Exhibit 10.8
AMENDMENT TO
TECHNOLOGY AGREEMENT
(DATED MAY 4, 2000)
BETWEEN
SAIFUN SEMICONDUCTORS LTD.
AND
MACRONIX INTERNATIONAL CO., LTD.
This Amendment to the Technology agreement, dated May 4, 2000 between Saifun
Semiconductor Ltd., a company incorporated in Israel, with offices at Xxxxx
Xxxx. 00 Xxxxxxxxx Xx. Xxxxxxxxxx Xxxx Xxxxx, Xxxxxxx 00000, Xxxxxx ("Saifun");
and Macronix International Co., Ltd., a company incorporated in Taiwan with an
office at Xx.0 Xxxxxxxx Xxxx XXX, Xxxxxxx-Xxxxx Xxxxxxxxxx Xxxx, Xxxx-Xxx,
Taiwan ("Macronix") ("Technology Agreement"); is entered into this 10th day of
April, 2003 between Saifun and Macronix ("Amendment"). Saifun and Macronix shall
be collectively referred to herein as the "Parties."
PREFACE
Pursuant to Section 19.8 of the Technology Agreement, the Parties have agreed to
cooperate in performing development projects in accordance with the terms and
conditions below.
This Amendment constitutes an amendment to the Technology Agreement in
compliance with the provisions of section 19.14 thereof.
1. SECTION 7A.
The following section is hereby added to the Technology Agreement, as section 7A
thereof. All non-contradicting definitions and provisions of the Technology
Agreement apply to this Amendment:
"7A. DEVELOPMENT OF LICENSED PRODUCTS
7A.1 Definition:
"INTELLECTUAL PROPERTY"- shall mean all the following, based on, resulting of,
developed or conceived, during or in connection with a Project (as defined
below), in all jurisdictions: (i) Patents; (ii) know-how, trade-secrets; (iii)
mask-works; (iv) copyrights; (v) other proprietary rights relating to the
foregoing.
7.A.2 Development Projects: The Parties may agree from time to time on
development project(s), where Saifun assists Macronix to design, develop or
otherwise facilitate new Licensed Products pursuant to Section 19.8 of the
Technology Agreement ("PROJECT/S"). The scope of each such project shall be
defined by the Parties in separate project plans which will be attached to the
Technology Agreement and be made part thereof ("PROJECT PLAN"). The Project Plan
shall include the terms associated with the applicable Project, such as the
scope of the Project and the specifications of the required work products,
schedule and milestones, the responsibilities and duties of each Party and the
resources that should be devoted thereby, and the commercial terms, such as
royalties (if any). The Project Plans are hereby attached to this Agreement as
"Appendix 7A.1.
7A.3 Coordination: The progress of the Projects and all associated issues shall
be discussed and reported during the meetings between the Parties held in
accordance with the provisions of Section 8.4 of the Technology Agreement.
7A.4 Intellectual Property Rights: Any and all Intellectual Property of each
party and its derivatives shall remain be owned by and belong to such party.
Subject to the above, each Party shall have sole and exclusive ownership of all
Intellectual Property developed under a Project hereunder solely by that Party's
employees or contractors.
7A.5 Licenses Rights and Extra Royalties All Intellectual Property developed and
owned by a Party hereto, under a Project, according to Section 7.A.4 , are
subject to (i) the applicable licenses and rights granted to the Parties under
the Technology Agreement (including, for example, to Macronix, under sections 2,
3 and 4 of the Technology Agreement); and (ii) the terms and conditions of such
licenses.
For the avoidance of doubt, it is hereby acknowledged that the products
developed pursuant to Project Plan shall be subject to payment of royalties due
under such licenses in accordance with the Technology Agreement.
7A.6 Jointly Owned Patents:
(1) Joint Patent: Patent conceived by the joint effort of the personnel of
both Parties, where at least one person from each Party would qualify
as an inventor of the inventions giving rise to such Patent, under the
laws of the United States of America, shall be owned jointly by both
Parties each having an undivided interest therein ("JOINT PATENT").
(2) Joint IPR: In the event a Party hereto considers that a certain
Intellectual Property Right other than Patent was conceived under a
Project, by the joint effort and undivided material contribution of
the personnel of both Parties, such Party shall so notify the other
Party in writing, promptly and no later than sixty (60) days following
the applicable milestone of the Project, in which such Intellectual
Property Right was conceived. Such notice shall include a summary of
the nature, scope and specifications of said Intellectual Property
Right and the circumstances of its conception. In the event the
Parties mutually agree that such Intellectual Property Right has been
jointly conceived, and provided that they mutually agree upon the
definition, specifications, scope and nature thereof, such
Intellectual Property Right shall be deemed jointly owned by the
Parties ("JOINT IPR"). For the avoidance of doubt, any disagreement in
respect of this Section 7A.6 (2) shall be resolved under Section 18 of
the Technology Agreement.
(3) Joint Patent: a Joint Patent shall be filed, in form and substance, as
mutually agreed upon by the Parties in the United States and other
countries. The cost arising therefrom, including application and
maintenance of Patents, shall be equally shared between the Parties.
The Parties shall reasonably cooperate with each other in these
activities. Either Party may elect to enforce jointly owned Patents
only with the consent of the other, which consent shall not be
unreasonably withheld. To the extent that a Party elects to enforce
such rights, it shall bear all expenses associated therewith. If
either Party is sued in connection with its exercise of a jointly
owned Patent (or the underlying invention) or other Joint IPR, the
other owning Party will reasonably cooperate in the defense of such
suit at the expense of the Party that has been sued.
(4) Sole Prosecution and Maintenance of Joint Patent: Where a Party elects
not to file or maintain a Joint Patent in any particular country or
not to share equally in the expenses thereof, for such country, such
Party agrees to assign to the other Party any ownership rights or
share in the Joint Patent issuing thereon. The other Party shall have
the right to file or maintain such Patent in said country at its own
expense and in its own name and shall solely own all rights resulting
therefrom, subject to a perpetual, worldwide, non-exclusive,
non-sublicensable, non-transferable, royalty-free and paid-up license
for the assigning Party and its Subsidiaries.
(5) In the event that a filing Party intends to abandon, or otherwise not
to prosecute, any JointPatent, or not to maintain, defend against
nullity or renew such Patent, it shall notify the non-filing Party in
writing of such intention at the earliest practicable date, and the
provisions of section 7A (3) shall apply, mutatis mutandis.
(6) Use and Disposition. Each Party may freely exercise the Joint Patent
or other joint IPR for the design, development, manufacture
distribution, marketing, manufacture of its own Products. Neither
Party may license such Joint Patents or Joint IPR to any third party,
without the prior written consent from the other Party (which consent
shall not be unreasonably withheld).
7A.7 Disputes:
"Any dispute in connection with this section 7A, and/or any applicable Project
Plan hereunder, shall not affect the validity or performance of the remainder of
the Technology Agreement."
2. SECTION 19.17
***
IN WITNESS WHEREOF, Saifun and MACRONIX have caused this Agreement to be
executed by their duly authorized representatives as of the Effective Date.
Saifun Semiconductors Ltd. Macronix International Co., Ltd.
By: /s/ Xxxx Xxxxx By: /s/ [illegible]
--------------------------------- ------------------------------------
Title: CFO Title: Vice President
Date: May 20, 2003 Date: May 13, 2003
--------------------
*** Omitted pursuant to a confidential treatment request. The confidential
information has been filed separately with the SEC.
APPENDIX 7A.1 - PROJECT SCOPE; SPECIFICATIONS
1. SPECIFICATION
***
***
***
***
***
2. TASKS
ISSUE RESPONSIBILITY NOTES
--------------------- -------------- ---------------
Product specification MXIC Defined
Design + Layout MXIC Saifun supports
Device MXIC Saifun supports
Process/package MXIC Saifun supports
Wafer supply MXIC
Test development MXIC Saifun supports
Product engineering MXIC
Qualification MXIC
3. ESTIMATED SCHEDULE:
Program start ***
Tape out ***
Eng. Samples ***
4. RESOURCES;
4.1. PROJECTED HEAD COUNT BY SAIFUN
4.1.1. *** Design Engineers
4.1.2. *** Engineers (including circuit, logic and
Device)
4.2. RESPONSIBILITIES OF MACRONIX
In addition to section 4 bellow, Macronix will be responsible and/or
cover any and all the following expenses arising out of the Project:
4.2.1. Any special dedicated equipment and or tools necessary for
testing characterization and qualification tests of the Project
including: probe cards, socket boards, dut cards etc';
4.2.2. Non recurring engineering expenses arising out of the
Project, including: wafers, mask sets, shipment, software
development for test system
4.2.3. Sort and Assembly of wafers
------------------
*** Omitted pursuant to a confidential treatment request. The confidential
information has been filed separately with the SEC.
4.2.4. Third Party fees to be mutually agreed by Parties
5. INCREASED ROYALTIES; TERMS OF PAYMENT:
As of *** until the completion of Project, in consideration for the
Project, a fee to be paid to Saifun shall be $*** a quarter (the " Fees").
The Design Fees shall be paid in quarterly payments. Such quarterly "Fees"
will be subject to changes according to actual design resource allocated to
the Project by Saifun.
6. OTHER:
Macronix shall be responsible for the reimbursement of all reasonable
travel expenses of Saifun Employees expressly provided under this
agreement.
-----------------
*** Omitted pursuant to a confidential treatment request. The confidential
information has been filed separately with the SEC.
