Technology Assignment and Joint Ownership Agreement - Lucent Technologies Inc. and Agere Systems Inc.
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EXECUTION COPY
TECHNOLOGY ASSIGNMENT AND JOINT OWNERSHIP AGREEMENT
by and between
LUCENT TECHNOLOGIES INC.
and
AGERE SYSTEMS INC.
Dated as of January 31, 2001
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TECHNOLOGY ASSIGNMENT AND JOINT OWNERSHIP AGREEMENT
THIS TECHNOLOGY ASSIGNMENT AND JOINT OWNERSHIP AGREEMENT (this
"Agreement"), effective as of January 31, 2001 (the "Effective Date"), is by and
between Lucent Technologies Inc., a Delaware corporation, with offices at 600
Mountain Avenue, Murray Hill, New Jersey 07974, ("LUCENT"), and Agere Systems,
Inc., a Delaware corporation, with offices at 555 Union Boulevard, Allentown, PA
18109 ("Agere").
R E C I T A L S
A. WHEREAS, the Board of Directors of LUCENT has determined that
it is in the best interests of LUCENT and its stockholders to separate
LUCENT's existing businesses into two independent businesses; and
B. WHEREAS, in furtherance of the foregoing separation, LUCENT desires to
transfer, assign, convey, deliver and vest from LUCENT to Agere a full and
complete interest in the Agere Technology, and an undivided one-half (l/2)
interest in each of the Common Support Function Software and the Joint Corporate
Technology.
NOW, THEREFORE, in consideration of the premises and for other good and
valid consideration, the receipt and sufficiency of which are hereby
acknowledged, the parties, intending to be legally bound, agree as follows:
ARTICLE I
DEFINITIONS
For the purposes of this Agreement, in addition to the words and phrases
that are defined throughout the body of this Agreement, the following words and
phrases shall have the following meanings:
AGERE TECHNOLOGY shall have the meaning set forth in the Patent and
Technology License Agreement. For purposes of clarity, "Agere Technology" shall
include but is not limited to the trade secrets, know how, and computer programs
(in source and object code forms), listed in the attached Schedule A.
COMMON SUPPORT FUNCTION SOFTWARE means the computer programs, in source
and object code forms, including their respective associated documentation,
listed in the attached Schedule B, to the extent LUCENT owns the intellectual
property rights in the Common Support Function Software.
COPYRIGHTS means any original works of authorship fixed in any
tangible medium of expression as set forth in 17 U.S.C. Section 101 et. seq.
CORPORATE TECHNOLOGY shall have the meaning set forth in the Patent and
Technology License Agreement.
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JOINT CORPORATE TECHNOLOGY means the trade secrets, know how, and computer
programs (in source and object code forms), listed in the attached Schedule C.
LUCENT TECHNOLOGY shall have the meaning set forth in the Patent and
Technology License Agreement.
MASK WORKS means any mask work, registered or unregistered, as
defined in 17 U.S.C. Section 901.
PATENT AND TECHNOLOGY LICENSE AGREEMENT means the Patent and Technology
License Agreement, dated as of February 1, 2001, by and between LUCENT and
Agere.
TECHNOLOGY means any and all technical information, computer or other
apparatus programs, specifications, drawings, records, documentation, works of
authorship or other creative works, ideas, knowledge or data. The term
Technology includes Copyrights, Mask Works and any other intellectual property
right, but does not include any trademark, trade name, trade dress or service
mark, or any patent applications on inventions, discoveries or improvements, or
any patents that may be granted or have been granted thereon.
ARTICLE II
ASSIGNMENT
LUCENT hereby irrevocably transfers and assigns to Agere all of LUCENT's
rights, title and interest in and to the Agere Technology in the United States
and throughout the world along with the exclusive right to grant licenses under
Agere Technology and the right to sue for past infringement of any intellectual
property right (other than patent rights) in Agere Technology.
ARTICLE III
RETENTION
LUCENT and Agere agree that LUCENT retains solely all rights, title and
interest in and to the Lucent Technology and the Corporate Technology (other
than the Joint Corporate Technology, as provided in Article IV).
ARTICLE IV
COMMON SUPPORT FUNCTION SOFTWARE AND JOINT CORPORATE TECHNOLOGY
LUCENT hereby irrevocably transfers and assigns to Agere an undivided,
one-half (l/2), unrestricted interest in the Common Support Function Software
and in Joint Corporate Technology. Each party hereto shall jointly own an equal,
undivided, one-half (l/2), unrestricted interest in each of the Common Support
Function Software and the Joint Corporate Technology,
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with no duty to account to the other party for any exploitation of such
jointly-owned software or technology.
During a period beginning on the Effective Date and ending on December 31,
2001, Agere shall have the right to access and to copy any and all portions of
the Common Support Function Software and in Joint Corporate Technology in
possession of LUCENT. Such access and copying shall be in accordance with a
reasonable request and schedule to be mutually agreed upon between the parties.
All costs associated with the assembling, copying and delivering of such
materials shall be borne by the requesting party.
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IN WITNESS WHEREOF, the parties have caused this TECHNOLOGY ASSIGNMENT AND
JOINT OWNERSHIP AGREEMENT to be executed by their duly authorized
representatives as of the Effective Date.
LUCENT TECHNOLOGIES INC.
By: /s/ DANIEL P. MCCURDY
___________________________
Daniel P. McCurdy
President - Intellectual Property Business
AGERE SYSTEMS INC.
By: /s/ GERARD A. DEBLASI
___________________________
Gerard A. deBlasi
VP - Law, Intellectual Property
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