EXHIBIT 10.8
TECHNOLOGY LICENSE AGREEMENT DATED DECEMBER 17, 0000, XXXXXXX XXXXXXXX, X. A.
AND
INTERNATIONAL VERIFACT INC.
THIS TECHNOLOGY LICENSE AGREEMENT made as of the 17th day of December 1996.
BETWEEN:
INGENICO, incorporated under the laws of
France
(hereinafter called "Ingenico")
OF THE FIRST PART
- and -
INTERNATIONAL VERIFACT INC. continued
under the laws of Canada
(hereinafter called "IVI")
OF THE SECOND PART
WHEREAS Ingenico and IVI have entered into a Master Alliance Agreement made
as of the 5th day of December, 1996,
AND WHEREAS such Master Alliance Agreement contemplates Ingenico and IVI
entering into a Technology License Agreement,
NOW THEREFORE THIS AGREEMENT WITNESSETH that in consideration of the mutual
covenants and agreements contained herein, and the funds referred to in
paragraph 5.02 of the Master Alliance Agreement, the parties hereto covenant and
agree with each other as follows:
ARTICLE ONE
INTERPRETATION
1.1 DEFINED TERMS: The terms used in this Agreement have the meanings
given to them in the Master Alliance Agreement, except as set out below, where
the following terms shall have the following meanings:
"Agreement" means this Technology License Agreement, and all schedules and
instruments supplemental hereto or in amendment or confirmation hereof.
"Term" means the term provided in Section 6.1
ARTICLE TWO
GRANT OF LICENSES AND OBLIGATIONS WITH RESPECT TO UNICAPT
TECHNOLOGY
2.1 For the consideration set out in Section 5.02 of the Master Alliance
Agreement and the mutual licenses granted in this Agreement, in accordance with
the terms of this Agreement, Ingenico hereby grants to IVI:
(A) the irrevocable, royalty-free (subject to Section 2.6) exclusive license
to use and incorporate the Unicapt Technology and the Ingenico Intellectual
Property relating to the Unicapt Technology into IVI Products and IVI Future
Products manufactured by or for IVI worldwide, or used or marketed and
distributed pursuant to the Marketing and Distribution Agreement;
(B) the irrevocable, royalty-free (subject to Section 2.6) exclusive license
to use the Unicapt Technology and the Ingenico Intellectual Property relating to
the Unicapt Technology to develop, support and
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maintain applications for the Ingenico Products, Ingenico Future Products, IVI
Products and IVI Future Products incorporating the Unicapt Technology in the IVI
Territory;
(C) to the extent the Unicapt Technology and Ingenico Intellectual Property
relating to Unicapt Technology include or in any way rely upon any third party
technology and/or intellectual property, the current licenses, for which are
listed in Schedules "O" to the Master Alliance Agreement, together with all
renewals, novations and substitutions, the sub-license, and if possible, the
exclusive sub-license to use, modify, enhance and incorporate into IVI Products
and IVI Future Products, third party owned technology and intellectual property
incorporated into the Ingenico Products and Ingenico Future Products, which
sub-licenses shall be provided at the cost set out in Schedule "O" to the Master
Alliance Agreement, or in the case of future sub-licenses, at the cost, on the
same terms and conditions, of Ingenico for such sub-licenses, all of which costs
shall be paid by IVI to Ingenico;
(D) to the extent required, the right to sub-license the rights in
subparagraphs (a), (b) and (c) to the IVI Group, provided that the IVI Group
assumes the same duties and responsibilities as IVI under this Agreement as
required by Section 1.08 of the Master Alliance Agreement;
(E) the right to sub-license the rights in subparagraphs (a), (b) and (c),
to or on behalf of end user customers including original equipment manufacturers
("OEM"), of IVI Products, IVI Future Products, Ingenico Products and Ingenico
Future Products, other than these customers (including OEMs) who are a direct
competitor of the Business; and
(F) the irrevocable, royalty-free (subject to Section 2.6) license to use
the Unicapt Technology and the Ingenico Intellectual Property relating to the
Unicapt Technology to co-operate with Ingenico to develop individually or
jointly new products with common architecture and common technology which would
have worldwide application based on the Ingenico Technology, including without
limiting the generality of the foregoing, the Unicapt Technology.
2.2 Subject to the terms of this Agreement and any escrow agreement
entered into pursuant to section 2.10 this license does not grant to IVI the
license to manufacture any Ingenico Products.
2.3 Ingenico reserves the right to license the Ingenico Technology,
Ingenico Intellectual Property and Unicapt Technology to others in businesses
other than the IVI Business.
2.4 IVI shall:
(G) from and after the Closing Date, use or incorporate the Unicapt
Technology, as modified and enhanced from time to time, in any and all IVI
Future Smart Card Terminals. IVI shall not be obliged to incorporate such
technology into IVI Products or IVI Future Products other than IVI Future Smart
Card Terminals;
(H) IVI shall use the Unicapt trade xxxx or marks on IVI Future Smart Card
Terminals or their packaging; and
(I) from time to time, upon the written request of Ingenico, provide
evidence satisfactory to Ingenico, acting reasonably, that the Unicapt
Technology is incorporated into all IVI Future Smart Card Terminals.
2.5 If IVI loses its exclusive distribution rights under the Marketing
and Distribution Agreement, then Ingenico shall have the right to revoke said
exclusive license provided that such revocation shall be in substitution for a
non-exclusive license which is identical in all respects, save and except for
exclusivity.
2.6 Notwithstanding any other provision of this Agreement, Ingenico shall
sell at a transfer price which includes a reasonable charge for Unicapt
Technology, and deliver to IVI and the IVI Group, Memotite chip sets ("Unicap
chips") including, without limitation, all upgrades, enhancements, new releases
and/or replacements thereof to IVI in a timely fashion when such Unicapt chips
are ordered by IVI or the IVI Group. This transfer price will be determined on
the basis of quantity and shall reflect chip set cost reduction over time and is
as out in Schedule "K" to the Master Alliance Agreement. It is the
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Parties' intention that the transfer price for Unicapt chips will enable the IVI
Products and IVI Future Products to be and continue to be extremely competitive
where marketed.
2.7 Ingenico shall provide maintenance services, including, all technical
support reasonably requested by IVI, and all enhancement, upgrades and new
releases, other than those referred to in sections 2.8 and 2.9, to IVI for the
Unicapt Technology at no charge to IVI.
2.8 Ingenico shall make all modifications, enhancements and upgrades
requested by IVI for the purposes of adapting the Unicapt Technology to the IVI
Territory at no charge to IVI, as long as they correspond to the global market
requirements, and as agreed by the Parties from time to time.
2.9 Ingenico shall make all modifications, enhancements and upgrades
requested by IVI for the purposes of customization of the Unicapt Technology for
reasons other than those contemplated in Section 2.8 and which will be solely to
the benefit of IVI, at the cost of IVI, provided such costs are reasonable, and
all such modifications, enhancements and upgrades shall be the property of
Ingenico, provided that such modifications, enhancements and upgrades shall be
included in the license granted to IVI under Subsection 2.1 hereof.
2.10 Ingenico shall, on or before the Closing Date, place a copy of all
materials (the "Escrowed Materials") needed to replicate the Unicapt Technology
and to use, enhance, modify, manufacture, produce and market it, including,
without limitation, all materials listed on Schedule "Q" to the Master
Agreement, the source code, all know-how, schematics, lists of suppliers of
components, object code, and related documentation, in escrow in accordance with
the provisions of such reasonable agreements as may be required by the escrow
agent which shall be referable to the triggering events in (i) and (ii) below
and which shall be subject to timely update and verification in respect of all
upgrades, enhancements and new releases. The Escrowed Materials shall be
released to IVI in the event that:
(i) Ingenico is in breach or default of its obligations hereunder; or
(ii) there has been an Event of Default (other than that described in
Section 13.01 (a) of the Master Alliance Agreement) by Ingenico.
The Parties shall enter into an escrow agreement at a location and with an
escrow agent mutually agreed at the shared cost of Ingenico and IVI.
2.11 Ingenico hereby grants a royalty-free license to IVI to use the
Unicapt trade marks listed in Schedule "O" to the Master Alliance Agreement, in
the IVI Territory in association with the IVI Products and IVI Future Products
which incorporate Unicapt Technology. IVI acknowledges that the Unicapt trade
marks are the property of Ingenico. On all products or packaging bearing Unicapt
trade marks, IVI shall place notices regarding the ownership of the Unicapt
trade marks.
ARTICLE THREE
GRANT OF LICENSES AND OBLIGATIONS WITH RESPECT TO INGENICO
TECHNOLOGY
3.1 For the consideration set out in Section 5.02 of the Master Alliance
Agreement and the mutual licenses granted in this Agreement, in accordance with
the terms of this Agreement, Ingenico hereby grants to IVI for the Term:
(A) the royalty-free exclusive license to use, and incorporate the Ingenico
Technology and the Ingenico Intellectual Property into IVI Products and IVI
Future Products manufactured by or for IVI worldwide, or used or marketed and
distributed pursuant to the Marketing and Distribution Agreement;
(B) the irrevocable, royalty-free exclusive license to use the Ingenico
Technology and the Ingenico Intellectual Property to develop, support and
maintain applications for the Ingenico Products and IVI Products and IVI Future
Products in the IVI Territory;
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(C) to the extent the Ingenico Technology and Ingenico Intellectual Property
include or in any way rely upon any third party technology and/or intellectual
property, the current licenses, for which are listed in Schedule "O" to the
Master Alliance Agreement, together with all renewals, novations and
substitutions, the sub-license, and if possible the exclusive sub-license, to
use and incorporate into IVI Products and IVI future Products, third party owned
technology and intellectual property incorporated into the Ingenico Products,
and Ingenico Future Products, which sub-licenses shall be provided at the cost
set out in Schedule "O" to the Master Alliance Agreement, or in the case of
future sub-licenses, at the cost, on the same terms and conditions, of Ingenico
for such sub-licenses, all of which costs shall be paid by IVI to Ingenico;
(D) the right to sub-license the rights in subparagraphs (a), (b) and (c) to
the IVI Group, provided that the IVI Group assumes the same duties and
responsibilities as IVI under this Agreement as required by Section. 1.08 of the
Master Alliance Agreement;
(E) to the extent required, the right to sub-license the rights in
subparagraphs (a), (b) and (c) if required, to or on behalf of end user
customers, including original equipment manufacturers ("OEM") of IVI Products,
IVI Future Products, Ingenico Products and Ingenico Future Products, other than
customers (including OEMs) who are a direct competitor of the Business; and
(F) the royalty-free license to use, modify and enhance the Ingenico
Technology and the Ingenico Intellectual Property to co-operate with Ingenico to
develop individually or jointly new products with common architecture and common
components which would have worldwide application based on the Ingenico
Technology, including without limiting the generality of the foregoing, the
Unicapt Technology.
3.2 Ingenico reserves the right to license the Ingenico Technology and
Ingenico Intellectual Property to others in businesses other than the IVI
Business.
3.3 If IVI loses its exclusive distribution rights under the Marketing
and Distribution Agreement, then Ingenico shall have the right to revoke said
exclusive license provided that such revocation shall be in substitution for a
non-exclusive license which is identical in all respects, save and except for
exclusivity.
3.4 Notwithstanding any other provision of this Agreement, Ingenico shall
sell to and deliver to IVI and the IVI Group, in a timely fashion, any
proprietary components, or other elements of the Ingenico Technology at the
transfer price (including the royalty or sub-license of any third party at cost)
when such components or elements are ordered by IVI or the IVI Group, provided
that there shall be no charge for object code for software.
3.5 Ingenico shall provide maintenance services, including, all technical
support reasonably requested by IVI and all enhancement, upgrades and new
releases, as agreed to by the Parties from time to time, other than those
referred to in sections 3.6 and 3.7, to IVI for the Ingenico Technology at no
charge to IVI.
3.6 Ingenico shall make all modifications, enhancements and upgrades
requested by IVI for the purposes of adapting the Ingenico Technology to the IVI
Territory, at no charge to IVI as long as they correspond to the global market
requirements and as agreed to by the Parties from time to time.
3.7 Ingenico shall make all modifications, enhancements and upgrades
requested by IVI for the purposes of customization of the Ingenico Technology
for reasons other than those contemplated in Section 3.6 and which will be
solely to the benefit of IVI, at the cost of IVI, provided such costs are
reasonable, and all such modifications, enhancements and upgrades shall be the
property of Ingenico, provided that such modifications, enhancements and
upgrades shall be included in the license granted to IVI.
3.8 Ingenico hereby grants a royalty-free license for the Term to IVI to
use the Ingenico trade marks listed in Schedule "O" to the Master Alliance
Agreement, in the IVI Territory in association with the IVI Products and IVI
Future Products which incorporate Ingenico Technology. IVI acknowledges that
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the Ingenico trade marks are the property of Ingenico. On all products or
packaging bearing Ingenico trade marks, IVI shall place notices regarding the
ownership of the Ingenico trade marks.
ARTICLE FOUR
GRANT OF LICENSES AND OBLIGATIONS WITH RESPECT TO IVI TECHNOLOGY
4.1. For the Consideration set out in the Master Alliance Agreement and
the mutual licenses granted in this Agreement, IVI hereby grants to Ingenico for
the Term:
(a) the royalty-free exclusive license to use and incorporate the IVI
Technology and the IVI Intellectual Property, selected by Ingenico (the
"Selected IVI Technology") by written notice to IVI as soon as practicable, but
in any event not later than December 31, 1997, in Ingenico Products and Ingenico
Future Products, manufactured by or for Ingenico worldwide, or used or marketed
and distributed pursuant to the Marketing and Distribution Agreement;
(b) the royalty-free exclusive license to use and incorporate the Selected
IVI Technology and the IVI Intellectual Property relating to the Selected IVI
Technology into Ingenico Products and Ingenico Future Products to develop,
support and maintain applications for the Ingenico Products and Ingenico Future
Products incorporating the Selected IVI Technology in the Ingenico Territory;
(c) to the extent the Selected IVI Technology and IVI Intellectual Property
relating to the Selected IVI Technology, include or in any way rely upon any
third Party technology and/or intellectual property, the current licenses for
which are listed in Schedule "P" to the Master Alliance Agreement, together with
all renewals, novations and substitutions, the sub-license, and if possible the
exclusive sub-license to use and incorporate into Ingenico Products and Ingenico
Future Products, third party owned technology and intellectual property
incorporated into the IVI Products, and IVI Future Products, which sub-licenses
shall be provided at the cost set out in Schedule "P" to the Master Alliance
Agreement, or in the case of future sub-licenses, at the cost, on the same terms
and conditions of IVI for such sub-licenses, all of which costs shall be paid to
IVI by Ingenico;
(d) the right to sub-license the rights in subparagraphs (a), (b) and (c) to
the Ingenico Group, provided that the Ingenico Group assumes the same duties and
responsibilities as Ingenico under this Agreement as required by Section 1.08 of
the Master Alliance Agreement;
(e) to the extent required, the right to sub-license the rights in
subparagraphs (a), (b) and (c), to or on behalf of end user customers, including
original equipment manufacturers ("OEM'), of Ingenico Products, Ingenico Future
Products and IVI Products and IVI Future Products other than customers
(including OEMs) who are a direct competitor of the Business; and
(f) the royalty-free license to use, modify and enhance the Selected IVI
Technology and the IVI Intellectual Property relating to the Selected IVI
Technology, to co-operate with IVI to develop individually or jointly new
products with common architecture and common componentry which would have
worldwide application based on the Ingenico Technology, the Unicapt Technology
and the Selected IVI Technology as provided for in the Joint Development and
Procurement Agreement.
4.2 Subject to the terms of this Agreement, this license does not grant
to Ingenico any rights with respect to the source code of the IVI Technology nor
the license to manufacture any IVI Products.
4.3 IVI reserves the right to license the IVI Technology including the
Selected IVI Technology, and IVI Intellectual Property to others in businesses
other than the Ingenico Business.
4.4 If Ingenico loses its exclusive distribution rights under the
Marketing and Distribution Agreement, then IVI shall have the right to revoke
said exclusive license, provided that such revocation shall be in substitution
for a non-exclusive license which is identical in all respects, save and except
for exclusivity.
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4.5 Notwithstanding any other provision in this Agreement, IVI shall sell
to and deliver to Ingenico and the Ingenico Group, in a timely fashion, any
proprietary components, or other elements of the Selected IVI Technology at the
transfer price, (including the royalty or sub-license of any third party at
cost), when such components or elements are ordered by Ingenico or the Ingenico
Group, provided that there shall be no charge for object code for software.
4.6 IVI shall provide maintenance services, including all technical
support reasonably requested by Ingenico and all enhancements, upgrades and new
releases, as agreed to by the Parties from time to time, other than those
referred to in sections 4.7 and 4.8, to Ingenico for the IVI Technology at no
charge to Ingenico.
4.7 IVI shall make all modifications, enhancements and upgrades requested
by Ingenico for the purposes of adapting the IVI Technology to the Ingenico
Territory, at no charge to Ingenico as long as they correspond to the global
market requirements and as agreed by the Parties from time to time.
4.8 IVI shall make all modifications, enhancements and upgrades requested
by Ingenico for the purposes of customization of the IVI Technology for reasons
other than those contemplated in Section 4.7, and which will be solely to the
benefit of Ingenico at the cost of Ingenico, provided such costs are reasonable,
and all such modifications, enhancements and upgrades shall be the property of
IVI provided that such modifications, enhancements and upgrades shall be
included in the license granted to Ingenico.
4.9. To the extent that Ingenico does not elect to incorporate IVI
Technology into Ingenico Products, IVI shall thereafter be entitled, in its sole
discretion, to sell or lease IVI Products or IVI Future Products or license the
IVI Technology and IVI Intellectual Property to such third parties in the
Ingenico Territory as IVI shall determine.
4.10 If Ingenico does not incorporate any particular IVI Technology or
IVI Intellectual Property on or before December 31, 1998, then thereafter,
Ingenico shall have a non-exclusive license, for the Term of this Agreement, to
use, modify, enhance and incorporate such IVI Technology or IVI Intellectual
Property into Ingenico Products manufactured by or for Ingenico worldwide, used
or marketed and distributed in the Ingenico Territory or distributed pursuant to
the Marketing and Distribution Agreement.
4.11 IVI hereby grants a royalty-free license to Ingenico for the Term to
use the IVI trade marks listed in Schedule "P" to the Master Alliance Agreement,
in the Ingenico Territory in association with the Ingenico Products and Ingenico
Future Products incorporating the Selected IVI Technology or Intellectual
Property relating to the Selected IVI Technology. Ingenico acknowledges that the
IVI trade marks are the property of IVI. On all products or packaging bearing
IVI trade marks, Ingenico shall place notices regarding the ownership of the IVI
trade marks.
ARTICLE 5
INTELLECTUAL PROPERTY PROTECTION
5.1 Both Parties shall disclose, timely and fully, and make available,
from time to time, to the other Party their respective Technology, including,
without limitation, all elements of their Technology sub-licensed from third
parties and the cost of such elements, and documentation and information
concerning their intellectual property rights, including the actions taken to
protect the same.
5.2. Each Party to this Agreement shall notify the other Party as soon as
possible upon any claim being made against the Party that its use of the
Intellectual Property or Technology is alleged to be an infringement of the
intellectual property rights of others or that someone has threatened to or is
infringing the Intellectual Property of the other Party to this Agreement.
5.3. (A) It is acknowledged that each Party shall decide how and where to
protect and enforce its Intellectual Property in its Territory and in the other
Party's Territory.
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(B) In the event that a Party decides not to file patent applications,
register copyright or trade marks for its Intellectual Property in the other
Party's Territory, the other Party shall have the option and right to take such
steps as are necessary, on behalf of the Party owning the Intellectual Property
rights, at its own expense, to file and prosecute patent applications or
maintain patents, register copyright and register and maintain trade xxxx
registrations. The Party owning the intellectual property rights shall assist
the other in protecting or maintaining those rights.
(C) In the event that a Party does not initiate legal proceedings against
infringers in the other Party's Territory, the other Party shall have the right
to conduct such litigation, on behalf of and in the name of the Party whose
Intellectual Property rights have been infringed, at its own cost, and have
carriage of such litigation and recover damages or profits and legal costs on
behalf of the owner of the Intellectual Property. The Party owning the
Intellectual Property rights agrees to be joined as a Party to the litigation,
if necessary, and shall do everything reasonable to assist and support the Party
bringing the suit. All reasonable legal costs and disbursements of the Party
owning the Intellectual Property rights shall be paid for by the other Party.
ARTICLE 6
TERM
6.1 The Term of this Agreement shall be for a period of ten (10) years,
commencing January 1, 1997, and shall be automatically renewed for subsequent
periods of five (5) years unless either Party provides written notice of
non-renewal to the other not later than six months prior to the expiry of the
initial ten (10) year Term and the subsequent renewal periods, if any.
ARTICLE 7
GENERAL
7.1 The terms of Articles 1 (Interpretation) 10 (Warranties), 12
(indemnification), 15 (No Partnership) and 16 (General) of the Master Alliance
Agreement are incorporated into this Agreement by reference.
7.2 No Party shall copy, nor reproduce, totally or in part, the software
as well as the electrical and electronic design incorporated within the
Technology, nor transfer or transmit them to a third party, nor give them to a
third party, nor give them to anyone for using them, without the prior consent
of the other Party. No Party shall reverse compile, analyze, assemble or reduce
on a totally different form, humanly decipherable, the software as well as the
electrical and electronic design, without the prior consent of the other Party.
7.3 The licenses, covenants and agreements set forth in Article Two,
Article Five and Article Seven shall survive the expiry of the Term or other
termination of this Agreement, provided that with respect to Article Two,
termination of the licenses granted thereunder shall terminate in the event of a
material breach of Section 7.2 by IVI.
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IN WITNESS WHEREOF this Agreement has been executed by the parties hereto as
of the date first above written.
INGENICO
Per: ________/S/______________________
Per: ________/S/______________________
INTERNATIONAL VERIFACT INC.
Per: ________/S/______________________
Per: ________/S/______________________
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