AMENDMENT NO. 4 EXHIBIT 10.31
TO A LICENSE AGREEMENT BETWEEN
YALE UNIVERSITY AND
VION PHARMACEUTICALS, INC. (F/K/A ONCORX, INC.)
AMENDMENT NO. 4 TO LICENSE AGREEMENT (this "Amendment No. 4") made as
of this 31st day of January, 2000 by and between YALE UNIVERSITY, a corporation
organized and existing under and by virtue of a charter granted by the general
assembly of the Colony and State of Connecticut and located in New Haven,
Connecticut ("YALE"), and VION PHARMACEUTICALS, INC. (f/k/a OncoRx Inc.), a
corporation organized and existing under the laws of the State of Delaware and
with principal offices located in New Haven, Connecticut ("LICENSEE").
WITNESSETH:
WHEREAS, YALE and LICENSEE are parties to a License Agreement dated
August 31, 1994, under which YALE exclusively licensed to LICENSEE a series of
YALE owned inventions relating to potential anti-tumor and antiviral compounds;
WHEREAS, YALE and LICENSEE amended the License Agreement pursuant to an
Agreement dated November 15, 1995 to make an additional patent subject to the
License Agreement and provide the terms of compensation to YALE therefor;
WHEREAS, YALE and LICENSEE again amended the License Agreement pursuant
to an Agreement dated June 12, 1997 to reduce the earned royalties payable on
Sublicense Income, and to make certain other changes to the License Agreement;
WHEREAS, YALE and LICENSEE again amended the License Agreement pursuant
to an Agreement dated September 25, 1998 to modify and clarify the patents and
technology covered by the License Agreement and to add certain additional terms
with respect to the antiviral compound [B]-L-FD4C;
WHEREAS, Achillion Pharmaceuticals, Inc. ("Achillion") has expressed a
desire to exclusively sublicense LICENSEE's rights in inventions relating
to [B]-L-FD4C, and YALE and LICENSEE desire to license such rights to
Achillion;
WHEREAS, YALE and LICENSEE now wish to further amend the License
Agreement to provide for an exclusive sublicense to Achillion of LICENSEE's
rights in inventions relating to [B]-L-FD4C;
NOW, THEREFORE, in consideration of the premises and of the mutual
covenants herein contained and for other good and valuable consideration,
receipt of which is hereby acknowledged, YALE and LICENSEE hereby agree as
follows:
1. As used in this Amendment, the following terms shall be defined as set
forth below:
(a) "Sublicensed Information" shall mean designs, technical
information, trade secrets, information contained in manuscripts
or invention disclosure forms, data, specifications, test results
and other information, whether or not patentable, that are owned
or controlled by YALE or LICENSE on the date of this Agreement
and are useful for the development, commercialization,
manufacture, use or sale of any Sublicensed Products. For
purposes of this Section 1(a) and Section (c) below, "control"
means the possession of the ability to grant a license or
sublicense thereto as provided for herein without violating the
terms of any agreement with, or the rights of, any third party
that are in existence on the date hereof.
(b) "Sublicensed Invention" shall mean the inventions claimed in the
Licensed Patents described in Exhibit 1 hereto or included in the
Sublicensed Information.
(c) "Sublicensed Patents" shall mean the patents and patent
applications listed on Exhibit 1 and any other United States or
foreign patent applications(s) and patents(s) licensed to
LICENSEE by YALE pursuant to, and during the term of, this
Agreement and pertaining specifically to the compound [B]-L-FD4C,
together with any foreign counterparts, continuations,
continuations-in-part, divisional or substitute patents, any
reissues or reexaminations of any such applications or patents,
and any extension of any such patents, and all patents and
patent applications filed by or on behalf of Yale or Licensor or
issued during the terms hereof to YALE or LICENSEE for any
improvements on, or derivations from, the Sublicensed Inventions
that pertain specifically to the compound [B]-L-FD4C and are
useful for the development, commercialization, manufacture, use
or sale of any Sublicensed Products.
(d) "Sublicensed Product" shall mean all products for therapeutic or
diagnostic uses of the compound [B]-L-FD4C that may derive or
result from the manufacture and production or use of one or more
claims of the Sublicensed Patents or incorporate Sublicensed
Technology, wherever sold.
(e) "Sublicensed Technology" shall mean Sublicensed Information and
Sublicensed Patents.
Capitalized terms used herein but not otherwise defined shall have the meanings
ascribed to such terms in the License Agreement, as amended.
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2. Section 2.2 of the License Agreement shall be deleted and replaced
with the following new Section 2.2:
(a) Pursuant to the terms of a sublicense agreement, dated as of the
date hereof, by and between LICENSEE and Achillion (the
"Achillion Sublicense"), LICENSEE shall exclusively sublicense to
Achillion LICENSEE's rights to make, have made, import, export,
use, sell and have sold Sublicensed Products and practice the
Sublicensed Inventions for therapeutic or diagnostic purposes.
The Achillion Sublicense shall provide, among other things: (i)
for the payment of the licensee fees and royalties set forth on
Exhibit 2 hereto, and (ii) that Achillion make all payments under
the Achillion Sublicense (other than Item 1 on Exhibit 2)
directly to YALE.
(b) YALE will pay LICENSEE: (i) [***] percent ([***]%) of all
cash, equity and royalty payments received from Achillion
pursuant to the Achillion Sublicense (including the payments set
forth in Exhibit 2 but excluding sponsored research, gifts, FTE
support and consulting fees) up to $[***], and (ii)
thereafter, [***] percent ([***]%) of all the cash equity and
royalty payments received from Achillion.
(c) In connection with the execution of the Achillion Sublicense and
except as expressly provided in the Achillion Sublicense, YALE
and LICENSEE hereby agree that LICENSEE shall be fully released
of any past, present or future obligations relating to the
Sublicensed Inventions, the Sublicensed Technology and the
Sublicensed Products, including without limitation, any payments
of Sublicense Income or Earned Royalties, reporting and
recordkeeping, patent prosecution, maintenance and defense and
research and development obligations relating thereto.
(d) In addition to the rights exclusively sublicensed to Achillion,
LICENSEE shall have the right to sublicense the other rights
granted hereunder to third parties (but not to affiliates of
LICENSEE except upon commercially responsible terms), provided
that any such sublicense shall provide for payment of Sublicense
Income by Sublicensee based on sales by Sublicensee. All
sublicenses hereunder, other than the Achillion Sublicense, shall
be coterminable with this Agreement to the extent YALE's rights
in the Licensed Patents are involved."
3. Section 8.5 of the License Agreement shall be deleted in its entirety.
4. Except as expressly amended hereby, the License Agreement, as amended
to date, remains unchanged and in full force and effect.
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IN WITNESS WHEREOF, the parties hereto have caused this Amendment No. 4 to be
executed in duplicate originals by their duly authorized representatives.
YALE UNIVERSITY VION PHARMACEUTICALS, INC.
By: /s/ Xxx Xxxxxxxxxx By: /s/ Xxxxxx Xxxxxxx
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Name: Xxx Xxxxxxxxxx Name: Xxxxxx Xxxxxxx
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Title: Managing Director, OCR Title: Vice President Operations
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Exhibit 1
1. U.S. Patent Application Serial Number 08/067,299, entitled "Novel
L-2'3'-Dideoxy Nucleoside Analogs as Anti-Hepatitis (HBV) Agents"
2. U.S. Patent Application Serial Number 08/406,198, entitled "Reduced
Toxicity Compositions and Methods for Treating HIV Infections"
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Exhibit 2
1. Vion will receive [***] shares of common stock in Achillion (approximately
[***]% of the pre-Series B financing, at an expected post-money valuation
of approximately $[***] million).
2. Upon execution of the Achillion Sublicense, Achillion will pay Yale a
license initiation fee of $[***].
3. Achillion shall make the following payments to Yale:
a. IND submission fee: $[***]
b. Completion of any successful Phase II clinical trial as defined by the
trial protocol: $[***]
c. Successful Completion of Phase II (as defined in the Achillion
Sublicense): $[***]
d. NDA submission fee: $[***]
e. Registration fee: $[***]
4. At Achillion's discretion, the payments to Yale in Items 2 and 3 above
shall be made in cash or common stock of Achillion at the Fair Market Value
(as defined in the Achillion Sublicense).
5. Achillion will pay Yale a running royalty of [***] percent ([***]%) on the
net product sales of Sublicensed Product in the event that Achillion
directly develops and commercializes Sublicensed Product; provided, that,
(a) Achillion may credit up to [***] percent ([***]%) of the royalties due
to unaffiliated third parties on the sale of Sublicensed Product, but in no
event shall the royalties due Yale on the sale of any Sublicensed Product
be less than [***]% of net product sales; and (b) Achillion may credit up
to [***]% of net product sales payable to Emory University on Sublicensed
Product incorporating [B]-L-FD4C technology licensed to Achillion by
Emory.
6. Achillion will cause Emory University to pay all royalties on Sublicensed
Product incorporating [B]-L-DDA technology directly to Yale.
7. In the event that Achillion sublicenses its rights to a third party,
Achillion shall pay Yale:
a. [***] percent ([***]%) of cash/equity payments, including, but not
limited to, license initiation fees and milestones, made by the third
party to Achillion (not
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including FTE support). [***] percent ([***]%) each of each payment
shall be paid in cash or equity at the Fair Market Value, at the
discretion of Achillion, and [***] percent ([***]%) shall be paid in
cash or equity at the Fair Market Value, at the discretion of Yale.
b. Except as provided in paragraph 6 above, running royalties, including
minimums, on net products sales of Sublicensed Product by the
Achillion sublicensees equal to [***] percent ([***]%) of the
payments made by the sublicensee to Achillion with a minimum of [***]
percent ([***]%) of net sales of the third party.
8. Yale will cause Licensee to receive cash or common stock of Achillion
issued in the name of Licensee or its designee, as the cash may be,
immediately following payment by Achillion of the cash or equity payments
set forth in Items 2, 3 and 6 of this Exhibit 2.
9. In addition, if Merck & Co., Inc. enters into an agreement as a commercial
partner for Sublicensed Product within one (1) year of the effective date
of the Achillion Sublicense, the payments to Yale from Achillion will
increase by [***] percent ([***]%) of what they would have otherwise
been (that is, Achillion will pay [***]x of the amounts in Item 6).
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