Licensed&Developed Works Agreement Statement of Work

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Exhibit 10.1

 

This Statement of Work (“SOW”) # 4906FL0029 adopts and incorporates by reference the terms and conditions of Licensed and Developed Works Agreement # 4900PC0033/PDSC-99-1146 (“Base Agreement”) between International Business Machines Corporation (“Buyer”) and Pacific Decision Sciences Corporation (“Supplier”). This SOW is effective beginning on May 1, 2006 and will remain in effect until terminated. Transactions performed under this SOW will be conducted in accordance with and be subject to the terms and conditions of this SOW, the Base Agreement, and any applicable Work Authorizations (“WAs”). This SOW is not a WA.

 

This SOW supersedes and replaces SOW #4900PC0034/PDSC-99-9198 dated March 31, 1999 and all amendments thereto.

 

Buyer licenses from Supplier a computer software program known as PDSC Service Management System, Version: 7.4 (Base Software) and all PDSC Service Modules currently installed at IBM, including RF and Web Interfaces, which enable those activities and capabilities described by Section 3.0 of this SOW. Supplier will provide to Buyer the Licensed Works described in Section 3.0 of this SOW. Supplier will provide Buyer with maintenance and support for the Licensed Works as described in the Attachment entitled “Testing, Maintenance and Support.”.

 

The following definitions are applicable to this SOW and are in addition to or in place of, the definitions listed in Section 1.0 of the Base Agreement.

 

Strategic Call Management Application– (hereinafter “SCM”) means web-based Call Center application to support Buyer’s Global Service Delivery Process (“GSDP”) by improving customer service, reducing the dependency on multiple legacy environments, consolidating systems where appropriate, and enabling business changes to be introduced and delivered quickly on a global basis. The solution will introduce a service oriented architecture utilizing Buyer and Supplier services components.

 

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1. Code name and version number:

 

Tools for the Licensed Work and any Developed Works are identified below. Supplier will update this list for all changes as soon as practicable after the change is identified.

 

Description	Part Number / Model Number	Version / Release	Owner
1 SB Client	SBClient	5.3.8 (build 386)	IBM
2 System Builder	System Builder	5.3	IBM
3 AIX	AIX	10.1	IBM

 

For the term of this SOW, Supplier will provide to Buyer, at no charge, Major Enhancements, Basic Enhancements and Error Corrections to the Licensed Work.

 

Supplier grants Buyer and Buyer Personnel a nonexclusive, worldwide, perpetual, irrevocable, fully paid up and royalty free license to prepare and have prepared Derivative Works of the Licensed Works and to use, have used, execute, reproduce, transmit, display, perform, transfer and distribute internally within Buyer’s organization the Licensed Works and such Derivative Works, in any medium or distribution technology, and to grant others the rights granted herein.

 

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The grant of rights and licenses to the Licensed Work and Derivative Works includes a nonexclusive, worldwide, perpetual, irrevocable, paid-up license under any patents and patent applications that are owned or licensable by Supplier now or in the future which may be (a) required to make, have made, use or have used the Licensed Works or its derivative works, or (b) required to license or transfer the Licensed Works or its derivative works. This license applies to the Licensed Works and any derivative works operating alone or in combination with equipment or Code. The license scope is to make, have made, use, have used, sell, license or transfer items, and to practice and have practiced methods, to the extent required to exercise the rights to the Licensed Works and Tools granted hereunder.

 

Supplier grants Buyer and Buyer Personnel a nonexclusive, worldwide, perpetual, irrevocable, paid-up license to prepare and have prepared Derivative Works of the Externals, and to use, have used, execute, reproduce, transmit, display, perform, transfer, and distribute internally within Buyer’s organization the Externals and such Derivative Works, in any medium or distribution technology, and to grant others the rights granted herein.

 

Supplier grants Buyer a nonexclusive, worldwide, perpetual, irrevocable, paid-up license to use the names and trademarks Supplier uses to identify the Licensed Work for Buyer’s marketing of the Licensed Work and its derivative works. If Supplier objects to Buyer’s improper use of Supplier’s names or trademarks, Buyer will take reasonable steps necessary to resolve Supplier’s objections. Supplier may reasonably monitor the quality of Licensed Work bearing its trademark under this license. Any goodwill attaching to Buyer’s trademarks, service marks, or trade names belongs to Buyer and this Agreement does not grant Supplier any right to use them.

 

As used in these License Grants, “Buyer’s organization” means any division of IBM or any of its subsidiaries in any location throughout the world.

 

Supplier grants Buyer and Buyer Personnel a nonexclusive, worldwide, perpetual, irrevocable, paid-up license to use the Licensed Works to provide services to legitimate customers of Buyer pursuant to an outsourcing services agreement being in place between Buyer and their outsourcing customer. In the event Buyer provides outsourcing services to licensed customers of the Licensed Works, Buyer will not owe Supplier a fee for access to or assignment of a license to such Licensed Work or for transfer of the applicable Licensed Work to a Buyer computer system which is of like configuration as the computer system for which the Licensed Work was licensed. The foregoing is subject to Buyer providing Supplier notice of such Licensed Work to be managed by Buyer and provided the Licensed Work will only be used on behalf of the customer. Upon expiration or termination of the agreement to provide outsourcing services to the customer, Buyer’s right to use that copy of the Licensed Work will end.

 

Supplier’s invoices shall state all applicable Taxes owed by Buyer, if any, by tax jurisdiction and with a proper breakdown between taxable and non-taxable Deliverables and Services. Supplier assumes responsibility to timely remit all such Tax payments to the appropriate governmental authority in each respective jurisdiction. Supplier agrees to use its best efforts to properly calculate any applicable Taxes at the time of invoice. Supplier and Buyer agree to cooperate to minimize, wherever possible and appropriate, any applicable Taxes, including reasonable notice and cooperation in connection with any audit. Supplier shall also bear sole responsibility for all taxes, assessments, or other levies on its own leased or purchased property, equipment or software. Buyer will pay incremental Taxes (which are additional Taxes due as a result of Supplier’s failure to properly invoice Buyer for the correct amount of Taxes) that are legally owed to Supplier. Supplier shall submit, within a reasonable amount of time, a “Tax Only Invoice” which represents the correct amount of Taxes owed. Supplier shall not request or expect payment for any fines, penalties, and/or interest on such incremental Taxes. This provision shall not apply when Buyer accrues the Tax or when a jurisdiction assesses such Tax on Buyer. If Buyer provides a direct pay certificate, certification of an exemption from Tax or reduced rate of Tax imposed by an applicable taxing

 

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authority, then Supplier agrees not to invoice nor pay any such Tax unless and until the applicable taxing authority assesses such Tax, at which time Supplier shall invoice and Buyer agrees to pay any such Tax that is legally owed.

 

Buyer shall withhold Taxes as required under applicable law on payments made to Supplier hereunder and shall be required to remit to Supplier only the net proceeds thereof. Buyer agrees to remit in a timely manner all Taxes withheld to the appropriate government authority in each respective jurisdiction.

 

Supplier will reimburse Buyer from any claims by any jurisdiction relating to Taxes paid by Buyer to Supplier; and for any penalties, fines, additions to Tax or interest thereon imposed as a result of Supplier’s failure to timely remit the Tax payment to the appropriate governmental authority in each respective jurisdiction. Supplier shall also reimburse Buyer for any claims made by a taxing jurisdiction for penalties, fines, additions to Tax and the amount of interest thereon imposed with respect to Supplier’s failure to invoice Buyer for the correct amount of Tax.

 

 

In the event that assets are loaned to Supplier and there is no separate loan agreement in place between Buyer and Supplier for those assets, Supplier will be responsible for risk of loss and for the return of those assets to Buyer.

 

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Supplier represents and warrants on an ongoing basis that, before entering into this SOW, Supplier has disclosed to Buyer in writing the existence of any third party code, including without limitation open source code and freeware, (“Third Party Code”) that is included in or is provided in connection with the Deliverables and that Supplier and the Deliverables are in compliance with all licensing agreements applicable to such Third Party Code. Supplier further represents and warrants on an ongoing basis that, 1) before including any Third Party Code in any modifications, new releases, or new versions of the Deliverables under this SOW, Supplier will disclose to Buyer in writing the existence of such Third Party Code and 2) modified Deliverables or new releases or new versions of the Deliverables including Third Party Code will be in compliance with all licensing agreements applicable to such Third Party Code. Supplier will not provide to Buyer any Deliverables or modifications to or new releases or versions of Deliverables, that include Third Party Code, unless Buyer has approved the inclusion of such Third Party Code.

 

Upon Buyer request, Supplier will provide a Dun and Bradstreet report or similar report at Supplier’s expense to Buyer. Submission of the Dun and Bradstreet report must be initiated through the IBM Global Procurement Supply Portal and routed directly from Dun and Bradstreet to Buyer. Supplier will be responsible for the full cost of the report at the price established by Dun and Bradstreet, and no rebate, refund or other discount which may be applicable to Buyer or its Affiliates will apply to the price of the report purchased by Supplier.

 

 

 

The terms of payment are net 60 days either after receipt of Supplier’s valid invoice or after receipt of the Deliverables or Services, whichever is later.

 

Buyer will pay certain amounts to Supplier when the following milestones of the SCM Initiative are achieved. An External Design Document (“EDD”) will be produced for each SCM release that defines the functionality that will be built and delivered for each release, along with the delivery/acceptance dates for each release. Buyer has sole authority to determine that Deliverables under the EDD’s are acceptable for delivery:

 

 

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All communications between the parties will be carried out through the following designated coordinators. All notices required in writing under this Agreement will be made to the appropriate contact listed below at the following addresses and will be effective upon actual receipt. Notices may be transmitted electronically, by registered or certified mail, or courier. All notices, with the exception of legal notices, may also be provided by facsimile.

 

Business Coordinators
FOR SUPPLIER				FOR BUYER
Name		Mike Feder		Name		Mark Carey
Title		President		Title		SCM Project Executive
Address		400 Royal Palm Way Suite 410 Palm Beach, FL 33480		Address		3039 Cornwallis Rd RTP, NC 27709
Phone		561 ###-###-####		Phone		919 ###-###-####
Fax				Fax		919 ###-###-####
E-mail		***@***		E-mail		***@***

Legal Coordinators
FOR SUPPLIER				FOR BUYER
Name		Michael Krawitz		Name		Ron Leviner
Title		Executive VP, General Counsel		Title		Staff Attorney
Address		400 Royal Palm Way Suite 410 Palm Beach, FL 33480		Address		294 ROUTE 100 SOMERS, NY 10589
Phone		561 ###-###-####		Phone		914 ###-###-####

 

* Confidential Treatment Requested

 

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Fax				Fax (Fax notice shall be valid only when verbal confirmation of receipt is obtained.)
E-mail		***@***		E-mail		***@***
Technical Coordinators
FOR SUPPLIER				FOR BUYER
Name		David Dorret		Name		David Nusbaum
Title		Chief Technology Officer		Title		SCM Architect
Address		180 South Prospect Suite 250 Tustin, CA 92780		Address		3605 HWY 52 N ROCHESTER MN 55901
Phone		(714) 832-2200 ext 52		Phone		507 ###-###-####
Fax				Fax		507 ###-###-####
E-mail		***@***		E-mail		***@***

 

Unless previously submitted by Supplier, in order to initiate electronic transfer of payments associated with this SOW, Supplier will complete the attached form entitled “Authorization for Electronic Funds Transfer” and fax the completed form to Accounts Payable at the number included on the form.

 

The following are additional provisions that modify the referenced Sections of the Base Agreement as follows:

 

Section 1.0 – Definitions – Add the following definitions:

“Electronic Self-Help” means a process where Supplier electronically disables, removes, or otherwise prevents the use of its software product without the Buyer’s or Buyer’s Customer’s cooperation or consent. Electronic Self-Help could be done through electronic or other means (for example: remotely through “back doors” or hidden entrances in the software or through hidden shut-down commands in the software that can be activated by phone or in other ways).

 

“Taxes” means any and all applicable taxes, charges, fees, levies or other assessments imposed or collected by any governmental entity worldwide or any political subdivision thereof and however designated or levied on sales of Deliverables or Services, or sales, use, transfer, goods and services or value added tax or any other duties or fees related to any payment made by Buyer to Supplier for Deliverables and/or Services provided by Supplier to Buyer under or pursuant to this Agreement; exclusive, however, of any taxes imposed upon the net income or capital of Supplier, any taxes in lieu of such net income taxes and any other taxes which are to be borne by Supplier under law.

 

Section 7.0 – Ongoing Warranties – Add the following ongoing representations and warranties: Supplier makes the following ongoing representations and warranties:

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Section 11.0 – Limitation of Liability – Add the following:

In no event will either party be liable for the respective actions or omissions of its Affiliates under this Agreement.

 

Supplier acknowledges and agrees that all WA’s or PA’s issued by Buyer’s Affiliate(s) are independent agreements between Supplier or Supplier Affiliate and the Buyer Affiliate. Buyer shall not be liable to Supplier or Supplier Affiliate(s) for any actions or inactions of any Buyer Affiliate(s) under a WA or PA, nor shall any actions or inactions by Buyer’s Affiliate(s) constitute a breach of the Agreement between Buyer and Supplier.

 

Section 14.0 – General – Add the following:

Supplier will be familiar and will strictly comply with all laws and regulations on bribery, corruption, and prohibited business practices. Supplier and its Affiliates have not and will not offer, promise or make or agree to make any payments or gifts (of money or anything of value) directly or indirectly to anyone for the purpose of influencing, or inducing anyone to influence decisions in favor of, Buyer or any of its Affiliates.

 

 

 

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