RE: [BPEL] SAP IPRs

["Noel J. Bergman" <no...@devtech.com>]

This appears to be purely informational.  If there is an action item, please
advise.

    --- Noel
  -----Original Message-----
  From: matthieu.riou@gmail.com [mailto:matthieu.riou@gmail.com]On Behalf Of
Matthieu Riou
  Sent: Thursday, October 05, 2006 16:28
  To: legal-discuss@apache.org
  Subject: [BPEL] SAP IPRs


  SAP AG
  Form of Royalty Free License Agreement for Web Services -
  Business Process Execution Language (BPEL) Specification

  This is a legal agreement ("Agreement") between the undersigned (either an
individual or an entity) ("Company"), and SAP AG ("SAP") (collectively the
"Parties"). If Company wants a license from SAP to implement the Business
Process Execution Language for Web Services Specification ("BPEL4WS") (as
defined below), Company must sign and return this Agreement to SAP. This is
an offer to be accepted only on the terms set forth in this Agreement. If
changes are made to this Agreement, the offer is revoked.

  RECITALS

  Whereas, International Business Machines Corporation ("IBM"), BEA Systems,
Inc. ("BEA"), SAP AG ("SAP"), Siebel Systems, Inc. ("Siebel") and Microsoft
jointly developed BPEL4WS and submitted it to OASIS for standardization; and

  Whereas, Company wants a license from SAP to implement BPEL4WS, and
whereas Company understands and acknowledges that licenses from IBM, BEA,
SAP, Siebel and/or other third-parties may also be required to implement
BPEL4WS.

  1. Definitions

  1.1 "Affiliate" means any entity that is directly or indirectly controlled
by, under common control with or that controls the subject Party. For
purposes of this definition control means direct or indirect ownership of or
the right to exercise (a) greater than fifty percent (50%) of the
outstanding shares or securities entitled to vote for the election of
directors or similar managing authority of the subject entity; or (b)
greater than fifty percent (50%) of the ownership interest representing the
right to make decisions for the subject entity.

  1.2 "Company Implementation" means only those specific portions of Company
Products that (i ) implement and are compliant with all or part of the
required portions of BPEL4WS, and (ii) are branded with a trademark owned or
controlled by Company.

  1.3 "Company Product" means a product branded with a trademark owned or
controlled by Company that includes a Company Implementation, either alone
or with other components.

  1.4 "Effective Date" means the date that this agreement, fully executed by
Company without any changes, is received by SAP pursuant to Section 6.3
below.

  1.5 "End User" means a third party customer to whom a copy of or access to
a product or service is licensed or otherwise provided for such customer's
own use, and not for further sublicense or distribution.

  1.6 "Necessary Claims" means claims of a patent or patent application that
(a) are owned or controlled by a Party or its Affiliates now or at any
future time; and (b) are necessarily infringed by implementing the required
portions of BPEL4WS, 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
BPEL4WS. 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, if licensed, would
require a payment of royalties or other fee(s) by a Party to unaffiliated
third parties; (iii) to any enabling technologies that may be necessary to
make or use any product or portion thereof that implements BPEL4WS (e.g.,
enabling semiconductor manufacturing technology, compiler technology, object
oriented technology, operating system technology, protocols, programming
interfaces, etc.); (iv) covering the implementation of other published
specifications developed elsewhere and referred to in the body of BPEL4WS;
(v) to any portions of any product and any combinations thereof the purpose
or function of which is not required for compliance with BPEL4WS; or (vi)
that are necessarily infringed by implementing any optional portions of the
BPEL, including any required aspects of such optional portions.

  1.7 "BPEL4WS" means the following specification that was submitted by SAP,
Siebel, Microsoft, IBM and BEA to OASIS on May 16, 2003: Business Process
Execution Language for Web Services version 1.1, dated May 5, 2003,
http://ifr.sap.com/bpel4ws/

  1.8 "BPEL4WS Licensee" means any entity that fully executes this Agreement
without modification and returns the executed Agreement to SAP.

  2. License Grants

  2.1 Copyright License Subject to Section 2.5 and Company's grant of
licenses in accordance with Section 2.4, SAP hereby grants Company under
SAP's copyrights in BPEL4WS a non-exclusive, royalty-free, non-transferable,
non-sublicenseable, personal, worldwide license to make copies of BPEL4WS,
and to distribute such copies along with Company Implementations distributed
in accordance with Sections 2.2 and 2.3, provided that all reproductions
thereof shall include (1) all copyright notices and disclaimers contained in
BPEL4WS; and (2) the link to BPEL4WS set forth in Section 1.7.

  2.2 Patent License Subject to Section 2.5 and Company's grant of licenses
in accordance with Section 2.4, SAP and its Affiliates hereby grant Company
a nonexclusive, royalty-free, nontransferable, non-sublicenseable, personal,
worldwide license under SAP's Necessary Claims to make, use, import, offer
to sell, sell and distribute directly or indirectly to End Users, object
code versions of Company Implementations only as incorporated into Company
Products and solely for the purpose of complying with BPEL4WS.

  2.3 Source Code Distribution Company also has a nontransferable,
non-sublicenseable, personal, license to distribute or otherwise disclose
source code copies of such Company Implementation licensed in Section 2.2
only if Company (i ) prominently displays the following notice in all copies
of such source code, and (ii) distributes or discloses the source code only
under a license agreement that includes the following notice as a term of
such license agreement and does not include any other terms that are
inconsistent with, or would prohibit, the following notice:

  "This source code may incorporate intellectual property owned by SAP AG.
Our provision of this source code does not include any licenses or any other
rights to you under any SAP intellectual property. If you would like a
license from SAP (e.g. rebrand, redistribute), you need to contact SAP
directly."

  2.4 Reciprocal Patent License Company, on behalf of itself and its
Affiliates, hereby grants SAP, and hereby agrees to grant to all other
BPEL4WS Licensees upon request, a nonexclusive, royalty-free,
nontransferable, non-sublicenseable, personal, worldwide license under
Necessary Claims of Company to make implementations of BPEL4WS that are
compliant with all or part of the required portions of BPEL4WS ("BPEL4WS
Implementation"), and to use, import, offer to sell, sell and distribute
directly or indirectly to End Users, BPEL4WS Implementations solely for the
purpose of complying with BPEL4WS.

  2.5 Defensive Suspension If SAP, Company or any of their Affiliates ("the
sued party") are first sued for patent infringement by the other Party
hereto or any of its Affiliates, on account of the manufacture, use, sale,
offer for sale, importation or other disposition or promotion of the sued
party's Company Implementation or SAP's BPEL4WS Implementation, as
applicable, then the sued partymay terminate all license grants and any
other rights provided under this Agreement to such entity and such entity's
Affiliates. The foregoing shall not apply if the patent infringement suit
that would otherwise trigger such clause is solely based on the sued party's
Company Implementation or SAP's BPEL4WS Implementation, as applicable, not
complying with the scope of the license grants set forth in this Agreement.

  2.6 Reservation of Rights All rights not expressly granted in this
Agreement are reserved by SAP and Company. No additional rights are granted
by implication or estoppel or otherwise. By way of clarification, in order
for a third party to distribute a Company Implementation as part of its
third party branded products, such third party must be authorized to do so
by Company and must also execute this license and comply with its terms.

  3. Term

  Except as set forth herein, this Agreement and the license grants herein
are effective as of the Effective Date and terminate upon the last of SAP's
and Company's Necessary Claims to expire. The license grants do not include
a release for any infringement occurring prior to the Effective Date.

  4. Representations and Disclaimers of Warranty

  4.1 Company represents and warrants that the person executing this
Agreement on behalf of Company and its Affiliates is authorized to do so,
that Company is authorized to enter into this Agreement, and that this
Agreement is a binding obligation of Company and its Affiliates.

  4.2 If Company or any of its Affiliates transfers any Necessary Claims,
Company shall require that the transferee be bound by the terms of Section
2.4.

  4.3 DISCLAIMERS. BPEL4WS AND ALL INTELLECTUAL PROPERTY DELIVERED AND/OR
LICENSED BY EITHER PARTY AND/OR ITS AFFILIATES TO THE OTHER PARTY PURSUANT
TO THIS AGREEMENT ARE PROVIDED "AS IS" WITHOUT WARRANTY OF ANY KIND. EACH
PARTY AND ITS AFFILIATES DISCLAIMS ALL WARRANTIES, DUTIES AND CONDITIONS,
EITHER EXPRESS, IMPLIED OR STATUTORY, INCLUDING BUT NOT LIMITED TO IMPLIED
WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, TITLE AND
NON-INFRINGEMENT.

  5. Limitation of Liability

  SAP AND ITS AFFILIATES SHALL NOT BE LIABLE FOR ANY DAMAGES ARISING FROM OR
RELATED TO THIS AGREEMENT, INCLUDING INDIRECT, INCIDENTAL, CONSEQUENTIAL,
PUNITIVE OR SPECIAL DAMAGES EVEN IF SAP OR ITS AFFILIATES HAVE BEEN ADVISED
OF THE POSSIBILITY OF SUCH DAMAGES IN ADVANCE.

  6. Miscellaneous

  6.1 No Partnership, Joint Venture or Franchise Neither this Agreement, nor
any terms and conditions contained herein, shall be construed as creating a
partnership, joint venture, franchise or agency relationship.

  6.2 Export Regulations Company acknowledges that implementations of
BPEL4WS may be subject to U.S. export jurisdiction and other applicable
national or international laws. Company agrees to comply with all applicable
international and national laws that apply to BPEL4WS, including the U.S.
Export Administration Regulations, as well as end-user, end-use and
destination restrictions issued by U.S. and other governments, and privacy
laws.

  6.3 Executed Agreements Only one agreement per Company shall be accepted
by SAP. To be effective, an executed Agreement must be sent by messenger,
traceable express mail or prepaid certified mail, return receipt requested,
addressed to SAP as follows:

  SAP AG
  Attn: Anthony L. DiBartolomeo
  3999 West Chester Pike
  Newtown Square, PA 19073
  Attention: Global IP Group, Patent Licensing Dept.

  6.4 Governing Law; Jurisdiction This Agreement shall be construed and
controlled by the laws of the State of California, and Company consents to
exclusive jurisdiction and venue in the courts sitting in California.
Company waives all defenses of lack of personal jurisdiction and forum
nonconveniens. Process may be served on either Party in the manner
authorized by applicable law or court rule.

  6.5 Assignment Company may not assign this Agreement, or any rights or
obligations hereunder, whether by operation of contract, law or otherwise,
except with the express written consent of SAP, and any attempted assignment
by Company in violation of this Section shall be void. For purposes of this
Agreement, an "assignment" by Company under this Section shall be deemed to
include, without limitation, each of the following: (a) a change in
beneficial ownership of Company of greater than twenty percent (20%)
(whether in a single transaction or series of transactions) if Company is a
partnership, trust, limited liability company or other like entity; (b) a
merger of Company with another entity, whether or not Company is the
surviving entity; (c) the acquisition of more than twenty percent (20%) of
any class of Company's voting stock (or any class of non-voting security
convertible into voting stock) by another entity (whether in a single
transaction or series of transactions); and (d) the sale or other transfer
of more than fifty percent (50%) of Company's assets (whether in a single
transaction or series of transactions). In the event of such assignment or
attempted assignment by Company, SAP shall have the right to immediately
terminate this Agreement and/or any license grants to Company.

  6.6 Construction If for any reason a court of competent jurisdiction finds
any provision of this Agreement, or portion thereof, to be unenforceable
(other than Sections 2.3, 2.4 and 2.5), such provision and the rest of the
Agreement will be enforced to the maximum extent permissible so as to effect
the intent of the Parties, and the Agreement will continue in full force and
effect. In the event that a court of competent jurisdiction finds that
Sections 2.3, 2.4 or 2.5 are unenforceable, this entire Agreement and any
licenses granted hereunder shall be rendered null and void. Failure by a
Party to enforce any provision of this Agreement will not be deemed a waiver
of future enforcement of that or any other provision.

  6.7 Trademark/Logo Usage Nothing herein grants Company any right to use or
display any SAP trademark or logo in connection with a Company
Implementation or Company Product.

  6.8 No Requirement to Implement Nothing in this Agreement shall be
construed as requiring Company to use or implement BPEL4WS, or limit the
Parties from competing in any way without infringing each others'
intellectual property, including engaging in activities, independently or
with others, that may be deemed competitive with BPEL4WS.

  6.9 Identification of Licensees The fact that Company is a BPEL4WS
Licensee is not confidential. Either Party may make public announcements
regarding Company's execution of this Agreement. SAP, at its option, may
list Company as a licensee on its web services website.

  6.10 Entire Agreement This Agreement constitutes the entire agreement
between the Parties with respect to its subject matter and merges all prior
and contemporaneous communications. It shall not be modified except by a
written agreement dated subsequent to the date of this Agreement and signed
on behalf of Company and SAP by their respective duly authorized
representatives.

  Agreed to and accepted on behalf of Company:
  By (signature):
  Name (printed):
  Title:
  Company Name:
  Company Address:
  City, State, Zip, Country:

  Legal contact regarding this form:
  Anthony L. DiBartolomeo
  Global IP Group, SAP
  anthony.dibartolomeo@sap.com
  3999 West Chester Pike,
  Newtown Square, PA 19073

  Submitted by Sinisa Zimek sinisa.zimek@sap.com, 23 July 2003