1
EXHIBIT 10.28
AMENDMENT NO. 1 TO LICENSE AGREEMENT
This Amendment No. 1 to License Agreement (this "Amendment"), dated as
of January 1, 1997, is entered into by and between Health Research, Inc.
("HRI"), and Corixa Corporation ("Corixa").
RECITALS
A. HRI and Corixa are parties to that certain Agreement for Collaborative
Research with Commercial Sponsors, dated as of March 1, 1995, as amended January
1, 1997 (the "Research Agreement"), pursuant to which Corixa is funding SCID
Mouse Model research being performed at HRI in the laboratory of Xx. Xxxxx
Xxxxxxx (the "Research"), in connection with which Research Corixa employees may
make inventive contributions resulting in joint inventions of the parties.
B. HRI and Corixa are parties to that certain License Agreement, dated November
20, 1995, pursuant to which HRI has granted Corixa an exclusive license to the
SCID Mouse Model technology, including but not limited to results of the
Research (the "License Agreement") and during the period following execution of
the License Agreement third parties have contacted HRI regarding access to the
SCID Mouse Model.
D. HRI and Corixa desire to amend the License Agreement to address the parties'
rights in joint inventions and to provide a method for responding to third
parties interested in access to the SCID Mouse Model.
NOW THEREFORE, the parties hereto agree to amend the License Agreement as
follows:
AGREEMENT
1. JOINT INVENTIONS
Section 7.1 of the License Agreement shall be replaced in its entirety with the
following:
Title to all patents and patent applications covering sole inventions of
HRI shall be in the name of HRI. Title to all patents and patent
applications covering joint inventions of LICENSEE and HRI that are
developments of or improvements to the INVENTION ("JOINT INVENTIONS"),
shall be in the name of HRI and LICENSEE and LICENSEE hereby grants to
HRI an exclusive, worldwide, royalty-free license to all of LICENSEE's
rights in and to JOINT INVENTIONS. JOINT INVENTIONS shall be deemed to
be a part of the INVENTION and the patents and patent applications
covering JOINT INVENTIONS shall be deemed to be a part of the LICENSED
PATENT RIGHT.
2. THIRD PARTY ACCESS TO THE INVENTION
2.1 Section 2.2.1 shall be amended by inserting after "organizations":
, provided, however, that, subject to the rights of the U.S. government,
HRI shall retain all rights to inventions related to the INVENTION that
are conceived or reduced to practice during such funded research.
2
2.2 A new Section 2.2.2 shall be added to the License Agreement as follows:
2.2.2 HRI shall promptly inform LICENSEE of any oral or written third
party communication regarding rights to the INVENTION, including but not
limited to, proposals to sponsor research involving the INVENTION and
requests for biological materials related to the INVENTION. HRI and
LICENSEE shall then discuss in good faith how to handle such
communication, including, for example, whether HRI shall inform such
third party of LICENSEE's exclusive rights to the INVENTION or direct
such third party to contact LICENSEE directly regarding rights to the
INVENTION.
3. REMAINDER OF LICENSE AGREEMENT
Except as amended hereby, the License Agreement shall remain in full force and
effect in accordance with its terms.
4. GOVERNING LAW
The laws of the United States of America and the State of New York shall govern
the interpretation and performance of this Amendment.
IN WITNESS WHEREOF, the parties hereto have caused this Amendment to be duly
executed as of the date first above written.
Health Research, Inc. Corixa Corporation
/s/ XXXXXXX XXXXXXXX /s/ XXXX XXXXXX
--------------------------------- ------------------------------------
Xxxxxxx XxXxxxxx Xxxx XxXxxx
Director of Operations Chief Operating Officer
