1
EXHIBIT 10.22
AMENDMENT NO. 4 TO COLLABORATION AND LICENSE AGREEMENT
This amendment (the "Amendment") is made this 17th day of
February, 2000, among SmithKline Xxxxxxx Corporation, a Pennsylvania corporation
with offices at Xxx Xxxxxxxx Xxxxx, Xxxxxxxxxxxx, Xxxxxxxxxxxx 00000, XXX
(hereinafter "SB Corporation"); SmithKline Xxxxxxx plc, an English corporation
with offices at Xxx Xxxxxxxx Xxxxx, Xxxxxxxxx, Xxxxxxxxx, XX0 0XX, Xxxxxxx
(hereinafter "SB plc"), diaDexus LLC, a Delaware limited liability company with
offices at 0000 Xxxxxxxx Xxxxx, Xxxxx Xxxxx, XX 00000 (hereinafter "diaDexus")
and Incyte Pharmaceuticals, Inc, a Delaware corporation with offices at 0000
Xxxxxx Xxxxx, Xxxx Xxxx, XX 00000 (hereinafter "Incyte").
WITNESSETH:
WHEREAS, SB Corporation, SB plc, diaDexus and Incyte are parties to that
certain Collaboration and License Agreement dated September 2, 1997, as amended
(the "Collaboration Agreement");
WHEREAS, pursuant to the terms of the Collaboration Agreement, diaDexus
granted Incyte, SB Corporation and SB plc certain beneficial rights that relate
to inventions and discoveries made by diaDexus in the field of Rx/Other as
defined in the Collaboration Agreement (the "diaDexus Rights");
WHEREAS, SB Corporation, SB plc and Incyte desire to assign certain of
the diaDexus Rights to diaDexus;
WHEREAS, pursuant to the terms of the Collaboration Agreement, Incyte
granted diaDexus certain beneficial rights that relate to Incyte Diagnostic IP
(as defined in the Collaboration Agreement) and pursuant to the terms of the
Incyte Database Agreements (as defined in the Collaboration Agreement) Incyte
granted diaDexus certain beneficial rights that relate to Incyte Database
Know-How and Incyte Database Technology (each as defined in the Collaboration
Agreement);
WHEREAS, SB Corporation, SB plc, diaDexus and Incyte desire to delete
all references to Incyte Diagnostic Know-How, Incyte Diagnostic Patents, and
Incyte Diagnostic IP (each as defined in the Collaboration Agreement) in the
Collaboration Agreement, and otherwise amend the Collaboration Agreement in
accordance with the terms and conditions of this Amendment; and
WHEREAS, Incyte and diaDexus desire to replace the Incyte Database
Agreements with a new expanded database agreement to be entered as of the date
of this Amendment.
1
2
NOW, THEREFORE, in consideration of the covenants and obligations
expressed herein and other good and valuable consideration, the receipt and
adequacy of which is hereby acknowledged, the parties agree as follows:
1. DEFINITIONS.
1.1 All capitalized words used herein shall have the meaning set forth
in the Collaboration Agreement, except as expressly otherwise defined herein.
2. Specific Provisions.
2.1 All references in the Collaboration Agreement to Incyte Diagnostic
Know-How, Incyte Diagnostic Patents, and Incyte Diagnostic IP are deleted in
their entirety. diaDexus acknowledges it has no rights in and to Incyte
Diagnostic Know-How, Incyte Diagnostic Patents, and/or Incyte Diagnostic IP
pursuant to the terms of the Collaboration Agreement. As of the date of this
Amendment, diaDexus represents and warrants to SB that it has not received any
Incyte Diagnostic Know-How, Incyte Diagnostic Patents, and/or Incyte Diagnostic
IP from Incyte pursuant to the terms of the Collaboration Agreement.
2.2 Paragraph 5.6.2(a) is hereby deleted in its entirety and replaced
with the following:
5.6.2 Rx/Other
(a) Subject to subparagraph (b) below and Paragraph 5.6.5(b),
diaDexus grants to SB an exclusive world-wide license(s), with
the right to sublicense, under diaDexus IP generated during the
Extended License Period to Make, Have Made, Use, and Sell any
and all products and processes in the field of Rx/Other,
provided such diaDexus IP is based on the use of or derived by
use of SB Diagnostic IP. During the Extended License Period,
upon request, diaDexus shall provide to SB, as may be reasonably
available to it, research reagents developed by or on behalf of
diaDexus from the use of SB Diagnostic IP. SB shall reimburse
diaDexus for the actual costs of producing such reagents.
2.3 Paragraph 5.6.2(b) is amended by deleting "and Incyte" from line 3.
2.4 Paragraph 5.6.2(c) is hereby deleted in its entirety.
2.5 diaDexus represents and warrants to SB that, as of the date of this
Amendment, it has disclosed to SB and Incyte all diaDexus IP which is
potentially useful in the Rx/Other field which is reasonably available and
transferable in accordance with Section 9.3.7 of the Collaboration Agreement.
2.6 Paragraph 6.2 is hereby deleted in its entirety.
2
3
2.7 For purposes of clarity, the following new Paragraph 14.6.3 is
hereby added:
14.6.3. Freedom From Suit - Research. In the event diaDexus or its
sublicensee(s) develops technology based on the use of or derived by the
use of SB Diagnostic IP as targets in the development of ligands and
said technology, or aspects thereof, is ultimately claimed in patents
owned or controlled by diaDexus or its sublicensee(s), diaDexus, or its
sublicensee(s), as the case may be, agrees not to xxx or bring any
action in any court or administrative agency or any other government
authority alleging infringement of said patents as a result of
activities of SB or its affiliates or (sub)licensee(s) in their internal
research which would constitute an infringement of said patents, and
further, diaDexus or its sublicensee(s) as the case may be) agrees to
extend such freedom from suit or action to further (sub)licensee(s)s of
SB, its affiliates, or licensees.
3. EFFECT.
3.1 The Collaboration Agreement is hereby amended retroactively as of
the original date of the Collaboration Agreement, September 2, 1997, and is
amended in accordance with Paragraph 19.6 of the Collaboration Agreement. This
Amendment shall become effective upon the effectiveness of the new Collaborative
Agreement between Incyte and diaDexus granting diaDexus LifeSeq Gold and
PathoSeq access until September 2, 2003.
3
4
3.2 Except as expressly set forth herein, all other terms and conditions
of the Collaboration Agreement shall remain unaffected by this Amendment.
IN WITNESS WHEREOF, the parties, through their authorized officers, have
executed this Amendment as of the date first written above.
SMITHKLINE XXXXXXX CORPORATION
By: /s/ XXXXXX X. XXXXXX
-------------------------------
Its: Secretary
-------------------------------
SMITHKLINE XXXXXXX PLC
By: /s/ XXXXXX X. XXXXXX
-------------------------------
Its: Attorney-in-Fact
-------------------------------
DIADEXUS LLC
By: /s/ X. XXXXXXX
-------------------------------
Its: President & COO
-------------------------------
INCYTE PHARMACEUTICALS, INC.
By: [SIGNATURE ILLEGIBLE]
-------------------------------
Its: President & CFO
-------------------------------
4
