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REDACTED CONFIDENTIAL TREATMENT REQUESTED
The asterisked portions of this document have been omitted and
are filed separately with the Securities and Exchange Commission
EXHIBIT 10.16
102495 AGREEMENT with an effective date
of January 1, 1995, between
INTERNATIONAL BUSINESS MACHINES
CORPORATION, a New York
REDACTED FOR CONFIDENTIALITY corporation (hereinafter called
IBM), and CHARTERED SEMICONDUCTOR
MANUFACTURING PTE., LTD., a
corporation of Singapore
(hereinafter called CSMP).
Each of the parties has the right (as GRANTOR herein) to grant licenses to
the other party (as GRANTEE herein) under certain patents and desires to acquire
a ************ license under such patents of the other party.
Each of the parties expects to continue research and development which will
produce further patents and each party may require a ********** license under
such patents of the other party.
In consideration of the premises and mutual covenants herein contained, IBM
and CSMP agree as follows:
Section 1. DEFINITIONS
1.1 "IBM Licensed Patents" shall mean all patents having claims reciting methods
or apparatus for manufacturing, assembling and packaging Semiconductor
Apparatus:
1.1.1 issued or issuing on patent applications entitled to an effective filing
date prior to December 31, 2000;
1.1.2 which, but for this Agreement, would be infringed by CSMP's making, using,
importing, leasing, selling or otherwise transferring a CSMP Licensed
Product in the country in which such patent exists; and
1.1.3 under which patents or the applications therefor IBM or any of its
Subsidiaries now has, or hereafter obtains, the right to grant licenses to
CSMP of or within the scope granted herein without such grant or the
exercise of rights thereunder resulting in the payment of royalties or
other consideration by IBM or its Subsidiaries to third parties (except for
payments between IBM and its Subsidiaries, and payments to third parties
for inventions made by said third parties while employed by IBM or any of
its Subsidiaries).
The term "IBM Licensed Patents" shall also include said patent applications and
any patent reissuing on any of the aforesaid patents.
1.2 "IBM Licensed Products" shall mean Semiconductor Apparatus.
1.3 "Integrated Circuit" shall mean an integral unit including a plurality of
active and/or passive circuit elements formed at least in part of Semiconductor
Material and associated on, or
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in, one substrate comprising the first level of packaging for such elements;
such unit forming or contributing to the formation of a circuit for performing
electrical or electronic functions.
1.4 "Semiconductor Apparatus" shall mean Semiconductor Material, Semiconductor
Device, Semiconductor Circuit, Integrated Circuit and/or Semiconductor Memories
and any combination of such apparatus with other such apparatus;
1.5 "Semiconductor Circuit" shall mean a circuit in which one or more
Semiconductor Devices are interconnected in one or more paths (including passive
circuit elements, if any) for performing fundamental electrical or electronic
functions and, if provided therewith, housing and/or supporting means therefor.
1.6 "Semiconductor Device" shall mean a device and any material therefor,
comprising a body of one or more Semiconductor Materials and one or more
electrodes associated therewith and, if provided therewith, housing and/or
supporting means therefor.
1.7 "Semiconductor Material" shall mean any material whose conductivity is
intermediate to that of metals and insulators at room temperature and whose
conductivity, over some temperature range, increases with increases in
temperature. Such materials shall include, but not be limited to, refined
products, reaction products, reduced products, mixtures and compounds.
1.8 "Semiconductor Memory" shall mean any instrumentality or aggregate of
instrumentalities, which instrumentality or aggregate is designed only for
storing digital information, intelligence or data by selectively setting or
presetting detectable states in Semiconductor Material forming at least a part
of such instrumentality or aggregate, such instrumentality or aggregate may
include powering means and auxiliary and/or support circuits (such as
regeneration means, true-complement generations means, address decoding means,
sensing means and selection means) to control the flow of such information,
intelligence or data into and out of such Semiconductor Memory.
1.9 "Subsidiary" of a party hereto or of a third party shall mean a corporation,
company or other entity:
1.9.1 more than fifty percent (50%) of whose outstanding shares or securities
(representing the right to vote for the election of directors or other
managing authority) are, now or hereafter, owned or controlled, directly or
indirectly, by a party hereto or such third party, but such corporation,
company or other entity shall be deemed to be a Subsidiary only so long as
such ownership or control exists; or
1.9.2 which does not have outstanding shares or securities, as may be the case
in a partnership, joint venture or unincorporated association, but more
than fifty percent (50%) of whose ownership interest representing the right
to make the decisions for such corporation, company or other entity is, now
or hereafter, owned or controlled, directly or indirectly, by a party
hereto or such third party, but such corporation, company or other entity
shall be deemed to be a Subsidiary only so long as such ownership or
control exists.
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1.10 "CSMP Licensed Patents" shall mean all patents, including utility models
and including design patents and registrations for type fonts (but not including
any other design patents or registrations):
1.10.1 issued or issuing on patent applications entitled to an effective filing
date prior to December 31, 2000;
1.10.2 which, but for this Agreement, would be infringed by IBM's making, using,
importing, leasing, selling or otherwise transferring an IBM Licensed
Product in the country in which such patent exists; and
1.10.3 under which patents or the applications therefor CSMP or any of its
Subsidiaries now has, or hereafter obtains, the right to grant licenses to
IBM of or within the scope granted herein without such grant or the
exercise of rights thereunder resulting in the payment of royalties or
other consideration by CSMP or its Subsidiaries to third parties (except
for payments between CSMP and its Subsidiaries, and payments to third
parties for inventions made by said third parties while employed by CSMP or
any of its Subsidiaries). The term "CSMP Licensed Patents" shall also
include said patent applications and any patent reissuing on any of the
aforesaid patents.
1.11 "CSMP Licensed Products" shall mean Semiconductor Apparatus.
1.12 "CSMP Elected Country" shall mean one additional country where CSMP owns,
controls or has contracted for its use, physical assets and/or real property for
the manufacture of CSMP Licensed Products during the term of this Agreement.
CSMP shall provide written notice to IBM of the CSMP Elected Country no later
than ninety (90) days after manufacturing begins in such country and no country
shall be deemed to be a CSMP Elected Country in the absence of such notice.
Section 2. LICENSES
2.1 Subject to the provisions of Section 2.4, IBM on behalf of itself and its
Subsidiaries grants to CSMP a nonexclusive license under the IBM Licensed
Patents:
2.1.1 to make CSMP Licensed Products only in Singapore and one CSMP Elected
Country;
2.1.2 to use, import, and lease, sell and otherwise transfer CSMP Licensed
Products worldwide;
2.1.3 to use (but not to manufacture) any apparatus in the manufacture of CSMP
Licensed Products and to practice any method or process in such manufacture
of CSMP Licensed Products; and
2.1.4 to have CSMP Licensed Products made in whole or in part by another
manufacturer for the use and/or lease, sale or other transfer by CSMP only
when the designs and specifications for such CSMP Licensed Products were
provided by CSMP to the other
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manufacturer, whether developed by CSMP or received by CSMP from customers
to whom the Licensed Products are to be sold; provided, however, the
license under this section 2.1.4:
2.1.4.1 shall only be under claims of IBM Licensed Patents, the
infringement of which would be necessitated by compliance with such
designs and specifications;
2.1.4.2 shall not apply to any CSMP Licensed Products in the form
manufactured or marketed by said other manufacturer prior to CSMP's
furnishing of said designs and specifications; and
2.1.4.3 shall be limited to no more than ten percent (10%) of the sales
volume of CSMP Licensed Products in any twelve month period starting
on the effective dates and every anniversary thereafter, during the
term of this Agreement.
Unless CSMP informs IBM to the contrary, CSMP shall be deemed to have authorized
said other manufacturer to make said CSMP Licensed Products under the license
granted to CSMP in this Section 2.1.3 when the conditions specified herein is
fulfilled. Within thirty (30) days of a written request identifying a product
and a manufacturer, CSMP shall inform IBM of the quantity of such product, if
any, manufactured by such manufacturer.
In the event that neither IBM nor any of its Subsidiaries has the right to grant
a license under any particular IBM Licensed Patent of the scope set forth above
in this Section 2.1, then the license granted herein under said IBM Licensed
Patent shall be of the broadest scope which IBM or any of its Subsidiaries has
the right to grant within the scope set forth above.
2.2 Subject to the provisions of Section 2.3, CSMP on behalf of itself and its
Subsidiaries grants to IBM a worldwide, fully paid-up, nonexclusive license
under the CSMP Licensed Patents:
2.2.1 to make, use, import, and lease, sell or otherwise transfer IBM Licensed
Products;
2.2.2 in the manufacturing of IBM Licensed Products, to use any apparatus and
practice any method or process; and
2.2.3 to have IBM Licensed Products made by another manufacturer for the use
and/or lease, sale or other transfer by IBM only when the designs and
specifications for such IBM Licensed Products were created by IBM (either
solely or jointly with one or more third parties); provided, however, the
license under this section 2.2.3:
2.2.3.1 shall only be under claims of CSMP Licensed Patents, the infringement
of which would be necessitated by compliance with such designs and
specifications; and
2.2.3.2 shall not apply to any IBM Licensed Products in the form manufactured
or marketed by said other manufacturer prior to IBM's furnishing of
said designs and specifications.
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Unless IBM informs CSMP to the contrary, IBM shall be deemed to have
authorized said other manufacturer to make said IBM Licensed Products under
the license granted to IBM in this Section 2.2.3 when the conditions
specified herein is fulfilled. Within thirty (30) days of a written request
identifying a product and a manufacturer, IBM shall inform CSMP of the
quantity of such product, if any, manufactured by such manufacturer.
In the event that neither CSMP nor any of its Subsidiaries has the right to
grant a license under any particular CSMP Licensed Patent of the scope set forth
above in this Section 2.2, then the license granted herein under said CSMP
Licensed Patent shall be of the broadest scope which CSMP or any of its
Subsidiaries has the right to grant within the scope set forth above.
2.3 No license or immunity is granted by CSMP either directly or by implication,
estoppel or otherwise to any third parties acquiring items from IBM for the
combination of such acquired items with other items (including items acquired
from either party hereto) or for the use of such combination, even if such
acquired items have no substantial use other than as part of such a combination.
2.4 No license or immunity is granted by IBM either directly or by implication,
estoppel or otherwise to any third parties acquiring items from CSMP for the
combination of such acquired items with other items (including items acquired
from either party hereto) or for the use of such combination, even if such
acquired items have no substantial use other than as part of such a combination;
except that IBM shall not make any claim of infringement against third parties
of any IBM Licensed Patents with respect to products acquired by such third
parties from CSMP, even if such products are combined with other products.
2.5 The parties agree that CSMP is not paying under this Agreement for any
rights under any IBM patents claiming the design, structure or operation of
Semiconductor Apparatus and that no rights under any such IBM patents are
granted herein to CSMP or any third parties, either expressly or by implication.
The parties further agree that IBM's sole recourse with respect to past, present
or future claims of infringement of IBM patents not licensed herein to CSMP,
which claims are based upon the design, structure or operation of CSMP Licensed
Products designed by third parties and manufactured, sold, leased or otherwise
transferred by CSMP, shall be against third parties who acquire such CSMP
Licensed Products, and IBM shall have no recourse of any such claims of
infringement against CSMP with respect to such unlicensed IBM patents.
Section 3. EXTENSION OF LICENSE TO SUBSIDIARIES
3.1 The licenses granted herein shall include the right of the parties hereto to
sublicense their respective Subsidiaries and the right of such sublicensed
Subsidiaries to sublicense other Subsidiaries. Each sublicensed Subsidiary shall
be bound by the terms and conditions of this Agreement (other than those of
Section 5) as if it were named herein in the place of the party with whom the
sublicense originated. If a Subsidiary ceases to be a Subsidiary and holds any
patents or patent applications under which a party hereto is licensed, such
licenses shall continue for the term of such party's license. Any sublicense
granted to a Subsidiary shall terminate on the date such Subsidiary ceases to be
a Subsidiary.
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REDACTED CONFIDENTIAL TREATMENT REQUESTED
The asterisked portions of this document have been omitted and
are filed separately with the Securities and Exchange Commission
Section 4. RELEASES
4.1 After receipt of the payment specified in Section 5.1.1, IBM, on behalf of
itself and its Subsidiaries which are Subsidiaries as of the date of this
Agreement, shall irrevocably release CSMP, its Subsidiaries which are
Subsidiaries as of the date of this Agreement, and its and their respective
customers, mediate and immediate, from any and all claims of infringement of any
IBM Licensed Patents, which claims have been made or which might be made at any
time, with respect to any item manufactured, used, leased, sold or otherwise
transferred by CSMP or its Subsidiaries before the effective date of this
Agreement, and with respect to any method practiced or Semiconductor Device made
in the manufacture or use of such item, to the extent that such item or method
or Semiconductor Device would have been licensed or the subject of any immunity
hereunder had it been manufactured, used, or leased, sold or otherwise
transferred or practiced by CSMP after the date of this Agreement. The release
contained herein shall not apply to any person other than those specified in
this Section 4.1 and shall not apply to the manufacture of such items by any
person other than CSMP or its Subsidiaries.
4.2 CSMP, on behalf of itself and its Subsidiaries which are Subsidiaries as of
the date of this Agreement, hereby irrevocably releases IBM, its Subsidiaries
which are Subsidiaries as of the date of this Agreement, and its and their
respective customers, mediate and immediate, from any and all claims of
infringement of any CSMP Licensed Patents, which claims have been made or which
might be made at any time, with respect to any item manufactured, used, or
leased, sold or otherwise transferred by IBM or its Subsidiaries before the
effective date of this Agreement, and with respect to any method practiced in
the manufacture or use of such item, to the extent that such item or method
would have been licensed or the subject of any immunity hereunder had it been
manufactured, used, or leased, sold or otherwise transferred or practiced by IBM
after the date of this Agreement. The release contained herein shall not apply
to any person other than those specified in this Section 4.2 and shall not apply
to the manufacture of such items by any person other than IBM or its
Subsidiaries.
Section 5. PAYMENT
5.1 As additional consideration for the license, immunities, release and other
rights granted to CSMP herein, CSMP shall pay to IBM the sum of ****************
**********************************, no portion of which shall be refundable, but
which shall be payable in installments as follows:
5.1.1 ************************************************* on November 3, 1995;
5.1.2 ************************************* on or before December 20, 1996;
5.1.3 ************************************* on or before December 20, 1997;
5.1.4 ************************************* on or before December 20, 1998;
5.1.5 ************************************* on or before December 20, 1999;
and
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REDACTED CONFIDENTIAL TREATMENT REQUESTED
The asterisked portions of this document have been omitted and
are filed separately with the Securities and Exchange Commission
5.1.6 ************************************* on or before December 20, 2000.
Upon payment of all of the installments specified above in Section 5.1, the
license, immunities and other rights granted to CSMP in this Agreement shall be
fully paid up for the term of said rights.
5.2 CSMP shall be liable for interest on any overdue payment required to be made
pursuant to Section 5, commencing on the date such payment becomes due, at an
annual rate which is the greater of ************* or one *******************
than the prime interest rate as quoted by the head office of Citibank N.A., New
York, at the close of banking on such date, or on the first business day
thereafter if such date falls on a non-business day. If such interest rate
exceeds the maximum legal rate in the jurisdiction where a claim therefor is
being asserted, the interest rate shall be reduced to such maximum legal rate.
5.3 If an installment payments set forth in Section 5.1 is not made by its due
date, and if such payment, plus interest pursuant to Section 5.2, is not made
prior to forty-five (45) days after notice from IBM of the delinquency, then, at
IBM's sole option, either:
5.3.1 all of the above installment payments which were due after such notice
shall automatically become due and payable in full on the forty-fifth day
after such notice without presentment, demand or additional notice of any
kind (all of which are hereby expressly waived); or
5.3.2 all licenses and other rights granted herein to CSMP shall automatically
terminate on the forty-fifth day after such notice, CSMP shall remain
obligated to pay all installments which had become due prior to such notice
(plus interest thereon) and CSMP shall not be obligated to make any other
payments.
IBM's election of the option set forth in Section 5.3.1 or 5.3.2 shall be stated
in such notice. Such notice shall be given as stated in Section 9 herein.
5.4 CSMP may deduct or withhold, in accordance with applicable law, from the
payments payable to IBM any income or withholding taxes imposed by its national
government, including any political subdivision thereof. CSMP shall furnish IBM
the appropriate documentary proof of any such payment made to the relevant
authorities.
Section 6. OTHER LICENSE RIGHTS
6.1 It is recognized that the parties hereto or their respective Subsidiaries
may now have, or hereafter obtain, the right to grant licenses under one or more
patents of any country, including utility models and including design patents
and registrations for type fonts (but not including any other design patents or
registrations), issuing on patent applications entitled to an effective filing
date prior to December 31, 2000, and under the patent applications therefor, but
that such grant or the exercise of rights thereunder shall result in payment of
royalties or other consideration by GRANTOR or its Subsidiaries to third
parties. Each party (as GRANTOR herein) agrees that, upon written request, it
shall grant to the other party to the extent and subject to the terms and
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conditions under which it then has the right to do so, a license of the broadest
scope which GRANTOR has the right to grant at any time but of no greater scope
than the scope of the licenses granted herein with respect to any such patent or
patent application. Such license shall be granted under a separate agreement,
upon payment of the same royalty or other consideration as that which GRANTOR or
any of its Subsidiaries is obligated to pay to a third party because of the
grant of such license or the exercise of rights thereunder.
6.2 Upon written request by a party, the other party shall inform the requesting
party of those patents or patent applications coming within the scope of Section
6.1 at the time of such request.
Section 7. TERM OF AGREEMENT
7.1 The term of this Agreement shall be from the effective date of this
Agreement until December 31, 2000.
7.2 If one party (referred to in this Section 7.2 as the Acquired Party) is
acquired by a third party, becoming a Subsidiary of such third party:
7.2.1 said Acquired Party shall promptly give notice of such acquisition to the
other party;
7.2.2 all rights granted hereunder to said Acquired Party together with any
sublicenses theretofore granted by said Acquired Party shall terminate on a
termination date one hundred and eighty (180) days after the date of such
acquisition;
7.2.3 all licenses and immunities granted herein to said other Party under any
patents issuing on patent applications having an effective filing date
subsequent to said termination date and under said patent applications
shall terminate; and
7.2.4 said Acquired Party shall be entitled, upon request made within one
hundred and eighty (180) days after the date of such acquisition to a
nontransferable, nonexclusive, license under said other party's Licensed
Patents (including the right to sublicense its Subsidiaries) to make, use,
lease and sell only products identical with those manufactured and marketed
by said Acquired Party within the licenses granted in this Agreement prior
to such acquisition. As consideration for such license, said Acquired Party
shall be required to pay to said other party all payments which said
Acquired Party would have been obligated to pay after the date of
acquisition pursuant to Section 5 of this Agreement. Such license shall be
terminable by said Acquired Party upon any date a payment is due, by giving
written notice of termination thirty (30) days prior to such due date and
paying all payments due on such date.
Section 8. WARRANTY
8.1 Each party represents and warrants that it has the full right and power to
grant the license, immunities and release set forth in Sections 2 and 4 and that
there are no outstanding agreements, assignments or encumbrances inconsistent
with the provisions of said Sections or with any other
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provision of this Agreement. Each party (as a GRANTOR) further represents and
warrants that prior to the execution of this Agreement it has informed the other
party of any patent originating from inventions made by employees of GRANTOR or
its Subsidiaries, which patent is now owned by GRANTOR or its Subsidiaries and
which patent, owing to prior arrangements with third parties, does not, or shall
not, qualify as a GRANTOR Licensed Patent, under which licenses are granted of
the full scope set forth in Section 2.1. Neither party makes any other
representations or warranties, express or implied, nor does either party assume
any liability in respect of any infringement of patents or other rights of third
parties owing to the other party's operation under the license herein granted.
Section 9. COMMUNICATIONS
9.1 Payments shall be made by electronic funds transfer and shall be deemed to
have been made on the date they are credited to IBM's account. Any notice or
other communication required or permitted to be made or given to either party
hereto pursuant to this Agreement shall be sent to such party by registered
airmail (except that registered or certified mail may be used where delivery is
in the same country as mailing), postage prepaid, addressed to it at its address
set forth below, or to such other address as it shall designate by written
notice given to the other party, and shall be deemed to have been made or given
on the date of mailing. The addresses are as follows:
9.1.1 For electronic funds transfers of payments:
IBM Director of Licensing
The Bank of New York
▇▇ ▇▇▇▇ ▇▇▇▇▇▇
▇▇▇ ▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇ of America
Credit Account No. ▇▇▇-▇▇▇▇-▇▇▇
ABA No. ▇▇▇▇-▇▇▇▇-▇
9.1.2 For mailing to IBM:
Director of Licensing
International Business Machines Corporation
▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇ of America
9.1.3 For facsimile transmission to IBM:
(▇▇▇) ▇▇▇-▇▇▇▇
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9.1.4 For mailing to CSMP:
▇▇. ▇▇▇▇▇ ▇▇▇, ▇▇. Vice President - Operations
Chartered Semiconductor Manufacturing PTE., Ltd.
▇▇. ▇ ▇▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇▇ ▇▇▇▇
9.1.5 For facsimile transmission to CSMP:
▇▇-▇▇▇-▇▇▇▇
Section 10. ASSIGNMENTS
10.1 Neither party shall assign, or grant any right under, any of its patents,
or the applications therefor, which qualify as such party's Licensed Patents, or
any of its patents or the applications therefor or rights which are subject to
the other party's rights pursuant to Section 6, unless such assignment or grant
is made subject to the terms and conditions of this Agreement. Subject to the
provisions of Section 3, neither party shall assign any of its rights or
privileges hereunder without the prior written consent of the other party. Any
attempted assignment in derogation of the foregoing shall be void.
Section 11. KNOW-HOW AND TRADE SECRETS
11.1 No license or other right is granted herein to either party, directly or by
implication, estoppel or otherwise, with respect to any trade secrets or
know-how, and no such license or other right shall arise from the consummation
of this Agreement or from any acts, statements or dealings leading to such
consummation. Except as specifically provided herein, neither party is required
hereunder to furnish or disclose to the other any technical or other
information.
Section 12. APPLICABLE LAW
12.1 This Agreement shall be construed, and the legal relations between the
parties hereto shall be determined, in accordance with the law of the State of
New York, United States of America, as such law applies to contracts signed and
fully performed in such State.
Section 13. MISCELLANEOUS
13.1 Nothing contained in this Agreement shall be construed as a warranty or
representation by either party as to the validity or scope of any of its
Licensed Patents and either party is free to contest in any proceeding said
validity or scope.
13.2 Nothing contained in this Agreement shall be construed as conferring any
right to use in advertising, publicity, or other promotional activities any
name, trade name, trademark, or other
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designation of either party hereto (including any contraction, abbreviation or
simulation of any of the foregoing); and each party hereto agrees not to use or
refer to this Agreement or any provision thereof in any promotional activity
associated with apparatus licensed hereunder, without the express written
approval of the other party.
13.3 Nothing contained in this Agreement shall be construed as conferring on
either party any license or other right to copy the exterior design of the
products of the other party.
13.4 Nothing contained in this Agreement shall be construed as conferring any
rights by implication, estoppel or otherwise, to or under copyrights or mask
work or similar rights, or with respect to computer programs under any form of
statutory protection now existing or hereafter enacted, in any country or
countries, wherein the copying of a computer program is a requisite of
infringement under such form of protection.
13.5 Nothing contained in this Agreement shall be construed as limiting the
rights which the parties have outside the scope of the licenses granted
hereunder, or restricting the right of either party or any of its Subsidiaries
to make, have made, use, lease, sell or otherwise dispose of any particular
product or products not herein licensed.
13.6 Each party shall, upon request from the other party sufficiently
identifying any patent or patent application, inform the other party as to the
extent to which said patent or patent application is subject to the licenses and
rights granted hereunder. If such licenses or rights under said patent or patent
application are restricted in scope, copies of all pertinent provisions of any
contract or other arrangement creating such restrictions shall, upon request, be
furnished to the party making such request, unless such disclosure is prevented
by such contract, and in that event a statement of the nature of such
restriction shall be provided.
13.7 Neither of the parties hereto, nor any of their respective Subsidiaries
shall be required hereunder to file any patent application, or to secure any
patent or patent rights, or to maintain any patent in force, or to provide
copies of patent applications to the other party or its Subsidiaries, or to
disclose any inventions described or claimed in such patent applications.
13.8 Neither party shall have any obligation hereunder to institute any action
or suit against third parties for infringement of any of its Licensed Patents or
to defend any action or suit brought by a third party which challenges or
concerns the validity of any of its Licensed Patents. In addition, neither party
shall have any right to institute any action or suit against third parties for
infringement of any of the other party's Licensed Patents.
13.9 If a third party has the right to grant licenses under a patent to a party
hereto (as a licensee) with the consent of the other party hereto, said other
party shall provide said third party with any consent required to enable said
third party to license said licensee on whatever terms and conditions such third
party may deem appropriate. Each party hereby waives any right it may have to
receive royalties or other consideration from said third party as a result of
said third party's so licensing said licensee within the scope of the license
granted under Section 2 of this Agreement.
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13.10 Either party's Licensed Products leased, sold or otherwise transferred by
a party hereto or its sublicensed Subsidiary shall be considered to be licensed
under any of the other party's Licensed Patents which at any time covers such
Licensed Products, notwithstanding that the Licensed Product has been re-leased,
resold or re-transferred by any entity in the same or another country.
13.11 This Agreement shall not be binding upon the parties until it has been
signed hereinbelow by or on behalf of each party, in which event it shall be
effective as of the later of:
13.11.1 the date of this Agreement first above written; or
13.11.2 the date on which all necessary Singapore government approvals are
obtained.
If approvals referred to in Section 13.11.2 are required in order for CSMP to
perform its obligations under this Agreement, and all of such approvals are not
obtained within one hundred and twenty (120) days of the signing of this
Agreement by IBM, IBM, at its sole discretion, may void this Agreement, ab
initio. No amendment or modification hereof shall be valid or binding upon the
parties unless made in writing and signed as aforesaid.
13.12 This Agreement embodies the entire understanding of the parties with
respect to the subject matter hereof and merges all prior discussions between
them, and neither of the parties shall be bound by any conditions, definitions,
warranties, understandings or representations with respect to the subject matter
hereof other than as expressly provided herein.
13.13 The intent of the parties is to grant limited licenses to each other as
specified in Section 2. If anything in Section 2 is found by competent authority
to be invalid, illegal or unenforceable in any respect for any reason, either
party shall have the right to terminate this Agreement. If anything in any other
Section of this Agreement is found by competent authority to be invalid, illegal
or unenforceable in any respect for any reason, the validity, legality and
enforceability of such other Section in every other respect and the remainder of
this Agreement shall continue in effect so long as the Agreement still expresses
the intent of the parties. However, if the intent of the parties cannot be
preserved, this Agreement shall be either renegotiated or terminated.
13.14 The headings of the several Sections are inserted for convenience of
reference only and are not intended to be a part of or to affect the meaning or
interpretation of this Agreement.
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IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly signed as of the date first above written.
INTERNATIONAL BUSINESS
MACHINES CORPORATION
Witness: By: /s/ ▇.▇. ▇▇▇▇▇▇, JR.
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▇. ▇. ▇▇▇▇▇▇, Jr.
Vice President
[SIGNATURE ILLEGIBLE]
---------------------- CHARTERED SEMICONDUCTOR
MANUFACTURED PTE., LTD.
Witness: By: /s/ TAN ▇▇▇▇ ▇▇▇▇
----------------------------------------
Tan ▇▇▇▇ ▇▇▇▇
President
[SIGNATURE ILLEGIBLE]
----------------------
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