SECOND AMENDED AND RESTATED CONTINGENT LICENSE AGREEMENT
EXHIBIT
4.4
SECOND
AMENDED AND RESTATED
This
SECOND AMENDED AND RESTATED CONTINGENT LICENSE AGREEMENT (this
“Agreement”) is made as of the 30th day of August, 2007 (the
“Effective Date”), by and among MATRITECH, INC. a corporation organized
under the laws of the State of Delaware (the “Licensor”), and SDS CAPITAL
GROUP SPC, LTD. (the “Licensee”), as collateral agent for the holders
(the “Holders”) of the Series A Notes, Series B Notes and Series C Notes
(as defined below) (in such capacity, the “Collateral
Agent”).
WHEREAS,
the Licensor and certain Holders entered a certain Securities Purchase
Agreement, dated as of January 13, 2006 (as the same may be amended, restated,
modified, supplemented and/or replaced from time to time, the “Series A
Purchase Agreement”), pursuant to which the Licensor issued its 15% Secured
Convertible Promissory Notes to such Holders (the “Series A Note
Holders”) in the original aggregate principal amount of $6,997,960 (as the
same may be amended, restated, modified, supplemented and/or replaced from
time
to time, the “Series A Notes”);
WHEREAS,
in order to induce the Series A Note Holders to purchase the Series A Notes,
the
Licensor executed and delivered to the Collateral Agent a Security Agreement,
dated as of January 13, 2006 (the “Initial Security Agreement”), pursuant
to which the Licensor granted to the Collateral Agent, for the benefit of itself
and the Series A Note Holders, a perfected security interest in certain property
of the Licensor to secure the prompt payment, performance and discharge in
full
of all of Borrower’s obligations under the Series A Notes;
WHEREAS,
in connection with the Series A Purchase Agreement, concurrently therewith,
the
Licensor and the Collateral Agent entered into a Contingent License Agreement,
dated as of January 13, 2006 (the “Initial Contingent License
Agreement”), pursuant to which the Licensor granted to the Collateral Agent,
for the benefit of itself and the Series A Note Holders, a contingent license
under the Matritech Patent Rights, the Matritech Trademark Rights and the MIT
Patent Rights (each as defined therein) on the terms and conditions set forth
therein;
WHEREAS,
the Licensor and certain Holders entered into a Securities Purchase Agreement,
dated as of January 22, 2007 (as the same may be amended, restated, modified,
supplemented and/or replaced from time to time, the “Series B Purchase
Agreement”), pursuant to which the Licensor issued its Series B 15% Secured
Convertible Promissory Notes to such Holders (the “Series B Note
Holders”) in the original aggregate principal amount of up to $4,500,000 (as
the same may be amended, restated, modified, supplemented and/or replaced from
time to time, the “Series B Notes”);
WHEREAS,
in connection with the Series B Purchase Agreement, concurrently therewith,
the
holders of a majority of outstanding principal balance of the Series A Notes
consented to the issuance of the Series B Notes and directed the Collateral
Agent to amend and restate the Initial Security Agreement and Initial Contingent
License Agreement to enable the Series B Note Holders to have a pari
passu position with the Series A Note Holders as to the
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security
interest and license granted under such agreements, and the Initial Security
Agreement and Initial Contingent License Agreement were so amended and restated
(as heretofore amended, the “Existing Security Agreement” and
“Existing Contingent License,” respectively).
WHEREAS,
concurrently herewith, Borrower and certain Holders are entering into a
Securities Purchase Agreement, dated as of the date hereof (as the same may
be
amended, restated, modified, supplemented and/or replaced from time to time,
the
“Series C Purchase Agreement”, and, together with the Series A Purchase
Agreement and the Series B Purchase Agreement, the “Purchase Agreements”)
pursuant to which Borrower is issuing Series C 15% Secured Promissory Notes
to
such Holders (the “Series C Note Holders” and together with the Series A
Note Holders and the Series B Note Holders, the “Holders”) in the
original aggregate principal amount of $3,330,000 (as the same may be amended,
restated, modified, supplemented and/or replaced from time to time, the
“Series C Notes” and together with the Series A Notes and Series B Notes,
the “Notes”).
WHEREAS,
concurrently herewith, the holders of a majority of outstanding principal
balance of the Series A Notes, and the holders of a majority of outstanding
principal balance of the Series B Notes, have consented to the issuance of
the
Series B Notes and directed the Collateral Agent to amend and restate the
Existing Security Agreement and Existing Contingent License Agreement to enable
the Series C Note Holders to have a pari passu position with the Series
A Note Holders and the Series B Note Holders as to the security interest and
license granted under such agreements;
WHEREAS,
in connection with the Series C Purchase Agreement, concurrently therewith,
the
Licensor and the Collateral Agent are amending and restating the Existing
Security Agreement (as same may be amended, restated, modified, supplemented
and/or replaced from time to time, the “Security Agreement”) in order to
grant to the Collateral Agent, for the benefit of itself and of the Holders,
a
perfected security interest in certain property of Licensor to secure the prompt
payment, performance and discharge in full of all of Licensor’s obligations
under the Notes, all on the terms and conditions set forth therein;
WHEREAS,
Licensor is the owner of the Matritech Patent Rights and Matritech Trademark
Rights (each as defined below) and has the right to sublicense the MIT Patent
Rights (as defined below); and
WHEREAS,
in order to induce the Series C Note Holders to extend credit to the Borrower
under and pursuant to the Series C Notes, the Licensor agrees to amend and
restate the Existing Contingent License Agreement in order to grant to Licensee,
for the benefit of itself and the Holders, a contingent license under the
Matritech Patent Rights, the Matritech Trademark Rights and the MIT Patent
Rights on the terms and conditions set forth in this Agreement;
NOW,
THEREFORE, in consideration of the foregoing and the mutual covenants contained
herein, and for other good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, the parties hereto agree to amend
and restate the Existing Contingent License Agreement so that, as amended and
restated, it reads in its entirety as provided herein:
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1.
Definitions.
(a) “Xxxxxx
License Agreement” shall mean the license agreement entered into
by and between Xxxxxx Laboratories and Matritech, Inc., effective April 1,
2004.
(b) “Event
of Default” shall mean any Event of Default described in (1) Sections A(i),
(ii) or (iii) of Article VI of the Series C Notes; (2) Sections A(i), (vi)
or
(vii) of Article VI of the Series B Notes; or (3) Sections A(i), (vi) or (vii)
of Article VI of the Series A Notes.
(c) “Expiration
Date” shall mean the earlier to occur of the date on which (i) on a
country-by-country basis, the expiration of the last to expire of any Valid
Claim included in the Matritech Patent Rights and the MIT Patent Rights in
such
country, (ii) all principal, premium, if any, interest on the Notes, and any
other amounts payable pursuant to the terms of the Notes have been paid in
full,
or (iii) receipt of payments by the Licensee on net profits on the sales of
Licensed Products hereunder that equal the unpaid balance of all principal,
premium, if any, interest on the Notes, and any other amounts payable pursuant
to the terms of the Notes.
(d) “Field”
shall mean the field of bladder cancer detection in humans.
(e) “License
Agreements” shall mean the MIT License Agreement and the Xxxxxx
License Agreement.
(f) “Licensed
Products” shall mean any human bladder cancer detection product, including
without limitation the NMP22® BladderChek® Test and the NMP22® Test Kit,
developed, marketed, and/or sold by Licensee.
(g) “License
Term” shall mean the period commencing on the effective date of an Event of
Default and continuing until the Expiration Date.
(h) “Matritech
Patent Rights” shall mean the patent rights listed on Schedule A, and
any continuation, continuation-in-part, divisional, reexamination, or reissue
thereof, and any foreign counterpart patents and patent applications to any
of
the foregoing.
(i) “Matritech
Trademark Rights” shall means the trademark rights listed on Schedule
B and the goodwill of the business symbolized thereby, and related
registrations and applications for registration to any of the
foregoing.
(j) “MIT
License Agreement” shall mean the license agreement entered into by and
between Massachusetts Institute of Technology (“MIT”) and Matritech,
Inc., effective December 14, 1987 attached hereto as Schedule
F.
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(k) “MIT
Patent Rights” shall mean the patent rights listed on Schedule C, and
any continuation, continuation-in-part, divisional, reexamination, or reissue
thereof, and any foreign counterpart patents and patent applications to any
of
the foregoing.
(l) “Permitted
Amendment” shall mean, with respect to an agreement to which Licensor is a
party, any amendment, alteration, waiver or other change of any of the terms
or
conditions of such agreement in a manner that would not materially adversely
affect Licensee’s rights or obligations provided under this Agreement with
respect to such agreement.
(m) “Secured
Obligations” shall have the meaning set forth in the Security
Agreement.
(n) “Territory”
shall mean the entire world.
(o) “Unotech
Contract” shall mean the Contract and Manufacturing Arrangement entered into
by and between Unotech Diagnostics, Inc. (“Unotech”) and Matritech, Inc.,
on March 22, 2001.
(p) “Valid
Claim” shall mean a claim of any issued and unexpired patent within the
Matritech Patent Rights and/or the MIT Patent Rights which has not lapsed,
become abandoned or been held revoked, invalid, or unenforceable by a decision
of a court or administrative or government authority or agency of competent
jurisdiction from which no appeal can be or has been taken within the time
allowed for such appeal, and which has not been admitted to be invalid or
unenforceable through reissue, disclaimer or otherwise.
2.
License
Grants and Restrictions.
(a) Matritech
Patent License Grant. Subject to (i) the terms and conditions set
forth in this Agreement, (ii) any license rights granted to Unotech under the
Unotech Contract, and (iii) any license rights, similar to those granted to
Unotech under the Unotech Contract, granted to any third party manufacturer,
Licensor hereby grants to Licensee, and Licensee hereby accepts, an exclusive,
royalty-free, fully paid-up, right and license under the Matritech Patent Rights
to make, have made, use, sell, have sold, offer for sale, have offered for
sale,
import and have imported Licensed Products in each case within the Field and
within the Territory during the License Term. Licensee may
sublicense, directly or indirectly (through multiple tiers), the rights granted
to Licensee under this Section 2(a)
to any entity or person. The license granted under this Section 2(a)
shall terminate effective immediately as of the Expiration Date.
(b) MIT
Patent Sublicense Grant. Subject to the terms and conditions set
forth in this Agreement and the sections of the MIT License Agreement attached
hereto as Schedule D, Licensor hereby grants to Licensee, and Licensee
hereby accepts, an exclusive, royalty bearing, right and license under the
MIT
Patent Rights to make, have made, use, sell, have sold, offer for sale, have
offered for sale, import and have imported Licensed Products in each case within
the Field and within the Territory during the License Term. Licensee
may sublicense, directly or indirectly (through multiple tiers), the rights
granted to Licensee under
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this
Section 2(b)
to any entity or person. The license granted under this Section 2(b)
shall terminate effective immediately as of the Expiration Date.
(i) Licensee
agrees to be bound by the obligations to MIT set forth in the sections of the
MIT License Agreement attached hereto as Schedule D as if Licensee were a
party to the MIT License Agreement.
(c) Matritech
Trademark License Grant.
(i) Subject
to the terms and conditions set forth in this Agreement, Licensor hereby grants
to Licensee, and Licensee hereby accepts, an exclusive, royalty-free, fully
paid-up, right and license under the Matritech Trademark Rights to use and
display the Matritech Trademark Rights in any and all advertising and other
promotional materials (whether in traditional print or electronic format)
relating to the marketing, advertising, promotion, and/or selling of Licensed
Products within the Field and within the Territory during the License
Term. Licensee may sublicense, directly or indirectly (through
multiple tiers), the rights granted to Licensee under this Section 2(c)
to any entity or person. The license granted under this Section 2(c)
shall terminate effective immediately as of the Expiration Date.
(ii) The
Licensor and Licensee hereby acknowledge that the Matritech Trademark Rights
have established goodwill, and acknowledge the importance of Licensor’s control
over the quality of Licensee’s use thereof so as to preserve the continued
validity of the Matritech Trademark Rights and to protect the goodwill
associated therewith. Licensee agrees that the quality of the
products and services provided by Licensee under the Matritech Trademark Rights
shall equal or exceed the standard of quality heretofore established and
maintained by Licensor with respect to the same or similar products and
services. All goodwill resulting from Licensee’s use of the Matritech
Trademark Rights shall inure to the benefit of Licensor. If Licensor
determines that Licensee is using or displaying any Matritech Trademark Rights
in a manner that is or may be detrimental to Licensor’s interest, Licensor may
issue reasonable instructions to Licensee concerning the manner, if any, in
which Licensee may continue to use such Matritech Trademark
Rights. Licensee shall promptly comply with such instructions or
cease the use or display of such Matritech Trademark Rights.
(d) Sublicenses. Licensee’s
right to sublicense under Sections 2(a)
through 2(c)
hereunder shall be exclusive to it and may only be made during the License
Term. Prior to any sublicense becoming effective, Licensee shall have
furnished to Licensor a complete copy, including all exhibits and schedules
thereto, of any sublicense granted by Licensee at least five (5) business days
prior to the effective date of any such sublicense. Except as
Licensor expressly agrees otherwise in writing, any sublicense granted by
Licensee under this Section 2(d)
hereof shall be subject and subordinate to the terms of this Agreement, shall
terminate not later than the Expiration Date and shall provide that all rights
to the Matritech Patent Rights, MIT Patent Rights and Matritech Trademark Rights
sublicensed by Licensee to its sublicensee hereunder shall revert exclusively
to
Licensor upon the Expiration Date automatically and without further action
by
either Licensor or Licensee.
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(e) Limitation. The
licenses granted to Licensee under this Agreement do not confer any right to
practice the inventions covered by the claims of the Matritech Patent Rights
and/or the MIT Patent Rights outside of the Field. Nothing in this
Agreement shall prevent Licensor, directly or indirectly, from making, having
made, selling, having sold, offering to sell, having offered for sale,
importing, having imported, renting, and/or leasing any apparatus, systems
or
products outside of the Field which practice or embody, or are configured for
use in practicing, the inventions covered by the claims of the Matritech Patent
Rights and/or the MIT Patent Rights, or practicing any method covered by the
claims of the Matritech Patent Rights and/or the MIT Patent Rights outside
of
the Field. Licensor reserves all rights not expressly granted
herein.
3.
Licensed
Product Marking. To the extent required by applicable law,
Licensee agrees to xxxx each Licensed Product and any and all associated
materials with the proper patent numbers and patent and trademark notices,
including without limitation, those patent numbers and notices that are listed
on the NMP22® BladderChek® Test and the NMP22® Test Kit as of the Effective
Date.
4.
Confidentiality
Obligations.
(a) “Confidential
Information” means, subject to the exceptions set forth in Section 4(c),
any and all information included in or representing the Matritech
Patent
Rights and/or the MIT Patent Rights and the existence of this Agreement, the
terms and conditions of this Agreement, and Schedule F to this
Agreement.
(b) The
Licensee shall not disclose any Confidential Information to any third party
nor
use any Confidential Information for any purpose except as may be expressly
authorized by the Licensor in writing. Notwithstanding the foregoing,
the Licensee may disclose Confidential Information to the extent required by
law
or legal process, provided the Licensor is given reasonable prior written notice
and a reasonable opportunity to intervene to protect its
interests. Licensee hereby acknowledges that the MIT License
Agreement has been filed with the U.S. Securities and Exchange Commission
subject to a confidential treatment order with respect to certain portions
thereof. The Licensee shall not disclose any Confidential Information pursuant
to law or legal process without first notifying the Licensor and using
reasonable efforts to minimize such disclosure and, in the case of the MIT
License Agreement, to prevent the disclosure of the information subject to
the
aforesaid confidential treatment order, while such order is in effect. The
obligations of this Section 4shall
survive the expiration or termination of this License
Agreement.
(c) Information
will not be deemed Confidential Information hereunder if such information:
(a)
is known to the receiving party prior to receipt from the disclosing party
directly or indirectly from a source other than one having an obligation of
confidentiality to the disclosing party; (b) becomes known (independently of
disclosure by the disclosing party) to the receiving party directly or
indirectly from a source other than one having an obligation of confidentiality
to the disclosing party; (c) becomes publicly known or otherwise ceases to
be
secret or confidential, except through a breach of this Agreement by the
receiving party; or (d) is independently developed by the receiving
party.
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(d) Notwithstanding
anything to the contrary in this Section 4, upon execution of this Agreement,
the
parties agree to execute the Notice of License Grant attached hereto as
Schedule E, a copy of which may be recorded with the U.S. Patent and
Trademark Office together with SchedulesA, B, and C
attached hereto.
5.
Records
and Audit Rights.
(a) Licensee
shall maintain (and cause it sublicensees to maintain) complete and accurate
records of any information which may be reasonably required by Licensor to
determine whether Licensee is complying with the terms of this
Agreement.
(b) For
the
sole purpose of determining whether Licensee is in compliance with the terms
of
this Agreement, Licensor shall have the right, at Licensor’s expense, to have an
independent auditor conduct an inspection and audit of all the relevant
accounting and sales books, records, agreements, and documents of Licensee,
during regular business hours at Licensee’s offices and in such a manner as not
to interfere unreasonably with Licensee’s normal business
activities. In no event shall such audits be conducted hereunder more
frequently than every twelve (12) months. Prior to commencing any
such inspection and audit, any such independent auditor shall have entered
into
an agreement with Licensor which prohibits the disclosure of any information
relating to Licensee to any party, including Licensor, except that such auditor
may issue a report to Licensor, the sole purpose of which shall be to report
to
Licensor whether Licensee is in compliance with the terms of this Agreement,
including a summary of and sufficient detail regarding the scope, quality,
and
methodology of such compliance or lack thereof.
6.
Term
and Termination.
(a) The
term
of this Agreement (“Term”) shall commence on the Effective Date and
continue until the Expiration Date.
(b) Upon
termination or expiration of this Agreement and except as otherwise expressly
provided herein, the licenses granted hereunder shall terminate, and any
sublicenses granted by Licensee hereunder shall terminate simultaneously unless
otherwise agreed to in writing by Licensor.
7.
Prosecution,
Maintenance and Enforcement.
(a) Prosecution
and Maintenance. Licensor retains the sole right to prepare,
file, prosecute, and maintain the patent applications and patents included
in
the Matritech Patent Rights and the trademark registrations and applications
for
registration included in the Matritech Trademark Rights. No part of
this Agreement shall be construed to require Licensor to file any patent or
trademark application, secure any patent or trademark registration, provide
copies of patent and/or trademark applications or patents and/or trademark
registrations to Licensee or disclose any inventions described or claimed in
such patents or patent applications. Subject to Section 7(a)(i),
Licensor agrees to maintain the Matritech Patent Rights and/or Matritech
Trademark Rights and Licensor shall not abandon, transfer or license any of
the
Matritech Patent
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Rights
and/or Matritech Trademark Rights, in each case that cover the Licensed
Products, without the prior written approval of the Licensee.
(i) Option
of Licensee to Prosecute/Maintain. Licensor shall give reasonable
notice to Licensee of any desire to cease prosecution and/or maintenance of
any
of the Matritech Patent Rights and/or Matritech Trademark Rights, in each case
that cover the Licensed Products, on a country by country basis in the
Territory. In the event that Licensee wishes Licensor to continue
prosecution of any such Matritech Patent Rights and/or Matritech Trademark
Rights, Licensee shall provide timely written instructions to Licensor and
Licensor agrees to prosecute such Matritech Patent Rights and/or Matritech
Trademark Rights at Licensor’s expense; provided, that
Licensor shall not be obligated to prosecute any patent application and/or
trademark application included in the Matritech Patent Rights and/or Matritech
Trademark Rights in the event the Licensor determines, in its reasonable
business judgment, that the prosecution of such application is no longer
necessary or desirable in the conduct of its business as currently conducted
or
as currently proposed to be conducted. In the event that Licensee
wishes Licensor to continue maintenance of any such Matritech Patent Rights
and/or Matritech Trademark Rights, Licensee shall provide timely written
instructions to Licensor and Licensor agrees to maintain such Matritech Patent
Rights and/or Matritech Trademark Rights at Licensor’s expense.
(b) Notice. In
the event that Licensee becomes aware of any evidence that (i) any invention
which is the subject of any patent applications and/or patents included in
the
Matritech Patent Rights infringes or is alleged to infringe any third party’s
patent rights in any field of use, (ii) any patent applications and/or patents
included in the Matritech Patent Rights is infringed or is alleged to be
infringed by any third party in any field of use, (iii) any trademark included
in the Matritech Trademark Rights infringes or is alleged to infringe any third
party’s trademark rights in any field of use, or (iv) any trademark included in
the Matritech Trademark Rights is infringed or is alleged to be infringed by
any
third party in any field of use, Licensee shall promptly notify Licensor in
writing of the name and address of such third party, the alleged acts of
infringement, and any available evidence of infringement.
(c) Defense
of Infringement Actions. Licensor shall defend any claim for
patent or trademark infringement by a third party on account of the manufacture,
sale, practice or use of any Licensed Products at its own expense, in its own
name and entirely under its own direction and control, or settle any such
action, proceeding or dispute by license. Notwithstanding the
foregoing, no settlement of any such action or proceeding which restricts the
scope, or adversely affects the enforceability, of the Matritech Patent Rights
and/or Matritech Trademark Rights, in each case that cover the Licensed
Products, may be entered into by Licensor without the prior written consent
of
Licensee, which consent shall not be unreasonably withheld, delayed or
conditioned.
(d) Enforcement
of Patent Rights. Licensor shall have the sole right, at its sole
discretion, to bring any legal action for infringement of the Matritech Patent
Rights and/or the Matritech Trademark Rights or to defend any counterclaim
of
invalidity or action of a third party for declaratory judgment of
non-infringement or interference (“Enforcement Actions”), and
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Licensor
may bring or defend and may settle any such Enforcement Actions solely at its
own expense and through its counsel. Any recovery or proceeds of
settlement or judgment in any Enforcement Actions brought or defended by
Licensor under this Section 7(d)
shall be shared in order, as follows: (A) Licensor shall recoup all of its
reasonable out-of-pocket costs and expenses incurred in connection with such
Enforcement Action; (B) any balance shall be applied toward the unpaid balance
of all principal, premium, if any, interest on the Notes, and any other amounts
payable pursuant to the terms of the Notes; and (C) any and all remaining
balance shall be received by Licensor. If Licensor reasonably
requests, Licensee agrees to become a party to and to participate in any such
Enforcement Actions, and, without limiting the generality of the foregoing,
Licensor may implead Licensee as a necessary party to any such legal action
and
Licensee agrees to consent to such joinder; provided, however that Licensee’s
participation shall be at Licensor’s expense.
(i) Option
of Licensee to Enforce. Licensor shall give reasonable notice to
Licensee of any desire not to pursue any Enforcement Action contemplated by
Section 7(d). In
the event that Licensee wishes Licensor to pursue such Enforcement Action,
Licensee shall provide timely written instructions to Licensor and Licensor
agrees to pursue such Enforcement Action in its own name and Licensor and
Licensee will share the costs and expenses of such Enforcement Action
equally. In the event that Licensor recovers any damages or other
sums in any such action, suit or proceeding or in settlement thereof, such
damages or other sums recovered shall be shared in order, as follows: (A)
Licensee shall recoup all of its reasonable out-of-pocket costs and expenses
incurred in connection with such Enforcement Action; (B) any balance shall
be
applied toward the unpaid balance of all principal, premium, if any, interest
on
the Notes, and any other amounts payable pursuant to the terms of the Notes;
and
(C) any and all remaining balance shall be received by Licensor.
8.
Representations
of Licensor.
(a) Licensor
shall not amend, restate, alter, waive or otherwise change any of the terms
and
conditions of any License Agreement without the prior written approval of
Licensee, other than pursuant to a Permitted Amendment.
(b) Licensor
represents that, the Matritech Patent Rights, Matritech Trademark Rights, MIT
Patent Rights, and the intellectual property that is the subject of the Xxxxxx
License Agreement, are the only intellectual property rights Licensor owns
or
has the right to use under any written license agreement that relate to the
Licensed Products.
9.
Laws
and Regulations. Licensee agrees to cause any sublicensee to
agree, and in the event that Licensee directly tests, manufactures, markets,
packages, distributes or sells Licensed Products, then Licensee agrees on behalf
of itself, for the benefit of Licensor to conduct all of its operations dealing
with Licensed Products in accordance with all applicable laws, regulations
and
other requirements, which may be in effect from time to time, of all national
governmental authorities, and of all states, municipalities and other political
subdivisions and agencies thereof, including, without limitation the U.S. Food,
Drug and Cosmetics Act, and the regulations and other requirements of the U.S.
Food and Drug Administration and to exercise a
9
reasonable
standard of care in the testing, manufacture, marketing, packaging, distribution
and sale of any Licensed Product.
10.
Disclaimer. EXCEPT
AS OTHERWISE EXPRESSLY SET FORTH IN THIS AGREEMENT, NEITHER PARTY NOR ITS
DIRECTORS, OFFICERS, EMPLOYEES, OR AFFILIATES, MAKE ANY REPRESENTATIONS OR
WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED
TO
THE WARRANTY OF TITLE OR THE IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS
FOR
A PARTICULAR PURPOSE, OR NONINFRINGEMENT OR THE VALIDITY OF PATENT CLAIMS,
ISSUED OR PENDING, OR THE ABSENCE OF LATENT OR OTHER DEFECTS, WHETHER OR NOT
DISCOVERABLE. NOTHING IN THIS AGREEMENT SHALL BE CONSTRUED AS A
REPRESENTATION MADE OR WARRANTY GIVEN BY SUCH PARTY THAT THE EXERCISE BY THE
OTHER PARTY OF THE LICENSE RIGHTS GRANTED HEREUNDER SHALL NOT INFRINGE ANY
PATENT OF ANY THIRD PARTY.
11.
Limitation
of Liability. TO THE MAXIMUM EXTENT PERMITTED BY APPLICABLE LAW,
IN NO EVENT SHALL EITHER PARTY, ITS DIRECTORS, OFFICERS, EMPLOYEES OR AFFILIATES
BE LIABLE HEREUNDER FOR SPECIAL, INCIDENTAL OR CONSEQUENTIAL DAMAGES OF ANY
KIND, INCLUDING ECONOMIC DAMAGE OR INJURY TO PROPERTY AND LOST PROFITS,
REGARDLESS OF WHETHER THE OTHER PARTY SHALL BE ADVISED, SHALL HAVE OTHER REASON
TO KNOW, OR IN FACT SHALL KNOW, OF THE POSSIBILITY OF THE
FOREGOING.
12.
Section
365(n) of the Bankruptcy Code. All rights and licenses granted by
Licensor under or pursuant to this Agreement are, for all purposes of Section
365(n) of Title 11 of the United States Code (“Title 11”), licenses of
rights to “intellectual property” as defined in Title
11. Licensor agrees that, in the event of the commencement of
bankruptcy proceedings by or against Licensor under Title 11, Licensee, as
licensee of such rights under this Agreement, shall retain and may fully
exercise all of its rights under this Agreement (including the licenses granted
hereunder) and all of its rights and elections under Title
11. Without limiting the generality of the foregoing, if this
Agreement is terminated under any applicable insolvency law, or Licensor or
an
administrator refuses to further perform this Agreement (or any of Licensor’s
obligations hereunder) under any applicable insolvency law, then Licensee may
elect to retain all of its license rights under this Agreement (including
without limitation the rights described in Section 2 herein) for the remainder of the
term of
this Agreement.
13.
Relationship
of Parties. Nothing herein shall be construed to create any
partnership, joint venture, agency or similar relationship, or to subject the
parties to any implied duties or obligations respecting the conduct of their
affairs which are not expressly stated herein. Neither party shall
have any right or authority to assume or create any obligation or
responsibility, either express or implied, on behalf of or in the name of the
other party, or to bind the other party in any matter or thing
whatsoever.
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14.
Entire
Agreement. Each party acknowledges that it has read this
Agreement, fully understands it, and agrees to be bound by its terms and further
agrees that it is the complete and exclusive statement of the agreement between
the parties, which supersedes and merges all prior proposals, understandings
and
all other agreements, oral and written between the parties relating to the
subject matter of this Agreement. This Agreement cannot be modified
or altered except by a written instrument duly executed by the Licensor and
the
Collateral Agent and consented to by (i) the holders of at least a majority
of
the aggregate outstanding principal balance of the Series A Notes and (ii)
the
holders of at least a majority of the aggregate outstanding principal balance
of
the Series B Notes and (iii) the holder(s) of at least a majority of the
aggregate outstanding principal balance of the Series C Notes. The
failure of either party to exercise in any respect any right provided for herein
shall not be deemed a waiver of any right hereunder.
15.
Severability. If
any provision of this Agreement shall be held to be invalid, illegal or
unenforceable, the validity, legality and enforceability of the remaining
provisions shall in no way be affected or impaired thereby. Further,
the provision that is held to be invalid, illegal or unenforceable shall remain
in effect as far as possible in accordance with the intention of the
parties.
16.
Governing
Law. This Agreement shall be governed by and construed in
accordance with the laws of the State of Delaware applicable to contracts made
and to be performed in the State of Delaware.
17.
Binding
Effect and Assignment. This Agreement shall be binding upon and
inure to the benefit of the parties hereto and their respective heirs,
executors, administrators, legal representatives, successors and permitted
assigns. The Licensee may assign this Agreement without restriction,
without the consent of the Licensor, and without any other restriction; and
such
assignee shall have all of the rights, privileges and benefits of this Agreement
without the need to take any further action.
18.
Notices. Any
notice contemplated herein or required or permitted to be given hereunder shall
be made in the manner set forth in either the Series A Purchase Agreement,
Series B Purchase Agreement or Series C Purchase Agreement, as applicable,
and
delivered, in the case of Licensee, at the addresses set forth on the signature
pages to the Purchase Agreements or Series C Note, or to such other address
as
any party hereto may have last specified by written notice to the other party
or
parties.
[Remainder
of Page Intentionally Left Blank.]
11
IN
WITNESS WHEREOF, the parties hereto have caused this Agreement to be executed
in
duplicate by their duly authorized representatives as an instrument under seal
as of the date first above written.
LICENSOR
MATRITECH,
INC.
By:
______________________________
Name:
Xxxxxxx X. Xxxxx
Title:
Chief Executive Officer
LICENSEE
SDS
CAPITAL GROUP SPC, LTD.,
as
Collateral Agent
By:
______________________________
Name:
Title:
12
Schedule
A
MATRITECH
PATENT RIGHTS
A.
U.S. Patent Rights
U.S.
Patent No. 5,989,826
U.S.
Patent No. 6,162,608
U.S.
Patent No. 6,410,247
U.S.
Patent No. 6,740,494
U.S.
Patent No. 5,965,376
U.S.
Patent No. 5,783,403
U.S.
Patent No. 5,882,876
U.S.
Patent No. 5,698,439
U.S.
Patent No. 5,686,562
U.S.
Patent No. 5,780,596
B.
Foreign Patent Rights
Australian
Patent No.
658,257
Canadian
Patent No.
2,122,473
European
Patent No. 642668 (validated in Austria, Belgium, France, Germany, Italy,
Ireland, Luxembourg, the Netherlands, Spain, and the United
Kingdom)
Japanese
Patent No. 3,190,042
Australian
Patent No. 681,855
European
Patent No. 0647270 (validated in Belgium, France, Germany, Italy, Spain,
and the
United Kingdom)
13
Schedule
B
MATRITECH
TRADEMARK RIGHTS
A. U.S.
Trademark Rights
NMP22® - US Trademark Registration No. 1,956,141
NMP22® - US Trademark Registration No. 1,963,117
BLADDERCHEK® - US Trademark Registration No. 2,811,238
B. Foreign
Trademark Rights
NMP22®
-
EU Trademark Registration No. 66,399
UNMP®
-
JP Trademark Registration No. 3,332,669
BLADDERCHEK™
- EU Trademark Application No. 2,648,772
NMP22
BLADDERCHEK™ - EU Trademark Application No. 4,240,636
14
Schedule
C
MIT
PATENT RIGHTS
Foreign
Patent Rights
Canadian
Patent No.
1,341,466
15
Schedule
D
MIT
PATENT LICENSE PROVISIONS
Article
V - Reports and Records
5.1
LICENSEE shall keep full, true and accurate books of account containing all
particulars that may be necessary for the purpose of showing the amounts payable
to M.I.T. hereunder. Said books of account shall be kept at LICENSEE's principal
place of business or the principal place of business of the appropriate Division
of LICENSEE to which this Agreement relates. Said books and the supporting
data
shall be open at all reasonable times for five (5) years following the end
of
the calendar year to which they pertain, to the inspection of M.I.T. or its
agents for the purpose of verifying LICENSEE's royalty statement or compliance
in other respects with this Agreement.
Article
VII - Termination
7.6
Upon termination of this Agreement for any reason during the exclusive period,
any sublicensee not then in default shall have the right to seek a license
from
M.I.T.
Article
XV – Miscellaneous Provisions
15.1
This Agreement
shall be construed, governed, interpreted and applied in accordance with the
laws of the Commonwealth of Massachusetts, U.S.A., except that questions
affecting the construction and effect of any patent shall be determined by
the
law of the country in which the patent was granted.
15.2
The
parties
hereto acknowledge that this Agreement sets forth the entire Agreement and
understanding of the parties hereto as to the subject matter hereof, and shall
not be subject to any change or modification except by the execution of a
written instrument subscribed to by the parties hereto.
15.3
The
provisions of
this Agreement are severable, and in the event that any provision of this
Agreement shall be determined to be invalid or unenforceable under any
controlling body of law, such invalidity or unenforceability shall not in any
way affect the validity or enforceability of the remaining provisions
hereof.
15.4
LICENSEE
agrees
to xxxx the Licensed Products sold in the United States with all applicable
United States patent numbers. All Licensed Products shipped to or sold in other
countries shall be marked in such a manner as to conform with the patent laws
and practice of the country of manufacture or sale.
15.5
The failure of
either party to assert a right hereunder or to insist upon compliance with
any
term or condition of this Agreement shall not constitute a waiver of that right
or excuse a similar subsequent failure to perform any such term or condition
by
the other party.
16
Schedule
E
NOTICE
OF LICENSE GRANT
WHEREAS,
Matritech, Inc. (“Licensor”), a Delaware corporation having a principal
place of business at 000 Xxxxxx Xxxxxx, Xxxxxx, XX 00000, is the owner of the
patent rights listed in Schedule A attached hereto, is the licensee of
the patent rights listed in Schedule B attached hereto (collectively,
“Patent Rights”) and is the owner of the trademark rights listed in
Schedule C attached hereto (“Trademark Rights”); and
WHEREAS,
Licensor has entered into a “Second Amended and Restated Contingent License
Agreement” (the “Agreement”) with SDS Capital Group SPC, Ltd., as
collateral agent for the holders of certain notes (collectively, the
“Licensee”) on or about August ____, 2007.
NOW,
THEREFORE, let it be known by those present that, in consideration of
the mutual promises and covenants set forth in the Agreement, and for other
good
and valuable consideration, the receipt and sufficiency of which is hereby
acknowledged, and subject to the terms and conditions of the Agreement, Licensor
has granted to Licensee, certain license rights under the Patent Rights and
Trademark Rights as set forth in the Agreement.
IN
WITNESS WHEREOF, the parties hereto have caused this document to be
duly executed on the dates first set forth above.
LICENSOR
MATRITECH,
INC.
By:
______________________________
Name:
Title:
LICENSEE
SDS
CAPITAL GROUP SPC, LTD.,
as
Collateral Agent
By:
______________________________
Name:
Title:
17
COPY
OF MIT LICENSE AGREEMENT
18
