICAL ASSISTANCE

Within seven (7) days of the Effective Date, each of AMSC Austria and Inox shall name a project manager and a deputy project manager through whom all communication and information to be provided by AMSC Austria under this clause 3, shall be channelled. AMSC Austria and Inox shall make sure that their respective project manager and deputy project manager are sufficiently available and skilled to perform the requirements under this Agreement.

AMSC Austria and Inox shall use its reasonable endeavours to ensure that its project manager and deputy project manager remain the same until the First Production ECS or, if applicable, AMSC Production ECS are Accepted.

The Parties agree that the following process shall apply to the transfer of the Materials:

within sixty (60) days of the Effective Date, AMSC Austria shall provide to Inox the Materials; and

within fourteen (14) days of receipt of the Materials, the Parties shall jointly examine the Materials at Inox's notified address in India.

AMSC Austria shall provide the Materials electronically (by FTP transfer or other secure method of delivery) and Inox shall notify AMSC Austria of the receipt of the Materials. If the Materials received by Inox are not in accordance with the requirements of clause 10.2.3, AMSC Austria shall promptly remedy the breach.

After the receipt by AMSC Austria of the payment under clause 8.1.2, Inox may, upon reasonable notice and at its cost, request AMSC Austria for access to AMSC Romania’s facility (the “Facility”) to observe the ECS manufacturing process.

Access provided by AMSC Austria to the Facility shall be for a maximum of five employees of Inox and for a period of no longer than 10 working days, or in any other combination for an aggregate of 50 working man days. AMSC Austria shall provide reasonable co-operation whilst employees of Inox are present at the Facility.

Inox shall, and shall procure that its employees shall, observe all health and safety rules and regulations and any other security requirements that apply to the Facility.

AMSC Austria shall make available such further know-how relating to the manufacture of the Products as is necessary and reasonable to enable Inox to set up a manufacturing plant for the manufacture of the Products, with specific recommendations to cause the Products, any material components and the manufacturing process to conform to AMSC Austria’s requirements.

In the event that any deficiency, inaccuracy, error or other defect becomes apparent in any Technical Information supplied by AMSC Austria, or the manufacturing processes in relation to the Products, then AMSC Austria shall, supply and make appropriate revisions to the Technical Information and Materials (including provision of appropriate technical assistance and know-how), or make specific recommendations to modify the manufacturing processes, so that Inox is capable of achieving standardization in relation to the Product of the same specifications, quality, and efficiency as AMSC’s manufacturing practices outside India.

AMSC Austria and Inox agree that the following process shall apply to the transfer of the GL2010 Control Card Materials:

within ten (10) months of the Effective Date, AMSC Austria shall provide to Inox the GL2010 Control Card Materials; and

AMSC Austria shall provide the GL2010 Control Card Materials electronically (by FTP transfer or other secure method of delivery) and Inox shall notify AMSC Austria of the receipt of the GL2010 Control Card Materials. 

If AMSC Austria develops any Improvements, it shall, as soon as reasonably practicable, notify Inox of any such Improvements and shall provide to Inox any materials, know-how, design and technical information, engineering data, design and engineering specifications and other information relating to such Improvements.

Except as provided below, AMSC Austria shall provide Inox with the details of three (3) suppliers in respect of each component of the ECS that AMSC Austria itself uses to purchase such component from (each an “Approved Supplier”). AMSC Austria shall provide Inox or each Approved Supplier, as the case may be, with all necessary manufacture and assembly documentation and other Technical Information to enable such Approved Supplier to manufacture and supply the relevant component to Inox. If, at the date of this Agreement or at any time thereafter, AMSC Austria has less than three (3) Approved Suppliers in respect of any component, if and when AMSC Austria purchases such component from any other Approved Supplier (a “New Approved Supplier”), it shall share the details of such New Approved Supplier with Inox, to ensure that at any point of time, Inox has access to as many, up to a maximum of three (3), Approved Suppliers for each component.

OWNERSHIP and infringement

As between AMSC Austria and Inox, the Technology (and all rights in it) shall remain owned by AMSC Austria and Inox shall have no rights in or to the Technology other than those set out in this Agreement.

Inox shall, as soon as practicable, notify AMSC Austria in writing, giving particulars of information available with it, if any of the following matters comes to its attention:

any actual, suspected or threatened infringement of the Technology;

any actual, suspected or threatened unauthorised disclosure, misappropriation or misuse of the Technology; or

any other form of attack, charge or claim to which the Technology may be subject,

If, in respect of any Attack (other than an Irrelevant Attack) in India or any other country in which Inox has established an ECS manufacturing facility relating to the Technology, AMSC Austria does not take action, within fifteen (15) Business Days of receiving notification from Inox pursuant to clause 4.2 or otherwise becoming aware of such an Attack, the following shall apply: subject to Inox having informed AMSC Austria or AMSC Austria having otherwise become aware, Inox may commence proceedings and may require AMSC Austria to lend its name and provide Inox with relevant documentation and information in relation to such proceedings and provide reasonable assistance, subject to Inox not settling the Attack, except with the consent of AMSC Austria, such consent not to be unreasonably withheld or delayed.  Inox shall bear the cost incurred by it of the proceedings referred to in this clause 4.3 and shall be entitled to retain all sums recovered in any such proceedings for its own account.

ACCEPTANCE of FIRST production ECS

At least two weeks prior to the manufacture of the First Production ECS, Inox shall notify AMSC Austria of the date on which such manufacture is due to take place.

Upon receiving notification from Inox in accordance with clause 5.1, AMSC Austria shall arrange for an employee or representative of AMSC Austria to attend the Inspection Test. 

After the manufacture of the First Production ECS, Inox and AMSC Austria shall perform the Inspection Test.

When the First Production ECS successfully pass the Inspection Test, the First Production ECS shall be deemed to be Accepted.

If the First Production ECS is not Accepted, Inox shall provide AMSC Austria with full access to the First Production ECS and AMSC Austria shall analyse the reason for such failure. Within two weeks of such failure, AMSC Austria shall submit to Inox an assessment in writing of the reasons of such failure and set out in reasonable detail each of the steps to be taken to correct the deficiencies including changes necessary to components so that the failed ECS is Accepted. For this purpose, AMSC Austria shall send its representatives to Inox’s facility to supervise and assist in the implementation of the corrective measures. Within thirty (30) days of Inox’s receipt of the assessment, excluding the delivery time for components, if required, Inox shall complete the steps recommended by AMSC Austria in such assessment.  Inox shall provide AMSC Austria with full access to its facility and such assistance as AMSC Austria may reasonably require, including all components set out in the Materials and GL2010 Control Card Materials in accordance with the relevant Procurement Specification, as instructed by AMSC Austria to enable AMSC Austria to perform its obligations in this clause 5.5.

If after the implementation of the steps in clause 5.5 are complete, the First Production ECS is not Accepted, then, within thirty (30) days of such failure, excluding the delivery time for components, if required, AMSC Austria shall send its representatives to Inox’s facility to produce the AMSC Production ECS and make available such further know-how relating to the manufacture of the AMSC Production ECS as is necessary and reasonable to manufacture the AMSC Production ECS in accordance with AMSC Austria’s quality standards. Inox shall provide AMSC Austria with full access to its facility and such assistance as AMSC Austria may reasonably require, including the procurement of all components set out in the Materials and GL2010 Control Card Materials in accordance with the relevant Procurement Specification, as instructed by AMSC Austria.

When, after having followed the sequence of actions and processes set out in Clauses 5.5 and 5.6, the AMSC Production ECS successfully pass the Inspection Test, the AMSC Production ECS shall be deemed to be Accepted.

If there is dispute between the Parties relating to the failure of the First Production ECS or AMSC Production ECS to be Accepted, then the Parties shall resolve such dispute in accordance with the procedures set out in clause 27.

Within three (3) Business Days of either the First Production ECS or AMSC Production ECS being Accepted, Inox shall provide to the relevant Approved Bank the certificate detailed in clause 8.13.4(b).

NOT USED  

Confidentiality

The receiving party (the “Receiving Party”) shall keep secret and confidential the Confidential Information provided to it by the other party (the “Disclosing Party”), provided that the Confidential Information may be disclosed to such:

directors and employees that need to know the Confidential Information in furtherance of the purposes of this Agreement. The Receiving Party shall ensure that such directors and employees are subject to confidentiality obligations which require them to keep the Confidential Information secret and confidential; and

in relation to Confidential Information provided by AMSC Austria to Inox only, third party vendors and suppliers of components of the ECS referred to in clause 2.3:

provided that: (i) Inox provides AMSC Austria with reasonable written notice of such disclosure; (ii) prior to such disclosure, makes such third party vendors and suppliers aware that the Confidential Information being disclosed by Inox is subject to the confidentiality obligations in this clause 7; and (iii) procures that such third party vendors and suppliers keep the Confidential Information being disclosed by Inox secret and confidential in accordance with the obligations in this clause 7; and

only to the extent necessary for, and for the sole purpose of, enabling such vendors and suppliers to supply relevant components of the ECS to Inox.

Clause 7.1 shall not apply to the extent that the Confidential Information:

was known or available on a non-confidential basis to the Receiving Party before it was disclosed to it by the Disclosing Party;

is or becomes generally available to the public (otherwise than through a breach of clause 7.1);

has been agreed by AMSC Austria and Inox to be not confidential;

is required to be disclosed by law, court order or any governmental or regulatory authority provided that, to the extent that the Receiving Party is legally permitted to and it is practically feasible to do so, it gives the Disclosing Party as much notice of such disclosure as possible and takes into account the lawful and reasonable requests of the Disclosing Party in relation to the content of such disclosure; or

is required to disclose to a bank, other financial institution or rating agency to the extent required in relation to the financing of the Receiving Party’s business activities, provided that the Receiving Party shall procure that such bank, other financial institution or rating agency, treats the Confidential Information as confidential on terms substantially the same as those in this clause 7.

The provisions of this clause 7 shall remain in force:

in respect of the Technology without limit of time; and

in respect of all other Confidential Information, for a period of;

three (3) years following the termination of this Agreement, where termination occurs pursuant to clause 12.4; or

five (5) years following the termination of this Agreement, where termination occurs for any reason other than clauses 12.2 or 12.3.

LICENCE FEES 

In consideration of the Licence, and AMSC Austria's obligations in this Agreement, Inox shall pay to AMSC Austria a licence fee as follows:

USD$6,000,000 within 30 calendar days after execution of this Agreement;

USD$[**] within five (5) Business Days after delivery of the Materials to Inox;

USD$[**] within five (5) Business Days after delivery of the GL2010 Control Card Materials to Inox; and

USD$[**] upon the first to occur of either:

Inox providing to the relevant Approved Bank the certificate detailed in clause 8.13.4(b); or

subject to clause 8.2, fifteen (15) months from the Effective Date.

If during the first fifteen (15) months after the Effective Date, Inox notifies AMSC Austria that it is in material breach of this Agreement in accordance with clause 12.4, then whilst AMSC Austria is in such breach, the fifteen (15) month period set out in clauses 8.1.4(b) shall be extended by a period equal to the period from AMSC Austria’s receipt of notice from Inox pursuant to clause 12.4 until AMSC Austria has rectified such breach.

All sums payable by Inox under this Agreement shall be paid in US Dollars to the credit of a bank account to be designated in writing by AMSC Austria.

If Inox fails to pay within the relevant period specified in this Agreement any Licence Fees or any other sum (notified in writing) due to AMSC Austria under this Agreement, Inox shall on demand pay to AMSC Austria interest at the rate of [**] per cent per annum over the base lending rate of the Bank of England on such sum from the end of the relevant period up to the date of actual payment (after as well as before any judgment).

All Licence Fees and other sums payable under this Agreement include withholding taxes, and exclude any other taxes levied on or against Inox.

All amounts payable by Inox to AMSC Austria under this Agreement are gross amounts and shall include all taxes other than those levied on or against Inox, and in particular, include and are subject to the deduction of, withholding taxes which may be deducted pursuant to the laws of India. Inox undertakes to provide to AMSC Austria within a period of 90 days of making such payment and deduction of withholding tax, a certificate confirming such deduction.

Within 60 days of each Inox financial year, Inox shall provide to AMSC Austria the original tax receipt for each payment made by Inox to AMSC Austria pursuant to this Agreement to enable AMSC Austria to claim credit in its tax assessment for a tax deduction made pursuant to clause 8.6.

If Inox does not provide the original tax receipt in accordance with clause 8.7, then, within 21 days, Inox shall pay to AMSC Austria the withholding tax deducted pursuant to clause 8.6. Such payment shall not include any duties, charges, statutory fees, social insurances etc payable in India. All such duties, charges, statutory fees, social insurances etc shall be borne and paid by Inox. All duties, charges, statutory fees, social insurances etc payable outside of India, shall be borne and paid by AMSC Austria.

NOT USED. 

Within five (5) Business Days of payment made pursuant to clause 8.1.2, Inox shall provide the following irrevocable letters of credits in favour of AMSC Austria:

an irrevocable letter of credit amounting to USD$[**] advised through UniCredit Bank Austria AG (Burggasse 12, 9020 Klagenfurt, Austria) which Inox shall provide for payment to AMSC Austria for the instalment of the Licence Fees set out in clause 8.1.3 (the “GL2010 L/C”); and

an irrevocable letter of credit amounting to USD$[**] advised through UniCredit Bank Austria AG (Burggasse 12, 9020 Klagenfurt, Austria) which Inox shall provide for payment to AMSC Austria for the instalment of the Licence Fees set out in clause and 8.1.4 (the “Final L/C”).

The GL2010 L/C shall be based on the following terms and the GL2010 L/C shall be according to UCP 600:

Date of expiry: LATEST (date latest fifteen (15) months after the Effective Date)

Drafts at: AT SIGHT

Drawee: Approved Bank according to Schedule 4

Field 46A – Documents required:

Commercial Invoice in 1 original and 3 copies; and

Receipt Form in 1 original and 1 copy issued by the beneficiary and stamped/signed by the applicant confirming that the GL2010 Control Card Materials have been received.

Field 47A – Additional conditions:

partial payments/utilisations not allowed; and

GL2010 L/C is payable against presentation of GL2010 L/C conform documents according to Field 46A, but not later than fifteen (15) months after the Effective Date against the presentation of Commercial Invoice in 4 copies only issued for total/balance of GL2010 L/C amount.

The GL2010 L/C may be drawn down by AMSC Austria upon the provision by either AMSC Austria or Inox of the Receipt Form stamped/signed by Inox to the Approved Bank.

The Final L/C shall be based on the following terms and the Final L/C shall be according to UCP 600:

Date of expiry: LATEST (date latest fifteen (15) months after the Effective Date)

Drafts at: AT SIGHT

Drawee: Approved Bank according to Schedule 4

Field 46A – Documents required:

Commercial Invoice in 1 original and 3 copies; and

Certificate in 1 original and 1 copy issued by the beneficiary and stamped/signed by the applicant confirming that all ECS in the First Production ECS or, if applicable, the AMSC Production ECS have been Accepted.

Field 47A – Additional conditions:

partial payments/utilisations not allowed; and

Final L/C is payable against presentation of Final L/C conform documents according to Field 46A, but not later than fifteen (15) months after the Effective Date against the presentation of Commercial Invoice in 4 copies only issued for total/balance of Final L/C amount. 

The Final L/C may be drawn down by AMSC Austria upon the earlier to occur of either:

Inox providing to the Approved Bank certification that the First Production ECS or AMSC Production ECS have been Accepted; or

fifteen (15) months from the Effective Date.

Reporting procedures and compliance

Inox shall provide to AMSC Austria in respect of each Quarterly Period, a self-certified statement of;

the number of Products manufactured by Inox; and

the number of Products Supplied by Inox

Inox shall provide to AMSC Austria a certificate from Inox’s statutory auditors or an independent chartered accountant certifying the number of Products manufactured and Supplied by Inox (a) once a year for the preceding financial year within 60 days following the end of the relevant financial year, and (b) on request, which may be made in respect of any Quarterly Period.

warranties

Each of AMSC Austria and Inox warrants to the other that it has full power and authority to enter into and carry out the actions contemplated under this Agreement, and that its entry into and performance under the terms of this Agreement will not cause it to be in breach of any obligation to any third party.

Each of AMSC and AMSC Austria represents and warrants:

that all intellectual property rights licensed to Inox under this Agreement are owned by or licensed to AMSC Austria, that AMSC Austria has the right to grant Inox all of the rights under this Agreement, and that such grant does not violate the rights of any third party;

there are no notices, lawsuits, claims, demands or any type of litigation, judicial or extra-judicial, regarding the ownership of any Intellectual Property Rights licensed to Inox under this Agreement which in any way could affect Inox's rights under this Agreement; and

that the Materials, GL2010 Control Card Materials and Technical Information, provided by AMSC Group to Inox pursuant to this Agreement are the materials and information currently utilised by AMSC Group to manufacture and assemble ECS and its use by Inox shall enable Inox to manufacture the ECS according to the same specifications, quality and efficiency as being manufactured and supplied by AMSC Group; and

that the steps and tests contemplated in the Inspection Test shall be no less stringent and comprehensive than the equivalent steps and tests for the manufacture of the Products undertaken by AMSC at its facilities outside India.

Each of AMSC and AMSC Austria represents and warrants to Inox that, as of the Effective Date, to the best of its knowledge, after making reasonable enquiries and exercising due diligence, Inox's use of any of the intellectual property rights granted in the Licence will not infringe the patent and/or any intellectual property rights of any third party. AMSC and AMSC Austria's sole liability for breach of this representation and warranty shall be as set forth in clause 11.4. 

Liability and indemnities

The Parties agree that the exclusions and limitations of liability set out in this clause 11 apply to AMSC as well as AMSC Austria.

Save in relation to claims of IPR infringement, AMSC Austria shall be liable to Inox for any breach under this Agreement, and shall indemnify and hold Inox harmless for any such breach. AMSC Austria shall be so liable regardless of whether such breach occurred by AMSC Austria directly, or by any persons used by AMSC Austria to perform its obligations under this Agreement. This indemnification is subject to the limitation of liability set forth in clause 11.3.  

Save in relation to claims of IPR infringement, AMSC and AMSC Austria's aggregate liability to Inox, whether in contract, tort (including negligence), breach of warranty or otherwise, arising out of, connected with, or resulting from this Agreement (including any liability arising under any indemnification obligation contained in this Agreement) and regarding any and all third party claims and liabilities against Inox as a result of a breach of this Agreement by AMSC or AMSC Austria shall not exceed the Licence Fees paid by Inox to AMSC Austria.

Subject to the limitation of liability set forth in clause 11.5, AMSC Austria shall indemnify, defend and hold harmless Inox in connection with claims, liabilities, damages, expenses, judgments and losses (including reasonable attorney fees) arising from a third party claim of infringement or alleged infringement of any intellectual property right as a result of Inox's use of the Technology, provided Inox provides to AMSC Austria written notice within 15 Business Days of any such claim and such assistance as AMSC Austria reasonably requires. AMSC Austria shall not be required to indemnify, defend and hold harmless Inox to the extent that any claim of infringement or alleged infringement is based upon:

use of equipment or software not supplied or specified by AMSC Austria where such use causes such infringement; or

infringement caused by non-compliance with AMSC Austria’s designs, specifications or documentation; or

infringement caused by modifications of the ECS without AMSC Austria’s consent; or

a third party patent right, which AMSC Austria offered to sub-license to Inox at no cost to Inox, but Inox refused in writing.

The Parties acknowledge and accept that, in the case of claims for IPR infringement, the total liability of AMSC and AMSC Austria under this Agreement and the ECS Supply Agreement together and in aggregate shall be limited to the Licence Fees paid by Inox to AMSC Austria under this Agreement.

Except for direct damages and loss of profits, in no event shall AMSC or AMSC Austria be liable for any consequential, incidental, special, multiple or punitive damages, whether in contract, tort (including negligence), breach of warranty or otherwise, arising out of, connected with, or resulting from this Agreement including the performance or non-performance under this Agreement, even if AMSC and AMSC Austria (or either of them) have been advised of the possible or actual existence of such damages.

Inox shall permit AMSC Austria to exercise control over the negotiation, litigation, and settlement of any third party claim made against Inox in relation to which AMSC Austria has agreed to provide an indemnity under this Agreement, provided the amount claimed is within the limit of liability as set forth in clause 11.3. In all other cases where the liability falls outside the limit set forth in clause 11.3, the control over the negotiations, litigation and settlement of any claim shall be exercised exclusively by Inox. In respect of any third party claims of infringement or alleged infringement of any intellectual property right as a result of Inox's use of the Technology referred to in clause 11.4, and where Inox has control over the negotiations, litigation and settlement of such claim in accordance with this clause 11.7, Inox will exercise control in consultation with AMSC Austria, save where there is a counterclaim by AMSC Austria asserting an AMSC Austria patent or any other intellectual property right, in which case AMSC Austria shall exercise control solely over such counterclaim by AMSC and any defenses thereto in consultation with Inox. 

After either the First Production ECS or AMSC Production ECS have been Accepted:

AMSC Austria and AMSC shall be deemed to be released from all of their obligations set out in clauses 3.4, 3.8, 3.9, 5.5, 5.6 and 10.2.3 of this Agreement (“Released Obligations”) together with any and all claims and / or liability arising in relation thereto; and

Inox shall not be entitled to make any claims that it has, had or may have in the future against AMSC Austria or AMSC in relation to the Released Obligations.

Notwithstanding any other clause or provision in this Agreement, nothing in this Agreement shall have the effect of excluding or limiting any liability for:

death or personal injury caused by a Party’s negligence;

fraud or fraudulent misrepresentation; or

any liability which cannot be excluded or limited by applicable law.

Duration and termination

This Agreement shall come into force on the Effective Date and shall remain in force unless terminated in accordance with clause 12.2, 12.3 or 12.4.

If AMSC Austria terminates the 2009 TTLA pursuant to Article 11.1(c) of the 2009 TTLA, then this Agreement shall terminate immediately.

Without prejudice to any rights that have accrued under this Agreement or any of its rights or remedies, AMSC Austria may terminate this Agreement with immediate effect by giving written notice to Inox:

if Inox:

exceeds the number of ECS permitted to be manufactured by Inox under clause 2.5, by more than [**], for each financial year; or

commits a wilful breach of clause 7 which has a material adverse effect on the business of AMSC or AMSC Austria; or

commits a breach of clauses 8.1.1 to 8.1.4; or

reverse engineers the software; or

uses the Technology for a purpose outside the scope of the Licence;

if AMSC terminates the ECS Supply Agreement pursuant to either clause 19.1 or 19.2 of the ECS Supply Agreement.

Without prejudice to any rights that have accrued under this Agreement, Inox may (at its option) terminate this Agreement with immediate effect by giving written notice to AMSC Austria if AMSC Austria commits a material breach of this Agreement and (if such breach is remediable) fails to remedy that breach within 90 days (or other such longer period as shall be agreed between the Parties in writing) of being notified by Inox in writing to do so. 

Effect of termination

The termination of this Agreement shall not affect any rights, remedies, obligations or liabilities of the Parties that have accrued up to the date of termination, including the right to claim damages in respect of any breach of the Agreement which existed at or before the date of termination, and including the right to be paid any sums that have become due and payable as of the date of termination but that remain outstanding.

On termination of this Agreement:

by AMSC Austria, for the reasons set out in clause 12.3 or pursuant to clause 12.2, all rights and licences granted pursuant to this Agreement shall cease;

by AMSC Austria, for the reasons set out in clause 12.3 or pursuant to clause 12.2, Inox shall immediately cease to use the Technology, save that Inox may: (i) complete the manufacture / assembly of the Products which are in the course of manufacture or assembly on the Termination Date; (ii) continue to manufacture / assemble the Products for the purpose of complying with Inox’s customer warranty obligations regarding the Wind Turbines; and (iii) continue to service and replace any Products under third party arrangements between Inox and its customers existing at the Termination Date;

by AMSC Austria, for the reasons set out in clause 12.3 or pursuant to clause 12.2, Inox shall offer to AMSC Austria the opportunity to purchase, for market rates, all stocks of the Products in its possession and all the Products in the course of assembly at the Termination Date. If within seven (7) days of such offer AMSC Austria refuses to purchase such Products or does not respond to Inox, then (subject to the payment of outstanding and undisputed Licence Fees in accordance with clause 8) Inox may dispose of, or utilise for its operations, all stocks of such Products;

by AMSC Austria, for the reasons set out in clause 12.3 or pursuant to clause 12.2, AMSC Austria shall not, for the avoidance of doubt, be obliged to refund the Licence Fees paid by Inox under this Agreement;

by Inox, for the reasons set out in clause 12.4, AMSC shall refund to Inox the License Fees paid provided that the Parties agree and acknowledge that such refund shall satisfy in full any and all claims and liabilities of AMSC and AMSC Austria, whether in contract, tort (including negligence), breach of warranty or otherwise, arising out of, connected with, or resulting from this Agreement, together with any and all claims and liabilities of AMSC under Section 20.2 of the ECS Supply Agreement;

subject to Inox retaining information necessary for the purpose of clause 13.2.2, Inox shall promptly return to AMSC Austria:

the Materials and, if applicable, the GL2010 Control Card Materials made available to Inox under this Agreement (and any copies made) in its possession or control; and

any and all information, whether or not technical, (and any copies made) in its possession or control and which is subject to the confidentiality obligations in clause 7.

clauses of this Agreement which are expressed to survive or operate in the event of termination shall continue in force. Additionally, the following clauses shall survive termination and continue in force: clause 7 (Confidentiality), clause 11 (Liability and Indemnities), clause 13 (Effect of Termination), clause 15 (Anti-Corruption), clause 16 (Non-Solicitation), clause 26 (Notices), clause 27 (Dispute Resolution Procedure) and clause 28 (Governing Law and Jurisdiction). 

EXPORT CONTROLS

Inox shall not export, directly or indirectly, the Technology licensed under this Agreement, or the Products or Software in breach of any applicable laws or regulations (“Export Control Laws”), including United States export laws and regulations, to any country for which the government or any agency thereof at the time of export requires an export licence or other governmental approval without first obtaining such licence or approval.

Inox shall:

contractually oblige any third party to whom it discloses or transfers the Technology, the Products or Software to make an undertaking to it in similar terms to the one set out in clause 14.1; and

if requested, to provide AMSC Austria with any reasonable assistance, at the reasonable cost of AMSC Austria, to enable it to perform any activity required by any competent government or agency in any relevant jurisdiction for the purpose of compliance with any Export Control Laws.

AMSC Austria shall be responsible for obtaining all approvals under the Export Control Laws that are required for AMSC Austria entering into and performing its obligations under this Agreement.

ANTI-CORRUPTION

With respect to laws relating to corruption, commercial bribery, and money laundering, Inox represents and warrants that no part of any profits obtained by it in connection with this Agreement will be:

directly or indirectly paid, offered, transferred, or given to any official, representative, or employee of any government, government agency, or instrumentality for the purpose of obtaining or retaining business for or with, or directing business to, any person or company (such as, AMSC Austria); or

otherwise used for any purpose which would violate the U.S. Foreign Corrupt Practices Act or any other laws, regulations, and standards of the U.S., United Kingdom or other applicable countries.

Inox agrees to indemnify and hold AMSC Austria harmless from, or in connection with, any violation of the provisions of this clause 15 by Inox or its employees, consultants, agents, or customers.

NON-SOLICITATION

Neither AMSC Austria or Inox shall (except with the prior written consent of the other party) directly or indirectly solicit or entice away (or attempt to solicit or entice away) from the employment of that other party any person employed or engaged by such other party and involved with any obligation under this Agreement, at any time during the Term or for a further period of 12 months after the expiration or termination of this Agreement.

Assignment and other dealings 

Neither AMSC Austria nor AMSC shall, without the prior written consent of Inox, not to be unreasonably withheld or delayed, assign, transfer, mortgage, charge or deal in any other manner with any or all of their rights or obligations under this Agreement.

Inox shall not, without the prior written consent of AMSC Austria, not to be unreasonably withheld or delayed, assign, transfer, mortgage, charge or deal in any other manner with any or all of its rights or obligations under this Agreement, save and except, Inox may create encumbrances over its rights under this Agreement and the Licence to the extent required pursuant to the terms of its financing obligations to third party lenders or any scheduled commercial banks in India.

Waiver

A Party can only waive a right or remedy provided in this Agreement or by law by express written notice.

If a Party delays or fails to exercise any power, right or remedy under this Agreement, this will not operate as a waiver of that power, right or remedy, nor will it impair or prejudice it.

Any single or partial exercise or waiver of any power, right or remedy will not preclude its further exercise or the exercise of any other power, right or remedy.

Except as expressly provided in this Agreement, the rights and remedies of each of the Parties under or pursuant to this Agreement are in addition to, and not exclusive of, any rights or remedies provided by law.

Entire agreement

This Agreement contains the whole agreement between the Parties relating to the matters contained in this Agreement and supersedes any previous agreement (whether oral or in writing) between the Parties.

Except as required by statute, no terms will be implied (whether by custom, usage, course of dealing or otherwise) into this Agreement.

Each Party acknowledges that in entering into this Agreement it has not relied on any express or implied representation (including any made negligently), assurance, undertaking, collateral agreement, warranty or covenant which is not set out in this Agreement.

In connection with the subject matter of this Agreement, each Party waives all rights and remedies (including any right or remedy based on negligence) which might otherwise be available to it in respect of any express or implied representation, assurance, undertaking, collateral agreement, warranty or covenant which is not set out in this Agreement.

For the avoidance of doubt, nothing in this clause 19 limits or excludes any liability for fraud or fraudulent misrepresentation.

Variation

Severance and Further assurance 

Each of the provisions of this Agreement is distinct and severable from the others. If at any time one or more of those provisions is or becomes invalid, unlawful or unenforceable (whether wholly or partly), the validity, lawfulness and enforceability of the remaining provisions (or the same provision to any other extent) will not be affected or impaired in any way.

Each of the Parties agrees to perform (or procure the performance of) all further acts and things, and execute and deliver (or procure the execution and delivery of) such further documents, as may be required by law or as may be reasonably required to implement and/or give effect to this Agreement and the transaction contemplated by it for the purpose of vesting in Inox the full benefit of the Technology, Technical Information, Materials, GL2010 Control Card Materials and any related know-how, assets, rights and benefits to be provided to Inox under this Agreement.

Counterparts

Third Party rights

No partnership or agency

Force majeure

Neither Party shall be in breach of this Agreement nor liable for delay in performing, or failure to perform, any of its obligations under this Agreement (other than a Party’s obligation to pay money) if such delay or failure results from any event or circumstance outside that Party's reasonable control which has not been caused or materially contributed to by that Party, including an act of God, lightning strikes, earthquakes, floods, storms, explosions, fires and any natural disaster, acts of war, acts of terrorism, riots, civil commotion, malicious damage, sabotage, revolution, strikes, lockouts or industrial actions of any type, failure of supply from a third party, government regulation, requirement or seizure under any legal process or any other restraint by a governmental agency (a “Force Majeure Event”).

If a Force Majeure Event affects a Party’s ability to comply with its obligations under this Agreement, then the affected Party's obligations under this Agreement shall be suspended whilst the Force Majeure Event continues and to the extent that the affected Party is prevented, hindered or delayed and the time for performance shall be extended by a period equivalent to the period during which performance of the obligation has been delayed or failed to be performed, provided the affected Party shall notify the other in writing of the Force Majeure Event as soon as possible after the date on which the Force Majeure Event started and shall take all reasonable steps to mitigate the effect of the Force Majeure Event and if the period of delay or non-performance continues for six months or more, the Party not affected may terminate this Agreement by giving 14 days written notice to the other Party. The Party invoking the Force Majeure shall use all reasonable efforts to remedy the situation as far as possible and subject thereto, will comply with its obligations hereunder. The Party invoking the Force Majeure Event shall give prompt notice of the cessation of the Force Majeure Event and the cause thereof.

Notices 

All notices and other communications required or permitted hereunder shall be in writing and shall be deemed effectively given if, in English and sent by:

an internationally recognised overnight courier for next available business day delivery, freight prepaid, with written confirmation of receipt, three Business Days after deposit with such courier;

personal delivery, upon such delivery (or refusal to accept the same); or

any other method, upon actual receipt.

All such notices and other communications shall be sent to a Party at the following address:

A notice required to be given under this Agreement shall not be validly given if sent by e-mail.

Dispute resolution procedure

Resolution by Executive Officers

Any dispute, controversy, or claim arising out of or in connection with this Agreement or its subject matter or formation (including non-contractual disputes or claims) (each, a “Dispute”), shall first be submitted to the Chief Executive Officers of each Party for resolution.  The Parties’ respective Chief Executive Officers shall attempt, in good faith for a period of not less than 30 days (during which time the Parties shall, unless the Dispute in question is earlier resolved, use their best endeavours to hold at least one in-person meeting between the Parties’ respective Chief Executive Officers), to resolve the Dispute through discussions and negotiations between them.  If the Dispute in question remains unresolved upon expiration of such 30 day period (regardless of whether a meeting

between the Parties’ respective Chief Executive Officers has occurred prior to such expiration), may submit such Dispute to non-binding mediation as set forth in clause 27.2 (but no Party may refer such Dispute to any court or arbitral tribunal without first submitting the Dispute to such non-binding mediation). 

Non-Binding Mediation

Mediation of the Dispute referenced in clause 27.1 shall take place under the auspices of the London Court of International Arbitration (the “LCIA”) and in accordance with the LCIA Mediation Rules (which rules, as modified by the provisions of this Agreement, are deemed to be incorporated by reference into this clause 27.2)

Notwithstanding clause 27.2.1 the mediation, and any associated mediation conferences, shall be conducted:

in London, England, in the English language, on the basis of written briefing of the issues in dispute and with the mediation session conducted in the course of a single day;

by a single mediator who shall be:

a lawyer licensed to practice law in England, with not less than 15 years’ experience in the renewable energy industry (of which not less than five years’ experience must have been in the wind power industry); or

if an individual with such qualifications is not available to serve as the mediator, then a lawyer licensed to practice law in England selected by the LCIA who possesses qualifications that are as close as reasonably practicable to those specified in clause 27.2.2(b)(i).

All matters relating to the mediation proceedings (including any and all information and materials used in connection with such mediation) shall be:

held in trust and confidence by the mediator and the LCIA personnel involved; and

subject to the provisions of clause 7 as confidential information of each of the Parties.

If the mediation does not occur, or is not completed, within 30 days after the applicable Dispute is first submitted to mediation, either Party may refer the Dispute to binding arbitration in accordance with clause 27.3.

Arbitration

Each of the Parties hereby submits to the jurisdiction of the LCIA.  Any Dispute referenced in clauses 27.1 and 27.2 shall (to the extent it is not resolved pursuant to, and during the time periods set forth in, clause 27.1 or 27.2) be referred to and finally resolved by binding arbitration in accordance with the LCIA Arbitration Rules and the IBA Rules on the Taking of Evidence in International Arbitration (which Arbitration Rules and IBA Rules, as modified by the provisions of this Agreement, are deemed to be incorporated by reference into this clause 27.3.  The tribunal shall consist of one arbitrator; the seat, or legal place, of the arbitration shall be London, England; and the language of the arbitration shall be English.

Notwithstanding clause 27.3.1, however, and to the maximum extent permissible under the LCIA Arbitration Rules, the following provisions (which may not be modified by the arbitrator without the approval of each of the Parties) shall apply to the conduct of such arbitration:

the arbitrator shall be a lawyer licensed to practice law in England, with not less than twenty 20 years’ experience in business and company law and not less than 10 years’ experience in private practice (as opposed to governmental, academic or in-house employment) focused on business and commercial transactions;

The Parties agree and undertake to take all actions and cooperate towards resolving any Dispute under this Agreement in the most expedient and efficient manner possible. All arbitration proceedings, information and materials used or submitted in connection with the arbitration, and the decisions and findings of the arbitrator shall be: 

held in trust and confidence by the arbitrator and the LCIA personnel involved; and

subject to the provisions of clause 7 as confidential information of each of the Parties.

The arbitral award shall be in writing in the English language and shall be rendered by the arbitrator within 60 days after the date of oral argument, unless the arbitrator furnishes the Parties with a written statement to the effect that the arbitral award may not reasonably be rendered within such time period and the arbitrator requires additional time to render the award.

The arbitrator may proceed to render an award notwithstanding a Party’s failure to submit any one or more briefs or any supporting documentation, to participate or be present for oral argument or otherwise to participate in, or cooperate with, the arbitral proceeding.

Interim Relief and Expenses

Award

Governing law and jurisdiction

This Agreement and any dispute or claim arising out of or in connection with it or its subject matter or formation (including non-contractual disputes or claims) shall be governed by and construed in accordance with the law of England.

Subject to clause 27, the Parties irrevocably agree that the courts of England shall have exclusive jurisdiction to settle any dispute or claim that arises out of or in connection with this Agreement or its subject matter or formation (including non-contractual disputes or claims).

JOINT AND SEVERAL LIABILITY

SIGNED for and on behalf of by

)

SIGNED for and on behalf of by

)

AMSC AUSTRIA GMBH by

)

INOX WIND LIMITED by

)

Signature

/s/ Michael Messner

Signature

/s/ Deepak Asher

Print name

Michael Messner

Print name

Deepak Asher

Position

GM

Position

Director

16.12.15

16/12/2015

SIGNED for and on behalf of by

)

AMERICAN SUPERCONDUCTOR

)

CORPORATION by

)

Signature

/s/ James Maguire

Print name

James Maguire

Position

EVP - Operations

December 16, 2015

#

ELECTRIC CONTROL SYSTEM

units per WEC

Scope of supply

NOT scope of supply

1

#HC400/410/420
Hub Cabinets including Pitch Motor

1 set

1 set consist of:

-  1pcs hub cabinet +HC400

-  1pcs hub cabinet +HC410

-  1pcs hub cabinet +4HC420

each hub cabinet includes pitch converter with IO’s, heater, service switch and service plug

- 3 pcs pitch motors including cables for motor and speed feedback connection. Each pitch motor with free wheel system, brake and speed feedback.

-     Industrial connector

-     additional distribution terminal boxes, cables and industrial plugs between the cabinets, terminal boxes and auxiliary drives and sensors

2

+OVP400

Overvoltage Protection Cabinet complete

1 off

fully assembled and tested cabinet.

cabinet includes:

-     lightning protection (acc. lightning protection system)

-     industrial connectors

-     additional distribution terminal boxes, cables and industrial plugs between the cabinets, terminal boxes and auxiliary drives and sensors

3

+NC300/310

Nacelle Cabinet complete

1 off

fully assembled and tested cabinet.

cabinet includes:

-     auxiliary power supply

-     auxiliary control and protection

-     contactors and relays

-     PLC IO’s

-     control panel

-     YAW converter

-     lightning protection (acc. lightning protection system)

-     UPS power supply 24VDC with batteries

-     service switch and service plug

-     service box

-     connection terminals

-     additional distribution terminal boxes, cables and industrial plugs between the cabinets, terminal boxes and auxiliary drives and sensors

#

ELECTRIC CONTROL SYSTEM

units per WEC

Scope of supply

NOT scope of supply

4

+CC100/101

Converter Cabinet complete

1 off

fully assembled and tested cabinet.

cabinets includes:

-     AMSC power module

(PM300xW with pre charge unit)

-     PLC IO’s with CAN Interface

-     filter capacitors and resistors

-     crowbar unit

-     generator and line choke

-     contactors and relays

-     stator breaker

-     line contactor

-     air to water heat exchanger

-     water cooling distribution

-     total power measurement

-     lightning protection (acc. lightning protection system)

-     connection terminals

-     additional distribution terminal boxes, cables and industrial plugs between the cabinets, terminal boxes and auxiliary drives and sensors

-     external water cooling unit

5

+TBC100

Tower Base Cabinet complete

1 off

fully assembled and tested cabinet.

cabinet includes:

-     auxiliary control and protection

-     contactors and relays

-     PLC IO’s and CPU

-     UPS power supply 24VDC with batteries

-     service switch

-     control panel

-     connection terminals

-     additional distribution terminal boxes, cables and industrial plugs between the cabinets, terminal boxes and auxiliary drives and sensors

Programming tool

Debugging Device

Power Visum Lite (Software tool)

Overall testing procedures which are used by AMSC Austria are part of the Materials

BOM includes mechanical and electrical manufacturing details

No

Checks according to IEC 61439-1 clause 11

Pass

Fail

Comment

degree of protection of enclosure (clause 11.2.)

clearances and creepage distances (clause 11.3.)

protection against electric shock and

integrity of protective circuits (clause 11.4.)

incorporation of built-in components (clause 11.5.)

internal electrical circuits and

connections (clause 11.6.)

terminals for external conductors (clause 11.7.)

mechanical operation (clause 11.8.)

dielectric properties (clause 11.9.)

wiring, operational performance and

function (clause 11.10.)

Chop & Signature

Date

Software Tool to load Boot and application software

Description how to handle the uploading of software to the NGCC (PDF)

Update of wtCommissioner