5.11 Co-Development AgreementTHIS CO-DEVELOPMENT AGREEMENT is between __________, a/n ________, U.S.A.
corporation with a principal address of ____________ (US-CO), and __________,
a/n ________ corporation, with a principal address of ____________ (FOREIGN-CO).
Unless the context otherwise requires, all references to US-CO or FOREIGN-CO
will include their respective Subsidiaries as hereinafter defined.
W I T N E S S E T H:
WHEREAS, US-CO and FOREIGN-CO desire to establish a ______ co-development
relationship in order to improve technology development efficiency, with a goal
of developing a common ______ technology that could be used by each company for
manufacturing its own _______ and ______-based products; and
WHEREAS, during the first phase of the co-development effort US-CO and
FOREIGN-CO desire to transfer to each other certain ______ technology to
establish a common ______ technology base to facilitate co-development of ______
technology useful for [new product]; and WHEREAS, US-CO and FOREIGN-CO desire to cooperate in identifying and
defining specific areas in which further ______ technology development may be
useful and jointly pursue these areas and share the results obtained therefrom; NOW THEREFORE, in consideration of the mutual covenants contained herein
and other good and valuable consideration, the parties hereto hereby agree as follows:
1. Purpose.
1.1. The goal of the co-development effort is the development of a common
______ technology that either party may use for production of their respective
______-based products. Phase I of the co-development effort (the Phase I Co-
Development Program) is focused on the [new product], and includes co-
development and sharing of technology related thereto. The Phase I Co-
Development Program also includes transfer of [old product] technology to
facilitate this purpose. The intent is that, in order to achieve joint
development of the [new product], all relevant [old product] technology of each
party will be available to the other party to establish the broadest common
______ technology base to pursue co-development of [new product]-related
technology. Such technology would include, for example, manufacturing know-how,
testing and reliability information, visits to production facilities, and
technical consultation, for which the burden of disclosure is reasonable. It is
not intended by this Agreement to grant automatically a second source right on
______-based products to the other party.
1.2. [Newer product] technology is excluded in the Phase I Co-Development
Program except for certain information exchange, such as: (1) external
specifications; (2) peripheral devices; and (3) basic design features to realize
the target outcome.
2. Definitions.
2.1. "______" will mean [product technology description].
2.2. "Technology" will mean information relevant to the development and
production of ______, including, without limitation, any of the following items
that have been developed by or for, and are under the control of, US-CO or
FOREIGN-CO and that are not restricted by any third party for a disclosure and
grant of license to the other party:
2.2.1. Processes, devices, circuits, packages, designs, layouts,
tooling, software, reliability engineering and tests, relating to the
development and manufacture of _______.
2.2.2. Technology related to utilizing ______ in [product's general
application, such as "electronic equipment," "nitrogen production" or
"pharmaceutical manufacture"].
2.2.3. Information and know-how relating to manufacture of ______.
2.2.4. Information relating to the design of equipment for
manufacturing _______, as mutually agreed upon on a case-by-case basis.
2.2.5. In case both US-CO and FOREIGN-CO agree that its application
to basic [new product] features is necessary, [supplemental technology]
technology relating to _______.
2.3. "Proprietary Technology" will mean unpublished Technology developed
primarily by or for one party independent of a co-development effort with the
other party, and which is not Program Technology.
2.4. "[Old product] Proprietary Technology" will mean Proprietary
Technology which is relevant to the development and production of [old product].
2.5. "[New product] Proprietary Technology" will mean Proprietary
Technology which may be relevant to the development and production of [new
product], including [old product] Proprietary Technology which is relevant to
and necessary for the development and production of [new product].
2.6. "Program Technology" will mean Technology developed by or for the one
party or both parties pursuant to such a co-development effort approved by the
Operating Committee. Technology developed or disclosed by either party on or
after ____________ will be presumed to have been developed pursuant to a co-
development effort. This presumption may be rebutted by evidence that the
Technology was developed primarily by one party independently, and not pursuant
to a co-development effort.
2.7. "Patent Rights" will mean all rights, title and interests in all
patents and applications for patents, in all patents of addition, in all
invention certificates, and in all industrial designs, industrial models and
utility models (including any reissue, division, continuation or continuation-
in-part application) throughout the world now or hereafter filed.
2.8. "Joint Patent Rights" will mean all Patent Rights to Program
Technology when the claimed invention was made by inventors of both US-CO and
FOREIGN-CO.
2.9. "Trade Secret Rights" will mean all rights, title and interests in
all trade secret rights or equivalent rights arising under the law of any
jurisdiction.
2.10. "Copyright Interests" will mean all rights, title and interests in
all copyright rights, and all other literary property or author's rights, and
all rights, title or interests in all copyrights and copyrighted interests.
2.11. "Mask Work Rights" will mean all rights, title and interests in all
mask works, including those mask works that may be registered pursuant to local law.2.12. "Intellectual Property Rights" will mean Patent Rights, Trade Secret
Rights, Copyright Interests and Mask Work Rights.
2.13. "Sole Intellectual Property Rights" will mean:
2.13.1. All Patent Rights to Program Technology invented solely by
the personnel of one party to this Agreement. whether such Program Technology
resulted from a co-development effort or not (Sole Patent Rights to Program
Technology); and
2.13.2. All Intellectual Property Rights to Proprietary Technology.
2.14. "Joint Intellectual Property Rights" will mean all Intellectual Property
Rights to Program Technology except Patent Rights to Program Technology.
2.15. "Subsidiary" will mean any corporation, company or other entity more than
fifty percent (50%) of the outstanding shares or stock entitled to vote for the
election of directors (other than any shares or stock whose voting rights are
subject to restriction) of which is owned or controlled by either party hereto,
directly or indirectly, now or hereafter during the term of this Agreement. Any
corporation, company or other entity which would at any time be a Subsidiary of
FOREIGN-CO or US-CO by reason of the foregoing will be considered a Subsidiary
for the purposes of this Agreement only so long as the ownership or control,
directly or indirectly, by US-CO or FOREIGN-CO meets the conditions set forth
herein. Any Subsidiary of FOREIGN-CO or US-CO that ceases to be a Subsidiary
will cease use of any Technology it has received pursuant to this Agreement and
will return all such Technology to the parties in a manner satisfactory to both parties.
2.16. "Effective Date" will mean the date on which the last of the
following conditions will have occurred in form and substance satisfactory to
both US-CO and FOREIGN-CO:
2.16.1. Receipt of all appropriate clearances, approvals and
licenses from _____________ government authorities that will enable US-CO and
FOREIGN-CO to perform under this Agreement; and
2.16.2. Receipt of all appropriate clearances, approvals and
licenses from United States government authorities that will enable US-CO and
FOREIGN-CO to perform under this Agreement.
3. Management.
3.1. The Phase I Co-Development Program will be managed by the Executive
Committee. Two additional committees will assist in implementation of the co-
development projects, the Operating Committee and the Intellectual Property
Committee. The composition and duties of these Committees are set forth below.
Legal counsel of the parties may attend Committee meetings, as appropriate.
3.2. Executive Committee. 3.2.1. Composition and Term.
(a) The Executive Committee will be comprised of eight
members, four of which are to be appointed by each party to this Phase I Co-
Development Program. Each member of the Executive Committee will serve a one-
year term, which can be renewed. Each Committee member will have the right to
designate an alternate to attend Committee meetings and vote in his absence. All
members (or designated alternates) of the Executive Committee must be officers
or employees of the parties or their Subsidiaries.(b) The Executive Committee will select one of its members as
chairman. One of the members of the Executive Committee will be designated a
secretary. The secretary and the chairman will be from different parties to this
Agreement, and the chairmanship will alternate from one party to the other on an
annual basis. (c) Each chairman will serve a one-year term. The Chairman
will be responsible for coordinating all projects of the Phase I Co-Development
Program and for coordinating all administrative tasks. (d) Committees reporting to the Executive Committee will
include the Operating Committee and the Intellectual Property Committee. The
Executive Committee will have the power to create additional committees. (e) The Executive Committee will meet at least twice each
year.
3.2.2. Duties. (a) The Executive Committee will manage the Phase I Co-
Development Program and will review, resolve or approve various matters referred
to it pursuant to this Agreement.
(b) The Executive Committee will approve any changes to the
procedures set forth in Section 3.4.2 that the Intellectual Property Committee
may propose from time to time during the Agreement.
3.3. Operating Committee.
3.3.1. Composition and Term. The Operating Committee will be
comprised of six members, three of whom will be appointed from each party by the
Executive Committee of this Phase I Co-Development Program. The members of the
Operating Committee will select a chairman who will be a member from the party
to which the chairman of the Executive Committee does not belong.
The chairmanship of the Operating Committee will alternate between parties on an
annual basis. Each member of the Operating Committee will serve a two-year term,
which can be renewed. Each Committee member will have the right to designate an
alternate to attend Committee meetings and vote in his absence. All members (or
designated alternates) of the Operating Committee will be officers or employees
of the parties or their Subsidiaries.
3.3.2. Duties. The duties of the Operating Committee are to:
(a) Coordinate the disclosure of Technology comprehended by
Sections 4 and 11 hereunder;
(b) Define co-development projects and establish work groups
within ninety (90) days from the Effective Date and submit proposals relating
thereto to the Executive Committee for review;
(c) Revise and update project definitions during the Agreement
as necessary (the outline draft of such co-development projects is attached as
Exhibit A); (d) Report periodically the progress of the work groups to the
Executive Committee on at least a calendar-year quarterly basis;
(e) Report to the Intellectual Property Committee on at least
a calendar-year quarterly basis all invention disclosures relating to Program
Technology, including all invention disclosures that either party believes were
invented, created or authored solely by personnel of that party; and (f) Approve or deny requests to publish articles or other
information about Program Technology or any aspect of the Phase I Co-Development Program.
3.4. Intellectual Property Committee. 3.4.1. Composition and Term. The Intellectual Property Committee
will be comprised of six members, three of which will be appointed from each
party by the Executive Committee of this Phase I Co-Development Program. The
members of the Intellectual Property Committee will select a chairman who will
be a member from the party to which the chairman of the Executive Committee does
not belong. The chairmanship of the Intellectual Property Committee will
alternate between parties on an annual basis. Each member of the Intellectual
Property Committee will serve a two-year term, which can be renewed. Each
committee member will have the right to designate an alternate to participate in
committee meetings and vote in his absence. All members (or designated
alternates) of the Intellectual Property Committee will be officers or employees
of the parties or their Subsidiaries.
3.4.2. Duties. The duties of the Intellectual Property Committee
will be as follows:
(a) Review each report of invention disclosures made by the
Operating Committee. The Intellectual Property Committee will determine
inventorship for each invention disclosure. If an invention includes at least
one inventor from each of FOREIGN-CO and US-CO, that invention will constitute a
Joint Patent Right. For invention disclosures that are determined to constitute
Joint Patent Rights, the Intellectual Property Committee will recommend
disposition as follows:
(i) File a patent application;
(ii) Recommend foreign countries for filing within the
one-year period after the application is originally filed;
(iii) Do not file a patent application;
(iv) Retain as a joint trade secret; or
(v) Re-review within three months if further information
is required to make a decision.
(b) For invention disclosures on which the Intellectual
Property Committee recommends filing a patent application, the following
procedures will apply:
(i) The invention will be filed first in the country in
which the invention was made. If in ____________, FOREIGN-CO will have primary
responsibility to prepare and file the patent application, providing US-CO with
a draft for review and comment prior to filing. FOREIGN-CO will have primary
responsibility for prosecution of the patent application but will keep US-CO
informed with copies of all correspondence with the patent office and will
provide US-CO the opportunity to comment on all documents before they are filed.
US-CO and FOREIGN-CO will jointly decide on whether and when to request
examination. All costs associated with filing, prosecution and maintenance fees
will be borne by FOREIGN-CO.
(ii) FOREIGN-CO will endeavor to file appropriate patent
applications in ____________ within six months of the recommendation by the
Intellectual Property Committee, and if they are unable to do so, will advise
US-CO to give US-CO the chance to prepare and file the application.
(iii) If it is desired to discontinue prosecution of a
patent application, or discontinue paying maintenance fees, or otherwise permit
the patent or patent application to be abandoned, the Intellectual Property
Committee will be promptly advised and the other party given the chance to
continue the patent or application in force. In such case, such other party will
be the sole owner and the party deciding to discontinue its effort will receive
a royalty-free, paid up license.(iv) For inventions made in ____________, if the
invention is filed in other countries pursuant to the recommendation of the
Intellectual Property Committee, FOREIGN-CO will have the primary responsibility
for filing and prosecuting and will bear associated costs. (v) If the invention is made in the U.S., US-CO will
have primary responsibility to prepare and file the patent application, with US-
CO's obligations being co-extensive with those of FOREIGN-CO outlined in
3.4.2.(b)(i) through 3.4.2.(b)(iv) above. (vi) Neither US-CO nor FOREIGN-CO will be required to
file a patent application on invention disclosures recommended to be filed by
the Intellectual Property Committee. However, if one party has the primary
responsibility to file and elects not to file, it will promptly notify the other
party in order to give such party a chance to file. If that party files, it will
have sole ownership of the patent(s), and the party that declined to file will
receive a royalty-free, paid up license.
(vii) FOREIGN-CO and US-CO agree to cooperate and sign
the necessary legal documents to file the Joint Patent Rights, and provide
reasonable assistance to the other party in preparation of the patent
application and prosecution thereof.
(viii) The parties contemplate that the expenses and
efforts required to implement this Section 3.4 will be approximately equal. In
the event it appears that one party's expenses and efforts significantly exceed
the other's, and the parties are unable to reach an accommodation informally,
the party with the higher proportionate share of such expenses may bring the
imbalance to the attention of the Executive Committee for appropriate
resolution.
(c) At the written request of either party, review the
ownership of Technology, or develop guidelines to determine the ownership of
Technology and refer disputed cases to the Executive Committee. (d) Upon the written request of either party, review Joint
Patent Rights and propose an appropriate licensing framework for review and
approval by the Executive Committee. The licensing framework will establish the
terms and conditions under which either party may unilaterally grant licenses
under Joint Patent Rights to third parties. The framework will identify the
Joint Patent Rights which may be licensed, the royalty provisions, the method of
royalty sharing between US-CO and FOREIGN-CO and a requirement that, if any
license grant by one party includes a license grant-back from the licensee, the
licensee will be obligated to grant the other party a license or sublicense
under equivalent terms. Upon unanimous approval of the licensing framework by
the Executive Committee, either party may unilaterally grant licenses to third
parties so long as such licenses conform to the framework. At the time one party
decides to initiate license discussions with any third party pursuant to such
framework, such party will immediately notify the other party of the negotiation
and identify the potential licensee.
(e) Develop invention disclosure and documentation
requirements for use by employees of both parties who participate in the co-
development work groups.
3.5. Quorum and Decision. For the Executive Committee, a quorum will
exist if three members from each party are present. For the Operating and
Intellectual Property Committees, a quorum will exist if two members from each
party are present. The unanimous approval of all the members present at any
meeting will be required for any decision of each Committee.3.6. Time and Place of Meetings. The initial meeting of the Executive
Committee will be held within six (6) months from the Effective Date of this
Agreement at a mutually agreed upon time and location. The Operating Committee
and Intellectual Property Committee will meet at mutually agreed upon times and places.
3.7. Documentation. Each Committee will establish procedures for the
documentation of all decisions.
4. Disclosure of Technology.
4.1. [New Product] Proprietary Technology. US-CO and FOREIGN-CO agree to
disclose to each other their [New Product] Proprietary Technology in accordance
with schedules and procedures established by the Operating Committee. Such
disclosure will include, to achieve the [new product] joint development, access
to all relevant [old product] and [new product] production facilities under
control of either the ________ Division of FOREIGN-CO or the ________ Group of
US-CO, including visits by qualified engineers and technicians. Such visits will
include the opportunity to observe and ask questions and receive technical
consultation from qualified personnel. The frequency and duration of such visits
will be mutually agreed upon, will be reasonable, and both FOREIGN-CO and US-CO
agree to exert their best efforts to coordinate and accommodate such technical
exchanges and to ensure that fully qualified personnel are involved. Such
disclosure will also include copies of all reasonably available documents,
drawings or other explanatory information; translation from English to
__________, or vice versa, will not be required.
4.2. Program Technology. Each party will keep the other informed of
matters relating to Program Technology. For this purpose, the Operating
Committee will develop reporting requirements for Program Technology that both
parties will endeavor to comply with.
4.3. Products and Other Technology. By separate mutual agreement, the
parties may agree to exchange or disclose ______ technology not covered by this
Agreement and/or to grant a right to second-source the other party's products.
5. Independent Effort. Both parties represent that their efforts to manufacture
and market ______-based products will be totally independent, and each party
will compete with the other as each unilaterally determines. Further, both
parties represent that neither party will provide the other pricing information
nor provide or otherwise exchange customer and market information.
6. Ownership License.
6.1. Sole Ownership. The parties will retain their separate ownership
interests in (1) Proprietary Technology; and (2) Sole Intellectual Property
Rights. Should either party claim that Proprietary Technology of the other party
is also owned by the receiving party, upon written request, the Intellectual
Property Committee will review whether the Technology is separately owned by
both parties or owned by the initially disclosing party. The Intellectual
Property Committee will recommend a disposition of the claim to the Executive
Committee.
6.2. Joint Ownership. Joint Intellectual Property Rights, Program
Technology and Joint Patent Rights will be jointly owned by the parties, with
each party having an undivided equal ownership interest, and may be used by
either party without restriction, subject to any confidentiality obligation that
may apply and further subject to the restriction that Joint Patent Rights can be
only licensed pursuant to a licensing framework approved in accordance with
Section 3.3.2. Ownership of Joint Patent Rights will not be allocated based on
relative contribution, but will be deemed to be ownership of an undivided one-
half interest by both FOREIGN-CO and US-CO.6.3. License. Each party hereby grants to the other party a non-exclusive,
royalty-free, worldwide, nontransferable license to use its Proprietary
Technology and sole Intellectual Property Rights for any and all products,
including ______ and other ______ [technology-related] products and services.
However, neither party will have the right to grant sublicenses or have products
made pursuant to such Proprietary Technology and Sole Intellectual Property
Rights, except that either party will have the right to have products made for
it under Sole Patent Rights to Program Technology. Notwithstanding the
foregoing, either party may ask the other party to grant a license to sublicense
or have products made under such other party's Proprietary Technology and Sole
Intellectual Property Rights incorporated in Technology of such requesting party
subject to the terms and conditions to be mutually agreed upon on a case-by-case basis.
6.4. Inability to License. It is recognized that US-CO, FOREIGN-CO or
their Subsidiaries may have contracted or may hereafter contract with a third
party who is not a party to this Agreement, such as a national or other company
or sovereign government, governmental agency or intergovernmental authority, to
do work solely financed by such third party and to assign to such third party
its/their right to grant, or may now or hereafter be restrained by such third
party from granting, licenses (other than by a parent to its Subsidiaries or by
a Subsidiary to its parent or a Subsidiary of the parent) under Intellectual
Property Rights arising out of such work. The inability, for such a reason, of
any of the parties to this Agreement, or any one of their Subsidiaries, to grant
the licenses herein agreed to be granted will not be considered a breach of this
Agreement. If such contract results in a significant reduction of resources
allocated by one party to the Phase I Co-Development Program, and the other
party judges such reduction of efforts and such inability to license to be
materially detrimental to the purpose of the Phase I Co-Development Program, the
other party may terminate this Agreement at any time by giving written notice to
that effect to the other party.
7. Effect on Existing Cross License. US-CO and FOREIGN-CO agree to amend the
prior patent license agreement between them dated ___________ (the "Prior Patent
License") so that royalties for ______ payable under the Prior Patent License
will be waived for [old product] and higher-capacity ______ made, used, leased,
sold or otherwise disposed of by either party subsequent to ___________;
provided that, if this Agreement is not renewed by the parties after its initial
three-year term, or if this Agreement is canceled at any time by either party
other than under Section 6.4 hereof or for material breach by the other party,
then the obligation to pay royalties on [old product] and higher-capacity ______
under the Prior Patent License will be reinstated as of the date this Agreement
terminates.
8. Term and Termination.
8.1. The term of this Agreement will commence on the Effective Date and
continue for three years. At the end of each three-year term this Agreement may
be renewed for an additional three-year term subject to the agreement between
the parties hereto on the terms and conditions for such extended period, which
agreement should be reached at least six months before the expiration date of
this Agreement.8.2. Either party may terminate this Agreement for convenience any time
during the three-year term, provided that the terminating party gives at least
one year's prior, written notice of termination, unless otherwise provided for
in this Agreement. This Agreement may be terminated by either party for failure
to obtain necessary government approvals, as set forth in Section 15. Any
termination of this Agreement will not create any liability to the other party
other than the obligation to maintain confidentiality of the other party's
Technology received by it under this Agreement which obligation survives the
termination of this Agreement.
8.3. In the event of any termination of this Agreement, notwithstanding
Section 7 hereof, all licenses under any Patent Rights based on or claiming any
Program Technology and/or [new product] Proprietary Technology, as well as
Intellectual Property Rights except Patent Rights, granted to either party under
this Agreement, that are in force on the date of such termination, will survive
royalty-free and continue for the life of such respective rights. All Joint
Patent Rights which will be developed, applied for or granted to either party
after the termination of this Agreement, which are based upon and claim any
Program Technology, will be subject to the licensing framework contemplated by
Section 3.4.2.(d).
9. Costs. Each party will be liable for its own costs, expenses and liabilities
incurred under this Agreement except as may otherwise be agreed upon with
respect to joint development projects. Each party will be responsible for the
actions of its employees under the Agreement, and any claims, actions,
liabilities or damages relating thereto.
10. Plant Visits. Each party agrees to abide by the other party's rules and
procedures for visitors when visiting the other party's plants. Plant visits
will be coordinated through the Operating Committee.
11. Nondisclosure.
11.1. "Confidential Information" will mean any information disclosed by
one party to the other pursuant to this Agreement which is in written, graphic,
machine-readable or other tangible form and is marked "Confidential,"
"Proprietary" or in some other manner to indicate its confidential nature. Any
Technology to be disclosed under Section 4 of this Agreement will be assumed to
be "Confidential Information," unless both parties clearly agree otherwise.
Confidential Information may also include oral information disclosed by one
party to the other pursuant to this Agreement; provided that, such information
is designated as confidential at the time of disclosure and is reduced to
writing by the disclosing party within a reasonable time (not to exceed thirty
days) after its oral disclosure, and such writing is marked in a manner to
indicate its confidential nature and delivered to the receiving party.
11.2. For a period of five years from the receipt thereof, or such longer
period as the Intellectual Property Committee may designate for specific
Technology, neither party will knowingly publish or disseminate to any third
party, except as expressly permitted by this Agreement (e.g., subcontract of
Program Technology), any of the other party's Confidential Information. Each
page of each document which contains such information will be stamped with the
confidential legend of the party transferring the documents. Notwithstanding any
contrary provision of this Agreement, Confidential Information will not include
information which is (1) published or otherwise made available to the public
other than by breach of this Agreement; (2) rightfully received by a party from
a third party not obligated to maintain the confidentiality thereof; (3)
approved for release by the party designating the information as Confidential
Information; (4) known to the party receiving the Confidential Information prior
to its first receipt of the same from the other party; (5) independently
developed by the party receiving the Confidential Information; (6) disclosed to
a third party by the party designating the information as Confidential
Information, without confidentiality restrictions; or (7) disclosed pursuant to
the order or requirement of a court, administrative agency or other governmental body.11.3. It is agreed by the parties hereto that each party will designate
one or more "Documentation Managers." The primary responsibility of the
Documentation Managers for each party will be to ensure that the other party's
Documentation Managers are informed of and receive in confidence information to
be exchanged in accordance with this Agreement. Documentation Managers for each
party will also (1) monitor within their company the distribution of
Confidential Information received from the other party in order to ensure that
only those who have a need to know such information receive it; and (2)
otherwise assist in preventing the unauthorized disclosure of all Confidential
Information.
11.4. Prior to any disclosure of Confidential Information, each party will
ensure that its employees and third parties who are authorized to have access to
such information have entered into a written agreement sufficient to comply with
the provisions of this Section 11.
12. Taxes. Neither party will be liable for taxes of any kind imposed on the
other party, except as may be mutually agreed upon with respect to co-
development projects.
13. Warranty.
13.1. Warranty of Rights. Each party warrants that it has all right, title
and interest to its Proprietary Technology, or that it has the right to grant to
the receiving party the licenses granted herein. No warranty is given by either
party as to the performance of any Technology. The receiving party will be
responsible for its use of Proprietary Technology.
13.2. Validity of Patents; Prosecution of Infringement. Nothing contained
in this Agreement will be construed as:
13.2.1. A warranty or representation by any of the parties to this
Agreement as to the validity or scope of any Patent Rights; or
13.2.2. An agreement to bring or prosecute actions or suits against
third parties for infringement or conferring any right to bring or prosecute
actions or suits against third parties for infringement.
13.3. Infringement of Patents Held by Others. Nothing in this Agreement
will be construed as a warranty or representation by either party hereto that
any Proprietary Technology that the other party may use for any product or
services anywhere in the world will be free from infringement of any patent or
other similar right of any third party. Neither party hereto will be required
otherwise to protect, indemnify or save harmless the other party hereto against,
or be liable to the other party for, any liabilities, losses, expenses or
damages that may be suffered or incurred by the other party as a result of such
infringement or allegation thereof by any third party. Notwithstanding the
foregoing, both parties will cooperate with and provide reasonable assistance to
each other in the defense of any claim or suit alleging such infringement.13.4. Product Liability. Neither party will, by reason of being a party to
this Agreement, bear any responsibility or liability with respect to any claims
or suits against the other party by third parties nor will either party hereto
be under any obligation, by reason of being a party to this Agreement, to
indemnify or hold harmless the other party for any liabilities, losses, expenses
or damages incurred or suffered by the other party resulting from, or caused by,
any defect or alleged defect of any products or services in which Proprietary
Technology of such party has been utilized or applied.
13.5. Liability to or for Employees. Neither party hereto will be
responsible for death, damage, injury or loss suffered or incurred during visits
to its plants or other facilities by any engineer, technician or other personnel
in the employ of the other party dispatched pursuant to this Agreement, except
for death, damage, injury or loss resulting from the willful or grossly
negligent act or omission of such party, its agent or employees. Further,
neither party will be responsible for any costs, expenses or damages suffered or
incurred by the other hereto, or any claim, judgment or award against such other
party, or the defense thereof, arising out of any actions, assistance or
services of its employees hereunder, unless resulting from its own willful or
grossly negligent act.
13.6. Internal Approvals. Each party hereby represents that it has
obtained the necessary internal approvals required to enter into this Agreement.
14. Export Control.
14.1. In recognition of [FOREIGN-CO home jurisdiction], U.S. and other
export control laws, neither party will knowingly export or re-export, directly
or indirectly, (1) any technical data (as defined in the U.S. Export
Administration Regulations) received from the other party under this Agreement;
or (2) any immediate product, process, technical data or service directly
produced by the use of such technical data, to any destination to which such
export or re-export is restricted or prohibited by [FOREIGN-CO home
jurisdiction], U.S. or other relevant law, without first obtaining prior
authorization from the competent government authorities as required by those laws.
14.2. Each party further agrees to obtain, at its own expense, any
required export license or other documentation prior to its export or re-export
of any product or technical data acquired from the other party under this
Agreement. Accordingly, the parties will not sell, export, re-export, transfer,
divert or otherwise dispose of any such product or technical data directly or
indirectly to any person, firm or entity, or country or countries, prohibited by
the laws or regulations of [FOREIGN-CO home jurisdiction], the United States or
other applicable laws. This export control clause will survive termination or cancellation of
this Agreement.
15. Government Approvals.
15.1. Both parties agree to seek any necessary government approvals for
the Phase I Co-Development Program. Neither party will be in breach of this
agreement resulting from delays in getting government approvals.15.2. At any time during the term of this Agreement, should any government
or agency thereof take any action against or make recommendation to the parties
hereto or any of them requiring directly or indirectly, formally or informally,
alteration or modification of any term or condition of this Agreement or of the
performance of the parties hereunder in a manner which is material and adverse
to one party, and if the adversely affected party makes written request to the
other party within sixty (60) days from said action or recommendation of the
government or government agency, the parties hereto will enter into good faith
negotiations with the objective of restructuring the relationship between the
parties hereto in a manner such that the adverse effect of said alteration or
modification of this Agreement will be minimized. If the parties hereto cannot
reach an acceptable arrangement within two months from the date of dispatch of
said written request, or within such longer period of time as mutually agreed
upon, either party will have the right to terminate this Agreement forthwith in
its entirety by giving written notice to that effect to the other party.
16. General Terms.
16.1. Force Majeure. Neither party will be liable for delays in its
performance or failure to perform in whole or in part the terms of this
Agreement caused by the occurrence of any contingency beyond its control,
including, without limitation, labor dispute, strike, labor shortage, war or act
of war, insurrection, sabotage, riot or civil commotion, act of a public enemy,
epidemic, accident, fire, storm, earthquake, explosion, flood, drought or other
act of God, act of any governmental authority, judicial action, transportation
embargo, or failure or delay in transportation, short or reduced supply of fuel
or raw material, technical failure where such party has exercised ordinary care
in the prevention thereof, and any such delay or failure will not be considered
a breach of this Agreement.
16.2. Notices. All notices required or permitted to be given hereunder
will be in writing and will be valid and sufficient if dispatched by registered
airmail, postage prepaid, in any post office in the United States or in
____________, as the case may be, addressed as follows:
If to US-CO: ________________________________ ________________________________
________________________________
If to FOREIGN-CO: ____________________________ ____________________________
____________________________
Either party may change its address by a notice given to the other party
in the manner set forth above.
16.3. Governing Law. This Agreement and matters connected with the
performance hereof will be construed, interpreted, applied and governed in all
respects in accordance with the laws of the State of ________, United States of
America, without giving effect to the principles of conflict of laws thereof.
16.4. Patent Filing. Neither party nor any Subsidiary thereof will be
required by anything contained in this Agreement to file in any country an
application for patent on any invention, or to secure any patent, or once having
filed an application for patent or obtained a patent, to maintain the patent
application or patent in force.16.5. Dispute Resolution. In the event a dispute arises with respect to
this Agreement which is not resolved by the Executive Committee, FOREIGN-CO
reserves the right to petition the ____________, ______ Group of US-CO and US-CO
reserves the right to petition the ____________, ______ Division of FOREIGN-CO
overseeing semiconductor products. If the parties cannot settle the dispute
within sixty days after the date of such petition, either party may terminate
this Agreement forthwith by a prior, written notice to the other.
16.6. Language. This Agreement is in the English language only, which
language will be controlling in all respects, and all versions hereof in any
other language will be for accommodation only and will not be binding upon the
parties hereto. All communications to be made or given pursuant to this
Agreement will be in the English language or __________ language.
16.7. Assignment of Rights. This Agreement and the licenses granted herein
will inure to the benefit of the parties hereto, and, insofar as is expressly
provided for herein, to Subsidiaries of the parties hereto. Neither party hereto
nor any Subsidiary will assign or transfer any of its rights, privileges or
obligations hereunder without the prior, written consent of the other party
hereto. Any unauthorized assignment or transfer of this Agreement or rights or
obligations hereunder will be void ab initio.
16.8. Publicity. Each party hereto will keep the terms of this Agreement
confidential and will not now or hereafter divulge the terms of this Agreement
or any part thereof to any third party except:
16.8.1. With the prior written consent of the other party; or
16.8.2. To any governmental body having jurisdiction to call for
such disclosure; or
16.8.3. As otherwise may be required by law; or
16.8.4. To legal counsel representing either party.
The parties will mutually agree upon a joint press release, to be issued
following execution of this Agreement.
16.9. Severability. Should any clause, sentence or paragraph of this
Agreement judicially be declared to be invalid, unenforceable or void, such
decision will not have the effect of invalidating or voiding the remainder of
this Agreement. The parties hereby agree that the remaining parts of the
Agreement will have the same force and effect as if such invalid part or parts
had not been included herein, and the parties will enter into good faith
negotiations with the objective of restructuring the relationship between them
in a manner which will minimize the adverse effect of such declaration of
invalidity or unenforceability.
16.10. Entire Agreement. This Agreement sets forth the entire agreement
and understanding between the parties as to the subject matter of this Agreement
and merges all prior discussions between them, and neither of the parties will
be bound by any modification of this Agreement, other than as expressly provided
in this Agreement or as duly set forth on or subsequent to the date hereof in
writing and signed by a duly authorized representative of the party to be bound thereby.
IN WITNESS WHEREOF, the parties have caused their duly authorized officers
to execute this Agreement, on the dates below indicated. [US-CO]: [FOREIGN-CO]:
Signed: _____________________ Signed: ________________ Printed name: _______________ Printed name: __________
Title: ______________________ Title: _________________Dated: _____________________ Dated: _________________
EXHIBIT A
SYNOPSIS OF [NEW PRODUCT] CO-DEVELOPMENT PROGRAM
(EXAMPLE FROM SEMICONDUCTOR INDUSTRY)
1. Technology exchange and technical discussions are carried out primarily
through the scheduled meetings and document exchange, regarding the [new
product] technology development. The technology areas include: 1.1. Product definition such as functionality specifications, performance,
package outline, including ______ application technology in electronic
equipment.
1.2. Product design such as basic design architecture, circuit design,
layout design and computer simulation of design.
1.3. Device technology, structure and performance.
1.4. Process technology such as lithography, etching, insulating film
formation, conductive film formation, impurity doping and diffusion, annealing
and defect control, silicon crystal/wafer application including epitaxial wafer
and specific process flows to manufacture [new product].
1.5. Clean process technology such as clean room technology,
cleaning/rinsing and other foreign particle/contamination control technology.
1.6. Package technology such as package design, related materials and
package manufacturing process.
1.7. Functionally characterization and testing.
1.8. Process control and measurement technology.
1.9. Reliability technology such as soft error immunity, device stability,
interconnect reliability and package reliability.
1.10. Manufacturing know-how relating to [new product].
1.11. Manufacturing equipment technology as related to the above process
technology and manufacturing know-how. Development design and manufacturing of
equipment may be included on a case-by-case basis.
2. [Old product] technology defined in a similar manner as above is also
exchanged whenever it is necessary to do so for the purpose of above [new
product] technology development.
3. [Supplemental technology] technologies defined in similar manner as above are
also exchanged, when it is agreed by both parties to be necessary to do so, for
the [new product] technology development.
4. The technology exchange described above may be jointly defined and executed,
either jointly or independently, according to the specific program definitions.
5. All necessary technical documents and drawings, in writing or in magnetic
tape/disc form, and in agreed-upon cases, software programs, samples in wafer,
die and/or packaged form, photomasks, materials and jigs/fixtures may be
exchanged in order to execute the above activities, whenever it is necessary and
appropriate to do so for the purpose of this Co-Development Agreement.
6. Engineers and engineering staff will visit each other's facilities to execute
the above activities. The number of engineers and frequency of visits are
determined by the Operating Committee.
7. The schedule of the above activities will be jointly discussed and defined by
the Operating Committee.
8. This synopsis of the Co-Development Program may be changed/updated by the
Operating Committee.
