CERTAIN IDENTIFIED INFORMATION HAS BEEN EXCLUDED FROM THIS EXHIBIT BECAUSE IT IS BOTH (I) NOT MATERIAL AND (II) WOULD BE COMPETITIVELY HARMFUL IF PUBLICLY DISCLOSED. SUCH PORTIONS ARE MARKED AS INDICATED WITH BRACKETS (“[***]”) BELOW.
Technology License Agreement
Ekso Bionics, Inc.
Exoskeleton Intelligent Robotics Co. Limited
2019年 10 月 22 日
October 22, 2019
TABLE OF CONTENTS
Transfer of Licensed Technologies
Improvements and Updates of Licensed Technologies.
Challenges to Licensed Patents.
Enforcement of Licensed Technologies and Third-party Infringement Claims
Representations and Warranties.
APPENDIX A LICENSED PRODUCTS
APPENDIX B CONFIDENTIALITY AGREEMENT
APPENDIX C TRAINING AND SUPPORT
APPENDIX D THE EXPENSES
APPENDIX E LIST OF DELIVERABLES
Technology License Agreement
本技术许可协议(“本协议”) 是由爱科索仿生机械有限公司(“许可方”)与爱科索智能机器人有限公司(“被许可方”)于2019年__10 月__22 日(生效日期)签订。爱科索仿生机械有限公司系一家根据美国特拉华州法律成立并存续的公司༌注册地址为【1414 Harbour Way South, Suite 1201 Richmond, California 94804 U.S.A.】༛爱科索智能机器人有限公司系一家根据中华人民共和国法律成立并存续的有限责任公司༌注册地址为【中华人民共和国浙江省绍兴市柯桥区】。(许可方和被许可方在下文中统称为“双方”༌单独称为“一方”。)
This Technology License Agreement (this “Agreement”), dated as of October 22, 2019 (the “Effective Date”), is by and between Ekso Bionics, Inc., a corporation organized and existing under the Laws of the State of Delaware, U.S.A., located at [1414 Harbour Way South, Suite 1201 Richmond, California 94804 U.S.A] (“Licensor”) and Exoskeleton Intelligent Robotics Co. Limited , a limited liability company organized and existing under the Laws of the PRC, located at [Keqiao District, Shaoxing, Zhejiang Province, PRC] (“Licensee”). (Licensor and Licensee are hereinafter referred to collectively as both “Parties” and individually as a “Party”.)
Unless otherwise provided, the capitalized terms in this Agreement shall have the same meaning as ascribed in the Joint Venture Contract (defined in Recitals A).
A.许可方已与浙江优创创业投资有限公司 (“优创”) 以及绍兴市柯桥区天堂硅谷智能机器人产业投资合伙企业 (有限合伙) (“产业投资基金”) 于2019年1月30日签署了一份《合资经营企业合同》 (“合资合同”) ༌以便授权被许可方制造许可产品及其组件和配件以及在合同区域提供与许可产品相关的市场推广、技术培训和维护。
Licensor has entered into a joint venture agreement dated 01/30, 2019 with Zhejiang Youchuang Venture Capital Investment Co., Ltd. (“Youchuang”) and Shaoxing City Keqiao District Paradise Silicon Intelligent Robot Industrial Investment Partnership (Limited Partnership) (“Industrial Investment Fund”) to form Licensee for Licensee to manufacture the Licensed Products and the components and subassemblies thereof, and provide marketing promotion,
technical training and maintenance associated with the Licensed Products (the “Joint Venture Contract”), in the Territory.
Licensor agrees to grant Licensee a free, perpetual, irrevocable, exclusive license of the Licensed Technologies in the Territory during the Joint Venture Term for the sole purpose to enable the Licensee to manufacture the Licensed Products and the components and subassemblies thereof in China, to sell the Licensed Products, and to provide marketing promotion, technical training and maintenance associated with the Licensed Products, in the Territory.
C.许可方有权向被许可方授予许可技术中与附录A所列的许可产品 (“许可产品”) 有关的专利、专利申请和非专利制造技术的许可༛
Licensor has the right to license to Licensee the patents, Patent Application and non-patented manufacturing technologies in Licensed Technologies in relation to the Licensed Products listed in Appendix A (the “Licensed Products”);
Licensee desires to obtain a license from Licensor to use the Licensed Technologies on Licensed Products such that within China, Licensee may manufacture, assemble and use the Licensed Products and the Licensee may sell the Licensed Products, provide marketing promotion, training and maintenance associated with the Licensed Products, in the Territory; and make research as to the local adaption and improvement of the Licensed Products with the Licensed Technologies. Licensor is willing to grant to Licensee a license to the Licensed Technologies and the Licensed Products on the terms and conditions set out in this Agreement. No rights outside the Territory are granted except to the extent necessary for manufacturing Licensed Products for export exclusively to or on behalf of the Licensor or unless otherwise agreed by both Parties hereto;
NOW, THEREFORE, in consideration of the mutual covenants, terms and conditions set forth herein, and for other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, both Parties agree as follows:
For purposes of this Agreement, the following terms shall have the following meanings:
“Affiliate” of a Party means any other Person that controls, is controlled by, or is under common control with, such Party. The term “control” for purposes of this definition means directly or indirectly, holding more than fifty percent (50%) of the voting shares of an entity, or if not, holding, through its capital contribution or shareholding or holding by contract or otherwise, sufficient powers to materially influence the entity, or the board of directors, shareholders’ meeting, or other decision-making body of the entity; and “controlled by” and “under common control with” have correlative meanings.
“Agreement” has the meaning set forth in the preamble.
“Business Day” means a day other than a Saturday, Sunday or public holiday of the PRC.
部或部分的所有其他设计、规范、文件、组件、源代码、目标代码、图像、图标、视听组件和对象、示意图、图纸、协议、过程和其他视觉描述༛(d)技术文件༛(e)由被许可方、其关联方或其代表编写的或为其编写的、基于或以其他方式反映或源自上述全部或部分内容的所有说明、分析、汇编、报告、预测、研究、样品、数据、统计、摘要、解释和其他材料༛以及(f)被披露方 (“披露方”) 视为保密或专有的任何形式或媒体的所有信息༌无论是口头、书面、电子或其他形式༌包括包含或与披露方的技术、技术改进、商业机密、专有技术、业务操作、计划、策略、客户与定价相关的信息༌以及披露方认为与合同义务或其他保密义务相关的所有信息༌无论该等信息是否被标记、指定或以其他方式确定为“保密信息”༛以及(g)在不限制前述内容的前提下༌本协议中所有客户信息、规格、文件、非公开营销材料和商业条款均为各方的保密信息。
“Confidential Information” means all non-public, confidential or proprietary information of one Party, or its Affiliates or Representatives, whether in oral, written, electronic or other form or media, whether or not such information is marked, designated or otherwise identified as “confidential” and includes any information that, due to the nature of its subject matter or circumstances surrounding its disclosure, would reasonably be understood to be confidential or proprietary, including, specifically: (a) the Licensed Technologies; (b) a Party’s other unpatented inventions, ideas, methods and discoveries, know-how, trade secrets, unpublished patent applications, invention disclosures, invention summaries and other confidential intellectual property; (c) all other designs, specifications, documentation, components, source code, object code, images, icons, audiovisual components and objects, schematics, drawings, protocols, processes, and other visual depictions, in whole or in part, of any of the foregoing; (d) the Technical Documentation; (e) all notes, analyses, compilations, reports, forecasts, studies, samples, data, statistics, summaries, interpretations and other materials prepared by or for the Licensee, its Affiliates or its Representatives that contain, are based on, or otherwise reflect or are derived from any of the foregoing in whole or in part; and (f) all information in any form or media, whether in oral, written, electronic or other form, deemed as confidential or proprietary by the Party disclosing such information (the “Disclosing Party”), including information containing or relating to the Disclosing Party’s technologies, improvements, trade secrets, know-how, business operation, plans, strategies, customers and pricing, and all information in connection with which the Disclosing Party assumes contractual or other confidentiality obligations, whether or
not such information is marked, designated or otherwise identified as “confidential”; and (g) without limiting the foregoing, all customer information, specifications, documentation, non-public marketing materials and commercial terms hereof shall be Confidential Information of each Party.
保密信息不包括信息接收方 (“接收方”) 可以通过文件证明为如下来源的信息༚(a)在直接或间接地从披露方或其代表收到此类信息之前或在生效日期之前༌接收方已经知道的、且不限制使用或披露的信息༛(b)非因接收方、其关联方或其任何代表违反本协议或其他不当行为而被公众普遍知晓的信息༛或(c)接收方从当时未对披露方或任何其他人承担任何保密义务的第三方接收的信息༛或(d)在不参考或使用任何保密信息的情况下༌由接收方独立开发的信息༌接收方可以通过书面或其他记录证明的信息。
Confidential Information does not include information that the Party receiving such information (the “Receiving Party”) can demonstrate by documentation: (a) was already known to the Receiving Party without restriction on use or disclosure prior to the receipt of such information directly or indirectly from the Disclosing Party or its Representative or prior to the Effective Date; (b) was or becomes generally known by the public other than by breach of this Agreement by, or other wrongful act of, the Receiving Party, its Affiliates or any of its Representatives; or (c) was received by the Receiving Party from a third party who was not, at the time, under any obligation to the Disclosing Party, or any other Person to maintain the confidentiality of such information; or (d) was independently developed by the Receiving Party without reference to or use of any Confidential Information, as the Receiving Party may demonstrate by written or other records.
No Confidential Information is included in any of the foregoing exceptions merely because it comprises or relates to the same general subject matter as a specific item of disclosure falling within such exceptions, nor is any general subject matter of Confidential Information within any of the foregoing exceptions merely because one or more specific items comprising or relating to such subject matter fall within such exceptions.
“Developed Products” means [***].
“Disclosing Party” is the Party disclosing Confidential Information to the other Party.
“Effective Date” has the meaning set forth in the preamble.
“End User Manual(s)” means the standard user manual(s) provided by Licensor to its purchasers of the Licensed Products, which inform the purchaser about the proper functioning of the Licensed Products and how to evaluate problems.
“Establishment Date” has the meaning defined under the Joint Venture Contract.
“Governmental Authority” means any federal, state, national, supranational, local or other government, whether domestic or foreign, including any subdivision, department, agency, instrumentality, authority (including any regulatory authority), commission, board or bureau thereof, or any court, tribunal or arbitrator.
“Improvement” means [***]. Accordingly, “Update” means [***].
“Law” means any statute, law, ordinance, regulation, bylaw, rule, code, order, constitution, treaty, common law, judgment, decree, other requirement or rule of law
of any central, local, federal, state, local or foreign government or political subdivision thereof, or any arbitrator, court or tribunal of competent jurisdiction.
“Licensee” has the meaning set forth in the preamble.
“Licensed Product(s)” means the products listed in Appendix A. In particular, Developed Products will be included in the scope of Licensed Products as long as Youchuang or the third party designated by Youchuang is not delinquent in making its equity investments in the Licensor in accordance with the Joint Venture Contract, otherwise the Company can automatically be authorized to use the Licensed Products free of charge.
“Licensed Technologies” means all patented technologies and non-patented manufacturing technologies involved in the China manufacture of the Current Products, Developed Products and components and subassemblies thereof other than the Patent Rights contributed by Ekso Bionics, including but not limited to designs, drawings, procedures including quality control procedures, data, specifications, manufacturing methods and processes, assembly processes and commissioning.
“Licensor” has the meaning set forth in the preamble.
“Losses” means all losses, damages, liabilities, deficiencies, claims, actions, judgments, settlements, interest, awards, penalties, fines, costs or expenses of whatever kind, including reasonable attorneys’ fees and the cost of enforcing any right to indemnification hereunder and the cost of pursuing any insurance providers.
"Net Sales Revenues" means [***] actually received by the Licensee in selling, renting, transferring or selling Licensed Products in the Territory [***], excluding [***] less:
“Patent Application” means any utility application, design application, continuation and divisional application, provisional application, non-provisional application, foreign patent application, or application for patent protection and specifically includes PCT Applications, except for the Patent Rights.
“Patent Protection” means the preparing and filing of a Patent Application in a country.
Patent Rights shall have the same meaning as set forth in the Joint Venture Contract.
“Person(s)” means an individual, corporation, partnership, joint venture, limited liability company, Governmental Authority, unincorporated organization, trust, association or other entity.
“PRC” or “China” means, for the purpose of this Agreement only, the mainland of the People’s Republic of China.
“Representatives” means a Party’s and its Affiliates’ employees, officers, directors, consultants and legal advisors.
“Receiving Party” is the Party receiving Confidential Information from the other Party.
“Technical Assistance” means the technical assistance and/or support that Licensor provides for Licensee.
“Technical Documentation” means the standards, specifications and instructions for the Licensed Products, and the technical literature, drawings, pictures, tapes, etc., relating to the manufacture, assemble, use and/or sale of Licensed Products in the Territory,
“Term” has the meaning set forth in Section 14.1.
“Territory” means China, Hong Kong, Singapore, Malaysia and other countries and other countries to be mutually agreed by the Parties but excluding Japan, India and Australia.
“U.S.A.” 或 “U.S.” 系指美利坚合众国。
“U.S.A.” or “U.S.” means the United States of America.
Scope of Agreement.
License of the Licensed Technologies.
根据本协议条款和条件༌许可方特此在合资期限内和合同区域内授予被许可方在许可技术下不可转让的、不可转授的 (除根据合资合同批准的转授以外)、不可撤销的、免费的、独占性的权利和许可 (除第2.2条中所指权利外) ༌以制造、组装、生产、在中国境内使用许可产品和/或在合同区域内销售许可产品༌提供与许可产品相关的市场推广、技术培训和维护༌并对许可方进行的研发项目进行投资。
Subject to the terms and conditions of this Agreement, Licensor hereby grants to Licensee during the Joint Venture Term and in the Territory a nontransferable, non-sublicensable (except sublicense as approved pursuant to the Joint Venture Contract), irrevocable, free and exclusive right and license (other than the rights referred to in Section 2.2 ) under the Licensed Technologies to manufacture, assemble, made and have made, use the Licensed Products in China and to sell the Licensed Products in the Territory, provide marketing promotion, training and maintenance associated with the
Licensed Products and make investment in research and development projects undertaken by Licensor.
尽管有第2.1.1条中的规定༌如果自被许可方在中国销售第一件Ekso GT 产品后的[***]期间༌被许可方在中国销售的许可产品少于[***]༌则根据第2.1.1条授予被许可方的许可将会在许可方的自行决定下转变为非独占性的许可。在发生该转变后༌许可方应有权将根据第2.1.1条授予的权利授予或转授给合同区域内的任何第三方。此外༌被许可方应就专利权向许可方授予不可转让、不可再授权和不可撤销的免费独家权利和许可༌允许许可方在合同区域内制造、装配、制造或销售现有产品和开发产品。
Notwithstanding Section 2.1.1, if the Licensed Products sold by Licensee in China during [***] after the sale of the first EksoGT in China are less than [***], the license granted to Licensee pursuant to Section 2.1.1 will be converted into a non-exclusive license at Licensor’s sole discretion. Upon such conversion, Licensor shall have the right to license or sublicense the rights granted under Section 2.1.1 to any third party within the Territory. In addition, Licensee shall grant a nontransferable, sublicensable, irrevocable, free and exclusive right and license under the Patent Rights to Licensor to manufacture, assemble, made and have made the Current Products and Developed Products and sell them in the Territory.
Unless otherwise agreed in this Agreement, Licensor shall be responsible for any and all costs related to the preparation, filing and prosecution until the national stage, either through international (PCT) or direct national stage filings, of the patent and Patent Application under the Licensed Technologies. Licensor will be responsible for controlling the prosecution. If the patent application occurs in the Territory and is applied in the name of the Licensee, the Licensee shall be responsible for any and all costs related to the patent
processing and maintenance during the national stage filing of the Licensed Patents.
For each patent and Patent Application included as a Licensed Technology, Licensor shall be solely responsible for, and make all decisions concerning, the preparation, filing, prosecution and maintenance thereof and notify Licensee and any changes in the status of any patent and Patent Application.
Licensor reserves the rights to manufacture, assemble, use and/or sell Licensed Products outside the Territory, provide technical promotion, training and maintenance associated with the Licensed Products and make investments in research and development projects related to Licensed Products outside the Territory.
Except for the rights and licenses granted by Licensor under Section 2, this Agreement does not grant to Licensee or any other Person any right, title or interest including any license to Patent Applications filed outside the Territory by Licensor by implication, estoppel, or otherwise . Without limitation of the foregoing, nothing in this Agreement shall be construed as granting by implication, estoppel, or otherwise, any right, title or interest in, to or under any Licensor’s patents or technologies other than the Licensed Technologies regardless of whether such other patents are dominant or subordinate to any patent included in the Licensed Technologies. All rights, titles and interests not specifically, expressly granted by Licensor hereunder are hereby reserved.
From time to time upon the mutual agreement of Licensor and Licensee and by written amendment to this Agreement, both Parties may from time to time adjust the List of Deliverables and Appendix A. The purpose of this agreement is to enable the Licensee to produce all Licensed Products. [***].
Transfer of Licensed Technologies
Delivery of Licensed Technologies
The Licensor shall prepare a list (“List of Deliverables”) by referencing Appendix E of all relevant Licensed Technologies and their Technical Documentation with regard to the Licensed Products (“Deliverables”) on or before the Effective Date; moreover, any technical documents or materials with respect to the Licensed Technologies that are not listed in the List of Deliverables, but necessary for manufacturing of the Licensed Products and the components and subassemblies thereof shall be provided by the Licensor timely in English.
Licensor shall, so as to meet the reasonable needs of Licensee to manufacture, assemble, use and/or sell Licensed Products in the Territory, provide marketing promotion, training and maintenance associated with the Licensed Products and deliver the Deliverables listed in the List of Deliverables to Licensee [***]; and
All Deliverables delivered by Licensor are subject to the restrictions on the exportation of the above said technology and know-how and technical documents imposed by the relevant Laws of the U.S.A. Licensor undertakes that any required export license or other approvals from U.S government or any other regulatory or governmental authority for the delivery of the Deliverables has been obtained. All technical documents and all materials to be supplied by Licensor shall be in English and in the measurement units presently used by Licensor.
The translation fee in relation to the Deliverables shall be borne by Licensee, unless otherwise agreed by the Parties in written.
Licensee may make copies of the Technical Documentation solely for internal use by employees who have executed a confidentiality agreement as rigorous as the Confidentiality Agreement set forth in Appendix B. Any copies of such Technical Documentation whether it is in the original or translated form shall continue to maintain Licensor’s copyright notice. Licensee shall not disclose Technical Documentation or the Licensed Technologies to a third-party unless the Licensee has fully complied with the requirements under Section 10. Licensee will be responsible to Licensor for any breach of confidentiality as agreed under Section 10 hereof by Licensee or by a third party to whom Licensee discloses any Technical Documents. If Licensor advises Licensee that changes are required to be made to the Technical Documentation, then Licensee shall commence using the revised Technical Documentation promptly. Licensee shall not remove or alter either the copyright notice or the confidentiality notice if the Technical Documentation is for internal use. Licensee may remove or alter the copyright notice if the Technical Documentation is for an end user so long as Licensee properly keeps relevant records on the company name and address of such end user.
Delivery of Technical Support and Training
许可方同意向被许可方人员提供必要的培训和技术支持 (“培训和支持”) ༌以确保被许可方能够理解和使用许可方对许可产品所使用的技术。
Licensor agrees to provide Training and Technical Support (“Training and Support”) to Licensee’s personnel as reasonably necessary so that Licensee can comprehend and use the technology of Licensor for the Licensed Products.
Licensor shall provide the Training and Support to Licensee to enable Licensee to manufacture the Licensed Products and components and subassemblies thereof within the Territory as well as become proficient in the Licensed Technologies related to Licensed Products, and to fully independently manufacture the Licensed Products meeting the (current and as updated from time to time) technical standards of Licensor. The details of the Training and Support are set forth in Appendix C hereto.
In relation to the fees for Training and Support provided by Licensor for Licensee hereunder, such fees shall be paid in accordance with the Appendix D hereto.
Licensee shall not sublicense the Licensed Technologies without mutual agreement between Licensor and Licensee
Improvements and Updates of Licensed Technologies.
Research and Develop of Licensed Technologies
Licensor and Licensee may research and develop, adapt, update or make improvements to the Licensed Technologies from time to time.
Confidentiality of Improvements and Updates
Both Parties shall keep any Updates or Improvements confidential to the extent such Updates or Improvements remain unpatented and are intended for communication to third parties. Each Party shall not communicate the Improvement to a third-party unless a confidentiality agreement has been signed by such Party and such third party before communication. Each Party will be responsible to the other Party for any breach of confidentiality by a third party to whom such Party discloses any Improvements.
Updates of Technical Documentation and Licensed Technologies
If the Technical Documentation provided by Licensor is not applicable to Licensee’s production conditions based on local conditions for the Territory, Licensee agrees to advise Licensor of the same and communicate a proposed Update of such Technical Documentation. Licensor shall review such Update proposed by Licensee and will negotiate with Licensee to decide on the proposed Update which may be applied to such Technical Documentation. The Parties agree that all such Updates of Technical Documentation shall be owned by Licensor.
If Licensee requires any Update of the Licensed Technologies based on local conditions for the Territory, Licensee shall promptly communicate to Licensor any Updates to the Licensed Technologies. Licensor shall review the Update proposed by Licensee and both Parties shall negotiate to decide on the Update to the Licensed Technologies. The Parties agree that all such Updates of the Licensed Technologies shall be owned by Licensor.
To ensure the quality of the Licensed Products, Licensee shall not, without the consent of Licensor, introduce or use any software, technology, or know‑how which conflicts with and affects the proper use or application of the Licensed Technologies or Technical Documentation provided by
Licensor. For the Licensed Products using the brand of Licensor, in the event that Licensee researches or develops an Improvement or Update for the Licensed Technologies or the Technical Documentation provided by Licensor, it shall inform Licensor of such Improvement or Update and seek approval from Licensor pursuant to Section 5.3.2 prior to making any changes to the Licensed Products under the brand of Licensor.
Since the Technical Documentation and the Licensed Technologies is a dynamic technology, during the entire Term of this Agreement, Licensee shall have the right, subject to the terms and conditions of this Agreement and the Joint Venture Agreement, to use Licensor’s modifications of the Technical Documentation and the Licensed Technologies as provided from time to time by Licensor. If any such modification or other relevant materials require translation, the Licensee shall bear the translation costs.
关于开发产品的许可༌双方特此确认并同意༌自发货日期起[***]后༌本公司制造的[***]产品及其开发产品净销售收入༈术语定义参见技术许可协议༉的[***]༌[***] 或[***] 产品及其开发产品净销售收入的[***]༌作为协助爱科索的研发༈“研发费用”༉.
In consideration of the Developed Products License, the Parties hereby acknowledge and agree that the Company will pay on [***] of the Net Sales Revenue (as such term defined under Technology License Agreement) of [***] and its developed products,
[***] of the Net Sales Revenue of [***] or [***] and its developed products which were manufactured by the Company as the support for Ekso Bionics’ commitment in development and research (“Development Fees”), after [***]commencing from the Shipment Date.
Payment Method for Development Fees
Within [***] after each Quarterly Period the Licensee shall provide the Licensor with a statement (“Payment Statement”), indicating:
the aggregate amount of the received Net Sales Revenue proceeds, [***] for the Quarterly Period;
the total number of Licensed Products manufactured and sold, transferred or Otherwise Disposed of by the Licensee in the relevant Quarterly Period;
the aggregate amount of the received Net Sales Price proceeds of all Licensed Products sold, transferred or Otherwise Disposed Of by The Licensee in the relevant;
the Quarterly Period for calculation of Development Fees
the method of calculating Development Fees including an identification of each deduction in the calculation of Development Fees
the exchange rate used for calculating Development Fees;
such other particulars as are necessary for an accurate accounting of the payments made pursuant to this Agreement.
The Licensor shall issue the invoice of all payable Development Fees for each Quarterly Period along with the information and documents for reviewing such and other payables within [***] Business Days after receiving such Payment Statement. so that the Licensee can review such expenses and payables within [***] business days after the receipt of payment statements.
The Licensee shall pay the amount of the invoice within [***] Business Days upon receipt and confirmation of the invoices for Development Fees and accompanying sufficient supporting information and documents (for reviewing corresponding payables), or otherwise the Licensee shall return the invoices and propose relevant comments. In the latter case, both parties shall endeavor to resolve any issue raised by the Licensee in the comments within [***] business days
All Development Fees shall be in denominated in [***] and paid by the Licensee in [***], and shall be made by wire transfer directly to the order of
the Licensor at any bank in the U.S. designated by the Licensor from time to time. The exchange rate shall be the exchange rate published by the People’s Bank of China on the date of payment.
The Licensee shall keep records adequate to verify each statement and payment to be made pursuant to this Agreement for [***] following the submission of each statement and payment to the Licensor.
If any payment (excluding payment for investment) due to the Licensor under the Contract is overdue (in the case of any deductible item agreed in the Contract, the payment is deemed as being made in time on the deduction date), the Licensee shall pay interests to the Licensor at a rate of [***] . The interest on each payment due shall be calculated from the date on which the payment is due until the date on which the Licensor actually receives the payment. The payment of interests is not a proprietary compensation and does not replace other compensations that the Licensor is entitled to as a result of the Licensee’s failure to complete the payment under the Contract.
Challenges to Licensed Patents.
During the Term, Licensee shall not institute or actively participate as an adverse party in, or otherwise provides material support to, any action, suit or other proceeding to invalidate or limit the scope of any patent, Patent Application, or technology and know-how owned by Licensor and licensed to Licensee or any licensed patent claim or limit to the scope of any licensed patent claim owned by Licensor or obtain a ruling that any licensed patent claim is unenforceable or not patentable.
Enforcement of Licensed Technologies and Third-party Infringement Claims
Notice of Infringement or Third-party Claims
If (a) either Party believes that a Licensed Technology is being infringed or misappropriated by a third party in the Territory or outside the Territory, or (b) if a third party alleges that any licensed patent is invalid or unenforceable or claims that a Product, or its use, development, manufacture or sale infringes such third party’s intellectual property rights in the Territory or outside the Territory, the Party possessing such belief or awareness of such claims shall promptly provide written notice to the other Party and provide it with all details of such infringement or claim, as applicable, that are known by such Party.
Right to Bring Action or Defend
No obligations are placed upon either Licensor or Licensee to legally enforce the licensed patents. However, Licensor shall have the initial right to enforce the Licensed Products against any potentially infringing third party. If Licensor elects not to enforce the licensed patents, then Licensee shall have that right under this Agreement to enforce the licensed patents against the third party. When either Party to this Agreement (Licensor or Licensee) elects to enforce the licensed patents, that Party will assume all costs and risks associated with such enforcement and, if successful, will split all damage amounts awarded with the other Party of this Agreement, on [***] split in favor of the Party electing to enforce the Licensed Patents, after first deducting all reasonable expenses directly associated with the patent enforcement. If unsuccessful in the foregoing scenario, such Party will bear all costs and damages incurred in the prosecution of such suit.
If Licensor brings or defends any such proceeding, Licensee shall cooperate in all respects with Licensor in the conduct thereof, and assist in all reasonable ways, including having its employees testify when requested and make available for discovery or trial exhibit relevant records, papers, information,
samples, specimens, and the like. Licensee may bear the expenses first so long as Licensor is provided with written notification prior to bearing such expenses, and Licensor will reimburse Licensee of any reasonable out-of-pocket expenses incurred on an on-going basis by Licensee in providing Licensor such assistance.
Recovery and Settlement
If Licensor undertakes the enforcement or defense of any Licensed Technologies:
any recovery, damages or settlement derived from such suit, action or other proceeding shall be retained in its entirety by Licensor; and
Licensor may settle any such suit, action or other proceeding, whether by consent order, settlement or other voluntary final disposition, without the prior written approval of Licensee provided that Licensor shall not settle any such suit, action or other proceeding in a manner that adversely affects the rights of any of Licensee without Licensee’s prior written consent, which consent may not be unreasonably withheld or delayed.
If any suit, action or other proceeding alleging invalidity or non-infringement of any Licensed Technology is brought against Licensee, Licensor, at its option, shall have the right: (a) within [***] Business Days after commencement of such suit, action or other proceeding, to intervene and take over the sole defense of the suit, action or other proceeding at its own expense; or (b) negotiate with the third party who makes the aforementioned claim so as to cause Licensee to obtain the cross-license of the disputed Licensed Technology. For whichever option Licensor chooses, Licensor shall indemnify, defend, and hold Licensee, its officers, directors, employees, agents, Affiliates, successors and assignees harmless from the Losses resulting from such claim of the third party.
Compliance with Laws.
Licensee shall comply with the patent marking provisions and Laws of the relevant countries for any issued patents from the Licensed Technologies inside the Territory.
Technical Documentation and Non-patented Manufacturing Technology Marking
Licensee shall comply with marking provisions and Laws within the Territory or as instructed by Licensor to mark any Technical Documentation or non-patented manufacturing technology.
Licensee shall, at Licensee’s expense, comply with all regulations and safety standards concerning Licensed Products, manufactured, assembled or sold in accordance with this Agreement, or manufactured, assembled, or commercialized by or under the authority of Licensee and obtain all necessary governmental approvals for the development, production, distribution, sale and use of Licensed Products in the Territory, including any safety or security certifications. Licensee shall have responsibility for and provide suitable warning labels, packaging and instructions as to the use for such Licensed Products in the Territory.
The Receiving Party acknowledges that in connection with this Agreement it will gain access to Confidential Information of the Disclosing Party. As a condition to being provided with Confidential Information, the Receiving Party shall:
not use the Disclosing Party’s Confidential Information other than as strictly necessary to exercise its rights and perform its obligations under this Agreement; and
maintain the Disclosing Party’s Confidential Information in strict confidence and, subject to Section 10.2, not disclose the Disclosing Party’s Confidential Information without the Disclosing Party’s prior written consent, provided, however, the Receiving Party may disclose the Confidential Information to its Representatives who:
have a need to know the Confidential Information for purposes of the Receiving Party’s performance, or exercise of its rights concerning the Confidential Information, under this Agreement;
have been apprised of this restriction; and
are themselves bound by written nondisclosure agreements at least as restrictive as those set forth in Section 10.1, provided further that the Receiving Party shall be responsible for ensuring its Representatives’
compliance with, and shall be liable for any breach by its Representatives of, Section 10.1.
The Receiving Party shall use reasonable care, at least as protective as the efforts Licensor uses for Licensor’s Confidential Information, to safeguard the Disclosing Party’s Confidential Information from use or disclosure other than as permitted hereby.
If the Receiving Party becomes legally compelled to disclose any Confidential Information, the Receiving Party shall:
provide prompt written notice to the Disclosing Party so that the Disclosing Party may seek a protective order or other appropriate remedy or waive its rights under Section 10; and
disclose only the portion of Confidential Information that it is legally required to furnish.
If a protective order or other remedy is not obtained, or the Disclosing Party waives compliance under Section 10, the Receiving Party shall, at the Disclosing Party’s
expense, use reasonable efforts to obtain assurance that confidential treatment will be afforded the Confidential Information.
被许可方理解许可方在本协议项下向被许可方提供的许可技术以及技术文件的保密性༌并特此承诺对与许可方在本协议项下提供的许可技术以及技术文件相关的所有数据和信息保密。被许可方进一步同意遵守本协议所附保密协议 (附件B) 中保密条款༌并通过本协议附件B与其员工签订保密协议。
Licensee understands the confidential nature of Licensed Technologies and the Technical Documentation to be provided to Licensee by Licensor hereunder, and hereby undertakes to keep secret and confidential all data and information relating to Licensed Technologies and the Technical Documentation provided by Licensor hereunder. Licensee further agrees to be bound by the confidentiality provisions set forth in the Confidentiality Agreement (Appendix B) hereto and to enter into with its employees substantially in this form attached as Appendix B to this Agreement.
Licensee further agrees on behalf of itself and its employees, its agents and their employees, to maintain the confidentiality of all the Licensed Technologies and Technical Documentation disclosed by Licensor pursuant to this Agreement. The employees of, and any personnel designated by Licensee to receive Training pursuant to Section 3.2 shall sign prior to the commencement of such Training, the Confidentiality Agreement, attached as Appendix B hereto.
Representations and Warranties.
Mutual Representations and Warranties
Each Party represents and warrants to the other Party that as of the date of this Agreement:
it is duly organized, validly existing and in good standing as a corporation or other entity as represented herein under the Laws and regulations of its jurisdiction of incorporation, organization or chartering;
it has, and throughout the Term shall retain, the full right, power and authority to enter into this Agreement and to perform its obligations hereunder;
the execution of this Agreement by its representative whose signature is set forth at the end hereof has been duly authorized by all necessary corporate action of the Party; and
when executed and delivered by such Party, this Agreement shall constitute the legal, valid and binding obligation of that Party, enforceable against that Party in accordance with its terms.
Licensee’s Representation and Warranties
Licensee represents and warrants that, up to the execution date of this Agreement, it has not received any notice or threat of any claim, suit, action or proceeding, and has no knowledge or reason to know of any information, that could: (a) invalidate or render unenforceable any claim of any Licensed Patent; (b) prove that the Licensed Products are not covered by any claim of any Licensed Patent; or (c) cause any claim of any Licensed Patent to fail to occur or be materially limited or restricted as compared with its currently pending scope.
Licensee represents and warrants that, during the Term, the standard of Licensed Products distributed, used, manufactured and/or sold by the Licensee shall be as same as Licensor’s standardized Licensed Products produced in the U.S.A., provided that Licensor provides the Technical Documentation and Training and Support in accordance with this Agreement, where Licensee undertakes all the fees of translating the Technical Documentation and reimburses the costs and expenses incurred by Licensor from the Training and Support in accordance with this Agreement.
Licensor Representations and Warranties
Licensor represents and warrants, up to the execution of this Agreement:
it has the full legal right to license and disclose the Licensed Technologies and the Technical Documentation. Licensor represents and warrants that the technologies it provides is complete, correct and effective in a material way and does not infringe the rights and interest of any third party and can achieve the purpose of this Agreement . However, such representation and warranty shall not be applicable where the Licensee uses key materials or equipment other than those detailed in the Technical Documentation or the Licensed Technologies, or uses procedures which do not follow in all respects the Technical Documentation or the Licensed Technologies or other instructions of Licensor.
Except as set forth above, the Licensed Technologies do not contain any encumbrances that would affect or limit the license of Licensor under this Agreement, and there is no agreement entered into with any third party that would affect or limit the license of Licensor under this Agreement.
Licensor has not received any notice or threat of any claim, suit, action or proceeding, and has no knowledge of or reason to know any information, that could: (a) invalidate or render unenforceable any claim of any patent included in the Licensed Technologies; (b) cause any claim of any Patent Applications included in the Licensed Technologies to fail to issue or be materially limited or restricted as compared with its currently pending scope.
Licensor is capable of delivering the Technical Documentation and providing Training and Support as agreed in this Agreement;
Licensee would pay Licensor Development Fees provided that Licensor warrants that it will be authorized and delivered to Licensee within [***] after the results of any current products and developed products R&D projects come out. Where Licensor violates the above terms, Licensee has the right to refuse the payment of Development Fees hereunder and to request Licensor to refund all the Development Fees paid by Licensee.
Liability Disclaimer As the Licensor will not control the production, disposition and use of Licensed Products in the Territory, Licensee agrees that Licensor will not be liable for any damages, actual or consequential, as a result of the performance under this Agreement, including any liabilities arising from third party dealings by Licensee in the production, disposition and use of the Licensed Products in the Territory, except for direct losses caused to the Licensee by the Licensor’s breach of its representations and warranties under Article 11.3 of this Agreement.
Exclusion of consequential and other indirect damages. To the fullest extent permitted by law, either party shall not be liable to the other party for any injury to or loss of goodwill, reputation, business, production, revenues, profits, anticipated profits, contracts or opportunities (regardless of how these are classified as damages), or for any consequential, incidental, indirect, exemplary, special, punitive or enhanced damages whether arising out of breach of contract, tort (including negligence), strict liability, product liability or otherwise (including the entry into, performance or breach of this agreement), regardless of whether such loss or damage was foreseeable or the party against whom such liability is claimed has been advised of the possibility of such loss or damage, and notwithstanding the failure of any agreed or other remedy of its essential purpose, but either party’s losses incurred by a third party claim shall be regarded as direct losses.
Licensor shall indemnify Licensee against reasonable claims of intellectual property infringement by Licensee which occur in the Territory to the extent solely arising from the Licensed Technologies, with Licensee agreeing to assist Licensor as requested and to minimize any potential damages.
Notwithstanding the indemnity provided in Section 13.1.1, Licensor shall not indemnify Licensee if:
Licensee modifies other than as detailed in the Technical Documentation the Licensed Products and such modification has contributed to the relevant Losses;
Licensee combines or modifies the Licensed Products with Licensee’s or any third-party’s equipment or key materials other than those detailed in the Technical Documentation without expressed written instruction or approval from Licensor;
Licensee fails to comply with Licensor specifications, the Licensed Technologies, the procedures set out in the Technical Documentation or as otherwise instructed by Licensor for the Licensed Products;
Licensee fails to comply with a request from a third-party related to the Licensed Products so long as Licensor communicates such request or provides notice to Licensee of such request.
Licensee shall indemnify, defend and hold harmless Licensor and its Affiliates, their respective successors and assigns against all Losses arising out of (a) Licensee’s breach of any representation, warranty, covenant or obligation under this Agreement.
Term and Termination.
This Agreement shall be deemed to have commenced on the Effective Date and, unless terminated earlier in accordance with Section 14.2, remain in force for each Product and each region or province in the Territory on a Licensed-Product-by-
Licensed-Product and region-by-region or province-by-province basis until the Joint Venture Contract to create Licensee expires or is terminated.
The period set forth in Section 14.1, or such shorter period as may result from the earlier termination of this Agreement in accordance with Section 14.2 shall collectively be referred to as the “Term.”
Termination for Cause
Licensor shall have the right to terminate this Agreement immediately by giving written notice to Licensee if:
Licensee materially breaches this Agreement and, if such breach is curable, fails to cure such breach within [***] of Licensor’s written notice of such breach, which material breaches include but not limited to:
Licensee fails to comply with the geographical scope or the scope of business of the license granted hereunder;
Licensee breaches the confidentiality obligations of the Licensed Technologies;
Licensee violates Sections 7of this Agreement.
Neither Party shall be in default hereunder by reason of any failure or delay in the performance of its obligations hereunder, except for both Parties’ payment obligations hereunder, where such failure or delay is due to any cause beyond its reasonable control, including any act of war (whether declared or not), invasion or act of foreign enemy; any act of rebellion, riot, civil commotion, strike, act or campaign of terrorism, or sabotage; lightning, fire, earthquake, tsunami, unusual flood, storm, cyclone, typhoon, tornado or other natural calamity or act of God; epidemic or plague; strikes, work-to-rule or go-slows (other than by employees of the affected Party or by employees of any direct or indirect Affiliate, parent or subsidiary of any shareholder of such Party).
Any and all disputes shall be resolved with reference to the Joint Venture Contract.
No Public Statements
Neither Party shall issue or release any announcement, statement, press release or other publicity or marketing materials relating to this Agreement, or, unless expressly permitted under this Agreement, otherwise use the other Party’s trademarks, service marks, trade names, logos, domain names or other indicia of source, association or sponsorship, in each case, without the prior written consent of the other Party, which shall not be unreasonably withheld or delayed.
All notices, requests, consents, claims, demands, waivers and other communications hereunder shall be in writing and shall be deemed to have been delivered in accordance with this Section:
If to Licensor:
1414 Harbour Way South, Suite 1201 Richmond, California 94804 U.S.A
Attention: Chief Executive Officer
If to Licensee:
Exoskeleton Intelligent Robotics Co. Limited
在以下情况下༌按照第15.4条规定发出的通知应被视为已有效送达༚(a) 如果亲手交付༌在收到时视为送达༈提供书面接收确认文件༉༛(b) 如果由全国认可的次日送达快递发送༌在收到时视为送达༈需要已签收回执༉༛或(c) 如用传真或电子邮件༈在不同情况下༌提供传输确认文件༉发送༌如果在收件人正常营业时间发送༌则视为当天已送达༌如果在收件人正常营业时间后发送༌则视为次日已送达。
Notices sent in accordance with Section 15.4 shall be deemed effectively delivered: (a) when received, if delivered by hand (with written confirmation of receipt); (b) when received, if sent by a nationally recognized overnight courier (receipt requested); or (c) on the date sent by facsimile or e-mail (in each case, with confirmation of transmission), if sent during normal business hours of the recipient, and on the next Business Day if sent after normal business hours of the recipient.
根据本协议༚ (a)“包括”一词及该词其他形式均按照“包括但不限于”理解༛ (b) “或者”一词具有包含性༛及 (c) “此中”、“于此”、“在此”、“对此”和“依此”均系指本协议整体。
For purposes of this Agreement: (a) the words “include,” “includes” and “including” shall be deemed to be followed by the words “without limitation”; (b) the word “or” is not exclusive; and (c) the words “herein,” “hereof,” “hereby,” “hereto” and “hereunder” refer to this Agreement as a whole.
Unless the context otherwise requires, references herein: (a) to Sections and Schedules refer to the Sections of and Schedules attached to, this Agreement; (b) to an agreement, instrument or other document means such agreement, instrument or other document
as amended, supplemented and modified from time to time to the extent permitted by the provisions thereof; and (c) to a statute means such statute as amended from time to time and includes any successor legislation thereto and any regulations promulgated thereunder. This Agreement shall be construed without regard to any presumption or rule requiring construction or interpretation against the Party drafting an instrument or causing any instrument to be drafted. Any Schedules referred to herein shall be construed with, and as an integral part of, this Agreement to the same extent as if they were set forth verbatim herein.
The headings in this Agreement are for reference only and shall not affect the interpretation of this Agreement.
This Agreement is one of appendixes to and an integral part of the Joint Venture Contract. This Agreement, together with all Schedules, Appendices, and any other documents incorporated herein by reference, constitutes the sole and entire agreement of both Parties to this Agreement with respect to the subject matter contained herein, and supersedes all prior and contemporaneous understandings and agreements, both written and oral, with respect to such subject matter.
Licensee shall not assign or otherwise transfer any of its rights, or delegate or otherwise transfer any of its obligations or performance, under this Agreement, in each case whether voluntarily, involuntarily, by operation of Laws or otherwise, without Licensor’s prior written consent. For purposes of the preceding sentence, and without limiting its generality, any merger, consolidation or reorganization involving Licensee (regardless of whether Licensee is a surviving or disappearing entity) shall be deemed to be a transfer of rights, obligations or performance under this Agreement for which Licensor’s prior written consent is required. No delegation or other transfer will relieve Licensee of any of its obligations or performance under this Agreement. Any purported assignment, delegation or transfer in violation of Section 15.8 is void. Licensor may freely assign or otherwise transfer all or any of its rights, or delegate or otherwise transfer all or any of its obligations or performance, under this Agreement without Licensee’s consent. This Agreement is binding upon and inures to the benefit of both Parties and their respective permitted successors and assigns.
No Third Party Beneficiaries
This Agreement is for the sole benefit of both Parties and their respective successors and permitted assigns and nothing herein, express or implied, is intended to or shall
confer upon any other Person any legal or equitable right, benefit or remedy of any nature whatsoever, under or by reason of this Agreement.
Amendment; Modification; Waiver
This Agreement may only be amended, modified or supplemented by an agreement in writing signed by each Party hereto. No waiver by either Party of any of the provisions hereof shall be effective unless explicitly set forth in writing and signed by the waiving Party. Except as otherwise set forth in this Agreement, no failure to exercise, or delay in exercising, any rights, remedy, power or privilege arising from this Agreement shall operate or be construed as a waiver thereof; nor shall any single or partial exercise of any right, remedy, power or privilege hereunder preclude any other or further exercise thereof or the exercise of any other right, remedy, power or privilege.
If any term or provision of this Agreement is invalid, illegal or unenforceable in any jurisdiction, such invalidity, illegality or unenforceability shall not affect any other term or provision of this Agreement or invalidate or render unenforceable such term or provision in any other jurisdiction. Upon a determination that any term or other
provision is invalid, illegal or unenforceable, both Parties hereto shall negotiate in good faith to modify this Agreement so as to effect the original intent of both Parties as closely as possible in a mutually acceptable manner in order that the transactions contemplated hereby be consummated as originally contemplated to the greatest extent possible.
Governing Law; Submission to Jurisdiction
The Joint Venture Contract shall apply.
This Agreement may be executed in counterparts, each of which shall be deemed an original, but all of which together shall be deemed to be one and the same agreement. A signed copy of this Agreement delivered by facsimile, e-mail or other means of electronic transmission shall be deemed to have the same legal effect as delivery of an original signed copy of this Agreement.
[SIGNATURE PAGE FOLLOWS]
IN WITNESS WHEREOF, both Parties have caused this Agreement to be executed as of the date first written above by their respective officers thereunto duly authorized.
EKSO BIONICS, INC.
EXOSKELETON INTELLIGENT ROBOTICS CO. LIMITED
Components and subassemblies related to the above and manufactured by the Licensee
TRAINING AND SUPPORT
APPENDIX D THE EXPENSES
附录 E 交付物清单
APPENDIX E LIST OF DELIVERABLES