FIRST AMENDMENT TO LICENSE AGREEMENT
Exhibit 10.3
CONFIDENTIAL TREATMENT REQUESTED UNDER
C.F.R. SECTIONS 200.80(b)(4), 200.83 AND 230.406.
[****] INDICATES OMITTED MATERIAL THAT IS THE
SUBJECT OF A CONFIDENTIAL TREATMENT REQUEST
FILED SEPARATELY WITH THE COMMISSION.
THE OMITTED MATERIAL HAS BEEN FILED
SEPARATELY WITH THE COMMISSION. | EXECUTION COPY |
FIRST AMENDMENT TO LICENSE AGREEMENT
THIS FIRST AMENDMENT (this “AMENDMENT”), made as of September 1, 2010 amends the certain License Agreement, effective as of April 1, 2010 (the “AGREEMENT”), entered into by and between the Board of Trustees of the University of Arkansas acting for and on behalf of the University of Arkansas for Medical Sciences, a public institution of higher education having principal offices at 0000 Xxxxx Xxxxxxxxxx Xxxxxx, Xxxxxx Xxxx, Xxxxxxxx 00000, Xxxxxx Xxxxxx of America (hereinafter “UNIVERSITY”), and Myeloma Health LLC, a Delaware limited liability company having a principal office at 000 Xxxxxxx Xxxxxx, 00xx Xxxxx, Xxx Xxxx, Xxx Xxxx 00000 (hereinafter “LICENSEE”), and shall be effective as of the EFFECTIVE DATE (as such term is defined in the AGREEMENT).
WITNESSETH
WHEREAS, UNIVERSITY and LICENSEE wish to amend the AGREEMENT to recognize that the following patent applications, identified by UNIVERSITY disclosure numbers: [****]and [****] (the “[****] FILINGS”), [****] (the “[****] FILINGS”), [****] (the “[****] FILINGS”), [****] (the “[****] FILINGS”), [****] (the “[****] FILINGS”) and [****] (the “[****]FILINGS”) are within the scope of the PATENT RIGHTS (as such term is defined in the AGREEMENT) under Section 2.12(a).
NOW, THEREFORE, UNIVERSITY and LICENSEE hereby amend the AGREEMENT as follows:
1. | UNIVERSITY and LICENSEE acknowledge and agree that the [****] FILINGS[****] FILINGS, [****] FILINGS, [****] FILINGS and [****] FILINGS are within the scope of the PATENT RIGHTS under Section 2.12(a). As a consequence, Appendix A shall be revised to include the following new table entries: |
“[****]” | |||||
UAMS Disclosure # | Applications | Publications | U.S. Patents | Overseas Publication | Overseas Patents |
[****] | [****] | [****] | |||
[****] | [****] | [****] |
CONFIDENTIAL TREATMENT REQUESTED UNDER
C.F.R. SECTIONS 200.80(b)(4), 200.83 AND 230.406.
[****] INDICATES OMITTED MATERIAL THAT IS THE
SUBJECT OF A CONFIDENTIAL TREATMENT REQUEST
FILED SEPARATELY WITH THE COMMISSION.
THE OMITTED MATERIAL HAS BEEN FILED
SEPARATELY WITH THE COMMISSION. |
“[****]” | |||||
UAMS Disclosure # | Applications | Publications | U.S. Patents | Overseas Publication | Overseas Patents |
[****] | [****] | [****] |
“[****]” | |||||
UAMS Disclosure # | Applications | Publications | U.S. Patents | Overseas Publication | Overseas Patents |
[****] | [****] | [****] |
“[****]” | |||||
UAMS Disclosure # | Applications | Publications | U.S. Patents | Overseas Publication | Overseas Patents |
[****] | [****] |
“[****]” | |||||
UAMS Disclosure # | Applications | Publications | U.S. Patents | Overseas Publication | Overseas Patents |
[****] | [****] | [****] |
“[****]” | |||||
UAMS Disclosure # | Applications | Publications | U.S. Patents | Overseas Publication | Overseas Patents |
[****] | [****] |
2. | Appendix B shall be revised to include the following new table entry under the heading “The following patent applications are included in PATENT RIGHTS and apply to both fluorescence in situ hybridization (FISH) testing and the LICENSED FIELD:” |
UAMS Disclosure # | Applications |
[****] | [****] |
CONFIDENTIAL TREATMENT REQUESTED UNDER
C.F.R. SECTIONS 200.80(b)(4), 200.83 AND 230.406.
[****] INDICATES OMITTED MATERIAL THAT IS THE
SUBJECT OF A CONFIDENTIAL TREATMENT REQUEST
FILED SEPARATELY WITH THE COMMISSION.
THE OMITTED MATERIAL HAS BEEN FILED
SEPARATELY WITH THE COMMISSION. |
3. | UNIVERSITY and LICENSEE acknowledge and agree that the patent costs incurred by UNIVERSITY and paid to third parties in connection with the preparation, filing, prosecution and maintenance, as of invoices received: |
a. | as of the EFFECTIVE DATE are as follows: |
(i) | [****] FILINGS: $[****], |
(ii) | [****] FILINGS: $[****], |
(iii) | [****] FILINGS: $[****], |
(iv) | [****] FILINGS: $[****], |
(v) | [****] FILINGS: $[****], and |
(vi) | [****] FILINGS: $[****] |
b. | after the EFFECTIVE DATE are as follows: |
(i) | [****] FILINGS:, |
(ii) | [****] FILINGS:, |
(iii) | [****] FILINGS:, |
(iv) | [****] FILINGS:, |
(v) | [****] FILINGS:, and |
(vi) | [****] FILINGS:. |
The amount of such patent costs that LICENSEE shall reimburse to UNIVERSITY shall be determined in accordance with Section 5.1(e) (i) (the “[****],[****],[****],[****],[****],[****]and [****] PATENT COSTS”).
4. | UNIVERSITY shall amend the separate letter signed by an authorized representative of UNIVERSITY pursuant to Section 5.1(e) (ii) to include the [****],[****],[****],[****],[****],[****] and [****] PATENT COSTS incurred by UNIVERSITY prior to the EFFECTIVE DATE. |
CONFIDENTIAL TREATMENT REQUESTED UNDER
C.F.R. SECTIONS 200.80(b)(4), 200.83 AND 230.406.
[****] INDICATES OMITTED MATERIAL THAT IS THE
SUBJECT OF A CONFIDENTIAL TREATMENT REQUEST
FILED SEPARATELY WITH THE COMMISSION.
THE OMITTED MATERIAL HAS BEEN FILED
SEPARATELY WITH THE COMMISSION. |
5. | LICENSEE shall pay to UNIVERSITY: |
a. | the patent costs for the [****],[****],[****],[****],[****],[****] and [****] PATENT COSTS incurred by UNIVERSITY prior to the EFFECTIVE DATE in accordance with Section 5.1(e)(ii). |
b. | the patent costs for the [****],[****],[****],[****],[****],[****]and [****] PATENT COSTS incurred by UNIVERSITY after the EFFECTIVE DATE in accordance with Section 5.1(e)(iii) |
6. | Except as provided herein above, all other terms and conditions of the AGREEMENT remain the same and in effect. |
(Signature page follows)
CONFIDENTIAL TREATMENT REQUESTED UNDER
C.F.R. SECTIONS 200.80(b)(4), 200.83 AND 230.406.
[****] INDICATES OMITTED MATERIAL THAT IS THE
SUBJECT OF A CONFIDENTIAL TREATMENT REQUEST
FILED SEPARATELY WITH THE COMMISSION.
THE OMITTED MATERIAL HAS BEEN FILED
SEPARATELY WITH THE COMMISSION. | EXECUTION COPY |
IN WITNESS WHEREOF, the PARTIES hereto have caused this AMENDMENT to be executed by their duly authorized representatives.
BOARD OF TRUSTEES OF THE | MYELOMA HEALTH LLC | |||
UNIVERSITY OF ARKANSAS | ||||
/s/ Xxx Xxxx | /s/ Xxx Xxxxxxxxx | |||
By: | Xxx Xxxx | By: | Xxx Xxxxxxxxx | |
Title: | Vice President for Administration | Title: | Chief Executive Officer | |
Date: | 8/26/10 | Date: | 8/19/10 |
[Signature Page to First Amendment to License Agreement]