Amendment #4 to License Agreement 2003-03-0433
Amendment
#4
to
License
Agreement ▇▇▇▇-▇▇-▇▇▇▇
This
amendment #4 ("Amendment
#4") is made by and between Ocusense, Inc., a Delaware corporation, having
an
address at ▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇
("LICENSEE") and The Regents of The University of California, a California
corporation having its statewide administrative offices at ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇,
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇-▇▇▇▇ ("UNIVERSITY"), represented by its San Diego
campus having an address at University of California, San Diego, Technology
Transfer &
Intellectual
Property Services, Mail-code 0910, ▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇
▇▇▇▇▇-▇▇▇▇ ("UCSD").
This
Amendment #4 is effective on the date of the last signature ("Effective
Date").
RECITALS
WHEREAS,
LICENSEE
and UNIVERSITY previously entered into License Agreement #▇▇▇▇-▇▇-▇▇▇▇
("License") as of March 12, 2003 for the commercial development of UCSD
invention disclosure SD2002-180 titled, "Volume Independent Tear Film Osmometer"
("Invention"), have previously entered into Amendment No.1 to the License
Agreement effective June 9, 2003, have previously entered into Amendment No.2
to
the License Agreement effective September 5, 2005, and have previously entered
into Amendment No.3 to the License Agreement effective July 7,
2006;
WHEREAS,
in
the
Recitals section of Amendment No.3, LICENSEE committed to securing three million
dollars (US$3,000,000.00) in A round venture financing no later than October
1,
2006;
WHEREAS,
diligent
progress is currently being made towards the raise of venture financing, however
efforts were not concluded as of October 1, 2006;
WHEREAS,
in
recognition of LICENSEE's continued progress in securing reasonable venture
financing, the due date for said financing is mutually agreed upon to be
extended to February 1,
2007
with a minimum raise of outside capital equal to two million dollars
(US$2,000,000.00);
WHEREAS,
UNIVERSITY
is desirous that LICENSEE achieve the broadest possible commercial success
with
Invention and therefore UNIVERSITY is amenable to clarifying the terms of
LICENSEE's agreement via the following amendments to License.
Therefore,
it is hereby agreed that:
1.
Change
Paragraph 1.5 "Patent Rights"
From:
"Patent
Rights" means
any
of the following: the US provisional patent application (Serial No. 60/401,432
titled "Volume Independent Tear Film Osmometer") disclosing and claiming the
Invention, filed by Inventor on or about August 6, 2002 and assigned to
UNIVERSITY; and any conversions or utility patent applications claiming priority
to the provisional patent application, including U.S. patent application Serial
No. 10/400,617 filed on or about March 25, 2003, and any continuing applications
of such conversion or utility patent applications including reissues,
extensions, substitutions, continuations, divisions, and continuation-in-part
applications (only to the extent, however, that claims in the
continuation-in-part applications are entirely supported in the specification
and entitled to the priority date of the parent application); and any
corresponding foreign applications or patents, including PCT Application No.
PCT/US03/09553PCT filed on or about March 25, 2003; and all patents filed by
UNIVERSITY having claims which are supported by specifications of such
provisional and utility applications."
To:
"Patent
Rights" means
any
of the following: the US provisional patent application (Serial No. 60/401,432
titled "Volume Independent Tear Film Osmometer") disclosing and claiming the
Invention, filed by Inventor on or about August 6, 2002 and assigned to
UNIVERSITY; and any conversions or utility patent applications claiming priority
to the provisional patent application, including U.S. patent application Serial
No. 10/400,617 filed on or about March 25, 2003, and any continuing applications
of such conversion or utility patent applications including reissues,
extensions, substitutions, continuations, divisions, and continuation-in-part
applications (only to the extent, however, that claims in the
continuation-in-part applications are supported in the specification); and
any
corresponding foreign applications or patents, including PCT Application No.
PCT/US03/09553PCT filed on or about March 25, 2003; and all patents filed by
UNIVERSITY having claims which are supported by specifications of such
provisional and utility applications."
2.
To
correct for a numbering error introduced as a result of Amendment No.2, change
all references to "2.2(d)(1)" in Paragraph 2.2(c) to "2.2(c)(1)".
IN
WITNESS WHEREOF, both
UNIVERSITY and LICENSEE have executed this Agreement, in duplicate originals,
by
their respective and duly authorized officers on the day and year
written.
OCUSENSE
INC. THE REGENTS OF THE
UNIVERSITY
OF CALIFORNIA:
BY:
/s/
▇▇▇▇
▇▇▇▇▇▇ BY: /s/ ▇▇▇▇ ▇. ▇▇▇▇
__________________
____________________
(Signature)
(Signature)
Name:
▇▇▇▇
▇▇▇▇▇▇ Name: ▇▇▇▇ ▇. ▇▇▇▇
Title:
CEO Title:
Assistant Vice Chancellor
Technology
Transfer & Intellectual
Property
Services
Date
10/9/06
Date
10/4/2006