SECOND AMENDMENT TO EXCLUSIVE LICENSE AGREEMENT UC Agreement Control No. 2006-04-0085
Exhibit 10.6
SECOND AMENDMENT TO EXCLUSIVE LICENSE AGREEMENT UC Agreement Control No. 0000-00-0000
This Second Amendment to Exclusive License Agreement (“Second Amendment”), dated as of
, 2006, is made by and among The Regents of the University of
California, a California corporation (“The Regents”), Medivation, Inc , a Delaware corporation (“Medivation”), and Medivation Prostate Therapeutics, Inc , a Delaware corporation and subsidiary of Medivation (“MPT”)
WHEREAS, The Regents, Medivation and MPT are parties to an Exclusive License Agreement, dated as of August 12, 2005 (the “Exclusive License Agreement”);
WHEREAS, Medivation has been supporting research in Xx Xxxxxxx X Xxxx’x laboratory at UCLA under a Sponsored Research Agreement with an Effective Date of August 12, 2005 (the “Sponsored Research Agreement”);
WHEREAS, an invention has been developed at UCLA in the performance of the Sponsored Research Agreement, which is disclosed in UC Case No 2006-537 entitled “New Jhiohydantoin Androgen Receptor Antagonists for Treatment of Prostate Cancer” by Xxxxxxx X Xxxx and Xxxxxxx Xxx, employees of The Regents, Xxxxxxx X Xxxxxxx, an employee of Xxxxxx Xxxxxx Medical Institute (“HHMI”) and a member of the faculty of the University of California, Los Angeles, and Xxxxx Xxxx, an employee of HHMI;
WHERE AS, the Sponsored Research Agreement grants Medivation the first right to negotiate for a license to inventions made by The Regents in the performance of the Sponsored Research Agreement, and Medivation has exercised its right and wishes to obtain an exclusive license to the invention noted in the preceding WHEREAS clause;
WHEREAS, Medivation as the parent corporation of MPT will benefit directly from the agreements made her ein; and
WHEREAS, the parties mutually intend to enter into this Second Amendment to amend the terms of the Exclusive License Agreement, as specified below
THEREFORE, the parties hereby agree as follows:
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Paragraph 1 1 (“Regents’ Patent Rights”) is deleted and replaced with the following, which is amended to include “UC Case No. 2006-537” in the parenthetical at the end of the paragraph: |
1.1 “Regents’ Patent Rights” means The Regents interest in the claims of the United States patents and patent applications, corresponding foreign patents and patent applications (requested under Paragraph 7 3 herein), and any reissues, extensions, substitutions, continuations, divisions, and continuation-in-part applications (but only those claims in the continuation-in-part applications that are entirely supported in the specification and entitled to the priority date of the parent application) based
U.C. AGREEMENT CONTROL NUMBER
0000 00-0000 REVC
on the patent applications listed in Appendix A (UC Case Nos. 2004-129, 2005-438, 2006-260 and 2006-537)
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Appendix A (Regents’ Patent Rights) is deleted and replaced with the Appendix A attached to this First Amendment, which is amended to include the patent application filed under UC Case No 2006-537 |
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In consideration for the addition of UC Case No 2006-537 to the Exclusive License Agreement, Medivation will pay to The Regents a fee of five hundred dollars ($500) within thirty (30) days of the Effective Date of this Second Amendment, |
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Except for the amendments specifically referenced above, all other terms of the Exclusive License Agreement shall remain unchanged and in full force and effect |
The Regents, Medivation and MPT have executed this Amendment in duplicate originals by their
authorized officers on the dates written below:
MEDIVATION, INC,. |
THE REGENTS OF THE UNIVERSITY OF CALIFORNIA | |||
/s/ C. Xxxxxxx Xxxxxxx |
By |
/s/ Xxxxxx X. Wake, Ph.D. | ||
Name C Xxxxxxx Xxxxxxx |
Name |
Claire T Wake, Ph D | ||
Title Senior Vice President and CFO |
Title |
Assistant Director, Licensing | ||
Date 8 MAY 06 |
Date |
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MEDIVATION PROSTATE THERAPEUTICS, |
INC. |
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/s/ C. Xxxxxxx Xxxxxxx |
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Name C Xxxxxxx Xxxxxxx |
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Title Senior Vice President and CFO |
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Date CU |
APPENDIX A (Second Amendment)
REGENTS’ PATENT RIGHTS
UC Case No. 2004-129
PCT Patent Application No, US05/05529 “Methods and Materials for Assessing Prostate Cancer Therapies and Compounds filed February 23, 2005, based on US Provisional Patent Application No,, 60/547,101 filed Februaiy 24, 2004 The inventors are Xxxxxxx X Xxxx, Xxxxxx Xxx, Xxxxxxx X Xxxx and Xxxxx Xxxxxxx, employees of The Regents, and Xxxxxxx X Xxxxxx s, an employee of the Xxxxx x Xxxxxx Medical Institute (“HHMI”) and a member of the faculty of The Regents ,
UC Case No. 2005-438
US Provisional Patent Application No. 60/680,8.35 “Novel Androgen Receptor Inhibitors with Minimal Agonistic Activities ,” filed May 13, 2005 The inventors are Xxxxxxx X Xxxx, Xxxxxx Xxx, Xxxxxxx X. Xxxx and Xxxxx Xxxxxxx, employees of The Regents, and Xxxxxxx X Xxxxxxx, an employee of the Xxxxxx Xxxxxx Medical Institute (“HHMI”) and a member of the faculty of The Regents. This application, together with the patent application pertaining to UC Case No 2004-129, cover the compounds identified as RD1 through RD138, inclusive, on Exhibit A attached to the First Amendment
PCT Patent Application No. PCT/US06/11417 (also includes UC Case Nos. 2006-260 & 2006- 537) titled “Diarylthiohydantoin Compounds” was filed March 29, 2006 The inventors are Xxxxxxx X . Xxxx, Xxxxxx Xxx, Xxxxxxx X Xxxx, Der xx Xxxxxxx and Xxxxxxx Xxx, employees of The Regents, and Xxxxxxx X Xxxxxxx, an employee of Xxxxxx Xxxxxx Medical Institute (“HHMI”) and a member of the faculty of the University of California, Los Angeles, and Xxxx Xxxxxxxxx and Xxxxx Xxxx, employees of HHMI
UC Case No. 2006-260
US Provisional Patent Application No. 60/750,351 filed December 15, 2005 and US Provisional
Patent Application No. 60/756,552 filed January 6, 2006, both titled “Selected
Diarylthiohydantoin Compounds,” filed January 6, 2006 (both were subsequently rolled into PCT Patent Application No PCT/US06/11417), The inventors are Xxxxxxx X Xxxx, Xxxxxx Xxx and Xxxxxxx X Xxxx, employees of The Regents, and Xxxxxxx L, Xxxxxxx, an employee of the Xxxxxx Xxxxxx Medical Institute (“HHMI”) and a member of the faculty of The Regents, and Xxxx Xxxxxxxxx and Xxxxx Xxxx, employees of HHMI This application will cover only the following diarylthiohydantoin compounds developed in the laboratory of Xxxxxxx X Xxxx, the structures of which are set forth on Exhibit A attached hereto:
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RD139 through RD142 |
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RD145 through RD163 |
RD168
UC Case No. 2006-537
Body text;
Xxxxx Xxxx, an employee of HHMI. This application coveis the following compounds: RD162’, RD1627’, RD169 and RD170 (analogues of earlier compounds RD162 and RD131)