LICENSE AGREEMENT
This Agreement is effective as of <<DATE>> (the “Effective Date”) by and between SECURITY INNOVATION,
INC., a Delaware corporation having its principal place of business at 187 Ballardvale St, Suite A202, Wilmington,
MA 01887 (“SI”) and <<COMPANY or INDIVIDUAL>> a <<STATE, COUNTRY>> Corporation having a place
of business at <<FULL ADDRESS>> (“LICENSEE”).
WHEREAS, SI is engaged in the design and development of secure cryptographic systems for commerce,
multimedia content, communications and other applications and the release of said software as Open Source; and
WHEREAS, LICENSEE desires to obtain such a license to SI’s NTRU cryptography invention and Open
Source reference source code for use with LICENSEE’s commercial software and/or equipment on the terms and
conditions set forth in this Agreement; and
WHEREAS, SI is willing to grant LICENSEE a license enabling the LICENSEE to use SI’s open source
cryptography invention and reference source code for commercial use in proprietary systems on the terms and
conditions set forth in this Agreement:
NOW, THEREFORE, in consideration of the premises and the mutual covenants contained herein, and for
other good and valuable consideration, the receipt and sufficiency of which is hereby acknowledged, the parties
agree as follows:
ARTICLE I - DEFINITIONS
For the purposes of this Agreement, the following words and phrases shall have the following meanings:
1.1 “Affiliate” means any corporation, company, partnership, joint venture, firm and/or entity which
controls, is controlled by or is under common control with SI or LICENSEE.
1.2
“Open Source Software Project” shall mean the NTRU Cryptography Open Source (aka
NTRUCrypto) project including all source code, documentation, specifications, test vectors and examples contained
therein.
1.3
“Confidential Information” means all materials, trade secrets, or other information regarding a
party’s technology, products, business information, or objectives which is designated as confidential in writing by
the disclosing party, whether by letter or by the use of an appropriate stamp or legend, prior to or at the time any
such material, trade secret, or other information is disclosed by the disclosing party to the other party.
Notwithstanding the foregoing to the contrary: (a) materials, trade secrets, or other information which is orally,
electronically or visually disclosed by a party, or is disclosed in writing without an appropriate letter, stamp, or
legend, shall constitute Confidential Information if the disclosing party, within thirty (30) days after such disclosure,
delivers to the other party a written document or document describing the materials, trade secrets, or other
information and referencing the place and date of such oral, electronic, visual or written disclosure and the names of
the person or persons to whom such disclosure was made; and (b) information obtained by either party while visiting
the other party’s facility, however obtained, shall constitute Confidential Information of the other Party.
1.4
Source Project
“Deliverables” means the reference source code and other items contained in the SI NTRU Open
1.5
"Development Software" means the NTRU reference source code tools and other portions of the
SI Software, described in Appendix A, that are used to incorporate the Run-Time Software in a LICENSEE Product
and enable the Run-Time Software to provide SI core functionality within a LICENSEE Product.
1.6 "End-User" means a customer of LICENSEE who purchases or agrees to purchase LICENSEE
Products from the LICENSEE or their distributors, for use within the bounds of the Permitted Use].
License Agreement name and Revision #:
Date:
1.7 “LICENSEE” means LICENSEE, as well as its respective employees, agents and contractors.
1.8 “LICENSEE Product” means LICENSEE’s proprietary software and/or equipment to include the SI
NTRU system.
1.9: “NTRU Patents” refers to the following patents:
Invention
U.S. Patent No.
U.S. Issue Date
U.S. Application No.
U.S. Filing
Date
Countries
Secure User Identification based on constrained
polynomials
6,076,163
Jun13, 2000
08/954,712
Oct 20, 1997
US
6,081,597
Jun 27, 2000
08/914,449
Aug 19, 1997
US, Japan, Canada,
Australia, Israel,
China, Europe
6,298,137
Oct 2, 2001
09/543,708
Apr 5, 2000
US, Europe, Canada
6,959,085
Oct 25, 2005
09/564,112
May 3, 2000
US, Europe, Canada
7,031,468
Apr 18, 2006
09/939,531
Aug 24, 2001
US, Europe, Canada
Digital signature and authentication method and
apparatus
7,308,097
Dec 11, 2007
10/313,082
Dec 6, 2002
US, Europe, Canada
Digital signature and authentication method and
apparatus
7,913,088
Mar 22, 2011
11/986,101
Nov 20, 2007
US, Europe, Canada
Digital signature and authentication method and
apparatus
Pending
Pending
20090070590
Mar 12, 2009
US, Europe, Canada
Pending
Pending
20130058483
Mar 17, 2013
US, Europe, Canada
Pending
Pending
20150033025
Jan 29, 2015
US, Europe, Canada
Public key cryptosystem method and apparatus
Ring-based public key cryptosystem method
Secure user identification based on ring homomorphisms
Speed enhanced cryptographic method and apparatus
Public key cryptosystem and technique
Digital Signature Technique
1.10
"SI Software" means SI's proprietary computer software. SI Software shall include both the
Development Software and the Run-Time Software.
1.11
“Permitted Use” means the following application areas:
(a) The modification, compiling and inclusion of the NTRU Open Source system library for use
in the LICENSEE Product.
(b) The inclusion of the NTRU Open Source system software modified and compiled directly
into the LICENSEE Product
(c) The use of the NTRU invention in LICENSEE Product
1.12
"Reseller" means those persons or entities who purchase LICENSEE Product for redistribution
without modification.
1.13
"Run-Time Software" means the portion of the SI Software in object code that must be
incorporated in the LICENSEE Product to execute the functionality of the SI Software in the LICENSEE Product.
1.14
“ASV” shall mean actual sales value of any LICENSEE product containing SI intellectual
property calculated by taking the aggregate invoice price charged on arm’s length terms by LICENSEE and any
Affiliates at any time in connection with the sale or license or other distribution of a product, less any: (i) value
added, sales, use, import or other tax, duty or tariff included in such gross revenues, (ii) freight and insurance costs
included in such gross revenues; and (iii) amounts actually repaid or credited with respect to any LICENSEE
products returned.
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ARTICLE II -- DELIVERABLES
2.1
Delivery. LICENSEE may clone the NTRU cryptography system code from the open source
GitHub project located at http://github.com/ntru-crypto, or may write their own implementation.
ARTICLE III – LICENSE GRANT
3.1
Licenses. Subject to the terms and conditions of this Agreement, SI hereby grants to the
LICENSEE a worldwide, nonexclusive, non-transferable, license:
(a) to use the SI Software internally to design (or have designed) LICENSEE Products
(b) to use the SI Software internally to manufacture (or have manufactured) LICENSEE Products;
(c) to sell, supply and distribute the Run-Time Software as an embedded component of the LICENSEE
Products to End Users and Resellers; and
(d) to use the SI Software internally to demonstrate and test LICENSEE Products in support of the above.
3.2
No Other Rights. LICENSEE hereby acknowledges that it shall have no right to sell, convey,
transfer, license, sublicense, or otherwise dispose of SI Software, except as provided herein. LICENSEE further
acknowledges that its rights are limited to those of a LICENSEE only, and that: (i) nothing herein shall be construed
as granting LICENSEE any right, title and interest other than as specifically set forth herein; and (ii) nothing herein
shall be construed as granting any group, division or Affiliate of LICENSEE any right, title and interest or license to
use SI Software.
3.3
limitations:
License Limitations. The licenses granted in Section 3.1 are subject to the following additional
(a) If SI Software is embedded in the LICENSEE Product, the SI Software may only be accessed by the
functionality of the LICENSEE Product.
(b) LICENSEE may not in any way sell, lease, rent, license, sublicense or otherwise distribute the SI
Software or any part thereof or the right to use any part of the SI Software to any person or entity except
as part of a LICENSEE Product.
3.4
Security. LICENSEE acknowledges that security flaws within the LICENSEE Product may
significantly damage SI’s and the Open Source Communities reputation. Therefore, the parties agree as follows:
(a) LICENSEE shall notify SI immediately upon receiving information indicating a security flaw in the
Licensee Products using the Open Source Community Project whereby SI shall report the defect to the
Open Source Community project or LICENSEE shall report the defect directly to the Open source
Community Project. LICENSEE shall require its End Users and Resellers to provide such notification to
LICENSEE.
(b) LICENSEE shall use its best efforts to correct the security flaws immediately upon discovery, and to
distribute such corrections to its End User and Resellers promptly. LICENSEE shall keep SI informed of
its progress, and agrees to cooperate with SI in press releases or other communications regarding the
security flaw.
(3)
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3.5
Contractors. LICENSEE may grant access and use of SI Software to LICENSEE’s contractors
performing services or work related to LICENSEE’s business provided such contractors agree in writing to be
bound by the terms of this Agreement, including but not limited to, Article XIII (Confidentiality).
3.6
Affiliates. If LICENSEE wishes to extend this Agreement to an Affiliate of LICENSEE,
LICENSEE shall give SI written notice of any such arrangement and provide to SI such information as SI may
reasonably request in order for SI to review details of the proposed Affiliate. SI shall notify LICENSEE of its
decision within 30 days of receipt of the information from LICENSEE. SI shall not withhold its consent
unreasonably.
3.7
Distribution. Any distribution of the LICENSEE Product shall be accomplished under a license
agreement (“Sublicense Agreement”) between the LICENSEE and either an End User or Reseller, in a form
reasonably satisfactory to SI. LICENSEE will promptly notify SI of any material violation of a Sublicense
Agreement of which it becomes aware, and will take commercially reasonable efforts to enforce each Sublicense
Agreement with at least the same degree of diligence used in enforcing similar agreements governing End Users of
LICENSEE’s other products.
3.8
Modifications. LICENSEE shall have right to modify the SI Software in connection with the
manufacture of LICENSEE Products; provided, however, that in no event shall LICENSEE have the right to make
any modification to or deviations that affect SI public key encryption, decryption, key generation, signature,
verification and message digest functions without the prior written consent of SI.
ARTICLE IV – OWNERSHIP OF INTELLECTUAL PROPERTY
4.1
Agreement:
Ownership.
With respect to the intellectual property of SI and LICENSEE relating to this
(a) any intellectual property that is developed solely by SI, and relevant to the scope of this Agreement
(including, without limitation, the SI Software) shall remain the intellectual property of SI but available to
all via the Open Source Product.
(b) any intellectual property that is developed solely by LICENSEE, and relevant to the scope of this
Agreement shall be owned by LICENSEE.
ARTICLE V – MARKETING REQUIREMENTS
5.1
The parties provisionally agree to the co-marketing obligations set forth in Appendix B.
ARTICLE VI – TRADEMARKS
6.1
Use of SI Trademarks. SI hereby grants to LICENSEE a non-exclusive, limited license to use the
applicable SI trademarks and logos listed on Appendix C (“Trademarks”) solely as permitted in this Agreement.
LICENSEE agrees to cooperate with SI in facilitating SI’s monitoring and control of the nature and quality of such
products and services, and to supply SI with specimens of use of the Trademarks with each new release of the
Application and upon request. LICENSEE understands and agrees that the use of any Trademark in connection
with this Agreement shall not create any right, title or interest, in or to the use of the Trademark and that all such use
and goodwill associated with the Trademark will inure to the benefit of SI. LICENSEE agrees not to register or
attempt to register any SI Trademarks. All trademarks, service marks, trade names, logos, or other words or symbols
identifying or associated with the Software or the business of SI (“Marks”) remain the exclusive property of SI and
its Licensors. LICENSEE will not do anything to impair those proprietary rights or seek to acquire or register any
rights in the Marks or use any trademarks, service marks, trade names, logos or other words or symbols that are
confusingly similar to the Marks in any language.
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6.2
Use of LICENSEE Trademarks. LICENSEE consents to SI’s reasonable use of its name and logo
in any Open Source Projects marketing materials. LICENSEE agrees to use SI’s name, web address and logo in a
manner consistent with LICENSEE’s partner programs or as may otherwise be agreed between the parties. SI
understands and agrees that the use of any Trademark in connection with this Agreement shall not create any right,
title or interest, in or to the use of the Trademark and that all such use and goodwill associated with the Trademark
will inure to the benefit of LICENSEE. SI agrees not to register or attempt to register any LICENSEE Trademarks.
All trademarks, service marks, trade names, logos, or other words or symbols identifying or associated with the
LICENSEE Products or the business of LICENSEE (“Marks”) remain the exclusive property of LICENSEEs and its
Licensors. SI will not do anything to impair those proprietary rights or seek to acquire or register any rights in the
Marks or use any trademarks, service marks, trade names, logos or other words or symbols that are confusingly
similar to the Marks in any language.
ARTICLE VII – SUPPORT
7.1
Optional Technology Support. During the term of this Agreement, LICENSEE may obtain
technical support for the SI Open Source Project Software from SI for the purpose of LICENSEE’s provision of
support to itself or on behalf of their End User and Resellers. The cost of said support shall be US$10,000 for the
first year starting on the Effective Date and then equal to 20% of the LICENSEE’s annual paid fees, fixed or royalty,
to a maximum of US$10,000 and due annually on the anniversary of the effective date.
ARTICLE VIII – FEES, ROYALTIES AND PAYMENTS
In consideration of the licenses granted by SI and the Support Services provided by SI to LICENSEE in
this Agreement, LICENSEE agrees to pay to SI a license fee or running royalties, depending on the LICENSEE’s
desired business model, as follows:
8.1
available.
License Fee. In consideration of SI's provision of the license, a flat fee per LICENSEE Product is
8.2
Running Royalties. For each LICENSEE product sold, supplied or distributed by LICENSEE
(including by any Affiliate), LICENSEE shall pay a royalty (“Running Royalty”) that best fits their business model
and that is agreed to in advance and either calculated as a percentage of actual sales price (“ASP”) or based on fixed
price cumulative tiers (“CT”) as follows:
Running Royalty Rate
Cumulative Volume of LICENSEE Products
Schedule 1 (CT)
Per
Unit
$2.00
$1.50
$1.00
$0.75
$0.30
$0.15
$0.05
$0.03
Distribution Units
1 - 10,000
10,001 - 20,000
20,001 - 100,000
100,001 - 500,000
500,001 - 1,000,000
1,000,001 - 5,000,000
5,000,001 - 10,000,000
10,000,001+
Schedule Option 2 (ASP)
Per
Unit
3%
Distribution Units
1 < 1,000,000
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> 1,000,001 < 5,000,000
> 5,000,001 +
2%
1%
Prepayment of running royalties will not be required as part of this agreement. For the avoidance of doubt, no part of
the license fee shall be construed, as being an advance payment of Running Royalties, and no right of set-off of
Running Royalties against license fees shall exist. LICENSEE agrees to pay the Running Royalty due to SI within
thirty (30) days of the end of each calendar quarter, with respect to LICENSEE’s ASV for such calendar quarter.
8.3
Fees from Affiliates. LICENSEE shall be responsible for the collection and payment of all amounts
due and owing to SI from Affiliates.
8.4
Taxes. LICENSEE will pay all government taxes, duties and tariffs not based on either SI's net
income from all sources or SI's aggregate net worth, including, but not limited to, sales, use, transfer, value-added,
privilege, property taxes, import and export duties or tariffs, or amounts levied in lieu thereof, based on charges
payable under this Agreement whether such taxes and duties are now or hereafter imposed under the authority of
any federal, state, local or other taxing jurisdiction. Customer will comply with all requirements of the laws
imposing such taxes and duties, including, without limitation, paying any interest or penalties relating to such taxes
and duties. If applicable, Customer will provide SI with a Certificate of Exemption issued pursuant to such laws.
8.5
Interest on Overdue Payments. LICENSEE shall pay interest on all amounts that are not paid to SI
pursuant to this Agreement on the date due, at an annual rate equal to the lesser of: (a) twelve percent (12%), and (b)
the maximum interest rate permitted under applicable law, calculated daily from the due date until the date payment
is received by SI.
ARTICLE IX – PAYMENT INSTRUCTIONS
9.1
Payment Instructions. All payments by LICENSEE under this Agreement shall be made by wire
transfer to the following bank account:
BANK NAME:
SWIFT CODE:
BRIDGE BANK
BBFXUS6S
ABA ROUTING NO:
121143260
BANK ADDRESS:
55 ALMADEN BLVD
SAN JOSE CA 95113
United States of America
ACCOUNT NAME:
ACCOUNT NO:
BENEFICIARY ADDRESS:
Security Innovation Inc.
102711066
187 Ballardvale St Suite A202
Wilmington, MA 01887
United States of America
Payment Notification and Purchase Orders:
Sandra Kirkpatrick
978 267-3449
978 694-1666
skirkpatrick@securityinnovation.com
SI may change the bank account to which payments are made from time to time by providing written notice to
LICENSEE of such change.
(6)
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ARTICLE X– RECORDS, REPORTS AND AUDIT RIGHTS
10.1
LICENSEE has no obligation to report anything to SI other than the inclusion of the Open Source
Project code in additional LICENSEE Products
ARTICLE XI – CONTRACT ADMINISTRATIVE CONTACTS
11.1
Notices. Any notice or other communication pursuant to this Agreement (other than payments
pursuant to Section 9.1) shall be sent to such party by overnight courier, or regular mail, addressed to it at its address
below or as it shall designate by written notice given to the other party. Any such communication shall be effective
upon receipt by the party to whom it is addressed.
Notices to SI shall
be addressed to:
SECURITY INNOVATION, Inc.
187 Ballardvale St, Suite A202
Wilmington, MA 01887
Attn: Ombudsman
With a copy to:
Notices to LICENSEE shall
be addressed to
[LICENSEE to insert]
ARTICLE XII – ASSIGNMENT
12.1
Assignment. This Agreement and the licenses contained herein are personal to LICENSEE and
may not be assigned or transferred by LICENSEE, without the prior written consent of SI. For purposes hereof, an
“assignment” shall include any change in control of LICENSEE whereby another person or entity acquires 50% or
greater ownership of LICENSEE.
ARTICLE XIII – CONFIDENTIALITY
13.1
Treatment of Confidential Information. Each party hereto shall maintain the Confidential
Information of the other party in confidence, and shall not disclose, divulge, or otherwise communicate such
Confidential Information, including but not limited to the terms of this Agreement, to others, or use it for any
purpose, except pursuant to, and in order to carry out, the terms and objectives of this Agreement or the written
consent of the other party. Each party hereby agrees to exercise every reasonable precaution to prevent and restrain
the unauthorized disclosure of such Confidential Information by any of its directors, officers, employees,
consultants, subcontractors, LICENSEEs, or agents.
13.2
Release from Restrictions. The provisions of Section 13.1 shall not apply to Confidential
Information disclosed hereunder which;
(a)
was known or used by the receiving party prior to its date of disclosure to the receiving party; or
(b)
either before or after the date of disclosure to the receiving party is lawfully disclosed to the
receiving party by sources rightfully in possession of such Confidential Information other than the disclosing party;
or
(c)
either before or after the date of disclosure to the receiving party, becomes published or generally
known to the public, through no fault of the receiving party, its Affiliates or subcontractors; or
(7)
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(d)
is required to be disclosed by the receiving party to comply with applicable laws or applicable
rules of any securities exchange on which the receiving party’s securities are traded, to defend or prosecute
litigation, or to comply with governmental regulations, provided however that the receiving party provides prior
written notice of such disclosure to the other party and takes reasonable and lawful actions to avoid and/or minimize
the degree of such disclosure.
ARTICLE XIV – WARRANTIES
14.1
Representations and Warranties of SI.
(a)
SI represents and warrants to LICENSEE that all corporate action on the part of SI, its officers,
directors and stockholders necessary for: (i) the authorization, execution and delivery of this Agreement and (ii) the
performance of all obligations of SI hereunder has been taken and this Agreement constitutes the legal and binding
obligation of SI, enforceable against SI in accordance with its terms.
(b)
SI further represents and warrants to LICENSEE that: (i) it has sufficient right, title and interest in
the SI Software to enter into this Agreement; and (ii) the SI Software is the original work of SI and its licensors and
was developed without unauthorized access to or knowledge of any third party confidential materials.
(c)
THE SI SOFTWARE AND THE DELIVERABLES ARE PROVIDED AS IS. SI DISCLAIMS
ALL OTHER WARRANTIES, WHETHER EXPRESS OR IMPLIED WITH RESPECT TO THE SI SOFTWARE
OR THE DELIVERABLES, INCLUDING, WITHOUT LIMITATION, WHETHER THE LICENSEE PRODUCTS
CAN BE SUCCESSFULLY DEVELOPED OR MARKETED, THE ACCURACY, PERFORMANCE,
SECURITY,
UTILITY,
RELIABILITY,
TECHNOLOGICAL
OR
COMMERCIAL
VALUE,
COMPREHENSIVENESS, INFRINGEMENT, MERCHANTABILITY OR FITNESS FOR ANY PARTICULAR
PURPOSE WHATSOEVER OF THE LICENSEE PRODUCTS AND VALIDITY OF PATENT RIGHTS, ISSUED
OR PENDING.
14.2
Representations and Warranties of LICENSEE.
(a)
LICENSEE represents and warrants to SI that all corporate action on the part of LICENSEE, its
officers, directors and stockholders necessary for: (i) the authorization, execution and delivery of this Agreement
and (ii) the performance of all obligations of LICENSEE hereunder has been taken and this Agreement constitutes
the legal and binding obligation of LICENSEE, enforceable against LICENSEE in accordance with its terms. The
execution of this Agreement and the performance of the transactions contemplated by this Agreement by
LICENSEE will not conflict with or result in a breach of any of the terms, conditions or provisions of, or constitute a
default under, or require a consent under its Certificate of Incorporation or Bylaws (as amended or restated to date)
or any agreement or other instrument to which LICENSEE is a party or by which it or any of its property is bound.
(b)
As of the date hereof, LICENSEE is not aware of any reason why LICENSEE would not have the
right to manufacture, license and sell LICENSEE Products as contemplated in this Agreement.
ARTICLE XV – INDEMNITIES
15.1
Infringement Indemnification by SI. SI agrees that it shall, at its own expense, defend, or at its
option settle, any action or claim instituted against LICENSEE, and pay any award or damages assessed or settled
upon against LICENSEE resulting from such action or claim, insofar as the same is based upon a claim that the SI
Software as delivered to LICENSEE infringes any United States patent, trademark, copyright or trade secret of a
third party or a claim that SI has no right to license the SI Software to LICENSEE hereunder. Such obligation is
subject to the following conditions: (i) LICENSEE shall notify SI in writing immediately after LICENSEE first
becomes aware of a claim; (ii) SI shall have the right to control and direct the investigation, preparation, defense and
settlement of the action; and (iii) LICENSEE shall give SI all reasonably available information, assistance and
authority. The foregoing indemnity shall not apply if the alleged infringement claim arises from use of other than
(8)
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the current unaltered release of the SI Software, or combination of the SI Software with other software or hardware
not provided by SI, if such action would have been avoided but for such use or combination.
15.2
Infringement Indemnification by LICENSEE. LICENSEE agrees to indemnify and hold SI
harmless from and against all damages, costs and expenses (including legal fees) incurred by SI to the extent they
arise out of a claim that the LICENSEE Product infringes a patent, copyright, trademark or trade secret or other
intellectual property right of a third party. Such obligation is subject to the following conditions: (i) SI shall notify
LICENSEE in writing immediately after the date SI first becomes aware of a claim; (ii) LICENSEE has sole control
of the settlement, compromise, negotiation and defense of any such action; and (iii) SI gives LICENSEE all
reasonably available information, assistance and authority, at LICENSEE’s expense, to enable LICENSEE to do so.
THE FOREGOING STATES THE ENTIRE AND EXCLUSIVE OBLIGATION OF LICENSEE TO SI
RELATING TO ANY ALLEGED INFRINGEMENT OF PATENTS, COPYRIGHTS, TRADEMARKS OR
OTHER INTELLECTUAL PROPERTY RIGHTS.
15.3.
Exclusive Sole Remedy. If as a result of any binding settlement among the parties or a final
determination by a court of competent jurisdiction, the SI Software is held to infringe a third party’s United States
patent, trademark, copyright or trade secret and its use is enjoined, or if SI reasonably determines in its sole
discretion that the Software may become subject to an injunction, SI shall have the option to: (a) obtain for
LICENSEE the right to continued use of the SI Software; (b) replace or modify the SI Software so it is no longer
infringing and is substantially similar in functionality to the enjoined SI Software; or (c) refund the license fees paid
by LICENSEE hereunder less depreciation for use assuming straight line depreciation over a five year useful life
and terminate this Agreement.
NOTWITHSTANDING ANYTHING TO THE CONTRARY IN THIS
AGREEMENT, THE FOREGOING STATES SI'S ENTIRE LIABILITY AND LICENSEE'S SOLE AND
EXCLUSIVE REMEDY WITH RESPECT TO CLAIMS OF INFRINGEMENT OF THIRD PARTY
PROPRIETARY OR INTELLECTUAL PROPERTY RIGHTS OF ANY KIND, AND SI EXPRESSLY
DISCLAIMS ANY IMPLIED WARRANTY OF NON-INFRINGEMENT.
15.4
Additional LICENSEE Indemnification. LICENSEE shall defend, indemnify and hold harmless SI
and SI Licensors from and against any claims by a Reseller, End User, or other party arising out of (i) LICENSEE's
making representations or warranties regarding the SI Software to End Users, Resellers or other third parties except as
permitted by this Agreement and (ii) LICENSEE's marketing, sale or distribution of LICENSEE Products.
ARTICLE XVI – LIMITATIONS
16.1.
Limitation of Liability.
(a)
Nothing in this Agreement shall exclude or limit liability for death or personal injury resulting from
the failure of a party to exercise reasonable care in the performance of its obligations under this Agreement.
(b)
THE AGGREGATE LIABILITY OF EITHER SI UNDER ANY CLAIMS ARISING OUT OF OR
IN CONNECTION WITH THIS AGREEMENT OR THE PERFORMANCE OF THEIR OBLIGATIONS UNDER
THIS AGREEMENT (WHETHER IN CONTRACT, TORT, NEGLIGENCE, WARRANTY OR OTHERWISE)
SHALL NOT EXCEED THE GREATER OF: (i) RUNNING ROYALTIES PAID BY LICENSEE TO SI DURING
THE TWELVE (12) MONTH PERIOD PRECEDING THE DATE OF THE INITIAL EVENT RESULTING IN
SUCH CLAIMS; OR (ii) THE AMOUNT THEN PAYABLE TO SI BY LICENSEE UNDER THIS AGREEMENT.
16.2
Limitation of Damages.
IN ANY EVENT, NEITHER PARTY SHALL BE LIABLE TO THE OTHER FOR LOST
PROFITS OR LOSS OF BUSINESS OR FOR ANY ECONOMIC LOSS OR FOR SPECIAL, INDIRECT,
INCIDENTAL OR CONSEQUENTIAL DAMAGES, REGARDLESS OF THE FORM OF ACTION, EVEN IF
SUCH PARTY IS ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.
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ARTICLE XVII – TERM OF AGREEMENT
17.1
Term. This Agreement shall be effective as of the Effective Date. Unless earlier terminated upon
the mutual agreement of the Parties or in accordance with the provisions of Article XVIII, this Agreement shall
continue in force in perpetuity from the Effective Date.
ARTICLE XVIII– TERMINATION
18.1
Termination for Insolvency. If LICENSEE shall cease to carry on its business for any reason, be
liquidated or dissolved, become insolvent, enter into an agreement for the benefit of its creditors, or file any petition
or case under any bankruptcy law or if any such petition or case is filed against it which remains undismissed after
sixty (60) days, then this Agreement and all rights, privileges and license granted hereunder shall terminate upon
written notice by SI.
18.2
Termination for Breach. Upon any material breach or default of this Agreement by either party,
the non-breaching party shall have the right to terminate this Agreement upon sixty (60) days’ written notice to the
breaching party, unless the breaching party shall have cured any such breach or default prior to the expiration of
such sixty (60) day period.
ARTICLE XIX– EFFECT OF TERMINATION
19.1
Consequences of Termination. Upon termination of this Agreement for any reason, all rights,
privileges and licenses granted hereunder shall immediately cease, provided, however, that nothing herein shall be
construed to release either party from any obligation that accrued or matured prior to the effective date of such
termination. Upon termination of this Agreement for any reason, LICENSEE agrees to immediately cease
manufacture, lease and sale of LICENSEE Products and to cease use of all Confidential Information of SI, and to
return all Confidential Information of SI to SI, provided however, that LICENSEE shall have the right to: (i) service
and repair LICENSEE Products sold by LICENSEE, and (ii) fill or complete existing orders for LICENSEE
Products within three (3) months after the date of such termination.
Any termination or expiration of this Agreement shall not affect any accrued rights or liabilities of either
party. The obligations of each party under Sections 4, 6, 8, 10, 13, 14, 15, 16, 18, 19 and 20 shall survive
termination or expiration of this agreement.
ARTICLE XX – GENERAL PROVISIONS
20.1
Governing Law. This Agreement shall be construed, governed, interpreted and applied in
accordance with the laws of the Commonwealth of Massachusetts, U.S.A. without giving effect to any conflict of
laws principles.
20.2
Injunctive Relief. It is expressly agreed that a material breach of this Agreement will cause
irreparable harm to SI and that a remedy at law would be inadequate. Therefore, in addition to any and all remedies
available at law, SI and/or SI Licensors shall be entitled to seek injunctive relief against LICENSEE in the event of
any threatened or actual violation of any or all provisions in this Agreement.
20.3
Severability. The provisions of this Agreement are severable, and in the event that any provisions
of this Agreement shall be determined to be invalid or unenforceable under any controlling body of the law, such
invalidity or unenforceability shall not in any way affect the validity or enforceability of the remaining provisions
hereof.
20.4
No Waiver. The failure of either party to assert a right hereunder or to insist upon compliance with
any term or condition of this Agreement shall not constitute a waiver of that right or excuse a similar subsequent
failure to perform any such term or condition by the other Party.
(10)
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20.5
Export Controls.
(a) LICENSEE shall obtain all necessary licenses and authorizations for governments or other
relevant bodies to enable LICENSEE to fulfill its obligations under this Agreement, which shall
include, but not be limited to, customs clearances, registration of the Agreement if appropriate, export
licenses, exchange control clearances, trading permits and registration for Value Added Tax (VAT) or
its equivalent.
20.6
No Use of Names. Except as expressly permitted by this Agreement, neither party shall use the
name of the other party or any of its employees nor any adaptation thereof in any advertising, promotion or sales
literature without the prior written consent of the other party.
20.7
No Agency. Nothing herein shall be deemed to constitute SI, on the one hand, or LICENSEE, on
the other hand, as the agent or representative of the other, or as joint venturers or partners for any purpose.
20.8
Headings. The headings contained in this Agreement are for convenience of reference only and
shall not be considered in construing this Agreement.
20.9
Successors and Assigns. This Agreement shall be binding upon and inure to the benefit of the
Parties and their successors and permitted assigns.
20.10 Counterparts. This Agreement may be executed in any number of counterparts, each of which
shall be deemed an original but all of such together shall constitute one and the same instrument.
20.11 Force Majeure. Neither party shall be liable hereunder by reason of any failure or delay in the
performance of its obligations hereunder (except for the payment of money) on account of strikes, shortages, failure
of suppliers, riots, insurrection, fires, floods, storms, earthquakes, acts of God, war, governmental action, labor
conditions, or any other cause which is beyond the reasonable control of such party. If such failure or delay
continues for at least ninety (90) days, the party not subject to the force majeure shall be entitled to terminate this
Agreement by notice in writing to the other.
20.12 Entire Agreement. The parties acknowledge that this Agreement, together with its Appendices, sets
forth the entire Agreement and understanding of the parties as to the subject matter hereof and this Agreement shall
not be subject to any change or modification except by the execution of a written instrument executed by both
parties.
IN WITNESS WHEREOF, the parties have duly executed this Agreement as of the day and year set forth
below.
SECURITY INNOVATION, INC.
LICENSEE
By: _____________________________
By: ______________________________
Peter H. Jenney
Vice President, Strategic Initiatives
[Name] ___________________
[Title] ____________________
Date ______________________
Date _____________________
(11)
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Appendix A
Open Source Project Software
NTRUEncrypt Public Key Cryptography Reference Code
<.c & .h files>
<.java files>
<Documentation Files>
<Example files>
<Test files>
<Other>
NTRUSign/
<.c & .h files>
<.java files>
<Documentation Files>
<Example files>
<Test files>
<Other>
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Appendix B
Marketing
1.
Announcements. Within thirty (30) days from the Effective Date, SI and LICENSEE agree to
issue a joint and mutually agreed-upon press release announcing the incorporation of SI Technology in LICENSEE
Products and the license granted hereunder. LICENSEE also grants SI permission to use LICENSEE’s name in SI’s
marketing and sales efforts and printed and electronic communications.
2.
Cooperative Marketing Activities. The parties agree to collaborate on joint marketing activities
designed to foster adoption of LICENSEE Products and generate demand for secure biometric solutions. Each party
will cooperate in all reasonable respects with and support the other party in its press release materials, and provide
reasonable efforts in support of any events sponsored by the other party to highlight the inclusion of SI Software in
the LICENSEE Products.
3.
Marking. LICENSEE agrees that in the event that it is commercially practicable: (i) LICENSEE
shall mark the LICENSEE Products sold in the United States in such a manner as to conform with the patent laws
and practice in the United States, and (ii) all LICENSEE Products shipped to or sold in other countries shall be
marked in such a manner as to conform with the patent laws and practice of the country of manufacture or sale.
4.
Sample Applications. LICENSEE agrees to deliver to SI one (1) copy of the LICENSEE Product
upon the first commercial shipment of the LICENSEE Product. LICENSEE grants SI a worldwide, nonexclusive,
nontransferable, royalty-free right and license solely to use the Application internally and to demonstrate the
application to existing and potential customers for marketing purposes.
5.
Use of SI Trademarks. Use of SI marks is allowed and encouraged though not required on
distributed LICENSEE equipment.
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Appendix C
SI Trademarks and Patents
NTRUEncrypt™
NTRUSign™
Invention
U.S. Patent
No.
U.S. Issue Date
U.S. Application No.
U.S. Filing
Date
Countries
Secure User Identification based on constrained polynomials
6,076,163
Jun13, 2000
08/954,712
Oct 20, 1997
US
6,081,597
Jun 27, 2000
08/914,449
Aug 19, 1997
US, Japan, Canada,
Australia, Israel,
China, Europe
6,298,137
Oct 2, 2001
09/543,708
Apr 5, 2000
US, Europe, Canada
6,959,085
Oct 25, 2005
09/564,112
May 3, 2000
US, Europe, Canada
7,031,468
Apr 18, 2006
09/939,531
Aug 24, 2001
US, Europe, Canada
7,308,097
Dec 11, 2007
10/313,082
Dec 6, 2002
US, Europe, Canada
7,913,088
Mar 22, 2011
11/986,101
Nov 20, 2007
US, Europe, Canada
Pending
Pending
20090070590
Mar 12, 2009
US, Europe, Canada
Pending
Pending
Pending
Aug 12, 2001
US
Public key cryptosystem method and apparatus
Ring-based public key cryptosystem method
Secure user identification based on ring homomorphisms
Speed enhanced cryptographic method and apparatus
Digital signature and authentication method and apparatus
Digital signature and authentication method and apparatus
Digital signature and authentication method and apparatus
Security enhanced public key cryptosystem
14
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Appendix D
Software Support Terms and Conditions
Technical Support shall be provided to LICENSEE on issues regarding the Open Source Project software libraries
and their appropriate usage and implementation on the target CPU architecture. Live Support will be available
during normal business hours, 0800-1700h EST. Requests for support via email will be answered within 24 hours of
receipt by the SI technical support department
Defect Reports should be filed in the ntru-crypto GitHub project. Each defect reported will be triaged and
prioritized for repair through the Open Source Project’s defect management system at GitHub. All submissions
must be accompanied by a C/C++ or Java program of 25 lines or less that reproduces the problem in order to be
considered for triage.
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