[Confidential Treatment Requested. Confidential Portions of this Agreement
have been redacted and filed separately with the Commission.]
EXHIBIT 10.4
EXECUTION COPY
FIRST AMENDMENT OF LICENSE AGREEMENT
This First Amendment of License Agreement is made and effective as of 25
September 2000, by and between Becton, Xxxxxxxxx and Company, a New Jersey
corporation through its BD Biosciences Division, having a place of business at 0
Xxxxxxx Xxxxxx, Xxxxxx, Xxxxxxxx 00000 (hereinafter "Becton") and Nanogen, Inc.,
a Delaware corporation having its principal office and place of business at
00000 Xxxxxxx Xxxxxx Xxxxx, Xxx Xxxxx, Xxxxxxxxxx 00000 (hereinafter "Nanogen").
WHEREAS, Becton and Nanogen are parties to a certain License Agreement
effective 1 October 1997 (hereinafter "LA"); and
WHEREAS, the parties desire to amend certain provisions of the LA.
NOW, THEREFORE, for good and valuable consideration, the parties hereby
agree to amend the LA as follows:
1. Paragraph 1.5 is hereby amended to read in its entirety as follows:
1.5 "Field" shall mean (a) IN VITRO human genetic testing, (b) IN
VITRO human cancer diagnostics, (c) IN VITRO testing of
agricultural samples, (d) IN VITRO testing of environmental
samples, (e) IN VITRO testing of veterinary samples and (f)
biomedical research applications not required to be reviewed or
approved by the U.S. Food and Drug Administration or a foreign
equivalent government organization, all of (a) through (f)
employing electronically addressable oligonucleotide arrays.
2. Paragraph 1.8 is hereby amended by adding after the words "Licensed
Products by Nanogen" the words "in the Field".
3. Paragraph 1.11 is hereby amended to read in its entirety as follows:
1.11 "Research Agreement" shall mean the Collaborative Research and
Development and License Agreement entered into by Becton, Nanogen
and the Partnership as of October 1, 1997, as amended as of
September 25, 2000.
4. Paragraph 1.12 is hereby amended by adding after "on behalf of
Nanogen" the words "or by a sublicensee of Nanogen."
5. Paragraph 2.2 is hereby amended to read in its entirety as follows:
2.2.1 Sublicensing
(a) Nanogen may grant sublicenses in and to the rights
licensed hereunder, provided that such sublicenses
are in full compliance with all of the provisions set
forth in this Section 2.2.
(b) No more than five (5) business days after execution
of any sublicense agreement pursuant to Paragraph
2.2(a), Nanogen shall deliver to Becton a complete
and accurate copy of such sublicense agreement.
(c) Nanogen shall pay to Becton **********************
*********************************** actually paid to
Nanogen from sublicensees. Nanogen shall also pay to
BD **********************************************
*****************************************************
unless permitted by Section 4.0 or Section 8.0.
(d) All sublicense agreements shall require the
sublicensee to comply with all the terms and
conditions of this Agreement applicable to Nanogen,
provided, however that, such sublicense agreements
shall not include grants of rights to the sublicensee
to: (a) have made Licensed Products; or (b) grant
further sublicenses (except by implication through
sale of Licensed Products to end-users of such
products).
(e) All other terms and conditions of any sublicense
agreement shall be consistent with the terms and
conditions of this Agreement.
6. Paragraph 3.1 is hereby amended to add the following sentence at
the end of the paragraph:
If Nanogen or its Affiliates sell Licensed Products
to or through a distributor, ***********************
****************************************************
****************************************************
****************
7. Paragraph 8 is hereby amended as follows:
Paragraph 8.1 is hereby amended by adding after the
words "that Nanogen's" the words "or to Nanogen's
knowledge, a sublicensee's".
Paragraph 8.2 is hereby amended by adding in the last
line after the words "action instituted against
Nanogen" the words "or a sublicensee".
Paragraph 8.3 is hereby amended by adding in the last
line after the words "proposed settlement by Nanogen"
the words "or a sublicensee".
Paragraph 8.4 is hereby amended by adding in the
second line after the words "split evenly by Nanogen
and Becton" the words "or the sublicensee and Becton
as applicable," and in the last line after the words
"and paid by, Nanogen" the words "or the sublicensee,
as applicable".
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Paragraph 8.5 is hereby amended by adding in the
second line after the words "8.2, Nanogen" the words
"or the sublicensee," in the third line after the
words "action, Nanogen" the words "or the
sublicensee," and in the fifth line after the words
"then Nanogen" the words "or the sublicensee".
Paragraph 8.6 is hereby amended by adding in the
beginning of the second line after the words "action,
Nanogen" the words "or the sublicensee" and in the
end of the second line after the words "which
Nanogen" the words "or the sublicensee".
8. Appendix A is hereby amended, and the First Revised Appendix A is
attached hereto.
IN WITNESS WHEREOF, the parties have executed this First Amendment of
License Agreement through duly authorized representatives on the dates set forth
below, effective as of the date first written above.
NANOGEN, INC. BECTON, XXXXXXXXX AND COMPANY
THROUGH ITS BD BIOSCIENCES DIVISION
By: /s/ XXXXXX X. XXXXXXXX By: /s/ XXXXXXX X. XXXXXXXX
--------------------------------- ----------------------------------
Authorized Signature Authorized Signature
XXXXXXX X. XXXXXXXX
XXXXXX X. XXXXXXXX SENIOR VICE PRESIDENT
CHAIRMAN & CEO TECHNOLOGY, STRATEGY & DEVELOPMENT
---------------------------------- ----------------------------------
Name and Title Name and Title
FIRST REVISED APPENDIX A
U. S. PATENTS AND PATENT APPLICATIONS
1. U. S. Patent No. 5,270,184, entitled "Nucleic Acid Target Generation"
2. U. S. Patent No. 5,422,252, entitled "Simultaneous Amplification of
Multiple Targets"
3. U. S. Patent No. 5,624,825, entitled "Simultaneous Amplification of
Multiple Targets"
4. U. S. Patent No. 5,455,166, entitled "Strand Displacement
Amplification"
5. U. S. Patent No. 5,712,124, entitled "Strand Displacement
Amplification"
6. U. S. Patent No. 5,536,649, entitled "Decontamination of Nucleic Acid
Amplification Reactions"
7. U. S. Patent No. 5,648,211, entitled "Strand Displacement
Amplification Using Thermophilic Enzymes"
8. U. S. Patent No. 5,744,311, entitled "Strand Displacement
Amplification Using Thermophilic Enzymes"
9. U. S. Patent No. 5,702,926, entitled "Use of Boronated Nucleotides in
Strand Displacement Xxxxxxxxxxxxx"
00. U. S. Patent No. 5,916,779, entitled "Reverse Transcription Strand
Displacement Xxxxxxxxxxxxx"
00. ***
12. ***
13. ***
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*** Confidential material redacted and separately filed with the Commission.
