PCLA-ESign-Version-Version-11
PCLA-ESign-Version-Version-11
PCLA-ESign-Version-Version-11
This Bluetooth Patent/Copyright License Agreement (the “License”) is made by and between the
Company identified in the “Company’s Legal Name” field on the membership application
(“Company”) and each Promoter Member of Bluetooth SIG, Inc., a Delaware corporation
(“Bluetooth SIG”). This License will become effective upon the date that Bluetooth SIG issues a
written notice to Company (which may be delivered by email) that Company’s application for
membership in Bluetooth SIG has been accepted by Bluetooth SIG (the “Effective Date”).
Company agrees as follows:
1. Definitions.
(a) “Adopter Member” shall have the meaning set forth in the Bluetooth SIG Bylaws.
(b) “Affiliate” shall have the meaning set forth in the Bluetooth SIG Bylaws.
(d) “Associate Member” shall have the meaning set forth in the Bluetooth SIG Bylaws.
(e) “Bluetooth Qualification Process” means the process created by Bluetooth SIG for
qualifying products.
(h) “Bluetooth Specification” means any adopted Draft Bluetooth Specification including
specifications developed for the Working Group Directives and any Errata Corrections to these
specifications or the Foundation Specification.
(i) “Compliance Requirements” means the document that specifies the requirements that
must be met and the process that must be executed by products for purposes of demonstrating
that such products comply with a Bluetooth Specification and/or Foundation Specification.
Bluetooth SIG may change or add to this document.
(j) “Compliant Portion” means only those specific portions of products (hardware,
software or combinations thereof) that: (i) implement and are compliant with the actual
Bluetooth Specification and/or Foundation Specification, whichever the case may be, (ii) are
qualified pursuant to the Bluetooth Qualification Process, (iii) are within the bounds of the Scope
and (iv) meet the requirements set forth in the Compliance Requirements.
(l) “Draft Bluetooth Specification” means all versions of the document developed by a
specific Working Group based on and within the scope of the given Working Group Directive
and all formal comments thereto provided by any Bluetooth SIG Member within said Working
Group that are to be considered for inclusion in the Bluetooth Specification to be adopted by
Bluetooth SIG.
(m) “Errata Corrections” means any error correction to any Bluetooth Specification or
Foundation Specification created for the sole purpose of error corrections in existing and
published features (but not for additional features) or removal of such features, that are required
because of an unclarity or error in existing feature operation.
(n) “Foundation Specification” means the specification entitled “Bluetooth Version 1.0
Specification Foundation Core” or “Bluetooth Version 1.0 Specification Foundation Profiles”
and published on July 26, 1999 and the Errata Corrections in 1.0 B Specification thereto
approved December 1, 1999 (any others), all of which have been adopted by Bluetooth SIG.
(o) “Necessary Claims” means claims of a patent or patent application that (a) are owned
or controlled by a party or its Affiliates (Licensor) now or at any future time while this License
Agreement remains in effect; and (b) are necessarily infringed by implementing those portions of
a Bluetooth Specification and/or Foundation Specification within the bounds of the Scope,
wherein a claim is necessarily infringed only when it is not possible to avoid infringing it
because there is no technically reasonable non-infringing alternative for implementing such
portions of the Bluetooth Specification and/or Foundation Specification within the bounds of the
Scope. Notwithstanding the foregoing sentence, Necessary Claims do not include any claims (i)
other than those set forth above even if contained in the same patent as Necessary Claims; (ii)
that read solely on any implementations of any portion of the Bluetooth Specification or
Foundation Specification that are not within the bounds of the Scope; or (iii) that, if licensed,
would require a payment of royalties by the Licensor to unaffiliated third parties.
(p) “Scope” means the protocols and data formats needed for Bluetooth interoperability,
and the electrical signaling characteristics solely to the extent disclosed with particularity in a
Bluetooth Specification and/or Foundation Specification where the sole purpose of such
disclosure is to enable products to interoperate, interconnect or communicate as defined within
such Bluetooth Specification and/or Foundation Specification. For clarification, the Scope shall
not include (i) any enabling technologies that may be necessary to make or use any product or
portion thereof that complies with the Bluetooth Specification and/or Foundation Specification,
but are not themselves expressly set forth in the Bluetooth Specification and/or Foundation
Specification (e.g., semiconductor manufacturing technology, compiler technology, object
oriented technology, basic operating system technology, etc.); or (ii) the implementation of other
published specifications developed elsewhere but referred to in the body of the Bluetooth
Specification and/or Foundation Specification; or (iii) any portions of any product and any
combinations thereof the purpose or function of which is not required for compliance with the
(q) “Working Group” means the body of individuals given the task of creating a Draft
Bluetooth Specification that meets the criteria of the Working Group Directive assigned that
particular Working Group by Bluetooth SIG. Working Groups are formed by Bluetooth SIG
based on Working Group Directives.
(r) “Working Group Directive” means a range of intended uses for Compliant Portions,
where a Bluetooth Specification is to be prepared so as to deliver a minimum platform necessary
to deliver such a range of intended uses but not so as to specify implementations in accordance
with those intended uses.
4. Copyright License.
(a) Subject to Sections 2 and 6 hereof, each Associate and Adopter Member hereby
grants to each of the Promoter and Associate Members of Bluetooth SIG who participate in a
Working Group of Bluetooth SIG and to Bluetooth SIG, a worldwide, royalty-free, license under
its copyrights in its Contributions to reproduce, distribute, display, perform and create derivative
works for the purposes of developing any Draft Bluetooth Specifications or derivative works
thereof.
(b) All Contributions by a contributing Associate or Adopter Member that have been
submitted for inclusion in any Bluetooth Specification or Draft Bluetooth Specification shall be
licensed by the contributing Associate or Adopter Member to all Licensees (as defined in Section
5(b) hereof) under the grant specified in Section 5(b) hereof for all Bluetooth Specifications in
which the Contributions become included, even if such Associate or Adopter Member has
withdrawn or been terminated as a Member of Bluetooth SIG.
5. License Grant.
(a) To Associate or Adopter Member. Effective upon the adoption by Bluetooth SIG of
each Bluetooth Specification, the Promoter Members and their Affiliates hereby grant to each
Associate and Adopter Member and its Affiliates (collectively, “Licensee”) a non-exclusive,
(b) By Associate or Adopter Member. Effective upon the adoption by Bluetooth SIG of
each Bluetooth Specification, each Associate and Adopter Member and their Affiliates hereby
grant to each Promoter Member and Associate and Adopter Member and all of their respective
Affiliates (also collectively, “Licensee”) a nonexclusive, royalty-free, perpetual, irrevocable,
nontransferable, nonsublicenseable, worldwide license under its Necessary Claims solely to
make, have made, use, import, offer to sell, sell and otherwise distribute and dispose of
Compliant Portions; provided that such license need not extend to any part or function of a
product in which a Compliant Portion is incorporated that is not itself part of the Compliant
Portion.
In the event that a Bluetooth SIG Member (“Member A”), other than a Member who has
Necessary Claims, files suit against another Member (“Member B”) for patent infringement
arising from Member B’s manufacture, use or sale of products and systems that are compatible
with the Bluetooth Specification(s) and/or Foundation Specification, and such suit is not
defensive based on a patent infringement claim or suit by Member B, then Member B shall have
the unilateral right to change the license grant set forth in Section 5(a) or (b) above under
Necessary Claims, if any, from a royalty-free license to a reasonable royalty bearing license with
respect to Member A and be able to collect such royalty retroactively commencing on the date
that Member A filing such suit is alleging Member B commenced the infringement which is the
basis of the suit.
For the purposes of this Section 5, a product or system is “compatible” with the Bluetooth
Specification(s) and/or Foundation Specification if it actually implements or incorporates or
directly interfaces or is designed to interface with a Compliant Portion.
no less than a reasonable degree of care under the circumstances and will not use, disclose or
copy the Confidential Material except as necessary for its employees or contractors with a need
to know to evaluate and comment thereon. Each Associate and Adopter Member shall mark any
copies it makes “confidential,” “proprietary” or with a similar legend and shall reproduce all
copyright notices and disclaimers therein. Unless the parties agree otherwise, this obligation of
confidentiality will expire two (2) years from the date of disclosure to such Associate or Adopter
Member.
Notwithstanding the foregoing, Confidential Material shall not include any information
that is (a) in the public domain other than by a breach of a duty to the disclosing party; (b)
received from a third party without any obligation of confidentiality; (c) rightfully known to the
receiving party without any limitation on use or disclosure prior to its receipt from the disclosing
party; (d) independently developed by employees of the receiving party; or (e) generally made
available to third parties by the disclosing party without restrictions on disclosure.
(i) This License shall continue in full force and effect for all remaining
Members;
(iii) With respect to Contributions from the withdrawing Member which are
included in any Bluetooth Specification which is adopted after the
effective date of withdrawal or termination, such Member shall be entitled
to receive a license from all Licensees regarding all such Bluetooth
Specifications (i.e. all those which include such Member’s Contributions)
under the terms of Section 2, but only if and when such Member agrees to
and grants a license under the terms of Section 5(b) to all Licensees with
respect to all such Bluetooth Specifications.
(iv) Section 5 of this License shall continue in full force and effect with
respect to all Bluetooth Specifications and Foundation Specifications
(v) This Section 7 is not intended to authorize, permit or allow the survival (or
con-incident licensing) of any unmodified portion of a Committed
Specification to be contained in any Bluetooth Specification approved
after a Member’s termination unless (i) the unmodified portion of the
Committed Specification is contained in a subsequent Bluetooth
Specification that only extends or corrects the Committed Specification, or
(ii) only if the withdrawing or terminated Member is granted and accepts a
reciprocal license commensurate with and of the same scope as set forth in
Section 5 with respect to such subsequent Bluetooth Specification
incorporating the unmodified portion of the Committed Specification.
(vi) All other rights, licenses, obligation, terms and conditions of this License
shall terminate with respect to such withdrawing or terminated Member,
including those set forth in Section 5, except as set out in Section 7(b)(iii),
(iv) and (v).
8. General.
(a) No Other Licenses. Except for the rights expressly provided by this License, the
Membership Agreement and the Bluetooth Trademark License Agreement, no Member grants or
receives, by implication, or estoppel, or otherwise, any rights under any patents or other
intellectual property rights.
(b) No Warranty. All parties acknowledge that all information provided as part of the
Bluetooth Specification(s) and/or Foundation Specification development process and the Draft
Bluetooth Specification(s) and/or Bluetooth Specification(s) or Foundation Specification itself
are all provided “AS IS” WITH NO WARRANTIES WHATSOEVER, WHETHER
EXPRESS, IMPLIED, STATUTORY, OR OTHERWISE, AND THE PARTIES
EXPRESSLY DISCLAIM ANY WARRANTY OF MERCHANTABILITY,
NONINFRINGEMENT, FITNESS FOR ANY PARTICULAR PURPOSE, OR ANY
WARRANTY OTHERWISE ARISING OUT OF ANY PROPOSAL, SPECIFICATION,
OR SAMPLE.
(d) Governing Law. This License shall be construed and controlled by the laws of the
State of New York without reference to conflict of laws principles.
(e) Jurisdiction. The parties agree that all disputes arising in any way out of this License
shall be heard exclusively in, and all parties irrevocably consent to jurisdiction and venue in, the
state and Federal courts of New York.
(f) Notices. All notices hereunder shall be electronic or written and sent to the parties at
such addresses as the Parties may specify by such notice to Bluetooth SIG. For purposes of this
section, notice can include notice by written mail, electronic mail or by facsimile.
Such notices shall be deemed served when received and acknowledged by addressee or, if
delivery is not accomplished by reason of some fault of the addressee, when tendered for
delivery. Any party may give notice of a change of address and, after notice of such change has
been received, any notice or request shall thereafter be given to such party at such changed
address.
(g) Good Faith Dealing. Each party hereby represents and warrants that it has the power
to cause all patents owned or controlled by such party and its Affiliates to be licensed as set forth
in this Agreement.
(h) Not Partners. The parties hereto are independent companies and are not partners or
joint venturers with each other.
(i) Complete Agreement; No Waiver. Except for Bluetooth Membership Agreement, the
attachments thereto, and Bluetooth SIG Certificate of Incorporation and Bylaws, this License
sets forth the entire understanding of the parties and supersedes all prior agreements and
understandings relating hereto. No modifications or additions to or deletions from this License
shall be binding unless accepted in writing by an authorized representative of all parties, and the
waiver of any breach or default will not constitute a waiver of any other right hereunder or any
subsequent breach or default.
(j) No Rule of Strict Construction. Regardless of which party may have drafted this
License, no rule of strict construction shall be applied against any party. If any provision of this
License is determined by a court to be unenforceable, the parties shall deem the provision to be
modified to the extent necessary to allow it to be enforced to the extent permitted by law, or if it
cannot be modified, the provision will be severed and deleted from this License, and the
remainder of the License will continue in effect.
(k) Compliance with Laws. Anything contained in this License to the contrary
notwithstanding, the obligations of the parties hereto shall be subject to all laws, present and
future, of any government having jurisdiction over the parties hereto, and to orders, regulations,
directions or requests of any such government.
(l) Effectiveness of License. This License will be effective and enforceable against the
parties as of the Effective Date.
(m) Effect of Divestiture, Merger or Acquisition. In the event that an Affiliate ceases to be
an Affiliate, such as by divestiture, then, if such former Affiliate becomes a Member of
Bluetooth SIG within 90 days from the date the Affiliate status ceases, then all licenses shall
continue uninterrupted. If such former Affiliate does not so sign-up, then Section 7(b) hereof
shall apply with the former Affiliate to be considered the same as a withdrawing Member.
(n) Parties. Bluetooth SIG has the authority as the Attorney-in-Fact to execute and
deliver this License on behalf of the Promoter Members and by signing this License does hereby
bind all the Promoters Members to this License and each Promoter Member shall be considered a
party to this License.