CONFIDENTIAL INTELLECTUAL PROPERTY LICENSING AGREEMENT (Exclusive Worldwide Manufacturing, Marketing and Operational Rights) by and between Owner/Licensor: ACI Corporation AG and Licensee: ACI Technologies Ltd. Dated: 20 September 2005
CONFIDENTIAL
(Exclusive
Worldwide Manufacturing, Marketing and Operational Rights)
by
and
between
Owner/Licensor:
ACI Corporation AG
and
Licensee:
ACI Technologies Ltd.
Dated:
20
September 2005
(Exclusive
Worldwide Manufacturing, Marketing and Operational Rights)
This
Intellectual Property Licensing Agreement (“Agreement”) is entered into
effective this 20th
day of
September 2005 by and between Owner/Licensor ACI
Corporation AG,
a
company organized and existing under the laws of Germany (“Owner/Licensor
ACI AG”)
and
Licensee ACI
Technologies, Ltd.,
a
company organized and existing under the laws of Hong Kong (“Licensee
ACI Tech”).
RECITALS
WHEREAS,
Owner/Licensor
ACI AG is
the
inventor and owner of certain Intellectual Property and Technology for the
processing of previously vulcanized rubber materials using cryogenic
technologies and processes;
WHEREAS,
Owner/Licensor
ACI AG desires
to grant certain exclusive worldwide licensing rights to Licensee
ACI Tech;
and
Licensee
ACI Tech
desires
to receive said licensing rights from Owner/Licensor
ACI AG,
on the
terms and conditions set forth in this Agreement;
NOW,
THEREFORE,
in
consideration of the foregoing and of the mutual promises contained in this
Agreement, the Parties agree as follows:
1.0. Construction
and Definitions.
1.1. Definitions.
The
following capitalized terms have the meanings set forth below:
(a) “Binary
Code”
means
computer software in machine-readable, executable format that is created by
compiling and linking Source Code.
(b) “Derivative
Work”
has
the
meaning ascribed to it under the United States Copyright Law, Title 17 U.S.C.
Sec. 101 et.
seq.,
as the
same may be amended from time to time.
(c) “Improvement”
means
any adaptation, improvement, upgrade, update, enhancement, new version, patch,
extension, Derivative Work, or add-on of or to any Technology. Without limiting
the foregoing, any invention (whether patented or not) that would infringe
another patented invention will be considered an “Improvement” to such first
patented invention.
(d) “Intellectual
Property Rights”
means
any or all of the following and all rights in, arising out of, or associated
with: (i) all patents made throughout the world and incorporated herein by
this
reference, and applications therefore, including provisional applications,
and
all reissues, renewals, extensions, continuations and continuations-in-part
thereof (“Patents”); (ii) all rights (other than Patents) in inventions (whether
patentable or not), invention disclosures, improvements, trade secrets,
proprietary information, know-how, technology and technical data throughout
the
world (“Trade Secrets”); (iii) all copyrights, copyright registrations and
applications therefore and all other rights corresponding thereto throughout
the
world (“Copyrights”); (iv) all mask works, mask work registrations and
applications therefore throughout the world; (v) all industrial designs and
any
registrations and applications therefore throughout the world; (vi) any other
rights in databases and data collections throughout the world; (vii) any other
rights throughout the world in computer software including all source code,
object code, firmware, development tools, files, records and data, and all
media
on which any of the foregoing is recorded; and (viii) any similar, corresponding
or equivalent rights to any of the foregoing any where in the
world.
Page
2 of
12
(e) “Manufacturing
Rights”
means
exclusive rights to receive orders and manufacture and construct or manage
the
manufacturer and construction of ACI-50 cryogenic processing plants, or upgrades
to existing cryogenic plants based on ACI-50 technology, throughout the
world.
(f) “Marketing
Rights”
means
exclusive rights to conduct any and all activities related to the sales,
marketing and business development of ACI-50 cryogenic processing plants, or
upgrades to existing plants based on ACI-50 technology, and to any and all
materials or products produced from the operation of said cryogenic processing
plants, including controlling strategic and tactical operations and management,
throughout the world.
(g) “Operational
Rights”
means
exclusive rights to conduct any and all activities related to the operations
of
ACI-50 cryogenic processing plants, or upgrades to existing plants based on
ACI-50 technology, and the production of materials or products from the
operation of said cryogenic processing plants, throughout the
world.
(h) “Minimum
Maintenance Royalties”
means
the minimum amount paid by Licensee
ACI Tech
to
Owner/Licensor
ACI AG
on an
annual basis for the purpose of maintaining the current force and effect of
Licensee
ACI Tech’s
licensing rights as granted in this Agreement to Licensee
ACI Tech
from
Owner/Licensor
ACI AG.
(i) “Royalty
Term”
means
a
perpetual period of years from the effective date of this
Agreement.
(j)
“Software”
means
computer software in Source Code or Binary Code form.
(k) “Source
Code”
means
computer software in human readable form, including software capable of being
compiled into Binary Code.
(l) “Success-based
Royalties”
means
the amounts paid by Licensee
ACI Tech
to
Owner/Licensor
ACI AG
on a
quarterly basis for the sale, manufacture, construction and commissioning of
ACI-50 cryogenic processing plants, or upgrades to existing plants based on
ACI-50 technology, throughout the world.
(m) “Technology”
means
technology, including all patents, confidential business information, trade
secrets, know-how, show-how, techniques, design rules, inventions (whether
or
not patented or patentable), algorithms, routines, software, files, databases,
works of authorship, processes, prototypes, devices and hardware.
Page
3 of
12
(n) “Owner/Licensor
ACI AG Intellectual
Property Rights”
means
the rights of Owner/Licensor
ACI AG,
as of
the effective date, in or under any Intellectual Property Rights owned by
Owner/Licensor
ACI AG,
or
sublicensable by Owner/Licensor
ACI AG
without
any further financial obligations on the part of Owner/Licensor
ACI AG.
(o) “Owner/Licensor
ACI AG
Software”
means
the Software that is used by Owner/Licensor
ACI AG
for
manufacturing of an ACI-50 cryogenic processing plant facility.
(p) “Owner/Licensor
ACI AG
Technology”
means
the Technology that is used by Owner/Licensor
ACI AG
for
manufacturing and construction of an ACI-50 cryogenic processing plant
facility.
1.2. Construction
of Contract Language.
(a) For
purposes of this Agreement, whenever the context requires: the singular number
will include the plural, and visa versa; the masculine gender will include
the
feminine and neuter genders; the feminine gender will include the masculine
and
neuter genders; and the neuter gender will include the masculine and feminine
genders.
(b) The
Parties hereto agree that any rule of construction to the effect that
ambiguities are to be resolved against the drafting Party will not be applied
in
the construction or interpretation of this Agreement.
(c) As
used
in this Agreement, the words “include” and “including,” and variations thereof,
will not be deemed to be terms of limitation, but rather will be deemed to
be
followed by the words “without limitation.”
(d) Except
as
otherwise indicated, all references in this Agreement to “Sections” are intended
to refer to Sections to this Agreement.
(e) The
headings in this Agreement are for the convenience of reference only, will
not
be deemed to be a part of this Agreement, and will not be referred to in
connection with the construction or interpretation of this
Agreement.
2.0. Licenses
to Licensee
ACI Tech.
2.1. License
to Utilize Owner/Licensor
ACI AG
Intellectual Property Rights.
Subject
to the terms and conditions of this Agreement, Owner/Licensor
ACI AG
hereby
grants to Licensee
ACI Tech,
an
exclusive, worldwide, perpetual license to make (including to have made), use,
sell, offer for sale, export and import, or otherwise utilize in whatever manner
that is determined by Licensee
ACI Tech
in its
sole discretion to be appropriate, all rights and benefits in and to the
Owner/Licensor
ACI AG
Intellectual Property Rights (including Owner/Licensor
ACI AG
Software
and Owner/Licensor
ACI AG
Technology) in furtherance of Licensee
ACI Tech’s
exclusive rights as set forth in paragraphs 2.2, 2.3, 2.4, 2.5 and 2.6
below.
Page
4 of
12
2.2. License
to Utilize Owner/Licensor
ACI AG Software.
Subject
to the terms and conditions of this Agreement, Owner/Licensor
ACI AG
hereby
grants to Licensee
ACI Tech,
an
exclusive, worldwide, perpetual license to use, reproduce, compile into Binary
Code form, and create Derivative Works from the Source Code of the Owner/Licensor
ACI AG Software,
for those ACI-50 cryogenic processing plants manufactured and constructed by
Licensee
ACI Tech
or those
plants manufactured and constructed under the management of, or subject to
the
approval of, the Licensee
ACI Tech.
2.3. License
to Utilize Owner/Licensor
ACI AG Technology.
Subject
to the terms and conditions of this Agreement, Owner/Licensor
ACI AG
hereby
grants to Licensee
ACI Tech,
an
exclusive, worldwide, perpetual license to use Owner/Licensor
ACI AG
Technology, including all patents, confidential business information, trade
secrets, know-how, techniques, design rules, inventions (whether or not patented
or patentable), algorithms, routines, software, files, databases, works of
authorship, process, prototypes, devises and hardware for manufacturing
purposes, all rights and benefits in and to the Owner/Licensor
ACI AG
Technology, only for those ACI-50 processing plants manufactured and constructed
by Licensee
ACI Tech
or those
plants manufactured and constructed under the management of, or subject to
the
approval of, the Licensee
ACI Tech,
or
subject to a sublicense issued by Licensee
ACI Tech.
2.4. License
to Utilize Manufacturing Rights.
Subject
to the terms and conditions of this Agreement, Owner/Licensor ACI AG hereby
grants to Licensee
ACI Tech
an
exclusive, worldwide, perpetual, sub-licensable license to act as sole
manufacturing agent related to the Intellectual Property Rights and Technology
subject to this Agreement, including but not limited to conducting any and
all
activities related to the receiving of orders, manufacturing and construction,
or the management of the manufacturing and construction, of ACI-50 cryogenic
processing plants throughout the world.
2.5. License
to Utilize Marketing Rights.
Subject
to the terms and conditions of this Agreement, Owner/Licensor ACI AG hereby
grants to Licensee
ACI Tech
an
exclusive, worldwide, perpetual, sub-licensable license to act as sole marketing
agent related to the Intellectual Property Rights and Technology subject to
this
Agreement, including but not limited to conducting any and all activities
related to the sales, marketing and Business Development of ACI-50 cryogenic
processing plants, including controlling strategic and tactical operations
and
management of said ACI-50 cryogenic processing plants, throughout the
world.
2.6. License
to Utilize Operational Rights.
Subject
to the terms and conditions of this Agreement, Owner/Licensor
ACI AG
hereby
grants to Licensee
ACI Tech
an
exclusive, worldwide, perpetual, sub-licensable license to act as sole
operational agent related to the Intellectual Property Rights and Technology
subject to this Agreement, including but not limited to conducting any and
all
activities related to the operations of ACI-50 cryogenic processing plants
and
the production of materials or products from the operation of said ACI-50
cryogenic processing plants, throughout the world.
2.7. Reservation
of Rights.
Owner/Licensor
ACI AG
hereby
reserves all rights not expressly granted hereunder, including but not limited
to Design and Development Rights related to the Intellectual Property Rights
subject to this Agreement. No implied licenses are granted under this Agreement
to Licensee
ACI Tech
with
respect to any unrelated technology or Intellectual Property Rights that may
be
acquired or developed by Owner/Licensor
ACI AG
subsequent to the effective date of this Agreement. However, Owner/Licensor
ACI AG
grants
to Licensee
ACI Tech
an
exclusive, perpetual right of first refusal to obtain exclusive worldwide
licensing rights to said technology consistent with paragraphs 2.2, 2.3, 2.4,
2.5 and 2.6 above, if and when it is subsequently obtained or developed by
Owner/Licensor
ACI AG.
Page
5 of
12
3.0. Fees,
Royalties, Purchasing of Equipment and Engineering
Services.
For the
rights and licenses herein granted, Licensee
ACI Tech agrees
to
pay, or cause to be paid, fees and royalties to Owner/Licensor
ACI AG and
to
purchase equipment and engineering services from
Owner/Licensor ACI AG,
as
follows:
3.1. Minimum
Maintenance Royalties.
Licensee
ACI Tech
shall
pay to Owner/Licensor
ACI AG,
on or
before 31 December each year, the minimum amount of Two Hundred and Fifty
Thousand Euros (€250,000). In the event that no Success-based Royalties have
been paid during a given year, then the full amount of this Minimum Maintenance
Royalty shall be paid. Licensee
ACI Tech may
deduct any Success-based Royalties paid during the year from the Minimum
Maintenance Royalties owing for that calendar year. If Two Hundred and Fifty
Thousand Euros (€250,000) or more in Success-based Royalties have been paid by
Licensee
ACI Tech
to
Owner/Licensor
ACI AG
during
the calendar year then no Minimum Maintenance Royalty fee shall be due or owing.
Owner/Licensor
ACI AG
shall
have the right to waive the payment of this Minimum Maintenance Royalty for
any
given year at its sole discretion. However, any such waiver for a particular
year does not waive Owner/Licensor
ACI AG’s
rights
to enforce the collection of this Minimum Maintenance Royalty in any subsequent
year.
3.2. Success-based
Royalties.
It is
agreed that Licensee
ACI Tech
shall
pay to Owner/Licensor
ACI AG,
on a
quarterly basis, the amount of Two Hundred and Fifty Thousand Euros (€250,000)
for each ACI-50 cryogenic processing plant that Licensee
ACI Tech
sells,
manufacturers, constructs and commissions, throughout the world. So that there
is no confusion, the Parties agree that there are four (4) ACI-50 plants in
what
is popularly referred to as a “Quad” plant. This Success-based Royalty fee shall
be due and payable to Owner/Licensor
ACI AG
from
Licensee
ACI Tech at
the
end of the calendar quarter in which the processing plant was commissioned
and
approved for operation. Licensee
ACI Tech
shall
render a full statement of its account and make payment of royalties on or
before thirty (30) days after the close of each calendar quarter. Owner/Licensor
ACI AG
shall
have the right to waive the payment of this Success-based Royalty for any given
processing plant commissioning at its sole discretion. However, any such waiver
for a particular commissioning does not waive Owner/Licensor
ACI AG’s
rights
to enforce the collection of this Success-based Royalty related to any
subsequent commissioning.
3.3. Equipment
Purchasing and Engineering Services.
Licensee
ACI Tech
agrees
to purchase the equipment used in the construction of all ACI-50 cryogenic
processing plants from Owner/Licensor
ACI AG,
if
pricing for such equipment remains competitive, and to engage Owner/Licensor
ACI AG
as its
primary engineering firm, subject to separate purchase agreements and
professional services agreements as may be necessary and beneficial to the
Parties.
3.4. Accurate
Records.
Licensee
ACI Tech
agrees
to keep full and accurate records showing the sales, manufacture, construction
and commissioning of all ACI-50 cryogenic process plants throughout the world.
Licensee
ACI Tech
shall
make these records available, if requested to do so, to Owner/Licensor
ACI AG
on a
quarterly basis.
Page
6 of
12
4.0. Improvements.
4.1. Disclosure
of Improvements.
So long
as Licensee
ACI Tech
is
otherwise in the business of selling, manufacturing, constructing and
commissioning ACI-50 cryogenic processing plants and products subject to this
Agreement, Licensee
ACI Tech
shall
promptly disclose to Owner/Licensor
ACI AG
any
Improvements relevant to Owner/Licensor
ACI AG
Technology or Owner/Licensor
ACI AG
Software
created by or for Licensee
ACI Tech.
Licensee
ACI Tech
shall
provide to Owner/Licensor
ACI AG reasonable
assistance, at no cost to Owner/Licensor
ACI AG,
in
transferring the informational and engineering details of such Improvements
to
Owner/Licensor
ACI AG.
4.2. Improvement
License.
Licensee
ACI Tech
shall
grant, and does hereby grant, to Owner/Licensor
ACI AG
a
royalty-free, fully paid up, non-transferable, perpetual, non-sublicensable,
worldwide, non-exclusive license to utilize or otherwise exploit
Improvements.
4.3. Delivery
of Owner/Licensor
ACI AG Software
Source Code.
It is
agreed that Owner/Licensor
ACI AG
shall
deliver to Licensee
ACI Tech,
within
sixty (60) days after the effective date of this Agreement, a complete copy
of
the Source Code for all of the Owner/Licensor
ACI AG
Software. Thereafter, Licensee
ACI Tech
shall
promptly deliver to Owner/Licensor
ACI AG,
upon
request, a copy of any Source Code for any Improvement to the Owner/Licensor
ACI AG
Software
that must be disclosed pursuant to Section 4.1 above.
5.0. Confidential
Information.
5.1. Confidential
Information.
“Confidential
Information”
means
any information: (i) disclosed by one Party (the “Disclosing
Party”)
to the
other (the “Receiving
Party”)
in
written, graphic, machine-readable or other tangible form and marked as
“Confidential” or “Proprietary;” (ii) disclosed orally or by demonstration and
identified at the time of initial disclosure as confidential or proprietary
and
subsequently summarized in writing and similarly marked and delivered to the
Receiving Party within thirty (30) days of the initial disclosure; (iii) that
at
the time of disclosure the information is or should reasonably be known by
the
Receiving Party to be proprietary or confidential information of the Disclosing
Party; or (iv) information that is otherwise deemed to be “Confidential
Information” by the terms of this Agreement. Notwithstanding the foregoing,
Confidential Information shall include without limitation: (a) information,
technical data, and know-how that is not otherwise in the public domain
immediately prior to the effective date of this Agreement that either Party
undertakes to restrict or control the disclosure to third parties in a manner
reasonably intended to maintain its confidentiality; and (b) information
embodied in or learned from either party’s software and technology, whether or
not marked. As used in this Section 5, the terms “Receiving Party” and
“Disclosing Party” may be understood to refer to and include Owner/Licensor
ACI AG,
Licensee
ACI Tech,
and any
subsidiaries or contractors that either of these parties may have.
5.2. Confidential
Information Exclusions.
Confidential Information shall exclude information that the Receiving Party
can
demonstrate is: (i) in the public domain (through no unauthorized act or failure
to act on the part of Receiving Party; (ii) known to the Receiving Party from
a
source other than the Disclosing Party (including former employees of the
Disclosing Party); (iii) furnished to the Receiving Party by a third party
as a
matter of right and without restriction on disclosure; (iv) furnished to others
by the Disclosing Party without restriction on disclosure; or (v) independently
developed by the Receiving Party without use of the Disclosing Party’s
Confidential Information. Nothing in this Agreement shall prevent the Receiving
Party from disclosing Confidential Information to the extent that Receiving
Party is legally compelled to do so by any court, administrative agency, or
other governmental or investigative agency pursuant to proceedings over which
such agency or court has jurisdiction. However, prior to any such disclosure,
the Receiving Party shall: (a) assert the confidential nature of the
Confidential Information to the agency or court; (b) immediately notify the
Disclosing Party in writing of the agency’s or court’s order or request to
disclose; and (c) cooperate fully with the Disclosing Party in protecting
against any such disclosure and/or obtaining a protective order narrowing the
scope of the compelled disclosure and protecting its
confidentiality.
Page
7 of
12
5.3. Confidentiality
Obligation.
The
Receiving Party shall treat as confidential all of the Disclosing Party’s
Confidential Information and shall not use such information except as expressly
permitted under this Agreement. Without limiting the foregoing, the Receiving
Party shall use the same degree of care and means that it utilizes to protect
its own information of a similar nature, but in no event less than reasonable
care and means, to prevent the unauthorized use or the disclosure of such
Confidential Information to third parties. The Confidential Information may
be
disclosed only to employees or contractors of the Receiving Party with a “need
to know” who are instructed and agree not to disclose the Confidential
Information and not to use the Confidential Information for any purpose except
as set forth herein. The Receiving Party shall have appropriate written
agreements with any such employees or contractors sufficient to comply with
the
provisions of this Agreement. A Receiving Party may not alter, de-compile,
disassemble, reverse engineer, or otherwise modify any Confidential Information
received hereunder and the mingling of the Confidential Information with
information of the Receiving Party shall not affect the confidential nature
or
ownership of said Confidential Information. Subject to the foregoing,
Licensee
ACI Tech
shall
have the right to use all Owner/Licensor
ACI AG
Confidential Information in accordance with the licenses granted pursuant to
this Agreement.
5.4. Confidentiality
of Agreement.
Each
Party agrees that the terms and conditions, but not the existence, of this
Agreement shall be treated as the other Party’s Confidential Information and
that no reference to the commercial terms and conditions of this Agreement
(or
to activities pertaining thereto) may be made in any form of press release
or
public statement without first consulting the other Party. However, each Party
may disclose the terms and conditions of this Agreement: (i) as may be required
by law; (ii) to legal counsel of the Parties; (iii) in connection with the
requirements of an initial public offering or securities filing; (iv) in
confidence to accountants, banks, and financing sources, insurance organizations
and their advisors; (v) in confidence in the connection with the enforcement
of
the terms of this Agreement; or (vi) in confidence in connection with a merger
or acquisition or proposed merger or acquisition.
5.5. No
Confidential Information of Other Parties.
Each
Party represents and warrants to the other that it has not used and shall not
use in the course of its performance of this Agreement the Confidential
Information of any third party. The Parties further represent and warrant that
to the extent a Party may, from time to time, be in possession of Confidential
Information of a third party, this Confidential Information shall not be
disclosed unless expressly authorized in writing by such third
party.
5.6. Public
Announcements.
The
Parties agree to consult with each other before issuing any press release or
making any public statement with respect to this Agreement, except as may be
required by applicable law.
Page
8 of
12
6.0. Representations,
Warranties and Indemnities.
6.1. Owner/Licensor
ACI AG
Representations.
Owner/Licensor
ACI AG
hereby
represents that it has the right to grant the licenses granted in this Agreement
and that none of the licensing rights granted in this Agreement are currently
granted to any other party.
6.2. Warranty
Disclaimers.
Nothing
set forth in this Agreement will be construed to be:
(a) a
warranty, representation or admission by Owner/Licensor
ACI AG
as to
the validity, enforceability or scope of any Intellectual Property Right
licensed or transferred hereunder;
(b) a
warranty or representation by Owner/Licensor
ACI AG
that the
use of the Owner/Licensor
ACI AG
Intellectual Property Rights, Owner/Licensor
ACI AG
Technology and Owner/Licensor
ACI AG Software for
the
manufacture, use, licensing, sale, importation or other exploitation of the
Owner/Licensor
ACI AG
Intellectual Property Rights or the exercise of any license granted to
Licensee
ACI Tech
hereunder will be free from infringement of any intellectual property right
of
any third party; and
(c) an
obligation on either Party to file any patent application or to secure any
patent or to maintain any patent through the payment of patent maintenance
fees.
6.3. Owner/Licensor
ACI AG
Indemnification.
Owner/Licensor
ACI AG
agrees
to defend or at its option settle, any claim, suit or proceeding brought against
Licensee
ACI Tech
to the
extent arising out of any breach of the representations as set forth in Section
6.1 above. Owner/Licensor
ACI AG
shall
have the sole control of any such action or settlement negotiations and
Owner/Licensor
ACI AG
agrees
to pay, subject to the limitations hereinafter set forth, any final judgment
entered against Licensee
ACI Tech
in any
such suit or proceeding defended by Owner/Licensor
ACI AG.
Licensee
ACI Tech
agrees
that Owner/Licensor
ACI AG
at its
sole option shall be relieved of the foregoing obligations unless Licensee
ACI Tech
notifies
Owner/Licensor
ACI AG
promptly
in writing of such claim, suit or proceeding and gives Owner/Licensor
ACI AG
authority to proceed as contemplated herein. Licensee
ACI Tech,
at
Owner/Licensor
ACI AG’s
expense, shall also provide Owner/Licensor
ACI AG
full
information and assistance to settle and/or defend any such claim, suit or
proceeding. Owner/Licensor
ACI AG
shall
not be liable for any costs or expenses incurred without its prior written
authorization.
6.4. Licensee
ACI Tech
Indemnification.
Licensee
ACI Tech
shall
indemnify and hold Owner/Licensor
ACI AG
harmless
from and against any and all claims, losses, liabilities, demands, judgments,
costs or expenses (including reasonable attorneys’ fees) arising out of or
related to (i) any failure by Licensee
ACI Tech
to
comply with any terms or conditions of this Agreement related to the permitted
scope of use of the Owner/Licensor
ACI AG
Intellectual Property Rights, Technology or Software; (ii) any use of the
Owner/Licensor
ACI AG
Intellectual Property Rights, Technology or Software in combination with any
third-party intellectual property; or (iii) any Improvements created by or
for
Licensee
ACI Tech.
6.5. Owner/Licensor
ACI AG
DISCLAIMER.
EXCEPT
AS EXPRESSLY SET FORTH IN THIS AGREEMENT, (A) ALL OWNER/LICENSOR
ACI AG
TECHNOLOGY, OWNER/LICENSOR
ACI AG
SOFTWARE
AND OWNER/LICENSOR INTELLECTUAL PROPERTY RIGHTS, AND ALL OTHER THINGS OR RIGHTS
PROVIDED OR LICENSED BY OWNER/LICENSOR
ACI AG
TO
LICENSEE
ACI TECH
HEREUNDER, ARE PROVIDED BY OWNER/LICENSOR
ACI AG“AS
IS”
AND WITHOUT WARRANTY OF ANY KIND, AND (B) OWNER/LICENSOR
ACI AG
MAKES
NO, AND HEREBY DISCLAIMS ALL, OTHER WARRANTIES, WHETHER EXPRESS, STATUTORY,
OR
IMPLIED, INCLUDING WARRANTIES OF NON-INFRINGEMENT, MERCHANTABILITY OR FITNESS
FOR A PARTICULAR PURPOSE WITH RESPECT THERETO.
Page
9 of
12
7.0. Limitations
of Liability.
7.1. Exclusion
of Damages.
EXCEPT
FOR A BREACH OF SECTION 5, IN NO EVENT WILL EITHER PARTY BE LIABLE TO THE OTHER
PARTY FOR LOST PROFITS, COST OF PROCUREMENT OF SUBSTITUTE GOODS, OR FOR ANY
INDIRECT, SPECIAL, RELIANCE, INCIDENTAL OR CONSEQUENTIAL DAMAGES, WHETHER BASED
ON BREACH OF CONTRACT, TORT (INCLUDING NEGLIGENCE), PRODUCT LIABILITY, OR
OTHERWISE, AND WHETHER OR NOT THE OTHER PARTY HAS BEEN ADVISED OF THE
POSSIBILITY OF SUCH DAMAGE.
7.2. Failure
of Essential Purpose.
The
limitations specified in this Section 7 shall survive and apply even if any
limited remedy specified in this Agreement is found to be
unenforceable.
8.0. Term
and Termination.
8.1. Term.
The
term of this Agreement shall begin on the effective date first mentioned above
and continue for the entire Royalty Term unless this Agreement is terminated
pursuant to Section 8.2.
8.2. Termination.
Owner/Licensor
ACI AG
may
terminate this Agreement and all licenses to Licensee
ACI Tech
hereunder in the event of a material breach of the terms of this Agreement
by
Licensee
ACI Tech
that is
not cured within thirty (30) days of written notice of such breach. Any licenses
under this Agreement to Owner/Licensor
ACI AG
of any
Licensee
ACI Tech
Intellectual Property, Technology or Software will survive such termination.
Any
sublicense agreement in effect at the time of termination shall remain in full
force and effect but Owner/Licensor
ACI AG
shall
assume all rights and responsibilities of Licensee
ACI Tech
under
the terms of said sublicense agreement.
8.3. Effect
of Termination or Expiration.
Upon
termination or expiration of this Agreement for any reason, each Party shall
immediately destroy or return to the other Party all tangible items in its
possession or control that embody Confidential Information of such other
Party.
8.4. Survival.
The
provisions of Sections 1, 4.2, 4.3, 5, 6, 7, 8.3, 8.4, and 9 shall survive
the
termination or expiration of this Agreement for any reason.
9.0. General
Provisions.
9.1. Notices.
All
notices, requests and other communications to any Party hereunder shall be
in
writing (including facsimile transmission) and shall be sent to the signatories
of this Agreement at their respective primary place of business. All such
notices, requests and other communications shall be deemed received on the
date
of the receipt by the Receiving Party if received prior to 17:00 hours (5:00
p.m.) in the place of receipt and such day is a business day in the place of
receipt. Otherwise, any such notice, request or communication shall be deemed
received on the next succeeding business day in the place of
receipt.
Page
10
of 12
9.2. Amendments
and Waivers.
(a) Any
provision of this Agreement may be amended or waived if, but only if, such
amendment or waiver is in writing and is signed, in the case of an amendment
by
each Party to this Agreement, or in the case of a waiver by the Party against
whom the waiver is to be effective.
(b) No
failure or delay by any Party in exercising any right, power or privilege
hereunder shall operate as a waiver thereof nor shall any single or partial
exercise thereof preclude any or other further exercise thereof or the exercise
of any other right, power or privilege. The rights and remedies herein provided
shall be cumulative and not exclusive of any rights or remedies provided by
law.
9.3. Expenses.
All
costs and expenses incurred in connection with this Agreement shall be paid
by
the Party incurring such cost or expense.
9.4. Successors
and Assigns.
The
provisions of this Agreement shall be binding upon and inure to the benefit
of
the Parties hereto and their respective successors and assigns; provided that
no
Party may assign, delegate or otherwise transfer any of its rights or
obligations under this Agreement without the prior written consent of the other
Party hereto.
9.5. Governing
Law.
This
Agreement shall be governed by and construed in accordance with the laws of
Germany, without regard to the conflicts of law rules that may exist under
German law.
9.6. Counterparts;
third Party Beneficiaries.
This
Agreement may be signed in any number of counterparts, each of which shall
be an
original, with the same effect as if the signatures were upon the same
instrument. This Agreement shall become effective when each Party shall have
received a counterpart of this Agreement signed by the other Party. No provision
of this Agreement is intended to confer upon any person or entity other than
the
Parties to this Agreement any rights or remedies hereunder.
9.7. Entire
Agreement; Severability.
This
Agreement constitutes the entire agreement between the Parties with respect
to
the subject matter of this Agreement and supercedes all prior agreements and
understandings, both oral and written, between the Parties with respect to
the
subject matter of this Agreement. If at any time subsequent to the effective
date hereof any term or provision of this Agreement shall be determined to
be
partially or wholly illegal, void or unenforceable, such provision shall be
of
no force and effect to the extent so determined, but the illegality or
unenforceability of such term or provision shall have no effect upon and shall
not impair the legality or enforceability of any other term or provision of
this
Agreement.
9.8. Captions.
The
captions herein are included for convenience of reference only and shall be
ignored in the construction or interpretation of this Agreement.
Page
11
of 12
9.9. Representation
by Counsel; Interpretation.
Owner/Licensor
ACI AG
and
Licensee
ACI Tech
each
acknowledge that they have been represented by counsel in connection with this
Agreement, or has had opportunity to seek legal counsel and has voluntarily
elected not to do so. Accordingly, any rule of law or any legal decision that
would require interpretation of any claimed ambiguities in this Agreement
against the Party that drafted it has no application and is expressly waived.
The provisions of this Agreement shall be interpreted in a reasonable manner
to
effect the intent of Owner/Licensor
ACI AG
and
Licensee
ACI Tech.
9.10. Consent
to Jurisdiction.
Each of
the Parties agrees that all actions, suits or proceedings arising out of or
based upon this Agreement or the subject matter hereof shall be brought and
maintained exclusively in the applicable court located in Berlin,
Germany.
9.11. Injunctive
Relief.
It is
understood and agreed that, notwithstanding any other provision of this
Agreement, either Party’s breach of confidentiality obligations or provisions
relating to proprietary rights will cause irreparable damage for which recovery
of money damages would be inadequate, and that the other Party will therefore
be
entitled to seek timely, injunctive relief to protect such Party’s rights under
this Agreement in addition to any and all remedies available at law. Each Party
further agrees that no bond or other security shall be required in obtaining
such equitable relief, nor will proof of actual damages be required for such
equitable relief. Each Party hereby expressly consents to the issuance of such
injunction and to the ordering of such specific performance.
IN
WITNESS WHEREOF,
the
Parties, by their duly authorized representatives, have executed this Agreement
as of the effective date first set forth above.
|
For
ACI
Corporation AG:
|
For
ACI
Technologies, Ltd.:
|
 |
 |
|
By:
______________________________
|
By:
_____________________________
|
|
Xxxxxxx
Xxxxxxx,
|
Xxxxx
Xxxxxxxx
|
|
Managing
Director
|
Director
|
Page
12
of 12
