EXHIBIT 4.10
Confidential Information (indicated
by [...]) has been omitted and filed separately with the
Securities and Exchange Commission.
NON-ASSERTION AGREEMENT
This Non-assertion Agreement (hereinafter
referred to as the “Agreement”) is made and entered into this
30th day of June, 2004 (“Effective Date”), by and
between Mitsubishi Electric Corporation, a corporation of Japan, having its
principal office at 0-0-0, Xxxxxxxxxx Xxxxxxx-xx, Xxxxx 000-0000, Xxxxx (hereinafter
referred to as “Mitsubishi”), and WAVECOM S.A., a corporation
of France, having its principal office at 0, xxxxxxxxx xx Xxxxxx, 00000 Xxxx-xxx-Xxxxxxxxxx
Xxxxx Xxxxxx (hereinafter referred to as “Wavecom”).
WITNESSETH
WHEREAS, Mitsubishi and Wavecom own
certain patents technically or commercially essential to the GSM Standards
and other patents which are not essential to the GSM Standards but may be
used for mobile communication systems in the field of GSM; and
WHEREAS, Mitsubishi and Wavecom desire
to determine fair, reasonable and non discriminatory terms and conditions
which cover all patent issues, including any future potentials, relating
to both parties’ GSM products.
NOW, THEREFORE, in consideration
of the mutual premises and covenants contained herein, Mitsubishi and Wavecom
agree as follows:
ARTICLE 1 – DEFINITIONS
| For the purpose of this Agreement,
the following terms shall have the following meanings: |
| 1.1 |
“Patent(s)” shall mean any patent,
including utility models but excluding design patents and registered
designs and other protection of the appearance of a product, applied
for, issued or registered at any time, prior or during this Agreement,
in any country of the world. The term Patent shall also include any patent
application for any Patent as well as any division, continuation, continuation-in-part,
reissue, renewal, and extension of the Patent and any patent resulting
from the patent applications. |
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| 1.2 |
“Mitsubishi Patent(s)” shall
mean (i) any Patent having claims the infringement of which cannot reasonably
be avoided in remaining compliant with any of the GSM Standards either
for technological reasons or for lack of commercially viable technical
alternatives (“Technically/Commercially Essential Patents”)
and (ii) any Patent which is not essential to the GSM Standards but may
be used for GSM mobile communication systems, owned and controlled by
the Communication Systems Group of Mitsubishi or Mitsubishi’s Affiliates
controlled by CSG (collectively, “Mitsubishi CSG”) on, before
and after the Effective Date of this Agreement. For the avoidance of
doubt, Mitsubishi Patents shall include Technically/Commercially Essential
Patents, if any, which are owned and controlled by any Mitsubishi’s
business units or Affiliates other than Mitsubishi CSG on, before and
after the Effective Date of this Agreement. Mitsubishi Patents shall
not include any patent of Mitsubishi that is handled or jointly licensed
in any patent pool or consortium such as the MPEG4 Visual and MPEG4 Systems. |
| 1.3 |
“Wavecom Patents” shall mean
(i) any Patent having claims infringement of which cannot reasonably
be avoided in remaining compliant with any of the GSM Standards either
for technological reasons or for lack of commercially viable technical
alternatives (“Technically/Commercially Essential Patents”),
and (ii) any Patent which is not essential to the GSM Standards but may
be used for GSM mobile communication systems, owned and controlled by
Wavecom or its Affiliates on, before and after the Effective Date of
this Agreement. Wavecom Patents shall not include any patent of Wavecom
that is handled or jointly licensed in any patent pool or consortium. |
| 1.4 |
“Mitsubishi Products” shall
mean: |
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(a) |
complete mobile terminals (such
as a PDA, smart phone or cellular phone); |
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(b) |
modems being a stand alone voice
and/or data communication device which comprises in a common housing
a SIM card holder and interfaces to external voice and/or data sources; |
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(c) |
modules being an intermediate
device intended to be integrated or used in combination with other equipments
or devices through interfaces with voice and/or data sources; and |
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(d) |
complete kits for modules having
substantially all of the following functions:Radio Frequency and Base
Band software and hardware; |
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which operate in compliance
with the GSM Standards or enable a feature or a function under the GSM
Standards. It is noted that Mitsubishi Products shall not include the
same with so-called "dual-mode" function which operates in
compliance with (i) the GSM Standards and (ii) XXXXX, XXXX0000 or any
other telecommunication standards. |
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| 1.5 |
“Wavecom Products” shall
mean: |
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(a) |
modems being a stand alone voice
and/or data communication device which comprises in a common housing
a SIM card holder and interfaces to external voice and/or data sources; |
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(b) |
modules being an intermediate
device intended to be integrated or used in combination with other equipments
or devices through interfaces with voice and/or data sources; and |
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(c) |
complete kits for modules having
substantially all of the following functions: Radio Frequency and Base
Band software and hardware; |
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which operate in compliance
with the GSM Standards or enable a feature or a function under the GSM
Standards. It is noted that Wavecom Products shall not include the same
with so-called “dual-mode” function which operates in compliance
with (i) the GSM Standards and (ii) XXXXX, XXXX0000 or any other telecommunication
standards. |
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For the avoidance of doubt,
Wavecom Products include any of (a), (b) and (c) products whatever their
further use ie without limitation, which are used in or with any “Vertical
Applications” including vehicles, vending machines, banking machines,
wireless local loop equipments, or “Personal Communication Devices” including
handsets, PDAs, or computing. |
| 1.6 |
“GSM Standard(s)” shall
mean the standard specifications by ETSI and/or other national telecommunications
standards setting body, that are applicable to the Global System for
Mobile Communications (“GSM”), the General Packet Radio Services
(“GPRS”) and the Enhanced Data for GSM Evolution (“EDGE”)
including its revisions, and localized version thereof, but not fundamentally
altered. For the avoidance of doubt, any third generation mobile telephony
standard, including but not limited to IMT-2000, 3GPP, 0XXX0, XXXXX,
XXXX0000 and TD-SCDMA, shall not be included in the definition of GSM
Standard hereunder. |
| 1.7 |
“Affiliate(s)” shall
mean a corporation or other entity of which a party hereto owns or controls,
directly or indirectly, more than fifty percent (50%) of its voting stocks
or rights; provided, however, that such corporation or other entity shall
be regarded as Affiliate(s) only as long as such ownership or control
exists. |
| 1.8 |
“Net Sales Price” shall
mean the gross invoice price of Wavecom Products as packed for shipment
without any reductions except for the following items to the extent to
which they are either separately itemized, or otherwise identifiable
to the satisfaction of Mitsubishi and paid or allowed and included in
the gross invoice price: |
Page 3 of 17
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(a) |
sales or turnover taxes on sales
invoices; |
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(b) |
transportation charges, and
insurance costs on shipments to customers; |
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(c) |
discounts allowed in amounts
customary in the trade; |
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(d) |
credits allowed for Wavecom
Products returned or not accepted by customers. |
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Wavecom Products shall be deemed
to be sold, leased or otherwise transferred to the customers, as the
case may be, when they are invoiced or, if not invoiced, shipped to the
customers. Wavecom Products shipped at no charge for test, evaluation
and demonstration purposes in the normal course of the business shall
not be considered as sold, leased or otherwise transferred and shall
not be reported to Mitsubishi nor subject to any royalty payment. |
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ARTICLE 2 – NON ASSERTION
OF RIGHTS/RELEASE |
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| 2.1 |
Subject to the terms and conditions
of this Agreement, Mitsubishi hereby agrees that Mitsubishi and its Affiliates
will not assert, during the term of this Agreement, directly and indirectly,
any cause of action based, in whole or part, upon the purported infringement
by Wavecom, its Affiliates, their direct or indirect customers and subcontractors,
of any of Mitsubishi Patents, as a result of manufacture, subcontracted
manufacture, use, sale, offer for sale, lease, import or other disposition
of Wavecom Products in any country of the world. |
| 2.2 |
In no event shall the provision
of Article 2.1 be construed as Mitsubishi granting any license or immunity
either directly or by implication, estoppel or otherwise, to any third
party acquiring any Wavecom Product either directly or indirectly from
Wavecom or its Affiliates for: (a) the combination of such Wavecom Product
by such third party with any hardware or software item not acquired from
Wavecom, where such combination is the direct cause of infringement (direct
or contributory infringement) of any Mitsubishi Patent; or (b) any hardware
or software item per se not acquired directly or indirectly from Wavecom
that such third party combines with such Wavecom Product. However, Mitsubishi
hereby covenants not to assert nor have asserted (including ensures that
its Affiliates do not assert or have not asserted) any of Mitsubishi
Patents against Wavecom and its Affiliates regarding its/their licensing
of an internal design to make mobile terminals (technology licensing).
For the avoidance of doubt, in no event shall Mitsubishi’s covenant
of no-assertion hereunder be construed as covering any products which
Wavecom’s customers purchased from any entity other than Wavecom,
its Affiliates or their authorized distributors. |
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| 2.3 |
As partial consideration for
the non-assertion of rights under Article 2.1, Wavecom agrees that Wavecom
and its Affiliates will not assert, during the term of this Agreement,
directly and indirectly, any cause of action based, in whole or part,
upon the purported infringement by Mitsubishi, its Affiliates, their
direct or indirect customers and subcontractors, of any of Wavecom Patents,
as a result of manufacture, subcontracted manufacture, use, sale, offer
for sale, lease, import or other disposition of Mitsubishi Products in
any country of the world. |
| 2.4 |
In no event shall the provision of Article
2.3 be construed as Wavecom granting any license or immunity either directly
or by implication, estoppel or otherwise, to any third party acquiring
any Mitsubishi Product either directly or indirectly from Mitsubishi
or its Affiliates for: (a) the combination of such Mitsubishi Product
by such third party with any hardware or software item not acquired from
Mitsubishi, where such combination is the direct cause of infringement
(direct or contributory infringement) of any Wavecom Patent; or (b) any
hardware or software item per se not acquired directly or indirectly
from Mitsubishi that such third party combines with such Mitsubishi Product.
However, Wavecom hereby covenants not to assert nor have asserted (including
ensures that its Affiliates do not assert or have not asserted) any of
Wavecom Patents against Mitsubishi and its Affiliates regarding its/their
licensing of an internal design to make mobile terminals (technology
licensing). For the avoidance of doubt, in no event shall Wavecom’s
covenant of no-assertion hereunder be construed as covering any products
which Mitsubishi’s customers purchased from any entity other than
Mitsubishi, its Affiliates or their authorized distributors. |
| 2.5 |
For the purpose of this Article 2, “subcontracted
manufacture” of Mitsubishi Products or Wavecom Products includes
the act of Mitsubishi or Wavecom to subcontract portions of the manufacture
and/or assembly of Mitsubishi Products or Wavecom Products to third parties
and also the act of Mitsubishi or Wavecom to have a third party manufacture
Mitsubishi Products or Wavecom Products for the sole account of Mitsubishi
or Wavecom; provided that said Mitsubishi Products or Wavecom Products
are made by such third party by using manufacturing drawings and specifications
provided by Mitsubishi or Wavecom respectively which are in sufficient
detail that no major additional designing is required by such third party
except for adoption to the production processes and standards normally
used by the third party. |
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| 2.6 |
Each party hereby, for itself and its present
Affiliates, releases the other party and the other party’s Affiliates
and all customers of such other party and such other party’s Affiliates
who have purchased or used Mitsubishi Products or Wavecom Products herein
subject of this Agreement, from all claims, demands and rights of action
which the first mentioned party or any of its present Affiliates may
have on account of any act of infringement or alleged infringement of
any Wavecom Patents or Mitsubishi Patents respectively prior to the Effective
Date of the Agreement. |
| 2.7 |
Either party agrees to be responsible for
its Affiliates’ compliance with the terms and conditions of this
Agreement. |
| 2.8 |
This Agreement does not grant
any right or license, or non-assertion under any intellectual property
rights of either party except for the obligation of non-assertion of
rights set forth in Article 2.1, 2.2, 2.3, 2.4 and 2.6 hereof, and no
other right or license is to be implied by or inferred from any provision
of this Agreement or by the conduct of the parties except as expressly
provided in this Agreement. |
| 2.9 |
Neither party shall use any
trademark of the other party or any marks, signs or symbols similar to
or resembling any trademark or trade names of the other party. |
| 2.10 |
Neither party shall have any
obligation to provide the other party with any technical assistance,
technical training nor other technical services. |
ARTICLE 3 – CONSIDERATION
| 3.1 |
In consideration of the non-assertion of
rights under Article 2.1 of this Agreement, Wavecom shall pay to Mitsubishi,
(i) with respect to Wavecom’s sales on and before 31 December 2003,
[…], and (ii) with respect to Wavecom’s sales on and after
1 January 2004, a running royalty at the royalty rate of […] based
upon the Net Sales Price of all Wavecom Products sold, leased or otherwise
transferred to the customer by Wavecom or its Affiliates in any country
of the world. The initial payment shall not be credited against any running
royalties hereunder. |
| 3.2 |
No royalty shall be due by Wavecom to Mitsubishi
for any Wavecom Products sold to Mitsubishi or an Affiliate of Mitsubishi. |
| 3.3 |
No royalty shall be due by Wavecom to Mitsubishi
for Wavecom Products rented, leased, let out or otherwise delivered at
no charge to a Wavecom customer for normal commercial practice (engineering
samples, test products, etc). |
| 3.4 |
Royalty shall be payable once for each Wavecom
Product sold by Wavecom or a Wavecom Affiliate. In the event that a customer
or prospective customer of Wavecom claims already |
Page 6 of 17
to have an obligation to pay royalties
to Mitsubishi under an existing license agreement (or non-assertion agreement)
in respect of Mitsubishi Patents, which license/non-assertion covers the
purchase of Wavecom Products (an “Other Mitsubishi Licensee”)
Wavecom shall provide written notice to Mitsubishi of the identity of such
Other Mitsubishi Licensee. Mitsubishi shall confirm to Wavecom whether Wavecom
will be exempted from paying royalties to Mitsubishi under this Agreement
in respect of sales to that Other Mitsubishi Licensee; provided however that
if Mitsubishi does not provide such written response to Wavecom within twenty
(20) business days of such notice, Wavecom shall be exempt from paying applicable
royalties to Mitsubishi under this Agreement. Any such notice provided pursuant
to this Article 3.4 shall be considered confidential information subject
to the confidentiality provisions of this Agreement.
| 3.5 |
In view of the continuous changes in the
GSM market, Wavecom shall have the right to request, on and after the
third anniversary of the Effective Date, from Mitsubishi a renegotiation
of the financial terms of this Agreement upon production of evidences
that Mitsubishi’s royalty rates are unreasonably high vis-à-vis
the rates of comparable licensors for comparable agreements. |
| 3.6. |
The non-assertion and release
granted to Mitsubishi and its Affiliates, including immunity to their
customers and subcontractors under Article 2.3 shall be royalty free
and fully paid-up. |
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ARTICLE 4 – PAYMENT,
RECORDS AND REPORTS |
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| 4.1 |
The initial payment set forth
in Article 3.1 is payable to Mitsubishi in […] installments as
follows: |
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Mitsubishi shall invoice Wavecom
and Wavecom shall pay Mitsubishi according to the above dates. |
| 4.2 |
Wavecom agrees to make written
reports to Mitsubishi within thirty (30) days after March 31, June 30,
September 30 and December 31 of each year during the term of this Agreement
and within sixty (60) days after expiration or termination of this Agreement,
describing and stating the followings: |
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(a) |
number of Wavecom Products sold,
leased or otherwise transferred to the customers by Wavecom and its Affiliates,
during the preceding calendar quarter; |
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(b) |
Net Sales Price of Wavecom Products
sold, leased or otherwise transferred to the customers by Wavecom and
its Affiliates; |
Page 7 of 17
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(c) |
total royalties due; and |
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(d) |
names and addresses of all
Affiliates to which this Agreement has been extended. |
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Such written reports shall be
submitted, whether or not use, sales, or otherwise disposition occurred
during the reporting period in question. Wavecom will provide to Mitsubishi
on a regular basis the names of the customers of Wavecom Products either
(i) when such information is not any more covered by a confidentiality
obligation towards such Wavecom customers or (ii) in connection with
the non assertion obligations under the Agreement, upon Mitsubishi’s
written request who is willing to confirm the information given by the
customer itself that such is a Wavecom customer. |
| 4.3 |
Notwithstanding the provision
of Article 4.2 above, Wavecom shall provide, no later than 28 July 2004,
Mitsubishi with a report on the Wavecom Products sold by Wavecom and
its Affiliates during the first two calendar quarters of 2004 (1 January
2004 through 31 June 2004). The first payment in accordance with Article
4.1 shall be made together with the royalty payment for all Wavecom Products
sold during the period January 1st and June 30th 2004,
which payment shall be made no later than 31 July 0000.Xxxxxxxxxx will
invoice Wavecom separately for the first payment made in accordance with
Article 4.1 and for the amount of royalties due for the two first quarters
of 2004. |
| 4.4 |
Mitsubishi shall invoice Wavecom
according to Wavecom royalty statements and Wavecom shall pay Mitsubishi
invoices no later than thirty (30) days following receipt of the invoice.
All payments shall be made in the Euro currency to Mitsubishi at the
following bank account via wire transfer without deductions or charges
of any kind except for the withholding taxes under Article 4.7: |
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In the event Wavecom’s
invoiced price to the customers is in a currency other than Euro, such
amount shall be converted into the Euro currency using the monthly average
of all the daily Euro foreign exchange reference rates published by the
ECB (European Central Bank) for the relevant calendar month in which
the sales occur. |
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| 4.5 |
In the event that any amount
payable under this Agreement is not paid by the date payment is due,
Wavecom shall also pay interest on such amount at the annual rate […]
for the period from the due date to the date on which payment is actually
made. If such interest rate exceeds the maximum legal rate in the jurisdiction
where a claim therefore is being asserted, the interest rate shall be
reduced to such maximum legal interest rate. |
| 4.6 |
Wavecom shall, for at least
three (3) years after the date of submission of each report as required
under Article 4.2 and 4.3, keep records in sufficient detail to permit
the determination of the running royalties payable hereunder and at the
request and expenses of Mitsubishi, will permit an independent certified
public accountant selected by Mitsubishi, or any other person acceptable
to both Wavecom and Mitsubishi (“Auditor”), to examine during
ordinary business hours such records as may be necessary to verify or
determine royalties paid or payable under this Agreement. Such Auditor
shall be instructed to report to Mitsubishi only information related
to determining the amount of royalties due and payable. Should such examination
lead to the discovery of a greater than […] discrepancy in reporting,
Wavecom shall reimburse Mitsubishi for its reasonable costs of appointing
the Auditor to carry out and report on such examination, in addition
to Wavecom making prompt payment of such underpayment together with interest
for late payment calculated in accordance with Article 4.5. |
| 4.7 |
Except as otherwise expressly
provided below, all payments under this Agreement shall be in the full
amounts as stated herein, exclusive of any taxes, duties, levies, fees
and the like which may be levied by the Government of France. All such
taxes, fees or the like shall be the responsibility of Wavecom's account;
provided, however, that in the event income taxes are levied by the Government
of France upon payments due to Mitsubishi hereunder, Wavecom may deduct,
as required by the income tax laws of France, such income taxes from
the payments due to Mitsubishi and pay the same, as income taxes, on
behalf of Mitsubishi to the Tax Authorities of France and provided further
that Wavecom shall provide Mitsubishi as promptly as possible with the
relevant tax receipts evidencing payment of such taxes on behalf of Mitsubishi
which are necessary for Mitsubishi to obtain any related income tax credits
in Japan. Mitsubishi has agreed to the provisions of this Article based
on the understanding that the current withholding tax rate applicable
to payments hereunder in accordance with the current Tax Treaty between
the France and Japan is ten percent (10%) for the initial payment and
running royalties hereunder. If and when the Tax Treaty between France
and Japan is amended and the amendment releases Wavecom from the obligation
to pay on behalf of Mitsubishi any withholding tax on running royalties
hereunder, the ten percent (10%) French withholding tax on the running
royalties will no longer be applicable. |
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ARTICLE 5 – PARTIAL
SUSPENSION OF NON-ASSERTION |
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| 5.1 |
If during the term of this
Agreement a direct or indirect customer of Wavecom Products (“Wavecom
Customer”) asserts a patent relating to radio telephony equipment
in the field of GSM (“Wavecom Customer Patent”) against Mitsubishi
and the Wavecom Customer also asserts that Mitsubishi is prevented from
asserting claims under Mitsubishi Patents against the Wavecom Customer
as a result of the non-assertion set forth in Articles 2.1, then the
non-assertion hereunder extended to such Wavecom Customer shall immediately
be suspended as of the date of written notice to Wavecom. The suspension
shall be effective only if and so long as Mitsubishi actively negotiates
and/or defends such claim and only to the extent necessary to obviate
the assertion made by the Wavecom Customer that Mitsubishi is prevented
from asserting claims against such Wavecom Customer under Mitsubishi
Patents. Such suspension shall remain in effect until such time as the
Wavecom Customer and Mitsubishi enter into a license or settlement agreement
under the Wavecom Customer Patent, at which time the non-assertion extended
to the Wavecom Customer shall immediately be reinstated. |
| 5.2 |
If during the term of this
Agreement a direct or indirect customer of Mitsubishi Products (“Mitsubishi
Customer”) asserts a patent relating to radio telephony equipment
in the field of GSM (“Mitsubishi Customer Patent”) against
Wavecom and the Mitsubishi Customer also asserts that Wavecom is prevented
from asserting claims under Wavecom Patents against the Mitsubishi Customer
as a result of the non-assertion set forth in Articles 2.3, then the
non-assertion hereunder extended to such Mitsubishi Customer shall immediately
be suspended as of the date of written notice to Mitsubishi. The suspension
shall be effective only if and so long as Wavecom actively negotiates
and/or defends such claim and only to the extent necessary to obviate
the assertion made by the Mitsubishi Customer that Wavecom is prevented
from asserting claims against such Mitsubishi Customer under Wavecom
Patents. Such suspension shall remain in effect until such time as the
Mitsubishi Customer and Wavecom enter into a license or settlement agreement
under the Mitsubishi Customer Patent, at which time the non-assertion
extended to the Mitsubishi Customer shall immediately be reinstated. |
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| 6.1 |
Either party may disclose
the existence of this Agreement, but the terms of this Agreement shall
be maintained in confidence and the parties shall not divulge any part
thereof to any third party except: |
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(a) |
with the prior written consent
of the other party; or |
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(b) |
to any governmental body having
jurisdiction to request and to read the same; or |
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(c) |
as otherwise may be required
by law or legal processes; or |
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(d) |
to auditors and accountants
representing either party, provided that, in case of such divulgence
pursuant to this section 6.1(d), to the extent permissible by law, such
divulging party shall impose equivalent confidentiality obligations on
the recipient in writing prior to such divulgence; or |
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(e) |
to its Affiliates, and as applicable
hereunder to its customers and subcontractors provided that, in case
of such divulgence pursuant to this section 6.1(e), to the extent permissible
by law, such divulging party shall impose equivalent confidentiality
obligations on the recipient in writing prior to such divulgence, and
provided the financial terms of this Agreement remain undisclosed to
customers and subcontractors. |
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Notwithstanding the above, no
disclosure of this Agreement shall be made pursuant to section 6.1(b)
and 6.1(c) without the disclosing party first giving the other party
sufficient time to seek a protective order or otherwise assure the confidentiality
of this Agreement as that other party shall deem appropriate. Mitsubishi
acknowledges that Wavecom is listed on both the NASDAQ and Euronext Stock
Exchanges and that Wavecom may be required to make certain disclosures
relating to this Agreement to the extent necessary to meet the regulatory
requirements of those Exchanges, and in particular the rules of the US
Securities Exchange Commission (SEC). Mitsubishi hereby authorizes Wavecom
to make such disclosures, provided that (i) Wavecom shall have the financial
terms hereof remain undisclosed and (ii) Wavecom shall make its reasonable
efforts to inform Mitsubishi in writing of the scope of the required
disclosure prior to such disclosure by providing the confidential version
of the Agreement that Wavecom intends to disclose. |
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ARTICLE 7 – TERM AND
TERMINATION |
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| 7.1 |
This Agreement shall become
effective on the Effective Date and shall remain in force until cessation
of manufacture of Mitsubishi Products and Wavecom Products by both parties
and their respective Affiliates unless earlier terminated according to
the provisions of Article 7.2 below. |
| 7.2 |
Either party may terminate
this Agreement by giving written notice to the other party if: |
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(a) |
The other party fails to perform
or comply with this Agreement or any provision hereof and does not remedy
such failure within sixty (60) days following the dispatch of the notice
of such failure from the non-defaulting party; |
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(b) |
The other party enters into
voluntary or involuntary bankruptcy or insolvency, or ceases to make
payments to its creditors; |
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(c) |
A receiver or trustee is appointed
to take over or administer or conduct all or a substantial part of the
business or property of the other party; |
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(d) |
The other party is dissolved or liquidated. |
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The rights and remedies under
this Article 7.2 shall not be exclusive and can be exercised in addition
to any other rights and remedies provided by law or under this Agreement. |
| 7.3 |
If a third party acquires ownership
of one party (by way of merger, acquisition, consolidation, transfer
or otherwise) and notifies the other party of its intention to maintain
the Agreement, then this third party shall be deemed substituted for
the name of Wavecom or Mitsubishi (as applicable) and have all the rights
and obligations of Wavecom or Mitsubishi (as applicable) under this Agreement. |
| 7.4 |
Each party and their Affiliates
shall have the right, subject to the reporting and payment obligations
of this Agreement which shall remain in effect to this purpose, to sale,
offer for sale, lease, import or other dispose of any Wavecom Products
or Mitsubishi Products in the process of manufacture or in finished goods
inventory upon the termination of this Agreement. |
| 7.5 |
The provisions of Articles
4.5, 4.6, 5, 6, 7.4, 7.5, 8, 9, 10, 13 and 14 shall survive any termination
or expiration of this Agreement. |
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ARTICLE 8 – WARRANTY/
DISCLAIMER OF WARRANTY |
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| 8.1 |
Each party hereby represents and warrants
that it has the right to grant to the other party the rights and non
assertions granted hereunder; and that there are no outstanding agreements,
assignments, or encumbrances (other than statutory employee inventor
rights), not notified to the other party prior to the Effective Date
of this Agreement, that materially effect the |
Page 12 of 17
| ownership or control of the patents
that are the subject of the rights granted hereunder and which would
materially restrict the rights granted under such patents. Each party
warrants that during the term of this Agreement neither it nor an Affiliate
will take any action that would materially prejudice the rights granted
to the other Party hereunder. In particular, but without limitation to
the aforesaid, each party warrants that it will not assign substantial
part of its patents that are the subject of this Agreement unless such
assignment is specifically made subject to the terms of this Agreement. |
| 8.2 |
ALL EXPRESS OR IMPLIED REPRESENTATIONS AND
WARRANTIES, INCLUDING ANY IMPLIED WARRANTY OF MERCHANTABILITY, FITNESS
FOR A PARTICULAR PURPOSE OR NON-INFRINGEMENT, ARE HEREBY DISCLAIMED. |
| 8.3 |
NEITHER PARTY MAKES ANY WARRANTIES
OF ANY KIND REGARDING ITS PATENTS, THEIR VALIDITY, OR THE PATENTABILITY
OF THE INVENTIONS CLAIMED THEREIN. |
| 8.3 |
EITHER PARTY DISCLAIMS TO
THE OTHER PARTY ANY AND ALL WARRANTIES AGAINST INFRINGEMENT OF THIRD
PARTY PATENTS, TRADEMARKS, COPYRIGHTS, AND OTHER INTELLECTUAL PROPERTY
RIGHTS. |
ARTICLE 9 – LIMITATION
OF LIABILITY
| 9.1 |
IN NO EVENT SHALL EITHER PARTY
BE LIABLE TO THE OTHER PARTY FOR ANY DAMAGES IN CONNECTION WITH OR ARISING
OUT OF THIS AGREEMENT (WHETHER DIRECT, INDIRECT, INCIDENTAL, SPECIAL,
CONSEQUENTIAL OR PUNITIVE ), NO MATTER WHAT THEORY OF LIABILITY, EVEN
IF THE EXCLUSIVE REMEDIES PROVIDED FOR IN THIS AGREEMENT FAIL OF THEIR
ESSENTIAL PURPOSE AND EVEN IF SUCH PARTY HAS BEEN ADVISED OF THE POSSIBILITY
OR PROBABILITY OF SUCH DAMAGES. |
| 9.2 |
NEITHER PARTY SHALL HAVE ANY
LIABILITY WHATSOEVER TO THE OTHER PARTY OR ANY OTHER PERSON FOR OR ON
ACCOUNT OF ANY INJURY, LOSS OR DAMAGE SUSTAINED BY OR ANY OTHER LIABILITY
INCURRED BY OR IMPOSED UPON THE OTHER PARTY OR ANY OTHER PERSON ARISING
OUT OF OR IN CONNECTION WITH (A) THE MANUFACTURE, USE, SALE, OR OTHERWISE
DISPOSITION OF ANY MITSUBISHI PRODUCT OR WAVECOM |
Page 13 of 17
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PRODUCT, OR THE PRACTICE OF
THE MITSUBISHI PATENTS OR WAVECOM PATENTS; OR (B) THE MANUFACTURE, USE,
SALE, OR OTHERWISE DISPSITION OF MITSUBISHI PRODUCTS OR WAVECOM PRODUCTS
BY MITSUBISHI, WAVECOM OR THEIR RESPECTIVE CUSTOMERS IN ANY MANNER THAT
DIRECTLY OR INDIRECTLY VIOLATES THE LAWS OR REGULATIONS OF ANY COUNTRY. |
ARTICLE 10 – ASSIGNMENT
| 10.1 |
This Agreement shall inure
to the benefit of, and be binding upon the parties hereto and their respective
successors and assignees. This Agreement or any right or duty hereunder
shall not be assigned by either party to any third party without the
prior written consent of the other party which shall not be unreasonably
withheld. Any assignment without such consent shall be null and void. |
ARTICLE 11 – INCONTESTABILITY
| 11.1 |
Neither party shall initiate
or join with another in any action to invalidate any claims of Mitsubishi
Patents or Wavecom Patents, or contest the validity or scope of any such
claims. |
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| 12.1 |
All notices, requests, demands
and other communications pursuant to this Agreement or in connection
therewith shall be in writing and shall be sent by telecopier, cable
or registered air mail, postage prepaid, addressed to the party to be
notified. Notice will be deemed to be received five (5) working days
after the date of mailing; provided that in the event notice is given
by telecopier or cable, notice shall be deemed to be received upon receipt
of said telecopier or cable, and further, provided, that said telecopier
or cable shall be followed by a letter confirming the contents of said
telecopier or cable which shall be mailed within five (5) working days
after the sending of the telecopier or cable to which it relates. The
notices shall be sent to the following addresses: |
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In the case of Mitsubishi:
Mitsubishi Electric Corporation
Mitsubishi Electric Corporation |
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0-0-0, Xxxxxxxxxx Xxxxxxx-xx,
Xxxxx 000-0000, Xxxxx |
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Attention: General Manager,
Corporate Licensing Department
[…]
In the case of Wavecom:
Wavecom S.A.
0, xxxxxxxxx xx Xxxxxx, 00000 Xxxx-xxx-Xxxxxxxxxx Xxxxx, Xxxxxx |
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Attention: Legal Director |
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or to such other address as the party may from time to time notify
the other. |
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ARTICLE 13 – GOVERNMENTAL
REQUIREMENTS |
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| 13.1 |
Either party agrees that it
will not make, use, sell, lease or otherwise distribute Mitsubishi Products
or Wavecom Products and will not practice Wavecom Patents or Mitsubishi
Patents in any manner that directly or indirectly violates the laws or
regulations of any country, including but not limited to any and all
export and import control laws and regulations, and acknowledges that
it has the sole responsibility to obtain such licenses to export, re-export
or import Mitsubishi Products or Wavecom Products as may be required. |
| 13.2 |
Nothing in this Agreement
warrants that Mitsubishi Products or Wavecom Products made in one country
or area can be exported from such country or area. Neither party shall
have any obligation to cooperate with the other party regarding such
party’s obedience to laws and regulations under Article 13.1 |
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ARTICLE 14 – MISCELLANEOUS |
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| 14.1 |
This Agreement shall be construed,
governed, interpreted and applied in accordance with the laws of […].
The language of this Agreement is the English language and any communication
between the parties shall be in English. |
Page 15 of 17
| 14.2 |
Any dispute arising out of
or relating to this Agreement shall be primarily settled amicably. If
this is not possible, the dispute shall be finally settled by arbitration
in accordance with the Rules of Conciliation and Arbitration of the International
Chamber of Commerce by three (3) arbitrators selected according to the
referred arbitration rules. The arbitration shall be conducted […].
Judgment upon the award rendered may be entered in any court having jurisdiction
or application may be made to such court for a judicial acceptance of
the award and an order of enforcement, as the case may be. |
| 14.3 |
This Agreement constitutes
the full and complete understanding between the parties with respect
to the subject matter hereof and supersedes all prior representations
and agreements between the parties with regard to the subject matter
hereof. It shall not be varied or modified by any oral agreement, representation
or otherwise except by a written instrument duly executed by the parties
hereto. |
| 14.4 |
The provisions of this Agreement
are severable, and in the event that any provisions of this Agreement
shall be determined to be invalid or unenforceable under any controlling
body of law, such invalidity or unenforceability shall not in any way
affect the validity or enforceability of the remaining provisions hereof. |
| 14.5 |
The failure of either party
to assert a right hereunder or to insist upon compliance with any terms
and conditions of this Agreement shall not constitute a waiver of that
right or excuse a similar subsequent failure to perform any such terms
and conditions by the other party. |
| 14.6 |
In case performance of this
Agreement is prevented because of laws, both present and future, of any
government having jurisdiction over the parties hereto, or orders, regulations,
directions or requests of any such government, or any department, agency
or corporation thereof, or war, strike, fire, acts of God or other cause
beyond control of either or both of parties hereto, the party concerned
shall notify the other party of the occurrences, and appropriate and
proper measures shall be taken pursuant to mutual agreements of the parties
hereto. Neither party shall be liable for non-performance of this Agreement
while such condition exists. |
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IN WITNESS WHEREOF, the parties hereto
have caused this Agreement to be executed by their duly authorized officers
or representatives on the day and year first above written.
| Mitsubishi
Electric Corporation |
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WAVECOM S.A. |
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By: |
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Name: |
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Title: |
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