1
EXHIBIT 10.13
SECOND AMENDMENT
TO
THE HEADS OF AGREEMENT
This Second Amendment to the Heads of Agreement (the "Amendment") is made as of
this 7th day of August, 1998, by and between Genelabs Technologies, Inc.
("Genelabs") and SmithKline Xxxxxxx p.l.c. ("SKB") and amends that certain Heads
of Agreement dated August 27, 1992, between Genelabs and SKB, as amended by a
letter agreement dated September 15, 1993 and by that Amendment No. 1 dated as
of October 1, 1995 (as amended, the "Agreement").
The parties now wish to amend the Agreement to (i) terminate Genelabs'
co-exclusive license under certain patents and know-how to make, have made, use
and sell HEV Vaccines, either alone or in combination with other vaccines, in
Asia and PAKIPI, and (ii) change the terms of payment by SKB to Genelabs of two
development milestones. In partial consideration for these amendments, SKB has
agreed to pay to Genelabs U.S. $1 million.
Unless otherwise defined herein, all capitalized terms used in this Amendment
shall have the same meaning as such terms are defined in the Agreement.
NOW, THEREFORE, the parties have agreed as follows:
1. Termination of Co-exclusive License.
Genelabs hereby grants to SKB an exclusive, worldwide license, under PATENTS and
KNOW-HOW, to make, have made, use and sell HEV Vaccine. Accordingly, the
Agreement is amended as follows:
(a) The definition of "SKB TERRITORY", set forth in Paragraph
1.16, is amended to mean all countries of the world.
(b) The restrictions provided for under Paragraph 2.01, last
sentence, to LICENSEE'S rights to sub-license are hereby
terminated.
(c) Genelabs' co-exclusive license, set forth in Paragraph 2.02,
under PATENTS and KNOW-HOW to make, have made, use and sell
HEV Vaccine alone or in combination with other vaccines in
ASIA and PAKIPI is hereby terminated.
(d) Consistent with such termination of Genelabs' co-exclusive
license, the rights and licenses granted to Genelabs in
Paragraphs 2.03, 2.04, 2.05, 2.06, 2.09 and 2.10 (as such
Paragraph relates to the rights contained in Article 2) are
hereby terminated. The provisions of Paragraph 2.10 continue
in effect to the extent they apply to the rights granted to
Genelabs pursuant to Paragraph 6.03.
2
2. Amendment of Two Development Milestone Payments.
(a) Paragraph 4.02(a) is hereby amended to change the minimum
payment from [*]. Paragraph 4.02 (a) shall read in its
entirety as follows:
"US [*] upon LICENSEE entering into Phase I of
clinical trials with the HEV Vaccine; however, if the
price (the `STOCK PRICE') of LICENSOR's common stock
in the First Stock Purchase (as defined in Article
4.08 below) in the Stock Purchase Agreement (as
defined in Article 4.08 below) is less than [*] and
the stock purchase is made as provided for in the
Stock Purchase Agreement, this milestone will be
reduced by the product of [*], but under no
circumstance will the milestone be less than [*]."
(b) Paragraph 4.02(b) is hereby amended to read in its entirety as
follows:
"US [*] upon the earlier of (i) demonstration in
humans of protection by the HEV Vaccine against
disease, or (ii) three months following the
successful completion of a Phase III trial in any
country".
3. Payment by SKB.
In consideration for the foregoing amendments, SKB agrees to pay to Genelabs the
amount of US $1,000,000 (one million US dollars). Such amount shall be due and
payable promptly upon the execution of this Amendment.
Except as expressly amended by this Amendment, all terms and conditions of the
Agreement remain in full force and effect.
IN WITNESS WHEREOF, this Amendment has been executed as of the date first
written above by the duly authorized representatives of the parties hereto.
GENELABS TECHNOLOGIES, INC. SMITHKLINE XXXXXXX p.l.c.
By: /s/ XXXXXXX X. XXXXX, Ph.D. By: /s/ President and General Manager
------------------------------ ----------------------------------
Title: Vice President, Business Development Title: President and General
Manager
[*] Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted
portions have been filed separately with the Commission.
