BY DOWNLOADING, USING OR OTHERWISE ACCESSING ANY O-RAN SPECIFICATION, ADOPTER AGREES TO THE TERMS OF THIS AGREEMENT.
This O-RAN Adopter License Agreement (the “Agreement”) is made by and between the O-RAN ALLIANCE and the entity that downloads, uses or otherwise accesses any O-RAN Specification, including its Affiliates (the “Adopter”).
This is a license agreement for entities who wish to adopt any O-RAN Specification.
1.1 “Affiliate” means an entity that directly or indirectly controls, is controlled by, or is under common control with another entity, so long as such control exists. For the purpose of this Section, “Control” means beneficial ownership of fifty (50%) percent or more of the voting stock or equity in an entity.
1.2 “Compliant Implementation” means any system, device, method or operation (whether implemented in hardware, software or combinations thereof) that fully conforms to a Final Specification.
1.3 “Adopter(s)” means all entities, who are not Members, Contributors or Academic Contributors, including their Affiliates, who wish to download, use or otherwise access O-RAN Specifications.
1.4 “Minor Update” means an update or revision to an O-RAN Specification published by O-RAN ALLIANCE that does not add any significant new features or functionality and remains interoperable with the prior version of an O-RAN Specification. The term “O-RAN Specifications” includes Minor Updates.
1.5 “Necessary Claims” means those claims of all present and future patents and patent applications, other than design patents and design registrations, throughout the world, which (i) are owned or otherwise licensable by a Member, Contributor or Academic Contributor during the term of its Member, Contributor or Academic Contributorship; (ii) such Member, Contributor or Academic Contributor has the right to grant a license without the payment of consideration to a third party; and (iii) are necessarily infringed by a Compliant Implementation (without considering any Contributions not included in the Final Specification). A claim is necessarily infringed only when it is not possible on technical (but not commercial) grounds, taking into account normal technical practice and the state of the art generally available at the date any Final Specification was published by the O-RAN ALLIANCE or the date the patent claim first came into existence, whichever last occurred, to make, sell, lease, otherwise dispose of, repair, use or operate a Compliant Implementation without infringing that claim. For the avoidance of doubt in exceptional cases where a Final Specification can only be implemented by technical solutions, all of which infringe patent claims, all such patent claims shall be considered Necessary Claims.
1.6 “Defensive Suspension” means for the purposes of any license grant pursuant to Section 3, Member, Contributor, Academic Contributor, Adopter, or any of their Affiliates, may have the discretion to include in their license a term allowing the licensor to suspend the license against a licensee who brings a patent infringement suit against the licensing Member, Contributor, Academic Contributor, Adopter, or any of their Affiliates.
2.1 Subject to the terms and conditions of this Agreement, O-RAN ALLIANCE hereby grants to Adopter a nonexclusive, nontransferable, irrevocable, non-sublicensable, worldwide copyright license to obtain, use and modify O-RAN Specifications, but not to further distribute such O-RAN Specification in any modified or unmodified way, solely in furtherance of implementations of an O-RAN Specification.
2.2 Adopter shall not use O-RAN Specifications except as expressly set forth in this Agreement or in a separate written agreement with O-RAN ALLIANCE.
3.1 Members, Contributors and Academic Contributors and their Affiliates are prepared to grant based on a separate Patent License Agreement to each Adopter under Fair Reasonable And Non-Discriminatory (FRAND) terms and conditions with or without compensation (royalties) a nonexclusive, non-transferable, irrevocable (but subject to Defensive Suspension), non-sublicensable, worldwide patent license under their Necessary Claims to make, have made, use, import, offer to sell, lease, sell and otherwise distribute Compliant Implementations; provided, however, that such license shall not extend: (a) to any part or function of a product in which a Compliant Implementation is incorporated that is not itself part of the Compliant Implementation; or (b) to any Adopter if that Adopter is not making a reciprocal grant to Members, Contributors and Academic Contributors, as set forth in Section 3.3. For the avoidance of doubt, the foregoing licensing commitment includes the distribution by the Adopter’s distributors and the use by the Adopter’s customers of such licensed Compliant Implementations.
3.2 Notwithstanding the above, if any Member, Contributor or Academic Contributor, Adopter or their Affiliates has reserved the right to charge a FRAND royalty or other fee for its license of Necessary Claims to Adopter, then Adopter is entitled to charge a FRAND royalty or other fee to such Member, Contributor or Academic Contributor, Adopter and its Affiliates for its license of Necessary Claims to its licensees.
3.3 Adopter, on behalf of itself and its Affiliates, shall be prepared to grant based on a separate Patent License Agreement to each Members, Contributors, Academic Contributors, Adopters and their Affiliates under Fair Reasonable And Non-Discriminatory (FRAND) terms and conditions with or without compensation (royalties) a nonexclusive, non-transferable, irrevocable (but subject to Defensive Suspension), non-sublicensable, worldwide patent license under their Necessary Claims to make, have made, use, import, offer to sell, lease, sell and otherwise distribute Compliant Implementations; provided, however, that such license will not extend: (a) to any part or function of a product in which a Compliant Implementation is incorporated that is not itself part of the Compliant Implementation; or (b) to any Members, Contributors, Academic Contributors, Adopters and their Affiliates that is not making a reciprocal grant to Adopter, as set forth in Section 3.1. For the avoidance of doubt, the foregoing licensing commitment includes the distribution by the Members’, Contributors’, Academic Contributors’, Adopters’ and their Affiliates’ distributors and the use by the Members’, Contributors’, Academic Contributors’, Adopters’ and their Affiliates’ customers of such licensed Compliant Implementations.
TERM AND TERMINATION
4.1 This Agreement shall remain in force, unless early terminated according to this Section 4.
4.2 O-RAN ALLIANCE on behalf of its Members, Contributors and Academic Contributors may terminate this Agreement if Adopter materially breaches this Agreement and does not cure or is not capable of curing such breach within thirty (30) days after being given notice specifying the breach.
4.3 Sections 1, 3, 5-11 of this Agreement shall survive any termination of this Agreement. Under surviving Section 3, after termination of this Agreement, Adopter will continue to grant licenses (a) to entities who become Adopters after the date of termination; and (b) for future versions of O-RAN Specifications that are backwards compatible with the version that was current as of the date of termination.
Adopter will use the same care and discretion to avoid disclosure, publication, and dissemination of O-RAN Specifications to third parties, as Adopter employs with its own confidential information, but no less than reasonable care. Any disclosure by Adopter to its Affiliates, contractors and consultants should be subject to an obligation of confidentiality at least as restrictive as those contained in this Section. The foregoing obligation shall not apply to any information which is: (1) rightfully known by Adopter without any limitation on use or disclosure prior to disclosure; (2) publicly available through no fault of Adopter; (3) rightfully received without a duty of confidentiality; (4) disclosed by O-RAN ALLIANCE or a Member, Contributor or Academic Contributor to a third party without a duty of confidentiality on such third party; (5) independently developed by Adopter; (6) disclosed pursuant to the order of a court or other authorized governmental body, or as required by law, provided that Adopter provides reasonable prior written notice to O-RAN ALLIANCE, and cooperates with O-RAN ALLIANCE and/or the applicable Member, Contributor or Academic Contributor to have the opportunity to oppose any such order; or (7) disclosed by Adopter with O-RAN ALLIANCE’s prior written approval.
Adopter shall indemnify, defend, and hold harmless the O-RAN ALLIANCE, its Members, Contributors or Academic Contributors, and their employees, and agents and their respective successors, heirs and assigns (the “Indemnitees”), against any liability, damage, loss, or expense (including reasonable attorneys’ fees and expenses) incurred by or imposed upon any of the Indemnitees in connection with any claims, suits, investigations, actions, demands or judgments arising out of Adopter’s use of the licensed O-RAN Specifications or Adopter’s commercialization of products that comply with O-RAN Specifications.
LIMITATIONS ON LIABILITY; NO WARRANTY
EXCEPT FOR BREACH OF CONFIDENTIALITY, ADOPTER’S BREACH OF SECTION 3, AND ADOPTER’S INDEMNIFICATION OBLIGATIONS, IN NO EVENT SHALL ANY PARTY BE LIABLE TO ANY OTHER PARTY OR THIRD PARTY FOR ANY INDIRECT, SPECIAL, INCIDENTAL, PUNITIVE OR CONSEQUENTIAL DAMAGES RESULTING FROM ITS PERFORMANCE OR NON-PERFORMANCE UNDER THIS AGREEMENT, IN EACH CASE WHETHER UNDER CONTRACT, TORT, WARRANTY, OR OTHERWISE, AND WHETHER OR NOT SUCH PARTY HAD ADVANCE NOTICE OF THE POSSIBILITY OF SUCH DAMAGES.
O-RAN SPECIFICATIONS ARE PROVIDED “AS IS” WITH NO WARRANTIES OR CONDITIONS WHATSOEVER, WHETHER EXPRESS, IMPLIED, STATUTORY, OR OTHERWISE. THE O-RAN ALLIANCE AND THE MEMBERS, CONTRIBUTORS OR ACADEMIC CONTRIBUTORS EXPRESSLY DISCLAIM ANY WARRANTY OR CONDITION OF MERCHANTABILITY, SECURITY, SATISFACTORY QUALITY, NON-INFRINGEMENT, FITNESS FOR ANY PARTICULAR PURPOSE, ERROR-FREE OPERATION, OR ANY WARRANTY OR CONDITION FOR O-RAN SPECIFICATIONS.
Adopter may not assign the Agreement or any of its rights or obligations under this Agreement or make any grants or other sublicenses to this Agreement, except as expressly authorized hereunder, without having first received the prior, written consent of the O-RAN ALLIANCE, which consent may be withheld in O-RAN ALLIANCE’s sole discretion. O-RAN ALLIANCE may freely assign this Agreement.
THIRD-PARTY BENEFICIARY RIGHTS
Adopter acknowledges and agrees that Members, Contributors and Academic Contributors (including future Members, Contributors and Academic Contributors) are entitled to rights as a third-party beneficiary under this Agreement, including as licensees under Section 3.
BINDING ON AFFILIATES
Execution of this Agreement by Adopter in its capacity as a legal entity or association constitutes that legal entity’s or association’s agreement that its Affiliates are likewise bound to the obligations that are applicable to Adopter hereunder and are also entitled to the benefits of the rights of Adopter hereunder.
This Agreement is governed by the laws of Germany without regard to its conflict or choice of law provisions.
This Agreement constitutes the entire agreement between the parties as to its express subject matter and expressly supersedes and replaces any prior or contemporaneous agreements between the parties, whether written or oral, relating to the subject matter of this Agreement.
Adopter, on behalf of itself and its Affiliates, agrees to comply at all times with all applicable laws, rules and regulations with respect to its and its Affiliates’ performance under this Agreement, including without limitation, export control and antitrust laws. Without limiting the generality of the foregoing, Adopter acknowledges that this Agreement prohibits any communication that would violate the antitrust laws.
By execution hereof, no form of any partnership, joint venture or other special relationship is created between Adopter, or O-RAN ALLIANCE or its Members, Contributors or Academic Contributors. Except as expressly set forth in this Agreement, no party is authorized to make any commitment on behalf of Adopter, or O-RAN ALLIANCE or its Members, Contributors or Academic Contributors.
In the event that any provision of this Agreement conflicts with governing law or if any provision is held to be null, void or otherwise ineffective or invalid by a court of competent jurisdiction, (i) such provisions will be deemed stricken from the contract, and (ii) the remaining terms, provisions, covenants and restrictions of this Agreement will remain in full force and effect.
Any failure by a party or third party beneficiary to insist upon or enforce performance by another party of any of the provisions of this Agreement or to exercise any rights or remedies under this Agreement or otherwise by law shall not be construed as a waiver or relinquishment to any extent of the other parties’ or third party beneficiary’s right to assert or rely upon any such provision, right or remedy in that or any other instance; rather the same shall be and remain in full force and effect.