Exhibit 10.55
AMENDMENT TO LICENSE AND OPTION AGREEMENT
(the "Amendment")
This Amendment is effective as of the 8th day of April, 2002, by and
between H.C. Implants B.V., a corporation duly organized and existing under
the laws of the Netherlands, having its registered office at Zernikedreef 6
(2333 CL) Leiden, the Netherlands, and/or Osteotech, Inc., a corporation
duly organized and existing under the laws of the State of New Jersey,
having its registered office at 00 Xxxxx Xxx, Xxxxx Xxxx, Xxx Xxxxxx, XXX
hereinafter jointly "Licensor", and IsoTis N.V., formerly known as Matrix
Medical Holding B.V., a corporation duly organized and existing under the
laws of the Netherlands, having its statutory seat in Amsterdam and its
office at Professor Xxxxxxxxxxxxxx 00 D (3723 MB) Bilthoven, the
Netherlands, hereinafter "Licensee",
WHEREAS:
A. Licensor and Licensee have entered into a License and Option
Agreement on the 27th day of June, 1997, of which a copy is
attached to this Amendment, hereinafter the "Agreement";
B. Capitalized terms used in this Amendment refer to the capitalized
terms and definitions that have been used in the Agreement;
C. Licensee is desirous to exercise its option under the Agreement
to purchase the Patents and Licensor is desirous to assign the
Patents to Licensee;
D. Licensee is desirous to enter into an agreement to acquire from
Cam Implants B.V., a wholly owned subsidiary of Licensor ("CAM"),
its business, certain of its assets and certain of its
liabilities (the "CAM Business"), hereinafter the "CAM Business
Acquisition Agreement." Licensee and CAM have entered into
negotiations to that effect and they intend to transfer the CAM
Business no later than May 31st, 2002;
E. Licensee and Licensor wish to amend the Agreement to the effect
that the payment by Licensee and the execution of the patent
assignment by Licensor is subject to the terms and conditions as
set out in the Agreement and this Amendment thereto;
F. Following the execution and implementation of this Amendment the
Agreement will be deemed to have been terminated save as
otherwise provided here below.
NOW THEREFORE:
Licensor and Licensee agree that:
1. Section 2.3 of the Agreement will be amended so as to read as
follows:
"2.3 (a) So long as Licensee is not in default of any provision
of the Agreement, Licensee will have the option to purchase the
Patents (the "Purchase Option") for a purchase price equal to an
initial payment of USD 1,000,000 ("Initial Payment").
(b) An additional USD 250,000 will be due by Licensee to
Licensor in accordance with the following conditions:
(i) if Licensee falls to enter into the CAM Business
Acquisition Agreement on or prior to May 31st, 2002,
Licensee will pay an additional amount of USD 250,000
to Licensor no later than May 31st, 2002; or
(ii) if Licensee decides prior to May 31st, 2002 not to
enter into the CAM Business Acquisition Agreement, an
additional amount of USD 250,000 will be due and
payable to Licensor within 5 business days after
informing CAM of such decision, but no later than May
31st, 2002.
(c) Section 2.3 (b)(i) of the Agreement will not be
applicable, in the event that, on or prior to May 31st, 2002, CAM
has not made available to Licensee such information concerning
the CAM Business which Licensee may reasonably require in
relation to its proposed acquisition of the CAM Business as long
as such information actually exists, or In the event that CAM has
decided on or before May 31st, 2002 not to enter into the CAM
Business Acquisition Agreement.
(d) The Purchase Option shall be exercised by written notice
given by Licensee to the Licensor, which notice is deemed to be
given through the signing of this Amendment, and payment by
Licensee to Licensor of an amount of USD 1,250,000 (the "Escrow
Amount") no later than April 10th, 2002 by means of a telephonic
transfer by Licensee to bank account number 00.00.00.000 with ABN
Amro Bank N.V. in the name of Stibbe Derdengelden Nortariaat (the
"Escrow Account").
(e) Licensor shall execute a patent assignment in the form
set forth in Appendix B, forthwith upon payment by the Licensee
of the Escrow Amount into the Escrow Account.
(f) An amount of USD 1,000,000 of the Escrow Amount plus
accrued interest will be released to Licensor upon the following
conditions having been fulfilled:
(i) the due execution by the Licensor and the Licensee
of the Patent Assignment in the form of Appendix B
hereto and the signing by Licensor of any further
forms or deeds required to be signed or executed
by Licensor in connection with the requisite IP
filings at the relevant patent and trade xxxx
offices in and outside the Netherlands, all as
listed in Appendix C hereto, and
(ii) delivery to the Licensee of all intellectual
property files in relation to the Patents.
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It is understood that Licensee will be responsible for and undertakes
to do whatever is necessary to do any filings with the Office of
Patents and Trademarks of the Netherlands, the US Patent and Trademark
Office and any corresponding offices of countries foreign to the
Netherlands and the USA at its costs, and that Licensor will do
whatever it can to assist the Licensee therein if requested to do so.
(g) An amount of USD 250,000 of the Escrow Amount
plus accrued interest will be released to Licensor upon the
occurrence of a situation as described in section 2.3 (b),
(h) An amount of USD 250,000 of the Escrow Amount
plus accrued interest will be released to Licensee upon
Licensor and Licensee having entered into the CAM Business
Acquisition Agreement on or before May 31st, 2002, or upon the
occurrence of a situation as described in section 2.3 (c).
2. Section 6.1(b)(i) of the Agreement will be deleted from the
Agreement, and Section 6.1(b)(ii) of the Agreement will be
re-numbered to Section 6.1(b)(i).
3. The first sentence of Section 6.1(b)(iii) of the Agreement will
be deleted from the Agreement, and Section (b)(iii) of the
Agreement will be re-numbered to Section 6.1(b)(ii).
4. Section 1.4 of the Agreement will be amended on the date hereof,
so as to read as follows:
"1.4 The term "Patents" shall mean all valid and enforceable
claims of patents and patent applications related to Polyactive
owned by or controlled by Licensor, which are filed prior to the
execution date of the patent assignment (in the form set forth in
Appendix B hereto) by Licensor pursuant to the exercise of the
Purchase Option by Licensee. The Patents, patent applications,
and short particulars of which shall be described in Appendix A
hereto".
5. Section 12.9 will be added to the Agreement and will contain the
following wording:
"Licensee will sell to the Licensor, at its request, polyactive
material and/or polyactive material product at prices no less
favourable then the best price offered to any other customer of
the Licensee for such quantities, for three years as of the date
hereof."
6. Appendix A to the Agreement will be replaced by the amended
Appendix A, of which a copy is attached to this Amendment.
7. Appendix B to the Agreement will be replaced by the amended
Appendix B, of which a copy is attached to this Amendment.
8. Licensor confirms that there is no default by Licensee as
referred to in Section 2.3 of the Agreement as hereby amended.
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9. Following the execution and implementation of this Amendment it
is understood that the Agreement will be deemed to have been
terminated with the exception of Section Sections 4
("Confidentiality"), 8.2 ("Warranties"), 11.8 (no release of
obligations matured prior to termination), 12.2 (jurisdiction)
and 12.4 (applicable law).
10. HC Implants B.V. and Osteotech, Inc., each in capacity as
Licensor, warrant and represent, both severally and jointly, to
Licensee that (i) the Patents are in full force and effect, are
vested in and are legally and beneficially owned by the relevant
Licensor, are valid and enforceable, and none of them is being
used, claimed, opposed or attached by any other person, and (ii)
no right or license has been granted to any third party, other
than to Licensee, to use in any manner or to do anything which
would or might otherwise infringe any of the Patents and no act
has been done, omitted or permitted by Licensor whereby any of
the Patents have ceased or might cease to be valid and
enforceable.
IN WITNESS WHEREOF, the Licensor and the Licensee have executed this
Amendment as of the date set forth above.
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H.C. Implants B.V. ISOTis N.V.
By: By:
Date: Date:
At: At:
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Osteotech, Inc.
By:
Date:
At:
Annexes to this Amendment:
1. License and Option Agreement of 27 June 1997
2. Appendix A (List of Patents)
3. Appendix B (Patent Assignment)
4. Appendix C (Assignment registration forms)
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