RETAINED KNOW-HOW AND TECHNOLOGY
This Retained Know-How and Technology License Agreement (this Agreement) dated as of September 30, 2021 (Effective Date), is made by and between International Paper Company, a New York corporation (Licensor), and Global Holdings II, Inc., a Delaware corporation (Licensee). Parties refers to Licensor and Licensee jointly. Party refers to Licensor or Licensee individually.
WHEREAS, Licensor and Licensee have entered into a Separation and Distribution Agreement dated as of September 29, 2021 (the Separation Agreement), pursuant to which Licensor has agreed to contribute, assign, transfer, convey and deliver to Licensee all of Licensors right, title and interest in and to the SpinCo Assets, including the SpinCo Intellectual Property, on the terms and subject to the conditions set forth in the Separation Agreement;
WHEREAS, the Licensed Technology (as defined below) is not being transferred to Licensee pursuant to the Separation Agreement; and
WHEREAS, Licensee wishes to continue to use the Licensed Technology in connection with Products (as defined below) manufactured at the Facility (as defined below), and Licensor has agreed to license the Licensed Technology to Licensee in connection with Products manufactured at the Facility, subject to the limitations set forth herein.
NOW, THEREFORE, in consideration of the premises and mutual covenants herein and for other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, it is hereby agreed:
SECTION 1. Definitions.
(a) Capitalized terms that are not otherwise defined in this Agreement shall have the meanings ascribed to them in the Separation Agreement.
(b) Facility means the existing manufacturing facilities located at (i) Ticonderoga, (ii) Eastover, (iii) Luís Antônio, Brazil, (iv) Três Lagoas, Brazil, (v) Mogi Guaçu, Brazil, (vi) Svetogorsk, Russia and (vii) Saillat, France; sheeter facilities located at (x) Sumter and (y) Saillat, France; and any future expansions to such existing manufacturing facilities that result in an expansion of capacity, provided that such future expansions are co-located with and physically connected to such existing manufacturing facilities.
(c) Licensed Technology means Know-How, whether confidential or not, delivered in association with Licensor being a former Affiliate of Licensee owned by, or licensed to (and sublicensable by Licensor without any obligation to the owner of such Know-How) (such licensed Know-How, the Sublicensed Technology), Licensor or its Subsidiaries as of the Effective Date which is in commercial use by Licensee or its Affiliates within the Facility and which is reasonably necessary for Licensee in the design, manufacture, application, sale or marketing of Products within the Facility as of the Effective Date of this Agreement including without limitation those specifically mentioned in Schedule 1. For the avoidance of doubt, Retained Licensed Intellectual Property excludes all Intellectual Property owned by Licensor or its Subsidiaries (including the Know-How described in the foregoing clauses (i) and (ii)) to the extent relating to Excluded Products.