NOTE: Certain portions of this document have been omitted based on a request
for confidential treatment. The non-public information has been filed
with the Securities and Exchange Commission. Omitted portions are
designated with asterisks ("*").
This Amendment No. 2 dated October 9, 1996, is between the University
of Florida Research Foundation, Inc., a not-for-profit corporation duly
organized and existing under the laws of the State of Florida and having its
principal office at 000 Xxxxxxx Xxxx, Xxxxxxxxxxx, Xxxxxxx, 00000-0000
("UFRFI"), and Ixion Biotechnology, Inc., a corporation duly organized under
the laws of Delaware, and having its principal office at 00000 Xxxxxxxx
Xxxxx, Xxxxxxx, Xxxxxxx 00000 ("Ixion").
WITNESSETH
WHEREAS, UFRFI and Ixion entered into a License Agreement dated January
11, 1995 relating to UF Case No. 1203 "Oxalate Diagnostic Kit and Formyl-CoA
Transferase Gene from Oxalobacter Formigenes," UF Case No. UF#-0973 "Reducing
Oxalate Poisoning in Vertebrates Using Genetically Engineered Organisms
Expressing Cloned Oxalate Degrading Enzymes," and the parent patent
application "Materials and Methods for Detection of Oxalate," USSN 08/262,424,
filed June 20, 1994, and
WHEREAS, UFRFI and Ixion amended Section 3.2(b) of such License
Agreement on December 20, 1995, to substitute the development of a working
model of a molecular probe to detect Oxalobacter formigenes, rather than a
working model of a urine oxalate development kit, as part of Ixion's diligence
obligation (such License Agreement as amended being herein referred to as the
"License Agreement"); and
WHEREAS, UFRFI and Ixion desire to further amend the License Agreement
to the benefit of both parties;
NOW, THEREFORE, in consideration of the premises and the mutual
covenants contained herein the parties agree to Amendment No. 2 as follows:
1. Appendix A is amended to read, in its entirety, as attached Appendix
A:
2. Appendix B is amended to read, in its entirety, as attached Appendix
B:
3. Section 1.6 is amended by deleting the words "and its sublicensees'"
such that section 1.6 reads as follows:
1.6 "Net Sales" means Ixion's gross sales from the sale or
lease of Licensed Products and Licensed Processes produced hereunder
less the sum of the following:
(a) discounts allowed in amounts customary in the trade and
brokers' or agents' commissions, if any, allowed and paid to
independent parties in arms-length transactions;
(b) excise, value-added, or sales taxes, tariff duties or use
taxes directly imposed and with reference to particular
sales;
(c) outbound transportation prepaid or allowed;
(d) amounts allowed or credited on returns; and
(e) packing costs and insurance costs if itemized separately.
No deductions shall be made for commissions paid to individuals
regularly employed by Ixion and on its payroll, or for cost of
collections. Licensed Products shall be considered "sold" when
invoiced.
3. Section 4.1(c) is amended by deleting the words "or its
sublicensees" such that section 4.1(c) reads as follows:
(c) A Running Royalty in an amount equal to ******** of
the Net Sales of the Licensed Products or Licensed Processes
used, leased, or sold by or for Ixion; and
4. A new section 4.1 (d) is added as follows:
(d) Sublicense Royalty in an amount equal to ********
******** of the sublicense revenue received by Ixion.
Sublicense revenue received by Ixion shall mean revenue in
the form of license fees, royalties, or other direct
consideration (such as milestone payments made by a
sublicensee), but not research support or collaboration fees
from sublicensees.
IN WITNESS WHEREOF, the parties have hereunto set their hands and
seals and duly executed this Agreement as of the day and year first set forth
above.
University of Florida Research Foundation, Inc. Ixion Biotechnology,
Inc.
By By
Xx. Xxxxx X. Xxxxxxxx Xxxxxx X. Xxxxxx
President Chairman and Chief
Executive Officer
APPENDIX A
UF Case No. UF# 0973
"Reducing Oxalate Poisoning in Vertebrates Using Genetically Engineered
Organisms Expressing Cloned Oxalate Degrading Enzymes"
UF Case No. UF# 1203
"Oxalate Diagnostic Kit and Formyl-CoA Transferase Gene from Oxalobacter
Formigenes"
UF Case No. UF# 1447
"Materials and Methods for Detection of Oxalate"
UF Case No. UF# 1458
"Materials and Methods for Detection of Oxalate"
UF Case No. UF# [to be assigned]
"Materials and Methods for Detection of Oxalobacter Formigenes"
USSN 08/262,424 "Materials and Methods for Detection of Oxalate"
By Xxxxx X. Xxxx, Ph.D.
Filed on June 20, 1994
USSN 08/464,147 "Materials and Methods for Detection of Oxalate"
By Xxxxx X. Xxxx, Ph.D.
Filed on June 5, 1995
USSN 08/493,197 "Materials and Methods for Detection of Oxalate"
By Xxxxx X. Xxxx, Ph.D.
Filed on June 20, 1995
USSN 08/[to be assigned] "Materials and Methods for Detection of Oxalobacter"
Saliwanchik & Saliwanchik Docket Number UF 145C2
By Xxxxx X. Xxxx, Ph.D.
Filed on September 27, 0000
XXXXXXXX X
Foreign countries in which Patent Rights shall be file, prosecuted and
maintained in accordance with Article VI:
For UF Case No. UF# 1203 and Case No. UF# 0973
India
No other countries
For UF Case Xx. XX# 0000
XXX Xxxx. Xx. XX00/00000
Filed June 20, 1995
Publ. No. WO 95/35377
All subsequent national and PCT filings for patent applications appearing in
Appendix A.