Intellectual Property Assets. (i) The execution, delivery and performance of this Agreement and the Related Agreements, and the consummation of the transactions contemplated hereby and thereby, will not breach, violate or conflict with any instrument or agreement governing any Intellectual Property Asset and will not cause the forfeiture or termination or give rise to a right of forfeiture or termination of any such Intellectual Property Asset or in any way impair the right of Purchaser or any of its affiliates to use, sell, license or dispose of, or to bring any action for the infringement of, any such Intellectual Property Asset or portion thereof; (ii) Neither the development, manufacture, marketing, license, sale or use of any product currently licensed or sold by Seller or, to Seller's knowledge after reasonable investigation with respect to products currently under development, violates or will violate any license or agreement to which Seller is a party or infringes or will infringe any assets or rights of any other party; there is no pending or, to the knowledge of Seller, threatened claim or litigation contesting the validity, ownership or right to use, sell, license or dispose of any of the Intellectual Property Assets or necessary or required for, or used in, the conduct of the Business of Seller as presently conducted nor, to the knowledge of Seller, is there any basis for any such claim, nor has Seller received any notice asserting that any such Intellectual Property Asset or the proposed use, sale, license or disposition thereof conflicts or will conflict with the rights of any other party, nor, to the knowledge of Seller after reasonable investigation, is there any basis for any such assertion; to the knowledge of Seller, after reasonable investigation, there is no infringement on the part of any third party of the Intellectual Property Assets; (iii) Seller has taken reasonable and practicable steps (including, without limitation, entering into confidentiality and non-disclosure agreements with all officers and employees of and consultants to Seller with access to or knowledge of Seller's Intellectual Property Assets) to maintain the secrecy and confidentiality of, and its proprietary rights in, the Intellectual Property Assets. Exhibit A attached hereto includes a complete and accurate --------- list of all applications, filings and other formal actions made or taken pursuant to federal, state, local and foreign laws by Seller to perfect or protect its interest in the Intellectual Property Assets, * Material has been omitted pursuant to a request for confidential treatment, and such material has been filed separately with the SEC. including, without limitation, all patents, patent applications, trademarks, trademark applications, service marks and copyright or mask work registrations; and (iv) All fees to maintain Seller's rights in the Intellectual Property Assets, including, without limitation, patent and trademark registration and prosecution fees and all professional fees in connection therewith pertaining to the Intellectual Property Assets due and payable on or before the Closing Date, have been paid by Seller or will be paid by Seller before the Closing Date. (v) Seller has not granted any license, security interest in or otherwise pledged any of the Intellectual Property to any other party.
Appears in 2 contracts
Samples: Asset Purchase Agreement (Durect Corp), Asset Purchase Agreement (Durect Corp)
Intellectual Property Assets. (ia) The execution, delivery Schedule 3.25(a) sets forth a true and performance complete list of this Agreement and the Related Agreements, and the consummation all of the transactions contemplated hereby and thereby, will not breach, violate or conflict with any instrument or agreement governing any such Seller’s Registered Intellectual Property Asset Rights and will not cause the forfeiture or termination or give rise Licensed Rights other than Off-the-Shelf Software. Such Seller’s own all right, title and interest in and to a right of forfeiture or termination of any all such Intellectual Property Asset Rights free and clear of any Encumbrances, except for Permitted Encumbrances.
(b) The Intellectual Property Rights and the Licensed Rights included in the Acquired Assets constitute all of the rights to Intellectual Property necessary to or used in the conduct of the Business as presently conducted. Neither the validity of the Intellectual Property Rights and such Seller’s title thereto nor the validity of such Seller’s use of the Licensed Rights (x) have been questioned in any way impair prior Proceeding; (y) are being questioned in any Proceeding; and (z) are the right subject(s) of Purchaser any threatened or any proposed Proceeding. To the Knowledge of its affiliates such Seller, none of the Business, as presently conducted, the Intellectual Property Rights or the Licensed Rights conflict with and, to usethe Knowledge of such Seller, sell, license or dispose of, or has not been alleged to bring any action for the infringement ofconflict with, any such Intellectual Property Asset patents, trademarks, trade names, service marks, copyrights or portion thereof;
(ii) Neither the development, manufacture, marketing, license, sale or use of any product currently licensed or sold by Seller or, to Seller's knowledge after reasonable investigation with respect to products currently under development, violates or will violate any license or agreement to which Seller is a party or infringes or will infringe any assets or other intellectual property rights of any other party; there is no pending or, to Person. The consummation of the knowledge of Seller, threatened claim Contemplated Transactions will not result in the loss or litigation contesting the validity, ownership or right to use, sell, license or dispose impairment of any of the Intellectual Property Assets Rights or necessary or required for, or used in, the conduct right to use any of the Business of Seller as presently conducted nor, to Licensed Rights in the knowledge of Seller, is there any basis Business. Except for any such claim, nor has Seller received any notice asserting that any such Intellectual Property Asset or the proposed use, sale, license or disposition thereof conflicts or will conflict with the rights of any other party, nor, to the knowledge of Seller after reasonable investigation, is there any basis for any such assertion; to the knowledge of Seller, after reasonable investigationthose licensees set forth on Schedule 3.20(a), there is are no infringement on the part of any third party of the Intellectual Property Assets;
(iii) Seller has taken reasonable and practicable steps (including, without limitation, entering into confidentiality and non-disclosure agreements with all officers and employees of and consultants to Seller with access to or knowledge of Seller's Intellectual Property Assets) to maintain the secrecy and confidentiality of, and its proprietary rights in, the Intellectual Property Assets. Exhibit A attached hereto includes a complete and accurate --------- list of all applications, filings and other formal actions made or taken pursuant to federal, state, local and foreign laws parties authorized by such Seller to perfect or protect its interest in the Intellectual Property Assets, * Material has been omitted pursuant to a request for confidential treatment, and such material has been filed separately with the SEC. including, without limitation, all patents, patent applications, trademarks, trademark applications, service marks and copyright or mask work registrations; and
(iv) All fees to maintain Seller's rights in the Intellectual Property Assets, including, without limitation, patent and trademark registration and prosecution fees and all professional fees in connection therewith pertaining to the Intellectual Property Assets due and payable on or before the Closing Date, have been paid by Seller or will be paid by Seller before the Closing Date.
(v) Seller has not granted any license, security interest in or otherwise pledged use any of the Intellectual Property Rights, and, to the Knowledge of such Seller, there are no third parties using any of the Intellectual Property Rights without authorization from such Seller. There are no infringement or misappropriation Proceedings pending or, to such Seller’s Knowledge, threatened against such Seller with respect to any Intellectual Property Rights or Leased Rights. Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions marked [***].
(c) Such Seller has instituted, maintained and enforced commercially reasonable measures (including the entering into of appropriate written agreements with present employees and consultants of the Business) to maintain the ownership and confidentiality of the Intellectual Property Rights and other partyIntellectual Property of the Business, and all such Contracts are identified on Schedule 3.20(a).
(d) Schedule 3.25(d) identifies each computer software program owned, held or used in the conduct of the Business, other than Off-the-Shelf Software, that assists with or relates to computer aided engineering, design, manufacturing or other analysis, archival or retrieval of technical information. Such Seller owns, or possesses sufficiently broad and valid rights to use, all computer software programs that are material to the conduct of, used or held for use in the Business. There are no infringement Proceedings pending or, to such Seller’s Knowledge, threatened against such Seller with respect to any software owned or licensed by such Seller or used by such Seller in the Business.
Appears in 1 contract
Samples: Asset Purchase Agreement (Kimball Electronics, Inc.)
Intellectual Property Assets. (ia) The execution, delivery Schedule 3.26(a) sets forth a true and performance complete list of this Agreement and the Related Agreements, and the consummation all of the transactions contemplated hereby and thereby, will not breach, violate or conflict with any instrument or agreement governing any Seller’s Intellectual Property Asset Rights and will not cause the forfeiture or termination or give rise Licensed Rights. Seller’s own all right, title and interest in and to a right of forfeiture or termination of any all such Intellectual Property Asset Rights free and clear of any Encumbrances.
(b) The Intellectual Property Rights and the Licensed Rights included in the Acquired Assets constitute all of the rights to Intellectual Property necessary to or used in the conduct of the Business as presently conducted. Neither the validity of the Intellectual Property Rights and Seller’s title thereto nor the validity of Seller’s use of the Licensed Rights (x) have been questioned in any way impair prior Proceeding; (y) are being questioned in any Proceeding; and (z) are the right subject(s) of Purchaser any threatened or any proposed Proceeding. To the Knowledge of its affiliates Seller, none of the Business, as presently conducted, the Intellectual Property Rights or the Licensed Rights conflict with and, to usethe Knowledge of Seller, sell, license or dispose of, or has not been alleged to bring any action for the infringement ofconflict with, any such Intellectual Property Asset patents, trademarks, trade names, service marks, copyrights or portion thereof;
(ii) Neither the development, manufacture, marketing, license, sale or use of any product currently licensed or sold by Seller or, to Seller's knowledge after reasonable investigation with respect to products currently under development, violates or will violate any license or agreement to which Seller is a party or infringes or will infringe any assets or other intellectual property rights of any other party; there is no pending or, to Person. The consummation of the knowledge of Seller, threatened claim Contemplated Transactions will not result in the loss or litigation contesting the validity, ownership or right to use, sell, license or dispose impairment of any of the Intellectual Property Assets Rights or necessary the right to use any of the Licensed Rights in the Business. Except for those licensees set forth on Schedule 3.20(a), there are no Third Parties authorized by Seller to use any of the Intellectual Property Rights, and, to the Knowledge of Seller, there are no Third Parties using any of the Intellectual Property Rights without authorization from Seller. There are no infringement or required formisappropriation Proceedings pending or, to Seller’s Knowledge, threatened against Seller with respect to any Intellectual Property Rights or Leased Rights.
(c) All agreements of Seller with present employees and consultants of the Business to maintain the ownership and confidentiality of the Intellectual Property Rights and other Intellectual Property of the Business are identified on Schedule 3.20(a).
(d) Schedule 3.26(d) identifies each computer software program owned, held or used in, in the conduct of the Business of that assists with or relates to computer aided engineering, design, manufacturing or other technical information. Seller as presently conducted norowns, or possesses sufficiently broad and valid rights to use, all computer software programs that are material to the conduct of, used or held for use in the Business. There are no infringement Proceedings pending or, to the knowledge of Seller’s Knowledge, is there any basis for any such claim, nor has Seller received any notice asserting that any such Intellectual Property Asset or the proposed use, sale, license or disposition thereof conflicts or will conflict with the rights of any other party, nor, to the knowledge of Seller after reasonable investigation, is there any basis for any such assertion; to the knowledge of Seller, after reasonable investigation, there is no infringement on the part of any third party of the Intellectual Property Assets;
(iii) Seller has taken reasonable and practicable steps (including, without limitation, entering into confidentiality and non-disclosure agreements with all officers and employees of and consultants to threatened against Seller with access respect to any software owned or knowledge of Seller's Intellectual Property Assets) to maintain the secrecy and confidentiality of, and its proprietary rights in, the Intellectual Property Assets. Exhibit A attached hereto includes a complete and accurate --------- list of all applications, filings and other formal actions made or taken pursuant to federal, state, local and foreign laws by Seller to perfect or protect its interest in the Intellectual Property Assets, * Material has been omitted pursuant to a request for confidential treatment, and such material has been filed separately with the SEC. including, without limitation, all patents, patent applications, trademarks, trademark applications, service marks and copyright or mask work registrations; and
(iv) All fees to maintain Seller's rights in the Intellectual Property Assets, including, without limitation, patent and trademark registration and prosecution fees and all professional fees in connection therewith pertaining to the Intellectual Property Assets due and payable on or before the Closing Date, have been paid licensed by Seller or will be paid used by Seller before in the Closing DateBusiness.
(v) Seller has not granted any license, security interest in or otherwise pledged any of the Intellectual Property to any other party.
Appears in 1 contract
Samples: Asset Purchase Agreement (Fox Factory Holding Corp)
Intellectual Property Assets. (i) The executionSet forth on Schedule 3.1(G) is a list of all patents and patent applications, delivery registered Marks (as defined below) and performance applications for the registration of this Agreement Marks, registered copyrights and the Related Agreementscopyright applications, and similar material intellectual property rights which are owned by or licensed to the consummation Company or used in the Business as currently conducted or proposed to be conducted; excluding in any case “off the shelf” software or similar property which is readily available on a commercial or retail basis with a replacement cost and/or annual license fee of less than $10,000. Except as set forth on Schedule 3.1(G), (1) to the knowledge of the transactions contemplated hereby and therebyShareholder, will the use of the Business Intellectual Property, as currently used or proposed to be used by the Company, does not breachconflict with, violate misappropriate or conflict with any instrument or agreement governing infringe upon any Intellectual Property Asset and will not cause rights of others; (2) to the forfeiture or termination or give rise to a right knowledge of forfeiture or termination of any such Intellectual Property Asset or in any way impair the right of Purchaser or any of its affiliates to useShareholder, sellno other Person is conflicting with, license or dispose ofinfringing on, or to bring any action for misappropriating (or has in the infringement ofpast conflicted with, any infringed on, or misappropriated) the rights of the Company in such Business Intellectual Property Asset or portion thereof;
Property; and (ii3) Neither the development, manufacture, marketing, license, sale or use of any product currently licensed or sold no claims (including office actions by Seller or, to Seller's knowledge after reasonable investigation Governmental Entities) with respect to products currently under development, violates or will violate any license or agreement to which Seller is a party or infringes or will infringe any assets or rights of any other party; there is no pending the Business Intellectual Property have been made or, to the knowledge of SellerShareholder threatened, threatened claim or litigation contesting the validity, ownership or right to use, sellownership, license enforceability or dispose registrability of any of the Business Intellectual Property Assets or necessary or required for, or used in, the conduct of the Business of Seller as presently conducted nor, to the knowledge of Seller, is there any basis for any such claim, nor has Seller received any notice asserting that any such Intellectual Property Asset or the proposed use, sale, license or disposition thereof conflicts or will conflict with the rights of any other partyProperty, nor, to the knowledge of Seller after reasonable investigationthe Shareholder, is there any reasonable basis for any such assertion; claim.
(ii) The Company owns all right, title, and interest in and to, free and clear of all Liens (other than Permitted Liens) or has a valid and enforceable right to the knowledge of Seller, after reasonable investigation, there is no infringement on the part of any use without payment to a third party (except for payments due under Material Commitments or other Commitments listed on Schedule 3.1(E)) all Intellectual Property which is necessary or used in the operation of the Business (together with the Intellectual Property Assets;
(iii) Seller has taken reasonable and practicable steps (includingowned by the Company, without limitation, entering into confidentiality and non-disclosure agreements with all officers and employees collectively the “Business Intellectual Property”). Any such usage rights do not require payment to a third party on account of and consultants to Seller with access to or knowledge of Seller's such Business Intellectual Property Assets) (except for payments due under Material Commitments or other Commitments listed on Schedule 3.1(E)). The transactions contemplated by this Agreement shall not adversely affect the right, title or interest of the Company in or to maintain the secrecy and confidentiality ofBusiness Intellectual Property, and its proprietary rights in, all of the Business Intellectual Property Assets. Exhibit A attached hereto includes a complete shall be owned or available for use by the Company immediately after the Closing on terms and accurate --------- list of all applications, filings and other formal actions made conditions identical to those under which the Company owned or taken pursuant to federal, state, local and foreign laws by Seller to perfect or protect its interest in used the Business Intellectual Property Assetsimmediately prior to the Closing. The Company is listed as the record owner of each registration or application for registration of Business Intellectual Property. No past or present employee or consultant of the Company has or, * Material has been omitted pursuant to a request for confidential treatment, and such material has been filed separately together with the SEC. includingShareholder, without limitationwill have as a result of the consummation of the transactions contemplated by this Agreement, all patentsany ownership interest, patent applications, trademarks, trademark applications, service marks and copyright or mask work registrations; and
(iv) All fees to maintain Seller's rights in the Intellectual Property Assets, including, without limitation, patent and trademark registration and prosecution fees and all professional fees in connection therewith pertaining to the Intellectual Property Assets due and payable on or before the Closing Date, have been paid by Seller or will be paid by Seller before the Closing Date.
(v) Seller has not granted any license, security interest permission or other right in or otherwise pledged any of the Intellectual Property to any other partyBusiness Intellectual Property.
Appears in 1 contract
Samples: Stock Purchase Agreement (New York & Company, Inc.)
Intellectual Property Assets. (ia) Part 3.14(a) of the Disclosure Letter contains a complete and correct list of all of the Intellectual Property Assets owned by Seller that are registered or applied for with the United States Patent and Trademark Office. Seller owns, or possesses the royalty free licenses from Third Parties to use, all Intellectual Property necessary for the conduct of the Business as it is currently conducted.
(b) Part 3.14(b) of the Disclosure Letter further defines the Business Products that are associated with the Intellectual Property Assets.
(c) The execution, delivery and performance of this Agreement and the Related Agreements, and the consummation of the transactions contemplated hereby and thereby, will not breach, violate or conflict with any instrument or agreement governing any Intellectual Property Asset and will not cause Assets that are owned by Seller reserve to Seller the forfeiture or termination or give rise exclusive rights to a right of forfeiture or termination of any employ such Intellectual Property Asset or in any way impair the right of Purchaser or any of its affiliates Assets to make, have made, use, sell, license or dispose ofand have sold the Business Products.
(d) The Intellectual Property Assets that are licensed to Seller from Third Parties, or if any, grant to bring any action for Seller the infringement of, any transferable rights to employ such Intellectual Property Asset Assets to make, have made, use, sell, and have sold the Business Product.
(e) To Seller’s knowledge, there is no unauthorized use, infringement, or portion thereof;misappropriation by any Third Party of any Intellectual Property Asset.
(f) To Seller’s knowledge, neither the conduct of the Business nor the manufacture, use, or sale of any Business Product infringes upon any Intellectual Property of any Third Party. Seller has not received notice of a claim, or threat of claim, made to Seller, that (i) the conduct of the Business or the manufacture, use, or sale of any Business Product infringes upon any Intellectual Property of any Third Party, (ii) Neither the development, manufacture, marketing, license, sale or use of any product currently licensed or sold by Seller or, to Seller's knowledge after reasonable investigation with respect to products currently under development, violates or will violate any license or agreement to which Seller is a party or infringes or will infringe any assets or rights of any other party; there is no pending or, to the knowledge of Seller, threatened claim or litigation contesting contests the validity, ownership ownership, or right to use, sell, license license, or otherwise dispose of any of the Intellectual Property Assets or necessary or required forAsset, or used in(iii) seeks to or could restrict, prevent, or otherwise interfere with the conduct of the Business of Seller as presently conducted nor, to the knowledge of Seller, is there any basis for any such claim, nor has Seller received any notice asserting that any such Intellectual Property Asset or the proposed continued use, saleenhancement, license or disposition thereof conflicts or will conflict with the rights of any other party, nor, to the knowledge of Seller after reasonable investigation, is there any basis for any such assertion; to the knowledge of Seller, after reasonable investigation, there is no infringement on the part of any third party exploitation of the Intellectual Property Assets;
(iii) Seller has taken reasonable and practicable steps (including, without limitation, entering into confidentiality and non-disclosure agreements with all officers and employees of and consultants to Seller with access to or knowledge of Seller's Intellectual Property Assets) to maintain the secrecy and confidentiality of, and its proprietary rights in, the Intellectual Property Assets. Exhibit A attached hereto includes a complete and accurate --------- list of all applications, filings and other formal actions made or taken pursuant to federal, state, local and foreign laws by Seller to perfect or protect its interest in the Intellectual Property Assets, * Material has been omitted pursuant to a request for confidential treatment, and such material has been filed separately with the SEC. including, without limitation, all patents, patent applications, trademarks, trademark applications, service marks and copyright or mask work registrations; and
(iv) All fees to maintain Seller's rights in the Intellectual Property Assets, including, without limitation, patent and trademark registration and prosecution fees and all professional fees in connection therewith pertaining to the Intellectual Property Assets due and payable on or before the Closing Date, have been paid by Seller or will be paid by Seller before the Closing Date.
(v) Seller has not granted any license, security interest in or otherwise pledged any of the Intellectual Property to any other party.
Appears in 1 contract
Samples: Asset Purchase Agreement (Mesa Laboratories Inc /Co)
Intellectual Property Assets. (a) The Intellectual Property Assets are all those necessary for the performance of the Assumed Contracts by the Purchaser after the Effective Time in substantially the same manner as performed by the Seller prior to the Effective Time. Seller is the sole and exclusive owner of all right, title and interest in and to each of the Intellectual Property Assets, free and clear of all liens, security interests, charges, encumbrances or other adverse claims (including, without limitation, undisclosed distribution rights) other than Permitted Encumbrances, and has the right to use without payment to any third party all of the Intellectual Property Assets, other than in respect of the licenses listed in Section 4.8(a) of the Disclosure Schedule.
(b) Except as disclosed on Section 4.8(b) of the Disclosure Schedule:
(i) The execution, delivery and performance of this Agreement and the Related Agreements, and the consummation of the transactions contemplated hereby and thereby, will not breach, violate result in any loss or conflict with any instrument impairment of the Purchaser’s rights to own or agreement governing use any Intellectual Property Asset and will not cause the forfeiture or termination or give rise to a right of forfeiture or termination of any such Intellectual Property Asset or in any way impair the right of Purchaser or any of its affiliates to use, sell, license or dispose of, or to bring any action for the infringement of, any such Intellectual Property Asset or portion thereof;Assets.
(ii) Neither the developmentThere are no outstanding, manufacturenor has Seller received written notice of, marketing, license, sale or use of nor is there any product currently licensed or sold by Seller or, to Seller's knowledge after reasonable investigation with respect to products currently under development, violates or will violate any license or agreement to which Seller is a party or infringes or will infringe any assets or rights of any other party; there is no pending or, basis to the knowledge Knowledge of SellerSeller for, threatened claim any claim, charge, action, suit, or litigation contesting preceding against Seller involving: (A) a challenge to the validity, ownership or right to use, sell, license or dispose of any Seller of the Intellectual Property Assets or necessary or required for, or used in, the conduct owned by Seller; (B) a claim of the Business of Seller as presently conducted nor, unfair competition with respect to the knowledge of Seller, is there any basis for any such claim, nor has Seller received any notice asserting that any such Intellectual Property Asset or the proposed use, sale, license or disposition thereof conflicts or will conflict with the rights of any other party, nor, to the knowledge of Seller after reasonable investigation, is there any basis for any such assertion; to the knowledge of Seller, after reasonable investigation, there is no infringement on the part intangible property right of any third party person or entity; (C) infringement by the Intellectual Property Assets of any patent, trademark, trade name, copyright, trade secret, or other intellectual property right of any third party; (D) the improper use of the Trade Secrets, formulae, or intellectual property of others; or (E) a claim that any trademark, trade name, service xxxx, or logo in use or proposed for use by Seller is, or is likely to be, confused with a trademark, trade name, service xxxx, or logo of a third party.
(iii) To Seller’s Knowledge, Seller has taken all reasonable precautions to protect its right, title, and interest in and to the Intellectual Property Assets;
(iii) Seller has taken reasonable and practicable steps (including, including without limitation, entering into use of confidentiality and non-disclosure agreements with all officers and employees prior to disclosure of and consultants to Seller with access to or knowledge of Seller's Intellectual Property Assets) to maintain the secrecy and confidentiality of, and its proprietary rights in, the Intellectual Property Assets. Exhibit A attached hereto includes a complete and accurate --------- list of all applications, filings and other formal actions made or taken pursuant to federal, state, local and foreign laws by Seller to perfect or protect its interest in the Intellectual Property Assets, * Material has been omitted pursuant to a request for confidential treatment, and such material has been filed separately with the SEC. including, without limitation, all patents, patent applications, trademarks, trademark applications, service marks and copyright or mask work registrations; andother measures as Seller determines are appropriate.
(iv) All fees Each person currently or formerly employed by Seller (including independent contractors, if any) that has or had access to maintain Seller's rights in the Intellectual Property Assets, including, without limitation, patent and trademark registration and prosecution fees and all professional fees in connection therewith pertaining confidential information of Seller relating to the Intellectual Property Purchased Assets due has executed a confidentiality and payable on non-disclosure agreements that include without limitation appropriate work-for-hire provisions in favor of Seller. Such confidentiality and non-disclosure agreements constitute valid and binding obligations of Seller and to Seller’s knowledge, such person, enforceable in accordance with their respective terms, except as enforceability may be limited by general equitable principles or before the Closing Date, have been paid by Seller or will be paid by Seller before the Closing Dateexercise of judicial discretion in accordance with such principles.
(v) Seller has not granted any license, security interest in or otherwise pledged any of the Intellectual Property to any other party.
Appears in 1 contract
Intellectual Property Assets. (ia) The execution, delivery Schedule 3.26(a) sets forth a true and performance complete list of this Agreement and the Related Agreements, and the consummation all of the transactions contemplated hereby and thereby, will not breach, violate or conflict with any instrument or agreement governing any Seller’s Intellectual Property Asset Rights and will not cause the forfeiture or termination or give rise Licensed Rights. Seller’s own all right, title and interest in and to a right of forfeiture or termination of any all such Intellectual Property Asset Rights free and clear of any Encumbrances.
(b) The Intellectual Property Rights and the Licensed Rights included in the Acquired Assets constitute all of the rights to Intellectual Property necessary to or used in the conduct of the Business as presently conducted. Neither the validity of the Intellectual Property Rights and Seller’s title thereto nor the validity of Seller’s use of the Licensed Rights (x) have been questioned in any way impair prior Proceeding; (y) are being questioned in any Proceeding; and (z) are the right subject(s) of Purchaser any threatened or any proposed Proceeding. To the Knowledge of its affiliates Seller, none of the Business, as presently conducted, the Intellectual Property Rights or the Licensed Rights conflict with and, to usethe Knowledge of Seller, sell, license or dispose of, or has not been alleged to bring any action for the infringement ofconflict with, any such Intellectual Property Asset patents, trademarks, trade names, service marks, copyrights or portion thereof;
(ii) Neither the development, manufacture, marketing, license, sale or use of any product currently licensed or sold by Seller or, to Seller's knowledge after reasonable investigation with respect to products currently under development, violates or will violate any license or agreement to which Seller is a party or infringes or will infringe any assets or other intellectual property rights of any other party; there is no pending or, to Person. The consummation of the knowledge of Seller, threatened claim Contemplated Transactions will not result in the loss or litigation contesting the validity, ownership or right to use, sell, license or dispose impairment of any of the Intellectual Property Assets Rights or necessary the right to use any of the Licensed Rights in the Business. Except for those licensees set forth on Schedule 3.20(a), there are no Third Parties authorized by Seller to use any of the Intellectual Property Rights, and, to the Knowledge of Seller, there are no Third Parties using any of the Intellectual Property Rights without authorization from Seller. There are no infringement or required formisappropriation Proceedings pending or, to Seller’s Knowledge, threatened against Seller with respect to any Intellectual Property Rights or Leased Rights.
(c) All agreements of Seller with present employees and consultants of the Business to maintain the ownership and confidentiality of the Intellectual Property Rights and other Intellectual Property of the Business are identified on Schedule 3.20(a). (d) Schedule 3.26(d) identifies each computer software program owned, held or used in, in the conduct of the Business of that assists with or relates to computer aided engineering, design, manufacturing or other technical information. Seller as presently conducted norowns, or possesses sufficiently broad and valid rights to use, all computer software programs that are material to the conduct of, used or held for use in the Business. There are no infringement Proceedings pending or, to the knowledge of Seller’s Knowledge, is there any basis for any such claim, nor has Seller received any notice asserting that any such Intellectual Property Asset or the proposed use, sale, license or disposition thereof conflicts or will conflict with the rights of any other party, nor, to the knowledge of Seller after reasonable investigation, is there any basis for any such assertion; to the knowledge of Seller, after reasonable investigation, there is no infringement on the part of any third party of the Intellectual Property Assets;
(iii) Seller has taken reasonable and practicable steps (including, without limitation, entering into confidentiality and non-disclosure agreements with all officers and employees of and consultants to threatened against Seller with access respect to any software owned or knowledge of Seller's Intellectual Property Assets) to maintain the secrecy and confidentiality of, and its proprietary rights in, the Intellectual Property Assets. Exhibit A attached hereto includes a complete and accurate --------- list of all applications, filings and other formal actions made or taken pursuant to federal, state, local and foreign laws by Seller to perfect or protect its interest in the Intellectual Property Assets, * Material has been omitted pursuant to a request for confidential treatment, and such material has been filed separately with the SEC. including, without limitation, all patents, patent applications, trademarks, trademark applications, service marks and copyright or mask work registrations; and
(iv) All fees to maintain Seller's rights in the Intellectual Property Assets, including, without limitation, patent and trademark registration and prosecution fees and all professional fees in connection therewith pertaining to the Intellectual Property Assets due and payable on or before the Closing Date, have been paid licensed by Seller or will be paid used by Seller before in the Closing DateBusiness.
(v) Seller has not granted any license, security interest in or otherwise pledged any of the Intellectual Property to any other party.
Appears in 1 contract
Samples: Asset Purchase Agreement
Intellectual Property Assets. (ia) The execution, delivery and performance of this Agreement and Seller has the Related Agreements, and the consummation of the transactions contemplated hereby and thereby, will not breach, violate or conflict with any instrument or agreement governing any Intellectual Property Asset and will not cause the forfeiture or termination or give rise to a right of forfeiture or termination of any such Intellectual Property Asset or in any way impair the right of Purchaser or any of its affiliates to use, sell, license or dispose of, or to bring any action for the infringement of, any such Intellectual Property Asset or portion thereof;
(ii) Neither the development, manufacture, marketing, license, sale or use of any product currently licensed or sold by Seller or, to Seller's knowledge after reasonable investigation with respect to products currently under development, violates or will violate any license or agreement to which Seller is a party or infringes or will infringe any assets or rights of any other party; there is no pending or, to the knowledge of Seller, threatened claim or litigation contesting the validity, ownership or valid right to use, sellor has exclusive ownership of, license the Intellectual Property Assets, free and clear of all Liens and Third Party Claims to use such information. The Intellectual Property Assets compromise all intellectual property used in or dispose necessary to the operation of the Business as currently conducted.
(b) The use of Intellectual Property Assets in the Business does not infringe the intellectual property rights of any Person under any Applicable Law, and during the past three (3) years, no claims have been made by any Person that Seller does not own or have the right to use any Intellectual Property Assets, or that the use of any Intellectual Property Assets by Seller in the conduct and operation of the Business infringes the intellectual property rights of any third party. Seller has not provided source code to or authorized the use of the Intellectual Property Assets to any third party. Seller is not in default and, to the Knowledge of Seller, no third party is in default under any material license, sublicense or agreement by which it holds, or has given to others the right to use, any Intellectual Property Assets. To the Knowledge of Seller, there is no, and, during the past three (3) years, there has not been any, infringement, violation or misappropriation by any Person of the Intellectual Property Assets or necessary Seller’s rights therein or required forthereto.
(c) All former and current employees, or used in, the conduct of the Business consultants and contractors of Seller as presently conducted nor, to who were involved in the knowledge development or creation of Seller, is there any basis for any such claim, nor has Seller received any notice asserting that any such Intellectual Property Asset or the proposed use, sale, license or disposition thereof conflicts or will conflict with the rights of any other party, nor, to the knowledge Assets of Seller after reasonable investigationhave executed written instruments with Seller that assign to Seller all right, is there title and interest in and to any basis for any and all (i) work product created by such assertion; to the knowledge of Selleremployees, after reasonable investigation, there is no infringement on the part of any third party of consultants and contractors and (ii) the Intellectual Property Assets;Assets of Seller.
(iiid) Seller has taken reasonable and practicable steps (including, without limitation, entering into security measures to protect the confidentiality and non-disclosure agreements with all officers and employees of and consultants to Seller with access to or knowledge of Seller's Intellectual Property Assets) to maintain the secrecy and confidentiality of, and its proprietary rights in, the Intellectual Property Assets. Exhibit A attached hereto includes a complete and accurate --------- list value of all applications, filings and other formal actions made trade secrets owned or taken pursuant purported to federal, state, local and foreign laws be owned by the Seller or used or held for use by Seller to perfect or protect its interest in the Intellectual Property Assets, * Material has been omitted pursuant to a request for confidential treatment, and such material has been filed separately with the SEC. including, without limitation, all patents, patent applications, trademarks, trademark applications, service marks and copyright or mask work registrations; and
(iv) All fees to maintain Seller's rights in the Intellectual Property Assets, including, without limitation, patent and trademark registration and prosecution fees and all professional fees in connection therewith pertaining to the Intellectual Property Assets due and payable on or before the Closing Date, have been paid by Seller or will be paid by Seller before the Closing DateBusiness.
(ve) Seller uses commercially reasonable anti-virus software and the Seller Software does not contain any viruses, worms, time bombs, key-locks, or any other devices created that would disrupt or interfere with the operation of the Seller Software, or the integrity of the data, information or signals produced by the Seller Software.
(f) Seller has not granted (i) granted, directly or indirectly, any licensecurrent or contingent rights, security interest licenses or interests in or otherwise pledged to any source code of any of the Intellectual Property Seller Software, or (ii) provided or disclosed any source code of any Seller Software to any other Person, including any escrow agent, and Seller is not otherwise required to do so.
(g) None of the Seller Software was developed with or contains, incorporates, links or calls to, is distributed with, or otherwise uses any Open Source Software in any manner that obligates Seller to (i) disclose or distribute any Seller Software in source code form, (ii) license Seller Software for the purpose of making derivative works, (iii) redistribute Seller Software at no charge, or (iv) otherwise give Seller Software away publicly or for free or in a manner that would result in the loss of any of Seller’s rights in or to such Seller Software or any component thereof to any third party.
(h) The Seller IT Systems have been maintained and are sufficient to operate the Business as currently conducted by Seller, and Seller owns or has valid and enforceable rights to use the Seller IT Systems. Seller has commercially reasonable backup and disaster recovery plans, procedures and facilities for the Business and has taken commercially reasonable steps to safeguard the Seller IT Systems. To the Knowledge of Seller, there have been no unauthorized intrusions or breaches of the security of the Seller IT Systems. There have not been any malfunctions with the Seller IT Systems that have not been remedied or replaced in all material respects, or any material unplanned downtime or material service interruption.
Appears in 1 contract
Samples: Asset Purchase Agreement (Commercial Vehicle Group, Inc.)
Intellectual Property Assets. (a) Section 3.11(a) of the Disclosure Schedules sets forth a complete and accurate list of all Owned Intellectual Property that is material in the conduct of the Companies’ business as currently conducted and contemplated to be conducted as of the date hereof (the “Material Intellectual Property”). The Companies collectively own exclusively, all right, title and interest in and to the Material Intellectual Property, free and clear of any and all Encumbrances, except for Permitted Encumbrances, which Permitted Encumbrances are not material to the operation, function or efficiency of the Companies’ business, or otherwise have a valid and enforceable right to use, assign, convey and transfer all Material Intellectual Property and its subsidiaries have not and are not in violation of any open source license agreements. Neither this Agreement nor the consummation of the transactions contemplated hereby will result, in any manner, in the abandonment, cancellation, loss or impairment of such Material Intellectual Property or the Companies’ rights in or to any Material Intellectual Property. 16 302010047 v18
(b) The activities and operations of the Companies’ business as currently conducted, and the Material Intellectual Property, to the Knowledge of Sellers, have not and do not infringe, violate or misappropriate any rights, including Intellectual Property rights, of any Person. No Seller nor any Company has received any written communication, and no Action has been instituted, settled or, to Sellers’ Knowledge, threatened that alleges any such infringement, violation or misappropriation. None of the Material Intellectual Property is (i) subject to any outstanding Order or any other restrictions, including contractual, affecting the use, assignability or validity of such Material Intellectual Property; or (ii) to Sellers’ Knowledge, no third party is infringing, violating, or otherwise misappropriating any Material Intellectual Property.
(c) Except as set forth in Section 3.11(c) of the Disclosure Schedules, no Company (i) owns any proprietary software or (ii) is a party to any Contract pursuant to which such Company grants rights, interests or authority to any Person with respect to any Owned Intellectual Property or Licensed Intellectual Property.
(d) The Companies collectively maintain reasonable and appropriate (i) data backup, data storage, system redundancy and disaster recovery procedures, (ii) business continuation programs and (iii) administrative, physical and technical security controls for all of their collective computer systems, networks, hardware and infrastructure (collectively, the “IT Assets”) that are intended to safeguard such IT Assets from the risk of business disruption arising from attacks (including virus, worm and denial-of-service attacks), unauthorized activities of any employee, hackers or any other Person. The IT Assets have not suffered any material failure within the past three (3) years, to Seller’s Knowledge, and are reasonably secure against intrusion.
(e) Each Company has taken commercially reasonable measures to protect the confidentiality of the Trade Secrets and any personally identifiable information (e.g., personally identifiable information related to vendor/customer information) included in the Material Intellectual Property.
(f) Except as set forth on Section 3.11(f) of the Disclosure Schedules, each Company has, at all times, to Sellers’ Knowledge, complied in all material respects with applicable privacy and data security Laws and regulations, including internal privacy policies (collectively, “Privacy Laws”) and, the execution, delivery and performance of this Agreement and the Related Agreements, and the consummation of the transactions contemplated hereby and thereby, will not breach, violate or conflict with any instrument or agreement governing any Intellectual Property Asset and will not cause the forfeiture or termination or give rise to a right of forfeiture or termination of any such Intellectual Property Asset or in any way impair the right of Purchaser or any of its affiliates to use, sell, license or dispose of, or to bring any action for the infringement of, any such Intellectual Property Asset or portion thereof;
(ii) Neither the development, manufacture, marketing, license, sale or use of any product currently licensed or sold by Seller or, to Seller's knowledge after reasonable investigation with respect to products currently under development, violates or will violate any license or agreement to which Seller is a party or infringes or will infringe any assets or rights of any other party; there is no pending or, to the knowledge of Seller, threatened claim or litigation contesting the validity, ownership or right to use, sell, license or dispose of any of the Intellectual Property Assets or necessary or required for, or used in, the conduct of the Business of Seller as presently conducted nor, to the knowledge of Seller, is there any basis for any such claim, nor has Seller received any notice asserting that any such Intellectual Property Asset or the proposed use, sale, license or disposition thereof conflicts or will conflict with the rights of any other party, nor, to the knowledge of Seller after reasonable investigation, is there any basis for any such assertion; to the knowledge of Seller, after reasonable investigation, there is no infringement on the part of any third party of the Intellectual Property Assets;
(iii) Seller has taken reasonable and practicable steps (including, without limitation, entering into confidentiality and non-disclosure agreements complies with all officers and employees such Privacy Laws. No Company has, in the prior three (3) years, (a) received a written notice that there has been a material breach or violation of and consultants to Seller with security or unauthorized access to or knowledge unauthorized acquisition, use, loss, destruction, compromise or disclosure of Seller's Intellectual Property Assetsany personal information maintained or stored by or for any Company in violation of applicable Privacy Laws (a “Material Security Breach”); or (b) to maintain the secrecy and confidentiality of, and its proprietary rights in, the Intellectual Property Assets. Exhibit A attached hereto includes received a complete and accurate --------- list of all applications, filings and other formal actions made written notice from any users or taken pursuant to federal, state, local and foreign laws by Seller to perfect or protect its interest in the Intellectual Property Assets, * Material has been omitted pursuant to a request for confidential treatment, and such material has been filed separately with the SEC. including, without limitation, all patents, patent applications, trademarks, trademark applications, service marks and copyright or mask work registrations; and
(iv) All fees to maintain Seller's rights in the Intellectual Property Assets, including, without limitation, patent and trademark registration and prosecution fees and all professional fees in connection therewith pertaining to the Intellectual Property Assets due and payable on or before the Closing Date, have been paid by Seller or will be paid by Seller before the Closing Date.
(v) Seller has not granted any license, security interest in or otherwise pledged any customers of the Intellectual Property to internet websites owned, maintained or operated by or for any other party.Company asserting a Material Security Breach or seeking compensation for breach or violation of a Privacy Law. Section 3.12
Appears in 1 contract
Samples: Securities Purchase Agreement (U.S. Concrete, Inc.)
Intellectual Property Assets. (ia) The executionSet forth on Schedule 3.10(a) is a true, delivery correct and performance complete list of this Agreement all material Intellectual Property of Seller necessary to the Business as presently conducted (the “Intellectual Property Assets”). With respect to patents, registered copyrights, registered marks and applications for any of the foregoing that are included in the Assets, Schedule 3.10(a) sets forth all jurisdictions in which such patents, registrations or applications are issued or pending, the date of issuance, date of filing, jurisdiction, application number, registration number and the Related Agreements, and the consummation of the transactions contemplated hereby and thereby, will not breach, violate or conflict with any instrument or agreement governing any Intellectual Property Asset and will not cause the forfeiture or termination or give rise to a right of forfeiture or termination of any Person that owns such Intellectual Property Asset Property. Seller owns or in any way impair has the right of Purchaser or any of its affiliates to use, sell, license or dispose of, or to bring any action for the infringement of, any such Intellectual Property Asset or portion thereof;
(ii) Neither the development, manufacture, marketing, license, sale or use of any product currently licensed or sold by Seller or, to Seller's knowledge after reasonable investigation with respect to products currently under development, violates or will violate any license or agreement to which Seller is a party or infringes or will infringe any assets or rights of any other party; there is no pending or, to the knowledge of Seller, threatened claim or litigation contesting the validity, ownership or right to use, sell, license or dispose of any of the Intellectual Property Assets or necessary or required for, or used in, in connection with the operation and conduct of the Business of Seller as presently conducted nor, to the knowledge of Seller, is there any basis for any such claim, nor has Seller received any notice asserting that any such Intellectual Property Asset or the proposed use, sale, license or disposition thereof conflicts or will conflict with the rights of any other party, nor, to the knowledge of Seller after reasonable investigation, is there any basis for any such assertion; to the knowledge of Seller, after reasonable investigation, there is no infringement on the part of any third party of conducted. Other than the Intellectual Property Assets;, Seller does not own any other Intellectual Property that is used in the Business or use any other Intellectual Property in connection with the Business, other than validly licensed, off-the-shelf software, the trademarks of its suppliers and immaterial Intellectual Property. No software distributed as free software, open source software or under similar licensing or distribution models is included in the Intellectual Property Assets.
(iiib) Seller has taken reasonable and practicable steps No claim (including, without limitation, entering into confidentiality cease and non-disclosure agreements with all officers desist letters and employees of and consultants offers to license) has been brought or made against Seller with access to (i) alleging that Seller infringes or knowledge of Seller's Intellectual Property Assets) to maintain the secrecy and confidentiality of, and its proprietary rights in, misappropriates the Intellectual Property Assets. Exhibit A attached hereto includes a complete and accurate --------- list of all applicationsanother Person; (ii) challenging the ownership, filings and other formal actions made right to use, enforceability or taken pursuant validity of any Intellectual Property Asset; or (iii) opposing or attempting to federal, state, local and foreign laws by Seller to perfect or protect its interest cancel Seller’s rights in the Intellectual Property Assets, * Material has been omitted pursuant to a request for confidential treatment, and such material has been filed separately with the SEC. Assets (including, without limitation, all patentsany reexamination, patent applicationsopposition, trademarkscancellation, trademark applicationsinterference, service marks and copyright reissue or mask work registrations; and
(iv) All fees other proceeding with respect to maintain Seller's rights any Intellectual Property Asset involving or initiated by any Person other than Seller in the United States Patent and Trademark Office, the United States Copyright Office, or any foreign counterpart to the foregoing). No Action is pending, or to the Knowledge of Seller, threatened, with respect or relating to any Intellectual Property Assets or that includes any allegation that Seller infringes or misappropriates any Intellectual Property of any Person. Without limiting the generality of the foregoing, no Intellectual Property Asset is subject to any outstanding order, judgment, decree or stipulation restricting the use or other exploitation thereof by Seller. Except as set forth in Schedule 3.10(b), to the Knowledge of Seller, no Person is infringing, misappropriating or otherwise violating any Intellectual Property Assets, includingand no Seller is infringing, without limitation, patent and trademark registration and prosecution fees and all professional fees in connection therewith pertaining to the misappropriating or otherwise violating any Intellectual Property Assets due and payable on or before the Closing Date, have been paid by Seller or will be paid by Seller before the Closing Dateof any Person.
(v) Seller has not granted any license, security interest in or otherwise pledged any of the Intellectual Property to any other party.
Appears in 1 contract
