EXHIBIT D TO SEPARATION
AGREEMENT
INTELLECTUAL PROPERTY LICENSE
AGREEMENT
This Intellectual
Property License Agreement (this “Agreement" ), is
entered into as of October ___, 2002 (the “Effective
Date" ) by and 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 collectively referred to in this Agreement as
“ECI.” ECI, on the one hand, and Veraz, on the
other, may each individually be referred to in this Agreement as a
“Party”, and collectively referred to in this Agreement
as the “Parties”.
WHEREAS, ECI and
Veraz have entered into a Separation and Asset Purchase Agreement
dated as of
___, 2002 (the “APA” ); and
WHEREAS, it is a
condition to closing of the APA that this Agreement be entered into
between the Parties;
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
“Assignment Agreement” shall mean the
Intellectual Property Assignment Agreement by and between the
Parties of even date herewith.
1.2
“Veraz Know-How” shall have the meaning ascribed
to it in the Assignment Agreement.
1.3
“Veraz Patents” shall have the meaning ascribed
to it in the Assignment Agreement.
1.4
“Closing Date” and “Closing”
shall have the respective meanings ascribed to them in the
APA.
1.5 “DCME
Distribution Business” shall have the meaning ascribed to
it in the APA.
1.6 “DCME
Know-How” shall mean all Know-How that pertains to DCME
products and services or is required for the conduct of the DCME
Distribution Business that exists on the Closing Date as listed in
Appendix 1.6 attached hereto.
1.
1.7 “DCME
Patents” shall mean the Patents listed in
Appendix 1.7 attached hereto.
1.8 “DCME
Trademarks” shall mean the trademarks, service marks,
trade names and service marks listed in Appendix 1.8
attached hereto.
1.9 “DCME
Manufacturing and Distribution Agreement” shall mean the
DCME Manufacturing and Distribution agreement signed between the
Parties as of the date hereof.
1.10 “ECI
IP” shall mean all ECI Know-How and ECI
Patents.
1.11 “ECI
Know-How” shall mean the Know-How owned, licensed, or
used by ECI listed in Appendix 1.11 attached
hereto.
1.12 “ECI
Patents” shall mean the Patents owned or sublicenseable
by ECI, excluding all Veraz Patents and DCME Patents, and listed in
Appendix 1.12 attached hereto.
1.13
“Intellectual Property Rights” shall mean all
rights under the laws of any jurisdiction in the world with respect
to: (i) rights associated with works of authorship, including
exclusive exploitation rights, copyrights, moral rights, and mask
works; (ii) trade secret rights; (iii) contract rights in
intellectual property of every kind and nature; and
(iv) 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 (iii) above; but excluding all Patents,
trademarks, service marks, trade names, and service
names.
1.14
“Know-How” shall mean all technology, software
(whether in source code or in executable code), 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, and maintained in
secrecy.
1.15
“Patents” shall mean all patents, utility model
applications, pending patent applications and industrial property
rights, including any and all divisionals, continuations,
reexaminations, renewals, provisionals, continuations-in-part,
re-issues, and foreign equivalents thereof.
1.16
“VoIP” shall mean Voice over Internet
Protocol.
1.17
“Veraz Business” shall mean the development
manufacturing, marketing sale distribution and service of products
and solutions for gateways and/or soft-switches for point-to-point,
point to multipoint and/or switching and non-switching applications
for connecting end to end telephony or telephony over packet
networks. Said gateways include classification and/or compression
of telephony signals such as voice, modem, fax and/or other signals
such as video conference, and conversion of the classified and/or
compressed signals into packets in format suitable for media such
as Ethernet, IP ATM or MPLS.
2.
2.1 Exclusive
License for DCME Patents and DCME Know-How for Veraz Business .
ECI hereby grants to Veraz an exclusive (with respect to both ECI
and all other parties with respect to activities conducted within
the Veraz Business), worldwide, irrevocable, perpetual, fully paid,
royalty-free, transferable in accordance with
Section 6.2 , sublicensable license:
(a) under
the DCME Patents to use, develop, design, integrate, make, have
made, market, sell, offer to sell, lease, offer to lease, import
and transfer products and services with respect to activities
conducted within the Veraz Business, and to use any apparatus and
practice any method in the manufacture or use thereof;
and
(b) under
ECI’s Intellectual Property Rights to use, develop, design,
integrate, reproduce, display, perform, import, modify, create
derivative works of, adapt, further develop, distribute directly or
indirectly, and otherwise exploit the DCME Know-How with respect to
any activities conducted within the Veraz Business.
2.2
Nonexclusive License for ECI Patents and ECI Know-How for Veraz
Business . ECI hereby grants to Veraz a nonexclusive,
worldwide, irrevocable, perpetual, fully paid, royalty-free,
transferable in accordance with Section 6.2 ,
sublicensable license:
(a) under
the ECI Patents to use, develop, design, integrate, market, sell,
offer to sell, lease, offer to lease, import and transfer products
and services with respect to activities conducted within the Veraz
Business, and to use any apparatus and practice any method in the
manufacturer or use thereof; and
(b) under
ECI’s Intellectual Property Rights to use, develop, design,
integrate, reproduce, display, perform, import, modify, create
derivative works of, adapt, further develop, distribute directly or
indirectly, and otherwise exploit the ECI Know-How with respect to
activities conducted within the Veraz Business.
2.3
Nonexclusive License for the DCME Distribution Business .
ECI hereby grants to Veraz a nonexclusive, worldwide, perpetual and
revocable in accordance with the termination rights set forth in
the immediately following sentence, fully paid, royalty-free,
transferable in accordance with Section 6.2 ,
license:
(a) under
the DCME Patents and ECI Patents to use, develop, design,
integrate, market, sell, offer to sell, lease, offer to lease,
import and otherwise transfer any products and services with
respect to activities conducted within the DCME Distribution
Business; and
(b) under
ECI’s Intellectual Property Rights to use, develop, design,
integrate, reproduce, display, perform, import, modify, create
derivative works of, adapt, further develop, distribute directly or
indirectly, and otherwise exploit the ECI Know-How and DCME
Know-How with respect to activities conducted within the DCME
Distribution Business; and
3.
(c) to
have applied the DCME Trademarks on DCME products obtained from
ECI, and use the DCME Trademarks in connection with marketing,
sales, distribution, service and support activities, anywhere in
the world, for DCME products obtained from ECI; subject to the
guidelines and restrictions set forth in
Appendix 2.3(c) hereto.
Veraz may
sublicense the rights granted in this Section 2.3 to
the extent necessary to develop, market, sell, offer to sell,
lease, offer to lease, import, distribute, service and support
products or services with respect to activities conducted in
connection with the DCME Distribution Business. Additionally, ECI
may, at its discretion, terminate prospectively the license rights
granted in this Section 2.3 with respect to
Veraz’s ability to perform licensed activities hereunder if
Veraz no longer provides service and support for the DCME products
or services made available to Veraz under the DCME Manufacturing
and Distribution Agreement.
2.4 Additional
Obligations of ECI .
(a) ECI
hereby agrees not to license, use or otherwise exploit in any
manner the DCME Patents, DCME Know-How, or ECI IP in connection
with any activities contained within the Veraz Business,
except:
(i) to
manufacture and supply exclusively to Veraz VoIP products and
services under the VoIP Manufacturing and Distribution Agreement;
or
(ii) as
permitted in accordance with the terms and conditions of the
License Agreement referred to in Section 2.5(a) below
and attached hereto as Appendix 2.4(a) and as shall be
permitted under the licenses which may be granted pursuant to
Section 2.5(b) , if any.
(b) In
the event that ECI shall desire to assign or otherwise transfer, to
any third party, all or part of ECI’s interest in
(i) the DCME Know-How, (ii) the DCME Patents, or
(iii) any ECI IP, ECI shall, subject to ECI’s compliance
with confidentiality obligations (if any and only to the extent
thereunder) made to the proposed assignee and applicable securities
laws, inform Veraz in writing within a reasonable period of time
prior to entering into an agreement for any planned assignment. The
notice shall include the general terms of the proposed assignment
or transfer. In the event any assignment or transfer is made by ECI
of any of the DCME Know-How, DCME Patents or ECI IP such assignment
or transfer shall be made subject to the license grants, covenants
and license restrictions granted or undertaken by ECI in and to any
such DCME Know-How, DCME Patents or ECI IP under this
Agreement.
(c) Should
ECI decide to abandon the prosecution or maintenance of any DCME
Patents or ECI Patents, ECI shall provide promptly to Veraz written
notice of any such planned abandonment and, upon Veraz’s
written request and at Veraz’s expense, and provided that
Veraz has requested in writing for ECI to assign and transfer
ECI’s ownership rights in and to any such DCME Patents or ECI
Patents within thirty (30) days of such notice, ECI shall
unconditionally and irrevocably assign and transfer complete and
exclusive ownership in and to any such DCME Patents or ECI Patents
to Veraz upon reasonable terms that are to be agreed upon by the
Parties. Upon the making of any such assignment or transfer to
Veraz, Veraz
4.
covenants to
grant to ECI a royalty-free and fully paid
|
