SECOND AMENDED LICENSE AGREEMENT dated March 1, 1990, by and between Xx.
Xxxxxxxxx X. Xxxxxxxxx ("Xx. Xxxxxxxxx") with offices at 0000 Xxxxxxxxx Xxxxx,
Xxxxxxx, Xxxxx 00000 and Xxxxxxxxx Research Institute, Inc. (the "Company"), a
Delaware corporation with offices located at 00000 Xxxxxxx Xxxxx, Xxxxxxxx,
Xxxxx 00000.
W I T N E S S E T H :
WHEREAS, the Company previously acquired an exclusive license from Xx.
Xxxxxxxxx, dated June 29, 1983 (the "License"), to make, use, distribute, and
otherwise exploit antineoplastons, as the same is described in U.S. Patent
Serial No. 330,383 (Antineoplastons") 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") in the United States, Canada
and Mexico (the "Territory");
WHEREAS, Xx. Xxxxxxxxx and the Company entered into an amended license
agreement, dated April 2, 1984 (the "Amended License") which superseded the
License; and
WHEREAS, the Company and Xx. Xxxxxxxxx desire to amend the Amended 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 Amended
License shall be amended to read in its entirety as follows:
1. For purposes of this Agreement, "Licensed Rights" shall be defined as
the patent applications and any subsequently issued patents for Antineoplastons
and the Testing Procedure as such patents relate to the treatment of cancer,
including divisions, continuations and continuation-in-part of these patent
applications and patents issued in the Territory and any reissue patents of any
such patents in the Territory. Licensed Rights shall also include any and all
right, title and interest to Antineoplastons and the Testing Procedure with
respect to the use, manufacture, sale, distribution, and sublicense of
Antineoplastons in connection with the treatment of cancer in the Territory.
2. Xx. Xxxxxxxxx hereby grants to the Company the exclusive Licensed Rights
to make, use, sell, distribute and otherwise exploit Antineoplastons and the
Testinq Procedure in the Territory and to practice the method covered by any
claim of any patent which has issued or which may be issued during the term of
this Agreement in connection with the Licensed Rights (the "Method"). The
Company may grant a sublicense to others to manufacture and sell Antineoplastons
or use the Testing Procedure in the Territory or utilize the Method.
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Notwithstanding anything herein contained to the contrary, Xx. Xxxxxxxxx shall
be entitled to manufacture, use, sell, distribute and otherwise exploit
Antineoplastons in the Territory solely in connection with the treatment of
patients in his medical practice until the date on which the United States
Federal Drug Administration approves the sale of Antineoplastons for the
treatment of cancer in the United States.
3. Except as set forth in paragraph 2 hereof, this Agreement shall continue
until the earlier of the expiration of the last patent included within the
Licensed Rights or the termination of this Agreement according to the provisions
of paragraph 5 hereof.
4. During the term of this Agreement, Xx. Xxxxxxxxx and the Company agree
to make available to the other party all research and results thereof, and other
information obtained by each party concerning Antineoplastons and the Testing
Procedure as such relate to the treatment of cancer.
5. This Agreement may be terminated by Xx. Xxxxxxxxx under the following
circumstances:
(a) Bankruptcy Proceedings. Xx. Xxxxxxxxx may terminate this Agreement
in the event the Company files for bankruptcy or is the subject of any
proceeding under applicable bankruptcy laws and such proceeding against the
Company is not dismissed or discharged within ninety (90) days from the
date a
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petition for bankruptcy is filed.
(b) 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 or
disability, his departure from such offices shall not be deemed to be
removal for the purposes of this subparagraph.
(c) 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 event 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 or 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
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Regulations under the Securities Exchange Act of 1934, as such Rule is in
effect on the date hereof.
6. The Company shall bear all costs 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
patents against third party infringers 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(c) 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.
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
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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.
12. If any provision of this Agreement shall be deemed invalid or
unenforceable, the balance of this Agreement shall remain in effect, and if any
provision shall be deemed inapplicable to any person or circumstance, it shall
nevertheless remain applicable to all other persons and circumstances.
/s/ XXXXXXXXX X. XXXXXXXXX
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Xxxxxxxxx X. Xxxxxxxxx
Dated: March 1, 1990
XXXXXXXXX RESEARCH INSTITUTE, INC.
By: /s/ XXXXXXXXX X. XXXXXXXXX
---------------------------------
Xxxxxxxxx X. Xxxxxxxxx, President
Dated: March 1, 1990
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