EXHIBIT 2.2
INTELLECTUAL PROPERTY AGREEMENT
This Intellectual Property Agreement (the "Agreement") dated as of the
Closing Date and between MathSoft, Inc., a Massachusetts corporation ("Seller")
and MathSoft Engineering & Education, Inc., a Delaware corporation ("Buyer").
Capitalized terms used but not otherwise defined herein shall have the meanings
ascribed to them in the Purchase Agreement (as defined below).
WHEREAS, Buyer is acquiring from Seller the intellectual property rights
described in this Agreement in anticipation of the purchase of all of the stock
of Buyer by MathSoft Corporate Holdings, Inc. (the "Transaction") pursuant to a
Stock Purchase Agreement (the "Stock Purchase Agreement") among such entities.
WHEREAS, in connection with the Transaction, certain Proprietary Rights are
being transferred from Seller to Buyer for the ultimate benefit of MathSoft
Corporate Holdings, Inc.;
NOW, THEREFORE, in consideration of the mutual promises set forth in the
Stock Purchase Agreement and for other good and valuable consideration, the
receipt and sufficiency of which are hereby acknowledged, the Seller and Buyer
hereby agree as follow:
1. Assets. Seller hereby sells, assigns and transfers unto Buyer, its
------
successor, assigns and legal representatives, all of Seller's worldwide, right,
title and interest in and to the following (the property listed in a, b, c, d,
and e is hereinafter collectively referred to as the "Assets"):
a. The software products (collectively, the "Software") used, marketed,
and distributed by Seller's Engineering & Education Products Division ("EEPD"),
consisting of those products listed on Schedule A, including all versions and
----------
derivatives thereof, all source and object code, flow charts, and other related
documentation, and all Proprietary Rights therein.
b. The contracts set forth on Schedule B, including all rights
-----------
identified therein to use, modify, reproduce, publicly display, license,
sublicense and/or distribute the software products and technology, and all third
party software included in or bundled with the Software listed in Schedule A,
----------
including without limitation MKM (Waterloo Maple), Frontline Solver,
International CorrectSpell software, HiQ software, VisSim LE and Comm/PE
editions, SmartSketch and SmartSketch LE, Microsoft Internet Explorer, IBM
techexplorer, Trellix and VoloView Express (the "Assigned Contracts"). Seller
shall use commercially reasonable efforts to obtain the required consents to the
contracts designated with an asterisk on Schedule B by March 31, 2001.
--------
c. The patents, patent applications and the inventions listed on
Schedule C, including the rights in and to any continuation, divisional,
-----------
substitute, renewal, reissue or re-examination, the corresponding foreign patent
applications and foreign patents arising out of the patents and patent
applications, any future patents related thereto or issuing therefrom and the
right to xxx for past infringement ("Patent Rights").
1
d. All EEPD web sites, including all content included therein, design
and architecture thereof, software tools and utilities for their development and
operation, and all domain names associated therewith ("Web Properties"),
consisting of those set forth on Schedule D-1, and the content only of the web
------------
site designated on Schedule D-2.
-------------
e. The trademarks, service marks, trade names and trade dress used by
EEPD, consisting of those set forth on Schedule E, and all goodwill associated
----------
therewith ("Marks").
2. License.
-------
a. Seller hereby grants to Buyer the perpetual, irrevocable,
royalty-free, nonexclusive right and license to use, modify (including, without
limitation, to create derivative works thereof), reproduce, distribute, publicly
display, and to sublicense any of the foregoing rights in, the software,
algorithms, functions, libraries and content developed or modified by Seller's
Data Analysis Products Division for Mathcad, StudyWorks, and related products,
consisting of those items listed on Schedule F (the "Seller Software");
-----------
provided, however, that no right to distribute, publicly display or sublicense
the source code version of the Seller Software is granted hereby.
b. Buyer hereby grants to Seller the perpetual, irrevocable,
royalty-free, nonexclusive right and license to use, modify (including, without
limitation, to create derivative works thereof), reproduce, distribute, publicly
display, and to sublicense any of the foregoing rights in the Mathconnex
component as included in Mathcad version 7 (and prior versions of such component
to the extent in the possession of Buyer), and the Mathcad component interfaces
incorporated in S-PLUS and Axum as they exist as of the date of this Agreement
(the "Buyer Software"); provided, however, that no right to distribute, publicly
display or sublicense the source code version of the Buyer Software is granted
hereby.
c. Neither party shall assert any patent rights against the other party
in connection with that other party's exercise of its rights within the scope of
the licenses granted in Sections 2(a) and (b) above.
3. Residuals. The parties acknowledge that prior to the Transaction certain
---------
of their respective employees who have been involved in the development,
enhancement, or support of the Assets and Seller's products may retain in
non-tangible form some of the confidential ideas, concepts, know-how or
techniques embodied in such products. Each party shall continue to protect such
information from disclosure, publication and dissemination to the same degree
and through the use of at least the same degree of care and discretion as the
other applies to protect its own trade secret, know-how or confidential
information, and any continued use of such non-tangible information shall be
subject to the foregoing and the Non-Competition Agreement between the parties
of even date herewith.
4. Representations and Warranties. The representations and warranties of
--------------------------------
Seller as set forth in Section 3.16 of the Stock Purchase Agreement are
incorporated as if fully set forth herein.
2
5. Further Assurances. Seller shall execute and deliver, from time to time
-------------------
after the date hereof upon the request of Buyer or its transferee, such further
conveyance instruments, and take such further actions, as may be reasonably
necessary to evidence more fully the transfer of ownership of all the Assets to
Buyer. Seller therefore agrees to (a) execute, acknowledge, and deliver any
reasonably necessary affidavits or documents of assignment and conveyance
regarding the Assets; (b) provide testimony in connection with any proceeding
affecting the right, title and interest or benefit of Buyer and to the Assets,
provided, however, that Buyer is responsible for all reasonable out-of-pocket
expenses incurred in the provision of such testimony; and (c) perform other acts
reasonably necessary to carry out the intent of the Agreement.
6. Acknowledgement of Rights. In furtherance of this Agreement, Seller
---------------------------
hereby acknowledges that, as of the Closing Date, Buyer has succeeded to all of
Seller's right, title and standing to (a) receive all rights and benefits
pertaining to the Assets; (b) institute and prosecute all suits and proceedings
against a third party and take all actions that Buyer, in its sole discretion,
may deem necessary or proper to collect, assert, or enforce any claim, right or
title of any kind in and to any and all of the Assets; and (c) defend and
compromise any and all such actions, suits or proceedings relating to such
transferred and assigned rights, title interest and benefits, and do all other
such acts and things in relation thereto as Buyer, in its sole discretion, deems
advisable. Buyer hereby assumes and agrees to pay, perform, or discharge all
debts, liabilities and obligations related to the Assets as the same may become
due arising on or after the effective date of this Agreement.
7. Indemnification.
---------------
a. Seller hereby indemnifies Buyer against and agrees to hold Buyer
harmless to the fullest extent permitted by law from and against any and all
damages, losses, liabilities, diminution in value, fines, penalties, costs and
expenses of any kind or nature whatsoever (whether or not arising out of a third
party claim and including reasonable expenses of investigation, defense or
settlement of the foregoing and reasonable attorneys' fees and disbursements)
(collectively, "Losses") incurred or suffered by Buyer arising under the
Assigned Contracts based on any event, act or circumstance that occurred prior
to the effective date of assignment.
b. Buyer hereby indemnifies Seller against and agrees to hold Seller
harmless from and against any Losses incurred or suffered by Seller arising
under the Assigned Contracts based on any event, act or circumstance that occurs
after the effective date of assignment.
8. Return of Materials. Seller shall surrender to Buyer all materials and
---------------------
work product known by Seller to be in Seller's possession or within Seller's
reasonable control (including all copies thereof) directly relating to the
Assets, including without limitation all source code and flow charts, except
only for those materials reasonably necessary for the exercise of the rights
granted in Section 2(b) above, and Seller shall retain no copies of such
materials.
3
9. Delivery of Licensed Materials. Buyer shall deliver to Seller within
---------------------------------
thirty (30) days of the Closing Date the electronic sources for documentation,
if available, and the source code for the Mathconnex component as included in
Mathcad version 7 (and prior versions of such component technology including the
source code, build environment, modified build tools for flex and yacc/bison and
test suite, third party freeware, and the electronic sources for documentation
to the extent the same are retrievable from archived storage using commercially
reasonable efforts) as they exist as of the date of this Agreement.
10. Consents. Notwithstanding any other provision of this Agreement, this
--------
Agreement shall not constitute an agreement to assign any contract requiring a
third-party consent if such an agreement to assign or an attempted assignment
would constitute a breach thereof. Seller (until March 31, 2001) and Buyer will
each use commercially reasonable efforts (but, with respect to Seller, without
the payment of any money) to obtain the consent of the other parties to any such
contract for the assignment thereof to Buyer as Buyer may request. If such
consent is not obtained in relation to any of the assigned contracts listed on
Schedule B and unless and until any such contract shall be so assigned, Seller
and Buyer will cooperate in a mutually agreeable arrangement under which Buyer
would obtain the benefits and assume the obligations thereunder on a basis
consistent with this Agreement, including subcontracting or sub-licensing to
Buyer, or under which Seller would enforce for the benefit of Buyer (but only to
the extent that such performance is permitted by such contract), with Buyer
assuming Seller's obligations and any and all rights of Seller against a third
party thereto from the Closing Date on such terms as shall (insofar as
aforesaid) give to Buyer the benefits and obligations of each such contract or
lease or to the same extent as if the same had been assigned to Buyer.
11. Power of Attorney. To effectuate the terms of this Agreement, Seller
-------------------
agrees that in the event Buyer requests (in writing by certified mail to
Seller's address for notices as set forth in Section 13.01 of the Stock Purchase
Agreement) Seller to execute a further conveyance instrument and Seller fails to
execute and deliver such instrument or provide written notice of rejection of
such request within thirty (30) days of Seller's receipt of such notice, any
officer or agent of Buyer or its transferee shall be entitled to execute such
instrument as was provided to Seller, as the agent and attorney-in-fact of
Seller on its behalf, under the conditions described in this sentence.
12. Binding Effect. This Agreement shall inure to the benefit of, and be
---------------
binding upon, the parties hereto together with their respective legal
representatives, successors and assigns.
13. Governing Law. This Agreement shall be governed by, and construed in
--------------
accordance with, the laws of the Commonwealth of Massachusetts.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement under
seal the day and year first above written.
MathSoft, Inc. MathSoft Engineering & Education, Inc.
By /s/ Xxxxxxx X. Xxxxxx By /s/ Xxxxxx X. X'Xxxxx
---------------------------- ------------------------------------
Title Chief Executive Officer Title Vice President
and President
------------------------- ---------------------------------
Date January 23, 2001 Date January 23, 2001
-------------------------- ----------------------------------
4
