Form of Intellectual Property Matters Agreement
INTELLECTUAL PROPERTY MATTERS AGREEMENT
by and between
Dated as of [●], 2020
INTELLECTUAL PROPERTY MATTERS AGREEMENT
This INTELLECTUAL PROPERTY MATTERS AGREEMENT (this Agreement), dated as of [●], 2020 (the Effective Date), is entered into by and between Fortive Corporation (Fortive), a Delaware corporation, and Vontier Corporation (Vontier), a Delaware corporation. Party or Parties means Fortive or Vontier, individually or collectively, as the case may be.
W I T N E S S E T H:
WHEREAS, the Parties have entered into that certain Separation Agreement, dated as of the date hereof (the Separation Agreement); and
WHEREAS, as of the Effective Date, the Fortive Group may own certain Patents, Copyrights and Know-How that are necessary or used in the Vontier Business as of the Effective Date, and the Vontier Group may own certain Patents, Copyrights and Know-How that are necessary or used in the Fortive Retained Businesses as of the Effective Date, and Fortive wishes to grant to Vontier, and Vontier wishes to grant to Fortive, a license to such Intellectual Property in accordance with the terms hereof.
NOW, THEREFORE, in consideration of the foregoing and the mutual agreements, provisions and covenants contained in this Agreement, the Parties hereby agree as follows:
Section 1.01 Definitions.
(a) Unless otherwise defined herein, all capitalized terms used herein shall have the same meanings as in the Separation Agreement.
(b) The following capitalized terms used in this Agreement shall have the meanings set forth below:
Copyrights shall mean copyrights and copyrightable subject matter, excluding Know-How.
FBS shall have the meaning set forth in the FBS License Agreement.
FBS License Agreement shall mean the FBS License Agreement of even date herewith by and between Fortive and Vontier.
Fortive Field of Use shall mean (a) all fields outside of the Vontier Business and (b) natural evolutions or extensions thereof.
Fortive Licensed Copyrights shall mean the Copyrights that are (a) owned or Licensable by the Fortive Group as of the Effective Date and (b) used in the Vontier Business as of the Effective Date.
Fortive Licensed IP shall mean the Fortive Licensed Copyrights, Fortive Licensed Know-How and Fortive Licensed Patents, excluding FBS (as licensed under the FBS License Agreement).
Fortive Licensed Know-How shall mean the Know-How that is (a) owned or Licensable by the Fortive Group as of the Effective Date and (b) used in the Vontier Business as of the Effective Date.
Fortive Licensed Patents shall mean (a) the Patents that are (i) owned or Licensable by the Fortive Group as of the Effective Date and (ii) used in the Vontier Business as of the Effective Date, and (b) all Valid Claims of other Patents that are owned by the Fortive Group that claim priority to the Patents described in clause (a) to the extent such Valid Claims are fully supported by such Patents.
Know-How shall mean trade secrets, and all other confidential or proprietary information, know-how, inventions, processes, formulae, models, and methodologies, but in each case excluding Patents.
Licensable means, with respect to any Intellectual Property, the right to grant sublicenses to a Person within the scope of the licenses set forth in Section 2.01 or Section 2.02, as applicable, without (i) the requirement to obtain consent from, give notice to, or take any other action with respect to any Third Party or (ii) incurring fees, royalties, Liabilities or other costs in connection with such sublicense.
Licensed IP shall mean (a) the Vontier Licensed IP, as licensed to Fortive hereunder and (b) the Fortive Licensed IP, as licensed to Vontier hereunder.
Licensee shall mean (a) Vontier, with respect to the Fortive Licensed IP and (b) Fortive, with respect to the Vontier Licensed IP.
Licensee Field of Use shall mean (a) with respect to Vontier, the Vontier Field of Use, and (b) with respect to Fortive, the Fortive Field of Use.
Licensor shall mean (a) Vontier, with respect to the Vontier Licensed IP, and (b) Fortive, with respect to the Fortive Licensed IP.
Licensor IP shall mean (a) with respect to Vontier, the Vontier Licensed IP and (b) with respect to Fortive, the Fortive Licensed IP.
Patents shall mean patents and patent applications, and any and all related national or international counterparts thereto, including any divisionals, continuations, continuations-in-part, reissues, reexaminations, substitutions and extensions thereof.
Third Party means any Person other than Fortive, Vontier, and their respective Affiliates.
Valid Claim means a claim of an issued and unexpired Patent that (i) has not been revoked or held unenforceable or invalid by a decision of a court or other Governmental Entity of competent jurisdiction from which no appeal can be taken or has been taken within the time allowed for appeal and (ii) has not been abandoned, disclaimed, denied, or admitted to be invalid or unenforceable through reissue or disclaimer or otherwise in such country.
Vontier Field of Use shall mean (a) the field of the Vontier Business and (b) natural evolutions or extensions thereof.
Vontier Licensed Copyrights shall mean the Copyrights that are (a) owned or Licensable by the Vontier Group as of the Effective Date and (b) used in the Fortive Retained Business as of the Effective Date.
Vontier Licensed IP shall mean the Vontier Licensed Copyrights, Vontier Licensed Know-How and Vontier Licensed Patents.
Vontier Licensed Know-How shall mean the Know-How that is (a) owned or Licensable by the Vontier Group as of the Effective Date and (b) used in the Fortive Retained Business as of the Effective Date.
Vontier Licensed Patents shall mean (a) the Patents that are (i) owned or Licensable by the Vontier Group as of the Effective Date and (ii) used in the Fortive Retained Business as of the Effective Date, and (b) all Valid Claims of other Patents that are owned by the Vontier Group that claim priority to the Patents described in clause (a) to the extent such Valid Claims thereof are fully supported by such Patents.
GRANTS OF RIGHTS
Section 2.01 License to Vontier of Fortive Licensed IP. Subject to the terms and conditions of this Agreement, Fortive hereby grants, and shall cause its Affiliates to grant, to Vontier a non-exclusive, royalty-free, fully paid-up, irrevocable, sublicensable (in connection with activities in the Vontier Field of Use by Vontier and its Affiliates but not for the independent use of Third Parties), and worldwide license to the Fortive Licensed IP in the Vontier Field of Use (Vontier License). Subject to the terms and conditions of this Agreement, the Vontier License shall include the right to exercise any and all rights in the Fortive Licensed IP in the Vontier Field of Use, including the right to use, practice, copy, perform, render, develop, modify, and make derivative works of the Fortive Licensed IP within the Vontier Field of Use and to make, have made, use, sell, offer for sale, export and import any products, services or technologies, in each case with respect to the Vontier Field of Use.
Section 2.02 License to Fortive of Vontier Licensed IP. Subject to the terms and conditions of this Agreement, Vontier hereby grants, and shall cause its Affiliates to grant, to Fortive a non-exclusive, royalty-free, fully paid-up, irrevocable, sublicensable (in connection
with activities in the Fortive Field of Use by Fortive and its Affiliates but not for the independent use of Third Parties), and worldwide license to the Vontier Licensed IP solely within the Fortive Field of Use (Fortive License). Subject to the terms and conditions of this Agreement, the foregoing license shall include the right to exercise any and all rights in the Vontier Licensed IP in the Fortive Field of Use, including the right to use, practice, copy, perform, render, develop, modify, and make derivative works of the Vontier Licensed IP within the Fortive Field of Use and to make, have made, use, sell, offer for sale, export and import any products, services or technologies, in each case with respect to the Fortive Field of Use.
Section 2.03 Limitations. Notwithstanding anything to the contrary herein, the licenses hereunder are subject to any rights of or obligations owed to any Third Party under any Contracts existing as of the Effective Date between Licensor or its Affiliates and any such Third Party.
Section 2.04 Reservation of Rights. Each Party reserves its and its Affiliates rights in and to all Intellectual Property that is not expressly licensed hereunder. Without limiting the foregoing, this Agreement and the licenses and rights granted herein do not, and shall not be construed to, confer any rights upon either Party, its Affiliates, or its sublicensees by implication, estoppel, or otherwise as to any of the other Partys or its Affiliates Intellectual Property, except as otherwise expressly set forth herein.
Section 2.05 FBS. Notwithstanding anything to the contrary herein, no rights under or with respect to FBS are granted pursuant to this Agreement.
INTELLECTUAL PROPERTY OWNERSHIP
Section 3.01 Ownership.
(a) As between the Parties, Licensee acknowledges and agrees that (i) Licensor owns the Licensor IP, (ii) none of Licensee, its Affiliates or its sublicensees, will acquire any rights in the Licensor IP, except for the licenses and sublicenses granted pursuant to Sections 2.01 and 2.02, and (iii) Licensee shall not, and shall cause its Affiliates and its sublicensees to not, represent that they have an ownership interest in any of the Licensor IP.
(b) As between the Parties, each Party shall own all improvements and modifications made by or on behalf of such Party with respect to the Licensed IP; provided that, with respect to Licensee, such improvements and modifications shall not include, and shall be subject to the provisions of this Agreement as they concern, the Licensed IP to which such improvements or modifications are made.
PROSECUTION, MAINTENANCE AND ENFORCEMENT
Section 4.01 Responsibility. Subject to Section 4.02, Licensor shall be solely responsible for filing, prosecuting, and maintaining all Patents within the Licensor IP, in Licensors sole discretion. Licensor shall be responsible for any costs associated with filing, prosecuting, and maintaining such Patents.
Section 4.02 Defense and Enforcement. Licensor shall have the sole right, but not the obligation, to elect to bring an Action or enter into settlement agreements regarding the Licensor IP, at Licensors sole cost and expense.
Section 4.03 No Additional Obligations. This Agreement shall not obligate either Party to disclose or deliver to the other Party, or maintain, register, prosecute, pay for, enforce, or otherwise manage any Intellectual Property except as expressly set forth herein.
DISCLAIMERS; LIMITATIONS ON LIABILITY AND REMEDIES
Section 5.01 Disclaimer of Warranties. Except as expressly set forth herein, the Parties acknowledge and agree that (a) the Licensor IP is provided as-is, (b) the Licensee assumes all risks and Liability arising from or relating to its use of and reliance upon the Licensor IP and (c) each Party makes no representation or warranty with respect thereto. EXCEPT AS EXPRESSLY SET FORTH HEREIN, EACH PARTY HEREBY EXPRESSLY DISCLAIMS ALL REPRESENTATIONS AND WARRANTIES REGARDING THE LICENSOR IP, WHETHER EXPRESS OR IMPLIED, INCLUDING ANY REPRESENTATION OR WARRANTY IN REGARD TO QUALITY, PERFORMANCE, NONINFRINGEMENT, MISAPPROPRIATION, COMMERCIAL UTILITY, OR MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
Section 5.02 Compliance with Laws and Regulations. Each Party hereto shall be responsible for its own compliance with any and all Laws applicable to its performance under this Agreement. FOR THE AVOIDANCE OF DOUBT AND NOTWITHSTANDING ANYTHING HEREIN TO THE CONTRARY, EACH PARTY EXPRESSLY DISCLAIMS ANY EXPRESS OR IMPLIED OBLIGATION OR WARRANTY WITH RESPECT TO THE LICENSOR IP THAT COULD BE CONSTRUED TO REQUIRE LICENSOR TO PROVIDE LICENSOR IP HEREUNDER IN SUCH A MANNER TO ALLOW LICENSEE TO ITSELF COMPLY WITH ANY LAW APPLICABLE TO THE ACTIONS OR FUNCTIONS OF SUCH LICENSEE (OR ITS AFFILIATES).
LIABILITY AND INDEMNIFICATION
Section 6.01 Procedures. The provisions of Article V of the Separation Agreement shall govern any and all Liabilities or indemnification (including any Indemnifiable Losses) under or in connection with this Agreement, whether arising from statute, principle of common or civil law, principles of strict liability, tort, contract or otherwise under or in connection with this Agreement.
Section 7.01 Disclosure and Use Restrictions.
(a) Notwithstanding any termination of this Agreement, each of Fortive and Vontier shall hold, and shall cause their Affiliates and its and their respective officers, employees, agents, consultants and advisors to hold, in strict confidence (and not to disclose or release or use, including for any ongoing or future commercial purpose, without the prior written consent of the Party to whom the Confidential Information relates (which may be withheld in such Partys sole and absolute discretion, except where disclosure is required by applicable Law)), any and all Confidential Information concerning or belonging to the other Party or its Affiliates; provided that each Party may disclose, or may permit disclosure of, such Confidential Information (i) to its respective auditors, attorneys, financial advisors, bankers and other appropriate consultants and advisors who have a need to know such Information for auditing and other non-commercial purposes and are informed of the obligation to hold such Information confidential and in respect of whose failure to comply with such obligations, the applicable Party will be responsible, (ii) if any Party or any of its respective Affiliates is required or compelled to disclose any such Confidential Information by judicial or administrative process or by other requirements of Law or stock exchange rule or is advised by outside counsel in connection with a proceeding brought by a Governmental Entity that it is advisable to do so, (iii) as required in connection with any legal or other proceeding by one Party against any other Party or in respect of claims by one Party against the other Party brought in a proceeding, (iv) as necessary in order to permit a Party to prepare and disclose its financial statements in connection with any regulatory filings or Tax Returns, (v) as necessary for a Party to enforce its rights or perform its obligations under this Agreement, (vi) to Governmental Entities in accordance with applicable procurement regulations and contract requirements or (vii) to other Persons in connection with their evaluation of, and negotiating and consummating, a potential strategic transaction, to the extent reasonably necessary in connection therewith, provided an appropriate and customary confidentiality agreement has been entered into with the Person receiving such Confidential Information. Notwithstanding the foregoing, in the event that any demand or request for disclosure of Confidential Information is made by a Third Party pursuant to clause (ii), (iii), (v) or (vi) above, each Party, as applicable, shall promptly notify (to the extent permissible by Law) the Party to whom the Confidential Information relates of the existence of such request, demand or disclosure requirement and shall provide such affected Party a reasonable opportunity to seek an appropriate protective order or other remedy, which such Party will cooperate in obtaining to the extent reasonably practicable. In the event that such appropriate protective order or other remedy is not obtained, the Party which faces the disclosure requirement shall furnish only that portion of the Confidential Information that is required to be disclosed and shall take commercially reasonable steps to ensure that confidential treatment is accorded such Confidential Information.
(b) Each Party acknowledges that it and the other members of its Group may have in its or their possession confidential or proprietary Information of Third Parties that was received under confidentiality or non-disclosure agreements with such Third Party while such Party and/or members of its Group were part of the Fortive Group. Each Party shall comply,
and shall cause the other members of its Group to comply, and shall cause its and their respective officers, employees, agents, consultants and advisors (or potential buyers) to comply, with all terms and conditions of any such third-party agreements entered into prior to the Effective Date, with respect to any confidential and proprietary Information of Third Parties to which it or any other member of its Group has had access.
(c) Notwithstanding anything to the contrary set forth herein, (i) the Parties shall be deemed to have satisfied their obligations hereunder with respect to the Confidential Information of the other Party if they exercise at least the same degree of care that applies to Fortives confidential and proprietary information pursuant to policies in effect as of the Effective Date and (ii) confidentiality obligations provided for in any Contract between each Party or its Affiliates and their respective employees shall remain in full force and effect. Notwithstanding anything to the contrary set forth herein, Confidential Information of any Party in the possession of and used by the other Party as of the Effective Date may continue to be used by such Party in possession of the Confidential Information in and only in the operation of the Vontier Business (in the case of the Vontier Group) or the Fortive Retained Business (in the case of the Fortive Group).
(d) The Parties agree that irreparable damage may occur in the event that the provisions of this Section 7.01 were not performed in accordance with their specific terms. Accordingly, it is hereby agreed that the Parties shall be entitled to seek an injunction or injunctions to enforce specifically the terms and provisions hereof in any court having jurisdiction, this being in addition to any other remedy to which they are entitled at law or in equity.
Section 7.02 Survival. The confidentiality and nondisclosure obligations of this Article VII shall survive any termination of this Agreement.
Section 8.01 Term. The term of this Agreement shall commence as of the Effective Date and shall continue in perpetuity, provided that, (a) the license granted to Vontier in Section 2.01 with respect to the Fortive Licensed Patents expires upon expiration of the last-to-expire of the Valid Claims included in the Fortive Licensed Patents, and (b) the license granted to Fortive in Section 2.02 with respect to the Vontier Licensed Patents expires upon expiration of the last-to-expire of the Valid Claims included in the Vontier Licensed Patents. Except as otherwise expressly set forth in Section 8.02, this Agreement may not be terminated unless agreed to in writing by the Parties.
Section 8.02 Effect of Expiration and Termination; Accrued Rights; Survival.
(a) Accrued Rights. Upon the earlier of expiration or termination of this Agreement, in part or in its entirety, all licenses and rights granted to Licensee with respect to the Intellectual Property to which such expiration or termination relates shall immediately cease. Expiration and termination of this Agreement, in part or in its entirety, shall be without prejudice to any rights which shall have accrued to the benefit of either Party prior to such expiration and termination (as applicable).
(b) Termination of Sublicenses. Any sublicenses that have been granted by a Licensee to a sublicensee with respect to the Intellectual Property subject to expiration or termination of this Agreement, in part or in its entirety, shall automatically terminate upon such expiration or termination.
(c) Return/Destruction of Materials. Upon termination of this Agreement, Licensee shall, and shall ensure that its sublicensees, within fifteen (15) Business Days of any request by Licensor, return to Licensor, or at Licensors election destroy, all of such Licensors Know-How licensed hereunder that is in their possession or control as of the date of termination.
(d) Surviving Obligations. Expiration and termination of this Agreement, in part or in its entirety, shall not terminate Licensees obligation to pay the Pass-Through Royalties and all other amounts for which Licensee is obligated to reimburse Licensor hereunder that have accrued prior to the effective date of such expiration or termination (as applicable). The following provisions of this Agreement, together with all other provisions of this Agreement that expressly specify that they survive, shall survive expiration and termination of this Agreement, in part or in its entirety: Section 2.04, Section 5.01, this Section 8.02, and Articles III, VI, VII and IX.
Section 9.01 Entire Agreement; Construction. This Agreement, including the Exhibits and Schedules, shall constitute the entire agreement between the Parties with respect to the subject matter hereof and shall supersede all previous negotiations, commitments, course of dealings and writings with respect to such subject matter. In the event of any inconsistency between this Agreement and any Schedule hereto, the Schedule shall prevail. In the event of any conflict between this Agreement and the Tax Matters Agreement, the terms and conditions of the Tax Matters Agreement shall govern.
Section 9.02 Counterparts. This Agreement may be executed in more than one counterpart, all of which shall be considered one and the same agreement, and shall become effective when one or more such counterparts have been signed by each of the Parties and delivered to each of the Parties.
Section 9.03 Notices. All notices, requests, claims, demands and other communications under this Agreement shall be in English, shall be in writing and shall be given or made (and shall be deemed to have been duly given or made upon receipt) by delivery in person, by overnight courier service, or by facsimile with receipt confirmed (followed by delivery of an original via overnight courier service) to the respective Parties at the following addresses (or at such other address for a Party as shall be specified in a notice given in accordance with this Section 9.03):
If to Fortive:
6920 Seaway Blvd.
Everett, WA 98203
Attn: General Counsel
Facsimile: (425) 446-5007
If to Vontier:
5420 Wade Park Boulevard, Suite 206
Raleigh, NC 27607
Attn: General Counsel
Facsimile: [ ]
Section 9.04 Waivers. Any consent required or permitted to be given by any Party to the other Party under this Agreement shall be in writing and signed by the Party giving such consent and shall be effective only against such Party (and its Group). No failure to exercise and no delay in exercising, on the part of any Party, any right, remedy, power or privilege hereunder shall operate as a waiver hereof or thereof; nor shall any single or partial exercise of any right, remedy, power or privilege hereunder or thereunder preclude any other or further exercise thereof or the exercise of any other right, remedy, power or privilege.
Section 9.05 Assignment. This Agreement shall not be assignable, in whole or in part, directly or indirectly, by any Party hereto without the prior written consent of the other Party (not to be unreasonably withheld or delayed), and any attempt to assign any rights or obligations arising under this Agreement without such consent shall be void. Notwithstanding the foregoing, this Agreement shall be assignable, in whole or in part, to (i) an Affiliate of a Party or (ii) a bona fide Third Party in connection with a merger, reorganization, consolidation or the sale of assets of a Party or its Affiliates related to this Agreement so long as the resulting, surviving or transferee entity assumes all the obligations of the relevant Party.
Section 9.06 Successors and Assigns. The provisions of this Agreement and the obligations and rights hereunder shall be binding upon, inure to the benefit of and be enforceable by (and against) the Parties and their respective successors and permitted assigns.
Section 9.07 Subsidiaries. Each of the Parties shall cause to be performed, and hereby guarantees the performance of, all actions, agreements and obligations set forth herein to be performed by any Subsidiary of such Party or by any entity that becomes a Subsidiary of such Party at and after the Effective Date, to the extent such Subsidiary remains a Subsidiary of the applicable Party.
Section 9.08 Third Party Beneficiaries. This Agreement is solely for the benefit of the Parties and should not be deemed to confer upon Third Parties any remedy, claim, Liability, reimbursement, claim of Action or other right in excess of those existing without reference to this Agreement.
Section 9.09 Titles and Headings. Titles and headings to Articles and Sections herein are inserted for the convenience of reference only and are not intended to be a part of or to affect the meaning or interpretation of this Agreement.
Section 9.10 Exhibits and Schedules. The Exhibits and Schedules shall be construed with and as an integral part of this Agreement to the same extent as if the same had been set forth verbatim herein.
Section 9.11 Governing Law. This Agreement and any dispute arising out of, in connection with or relating to this Agreement shall be governed by and construed in accordance with the Laws of the State of Delaware, without giving effect to the conflicts of laws principles thereof.
Section 9.12 Dispute Resolution. The provisions of Article VIII of the Separation Agreement shall govern any Dispute under or in connection with this Agreement.
Section 9.13 Severability. In the event any one or more of the provisions contained in this Agreement should be held invalid, illegal or unenforceable in any respect, the validity, legality and enforceability of the remaining provisions contained herein and therein shall not in any way be affected or impaired thereby. The Parties shall endeavor in good-faith negotiations to replace the invalid, illegal or unenforceable provisions with valid provisions, the economic effect of which comes as close as possible to that of the invalid, illegal or unenforceable provisions.
Section 9.14 Interpretation.
(a) The Parties have participated jointly in the negotiation and drafting of this Agreement. This Agreement shall be construed without regard to any presumption or rule requiring construction or interpretation against the Party drafting or causing any instrument to be drafted.
(b) When a reference is made in this Agreement to an Article, Section or Exhibit, such reference shall be to an Article or Section of, or an Exhibit to, this Agreement unless otherwise indicated. Wherever the words include, includes or including are used in this Agreement, they shall be deemed to be followed by the words without limitation. The words hereof, herein, hereto and hereunder and words of similar import, when used in this Agreement, shall refer to this Agreement as a whole and not to any particular provision of this Agreement.
[Signature page follows]
IN WITNESS WHEREOF, the Parties have caused this Agreement to be executed on the date first written above by their respective duly authorized officers.
[Intellectual Property Matters Agreement Signature Page]