License Back. (a) Purchaser hereby grants to Seller a non-exclusive, irrevocable, perpetual, nonterminable, world-wide, royalty-free (except pursuant to clause 2.2(b)(iii) below) and fully-paid up (except pursuant to clause 2.2(b)(iii) below) license, without the right to sublicense except as expressly set forth in clauses 2.2(b), (c) and (d) below, to and under the Purchaser Licensed IP to: (i) as applicable, use, have used, modify, have modified, improve, have improved, create and have created derivative works thereof; (ii) manufacture, have manufactured, make, have made, design, have designed and use Covered Products; (iii) offer to sell, sell, have sold, import, have imported, export, have exported, copy, have copied, distribute or otherwise dispose of IC Products included in such Covered Products; and (iv) offer to license, have licensed and license, import, have imported, export, have exported, copy and have copied High-Level IP Blocks or any software included in such Covered Products. For the avoidance of doubt, all “have” rights set forth in this clause (a) are limited to the right to have third parties, including contract manufacturers, use such rights solely on behalf of Seller or any of its Affiliates or any of their respective permitted sublicensees. On a quarterly basis (for the duration of the Services Period (as defined in the Technology Services Agreement) and to the extent not previously delivered, Purchaser, at its own expense, shall deliver to Seller the source code portions of any software included in the Purchaser Licensed IP. The source code shall include updated schematics (to the extent schematics were originally provided by Seller to Purchaser), along with fully documented human-readable source code, including programmer’s notes, flow charts, logic diagrams and other such materials and documentation, in each case to the extent available. For the avoidance of doubt, Seller shall be entitled to sublicense and deliver to any sublicensee permitted by this Agreement, the source code and related materials described in the previous two sentences, and to grant to such sublicensee a sublicense to such source code and materials consistent with the rights set forth in clause 2.2(a)(i) through (iv) above, but limited to the scope of such sublicense (including as required by clause 2.2(c) below, as applicable). (b) Subject to the restrictions set forth in clause 2.2(d) below, Seller shall have the right to sublicense: (i) all or part of the rights set forth in clause (a) above to Divested Companies of Seller at the applicable time of such divestment (or a direct or indirect parent company thereof (for use solely with respect to the Divested Company as provided herein)) (subject to the restrictions set forth below in clause 2.2(c) below), including the right to further sublicense in accordance with clause 2.2(b)(iii) below; (ii) all or part of the rights set forth in clause 2.2(a) above solely with respect to *** to third parties in connection with *** or similar programs or *** programs in which Seller or any of its Affiliates is or may be a participant from time to time, whether now or in the future, to the extent such licenses are required as a condition to participation in such programs and such sublicensed third parties have no right to *** without reference to or use in the applicable ***; (iii) all or part of the rights set forth in clause 2.2(a) above solely with respect to *** to third parties, subject to the payment and other obligations set forth in Annex L hereto), it being understood that such third parties shall have the right to use, have used, modify, have modified, improve, have improved, create and have created ***, manufacture, have manufactured, make, have made, design, have designed and use ***, and to offer to sell, sell, have sold, import, have imported, export, have exported, copy, have copied, distribute or otherwise dispose of such *** and such sublicensed third parties have no right to *** without reference to or use in the applicable ***; (iv) all or part of the rights set forth in clause 2.2(a) above in the event of and following an uncured material breach by Purchaser of any material delivery milestone, material breach of Support Services obligations with respect to Critical Error Corrections (each as defined in the Technology Services Agreement) or material breach of express breach of warranty remedy, in each case under the Technology Services Agreement or a Statement of Work thereto, that is not cured within sixty (60) days after the conclusion of the breach resolution procedures set forth in Section 8.2.1 of the Technology Services Agreement; (v) all or part of the rights set forth in clause 2.2(a) above in the event of and following an uncured material breach by Purchaser of any material delivery milestone, material breach of Support Services obligation with respect to Critical Error Corrections or material breach of express breach of warranty remedy, in each case under the Services Agreement or a Statement of Work thereto, that is not cured within one (1) day after the conclusion of the breach resolution procedures set forth in Section 8.2.1 of the Technology Services Agreement, but solely to enable Seller or any of its Affiliates to engage a third party to provide services to Seller or any of its Affiliates solely with respect to the Deliverable(s) that are the subject of such uncured material breach and provided that, in the event that Purchaser cures such material breach within sixty (60) days after the conclusion of the breach resolution procedures set forth in Section 8.2.1 of the Technology Services Agreement, Seller’s right to sublicense and any sublicense granted under this clause 2.2(b)(v) shall automatically terminate after the completion of such services by such third party; and (vi) (***) and *** (***) insofar as the Purchaser Licensed IP constitutes Deliverables (as defined in the Technology Services Agreement) that Seller is required to provide to ***, as applicable, pursuant to that certain *** and the *** each in effect as of ***. The rights in clause 2.2(b)(i) above shall be further sublicensable one (1) time only by one (1) Divested Company of Seller relating to all or part of Seller’s *** (***) (such right to further sublicense to be granted at the time of divestment of ***) solely to a Divested Company of *** at the time of such divestment (as such Divested Company may organically grow or change from time to time), provided that such further sublicense contains the restrictions set forth in clauses 2.2(c)(i) and c(iii) below and is otherwise in compliance with all of the requirements set forth in this clause 2.2 (including clause 2.2(d) below and Annex L hereto). Any Divested Company sublicense will be transferable or assignable, in whole but not in part, to any Affiliate of the sublicensee or to a third party as part of a merger, acquisition or sale of such sublicensee or substantially all of the business or assets of sublicensee related to the subject matter of this Agreement, as long as the third party involved in such a merger, acquisition or sale is not a Purchaser Competitor and provided that such Affiliate or third party, as applicable, agrees in writing to be bound by all of the terms, conditions and provisions contained in the applicable sublicense agreement required pursuant to clause (d) below. (i) Except as set forth in clause 2.2(c)(ii) below, for each sublicense to or with respect to a Divested Company of Seller or a Divested Company of *** permitted pursuant to clause 2.2(b) above, such sublicense shall be limited to exercising the rights in clauses 2.2(a)(i), (ii) and (iii) above only with respect to (I) IC Products that have been Taped Out, IC Products under development, and High-Level IP Blocks and software of such Divested Company in existence, in each case as of the date of divestiture, (II) any future IC Products, High-Level IP Blocks or software on then-current roadmaps of such Divested Company as of the date of divestiture, and (III) any derivatives or natural successors of the items specified in 2.2(c)(i)(I) and (II) above. (ii) In the event that Seller grants a sublicense to or with respect to *** under clause 2.2(b) above, such sublicense shall not be subject to the restrictions set forth in clause 2.2(c)(i) above; provided, however, that the permitted one (1) time further sublicense by *** to a Divested Company of *** shall be subject to the restrictions set forth in clause 2.2(c)(i) above. (iii) Except as set forth in clause (c)(iv) below, no sublicense granted to a Divested Company pursuant to clause (i) or clause (ii) shall extend to any Person, business, operation or activity with which any such Divested Company becomes combined or is merged. (iv) Notwithstanding clause (c)(iii) above, for so long as Seller does not *** to *** of the *** (***), if the *** on *** is *** set forth in the *** thereto or *** as long as no other Person (other than controlled Affiliates of *** or Seller) is a *** and Seller (it being understood that, ***, the *** is the *** for purposes of this Agreement), Seller may enter into agreements extending the sublicense granted with respect to *** to any Person, business, operation or activity with which *** is combined or is merged, but solely for the purpose of conducting the business of *** (and not for any other purpose). With respect to all other Divested Company sublicenses hereunder, Purchaser shall consider in good faith any request by Seller to have the sublicense with respect to the applicable Divested Company extended to any Person, business, operation or activity with respect to which such Divested Company is combined or is merged, but solely for the purpose of conducting the business of such Divested Company (and not for any other purpose). (d) Each sublicense granted under clause 2.2(b) shall be subject to a written sublicense agreement under which each sublicensee shall agree to the scope of sublicense and the restrictions and other obligations set forth in this Agreement applicable to the rights sublicensed, including the applicable express restrictions referenced in clause 2.2 (c)(iii) and (c)(iv) above, and each such sublicense agreement shall (i) be governed by the same governing law and dispute resolution procedures and venue as set forth in this Agreement, and (ii) require that Purchaser be copied on all notices provided under such sublicense agreement. Any such sublicense agreement shall also contain the terms and conditions set forth in clause 2.2(f) below and, if applicable, Annex L hereto. Seller shall advise Purchaser in writing of each such sublicense and provide Purchaser with a copy of each sublicense agreement and any amendment or other modification thereto within thirty (30) days of execution of same. Further, each sublicense agreement with or with respect to a Divested Company (not including the sublicense agreement with *** but including the sublicense agreement executed in connection with the exercise of *** of its permitted one (1) time further sublicense to a Divested Company of ***) shall require such Divested Company to provide Purchaser with a copy of the roadmap applicable to such sublicense upon the written request of Purchaser. Any roadmap provided hereunder shall be kept strictly confidential in files of Purchaser’s CEO and/or Vice President of Engineering marked “Highly Confidential” and access thereto and use thereof shall be restricted solely for the purposes of determining whether the scope of the sublicense to, or the exercise of the sublicense by, the applicable Divested Company has been exceeded. Purchaser agrees that Seller shall have no liability for any acts or omissions of its permitted sublicensees; provided that as a condition to Seller’s ability to sublicense its rights hereunder and its sublicensees’ ability to sublicense their permitted sublicensees, Seller agrees, and Seller shall cause each of its sublicensees hereunder to be obligated in writing to agree, in the applicable written sublicense agreement between Seller and such sublicensee, that Purchaser shall be expressly named as an intended third party beneficiary of any such sublicense in the applicable sublicense agreement with the express right to enforce such sublicense agreement in accordance with its terms. (e) As between Purchaser and Seller, Seller shall exclusively own and retain all right, title and interest in and to any modifications, improvements, updates and derivative works of the Purchaser Licensed IP (other than any Patents included therein) developed by or on behalf of Seller, any of its Affiliates or any sublicensee hereunder; provided, however, that with respect to any claims in any Patent owned by Seller or any of its Affiliates at any time after the Closing Date that read on or are directed towards any such modifications, improvements, updates or derivative works that are developed by or on behalf of Seller or any of its Affiliates, Seller shall automatically grant, and hereby does grant, without any additional requirement, including execution of a separate license agreement, to Purchaser a license under all such claims, which license shall be of the same scope and for the same purposes as the license granted in clause 2.5 below, and for the avoidance of doubt, all such claims shall be deemed licensed to Purchaser under clause 2.5 below. The sublicense rights set forth herein shall be subject to the applicable sublicensee automatically granting to Purchaser, ab initio, without any additional requirement, including execution of a separate license agreement, a license under any claims in any Patent owned by such sublicensee at any time after the date such sublicense is granted to such sublicensee, that read on or are directed towards any modifications, improvements, updates or derivative works of the Purchaser Licensed IP made by or on behalf of such sublicensee, which license shall be of the same scope and for the same purposes as the license granted in clause 2.5 below. (i) No licensee or sublicensee under this Agreement shall delete or in any manner alter any intellectual property rights notices of Purchaser or its suppliers, if any, appearing on the Purchaser Licensed IP. Each such licensee and sublicensee shall reproduce such notices in a substantially similar manner on each copy it makes of any Purchaser Licensed IP. (ii) Each licensee and sublicensee under this Agreement shall identify Purchaser on semiconductor manufacturers’ declaration forms as a licensor of the intellectual property owned by Purchaser embodied in the Purchaser Licensed IP that is contained in such licensee’s or sublicensee’s products as produced by its semiconductor manufacturer(s). Each such licensee and sublicensee shall execute such declaration as provided by each such semiconductor manufacturer to document the content of the Purchaser License IP in such products. Upon Purchaser’s request, the applicable licensee or sublicensee shall authorize the applicable semiconductor manufacturer to provide information directly to Purchaser documenting the content of the Purchaser Licensed IP in such products. (iii) Each licensee under this Agreement acknowledges and agrees, and each sublicensee under this Agreement shall acknowledge and agree in the applicable sublicense agreement, that (I) certain output generated by or on behalf of such licensee or sublicensee through use of certain Purchaser Licensed IP licensed to it hereunder may contain information that complies with the Virtual Component Identification Physical Tagging Standard (VCID) as maintained by the Virtual Socket Interface Alliance (VSIA), (II) such information may be expressed in GDSII Layer 63 or other such layer designated by Purchaser, the VSIA, and hardware definition languages, or other formats, and (III) it is not authorized to, and it shall not, alter or change any such information. (iv) In the event a semiconductor manufacturer is manufacturing integrated circuits for any licensee or sublicensee using any of the Purchaser Licensed IP, each such licensee and sublicensee shall provide to Purchaser reports once per quarter setting forth, for the previous quarter, the project tracking number used by the semiconductor manufacturer to identify Tape Outs (as defined in the Master License Agreement)
Appears in 1 contract
Sources: Intellectual Property Transfer and License Agreement (Virage Logic Corp)
License Back. 2.2.1. Subject to the terms and conditions of this Agreement (including Section 2.4), uniQure hereby grants to Simioni during the Term (a) Purchaser hereby grants an exclusive, royalty-bearing (under Section 3.5), sublicensable (subject to Seller Section 2.2.2) license under uniQure’s right, title and interest in the Assigned Patent Rights (except for those Assigned Patent Rights not yet fully and completely assigned to uniQure pursuant to Section 2.1, which Assigned Patent Rights shall be included once fully and completely assigned to uniQure pursuant to Section 2.1) to develop, have developed, manufacture, have manufactured, use, have used, market, import, have imported, offer for sale, have offered for sale, sell or have sold products solely for use in the Protein Field in the Territory and (b) a non-exclusive, irrevocable, perpetual, nonterminable, worldnon-wide, royalty-free (except pursuant to clause 2.2(b)(iii) below) and fully-paid up (except pursuant to clause 2.2(b)(iii) below) bearing license, without the right to sublicense except as expressly set forth grant sublicenses, under uniQure’s right, title and interest in clauses 2.2(b)the Assigned Patent Rights solely to conduct non-commercial research activities in any field, (c) and (d) belowincluding non-commercial research for human therapeutic uses, such activities to and under the Purchaser Licensed IP to:
(i) as applicable, use, have used, modify, have modified, improve, have improved, create and have created derivative works thereof;
(ii) manufacture, have manufactured, make, have made, design, have designed and use Covered Products;
(iii) offer to sell, sell, have sold, import, have imported, export, have exported, copy, have copied, distribute be only conducted by Simioni alone or otherwise dispose of IC Products included in such Covered Products; and
(iv) offer to license, have licensed and license, import, have imported, export, have exported, copy and have copied Highwith non-Level IP Blocks commercial Third Parties who are academic or any software included in such Covered Productsresearch institutions. For the avoidance of doubt, all “have” activities permitted to be conducted under the exercise of rights set forth in clause (b) of this clause Section 2.2.1 do not include clinical studies and shall not result in, or contribute to, any commercial sale of goods or services.
2.2.2. All sublicensees of the rights granted to Simioni in Section 2.2.1 shall enter into written sublicense agreements on terms consistent with this Agreement and which include (a) are limited confidentiality provisions relating to the right Confidential Information of uniQure that are the same or substantially similar as those contained in this Agreement; (b) indemnification provisions that require the sublicensee to have third partiesindemnify, hold harmless and defend Simioni, uniQure and their respective Affiliates from and against any losses, damages, liabilities, costs and expenses (including contract manufacturersreasonable attorneys’ fees) incurred by Simioni, use uniQure or their respective Affiliates arising or resulting from any Claim related to product liability for products developed, manufactured or commercialized by such rights solely on behalf of Seller or any of sublicensee, its Affiliates or any of their respective permitted sublicensees. On a quarterly basis (for ; provided that Simioni shall use commercially reasonable efforts to negotiate such sublicense agreements to include indemnification provisions that require the duration of the Services Period (as defined in the Technology Services Agreement) sublicensee to indemnify Simioni and uniQure to the extent not previously deliveredfull extent, Purchasermutatis mutandis, at its own expense, shall deliver uniQure indemnifies Simioni pursuant to Seller the source code portions of any software included in the Purchaser Licensed IP. The source code shall include updated schematics Section 6.1; and (to the extent schematics were originally provided by Seller to Purchaser), along with fully documented human-readable source code, including programmer’s notes, flow charts, logic diagrams and other such materials and documentation, in each case to the extent available. For the avoidance of doubt, Seller shall be entitled to sublicense and deliver to any sublicensee permitted by this Agreement, the source code and related materials described in the previous two sentences, and to grant to such sublicensee a sublicense to such source code and materials consistent with the rights set forth in clause 2.2(a)(ic) through (iv) above, but limited to the scope of such sublicense (including as required by clause 2.2(c) below, as applicable).
(b) Subject to the restrictions set forth in clause 2.2(d) below, Seller shall have the right to sublicense:
(i) all or part of the rights set forth in clause (a) above to Divested Companies of Seller at the applicable time of such divestment (or a direct or indirect parent company thereof (for use solely with respect to the Divested Company as provided herein)) (subject to the restrictions set forth below in clause 2.2(c) below), including the right to further sublicense in accordance with clause 2.2(b)(iii) below;
(ii) all or part of the rights set forth in clause 2.2(a) above solely with respect to *** to third parties in connection with *** or similar programs or *** programs in which Seller or any of its Affiliates is or may be a participant from time to time, whether now or in the future, to the extent such licenses are required as a condition to participation in such programs and such sublicensed third parties have no right to *** without reference to or use in the applicable ***;
(iii) all or part of the rights set forth in clause 2.2(a) above solely with respect to *** to third parties, subject to the payment and other obligations set forth in Annex L hereto), it being understood that such third parties shall have the right to use, have used, modify, have modified, improve, have improved, create and have created ***, manufacture, have manufactured, make, have made, design, have designed and use ***, and to offer to sell, sell, have sold, import, have imported, export, have exported, copy, have copied, distribute or otherwise dispose of such *** and such sublicensed third parties have no right to *** without reference to or use in the applicable ***;
(iv) all or part of the rights set forth in clause 2.2(a) above in the event of and following an uncured material breach by Purchaser of any material delivery milestone, material breach of Support Services obligations with respect to Critical Error Corrections (each as defined in the Technology Services Agreement) or material breach of express breach of warranty remedy, in each case under the Technology Services Agreement or a Statement of Work thereto, that is not cured within sixty (60) days after the conclusion of the breach resolution procedures set forth in Section 8.2.1 of the Technology Services Agreement;
(v) all or part of the rights set forth in clause 2.2(a) above in the event of and following an uncured material breach by Purchaser of any material delivery milestone, material breach of Support Services obligation with respect to Critical Error Corrections or material breach of express breach of warranty remedy, in each case under the Services Agreement or a Statement of Work thereto, that is not cured within one (1) day after the conclusion of the breach resolution procedures set forth in Section 8.2.1 of the Technology Services Agreement, but solely to enable Seller or any of its Affiliates to engage a third party to provide services to Seller or any of its Affiliates solely with respect to the Deliverable(s) that are the subject of such uncured material breach and provided enforcement provisions providing that, in the event that Purchaser cures such of material breach within sixty (60) days after by the conclusion sublicensee of the breach resolution procedures set forth in sublicensing terms mandated by this Section 8.2.1 of the Technology Services Agreement2.2.2, Seller’s right to sublicense and any sublicense granted under this clause 2.2(b)(v) uniQure shall automatically terminate after the completion of such services by such third party; and
(vi) (***) and *** (***) insofar as the Purchaser Licensed IP constitutes Deliverables (as defined in the Technology Services Agreement) that Seller is required to provide to ***, as applicable, pursuant to that certain *** and the *** each in effect as of ***. The rights in clause 2.2(b)(i) above shall be further sublicensable one (1) time only by one (1) Divested Company of Seller relating to all or part of Seller’s *** (***) (such right to further sublicense to be granted at the time of divestment of ***) solely to a Divested Company of *** at the time of such divestment (as such Divested Company may organically grow or change from time to time), provided that such further sublicense contains the restrictions set forth in clauses 2.2(c)(i) and c(iii) below and is otherwise in compliance with all of the requirements set forth in this clause 2.2 (including clause 2.2(d) below and Annex L hereto). Any Divested Company sublicense will be transferable or assignable, in whole but not in part, to any Affiliate of the sublicensee or to a third party as part of a merger, acquisition or sale of such sublicensee or substantially all of the business or assets of sublicensee related to the subject matter of this Agreement, as long as the third party involved in such a merger, acquisition or sale is not a Purchaser Competitor and provided that such Affiliate or third party, as applicable, agrees in writing to be bound by all of the terms, conditions and provisions contained in the applicable sublicense agreement required pursuant to clause (d) below.
(i) Except as set forth in clause 2.2(c)(ii) below, for each sublicense to or with respect to a Divested Company of Seller or a Divested Company of *** permitted pursuant to clause 2.2(b) above, such sublicense shall be limited to exercising the rights in clauses 2.2(a)(i), (ii) and (iii) above only with respect to
(I) IC Products that have been Taped Out, IC Products under development, and High-Level IP Blocks and software of such Divested Company in existence, in each case as of the date of divestiture,
(II) any future IC Products, High-Level IP Blocks or software on then-current roadmaps of such Divested Company as of the date of divestiture, and
(III) any derivatives or natural successors of the items specified in 2.2(c)(i)(I) and (II) above.
(ii) In the event that Seller grants a sublicense to or with respect to *** under clause 2.2(b) above, such sublicense shall not be subject to the restrictions set forth in clause 2.2(c)(i) above; provided, however, that the permitted one (1) time further sublicense by *** to a Divested Company of *** shall be subject to the restrictions set forth in clause 2.2(c)(i) above.
(iii) Except as set forth in clause (c)(iv) below, no sublicense granted to a Divested Company pursuant to clause (i) or clause (ii) shall extend to any Person, business, operation or activity with which any such Divested Company becomes combined or is merged.
(iv) Notwithstanding clause (c)(iii) above, for so long as Seller does not *** to *** of the *** (***), if the *** on *** is *** set forth in the *** thereto or *** as long as no other Person (other than controlled Affiliates of *** or Seller) is a *** and Seller (it being understood that, ***, the *** is the *** for purposes of this Agreement), Seller may enter into agreements extending the sublicense granted with respect to *** to any Person, business, operation or activity with which *** is combined or is merged, but solely for the purpose of conducting the business of *** (and not for any other purpose). With respect to all other Divested Company sublicenses hereunder, Purchaser shall consider in good faith any request by Seller to have the sublicense with respect ability to the applicable Divested Company extended to any Person, business, operation or activity with respect to which step in and enforce such Divested Company is combined or is merged, but solely for the purpose of conducting the business of such Divested Company (terms at uniQure’s sole cost and not for any other purpose).
(d) Each sublicense granted under clause 2.2(b) shall be subject to a written sublicense agreement under which each sublicensee shall agree to the scope of sublicense and the restrictions and other obligations set forth in this Agreement applicable to the rights sublicensedexpense, including the applicable express restrictions referenced in clause 2.2 (c)(iii) and (c)(iv) above, and each such sublicense agreement shall
(i) be governed by the same governing law and dispute resolution procedures and venue as set forth in this Agreement, and
(ii) require that Purchaser be copied on all notices provided under terminating such sublicense agreement. Any such sublicense agreement Simioni shall also contain the terms and conditions set forth in clause 2.2(f) below and, if applicable, Annex L hereto. Seller shall advise Purchaser in writing of each such sublicense and provide Purchaser with a copy of each sublicense agreement and any amendment or other modification thereto of the rights granted to Simioni under Section 2.2.1 to uniQure within thirty (30) days of execution of same. Further, each sublicense agreement with or with respect to a Divested Company (not including the sublicense agreement with *** but including the sublicense agreement executed in connection with the exercise of *** of its permitted one (1) time further sublicense to a Divested Company of ***) shall require such Divested Company to provide Purchaser with a copy of the roadmap applicable to such sublicense upon the written request of Purchaser. Any roadmap provided hereunder shall be kept strictly confidential in files of Purchaser’s CEO and/or Vice President of Engineering marked “Highly Confidential” and access thereto and use thereof shall be restricted solely for the purposes of determining whether the scope of the sublicense to, or the exercise of the sublicense by, the applicable Divested Company has been exceeded. Purchaser agrees that Seller shall have no liability for any acts or omissions of its permitted sublicensees; provided that as a condition to Seller’s ability to sublicense its rights hereunder and its sublicensees’ ability to sublicense their permitted sublicensees, Seller agrees, and Seller shall cause each of its sublicensees hereunder to be obligated in writing to agree, in the applicable written sublicense agreement between Seller and such sublicensee, that Purchaser shall be expressly named as an intended third party beneficiary of any such sublicense in the applicable sublicense agreement with the express right to enforce such sublicense agreement in accordance with its termsexecution.
(e) As between Purchaser and Seller, Seller shall exclusively own and retain all right, title and interest in and to any modifications, improvements, updates and derivative works of the Purchaser Licensed IP (other than any Patents included therein) developed by or on behalf of Seller, any of its Affiliates or any sublicensee hereunder; provided, however, that with respect to any claims in any Patent owned by Seller or any of its Affiliates at any time after the Closing Date that read on or are directed towards any such modifications, improvements, updates or derivative works that are developed by or on behalf of Seller or any of its Affiliates, Seller shall automatically grant, and hereby does grant, without any additional requirement, including execution of a separate license agreement, to Purchaser a license under all such claims, which license shall be of the same scope and for the same purposes as the license granted in clause 2.5 below, and for the avoidance of doubt, all such claims shall be deemed licensed to Purchaser under clause 2.5 below. The sublicense rights set forth herein shall be subject to the applicable sublicensee automatically granting to Purchaser, ab initio, without any additional requirement, including execution of a separate license agreement, a license under any claims in any Patent owned by such sublicensee at any time after the date such sublicense is granted to such sublicensee, that read on or are directed towards any modifications, improvements, updates or derivative works of the Purchaser Licensed IP made by or on behalf of such sublicensee, which license shall be of the same scope and for the same purposes as the license granted in clause 2.5 below.
(i) No licensee or sublicensee under this Agreement shall delete or in any manner alter any intellectual property rights notices of Purchaser or its suppliers, if any, appearing on the Purchaser Licensed IP. Each such licensee and sublicensee shall reproduce such notices in a substantially similar manner on each copy it makes of any Purchaser Licensed IP.
(ii) Each licensee and sublicensee under this Agreement shall identify Purchaser on semiconductor manufacturers’ declaration forms as a licensor of the intellectual property owned by Purchaser embodied in the Purchaser Licensed IP that is contained in such licensee’s or sublicensee’s products as produced by its semiconductor manufacturer(s). Each such licensee and sublicensee shall execute such declaration as provided by each such semiconductor manufacturer to document the content of the Purchaser License IP in such products. Upon Purchaser’s request, the applicable licensee or sublicensee shall authorize the applicable semiconductor manufacturer to provide information directly to Purchaser documenting the content of the Purchaser Licensed IP in such products.
(iii) Each licensee under this Agreement acknowledges and agrees, and each sublicensee under this Agreement shall acknowledge and agree in the applicable sublicense agreement, that (I) certain output generated by or on behalf of such licensee or sublicensee through use of certain Purchaser Licensed IP licensed to it hereunder may contain information that complies with the Virtual Component Identification Physical Tagging Standard (VCID) as maintained by the Virtual Socket Interface Alliance (VSIA), (II) such information may be expressed in GDSII Layer 63 or other such layer designated by Purchaser, the VSIA, and hardware definition languages, or other formats, and (III) it is not authorized to, and it shall not, alter or change any such information.
(iv) In the event a semiconductor manufacturer is manufacturing integrated circuits for any licensee or sublicensee using any of the Purchaser Licensed IP, each such licensee and sublicensee shall provide to Purchaser reports once per quarter setting forth, for the previous quarter, the project tracking number used by the semiconductor manufacturer to identify Tape Outs (as defined in the Master License Agreement)
Appears in 1 contract
License Back. (a) Purchaser VL C.V. hereby grants to Seller a non-exclusive, irrevocable, perpetual, nonterminable, world-wide, royalty-free (except pursuant to clause 2.2(b)(iii) below) and fully-paid up (except pursuant to clause 2.2(b)(iii) below) license, without the right to sublicense except as expressly set forth in clauses 2.2(b), (c) and (d) below, to and under the Purchaser Licensed IP to:
(i) as applicable, use, have used, modify, have modified, improve, have improved, create and have created derivative works thereof;
(ii) manufacture, have manufactured, make, have made, design, have designed and use Covered Products;
(iii) offer to sell, sell, have sold, import, have imported, export, have exported, copy, have copied, distribute or otherwise dispose of IC Products included in such Covered Products; andand EXECUTION VERSION
(iv) offer to license, have licensed and license, import, have imported, export, have exported, copy and have copied High-Level IP Blocks or any software included in such Covered Products. For the avoidance of doubt, all “have” rights set forth in this clause (a) are limited to the right to have third parties, including contract manufacturers, use such rights solely on behalf of Seller or any of its Affiliates or any of their respective permitted sublicensees. On a quarterly basis (for the duration of the Services Period (as defined in the Technology Services Agreement) and to the extent not previously delivered, Purchaser, at its own expense, shall deliver to Seller the source code portions of any software included in the Purchaser Licensed IP. The source code shall include updated schematics (to the extent schematics were originally provided by Seller to PurchaserVL C.V.), along with fully documented human-readable source code, including programmer’s notes, flow charts, logic diagrams and other such materials and documentation, in each case to the extent available. For the avoidance of doubt, Seller shall be entitled to sublicense and deliver to any sublicensee permitted by this Agreement, the source code and related materials described in the previous two sentences, and to grant to such sublicensee a sublicense to such source code and materials consistent with the rights set forth in clause 2.2(a)(i) through (iv) above, but limited to the scope of such sublicense (including as required by clause 2.2(c) below, as applicable).
(b) Subject to the restrictions set forth in clause 2.2(d) below, Seller shall have the right to sublicense:
(i) all or part of the rights set forth in clause (a) above to Divested Companies of Seller at the applicable time of such divestment (or a direct or indirect parent company thereof (for use solely with respect to the Divested Company as provided herein)) (subject to the restrictions set forth below in clause 2.2(c) below), including the right to further sublicense in accordance with clause 2.2(b)(iii) below;
(ii) all or part of the rights set forth in clause 2.2(a) above solely with respect to *** to third parties in connection with *** or similar programs or *** programs in which Seller or any of its Affiliates is or may be a participant from time to time, whether now or in the future, to the extent such licenses are required as a condition to participation in such programs and such sublicensed third parties have no right to *** without reference to or use in the applicable ***;
(iii) all or part of the rights set forth in clause 2.2(a) above solely with respect to *** to third parties, subject to the payment and other obligations set forth in Annex L hereto), it being understood that such third parties shall have the EXECUTION VERSION right to use, have used, modify, have modified, improve, have improved, create and have created ***, manufacture, have manufactured, make, have made, design, have designed and use ***, and to offer to sell, sell, have sold, import, have imported, export, have exported, copy, have copied, distribute or otherwise dispose of such *** and such sublicensed third parties have no right to *** without reference to or use in the applicable ***;
(iv) all or part of the rights set forth in clause 2.2(a) above in the event of and following an uncured material breach by Purchaser of any material delivery milestone, material breach of Support Services obligations with respect to Critical Error Corrections (each as defined in the Technology Services Agreement) or material breach of express breach of warranty remedy, in each case under the Technology Services Agreement or a Statement of Work thereto, that is not cured within sixty (60) days after the conclusion of the breach resolution procedures set forth in Section 8.2.1 of the Technology Services Agreement;
(v) all or part of the rights set forth in clause 2.2(a) above in the event of and following an uncured material breach by Purchaser of any material delivery milestone, material breach of Support Services obligation with respect to Critical Error Corrections or material breach of express breach of warranty remedy, in each case under the Services Agreement or a Statement of Work thereto, that is not cured within one (1) day after the conclusion of the breach resolution procedures set forth in Section 8.2.1 of the Technology Services Agreement, but solely to enable Seller or any of its Affiliates to engage a third party to provide services to Seller or any of its Affiliates solely with respect to the Deliverable(s) that are the subject of such uncured material breach and provided that, in the event that Purchaser cures such material breach within sixty (60) days after the conclusion of the breach resolution procedures set forth in Section 8.2.1 of the Technology Services Agreement, Seller’s right to sublicense and any sublicense granted under this clause 2.2(b)(v) shall automatically terminate after the completion of such services by such third party; and
(vi) (***) and *** (***) insofar as the Purchaser Licensed IP constitutes Deliverables (as defined in the Technology Services Agreement) that Seller is required to provide to ***, as applicable, pursuant to that certain *** and the *** *, each in effect as of ***. * EXECUTION VERSION The rights in clause 2.2(b)(i) above shall be further sublicensable one (1) time only by one (1) Divested Company of Seller relating to all or part of Seller’s *** (***) (such right to further sublicense to be granted at the time of divestment of ***) * solely to a Divested Company of *** at the time of such divestment (as such Divested Company may organically grow or change from time to time), provided that such further sublicense contains the restrictions set forth in clauses 2.2(c)(i) and c(iii) below and is otherwise in compliance with all of the requirements set forth in this clause 2.2 (including clause 2.2(d) below and Annex L hereto). Any Divested Company sublicense will be transferable or assignable, in whole but not in part, to any Affiliate of the sublicensee or to a third party as part of a merger, acquisition or sale of such sublicensee or substantially all of the business or assets of sublicensee related to the subject matter of this Agreement, as long as the third party involved in such a merger, acquisition or sale is not a Purchaser Competitor and provided that such Affiliate or third party, as applicable, agrees in writing to be bound by all of the terms, conditions and provisions contained in the applicable sublicense agreement required pursuant to clause (d) below.
(i) Except as set forth in clause 2.2(c)(ii) below, for each sublicense to or with respect to a Divested Company of Seller or a Divested Company of *** permitted pursuant to clause 2.2(b) above, such sublicense shall be limited to exercising the rights in clauses 2.2(a)(i), (ii) and (iii) above only with respect to
(I) IC Products that have been Taped Out, IC Products under development, and High-Level IP Blocks and software of such Divested Company in existence, in each case as of the date of divestiture,
(II) any future IC Products, High-Level IP Blocks or software on then-current roadmaps of such Divested Company as of the date of divestiture, and
(III) any derivatives or natural successors of the items specified in 2.2(c)(i)(I) and (II) above.
(ii) In the event that Seller grants a sublicense to or with respect to *** under clause 2.2(b) above, such sublicense shall not be subject to the restrictions set forth in clause 2.2(c)(i) above; provided, however, that the permitted one (1) time further sublicense by *** to a Divested Company of *** shall be subject to the restrictions set forth in clause 2.2(c)(i) above.
(iii) Except as set forth in clause (c)(iv) below, no sublicense granted to a Divested Company pursuant to clause (i) or clause (ii) shall extend to any Person, business, operation or activity with which any such Divested Company becomes combined or is merged.. EXECUTION VERSION
(iv) Notwithstanding clause (c)(iii) above, for so long as Seller does not *** to *** of the *** (***), if the *** on *** is *** set forth in the *** thereto or *** as long as no other Person (other than controlled Affiliates of *** or Seller) is a *** and Seller (it being understood that, ***, the *** is the *** for purposes of this Agreement), Seller may enter into agreements extending the sublicense granted with respect to *** to any Person, business, operation or activity with which *** is combined or is merged, but solely for the purpose of conducting the business of *** (and not for any other purpose). With respect to all other Divested Company sublicenses hereunder, Purchaser shall consider in good faith any request by Seller to have the sublicense with respect to the applicable Divested Company extended to any Person, business, operation or activity with respect to which such Divested Company is combined or is merged, but solely for the purpose of conducting the business of such Divested Company (and not for any other purpose).
(d) Each sublicense granted under clause 2.2(b) shall be subject to a written sublicense agreement under which each sublicensee shall agree to the scope of sublicense and the restrictions and other obligations set forth in this Agreement applicable to the rights sublicensed, including the applicable express restrictions referenced in clause 2.2 (c)(iii) and (c)(iv) above, and each such sublicense agreement shall
(i) be governed by the same governing law and dispute resolution procedures and venue as set forth in this Agreement, and
(ii) require that Purchaser be copied on all notices provided under such sublicense agreement. Any such sublicense agreement shall also contain the terms and conditions set forth in clause 2.2(f) below and, if applicable, Annex L hereto. Seller shall advise Purchaser in writing of each such sublicense and provide Purchaser with a copy of each sublicense agreement and any amendment or other modification thereto within thirty (30) days of execution of same. Further, each sublicense agreement with or with respect to a Divested Company (not including the sublicense agreement with *** but including the sublicense agreement executed in connection with the exercise of *** of its EXECUTION VERSION permitted one (1) time further sublicense to a Divested Company of ***) * shall require such Divested Company to provide Purchaser with a copy of the roadmap applicable to such sublicense upon the written request of Purchaser. Any roadmap provided hereunder shall be kept strictly confidential in files of Purchaser’s CEO and/or Vice President of Engineering marked “Highly Confidential” and access thereto and use thereof shall be restricted solely for the purposes of determining whether the scope of the sublicense to, or the exercise of the sublicense by, the applicable Divested Company has been exceeded. Purchaser agrees and VL C.V. agree that Seller shall have no liability for any acts or omissions of its permitted sublicensees; provided that as a condition to Seller’s ability to sublicense its rights hereunder and its sublicensees’ ability to sublicense their permitted sublicensees, Seller agrees, and Seller shall cause each of its sublicensees hereunder to be obligated in writing to agree, in the applicable written sublicense agreement between Seller and such sublicensee, that Purchaser shall be expressly named as an intended third party beneficiary of any such sublicense in the applicable sublicense agreement with the express right to enforce such sublicense agreement in accordance with its terms.
(e) As between Purchaser and Selleramong the Parties, Seller shall exclusively own and retain all right, title and interest in and to any modifications, improvements, updates and derivative works of the Purchaser Licensed IP (other than any Patents included therein) developed by or on behalf of Seller, any of its Affiliates or any sublicensee hereunder; provided, however, that with respect to any claims in any Patent owned by Seller or any of its Affiliates at any time after the Closing Date that read on or are directed towards any such modifications, improvements, updates or derivative works that are developed by or on behalf of Seller or any of its Affiliates, Seller shall automatically grant, and hereby does grant, without any additional requirement, including execution of a separate license agreement, to Purchaser VL C.V. a license under all such claims, which license shall be of the same scope and for the same purposes as the license granted in clause 2.5 below, and for the avoidance of doubt, all such claims shall be deemed licensed to Purchaser VL C.V. under clause 2.5 below. The sublicense rights set forth herein shall be subject to the applicable sublicensee automatically granting to Purchaser, ab initio, without any additional requirement, including execution of a separate license agreement, a license under any claims in any Patent owned by such sublicensee at any time after the date such sublicense is granted to such sublicensee, that read on or are directed towards any modifications, improvements, updates or derivative works of the Purchaser Licensed IP made by or on behalf of such sublicensee, which license shall be of the same scope and for the same purposes as the license granted in clause 2.5 below.
(i) No licensee or sublicensee under this Agreement shall delete or in any manner alter any intellectual property rights notices of Purchaser or its suppliers, if any, appearing on the Purchaser Licensed IP. Each such licensee and sublicensee shall reproduce such notices in a substantially similar manner on each copy it makes of any Purchaser Licensed IP.
(ii) Each licensee and sublicensee under this Agreement shall identify Purchaser on semiconductor manufacturers’ declaration forms as a licensor of the intellectual property owned by Purchaser embodied in the Purchaser Licensed IP that is contained in such licensee’s or sublicensee’s products as produced by its semiconductor manufacturer(s). Each such licensee and sublicensee shall execute such declaration as provided by each such semiconductor manufacturer to document the content of the Purchaser License IP in such products. Upon Purchaser’s request, the applicable licensee or sublicensee shall authorize the applicable semiconductor manufacturer to provide information directly to Purchaser documenting the content of the Purchaser Licensed IP in such products.
(iii) Each licensee under this Agreement acknowledges and agrees, and each sublicensee under this Agreement shall acknowledge and agree in the applicable sublicense agreement, that (I) certain output generated by or on behalf of such licensee or sublicensee through use of certain Purchaser Licensed IP licensed to it hereunder may contain information that complies with the Virtual Component Identification Physical Tagging Standard (VCID) as maintained by the Virtual Socket Interface Alliance (VSIA), (II) such information may be expressed in GDSII Layer 63 or other such layer designated by Purchaser, the VSIA, and hardware definition languages, or other formats, and (III) it is not authorized to, and it shall not, alter or change any such information.
(iv) In the event a semiconductor manufacturer is manufacturing integrated circuits for any licensee or sublicensee using any of the Purchaser Licensed IP, each such licensee and sublicensee shall provide to Purchaser reports once per quarter setting forth, for the previous quarter, the project tracking number used by the semiconductor manufacturer to identify Tape Outs (as defined in the Master License Agreement) 2.5
Appears in 1 contract
Sources: Intellectual Property Transfer and License Agreement