IP Rights. (a) Part 2.8(a) of the Disclosure Schedule sets forth a complete list, along with the jurisdiction and applicable registration or serial number, of all patents, registered marks or trade dress, registered copyrights, registered mask works, registered designs, and registered domain names, along with all pending applications to issue or register the same, owned by the Company or any Subsidiary (the “Registered IP”). The Company or one of its Subsidiaries is the sole and exclusive owner of all Registered IP and all Company IP, free of all liens and security interests (other than Permitted Encumbrances). Neither the Company nor any of its Subsidiaries has granted any exclusive license to any such Registered IP or Company IP to any other Person (other than licenses which have expired, have been terminated or are no longer in effect for any other reason). The Registered IP that is issued is valid, subsisting and enforceable and (to the Knowledge of the Company), the Registered IP that is registered but not yet issued is valid, subsisting and enforceable, and, to the Knowledge of the Company as of the date of this Agreement, no action is threatened in writing or pending challenging the validity or enforceability of any Registered IP that is issued or registered. To the Knowledge of the Company, no third party has infringed or misappropriated, or is infringing or misappropriating, any material IP Right of the Company or any Subsidiary. (b) The Company and each of its Subsidiaries has the right and operational ability to exploit all IP Rights necessary to enable the Company and its Subsidiaries to conduct their business substantially in the manner in which their business is currently being conducted. Neither the Company nor any Subsidiary has infringed, improperly disclosed or misappropriated the IP Rights of any third party. Neither the Company nor any Subsidiary has been the subject of any suit, arbitration or administrative proceeding since January 1, 2007 alleging, or received any other written notices from any third party since January 1, 2007: (i) alleging that the Company or any Subsidiary has infringed, improperly disclosed, misappropriated, converted or otherwise damaged the IP Rights of any third party; or (ii) inviting or demanding that the Company or a Subsidiary take a license in order to avoid the future infringement of IP Rights of a third party. (c) Neither the Company nor any Subsidiary has entered into, except in the ordinary course of business under standard forms of the Company’s or its Subsidiaries’ Contracts made available to Parent, any written agreement to indemnify, defend or hold harmless any third party for or against any infringement, misappropriation, or other conflict with the IP Rights of any third party. There are no suits or actions pending or, to the Knowledge of the Company, threatened against the Company or any Subsidiary in which it is alleged that the Company or any Subsidiary has infringed, misappropriated or improperly disclosed the IP Rights of any third party. (d) The Company and its Subsidiaries have taken and are taking the following steps, to the extent that such steps are commercially reasonable and necessary to establish, perfect, and defend their ownership of Registered IP and Company IP or their right to use licensed third party IP Rights: (i) using appropriate patent, trademark and copyright designations on products and in marketing materials; (ii) complying with all legal requirements and all filings, payments, and other actions required to be made or taken to maintain each item of Registered IP in full force and effect; (iii) requiring all employees and contractors who have invented inventions covered by patents owned by the Company or Subsidiary, or were involved in the
Appears in 1 contract
IP Rights. (a) Part 2.8(aSection 3.7(a) of the Seller Disclosure Schedule sets forth a true and complete list, along with list as of the jurisdiction and applicable registration or serial number, date hereof of all patents(i) patents and patent applications (published or unpublished), registered marks or trade dress(ii) trademark registrations and applications, registered copyrights, registered mask works, registered designs, and registered (iii) domain names, along with all pending applications and (iv) copyright registrations and applications, in each case, that are, or will be after giving effect to issue or register the sameReorganization, owned or purported to be owned by an Acquired Company in any jurisdiction in the world. An Acquired Company is, or any Subsidiary (will be after giving effect to the “Registered IP”). The Company or one of its Subsidiaries is Reorganization, the sole and exclusive beneficial and, to the extent applicable, record owner of all Registered of the Owned IP Rights set forth on or required to be set forth on Section 3.7(a) or Section 3.7(e)(i) of the Seller Disclosure Schedule (for clarity, excluding (i) any Software that is owned, as between an Acquired Company and all a third party, exclusively by a third party and incorporated or embedded in any such Company IPSoftware, (ii) PlantPredict and (iii) PlantDesign, which are not Owned IP Rights), free and clear of all liens and security interests Liens (other than Permitted Encumbrances). Neither the Company nor any of its Subsidiaries has granted any exclusive license to any such Registered IP or Company IP to any other Person (other than licenses which have expired, have been terminated or are no longer in effect for any other reason). The Registered IP that is issued is valid, subsisting and enforceable and (to the Knowledge of the Company), the Registered IP that is registered but not yet issued is valid, subsisting and enforceable, Liens) and, to the Knowledge of the Company as of the date of this Agreementhereof, no action is threatened in writing all Owned IP Rights set forth on or pending challenging the validity or enforceability of any Registered IP that is issued or registered. To the Knowledge required to be set forth on Section 3.7(a) of the CompanySeller Disclosure Schedule are in effect and subsisting, no third party has infringed or misappropriatedand to Seller’s Knowledge, or is infringing or misappropriatingvalid in each case, any except as would not be material IP Right of to the Company or any SubsidiaryFS Development Platform and the Acquired Companies, taken as a whole.
(b) The Company Except as would not be material to the FS Development Platform and each the Acquired Companies, taken as a whole, (i) neither the conduct of its Subsidiaries the business of the Acquired Companies as currently conducted nor the conduct of the FS Development Platform as currently conducted infringes, misappropriates or otherwise violates, and has not in the right and operational ability to exploit all last three (3) years infringed, misappropriated or otherwise violated, any IP Rights necessary owned by any other Person; (ii) to enable the Company and its Subsidiaries to conduct their business substantially Seller’s Knowledge, no Person is infringing, misappropriating or otherwise violating, or in the manner in which their business is currently being conducted. Neither the Company nor any Subsidiary last three (3) years has infringed, improperly disclosed misappropriated or misappropriated otherwise violated, any Owned IP Rights; (iii) there is no Claim initiated by any other Person pending or, to Seller’s Knowledge, threatened in writing concerning the foregoing matters (including any invitation to license or demand to refrain from using any IP Rights of any third party. Neither Person); and (iv) no Owned IP Rights are subject to any outstanding challenge with any Governmental Authority or any outstanding written challenge from any other Person regarding the Company nor any Subsidiary has been the subject of any suit, arbitration validity or administrative proceeding since January 1, 2007 allegingenforceability thereof, or received any other written notices from Order restricting the use thereof, or that will restrict the use thereof after giving effect to the Reorganization, by the Acquired Companies, or restricting the licensing thereof, or that will restrict the licensing thereof after giving effect to the Reorganization, by the Acquired Companies to any third party since January 1, 2007: (i) alleging that the Company or any Subsidiary has infringed, improperly disclosed, misappropriated, converted or otherwise damaged the IP Rights of any third party; or (ii) inviting or demanding that the Company or a Subsidiary take a license in order to avoid the future infringement of IP Rights of a third partyPerson.
(c) Neither Seller and its Affiliates have taken reasonable measures to protect and maintain the confidentiality of all trade secrets and confidential information used or held for use in, and material to, the FS Development Platform, including any such personally identifiable information and the source code for all Company nor Software. To Seller’s Knowledge, no trade secret or confidential information included in the Owned IP Rights has been disclosed to or accessed by any Subsidiary has entered intothird party, except in the ordinary course pursuant to written and valid non-disclosure obligations (or other valid non-disclosure obligations or fiduciary duties of business under standard forms of the Company’s or its Subsidiaries’ Contracts made available to Parentattorneys, any written agreement to indemnify, defend or hold harmless any third party for or against any infringement, misappropriationaccountants, or other conflict with the IP Rights of any third party. There are no suits or actions pending oradvisors) that, to Seller’s Knowledge, have not been breached, in each case, except as would not be material to the Knowledge of FS Development Platform and the CompanyAcquired Companies, threatened against the Company or any Subsidiary in which it is alleged that the Company or any Subsidiary has infringed, misappropriated or improperly disclosed the IP Rights of any third partytaken as a whole.
(d) The Company and Each Person who has participated in the conception, creation, or development of any IP Rights on behalf of Seller or its Subsidiaries have taken and Affiliates with respect to any Owned IP Rights or IP Rights owned or purported to be owned by Seller or its Affiliates, in each case, which are taking the following steps, material to the extent that FS Development Platform has executed a valid and enforceable written agreement transferring (or has otherwise transferred, by operation of law or otherwise) the entire right, title and interest of such steps are commercially reasonable Person therein to Seller or the applicable Affiliate. To Seller’s Knowledge, no such Person is in material breach under any such agreement.
(e) Section 3.7(e) of the Seller Disclosure Schedule sets forth, as of the date hereof, a true and necessary to establish, perfect, and defend their ownership complete list of Registered IP and Company IP or their right to use licensed third party IP Rights:
(i) using appropriate patent, trademark Company Software material to the FS Development Platform and copyright designations on products and in marketing materials; (ii) complying material Software that is owned by any third party and is incorporated or embedded in such Company Software (excluding PlantPredict). Seller and its Affiliates have in their possession all source code and documentation related to the Company Software owned or purported to be owned by Seller or its Affiliates that is material to the FS Development Platform to enable a Software developer of reasonable skill and experience (together with the services, knowledge-transfer and assistance to be provided by Seller and its Affiliates pursuant to the Transition Services Agreement or otherwise prior to or on Closing) to modify, debug, enhance, compile and support such Company Software as reasonably required for the FS Development Platform as currently conducted. None of the Company Software (excluding PlantPredict) that is material to the FS Development Platform is subject to any condition or other requirement that such Company Software be licensed pursuant to an Open Source Software license or that the source code for any such Company Software be delivered, disclosed, licensed or otherwise made available to any other Person. No escrow agents or other Persons other than the Acquired Companies possess any current or contingent rights of any kind to receive or obtain a license to any source code included in the Company Software (excluding PlantPredict).
(f) Seller and its Affiliates have taken the reasonable security, disaster recovery and backup measures necessary to protect the security and integrity of the Company IT Assets and the sensitive data stored or contained therein or transmitted thereby, except as would not be material to the FS Development Platform and the Acquired Companies, taken as a whole. The Owned Company IT Assets are, to Seller’s Knowledge, free from material bugs, viruses, malicious code or similar contaminants. The PlantDesign Software is, to Seller’s Knowledge, free from material viruses, malicious code or similar contaminants. In the past three (3) years, there has not been a material disruption to the operations of the FS Development Platform due to the inadequacy of, or unsatisfactory operation or performance of, the Company IT Assets, other than any such inadequacy or unsatisfactory operation or performance that has been resolved in all material respects. In the past three (3) years, (i) the Company IT Assets have not suffered a material malfunction or failure that has caused a material disruption to the operations of the FS Development Platform, or (ii) to Seller’s Knowledge, suffered a security breach or other unauthorized access that is (or that otherwise exposed any unresolved security vulnerability that would reasonably be expected to be) material to the FS Development Platform.
(g) Except as would not be material to the FS Development Platform and the Acquired Companies, taken as a whole, Seller and its Affiliates have, with respect to the FS Development Platform, maintained and complied with its internal and external privacy and data security policies and with all legal requirements applicable Laws related to privacy and all filingsdata security.
(h) No university, paymentsmilitary, educational institution, research center, Governmental Authority or other similar organization (each, an “R&D Sponsor”) has funded or sponsored research and development (whether directly or through performance of such research and development by a student or employee of any R&D Sponsor) in connection with the FS Development Platform conducted by Seller or its Affiliates (including any Acquired Company) or, to Seller’s Knowledge, by any other actions required Person (with respect to any Owned IP Rights acquired by Seller or its Affiliates from such Person), which has resulted in any valid claim of right to, ownership of or other Lien (other than any Permitted Lien) on any Owned IP Rights, in each case, except as would not be made materially adverse to the FS Development Platform. Seller and its Affiliates have not participated in any standards-setting activities or taken joined or been a member of any standards setting, IP Rights sharing or Open Source Software projects or organizations that would adversely affect the proprietary nature of any Owned IP Rights material to maintain each item of Registered IP in full force and effect; (iii) requiring all employees and contractors who have invented inventions covered by patents owned by the Company or SubsidiaryFS Development Platform, or were involved in therestrict the ability of the Acquired Companies to enforce, license or exclude others from using any Owned IP Rights material to the FS Development Platform.
Appears in 1 contract
IP Rights. (a) Part 2.8(aExcept as would not have and would not reasonably be expected to have, individually or in the aggregate, a Material Adverse Effect, the Acquired Entities own, or have valid rights to use or license, all IP Rights used in the conduct of their businesses substantially in the manner in which they are currently being conducted.
(b) Except as would not have and would not reasonably be expected to have, individually or in the aggregate, a Material Adverse Effect, (i) Section 2.6(b) of the Company Disclosure Schedule sets forth a complete listforth, along with as of the jurisdiction and applicable registration date of this Agreement, all registered or serial numberapplied for trademarks, of all service marks, patents, registered marks or trade dress, registered copyrights, registered mask works, registered designs, and registered domain names, along with all pending applications names owned or purported to issue or register the same, be owned by the Company or any Subsidiary (the “Registered IP”). The Company or one of and its Subsidiaries is (excluding, for the sole and exclusive owner avoidance of all Registered IP and all Company IPdoubt, free of all liens and security interests (other than Permitted Encumbrances). Neither the Company nor any of its Subsidiaries has granted any exclusive license to any such Registered IP registrations or Company IP to any other Person (other than licenses which applications that have expiredlapsed, have expired or been terminated or abandoned), and such registrations and applications are no longer in effect for any other reason). The Registered IP that is issued is valid, subsisting and enforceable and (unexpired and, to the Knowledge of the Company), the Registered IP that is registered but not yet issued is valid, subsisting such registrations are valid and enforceable; (ii) the conduct of the businesses of the Company and its Subsidiaries, including any product or service marketed or sold by the Company and its Subsidiaries, has not since June 30, 2016 infringed or misappropriated, and does not infringe or misappropriate, any IP Rights owned by any other Person; (iii) to the Knowledge of the Company, no other Person is infringing or misappropriating any IP Rights owned by the Company and its Subsidiaries and (iv) the Company and its Subsidiaries exclusively own all of the IP Rights owned or purported to be owned by them free and clear of any Liens, other than Permitted Liens. Except as would not have and would not reasonably be expected to have, individually or in the aggregate, a Material Adverse Effect, (x) the Company and its Subsidiaries have taken commercially reasonable steps to protect their IP Rights and to maintain the confidentiality of their trade secrets and the security, integrity and continuous operation of the software, websites, applications, databases, systems, networks and information technology assets and infrastructure used in their businesses (and the data stored thereon) (“IT Assets”), and, to the Knowledge of the Company as of the date of this Agreement, no action is threatened in writing or pending challenging the validity or enforceability of any Registered IP that is issued or registered. To the Knowledge of the Company, there have been no third party has infringed breaches, losses, violations or misappropriatedunauthorized access or use of same other than those that did not result in any duty to report or mitigate, loss or is infringing or misappropriating, any material IP Right liability; (y) no proprietary software of the Company or any Subsidiary.
(b) The Company and each of its Subsidiaries has that is licensed, distributed or conveyed to third parties contains, incorporates, is based upon or derived from or otherwise interacts with any software subject to an “open source” or similar license that would require the right Company or its Subsidiaries to license or make available its proprietary source code in such circumstances; and operational ability to exploit all IP Rights necessary to enable (z) no Person other than the Company and its Subsidiaries to conduct their business substantially in the manner in which their business is currently being conducted. Neither the Company nor has accessed or possessed (or has any Subsidiary has infringed, improperly disclosed current or misappropriated the IP Rights of any third party. Neither the Company nor any Subsidiary has been the subject of any suit, arbitration or administrative proceeding since January 1, 2007 alleging, or received any other written notices from any third party since January 1, 2007: (i) alleging that the Company or any Subsidiary has infringed, improperly disclosed, misappropriated, converted or otherwise damaged the IP Rights of any third party; or (ii) inviting or demanding that the Company or a Subsidiary take a license in order to avoid the future infringement of IP Rights of a third party.
(c) Neither the Company nor any Subsidiary has entered into, except in the ordinary course of business under standard forms of the Company’s or its Subsidiaries’ Contracts made available to Parent, any written agreement to indemnify, defend or hold harmless any third party for or against any infringement, misappropriation, or other conflict with the IP Rights of any third party. There are no suits or actions pending or, to the Knowledge of the Company, threatened against the Company or any Subsidiary in which it is alleged that the Company or any Subsidiary has infringed, misappropriated or improperly disclosed the IP Rights of any third party.
(d) The Company and its Subsidiaries have taken and are taking the following steps, to the extent that such steps are commercially reasonable and necessary to establish, perfect, and defend their ownership of Registered IP and Company IP or their contingent right to use licensed third party IP Rights:
(iaccess or possess) using appropriate patent, trademark and copyright designations on products and in marketing materials; (ii) complying with all legal requirements and all filings, payments, and other actions required to be made or taken to maintain each item of Registered IP in full force and effect; (iii) requiring all employees and contractors who have invented inventions covered by patents any proprietary source code owned by the Company or Subsidiary, or were involved in theand its Subsidiaries.
Appears in 1 contract
Sources: Merger Agreement (Zayo Group LLC)
IP Rights. (a) Part 2.8(a(i) Section 3.6(a)(i) of the Company Disclosure Schedule sets forth a complete list, along with the jurisdiction and applicable registration or serial number, list of all patents, registered marks or marks, registered trade dress, registered copyrights, registered mask works, registered designs, and registered domain names, along with all pending applications to issue or register for any of the sameforegoing, owned by the Company or any Subsidiary as of the date hereof (the “Registered IP”). The ; (ii) the Company or one of its Subsidiaries is the sole and exclusive owner of all Registered IP and all Company IP, free of all liens and security interests (other than Permitted Encumbrances). Neither ; and (iii) neither the Company nor any of its Subsidiaries has granted any exclusive license licenses to any such Registered IP or to any other Company IP to any other Person (Person, other than (A) nonexclusive licenses granted in the ordinary course in conjunction with the distribution or provision of components, products or services of Company and its Subsidiaries, or (B) licenses which have expired, have been terminated or are no longer in effect for any other reason). The Registered IP that is issued is valid, subsisting and enforceable and (to the Knowledge of the Company), the Registered IP that is or registered but not yet issued is valid, subsisting and enforceable, and, to the Knowledge of the Company as of the date of this AgreementCompany, no action is threatened in writing or pending challenging the validity or enforceability of any Registered IP or other Company IP that is issued or registered. To the Knowledge of the Company, no third party has infringed or misappropriated, or is infringing or misappropriating, any material IP Right of the Company or any Subsidiary.
(b) The Company and/or its wholly owned Subsidiaries have entered into valid and enforceable agreements under which the Company or its wholly owned Subsidiaries have acquired all of the membership interests in AD Technologies LLC.
(c) Except as would not reasonably be expected to cause a Company Material Adverse Effect, (i) the Company and each of its Subsidiaries has the right and operational ability to exploit all IP Rights necessary to enable the Company and its Subsidiaries to conduct their its business substantially in the manner in which their its business is currently being conducted. Neither ; (ii) neither the Company nor any Subsidiary has infringed, improperly disclosed or misappropriated the IP Rights of any third party. Neither ; and (iii) neither the Company nor any Subsidiary has been the subject of any suit, arbitration or administrative proceeding since January 1, 2007 allegingLegal Proceeding, or received any other written notices from any third party since January 1, 2007party: (i1) alleging that the Company or any Subsidiary has infringed, improperly disclosed, misappropriated, converted or otherwise damaged the IP Rights of any third party; or (ii2) inviting or demanding that the Company or a Subsidiary take a license in order to avoid the future infringement of IP Rights of a third party.
(cd) Neither the Company nor any Subsidiary has entered into, except in the ordinary course of business under standard forms of the Company’s or its Subsidiaries’ Contracts made available to Parentbusiness, any written agreement to indemnify, defend or hold harmless any third party for or against any infringement, misappropriation, misappropriation or other conflict with the IP Rights rights of any third party. There Except as set forth on Section 3.6(d) of the Company Disclosure Schedule, there are no suits or actions Legal Proceedings pending or, to the Knowledge of the Company, threatened against the Company or any Subsidiary in which it is alleged that the Company or any Subsidiary has infringed, misappropriated or improperly disclosed the IP Rights of any third party.
(de) The Company and its Subsidiaries have taken and are taking the following steps, to the extent that such steps are commercially reasonable and necessary to establish, perfect, and defend their ownership of Registered IP and Company IP or their right to use licensed third party IP Rights:
(i) using appropriate patent, trademark and copyright designations on products and in marketing materials; (ii) complying with all legal requirements and all filings, payments, and other actions required to be made or taken to maintain each item of Registered IP in full force and effect; (iii) requiring all employees and contractors who have invented inventions covered by patents owned by the Company or Subsidiary to assign all rights and interests in such inventions to the Company or the relevant Subsidiary; and (iii) taking reasonable steps to protect trade secret information, including requiring a non-disclosure agreement before trade secret information is disclosed to a third party. The Company and its Subsidiaries, have complied, in all material respects, with applicable Legal Requirements relating to the fair and proper use of personally identifiable information of customers, employees and contractors of the Company and its Subsidiaries. To the Knowledge of the Company, no confidential or trade secret information of the Company, or personally identifiable information in the possession, custody or control of the Company or any Subsidiary has been lost, stolen or improperly disclosed. All persons identified as inventors in the patents solely owned by the Company or any Subsidiary have assigned all of their rights in the relevant inventions to the Company, relevant Subsidiary or predecessor in interest thereof.
(f) Except for third party Software commercially available in the market for licensing on standard or original equipment manufacturer terms, all Software sold or licensed by Company or its Subsidiaries to the customers of the Company and its Subsidiaries independently or bundled with other components, products or services of the Company and its Subsidiaries, is free to be licensed or sold on the terms such Software is licensed or sold.
(g) The Company, directly or through its Subsidiaries, is in actual possession of or has necessary control over the source code and object code of all material Software owned by the Company or any Subsidiary. Neither the Company nor any Subsidiary has disclosed to any third party any source code of such Software owned by the Company or any Subsidiary except pursuant to development agreements, manufacturing agreements or written source code escrow agreements containing license and confidentiality terms that reasonably protect the Company’s rights in such Software; and neither the Company nor any of its Subsidiaries is obligated to support or maintain any of such Software except pursuant to agreements that will terminate by their terms or are terminable by the Company (other than for cause) on a periodic basis and that provide for one or more payments to the Company or Subsidiary for the period of such services.
(h) No Governmental Entity, nor any university, college or academic institution has financially sponsored research and development conducted by the Company or its Subsidiaries, or, to the Knowledge of the Company, has rights in Software or IP Rights purported to be owned by the Company or any Subsidiary; and neither the Company nor any Subsidiary has participated in any standards-setting activities or joined any standards-setting or similar organizations that, to the Knowledge of the Company, would affect the proprietary nature of any Software or IP Rights purported to be owned by the Company or any Subsidiary or restrict the ability of the Company or any of its Subsidiaries to enforce, license or exclude others from using any Software or IP Rights purported to be owned by the Company or any Subsidiary.
(i) None of the Software owned, used or distributed by the Company or any Subsidiary and incorporated by the Company or any Subsidiary into its products or services contain any open source code or other code or technology which would (1) require the public disclosure, third party distribution, or general licensing of material Software or other IP Rights owned by the Company or any Subsidiary, (2) materially limit the ability of the Company or were involved in thea Subsidiary to license or charge fees or royalties for such Software or IP Rights, or (3) require the Company or a Subsidiary to permit the reverse engineering, decompilation, disassembly or creation of derivative works based upon of material Software owned by the Company or a Subsidiary.
Appears in 1 contract
Sources: Merger Agreement (Acer Inc)
IP Rights. (a) Part 2.8(aEach Acquired Entity owns, or has valid rights to use, free and clear of any Lien (except for any Permitted Lien) all Business IP Rights necessary for the conduct of the Business in the Ordinary Course of Business. All Business IP Rights are valid, subsisting, enforceable and in full force and effect. None of the Business IP Rights are subject to any Contract obligation that restricts any Acquired Entity’s rights to exploit, enforce or defend any Business IP Rights in any material respect. Except as would not be material to the Acquired Entities taken as a whole, each of the Acquired Entities has taken all commercially reasonable steps to obtain, maintain, and protect the Business IP Rights, including, where appropriate, registering Business IP Rights. Following the Closing, Buyers will be permitted to cause to be exercised all of the rights of the Acquired Entities under the Business IP Rights to the same extent the Acquired Entities would have been able had the transactions contemplated by this Agreement not occurred.
(b) Section 3.7(b) of the Disclosure Schedule sets forth a complete listlists all (i) issued patents and patent applications (published or unpublished), along with the jurisdiction (ii) trademark registrations and applicable registration or serial numberapplications, of all patents, registered marks or trade dress, registered copyrights, registered mask works, registered designs, and registered (iii) domain names, along with all pending applications to issue or register and (iv) copyright registrations and applications, in each case which are included in the same, owned by the Company or any Subsidiary Business IP Rights (the “Registered IPBusiness IP Rights”). The Company All Registered Business IP Rights are currently applied for, registered, or one of its Subsidiaries is held in the sole and exclusive owner of all Registered IP and all Company IP, free of all liens and security interests (other than Permitted Encumbrances). Neither the Company nor any of its Subsidiaries has granted any exclusive license to any such Registered IP or Company IP to any other Person (other than licenses which have expired, have been terminated or are no longer in effect for any other reason). The Registered IP that is issued is valid, subsisting and enforceable and (to the Knowledge name of the Company), the Registered IP that is registered but not yet issued is valid, subsisting and enforceable, and, to the Knowledge of the Company as of the date of this Agreement, no action is threatened in writing or pending challenging the validity or enforceability of any Registered IP that is issued or registeredapplicable Acquired Entity. To the Knowledge of the Company, no third party has infringed or misappropriated, or is infringing or misappropriating, any material IP Right of the Company or any Subsidiary.
(b) The Company and each of its Subsidiaries has the right and operational ability to exploit all IP Rights necessary to enable the Company and its Subsidiaries to conduct their business substantially in the manner in which their business is currently being conducted. Neither the Company nor any Subsidiary has infringed, improperly disclosed or misappropriated the IP Rights of any third party. Neither the Company nor any Subsidiary has been the subject of any suit, arbitration or administrative proceeding since January 1, 2007 alleging, or received any other written notices from any third party since January 1, 2007: (i) alleging that the Company or any Subsidiary has infringed, improperly disclosed, misappropriated, converted or otherwise damaged the IP Rights of any third party; or (ii) inviting or demanding that the Company or a Subsidiary take a license in order to avoid the future infringement of IP Rights of a third party.
(c) Neither the Company nor any Subsidiary has entered into, except in the ordinary course of business under standard forms of the Company’s or its Subsidiaries’ Contracts made available to Parent, any written agreement to indemnify, defend or hold harmless any third party for or against any infringement, misappropriation, or other conflict with the IP Rights of any third party. There are no suits or actions pending or, to the Knowledge of the Company, threatened against the Company or any Subsidiary in which it is alleged that the Company or any Subsidiary has infringed, misappropriated or improperly disclosed the IP Rights of any third party.
(d) The Company and its Subsidiaries have taken and are taking the following steps, to the extent that such steps are commercially reasonable and necessary to establish, perfect, and defend their ownership of Registered IP and Company IP or their right to use licensed third party IP Rights:
(i) using appropriate patent, trademark and copyright designations on products and in marketing materials; (ii) complying with all legal requirements and all All filings, payments, payments and other actions required to be made or taken to obtain, perfect or maintain each item of Registered IP in full force and effect; effect each item of Business Registered IP Rights have been made or taken by the applicable deadline and otherwise in accordance with all applicable Laws.
(iiic) requiring all employees The conduct of the Business, as currently conducted and contractors who have invented inventions covered by patents as has been conducted within the past five (5) years, does not infringe, misappropriate or otherwise violate, and has not infringed, misappropriated or otherwise violated, any IP Rights owned by any other Person and to the Company Company’s Knowledge, no Person is or Subsidiaryhas been within the past five (5) years, infringing, misappropriating or otherwise violating any Business IP Rights. No Claim is pending or, to the Company’s Knowledge, has been threatened in writing within the past five (5) years, (A) against any Acquired Entity that is based upon any Claim that such Acquired Entity is or was infringing, misappropriating or otherwise violating any IP Rights owned by any other Person or challenging the scope, validity, enforceability or ownership of, or the right to use, any Business IP Rights or (B) by any Acquired Entity against any other Person that is or was based upon any Claim that another Person is infringing, misappropriating or otherwise violating any Business IP Rights, or challenging the scope, validity, enforceability or ownership of, or the right to use, any IP Rights of any other Person.
(d) Except as would not be material to the Acquired Entities, each current and former employee and contractor of Parent or any of its Subsidiaries who has created Business IP Rights for an Acquired Entity has executed a written agreement assigning to an Acquired Entity any and all of such person’s right, title and interest in any Business IP Rights that were involved created, developed, reduced to practice, contributed to, modified or improved by such Person in theconnection with services to an Acquired Entity, to the extent such rights do not automatically vest in such Acquired Entity under applicable Law. No current or former equity holder, partner, director, officer or employee of Parent or any of its Subsidiaries owns, licenses to an Acquired Entity or retains any rights, title or interest in or to any Business IP Rights.
(e) Each Acquired Entity takes and has taken reasonable steps designed to protect and maintain the status of the confidentiality of material confidential IP Rights (including all Trade Secrets) owned by or disclosed in confidence to such Acquired Entity. To the Company’s Knowledge, there has not been any unauthorized disclosure of or unauthorized access to any material confidential IP Rights (including any Trade Secret) of any of the Acquired Entities.
Appears in 1 contract
Sources: Securities Purchase Agreement (Astrana Health, Inc.)
IP Rights. (a) Part 2.8(aExcept as has not had or would not reasonably be expected to have, individually or in the aggregate, a Material Adverse Effect, the Acquired Entities own, or have valid rights to use, all IP Rights that are being used in, or are necessary for, the conduct of their businesses in the manner in which they are currently being conducted.
(b) Section 2.8(b) of the Company Disclosure Schedule sets forth a complete list, along with the jurisdiction and applicable registration or serial number, list of all patents(i) issued patents and patent applications, registered marks or trade dress(ii) trademark registrations and applications, registered copyrightsdomain names and material unregistered trademarks and (iii) copyright registrations and applications and unregistered copyrights in software material to the conduct of the businesses of the Acquired Entities, registered mask works, registered designs, and registered domain names, along with all pending applications to issue or register the same, in each case which is owned by the Company or Acquired Entities in any Subsidiary (jurisdiction in the “Registered IP”)world. The Company or one of its Subsidiaries is Acquired Entities are the sole and exclusive owner beneficial and, with respect to applications and registrations (including patents), record owners of all Registered of the IP and all Company IP, free Rights set forth in Section 2.8(b) of all liens and security interests (other than Permitted Encumbrances). Neither the Company nor any of its Subsidiaries has granted any exclusive license to any such Registered IP or Company IP to any other Person (other than licenses which have expiredDisclosure Schedule. All registered trademarks, have been terminated or registered service marks, patents and registered copyrights owned by the Acquired Entities are no longer in effect for any other reason). The Registered IP that is issued is valid, subsisting subsisting, and enforceable and (to the Knowledge of the Company), the Registered IP that is registered but not yet issued is valid, subsisting and enforceable, and, to the Knowledge of the Company as of the date of this Agreement, no action is threatened in writing or pending challenging the validity or enforceability of any Registered IP that is issued or registered. To the Knowledge of the Company, no third party has infringed or misappropriated, or is infringing or misappropriating, any material IP Right of the Company or any Subsidiary.
(b) The Company and each of its Subsidiaries has the right and operational ability to exploit all IP Rights necessary to enable the Company and its Subsidiaries to conduct their business substantially in the manner in which their business is currently being conducted. Neither the Company nor any Subsidiary has infringed, improperly disclosed or misappropriated the IP Rights of any third party. Neither the Company nor any Subsidiary has been the subject of any suit, arbitration or administrative proceeding since January 1, 2007 alleging, or received any other written notices from any third party since January 1, 2007: (i) alleging that the Company or any Subsidiary has infringed, improperly disclosed, misappropriated, converted or otherwise damaged the IP Rights of any third party; or (ii) inviting or demanding that the Company or a Subsidiary take a license in order to avoid the future infringement of IP Rights of a third party.
(c) Neither Except as has not had or would not reasonably be expected to have, individually or in the aggregate, a Material Adverse Effect: (i) the conduct of the businesses of the Acquired Entities, including any product or service marketed or sold by the Company nor or any Subsidiary has entered into, except in the ordinary course of business under standard forms of the Company’s other Acquired Entities, has not infringed, misappropriated or its Subsidiaries’ Contracts made available to Parentotherwise violated, and does not infringe, misappropriate or otherwise violate, any written agreement IP Rights owned by any other Person; (ii) no Person is infringing, misappropriating or otherwise violating any IP Rights owned by the Acquired Entities; and (iii) the Acquired Entities have taken commercially reasonable steps to indemnifyprotect their IP Rights and to maintain the confidentiality of their trade secrets. No lawsuit, defend or hold harmless any third party for or against any infringement, misappropriation, court action or other conflict with the IP Rights of any third party. There are no suits court proceeding (“Legal Proceeding”) or actions other claim is pending (or, to the Knowledge of the Company, threatened is being threatened) or in the past three (3) years was pending (or, to the Knowledge of the Company, threatened), (x) against any of the Company Acquired Entities that is based upon any claim that any of the Acquired Entities is or was infringing any Subsidiary in which it is alleged that the Company or any Subsidiary has infringed, misappropriated or improperly disclosed the IP Rights owned by any other Person or challenging the validity, enforceability or ownership of, or the right to use, any IP Rights owned by any of the Acquired Entities or (y) by any third partyof the Acquired Entities against any other Person that is or was based upon any claim that another Person is infringing any IP Rights owned by the Acquired Entities.
(d) The Acquired Entities take commercially reasonable measures to ensure that personal information collected, used, or held for use by or on behalf of the Acquired Entities in the conduct of their businesses is protected against unauthorized access, use, modification, or other misuse. The Acquired Entities also take commercially reasonable measures to ensure the confidentiality, integrity and availability of all such information in electronic format and protect against reasonably anticipated threats or hazards to the security of such information and the unauthorized use or disclosure of such information.
(e) Section 2.8(e) of the Company Disclosure Schedule sets forth a true and complete list of all Contracts for material software used or held for use in the business of the Acquired Entities (other than commercially available shrink-wrap or off-the-shelf software that has an acquisition price of less than $50,000 per unit or $100,000 per year). With respect to the use of software in the businesses of the Acquired Entities, (i) no future capital expenditures are necessary with respect to such use other than capital expenditures in the ordinary course of business consistent with the past practice of the Acquired Entities, and (ii) the Acquired Entities have not experienced any material defects in such software, including any material error or omission in the processing of any transactions other than defects which have been corrected. During the three (3) years prior to the date of this Agreement, (x) there have been no material security breaches in the Acquired Entities’ information technology systems, and (y) there have been no disruptions in any of the Acquired Entities’ information technology systems that materially adversely affected the Acquired Entities’ businesses or operations. The Company and its Subsidiaries have taken evaluated their disaster recovery and are taking backup needs and have implemented plans and systems that commercially reasonably address their assessment of risk. With respect to the following stepssoftware used or held for use in the businesses of the Acquired Entities, to the extent that Knowledge of the Company, (A) no such steps are commercially reasonable and necessary software contains any device or feature designed to establishdisrupt, perfectdisable, or otherwise impair the functioning of any software, (B) the Acquired Entities have not delivered, licensed or made available, and defend their ownership of Registered IP and Company IP the Acquired Entities have no duty or their right obligation (whether present, contingent, or otherwise) to use licensed third party IP Rights:
(i) using appropriate patentdeliver, trademark and copyright designations on products and in marketing materials; (ii) complying with all legal requirements and all filingslicense or make available, payments, and other actions required to be made or taken to maintain each item of Registered IP in full force and effect; (iii) requiring all employees and contractors who have invented inventions covered by patents the source code for any such software owned by the Company Acquired Entities to any escrow agent or Subsidiaryother Person who is not, as of the date of this Agreement, an employee of an Acquired Entity, and (C) no such software owned by the Acquired Entities is subject to the terms of any “open source” or were involved other similar license that provides for any source code of such software to be disclosed, licensed, publicly distributed or dedicated to the public.
(f) Except as has not had or would not reasonably be expected to have, individually or in thethe aggregate, a Material Adverse Effect, the consummation of the transactions contemplated by this Agreement will not result in the loss or impairment of or payment of any additional amounts (other than those amounts that would be payable had the consummation of the transactions contemplated by this Agreement not taken place) with respect to, nor require the consent of any other Person in respect of, the Acquired Entities’ right to own, use or hold for use any of the IP Rights owned, used or held for use in the conduct of their businesses.
Appears in 1 contract
IP Rights. (a) Part 2.8(aEach Acquired Entity owns, or has valid rights to use, free and clear of any Lien thereon (except for any Permitted Lien), and immediately following the consummation of the transactions contemplated hereby, will own or have valid rights to use, free and clear of any Lien thereon (except for any Permitted Lien), all IP Rights used or held for use in, or necessary for, the conduct of its businesses in the manner in which they are currently being conducted.
(b) Section 2.8(b) of the Seller Disclosure Schedule sets forth a complete listlists all of (i) issued patents and patent applications (published or unpublished), along with the jurisdiction (ii) trademark registrations and applicable registration or serial numberapplications and material unregistered trademarks, of all patents, registered marks or trade dress, registered copyrights, registered mask works, registered designs, and registered (iii) domain names, along with all pending (iv) copyright registrations and applications and (v) material software, in each case which is owned or purported to issue or register the same, be owned by an Acquired Entity in any jurisdiction in the Company or any Subsidiary (world. Except as disclosed in Section 2.8(b) of the “Registered IP”). The Company or one of its Subsidiaries Seller Disclosure Schedule, an Acquired Entity is the sole and exclusive beneficial and, for applications and registrations (including patents), record owner of all Registered IP and all Company IP, free of all liens and security interests (other than Permitted Encumbrances). Neither the Company nor any of its Subsidiaries has granted any exclusive license to any such Registered IP or Company IP to any other Person (other than licenses which have expired, have been terminated or are no longer in effect for any other reason). The Registered IP that is issued is valid, subsisting and enforceable and (to the Knowledge of the Company), IP Rights listed in Section 2.8(b) of the Registered IP that is registered but not yet issued is valid, subsisting and enforceable, Seller Disclosure Schedule and, to the Knowledge of the Company as of the date of this AgreementSeller Parties’ Knowledge, no action is threatened in writing or pending challenging the validity or enforceability of any Registered IP that is issued or registered. To the Knowledge of the Company, no third party has infringed or misappropriated, or is infringing or misappropriating, any material IP Right of the Company or any Subsidiary.
(b) The Company and each of its Subsidiaries has the right and operational ability to exploit all such IP Rights necessary to enable the Company are valid, enforceable and its Subsidiaries to conduct their business substantially in the manner in which their business is currently being conducted. Neither the Company nor any Subsidiary has infringed, improperly disclosed or misappropriated the IP Rights of any third party. Neither the Company nor any Subsidiary has been the subject of any suit, arbitration or administrative proceeding since January 1, 2007 alleging, or received any other written notices from any third party since January 1, 2007: (i) alleging that the Company or any Subsidiary has infringed, improperly disclosed, misappropriated, converted or otherwise damaged the IP Rights of any third party; or (ii) inviting or demanding that the Company or a Subsidiary take a license in order to avoid the future infringement of IP Rights of a third partysubsisting.
(c) Neither The Acquired Entities are not subject to any Orders or settlement agreements that limit the Company nor any Subsidiary has entered into, except in the ordinary course of business under standard forms of the Company’s or its SubsidiariesAcquired Entities’ Contracts made available to Parent, any written agreement to indemnify, defend or hold harmless any third party for or against any infringement, misappropriation, or other conflict with the IP Rights ownership of any third party. There are no suits or actions pending or, to the Knowledge of the Company, threatened against the Company or any Subsidiary in which it is alleged that the Company or any Subsidiary has infringed, misappropriated or improperly disclosed the material IP Rights of any third partyRights.
(d) The Company Except as would not and its Subsidiaries have taken would not reasonably be expected to result in, individually or in the aggregate, a Material Adverse Effect, there is no, and are taking the following stepssince January 1, 2016 there has not been any, Claim pending (or, to the extent Seller Parties’ Knowledge, threatened) (i) alleging or asserting that such steps are commercially reasonable and necessary to establishany Acquired Entity is or was infringing any IP Rights owned by any other Person or challenging the scope, perfectvalidity, and defend their enforceability or ownership of Registered IP and Company IP of, or their the right to use, any IP Rights owned by any Acquired Entity or (ii) by any Acquired Entity against any other Person that is or was based on any Claim that another Person is infringing any IP Rights owned by such Acquired Entity. Except as would not and would not reasonably be expected to result in, individually or in the aggregate, a Material Adverse Effect, (1) since January 1, 2016, the conduct of the businesses of each Acquired Entity has not infringed, misappropriated or otherwise violated any IP Rights owned by any other Person and (2) to the Seller Parties’ Knowledge, no Person is infringing, misappropriating or otherwise violating any IP Rights owned, used or held for use licensed third party IP Rightsby any Acquired Entity in the conduct of their businesses.
(e) Except as would not and would not reasonably be expected to result in, individually or in the aggregate, a Material Adverse Effect:
(i) using appropriate patent, trademark and copyright designations on products and in marketing materials; each Acquired Entity has taken reasonable steps to protect the confidentiality of its Trade Secrets;
(ii) complying with all legal requirements except as described in Section 2.8(e)(ii) of the Seller Disclosure Schedule, to the Seller Parties’ Knowledge, there has not been any disclosure of or access to any material Trade Secret of any of the Acquired Entities (including any such information of any other Person disclosed in confidence to any of the Acquired Entities) to any Person in a manner that has resulted or is likely to result in the loss of Trade Secret or other rights in and all filings, payments, and other actions required to be made or taken to maintain each item of Registered IP in full force and effect; such information;
(iii) requiring since January 1, 2016, each Acquired Entity has complied with all employees applicable Laws, as well as its own rules, policies and contractors who have invented inventions covered by patents owned by procedures, relating to privacy, data protection, and the Company or Subsidiarycollection, retention, protection and use of Personal Information collected, used, or were involved held for use by any Acquired Entity;
(iv) since January 1, 2016, no Claim has been asserted or threatened against any Acquired Entity alleging a violation of any Person’s privacy or Personal Information or data rights by such Acquired Entity;
(v) each Acquired Entity takes commercially reasonable measures to protect Personal Information that is collected by such Acquired Entity against unauthorized access, use, modification, disclosure or other misuse, including through administrative, technical and physical safeguards; and
(vi) each Acquired Entity also takes commercially reasonable measures to protect the confidentiality, integrity and availability of all such Personal Information in theelectronic format and protect against reasonably anticipated threats or hazards to the security of such Personal Information and the unauthorized use or disclosure of such Personal Information.
(f) Except as described in Section 2.8(f) of the Seller Disclosure Schedule or as otherwise would not (and would not reasonably be expected to) result in, individually or in the aggregate, a Material Adverse Effect, since January 1, 2016, (i) there have been no security breaches in any Acquired Entity’s information technology systems or, to the Seller Parties’ Knowledge, the information technology systems of third Persons to the extent used by or on behalf of any Acquired Entity, and (ii) there have been no disruptions in any Acquired Entity’s information technology systems. Each Acquired Entity has implemented commercially reasonable plans and systems that reasonably address its assessment of risk.
Appears in 1 contract
Sources: Membership Interest Purchase Agreement (Performance Food Group Co)
IP Rights. (a) Part 2.8(a3.6(a) of the Company Disclosure Schedule sets forth a complete listaccurately identifies:
(i) In Part 3.6(a)(i) of the Company Disclosure Schedule: (A) each item of Registered IP in which the Company or any of its Subsidiaries has an ownership interest of any nature (whether exclusively, along jointly with another Person or otherwise but excluding any interest arising out of any exclusive or nonexclusive license) (“Company Registered IP”); (B) the jurisdiction in which such item of Company Registered IP has been registered or filed and the applicable registration or serial number; and (C) any other Person that has an ownership interest in such item of Company Registered IP and the nature of such ownership interest;
(ii) in Part 3.6(a)(ii) of the Company Disclosure Schedule each Contract to which the Company is currently bound pursuant to which any Intellectual Property or Intellectual Property Rights are licensed to the Company or any of its Subsidiaries (other than the licenses to Open Source Material listed in Part 3.6(h)(i) of the Company Disclosure Schedule and other than non-exclusive licenses for any third-party software or other third-party Intellectual Property or Intellectual Property Rights, including, without limitation, shrink-wrap, off-the-shelf or commercially available software, that: (1) in the case of all patentsthird party software, registered marks is so licensed in executable or trade dressobject code form pursuant to a nonexclusive software license, registered copyrights, registered mask works, registered designs(2) is not, and registered domain namesis not intended by Company to be, along incorporated into or used in the design, development, manufacture or provision of any Company Product; or (3) is generally available on standard terms for less than $25,000 per year or $50,000 in perpetuity for all licenses for such item of third-party software or other third-party Intellectual Property or Intellectual Property Rights held by Company and its Subsidiaries);
(iii) in Part 3.6(a)(iii) of the Company Disclosure Schedule, each Contract under which an express license or express covenant not to ▇▇▇ is held by any third party in or to any of the Company IP, or pursuant to which Company or any of its Subsidiaries has granted an express license or express covenant not to ▇▇▇ under any Intellectual Property Rights to any third party;
(iv) in Part 3.6(a)(iv) of the Company Disclosure Schedule, each Company Product currently made commercially available or under development by the Company (except for Company Products being jointly developed by Parent and the Company) and each Company Product made commercially available by the Company during the three (3) year period preceding the date of this Agreement;
(v) to the Company’s knowledge, in Part 3.6(a)(v) of the Company Disclosure Schedule, for each Company Product required to be disclosed under Part 3.6(a)(iv) of the Company Disclosure Schedule, all Intellectual Property or Intellectual Property Rights licensed to the Company or any of it Subsidiaries, except for standard building blocks (i.e., transistors and capacitors) from standard foundry libraries (“Third Party IP”), that are used or embodied in or would otherwise be infringed by such Company Product, and for each such item of Third Party IP, the agreement pursuant to which the Company or its Subsidiary has a license to such Third Party IP. Complete and accurate copies of each Contract identified in Part 3.6(a)(ii), Part 3.6(a)(iii) or Part 3.6(a)(v) of the Company Disclosure Schedule have been provided or made available to Parent. The consummation of the transactions contemplated by this Agreement will neither violate nor result in the breach, modification, cancellation, termination or suspension of such Contracts. Each of Company and its Subsidiaries is in material compliance with, and has not materially breached any term of any such Contracts and, to the knowledge of Company, all other parties to such Contracts are in compliance with, and have not materially breached any term of, such Contracts, other than such breaches for which no legal or equitable remedy is available to the counterparty under such Contract. Following the Effective Time, the Surviving Corporation will be permitted to exercise all of Company’s and its Subsidiaries’ rights under such Contracts to the same extent Company and its Subsidiaries would have been able to had the transactions contemplated by this Agreement not occurred and without the payment of any additional amounts or consideration other than ongoing fees, royalties or payments which Company or its Subsidiaries would otherwise be required to pay. No Company Product or other material Company IP is subject to any covenant or other restriction (including exclusivity, non-competition and most-favored pricing restrictions) that materially limits or restricts the ability of the Company or any of its Subsidiaries to use, exploit, assert, or enforce such Company Product or material Company IP anywhere in the world.
(b) Without expanding the scope of Section 3.6(f), the Company and its Subsidiaries exclusively own all right, title and interest to and in, and, have the sole and exclusive right to bring a claim or suit against a third party for infringement or misappropriation of, the Company IP (other than Company Registered IP identified in Part 3.6(a)(i) of the Company Disclosure Schedule as being subject to the ownership interest of another Person) free and clear of any liens or encumbrances (other than pursuant to the Contracts listed in Part 3.6(a)(iii) of the Company Disclosure Schedule). Without limiting the generality of the foregoing, other than as identified in Part 3.6(b) of the Company Disclosure Schedule:
(i) all documents and instruments necessary to perfect the rights of the Company and its Subsidiaries in the Company Registered IP have been validly executed, delivered and filed (on or before any applicable deadline) with all pending applications the appropriate Governmental Entity;
(ii) each Person who is or was an employee, consultant or independent contractor of the Company or any of its Subsidiaries and who is or was involved in the creation or development of any Company IP (or any Intellectual Property or Intellectual Property Rights developed for the Company that the Company intended to issue be Company IP), or register the same, who is or was named as an inventor on any patent application filed or owned by the Company or any Subsidiary of its Subsidiaries, has signed one or more agreements containing an assignment of that Person’s rights in such Company IP (or other Intellectual Property or Intellectual Property Rights) to the “Registered IP”). The Company or one of its Subsidiaries;
(iii) to the knowledge of the Company, no past or current employee of the Company or any of its Subsidiaries has any claim, right (whether or not currently exercisable) or interest to or in any material Company IP;
(iv) to the knowledge of the Company, no past or current employee, consultant or independent contractor of the Company or any of its Subsidiaries is in material breach of any Contract with any former employer or other Person concerning Intellectual Property Rights or confidentiality where the sole and exclusive owner cause or nature of all Registered IP and all the breach arises directly out of any services, including the development of any Company IP, free performed by such employee, consultant or independent contractor for the Company or any of all liens and security interests its Subsidiaries;
(v) no funding, facilities or personnel of any Governmental Entity or any university or other than Permitted Encumbrances). Neither educational institution were used to develop or create, in whole or in part, any Company IP; and
(vi) neither the Company nor any of its Subsidiaries has granted assigned or otherwise transferred ownership of, or agreed to assign or otherwise transfer ownership of, any exclusive license to any such Registered IP or material Company IP (or anything that was material Company IP immediately prior to such assignment or transfer) to any other Person Person.
(c) To the knowledge of the Company, all Company Registered IP (other than licenses which have expired, have been terminated or are no longer in effect pending applications for any other reason). The Registered IP that is issued IP) is valid, subsisting and is enforceable and in all material respects. Without limiting the generality of the foregoing:
(i) to the Knowledge of the Company), the Registered IP that is registered but not yet issued is valid, subsisting and enforceable, and, to the Knowledge of the Company as of the date of this Agreement, no action is threatened in writing or pending challenging the validity or enforceability of any Registered IP that is issued or registered. To the Knowledge knowledge of the Company, no third party has infringed or misappropriated, or is infringing or misappropriating, any material IP Right of registered trademark owned by the Company or any Subsidiary.
(b) The Company and each of its Subsidiaries has the right Subsidiaries, and operational ability to exploit all IP Rights necessary to enable the Company and its Subsidiaries to conduct their business substantially in the manner in which their business is no other trademark currently being conducted. Neither the Company nor any Subsidiary has infringed, improperly disclosed or misappropriated the IP Rights of any third party. Neither the Company nor any Subsidiary has been the subject of any suit, arbitration or administrative proceeding since January 1, 2007 alleging, or received any other written notices from any third party since January 1, 2007: (i) alleging that used by the Company or any Subsidiary has infringed, improperly disclosed, misappropriated, converted or otherwise damaged the IP Rights of any third party; or (ii) inviting or demanding that the Company or a Subsidiary take a license in order to avoid the future infringement of IP Rights of a third party.
(c) Neither the Company nor any Subsidiary has entered into, except its Subsidiaries in the ordinary course of business under standard forms of the Company’s or its Subsidiaries’ Contracts made available to Parent(collectively, “Company Trademarks”), conflicts with any written agreement to indemnify, defend or hold harmless any third party for or against any infringement, misappropriation, or other conflict with the IP Rights registered trademark of any third party. There are no suits or actions pending or, to the Knowledge of the Company, threatened against other Person in any jurisdiction where the Company or any Subsidiary in which it of its Subsidiaries currently sells, markets or promotes (directly or through any Person who is alleged that authorized by the Company or any Subsidiary has infringed, misappropriated or improperly disclosed the IP Rights of any third party.
(d) The Company and its Subsidiaries have taken and are taking the following stepsto so sell, to the extent that market or promote) any of their products or services using such steps are commercially reasonable and necessary to establish, perfect, and defend their ownership of Registered IP and Company IP or their right to use licensed third party IP Rights:Trademarks;
(i) using appropriate patent, trademark and copyright designations on products and in marketing materials; (ii) complying each item of Company Registered IP is in compliance with all legal requirements material Legal Requirements, and all filings, payments, payments and other actions required to be made or taken to maintain each item of Company Registered IP in full force and effecteffect have been made by the applicable deadline or, if not made, will not adversely affect such Company Registered IP or the rights of Company in such Company Registered IP; and
(iii) no interference, opposition, reissue, reexamination or other Legal Proceeding of any nature is pending or, to the knowledge of the Company, threatened, in which the scope, validity or enforceability of any Company Registered IP is being, has been or would reasonably be expected to be contested or challenged.
(d) Neither the execution, delivery or performance of this Agreement, nor the consummation of any of the transactions contemplated by this Agreement, including the assignment to Parent or Acquisition Sub by operation of law of any Contracts or agreements to which Company or any of its Subsidiaries is a party, will, with or without notice or the lapse of time, result in, or give any other Person the right or option to cause: (i) either Parent or Acquisition Sub granting to any third party any right to or with respect to any material Intellectual Property or Intellectual Property Rights owned by, or licensed to, either of them; (ii) any Person receiving a license or right under any Intellectual Property or Intellectual Property Rights from Company or any of its Subsidiaries that was either not granted or not exercisable prior to the Closing; (iii) requiring all employees either Parent or Acquisition Sub being bound by, or subject to, any non-compete or other material restriction on the operation or scope of their respective businesses, or (iv) either Parent or Acquisition Sub being obligated to pay any royalties or other material amounts to any third party in excess of those payable by Parent or the Company, respectively prior to the Closing; (v) a loss of, or Encumbrance on, any Company IP; or (vi) the release, disclosure or delivery of any Company IP by any escrow agent to any other Person.
(e) To the knowledge of the Company as of the date of this Agreement: (i) no Person has materially infringed or misappropriated any Company IP; and contractors who have invented inventions covered (ii) no Person is currently materially infringing or misappropriating any Company IP.
(f) To the knowledge of the Company, the operation of the business of Company and its Subsidiaries as such business currently is conducted or contemplated to be conducted, including the design, development, manufacture, distribution, import, reproduction, marketing, licensing or sale of the Company Products, has not, does not and will not infringe (directly, contributorily, by patents owned inducement or otherwise), misappropriate or otherwise violate any Intellectual Property Right of any other Person. Without limiting the generality of the foregoing:
(i) no infringement, misappropriation or similar Legal Proceeding is pending or, to the knowledge of the Company, threatened against the Company or any of its Subsidiaries or, to the Company's knowledge, against any other Person who, as a party to Contract to which the Company or any Subsidiary is a party, may be entitled to be indemnified, defended, held harmless or reimbursed by the Company or Subsidiaryany of its Subsidiaries with respect to such Legal Proceeding;
(ii) in the three (3) year period prior to the date of this Agreement, neither the Company nor any of its Subsidiaries has received any written notice (nor, to the knowledge of the Company, any non-written notice) alleging infringement, misappropriation or violation by the Company or any of its Subsidiaries of any Intellectual Property Right of another Person, except in the case of any such non-written notice would not reasonably be expected to have a material and adverse effect on any Company Product or the business of the Company or any of its Subsidiaries as currently conducted or proposed to be conducted; and
(iii) Company has not received written notice (or, to the knowledge of the Company, any non-written notice) of any pending Legal Proceeding involving any Intellectual Property Right licensed to the Company or any of its Subsidiaries, except for any such Legal Proceeding that would not reasonably be expected to have a material and adverse effect on the use or exploitation of such Intellectual Property Right by the Company or any of its Subsidiaries.
(g) Neither the Company nor any of its Subsidiaries nor any other party acting on its behalf has disclosed, licensed, delivered or made available to any Person any Company Source Material, except for disclosures to Company employees, consultants or independent contractors under agreements that prohibit use or disclosure except in the performances of services to or for (directly or indirectly) the Company or any Subsidiary thereof. No Company Source Material has been delivered or made available to any third party escrow agent and neither the Company nor any of its Subsidiaries has, as of the date of this Agreement, any duty or obligation (whether present, contingent or otherwise) to deliver or make available any Company Source Material to any third party escrow agent. No event has occurred, and, to the knowledge of the Company, no circumstance or condition exists, that (with or without notice or lapse of time) will, or were involved would reasonably be expected to, result in thethe release from any third party escrow agent, or the license or delivery to any other Person, of any Company Source Material. Neither the execution, delivery or performance of this Agreement, nor the consummation of the Merger or any other transactions contemplated by this Agreement, including the assignment to Parent or Acquisition Sub by operation of law of any Contracts or agreements to which Company or any of its Subsidiaries is a party, (with or without notice or lapse of time) will, or would reasonably be expected to, result in the release from any third party escrow agent, or the license or delivery to any other Person, of any Company Source Material.
(h) Part 3.6(h)(i) of the Company Disclosure Schedule lists all Open Source Material that, to the knowledge of the Company, has been incorporated into any Company Software or Company Product in any way, identifies the license terms applicable thereto (complete copies of which have been made available to Parent) and describes the manner in which such Open Source Material was incorporated (such description shall include whether (and, if so, how) the Open Source Material was modified and/or distributed by the Company or any of its Subsidiaries and whether (and if so, how) such Open Source Material was incorporated into and/or linked with any Company Software or Company Product). Except as set forth in Part 3.6(h)(ii) of the Company Disclosure Schedule, to the knowledge of the Company, neither the Company nor any of its Subsidiaries has used Open Source Material in any manner that would or could (i) require the disclosure or distribution in source code, Source Material or equivalent human-readable form of any portion of any Company Software or Company Product, (ii) require the licensing of any portion of any Company Software or Company Product for the purpose of making derivative works, (iii) impose any restriction on the consideration to be charged for the distribution of any Company Software or Company Product, (iv) create, or purport to create, obligations for the Company with respect to Company IP or grant, or purport to grant, to any third party, any rights or immunities under Company IP or (v) impose any other material limitation, restriction, or condition on the right of the Company to use or distribute any Company Product. With respect to any Open Source Material that is or has been us
Appears in 1 contract
Sources: Merger Agreement (Simtek Corp)
IP Rights. (a) Part 2.8(a) With no prejudice for the Employees' rights based on mandatory provisions of law, given the Disclosure Schedule sets forth a complete listfact that in his position the Employee has organized, along with the jurisdiction supervised, was also directly involved, and applicable registration or serial numbershall continue to do so during his employment, in those Company's activities aimed at the: creation of all patentsinventions, registered marks or manufacturing, production, industrial and testing processes, systems, methods, procedures and techniques, improvements, trade dresssecrets, registered copyrightssoftware programs, registered mask software and systems documentation, works of authorship and other copyrightable works, registered designsand related know-how, and registered domain nameswhether or not patentable, along with all pending applications to issue copyrightable, or register the samequalified for other protection as proprietary information, owned by the Company or any Subsidiary (the “Registered IP”). The Company or one of its Subsidiaries is the sole and exclusive owner of all Registered IP and all Company IP, free of all liens and security interests (other than Permitted Encumbrances). Neither the Company nor any of its Subsidiaries has granted any exclusive license to any such Registered IP or Company IP to any other Person (other than licenses which have expired, have been terminated or are no longer in effect for any other reason). The Registered IP that is issued is valid, subsisting and enforceable and (to the Knowledge of the Companyhereinafter jointly called "Inventions"), the Registered IP that is registered but not yet issued is validEmployee hereby expressly waives all Employee's rights and titles in and to all such Inventions, subsisting and enforceableEmployee has made, and, to conceived or developed in the Knowledge performance of the Company as of his duties until the date of this Agreement, no action is threatened as well as in writing all such Inventions Employee will make, conceive or pending challenging develop in the validity or enforceability future during the term of any Registered IP that is issued or registered. To the Knowledge of employment agreement between the Employee and the Company, no third party has infringed dated September 7, 2007 (the "Employment Agreement") and in relation to the performance of it, and all such Inventions shall be deemed acquired by the Company without the payment of any specific compensation therefor, in addition to the overall compensation provided for under the Employee's Employment Agreement, which was negotiated to include the activity as described by this paragraph. The Employee shall inform the Company of any and all such Inventions or misappropriateddevelopments immediately in writing and shall assist the Company in processing filings and/or formalizing in any way the Company's rights on such Inventions (including, or is infringing or misappropriatingbut not limited to, the filing of patent applications, any material IP Right filings, the execution of formal assignment of rights deeds, the Company or any Subsidiary.
(b) The Company and each of its Subsidiaries has the right and operational ability to exploit all IP Rights necessary to enable the Company and its Subsidiaries to conduct their business substantially in the manner in which their business is currently being conducted. Neither the Company nor any Subsidiary has infringed, improperly disclosed or misappropriated the IP Rights signature of any third party. Neither document and the Company nor any Subsidiary has been the subject performance of any suit, arbitration or administrative proceeding since January 1, 2007 alleging, or received any other written notices from any third party since January 1, 2007: (i) alleging activity that the Company may deem necessary or useful to secure any Subsidiary has infringed, improperly disclosed, misappropriated, converted or otherwise damaged the IP Rights of any third party; or (ii) inviting or demanding that the Company or a Subsidiary take a license in order to avoid the future infringement of IP Rights of a third party.
(c) Neither the Company nor any Subsidiary has entered into, except in the ordinary course of business under standard forms of the Company’s or its Subsidiaries’ Contracts made available to Parent, any written agreement to indemnify, defend or hold harmless any third party for or against any infringement, misappropriation, or other conflict with the IP Rights of any third party. There are no suits or actions pending or, to the Knowledge of the Company, threatened against the Company or any Subsidiary in which it is alleged that the Company or any Subsidiary has infringed, misappropriated or improperly disclosed the IP Rights of any third party.
(d) The Company and its Subsidiaries have taken and are taking the following steps, to the extent that such steps are commercially reasonable and necessary to establish, perfect, and defend their ownership of Registered IP and Company IP or their right to use licensed third party IP Rights:
(i) using appropriate patent, trademark and copyright designations on products and in marketing materials; (ii) complying with all legal requirements and all filings, payments, and other actions required to be made or taken to maintain each item of Registered IP rights on such Inventions) in full force and effect; (iii) requiring all employees and contractors who have invented inventions covered by patents owned by the Company or Subsidiary, or were involved in theany country.
Appears in 1 contract