SOFTWARE & HARDWARE DEVELOPMENT AGREEMENT
THIS SOFTWARE & HARDWARE DEVELOPMENT AGREEMENT ("Agreement"), effective as of
January 1, 2001 ("Effective Date") by and between Canon Inc., a Japanese
corporation registered in the name of "Canon Kabushiki Kaisha" under the
Japanese law having its principal place of business at 30-2, Shimomaruko
3-chome, Ohta-ku, Tokyo 146-8501, Japan ("CANON") and T/R Systems, Inc., a
Georgian corporation having its principal place of business at 1300 Oakbrook
Drive, Norcross, Georgia 30093, U.S.A. ("T/R"), each sometimes referred to
hereinafter as a "Party" and jointly as the "Parties,"
WITNESSETH:
WHEREAS, CANON has been and is now engaged in the development, manufacture
and/or sales of a certain color digital copying and printing machine identified
by CANON as "CLC5000" and certain monochrome digital copy machine-based
multifunctional devices identified by CANON as "iR8500" and "iR600" (hereinafter
collectively "PRODUCTS"), and owns certain information relating thereto;
WHEREAS, T/R has been and is now engaged in the business of certain document
cluster printing systems comprised of a network server installing a certain T/R
server software program identified by T/R as "MicroPress" and multiple numbers
of certain office machines having printing functions with device connection
boards identified by T/R as "PrintLink" (hereinafter the "SYSTEM"); and
WHEREAS, CANON wishes to ask T/R and T/R is willing to undertake development
work of certain software programs and relating board products for CANON to
enable the PRODUCTS to be operated in such SYSTEM;
NOW, THEREFORE, the Parties agree as follows:
ARTICLE 1. DEFINITIONS
1.1 The term "Specifications" as used herein shall mean the enumerated
particulars of software and hardware functions which CANON wishes to
implement and which are specified in Exhibit A attached hereto.
1.2 The term "Project Hardware" as used herein shall mean the hardware
portions of the device connection boards for the PRODUCTS which are
developed by T/R for CANON and sufficiently meets the Specifications;
and any relevant documentation.
1.3 The term "Project Firmware" as used herein shall mean the software
program portions of the device connection boards for the PRODUCTS in
source code form
Page 1
* Confidential information has been omitted and filed separately with the
Commission.
and object code form to be stored on an IC or any other storage on
the Project Hardware which are developed by T/R for CANON and
sufficiently meets the Specifications; and any relevant
documentation.
1.4 The term "Project Board" as used herein shall mean the device
connection boards for the PRODUCTS comprised of the Project Hardware
and Project Firmware and which is more particularly described in
Exhibit A and identified therein as the "Project Board," and is to be
developed by T/R for CANON and delivered to CANON in accordance with
the schedule provided in Exhibit B attached hereto and which
sufficiently meets the Specifications; and any relevant documentation.
1.5 The term "Project Server Software" as used herein shall mean certain
software programs including without limitation certain server software
programs in source code form, which are more particularly described in
Exhibit A and identified therein as the "Project Server Software," and
are to be developed by T/R for CANON and delivered to CANON in
accordance with the schedule provided in Exhibit B attached hereto and
which sufficiently meets the Specifications; and any relevant
documentation.
1.6 The term "Project Software" as used herein shall mean the Project
Firmware and Project Server Software in source code form; and any
relevant documentation.
1.7 The term "Project" as used herein shall mean the development work for
CANON to develop the Project Hardware and Project Software performed by
T/R hereunder pursuant to the schedule provided in the Exhibit B
attached hereto.
1.8 The term "Deliverables" as used herein shall mean the items specified
in Exhibit C attached hereto to be delivered by T/R to CANON hereunder.
1.9 The term "Underlying Portion" as used herein shall mean any T/R
software portion (including related documentation) that is incorporated
in the Project Software which can be evidenced in writing to have been
acquired or developed by T/R separately from and independently of the
Project. Underlying Portion shall not include any software owned by a
third party.
1.10 The term "Project Technology" as used herein shall mean any and all
inventions, discoveries, improvements, designs, ideas, technical data,
devices, steps, works, software, equipment or other creations, whether
or not protectable or protected through patent, utility model,
copyright, trade secret, mask works or other intellectual property
rights, which are conceived, developed, reduced to practice or acquired
by T/R solely or jointly with CANON in carrying out the Project.
Project Technology shall in no event include any T/R Technology.
1.11 The term "T/R Technology" as used herein shall mean any and all
inventions,
Page 2
* Confidential information has been omitted and filed separately with the
Commission.
discoveries, improvements, designs, ideas, technical data, devices,
steps, works, software, equipment or other creations, whether or not
protectable or protected through patent, utility model, copyright,
trade secret, mask works or other intellectual property rights, which
can be evidenced in writing to have been acquired or developed by T/R
separately from and independently of the Project, and which are
incorporated in or otherwise applicable to the Project Hardware,
Project Software, Deliverables or the Project Technology, including
without limitation the Underlying Portion.
1.12 The term "CANON Information" as used herein shall mean any and all
information, regardless of the form or nature thereof, disclosed by
CANON to T/R hereunder in relation to the Project, including without
limitation the Specifications, which CANON has the right to do so
subject to the terms of this Agreement.
1.13 The term "CANON Item" as used herein shall mean any device, machine,
other equipment or software to be lent to T/R by CANON for the use in
performing the Project.
ARTICLE 2. PERFORMANCE OF PROJECT
2.1 T/R shall diligently perform and complete the Project as provided
herein.
2.2 T/R shall keep CANON informed of its progress during the Project and
shall promptly provide CANON with notice of any delay in the Project.
2.3 CANON agrees to disclose, at its sole discretion, to T/R any CANON
Information which CANON deems necessary for T/R to perform the Project.
2.4 T/R shall, at T/R's expense, deliver to CANON all the Deliverables in
accordance with the schedules provided in the Exhibit attached hereto.
Furthermore, T/R shall provide written reports to CANON without delay
in sufficient detail to transfer to CANON all the Project Technology.
T/R shall not deliver the Deliverables and shall not provide such
written reports to any third party without the prior written consent of
CANON. Notwithstanding anything contained herein to the contrary, T/R
will deliver to CANON only the executable code of the Underlying
Portion contained in the Project Software.
2.5 CANON will have the right to inspect the Deliverables to determine
whether they meet the Specifications and certain acceptance criteria of
CANON which shall be separately provided to T/R by CANON. In the event
they fail to meet the Specifications or the foregoing acceptance
criteria, CANON shall have the right
Page 3
* Confidential information has been omitted and filed separately with the
Commission.
for a time period of [ * ] from receipt of the Deliverables to notify
T/R in writing of its rejection thereof, and the reasons therefor. T/R
shall have [ * ] from the date of such notice to modify the
Deliverables to meet the Specifications and the foregoing acceptance
criteria and shall deliver such modified Deliverables to CANON;
provided that, if T/R requires an extended period for such
modification, T/R shall notify CANON of such request within [ * ] of
CANON's notification, upon which the Parties shall discuss in good
faith and determine an extended time period for T/R's modification. In
the event any modified Deliverables fail to meet the Specifications and
the foregoing acceptance criteria after one or more prior failures to
meet the Specifications and the foregoing acceptance criteria, CANON
shall have the right for a time period of [ * ] from receipt of such
modified Deliverables to notify T/R in writing of its rejection
thereof, and the reasons therefor, in which case CANON shall have the
right either to (a) request T/R to further modify the Deliverables, in
accordance with this Section 2.5, or (b) treat such failure to meet the
Specifications or the foregoing acceptance criteria as a material
breach and terminate this Agreement under Section 11.2 below.
2.6 The Project shall be deemed completed when CANON notifies T/R in
writing of its acceptance of all the Deliverables. CANON's sole ground
for non-acceptance of the Deliverables shall be such Deliverables'
non-compliance with either the Specifications or the acceptance
criteria pursuant to Section 2.5.
2.7 During the Project, CANON may send at its expense one or more of its
employees to the facilities of T/R for (1) observation and/or
evaluation of the progress and results of the Project and (2)
assistance in T/R's delivery, transfer and assignment to CANON of the
Deliverables and the Project Technology pursuant to Section 2.4 above.
2.8 During the Project, CANON may also send at its expense one or more of
its employees to the facilities of T/R for participation in the
performance of the Project without relieving T/R from any of its
obligations under this Agreement.
2.9 In the event that CANON requests T/R to answer inquiries in connection
with the Project Hardware, Project Software, Deliverables, Project
Technology, T/R Technology and other information and items disclosed or
provided hereunder by T/R to CANON, T/R shall promptly comply with such
requests in a manner satisfactory to CANON.
2.10 CANON agrees to, at its sole discretion, lend to T/R one or more CANON
Items which CANON deems necessary for T/R to perform the Project.
Notwithstanding
Page 4
* Confidential information has been omitted and filed separately with the
Commission.
anything contained herein to the contrary, T/R shall use reasonable
care in using the CANON Items and shall not use the CANON Items for any
purpose other than performing the Project nor analyze, disassemble,
decompile or reverse engineer the same. All rights, titles and
interests in and to the CANON Items shall remain vested in CANON.
2.11 If T/R believes it appropriate to use as part of the Project Software,
any software program, in whole or in part, for which T/R has no right
to grant a license hereunder to CANON, including without limitation,
any publicly available third party software program, T/R shall seek
CANON's prior consent to do so by giving CANON necessary information
including license terms for such software program. If CANON withholds
such consent, T/R shall look for or create by itself a possible
alternative software program. If T/R recognizes or is aware of
necessity for a license under any third party patent, copyright or
other intellectual property rights in performing and completing the
Project, T/R shall promptly inform CANON thereof, and CANON and T/R
shall discuss and determine whether such license is necessary.
2.12 In the event T/R makes any update, enhancement, version-up or upgrade
of the Underlying Portion or any software program contained in the
Underlying Portion, separately and independently from carrying out the
Project during the term of the Project, T/R shall promptly inform CANON
thereof in writing. Upon CANON's request, T/R shall include such
update, enhancement, version-up or upgrade in the Project Software
[ * ], and Exhibits A, B and C, attached hereto shall be amended to
reflect such update, enhancement, version-up or upgrade.
ARTICLE 3. PROJECT FEE
3.1 In full and complete consideration of this Agreement including the fees
for the Project and the costs and expenses for the Deliverables, CANON
shall pay to T/R [ * ] in accordance with the schedule specified in
Exhibit B subject to T/R's issuance of the invoice prior to each
payment due date:
(a) [ * ]; and
(b) [ * ]
Page 5
* Confidential information has been omitted and filed separately with the
Commission.
3.2 Notwithstanding anything contained herein to the contrary, in the event
this Agreement is sooner terminated pursuant to Section 11.2 due to
T/R's breach or Section 11.3 due to T/R's insolvency, CANON shall be
under no obligation of paying any compensation or fee to T/R after such
termination. In the event this Agreement is sooner terminated pursuant
to Section 11.2 due to Canon's breach, Section 11.3 due to Canon's
insolvency or Section 11.4, CANON shall pay T/R the amount mutually
agreed upon between the Parties for the Project actually performed by
T/R and the costs and expenses for the Deliverables actually delivered
by T/R to CANON pursuant Section 11.5 up to the time of termination of
this Agreement; provided that such amount together with any payments
already made by CANON to T/R pursuant the payment schedule in Section
3.1 above shall in no event exceed the total amount set forth in
Section 3.1 above.
3.3 Within [ * ] after the execution hereof T/R shall provide CANON with an
estimated cost and expense report in writing which is necessary to
prove that all of the payment to be made by CANON pursuant to Section
3.1 above will be used only for the performance of the Project. In the
event T/R fails to issue the foregoing report or such report is not
appropriate or sufficient to prove that the payment is not taxable,
CANON may deduct and withhold from any payment hereunder taxes imposed
by the Japanese Government. In the event CANON pays such withheld
taxes, CANON shall provide T/R with receipts of such taxes issued by
the Japanese Government. If, upon audit by the Japanese Government, any
taxes are subsequently assessed for amounts set forth in Section 3.1
above, [ * ] agrees to pay such taxes including penalty taxes and
delinquency taxes required by the Government directly or to refund such
taxes to [ * ] if such taxes are paid by [ * ].
3.4 For customs purposes, in the event T/R delivers the Deliverables to
CANON hereunder, T/R shall accompany the Deliverables with an invoice
specifying actual costs and expenses for each of the Deliverables.
3.5 Payments made by CANON under this Agreement shall be made to T/R by
cable transfer to the following:
Bank of America NA
Atlanta GA
5125 Oakbrook Parkway
Norcross, GA 30093, U.S.A
T/R Systems, Inc.
[ * ]
Page 6
* Confidential information has been omitted and filed separately with the
Commission.
ARTICLE 4. OWNERSHIP
4.1 All rights, titles and interests in and to the T/R Technology
(including the Underlying Portion) shall remain vested in T/R. T/R
shall grant CANON a world wide, payment free, non-exclusive,
non-transferable, non-royalty bearing license, with the right to
sublicense third parties, to copy and have copied the Underlying
Portion and any software programs of third party suppliers contained in
the Project Software for the sole purpose of inspection and evaluation
the Deliverables, Project Server Software and Project Board and any
improvements thereof pursuant to Section 4.4 below; provided that Canon
shall not, nor shall it allow third parties sublicensed by CANON to
disassemble, decompile or otherwise reverse engineer the executable
code of the Underlying Portion and any software programs of third party
suppliers contained in the Project Software.
4.2 T.R shall transfer and assign to CANON all rights, title and interests
in and to the Project Technology without any additional fee or cost.
T/R retains no right, title and interest in and to the Project
Technology and resultant intellectual property rights whatsoever. CANON
may freely and exclusively use, have used, copy, have copied, modify,
have modified, sell, distribute or otherwise dispose of the Project
Technology for any purpose without restriction, including the right to
apply in its own name and at its own expense for any and all patents,
utility models and any other intellectual property rights for any
Project Technology in such jurisdictions as may be selected by CANON,
and T/R shall cooperate with and assist CANON and its designees
including its attorneys, upon CANON's request, in the preparation,
filing, prosecution, issuance, registration and maintenance of any such
applications for intellectual property rights and resultant
intellectual property rights.
4.3 T/R shall transfer and assign to CANON any and all rights, titles and
interests in and to the items of the Deliverables, Projects Software
and Project Hardware without any fee or cost, subject to T/R's rights
in the T/R Technology and third party supplier's rights in software
programs of such third party supplier contained in the Project
Software.
4.4 CANON shall have the right to develop improvements of the Deliverables,
Project Hardware, Project Software and Project Technology, subject to
T/R's rights in the T/R Technology and third party supplier's rights in
software programs of such third party supplier, independent of T/R and
without any obligation to notify T/R of CANON's intent to do so or the
results thereof. All rights, titles and interests in and to such
improvements shall be wholly vested in CANON, and CANON may freely
make, have made, use, have used, copy, have copied, modify, have
modified, sell, lease, distribute, display or otherwise dispose of such
improvements, and T/R shall have no rights whatsoever with respect to
such improvements.
Page 7
* Confidential information has been omitted and filed separately with the
Commission.
4.5 Except as expressly provided herein, no license or right, express or
implied, is hereby conveyed or granted for any invention, patent
application, patent, copyright or other intellectual property rights of
either party.
ARTICLE 5. CONFIDENTIALITY
5.1 During the term hereof and thereafter, T/R shall keep in strict
confidence the Specifications, Project Technology, Deliverables,
Project Hardware, Project Software, CANON Information and CANON Item
and shall neither disclose them to any person, firm, corporation or any
other entity nor use the same for any purpose other than performing the
Project without the prior written consent of CANON. Notwithstanding the
foregoing, T/R may disclose the Specifications, Project Technology,
Deliverables, Project Hardware, Project Software, CANON Information and
CANON Item, to its officers and employees who need to know such Project
Technology, Deliverables, Project Hardware, Project Software, CANON
Information and CANON Item in order to perform the Project and T/R
shall have such officers and employees comply with the terms and
conditions of this Agreement.
5.2 Notwithstanding Section 5.1 above to the contrary, T/R shall not have
any confidentiality obligation, and no use restriction and no other
restrictions hereunder with respect to any information which:
(a) is or becomes publicly known through no fault of T/R; or
(b) is permitted for release or use without any restriction or
obligation by prior written consent of CANON.
5.3 The CANON Information and CANON Item shall remain the property of
CANON. Upon CANON's request or expiration of the Warranty Period
(defined in Section 7.1 below) hereof, T/R agrees to promptly return to
CANON all the CANON Information and CANON Item, and any copies thereof
in T/R's possession. In case of CANON's specific request, T/R shall
destroy all CANON Information, CANON Item and any copies thereof in
T/R's possession and shall certify CANON of such destruction.
5.4 Subject to Article 4 above, CANON shall have no confidentiality
obligation and no use restriction and no other restrictions concerning
any and all items, technical information and other information
disclosed or provided by T/R hereunder, including without limitation
the Deliverables, the Project Technology, all T/R Technology disclosed
to CANON, and CANON shall have the right to disclose to others, freely
use and otherwise dispose of such items, technical information and
other information without restriction.
Page 8
* Confidential information has been omitted and filed separately with the
Commission.
ARTICLE 6. SUBCONTRACT
6.1 T/R may assign any task of the Project, in whole or in part, to a
subcontractor and disclose CANON Information and/or provide the CANON
Item to such subcontractor only for the purpose of carrying out such
task, subject to terms and conditions of this Agreement and subject
further to CANON's prior written consent thereto.
6.2 In the event that T/R assigns all or a part of the Project to such
subcontractor, T/R shall execute a written agreement with such
subcontractor which at least sets forth:
(a) all rights, titles and interests in and to all inventions,
discoveries, improvements, designs, ideas, technical data,
devices, steps, works, software, equipment or other creations,
whether or not protectable or protected through patent,
utility model, copyright, trade secret, mask works or other
intellectual property rights, which are conceived, developed,
reduced to practice or acquired by such subcontractor in
carrying out such task (the "Subcontractor Project
Technology") shall be assigned and transferred to T/R so that
they shall be qualified as the Project Technology hereunder;
and
(b) such subcontractor shall transfer to T/R all materials,
devices, notebooks, documents and other items made by the
subcontractor in carrying out such task (the "Subcontractor
Deliverables"); and
(c) such subcontractor shall bear the same confidentiality
obligations and other restrictions as set forth in Article 5
and Section 2.10 hereof with respect to the Subcontractor
Project Technology, Subcontractor Deliverables, CANON
Information and CANON Item;
and T/R ensures that such subcontractor shall abide by the foregoing
terms and conditions of the written agreement.
6.3 All activities and works performed by any subcontractors shall be
considered to be performed by T/R for the purpose hereof, and the
foregoing permission to assign the task of the Project to any
subcontractors shall not relieve T/R from performing hereunder. It is
expressly understood by the Parties that T/R shall hold CANON harmless
from any dispute arising out of the relation between T/R and
subcontractors and CANON shall be free form any liability with respect
to any task performed by any subcontractors.
ARTICLE 7. WARRANTY
7.1 T/R represents and warrants that the Deliverables delivered to CANON
shall be free from any defect and/or program error for [ * ] from
acceptance by CANON pursuant to Section 2.6 (the "Warranty Period").
Upon CANON's
Page 9
* Confidential information has been omitted and filed separately with the
Commission.
request, T/R shall during the Warranty Period correct any defect
and/or program error in the Deliverables and/or furnish CANON with
necessary or reasonable assistance or service for maintenance of the
Deliverables, including any repair service to remedy any defect and/or
program error in the Deliverables, without requiring further
additional payment by CANON.
7.2 Upon CANON's request made at any time after the Warranty Period, T/R
agrees to furnish such assistance or service as referred to in Section
7.1 above to CANON on mutually agreeable terms and conditions,
including compensation.
7.3 In the event T/R makes any update, enhancement, version-up or upgrade
of the Underlying Portion or any software program contained in the
Underlying Portion separately and independently after the completion of
the Project pursuant to Section 2.6 above or termination hereof, T/R
shall provide CANON with such update, enhancement, version-up or
upgrade on mutually agreeable terms and conditions, including
compensation, irrespective of the termination or expiration hereof. In
the event CANON requests T/R to make any update, enhancement,
version-up or upgrade of the Project Hardware and Project Software
after the completion of the Project pursuant to Section 2.6 above or
termination hereof, T/R shall make and provide CANON with such update,
enhancement, version-up or upgrade on mutually agreeable terms
including compensation, irrespective of the termination or expiration
hereof.
ARTICLE 8. INDEMNITY
8.1 T/R represents and warrants that the "Warranted Activity" (defined
below) will not infringe any patent, copyright, trade secret or other
intellectual property right of any third party. "Warranted Activity"
shall mean the manufacture, creation, copying, use, sale, distribution,
transfer, lease, display, modification, exportation or other
disposition of (a)the Deliverables, Project Hardware and Project
Software, (b) the Project Technology, or (c) any product or process
embodying any of the foregoing, whether alone or in combination with
other products or processes.
8.2 In the event that any claim, action, suit or proceeding is brought by
any third party in any country of the world against CANON, any of its
subsidiaries, affiliates or licensees, or against any distributor,
dealer, agent or customer of any of them (each referred to as an
"Indemnified Party"), alleging that any Warranted Activity infringes
any patent, copyright, trade secret or other intellectual property
right (whether direct, contributory, or by inducement), T/R shall hold
the Indemnified Party harmless and shall, at its option, defend or
settle such claim, action, suit or proceeding. T/R shall pay for all
losses, damages and reasonable expenses and costs incurred by the
Indemnified Party relating to such claim, action, suit or proceeding,
provided that CANON:
(a) notifies T/R in writing of any such claim, action, suit or
proceeding after CANON itself receives written notice of it;
Page 10
* Confidential information has been omitted and filed separately with the
Commission.
(b) reasonably cooperates in the defense thereof at T/R's expense;
and
(c) authorizes T/R to defend against or settle such claim, action,
suit or proceeding on behalf of CANON, or on behalf of its
subsidiaries, affiliates or licensees, or on behalf of the
distributors, dealers, agents or customers of any of them, to
the extent that CANON has the right to grant such
authorization.
8.3 Notwithstanding Section 8.2 above, in the event CANON desires, CANON
may defend (employing counsel selected by CANON and approved by T/R,
which approval may not be unreasonably withheld) the claim, action,
suit or proceeding as set forth in Section 8.2 above, and may settle
such matter if such settlement is approved in advance by T/R, which
consent may not be unreasonably withheld. Such defense costs of CANON,
to the extent reasonably incurred, shall be paid by T/R. In any event
T/R may participate at its own expense in such defense and settlement,
and if requested by CANON, T/R shall assist CANON in such defense and
settlement at T/R's expense.
8.4 If any Warranted Activity becomes, or in the opinion of CANON, may
become the subject of a claim, action, suit or proceeding alleging
infringement of any patent, copyright, trade secret or other
intellectual property right (whether direct, contributory, or by
inducement), then T/R shall perform either of the following at T/R's
expense:
(a) procure for the Indemnified Party the right under such patent,
copyright, trade secret or other intellectual property to
continue the Warranted Activity; or
(b) to alter, change or modify the Deliverables, Project Hardware
or Project Software so as not to infringe such third party's
intellectual property, or replace the Deliverables, Project
Hardware or Project Software with non-infringing alternatives,
while conforming, as closely as possible, to the
Specifications subject to CANON's approval.
ARTICLE 9. SUPPLY AND LICENSE FOR THE PROJECT BOARD AND PROJECT SERVER SOFTWARE
9.1 Upon CANON's request made after acceptance pursuant to Section 2.6, T/R
agrees to manufacture and steadily supply CANON or the persons,
companies or other entities designated by CANON with the Project Board
and Project Server Software as requested by CANON, all to be
incorporated as part of the SYSTEM. The detailed terms and conditions
for such supply shall be determined in a separate distribution
agreement between T/R and CANON or its designees.
9.2 The supply of the Project Board and Project Server Software from T/R to
CANON's designees other than CANON pursuant to Section 9.1 above shall
be
Page 11
* Confidential information has been omitted and filed separately with the
Commission.
subject to a non-exclusive, royalty bearing, limited license under the
Project Technology, Project Hardware and Project Software to be granted
by CANON to T/R. The detailed terms and conditions of such license from
CANON to T/R for the Project Software and Project Technology shall be
determined in a separate agreement between the Parties.
9.3 During the term of this Agreement and thereafter, T/R shall not deliver
or supply any Project Board and Project Server Software and other
products made with use of any Project Technology, Project Hardware,
Project Software (other than the Underlying Portion) and/or CANON
Information to any third party other than CANON and its designees
without the prior written consent of CANON.
9.4 T/R may use any subcontractor for the production of the Project Board
and Project Server Software, in whole or in part, to support T/R's
supply thereof to CANON pursuant to Articles 9.1 and 9.2 above;
provided, however, that T/R shall execute, prior to any disclosure of
the CANON Information, CANON Item, Project Technology, Project Hardware
or Project Software, an appropriate written agreement with such
subcontractor, which agreement shall impose on such subcontractor
obligations and restrictions no less restrictive than those imposed on
T/R hereunder and that T/R shall be responsible for such
subcontractor's faithful compliance with said agreement.
ARTICLE 10. REPRESENTATION
10.1 T/R and CANON represent and warrant that each Party has full power and
authority to enter into this Agreement.
10.2 T/R represents and warrants that it has not made and shall not make any
commitment to any third party inconsistent with or in derogation of the
rights vested in or granted to CANON hereunder. T/R further represents
and warrants that it is free from any obligation or restriction that
would prevent T/R from entering into or performing under this
Agreement.
ARTICLE 11. TERM AND TERMINATION
11.1 This Agreement shall become effective as of the Effective Date and
continue until the date of completion of CANON's final payment pursuant
to Section 3.1 above unless earlier terminated pursuant to Section
11.2, 11.3 or 11.4 below.
11.2 In the event either Party hereto materially breaches any of its
obligations hereunder, the non-breaching Party may terminate this
Agreement by giving the breaching Party a written notice thereof to be
effective thirty (30) days after the receipt of such notice, unless the
breaching Party cures such breach within such thirty (30)
Page 12
* Confidential information has been omitted and filed separately with the
Commission.
days of the receipt of such notice. In the event that the breaching
Party cures such breach within such thirty (30) days of the receipt of
such notice, there shall be no termination.
11.3 In the event either Party hereto becomes insolvent or makes an
assignment for the benefit of creditors, or a receiver or similar
officer is appointed to take charge of all or part of such Party's
assets, the other Party may terminate this Agreement immediately by
giving a written notice thereof to such Party.
11.4 CANON may terminate this Agreement without cause upon sixty (60) days
written notice to T/R.
11.5 Upon termination of this Agreement pursuant to Section 11.2, 11.3 or
11.4 above, T/R shall immediately deliver to CANON the Deliverables
"as-is" as of the date of such termination.
11.6 Notwithstanding anything herein contained to the contrary, Sections
2.4, 2.9, 2.10, 3.2, 3.3, 3.4, Articles 4 through 10 and Section 12.13
shall survive any termination or expiration hereof.
ARTICLE 12. MISCELLANEOUS
12.1 Each Party shall comply with applicable export control laws and
regulations of the country involved for its exportation of any
information, technical data and commodity. In the event that the export
of any commodity, software, technical data or information by T/R to
CANON hereunder requires a license set forth in the US Export
Administration Regulations, as amended ("EAR"), T/R shall take all
necessary steps to obtain such license and shall promptly notify CANON
thereof. In the event that the export of any commodity, software,
technical data or information by T/R to CANON hereunder requires a
written assurance set forth in the EAR, T/R shall request CANON to
issue such written assurance, providing CANON with sufficient
information therefor. Upon CANON's request, T/R shall furnish CANON
with all necessary assistance, information and documentation, including
without limitation the ECCN (Export Control Classification Number) on
the Commerce Control List.
12.2 The validity, performance, and construction hereof shall be governed by
and interpreted in accordance with the laws of the State of New York,
U.S.A., without reference to its conflict of laws provisions.
12.3 Any and all disputes arising under or in relation to this Agreement
shall be amicably and promptly settled upon consultation between the
parties hereto, but in case of failure to reach such settlement, all
disputes that arise under or in relation to this Agreement shall be
settled or resolved by arbitration. The place of arbitration
Page 13
* Confidential information has been omitted and filed separately with the
Commission.
shall be the country of the respondents, and shall be conducted(a)
under the Commercial Arbitration Rules of the International Chamber of
Commerce if the arbitration is to be held in The United States or (b)
under the Commercial Arbitration Rules of the Japan Commercial
Arbitration Association if the arbitration is to be held in Japan. Any
award of the arbitration shall be final and binding upon the parties.
12.4 No amendment or change hereof or addition hereto shall be effective or
binding on the Parties unless set forth in writing and executed by a
duly authorized representative of each of the Parties.
12.5 Neither Party may assign this Agreement and any of its rights or
obligations under this Agreement without the prior written consent of
the other Party, and purported assignment without such consent shall
have no force or effect. Subject to the foregoing, this Agreement shall
bind and inure to the benefit of the respective Parties and their
successors and assigns.
12.6 In the event that any of the provision of this Agreement shall be held
by a court or other tribunal of competent jurisdiction to be invalid or
unenforceable, the remaining portions of this Agreement shall remain in
full force and effect. The Parties shall then endeavor to replace such
invalid or unenforceable provision with a clause which is closest to
the contents of such invalid or unenforceable provision.
12.7 No delay or omission in exercising any right or remedy hereunder shall
operate as a waiver thereof or of any other right or remedy, and no
single or partial exercise thereof shall preclude any other or further
exercise thereof or the exercise of any other right or remedy.
12.8 CANON reserves the right to, freely and independently of the Project,
develop solely by itself or jointly with others and acquire from any
third party any board product, hardware product and software product of
which operations, characteristics, features or functions may be similar
or identical to, or competitive with the Project Hardware and Project
Software (or Project Board and Project Server Software). No obligation,
including any payment, shall be owed by CANON to T/R as a result of
such independent creation or acquisition.
12.9 Neither Party shall be liable to the other Party for any failure or
delay in the performance of any of its obligations under this Agreement
for the period and to the extent such failure or delay is caused by
riots, civil commotions, wars, hostilities, actions of any government,
acts of God, earthquakes, floods, storms, fires, accidents, explosions,
epidemics, acts of public enemy, invasion, strikes, labor disputes,
lockouts or other similar or different contingencies beyond the
reasonable control of the respective Parties; provided, however, that
any payment obligations of CANON hereunder shall not be executed by
such contingencies.
Page 14
* Confidential information has been omitted and filed separately with the
Commission.
The Party affected shall notify the other Party in writing of the
circumstances of force majeure as soon as possible. If such
circumstances last longer than six (6) months, the other Party may
terminate this Agreement forthwith upon thirty (30) days' prior written
notice to the Party affected.
12.10 Headings to Articles hereof are facilitate reference only, do not form
a part thereof, and shall not in any way affect the interpretation or
construction hereof.
12.11 T/R shall not be deemed to be an agent of CANON as a result of or in
any transaction under or relating to this Agreement, and T/R shall not
in any way pledge CANON's credit or incur any obligation in or on
behalf of CANON.
12.12 Any notice which either Party desires or is obligated to give to the
other Party hereunder shall be in writing and sent by registered air
mail or courier, postage prepaid and addressed to the last known
address of such Party which the notice is intended. As of the date
hereof, any notice to be given to CANON shall be addressed to:
Canon Inc.
30-2, Shimomaruko 3-chome
Ohta-ku, Tokyo 146-8501, Japan
Attention: For technical matters:
Manager
Office Imaging Products System Design Dept. 132
Facsimile Number: +81-3-3757-7183
For all other matters:
Group Executive
Corporate Intellectual Property and
Legal Headquarters
Facsimile Number: +81-3-3756-0947
As of the date hereof, any notice to be given to T/R shall be addressed
to:
T/R Systems, Inc.
1300 Oakbrook Drive
Norcross, GA 30093
For all other matters:
Vice President Business Development
T/R Systems, Inc.
Facsimile Number: 770-448-3202
Page 15
* Confidential information has been omitted and filed separately with the
Commission.
Except as otherwise expressly provided herein, notice shall be deemed
to have been received on the date when actually received by the
receiving Party. Notice hereunder may be given via facsimile; provided,
however, that such notice shall be promptly confirmed in writing and
sent to the receiving Party in accordance with procedures set forth
above in this Section 12.12.
12.13 During the term of this Agreement and thereafter, each Party agrees not
to disclose the terms and conditions of this Agreement to any third
party, except:
(a) with the prior written consent of the other Party; or
(b) to a court or government body having jurisdiction to call
therefor or as required by law, subject to making reasonable
efforts to obtain appropriate protective order to the extent
possible and permissible under laws.
12.14 This Agreement constitutes the entire agreement and understanding
between the Parties on the subject matter hereof, and supersedes and
replaces all prior written or oral discussions and negotiations between
the Parties regarding such subject matter, including without limitation
the NON-DISCLOSURE AGREEMENT effective as of 11 December, 2000 by and
between the Parties ("NDA"). Any and all "CONFIDENTIAL INFORMATION"
defined in the NDA and disclosed by CANON to T/R prior to the Effective
Date shall be governed and controlled by this Agreement.
IN WITNESS WHEREOF, each Party has caused this Agreement to be executed in
duplicate originals as of the date below.
CANON INC. T/R SYSTEMS, INC.
BY: /s/ Masahiro Tomosada BY: /s/ Mike Kohlsdorf
----------------------------------- ----------------------------
NAME: Masahiro Tomosada NAME: Mike Kohlsdorf
--------------------------------- ----------------------------
Senior General Manager,
Office Imaging Products President and CEO
TITLE: System Development Center 1 TITLE: T/R Systems Inc.
-------------------------------- ----------------------------
DATE: August 24, 2001 DATE: August 28, 2001
-------------------------------- ----------------------------
Page 16
* Confidential information has been omitted and filed separately with the
Commission.
CANON NETWORK MICROPRESS FUNCTIONAL SPECIFICATION REV. 1.0.5
EXHIBIT-A
T/R SYSTEMS NMP
(NETWORK MICROPRESS PRINTER)
FUNCTIONAL
SPECIFICATION
PREPARED BY CANON INC.
JUN. 12, 2001
VERSION 1.0.6
CANON STRICTLY CONFIDENTIAL
CANON STRICTLY CONFIDENTIAL PAGE 1/77
* Confidential information consisting of 76 pages has been omitted and filed
separately with the Commission.
NMP
CANON SCHEDULE (NETWORK MICROPRESS PRINTER) REV. 1.0.3
EXHIBIT-B
T/R SYSTEMS NMP
(NETWORK MICROPRESS PRINTER)
SCHEDULE
PREPARED BY CANON INC.
AUG. 07, 2001
VERSION 1.0.2
CANON STRICTLY CONFIDENTIAL
CANON STRICTLY CONFIDENTIAL Rev.1.0.2; August 07, 2001 Page 1/2
* Confidential information consisting of 1 page has been omitted and filed
separately with the Commission.
CANON NETWORK MICROPRESS DELIVERABLES REV. 1.0.3
EXHIBIT-C
T/R SYSTEMS NMP
(NETWORK MICROPRESS PRINTER)
(NORTH AMERICA)
DELIVERABLES
PREPARED BY CANON INC.
AUG. 10, 2001
VERSION 1.0.4
CANON STRICTLY CONFIDENTIAL
CANON STRICTLY CONFIDENTIAL PAGE 1/12
* Confidential information consisting of 11 pages has been omitted and filed
separately with the Commission.