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EXHIBIT 10.8(b)
AMENDMENT NO. 1
TO THE
PATENT AND TECHNOLOGY LICENSE AGREEMENT
This is AMENDMENT NO. 1 effective this 1st day of September, 1996,
("EFFECTIVE AMENDMENT NO. 1 DATE") to the Patent and Technology License
Agreement dated July 20, 1994 (hereinafter referred to as the "AGREEMENT"), by
and between THE UNIVERSITY OF TEXAS M.D. XXXXXXXX CANCER CENTER (hereinafter
referred to as "MDA"), located at Houston, Texas, and which is a component
institution of THE UNIVERSITY OF TEXAS SYSTEM (hereinafter referred to as
"SYSTEM") which is governed by a BOARD OF REGENTS (hereinafter referred to as
"BOARD") and INTROGEN THERAPEUTICS, INC., located at 000 Xxxxxxxx Xxxxxx, Xxxxx
0000, Xxxxxx, Xxxxx 00000 (hereinafter referred to as "LICENSEE").
RECITALS
A. BOARD is the owner of the PATENT AND TECHNOLOGY RIGHTS of the
invention(s) listed in ATTACHMENT A hereto ("INVENTION(s)").
B. LICENSEE is a company interested in the development and commercialization
of new technologies directed to the treatment of cancer, and other
threatening diseases, to which end LICENSEE, MDA and BOARD entered into the
AGREEMENT noted hereinabove.
C. LICENSEE wishes to add the INVENTION(s) to its rights and obligations under
the AGREEMENT.
D. BOARD wishes to grant LICENSEE rights to the INVENTION(s) under the
AGREEMENT to promote its practical development for the benefit of the
MDA's patients and for the benefit of the people of the state of Texas.
E. The definitions set forth in the AGREEMENT shall apply in this AMENDMENT
NO. 1, except to the extent that a definition herein is specific to this
AMENDMENT NO. 1.
NOW, THEREFORE, in consideration for the mutual covenants contained herein, the
sufficiency of which is hereby acknowledged, the parties hereby agree to the
following:
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AMENDED TERMS
1. Attachment A to the AGREEMENT is hereby amended by adding to the LICENSED
SUBJECT MATTER thereof the INVENTION(s) listed in Schedule A of this
Amendment.
2. In addition to the reimbursements for patent expenses provided for under
the AGREEMENT and all other amendments thereto, LICENSEE shall reimburse
MDA within thirty (30) days of the EFFECTIVE DATE of this AMENDMENT NO. 1
for all outstanding and unreimbursed patent expenses related to the
INVENTION(s) and shall further reimburse MDA for all future and continuing
patent expenses for the INVENTION(s) pursuant to Article 4.1(a) of the
AGREEMENT for the term of the AGREEMENT, pursuant to invoicing by MDA.
OTHERWISE, the terms and provisions of the original AGREEMENT thereto
shall remain in full force and effect, provided, however, that in the event of
a conflict in the terms and conditions between this AMENDMENT NO. 1 and the
AGREEMENT, the terms and conditions of the AGREEMENT shall prevail.
IN WITNESS WHEREOF, THE PARTIES HERETO HAVE CAUSED THEIR DULY AUTHORIZED
REPRESENTATIVES TO EXECUTE THIS AMENDMENT NO. 1.
THE UNIVERSITY OF TEXAS BOARD OF REGENTS OF THE
M.D. XXXXXXXX CANCER CENTER UNIVERSITY OF TEXAS SYSTEM
By: /s/ XXXXX X. XXXXXXXX By: /s/ XXXXXXX X. XXXXXXX, M.D.
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Xxxxx X. Xxxxxxxx Xxxxxxx X. Xxxxxxx, M.D.
Executive Vice President Chancellor
for Administration and Finance
APPROVED AS TO CONTENT APPROVED AS TO FORM
By: /s/ XXXXXXX X. XXXX By: /s/ XXXXXX X. XXXXX, XX.
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Xxxxxxx X. Xxxx Xxxxxx X. Xxxxx, Xx.
Director, Technology Development Manager, Intellectual Property
INTROGEN THERAPEUTICS, INC.
By: /s/ XXXXX X. XXXXX
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Xxxxx X. Xxxxx
President
[*] Certain information on this page has been omitted and filed separately
with the Commission. Confidential treatment has been requested with
respect to the omitted portions.
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SCHEDULE A
Patent and Technology rights for U.S. and Foreign Patent Application entitled:
[*]
[*] Certain information on this page has been omitted and filed separately
with the Commission. Confidential treatment has been requested with
respect to the omitted portions.
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