AMENDED LICENSE AGREEMENT
THIS WRITTEN AGREEMENT amends and supersedes that certain License Agreement
dated June 29, 1983, whereunder Xx. Xxxxxxxxx X. Xxxxxxxxx ("Xx. Xxxxxxxxx")
granted a license to Xxxxxxxxx Research Institute, Inc. (herein the "Company")
relative to the exploitation of two patents for which he had at that time
applied through the U.S. Patent Office.
WHEREAS, Xx. Xxxxxxxxx has developed a new drug called Antineoplaston as
the same is described in U.S. Patent Serial No. 330,383 ("Antineoplaston") and a
testing procedure to diagnose cancer and evaluate the progress of cancer therapy
as the same is described in U.S. Patent Serial No. 346,291 (the "Testing
Procedure"); and
WHEREAS, Xx. Xxxxxxxxx has been allowed U.S. Patents relative to
Antineoplaston and the Testing Procedure and has filed a Patent Application in
Canada for Antineoplastons; and
WHEREAS, the Company previously acquired an exclusive license from Xx.
Xxxxxxxxx dated June 29, 1983, to made, use, distribute, and otherwise exploit
Antineoplastons and the Testing Procedure in the United States, Canada and
Mexico; and
WHEREAS, the Company and Xx. Xxxxxxxxx desire to amend and supersede the
previously granted license by the terms hereof,
NOW, THEREFORE, in consideration of the foregoing and the mutual covenants
and agreements herein contained, the parties hereto agree that the previous
License Agreement of June 29, 1983, shall be amended to read in its entirety as
follows;
1. For purposes of this Agreement, "Licensed Rights" shall mean the patent
applications and any subsequently issued patents for Antineoplaston and the
Testing Procedure including divisions, continuations and continuations-in-part
of these patent applications and patens issued in the United States, Canada or
Mexico and any reissue patents of any such patents in the United States, Canada
and Mexico. Licensed Rights shall also include any and all right title and
interest to Antineoplastons and the Testing Procedure as it relates to the use,
manufacture, sale, distribution, and sublicensing of Antineoplastons in the
United States, Canada and Mexico.
2. Xx. Xxxxxxxxx hereby grants to the Company the Licensed Rights to make,
use, sell, distribute and otherwise exploit Antineoplastons and the Testing
Procedure in the United States, Canada and Mexico and to practice the method
covered by any claim of any patent which has issued or which may issue in said
countries. The Company may sublicense others to manufacture and sell
Antineoplastons or use the Testing Procedure in the United States, Canada and
Mexico or practice the method covered by any claim of any issued patent covered
by the Agreement.
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3. The Company has previously paid Xx. Xxxxxxxxx a one-time paid in full
royalty payment of Ten Dollars ($10.00) in conjunction with the June 29, 1983,
License Agreement and in addition has paid to Xx. Xxxxxxxxx other good and
valuable consideration including shares of Common Stock of the Company for which
Xx. Xxxxxxxxx hereby acknowledges receipt.
4. This Agreement shall continue until the expiration of the last patent
included within the Licensed Rights or until earlier terminated according to the
provisions of paragraph 5 hereof.
5. This agreement may be terminated by Xx. Xxxxxxxxx under the following
circumstances:
a) BANKRUPTCY PROCEEDINGS: Except as expressly provided for in
subparagraphs (b) and (c) immediately below, Xx. Xxxxxxxxx may
terminate this agreement in the event the Company files for
bankruptcy and is the subject of any proceeding under applicable
bankruptcy laws wherein such proceeding against the Company is
not dismissed or discharged within ninety (90) days from the date
a petition for bankruptcy is filed.
b) IMPACT OF INVOLUNTARY BANKRUPTCY PROCEEDING: For a period of six
(6) months after the effective date of the merger as defined in
the amended merger agreement between Sundance International, Inc.
and the Company (the "Effective Date" and the "Merger"
respectively), Xx. Xxxxxxxxx shall not have any right to
terminate this License Agreement if any involuntary proceedings
are commenced during such period under the Federal Bankruptcy Act
against the Company that survives the Merger ("Surviving
Company"). In the event that during the six (6) month period
referred to, a letter of intent to perform an underwriting for
the Surviving Company is executed by a bona fide underwriter,
then such six (6) month period shall be extended until the
closing of the underwriting or until a date nine (9) months after
the effective date of the Merger, whichever first occurs.
c) IMPACT OF VOLUNTARY BANKRUPTCY: For a period of twelve (12)
months after the Effective Date of the Merger, Xx. Xxxxxxxxx
shall not have any right to terminate this License Agreement if
any voluntary proceedings are commenced during such period under
the Federal Bankruptcy Act.
d) REMOVAL AS OFFICER/DIRECTOR: This Agreement may be terminated in
the event Xx. Xxxxxxxxx is removed as an officer and/or Director
of the Company without his consent, except where he has been
removed for cause by a court of competent jurisdiction. If Xx.
Xxxxxxxxx is no longer able to serve as a Director and/or officer
of the Company by reason of death disability, his departure from
such offices shall not be deemed to be removal for the purposes
of this subparagraph (d).
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e) VOTING POWER: This Agreement may be terminated in the event a
person acquires the direct or indirect beneficial ownership of
securities of the Company having voting power equal to or greater
than the voting power of securities of the Company held directly
by Xx. Xxxxxxxxx or his executors, administrators, successors and
heirs; however, this provision shall not apply in the even Xx.
Xxxxxxxxx has made a voluntary transfer or sale of more than 20%
of the securities held directly by him. For purposes of this
subparagraph, the term "person" shall include a natural person,
company, government of instrumentality of a government and any
two or more persons with beneficial ownership and acting as a
partnership, limited partnership, syndicate or other group for
the purpose of acquiring, holding, controlling or disposing of
any security of the Company. The term "beneficial ownership"
shall have the meaning set forth in rule 13d-3 of the General
Rules and Regulations under the Securities Exchange Act of 1934,
as such Rule is in effect on the date hereof.
6. The Company will bear all costs accrued hereafter for the filing,
prosecution, issuance and maintenance of the patents and patent applications
included in the Licensed Rights and the Company may prepare, file and prosecute
at its expense any application for a division, continuation,
continuation-in-part or reissue of the patent applications included in the
Licensed Rights.
7. If, during the term of this Agreement, a third party infringes on a
claim of a patent included in the Licensed Rights, the Company must enforce the
infringed patents at its own expense.
8. This agreement is not assignable by either party without the express
written consent of the other party. Anything herein to the contrary
notwithstanding, this Agreement shall inure to the benefit of Xx. Xxxxxxxxx'x
executors, administrators, successors and heirs and the provisions of this
Agreement, with the exception of Paragraph 5(d) shall be binding upon such
executors, administrators, successors and heirs to the same extent that it was
binding upon Xx. Xxxxxxxxx at the time of his death. The Surviving Company after
the merger between Sundance International, Inc. and the Company shall succeed to
all rights of the Company herein.
9. This Agreement is to be governed and construed in accordance with the
laws of the State of Delaware.
10. This Agreement constitutes the entire Agreement between the parties
with respect to the subject matter hereof and supersedes all prior
understandings or agreements, oral or written, and shall not be changed or
terminated orally. There are no understandings, representations or warranties of
any kind not expressly set forth herein or incorporated herein by reference.
11. The failure of a party to insist upon strict adherence to any provision
of this Agreement on any occasion shall not be considered a waiver or deprive
that party of the right thereafter to insist upon strict adherence to that
provision or any other provision of this Agreement.
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12. If any provision of this Agreement is invalid or unenforceable, the
balance of this Agreement shall remain in effect, and if any provision is
inapplicable to any person or circumstance, it shall nevertheless remain
applicable to all other persons and circumstances.
/s/ XXXXXXXXX X. XXXXXXXXX
Dated: April 2, 1984 -----------------------------------
Xxxxxxxxx X. Xxxxxxxxx
Agreed and Accepted
Xxxxxxxxx Research Institute, Inc.
By: /s/ XXXXXXXXX X. XXXXXXXXX
------------------------------
Xxxxxxxxx X. Xxxxxxxxx,
President
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