Patent License Agreement
This
Patent License Agreement (hereafter referred to as the “Agreement”) is by and
between Xxxx Xxxxxx (formerly known as Zhao Taisheng and hereafter referred
to
as “Licensor” or “Party A”) and Yinlips Digital Technology (Shenzhen) Co., Ltd,
with an office at Xxxx 0000, Xxxxxxxx Xxxxxx Building, Shen South-Mid Road,
Futian District, Shenzhen, PRC China (hereafter referred to as “Licensee” or
“Party B”) in Shenzhen. This Agreement is entered into effective as of October
4, 2008.
Recital
A.
Party
A is the owner of the three patents which may have applicability to Party B’s
digital products;
B.
Party
B is a digital company, which has factory area of 3200 M²,
SMT
equipments, and about 300 employees and Party B has knowledge of Party A’s
patents;
C.
The
parties desire that Party A grant Party B an Exclusive License (defined below)
for incorporation of the ornamental design, applications and implementations
of
Patented Technology (defined below) as claimed in Party A’s
patents.
In
consideration of the preceding recitals and of the following terms and
conditions, the Parties agree as follows:
Article
1 Definitions
For
the
purpose of this Agreement, the following terms have the following
meanings:
“Patents”
means the ornamental designs presently owned by Licensor, granted by China
State
Intellectual Property Office, which are applicable to the manufacture of
Licensed Products.
“Licensed
Products” means any products produced by Licensee by incorporating the
ornamental design as claimed in Patents pursuant to this Agreement, which
include MP3 player and digital photo frame respectively.
“Technical
Service” means the technical assistance, instruction, training and other
services under the Agreement to be rendered by Licensor to Licensee with
regarding to the implementation of the Patents.
“Exclusive
License” means Licensee has the exclusive rights to make, use, sell or have made
to implement the Patents during the duration, within the region and technology
field prescribed in the Agreement, and Licensor and any other third party shall
not implement the Patents.
Article
2 Grant of License
Party
A
grants Party B an Exclusive License within China under the Patent rights, to
make, use, have made and sell Licensed Produces until the expiration of the
last
patent licensed under this Agreement.
Party
B
shall have the rights to further sub-license any patent rights under this
Agreement to any third party after obtaining prior written consent from Party
A.
Article
3 Patented Technology
The
patented technology under this Agreement refers to the following patents (see
the patent documents on Exhibit 1): ( 1
)
Patent
MP3 player, with its patent No. ZL 2004 3 0074077.0, and expiration date August
31, 2014; ( 2
)
Patent
MP3 player, with its patent No. ZL 2004 3 0074078.5, and expiration date August
31, 2014; and ( 3
)
Patent
digital photo frame, with its patent No. ZL 2006 3 0018829.0, and expiration
date September 17, 2016.
Article
4 Delivery of Technical Documents
Party
A
shall deliver all the patent documents prescribed in Article 3 along with the
document list to Party B face-to face within seven (7) calendar days after
the
Agreement takes effect.
Article
5 Royalty
Party
A
grants Party B rights to Patents as described above in Article 2 on a
royalty-free basis. During the duration of the Agreement, Party B shall pay
the
annual maintenance fees for the Patents pursuant to the Agreement.
2
Article
6 Technical Service and Training
1.
Within
twenty (20) calendar days after the Agreement takes effect, Party A shall impart
the patent technology and solve Party B’s technical problems concerning the
implementation of the Patents.
2.
Party
A
shall send qualified technical personnel to provide on-the-spot technical
guidance, and give training course to Party B’s technical staff.
3.
Party
A
shall ensure Party B’s technical staff have mastered the patented
technology.
4.
All
costs
concerning technical services and training shall be borne by Party
B.
Article
7 Patent Markings
Party
B
agrees to xxxx in a conspicuous location all Licensed Products and the
containers and packaging for any Licensed Product sold by Party B the word
“Patent” or “Patents” and the number or numbers of at least one of the Patents
as identified under Patented Technology in Article 3 above.
Article
8 Breach of Agreement and Claims of Damages
1.
If
Party A delays to deliver the Patent documents or provide technical services
and
training to Party A without justified reasons, and fails to perform the foresaid
obligations within Party B must give prompt notice to Party A. Within twenty
(20) calendar days after receiving
such notice from Party B, Party A must cure such deficiency. Party B has the
right to terminate the Agreement if Party A fails to cure.
2.
If
Party A implements the Patents pursuant to the Agreement itself or grants any
other third party to implement the Patents pursuant to the Agreement, Party
B
has the right to request Party A to stop such implementation or license
immediately, and has the right to terminate the Agreement.
If
Party
B grants the sublicense to other third parties without obtaining the prior
written consent from Party A, Party A has the right to request Party A to stop
such sublicense.
3.
If
Party
B does not pay the annual maintenance fees for the Patents pursuant to the
Agreement, Party A has the right to terminate the Agreement.
3
Article
9 Infringement
1.
During
the duration of the Agreement, if any allegation of infringing the rights of
a
third party occurs, Party A shall be fully responsible for the matter. Party
B
must provide prompt notice to Party A upon receiving an infringement allegation
from such third party. Party A shall indemnify Party B for its cost of defense
and damages it sustained.
2.
If any
party has found a third party infringes the Patents pursuant to the Agreement,
it shall promptly notify the other party. Party B, at its expense, has rights
to
enforce any patent exclusively licensed hereunder against infringement by third
parties. Party B is entitled to retain recovery from such enforcement.
If
Party
B does not file suit against a alleged infringer of a patent within 4 months
of
knowledge thereof, then Party A may enforce any patent licensed hereunder on
behalf of itself and Party B. Party A is entitled to retain recovery from such
enforcement and Party B shall indemnify Party A for the cost of defense.
In
any
infringement suit or dispute, the parties agree to cooperate fully with each
other. At the request and expense of the party bringing suit, the other party
will permit access to all relevant personnel, records, papers, information,
samples, specimens, etc., during regular business hours.
Article
10 The Patents Are Declared Invalidated
If
all
Patents pursuant to the Agreement are declared invalidated during the duration
of the Agreement, the Agreement will be terminated automatically.
Article
11 Force Majeure
1.
In
case that one or both parties are impossible to perform the duties provide
herein on account of Force Majeure (such as, fire, flood, earthquake, and war),
the party in contingency shall:
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(1)
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take
measures to mitigate loss;
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(2)
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immediately
inform the other party of the occurrence of the Force
Majeure;
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(3)
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provide
the certificate of non-performance which has been duly verified by
competent authority during the Force Majeure
period.
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2.
In
case of Force Majeure, the agreement is delayed in performance in reasonable
time.
4
3.
Should
the Force Majeure event last more than 6 months consecutively, this Agreement
will be terminated automatically.
Article
12 Settlement of Disputes
All
disputes arising out of or concerning this Agreement or the performance hereof,
shall be settled through negotiations. If the parties are not willing to settle
the disputes through negotiation, or no settlements are reached through
negotiation, any party can bring the case to Shenzhen Arbitration
Commission.
This
Agreement shall in all respects be governed by and construed in accordance
with
the laws of the People’s Republic of China.
Article
13 Effective date, Modification and Termination
1.
This
Agreement comes into effect when both parties hereto set their hands or seals,
and the rights and obligations shall remain in effect until September 17, 2016,
or termination of the Agreement.
2.
The
modification of this agreement shall be agreed upon by both parties in writing
through negotiations.
3.
If due
to Party B, this Agreement can not be performed, it will be terminated
automatically.
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/s/
Xxxx Xxxxxx
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[seal
of the company]
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Licensor:
Xxxx Xxxxxx
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Licensee:
Yinlips Digital Technology (Shenzhen) Co.,
Ltd.
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On
October 4,2008
In
Xxxxxxxx, Xxxxx
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