Exhibit 10. 20
CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY AN
ASTERISK, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 UNDER THE SECURITIES ACT OF 1933, AS AMENDED.
AMENDMENT NO. 1
TO THE LICENSE AGREEMENT
BETWEEN
THE TEXAS A&M UNIVERSITY SYSTEM
AND
INHIBITEX, INC.
This amendment ("Amendment No. 1") is made and entered into by and
between The Texas A&M University System (hereinafter referred to as "SYSTEM")
with principal offices in College Station, Texas, and Inhibitex, Inc.,
(hereinafter referred to as "INHIBITEX"), a Delaware corporation, having a
principal place of business in Alpharetta, Georgia, parties to the License
Agreement dated February 4, 2000.
WITNESSETH:
WHEREAS, the parties have entered into a License Agreement regarding
certain intellectual property related to Extracellular Matrix Binding Proteins;
and
WHEREAS, the original License Agreement between the parties provides
that SYSTEM manage the filing of U.S. and foreign patent applications and
maintenance of patents related to such intellectual property; and
WHEREAS, INHIBITEX now desires to manage the filing of such patent
applications and maintenance of patents; and
WHEREAS, SYSTEM agrees to transfer the responsibility of managing U.S.
and foreign patent applications and patents to INHIBITEX; and
WHEREAS, INHIBITEX now also desires to return its rights in several
technologies, specifically TAM-US 1047 (U.S. Patent Application No.. 09/095/272)
and TAMUS 1609 (U.S. Patent Application No. 09/559,723), to SYSTEM, which was
granted to INHIBITEX under the original License Agreement; and
WHEREAS, INHTBITEX desires to modify the License Agreement in regards
to specific sublicensee obligations; and
WHEREAS, SYSTEM agrees to make such modifications.
NOW THEREFORE, the parties agree that the License Agreement of February
4, 2000 is hereby amended as follows:
1. DELETE section 1.01(c), 1.01(h) and 1.01(i) in their entirety.
2. ADD new paragraphs 1.01 (h-o) as follows:
(h) United States Provisional Applications 60/189,968, filed March
17, 2000, 60/199,370, filed April 25, 2000, and 60/225,402,
filed August 15, 2000, entitled "Monoclonal Antibodies to CNA,
the Collagen Adhesin of S. aureus, Inhibit
Collagen binding to S. aureus Strains;" all converted to U.S.
Application 09/810,428 on March 19, 2001, re-titled
"Cross-reactive Displacing Antibodies from Collagen Binding
Proteins and Methods of Identification and Use," and also
filed as a PCT application on March 19, 2001; and
(i) United States Provisional Application 60/260,523 filed January
10, 2001 entitled "Suppression of T Cell mediated Responses by
the Major Histocompatibility Complex H Analog Protein From S.
aureus;" and.
(j) United States Provisional Application 60/295,000 filed June 4,
2001 entitled "Structural Organization of the
Fibrinogen-Binding Region of the Clumping Factor B MSCRAMM of
S. aureus and Cross reacting Monoclonal Antibodies from Domain
Specific MSCRAMMs;" and
(k) United States Provisional Application 60/290,072 filed May 11,
2001 entitled "SdrG, A Fibrinogen Binding MSCRAMM from S.
epidermidis Targets the Thrombin Cleavage Site of the B beta
Chain;" and
(l) United States Provisional Application 60/289,132 filed May 8,
2001 entitled "Target Surface Proteins for Gram-Positive
Bacteria;" and
(m) United States Provisional Application 60/275,718 filed March
15, 2001 entitled "Collagen Binding Protein from S.
epidermidis;" and
(n) United States Provisional Application 60/274,611 filed March
12, 2001 entitled "S. aureus Anti-CLFA Monoclonal Antibodies;"
and
(o) Any patent(s) issuing from the foregoing application(s); any
divisional, continuations, or continuations-in-part of the
foregoing applications; all equivalent foreign patent
applications which claim priority under such application(s);
any patent(s) issuing from the foregoing application(s); and
all extensions or reissues of any such patent(s).
3. DELETE paragraph 2.03 in its entirety.
4. ADD paragraph 3.03 (d) as follows:
3.03(d) Notwithstanding the foregoing, the royalty rate to be paid on
NET SALES for LICENSED PRODUCTS sold in territories where
there is an issued patent having claims covering technology
used in the product sold shall be [ *** ] if the product is in
the field of active human vaccines containing MSC proteins
derived from S. aureus and S.epidermidis for the prevention of
S. aureus and S. epidermidis infections.
5. DELETE paragraph 4.04 in its entirety.
6. ADD a new paragraph 4.04 as follows:
4.04 Sublicense obligations. INHIBITEX agrees that any sublicenses
granted by it shall provide that the obligations to SYSTEM of
paragraphs 10.03, 10.06, 10.07, 12.02, and 12.03 of this
Agreement shall be binding upon the sublicensee(s) as if it
were a party to this Agreement. INHIBITEX further agrees to
include or attach copies of these paragraphs to sublicense
Agreements.
7. DELETE paragraph 5.01 in its entirety.
8. ADD a new paragraph 5.01 as follows:
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5.01 Patent Filing and Prosecution. From the effective date of this
Amendment, each patent application related to PATENT RIGHTS,
i.e. original provisional or regular patent applications,
divisionals, continuations, or continuations-in-part, shall be
filed by INHIBITEX in the name of SYSTEM using counsel
acceptable to SYSTEM. Prior to filing such applications,
INHIBITEX shall determine the scope of such applications in
consultation with SYSTEM. INHIBITEX agrees to INDEMNIFY and
HOLD SYSTEM HARMLESS for the legal fees and expenses INHIBITEX
incurs in prosecuting and maintaining PATENT RIGHTS. In the
event the Attorney General of Texas (the "AG") rules that
counsel pursuing patent protection for SYSTEM must be approved
by the AG, INHIBITEX agrees to take all necessary steps to
assure compliance with the AG's ruling including, if
necessary, modifying this Agreement to allow SYSTEM to hire
patent counsel. Prior to filing a patent application related
to PATENT RIGHTS, INHIBITEX agrees to provide SYSTEM with the
curriculum vitae for each attorney INHIBITEX proposes to use
to seek patent protection along with a letter from the firm
the attorneys are associated with acknowledging that the firm
will look solely to INHIBITEX for the payment of its fees and
expenses. Unless exigent circumstances dictate to the
contrary, INHIBITEX shall allow SYSTEM at least 30 days to
approve of the attorneys INHIBITEX desires to hire to pursue
PATENT RIGHTS. INHIBITEX shall also prosecute to completion
the U.S. Patent Applications identified in and comprising
PATENT RIGHTS. "Prosecution to completion" shall mean
prosecution of the original and any continuing or divisional
applications to issuance or to a final rejection. INHIBITEX is
not required to, but may with the consent of SYSTEM, pursue an
appeal to the Board of Patent Appeals and Interferences, or
the Federal Circuit Courts, or similar action in foreign
countries. Furthermore, INHIBITEX shall maintain any U.S.
patent(s) resulting from the prosecution described
hereinabove. In the event that INHIBITEX determines not to
continue prosecution to completion or maintenance of U.S.
Patent Applications comprising PATENT RIGHTS, INHIBITEX will
inform SYSTEM of its decision in sufficient time for SYSTEM to
make decisions regarding its desire to continue prosecution.
In such case, SYSTEM shall have the right to continue the
prosecution or maintenance at its own expense. However, any
such applications or patents funded by SYSTEM thereafter shall
be excluded from PATENT RIGHTS.
9. DELETE paragraph 5.02 in its entirety.
10. ADD a new paragraph 5.02 as follows:
5.02 Foreign Patent Applications. With the cooperation of SYSTEM,
INHIBITEX shall file and prosecute, in the name of SYSTEM,
foreign patent applications corresponding to U.S. patent
applications filed pursuant to paragraph 5.01.
(a) Election not to file. INHIBITEX will inform SYSTEM no
less than three (3) months before all foreign filing
deadlines [including the one year anniversary of each
application filed in the U.S., as well as the
national stage filing deadline of each application
filed through the Patent Cooperation Treaty (PCT)] as
to its selection of foreign countries in which it
will seek corresponding patent protection. SYSTEM
shall then have the
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right to file corresponding foreign patent
applications at its own expense in those foreign
countries not selected by INHIBITEX. However, such
applications funded at SYSTEM's expense shall be
excluded from PATENT RIGHTS.
(b) Prosecution and Maintenance of Foreign Patents.
Should INHIBITEX file corresponding foreign patent
application(s) and subsequently elects not to
continue to prosecute and maintain such foreign
patent(s) or patent application(s), it shall so
notify the SYSTEM at least three (3) months prior to
taking (or not taking) any action which would result
in abandonment, withdrawal or lapse of such foreign
patent(s) or application(s). SYSTEM shall then have
the right to continue maintenance of prosecution of
such foreign patent(s) or application(s) at its own
expense. However, expenses incurred prior to the
point of INHIBITEX taking (or not taking) such action
shall remain the responsibility of INHIBITEX and such
foreign patent(s) or application(s) shall be excluded
from PATENT RIGHTS.
11. DELETE paragraph 5.03 in its entirety.
12. ADD a new paragraph 5.03 as follows:
5.03 Financial Responsibility. INHIBITEX, within thirty (30) days
of receipt of a supporting invoice from SYSTEM, shall
reimburse SYSTEM for all reasonable expenses incurred prior to
the effective date of this Amendment by SYSTEM in filing,
prosecuting, and maintaining the U.S. Patent Application(s)
and patent(s) under the PATENT RIGHTS, in accordance with
paragraph 5.01 hereinabove. Notwithstanding, INHIBITEX shall
reimburse SYSTEM for reasonable expenses incurred prior to and
henceforth by SYSTEM for legal services comprising the
monitoring of the progress of INHIBITEX in filing,
prosecuting, and maintaining the U.S. and foreign patent
applications and patents under the PATENT RIGHTS. As of the
effective date of this Amendment, INHIBITEX shall directly
assume one hundred percent (100%) of the expenses it incurs
and one hundred percent (100%) of the reasonable expenses
incurred by SYSTEM related to filing, prosecution and
maintenance of all U.S. and foreign patent application(s) and
patent(s) as described in paragraph 5.01 and 5.02. Reasonable
expenses incurred by SYSTEM shall not include (1) any
substantive analysis of the prosecution of patents, (2)
expenses associated with duplication of effort by multiple
lawyers in monitoring the progress of the prosecution, and (3)
legal fees for services other than the monitoring of the
progress of the prosecution.
13. DELETE paragraph 5.04 in its entirety.
14. ADD a new paragraph 5.04 as follows:
5.04 Information. INHIBITEX shall keep SYSTEM promptly and fully
informed of the course of patent prosecution or other
proceedings related to the protection of PATENT RIGHTS.
INHIBITEX shall cooperate with SYSTEM to allow SYSTEM the
timely and reasonable opportunity to provide input to the
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development of the patent application(s) and any official
proceedings prior to filing such applications or other
response to proceedings by INHIBITEX. INHIBITEX shall disclose
to SYSTEM the complete texts of all patent applications filed
by INHIBITEX under the PATENT RIGHTS as well as all
information received concerning office actions, the
institution or possible institution of any interference,
opposition, re-examination, reissue, revocation, nullification
or any other official proceeding involving PATENT RIGHTS. All
such notifications and disclosures required herein to be made
to SYSTEM shall be made no later than ten (10) business days
following receipt of such notice. Requests by INHIBITEX or its
counsel for documents necessary to effect this Amendment, e.g.
powers of attorney, shall be promptly responded to by SYSTEM
and its counsel.
15. ADD a new paragraph 5.05 as follows:
5.05 Filing of Jointly Owned Foreign Patent Applications. In cases
of patent(s) and/or patent application(s) jointly owned by
SYSTEM and another parry, 1NHIBITEX shall file such
corresponding foreign patent application(s) in the name of
SYSTEM and the applicable parry.
16. ADD a new paragraph 5.06 as follows:
5.06 Proprietary Rights. All PATENT RIGHTS hereunder are vested in
and owned by SYSTEM.
17. DELETE paragraphs 10.04 and 10.05 in their entirety.
EXCEPT as provided herein, all terms and conditions of the License
Agreement remain unchanged and in full force and effect.
IN WITNESS WHEREOF, the parties have caused this Amendment No. 1 to
become effective on the date executed below by the last signatory to this
Amendment.
INHIBITEX, INC. THE TEXAS A&M UNIVERSITY SYSTEM
/s/ Xxxxxxx X. Xxxxxxxx By: /s/ X. X. Xxxx
--------------------------- -------------------------------
By: Name: Xxx X. Xxxx
Title: Title: Vice Chancellor for Business
Services
Date: 4/16/02 Date: 4/29/02
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