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EXHIBIT 10.30
AMENDMENT NO. 1
TO THE
LICENSE AGREEMENT
This Amendment No. 1 (the "Amendment") to the License Agreement (the
"Agreement") is made effective as of the 30th day of April, 1997 (the "Effective
Date") by and between SOUTHERN RESEARCH INSTITUTE, a non-profit corporation,
having an address at 0000 Xxxxx Xxxxxx Xxxxx, Xxxxxxxxxx, Xxxxxxx 00000
("Southern"), UNIVERSITY OF ALABAMA AT BIRMINGHAM RESEARCH FOUNDATION, a
non-profit corporation having an address at 1120G Administration Building, 000
00xx Xxxxxx Xxxxx, Xxxxxxxxxx, Xxxxxxx 00000 ("UABRF") and CORIXA CORPORATION, a
Delaware corporation having an address at 0000 Xxxxxxxx Xxxxxx, Xxxxx 000,
Xxxxxxx, Xxxxxxxxxx 00000 ("Licensee").
RECITALS
Southern, UABRF and Licensee entered into the Agreement effective May
22, 1996 whereby Southern and UABRF granted certain licenses to
microencapsulation and microcapsule formulation technology to Licensee upon the
terms and conditions set forth in the Agreement.
Southern, UABRF and Licensee now wish to amend the Agreement in certain
respects as hereinafter provided.
Except as otherwise provided herein, definitions of capitalized words
shall be those set forth in the Agreement.
The parties now agree as follows:
AMENDMENTS
Section A. Article 1 of the Agreement is amended to add the following
new definition:
"LICENSED THIRD PARTY PRODUCT" shall mean, subject to Sections 2 and 4
hereof, any [***] deliverable product comprised
at least in part of Licensed Technology or Southern Patent Rights and that
includes in the Cancer Field a proprietary third party antigen or cytokine as a
component, may include a Corixa Adjuvant as a component, but does not include
either a Corixa Antigen or Corixa Cytokine as a component."
Section B. Section 1.11 of Article 1 of the Agreement is amended in its
entirety to read as follows:
"1.11 "LICENSED PRODUCT" shall mean, subject to Sections 2 and 4 hereof,
any [***] deliverable product, other than
Licensed Third Party Products, comprised at least in part of Licensed Technology
or Southern Patent Rights and that, in the case of Licensed Products sold in the
Cancer Field, is also comprised of at least one Corixa Component."
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Section C. Section 1.13 of Article 1 of the Agreement is amended to
delete the reference to "product" in the third line and the reference to
"Licensed Product" in subsection (c) thereof and to replace both references with
"Licensed Product or Licensed Third Party Product."
Section D. Article 2 of the Agreement is amended to renumber Section 2.3
to be Section 2.4 and to add a new Section 2.3 which reads as follows:
"2.3 Southern hereby grants under the Southern Patent rights and
Southern and UABRF hereby grant to Licensee under the Licensed Technology an
exclusive, worldwide license, including the right to sublicense, in the Cancer
Field to make, have made, research, use, sell and have sold Licensed Third Party
Products."
Section E. Article 3 of the Agreement is amended to renumber Sections
3.3 through 3.8 to be Sections 3.6 through 3.11, respectively, to reflect such
changes in cross-references to Sections throughout the Agreement, and to add new
Sections 3.3, 3.4 and 3.5 which shall read as follows:
"3.3 Licensee shall pay Southern the following amounts with respect to
Licensed Third Party Products that do not contain any Corixa Adjuvant:
(a) [***] of the cumulative non-research, non-equity license and
milestone payments, if any, received by Licensee for the grant of sublicense
rights to the Licensed Third Party Products; and
(b) [***] of the net royalty or equivalent payments received by
Licensee from sublicensees to whom Licensee has granted sublicense rights to the
Licensed Third Party Products (the "Direct Sublicensees") with respect to Net
Sales by the Direct Sublicensees of Licensed Third Party Products that do not
contain any Corixa Adjuvant; and
(c) the lesser of (i) [***] of net royalty or equivalent payments
received by Licensee from Direct Sublicensees with respect to Net Sales of
Licensed Third Party Products that do not contain any Corixa Adjuvant by
sublicensees of the Direct Sublicensee; or (ii) the royalty otherwise payable
pursuant to Sections 3.1 and 3.2.
3.4 Licensee shall pay Southern the following amounts with respect to
Licensed Third Party Products that do contain one or more Corixa Adjuvants:
(a) [***] of the cumulative non-research, non-equity license and
milestone payments, if any, received by Licensee for the grant of sublicense
rights to the Licensed Third Party Products; and
(b) [***] of the net royalty or equivalent payments received by
Licensee from Direct Sublicensees with respect to Net Sales by the Direct
Sublicensees of Licensed Third Party Products that do contain one or more Corixa
Adjuvants; and
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(c) the lesser of (i) [***] of net royalty or equivalent payments
received by Licensee from Direct Sublicensees with respect to Net Sales of
Licensed Third Party Products that do contain one or more Corixa Adjuvants by
sublicensees of the Direct Sublicensee; or (ii) the royalty otherwise payable
pursuant to Sections 3.1 and 3.2.
3.5 In the event that the effective royalty payable (a) by Licensee to
Southern on Net Sales of Licensed Third Party Products pursuant to Section
3.3(c)(i) or 3.4(c)(i) is less than [***] or (b) by a Direct Sublicensee to
Licensee on Net Sales by the Direct Sublicensee of Licensed Third Party Products
is less than [***], Licensee shall not have the right to grant any sublicense to
the Licensed Third Party Products without the prior written consent of
Southern."
Section E. Section 3.3, as amended hereby to be Section 3.6, of Article
3 of the Agreement is hereby amended in its entirety to read as follows:
"3.6 All payments under this Article 3 shall be in U.S. dollars, due and
payable (i) with respect to Licensed Products, within forty-five (45) days after
the end of each calendar quarter for Net Sales during such quarter, and (ii)
with respect to Licensed Third Party Products, within forty-five (45) days after
the receipt of the applicable payment by Licensee from the Direct Sublicensee of
such Licensed Third Party Product. Licensee shall deliver to Southern with each
payment a report setting forth the sales or sublicense revenue during such
quarter or period, as applicable, and a calculation of the royalties or payments
due thereon. Where sales are not made in U.S. dollars, the sales amounts will be
translated using the rate of exchange quoted in The Wall Street Journal on the
last business day of such quarter."
Section F. The first sentence of Section 3.6(b), as amended hereby to be
Section 3.9(b), is hereby amended in its entirety to read as follows:
"(b) Licensee shall grant to Southern a warrant in the form attached
hereto as Exhibit 3.9 (the "Warrant"), for the purchase of two hundred fifty
thousand (250,000) shares of Licensee's Common Stock, which shall become
exercisable automatically and without any further action of Licensee or Southern
for the following number of shares, upon occurrence of the following events:"
Section G. The reference in Section 3.6(b)(ii), as amended hereby to be
Section 3.9(b)(ii) to "Licensed Product" is hereby amended to refer to "Licensed
Product or Licensed Third Party Product."
Section H. Article 3 is hereby further amended to add a new Section 3.12
to read as follows:
"3.12 In its sublicensing efforts, Licensee shall use commercially
reasonable efforts to obtain favorable economic terms for Licensee and Southern,
consistent with the terms and conditions of this Agreement."
Section I. Section 4.6 is hereby amended in its entirety to read as
follows:
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"4.6 For so long as Licensee continues to have the option to negotiate
set forth in Section 4.4, [***], Licensee shall (a) pay to Southern an option
fee of [***] and (b) grant to Southern fifteen thousand (15,000) shares of
Licensee's Common Stock, subject to the terms of Licensee's standard form of
investment representation letter."
Section J. The reference to "Licensed Products" in Section 8.2 of
Article 8 is hereby amended to refer to "Licensed Products or Licensed Third
Party Products."
Section K. Article 17 is hereby amended to add a new Section 17.6 as
follows:
"17.6 This Agreement may not be assigned by either party without the
prior written consent of the other party."
ENTIRE AGREEMENT
Except as provided otherwise herein, all other terms and conditions of
the Agreement shall remain in full force and effect.
IN WITNESS WHEREOF, the parties have executed the Amendment in duplicate
original by their proper officers to be effective as of the Effective Date
above.
CORIXA CORPORATION SOUTHERN RESEARCH INSTITUTE
By: /S/ Xxxx XxXxxx By: /s/ X.X. XXXXX
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Xxxx XxXxxx Name: X.X. Xxxxx
Chief Operating Officer --------------------------------
Title: Chief Executive Officer
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Date: April 30, 1997
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Date: May 5, 1997
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UAB RESEARCH FOUNDATION
By: /s/ XXXXXXX X. XXXXXX
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Name: Xxxxxxx X. Xxxxxx
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Title: Executive Director
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Date: May 2, 1997
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