SECURITIES AND EXCHANGE COMMISSION
Washington, D.C. 20549
FORM 8-K
CURRENT REPORT
PURSUANT TO SECTION 13 OR 15(d) OF THE
SECURITIES EXCHANGE ACT OF 1934
Date of Report: May 9, 1996
UROMED CORPORATION
(Exact name of registrant as specified in its charter)
Massachusetts 000-23266 04-3104185
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(State or Other (Commission File (I.R.S. Employer
Jurisdiction of Number) Identification No.)
Incorporation)
64 A Street, Needham, Massachusetts 02194
Address of principal executive offices
Registrant's telephone number, including area code: (617) 433-0033
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Item 2. Acquisition of Assets of ASI Liquidating Trust
On May 9, 1996, the Registrant closed an acquisition of all of the
incontinence assets of the ASI Liquidating Trust (the "Trust"), the successor to
Advanced Surgical Intervention, Inc., including all assets relating to the
Miniguard Patch(TM), an United States Food and Drug Administration cleared
prescription adhesive patch placed against the external uretheral opening to
help to block leakage of urine in women with mild to moderate stress
incontinence. In consideration for the assets acquired from the Trust, the
Registrant paid to the Trust the amount of $7,000,000 in cash, issued to the
Trust 1,868,021 shares of its common stock, no par value ("Common Stock"), and
committed to issue an additional 467,005 shares of Common Stock, for a total of
2,335,026 shares of Common Stock, if a resale registration statement on Form S-3
filed with respect to such shares is declared effective within a designated
period (not to exceed 45 days) of its filing. In the event that the registration
statement on Form S-3 is not declared effective within such period, the
Registrant will be required to issue to the Trust an additional number of shares
of Common Stock if the market value of the Common Stock declines during the
period between the end of the designated period after the filing of the
registration statement and the effective date, not to exceed a maximum
additional number of shares equal in value to $4,600,000 on the effective date.
If the market value of the Common Stock increases during the same period, the
Registrant will issue fewer than 467,005 additional shares of Common Stock, so
as to offset the increase in value of the original aggregate 2,335,026 shares of
Common Stock from the end of the designated period to the effective date,
subject to a maximum decrease in the number of shares equal to $4,600,000 in
value on the effective date.
The Registrant entered into Non-Competition and Consulting Agreements with
the co-inventors of the Miniguard Patch and one other significant former
employee of Advanced Surgical Intervention, Inc. pursuant to which such persons
agreed to assist the Registrant with the transition of the purchased assets to
the Registrant's operations and to assume certain non-competition obligations
for a period of three years after the closing date.
Item 7. Financial Statements, Pro Forma Financial Information and Exhibits
Exhibit Number Description
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2.1 Asset Purchase Agreement, dated as of May 9, 1996, among
UroMed Corporation, Robert F. Rosenbluth and Donald B. Milder
as Trustees, the ASI Liquidating Trust and the Indemnifying
Beneficiaries named on Schedule A thereto.
99.1 Press Release issued May 10, 1996 announcing the
acquisition of the incontinence-related assets of the
ASI Liquidating Trust.
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SIGNATURE
Pursuant to the requirements of the Securities Exchange Act of 1934, the
registrant has duly caused this report to be signed on its behalf by the
undersigned hereunto duly authorized.
UROMED CORPORATION
Dated: May 9, 1996 By: /s/ Paul J. Murphy
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Paul J. Murphy, Treasurer and
Chief Financial Officer
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Exhibit 2.1
ASSET PURCHASE AGREEMENT
THIS ASSET PURCHASE AGREEMENT is dated as of May 9, 1996, by and between
UroMed Corporation, a Massachusetts corporation (the "Buyer"), on the one hand,
and the ASI Liquidating Trust (sometimes known as the Advanced Surgical
Intervention, Inc. Liquidating Trust - June 20, 1994), a trust organized under
the laws of the State of California (the "Trust"), Robert F. Rosenbluth and
Donald B. Milder, solely as trustees of the Trust (collectively with the Trust,
the "Sellers"), and those persons named as Indemnifying Beneficiaries on
Schedule A hereto (the "Indemnifying Beneficiaries), on the other hand.
WHEREAS, Advanced Surgical Intervention, Inc., a California corporation
("ASI"), transferred all of its assets to the Sellers in connection with the
liquidation of ASI pursuant to a Liquidating Trust Agreement, dated June 23,
1994 (the "Liquidating Trust Agreement"), between the Trust, a majority of the
shareholders of record of ASI and the Trustees (as defined therein);
WHEREAS, the Sellers desire to sell and the Buyer desires to purchase all
of the assets currently owned by the Sellers relating to male and female
incontinence;
WHEREAS, the Buyer is willing to enter into this Agreement and to purchase
the Acquired Assets only if (i) the Sellers and the Indemnifying Beneficiaries
agree to assume certain indemnification obligations with respect to the Acquired
Assets and the operation of the business of ASI, and (ii) certain persons agree
to assume certain consulting obligations with the Buyer for a period of eighteen
months and certain non-competition obligations with the Buyer for a period of
three years; and
WHEREAS, in connection with the negotiation and preparation of this
Agreement, the Sellers and the Buyer have prepared a set of disclosure
schedules, dated the date hereof and delivered separately as one or more volumes
(the "Disclosure Schedule", with any reference herein to a Schedule being to the
Disclosure Schedule).
NOW THEREFORE, in consideration of the mutual promises and agreements set
forth herein, the Buyer, on the one hand, and the Sellers and the Indemnifying
Beneficiaries, on the other hand, agree as follows:
Article 1
Purchase And Sale
1.1. Acquired Assets. Subject to the terms and conditions set forth in
this Agreement, at the Closing referred to in Article 4 hereof, the Sellers
shall sell, assign, transfer and deliver to the Buyer, and the Buyer shall
purchase, acquire and take assignment and delivery of, all of the
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assets of the Sellers relating to male and female incontinence including, but
not limited to, the following (with all of such assets hereinafter referred to
collectively as the "Acquired Assets"):
(a) the machinery, equipment (including prototype equipment), tools,
spare parts, supplies, molds, furniture, installations, materials and
other tangible personal property owned by the Sellers and described on
Schedule 1.1(a) hereto (the "Equipment");
(b) all of the Sellers' title to, interest in and rights under the
personal property leases described on Schedule 1.1(b) hereto (the
"Personal Property Leases");
(c) all of the Sellers' rights under the contracts and agreements to
which any Seller is a party listed on Schedule 1.1(c) hereto (the
contracts and agreements referred to in this paragraph (c), together with
all amendments and modifications thereto, being referred to collectively
as the "Assumed Contracts");
(d) all of the Sellers' rights under the licenses, permits from and
applications to the United States Food and Drug Administration ("FDA") and
comparable foreign agencies, clinical studies, submissions, supplements
and approvals, and all correspondence, raw data, support information and
background materials related thereto, used by the Sellers with respect to
the products (whether or not conceived of, developed, in development, or
otherwise) identified in Schedule 1.1(d)-1 hereto (the "Products"), or
otherwise relating to male or female incontinence, including but not
limited to those licenses, permits and applications listed on Schedule
1.1(d)-2 hereto (the "Permits");
(e) all of the Sellers' Intellectual Property (as defined in Article
11), including but not limited to, trademarks and trade names and the
goodwill of the business symbolized thereby, product names, logos,
copyrights, marketing studies, manufacturing specifications, designs,
inventions (whether patentable or unpatentable), United States and foreign
patents and patent applications, licenses and applications with respect to
the foregoing, production records, technical information, manufacturing
and design know-how, processes, product and process specifications, final
designs, manufacturing processes, results of human and animal studies and
other experimentation, trade secrets, customer lists and telephone
numbers, sales materials, trade dress, product complaint and return
histories, clinical data, drawings, databases, software and related
documentation, final formulations and other prior iterations of any
Product components and other intangible assets relating to the Product and
the Equipment or otherwise relating to male or female incontinence,
including without limitation those described on Schedules 1.1(e) hereto
(the "Intangibles"), together with all of the Sellers' rights under the
agreements relating to Intellectual Property listed on Schedule 1.1(e)
(the "IP Agreements");
(f) the Sellers' inventories related to the Product, whether in the
possession of the Sellers or any third party, including raw materials,
work in process and finished goods, including without limitation the
inventories described by category, amount and location on Schedule 1.1(f)
hereto (the "Inventories");
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(g) all documents and records relating to the other Acquired Assets
and the Product (including, but not limited to, correspondence, memoranda,
books of account and the like) and the originals of the Personal Property
Leases and the Assumed Contracts;
(h) any claims of any of the Sellers relating to the Acquired Assets
(the "Acquired Claims"); and
(i) all other assets of the Seller relating to the Product or
otherwise related to male or female incontinence.
1.2. Excluded Assets. Notwithstanding the foregoing, the Sellers are not
selling and the Buyer is not purchasing pursuant to this Agreement, and the term
"Acquired Assets" shall not include, any of the following assets (collectively,
the "Excluded Assets"):
(a) the Sellers' rights in and under that Asset Purchase Agreement,
dated as of July 12, 1993, between ASI and Boston Scientific Corporation;
and
(b) all cash and accounts receivable of the Sellers, wherever
located.
Article 2
Liabilities Excluded
Anything in this Agreement to the contrary notwithstanding, the Buyer
shall not assume, and shall not be deemed to have assumed, any liability or
obligation of any nature, fixed or contingent or known or unknown, of any of the
Sellers whatsoever other than as specifically set forth in this Article 2 (with
all such unassumed liabilities and obligations referred to in this Agreement as
the "Excluded Liabilities").
Article 3
Purchase Price
3.1. Purchase Price to be Paid. As the purchase price for the Acquired
Assets (the "Purchase Price"), the Buyer shall (i) pay to the Seller the amount
of $7,000,000 at the Closing (the "Initial Cash Purchase Price"), (ii) issue to
the Seller the Firm Shares (as defined below), and (iii) issue to the Seller any
additional shares of UroMed Common Stock which may be issuable pursuant to
Section 4.3(b).
3.2. Allocation. The Sellers and the Buyer agree to allocate the Purchase
Price (including without limitation any Contingent Purchase Price) among the
Acquired Assets for all
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purposes (including financial accounting and tax purposes) in accordance with
the purchase price allocation set forth on Schedule 3.2 hereto.
Article 4
Closing
4.1. Time and Place. The closing of the transfer and delivery of all
documents and instruments necessary to consummate the transactions contemplated
by this Agreement (the "Closing") shall be held on a date and time as shall be
mutually agreed to by the Buyer and the Seller, at the offices of Bingham, Dana
& Gould, 150 Federal Street, Boston, MA 02110, it being understood and agreed
that time is of the essence of this Agreement. The date on which the Closing is
actually held hereunder is sometimes referred to herein as the "Closing Date".
4.2. Transactions at Closing. At the Closing:
(a) The Sellers shall duly execute and deliver to the Buyer or its
nominee or nominees such deeds, bills of sale, certificates of title and
other instruments of assignment or transfer with respect to the Acquired
Assets as the Buyer may reasonably request and as may be necessary to vest
in the Buyer or its nominee(s) good record and marketable title to all of
the Acquired Assets, in each case subject to no Excluded Liability and no
Encumbrance (as defined in Section 5.11) except for Permitted Encumbrances
(as defined in Section 5.11); these transfer instruments will include one
or more Bills of Sale and Patent Assignments in the forms of Exhibits A
and B hereto (collectively, the "Bills of Sale").
(b) the Buyer shall deliver the Initial Cash Purchase Price by the
wire transfer of immediately available funds to an account of the Sellers
that has been designated for such purpose by the Sellers (with the Sellers
making such designation at least 24 hours prior to the Closing); and the
Buyer shall issue to the Seller that number of shares of UroMed
Corporation common stock, no par value per share ("UroMed Common Stock"),
rounded to the nearest whole number of shares, as shall equal the product
of (x) the quotient of $23,000,000 divided by the Reference Market Value
(as defined below) of a share of UroMed Common Stock, expressed in
dollars, on the Closing Date (with such quotient referred to hereinafter
as the "Firm Base Share Number"), multiplied by (y) 0.80 (the "Firm
Shares"); provided, that in no event shall the Buyer be required to issue
in excess of that number of shares of UroMed Common Stock equal to the
difference between the number of shares of UroMed Common Stock authorized
by the Articles of Organization of the Buyer, as amended from time to time
(the "Buyer Articles"), and the number of shares of UroMed Common Stock
issued and outstanding on the Closing Date; and provided, further, that in
the event that the Buyer is prohibited from issuing shares of UroMed
Common Stock pursuant to this Section 4.2(b), the Buyer shall pay to the
Sellers an amount equal to the product of the number of shares of UroMed
Common Stock which the Seller is so prohibited from issuing multiplied by
the
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Reference Market Value of a share of UroMed Common Stock on the
Closing Date. For purposes of this Agreement, the "Reference Market Value"
of a share of UroMed Common Stock with respect to a particular date shall
mean the average closing sale price (in thousandths of dollars) on the
NASDAQ National Market as reported under Composite Transactions in The
Wall Street Journal for the five (5) trading days immediately preceding
the date with respect to which the Reference Market Value is determined.
(c) [Intentionally omitted]
(d) The Buyer, the Sellers, and the Indemnifying Beneficiaries shall
execute a Registration Rights Agreement in the form of Exhibit C hereto
(the "Registration Rights Agreement").
(e) The Buyer and Robert F. Rosenbluth shall enter into a Consulting
and Non-Competition Agreement in the form of Exhibit D-1 hereto (the
"Rosenbluth Agreement").
(f) The Buyer and Robert Greene shall enter into a Consulting and
Non-Competition Agreement in the form of Exhibit D-2 hereto (referred to
hereinafter collectively with the Rosenbluth Agreement as the "Consulting
Agreements").
(g) The Sellers shall deliver to the Buyer the written opinions of
Stradling, Yocca, Carlson & Rauth, corporate counsel to the Sellers, and
Klein & Szekeres, patent counsel to the Sellers, addressed to the Buyer
and dated the Closing Date, in the respective forms of Exhibits E-1 and
E-2, hereto.
(h) The Buyer shall deliver to the Sellers the written opinion of
Bingham, Dana & Gould LLP, counsel to the Buyer, dated the Closing Date
and addressed to the Sellers, in the form of Exhibit F hereto.
4.3 Issuance of Additional Shares.
(a) In the event that the Registration Statement (as defined in the
Registration Rights Agreement) is declared effective by the Securities and
Exchange Commission (the "Commission") on or prior to the forty-fifth
(45th) day following the later of the date of delivery of the Shareholder
List (as defined in the Registration Rights Agreement) or the Closing Date
(with such date referred to hereinafter as the "Reference Date"), the
Buyer shall issue to the Sellers that nearest whole number of shares of
UroMed Corporation Common Stock equal to difference of the Firm Base Share
Number minus the number of Firm Shares.
(b) In the event that the Registration Statement is not declared
effective by the Commission on or prior to the Reference Date, on the day
following the date on which the Registration Statement is declared
effective by the Commission (the
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"Effective Date"), the Buyer shall issue to the Sellers that nearest
whole number of shares of UroMed Common Stock, if any, equal to a number
of shares of UroMed Common Stock (but not less than zero) equal to (i)
the product of the Firm Base Share Number multiplied by 0.20 plus or
minus (ii) an adjustment factor determined as follows:
(I) Subtract (x) the Reference Market Value of a share of UroMed
Common Stock on the Effective Date from (y) the Reference
Market Value of a share of UroMed Common Stock on the
Reference Date;
(II) Determine an aggregate dollar price adjustment equal to the
lesser of (x) the product of (i) the Firm Base Share Number
multiplied by (ii) 0.20 multiplied by (iii) the Reference
Market Value of a share of UroMed Common Stock on the Closing
Date, or (y) the product of the amount determined in step (I)
above multiplied by the Firm Base Share Number; and
(III) Determine the aggregate-number-of-shares adjustment factor by
dividing the amount determined in step (II) above by the
Reference Market Value of a share of UroMed Common Stock,
expressed in dollars, on the Effective Date;
provided, that in lieu of issuing to the Seller the positive number of
Shares of UroMed Common Stock, if any, determined in step (III) above, the
Buyer shall have the right, in its sole discretion, to pay to the Seller
an amount in cash equal to the lesser of (i) the dollar amount determined
in step (II) above or (ii) the dollar amount equal to the product of (x)
the Firm Base Share Number multiplied by 0.20, multiplied by (y) the
Reference Market Value of a share of UroMed Common Stock, expressed in
dollars, on the Effective Date.
(c) Notwithstanding the provisions of paragraphs (a) and (b) of this
Section 4.3, in no event shall the Buyer be required to issue in excess of
that number of shares of UroMed Common Stock equal to the difference
between the number of shares of UroMed Common Stock authorized by the
Buyer Articles and the number of shares of UroMed Common Stock issued and
outstanding on the date on which such shares are issued. In the event that
the Buyer is prevented from issuing shares of UroMed Common Stock pursuant
to paragraphs (a) and (b) of this Section 4.3, the Buyer shall pay to the
Seller an amount equal to the product of the number of shares of UroMed
Common Stock which the Buyer is so prevented from issuing multiplied by
the Reference Market Value of a share of UroMed Common Stock on the
Closing Date, in the case of any issuances required under paragraph (a)
above, or the Effective Date, in the case of any issuances required under
paragraph (b) above.
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Article 5
Representations and Warranties of the Sellers and Indemnifying Beneficiaries
The Sellers and the Indemnifying Beneficiaries represent and warrant to
the Buyer as follows:
5.1. Organization; Authority.
(a) The Sellers have full power and authority to enter into this
Agreement, the Bills of Sale and the Registration Rights Agreement
(collectively, the "Seller Acquisition Documents") and to perform their
obligations hereunder and thereunder. Each Indemnifying Beneficiary has
full power and authority to enter into this Agreement and the Registration
Rights Agreement. The Sellers have full power and authority to own and
hold the Acquired Assets. The nature of the businesses of the Sellers have
not required them to be qualified or licensed in any jurisdiction.
(b) The Sellers acquired all of the assets of ASI prior to its
dissolution in 1994 pursuant to the Liquidating Trust Agreement. All Taxes
(as defined below) and penalties payable or accrued by ASI under the
California Bank and Corporation Tax Law have been paid and all other debts
and liabilities (other than the Assumed Contracts and the Personal
Property Leases) of ASI have been paid.
5.2. Binding Effect. This Agreement and the rest of the Seller Acquisition
Documents have been duly authorized by all necessary actions of the Trustees and
beneficiaries of the Trust and this Agreement has been duly executed and
delivered by the Sellers and each Indemnifying Beneficiary and constitutes the
legal, valid and binding obligations of the Sellers and each Indemnifying
Beneficiary enforceable against them in accordance with its terms. The rest of
the Seller Acquisition Documents, when executed and delivered by the Sellers and
the Indemnifying Beneficiaries at the Closing, will constitute legal, valid and
binding obligations of the Sellers and each Indemnifying Beneficiary which is a
party thereto, enforceable against them in accordance with their terms.
5.3. Non-Contravention. Neither the execution and delivery of this
Agreement and the rest of the Seller Acquisition Documents by the Sellers and
the Indemnifying Beneficiaries nor the consummation by the Sellers or any
Indemnifying Beneficiary of the transactions contemplated hereby or thereby will
constitute a violation of, or be in conflict with, or constitute or create a
default under, or result in the creation or imposition of any Encumbrance upon
any property of the Sellers (including, without limitation, any of the Acquired
Assets) or any Indemnifying Beneficiary pursuant to (a) any agreement or
commitment to which the Sellers or such Indemnifying Beneficiary is a party or
by which the Sellers or such Indemnifying Beneficiary or any of their properties
(including, without limitation, any of the Acquired Assets) is bound or to which
such Sellers or any Indemnifying Beneficiaries or any of their properties is
subject, (b) the Liquidating Trust Agreement or other constitutive document of
the Sellers or such Indemnifying Beneficiary, or (c) any statute, regulation,
rule, judgment, order, decree,
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stipulation, injunction, charge or other restriction of any government,
governmental agency or court or other tribunal to which any of the Sellers or
such Indemnifying Beneficiary or any of their properties is subject.
5.4. Governmental Consents; Transferability of Licenses, Etc.
(a) Except as set forth on Schedule 5.4(a), no consent, approval or
authorization of, or registration, qualification or filing with, any
governmental agency or authority is required for the execution and
delivery of this Agreement and the rest of the Seller Acquisition
Documents by the Sellers or for the consummation by the Sellers of the
transactions contemplated hereby. The Sellers have and maintain, and
Schedule 5.4(a) lists, all licenses, permits and other authorizations from
all governmental authorities required to be maintained by the Sellers in
connection with their ownership of the Acquired Assets or their
manufacture, use or sale of the Products.
(b) The Sellers and ASI have not sold any products (including any
Products) prior to receiving any required or necessary approvals or
consents from any federal, state or foreign governmental authority,
including the FDA under the FD&C Act, and the regulations promulgated
thereunder, or any corollary entity in any other jurisdiction. Except as
set forth on Schedule 5.4(b), the Sellers have received all necessary or
required approvals and consents, to sell, promote and market its current
products (including any Products) in the United States and any other
jurisdiction in which it sells, promotes or markets its products. The
Sellers have not received any notice of, and are not aware of any actions,
product recalls, medical device reports, information requests or similar
issues regulated by the FDA or any corollary entity in any other
jurisdiction.
(c) Set forth on Schedule 5.4(c) hereto is an accurate and complete
copy of all applications, submissions, correspondence and other
communications (including written summaries of any material oral
communications) relating to the application by ASI and the Trust for
approval under the FD&C Act to market and sell the Miniguard Product in
the United States (collectively, the "FDA Application"). All requests for
additional information and other communications from the FDA with respect
to the FDA Application have been adequately responded to, and all
information relating to the Miniguard Product, including information
gathered during clinical studies, required to be submitted or disclosed to
the FDA in connection with the FDA Application has been promptly submitted
or disclosed.
5.5. Financial Statements. Attached as Schedule 5.5(a) hereto is an
unaudited balance sheet of the Trust for the year ended December 31, 1995 (the
"Balance Sheet"). Except as set forth on Schedule 5.5(b), the Balance Sheet was
prepared in accordance with GAAP applied on a basis consistent with prior
periods and such balance sheet fairly presents the financial condition of the
Trust as of its date. Since the date of the Balance Sheet (i) there has been no
change in the assets, liabilities, or financial condition of the Trust from that
reflected in the Balance Sheet except for changes in the ordinary course of
business that in the aggregate have not been materially adverse, and (ii) none
of the financial condition, property or affairs of the Sellers has
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been materially adversely affected by any occurrence or development,
individually or in the aggregate, whether or not insured against.
5.6. Absence of Operations. Since June 23, 1994 the Sellers have carried
on no business.
5.7. No Liabilities. Except as set forth on Schedule 5.7 hereto, the
Sellers have no liabilities, indebtedness or obligations of any nature, whether
accrued, absolute, contingent or otherwise.
5.8. Litigation, etc. No action, suit, proceeding or, to the knowledge of
the Sellers and the Indemnifying Beneficiaries, investigation is pending or, to
the knowledge of the Sellers and the Indemnifying Beneficiaries, threatened,
relating to or affecting any of the Acquired Assets, or which questions the
validity of this Agreement or any of the other Seller Acquisition Documents or
challenges any of the transactions contemplated hereby or thereby, nor to the
knowledge of any of the Sellers and the Indemnifying Beneficiaries is there any
basis for any such action, suit, proceeding or investigation.
5.9. Conformity to Law. The Sellers, insofar as it relates to any of the
Acquired Assets, have complied with, and are in compliance with (a) all laws,
statutes, governmental regulations and all judicial or administrative or
tribunal orders, judgments, writs, injunctions, decrees or similar commands
applicable to the Acquired Assets (including, without limitation, any labor,
environmental, occupational health, zoning or other law, regulation or
ordinance) and (b) all unwaived terms and provisions of all contracts,
agreements and indentures to which any of the Sellers or ASI is a party, or by
which any of the Sellers or any of the Acquired Assets is subject in either case
except where non-compliance would not have a material adverse effect on the
Acquired Assets or the ability of the Buyer to utilize the Acquired Assets. The
Sellers and ASI have not committed, been charged with, or to the knowledge of
the Sellers and the Indemnifying Beneficiaries, been under investigation with
respect to, nor does there exist, any violation of any provision of any
national, state, foreign, local law or administrative regulation in respect of
any of the Acquired Assets.
5.10. Beneficiaries of the Trust. Set forth on Schedule 5.10 hereto is a
list of all beneficiaries of the Trust and their respective proportional
interests therein, including any contingent or optional interests.
5.11. Title to Acquired Assets. Except for those mortgages and other liens
described on Schedule 5.11 hereto ("Permitted Encumbrances"), (i) the Sellers
are the sole lawful owner of, have good and valid record and marketable title
to, and have the full right to sell, convey, transfer, assign and deliver the
Acquired Assets, without any restrictions of any kind whatsoever and without
requiring the consent or approval of any Person, and (ii) all of the Acquired
Assets are free and clear of any security interests, liens, claims, charges,
options, mortgages, debts, leases (or subleases), conditional sales agreements,
title retention agreements, encumbrances of any kind, material defects as to
title or restrictions against the transfer or assignment thereof (collectively,
"Encumbrances"), and except as set forth on Schedule 5.11, there are no filings
in
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any registry of deeds in any jurisdiction or under the Uniform Commercial Code
or similar statute in any jurisdiction showing any of the Sellers as debtor
or consignee or lessee which create or perfect or which purport to create or
perfect any Encumbrance or other right, title or interest in or on any of the
Acquired Assets. Except as expressly provided in this Agreement, at and as of
the Closing, the Sellers will convey the Acquired Assets to the Buyer by deeds,
bills of sale, certificates of title and instruments of assignment and transfer
effective to vest in the Buyer, and the Buyer will receive, good and valid
record and marketable title to all of the Acquired Assets, free and clear of all
Encumbrances other than Permitted Encumbrances.
5.12. Contracts. Except for the contracts, agreements and other
arrangements listed or described on Schedule 5.12, the Sellers are not a party
to or otherwise bound by any contract or agreement (oral or written) of any type
relating to any of the Acquired Assets. The Sellers have delivered or caused to
be delivered to the Buyer correct and complete copies of each contract,
agreement or other arrangement listed in Schedule 5.12 hereto, as amended to
date (the "Listed Contracts"). Each Listed Contract and each Assumed Contract is
a valid, binding and enforceable obligation of the Sellers, and, to the
knowledge of the Sellers and the Indemnifying Beneficiaries, the other party or
parties thereto, and is in full force and effect in all material respects.
Neither Seller nor, to the knowledge of the Sellers and the Indemnifying
Beneficiaries, the other party or parties thereto, is in breach or
non-compliance, or is considered to be in breach or non-compliance by the other
party thereto, of any term of any Listed Contract or any Assumed Contract. Since
January 1, 1995 the Sellers have not received any default notice or written
threat thereof with respect to any Listed Contract or any Assumed Contract and
neither Seller nor any Indemnifying Beneficiary has any reasonable basis for
suspecting that such action will be forthcoming. Subject to obtaining any
necessary consents to assignment by the other party or parties to any Listed
Contract or any Assumed Contract, no Listed Contract or Assumed Contract
includes or incorporates any provision the effect of which may be to enlarge or
accelerate any obligations of the Sellers or give additional rights to any other
party thereto or will in any other way be affected by, or terminate or lapse by
reason of, the transactions contemplated by this Agreement.
5.13. Insurance. Attached as Schedule 5.13 is a description of all
insurance policies maintained by or for the benefit of any of the Sellers
(collectively the "Listed Insurance Policies"). All the Listed Insurance
Policies are in full force and effect; are sufficient for compliance by the
Sellers with all requirements of law and of all agreements to which they are a
party are valid, outstanding and enforceable policies and provide that they will
remain in full force and effect through the respective dates set forth on
Schedule 5.13.
5.14. Equipment. Schedule 5.14 hereto sets forth a complete and accurate
list of all personal property owned by the Sellers as of March 31, 1996 and used
with respect to the Products.
5.15. No Employee Benefit Plans.
(a) Absence of Plans. The Sellers do not maintain, contribute to, or
participate in, nor has any Seller or ASI at any time in the preceding
five (5) years
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maintained, contributed to, or participated in, any pension,
profit-sharing, deferred compensation, share appreciation right,
severance, group or individual health, dental, medical, life insurance,
survivor benefit, car allowance, or similar plan, policy or arrangement,
whether formal or informal, for the benefit of any employee of any Seller
which is or was a Defined Benefit Plan as defined in Title IV of the
Employee Retirement Income Security Act of 1974, as amended ("ERISA"). The
Trust and ASI have never been a party to, bound by, or subject to any
multi-employer plan.
(b) Absence of Certain Events and Arrangements. Except as set forth
in Schedule 5.15(b) hereto, no liability (contingent or otherwise) to the
Pension Benefit Guaranty Corporation ("PBGC") or any multi-employer plan
has been incurred by the Seller or any affiliate of any Seller (other than
insurance premiums satisfied in due course).
(c) Definitions. For purposes of this Section 5.16, "multi-employer
plan," has the same meaning assigned such terms under ERISA, and
"affiliate" means any entity which under Section 414 of the Code is
treated as a single employer with the Seller or ASI.
5.16. Employees. As of March 31, 1996 and the date hereof, neither the
Sellers nor ASI had or has any employees. Neither the Sellers nor ASI has any
employment agreement, written or oral, with any Person except as set forth on
Schedule 5.16(a), or any accrued liability for vacations. Except as set forth on
Schedule 5.16(a), the Sellers have no outstanding loans or advances to any
Person formerly employed by any Seller or ASI.
5.17. Trademarks, Patents, Etc.
(a) Schedule 5.17(a) hereto sets forth a complete and accurate list
of all United States and foreign patents, patent applications, trademarks,
trade names, trademark registrations and copyrights owned by and
registered in the name of any of the Sellers or ASI and used or proposed
to be used by any of the Sellers in connection with the Products or any of
the other Acquired Assets, and all applications therefor. The IP
Agreements represent the only agreements relating to Intellectual Property
which any of the Sellers has licensed or authorized for use by others or
which has been licensed or authorized for use in connection with the
Products or the Acquired Assets.
(b) Except to the extent set forth in Schedule 5.17(b) hereto, the
Sellers own and have the sole and exclusive right to use all Intellectual
Property used or necessary for the manufacture, sale and use of the
Products, and any other Intellectual Property relating to the treatment of
male or female incontinence developed by any employee of the Sellers or
ASI while employed by such person and the consummation of the transactions
contemplated hereby will not alter or impair any such right and will vest
all rights, title and interest therein and thereto in the Buyer. The
Sellers have the sole and exclusive right to manufacture, use and sell the
Products. Schedule 5.17(b) lists all material inventions (whether
patentable or nonpatentable) and trade secrets used by the Sellers in
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connection with or necessary to the manufacture, sale and use of the
Products, and for each such listed invention or trade secret also lists,
to the knowledge of the Sellers, the name and title of the person or
persons responsible for the creation of such invention or trade secret. To
the knowledge of the Sellers, all of the inventors of the inventions
covered by the patents included in the Acquired Assets are correctly
listed as the inventors thereon. Except as set forth in Schedule 5.17(b),
(i) no royalties are paid or payable by the Sellers on or with respect to
any of the patents or patent applications, inventions or trade secrets
listed in Schedule 5.17(b), and upon the consummation of the transactions
contemplated hereby, no additional royalties shall be payable with respect
to such Intellectual Property, and (ii) each of the inventions and trade
secrets listed in Schedule 5.17(b) hereto has, through assignment,
agreement, operation of law or otherwise, become and is the sole property
of the Sellers.
(c) None of the Sellers nor the other party or parties thereto, is
in breach of any IP Agreement. The Sellers have complied with all of its
obligations of confidentiality in respect of the Intellectual Property of
others, and to the knowledge of the Sellers and the Indemnifying
Beneficiaries there are no violations of such obligations of
confidentiality as are owed to the Sellers. No employee, agent or
consultant of the Trust is subject to confidentiality restrictions in
favor of any third Person the breach of which could subject the Sellers to
any material liability or which could adversely affect the Seller's access
to Intellectual Property previously used by it. No claims have been
asserted, and no claims are pending, by any Person regarding use of any
such Intellectual Property, or challenging or questioning the validity or
effectiveness of any license or agreement relating to Intellectual
Property, and there is no basis for such claim. To the knowledge of the
Sellers and the Indemnifying Beneficiaries, the use by the Sellers of the
Intellectual Property listed in any part of Schedule 5.17 does not
conflict with or infringe on the rights of any Person and neither any
Seller nor ASI has received any claim or written notice from any Person to
such effect. To the knowledge of the Sellers and the Indemnifying
Beneficiaries, no third party is infringing, violating or otherwise using,
in an unauthorized manner, any Intellectual Property of the Sellers.
(d) Set forth on Schedule 5.17(d) hereto is a complete list of all
persons (including any consultants to the Sellers or ASI) who participated
in the development and manufacture of the Product and the preparation of
the FDA Application. Except as set forth on Schedule 5.17(d), each of such
persons is party to a Confidentiality Agreement and Inventions Assignment
Agreement in the form attached to Schedule 5.17(d) with the Sellers.
Except as set forth on Schedule 5.17(d), no former employee of the Sellers
or ASI owes any non-competition, non-solicitation or similar obligation to
the Sellers or ASI.
5.18. [Section 5.18 is intentionally omitted.]
5.19. Fair Consideration; No Fraudulent Conveyance. After due inquiry and
investigation, the sale and purchase of the Acquired Assets pursuant to this
Agreement is made in exchange for fair and equivalent consideration. The Sellers
are not now insolvent and will not be
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rendered insolvent by the sale, transfer and assignment of the Acquired Assets
pursuant to the terms of this Agreement. The Sellers are not entering into this
Agreement with the intent to defraud, delay or hinder its creditors and the
consummation of the transactions contemplated by this Agreement will not have
any such effect. Neither ASI nor any Seller has ever admitted in writing its
inability to pay its debts generally as they become due, filed or consented to
the filing against it of a petition in bankruptcy or a petition to take
advantage of any insolvency act, made an assignment for the benefit of
creditors, consented to the appointment of a receiver for itself or for the
whole or any substantial part of its property, or had a petition in bankruptcy
filed against it, been adjudicated a bankrupt, or filed a petition or answer
seeking reorganization or arrangement under the federal bankruptcy laws or any
other laws of the United States or any other jurisdiction.
5.20. Tax Matters.
(a) Except as set forth in Schedule 5.20, (i) the Sellers have filed
all Tax Returns (as defined in Article 11) which are required to be filed
with any foreign, federal, state or local governmental authority or
agency, and have paid, or made adequate provision for the payment of, all
assessments received and all Taxes (as defined in Article 11) which have
or may become due under applicable foreign, federal, state or local
governmental law or regulations with respect to the periods in respect of
which such Tax Returns were filed. The Sellers and the Indemnifying
Beneficiaries know of no additional assessments since the date of such
returns and reports.
(b) Except as set forth in Schedule 5.20:
(i) Liens.There are no liens for Taxes (other than current
Taxes not yet due and payable) on any of the Acquired Assets;
(ii) Withholding Taxes. The Sellers have withheld and paid all
Taxes required to have been withheld and paid in connection with
amounts paid or owing to any employee, creditor, independent
contractor or other third party; and
(iii) Foreign Permanent Establishments and Branches. Insofar
as it relates to the Acquired Assets or the Product, the Sellers
have no permanent establishment in any foreign country, as defined
in the relevant tax treaty between the United States of America and
such foreign country, and does not otherwise operate or conduct
business through any branch in any foreign country.
5.21. Product Liability. The Sellers have no liability (and there is no
basis for any present or future charge, complaint, action, suit, proceeding,
hearing, investigation, claim, or demand against the Sellers giving rise to any
liability) arising out of any injury to persons or property as a result of the
ownership, possession, or use of any product manufactured, sold, leased, or
delivered by the Sellers or ASI.
<PAGE>
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5.22. Agreement with Johnson & Johnson. Set forth as Schedule 5.22-1
hereto are accurate and complete copies of (i) the ASI/Serenity Agreement dated
as of July 31, 1992, between ASI and the Serenity Business Unit of McNeill-PPC,
Inc. (the "Original J&J Agreement"), (ii) all amendments and modifications to
and terminations of the Original J&J Agreement, and (iii) all correspondence and
communications (including written summaries of any oral communications) between
ASI or any of the Sellers and Johnson & Johnson, Inc. which could have the
effect of modifying the Original J&J Agreement or which are material to the
relationship of the Sellers and the Serenity Business Unit of McNeill-PPC, Inc.
("J&J"). To the knowledge of the Sellers, set forth on Schedule 5.22-2 hereto is
a description of the reasons for termination of the Original J&J Agreement.
Neither Sellers nor ASI has any obligations or liabilities to J&J, whether under
the Original J&J Agreement or otherwise, and no Indemnifying Beneficiary has any
obligations or liabilities to J&J under the Original J&J Agreement.
5.23. Clinical Trials. All clinical trials relating to the Products
conducted by the Sellers or ASI were completed in accordance with their
respective protocols and, except as set forth on Schedule 5.23 hereto, no
adverse events (including, but not limited to, bladder or urinary tract
infections, hematuria, and significant patient discomfort) were reported during
such trials.
5.24. Competition. Except as set forth on Schedule 5.24 hereto, to the
knowledge of Robert F. Rosenbluth (after a discussion with Robert Greene
undertaken by Mr. Rosenbluth in good faith), there are no products being sold
or in development which compete with the Products in the field of non-surgical
treatment of female incontinence.
5.25. Solicitation of Interest in Other Property of the Sellers. Except as
set forth on Schedule 5.25 hereto, the Sellers have not engaged any agents or
other representatives for the sale of any of the assets of the Sellers. Set
forth on Schedule 5.25 is a description of each Person contacted by each such
agent or representative and the date of last communication with such Person.
Except as set forth on Schedule 5.25, no proprietary information of the Sellers
or ASI was disseminated to such Persons without such Persons having acknowledged
in writing the proprietary nature of such information and agreed to protect the
confidentiality of such information.
5.26. No Products Sold. No Sellers have ever sold any products.
5.27. Other Investments. Except as set forth in Schedule 5.27 hereto, the
Acquired Assets do not include any capital stock or other equity or ownership or
proprietary interest in any corporation, partnership, association, trust, joint
venture or other entity.
5.28. Suppliers. Schedule 5.28 hereto sets forth a true, correct and
complete list of the names and addresses of the three most significant suppliers
of the Sellers or ASI relating to the Acquired Assets. None of such suppliers
has notified any of the Sellers that it intends to discontinue or reduce
significantly its business with the Sellers, whether as a result of this
Agreement or otherwise. Except as set forth on Schedule 5.28 hereto, all
equipment required to
<PAGE>
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manufacture the Miniguard Product in sufficient quantities to support
commercialization and all materials needed to assemble the Miniguard Product and
its components are generally available from multiple sources without restriction
of any kind. To the knowledge of the Sellers without additional investigation,
such equipment and materials will be available for purchase by the Buyer after
the Closing on the same terms and conditions as such items are available to the
Sellers.
5.29. Acquired Assets Complete; Location. Except as listed in Schedule
5.29, the Acquired Assets include all assets and properties utilized or required
to be utilized by the Seller with respect to the Miniguard Product. Except as
set forth on Schedule 5.29 hereto, all of the Acquired Assets (excluding any
intangibles) are located at the Sellers' facility at 1060-B Calle Negocio, San
Clemente, California 92673, and have been adequately packaged for transfer to
the Buyer upon the Closing.
5.30. Securities Act Matters.
(a) The Sellers are acquiring the shares of UroMed Common Stock to
be acquired by the Sellers pursuant to the transactions contemplated
hereby (the "Shares"), for the Sellers' own account for investment and not
with a view to the public distribution thereof. The Sellers acknowledge
that the Shares are not registered under the Securities Act of 1933, as
amended (the "Securities Act"), and agree that the Sellers will not sell
or otherwise dispose of all or any portion of the Shares, otherwise than
pursuant to registration under the Securities Act or under Rule 144
promulgated thereunder or other similar rule if then available, without
first obtaining (i) a written opinion of counsel satisfactory to counsel
for the Buyer and addressed to the Buyer to the effect that the
contemplated sale or other disposition of Shares will not be in violation
of the Securities Act, or (ii) a "no-action" or interpretive letter from
the Staff of the Securities and Exchange Commission (the "Commission"), to
the effect that such Staff will take no action in respect of the
contemplated sale or other disposition (a copy of which shall be furnished
to the Buyer prior to any transfer of the Shares in question). In
conformity herewith, the Seller(s) agree that the certificate(s) for all
Shares issued hereunder shall bear the following legend:
"These securities have not been registered under the
Securities Act of 1933 and may not be sold or otherwise disposed of,
in whole or in part, other than pursuant to registration under said
Act or in conformity with the limitations of Rule 144 or other
similar rule as then in effect, without first obtaining (i) a
written opinion of counsel satisfactory to the Company's counsel to
the effect that the contemplated sale or other disposition will not
be in violation of said Act or (ii) a 'no-action' letter from the
Staff of the Securities and Exchange Commission to the effect that
such Staff will take no action in respect of the contemplated sale
or other disposition."
The Sellers acknowledge that the Sellers were informed by the Buyer
that because the Shares are unregistered, they must be held, and the
economic risk of the investment
<PAGE>
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must be borne, indefinitely unless and until the Shares are subsequently
registered under the Securities Act or an exemption from such
registration is available.
(b) The Sellers acknowledge that neither the offering of shares of
UroMed Common Stock nor any offering literature used in connection
therewith has been reviewed by the Commission or by the securities
administrator of any state.
(c) The Sellers have received copies of the Buyer's Annual Report on
Form 10-K for its fiscal year ended December 31, 1995, the Buyer's 1995
Annual Report distributed to the Shareholders of the Buyer, and the
Current Report on Form 8-K dated March 28, 1996 of the Buyer
(collectively, the "SEC Material"), and have carefully reviewed the SEC
Material in its entirety. The Buyer has made available to the Sellers the
opportunity to ask questions of, and receive answers from, the Buyer or
persons acting on its behalf concerning the terms and conditions of the
transactions contemplated hereby and the business and financial condition
of the Company.
(d) The Sellers (i) are either "accredited investors" as defined in
Rule 501 promulgated under the Securities Act, or (ii) have such knowledge
and experience in financial and business matters so that such Sellers are
capable of evaluating the merits and risks of an investment in UroMed
Common Stock, with regard to the considerations involved in making such
investment, and the Sellers have such knowledge and experience in
financial and business matters so that they are capable of evaluating the
merits and risks of such investment.
5.31. Brokers. No Seller and no Indemnifying Beneficiary has retained,
utilized or been represented by any broker or finder in connection with the
transactions contemplated by this Agreement.
5.32. Disclosure. No representation or warranty by any of the Sellers or
any Indemnifying Beneficiary in this Agreement or in any exhibit, schedule,
written statement or certificate delivered or to be delivered to the Buyer
pursuant hereto or in connection with the consummation of the transactions
contemplated hereby (including, but not limited to, those documents provided to
the Buyer for due diligence purposes listed on Schedule 5.32 hereto) taken as a
whole contains or will contain any untrue statement of a material fact or omits
or will omit to state a material fact required to be stated therein or necessary
to make the statements contained therein not misleading or to the knowledge of
Sellers necessary in order to provide the Buyer with proper and complete
information as to the Acquired Assets. To the knowledge of Sellers, there is no
material fact relating to the Acquired Assets which may materially adversely
affect the same and which has not been disclosed to the Buyer.
<PAGE>
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Article 6
Representations And Warranties of the Buyer
The Buyer represents and warrants to the Sellers as follows:
6.1. Organization and Standing of Buyer. The Buyer is a corporation duly
organized, validly existing and in good standing under the laws of the
Commonwealth of Massachusetts. The Buyer has full power and authority under its
Articles of Incorporation and By-Laws and applicable laws to execute and deliver
this Agreement and the Registration Rights Agreement (collectively, the "Buyer
Acquisition Documents"), and to consummate the transactions contemplated hereby
and thereby.
6.2. Corporate Approval; Binding Effect. The Buyer has obtained all
necessary corporate authorizations and approvals required for the execution and
delivery of this Agreement and the rest of the Buyer Acquisition Documents and
the consummation of the transactions contemplated hereby and thereby. This
Agreement has been duly executed and delivered by the Buyer and constitutes, and
the rest of the Buyer Acquisition Documents, when executed and delivered by the
Buyer and the other parties thereto will constitute, the legal, valid and
binding obligation of the Buyer, enforceable against the Buyer in accordance
with their terms.
6.3. Non-Contravention; Approvals. Neither the execution and delivery of
this Agreement or the rest of the Buyer Acquisition Documents by the Buyer nor
the consummation by the Buyer of the transactions contemplated hereby and
thereby will constitute a violation of, or be in conflict with, constitute or
create a default under, or result in the creation or imposition of any liens
upon any property of the Buyer pursuant to (a) the Articles of Incorporation or
By-Laws of the Buyer; (b) except as set forth on Schedule 6.3 hereto, any
agreement or commitment to which the Buyer is a party or by which the Buyer or
any of its properties is bound or to which the Buyer or any of its properties is
subject; or (c) any statute, regulation, rule, judgment, order, decree,
stipulation, injunction, charge or other restriction of any government,
governmental agency or court or other tribunal to which the Buyer or any of its
properties is subject. Except as set forth on Schedule 6.3 hereto, no consent,
approval or authorization of, or registration, qualification or filing by the
Buyer with, any governmental agency or authority is required for the execution
and delivery of this Agreement or the rest of the Buyer Acquisition Documents by
the Buyer or for the consummation by the Buyer of the transactions contemplated
hereby and thereby.
6.4. Due Authorization Etc. of UroMed Common Stock. The shares of UroMed
Common Stock issuable to the Seller pursuant to the terms of this Agreement,
when issued in payment of the Purchase Price, will be duly authorized, validly
issued, fully-paid and non-assessable.
6.5. Litigation, Etc. No action, suit, proceeding or investigation is
pending or, to the knowledge of the Buyer, threatened, against the Buyer
relating to or affecting any of the Acquired Assets, or which questions the
validity of this Agreement or challenges any of the
<PAGE>
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transactions contemplated hereby, nor to the Buyer's knowledge, is there any
basis for any such action, suit, proceeding or investigation.
6.6. SEC Reports of the Buyer. The Buyer has furnished the Sellers with
copies of the SEC Material. To the knowledge of Buyer, such reports were
accurate and complete in all material respects and did not omit any material
information required to be set forth therein on the respective dates on which
they were filed with the Commission.
6.7. Brokers. The Buyer has not retained, utilized or been represented by
any broker or finder in connection with the transactions contemplated by this
Agreement.
Article 7
Transitional Matters and Additional Covenants
7.1. Undisclosed Assets. If the Buyer learns that any Seller failed
(whether or not inadvertently) to list any asset of such Seller needed for the
development, manufacture or sale of the Product or otherwise relating to male or
female incontinence, then the Buyer shall have the right to treat such asset as
an Acquired Asset for all purposes under this Agreement and as having been
transferred pursuant to the applicable Bill of Sale.
7.2. Johnson & Johnson. The Sellers shall use their reasonable best
efforts to cause J&J to return to the Sellers for delivery to the Buyer all of
those Acquired Assets and any information which may be deemed to be confidential
information of the Sellers which may be in the possession of J&J.
7.3. Return of Proprietary Information and Acquired Assets; Consulting
Agreements. Each Seller agrees to use its reasonable best efforts to (i) collect
all information and materials relating to the Product and the Acquired Assets in
the possession of the former employees of and consultants to the Sellers and ASI
and deliver such to the Buyer at the Closing, (ii) cause the return to the
Sellers for delivery to the Buyer any of the Acquired Assets in the hands of any
third party, (iii) cause the other parties to each of the Consulting Agreements
to fulfill their obligations to the Buyer thereunder, and (iv) cause any
inventors of the Intellectual Property included in the Acquired Assets to file
any continuations-in-part prepared and reasonably requested by the Buyer.
7.4. Introductions. The Sellers agree that, in order to facilitate the
transfer of the Acquired Assets to the Buyer, the Sellers shall take such
actions as may be required, prior to and after the Closing, to introduce
representatives of the Buyer to the present and former suppliers and customers
of, and consultants to, the Sellers and ASI.
7.5. Certain Restrictions on Transferability of Shares Upon Payment of
Purchase Price. The Trust and each Indemnifying Beneficiary agree that each of
them shall not, and they shall cause any permitted transferees of UroMed Common
Stock not to, sell any shares of
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UroMed Common Stock under any registration statement filed pursuant to the
Registration Rights Agreement other than through any of PaineWebber
Incorporated, Vector Securities International, Inc. or Volpe, Welty & Company,
provided that such brokers do not demand for such transactions more than their
respective usual and customary broker's commissions.
Article 8
Non-Competition and Related Covenants
8.1. Non-Competition.
(a) The Sellers agree that for a period of five years after the
Closing Date (the "Restricted Period"), none of the Sellers, nor any
corporation, partnership or trust controlled directly or indirectly by
such Seller, whether individually or as a consultant, partner, owner or
stockholder owning more than five percent of a corporation, will engage
directly or indirectly, within or outside the United States, in the
business of developing, manufacturing or selling the Products, products
having the same or similar functions, or products directly or indirectly
competitive with the Products, including specifically any products
relating to male or female incontinence. In addition, at no time in the
future will any Seller, or any corporation, partnership or trust
controlled, directly or indirectly, by such Seller, represent to any
person that such Seller still owns or operates the business of developing,
manufacturing or selling the Products, or is the successor in interest of
such business.
(b) The Sellers acknowledge that their obligations under this
Section 8.1 are essential to the protection of the value to the Buyer of
the Acquired Assets. It is recognized by the parties hereto that damages
for breaches of covenants of the nature contained in this Section 8.1 are
difficult if not impossible precisely to prove; therefore, it is agreed
that this Agreement not to compete shall be enforceable by mandatory
injunction, in addition to any other remedy available to the Buyer under
this Agreement or at law or equity. If any of the restrictions contained
in this Section 8.1 shall be deemed to be unenforceable by reason of the
extent, duration or geographical scope or other provisions hereof, then
the parties hereto contemplate that the court shall reduce such extent,
duration, geographical scope or other provision hereof and enforce this
Section 8.1 in its reduced form for all purposes in the manner
contemplated hereby to the maximum extent permissible.
(c) The provisions of this Article 8 shall not apply to any direct
or indirect beneficiary of the Trust subject, in the case of Robert F.
Rosenbluth and Robert Greene, to the provisions of the respective
Consulting Agreements.
<PAGE>
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Article 9
Confidential Information
9.1. Confidential Information.
(a) During and after the Restricted Period, each Seller and each of
the Indemnifying Beneficiaries and any corporation, partnership or trust
controlled directly or indirectly by any of them shall keep, and the
Sellers or such Indemnifying Beneficiary shall endeavor by agreement or
otherwise to cause its employees, agents and representatives to keep,
secret and retain in strictest confidence, and shall not use for the
benefit of itself or others, any information relating to the Acquired
Assets (the "Confidential Information"); provided that this Section 9.1
shall not restrict disclosure by such Seller or any Indemnifying
Shareholder of any Confidential Information required by applicable
statute, rule or regulation or any court of competent jurisdiction,
provided that the Buyer is given adequate advance written notice and an
adequate opportunity to contest such disclosure, and any disclosure on a
confidential basis to such Seller's attorneys, accountants and investment
bankers, and shall not restrict any disclosure of information which is
available publicly as of the date of this Agreement or which subsequently
becomes available without breach of this or any other confidentiality
obligation.
(b) The Sellers acknowledge that their obligations under this
Section 9.1 are essential to the protection of the value to the Buyer of
the Acquired Assets. It is recognized by the parties hereto that damages
for breaches of covenants of the nature contained in this Section 9.1 are
difficult if not impossible precisely to prove; therefore, it is agreed
that this Agreement not to compete shall be enforceable by mandatory
injunction, in addition to any other remedy available to the Buyer under
this Agreement or at law or equity. If any of the restrictions contained
in this Section 9.1 shall be deemed to be unenforceable by reason of the
extent or duration or other provisions hereof, then the parties hereto
contemplate that the court shall reduce such extent or duration or other
provision hereof and enforce this Section 9.1 in its reduced form for all
purposes in the manner contemplated hereby to the maximum extent
permissible.
Article 10
Indemnification
10.1. Indemnity by the Sellers and Indemnifying Beneficiaries. Subject to
the provisions of Sections 10.3 through 10.8, the Sellers and each Indemnifying
Beneficiary agree to indemnify and hold the Buyer and its Affiliates (as defined
in Article 11) harmless from and with respect to any and all claims,
liabilities, losses, damages, costs and expenses, including without limitation
the reasonable fees and disbursements of counsel, but excluding any incidental,
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exemplary, punitive, special or consequential damages (collectively, the
"Losses"), related to or arising directly or indirectly out of any of the
following:
(i) Any inaccuracies in any representation or warranty made by any
of the Sellers or any Indemnifying Beneficiary in this Agreement or any of
the other Seller Acquisition Documents or any failure or breach by any
Seller or any Indemnifying Beneficiary of any covenant, obligation, or
undertaking made by such Seller or Indemnifying Beneficiary in this
Agreement or any of the other Seller Acquisition Documents;
(ii) Without duplication, whether or not the event, circumstance or
fact giving rise to Losses also constitutes a breach of any of the
representations or warranties or covenants of the Sellers or any
Indemnifying Beneficiary, any and all claims, liabilities and obligations
arising out of the use of the Acquired Assets in the operation of any
business carried on by the Sellers or ASI or any of their predecessors on
or prior to the Closing Date (whether asserted before or after the Closing
Date), including, without limitation, the following:
(I) any actual or alleged liability (including without
limitation any liability or alleged liability for cleanup, removal,
remediation or other response costs or for death or injury to Person
or property) arising from (x) the violation by any Seller or ASI of
any Environmental Law on or prior to the Closing Date or (y) the
release, emission or discharge on or prior to the Closing Date of
any hazardous substance, toxic pollutants or other chemical
by-products onto, from or into any real property presently or
formerly owned, leased or operated or used as a job site by the
Sellers or ASI or any predecessors in interest;
(II) any actual or alleged liability for (x) death or injury
to person or property arising as a result of any actual or alleged
defect in any product sold or manufactured or service rendered by
the Sellers or ASI on or prior to the Closing Date or (y) any
warranty or similar claims arising out of defects in any product
sold or services performed by any of the Sellers or Indemnifying
Beneficiary on or prior to the Closing Date;
(III) any claims, liabilities and obligations arising from the
Excluded Liabilities;
(IV) any violation on or prior to the Closing Date of any law,
statute, governmental regulation or judicial or administrative
tribunal order, judgment, writ, injunction, decree or similar
command;
(V) any actual or alleged liability for Taxes relating to any
period prior to the Closing;
(VI) any accrued expenses or accrued payables of the Sellers;
<PAGE>
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(VII) any of the matters referred to or listed on Schedule
5.7; and
(VIII) any obligation or liability of the Sellers arising
under or in connection with any Employee Benefit Plan;
(iii) any claims, liability or obligation to any employee of the
Sellers in connection with his or her employment or termination of
employment by the Sellers;
(iv) any claim, liability or obligation relating to any broker or
finder retained or utilized by any Seller or Indemnifying Beneficiary or
representing the Sellers or the Indemnifying Beneficiary in connection
with the transactions contemplated by this Agreement; or
(v) any claim or liability arising under the bulk sales laws of any
jurisdiction in connection with the transactions contemplated by this
Agreement (in view of such indemnification obligation the Buyer hereby
waives compliance by the Sellers with any such bulk sales laws as a
condition to the closing of the transactions contemplated hereby).
10.2. Indemnity by the Buyer. Subject to the provisions of Sections 10.3
through 10.8, the Buyer agrees to indemnify and hold each Seller and
Indemnifying Beneficiary harmless from and with respect to any and all claims,
liabilities, losses, damages, costs and expenses, including without limitation
the reasonable fees and disbursements of counsel actually received, but
excluding any incidental, exemplary, punitive, special or consequential damages
(also referred to herein as "Losses"), related to or arising directly or
indirectly out of any of the following:
(i) any inaccuracies in any representation or warranty made by the
Buyer in this Agreement or the rest of the Buyer Acquisition Documents or
any failure or breach by the Buyer of any covenant, obligation or
undertaking made by the Buyer in this Agreement or the rest of the Buyer
Acquisition Documents; or
(ii) any claim, liability or obligation relating to any broker or
finder retained or utilized by the Buyer or representing the Buyer in
connection with the transactions contemplated by this Agreement; or
(iii) any claim arising from the sale of the Products after the
Closing Date.
10.3. Limitation. The aggregate liability of each of the Indemnifying
Beneficiaries under this Article 10 shall be limited to the aggregate amount of
the Purchase Price allocable to such Indemnifying Beneficiary. The liability of
each of the Indemnifying Beneficiaries under this Article 10 as to each
individual Loss shall be limited to such Indemnifying Beneficiary's pro rata
share thereof (as reflected in Schedule 5.10 hereto) (as to each Indemnifying
Beneficiary, the "Pro Rata Share"). For all purposes of this Section 10.3 (and
solely for purposes of this Section 10.3):
<PAGE>
-23-
(a) the aggregate amount of the Purchase Price allocable to an Indemnifying
Beneficiary shall equal the sum of (i) that Indemnifying Beneficiary's
Pro Rata Share of the Initial Cash Purchase Price plus (ii) that
Indemnifying Beneficiary's Pro Rata Share of the product of the
closing sale price (in thousandths of dollars) on the NASDAQ National
Market as reported under Composite Transactions in The Wall Street
Journal on the Effective Date multiplied by the total number of shares
of UroMed Common Stock issued as payment of the Purchase Price (as set
forth in Section 3.1); and
(b) each Indemnifying Beneficiary shall be treated as having incurred as
a liability (and as having paid) its Pro Rata Share of any amount
paid by the Sellers under this Article 10.
10.4. Claims.
(a) Any party seeking indemnification hereunder (the "Indemnified
Party") shall promptly notify the other party hereto obligated to provide
indemnification hereunder (the "Indemnifying Party") of any action, suit,
proceeding, demand or breach (a "Claim") with respect to which the
Indemnified Party claims indemnification hereunder, provided that failure
of the Indemnified Party to give such notice shall not relieve any
Indemnifying Party of its obligations under this Article 10 except to the
extent, if at all, that such Indemnifying Party shall have been prejudiced
thereby. If such Claim relates to any action, suit, proceeding or demand
instituted against the Indemnified Party by a third party (a "Third Party
Claim"), upon receipt of such notice from the Indemnified Party, the
Indemnifying Party shall be entitled to participate in the defense of such
Third Party Claim, and if and only if each of the following conditions is
satisfied, the Indemnifying Party may assume the defense of such Third
Party Claim, and in the case of such an assumption the Indemnifying Party
shall have the authority to negotiate, compromise and settle such Third
Party Claim:
(i) the Indemnifying Party confirms in writing that it is
obligated hereunder to indemnify the Indemnified Party with respect
to such Third Party Claim;
(ii) the Indemnified Party does not give the Indemnifying
Party written notice that it has determined, in the exercise of its
reasonable discretion, that a conflict of interest make separate
representation by the Indemnified Party's own counsel advisable; and
(iii) the Indemnifying Party establishes to the reasonable
satisfaction of the Indemnified Party that the Indemnifying Party
has (and will continue to have) adequate financial resources to
satisfy and discharge such action or claim.
<PAGE>
-24-
The Indemnified Party shall retain the right to employ its own
counsel and to participate in the defense of any Third Party Claim, the
defense of which has been assumed by the Indemnifying Party pursuant
hereto, but the Indemnified Party shall bear and shall be solely
responsible for its own costs and expenses in connection with such
participation.
(b) Notwithstanding the foregoing provisions of this Section 10.4,
(i) no Indemnifying Party shall be entitled to settle any Third Party
Claim without the Indemnified Party's prior written consent unless as part
of such settlement the Indemnified Party is released in writing from all
liability with respect to such Third Party Claim and (ii) no Indemnified
Party shall be entitled to settle any Third Party Claim without the
Indemnifying Party's prior written consent unless as part of such
settlement the Indemnifying Party is released in writing from all
liability with respect to such Third Party Claim.
(c) In the event one party hereunder should have a claim for
indemnification that does not involve a Third-Party Claim, the party
seeking indemnification shall promptly send notice of such Claim to the
other party. If the latter disputes such Claim, such dispute shall be
resolved by agreement of the parties or by arbitration pursuant to Section
12.14.
10.5. Materiality Standards; Dollar Thresholds.
(a) Neither the Sellers and the Indemnifying Beneficiaries, on the
one hand, nor the Buyer, on the other hand, shall be liable to the other
for any Claims for a breach of any of the representations and warranties
set forth in Sections 5.1, 5.2, 5.4, 5.5, 5.6, 5.7, 5.8, 5.9, 5.12, 5.14,
5.16, 5.18, 5.21, 5.22, 5.28, 6.1, 6.2, 6.3, 6.4, 6.5, 6.6 (each a
"Specified Misrepresentation Claim") if the total Losses of the Buyer or
the Sellers with respect to such Specified Misrepresentation Claim do not
exceed $10,000.
(b) The Sellers and the Indemnifying Beneficiaries shall not be
liable to the Buyer for any Specified Misrepresentation Claims unless and
until the total Losses suffered by the Buyer with respect to all Specified
Misrepresentation Claims exceeds $100,000, but then for such first
$100,000 and to the extent of such excess.
(c) Except as specifically set forth in paragraphs (a) and (b) no
claim for indemnification under Section 10.1 or Section 10.2, shall be
subject to any threshold amount or deductible amount.
10.6. Method and Manner of Paying Claims; Set-Off. Subject to the
Indemnifying Party's right pursuant to Section 10.4 to defend, negotiate,
compromise and settle a Third Party Claim, the amount of any Claim shall be paid
by the Indemnifying Party forthwith on demand. Any amounts owed by the Buyer
(whether under this Agreement or otherwise) to the Sellers may be set off in
satisfaction of amounts owed to the Buyer by any Seller (whether under this
<PAGE>
-25-
Agreement or otherwise), provided, that, the Buyer shall not be permitted to
delay the delivery of any shares of UroMed Common Stock pursuant to Section 4.3
pursuant to this Section 10.6.
10.7. Insurance Proceeds.
(a) No Indemnified Party shall be obligated to pursue or collect
from any insurer prior to making a claim for indemnification pursuant to
this Article 10 and no Indemnifying Party shall be entitled to postpone
performance of any indemnification obligation under this Article 10 while
an insurance claim is pending. However, without limiting any of the
provisions of Sections 10.1 through 10.6, in connection with any matter
subject to indemnification under this Article 10, all parties shall
cooperate with each other in giving notice of any claim to any insurer
(including an insurer of an Indemnified Party) and shall provide
reasonable assistance in the collection of any such claim; provided,
however, that there is no duty to provide notice, cooperate or assist with
respect to an Indemnified Party's insurance policies where the Indemnified
Party determines in its sole discretion that such notice, cooperation or
assistance could invalidate any portion of the coverage available under
such policy or result in the imposition of retroactive premiums or
prospective premium increases. In addition, if an Indemnified Party makes
such a determination after it has notified its insurer, it shall be
entitled to retract such notice.
(b) If an Indemnified Party actually receives insurance proceeds,
the amount for which such Indemnified Party is entitled to indemnification
under this Article 10 shall be reduced appropriately. In the event an
Indemnified Party receives insurance proceeds after being paid by the
Indemnifying Party with respect to an indemnifiable matter under this
Article 10, the Indemnified Party will remit such proceeds to the
Indemnifying Party, up to the amount previously paid by the Indemnifying
Party with respect to such matter. Nothing in this Section 10.7 shall be
deemed to waive or limit the subrogation rights of any insurer.
10.8. Scope of Indemnity. The Sellers, the Buyer and each of the
Indemnifying Beneficiaries hereby acknowledge and agree that, after the Closing
and except for equitable relief before or after the Closing, including specific
performance, their sole and exclusive remedies with respect to any and all
claims relating to the subject matter of this Agreement shall be pursuant to the
indemnification provisions set forth in this Article 10.
Article 11
Certain Definitions
As used herein the following terms not otherwise defined have the
following respective meanings:
<PAGE>
-26-
"Affiliate": with respect to any Person, any Person controlling,
controlled by or under common control with such Person.
"Control": (including its correlatives "controlled by" and "under common
control with") the possession, directly or indirectly, of the power to direct
or cause the direction of the management or policies of any Person through
ownership of a majority of securities or partnership or other ownership rights
or agreements.
"Environmental Law: any judgment, decree, order, law, license, rule or
regulation pertaining to environmental matters, including without limitation,
those arising under the Resource Conservation and Recovery Act ("RCRA"), the
Comprehensive Environmental Response, Compensation and Liability Act of 1980 as
amended ("CERCLA"), the Superfund Amendments and Reauthorization Act of 1986
("SARA"), the Federal Water Pollution Control Act, the Solid Waste Disposal Act,
as amended, the Federal Clean Water Act, the Federal Clean Air Act, the Toxic
Substances Control Act, or any state or local statute, regulation, ordinance,
order or decree relating to health, safety or the environment.
"GAAP": generally accepted accounting principles which are (a) consistent
with the principles promulgated or adopted by the Financial Accounting Standards
Board and its predecessors, in effect for the fiscal year of the Seller ended
December 31, 1995, (b) applied on a basis consistent with prior periods, and (c)
such that a "big six" accounting firm would, insofar as the use of accounting
principles is pertinent, be in a position to deliver an unqualified opinion as
to financial statements in which such principles have been properly applied.
"Income Taxes": any Taxes based upon or related to income.
"Intellectual Property" means United States and foreign patents,
inventions (whether patentable or unpatentable), trade secrets, know-how,
trademarks and associated goodwill, service marks, trade dress, logos, trade
names, copyrights, mask works and registrations and applications for each of the
foregoing, and computer software programs, computer data bases and related
documentation and materials.
"Person": A corporation, an association, a partnership, a limited
liability company, an organization, a business, an individual, a government or
political subdivision thereof or a governmental agency.
"Prime" means, with respect to any payment to be made pursuant to this
Agreement, the Prime Rate announced from time to time by The First National Bank
of Boston, N.A. at its Boston, Massachusetts office.
"Tax": Any federal, state, local, or foreign income, gross receipts,
franchise, estimated, alternative minimum, add-on minimum, sales, use, transfer,
registration, value added, excise, natural resources, severance, stamp,
occupation, premium, windfall profit, environmental, customs, duties, real
property, personal property, capital stock, intangibles, social security,
<PAGE>
-27-
unemployment, disability, payroll, license, employee, or other tax or levy, of
any kind whatsoever, including any interest, penalties, or additions to tax in
respect of the foregoing.
"Tax Return": Any return, declaration, report, claim for refund,
information return, or other document (including any related or supporting
estimates, elections, schedules, statements, or information) filed or required
to be filed in connection with the determination, assessment, or collection of
any Tax or the administration of any laws, regulations, or administrative
requirements relating to any Tax.
Article 12
General
12.1. Expenses. All transfer and sales taxes payable with respect to the
sale and conveyance of the Acquired Assets to the Buyer shall be paid by the
Sellers. All expenses of the preparation, execution and consummation of this
Agreement and of the transactions contemplated hereby, including, without
limitation, attorneys', accountants' and outside advisers' fees and
disbursements, shall be borne by the party incurring such expenses.
12.2. Notices. All notices, demands and other communications hereunder
shall be in writing or by written telecommunication, and shall be deemed to have
been duly given if delivered personally or if mailed by certified mail, return
receipt requested, postage prepaid, or if sent by overnight courier, or sent by
written telecommunication, as follows:
If to the Sellers, to:
Robert F. Rosenbluth, Ph.D.
c/o ASI Liquidating Trust
P.O. Box 3134
Dana Point, CA 92629
and
Donald B. Milder
Crosspoint Venture Partners
18552 McArthur Blvd., Suite 400
Irvine, CA 92715
<PAGE>
-28-
with a copy to:
Stradling, Yocca, Carlson & Rauth
660 Newport Center Drive, Suite 1600
P.O. Box 7680
Newport Beach, CA 92660-6441
Attention: Lawrence B. Cohn, Esq.
If to any Indemnifying Beneficiary to such Indemnifying Beneficiary's
address on the signature pages hereto,
with a copy sent contemporaneously to:
Stradling, Yocca, Carlson & Rauth
660 Newport Center Drive, Suite 1600
P.O. Box 7680
Newport Beach, CA 92660-6441
Attention: Lawrence B. Cohn, Esq.
If to the Buyer, to:
UroMed Corporation
64 A Street
Needham, MA 02194
Attention: President and Chief Executive Officer
with a copy sent contemporaneously to:
Bingham, Dana & Gould LLP
150 Federal Street
Boston, MA 02110-1726
Attention: Donald-Bruce Abrams, Esq.
12.3. Entire Agreement. This Agreement (including the Exhibits and
Schedules hereto) contains the entire understanding of the parties, supersedes
all prior agreements and understandings relating to the subject matter hereof
and shall not be amended except by a written instrument hereafter signed by all
of the parties hereto.
12.4. Governing Law. The validity and construction of this Agreement
shall be governed by the internal laws (and not the choice-of-law rules) of the
Commonwealth of Massachusetts.
<PAGE>
-29-
12.5. Sections and Section Headings. The headings of sections and
subsections are for reference only and shall not limit or control the meaning
thereof.
12.6. Assigns. This Agreement shall be binding upon and inure to the
benefit of the parties hereto and their respective heirs, successors and
permitted assigns. Neither this Agreement nor the obligations of any party
hereunder shall be assignable or transferable by such party without the prior
written consent of the other parties hereto, except that the Buyer may assign
its rights to one or more of its Affiliates. No such assignment shall relieve
the Buyer from its obligations under this Agreement.
12.7. Survival and Materiality of Representations and Warranties. The
representations and warranties of the parties hereto contained in this Agreement
or otherwise made in writing in connection with the transactions contemplated
hereby (in each case except as affected by the transactions contemplated by this
Agreement) shall be deemed material and, notwithstanding any investigation by
the Sellers or the Buyer, shall be deemed to have been relied on by the Sellers
or the Buyer, as the case may be, and shall survive the Closing and the
consummation of the transactions contemplated hereby. The representations and
warranties set forth in Sections 5.5, 5.6, 5.7, 5.8, 5.9, 5.12, 5.13, 5.14,
5.15, 5.16, 5.18, 5.23, 5.24, 5.25, 5.26, 5.27, 5.28, 5.29, 5.31 and 5.32 shall
expire if notice of a breach thereof has not been received on or prior to the
first (1st) anniversary of the Closing Date. The representations and warranties
set forth in Sections 5.1, 5.2, 5.3, 5.4, 5.10, 5.11, 5.17, 5.19, 5.20, 5.21,
5.22 and 5.30 shall expire if notice of a breach thereof has not been received
on or prior to the third (3rd) anniversary of the Closing Date, provided that
the representations and warranties set forth in Section 5.20 shall survive until
the expiration of the applicable statute of limitation (including any extension
thereof) and the representations and warranties in Section 5.11 shall survive
indefinitely.
12.8. Further Assurances. From time to time, at the request of the Buyer
and without further consideration, the Sellers shall execute and deliver such
further instruments of conveyance and transfer and take such other actions as
the Buyer may reasonably require to more effectively to convey and transfer any
of the Acquired Assets to the Buyer. The Sellers and the Buyer shall also
execute and deliver to the appropriate other party such other instruments as may
be reasonably required in connection with the performance this Agreement and
each shall take all such further actions as may be reasonably required to carry
out the transactions contemplated by this Agreement.
12.9. Tax Treatment. Each of the Buyer and the Sellers agree to file with
the Internal Revenue Service an IRS Form 8594 (Asset Statement under Section
1060), with respect to the acquisition by the Buyer of the Acquired Assets, with
their respective Federal income tax returns for the year in which the Closing
Date occurs in accordance with the agreements reached under Section 3.2 hereof.
12.10. No Implied Rights or Remedies. Except as otherwise expressly
provided herein, nothing herein expressed or implied is intended or shall be
construed to confer upon or to give any person, firm or corporation, except the
Sellers, the Indemnifying Beneficiaries and the Buyer, any rights or remedies
under or by reason of this Agreement.
<PAGE>
-30-
12.11. Counterparts. This Agreement may be executed in multiple
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.
12.12. Public Statements or Releases. The Sellers and the Indemnifying
Beneficiaries each agree that none of them will make, issue or release any
public announcement, statement or acknowledgment of the existence of, or reveal
the status of, this Agreement or the transactions provided for herein, without
first obtaining the consent of the Buyer. Notwithstanding the foregoing, the
Buyer and the Sellers agree to issue a mutually acceptable press release or
other public disclosure of the existence of this Agreement and the consummation
of the transactions contemplated hereby no later than one (1) business day after
the Closing.
12.13. [Intentionally omitted].
12.14. Dispute Resolution. Any controversy or claim arising out of or
relating to this Agreement, except another otherwise provided herein, shall be
submitted to arbitration conducted in accordance with the Commercial Rules of
Arbitration of the American Arbitration Association ("AAA") before a panel of
three (3) arbitrators, with each party having the right to nominate one of the
arbitrators and third arbitrator being selected by consensus of the other two
arbitrators selected by the parties, provided, that (i) any arbitration shall be
conducted in Boston, Massachusetts, and (ii) the arbitrators shall have no power
or authority to award punitive or exemplary damages. The decision of the
arbitrators shall be binding and conclusive on the parties and judgment thereon
may be entered in any court of competent jurisdiction. The parties hereby agree,
and shall so require of the arbitrators, that any and all information presented
to the arbitrators shall remain confidential at all times, subject to the
appropriate protective orders, and shall not be disclosed to any third party.
12.15. Construction. The language used in this Agreement will be deemed
to be the language chosen by the parties to express their mutual intent, and no
rule of strict construction will be applied against any party.
12.16. Attorney's Fees. Reasonable attorney's fees and costs shall be
awarded to the prevailing party by the court in connection with any action
taken to enforce rights under this Agreement.
[REMAINDER OF PAGE LEFT BLANK INTENTIONALLY]
<PAGE>
-31-
IN WITNESS WHEREOF, and intending to be legally bound hereby, the parties
hereto have caused this Asset Purchase Agreement to be duly executed and
delivered as a sealed instrument as of the date and year first above written.
UROMED CORPORATION
By: /s/ Robert Lorett
-------------------------------------------
Title: Vice President, Corporate Development
SELLERS
The ASI Liquidating Trust
By: /s/ Robert Rosenbluth
-------------------------------------------
Trustee
By: /s/ Donald Milder
-------------------------------------------
Trustee
TRUSTEES
By: /s/ Robert Rosenbluth
-------------------------------------------
Trustee
By: /s/ Donald Milder
-------------------------------------------
Trustee
[SIGNATURE PAGES OF INDEMNIFYING BENEFICIARIES FOLLOW]
<PAGE>
Schedule A: List of Indemnifying Beneficiaries
CROSSPOINT VENTURE PARTNERS II
18552 McArthur Blvd., Suite 400
Irvine, CA 92715
Robert F. Rosenbluth
Advanced Surgical Intervention, Inc.
34216 Violet Lantern, Suite 201
Dana Point, CA 92629
H&Q LIFE SCIENCE VENTURES
Hambrecht & Quist Venture Partners
One Bush Street
San Francisco, CA 94104
HAMQUIST
Hambrecht & Quist Group
One Bush Street
San Francisco, CA 94104
H&Q INVESTORS
Hambrecht & Quist Management
Corporation
One Bush Street
San Francisco, CA 94104
H&Q VENTURE INTERNATIONAL C.V.
Hambrecht & Quist Venture Partners
One Bush Street
San Francisco, CA 94104
H&Q GROUP
Hambrecht & Quist
One Bush Street
San Francisco, CA 94104
H&Q VENTURES IV
Hambrecht & Quist Venture Partners
One Bush Street
San Francisco, CA 94104
H&Q LONDON VENTURES
Hambrecht & Quist Venture Partners
One Bush Street
San Francisco, CA 94104
SOUTHERN CALIFORNIA VENTURES II
SCV Partners II
BRENTWOOD ASSOCIATES IV, L.P.
Brentwood Venture Partners, L.P.
1920 Main Street, Suite 820
Irvine, CA 92714
EVERGREEN IV, L.P.
Brentwood Venture Partners, L.P.
1920 Main Street, Suite 820
Irvine, CA 92714
MEDICUS VENTURE PARTNERS 1990
Medicus Management Partners
MEDICUS VENTURE PARTNERS, 1992
Medicus Management Partners
MEDICUS VENTURE PARTNERS 1993
Medicus Management Partners
<PAGE>
Exhibit A to
Asset Purchase Agreement
BILL OF SALE AND ASSIGNMENT
KNOW ALL MEN BY THESE PRESENTS:
That pursuant to the terms of the Asset Purchase Agreement, dated as of
May 9, 1996 (the "Purchase Agreement"), by and between UroMed Corporation, a
Massachusetts corporation (the "Buyer"), on the one hand, and the ASI
Liquidating Trust (sometimes known as the Advanced Surgical Intervention, Inc.
Liquidating Trust - June 20, 1994), a trust organized under the laws of the
State of California (the "Seller"), and those persons named as Indemnifying
Beneficiaries on Schedule A thereto, on the other hand, and in consideration of
good and valuable consideration as recited in the Purchase Agreement, the
receipt and adequacy of which are hereby acknowledged, the undersigned Seller
does hereby sell, transfer, assign and convey to the Buyer, effective as of the
date hereof, the Acquired Assets (as such term is defined in the Purchase
Agreement), intending to convey all of the Seller's rights, title and interest
therein.
This Bill of Sale and Assignment shall be subject to the terms and
conditions set forth in the Purchase Agreement and nothing contained in this
Bill of Sale and Assignment shall be construed to limit, terminate or expand the
representations, warranties and covenants set forth in the Purchase Agreement.
And for consideration aforesaid, the Seller hereby does covenant with the
Buyer, and its successors and assigns, that the Seller and its successors and
assigns will do, execute, acknowledge and deliver, or will cause to be done,
executed, acknowledged and delivered, all such further acts, transfers,
assignments and conveyances, powers of attorney and assurances for the better
selling, transferring, assigning, assuring, conveying and confirming unto the
Buyer, its successors and assigns, all and singular, the Acquired Assets or for
aiding and assisting in collecting or reducing to possession any or all of the
Acquired Assets, as the Buyer and its successors and assigns shall reasonably
request.
Except to the extent set forth in the Purchase Agreement, from and after
the execution and delivery of this Bill of Sale and Assignment to the Buyer, the
Seller shall have no rights, title or interest in the Acquired Assets.
<PAGE>
-2-
IN WITNESS WHEREOF, the Seller has caused this Bill of Sale and Assignment
to be executed as of this 9th day of May, 1996.
The ASI Liquidating Trust
By: ______________________________________
Trustee
By: ______________________________________
Trustee
TRUSTEES
By: ______________________________________
Trustee
By: ______________________________________
Trustee
<PAGE>
Exhibit B to
Asset Purchase Agreement
ASSIGNMENT OF PATENTS AND PATENT APPLICATIONS
WHEREAS, the Advanced Surgical Intervention, Inc. Liquidating Trust - June
20, 1994, a trust organized under the laws of the State of California (the
"Seller"), is the owner of the patents and patent applications identified on
Exhibit A attached hereto and the inventions disclosed therein; and 4
WHEREAS, UroMed Corporation, a corporation organized and existing under
the laws of the Commonwealth of Massachusetts, having a place of business at 64A
Street, Needham, MA 02194 ("UroMed Corporation"), is desirous of acquiring said
patents, patent applications and inventions;
NOW, THEREFORE, for good and valuable consideration, receipt of which is
hereby acknowledged, the Seller does hereby assign, sell and transfer unto
UroMed Corporation, all right, title and interest in and to the said patents and
patent applications identified in Exhibit A and the inventions disclosed
therein, together with the right to sue and recover for, and the right to
profits or damages due or accrued arising out of or in connection with, any and
all past, present or future infringements of said patents, patent applications
or inventions.
IN WITNESS WHEREOF, the Seller, by its duly authorized agent, has executed
this assignment, as an instrument under seal on this ninth day of May, 1996.
THE ADVANCED SURGICAL INTERVENTION,
INC. LIQUIDATING TRUST - JUNE 20, 1994
By: ___________________________________________
Trustee:
By: ___________________________________________
Trustee:
<PAGE>
-2-
COMMONWEALTH OF MASSACHUSETTS )
) ss
COUNTY OF SUFFOLK )
On this the ninth day of May, 1996, before me appeared Robert F.
Rosenbluth and Donald B. Milder, the persons who signed this instrument, who
acknowledged that they are the Trustees of Advanced Surgical Intervention, Inc.
Liquidating Trust - June 20, 1994 and that they signed such instrument as a free
act on behalf of the Advanced Surgical Intervention, Inc.
Liquidating Trust - June 20, 1994.
___________________________________
Notary Public
[Seal]
My Commission Expires: ____________
ACCEPTANCE
The foregoing assignment of said patents, patent applications and
inventions by the Advanced Surgical Intervention, Inc. Liquidating Trust - June
20, 1994 to UroMed Corporation is hereby accepted as of the ninth day of May,
1996.
UroMed Corporation
By: _________________________________
Name:
Title:
<PAGE>
-3-
COMMONWEALTH OF MASSACHUSETTS)
) ss
COUNTY OF SUFFOLK )
On this the _____ day of May, 1996, before me appeared ______________, the
person who signed this instrument, who acknowledged that he is the
______________ of UroMed Corporation and that he signed such instrument as a
free act on behalf of UroMed Corporation.
__________________________________
Notary Public
[Seal]
My Commission Expires: ___________
<PAGE>
EXHIBIT A
Patent Serial Number Patent Number Issue Date Docket Number
------ -------------- ------------- ---------- -------------
<PAGE>
Exhibit C to
Asset Purchase Agreement
REGISTRATION RIGHTS AGREEMENT
THIS REGISTRATION RIGHTS AGREEMENT is made as of May 9, 1996, by and among
UroMed Corporation, a Massachusetts corporation (the "Company"), the ASI
Liquidating Trust (sometimes known as the Advanced Surgical Intervention Inc.
Liquidating Trust - June 20, 1994), a trust organized under the laws of
California (the "Trust"), Robert R. Rosenbluth and Donald B. Milder as trustees
of the Trust (the "Trustees"), and those beneficiaries of the Trust listed on
Annex A hereto (the "Beneficiaries").
This Agreement is made pursuant to an Asset Purchase Agreement, dated as
of the date hereof, among the Company, the Trust, the Trustees and the
Beneficiaries (the "Purchase Agreement").
In order to induce the Trust and the Trustees to enter into the Purchase
Agreement and to consummate the transactions contemplated thereby, the Company
has agreed to provide the registration rights set forth in this Agreement.
The parties hereto agree as follows:
1. Definitions.
"Beneficiaries" has the meaning specified in the preamble.
"Commission" means the Securities and Exchange Commission.
"Common Stock" means the Common Stock, no par value, of the Company.
"Company" has the meaning specified in the preamble.
"Person" means an individual, partnership, corporation, association,
trust, joint venture, unincorporated organization, or any government,
governmental department or agency or political subdivision thereof.
"Purchase Agreement" has the meaning specified in the preamble.
"Registrable Securities" means (i) any shares of Common Stock issued or
issuable to the Trust or the Trustees under the Purchase Agreement (including
any shares of Common Stock which may be issued to the Beneficiaries in a
distribution made by the Trust), and (ii) any securities issued or issuable with
respect to the securities referred to in clause (i) above by way of a stock
dividend or stock split or in connection with a combination of
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shares, recapitalization, merger, consolidation or other reorganization. As to
any particular Registrable Securities, such securities will cease to be
Registrable Securities when they have been distributed to the public through a
broker, dealer or market purchaser in compliance with Rule 144 under the
Securities Act (or any similar rule then in force) or sold pursuant to an
effective registration statement under the Securities Act.
"Registration Expenses" has the meaning specified in Section 4.
"Registration Statement" has the meaning specified in Section 2(a).
"SEC Material" has the meaning set forth in Section 6(c).
"Securities Act" means the Securities Act of 1933, as amended, or any
successor federal statute, and the rules and regulations of the Commission
thereunder, all as the same shall be in effect at the time.
"Securities Exchange Act" means the Securities Exchange Act of 1934, as
amended, or any successor federal statute, and the rules and regulations of the
Commission thereunder, all as the same shall be in effect at the time.
"Shareholder List" has the meaning specified in Section 2(a).
"Shares" has the meaning specified in Section 6(a).
"Trustees" has the meaning set forth in the preamble.
2. Registration on Form S-3. No later than the later of (i) five (5)
business days after the date hereof, or (ii) two (2) business days after the
delivery by the Seller and the Trustees to the Company of a list (the
"Shareholder List") of those persons who shall be named as selling shareholders
of the shares of Common Stock issued at the Closing (as defined in the Purchase
Agreement), the Company will prepare and file with the Commission a registration
statement on Form S-3 (the "Registration Statement") covering such shares of
Common Stock. The Shareholder List shall contain, for each person named thereon,
the number of shares to be offered for such person's account and the number of
shares of Common Stock held or beneficially owned by such person (within the
meaning of Rule 13d-3 under the Securities Exchange Act of 1934, as amended, and
including the shares of Common Stock registered for such person's account under
such Registration Statement) on the date such list is delivered. The Company
shall name the persons on the Shareholder List as selling shareholders in the
Registration Statement. In no case shall the Company be required to register
under the Registration Statement a number of shares of Common Stock in excess of
the product of the Firm Base Share Number (as defined in the Purchase Agreement)
multiplied by 1.20. Subject to the provisions of Section 7(b), the Registration
Statement will permit delayed or continuous offerings pursuant to Rule 415 under
the Securities Act until the expiration of the period set forth in Section
3(ii).
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3. Registration Procedures.
The Company agrees to use its reasonable best efforts to effect the
registration of the Registrable Securities in accordance with the intended
method of disposition thereof, and pursuant thereto the Company will as
expeditiously as possible:
(i) use its reasonable best efforts to cause the Registration
Statement, once filed in accordance with Section 2, to become effective;
(ii) prepare and file with the Commission such amendments and
supplements to the Registration Statement and the prospectus used in
connection therewith as may be necessary to keep such registration
statement effective until the earlier of (i) the second anniversary of the
latest date of which shares of the Common Stock covered by such
Registration Statement are issued by the Company, (ii) such time as all of
the Common Stock covered by the Registration Statement have been sold, or
(iii) such time that all Registrable Securities may be sold without
limitation under the Securities Act, and to comply with the provisions of
the Securities Act with respect to the disposition of all securities
covered by the Registration Statement during such effective period in
accordance with the intended methods of disposition by the sellers thereof
set forth in the Registration Statement;
(iii) prepare and file with the Commission up to a maximum of five
(5) amendments or supplements, the appropriate form of such to be
determined in the sole discretion of the Company, to amend the list of
Selling Stockholders contained in the prospectus used in connection with
the Registration Statement in the event that the Trustees and the Trust
deliver to the Company an amendment to the Shareholder List (setting forth
all of the information required to be contained in the original of the
Shareholder List) in connection with a permitted transfer by the Trust or
any Beneficiaries of any shares of Common Stock registered under the
Registration Statement, other than by means of such Registration
Statement;
(iv) furnish to the Beneficiaries such number of copies of the
Registration Statement, each amendment and supplement thereto, the
prospectus included in the Registration Statement (including each
preliminary prospectus) and such other publicly-available documents as the
Beneficiaries may reasonably request in order to facilitate the
disposition of the Registrable Securities covered by the Registration
Statement;
(v) notify the Beneficiaries, at any time when a prospectus relating
thereto is required to be delivered under the Securities Act, of the
happening of any event (without being required to disclose the nature of
such event) as a result of which the prospectus included in the
Registration Statement contains an untrue statement of a material fact or
omits any fact necessary to make the statements therein not misleading
and, at the request of the Trustees, the Company will promptly prepare
(and, when completed, give notice to each seller of Registrable
Securities) a
<PAGE>
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supplement or amendment to such prospectus so that, as thereafter
delivered to the purchasers of such Registrable Securities, such
prospectus will not contain an untrue statement of a material fact or
omit to state any fact necessary to make the statements therein not
misleading; provided that upon such notification by the Company, the
Trust, each Trustee and each Beneficiary agrees that it will not, and each
Beneficiary agrees that it shall cause any transferees of any Registrable
Securities distributed to such Beneficiary not to, offer or sell any
Registrable Securities until the Company has notified the Seller
Representative that it has prepared a supplement or amendment to such
prospectus and delivered copies of such supplement or amendment to the
Seller Representative;
(vi) cause all the Registrable Securities to be listed on each
securities exchange on which securities of the same class issued by the
Company are then listed;
(vii) provide a transfer agent and registrar for all of the
Registrable Securities not later than the effective date of the
Registration Statement; and
(viii) in the event of the issuance of any stop order suspending the
effectiveness of the Registration Statement, or of any order suspending or
preventing the use of any related prospectus or suspending the
qualification of any Registrable Securities included in the Registration
Statement for sale in any jurisdiction, the Company will use its
reasonable best efforts promptly to obtain the withdrawal of such order.
4. Registration Expenses.
All expenses incident to the Company's performance of or compliance with
this Agreement, including without limitation all registration and filing fees,
fees and expenses of compliance with securities or blue sky laws, any fees
payable in connection with listing shares of Common Stock on the Nasdaq Stock
Market, printing expenses, messenger and delivery expenses, and fees and
disbursements of counsel for the Company and all independent certified public
accountants and other Persons retained by the Company, the Company's internal
expenses (including, without limitation, all salaries and expenses of its
officers and employees performing legal or accounting duties), the expense of
any annual audit or quarterly review, the expense of any liability insurance for
the Company and its board of directors and the expenses and fees for listing the
securities to be registered on each securities exchange on which similar
securities issued by the Company are then listed (all such expenses being herein
called "Registration Expenses"), will be borne by the Company. Notwithstanding
the foregoing, in the event of any underwritten offering including the
Registrable Securities, the Registration Expenses shall not include any
underwriting compensation or discount or any filing fees required to be paid to
the National Association of Securities Dealers, Inc. (other than any fees
payable in connection with listing shares of Common Stock on the Nasdaq Stock
Market).
<PAGE>
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5. Indemnification.
(a) The Company agrees to indemnify, to the extent permitted by law,
each holder of Registrable Securities, its officers and directors and each
Person who controls such holder (within the meaning of the Securities Act)
against all losses, claims, damages and liabilities caused by any untrue
or alleged untrue statement of material fact contained in the Registration
Statement, prospectus or preliminary prospectus or any amendment thereof
or supplement thereto or any omission or alleged omission of a material
fact required to be stated therein or necessary to make the statements
therein not misleading, except insofar as the same are (i) caused by or
contained in any information furnished in writing to the Company by such
holder or the any Beneficiary expressly for use therein including, without
limitation, the Shareholder List, (ii) caused by such holder's failure to
deliver a copy of the Registration Statement or prospectus or any
amendments or supplements thereto after the Company has furnished such
holder or the Beneficiary from whom such holder received a distribution of
Registrable Securities with a sufficient number of copies of the same,
(iii) caused by such holder's sale of Registrable Securities in violation
of the proviso to Section 3(v) hereof, or (iv) caused by the inaccuracy of
any of the representations or warranties made by the Trust or the
Beneficiaries, or any other information contained, in the Asset Purchase
Agreement or any document delivered by the Trust or any Beneficiary in
connection with the consummation of the transactions contemplated thereby.
(b) In connection with the Registration Statement, each holder of
Registrable Securities will furnish to the Company in writing such
information and affidavits as the Company reasonably requests for use in
connection with any such registration statement or prospectus and, to the
extent permitted by law, the Trust and any Beneficiary from which such
holder received any Registrable Securities will indemnify the Company, its
directors and officers and each Person who controls the Company (within
the meaning of the Securities Act) against any losses, claims, damages and
liabilities resulting from any untrue or alleged untrue statement of
material fact contained in the Registration Statement, prospectus or
preliminary prospectus or any amendment thereof or supplement thereto or
any omission or alleged omission of a material fact required to be stated
therein or necessary to make the statements therein not misleading, but
only to the extent that such untrue statement or omission is contained in
any information or affidavit so furnished in writing by such holder or any
Beneficiary; provided that the obligation to indemnify will be individual
to the Beneficiary from which such holder received any Registrable
Securities and will be limited to the net amount of any proceeds received
by such holder or Beneficiary from the sale of Registrable Securities
pursuant to the Registration Statement.
(c) Any Person entitled to indemnification hereunder will (i) give
prompt written notice to the indemnifying party of any claim with respect
to which it seeks indemnification and (ii) unless in such indemnified
party's reasonable judgment a
<PAGE>
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conflict of interest between such indemnified and indemnifying parties
may exist with respect to such claim, permit such indemnifying party to
assume the defense of such claim. If such defense is assumed, the
indemnifying party will not be subject to any liability for any
settlement made by the indemnified party without its consent (but such
consent will not be unreasonably withheld or delayed). An indemnifying
party who is not entitled to, or elects not to, assume the defense of a
claim will not be obligated to pay the fees and expenses of more than one
counsel for all parties indemnified by such indemnifying party with
respect to such claim, unless in the reasonable judgment of any
indemnified party a conflict of interest may exist between such
indemnified party and any other of such indemnified parties with respect
to such claim.
(d) The indemnification provided for under this Agreement will
remain in full force and effect regardless of any investigation made by or
on behalf of the indemnified party or any officer, director or controlling
Person of such indemnified party and will survive the transfer of the
Registrable Securities.
6. Securities Act Matters.
Each Beneficiary hereby severally represents and warrants to, and agrees
with, the Company as follows:
(a) In the event that such Beneficiary receives a distribution of
shares of Common Stock from the Trust, such Beneficiary shall acquire such
shares of Common Stock (the "Shares"), for the Beneficiary's own account
for investment and not with a view to the distribution thereof. The
Beneficiary acknowledges and agrees that unless and until the Shares are
registered under the Securities Act, the Beneficiary will not sell or
otherwise dispose of all or any portion of the Shares, otherwise than
pursuant to registration under the Securities Act or under Rule 144
promulgated thereunder or other similar rule or exemption if then
available, without first obtaining (i) a written opinion of counsel
satisfactory to counsel for the Company and addressed to the Company to
the effect that the contemplated sale or other disposition of Shares will
not be in violation of the Securities Act, or (ii) a "no-action" or
interpretive letter from the staff of the Commission (the "Staff"), to the
effect that such Staff will take no action in respect of the contemplated
sale or other disposition (a copy of which shall be furnished to the
Company prior to any transfer of the Shares in question). In conformity
herewith, the Beneficiary agrees that the certificate(s) for all Shares
which may be issued to the Beneficiary from the Trust shall bear the
following legend:
"These securities have not been registered under the
Securities Act of 1933 and may not be sold or otherwise disposed of,
in whole or in part, other than pursuant to registration under said
Act or in conformity with the limitations of Rule 144 or other
similar rule or exemption as then in effect, without first obtaining
(i) a written opinion of counsel
<PAGE>
-7-
satisfactory to the Company's counsel to the effect that the
contemplated sale or other disposition will not be in violation of
said Act or (ii) a 'no-action' or interpretive letter from the
Staff of the Securities and Exchange Commission to the effect that
such Staff will take no action in respect of the contemplated sale
or other disposition."
The Beneficiary acknowledges that the Beneficiary was informed by
the Company that unless and until such Shares are registered for sale by
such Beneficiary under the Securities Act, they must be held, and the
economic risk of the investment must be borne, unless an exemption from
such registration is available.
(b) Such Beneficiary acknowledges that neither the sale of shares of
Common Stock to the Trust by the Company, nor any distribution of the
Shares to such Beneficiary, nor any offering literature used in connection
therewith has been or will be reviewed by the Commission or by the
securities administrator of any state.
(c) Such Beneficiary has received copies of the Company's Annual
Report on Form 10-K for its fiscal year ended December 31, 1995, the
Company's 1995 Annual Report distributed to the Shareholders of the
Company, and the Current Report on Form 8-K of the Company dated March 28,
1996 (collectively, the "SEC Material"), and has carefully reviewed the
SEC Material in its entirety. The Company has made available to the
Beneficiary the opportunity to ask questions of, and receive answers from,
the Company or persons acting on its behalf concerning the terms and
conditions of the transactions contemplated by the Asset Purchase
Agreement and the business and financial condition of the Company.
(d) Such Beneficiary (i) is either an "accredited investor" as
defined in Rule 501 promulgated under the Securities Act, or (ii) has such
knowledge and experience in financial and business matters so that such
Beneficiary is capable of evaluating the merits and risks of an investment
in the Common Stock.
7. Restrictions on Sale of Common Stock.
(a) The Trust, each Trustee, each Beneficiary agrees that it shall
not, and it shall cause any permitted transferees of Registrable
Securities not to, sell any shares of Registrable Securities under any
Registration Statement filed pursuant to this Agreement other than through
any of PaineWebber Incorporated, Vector Securities International, Inc. or
Volpe, Welty & Company, provided that such brokers do not demand for such
transactions more than their respective usual and customary broker's
commissions.
(b) The Company may suspend the use of any prospectus contained in
any Registration Statement for periods not to exceed seven business days
in any three month period or four periods not to exceed an aggregate of 28
business days in any 12 month period in the event that the Company
determines, in the exercise
<PAGE>
-8-
of its reasonable discretion, that sales of Registrable Securities
thereunder could constitute violations of the Securities Act.
8. Miscellaneous.
(a) Remedies. Any Person having rights under any provision of this
Agreement will be entitled to enforce such rights specifically, to recover
damages caused by reason of any breach of any provision of this Agreement
and to exercise all other rights granted by law. The parties hereto agree
and acknowledge that money damages may not be an adequate remedy for any
breach of the provisions of this Agreement and that any party may in its
sole discretion apply to any court of law or equity of competent
jurisdiction (without posting any bond or other security) for specific
performance and for other injunctive relief in order to enforce or prevent
violation of the provisions of this Agreement.
(b) Amendments and Waivers. Except as otherwise provided herein, the
provisions of this Agreement may be amended or waived only upon the prior
written consent of the Company and the holders of a majority of the
Registrable Securities (if, and only to the extent that, the rights and
obligations of such parties hereto are adversely affected).
(c) Successors and Assigns. All covenants and agreements in this
Agreement by or on behalf of any of the parties hereto will bind and inure
to the benefit of the respective successors and permitted assigns of the
parties hereto whether so expressed or not.
(d) Severability. Whenever possible, each provision of this
Agreement will be interpreted in such manner as to be effective and valid
under applicable law, but if any provision of this Agreement is held to be
prohibited by or invalid under applicable law, such provision will be
ineffective only to the extent of such prohibition or invalidity, without
invalidating the remainder of this Agreement.
(e) Counterparts. This Agreement may be executed simultaneously in
two or more counterparts, any one of which need not contain the signatures
of more than one party, but all such counterparts taken together will
constitute one and the same Agreement.
(f) Descriptive Headings. The descriptive headings of this
Agreement are inserted for convenience only and do not constitute a
part of this Agreement.
(g) GOVERNING LAW. THIS AGREEMENT AND THE EXHIBITS AND
SCHEDULES HERETO WILL BE GOVERNED BY AND CONSTRUED IN ACCORDANCE WITH
THE INTERNAL LAW, AND NOT THE LAW OF CONFLICTS, OF THE COMMONWEALTH OF
MASSACHUSETTS.
<PAGE>
-9-
(h) WAIVER OF JURY TRIAL. EACH OF THE PARTIES HERETO HEREBY
IRREVOCABLY WAIVES ANY RIGHTS THAT IT MAY HAVE TO A TRIAL BY JURY IN
RESPECT OF ANY LITIGATION BASED UPON, OR ARISING OUT OF, THIS AGREEMENT
AND THE TRANSACTIONS CONTEMPLATED HEREBY OR ANY COURSE OF CONDUCT, COURSE
OF DEALING, STATEMENTS OR ACTIONS OF ANY OF THEM RELATING HERETO OR
THERETO.
(i) Attorney's Fees. Reasonable attorney's fees and costs
shall be awarded to the prevailing party by the court in connection
with any action taken to enforce rights under this Agreement.
(j) Notices. All notices, demands or other communications to be
given or delivered under or by reason of the provisions of this Agreement
shall be in writing and shall be deemed to have been given (i) if mailed
by certified or registered mail, postage prepaid, return receipt
requested, when received, (ii) if by telex or facsimile transmission, when
sent answer back or electronic confirmation of receipt is received, and
(iii) if by overnight courier, when receipted for, in each case when
addressed to the applicable party hereto as follows or at such other
address as any party may designate by written notice to the other, in
accordance herewith:
If to the Company:
UroMed Corporation
64 A Street
Needham, MA 02194
Attention: President and Chief Executive Officer
with a copy to:
Donald-Bruce Abrams, Esq.
Bingham, Dana & Gould LLP
150 Federal Street
Boston, MA 02110
If to the Trust or to the Trustees:
Robert F. Rosenbluth, Ph.D.
c/o ASI Liquidating Trust
P.O. Box 3134
Dana Point, CA 92629
<PAGE>
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and
Donald B. Milder
Crosspoint Venture Partners
18552 McArthur Blvd., Suite 400
Irvine, CA 92715
with copies to:
Stradling, Yocca, Carlson & Rauth
660 Newport Center Drive, Suite 1600
P.O. Box 7680
Newport Beach, CA 92660-6441
Attention: Lawrence B. Cohn, Esq.
If to any Beneficiary, to such Beneficiary's respective address set forth
on the signature pages hereto with a copy to Mr. Cohn at the addresses
noted above,
or to such other address or to the attention of such other person as the
recipient party has specified by prior written notice to the sending party.
[REMAINDER OF PAGE LEFT BLANK INTENTIONALLY]
<PAGE>
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IN WITNESS WHEREOF, the parties hereto have executed this Registration
Rights Agreement as of the date first above written.
UROMED CORPORATION
By: _______________________________________
Vice President, Corporate Development
THE ASI LIQUIDATING TRUST
By: ________________________________________
Trustee
By: ________________________________________
Trustee
TRUSTEES
______________________________________
Trustee
______________________________________
Trustee
[Beneficiary Signature Pages Follow.]
<PAGE>
Exhibit D-1 to
Asset Purchase Agreement
CONSULTING AND
NON-COMPETITION AGREEMENT
The parties to this agreement, dated as of May 9, 1996, are UroMed
Corporation, a Massachusetts corporation with a principal place of business at
64 A Street, Needham, Massachusetts 02194 ("UroMed"), and Robert F. Rosenbluth,
an individual residing at 24161 Cherry Hills Place, Laguna Niguel, CA 92677
("Consultant").
The parties are entering into this agreement in accordance with the Asset
Purchase Agreement dated as of May 9, 1996 between UroMed, The ASI Liquidating
Trust (the "Trust"), the Consultant, and certain other persons (the "Asset
Purchase Agreement").
The Consultant irrevocably agrees and acknowledges as follows:
(bullet) that his execution and delivery of this agreement and his
performance of his obligations under this agreement are part of the
consideration received and to be received by UroMed in exchange for
its payments under the Asset Purchase Agreement;
(bullet) that UroMed and the other parties to the Asset Purchase Agreement
are relying on the Consultant's execution, delivery, and performance
of this agreement in entering into the Asset Purchase Agreement and
in carrying out their obligations under that agreement;
(bullet) that the Consultant's execution and delivery of this agreement is a
condition precedent to UroMed's obligations under the Asset Purchase
Agreement;
(bullet) that he is a beneficiary of the Trust and, as such, will directly
benefit from the transactions contemplated by the Asset Purchase
Agreement; and
(bullet) that the foregoing, in addition to UroMed's agreements and
obligations under this agreement, represent sufficient, full, fair,
and adequate consideration for the Consultant's agreements under
this agreement.
1. Consulting Relationship.
(a) UroMed hereby retains Consultant as a consultant to UroMed, and
Consultant hereby accepts such consulting arrangement, for the period and upon
the terms and conditions set forth herein.
(b) Subject to the general direction and control of UroMed,
Consultant shall use his best efforts, including the highest standards of
professional competence and integrity, in the consulting relationship
established hereby, on the terms set forth herein. Consultant's specific duties
shall be to provide such transitional, technological, manufacturing and business
advice and assistance as UroMed may request relating to the Product and the
Acquired Assets (as those terms are defined in the Asset Purchase Agreement),
and the establishment of UroMed's business relating thereto. UroMed and the
Consultant intend that it shall be the goals of the consulting relationship
created hereby to (i) advise on
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the efficacy and marketability of the Products, (ii) assist in the development
of UroMed's ability to manufacture in sufficient quantities Products utilizing
the Acquired Assets, (iii) assist UroMed in obtaining all necessary regulatory
approvals to market the Products in the United States and abroad, and (iv) , if
appropriate, assist UroMed in improving its intellectual property position with
respect to the Products and the Acquired Assets. The consulting services could
also include, at the request of UroMed, introducing representatives of UroMed to
certain suppliers, customers and other persons with whom the Consultant had
contact during his employment by or other affiliation with Advanced Surgical
Intervention, Inc. It is understood and agreed that Consultant shall provide
such services to UroMed as follows:
(i) solely at UroMed's request, five (5) complete days of
full-time consulting services at UroMed's headquarters in Needham,
Massachusetts during the five months following the date hereof, on such
days as the Consultant and UroMed shall agree;
(ii) solely at UroMed's request, up to two (2) hours during
each full or partial calendar week thereafter through and including the
calendar week ending August 9, 1996;
(iii) solely at UroMed's request, up to one (1) hour during
each calendar week thereafter through and including the calendar week
ending November 14, 1997; and
(iv) at UroMed's request and upon the agreement of the
Consultant, at such other times and for such periods as UroMed and the
Consultant shall mutually agree.
The Consultant agrees, subject to reasonable delay on the basis of his existing
commitments (not to exceed four weeks in any event), to perform such services
when and where requested by UroMed. The services to be provided under clauses
(ii), (iii) and (iv) above may be provided by telephone call with one or more
authorized representatives of UroMed or in person at such location or locations
as the parties may mutually agree, and may be provided during regular business
hours (Eastern Standard Time or Eastern Daylight Time, as applicable) or at such
other times as the parties may mutually agree. If in any calendar week described
in clauses (ii) and (iii) above the Consultant provides more, or is requested to
provide less, than two (2) hours or one (1) hour of services (as applicable)
such excess or requested shortfall shall not reduce or increase the Consultant's
obligations in any subsequent calendar week. It is understood and agreed by the
Consultant and UroMed that UroMed is under no obligation to request any
consulting services from the Consultant.
(c) UroMed and Consultant are not partners or joint venturers with
each other with respect to the matters subject to this agreement and nothing
herein shall be construed so as to make them such partners or joint venturers or
to impose any liability as such on either of them. Consultant is, and shall
remain at all times during the term of this agreement, an independent contractor
of UroMed with no power or authority to bind or contract for UroMed, to execute
any contract or other agreement, instrument, or document on behalf of UroMed, or
to make or suffer the creation of any lien, charge, pledge or hypothecation of
any property of UroMed, unless specifically granted such authority in writing.
Nothing contained herein shall cause Consultant by reason of the consulting
relationship obtained hereby to be deemed an employee, officer, or director of
UroMed. Accordingly, the parties hereto recognize that the outcome of
Consultant's activities, and not the method of performance of his obligations
hereunder, is subject to the control of UroMed.
2. Reimbursement of Expenses. UroMed shall promptly reimburse Consultant
for all ordinary and necessary expenses incurred by the Consultant on behalf of
UroMed and authorized in
<PAGE>
-3-
advance by UroMed, upon the presentation of customary vouchers and reimbursement
slips. Consultant shall have no rights to any compensation or benefits except as
specifically set forth herein, and nothing set forth in this Section 2 shall
limit or restrict the rights of UroMed under Section 3 hereof.
3. Term. This agreement shall take effect as of the date first above
written, and shall remain in effect until the end of the day on the date set
forth in Section 1(b)(iii). Notwithstanding anything else contained in this
agreement, however, the provisions of Sections 4 through 9 hereof shall survive
the termination of this agreement and of Consultant's consulting relationship
hereunder.
4. Assignment of Rights to Proprietary Information and Inventions.
Consultant recognizes that UroMed possesses or will possess information that has
commercial value in UroMed's business ("Proprietary Information") including
without limitation, information created, discovered or developed directly or
indirectly by Consultant prior to the transactions contemplated by the Asset
Purchase Agreement or in connection with Consultant's services hereunder, or
made known to Consultant during the term hereof. Consultant acknowledges that
such Proprietary Information shall include, without limitation, the information
included in the Acquired Assets and Intellectual Property (as such terms are
defined in the Asset Purchase Agreement), inventions, product improvements,
financial, technical or sales strategies, forecasts, product ideas, formulas,
processes, copyrightable and/or patentable materials and/or concepts,
schematics, techniques, market research and/or customer lists which Consultant
may create or be exposed to from time to time relating to male or female
incontinence. Consultant expressly agrees that all Proprietary Information and
rights thereto shall be and remain the sole and exclusive property of UroMed,
and Consultant hereby without further consideration, unconditionally,
exclusively and irrevocably assigns to UroMed, royalty free, all of his right,
title and interest in such Proprietary Information. Notwithstanding the
foregoing, Consultant shall assist UroMed in every proper way to obtain for
UroMed's benefit patents and other Proprietary Information relating to the
Acquired Assets in the United States and in foreign countries, such assistance
to include executing and delivering such confirmatory instruments of this
assignment as UroMed may request including, without limitation, applications for
patent and/or copyright registration. Consultant agrees that the foregoing
assignments are a material term of his consulting relationship with UroMed and
that his consulting fee and the terms of the Asset Purchase Agreement include
sufficient consideration therefor.
5. Confidentiality. At all times during the term of this agreement and
thereafter (including periods after the termination or expiration of
Consultant's consulting relationship with UroMed) Consultant shall keep in
strictest confidence and trust all Proprietary Information and will not use,
discuss or disclose any Proprietary Information without the prior written
consent of UroMed, except when done in the course of his consulting relationship
exclusively with other UroMed employees and consultants. The foregoing
restriction shall not apply to Proprietary Information that Consultant can
clearly demonstrate to have been in the public domain prior to the date hereof
or that comes into the public domain during the operation hereof through no
fault of Consultant. Consultant agrees that his consulting fee hereunder and the
benefits he will realize under the Asset Purchase Agreement include sufficient
consideration for the foregoing covenants.
6. Return of Materials. Upon the termination or expiration of Consultant's
consulting relationship with UroMed, Consultant shall immediately deliver to the
President of UroMed all files, notes, lists, rolodex cards, credit cards,
computer disks, recordings, print-outs, and drawings (including, without
limitation, any materials reflecting or containing Proprietary Information) that
are under the control or in the possession of Consultant and relate to the
operation and business of UroMed. Consultant shall not be entitled to retain any
duplicates of the foregoing.
<PAGE>
-4-
7. Non-Competition; Assignment of Restricted Inventions.
(a) Consultant agrees that for a period of three (3) years after the
Closing Date (as that term is defined in the Asset Purchase Agreement),
Consultant will not directly (as owner, partner, principal in any entity or
otherwise) or indirectly (as an employee, agent, contractor, advisor,
beneficiary or otherwise) engage in, or participate in any entity that engages
in, any activity involving the development, manufacturing or marketing of any
product, product concept, service or service concept in the area of non-surgical
male and female incontinence technology (including without limitation the
Products, as that term is defined in the Asset Purchase Agreement). Consultant
acknowledges that UroMed's business is global in nature and therefore agrees
that the foregoing restrictions apply both within and outside the United States.
(b) Until the expiration of the period referred to in subsection (a)
above, Consultant shall provide UroMed with written notice (i) of any change of
Consultant's residential address or employment.
(c) Until the expiration of the period referred to in subsection (a)
above, Consultant agrees not to seek to persuade any UroMed employee,
consultant, director, officer or advisory board member to discontinue
association with UroMed or become involved directly or indirectly in any
endeavor that Consultant is restricted from engaging in under subsection (a)
above.
(d) Consultant agrees that he will promptly notify UroMed in writing
of any technology, invention, discovery, concept, and/or idea, whether or not
patentable or copyrightable, developed by Consultant prior to the expiration of
the period referred to in subsection (a) above that relates or may relate to any
endeavor that Consultant is restricted from engaging in under subsection (a)
above ("Restricted Inventions"). UroMed is hereby irrevocably granted the option
to take an unconditional, exclusive, irrevocable, royalty-free assignment of
such Restricted Invention(s) upon written notice mailed to Consultant within
thirty (30) days after UroMed's receipt of Consultant's initial notice. If
UroMed duly exercises such option, Consultant shall execute and deliver such
instruments of assignment therefor as UroMed may deem necessary or advisable
including, without limitations, applications for patent and/or copyright
registration.
(e) Consultant represents and warrants for UroMed's reliance that
the foregoing covenants in subsections (a) through (d) above will not unduly
impair Consultant's ability to obtain gainful employment or consulting
relationships in Consultant's field during or subsequent to Consultant's
consulting relationship with UroMed. Consultant further agrees that his
consulting fee hereunder and the benefits he will realize under the Asset
Purchase Agreement include sufficient consideration for the restrictions imposed
by the foregoing covenants.
8. Consultant Representations. Consultant represents and warrants for
UroMed's reliance that (i) this agreement does not conflict with any other
agreement, promise and/or commitment undertaken by Consultant that could
prohibit or impair the performance of Consultant's obligations hereunder; (ii)
Consultant has not and shall not disclose to UroMed, its officers, directors,
employees or agents any proprietary information of another individual or company
prohibiting such disclosure; (iii) Consultant's compliance with the
confidentiality, non-competition and other provisions of this agreement will not
materially impair Consultant's ability to earn a living outside of UroMed in his
field; and (iv) all information on Consultant's education, past work experience
and other qualifications presented to UroMed are accurate, complete and not
misleading.
<PAGE>
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9. Indemnification. UroMed agrees to indemnify and hold Consultant
harmless for any losses of Consultant caused by any injury resulting from the
use of the Acquired Assets (as defined in the Asset Purchase Agreement) or any
products or inventions or improvements thereto arising from this consulting
relationship designed by Consultant.
10. Miscellaneous.
(a) Each of the Consultant and UroMed represents that he or it has
not used any employment counselor or other person who would be entitled to any
compensation for arranging or obtaining the consulting relationship hereby
obtained.
(b) All notices and other communications hereunder shall be in
writing or by written telecommunication, and shall be deemed to have been duly
given if delivered personally or if mailed by certified mail, return receipt
requested, postage prepaid, or if sent by nationally recognized reputable
overnight courier (e.g., FedEx), or by facsimile confirmed by one of the other
methods of giving notice hereunder, to the relevant address set forth in the
preamble hereto, or to such other address as the recipient of such notice or
communication shall have specified to the other party hereto in accordance with
this Section 9(b). All such notices shall be deemed given upon receipt if
delivered personally or by facsimile confirmed as provided above, or five (5)
days after mailing if mailed by certified mail, or one (1) day after mailing if
sent by nationally recognized reputable overnight courier.
(c) Consultant agrees that any breach of Section 4 through 7,
inclusive, will result in irreparable damage to UroMed and therefore consents
that in addition to any other remedies it may have (including without limitation
recovery of provable damages and reasonable attorneys' fees) UroMed will be
entitled to enjoin any such breach in any court of competent jurisdiction.
(d) The parties acknowledge that this agreement constitutes the
complete agreement of the parties concerning the subject matter hereof and
concerning the Consultant's consulting relationship with UroMed and all offer
letters, negotiations and other agreements are superseded and extinguished
hereby. No modification or amendment hereof shall be valid or enforceable unless
it is in writing and executed and delivered by the parties. The waiver by any
party of a breach of any provision of this agreement shall not operate or be
construed as a waiver of any subsequent breach.
(e) If any provision in this agreement is found unenforceable, it
shall not affect any other provisions hereof. If any provision in this agreement
is determined to be unenforceable, it shall be construed by limiting it so as to
be enforceable to the fullest extent compatible with applicable law and so as to
give effect to the fullest extent possible the agreement of the parties as
evidenced by this agreement.
(f) This agreement shall bind and inure to the benefit of the
parties and any successor of UroMed by reorganization, merger, consolidation,
liquidation, sale or other assignment of UroMed's business or assets. The
Consultant may not assign any of his duties and obligations under this
agreement.
(g) This agreement shall be governed by and construed in accordance
with the internal substantive laws of the Commonwealth of Massachusetts.
<PAGE>
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(h) This agreement may be executed in multiple counterparts, each of
which shall be deemed an original, but all of which together shall constitute
one and the same instrument.
IN WITNESS WHEREOF, and intending to be legally bound hereby, the parties
hereto have caused this agreement to be duly executed as of the date and year
first above written.
Consultant: UroMed:
UROMED CORPORATION
________________________________ By: _________________________________
Robert F. Rosenbluth Title
<PAGE>
Exhibit D-2 to
Asset Purchase Agreement
CONSULTING AND
NON-COMPETITION AGREEMENT
The parties to this agreement, dated as of May 9, 1996, are UroMed
Corporation, a Massachusetts corporation with a principal place of business at
64 A Street, Needham, Massachusetts 02194 ("UroMed"), and Robert Greene, an
individual residing at 3108 Summ Place, Costa Mesa, CA ("Consultant").
The parties are entering into this agreement in accordance with the Asset
Purchase Agreement dated as of May 9, 1996 between UroMed, The ASI Liquidating
Trust (the "Trust"), and certain other persons (the "Asset Purchase Agreement").
The Consultant acknowledges: that he is a beneficiary of the Trust and, as such,
will directly benefit from the transactions contemplated by the Asset Purchase
Agreement.
1. Consulting Relationship.
(a) UroMed hereby retains Consultant as a consultant to UroMed, and
Consultant hereby accepts such consulting arrangement, for the period and upon
the terms and conditions set forth herein.
(b) Subject to the general direction and control of UroMed,
Consultant shall use the highest standards of professional competence and
integrity in the consulting relationship established hereby, on the terms set
forth herein. Consultant's specific duties shall be to provide such
transitional, technological, manufacturing and business advice and assistance as
UroMed may request relating to the Product and the Acquired Assets (as those
terms are defined in the Asset Purchase Agreement), and the establishment of
UroMed's business relating thereto. It shall be the goals of the consulting
relationship created hereby to (i) improve the efficacy and marketability of the
Products, (ii) assist in the development of UroMed's ability to manufacture in
sufficient quantities Products utilizing the Acquired Assets, (iii) assist
UroMed in obtaining all necessary regulatory approvals to market the Products in
the United States and abroad, and (iv), if appropriate, assist UroMed in
improving its intellectual property position with respect to the Products and
the Acquired Assets. The consulting services could also include, at the request
of UroMed, introducing representatives of UroMed to certain suppliers, customers
and other persons with whom the Consultant had contact during his affiliation
with Advanced Surgical Intervention, Inc. It is understood and agreed that
Consultant shall provide such services to UroMed as follows:
(i) solely at UroMed's request, a minimum of five (5) complete
days of full-time consulting services at UroMed's headquarters in Needham,
Massachusetts during the five months following the date hereof, on such
days as the Consultant and UroMed shall agree;
(ii) solely at UroMed's request, for a minimum of two (2)
hours during each full or partial calendar week thereafter through and
including the calendar week ending November 14, 1997; and
<PAGE>
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(iii) at UroMed's request and upon the agreement of the
Consultant, at such other times and for such periods as UroMed and the
Consultant shall mutually agree.
The services to be provided under clauses (ii) and (iii) above may be provided
by telephone call with one or more authorized representatives of UroMed or in
person at such location or locations and at such times as the parties may
mutually agree. If in any calendar week described in clause (ii) above the
Consultant provides more, or is requested to provide less, than two (2) hours of
services, such excess or requested shortfall shall not reduce or increase the
Consultant's obligations in any subsequent calendar week. It is understood and
agreed by the Consultant and UroMed that UroMed is under no obligation to
request any consulting services from the Consultant.
(c) UroMed and Consultant are not partners or joint venturers with
each other with respect to the matters subject to this agreement and nothing
herein shall be construed so as to make them such partners or joint venturers or
to impose any liability as such on either of them. Consultant is, and shall
remain at all times during the term of this agreement, an independent contractor
of UroMed with no power or authority to bind or contract for UroMed, to execute
any contract or other agreement, instrument, or document on behalf of UroMed, or
to make or suffer the creation of any lien, charge, pledge or hypothecation of
any property of UroMed, unless specifically granted such authority in writing.
Nothing contained herein shall cause Consultant by reason of the consulting
relationship obtained hereby to be deemed an employee, officer, or director of
UroMed. Accordingly, the parties hereto recognize that the outcome of
Consultant's activities, and not the method of performance of his obligations
hereunder, is subject to the control of UroMed.
2. Compensation. In return for his services hereunder, and in addition to
the benefits to be realized by the Consultant under the Asset Purchase
Agreement, Consultant shall be paid in arrears, in such manner as UroMed may
determine (but no less often than monthly), upon submission of appropriate
documentation to UroMed (as UroMed may reasonably determine), the amount of ONE
HUNDRED DOLLARS ($100.00) PER HOUR of services rendered hereunder (prorated for
partial hours of services and excluding commuting time, if any), without
deduction or withholding of any federal, state, or local taxes; Consultant shall
be solely responsible for all federal, state, and local taxes due in respect
thereof and all other deductions required by law. In addition, UroMed shall
promptly reimburse Consultant for all ordinary and necessary expenses incurred
by the Consultant on behalf of UroMed and authorized in advance by UroMed, upon
the presentation of customary vouchers and reimbursement slips. Consultant shall
have no rights to any compensation or benefits except as specifically set forth
herein, and nothing set forth in this Section shall limit or restrict the rights
of UroMed under Section 3 hereof.
3. Term. This agreement shall take effect as of the date first above
written, and shall remain in effect until the end of the day on the date set
forth in Section 1(b)(ii). Notwithstanding anything else contained in this
agreement, however, the provisions of Sections 4 through 9 hereof shall survive
the termination of this agreement and of Consultant's consulting relationship
hereunder.
4. Assignment of Rights to Proprietary Information and Inventions.
Consultant recognizes that UroMed possesses or will possess information that has
commercial value in UroMed's business ("Proprietary Information") including
without limitation, information created, discovered or developed directly or
indirectly by Consultant prior to the transactions contemplated by the Asset
Purchase Agreement or in connection with Consultant's services hereunder, or
made known to Consultant during the term hereof. Consultant acknowledges that
such Proprietary Information shall
<PAGE>
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include, without limitation, the information included in the Acquired Assets and
Intellectual Property (as such terms are defined in the Asset Purchase
Agreement), inventions, product improvements, financial, technical or sales
strategies, forecasts, product ideas, formulas, processes, copyrightable and/or
patentable materials and/or concepts, schematics, techniques, market research
and/or customer lists which Consultant may create or be exposed to from time to
time, and which relate to the non-surgical treatment of male or female
incontinence. Consultant expressly agrees that all Proprietary Information and
rights thereto shall be and remain the sole and exclusive property of UroMed,
and Consultant hereby without further consideration, unconditionally,
exclusively and irrevocably assigns to UroMed, royalty free, all of his right,
title and interest in such Proprietary Information. Notwithstanding the
foregoing, Consultant shall assist UroMed in every proper way to obtain for
UroMed's benefit patents and other Proprietary Information relating to the
Acquired Assets in the United States and in foreign countries, such assistance
to include executing and delivering such confirmatory instruments of this
assignment as UroMed may request including, without limitation, applications for
patent and/or copyright registration. Consultant agrees that the foregoing
assignments are a material term of his consulting relationship with UroMed and
that his consulting fee and the terms of the Asset Purchase Agreement include
sufficient consideration therefor. Notwithstanding the foregoing, the
Proprietary Information shall not include the information set forth on Exhibit A
hereto.
5. Confidentiality. At all times during the term of this agreement and for
three (3) years thereafter (including periods after the termination or
expiration of Consultant's consulting relationship with UroMed) Consultant shall
keep in strictest confidence and trust all Proprietary Information and will not
use, discuss or disclose any Proprietary Information without the prior written
consent of UroMed, except when done in the course of his consulting relationship
exclusively with other UroMed employees and consultants. The foregoing
restriction shall not apply to Proprietary Information that consultant can
clearly demonstrate to have been in the public domain prior to the date hereof
or that comes into the public domain during the operation hereof through no
fault of Consultant. Consultant agrees that his consulting fee hereunder and the
benefits he will realize under the Asset Purchase Agreement include sufficient
consideration for the foregoing covenants.
6. Return of Materials. Upon the termination or expiration of Consultant's
consulting relationship with UroMed, Consultant shall immediately deliver to the
President of UroMed all files, notes, lists, rolodex cards, credit cards,
computer disks, recordings, print-outs, and drawings (including, without
limitation, any materials reflecting or containing Proprietary Information) that
are under the control or in the possession of Consultant and relate to the
operation and business of UroMed. Consultant shall not be entitled to retain any
duplicates of the foregoing.
7. Non-Competition; Assignment of Restricted Inventions.
(a) Consultant agrees that for a period of three (3) years after the
Closing Date (as that term is defined in the Asset Purchase Agreement),
Consultant will not directly (as owner, partner, principal in any entity or
otherwise) or indirectly (as an employee, agent, contractor, advisor,
beneficiary or otherwise) engage in, or participate in any entity that engages
in, any activity involving the development, manufacturing or marketing of any
product, product concept, service or service concept in the area of non-surgical
male and female incontinence technology that is adhesive in nature or otherwise
contains an external portion that a user can manipulate (including without
limitation the Product, as that term is defined in the Asset Purchase
Agreement). Consultant acknowledges that UroMed's business is global in nature
and therefore agrees that the foregoing restrictions apply both within and
outside the United States.
<PAGE>
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(b) Until the expiration of the period referred to in subsection (a)
above, Consultant shall provide UroMed with written notice (i) of any change of
Consultant's residential address; and (ii) stating the name, address and nature
of each subsequent employment or consulting activity. Any such notice of
subsequent employment or business activity shall include Consultant's
certification that such employment or consulting activity does not violate the
provisions of this agreement.
(c) Until the expiration of the period referred to in subsection (a)
above, Consultant agrees not to seek to persuade any UroMed employee,
consultant, director, officer or advisory board member to discontinue
association with UroMed or become involved directly or indirectly in any
endeavor that Consultant is restricted from engaging in under subsection (a)
above.
(d) Consultant agrees that he will promptly notify UroMed in writing
of any technology, invention, discovery, concept, and/or idea, whether or not
patentable copyrightable, developed by Consultant prior to the expiration of the
period referred to in subsection (a) above that relates or may relate to any
endeavor that Consultant is restricted from engaging in under subsection (a)
above ("Restricted Inventions"). UroMed is hereby irrevocably granted the option
to take an unconditional, exclusive, irrevocable, royalty-free assignment of
such Restricted Invention(s) upon written notice mailed to Consultant within
thirty (30) days after UroMed's receipt of Consultant's initial notice. If
UroMed duly exercises such option, Consultant shall execute and deliver such
instruments of assignment therefor as UroMed may deem necessary or advisable
including, without limitations, applications for patent and/or copyright
registration.
(e) Consultant represents and warrants for UroMed's reliance that
the foregoing covenants in subsections (a) through (d) above will not unduly
impair Consultant's ability to obtain gainful employment or consulting
relationships in Consultant's field during or subsequent to Consultant's
consulting relationship with UroMed. Consultant further agrees that his
consulting fee hereunder and the benefits he will realize under the Asset
Purchase Agreement include sufficient consideration for the restrictions imposed
by the foregoing covenants.
8. Consultant Representations. Consultant represents and warrants for
UroMed's reliance that (i) this agreement does not conflict with any other
agreement, promise and/or commitment undertaken by Consultant that could
prohibit or impair the performance of Consultant's obligations hereunder; (ii)
Consultant has not and shall not disclose to UroMed, its officers, directors,
employees or agents any proprietary information of another individual or company
prohibiting such disclosure; (iii) Consultant's compliance with the
confidentiality, non-competition and other provisions of this agreement will not
materially impair Consultant's ability to earn a living outside of UroMed in his
field; and (iv) all information on Consultant's education, past work experience
and other qualifications presented to UroMed are accurate, complete and not
misleading.
9. Indemnification. UroMed agrees to indemnify and hold Consultant
harmless for any losses of Consultant caused by any injury resulting from the
use of the Acquired Assets (as defined in the Asset Purchase Agreement) or any
products or inventions or improvements thereto arising from this consulting
relationship designed by Consultant.
10. Miscellaneous.
(a) Each of the Consultant and UroMed represents that he or it has
not used any employment counselor or other person who would be entitled to any
compensation for arranging or obtaining the consulting relationship hereby
obtained.
<PAGE>
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(b) All notices and other communications hereunder shall be in
writing or by written telecommunication, and shall be deemed to have been duly
given if delivered personally or if mailed by certified mail, return receipt
requested, postage prepaid, or if sent by nationally recognized reputable
overnight courier (e.g., FedEx), or by facsimile confirmed by one of the other
methods of giving notice hereunder, to the relevant address set forth in the
preamble hereto, or to such other address as the recipient of such notice or
communication shall have specified to the other party hereto in accordance with
this Section 9(b). All such notices shall be deemed given upon receipt if
delivered personally or by facsimile confirmed as provided above, or five (5)
days after mailing if mailed by certified mail, or one (1) day after mailing if
sent by nationally recognized reputable overnight courier.
(c) Consultant agrees that any breach of Section 4 through 7,
inclusive, will result in irreparable damage to UroMed and therefore consents
that in addition to any other remedies it may have (including without limitation
recovery of provable damages and reasonable attorneys' fees) UroMed will be
entitled to enjoin any such breach in any court of competent jurisdiction.
(d) The parties acknowledge that this agreement constitutes the
complete agreement of the parties concerning the subject matter hereof and
concerning the Consultant's consulting relationship with UroMed and all offer
letters, negotiations and other agreements are superseded and extinguished
hereby. No modification or amendment hereof shall be valid or enforceable unless
it is in writing and executed and delivered by the parties. The waiver by any
party of a breach of any provision of this agreement shall not operate or be
construed as a waiver of any subsequent breach.
(e) If any provision in this agreement is found unenforceable, it
shall not affect any other provisions hereof. If any provision in this agreement
is determined to be unenforceable, it shall be construed by limiting it so as to
be enforceable to the fullest extent compatible with applicable law and so as to
give effect to the fullest extent possible the agreement of the parties as
evidenced by this agreement.
(f) This agreement shall bind and inure to the benefit of the
parties and any successor of UroMed by reorganization, merger, consolidation,
liquidation, sale or other assignment of UroMed's business or assets. The
Consultant may not assign any of his duties and obligations under this
agreement.
(g) This agreement shall be governed by and construed in accordance
with the internal substantive laws of the Commonwealth of Massachusetts.
(h) This agreement may be executed in multiple counterparts, each of
which shall be deemed an original, but all of which together shall constitute
one and the same instrument.
<PAGE>
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IN WITNESS WHEREOF, and intending to be legally bound hereby, the parties
hereto have caused this agreement to be duly executed as of the date and year
first above written.
Consultant: UroMed:
UROMED CORPORATION
______________________________ By: _________________________________
Name: Robert Greene Title:
<PAGE>
Exhibit A to Consulting and Non-Competition Agreement
(a) Any rights or inventions arising solely out of a consulting agreement
relating to an intraurethral incontinence device pursuant to a Consulting
Agreement between the Consultant and a third-party during the period between
September 1993 and September 1994.
(b) Any rights or inventions assigned to Boston Scientific Corporation
pursuant to that Confidential Information, Inventions and Non-Competition
Agreement dated as of March 20, 1995 between the Consultant and Boston
Scientific Corporation.
<PAGE>
Exhibit E-1 to
Asset Purchase Agreement
[Letterhead of Stradling, Yocca, Carlson & Rauth]
May 9, 1996
UroMed Corporation
64 A Street
Needham, Massachusetts 02194
Re: The Advanced Surgical Intervention, Inc. Liquidating Trust -
June 20, 1994
Ladies and Gentlemen:
We have acted as counsel to the Advanced Surgical Intervention, Inc.
Liquidating Trust - June 20, 1994, a trust organized under the laws of the State
of California (the "Trust"), and those persons named as Indemnifying
Beneficiaries (the "Beneficiaries") on the signature pages to that certain Asset
Purchase Agreement dated as of May 9, 1996 (the "Asset Purchase Agreement")
between the Trust and the Beneficiaries, on the one hand, and UroMed
Corporation, a Massachusetts corporation (the "Buyer"), on the other hand, in
connection with the transactions contemplated by the Asset Purchase Agreement.
This opinion is being delivered pursuant to Section 4.2 of the Asset Purchase
Agreement. Unless specifically defined herein or the context requires otherwise,
capitalized terms used herein shall have the meanings ascribed to them in the
Asset Purchase Agreement.
In connection with the preparation of this opinion, we have examined the
documents listed below (the "Acquisition Documents"):
A. The Asset Purchase Agreement;
B. The Bill of Sale executed by the Trust, dated May 9, 1996;
C. The Patent Assignment executed by the Trust, dated May 9, 1996;
D. The Assumption Agreement between the Trust and the Buyer, dated
May 9, 1996; and
E. The Registration Rights Agreement, dated May 9, 1996 among the
Trust, the Buyer and the Beneficiaries named on the signature pages
thereto.
<PAGE>
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In addition, we have examined such other documents and considered such
questions of law as we have deemed necessary or appropriate. We have assumed
that, except for the Acquisition Documents and the documents required or
contemplated thereby, there are no other documents or agreements among the
Trust, the Beneficiaries and the Buyer which would expand or otherwise modify
the respective rights and obligations of the Trust, the Beneficiaries and the
Buyer as set forth in the Acquisition Documents, and the documents required or
contemplated thereby.
We have assumed the authenticity of all documents submitted to us as
originals, the conformity with originals of all documents submitted to us as
copies and the genuineness of all signatures. We have also assumed that the
Trust and the Beneficiaries have received the agreed-to consideration due and
payable at Closing, and that, with respect to all parties to agreements or
instruments relevant hereto other than the Trust and the Beneficiaries, such
parties had the requisite power and authority to execute, deliver and perform
such agreements or instruments, that such agreements or instruments have been
duly authorized by all requisite action, executed and delivered by such parties
and that such agreements or instruments are the valid, binding and enforceable
obligations of such parties.
As to questions of fact material to our opinions, we have relied upon the
representations of each party made in the Acquisition Documents and the other
documents and certificates delivered in connection therewith, certificates of
the Trustee and certificates and advices of public officials.
Whenever a statement herein is qualified by "known to us," "to our actual
knowledge," or similar phrase, it is intended to indicate that, during the
course of our representation of the Trust and the Beneficiaries, no information
that would give us actual knowledge of the inaccuracy of such statement has come
to the attention of those attorneys in this form who have rendered legal
services to the Trust or the Beneficiaries. However, except as otherwise
expressly indicated, we have not undertaken any independent investigation to
determine the accuracy of such statement, and any limited inquiry undertaken by
us during the preparation of this opinion letter should not be regarded as such
an investigation; no inference as to our knowledge of any matters bearing on the
accuracy of any such statement should be drawn from the fact of our
representation of the Trust and the Beneficiaries.
Based upon the foregoing, and subject to the assumptions, exceptions,
qualifications and limitations set forth herein, we are of the opinion that:
1. The Trust is a liquidating trust duly organized under the laws of the
State of California with full power and authority to enter into the Acquisition
Documents to which it is a party and to consummate the transactions contemplated
thereby.
2. The Acquisition Documents have been duly authorized by all necessary
actions on the part of the Trustees and beneficiaries of the Trust. The
Acquisition Documents to which the
<PAGE>
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Beneficiaries are parties have been authorized by all necessary corporate or
other actions on behalf of such Beneficiaries.
3. When executed and delivered by the Trustees of the Trust and the
Beneficiaries, respectively, the Acquisition Documents will be legal, valid and
binding obligations of the Trust and the Beneficiaries enforceable against them
in accordance with their terms, except as the enforceability thereof may be
subject to or limited by (a) bankruptcy, insolvency, reorganization,
arrangement, moratorium, or other similar laws relating to or affecting rights
of creditors and (b) general equitable principles, regardless of whether the
issue of enforceability is considered in a proceeding in equity or at law.
4. Neither the execution and delivery of the Acquisition Documents by the
Trust nor the consummation by the Trust of the transactions contemplated thereby
(a) will constitute a violation of, or be in conflict with, or constitute or
create a default under, or result in the creation or imposition of any
encumbrance upon an property of the Trust (including, without limitation, any of
the Acquired Assets) pursuant to, (i) the Liquidating Trust Agreement, or (ii)
to our actual knowledge, any judgment, order, decree, stipulation, injunction,
charge or other restriction of any court or other tribunal to which either the
Trust or any of its properties is subject, or (b) is prohibited by, or subjects
the Trust to a fine, penalty or other similar sanction, under any (i) statute or
regulation of the State of California, or (ii) any federal statute or
regulation.
5. No consent, approval or authorization of, or designation, declaration
or filing with, any governmental authority is required in connection with the
valid execution, delivery and performance by the Trust or any Beneficiary of the
Acquisition Documents.
6. Except as disclosed in the Asset Purchase Agreement or the exhibits and
schedules delivered in connection therewith, there is, to our actual knowledge,
no action, suit or proceeding by any governmental agency pending against the
Trust or its properties or any Beneficiary in any court or before any
governmental authority or agency, or arbitration board or tribunal which seeks
to restrain, enjoin, prevent the consummation of, or otherwise challenge the
Acquisition Documents or any of the transactions contemplated thereby.
The foregoing opinion are subject to the following:
We expressly do not comment upon or render any opinion with respect to any
documents referenced in the Asset Purchase Agreement, except for the other
Acquisition Documents or the Liquidating Trust Agreement.
We call your attention to the fact that certain of the Acquisition
Documents state that they are governed by Massachusetts law and that we are not
rendering any opinion with respect to Massachusetts law. We have not examined
the question of what law would govern the interpretation or enforcement of the
Acquisition Documents and our opinion is based on the assumption that the
internal laws of the State of California and federal law would govern the
provisions of the Agreement and the transactions contemplated thereby. We
express no opinion regarding the enforceability of the choice of law provisions
of the Acquisition Documents.
<PAGE>
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We express no opinion with respect to:
(i) the enforceability of the non-competition provisions of
Section 8.1 of the Asset Purchase Agreement;
(ii) matters involving the federal Food, Drug and Cosmetic Act, as
amended, or the rules and regulations thereunder, or California laws and
regulations regarding drugs and medical devices; or
(iii) patent, trademark and related matters.
With respect to our opinion in paragraph 5 above, we have assumed that the
Buyer was not required to make a filing under the Hart-Scott-Rodino Antitrust
Improvements act of 1976. Except with respect to any filings required by the
Trust under such act, we express no opinion on antitrust matters.
We are members of the Bar of the State of California and, accordingly, do
not purport to be experts on or to be qualified to express any opinion herein
concerning, nor do we express any opinion herein concerning, any laws other than
the laws of the State of California and federal law.
The foregoing opinions are being furnished to you solely for your benefit
and may not be relied upon by any other person without our prior written
consent. This opinion is as of this date, and we expressly decline any
undertaking to advise you of any maters arising subsequent to the date hereof
which would cause us to amend any portion of the foregoing in whole or in part.
Very truly yours,
STRADLING, YOCCA, CARLSON
& RAUTH
<PAGE>
Exhibit E-2 to
Asset Purchase Agreement
[Letterhead of Klein & Szekeres]
May __, 1996
UroMed Corporation
64 A Street
Needham, MA 02194
Re: The Advanced Surgical Intervention, Inc. Liquidating Trust -
June 20, 1994
Ladies and Gentlemen:
We are patent counsel to the Advanced Surgical Intervention, Inc.
Liquidating Trust - June 20, 1994, a trust organized under the laws of the State
of California (the "Seller"), and to Advanced Surgical Intervention, Inc., a
California corporation ("ASI"). This opinion is being furnished to you pursuant
to Section 4.2(g) of the Asset Purchase Agreement dated May _____, 1996 (the
"Agreement") between UroMed Corporation, a Massachusetts corporation ("UroMed"),
and the Seller; relating to the sale to UroMed by the Seller of all of the
assets of the Seller and ASI relating to male and female incontinence. Unless
otherwise defined in this letter, the definition of the capitalized terms used
in this opinion shall be the same as those in the Agreement.
We are familiar with the technology of the Seller and ASI related to male
and female incontinence including without limitation the technology relating to
the so-called "MiniGuard" product, and we have filed and prosecuted the U.S. and
foreign patent applications and obtained the U.S. and foreign patents identified
on Schedule A to this opinion (the "Patent Rights") relating to male and female
incontinence.
We are of the opinion that:
(a) The Seller has full and clear record title to all of the Patent
Rights.
(b) To the best of our knowledge, neither the Seller nor ASI has rights in
any U.S. or foreign patents or patent applications relating to male and female
incontinence other than the Patent Rights.
(c) To the best of our knowledge, none of the U.S. or foreign patents in
the Patent Rights is unenforceable or invalid. We are not aware of any patent,
trade secret, or other
<PAGE>
-2-
intellectual property rights of others that are or would be infringed by
practicing the male or female incontinence technology described in the Patent
Rights.
(d) We are not aware of anyone who has asserted that he or she is an
inventor of the Patent Rights and who has not been named as such an inventor in,
or of any third party who has asserted that he or she has an ownership interest
in any of the Patent Rights or other Intellectual Property of the Seller or ASI.
(e) To the best of our knowledge, there are no pending legal or
governmental proceedings or litigation relating to the Patent Rights, other than
U.S. and foreign patent office review of pending patent applications, including
appeal proceedings, and, to the best of our knowledge, no such proceedings are
threatened or contemplated by governmental authorities or others.
(f) We are not aware of any contracts or other documents material to the
Patent Rights or other Intellectual Property of the Seller or ASI other than
those identified in the Agreement or in the schedules thereof. In particular, to
the best of our knowledge, the Patent Rights are not subject to any license
rights of any third party.
Very truly yours,
KLEIN & SZEKERES
___________________________________
Date: ___________________________________
<PAGE>
Exhibit F to
Asset Purchase Agreement
May 9, 1996
ASI Liquidating Trust
c/o Robert F. Rosenbluth, Ph.D.
Trustee
34216 Violet Lantern, Suite 201
Dana Point, CA 92629
Donald B. Milder
Trustee
Crosspoint Venture Partners
18552 McArthur Blvd., Suite 400
Irvine, CA 92715
Ladies and Gentlemen:
We have acted as special counsel to UroMed Corporation, a Massachusetts
corporation (the "Company"), in connection with its purchase of the Acquired
Assets under and as defined in the Asset Purchase Agreement, dated as of May 9,
1996 (the "Asset Purchase Agreement") by and between the Company, on the one
hand, and the ASI Liquidating Trust (the "Seller"), and the Indemnifying
Beneficiaries named on Annex A thereto, on the other hand. This opinion is being
furnished to you pursuant to Section 4.2 of the Asset Purchase Agreement.
Capitalized terms used herein without definition shall have the meanings
assigned to them in the Asset Purchase Agreement.
In connection with the rendering of this opinion, we have reviewed
originals or copies of each of the Asset Purchase Agreement, dated May 9, 1996,
delivered by the Company to the Seller, and the Registration Rights Agreement,
dated May 9, 1996, by and among the Company, the Seller and the Beneficiaries
named on the signature pages thereto (collectively, the "Acquisition
Documents"), copies, certified or otherwise identified to our satisfaction, of
the charter documents and by-laws of the Company, resolutions of the Board of
Directors of the Company authorizing the transactions contemplated by the Asset
Purchase Agreement, the certificates of public officials attached hereto as
Exhibit 1, and such other documents as we have deemed necessary or appropriate
for purposes of this opinion.
As to all matters of fact (including, without limitation, factual
conclusions and characterizations and descriptions of purpose, intention or
other state of mind), we have relied entirely upon the written representations
made to us by officers of the Company and attached hereto as Exhibit 2 and the
representations set forth in Sections 5 and 6 of the Asset Purchase
<PAGE>
-2-
Agreement have assumed, without independent inquiry, the accuracy of such
representations. As to any opinion below relating to the existence,
qualification or standing of the Company in any jurisdiction, our opinion relies
entirely on and is limited by those certificates attached hereto as Exhibit 1.
We have assumed the genuineness of all signatures, the conformity to the
originals of all documents reviewed by us as copies, the authenticity and
completeness of all original documents reviewed by us in original or copy form
and the legal competence of each individual executing any document.
When an opinion set forth below is given to the best of our knowledge, or
to our knowledge, or with reference to matters of which we are aware or which
are known to us, or with another similar qualification, the relevant knowledge
or awareness is limited to the actual knowledge or awareness of the individual
lawyers in the firm who have participated directly in the specific transactions
to which this opinion relates and without any special or additional
investigation or search of court dockets undertaken for the purposes of this
opinion.
Each opinion set forth below relating to the enforceability of any
agreement or instrument against the Company is subject to the following general
qualifications:
(i) as to any instrument or agreement delivered by the Company we
assume that the Company has received the agreed-to consideration therefor;
(ii) as to any agreement or instrument to which the Company is a
party, we assume that such agreement or instrument is the binding
obligation of each party thereto other than the Company;
(iii) the enforceability of any obligation of the Company may be
limited by bankruptcy, insolvency, fraudulent conveyance, reorganization,
moratorium, marshalling or other laws and rules of law affecting the
enforcement generally of creditors' rights and remedies (including such as
may deny giving effect to waivers of debtors' or guarantors' rights);
(iv) no opinion is given herein as to the availability of any
specific or equitable relief of any kind or the availability of any
particular contractually specified remedy;
(v) the enforcement of any of your rights may in all cases be
subject to an implied duty of good faith and to general principles of
equity (regardless of whether such enforceability is considered in a
proceeding at law or in equity); and
(vi) the enforceability of the indemnification and contribution
provisions of the Registration Rights Agreement may be limited by federal
or state securities laws or the public policy underlying such laws.
<PAGE>
-3-
With respect to our opinion in paragraphs 4 and 5 below, we have assumed
that the Seller was not required to make a filing under the Hart-Scott-Rodino
Antitrust improvements Act of 1976. Except with respect to any filings required
by the Company under such Act, we express no opinion on antitrust matters.
Subject to the limitations set forth below, we have made such examination
of law as we have deemed necessary for purposes of this opinion. This opinion is
limited solely to the internal substantive laws of The Commonwealth of
Massachusetts as applied by courts located in Massachusetts, and the Federal
laws of the United States of America (except with respect to matters involving
the Federal Food, Drug and Cosmetic Act, as amended, or the rules and
regulations thereunder, any matter relating to the United States Food and Drug
Administration, or any matter relating to patents, patent law, patent
applications or related matters), to the extent that the same may apply to or
govern such transactions. No opinion is given herein as to the choice of law or,
except as set forth above, the internal substantive rules of law that any
tribunal may apply to the transactions referred to herein.
We understand that all of the foregoing assumptions, limitations and
qualifications are acceptable to you.
Based upon the foregoing, we are of the opinion that:
1. The Company is a corporation validly existing and in corporate good
standing under the laws of the Commonwealth of Massachusetts.
2. The Acquisition Documents have been duly authorized by all necessary
corporate action of the Board of Directors and shareholders of the Company and
constitute the legal, valid and binding obligations of the Company enforceable
against it in accordance with their terms.
3. The shares of UroMed Common Stock to be issued to the Seller pursuant
to the terms of the Asset Purchase Agreement have been duly authorized and, when
such shares are issued and delivered against payment therefor as provided in the
Asset Purchase Agreement, will be validly issued, fully paid and non-assessable.
4. Neither the execution and delivery of the Acquisition Documents by the
Company nor the consummation by the Company of the transactions contemplated
thereby will constitute a violation of, or be in conflict with, or constitute or
create a default under, or result in the creation or imposition of any
encumbrance upon any property of the Company (including, without limitation, any
of the Acquired Assets) pursuant to, (a) the restated articles of organization
or By-laws of the Company, or (b) any provision of the laws or regulations of
Massachusetts or of Federal law or regulations, or (c) to the best of our
knowledge, any judgment, order, decree, stipulation, injunction, charge or other
restriction of any government, governmental agency or court or other tribunal to
which either the Company or any of its properties is subject.
5. Except for one or more registration statements on Form S-3 and other
documents and instruments that may be required to be filed pursuant to the
Registration Rights Agreement,
<PAGE>
-4-
no consent, approval or authorization of, or registration, qualification or
filing with, any governmental agency or authority is required under any
provision of Massachusetts or Federal law for the execution and delivery of the
Acquisition Documents by the Company or for the consummation by the Company of
the transactions contemplated thereby.
6. To the best of our knowledge, there is no litigation by any
governmental agency pending against the Company which questions the legality,
validity or propriety of the Acquisition Documents or of any action taken or to
be taken by the Company pursuant to the Acquisition Documents.
This opinion is rendered only as of the date hereof and we undertake no
obligation to inform you of changes in law occurring after the date hereof or
facts that subsequently come to our attention. This opinion has been delivered
solely for your use in connection with the transactions contemplated by the
Asset Purchase Agreement and may not be referred to or used for any other
purpose or relied upon by any other person without our prior written consent.
Very truly yours,
BINGHAM, DANA & GOULD LLP
Exhibit 99.1
FOR IMMEDIATE RELEASE
Contact:
Kristen Galfetti or Sally-Ann Jaffe
Investor Relations Specialist Account Executive
UroMed Corporation Sharon Merrill Associates, Inc.
617/433-0033 617/262-1800
UROMED CORPORATION ANNOUNCES ACQUISITION OF
MINIGUARD(TM) PATCH PRODUCT AND TECHNOLOGY
A Complementary Product to the Reliance(R) Insert, the Miniguard Patch Expands
UroMed's Market Opportunities, Strengthens Patent Portfolio
NEEDHAM, MA, May 10, 1996 -- UroMed Corporation (NASDAQ:URMD) today
announced that it has acquired from the Advanced Surgical Intervention (ASI)
Liquidating Trust all assets relating to the Miniguard Patch, a U.S. Food and
Drug Administration (FDA) cleared product, and other ASI-developed incontinence
technology. The Miniguard product is a small, disposable, prescription adhesive
patch placed externally against the urethral opening to help block leakage in
women with mild to moderate stress incontinence. Additionally, the acquisition
gives UroMed fundamental patents which the company believes broadly cover
incontinence barrier products that use adhesive technology.
UroMed purchased the Miniguard Patch and its related technology for $30
million, consisting of $7 million in cash and $23 million in common stock. The
transaction will be acounted for as a purchased research and development charge,
which UroMed expects to take in the second quarter of 1996.
Commenting on the acquisition, UroMed's chairman of the board and chief
executive officer John G. Simon said, "The Miniguard Patch is a complementary
product that furthers UroMed's leadership position in creating and marketing
effective options for improving the lifestyles of women with urinary
incontinence. Similar to pads and tampons in the case of menstruation, the
Miniguard and Reliance Insert devices form an exciting
<PAGE>
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combination, allowing UroMed to cover a broad range of needs for women suffering
from varying degrees of incontinence."
"The Miniguard Patch was designed to provide a new option for women with
stress incontinence that is discreet, external, easy to apply, and comfortable,"
said Dr. Robert F. Rosenbluth, former chief executive officer of ASI and
co-inventor of the Miniguard Patch. "In a clinical study conducted at 12 centers
nationwide with 356 incontinent women followed for more than 1,000 patient
months of usage, patient dryness, quality of life, and ability to conduct
various daily activities were significantly improved through wearing the
Miniguard Patch. More than 100,000 devices were used by these women during the
study. In a patient survey, 46 percent of patients reported being completely dry
with the product."
John Simon continued, "We are pleased that the FDA cleared the Miniguard
Patch 510(k) application for marketing in the United States on May 8, 1996. If
we successfully scale up manufacturing for commercial production of the
Miniguard Patch, and if we are successful with our market launch efforts, the
product should start to make a contribution to UroMed's growth as soon as late
1997. We believe that the Miniguard Patch is a very significant product that
fits with our stringent acquisition criteria."
UroMed Corporation was founded to develop, manufacture and market products
for the management of urological and gynecological disorders. The company's
first two products, the Reliance Urinary Control Insert and the Miniguard Patch,
are intended for the management of certain types of female urinary incontinence.
According to company estimates, urinary incontinence (UI), the loss of bladder
control resulting in the involuntary leakage of urine, afflicts approximately 26
million women in the United States, Japan and selected countries in Europe.
UroMed's Reliance Insert and Miniguard Patch are designed for an estimated
target market in excess of six million of these women worldwide who suffer from
certain types of UI and seek to maintain their active lifestyles. UroMed has
designated the Reliance Insert in order to provide the appropriate UI patient,
who now typically wears diapers or pads, with similar lifestyle benefits to
those conferred by a tampon in the case of menstruation. UroMed's Miniguard
Patch is designed for a broader group of mild to moderate UI patients.
# # #
Reliance(R) is a registered trademark of UroMed Corporation. Miniguard(TM) is a
trademark of UroMed Corporation.
