Amendment to License and Royalty Agreement
This Amendment to License and Royalty Agreement (hereinafter AMENDMENT)
is made and entered into between Boston Medical Center, as successor to
University Hospital, Inc., with a principal place of business at ▇▇ ▇▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇ ("BMC"), and Seragen, Inc. ("SERAGEN"), a
corporation at ▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇.
WHEREAS, BMC and SERAGEN have previously entered into a License and
Royalty Agreement on November 18, 1991 with respect to the making, using and
selling the inventions disclosed and claimed in BMC's U.S. Patent Application
No. 08/231,397, filed April 22, 1994, entitled "Chimeric Toxins" (now U.S.
Patent No. 5,616,482 issued April 1, 1997), U.S. Patent Application No.
08/479,107 filed June 7, 1995, entitled "Chimeric Toxins", U.S. Patent
Application No. 08/477,418 filed June 7, 1995 entitled "DNA Encoding Chimeric
Diptheria Toxins", and U.S. Patent Application No. 08/483,726 filed June 7,
1995, entitled "Improved Chimeric Toxins", and the foreign patent applications
corresponding thereto ("PRIOR LICENSE AGREEMENT"); and
WHEREAS, BMC and SERAGEN desire to amend various provisions of the PRIOR
LICENSE AGREEMENT.
NOW, THEREFORE, in consideration of the mutual covenants set forth below
and in the PRIOR LICENSE AGREEMENT,
IT IS MUTUALLY COVENANTED AND AGREED AS FOLLOWS:
1. Paragraph 3.1(i) - This paragraph is amended to read as follows:
within eight (8) years of the date of this Agreement, to apply for
regulatory approval to market a LICENSED PRODUCT; and
2. Paragraph 3.1(ii) -This paragraph is amended to read as follows:
within twelve (12) months of obtaining regulatory approval to do
so, to commence sale of such LICENSED PRODUCT and thereafter to
make such LICENSED PRODUCT reasonably available to the public in
the commercial marketplace.
3. Paragraph 4.1(d) - This paragraph is amended to read as follows:
In consideration for the license granted under this Agreement,
SERAGEN shall pay BMC a royalty of one-half percent (0.5%) of the
NET SALES of any LICENSED PRODUCT sold to third parties by SERAGEN
or its AFFILIATES until such time as the MASTER PATENT expires, at
which time SERAGEN shall pay BMC a royalty of one percent (1.0%)
of the NET SALES of any LICENSED PRODUCT sold to third parties by
SERAGEN or its AFFILIATES.
4. Paragraph 4.3 - This paragraph is amended to read as follows:
SERAGEN shall pay BMC two percent (2%) of royalties collected
pursuant to sublicenses granted hereunder, provided the subject
matter of such sublicenses involves products or technologies which
are covered by the MASTER PATENT or other patents which Seragen
owns or has licensed. SERAGEN shall pay BMC ten percent (10%) of
royalties collected pursuant to sublicenses granted hereunder,
provided the subject matter of such sublicenses relates only to
patents or patent applications covered by this Agreement.
5. Paragraph 9.4 - This paragraph shall be added and read as follows:
Sublicenses granted by SERAGEN under this Agreement may provide
for assignment to BMC of SERAGEN's interest therein upon
termination of this Agreement. However, such assignment shall not
bind BMC to any obligations greater than those BMC has to SERAGEN
under this agreement.
6. All other terms of the PRIOR LICENSE AGREEMENT remain in full-force and
are hereby incorporated herein in this amendment.
IN WITNESS THEREOF, the parties hereto have each caused this AMENDMENT
to be duly executed by their duly authorized representatives.
The effective date of this Amendment is November 18, 1997.
Boston Medical Center Corporation
/s/ ▇▇▇▇▇▇ ▇▇▇▇▇▇
________________________________________________
President
Attest:
________________________________________________
Seragen, Inc.
/s/ ▇▇▇▇ ▇▇▇▇▇▇▇
_______________________________________
▇▇▇▇ ▇▇▇▇▇▇▇
President and Chief Technology Officer
Attest:
_______________________________________
