Second Addendum to the Technology License Agreement between The Research Foundation of State University of New York for and on behalf of University at Buffalo and Donald D. Hickey, M.D. and Clas E. Lundgren, M.D., Ph.D. and Scivanta Medical Corporation
EXHIBIT
10.25
Second
Addendum to the Technology License Agreement
between
The
Research Foundation of State University of New York
for
and on behalf of University at Buffalo
and
Xxxxxx
X. Xxxxxx, M.D.
and
Clas
X. Xxxxxxxx, M.D., Ph.D.
and
Scivanta
Medical Corporation
This
Second Addendum (this “Second Addendum”) to the Technology License Agreement (as
such term is defined below), entered into as of the 23rd day of October, 2008
(the “Second Addendum Effective Date”), is by and among The Research Foundation
of State University of New York, for and on behalf of University at Buffalo,
a
non-profit corporation organized and existing under the laws of the State of
New
York (the “Foundation”), Xxxxxx X. Xxxxxx, M.D. (“Xxxxxx”) and Clas X. Xxxxxxxx,
M.D., Ph.D. (a/k/a Xxxxx Xxxxxxxx and referenced herein as “Xxxxxxxx”) and
Scivanta Medical Corporation (formerly Medi-Hut Co., Inc.), a corporation duly
organized under the laws of the State of Nevada, and having its principal place
of business at 000 Xxxxxx Xxxxxx, Xxxxxx Xxxx, Xxx Xxxxxx 00000 (“Licensee”).
Foundation, Xxxxxx and Xxxxxxxx will be collectively referenced herein as
“Licensor.” Capitalized terms used herein, but not otherwise defined herein,
shall have such meanings as given to such terms in the Technology License
Agreement.
WHEREAS,
Licensor and Licensee entered into an exclusive Technology License Agreement
on
November 10, 2006, as amended on June 29, 2007 (the “Technology License
Agreement”), to facilitate the development and commercialization of certain
technology owned by Licensor so that this technology may be utilized to the
fullest extent for the benefit of Licensee, Licensor, the inventor(s) and the
public; and
WHEREAS,
Licensor and Licensee desire to modify the aforementioned Technology License
Agreement for the mutual benefit of both parties;
NOW,
THEREFORE, in consideration of the mutual promises and covenants contained
herein, and for other good and valuable consideration, the receipt of which
is
hereby acknowledged, the parties agree as follows:
|
1.
|
The
modifications of the Technology License Agreement herein will be
effective
as of the Second Addendum Effective Date and will remain in effect
for the
duration of the Technology License Agreement unless further modified
in
writing by the parties hereto.
|
|
2.
|
Section
3.5 of the Technology License Agreement is deleted in its
entirety.
|
|
3.
|
A
new Section 3.10 is added to the Technology License Agreement as
follows:
|
3.10 Cash
Payment. Licensee
will pay Xxxxxx a one-time cash payment of $158,438 on or before the date that
is thirty (30) days after the first commercial sale of a Licensed Product by
the
Licensee. If the Licensee fails to make the full payment pursuant to this
Section 3.10 on or before the due date, then interest shall accrue on any
outstanding balance at a rate that is equal to the lesser of the maximum rate
allowed by law or 1.5% per month, but in any case the cash payment and any
accrued interest must be paid in full no later than December 31,
2009.
| 4. |
A
new Section 3.11 is added to the Technology License Agreement as
follows:
|
3.11 Stock
Grant.
As of
October 23, 2008,
the
Licensee shall issue 1,001,920 shares of its common stock, par value $0.001
per
share (“Common Stock”), as follows: (a) 412,860 shares of Common Stock will be
issued to the Foundation; (b) 162,500 shares of Common Stock will be issued
to
Xxxxxx; and (c) 426,560 shares of Common Stock will be issued to Xxxxxxxx.
Each
certificate
representing the shares of Common Stock to be issued pursuant to this Section
3.11 will contain a restrictive legend on transfer and the Licensee will have
no
obligation to register any of the shares of Common Stock under the Securities
Act of 1933, as amended.
| 4. |
Section
6.1 of the Technology License Agreement will be deleted in its entirety
and replaced with the following:
|
6.1
Patent
Costs Incurred Pre-Effective Date.
Licensee
and Licensor agree that as of October 23, 2008 an aggregate of $120,900 has
been
paid by the Licensee to the Licensor as reimbursement of Patent Costs incurred
by the Licensor prior to the Effective Date of the Technology License Agreement.
The Licensee and Licensor further agree that as of October 23, 2008, the
remaining amount due from the Licensee to the Licensor for reimbursement of
Patent Costs incurred by the Licensor prior to the Effective Date of the
Technology License Agreement is $108,235. This amount will be paid by the
Licensee to the Licensor as follows: (a) $39,101 will be paid in cash to Xxxxxx
on or before October 31, 2008; (b) $34,567 will be paid in cash to Xxxxxxxx
on
or before October 31, 2008; and (c) $34,567 will be paid in cash to Xxxxxxxx
on
or before February 1, 2009.
|
5.
|
Other
than as specifically modified in this Second Addendum, all other
terms,
conditions and covenants of the Technology License Agreement shall
remain
in full force and effect.
|
2
IN
WITNESS WHEREOF, the undersigned duly authorized representatives of the parties
have executed this Second Addendum, effective as of the Second Addendum
Effective Date.
|
SCIVANTA
MEDICAL CORPORATION
|
THE
RESEARCH FOUNDATION OF
|
|
STATE
UNIVERSITY OF
|
|
|
NEW
YORK
|
|
|
By:
/s/ Xxxxx X.
XxXxxxx
|
By:
/s/ Xxxxxxx X.
Xxxxxxx
|
|
Xxxxx
X. XxXxxxx
|
Xxxxxxx
X. Xxxxxxx
|
|
Title:
President and Chief Executive Officer
|
Title:
Associate Vice Xxxxxxx, STOR
|
|
XXXXXX
X. XXXXXX, M.D.
|
CLAS
X. XXXXXXXX, M.D., Ph.D.
|
|
By:
/s/ Xxxxxx X. Xxxxxx, M.D.
|
By:
/s/ Clas X. Xxxxxxxx, M.D.,
Ph.D.
|
|
Xxxxxx
X. Xxxxxx, M.D.
|
Clas
X. Xxxxxxxx, M.D., Ph.D.
|
3
