Exhibit 10.16
CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY WITH
THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE
OMITTED PORTIONS.
JOINT PATENT FILING AGREEMENT
This Memorandum of Understanding is made and entered into effect as of this
1st day of December, 1998, by and between Matsushita Communication Industrial
Company Limited, a Japanese corporation having its principal place of
business at 0-0-0, Xxxxxxxxxx Xxxxxxx, Xxxxxxxx, Xxxxxxxx 000 Xxxxx
(hereinafter referred to as MCI) and UT Starcom, Inc., a Delaware corporation
having its principal place of business at 0000 Xxxxxx Xxx Xxxxxxx, Xxxxx 000,
Xxxxxxx, Xxxxxxxxxx 00000, XXX (hereinafter referred to as UTS), in order to
set forth the basic understanding between the parties regarding patent
application of [*].
Whereas, MCI and UTS have cooperated in devising certain [*], which is deemed
to be eligible for patent application.
Whereas, MCI and UTS is eager to apply for patent regarding this [*] in [*]
and with the consent of both parties, in any other third country.
Now therefore, in consideration of the foregoing paragraphs, MCI and UTS
agree as follows:
1) UTS shall immediately file the said patent application in [*].
2) Matsushita Electric Industrial Co., Ltd. (hereinafter referred to as
MEI), which is the parent company of MCI, shall file a patent
application corresponding to the said patent in [*] and with the
consent of UTS, in any other third country, six months after the
application of the said patent in [*] by UTS, and/ or after the
necessary approval of [*] regulatory authorities.
3) The total cost of necessary application fees shall be [*] between MCI
and UTS.
4) Either party, when supplying [*] utilizing the said patent to any
other third party, shall require the prior written consent of the
other party, but shall be free of any compensation, including but not
limited to royalty payment.
5) Both parties must consent in writing when licensing the said patent
to any other third party, and any royalty income collected as the
result shall be shared equally among the two parties.
In witness whereof, the parties hereto have caused this Agreement to be
executed by their respective duly authorized representatives, effective as of
the date first above written.
Matsushita Communication Industrial Co., Ltd. UT Starcom, Inc.
Signed: /s/ X. Xxxxxxx Signed: /s/ Xxxx Xxxxxxxxx
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Name: X. Xxxxxxx Name Xxxx Xxxxxxxxx
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Title: Senior Managing Director Titles VP Product Planning
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Date: November 30, 1998 Date: 9 Nov 98
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[*] = CERTAIN INFORMATION ON THIS PAGE HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO
THE OMITTED PORTIONS.
