[*] CONFIDENTIAL TREATMENT REQUESTED. THE REDACTED MATERIAL
HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
EXHIBIT 10.8
LICENSE AGREEMENT
Effective as of April 1, 1998 ("Effective Date"), THE BOARD OF TRUSTEES OF THE
XXXXXX XXXXXXXX JUNIOR UNIVERSITY, a body having corporate powers under the laws
of the State of California ("STANFORD"), and THESEUS MEDICAL IMAGING, a Delaware
corporation having a principal place of business at Xxx Xxxxxxxxx Xxxxxx,
Xxxxxx, XX 00000 ("LICENSEE"), agree as follows:
1. BACKGROUND
1.1 STANFORD and University of Washington ("UW") has an assignment to "Imaging
of Programmed Cell Death (Apoptosis) Using Technetium 99m Radiolabeled
Annexin V" from the laboratories of Drs. H. Xxxxxxx Xxxxxxx and Xxxxxxx
Xxxxxxxxxxx here at STANFORD and Dr. Xxxx Xxxx at UW ("Invention[s]"), as
described in Stanford Docket S96-214, and any Licensed Patent(s), as
hereinafter defined, which may issue to such Invention(s).
1.2 STANFORD has certain technical data and information as herein defined
("Technology") pertaining to Invention(s).
1.3 STANFORD desires to have the Technology and Invention(s) perfected and
marketed at the earliest possible time in order Out products resulting
therefrom may be available for public use and benefit.
1.4 LICENSEE desires a license under said Technology, Invention(s), and
Licensed Patent(s) to develop, manufacture, use, and sell Licensed
Product(s) in the field of use of Human and Veterinary Diagnosis.
1.5 The Technology and Invention(s) were made in the course of research
supported by the National Institutes of Health and the Child Health
Research Fund.
1.6 STANFORD has entered into an agreement with UW granting STANFORD authority
to act on behalf of UW in connection with the licensing of UWs rights in
the Inventions and Technology.
1.7 STANFORD asserts that it has the right to enter into this license agreement
for the licensing of the rights to Invention(s) and Technology.
2. DEFINITIONS
2.1 "Licensed Patent(s)" means any Letters Patent issued upon STANFORD's U.S.
Provisional Patent Application, Serial Number 045399, filed April 30, 1997
and/or any divisions, continuations, or reissues, reexaminations and
extensions thereof as well as any continuation-in-part applications to the
extent that the practice of the Invention as contemplated on the Effective
Date would infringe the claims of any patent issuing from such
continuation-in-part application.
2.2 "Technology" means existing technical data and information, including,
but not limited to, the information contained in the Patent Application
pertaining to the Invention(s) and provided to the LICENSEE whether or
not it is of a confidential nature.
2.3 "Licensed Product(s)" means any product or part thereof in the Licensed
Field of Use, the manufacture, use, or sale of which:
(a) Is covered by a valid claim of an issued, unexpired Licensed
Patent(s) directed to the Invention(s). A claim of an issued,
unexpired Licensed Patent(s) shall be presumed to be valid unless
and until it has been held to be invalid by a final judgment of a
court of competent jurisdiction from which no appeal can be or is
taken;
(b) Is covered by any claim being prosecuted in a pending application
directed to the Invention(s); or
(c) Incorporates any of the Technology.
2.4 "Licensed Process(es)" means processes which, in the course of being
practiced would, in the absence of this Agreement, infringe one or more
claims of the Licensed Patents.
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HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
2.5 "Net Sales" means the gross revenue derived by LICENSEE and/or
sublicensee(s) from sales of Licensed Product(s) or practice of Licensed
Processes, less the following item but only insofar as they actually
pertain to the disposition of such Licensed Product(s) by LICENSEE or
sublicensee(s), are included in such gross revenue, and are separately
billed:
(a) Import, export, excise and sales taxes, and custom duties;
(b) Costs of insurance, packing, and transportation from the place of
manufacture to the customer's premises or point of installation;
(c) Costs of installation at the place of use; and
(d) Credit for returns, allowances, or trades.
2.6 "Licensed Field of Use" means-Human and Veterinary Diagnostics.
2.7 "Licensed, Territory" means World-wide.
2.8 "Exclusive" means that, subject to Article 4 STANFORD shall not grant
further licenses in the Licensed Territory in the Licensed Field of Use.
3. GRANT
3.1 STANFORD hereby grants and LICENSEE hereby accepts a license in the
Licensed Field of Use to make, use, and sell Licensed Product(s) in the
Licensed Territory and to practice licensed Processes in the Licensed Field
of Use.
3.2 Said license is Exclusive, including the right to sublicense pursuant to
Article 13, in the Licensed Field of Use for a term commencing as of the
Effective Date and ending upon the last to expire of Licensed Patent(s).
3.3 STANFORD shall have the right to practice: the Invention(s) and use the
Technology for itself or in collaboration with third party academic or
not-for-profit research institutions. STANFORD shall have the right to
publish any information included in Technology and Licensed Patent(s).
4. GOVERNMENT RIGHTS
This Agreement is subject to all of the terms and conditions of Xxxxx 00 Xxxxxx
Xxxxxx Code Sections 200 through 204, including an obligation that Licensed
Product(s) sold or produced in the United States be "manufactured substantially
in the United States," and LICENSEE agrees to take all reasonable action
necessary on its part as licensee to enable STANFORD to satisfy its obligation
thereunder, relating to Invention(s).
5. DILIGENCE
5.1 As an inducement to STANFORD to enter into this Agreement, LICENSEE agrees
to use all reasonable efforts and diligence to proceed with the
development, manufacture, and sale or lease of Licensed Product(s) and
Licensed Process(es) and to diligently develop markets for the Licensed
Product(s) and Licensed Process(es). LICENSEE shall demonstrate diligence
to STANFORD by achieving the goals outlined in Appendix A. In addition,
LICENSEE agrees that STANFORD may terminate this Agreement if LICENSEE or a
sublicensee(s) has not sold Licensed Product(s) or practiced Licensed
Process(es) for a period of one (1) year.
5.2 PROGRESS REPORT - On or before September 1 of each year until LICENSEE
markets a Licensed Product(s), LICENSEE shall make a written annual report
to STANFORD covering the preceding year ending June 30, regarding the
progress of LICENSEE toward commercial use of Licensed Product(s). Such
report shall include, as a minimum, information sufficient to enable
STANFORD to satisfy reporting requirements of the U.S. Government and for
STANFORD to ascertain progress by LICENSEE toward meeting the diligence
requirements of this Article 5.
6. ROYALTIES
6.1 LICENSEE agrees to pay to STANFORD a noncreditable, nonrefundable license
issue royalty of [*] upon signing this Agreement
6.2 Upon signing of this Agreement, LICENSEE will also issue to STANFORD
preferred shares of LICENSEE stock equal to [*] of the total issued stock
as of the Effective Date.
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HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
6.3 LICENSEE also agrees to pay the following minimum annual royalties to
STANFORD:
ANNIVERSARY OF EFFECTIVE DATE MINIMUM ANNUAL ROYALTY DUE
----------------------------- --------------------------
First and Second [*]
Third and Fourth [*]
Fifth and Thereafter [*]
These yearly royalty payments are nonrefundable, but are creditable
against earned royalties to the extent provided in Paragraph 6-7. These
yearly royalty payments are not considered delinquent if provided within 6
months of the due date.
6.4 In addition, on the first and second anniversary of the Effective Date of
this Agreement, LICENSEE will issue to STANFORD preferred shares of
LICENSEE stock equal to 0.125% of the total shares issued on that date.
6.5 LICENSEE will also pay STANFORD earned royalties on Net Sales as follows:
[*] on the first [*] of Net Sales annually [*] on additional Net Sales in
excess of [*] Million annually.
In the event that a royalty is paid to a third party for use of technology
required to be licensed from such third party in order to practice STANFORD
technology, if the royalty due the third party plus royalty payable to
STANFORD for any Licensed Product exceeds two times the royalty due
STANFORD, then the royalty due will be reduced by one-half of the excess
above two times the royalty stated above.
6.6 LICENSEE also agrees to pay to STANFORD upon the occurrence of the
following events, the following amounts:
EVENT MILESTONES
----- ----------
Upon the earlier of filing of a PLA in the United States-
or 5 1/2 years after the Effective Date [*]
Upon first Licensed Patent issuance [*]
Upon filing of the first Marketing Application in the E.U. [*]
Upon filing of a marketing application in Japan [*]
Upon issuance of marketing approval in the United States [*]
Upon issuance of first marketing approval in the E.U. [*]
Upon issuance of marketing approval in Japan [*]
6.7 Creditable payments under this Agreement shall be an offset to LICENSEE
against up to [*] of each earned royalty payment which LICENSEE would be
required to pay pursuant to Paragraph 6.5 until the entire credit is
exhausted.
6.8 If this Agreement is not terminated in accordance with other provisions
hereof, LICENSEE's obligation to pay royalties hereunder shall continue
until the latter of:
(a) [*] years, if no Licensed Patent(s) issues; or
(b) For so long as LICENSEE, by its activities would, but for the license
granted herein, infringe a valid claim of an unexpired Licensed
Patent(s) of STANFORD covering said activity.
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HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
6.9 The royalty on sales in currencies other than U.S. Dollars shall be
calculated using the appropriate foreign exchange rate for such currency
quoted by the Bank of America (San Francisco) foreign exchange desk on the
close of business on the last banking day of each calendar quarter. Royalty
payments to STANFORD shall be in U.S. Dollars. All non-U.S. taxes related
to royalty payments shall be paid by LICENSEE and are not deductible from
the payments due STANFORD.
6.10 Within thirty (30) days after receipt of a statement from STANFORD,
LICENSEE shall reimburse STANFORD:
(a) [*] to offset patent expenses corresponding to the Invention(s)
incurred by Stanford prior to the Effective Date; and
(b) for all costs incurred by Stanford in connection with the preparation,
filing and prosecution of all patent applications and maintenance of
patents corresponding to the Invention(s) after the Effective Date.
7. ROYALTY REPORTS, PAYMENTS, AND ACCOUNTING
7.1 QUARTERLY EARNED ROYALTY PAYMENT AND REPORT - Beginning with the first sale
of a Licensed Product(s), LICENSEE shall make written reports (even if
there are no sales) and earned royalty payments to STANFORD within thirty
(30) days after the end of each calendar quarter. This report will state
the number, description, and aggregate Net Sales of Licensed Product(s)
during such completed calendar quarter, and resulting calculation pursuant
to Paragraph 6-5 of earned royalty payment due STANFORD for such completed
calendar quarter. Concurrent with the making of each such report, LICENSEE
shall include payment due STANFORD of royalties for the calendar quarter
covered by such report.
7.2 ACCOUNTING - LICENSEE agrees to keep and maintain records for a period of
three (3) years showing the manufacture, sale, use, and other disposition
of products sold or otherwise disposed of under the license herein granted
records will include general ledger records showing cash receipts and
expenses, and records which included production on-records, customers,
serial numbers, and related information in sufficient detail to enable the
royalties payable hereunder by LICENSEE to be determined. LICENSEE further
agrees to permit its books and records to be examined by STANFORD from time
to time to the extent necessary to verify reports provided for in Paragraph
7.1. Such examination is to be made by STANFORD or its designee, at the
expense of STANFORD, except in the event that the results of the audit
reveal an underreporting of royalties due STANFORD of [*] or more, then the
audit costs shall be paid by LICENSEE.
8. NEGATION OF WARRANTIES
8.1 Nothing in this Agreement is or shall be construed as:
(a) A warranty or representation by: STANFORD as to the validity or scope
of any Licensed Patent(s);
(b) A warranty or representation that anything made, used, sold, or
otherwise disposed of under any license granted in this Agreement is
or will be free from infringement of patents, copyrights, and other
rights of third parties;
(c) An obligation to bring or prosecute actions or suits against third
parties for infringement, except to the extent and in the
circumstances described in Article 12;
(d) Granting by implication, estoppel, or otherwise any licenses or rights
under patents or other rights of STANFORD or other persons other than
Licensed Patent(s), regardless of whether such patents or other rights
are dominant or subordinate to any Licensed Patent(s); or
(e) An obligation to furnish any technology or technological information
other than the Technology.
8.2 Except as expressly set forth in this Agreement, STANFORD MAKES NO
REPRESENTATIONS AND EXTENDS NO WARRANTIES, OF ANY KIND, EITHER EXPRESS OR
IMPLIED. THERE ARE NO EXPRESS OR IMPLIED WARRANTIES OF MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE, OR THAT THE USE OF THE LICENSED
PRODUCT(S) WILL NOT INFRINGE ANY PATENT, COPYRIGHT, TRADEMARK, OR OTHER
RIGHTS OR ANY OTHER EXPRESS OR IMPLIED WARRANTIES.
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HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
8.3 LICENSEE agrees that nothing in this Agreement grants LICENSEE any express
or implied license or right under or to U.S. Patent 4,656,134
"Amplification of Eucaryotic Genes" or any patent application corresponding
thereto.
9. INDEMNITY
9.1 LICENSEE agrees to indemnify, hold harmless, and defend STANFORD,
UCSF-Stanford Health Care and Stanford Health Services and their respective
trustees, officers, employees, students, and agents against any and all
claims for death, illness, personal injury, property damage, and improper
business practices arising out of the manufacture, use, sale, or other
disposition of Invention(s), Licensed Patent(s), Licensed Product(s),
Licensed Process(es) or Technology by LICENSEE or sublicensee(s), or their
customers.
9.2 STANFORD shall not be liable for any indirect, special, consequential or
other damages whatsoever, whether grounded in: tort (including negligence),
strict liability, contract or otherwise. STANFORD shall not have any
responsibilities or liabilities whatsoever with respect to Licensed
Products(s).
9.3 LICENSEE shall at all times comply, through insurance or self-insurance,
with all statutory workers' compensation and employers' liability
requirements covering any and all employees with respect to activities
performed under this Agreement.
9.4 In addition to the foregoing, LICENSEE shall maintain, during the term of
this Agreement, Comprehensive General Liability Insurance, including
Products Liability Insurance, with reputable and financially secure
insurance carrier(s) to cover the activities of LICENSEE and its
sublicensee(s). Such insurance shall provide minimum limits of liability of
$5 Million and shall include STANFORD, UCSF-Stanford Health Care, Stanford
Health Services, their trustees, directors, officers, employees, students,
and agents as additional insureds. Such insurance shall be written to cover
claims incurred, discovered, manifested, or made during or after the
expiration of this Agreement and should be placed with carriers with
ratings of at least A- as rated by A.M. Best Within 15 days of the
Effective Date of this Agreement, LICENSEE shall furnish a Certificate of
Insurance evidencing primary coverage and additional insured requirements
and requiring thirty (30) days prior written notice of cancellation or
material change to STANFORD. LICENSEE shall advise STANFORD, in writing,
that it maintains excess liability coverage (following form) over primary
insurance for at least the minimum limits set forth above. All such
insurance of LICENSEE shall be primary coverage; insurance of STANFORD,
UCSF-Stanford Health Care, and Stanford Health Services shall be excess and
noncontributory.
10. MARKING
Prior to the issuance of patents on the Invention(s), LICENSEE agrees to xxxx
Licensed Products (or their containers or labels) made, sold, or otherwise
disposed of by it under the license granted in this Agreement with the words
"Patent Pending," and following the issuance of one or more patents, with the
numbers of the Licensed Patent(s).
11. STANFORD NAMES AND MARKS
LICENSEE agrees not to identify STANFORD in any promotional advertising or other
promotional materials to be disseminated to the public or any portion thereof or
to use the name of any STANFORD faculty member, employee, or student or any
trademark, service xxxx, trade name, or symbol of STANFORD, Stanford Health
Services or UCSF-Stanford Health Care, or that is associated with any of them,
without STANFORD's prior written consent.
12. INFRINGEMENT BY OTHERS: PROTECTION OF PATENTS
12.1 LICENSEE shall promptly inform STANFORD of any suspect infringement of any
Licensed Patent(s) by a third party. During the Exclusive period of this
Agreement, STANFORD and LICENSEE each shall have the right to institute an
action for infringement of the Licensed Patent(s) against such third party
in accordance with the following:
(a) If STANFORD and LICENSEE agree to institute suit jointly, the suit
shall be brought in both their names, the out-of-pocket costs thereof
shall be borne equally, and any recovery or settlement shall be shared
equally. LICENSEE and STANFORD shall agree to the manner in which they
shall exercise control over such action. STANFORD may, if it so
desires also be represented by separate counsel of its own selection,
the, fees for which counsel shall be paid by STANFORD;
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HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
(b) In the absence of agreement to institute a suit jointly, STANFORD may
institute suit, and, at its option, join LICENSEE as a plaintiff. If
STANFORD decides to institute suit, then it shall notify LICENSEE in
writing. LICENSEE's failure to notify STANFORD in writing, within
fifteen (15) days after the date of the notice, that it will join in
enforcing the patent pursuant to the provisions hereof, shall be and
be deemed conclusively to be LICENSEE's assignment to STANFORD of all
rights, causes of action, and damages resulting from any such alleged
infringement. STANFORD shall bear the entire cost of such litigation
and shall be entitled to retain the entire amount of any recovery or
settlement; and
(c) In the absence of agreement to institute a suit jointly and if
STANFORD notifies LICENSEE that it has decided not to join in or
institute a suit, as provided in (a) or (b) above, LICENSEE may
institute suit and, at its option, join STANFORD as a plaintiff.
LICENSEE shall bear the entire cost of such litigation. Any recovery
in excess of litigation costs will be shared with STANFORD as follows:
1. Any payment for past sales will be deemed to be Net Sales and
LICENSEE will pay STANFORD royalties thereon at the rates
specified in Paragraph 6.6; and
2. any payment which covers future sales will be deemed a sublicense
and royalties will be shared as specified in Article 13.
LICENSEE and STANFORD agree to negotiate in good faith an appropriate
compensation to STANFORD for any non-cash settlement or non-cash
cross-license. STANFORD will not share in the portion of the recovery,
if any, that is payment for "willful infringement."
12.2 Should either STANFORD or LICENSEE commence a suit under the provisions o
Paragraph 12.1 and thereafter elect to abandon the-same, it shall give
timely notice to the other party who may, if it so desires, continue
prosecution of such suit, provided, however, that the sharing of expenses
and any recovery in such suit shall be as agreed upon between STANFORD and
LICENSEE.
13. SUBLICENSE(S)
13.1 LICENSEE may grant sublicense(s) during the Exclusive period.
13.2 If LICENSEE is unable or unwilling to serve or develop a potential market
or market territory for which there is a willing sublicensee(s), LICENSEE
will, at STANFORD's request, negotiate in good faith a sublicense(s)
hereunder.
13.3 Any sublicense(s) granted by LICENSEE under this Agreement shall be subject
and subordinate to terms and conditions of this Agreement, except:
(a) Sublicense terms and conditions shall reflect that any
sublicensee(s) shall not further sublicense; and
(b) The earned royalty rate specified in the sublicense(s) may be at
higher rates than the rates in this Agreement.
Any such sublicense(s) also shall expressly include the provisions of
Articles 7, 8, and 9 for the benefit of STANFORD and provide for the
transfer of all obligations, including the payment of royalties specified
in such sublicense(s), to STANFORD or its designee, in the event that this
Agreement is terminated.
13.4 LICENSEE agrees to provide STANFORD a copy of any sublicense granted
pursuant to this Article 13.
13.5 LICENSEE will pay to STANFORD [*] of all payments received through
sublicensing in addition to earned royalty income received by LICENSEE from
its sublicensee(s) which is payable to STANFORD pursuant to Article 6.
14. TERMINATION
14.1 LICENSEE may terminate this Agreement by giving STANFORD notice in writing
at least thirty (30) days in advance of the effective date of termination
selected by LICENSEE.
14.2 STANFORD may terminate this Agreement if: LICENSEE:
(a) Is in default in payment of royalty or providing of reports;
(b) Is in breach of any provision hereof; or
(c) Provides any false report; and LICENSEE fails to remedy any such
default, breach, or false report within thirty (30) days after written
notice thereof by STANFORD.
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HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
14.3 Surviving any termination are:
(a) LICENSEE's obligation to pay royalties accrued or accruable;
(b) Any cause of action or claim of LICENSEE or STANFORD, accrued or to
accrue, because of any breach or default by the other party; and
(c) The provisions of Articles 7, 8, and 9.
15. ASSIGNMENT
This Agreement may not be assigned.
16. ARBITRATION
16.1 Any controversy arising under or related to this Agreement, and any
disputed claim by either party against the other under this Agreement
excluding any dispute relating to patent validity or infringement arising
under this Agreement, shall be settled by arbitration in accordance with
the Licensing Agreement Arbitration Rules of the American Arbitration
Association.
16.2 Upon request by either party, arbitration will be by a third party
arbitrator mutually agreed upon in writing by LICENSEE and STANFORD within
thirty (30) days of such arbitration request. Judgment upon the award
rendered by the arbitrator shall be final and nonappealable and may be
entered in any court having jurisdiction thereof.
16.3 The parties shall be entitled to discovery in like manner as if the
arbitration were a civil suit in the California Superior Court. The
Arbitrator may limit the scope, time and/or issues involved in discovery.
16.4 Any arbitration shall be held at Stanford, California, unless the parties
hereto mutually agree in writing to another place.
17. NOTICES
All notices under this Agreement shall be deemed to have been fully given when
done in writing and deposited in the United States mail, registered or
certified, and addressed as follows:
To STANFORD: Office of Technology Licensing
Stanford University
000 Xxxxx Xxxx, Xxxxx 000
Xxxx Xxxx, XX 00000-00X
Attention: Director
To LICENSEE: Theseus Medical Imaging
Xxx Xxxxxxxxx Xxxxxx
Xxxxxx, XX 00000
Attention:
Either party may change its address upon written notice to the other party.
18. WAIVER
None of the terms of this Agreement can be waived except by the written consent
of the party waiving compliance.
19. APPLICABLE LAW
This Agreement shall be governed by the laws of the State of California
applicable to agreements negotiated, executed and performed wholly within
California.
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HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement in duplicate
originals by their duly authorized officers or representatives.
THE BOARD OF TRUSTEES OF THE XXXXXX
XXXXXXXX JUNIOR UNIVERSITY
Signature /s/ XXXXXXXXX XX
-----------------------------------------------------
Name XXXXXXXXX XX
---------------------------------------------------------
Title DIRECTOR, TECHNOLOGY LICENSING
---------------------------------------------------------
THESEUS MEDICAL IMAGING
Signature /s/ XXXXXX XXXXXX
-----------------------------------------------------
Name XXXXXX XXXXXX
---------------------------------------------------------
Title VICE PRESIDENT AND DIRECTOR
---------------------------------------------------------
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HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
Appendix A
Goals - Time from Effective Date of the Agreement
Within 15 months:
GMP Production of Annexin V as the basis of a radiopharmaceutical product
suitable for human use.
Within 18 months:
Filing of IND to initiate human clinical trials of imaging product
incorporating license technology.
Within 30 months:
Initiation of Phase III clinical trials of diagnostic product incorporating
licensed technology.
Within 48 months:
Filing of PLA (license application) with FDA in US.
Within 48 months:
Filing of marketing application in the European Union.
[*] CONFIDENTIAL TREATMENT REQUESTED. THE REDACTED MATERIAL
HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
AMENDMENT NO. 1
to the
License Agreement
Effective April 1, 1998
Between
STANFORD UNIVERSITY
and
THESEUS MEDICAL IMAGING
1. BACKGROUND
1.1 STANFORD and THESEUS are parties to a License Agreement effective April 1,
1998 ("Original Agreement") covering "Imaging of Programmed Cell Death
(Apoptosis) Using Technetium 99m Radiolabled Annexin V" hereinafter
referred to as "Invention" as described in Stanford Docket S96-214.
1.2 To facilitate the sale of THESEUS and the commercialization of the
Invention, THESEUS desires a reduction in earned royalties owed to
STANFORD.
1.3 To commercialize the Invention, THESEUS has licensed patents from two other
parties. Both of these parties have verbally agreed to a similar reduction
in royalties.
1.4 THESEUS has issued common shares of stock and has not issued preferred
shares.
2. AMENDMENTS
2.1 Delete Paragraph 2.5 of Original Agreement and replace with the following:
"2.4 Net Sales" means the gross amounts invoiced for sales of Licensed
Products or practice of Licensed Processes by LICENSEE, its Affiliates or
sublicensees, less (a) discounts actually granted, (b) credits or
allowances granted upon claims, damaged goods, rejections or returns of
Licensed Products, including recalls, (c) freight, postage shipping and
insurance charges actually allowed or paid for delivery of Licensed
Products, to the extent billed, and (d) taxes, duties or other governmental
charges (0ther than income taxes and non-U.S. taxes to be paid by LICENSEE
under paragraph 6.9) levied on, absorbed or otherwise imposed on sales of
Licensed Products."
2.2 Add Paragraph 2.9 to Original Agreement as follows: "2.9 "Affiliates" means
any person, corporation, or other business entity which controls, is
controlled by, or is under common control with LICENSEE; and for this
purpose, "control" of a corporation means the direct or indirect ownership
of more than fifty percent (50%) of its voting stock, and "control" of any
other business entity means the direct or indirect ownership of greater
than fifty percent (50%) interest in the income of such entity.
2.3 Delete paragraph 6.2 of Original Agreement and replace with the following:
"6.2 LICENSEE will also issue to STANFORD common shares of LICENSEE stock
equal to 0.25% of the total stock as of the Effective Date."
[*] CONFIDENTIAL TREATMENT REQUESTED. THE REDACTED MATERIAL
HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
2.4 Delete Paragraph 6.5 and replace with the following: "6.5 LICENSEE will
also pay STANFORD [*] earned royalties on Net Sales. In the event that a
royalty is paid to a third party for use of technology required to be
licensed from such third party in order to practice STANFORD technology, if
the royalty due the third party plus the royalty payable to STANFORD for
any Licensed Product exceeds two times the royalty due STANFORD, then the
royalty due will be reduced by one-half of the excess above two times the
royalty stated above."
3. This Amendment will be effective when THESEUS has met its obligations under
the Original Agreement, in particular, Paragraph 6.2 of the Original
Agreement.
4. All other terms and conditions of the Original Agreement will remain in
full force and effect.
IN WITNESS WHEREOF, the parties hereto have executed these presents in duplicate
by their duly authorized officers or representatives.
THE BOARD OF TRUSTEES OF THE XXXXXX
XXXXXXXX JUNIOR UNIVERSITY
Signature /s/ XXXXXXXXX XX
-----------------------------------------------------
Name
----------------------------------------------------------
Title
---------------------------------------------------------
Date
----------------------------------------------------------
THESEUS MEDICAL IMAGING
Signature /s/ XXXXXX XXXXXX
-----------------------------------------------------
Name
----------------------------------------------------------
Title
---------------------------------------------------------
Date
----------------------------------------------------------
2