Exhibit 10.1
SAI (IRELAND) LIMITED
- and -
CLARUS CORPORATION
PATENT LICENCE AGREEMENT
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▇▇▇▇▇ ▇'▇▇▇▇▇▇▇ & PARTNERS
Solicitors
▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇ ▇
THIS AGREEMENT is made on the day of 2000
BETWEEN:
SAI (IRELAND) LIMITED
of ▇▇▇ ▇▇▇▇▇, ▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ (hereinafter referred to as the Licensor):
- and -
CLARUS CORPORATION
Of Suwanee, Georgia
(hereinafter referred to as the Licensee).
WHEREAS:
A. The Licensor is the registered owner of the Patents (as hereinafter
defined) set out in the First Schedule hereto.
B. The Licensor has agreed with the Licensee to grant to the Licensee a non-
exclusive licence throughout the United States in respect of such Patents.
NOW THIS AGREEMENT WITNESSETH:-
SECTION 1.0 - INTERPRETATION
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1.1 Definitions
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In this Agreement the following words and expressions shall have the
following meanings:-
(a) "Business Day", a day on which banks in Dublin are open for business.
(b) "Improvements", all improvements, modifications or adaptations to the
Patents or any of them which might reasonably be of commercial
interest to the Licensee and which may be made, developed or acquired
by the Licensor at any time following the execution of this Agreement.
(c) "Invention", the claimed subject matter of the Patents.
(d) "Licence Payment", amounts payable in US dollars in accordance with
the Third Schedule.
(e) "Patents", the patents set forth in the First Schedule, any
corresponding patent application to be filed based on such patents,
and all patents and other rights derived therefrom.
(f) "Products", all products incorporating the Patents.
1.2 Further Definitions
(a) Any reference to any provision of any legislation shall include any
modification, re-enactment or extension thereof;
(b) Words such as "hereunder", "hereto", "hereof", and "herein" and other
words commencing with "here" shall unless the context clearly indicates to
the contrary refer to the whole of this Agreement and not to any particular
section or clause thereof;
(c) Save as otherwise provided herein any reference to a clause, paragraph or
sub-paragraph shall be a reference to a clause, paragraph or sub-paragraph
(as the case may be) of this Agreement and any reference in a clause to a
paragraph or sub-paragraph shall be a reference to a paragraph or sub-
paragraph of the clause or paragraph in which the reference is contained
unless it appears from the context that a reference to some other provision
is intended.
1.3 Headings and Captions
The headings in this Agreement are inserted for convenience of reference
only and shall not be considered a part of or affect the construction or
interpretation of this Agreement.
SECTION 2.0 - GRANT
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2.1 Grant
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In consideration of the payments set forth in Section 5 hereof, the
Licensor hereby grants, to the Licensee, an irrevocable non exclusive
licence and authority to use the Patents and any Improvements in the United
States in any manner it deems fit subject to the terms and conditions of
this Agreement, and the Licensee hereby accepts such grant.
2.2 Formal Licence
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The parties hereby agree to execute a formal licence agreement in a form
appropriate for each jurisdiction in respect of which the Patents are in
force for the purpose of registering any patent licence granted pursuant to
Section 2.1 above. Any such formal licence agreement shall operate subject
to the terms of this Agreement.
SECTION 3.0 - CONCERNING THE PATENTS
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3.1 Patent Fees
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The Licensor shall remain responsible for the payment of all filing,
prosecution, renewal and maintenance fees in respect of the Patents.
3.2 Infringement
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The Licensor shall (and the Licensee may) take all proper steps to help
maintain the validity and enforceability of the Patents, but neither party
shall be obliged to take proceedings against any infringer of any of the
Patents except that the Licensee shall take proceedings on the instructions
of the Licensor if it is indemnified against the costs of so doing. Each
party will notify the other of any infringement which comes to its notice
and all questions on whether action shall be taken against an infringer
shall be decided after taking into account:-
(a) the seriousness of the infringement;
(b) the strength of the Patent infringed;
(c) the importance of the Patent infringed;
(d) the expected costs of proceedings;
(e) the difficulty of obtaining the necessary evidence to support the
proceedings;
(f) any opinion of counsel which may have been obtained by either party.
3.3 Warranty
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The Licensor hereby warrants that:-
(a) that there are no other patents owned by it based on the Invention;
and
(b) to the best of the Licensor's knowledge and belief the exercise of the
rights granted or to be granted to the Licensee hereunder will not
result in the infringement of valid patents or other rights of third
parties; and
(c) save as set out in the Second Schedule hereto no other licence is in
place in respect of the Patents at the date hereof which has not been
cancelled or terminated.
3.4 Improvements
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The Licensor shall forthwith disclose to the Licensee in such detail as the
Licensee may reasonably require all Improvements. Any such Improvements
shall be deemed to thenceforth form part of the Patents hereby licensed and
the terms hereof (including the right of the Licensee to grant sub-
licences) shall thenceforth apply to such Improvements as if they formed
part of the Patents as defined herein.
SECTION 4.0 - DURATION
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4.1 Term
----
This Agreement shall remain in force for a term of seven (7) years from the
date hereof.
SECTION 5.0 - ANCILLARY PROVISIONS
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5.1 Payment of Licence Fee
----------------------
The Licensee's authority to use the Patents is subject to the receipt of
the Licence Payments by Licensee to Licensor in accordance herewith. The
parties agree that the Licensee shall make an advance payment to the
Licensor equal to the net present value of the future payment obligations
under the Payment Schedule attached as the Third Schedule hereto, upon
which payment the Licence shall be fully paid and no other licence fee
payments shall be due hereunder. The parties agree that on the date hereof,
the net present value of all the payments due hereunder (calculated at an
agreed upon discount rate of 6.98172% per annum) during the term of this
Licence shall be $15,000,000.
5.2 Successors
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This Agreement shall be binding upon and inure to the benefit of the
parties hereto and their respective successors and assigns.
5.3 Sub-Licences
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The Licensee shall have the right to grant sub-licences of the Patents
without any prior reference to the Licensor. The terms of such sub-licences
shall not be inconsistent with the obligations of the Licensee hereunder.
5.4 Assignment
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The Licensee shall have the right to assign the benefit of the licence at
any time (including without prejudice where it enters into liquidation or
receivership) to any other party to whom the provisions of this clause
shall apply mutatis mutandis.
5.5 Markings
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The Licensee shall comply with all marking obligations required by law in
the countries covered by this Agreement and as appropriate ▇▇▇▇ the
Products "Patent No. " or "Patent Pending" or abbreviations thereof or
similar words required or permitted by law.
5.6 Proceedings
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(a) If any infringement action, claims or proceedings of any kind are
threatened or commenced by a third party against either the Licensee
or against the Licensor because of the Licensee's exploitation of the
rights granted under this Agreement or its manufacture, distribution
and servicing of the Products or on the ground that the Products
infringe any registered design or patent monopoly right vested in such
third party, then the party so threatened or sued shall inform the
other forthwith in reasonable detail and the matter shall be referred
to leading patent counsel (well versed in the laws of the country in
which such matter will be determined) for the purpose of obtaining his
advice on whether a defence or a threatened action will have a
reasonable chance of a successful outcome and whether there are any
circumstances making it imprudent to defend or commence proceedings.
(b) If the Licensee only shall decide that such action, claim or
proceedings shall be defended, the Licensee shall bear the whole costs
thereof including any damages and costs awarded against it in favour
of such third party, and shall from time to time if requested notify
the Licensor of the progress thereof. At the request of the Licensor,
the Licensee may permit the Licensor to intervene or otherwise appear
in or in connection with any such action, claim or proceedings
personally or through Counsel selected by the Licensor, at the sole
expense of the Licensor provided that nothing contained herein shall
preclude the Licensor from defending such action, claim or proceedings
where the Licensee declines to do so.
5.7 Notices
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Any notice or other communication required or permitted to be given
hereunder shall be in writing and shall be deemed to have been duly given
if delivered by hand against receipt of the addressee or his duly
authorised agent or if sent by prepaid registered post addressed to the
party to whom it is addressed at the address set out for such party herein
or if sent by telefax to the party to whom such notice is to be given (or
such other address or telefax number as he may from time to time designate
in writing to all other parties hereto in accordance with the provisions
hereof and any such notice shall be deemed to have been given if delivered
at the time of delivery and if sent by pre-paid registered post as
aforesaid twenty four hours after the same shall have been posted).
5.8 Variations
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No variation or amendment of this Agreement shall bind either party unless
made in writing and agreed to in writing by duly authorised officers of
both parties.
5.9 Unenforceable Provision
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If any provision of this Agreement is agreed by the parties to be illegal,
void or unenforceable under any law that is applicable hereto or if any
court of competent jurisdiction in a final decision so determines, this
Agreement shall continue in force
save that such provision shall be deemed to be excised herefrom with effect
from the date of such agreement or decision or such earlier date as the
parties may agree.
5.10 Waiver
------
A waiver by any party hereto of any breach by any party hereto of any of
the terms provisions or conditions of this Agreement or the acquiescence of
a party hereto in any act (whether of commission or omission) which but for
such acquiescence would be a breach as aforesaid shall not constitute a
general waiver of such term provision or condition or of any subsequent act
contrary thereto.
5.11 Governing Law
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This Agreement shall in all respects (including the formation thereof and
performance thereunder) be governed by and construed in accordance with and
governed by the laws of the Republic of Ireland and the parties hereto
submit to the jurisdiction of the Courts of the Republic of Ireland, in
addition to the courts of the United States.
FIRST SCHEDULE
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The Patents
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"An inter-computer communications apparatus"
S.A.I. Ireland Limited
Country Application No: Filing Date Remarks Ref
Ireland 94 09 31 29.11.94 Patent Granted 30339IE
(Patent No. 75.204)
Ireland S94 0930 29.11.94 Patent Granted 30339IES
Short Term (Patent No. S63,019)
United King 9424473.8 03.12.94 Patent Granted 30339GB
(Patent No. 2295699)
Belgium 09401187 30.12.94 Patent Granted 30339BES
(Patent No. 1007202A6)
SECOND SCHEDULE
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Existing Patent Licences Granted To Software Architects International Limited
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Patent Licence between SAI (Ireland) Limited and Software Architects
International Limited (operative date 29 November 1994)
Letter SAI (Ireland) Limited to Software Architects International Limited dated
28 November 1999 confirming extension of Patent Licence for 5 years.
THIRD SCHEDULE
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LICENSE FEE PAYMENTS
Date of Payment Amount of Payment
June 1, 2000 US$2,600,000
June 1, 2001 US$2,600,000
June 1, 2002 US$2,600,000
June 1, 2003 US$2,600,000
June 1, 2004 US$2,600,000
June 1, 2005 US$2,600,000
June 1, 2006 US$2,600,000
PRESENT when the common seal
of SAI (Ireland) Limited
was affixed hereto:-
By: /s/ ▇▇▇▇▇▇▇ ▇. ▇'▇▇▇▇▇▇▇
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Name and Title: ▇▇▇▇▇▇▇ ▇. ▇'▇▇▇▇▇▇▇, Director
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PRESENT when the common seal
of Clarus Corporation.
was affixed hereto:-
CLARUS CORPORATION
By: /s/ ▇▇▇▇ ▇. ▇▇▇▇▇
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▇▇▇▇ ▇. ▇▇▇▇▇, Chief Operating Officer/Chief
Financial Officer