TECHNOLOGY TRANSFER AGREEMENT
This TECHNOLOGY TRANSFER AGREEMENT (the "Amended Agreement") is dated as
of February 2, 1996, by and between Rae Technology, Inc., a California
corporation ("Transferor"), and NetObjects, Inc., a Delaware corporation
("Transferee").
R E C I T A L S
WHEREAS, Transferor and Transferee have entered into that certain
Technology License Agreement, dated as of December 21, 1995 (the "Former
Agreement"), pursuant to which Transferor granted to Transferee an exclusive
license of certain proprietary computer software commonly referred to by
Transferor as the "Solo Technology" for a limited field of use, in exchange for
the issuance of 10,000,000 shares of Series A Preferred Stock of Transferee to
Transferor;
WHEREAS, to achieve the business objectives of the parties and to permit
full implementation of the "Solo Technology" by Transferee, the parties now
desire to amend and restate the Former Agreement, among other things, to provide
for an assignment and transfer of all of Transferor's rights, title and
interests in and to the "Solo Technology" to Transferee, with Transferee
granting back to Transferor a worldwide, perpetual, royalty-free, assignable,
exclusive license, with right of sublicense, in the Field of Use (as hereinafter
defined) with respect to all of the transferred technology and a limited,
nonexclusive, nontransferable license in the Field of Use with respect to
Transferee's modifications of the "Solo Technology" for the sole purpose of
developing and marketing software applications for the stand-alone Personal
Information Management (PIM) market (as hereinafter defined); and
WHEREAS, the parties now desire to amend and restate the Former Agreement
to provide in its entirety as set forth below.
NOW, THEREFORE, for good and valuable consideration, the receipt and
adequacy of which are hereby acknowledged, the parties hereby agree as follows:
A G R E E M E N T
1. AMENDMENT, SUPERSEDING EFFECT.
The Former Agreement is hereby amended as set forth in this Amended
Agreement. All provisions of the Former Agreement other than Section 3 and
Exhibit A thereof shall be superseded by the terms and provisions of this
Amended Agreement to the extent provided herein.
2. DEFINITIONS.
Terms used in this Amended Agreement shall have the meaning set forth
below, unless defined elsewhere or as the context may require:
(a) "Technology" shall mean all of the computer software programs,
technology and intellectual property rights of Transferor in and to that certain
computer software technology commonly referred to by Transferor as the "Solo
Technology," as set forth in more detail in Exhibit A of the Former Agreement,
including without limitation, all presently existing object code, source code,
and all flowcharts, algorithms and documentation related to such software
programs.
(b) "Confidential Information" shall mean all information relating to the
Technology (including Technical Information and Business Records) disclosed or
made available to Transferee, its employees or its representatives by Transferor
that is marked, designated or described as confidential by Transferor.
(c) "Intellectual Property Rights" shall mean all Confidential Information
and, whether or not the following constitute Confidential Information, all of
Transferor's United States and foreign copyrights, know-how, patents, licenses,
patent applications, inventions, trade secrets, formulas, algorithms, processes,
methodologies, designs, schematics, diagrams and the like pertaining to the
Technology, or the Resulting Technology, as the case may be, and all of
Transferee's trademark, service xxxx and trade name rights to "NetObjects";
provided, however, that the Intellectual Property Rights shall not include any
trademark rights relating to the trademark "Solo" or any other trademarks of
Transferor.
(d) "Field of Use" shall mean all commercial applications of the
Technology and the related Technical Information and Intellectual Property
Rights to derive or create personal information manager programs, which are
single user software programs primarily intended to be used by individuals to
manage personal data such as personal contacts, events, schedules, tasks,
projects, notes, pictures and lists of documents, files and other personal
information.
(e) "Resulting Solo-N Technology" shall mean all the results of the
research, development and engineering work performed by Transferee after the
effective date of this Amended Agreement with respect to the Technology as it
existed on the effective date of the Former Agreement, including, without
limitation, all derivative works, modifications, improvements, advanced software
programs, patentable inventions or copyrightable material or any combination
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thereof that will allow commercial exploitation of the Technology in the Field
of Use.
(f) "Resulting Solo-R Technology" shall mean all the results of the
research, development and engineering work performed by Transferor after the
effective date of this Amended Agreement with respect to the Technology as it
existed on the effective date of the Former Agreement, including, without
limitation, all derivative works, modifications, improvements, advanced software
programs, patentable inventions or copyrightable material or any combination
thereof that will allow commercial exploitation of the Technology in the Field
of Use.
(g) "Business Records" shall mean all non-disclosure agreements, employee
and consultant agreements regarding the protection of Confidential Information,
business plans, marketing information, financial information, notes, diaries,
logs, calendars, accounting records, non-technical research results, product
ideas, and all other written materials other than Technical Information.
(h) "Technical Information" shall mean all data in written, tangible or
machine-readable form relating to the Technology and the Intellectual Property
Rights related thereto, which are revealed to Transferee by Transferor pursuant
to the terms of this Amended Agreement.
3. TRANSFER OF TECHNOLOGY, CROSS LICENSE.
(a) Subject to the terms and conditions herein, Transferor hereby assigns,
conveys, and otherwise transfers to Transferee all of Transferor's rights, title
and interests in and to the Technology and all of the Intellectual Property
Rights, Confidential Information and Technical Information pertaining to the
Technology. Transferor hereby assigns, conveys, and otherwise transfers to
Transferor all of Transferor's rights and interests in and to the Business
Records of Transferor that relate to the Technology and the use thereof outside
of the Field of Use or to the proposed business of Transferee as described in
that certain Business Plan dated December 4, 1995.
(b) Transferor further affirms the right of Transferee to prevent any
unauthorized use and disclosure of the Technology and the Intellectual Property
Rights, Confidential Information and Technical Information pertaining thereto,
and affirms the right of Transferee to disclose all such information as
Transferee may deem appropriate in the conduct of its business.
(c) Transferor hereby assigns, conveys and otherwise transfers to
Transferee all rights, title and interests of Transferor in and to the
trademark, service xxxx and trade name "NetObjects" and all logos currently
associated therewith, and in and to
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Transferor's "Solo" or "S.O.L.O." trademarks and the goodwill associated
therewith. Transferor does not transfer, and Transferee shall have no right
in and to any other trademarks or service marks of Transferor.
(d) Transferee hereby grants to Transferor exclusively in the Field of Use
a transferable, worldwide, royalty-free, perpetual, exclusive, assignable, right
and license, with right of sublicense to Transferor's customers, to use and
reproduce the Technology and the Intellectual Property Rights, Confidential
Information, Technical Information and Business Records related thereto, and to
prepare derivative works from (including, but not limited to, the Resulting
Solo-R Technology) make, use, disclose, perform, display, sell, offer to sell,
identify and distribute computer products incorporating the same to be used
solely by end users.
(e) Transferee hereby grants to Transferor exclusively in the Field of Use
a nontransferable, worldwide, royalty-free, perpetual, nonexclusive,
nonassignable, right and license, without right of sublicense to Transferor's
customers, to use and reproduce the Resulting Solo-N Technology and the
Intellectual Property Rights, Confidential Information and Technical Information
related thereto, and to prepare derivative works from, make, use, disclose,
perform, display, sell, offer to sell, identify and distribute computer products
incorporating the same only for use in object code form by end-users.
4. ISSUANCE OF SHARES.
Transferor and Transferee hereby confirm the issuance of 10,000,000 shares
of Series A Preferred Stock to Transferee on December 21, 1995, as full
consideration for the transfer, assignment and conveyance contemplated herein,
and Transferor and Transferee agree that no additional shares or any other
consideration shall be issued or paid to Transferor pursuant to this Amended
Agreement. Transferor hereby agrees that Transferee's ability to obtain equity
financing through the sale of shares of Transferee's Series B Preferred Stock to
certain investors, including Norwest Equity Partners V and Venrock Associates
(the "Series B Preferred Financing"), based on this Amended Agreement
constitutes adequate consideration for the covenants and performance of
Transferor hereunder.
5. TITLE AND PROPRIETARY RIGHTS.
(a) Title and ownership to (i) the Technology, the Resulting Solo-N
Technology, and all of the Intellectual Property Rights, Confidential
Information and Technical Information related to each and (ii) the trademark,
service xxxx
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and trade name "NetObjects" and the logos currently associated therewith shall
reside in Transferee.
(b) Title and ownership to the Resulting Solo-R Technology in the Field of
Use and the Intellectual Property Rights related thereto shall reside in
Transferor.
6. TECHNICAL INFORMATION.
On or before the closing date for the Series B Preferred Financing,
Transferor will transfer and deliver to Transferee a complete copy of all of the
Technology and all of the Confidential Information and Technical Information
related thereto to the extent that Transferor has not furnished them to
Transferee already pursuant to the terms of the Former Agreement.
7. SUBSEQUENT INVENTIONS, FURTHER ASSURANCES.
(a) All derivative works, modifications and improvements to the Technology
and all inventions of whatsoever kind or nature incorporating or otherwise
utilizing any of the Intellectual Property Rights related to the Technology
developed by Transferee subsequent to the date of this Amended Agreement,
including, but not limited to, the Resulting Solo-N Technology, shall be owned
by Transferee; provided that all such derivative works, modifications and
improvements to the Technology developed by Transferee subsequent to the date of
this Amended Agreement shall be licensed to Transferor pursuant to the
provisions of Section 3(e) hereof.
(b) Transferee shall have full right to cause United States and foreign
copyright applications and patent applications to be prepared and prosecuted
with respect to the Technology at its own expense, and all such applications and
resulting copyrights and patents shall be owned by Transferee. Transferor shall
do all such acts and execute, acknowledge and deliver materials, including
Technical Information, and all instruments or writings reasonably requested and
necessary for Transferee to perfect its title to the Technology, to secure
copyrights and letters patent whenever possible, as well as all reissues,
renewals and extensions thereof. Nothing contained in this Amended Agreement,
however, shall be construed as a representation or warranty by Transferor that
any portion of the Technology shall be copyrightable or patentable.
(c) Transferor shall have full right to cause United States and foreign
copyright applications and patent applications to be prepared and prosecuted
with respect to the Resulting Solo-R Technology in the Field of Use at its own
expense, and all such applications and resulting copyrights and patents shall be
owned by Transferor. Transferee shall do all such acts and execute, acknowledge
and deliver all instruments or writings reasonably requested and
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necessary for Transferor to perfect its title to the Resulting Solo-R Technology
in the Field of Use, to secure copyrights and letters patent whenever possible,
as well as all reissues, renewals and extensions thereof. Nothing contained in
this Amended Agreement, however, shall be construed as a representation or
warranty by Transferee that any portion of the Resulting Solo-R Technology in
the Field of Use shall be copyrightable or patentable.
(d) Transferee shall have full right to cause United States and foreign
trademark applications to be prepared and prosecuted with respect to the name
"NetObjects," at its own expense, and all such applications and resulting
trademarks, service marks and trade names shall be owned by Transferee.
Transferor shall do all such acts and execute, acknowledge and deliver all
instruments or writings reasonably requested and necessary for Transferee to
perfect its title to the name "NetObjects," to secure trade name and trademark
registrations whenever possible, as well as all renewals and extensions thereof.
Nothing contained in this Amended Agreement, however, shall be construed as a
representation or warranty by Transferee that Transferee shall be able to obtain
the trade name or trademark rights to the name "NetObjects."
8. CONFIDENTIAL INFORMATION.
(a) Transferor understands that all Confidential Information received by
Transferee from Transferor is and will remain proprietary and confidential to
Transferor, and Transferee and Transferor shall be obligated to protect and
maintain the confidentiality of the same. Transferor shall take all necessary
and proper action to preserve the secrecy and prevent disclosure of such
Confidential Information. Transferor shall not disclose Confidential
Information except in connection with its exercise of the licenses received
pursuant to Section 3(d) and 3(e) hereof. Confidential Information shall be
disclosed or made available to Transferor's employees or representatives only on
a need-to-know basis to the extent necessary for Transferor to enjoy the
benefits of the license granted by Transferee to Transferor in Section 3(d) and
3(e) of this Amended Agreement. Transferor shall establish a reasonable
security procedure to prevent unauthorized access to the Confidential
Information.
(b) The obligation imposed by this Section 8 to protect and not to
disclose Confidential Information shall continue during the term of this Amended
Agreement and thereafter, except with respect to such Confidential Information
that sooner becomes lawfully within the public domain.
9. WARRANTIES AND DISCLAIMERS OF TRANSFEROR.
(a) Transferor represents and warrants that it is the owner of or
otherwise has the right to transfer and assign the Technology, the Intellectual
Property Rights, the Confidential Information and the Technical Information
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provided in Section 3 and otherwise to perform its obligations under this
Amended Agreement.
(b) Transferor warrants that, to the best of its knowledge, the technology
and the intellectual property rights related thereto do not infringe any patent,
copyright or trade secret right of any third party.
(c) TRANSFEROR DOES NOT WARRANT THAT THE TECHNOLOGY OR THE INTELLECTUAL
PROPERTY RIGHTS RELATED THERETO WILL MEET ANY SPECIFIED OR UNSPECIFIED
REQUIREMENTS OR OPERATE IN ANY SPECIFIED OR UNSPECIFIED COMBINATIONS THAT
TRANSFEREE MAY SELECT FOR USE; THAT THE TECHNOLOGY OR THE INTELLECTUAL PROPERTY
RIGHTS RELATED THERETO ARE ERROR FREE; THAT ALL DEFECTS IN THE TECHNOLOGY WILL
BE CORRECTED; OR THAT THE TECHNOLOGY IS FREE FROM ANY VIRUS, SOFTWARE ROUTINE OR
OTHER PROGRAM DESIGNED TO PERMIT UNAUTHORIZED ACCESS, TO DISABLE, TO ERASE, OR
OTHERWISE TO HARM SOFTWARE, HARDWARE OR DATA, OR TO PERFORM ANY OTHER SUCH
ACTIONS. NO ORAL OR WRITTEN STATEMENT BY TRANSFEROR OR BY A REPRESENTATIVE OF
TRANSFEROR SHALL CREATE A WARRANTY OR INCREASE THE SCOPE OF ANY WARRANTY GIVEN.
(d) TRANSFEROR DOES NOT MAKE ANY WARRANTY, EXPRESS OR IMPLIED, STATUTORY
OR OTHERWISE WITH RESPECT TO THE TECHNOLOGY OR THE INTELLECTUAL PROPERTY RIGHTS
RELATED THERETO, INCLUDING ANY WARRANTY OF MANUFACTURABILITY, MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE. TRANSFEROR DOES NOT ASSUME OR AUTHORIZE ANY
OTHER PERSON TO ASSUME FOR IT ANY LIABILITY IN CONNECTION WITH THE USE OF THE
INTELLECTUAL PROPERTY RIGHTS RELATED TO THE TECHNOLOGY, OR THE SALE, USE OR
OPERATION OF ANY PRODUCT UTILIZING THE TECHNOLOGY.
(e) TRANSFEROR SHALL NOT BE LIABLE FOR ANY INJURY OR DAMAGE TO TRANSFEREE,
OR TO ANY OTHER PERSON CAUSED DIRECTLY OR INDIRECTLY BY THE USE OF THE
TECHNOLOGY OR THE SALE, USE OR OPERATION OF THE TECHNOLOGY OR ANY DERIVATIVE
WORKS USING THE SAME. IN NO EVENT SHALL TRANSFEROR BE LIABLE TO ANY THIRD PARTY
FOR ANY LOSS OR INJURY TO EARNINGS, PROFITS, OR GOODWILL, OR FOR ANY DIRECT,
SPECIAL, INDIRECT, OR CONSEQUENTIAL DAMAGES ARISING OUT OF TRANSFEREE'S USE OF
THE TECHNOLOGY, THE INTELLECTUAL PROPERTY RIGHTS, THE CONFIDENTIAL INFORMATION
OR THE TECHNICAL INFORMATION.
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10. LIMITATION OF LIABILITY AND INDEMNIFICATION.
(a) Except with respect to the breach of any representation or warranty
contained in Section 9 hereof, Transferee agrees that Transferor will not be
liable for defense or indemnity with respect to any claim against Transferee by
any third party arising from Transferee's possession, use or distribution of the
Technology, the Resulting Solo-N Technology and/or the Intellectual Property
Rights, Confidential Information and Technical Information relating to each, or
of products incorporating the same.
(b) Except as otherwise provided in subsection (a), Transferee agrees to
indemnify and hold harmless Transferor from and against any and all liability,
loss, suit, damages, claims and proceedings, including reasonable attorneys'
fees, expenses and costs, arising out of or connected with the sale, sublicense,
commercialization or use of any of the Technology, the Resulting Solo-N
Technology, the Intellectual Property Rights, or products incorporating such
Technology, Resulting Solo-N Technology, or Intellectual Property Rights by
Transferee, its customers or other third parties.
11. SEVERABILITY.
The provisions of this Amended Agreement are severable, and if any one or
more such provisions are judicially determined to be illegal or otherwise
unenforceable, in whole or in part, the remaining provisions or portions of this
Amended Agreement shall nevertheless be binding on and enforceable by and
between the parties hereto.
12. ASSIGNMENT, SUCCESSORS AND ASSIGNS.
This Amended Agreement and all of the terms hereof shall be binding upon
and inure to the benefit of the parties hereto and their respective successors
and assigns, except that the rights of Transferor pursuant to Section 3(e)
hereof shall not be assignable without Transferee's prior written consent, which
Transferee may withhold in its sole and absolute discretion.
13. EXPORT CONTROL LAWS.
(a) Transferee agrees to comply with all laws, rules and regulations
applicable to the export of the Technology, the Intellectual Property Rights or
products incorporating the Technology or the Intellectual Property Rights, or
the Technical Information. Specifically, Transferee shall not export,
re-export, transfer, or license the Technology, the Intellectual Property
Rights, or the Technical Information, or any documentation thereof, in violation
of any United States laws and regulations as may from time to time be
applicable.
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(b) Transferor agrees to comply with all laws, rules and regulations
applicable to the export of the Technology, the Resulting Solo-R Technology, the
Resulting Solo-N Technology and the Intellectual Property Rights relating to
each, or products incorporating any of the foregoing. Specifically, Transferor
shall not export, re-export, transfer or license the Technology, the Resulting
Solo-R Technology, the Resulting Solo-N Technology or the Intellectual Property
Rights related to each, or any documentation thereof, in violation of any United
States laws and regulations as may from time to time be applicable.
14. EFFECTIVE DATE.
This Amended Agreement has been entered into by Transferor and Transferee
as of the date of the closing of the Series B Preferred Financing. Upon
execution this Amended Agreement shall be effective as of December 21, 1995 for
all purposes.
15. GENERAL.
(a) All notices and other communications required or permitted hereunder
shall be in writing and shall be deemed effectively given upon personal delivery
or on the day sent by facsimile transmission if a true and correct copy is sent
the same day by first class mail, postage prepaid, or by dispatch by an
internationally recognized express courier service, and in each case addressed
to the address of the parties as set forth below, unless such party first
notifies the other parties hereto in writing of any change in its address:
If addressed to Transferor: Rae Technology, Inc.
0000 Xxxxxxxx Xxxx, Xxxxx 000
Xxxxxxx Xxxx, XX 00000
Attention: President
If addressed to Transferee: NetObjects, Inc.
0000 Xxxxxxxx Xxxx, Xxxxx 000
Xxxxxxx Xxxx, XX 00000
Attention: President
(b) Neither party has the authority to assume or create any obligation for
or on behalf of the other party, express or implied.
(c) The Former Agreement, as amended by this Amended Agreement, together
with Exhibit A attached hereto, constitutes the entire agreement between the
parties relating to the subject matter hereunder and supersedes all prior or
contemporaneous oral or written agreements and understandings between the
parties. No modification of this Amended Agreement shall be binding on any
party unless it is in writing and signed by the party to be charged.
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No waiver of any provision of this Amended Agreement shall be effective unless
made in writing. No waiver of any breach of any provision of this Amended
Agreement shall constitute a waiver of any subsequent breach of the same or of
any other provision of this Amended Agreement.
(d) In the event it is necessary to enforce this Amended Agreement or in
the event of any dispute between the parties with respect to its interpretation,
validity, or performance, the prevailing party in any such action shall be
entitled to costs of suit and reasonable attorneys' fees.
(e) The validity, performance and interpretation of this Amended Agreement
shall be governed by the laws of the State of California.
IN WITNESS WHEREOF, this Amended Agreement is executed as of the date and
year first above written.
RAE TECHNOLOGY, INC. NETOBJECTS, INC.
By: /s/ Xxxxx Xxxxx By: /s/ Xxxxx Xxxxx
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Its: CEO Its: CEO
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