First Amendment to the License Agreement Between Emory University and AtheroGenics
Exhibit
10.1
First
Amendment to the License Agreement
Between
Emory University and AtheroGenics
This
First Amendment (the “First Amendment”) having an effective date of August 3,
2005 amends the License Agreement between Emory University (“Emory”) and
AtheroGenics Inc. (“AtheroGenics”) with an effective date of January 11, 1995,
attached hereto as Attachment 1.
WHEREAS,
discussions have occurred between Emory and AtheroGenics concerning certain
payments, royalties and other provisions;
WHEREAS,
the parties agree that as of the effective date of this First Amendment, no
royalties or milestones or other payments are due from AtheroGenics to
Emory;
WHEREAS,
the parties wish to modify certain provisions of the License Agreement,
including, but not limited to, payment provisions;
NOW
THEREFORE, the parties agree as follows:
1. Section
2.8 of the Agreement is hereby deleted in its entirety and replaced with the
following provision:
2.8
“Licensed
Product” shall mean any process, service, product, or composition of matter, the
manufacture, use, method of using, design, discovery, improvement, invention,
or
structure of which is claimed in any Licensed Patent (“Invention”) or which
incorporates or utilizes any Licensed Subject Matter. For the avoidance of
doubt, XXX-0000, XXX-0000, and AGI-4207 are specifically included within the
definition of Licensed Product.
2. The
following Sections of the Agreement are hereby deleted in their
entirety:
Section
2.14 “Net Revenue”
Section
2.15 “Net Selling Price”
Section
2.16 “Passthrough Royalties”
Section
2.19 “Sublicensee Royalties”
3. Section
2.13
is deleted in its entirety and replaced with the following
provision:
2.13
“Net
Distributions” shall mean the gross consideration received by AtheroGenics from
a sublicense of, or through a joint venture with respect to, Licensed Products
and/or Licensed Subject Matter in the Licensed Territory. Specifically excluded
from Net
1
Distributions
is any remuneration received by AtheroGenics as reimbursement for actual costs
incurred in the future by AtheroGenics specifically in connection with and
subsequent to the execution of any such sublicense or joint
venture.
4. The
following
Section is added to Article 2 of the Agreement:
2.22 “Net
Profit” shall mean the gross selling price received by AtheroGenics, or an
Affiliate, from a third-party other than a sublicensee or joint venture partner
from the sale of or other exploitation of Licensed Products and/or Licensed
Subject Matter (net of discounts, allowances, sales or other similar taxes,
rebates and returns, import and/or export duties), less cost of goods sold
for
Licensed Products and/or Licensed Subject Matter.
5. Article
5 of
the Agreement is hereby deleted in its entirety and replaced with the following
provision:
ARTICLE
5. PAYMENTS
AtheroGenics
shall pay Emory * of Net Distributions and Net Profit.
6. Section
6.1
of the Agreement is hereby deleted in its entirety and replaced with the
following provision:
6.1
Reports
and Records.
During
the term of this Agreement, AtheroGenics shall furnish, or cause to be furnished
to Emory, written reports showing the calculations used to determine Net
Distributions and/or Net Profit, as applicable. Such reports shall be made
semiannually after the first commercial marketing of a Licensed Product and
due
within ninety (90) days of the close of every second and fourth AtheroGenics’
fiscal quarter. AtheroGenics shall keep accurate records in sufficient detail
to
enable payments payable hereunder to be determined.
7. Section
12.3(c) of the Agreement is hereby deleted in its entirety. New Section 12.6
is
added:
12.6
Insurance
Notice.
AtheroGenics shall provide Emory with no less than thirty (30) days’ written
notice of any material change in the terms, coverage or the cancellation of
the
insurance policy referenced in Section 12.3.
8. Section
14.1
of the Agreement is hereby deleted in its entirety and replaced with the
following provision:
*
CONFIDENTIAL TREATMENT REQUESTED
2
14.1
Term.
The
term of this Agreement shall commence on the Effective Date and, unless sooner
terminated as otherwise provided for in this Agreement, shall continue in full
force and effect until October 30, 2012. After such termination, AtheroGenics’
payment obligations hereunder shall cease, and AtheroGenics shall be entitled
to
continue to utilize, on a non-exclusive basis, within the Field all inventions,
data or other information described and/or claimed in Licensed Patents and
all
technical information and data comprising Licensed Technology.
9. The
first
sentence of Section 16.3 of the Agreement is hereby deleted and replaced by
the
following text:
AtheroGenics
shall xxxx Licensed Products as customary and appropriate.
10. AtheroGenics
contact for Notices in Article 18 is hereby modified as follows:
AtheroGenics,
Inc.
Attn:
Vice
President, Business Development
0000
Xxxxxxxx
Xxxxxxx
Xxxxxxxxxx,
XX 00000
IN
WITNESS WHEREOF, Emory and AtheroGenics have caused this First Amendment to
be
signed by their duly authorized representatives as of the day and year indicated
below.
EMORY
UNIVERSISTY: ATHEROGENICS,
INC.
By:
/s/XXXXXXX
X. XXXXX By:
/s/XXXX
X. XXXXXXXXX
Xxxxxxx
X. Xxxxx
Xxxx X.
Xxxxxxxxx
Senior Vice President Finance
and
Administration and
Chief Financial Officer
Date:
____8/3/05____________ Date:
___8/3/05______________
3
