SPECIFICATION LICENSE and NON-ASSERTION AGREEMENT (The Agreement), Between
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TM MIFARE4Mobile SPECIFICATION LICENSE AND NON-ASSERTION AGREEMENT (the Agreement), between 1. Giesecke & Devrient GmbH with its principal place of business at Prinzregentenstraße 159, D- 81677 Munich, Germany (hereinafter referred to as “G&D”); and Gemalto SA, with its principal place of business at 6 Rue de la Verrerie, 92190 Meudon, France (hereinafter referred to as “Gemalto”); and NXP Semiconductors Netherlands B.V., a private limited liability company incorporated under the laws of the Netherlands with its registered offices at High Tech Campus 60, 5656 AG Eindhoven, the Netherlands also acting on behalf of NXP B.V. (hereinafter referred to as “NXP”); and Oberthur Technologies SA, with its registered head office at 50 Quai Michelet, 92300 Levallois- Perret, France, (hereinafter referred to as “Oberthur”); and STMicroelectronics International NV, a company incorporated and exiting under the laws of The Netherlands, acting through its Swiss branch, with a registered office at 39, chemin du Champ- des-Filles, 1228 Genève / Plan-les Ouates, Switzerland (hereinafter referred to as “ST”); With G&D, Gemalto, NXP, Oberthur and ST each referred to as a “Licensor” and collectively the “Licensors”; and 2. the Licensee as named in the specification request form filled in on the MIFARE4Mobile website of Licensors www.mifare4mobile.org on behalf of himself/herself and the organization he/she is representing. The Licensors and the Licensee are in this Agreement collectively referred to as the Parties and individually also as a Party. IT IS AGREED as follows: 1. The Licensors do not give any representations or warranties, express or implied, as to the accuracy or completeness of Information contained in the MIFARE4Mobile Specification and/or provided by the Licensors under this license and shall have no liability for the consequences of use of such Information. THE MIFARE4Mobile Specification IS PROVIDED “AS IS” WITH NO WARRANTIES EXPRESS, IMPLIED OR STATUTORY, INCLUDING BUT NOT LIMITED TO ANY WARRANTY OF SATISFACTORY QUALITY, MERCHANTABILITY, NON-INFRINGEMENT OF ANY THIRD PARTY PATENTS, COPYRIGHTS, TRADE SECRETS OR OTHER RIGHTS OR FITNESS FOR A PARTICULAR PURPOSE. 2. The Licensors reserve the right to make changes or modifications to Information published in the MIFARE4Mobile Specification, including without limitation to the interfaces, product descriptions, compliance and robustness rules and the license terms, at any time and without notice. This document supersedes and replaces all Information supplied prior to the publication hereof. 3. Subject to the provisions of Section 4, the Licensors hereby grant to Licensee a personal, non- exclusive, non-transferable, royalty free, worldwide license (without the right to sublicense) under the Licensors’ copyrights and other applicable intellectual property rights in the MIFARE4Mobile Specification, however not patents and trademarks, to use the MIFARE4Mobile Specification for Page 1 of 3 the purpose of developing, having developed, manufacturing, having manufactured, offering to sell, selling, supplying or otherwise distributing an implementation of the MIFARE4Mobile Specification as well as trusted applications (e.g. wallets or mobile wallets) and/or proxy applications (e.g. communication proxies) and/or related services complying with the MIFARE4Mobile Specification. 4. Products, software and services that make use of the MIFARE4Mobile Specification shall solely be used (i) in conjunction with an IC where all MIFARE implementations running on this IC are provided by NXP or by a party licensed by NXP to provide those MIFARE implementations on that IC and (ii) in compliance with the most recent MIFARE4Mobile Compliance and Robustness Rules published on the MIFARE4Mobile website of Licensors www.mifare4mobile.org. 5. No license, express, implied or otherwise, is granted to the Licensee to use the G&D trademark, Gemalto trademark, the NXP trademark, the Oberthur trademark, the ST trademark, the MIFARE4Mobile trademark or the MIFARE trademark in connection with the MIFARE4Mobile Specification or any products based thereon. No license, express, implied or otherwise, is granted to the Licensee to use the MIFARE Technology. Nothing herein shall be construed as authority for Licensee to make any representations on behalf of the Licensors in respect of the MIFARE4Mobile Specification. 6. Non Assert – Subject to the provisions of Section 7 the Licensors and each Licensor will not assert against the Licensee or – to the extent that MIFARE4Mobile Specification-compliant products or services are sold or provided by Licensee - any of the Licensee’s direct or indirect customers any claims of patents owned by any of the Licensors of which infringement cannot be avoided when implementing and using the MIFARE4Mobile Interfaces contained in the MIFARE4Mobile Specification because of lack of technical alternatives, provided that the products implementing the MIFARE4Mobile Specification (i) are used solely in conjunction with an IC where all MIFARE implementations running on this IC are provided by NXP or by a party licensed by NXP to provide those MIFARE implementations on that IC and (ii) comply with the most recent MIFARE4Mobile Compliance and Robustness Rules published on the MIFARE4Mobile website of Licensors www.mifare4mobile.org. This non-assert is not provided for any and all claims of patents owned by any of the Licensors of which infringement cannot be avoided by implementing any specification or standard included by normative reference into the MIFARE4Mobile Specification. 7. For the purpose of reciprocity, the Licensee hereby undertakes to not assert against any Licensor or other licensees of the MIFARE4Mobile Specification or –to the extent that MIFARE4Mobile Specification-compliant-products or services are sold or provided by Licensor or such other licensee– any of the Licensors’ or other licensees’ direct or indirect customers any of the Licensee’s current and future patent claims of which infringement cannot be avoided when implementing and using the MIFARE4Mobile Interfaces contained in the MIFARE4Mobile Specification, except for any and all claims of patents owned by the Licensee of which infringement cannot be avoided by implementing any specification or standard included by normative reference into the MIFARE4Mobile Specification, because of lack of technical alternatives. 8. Termination – This Agreement may be terminated by the Licensee with a notice of 30 days to the end of a month. This Agreement automatically terminates if Licensee breaches any of its Page 2 of 3 obligations under this Agreement. Upon termination Licensee shall (i) destroy all copies of the MIFARE4Mobile Specifications and certify such destruction to Licensors in writing, (ii) stop all use of the MIFARE4Mobile Specification and (iii) stop the development, manufacturing, sale, supply and distribution of implementations of the MIFARE4Mobile Specification. 9. No Re-Distribution – The MIFARE4Mobile Specification is confidential. The Licensee shall not re- distribute the MIFARE4Mobile Specification or otherwise make the MIFARE4Mobile Specification available to any third party. The Licensee shall not transfer the MIFARE4Mobile Specification or any data carrier on which it is stored to any third party, or grant any third party any rights to the MIFARE4Mobile Specification. 10. Open Source – The Licensee shall not release any source code, binary code or any other means of implementation of the MIFARE4Mobile Interfaces under Open Source Licensing Terms or combine such code or other means of implementation with third party code in a way that would oblige Licensee or another party to make the source code, binary code or other means of implementation of the MIFARE4Mobile subject to Open Source Licensing Terms. For this Section, “Open License Terms” shall mean terms in any license agreement or grant that require as a condition of use, modification or distribution of a work (i) the making available of source code, design descriptions or other materials preferred for modification, or (ii) the granting of permission for creating derivative works, or (iii) the granting of a license to any person under Intellectual Property Rights regarding the work or any work that contains, is combined with, requires or otherwise is based on the work. 11. The Licensee shall make adequate efforts to notify and inform all employees of the Licensee’s organization having access to the MIFARE4Mobile Specification of the limitations, duties and obligations regarding non-disclosure, copying and other conditions of use of the MIFARE4Mobile Specification provided under this Agreement. 12. The following sections shall survive termination of this Agreement: 1, 4, 5, 9, 10, 11, 12 and 13. 13. This Agreement is governed by the law of Germany. Page 3 of 3 .