Exibit 10.32
[LOGO] IAT
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THE ELECTRONIC MEETING
LICENSE AGREEMENT
BETWEEN
IAT AG
Xxxxxxxxxxx 00, XX - 0000 Xxxxxxxxx-Xxxxx, Xxxxxxxxxxx
(hereinafter "IAT")
and
PROTON COMMUNICATIONS TECHNOLOGIES INC.
15 Fl., Xx.00 Xxx.0, Xxx-Xxxx Xxxx, Xxxxxx, Xxxxxx, ROC
(hereinafter "Licensee")
Whereas Licensee wishes to use certain products of IAT as defined in the Annex
(the "PRODUCTS") to evaluate, develop or produce an application based on the TMS
320 C 8X processor (the "Application");
Whereas IAT is willing to license such PRODUCTS useful for such purposes;
Whereas IAT is the (proprietary) owner of any copyright, know-how, patent,
trade xxxx, trade secret or other proprietary right necessary for the purpose
of this Agreement ("intellectual property rights") or has from its suppliers
the right to license the use of the PRODUCTS; and
Whereas the parties agree that the annex to this agreement (the "Annex") shall
be an integral part of this agreement (both collectively hereinafter the
"Agreement").
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Now, therefore, the parties agree as follows:
1. License
1.1 IAT hereby grants to Licensee a non-exclusive, non-transferable,
non-assignable license to use the PRODUCTS solely in conjunction with
systems designed exclusively for one of TMS 320 product families and on the
conditions set forth herein only for the purposes of evaluation,
development or production of the Application and demonstration of the
Application by Licensee to third parties. Licensee shall not use the
PRODUCTS for the benefit of any third party and has no right to sub-license
or distribute the PRODUCTS except as expressly provided for in this
Agreement.
1.2 Licensee may use, modify, compile, or otherwise develop as applicable, a
software program ("Modified Application Program") and/or a hardware
reference design ("Modified Hardware Reference Design"), which may be
original or derivative with respect to the PRODUCTS, for use solely in
conjunction with systems designed exclusively for one of the TMS 320
product families. Any modification made by Licensee shall be the property
of Licensee, but Licensee shall not acquire any rights in the PRODUCTS.
"Modifications" is defined as additions to the existing code or replacement
or changes to the existing code.
1.3 Licensee may use the PRODUCTS only in its premises or any other location /
place/territory as defined in the Annex.
1.4 IAT shall transmit to Licensee under the terms of this Agreement its most
recent version of the PRODUCTS which are designed for the system as defined
in the Annex. No title to, or ownership of the PRODUCTS or the information
contained in it is transferred to Licensee, and Licensee agrees that its
receipt and use shall be subject to the terms and conditions set forth in
this Agreement.
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1.5 Any and all intellectual property rights, whether registered or not, with
respect to the PRODUCTS or any part thereof remain the sole property,
right, title and interest of IAT or its suppliers. Nothing in this
Agreement shall be deemed to be a transfer of intellectual property rights.
Licensee acknowledges that it acquires only such rights of use as
explicitly granted in this Agreement.
1.6 Licensee may make one copy of the PRODUCTS for internal back-up purposes.
Licensee agrees that as a condition for obtaining its rights hereunder,
each copy of the PRODUCTS of any portion thereof or documentation therefor,
shall contain a valid copyright notice and any other proprietary notices,
including the copyright notices of IAT or IAT's suppliers, which appear on
or in the PRODUCTS and documentation delivered to Licensee hereunder or as
IAT may require from time to time, in order to protect IAT's copyright and
other ownership interests. Presence of a copyright notice does not
constitute an acknowledgment of publication. Licensee shall reproduce on
the copy of the PRODUCTS, and on all copies of the Modified Application
Program or the Modified Hardware Reference Design, all copyright notices
and any other proprietary notices exactly as and where they appear on the
PRODUCTS delivered, or as closely as possible where a change in media
precludes exact reproduction.
1.7 Licensee shall maintain any source code of the PRODUCTS as confidential,
and shall not disclose, distribute, or disseminate any such source code to
any third parties.
1.8 Subject to mandatory law, Licensee is expressly prohibited from reverse
compiling, reverse assembling, and reverse engineering any portion of the
PRODUCTS provided in object format.
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2. Compensation
For such license as deemed in art. 1.1, Licensee shall pay the compensation
in the amount and according to the terms as listed in the Annex.
3. Support and Maintenance
Except as otherwise provided for in the Annex, IAT shall have no obligation
with respect to support or maintenance of the PRODUCTS.
4. Updates etc.
Unless otherwise provided for in the Annex, nothing contained in this
Agreement shall be construed as granting or conferring any rights by
license or otherwise, expressly, impliedly, or otherwise, for any
invention, discovery or improvement (i.e. updates) made, conceived or
acquired by IAT prior or after the date of this Agreement.
5. Warranty
All PRODUCTS and information are furnished "as is" and IAT gives not
warranty, express, implied or statutory, including any implied warranty of
merchantability or fitness for a particular purpose as to such PRODUCTS or
its use by Licensee. In particular, IAT gives no warranty with respect to
the success of any developments, projects or productions made by Licensee
based on the PRODUCTS.
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6. Disclaimer and Limitation of Liability
IAT may only be held liable for any damages if and when such damages are
proved to have been caused by willful default or gross negligence of IAT.
The Licensee is self-responsible for any commercial success resulting from
the PRODUCTS.
7. Product Liability
Licensee is obligated to maintain an appropriate product liability
insurance. Licensee indemnifies IAT with respect to all claims by third
parties based on product liability. Licensee also holds IAT harmless for
any claims by third parties based on statements by the Licensee with
respect to the PRODUCTS.
8. Export
Licensee hereby agrees that it will not knowingly export or re-export,
directly or indirectly, (i) PROPRIETARY INFORMATION (technical data as
defined in the US Export Administration Regulations or by governmental
authorities) received from IAT under this Agreement, or (ii) any immediate
product, process or service directly produced by the use of such
PROPRIETARY INFORMATION, to any destination to which such export or
re-export is restricted or prohibited by US or non-US law, without
obtaining prior authorization from the competent governmental authorities
as required by those laws. This provision shall survive expiration,
termination or cancellation of this Agreement.
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9. License to Distribute
9.1 Licensee shall not distribute any Modified Application Program or Modified
Hardware Reference Design or other items based on the PRODUCTS without
first obtaining a distribution license from IAT according to art. 9.2.
9.2 Licensee shall, if so expressly provided for in the Annex, under the
conditions and upon payment of the amount listed in the Annex, be granted a
non-exclusive, worldwide license to distribute any part of the PRODUCTS
forming part of a Modified Application Program or a Modified Hardware
Reference Design. Said right to distribute shall only be for use in
conjunction with the Application.
The following terms and conditions shall apply to said license to
distribute (if any):
a) Licensee shall ensure that a valid, enforceable and written license
agreement is entered into containing the same restrictions on
disclosure of the Modified Application Program, the Modified Hardware
Reference Design and/or PRODUCTS as those contained in this Agreement
as well as a reasonable restriction on reverse compilation thereof.
b) Licensee shall ensure that all sub-licensees must reproduce on every
copy made for backup purpose, all copyright notices as they appear on
or in the PRODUCTS.
10. Secrecy and Security
10.1 Neither party shall publicly announce or publicly disclose the existence of
this Agreement or its terms and conditions, or advertise or release any
publicity regarding this Agreement, without the prior written consent of
the other party.
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10.2 Licensee will provide physical security measures for the prevention of
unauthorized access to or use of the PRODUCTS similar to those used for its
own products of similar nature. In addition, Licensee undertakes that use
of and access to the PRODUCTS will be limited to those of its employees
being in charge of the design and simulation of the Application and that
such employees have undertaken to comply with the obligations concerning
use and non-disclosure of PRODUCTS and other proprietary information
provided to Licensee under this Agreement.
10.3 Licensee agrees that it will not make or permit to be made, without IAT's
prior written consent, any copies of the PRODUCTS except as may be required
for routine system backup or for development of the Application. Licensee
shall reproduce on all such authorized copies of the PRODUCTS all copyright
notices and proprietary legends exactly as and where they appear on the
PRODUCTS delivered, or as closely as possible where a change in media
precludes exact reproduction. Licensee will not transfer the PRODUCTS, or
copies thereof, to any third party.
10.4 Licensee agrees that it will not disclose to any other person, firm or
corporation, or use except as permitted by this Agreement, PRODUCTS and any
other information received from IAT that is marked STRICTLY PRIVATE,
INTERNAL DATA, PROPRIETARY or other comparable legend ("Confidential
Information").
10.5 Information shall not be deemed Confidential Information and Licensee shall
have no obligation under this Agreement with respect to any information
which:
a) is already known to Licensee, or
b) is or becomes publicly known through no wrongful act of Licensee, or
c) is rightfully received from a third party without similar restriction
and without breach of this Agreement, or
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d) is independently developed by Licensee, or
e) is furnished to a third party by IAT without a similar restriction on
the third party's rights, or
f) is approved for release by written authorization of IAT.
11. Notices
Any notice relating to this Agreement shall be deemed given when sent by
registered mail with proof of delivery to carrier, or to the other party at
the address listed in the Annex.
12. Integration
This Agreement constitutes the entire Agreement between the parties with
respect to the subject matter hereof, and supersedes all previous
communications, representations, understandings and agreements, either oral
or written, between the parties or any official representative thereof.
This Agreement shall be modified only by an instrument in writing and
signed by duly authorized representatives of the parties.
Should the terms of the Annex be in conflict with this Agreement, the Annex
shall prevail.
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13. Term and Termination
13.1 This Agreement is concluded for a period of three (3) years and shall be
automatically extended from year to year after 3 years unless terminated as
provided herein.
13.2 IAT may, in its sole discretion, terminate this Agreement at any time in
the event of a breach by Licensee, with forty-five (45) days prior written
notice from IAT, and failure to cure by Licensee within that forty-five
(45) day period, or if one of IAT's suppliers terminates an agreement
relevant for this Agreement.
13.3 After three (3) years, either party may, in its sole discretion, terminate
this Agreement at any time with thirty (30) days prior written notice.
13.4 Upon termination, Licensee shall transfer to IAT all PRODUCTS and
information received and cease to use such PRODUCTS and information.
14. Non-Competition Clause
During the validity of this Agreement, Licensee shall not produce or sell
any items competing with the PRODUCTS. Licensee shall in particularly not
use the information received under this Agreement for the productions, use
of or sale of competing items.
In each case of violation of this clause Licensee is obligated to pay a
contractual penalty of US $ 50'000.-. Payment of the contractual penalty
shall not relieve Licensee from the non-competition duty as agreed herein;
claims for further damages are reserved.
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15. Governing Law and Jurisdiction
15.1 This Agreement shall be governed by the laws of Switzerland.
15.2 Any dispute arising out of or in connection with this Agreement or any
future agreement related hereto shall be exclusively settled by the
competent court at the domicile of IAT.
IAT has, however, the right to bring any claim before the competent courts
at the domicile of Licensee.
In witness whereof, the parties agree that the effective date of this Agreement
shall be:
IAT: Licensee:
[SEAL] Chinese Seal
By: /s/ X. Xxxx By: /s/ Yin-Wu Chen
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Name: Xx. X. Xxxx Name: Xx. Xxx-Xx Chen
Title: CEO / Title: President
Date: Date: July 2, 1997
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ENCLOSURE: ANNEX
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[LOGO] IAT
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THE ELECTRONIC MEETING
ANNEX
to
LICENSE AGREEMENT
dated 24. June 1997
concluded between
IAT AG, Xxxxxxx. 00, XX-0000 Xxxxxxxxx-Xxxxx
and
XXXXXX Xxxxxxxxxxxxxx Xxxxxxxxxxxx Xxx., Xxxxxx, Xxxxxx
0. Compensation and Payment Terms
Upfront: 16 000,- USD
Royalties: 0.008% of Upfront per piece
1.2 Payment:
Upfront: within 30 days after delivery (already delivered by Texas
Instruments)
Royalties: payable after delivery of target product by licensee, the
delivered quantity has to be reported and paid quarterly to IAT
2. Product, System and Location
2.1 Products Licensed by Licensee.
H.324 Development Release for TMS320C8x
2.2 Target Product of Licensee.
Stand alone videophone based on TMS320C8x
H.324 Library in Object Code for TMS320C8x (Modified Application Program)
3. Support
For support IAT will charge, and Licensee agrees to pay, a support fee of
USD 150.- (exclusive VAT) per hour.
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4. Updates, Upgrades
Not covered.
5. License to Distribute
5.1 Licensee is entitled to distribute the Target Product of Licensee as
defined in this ANNEX, Item 2.2 subject to the provisions of art. 9.2 and
subject to 1. Compensation and Payment Terms of this ANNEX.
5.2 In case of termination of the License Agreement as defined in art. 13.3,
Licensee is still entitled to distribute the Target Product of Licensee as
defined in this ANNEX, Item 2.2. subject to the provisions of art. 9.2 and
subject to 1.
6. Sublicensing of Protons modified source code
Proton has the right to sublicense the modified source code of Proton,
containing the original H.324 source code of TI/IAT to their customers.
Proton has to report each sublicensing immediately to IAT. For each
sublicense, Proton (or sublicensee) has to pay to IAT: Upfront: 14 000,-
USD, within 30 days after delivery through Proton. Royalties: 0.008% of
Upfront per piece, payable after delivery of target product of sublicensee.
The delivered quantity has to be reported and paid quarterly to IAT.
7. Notices
Licensee: [SEAL] Chinese Seal IAT:
PROTON Communications IAT AG
Taipei, Taiwan Xxxxxxxxx-Xxxxx, Switzerland
Xx. Xxx-Xx Xxxx / President Xx. X. Xxxx / CEO
Place, Date 7/2/1997 Taipei July 2, 1997
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/s/ Yin-Wu Chen /s/ X. Xxxx
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Licensee: IAT:
