Exhibit 10(c)
MODIFICATION NO. 2
NASA and NextGen Systems, Incorporated entered into Exclusive License Agreement
No. DE-234 on August 4, 1997. By this Agreement, NASA and NextGen Systems,
Incorporated modify Exclusive License Agreement DE-234 as follows:
Article II, Sections 2.7 and 2.20 are deleted.
Article II, Section 2.9 is replaced by:
2.9 "FIELD OF USE" means all fields.
Article IV, Section 4.1 is replaced by:
4.1 This license shall commence as of the date this Agreement is
executed by the last party to do so and shall continue until the last
LICENSED PATENT and COPYRIGHT expire, unless revoked or terminated in
accordance with other provisions of this Agreement. Upon expiration of
the last LICENSED PATENT, the license of the COPYRIGHT and the PROGRAM,
all provisions pertaining to the COPYRIGHT and the PROGRAM, and all
provisions pertaining to the COPYRIGHT and the PROGRAM license
contained in this Agreement, shall remain in force. The license of the
LICENSED INVENTION shall terminate as of the date of such expiration.
Except for those provisions specified within this Agreement to survive
termination, all provisions contained within this Agreement pertaining
specifically to the license by NASA of or the obligations of NEXTGEN
SYSTEMS with respect to, including royalty payments under Article X,
the LICENSED INVENTION shall no longer be in effect from the date of
such expiration. NASA shall notify NEXTGEN SYSTEMS in writing of such
expiration. All outstanding royalties accrued as of the date of such
expiration are due within thirty (30) days of such notice.
Article IV, Section 4.2 is replaced by:
4.2 The license of the LICENSED INVENTION shall terminate if all of the
claims of all LICENSED PATENT APPLICATION are ultimately rejected and
if the last remaining claim of all LICENSED PATENT, and any
continuation, divisional, reissue or Patent and Trademark Office in a
reexamination proceeding, and NASA, in its discretion, has exhausted
all available appeals Except for those provisions specified in this
Agreement to survive termination, all provisions contained in the
Agreement pertaining specifically to the license by NASA of or the
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obligations of NEXTGEN SYSTEMS with respect to, including royalty
payments under Article X, the LICENSED INVENTION shall no longer be in
effect from the date of termination. NASA shall notify NEXTGEN SYSTEMS
in writing of such occurrence. All outstanding royalties accrued at the
date of such termination are due within thirty (30) days of such
notice. The license of the COPYRIGHT and the PROGRAM, all provisions
pertaining to the COPYRIGHT and the PROGRAM, and all provisions
pertaining to the COPYRIGHT and the PROGRAM license contained in the
Agreement, shall remain in force.
Article IV, Section 4.3 is replaced by:
4.3 The license of the COPYRIGHT shall terminate if registration of the
COPYRIGHT is found to be invalid by a competent court of by the United
States Copyright Office, and NASA, in its discretion, has exhausted all
available appeals. Except for those provisions specified in the
Agreement to survive termination, all provisions contained in this
Agreement pertaining specifically to the license by NASA of or the
obligations on NEXTGEN SYSTEMS with respect to, including consideration
under Article XI, the COPYRIGHT shall no longer be in effect from the
date of such termination. NASA shall notify NEXTGEN SYSTEMS in writing
of such occurrence. All outstanding consideration accrued at the date
of such termination is due within thirty (30) days of such notice. The
license of the LICENSED INVENTION, and all provisions pertaining to the
LICENSED INVENTION and such LICENSED INVENTION license contained in
this Agreement, shall remain in force.
Article X, the following section 10.12 is added:
10.12 In consideration of the extended exclusivity granted via
Modification NO. 2 to this Agreement, NEXTGEN SYSTEMS agrees to pay
NASA a royalty of FIVE THOUSAND DOLLARS ($5,000.00) payable upon
execution of Modification No. 2. In addition, NEXTGEN SYSTEMS agrees to
pay NASA a royalty of TEN THOUSAND DOLLARS ($10,000.00) upon issuance
of a first LICENSED PATENT. These royalties are nonrefundable and will
not be credited against any royalties which, become due and payable
under this Agreement.
Article X, Section 10.8 is replaced by:
10.8 NEXTGEN SYSTEMS agrees that it shall annually pay to NASA, the TEN
PERCENT (10%) royalty of Section 10.2 above for any ROYALTY-BASE
PRODUCTS of any and all SUBLICENSEE of NEXTGEN SYSTEMS. In addition to
the running royalties of Section 7.2, NEXTGEN SYSTEMS agrees to pay
NASA, FIFTY PERCENT (50%) of any consideration, including but not
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limited to sublicense issue fees, received from SUBLICENSEE in
consideration for any sublicense granted for the LICENSED INVENTION.
For nonmonetary consideration, including but not limited to equity in
the SUBLICENSEE, such FIFTY PERCENT (50%) shall be calculated based on
the present market value of such nonmonetary consideration.
Article XXVIII, Section 28.1 is modified to reflect the licensee's (wholly-owned
subsidiary's) new address as:
Mr. David B. Hunter
President/CEO
NextGen Systems, Inc.
591 Skippack Pike
Suite 300
Blue Bell, PA 19422
In witness thereof, each party has caused the Agreement to be executed by its
duly authorized representative:
National Aeronautics and NextGen Systems, Inc.
Space Administration
By: /s/ Edward A. Frankle By: David B. Hunter
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Edward A. Frankle David B. Hunter
NASA General Counsel President/CEO
Date: 9/28/99 Date: 9/14/99
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