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EXHIBIT 10
AMENDMENT NO. 1 TO
LICENSE AGREEMENT
Reference is made to a certain License Agreement dated as of January 5,
1998, by and among Regent Court Technologies ("Licensor"), Xxxxxx X. Xxxxxxxx
("Xxxxxxxx"), Xxxxxxx X. X'Xxxxxxx, Xx., M.D. ("X'Xxxxxxx") and Star Tobacco and
Pharmaceuticals, Inc. ("Licensee") (the "License Agreement").
For good and valuable consideration, the receipt and sufficiency of
which are hereby acknowledged, Licensor, Xxxxxxxx, X'Xxxxxxx and Licensee hereby
agree to amend the License Agreement as follows:
1. Section 2 is amended so that, in its entirety, it reads as
follows:
"2. GRANT OF LICENSE. Subject to the terms and
conditions of this Agreement, Licensor hereby grants and agrees to grant to
Licensee an exclusive and irrevocable license, with the right to grant
sublicenses as provided in this Agreement, under the Patent Rights and under the
Know-How, to make, have made, use, sell or otherwise dispose of, or deal in, any
Product anywhere in the world."
2. Section 4 is amended so that, in its entirety, it reads as
follows:
"4. RETENTION OF RIGHTS. Notwithstanding the
exclusive license granted in Section 2, Licensor will have the absolute,
nontransferable right to use the technology covered by the Patent Rights and
Know-How and all improvements thereof, for conducting research."
3. Section 5 is amended so that, in its entirety, it reads as
follows:
"5. PATENT PROSECUTION.
5.1 Licensee shall diligently prosecute at
Licensee's discretion and at Licensee's expense all United States and foreign
patent applications included within the Patent Rights and shall otherwise at its
discretion take such action as shall perfect or effect its title to the Patent
Rights. Licensee shall provide Licensor with copies of all U.S. and foreign
patent applications included in Patent Rights, and, generally, shall provide to
Licensor such other information regarding the Patent Rights as Licensor may
request from time to time. The foreign jurisdictions in which Licensee
prosecutes such applications shall include those jurisdictions covered by the
Patent Cooperation Treaty, as well as India. All patent prosecution information
supplied by Licensee to Licensor hereunder shall be subject to the
confidentiality provisions of this Agreement.
5.2 If Licensee so elects, Licensee may also
prosecute at its expense the Patent Rights in such foreign jurisdictions as are
not specified in Section 5.1 of this Agreement."
4. Section 7 is amended so that, in its entirety, it reads as
follows:
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"7. SUBLICENSES. Licensee may sublicense any of the
Patent Rights; provided that, with respect to any sublicense to an Affiliated
Sublicensee, it shall be a condition precedent to any such sublicense that such
Affiliated Sublicensee shall agree in writing to be jointly and severally
obligated and liable to Licensor for all of the obligations of Licensee under
this Agreement, and that no further right to sublicense may be granted to an
Affiliated Sublicensee; and further provided that all sublicensee shall agree to
the terms of Section 8 hereof."
5. Section 9.1 is amended so that, in its entirety, it reads as
follows:
"9. TERMINATION.
9.1 (a) Licensee may terminate this Agreement at any
time, for any reason, by providing Licensor not less than thirty (30) days prior
written notice thereof.
(b) Licensor may terminate this Agreement upon the
occurrence of any of the following:
(i) A default in the payment of Royalties
when due and payable, or a failure to submit to Licensor when due a true and
complete accounting statement pursuant to Section 3.2 of this Agreement, which
default or failure continues for a period of at least thirty (30) days after
Licensor has given to Licensee written notice of such default or failure.
(ii) A material breach of any other
obligation of Licensee under this Agreement, which breach shall not have cured
within sixty (60) days after Licensor has given to Licensee written notice of
such breach, in which notice Licensor shall have specified in reasonable detail
the nature of such breach. For purposes of determining materiality, and
provided the nature of the breach may be measured in monetary terms, a breach
shall be deemed "material" if such breach results in a loss of Royalties
exceeding $100,000.
6. The parenthetical clause "(the "Royalties")" is deleted from
the first sentence of Section 3.1 of the License Agreement.
7. The phrase "and Licensing Payments" is deleted from the first
sentence of Section 3.2 of the License Agreement.
The parties agree that they shall cause a restated License Agreement to
be prepared incorporating the amendments set forth herein.
Except as amended hereby, the License Agreement is hereby ratified and
confirmed and parties acknowledge that it is in full force and effect.
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Executed as of the 3rd day of August, 1998.
Regent Court Technologies
By: /s/ Xxxxxxx X. X'Xxxxxxx, Xx.
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Star Tobacco and Pharmaceuticals, Inc.
By: /s/ Xxxxx X. Xxxxxx
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/s/ Xxxxxx X. Xxxxxxxx
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Xxxxxx X. Xxxxxxxx
/s/ Xxxxxxx X. X'Xxxxxxx, Xx.
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Xxxxxxx X. X'Xxxxxxx, Xx.
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