Technology Usage License Agreement
Customize your technology license agreement for semiconductor collaborations
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Technology Usage License Agreement
This Technology Usage License Agreement (the “Agreement“) is made and entered into as of EFFECTIVE DATE (the “Effective Date“), by and between:
FOUNDRY NAME, a corporation organized and existing under the laws of JURISDICTION, having its principal place of business at ADDRESS (hereinafter referred to as the “LICENSOR“);
and
FABLESS COMPANY NAME, a corporation organized and existing under the laws of JURISDICTION, having its principal place of business at ADDRESS (hereinafter referred to as the “LICENSEE“).
LICENSOR and LICENSEE may be referred to individually as a “Party” and collectively as the “Parties.”
RECITALS
WHEREAS, LICENSOR is engaged in the business of semiconductor manufacturing and owns or controls certain proprietary technology, manufacturing processes, and intellectual property;
WHEREAS, LICENSEE is a fabless semiconductor company seeking to utilize LICENSOR’s manufacturing technology and processes for the development and production of integrated circuits;
WHEREAS, LICENSEE desires to obtain, and LICENSOR is willing to grant, a license to use certain proprietary technology and manufacturing processes under the terms and conditions set forth in this Agreement;
NOW, THEREFORE, in consideration of the mutual covenants and promises contained herein, and for other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the Parties hereby agree as follows:
1. DEFINITIONS
1.1 “Confidential Information“ means any and all technical and non-technical information provided by either Party to the other, including but not limited to patent applications, proprietary information, know-how, inventions, techniques, processes, algorithms, software programs, schematics, designs, contracts, customer lists, financial information, product development plans, forecasts, and any other information which is designated as confidential at the time of disclosure.
1.2 “Derivatives“ means any modification, enhancement, improvement, translation, transformation, adaptation or derivative work of or to the Licensed Technology, regardless of whether such modification would constitute a “derivative work” under U.S. copyright law.
1.3 “Intellectual Property Rights“ means all rights in and to any patents, patent applications, copyrights, trademarks, trade secrets, mask works, and any other intellectual property rights recognized in any jurisdiction worldwide.
1.4 “Licensed Products” means any integrated circuit or other semiconductor product that is designed by or for LICENSEE and manufactured using the Licensed Technology.
1.5 “Licensed Technology“ means the technology and manufacturing processes specified in Exhibit A, including any associated documentation, design rules, process design kits (PDKs), libraries, models, and other information necessary to utilize such technology and processes.
1.6 “Process Node“ means the specific manufacturing technology or process identified in Exhibit A, characterized by its feature size (e.g., e.g., 28nm, 14nm, 7nm).
1.7 “Qualified Foundry“ means a semiconductor manufacturing facility owned or operated by LICENSOR that has been qualified to manufacture Licensed Products using the Licensed Technology.
1.8 “Technical Specifications“ means the technical requirements and specifications for the Licensed Technology as set forth in Exhibit B.
2. LICENSE GRANT
2.1 License to Technology. Subject to the terms and conditions of this Agreement, LICENSOR hereby grants to LICENSEE a non-exclusive, non-transferable, non-sublicensable license to use the Licensed Technology solely for the purpose of designing, developing, manufacturing, testing, and selling Licensed Products through Qualified Foundries.
2.2 Restrictions. LICENSEE shall not:
(a) use the Licensed Technology for any purpose other than as expressly permitted in Section 2.1;
(b) reverse engineer, decompile, disassemble, or otherwise attempt to derive the source code or underlying ideas, algorithms, structure, or organization of the Licensed Technology;
(c) remove or alter any proprietary notices or legends contained in or on the Licensed Technology;
(d) use the Licensed Technology to assist in the development of competing foundry processes or technologies; or
(e) disclose the Licensed Technology to any third party except as expressly permitted under this Agreement.
2.3 Reservation of Rights. All rights not expressly granted to LICENSEE hereunder are reserved by LICENSOR. LICENSEE acknowledges that it obtains no ownership interest in the Licensed Technology or any Intellectual Property Rights related thereto.
3. DELIVERY AND IMPLEMENTATION
3.1 Delivery. Within NUMBER days after the Effective Date, LICENSOR shall deliver to LICENSEE the Licensed Technology as specified in Exhibit A.
3.2 Technical Support. LICENSOR shall provide technical support to LICENSEE in accordance with the Technical Support Terms set forth in Exhibit C.
3.3 Training. LICENSOR shall provide training to LICENSEE’s personnel on the use of the Licensed Technology as specified in Exhibit D.
4. FEES AND PAYMENT
4.1 License Fee. In consideration of the license granted hereunder, LICENSEE shall pay to LICENSOR a one-time license fee in the amount of $AMOUNT within NUMBER days after the Effective Date.
4.2 Royalties. LICENSEE shall pay to LICENSOR royalties on all Licensed Products as follows:
(a) PERCENTAGE% of Net Sales for Licensed Products manufactured using Process Node SPECIFY; or
(b) ALTERNATIVE ROYALTY STRUCTURE, if applicable (e.g., per wafer fee, tiered rates)
4.3 Net Sales. “Net Sales” means the gross amount invoiced by LICENSEE for Licensed Products, less the following deductions to the extent included in such gross amounts and separately stated on the invoice: (a) discounts, including cash discounts, or rebates actually allowed and taken; (b) credits or allowances given or made for rejection, defect, recall or return of Licensed Products; (c) any tax or government charge levied on the sale, delivery, or use of the Licensed Product and paid by LICENSEE; and (d) freight, insurance, and other transportation charges incurred in shipping Licensed Products to customers.
4.4 Payment Terms. Royalty payments shall be made quarterly within NUMBER days after the end of each calendar quarter. Each payment shall be accompanied by a report detailing the calculation of Net Sales and the royalties due (as per Exhibit E).
4.5 Records and Audit. LICENSEE shall maintain complete and accurate records of all Licensed Products manufactured, sold, or otherwise disposed of under this Agreement. LICENSOR shall have the right, upon reasonable notice and during normal business hours, but not more than once per calendar year, to inspect and audit such records to verify LICENSEE’s compliance with its payment obligations.
4.6 Taxes. All payments under this Agreement are exclusive of taxes. LICENSEE shall be responsible for payment of all taxes, duties, and other governmental charges associated with its activities under this Agreement, except for taxes based upon LICENSOR’s net income.
5. INTELLECTUAL PROPERTY RIGHTS
5.1 Ownership of Licensed Technology. LICENSOR retains all right, title, and interest in and to the Licensed Technology and all Intellectual Property Rights therein, including any Derivatives created by or for LICENSOR.
5.2 Ownership of LICENSEE Developments. LICENSEE shall own all right, title, and interest in and to any designs, semiconductor layouts, or other works created by LICENSEE using the Licensed Technology, excluding the Licensed Technology itself and any Derivatives thereof.
5.3 Improvements by LICENSEE. If LICENSEE develops any improvements, enhancements, or Derivatives of the Licensed Technology, LICENSEE shall promptly disclose such improvements to LICENSOR. Ownership and license rights to such improvements shall be as follows:
(a) Process improvements specific to the Licensed Technology shall be owned by LICENSOR, and LICENSEE hereby assigns all right, title, and interest in such improvements to LICENSOR.
(b) Design improvements independent of the process technology shall be owned by LICENSEE, and LICENSEE hereby grants to LICENSOR a non-exclusive, royalty-free license to use such improvements.
(c) Joint improvements shall be jointly owned, with each Party having the right to use such improvements without accounting to the other Party.
5.4 Patent Marking. LICENSEE shall mark all Licensed Products or their packaging with appropriate patent notices as directed by LICENSOR.
6. CONFIDENTIALITY
6.1 Confidentiality Obligations. Each Party acknowledges that it may have access to Confidential Information of the other Party. Each Party agrees to maintain the confidentiality of the other Party’s Confidential Information and not to disclose such Confidential Information to any third party without the prior written consent of the disclosing Party, except as expressly permitted under this Agreement.
6.2 Exceptions. The obligations of confidentiality shall not apply to any information that:
(a) is or becomes publicly known through no fault of the receiving Party;
(b) is rightfully received from a third party without a duty of confidentiality;
(c) is independently developed by the receiving Party without use of the disclosing Party’s Confidential Information;
(d) is rightfully known to the receiving Party prior to disclosure by the disclosing Party; or
(e) is required to be disclosed by law or court order, provided that the receiving Party gives the disclosing Party prompt notice of such requirement and cooperates with the disclosing Party in seeking a protective order or other appropriate remedy.
6.3 Duration of Obligations. The obligations of confidentiality under this Section shall survive the termination or expiration of this Agreement for a period of NUMBER years.
7. REPRESENTATIONS AND WARRANTIES
7.1 Mutual Representations. Each Party represents and warrants to the other Party that:
(a) it is duly organized, validly existing, and in good standing under the laws of its jurisdiction of organization;
(b) it has the full right, power, and authority to enter into this Agreement and to perform its obligations hereunder;
(c) the execution, delivery, and performance of this Agreement have been duly authorized by all necessary corporate action; and
(d) this Agreement constitutes a valid and binding obligation of such Party, enforceable against such Party in accordance with its terms.
7.2 LICENSOR Warranties. LICENSOR represents and warrants that:
(a) it has the right to grant the licenses granted herein;
(b) the Licensed Technology will substantially conform to the Technical Specifications set forth in Exhibit B when used in accordance with the documentation;
(c) to LICENSOR’s knowledge, the Licensed Technology does not infringe the intellectual property rights of any third party; and
(d) the technical support and training provided under this Agreement will be performed in a professional and workmanlike manner.
7.3 LICENSEE Warranties. LICENSEE represents and warrants that:
(a) it will use the Licensed Technology only as permitted under this Agreement; and
(b) it will not use the Licensed Technology to create products that infringe the intellectual property rights of any third party.
7.4 Disclaimer. EXCEPT AS EXPRESSLY SET FORTH IN THIS AGREEMENT, NEITHER PARTY MAKES ANY WARRANTIES, EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED TO ANY IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, OR NON-INFRINGEMENT.
8. LIMITATION OF LIABILITY
8.1 Exclusion of Indirect Damages. NEITHER PARTY SHALL BE LIABLE TO THE OTHER PARTY FOR ANY INDIRECT, SPECIAL, INCIDENTAL, PUNITIVE, OR CONSEQUENTIAL DAMAGES ARISING OUT OF OR RELATED TO THIS AGREEMENT, EVEN IF THE PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.
8.2 Cap on Liability. EACH PARTY’S TOTAL CUMULATIVE LIABILITY ARISING OUT OF OR RELATED TO THIS AGREEMENT SHALL NOT EXCEED THE GREATER OF (A) THE TOTAL AMOUNTS PAID OR PAYABLE BY LICENSEE TO LICENSOR UNDER THIS AGREEMENT DURING THE TWELVE (12) MONTHS PRECEDING THE EVENT GIVING RISE TO LIABILITY, OR (B) $AMOUNT.
8.3 Exceptions. The limitations of liability in Sections 8.1 and 8.2 shall not apply to:
(a) either Party’s indemnification obligations under Section 9;
(b) either Party’s breach of confidentiality obligations under Section 6; or
(c) any infringement, misappropriation, or violation of the other Party’s intellectual property rights.
9. INDEMNIFICATION
9.1 LICENSOR Indemnification. LICENSOR shall defend, indemnify, and hold harmless LICENSEE from and against any claims, damages, liabilities, costs, and expenses (including reasonable attorneys’ fees) arising from any third-party claim alleging that the Licensed Technology infringes any patent, copyright, trademark, or trade secret.
9.2 LICENSEE Indemnification. LICENSEE shall defend, indemnify, and hold harmless LICENSOR from and against any claims, damages, liabilities, costs, and expenses (including reasonable attorneys’ fees) arising from:
(a) any third-party claim alleging that a Licensed Product (excluding the Licensed Technology) infringes any patent, copyright, trademark, or trade secret; or
(b) LICENSEE’s use of the Licensed Technology in a manner not authorized by this Agreement.
9.3 Indemnification Procedure. The indemnified Party shall: (a) promptly notify the indemnifying Party in writing of any claim for which it seeks indemnification; (b) give the indemnifying Party sole control of the defense and settlement of such claim; and (c) provide reasonable cooperation to the indemnifying Party, at the indemnifying Party’s expense. The indemnified Party may participate in the defense at its own expense.
9.4 Infringement Remedies. If the Licensed Technology becomes, or in LICENSOR’s opinion is likely to become, the subject of an infringement claim, LICENSOR may, at its option and expense:
(a) procure for LICENSEE the right to continue using the Licensed Technology;
(b) modify the Licensed Technology to make it non-infringing while maintaining substantially equivalent functionality;
(c) replace the Licensed Technology with a non-infringing alternative having substantially equivalent functionality; or
(d) if none of the foregoing is commercially reasonable, terminate this Agreement and refund to LICENSEE a pro-rata portion of the license fees paid, based on a NUMBER-year straight-line depreciation from the Effective Date.
10. TERM AND TERMINATION
10.1 Term. This Agreement shall commence on the Effective Date and continue for a period of NUMBER years, unless earlier terminated as provided herein (the “Initial Term“). After the Initial Term, this Agreement shall automatically renew for successive NUMBER-year periods (each, a “Renewal Term“), unless either Party provides written notice of non-renewal to the other Party at least NUMBER days prior to the end of the then-current term.
10.2 Termination for Breach. Either Party may terminate this Agreement upon written notice if the other Party materially breaches this Agreement and fails to cure such breach within NUMBER days after receiving written notice thereof.
10.3 Termination for Insolvency. Either Party may terminate this Agreement immediately upon written notice if the other Party: (a) becomes insolvent; (b) makes an assignment for the benefit of creditors; (c) files or has filed against it a petition in bankruptcy or seeks reorganization under any bankruptcy or insolvency laws; or (d) has a receiver appointed for its business or assets.
10.4 Effects of Termination.
(a) Upon termination or expiration of this Agreement, all licenses granted to LICENSEE hereunder shall immediately terminate, and LICENSEE shall cease all use of the Licensed Technology.
(b) Within NUMBER days after termination or expiration, LICENSEE shall return or destroy all copies of the Licensed Technology and Confidential Information of LICENSOR in its possession or control, and shall certify in writing to LICENSOR that it has complied with this obligation.
(c) LICENSEE may sell off its inventory of Licensed Products existing at the time of termination or expiration for a period of NUMBER months, subject to LICENSEE’s continued compliance with the royalty payment and reporting requirements.
10.5 Survival. The following provisions shall survive termination or expiration of this Agreement: Sections 1 (Definitions), 5 (Intellectual Property Rights), 6 (Confidentiality), 7.4 (Disclaimer), 8 (Limitation of Liability), 9 (Indemnification), 10.4 (Effects of Termination), 10.5 (Survival), and 11 (General Provisions).
11. GENERAL PROVISIONS
11.1 Assignment. Neither Party may assign this Agreement or any rights or obligations hereunder without the prior written consent of the other Party, which consent shall not be unreasonably withheld; provided, however, that either Party may assign this Agreement without such consent to its successor in interest by way of merger, acquisition, or sale of all or substantially all of its assets related to this Agreement. Any attempted assignment in violation of this Section shall be null and void.
11.2 Force Majeure. Neither Party shall be liable for any failure or delay in performance under this Agreement due to causes beyond its reasonable control, including but not limited to acts of God, fire, flood, earthquake, labor disputes, utility failures, embargoes, war, acts of terrorism, or governmental actions.
11.3 Notices. All notices under this Agreement shall be in writing and shall be deemed given when delivered personally, by email (with confirmation of receipt), by registered or certified mail (return receipt requested), or by courier service to the address specified below:
If to LICENSOR:
FOUNDRY NAME
Attention: CONTACT PERSON
ADDRESS
Email: EMAIL
If to LICENSEE:
FABLESS COMPANY NAME
Attention: CONTACT PERSON
ADDRESS
Email: EMAIL
11.4 Relationship of Parties. The Parties are independent contractors, and nothing in this Agreement shall be construed to create a partnership, joint venture, agency, or employment relationship between the Parties.
11.5 No Third-Party Beneficiaries. This Agreement is for the sole benefit of the Parties and their respective successors and permitted assigns, and nothing herein shall give or be construed to give any other person or entity any legal or equitable rights hereunder.
11.6 Waiver. No waiver of any term or condition of this Agreement shall be valid or binding unless made in writing and signed by the Party against which such waiver is sought to be enforced. The failure of either Party to enforce at any time any provision of this Agreement, or to exercise any right provided herein, shall not in any way be construed as a waiver of such provision or right, and shall not in any way affect the validity of this Agreement or any part hereof, or limit, prevent, or impair the right of such Party to subsequently enforce such provision or exercise such right.
11.7 Severability. If any provision of this Agreement is held to be invalid or unenforceable, the remaining provisions shall continue in full force and effect, and the invalid or unenforceable provision shall be reformed to the extent necessary to make it valid and enforceable while preserving its intent or, if not possible, severed from this Agreement without affecting the validity of the remaining provisions.
11.8 Amendment. No amendment, modification, or supplement to this Agreement shall be binding unless executed in writing by both Parties.
11.9 Entire Agreement. This Agreement, including all exhibits hereto, constitutes the entire agreement between the Parties with respect to the subject matter hereof and supersedes all prior or contemporaneous agreements, proposals, negotiations, representations, and communications, whether written or oral, between the Parties with respect to such subject matter.
11.10 Governing Law. This Agreement shall be governed by and construed in accordance with the laws of JURISDICTION, without giving effect to any choice of law or conflict of law provisions.
11.11 Dispute Resolution. Any dispute, controversy, or claim arising out of or relating to this Agreement shall be resolved as follows:
(a) The Parties shall first attempt to resolve the dispute through good faith negotiations between senior executives of each Party for a period of NUMBER days.
(b) If the dispute is not resolved through negotiation, the Parties agree to submit the dispute to binding arbitration in accordance with the rules of ARBITRATION/MEDIATION ORGANIZATION, to be conducted in LOCATION.
(c) The decision of the arbitrator(s) shall be final and binding upon the Parties, and judgment upon the award may be entered in any court having jurisdiction thereof.
(d) Each Party shall bear its own costs and expenses, and the Parties shall equally share the fees and expenses of the .
11.12 Counterparts. This Agreement may be executed in counterparts, each of which shall be deemed an original, but all of which together shall constitute one and the same instrument. Electronic signatures shall be deemed original signatures for all purposes.
IN WITNESS WHEREOF, the Parties have executed this Agreement as of the Effective Date.
|
FOUNDRY NAME
By: SIGNATORY NAME Title: TITLE Date: MM/DD/YYYY |
FABLESS COMPANY NAME
By: SIGNATORY NAME Title: TITLE Date: MM/DD/YYYY |
EXHIBITS
EXHIBIT A: LICENSED TECHNOLOGY
[Detailed description of the technology and manufacturing processes being licensed, including process nodes, design rules, PDKs, libraries, etc.]
Enter Exhibit A details here or reference a separate document. **Accuracy is critical.**EXHIBIT B: TECHNICAL SPECIFICATIONS
[Detailed specifications for the Licensed Technology, including performance parameters, design constraints, etc.]
Enter Exhibit B details here or reference a separate document. **Should be measurable.**EXHIBIT C: TECHNICAL SUPPORT TERMS
[Details of technical support to be provided, including response times, escalation procedures, etc.]
Enter Exhibit C details here or reference a separate document. **Define scope & limits.**EXHIBIT D: TRAINING SERVICES
[Details of training to be provided, including scope, duration, location, number of trainees, etc.]
Enter Exhibit D details here or reference a separate document. **Specify costs if any.**EXHIBIT E: ROYALTY REPORTING FORM
[Template for quarterly royalty reports]
Describe the Royalty Reporting Form or reference a separate template document. **Must enable verification.**