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EXHIBIT 10.16
FIRST AMENDMENT TO
RESEARCH COLLABORATION AND LICENSE AGREEMENT
This First Amendment to Research Collaboration and License Agreement
("Amendment") is entered into as of January 1, 1997 ("Effective Date"), by and
between CellPro Incorporated, a corporation organized and existing under the
laws of the State of Delaware, with its principal business offices located at
00000 00xx Xxxxxx X.X., Xxxxxxx, Xxxxxxxxxx 00000 ("CellPro") and Corixa
Corporation, a company organized and existing under the laws of the State of
Delaware, with its principal business offices located at 0000 Xxxxxxxx Xxxxxx,
Xxxxx 000, Xxxxxxx, Xxxxxxxxxx 00000 ("Corixa"), and amends the Research
Collaboration and License Agreement effective as of November 1, 1995, by and
between CellPro and Corixa ("Research Collaboration and License Agreement").
WHEREAS, CellPro and Corixa have previously entered into the Research
Collaboration and License Agreement;
WHEREAS, CellPro and Corixa now desire to amend certain terms and
conditions of the Research Collaboration and License Agreement as hereinafter
specified;
WHEREAS, CellPro and Corixa desire that all other terms and conditions
of the Research Collaboration and License Agreement remain in full force and
effect;
NOW, THEREFORE, the parties hereto agree as follows:
1. Capitalized terms in this Amendment shall have the same meaning as
those in the Research Collaboration and License Agreement, unless specifically
defined in this Amendment. All Article and Section references are in regard to
the Research Collaboration and License Agreement. References to the term
"Agreement" in the Research Collaboration and License Agreement shall be deemed
to include this Amendment.
2. Except as expressly modified herein, the Research Collaboration and
License Agreement shall remain in full force and effect in accordance with its
terms. To the extent that there are any inconsistencies or ambiguities between
this Amendment and the Research Collaboration and License Agreement, the terms
of this Amendment shall supersede the Research Collaboration and License
Agreement.
3. Section 1.4 of the Research Collaboration and License Agreement shall
be replaced in its entirety by the following:
"CELLPRO FIELD" means [***] the adoptive immunotherapy of Cancer. The
CellPro Field shall not be deemed to include the Joint Field (defined in
Section
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3.5(a)hereof).
4. Subsection 1.5(b) of the Research Collaboration and License Agreement
shall be e replaced in its entirety by the following:
(b) [***], and
(c) [***].
5. Section 1.9 of the Research Collaboration and License Agreement shall
be replaced in its entirety by the following:
"CORIXA FIELD" means any application, market or other use other than the
CellPro Field, the CellPro Technical Field and the Joint Field. Corixa
Field includes, without limitation: the discovery and development of
proprietary [***]. The Corixa Field shall not be deemed to include the
Joint Field.
6. In the first sentence of Section 1.25 of the Research Collaboration
and License Agreement, "or license or sublicense of the Joint Field Technology"
shall be inserted between "...Corixa Technology" and ", such as up-front license
fees...".
7. Section 1.26 of the Research Collaboration and License Agreement
shall be replaced in its entirety with the following:
"TECHNOLOGY" means: all discoveries, developments, designs, inventions,
processes, whether patentable or non-patentable; all intellectual
property rights associated therewith; and know-how, that is (a)
currently or at any time during the Research Term [***], or (b) made,
conceived or reduced to practice as a result of the Research Program.
8. In the second sentence of Section 2.1(a) of the Research
Collaboration and License Agreement, "[***]" shall be inserted between
"...tumor antigens, ..." and "...antigen delivery systems...".
9. The following shall be inserted after the fifth sentence in
Subsection 2.1(c) of the Research Collaboration and License Agreement:
The parties agree that any annual percentage increase to Corixa's
full-time
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equivalent rate ("FTE") shall not exceed [***], and that Corixa shall
provide CellPro with written notice of any increases to the FTE rates at
the time a proposed annual budget is presented by Corixa for approval by
CellPro.
10. Section 3.1(a) of the Research Collaboration and License Agreement
shall be replaced in its entirety with the following.
(a) Corixa hereby grants to CellPro a worldwide license in the CellPro
Field and the Joint Field, with the right to sublicense, to use the
Corixa Technology for research and development: (i) in accordance with
the Research Program during the Research Term, (ii) in its own
independent research and development inthe CellPro Field and the Joint
Field, (iii) in collaboration with third parties in the CellPro Field
and the Joint Field (provided that CellPro will not grant any right or
sublicense to the Corixa Technology except under a sublicense granted in
accordance with Section 3.3). The foregoing license shall be exclusive
except as to Corixa (and, pursuant to Section 2.1, any third party
performing Corixa's obligations under the Research Program) in the
CellPro Field and shall be coexclusive with Corixa in the Joint Field.
11. The following shall be inserted as Section 3.1(c) of the Research
Collaboration and License Agreement:
Corixa hereby grants to CellPro a worldwide license in the Joint Field,
with the right to sublicense, under the Joint Field Technology to make,
have made, use, sell and have sold products based on or incorporating
Joint Field Technology (defined in Section 3.5(b) hereof). Except as
otherwise stated in Section 3.5, all terms and conditions of this
Agreement will apply to the foregoing license grant.
12. Section 3.2 of the Research Collaboration and License Agreement
shall be replaced in its entirety with the following:
(a) CellPro hereby grants to Corixa a nonexclusive license to use the
CellPro Technology for research and development only in accordance with
the Research Program during the Research Term.
(b) CellPro hereby grants to Corixa a worldwide license in the Joint
Field, with the right to sublicense, under the Joint Field Technology to
make, have made, use, sell and have sold products based on or
incorporating Joint Field Technology. Except as otherwise stated in
Section 3.5, all terms and conditions of this Agreement will apply to
the foregoing license grant.
13. The following shall be inserted at the end of Section 3.4 of the
Research
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Collaboration and License Agreement:
3.5 JOINT FIELD TECHNOLOGY.
(a) "Joint Field" shall mean:
(i) the in vivo use for adoptive immunotherapy of Cancer [***]
(dendritic [***] cells [***]); and
(ii) subject to CellPro's exercise of its option under Section
4.2 of this Agreement, the in vivo use for adoptive
immunotherapy of [***] antigen-presenting cells (dendritic
[***] cells), [***].
(b) OWNERSHIP OF JOINT FIELD TECHNOLOGY. CellPro and Corixa shall
jointly own any Technology within the Joint Field ("Joint Field
Technology") that is conceived, developed or reduced to practice solely
by either of the parties hereunder or any Affiliate thereof, or jointly
by the parties hereunder and/or their Affiliates.
(c) LICENSING OF JOINT FIELD TECHNOLOGY BY CELLPRO. CellPro shall
promptly provide Corixa with a copy f all licenses and sublicenses for
the Joint Field Technology granted to third parties by CellPro.
(d) LICENSING OF JOINT FIELD TECHNOLOGY BY CORIXA.
(i) In the event Corixa grants any license or sublicense rights
to use the Joint Field Technology on economic terms more
favorable than those agreed to by CellPro in the royalty and
milestone Sections set forth in Article 6 of this Agreement,
then CellPro's royalty percentages or the base on which they are
paid under Article 6 hereof shall automatically be modified to
reflect the lower amounts payable under such license or
sublicense.
(ii) Corixa shall pay CellPro as follows for all rights to use
the Joint Field Technology that are licensed or sublicensed to
third parties by Corixa:
(A) The greater of (i) [***]% of any up-front
License Fee received by Corixa for the licensing
of such rights or (ii) $[***], for each license
granted. "License Fee" means, after
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deduction of [***], the fair market value of all
consideration, both monetary and nonmonetary,
paid to Corixa pursuant to any rights in the
Joint Field Technology licensed or sublicensed
by Corixa such as up-front license fees and
milestones, but excluding any amount includable
in Net Sales Price, any consideration in the
form of a cross-license to technology owned for
controlled by the Joint Field Technology
licensee, an ownership interest in Corixa or
consideration that, pursuant to the license of
Joint Field Technology is to be used to support
Corixa research and development in connection
with the Joint Field Technology during the term
of such Joint Field Technology license;
(B) [***]% of any License Fees other than an up-
front License Fee;
(C) [***]% of royalties, net of all related third
party royalties payable by Corixa, payable to
Corixa by any Joint Field Technology licensee in
connection with the sale of products based on or
incorporating Joint Field Technology.
(iii) Corixa shall promptly provide CellPro with notice of all
licenses and amendments thereto to use the Joint Field
Technology granted by Corixa. For each such license or
amendment, Corixa shall have the option to promptly provide a
copy to CellPro. If no such copy is provided, CellPro shall have
the right, acting through an independent auditor, to audit such
license or amendment to insure compliance with the terms set
forth in this Subsection 3.5(d).
(iv) The terms of this Subsection 3.5(d) shall apply to all
License Fees received by Corixa pursuant to sublicenses in the
Joint Field Technology that are granted by third parties
pursuant to sublicense rights in the Joint Field Technology that
are granted to such third parties by Corixa.
14. The following shall be inserted at the end of Subsection 6.1(b) of
the Research Collaboration and License Agreement:
None of the minimum royalties set fort in this Subsection 6.1(b) shall
apply to any royalties corresponding to the Joint Field Technology.
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15. The following shall be inserted at the end of Subsection 6.1(f) of
the Research Collaboration and License Agreement:
(g) "Know-How" shall mean all trade secrets, manufacturing and other
technical specifications, which materially contribute to the development
of a Licensed Product to the extent that the absence of such information
would prevent the development of a License Product. The foregoing
definition of Know-How shall apply only to this Section 6.1 and Sections
6.2, 6.3 and 6.4 hereof.
16. The following shall be inserted at the end of Section 6.2(a):
All third-party royalties and non-royalty obligations which may become
due with respect to intellectual property owned by or licensed to Corixa
in the future that is necessary or that the parties mutually agree is
desirable to develop or market the Joint Field Technology shall be the
collective responsibility of Corixa, CellPro and all third party
licensees that are granted a right to use such intellectual property,
which shall be allocated on a pro rata basis.
17. The following shall be inserted at the beginning of the first
sentence in Sections 8.1 and 8.2: "Except as set forth in Section 3.5(b),"
18. The following shall be inserted after the eighth sentence of Section
8.2 of the Research Collaboration and License Agreement:
Responsibility for payment of the reasonable costs of filing,
prosecuting and maintaining patents and patent applications covering
Joint Field Technology shall be allocated on a pro rata basis between
Corixa, CellPro and any and all third party licensees of the Joint Field
Technology.
IN WITNESS WHEREOF, the parties have executed this Amendment as of the
Effective Date.
CELLPRO INCORPORATED CORIXA CORPORATION
By: /s/ XXXXX X. XXXXXX By: /s/ XXXXXX XXXXXX
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Xxxxx X. Xxxxxx
Executive Vice President, CFO/COO Name: XXXXXX XXXXXX
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(Print or Type)
Date: 2/28/97 Title: President, CEO
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Date: 3/6/97
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