Intellectual Property; Software. (a) Section 3.15(a) of the Company Disclosure Schedule (i) sets forth a complete and accurate list of (x) all Registered Intellectual Property, and (y) all material Software products owned by the Company or any of its Subsidiaries, and material trademarks of the Company or any of its Subsidiaries, and (ii) specifies, where applicable, the jurisdictions in which each item of such Registered Intellectual Property has been issued or registered or in which an application for such issuance and registration has been filed, including the respective registration or application numbers and the names of all registered owners. Section 3.15(a) of the Company Disclosure Schedule lists any proceedings or actions before any court, tribunal (including the United States Patent and Trademark Office) related to any of the Registered Intellectual Property. The Company and its Subsidiaries have complied in all material respects with all applicable disclosure requirements and have not committed any fraudulent act in the application for and maintenance of any Intellectual Property of the Company and its Subsidiaries. Each item of Registered Intellectual Property, excluding any Registered Intellectual Property that is the subject of any application or other preliminary submission, is valid, subsisting and enforceable. All necessary registration, maintenance and renewal fees in connection with such Registered Intellectual Property have been paid and all necessary documents and certificates in connection with such Registered Intellectual Property have been filed with the relevant patent, copyright, trademark or other authorities for the purposes of maintaining such Registered Intellectual Property. (b) Except as set forth on Section 3.15(b) of the Company Disclosure Schedule: (i) the Company and its Subsidiaries own and have good and exclusive title to each item of the Company-Owned Intellectual Property, including all Registered Intellectual Property, free and clear of any Encumbrance, and have the valid and enforceable right to use, transfer, license and encumber all such Registered Intellectual Property (excluding any Registered Intellectual Property that is the subject of any application or other preliminary submission); (ii) the Company and its Subsidiaries own or have the right to use or operate under all of the Company Intellectual Property; (iii) to the Knowledge of the Company, the Company Intellectual Property constitutes all of the Intellectual Property necessary to the operation and conduct of the business as conducted as of the date of this Agreement; and (iv) no Person has any rights to use any of the Company-Owned Intellectual Property except in the Ordinary Course of Business, nor has the Company or any of its Subsidiaries granted to any Person or authorized any Person to retain any ownership rights in the Company-Owned Intellectual Property. Except as set forth on Section 3.15(b) of the Company Disclosure Schedule, to the extent that any work, invention or Intellectual Property has been developed or created by an employee or a third party for the Company or any of its Subsidiaries, the Company and/or a Subsidiary has a written agreement with such employee or third party with respect thereto and thereby has obtained ownership of, and is the exclusive owner of, all Intellectual Property in such work, material or invention by operation of law or by valid assignment. (c) The contracts, licenses, sublicenses and agreements listed on Section 3.15(c) of the Company Disclosure Schedule include all material contracts, licenses, sublicenses and agreements with respect to any of the Company Intellectual Property (excluding any commercial off-the-shelf software) (“IP Licenses”). All of the IP Licenses are in full force and effect. Neither the execution nor delivery of this Agreement nor the consummation of the transactions contemplated hereby will violate or result in the breach, modification, cancellation, termination, or suspension of any of the IP Licenses without the payment of additional amounts other than ongoing fees, except for any such breach, modification, cancellation, termination, or suspension, which would not reasonably be expected to have a Company Material Adverse Effect. Except as listed on Section 3.15(c) of the Company Disclosure Schedule, there are no contracts, licenses, sublicenses or agreements between the Company or any of its Subsidiaries and any other Person with respect to the Company Intellectual Property under which there is any dispute Known to the Company regarding the scope of any such agreement, or performance under such contract, license, sublicense or agreement, including with respect to any payments to be made or received by the Company or any of its Subsidiaries thereunder. (d) Except as set forth in Section 3.15(d) of the Company Disclosure Schedule, to the Knowledge of the Company, no Person has or is infringing, misappropriating or violating any material Company-Owned Intellectual Property. (e) Except as set forth in Section 3.15(e) of the Company Disclosure Schedule, (i) the operation of the business of the Company and its Subsidiaries has not and does not infringe (directly, contributorily, by inducement, or otherwise), misappropriate or violate the Intellectual Property of any Person issued, granted or otherwise protected under the laws of the United States or Canada and has not and does not constitute unfair competition or trade practices under the Laws of the United States or Canada or any state, province or local jurisdiction therein, and (ii) to the Knowledge of the Company, the operation of the business of the Company and its Subsidiaries has not and does not infringe (directly, contributorily, by inducement, or otherwise), misappropriate or violate the Intellectual Property of any Person issued, granted or otherwise protected under the laws of any jurisdiction outside of the United States and Canada and has not and does not constitute unfair competition or trade practices under the laws of any jurisdiction outside of the United States and Canada. Except as set forth in Section 3.15(e) of the Company Disclosure Schedule, no claims with respect to any of the Company Intellectual Property have been asserted or, to the Knowledge of the Company, threatened by any Person. (f) No Company-Owned Intellectual Property, or product or Software of the Company produced using or embodying the Company-Owned Intellectual Property, is subject to any proceedings or outstanding Order or stipulation restricting in any material manner the sale, use or licensing thereof by the Company or any of its Subsidiaries, or which materially affect the validity, use or enforceability of such Company-Owned Intellectual Property. (g) The Company and its Subsidiaries have taken all material steps that are reasonably required or necessary to protect its rights in the Company’s and its Subsidiaries’ material confidential information and trade secrets, and any material confidential information or trade secrets of third parties provided to it related thereto. The Company and its Subsidiaries have enforced a policy requiring each employee and contractor to execute proprietary information and confidentiality agreements substantially in their standard forms, and all current employees and contractors of the Company and its Subsidiaries have executed such an agreement. (h) Except as set forth in Section 3.15(h) of the Company Disclosure Schedule, neither this Agreement nor the transactions contemplated by this Agreement will result in (i) the Surviving Entity or its Subsidiaries granting to any Person any right to or with respect to any Company Intellectual Property, or (ii) the Surviving Entity or any of its Subsidiaries being obligated to pay any royalties or other amounts to any Person in excess of those payable by the Company and its Subsidiaries prior to the Closing. The consummation of the transactions contemplated by this Agreement will not result in the loss of, or otherwise adversely affect, any ownership rights of the Company and its Subsidiaries in any Company-Owned Intellectual Property. (i) The Company and its Subsidiaries have secured any export licenses that are necessary or appropriate for the current distribution of any of the Company’s and its Subsidiaries’ products and Software outside the United States. (j) Except as set forth in Section 3.15(j) of the Company Disclosure Schedule, no open source, public source or freeware software, code or other technology, or any modification or derivative thereof, including any version of any software licensed pursuant to any GNU general public license or limited general public license, was or is, used in, incorporated into, integrated or bundled with, or used in the development or compilation (other than generally available commercial compilers) of, any Software. With the sole exception of Open SSL, all open source, public source or freeware software, code and technology set forth in Section 3.15(j) of the Company Disclosure Schedule (i) is only used internally by the Company and its Subsidiaries and solely for internal purposes; (ii) except as set forth on Section 3.15(j) of the Company Disclosure Schedule, has not been incorporated into or combined with any Software; and (iii) is not licensed or otherwise provided or distributed to any Person. To the extent any open source, public source or freeware software, code or technology is incorporated into or combined with any Software, to the Knowledge of the Company, there are alternatives for such software, code or technology that are readily available. (k) The Company has exercised commercially reasonable efforts to ensure that all source code for all Software contains clear and accurate annotations and programmer’s comments, and otherwise has been documented in a professional manner that is both: (i) consistent with customary code annotation conventions; and (ii) sufficient to independently enable a programmer of reasonable skill and competence to understand, analyze, and interpret program logic, correct errors and improve, enhance, modify and support the Software. Except as set forth in Section 3.15(k) of the Company Disclosure Schedule, (i) none of the source code of the Software has been published or disclosed or licensed or made available to any Person other than employees of the Company or one of its Subsidiaries subject to confidentiality obligations, and (ii) no licenses or rights have been granted to any Person to distribute or to otherwise use or create derivative works from the source code for any Software. Neither the Company nor any of its Subsidiaries has any duty or obligation (whether present, contingent, or otherwise) to deliver, license, or make available the source code for any Company product or Software to any escrow agent or other Person except as set forth in Section 3.15(k) of the Company Disclosure Schedule.
Appears in 2 contracts
Samples: Merger Agreement (Emdeon Inc.), Merger Agreement (Emdeon Inc.)
Intellectual Property; Software. (a) Except as set forth on Section 3.15(a) 3.14 of the Company Parent Disclosure Schedule (i) sets forth a complete Schedule, the Parent and accurate list of (x) all Registered Intellectual Propertyits subsidiaries are the sole and exclusive owners of, and (y) or possess adequate licenses or other valid rights to use, all material Software products owned by patents, patent applications, patent rights, trademarks, trademark rights, trade names, trade name rights, copyrights, service marks, trade secrets, registrations for and applications for registration of trademarks, service marks and copyrights, technology and know-how, rights in computer software and other proprietary rights and information and all technical and user manuals and documentation made or used in connection with any of the Company foregoing, used or held for use in connection with the businesses of the Parent or any of its Subsidiariessubsidiaries as currently conducted (collectively, the "Parent Intellectual Property"), free and material trademarks clear of all Liens except as set forth on Section 3.14 of the Company or any Parent Disclosure Schedule and except minor imperfections of its Subsidiariestitle and encumbrances, and (ii) specifiesif any, where applicablewhich are not substantial in amount, do not materially detract from the jurisdictions in which each item value of such Registered the Parent Intellectual Property has been issued or registered or in which an application for such issuance subject thereto and registration has been filed, including do not impair the respective registration or application numbers and the names operations of all registered owners. Section 3.15(a) of the Company Disclosure Schedule lists any proceedings or actions before any court, tribunal (including the United States Patent and Trademark Office) related to any of the Registered Intellectual Property. The Company Parent and its Subsidiaries have complied in all material respects with all applicable disclosure requirements and have not committed any fraudulent act in the application for and maintenance of any Intellectual Property subsidiaries. Section 3.14 of the Company Parent Disclosure Schedule sets forth a true and its Subsidiaries. Each item complete list of Registered Intellectual Property, excluding any Registered Intellectual Property that is the subject of any application or other preliminary submission, is valid, subsisting and enforceable. All necessary registration, maintenance and renewal fees in connection with such Registered Intellectual Property have been paid and all necessary documents and certificates in connection with such Registered Intellectual Property have been filed with the relevant patent, copyright, trademark or other authorities for the purposes of maintaining such Registered Parent Intellectual Property.
(b) Except as set forth on Section 3.15(b) All grants, registrations and applications for Parent Intellectual Property that are used in and are material to the conduct of the Company Disclosure Schedule: Parent's business (i) the Company are valid, subsisting, in proper form and its Subsidiaries own and have good and exclusive title to each item of the Company-Owned Intellectual Property, including all Registered Intellectual Property, free and clear of any Encumbranceenforceable, and have been duly maintained, including the valid submission of all necessary filings and enforceable right to usefees in accordance with the legal and administrative requirements of the appropriate jurisdictions and (ii) have not lapsed, transferexpired or been abandoned, and no grant, registration or license and encumber all such Registered Intellectual Property (excluding any Registered Intellectual Property that therefor is the subject of any application legal or other preliminary submission); (ii) the Company and its Subsidiaries own or have the right to use or operate under all of the Company Intellectual Property; (iii) to the Knowledge of the Company, the Company Intellectual Property constitutes all of the Intellectual Property necessary to the operation and conduct of the business as conducted as of the date of this Agreement; and (iv) no Person has governmental proceeding before any rights to use registration authority in any of the Company-Owned Intellectual Property except in the Ordinary Course of Business, nor has the Company or any of its Subsidiaries granted to any Person or authorized any Person to retain any ownership rights in the Company-Owned Intellectual Property. Except as set forth on Section 3.15(b) of the Company Disclosure Schedule, to the extent that any work, invention or Intellectual Property has been developed or created by an employee or a third party for the Company or any of its Subsidiaries, the Company and/or a Subsidiary has a written agreement with such employee or third party with respect thereto and thereby has obtained ownership of, and is the exclusive owner of, all Intellectual Property in such work, material or invention by operation of law or by valid assignmentjurisdiction.
(c) The contracts, licenses, sublicenses and agreements listed on Section 3.15(c) To the knowledge of the Company Disclosure Schedule include all material contracts, licenses, sublicenses and agreements with respect to any of the Company Intellectual Property (excluding any commercial off-the-shelf software) (“IP Licenses”). All of the IP Licenses are in full force and effect. Neither the execution nor delivery of this Agreement nor the consummation of the transactions contemplated hereby will violate or result in the breach, modification, cancellation, termination, or suspension of any of the IP Licenses without the payment of additional amounts other than ongoing fees, except for any such breach, modification, cancellation, termination, or suspension, which would not reasonably be expected to have a Company Material Adverse Effect. Except as listed on Section 3.15(c) of the Company Disclosure ScheduleParent, there are no contractsconflicts with or infringements of any Parent Intellectual Property by any third party. The conduct of the businesses of the Parent and its Subsidiaries as currently conducted does not conflict with or infringe in any way any proprietary right of any third party, licenseswhich conflict or infringement would have a Material Adverse Effect on Parent, sublicenses and there is no claim, suit, action or agreements between proceeding pending or, to the Company knowledge of the Parent, threatened against the Parent or any of its Subsidiaries and any other Person with respect to the Company Intellectual Property under which there is any dispute Known to the Company regarding the scope of any such agreement, or performance under such contract, license, sublicense or agreement, including with respect to any payments to be made or received by the Company or any of its Subsidiaries thereunder.
(d) Except as set forth in Section 3.15(d) of the Company Disclosure Schedule, to the Knowledge of the Company, no Person has or is infringing, misappropriating or violating any material Company-Owned Intellectual Property.
(e) Except as set forth in Section 3.15(e) of the Company Disclosure Schedule, subsidiaries (i) the operation of the business of the Company and its Subsidiaries has not and does not infringe (directly, contributorily, by inducement, alleging any such conflict or otherwise), misappropriate or violate the Intellectual Property of infringement with any Person issued, granted or otherwise protected under the laws of the United States or Canada and has not and does not constitute unfair competition or trade practices under the Laws of the United States or Canada or any state, province or local jurisdiction therein, and (ii) to the Knowledge of the Company, the operation of the business of the Company and its Subsidiaries has not and does not infringe (directly, contributorily, by inducement, or otherwise), misappropriate or violate the Intellectual Property of any Person issued, granted or otherwise protected under the laws of any jurisdiction outside of the United States and Canada and has not and does not constitute unfair competition or trade practices under the laws of any jurisdiction outside of the United States and Canada. Except as set forth in Section 3.15(e) of the Company Disclosure Schedule, no claims with respect to any of the Company Intellectual Property have been asserted or, to the Knowledge of the Company, threatened by any Person.
(f) No Company-Owned Intellectual Property, or product or Software of the Company produced using or embodying the Company-Owned Intellectual Property, is subject to any proceedings or outstanding Order or stipulation restricting in any material manner the sale, use or licensing thereof by the Company or any of its Subsidiaries, or which materially affect the validity, use or enforceability of such Company-Owned Intellectual Property.
(g) The Company and its Subsidiaries have taken all material steps that are reasonably required or necessary to protect its rights in the Company’s and its Subsidiaries’ material confidential information and trade secrets, and any material confidential information or trade secrets of third parties provided to it related thereto. The Company and its Subsidiaries have enforced a policy requiring each employee and contractor to execute party's proprietary information and confidentiality agreements substantially in their standard forms, and all current employees and contractors of the Company and its Subsidiaries have executed such an agreement.
(h) Except as set forth in Section 3.15(h) of the Company Disclosure Schedule, neither this Agreement nor the transactions contemplated by this Agreement will result in (i) the Surviving Entity or its Subsidiaries granting to any Person any right to or with respect to any Company Intellectual Propertyrights, or (ii) challenging the Surviving Entity ownership, use, validity or any of its Subsidiaries being obligated to pay any royalties or other amounts to any Person in excess of those payable by the Company and its Subsidiaries prior to the Closing. The consummation enforceability of the transactions contemplated by this Agreement will not result in the loss of, or otherwise adversely affect, any ownership rights of the Company and its Subsidiaries in any Company-Owned Parent Intellectual Property.
(i) The Company and its Subsidiaries have secured any export licenses that are necessary or appropriate for the current distribution of any of the Company’s and its Subsidiaries’ products and Software outside the United States.
(j) Except as set forth in Section 3.15(j) of the Company Disclosure Schedule, no open source, public source or freeware software, code or other technology, or any modification or derivative thereof, including any version of any software licensed pursuant to any GNU general public license or limited general public license, was or is, used in, incorporated into, integrated or bundled with, or used in the development or compilation (other than generally available commercial compilers) of, any Software. With the sole exception of Open SSL, all open source, public source or freeware software, code and technology set forth in Section 3.15(j) of the Company Disclosure Schedule (i) is only used internally by the Company and its Subsidiaries and solely for internal purposes; (ii) except as set forth on Section 3.15(j) of the Company Disclosure Schedule, has not been incorporated into or combined with any Software; and (iii) is not licensed or otherwise provided or distributed to any Person. To the extent any open source, public source or freeware software, code or technology is incorporated into or combined with any Software, to the Knowledge of the Company, there are alternatives for such software, code or technology that are readily available.
(k) The Company has exercised commercially reasonable efforts to ensure that all source code for all Software contains clear and accurate annotations and programmer’s comments, and otherwise has been documented in a professional manner that is both: (i) consistent with customary code annotation conventions; and (ii) sufficient to independently enable a programmer of reasonable skill and competence to understand, analyze, and interpret program logic, correct errors and improve, enhance, modify and support the Software. Except as set forth in Section 3.15(k) of the Company Disclosure Schedule, (i) none of the source code of the Software has been published or disclosed or licensed or made available to any Person other than employees of the Company or one of its Subsidiaries subject to confidentiality obligations, and (ii) no licenses or rights have been granted to any Person to distribute or to otherwise use or create derivative works from the source code for any Software. Neither the Company nor any of its Subsidiaries has any duty or obligation (whether present, contingent, or otherwise) to deliver, license, or make available the source code for any Company product or Software to any escrow agent or other Person except as set forth in Section 3.15(k) of the Company Disclosure Schedule.
Appears in 1 contract
Intellectual Property; Software. (a) Section 3.15(aSchedule 2.19(a) of the Company Disclosure Schedule (i) sets forth a complete lists all material trademarks, trade names, service marks, service names, brand names, copyrights and accurate list of (x) all Registered Intellectual Propertypatents, and (y) all material Software products registrations thereof and applications therefor, owned by the Company or any of its SubsidiariesSubsidiaries (collectively, the "Company Marks and Intellectual Properties"). All Company Marks and Intellectual Properties are owned by, and material trademarks of may be used by, the Company or the appropriate Subsidiary free and clear of any of its Subsidiariesthird party rights or other Liens, and (ii) specifies, where applicable, the jurisdictions in which each item of such Registered Intellectual Property has been issued or registered or in which an application except for such issuance and registration has been filed, including the respective registration or application numbers and the names of all registered owners. Section 3.15(a) of the Company Disclosure Schedule lists any proceedings or actions before any court, tribunal (including the United States Patent and Trademark Office) related license rights granted to any of the Registered Intellectual Property. The Company and its Subsidiaries have complied in all material respects with all applicable disclosure requirements and have not committed any fraudulent act third parties in the application for and maintenance ordinary course of any Intellectual Property business of the Company and its Subsidiaries. Each item Except as disclosed on Schedule 2.19(a), all patents owned by the Company and all public office registrations and deposits of Registered Intellectual PropertyCompany trademarks, excluding any Registered Intellectual Property that is the service marks and copyrights are valid and not subject to revocation or termination on account of any application misrepresentation, concealment or failure to disclose pertinent information by Company in obtaining such patents and registrations nor of account of any subsequent act, conduct, or failure to act by the Company, including but not limited to failure to make timely payment of maintenance or other preliminary submissionrequired fees or annuities, is validor to timely file affidavits of use, subsisting and enforceable. All necessary registrationrenewals, maintenance and renewal fees in connection with such Registered Intellectual Property have been paid and all necessary documents and certificates in connection with such Registered Intellectual Property have been filed with the relevant patent, copyright, trademark or other authorities for the purposes of maintaining documents necessary to keep such Registered Intellectual Property.
(b) Except as set forth on Section 3.15(b) of the patents and registrations in force. The Company Disclosure Schedule: has not received any notice or claim from any person either (i) challenging or questioning the Company validity or enforceability of any of the Company's patents, copyrights, or rights in its trademarks and service marks, or (ii) asserting that any other person has any claim or interest therein. Except as disclosed on Schedule 2.19(a), upon consummation of the Merger, the Surviving Corporation and its Subsidiaries own and have good and exclusive title will continue to each item of the Company-Owned Intellectual Property, including all Registered Intellectual Property, free and clear of any Encumbrance, and have the valid and enforceable right to use, transfer, license and encumber all such Registered Intellectual Property (excluding any Registered Intellectual Property that is the subject of any application or other preliminary submission); (ii) the Company and its Subsidiaries own or have the right to use or operate under all of the Company Intellectual Property; (iii) to the Knowledge of the Company, the Company Intellectual Property constitutes all of the Marks and Intellectual Property necessary to conduct their respective businesses (other than any such right of ownership or use, the operation and conduct absence of which would not have a Company Material Adverse Effect).
(b) Schedule 2.19(b)(i) lists all material trademarks, trade names, service marks, service names, brand names, copyright, patent, trade secret, know-how or other intangible right of any third party for which the business as conducted as Company or one of its Subsidiaries is a licensee, lessee or otherwise has obtained from a third party the date of this Agreement; and (iv) no Person has any rights right to use, market, distribute, sublicense or otherwise transfer the right to use ("Other Party Marks and Intellectual Property"). Except as set forth on Schedule 2.19(b)(ii), neither the Company nor any of the Company-Owned Intellectual Property except in the Ordinary Course of Businessits Subsidiaries has received since January 1, nor has 1999 any notice or claim asserting that the Company or any of its Subsidiaries granted to any Person or authorized any Person to retain any ownership is violating the rights in the Company-Owned any Other Party Marks and Intellectual Property. Except as set forth on Section 3.15(b) of the Company Disclosure Schedule, to the extent that any work, invention or Intellectual Property has been developed or created by an employee or a third party for the Company or any of its Subsidiaries, the Company and/or a Subsidiary has a written agreement with such employee or third party with respect thereto and thereby has obtained ownership of, and is the exclusive owner of, all Intellectual Property in such work, material or invention by operation of law or by valid assignment.
(c) The contracts, licenses, sublicenses and agreements listed on Section 3.15(c) of the Company Disclosure Schedule include all material contracts, licenses, sublicenses and agreements with respect to any of the Company Intellectual Property (excluding any commercial off-the-shelf software) (“IP Licenses”). All of the IP Licenses are in full force and effect. Neither the execution nor delivery of this Agreement nor the consummation of the transactions contemplated hereby will violate or result in the breach, modification, cancellation, termination, or suspension of any of the IP Licenses without the payment of additional amounts other than ongoing fees, except for any where such breach, modification, cancellation, termination, or suspension, which violation would not reasonably be expected to have a Company Material Adverse Effect. Except as listed set forth on Section 3.15(cSchedule 2.19(b)(iii), neither the Company nor any of its Subsidiaries is party to any pending or, to the knowledge of the Company, threatened (and unresolved) action or proceeding (either as plaintiff, defendant, claimant, respondent or any other capacity) involving the use of any Other Party Marks and Intellectual Property or a claim of infringement or other wrongful use or exploitation of patent rights, copyrights, or rights in trade names, trademarks or service marks, or claim of misappropriation, breach of confidential relationship, or misuse of secret or confidential trade or technical information, or claim of passing off or other form of wrongful competition.
(c) Schedule 2.19(c)(i) lists all material software (other than off-the-shelf or otherwise readily commercially available software) owned by the Company or its Subsidiaries (the "Company Owned Software"). Except as set forth on Schedule 2.19(c)(ii), the Company or one of its Subsidiaries has sole title to the Company Owned Software, free of all claims including claims or rights of employees, independent contractors, agents, consultants or other parties involved in the development, creation, marketing, maintenance, enhancement or licensing of such Software; (ii) the Company Owned Software does not contain any Licensed Software (as hereinafter defined) or any other software (other than third party operating systems), or derivatives of any of the foregoing; and (iii) the Company has the right to use, market, distribute, sublicense, modify and copy the Company Owned Software, free and clear of any limitations or encumbrances (including any obligations to pay royalties). Schedule 2.19(c) also lists all the licensees of the Company Disclosure ScheduleOwned Software. To the knowledge of the Company, there are neither the Company nor any of its Subsidiaries is infringing any Other Party Marks and Intellectual Property with respect to the Company Owned Software, and, to the best knowledge of the Company, no contracts, licenses, sublicenses or agreements between other person is infringing any rights of the Company or any of its Subsidiaries and any other Person with respect to the Company Intellectual Property under which there is any dispute Known to the Company regarding the scope of any such agreement, or performance under such contract, license, sublicense or agreement, including with respect to any payments to be made or received by the Company or any of its Subsidiaries thereunder.
(d) Except as set forth in Section 3.15(d) of the Company Disclosure Schedule, to the Knowledge of the Company, no Person has or is infringing, misappropriating or violating any material Company-Owned Intellectual Property.
(e) Except as set forth in Section 3.15(e) of the Company Disclosure Schedule, (i) the operation of the business of the Company and its Subsidiaries has not and does not infringe (directly, contributorily, by inducement, or otherwise), misappropriate or violate the Intellectual Property of any Person issued, granted or otherwise protected under the laws of the United States or Canada and has not and does not constitute unfair competition or trade practices under the Laws of the United States or Canada or any state, province or local jurisdiction therein, and (ii) to the Knowledge of the Company, the operation of the business of the Company and its Subsidiaries has not and does not infringe (directly, contributorily, by inducement, or otherwise), misappropriate or violate the Intellectual Property of any Person issued, granted or otherwise protected under the laws of any jurisdiction outside of the United States and Canada and has not and does not constitute unfair competition or trade practices under the laws of any jurisdiction outside of the United States and Canada. Except as set forth in Section 3.15(e) of the Company Disclosure Schedule, no claims with respect to any of the Company Intellectual Property have been asserted or, to the Knowledge of the Company, threatened by any Person.
(f) No Company-Owned Intellectual Property, or product or Software of the Company produced using or embodying the Company-Owned Intellectual Property, is subject to any proceedings or outstanding Order or stipulation restricting in any material manner the sale, use or licensing thereof by the Company or any of its Subsidiaries, or which materially affect the validity, use or enforceability of such Company-Owned Intellectual Property.
(g) The Company and its Subsidiaries have taken all material steps that are reasonably required or necessary to protect its rights in the Company’s and its Subsidiaries’ material confidential information and trade secrets, and any material confidential information or trade secrets of third parties provided to it related thereto. The Company and its Subsidiaries have enforced a policy requiring each employee and contractor to execute proprietary information and confidentiality agreements substantially in their standard forms, and all current employees and contractors of the Company and its Subsidiaries have executed such an agreement.
(h) Except as set forth in Section 3.15(h) of the Company Disclosure Schedule, neither this Agreement nor the transactions contemplated by this Agreement will result in (i) the Surviving Entity or its Subsidiaries granting to any Person any right to or with respect to any Company Intellectual Property, or (ii) the Surviving Entity or any of its Subsidiaries being obligated to pay any royalties or other amounts to any Person in excess of those payable by the Company and its Subsidiaries prior to the Closing. The consummation of the transactions contemplated by this Agreement will not result in the loss of, or otherwise adversely affect, any ownership rights of the Company and its Subsidiaries in any Company-Owned Intellectual Property.
(i) The Company and its Subsidiaries have secured any export licenses that are necessary or appropriate for the current distribution of any of the Company’s and its Subsidiaries’ products and Software outside the United States.
(j) Except as set forth in Section 3.15(j) of the Company Disclosure Schedule, no open source, public source or freeware software, code or other technology, or any modification or derivative thereof, including any version of any software licensed pursuant to any GNU general public license or limited general public license, was or is, used in, incorporated into, integrated or bundled with, or used in the development or compilation (other than generally available commercial compilers) of, any Software. With the sole exception of Open SSL, all open source, public source or freeware software, code and technology set forth in Section 3.15(j) of the Company Disclosure Schedule (i) is only used internally by the Company and its Subsidiaries and solely for internal purposes; (ii) except as set forth on Section 3.15(j) of the Company Disclosure Schedule, has not been incorporated into or combined with any Software; and (iii) is not licensed or otherwise provided or distributed to any Person. To the extent any open source, public source or freeware software, code or technology is incorporated into or combined with any Software, to the Knowledge of the Company, there are alternatives for such software, code or technology that are readily available.
(k) The Company has exercised commercially reasonable efforts to ensure that all source code for all Software contains clear and accurate annotations and programmer’s comments, and otherwise has been documented in a professional manner that is both: (i) consistent with customary code annotation conventions; and (ii) sufficient to independently enable a programmer of reasonable skill and competence to understand, analyze, and interpret program logic, correct errors and improve, enhance, modify and support the Software. Except as set forth in Section 3.15(k) of the Company Disclosure Schedule, (i) none of the source code of the Software has been published or disclosed or licensed or made available to any Person other than employees of the Company or one of its Subsidiaries subject to confidentiality obligations, and (ii) no licenses or rights have been granted to any Person to distribute or to otherwise use or create derivative works from the source code for any Software. Neither the Company nor any of its Subsidiaries has received since January 1, 1999 any duty notice that it is infringing any Other Party Marks and Intellectual Property with respect to the Company Owned Software.
(d) Schedule 2.19(d)(i) lists all material software (other than off-the-shelf or obligation otherwise readily commercially available software) for which the Company or one of its Subsidiaries is a licensee, lessee or otherwise has obtained from a third party the right to use, market, distribute, sublicense or otherwise transfer the right to use such software (whether present, contingent, or otherwise) to deliver, license, or make available the source code for any "Company product or Software to any escrow agent or other Person except Licensed Software"). Except as set forth on Schedule 2.19(d)(ii), the Company and its Subsidiaries have complied with all material provisions of the license, lease or other similar agreement pursuant to which they have rights to use the Company Licensed Software, except where non-compliance would not have a Company Material Adverse Effect.
(e) To the knowledge of the Company, the transactions contemplated hereby will not cause a breach of, default under or otherwise trigger a right to terminate any license agreement by which the Company or one of its Subsidiaries licenses any Company Licensed Software or Company Owned Software or impair the Company's or the relevant Subsidiaries' ability to use the Company Licensed Software or license the Company Owned Software in Section 3.15(k) the same manner as such Software is currently used or licensed in the business of the Company Disclosure Scheduleand its Subsidiaries, except where such breach, default or right would not have a Company Material Adverse Effect.
(f) The Company or one of its Subsidiaries and, to the knowledge of the Company, the other parties to any contract under which the Company or such subsidiaries is the licensor, lessor or has otherwise granted the rights to use any Company Owned Software are in compliance therewith and are not in breach of their obligations with respect thereto, except where non-compliance or breach would not have a Company Material Adverse Effect.
(g) To the knowledge of the Company, there are no viruses in the Company Owned Software and there are no defects in the Company Owned Software that would prevent such software from performing in all material respects the tasks and functions that it was intended to perform except those that can be cured or otherwise corrected without a Company Material Adverse Effect.
(h) Since December 27, 2001, no third party has notified the Company or any of its Subsidiaries or, to the knowledge of the Company, claimed that any person employed by or otherwise affiliated with the Company or any of its Subsidiaries has, in respect of his or her activities to date, violated any of the terms or conditions of his or her employment contract with any third party, or disclosed or utilized any trade secrets or proprietary information or documentation of any third party, or interfered in the employment relationship between any third party and any of its employees, and to the knowledge of the Company, no person employed by or otherwise affiliated with the Company or any of its Subsidiaries has wrongfully employed any trade secrets or any information or documentation proprietary to any former employer, or violated any confidential relationship which such person may have had with any third party, in connection with the development or sale of any products of the Company or any of its Subsidiaries.
(i) Except as set forth on Schedule 2.19(i), to the knowledge of the Company, it is not utilizing nor will it be necessary to utilize (A) any inventions of any independent contractors or consultants, or confidential information (including trade secrets) of another person to which any independent contractors or consultants have been exposed, and (B) any inventions of any employees of the Company (or persons the Company currently intends to hire) made, or any confidential information (including trade secrets) of another person to which such employees were exposed, prior to their employment by the Company.
(j) To the knowledge of the Company, neither the Company nor any of its Subsidiaries has exported or transmitted software, Company trade secrets or any other technical information, including any technical data, or the direct product of such data, to any country to which such export or transmission is restricted by any applicable regulation or statute of the United States or any other Governmental Entity, without first having obtained all necessary and appropriate license(s) or permit(s) from the United States or such other Governmental Entity.
Appears in 1 contract
Intellectual Property; Software. (a) Section 3.15(a2.15(a) of the Company Disclosure Schedule (i) sets forth forth, for the Company-Owned Intellectual Property, a complete and accurate list of all domestic and foreign federal, state and/or provincial: (xi) all Registered Intellectual Propertyissued Patents and Patent applications; (ii) Trademark registrations, and (y) all material Software products owned by the Company or any of its Subsidiariesapplications for registration, and material trademarks of the Company or any of its Subsidiaries, unregistered Trademarks; (iii) registered Copyrights and material unregistered Copyrights; and (iiiv) specifiesDomain Names, where applicablein each case listing the title and current owner, the jurisdictions jurisdiction in which each item of such Registered Intellectual Property has been issued or registered or in which an application for such issuance and registration has been filed, including the respective registration or application numbers and the names of all registered ownersapplication, serial or registration number. All Company-Owned Intellectual Property identified on Section 3.15(a2.15(a) of the Company Disclosure Schedule lists Schedule: (1) is in full force and effect; (2) has not lapsed, expired or been abandoned or withdrawn; and (3) is not the subject of any proceedings Proceeding, action or actions before opposition filed with the United States Patent and Trademark Office or any court, tribunal other intellectual property registry or Governmental Authority anywhere in the world. The Company and its Subsidiaries have taken sufficient measures to perfect the chain of title recorded with the applicable Governmental Authority (including the United States Patent and Trademark Office) related with respect to any each such item of the Registered registered Company-Owned Intellectual Property. The , including recording any assignment of any Company-Owned Intellectual Property assigned to the Company and its Subsidiaries have complied with the relevant Governmental Authority in all material respects accordance with all applicable disclosure requirements laws and have not committed any fraudulent act regulations in the application for and maintenance of any Intellectual Property each jurisdiction in which such assignment is required to recorded. Except as set forth on Section 2.15(a) of the Company and its Subsidiaries. Each item Disclosure Schedule, no actions will be necessary (including filing of Registered Intellectual Propertydocuments or payment of fees), excluding any Registered Intellectual Property that is within 90 days after the subject Closing Date to maintain or preserve the validity, scope, or status of any application registered or other preliminary submission, is valid, subsisting and enforceable. All necessary registration, maintenance and renewal fees in connection with such Registered Intellectual Property have been paid and all necessary documents and certificates in connection with such Registered Intellectual Property have been filed with the relevant patent, copyright, trademark or other authorities applied for the purposes of maintaining such Registered Company-Owned Intellectual Property.
(b) Except as set forth on Section 3.15(b) of the Company Disclosure Schedule: (i) the The Company and its Subsidiaries (i) exclusively own and have good possess all right, title and exclusive title interest in and to each item of the all Company-Owned Intellectual Property, including all Registered Intellectual Property, free and clear of any Encumbranceall Encumbrances other than Permitted Encumbrances, and have the valid and enforceable right to use, transfer, license and encumber all such Registered Intellectual Property (excluding any Registered Intellectual Property that is the subject of any application or other preliminary submission); (ii) the Company and its Subsidiaries own or have the right to use or operate under pursuant to a valid and enforceable written agreement free and clear of all Encumbrances other than Permitted Encumbrances, all other Company Intellectual Property, as necessary for the conduct of the business as currently conducted and as proposed to be conducted. The Company Intellectual Property and the Company’s and its Subsidiaries’ rights to the Company Intellectual Property; (iii) Property are valid, enforceable and subsisting and are not subject to the Knowledge of any outstanding Order, Company Contract or Proceeding adversely affecting the Company, the ’s and its Subsidiaries’ use thereof or rights thereto. The Company Intellectual Property constitutes all of the Intellectual Property necessary to the operation and conduct of the Company’s and its Subsidiaries’ business as conducted as currently conducted.
(c) For purposes of this Section 2.15(c) all Persons, including current or former employees, independent contractors and consultants of the date Company or any Subsidiary of this Agreementthe Company, that either alone or in concert with others have contributed to the invention, development, programming, design, enhancement, implementation or modification of Company-Owned Intellectual Property in any material manner are “Contributing Persons.” Each Contributing Person either (i) has been party to a “work-for-hire” arrangement or agreement with the Company or Subsidiary of the Company, whether in accordance with applicable federal and state law, domestic or foreign, or otherwise, that has accorded the Company and its Subsidiaries full, effective, exclusive and original ownership of all Company-Owned Intellectual Property; or (ii) have executed instruments of assignment in favor of Company and its Subsidiaries as assignee that have conveyed to the Company and its Subsidiaries full, effective and exclusive ownership of all Company-Owned Intellectual Property thereby arising. No key product development or support personnel have left the employ of the Company or any Subsidiary of the Company (ivwhether voluntarily or involuntarily) no Person has any rights in the last twelve (12) months.
(d) Section 2.15(d) of the Company Disclosure Schedule sets forth a complete and accurate list of all Inbound License Agreements (excluding those Inbound License Agreements for Commercially Available Software) and Outbound License Agreements other than Outbound License Agreements with customers granting nonexclusive licenses to use any of the Company-Owned Intellectual Property except in the Ordinary Course of BusinessBusiness on the standard form of Company’s customer agreement made available to HealthStream), nor has in each case identifying whether or not such IP License is exclusive or nonexclusive. Each IP License is in full force and effect, and the Company or any and its Subsidiaries are in compliance in all material respects with all of its Subsidiaries granted obligations pursuant to any Person or authorized any Person to retain any ownership rights in the Company-Owned Intellectual Propertysuch IP Licenses. Except as The IP Licenses set forth on Section 3.15(b) of the Company Disclosure Schedule, to the extent that any work, invention or Intellectual Property has been developed or created by an employee or a third party for the Company or any of its Subsidiaries, the Company and/or a Subsidiary has a written agreement with such employee or third party with respect thereto and thereby has obtained ownership of, and is the exclusive owner of, all Intellectual Property in such work, material or invention by operation of law or by valid assignment.
(c) The contracts, licenses, sublicenses and agreements listed on Section 3.15(c2.15(d) of the Company Disclosure Schedule include constitute all of the material contracts, licenses, sublicenses and agreements with respect Company Contracts relating to any of the Company Intellectual Property (excluding any commercial off-the-shelf software) (“IP Licenses”)other than Outbound License Agreements with customers excluded from disclosure requirements as set forth above. All None of the IP Licenses are in full force and effect. Neither the execution nor delivery of this Agreement nor the consummation of the transactions contemplated hereby will violate grant any Person any exclusive rights to or result in the breach, modification, cancellation, termination, or suspension of under any of the IP Licenses without the payment of additional amounts other than ongoing fees, except for any such breach, modification, cancellation, termination, or suspension, which would not reasonably be expected to have a Company Material Adverse Effect. Except as listed on Section 3.15(c) of the Company Disclosure Schedule, there are no contracts, licenses, sublicenses or agreements between the Company Company-Owned Intellectual Property or any of its Subsidiaries and right to sublicense any other Person with respect to the Company Intellectual Property under which there is any dispute Known to the Company regarding the scope of any such agreement, or performance under such contract, license, sublicense or agreement, including with respect to any payments to be made or received by the Company or any of its Subsidiaries thereunder.
(d) Except as set forth in Section 3.15(d) of the Company Disclosure Schedule, to the Knowledge of the Company, no Person has or is infringing, misappropriating or violating any material Company-Owned Intellectual Property.
(e) Except as set forth in Section 3.15(e) of The Company, its Subsidiaries, the Company Disclosure Schedule, (i) Company-Owned Intellectual Property and the operation of the business of the Company Company’s and its Subsidiaries business has not and does violated, misappropriated, or infringed, is not violating, misappropriating, or infringing, and, by conducting their business, will not violate, misappropriate, or infringe (directly, contributorily, by inducement, or otherwise), misappropriate or violate the “Infringe”) any Intellectual Property of any Person issuedother Person. There is no, granted or otherwise protected under the laws of the United States or Canada and has not been, any litigation, opposition, cancellation, order, Proceeding, objection or claim pending, asserted or threatened (including cease and does not constitute unfair competition desist letters) against the Company or trade practices under the Laws any Subsidiary of the United States Company concerning the ownership, use, validity, scope, registrability, enforceability, infringement, misappropriation, violation, or Canada or licensed right to use any state, province or local jurisdiction thereinCompany Intellectual Property, and (ii) neither the Company nor any Subsidiary of the Company has received written notice of the same, and to the Knowledge of the Company, the operation of the business of the Company and its Subsidiaries has not and does not infringe (directlythe Shareholders, contributorily, by inducement, or otherwise), misappropriate or violate there is no valid basis for the Intellectual Property of any Person issued, granted or otherwise protected under the laws of any jurisdiction outside of the United States and Canada and has not and does not constitute unfair competition or trade practices under the laws of any jurisdiction outside of the United States and Canada. Except as set forth in Section 3.15(e) of the Company Disclosure Schedule, no claims with respect to any of the Company Intellectual Property have been asserted or, to the Knowledge of the Company, threatened by any Personsame.
(f) No Company-Owned Intellectual Property, or product or Software To the Knowledge of the Company produced using and the Shareholders, no Person has Infringed or embodying the Company-Owned Intellectual Property, is subject to Infringing any proceedings or outstanding Order or stipulation restricting in any material manner the sale, use or licensing thereof by of the Company or any of its Subsidiaries, or which materially affect the validity, use or enforceability of such Company-Owned Intellectual Property.
(g) The Company and its Subsidiaries have taken all material steps that are reasonably required or necessary commercially reasonable actions to protect its rights in protect, preserve and maintain the Company’s -Owned Intellectual Property and to maintain the confidentiality, secrecy and value of the confidential or proprietary information and Trade Secrets of the Company and its Subsidiaries’ material , and such confidential or proprietary information and trade secretsTrade Secrets have not been divulged by the Company or its Subsidiaries to a third party except pursuant to a valid confidentiality and non-disclosure agreement between the Company and/or Subsidiary and such third party or another legal or professional duty of confidentiality from such third party to the Company. To the Knowledge of the Company and the Shareholders, there has not been any breach by any third party of any confidentiality obligation to the Company or its Subsidiaries. All current and any material confidential information or trade secrets former employees of third parties provided to it related thereto. The the Company and its Subsidiaries have enforced a policy requiring each employee and contractor to execute proprietary information and confidentiality agreements substantially in their standard formsSubsidiaries, and all current employees and former independent contractors and consultants of the Company and its Subsidiaries, who have had access to material confidential or proprietary information or Trade Secrets of the Company and its Subsidiaries have executed such an agreemententered into confidentiality and/or proprietary information agreements with the Company and its Subsidiaries in the forms made available to HealthStream.
(h) Except as set forth in Section 3.15(h) of the Company Disclosure Schedule, neither Neither this Agreement nor the transactions contemplated by this Agreement Agreement, including any assignment by operation of law or otherwise of any IP License or other Company Contracts, will result in the Company or any Subsidiary of the Company (i) the Surviving Entity or its Subsidiaries granting to any Person third party any right to or with respect to any Company Company-Owned Intellectual Property, ; or (ii) the Surviving Entity or any of its Subsidiaries being obligated to pay any royalties or other amounts to any Person in excess of those payable by the Company and or its Subsidiaries prior to the ClosingClosing Date. The consummation of No licenses or other consents are required from any Person to permit the transactions contemplated by this Agreement will not result in the loss of, Company or otherwise adversely affect, any ownership rights Subsidiary of the Company to fully exploit the Company Intellectual Property and otherwise license, sell or distribute its Subsidiaries in any Company-Owned Intellectual Property.
(i) The Company products and its Subsidiaries have secured any export licenses that are necessary or appropriate for the current distribution of any of services consistent with the Company’s and its Subsidiaries’ products past practice. The transactions contemplated by this Agreement do not and will not (with notice, the happening of any event and/or the passage of time or notice) result in the loss or expiration of any license or of any Intellectual Property rights of the Company.
(i) Section 2.15(i) of the Company Disclosure Schedule sets forth a list of all Company-Owned Software outside used or held for use by Company and its Subsidiaries in the United Statesconduct of the Company’s and Subsidiaries’ business as presently conducted. The Company-Owned Software is free from Errors and operates in accordance with all contractual commitments and published specifications, except for Bugs. There are no material claims against the Company or any Subsidiary of the Company alleging any material defect in any Company-Owned Software or alleging any failure of any of the same to meet their specifications, in each case except for Bugs. Section 2.15(i) of the Company Disclosure Schedule also sets forth the Software Known Issues Log.
(j) Except as set forth in Section 3.15(j2.15(j) of the Company Disclosure Schedule, no open sourcenone of the Company-Owned Software incorporates, public source or freeware software, code or other technology, or any modification or derivative thereof, including any version of any software licensed pursuant to any GNU general public license or limited general public licenseis distributed together with, was developed with or is, used in, incorporated into, integrated or bundled with, or used is dependent on any Open Source Technology and there are no current plans to include any such Open Source Technology in the development or compilation (other than generally available commercial compilers) of, any Company-Owned Software. With the sole exception of Open SSL, all open source, public source or freeware software, code and technology set forth in Section 3.15(j2.15(j) of the Company Disclosure Schedule (i) is only describes the manner in which the Open Source Technology was used, including whether and how the Open Source Technology was modified or distributed by Company or any Subsidiary of the Company and with which Company-Owned Software the Open Source Technology was used internally by the or distributed. The Company and its Subsidiaries and solely for internal purposes; (ii) except as set forth on Section 3.15(j) have complied with all of the Company Disclosure Schedule, has not been incorporated into or combined with any Software; and (iii) is not licensed or otherwise provided or distributed requirements of each license applicable to any Person. To the extent Open Source Technology, and have not taken any open source, public source or freeware software, code or technology is incorporated into or combined with action which could cause any Software, to the Knowledge of the Company-Owned Software to become subject to any license or other agreement that would require the distribution of, there are alternatives or access to the source code for such softwareany Company-Owned Software, code or technology that are readily availablepurports to restrict the Company’s or its Subsidiaries’ ability to charge for distribution or use of any Company-Owned Software.
(k) The Company has exercised commercially reasonable efforts to ensure that all and its Subsidiaries maintain a complete and accurate copy of the source code for all Company-Owned Software. Each Company-Owned Software contains clear item includes at least one electronic copy of the source code therefor and accurate annotations each applicable object file, together with build files, batch files and/or make files, as may be required to create executables that are included in each release and programmer’s comments, and otherwise has been documented in a professional manner that version of such Company-Owned Software. The source code for all Company-Owned Software is both: (i) consistent with customary code annotation conventions; and (ii) sufficient to independently enable a programmer of reasonable skill and competence to understand, analyze, analyze and interpret program logic, correct errors and improve, enhance, modify and support all Company-Owned Software.
(l) Neither the Company nor any Subsidiary of the Company has, by license, transfer, escrow, or otherwise, permitted any other Person to reverse engineer, disassemble, or decompile any of the Company-Owned Software to create such source code, except as may be required by law. No circumstances exist and the consummation of the transactions contemplated by this Agreement shall not cause any circumstances to exist that would result in the release of any such source code under a source code escrow agreement with any Person. All copies of any Company Software distributed in connection with the Company’s and Subsidiaries’ business have been distributed solely in object code form. Except for disclosure to HealthStream in connection with the analysis of the source code for scalability purposes (where there was view access only and no independent download capability), there has been no disclosure of any Company-Owned Software or any source code therefor by the Company or any Subsidiary of the Company, including to any source code escrow agent, or to the Knowledge of the Company or the Shareholders, by any other Person, other than through licensing of object code versions thereof. Each copy so distributed by the Company and its Subsidiaries is the subject of a valid, existing, and enforceable Outbound License Agreement.
(m) The Company and its Subsidiaries possess all necessary rights to use all Software, middleware and system, information technology equipment, and associated documentation used or held for use in connection with the operation of the Company’s and Subsidiaries’ business as presently conducted (the “Systems”). The Systems operate and perform in all material respects in accordance with their documentation and functional specifications and otherwise as required by the Company and its Subsidiaries in connection with the Company’s and Subsidiaries’ business. Except as set forth in on Section 3.15(k2.15(m) of the Company Disclosure Schedule, (i) none of the source Systems contain any disabling or destructive code or instructions or virus that is designed or intended to have or capable of resulting in disrupting, disabling, or otherwise impeding the operation of the Software Systems or damaging or destroying any data or file without the user’s consent. The Company and its Subsidiaries has implemented reasonable backup, security and disaster recovery technology consistent with normal industry practices.
(n) The Company and its Subsidiaries have established and maintained safeguards designed to prevent destruction, loss, or alteration of customer data or information in its possession or control which comply with all contractual obligations and applicable Legal Requirements regarding personally identifiable information, including any data privacy laws, consumer privacy laws and Contracts with third parties in every jurisdiction where the Company and its Subsidiaries operate the Company’s and Subsidiaries’ business. The Company and its Subsidiaries are, and since January 1, 2012 have been, in compliance in all material respects with Company’s and its Subsidiaries’ published and internal privacy and security policies. No claims have been published or disclosed or licensed or made available asserted or, to any Person other than employees the Knowledge of the Company or one the Shareholders, threatened against the Company or any Subsidiary of its Subsidiaries subject the Company (and to the Knowledge of the Company or the Shareholders, no such claims are likely to be asserted or threatened against the Company or any Subsidiary of the Company) by any third party or entity alleging (i) a violation of such third party or entity’s privacy, personal or confidentiality obligationsrights under any Legal Requirements, and rules, policies or procedures, or (ii) no licenses the failure of the Company or rights have been granted any Subsidiary of the Company with respect to any Person security audit as contemplated by certain Company Contracts.
(o) The Company has made available to distribute or to otherwise use or create derivative works from HealthStream in the source code for any Software. Neither the Data Room complete and accurate copies of all Company nor any of its Subsidiaries has any duty or obligation (whether present, contingent, or otherwise) to deliver, license, or make available the source code for any Company product or Software to any escrow agent or other Person except as set forth Intellectual Property and IP Licenses listed in Section 3.15(k2.15(a) and Section 2.15(d) of the Company Disclosure Schedule.
Appears in 1 contract
Samples: Membership Interest Purchase Agreement (Healthstream Inc)
Intellectual Property; Software. (a) Section 3.15(a2.15(a) of the Company Disclosure Schedule (i) sets forth forth, for the Company-Owned Intellectual Property, a complete and accurate list of all domestic and foreign federal, state and/or provincial: (xi) all Registered Intellectual Propertyissued Patents and Patent applications; (ii) Trademark registrations, and (y) all material Software products owned by the Company or any of its Subsidiariesapplications for registration, and material trademarks of the Company or any of its Subsidiaries, unregistered Trademarks; (iii) registered Copyrights and material unregistered Copyrights; and (iiiv) specifiesDomain Names, where applicablein each case listing the title and current owner, the jurisdictions jurisdiction in which each item of such Registered Intellectual Property has been issued or registered or in which an application for such issuance and registration has been filed, including the respective registration or application numbers and the names of all registered ownersapplication, serial or registration number. All Company-Owned Intellectual Property identified on Section 3.15(a2.15(a) of the Company Disclosure Schedule lists Schedule: (1) is in full force and effect; (2) has not lapsed, expired or been abandoned or withdrawn; and (3) is not the subject of any proceedings Proceeding, action or actions before opposition filed with the United States Patent and Trademark Office or any court, tribunal other intellectual property registry or Governmental Authority anywhere in the world. The Company has taken sufficient measures to perfect the chain of title recorded with the applicable Governmental Authority (including the United States Patent and Trademark Office) related with respect to any of the Registered Intellectual Property. The Company and its Subsidiaries have complied in all material respects with all applicable disclosure requirements and have not committed any fraudulent act in the application for and maintenance of any Intellectual Property of the Company and its Subsidiaries. Each each such item of Registered Company-Owned Intellectual Property, excluding including recording any Registered assignment of any Company-Owned Intellectual Property that is assigned to the subject of any application or other preliminary submission, is valid, subsisting and enforceable. All necessary registration, maintenance and renewal fees in connection with such Registered Intellectual Property have been paid and all necessary documents and certificates in connection with such Registered Intellectual Property have been filed Company with the relevant patentGovernmental Authority in accordance with applicable laws and regulations in each jurisdiction in which such assignment is required to recorded. No actions will be necessary (including filing of documents or payment of fees), copyrightwithin 90 days after the Closing Date to: (A) maintain or preserve the validity, trademark scope or other authorities for the purposes status of maintaining such Registered any Company-Owned Intellectual Property; or (B) avoid a statutory bar to patentability of any material unregistered Company-Owned Intellectual Property.
(b) Except as set forth on Section 3.15(b) of the The Company Disclosure Schedule: (i) the Company exclusively owns and its Subsidiaries own possesses all right, title and have good interest in and exclusive title to each item of the all Company-Owned Intellectual Property, including all Registered Intellectual Property, free and clear of any Encumbrance, all Encumbrances and have the valid and enforceable right to use, transfer, license and encumber all such Registered Intellectual Property (excluding any Registered Intellectual Property that is the subject of any application or other preliminary submission); (ii) the Company and its Subsidiaries own or have has the right to use or operate under pursuant to a valid and enforceable written agreement free and clear of all Encumbrances, all other Company Intellectual Property, as necessary for the conduct of the business as currently conducted and as proposed to be conducted. The Company Intellectual Property and the Company’s ownership rights to the Company Intellectual Property; (iii) Property are valid, enforceable and subsisting and are not subject to the Knowledge of any outstanding Order, Company Contract or Proceeding adversely affecting the Company, the ’s use thereof or rights thereto. The Company Intellectual Property constitutes all of the Intellectual Property necessary to the operation and conduct of the Company’s business as conducted as currently conducted.
(c) For purposes of this Section 2.15(c) all Persons, including current or former employees, independent contractors and consultants of the date Company, that either alone or in concert with others have contributed to the invention, development, programming, design, enhancement, implementation or modification of this AgreementCompany-Owned Intellectual Property in any material manner are “Contributing Persons.” Each Contributing Person either (i) has been party to a “work-for-hire” arrangement or agreement with the Company or, whether in accordance with applicable federal and state law, domestic or foreign, or otherwise, that has accorded the Company full, effective, exclusive and original ownership of all Company-Owned Intellectual Property; or (ii) have executed instruments of assignment in favor of Company as assignee, either through an employment agreement or otherwise, that have conveyed to the Company full, effective and exclusive ownership of all Company-Owned Intellectual Property thereby arising.
(ivd) no Person has any rights Section 2.15(d) of the Company Disclosure Schedule sets forth a complete and accurate list of all Inbound License Agreements (excluding those Inbound License Agreements for Commercially Available Software) and Outbound License Agreements other than Outbound License Agreements with customers granting nonexclusive licenses to use any of the Company-Owned Intellectual Property except in the Ordinary Course of BusinessBusiness on the standard form of Company’s customer agreement made available to Echo), nor has the Company in each case identifying whether or any of its Subsidiaries granted to any Person not such IP License is exclusive or authorized any Person to retain any ownership rights in the Company-Owned Intellectual Propertynonexclusive. Except as set forth on Section 3.15(b2.15(d) of the Company Disclosure Schedule, to the extent that any workeach IP License is in full force and effect, invention or Intellectual Property has been developed or created by an employee or a third party for and the Company or any is in compliance in all material respects with all of its Subsidiaries, the Company and/or a Subsidiary has a written agreement with obligations pursuant to such employee or third party with respect thereto and thereby has obtained ownership of, and is the exclusive owner of, all Intellectual Property in such work, material or invention by operation of law or by valid assignment.
(c) IP Licenses. The contracts, licenses, sublicenses and agreements listed IP Licenses set forth on Section 3.15(c2.15(d) of the Company Disclosure Schedule include constitute all of the material contracts, licenses, sublicenses and agreements with respect Company Contracts relating to any of the Company Intellectual Property (excluding any commercial off-the-shelf software) (“IP Licenses”)other than Outbound License Agreements with customers excluded from disclosure requirements as set forth above. All None of the IP Licenses are in full force and effect. Neither the execution nor delivery of this Agreement nor the consummation of the transactions contemplated hereby will violate grant any Person any exclusive rights to or result in the breach, modification, cancellation, termination, or suspension of under any of the IP Licenses without the payment of additional amounts other than ongoing fees, except for any such breach, modification, cancellation, termination, or suspension, which would not reasonably be expected to have a Company Material Adverse Effect. Except as listed on Section 3.15(c) of the Company Disclosure Schedule, there are no contracts, licenses, sublicenses or agreements between the Company Company-Owned Intellectual Property or any of its Subsidiaries and exclusive right to sublicense any other Person with respect to the Company Intellectual Property under which there is any dispute Known to the Company regarding the scope of any such agreement, or performance under such contract, license, sublicense or agreement, including with respect to any payments to be made or received by the Company or any of its Subsidiaries thereunder.
(d) Except as set forth in Section 3.15(d) of the Company Disclosure Schedule, to the Knowledge of the Company, no Person has or is infringing, misappropriating or violating any material Company-Owned Intellectual Property.
(e) The Company, the Company-Owned Intellectual Property and the operation of the Company’s business has not violated, misappropriated, or infringed, and is not violating, misappropriating, or infringing (“Infringe”), any Intellectual Property of any other Person. Except as set forth in Section 3.15(e2.15(e) of the Company Disclosure Schedule, (i) the operation of the business of the Company and its Subsidiaries has not and does not infringe (directlythere is no, contributorily, by inducement, or otherwise), misappropriate or violate the Intellectual Property of any Person issued, granted or otherwise protected under the laws of the United States or Canada and has not been since January 1, 2013, any litigation, opposition, cancellation, Order, Proceeding, or claim pending, asserted or threatened (including cease and does desist letters) against the Company concerning the ownership, use, validity, scope, registrability, enforceability, infringement, misappropriation, violation, or licensed right to use any Company Intellectual Property, and the Company has not constitute unfair competition or trade practices under the Laws received written notice of the United States or Canada or any state, province or local jurisdiction thereinsame, and (ii) to the Knowledge of the CompanySeller, there is no valid basis for the operation of the business of the Company and its Subsidiaries has not and does not infringe (directly, contributorily, by inducement, or otherwise), misappropriate or violate the Intellectual Property of any Person issued, granted or otherwise protected under the laws of any jurisdiction outside of the United States and Canada and has not and does not constitute unfair competition or trade practices under the laws of any jurisdiction outside of the United States and Canada. Except as set forth in Section 3.15(e) of the Company Disclosure Schedule, no claims with respect to any of the Company Intellectual Property have been asserted or, to the Knowledge of the Company, threatened by any Personsame.
(f) No Company-Owned Intellectual Property, or product or Software To the Knowledge of the Company produced using Seller, no Person has Infringed or embodying is Infringing on any of the Company-Owned Intellectual Property, is subject to any proceedings or outstanding Order or stipulation restricting in any material manner the sale, use or licensing thereof by the Company or any of its Subsidiaries, or which materially affect the validity, use or enforceability of such Company-Owned ’s Intellectual Property.
(g) The Company has taken actions to protect, preserve and its Subsidiaries have taken all material steps that are reasonably required or necessary to protect its rights in maintain the Company’s -Owned Intellectual Property and its Subsidiaries’ material to maintain the confidentiality, secrecy and value of the confidential information and trade secrets, and any material confidential information or trade secrets of third parties provided to it related thereto. The Company and its Subsidiaries have enforced a policy requiring each employee and contractor to execute proprietary information and Trade Secrets of the Company, and such confidential or proprietary information and Trade Secrets have not been used, divulged or appropriated either for the benefit of any Person (other than the Company) or to the detriment of the Company. To the Knowledge of the Seller, there has not been any breach by any third party of any confidentiality agreements substantially in their standard formsobligation to the Company. All current and former employees of the Company, and all current employees and former independent contractors and consultants of the Company, who have had access to material confidential or proprietary information or Trade Secrets of the Company and its Subsidiaries have executed such an agreemententered into confidentiality and/or proprietary information agreements with the Company in the forms made available to Echo.
(h) Except as set forth in Section 3.15(h) of the Company Disclosure Schedule, neither Neither this Agreement nor the transactions contemplated by this Agreement Agreement, including the assignment by operation of law or otherwise of any IP License or other Company Contracts, will result in the Company or (i) the Surviving Entity or its Subsidiaries granting to any Person third party any right to or with respect to any Company Company-Owned Intellectual Property, ; or (ii) the Surviving Entity or any of its Subsidiaries being obligated to pay any royalties or other amounts to any Person in excess of those payable by the Company and its Subsidiaries prior to the ClosingClosing Date. No licenses or other consents are required from any Person to permit the Company to fully exploit the Company Intellectual Property and otherwise license, sell or distribute its products and services consistent with the Company’s past practice. The consummation of the transactions contemplated by this Agreement do not and will not (with notice, the happening of any event and/or the passage of time or notice) result in the loss of, or otherwise adversely affect, expiration of any ownership license or of any Intellectual Property rights of the Company and its Subsidiaries in any Company-Owned Intellectual Property.
(i) The Company and its Subsidiaries have secured any export licenses that are necessary or appropriate for the current distribution of any of the Company’s and its Subsidiaries’ products and Software outside the United States.
(j) Except as set forth in Section 3.15(j) of the Company Disclosure Schedule, no open source, public source or freeware software, code or other technology, or any modification or derivative thereof, including any version of any software licensed pursuant to any GNU general public license or limited general public license, was or is, used in, incorporated into, integrated or bundled with, or used in the development or compilation (other than generally available commercial compilers) of, any Software. With the sole exception of Open SSL, all open source, public source or freeware software, code and technology set forth in Section 3.15(j2.15(i) of the Company Disclosure Schedule (i) sets forth a list of all Company-Owned Software used or held for use by Company in the conduct of the Company’s business as presently conducted. The Company-Owned Software is only used internally by free from material defects and operates in accordance with all contractual commitments and published specifications, except for Bugs. There are no material claims against the Company and its Subsidiaries and solely for internal purposes; alleging any Bugs in any Company-Software or alleging any failure of any of the same to meet their specifications.
(iij) except as set forth on Section 3.15(j2.15(j) of the Company Disclosure Schedule, has not been Schedule describes any Open Source Technology used or incorporated into in or combined distributed with any Company-Owned Software; , including the manner in which the Open Source Technology was used, whether and (iii) is not licensed or otherwise provided how the Open Source Technology was modified or distributed by Company and with which Company-Owned Software the Open Source Technology was used or distributed. The Company has complied with all of the requirements of each license applicable to any Person. To the extent Open Source Technology, and have not taken any open source, public source or freeware software, code or technology is incorporated into or combined with action which could cause any Software, to the Knowledge of the Company-Owned Software to become subject to any license or other agreement that would require the distribution of, there are alternatives or access to the source code for such softwareany Company-Owned Software, code or technology that are readily availablepurports to restrict the Company’s ability to charge for distribution or use of any Company-Owned Software.
(k) The Company has exercised commercially reasonable efforts to ensure that all maintains a complete and accurate copy of the source code for all Company-Owned Software. Each Company-Owned Software contains clear item includes at least one electronic copy of the source code therefor and accurate annotations each applicable object file, together with build files, batch files and/or make files, as may be required to create executables that are included in each release and programmer’s comments, and otherwise version of such Company-Owned Software. The source code for all Company-Owned Software has been documented in a professional manner that is both: both (i) consistent with customary code annotation conventionsconventions and best practices in the software industry; and (ii) is sufficient to independently enable a programmer of reasonable skill and competence to understand, analyze, analyze and interpret program logic, correct errors and improve, enhance, modify and support all Company-Owned Software.
(l) The Company has not, by license, transfer, escrow, or otherwise, permitted any other Person to reverse engineer, disassemble, or decompile any of the SoftwareCompany-Owned Software to create such source code, except as may be required by law. All copies of any Company Software distributed in connection with the Company’s business have been distributed solely in object code form. Except for disclosure to Echo in connection with the analysis of the source code for scalability purposes (where there was view access only and no independent download capability) other than in the Ordinary Course of Business with respect to customers or as set forth in on Section 3.15(k2.15(l) of the Company Disclosure Schedule, there has been no disclosure of any Company-Owned Software or any source code therefor by the Company, including to any source code escrow agent, or to the Knowledge of the Seller, by any other Person, other than through licensing of object code versions thereof. Each copy so distributed by the Company is the subject of a valid, existing, and enforceable Outbound License Agreement.
(m) The Company and possesses all necessary rights to use all Software, middleware and system, information technology equipment, and associated documentation used or held for use in connection with the operation of the Company’s business as presently conducted or proposed to be conducted (the “Systems”). The Systems operate and perform in all material respects in accordance with their documentation and functional specifications and otherwise as required by the Company in connection with the Company’s business. None of the Systems contain any disabling or destructive code or instructions or virus that is designed or intended to have or capable of resulting in disrupting, disabling, or otherwise impeding the operation of the Systems or damaging or destroying any data or file without the user’s consent. The Company has provided or delivered to Echo access to the database maintained by the Company regarding known errors that would cause any Systems not to operate in accordance with the applicable specifications therefor and user documentation. Except for such errors as are set forth in such database, to the Knowledge of the Seller, there are no other such errors in the Systems. The Company has implemented reasonable backup, security and disaster recovery technology consistent with normal industry practices.
(n) The Company has established and maintained safeguards designed to prevent destruction, loss, or alteration of customer data or information in its possession or control which comply with all contractual obligations and applicable Legal Requirements regarding personally identifiable information, including any data privacy laws, consumer privacy laws and contracts with third parties in every jurisdiction where the Company operates the Company’s business. The Company is, and since January 1, 2013 has been, in compliance in all material respects with the Company’s published and internal privacy and security policies. No claims have been asserted or, to the Knowledge of the Seller, threatened against the Company (and to the Knowledge of the Seller, no such claims are likely to be asserted or threatened against the Company) by any third party or entity alleging (i) none a violation of such third party or entity’s privacy, personal or confidentiality rights under any Legal Requirements, rules, policies or procedures, or (ii) the failure of the source code of the Software Company with respect to any security audit as contemplated by certain Company Contracts.
(o) The Company has been published or disclosed or licensed or made available to any Person other than employees Echo in the Data Room complete and accurate copies of the Company or one of its Subsidiaries subject to confidentiality obligations, all Company-Owned Intellectual Property and (ii) no licenses or rights have been granted to any Person to distribute or to otherwise use or create derivative works from the source code for any Software. Neither the Company nor any of its Subsidiaries has any duty or obligation (whether present, contingent, or otherwise) to deliver, license, or make available the source code for any Company product or Software to any escrow agent or other Person except as set forth IP Licenses listed in Section 3.15(k2.15(a) and Section 2.15(d) of the Company Disclosure Schedule.
Appears in 1 contract
Intellectual Property; Software. (a) Section 3.15(a2.15(a) of the Company Disclosure Schedule (i) sets forth forth, for the Company-Owned Intellectual Property, a complete and accurate list of all domestic and foreign federal, state and/or provincial: (xi) all issued Patents and Patent applications; (ii) Trademark registrations and applications for registration, and any material unregistered Trademarks; (iii) registered Copyrights; (iv) Domain Names; and (v) any other Company-Owned Intellectual Property that is the subject of an application, certificate or registration issued by any intellectual property registry or other Governmental Authority (collectively, the “Registered Intellectual Property”), in each case, listing the title and (y) all material Software products owned by the Company or any of its Subsidiaries, and material trademarks of the Company or any of its Subsidiaries, and (ii) specifies, where applicablecurrent owner, the jurisdictions jurisdiction in which each item of such Registered Intellectual Property has been issued or registered or in which an application for such issuance and registration has been filed, including the respective registration or application numbers and the names application, serial or registration number. All Registered Intellectual Property (1) is valid, enforceable and subsisting, in full force and effect and has not lapsed, expired or been abandoned or withdrawn; and (2) is not the subject of all registered ownersany Proceeding, action or opposition filed with the United States Patent and Trademark Office or any other intellectual property registry or Governmental Authority anywhere in the world. Section 3.15(a) of the Company Disclosure Schedule lists any proceedings or No actions before any court, tribunal will be necessary (including filing of documents or payment of fees) within ninety (90) days after the Closing Date to maintain or preserve the validity, scope or status of any Registered Intellectual Property. The Premier Partiers have taken sufficient measures to protect the Registered Intellectual Property and to perfect the chain of title recorded with the applicable Governmental Authority (including without limitation the United States Patent and Trademark Office) related with respect to any of the Registered Intellectual Property. The Company and its Subsidiaries have complied in all material respects with all applicable disclosure requirements and have not committed any fraudulent act in the application for and maintenance of any Intellectual Property of the Company and its Subsidiaries. Each each such item of Registered Intellectual Property, excluding any Registered Intellectual Property that is the subject of any application or other preliminary submission, is valid, subsisting and enforceable. All necessary registration, maintenance and renewal fees in connection with such Registered Intellectual Property have been paid and all necessary documents and certificates in connection with such Registered Intellectual Property have been filed with the relevant patent, copyright, trademark or other authorities for the purposes of maintaining such Registered Intellectual Property.
(b) Except as set forth on Section 3.15(b) of the The Company Disclosure Schedule: (i) the Company exclusively owns and its Subsidiaries own possesses all right, title and have good interest in and exclusive title to each item of the all Company-Owned Intellectual Property, including all Registered Intellectual Property, free and clear of any Encumbranceall Encumbrances, other than Permitted Encumbrances, and have (ii) has the right to Use pursuant to a valid and enforceable right to usewritten agreement, transferfree and clear of all Encumbrances, license and encumber other than Permitted Encumbrances, all such Registered other Company Intellectual Property (excluding any Registered as necessary for the conduct of the B&I GPO Business. The Company Intellectual Property that is the subject of any application or other preliminary submission); (ii) the Company and its Subsidiaries own or have the right to use or operate under all of the Company Intellectual Property; (iii) to the Knowledge of the Company, ’s rights to the Company Intellectual Property constitutes all are valid, enforceable and subsisting and are not subject to any outstanding Order, Company Contract or Proceeding adversely affecting the Company’s Use thereof or rights thereto. Except as set forth on Section 2.15(b) of the Intellectual Property necessary to the operation and conduct of the business as conducted as of the date of this Agreement; and Disclosure Schedule: (iv1) no Person has any rights to use any of the Company-Owned Intellectual Property except in the Ordinary Course of Business, nor has the Company or any of its Subsidiaries has not granted to any Person or authorized any Person to retain any ownership rights in the any Company-Owned Intellectual Property. Except as set forth on Section 3.15(b; and (2) the Company Intellectual Property constitutes all of the Company Disclosure Schedule, Intellectual Property reasonably necessary to the extent that any work, invention or Intellectual Property has been developed or created by an employee or a third party for the Company or any of its Subsidiaries, the Company and/or a Subsidiary has a written agreement with such employee or third party with respect thereto and thereby has obtained ownership of, and is the exclusive owner of, all Intellectual Property in such work, material or invention by operation of law or by valid assignment.
(c) The contracts, licenses, sublicenses and agreements listed on Section 3.15(c) conduct of the Company Disclosure Schedule include all material contractsB&I GPO Business as conducted or as proposed to be conducted. All Persons (including any current and former employees, licensescontractors or consultants of the Company) who have participated in the creation, sublicenses and agreements with respect to invention, modification, improvement or development of any of the Company Intellectual Property (excluding any commercial off-the-shelf software) (“IP Licenses”). All for the Company or under the direction or supervision of the Company have executed and delivered to the Company a valid and enforceable written agreement (A) providing for the non-disclosure by such Person of any Trade Secrets or other Confidential Information of the Company, and (B) providing for the assignment (by way of a present grant of assignment) by such Person to the Company of any Intellectual Property arising out of such Person’s employment or engagement by or contract with the Company, and all such agreements have been made available to Buyer in the Data Room.
(c) Each IP Licenses are License is in full force and effect. Neither the execution nor delivery of this Agreement nor the consummation of the transactions contemplated hereby will violate , and no Premier Party has taken or result in the breach, modification, cancellation, termination, or suspension of failed to take any of the IP Licenses without the payment of additional amounts action and no other than ongoing fees, except for any such breach, modification, cancellation, termination, or suspension, which event has occurred that would not reasonably be expected to have a Company Material Adverse Effectsubject any IP License to termination or that would reasonably be expected to otherwise cause any such IP License to not be in effect in the foreseeable future. Except as listed on Section 3.15(c) The IP Licenses constitute all of the material Company Disclosure Schedule, there are no contracts, licenses, sublicenses Contracts relating to any Company Intellectual Property. None of the Out-Bound IP Licenses grant any Person any exclusive rights to or agreements between the Company under any Company-Owned Intellectual Property or any of its Subsidiaries and right to sublicense any other Person with respect to the Company Company-Owned Intellectual Property under which there is any dispute Known to the Company regarding the scope of any such agreement, or performance under such contract, license, sublicense or agreement, including with respect to any payments to be made or received by the Company or any of its Subsidiaries thereunderProperty.
(d) Except as set forth in Section 3.15(d) The conduct of the B&I GPO Business has not violated, misappropriated or infringed, and the conduct of the B&I GPO Business is not violating, misappropriating or infringing, any Intellectual Property of any other Person. During the last three (3) years, there has been no litigation, opposition, cancellation, order, Proceeding, objection or claim pending asserted or threatened in writing (including cease and desist letters or invitations to take a license) against the Company, Premier or Equityholder concerning the ownership, Use, validity, scope, registrability, enforceability, infringement, misappropriation, violation, or licensed right to Use any Company Disclosure ScheduleIntellectual Property, and no Premier Party has received written notice of the same, and to the Knowledge of the Company, there is no valid basis for the same.
(e) During the last three (3) years, to the Knowledge of the Company, no Person has violated, misappropriated or infringed or is infringingviolating, misappropriating or violating infringing any material Company-Owned of the Company Intellectual Property.
(ef) Except as set forth in Section 3.15(e) Each Premier Party and its Affiliates has taken all necessary actions to protect, preserve and maintain the Company-Owned Intellectual Property and to maintain the confidentiality, secrecy and value of the Company Disclosure Schedule, (i) the operation Confidential Information and Trade Secrets of the business of Company, and such Confidential Information and Trade Secrets have not been Used, divulged or appropriated either for the Company and its Subsidiaries has not and does not infringe (directly, contributorily, by inducement, or otherwise), misappropriate or violate the Intellectual Property benefit of any Person issued, granted (other than the Company) or otherwise protected under to the laws detriment of the United States or Canada and has not and does not constitute unfair competition or trade practices under the Laws of the United States or Canada or any state, province or local jurisdiction therein, and (ii) to Company. To the Knowledge of the Company, the operation of the business of the Company and its Subsidiaries there has not and does not infringe (directly, contributorily, been any material breach by inducement, or otherwise), misappropriate or violate the Intellectual Property any third party of any Person issued, granted confidentiality obligation to a Premier Party or otherwise protected under the laws of any jurisdiction outside of the United States and Canada and has not and does not constitute unfair competition or trade practices under the laws of any jurisdiction outside of the United States and Canada. Except its Affiliates as set forth in Section 3.15(e) of the Company Disclosure Schedule, no claims with respect to any of the Company Intellectual Property have been asserted or, related to the Knowledge of the Company, threatened by any Person.
(f) No Company-Owned Intellectual Property, or product or Software of the Company produced using or embodying the Company-Owned Intellectual Property, is subject to any proceedings or outstanding Order or stipulation restricting in any material manner the sale, use or licensing thereof by the Company or any of its Subsidiaries, or which materially affect the validity, use or enforceability of such Company-Owned Intellectual PropertyB&I GPO Business.
(g) The Company and its Subsidiaries have taken all material steps that are reasonably required or necessary to protect its rights in the Company’s and its Subsidiaries’ material confidential information and trade secrets, and any material confidential information or trade secrets of third parties provided to it related thereto. The Company and its Subsidiaries have enforced a policy requiring each employee and contractor to execute proprietary information and confidentiality agreements substantially in their standard forms, and all current employees and contractors of the Company and its Subsidiaries have executed such an agreement.
(h) Except as set forth in Section 3.15(h) of the Company Disclosure Schedule, neither Neither this Agreement nor the transactions contemplated by this Agreement Agreement, including the assignment by operation of law or otherwise of any IP License or other Company Contracts, will result in Buyer or a Premier Party (i) the Surviving Entity or its Subsidiaries granting to any Person third party any right to or with respect to regarding any Company Company-Owned Intellectual Property, ; or (ii) the Surviving Entity or any of its Subsidiaries being obligated to pay any royalties or other amounts to any Person in excess of those payable by the Company and its Subsidiaries prior to the ClosingClosing Date. The consummation of the transactions contemplated by this Agreement will not result in the loss of, or otherwise adversely affect, any ownership rights of the Company and its Subsidiaries in in, or any other rights of the Company to Use, any Company-Owned Intellectual PropertyProperty or result in the breach or termination of any license, contract or agreement to which the Company is a party with respect to any Company Intellectual Property (including any IP Licenses).
(ih) Section 2.15(h) of the Disclosure Schedule sets forth a list of all Company-Owned Software Used or held for Use by a Premier Party or its Affiliates in the conduct of the B&I GPO Business as presently conducted. The Company Company-Owned Software is free from material defects and its Subsidiaries have secured any export licenses that are necessary operates in accordance with all customer or appropriate member requirements, contractual commitments and published specifications, except for the current distribution of any Bugs. None of the Company’s and its Subsidiaries’ products and -Owned Software outside the United States.
(j) Except as set forth in Section 3.15(j) of the Company Disclosure Scheduleincorporates, no open source, public source or freeware software, code or other technology, or any modification or derivative thereof, including any version of any software licensed pursuant to any GNU general public license or limited general public licenseis distributed together with, was developed with or isis dependent on any Open Source Technology, used in, incorporated into, integrated or bundled with, or used and there are no current plans to include any such Open Source Technology in the development or compilation (other than generally available commercial compilers) of, any Company-Owned Software. With the sole exception of Open SSL, all open source, public source or freeware software, code and technology set forth in Section 3.15(j) of the Company Disclosure Schedule (i) is only used internally by the Company and its Subsidiaries and solely for internal purposes; (ii) except as set forth on Section 3.15(j) of the Company Disclosure Schedule, has not been incorporated into or combined with any Software; and (iii) is not licensed or otherwise provided or distributed to any Person. To the extent any open source, public source or freeware software, code or technology is incorporated into or combined with any Software, to the Knowledge of the Company, there are alternatives for such software, code or technology that are readily available.
(k) The Company has exercised commercially reasonable efforts to ensure that all source code for all Software contains clear and accurate annotations and programmer’s comments, and otherwise has been documented in a professional manner that is both: (i) consistent with customary code annotation conventions; and (ii) sufficient to independently enable a programmer of reasonable skill and competence to understand, analyze, and interpret program logic, correct errors and improve, enhance, modify and support the Software. Except as set forth in Section 3.15(k) of the Company Disclosure Schedule, (i) none None of the source code of for the Company-Owned Software has been published or disclosed or licensed or made available to any Person other than employees of the Company or one of its Subsidiaries subject to confidentiality obligationsdisclosed, and (ii) no licenses or rights have been granted to any Person to distribute or to otherwise use Use (nor with the closing of the transactions obligate it to distribute or create derivative works from the provide to any Person) any source code for any Company-Owned Software.
(i) The Company possesses all necessary rights to Use all Software (including Company-Owned Software), middleware and systems, information technology equipment, networks, platforms, and associated documentation Used or held for Use in connection with the operation of the B&I GPO Business as presently conducted or proposed to be conducted or necessary for the B&I GPO Business (the “Systems”). Neither The Systems operate and perform in all material respects in accordance with their documentation and functional specifications and otherwise as required by the Company nor in connection with the B&I GPO Business. None of the Systems contain any of its Subsidiaries has any duty disabling or obligation (whether presentdestructive code or instructions or virus, contingentworm, Trojan horse, time-bomb, key-lock, spyware, adware, or otherwise) malware that is designed or intended to deliverhave or be capable of resulting in disrupting, licensedisabling, or make available otherwise impeding the source code operation of the Systems or any Company-Owned Software or damaging or destroying any data or file without the user’s consent. The Premier Parties and their Affiliates have implemented reasonable backup, security and disaster recovery technology for any the Systems consistent with standard industry practices. Immediately following the Closing Date, the Buyers will have the same rights and privileges in the Systems as the Company product had in the Systems immediately prior to the Closing Date.
(j) There has been no unauthorized access, use, intrusion, or Software to any escrow agent breach of security, or failure, breakdown, performance reduction or other Person except as set forth adverse event affecting any Systems or any data provided to or used by a Premier Party or its Affiliates or maintained or stored by a Premier Party or its Affiliates in Section 3.15(kconnection with the B&I GPO Business (“Company Data”) that has caused or could be reasonably expected to cause any: (i) substantial disruption of or interruption in or to the use of such Systems, customer data or the conduct of the B&I GPO Business; (ii) material loss, destruction, damage, or harm of or to the Company Disclosure Scheduleor its operations, personnel, property, or other assets; or (iii) Liability of any kind to the Company. The Premier Parties and their Affiliates have collected, maintained and disclosed all Company Data in accordance with all applicable Legal Requirements and taken all reasonable actions, consistent with applicable industry practices, to protect the integrity and security of the Systems and the Company Data and other information stored or processed thereon.
Appears in 1 contract
Intellectual Property; Software. (a) Section 3.15(aSchedule 4.14(a) of the Company Disclosure Schedule (i) Schedules sets forth a complete and accurate list and summary description of (x) all Registered Intellectual Propertyissued Patents, Patent applications, registered Trademarks, Trademark applications, registered Copyrights and (y) all material Software products owned by registered Internet domain names within the Company or any of its SubsidiariesOwned IP (collectively, and material trademarks of the “Registered Company or any of its Subsidiaries, and (ii) specifies, where applicable, the jurisdictions in which Owned IP”). For each item of such Registered Intellectual Property has been issued or registered or in which an application for such issuance and registration has been filedCompany Owned IP, including the respective registration or application numbers and the names of all registered owners. Section 3.15(aSchedule 4.14(a) of the Company Disclosure Schedule lists any proceedings Schedules sets forth, as applicable, the jurisdiction, the Patent number, registration number or actions before any courtserial number, tribunal (including the United States Patent date of issuance, registration or application, and Trademark Office) related to any the name of the Registered Intellectual Property. The Company and its Subsidiaries have complied in all material respects with all applicable disclosure requirements and have not committed any fraudulent act in the application for and maintenance of any Intellectual Property owner or owners.
(b) Schedule 4.14(b) of the Company Disclosure Schedules sets forth a complete and its Subsidiaries. Each item accurate list and summary description of all corporate names, fictitious business names, product and service names, trade names, unregistered trademarks and service marks used by the Company or the Company Subsidiary.
(c) No material Registered Intellectual PropertyCompany Owned IP have at any time during the five (5) year prior to the date hereof expired, excluding any Registered Intellectual Property that is the subject of any application been cancelled, abandoned, allowed to lapse or other preliminary submission, is valid, subsisting and enforceablebeen rejected. All necessary registration, maintenance and renewal fees in connection with such for each item of Registered Intellectual Property Company Owned IP have been paid and paid, all necessary documents documents, recordations and certificates in connection with such Registered Intellectual Property Company Owned IP have been filed with the relevant patent, copyright, trademark Governmental Authority and all other actions required to be taken to maintain or other authorities for the purposes of maintaining perfect such Registered Intellectual PropertyCompany Owned IP in full force and effect by the applicable deadline and otherwise in accordance with all applicable Laws have been taken. All registrations for Registered Company Owned IP are in good standing and subsisting.
(bd) Except as set forth on Section 3.15(bThe Company and the Company Subsidiary exclusively own all right, title, and interest in and to the Company Owned IP, free and clear of any Liens other than Permitted Exceptions and the Contracts identified in Schedule 4.7(xxiii) of the Company Disclosure Schedule: . The Company and the Company Subsidiary have not granted any exclusive right or license in or to any Company Owned IP to any Person.
(e) No claim by any Person contesting the validity, enforceability, or ownership of any of the Company Intellectual Property has been made, is currently outstanding, or, to the Company’s Knowledge, is threatened, and, to the Company’s Knowledge, there are no grounds for the same.
(f) None of (i) the Company and its Subsidiaries own and have good and exclusive title to each item of the Company-Owned Intellectual Property, including all Registered Intellectual Property, free and clear of any Encumbrance, and have the valid and enforceable right to use, transfer, license and encumber all such Registered Intellectual Property (excluding any Registered Intellectual Property that is the subject of any application or other preliminary submission); (ii) the Company products and its Subsidiaries own services offered or have the right to use or operate under all of licensed by the Company Intellectual Property; or the Company Subsidiary to third parties in the conduct of its business (or proposed or contemplated by the Company or the Company Subsidiary to be offered or licensed), and (iii) the conduct of the Business, did or does infringe, misappropriate, or otherwise violate or conflict in any material respect with any Intellectual Property of any other Person anywhere in the world. No such claim has been made in the five (5) years prior to the Knowledge of date hereof, is currently outstanding, or, to the Company’s Knowledge, is threatened, and, to the Company’s Knowledge there are no grounds for the same. For purposes of this Section 4.14, the Company shall be deemed to have knowledge of a patent right if the Company has actual knowledge of the patent right or would be found to be on notice of such patent right as determined by reference to United States patent laws.
(g) To the Company’s Knowledge, as of the date of this Agreement, no Company Intellectual Property is being infringed or misappropriated by any third party.
(h) The Company Owned IP and the Company Licensed IP constitutes all of the Intellectual Property necessary to the operation and conduct of the business as conducted as of the date of this Agreement; and (iv) no Person has any rights to use any of the Company-Owned Intellectual Property except in the Ordinary Course of Business, nor has the Company or any of its Subsidiaries granted to any Person or authorized any Person to retain any ownership rights in the Company-Owned Intellectual Property. Except as set forth on Section 3.15(b) of the Company Disclosure Schedule, to the extent that any work, invention or Intellectual Property has been developed or created by an employee or a third party for the Company or any of its Subsidiaries, the Company and/or a Subsidiary has a written agreement with such employee or third party with respect thereto and thereby has obtained ownership of, and is the exclusive owner of, all Intellectual Property in such work, material or invention by operation of law or by valid assignment.
(c) The contracts, licenses, sublicenses and agreements listed on Section 3.15(c) of the Company Disclosure Schedule include all material contracts, licenses, sublicenses and agreements with respect to any of the Company Intellectual Property (excluding any commercial off-the-shelf software) (“IP Licenses”). All of the IP Licenses are in full force and effect. Neither the execution nor delivery of this Agreement nor the consummation of the transactions contemplated hereby will violate or result in the breach, modification, cancellation, termination, or suspension of any of the IP Licenses without the payment of additional amounts other than ongoing fees, except for any such breach, modification, cancellation, termination, or suspension, which would not reasonably be expected to have a Company Material Adverse Effect. Except as listed on Section 3.15(c) of the Company Disclosure Schedule, there are no contracts, licenses, sublicenses or agreements between the Company or any of its Subsidiaries and any other Person with respect to the Company Intellectual Property under which there is any dispute Known to the Company regarding the scope of any such agreement, or performance under such contract, license, sublicense or agreement, including with respect to any payments to be made or received by the Company or any of its Subsidiaries thereunder.
(d) Except as set forth in Section 3.15(d) of the Company Disclosure Schedule, to the Knowledge of the Company, no Person has or is infringing, misappropriating or violating any material Company-Owned Intellectual Property.
(e) Except as set forth in Section 3.15(e) of the Company Disclosure Schedule, (i) the operation of the business of the Company and its Subsidiaries has not and does not infringe (directly, contributorily, by inducement, or otherwise), misappropriate or violate the Intellectual Property of any Person issued, granted or otherwise protected under the laws of the United States or Canada and has not and does not constitute unfair competition or trade practices under the Laws of the United States or Canada or any state, province or local jurisdiction therein, and (ii) to the Knowledge of the Company, the operation of the business of the Company and its Subsidiaries has not and does not infringe (directly, contributorily, by inducement, or otherwise), misappropriate or violate the Intellectual Property of any Person issued, granted or otherwise protected under the laws of any jurisdiction outside of the United States and Canada and has not and does not constitute unfair competition or trade practices under the laws of any jurisdiction outside of the United States and Canada. Except as set forth in Section 3.15(e) of the Company Disclosure Schedule, no claims with respect to any of the Company Intellectual Property have been asserted or, to the Knowledge of the Company, threatened by any Person.
(f) No Company-Owned Intellectual Property, or product or Software of the Company produced using or embodying the Company-Owned Intellectual Property, is subject to any proceedings or outstanding Order or stipulation restricting in any material manner the sale, use or licensing thereof by the Company or any of its Subsidiaries, or which materially affect the validity, use or enforceability of such Company-Owned Intellectual Property.
(g) The Company and its Subsidiaries have taken all material steps that are reasonably required or necessary to protect its rights in operate the Company’s and its Subsidiaries’ material confidential information and trade secrets, and any material confidential information or trade secrets of third parties provided to it related thereto. The Company and its Subsidiaries have enforced a policy requiring each employee and contractor to execute proprietary information and confidentiality agreements substantially in their standard forms, and all current employees and contractors of the Company and its Subsidiaries have executed such an agreement.
(h) Except business as set forth in Section 3.15(h) of the Company Disclosure Schedule, neither this Agreement nor the transactions contemplated by this Agreement will result in (i) the Surviving Entity or its Subsidiaries granting to any Person any right to or with respect to any Company Intellectual Property, or (ii) the Surviving Entity or any of its Subsidiaries being obligated to pay any royalties or other amounts to any Person in excess of those payable by the Company and its Subsidiaries prior to the Closing. The consummation of the transactions contemplated by this Agreement will not result in the loss of, or otherwise adversely affect, any ownership rights of the Company and its Subsidiaries in any Company-Owned Intellectual Propertycurrently conducted.
(i) The Company and its Subsidiaries the Company Subsidiary have secured any export licenses that are necessary or appropriate taken reasonable steps to protect their trade secrets, including by having officers, employees and consultants of the Company and the Company Subsidiary execute agreements providing for the protection of proprietary information of the Company and the Company Subsidiary. All current distribution and former officers, employees and consultants of the Company and the Company Subsidiary who are or have been involved in the creation or development of Company Owned IP have executed and delivered to Company and the Company Subsidiary an enforceable agreement providing for the present assignment by such persons to Company and the Company Subsidiary of any Intellectual Property made in the course of such persons’ employment or engagement. To the Company’s Knowledge, no officer, employee or consultant of Company and the Company Subsidiary is in violation of any term of any such proprietary information and assignment agreement between such Person and the Company or the Company Subsidiary. Except as set forth on Schedule 4.14(i) of the Company Disclosure Schedules, the Company and the Company Subsidiary have filed or recorded with the applicable Governmental Authority all assignments from each inventor of each Patent for which the Company or the Company Subsidiary have filed a Patent application necessary to vest sole and exclusive ownership in such Patent in the Company or the Company Subsidiary. To the Company’s Knowledge, it will not be necessary for the Company or the Company Subsidiary to use, in the Company’s business or in the Company Subsidiary’s business as presently conducted or as proposed or contemplated by the Company or the Company Subsidiary to be conducted, any inventions or other Intellectual Property of any of its employees or independent contractors (or Persons it currently intends to hire or engage) made or conceived prior to their employment or engagement by the Company’s and its Subsidiaries’ products and Software outside Company or the United StatesCompany Subsidiary.
(j) Except as set forth in Section 3.15(jon Schedule 4.7(xx), Schedule 4.7(xxiii), or Schedule 4.7(xxiv) of the Company Disclosure ScheduleSchedules, no the Company and the Company Subsidiary (i) have not licensed or otherwise granted any right to any Person under any Company Intellectual Property or agreed not to assert any such Company Intellectual Property against any Person, in each case except as would not reasonably be expected to be material to the Company and the Company Subsidiary, and (ii) are not bound by or a party to any options, claims, encumbrances, or shared ownership interests of any kind (including restrictions, obligations, or limitations resulting from and imposed by disputes and/or settlements), other than Permitted Exceptions.
(k) As of the date of this Agreement, to the Company’s Knowledge, none of the Company Software that Company currently licenses to its customers contains any problem, defect, deficiency, bug or error that (A) materially and adversely affects the use, functionality, or performance of such Company Software or any product or system containing or used in conjunction with such Company Software, (B) prevents or reasonably might prevent such Company Software from operating substantially as described in any applicable documentation, specification, warranty or other contractual commitment relating to the use, functionality, or performance of such Company Software or any product or system containing or used in conjunction with such Company Software or (C) prevents or reasonably might prevent the Company or the Company Subsidiary from conducting its business as presently conducted or as proposed or contemplated by the Company or the Company Subsidiary to be conducted. No Company Software contains any “back door,” “drop dead device,” “time bomb,” “Trojan horse,” “virus,” “worm,” “spyware” or “adware” (as such terms are commonly understood in the software industry) or any other code, designed or intended to have, or that does perform or facilitate any of the following functions: (1) disrupting, disabling, harming, or otherwise impeding in any manner the operation of, or providing unauthorized access to, a computer system or network or other device on which such code is stored or installed, or (2) compromising the privacy or data security of a user, or damaging or destroying any data or file without the user’s consent (collectively, “Malicious Code”). The Company and the Company Subsidiary implements reasonable measures designed to prevent the introduction of Malicious Code into Company Software, including firewall protections and regular virus scans.
(l) The Company and the Company Subsidiary have not embedded with or included in any of their products distributed to any third party, or in any product in development, any software, libraries, source code, or other component subject to open source, public source or freeware software, code or other technologycopyright, or community source code licenses (by way of illustration and not limitation, the GNU General Public License, Lesser GNU Public License, or Mozilla Public License) or that is otherwise subject to any modification requirement that such materials be distributable or derivative thereofotherwise made available to recipients of such products distributed by the Company and the Company Subsidiary or that would directly or indirectly (i) create, including any version or purport to create, obligations on the Company or the Company Subsidiary with respect to use or distribution by the Company or the Company Subsidiary of any software licensed pursuant that incorporates, is combined with, or is derived from the Company Intellectual Property, (ii) grant, purport to grant, or require the Company or the Company Subsidiary to grant to any GNU general public license third party any rights or limited general public licenseimmunities under the Company Intellectual Property or proprietary rights in any software that incorporates, was is combined with, or isis derived from the Company Intellectual Property, used inand/or (iii) require as a condition of its use, modification, and/or distribution, that any software incorporated into, integrated or bundled withderived from, or used distributed with the Company Intellectual Property must be disclosed or distributed in the development or compilation any form.
(other than generally available commercial compilersm) of, any Software. With the sole exception of Open SSL, all open source, public source or freeware software, code and technology set forth in Section 3.15(jSchedule 4.14(m) of the Company Disclosure Schedule (i) is only used internally by the Company and its Subsidiaries and solely for internal purposes; (ii) except Schedules sets forth each location where such source code exists presently. Except as set forth on Section 3.15(jSchedule 4.14(m) of the Company Disclosure ScheduleSchedules, has not been incorporated into or combined with any Software; and (iii) is not licensed or otherwise provided or distributed to any Person. To the extent any open source, public source or freeware software, code or technology is incorporated into or combined with any Software, to the Knowledge of the Company, there are alternatives for such software, code or technology that are readily available.
(k) The Company has exercised commercially reasonable efforts to ensure that all no source code for all any Company Software contains clear and accurate annotations and programmer’s comments, and otherwise has been documented in a professional manner that delivered, licensed, or made available to any escrow agent or other Person who is both: (i) consistent with customary code annotation conventions; and (ii) sufficient to independently enable a programmer not, as of reasonable skill and competence to understandthe date of this Agreement, analyze, and interpret program logic, correct errors and improve, enhance, modify and support an employee of Company or the SoftwareCompany Subsidiary. Except as set forth in Section 3.15(kon Schedule 4.14(m) of the Company Disclosure ScheduleSchedules, (i) none of the source code of the Software has been published or disclosed or licensed or made available to any Person other than employees of Company and the Company or one of its Subsidiaries subject to confidentiality obligations, and (ii) no licenses or rights have been granted to any Person to distribute or to otherwise use or create derivative works from the source code for any Software. Neither the Company nor any of its Subsidiaries has Subsidiary are not under any duty or obligation (whether present, contingent, or otherwise) to deliver, license, or make available the source code for any Company product or Software to any escrow agent or other Person. No event has occurred, and no circumstance or condition exists, that (with or without notice or lapse of time) will, or could reasonably be expected to, result in the delivery, license, or disclosure of any source code for any Company Software to any other Person except who is not, as set forth in Section 3.15(k) of the date of this Agreement, an employee of Company Disclosure Scheduleor the Company Subsidiary.
Appears in 1 contract
Intellectual Property; Software. (a) Section 3.15(a) of the Company Disclosure Schedule (i) sets forth a complete and accurate list of (x) all Registered Intellectual Property, and (y) all material Software products owned by Property used or held for use in the Company or any of its Subsidiaries, and material trademarks of the Company or any of its Subsidiaries, Business and (ii) specifies, where applicable, the jurisdictions in which each item of such Registered Intellectual Property has been issued or registered or in which an application for such issuance and registration has been filed, including the respective registration or application numbers and the names of all registered owners. Section 3.15(a3.15(a)(iii) of the Company Disclosure Schedule lists any proceedings or actions Proceedings before any court, tribunal Governmental Authority (including the United States Patent and Trademark OfficeOffice or equivalent authority anywhere in the world) related to any of the Registered Intellectual PropertyProperty used or held for use in the Business. The Company and its Subsidiaries have Valence Parent has complied in all material respects with all applicable disclosure requirements and have has not committed any fraudulent act in the application for and maintenance of any Registered Intellectual Property of used or held for use in the Company and its SubsidiariesBusiness. Each item of Registered Intellectual Property, excluding any Registered Intellectual Property used or held for use in the Business that is the subject of any application issued or other preliminary submission, registered is valid, subsisting and enforceable. All necessary registration, maintenance and renewal fees in connection with such the Registered Intellectual Property used or held for use in the Business have been paid made and all necessary documents and certificates in connection with such Registered Intellectual Property have been filed with the relevant patent, copyright, trademark or other authorities for the purposes of maintaining such Registered Intellectual Property.
(b) Except as set forth on Section 3.15(b) of the Company Disclosure Schedule: (i) the Company Valence Parent owns and its Subsidiaries own and have has good and exclusive title to each item of the Company-Owned Intellectual Property, including all Registered Intellectual Property, free and clear of any Encumbrance, other than Permitted Encumbrances, and have has the valid and enforceable right to use, transfer, license and encumber all such Registered Owned Intellectual Property (excluding any Registered Intellectual Property that is the subject of any application or other preliminary submission)Property; (ii) the Company and its Subsidiaries own or have Valence Parent has the right to use or operate under all of the Company other material Valence Intellectual PropertyProperty used in the conduct of the Business; and (iii) the Valence Intellectual Property held by Valence Parent after giving effect to the Knowledge of the Company, the Company Intellectual Property Reorganization constitutes all of the Intellectual Property necessary to the operation and conduct of the business Business as conducted as of the date of this Agreementcurrently conducted; and (iv) no Person Valence Parent has any rights to use any of the Company-Owned Intellectual Property except in the Ordinary Course of Business, nor has the Company or any of its Subsidiaries not granted to any Person or authorized any Person to retain any ownership rights in the Company-Owned Intellectual Property; provided that the foregoing shall not constitute a non-infringement representation or warranty, which is addressed solely in Section 3.15(e). Except as set forth on Section 3.15(b) of the Company Disclosure Schedule, to To the extent that any work, invention or material Intellectual Property has been developed or created by an employee or a third party for the Company or any of its SubsidiariesValence Parent, the Company and/or a Subsidiary Valence Parent has a written agreement with such employee or third party with respect thereto and thereby has obtained ownership of, and is the exclusive owner of, all Intellectual Property in such work, material or invention Intellectual Property by operation of law or by valid assignment.
(c) The contracts, licenses, sublicenses and agreements listed on Section 3.15(c) of the Company Disclosure Schedule include all material contracts, licenses, sublicenses and agreements agreements: (i) pursuant to which Valence Parent is authorized to use any third-party Intellectual Property used or held for use in the Business excluding any licenses for commercially available Software with respect a total or annual fee of less than $20,000 (“In-Bound IP License”); and (ii) pursuant to which any of the Company Person is authorized to use, exploit or is granted a license to use or enforce any Owned Intellectual Property (excluding any commercial offnon-theexclusive licenses contained in customer contracts entered into in the Ordinary Course of Business by Valence Parent (a form of which has been provided to Evolent), non-shelf softwaredisclosure and confidentiality agreements and employment agreements) (“Out-Bound IP License,” which together with the In-Bound IP Licenses shall be collectively referred to herein as the “IP Licenses”). All of the IP Licenses are in full force and effect. Neither the execution nor delivery of this Agreement nor the consummation of the transactions contemplated hereby will violate or result in the breach, modification, cancellation, termination, or suspension of any of the IP Licenses. Valence Parent is in compliance with, and has not breached any term of, any of the IP Licenses to which it is a party and, to the Knowledge of Valence Parent, all other parties to any of the IP Licenses are in compliance with, and have not breached any term of, such contracts, licenses, sublicenses and agreements. Following the Closing, the Surviving Entity will be permitted to exercise all of Valence Parent's rights under the IP Licenses without the payment of any additional amounts or consideration other than ongoing fees, except for any such breach, modification, cancellation, termination, royalties or suspension, payments which Valence Parent would not reasonably otherwise be expected required to have a Company Material Adverse Effectpay. Except as listed on Section 3.15(c) of the Company Disclosure Schedule, there are no contracts, licenses, sublicenses or agreements between the Company or any of its Subsidiaries Valence Parent and any other Person with respect to the Company Valence Intellectual Property under which there is any dispute Known to the Company regarding the scope of any such agreement, or performance under such contract, license, sublicense or agreement, including with respect to any payments to be made or received by the Company or any of its Subsidiaries Valence Parent thereunder.
(d) Except as set forth in Section 3.15(d) of the Company Disclosure Schedule, to To the Knowledge of the CompanyValence Parent, no Person has or is infringing, misappropriating misappropriating, diluting or violating any material Company-of the Owned Intellectual Property.
(e) Except as set forth in Section 3.15(e) To the Knowledge of the Company Disclosure ScheduleValence Parent, (i) the operation of the business of Valence Parent as currently conducted and the Company and its Subsidiaries has Owned Intellectual Property have not and does do not infringe (directlyinfringe, contributorilymisappropriate, by inducement, or otherwise), misappropriate dilute or violate the Intellectual Property of any Person issued, granted or otherwise protected under the laws of the United States or Canada and has have not and does do not constitute unfair competition or trade practices under the Laws of the United States or Canada or any state, province or local jurisdiction therein, and (ii) to the Knowledge of the Company, the operation of the business of the Company and its Subsidiaries has not and does not infringe (directly, contributorily, by inducement, or otherwise), misappropriate or violate the Intellectual Property of any Person issued, granted or otherwise protected under the laws of any jurisdiction outside of the United States and Canada and has not and does not constitute unfair competition or trade practices under the laws of any jurisdiction outside of the United States and Canadaapplicable Legal Requirements. Except as set forth in Section 3.15(e) of the Company Disclosure Schedule, no claims with respect to any of the Company Owned Intellectual Property have been asserted oror threatened in writing by any Person against Valence Parent and, to the Knowledge of the CompanyValence Parent, threatened by any Personthere exists no reasonable basis therefor.
(f) No Company-Owned Intellectual Property, or product or Software of the Company produced using or embodying the Company-Owned Intellectual Property, Property is subject to any proceedings Proceedings asserted against Valence Parent or outstanding Order injunction, decree, Order, judgment, or stipulation restricting in any material manner the sale, use or licensing thereof by the Company or any of its SubsidiariesValence Parent, or which may materially affect the validity, use or enforceability of such Company-Owned Intellectual Property.
(g) The Company and its Subsidiaries have Valence Parent has taken all material steps that are reasonably required or reasonably necessary to protect its rights in the Company’s and its Subsidiaries’ material Valence Parent's confidential information and trade secrets, and any material trade secrets or confidential information or trade secrets of third parties provided to it related thereto. The Company and its Subsidiaries have Without limiting the foregoing, Valence Parent has enforced a policy requiring each employee and contractor to execute proprietary information and confidentiality agreements substantially in their standard formsagreements, and all current and former employees and contractors of the Company and its Subsidiaries Valence Parent have executed such an agreement.
(h) Except as set forth in Section 3.15(h) of the Company Disclosure Schedule, neither Neither this Agreement nor the transactions contemplated by this Agreement will result in (i) the Surviving Entity or its Subsidiaries granting to any Person any right to or with respect to any Company material Owned Intellectual Property, or ; (ii) the Surviving Entity being bound by, or subject to, any of its Subsidiaries non-compete or other restriction; or (iii) the Surviving Entity being obligated to pay any royalties or other amounts to any Person in excess of those payable by Valence Parent prior to the Company and its Subsidiaries Closing. No licenses or other consents are required from any Person to permit the Surviving Entity to fully exploit any Valence Intellectual Property used or held for use in the Business consistent with Valence Parent's conduct of the Business immediately prior to the Closing. The consummation of the transactions contemplated by this Agreement will not result in the loss of, or otherwise adversely affect, any ownership rights of the Company and its Subsidiaries Valence Parent in any Company-Owned Intellectual PropertyProperty or result in the breach or termination of any material IP Licenses.
(i) The Company and its Subsidiaries have secured any export licenses that are necessary or appropriate for the current distribution of any Except as set forth in Section 3.15(i) of the Company’s and its Subsidiaries’ products Disclosure Schedule, each product and Software outside of Valence Parent and the United Statesinformation technology systems used to operate the Business: (i) conform in all material respects to the specifications and documentation therefor; (ii) have appropriate security, backups, disaster recovery arrangements, and hardware and software support and maintenance to minimize the risk of material error, breakdown, failure, data loss or security breach occurring and to ensure if such event does occur that it does not cause a material disruption to the Business; (iii) are configured and maintained to minimize the effects of viruses and, to the Knowledge of Valence Parent, do not contain Trojan horses, spyware, adware, malware, or other malicious code; and (iv) have not suffered any material error, breakdown, failure, or security breach in the last twenty-four (24) months that has caused disruption or damage to the Business or Valence Parent or was reportable to any Governmental Authority or Person.
(j) Except as set forth in Section 3.15(j) of the Company Disclosure Schedule, no open source, public source or freeware software, code or other technology, or any modification or derivative thereof, including any version of any software licensed pursuant to any GNU general public license or limited general public license, Open Source Software was or is, used in, incorporated into, integrated or bundled with, or used in the development or compilation (other than generally available commercial compilers) of, of any Owned Software. With the sole exception of Open SSL, all open source, public source or freeware software, code and technology Except as set forth in Section 3.15(j) of the Company Disclosure Schedule Schedule, Valence Parent does not use any Open Source Software or any modification or derivative thereof in a manner that would (i) is only used internally by require, or condition the Company and its Subsidiaries and solely use or distribution of, or access to, such Software on, the disclosure, licensing, or distribution of, or access to, the source code for internal purposes; the Owned Software, or (ii) except as set forth on Section 3.15(j) restrict any Person’s ability to charge for distribution of the Company Disclosure Schedule, has not been incorporated into or combined with any Owned Software; and (iii) is not licensed or otherwise provided or distributed to any Person. To the extent any open source, public source or freeware software, code or technology is incorporated into or combined with any Software, to the Knowledge of the Company, there are alternatives for such software, code or technology that are readily available.
(k) The Company has exercised commercially reasonable efforts to ensure that all source code for all Owned Software used or held for use in the Business contains reasonably clear and accurate annotations and programmer’s comments, and otherwise has been documented in a professional manner that is both: (i) consistent with customary code annotation conventionsconventions in the software industry; and (ii) sufficient to independently enable a programmer of reasonable skill and competence to understand, analyze, and interpret program logic, correct errors and improve, enhance, modify and support the Owned Software. Except as set forth in Section 3.15(k) of the Company Disclosure Schedule, (iA) none of the source code of the Software has been published or disclosed or licensed or made available to any Person other than employees or contractors of the Company or one of its Subsidiaries Valence Parent subject to confidentiality obligations, and (iiB) no licenses or rights have been granted to any Person to distribute or to otherwise use or create derivative works from the source code for any Owned Software. Neither the Company nor any of its Subsidiaries has Valence Parent does not have any duty or obligation (whether present, contingent, or otherwise) to deliver, license, or make available the source code for any Company product or Software used or held for use in the Business to any escrow agent or other Person except as set forth in Section 3.15(k) of the Company Disclosure Schedule.
Appears in 1 contract
