VARIATION AGREEMENT TO CO-DEVELOPMENT AND COMMERCIALIZATION AGREEMENT
Exhibit 10.6.1
VARIATION AGREEMENT
TO CO-DEVELOPMENT
AND COMMERCIALIZATION AGREEMENT
TO CO-DEVELOPMENT
AND COMMERCIALIZATION AGREEMENT
THIS VARIATION AGREEMENT (“Variation Agreement”) is made and entered into as of the 19 day of
December, 2009 by and among Rules-Based Medicine, Inc., a Delaware corporation (“RBM”); and Psynova
Neurotech Limited, a company incorporated in England and Wales (“Psynova”).
W I T N E S S E T H:
WHEREAS, RBM and Psynova are parties to that certain Co-Development and Commercialization
Agreement dated September 5, 2008 (as amended and varied, the “Agreement”) whereby, among other
things, Psynova granted certain rights to RBM under Section 9.3 of the Agreement (the
“Schizophrenia IP Rights”);
WHEREAS, the Schizophrenia IP Rights include rights under any Psynova Background IP (as
defined in the Agreement), which includes Intellectual Property (as defined in the Agreement”) that
is related to a Schizophrenia Product (as defined in this Agreement) that is subject to the
Framework Agreement between The Chancellor, Masters and Scholars of the University of Cambridge,
Cambridge Enterprise Limited, and Psynova (the “Framework Agreement”); and
WHEREAS, Psynova has certain rights to the intellectual property set forth in Schedule 1,
which is subject to the Framework Agreement and the parties desire to amend the Agreement to
memorialize the inclusion of said intellectual property within the Schizophrenia IP rights granted
to RBM under the Agreement.
NOW, THEREFORE, in consideration of the foregoing and for other good and valuable
consideration, the receipt and sufficiency of which are hereby acknowledged, the parties hereby
agree as follows:
1. Definitions. Capitalized terms used but not defined herein shall have the meaning
given in the Agreement.
2. Amendments to Agreement.
(a) Psynova Background IP. The definition of Psynova Background IP is hereby
deleted in its entirety and replaced with the following:
“Psynova Background IP” means (a) any Intellectual Property owned, licensed to
or developed by Psynova independently of the R&D Project and this Agreement,
which relates to any Schizophrenia Product, and (b) the Intellectual Property
identified in Schedule 1 hereto, which relates to any Schizophrenia
Product.
(b) Inventions. The definition of Invention is hereby deleted in its entirety
and replaced with the following:
“Invention” means (a) an invention conceived by one or more employee or agent
of either Psynova or RBM or the parties jointly, which invention arises from
the R&D Project or otherwise under the terms of this Agreement, and includes
without limitation all New Biomarkers and New Assays and (b) an invention
owned, licensed to or developed by Psynova independently of the R&D Project
and this Agreement, which relates to any Schizophrenia Product (such as
Intellectual Property licensed to Psynova as contemplated by the Framework
Agreement), and includes without limitation, the Inventions identified in
Schedule 2.
3. Confirmation
The parties agree and declare that the Agreement shall (save as amended by this Variation
Agreement) continue in full force and effect and this Variation Agreement shall be read as one
with, and shall be supplemental to, the Agreement. Where there is any inconsistency or ambiguity
between the terms of the Agreement and this Variation Agreement, the terms of this Variation
Agreement shall prevail.
4. Miscellaneous Provisions
| a. | The provisions of clauses 22 and 23.11 of the Agreement shall apply mutatis mutandis. | ||
| b. | This Variation Agreement is not intended to confer any legally enforceable rights on any person other than the parties, their successors in title and assignees, whether pursuant to the Contracts (Rights of Third Parties) Xxx 0000 applicable to England and Wales or otherwise. | ||
| c. | Each party acknowledges to the others (and shall execute this Variation Agreement in reliance on such acknowledgement) that it has not been induced to enter into this Variation Agreement by, nor relied on, any representation or warranty. | ||
| d. | This Variation Agreement may be executed in any number of counterparts and by the different parties hereto in separate counterparts, each of which when so executed shall be deemed to be an original and all of which taken together shall constitute one and the same agreement. Delivery of an executed counterpart of a signature page to this Variation Agreement by fax or email shall be effective as delivery of a manually executed counterpart of this Variation Agreement. |
IN WITNESS WHEREOF, the parties hereto have executed this Variation Agreement as of the date
first set forth above.
| RULES-BASED MEDICINE, INC. |
||||
| By: | /s/ Xxxxxx X. XxXxxx | |||
| Title: | Vice President — Corporate Development | |||
| PSYNOVA NEUROTECH LIMITED |
||||
| By: | /s/ Xxxx Xxxxxxx | |||
| Title: | Director | |||
SCHEDULE 1 TO CO-DEVELOPMENT AND COMMERCIALIZATION AGREEMENT
Assigned to Cambridge and Subject to Framework Agreement with Psynova
| Country | Application Number | Filing Date | Description | |||||
PCT
|
PCT/GB2006/050034 | 2/14/2006 | Bah-1253-01-Biomarkers and targets-psychiatric disorders/related disorders of CNS | |||||
Australia
|
2006212041 | 2/14/2006 | Bah-1253-01-Biomarkers and targets-psychiatric disorders/related disorders of CNS | |||||
Canada
|
2594405 | 2/14/2006 | Bah-1253-01-Biomarkers and targets-psychiatric disorders/related disorders of CNS | |||||
China
|
200680004894.5 | 2/14/2006 | Bah-1253-01-Biomarkers and targets-psychiatric disorders/related disorders of CNS | |||||
Japan
|
2007553715 | 2/14/2006 | Bah-1253-01-Biomarkers and targets-psychiatric disorders/related disorders of CNS | |||||
Europe
|
06710158 | 2/14/2006 | Bah-1253-01-Biomarkers and targets-psychiatric disorders/related disorders of CNS | |||||
PCT
|
PCT/GB2007/003090 | 8/15/2007 | Bah-1677-06 – Diagnosing, monitoring, screening for major depressive order | |||||
Australia
|
2007285632 | 2/4/2009 (National Entry Date) | Bah-1677-06 – Diagnosing, monitoring, screening for major depressive order | |||||
Europe
|
EP20070789213 | 8/15/2007 | Bah-1677-06 – Diagnosing, monitoring, screening for major depressive order | |||||
Japan
|
2009524229 | 8/15/2007 | Bah-1677-06 – Diagnosing, monitoring, screening for major depressive order | |||||
GB
|
GB0521098.4 | 10/18/2005 | Bah-1487-05 – Biomarkers and targets-psychiatric disorders/related disorders of CNS | |||||
PCT
|
PCT/GB2006/003870 | 10/18/2006 | Bah-1487-05 – Biomarkers and targets-psychiatric disorders/related disorders of CNS | |||||
Australia
|
2006303026 | 11/4/2008 (National Entry) | Bah-1487-05 – Biomarkers and targets-psychiatric disorders/related disorders of CNS | |||||
Canada
|
2626490 | 4/17/2008 (National Entry) | Bah-1487-05 – Biomarkers and targets-psychiatric disorders/related disorders of CNS | |||||
European
|
2006794812 | 10/18/2006 | Bah-1487-05 – Biomarkers and targets-psychiatric disorders/related disorders of CNS | |||||
US
|
12/090,530 | 2/22/2009 | Bah-1487-05 – Biomarkers and targets-psychiatric disorders/related disorders of CNS | |||||
PCT
|
PCT/GB2006/004509 | 4/12/2006 | Bah-1546-05 and Bah-1737-06 – biomarkers for psychotic disorders | |||||
Australia
|
2006321389 | 06/02/2008 (National Entry Date) | Bah-1546-05 and Bah-1737-06 – biomarkers for psychotic disorders | |||||
Canada
|
2640846 | 05/29/2008 (National Entry Date) | Bah-1546-05 and Bah-1737-06 – biomarkers for psychotic disorders | |||||
China
|
200680051802.9 | Bah-1546-05 and Bah-1737-06 – biomarkers for psychotic disorders | ||||||
Europe
|
0000000000 | Bah-1546-05 and Bah-1737-06 – biomarkers for psychotic disorders | ||||||
Japan
|
2008542840 | Bah-1546-05 and Bah-1737-06 – biomarkers for psychotic disorders | ||||||
PCT
|
PCT/GB2006/004433 | 11/28/2006 | ||||||
Australia
|
2006318912 | 06/20/2008 | ||||||
Canada
|
2632052 | 05/27/2008 (National Entry) | ||||||
China
|
200680051583.4 | 07/22/2008 | ||||||
Europe
|
2006808694 | 05/30/2008 | ||||||
Japan
|
2008541830 | 05/27/2008 | ||||||
US
|
12095146 | 10/27/2008 | ||||||
GB
|
GB0720548 | 10/19/2007 | ||||||
GB
|
GB07200545 | 10/19/2007 | ||||||
GB
|
GB0707001 | 4/11/2007 | ||||||
PCT
|
PCT/GB2004/002503 | 06/14/2004 | Bah-812-01 – Biomarkers and targets-psychiatric disorders/related disorders of CNS | |||||
Europe
|
2004736765 | 09/01/2006 | Bah-812-01 – Biomarkers and targets-psychiatric disorders/related disorders of CNS | |||||
US
|
10560279 | 10/03/2006 | Bah-812-01 – Biomarkers and targets-psychiatric disorders/related disorders of CNS | |||||
| Country | Application Number | Filing Date | Description | |||||
PCT
|
PCT/GB2007/000193 | 1/22/2007 | ||||||
GB
|
XX0000000.2 | Bah-1360-05 – Biomarkers and targets-psychiatric disorders/related disorders of CNS | ||||||
GB
|
GB05241110.4 | Bah-1510-05 – Biomarkers and targets-psychiatric disorders/related disorders of CNS | ||||||
GB
|
GB0704515.6 | Bah-1901-07 – Diagnosis, Monitor, Screening for psychotic disorders | ||||||
PCT
|
PCT/GB2008/00831 | Bah-1901-07 – Diagnosis, Monitor, Screening for psychotic disorders | ||||||
PCT
|
PCT/GB2006/050140 | 6/5/2006 | ||||||
| Country | Application Number | Filing Date | Description | |||
GB
|
GB0724735.6 | 12/19/2007 | ||||
GB
|
GB0724735.6 | 12/19/2007 | ||||
GB
|
GB0724735.6 | 12/19/2007 | ||||
GB
|
GB0724735.6 | 12/19/2007 | ||||
GB
|
GB0724735.6 | 12/19/2007 | ||||
GB
|
GB0724735.6 | 12/19/2007 | ||||
GB
|
GB0724735.6 | 12/19/2007 | ||||
US
|
11/912,029 | 6/5/2006 | ||||
GB
|
GB701626 | 12/01/2007 | Methods and Biomarkers for Diagnosing and Monitoring Psychotic Disorders | |||
PCT
|
PCT/GB2008/000199 | 1/21/2008 | Methods and Biomarkers for Diagnosing and Monitoring Psychotic Disorders | |||
EPO
|
EP8701876.8 | 1/21/2008 | Methods and Biomarkers for Diagnosing and Monitoring Psychotic Disorders | |||
CA
|
Canada-2676091 | 1/21/2008 | Methods and Biomarkers for Diagnosing and Monitoring Psychotic Disorders | |||
AU
|
AU2008208717 | 1/21/2008 | Methods and Biomarkers for Diagnosing and Monitoring Psychotic Disorders | |||
JP
|
JP2009546000 | 1/21/2008 | Methods and Biomarkers for Diagnosing and Monitoring Psychotic Disorders | |||
SCHEDULE 2 TO CO-DEVELOPMENT AND COMMERCIALIZATION AGREEMENT
Assigned to Cambridge and Subject to Framework Agreement with Psynova
| Country | Application Number | Filing Date | Description | |||
Great Britian
|
GB0818658.7 | 10/10/2008 | Bah-2194-08 – Diag. and monitor. of schizophrenia and other pyschotic disorders | |||
Great Britian
|
GB0818660.3 | 10/10/2008 | Bah-2205-08 – Diag. and monitor. of schizophrenia and other pyschotic disorders | |||
Great Britian
|
GB0915736.3 | 9/9/2009 | Bah-2310-09 – Diag. and monitor of schizophrenia and other psychotic disorders | |||
| PSY022 (Bah-2310-09) | ||||||
| PSY024 (Bah-2318-09) | ||||||
| PSY025 (Bah-2329-09) | ||||||
| PSY026 (Bah-2338-09) | ||||||
| PSY027 (Bah-2351-09) | ||||||
| PSY028 (Bah-2360-09) | ||||||
| PSY029 (Bah-2361-09) | ||||||
