PATENT SALE AGREEMENT
This Patent Sale Agreement (“Agreement”) is entered into on ______________(Effective
Date) by and between ___________________, a ___________ Corporation, having its
principle place of business at ________________________ (Purchaser), and Delphi
Technologies Inc., a Delaware corporation, having its principal place of business at 5725
Delphi Drive, Troy, Michigan 48098 (Seller).
HEREAS, Purchaser desires to purchase Seller’s Patent Rights (as defined below), and W
Seller is willing to sell such Patent Rights to Purchaser under the terms and conditions set
NOW, THEREFORE, in consideration of the following mutual promises and other good
and valuable consideration, the receipt and sufficiency of which is acknowledged, the
parties, intending to be legally bound, agree as follows:
For the purposes of this Agreement, the terms hereunder shall have the meanings
as defined below:
1.1 “Assignment Agreements” means all agreements assigning ownership of the Patent Rights from the inventors and/or prior owners to Seller.
1.2 “Patent Rights” shall mean those specific patent applications and patents listed in Exhibit A (the “Patents”) as well as the right to claim priority based on the applications, the same to be held by and enjoyed by Purchaser to the full end of the term
for which said Letters Patents are granted, as fully and entirely as the same could have
been held and enjoyed by Seller if this sale had not been made, together with all rights of
actions for past infringement thereof including the right to recover damages for said
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1.3 “U.S. Prosecution History Files” means all non-privileged documents in Seller’s custody that are readily accessible by Seller from its files that directly relate to
the prosecution of patent applications and that were filed with or received from the
United States Patent and Trademark Office.
1.4 “Foreign Prosecution History Files” means all non-privileged documents in the custody of Seller’s counsel that are located in the files of Seller’s counsel in a
jurisdiction outside the U.S. that directly relate to the prosecution of patent applications
and that were filed with or received from a foreign patent office.
1.5 “U.S. Deliverables” means the following documentation directly related to
each Patent Right filed in the United States to the extent that such documentation exists
and is readily accessible by Seller from its U. S. files: (a) the original copy of the patent
issued by the USPTO; (b) the original Assignment Agreement(s); (c) the record of
invention; and (d) U.S. Prosecution History Files. Purchaser acknowledges that some of
the Patent Rights predate the existence of Seller and that some of the documents
identified as U.S. Deliverables may not be made available to Purchaser.
1.6 “Foreign Deliverables” means the following documents directly related to
each Patent Right filed outside the United States to the extent that such document exists
and is readily accessible by Seller’s counsel from its files located in a non-U.S.
jurisdiction: (a) the original copy of the patent issued by the foreign patent office; (b) a
copy of each pending patent application; and; (c) Foreign Prosecution History Files.
Purchaser acknowledges that some of the Patent Rights predate the existence of seller and
that some of the documents identified as Foreign Deliverables may not be made available
2. TRANSFER OF PATENTS AND ADDITIONAL RIGHTS
2.1 Seller hereby sells, assigns, transfers and conveys to Purchaser all of Seller’s
right, title and interest in and to the Patent Rights. This sale includes all right, title and
interest of Seller in all causes of action and enforcement rights for the Patents, including
all of its rights to pursue damages, injunctive relief and other remedies for past, current
and future infringement of the Patent Rights. This sale is subject to the pre-existing
rights of others and existing licenses listed in Exhibit B. Upon receipt of the
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Consideration, Seller shall execute and deliver to Purchaser the assignment agreements
attached hereto as Exhibit C within 10 days and shall provide the U.S. Deliverables and Foreign Deliverables within 45 days.
2.2 Effective upon the Closing, and subject to the provisions in paragraph 2.3,
Purchaser hereby grants to Seller and all Affiliates, a royalty-free, non-exclusive, non-
sublicensable, perpetual right and license to the Patent Rights (collectively the “Seller
License”) to practice the methods and to make, have made, use, distribute, lease, sell,
offer for sale, import, export, develop and otherwise dispose of and exploit any of
Seller’s or any Affiliates’ processes and products (collectively the “Covered Products”).
The Seller License shall apply to the reproduction, and subsequent distribution of
Covered Products as they are distributed by Seller, Affiliates, authorized agents of the
Seller, and Affiliates, and third parties in the supply chain for the Seller and any
Affiliates, such as a distributor, replicator, VAR, or OEM. The Seller License is non-
transferable (by operation of law or otherwise), except as set forth in paragraph 2.3.
2.3 Without obtaining the consent of Purchaser, and without providing prior
notice to Purchaser, Seller, or an Affiliate may assign or otherwise sublicense rights
under the Seller License with respect to Covered Products in the context of an assignment
to a third party purchaser (a “Permitted Transferee”) of an operating unit, product line,
or product business of the Seller or an Affiliate that involves the one or more Covered
Products. In the event of each such transfer (a “Transfer”), a Permitted Transferee’s use
of the Seller License will be limited to the Covered Products that are of the type produced
by the transferred operating unit, product line, or product business before the Transfer.
Except for the Covered Products described in the preceding sentence, the Seller License
will not extend to any other products, processes or services of a Permitted Transferee.
Notwithstanding the foregoing, Seller shall retain Seller License rights in the event of a
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3.1 Purchaser shall pay to Seller the sum of _____________ ($__________ )
as consideration for the sale of the Patent Rights to Purchaser under this Agreement. The
$__________ shall be paid upon delivery of this Agreement.
3.2 All payments shall be made by wire transfer of funds to Seller:
The Chase Manhattan Bank N.A.
One Chase Manhattan Plaza
New York, New York 10081, USA
ABA # 021000021
Credit to: Delphi Technologies Inc.
Account # 323022537
4. REPRESENTATIONS AND WARRANTIES
4.1 Mutual Representations and Warranties
Each party represents and warrants to the other as follows:
(a) it is a corporation duly organized and validly existing under the laws of the state or country of its incorporation;
(b) it has the complete and unrestricted power and right to enter into this Agreement and to perform its obligations hereunder;
(c) the execution, delivery and performance of this Agreement by such party does not conflict with any agreement, instrument or understanding, oral or written,
to which such party is a party or by which such party may be bound, nor violate any law
or regulation of any court, governmental body or administrative or other agency having
authority over such party;
(d) all consents, approvals and authorizations from all governmental authorities, administrative or other agencies, trustees or any other persons having
authority over such party required to be obtained by such party in connection with the
execution and delivery of this Agreement have been obtained including any requirements
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of the United States Bankruptcy Court for the Southern District of New York with respect
to Chapter 11 bankruptcy proceedings of the Seller and Seller’s affiliates.
(e) no person or entity has or will have, as a result of the transactions
contemplated by this Agreement, any right, interest or valid claim against or upon such
party for any commission, fee or other compensation as a finder or broker because of any
act by such party or its agents; and
(f) it has not entered into any agreement with any Third Party that is
in conflict with the rights granted to the other party pursuant to this Agreement.
4.2 Seller Representations and Warranties
Seller represents and warrants that:
(a) Seller is the true owner of all right, title and interest in and to the Patent Rights, and Seller knows of no asserted or unasserted claims of ownership of the
Patent Rights by any party other than the Seller;
(b) Seller knows of no inventors of the Patent Rights other than the
named inventors of the Patent Rights, and knows of no asserted or unasserted claims of
inventorship of the Patent Rights by any person other than the named inventors of the
Patent Rights; and
(c) Seller knows of no asserted claims of prior invention of the Patent
Rights by any third party, including any interferences or requests for interferences
involving the Patent Rights, except as appear in the USPTO record.
4.3 Purchaser Representations and Warranties
Purchaser represents and warrants that:
(a) Payments to Seller will be made in accordance with the provisions
contained in Article 3.
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(b) Purchaser is aware that through the conduct of Seller’s business
there are third parties that have license rights under the Patent Rights.
5. DISCLAIMER OF OTHER WARRANTIES
THE WARRANTIES SET FORTH IN ARTICLE 4 ABOVE ARE PROVIDED IN LIEU OF,
AND EACH PARTY HEREBY DISCLAIMS, ALL OTHER WARRANTIES, EXPRESS AND IMPLIED,
RELATING TO THE SUBJECT MATTER OF THIS AGREEMENT, INCLUDING BUT NOT LIMITED
TO THE IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR
PURPOSE, TITLE AND NON-INFRINGEMENT OF THIRD PARTY RIGHTS.
6. GENERAL PROVISIONS
6.1 Paragraph Headings
The paragraph headings are inserted only for purposes of reference. Such
captions shall not affect the scope, meaning or intent of the provisions of this Agreement
nor shall such headings otherwise be given any legal effect.
6.2 Joint Drafting
Seller and Purchaser acknowledge that each has participated in the drafting and
negotiation of this Agreement. For purposes of interpreting this Agreement, each
provision, paragraph, sentence and word herein shall be deemed to have been jointly
drafted by Seller and Purchaser. They intend for this Agreement to be construed and
interpreted neutrally in accordance with the plain meaning of the language contained
herein, and not presumptively construed against any actual or purported drafter or any
specific language contained herein.
Any claim arising under or relating to this Agreement shall be governed by the
internal substantive laws of the State of Michigan without regard to principles of conflict
of laws. Each party hereby agrees to the exclusive jurisdiction and venue of the state and
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federal courts having within their jurisdiction Michigan for all disputes arising out of or
relating to this Agreement.
Any notice, request, or communication under this Agreement shall be effective only if it is in writing and personally delivered; sent by certified mail, postage pre-paid;
facsimile with receipt confirmed; or by nationally recognized overnight courier with
signature required, addressed to the parties at the addresses stated below or such other
persons and/or addresses as shall be furnished in writing by any party in accordance with
this Section 6.3. Unless otherwise provided, all notices shall be sent:
If to Delphi Technologies Inc., to:
Delphi Technologies Inc.
5725 Delphi Drive,
Troy, Michigan 48098
Attn: Director, Commercialization and Licensing
With a copy to:
Legal Department (Intellectual Property)
5825 Delphi Drive
Troy, Michigan 48098
Attn: Assistant General Counsel
If to___________________, to:
Purchaser Contact Information
If sent by facsimile transmission, the date of transmission shall be deemed to be
the date on which such notice, request or communication was given. If sent by overnight
courier, the next business day after the date of deposit with such courier shall be deemed
to be the date on which such notice, request or communication was given. If sent by
certified mail, the third business day after the date of mailing shall be deemed the date on
which such notice, request or communication was given.
6.5 Entire Agreement
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This Agreement, including its exhibits, constitutes the entire agreement between the parties with respect to the subject matter hereof, and merges and supersedes all prior and contemporaneous agreements, understandings, negotiations and discussions, including any letter of intent. No oral agreement or explanation by either party hereto shall alter the meaning or interpretation of this Agreement. No amendments or modifications shall be effective unless in writing signed by authorized representatives of both parties.
This Agreement may be executed in two counterparts, each of which shall
constitute an original document, but both of which shall constitute one and the same instrument.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the Effective
DELPHI TECHNOLOGIES, INC.
Purchaser By: _____________________________________
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Patents to be Assigned
Patent or Application Country Filing Title of Patent
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1. License granted by General Motors Corporation (“GM”) prior to the spin-
off (the “Spin-0ff”) of Seller’s corporate parent, Delphi Corporation
(“Delphi”), from GM in 1999.
GM may have granted licenses pursuant to written agreements under one or more
of the Patent Rights before the Spin-off, some or all of which may be transferable
and sub-licensable. Seller does not have copies of such agreements.
2. License granted to GM.
Seller has granted licenses to GM to make, have made, use, have use, offer to sell
and import products, processes and services under some or all of the Patent Rights.
These licenses include the right to sublicense the foregoing rights to GM’s
affiliates. At least one of these licenses also include the right to sublicense
suppliers of GM and GM’s affiliates to perform any of the foregoing activities,
solely in connection with such GM supplier’s production of products for GM.
GM affiliates are defined very broadly in these license agreements.
3. Re-source license rights under certain contract between Seller and its
Some contracts between Seller and/or any Affiliates and Seller’s customers
include a “re-sourcing” provision that allows Seller’s customers to terminate the
contract and “re-source” the business to another supplier for a variety of reasons. Customers of Seller who exercise their “re-source” rights are licensed to authorize
other suppliers to perform the activities with respect to Covered Products that are
currently performed by Seller or any Affiliates.
4. Prior license granted to Delphi and its Affiliates
a. In connection with Delphi’s divestiture of portions of its business Delphi
has granted under all patents owned by Delphi to the purchaser of such
businesses for the manufacture of the products of such divested business.
b. Delphi has agreed not to assert any additional Delphi patents against
products already under license from Delphi. This is a typical provision in
license agreements and is found in numerous Delphi licenses to others.
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