EXECUTION DRAFT November 26, 2002
Exhibit 4.37
CONFIDENTIAL TREATMENT REQUESTED: THE PORTIONS OF THIS AGREEMENT MARKED BY X'S
HAVE BEEN OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT AND HAVE BEEN
FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
LICENSE REFERENCE NO.: L024359
COPPER/RELATED FEOL TECHNOLOGY LICENSE AGREEMENT
This Copper/Related FEOL Technology License Agreement, dated and effective as of
26 November, 2002 (hereinafter referred to as the "Effective Date") is by and
between International Business Machines Corporation ("IBM"), incorporated under
the laws of the State of New York, U.S.A. and having an office for the
transaction of business at 0000 Xxxxx 00, Xxxxxxxx Xxxxxxxx, XX 00000, U.S.A.,
and Chartered Semiconductor Manufacturing Ltd. ("CHARTERED"), incorporated under
the laws of Singapore and having an office for the transaction of business at 00
Xxxxxxxxx Xxxxxxxxxx Xxxx X, Xxxxxx 0, Xxxxxxxxx 000000. IBM and CHARTERED may
be individually referred to herein as a "Party", or collectively as the
"Parties."
WHEREAS, IBM has developed certain confidential know-how and skills
pertaining to copper back end of line BEOL metallurgies and fluoro-silicate
glass interlevel dielectrics, and related front end of line (FEOL) techniques,
designated below as "Copper/Related FEOL Technology;" and
WHEREAS, CHARTERED wishes to obtain a license under such Copper/Related
FEOL Technology from IBM for the purposes of enabling CHARTERED's manufacture of
semiconductor wafers and related commercial activities utilizing such
Copper/Related FEOL Technology; and
WHEREAS, IBM wishes to disclose and license Copper/Related FEOL Technology
to CHARTERED;
NOW THEREFORE, in consideration of the premises and mutual covenants
contained herein, as well as for other good and valuable consideration, the
receipt and sufficiency of which is hereby acknowledged, IBM and CHARTERED agree
as follows.
SECTION 1 - DEFINITIONS
Unless expressly defined and used with an initial capital letter in this License
Agreement, words shall have their normally accepted meanings.
The following words shall have their described meanings:
"Bulk CMOS" shall mean CMOS semiconductor manufacturing technology carried out
on a wafer that is not an SOI Wafer.
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EXECUTION DRAFT November 26, 2002
"Bulk CMOS Integrated Circuit" shall mean an Integrated Circuit fabricated
utilizing a Bulk CMOS manufacturing process.
"Chartered Jointly Owned Facility," means a corporation, company or other entity
where at least forty percent (40%) of whose outstanding shares or securities
(such shares or securities representing the right to vote for the election of
directors or other managing authority) are, now or hereafter, owned or
controlled, directly or indirectly, by CHARTERED; or, if such entity does not
have outstanding shares or securities, as may be the case in a partnership,
joint venture, unincorporated association, or other entity, at least forty
percent (40%) of whose ownership interest representing the right to (i) make the
decisions for such partnership, joint venture, unincorporated association, or
other entity, or (ii) vote for, designate, or otherwise select members of the
highest governing decision-making body, managing body or authority for such
partnership, joint venture, unincorporated association or other entity, is, now
or hereafter, owned or controlled, directly or indirectly, by CHARTERED.
Provided, that such entity shall be considered a Chartered Jointly Owned
Facility, and shall be entitled to retain the licenses and other benefits
provided by this Agreement to such Chartered Jointly Owned Facility, only so
long as such ownership or control exists.
"Chartered's Fab 7 Facility" means CHARTERED's 300mm fabrication facility
situated in CHARTERED's Woodlands campus in Singapore.
"Copper/Related FEOL Technology" shall mean certain back end of line
semiconductor wafer fabrication processes and know-how directed to copper
metallurgies and fluoro-silicate glass interlevel dielectrics, and related front
end of line (FEOL) techniques, all for the fabrication of Bulk CMOS Integrated
Circuits on 200mm wafers, as described in the Copper/Related FEOL Technology
Documents and information disclosed to CHARTERED in the workshops set forth in
Section 2.
"Copper/Related FEOL Technology Documents" shall mean documents to be delivered
by IBM to CHARTERED that provide information on Copper/Related FEOL Technology,
as listed in Exhibit A, as such documents exist in IBM at the time the workshops
set forth in Section 2.2 are held.
"Derivative Processes" means process technologies for semiconductor devices
which process technologies use, modify or otherwise derive from the
Copper/Related FEOL Technology or any element or portion thereof.
"Foundry Company" shall mean xxxxx.
"Foundry Product" shall mean a Integrated Circuit wherein all the following
conditions are met: (i) the design, or masks and/or mask build data, for such
Integrated Circuit product are provided to a Party from a Third Party; (ii) such
Party played no substantial role in any phase of the design of such product; and
(iii) such Party is contractually bound to manufacture such product solely for,
and to sell such product solely to, such Third Party or its distributor or other
recipient solely for the benefit of such Third Party.
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EXECUTION DRAFT November 26, 2002
"Integrated Circuit" means an integral unit formed on a semiconductor substrate
including a plurality of active and/or passive circuit elements formed at least
in part of semiconductor material.
"License Agreement" shall mean the terms and conditions of this License
Agreement together with any exhibits, attachments and appendices hereto.
"Representative(s)" shall mean regular full time employees of a Party or a
Party's Wholly Owned Subsidiary.
"Semiconductor Product" means a component that contains an Integrated Circuit on
a single or multichip module that incorporates a means of connecting those
Integrated Circuits with other electronic elements (active or passive) and/or
means to make external electrical connections to such elements, but which
excludes any means for a user to operate the functions therein (e.g., buttons,
switches, sensors).
"Silicon-On-Insulator Wafer" or "SOI Wafer" shall mean a single-crystal silicon
wafer bearing a horizontally-disposed isolating silicon dioxide (SiO2) layer, in
turn bearing a single-crystal silicon layer or a polysilicon layer, which is
separated from the underlying silicon by the silicon dioxide layer and in which
one or more active or passive integrated circuit structures are formed.
"SOI Information" means any and all process methods, steps, and structures
created on SOI Wafers and not on Bulk CMOS Integrated Circuits.
"Subsidiary" means a corporation, company or other entity:
(a) more than fifty percent (50%) of whose outstanding shares or
securities (representing the right to vote for the election of
directors or other managing authority) are, now or hereafter, owned or
controlled, directly or indirectly, by a Party hereto, or
(b) which does not have outstanding shares or securities, as may be the
case in a partnership, joint venture or unincorporated association,
but more than fifty percent (50%) of whose ownership interest
representing the right to make the decisions for such corporation,
company or other entity is now or hereafter, owned or controlled,
directly or indirectly, by a Party hereto,
provided that in either case such entity shall be considered a Subsidiary,
and shall be entitled to retain the licenses and other benefits provided by
this Agreement to Subsidiaries, only so long as such ownership or control
exists.
"Third Party" means an entity or entities other than the Parties or their Wholly
Owned Subsidiaries.
"Wholly Owned Subsidiary" shall mean 1) a corporation, company or other entity:
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(a) one hundred percent (100%) of whose outstanding shares or securities
(such shares or securities representing the right to vote for the
election of directors or other managing authority) are, now or
hereafter, owned or controlled, directly or indirectly, by a Party; or
(b) which does not have outstanding shares or securities, as may be the
case in a partnership, joint venture or unincorporated association, or
other entity but one hundred percent of whose ownership interest
representing the right to (i) make the decisions for such corporation,
company or other entity, or (ii) vote for, designate, or otherwise
select members of the highest governing decision making body, managing
body or authority for such partnership, joint venture, unincorporated
association or other entity is, now or hereafter, owned or controlled,
directly or indirectly, by a Party;
provided that in either case such entity shall be considered a Wholly Owned
Subsidiary, and shall be entitled to retain the licenses and other benefits
provided by this Agreement to Wholly Owned Subsidiaries, only so long as
such ownership or control exists; or 2) a corporation, company or other
entity:
(c) at least seventy five percent (75%) of whose outstanding shares or
securities (such shares or securities representing the right to vote
for the election of directors or other managing authority) are, now or
hereafter, owned or controlled, directly or indirectly, by a Party; or
(d) which does not have outstanding shares or securities, as may be the
case in a partnership, joint venture or unincorporated association, or
other entity but at least seventy five percent (75%) of whose
ownership interest representing the right to (i) make the decisions
for such corporation, company or other entity, or (ii) vote for,
designate, or otherwise select members of the highest governing
decision making body, managing body or authority for such partnership,
joint venture, unincorporated association or other entity is, now or
hereafter, owned or controlled, directly or indirectly, by a Party
provided, that in either case (c) or (d) above, (i) all of the remaining
such ownership interest is solely owned or controlled, directly or
indirectly, by one or more corporations, companies or other entities which
are purely financial investors who are not engaged in the design,
development, manufacture, marketing or sale of Semiconductor Products, and
(ii) such entity shall be considered a Wholly Owned Subsidiary, and shall
be entitled to retain the licenses and other benefits provided by this
Agreement to Wholly Owned Subsidiaries, only so long as such ownership or
control exists.
"$" and "Dollars" shall mean United States Dollars.
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EXECUTION DRAFT November 26, 2002
SECTION 2 - TECHNOLOGY TRANSFER PROCEDURE
2.1 Each Party shall appoint a Technical Coordinator as follows:
(i) For CHARTERED: S.C. Sun
(ii) For IBM: Xxxxx Xxxxxxx
The Technical Coordinators shall be responsible for supervising the
training and technology transfer described in Section 2.2.
The Parties agree that IBM shall provide two workshops for CHARTERED at
which it will provide CHARTERED with tutorials on the Copper/Related FEOL
Technology and the Copper/Related FEOL Technology Documents. The first of
such workshops shall be a xxxxx workshop, held at CHARTERED's facilities in
Singapore for xxxxx CHARTERED Representatives, such workshop to be
completed on or about December 6, 2002. The second of such workshops shall
be a xxxxx workshop, held at IBM's facility in East Fishkill, New York,
USA, for xxxxx CHARTERED Representatives, such workshop to be completed on
or about December 21, 2002; provided that in all cases such workshops shall
be completed by December 31, 2002. The scope, purpose, and other specifics
of the two workshops shall be as listed in Exhibit B
2.2 CHARTERED shall ensure that its attending Representatives are reasonably
proficient in the English language. Each Party will require its
Representatives to abide by the rules, regulations, and procedures
established for on-site visitors at its facilities. Additionally, each
Party shall be responsible for paying the costs of travel, lodging, and any
other expenses incurred by their own Representatives in connection with the
activities contemplated under this License Agreement, including the
workshops, and CHARTERED shall be solely responsible, including the cost
therefor, for the transfer and implementation, if any, of Copper/Related
FEOL Technology in its own facilities as licensed below. The Parties agree
that the technology transfer for Copper/Related FEOL Technology shall be
deemed completed in full upon the provision of such workshops and the
delivery of the Copper/Related FEOL Documents, and upon such completion IBM
shall have no further obligation to provide any information, support, or
training as to the Copper/Related FEOL Technology. CHARTERED shall be
solely responsible for obtaining any and all regulatory approvals as may be
required to utilize Copper/Related FEOL Technology at such facilities, and
shall be solely responsible for the cost of equipment and consumables as
may be required to utilize Copper/Related FEOL Technology at such
facilities. IBM hereby confirms that as of the Effective Date the
Copper/Related FEOL Technology disclosed pursuant to this Agreement does
not require a license pursuant to United States export regulations for
export to CHARTERED's facilities in Singapore.
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EXECUTION DRAFT November 26, 2002
SECTION 3- LICENSE GRANT
3.1 IBM hereby grants to Chartered, under its trade secret, know-how,
copyright, and mask work rights, xxxxx, license to use Copper/Related FEOL
Technology for the purpose of researching, developing, engineering,
manufacturing, using, operating, marketing, selling, servicing and
otherwise disposing of Integrated Circuits and/or Semiconductor Products,
including researching, developing, engineering, manufacturing, operating,
servicing and otherwise using process technologies for semiconductor
devices, and such license shall include the right to make derivatives of
such information (including Derivative Processes) for such uses. In the
case of copyrightable materials, such license includes the right to
reproduce, create derivative works of, distribute, use, execute, and
display and perform (publicly and otherwise) such copyrightable materials
to the extent consistent with the provisions of Section 4. In the case of
mask work rights, such license includes the right to use any
process-related mask design information provided to CHARTERED (e.g. kerf
test structures) and create derivative works thereof. CHARTERED shall have
the right to sublicense its rights and shall have the right to have Third
Parties exercise the licenses granted herein on behalf of CHARTERED under
this Section 3.1, but such sublicensing is permitted only to the extent
such sublicensing is consistent with Section 4. For the avoidance of doubt,
CHARTERED shall have the same rights and obligations in and to Derivative
Processes as it does for Copper/Related FEOL Technology hereunder.
3.2 IBM agrees to not unreasonably withhold the granting, upon request by
CHARTERED or by a recipient to whom disclosure has been made pursuant to
Section 4, of a non-exclusive license under IBM's patents, under reasonable
and non-discriminatory terms and conditions, to the extent necessary for
CHARTERED or such recipient to utilize the disclosed information for the
purposes set forth in this Agreement.
3.3 CHARTERED shall be free to use and disclose the residuals of Copper/Related
FEOL Technology for any purpose, including use in the development,
manufacture, marketing, and maintenance of any products and services. The
term "residuals" means that information in non-tangible form that may be
mentally retained by those Representatives of a Party who have had access
to Copper/Related FEOL Technology pursuant to this Agreement. For the
avoidance of doubt, residuals includes solely those general aspects of
Copper/Related FEOL Technology that become part of the knowledge base of
such Representatives, and this Section 3.3 shall not be interpreted as
permitting such Representatives to disclose specific aspects of such
information other than as set forth in Sections 3 and 4 of this Agreement.
The Parties agree that the receipt of Copper/Related FEOL Technology shall
not create any obligation in any way limiting or restricting the assignment
and/or reassignment of CHARTERED's Representatives within CHARTERED, its
Wholly Owned Subsidiaries, or any Chartered Jointly Owned Facilities. For
the avoidance of doubt, the foregoing residuals grant shall also apply to
(i) employees of Chartered Jointly Owned
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EXECUTION DRAFT November 26, 2002
Facilities, and (ii) employees of other owners of such Chartered Jointly
Owned Facilities; provided, however, that in the case of such employees of
other owners of such Chartered Jointly Owned Facilities, disclosure of
residuals shall be subject to Section 4.
3.4 No license or other right is granted herein by either Party to the other
Party, directly or indirectly, by implication, estoppel or otherwise, with
respect to any trade secrets, know-how, copyrights, mask works, patents,
patent applications, utility models, or design patents except as expressly
set forth in this Agreement, and no such license or other right shall arise
from the consummation of this Agreement or from any acts, statements or
dealings leading to such consummation. The Parties expressly understand and
acknowledge that any patent license rights that may be required to carry
out the licenses set forth in this Agreement are set forth in separate
patent cross-license agreements between them.
SECTION 4 - CONFIDENTIAL INFORMATION
4.1 CHARTERED shall not disclose any CHARTERED confidential information to IBM
pursuant to this License Agreement. The Copper/Related FEOL Technology
information and Copper/Related FEOL Technology Documents, including all
information provided to CHARTERED pursuant to the workshops set forth in
Section 2.2 above, whether in tangible or intangible form, is the
confidential information of IBM and all information disclosed by IBM shall
be treated pursuant to this Section 4, whether a disclosure of such
information is made orally, visually, or in writing.
4.2 Except as otherwise provided in this Agreement, with respect to such IBM
confidential information, CHARTERED shall use the same efforts to avoid its
publication or dissemination to Third Parties as it employs with respect to
information of its own which it does not desire to be published or
disseminated. This obligation of confidentiality shall terminate January 1,
2010. This obligation shall not, however, apply to any information that is:
4.2.1 already in or comes into the possession of CHARTERED or its
Subsidiaries without obligation of confidence;
4.2.2 now, or hereafter becomes, publicly available without breach of this
Agreement;
4.2.3 rightfully received from Third Parties without obligation of
confidence;
4.2.4 independently developed by CHARTERED or its Subsidiaries;
4.2.5 approved for release by written agreement of IBM; or
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4.2.6 inherently disclosed in the use, lease, sale or other distribution of
any available product or service or publicly available supporting
documentation therefor by CHARTERED or any of its Subsidiaries.
4.3 CHARTERED's obligations with respect to such IBM confidential information
as specified in Section 4.2, above shall not apply to any disclosure that
is:
4.3.1 in response to a valid order of a court or other governmental body of
any country or group of countries or any political subdivision
thereof; provided, however, that CHARTERED shall first have notified
IBM and made a good faith effort to obtain a protective order
requiring that the information and/or documents so disclosed be used
only for the purposes for which the order was issued;
4.3.2 otherwise required by law or securities regulations to which
CHARTERED is subject; or
4.3.3 reasonably necessary in order to establish CHARTERED's rights,
provided that CHARTERED shall provide IBM with prior written notice,
except notice shall not be required where CHARTERED is attempting to
establish rights in a lawsuit under this Agreement against IBM.
4.4 CHARTERED shall have the right to disclose as specified in Section 3 any of
its Wholly Owned Subsidiaries at any time; provided however, that such
Wholly Owned Subsidiaries shall agree to be bound by terms consistent with
those applicable to CHARTERED under this Section 4 and the survival of same
pursuant to Section 7. Further, CHARTERED may authorize its Wholly Owned
Subsidiaries to whom it has disclosed Copper/Related FEOL Technology
pursuant to this Section 4.4 to exercise some or all of its rights to
disclose Copper/Related FEOL Technology under and in accordance with this
Section 4.
4.5 In addition to Wholly Owned Subsidiaries, subject to the remaining
provisions of this Section 4.5 CHARTERED shall have the right to disclose
to each of the Chartered Jointly Owned Facilities. CHARTERED may authorize
Chartered Jointly Owned Facilities to whom it has disclosed Copper/Related
FEOL Technology pursuant to this Section 4.5 to exercise some or all of its
rights to disclose Copper/Related FEOL Technology under and in accordance
with Sections 4.6, 4.7 and 4.8.
4.5.1 xxxxx.
4.5.2 xxxxx.
4.5.3 xxxxx.
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EXECUTION DRAFT November 26, 2002
4.5.4 IBM shall have the following audit rights. IBM shall nominate three
(3) independent auditors, from which CHARTERED shall select one, to
conduct, with five (5) working days for all Chartered Jointly Owned
Facilities except those described in Section 4.5.5, below, for which
the time period shall be ten (10) working days prior notice to
CHARTERED and no more frequently than semiannually for all Chartered
Jointly Owned Facilities except those described in Section 4.5.5,
below, for which the frequency shall be no more than once per year
(or, at IBM's option, as frequently as once a quarter should an audit
uncover a material noncompliance), an audit of the Chartered Jointly
Owned Facility(ies) which have received Copper/Related FEOL
Technology from CHARTERED to assure compliance with this Section 4.5.
Such auditor shall enter into a confidentiality agreement with
CHARTERED and/or with IBM (in which case the agreement would include
a provision under which CHARTERED would be granted third party
beneficiary status (or the equivalent under whatever law applies to
the agreement) with an independent right to enforce the applicable
provisions of such confidentiality agreement as they pertain to
CHARTERED's confidential information) and shall not disclose to IBM
any CHARTERED confidential information other than that necessary to
understand any noncompliance situation. In the absence of a finding
of noncompliance such auditor shall not be present at such Chartered
Jointly Owned Facility for more than five (5) working days.
4.5.5 In the case of Chartered Jointly Owned Facilities that exist as of
the Effective Date (i.e. CHARTERED's Fab 5 and Fab 6), information
that would disclose detailed aspects of the Copper/Related FEOL
Technology, including but not limited to process recipes, tool
settings, specific process flows, or manufacturing process
specifications, shall only be disclosed to those CHARTERED employees
and employees of such Chartered Jointly Owned Facility (including
those who may have been employees of one of the other owners) that in
CHARTERED's opinion and sole discretion have a need to know for
purposes of carrying out their duties in such Chartered Jointly Owned
Facility. The foregoing information shall not be transferred to other
owners(s) of such Chartered Jointly Owned Facilities, employees of
such other owner(s) (except as set forth in the following sentence),
or any other Third Party. Without limiting the foregoing, the Parties
agree that incidental access to general aspects of Copper/Related
FEOL Technology (e.g. as part of normal operational briefings) by
employees of such other owner(s) that are otherwise resident at or
assigned to such Chartered Jointly Owned Facility shall not be
considered a breach of this Section 4.5.5.
4.5.6 In the case of Chartered's Fab 7 Facility if it becomes a Chartered
Jointly Owned Facility, the following shall apply in the event that
CHARTERED installs a 130nm 300mm Bulk CMOS logic manufacturing
process that
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EXECUTION DRAFT November 26, 2002
embodies any portions of, or is a Derivative Process of, the
Copper/Related FEOL Technology:
4.5.6.1 Other than Chartered, xxxxx (however, CHARTERED may add xxxxx
with the prior written consent of IBM, which consent shall
not be unreasonably withheld) (none of which are xxxxx, as
defined below) may be co-owners with CHARTERED in Chartered's
Fab 7 Facility.
(a) Provided, however, that the foregoing restriction
shall apply only if employees of a xxxxx are present and
have access to or are exposed to 130nm 300mm Bulk CMOS logic
manufacturing process that embodies any portions of or is a
Derivative Process of, the Copper/Related FEOL Technology
(except as otherwise permitted pursuant to Sections 4.6, 4,7
and 4.8) at such Chartered Jointly Owned Facility.
(b) For purpose of this Section 4.5.6, xxxxx means a
Third Party who has a xxxxx percent or greater ownership
interest or control, directly or indirectly, of xxxxx;
provided, however, that xxxxx does not include xxxxx and the
restrictions set forth in Sections 4.5.6.1, 4.5.6.2 and
4.5.6.4 shall not apply to any such parties.
4.5.6.2 CHARTERED agrees that the access or exposure provided to the
xxxxx employees described in Section 4.5.6.1 (a), above,
shall be limited to that necessary, in CHARTERED's reasonable
opinion in order to carry out their responsibilities in such
Chartered Jointly Owned Facility. Such employees of xxxxx
shall have no right to take any portions of the Copper
/Related FEOL Technology (other than residuals as defined in
Section 3.3, which shall still be considered confidential and
subject to Section 4) outside the Chartered Jointly Owned
Facility.
4.5.6.3 Other than as set forth in Section 4.5.6.2, information that
would disclose detailed aspects of the Copper/Related FEOL
Technology, including but not limited to process recipes,
tool settings, specific process flows, or manufacturing
process specifications, shall only be disclosed to those
CHARTERED employees and employees of such Chartered Jointly
Owned Facility (including those who may have been employees
of one of the other owners) that in CHARTERED's opinion and
sole discretion have a need to know for purposes of carrying
out their duties in such Chartered Jointly Owned Facility.
The foregoing information shall not be transferred to other
owners(s) of such Chartered Jointly Owned Facilities,
employees of such other owner(s) (except as set forth in the
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EXECUTION DRAFT November 26, 2002
following sentence) or any other Third Party. Without
limiting the foregoing, the Parties agree that incidental
access to general aspects of Copper/Related FEOL Technology
(e.g. as part of normal operational briefings) by employees
of such other owner(s) that are otherwise resident at or
assigned to such Chartered Jointly Owned Facility shall not
be considered a breach of this Section 4.5.6.3.
4.5.6.4 Chartered shall secure a written agreement with such xxxxx
that are co-owners pursuant to Section 4.5.6.1, by which the
other owner agrees that it will abide by the applicable
provisions of this Section 4.5.
4.5.7 Should a Chartered Jointly Owned Facility cease to retain the
licenses and other benefits provided by this Agreement for any
reason, including by virtue of a) a reduction in the ownership
percentage of the owning Party or b) a failure to abide by the
provisions of this Section 4.5, such entity shall retain such
licenses notwithstanding such license cessation for a period of time
as may be required to enable such entity to fulfill any purchase
orders or other legally binding commitments existing as of the date
of such license cessation, but such period of time shall not exceed
xxxxx. As soon as reasonably practicable after such ownership change,
such entity shall indicate in its web sites and other marketing
communications channels that it shall no longer offer products made
utilizing the rights licensed hereunder. After the date of such
license cessation such entity will not (unless otherwise authorized
by IBM) enter into any new supply or other commitments that would
require the exercise of rights granted to it by IBM under this
Section 4.5.
4.6 CHARTERED shall have the right (in addition to its other rights under this
Section 4) to disclose those aspects of Copper/Related FEOL Technology to
contractors, suppliers, and consultants as may be reasonably necessary,
solely for the purpose of enabling such Third Parties to assist CHARTERED
in exercising its rights under this Agreement. By way of example and not
limitation, examples of the general types of information the Parties agree
are "reasonably necessary" for disclosure to such contractors, suppliers,
and consultants are as follows:
4.6.1 specifications for masks, materials, chemicals, consumables and/or
equipment, to contractors or suppliers;
4.6.2 process information as required to have equipment maintained, to tool
vendors; and
4.6.3 equipment lists and simple process flow information (excluding
detailed process flow information or detailed process
specifications), as necessary in order to enable installation of
Copper/Related FEOL Technology.
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EXECUTION DRAFT November 26, 2002
Such disclosures cannot be made without a written agreement between the
CHARTERED and the recipient Third Party that, at a minimum, shall have a
term of confidentiality consistent with that set forth herein and that
shall limit such recipient's use of such information in accordance with the
terms and conditions consistent with those set forth herein.
4.7 CHARTERED shall have the right (in addition to its other rights under this
Section 4) to disclose those aspects of Copper/Related FEOL Technology to
customers, design service providers, and electronic design and automation
(EDA) vendors and providers of circuit designs or libraries (such as
providers of cores and other IP blocks) as may be reasonably necessary,
solely for the purpose of enabling such Third Parties to assist CHARTERED
in exercising its rights under this Agreement. By way of example and not
limitation, examples of the general types of information the Parties agree
are "reasonably necessary" for disclosure to such customers, design service
providers, electronic design and automation (EDA) vendors and circuit
design providers are as follows:
4.7.1 Process roadmap and deployment schedule for implementation of a
CHARTERED fabrication process, that includes all or portions of the
Copper/Related FEOL Technology, in the permitted facilities set forth
elsewhere in this Section 4;
4.7.2 Time schedule for development of device model library, and SPICE
parameters;
4.7.3 Design rules for CHARTERED's fabrication process(es) that include(s)
all or portions of the Copper/Related FEOL Technology; and
4.7.4 Simplified process flow information (indicative of rough number of
process and mask steps and excluding detailed process flow information and
detailed process specifications).
In addition, CHARTERED may disclose and sublicense (in addition to its
other rights under this Section 4) to EDA vendors and circuit design or
library providers information of the type set forth in subsection 4.7.1
through 4.7.4 where such disclosure and sublicense will directly or
indirectly enable or benefit CHARTERED's foundry business in connection
with the manufacture and sale of wafers, acknowledging that such Third
Parties may license for their own benefit the resultant EDA software and/or
cores or IP blocks to parties other than Chartered.
Such disclosures cannot be made without a written agreement between
CHARTERED and the recipient that, at a minimum, shall have a term of
confidentiality consistent with that set forth herein that limits such
recipient's use
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EXECUTION DRAFT November 26, 2002
of such information in accordance with terms and conditions consistent with
those set forth herein.
4.8 CHARTERED shall have the right (in addition to its other rights under this
Section 4) to disclose such aspects of Copper/Related FEOL Technology to
its customers as may be reasonably necessary, solely for the purpose of
enabling CHARTERED to develop a Derivative Process for the manufacture of
Semiconductor Products solely for such customer and to manufacture
Semiconductor Products solely for such customer. The resultant Derivative
Process may be used by CHARTERED to manufacture semiconductor products for
future customers, but such future customers will not get any access to any
of the Copper/Related FEOL Technology except as otherwise set forth in this
Section 4.8. By way of example and not limitation, examples of the general
types of information the Parties agree are "reasonably necessary" for
disclosure to such customers for such purposes are as set forth in Section
4.7.
Such disclosures cannot be made without a written agreement between
CHARTERED and the recipient that, at a minimum, shall have a term of
confidentiality consistent with that set forth herein, and that limits such
recipient's use of such information in accordance with terms and conditions
consistent with those set forth herein.
4.9 CHARTERED shall have the right (in addition to its other rights under this
Section 4) to disclose those aspects of Copper/Related FEOL Technology as
may be installed in a CHARTERED semiconductor logic process technology, as
part of a license to substantially the entirety of such CHARTERED
semiconductor logic process technology to any Third Party, for any purpose,
at any time after xxxxx. Such disclosures cannot be made without a written
agreement between such Third Party and CHARTERED that, at a minimum, shall
have a term of confidentiality consistent with that set forth in this
Agreement.
SECTION 5 - CHARTERED PAYMENTS TO IBM
5.1 As consideration for the rights, licenses to use and disclosure rights
granted pursuant to Sections 3 and 4 above, the workshops, and delivery of
the Copper/Related FEOL Technology and Copper/Related FEOL Technology
Documents pursuant to Section 2, above, CHARTERED shall pay IBM a
non-refundable fee of xxxxx in accordance with the following schedule.
CHARTERED agrees to accept this agreement as an invoice from IBM for the
amounts specified:
xxxxx
5.2 CHARTERED shall be liable for interest on any overdue payment under this
Agreement commencing on the date such payment becomes due at an annual rate
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equal to xxxxx. If such interest rate exceeds the maximum legal rate in the
jurisdiction where a claim therefor is being asserted, the interest rate
shall be deemed reduced to such maximum legal rate.
5.3 Each Party shall bear and pay all taxes (including, without limitation,
sales and value added taxes but excluding income tax as specified below)
applicable to such Party, including those imposed by its own national
government, or any political subdivision thereof, as the result of the
existence of this Agreement or the exercise of rights hereunder. If either
Party ("payer") is required by its national government to withhold or
deduct income taxes on behalf of the other Party in respect of the payments
made by it to the other Party, payer may deduct such income tax from the
payment due and furnish the other Party within a reasonable time after the
payer's receipt of tax certificates from the applicable government entity,
such original certificates and other evidence of deduction and payment as
the other Party may properly require. CHARTERED will provide reasonable
assistance to IBM to seek an exemption of withholding taxes under the
appropriate section(s) of the Income Tax Act of Singapore or the Economic
Expansion Incentive (Relief from Income Tax) Act and if CHARTERED is the
appropriate party to do so, CHARTERED will apply in a timely manner for
such an exemption. CHARTERED shall make a timely application for the tax
exemption and the application will cover all payments made for this
license.
If at the time of payment, CHARTERED has not received notice of allowance
of exemption from the appropriate governmental authority, CHARTERED will
withhold from the payment the applicable withholding tax. CHARTERED will
provide IBM with the applicable tax certificates and will assist IBM in
filling for a withholding tax refund in the event that an exemption is
granted. IBM shall provide assistance, as required, to Chartered, to
complete the necessary forms required for the application for such
exemption of withholding tax.
5.4 All payments shall be made by wire transfer to the IBM account listed
below; shall be free of all banking charges; and shall be paid in Dollars:
IBM Corporation
Director of Licensing
The Bank of New York
Xxx Xxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Account No. 000-0000-000
ABA Routing No. 0000-0000-0
(000) 000-0000
Include the following sentence in the wire detail: "This payment is under
Section 5 for the Technology License Agreement, License Ref No.: L024359."
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SECTION 6 - WARRANTY DISCLAIMER
IBM hereby represents that, as of the Effective Date, to the present knowledge
of the Microelectronics Division Counsel, IP Law, there are no written notice of
infringement of any copyright, mask work, or trade secret that have been
received from a Third Party that are applicable to the Copper/Related FEOL
Technology as it exists as of the Effective Date.
Except as otherwise expressly set forth above, all items furnished by IBM to
CHARTERED under this Agreement will be produced or provided by IBM in the same
manner as it produces or provides such items for its own use and will be
furnished on an "AS IS" BASIS WITHOUT WARRANTY OF ANY KIND, including, without
limitation, i) any warranty that the Copper/Related FEOL Technology will be free
of Third Party claims of infringement of patents, copyrights, TRADE SECRET, or
mask work rights and ii) ANY IMPLIED WARRANTIES OR TERMS OF MERCHANTABILITY AND
FITNESS OR USE FOR A PARTICULAR PURPOSE.
SECTION 7 - TERM AND TERMINATION
7.1 This License Agreement shall be in effect from the Effective Date and,
unless otherwise terminated pursuant to this Section 7, shall survive.
7.2 Either Party shall have the right to immediately terminate this Agreement
by giving written notice of termination to the other Party if other Party
1) permanently ceases doing business; 2) is adjudged bankrupt or insolvent
or files a petition for bankruptcy; 3) goes into liquidation; or 4) has
anything analogous to any of the foregoing occur under the laws of
Singapore.
7.3 If either Party to this Agreement fails to perform or violates any material
obligation of this Agreement, then, upon thirty (30) days written notice to
the breaching Party specifying such failure or violation (the "Default
Notice"), the non-breaching Party may terminate this Agreement, without
liability, unless:
The failure or violation specified in the Default Notice has been cured
within a thirty (30) day period; or
The failure or violation reasonably requires more than thirty (30) days to
correct (specifically excluding any failure to pay money), and the
breaching Party has begun substantial corrective action to remedy the
failure or violation within such thirty (30) day period and diligently
pursues such action, in which event, termination shall not be effective
unless sixty (60) days has expired from the date of the Default Notice
without such corrective action being completed and the failure or violation
remedied.
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7.4 Notwithstanding any provision to the contrary elsewhere in this Agreement,
(a) if IBM terminates this Agreement as a result of a material breach of
this Agreement that is caused by Representative(s) of CHARTERED who engaged
in any gross and/or willful misconduct that resulted in such material
breach and such material breach results in substantial harm to IBM or (b)
if IBM terminates this Agreement as a result of a material breach of the
confidentiality obligations of Section 4, which results in substantial harm
to IBM, IBM shall have the right to terminate the disclosure rights and
licenses granted to CHARTERED pursuant to Sections 3 and 4, respectively.
Provided however that an intentional material breach of the confidentiality
obligations of Section 4 by an employee of CHARTERED acting outside the
scope of his/her employment (i.e., acting without either the knowledge of
or the actual or implied consent of such employee's management) shall not
constitute a cause for termination of the disclosure rights and licenses.
If such disclosure rights and licenses are terminated, CHARTERED shall
immediately return to IBM, or destroy, any documentation or materials
provided by IBM embodying Copper/Related FEOL Technology, and such return
or destruction shall be certified to IBM, in writing, by an officer of
Chartered. Notwithstanding any such termination of licenses and disclosure
rights to Chartered, the rights granted by CHARTERED to Third Parties
(excluding Chartered Jointly Owned Facilities) shall survive and remain in
full force and effect. Notwithstanding the provision in Section 10.3
allowing a Party to institute a proceeding seeking a preliminary
injunction, a temporary restraining order, or other equitable relief
without first engaging the dispute resolution process, termination of
licenses in accordance with this Section 7.4 shall be subject to the
dispute resolution processes set forth in Section 10.3, and termination
shall not be effective until such dispute resolution process is completed.
7.5 In the event this License Agreement is terminated by IBM, the following
provisions shall survive and remain in full force and effect: Sections 1,
3.3, 4.1, 4.2, 4.3, 5, 6, 7, 8, 9, and 10.
7.6 In the event that this Agreement terminates for any reason other than by
IBM for breach by CHARTERED that is uncured or pursuant to Section 7.2, in
addition to any other rights or remedies available to CHARTERED,
CHARTERED's obligation to pay further installments of the fee in Section
5.1 from the point of termination shall cease and the license and
disclosure rights set forth in Section 3 and 4, respectively, to CHARTERED
shall survive.
SECTION 8 - NOTICES AND OTHER COMMUNICATIONS
8.1 Any notice or other communication required or permitted to be given to a
Party pursuant to this License Agreement shall be sent to such Party by
facsimile or by registered airmail, postage prepaid, addressed to it at its
address set forth below, or to such other address as it may designate by
written notice given to the other
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Parties. Any such notice or other communication shall be effective on the
date of receipt. The addresses are as follows:
8.1.1 In the case of IBM:
Director of Licensing
IBM Corporation
Xxxxx Xxxxxx Xxxxx, XX-XX000
Xxxxxx, XX 00000-0000
Xxxxxx Xxxxxx of America
Facsimile: x00-000-000-0000
With a copy to:
IBM Corporation
Drop 92B
0000 Xxxxx 00
Xxxxxxxx Xxxxxxxx, XX 00000
Fax: 000-000-0000
Attention: Associate General Counsel, Microelectronics Division
8.1.2 In the case of CHARTERED:
Chartered Semiconductor Manufacturing Ltd
00 Xxxxxxxxx Xxxxxxxxxx Xxxx X
Xxxxxx 0,
Xxxxxxxxx 000000
Fax: x00 00000000
Attention: Legal Department
8.2 The License Reference Number specified above should be included in all
communications including wire transfer payments, royalty reports, letters,
faxes and e-mail messages.
SECTION 9 - LIMITATION OF LIABILITY
9.1 In no event shall either Party (or its Subsidiaries) be liable to the other
Parties for incidental damages, special damages, punitive damages, lost
profits, lost savings or any other such damages, including consequential
damages, regardless of whether the claim is for breach of contract, breach
of warranty, tort (including negligence), failure of a remedy to accomplish
its purpose or otherwise, even if such Party (or any Subsidiary) has been
advised of the possibility of such damages.
9.2 In no event shall either Party's (or its respective Subsidiaries')
aggregate liability to the other Party (for direct damages or otherwise) in
connection with any claim
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or claims relating to or arising under this Agreement exceed the amount of
XXXXX, regardless of the form of action. This limitation will not apply to
any claim for payment of a sum or sums properly due under this Agreement
for which the maximum amount of liability shall not exceed the total amount
of payments set forth in Section 5.1 plus interest as set forth in Section
5.2. In addition, neither dollar limitation shall apply to (i) breach of
the confidentiality obligations set forth in Section 4; or (ii) death,
personal injury or physical damage to real property or tangible personal
property resulting from a Party's own gross negligence, including that of
its employees, agents or subcontractors.
9.3 Nothing contained herein shall limit any Parties' right to seek a
preliminary injunction, temporary restraining order or any other equitable
relief in order to avoid material harm to its property, rights or other
interests.
9.4 In no event shall either Party (or its respective Subsidiaries) be liable
for any damages claimed by any other Party based on any Third Party claim,
except as specifically set forth in Section 9.2 (ii) above.
SECTION 10 - GENERAL
10.1 Nothing contained in this Agreement shall be construed as conferring any
right to use in advertising, publicity or other promotional activities any
name, trade name, trademark or other designation of either Party hereto
(including any contraction, abbreviation or simulation of any of the
foregoing); and each Party hereto agrees not to disclose to other than its
Subsidiaries the terms and conditions of this Agreement without the express
written consent of the other Parties, except as may be required by law or
government rule or regulation, having provided the other Party with prior
written notice of such disclosure and having made a reasonable effort to
limit such disclosure to the minimum required and obtaining a protective
order requiring that the information and/or documents so disclosed be used
only for the purposes for which such disclosure is required.
Notwithstanding the foregoing, 1) the Parties shall be permitted to
disclose a summary of pertinent Sections of this Agreement that are
reasonably necessary for disclosing and/or licensing under this Agreement,
and 2) each Party shall be permitted to disclose pertinent Sections of this
Agreement, in confidence (consistent with treatment of such Party's own
comparable confidential information), to such Party's accountants, banks
and financing sources and other similar business advisors and to
appropriate regulatory authorities for purposes of seeking tax exemptions
and applying for research grants.
10.2 This Agreement shall be construed, and the legal relations created herein
between the Parties shall be determined exclusively, in accordance with the
laws of the United States of America and, specifically, the State of New
York, without regard
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to conflicts of law, as if said Agreement were executed in, and fully
performed within, the State of New York. Any proceeding to enforce, or to
resolve disputes relating to, this Agreement shall be brought exclusively
before a court of competent jurisdiction in the State of New York,
including a Federal District Court, sitting within such State, or in the
Republic of Singapore or the US International Trade Commission. The Parties
hereby irrevocably consent to jurisdiction in such court, and hereby
expressly waive any right to a jury trial and agree that any proceeding
hereunder shall be tried by a judge without a jury. In any proceedings
neither Party shall assert that such court lacks jurisdiction over it or
the subject matter of the proceeding.
10.3 In the event of any dispute under this License Agreement, and as a
condition precedent to a Party filing suit, instituting a proceeding or
seeking other judicial or governmental resolution in connection therewith
(except for any suit, proceeding, or judicial or governmental resolution
instituted under Section 9.3), the Parties will attempt to resolve such
dispute by referring the issues for resolution to executives from each
Party of at least the title of vice president. Neither Party shall file
suit, institute a proceeding or seek other judicial or governmental
resolution of the dispute until at least sixty (60) calendar days after the
first meeting between such executives. Excepting only that a Party may
institute a proceeding seeking an order for a preliminary injunction,
temporary restraining order, or other equitable relief, if necessary in the
opinion of that Party to avoid material harm to its property, rights or
other interests, before commencing or at any time during the course of, the
dispute procedure in this Section 10.3.
10.4 Neither Party shall assign any of its rights or obligations under this
Agreement without prior written consent of the other Party. Any attempted
such assignment without such permission shall be null and void. Except that
IBM may assign or transfer its rights to receive payment hereunder to any
party upon written notice to CHARTERED and either Party may assign or
transfer any of its rights and obligations to a Wholly Owned Subsidiary
upon written notice to the other Party, provided that the assigning or
transferring Party agrees that such assignee or transferee will remain (and
it does remain) a Wholly Owned Subsidiary of such Party; however, such
Wholly Owned Subsidiary shall be capable of performing either directly or
indirectly all the obligations of the assigning Party set forth in
Agreement and the assigning Party shall guarantee the performance of such
Wholly Owned Subsidiary.
10.5 No actions, regardless of form, arising out of this Agreement may be
brought by either Party more than two (2) years after the cause of action
has arisen.
10.6 Each Party shall be responsible for compliance with all applicable laws,
regulations and ordinances. In addition, neither Party nor any of its
agents or employees acting on behalf of said Party will export or re-export
any confidential information of the other Party, or any process, product or
service that is produced
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EXECUTION DRAFT November 26, 2002
as a result of the use of such confidential information, to any country
specified in the applicable laws and regulations of, Singapore or the
United States as a prohibited destination, without first obtaining the
relevant government's approval, if required. Upon request, each Party will
advise the other of the countries then specified as prohibited
destinations.
10.7 Neither this Agreement nor any activities hereunder shall impair any right
of either Party to design, develop, manufacture, sell, market, service, or
otherwise deal in, directly or indirectly, manufacturing processes,
products or services developed by such Party completely independent of
this Agreement, including those which are competitive with those offered
by either Party. Subject to the confidentiality and license limitations
set forth in this Agreement, each Party may pursue activities
independently with any Third Party even if similar to the activities under
this Agreement.
10.8 Each Party is an independent contractor and not an agent, employee or
fiduciary of the other Party for any purpose whatsoever. Neither Party
shall make any warranties or representations on behalf of the other Party,
nor shall it assume or create any other obligations on any other's behalf.
Nothing herein shall be taken to constitute a partnership or joint venture
between the Parties hereto.
10.9 Press releases and other like publicity or advertising relating to this
Agreement and/or which mentions any other Party by name shall be agreed
upon by the Parties in writing prior to any release, such agreement not
to be unreasonably withheld.
10.10 If any section or subsection of this Agreement is found by competent
judicial authority to be invalid, illegal or unenforceable in any respect,
the validity, legality and enforceability of any such section or
subsection in every other respect and the remainder of the terms of this
Agreement shall continue in effect so long as the amended Agreement still
expresses the intent of the Parties. If the intent of the Parties cannot
be preserved, the Agreement shall be renegotiated with the Parties
substituting for any invalid or unenforceable provision a valid or
enforceable provision that achieves to the greatest extent possible the
same effect as would have been achieved by the invalid or unenforceable
provision.
10.11 Any waiver by either Party of any breach of, or failure to enforce at any
time, any of the provisions of any of this Agreement, shall not be
construed as or constitute a continuing waiver of such provision, or a
waiver of any other provision of this Agreement, nor shall it in any way
affect the validity of any of this Agreement or any part thereof, or the
right of either Party thereafter to enforce each and every provision of
any of this Agreement.
10.12 This Agreement will not be binding upon the Parties until it has been
signed herein below by or on behalf of each Party in which event it shall
be effective as of the Effective Date. This Agreement constitutes the
entire agreement between
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EXECUTION DRAFT November 26, 2002
the Parties with respect to the subject matter hereof and shall supersede
all previous communications, representations, understandings and
agreements, whether oral or written, made in the course of discussions
and/or negotiations between the Parties or any officer or representative
thereof with respect to the subject matter of this Agreement. No amendment
or modification of this Agreement shall be valid or binding upon the
Parties unless made in writing and signed on behalf of each of such
Parties by their respective representatives thereunto duly authorized. The
requirement of written form may only be waived in writing.
10.13 This Agreement may be executed in counterparts, each of which shall be
deemed an original, but each of which together shall constitute one and
the same agreement. Any signed copy of this Agreement made by reliable
means (e.g., photocopy or facsimile) is considered an original.
10.14 The terms and conditions of this Agreement are intended solely for the
benefit of each Party and their permitted successors and/or assigns, and
it is not the intention of the Parties to confer third party beneficiary
rights upon any other person or entity.
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IN WITNESS WHEREOF, the Parties hereto have caused this License Agreement to be
executed by their duly authorized representatives as of the date written above.
CHARTERED SEMICONDUCTOR MANUFACTURING INTERNATIONAL BUSINESS MACHINES
LIMITED CORPORATION
By: /s/ Chia Song Hwee By: /s/ Dr Xxxx Xxxxx, III
--------------------------------- -------------------------------
Name: Chia Song Hwee Name: Dr. Xxxx Xxxxx, III
Title: President and CEO Title: Senior Vice President and
Group Executive, Technology Group
Date: Date:
------------------------------- -----------------------------
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EXHIBIT A
130NM COPPER/FSG AND RELATED FEOL TECHNOLOGY DOCUMENTATION
ALL DOCUMENTS LISTED BELOW ARE CURRENT 130NM CU/FSG AND RELATED FEOL DOCUMENTS
UNLESS OTHERWISE NOTED.
xxxxx
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EXHIBIT B
Scope and Purpose of Each Workshop
Workshop 1 (before December 6, 2002) xxxxx (Singapore)
Items to be covered:
xxxxx
WORKSHOP 2 (BEFORE DECEMBER 21, 2002) XXXXX (FISHKILL)
Items to be covered:
xxxxx
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EXECUTION DRAFT November 26, 2002
xxxxx
Page 25 of 26
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xxxxx
Page 26 of 26
