Exhibit 10.5
LICENSE SECURITY AGREEMENT
License Security Agreement effective as of July 21, 1997, by and between
Compositech Ltd. ("Compositech"), a corporation of the State of Delaware having
an office and place of business at 000 Xxxxxxxxx Xxxx, Xxxxxxxxx, Xxx Xxxx
00000-0000, and ___________________ having an office and place of business at
___________________________________________________.
WHEREAS, the parties hereto have entered into a series of agreements
pursuant to which ___________________ has loaned Compositech certain monies
secured by certain Equipment of Compositech in accordance with the terms of that
certain Security Agreement by and between Compositech and ____________________
of even date herewith (the "Equipment Security Agreement"); and
WHEREAS, _____________________ wishes to secure the necessary rights and
licenses under Compositech's patents to use the Equipment for the manufacture of
Laminates in the Event of Default under and as defined in the Equipment Security
Agreement leaving _______________ in possession of the Equipment;
NOW, THEREFORE, in consideration of the mutual promises made herein and in
the Equipment Security Agreement the parties hereto do hereby agree as follows:
I. DEFINITIONS
For the purpose of this Agreement the following terms shall have the
following meanings:
1. "Collateral" and "Equipment" shall have the meanings set forth in the
Equipment Security Agreement;
2. "Event of Default" shall have the meaning set forth in the Equipment
Security Agreement;
3. "Integral Circuits" shall mean laminates or printed circuit boards with
integral circuits as described by the following claims, or parts of such claims,
set forth in Compositech's U.S. Patents 4,943,334, 5,037,691 and 4,478,421;
(i) claims 70-73 of U.S. Patent 4,943,334;
(ii) claims 15 and 26-30 of the U.S. Patent 4,943,334, provided that
the conductive surface is in the form of a circuit and further provided
that the circuit is formed on the tooling and transferred to the laminate
or printed circuit board during the molding process;
(iii) claims 7, 8, 36, 37, 42 and 43 of U.S. Patent 5,037,691,
provided that the metal or metallic coating is in the form of a circuit;
and
(iv) claims 4, 5, 8-11, 50, 64 and 73 of U.S. patent 4,478,421,
provided that the metal or conductive surface is in the form of a circuit
and further provided that the circuit is
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formed on the tooling and transferred to the laminate or printed circuit
board during the molding process.
4. "Laminate" shall mean a wound base material for printed circuit board
produced using the Equipment and in accordance with the Patents, but excluding
Multilayer Printed Circuit Boards and Integral Circuits.
5. "Multilayer Printed Circuit Boards" shall mean the circuit boards
defined in one or more of claims 18-26 and 63-68 of U.S. Patent 5,037,691 or the
circuit boards produced using the process described in any of the claims of U.S.
Patents 5,347,326 and 5,512,224.
6. "Licensed Patents" shall mean all United States patents issued to
Compositech upon applications filed in the U.S. Patent and Trademark Office with
an effective filing date prior to the effective date of this Agreement, provided
that the Licensed Patents shall not include the subject matter of any claims of
any patents or applications to the extent that they relate to Multilayer Printed
Circuit Boards or Integral Circuits.
II. GRANT OF LICENSE
Effective upon the occurrence of an Event of Default (as defined in the
Equipment Security Agreement), Compositech grants to ____________________ a
nonexclusive, royalty-free right and license, under the Licensed Patents, to
manufacture, use, sell and offer to sell Laminates for a period of ten years
from the Event of Default using the Equipment. This license may be transferred
by ___________________ only to an entity which acquires the Equipment from
__________________________ or with Compositech's prior written consent. Nothing
herein shall be deemed to imply any right or license under the Licensed Patents
to manufacture Laminate on any equipment other than that constituting the
Collateral, or to manufacture or acquire any additional equipment, or any other
right or permission beyond that which is expressly granted herein. No right is
granted to ___________________________ (or anyone in possession of the Equipment
from _________________________) to sublicense the rights herein granted.
Compositech expressly represents and warrants to _________________________ that
the Licensed Patents constitute all of the U.S. Patents necessary to
manufacture, use and sell Laminates with the Equipment, as such Equipment is
intended to be used.
III. MARKING
______________________________ and anyone who acquires the Equipment from
_____________________________ shall xxxx all Laminate in accordance with the
marking requirements of 35 USC Sec. 287 and, prior to selling any such Laminate,
shall submit samples of the Laminate so marked to Compositech for its approval
that the form of marking complies with applicable law, which approval shall not
be unreasonably withheld.
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IV. MISCELLANEOUS PROVISIONS
a. In the event either party breaches any term or condition of this
Agreement and fails to cure the same upon thirty (30) days written notice to the
other, the party giving such notice may terminate the Agreement forthwith.
b. _______________________ shall not transfer the Equipment to anyone who
shall not first have agreed to be bound by the terms of this Agreement by
executing a copy thereof and sending the same to Compositech. Any such transfer
shall not relieve ____________________ from its obligations hereunder.
c. ________________________ and anyone in possession of the Equipment
pursuant to this Agreement shall maintain the Equipment in confidence and shall,
to that end, (1) not disclose the design, structure or function of, or any other
particulars of, the Equipment to anyone except its employees having a need to
know the same in order to operate it to produce Laminate and who have signed
written confidentiality agreements undertaking to keep all aspects of the
Equipment confidential, (2) not use any information relating to the design,
structure or function of, or any other particular of, the Equipment for any
purpose other than its operation to produce Laminate.
d. This Agreement and all questions relating to or arising under it shall
be determined in accordance with the laws of the State of New York and the
parties hereby submit themselves to the jurisdiction of the courts sitting in
the State of New York to resolve any such questions, service of process to be
deemed sufficient if made by certified mail, return receipt or its equivalent.
IN WITNESS WHEREOF, the parties hereto have duly executed and delivered
this Agreement on the date first above written.
COMPOSITECH LTD.
By:
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Name:
Title:
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By:
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Name:
Title:
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