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. 1 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 February 17, 1995, relating to XX Xxxx Xx. XX# -0000 "In
vitro-grown Islets of Langerhans for curing diabetes" and the
parent patent application"In Vitro Growth of Functional Islets of
Langerhans," USSN 08/234,071, filed April 28, 1994 (the "License
Agreement") and
WHEREAS, UFRFI and Ixion desire to amend such 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. 1 as follows:
1. The definitions used in Amendment No. 1 shall be the
definitions set forth in the License Agreement unless otherwise
indicated.
2. Amend section 1.6 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. Amend section 4.1(c) 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. Add a new section 4.1 (d) 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; and
5. Renumber old section 4.1 (d) and amend it as follows:
(e) A further ******** upon the filing with the FDA of an
application for a Product License Approval relating to a
Licensed Product or Process, or the expiration of 24 months
from the Effective Date, whichever is later. Such milestone
payment is in addition to any Running Royalties due under
section 4.1(c) or Sublicensee Royalty due under section
4.1(d) above.
6. Appendix A is amended to read, in its entirety, as attached.
7. Appendix B is amended to read, in its entirety, as attached.
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
XX Xxxx Xx. XX# -0000
"In vitro-grown Islets of Langerhans for curing diabetes"
Patent Application "In Vitro Growth of Functional Islets of Langerhans," USSN
08/234/071
By Xxxxx X. Xxxx, Ph.D., filed April 28, 0000
XX Xxxx Xx. XX# 0000 "In Vitro Growth of Functional Islets of Langerhans and
In Vivo Uses Thereof,"
Patent Application "In Vitro Growth of Functional Islets of Langerhans and In
Vivo Uses Thereof," USSN 08/432,434, by Xxxxx X. Xxxx, filed April 28, 1995
UF Case No. UF# - UF Case No. UF# 1484 "In Vitro Growth of Functional Islets
of Langerhans and In Vivo Uses Thereof"
Patent Application "In Vitro Growth of Functional Islets of Langerhans and In
Vivo Uses Thereof," USSN 08/546,746, by Xxxxx X. Xxxx, filed October 25, 0000
XXXXXXXX X
Foreign countries in which Patent Rights shall be filed, prosecuted, and
maintained in accordance with Article VI
XX Xxxx Xx. # -0000 XXX XX00/00000 "In Vitro Growth of Functional Islets of
Langerhans and In Vivo Uses Thereof, "
Publ. No. WO 95/29988
All subsequent national and PCT filings for applications appearing in Appendix
A.