EXHIBIT 10.12
FIRST AMENDMENT TO LICENSE AGREEMENT
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This First Amendment to License Agreement (the "FIRST AMENDMENT") is made
and entered into as of this 29th day of June, 1995, by and among the OKLAHOMA
MEDICAL RESEARCH FOUNDATION, an Oklahoma nonprofit corporation ("OMRF"), 000
X.X. 00xx Xxxxxx, Xxxxxxxx Xxxx, XX 00000; THE UNIVERSITY OF KENTUCKY RESEARCH
FOUNDATION, a Kentucky nonprofit corporation ("UKRF"), 000 Xxxxxx Xxxxxx,
Xxxxxxxxx, XX 00000-0000 (OMRF and UKRF are hereinafter collectively referred to
as "LICENSORS"); and CENTAUR PHARMACEUTICALS, INC., a Delaware corporation, 000
Xxxxxxx Xxxxxxx, Xxxxxxxxx, XX 00000 ("LICENSEE").
RECITALS
A. Licensors and Licensee entered into a License Agreement dated as of
July 15, 1992 (the "AGREEMENT"), providing, in part, for an exclusive grant by
Licensors to Licensee of certain Licensed Technology in order to make, have
made, use and sell Licensed Products within the Licensed Territory.
B. Licensee and Astra AB, a Swedish corporation, X-000 00 Xxxxxxxxxx,
Xxxxxx ("ASTRA") have entered into a Development, License and Marketing
Agreement dated as of June 26, 1995 (the "ASTRA/CENTAUR AGREEMENT"), defining,
in part, a collaboration between Astra and Licensee in regard to the research,
development and marketing of Licensed Product.
C. UKRF and OMRF entered into Research Study Agreement(s) with Licensee
dated as of December 1, 1992 and February 1, 1993, respectively, with respect to
the conduct of an integrated, multi-part research program relating to the
synthesis and evaluation of certain anti-oxidant compounds (collectively and as
subsequently amended from time to time, the "RESEARCH AGREEMENTS").
D. Licensors and Licensee desire to amend and otherwise ratify the
Agreement pursuant to the provisions of this First Amendment.
E. All initially capitalized terms not otherwise defined in this First
Amendment shall have the meaning given in the Agreement.
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[*] - Confidential treatment is being sought with respect to this portion of
this agreement. This portion has been omitted from this filing and has
been filed separately with the Securities and Exchange Commission.
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NOW, THEREFORE, for and in consideration of the foregoing and the mutual
covenants and agreements contained herein and for other good and valuable
consideration the receipt and legal sufficiency is hereby acknowledged, the
parties agree as follows:
1. LICENSED PATENTS. The definition of "Licensed Patents" at paragraph
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1.1 of the Agreement is hereby stricken in its entirety and the following
substituted therefor:
1.1 "Licensed Patents" shall mean the United States and foreign patents
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and patent applications set forth below:
(a) United States Patent No. 5,025,032, titled "Phenyl Butyl Nitrone
Compositions and Methods for Treatment of Oxidative Tissue
Damage," issued June 18, 1991;
(b) United States Patent No. 5,036,097, titled "Phenylbutyl Nitrone
Compositions and Methods for Prevention of Gastric Ulceration,"
issued July 30, 1991;
(c) United States Patent No. 5,405,874, titled "PBN, DMPO, and POBN
Compositions and Methods of Use Thereof for Inhibition of Age-
Associated Oxidation," issued April 11, 1995;
(d) United States Patent Application No. [*]
(e) United States Patent Application No. 08/173,579, titled "2,4
Disulfonyl PBN, Its Salts, and Their Use as Pharmaceuticals"
filed ____________;
(f) United States Patent Application No. 08/011,968, titled "DMPO
Spin-trapping Pharmaceutical Compositions and Methods of Use
Thereof", filed February 1, 1993;
(g) All patents on inventions relating to the Licensed Technology
made jointly, as determined under United States patent law
relating to determination of inventorship, by one or more
individuals in
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each of the following two subparagraphs:
(i) One (1) or more employees of Licensee and/or Astra, and
(ii) One (1) or more employees of either or both Licensors;
(h) All patent applications and continuations-in-part contemplated by
OMRF or UKRF as of the date of the Agreement relating to
compositions of and methods for using spin-trapping compounds as
evidenced by documented communications between Xx. Xxxxxx and/or
Xx. Xxxxx and Xxxxxxxxxx and Xxxx, patent counsel for UKRF and
OMRF;
and all divisionals, continuations, reexaminations, reissues, extensions and
foreign counterparts of these applications and patents and all patents and
comparable rights that issue thereon.
2. LICENSED TECHNOLOGY. The definition of "Licensed Technology" at paragraph
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1.2 of the Agreement is hereby stricken in its entirety and the following
substituted therefor:
"1.2 "Licensed Technology" means collectively the
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(a) Licensed Patents, and
(b) Licensed Process, and
(c) all designs, technical information, know-how, knowledge, data,
specifications, test results and other information (including
but not limited to designs, technical information, know-how,
knowledge, data, specifications, test results and other
information previously disclosed to Licensee) relating to the
subject matter of the Licensed Patents or Licensed Process known
to Licensors on the date of the Agreement."
3. LICENSED PROCESS. The definition of "Licensed Process" at paragraph 1.3 of
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the Agreement is hereby stricken in its entirety and the following substituted
therefor:
"1.3 "LICENSED PROCESS" means any existing or future process which is
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covered in whole or in part by an issued, unexpired claim or a pending claim
contained in the Licensed Patents in the country in which the process is
practiced."
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4. FIRST RIGHT OF NEGOTIATION. Paragraph 2.8 of the Agreement is hereby
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stricken in its entirety and the following substituted therefor:
"2.8 FIRST RIGHT OF NEGOTIATION. Licensee shall have the first right to
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negotiate with Licensors to obtain a license to practice any patent Licensors
may acquire after the date of this Agreement (other than any patent included or
to be included within Licensed Patents) that is dominated by one or more patents
included in the Licensed Patents on such terms and conditions that Licensors and
Licensee may agree through negotiations in good faith. If Licensee declines to
exercise its right to negotiate or the parties have not entered into a License
within six (6) months after Licensors notify Licensee of the existence of a
patent subject to this paragraph, Licensors may negotiate with and grant a
license or other rights in such patent to others (a "Third Party Grant") on
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terms substantially no more favorable to such other party than were last offered
by Licensors to Licensee. Notwithstanding any Third Party Grant, Licensors'
grant and license to Licensee (set forth at paragraph 2.1 of the Agreement)
shall continue as an exclusive right and license, and shall not be affected by
any Third Party Grant."
5. ASTRA LICENSE AGREEMENT. Licensee consents to the terms and conditions of
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the License Agreement dated June ___, 1995 by and between Licensors and Astra
and to the "License" granted therein to Astra by Licensors.
6. RATIFICATION. In all other respects, the parties do hereby ratify the
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remaining terms and provisions of the Agreement.
IN WITNESS WHEREOF, the parties have caused this First Amendment to be
executed by their duly authorized representatives as of the day and year first
above written.
Licensors:
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OKLAHOMA MEDICAL RESEARCH FOUNDATION
By: /s/ Xxxxxxx X. Xxxxxxx
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Xx. Xxxxxxx X. Xxxxxxx, President
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UNIVERSITY OF KENTUCKY RESEARCH
FOUNDATION
By: /s/ Del Xxxxxxx
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Del Xxxxxxx
Licensee:
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CENTAUR PHARMACEUTICALS, INC.
By: /s/ Xxxxx X. Xxxxxxx
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Xxxxx X. Xxxxxxx, President
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