Standard Patent License Agreement - Gemalto

1 Confidential LICENSOR LICENSEE initials .. CONFIDENTIAL 1 Standard Patent License Agreement This Patent License Agreement (hereinafter referred to as the Agreement ), is made and entered into by and between : Gemalto , a company organized and existing under the laws of the Netherlands, registered under the number 272 550 26 and having its principal place of business at Joop Geesinkweg 541-542, 1096 AX AMSTERDAM, The Netherlands (hereinafter referred to as "LICENSOR"), and acting for itself and on behalf of its AFFILIATED UNDERTAKINGS for the purposes of Section , and .., a corporation existing and organized under the laws of .., and having its principal place of business .. (hereinafter referred to as "LICENSEE"), and who is an actual or potential smart card competitor of LICENSOR operating in the EEA, and who is acting for itself and on behalf of its AFFILIATED UNDERTAKINGS for the purposes of Sections , and , Both being hereinafter individually referred to as a Party and collectively as the Parties.

2 WITNESSETH : WHEREAS, LICENSOR and its AFFILIATED UNDERTAKINGS are the owners of Patent rights (hereinafter referred to as LICENSED PATENTS ), WHEREAS, LICENSOR, acting for itself and on behalf of said AFFILIATED UNDERTAKINGS desires to grant to LICENSEE a License under the LICENSED PATENTS pursuant to the terms and conditions hereinafter set forth, WHEREAS, LICENSEE desires to be granted such License under the LICENSED PATENTS pursuant to the terms and conditions hereinafter set forth, and accordingly LICENSEE sent to a written request to LICENSOR for such License on xx/yy/zzzz (hereianafter referred to as REQUEST DATE ) , NOW THEREFORE, in consideration of the mutual covenants hereafter set forth, LICENSOR and LICENSEE hereby agree as follows : ARTICLE 1 - DEFINITIONS : Terms in this Agreement which are capitalized shall have the meanings set forth below or as defined elsewhere in this Agreement . Any term, whether used in a plural or a singular form, shall have the same meaning.

3 AFFILIATED UNDERTAKINGS shall mean, with respect to an undertaking, other undertakings controlled by the first undertaking and/or by the ultimate parents of the first undertaking, whereby the notion of control shall be interpreted pursuant to Article 3 of Council Regulation (ECC) No. 139/2004 as amended ( Merger Regulation ) and in light of the Commission Notice on the concept of concentration under the Merger Regulation. BLOCKING Patent shall mean a Patent or Patent application owned by LICENSEE and/or its AFFILIATED UNDERTAKINGS covering SIM, smart payment card or smart ID Confidential LICENSOR LICENSEE initials .. CONFIDENTIAL 2 (government, corporate, healthcare and ail other types of smart ID cards) technology for which no practical alternative technology exists. COMMITMENTS shall mean the conditions and obligations entered into by the LICENSOR to the European Commission in Case , dated May 18, 2006.

4 EFFECTIVE DATE shall mean the REQUEST DATE. ESSENTIAL Patent shall mean as applied to a Patent or Patent application owned by LICENSEE and/or its AFFILIATED UNDERTAKINGS that it is not possible on technical (but not commercial) grounds, taking into account normal technical practice and the state of the art generally available to make, sell, lease, or otherwise dispose of, repair, use or operate LICENSED PRODUCTS which comply with a Standard or widely accepted specifications without infringing that Patent or Patent application. For the avoidance of doubt in exceptional cases where a Standard or widely accepted specification can only be implemented by technical solutions, all of which are infringements of patents or Patent applications, all such patents or Patent applications shall be considered ESSENTIAL PATENTS. Gemalto GROUP shall mean LICENSOR and its AFFILIATED UNDERTAKINGS. LEGAL GROUP shall mean when used in relation to a given entity, any and all physical and/or legal persons, corporation(s) or business entity/ies which directly or indirectly (i) is/are controlled by, (ii) control(s), or (iii) is/are under common control of said given entity.

5 For this purpose, the meaning of the word "control" shall mean the direct or indirect ownership of more than fifty percent (50%) of the voting shares of interest of such legal persons, corporations or business entities. "LICENSED PATENTS" shall mean those patents and Patent applications that are listed in Exhibit 1 and any other potential LICENSOR S Patent PORTFOLIO patents and Patent applications belonging to the Patent FAMILIES comprising said patents and Patent applications listed in Exhibit 1, their divisions, continuations, continuations in part, patents issuing therefrom and all reissues or renewals of the same. LICENSED PATENTS shall not include any other intellectual property rights such as, but not limited to, patents and/or patents applications not listed in Exhibit 1 (except if expressly stated herein), trade marks, know how, trade secrets, copyrights or models. LICENSED PRODUCTS shall mean : (a) - any and all portable devices (ex: smartcards, tokens, USB keys, ) for use by an end user and comprising at least one chip, said portable devices comprising means for establishing connection (with or without contact) or communicating with associated devices ( , terminals, readers or servers with applications software), one of the main functions of said portable devices being : a.

6 Identification and/or authentication of the portable device itself and/or of the bearer thereof, and/or b. exchange and/or storage of information and/or history relating to said bearer and/or portable device, provided that the portable device is of pocket size or smaller, and where said portable device(s) can as such be used by the final user, subject to the personalization, which can be done by a third party; and (b) - any part of such portable devices (modules, components whose purpose is to communicate with other parts of portable device, etc.) as defined above. Confidential LICENSOR LICENSEE initials .. CONFIDENTIAL 3 LICENSED PRODUCTS include for example SIM cards, smart payment cards and smart identification cards (government, corporate, healthcare and all other types of smart ID cards). LICENSED PRODUCTS exclude any associated devices ( : terminals, readers or servers with applications software).

7 NET SALES PRICE shall mean actual revenues recognized under generally accepted accounting principles actually received from the sale, use or other disposition of the LICENSED PRODUCTS under License less (a) - sales, use, excise, added value and withholding taxes and (b) - shipping charges. Patent FAMILIES shall mean a one or more patents and/or Patent applications in the Patent PORTFOLIO which (a) are filed in one or more EEA countries for protecting a single invention and (b) claim or have a same priority date under the Paris Convention. Patent PORTFOLIO shall mean, with respect to a legal or natural person, all rights in patents and Patent applications relating to SIM, smart payment cards and smart ID (government, corporate, healthcare and all other types of smart ID cards) segments owned by such person and its AFFILIATED UNDERTAKINGS. TERRITORY means the countries included in the European Economic Area.

8 ARTICLE 2 - License GRANT : Subject to LICENSEE's performance of the payment obligations and declaration obligations set forth in Article 3, Gemalto GROUP hereby grants to LICENSEE who accepts it, a non exclusive, non transferable, personal and direct License under the LICENSED PATENTS to make, use, sell and import LICENSED PRODUCTS anywhere in the TERRITORY and to export LICENSED PRODUCTS from the TERRITORY anywhere outside of the TERRITORY. For the avoidance of doubt, LICENSEE s AFFILIATED UNDERTAKINGS are not granted any License pursuant to the present Agreement . LICENSEE is not hereby entitled to sublicense or subcontract, in whole or in part, the rights granted to it hereunder, except as expressly agreed upon under this Agreement . LICENSEE may subcontract to a third party the manufacturing and assembly, including personalisation, of LICENSED PRODUCTS provided that LICENSEE remains responsible for the performance of the obligations deriving from this Agreement .

9 No License right other than those expressly granted under this Article is granted by LICENSOR to LICENSEE under this Agreement . Notwithstanding the previous sentence, LICENSEE shall be granted the right to License any improvement Patent covering improvements to the LICENSED PATENTS ( improvements to the LICENSED PATENTS shall mean that when carrying out at least one of the claims of said improvement Patent , it implies an infringement of a least one claim of the LICENSED PATENTS). ARTICLE 3 - ROYALTIES AND PAYMENTS : Royalties Confidential LICENSOR LICENSEE initials .. CONFIDENTIAL 4 In consideration of the rights granted to LICENSEE under Article 2 herein above, LICENSEE agrees to pay LICENSOR a lump sum of Euros .. on or before XX/XX/XXXX and ..% (xx, xx percent) of the NET SALE PRICES of any and all LICENSED PRODUCTS made, used, sold, or imported in the TERRITORY or exported from the TERRITORY outside of the TERRITORY.

10 All payments under this Agreement are exclusive of VAT, withholding and other taxes. In case VAT and/or similar tax applies to any such payment, the required amount of such tax shall be payable by the LICENSEE in addition to such payment. Declaration & Payment LICENSEE shall make payments to, and report the running of royalties above, to LICENSOR in accordance with the following : a) LICENSEE agrees to submit written declarations to LICENSOR, within thirty (30) days following the first day of the month of January, April, July and October for each calendar year during the period in which the running royalty is payable under this Agreement , stating in each such declaration in reasonable detail by country, the quantity and description of all LICENSED PRODUCTS used, sold or otherwise disposed of by LICENSEE during the preceding quarterly period and specifying the type of LICENSED PRODUCTS with respect to which the running royalties are payable hereunder, and the amounts of such royalty.