FIRST AMENDMENT TO THE NONEXCLUSIVE PATENT LICENSE AGREEMENT WITH VOXELJET
Exhibit 10.5
FIRST AMENDMENT TO THE
NONEXCLUSIVE PATENT LICENSE AGREEMENT
WITH VOXELJET
This First Amendment is entered into this 31stth day of March, 2011 (the “Effective Date”) and amends the License Agreement dated August 16, 2004, as amended to date, by and between the Z CORPORATION, a corporation duly organized under the laws of the Commonwealth of Massachusetts and having its principal office at 00 Xxxxxx Xxxxxx, Xxxxxxxxxx, Xxxxxxxxxxxxx 00000, X.X.X. (hereinafter referred to as “Z Corp”) and Voxeljet Technology GmbH (“Voxeljet”), a corporation registered in Amtsgericht Augsburg (#HRB 17081), with a principal place of business at Xxxx-Xxxxx-Xxxxxxx 0 00000 Xxxxxxxxx, Xxxxxxx. (hereinafter referred to as “LICENSEE”).
WHEREAS, Z CORP and LICENSEE wish to amend the License Agreement dated August 16, 2004 (“the Agreement”);
NOW, THEREFORE, in consideration of the premises and the mutual covenants contained herein, the parties agree as follows:
1. Amend and restate Recitals:
WHEREAS, Z Corp. is willing to grant to Voxeljet a non-exclusive license to the Z Corp Patents (referred to as “Licensed Patents”) subject to specified conditions, and Voxeljet is willing to accept the grant of the license subject to such conditions; and
2. Amend and restate Section 1. Definitions as follows:
“Field of Use 1” shall mean the manufacture, sale and operation of three dimensional printing equipment solely for the fabrication of plastic parts [***].
“Field of Use 2” shall mean the manufacture, sale and operation of three dimensional printing equipment solely for the fabrication of molds for metal casting or direct manufacture of parts utilizing at least [***] inorganic powder in a process that does not require post-processing other than oven baking parts or liquid infiltration. It is understood that license to practice Field of Use 2 is limited to the extent allowable through license of Z Corporation patents and not through sub-license of MIT patents still in force.
Restrictions:
Z Corp is willing to grant to Voxeljet a non-exclusive license to the Z Corp Patents (referred to as “Licensed Patents”) with the following restrictions:
· Materials developed and manufactured by Voxeljet that utilize patents referred to in Appendix A as Materials 19 shall be limited to use with Voxeljet equipment only.
· The manufacture, sale and operation of three dimensional printing equipment shall only be developed and used in one-color (monochrome) configuration.
· The manufacture, sale and operation of three dimensional printing equipment using a powder having a calcium sulfate hemihydrate content of no more than [***].
3. Amend and restate Section 14.1 with the following:
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If to Z Corp: |
Z Corporation |
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00 Xxxxxx Xxxxxx |
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Xxxxxxxxxx, XX 00000 |
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Attention: CEO |
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Tel: (000) 000-0000 |
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Fax: (000) 000-0000 |
4. Amend and restate Appendix A:
ORIGINAL:
(1) US 5,902,441
“Method of Three-Dimensional Printing”
2) US 6,007,318
“Method and Apparatus for Prototyping a Three-Dimensional Object”
3) US 6,416,850
“Three-Dimensional Printing Materials System”
4) WO 2001/34371 (Z Corp. Reference: “Materials 8”)
“Material System and Methods of Three-Dimensional Printing”
5) WO 2001/78969 (Z Corp. Reference: “Materials 10”)
“Compositions for Three-Dimensional Printing of Solid Objects”
US 2001/0050031
“Compositions for Three-Dimensional Printing of Solid Objects”
NEW:
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Z Corp Reference |
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08/707,693 |
US5,902,441 |
XX0000000 |
Materials 1 |
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60/197,526 |
US 7550518 (B2) |
US 0000000000 (A1) |
Materials 10 |
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60/197,118 |
W00178969 (A2) |
W00178969 (A3) |
Materials 10 |
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60/164,000 |
EP1415792 (A2) |
CA2388046 (A1); |
Materials 8 |
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60/472,221 |
US 7569273 (B2) |
W02004113042 (A2) |
Materials 12 |
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10/255,139 |
US2004056378 (A1) |
US7087109 (B2) |
Materials 11 |
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60/873,730 |
US 0000000000 |
W02008073297 (A2) |
Materials 19 |
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08/771,009 |
US 6,007,318 |
US 7,686,995; EP 1621311 |
Machine 1 |
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60/808,721 |
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W02007139938 (A2) |
Machine 10 |
Except as specifically modified or amended hereby, this First Amendment along with the Agreement shall remain in full force and effect and, as modified or amended, is hereby ratified, confirmed, and approved. No provision of this Amendment or the Agreement may be modified or amended except expressly in a writing signed by both parties nor shall any terms be waived except expressly in a writing signed by the party charged therewith. This Amendment as well as the Agreement shall be governed in accordance with the laws of the Commonwealth of Massachusetts.
IN WITNESS WHEREOF, the parties have duly executed this Amendment the day and year set forth below.
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Z CORPORATION |
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VOXELJET | ||
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By |
/s/ Xxxx Xxxxxx |
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By |
/s/ Xxxx Xxxxxx |
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Name |
Xxxx Xxxxxx |
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Name |
Xxxx Xxxxxx |
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Title |
CEO |
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Title |
CEO |
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Date |
3/31/11 |
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Date |
31 March 2011 |
