PATENT AND SOFTWARE LICENSE AGREEMENT
THIS PATENT AND SOFTWARE LICENSE AGREEMENT ("Agreement") is made, entered into
and effective as of the latter date of execution ("Effective Date") at Glenwood,
Maryland, between Trusted Information Systems, Inc. a Delaware corporation
("TIS"), having its principal mailing address at 0000 Xxxxxxxxxx Xxxx (Xx. 00),
Xxxxxxxx, Xxxxxxxx 00000, and International Business Machines Corporation, a New
York corporation ("IBM"), having a mailing address at 000 Xxxxxxxx Xxxxxx,
Xxxxxxxxx, Xxx Xxxx 00000.
RECITALS
A. TIS is the owner of and holds exclusive rights to certain technology that
is the subject of certain copyrights and pending and issued U.S. and
foreign patent applications relating to cryptographic information recovery.
B. IBM desires to have access to use such technology and/or patents and/or
copyrights to develop and distribute Licensed Products and TIS is prepared
to grant IBM such access and license in accordance with the terms and
subject to the conditions hereinafter set forth.
AGREEMENT
NOW, THEREFORE, in reliance on the foregoing recitals and in consideration of
the premises and mutual promises and covenants set forth herein, TIS and IBM
agree as follows:
1. DEFINITIONS
The following terms when used in this Agreement, and in the exhibits hereto
shall have the following meanings:
1.1. "Bundled Product" means the series or group of specific
computer programs, software, derivative works thereof,
firmware, or equivalent hardware functionality, identified in
Exhibit "A" which, on a non-exclusive basis, incorporates
either (a) any portion of the TIS Object Code or (b) any New
Software. The term Bundled Product excludes Toolkit, Toolkit
Derivative, KRC, and IBM Recovery Facility.
1.2. "Cryptographic Information Recovery Technology" means all
means, methods and processes related to the recovery of
encrypted information through key recovery and key escrow or
similar or replacement means and any functionality
incorporated into or practiced by RecoverKey,
RecoverKey-International, any derivative work thereof, or any
Key Recovery Center.
1.3. "Default Certificate" means a cryptographic certificate
provided by a KRC or IBM Recovery Facility that is the
property of the KRC or IBM Recovery Facility and licensed by
the KRC or IBM Recovery Facility to the End-User Customer. A
Default Certificate may be required before a Bundled Product's
or Toolkit Derivative's cryptographic capabilities will
function and such Default Certificate expires after a
specified period of time not to exceed one year.
1.4. "Distributor" means a person or entity in the business of
distributing and sublicensing Licensed Products by authority
granted by IBM, including, but not limited to OEMs, resellers,
value added remarketers, dealers, and sales representatives.
1.5. "Documentation" means hardcopy and/or softcopy versions of
printed materials and any updates thereto which TIS provides
for use with any TIS Software licensed under this Agreement.
1.6. "End-User Customer" means a person or entity having license
rights to a Bundled Product or a Toolkit Derivative, KRC, or
IBM Recovery Facility from IBM, its Subsidiaries,
Distributors, or Toolkit Licensees
1.7. "IBM Recovery Facility" means a facility designed or
manufactured, other than by TIS, by or for IBM or its
Subsidiaries and identified in Exhibit "A" that may: (i)
provide a series or group of specific computer programs,
software, derivative works thereof, firmware, or equivalent
hardware functionality, which, on a non-exclusive basis,
incorporates either (a) any TIS Software or (b) any New
Software to permit users of Licensed Products to register,
receive KRC Certificates, or obtain information in various
contingencies; and (ii) provide consulting and support
services ancillary thereto. It is contemplated that this
Agreement may encompass additional IBM Recovery Facilities at
some future date. IBM may add or delete IBM Recovery
Facilities to or from Exhibit "A" by providing written notice
to TIS of such additions and such additional IBM Recovery
Facilities shall be automatically licensed pursuant to the
terms and conditions of this Agreement.
1.8. "IBM Recovery Facility Licensee" means any third party which
licenses an IBM Recovery Facility from IBM, its Subsidiaries,
or Distributors.
1.9. "IBM Recovery Field Format" means a field in a Bundled Product
or Toolkit Derivative to store recovery information that is
used by a Toolkit Licensee or IBM Recovery Facility.
1.10. "Interface Modifications" shall have the meaning set forth in
Section 2.4.1.
1.11. "Key Recovery Center(TM)" or "KRC(TM)" means: a recovery
facility that is either manufactured by TIS or a licensee of
TIS and: (i) provides software, hardware and/or other
technology resources to permit users to register their use of
RecoverKey(TM) and/or RecoverKey-International(TM), as defined
in Exhibit "H", to receive KRC Certificates and to obtain
information in various contingencies, and (ii) may provide
consulting and support services ancillary thereto.
1.12. "KRC Certificate" means a cryptographic public key certificate
provided by a Key Recovery Center or an IBM Recovery Facility,
including but not limited to a Default Certificate, that
permits key recovery by End-User Customers or other authorized
users.
1.13. "Key Recovery Center Licensee" means any third party that
sublicenses a KRC from IBM, its Subsidiaries, or Distributors.
1.14. "Key Recovery Field" or "KRF" or "Key Recovery Field Format"
means the technical means by which Bundled Products or Toolkit
Derivatives will generate a field containing information
described in Exhibit "B". At a minimum, such field would
contain information or an encryption key encrypted using a
public key that was issued by a KRC or an IBM Recovery
Facility.
1.15. "KRF Requirement Mechanism" means a technical method for
requiring the inclusion of KRF(s) upon encryption of
information.
1.16. "KRF Tamper-Detection Mechanism" means a technical method
which prevents the encryption of encrypted information upon
detection of an altered or missing KRF.
1.17. "Key Recovery Technology(TM) " or "KRT(TM) " means technology
comprising RecoverKey(TM) and/or RecoverKey-International(TM)
implementations that permits End-Users Customers to register
their use of KRTenabled Licensed products and receive KRC
Certificates, and also permits users, their organizations and
government agencies to recover a user information in the event
the user's normal means of obtaining such user information are
unavailable. It includes the TIS Software, TIS Object Code,
TIS Source Code, the Patent Rights, and/or the TIS Key
Recovery Field Format.
1.18. "License Fees" shall have the meaning set forth in Section
3.1.
1.19. "Licensed Product" means: a Bundled Product, Toolkit, Toolkit
Derivative, KRC, and/or IBM Recovery Facility.
1.20. "Net Revenue" for Bundled Products, Toolkits, KRCs and IBM
Recovery Facilities means the gross revenue amount recorded by
IBM or its Subsidiaries (except as otherwise provided in
Exhibit "D") at any time in consideration of the licensing or
other permitted transfer of Bundled Product Toolkits, KRCs,
and IBM Recovery Facilities excluding any amounts received by
IBM or its Subsidiaries for sales and use taxes, shipping,
insurance and duties, and reduced by all discounts, rebates,
refunds or allowances granted to Distributors, or End-User
Customers in the ordinary course of IBM's or its Subsidiaries'
business.
Net Revenue for Toolkit Derivatives means the gross revenue
amount recorded by Toolkit Licensees at any time in
consideration of the licensing or other permitted transfer of
the Toolkit Derivatives, respectively, excluding any amounts
received by Toolkit Licensees for sales and use taxes,
shipping, insurance and duties, and reduced by all discounts,
rebates, refunds or allowances granted to Distributors, or
End-User Customers in the ordinary course of any Toolkit
Licensee's business.
Net Revenue for KRC's and IBM Recovery Facilities, for the
purpose of Section III(B) of Exhibit "D" hereto means the
gross revenue amount recorded by KRC or IBM Recovery Facility
Licensees, as applicable, at any time in consideration of the
issuance of Default Certificates, the collection of User
Registration Fees and User Recovery Fees, excluding any
amounts received by KRC or IBM Recovery Facility Licensees, as
applicable, for sales and use taxes, shipping, insurance and
duties, and reduced by all discounts, rebates, refunds or
allowances granted to Distributors, or End-User Customers in
the ordinary course of any KRC or IBM Recovery Facility
Licensees, as applicable, business.
In computing Net Revenue in any of the forgoing situations,
credit for returns actually made or allowed to End-User
Customers, or Distributors may be deducted but no such
deductions shall be permitted for estimates or amounts
accumulated for future settlement with purchasers. With
respect to a Licensed Product that is licensed or otherwise
distributed by IBM, a Subsidiary, a Distributor or Toolkit
Licensee as part of a larger group of products, a License Fee
shall be due as set forth above as though the Licensed Product
had been licensed or distributed separately by IBM, a
Subsidiary, a Distributor or Toolkit Licensee; provided,
however, that the amount used by IBM, a Subsidiary, a
Distributor or Toolkit Licensee as the base net revenue for
the Licensed Product when licensed or distributed in this
manner shall not be less than the pro rata proportion of the
sum of each component's price if sold separately.
1.21. "New Software" means any computer program, software, firmware
or equivalent hardware functionality, developed by or for IBM
or its Subsidiaries which is covered by any claim of the
Patent Rights or which is manufactured using or incorporating
a process which is covered by any of the Patent Rights.
1.22. "Other Products" means a product manufactured by or for IBM,
its Subsidiaries, Toolkit Licensees and sublicensees that
incorporates a Key Recovery Field Format but does not include
TIS Software and is not otherwise covered by the Patent
Rights.
1.23. "Patent Rights" means all of the following intellectual
property owned, licensable to IBM by TIS, or controlled by
TIS, or its Subsidiaries for so long as the term of such
intellectual property, if any, has not expired by its terms or
been rendered invalid or unenforceable by a tribunal of
competent jurisdiction from which no further appeal was or can
be taken:
a) All patents having claims covering Cryptographic
Information Recovery Technology issued or issuing on
patent applications entitled to an effective filing date
prior to ***, under which patents or the applications
therefor TIS or any of its Subsidiaries now has, or
hereafter obtains, the right to grant licenses to IBM
including, but not limited to the patents identified in
Exhibit "I" and any patents issuing from patent
applications identified in Exhibit "I"; and
_______
*** Confidential Information has been omitted and filed
separately with the Commission.
b) Any divisionals, continuations or continuation in parts or
extensions of any of the aforesaid applications and any
patent reissuing of any of the aforesaid patents.
1.24. "RecoverKey(TM)" means TIS's implementation of KRT which
permits the decryption of an encrypted user information by a
KRC, which does not include KRF Tamper-Detection or KRF
Requirement Mechanisms.
1.25. "RecoverKey-International(TM)" means TIS's implementation of
KRT incorporating: (i) a KRF Requirement Mechanism which
permits a KRF Tamper-Detection Mechanism to function; and/or
(ii) a KRF Tamper Detection Mechanism which enables the
decryption of user information encrypted by TIS Software or
derivative work thereof containing a KRF Requirement
Mechanism.
1.26. "Subsidiary" means a corporation, company or other entity:
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, but such corporation, company or other entity shall be
deemed to be a Subsidiary only so long as such ownership or
control exits; or 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, but such corporation, company
or other entity shall be deemed to be a Subsidiary only so
long as such ownership or control exists.
1.27. "TIS Object Code" means the TIS Software in machine-readable
object code form, either in the form provided to IBM by TIS,
or in the form that results from recompiling in whole or in
part of the TIS Source Code after modification thereof.
1.28. "TIS Software" means the software computer program(s)
described as such in Exhibit "H" and the TIS Documentation
associated therewith, if any, including both the TIS Object
Code and TIS Source Code. "TIS Software" shall also include
any modifications, upgrades, and enhancements to such programs
as may be provided by TIS to IBM pursuant to the Maintenance
and Support terms (attached hereto as Exhibit "C"), and
Exhibit "H" shall be updated to reflect such modifications,
upgrades and enhancements.
1.29. "TIS Source Code" means the human-readable, high level
statement versions of the TIS Software written in a source
language used by programmers.
1.30. "Toolkit" means the series or group of specific computer
programs, software, firmware, or equivalent hardware
functionality, identified in Exhibit "A" which, on a
non-exclusive basis, incorporates either (a) TIS Software or
(b) any New Software either of which performs key or
information recovery functions and which is packaged, marketed
and licensed to be used by product developers who incorporate
the key or information recovery functions into such product
developer's products for redistribution, which Toolkit is not
itself permitted or intended for use by End-User Customers. It
is contemplated that this Agreement may encompass additional
Toolkits at some future date. IBM may add or delete Toolkits
to or from Exhibit "A" by providing written notice to TIS and
such additional Toolkits shall be automatically licensed
pursuant to the terms and conditions of this Agreement.
1.31. "Toolkit Derivative" means a derivative work of a Toolkit
compiled into object code that incorporates either (a) any
portion of the TIS Object Code or (b) any New Software.
1.32. "Toolkit Licensee" means any third party which licenses a
Toolkit from IBM, its Subsidiaries, or its Distributors.
2. GRANT OF LICENSES
2.1. Bundled Product Licenses. Without limiting IBM's rights to
bundle its products with software provided by any other
vendor, TIS hereby grants IBM, a non-exclusive,
non-transferable, perpetual and irrevocable (each except and
IBM hereby accepts as provided in Section 10), non-assignable
(except as provided in Section 10.4), worldwide license under
the copyrights and other intellectual property rights related
to the TIS Software, and under all Patent Rights to make, have
made modify, use, import, lease, sell, offer for sale,
license, sublicense and otherwise transfer Bundled Products
and execute, copy, reproduce, have reproduced, perform, and
display Bundled Products and distribute and transmit Bundled
Products, and to practice any method or process involved in
the use or manufacture of such Bundled Products.
2.2 TIS grants to IBM a non-exclusive, non-transferable, perpetual
and irrevocable (each except as provided in Section 10),
nonassignable (except as provided in Section 10.4), worldwide,
royalty free right and license to use and incorporate Key
Recovery Field Formats in any Licensed Products or Other
Products and to distribute and transmit such Licensed
Products, or Other Products and sublicense others to do any of
the foregoing all subject to the limitations on sublicensing
set forth in this Section 2.2 and for Toolkit Licensees,
subject to the limitations in Section 2.11 including the right
of Toolkit Licensees to use and incorporate such Key Recovery
Field Formats in Toolkit Derivatives and to distribute and
transfer such Toolkit Derivatives. Such Key Recovery Field
Formats shall not be considered to be TIS Object Code even if
such TIS Object Code incorporates or uses such formats and
mere use, reproduction and distribution of such Key Recovery
Field Formats does not create a Licensed Product and,
therefore, does not create a corresponding royalty obligation.
2.3. ***
2.4 TIS Source Code License. Subject to the restrictions specified
in Sections 11.13, 2.10 and 2.11, TIS hereby grants IBM, and
IBM hereby accepts for the purpose of creating Licensed
Products, a non-exclusive, perpetual and irrevocable (each
except as provided in Section 10), non-transferable, and
non-assignable (each except as provided in Section 10.4),
worldwide license under the copyrights and other intellectual
property rights (including patents) related to the TIS Source
Code to:
2.4.1. Access, make, have made, execute, modify, use,
reproduce, display, perform, prepare and have
prepared derivative works of TIS Source Code and to
a) compile, and b) develop interfaces and other
software (all such modifications to the TIS Source
Code, interfaces and such other software are referred
to collectively as "Interface Modifications");
2.4.2. Access and review the TIS Source Code in support of
End-User Customers, Distributors, Toolkit Licensees,
KRC Licensees and IBM Recovery Facility Licensees;
2.4.3. Compile the TIS Source Code to create Licensed
Products; and
2.4.4. Maintain Licensed Products and support Distributors,
Toolkit Licensees, KRC Licensees, IBM Recovery
Facility Licensees and End-User Customers.
2.5. Limitations On Source Code Licenses. The limitations set forth
in Section 2.3 shall also be limitations of the license rights
granted in Section 2.4, and IBM shall have no right to use the
TIS Source Code except as expressly set forth under this
Agreement; provided further that IBM, its Subsidiaries and
Distributors are not permitted to sublicense TIS Source Code
to End-User Customers.
2.6. Documentation Licenses. TIS hereby grants to IBM, a worldwide,
non-exclusive, non-transferable, perpetual and irrevocable
(each except as provided for in Section 10), fully paid up
license with respect to the Licensed Products: (i) to use,
display, access, perform, transmit, distribute, execute and
reproduce copies of Documentation, (ii) to prepare or have
prepared derivative works thereof and (iii) to distribute
copies of such unmodified and modified Documentation.
2.7. Title.
2.7.1. Subject to the license rights granted herein, TIS
shall at all times retain full and exclusive right,
title and ownership interest in and to the Patent
Rights and the TIS Software, including in and to any
and all of its patent, trademark, copyright, trade
secret or other proprietary rights therein.
2.7.2. Subject to the license rights granted by TIS herein,
IBM shall retain full and exclusive right, title and
ownership interest in and to any New Software and any
Interface Modifications developed by IBM and any
other products of IBM and in and to any and all of
its patent, trademark, copyright, trade secret or
other proprietary rights therein.
_______
*** Confidential Information has been omitted and filed
separately with the Commission.
2.8. Retained Rights. All rights of TIS not expressly granted to
IBM herein are retained by TIS. There are no implied rights of
TIS related to the New Software or the products owned by IBM.
TIS shall have no implied rights to any portion of the New
Software, a Licensed Product or any other product
independently developed by IBM or licensed by IBM from a
source other than TIS, rights in which are not otherwise
retained by TIS through its ownership of the Patent Rights
and/or the TIS Software.
2.9. Immunity from Suit. TIS hereby grants to End-User Customers
and Distributors of any Bundled Products or any derivative
work thereof and Toolkits a non-exclusive, worldwide,
non-transferable, perpetual and irrevocable (each except as
provided in Section 10), non-assignable (except as provided in
Section 10.4), immunity from suit, and freedom from
infringement liability under the Patent Rights for making,
having made, using, selling, offering for sale, licensing,
leasing or otherwise transferring Bundled Products and
Toolkits either alone or in combination with other products or
apparatus and to practice any method or process involved in
the use of such Bundled Products and derivative works thereof
and Toolkits provided; however that the foregoing rights are
exercised in accordance with the applicable terms of this
Agreement or any applicable sublicense agreement.
2.10. Toolkit Licenses and Immunity.
2.10.1. TIS hereby grants IBM a non-exclusive, perpetual
and irrevocable (each except as in Section 10),
non-transferable, non-assignable (except as provided
in Section 10.4), worldwide license under copyrights
and other intellectual property rights related to TIS
Software and under all Patent Rights to:
a) Access, make, have made, modify, and use Toolkits
and execute, copy, reproduce, have reproduced,
perform, and display Toolkits and prepare and
have prepared derivative works thereof, and to
practice any method or process involved in the
use or manufacture of such Toolkits and
derivative works thereof;
b) Lease, sell, offer for sale, import, license,
sublicense (only as provided in Subsection C
below), distribute, transmit, and otherwise
transfer Toolkits and derivative works thereof;
and
c) Sublicense Toolkit Licensees to access, modify,
and use Toolkits and execute, copy, reproduce,
have reproduced, perform, and display Toolkits
and prepare and have prepared derivative works
including Toolkit Derivatives, and to practice
any method or process involved in the use or
manufacture of such Toolkits and Toolkit
Derivatives; and lease, sell, offer for sale,
import, license, sublicense, distribute,
transmit, and otherwise transfer Toolkit
Derivatives. Any sublicense rights granted to
Toolkit Licensees, whether directly by IBM or
indirectly by an IBM Subsidiary or Distributor,
pursuant to this Section; (i) shall be made
subject to the terms and conditions of Section
6.3 (confidentiality); (ii) shall be made subject
to the limitation that Toolkit Licensees cannot
further sublicense or distribute the Toolkits;
(iii) shall include the right of Toolkit
Licensees to execute, copy, reproduce, have
reproduced, perform, distribute, transmit and
display Toolkit Derivatives and prepare and have
prepared derivative works of such Toolkit
Derivatives and further sublicense to End-User
Customers directly or through Distributors any of
the foregoing; and (iv) shall contain provisions
similar to those set forth in Exhibit "E".
2.10.2. Toolkit Immunity. TIS hereby grants to any Toolkit
Licensees and to any customers, mediate or immediate
of Toolkit Licensees, a non-exclusive,
non-transferable, perpetual and irrevocable (except
as provided in Section 10), non-assignable (except as
provided in Section 10.4.), worldwide immunity from
suit, and freedom from infringement liability under
the Patent Rights for making, having made, using,
selling, offering for sale, licensing, leasing and
otherwise transferring any Toolkit Derivatives, alone
or in combination with any other product or
apparatus, and to practice any method or process
involved in the use of any Toolkit Derivatives,
provided, however, that the foregoing rights are
exercised in accordance with the applicable terms of
this Agreement or any applicable sublicense
agreement.
2.11. KRC and IBM Recovery Facility Licenses. TIS hereby grants IBM
a non-exclusive, perpetual and irrevocable (each except as
provided in Section 10), non-transferable, non-assignable
(except as provided in Section 10.4), worldwide license under
copyrights and other intellectual property rights related to
TIS Software and under all Patent Rights tomake, have made,
modify, and use KRCs and IBM Recovery Facilities and execute,
copy, reproduce, have reproduced, perform, and display KRCs
and IBM Recovery Facilities, lease, sell, offer for sale,
import, license, sublicense, distribute, transmit, and
otherwise transfer KRCs and IBM Recovery Facilities, and to
practice any method or process involved in the use or
manufacture of such KRCs and IBM Recovery Facilities. With
respect to a KRC or an IBM Recovery Facility operated by IBM,
IBM shall be bound by the terms set forth in Exhibit "F". Each
sublicense agreement of a KRC or IBM Recovery Facility,
respectively, whether entered into directly by IBM or
indirectly by an IBM Subsidiary or Distributor, shall contain
similar provisions to those set forth in Exhibit "G".
2.12. KRC and IBM Recovery Facility Immunity. TIS hereby grants to
any KRC Licensees and IBM Recovery Facility Licensees, and to
any customers thereof, mediate or immediate, a non-exclusive,
non-transferable, perpetual and irrevocable (each except as
provided in Section 10), non-assignable (except as provided in
Section 10.4), worldwide immunity from suit, and freedom from
infringement liability under the Patent Rights for using KRCs
or IBM Recovery Facilities, alone or in combination with any
other product or apparatus, and to practice any method or
process involved in the use or manufacture of any KRC and IBM
Recovery Facilities provided however the foregoing rights are
exercised in accordance with the applicable terms of in this
Agreement or any applicable sublicense agreement.
2.13. IBM Recovery Field Formats. IBM agrees to disclose to TIS the
IBM Recovery Field Formats. IBM grants to TIS, a
non-exclusive, non-transferable, perpetual and irrevocable
(each except as provided in Section 10), non-assignable
(except as provided in Section 10.4), worldwide license under
copyrights in the IBM Recovery Field Formats to copy,
reproduce, distribute, and transmit such formats.
Notwithstanding the foregoing, nothing contained in this
Agreement shall be construed as conferring by IBM to TIS any
rights by implication, estoppel or otherwise, to or under
copyrights (other than those granted in this Section 2.13),
patents, trade secrets, know-how, trademarks, or trade names.
2.14. Extension of Licenses to Subsidiaries and Distributors. All
licenses herein granted under Section 2 shall include the
right of IBM to grant sublicenses, of or within the scope of
the licenses granted to it herein, to its Subsidiaries and
Distributors and each such sublicensed Subsidiary and
Distributor shall have the corresponding right to grant
sublicenses limited by the terms of the licenses contained
herein, of or within such scope, to other Subsidiaries and
Distributors of IBM. Each such sublicensee shall be subject to
the terms and conditions of this Agreement.
2.13. Additions to Exhibits. It is contemplated that this Agreement
may encompass additional Licensed Products at some future
dates. IBM may add or delete Licensed Products to or from
Exhibit "A" at any time during the term of this Agreement by
providing written notice to TIS and such additional Licensed
Products shall automatically be subject to the licenses and
other rights granted under the terms and conditions of this
Agreement..
3. LICENSE FEES
3.1. License Fees.
3.1.1. Upfront License Fee. Upon execution of this
Agreement, IBM shall be obligated to pay TIS the
amount up front set forth in Exhibit "D".
3.1.2. Royalty Rate. In consideration of the license,
immunities, and other rights granted by TIS under
this Agreement, IBM shall pay TIS the fees and
royalties set forth in Exhibit "D". There shall be no
minimum royalty payments except for the fees and
royalties set forth in Exhibit "D", and IBM shall
have no obligation to market any Licensed Products.
3.1.3. Exceptions. IBM shall have no fees or royalty
obligation for copies of Licensed Products that: (i)
are used for IBM, its Subsidiaries', or Distributors'
internal use, development (other than Distributors),
maintenance/support activities, marketing
demonstrations, field testing, customer trial
periods, training, unsold inventory, education, or
backup/archival purposes; or (ii) contains only TIS
Software which becomes generally available by TIS to
third parties without a royalty or payment
obligation; or (iii) are used on a secondary or
backup machine provided that the Licensed Product is
not in active use on both a primary and a secondary
machine at the same time.
3.1.4. ***. IBM may request *** for any or all Licensed
Products when a licensing transaction requires a ***.
If TIS agrees, both parties will sign a letter
specifying the licensing transaction and its ***.
3.1.5. Maintenance Fee. IBM agrees to pay TIS the Annual TIS
Software Maintenance fee set forth in the applicable
Exhibit "D".
______
*** Confidential Information has been omitted and filed
separately with the Commission.
3.1.6. Quarterly Report and Remittance. Within sixty (60)
days of the end of each calendar quarter, IBM shall
furnish to TIS a complete and accurate statement,
indicating the quantity and Net Revenue of Licensed
Products licensed or otherwise transferred or
returned, if any, during such calendar quarter, and
shall accompany such statement with payment of the
amount of fees and royalties due. Outside of the
U.S., a royalty payment quarter is defined according
to IBM's then current administrative practices.
Should the administration of IBM's worldwide revenue
recording systems and processes materially change
from the system and processes described in Section
I.B of Exhibit "D", IBM will advise TIS as to whether
the time period for delivering such Quarterly Report
and the associated remittance may be modified to be
submitted in a shorter time period than is specified
in this Section 3.1.6.
3.1.7. Annual Reporting. Within sixty (60) days of the end
of each calendar year, IBM shall provide TIS with a
cumulative statement of the Net Revenue of all
Licensed Products for such calendar year with the
same detail as required by the preceding subsection.
Within sixty (60) days after the expiration or
termination of the rights licensed herein, IBM shall
provide TIS with a cumulative statement of the Net
Revenue of all Licensed Products for the year in
which such termination or expiration occurs. Such
statements shall be accompanied by a remittance of
any additional payment due TIS, or a statement of
credit due IBM.
3.1.8. Audit Provisions. IBM shall keep records in
accordance with generally accepted accounting
principles and in sufficient detail to permit the
determination of which products are subject to
royalty payments under this Agreement, the royalties
due TIS, and the accuracy of the information on IBM's
written reports. Such records shall include detailed
records supporting transaction relating to Licensed
Products. Such records shall be kept for three (3)
years following the due date for the report relating
to the reporting period to which such records
pertain.
Upon TIS's written request for an audit, IBM shall
permit independent auditors designated by TIS,
compensated (other than on a contingency basis) by
TIS, and approved by IBM, to examine, during ordinary
business hours, records, and materials of IBM for the
purpose of determining royalties due TIS and in such
a manner as not to interfere with normal business
activities. The auditor will sign a confidentiality
agreement and will only disclose to TIS any amounts
overpaid or underpaid for the period examined. TIS's
request for an audit will be provided to IBM in
writing and will be made at least sixty (60) days
prior to any audit. Such request will not occur more
than once each year.
Such audit shall be restricted to an audit of those
records and materials related to Licensed Products.
Such records and materials shall be deemed to include
general financial information to provide a
cross-check for the amount of royalties reported.
In the event an audit identifies an underpayment of
royalties by IBM, IBM shall pay an amount equal to
the sum of such underpayment.
3.1.9. IBM will pay TIS the reasonable cost of the
independent auditors in the event that the audit
results in a finding that any statement submitted by
IBM has understated the royalties due TIS for the
period in question by ten percent (10%) or more.
3.1.10. Currency. Net Revenue invoiced in a currency other
than United States Dollars shall, for purposes of
this Agreement, be converted into United States
Dollars on the basis of the United States Dollar
equivalent exchange rates according to IBM's standard
practices.
3.1.11. Taxes. All taxes, duties, fees and other governmental
charges of any kind (except United States or state
taxes based on the net income of TIS) which are
levied, assessed or otherwise imposed by or under the
authority of any government or political subdivision
on any royalties payable hereunder, or any aspect of
this Agreement, shall be borne by IBM and shall not
be considered a part of, a deduction from, or an
offset against such royalties.
3.1.12. ***
4. MAINTENANCE AND SUPPORT
4.1. Maintenance. IBM will receive from TIS Maintenance and support
services pursuant to the terms contained in Exhibit "C", which
terms are incorporated herein by reference as though repeated
here.
4.2. Support. TIS shall not be responsible for providing level one
support to Distributors or End-User Customers for the Bundled
Products or Toolkit Derivatives, but TIS shall provide level
one support to IBM and its Subsidiaries.
4.3. New Release. New releases and new versions of TIS Software
will be provided by TIS at no additional charge during the
term of this Agreement.
5. MASTER COPY
5.1. Within thirty (30) days after the execution of this Agreement,
TIS shall deliver to IBM copies, in electronic or magnetic
form, of the TIS Software, and such other information,
Documentation and instructions reasonably deemed necessary by
TIS to enable IBM to utilize the licenses granted under this
Agreement (collectively, the "Master Copy"). TIS shall provide
additional Master Copies of revisions, updates and/or
enhancements, if any, to the TIS Software from time to time.
6. ADDITIONAL OBLIGATIONS OF LICENSEE
6.1. Licensed Product Marketing. IBM is authorized to represent to
its customers such facts about the TIS Software as TIS states
in its product descriptions, advertising and Promotional
materials.
6.2. License Agreement. IBM or its Subsidiaries or Distributors
shall provide to each End-User Customer of a Licensed Product,
a license agreement which is substantially similar to IBM's or
its Subsidiaries' then current license agreement. A copy of
IBM's current license agreement is attached hereto as Exhibit
"J".
6.3. Confidentiality and Marking
6.3.1. Information. From time to time during the course of
performance of the terms and conditions of this
Agreement, the parties may find it necessary or
useful to exchange confidential information
("Information"). TIS and IBM agree that all
disclosures of Information shall be made in
accordance with this Section 6.3.
6.3.2. Non-disclosure. The recipient's obligations regarding
Information expire two (2) years after the date of
disclosure, except for Source Code provided
hereunder, for which the recipient's obligations
shall expire five (5) years after the date of
disclosure. Information shall be used only in
accordance with the terms of this Agreement and shall
not be disclosed to a third party unless such third
party has entered into a written confidentiality
agreement at least as restrictive as the terms of
this Section. The recipient shall protect Information
using the same degree of care as it uses to protect
its own information of a like nature and in no event
exercise no less than reasonable care.
6.3.3. Identification. The recipient shall be obligated to
protect only Information: (a) disclosed in tangible
form clearly labeled as confidential or proprietary
at the time of disclosure; or (b) disclosed in
non-tangible form, identified as confidential or
proprietary at the time of disclosure, summarized in
_______
*** Confidential Information has been omitted and filed separately with
the Commission.
a writing, designated as confidential or proprietary,
delivered to the recipient within thirty (30) days
after the disclosure.
6.3.4. Exceptions. This Agreement imposes no obligation upon
the recipient with respect to Information which: (a)
was in the possession of, or was known by, the
recipient prior to its receipt from the discloser,
without an obligation to maintain its
confidentiality; (b) is or becomes generally known to
the public without violation of this Agreement; (c)
is obtained by the recipient from a third party,
without an obligation to keep such information
confidential; or (d) is independently developed by
the recipient without use of Information. Disclosure
of Information is not prohibited if reasonable prior
notice is given to the discloser and such disclosure
is: (a) compelled pursuant to a legal proceeding or
(b) otherwise required by law.
6.3.5. Disclaimer. Information is delivered "AS IS", and all
representations and warranties, express or implied,
including fitness for a particular purpose,
merchantability, and non-infringement are hereby
disclaimed. Neither party has an obligation under
this Agreement to sell or purchase any item from the
other party. The recipient does not acquire any
rights in Information, except the limited right to
use Information as described above.
6.3.6. Residual Knowledge. Nothing in this Agreement is
intended to impose any obligations on the recipient
with respect to its use of Residual Knowledge.
"Residual Knowledge" means Information, including
concepts, know-how or techniques, that is retained in
the memories of recipient's employees who have had
access to Information consistent with the terms of
this Agreement. Recipient's use of Residual Knowledge
is subject to valid patents, copyrights, and
semiconductor mask work rights of the discloser.
6.3.7. Source Code. Source Code shall only be available to
the employees of the recipient, its agents,
Subsidiaries, subcontractors or others authorized to
receive Source Code pursuant to this Agreement on a
"need to know" basis.
6.4. Quality and Marking Standards. Except as provided under this
Agreement, IBM shall not display or use in any other way any
TIS trademark or tradename or other copyright, patent,
trademark, or other TIS marking or legend. IBM will not remove
or receive any TIS copyright notice in TIS Source Code. IBM
shall comply with IBM's quality standards when making and
distributing Licensed Products. IBM agrees to insert within
the splash screen of the Licensed Product an appropriate TIS
marking unless such Licensed Product does not have a splash
screen.
7. PUBLICITY
7.1. Cooperation. Where both parties deem appropriate, IBM and TIS
may engage in the following activities: joint publicity
releases, joint marketing materials, joint marketing calls,
joint trade show efforts, joint KRT lead processing, and
strategy coordination concerned with promoting KRT in the
commercial marketplace and to various domestic and foreign
government agencies.
7.2. Agreement Announcement. The parties agree that upon execution
of this Agreement, both parties may announce and/or confirm
the existence of this Agreement to the business, trade and
general press, or to any other person or entity provided that
the parties agree on the content, and date of the
announcement, and venue and vehicle for the announcement.
7.3. Approval. Neither party may publish any press release or other
public document which contains quotes from or any information
about the other party or its products without obtaining the
prior written consent of the other party. Notwithstanding any
of the foregoing, TIS may make factually accurate statements
about the compatibility of TIS products with IBM products.
7.4. Confidentiality of Agreement. The terms and conditions of this
Agreement shall be maintained in confidence as Information in
accordance with Section 6.3 hereof. Notwithstanding the
foregoing, the parties agree that TIS may file this Agreement
with appropriate governmental authorities subject to
appropriate confidentiality provisions to the extent
available.
8. LIMITED WARRANTY AND DISCLAIMER
8.1 Both parties represent and warrant that they have the
authority to enter into this Agreement and perform the
obligations hereunder.
8.1.1. TIS represents and warrants that to the best of its
knowledge the TIS Software does not contain any
Harmful Code. For the purposes of this Agreement,
"Harmful Code" means computer programming code that
is intentionally constructed with the ability to
damage, interfere with or otherwise adversely affect
computer programs, data files, or hardware without
the consent or intent of IBM, or any other authorized
licensee, which includes, but is not limited to,
self-replicating and self-propagating programming
such as viruses, worms and Trojan horses.
8.1.2. TIS represents and warrants that the media on which
the TIS Software is recorded will be free from
defects in materials and workmanship for a period of
ninety (90) days after delivery. TIS's sole liability
with respect to breach of this warranty is to replace
the defective media. Except as expressly provided in
this Section 8.1 and Section 9.0, TIS licenses the
TIS Software and Documentation to IBM on an "AS IS"
basis.
8.2. Disclaimer.
EXCEPT AS SPECIFIED IN THIS AGREEMENT, ALL EXPRESS OR IMPLIED
REPRESENTATIONS AND WARRANTIES, INCLUDING ANY IMPLIED WARRANTY
OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE OR
INFRINGEMENT ARE HEREBY DISCLAIMED.
9. LIMITED INDEMNITY AND LIMITATION OF LIABILITY
9.1. Representation. TIS represents and warrants that: (i) TIS has
sufficient rights to grant the rights and/or licenses granted
to IBM herein; (ii) the TIS Software does not infringe any
copyright, patent, trademark, or misappropriate any trade
secret; and (iii) no claim of patent, copyright, trade secret
or trademark infringement has been threatened or asserted, in
writing, or is in litigation relating to any of the
intellectual property provided by TIS under this Agreement.
TIS shall notify IBM of written claims and litigation which
arise during the term of this Agreement related to the
foregoing on a reasonable schedule.
9.2. Indemnity by TIS. TIS will defend or, at its option settle, at
its expense, any legal proceeding brought against: (i) IBM,
(ii) its Subsidiaries, and (iii) at IBM's request, its
Distributors, Toolkit Licensees, KRC Licensees, IBM Recovery
Facility Licensees, and End-Users Customers by a third party
to the extent it is based on a claim that: (a) TIS Software or
any portion thereof misappropriates a third party trade
secret, or infringes a copyright, patent, or other
intellectual property right of a third party; and/or (b) that
TIS has no right to license the TIS Software, Patent Rights,
or other intellectual property rights licensed hereunder. TIS
will pay all damages awarded by a court of competent
jurisdiction attributable to such claim, provided that IBM (i)
provides notice of the claim promptly to TIS, (ii) gives TIS
control of the defense and settlement of the claim; and (iii)
provides at TIS' expense reasonable assistance in the defense
or settlement thereof; provided, that if any settlement
results in any ongoing liability to, or prejudices or
detrimentally impacts IBM, and such obligation, liability,
prejudice or impact can reasonably be expected to be material,
then such settlement shall require IBM's written consent,
which consent shall not be unreasonably be withheld. IBM shall
be permitted to participate in such defense and settlement
proceedings at its own expense.
9.3. Election. Should any TIS Software or any portion thereof
become the subject of a claim of infringement for which
indemnity is provided under Section 9, TIS may elect to: (i)
obtain for IBM the right to use such TIS Software; or (ii)
replace or modify the TIS Software so that it becomes
non-infringing while substantially retaining its previous
functionality.
9.4. Exception. TIS shall have no indemnification obligation for
any infringement or claim which results solely from: (i) use
of other than an unaltered version of the TIS Software, if the
infringement is avoided by using the unaltered version; (ii)
TIS's compliance with designs or specifications of IBM as
required by IBM; (iii) distribution of products by IBM which
are not distributed pursuant to, or which are distributed in
violation of, the terms of this Agreement; (iv) use of the
Patent Rights or the TIS Software in combination with software
not licensed hereunder where the Patent Rights or the TIS
Software would not itself be infringing other than in an
operating environment specified or contemplated by TIS; or (v)
any matter for which IBM has an obligation to indemnify TIS
hereunder.
9.5. Entire Liability. SECTION 9 STATES THE ENTIRE LIABILITY OF TIS
WITH RESPECT TO INFRINGEMENT OF ANY THIRD PARTY INTELLECTUAL
PROPERTY RIGHTS BY THE TIS SOFTWARE AND PATENT RIGHTS.
9.6. Indemnity by IBM. IBM will defend or, at its option settle, at
its expense any legal proceeding brought against TIS or its
Subsidiaries by a third party to the extent it is based on a
claim that portions of a Bundled Product, Toolkit or IBM
Recovery Facility, other than those licensed to IBM by TIS,
infringes a patent, copyright or other intellectual property
right of a third party or misappropriates a third party trade
secret. IBM will pay all damages awarded by a court of
competent jurisdiction attributable to such claim, provided
that TIS: (i) provides notice of the claim promptly to IBM,
(ii) gives IBM control of the defense and settlement of the
claim; (iii) provides at IBM's expense reasonable assistance
in the defense or settlement thereof; provided, that if any
settlement results in any ongoing liability to, or prejudices
or detrimentally impacts TIS, and such obligation, liability,
prejudice or impact can reasonably be expected to be material,
then such settlement shall require TIS's written consent,
which consent shall not be unreasonably be withheld. TIS shall
be permitted to participate in such defense and settlement
proceedings at its own expense.
9.7. Election. Should any IBM Recovery Field Formats become the
subject of a claim of infringement for which indemnity is
provided under Section 9, IBM may elect to (i) obtain for TIS
the right to use such IBM Recovery Field Formats; or (ii)
replace or modify any such IBM Recovery Field Format so that
it becomes non-infringing while substantially retaining its
previous functionality.
9.8. Exclusive Remedy for Infringement. TIS and IBM hereby
acknowledge and agree that the Limited Indemnity set forth in
this Section 9 sets forth the total liability and the sole and
exclusive remedy of each party with respect to the other party
relating to claims of infringement of any third party
intellectual property by any materials, information, or
intellectual property licenses pursuant to this Agreement, as
well as for any breaches of this Agreement by a party of the
intellectual property-related representations and warranties
contained in Sections 8 and 9 hereof.
9.9. Limitation of Liability. Except for express undertakings to
indemnify under this Agreement:
9.9.1. Cumulative Payments. Each party's liability to the
other for claims relating to this Agreement whether
for breach or in tort, or otherwise, shall be limited
to the cumulative payments required to be made by IBM
to TIS during the term of this Agreement for the
Licensed Products related to the claims.
9.9.2. Mutual Waiver of Damages. IN NO EVENT WILL EITHER
PARTY BE LIABLE FOR ANY INDIRECT, INCIDENTAL,
SPECIAL, CONSEQUENTIAL OR PUNITIVE DAMAGES IN
CONNECTION WITH OR ARISING OUT OF THIS AGREEMENT
(INCLUDING LOSS OF PROFITS, USE, DATA, OR OTHER
ECONOMIC ADVANTAGE).
Except for KRC's that TIS operates, TIS is not liable
for the acts of any KRC or its operators.
10. TERM AND TERMINATION
10.1. Term. This Agreement shall be effective as of the Effective
Date and shall continue in full force and effect until the
expiration of the last to expire of the Patent Rights licensed
hereunder, unless sooner terminated pursuant to the provisions
of this Agreement. All licenses granted in this Agreement
shall be perpetual.
10.2. Termination. IBM may terminate the licenses of copyright and
patents granted hereunder pursuant to this Agreement at any
time by delivering written notice to TIS at least *** prior to
the Effective Date of termination. After *** TIS may terminate
this Agreement by delivering six (6) months prior written
notice to IBM in the event that IBM during the immediately
preceding ***. In addition, either party shall be entitled to
terminate any of the license rights granted pursuant to this
Agreement at any ***.
_______
*** Confidential Information has been omitted and filed separately with
the Commission.
10.3. Insolvency. In the event that any party be adjudged insolvent
or bankrupt, or upon the institution of any proceedings by or
against it seeking relief, or arrangement under any laws
relating to insolvency, or upon any assignment for the benefit
of creditors, or upon the appointment of a receiver,
liquidator or trustee of any of its property or assets, or
upon the liquidation, dissolution or winding up of its
business, then and in any such event the license rights
granted pursuant to this Agreement may forthwith be terminated
by the other party upon giving written notice thereof at any
time after such event, and upon the giving of such notice the
license rights granted pursuant to this Agreement shall
terminate forthwith.
10.4. Assignment. The Agreement may not be assigned by operation of
law or otherwise, to any entity except to a Subsidiary or a
successor entity of a party without the prior written consent
of the other party. Such consent shall not be unreasonably
withheld by the other party. Any such purported assignment
without the other party's prior written consent shall be void
and of no effect. Neither TIS or any subsequent assignee or
exclusive licensee of the Patent Rights shall assign any of
the Patent Rights or grant any exclusive licenses thereunder
unless such assignment or license grant preserves the licenses
and other rights granted to IBM and its sublicensees under
this Agreement.
10.5. Effect of Termination. Upon the expiration or termination of
the license rights granted pursuant to this Agreement, the
license rights granted pursuant to this Agreement shall cease
and terminate within *** of such termination (except as
provided below) and the remaining provisions hereof (including
without limitation the obligations to pay outstanding royalty
obligations to TIS of Section 3.1.2, the confidentiality
provisions of Section 6.3 and the obligations under Sections
2.9 and 2.10.2) shall remain in full force and effect. All
licenses and immunities granted to IBM and its Subsidiaries
for internal use, End-User Customers, Distributors, Toolkit
Licensees, KRC Licensees, and IBM Recovery Facility Licensees
and any customers thereof prior to termination shall remain in
all force and effect. When the copyright license rights
granted pursuant to this Agreement are terminated for any
reason within a period of *** from such termination, IBM shall
cease making copies of, using in any way, distributing or
licensing the TIS Software and the Licensed Products
incorporating TIS Software, excepting as to sublicenses
previously granted which have not expired and excepting as to
such copies of Licensed Products necessary to fill orders
placed with IBM prior to such expiration or termination and
IBM shall be obligated for royalty payments for such period.
IBM shall return the Master Copy to TIS as soon as practicable
after such expiration or termination and shall destroy or
deliver to TIS all copies of the TIS Software and all written
materials relating thereto.
11. MISCELLANEOUS PROVISIONS
11.1. Governing Laws; Resolution of Problems; Suits.
11.1.1. The laws of the State of N.Y. (irrespective of its
choice of law principles) shall govern the
enforceability and validity of this Agreement, the
construction of its terms, and the interpretation and
enforcement of the rights and duties of the parties
hereto.
_______
*** Confidential Information has been omitted and filed separately with
the Commission.
11.1.2. Representative. Within 30 days of the Effective Date,
each party shall designate one or more
representatives to act as liaison and agreement
coordinator ("Agreement Coordinator") for the
purposes of this Agreement. Such representatives may
change upon written notice to the other party.
11.1.3. Internal Dispute Resolution. In the event of any
problem, claim, or dispute arising from, out of, or
based upon this Agreement, except as expressly
provided for in Section 10.2, or the business
relationship between the parties, the aggrieved party
shall promptly notify the other party of the
existence of the problem, claim, or dispute, and such
other party shall promptly undertake all reasonable
efforts, including but not limited to, submitting
such problem, claim or dispute for resolution to a
Manager (as defined below) of each Agreement
Coordinator. For the purposes of this Section
"Manager" shall mean someone in the management chain
of the applicable Agreement Coordinator who is senior
to such Agreement Coordinator in terms of
responsibility, and who is familiar with the
administration of this Agreement. The Managers shall
make a good faith effort to resolve the dispute as
quickly as possible. In the event that the managers
cannot resolve such dispute within *** the matter may
at the option of either party, be submitted for
resolution to each party's executive with overall
responsibility for the subject matter in dispute.
Except as provided in Section 10.2, if the matter is
not resolved at the executive level, the parties may
then pursue any remedies available to them in law or
equity.
11.1.4. Each party agrees to *** concerning this Agreement.
11.2. Binding upon Successor and Assigns. Each and all of the
covenants, terms, provisions, and agreements contained herein
shall be binding upon, and inure to the benefit of, the
permitted successors, representatives, administrators and
permitted assigns of the parties hereto.
11.3. Severability. If any provision of this Agreement or the
application thereof to any person or circumstances shall, for
any reason and to any extent, be void or unenforceable, the
application of the remainder of this Agreement to such person
or circumstances and the application of such provision to
other persons or circumstances shall be interpreted so as best
to reasonably reflect the intent of the parties hereto. The
parties further agree to replace such void or unenforceable
provisions of this Agreement with valid and enforceable
provisions which will achieve, to the extent possible, the
economic, business and other purposes of the void or
unenforceable provisions.
11.4. Entire Agreement. This Agreement and the exhibits hereto
constitute the entire understanding and agreement of the
parties hereto with respect to the subject matter hereof and
supersede all prior and contemporaneous agreements or
understandings, inducements or conditions, express or implied,
written or oral, between the parties with respect hereto.
11.5. Counterparts. This Agreement may be executed in any number of
counterparts, each of which shall be an original as against
any party whose signature appears thereon and all of which
together shall constitute one and the same instrument. This
Agreement shall become binding when one or more counterparts
hereof, individually or taken together, shall bear the
signatures of all of the parties reflected hereon as
signatories.
11.6. Expenses. Each party shall pay its own costs and expenses
incurred with respect to the negotiation, execution and
delivery of this Agreement and the exhibits hereto. Except as
otherwise expressly provided in this Agreement, each party
shall be solely responsible for all of its costs, salaries and
other expenses incurred in connection with the performance of
its obligations hereunder, and the other party shall not have
any liability, obligation or responsibility whatsoever
therefor.
_______
*** Confidential Information has been omitted and filed separately with
the Commission.
11.7. Amendment and Waivers. Any term or provision of this Agreement
may be amended, and the observance of any term of this
Agreement may be waived (either generally or in a particular
instance and either retroactively or prospectively), only by a
written agreement signed by both parties.
11.8. No Waiver. The failure of any party to enforce any of the
provisions hereof shall not be construed to be a waiver of the
right of such party thereafter to enforce such provisions.
11.9. Other Remedies. Any and all remedies herein expressly
conferred upon a party shall be deemed cumulative and not
exclusive of any other remedy conferred hereby or by law, and
the exercise of any one remedy shall not preclude the exercise
of any other.
11.10. Notices. Whenever any party hereto desires or is required to
give any notice, demand, or request with respect to this
Agreement, each such communication shall be in writing and
shall be effective only if it is delivered by personal service
or mailed, United States certified mail, postage prepaid,
return receipt requested, addressed to a party at its
respective address set forth on page 1 hereof. Such
communications shall be effective when they are received by
the addressee thereof; but if sent by certified mail in the
manner set forth above in this Section 11.10, they shall be
effective five (5) days after being deposited in the United
States mail. Any party may change its address for such
communications by giving notice thereof to the other party in
conformity with this Section.
11.11. Construction of Agreement. This Agreement has been negotiated
by the parties hereto, shall be deemed to have been drafted by
both parties, and the language hereof shall be construed
neutrally and not for or against any party. A reference in
this Agreement to any Section shall include a reference to
every subsection the number of which begins with the number of
the Section to which reference is specifically made (e.g., a
reference to Section 2.1 shall include a reference to Section
2.1.2).
11.12. No Joint Venture. Nothing contained in this Agreement shall be
deemed or construed as creating a joint venture or partnership
between any of the parties hereto. No party is by virtue of
this Agreement authorized as an agent, employee or legal
representative of any other party. No party shall have the
power to control the activities and operations of any other
and their status is, and at all times, will continue to be
that of licensor and licensee with respect to each other. No
party shall have any power or authority to bind or commit any
other. No party shall hold itself out as having any authority
or relationship in contravention of this Section.
11.13. No Competitive Restrictions. Each party agrees that nothing in
this Agreement is intended to prohibit IBM from developing or
acquiring technology that is the same or similar to KRT
provided that IBM does not do so in breach of this Agreement
or TIS' intellectual property rights not licensed hereunder.
IBM is not obligated to announce or sell any product. IBM does
not guarantee the success of its marketing efforts.
11.14. Export Restrictions. This Agreement is expressly made subject
to any laws, regulations, orders or other restrictions on the
export from the United States of America of the Patent Rights,
the TIS Software or the Licensed Products, or of information
about such TIS Software or Licensed Products, which may be
imposed from time to time by the government of the United
States of America ("Export Control Laws"). Notwithstanding
anything contained in this Agreement to the contrary, neither
party shall export or re-export, directly or indirectly, any
Patent Rights, TIS Software or Licensed Products or
information pertaining thereto to any country for which such
government or any agency thereof requires an export license or
other governmental approval at the time of export or re-export
without first obtaining such license or approval. IBM hereby
agrees that it solely shall be responsible for its compliance
with the Export Control Laws.
11.15. Absence of Third Party Beneficiary Rights. No provisions of
this Agreement are intended nor shall be interpreted to
provide or create any third party beneficiary rights or any
other rights of any kind in any client, customer, affiliate,
shareholder, partner of any party hereto or any other person
unless specifically provided otherwise herein, and, except as
so provided, all provisions hereof shall be personal solely
between the parties to this Agreement.
11.16. Performance of Acts in Furtherance of this Agreement. Each
party shall execute, acknowledge, and deliver all such further
documents and do and perform all such other acts as shall be
reasonably necessary or appropriate to enable the other party
hereto to enjoy the rights granted to it under this Agreement.
11.17. No Other Rights Granted. No express or implied rights of any
kind are granted by TIS to IBM or to anyone else except for
those rights that are expressly set forth herein.
11.18. Meeting. At least semi-annually, during the period
commencing on the Effective Date and ending on the fifth
anniversary thereof upon the written notice by either party,
the parties will meet, at a mutually agreeable time and
location, to confidentiality discuss product trends, Licensed
Products, and other related items. The parties recognize that
similar field formats are beneficial to both parties,
therefore, the parties may discuss descriptions of field
formats and royalty and fee adjustments. Each party will bear
its own expenses regarding such meetings.
11.19. Conflicting Terms. If there is a conflict among the terms in
the various agreement documents, those of this Agreement
prevail over those of an Exhibit.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the date
indicated below:
TRUSTED INFORMATION SYSTEMS, INC.
By: /s/ Xxxxxxx X. Xxxxxx
--------------------------
Name: Xxxxxxx X. Xxxxxx
Title: President and Chief Executive Officer
Date: January 22, 1997
INTERNATIONAL BUSINESS MACHINES CORPORATION
By: /s/ X.X. Xxxxxx, Jr.
--------------------------
Name: X.X. Xxxxxx, Jr.
Title: Vice President
Date: January 24, 1997
