This PATENT LICENSE AGREEMENT (this “Agreement”) is made and entered into as of ____________________, 2013 (the “Effective Date”) by and between British Telecommunications plc, a company organized and existing under the laws of England having offices at 81 Newgate Street, London EC1A 7AJ, UK (“BT” or “Licensor”), and _______________________, a corporation organized and existing under the laws of _______, having offices at _________________________________ (hereinafter referred to as “Licensee”). Licensor and Licensee are individually referenced herein as a “party,” and collectively as the “parties.”
WHEREAS, Licensor has discussed with Licensee a variety of structures and pricing alternatives available to Licensee and provided Licensee with a copy of Licensor’s Licensing and Settlement Policies as attached hereto at Exhibit A and Licensee has opted to enter into this Agreement;
NOW, THEREFORE, in consideration of the above promises and mutual covenants hereinafter contained, the parties agree as follows:
As used in this Agreement, the following terms shall have the following meanings:
1.1 “Affiliate” means, with respect to a party, any individual, trust, corporation, partnership, limited liability company, association, unincorporated organization or other legal entity that is controlling, controlled by or is under common control with such party. With respect to Licensee, “Affiliate” also includes any resellers of Licensed Products on behalf of Licensee. For purposes of this Agreement, “control” shall exclusively mean the ownership of more than fifty percent (50%) of the outstanding voting shares of such an entity.
1.2 “Licensed Patents” means only those patents listed in Exhibit C. The definition of Licensed Patents expressly excludes any patents or patent applications owned or controlled by BT or its Affiliates that are not expressly set forth in this definition.
1.3 “Licensed Products” means the products and services of Licensee and its Affiliates that practice one or more claims of the Licensed Patents but only insofar as they are required to participate in the SIP Trunking Field of Use. More specifically, by way of example and without limiting the generality of the exclusions stated above, the definition of Licensed Products excludes the products and services of Licensee and its Affiliates that provide and/or facilitate the establishment, modification, and termination of multimedia sessions through IMS specifications.
1.4 “SIP Trunking Field of Use” means only: (i) those methods for the establishment, modification, and termination of multimedia sessions through the Session Initiation Protocol (“SIP”) as specified in Sections 1 through 18 of RFC 3261 (June 2002) and as specified in the SIPConnect 1.1 Technical Recommendation as set out in the specifications of the SIP Forum and developments and derivatives thereof, excluding any implementation covered by any other area of these specifications; and (ii) those methods for the measurement and maintenance of network elements through Simple Network Management Protocol (“SNMP”) to support the Session Initiation Protocol as specified in RFC 3411 (December 2002) and developments and derivatives thereof, excluding any implementation covered by any other area of these specifications. The definition of SIP Trunking Field of Use excludes any set of RFC specifications and/or standards where SIP /or SNMP specifications are a necessary subpart thereof. More specifically, by way of example and without limiting the generality of the exclusions stated above, the definition of SIP Trunking Field of Use excludes the IP Multimedia Subsystem (“IMS”) specifications.
1.5 “Third Party” means any person or entity other than a party to this Agreement.
2.1 License. Subject to the payment provided under Section 3 and Licensee’s compliance with the terms and conditions of this Agreement, Licensor hereby grants to Licensee and its Affiliates a fully paid-up, non-exclusive, worldwide license to make, have made, use, import, export, distribute, sell, offer for sale, develop and advertise under the Licensed Patents solely with respect to the Licensed Products.
2.2 Licensor Release of Licensee. Licensor releases Licensee and its Affiliates, officers, directors, managers, members, employees, agents, experts, consultants and attorneys from liability related to: (i) infringement of the Licensed Patents solely with respect to the Licensed Products; and (ii) the conduct of settlement negotiations (except for representations or obligations expressly included in this Agreement)
2.3 Licensor Covenant Not to Sue Licensee. In consideration of the terms herein, Licensor covenants not to sue Licensee and its Affiliates for infringement of the Licensed Patents solely with respect to the Licensed Products.
2.4 Licensee Release of Licensor. Licensee releases Licensor and its Affiliates, officers, directors, managers, members, employees, agents, experts, consultants and attorneys from liability related to: (i) the Licensed Patents solely with respect to the Licensed Products; and (ii) the conduct of settlement negotiations (except for representations or obligations expressly included in this Agreement)
2.5 Licensee Covenant Not to Sue Licensor. In consideration of the terms herein, Licensee covenants not to sue Licensor and its Affiliates for any claims related to the Licensed Patents. Licensee further covenants, represents and warrants that it shall not contest or assist in the contest in any forum, including Federal Courts, whether under 28 U.S.C. §§ 2201-2202 or not, United States Patent and Trademark Office, and/or the International Trade Commission, that the Licensed Patents are valid and enforceable. This license shall terminate upon breach of this provision, notwithstanding the cure provisions of 4.2 below.
2.6 No Other Rights / No Exhaustion. No rights or covenants are granted under any patents except as expressly provided herein, whether by implication, estoppel or otherwise. No right to grant covenants, rights, sublicenses or to become a reseller of Third Parties’ services is granted under this Agreement. The parties agree that the licenses, releases and covenants set forth in this Section 2 expressly excludes any methods, systems, products, services and/or components of any Third Party (regardless of whether such methods, systems, products services and/or components are independent of or combined with any Licensed Product). The parties further agree that this Agreement does not cut off Licensor’s rights to enjoin, control or extract royalties with respect to methods, systems, products, services and/or components of any Third Party.
3.1 Payment. In consideration of the license, release and covenant granted by Licensor, Licensee agrees to pay to Licensor the license fee(s) in the amount(s) as set forth in Schedule A. The first installment of the annual license fees or the lump sum license fee, whichever the case may be as set forth in Schedule A, shall be paid by Licensee to Licensor no later than five (5) business days after the Effective Date by wire transfer to the following account:
Account Number: _______________
Routing Number: ________________
Licensor Tax ID Number: _____________
In case of the annual licensing fee arrangement as set forth in Schedule A, Licensee agrees to pay to Licensor the annual license fee for each twelve (12)-month period by wire transfer to the above account no later than five (5) business days after the written annual report is made available to Licensor for a given twelve (12)-month period as provided in Section 3.2.
3.2 Reporting. In case of annual licensing fee arrangement as set forth in Schedule A, Licensee agrees to make written annual reports to Licensor within thirty (30) days after the first days of each twelve (12)-month period during the term of the Agreement as set forth in Section 4.1 and as of such dates, stating in each report the number, description, and the aggregate revenues of each Licensed Product sold, delivered, or otherwise disposed of during the preceding twelve (12) months and on which annual licensing fee is payable as provided in Schedule A. Each report shall include a copy of the most recent Federal Communications Commission (FCC) 499 Filer Form prepared on behalf of the Licensee.
3.3 Taxes / Costs. All taxes imposed as a result of the existence of this Agreement or the performance hereunder shall be paid by the party required to do so by applicable law. The parties agree that they shall bear their own costs and attorneys’ fees relating to or arising from the negotiation of this Agreement.
4.1 Term. The term of this Agreement shall commence upon the Effective Date and shall continue until five (5) years from the Effective Date or the expiration of the last-to-expire Licensed Patent, whichever is earlier, unless earlier terminated by Licensor as set forth below.
4.2 Termination. If and only if Licensee or any Licensee Affiliate or any valid assignee of Licensee (subject to the provisions of Section 5 below) breaches this Agreement, and does not cure such breach within ten (10) days after written notice thereof from Licensor (such notice being required only if Licensor reasonably believes such breach is capable of being cured), the license, releases and covenants granted by Section 2 of this Agreement may automatically terminate after such ten (10)-day period so long as the breach remains uncured. Notwithstanding the preceding language, Licensor may terminate immediately upon a breach of Sections 2.5 or 3.1, or at any other time Licensor reasonably determines such breach is not capable of being cured. Upon change of control of Licensee, Licensee agrees that Licensor may terminate this Agreement based on Licensor’s sole discretion.
4.3 Survival. In the event of termination pursuant to Section 4.2, the license, releases and covenants granted to Licensee and its Affiliates hereunder shall terminate as of the date that such termination takes effect and the non-breaching party shall retain its remedies for such breach. The provisions of Sections 1, 2 (2 only as applicable to the non-breaching party), 3, 4, 5 and 6 will survive any termination of this Agreement.
5.1 No Assignment or Transfer. Licensee agrees that it may not assign or transfer (by contract, merger, succession, sale of business, change of control, operation of law or otherwise) its rights under this Agreement without the prior written consent of Licensor and any attempt to assign without such permission will be void. Licensee agrees that Licensor’s such written consent may only be provided based on Licensor’s sole discretion.
6.1.1 Licensor Representations: Licensor represents and warrants as of the Effective Date that: (i) it owns the Licensed Patents, and has the right to grant the license, releases and covenants with respect to the Licensed Patents of the full scope set forth herein; (ii) it has not assigned or otherwise transferred to any other person any rights to the Licensed Patents that would prevent Licensor from entering into this Agreement; and (iii) the person executing this Agreement on behalf of Licensor has the full right and authority to enter into this Agreement on Licensor’s behalf.
6.1.2 Licensee Representations: Licensee represents and warrants as of the Effective Date that: (i) it has the right to grant releases and covenants of the full scope set forth herein; (ii) the person executing this Agreement on behalf of Licensee has the full right and authority to enter into this Agreement on Licensee’s behalf; and (iii) Licensee has been provided with and has reviewed the copy of Licensor’s Licensing and Settlement Policies as attached hereto at Exhibit A prior to entering into this Agreement.
6.1.3 No Warranties. Nothing contained in this Agreement shall be construed as: (i) a warranty or representation by either party that any manufacture, sale, use or other disposition of products by the other party has been or will be free from infringement of any patents; (ii) an agreement by either party to bring or prosecute actions or suits against Third Parties for infringement, or conferring any right to the other party to bring or prosecute actions or suits against Third Parties for infringement; (iii) conferring any right to the other party to use in advertising, publicity, or otherwise, any trademark, trade name or names of either party, or any contraction, abbreviation or simulation thereof without the prior written consent of the other party ; or (iv) conferring by implication, estoppel or otherwise, upon either party, any right (including a license) under other patents except for the rights expressly granted hereunder.
6.2 Confidentiality. From and after the Effective Date, neither party shall disclose the terms of this Agreement except:
6.2.1 with the prior written consent of the other party; except by the Licensor to disclose that an agreement exists;
6.2.2 to any governmental body having jurisdiction and specifically requiring such disclosure;
6.2.3 in response to a valid subpoena or as otherwise may be required by law;
6.2.4 for the purposes of disclosure in connection with the Securities and Exchange Act of 1934, as amended, the Securities Act of 1933, as amended, and any other reports filed with the Securities and Exchange Commission, or any other filings, reports or disclosures that may be required under applicable laws or regulations;
6.2.5 to a party’s accountants, legal counsel, tax advisors and other financial and legal advisors, subject to obligations of confidentiality and/or privilege at least as stringent as those contained herein;
6.2.6 as required during the course of litigation and subject to protective order; provided however, that any production under a protective order would be protected under an “Attorneys Eyes Only” or higher confidentiality designation; or
6.2.7 with obligations of confidentiality at least as stringent as those contained herein, to a counterparty in connection with a proposed merger, acquisition, financing or similar transaction; provided, however, that prior to any such disclosure pursuant to Section 6.2.3 hereof, the party seeking disclosure shall promptly notify the other party and, that prior to any such disclosure, take all reasonable actions in an effort to minimize the nature and extent of such disclosure. In furtherance hereof, Licensee will direct its counsel to promptly return to Licensor any documents provided to Licensee or its counsel by Licensor.
6.3 Notices. All notices required or permitted to be given hereunder shall be in writing and shall be delivered by hand, or if dispatched by prepaid air courier with package tracing capabilities or by registered or certified airmail, postage prepaid, addressed as follows:
If to BT:
British Telecommunications plc
Intellectual Property Dept.
If to Licensee:
Such notices shall be deemed to have been served when received by addressee. Either party may give written notice of a change of address and, after notice of such change has been received, any notice or request shall thereafter be given to such party as above provided at such changed address.
6.4 Publicity. Licensee will not issue a press release or any other announcement regarding this Agreement or the relationship contemplated herein unless Licensor provides prior consent in writing. The parties shall direct their representatives not to make any disclosures of the terms of this Agreement. Notwithstanding the foregoing and Section 6.2 above, the parties may each issue the press release attached hereto at Exhibit B.
6.5 Use of the BT plc Name. Licensor hereby permits Licensee to use the tag line “Licensed by BT plc as part of its world-wide patent licensing programme” strictly in respect of the marketing and promotion of Licensed Products (including on websites owned or controlled by Licensee); provided however, that Licensee’s use of the tag line always complies with any directions laid down or specifications provided by Licensor to Licensee from time to time for use of the tag line.
6.6 Governing Law / Jurisdiction. This Agreement and matters connected with the performance thereof shall be construed, interpreted, applied and governed in all respects in accordance with the laws of the United States of America and the State of New York, without reference to conflict of laws principles. Licensor and Licensee agree (a) that all disputes and litigation regarding this Agreement, its construction and matters connected with its performance be subject to the exclusive jurisdiction of the state and federal courts in the Southern District of New York located in New York, NY (the “Court”), and (b) to submit any disputes, matters of interpretation, or enforcement actions arising with respect to the subject matter of this Agreement exclusively to the Court. The parties hereby waive any challenge to the jurisdiction or venue of the Court over these matters.
6.7 Sophisticated Parties Represented by Counsel. The parties each acknowledge, accept, warrant and represent that (i) they are sophisticated parties represented at all relevant times during the negotiation and execution of this Agreement by counsel of their choice, and that they have executed this Agreement with the consent and on the advice of such independent legal counsel, and (ii) they and their counsel have determined through independent investigation and robust, arm’s-length negotiation that the terms of this Agreement shall exclusively embody and govern the subject matter of this Agreement.
6.8 Bankruptcy. Each party irrevocably waives all arguments and defenses arising under 11 U.S.C. 365(c)(1) or successor provisions to the effect that applicable law excuses the party, other than the debtor, from accepting performance from or rendering performance to an entity other than the debtor or debtor in possession as a basis for opposing assumption of the Agreements by the other party in a case under Chapter 11 of the Bankruptcy Code to the extent that consent is required under 11 U.S.C. § 365(c)(1) or any successor statute.
6.9 Severability. If any provision of this Agreement is held to be illegal or unenforceable, such provision shall be limited or eliminated to the minimum extent necessary so that the remainder of this Agreement will continue in full force and effect and be enforceable. The parties agree to negotiate in good faith an enforceable substitute provision for any invalid or unenforceable provision that most nearly achieves the intent of such provision.
6.10 Entire Agreement. The parties acknowledge, accept, warrant and represent that (i) this is an enforceable agreement; (ii) this Agreement embodies the entire and only understanding of each of them with respect to the subject matter of the Agreement, and merges, supersedes and cancels all previous representations, warranties, assurances, conditions, definitions, understandings or any other statement, express, implied, or arising by operation of law, whether oral or written, whether by omission or commission between and among them with respect to the subject matter of the Agreement; (iii) no oral explanation or oral information by either party hereto shall alter the meaning or interpretation of this Agreement; (iv) the language of this Agreement has been approved by counsel for each of them, and shall be construed as a whole according to its fair meaning, and (v) none of them (nor their respective counsel) shall be deemed to be the draftsman of this Agreement in any action which may hereafter arise with respect to the Agreement.
6.11 Modification; Waiver. No modification or amendment to this Agreement, nor any waiver of any rights, will be effective unless assented to in writing by the party to be charged, and the waiver of any breach or default will not constitute a waiver of any other right hereunder or any subsequent breach or default.
6.12 Construction; Language. Any rule of construction to the effect that ambiguities are to be resolved against the drafting party will not be applied in the construction or interpretation of this Agreement. As used in this Agreement, the words “include” and “including” and variations thereof, will not be deemed to be terms of limitation, but rather will be deemed to be followed by the words “without limitation.” The headings in this Agreement will not be referred to in connection with the construction or interpretation of this Agreement. This Agreement is in the English language only, which language shall be controlling in all respects, and all notices under this Agreement shall be in the English language.
6.13 Patent Marking. Licensee agrees to mark all Licensed Products in a manner consistent with the relevant statutes for giving appropriate patent notice. Where marking is to be performed but Licensed Products cannot be marked, the patent notice shall be placed on associated tags, labels, packaging, or accompanying documentation, either electronic or paper, as appropriate.
6.14 Counterparts. This Agreement may be executed in counterparts or duplicate originals, both of which shall be regarded as one and the same instrument, and which shall be the official and governing version in the interpretation of this Agreement. This Agreement may be executed by facsimile signatures or other electronic means and such signatures shall be deemed to bind each party as if they were original signatures.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be signed below by their respective duly authorized officers.
British Telecommunications plc
License Fee Arrangements
Option 1: Lump Sum License Fee
In the event that Licensee chooses Option 1, Licensee’s one-time lump sum license fee (“Lump Sum License Fee”) for the term of this Agreement is the greater of:
Provided, however, that:
In the event that Licensee chooses Option 2, Licensee’s annual license fee (“Annual License Fee”) for the term of this Agreement is the sum of:
Provided, however, that:
BT plc Policy for Licensing Certain Patents Relating to SIP Trunking
BT plc (“BT”) has adopted a policy that governs licenses, releases and/or covenants not to sue with respect to the certain issued patents and pending patent applications owned by BT plc that relate to SIP trunking.
BT’s settlement policy is as follows:
[Intentionally Left Blank]