Confidential material redacted and filed separately with the Commission. Confidential Treatment Requested. Confidential portions of this document have been redacted and separately filed with the Commission.
*****
Confidential material redacted and filed separately with the
Commission.
Confidential
Treatment Requested. Confidential portions of this document have been redacted
and separately filed with the Commission.
Date:
August 31, 1995
|
TO:
|
Yeda
Research and Development Company
Ltd.
|
X.X.
Xxx
00
Xxxxxxx
00000
ATTENTION:
MR. *****
Dear
Sirs,
Re:
Amendment
of Research and License Agreement
This
letter, when counter-signed by an authorized representative of Yeda Research
and
Development Ltd. (“Yeda”) will constitute an agreement between Yeda and XTL
Biopharmaceuticals Ltd. (formerly named Xenograft Technologies Ltd.-“XTL”) to
extend the period of research under the Research and License Agreement entered
into by Yeda and XTL on April 7, 1993 (the “R&L Agreement”) and otherwise to
amend the R&L Agreement, as hereinafter provided (unless otherwise herein
defined, all capitalized terms appearing herein having the meanings ascribed
to
them in the R&L Agreement):
1.
General
| 1.1. |
XTL
has advised Yeda that XTL *****.
|
|
1.2.
|
XTL
wishes to modify and diversify the rates of royalties due to Yeda
under
the R&L Agreement as hereinafter provided and Yeda agrees
thereto.
|
|
1.3.
|
XTL
wishes to receive, and Yeda is willing to grant to XTL, a grace
period
prior to commencement of certain royalty payments under the R&L
Agreement, as hereinafter provided.
|
2.
Royalties
| 2.1. |
Royalty
Rates
|
Instead
of the royalties payable as specified in Clause 7(d)(ii) of the R&L
Agreement, and subject to Section 2.2 below, the royalties payable to Yeda
by
XTL in consideration of the Licence granted under the R&L Agreement, shall
be as follows:
|
2.1.1.
|
*****
percent) of Net Sales (as hereinafter defined) from sales by XTL
of
pharmaceutical products developed and/or made under and/or using
the
Licensed Patents and/or the Licensed Technology. “Net Sales” as used
herein shall have the meaning ascribed to the term in the R&L
Agreement, references therein to “the Products” being read as references
to the pharmaceutical products referred to
hereinbefore.
|
1
*****
Confidential material redacted and filed separately with the
Commission.
|
2.1.2.
|
*****
percent) of all amounts received by XTL from third parties (except
the
amounts governed by Section 2.1.4 below) under or pursuant to agreements
allowing *****,
provided
that if XTL shall be obliged to pay a royalty of more than *****
per cent) on any such amounts to a third party pursuant to a bona
fide
arms-length agreement with such third party (“a third party royalty”),
then the rate of royalty payable to Yeda pursuant to this Section
2.1.2 on
amounts subject to a third party royalty shall be reduced by the
percentage - up to a maximum *****
per cent) - by which the third party royalty rate exceeds *****
per cent), so that if,
for example, the third party royalty rate is *****
per cent) the rate of royalty payable to Yeda pursuant to this
Section
2.1.2 shall be *****
per cent), and if, as a further example, the third party royalty
rate is
*****
per cent), the rate of royalty payable to Yeda pursuant to this
Section
2.1.2 shall be reduced by *****
per cent).
|
|
2.1.3.
|
*****
percent) of all amounts received by XTL from a third party payable
*****
the Licensed Patents and/or the Licensed
Technology.
|
|
2.1.4.
|
*****
percent) of all amounts received by XTL under or pursuant to agreements
with third parties *****
using the Licensed Patents and/or the Licensed
Technology.
|
|
2.1.5.
|
*****
percent) of all amounts received by XTL as a result of *****,
other than those specified in Sections 2.1.1, 2.1.2, 2.1.3 or 2.1.4
above.
Where the amounts received by XTL are the result of activities
not
involving the grant of sublicences to third parties (“Direct Activities”)
and are amounts received in a transaction other than at arms length,
the
royalty due to Yeda shall be calculated on the amount that would
have been
received by XTL in a transaction at arms
length.
|
|
2.1.6.
|
For
the avoidance of doubt, it is expressly stated that royalties shall
not be
due pursuant to Sections 2.1.2, 2.1.4 or 2.1.5 above on *****.
|
|
2.1.7.
|
For
the avoidance of doubt, it is expressly stated, that nothing in
this
Section 2.1 above or elsewhere in this letter shall be deemed to
derogate
from the provisions of Clause 7(c) of the R&L Agreement governing the
grant of sublicences.
|
|
2.2.
|
Commencement
of Payment of Royalties
|
Royalties
due under the R&L Agreement (as herein amended) shall become payable as
follows:
| 2.2.1. |
XTL's
obligation to pay royalties to Yeda pursuant to Sections 2.1.1,
2.1.2 or
2.1.5 above, shall
relate only to amounts received by and/or due to XTL on or after
the “Due
Date” (as hereinafter defined). The “Due Date” means the earlier of the
following dates: (a) the date of expiry of the period *****,
and (b) the date on which the aggregate amount received by *****.
|
|
2.2.2.
|
XTL’s
obligation to pay royalties to Yeda pursuant to Section 2.1.3 above
shall
apply to all amounts subject to royalty under that Section whenever
received, provided that actual payment of royalties due to Yeda
pursuant
to that Section on amounts received by XTL before the Due Date
shall be
due and made within 30 days of the Due
Date.
|
2
*****
Confidential material redacted and filed separately with the
Commission.
|
2.2.3.
|
Subject
to the provisions
of this Section 2.2 above, the provisions of Clause 7(d)(iii) of
the
R&L Agreement shall apply, mutatis mufandis, to the royalties payable
to Yeda pursuant to Section 2.1 above, references to “Net Sales” in the
said Clause 7(d)(iii) being deemed references to “Net Sales” as defined in
Section 2.1.1 above for the purpose of that Section and to amounts
received by XTL from Direct Activities (as defined in Section 2.1.5
above)
and references to “Sublicensing Receipts” in Clause 7(d)(iii) being deemed
references to amounts subject to royalty payment to Yeda pursuant
to
Sections 2.1.2, 2.1.3, 2.1.4 or 2.1.5 above (not being amounts
resulting
from Direct Activities (as defined in Section 2.1.5
above)).
|
|
2.2.4.
|
For
the avoidance of doubt, it is expressly stated that there shall
be no
grace period of any kind regarding payment of royalties pursuant
to
Section 2.1.4 above and they shall be paid on the periodic basis
specified
in Clause 7(d)(iii) of the R&L
Agreement.
|
|
2.3.
|
For
the avoidance of doubt, it is expressly stated that the periods
during
which royalties shall be payable under the R&L Agreement shall be as
follows:
|
|
2.3.1.
|
Payment
of royalties pursuant to Section 2.1.1 shall commence as provided
in
Section 2.2 and shall continue with respect to sales of any pharmaceutical
product as follows:
|
|
(aa)
|
if
the product sold is made and/or sold in a country where a Licensed
Patent
or Patents issue including claims covering, in whole or in part,
such
product or the manufacture thereof-then, (i) *****;
|
|
(bb)
|
on
sales of a product made and sold in any other country, *****.
|
|
2.3.2.
|
Payment
of royalties pursuant to Section 2.1.2 shall commence as provided
in
Section 2.2 and shall continue as
follows:
|
| (aa) |
payment
of royalties on amounts paid to XTL and attributable to activities
of the
paying third parry under a Licensed Patent or Patents in a particular
country shall continue *****;
|
| (bb) |
payment
of royalties on amounts paid to XTL and attributable to activities
of the
paying third party in a particular country in which there is no
Licensed
Patent *****;
|
| (cc) |
payment
of royalties on amounts paid to XTL and not attributable to the
paying
third party's activities in any particular country, shall continue
until
*****.
|
|
2.3.3.
|
Payment
of royalties pursuant to Section 2.1.3 shall commence as provided
in
Section 2.2 and shall continue as
follows:
|
|
(aa)
|
payment
of royalties on amounts paid to XTL and attributable to activities
of XTL
or of the paying third party under a Licensed Patent or Patents
in a
particular country shall continue *****,
|
3
*****
Confidential material redacted and filed separately with the
Commission.
|
(bb)
|
payment
of royalties on amounts paid to XTL and attributable to activities
of XTL
or the paying third party in a particular country in which there
is no
Licensed Patent *****;
|
|
(cc)
|
payment
of royalties on amounts paid to XTL and not attributable to XTL's
or the
third party's activities in any particular country shall continue
until
*****.
|
|
2.3.4.
|
Payment
of royalties pursuant to Section 2.1.4 shall commence as provided
in
Section 2.2 and shall continue as
follows:
|
| (aa) |
payment
of royalties on amounts paid to XTL and attributable to activities
of the
paying third party under a Licensed Patent or Patents in a particular
country shall continue *****;
|
| (bb) |
payment
of royalties on amounts paid to XTL and attributable to activities
of the
paying third party in a country in which *****;
|
|
(cc)
|
payment
of royalties on amounts paid to XTL and not attributable to the
third
party's activities in any particular country shall continue, until
*****.
|
|
2.3.5.
|
Payment
of royalties pursuant to Section 2.1.5 shall commence as provided
in
Section 2.2 and shall continue as
follows:
|
|
(A)
|
where
the royalties are on
amounts
received by XTL on any Direct Activity, the duty to pay royalties
shall
continue:
|
|
(aa)
|
if
the activity or any part thereof is carried out in any country
under a
Licensed Patent or Patents-then, *****;
|
|
(bb)
|
if
the activity is carried out in any other country, *****;
|
|
(B)
|
Where
the royalties are due on amounts received by XTL on activities
not being a
Direct Activity, the duty to pay royalties shall continue as
follows::
|
|
(aa)
|
payment
of royalties on amounts paid to XTL and attributable to activities
of the
paying third party under a Licensed Patent or Patents in a particular
country shall continue *****;
|
|
(bb)
|
payment
of royalties on amounts paid to XTL and attributable to activities
of the
paying third party in a particular country in which there is no
Licensed
Patent shall continue *****;
|
|
(cc)
|
payment
of royalties on amounts paid to XTL and not attributable to the
third
party's activities in any particular country shall continue, *****.
|
|
2.4.
|
The
“relevant grace period” for the purpose of any of subsections 2.3.1, 2.3.2
and 2.3.5 above, shall mean the period by which commencement of
payment of
royalties due under subsections 2.1.1, 2.1.2 and 2.1.5, respectively,
has
been delayed, pursuant to Section 2.2
above.
|
4
*****
Confidential material redacted and filed separately with the
Commission.
|
2.5.
|
The
License granted under the R&L Agreement shall remain in force (if not
previously terminated according to the provisions of the R&L Agreement
(as amended hereby)) for the purpose of each of the activities
specified
in Sections 2.1.1, 2.1.2, 2.1.3, 2.1.4 and 2.1.5, as long as there
is a
duty to pay royalties in respect of such activity, as provided
in Section
2.3 above. Clause 7(b)(iii) of the R&L Agreement is replaced by the
provisions of this Section 2.5
above.
|
|
3.
|
Payments
for Sponsored R&D
|
|
3.1.
|
Subject
to the amendments contained herein, the period of research which
XTL is
obliged to fund under the R&L Agreement is hereby extended by 1 (one)
year and shall continue until August 31, 1996 (the “Extension
Period”).
|
|
3.2.
|
XTL
shall pay Yeda an
aggregate amount in New Israel Sheqels equal (at the representative
rate
of exchange in force on the date of payment) to *****
(plus VAT against VAT invoice) in consideration of Yeda’s undertaking to
procure the performance (under the supervision of *****)
of research in the Extension Period in accordance with the Research
Plan
and the Budget attached hereto as Appendices “A” and “B”, respectively, as
follows:
|
|
3.2.1.
|
An
amount in New Israel Sheqels equal (at the representative rate
of exchange
in force on the date of payment) to *****
(plus VAT against VAT invoice) on March 31,
1996;
|
|
3.2.2.
|
An
amount in New Israel Sheqels equal to *****
(plus VAT against VAT invoice) on each of May 15, 1996 and July
31,
1996.
|
|
3.3.
|
Simultaneously
with counter-signature hereof by Yeda, XTL
shall provide Yeda with a bank guarantee from an Israeli bank,
in form
acceptable to Yeda, in order to secure XTL’s obligations under Sections
3.2.1 and 3.2.2 above. *****
of
the bank charges and commissions actually paid by XTL to the issuing
bank
in respect of the bank guarantee shall be reimbursed by Yeda to
XTL,
against proof of the amount paid by XTL, forthwith upon receipt
by Yeda of
the amount payable by XTL pursuant to Section 3.2.1
above.
|
| 4. |
Entire
Agreement
|
Except
as
set forth in this letter, all the terms of the R&L Agreement shall remain
unchanged. The R&L Agreement, as amended hereunder, sets forth the entire
understanding between Yeda and XTL regarding the R&L Agreement (except as
supplemented by written instrument of even or subsequent date), and supersedes
any other prior agreement or understanding, oral or written.
Please
indicate your acceptance of the terms of this letter by affixing your signature
below.
Very
truly yours,
Xxxxxx
Xxxxxx, Ph.D.
President
and CEO
5
*****
Confidential material redacted and filed separately with the
Commission.
Agreed
and Accepted:
Yeda
Research and Development Company Ltd.
By:
*****,
President / Prof. *****,
Chairman of the Board of Directors
6
*****
Confidential material redacted and filed separately with the
Commission.
Research
Plan
|
1.
|
Milestones
for Contract Research: Year 1
|
|
A.
|
*****
|
|
B.
|
*****
|
| 2. |
Basic
Research: Year 1
|
|
A.
|
*****
|
|
B.
|
*****
|
|
C.
|
*****
|
Note
that
confidential treatment has been requested and one (1) page of material has
been
omitted and filed separately with the Commission.
7
*****
Confidential material redacted and filed separately with the
Commission.
Budget
|
1.
|
*****
|
|
a.
|
*****
|
|
b.
|
*****
|
|
c.
|
*****
|
|
d.
|
*****
|
| 2. |
*****
|
|
a.
|
*****
|
|
b.
|
*****
|
|
c.
|
*****
|
|
d.
|
*****
|
|
e.
|
*****
|
*****
Note
that
confidential treatment has been requested and one (1) page of material has
been
omitted and filed separately with the Commission.
8
*****
Confidential material redacted and filed separately with the
Commission.
Date:
13
February, 1996
To:
Yeda
Research and Development Co (Yeda)
Dear
Sirs,
Research
and Development Agreement between XTL Biopharmaceuticals Ltd. ("XTL") and
Neoprobe Corporation (“Neoprobe”)
With
reference to the Research and Development Agreement between XTL
Biopharmaceuticals Ltd. and Neoprobe Corporation dated as of February 13,
1996
(“the Research Agreement”), XTL, hereby confirms, acknowledges and
agrees:
|
(a)
|
that
any agreement by XTL to the amendment of the Research Agreement
(and/or
Exhibit B thereto) requires Yeda’s prior written
consent;
|
|
(b)
|
that
any agreement by XTL to the sublicensing or assignment of the Research
Agreement (and/or Exhibit B thereto) by Neoprobe requires Yeda’s prior
written consent;
|
|
(c)
|
that
any assignment by XTI. of its rights and obligations under the
Research
Agreement (and/or Exhibit B thereto) requires Yeda’s prior written
consent;
|
|
(d)
|
that
if XTL shall grant its agreement in either of the cases specified
in
subparagraphs (a) or (b) without first obtaining Yeda’s prior written
consent thereto or purport to make an assignment without first
obtaining
Yeda's prior written consent as required in subparagraph (c), XTL,
shall
be in material breach of the Research and License Agreement dated
as of
April 7, 1993 between Yeda and XTL (as amended) ("the
RLA”);
|
|
(e)
|
that
at Yeda’s request, XTL will exercise its right under Exhibit B of the
Research Agreement to inspect the books and accounts of
Neoprobe;
|
|
(f)
|
that
Yeda’s consent to the Research Agreement in no way derogates from the
provisions of the RLA, including - without limitation - Paragraph
7(c)(iv)
thereof, or from Yeda's rights and XTL's obligations
thereunder;
|
|
(g)
|
that,
at Yeda's request, XTL will exercise its legal rights under the
Research
Agreement (and/or Exhibit B thereto) against Neoprobe in the event
of a
breach of the Research Agreement (and/or Exhibit B thereto) by
Neoprobe
having an adverse effect for Yeda, including - without limitation
-
failure by Neoprobe to pay royalties due to XTL, under the Research
Agreement.
|
Yours
Faithfully,
Agreed:
Yeda
Research and Development Co. Ltd.
9
February
13, 1996
To:
Yeda
Research and Development Co. Ltd. (Yeda)
Dear
Sirs,
Research
and Development Agreement between XTL Biopharmaceuticals Ltd
(“XTL”) and Neoprobe Corporation (“Neoprobe”)
With
reference to the Research and Development Agreement between XTL
Biopharmaceuticals Ltd. and Neoprobe
Corporation dated as of February 13, 1996 (“the Research Agreement"). XTL hereby
confirms, acknowledges and agrees:
|
(a)
|
that
any agreement by XTL to the amendment of the Research Agreement
(and/or
Exhibit B thereto) requires Yeda's prior written
consent;
|
|
(b)
|
that
any agreement by XTL the sublicensing or assignment of the Research
Agreement (and/or Exhibit B thereto) by
Neoprobe
requires Yeda’s prior written
consent;
|
|
(c)
|
that
any assignment by XTL of its rights and obligations under the Research
Agreement (and/or Exhibit B thereto) requires Yeda’s prior written
consent;
|
|
(d)
|
that
if XTL shall grant its agreement in either of the cases specified
in
subparagraphs (a) or (b) without first obtaining Yeda’s prior written
consent thereto or purport to make an assignment without first
obtaining
Yeda's prior written consent as required in subparagraph (c), XTL
shall be
in material breach of the Research and License Agreement dated
as of April
7, 1993 between Yeda and XTL (as amended) (“the
RLA”);
|
|
(e)
|
that
at Yeda’s request, XTL will exercise its right under Exhibit B of the
Research Agreement to inspect the books and accounts of
Neoprobe;
|
|
(f)
|
that
Yeda's consent to the Research Agreement in no way derogates from
the
provisions of the RLA, including - without limitation - Paragraph
7(c)(iv)
thereof, or from Yeda’s rights and XTL’s obligations
thereunder;
|
|
(g)
|
that,
at Yeda's request, XTL will exercise its legal rights
under
the Research Agreement (and/or Exhibit B thereto) against Neoprobe
in the
event of a breach of the Research Agreement (and/or Exhibit B thereto)
by
Neoprobe having an adverse effect for Yeda, including - without
limitation
- failure by Neoprobe to pay royalties due to XTL under the Research
Agreement.
|
Yours
Faithfully,
Agreed:
Yeda
Research and Development Co. Ltd.
10
February
13, 1996
Yeda
Research and Development Co. Ltd.
X.X.
Xxx
00
Xxxxxxx
00000
Xxxxxx
| Re: |
“Research
and Development Agreement”
|
Between
XTL Biopharmaceuticals Ltd. and Neoprobe Corporation
Gentlemen:
In
this
subject agreement dated February 13, 1996, XTL granted an exclusive license
to
Neoprobe for the results of certain XTL research from XTL. This research
will be
based on certain XTL disease modeling and target agent technology. By this
letter, Yeda Research and Development Company Limited (“Yeda”) and Neoprobe
agree to the following:
|
a.
|
Yeda
acknowledges and consents to the Research and Development Agreement
between XTL and Neoprobe and to the Sublicense Agreement attached
therein;
|
|
b.
|
Neoprobe
confirms that Yeda is a third party beneficiary under the Research
and
Development Agreement as stated
therein;
|
|
c.
|
Yeda
agrees that, in the event that XTL defaults on the Research and
License
Agreement between XTL and Yeda dated as of April 7, 1993 (as amended)
(the
“RLA”), then, unless Yeda terminates the RLA, the exclusive grant
described in Article 6.1 of the Research and Development Agreement
(and
the rest of the Research and Development Agreement) and the Sublicense
Agreement attached thereto will not be affected. If the RLA is
terminated
for any reason, the Research and Development Agreement will terminate
automatically (except for Articles 2.1.3, 3, 4.1 (a) - (e) and
(f)
(provided that the grant under Article 6.1 still is in effect)
and 4.2, 5,
7 and 11 thereof, which shall survive), but the grant in Article
6.1 of
the Research and Development Agreement and the Sublicense Agreement
attached thereto shall be assumed (if still in force) by Yeda directly,
subject to Neoprobe’s continued performance under the Sublicense
Agreement, which obligations will, in such circumstances, be deemed
to be
owed directly to Yeda. For the guidance of all doubt, it is expressly
stated that except for the assumption of Article 6.1 and the Sublicense
Agreement as aforesaid, Yeda will not assume the research and development
of any other aspects of the Research and Development Agreement,
will not
under any circumstances be obliged to indemnify Neoprobe in respect
of any
claims, and will not be subject to Article 4 of the Sublicense
Agreement.
|
|
d.
|
Neoprobe
acknowledges that any agreement by XTL to any amendment to the
Research
and Development Agreement requires XTL to obtain Yeda’s prior written
consent, which consent will not be unreasonably withheld; and
|
|
e.
|
Neoprobe
agrees that it will not make mention of the name of Yeda or the
Weizmann
Institute or any of the scientists thereof in any advertising,
sales,
literature, promotional material, other publications, private placement
memoranda, public
|
11
*****
Confidential material redacted and filed separately with the
Commission.
offering
registration statements and the like, unless the prior written approval of
Yeda
thereto has been obtained (such approval not to be unreasonably withheld)
and
except as required by law. Once an approval has been granted by Yeda to a
certain form of words for use in a particular context, then the same form
of
words can be used again by Neoprobe in the same context, without further
approval from Yeda.
Please
sign and date the attached copy of this letter and return it to me for my
files.
Neoprobe
Corporation
*****
Agreed
and Accepted:
Yeda
Research and Development Company Ltd.
***** *****
***** *****
Agreed:
Xxxxxx
Xxxxxx, President
12
