Amendment No. 4 to Joint Development Agreement, dated December 20, 2022, between Solid Power Operating, Inc. and BMW of North America, LLC

Exhibit 10.1

CERTAIN IDENTIFIED INFORMATION HAS BEEN EXCLUDED FROM THE EXHIBIT BECAUSE IT IS BOTH (I) NOT MATERIAL AND (II) WOULD BE COMPETITIVELY HARMFUL IF PUBLICLY DISCLOSED. [* * *] INDICATES THAT INFORMATION HAS BEEN REDACTED.

AMENDMENT NO. 4
to
JOINT DEVELOPMENT AGREEMENT
between

BMW OF NORTH AMERICA, LLC
300 Chestnut Ridge Road
Woodcliff Lake, NJ 07677
USA
hereinafter referred to as “BMW”

and

SOLID POWER OPERATING, INC.
486 S. Pierce Ave., Suite E
Louisville, CO 80027
USA
hereinafter referred to as “Solid Power”

The Joint Development Agreement (“JDA”) entered into as of July 1, 2017 and amended on February 18, 2021 (“Amendment No. 1”), March 22, 2021 (“Amendment No. 2”) and November 01, 2021 (“Amendment No. 3”) by and between Solid Power Operating, Inc. (f/k/a Solid Power, Inc.), with a principal place of business at 486 S. Pierce Ave., Suite E, Louisville, CO 80027, USA (“Solid Power”), and BMW of North America, LLC, a Delaware limited liability company with a principal place of business at 300 Chestnut Ridge Road, Woodcliff Lake, NJ 07677, USA (“BMW”), collectively the “Parties,” shall be amended as set forth in this amendment (“Amendment No. 4”) to the JDA.

The terms and conditions of the Previously Amended JDA remain unchanged and in full force and effect, including the industrialization roadmap and methodology as set out in Amendment No. 2 of the JDA. This Amendment No. 4 shall only establish additional terms and conditions for an additional Know-How Transfer Work Package further defined below.

Unless specified differently in this Amendment No. 4, the capitalized terms shall have the meaning as defined in the Previously Amended JDA. If the context requires otherwise, references to the singular also include the plural and vice versa.

For this Amendment No. 4 the following RECITALS shall additionally apply:

WHEREAS, Solid Power develops, among other things, solid state cell technology as part of the JDA Automotive Product development and operates two solid state cell pilot lines;

WHEREAS, BMW and its Affiliates intend to ramp up its solid state cell competency and to set up an solid state prototype line (the “BMW Pilot Line”);

WHEREAS, it is the common understanding of the Parties that the rights of use granted in Sect. 3 of the Previously Amended JDA include the rights of each Party and any of its Affiliates to conduct their own research and development activities in the field of solid state cell technology;

WHEREAS, the Parties intend to further accelerate the development of the solid state cell technology by strengthening the collaboration among the Parties and their Affiliates;

WHEREAS, BMW and its Affiliates seek Solid Power’s support to accelerate their know-how ramp up (i.e., at BMW and at BMW’s Affiliates) in the field of solid state cell technology, particularly regarding research and development including prototype production of solid state cells;

WHEREAS, Solid Power offered to BMW and its Affiliates to support their know-how ramp up in solid state cell technology by an extensive know-how transfer;

WHEREAS, the Parties seek to carry out an additional work package considered as part of the JDA Project with the aim of transferring certain know-how from Solid Power to BMW and its Affiliates that relates to the development as well as prototype and pilot production of solid state cells [* * *]; and

WHEREAS, BMW and its Affiliates will support the development at Solid Power by sending qualified personnel [* * *] to Solid Power;

NOW, THEREFORE, for good and valuable consideration, receipt of which is hereby acknowledged, the Parties agree as follows:

The subject-matters of this Amendment No. 4 are

(i) the implementation of an additional work package having the purpose of transferring the Solid Power Know-How and publicly available information related thereto from Solid Power to BMW and its Affiliates with the aim to

(A) enable BMW and its Affiliates to ramp up their know-how in the field of solid state cell technology, particularly in the area of Solid Power Know-How, and to support Solid Power’s solid-state cell technology development beyond the present scope of the JDA by sending BMW personnel to Solid Power and

(B) allow BMW and its Affiliates to participate and assist in the development activities at Solid Power,

the activities of this Section 1 (i)  being the “Know-How Transfer Work Package”;

(ii) the allowance for BMW and its Affiliates to purchase, on a non-exclusive basis, electrolyte supply from Solid Power for the BMW Pilot Line; and

(iii) the enablement of BMW and Solid Power to engage in joint development at multiple locations.

that

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independent of whether such information:

a) is considered to be Solid Power’s Sole Foreground IP or Joint Foreground IP or Solid Power’s Background IP; or

b) is not protected by an Intellectual Property Right; or

c) constitutes know-how, technical information, trade secrets, work products, methods, processes, schematics, or other forms of technology; or

d) constitutes publicly available information.

The Know-How Transfer under this Section 3.1 shall not include information relating to the Solid Power proprietary electrolyte itself, and no rights in the Solid Power proprietary electrolyte itself or any Intellectual Property Rights protecting the Solid Power proprietary electrolyte itself are granted to BMW or its Affiliates.

For the avoidance of doubt, BMW or any of its Affiliates are allowed to use royalty-free, at any time and without any permission and for any purpose any publicly available information provided by Solid Power within the Know-How Transfer Work Package to BMW or any of its Affiliates if and to the extent said information is not protected by an Intellectual Property Right.

BMW makes no representation or warranty, and assumes no liability, with respect to the any information and/or use right provided by BMW, its Affiliates and/or its Subcontractors for Solid Power’ or its Affiliates’ use thereof. Solid Power, on behalf of itself and its Affiliates, expressly accepts any information and/or use right provided by BMW, its Affiliates and/or its Subcontractors on an “AS IS” basis without any warranty or liability to BMW, its Affiliates and/or its Subcontractors.

For the avoidance of doubt, the Solid Power Know-How constitutes Confidential Information under the NDA.

[* * *]

Solid Power’s activities and obligations under this Amendment No. 4, as well as the grant of the use rights by Solid Power to BMW and/or any of its Affiliates under this Amendment No. 4 shall be fully compensated by BMW paying the total amount of US $20 million to Solid Power according to the schedule and milestones as defined in Sect. E of Annex 1 of this Amendment No. 4.

As a foreign national (non-U.S. citizen without U.S. permanent resident, refugee, or asylee status), BMW understands access to the Solid Power Know-How constitutes an export of technical data/software from the United States and is governed by U.S. export control laws, including the Export Administration Regulations (“EAR”).

BMW agrees to, and agrees to compel its Affiliates to, comply with the EAR as they pertain to any technical data or computer software to which BMW or its Affiliates has access. BMW, on behalf of itself and its Affiliates, hereby certifies that, without U.S. Government authorization, neither BMW nor its Affiliates shall knowingly disclose, export, or reexport directly or indirectly, any such technical data/computer software, and in particular neither BMW nor its Affiliates will export it without prior U.S. Government authorization to any of the following nations or nationals thereof:

Country Group E:1/E:2 (Cuba, Iran, North Korea, Syria) or the Crimea Region, or

Country Group D:1 (Armenia, Azerbaijan, Belarus, Burma/Myanmar, Cambodia, China (PRC including Hong Kong), Georgia, Iraq, Kazakhstan, North Korea, Kyrgyzstan, Laos, Libya, Macau, Moldova, Mongolia, Russia, Tajikistan, Turkmenistan, Ukraine, Uzbekistan, Venezuela, Vietnam, Yemen).

BMW, on behalf of itself and its Affiliates, agrees to be bound by future modifications of the foregoing list by amendments to the EAR or other U.S. laws and regulations.

In addition, BMW acknowledges, on behalf of itself and its Affiliates, certain software BMW or its Affiliates has access to during the term of this Amendment No. 4 may contain encryption functionality controlled for Encryption Item (“EI”) purposes by the EAR, which is subject to additional export control restrictions. Neither BMW nor its Affiliates will use such software for any purpose other than internal company use, which includes the development of new software products. Unless notified of the appropriate authorization, neither BMW nor its Affiliates will export, re-export, or transfer such software to any other destination or end-user outside the United States or Canada.

The Parties agree that this Amendment No. 4 shall become effective upon signature by both Parties and have retroactive effect as of 1^st November, 2022 (“Effective Date”).

For the avoidance of doubt, the term as set out in the Previously Amended JDA shall also apply to this Amendment No. 4.

Sections 3.2, 3.4, 3.5, 3.7 and 6 shall survive the termination of the Amendment No. 4 and/or the termination of the Previously Amended JDA.

To the extent that any provisions of this Amendment No. 4 conflict with provisions in the Previously Amended JDA, the provisions of this Amendment No. 4 shall prevail.

[Signature Page Follows]

IN WITNESS WHEREOF, each of the parties has caused its duly authorized representative to execute this Amendment No. 4 to the Agreement as of the Effective Date.

Annex 1

The information contained in the following Dossiers constitutes Solid Power’s Know-How being provided to BMW. In addition, information obtained, whether written or oral, by BMW personnel deployed under Section D of Annex 1 at Solid Power can be considered Solid Power Know-How that can be practiced by BMW as outlined in this Amendment No. 4.

Detailed list of information to be contained in the above-mentioned Dossers has been prepared by BMW personnel and are contained in Annex 2. The Dossiers have, at a minimum the BMW requested information, and contain additional Solid Power Know-How that will be provided to BMW as governed by this Amendment 4.

High-level supply agreement terms are as follows:

Objectives:

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BMW Roles and Responsibilities:

[* * *]

Solid Power Roles and Responsibilities:

[* * *]

Joint Roles and Responsibilities:

[* * *]

Deliverable Schedule

[* * *]

BMW or its Affiliates will embed the following personnel at Solid Power:

[* * *]

BMW shall pay the following amounts to Solid Power upon the completion of the success criteria highlighted below on or before the dates listed assuming said criteria are successfully achieved:

Annex 2

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