SUBLICENSE AGREEMENT
THIS SUBLICENSE AGREEMENT, made as of this 24th day of June, 2000 by and
between MANHATTAN SCIENTIFICS, INC., a public Delaware corporation having
offices located at 000 Xxxxx Xxxxxx, Xxx Xxxx, Xxx Xxxx, XXX ("MHTX") and Novint
Technologies, Inc., a private New Mexico Corporation having offices located at
0000 Xxxxxxx Xxxxxx XX, Xxxxxxxxxxx, Xxx Xxxxxx 00000 ("NOVINT").
W I T N E S S E T H:
WHEREAS, MHTX is engaged in, among other things, research, development and
marketing of certain proprietary technologies, and products incorporating such
technologies; and
WHEREAS, Novint is engaged in the research and development of certain
proprietary technologies and products in the area of Haptics (as such term is
defined in the R&D Agreement); and
WHEREAS, pursuant to agreement dated April 11, 2000, Novint licensed the
Sandia Software and Sandia Patents under terms and conditions set forth in the
Sandia-Novint License;
WHEREAS, MHTX desires to acquire an exclusive worldwide sub-license to the
existing and developing Sandia Haptics Technologies in the Field of Use, subject
to this Sublicense Agreement; and
WHEREAS, pursuant to the R&D Agreement, MHTX is acquiring the Novint-MHTX
License which is an exclusive worldwide license to the existing and developing
Novint Technologies in the Field of Use;
NOW, THEREFORE, upon good and valuable consideration, the receipt and
legal sufficiency of which are hereby acknowledged, the parties hereto do hereby
agree as follows:
ARTICLE I: DEFINITIONS. As used in this Sublicense Agreement:
1.1 "Field of Use" shall have the meaning given such term in the R&D
Agreement with Sandia Haptics Technologies substituted for Novint Technologies.
1.2 "Net Revenue" shall have the meaning given such term in the R&D
Agreement with Sandia Haptics Technologies substituted for Novint Technologies.
1.3 "Sandia Patents" shall have the meaning given such term in the
Sandia-Novint License.
1.4 "Sandia Software" shall have the meaning given such term in the
Sandia-Novint License.
1.5 "Sandia Haptics Technologies" shall mean the Sandia Patents and Sandia
Software collectively and further shall have the meaning given such term in the
R&D Agreement.
1.6 "Sandia-Novint License" shall mean the License Agreement dated as of
April 11, 2000 between Sandia Corporation and Novint relating to the Sandia
Haptics Technologies, a photocopy of which is attached to this Sublicense
Agreement as Exhibit A.
1.7 "R&D Agreement" shall mean the Research and Development Agreement
dated as of June 23, 2000 between MHTX and Novint relating, in part, to the
Novint-MHTX License and the sublicense to be granted pursuant to this Sublicense
Agreement, a photocopy of which is attached to this Sublicense Agreement as
Exhibit B.
1.8 "Novint-MHTX License" shall mean the license granted to MHTX by Novint
of the Novint Technologies under the terms and conditions of the R&D Agreement.
1.9 "Novint Technologies" shall have the meaning given such term in the
R&D Agreement.
1.10 "Sublicense" shall mean the rights granted to MHTX by Novint pursuant
to the terms and conditions of this Sublicense Agreement.
1.11 "R&D Royalty" shall have the meaning given such term in the R&D
Agreement with Sandia Haptics Technology substituted for Novint Technologies.
1.12 "License Royalty" shall have the meaning given such term in the R&D
Agreement with Sandia Haptics Technology substituted for Novint Technologies.
ARTICLE 2: GRANT.
2.1 Within the Field of Use, and subject to the terms, conditions, and
restrictions of (i) this Sublicense Agreement, (ii) the Sandia-Novint License,
and (iii) the R& D Agreement, Novint hereby grants to MHTX an exclusive,
worldwide, perpetual sublicense in and to the Sandia Haptics Technologies for
use in conjunction with the Novint-MHTX License. This grant of sublicense
includes all of the existing worldwide intellectual property rights arising out
of or relating to the Sandia Haptics Technologies, including without limitation
patents, patent applications, trademarks, trademark applications, copyrights,
copyright applications, software, computer programs, source code, computer
hardware, know-how, trade secrets, discoveries, ideas, concepts, techniques,
designs, specifications, and the like.
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2.2 Subject to paragraph 1(f) of the R&D Agreement, the Sublicense
includes, without limitation, the right of MHTX to develop, upgrade,
manufacture, distribute and sell in all market segments, products incorporating
the Sandia Haptics Technologies within the Field of Use, as well as the right to
further develop, upgrade, and make derivative works based upon the Sandia
Haptics Technologies within the Field of Use.
2.3 The Sublicense includes, without limitation, the right of MHTX to
sublicense and to sub-sublicense all of its rights under this Agreement;
provided, however, that each such sub-licensee or sub-sub-licensee (together
"Sub-Licensees") agrees to be subject to and bound by all of the terms and
conditions of this Sublicense Agreement, the R&D Agreement, and of the
Sandia-Novint License. Novint shall be a third party beneficiary of any
agreement between MHTX and any sub-licensee or of any agreement between any
sub-licensee and sub-sub-licensee.
2.4 With respect to the Sandia Haptics Technologies, and within the Field
of Use, all discoveries, improvements, derivative works, inventions, patents,
copyrightable expressions, trademarks, computer programs, software, upgrades,
source code, computer hardware, research and development results, trade secrets
and the like, conceived or first reduced to practice or fixed, know-how, ideas,
concepts, techniques, designs, specifications, and the like, whether now known
or hereinafter created, conceived or otherwise developed by Novint and/or its
employees, contractors or affiliates in the performance of any research and
development, are included (without limitation) for all purposes in the
Sublicense.
2.5 MHTX shall not disclose source code or technical information about the
Sandia Haptics Technologies to any third party without prior written approval of
Novint. Nothing in the preceding sentence shall be construed to (i) require MHTX
to obtain approval from Novint prior to licensing the Sandia Haptics
Technologies to Sub-Licensees and providing such Sub-Licensees with copies of
Web Browser Applications and Content Creation Applications (as defined in the
R&D Agreement) for replication; or (ii) preclude MHTX from exercising its rights
under paragraph 1(f) of the R&D Agreement.
2.6 MHTX will use its reasonable best efforts to actively commercialize,
and bring to market, products and services incorporating the Sandia Haptics
Technologies within the Field of Use. Novint acknowledges that MHTX is a
technology incubator, that MHTX is and will continue to be actively involved in
the development and commercialization of several technologies other than the
Sandia Haptics Technologies, and that MHTX will not be devoting its exclusive
attention to the Sandia Haptics Technologies.
2.7 As required by the Sandia-Novint License, should Novint fail to pay
royalties due to Sandia Corporation upon monies Novint receives from MHTX, MHTX
hereby agrees to pay such royalties due directly to Sandia Corporation.
ARTICLE 3: ROYALTIES. In consideration for the Sublicense, MHTX shall pay Novint
royalties as and when specified in the R&D Agreement. For the sake of
clarification, it is understood and agreed that the only royalties payable by
MHTX are those specified in the R&D Agreement, and that this Agreement does not
require the payment of other royalties in addition those specified in the R&D
Agreement.
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ARTICLE 4: BREACH. If at any time (i) MHTX is obligated and fails to pay Novint
any portion of the R&D Royalty or the License Royalty that is due and payable,
or (ii) breaches this Sublicense Agreement, or (iii) breaches the R&D Agreement,
or (iv) the R&D Agreement is terminated by MHTX for any reason, or (v) if MHTX
fails to use its reasonable best efforts to actively commercialize the Sandia
Haptics Technologies within the Field of Use (each, a "MHTX Breach"), then in
any such case Novint shall serve written notice of same to MHTX. If, within 90
days of receipt of such notice, MHTX fails to (a) cure such MHTX Breach, or (b)
reasonably and in good faith, controvert such MHTX Breach in writing, then
MHTX's Sublicense shall become non-exclusive. If MHTX controverts any MHTX
Breach and it is finally determined that an MHTX Breach was committed, then
MHTX's License shall become non-exclusive if such breach is not cured within 30
days of such final determination.
ARTICLE 5: INDEMNIFICATION.
5.1 Novint hereby agrees to indemnify, defend and hold MHTX harmless from
and against any and all liability, damage, claims (whether actual or threatened)
or expense (including without limitation reasonable legal fees) arising out of
or relating to the breach by Novint of any representation, warranty, covenant,
or provision of this agreement.
5.2 MHTX hereby agrees to indemnify, defend and hold Novint harmless from
and against any and all liability, damage, claims (whether actual or threatened)
or expense (including without limitation reasonable legal fees) arising out of
or relating to the breach by MHTX of any representation, warranty, covenant, or
provision of this agreement.
ARTICLE 6: NOTICES. Any notice or other communication in connection with this
agreement shall be in writing and delivered by overnight courier and facsimile
addressed to a party hereto at the addresses provided below (or to such person
or address as such party shall specify in writing to the other parties hereto):
If to Novint:
Xx. Xxxxxx Xxxxxxxx
Novint Technologies, Inc.
0000 Xxxxxxx Xxxxxx, XX
Xxxxxxxxxxx, Xxx Xxxxxx 00000
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If to MHTX:
Xxxxxx Xxxxxx, CEO
Manhattan Scientifics, Inc.
000 Xxxxx Xxxxxx, Xxxxx 00X
Xxx Xxxx, Xxx Xxxx 00000
And
Xxxx Xxxxxx, COO
Manhattan Scientifics, Inc.
000 Xxxxxxxx Xxxxx
Xxx Xxxxxx, Xxx Xxxxxx 00000
With a Copy to
Xxxxx X. Xxxx, Esq.
Bach & Associates
Xxx Xxxxxxxxxxx Xxxxx, Xxxxx 000
Xxx Xxxx, Xxx Xxxx 00000
Each party may designate a change of address by notice to the other party,
given at least five (5) days before such change of address is to become
effective.
Any written notice shall be deemed to have been served forty-eight (48)
hours after the date it was transmitted in accordance with the foregoing
provisions.
ARTICLE 7: MISCELLANEOUS.
7.1 MODIFICATION. This agreement contains the entire understanding between
the parties with respect to the subject matter hereof, and any promises,
representations, warranties or guarantees not herein contained shall have no
force or effect unless in writing, signed by all parties. Neither this agreement
nor any portion or provision hereof may be changed, modified, amended, waived,
supplemented, discharged, cancelled or terminated orally or by any course of
dealing, or in any manner other than by an agreement in writing, signed by the
party to be charged.
7.2 GOVERNING LAW AND OTHER MATTERS. This agreement and the rights and
obligations of the parties hereunder shall be governed by and construed in
accordance with the laws of the State of New York. Novint and MHTX hereby (i)
waive any right to trial by jury in any legal proceeding related in any way to
this agreement; (ii) agree that venue of all disputes shall be in New York
County; and (iii) waive any objection and consent to personal jurisdiction,
subject matter jurisdiction and venue of and in the courts located in New York
County.
7.3 INVALIDITY. If any part of this agreement is contrary to, prohibited
by, or deemed invalid under applicable laws or regulations, such provision shall
be inapplicable and deemed omitted to the extent so contrary, prohibited or
invalid, but the remainder hereof shall not be invalidated thereby and shall be
given effect so far as possible.
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7.4 BENEFIT OF AGREEMENT. This agreement shall be binding upon and inure
to the benefit of the parties hereto and their respective successors and assigns
only and is not intended for the benefit of any other party.
7.5 CAPTIONS. The captions of the various sections and paragraphs of this
agreement have been inserted only for the purpose of convenience. Such captions
are not a part of this agreement and shall not be deemed in any manner to
modify, explain, enlarge or restrict any of the provisions of the agreement.
7.6 INCORPORATION BY REFERENCE. All of the "Whereas" clauses at the
beginning of this agreement, and all of the Schedules and Exhibits annexed
hereto, are hereby incorporated by reference and made a part hereof.
7.7 COUNTERPARTS; WHEN EFFECTIVE. This agreement may be executed in
counterparts and/or via facsimile. This agreement shall become effective and
enforceable upon MHTX's receipt of a fully and properly executed original
notarized copy hereof bearing complete and mutually agreed copies of all
schedules referenced herein.
7.8 PROHIBITION OF ASSIGNMENT. None of the parties may assign this
agreement to any third party without the prior written consent of all the
parties hereto. Notwithstanding the foregoing, nothing shall prohibit any party
from assigning its right to receive monies pursuant to this agreement to any
third party, provided that the third party agrees that its right to receive
monies is subject to the terms and conditions of this Agreement.
7.9 FURTHER ASSURANCES. Novint and MHTX agree to promptly execute any and
all documents and instruments necessary to effect, register, update and/or
document the Sublicense. Further, MHTX agrees that it will place, or will
require others with MHTX contracts, to place the trademark/service xxxx
"e-Touch" on each product manufactured or service provided incorporating Sandia
Haptics Technology.
7.10 NON-DISCLOSURE. None of the parties (or their respective officers,
directors and employees, as appropriate) shall disclose to third parties the
terms of this Agreement, or the fact that it has been entered into, prior to
August 1, 2000 or such other time to which the parties may agree.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to
be duly executed as of the day and year first above written.
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MANHATTAN SCIENTIFICS, INC.
By: _____________________________________
Xxxxxx Xxxxxx, Chairman, CEO and President (on his 63rd birthday)
NOVINT TECHNOLOGIES, INC.
By: _____________________________________
Xxxxxx Xxxxxxxx, President
NOTARIZATION OF PARTY SIGNATURES:
MHTX:
NOVINT:
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EXHIBIT A
SANDIA-NOVINT LICENSE
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EXHIBIT B
R&D AGREEMENT
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