INTELLECTUAL PROPERTY AGREEMENTIP Intellectual Property License Assignment Agreement |
|
|
|
You are currently viewing: This IP Intellectual Property License Assignment Agreement involves
HARRIS STRATEX NETWORKS, INC.. RealDealDocs™ contains millions of easily searchable legal documents and clauses from top law firms. Search for free - click here. |
|
|
|
Search IP Intellectual Property License Assignment Agreement by:
EXHIBIT 10.4
INTELLECTUAL PROPERTY AGREEMENT
Between
HARRIS CORPORATION
and
HARRIS STRATEX NETWORKS, INC.
Dated: January 26, 2007
INTELLECTUAL PROPERTY AGREEMENT
TABLE OF CONTENTS
|
|
|
|
|
|
|
|
|
ARTICLE 1 |
|
DEFINITIONS |
|
|
1 |
|
|
|
|
|
|
|
|
|
|
ARTICLE 2 |
|
ASSIGNMENT
AND LICENSE BACK OF TRADE SECRETS |
|
|
1 |
|
|
|
|
|
|
|
|
|
|
ARTICLE 3 |
|
LICENSES
TO TRADE SECRETS |
|
|
2 |
|
|
|
|
|
|
|
|
|
|
ARTICLE 4 |
|
PATENT
ASSIGNMENT AND LICENSES |
|
|
3 |
|
|
|
|
|
|
|
|
|
|
ARTICLE 5 |
|
EXPORT
CONTROL |
|
|
4 |
|
|
|
|
|
|
|
|
|
|
ARTICLE 6 |
|
TERM
AND TERMINATION |
|
|
5 |
|
|
|
|
|
|
|
|
|
|
ARTICLE 7 |
|
ASSIGNABILITY |
|
|
6 |
|
|
|
|
|
|
|
|
|
|
ARTICLE 8 |
|
LICENSES
TO SUBSIDIARIES AND IMPROVEMENTS |
|
|
6 |
|
|
|
|
|
|
|
|
|
|
ARTICLE 9 |
|
DISCLAIMER
AND COVENANTS |
|
|
6 |
|
|
|
|
|
|
|
|
|
|
ARTICLE 10 |
|
GENERAL
PROVISIONS |
|
|
9 |
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
SCHEDULE A |
|
CONTRIBUTED
PATENTS |
|
|
|
|
-i-
INTELLECTUAL PROPERTY AGREEMENT
This
INTELLECTUAL PROPERTY AGREEMENT (this “Agreement”),
dated as of January 26, 2007, is made by and between HARRIS CORPORATION, a
Delaware corporation (“Harris”), and HARRIS STRATEX
NETWORKS, INC., a Delaware corporation (the “Company”).
RECITALS
WHEREAS,
in connection with the combination of Harris’ Microwave Communications
Division with Stratex Networks, Inc., a Delaware corporation (“Stratex”),
Harris, the Company, Stratex, and Stratex Merger Corp., a Delaware corporation
and wholly owned subsidiary of the Company, have entered into an Amended and
Restated Formation, Contribution and Merger Agreement, dated as of
December 18, 2006, as amended by that certain letter agreement, dated
January 26, 2007 (the “Formation Agreement”),
among the parties thereto, pursuant to which the Company was formed to acquire
Stratex pursuant to the Merger (as defined in the Formation Agreement) and to
receive the Contributed Assets (as defined in the Formation Agreement) from
Harris in the Contribution Transaction (as defined in the Formation Agreement),
in each case on the terms and subject to the conditions set forth in the
Formation Agreement; and
WHEREAS,
Harris and Stratex would not have entered into the Formation Agreement without
the undertakings contained in this Agreement and the execution and delivery of
this Agreement is a condition to closing under the Formation Agreement.
NOW,
THEREFORE, in consideration of the foregoing and the mutual covenants in the
Agreement the parties agree as follows:
ARTICLE 1
DEFINITIONS
1.01
Definitions. Unless otherwise defined in this Agreement, any term
used but not expressly defined in this Agreement shall have the meaning
ascribed to such term in the Formation Agreement. “Affiliate”
shall have the meaning assigned to such term by Rule 405 under the
Securities Act; provided, however, that neither the Company nor any of
its Subsidiaries shall be deemed to be an Affiliate of Harris or any of its
other Subsidiaries.
ARTICLE 2
ASSIGNMENT AND LICENSE BACK OF TRADE SECRETS
2.01
Assignment of Contributed Trade Secrets. Subject to the licenses
granted back to Harris and its Subsidiaries pursuant to Section 2.02
and to any and all pre-existing licenses granted by Harris or its Subsidiaries,
Harris and its Subsidiaries hereby irrevocably transfer and assign to the
Company, all of their present worldwide right, title and interest in and to the
Trade Secrets included in the Contributed Intellectual Property together with
all Copyrights that are also Contributed Intellectual Property, along with all
rights to sue and recover for any past infringements thereof (collectively,
(“Contributed Trade Secrets”).
2.02
License Back to Harris and its Subsidiaries. In consideration for
the transfer and assignment of the Contributed Trade Secrets by Harris and its
Subsidiaries to the Company pursuant to Section 2.01, the Company
grants to Harris and its Subsidiaries a personal, nonexclusive,
non-transferable (except as provided in Article 7), irrevocable
(subject to Article 6), worldwide, fully paid-up license to use, copy,
execute and perform, and to display and distribute (subject to confidentiality
provisions at least as restrictive as those contained in Section 9.02(c)
and Section 9.02(d)), the Contributed Trade Secrets, and to create,
use, copy, execute and perform, and to display and distribute (subject to
confidentiality provisions at least as restrictive as those contained in Section 9.02(c)
and Section 9.02(d)), derivative works from the Contributed Trade
Secrets.
2.03
Sublicenses of Contributed Trade Secrets. The grant to Harris and
its Subsidiaries from the Company in Section 2.02 shall include a
personal, non-transferable (except as provided in Article 7) and
nonexclusive right to communicate portions of and grant nonexclusive
sublicenses (subject to confidentiality provisions at least as restrictive as
those contained in Section 9.02(c) and Section 9.02(d))
to such Contributed Trade Secrets to customers, suppliers, sublicensees or
other third parties as necessary with respect to any products or services sold
by Harris or its Subsidiaries now or in the future.
2.04
Delivery of Contributed Trade Secrets. In the event that any
Contributed Trade Secret is not already in the possession of the MCD Business
or MCD Employees transferred to the Company, Harris agrees to deliver to the
Company, within a commercially reasonable amount of time, any missing parts of
the Contributed Trade Secrets, to the extent such Contributed Trade Secrets are
available and can be so transferred.
2.05
Retained Copies of Contributed Trade Secrets. To the knowledge of
Harris, Harris has attempted to retain adequate copies of the Contributed Trade
Secrets. However, the parties hereto recognize that the best or only available
copy of certain Contributed Trade Secrets may reside, prior to or after the
Closing Date, within the MCD Business, and that Harris may require certain
access to or copies of the Contributed Trade Secrets.Accordingly, the Company
agrees, upon receiving a reasonable written request from Harris, to make a good
faith effort to locate and provide, to the extent such Contributed Trade Secret
is available, within a commercially reasonable amount of time after receipt of
Harris’ or its Subsidiary’s written request, copies of all or any
portion of the Contributed Trade Secrets.
ARTICLE 3
LICENSES TO TRADE SECRETS
3.01
Trade Secrets Licensed to the Company. Harris and its Subsidiaries
grant to the Company a fully paid-up, worldwide, irrevocable (subject to Article 6),
non-transferable (except as provided in Article 7) and nonexclusive
(subject to Section 3.02) license, subject to any and all
pre-existing licenses granted by Harris, to use any Trade Secrets owned by
Harris that are not Contributed Trade Secrets, but are otherwise used in
connection with the design, development, repair, manufacture, use, sale, offer
for sale, lease, importation or other distribution of products or services of
the MCD Business immediately prior to the Closing together with all Copyrights
(collectively, the “Licensed Trade Secrets”).
-2-
3.02 Right to Sublicense Licensed Trade Secrets. Subject to any and all pre-existing licenses granted by Harris or its Subsidiaries, Harris and its Subsidiaries grant to the Company a personal, non-transferable (except as provided in Article 7) and nonexclusive right to communicate portions of and grant nonexclusive sublicenses (subject to confidentiality provisions at least as restrictive as those in Section 9) to the Licensed Trade Secrets in connection with the operation of the MCD Business or any products or services sold by the Company now or in the future to suppliers to the extent necessary to produce products or components for such products for the Company and to customers to the extent necessary to permit such customers to use any product or service produced or provided by the Company for its






