EXHIBIT 10.6
INTELLECTUAL PROPERTY AGREEMENT
This Intellectual Property Agreement ("Agreement") is dated this 17th
day of October 2001, by and between Cingular Wireless LLC, a Delaware limited
liability company ("Cingular") and BellSouth Intellectual Property Marketing
Corporation, a Georgia corporation and its subsidiaries and affiliates
("BellSouth").
RECITALS:
WHEREAS, in connection with the Amended and Restated Contribution and
Formation Agreement dated as of April 4, 2000 (the "Contribution Agreement")
among BellSouth Corporation, SBC Communications, Inc. and Cingular (formerly,
Alloy, LLC), BellSouth and Cingular entered into an Intellectual Property
License Agreement ("License") and a Transition Marks Agreement (the "TM
Agreement"), each dated October 2, 2000;
WHEREAS, BellSouth has requested an extension for filing patent
applications pursuant to the License until December 31, 2001 for those
applications based on technology invented by BellSouth Leaseco employees and in
BellSouth's or its representative's possession in the form of an invention
disclosure or a draft patent application on or before April 2, 2001; and
WHEREAS, BellSouth has agreed to provide Cingular with additional
rights as Licensee under the License; and
WHEREAS, Cingular has requested an extension of the use of the
BellSouth Marks under the TM Agreement until December 31, 2001;
NOW, THEREFORE, in consideration of the foregoing premises, BellSouth
and Cingular agree as follows:
1. FILING OF PATENTS. For those patent applications set forth in Schedule
1 which were received by BellSouth's law firms as of April 2, 2001 (the
"Law Firm Patents"), BellSouth shall have until December 31, 2001 to
file the applications as regular patent applications, foreign patent
applications or provisional applications. For those invention
disclosures from BellSouth Leaseco employees set forth in Schedule 2
for inventions developed on or before April 2, 2001 (the "Employee
Patents", the Law Firm Patents and the Employee Patents are
collectively referred to herein as the "Patents"), BellSouth shall have
until December 31, 2001 to file patent applications as regular patent
applications, foreign patent applications or provisional applications.
2. OWNERSHIP OF PATENTS. To the extent the Patents are filed on or before
December 31, 2001, BellSouth shall own full right, title and interest
to any patents and patent applications resulting therefrom, including
any and all continuations, divisionals, continuation-in-parts, and
international patents and patent
applications relating thereto. Cingular will have a license to the
Patents in accordance with the License. To the extent the Patents are
not filed on or before December 31, 2001, Cingular shall own full
right, title and interest to any patents and patent applications
resulting therefrom, including any and all continuations, divisional,
continuation-in-parts, and international patents relating thereto and
shall reimburse BellSouth its attorney's fees incurred in preparing and
prosecuting such Patents to issuance and in assigning them to Cingular.
3. INNOVATION AWARDS. Cingular will pay all Innovation Awards (defined
below) relating to the Law Firm Patents. BellSouth will pay all
innovation awards relating to the Employee Patents. For purposes of
this Agreement, "Innovation Awards" are awards of $1000 per inventor
per application filing and $2000 per inventor per application issuance
payable to employees employed by the BellSouth Leaseco on the on the
day that the Patent application is filed or the date that the Patent
issues, as applicable. If BellSouth is able to obtain revenues from the
Law Firm Patents, from its profits (revenues less any BellSouth
expenses incurred to obtain the revenues from the patents) BellSouth
will reimburse Cingular for the Innovation Awards it has actually paid
to its employees.
4. REPRESENTATIONS AND WARRANTIES. BellSouth represents that, to the best
of its knowledge, Schedules 1 and 2 contain all invention disclosures
and patent applications that are the subject of this agreement.
However, Schedule 1 may be amended to include additional invention
disclosures and patent applications that meet the above criteria but
were not known to BellSouth at the time of this Agreement.
5. COOPERATION. Cingular will cooperate and encourage the BellSouth
Leaseco employees to cooperate with BellSouth and Cingular further
agrees to execute all documents deemed reasonably necessary by
BellSouth and Cingular to record and perfect BellSouth's rights to the
patents and patent applications contemplated by this Agreement.
6. LICENSEE RIGHTS. At BellSouth's sole discretion, Cingular, as Licensee
(herein "Licensee") shall have the right to assert a claim against, or
counter-xxx, any infringer of any of the Patents in the event that such
infringer asserts a patent infringement claim against Licensee or sues
Licensee for patent infringement. Licensee shall pay all costs and
expenses associated with such lawsuit. BellSouth agrees to join in such
suit at Licensee's expense and to execute any necessary papers for such
suit. BellSouth may, at its discretion, participate in, and control any
such claim or suit, at Licensee's expense, to the extent that the claim
or suit may involve the validity, ownership, scope or interpretation of
a Patent. BellSouth may, at its sole discretion, at the request of
Cingular, license one or more Patents in settlement of any such suit or
in response to a threat thereof. Any sum recovered in such suit or in
settlement thereof shall be retained by BellSouth for its own use and
benefit, and Licensee shall have no rights whatsoever in any such
recovery or settlement. Neither Licensee nor any affiliate of Licensee
shall
xxxxxx or encourage any infringement of the Patents by any third-party.
If Licensee or any of its affiliates shall engage in such conduct,
BellSouth shall have the right to deem such conduct a material breach
of this Agreement, which breach shall be a basis of termination of this
Agreement. All other terms and conditions of the License shall remain
in full force and effect according to their terms. Licensee also agrees
to indemnify and hold BellSouth harmless from and against all claims,
judgments, costs, expenses, attorneys fees and liabilities of any
nature whatsoever arising out of or in connection with any claim or
suit involving the assertion by Cingular or by BellSouth at Cingular's
request of a Patent.
7. EXTENSION OF TM AGREEMENT. BellSouth hereby extends the date pursuant
to which Cingular may use the BellSouth Marks under the TM Agreement
until December 31, 2001.
IN WITNESS WHEREOF, the parties hereto acknowledge that this Agreement
shall be deemed effective as of the day and date first above written.
BELLSOUTH CORPORATION
By: /s/ Xxxxx X. Xxxxx
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Name: Xxxxx X. Xxxxx
Title: Chief Planning & Development
Officer
CINGULAR WIRELESS LLC
BY: CINGULAR WIRELESS CORPORATION
By: /s/ Xxxxxxx Xxxxxx
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Name: Xxxxxxx Xxxxxx
Title: Chief Executive Officer