EXECUTION COPY
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Exhibit 2.5
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Right of First Offer to Exclusive Commercial License
This Right of First Offer to Exclusive Commercial License (the
"Agreement"), dated as of January 23, 2001, is made by and between MathSoft,
Inc., a Massachusetts corporation ("MathSoft" or the "Licensor"), and MathSoft
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Engineering & Education, Inc., a Delaware corporation (herein, "MEE" or the
"Licensee").
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WHEREAS, contemporaneously with the execution hereof, MathSoft Corporate
Holdings, Inc. ("Buyer") is acquiring from MathSoft, pursuant to a Stock
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Purchase Agreement among MathSoft, Buyer and MEE dated as of the date hereof,
all of the outstanding capital stock of MEE; and
WHEREAS, MathSoft obtained a contract (the "Phase I Contract") with the
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United States Department of Commerce ("Commerce") to fund the development of a
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proposal (the "Phase II Proposal") to study the technical feasibility of
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"Structural Analysis and Conversion of Mathematical Expressions" (the
"Project");
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WHEREAS, MathSoft will submit the Phase II Proposal to Commerce no later
than February 28, 2001 and Commerce may agree to fund the Phase II Proposal on
such terms and conditions as Commerce and MathSoft agree (the "Phase II
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Contract");
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WHEREAS, MathSoft is willing to continue work on the Project pursuant to
the terms of the Phase II Contract;
WHEREAS, MathSoft is willing to license any resulting Technology (as
defined below) of the Project to MEE on the terms and subject to the conditions
imposed by Commerce, the Phase II Contract, applicable laws and those herein
contained;
NOW THEREFORE, in consideration of the mutual undertakings contained herein
and for other good and valuable consideration, receipt and sufficiency of which
is hereby acknowledged, MathSoft and MEE hereby agree and covenant as follows:
1. Right of First Offer of Exclusive Commercial License. To the extent
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permitted by the Phase II Contract, Commerce and applicable law and subject to
the terms and conditions of this Agreement, MathSoft hereby grants to MEE a
right of first offer to an exclusive (except against MathSoft), worldwide right
and commercial license (the "Exclusive Commercial License"), to commercially
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develop and exploit the Technology of the Project as it pertains to conversion
of equations from electronic media to MATHML (the "Right of First Offer").
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2. Phase II Contract; Information. MathSoft shall use commercially
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reasonable efforts to obtain the Phase II Contract on terms consistent with the
Right of First Offer as set forth herein. In addition, MathSoft shall keep MEE
informed as to the progress and status of the Project, and provide copies of any
proposed reports to Commerce to MEE for MEE's review and comment prior to
submission to Commerce.
3. Notification of Completion of Project and Exercise of Right of First
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Offer. Within thirty (30) days of the latter of a) completion of the Phase II
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Contract and b) submission of the final technology of the Project to Commerce
(the "Technology"), MathSoft shall notify MEE of the completion of the Phase II
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Contract, if permitted by the Phase II Contract, Commerce and applicable law,
and shall submit the Technology to MEE. MEE shall have thirty (30) days in
which to notify MathSoft in writing that it has exercised the Right of First
Offer.
4. Negotiation of Exclusive Commercial License. (a) Upon notification by
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MEE to MathSoft of MEE's exercise of its Right of First Offer, the parties shall
enter into good faith negotiations regarding the terms of the Exclusive
Commercial License, which shall be on MathSoft's customary commercial terms at
the time of the negotiations.
(b) The parties shall have sixty (60) days (the "Negotiation Period")
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in which to execute the Exclusive Commercial License on terms and conditions
satisfactory to both parties (MathSoft's satisfaction being subject to its
obligations under subparagraph (a) above). If the parties are unable to execute
the Exclusive Commercial License at the end of the Negotiation Period, MEE
hereby acknowledges and agrees that MathSoft has the right to begin negotiating
a license agreement with third parties on terms and conditions satisfactory to
MathSoft.
5. Retained Rights of MathSoft and Commerce. MEE acknowledges that
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MathSoft is and will at all times in the future be the owner of any and all
intellectual property contained in the Technology and nothing contained in this
Agreement or the Exclusive Commercial License shall be deemed to ▇▇▇▇▇ ▇▇▇ any
rights with respect to the Technology except as specifically set forth in the
Exclusive Commercial License. The rights of MathSoft and MEE are and shall be
subject to the rights of Commerce under applicable laws or as set forth in the
Phase I Contract and the Phase II Contract.
6. Confidentiality. MEE shall exercise all necessary precautions to
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safeguard the secrecy of the Technology and to prevent the unauthorized
disclosure thereof, or of any party or parts thereof, to anyone other than those
of MEE's officers and employees to whom it is necessary to disclose the same for
MEE's use.
7. Non-Terminability. The Right of First Offer granted by Section 1
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hereof shall not be terminable by MathSoft or any successor, assignee or party
claiming through MathSoft except for a material breach of the terms hereof or as
set forth in Section 19 hereof.
8. Notices. All notices, requests, consents and other communications
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hereunder shall be in writing, shall be addressed to the receiving party's
address set forth below or to such other address as a party may designate by
notice hereunder, and shall be either (i) delivered by hand, (ii) made by telex,
telecopy or facsimile transmission, (iii) sent by overnight courier, or (iv)
sent by registered mail, return receipt requested, postage prepaid.
If to MEE: MathSoft Engineering & Education, Inc.
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Attn: ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇, Chief Executive Officer
Phone: (▇▇▇) ▇▇▇-▇▇▇▇
Fax: (▇▇▇) ▇▇▇-▇▇▇▇
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If to MathSoft: MathSoft, Inc.
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▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attn: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇, Chief Executive Officer
Phone: (▇▇▇) ▇▇▇-▇▇▇▇
Fax: (▇▇▇) ▇▇▇-▇▇▇▇
All notices, requests, consents and other communications hereunder shall be
deemed to have been given upon actual receipt, or if earlier, either (i) if by
hand, at the time of the delivery thereof to the receiving party at the address
of such party set forth above, (ii) if made by telex, telecopy or facsimile
transmission, at the time that receipt thereof has been acknowledged by
electronic confirmation or otherwise, (iii) if sent by overnight courier, on the
next business day following the day such notice is delivered to the courier
service, or (iv) if sent by registered mail, on the fifth business day following
the day such mailing is made. In the event of a change in the address of the
place of business of either party while this Agreement is in effect, such party
shall promptly notify the other party in writing, and following receipt of the
change of address notification, all written notices required under this
Agreement shall be directed to the new address.
9. Entire Agreement. This Agreement embodies the entire agreement and
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understanding between the parties hereto with respect to the subject matter
hereof and supersedes all prior oral or written agreements and understandings
relating to the subject matter hereof. No statement, representation, warranty,
covenant or agreement of any kind not expressly set forth in this Agreement
shall affect, or be used to interpret, change or restrict, the express terms and
provisions of this Agreement.
10. Modification and Amendments. The terms and provisions of this
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Agreement may be modified or amended only by written agreement executed by all
parties hereto.
11. Waivers and Consents. The terms and provision of this Agreement
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may be waived, or consent for the departure therefrom granted, only by written
document executed by the party entitled to the benefits of such terms or
provisions. No such waiver or consent shall be deemed to be or shall constitute
a waiver or consent with respect to any other terms or provisions of this
Agreement, whether or no similar. Each such waiver or consent shall be
effective only in the specific instance and for the purpose for which it was
given, and shall not constitute a continuing waiver or consent.
12. Assignment. The rights and obligations under this Agreement may
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not be assigned by either party hereto without the prior written consent of the
other party, which shall not be unreasonably withheld or delayed, provided that
either party may assign its rights and obligations hereunder without such
consent to any subsidiary or parent or to any person who acquires all or
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substantially all of the assets of such party whether by merger, asset purchase,
or otherwise; provided, however that neither party may assign its rights to a
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competitor of the other party without such other party's prior written consent.
Effective upon any such assignment, the assigning party shall be released from
all obligations and liabilities henceforth accruing after the date of such
assignment.
13. Benefit. All statements, representations, warranties, covenants
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and agreements in this Agreement shall be binding upon, and shall inure to the
benefit of, the parties hereto and the respective successors and permitted
assigns of each party hereto. Nothing in this Agreement shall be construed to
create any rights or obligations except among the parties hereto, and no person
or entity shall be regarded as a third-party beneficiary of this Agreement.
14. Governing Law. This Agreement and the rights and obligations of
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the parties hereunder shall be construed in accordance with and governed by the
law of the Commonwealth of Massachusetts, without giving effect to the conflict
of law principles thereof.
15. Severability. In the event that any court of competent
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jurisdiction shall determine that any provision, or any portion thereof,
contained in this Agreement shall be unreasonable or unenforceable in any
respect, then such provision shall be deemed limited to the extent that such
court deems it reasonable and enforceable, and as so limited shall remain in
full force and effect. In the event that such court shall deem any such
provision, or portion thereof, wholly unenforceable, the remaining provisions of
this Agreement shall nevertheless remain in full force and effect, provided,
that if without such invalid provisions, the fundamental mutual objectives of
the parties cannot be achieved, then either party may terminate this Agreement
without penalty by written notice to the other.
16. Headings and Captions. The headings and captions of the various
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subdivisions of this Agreement are for convenience of reference only and shall
in no way modify, or affect the meaning or construction of any of the terms or
provisions hereof.
17. No Waiver of Rights, Powers and Remedies. No failure or delay by a
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party hereto in exercising any right, power or remedy under this Agreement, and
no course of dealing between the parties hereto, shall operate as a waiver of
any such right, power or remedy of the party. No single or partial exercise of
any right, power or remedy under this Agreement by a party hereto, nor any
abandonment or discontinuance of steps to enforce any such right, power or
remedy, shall preclude such party from any other or further exercise thereof or
the exercise of any other right, power or remedy hereunder. The election of any
remedy by a party hereto shall not constitute a waiver of the right of such
party to pursue other available remedies. No notice to or demand on a party not
expressly required under this Agreement shall entitle the party receiving such
notice or demand to any other or further notice or demand in similar or other
circumstances or constitute a waiver of the rights of the party giving such
notice or demand to any other or further action in any circumstances without
such notice or demand.
18. Counterparts. This Agreement may be executed in one or more
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counterparts, and by different parties hereto on separate counterparts, each of
which shall be deemed an original, but all of which together shall constitute
one and the same document.
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19. Termination. In the event that (i) Commerce shall not fund the
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Phase II contract on terms and conditions substantially as set forth in the
Phase II Proposal; (ii) despite MathSoft's commercially reasonable efforts under
Section 2 above, the Phase II Contract does not permit the license of the
Technology to MEE; (iii) MEE shall decline to exercise its Right of First Offer;
(iv) MEE or MathSoft shall make a general assignment for the benefit of
creditors; (v) MEE or MathSoft shall file or have filed on its behalf a
voluntary or involuntary petition in bankruptcy which is not dismissed within
ninety (90) days; MathSoft shall then have the option of terminating this
Agreement by written notice thereof submitted to MEE. If terminated pursuant to
(i), (ii) or (iii) of this Section 19, such termination shall automatically
become effective three (3) business days after mailing by MathSoft of such
notice. If terminated pursuant to (iv) or (v) of this Section 19, such
termination shall automatically become effective thirty (30) calendar days
following mailing by MathSoft of such notice.
20. Improvements. MathSoft shall own all right, title and interest in
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any intellectual property rights that may accrue from any discovery,
development, or are otherwise acquired (the "Improvements") in the course of
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research or development of the Project, subject to this Right of First Offer.
21. Issuance of Phase II Contract. Upon the acceptance by Commerce of
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the Phase II Proposal and the issuance of the Phase II Contract, MathSoft shall
notify MEE within ten (10) business days and provide MEE a copy of the Phase II
Contract.
22. No Liability if No License Permitted. If, despite MathSoft's
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commercially reasonable efforts under Section 2 above, the Phase II Contract,
applicable law or Commerce does not permit MathSoft to license the Technology to
MEE, MathSoft shall not be liable to MEE for any costs, expenses or damages in
connection with its inability to license the Technology and this Agreement shall
terminate in accordance with the provisions of Section 19.
23. Return of Technology Upon Termination of Agreement if No Exclusive
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Commercial License Executed. If the Agreement is terminated due to a material
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breach by MEE or pursuant to Section 19, MEE shall return the Technology to
MathSoft within five (5) business days of the termination, subject to applicable
laws.
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IN WITNESS WHEREOF, MathSoft and MEE have executed this Agreement under
seal as of the day and year first written above.
MATHSOFT, INC.
By: /s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇
Name: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇
Title: President and Chief Executive Officer
MATHSOFT ENGINEERING & EDUCATION, INC.
By: /s/ ▇▇▇▇▇▇ ▇. ▇'▇▇▇▇▇
Name: ▇▇▇▇▇▇ ▇. ▇'▇▇▇▇▇
Title: Vice President
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