EXHIBIT C TO SEPARATION
AGREEMENT
INTELLECTUAL PROPERTY ASSIGNMENT
AGREEMENT
This Intellectual
Property Assignment Agreement (the “Agreement”
), entered into as of December 31, 2002 among ECI TELECOM LTD.
(“ECI TELECOM” ), ECI TELECOM NGTS LTD. (
“NGTS” ) and VERAZ NETWORKS, LTD. (formerly
Chorale Networks Ltd.) ( “Veraz” ). ECI TELECOM
and NGTS are referred to collectively as “ ECI
.” Veraz and ECI are referred to collectively as the
“Parties.”
WHEREAS,
ECI and Veraz have entered into a Separation and Asset Purchase
Agreement dated as of even date herewith (the “ APA
”); and
WHEREAS,
it is a condition to closing of the APA that this Agreement be
entered into between the Parties to effect the assignment of the
intellectual property rights related to the VoIP Business to Veraz,
as set forth herein.
NOW,
THEREFORE, it is hereby agreed by and between the Parties as
follows:
As used herein,
the following terms have the following meanings:
|
1.1
|
|
“Businesses”
shall have the meaning
ascribed to it in the APA.
|
|
|
|
|
|
1.2
|
|
“Closing
Date” and “Closing”
shall have the respective meanings assigned to them in the
APA.
|
|
|
|
|
|
1.3
|
|
“Veraz
Know-How” shall mean all Know-How relating to
the VoIP Business, including without limitation the Know-How
incorporated into or used solely in the development, manufacturing,
marketing, sale, distribution, service and support of the products
and services listed in Appendix 1.3 attached
hereto.
|
|
|
|
|
|
1.4
|
|
“Veraz
Patents” shall mean the Patents listed in
Appendix 1.4 attached hereto.
|
|
|
|
|
|
1.5
|
|
“Veraz
Trademarks” shall mean the Trademarks listed in
Appendix 1.5 attached hereto.
|
|
|
|
|
|
1.6
|
|
“Veraz IP”
shall mean Veraz
Know-How, Veraz Patents and Veraz Trademarks.
|
|
|
|
|
|
1.7
|
|
“Intellectual Property
Rights” shall mean all past, present, and
future rights which may exist or be created under the laws of any
jurisdiction in the world with respect to all: (i) rights
associated with works of authorship, including exclusive
exploitation rights, copyrights, moral rights, and mask works;
(ii) trademark and trade name rights and similar rights;
(iii) trade secret rights; (iv) patents, patent
applications, and industrial
|
1.
|
|
|
property rights; (v) other
proprietary rights in intellectual property of every kind and
nature; and (vi) rights in or relating to registrations,
renewals, extensions, combinations, divisions, and reissues of, and
applications for, any of the rights referred to in subclauses
(i) through (v) above.
|
|
|
|
|
|
1.8
|
|
“Know-How”
shall mean technology,
software (whether in source code or in executable code form),
ideas, concepts, know-how, techniques, technical and commercial
information, data and documents of whatever kind, including
drawings, specifications, photographs, samples, models, processes,
procedures, reports and correspondence, including works of
authorship embodying the foregoing, as well as information
incorporated in formal or informal databases, correspondence,
email, proprietary methods and processes of conducting business as
well as know-how and show-how, customer lists, marketing plans,
business plans, strategies, workflows and other information of
value maintained in secrecy, in existence as of the Closing
Date.
|
|
|
|
|
|
1.9
|
|
“License
Agreement” shall mean that certain Intellectual
Property License Agreement by and between the Parties as of even
date herewith, which, among other things, grants ECI a license to
use the Veraz IP as set forth in the License Agreement.
|
|
|
|
|
|
1.10
|
|
“Patents”
shall mean patents and
patent applications (including utility model applications),
including any and all divisionals, continuations, re-examinations,
renewals, provisionals, continuations-in-part, re-issues, and
foreign equivalents thereof.
|
|
|
|
|
|
1.11
|
|
“Trademarks”
shall mean registered
trademarks and pending trademark applications in existence as of
the Closing Date, including any and all renewals and foreign
equivalents thereof.
|
|
|
|
|
|
1.12
|
|
“VoIP
Business” shall have the meaning ascribed to
it in the APA.
|
ASSIGNMENT OF VERAZ IP TO
VERAZ
2.1 Effective
as of the Closing, ECI hereby irrevocably and unconditionally
assigns, contributes, transfers, conveys and delivers to Veraz and
its successors and assigns, all of its rights, title and interests
in and to the Veraz IP and all Intellectual Property Rights
therein, and the right to recover and take all proceedings as may
be necessary for the recovery of damages or otherwise in respect of
past, present and future infringement or misappropriation of the
Veraz IP. At Closing ECI shall deliver or cause to be delivered to
Veraz the following; (i) possession of any tangible
embodiments of the Veraz IP; and (ii) duly signed deeds of
assignments for all Veraz IP effecting the assignment described in
the immediately preceding sentence and (iii) any duly signed
consents to the assignments thereof that have been obtained. ECI
hereby acknowledges and agrees that it retains no right to use the
Veraz IP, except as provided in Sections 2.5(a) and
(b) of the License Agreement, and agrees not to challenge the
validity of Veraz’s ownership of the Veraz IP.
2.2 In the
event that any assignment under Section 2.1 above may
be ineffective or incomplete as a result of any moral rights,
artists’ rights, or any other similar rights worldwide
(“Moral Rights”), ECI hereby irrevocably and
unconditionally transfers and assigns to Veraz any
2
and all Moral
Rights that ECI may have in or with respect to the Veraz IP. To the
extent that ECI cannot transfer and assign such Moral Rights to
Veraz, ECI hereby waives and agrees never to assert such Moral
Rights against Veraz or any of Veraz’s licensees. If ECI has
any rights to the Veraz IP that cannot be assigned to Veraz or
waived by ECI, then ECI unconditionally and irrevocably grants to
Veraz, during the term of such rights, an exclusive (including with
respect to ECI, except as provided in Sections 2.5(a) and
(b) of the License Agreement), irrevocable, perpetual,
worldwide, fully-paid and royalty-free license, with rights to
sublicense throughout multiple tiers of sublicensees, to use,
reproduce, modify, create derivative works of, distribute, perform,
display, distribute directly and indirectly, and otherwise exploit
the Veraz IP by all means now known or later developed, and to
make, have made, sell, offer to sell, lease, offer to lease and
imp
|
