EXHIBIT 10.3
Amendment #1 to License Agreement # 0014-130701L
The following changes, additions and deletions to License Agreement, made
and entered into July 13, 2001, between Rensselaer Polytechnic Institute and
ProUroCare Inc., previously known as Pro Uro Care, are agreed to between the
parties, and shall take precedence over any conflicting provision in said
License Agreement:
1. Section 1.4 of the License Agreement is deleted and replaced with the
following:
FIELD OF USE shall mean diagnosis and/or treatment of urological or renal
conditions.
2. Section 1.9 of the License Agreement is deleted and replaced with the
following:
GROSS SALES shall mean revenues received by LICENSEE or any sublicensee in
consideration for the sale, transfer or disposition of LICENSED
PROCESS(ES) or LICENSED PRODUCT(S).
3. Section 2.3 of the License Agreement is added:
LICENSEE shall have the sole and exclusive right to grant sublicenses to
any party with respect to the rights conferred upon LICENSEE under this
Agreement, provided, however, that:
(i) any such sublicense shall be subject in all respects to the
terms and conditions of this Agreement (but not including the
payment of license fee pursuant to Section 5.1.1 or minimum
royalties pursuant to Section 4.3.2 hereof);
(ii) LICENSEE shall pay LICENSOR, or cause all sublicensees to pay
LICENSOR, the same royalties on all Net Sales of such
sublicensees in accordance with Section 5.1.2, the same as if
said Net Sales had been made by LICENSEE. Each sublicensee
shall report its Net Sales to LICENSOR through LICENSEE, which
Net Sales shall be aggregated with any Net Sales of LICENSEE
for purposes of determining the Net Sales upon which royalties
are to be paid to LICENSOR;
(iii) any such sublicense agreement must incorporate by reference
the terms and conditions of this Agreement, including
representations, warrants and covenants by sublicensee that
are equivalent to the representations, warrants and covenants
made by LICENSEE pursuant to Section 10.2.4 herein, and in
addition, further provide that such representations, warrants
and covenants shall run to and be for the benefit of LICENSOR;
(iv) each such sublicense agreement, must also name LICENSOR as an
intended third party beneficiary of the obligations of
sublicensee, without imposition of obligation or liability on
the part of LICENSOR or its inventors to the sublicensee;
(v) each such sublicensee, and the form and substance of each such
sublicense agreement, shall be subject to the prior written
approval of LICENSOR, which approval shall not be unreasonably
withheld. Provided however, that should LICENSOR fail to
object to (i) a proposed sublicensee, or (ii) a proposed
sublicense agreement within twenty (20) days after delivery to
it of (i) the identity of such sublicensee, or (ii) a complete
copy of such sublicense agreement, approval shall be presumed;
and
(vi) Any sublicense agreement granted herein may permit further
sublicensing of the rights conferred to Licensee herein so
long as such sublicense agreement require that any
sub-sublicense agreement also comply with all of the
conditions set forth in subdivision (i) through (v) above.
Any and all sublicense revenues, other than royalties, lines of credit and
research and development funding, due LICENSEE pursuant to the grant of a
sublicense, shall be reported to LICENSOR by LICENSEE within thirty (30)
days of receipt by LICENSEE. LICENSEE shall pay to LICENSOR twenty-five
percent (25%) of such sublicense revenue. Any non-cash consideration
received by LICENSEE from sublicensees shall be valued at its fair market
value as of the date of receipt. For avoidance of doubt, sublicense
revenues shall not include consideration received by LICENSEE from the
transfer of intellectual property acquired, owned or developed by LICENSEE
which are not INTELLECTUAL PROPERTY RIGHTS.
4. Section 4.3.1 of the License Agreement is deleted and replaced with the
following:
initiate FDA approval process by filing with the FDA and commencing human
clinical trials by seven (7) years from Effective Date of this Agreement;
and
5. Section 5.1.3 of the License Agreement is added:
In connection with the Sublicense Agreement dated July 27, 2005 between
LICENSEE and Urologix, Inc. ("Urologix") ("Urologix Sublicense"), pay
LICENSOR royalties of 3% of NET SALES by LICENSEE to Urologix of the
Rectal Sheath and Abdominal Belt (as such terms are defined in Article
5,12 of the Memorandum of Understanding dated July 27, 2005 made by and
between Licensee and Urologix) ("Urologix MOU"), and any other Licensed
Products sold by LICENSEE to Urologix, plus 1% of Net Sales by Urologix of
the EIT External Box or any control unit containing the EIT External Box
(as such term is defined in the Urologix MOU) (the "1% Royalty");
provided, however, no royalty shall be due on sales of the EIT External
Box that is provided to existing customers of Urologix at a price equal to
or below Urologix's cost to manufacture and deliver the EIT External Box
or is provided to customers of Urologix in connection with or as a
component of a control unit sold by Urologix at a price equal to or below
the cost to manufacture and deliver the control unit and the EIT External
Box. The royalties payable pursuant to this Section 5.1.3 shall be in lieu
of any and all royalties that would otherwise be payable with respect to
Section 5.1.2 or the Urologix Sublicense. It is contemplated that LICENSEE
shall be responsible for and pay the 1% Royalty, unless and until Urologix
becomes the direct licensee of LICENSOR pursuant to Section 9.3 of this
Agreement. Also pursuant to Section 9.3 of this Agreement, Urologix is
intended to be a beneficiary of the obligations of LICENSOR under this
Agreement in the event that this Agreement is terminated.
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6. Section 9.2 of the License Agreement is deleted and replaced with the
following:
The term of this Agreement shall terminate if no LICENSED PROCESS or
LICENSED PRODUCT is available for sale after eight (8) years from
Effective Date.
7. Section 9.3 of the License Agreement is deleted and replaced with the
following:
If LICENSEE shall cease to carry on its business, this Agreement shall
terminate immediately without any action required, but all obligations of
LICENSEE to LICENSOR shall survive, and any sublicensee(s) shall become a
direct licensee of LICENSOR, provided that LICENSOR's obligations to
sublicensee(s) are no greater than LICENSOR'S obligations to LICENSEE
under this Agreement and any sublicensee's rights shall not be impaired
thereby.
8. All other terms and conditions of such License Agreement remain in effect.
9. The Effective Date of this Amendment #1 is July 27, 2005.
10. This Amendment #1 may be executed in any number of counterparts, each of
which will be an original, and such counterparts together will constitute
one and the same instrument.
IN WITNESS WHEREOF, the parties hereto have caused this Amendment #1 to be
executed by their duly authorized officers as of the date above written.
RENSSELAER POLYTECHNIC INSTITUTE
By: /s/ Xxxxxx X. Xxxxx
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Xxxxxx X. Xxxxx
Executive Director
Office of Intellectual Property, Technology Transfer and New Ventures
Date: July 28, 2005
PROUROCARE INC.
By: /s/ Xxxxxxx X. Xxxxxx
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Its CEO
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Date: July 27, 2005
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