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Alien Technology / Tower Semiconductor - IC Technology Development Agreement
Exhibit 10.31
CONFIDENTIAL TREATMENT REQUESTED BY ALIEN TECHNOLOGY CORP.
IC TECHNOLOGY DEVELOPMENT AGREEMENT
This IC TECHNOLOGY DEVELOPMENT AGREEMENT (the " Agreement" ) is entered into effective as of 27 of May 2005 (the " Effective Date" ), by and between Tower Semiconductor Ltd., an Israeli company with principal offices located at Ramat Gavriel Industry Zone, Migdal Haemek, 23105 Israel, (" Tower" ) and Alien Technology Corporation, a Delaware corporation with principal offices located at 18220 Butterfield Blvd, Morgan Hill, California 95037, USA (" Alien" ).
RECITALS
WHEREAS, Alien is designing and selling RFID tags that include integrated circuits and wishes to engage Tower to provide services relating to the design of certain integrated circuits and the development of associated process technology; and
WHEREAS, Tower is willing to provide, on the terms and conditions set forth in this Agreement, the design and process development services for integrated circuits, as described in the applicable Statement of Work and any exhibits attached thereto. WHEREAS, Alien and Tower signed on September 3, 2004 a letter agreement titled " Memorandum of Understanding/Preliminary Agreement" (the " MOU" ) with respect to the design and process development of an IC and have commenced work under the MOU.
WHEREAS, Alien and Virage Logic have an agreement dated September 24, 2004 for the development of embedded module of electrically programmable non volatile memory optimized for RFID IC application to be manufactured using Tower' s manufacturing process (" Base RFID NOVeA" ) to be embedded in Alien' s RFID IC to be manufactured at Tower.
AGREEMENT NOW, THEREFORE, for good and valuable consideration, the parties hereto agree as follows: 1. DEFINITIONS . Unless this Agreement expressly provides otherwise, the following terms shall have the meanings set forth below: 1.1 Technology means inventions, trade secrets, know-how, designs, information, data, processes, methods, techniques, drawings, component board models, layouts, schematics, diagrams, functional blocks, Circuits, Devices, cells, design tools, software, design rules, simulation models, net lists, software, test protocols, test structures, characterization and test results, methods and patterns, specifications and other technical information, whether or not patentable or otherwise protectable.
1.2 Process means, with respect to the Technology, recipes, modules and other items of semiconductor manufacturing process Technology used to fabricate integrated circuits and other semiconductor devices and products, including variants of such Technology and any improvements, updates or revisions thereto. The Tower Process Technology in use for any given Statement of Work will be described in such Statement of Work. *** Confidential treatment requested pursuant to a request for confidential treatment filed with the Securities and Exchange Commission. Omitted portions have been filed separately with the Commission.
CONFIDENTIAL TREATMENT REQUESTED BY ALIEN TECHNOLOGY CORP.
1.3 Assembly means, with respect to a Technology, the manufacturing steps used to integrate discrete integrated circuits into a stand-alone electronic system.
1.4 Circuit means a unit, comprised of two or more active and/or passive Devices interconnected with each other and imprinted or associated on one or no re silicon substrates that is forming or performing a defined electrical function. 1.5 Device means an element (such as a transistor, diode, resistor, capacitor or inductor) that performs a specific electrical function, excluding Circuit.
1.6 Existing means, with respect to a Technology or Intellectual Property Rights, the Technology or Intellectual Property Rights owned or used, initially as of the Effective Date and thereafter as at the effective date of each SOW, by a party and which such party may use or provide to the other party in the performance of work under this Agreement.
1.7 Developed means, with respect to a Technology or Intellectual Property Rights, all inventions, discoveries, improvements and modifications to a Technology or Intellectual Property Rights developed during the course of work under a SOW.
1.8 Jointly Owned Developed Technology (JODT) means any Developed Technology that is jointly owned by the parties pursuant to Sections 6.4(b) and 6.4(e) of this Agreement. JODT shall expressly exclude any underlying Existing Technology and Existing Intellectual Property Rights.
1.9 IC means an integrated circuit.
1.10 RFID IC means integrated circuits that are incorporated into Radio Frequency Identification (" RFID" ) tags.
1.11 Intellectual Property Rights (IPR) means any and all copyrights, trade secret rights, inventions, patent rights, design rights, database rights, mask works, topography rights and know-how, whether registered or unregistered, and including any application for registration for any of the foregoing, and any rights of similar nature or effect existing anywhere in the world.
1.12 Statement of Work (SOW) means each separate statements of work to be mutually agreed upon by Alien and Tower from time to time describing specific development projects to be conducted under this Agreement, and the parties respective responsibilities therein, as such projects are agreed by the parties to be undertaken. 1.13 Services mean the projects, tasks, services, and other work as described in and carried out by Tower under this Agreement or a SOW.
1.14 Confidential Information means any information disclosed by one party to the other in connection with the performance of this Agreement, including Technology and other information that relates to the disclosing party' s products, designs, business plans, business
*** Confidential treatment requested pursuant to a request for confidential treatment filed with the Securities and Exchange Commission. Omitted portions have been filed separately with the Commission.
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opportunities, finances, research, development, know-how, personnel, or third-party confidential information disclosed to the receiving party by the disclosing party in any form whatsoever (including, but limited to, disclosure made in writing, orally or in the form of samples, models, computer programs or otherwise), and the terms and conditions of this Agreement, provided that such information is at the time of disclosure designated as " confidential" or the nature of the information makes it obvious that it is confidential. Confidential Information does and will not include material that: (a) is now or subsequently becomes generally available to the public or is disclosed to third parties without restriction on its use or disclosure, provided that an officer of the disclosing party with the authority to determine that such information should not be treated as confidential authorized such general availability or disclosure; (b) the receiving party can demonstrate that it had rightfully in its possession prior to disclosure by the disclosing party;
(c) is developed independently by or for the receiving party without the use of any Confidential Information of the disclosing party or otherwise in breach of this Agreement;
(d) the receiving party rightfully obtains without restriction from a third party who has the right to transfer or disclose it and is not in breach of a confidentiality agreement with the disclosing party; or
(e) is disclosed without restriction on further disclosure, as expressly indicated in writing by ail officer of the disclosing party with authority to make such a determination. 1.15 Residual Information means information that is retained in the unaided memories of the receiving party' s employees who lawfully have had access to the disclosing party' s Confidential Information pursuant to the terms of this Agreement and that employee' s specific responsibilities. An employee' s memory is unaided if the employee has not intentionally memorized the information for the purpose of retaining and subsequently using or disclosing it, and has not recorded the information.
1.16 Exclusivity Period [***]. The Exclusivity Period is subject to extension commensurate with any material delays caused by Tower or [***], including without limitation delays in the wafer manufacturing process and delays resulting from revised versions of such deliverables necessitated by problems in the initial deliverables by reason of the fault of Tower or [***] and without substantial contributing fault of Alien. 2. SCOPE OF SERVICES
2.1 Cooperation . During the term of this Agreement, the parties will work together in a mutually beneficial and cooperative fashion as set forth in executed SOWS in order to
*** Confidential treatment requested pursuant to a request for confidential treatment filed with the Securities and Exchange Commission. Omitted portions have been filed separately with the Commission.
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CONFIDENTIAL TREATMENT REQUESTED BY ALIEN TECHNOLOGY CORP.
develop RFID IC products, related Process Technologies, including Process Technology modules specifically designed for RFID IC, and to create mutually beneficial technological solutions.
2.2 Statements of Work . Each joint development project undertaken by the parties will be covered by a separate Statement of Work which:
(a) shall be in substantially the form attached hereto as Exhibit A;
(b) shall be subject to the terms and conditions of this Agreement; (c) shall set forth in reasonable detail: (i) a description of the project, the Services to be performed by Tower, the work to be performed by Alien and any additional work or tasks to be performed by third parties; (ii) each party' s contributions of employee, engineering and design resources, equipment, supplies, capital, and Existing Technology and Intellectual Property Rights; (iii) the items to be delivered by Alien to Tower under the SOW (" Alien Deliverables" ), the items to be delivered by Tower to Alien in connection with the Services (" Tower Deliverables" ), and the items, if any, to be delivered to either Alien or Tower by third parties (" Third Party Deliverables" ), including the hardware and software, reference designs, technical papers, prototypes and other work product to be generated from the Services; (iv) the development schedule; (v) key milestones for the Services; (vi) the roles and responsibilities of each of the parties, and of third parties, in completing the development, including in the evaluation, characterization, testing and debugging of prototypes; (vii) if applicable, the roles and responsibilities of the parties in manufacturing, marketing, promotion, advertisement, commercialization, distribution and sale of products created under or resulting from the Services or otherwise under the SOW;
(d) shall specify payments to be made by Alien to Tower for the performance of Services and any other payments the parties agree to with respect to the project covered by the SOW;
(e) may contain additional terms and conditions, including terms expressly modifying the terms of this Agreement, which for purposes of such Statement of Work supersede any conflicting provisions set forth in this Agreement, without modifying: (i) any provision of this Agreement not expressly modified in such Statement of Work; or (ii) with respect to any other Statement of Work, those or any other provisions of this Agreement. 2.3 Obligation to Perform . Subject to Alien' s agreement to make payments as set forth in Section 5 and the applicable Statement of Work, Tower agrees to engage in performance of Services for Alien. Tower shall have no obligation to commence Services until the applicable Statement of Work is agreed upon and fully executed. Alien shall have no obligation to commence performance under a SOW until the SOW is agreed upon and fully executed.
2.4 Timing and Disclosures . Each party agrees to use commercially reasonable efforts to perform its responsibilities, if any, as set forth under each applicable SOW and to allocate sufficient resources to complete the Services and other tasks in accordance with the relevant
*** Confidential treatment requested pursuant to a request for confidential treatment filed with the Securities and Exchange Commission. Omitted portions have been filed separately with the Commission.
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CONFIDENTIAL TREATMENT REQUESTED BY ALIEN TECHNOLOGY CORP.
specifications and development schedule set forth in such SOW. In the event resource constraints are preventing a timely completion of Services or other tasks under a SOW, each party will make commercially reasonable efforts to address the constraints to ensure completion of the project within the project timeline. To the extent permitted under its existing contractual obligations, each party, in its discretion, will disclose to the other Confidential Information that is relevant to the other in performing the Services and other work under a SOW, including its relevant Existing Technology necessary to complete the SOW. While the parties intend to disclose to one another Confidential Information including their relevant Existing Technology as part of any projects undertaken under this Agreement, for avoidance of doubt, neither party is to have an affirmative obligation hereunder to assist in show-how, or the teaching of or transfer of know-how ill its Existing Technology or Developed Technology to the other party.
2.5 Change Orders . Either party may propose changes or modifications to a SOW. Both Parties will timely review ally proposed changes to a SOW and will identify impacts of such changes 011 the development schedule, cost and deliverables under the SOW. Any modification or amendment to a Statement of Work agreed by the parties shall take effect by executing a written Change Order in substantially the form attached hereto as Exhibit B. Each Statement of Work will be deemed to include all executed Change Orders that reference and modify such Statement of Work. Until such time as any Change Order is fully executed by both parties, Tower will continue to perform and be paid for the Services as if such change had not been requested.
2.6 Purchase Order Terms Superseded . The terms and conditions of this Agreement and the related Statements of Work and Change Orders shall exclusively govern all terms of the projects undertaken under this Agreement, including the performance of any Services and the provision of any Tower Deliverables to Alien, and shall supersede all terms and conditions contained in any purchase order, order, order acknowledgement form, invoice or other business form submitted by either party to the other with respect to the subject matter of this Agreement and any SOW.
2.7 Framework Agreement . This Agreement shall serve as an overall framework with respect to the joint Technology developments of the parties, and it contains general principles regarding the parties' responsibilities, cost sharing and ownership and use of Intellectual Property Rights and Developed Technology applicable to all projects undertaken under a SOW executed by the parties, which principles may be modified on a project-by-project basis in the SOW as contemplated in Section 2.2(e), provided such modifications are signed by both Parties. 3. RELATIONSHIP OF THE PARTIES
3.1 Independent Contractors; No Joint Venture . The parties acknowledge their relationship is that of independent contractors. Nothing in this Agreement shall be construed to create a joint venture, partnership, employment or agency relationship between Alien and Tower or Tower' s employees or contractors. Neither party is authorized to represent, bind, obligate or contract on behalf of the other. *** Confidential treatment requested pursuant to a request for confidential treatment filed with the Securities and Exchange Commission. Omitted portions have been filed separately with the Commission.
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CONFIDENTIAL TREATMENT REQUESTED BY ALIEN TECHNOLOGY CORP.
3.2 Subcontractors . Tower may use Tower Semiconductor U SA, Inc. (" Tower USA" ) and the subcontractors listed on Exhibit C (the " Approved Subcontractors" ) to perform the Services or any part thereof, provided that such use shall not relieve Tower of its obligations under this Agreement or any SOW, and Tower shall be responsible for ensuring that the Approved Subcontractors comply with the provisions hereof and of any applicable SOW. Additional subcontractors may be added to Exhibit C with Alien' s prior written approval, which will not be unreasonably withheld or delayed. It being agreed that if Alien does not respond with its approval or disapproval of any requested addition within fourteen days after receiving the request for approval, Alien will be deemed to have approved such addition.
3.3 Other Customers and Projects . (a) Subject to the terms of this Agreement (including without limitation Section 3.3(b) and the restrictions on use and disclosure of Confidential Information in Section 8), Tower shall be free to engage in other work, alone or with others, and to furnish information to and receive information from others, both during and after the term of this Agreement. (b) [***].
(c) Subject to the restrictions on use of Technologies and disclosure of Confidential Information as set forth in Sections 6, 7 and 8, Alien may collaborate with, or enter into a development agreement with a third party, before, during or after the term of a project under this Agreement which is in the same subject area as any particular project contemplated by this Agreement.
4. RESPONSIBILITIES
4.1 Alien' s Responsibilities . (a) With respect to each SOW, Alien agrees to designate (i) a project manager or single point of contact for Tower for the duration of the Services to be performed under such SOW and (ii) all executive to whom issues unresolved between the parties' project managers can be escalated for attempted resolution. (b) Alien is responsible for the accuracy, completeness and quality of information or other materials supplied by Alien and used in preparation of a SOW or in performance of the Services.
(c) Alien shall dedicate appropriate staff to each development project, as specified in the applicable SOW.
(d) Alien shall provide Tower with reasonable access to Alien' s facilities, subject lo Alien' s standard rules and regulations for such facilities, at all reasonable times when necessary to perform the Services.
*** Confidential treatment requested pursuant to a request for confidential treatment filed with the Securities and Exchange Commission. Omitted portions have been filed separately with the Commission.
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CONFIDENTIAL TREATMENT REQUESTED BY ALIEN TECHNOLOGY CORP.
(e) Alien understands that in order to be able to fully use the results of the Services performed hereunder, it may be necessary for it to obtain licenses from third parties (such as vendors of physical libraries and other intellectual Property components). (f) Alien acknowledges that Tower' s ability to perform in its obligations (which may include delivery schedules) as set forth in this Agreement or any SOW is contingent upon Tower receiving timely, accurate and completed data, information, assistance and specifications from Alien and, in certain cases, from third parties. Alien shall promptly notify Tower of anticipated delays in the delivery of items, which are Alien' s responsibility and shall provide prompt assistance in resolving any such delays or any defects in such items reported by Tower. 4.2 Tower' s Responsibilities .
(a) With respect to each SOW, Tower agrees to designate (i) a project manager or single point of contact for Alien for the duration of the Services to be performed under such SOW and (ii) a11 executive to whom issues unresolved between the parties' project managers can be escalated for attempted resolution.
(b) Tower is responsible for the accuracy, completeness and quality of information supplied by Tower and used in preparation of the SOW or in performance of the Services. (c) Tower shall dedicate appropriate staff to perform the Services described in the applicable SOW. (d) Tower shall provide Alien with reasonable access to Tower' s facilities, subject to Tower' s standard rules and regulations for such facilities, at all reasonable times when necessary to assist in performance of the Services or other tasks to be performed by Alien as set forth in the applicable SOW. (e) Tower shall promptly notify Alien of anticipated delays in the delivery of items, which are Tower' s responsibility and shall provide prompt assistance in resolving any such delays.
5. BILLING AND PAYMENT 5.1 Interim Payments . A SOW may provide for certain payments to be made following the passage of certain dates " Interim Payment" ). Following the passage of each such date (each an " Interim Date" ), Tower shall invoice Alien for the applicable amount, it being understood that the date of Towel' s invoice shall not be earlier than the applicable interim Date. Each Interim Payment shall be due and payable thirty (30) days after the date of invoice.
5.2 Milestone Payments . A SOW may provide for certain portions of the Services to be completed by interim deadlines (" Milestones" ), achievement of which by Tower will trigger Tower' s right to invoice Alien for, and Alien' s obligation to pay, the associated payment (" Milestone
*** Confidential treatment requested pursuant to a request for confidential treatment filed with the Securities and Exchange Commission. Omitted portions have been filed separately with the Commission.
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CONFIDENTIAL TREATMENT REQUESTED BY ALIEN TECHNOLOGY CORP.
Payment" ). Tower will use commercially reasonable efforts to achieve all Milestones and upon successful completion of a Milestone, Tower will provide to Alien a statement describing such achievement along with an invoice for the amount of the applicable Milestone Payment. The date of each such invoice shall not be earlier than the date that Tower achieves the applicable Milestone (the " Milestone Date" ). Each Milestone Payment shall be due and payable thirty (30) days after the date of invoice.
5.3 Wafer and Mask Payments . A SOW (including by way of incorporating a price quotation submitted by Tower to Alien and signed by Alien) may provide for certain payments to be made to Tower in connection with the manufacturing of wafers and the making of masks. Tower will invoice Alien for payments associated with wafer manufacturing and mask malting. Wafer manufacturing related payments will be due and payable thirty (30) days after the date of invoice. If so set forth on the applicable invoice, mask making related payments will be due fourteen (14) days after the date of invoice. It is understood that the date of each such invoice will not be earlier than (a) in the case of masks, receipt of the applicable GDSII file at Tower, and (b) in the case of wafers, the date of shipment of the applicable wafers to Alien.
5.4 Taxes . The amounts payable to Tower under this Agreement do not include any sales, use or other governmental taxes or charges. Alien agrees to pay all applicable taxes, duties or governmental charges (other than taxes based on Tower' s net income), regardless of when they may come due, or to reimburse Tower for the same if Tower is required by applicable law to collect and pay over the same to the relevant taxing authority. 5.5 Late Payments . If Alien Fails to make payments when due, and such payments are not the subject of a good faith dispute, Tower may charge Alien interest on the overdue amount from the date such amount became due at the lesser of 1% per month or the maximum interest rate permitted by applicable law. In addition, Alien will be liable to Tower for all costs of collection incurred by Tower in collecting past clue amounts. Nothing in this section shall limit any other remedies available to Tower.
6. INTELLECTUAL PROPERTY RIGHTS
6.1 Existing Technology . The parties agree that as between Tower and Alien, unless otherwise provided in a SOW: (i) Existing Technology of Alien and all Intellectual Property Rights therein are and shall be owned by, and shall remain the sole and exclusive property of Alien; and (ii) Existing Technology of Tower and all Intellectual Property Rights therein are and shall be owned by, and shall remain the sole and exclusive property of Tower. Except as arid to the extent otherwise provided in this Agreement or an applicable SOW, neither this Agreement nor the performance of Services hereunder shall give either Tower or Alien any ownership interest in or right to any Existing Technology or Existing Intellectual Property Rights held by the other party. 6.2 Developed Process Technology and Devices . The parties agree that as between Tower and Alien, unless otherwise provided in a SOW, all Developed Process Technology, Developed Devices (and all Intellectual Property Rights therein) arising from work carried out under
*** Confidential treatment requested pursuant to a request for confidential treatment filed with the Securities and Exchange Commission. Omitted portions have been filed separately with the Commission.
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CONFIDENTIAL TREATMENT REQUESTED BY ALIEN TECHNOLOGY CORP.
a SOW, including any and all Developed Process Technology modules and Developed Devices specifically designed for the manufacturing of RFID IC, shall be the exclusive property of Tower, regardless of whether such Developed Process Technology and Developed Devices are invented solely by Tower, solely by Alien or jointly by the parties. Tower shall be free to use any Developed Process Technology and Developed Devices or any other improved Process Technology or Devices arising eon? development projects or developed independently from a SOW to offer foundry services to any entity, including Alien. Tower shall have the sole and exclusive right (but not the obligation) to seek patent protection (or any other form of Intellectual Property Rights) covering any Developed Process Technology and Developed Devices iii all countries of the world at its sole expense and shall have full control over the prosecution and maintenance of such patents or other Intellectual Property Rights and title to any patent or other Intellectual Property Rights issuing therefrom shall be issued solely in the Tower' s name. 6.3 Developed Assembly Technology and Developed Circuits . The parties agree that as between Tower and Alien, unless otherwise provided in a SOW, all Developed Assembly Technology and Developed Circuits (and all Intellectual Property Rights therein) arising from Work carried out under a SOW, including ally and all Developed Assembly Technology modules and Developed Circuits specifically designed for Alien under SOWS pursuant to this Agreement, shall be the exclusive property of Alien, regardless of whether such Developed Assembly or Developed Circuits Technology are invented solely by Tower, solely by Alien or jointly by the parties. Alien shall be free to use any Developed Assembly Technology and Developed Circuits or any other improved Assembly Technology and Developed Circuits arising from development projects or developed independently from a SOW to design, manufacture and assemble Alien products wherever manufactured. Alien shall have the sole and exclusive right (but not the obligation) to seek patent protection (or any other form of Intellectual Property Rights) covering any Developed Assembly Technology and Developed Circuits in all countries of the world at its sole expense and shall have full control over the prosecution and maintenance of such patents or other Intellectual Property Rights and title to any patent or other Intellectual Property Rights issuing therefrom shall be issued solely in the Alien' s name.
6.4 Other Developed Technology . Except in the areas of Process, Assembly, Device and Circuit (the rules for which are set forth in Sections 6.2 and 6.3 above), the parties agree that as between Tower and Alien, unless otherwise provided in a SOW, the following rules shall apply in the following descending order to determine the ownership of items and deliverables of other Developed Technology (and all Intellectual Property Rights therein), arising from work carried out under a SOW: (a) Any item identified to be owned by a particular party in the applicable SOW, shall be exclusively owned by such party. (b) Any item expressly identified to be Jointly Owned Developed Technology by the parties in the applicable SOW shall be jointly owned in equal undivided interests by Tower and Alien (unless a different joint ownership arrangement expressly described in the applicable SOW).
*** Confidential treatment requested pursuant to a request for confidential treatment filed with the Securities and Exchange Commission. Omitted portions have been filed separately with the Commission.
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(c) Any item that has been primarily derived from an Existing Technology or Intellectual Property Rights of a party shall be exclusively owned by such party.
(d) Any item that has been primarily developed by a party shall be exclusively owned by such party, notwithstanding any inputs and suggestions that the other party may have made in regard to such work and deliverables. (e) Any item developed or reduced to practice jointly by the parties during the course of the performance of a SOW not covered by sub-Sections 6.4 (a) through (d) above shall be Jointly Owned Developed Technology, owned in equal undivided interests by Tower and Alien.
6.5 Assignment of Rights . Except for items of Jointly Owned Developed Technology, the party that is not entitled to own an item pursuant to the rules set forth in Sections 6.2, 6.3 and 6.4 of this Agreement, hereby assigns to the owning party all right, title and interest it may have in such item and any Intellectual Property Rights therein. The owning party shall have the sole and exclusive right (but not the obligation) to seek patent protection (or other Intellectual Property Rights) covering any item it solely owns in all countries of the world, at its sole expense, and shall have full control over the prosecution and maintenance of such patents (or other Intellectual Property Rights) and title to any patent (or other Intellectual Property Rights) issuing therefrom shall be issues solely in the name of the owning party.
6.6 Jointly Owned Developed Technology . Tower and Alien shall:
(a) execute any and all documents necessary to effectuate their equal and undivided interests to Jointly Owned Developed Technology;
(b) have the right to freely use, exploit, protect, maintain, license, transfer and enforce its rights to the portion of any Jointly Owned Developed Technology that is not Existing Technology with no royalty payment or accounting to the other party, provided each party shall bear its portion of Joint Costs (as defined below); and
(c) jointly share expenses incurred in securing rights mutually agreed to be prosecuted by the parties such as those associated with obtaining and maintaining Intellectual Property Rights with respect to Jointly Owned Developed Technology (" Joint Costs" ). If one party elects not to seek or secure such rights on Jointly Owned Developed Technology in any particular country or not to share equally in the expenses thereof, the other party will have the right to seek and maintain such protection at its own expense and shall have full and exclusive control over the prosecution and maintenance thereof, even though title to any Intellectual Property Rights arising from Jointly Owned Developed Technology will be joint; provided, however, that the non-participating party agrees that it will not have the right to grant licenses under such Intellectual Property Rights to third parties (other than its own majority-owned subsidiaries) in such country or countries. Each party hereby forever waives and releases any right it has or will have in the future to require any accounting, sharing or payment of profits from the other in connection with Jointly Owned Developed Technology.
*** Confidential treatment requested pursuant to a request for confidential treatment filed with the Securities and Exchange Commission. Omitted portions have been filed separately with the Commission.
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6.7 Cooperation and Disclosure . Tower and Alien will: (a) perform such acts, execute and deliver such instruments and documents, submit such filings, and do all such other things as may be reasonably necessary to evidence, perfect and enforce the rights of the parties stated in this Section 6;
(b) cause their employees performing work under this Agreement or an applicable SOW, whether solely or jointly with others, to promptly make a complete written disclosure to their employer for patent review of any Developed Technology, the normal course, specifically pointing out those features or concepts believed to be new or different; and
(c) promptly submit to the other party copies, marked as Confidential Information, of any written disclosures pertaining to Developed Technology which is deemed to be owned by the other party or deemed to be Jointly Owned Developed Technology under this Agreement, including any filing or receiving of documents related to prosecution or issuance of Intellectual Property Rights arising from Jointly Owned Developed Technology for which the party share Joint Costs, which submissions shall be subject to the provisions of Section 8 (Confidential Information) of this Agreement.
7. LICENSES 7.1 By Alien . Alien hereby grants to Tower a worldwide, non-exclusive, nontransferable (except pursuant to Section 12.1 below), royalty-free (except as otherwise provided in an applicable SOW), with no right to sublicense (expect as expressly permitted in this Section 7.1) licenses to use any: (a) Existing Technology and other Technology Developed solely by Alien that are owned and licensable by Alien (and the Intellectual Property Rights of Alien therein), solely to perform Tower' s obligations under this Agreement and under any applicable SOW;
(b) Developed Technology jointly Developed by Alien and Tower, that are owned and licensable by Alien (and the Intellectual Property Rights of Alien therein), solely to perform Tower' s obligations under this Agreement and under any applicable SOW and to make and have made for Alien, use, have used, lease, offer to sell, sell, export or otherwise transfer any products or related processes based on work and deliverables arising from a SOW (including any derivative of such Developed Technology as described in this sentence), and to practice and have practiced for Alien any method in support of these rights.
*** Confidential treatment requested pursuant to a request for confidential treatment filed with the Securities and Exchange Commission. Omitted portions have been filed separately with the Commission.
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7.2 By Tower . Tower hereby grants to Alien a worldwide, non-exclusive, nontransferable (except pursuant to Section 12.1 below), royalty-free (except as otherwise provided in an applicable SOW), with no right to sublicense (expect as expressly permitted in this Section 7.2) licenses to use any: (a) Existing Technology and other Technology Developed solely by Tower that is owned and licensable by Tower (and the Intellectual Property Rights of Tower therein), to perform Alien' s obligations under this Agreement and under any applicable SOW.
(b) Developed Technology jointly Developed by Tower and Alien to the extent owned and licensable by Tower (and the Intellectual Property Rights therein), to perform Alien' s obligations hereunder and under any applicable SOW, and, and to make at or have made by Tower, use, have used, lease, offer to sell, sell, export, or otherwise transfer any products or processes based on work or deliverables arising from a SOW (including any derivative of such Developed Technology as described in this sentence), and to practice and have practiced by Tower any method in support of these rights.
7.3 Acknowledgments by the Parties . Tower acknowledges that nothing in this Agreement shall restrict Alien' s existing rights to use the Existing Technology or Developed Technology owned by Alien. Except as otherwise provided in Section 3.3(b), Alien acknowledges that nothing in this Agreement shall restrict Tower' s existing rights to use Existing Technology or Developed Technology owned by Tower. 7.4 Rights not Granted . This Agreement grants no license to Tower or to Alien under any other Technology or Intellectual Property Rights, including all trademarks, not explicitly identified and licensed in this Agreement.
8. CONFIDENTIAL INFORMATION
8.1 Duty to Maintain Confidentiality . Each party agrees to accept Confidential Information from the other party solely for use in connection with performance of its obligations and exercise of its express rights granted under this Agreement and the executed SOWS and that for a period of five (5) years from the date of disclosure it will hold in strict confidence and not disclose, publish, or disseminate such Confidential Information, to anyone other than those of its employees and subcontractors with a need to know and have executed appropriate confidentiality agreements, nor use Confidential Information for its own or any other Party' s benefit, without the prior written approval of an authorized representative of originating Party. The receiving party will protect Confidential Information of the disclosing party from disclosure, publication, dissemination and unauthorized use with...
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