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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
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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) "
Abbott License Agreement " shall mean the license agreement
entered into by and between Abbott 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.
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(d) "
Field " shall mean the field of bladder cancer detection in
humans.
(e) "
License Agreements " shall mean the MIT License Agreement
and the Abbott 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
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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
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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 mark 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
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and/or the MIT Patent Rights and the existence of
this Agreement, the terms and conditions of this Agreement, and
Schedule F t
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