EXHIBIT 10.40
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AMENDMENT NO. 4 TO
RESEARCH COLLABORATION AND LICENSE AGREEMENT
Amendment No. 4
dated and effective as of March 2, 1998 between SYNAPTIC PHARMACEUTICAL
CORPORATION, a Delaware corporation ("SYNAPTIC"), and MERCK & CO., INC., a New
Jersey Corporation ("MERCK").
WHEREAS, SYNAPTIC and MERCK are parties to a Research Collaboration
and License Agreement dated as of November 30, 1993, an Amendment No. 1 dated
February 15, 1995, a letter agreement dated August 25, 1995, an Amendment No. 2
and Supplement dated October 9, 1996 and an Amendment No. 3 and Supplement dated
December 1, 1997 (the "AGREEMENT"). Capitalized terms used and not defined in
this Amendment No. 4 shall have the meanings ascribed to them in the AGREEMENT,
and
WHEREAS, To their mutual benefit, the parties are willing for certain
rights under PATENTS to be provided to GLAXO (hereinafter defined).
NOW, THEREFORE, in consideration of the premises and the mutual
covenants hereinafter set forth, the parties agree as follows:
1. Amendment to the Agreement. The AGREEMENT shall be amended as of
the date first written above as follows:
(i) In ARTICLE 1 - DEFINITIONS.
Add the following new definitions:
1.22 GLAXO shall mean Glaxo Group Limited, a company organized
and existing under the laws of the United Kingdom and having
a principal office at Glaxo ▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇,
▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇▇ ONN UK.
1.23 GLAXO PRODUCT shall mean a BPH PRODUCT, as such term is
defined in the OPTION AND LICENSE AGREEMENT.
1.24 OPTION AND LICENSE AGREEMENT shall mean the Agreement
between SYNAPTIC and GLAXO which grants rights under
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PATENTS to GLAXO, a copy of which is attached hereto and
made a part hereof.
(ii) In ARTICLE 3 - LICENSE GRANT.
Add the following Section 3.3:
3.3 MERCK hereby grants back to SYNAPTIC such rights as may be
necessary for the sole purpose of enabling SYNAPTIC to grant to
GLAXO the rights set forth in the OPTION AND LICENSE AGREEMENT.
(iii) In ARTICLE 7 - MILESTONES.
Article 7.1(b) shall be amended by inserting after "MAJOR MARKET
COUNTRY" the words:
"in the event that MERCK makes such filing of a New Drug
Application or its equivalent prior to filing by GLAXO of a New Drug Application
for a GLAXO PRODUCT with the FDA or an equivalent of a New Drug Application for
a GLAXO PRODUCT in another MAJOR MARKET COUNTRY".
(iv) In ARTICLE 9 - ROYALTIES.
Article 9.3 shall be replaced by Articles 9.3 (a) and 9.3 (b) below:
9.3 (a) In the event that GLAXO has not sold a GLAXO PRODUCT
during any portion of the calendar year in any country
of the TERRITORY and annual NET SALES of PRODUCT
exceed $500,000,000.00 (five hundred million dollars),
an additional two percent (2%) royalty will be paid by
MERCK on the excess NET SALES above $500,000,000.00
(five hundred million dollars)for that particular year.
9.3 (b)In the event that GLAXO has sold a GLAXO PRODUCT during
any portion of the calendar year in any country of the
TERRITORY and annual NET SALES of PRODUCT exceed
$300,000,000.00 (three hundred million dollars), an
additional two percent (2%) royalty will be paid by
MERCK on the excess NET SALES above $300,000,000.00
(three hundred million dollars)for that particular year.
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2. Representations and Warranties. MERCK hereby represents and
warrants to SYNAPTIC that, as of the date first written above, (i) MERCK is
actively continuing to develop the Safety Assessment Candidate known as
L-771,688 (SNAP-6383) and has no intention to discontinue its development
efforts with respect thereto, (ii) MERCK has no intention to abandon its efforts
to develop a selective alpha-1a antagonist for the treatment of BPH should
MERCK's development efforts with respect to the aforementioned Safety Assessment
Candidate fail, and (iii) MERCK has no intention to terminate the AGREEMENT nor
does MERCK have any understanding with GLAXO regarding any such possible
termination. MERCK makes no representation or warranty that its conduct or
intentions in the future will be consistent with items (i), (ii) and (iii)
above.
3. Effect of Amendment. From and after the date first written
above, all references in the AGREEMENT to "this AGREEMENT," "hereunder,"
"hereof," "herein," or words of similar import, shall be a reference to the
AGREEMENT, as amended by this Amendment No. 4. Except as expressly amended by
this Amendment No. 4, the AGREEMENT shall remain in full force and effect and
unchanged.
4. Disclaimer. It is understood that the parties disagree about the
extent of sublicensing rights granted to MERCK under the AGREEMENT. Execution of
this AMENDMENT NO. 4 is not an admission by either party of the extent of such
rights and shall not be used by any party to establish or dispute the extent of
such rights.
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IN WITNESS WHEREOF, the parties have caused this Amendment No. 4 to
be executed and delivered as of the date first written above.
SYNAPTIC PHARMACEUTICAL CORPORATION
By:/s/ ▇▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
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Name: ▇▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
Title: Chairman, President and CEO
MERCK & CO., INC.
By:/s/ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇
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Name: ▇▇▇▇▇▇ ▇▇▇▇▇▇▇
Title:
