Exhibit 10.28
CONFIDENTIAL TREATMENT REQUESTED BY ALIEN TECHNOLOGY CORP.
AMENDING AGREEMENT THIS AGREEMENT made and entered into at Richland, Washington, by and between Wave ID, Inc., a Delaware corporation, herein called " LICENSEE" or " WAVE ID" , and Battelle Memorial Institute, an Ohio corporation, herein called " BMI" , and entered into as of the day of and immediately prior to, and effective as of the day of and immediately upon the closing of the merger transaction contemplated by the " Agreement and Plan of Reorganization By And Among Alien Technology Corporation, Alien Acquisition Corporation, Wave ID, Inc. and Battelle Memorial Institute" a copy of which is attached as Exhibit A (the " Merger" ). The closing of the Merger will occur on October 19, 2001 thereby becoming the Effective Date of this Amending Agreement.
WITNESSETH THAT:
WHEREAS, BMI has certain rights in privately-developed patents and technical information relating to Radio Frequency communication technology (" RF Technology" ), and
WHEREAS, WAVE ID is a wholly owned subsidiary of BMI; and WHEREAS, WAVE ID had previously entered an exclusive license (the " LICENSE" ) with BMI to certain fields for such RF Technology effective July 9, 2001; and
WHEREAS, on the Effective Date WAVE ID will become a wholly-owned subsidiary of Alien Technology Corporation, and
Whereas the parties wish to amend the LICENSE as set forth below. NOW, THEREFORE in consideration of the mutual covenants herein contained and other good and valuable consideration, the receipt and sufficiency of which is hereby acknowledged by the parties to this Agreement, and intending to be legally bound hereby, the parties agree as follows:
1. DEFINITIONS
As used herein, the following terms shall have the meanings set forth below: A All terms used in this Amending Agreement if not specifically defined have the meaning set forth in the LICENSE. B SEMI-PASSIVE BACKSCATTER READERS means any reader that incorporates the range and bearing technology identified in the patent application Serial number 09/588998 titled " Distance /Ranging by Determination of RF Phase Delta" .
C NET SALES means gross sales less shipping charges and returns of products and services utilizing the PATENTS and/or TECHNICAL INFORMATION. *** Confidential treatment requested pursuant to a request for confidential treatment filed with the Securities and Exchange Commission. Omitted portions have been filed separately with the Commission.
CONFIDENTIAL TREATMENT REQUESTED BY ALIEN TECHNOLOGY CORP.
2. ROYALTY
In partial consideration of the Merger, WAVE ID hereby agrees to pay to BMI a royalty of [***] of NET SALES of SEMI-PASSIVE BACKSCATTER READERS and other apparatus, systems and protocols for semi-passive backscatter communications. Such royalties will be paid on a semi-annual basis within thirty (30) days of January 1 and July 1 each year. Prior to January 30 and July 30 each year, WAVE ID will send a detailed report of all sales of items covered by this paragraph along with the payment of any royalties due.
IN WITNESS WHEREOF the parties have caused this Amending Agreement to be executed by their duly authorized officers on the respective dates and at the respective places hereinafter set forth.
BATTELLE MEMORIAL INSTITUTE
WAVE ID, INC. By: /s/ Mark W. Kontos
By: PRINTED NAME: Mark W. Kontos PRINTED NAME: _______________________________ TITLE Sr. VP & Chief Financial Officer
TITLE DATE October 18, 2001
DATE
(B)sfr100401 Attachment
Exhibit A
*** Confidential treatment requested pursuant to a request for confidential treatment filed with the Securities and Exchange Commission. Omitted portions have been filed separately with the Commission.
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CONFIDENTIAL TREATMENT REQUESTED BY ALIEN TECHNOLOGY CORP.
LICENSE AGREEMENT BETWEEN
BATTELLE MEMORIAL INSTITUTE
AND
WAVE ID, INC.
June 2001
*** Confidential treatment requested pursuant to a request for confidential treatment filed with the Securities and Exchange Commission. Omitted portions have been filed separately with the Commission.
CONFIDENTIAL TREATMENT REQUESTED BY ALIEN TECHNOLOGY CORP.
LICENSE AGREEMENT THIS AGREEMENT made and entered into at Richland, Washington, and effective the date affixed hereto by the party last signing this Agreement, by and between Wave ID, Inc., having a principal place of business in Richland, Washington, herein called " LICENSEE" , and Battelle Memorial Institute, having a place of business in Richland, Washington, herein called " BMI" . WITNESSETH THAT:
WHEREAS, BMI has certain rights in privately-developed patents and technical information relating to Radio Frequency communication technology (" RF Technology" ); and
WHEREAS, LICENSEE recognizes that BMI owns inventions and intellectual property useful in the conduct of LICENSEE' S business; and
WHEREAS, LICENSEE recognizes that its anticipated business activity will encompass the practice of the RF Technology that requires a license under patents owned or controlled by BMI, and desires to build a business based at least in part on the RF Technology; and WHEREAS, LICENSEE wishes to acquire the right to practice and/or sublicense to others the right to practice the inventions of such patents and technical information.
NOW, THEREFORE in consideration of the mutual covenants herein contained and intending to be legally bound hereby, the parties agree as follows:
1. DEFINITIONS
As used herein, the following terms shall have the meanings set forth below:
A. INVENTION or INVENTIONS means patented and unpatented BMI proprietary RF Technology, including that which may be disclosed and claimed in the PATENTS, as set forth in Attachment 1.
B. PATENT or PATENTS means the patents and/or patent applications covering the INVENTIONS, patents to be issued pursuant thereto, and all divisions, continuations, reissues, substitutes, and extensions thereof as set forth in Attachment 1. In the event patent applications are filed upon, or issued on, INVENTIONS listed in Attachment 1, Attachment 1 shall be amended to include such patent applications and issued patents.
C.
TECHNICAL INFORMATION means the skillful synthesis of published or unpublished confidential and proprietary information disclosing the RF Technology and INVENTIONS belonging to BMI on or prior to the effective date of this Agreement, or which comes into the possession of LICENSEE during the term of this Agreement and which is generated as a consequence of LICENSEE' s access to TECHNICAL INFORMATION provided by BMI. It is within BMI' s sole discretion to include herein only that TECHNICAL INFORMATION which BMI determines to be necessary or useful for LICENSEE' s practice of the INVENTIONS and PATENTS. All unpatented information arising solely under BMI' s Management and Operations contract for the operation of the Pacific Northwest National
*** Confidential treatment requested pursuant to a request for confidential treatment filed with the Securities and Exchange Commission. Omitted portions have been filed separately with the Commission.
CONFIDENTIAL TREATMENT REQUESTED BY ALIEN TECHNOLOGY CORP. Agreement No.21012 (" B" )
June 29, 2001 Version 7
Laboratory may be in the public domain and if so, none of such information is included within this definition. D. LICENSED TERRITORY means any country in which BMI has pending or issued PATENTS or patent applications, and any country in which TECHNICAL INFORMATION and INVENTIONS are being used by LICENSEE. The parties agree that, as to the INVENTIONS, LICENSED TERRITORY shall include all countries worldwide until either (i) LICENSEE decides not to proceed with patent or trade secret protection for a particular INVENTION under the process set forth in Article 12 below, or (ii) until January 1, 2004, whichever is earlier. If this Agreement shall become solely a PATENT license, the LICENSED TERRITORY shall mean any country in which BMI has pending or issued PATENTS.
E. (i) LICENSED FIELD NO. 1 means, and is limited to, apparatus, systems, and protocols for passive backscatter communications. (ii) LICENSED FIELD NO. 2 means, and is limited to, apparatus, systems, and protocols for semi-passive backscatter communications. (iii) LICENSED FIELD NO. 3 means, and is limited to, apparatus, systems, and protocols for active communication applications. LICENSED FIELD NO. 1, LICENSED FIELD NO. 2, and LICENSED FIELD NO. 3 shall herein collectively be known as LICENSED FIELDS when no distinction is desired.
2. PATENT LICENSE
A. BMI hereby grants to LICENSEE, to the extent of LICENSED FIELD No. 1 and LICENSED FIELD NO. 2 and in the LICENSED TERRITORY, a royalty-free exclusive license to practice the INVENTIONS and PATENTS, and to make, have made, develop, use, import, export, and sell the products and services falling under the INVENTIONS and PATENTS, with the right to sublicense the same. B. BMI hereby grants to LICENSEE, to the extent of LICENSED FIELD No. 3 and the LICENSED TERRITORY, a royalty-free nonexclusive license to practice the INVENTIONS and PATENTS, and to make, have made, develop, use, import, export, and sell the products and services falling under the INVENTIONS and PATENTS, with the right to sublicense the same. C. BMI reserves for itself the right to (i) practice the INVENTIONS and PATENTS for research, development and demonstration purposes and (ii) license the INVENTIONS and PATENTS in fields and territories not exclusively licensed herein. For purposes of this Agreement, any production of backscatter radio frequency identification (RFID) systems requiring 1,000 or fewer RFID tags for a single customer shall be deemed to be produced for demonstration purposes only.
BUSINESS SENSITIVE *** Confidential treatment requested pursuant to a request for confidential treatment filed with the Securities and Exchange Commission. Omitted portions have been filed separately with the Commission.
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CONFIDENTIAL TREATMENT REQUESTED BY ALIEN TECHNOLOGY CORP. Agreement No.21012 (" B" )
June 29, 2001 Version 7
3. TECHNICAL INFORMATION LICENSE A. BMI hereby grants to LICENSEE, in LICENSED FIELD NO. 1 and LICENSED FIELD NO. 2 and in the LICENSED TERRITORY, a royalty-free exclusive license to practice the TECHNICAL INFORMATION and to make, have made, develop, use, import, export, and sell the products and services under such TECHNICAL INFORMATION, with the right to sublicense the same. B. BMI hereby grants to LICENSEE, in LICENSED FIELD NO. 3 and in the LICENSED TERRITORY, a royalty-free nonexclusive license to practice the TECHNICAL INFORMATION and to make, have made, develop, use, import, export, and sell the products and services under such TECHNICAL INFORMATION, with the right to sublicense the same.
C. LICENSEE shall not disclose to third parties any TECHNICAL INFORMATION furnished by BMI during the term of this Agreement, or any time thereafter, provided, however, that disclosure may be made of any such TECHNICAL INFORMATION at any time: (i) with the prior written consent of BMI, or (ii) to the extent necessary to LICENSEE' s sublicensees and purchasers of LICENSEE' s products or services, or (iii) after the same shall have entered the public domain through no fault of LICENSEE, LICENSEE' s sublicensees or purchasers of LICENSEE' s products or services. Disclosure of TECHNICAL INFORMATION shall be permitted without prior written consent of BMI to the extent required by statute, rule or regulation of a governing body during the course of LICENSEE' s normal business practices. LICENSEE shall inform BMI of any such disclosure. Any combination of TECHNICAL INFORMATION shall not be considered in the public domain merely because individual elements thereof are in the public domain. To the extent that any such TECHNICAL INFORMATION is disclosed under (ii) above, the agreements contained in this Article shall be made by LICENSEE under a confidentiality agreement to apply to and be made binding upon all such parties.
D. BMI reserves for itself the right to (i) practice the TECHNICAL INFORMATION for research, development and demonstration purposes; and (ii) license the TECHNICAL INFORMATION in fields and territories not exclusively licensed herein. For purposes of this Agreement, any production of backscatter radio frequency identification (RFID) systems requiring 1,000 or fewer RFID tags for a single customer shall be deemed to be produced for demonstration purposes only.
E. Failure to provide any TECHNICAL INFORMATION called for by this Agreement shall not entitle LICENSEE to recover damages or to terminate this Agreement; the remedy for failure to provide any such TECHNICAL INFORMATION shall be limited to an order requiring its disclosure.
F. The parties agree that they shall use reasonable efforts to protect from disclosure to third parties all TECHNICAL INFORMATION disclosed or generated under the terms of this Agreement and INVENTIONS which LICENSEE elects to protect as trade secrets under the provisions of Paragraph 11B.
BUSINESS SENSITIVE
*** Confidential treatment requested pursuant to a request for confidential treatment filed with the Securities and Exchange Commission. Omitted portions have been filed separately with the Commission.
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CONFIDENTIAL TREATMENT REQUESTED BY ALIEN TECHNOLOGY CORP. Agreement No.21012 (" B" )
June 29, 2001 Version 7
4. PRODUCTION OF RFID SYSTEMS BY BMI During the term of this Agreement, BMI retains the right to use the INVENTIONS, PATENTS, and TECHNICAL INFORMATION to manufacture or have manufactured RF tags for its U.S. Government clients for research, development, and demonstration purposes. BMI shall provide LICENSEE a first opportunity to manufacture RFID systems for BMI' s U.S. Government clients so long as LICENSEE is able to demonstrate its ability to provide the required RF tags at a cost, quantity, and quality and within the required timelines consistent to meet BMI' s U.S. Government clients' needs. (i) BMI shall owe [***] to LICENSEE for BMI' s manufacture of backscatter RFID systems incorporating these INVENTIONS and requiring [***] tags for any single U.S. Government client. (ii) For BMI' s manufacture of backscatter RFID systems incorporating these INVENTIONS and requiring [***] RFID tags, BMI shall pay to LICENSEE a royalty of [***] of the gross amounts actually received by BMI from such sales BMI shall report and pay such royalty to LICENSEE on March 31 of each year for sales made during the previous calendar year. BMI shall not manufacture backscatter RFID systems incorporating the INVENTIONS under a U.S. Government contract requiring the delivery of more than [***] RFID tags.
5. EQUITY ALLOCATION
The parties to this Agreement acknowledge that pursuant to the Contribution Agreement entered into between BMI and LICENSEE on May 1, 2001, and attached hereto as Attachment 2, referred to herein as the " Contribution Agreement" , BMI received six hundred sixty-six thousand six hundred sixty-six (666,666) shares of Common Stock of LICENSEE, $0.01 par value per share and three million three hundred ten thousand three hundred forty-five (3,310,345) shares of Series A Preferred Stock of LICENSEE, $0.01 par value per share, hereinafter collectively referred to as the " Shares" . The parties to this Agreement further acknowledge that of the total number of the Shares granted pursuant to the Contribution Agreement, one hundred thirty-three thousand three hundred thirty-three (133,333) shares of Common Stock and six hundred sixty-two thousand sixty-nine (662,069) shares of Series A Preferred Stock were received by BMI for the capital contribution of the INVENTIONS, PATENTS, and TECHNICAL INFORMATION which are the subject of this Agreement.
6. DILIGENCE
A. During the first two (2) years from the effective date of this Agreement, LICENSEE shall use reasonable commercial efforts to design, develop, manufacture, promote, market, and sell products or services embodying the INVENTIONS, PATENTS, and TECHNICAL INFORMATION in either LICENSED FIELD NO. 1 or LICENSED FIELD NO. 2. If at the end of two (2) years from the effective date of this Agreement BMI believes that LICENSEE has not been diligent in its efforts to commercialize the INVENTIONS, PATENTS, and TECHNICAL INFORMATION in either of the aforementioned LICENSED FIELDS during the two (2) year period, BMI may request the appointment of a third party evaluator (" the Evaluator" ) to conduct an evaluation under the procedures set forth in Attachment 3.
(i) If the Evaluator concludes that (a) LICENSEE has met its diligence under Paragraph 6A, or (b) that LICENSEE has not met its diligence under Paragraph 6A
BUSINESS SENSITIVE
*** Confidential treatment requested pursuant to a request for confidential treatment filed with the Securities and Exchange Commission. Omitted portions have been filed separately with the Commission.
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CONFIDENTIAL TREATMENT REQUESTED BY ALIEN TECHNOLOGY CORP. Agreement No.21012 (" B" )
June 29, 2001 Version 7
substantially due to external market conditions beyond the control of LICENSEE, then BMI shall not change the nature of the license granted hereunder.
(ii) If the Evaluator concludes that LICENSEE has not met its diligence under Paragraph 6A substantially due to LICENSEE' s failure to use reasonable commercial efforts, then BMI may, in its sole discretion, (a) narrow either or both LICENSED FIELD NO. 1 and LICENSED FIELD NO. 2, or (b) convert the exclusive licenses of Paragraphs 2A and 3A into nonexclusive licenses for either or both LICENSED FIELD NO. 1 and LICENSED FIELD NO. 2.
B. During the first three (3) years from the effective date of this Agreement, LICENSEE shall use reasonable commercial efforts to design, develop, manufacture, promote, market, and sell products or services embodying the INVENTIONS, PATENTS, and TECHNICAL INFORMATION in both LICENSED FIELD NO. 1 and LICENSED FIELD NO. 2. If at the end of three (3) years from the effective date of this Agreement, BMI believes that LICENSEE is not being diligent in its commercial efforts to design, develop, manufacture, promote, market, and sell products or services embodying the INVENTIONS, PATENTS, and TECHNICAL INFORMATION in both LICENSED FIELD NO. 1 and LICENSED FIELD NO. 2, then BMI may request the appointment of an Evaluator, if one has not been previously appointed, to conduct an evaluation under the procedures set forth in Attachment 3. (i) If the Evaluator concludes that (a) LICENSEE has met its diligence under Paragraph 6B, or (b) that LICENSEE has not met its diligence under Paragraph 6B substantially due to external market conditions beyond the control of LICENSEE, then BMI shall not change the nature of the license granted hereunder.
(ii) If the Evaluator concludes that LICENSEE has not met its diligence under Paragraph 6B as to LICENSED FIELD NO. 1 and/or LICENSED FIELD NO. 2 substantially due to LICENSEE' s failure to use reasonable commercial efforts, then BMI may, in its sole discretion, convert the exclusive licenses of either or both of Paragraphs 2A and 3A, if they have not already been converted under the provisions of Paragraph 6A(ii), into nonexclusive licenses to the extent that LICENSEE has not met its diligence under Paragraph 6B as to that particular LICENSED FIELD.
C. If at the end of five (5) years from the effective date of this Agreement, and at the end of each year thereafter, BMI believes that LICENSEE is not being diligent in its commercial efforts to design, develop, manufacture, promote, market, and sell products or services embodying the INVENTIONS, PATENTS and TECHNICAL INFORMATION in LICENSED FIELD NO. 1 and/or LICENSED FIELD NO. 2, then BMI may request the appointment of an Evaluator, if one has not been previously appointed, to conduct an evaluation under the procedures set forth in Attachment 3.
(i) If the Evaluator concludes that (a) LICENSEE has met its diligence under Paragraph 6C as to LICENSED FIELD NO. 1 and LICENSED FIELD NO. 2, or (b) that LICENSEE has not met its diligence under Paragraph 6C as to either or both LICENSED FIELD NO. 1 or LICENSED FIELD NO. 2 substantially due to external market conditions beyond the control of LICENSEE, then BMI shall not change the nature of the licenses granted hereunder as to that particular LICENSED FIELD.
BUSINESS SENSITIVE
*** Confidential treatment requested pursuant to a request for confidential treatment filed with the Securities and Exchange Commission. Omitted portions have been filed separately with the Commission.
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CONFIDENTIAL TREATMENT REQUESTED BY ALIEN TECHNOLOGY CORP. Agreement No.21012 (" B" )
June 29, 2001 Version 7
(ii) If the Evaluator concludes that LICENSEE has not met its diligence under Paragraph 6C as to LICENSED FIELD NO. 1 and/or LICENSED FIELD NO. 2 substantially due to LICENSEE' s failure to use reasonable commercial efforts, then BMI may, in its sole discretion, terminate the licenses of Paragraphs 2A and 3A for that particular LICENSED FIELD. D. BMI shall invoice LICENSEE for the expense of filing, prosecuting and maintaining PATENTS and patent applications incurred after the effective date of this Agreement that are licensed hereunder, as set forth in Article 12 below. LICENSEE shall remit payment for such invoices within sixty (60) days after receipt of such invoices. LICENSEE' s failure to reimburse BMI hereunder and as set forth in Article 12 shall entitle BMI, in its sole discretion, to terminate this License Agreement.
E. If this Agreement is terminated because of LICENSEE' s failure to meet any of the diligence requirements of this Article 6, such termination shall have no impact on BMI' s ownership of equity acquired under the Contribution Agreement.
7. SUBLICENSING A. LICENSEE shall have the right to sublicense in the LICENSED FIELDS and LICENSED TERRITORY. Sublicenses shall be licenses that are transferable only from LICENSEE to BMI. Unless specifically authorized by BMI in writing, sublicenses shall not relieve LICENSEE of any LICENSEE obligation herein, and specifically those of Article 6. BMI shall have the right to initially approve the form of sublicenses granted hereunder. Each sublicense shall contain all relevant LICENSEE obligations undertaken in this Agreement.
B. If this Agreement is terminated for any reason, except breach of contract by BMI, LICENSEE shall immediately assign all of its right, title, and interest to all sublicenses to BMI, including the right to receive income.
8. REPORTS A. For calendar years 2001-2006, not later than the last day of each January and July, LICENSEE shall furnish to BMI a written statement setting forth LICENSEE' s efforts in the preceding six (6) month period to (i) effect commercialization of the RF Technology, including information showing resources expended by LICENSEE in its efforts to design, manufacture, develop, promote, market and sell products and services embodying the INVENTIONS, PATENTS, and TECHNICAL INFORMATION and (ii) meet the diligence set forth in Article 6. In the January report, LICENSEE shall include its current five (5) year sales projections for products and services embodying the INVENTIONS, PATENTS, and TECHNICAL INFORMATION in each LICENSED FIELD.
B. For calendar years subsequent to 2006, LICENSEE shall make such reports annually, not later than the last day of January of the following year. BUSINESS SENSITIVE
*** Confidential treatment requested pursuant to a request for confidential treatment filed with the Securities and Exchange Commission. Omitted portions have been filed separately with the Commission.
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CONFIDENTIAL TREATMENT REQUESTED BY ALIEN TECHNOLOGY CORP. Agreement No.21012 (" B" )
June 29, 2001 Version 7
9. REPRESENTATIONS A. Nothing in this Agreement shall be deemed to be a representation or warranty by BMI of the validity of any of the PATENTS or the accuracy, safety or usefulness for any purpose, of any TECHNICAL INFORMATION, techniques, or practices at any time made available by BMI. Neither BMI nor any affiliated company of BMI shall have any liability whatsoever to LICENSEE or any other person for or on account of any injury, loss, or damage, of any kind or nature sustained by, or any damage assessed or asserted against, or any other liability incurred by or imposed upon LICENSEE or any other person, arising out of or in connection with or resulting from (i) the production, use or sale of any apparatus or product, or the practice of the PATENTS; (ii) the use of any TECHNICAL INFORMATION, techniques, or practices disclosed by BMI; or (iii) any advertising or other promotional activities with respect to any of the foregoing, and LICENSEE shall hold BMI and any affiliated company of BMI harmless in the event BMI, or any affiliated company of BMI, is held liable. Further, LICENSEE agrees to assume the defense of any suit brought against BMI or any affiliated company of BMI resulting from any action of LICENSEE undertaken under this License Agreement.
B. LICENSEE understands and acknowledges that the subject matter of this Agreement has not yet been commercially demonstrated, and agrees to accept the risks incident to designing, manufacturing and operating a nascent technology.
C. BMI is unaware of any claims that have been, are, or could reasonably be asserted against BMI by third parties with respect to patent infringement or any other type of liability relevant to licensing of the PATENTS, INVENTIONS, and TECHNICAL INFORMATION, which have not been disclosed to LICENSEE as of the date of this Agreement.
10. TERMINATION
A. The PATENT License of Article 2 shall end upon the expiration of the last to expire of the PATENTS included herein, or upon the abandonment of the last to be abandoned of any patent applications if no PATENTS have issued, or a final adjudication of invalidity of all PATENTS included herein, whichever is later, unless the PATENT License is sooner terminated. If none of the patent applications of Attachment 1 issue as patents, then the PATENT License of Article 2 shall terminate as to such INVENTIONS, and the TECHNICAL INFORMATION license of Article 3 shall continue in effect.
B. The TECHNICAL INFORMATION license of Article 3 shall continue for so long as LICENSEE continues to make, have made, develop, use, import, export, and sell the INVENTIONS using the TECHNICAL INFORMATION.
C. LICENSEE may terminate either or both of the PATENT or TECHNICAL INFORMATION licenses at any time upon sixty (60) days' written notice in advance to BMI, but LICENSEE shall thereafter discontinue the practice and use of either or both of the licensed PATENTS and TECHNICAL INFORMATION, depending upon the termination election.
BUSINESS SENSITIVE
*** Confidential treatment requested pursuant to a request for confidential treatment filed with the Securities and Exchange Commission. Omitted portions have been filed separately with the Commission.
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CONFIDENTIAL TREATMENT REQUESTED BY ALIEN TECHNOLOGY CORP. Agreement No.21012 (" B" )
June 29, 2001 Version 7
D. Except as provided below in Paragraph 10E, if either party shall be in default of any obligation hereunder, the other party may terminate this Agreement by giving written Notice of Termination by Certified or Registered Mail, facsimile, or overnight express mail to the party at fault, specifying the basis for termination. If within sixty (60) days after the receipt of such Notice of Termination, the party in default shall remedy the condition forming the basis for termination, such Notice of Termination shall cease to be operative, and this Agreement shall continue in full force. E. LICENSEE shall inform BMI of its intention to file a voluntary petition in bankruptcy or of another' s intention to file an involuntary petition in bankruptcy to be received at least seventy-five (75) days prior to filing such a petition. LICENSEE' s filing without conforming to this requirement shall be deemed a material, pre-petition incurable breach not subject to the notice requirement of Paragraph 10D, and BMI shall be deemed to have terminated this Agreement seventy-five (75) days prior to filing such petition.
F. Termination of this Agreement shall not extinguish any rights or obligations accrued hereunder at the time of termination; and obligations undertaken independent of the licenses granted under Articles 2 and 3 shall survive termination to the extent necessary to permit their complete fulfillment or discharge.
11. LITIGATION AND ARBITRATION
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