AMENDED AND RESTATED CONTINGENT LICENSE AGREEMENT
EXHIBIT
4.9
AMENDED
AND RESTATED CONTINGENT LICENSE AGREEMENT
This
AMENDED AND RESTATED CONTINGENT LICENSE AGREEMENT (this “Agreement”)
is
made as of the 22nd day of January, 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 and the Series B 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 (as heretofore amended, the “Existing
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 (as heretofore amended, the “Existing
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,
concurrently herewith, the Licensor 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
B Purchase Agreement”
and,
together with the Series A Purchase Agreement, the “Purchase
Agreements”),
pursuant to which the Licensor is issuing its Series B 15% Secured Convertible
Promissory Notes to such Holders (the “Series
B Note Holders”
and,
together with the Series A Note Holders, the “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”
and,
together with the Series A Notes, the “Notes”);
WHEREAS,
concurrently herewith, the holders of a majority of outstanding principal
balance of the Series A Notes have consented to the issuance of the Series
B
Notes and directed
1
the
Collateral Agent to amend and restate the Existing Security Agreement and
Existing 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 security interest and license granted
under such agreements;
WHEREAS,
in connection with the Series B 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 B Note Holders to purchase the Series B Notes
pursuant to the Series B Purchase Agreement, 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:
1. Definitions.
(a) “▇▇▇▇▇▇
License Agreement”
shall
mean the license agreement entered into by and between ▇▇▇▇▇▇ Laboratories
and
Matritech, Inc., effective April 1, 2004.
(b) “Event
of Default”
shall
mean an Event of Default described in Sections A(i), (vi) and (vii) of Article
(VI) of the Series A Notes or as described in Sections A(i), (vi) and (vii)
of
Article (VI) of the Series B 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.
2
(d) “Field”
shall
mean the field of bladder cancer detection in humans.
(e) “License
Agreements”
shall
mean the MIT License Agreement and the ▇▇▇▇▇▇ 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.
(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
3
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 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
4
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.
(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 ▇▇▇▇ 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
5
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 4
shall
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.
(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
Schedules A,
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
6
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 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.
7
(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
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
8
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 ▇▇▇▇▇▇
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 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
9
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.
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 both
(i)
the holders of at least a majority of the outstanding principal balance on
the
Series A Notes and (ii) the holders of at least a majority of the outstanding
principal balance on the Series B 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.
10
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 or
the
Series B 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 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:
/s/
▇▇▇▇▇▇▇ ▇.
▇▇▇▇▇
Name: ▇▇▇▇▇▇▇
▇. ▇▇▇▇▇
Title: Chief
Executive Officer
LICENSEE
SDS
CAPITAL GROUP SPC, LTD.,
as
Collateral Agent
By:
/s/
▇▇▇▇▇
▇▇▇▇▇
Name:
▇▇▇▇▇ ▇▇▇▇▇
Title:
Director
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 ▇▇▇▇ 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 ▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇,
▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇, 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 an “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 January 22, 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