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EXHIBIT 10.9
[Letterhead of Transcend Therapeutics, Inc.]
October 4, 1995
Xx. X. Xxxxxx Xxxxxxxxx
President, Director
Patents & Technology Marketing
Cornell Research Foundation, Inc.
Cornell Business & Technology Park
00 Xxxxxxxxx Xxxxx, Xxxxx 000
Xxxxxx, XX 00000
Dear Mr. Xxxxxxxxx:
Re: Letter Agreement to modify the terms of the Exclusive
License Agreement CRF D-416 and D-520, D-913, D-1069, D-
1239, D-1258, D-1403, D-1426 dated April 5, 1994
(hereafter "the License Agreement")
In consideration for Transcend Therapeutics, Inc. (hereafter "TTI") irrevocably
releasing and holding harmless Cornell Research Foundation, Inc., its Trustees,
Officers, Agents and Employees, and those of Cornell University (hereafter
"CRF") from any liability, loss, expense, or damage related to the abandonment
of the Licensed Patent Application D-416 in Japan, it is hereby agreed that:
Transfer of Responsibility for Patents
--------------------------------------
TTI will share responsibility for prosecution and maintenance of
all Licensed Patents/Applications with CRF under Articles IV and
V of the License Agreement. CRF will accept the counsel choice of
TTI, unless CRF has reasonable objections to that choice. TTI's
counsel will provide CRF with copies of all Office Actions
received from the applicable Patent Offices, as well as proposed
responses to same for CRF's comments, before the responses are
filed. TTI shall make reasonable efforts to consider CRF's
comments and revise the proposed
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responses, if appropriate. TTI shall have the right to deduct one
hundred percent (100%) of all patent prosecution costs and/or
maintenance fees incurred in the United States or any foreign
country from any royalty that may be due and owing CRF. If such
costs and fees exceed the royalties due to CRF in any License
Year, then the excess amount can be carried forward by TTI to
succeeding License Years. Accordingly, CRF will immediately
instruct its patent attorneys, Xxxxxxx Xxxxx, Xxxxx, Xxxxxx &
Xxxxxx, and Xxxxxx & Xxxxxx, to transfer all files to Xxxxxx &
Xxxxxxx as detailed in Attachment A. The cases handled by Xxxxx
Xxxxxxx will be transferred over time.
Recovery of Out-of-Pocket Costs
-------------------------------
TTI will have the right to deduct up to $32,407.24 of its costs
incurred for the Japanese corporate partnering trip July 24 -
August 4 and out-of-pocket legal expenses incurred in relation
to the abandoned patents/applications from any royalty that may
be due and owing CRF. If such costs exceed the royalties due to
CRF in any License Year, then the excess amount can be carried
forward by TTI to succeeding License Years.
TTI has prepared a list of these costs and expenses to be
deducted in Attachment B.
Return of Shares of Common Stock
--------------------------------
TTI will cancel 35,127 shares of common stock equal to twenty per
cent (20%) of the 175,127 shares of common stock that was
previously issued to CRF on April 5, 1994 as part consideration
for entering the License Agreement. CRF will retain 140,000
shares of common stock in TTI.
Accordingly, CRF will immediately return its original stock
certificate for cancellation and reissue, together with a duly
executed stock power providing for such transfer of 35,127 shares
to TTI.
The parties have caused this Letter Agreement, which constitutes an amendment to
the License Agreement, to be executed in duplicate as of the day and year first
above written.
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In all other respects, the License Agreement is ratified and confirmed.
TRANSCEND THERAPEUTICS, INC.
By: /s/ X. Xxxxxxxx Xxxxxx
-------------------------------
X. Xxxxxxxx Xxxxxx
Title
Date
Agreed:
CORNELL RESEARCH FOUNDATION, INC.
By: /s/ X. Xxxxxx Xxxxxxxxx
-----------------------------
X. Xxxxxx Xxxxxxxxx
Title
Date
Attachment A: Patent Transfer Letter
List of Patents/Applications dated Sept.
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Attachment B: List of Costs and Expenses with
documentary support
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ATTACHMENT A
------------
September 26, 1995
VIA TELEFACSIMILE
-----------------
(Name), Esq.
Firm
Address
Re: Transfer of Responsibility to Xxxxxx & Xxxxxxx
----------------------------------------------
Dear (Mr./Ms. Xxxx):
Effective upon transfer of the files, Xxxxxx & Xxxxxxx will assume
responsibility for prosecution of the following patents/ applications on behalf
of Cornell Research Foundation, Inc.
(list files)
Please forward your original files promptly by express mail to:
Xxxxxx X. Xxxxxxx, Esq.
XXXXXX & XXXXXXX
0000 Xxxxxx xx xxx Xxxxxxxx
Xxx Xxxx, Xxx Xxxx 00000-0000
(000) 000-0000 (phone)
(000) 000-0000/8864 (fax)
Your assistance in maintaining pendency of all patents/ applications during
the transfer to Xxxxxx & Xxxxxxx will be sincerely appreciated.
Very truly yours,
X. Xxxxxx Xxxxxxxxx
President, Director
Patents & Technology Marketing
cc: Xxxxxx X. Xxxxxxx, Esq.
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ATTACHMENT B
LIST OF COSTS & EXPENSES
X. Xxxxx
X. Xxxxxxxx X. Xxxxx X. Xxxxxxx TOTAL COST
----------- -------- ---------- ----------
1. DIRECT TRAVEL EXPENSES:
MEALS/ $4,919.07 $4,083.28
ENTERTAINMENT
AIRFARE $4,410.25 $4,443.59
$9,329.32 $8,526.87 $8,946.07 $26,802.26
----------------------------------------------------
2. PATENT LEGAL EXPENSES:
Attorney Time $1,160.00
Maintenance Fees Paid $4,445.00 $ 5,605.00
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$32,407.26
