SECOND AMENDMENT TO LICENSE AGREEMENT
This Second Amendment ("Amendment"), effective as of March __, 1999, is
made to a certain License Agreement by and between:
MICRODROP GMBH, Muehlenweg 143, D-22844 Norderstedt, Germany
(hereinafter referred to as "Microdrop")
and
PACKARD INSTRUMENT COMPANY, INC., a State of Delaware corporation
having its principal office at 800 Research Parkway, Meriden, Connecticut
06450, USA (hereinafter referred to as "Packard").
W I T N E S S E T H:
WHEREAS, Microdrop and Packard entered into a License Agreement as of May
26, 1996, which was amended by the First Amendment to the Agreement effective as
of October 23, 1997 (collectively, the "Agreement");
WHEREAS, Microdrop and Packard desire to amend the terms of the
Agreement as set forth in this Amendment;
NOW THEREFORE, in consideration of the premises and of the mutual
agreements and covenants herein contained, the parties hereto agree as follows:
1. Article 5.5(d) is deleted in its entirety and the following is
substituted therefor:
(d) [* * *] upon the sale by Packard of the 100th Licensed
Packard Product.
2. Article 5.5(e) is deleted in its entirety and the following is
substituted therefor:
(e) [* * *] upon the sale by Packard of the 250th Licensed
Packard Product.
[* * *] Indicates information omitted pursuant to a request for confidential
treatment and filed separately with the Securities and Exchange Commission
pursuant to Rule 24b-2 under the Securities Exchange Act of 1934,
as amended.
3. The following new Article 5.7 and Article 5.8 are hereby added to the
Agreement immediately following Article 5.6:
5.7 Microdrop shall use commercially reasonable efforts to achieve,
in accordance with the schedule set forth in Appendix 1 to this
Agreement, the objectives of the research and development program as
described in Appendix 1 to this Agreement (the "Development
Program"). Packard shall compensate Microdrop for the Development
Program in the amounts set forth below, and in accordance with the
completion of the following milestones:
a. [* * *] upon execution and delivery of the Second
Amendment to the Agreement.
b. [* * *] upon delivery of the Phase 1 Deliverables (as
defined in Appendix 1) in form and substance reasonably
acceptable to Packard.
c. [* * *] upon delivery of the Phase 2 Deliverables (as
defined in Appendix 1) in form and substance reasonably
acceptable to Packard.
d. [* * *] upon delivery of the Phase 3 Deliverables (as
defined in Appendix 1) in form and substance reasonably
acceptable to Packard.
The Development Program will be carried out primarily at
Microdrop's facility. Microdrop grants to Packard permission at any
time to send, at Packard's expense and after prior verbal agreement
from Microdrop on the dates, a reasonable number of engineers for a
reasonable time, to Microdrop's facility to observe and participate
in the Development Program. Microdrop agrees to make the necessary
resources available to accomplish the transfer to Packard of
Microdrop Technology and Technical Information derived from or
relating to the Development Program. At Packard's request and
expense, Microdrop agrees to send a reasonable number of engineers
for a reasonable time to Packard's production facility in Downers
Grove, Illinois, U.S.A. or elsewhere to facilitate such transfer of
Microdrop Technology and Technical Information. No milestone
described above shall be deemed completed until Microdrop has
transferred to
[* * *] Indicates information omitted pursuant to a request for confidential
treatment and filed separately with the Securities and Exchange Commission
pursuant to Rule 24b-2 under the Securities Exchange Act of 1934,
as amended.
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Packard all relevant Microdrop Technology and Technical
Information relating to the deliverables for a specified
milestone, in a form and substance reasonably satisfactory to
Packard.
5.8 In addition to the payment of running royalties as set forth in
Article 5.1(c), Packard shall pay to Microdrop [* * *] of Net
Sales by Packard of Licensed Packard Products for all sales of
Licensed Packard Products realized on or prior to [* * *]. For
purposes of determining the minimum royalty payments described in
Article 5.4, payments made by Packard pursuant to this Article 5.8
shall not be included as part of the calculation of "aggregate
royalties accrued under Article 5.1."
4. The following new Article 3.6 is hereby added to the Agreement
immediately following Article 3.5:
3.6 Notwithstanding anything to the contrary in this Agreement, until
November 30, 1999 (the "Microdrop Sales Termination Date"), Microdrop
reserves the right to sell Microdrop Products equipped with dispensing
heads containing up to four piezo tips for use within the Field of Use
directly to customers that are end users of the Microdrop Products;
provided that Microdrop shall, at least twenty (20) days prior to making
any such sale, notify Packard in writing of the intended sale and seek
Packard's prior written consent, which consent shall not be withheld
unreasonably. After the Microdrop Sales Termination Date, Microdrop shall
refer to Packard all potential sales of Microdrop Products, and all
inquiries from customers or potential customers for Microdrop Products,
worldwide within the Field of Use as provided in Article 3.5 above;
provided, however, Microdrop shall be permitted to (i) fulfill all orders
from customers accepted by Microdrop on or prior to the Microdrop Sales
Termination Date in accordance with this Article 3.6 and (ii) deliver to
any end user of a Microdrop Product sold in accordance with this Article
3.6 such spare parts as are reasonably necessary to the continued
operation by such end user of the Microdrop Product, so long as such
Microdrop Product continues to be equipped only with dispensing heads
containing four or fewer piezo tips.
[* * *] Indicates information omitted pursuant to a request for confidential
treatment and filed separately with the Securities and Exchange Commission
pursuant to Rule 24b-2 under the Securities Exchange Act of 1934,
as amended.
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If Packard fails to realize the sale of its [* * *] Licensed Packard
Product on or prior to November 30, 1999, the Microdrop Sales
Termination Date shall be extended until November 30, 2000. If Packard
fails to realize the sale of its [* * *] Licensed Packard Product on or
prior to November 30, 2000, the Microdrop Sales Termination Date shall
be extended until such time as Packard realizes the sale of its [* * *]
Licensed Packard Product, and Microdrop shall no longer be required to
provide notice of any sale or request the prior consent of Packard to
consummate any sale until the occurrence of the Microdrop Sales
Termination Date.
IN WITNESS WHEREOF, the undersigned parties, acting through their duly
authorized representatives, have executed this Amendment in multiple
counterparts.
MICRODROP, GmbH
By: /s/ Wilhelm Mayer
-------------------------------
Name: Wilhelm Mayer
-----------------------------
Title: Managing Director
----------------------------
Date: 10/5/99
-----------------------------
PACKARD INSTRUMENT COMPANY, INC.
By: /s/ Richard T. McKernan
-------------------------------
Name: Richard T. McKernan
-----------------------------
Title: President
----------------------------
Date: 4/14/1999
-----------------------------
[* * *] Indicates information omitted pursuant to a request for confidential
treatment and filed separately with the Securities and Exchange Commission
pursuant to Rule 24b-2 under the Securities Exchange Act of 1934,
as amended.
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