Technology Transfer Agreement - Audrey Contente and Ultrafem Inc.
RESTATED TECHNOLOGY TRANSFER AGREEMENT
--------------------------------------
This Restated Technology Transfer Agreement (the "Agreement") is
executed as of this 17th day of May, 1993 by and between Audrey Contente an
individual ("Contente") and Ultrafem, Inc., a Delaware Corporation formerly
known as Ultrafem, Ltd. ("Ultrafem"), with reference to the following facts:
R E C I T A L S
---------------
A. Effective on or about July 17, 1990 Contente executed an Assignment
Agreement wherein she granted, conveyed and sold to the Company the goods and
chattels each of which related to feminine hygiene products relating to or
evolving from the patent, represented by U.S. Patent Application No. 446553,
held by Contente and described therein (the "Assets"). On or about August 9,
1990 Contente executed a Patent Application Assignment wherein she assigned,
sold and transferred her entire right, title and interest in that U.S. Patent
Application No. 446553 (the "Patent"). In exchange for transferring the
Assets to the Company, Contente received shares of the Company's $0.001 par
value common stock.
B. The Company and Contente desire to restate the terms of the
Assignment and Patent Assignment Agreements and the terms of the royalty
provisions relating thereto.
WHEREFORE, the parties have agreed as follows:
<PAGE>
A G R E E M E N T
-----------------
1. The Company hereby acknowledges and reaffirms Contente's ownership
of all of the shares of the Company's common stock (the "Shares"), presently
standing in her name, as having been issued in exchange for Contente's
transfer of technology represented by the Assets and the Patent.
2. Contente hereby acknowledges and reaffirms that she has sold,
transferred and granted, by execution of the Assignment Agreement and Patent
Application Assignment, the technology represented by and derived from the
Assets and Patent to the Company and that Contente has relinquished all
ownership interest in the technology represented by the Assets and Patent.
3. The parties hereto, and each of them, reaffirm that Contente (or her
successors in interest) shall be paid a royalty in an amount equal to $0.005
(one-half cent) for each unit of Devices resulting and/or derived from the
technology represented by the Assets and Patent whether sold by the Company,
its successor, assignee, subsidiary, supplier, licensee or any other third
party, and it is expressly understood that the Royalty due pursuant to this
paragraph shall survive the death of Contente and the termination of
Contente's employment with the Company, for any reason whatsoever (the
"Royalty"). For the purposes hereof, "Devices" means any and all devices or
other apparatus utilizing the Assets, Patents and Technology for any purpose
-2-
<PAGE>
whatsoever, including without limitation, the "UltraFem Feminine Protection
Cup"; and "Technology" means the technology, ideas, inventions, patents and
other Transferred Assets (as defined in the Assignment Agreement) together
with any and all other technology, ideas or inventions (whether patented or
unpatented) conceived or created by Contente and relating to the Assets and
Patent and any and all other technology, ideas, inventions or patents that
are derivatives or modifications of or improvements or developments to any
Technology relating to the Assets and Patent.
4. The Company shall pay the Royalty to Contente on a quarterly basis
within thirty days after the end of each calendar quarter. Each quarterly
royalty payment shall be accompanied by a statement in detail reasonably
satisfactory to Contente setting forth the number of Devices sold during such
calendar quarter and a calculation of the Royalty due Contente hereunder.
5. The Company shall keep complete and accurate books of account and
records covering all sales of Devices. Contente and her duly authorized
representatives shall have the right, during normal business hours and upon
reasonable advance notice and without interrupting the Company's business, at
any time during Contente's employment with the Company or thereafter, to
examine and copy such books of account and records and all other materials as
may be reasonably necessary or appropriate to verify the information
contained in the royalty statements submitted to
-3-
<PAGE>
Contente pursuant hereto. In the case of any deviation of Royalties versus
reported Royalties, the Company shall pay any Royalties due within ten days,
with interest thereon from the date such Royalties were due through and
including the date of payment at and changing with the rate announced from
time to time by Citibank N.A. at its principal office in New York City as its
"prime rate," plus 2%, and, if such deviation exceeds 5%, Contente pay the
reasonable costs of such examination. All books of account and records
relating to a particular calendar year shall be kept available for inspection
as provided herein for at least two years after the end of such year.
6. To the extent a conflict exists between the terms set forth in this
Agreement and the Assignment Agreement, Patent Application Assignment and/or
other agreements between the parties arising prior hereto, the terms set
forth in this Agreement shall control.
7. This Agreement shall be deemed to be effective as of July 17, 1990,
the date of execution of the Assignment Agreement.
8. This Agreement shall be binding on and shall inure to the benefit of
the parties and their respective heirs, successors and assigns.
-4-
<PAGE>
9. In any legal proceeding arising under this Agreement, the prevailing
party shall be entitled to recover all costs including reasonable attorneys'
fees.
IN WITNESS WHEREOF the parties have executed the Agreement as of the
date first written above.
The "Company" "Contente"
Ultrafem, Inc.,
a Delaware corporation
By: /s/ ARTHUR UNGER /s/ AUDREY CONTENTE
---------------- -------------------
ARTHUR UNGER AUDREY CONTENTE
Its: President
-5-