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EXHIBIT 10.8(b)
AMENDMENT NO. 1
TO THE
PATENT AND TECHNOLOGY LICENSE AGREEMENT
This is AMENDMENT NO. 1 effective this 1st day of September, 1996,
("EFFECTIVE AMENDMENT NO. 1 DATE") to the Patent and Technology License
Agreement dated July 20, 1994 (hereinafter referred to as the "AGREEMENT"), by
and between THE UNIVERSITY OF TEXAS M.D. XXXXXXXX CANCER CENTER (hereinafter
referred to as "MDA"), located at Houston, Texas, and which is a component
institution of THE UNIVERSITY OF TEXAS SYSTEM (hereinafter referred to as
"SYSTEM") which is governed by a BOARD OF REGENTS (hereinafter referred to as
"BOARD") and INTROGEN THERAPEUTICS, INC., located at 000 Xxxxxxxx Xxxxxx, Xxxxx
0000, Xxxxxx, Xxxxx 00000 (hereinafter referred to as "LICENSEE").
RECITALS
A. BOARD is the owner of the PATENT AND TECHNOLOGY RIGHTS of the
invention(s) listed in ATTACHMENT A hereto ("INVENTION(s)").
B. LICENSEE is a company interested in the development and commercialization
of new technologies directed to the treatment of cancer, and other
threatening diseases, to which end LICENSEE, MDA and BOARD entered into the
AGREEMENT noted hereinabove.
C. LICENSEE wishes to add the INVENTION(s) to its rights and obligations under
the AGREEMENT.
D. BOARD wishes to grant LICENSEE rights to the INVENTION(s) under the
AGREEMENT to promote its practical development for the benefit of the
MDA's patients and for the benefit of the people of the state of Texas.
E. The definitions set forth in the AGREEMENT shall apply in this AMENDMENT
NO. 1, except to the extent that a definition herein is specific to this
AMENDMENT NO. 1.
NOW, THEREFORE, in consideration for the mutual covenants contained herein, the
sufficiency of which is hereby acknowledged, the parties hereby agree to the
following:
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AMENDED TERMS
1. Attachment A to the AGREEMENT is hereby amended by adding to the LICENSED
SUBJECT MATTER thereof the INVENTION(s) listed in Schedule A of this
Amendment.
2. In addition to the reimbursements for patent expenses provided for under
the AGREEMENT and all other amendments thereto, LICENSEE shall reimburse
MDA within thirty (30) days of the EFFECTIVE DATE of this AMENDMENT NO. 1
for [*] outstanding and unreimbursed patent expenses related to the
INVENTION(s) and shall further reimburse MDA for all future and continuing
patent expenses for the INVENTION(s) pursuant to Article 4.1(a) of the
AGREEMENT for the term of the AGREEMENT, pursuant to invoicing by MDA.
OTHERWISE, the terms and provisions of the original AGREEMENT thereto
shall remain in full force and effect, provided, however, that in the event of
a conflict in the terms and conditions between this AMENDMENT NO. 1 and the
AGREEMENT, the terms and conditions of the AGREEMENT shall prevail.
IN WITNESS WHEREOF, THE PARTIES HERETO HAVE CAUSED THEIR DULY AUTHORIZED
REPRESENTATIVES TO EXECUTE THIS AMENDMENT NO. 1.
THE UNIVERSITY OF TEXAS BOARD OF REGENTS OF THE
M.D. XXXXXXXX CANCER CENTER UNIVERSITY OF TEXAS SYSTEM
By: /s/ XXXXX X. XXXXXXXX By: /s/ XXXXXXX X. XXXXXXX, M.D.
-------------------------- --------------------------------
Xxxxx X. Xxxxxxxx Xxxxxxx X. Xxxxxxx, M.D.
Executive Vice President Chancellor
for Administration and Finance
APPROVED AS TO CONTENT APPROVED AS TO FORM
By: /s/ XXXXXXX X. XXXX By: /s/ XXXXXX X. XXXXX, XX.
-------------------------- ------------------------------
Xxxxxxx X. Xxxx Xxxxxx X. Xxxxx, Xx.
Director, Technology Development Manager, Intellectual Property
INTROGEN THERAPEUTICS, INC.
By: /s/ XXXXX X. XXXXX
--------------------------
Xxxxx X. Xxxxx
President
[*] Certain information on this page has been omitted and filed separately
with the Commission. Confidential treatment has been requested with
respect to the omitted portions.
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SCHEDULE A
Patent and Technology rights for U.S. and Foreign Patent Application entitled:
[*]
[*] Certain information on this page has been omitted and filed separately
with the Commission. Confidential treatment has been requested with
respect to the omitted portions.
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COMMERCIAL MATERIALS TRANSFER AGREEMENT
1. The parties of this Agreement are: Introgen Therapeutics, 0000 Xxxxx Xxxxxxx
Xxxxx, Xxxxx #0000, Xxxxxxx, Xxxxx, XXX, 00000, hereinafter "RECIPIENT",
and McMaster University, 0000 Xxxx Xxxxxx Xxxx, Xxxxxxxx, Xxxxxxx,
Xxxxxx, hereinafter "McMaster".
2. The material ("Material") that is covered by this Agreement includes:
a) Plasmids (described in Attachment A), the sequence and map of such
plasmids and the bacterial cell strain to propagate such plasmids.
b) any related biological material or associated know-how and data that
will be received by RECIPIENT from SCIENTIST, namely Dr. Xxxxx Xxxxxx and
colleagues as McMaster University. As reasonably requested by RECIPIENT
from time to time during the terms of this agreement, McMaster agrees to
deliver to RECIPIENT reasonable quantities of the Material at the prices
specified in Attachment A.
3. The Material shall be used in research and development activities of
RECIPIENT.
4. RECIPIENT will make payment to McMaster University in the amount of $1000
dollars in U.S. currency per year, for a period of [*], in consideration
for the Material. McMaster shall be in receipt of the financial
consideration within forty-five (45) days of the execution date of this
Agreement. Should such consideration not be received by McMaster from
RECIPIENT during this forty-five (45) day period, and within fifteen (15)
days after McMaster notifies RECIPIENT of such nonpayment, McMaster shall
have the right to terminate this Agreement.
5. RECIPIENT shall not distribute or release the Material to any person other
than laboratory personnel under RECIPIENT's or RECIPIENT's contractor's
supervision, and hereby agrees that no one will be allowed to take or
send this Material to any other location not controlled by RECIPIENT or
RECIPIENT's contractor, unless written permission is obtained from the
SCIENTIST and the Director, Office of Research Contracts and Intellectual
Property at McMaster. This Material is made available for research and
development use only. The Material will not be used in human beings.
RECIPIENT agrees that the Material will not be used for any other
purpose.
[*] Certain information on this page has been omitted and filed
separately with the Commission. Confidential treatment has been
requested with respect to the omitted portions.
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6. This Agreement and the resulting transfer of Material constitute a license
to use the Material solely for research and development purposes.
Subject to the provisions in paragraph 8, RECIPIENT agrees that nothing
herein shall be deemed to grant to either any rights under McMaster
patents or any rights to use the Material in a commercial product.
7. Subject to the provisions in paragraph 8, RECIPIENT shall have no rights in
the Material other than as provided in this Agreement, and at the written
request of McMaster, RECIPIENT will return all unused Material.
8. RECIPIENT will provide McMaster with a draft manuscript describing the
results of research describing nonpublic aspects of the materials should
such a manuscript be prepared. RECIPIENT agrees to maintain the
confidentiality of any information respecting the Material, with the
exception, however, that if it is desired to publish or otherwise
disclose such information in a noncommercial scientific communication,
RECIPIENT will provide McMaster with a copy of any manuscript or abstract
disclosing such information, prior to submission thereof to a publisher
or to any third party, and in any case, not less than forty-five (45)
days prior to any public disclosure, for the purpose of protecting
proprietary or intellectual property of McMaster or RECIPIENT that might
be contained in such information. If publication results from research
using the Material, RECIPIENT agrees to acknowledge SCIENTIST and/or give
credit to SCIENTIST, as scientifically appropriate, based on any direct
contribution they may make to the research. McMaster agrees that it will
reference or acknowledge RECIPIENT's publications, as scientifically
appropriate, in its publications, which may refer to the data developed
by RECIPIENT. RECIPIENT shall not be required to provide McMaster with
RECIPIENT's trade secrets, confidential or proprietary information.
9. In the event that RECIPIENT desires to obtain a license from McMaster to use
the Material for commercial purposes other than the research and
development activities permitted hereunder, RECIPIENT will promptly
notify the DIRECTOR, Office of Research Contracts and Intellectual
Property at McMaster, and notify the Director of SCIENTIST's role as
supplier of the Material. Upon such request, McMaster agrees to grant to
RECIPIENT a license for such purposes on commercially reasonable terms
and conditions, it being understood that the amounts to be paid to
McMaster under such license shall not exceed [*] per year.
10. The Material is experimental in nature, and it is provided WITHOUT WARRANTY
OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR ANY OTHER
WARRANTY, EXPRESS OR IMPLIED. McMaster MAKES NO REPRESENTATION OR
WARRANTY THAT THE USE OF THE MATERIAL WILL NOT INFRINGE ANY PATENT OR
OTHER PROPRIETARY RIGHT.
[*] Certain information on this page has been omitted and filed
separately with the Commission. Confidential treatment has been
requested with respect to the omitted portions.
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11. In no event shall McMaster be liable for any use by RECIPIENT of the
Material or any loss, claim, damage or liability, or whatsoever kind or
nature, which may arise from or in connection with this Agreement or the
use, handling or storage of the Material.
12. RECIPIENT will use the Material in compliance with all laws and governmental
regulations and guidelines applicable to the Material for work with
McMaster. When the Material is used in the United States, RECIPIENT will
comply with current NLH guidelines, relating to the use of the Material.
13. This Agreement is not assignable, without the prior written consent of the
Director, Office of Research Contracts and Intellectual Property at
McMaster. Notwithstanding the foregoing, RECIPIENT may assign or
transfer its rights and obligations under this Agreement to a party that
succeeds to all or substantially all of RECIPIENT's business or assets
relating to this Agreement whether by sale, merger, operation of law or
otherwise provided that such successor agrees in writing to be bound by
the terms and conditions of this agreement.
14. Microbix warrants and represents that it has been authorized to sign this
Agreement on behalf of McMaster.
15. This agreement may be extended by RECIPIENT upon written notice to
McMaster, in which case RECIPIENT may continue to use the materials
as set forth herein during the term of such extension for so long as
RECIPIENT pays the annual maintenance fee set forth in Section 4 above.
16. Each party hereto agrees not to disclose any terms of this Agreement to any
third party without prior consent of the other party, except as
required by securities or other applicable laws, to prospective
investors and to such party's accountants, attorneys and other
professional advisors, or otherwise under reasonable conditions of
confidentiality.
FOR McMaster University FOR Introgen Therapeutics
/s/ XXXXXXX X. XXXXXX /s/ XXXXXXXX X. XXXX V.P.
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Xxxxxxx X. Xxxxxx (Name and Title of
President and Chief Authorized Representative)
Executive Officer
Microbix Biosystems, Inc.
Date: December 10, 1996 Date: 12/6/96
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Attachment A
Effective May 31, 1996
PLASMID PRICE LIST
[*]
[*] Certain information on this page has been omitted and filed separately
with the Commission. Confidential treatment has been requested with
respect to the omitted portions.
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Also available are Plasmid Gene Sequences on 3.5" Diskettes, DOS formatted,
WordPerfect 5.1.
[*]
NOTE: All prices are in U.S. Dollars.
Shipping Charges:
Shipping of plasmids and disks only will be by registered mail at a cost of
[*] USD.
Shipping cost for [*] cells are [*] in North America, [*] for all other
international locations.
(Includes dry ice, container and transportation costs).
Payment Terms:
Payment for any of the Adenovirus vector system must be made in advance to
Microbix Biosystems, Inc.
We will accept cheques or direct payment to our bank account as follows:
Bank of Montreal
000 Xxxxxxxx Xxxxxx Xxxx
Xxx Xxxxx, Xxxxxxx, Xxxxxx
X0X 0X0
Account #: 03172-001-4601-028
Transit #: 317
Purchase orders will be shipped once payment has been confirmed, and the
Materials Transfer Agreement is executed and returned to Microbix.
To place orders, please telephone Microbix Biosystems, Inc. at 000-000-0000 or
fax 000-000-0000.
[*] Certain information on this page has been omitted and filed separately
with the Commission. Confidential treatment has been requested with
respect to the omitted portions.
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A licence fee will apply to each kit and be remitted by the end of the
first month of each year. Microbix will request payment in the 12th month of
the current year for the next year of the agreement. Each licence agreement will
be for a minimum of [*]. Agreements can be renewed and will be renegotiated at
that time. If an agreement expires, the investigator is expected to destroy the
materials.
Kit Licence Fee Per Year
A [*]
B [*]
C [*]
[*] Certain information on this page has been omitted and filed separately
with the Commission. Confidential treatment has been requested with
respect to the omitted portions.
