EXHIBIT 10.42
First Amendment to the License Agreement
This Amendment is made as of this first day of October 2002 ("Effective Date")
by and between Genencor International, Inc., a Delaware corporation with its
principal place of business at 000 Xxxx Xxxx Xxxx, Xxxx Xxxx, XX 00000 ("GCOR")
and Protein Polymer Technologies, Inc., a Delaware corporation with its
principal place of business at 00000 Xxxxxxxx Xxxxxx Xxxx, Xxx Xxxxx, XX 00000
("PPT").
WHEREAS, GCOR and PPT have entered into a certain License Agreement dated
December 21, 2000 (the "Agreement") incorporated herein;
WHEREAS, GCOR desires to amend the License Agreement in order to obtain an
exclusive license to the Licensed Rights in the Personal Care Held (as defined
herein) and PPT agrees to amend the license to grant GCOR such rights;
NOW THEREFORE, in consideration of the foregoing premises and the mutual
covenants contained herein, the parties agree as follows:
I. Pursuant to this Amendment the Agreement shall be amended as follows:
A. Section 1.6 shall be amended to read as follows (amended text is
underlined):
"Field" shall mean the research, development, production and/or sale of
products or processes incorporating Licensed Patents or Licensed Know-How
for any and all applications including but not limited to the Application
Fields but excluding those applications other than as expressly set forth
herein, that are subject to regulation in the United States under the Food,
Drug and Cosmetics Act, the Medical Devices Act and any amendments or
updates thereto (these regulated applications hereinafter referred to as
the "Health Care Field"); provided however, that during the period
beginning October 1, 2002 and ending September 30, 2003, the entire
Personal Care Field shall be included in the Field; and further provided,
that upon timely exercise and approval of an Option to include a specified
Products area of the Personal Care Field, such specified Products area
shall be included in the Field unless and until the license thereto shall
lapse as provided in Section 2.1(b).
B. New Sections 1.15 and 1.16 shall be added as follows:
1.15 "Cosmetic" shall mean 1) articles intended to be rubbed, poured,
sprinkled, or sprayed on, introduced into, or otherwise applied to the
human body or any
part thereof for cleansing, beautifying, promoting attractiveness, or
altering the appearance, and 2) articles intended for use as a
component of any such articles; except that such term shall not
include soap.
1.16 "Personal Care Field" shall mean the research, development,
production and/or sale of products or processes incorporating Licensed
Patents or Licensed Know-How for use as a Cosmetic or in a consumer
care product having a consumer noticeable benefit or claim but not
regulated under the Food, Drug and Cosmetics Act, the Medical Devices
Act and any amendments or updates thereto, in skin care ("Skin Care
Products"), hair care ("Hair Care Products"), or oral care or other
personal care markets ("Other Personal Care Products"). For the
avoidance of doubt, even if the products or processes used or sold in
the Personal Care Field are subject to regulation in the United States
under the Food, Drug and Cosmetics Act, the Medical Devices Act and
any amendments or updates thereto, (collectively "The Act") they shell
not be deemed to be within the Health Care Field retained by PPT,
unless such products are drugs, devices or biologicals as defined
under "The Act".
C. Section 2.1(a) shall be amended to read as follows (amended text is
underlined):
Upon expiration of the Initial Grant Period for the remainder of the
term of this Agreement, GCOR's exclusive license will automatically
convert to a worldwide, royalty-bearing (in accordance with Article
III below), exclusive and sublicenseable (in accordance with Section
2.2 below) right and license to practice the Licensed Patents and
Licensed Know-How to make, have made, use, promote, market,
distribute, import and sell Licensed Products within the Application
Fields and, beginning on the date of addition to the license in
accordance with Section 2.1(b), any Additional Application Fields
added at any time during the term of this Agreement, and, beginning on
the date of addition to the license in accordance with Section 2.1
(b), the specific Products area of the Personal Care Field added at
any time on or before September 30, 2003, subject to the provisions of
Section 3.2 and Article V of this Agreement.
D. Section 2.1(b) shall be amended to read as follows (amended text is
underlined):
At any time during the term of this Agreement GCOR shall have the
option to expand the Application Fields to include Additional
Application Fields, and at any time on or before September 30, 2003
GCOR shall have the option to expand the Application Fields to include
the Hair Care Products, Skin Care Products and/or Other Personal Care
Products area(s) from the Personal Care Field (in each case, an
"Option"). To exercise its Option GCOR shall provide PPT written
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notice of its intent to initiate, either on its own or with a third
party, a program for the development of Licensed Product in a
specified Additional Application Field or specified Products area of
the Personal Care Field. GCOR shall not have the right to exercise
such Option without the prior written approval of PPT, which approval
shall not be untimely or unreasonably withheld. Upon such approval by
PPT, the specified Additional Application Field or specified Products
area of the Personal Care Field shall be included within GCOR's
exclusive license. Should GCOR fail to initiate a development program
within the specified Additional Application Field or specified
Products area of the Personal Care Field within twelve (12) months
from approval by PPT, GCOR's right and license to said Additional
Application Field or specified Products area of the Personal Care
Field shall lapse.
E. Section 3.2 shall be amended by adding new Sections 3.2(d) and (e) as
follows:
(d) One Hundred Thousand US Dollars ($100,000) within thirty (30)
days after the DFCS of the first Core Product in each of the Hair
Care Products, Skin Care Products and Other Personal Care
Products areas within the Personal Care Field and One Hundred
Thousand US Dollars ($100,000) upon the one year anniversary of
DFCS of said first Core Product in each Hair Care Products, Skin
Care Products and Other Personal Care Products area within the
Personal Care Field.
(e) One Hundred Thousand US Dollars ($100,000) within thirty (30)
days after the DFCS in each of the Hair Care Products, Skin Care
Products and Other Personal Care Products areas within the
Personal Care Field of each and every subsequent Core Product.
And by amending the proviso to read as follows (amended text is
underlined):
provided that collectively, the Milestone Payments under Sections
3.2(a), (b) and (c) only shall not exceed a cumulative amount of
Five Million US Dollars ($5,000,000). For illustrative purposes
only hypothetical milestone triggering events under Section
3.2(b) and (c) are set forth in Exhibit 3.2(b-c).
F. The introductory sentence of Section 5.1 is hereby amended to read as
follows (amended text is underlined):
GCOR's exclusive license as granted in Article III will convert to a
non-exclusive license subject to Section 5.2 hereof if GCOR fails to
make a combined Minimum
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Payment arising from either (i) Milestone Payments pursuant to
Sections 3.2(a)(e) and Royalties pursuant to Section 3.3 but excluding
the Seven Hundred and Fifty Thousand US Dollars ($750,000) upfront fee
or (ii) a lump sum payment to PPT as follows:
G. Section 5.2 is amended by adding to the end of the sentence the phrase "and
the specified Products area(s) of the Personal Care Field."
II. Except to the extent modified or amended herein, all other terms and
conditions of the Agreement shall remain in full force and effect.
III. Terms used but not defined herein shall have the same meaning as set forth
in the Agreement.
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IN WITNESS WHEREOF, this Amendment has been entered into on the Effective Date.
GENENCOR INTERNATIONAL, INC.
Date: October 4, 2002 /s/ Xxxxxxx X. Xxxxxx
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Name: Xxxxxxx X. Xxxxxx, Ph.D.
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Title: Senior Vice Present. Technology
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PROTEIN POLYMER TECHNOLOGIES, INC.
Date: October 4, 2002 By:/s/ J. Xxxxxx Xxxxxxxxx
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Name: J. Xxxxxx Xxxxxxxxx
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Title: President
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