INTELLECTUAL PROPERTY
LICENSE AGREEMENT
THIS AGREEMENT, made as of this 28th day of August, 1996 by and between AMERICAN
SILICON PRODUCTS, INC., a Rhode Island corporation ("Licensor") and
INTERNATIONAL SEMICONDUCTOR PRODUCTS PTE LTD., a company incorporated in
Singapore ("Licensee")
W I T N E S E T H:
WHEREAS, Licensee has been formed by Semiconductor Packaging Materials
Co., Inc., the parent of Licensor, and Semiconductor Alliance Pte Ltd. pursuant
to a Joint Venture Agreement dated August 28, 1996 (the "Joint Venture
Agreement") to engage in the business of polishing and reclamation of
semiconductor wafers and the brokering of semiconductor wafers used in the
electronic industry (the "Business");
WHEREAS, Licensor is engaged in the Business in the United States and
elsewhere and possesses valuable industrial, marketing and commercial
information regarding the conduct of the Business to be conducted by Licensee
including, without limitation, drawings, formulae, test reports, operating and
test procedures, instruction manuals, tables of operating conditions,
administration procedures, marketing methods and procedures, advertising copy
and computer software programs relating to and/or used in connection with the
Business (the "Licensor's Wafer Technology");
WHEREAS, Licensee desires to obtain a license to use the Wafer
Technology in the countries listed in Schedule 1 annexed hereto (the
"Territories") and Licensor is willing to grant such a license to Licensee, upon
the terms and conditions hereinafter set forth; and
WHEREAS, capitalized terms not otherwise defined herein shall have the
meanings ascribed to them in the Joint Venture Agreement.
NOW, THEREFORE, in consideration of the mutual promises and covenants
contained herein and for other good and valuable consideration, the receipt and
legal sufficiency of which is hereby acknowledged, Licensee and Licensor agree
as follows:
SECTION 1 - GRANT
1.1 Licensor hereby grants Licensee an exclusive license in the Territories to
use Licensor's Wafer Technology to carry on its Business. Except as
provided in subsection 1.2 below, Licensee may not sublicense Licensor's
Wafer Technology without first obtaining the written consent of Licensor.
1.2 The provisions of Section 1.1 above notwithstanding, (i) Licensor and SPM
may use Licensor's Wafer Technology to the extent that they are conducting
business in the Territories on or before the date on which Licensee's
facility in Singapore commences commercial production and (ii) a Proposing
Party may require Licensee to grant a non-exclusive sublicense (but
without the right to sublicense) of Licensor's Wafer Technology licensed to
Licensee hereunder and to Licensee's Wafer Technology (defined in Section
1.3 hereof) to a Relevant Investment Entity, but only for use in such
country or countries in the Territories in which such Relevant Investment
Entity establishes a facility which uses Licensor's Wafer Technology and
Licensee's Wafer Technology.
1.3 (a) Licensor shall permit representatives of Licensee upon reasonable
notice to visit Licensor's silicon wafer reclamation facility in Rhode
Island during regular business hours and shall provide at Licensee's
request copies of any and all written materials included in Licensor's
Wafer Technology and shall answer all reasonable questions concerning
Licensor's Wafer Technology, provided that Licensor may restrict such
visits as to duration and number of people as it reasonably determines is
necessary for the orderly transfer of the Wafer Technology given the
operating requirements of Licensor. All out-of-pocket costs and expenses
incurred by Licensor in transferring Licensor's Wafer Technology to
Licensee shall be borne by Licensee.
(b) Unless otherwise agreed by Licensor, all such visits shall be completed
within six (6) months from the date hereof and the total number of
visitor-days shall not exceed thirty (30) days. Licensor shall not be
required to create any manuals or other written information regarding the
operation of Licensor's facility or Licensor's Wafer Technology for the
purpose of providing the same to Licensee.
(c) Licensor represents that Licensor's Wafer Technology disclosed or to be
disclosed by Licensee hereunder is or will be, to the best of Licensor's
knowledge and belief, accurate (provided always that the Licensor will
promptly advise Licensee of any significant errors which subsequently come
to its attention) with respect to the information disclosed to Licensee
hereunder. However, Licensee acknowledges that due to differences in the
facility operated by Licensor and the facility to be equipped and operated
by Licensee that there is no guaranty that Licensor's Wafer Technology will
be able to be used without modification by Licensee. All information
provided to Licensee under this Section or otherwise pursuant to this
Agreement whether orally or in writing shall be deemed
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confidential information except only to the extent such information is or
becomes publically available without fault of the Licensee.
SECTION 2 - CROSS-LICENSING
2.1 Any and all Knowhow and Intellectual Property Rights throughout the world
resulting from any work carried out exclusively by the Licensee or relating
to an improvement to the products produced or processes employed by
Licensee for the purpose of carrying on the Business which are exclusively
generated by Licensee ("Licensee's Wafer Technology") shall belong
exclusively to Licensee. Licensee does hereby grant to Licensor or any
successor owner of Licensor's Wafer Technology an irrevocable non-exclusive
worldwide license to Licensee's Wafer Technology (whether or not patentable
or copyrightable) free of royalty or other payment and without limit of
time, but excluding the right to grant sublicenses without first obtaining
the written consent of Licensee.
2.2 Licensee shall promptly notify Licensor of the development of Licensee's
Wafer Technology and shall provide such reasonable assistance as may be
necessary to enable Licensor to effectively use such Licensee's Wafer
Technology as Licensor may request. All out-of-pocket expenses incurred by
Licensee in transferring Licensee's Wafer Technology to Licensor shall be
borne by Licensor.
2.3 The provisions of Sections 1.3(a) and (c), 4.2(a), (b) and (c) and 5 hereof
shall apply to Licensee and Licensor with respect to the cross-licensing of
Licensee Wafer Technology mutatis mutandis.
SECTION 3 - ROYALTIES
3.1 Licensee shall pay to Licensor a royalty on the net sales of Licensee as
determined by Licensee's Auditors ("Net Sales") as follows:
(i) with effect from the date hereof to December 31, 1997, one-half of one
(0.5%) percent of Net Sales; and
(ii) with effect from January 1, 1998, one (1%) percent of Net Sales;
provided that when the aggregate amount of royalties accrues hereunder
to a sum equivalent to One Million (U.S.$1,000,000) Dollars, this
license shall be royalty free thereafter. The amount of royalty due
hereunder shall be computed annually commencing with the period ending
December 31, 1996 and shall be converted to U.S.$ from S$ at the
exchange rate published by the Asian Wall Street Journal on December
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31 of the year in question. The determination of Net Sales by the
Auditors of Licensee shall be conclusive and binding upon the parties.
Licensee shall provide to Licensor an annual statement of Licensee's
Net Sales certified by its Auditors.
3.2 Royalties which accrue hereunder shall be due and payable without interest
in sixteen (16) equal quarter-annual installments commencing on the first
day of the month only after:
(i) all loans owing by Licensee to its shareholders have been paid in
full; and
(ii) receipt of written notice from Licensor requesting Licensee to
commence making payments of the accrued royalty.
SECTION 4 - TERMS AND DEFAULT
4.1 Subject to earlier termination by reason of default of Licensee, this
Agreement shall commence as the date hereof and shall continue without
limit of time.
4.2 (a) If Licensee fails to perform its obligations hereunder or to comply
with the terms and conditions of this Agreement, Licensor shall be at
liberty to issue to the Licensee a notice specifying the breach or
default and, in the case of a breach or default capable of remedy,
stipulating a period of not less than thirty (30) days during which
such breach or default shall be remedied. For the purpose of this
subsection 4.2(a), a breach or default shall be considered capable of
remedy if the Licensee can comply with the term or condition in
question in all respects other than as to the time of performance. If
a breach or default capable of remedy is not timely cured or if a
breach or default not capable of remedy shall occur, then the Licensor
may terminate this Agreement forthwith.
(b) In the event that:
(i) the Licensee shall become insolvent; or
(ii) a resolution is passed for the winding up of Licensee; or
(iii) a proceeding has been instituted seeking a declaration that the
Licensee is bankrupt or insolvent or seeking bankruptcy,
arrangement or composition with creditors, liquidation or the
appointment of a trustee, receiver or liquidator
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or analogous procedure under any applicable law and such
proceedings remain undismissed and unstayed for a period of
sixty (60) days or are consented to by Licensee,
then a breach of this Agreement shall be deemed to have been committed by
Licensee and this Agreement shall terminate without any further action upon the
part of Licensor.
(c) Termination of this Agreement by Licensor shall be without
prejudice to its other rights or remedies hereunder with respect
to damages accrued prior to termination.
(d) All unpaid royalties shall, notwithstanding the provisions of
Section 3.2 to the contrary, become immediately due and payable
in full upon termination of this Agreement.
SECTION 5 - LICENSOR'S REPRESENTATIONS; INDEMNIFICATION
5.1 Licensor represents that it has the power, right and authority to grant
this license to Licensee and that Licensor has not received any notice nor
does it have any knowledge that Licensor's Wafer Technology infringes the
intellectual property rights or knowhow of third parties and no claims of
such infringement have been made or are the subject of litigation actual or
threatened.
5.2 Except as specifically set forth in Section 5.1 above, Licensor makes no
representation or warranty with respect to Licensor's Wafer Technology. In
no event shall Licensor be liable for lost profits or consequential damages
even if advised of the possibility thereof.
5.3 Licensee shall indemnify and hold Licensor harmless with respect to any
claims asserted by third parties against Licensor including legal fees
incurred by Licensor in defending against such claim arising out of the use
by Licensee of Licensor's Wafer Technology except for claims arising out of
a breach of the representations set forth in Section 5.1 and as to such
claims Licensor shall indemnify and hold Licensee harmless with respect
thereto including legal fees incurred by Licensee in defending against such
claims.
SECTION 6 - COMMUNICATIONS CONFIDENTIAL
6.1 All communications between Licensor and Licensee and all information and
other material supplied to or received by either of them from the other
which is either marked "confidential" or is by its nature intended to be
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exclusively for the knowledge of the recipient alone, or to be used by the
recipient only for the benefit of the other or in furtherance of the
purposes of this Agreement or the Joint Venture Agreement, including,
without limitation, Licensor's Wafer Technology or Licensee's Wafer
Technology, any information concerning the business transactions or the
financial arrangements between Licensor and Licensee, , or of any person
with whom either of them is in a confidential relationship with regard to
the matter in question coming to the knowledge of the recipient shall be
kept confidential by the recipient and shall be used by the recipient
solely and exclusively for the purposes of this Agreement unless disclosure
is required by law or unless or until either party can reasonably
demonstrate that it is in the public domain through no act or default on
the part of the recipient, its servants and/or agents, whereupon, to the
extent that it is public, this obligation shall cease. In the event either
party is served with legal process requiring it to disclose any such
confidential information it shall promptly notify the other party hereto
and shall assist the other party in preventing or restricting such
disclosure.
6.2 The parties shall indemnify each other from and against any loss, damages,
charges, costs and expenses of whatever nature (including legal costs on a
full indemnity basis) suffered or incurred by the other arising from the
breach of that party of any provision of this Section or the unauthorized
use or disclosure of any confidential information by any director,
employee, agent, shareholder or Related Party of that party.
6.3 The parties shall take all reasonable steps to minimize the risk of
disclosure of confidential information, by ensuring that only their
directors and employees whose duties will require them to possess any of
such information shall have access thereto, and that they shall be
instructed to treat the same as confidential. The parties shall in addition
procure that such of its employees whose duties will require them to
possess, or have access to, confidential information, shall sign
confidentially agreements with it respecting the confidentiality of such
information.
6.4 The obligations contained in this Section shall endure, even after the
termination of this Agreement, without limit in point of time except and
until any confidential information enters the public domain as set out
above.
SECTION 7 - GENERAL PROVISIONS
(a) Each party acknowledges to the other that it has not entered into this
Agreement in reliance upon any warranties,
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representations or assurances (whether express or implied and whether
written or oral) other than those contained in this Agreement.
(b) The parties hereto agree and declare that this Agreement constitutes the
entire agreement concerning the subject matter hereof and supersedes all
earlier agreements concerning the same.
(c) This Agreement may not be altered, modified or amended unless such
alteration, modification or amendment is in writing and signed by the
parties to this Agreement nor, except as otherwise specifically set forth
herein, may this Agreement be terminated except by a writing signed by the
parties to this Agreement; and no waiver of any breach, condition,
provision or term of this Agreement on any one occasion shall be deemed to
be a waiver of any subsequent breach, condition, provision or term of this
agreement on any other occasion whether of like or different nature.
(d) This Agreement shall be governed by and interpreted in accordance with the
laws of the State of New York applicable to agreements executed in and to
be performed entirely within the State of New York without giving effect to
the principles of conflict of laws thereof.
(e) (i) The captions set forth in this Agreement are for convenience only and
shall not be considered as part of this Agreement or as in any way
limiting or amplifying the terms and provisions hereof.
(ii) This Agreement shall be construed according to its fair meaning as if
prepared jointly by the parties hereto.
(iii) Each section, subsection and lesser section of this Agreement
constitutes a separate and distinct undertaking, covenant and/or
provision hereof.
(iv) If any provision of this Agreement is held invalid, such invalidity
shall not affect the other provisions hereof which can be given
effect without the invalid provisions, and, to this end, the
provisions of this Agreement are intended and shall be deemed
severable. Any provision of this Agreement which is prohibited or
unenforceable in any jurisdiction shall, as to such jurisdiction, be
ineffective to the extent of such prohibition or unenforceability
without invalidating the remaining provisions hereof, and any such
prohibition or unenforceability in any jurisdiction shall not
invalidate or render unenforceable such provision in any other
jurisdiction. To the extent permitted by applicable law, the parties
hereby waive
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any provision of law which render any provision of this Agreement
prohibited or unenforceable in any way. In the event any such
provision is found to be unlawful or otherwise unenforceable, the
parties hereto agree to negotiate in good faith to modify the void or
unenforceable provision, but only to the extent necessary to make
such provision valid and enforceable having full regard for all
applicable laws and the interests and purposes of the parties in
entering into this Agreement. In the event the parties cannot agree
upon such modification then such dispute shall be submitted to
expedited arbitration pursuant to Section 7(j) hereof.
(v) This Agreement may be executed in counterparts, each of which shall
be deemed an original, and all of which shall constitute but one and
the same instrument which may be sufficiently evidenced by one
counterpart.
(f) (i) In the event that a change, occurring after the date first set forth
above, in the governmental laws and regulations to which either party
is subject requires such party to alter its performance under this
Agreement in any material respect or in the event that performance
by one of the parties is substantially hindered or prevented by force
majeure such as Acts of God, strikes, failure of suppliers to perform
or other acts beyond the reasonable control of the party effected
thereby, such party shall give immediate written notice to the other
party specifying the manner in which such performance is to be
altered and the reasons for such alteration.
(ii) No later than thirty (30) days after receipt of written notice
pursuant to Section 7(f)(i) the party receiving such notice shall,
upon written notice to the other party to this Agreement, be entitled
to an equitable adjustment of its rights and obligations under this
Agreement. In the event the parties cannot agree on such equitable
adjustment, then such dispute shall be submitted to expedited
arbitration pursuant to the provisions of Section 7(j) hereof.
(g) This Agreement shall inure to the benefit of and be binding upon the
parties hereto and their respective successors and assigns; provided,
however, that no party may make any assignment of this Agreement or any
interest therein or sublicense its rights hereunder (except as specifically
provided above) by operation of law or otherwise, without the prior written
consent of the other party except if a party desires to assign this
Agreement to a Related Party, such consent shall not be unreasonably
withheld and provided
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further that Licensor may assign this Agreement without the consent of
Licensee to any entity which acquires Licensor's Wafer Technology.
(h) Each party hereto shall bear its own legal and other costs in connection
with the preparation and negotiation of this Agreement.
(i) Nothing herein will create an agency relationship or a partnership
relationship between the parties, and neither party shall be entitled
to legally bind the other with respect to any obligation other than as
expressly set forth in this Agreement, which is entered into for the
limited purposes described herein.
(j) The parties agree to arbitrate any and all claims, controversies or
disputes arising under or out of this Agreement or relating in any way
thereto. All such claims, controversies or disputes shall be submitted to
arbitration in the City of New York, State of New York, to three (3)
arbitrators designated under and pursuant to the Rules of the American
Arbitration Association, and the arbitration shall be heard under the
auspices of said Association and subject to its rules. The arbitrators
shall have the power to award costs and counsel fees. The parties consent
to the jurisdiction of the Courts of the State of New York located in the
County of New York or the United States District Court for the Southern
District of New York with respect to any and all proceedings relating to
any such arbitration, and further agree that any and all process and
notices of motion or applications in relation to any such arbitration may
be served upon a party as provided in Section 7(k) hereof. Such service may
be accomplished either within or without the State of New York, and such
notice shall be given of all applications and hearings as is provided by
the laws of the State of New York. The award of the arbitrators shall be
final and binding upon the parties and judgment thereon may be entered as
provided by the laws of the State of New York. The foregoing
notwithstanding, either party may apply to any court of competent
jurisdiction for an injunction pending the award of the arbitrators.
(k) All notices, demands or other communications required or permitted to be
given or made hereunder shall be in writing and delivered personally or by
overseas courier or sent by prepaid registered post (by air-mail if to or
from an address outside Singapore) with recorded delivery, or by facsimile
transmission addressed to the intended recipient thereof at its address or
at its facsimile number set out in this Agreement (or to such other address
or facsimile number as a party to this Agreement may from time to time duly
notify the others in writing). Any such notice, demand or
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communication shall be deemed to have been served (if delivered personally
or given or made by facsimile) immediately or (if given or made by letter
or by overseas courier) 96 hours after posting or delivery to the courier
or (if made or given by air-mail) ten days after posting and in proving the
same it shall be sufficient to show that the envelope containing the same
was duly addressed, stamped and posted. The addresses and facsimile numbers
of the parties hereto for the purpose of this Agreement are:
American Silicon Products, Inc.
c/o Semiconductor Packaging Materials Co., Inc.
000 Xxxxxxx Xxxxxx
Xxxxxxxxxx, Xxx Xxxx 00000
X.X.X.
Facsimile Number: (000) 000-0000
Attention: President
International Semiconductor Products Pte Ltd
000 Xxxxxx Xxxx #00-00/00
Xxxxxxxxx 000000
Facsimile Number: 3385633
Attention: Managing Director
(l) No remedy conferred by any of the provisions of this Agreement is intended
to be exclusive of any other remedy which is otherwise available at law, in
equity, by statute or otherwise, and each and every other remedy shall be
cumulative and shall be in addition to every other remedy given hereunder
or now or hereafter existing at law, in equity, by statute or otherwise.
The election of any one or more of such remedies by either of the parties
shall not constitute a waiver by such party of the right to pursue any
other available remedies.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the year
and date first above written.
INTERNATIONAL SEMICONDUCTOR AMERICAN SILICON PRODUCTS,
PRODUCTS PTE LTD INC.
By: ___________________________ By: _________________________
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SCHEDULE 1
THE TERRITORIES
Territories currently constituting:
1. Bangladesh, People's Republic of
2. Bhutan
3. Brunei Darussalam Negara
4. Cambodia, People's Republic of
6. Hong Kong
7. India, Republic of
8. Xxxxxxxxx, Xxxxxxxx xx
0. Xxxxx, Xxxxxxxxxx Xxxxxx'x Xxxxxxxx xx (Xxxxx Xxxxx)
10. Korea, Republic of (South Korea)
11. Laos, People's Democratic Republic
12. Malaysia
13. Pakistan, Islamic Republic of
14. Philippines, Republic of
15. Xxxxxxxxx, Xxxxxxxx xx
00. Xxx Xxxxx, Democratic Socialist Republic of
17. Taiwan (Republic of China)
18. Thailand, Kingdom of
19. Vietnam, Socialist Republic of
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