Template Technology Licensing Agreement

 

TECHNOLOGY TRANSFER AND PATENT PATENT L LICENSE ICENSE AGREEMEN AGREEMENT T

between

[LICENSOR]

and

[LICENSEE]

Effective as of [EFFECTIVE DATE]

Relating to [SUBJECT MATTER]

 

TECHNOLOGY TRANSFER AND PATENT PATENT L LICENSE ICENSE AGREEMEN AGREEMENT T

This Agreement, effective [EFFECTIVE DATE] upon the signing by both Parties (the "Eff "Effective ective Date"), is betw between een [LICENSOR] a [STA [STATE] TE] corporation

having havi ng an offi office ce at [A [ADD DDRES RESS] S] ("LI ("LICE CENS NSOR OR"), "), an and d [L [LIC ICEN ENSE SEE], E], a corpo co rporat ratio ion n of th thee St State ate of [S [ST TATE TE], ], havi having ng an of offfice at [A [ADD DDRE RESS SS]] ("LICENSE ("LI CENSEE"). E"). The term Par Parties ties mean the LI LICENSOR CENSOR AND LICEN LICENSEE, SEE, and also includes any of LICENSEE’S approved SUPPLIERS undertaking the obligations of this Agreement in writing.

The Parties agree as follows:

ARTICLE I DEFINITIONS

1.01 As used sed in this Agreement, any term in capital letters which is defined in Appendix A shall have the meaning specified therein.

ARTICLE II TECHNICAL INFORMATION

2.01 (a) LI 2.01 LICE CENS NSOR OR shal shall, l, wi with thin in thi thirt rty y (3 (30) 0) da days ys of recei receipt pt of th thee in init itia iall  payment from LICENSEE pursuant to Section 5.01(a) or within a reasonable time of a written request thereafter for a LICENSED SITE transfer, commence furn furnis ishi hing ng the the TE TECH CHNI NICA CAL L IN INFO FORMA RMATI TION ON li liste sted d in Ap Appe pend ndix ix B to LICENSEE or its SUPPLIERS, as the LICENSEE may direct, subject to the restrictions of Section 2.02. (b) (b) De Deli live very ry of an any y docum documen entat tatio ion n shall shall be deeme deemed d co comp mple leted ted on th thee date such document documentati ation on is receive received d by LICEN LICENSEE SEE.. LIC LICENSO ENSOR R shal shalll be responsible for the payment of all reasonable shipping costs.  

 

(c) Within forty five (45) da days ys of recei ceipt of the TEC ECH HNIC ICA AL INFORMATION, LICENSEE or its SUPPLIERS shall notify LICENSOR in writing of any TECHNICAL INFORMATION which was not received. (d) Al Alll info inform rmati ation on prev previou iously sly furn furnish ished ed by LIC LICENSO ENSOR R to LIC LICENS ENSEE EE or its SUPPLIERS and all information furnished by LICENSOR to LICENSEE or its SUPPLIERS in association with the performance of this Agreement, whet wh ethe herr or no nott requ requir ired ed th ther ereb eby y, shal shalll be deem deemed ed to be a part part of th thee TECHNICAL INFORMATION. 2.02 2.02 TE TECH CHNI NIC CAL IIN NFOR ORMA MATI TION ON m maay be ma main inta taiine ned d at no m mo ore ttha han n three LICENSED SITES at any one time and may not be transferred, disclosed or used at non-licensed sites. If use of the TECHNICAL INFORMATION is legitimately required at another location for manufacture of the LICENSED PRODUCTS, the LICENSOR will review the situation and not unreasonably with wi thho hold ld,, de dela lay y or con condi diti tion on its its co conse nsent nt fo forr th thee tran transf sfer er and and use of th thee TECHNICAL INFORMATION at another LICENSED SITE. The transfer of  the th e TE TECH CHNI NICA CAL IN FORM RMA Aout TI TION ON toICENSOR’S a LI LICE CENS NSED ED SITE SITE inte tern rnal al of  tof  [LICENSEE] canLbe INFO made with without the L LICENSOR’S consent. Thein transfer o TECHNICAL INFORMATION to another LICENSED SITE shall be made by the LICENSOR LICENSOR pursuant to Section 2.01. The LICENSEE or its SUPPLIERS shall return TECHNICAL INFORMATION and all copies from a previously LICE LI CENS NSED ED SITE SITE as soon soon as po poss ssib ible le af afte terr a ne new w LI LICE CENS NSED ED SITE SITE is qualified but in no event more than one (1) year after approval of the new site.

ARTICLE III TECHNICAL SERVICES

3.01 3.01(a (a)) LICE LICENS NSOR OR,, at LICE LICENS NSEE EE’S ’S requ reques estt an and d upon upon rea reaso sona nabl blee no noti tice ce shall, as agreed between LICENSOR and LICENSEE, furnish to LICENSEE or its SUPPLIERS technical services by employees of LICENSOR at mutually accept acc eptab able le loca locati tion ons, s, suf suffi fici cien entt to rea reaso sonab nably ly enabl enablee LI LICEN CENSE SEE E or it itss SUPPLIERS to understand the information furnished. Such technical services when rendered shall be at LICENSEE'S or its SUPPLIERS’ expense (including travel and cost co st of living expenses) upon the terms and conditions that follow follow.. (b) The initial fee of Section 5.01(a) of the license includes technical services for each of two LICENSED SITES, the LICENSED SITES may at 2

 

LICENSEE’S discretion be either at an internal LICENSEE location or at a SUPPLIER location, of: (1) (1) two (2) (2) man days days (eig (eight ht (8) (8) hrs. hrs. bl block ocks) s) of trai traini ning ng at LICENSOR’S Avon, Avon, Conn. Facility Facility for each e ach site. (2) two (2) man days (eight (8) hrs. blocks) of off-site training (outside of Avon, Avon, Conn.) for eeach ach site; and (3) verbal or e-mail consultation not to exceed 24 hrs (one hr.  blocks). (4) One LIC LICENS ENSEE EE emp emplo loyee yee at its expense expense may atte attend nd the initial training sessions for the subparagraphs b(1) and b(2) of  this Section 3.01. (5) The ini initial tial tra traini ining ng sessions for the subparagrap subparagraphs hs b(1) and  b(2) of this 3.01 shall be tapes video held tapedfor at LICENSEE’S LICENSEE’S expense andSection those training video use by LICENSOR in accordance with paragraph (d) of this section. (6) An Any y trai trainin ning g materia materials ls whi which ch are p provi rovided ded at the train training ing sessions of this Section and any training video tapes are part of  the TECHNICAL INFORMATION. Off-site training includes a LICENSED SITE to be named by the LICENSEE  but does not include the expenses and travel of the trainers, which expenses and travel shall be paid for by LICENSEE or its SUPPLIERS. All technical services included in the initial fee must be requested within one year of the Effective Effecti ve da date te of this Agreement.   (c) (c) Addi Additi tion onal al on on-s -sit itee an and d of offf-si site te tech techni nica call serv servic ices es fo for  r  LICENSEE and its SUPPLIERS up to a maximum of sixty (60) days (eight (8) hrs. blocks) per LICENSED SITE will be charged at the Training Fee Schedule  below. Dollar am amounts ounts are per person plu pluss expenses, including travel expenses of al alll the the tr trai aine ners rs to a LICE LICENS NSED ED SITE SITE to be nam named by LI LICE CENS NSEE EE.. Minimum Minim um request for additional off-site training is for two man days of training. All additional technical services must be requested within the two (2) years of  the the Ef Effe fect ctiv ivee dat datee of th this is Ag Agree reeme ment nt and and are are li lim mit ited ed to th thee ex expe pert rtise ise of  Licensor’s employees at the time of the request. 3

 

Training Fee Schedule:   On-site or off-site technical services: Maximum of 60 days in total to a LICENSED SITE Number 0 to 15 16 to 30 30 to 60 of days Pric Pr icee

$[AM $[AMOU OUNT NT]/ ]/da day y $[AM $[AMOU OUNT NT]/ ]/da day y $[AM $[AMOU OUNT NT]/ ]/da day y

Verbal and email consultation: Maximum of 250 hours Number 0 to 49 50 to 99 100 to 250 of hours Price $[AMOUNT]/hour $[AMOUNT]/hour $[AMOUNT]/hour

(d) (d) LI LICE CENS NSOR OR will will reta retain in th thee lates latestt copy copy of th thee TE TECH CHNI NICA CAL L INFORM INF ORMA ATIO TION N and the trainin training g video tapes during during the TERM of th this is Agreement for transfer to LICENSEE pursuant to the requirements of Sections 2.01 and 2.02. 3.02 3.02 LICE LICENS NSOR, OR, LIC LICENS ENSEE EE aand nd iits ts S SUP UPPL PLIE IERS RS ssha hall ll aatt al alll time timess ret retai ain n the administrative supervision of their respective personnel. pe rsonnel. 3.3

LICENSEE'S or its SUPPLIERS’ personnel shall, while on any location of LICENSOR for purposes of this Agreement, comply with LICENSOR'S rules and regulations with regard to safety and security. LICE LI CENS NSEE EE or it itss SU SUPP PPLI LIER ERS S sha shall ll have have ful ulll cont contro roll ov over er such such   personnel and shall be entirely responsible for their complying with LICENSOR'S rules and regulations.

3.4 3.4

LICE LICENS NSOR OR’S ’S p per erso sonn nnel el ssha hall ll,, whi while on on an any y lo loca cati tion on of of LIC LICEN ENSE SEE’ E’S S OR its SUPPLIER’S for purposes of this Agreement, comply with LICENSEE’S OR SUPPLIER’S rules and regulations with regard to safety saf ety and security security. LIC LICENSO ENSOR R shall shall have ful fulll contro controll ove overr suc such h   personnel and shall be entirely responsible for their complying with LICENSEE'S OR SUPPLIER’S rules and regulations.

3.0 3.05 5 Purs Pursua uant nt to Sect Sectio ion n 3.payments 01, L LIC ICENS ENSOR sh shal alll rende re nderr to under LIC LICEN ENSE SEE EArticle or its its SUPPLIERS invoices for all3.01, forOR services rendered this 4

 

III after such services have been rendered hereunder, and LICENSEE or its SUPPLIERS shall make payment of all amounts so billed within forty five (45) days after receipt of such invoices.

ARTICLE IV GRANTS OF LICENSES

4.01 Subject to Section 4.03 and to the extent it has a right to, LICENS LIC ENSOR OR gra grants nts to LIC LICENS ENSEE EE personal personal,, no nontr ntrans ansfer ferabl able, e, no nonex nexcl clusi usive ve licen icense sess in th thee LICEN ICENSE SED D TE TERR RRIT ITOR ORY Y to use use th thee TEC ECHN HNIC ICA AL INFORMATION for the purposes of (i) using, distributing, importing, selling, or offer offerin ing g for sale the LIC LICENS ENSED ED PRO PRODUCT DUCTS; S; and (i (ii) i) ma manu nufac factur turin ing, g, designing and testing of, or having manufactured, designed and tested, the LICENSED PRODUCTS only at LICENSED SITES (subject to Section 4.04 (b)). 4.02 Subject to Section 4.03 and to the extent it has a right to, LICENSOR grants to LICENSEE under the SPECIFIED PATENT personal, nontransferable and nonexclusive licenses in the LICENSED TERRITORY to make, have made (subject to Section 4.04 (b)) use, lease, repair (but not recons rec onstr truc uct), t), supp suppor ort, t, main mainta tain in,, di dist stri ribu bute, te, im impo port, rt, of offe ferr-to -to-se -sell ll and and sell sell LICENS LIC ENSED ED PROD PRODUCTS UCTS ma manu nufac factur tured ed with with the use of the TEC TECHNI HNICA CAL L INFORMATION pursuant to Section 4.01 hereof. 4.3 4.3

The Pa Parrties ac ack knowled ledge th that at aan ny pr prod odu ucts, ts, so sofftwar ware an and d te tecchnical info inform rmati ation on (i (incl nclud udin ing, g, but not limi limited ted to, serv services ices and train trainin ing) g)  provided under are of subject U.S. export laws and regulations and this any Agreement use or transfer such to products, software, technical techn ical inform informatio ation n must must be autho authorized rized unde underr those regu regulatio lations. ns. LICENSEE agrees that it will not use, distribute, transfer or transmit the products, software, or technical information (even if incorporated into nto ot othe herr prod produc ucts ts)) ex exce cept pt in com compl plia ianc ncee wi with th U.S. U.S. ex expo port rt regulatio regu lations. ns. If reasonabl reasonably y requested by by LICEN LICENSOR, SOR, LIC LICENSEE ENSEE also al so ag agree reess to sign sign writ writte ten n assur assuran ances ces and and ot other her ex expo port rt-re -rela lated ted documents as may be required for LICENSOR to comply with U.S. export regulations.

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4.04(a) 4.04( a) Th Thee lice license nsess gran granted ted in Sect Sectio ions ns 4.01 and 4.0 4.02 2 exclud excludee any other  other  right not expressly granted to LICENSEE including, but not limited to, the right to sublicense any of its rights or any o other ther implied implied rights. (b) The rights to have LICEN ENS SED PR PRO ODUC UCT TS made granted to LICENSEE in Section 4.01 and 4.02 are subject to the following: (i) in no ev even entt sha shall th thee rig ight htss to ha have ve th thee LIC ICEN ENS SED PR PROD ODUC UCTS TS mad adee be ex exer erci cise sed d ot othe herr th than an by en enga gagi ging ng ap appr prov oved ed SUPP SUPPLI LIER ERS S of  LICENSEE, and in each case, such LICENSED PRODUCTS shall only be made for LICENSEE and for a bona fide business purpose of the LICENSEE; (ii) the rights are limited only to SUPPLIERS of LICENSEE at LICENSED SITES approved by LICENSOR and only for so long as they remain SUPPLIERS SUPPLIERS of LIC LICENSEE. ENSEE. Those SUPPLIERS listed in Appendix D are approved SUPPLIERS of LICENSED PRODUCTS to LICENSEE in the areas indicated as of the Effective Date; and (iii) additional SUPPLIERS and L LICENSED ICENSED SITES may be proposed by LICEN ICENS SEE EE,, but such such ad addi diti tio ona nall LIC ICEN ENS SED SIT SITES are are subj subjec ectt to LICENSOR’S right to thirty (30) days prior notification of their identity, a review of their capabilities and written approval of them. Such approval of any SUPPLIERS or LICENSED SITES may be withheld by LICENSOR in its sole discretion but shall not be unreasonably withheld, delayed or conditioned.

4.05 (a) LIC LICENS ENSEE EE and its Suppl Suppliers iers shal shall, l, with withou outt char charge ge to LICENS LICENSOR, OR,  promptly disclose to LICENSOR all ENHANCEMENTS to the LICENSED PROCESS, whichpersonnel is information developed byParty, LICENSEE’S or  its SUPPLIERS’ solelyoriginated or jointly or with any other prior to the expiration this Agreement (“LICENSEE and SUPPLIER   ENHANCEMENTS”). LICENSEE and its SUPPLIERS shall retain all right, title and interest in and to any LICENSEE and SUPPLIER  ENHANCEMENTS solely made. (b) (b) To th thee exte extent nt ea each ch has has th thee ri righ ghtt to, L LIC ICEN ENSE SEE E an and d it itss SUPPL SUPPLIER IERS S grant to LICENSOR unrestricted, nontransferable (subject to Section 8.10), ir irre revo vocab cable, le, no none nexc xclu lusi sive, ve, ro roya yalt lty y fr free ee li lice cense nses, s, with with th thee ri righ ghtt to gran grantt sublicenses, subl icenses, to use, practice or have practiced the LICEN LICENSEE SEE and SUPPLIER  ENH EN HANCE ANCEME MENT NTS S with with th thee LI LICE CENS NSED ED PR PROC OCES ESS S for an any y purp purpos osee including making, using, distributing, importing, selling or offering for sale 6

 

articles made using such LICENSEE and SUPPLIER ENHANCEMENTS with the LICENSED PROCESS. (c) (c) Th Thee li lice cense nsess gra grant nted ed iin n Se Sect ctio ion n 4.0 4.05 5 (b) exc exclu lude de any any ot othe herr ri righ ghtt no nott expressl exp ressly y gra grante nted d to LICENSO LICENSOR R in inclu cludi ding, ng, but not lim limite ited d to, any oth other  er  implied rights. (d) LICENSEE and its SUPPLIERS shall not be held to any liability for errors or omissions in the LICENSEE and SUPPLIER  ENHANCEMENTS.  LIC LICEN ENSE SEE E an and d it itss SU SUPP PPLIE LIERS RS di disc scla laim im an any y representations or warranties, either express, implied or implied by law. By way of example, but not of limitation, LICENSEE and its SUPPLIERS make no representations or warranties of merchantability, fitness for any particular purpose, or that the use of the LICENSEE and SUPPLIER  ENHANCEMENTS, or any part of them will not infringe any patent, copyright, trademark or other intellectual property rights of any third party, and it shall be the sole responsibility of LICENSOR to make such determination as is necessary with respect to the acquisition of licenses under other patents or other intellectual property rights of third parties. LICENSEE LICEN SEE and its SUPPL SUPPLIERS IERS sha shall ll no nott be hel held d to any lia liabili bility ty wit with h respe espect ct to any pa patten entt infri nfrin nge gem men entt or any other cl clai aim m ma made de by LICENSOR, its SUBSIDIARIES or any third party on account of, or arising from the use of the LICENSEE and SUPPLIER  ENHANCEMENTS or any of part of them.

(e) (e) LI LICE CENS NSOR OR sh shal alll pro prom mpt ptly ly d disc isclos losee in co conf nfid iden ence ce to LI LICE CENS NSEE EE and and its SU SUPP PPLI LIER ERS S all EN ENH HANC NCEM EMEN ENTS TS rela relati tin ng to th thee LICE CENS NSED ED PROCESS, which is information originated or developed by LICENSOR’S  personnel or jointlyENHANCEMENTS”). with any other Party LICENSOR prior to the expiration Agreementsolely (“LICENSOR shall retainthis all right, title and interest in and to any LICENSOR ENHANCEMENTS solely or   jointly made with another Party. (f) LIC ICEN ENS SEE an and d it itss SUP UPP PLIER LIERS S shal shalll have th thee right ht,, but not not the oblliga ob gati tio on, to lice icense nse an any y such such LIC ICEN ENSO SOR R EN ENH HAN ANCE CEME MENT NTS S at commercially reasonable royalty rates and terms. (g) (g) No Notw twit iths hsta tand ndin ing g sect sectio ion n 4. 4.05 05(f (f), ), LICE LICENS NSOR OR EN ENHA HANC NCEM EMEN ENTS TS that correct a defect in the LICENSED PROCESS will be disclosed and made available on a royalty free basis to LICENSEE and its SUPPLIERS by the

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LICENS LICE NSOR OR as TE TECH CHNI NICA CAL L IN INFO FORMA RMATI TION ON un under der th thee term termss of th this is Agreement.

ARTICLE V ROYALTIE ROYAL TIES S AND PA PAYME YMENTS NTS

5.01(a) 5.01( a) As part partia iall co cons nside idera rati tion on for the rig right htss an and d li lice cense nsess gran granted ted under  under  Sections 4.01 and 4.02 by LICENSOR to LICENSEE, LICENSEE shall pay to LICENSOR a one-time, non-refundable payment of [UP FRONT PAYMENT AMOUNT] dollars (U.S. $[AMOUNT]). The one-time payment shall be paid to in two parts: (1) [PARTIAL AMOUNT 1] Dollars (U.S. $[AMOUNT]) shall   be paid to LICENSOR within sixty (60) days of the Effective Date of the Agreementt and (2) [PARTI Agreemen [PARTIAL AL AMOUNT 2] Dollars (U.S. $[AMOUNT]) shall  be paid to LICENSOR upon the first LICENSEE or SUPPLIER site to receive the TECHN TECHNICAL ICAL INFORMA INFORMATION TION becom becoming ing a QUA QUALIFI LIFIED ED LICENSED LICENSED SITE or to ship ship acceptable L LICENS ICENSED ED PRODUCTS to LI LICENSEE CENSEE.. Under  no circumstances shall such payments or any portion thereof be refunded to LICE LI CENS NSEE EE or credi credite ted d with with respe respect ct to any any ro roya yalt ltie iess du duee unde underr Sec Secti tion onss 5.01(b). (b) Roy Royalt alty y sha shall ll be payab payable le to LI LICEN CENSOR SOR at th thee rate set ffort orth h in U. U.S. S. dolllars do lars in the the acc accom ompa pany nyiing Ap Appe pend ndiix E fo forr ea each ch of th thee LICE LICENS NSED ED PROD PR ODUC UCTS TS which ich is manufac actu ture red, d, sold sold,, leas leased ed or put into use use by LICEN ICENS SEE EE,, or which ich is manufac actu ture red d and and sold sold to LICEN ICENS SEE by a SUPPLIER during the term of this Agreement: Forr cl Fo clar arif ifica icati tion on, , LICENSEE th thee runn runnin ing g depending roya royalt lty y due duupon e perwhich un unit it isisthe to manufacturer be paid paid by of th theae SUPPLIER or the  particular unit. (c) Royalty shall accrue on any unit of the LICENSED PRODUCTS upon the first manufacture and sale of such LICENSED PRODUCTS and shall become   payab payable le in acc accor orda dance nce wi with th th thee pr prov ovis isio ions ns of Artic Articles les V an and d VI he here rein in.. Obligations to pay accrued royalties by the LICENSEE or its SUPPLIERS shall survive termination termination of the licenses and rights pursuant to Article VII. (d) LICENSEE is responsible for and will promptly pay all overdue royalties owed by its SUPPLIERS.

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ARTICLE VI RECORDS AND PAYMENTS

6.01 (a) LICEN LICENSEE SEE sshall hall keep ffull ull,, clear clear and accurate records w with ith respect to LICENSED PRODUCTS manufactured, sold, leased, or put into use by it or  those purchased from a SUPPLIER. LICENSEE’S SUPPLIERS shall keep full, full, clear and accu accurate rate reco records rds wit with h resp respect ect to LICEN LICENSED SED PRO PRODUCT DUCTS S man anu ufact factur ured ed an and d sold sold to LI LICE CENS NSEE EE by th them em.. LICE LICENS NSEE EE an and d it itss SUPP SU PPLI LIERS ERS shal shalll ret retai ain n such such rec recor ords ds wi with th respec respectt to eac each h LICE LICENS NSED ED PRODUCT for at least five (5) years from the manufacture, sale, lease or   putting into use of such LICENSED PRODUCT. (b) Upo Upon n reason reasonabl ablee noti notice, ce, LICE LICENSO NSOR R shall ha have ve the rig right ht thr throu ough gh it itss independent accredited auditing representatives, and at its expense, to make an examination and audit, during normal business hours, not more frequently than annually, of all such records and such other records and accounts as may under  recognized accounting practices contain information bearing upon the amounts of fees or royalties royalties payable to it unde underr this Agreem Agreement. ent. Prom Prompt pt adjustm adjustment ent shall be made by the proper Party to compensate for any errors or omissions disclosed by such such exam examinat ination ion or audit. audit. Neith Neither er such rig right ht to exam examine ine and audi au ditt no norr the the ri righ ghtt to recei receive ve suc such h adj adjus ustm tmen entt shall shall be af affe fecte cted d by any any stateme state ment nt to the cont contrar rary y, appeari appearing ng on chec checks ks or otherw otherwise, ise, unless unless such state sta teme ment nt ap appea pears rs in a lette letterr, sign signed ed by th thee Part Party y ha havi ving ng suc such h ri righ ghtt and and delivered deli vered in to the thecourse other Party Party, , expresslyanwaiving waivi suchberight right. All infor informati mation on obtained of conducting auditngshall kept. confidential and used only for the purpose of determining proper royalty payments under this Agreement. 6.02(a) Within ithin fforty orty fi five ve (45) (45) days after the eend nd of of each annual annual p period eriod endi ending ng on Dece Decemb mber er 31, com comme menci ncing ng with with the annual annual per period iod dur durin ing g which which th this is Agree Ag reeme ment nt fi first rst beco becomes mes ef effec fecti tive, ve, LIC LICENS ENSEE EE or its SUPPL SUPPLIERS IERS shall shall furnish furn ish to LICENSOR a statement stat ement indicatin indicating: g: (i) the number of units of LICENSED PRODUCTS which were sold,

leased or put into use by LICENSEE if manufactured by it, or  were purchased purchase d from SUPPLIERS, during such annual period; 9

 

(ii) Th Thee ty type pe of [P [PROD RODUCT UCT]] man anuf ufact actur ured ed by th thee LI LICE CENS NSED ED

PROCESS (b PROCESS (by y man manuf ufact acture urerr or SUPPL SUPPLIER IER), ), solel solely y for the  purposes of calculating the appropriate royalty under Section 5.01 (b) above; and (i (iiii) th thee amou amount nt of ro roya yalt lty y paya payabl blee th ther ereo eon n (b (by y man anuf ufac actu ture rerr or  SUPPLIER). If no LICENSED PRODUCTS have been so sold, leased or put into use by LICENSEE or its SUPPLIERS, that fact shall be shown on such statement. (b) (b) Wit ithi hin n such such for forty ty five five (45) (45) days, LICEN LICENSE SEE E or its SU SUPP PPLI LIER ERS S shall, irrespective of its own business and accounting methods, pay in United States dollars to LICENSOR the fees or royalties payable for such annual  period as shown in the the statement statement requir required ed by Section 6.02 6.02(a). (a). LICEN LICENSEE SEE or  its SUPPLIERS shall furnish whatever additional information (limited solely to determ deter minin ining g prope properr paym paymen entt of roya royalt ltie iess pu purs rsua uant nt to th this is Ag Agree reeme ment nt)) LICENSOR may reasonably prescribe from time to time to enable LICENSOR  to ascertain the fees payable hereunder. Such statement, together with the  payment for the fees or royalties shown therein, shall be sent to LICENSOR at its address specified in Section 6.06(a). 6.03 6.03 LIC ICEN ENS SEE aand nd iits ts SU SUPPLI PPLIER ERS S sh shal alll be so sole lelly re resp spon onsi sib ble fo for it itss  personnel's remuneration and their travel, living and other expenses, including those incurred incurred in vis visitin iting g any locati locations ons of LICEN LICENSOR. SOR. LICE LICENSEE NSEE and its SUPPLIERS shall also be solely responsible for any tax or other governmental charge, however designated, which is imposed on LICENSEE or its personnel  by country by any of agency or politicalor subdivision thereof a result of  of  the any existence or or operation this Agreement as the result of theasactivities Licensee’s personnel. 6.04 6.04 LI LICE CENS NSEE EE or or iits ts S SUP UPP PLIER LIERS S ssha halll b bea earr aalll ttax axes, es, duti duties es,, le levi vies es,, an and d othe otherr si simi mila larr ch char arges ges (and (and any any relat related ed in inter terest est and and penal penalti ties) es),, ho howe weve ver  r  designated, imposed as a result of the existence or operation of this Agreement, exce ex cept pt,, (i (i)) an any y tax tax impo pose sed d up upon on LI LICE CENS NSOR OR or it itss SU SUPP PPLI LIER ERS S in a  jurisdiction other than the United States if such tax is allowable as a credit against the United States income taxes of LICENSOR; (ii) any net income tax imposed upon LICENSOR by the United States within the United States; and (i (iii ii)) any any tax fo forr wh whic ich h a vali valid d tax exem exempt ptio ion n certi certifi ficat catee is fu furn rnis ishe hed d by LICENS LIC ENSEE EE or its SUPP SUPPLIE LIERS RS to LICENS LICENSOR. OR. In orde orderr fo forr the exce excepti ption on 10

 

contai cont aine ned d in (i (i)) to apply apply,, LICE LICENS NSEE EE or its its SU SUPP PPLI LIER ERS S must ust fu furn rnis ish h LICENSOR with such evidence as may be required by the United States taxing authorities to establish that such a tax has been paid within thirty (30) days of  issuance of such evidence by the local taxing authority so that LICENSOR  may claim the credit. 6.05 6.05 If LI LICE CENS NSEE EE or it itss SUP SUPPL PLIE IERS RS is requ requir ired ed to bea bearr a tax tax,, dut duty y, llev evy y or similar charge pursuant to 6.04 above, LICENSEE or its SUPPLIERS shall  pay such tax, duty, levy or similar charge and any additional amounts as are necessary to ensure that the net amounts received by LICENSOR hereunder  af afte terr al alll such such paym paymen ents ts or with withho hold ldin ings gs eq equa uall th thee amou amount ntss to wh whic ich h LICENSOR is otherwise entitled under this Agreement as if such tax, duty, levy or similar charge did not apply 6.06 6.06(a (a)) Pa Pay yment ntss by LICEN ICENS SEE or it itss SUP SUPPLI LIER ERS S sha shall be mad adee to LICE LI CENS NSOR OR at [L [LIC ICENS ENSOR OR's 's AD ADDR DRESS ESS]. ]. Al Alter terna nati tive vely ly,, paym paymen ents ts to LICENSOR may be made by bank wire transfers to LICENSOR’S account at [ACCOUNT TRANSFER INFORMATION], or such other domestic United States bank as LICENSOR shall have specified by written notice or by such other method as may be agreed to by the Parties hereto and all bank charges shall be for LICENSEE’S account. Changes in such address or account may be specified by written notice. Any conversion to Un United ited States dollars shall be at the prevailing rate for bank cable transfers on New York City as quoted for the last day of such annual period by leading banks dealing in the New York City foreign exchange market. (b) Pay Payme ments nts to LICEN LICENSOR SOR pro provid vided ed for in this this Ag Agree reeme ment nt shal shall, l, when overdue, be subject to a late payment charge calculated at an annual rate of  three (3%) points overdelinquency; the prime rate or successive prime in effectpercentage in New York City during provided, however, thatrates if the amount of such late payment charge exceeds the maximum permitted by law for such late payment charge, such late payment charge shall be reduced to such maximum amount.

ARTICLE VII TERM AND TERMINA TERMINATION TION

7.01 7.01 Th This is Agre Agreem emeent sh shal alll be ef effe fect ctiv ivee du duri rin ng it itss Ter Term m wh whic ich h com comm men ence cess on the Effective Date and extends until the expiration of the entire SPECIFIED 11

 

PATENT unless terminated earlier pursuant to the provisions hereof. After the SPECI SPE CIFIE FIED D PATENT has expire expired, d, the LICEN LICENSOR SOR and LICEN LICENSEE SEE ma may y renew this Agreement upon mutual consent in writing within sixty (60) days of  the expiration. 7.02 7.02

If a P Par arty ty ssha hall ll fai faill to fu fulf lfil illl one one or m mor oree of iits ts m mat ater eria iall ob obllig igat atio ions ns

under this Agreement, or if that Party shall fail to fully comply with all the requirements of United States law or other law applicable to this Agreement, to the extent that any such failure is not attributable to any failure on the part of  the other Party to perform any of its obligations under this Agreement, the other Party may, upon its election and in addition to any other remedies that it may have, at any time terminate all of its obligations hereunder and all of the licenses and rights granted by it hereunder by not less than two (2) months written notice to the other Party specifying any such breach or failure, unless within the period of such notice all grounds specified therein for termination  pursuant to this Section 7.02(a) shall have been remedied. A material breach of  any obligation of a SUPPLIER shall be considered only to be a material breach of the the Ag Agre reem emen entt by such such SU SUPP PPLI LIER ER wi with th th this is Ag Agree reeme ment nt poten potenti tial ally ly terminating terminat ing only with respect to such brea breaching ching SUPPLI SUPPLIER. ER. 7.03 By written notice to LICENSOR, LICENSEE may voluntarily terminate all the licenses and rights g granted ranted to it hereunder hereunder.. Such notice shall shall specify the effective date (not less than six (6) months after the giving of said noti no tice) ce) of such such ter termi mina nati tion on.. As of th thee ef effe fect ctiv ivee date date of suc such h vo volu lunt ntar ary y termination, LICENSEE and its SUPPLIERS shall return all TECHNICAL INFORMA INFO RMATION TION incl includi uding ng all copies to LICENSOR. LICEN LICENSOR SOR will not voluntarily terminate the rights of LICENSEE or its SUPPLIERS under this Agree Ag reeme ment nt wi with thou outt a mater materia iall br breac each. h. Notwi Notwith thst stan andi ding ng LI LICE CENS NSEE EE’S ’S termination for convenience above, LICENSEE unable b toy obtain acceptance in writing described of the terms andshould conditions of the Agreement Abe greement by any approved SUPPLIER within sixty (60) days of the Effective Date of the Agreement, LICENSEE may immediately terminate the Agreement in writing within such sixty (60) days without obligation (including, without limitation, the obligation to pay any amount described in Article V above), with this Agreementt being de Agreemen deemed emed void ab init initio. io. 7.04 Any termination of licenses and rights of LICENSEE or its SUPPLI SUP PLIERS ERS un under der the pro provis vision ionss of th this is Article Article VII, VII, sha shall ll no nott af affect fect the obliga obl igatio tions ns of LIC LICENS ENSEE EE and its SUP SUPPL PLIER IERS S under under Sect Section ionss 4.03, 8.04, 8.05, 8.06 and 8.13, and LICENSEE’S and its SUPPLIERS obligations to pay any an y fee eess or ro roya yalt ltie iess wit ith h resp respec ectt to any LICEN ICENS SED PR PROD ODUC UCTS TS 12

 

manufactured prior to the termination of LICENSEE’S rights hereunder or the termination of this Agreement, and their obligations with respect to any other   payments for services rendered and expenses incurred prior to such termination shall survive and continue after any such termination. termination. ARTICLE VIII MISCELLANEOUS PROVISIONS

8.01 8.01 Th This is Agree greem men entt sh shal alll pr prev evai aill in tthe he eve event nt of of any any conf confllicti ictin ng te term rmss or  legends, which may appear on documents, or the TECHNICAL INFORMATION furnished hereunder. 8.02 (a) LICEN LICENSOR SOR and iits ts SUBSI SUBSIDIAR DIARIES IES sha shall ll no nott be held to any liab liabilit ility y for errors or omissions in the TECHNICAL INFORMA INFORMATION TION or LICENSOR’S ENH EN HANCE ANCEME MENT NTS. S. LICE LICENS NSOR OR repr represe esent ntss th that at th thee TE TECH CHNI NICA CAL L INFO IN FORM RMA ATI TION ON is suf sufficie icient nt to en enab able le LI LICE CENS NSOR OR to man anuf ufac actu ture re LICENSOR’S products of a similar nature and is generally consistent with the TECHNICAL INFORMATION provided to other licensees of LICENSOR,  but LICENSOR does not make any representations or guarantees that such TECHNI TEC HNICA CAL L INF INFORM ORMA ATIO TION N is suf suffic ficien ientt to ena enable ble LIC LICENS ENSEE EE or its SUPPLIERS to manufacture LICENSED PRODUCTS. (b) (b) LI LICE CENS NSOR OR also repr represe esent ntss th that at it ha hass been been usin using g th thee techn technol olog ogy y disclosed in the TECHNICAL INFORMA INFORMATION TION since November 2001 and that to its knowledge there have been no claims asserted by third parties against the technology and that there are not now any presently asserted or pending claims or litigations against the technology known as of the Effective Date. 8. 8.03 03 (a (a)) Ot Othe herr than than th thee repr repres esen enta tati tio on in Se Sect ctio ion n 8.02 8.02,, LIC LICEN ENSO SOR  R  disclaims any representations or warranties, either express, implied or implied imp lied by law law.. By way of exam exampl ple, e, bu butt not of limit limitati ation, on, LICEN LICENSOR  SOR  makes no representations or warranties of merchantability, fitness for any particular purpose, or that the use of the TECHNICAL INFORMATION, LICENSOR ENHANCEMENTS, or the SPECIFIED PATENT, or any part of them will not infringe any patent, copyright, trademark or other intellectual property rights of any third party, and it shall be the sole resp espons nsib ibil ilit ity y of LI LICE CENS NSEE EE and it itss SU SUPP PPLI LIER ERS S to ma make ke suc such determination as is necessary with respect to the acquisition of licenses under other patents or other intellectual property rights of third parties. LICENSOR shall not be held to any liability with respect to any patent

13

 

infringement or any other claim made by LICENSEE, its SUPPLIERS or any third party on account of, or arising from the use of the TECHNICAL INFORM INF ORMA ATIO TION, N, LICE LICENS NSOR OR ENH ENHANC ANCEMEN EMENTS, TS, th thee SPE SPECIFI CIFIED ED PATENT or any of part of them.

8.04 8.0 4 LI LICEN CENSE SEE E and its its SU SUPP PPLI LIER ERS S agree agree:: (i)

tha hatt the hey y will not use the TEC ECH HNICAL INFORM RMA ATION except as expressly provided herein;

(ii)

that hat they hey shal hall keep keep the TEC ECH HNICAL INFORM RMA ATION con co nfid iden enti tiaal an and d wil illl onl nly y discl isclos osee th thee TEC ECHN HNIC ICA AL INFORM INF ORMA ATIO TION N to em empl ploye oyees es who hav havee a need need to kno know w. These hese rest restrricti ictio ons on th thee di disc sclo lossure ure of TE TEC CHN HNIC ICA AL INFORMATION shall not apply to any information which can   be be pro prove ved d by cred credib ible le evid evideence nce: (1 (1)) is ind ndep epeend nden enttly deve de velo lope ped d by LICE LICENS NSEE EE or lawf lawful ullly rece receiv ived ed free ree of  restriction from another source having the right to so furnish such TECHNICA TECHNICAL L INF INFORMA ORMATIO TION, N, or (2) is or becomes becomes gene ge nera rallly avai availa labl blee to th thee pu publ blic ic wi with thou outt br brea each ch of th this is Agree greem men entt by LICEN ICENS SEE, or (3 (3)) wa was, s, at the time of  di disc sclo losu sure re,, kn know own n to LICE LICENS NSEE EE free ree of rest restri rict ctio ion n as evidenced by documentation in LICENSEE’S possession; or  which LICEN ENSO SOR R agrees ees in writing is free of suc uch h restrictions.

(iii)

tha hatt they hey wil illl not ot,, wit ith hout out LIC ICEN ENSO SOR’ R’S S expr expres esss writ itte ten n  permission, make or have made, or cause to be made, more copies of any the use TECHNICAL than are necessary for of their hereunder, INFORMATION and that each such copy shall contain the same proprietary notices or legends which appear on the origina originall of such TECHNICAL INFORMA INFORMATION, TION, and that no rights are granted under this Agreement either  expressly or by implication with respect to any copyrights except as provided for in this Section 8.04(iii);

(iv)

that LICENSEE will not make any TECHNICAL INFORMATION available to a SUPPLIER except upon its agreement in writing (of which a copy will be furnished by LICENSEE to LICENSOR) to be bound by the terms and conditions of this Agreement including that it will keep such

14

 

TECHNICAL INFORMATION confidential, it will not use the TECHNIC TECH NICAL AL INF INFORMA ORMATIO TION N exce except pt fo forr the pur purpose pose of  supp supply lyin ing g to LICE LICENS NSEE EE th thee LI LICE CENS NSED ED PR PROD ODUC UCTS TS described therein, it will make reports and pay royalties under  the lice cens nse, e, and it will retu returrn al alll such such TECH ECHNI NICA CAL L INFO IN FORM RMA ATI TION ON and and al alll copi copies es th ther ereo eoff on dem deman and d of  LICENSOR;

8.05 8.05

(v) (v)

th that at LICE LICENS NSEE EE and and its SU SUPP PPLI LIER ERS S agr agree ee th that at the they wi will ll n not ot,, without LICENSOR’S express written permission, (a) use in advertising, publicity, or otherwise any trade name, trademark, trade device, service mark, symbol or any other identification or any abbreviation, contraction or simulation thereof owned or used by LICENSOR, or (b) represent, directly or indirectly, that any product or service produced in whole or in part is made ma de in acc accor ordan dance ce with with or ut util ilize izess an any y in info form rmat atio ion n or  documentation of LICENSOR.

(vi) (vi)

th that at th thee TECH TECHNI NICA CAL L IN INFO FORM RMA ATI TION ON an and d al alll do docu cum men ents ts furnished hereunder are deemed to be and shall remain the   proper property ty of LICENSO LICENSOR, R, and tha thatt upon upon ter term mina inatio tion n of this this Agree Ag reeme ment nt or LICENS LICENSEE’S EE’S ri right ghtss her hereun eunder der,, LIC LICENS ENSEE EE shall sha ll up upon on requ request est deliv deliver er to LICEN LICENSOR SOR al alll do docu cume ment ntss containing any of the TECHNICAL INFORMATION and all copies thereof then under LICENSEE’S or its SUPPLIERS’ control.

It is reco ecognized zed that hat during the per performance of this Agreement,

LICENSEE’S personnel toCHNI private or  conf co nfid iden enti tial al in info form rmat atio ion n may of unavoidably LI LICE CENS NSOR OR receive wh whic ich h or is have not not access th thee TE TECH NICA CAL L INFORMATION. INFORMA TION. LICENSEE agrees that all such iinform nformation ation shall be treated for the purpos rposes es of the prov provis isio ions ns of this Art rtic icle le VIII III as if it we were re TECHNICAL TECHNI CAL INFORMA INFORMATION, TION, so long as the conf confident idential ial inf inform ormation ation is marked as proprietary or confidential or LICENSEE is on notice that such  private or confidential information is proprietary to LICENSOR or, if not in tangible form, only if summarized in a writing so marked and delivered to LICENSEE within thirty (30) days of such disclosure, in which case such  private or confidentia confidentiall information contained in such summ summary ary (not infor information mation cont co ntai aine ned d sol solel ely y in th thee no nonn-ta tang ngib ible le di discl sclosu osure) re) shal shalll be sub subjec jectt to th thee rest restri rict ctio ions ns of th this is Agr Agree eeme ment nt.. It is al also so reco recogn gniz ized ed th that at du duri ring ng th thee   performa performance nce of this Agreement, Agreement, LICENS LICENSOR’S OR’S person personnel nel ma may y una unavoida voidably bly

15

 

receive or have access to private or confidential information of LICENSEE or  a SUPPLIER. LICENSOR agrees that all such inf information ormation shall be treated in a like manner by LICENSOR as LICENSEE/SUPPLIER is expected to treat the TECHNICAL INFORMATION INFORMATION under article VIII hereunder, so long as the conf co nfid iden enti tial al in info forrmat atio ion n is marke arked d as pr prop opri riet etar ary y or co conf nfid iden enti tial al or  LICE LI CENS NSOR OR is on noti notice ce th that at suc such h priv private ate or co conf nfid iden enti tial al in info form rmat atio ion n is  proprietary to LICENSEE or a SUPPLIER or, if not in tangible form, only if  summarized in a writing so marked and delivered to LICENSOR within thirty (30) (30) da days ys of suc such h di disc sclos losur ure, e, in wh whic ich h case suc such h priv privat atee or co conf nfid iden enti tial al information contained in such summary (not information contained solely in the non-tangible disclosure) shall be subject to the restrictions of this Agreement. 8.06 8.06 Ex Exce cept pt as ex expr press essly ly p pro rov vid ided ed in in A Art rtic icle le IV IV,, not noth hin ing g co cont ntai aine ned d he here rein in shall be construed as conferring by implication, estoppel or otherwise any license or right under any patent, whether or not the exercise of any right herein granted necessarily employs an invention of any existing or later issued  patent. 8.07(a) Neithe 8.07(a) Neitherr Part Party y shal shalll be lia liable ble for for an any y loss, da dama mage, ge, del delay ay or ffai ailu lure re of   performance resulting directly or indirectly from any cause which is beyond its reasonable control, including but not limited to acts of God, extraordinary traffic conditions, riots, civil disturbances, wars, states of belligerency or acts of the public enemy, strikes, work stoppages, or the laws, regulations, acts or  failure to act of any governmental authority. (b) Nei Neithe therr Party sha shall ll be liab liable le for in incid cident ental al or conseq consequen uentia tiall loss or  damages of any nature, however caused, except for either Party’s breach of its confidentiality obligations (i.e., Sections 8.04 and 8.05). 8.08 Except for breach of its confident confidentiali iality ty obli obligatio gations ns (i.e. Sectio Section n 8.05), which shall be limited to LICENSEE’S and its SUPPLIERS’ actual damages, in the event of any breach of this Agreement by LICENSOR, or of  any loss or injury to LICENSEE arising out of this Agreement, for which LICENSOR is liable to LICENSEE, LICENSOR’S total cumulative liability to LICENSEE for all such breaches, losses and injuries shall be the lesser of (i) the actual value of the injury or loss to LICENSEE or (ii) the total fees or  royalties paid to LICENSOR under this Agreem Agreement. ent. 8.09 8.09(a (a)) Th This is Ag Agre reem emen ent, t, in th thee Engl Englis ish h lang langua uage ge,, sets sets fo fort rth h th thee enti entire re agreem agr eement ent and un unders derstand tandin ing g between between the Par Partie tiess as to the subject subject ma matter  tter  hereof her eof and me merg rges es all prior disc discussi ussions ons between between them, them, and nei neithe therr of the

16

 

Partie Part iess sha shall be bo bou und by any any cond condit itiions, ns, de deffinitions, ns, warr warran antties, ies, understandings or representations with respect to such subject matter other  than as expressly provided herein, or in any prior existing written agreement  between the Parties, or as duly set forth on or subsequent to the Effective Date in writing and signed by a proper and duly authorized representative of the Party to be b e bound thereby. (b) (b) To th thee ex exte tent nt that the pro provi visi sion onss of any other other agr agree eeme ment nt to wh whic ich h LICENSOR and LICENSEE are Parties, are inconsistent with the provisions of  this Agreement, the provisions of this Agreement shall control as to the subject matter hereof. 8.10 8.10 Th This is Agree greeme ment nt ssha halll no nott be assi assign gned ed n nor or ttra rans nsfe ferr rred ed,, ei eith ther er in in wh whol olee or in part, by either LICENSEE or LICENSOR without the other Party’s written consent, such consent shall not to be unreasonably withheld, delayed or  conditioned, provided LICENSOR may assign all or any part of its rights and obligations to any successor in interest of the business to which this Agreement relates or to any of its SUBSIDIARIES. 8.11(a) If a di 8.11(a) dispu spute te arises arises out of of or re relate latess to thi thiss A Agre greem ement ent,, or the b breac reach, h, termination or validity thereof, the Parties agree to submit the dispute to a sole mediator selected by the Parties or, at any time at the option of a Party, to mediation by the American Arbitration Association Association ("AAA"). If not thus resolved, it shall be referred to a sole arbitrator selected by the Parties within thirty (30) days of the mediation, or in the absence of such selection, to AAA arbitration, which shall be governed by the United St States ates Arbitration Act. (b) An Any y award m made ade (i (i)) shal shalll be a bare award llim imite ited d to a hold holdin ing g fo forr or  against a Party and affording such remedy as is deemed equitable, just and within the scope of the Agreement; (ii) shall be without findings as to issues (including but not limited to patent validity and/or infringement) or a statement of the reas reaso oning on which ich the awar award d rest rests; s; (iii) may in ap appr prop oprriate iate circumstances (other than than patent disputes) inc include lude inj injunctive unctive rel relief; ief; (iv) shall  be made within fo four ur (4) months of the ap appointme pointment nt of the aarbitrator; rbitrator; (v) may be entered in any court; and (vi) may only be appealed to a court on a question of  law. (c) The req requi uirem rement ent fo forr mediat mediation ion an and d arbit arbitrati ration on sha shall ll not be deem deemed ed a waiver of any right of termination under this Agreement and the arbitrator is not empowered to act or make any award other than based solely on the rights and obligations of the Parties prior to any such termination.

17

 

(d) (d) Th Thee arb arbit itra rato torr sha shall ll be kn know owled ledgea geabl blee in the lega legall an and d tec techn hnica icall aspects of this Agreement and shall determine issues of arbitrability but may not limit, expand or otherwise modify the terms of the Agreeme Agreement. nt. (e) The p place lace of med mediatio iation n and arbitration arbitration shall shall be Atlanta, Atlanta, Geor Georgia. gia. (f)

Ea Each ch Par Partty shal shalll be bear ar its own expe expens nses es but tho those se rela relate ted d to the

compensati compen sation on and exp expenses enses of the me media diator tor and arbi arbitra trator tor sha shall ll be bor borne ne equally. (g) (g) A re requ quest est by a Par Party ty to a co cour urtt for in inter terim im meas measur ures es shal shalll not be deemed a waiver of the obligation to mediate and arbitrate. (h) (h) Th Thee arb arbit itrat rator or shal shalll no nott ha have ve autho authori rity ty to award award pu puni niti tive ve or ot other  her  damage dam agess in exc excess ess of compens compensator atory y dam damages ages and each Par Party ty irrev irrevocab ocably ly waives any claim thereto. (i (i)) The Parti Parties, es, the their ir rep represe resentat ntative ives, s, othe otherr part partici icipan pants ts and th thee media mediator  tor  and arbitrator shall hold the existence, content and result of mediation and arbitration in confidence. (j) (j) No Notw twit ithst hstan andi ding ng th thee fo fore rego goin ing, g, no provis provisio ion n he hereo reoff shal shalll li lim mit th thee ri righ ghtt of any Par Party ty to obtain obtain equitab equitable le rel relief ief,, in inclu cludi ding ng withou withoutt li lim mita itatio tion n inju injunc ncti tive ve re reli lief ef,, fr from om a court court of comp compet eten entt ju juri risd sdict ictio ion n befo before, re, af after ter or  concurrent with mediation, arbitration or other proceeding. proc eeding. 8.12 8.12 Al Alll art artic icle le he head adin ings gs are are ffor or con conve veni nien ence ce purp purpose osess o onl nly y and and shal shalll iin n no way affect, or be used in, the interpretation of this Agreement. 8.13

Except for disclosure to RELATED PARTIES, the Parties agree to keep ke ep th thee term termss an and d cond condit itio ions ns of th this is Agr gree eeme ment nt conf confid iden enti tial al.. However, either Party shall have the right to disclose the terms of this Agreement if required by law or if such disclosure is in response to an order of a court or an order or regulation of another governmental   body provided, however, that such Party, prior to such disclosure   pursuant to such law, order or regulation shall first have promptly informed the other Party of such law, order or regulation and made reasonable efforts to obtain a protective order and/or appropriate confi con fiden dentia tiali lity ty provis provision ionss requ requir irin ing g tha thatt suc such h in info form rmati ation on to be disclosed be used only for the purpose for which such law, order or  regulation was issued.

8.14 8.14

This Agreem reemeent ssha halll be in inte terp rpre rete ted d in ac acco cord rdaanc ncee wi witth th thee la laws ws of 

the State of New York, U.S.A., exclusive of its conflict of laws provisions.

18

 

ARTICLE IX ADMINISTRATION OF AGREEMENT, NOTICES AND ST STA ATEMENT TEMENTS S

9.01 9.01(a (a)) LI LICE CENS NSOR OR an and d LICE LICENS NSEE EE shal shalll eac each h appr approp opri riat atel ely y adm admin inis iste ter  r  activities and performances under this Agreement and will notify each other of  the name, name, address and telephone nu number mber its respective contacts. Until further  notice in writing, the following are each Party’s respective contacts: (i)

For LICENSOR: Contract Adm Administrator  inistrator  Intellectual Property Organ Organization ization [CONTACT INFORMA INFOR MATION TION

(ii)

For LICENSEE: [NAME, ADDRESS, ETC.]

(b) All requests ffor or iinfo nforma rmation tion,, docu documen ments ts and tec technic hnical al assistance assistance and training services shall be made by LICENSEE or its SUPPLIERS in writing, or  if made orally then confirmed in writing within seven (7) days after such request has been made, to the organization designated in Section 9.01(a). LICENSOR shall acknowledge requests made pursuant to this Section 9.01(b) in writing and shall within fourteen (14) days after the receipt of the written request indicate whether it will or will not comply with such request or propose an alternative to such request. 9.02 9.02 Un Unti till furthe herr no nottice ice in writ riting, an any y no nottice ice or ot othe herr co com mmunicat icatio ion n hereunder shall be deemed to be sufficiently given to the addressee and any delivery hereunder deemed made when sent by certified mail to the addresses set out in Section 9.01. IN WITNESS WHEREOF, each of the Parties has caused this Agr Agreeme eement nt to  be executed in duplicate originals by its duly authorized representatives on the respective dates entered below.

[LICENSOR]

19

 

By: [NAME] [TITLE] [COMPANY]

Date: [LICENSEE]

By: [NAME] [TITLE] [COMPANY]

Date:

THIS AGREEMENT DOES NOT BIND OR OBLIGATE EITHER  PARTY IN ANY MANNER UNLESS EXECUTED BY AUTHORIZED REPRESENTATIVES REPRESENTA TIVES OF BOTH PARTIES

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APPENDIX A DEFINITIONS ENHANCEMENTS mean any improvements, enhancements, modifications, change cha nges, s, and and/or /or alterat alteration ionss of the equipm equipmen ent, t, mater material ials, s, pro process cess steps, or   process parameters of the LICENSED PROCESS which individually or as a whol wh olee prod produce uce a ma mate teri rial al ad adva vant ntag ageo eous us va vari riat atio ion n in pr prod oduct uctiv ivit ity y, cost, cost, efficiency, quality, output, ease of use, or other similar characteristic of the LICENSED PROCESS. ENHANCEMENTS which correct a defect in the LICENSED PROCESS are those changes which allow the Parties to more reliably manufacture LICENSED PRODUCTS which meet the specification set forth in Appendix Appendix C. LICENSED PRODUCTS means [DEFINITION] LICENSED PROCESS means [DEFINITION]. LICENSOR  means [LICENSOR] and its SUBSIDIARIES. LICENSEE means [LICENSEE]. LICENSED LICEN SED SIT SITE E mea eans ns one of th thrree loc ocat atio ions ns of manufac actture ure of  LICENSED PRODUCTS by LICENSEE or a SUPPLIER which has been approved by the LICENSOR pursuant to Section 4.04. LICENSED TERRITORY means worldwide. QUALIFIED SITE means thefollowed. first LICENSED SITE at which the qualificationLICENSED process of A APPENDIX PPENDIX C is RELATED PARTIES of LI RELATED LICEN CENSOR SOR means eans its its SU SUBS BSID IDIA IARI RIES, ES, and and [PAREN ENT TS, SISTER ERS S, RELA LAT TED COMP OMPANIES, ETC. C.]] and its SUBSIDIRIES. SPECIFIED PATENT means United States Stat es Patent No No.. [P [PA ATENT NUMBER] and an d al alll co coun unte terpa rpart rt pa paten tents ts iss issui uing ng in an any y and and all all co coun untr trie iess of th thee worl world d correspo cor respondi nding ng to the fo foreg regoi oing ng pate patent; nt; and all cont contin inuat uation ions, s, reissue reissuess and extensions of any of them.

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SUBSIDIARY of a company means a corporation or other legal entity (i) the majority of whose shares or other securities entitled to vote for election of  directors (or other managing authority) is now or hereafter controlled by such company either directly or indirectly; or (ii) which does not have outstanding shares or securities but the majority of whose ownership interest representing the right to manage such corporation or other legal entity is now or hereafter  owned and controlled by such company either directly or indirectly; but any such corporation or other legal entity shall be deemed to be a SUBSIDIARY of  such company only as long as such control or ownership and control exists. SUPPLIER  of LICENSEE means an entity approved by LICENSOR which has agreed to be bound by the terms and conditions of this Agreement by executing a copy of this Agreement and has agreed to manufacture LICENSED PROD PR ODUC UCTS TS only only fo forr th thee LICE LICENS NSEE EE pu purs rsua uant nt to Se Sect ctio ion n 4. 4.04 04 of th this is Agreement. TECHNICAL INFORMA INFORMATION TION me means ans in info form rmati ation on that that is fu furn rnish ished ed by

LICENSOR to LICENSEE or its SUPPLIERS in the performance of this Agreement, Agreemen t, and information that is identif identified ied in Appendix B.

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APPENDIX B TECHNICAL INFORMATION TO BE FURNISHED

[RECI TATION OF TECHN [RECIT TECHNICAL ICAL INFOR INFORMA MATION] TION]  

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APPENDIX C Qualification Specifications

[QUALIFICATION [QUALIFICA TION SPECIFICA SPECIFICATIONS] TIONS]

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APPENDIX D APPROVED SUPPLIERS

[LIST OF APPROVED SUPPLIERS]

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APPENDIX E ROYALTY RATES

[LIST OF PRODUCTS AND CORRESPONDING ROYALTY RATES]

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