Common use of Technology and Intellectual Property Rights Clause in Contracts

Technology and Intellectual Property Rights. (a) For the purposes of this Agreement, "INT'X.XXX INTELLECTUAL PROPERTY" consists of the following intellectual property: (i) all patents, trademarks, trade names, service marks, trade dress, copyrights and any renewal rights therefor, mask works, schematics, software, firmware, technology, manufacturing processes, supplier lists, customer lists, trade secrets, know-how, moral rights and applications and registrations for any of the foregoing; (ii) all documents, records and files relating to design, end user documentation, manufacturing, quality control, sales, marketing or customer support for all intellectual property described herein; (iii) all other tangible or intangible proprietary information and materials; and (iv) all license and other rights in any third party product or any third party intellectual property described in (i) through (iii) above; that are owned or held by or on behalf of INT'X.xxx or any Material INT'X.xxx Subsidiary or that are being used, and/or have been used since January 1, 1999, or are currently under development by or for INT'X.xxx or any Material INT'X.xxx Subsidiary for use, in the business of INT'X.xxx or any Material INT'X.xxx subsidiary as it has been, is currently or is currently planned to be conducted in 2000; PROVIDED, HOWEVER, that the term INT'X.xxx Intellectual Property does not include any commercially available third party software or related intellectual property. (b) Section 3.5 of the INT'X.xxx Disclosure Schedule lists: (i) all patents, copyright registrations, mask works, registered trademarks, registered service marks, trade dress, any renewal rights for any of the foregoing, and any applications and registrations for any of the foregoing, that are included in INT'X.xxx Intellectual Property and owned by or on behalf of INT'X.xxx or any Material INT'X.xxx Subsidiary; (ii) all hardware products and tools, software products and tools and services that are currently published, offered, or under development by INT'X.xxx or any Material INT'X.xxx Subsidiary; and (iii) all licenses, sublicenses and other agreements to which INT'X.xxx is a party and pursuant to which INT'X.xxx or any Material INT'X.xxx Subsidiary or any other person is authorized to use any INT'X.xxx Intellectual Property or exercise any other right with regard thereto.

Technology and Intellectual Property Rights. (a) For the purposes of this Agreement, "INT'X.XXX INTELLECTUAL PROPERTYOnex Intellectual Property" -------------------------- consists of the following intellectual property: (i) all patents, trademarks, trade names, service marks, trade dress, copyrights and any renewal rights therefor, mask works, schematics, software, firmware, technology, manufacturing processes, supplier lists, customer lists, trade secrets, know-how, moral rights and applications and registrations for any of the foregoing; (ii) all documents, records and files relating to design, end user documentation, manufacturing, quality control, sales, marketing or customer support for all intellectual property described herein; (iii) all other tangible or intangible proprietary information and materials; and (iv) all license agreements entered into, and other rights licensed by Onex in any third party product or any third party intellectual property described in (i) through (iii) above; that are owned or held by or on behalf of INT'X.xxx or any Material INT'X.xxx Subsidiary Onex or that are being usedbeing, and/or have been used since January 1been, 1999used, or are currently under development by or for INT'X.xxx or any Material INT'X.xxx Subsidiary for use, in the business of INT'X.xxx or any Material INT'X.xxx subsidiary Onex as it has been, is currently or is currently planned to be conducted in 2000conducted; PROVIDEDprovided, HOWEVERhowever, that the term INT'X.xxx Onex Intellectual Property does will not include any commercially available third party software or related intellectual property. (b) Section 3.5 of the INT'X.xxx Onex Disclosure Schedule lists: (i) all patents, copyright registrations, mask works, registered trademarks, registered service marks, trade dress, any renewal rights for any of the foregoing, and any applications and registrations for any of the foregoing, that are included in INT'X.xxx Onex Intellectual Property and owned by or on behalf of INT'X.xxx or any Material INT'X.xxx SubsidiaryProperty; (ii) all hardware products and tools, software products and tools and services that are currently published, offered, or under development by INT'X.xxx or any Material INT'X.xxx SubsidiaryOnex; and (iii) all licenses, sublicenses and other agreements to which INT'X.xxx Onex is a party and pursuant to which INT'X.xxx or any Material INT'X.xxx Subsidiary Onex or any other person is authorized to use any INT'X.xxx Onex Intellectual Property or exercise any other right with regard thereto. The disclosures described in (iii) hereof include the identities of the parties to the relevant agreements, a description of the nature and subject matter thereof, the term thereof and the applicable royalty or summary of any formula or procedure for determining such royalty. In the event and to the extent that Onex discovers that any Onex Intellectual Property was omitted from the Onex Disclosure Schedule, all rights in the same shall be transferred and shall be deemed to have been transferred to TranSwitch on the same basis as all other rights to Onex Intellectual Property hereunder, and the tangible forms of such Onex Intellectual Property will be promptly provided to TranSwitch if, as and when discovered. (c) Onex Intellectual Property consists solely of items and rights that are either: (i) owned by Onex; or (ii) are licensed by Onex and its successors from a third party to use pursuant to a valid license which Onex has entered into with such third party. All Onex Intellectual Property that consists of license or other rights to third party property is separately set forth in Section 3.5 of the Onex Disclosure Schedule. Onex has all rights in Onex Intellectual Property necessary to carry out Onex's current, former and planned future activities, including without limitation rights to make, use, exclude others from making, using, selling or offering for sale (to the extent Onex holds issued patents), reproduce, modify, adapt, create derivative works based on, translate, distribute (directly and indirectly), transmit, display and perform publicly, license, rent, lease, assign and sell Onex Intellectual Property in all geographic locations and fields of use, and to sublicense any or all such rights to third parties, including the right to grant further sublicenses. (d) Onex is not, nor as a result of the execution or delivery of the Transaction Documents, or performance of Onex's obligations hereunder or the consummation of the Merger, will Onex be, in violation of any license, sublicense or other agreement relating to any Onex Intellectual Property to which Onex is a party. Onex is not obligated to provide any consideration (whether financial or otherwise) to any third party, nor has Onex been notified by any third party that such third party is entitled to any consideration, with respect to any exercise of rights by Onex or TranSwitch, as successor to Onex, in Onex Intellectual Property. (e) The use, reproduction, modification, distribution, licensing, sublicensing, sale, or any other exercise of rights by Onex in any product, work, technology, service or process as used, provided, or offered at any time by Onex, or as proposed by Onex for use, reproduction, modification, distribution, licensing, sublicensing, sale, or any other exercise of rights, by Onex does not infringe any copyright, patent, trade secret, trademark, service mark, trade name, firm name, logo, trade dress, mask work, moral right, xxher intellectual property right, right of privacy, or right in personal data of any Person. To Onex's knowledge no claims (i) challenging the validity, effectiveness, or ownership by Onex of any Onex Intellectual Property, or (ii) that Onex's use, reproduction, modification, manufacturing, distribution, licensing, sublicensing, sale, or Onex's exercise of any other rights in any Onex product, work, technology, service, or process as used, provided or offered at any time by Onex, or as proposed for use by Onex, reproduction, modification, distribution, licensing, sublicensing, sale, or any other exercise of rights by Onex infringes or will infringe on any intellectual property or other proprietary or personal right of any Person have been asserted against Onex or, to the knowledge of Onex (as defined below), are threatened by any Person nor are there any valid grounds for any bona fide claim of any such kind. There are no known legal or governmental proceedings, including interference, re-examination, reissue, opposition, nullity, or cancellation proceedings pending that relate to any Onex Intellectual Property, other than review of pending applications for patents or trademarks, and Onex is not aware of any information indicating that such proceedings are threatened or contemplated by any Governmental Entity or any other Person. All granted or issued patents and mask works and all registered trademarks and copyright registrations owned by Onex are to Onex's knowledge valid, enforceable and subsisting. To the knowledge of Onex, there is no unauthorized use, infringement, or misappropriation of any Onex Intellectual Property by any third party, employee or former employee. (f) Section 3.5 of the Onex Disclosure Schedule separately lists all parties (other than employees) who have been retained or engaged by Onex and have created any portion of, or otherwise have any rights in or to, such Onex Intellectual Property, other than Onex Intellectual Property that is licensed to Onex. Onex has secured from all parties who have created any portion of, or otherwise have any rights in or to, Onex Intellectual Property valid and enforceable written assignments of any such work or other rights to Onex and has provided true and complete copies of such assignments to TranSwitch. (g) Onex has obtained written agreements from all employees and from third parties with whom Onex, to its knowledge, has shared confidential proprietary information (i) of Onex, or (ii) received from others that Onex is obligated to treat as confidential and to obtain the written agreement of employees and others to keep confidential. Such written agreements require such employees and third parties to keep such information confidential in accordance with the terms thereof. Onex has made available copies of such written agreements, as executed, to TranSwitch. (h) Notwithstanding any provision of this Agreement in general or Section 3.5 in particular which may indicate or suggest the contrary, the following Onex Intellectual Property shall be conveyed to TranSwitch on an AS-IS basis only, with no warranties or representations of any kind having been made or to be implied, together with any and all liabilities that may be associated therewith: The Onex Intellectual Property assigned to Onex (the "Assigned Intellectual Property") pursuant to the Assignment Agreement by and between TranSwitch and Onex, dated as of September 17, 1999, as amended to date. It is further agreed that, if TranSwitch shall be subject to monetary losses of any kind, including but not limited to claims, judgements, settlements and fines, related to the infringement or alleged infringement of the rights of any third party by any Onex Intellectual Property that is derived from the Assigned Intellectual Property, then TranSwitch shall have a right of reimbursement pursuant to Article X hereof for an amount equal to (a) 50% of such claim, judgement, settlement and fine and (b) 100% of attorneys fees and other costs related to such claim, judgement, settlement or fine. (i) Any breach of the representations and warranties set forth in this Section 3.5 shall be deemed to be unintentional, absent clear and convincing evidence to the contrary. However, it is agreed that such presumption shall not affect the rights of TranSwitch to reimbursement with respect to any and all losses related to any such breach to which TranSwitch is otherwise entitled pursuant to Article X.

Technology and Intellectual Property Rights. (a) For the purposes of this Agreement, "INT'X.XXX INTELLECTUAL PROPERTYCompany Intellectual Property" consists of the following intellectual property, to the extent not in the public domain: (i) all patents, trademarks, trade names, domain names, service marks, trade dress, copyrights and any renewal rights therefor, mask works, schematics, software, firmware, technology, manufacturing processes, supplier lists, customer lists, trade secrets, know-how, moral rights and applications and registrations for any of the foregoing; (ii) all documents, records and files relating to design, end user documentation, manufacturing, quality control, sales, marketing or customer support for all intellectual property described herein; (iii) all other tangible or intangible proprietary information and materials; and (iv) all license and other rights in any third party product or any third party intellectual property described in (i) through (iii) above; that are owned or held by or on behalf of INT'X.xxx or any Material INT'X.xxx Subsidiary Company or that are being usedbeing, and/or have been used since January 1been, 1999used, or are currently under development by or for INT'X.xxx or any Material INT'X.xxx Subsidiary for use, in the business of INT'X.xxx or any Material INT'X.xxx subsidiary Company as it has been, is currently or is currently planned to be conducted in 2000; PROVIDED, HOWEVER, that the term INT'X.xxx Intellectual Property does not include any commercially available third party software or related intellectual property. (b) Section 3.5 conducted. Schedule 4.14 of the INT'X.xxx Company Disclosure Schedule lists: (i) all patents, copyright registrations, mask works, registered trademarks, registered service marks, trade dressdomain names, any renewal rights for any of the foregoing, and any applications and registrations for any of the foregoing, that are included in INT'X.xxx Company Intellectual Property and owned by or on behalf of INT'X.xxx or any Material INT'X.xxx SubsidiaryCompany; (ii) all hardware products and tools, software products and tools and services that are currently published, offered, or under development by INT'X.xxx or any Material INT'X.xxx SubsidiaryCompany; and (iii) all licenses, sublicenses and other agreements to which INT'X.xxx Company is a party and pursuant to which INT'X.xxx or any Material INT'X.xxx Subsidiary Company or any other person is authorized to use any INT'X.xxx Company Intellectual Property or exercise any other right with regard thereto. The disclosures described in (iii) hereof include the identities of the parties to the relevant agreements, a description of the nature and subject matter thereof, the term thereof and the applicable royalty or summary of any formula or procedure for determining such royalty. (b) Company Intellectual Property consists solely of items and rights that are either: (i) owned solely by Company; or (ii) rightfully used and authorized for use by Company and its successors pursuant to a valid license. All Company Intellectual Property that consists of license or other rights to third party property is separately set forth in Schedule 4.14. Company has all rights in Company Intellectual Property to the extent necessary to carry out Company's current, former and planned future activities. (c) Except as set forth in Schedule 4.14(c), the Company is not, nor as a result of the execution or delivery of this Agreement and all other agreements contemplated hereby, or performance of Company's obligations hereunder or the consummation of the Merger, will Company be, in violation of any license, sublicense or other agreement relating to any Company Intellectual Property to which Company is a party or otherwise bound. Except as set forth in Schedule 4.14(c), the Company is not obligated to provide any consideration (whether financial or otherwise) to any third party, nor is any third party otherwise entitled to any consideration, with respect to any exercise of rights by Company or Interland, as successor to Company, in Company Intellectual Property. (d) Subject to the "Commercial IP Exception" (defined below), the use, reproduction, modification, distribution, licensing, sublicensing, sale, or any other exercise of rights in any product, work, technology, service or process as used, provided, or offered at any time, or as proposed for use, reproduction, modification, distribution, licensing, sublicensing, sale, or any other exercise of rights, by Company does not infringe any copyright, patent, trade secret, trademark, service mark, trade name, domain name, firm name, logo, moral right, xxxer intellectual property right, right of privacy, or right in personal data of any Person. "The Commercial IP Exception" applies to commercially available software or other intellectual property to which the Company in good faith believes it has a bona fide license from the owner. Company makes no representation that Company's exercise of rights with respect to such intellectual property does not violate the rights of any Person, but only that Company has no knowledge of such violation or infringement. No claims (i) challenging the validity, effectiveness, or ownership by Company of any Company Intellectual Property, or (ii) to the effect that the use, reproduction, modification, manufacturing, distribution, licensing, sublicensing, sale, or any other exercise of rights in any product, work, technology, service, or process as used, provided or offered at any time, or as proposed for use, reproduction, modification, distribution, licensing, sublicensing, sale, or any other exercise of rights, by Company infringes or will infringe on any intellectual property or other proprietary or personal right of any Person have been asserted to Company or are threatened by any Person nor, to the best of the knowledge of the Company, are there any valid grounds for any bona fide claim of any such kind. To the best of the knowledge of the Company there are no legal or governmental proceedings, including interference, re-examination, reissue, opposition, nullity, or cancellation proceedings pending that relate to any Company Intellectual Property, other than review of pending applications for patent, and Company is not aware of any information indicating that such proceedings are threatened or contemplated by any Governmental Entity or any other Person. All granted or issued patents and all registered trademarks and copyright registrations owned by Company are valid, enforceable and subsisting. To the best of the knowledge of the Company, there is no unauthorized use, infringement, or misappropriation of any Company Intellectual Property by any third party, employee or former employee. (e) Schedule 4.14 separately lists all parties (other than employees) who have created any portion of, or otherwise have any rights in or to, Company Intellectual Property, other than intellectual property described in the Commercial IP Exception. Company has secured from all parties who have created any portion of, or otherwise have any rights in or to, Company Intellectual Property (other than intellectual property described in the Commercial IP Exception) valid and enforceable written assignments of any such work or other rights to Company and has provided true and complete copies of such assignments to Purchaser. (f) Schedule 4.14(f) lists all confidentiality agreements Company has obtained from all employees and from third parties. Company is not in violation of any confidentiality or non-disclosure agreement made with any third party.

Technology and Intellectual Property Rights. (a) For the purposes of this Agreement, "INT'X.XXX NEXTPOINT INTELLECTUAL PROPERTY" consists of the following intellectual property: (i) all patents, trademarks, trade names, service marks, trade dress, copyrights and any renewal rights therefor, mask works, schematics, software, firmware, technology, manufacturing processes, supplier lists, customer lists, trade secrets, know-how, moral rights and applications and registrations for any of the foregoing; (ii) all documents, records and files relating to design, end user documentation, manufacturing, quality control, sales, marketing or customer support for all intellectual property described herein; (iii) all other tangible or intangible proprietary information and materials; and (iv) all license and other rights in any third party product or any third party intellectual property described in (i) through (iii) above; that are owned or held by or on behalf of INT'X.xxx or any Material INT'X.xxx Subsidiary NextPoint or that are being usedbeing, and/or have been used since January 1been, 1999used, or are currently under development by or for INT'X.xxx or any Material INT'X.xxx Subsidiary for useuse (which shall mean solely the Cobra Product Plan as of June 11, 2000 attached as SCHEDULE 3.5(A) ("Cobra Product Plan")) in the business of INT'X.xxx or any Material INT'X.xxx subsidiary NextPoint as it has been, is currently been or is currently planned to be conducted in 2000conducted; PROVIDED, HOWEVER, that the term INT'X.xxx NextPoint Intellectual Property does will not include any commercially available third party software or related intellectual property. (b) Section 3.5 3.5(b) of the INT'X.xxx Disclosure Schedule lists: (i) all patents, copyright registrations, mask works, registered trademarks, registered service marks, trade dress, any renewal rights for any of the foregoing, and any applications and registrations for any of the foregoing, that are included in INT'X.xxx NextPoint Intellectual Property and owned by or on behalf of INT'X.xxx or any Material INT'X.xxx Subsidiary; (ii) all hardware products and tools, software products and tools and services that are currently published, offered, or under development by INT'X.xxx or any Material INT'X.xxx SubsidiaryNextPoint; and (iiiii) all licenses, sublicenses and other agreements to which INT'X.xxx NextPoint is a party and pursuant to which INT'X.xxx or any Material INT'X.xxx Subsidiary NextPoint or any other person is authorized to use any INT'X.xxx NextPoint Intellectual Property or exercise any other right with regard thereto. (c) NextPoint Intellectual Property consists solely of items and rights that are either: (i) owned solely by NextPoint; (ii) in the public domain; or (iii) rightfully used and authorized for use by NextPoint and its successors pursuant to a valid license. All NextPoint Intellectual Property that consists of license or other rights to third party property (other than rights pursuant to generally commercially available software) is separately set forth in Section 3.5(c) of the Disclosure Schedule. Except as otherwise provided in the licenses listed in Section 3.5(b) of the Disclosure Schedule, NextPoint has all rights in NextPoint Intellectual Property necessary to carry out NextPoint's current and former activities and planned development of the Cobra Product referred to in the Cobra Product Plan, including without limitation rights to make, use, exclude others from using, reproduce, modify, adapt, create derivative works based on, translate, distribute (directly and indirectly), transmit, display and perform publicly, license, rent, lease, assign and sell NextPoint Intellectual Property in all geographic locations and fields of use, and to sublicense any or all such rights to third parties, including the right to grant further sublicenses. (d) NextPoint is not, nor as a result of the execution or delivery by it of this Agreement and the other Transaction Documents to which it is a party, or performance of NextPoint's obligations hereunder or the consummation of the Merger, will NextPoint be, in violation of any license, sublicense or other agreement relating to any NextPoint Intellectual Property to which NextPoint is a party or otherwise bound. NextPoint is not obligated to provide any consideration (whether financial or otherwise) to any third party, nor is any third party otherwise entitled to any consideration, with respect to any exercise of rights by NextPoint or Parent, as successor to NextPoint, in NextPoint Intellectual Property. (e) The business and operations of NextPoint, including the use by NextPoint of the NextPoint Intellectual Property, do not infringe any copyright, patent, trade secret, trademark, service xxxx, trade name, firm name, logo, trade dress, mask work, moral right, or other intellectual property right, of any Person, except for any such infringement that would not have a material adverse effect on the Business Condition of NextPoint. No claims (i) challenging the validity, effectiveness, or ownership by NextPoint of any NextPoint Intellectual Property, or (ii) to the knowledge of NextPoint, to the effect that the use, reproduction, modification, manufacturing, distribution, licensing, sublicensing, sale, or any other exercise of rights in any product, work, technology, service, or process as used, provided or offered at any time, or as proposed for use, reproduction, modification, distribution, licensing, sublicensing, sale, or any other exercise of rights, by NextPoint infringes or will infringe on any intellectual property or other proprietary or personal right of any Person have been asserted or, to the knowledge of NextPoint (as defined below), are threatened by any Person. There are no legal or governmental proceedings, including interference, re-examination, reissue, opposition, nullity, or cancellation proceedings pending that relate to any NextPoint Intellectual Property, other than review of pending applications for patent, and to NextPoint's knowledge, no such proceedings are threatened or contemplated by any Governmental Entity or any other Person. To NextPoint's knowledge, all granted or issued patents and mask works and all registered trademarks and copyright registrations owned by NextPoint are valid, enforceable and subsisting. To the knowledge of NextPoint, there is no unauthorized use, infringement, or misappropriation of any NextPoint Intellectual Property owned by NextPoint by any third party, employee or former employee. (f) Section 3.5(f) of the Disclosure Schedule separately lists all parties (other than employees) who have created any portion of, or otherwise have any rights in or to, material NextPoint Intellectual Property owned by NextPoint. NextPoint has secured from all such parties valid and enforceable written assignments of any such work or other rights to NextPoint and has made copies of such assignments available to Parent. (g) NextPoint has obtained written agreements from all employees and from third parties with whom NextPoint has shared confidential proprietary information (i) of NextPoint or (ii) received from others that NextPoint is obligated to treat as confidential and to obtain the written agreement of employees and others to keep confidential, which agreements require such employees and third parties to keep such information confidential in accordance with the terms thereof. NextPoint has made available copies of such written agreements, as executed, to Parent.