EXHIBIT 4.48
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121201 License Reference No. __________
AGREEMENT with an effective date of
January 1, 2001, between
INTERNATIONAL BUSINESS MACHINES
CORPORATION, a New York corporation
(hereinafter called IBM), and
CHARTERED SEMICONDUCTOR
MANUFACTURING LTD., a
corporation of Singapore
(hereinafter called CHRT).
Whereas, the parties desire to extend their License Agreement with an
Effective Date of January 1, 1995 to extend its term and to amend certain
definitions and other terms as provided herein.
Whereas, each of the parties has the right (as GRANTOR herein) to grant
licenses to the other party (as GRANTEE herein) under certain patents and
desires to acquire a ********** license under such patents of the other party.
Whereas, each of the parties expects to continue research and
development which will produce further patents and each party may require a
********** license under such patents of the other party.
Whereas, in the interest of simplifying the record keeping and
accounting processes required with a full running royalty license for CHRT
Licensed Products, the parties have mutually agreed to this simplified, fixed
royalty percentage license based on CHRT's worldwide net revenue.
Now, therefore, in consideration of the premises and mutual covenants
herein contained, IBM and CHRT agree as follows:
Section 1. Definitions
1.1 "IBM Licensed Patents" shall mean all patents having claims reciting
methods or apparatus for manufacturing, assembling, testing and packaging
Semiconductor Apparatus:
1.1.1 issued or issuing on patent applications entitled to an
effective filing date prior to December 31, 2005;
1.1.2 which, but for this Agreement, would be infringed by
CHRT's making, using, importing, leasing, offering for sale, selling or
otherwise transferring a CHRT Licensed Product in the country in which
such patent exists; and
1.1.3 under which patents or the applications therefor IBM or any of its
Subsidiaries now has, or hereafter obtains, the right to grant licenses
to CHRT of or within the scope granted herein without such grant or the
exercise of rights
thereunder resulting in the payment of royalties or other consideration
by IBM or its Subsidiaries to third parties (except for payments
between IBM and its Subsidiaries, and payments to third parties for
inventions made by said third parties while employed by IBM
or any of its Subsidiaries).
The term "IBM Licensed Patents" shall also include said patent applications and
any patent reissuing on any of the aforesaid patents.
1.2 "IBM Licensed Products" shall mean Semiconductor Apparatus.
1.3 "Integrated Circuit" shall mean an integral unit including a plurality
of active and/or passive circuit elements formed at least in part of
Semiconductor Material and associated on, or in, one substrate comprising the
first level of packaging for such elements; such unit forming or contributing to
the formation of a circuit for performing electrical or electronic functions.
1.4 "Semiconductor Apparatus" shall mean Semiconductor Material,
Semiconductor Device, Semiconductor Circuit, Integrated Circuit and/or
Semiconductor Memories and any combination of such apparatus with other such
apparatus;
1.5 "Semiconductor Circuit" shall mean a circuit in which one or more
Semiconductor Devices are interconnected in one or more paths (including passive
circuit elements, if any) for performing
fundamental electrical or electronic functions and, if provided therewith,
housing and/or supporting means therefor.
1.6 "Semiconductor Device" shall mean a device and any material therefor,
including but not limited to device structures such as transistors, diodes,
capacitors, resistors, conductors and dielectrics, comprising a body of one or
more Semiconductor Materials and one or more electrodes associated therewith
and, if provided therewith, housing and/or supporting means therefor.
1.7 "Semiconductor Material" shall mean any material whose conductivity is
intermediate to that of metals and insulators at room temperature and whose
conductivity, over some temperature range, increases with increases in
temperature. Such materials shall include, but not be limited to, refined
products, reaction products, reduced products, mixtures and compounds.
1.8 "Semiconductor Memory" shall mean any instrumentality or aggregate of
instrumentalities, which instrumentality or aggregate is designed only for
storing digital information, intelligence or data by selectively setting or
presetting detectable states in Semiconductor Material forming at least a part
of such instrumentality or aggregate, such instrumentality or aggregate may
include powering means and auxiliary and/or support circuits (such as
regeneration means, true-complement generations means, address decoding means,
sensing means and selection means) to control the flow of such information,
intelligence or data into and out of such Semiconductor Memory.
1.9 "Subsidiary" of a party hereto or of a third party shall mean a
corporation, company or other entity:
1.9.1 more than fifty percent (50%) of whose outstanding shares or
securities (representing the right to vote for the election of
directors or other managing authority) are, now
or hereafter, owned or controlled, directly or indirectly, by a party
hereto or such third party, but such corporation, company or other
entity shall be deemed to be a Subsidiary only so long as such
ownership or control exists; or
1.9.2 which does not have outstanding shares or securities, as may be the
case in a partnership, joint venture or unincorporated association, but
more than fifty percent (50%) of whose ownership interest representing
the right to make the decisions for such corporation, company or other
entity is, now or hereafter, owned or controlled, directly
or indirectly, by a party hereto or such third party, but such
corporation, company or other entity shall be deemed to be a Subsidiary
only so long as such ownership or control exists.
1.10 "CHRT Licensed Patents" shall mean all patents, including utility
models and including design patents and registrations for type fonts (but not
including any other design patents or registrations):
1.10.1 issued or issuing on patent applications entitled to an
effective filing date prior to December 31, 2005;
1.10.2 which, but for this Agreement, would be infringed by IBM's
making, using, importing, leasing, offering for sale, selling or
otherwise transferring an IBM Licensed Product in the country in which
such patent exists; and
1.10.3 under which patents or the applications therefor CHRT or any
of its Subsidiaries now has, or hereafter obtains, the right to grant
licenses to IBM of or within the scope granted herein without such
grant or the exercise of rights thereunder resulting in the payment of
royalties or other consideration by CHRT or its Subsidiaries to third
parties (except for payments between CHRT and its Subsidiaries, and
payments to third parties for inventions made by said third parties
while employed by CHRT or any of its Subsidiaries).
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The term "CHRT Licensed Patents" shall also include said patent applications and
any patent reissuing on any of the aforesaid patents.
1.11 "CHRT Licensed Products" shall mean Semiconductor Apparatus.
1.12 "CHRT Elected Country" shall mean one additional country where CHRT
owns, controls or has contracted for its use, physical assets and/or real
property for the manufacture of CHRT Licensed Products during the term of this
Agreement. CHRT shall provide written notice to IBM of the CHRT Elected Country
no later than ninety (90) days after manufacturing begins in such country and no
country shall be deemed to be a CHRT Elected Country in the absence of such
notice.
Section 2. Licenses
2.1 Subject to the provisions of Section 2.4, IBM on behalf of itself and
its Subsidiaries grants to CHRT a ********** license under the IBM Licensed
Patents:
2.1.1 to make CHRT Licensed Products only in Singapore and
one CHRT Elected Country;
2.1.2 to use, import, and lease, offer for sale, sell or
otherwise transfer CHRT Licensed Products worldwide;
2.1.3 to use any apparatus in the manufacture or testing of CHRT
Licensed Products and to practice any method or process in such
manufacture or testing of CHRT Licensed Products; and
2.1.4 to have CHRT Licensed Products made in whole or in part by
another manufacturer for the use and/or lease, offer for sale, sale or
other transfer by CHRT only when the designs and specifications for
such CHRT Licensed Products were provided by CHRT to the other
manufacturer, whether developed by CHRT or received by CHRT from
customers to whom the Licensed Products are to be sold; provided,
however, the license under this section 2.1.4:
2.1.4.1 shall only be under claims of IBM Licensed
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Patents, the infringement of which would be
necessitated by compliance with such designs and
specifications; and
2.1.4.2 shall not apply to any CHRT Licensed Products in the
form manufactured or marketed by said other
manufacturer prior to CHRT's furnishing of said
designs and specifications.
Unless CHRT informs IBM to the contrary, CHRT shall be deemed to have
authorized said other manufacturer to make said CHRT Licensed Products
under the license granted to CHRT in this Section 2.1.4 when the
conditions specified herein are fulfilled. Within thirty (30) days of a
written request identifying a product and a manufacturer, CHRT shall
inform IBM of the quantity of such product, if any, manufactured by
such manufacturer.
In the event that neither IBM nor any of its Subsidiaries has the right to grant
a license under any particular IBM Licensed Patent of the scope set forth above
in this Section 2.1, then the license granted herein under said IBM Licensed
Patent shall be of the broadest scope which IBM or any of its Subsidiaries has
the right to grant within the scope set forth above.
2.2 Subject to the provisions of Section 2.3, CHRT on behalf of itself and
its Subsidiaries grants to IBM a worldwide, fully paid-up, ********** license
under the CHRT Licensed Patents:
2.2.1 to make, use, import, and lease, offer for sale, sell or
otherwise transfer IBM Licensed Products;
2.2.2 in the manufacturing or testing of IBM Licensed Products,
to use any apparatus and practice any method or process; and
2.2.3 to have IBM Licensed Products made by another manufacturer for the
use and/or lease, offer for sale, sale or other transfer by IBM only
when the designs and specifications for such IBM Licensed Products
were created by IBM (either solely or jointly with one or more third
parties); provided, however, the license
under this Section 2.2.3:
2.2.3.1 shall only be under claims of CHRT Licensed
Patents, the infringement of which would be
necessitated by compliance with such designs and
specifications; and
2.2.3.2 shall not apply to any IBM Licensed Products in
the form manufactured or marketed by said other
manufacturer prior to IBM's furnishing of said
designs and specifications.
Unless IBM informs CHRT to the contrary, IBM shall be deemed to have
authorized said other manufacturer to make said IBM Licensed Products
under the license granted to IBM in this Section 2.2.3 when the
conditions specified herein are fulfilled. Within thirty (30) days of a
written request identifying a product and a manufacturer, IBM shall
inform CHRT of the quantity of such product, if any, manufactured by
such manufacturer.
In the event that neither CHRT nor any of its Subsidiaries has the right to
grant a license under any particular CHRT Licensed Patent of the scope set forth
above in this Section 2.2, then the license granted herein under said CHRT
Licensed Patent shall be of the broadest scope which CHRT or any of its
Subsidiaries has the right to grant within the scope set forth above.
2.3 No license or immunity is granted by CHRT either directly or by
implication, estoppel or otherwise to any third parties acquiring items from IBM
for the combination of such acquired items with other items (including items
acquired from either party hereto) or for the use of such combination, even if
such acquired items have no substantial use other than as part of such a
combination.
2.4 No license or immunity is granted by IBM either directly or by
implication, estoppel or otherwise to any third parties
acquiring items from CHRT for the combination of such acquired items with other
items (including items acquired from either party hereto) or for the use of such
combination, even if such acquired items have no substantial use other than as
part of such a combination; except that IBM shall not make any claim of
infringement against third parties of any IBM Licensed Patents with respect to
products acquired by such third parties from CHRT, even if such products are
combined with other products.
2.5 The parties agree that CHRT is not paying under this Agreement for any
rights under any IBM patents claiming the design, architecture or operation of
Semiconductor Apparatus and that no rights under any such IBM patents are
granted herein to CHRT or any third parties, either expressly or by implication.
The parties further agree that IBM's sole recourse with respect to past, present
or future claims of infringement of IBM patents not licensed herein to CHRT,
which claims are based upon the design, architecture or operation of CHRT
Licensed Products designed by third parties and manufactured, sold, leased or
otherwise transferred by CHRT, shall be against third parties who acquire such
CHRT Licensed Products, and IBM shall have no recourse of any such claims of
infringement against CHRT with respect to such unlicensed IBM patents.
Section 3. Extension of License to Subsidiaries
3.1 The licenses granted herein shall include the right of the parties
hereto to sublicense their respective Subsidiaries and the right of such
sublicensed Subsidiaries to sublicense other Subsidiaries. Each sublicensed
Subsidiary shall be bound by the terms and conditions of this Agreement (other
than those of Section 5) as if it were named herein in the place of the party
with whom the sublicense originated. If a Subsidiary ceases to be a Subsidiary
and holds any patents or patent applications under which a party hereto is
licensed, such licenses shall
continue for the term of such party's license. Any sublicense granted to a
Subsidiary shall terminate on the date such Subsidiary ceases to be a
Subsidiary.
Section 4. Releases
4.1 IBM, on behalf of itself and its Subsidiaries which are Subsidiaries as
of the date of this Agreement, shall irrevocably release CHRT, its Subsidiaries
which are Subsidiaries as of the date of this Agreement, and its and their
respective customers, mediate and immediate, from any and all claims of
infringement of any IBM Licensed Patents, which claims have been made or which
might be made at any time, with respect to any item manufactured, used, leased,
sold or otherwise transferred by CHRT or its Subsidiaries before the effective
date of this Agreement, and with respect to any method practiced or
Semiconductor Device made in the manufacture or use of such item, to the extent
that such item or method or Semiconductor Device would have been licensed or the
subject of any immunity hereunder had it been manufactured, used, or leased,
sold or otherwise transferred or practiced by CHRT after the date of this
Agreement. The release contained herein shall not apply to any person other than
those specified in this Section 4.1 and shall not apply to the manufacture of
such items by any person other than CHRT or its Subsidiaries.
4.2 CHRT, on behalf of itself and its Subsidiaries which are Subsidiaries
as of the date of this Agreement, hereby irrevocably releases IBM, its
Subsidiaries which are Subsidiaries as of the date of this Agreement, and its
and their respective customers, mediate and immediate, from any and all claims
of infringement of any CHRT Licensed Patents, which claims have been made or
which might be made at any time, with respect to any item manufactured, used, or
leased, sold or otherwise transferred by IBM or its Subsidiaries before the
effective date of this Agreement, and with respect to any method practiced in
the manufacture or use of such item, to the extent that such item or method
would have been
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licensed or the subject of any immunity hereunder had it been manufactured,
used, or leased, sold or otherwise transferred or practiced by IBM after the
date of this Agreement. The release contained herein shall not apply to any
person other than those specified in this Section 4.2 and shall not apply to the
manufacture of such items by any person other than IBM or its Subsidiaries.
Section 5. Payment
5.1 As consideration for the licenses and other rights granted by IBM to
CHRT herein, CHRT, on behalf of itself and its Subsidiaries, shall pay a royalty
to IBM, no portion of which shall be refundable, at a rate computed at the
following percentages of CHRT's worldwide Net Revenue, which royalty shall be
due and payable in installments as specified under Section 5.1.1 (where "Net
Revenue" or "NR" means total revenue for a calendar year based on the CHRT's net
revenue as such term is used and reported in CHRT's periodic filings with the
United States Securities and Exchange Commission as required by the Securities
Exchange Act of 1934):
Net Revenue range Royalty percentage(%)
(M = millions of US dollars) for the NR range
--------------------------- ------------------
************************** ***************
************************** ***************
************************** ***************
************************** ***************
Sample royalty calculation, where NR = ***********:
Royalty due = ************ * ************* * **************
Royalty due = ******** * ******** * ********
Royalty due = ********
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5.1.1 CHRT shall pay the royalty due under Section 5.1 in installments (in
U.S. dollars) as follows: (a) Royalties accrued during the period commencing on
January 1, 2001 through and including September 30, 2001 shall be payable before
December 21, 2001;
(b) Royalties accrued during the annual calendar year periods commencing on
January 1, 2002 through December 31, 2004 and the period commencing on January
1, 2005 through September 30, 2005 shall be calculated by the following method
and payable before December 21 in each of the years 2002, 2003, 2004, and 2005.
********************************************* *
********************************************* *
*********************************************; and
(C) Royalties accrued during the period commencing on October 1, 2005
through December 31, 2005 shall be calculated by the following method
and payable before March 20, 2006.
********************************************* *
*********************************************
On or before the payable date of each payment under Section 5.1.1(a)-(c), CHRT
shall provide to IBM a written report containing the information specified in
Section 5.1.2.
5.1.2 CHRT's written report shall be certified by an officer of CHRT and
shall contain the following information:
(a) the Net Revenue for each applicable accounting period; and
(b) the calculation of and the aggregate amount of all royalties due.
In the event no royalties are due, CHRT's report shall so state.
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Upon payment of all of the installments specified above in Section 5.1, the
license, immunities and other rights granted to CHRT in this Agreement shall be
fully paid up for the term of said rights.
5.2 CHRT shall be liable for interest on any overdue payment required to be
made pursuant to Section 5, commencing on the date such payment becomes due, at
an annual rate which is the greater of ********* or ************* than the prime
interest rate as quoted by the head office of Citibank N.A., New York, at the
close of banking on such date, or on the first business day thereafter if such
date falls on a non-business day. If such interest rate exceeds the maximum
legal rate in the jurisdiction where a claim therefor is being asserted, the
interest rate shall be reduced to such maximum legal rate.
5.3 If an installment payment set forth in Section 5.1 is not made by its
due date, and if such payment, plus interest pursuant to Section 5.2, is not
made prior to forty-five (45) days after notice from IBM of the delinquency,
then, at IBM's sole option, either:
5.3.1 all of the above installment payments which were due after
such notice shall automatically become due and payable in full on the
forty-fifth day after such notice without presentment, demand or
additional notice of any kind (all of which are hereby expressly
waived); or
5.3.2 all licenses and other rights granted herein to CHRT shall
automatically terminate on the forty-fifth day after such notice; CHRT
shall remain obligated to pay all installments which had become due
prior to such notice (plus interest thereon) and CHRT shall not be
obligated to make any other payments.
IBM's election of the option set forth in Section 5.3.1 or 5.3.2 shall be stated
in such notice. Such notice shall be given as stated in Section 9 herein.
5.4 CHRT may deduct or withhold, in accordance with applicable law, from
the payments payable to IBM, any income or withholding taxes imposed by its
national government, including any political subdivision thereof. CHRT shall
furnish IBM the appropriate documentary proof of any such payment made to the
relevant authorities.
Section 6. Other License Rights
6.1 It is recognized that the parties hereto or their respective
Subsidiaries may now have, or hereafter obtain, the right to grant licenses
under one or more patents of any country, including utility models and including
design patents and registrations for type fonts (but not including any other
design patents or registrations), issuing on patent applications entitled to an
effective filing date prior to December 31, 2005 and under the patent
applications therefor, but that such grant or the exercise of rights thereunder
shall result in payment of royalties or other consideration by GRANTOR or its
Subsidiaries to third parties. Each party (as GRANTOR herein) agrees that, upon
written request, it shall grant to the other party to the extent and subject to
the terms and conditions under which it then has the right to do so, a license
of the broadest scope which GRANTOR has the right to grant at any time but of no
greater scope than the scope of the licenses granted herein with respect to any
such patent or patent application. Such license shall be granted under a
separate agreement, upon payment of the same royalty or other consideration as
that which GRANTOR or any of its Subsidiaries is obligated to pay to a third
party because of the grant of such license or the exercise of rights thereunder.
6.2 Upon written request by a party, the other party shall inform the
requesting party of those patents or patent applications coming within the scope
of Section 6.1 at the time of such request.
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Section 7. Term of Agreement
7.1 The term of this Agreement shall be from the effective date of this
Agreement until December 31, 2005.
7.2 If one party (referred to in this Section 7.2 as the Acquired Party) is
acquired by a third party becoming a Subsidiary of such third party:
7.2.1 said Acquired Party shall promptly give notice of such
acquisition to the other party;
7.2.2 all rights granted hereunder to said Acquired Party together
with any sublicenses theretofore granted by said Acquired Party shall
terminate on a termination date one hundred and eighty (180) days after
the date of such acquisition;
7.2.3 all licenses and immunities granted herein to said other Party
under any patents issuing on patent applications having an effective
filing date subsequent to said termination date and under said patent
applications shall terminate; and
7.2.4 said Acquired Party shall be entitled, upon request
made within one hundred and eighty (180) days after the date
of such acquisition, to a nontransferable, ***************
license under said other party's Licensed Patents (including
the right to sublicense its Subsidiaries) to make, use,
lease and sell only products identical with those
manufactured and marketed by said Acquired Party within the
licenses granted in this Agreement prior to such
acquisition. As consideration for such license, said
Acquired Party shall be required to pay to said other party
all payments which said Acquired Party would have been
obligated to pay after the date of acquisition pursuant to
Section 5 of this Agreement. Such license shall be
terminable by said Acquired Party upon any date a payment is
due, by giving written notice of termination thirty (30)
days prior to such due date and paying all payments due on
such date.
Section 8. Warranty
8.1 Each party represents and warrants that it has the full right and power
to grant the license, immunities and release set forth in Sections 2 and 4 and
that there are no outstanding agreements, assignments or encumbrances
inconsistent, with the provisions of said Sections or with any other provision
of this Agreement. Each party (as a GRANTOR), further represents and warrants
that prior to the execution of this Agreement it has informed the other party of
any patent originating from inventions made by employees of GRANTOR or its
Subsidiaries, which patent is now owned by GRANTOR or its Subsidiaries and which
patent, owing to prior arrangements with third parties, does not, or shall not,
qualify as a GRANTOR Licensed Patent, under which licenses are granted of the
full scope set forth in Section 2.1. Neither party makes any other
representations or warranties, express or implied, nor does either party assume
any liability in respect of any infringement of patents or other rights of third
parties owing to the other party's operation under the license herein granted.
Section 9. Communications
9.1 Payments shall be made by electronic funds transfer and shall be deemed
to have been made on the date they are credited to IBM's account. Any notice or
other communication required or permitted to be made or given to either party
hereto pursuant to this Agreement shall be sent to such party by registered
airmail (except that registered or certified mail may be used where delivery is
in the same country as mailing), postage prepaid, addressed to it at its address
set forth below, or to such other address as it shall designate by written
notice given to the other party, and shall be deemed to have been made or given
on the date of mailing. The addresses are as follows:
9.1.1 For electronic funds transfers of payments:
IBM, Director of Licensing
The Bank of New York
0 Xxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Xxxxxx Xxxxxx of America
Credit Account No. 000-0000-000
ABA No. 0000-0000-0
9.1.2 For mailing to IBM:
Director of Licensing
IBM Corporation
Xxxxx Xxxxxx Xxxxx XX-XX-000
Xxxxxx, XX 00000-0000
Xxxxxx Xxxxxx of America
9.1.3 For facsimile transmission to IBM:
(000) 000-0000
9.1.4 For mailing to CHRT:
The Legal Department
Chartered Semiconductor Manufacturing Ltd.
00 Xxxxxxxxx, Xxxxxxxxxx Xxxx X, Xxxxxx 0
Xxxxxxxxx 000000
9.1.5 For facsimile transmission to CHRT:
00-000-0000
Section 10. Assignments
10.1 Neither party shall assign or grant any right under any of its patents
or the applications therefor, which qualify as such party's Licensed Patents, or
any of its patents or the applications therefor or rights which are subject to
the other party's rights pursuant to Section 6, unless such assignment or grant
is made subject to the terms and conditions of this Agreement. Subject to the
provisions of Section 3, neither party shall assign any of its rights or
privileges hereunder without the prior written consent of the other party. Any
attempted assignment in derogation of the foregoing shall be void.
Section 11. Know-How and Trade Secrets
11.1 No license or other right is granted herein to either party, directly
or by implication, estoppel or otherwise, with respect to any trade secrets or
know-how, and no such license or other right shall arise from the consummation
of this Agreement or from any acts, statements or dealings leading to such
consummation. Except as specifically provided herein, neither party is required
hereunder to furnish or disclose to the other any technical or other
information.
Section 12. Applicable Law
12.1 This Agreement shall be construed, and the legal relations between the
parties hereto shall be determined, in accordance with the law of the State of
New York, United States of America, as such law applies to contracts signed and
fully performed in such State.
Section 13. Miscellaneous
13.1 Nothing contained in this Agreement shall be construed as a warranty or
representation by either party as to the validity or scope of any of its
Licensed Patents and either party is free to contest in any proceeding said
validity or scope.
13.2 Nothing contained in this Agreement shall be construed as conferring
any right to use in advertising, publicity, or other promotional activities any
name, trade name, trademark, or other designation of either party hereto
(including any contraction, abbreviation or simulation of any of the foregoing);
and each party hereto agrees not to use or refer to this Agreement or any
provision thereof in any promotional activity associated with apparatus licensed
hereunder, without the express written approval of the other party.
13.3 Nothing contained in this Agreement shall be construed as conferring
on either party any license or other right to copy the exterior design of the
products of the other party.
13.4 Nothing contained in this Agreement shall be construed as conferring
any rights by implication, estoppel or otherwise, to or under copyrights or mask
work or similar rights, or with respect to computer programs under any form of
statutory protection now existing or hereafter enacted, in any country or
countries, wherein the copying of a computer program is a requisite of
infringement under such form of protection.
13.5 Nothing contained in this Agreement shall be construed as limiting the
rights which the parties have outside the scope of the licenses granted
hereunder, or restricting the right of either party or any of its Subsidiaries
to make, have made, use, lease, sell or otherwise dispose of any particular
product or products not herein licensed.
13.6 Each party shall, upon request from the other party sufficiently
identifying any patent or patent application, inform the other party as to the
extent to which said patent or patent application is subject to the licenses and
rights granted hereunder. If such licenses or rights under said patent or patent
application are restricted in
scope, copies of all pertinent provisions of any contract or other arrangement
creating such restrictions shall, upon request, be furnished to the party making
such request, unless such disclosure is prevented by such contract, and in that
event a statement of the nature of such restriction shall be provided.
13.7 Neither of the parties hereto, nor any of their respective Subsidiaries
shall be required hereunder to file any patent application, or to secure any
patent or patent rights, or to maintain any patent in force, or to provide
copies of patent applications to the other party or its Subsidiaries, or to
disclose any inventions described or claimed in such patent applications.
13.8 Neither party shall have any obligation hereunder to institute any
action or suit against third parties for infringement of any of its Licensed
Patents or to defend any action or suit brought by a third party which
challenges or concerns the validity of any of its Licensed Patents. In addition,
neither party shall have any right to institute any action or suit against third
parties for infringement of any of the other party's Licensed Patents.
13.9 If a third party has the right to grant licenses under a patent to a
party hereto (as a licensee) with the consent of the other party hereto, said
other party shall provide said third party with any consent required to enable
said third party to license said licensee on whatever terms and conditions such
third party may deem appropriate. Each party hereby waives any right it may have
to receive royalties or other consideration from said third party as a result of
said third party's so licensing said licensee within the scope of the license
granted under Section 2 of this Agreement.
13.10 Either party's Licensed Products leased, sold or otherwise transferred
by a party hereto or its sublicensed Subsidiary shall be
considered to be licensed under any of the other party's Licensed Patents which
at any time covers such Licensed Products, notwithstanding that the Licensed
Product has been re-leased, re-sold or re-transferred by any entity in the same
or another country.
13.11 This Agreement shall not be binding upon the parties until it has been
signed hereinbelow by or on behalf of each party, in which event it shall be
effective as of the later of:
13.11.1 the date of this Agreement first above written; or
13.11.2 the date on which all necessary Singapore government approvals are
obtained.
If approvals referred to in Section 13.11.2 are required in order for CHRT to
perform its obligations under this Agreement, and all of such approvals are not
obtained within one hundred and twenty (120) days of the signing of this
Agreement by IBM, IBM, at its sole discretion, may void this Agreement, ab
initio. No amendment or modification hereof shall be valid or binding upon the
parties unless made in writing and signed as aforesaid.
13.12 This Agreement embodies the entire understanding of the parties with
respect to the subject matter hereof and merges all prior discussions between
them, and neither of the parties shall be bound by any conditions, definitions,
warranties, understandings or representations with respect to the subject matter
hereof other than as expressly provided herein.
13.13 The intent of the parties is to grant limited licenses to each other as
specified in Section 2. If anything in Section 2 is found by competent authority
to be invalid, illegal or unenforceable in any respect for any reason, either
party shall have the right to terminate this Agreement. If anything in any other
Section of this Agreement is found by competent authority to be invalid, illegal
or unenforceable in any respect for any reason, the validity, legality and
enforceability of such other Section in every other respect and the remainder of
this Agreement shall continue in effect so long as the Agreement still expresses
the intent of the parties. However, if the intent of the parties cannot be
preserved, this Agreement shall be either renegotiated or terminated.
13.14 The headings of the several Sections are inserted for convenience of
reference only and are not intended to be a part of or to affect the meaning or
interpretation of this Agreement.
[THE REMAINDER OF THIS PAGE INTENTIONALLY LEFT BLANK]
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly signed as of the date first above written.
INTERNATIONAL BUSINESS
MACHINES CORPORATION
By
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Xxxxxx Xxxxxxxxx
Vice President
Date:
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CHARTERED SEMICONDUCTOR
MANUFACTURING LTD.
By
----------------------------------
Xxxxx Xxxxx
President & CEO
Date:
-------------------------------
