INTELLECTUAL PROPERTY LICENSE AGREEMENTIP Intellectual Property License Assignment Agreement |
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VERAZ NETWORKS, INC. | ECI TELECOM LTD | Chorale Networks Ltd. RealDealDocs™ contains millions of easily searchable legal documents and clauses from top law firms. Search for free - click here. |
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Search IP Intellectual Property License Assignment Agreement by:
Exhibit 10.8
Appendix 2.4(a) to Intellectual Property License
Agreement
LICENSE AGREEMENT
THIS LICENSE AGREEMENT (this “License Agreement”) is
entered as of October ___, 2002, by and between ECI TELECOM LTD. (“ECI”
or “Licensee”) and VERAZ NETWORKS LTD. [formerly
Chorale Networks Ltd.](“Veraz” or “Licensor”);
ECI or Licensee, on the one hand, and Veraz or Licensor, on the other, may each
individually be referred to in this License Agreement as a “Party”,
and collectively referred to in this License Agreement as the “Parties”.
WITNESSETH: THAT
WHEREAS, Licensee and Licensor are parties to that certain
Separation and Asset Purchase Agreement dated as of October ___, 2002 (the “APA”);
and
WHEREAS, Licensee and Licensor are parties to that certain
Intellectual Property License Agreement dated as of October ___, 2002 (the “Intellectual
Property License Agreement”); and
WHEREAS, as part of the Intellectual Property License
Agreement, Licensor and Licensee have agreed to enter into this License
Agreement; and
WHEREAS; Licensee is desirous of obtaining from Licensor, and
Licensor is willing to grant to Licensee, subject to the terms and conditions
set forth herein, a license to use Licensor IPR (as defined below) for certain
prescribed purposes; and
NOW, THEREFORE, in consideration of the mutual covenants and
provisions herein contained, it is hereby agreed by and between the Parties as
follows:
ARTICLE 1
DEFINITIONS
As used herein, the following
terms have the following meanings unless otherwise defined herein.
Additionally, all capitalized terms used herein shall have the meanings as set
forth in the Intellectual Property License Agreement:
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1.1 |
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“Assignment
Agreement” shall
mean that certain Intellectual Property Assignment Agreement of even date
herewith for which the Parties have entered into. |
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1.2 |
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“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.
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1.3 |
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“Licensor
Know-How” shall
mean the Know-How of Licensor listed on Appendix 1.3 attached
hereto that has been assigned to Licensor under the Assignment Agreement,
which is the Know-How licensed to Licensee hereunder. |
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1.4 |
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“Licensor
Patents” shall
mean the Patents of Licensor listed on Appendix 1.4 attached
hereto that have been assigned to Licensor under the Assignment Agreement,
which are those Patents that are licensed to Licensee hereunder. |
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1.5 |
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“Licensor
IPR” shall mean
the Licensor Know-How and Licensor Patents. |
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1.6 |
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“Licensee
Business” shall
mean the development, manufacturing, distribution, sale, service and support
solely of Licensee Products. |
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1.7 |
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“Licensee
Products” shall
mean those products of Licensee listed on Appendix 1.7 attached
hereto that contain and are used substantially to perform bandwidth
optimization functions and features for mobile radio cellular networks only. |
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1.8 |
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“Term”
shall have the meaning
set forth in Article 9 hereof. |
ARTICLE 2
LICENSE TO ECI
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2.1 |
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Grant of
License. Effective as
of Closing and subject to the terms and conditions of this License Agreement,
including the license restrictions set forth in Section 2.2 below,
Licensor grants to Licensee an irrevocable, perpetual, nonexclusive,
worldwide, fully paid, royalty-free, non-transferable (except as provided in Section 8.2)
license: |
(a)
under the Licensor Patents to use, develop, design, integrate, make, have made,
market, sell, offer to sell, lease, offer to lease, import and otherwise
transfer any products and services with respect to activities conducted within
the Licensee Business, and to use any apparatus and practice any method in the
manufacture or use thereof; and
(b)
under the Licensor’s Intellectual Property Rights, to use, develop,
market, sell, offer to sell, lease, offer to lease, import, service, reproduce,
display, perform, design, integrate, import, modify, create derivative works
of, adapt, further develop, distribute directly or indirectly, and otherwise
exploit the Licensor Know-How with respect to activities conducted within the
Licensee Business.
Licensee may, at its
discretion, sublicense the foregoing rights solely to the extent necessary for
Licensee to develop, market, sell, offer to sell, lease, offer to lease,
import, distribute, service and support the Licensee Products with respect to
activities conducted by Licensee within the Licensee Business.
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2.2 |
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Limitations
on Use. Licensee shall
not under any circumstances use, or encourage any third party to use, any of
the Licensor IPR to perform any activities within the Veraz Business (as that
term is defined in the Intellectual Property License Agreement).
Notwithstanding the above, Licensee shall not be restricted in any way from
pursuing any joint venture that involves independent development or making
any financial investment in any company whatsoever provided, however, that
Licensee does not breach or |
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otherwise
violate any license grant, license restriction or other obligation in this
License Agreement. |
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2.3 |
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Grant Back
Right. Licensor and ECI
hereby acknowledge that Licensor has agreed to grant certain limited licenses
under the specified Licensor Patents listed in Appendix 2.3
attached hereto to the respective parties set forth therein, upon their
written request to Licensor, to permit them to use, develop, design,
integrate, make, have made, market, sell, offer to sell, lease, offer to
lease, import and otherwise transfer certain products that are not
competitive to Veraz’s products, with respect to activities conducted
within the fields of use identified in Appendix 2.3 for such
products, and to use any apparatus and practice any method in the manufacture
or use thereof. Should any of the respective parties set forth in Appendix 2.3
request in writing for Licensor to grant such license thereto to them,
Licensor shall grant a license under the ownership rights that Licensor has
in such applicable specified Licensor Patents at such time to such respective
party of the same scope and duration and with appropriate field of use,
product line and other similar restrictions as those provided in this License
Agreement with regard to such specified Licensor Patents. |
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2.4 |
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Technical
Support. For a period
of two (2) years after the date of execution of this License Agreement
by the Parties, at Licensee’s written request and subject to the
availability and agreement by the Parties upon the amounts, including the
rates for support, to be paid by Licensee for technical support to be
provided by Licensor, Licensor will provide at mutually agreed dates and
times technical support to the extent required for Licensee to resolve
technical problems encountered with the Licensee’s use of the Licensor
Know-How in connection with the Licensee Business. Any amount that is agreed
upon between the Parties to be paid by Licensee for technical support to be
provided hereunder shall be paid within ten (10) days after services are
performed by Licensor. Licensor will invoice Licensee for technical support
services on at least a monthly basis after services are rendered. Any
technical support that will be provided to Licensee by Licensor hereunder, at
Licensee’s written request, will be further limited solely to the
permitted use by Licensee of the Licensor Know-How that is existing as of
Closing and generally available at the time of Licensee’s written
request in accordance with the license rights granted in Section 2.1. |
ARTICLE 3
INTELLECTUAL PROPERTY MATTERS
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3.1 |
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Intellectual
Property Protection.
Licensee shall promptly notify Licensor of any and all infringements,
imitations, simulations or other illegal use or misuse of the licensed
Licensor IPR which come to its attention. Licensor shall determine whether to
take any action to prevent the infringement, imitation, simulation or other
illegal use or misuse of the IPR. If it elects not to take such action,
Licensee may take such action if it has received Licensor’s prior
written approval to take such action. In this event, Licensor shall, at
Licensee’s expense, cooperate in such action with Licensee including,
without limitation, joining as a party. Any money recovered by way of damages
or otherwise with respect to such action shall be kept by the Party which
bore the costs of such action; or, in any case where the Parties have shared
the costs, such money shall be shared in proportion to the costs borne by
each Party. Licensee shall render Licensor all reasonable |
