EXHIBIT 10.23(a)
Amendment No. 1 to License Agreement
This Amendment No. 1 is made and entered into as of this 7th day of
May, 2002, by and among OKLAHOMA MEDICAL RESEARCH FOUNDATION, an Oklahoma non
profit corporation ("OMRF"), 000 X.X. 00xx Xxxxxx, Xxxxxxxx Xxxx, Xxxxxxxx,
00000, BIOENVISION, INC., a corporation duly incorporated under the laws of New
York ("Bioenvision"), and maintaining offices at Xxx Xxxxxxxxxxx Xxxxxx, Xxxxx
0000, Xxx Xxxx, Xxx Xxxx, 00000, and PATHAGON, INC., a corporation duly
incorporated under the laws of New York ("Pathagon"), and maintaining offices at
1285 Avenue of the Xxxxxxxx, 00xx Xxxxx, Xxx Xxxx, Xxx Xxxx, 00000.
Recitals
A. OMRF and BRIDGE THERAPEUTIC PRODUCTS, INC., a New York corporation
("BRIDGE"), maintaining offices at 00 Xxxx Xxxxxx, Xxxxx 000, Xxxxxx, Xxx Xxxx
00000, entered into a License Agreement dated January 28, 1998 (hereinafter the
"License Agreement").
B. BRIDGE has indirectly assigned all of its rights under the License
Agreement to Pathagon, Inc., a wholly owned subsidiary of Bioenvision. OMRF,
Pathagon, and Bioenvision desire: (1) to confirm: (a) OMRF's consent to
assignment of the License Agreement to Pathagon and (b) assignability of the
License Agreement by Pathagon to Bioenvision; (2) to amend certain terms of the
License Agreement; and (3) to confirm Pathagon's and Bioenvision's agreement to
be bound by the terms of the License Agreement and this Amendment No. 1.
Agreement
In consideration of the foregoing premises, the following promises and
other good and valuable consideration, the receipt and sufficiency of which are
hereby acknowledged, the parties hereto agree as follows:
1. Assignment to Bioenvision. Effective upon payment by Bioenvision to
OMRF of the amount of money specified in, and delivery to OMRF of certificates
evidencing the common stock and warrants described in, paragraph 5 below, OMRF
consents to assignment of the License Agreement to Pathagon, and Pathagon hereby
agrees to be bound as the License by all terms of the Licensee Agreement, as
amended herein. OMRF acknowledges and agrees that Bioenvision may desire to have
the License Agreement assigned by Pathagon to Bioenvision directly in order
facilitate implementation of the business plan and, in that case, OMRF consents
to such an assignment to Bioenvision should Bioenvision require it, provided
that Bioenvision assumes all of the obligations of the Licensee thereunder, and
Section 13.11 of the License Agreement is amended accordingly.
2. Definitions All defined terms not otherwise defined herein are
defined as set forth in, or by reference in, the License Agreement.
3. Scope of License In vivo activities shall no longer be excluded
from the scope of the License Agreement. Accordingly:
(a) Section 2.8 is hereby deleted,
(b) Section 1.14 of the License Agreement is hereby deleted
and the following is substituted therefore: "Field of Use" means in vitro or in
vivo inactivation of viruses in biological fluids," and
(c) Section 1.1 is deleted and replaced as follows:
1.1 "Licensed Patents" means United States Patent No. 4,950,665 issued
August 21, 1990, for " Phototherapy Using Methylene Blue," Xxxxxx X.
Xxxxx inventor, and all divisionals, continuations, reissues,
extensions and foreign counterparts of these patents and all patents
which issue thereon, which patents are hereby listed on Exhibit A
(attachment) and which includes the Licensed Patent (US Patent No.
5,571,666) as specified in the original agreement.
4. Due Diligence In view of the fact that the development plan is now
being implemented, the January 1, 1999 target date in Section 3.1(a) of the
License Agreement is hereby amended to be January 1, 2003, and the various
business plan and reporting obligations set forth in the License Agreement are
hereby amended to commence from the date of this Amendment No. 1 provided, that
Pathagon shall be required promptly to furnish reports contemplated by the
License Agreement with respect to any sales through the date of this Amendment
No. 1 which have not previously been furnished to OMRF, and further provided,
however, that upon material breach of Licensee's obligations, OMRF may, by
notice to Licensee, convert the license set forth in the License Agreement to a
nonexclusive one. Bioenvision agrees to submit a mutually agreed upon
Development Plan to OMRF within 90 days of the date of this amendment.
5. Debt and Payment. Bioenvision or Pathagon shall, within thirty (30)
days after the date of this Amendment No. 1 to License Agreement, deliver or
cause to be delivered to OMRF $100,000 and certificates evidencing the common
stock and warrants described in paragraph 9 below (the "Certificates"), and upon
such delivery to OMRF of $100,000 and the Certificates, License Agreement
Sections 4.1(A)(ii) and (B) shall be deleted, thereby extinguishing the
obligation to pay principal and interest pursuant to Section 4.1(A)(a)(ii) of
the License Agreement, and any note evidencing the obligation set forth in
Section 4.1(A)(ii) shall be cancelled.
6. License Agreement Section 4.5 is hereby deleted.
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7. Annual Royalty Payment In view of the fact that the business plan
is now being implemented, Section 4.1(A)(c) is amended to provide that the
requirement that OMRF be paid the Annual Minimum royalty will be effective
commencing in the third calendar year following the year during which this
Amendment No. 1 becomes effective.
8. Annual License Maintenance Fee. A new Section 4.1(E) shall be added
to the License Agreement and shall read as follows:
4.1(E) Annual License Maintenance Fee. On or before the first
anniversary of the Effective Date of this Amendment No. 1, and each
subsequent anniversary of the Effective Date of this Amendment No. 1
during the Term of the License Agreement, Licensee shall pay to OMRF a
license maintenance fee of ten thousand dollars (U.S. $10,000).
9. Preferred Stock
a. Cancellation of Preferred Stock; Issuance of Common
Stock and Warrants
Bioenvision shall issue and deliver to OMRF
certificates evidencing 200,000 shares of common stock, par
value $0.001 per share (the "Common Stock"), of Bioenvision
and a five-year warrant (the "Warrant") to purchase 200,000
shares of Common Stock at 75% of the closing price of the
Common Stock on the date on which this Amendment No. 1 becomes
effective, and upon delivery to OMRF of certificates
evidencing the Common Stock and the Warrant, OMRF's rights
with respect to convertible redeemable preferred stock
pursuant to Section 4.1(B) of the License Agreement shall be
cancelled. OMRF acknowledges and agrees that such certificates
shall be issued in reliance upon an exemption from
registration under the Securities Act of 1933, as amended (the
"Securities Act") and will bear an appropriate restrictive
legend. OMRF agrees to furnish customary representations and
warranties regarding its status as an investor entitled to
receive securities without compliance with registration.
b. Registration Rights
The parties agree that OMRF will have the rights to
piggy-back registration of the 200,000 shares of Common Stock
and the shares of Common Stock underlying the Warrant on the
next registration statement filed by Bioenvision with the
Securities and Exchange Commission, subject to OMRF furnishing
representations, warranties and agreements customarily
required of a selling stockholder in such a registration, and
other customary terms and conditions.
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10. Notices Section 13.10 of the License Agreement is hereby amended
to provide that all notices to Licensee shall be delivered to the following
address:
Xxxxxxxxxxx Xxxx, M.D.
President and CEO
Bioenvision, Inc.
Xxx Xxxxxxxxxxx Xxxxxx, Xxxxx 0000
Xxx Xxxx, Xxx Xxxx 00000
with a copy to:
Xxxxxx X. Xxxxxxxxx, Esq.
Xxxxx Xxxxxxx Xxxxxxx & Xxxxx, LLP
0000 Xxxxxx xx xxx Xxxxxxxx
Xxx Xxxx, Xxx Xxxx 00000-0000
Facsimile No. (000) 000-0000
11. Closing; Effectiveness As promptly as practicable after the
parties have signed and delivered this Amendment No. 1 to each other and in any
event no later than thirty days after the date of this Amendment, the applicable
parties shall deliver the certificates and make the payments required by
paragraphs 5 and 7(a) of this Amendment No. 1. This Amendment No. 1 shall be
deemed to be effective upon the completion of those deliveries and payments.
12. Headings The headings in this Amendment No. 1 are for convenience
only and are not a part of this Agreement.
13. License Agreement in Effect The parties acknowledge and agree
that the License Agreement is in full force and effect as amended hereby. The
provisions of Article 13 of the License Agreement, as amended, are specifically
incorporated herein by reference.
IN WITNESS WHEREOF, the parties have caused this Amendment No. 1 to be
executed by their duly authorized representatives as of first date set forth
above.
OMRF:
OKLAHOMA MEDICAL RESEARCH FOUNDATION
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By: X. Xxxxxxx
------------------------------------
Name: X. Xxxxxxx May 7, 2002
Title:
Pathagon:
PATHAGON, INC.
By: /s/ Xxxxxx X. Xxxxx
------------------------------------
Name: Xxxxxx X. Xxxxx
Title: CEO
Bioenvision:
BIOENVISION, INC.
By: /s/ XX Xxxx
------------------------------------
Name: XX Xxxx
Title: CEO
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Exhibit A
--------------------------
| Parent |
| US Patent 4,950,665 |
| Filed 10/28/1988 |
| Issued 8/21/1990 |
--------------------------
|
|
|
--------------------------
| Continuation in Part |
| 07/350,383 |
| Filed 5/11/1989 |
| Abandoned |
--------------------------
|
|
|
------------------------------------------------------------------------------------------
| | |
| | |
| | |
------------------------- -------------------------- ---------------------------
| Continuation | | Continuation in Part | | PCT |
| 07/632,606 | | 07/389,007 | | PCT/US90/02659 |
| Filed 12/24/1990 | | Filed 8/3/1989 | | Filed 5/11/1990 |
| Abandoned | | Abandoned | | Inactive |
------------------------- -------------------------- ---------------------------
| | |
| | |
| | -----------------------------------
------------------------- -------------------------- | | |
| Continuation | | Continuation | | | |
| 07/758,228 | | 07/644,416 | ------------------------- | -------------------------
| Filed 9/9/1991 | | Filed 1/18/1991 | | Canada | | | Japan |
| Abandoned | | Abandoned | | Xxx. No. 2,055,463 | | | Xxx. No. 2080208 |
------------------------- -------------------------- | Filed 5/11/1990 | | | Filed 5/11/1990 |
| | | Issued 9/30/1997 | | | Issued 8/9/1996 |
| | ------------------------- | -------------------------
| | | |
------------------------- -------------------------- | |
| Continuation | | Continuation | | -------------------------
| 08/029,984 | | 07/896,456 | | | Japan (Divisional) |
| Filed 3/12/1993 | | Filed 5/26/1992 | | | Xxx. No. 2700126 |
| Abandoned | | Abandoned | | | Filed 5/11/1990 |
------------------------- -------------------------- | | Issued 10/03/1997 |
| | | -------------------------
| | |
| | |
------------------------- -------------------------- |
| Continuation | | Continuation | |
| 5,571,666 | | 08/203,877 | ---------------------------
| Filed 5/31/1994 | | Filed 2/24/1994 | | Europe |
| Issued 11/05/1996 | | Abandoned | | Xxx No. 0471794 |
------------------------- -------------------------- | Filed 5/11/1990 |
| | | Issued 10/02/1996 |
| | ---------------------------
| | |
------------------------- ------------------------------ |
| Continuation | | | |
| 5,827,644 | | | ---------------------------
| Filed 7/12/1996 | | | | EP Patent 0471794 |
| Issued 10/27/1998 | ------------------------ ----------------------- | Issued in |
------------------------- | Continuation | | Continuation | | AT, BE, CH, DE, DK, ES, |
| | 08/369,341 | | 08/384,620 | | FR, IT, LU, NE, SE, |
| | Filed 1/6/1995 | | Filed 2/6/1995 | ---------------------------
| | Abandoned | | Abandoned |
------------------------- ------------------------ -----------------------
| Divisional |
| 6,346,529 |
| Filed 4/15/1998 |
| Issued 2/12/2002 |
-------------------------
