after the Effective Date); provided, however, that “Confidential Information” shall notinclude information that (i) was in the receiving party’s possession or was known to itprior to its receipt from the disclosing party; (ii) is or becomes public knowledge withoutthe fault of the receiving party; (iii) is or becomes rightfully available on anunrestricted basis to the receiving party from a source other than a party owing anobligation of confidentiality to the disclosing party; or (iv) becomes available on anunrestricted basis to a third party from the disclosing party or from someone acting underits control.(g) “AMS Field of Use” means the field of urology, gynecology, colorectal disorders, sexualdysfunction and related pelvic disorders.(h) “Governmental Authority” means any foreign, domestic, federal, territorial, state orlocal governmental authority, quasi-governmental authority, instrumentality, court,government or self-regulatory organization, commission, tribunal or organization or anyregulatory, administrative or other agency, or any political or other subdivision,department or branch of any of the foregoing.(i) “Intellectual Property Rights Licensed to AMS” means the following: (i) the Bio ControlPatent Rights; (ii) the Urology Business Information; and (iii) all copyrights, tradesecrets, know-how and other proprietary rights related thereto.(j) “Intellectual Property Rights Licensed to Bio Control” means the following: (i) the AMSPatent Rights and (ii) all copyrights, trade secrets, know-how and other proprietary rightsrelated thereto.(k) “Licensed Intellectual Property Rights” means the Intellectual Property Rights Licensedto Bio Control or the Intellectual Property Rights Licensed to AMS, as the case may be.(l) “Licensed Products” means a Licensed Product of Bio Control or a Licensed Product ofAMS, as the case may be.(m) “Licensed Products of AMS” means any product or device that is developed, designed,modified, improved, manufactured, used, imported, sold or offered for sale by AMS in the AMSField of Use that (x) in the absence of this Agreement, would infringe one or more Valid andEnforceable Claims of the Bio Control Patent Rights or (y) would infringe one or more Validand Enforceable Claims of the patent rights included in the Transferred IntellectualProperty (as defined in the Asset Purchase Agreement).(n) “Licensed Products of Bio Control” means any product or device that is developed,designed, modified, improved, manufactured, used, imported, sold or offered for sale by BioControl, any licensee of or transferee from Bio Control outside the AMS Field of Use that,in the absence of this Agreement, would infringe one or more Valid and Enforceable Claims ofthe AMS Patent Rights.(o) “Licensee” means Bio Control or AMS in its capacity as licensee under Section 2(a) orSection 2(b), as the case may be.(p) “Licensor” means Bio Control or AMS in its capacity as licensor under Section 2(a) orSection 2(b), as the case may be.(q) “Net Sales” means AMS’, or, in the case of any sublicensee, the sublicensee’s properlyrecognized consolidated aggregate net sales of Licensed Product during the royalty periodprovided in Section 3 hereof, calculated in accordance with generally accepted accountingprinciples in the U.S.A. consistently applied by AMS in accordance with its audited revenuerecognition policies, reduced by the allowance for bad debts recorded related to therevenue. Whenever a Licensed Product is sold as part of a bundled product, the “Net Sales”for the Licensed Product resulting from such sale of such bundled product shall be theproduct of (X) the net revenues reported by AMS or its Affiliate or a sublicensee, whicheveris applicable, for such bundled product multiplied by (Y) a fraction, the numerator of whichis the per unit average selling price of such Licensed Product and the denominator of whichis the sum of the aggregate per unit average selling prices of all products, including theLicensed Product, included in such bundled product.(r) “Patent Rights” means the Bio Control Patent Rights or the AMS Patent Rights, as thecase may be.(s) “Person” means an individual, corporation, partnership, limited liability company,association, trust, estate or other entity or organization, including a GovernmentalAuthority.
 

 
(t) “Software” means all the series of instructions and algorithms which operate theminiaturoTM Bio Control Device and physician programmer.(u) “Source Code” means the series of statements written in human-readable computerprogramming language which, when complied into machine-readable format, constitute theSoftware.(v) “Urology Business Information” means the following business information and relatedrecords as in existence on the date hereof to the extent used in or applicable to theUrology Business:(i) documentation related to the design, validation, and production of theminiaturoTM current model of Bio Control Device, physician programmer, stimulationlead, system accessories, test fixtures and manufacturing fixtures;(ii) documentation related to the assembly of Bio Control Devices, including: (A)process flow charts, process standard operating procedures (SOPs), (B) copies of allequipment drawings and manuals, (C) calibration records for all equipment and otherfixed assets; (D) sterilization cycle validation reports, (E) drawing of moldsneeded to manufacture parts for the miniaturoTM, (F) floor plan and equipment listfor a facility capable of performing the manufacturing steps of the miniaturoTMcurrently performed by Bio Control, and (G) floor plan, equipment list and softwarelist for a facility capable of performing the development process currentlyperformed by Bio Control;(iii) lists of vendors and suppliers, including addresses and telephone numbers, ifpossible, and a breakdown of purchases by vendor or supplier;(iv) details of expected cost of goods sold and other manufacturing costs for BioControl’s current model of Bio Control Device;(v) draft marketing material (posters, procedure video, etc.);(vi) lists of third party software used by Bio Control;(vii) all of Bio Control’s preclinical and clinical data, including animal studies,and human clinical data, descriptions of protocols, adverse event reports, studyreports and database copies (in printed or electronic format), as well as a list ofinvestigational sites and principal investigators;(viii) all regulatory documents, including submissions, registrations and licenses;(ix) all Software, including Source Code; and(x) all invention records created by internal and external personnel not otherwiseincluded in the Purchased Assets, as defined in the Asset Purchase Agreement.(w) “Valid and Enforceable Claim” with respect to any patent claim means an issued claimthat has not expired or been rendered invalid or unenforceable by a court of competentjurisdiction or other Governmental Authority from which no appeal can be taken.(y) “Patents”means the AMS Patents or the Bio Control Patents, as the case may be.2. License; Information Access.(a) Bio Control License Grant. Bio Control hereby grants to AMS and its Affiliates anexclusive (excluding inter alia BioControl), worldwide, irrevocable (except as provided inSection 4 below) fully transferable and assignable, right and license (including the rightto grant sublicenses), under the Intellectual Property Rights Licensed to AMS, solely withinthe AMS Field of Use, to develop, design, modify, improve, make, have made, use, import,offer to sell and sell Licensed Products of AMS. AMS hereby acknowledges that Bio Controlis the sole and exclusive owner of all right, title and interest in and to the IntellectualProperty Rights Licensed to AMS. Except as set forth in this Agreement, AMS shall not haveany right, title or interest in or to the Intellectual Property Rights Licensed to AMS.AMS’ license to the Source Code and Software includes the right to use, modify, sublicense,and create derivative works of the Source Code and Software.(b) AMS License Grant. AMS hereby grants to Bio Control and its Affiliates an exclusive(excluding
 

 
inter alia AMS), worldwide, irrevocable, fully transferable and assignable, royalty-free,right and license (including the right to grant sublicenses), under the IntellectualProperty Rights Licensed to Bio Control, solely outside the AMS Field of Use, to develop,design, modify, improve, make, have made, use, import, offer to sell and sell LicensedProducts of Bio Control. Bio Control hereby acknowledges that AMS is the sole and exclusiveowner of all right, title and interest in and to the Intellectual Property Rights Licensedto Bio Control. Except as set forth in this Agreement, Bio Control shall not have anyright, title or interest in or to the Intellectual Property Rights Licensed to Bio Control.(c) Sublicenses and Cross-licenses. Both Licensees may grant sublicenses and cross-licensesunder their respective Licensed Intellectual Property Rights and under each Licensee’s namewithout the prior written consent of, or payment of any consideration to, the respectiveLicensor. In addition, Licensee may grant sublicenses and cross-licenses under the LicensedIntellectual Property Rights to develop, design, modify, improve, make, have made, use,import, offer to sell and sell the Licensed Products without the prior written consent ofLicensor.(d) Copying and Access; Destruction. Commencing upon execution and delivery of thisAgreement and as requested from time to time thereafter, Bio Control will provide AMS withlists and other reasonable details of the data comprising the Urology Business Information,and will provide AMS with access to and, if requested, true and correct copies (at BioControl’s expense) of such Urology Business Information in such format(s) as AMS mayrequest. Bio Control will provide AMS with at least ninety (90) days prior notice of itsintention to destroy or otherwise dispose of any Urology Business Information, during whichtime AMS may request and Bio Control will provide AMS with access to, copies of, orpossession of original versions of, any such information.(e) Patent Assignment. Concurrently with the execution of this Agreement, Bio Control willassign to AMS the AMS Patents listed on Exhibit B-3 by an assignment in the form attached asExhibit C. The AMS Patents listed in B-3 do not include the AMS Patents listed in ExhibitsB-1 and B-2, which Bio Control has already assigned to AMS prior to the date hereof.Beginning as of the date hereof, AMS will bear all costs associated with the AMS Patents,including costs of prosecution, issuance fees, and maintenance and annuity fees.3. Royalties; Audits; Expenses.(a) Percentage Royalty. Commencing upon April 26, 2006, and for a period of ten (10) yearsthereafter or, if earlier, upon the expiration or termination of this Agreement, AMS shallpay to Bio Control, or its designee, a royalty equal to the percentage of Net Sales setforth below during each of AMS’ fiscal periods set forth below (subject to appropriateadjustment for any subsequent change in AMS’ fiscal year     Fiscal Period Royalty Rate2006 through 2009            6%2010 through 2012  5%2013 through 2016  4%(b) Sublicense Royalty. In addition to the percentage royalty set forth in Section 3(a)above, AMS shall pay or cause its Affiliate to pay royalties to Bio Control based upon NetSales of any Licensed Product by sublicensees at the same rate set forth in Section 3(a)above; provided, however, no royalties shall be paid in connection with any sublicensegranted by AMS pursuant to any exercise of its authority under Section 6(c) in a case ofinfringement of a patent or other intellectual property right owned by a third party byreason of the use of the Patent Rights in the manufacture, use or sale of the LicensedProducts..(c) Payments. During the royalty period, AMS shall deliver to Bio Control, no later thanforty-five (45) days following the end of each fiscal quarter of AMS, a royalty payment forthe preceding fiscal quarter, accompanied by a reasonably detailed report, setting forth theroyalty calculations for the quarter to which the payment relates.(d) Books and Records. AMS agrees to keep substantially complete and accurate books ofaccount and records covering all transactions relating to this Agreement. All such books ofaccount and records shall be
 

 
kept available for at least two (2) years after the termination or expiration of thisAgreement.(e) Audit Rights. Bio Control may cause an audit to be made of those books and records ofAMS as necessary to review and audit any statements delivered pursuant to Section 3(c)hereof. Such audit shall be conducted only by an independent certified accountantselected by Bio Control and reasonably acceptable to AMS, after prior written notice to AMSand shall be conducted during regular business hours at AMS’ offices and in such a manner soas not to interfere with AMS’ normal business activities. AMS shall permit such accountant,during normal business hours, to have reasonable access to, and to examine and make copiesof, those books and records of AMS as are necessary to review and audit the calculation inquestion. Neither Bio Control nor such accountant will have the right to review or auditany other books and records of AMS. In no event shall more than one audit be conducted, norshall the records supporting any statements be audited more than once for the same purpose.In the event any such audit reveals any discrepancy less than five percent (5%) of theapplicable Net Sales for any consecutive twelve (12) months, Bio Control shall pay for thereasonable third party costs and expenses of such audit. In the event any such auditreveals any discrepancy greater than or equal to five percent (5%) of the applicable NetSales for any consecutive twelve (12) months, AMS shall pay for the reasonable third partycosts and expenses of such audit.(f) Expenses. Unless otherwise specifically set forth herein, all fees, costs and expensesincurred by a Licensee in developing, manufacturing, promoting, marketing and selling itsLicensed Products or otherwise incurred under this Agreement shall be borne solely by suchLicensee.4. Term and Termination.(a) Term. The term of this Agreement shall commence on the Effective Date and shall remainin force, unless terminated earlier in accordance with Section 4(b), until the last toexpire of the Patent Rights.(b) Termination. Notwithstanding the provisions of Section 4(a), this Agreement may beterminated in accordance with the following provisions(i) AMS may terminate this Agreement immediately if all of the Intellectual PropertyRights Licensed to AMS, including, without limitation, the Bio Control PatentRights, have been rendered invalid or unenforceable by a court of competentjurisdiction or other Governmental Authority from which no appeal can be taken.(ii) Either party may terminate this Agreement upon an arbitration award (pursuantto the dispute resolution procedure referenced in Section 9(c)) below, finding thatthe other party is in material breach of this Agreement and the breaching party’sfailure to comply with the terms of such order (including payment of damages) withinninety (90) days after entry of the award.(c) Rights and Obligation on Termination. In the event of termination or expiration of thisAgreement for any reason, the parties shall have the following rights and obligations:(i) AMS shall remain responsible for any payment due to Bio Control that has accruedprior to the effective date of such termination or expiration, except if all of theBio Control Patent Rights have been held to be invalid, in which case no paymentsshall be owed.(ii) The licenses granted to the Licensees under Sections 2(a) and 2(b) above shallimmediately terminate and be of no further force and effect; provided, however, thatif this Agreement expires by its terms in accordance with Section 4(a), the licensesgranted to Licensees under Sections 2(a) and 2(b) shall continue indefinitely withrespect to all Licensed Intellectual Property Rights except the Patent Rights.(iii) Sections 4(c), 7, 8 and 9 shall survive any termination or expiration of thisAgreement. In addition, Section 3(e) shall survive for a period of two (2) yearsfrom the date of termination or expiration of this Agreement(iv) Licensee, its Affiliates and any sublicensees shall be permitted to sell anyinventory of the Licensed Products on hand at the effective date of such terminationor expiration, provided that no provision of this Agreement shall prevent Licensee,its Affiliates or sublicensees from selling the
 

 
Licensed Products after termination or expiration of this Agreement if the relevantPatent Rights have expired.5. Option to File Continuing Applications. Each party (the “Filing Party”) shall have theright to file U.S. patent applications (“Other Party Applications”) claiming priority fromone or more of the Patents assigned to or under an obligation to be assigned to the otherparty (the “Other Party”), subject to the following terms and conditions: (i) the FilingParty shall (a) bear all costs associated with the filing and prosecution of the Other PartyApplication and the issuance and maintenance of any patent that issues therefrom; (b) beresponsible for the prosecution of the Other Party Application; (c) keep the Other Partyapprised of all proceedings concerning prosecution of the Other Party Application before theUS Patent and Trademark Office (the “USPTO”) by electronic access or by providing copies ofcorrespondence and official actions within ten (10) days of receipt thereof from the USPTO;by providing the Other Party copies of all correspondence, filings and responses to officialactions at least thirty (30) days in advance of the deadline for any such filing with theUSPTO; and by providing the Other Party with an opportunity to comment; and (d) consult withthe Other Party before carrying out any filing in the USPTO with respect to the Other PartyApplication; (ii) the Other Party shall have the right to object to the future filing of anyOther Party Application, or to the carrying out of any filing in the USPTO, in whole or inpart, with respect to an Other Party Application that the Other Party reasonably believesmay adversely affect the Other Party’s rights in any other applications or patents assignedto or under an obligation to be assigned to the Other Party and the party proposing to filethe Other Party Application shall refrain filing the proposed Other Party Application uponany such objection by the Other Party ; (iii) the Other Party Application shall be assignedto the Other Party, and any patent that issues from the Other Party Application shall remainassigned to the Other Party; and (iv) this right to file Other Party Applications shall notbe applicable if the number of continuing applications that may be filed is limited by USlaw or USPTO rules. Notwithstanding subsection (iv) above, if the number of continuingapplications or Requests for Continued Examination (“RCEs”) that may be filed is limited byUS law or USPTO rules, AMS shall have the right, subject to subsections (i)-(iii) above, tofile half of the maximum permitted number of continuing applications claiming priority fromUS Application 10/538,521, and half of the maximum permitted number of RCEs available to USApplication 10/538,521 and its continuing applications, with any fractional number ofcontinuing applications or RCEs being rounded down to next lower integer, including zero ifapplicable. The parties agree that US Application 11/932,579 [docket numbers STC 63142 andA92.12-0039], filed October 31, 2007, shall be an Other Party Application.6. Patent Prosecution and Infringement.(a) Licensed Rights. With respect to the Patent Rights only, each Licensor shall (i) paywhen due all maintenance and annuity fees for its respective Patent Rights; (ii) beresponsible for the prosecution of its respective Patent Rights before the applicableexamining authority; (iii) consult with Licensee regarding in which foreign countriesLicensee desires patent protection; and (iv) keep Licensee apprised of all proceedingsconcerning prosecution of the Licensor’s Patent Rights before the applicable examiningauthority by electronic access or by providing copies of correspondence and official actionswithin ten (10) days of receipt thereof from any such examining authority; by providingLicensee copies of all correspondence, filings and responses to official actions at leastthirty (30) days in advance of the deadline for any such filing with such authorities; andby providing Licensee with an opportunity to comment. If Licensee’s comments are related toarguments made to advance prosecution of any claim related to the AMS Field of Use, in thecase of AMS, or outside the AMS Field of Use, in the case of Bio Control, Licensor shall notunreasonably refuse to take into account such input in its response to the official action.If Licensor (i) elects not to prosecute; (ii) desires to abandon any patent applicationsincluded in the definition of the Licensed Intellectual Property Rights; (iii) desires notto maintain any patent or patent application included in the definition of Patent Rights; or(iv) does not desire to file a patent application in any foreign country in which Licenseehas expressed an interest, it shall so notify Licensee in writing allowing sufficient timefor Licensee to (w) assume the prosecution of any such patent application prior to anyabandonment thereof; (x) prevent any actual abandonment of any patent or patent application;(y) make maintenance and annuity fee payments in advance of any abandonment thereof; and (z)file patent applications in foreign countries of Licensee’s choice. Licensor shall assignits rights to Licensee in any such patent or patent application filed outside of the US, andLicensee shall have the right to prosecute and
 

 
maintain such patent or patent application in its own name at its own expense. Any suchpatent or patent application filed in the US shall remain assigned to Licensor, who willcooperate at Licensee’s expense and at Licensee’s complete discretion with the prosecutionand maintenance of such patent. Licensee’s complete discretion shall be subject to thefollowing obligations: (i) to keep the Licensor apprised of all proceedings concerningprosecution of the Other Party Application before the US Patent and Trademark Office (the“USPTO”) by electronic access or by providing copies of correspondence and official actionswithin ten (10) days of receipt thereof from the USPTO; by providing the Other Party copiesof all correspondence, filings and responses to official actions at least thirty (30) daysin advance of the deadline for any such filing with the USPTO; and by providing the OtherParty with an opportunity to comment; and to take into account any objections of theLicensor to actions which Licensor reasonably believes may adversely affect the Licensor’srights in any other applications or patents assigned to or under an obligation to beassigned to the Licensor. Licensee will have an exclusive, irrevocable, fully paid up,license to exploit such patent or patent application in the country in which the applicationor patent was filed in the AMS Field of Use, in the case of AMS, or outside the AMS Field ofUse, in the case of Bio Control, with the full right to sublicense. Licensee and Licensorshall cooperate fully with each other to execute all necessary documentation to enable eachparty to perform its duties and exercise its rights under the terms of this Section 6(a).All out of pocket costs to Licensor arising out of fulfillment of a specific, writtenrequest of Licensee pursuant to this subsection shall be borne by Licensee, so long asLicensee has approved such expenses in advance.(b) Infringement.(i) With respect to the Patent Rights only, when information comes to the attentionof Licensor or Licensee to the effect that any of the Patent Rights have been or arethreatened to be infringed by a third party, Licensor or Licensee, as the case maybe, shall notify the other party in writing of any such infringement or threatenedinfringement of which it becomes aware. If such infringement or threatenedinfringement relates to any Patent Rights within the AMS Field of Use, in the caseof AMS, or outside the AMS Field of Use, in the case of Bio Control, Bio Control orAMS, as the case may be, shall have the initial right but not the obligation to takeaction to stop such infringement or otherwise enforce its rights. In the event BioControl or AMS, as the case may be, takes no action to stop such infringement withinninety (90) days of notifying the other partying in writing of the infringement orthreatened infringement or within ninety (90) days of it otherwise becoming aware ofsuch infringement, Bio Control, as Licensor, or AMS, as Licensor, shall have theright to commence an action against such infringement, at its own expense and in itsown name. The party controlling any such action is referred to below as the“Controlling Party” and the other party, with respect to such action, as the“Cooperating Party.”(ii) The Cooperating Party shall cooperate with the Controlling Party in any action,suit or proceeding brought under Section 6(b)(i). If a Controlling Party determinesthat it is necessary or desirable for a Cooperating Party to join any such suit,action or proceeding, the Cooperating Party shall, at the Controlling Party’sexpense, execute all documents and perform such other acts as may be reasonablyrequired. If the Controlling Party initiates suit hereunder it shall have theexclusive right to employ counsel of its own selection and to direct and control thelitigation or any settlement thereof (subject to the penultimate sentence hereof),shall pay all of the Cooperating Party’s reasonable, out of pocket costs, if any,promptly upon the Controlling Party’s receipt of a request for reimbursement(accompanied by sufficient supporting documentation). Subject to such reimbursementof the Cooperating Party’s reasonable, out-of-pocket expenses, the Controlling Partyshall be entitled to reimburse itself out of any sums recovered in such suit or insettlement thereof for all costs and expenses, including reasonable attorneys’ fees,necessarily involved in the prosecution of such suit, and any funds that shallremain from said recovery shall be used to reimburse the Cooperating Party for allof its other reasonable costs and expenses, in addition to the out-of-pocket costsalready reimbursed, necessarily involved in its participation in such suit, and anybalance remaining thereafter shall be distributed to the Controlling Party subject,in the case of a Licensee as Controlling Party, to the royalty obligations herein.In any such action, the Cooperating Party shall, at it own expense, have the rightto non-controlling participation through counsel of its own selection. If theControlling Party desires to settle such claim or suit, it shall first give theCooperating Party written notice of the terms of the proposed
 

 
settlement and the Cooperating Party shall have the right to approve or reject suchproposal. The failure of the Cooperating Party to respond in writing to a notice ofsettlement within fifteen (15) business days following the giving of such notice bythe Controlling Party shall automatically constitute an approval of the terms of theproposed settlement contained therein.(c) Action Against Licensee. At the request of Licensee, Licensor will cooperate withLicensee in the defense of any suit, action or proceeding against Licensee, or any Affiliateor sublicensee of Licensee, alleging the infringement of a patent or other intellectualproperty right in the manufacture, use or sale of the Licensed Products. Licensee shallgive Licensor prompt notice of the commencement of any such suit, action or proceeding orclaim of infringement and shall furnish to Licensor a copy of each communication relating tothe alleged infringement. Licensor hereby grants to Licensee the right to exclusive controlof the defense of any such suit, action or proceeding and the exclusive right to compromise,litigate, settle or otherwise dispose of any such suit, action or proceeding and shallprovide all information and assistance necessary to defend or settle any such suit, actionor proceeding. Licensee shall have the right to join Licensor as a defendant, if necessaryor desirable, and Licensor shall join in any such action and shall execute all documents andtake all other actions, including giving testimony, which may reasonably be required inconnection with the defense of such suit, action or proceeding. Each party shall have theright to be represented by counsel of its own selection, at its own expense, in the defenseof any suit under this Section 6(c). Notwithstanding the foregoing, Bio Control’s sole andexclusive financial obligations arising out of any claim for infringement of any third partyIntellectual Property rights are set forth in the Indemnification provisions of Section 5.6of the Asset Purchase Agreement, and AMS shall have no financial obligations to Bio Controlarising out of any claim for infringement of any third party Intellectual Property rightsunder the AMS Patent Rights.7. Confidentiality. Bio Control and AMS agree that Section 4.1 (“Confidentiality”) of theAsset Purchase Agreement is incorporated by reference herein and shall apply to allinformation disclosed in the performance of this Agreement, provided that, in addition tothe respective rights to use, and restrictions on each party’s use of, the Urology BusinessInformation pursuant to the exclusive licenses granted in Sections 2(a) and 2(b), above:(a) AMS will treat the Urology Business Information as the Confidential Information of BioControl outside of the AMS Field of Use, and, subject to the exceptions and exclusions inSection 4.1(c) of the Asset Purchase Agreement, will not disclose the Urology BusinessInformation for any purpose outside of the AMS Field of Use or to any Person for the use, orintended use, by such Person outside of the AMS Field of Use;     (b) AMS will treat the Urology Business Information as the Confidential Information ofBio Control within the AMS Field of Use, and, subject to the exceptions and exclusions inSection 4.1(c) of the Asset Purchase Agreement, will not disclose the Urology BusinessInformation for any purpose within the AMS Field of Use or to any Person for the use, orintended use, by such Person within of the AMS Field of Use; and     (c) Each party will treat the Urology Business Information as confidential andproprietary, and will protect the Urology Business Information from disclosure using samedegree of care that it uses to protect its other, similar confidential and proprietaryinformation (but in any event no less than commercially reasonable care, including requiringexecution and delivery of appropriate confidentiality and non-disclosure agreements prior toany permitted disclosure).8. Additional Grant. Bio Control and AMS hereby agree to disclose to each other, the filingof any and all patent applications (including all patents issuing on such applications)covering electrical stimulation technology during a period from April 26, 2006, throughApril 26, 2009, subject to renewal for successive two (2) year terms thereafter, to theextent mutually agreed in writing by the parties prior to the end of the initial term or anyrenewal term, as the case may be. Bio Control and AMS agree that each will use good faithand commercially reasonable efforts (including after such period) to negotiate and enterinto one or more non-exclusive license agreements with one another for all patentapplications disclosed during the period, (i) granting AMS rights to any such patentapplications filed by Bio Control during such period within the AMS Field of Use; and (ii)granting Bio Control rights to any such patent applications filed by AMS during such periodoutside of the AMS Field of Use. In all cases, such license agreements will
 

 
provide for royalty payments at a rate that is commercially reasonable, commensurate withthe value accorded by the parties, but not to exceed six percent (6%). Either party mayterminate the parties’ obligations to disclose patent applications and to negotiate or tocontinue any ongoing negotiations under this Section 8 by notice to the other partyfollowing a Change in Control (as defined in the Asset Purchase Agreement) of either party,provided that such notice is given within thirty (30) days following the effective date of:(i) the Change in Control, if the termination notice is given by the party undergoing theChange in Control; or (ii) notice of the Change in Control given pursuant to the followingsentence, if the termination notice is given by the party not undergoing the Change inControl. Each party covenants and agrees to provide the other with notice of any Change inControl no later than two (2) business days following the effective date of the Change inControl.9. Miscellaneous.(a) Assignment; Change in Control. Neither party may assign or otherwise transfer itsrights and obligations under this Agreement without the prior written consent of the otherparty, except to an Affiliate or any successor in interest of all or substantially all ofthe business of such party, whether by merger, operation of law, assignment, purchase orotherwise, and except that a Licensee may grant any sublicenses in accordance with Section2(c). Any prohibited assignment shall be null and void. All terms and conditions of thisAgreement shall be binding on and inure to the benefit of the successors and permittedassigns of the parties. Notwithstanding the foregoing, this Agreement shall not beassignable upon a Change in Control of Bio Control (by operation of law or otherwise) unlessthe party(ies) acquiring control execute and deliver, and upon any Change in Control BioControl shall cause such parties to execute and deliver, an agreement, in the form attachedas Exhibit D, acknowledging AMS’ exclusive license hereunder, including AMS’ rights in theUrology Business Information.(b) Relationship. This Agreement shall not constitute either party as the legalrepresentative, partner, joint venturer or agent of the other party hereto, nor shall eitherparty have the right or authority to assume, create, or incur any liability or anyobligation of any kind, express or implied, against or in the name of or on behalf of theother party hereto.(c) Dispute Resolution. The parties agree that all disputes, of whatever nature, arisinghereunder shall be finally settled pursuant to Article 6 of the Asset Purchase Agreement.(d) Entire Agreement; Waiver and Release. This Agreement constitutes the entire agreementbetween the parties hereto relative to the subject matter hereof, and supersedes any and allprior agreements, written or oral, between the parties relating to such subject matterincluding but not limited to the License Agreement and the Memorandum of Understanding.(e) Amendments. No modifications or amendments of any of the terms hereof shall be valid orbinding unless made in writing and signed by Bio Control and AMS.(f) Waiver. No waiver of any breach of any provision of this Agreement shall constitute awaiver of any prior, concurrent or subsequent breach of the same or any other provisionhereof, and no waiver shall be effective unless made in writing.(g) Notices. All notices, requests, demands, claims and other communications hereundershall be in writing. Any notice, request, demand, claim, or other communication hereundershall be deemed duly given (a) if personally delivered, when so delivered, (b) if given byfacsimile, once such notice or other communication is transmitted to the facsimile numberspecified below and electronic confirmation is received; or (c) if sent through an overnightdelivery service in circumstances to which such service guarantees second day internationaldelivery, the second day following being so sent:If to Bio Control:                    To: Bio Control Medical (B.C.M), Ltd.3 Geron St.Yehud 56100IsraelAttn: Chief Executive OfficerFax: +972-3-6322125
 

 
With a copy to:Sanford T. Colb & Co.