EXHIBIT 10.47
[Translation]
PATENT AND TECHNOLOGY LICENSE AGREEMENT
This Patent and Technology License Agreement (the "Agreement") is made and
entered into as of August 5, 1999 (hereinafter "Effective Date") by and between
Hyundai Electronics Industries Co., Ltd., (hereinafter "HEI") and ChipPAC
Limited (hereinafter "ChipPAC") based upon mutual trust and good-faith. Each
party hereby grants to the other party a license with respect to the
intellectual property rights relating to manufacture and sale of contract
products (as defined herein) on the conditions set forth in this Agreement.
Article 1. DEFINITIONS
1.1 "Intellectual Property Rights" shall mean patents, utility, design and
computer program rights related to semiconductor assembly. HEI's Intellectual
Property Rights granted to ChipPAC are limited to the intellectual property
rights listed in Attachment A hereof and the applications for intellectual
property rights made during the period from the base date of the Attachment A
hereof to June 30, 1998 by the semiconductor business department.
1.2 "Third Party Agreement" shall mean patent license agreements that
either HEI or ChipPAC executed with third parties.
Article 2. GRANTS OF LICENSE
2.1 Subject to Article 4 and upon faithful fulfillment by ChipPAC of the
obligations to make the payments to HEI as set forth under Article 3 hereof, HEI
grants to ChipPAC a license to assemble semiconductor products on the terms and
conditions set forth in this Agreement, using the Intellectual Property Rights
of HEI. The license granted by this Agreement shall cover ChipPAC's license for
assembly activities only and shall not include the license for other areas of
semiconductor manufactured by third parties. ChipPAC's right to grant a
sublicense shall be limited only to companies which are subsidiaries of ChipPAC
as of the Effective Date.
2.2 In case HEI has the right to sublicense any third parties'
semiconductor assembly related patent rights to ChipPAC in accordance with Third
party Agreement executed by HEI, then HEI shall grant ChipPAC such sublicense in
accordance with the terms and conditions of the Third Party Agreement, unless
this sublicense will cause HEI to incur any additional costs.
2.3 ChipPAC grants to HEI a license to assemble semiconductor products on
the terms and conditions set forth in this Agreement using the Intellectual
Property Rights of ChipPAC and/or its subsidiaries. The license granted by this
Agreement shall cover HEI's license for semiconductor assembly activities only
and shall not include the license for other areas of semiconductor manufactured
by third parties.
2.4 In case ChipPAC has the right to sublicense HEI on any third parties'
semiconductor assembly related patent rights according to Third party Agreement
executed by ChipPAC, then ChipPAC shall grant HEI such sublicense in accordance
with the terms and conditions of the Third Party Agreement, unless this
sublicense will cause ChipPAC to incur any additional cost.
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Article 3. PAYMENTS
3.1 In consideration for the license granted by this Agreement, ChipPAC
shall pay HEI [redacted *] in accordance with the
following schedule:
3.1.1 Payment Schedule
3.1.1 [redacted *] on or before March 1, 2000.
3.1.2 [redacted *] on or before March 1, 2001.
3.1.3 [redacted *] on or before March 1, 2002.
3.1.4 [redacted *] on or before March 1, 2003.
3.1.2 Value added tax will be paid by ChipPAC as separately agreed upon by
both parties.
3.2 The payments by ChipPAC to HEI shall be made in Korean Won to the bank
account that HEI notifies ChipPAC in writing.
3.3 HEI will be responsible for residents tax and corporation income tax
for HEI's income from this Agreement which are imposed by Korean Government on
the payments set forth herein above. In case ChipPAC is required to withhold any
residents tax and corporation income tax, it will provide HEI with tax
certificates in an appropriate manner. ChipPAC shall be responsible for any
taxes imposed by the British Virgin Island government on such payments.
Article 4. TERMS, EXECUTION OF THE AGREEMENT AND TERMINATION
4.1 This Agreement shall be effective as of the Effective Date until
December 31, 2003, unless terminated earlier by Articles 4.2, 4.3 or 6.2 of this
Agreement. The term of this Agreement may be extended annually thereafter for
the period of one-year per each time upon a ChipPAC's prior written notice to
HEI. ChipPAC shall pay HEI a royalty of [redacted *] per annum in consideration
for the license to be provided during such extended period.
4.2 Except as otherwise provided within this Agreement, each party with a
material breach of this Agreement will have 30 days to cure its breach upon a
written notification from the other party. If the breach is not cured within
such period by the breaching party, the other party will have the right to
immediately terminate this Agreement by a written notification. In such case,
the license granted to the breaching party shall expire upon such termination
and the notifying party's license shall continue through the term of this
Agreement.
4.3 HEI will have the right to terminate this Agreement by a written
notification in case of one or more of the following.
4.3.1 The filing by ChipPAC of a petition in bankruptcy or insolvency.
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_____________
* Confidential treatment requested.
4.3.2 The appointment of a receiver for all or substantially all of
the properties of ChipPAC.
4.3.3 The institution of any proceedings for liquidation or winding up
of ChipPAC's business or for termination of its corporate charter.
Article 5. CONFIDENTIALITY
5.1 All the information that needs to be kept secret and is related to each
company's business activities such as information on technology, development,
manufacture, purchase, marketing, financial, human resources management, etc.,
that each party acquired from the other party by executing this Agreement and by
complying with this Agreement shall be kept secret during the terms of this
Agreement and for 5 years thereafter by each party's responsible management and
shall not be make known to third parties by each party without a prior written
consent of the other party.
Article 6. FORCE MAJEURE
6.1 In case of any failure to perform any obligations hereunder to the
extent such failure is caused by war, acts of public enemies, fires, floods,
governmental restrictions or actions, changes in the relevant laws and
regulations, or any other force majeure, defaulting party shall immediately
notify the other party thereof by written notification, and the notifying party
will have no obligation to the other party.
6.2 If the force majeure continues beyond 90 days, the Agreement may be
terminated by the non-defaulting party without any further obligations to the
other party by a written notification.
Article 7. WARRANTY AND INDEMNIFICATION
7.1 Each party shall not be responsible for the other party's infringement
of any third parties' rights by using the other party's Intellectual Property
Rights.
7.2 ChipPAC shall immediately notify HEI in writing in any event when
ChipPAC becomes aware of occurrence of any third party's infringement of HEI's
Intellectual Property Rights with as much details as possible. ChipPAC shall
cooperate with HEI so that HEI may take appropriate actions against such
infringement(s).
Article 8. MISCELLENOUS PROVISIONS
8.1 A Party which do not exercise its rights granted within this Agreement
shall not be considered as waiving its rights provided within this Agreement.
8.2 Should any clause, sentence, or paragraph of this Agreement be declared
to be invalid, unenforceable, or void, such decision shall not have the effect
of invalidating or voiding the remainder of this Agreement.
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8.3 HEI shall not be held liable to ChipPAC, even though any intellectual
property rights provided in Attachment A hereof are not patentable due to the
rejection by the authorities or such intellectual property rights are nullified
or reduced in their scope after the review by the authorities.
8.4 This Agreement or any rights and obligations set forth in this
Agreement shall not be assigned to or taken over by any third parties without a
prior consent of the other party.
8.5 Notification regarding this Agreement shall be made by a written
notification to the address below unless notified otherwise in advance.
8.5.1 For HEI:
8.5.1 For HEI: Hyundai Electronics Industries Co., Ltd.
Attention: Senior Manager, Patent
Department
Hyundai Jeon-ja Building
66 Jukseon-dong, Chongro-ku, Seoul
Tel: (▇▇▇) ▇▇▇-▇▇▇▇
Fax: (▇▇▇) ▇▇▇-▇▇▇▇
For ChipPAC: ChipPAC Limited
Craigmuir ▇▇▇▇▇▇▇▇
P.O. Box 71
road Town, Tortola
British Virgin Islands
Attention: Resident Director
Tel: (▇▇▇) ▇▇▇-▇▇▇▇
Fax: (▇▇▇) ▇▇▇-▇▇▇▇
with a copy to:
ChipPAC, Inc.
▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇.▇.▇.
Attention: President
8.6 Any disputes between the parties thereto shall be resolved amicably by
normal commercial practice. However, if there is no commercial practice, such
disputes shall be interpreted in accordance with Korean laws.
8.7 Any disputes in relation to this Agreement that have not been resolved
amicably shall be presented before Seoul District Court for trial.
8.8 This Agreement shall not be modified unless both parties agree in
writing.
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Each party will have one fully executed copy of this Agreement as proof and
existence of this Agreement.
HEI: /s/ CEO Young ▇▇▇▇ ▇▇▇
Hyundai Electronics Industries Co., Ltd.
San ▇▇▇-▇, ▇▇▇-▇▇, ▇▇▇▇▇-▇▇▇, ▇▇▇▇▇-▇▇,
Kyoungki-do
ChipPAC: /s/ Authorized Signatory
ChipPAC Limited
Craigmuir ▇▇▇▇▇▇▇▇
▇.▇. ▇▇▇ ▇▇
▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇
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