Exhibit 10.5

 

FIRST AMENDMENT TO THE
 NONEXCLUSIVE PATENT LICENSE AGREEMENT 
 WITH VOXELJET

 

This First Amendment is entered into this 31stth day of March, 2011 (the “Effective Date”) and amends the License Agreement dated August 16, 2004, as amended to date, by and between the Z CORPORATION, a corporation duly organized under the laws of the Commonwealth of Massachusetts and having its principal office at 32 Second Avenue, Burlington, Massachusetts 01803, U.S.A. (hereinafter referred to as “Z Corp”) and Voxeljet Technology GmbH (“Voxeljet”), a corporation registered in Amtsgericht Augsburg (#HRB 17081), with a principal place of business at Paul-Lenze-Strasse 1 86316 Friedberg, Germany. (hereinafter referred to as “LICENSEE”).

 

WHEREAS, Z CORP and LICENSEE wish to amend the License Agreement dated August 16, 2004 (“the Agreement”);

 

NOW, THEREFORE, in consideration of the premises and the mutual covenants contained herein, the parties agree as follows:

 

1.                                      Amend and restate Recitals:

 

WHEREAS, Z Corp. is willing to grant to Voxeljet a non-exclusive license to the Z Corp Patents (referred to as “Licensed Patents”) subject to specified conditions, and Voxeljet is willing to accept the grant of the license subject to such conditions; and

 

2.                                      Amend and restate Section 1.  Definitions as follows:

 

“Field of Use 1” shall mean the manufacture, sale and operation of three dimensional printing equipment solely for the fabrication of plastic parts having a polymer matrix phase that is prepared utilizing a powder that contains at least 90% synthetic organic polymeric powder in a process that does not require post-processing other than liquid infiltration of printed parts.

 

“Field of Use 2” shall mean the manufacture, sale and operation of three dimensional printing equipment solely for the fabrication of molds for metal casting or direct manufacture of parts utilizing at least 90% inorganic powder in a process that does not require post-processing other than oven baking parts or liquid infiltration.  It is understood that license to practice Field of Use 2 is limited to the extent allowable through license of Z Corporation patents and not through sub-license of MIT patents still in force.

 

Restrictions:

 

Z Corp is willing to grant to Voxeljet a non-exclusive license to the Z Corp Patents (referred to as “Licensed Patents”) with the following restrictions:

 

·                  Materials developed and manufactured by Voxeljet that utilize patents referred to in Appendix A as Materials 19 shall be limited to use with Voxeljet equipment only.

 

·                  The manufacture, sale and operation of three dimensional printing equipment shall only be developed and used in one-color (monochrome) configuration.

 











 

·                  The manufacture, sale and operation of three dimensional printing equipment using a powder having a calcium sulfate hemihydrate content of no more than 30%.

 

3.                                      Amend and restate Section 14.1 with the following:

 

	
If   to Z Corp:
    	
 
    	
Z   Corporation
    
	
 
    	
 
    	
32   Second Avenue
    
	
 
    	
 
    	
Burlington,   MA 01803
    
	
 
    	
 
    	
Attention:   CEO
    
	
 
    	
 
    	
Tel:   (781) 852-5005
    
	
 
    	
 
    	
Fax:   (781) 852-5100
    


 

4.                                      Amend and restate Appendix A:

 

ORIGINAL:

 

(1) US 5,902,441
 “Method of Three-Dimensional Printing”

 

2) US 6,007,318
 “Method and Apparatus for Prototyping a Three-Dimensional Object”

 

3) US 6,416,850
 “Three-Dimensional Printing Materials System”

 

4) WO 2001/34371 (Z Corp. Reference: “Materials 8”)
 “Material System and Methods of Three-Dimensional Printing”

 

5) WO 2001/78969 (Z Corp. Reference: “Materials 10”)
 “Compositions for Three-Dimensional Printing of Solid Objects”
 US 2001/0050031
 “Compositions for Three-Dimensional Printing of Solid Objects”

 

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NEW:
    	
 
    	
 
    	
 
    	
 
    	
 
    	
 
    
	
 
    	
 
    	
 
    	
 
    	
 
    	
 
    	
 
    
	
 
    	
 
    	
 
    	
 
    	
 
    	
 
    	
Z Corp Reference
    
	
08/707,693
    	
 
    	
US5,902,441
    	
 
    	
HK1019866
   JP3607300
   GB0925169
   IT0925169
   FRO925169
   EP0925169
   DE69916305
    	
 
    	
Materials   1
    
	
60/197,526
    	
 
    	
US   7550518 (B2)
    	
 
    	
US   2005197431 (A1)
    	
 
    	
Materials   10
    
	
60/197,118
    	
 
    	
W00178969   (A2)
    	
 
    	
W00178969   (A3)
   JP2003531220 (T)
   EP1272334 (A2)
   CA2405539 (A1)
    	
 
    	
Materials   10
    
	
60/164,000
    	
 
    	
EP1415792   (A2)
    	
 
    	
CA2388046   (A1);
   DE60008778 (T2);
   EP1226019 (B1),
   EP1415792 (A3);
   HK1048617 (A1);
   JP2003515465 (T);
   US2006208388 (A1);
   W00134371 (A2)
    	
 
    	
Materials   8
    
	
60/472,221
    	
 
    	
US   7569273 (B2)
    	
 
    	
W02004113042   (A2)
   W02004113042 (A3)
   KR20060022243 (A)
   JP2007502713 (T)
   CN1812878 (A)
   CN100553949 (C)
   CA2526100 (Al)
   AU2004249662 (A1)
   EP1628823 (A2)
    	
 
    	
Materials   12
    
	
10/255,139
    	
 
    	
US2004056378   (A1)
    	
 
    	
US7087109   (B2)
   US2006230984 (A1)
   W02004028787 (A1)
   KR20050061478 (A)
   JP2006504813 (T)
   EP1542858 (A1)
   CA2500012 (A1)
   AU2003275083 (A1)
    	
 
    	
Materials   11
    
	
60/873,730
    	
 
    	
US   2008138515 (A1); 7,905,951
    	
 
    	
W02008073297   (A2)
   W02008073297 (A3)
   KR20090090372 (A)
   JP2010512255 (T)
   EP2089215 (A2)
   CN101568422 (A)
    	
 
    	
Materials   19
    


 

3











 

	
08/771,009
    	
 
    	
US   6,007,318
    	
 
    	
US   7,686,995; EP 1621311
   (B1); EP 0949993 (B1)
    	
 
    	
Machine   1
    
	
60/808,721
    	
 
    	
 
    	
 
    	
W02007139938   (A2)
   W02007139938 (A3)
   US2008060330 (A1)
   US2008047628 (A1)
   US2008006334 (A1)
   KR20090014395 (A)
   JP2009538226 (T)
   EP2024168 (A2)
   CN101495294 (A)
    	
 
    	
Machine   10
    


 

Except as specifically modified or amended hereby, this First Amendment along with the Agreement shall remain in full force and effect and, as modified or amended, is hereby ratified, confirmed, and approved.  No provision of this Amendment or the Agreement may be modified or amended except expressly in a writing signed by both parties nor shall any terms be waived except expressly in a writing signed by the party charged therewith.  This Amendment as well as the Agreement shall be governed in accordance with the laws of the Commonwealth of Massachusetts.

 

IN WITNESS WHEREOF, the parties have duly executed this Amendment the day and year set forth below.

 

	
Z CORPORATION
    	
VOXELJET
    
	
 
    	
 
    
	
By
    	
/s/   John Kawola
    	
 
    	
By
    	
/s/   Ingo Ederer
    
	
 
    	
 
    	
 
    	
 
    	
 
    
	
Name
    	
John   Kawola
    	
 
    	
Name
    	
Ingo   Ederer
    
	
 
    	
 
    	
 
    	
 
    	
 
    
	
Title
    	
CEO
    	
 
    	
Title
    	
CEO
    
	
 
    	
 
    	
 
    	
 
    	
 
    
	
Date
    	
3/31/11
    	
 
    	
Date
    	
31   March 2011
    


 

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