EXHIBIT 10.45
CERTAIN MATERIAL (INDICATED BY AN ASTERISK) HAS BEEN OMITTED FROM THIS DOCUMENT
PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT. THE OMITTED MATERIAL HAS BEEN
FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
THIRD AMENDMENT TO THE LICENSE AGREEMENT BY AND BETWEEN
GEN-PROBE INCORPORATED, BIOANALYSIS LIMITED AND THE
UNIVERSITY OF WALES COLLEGE OF MEDICINE
This Third Amendment is entered into as of this 19th day of February, 2002 by
and between Gen-Probe Incorporated, 00000 Xxxxxxx Xxxxxx Xxxxx, Xxx Xxxxx,
Xxxxxxxxxx 00000-0000 ("Gen-Probe"), Bioanalysis Limited, 0 Xxxxxxx Xxxxx,
Xxxxxxx Xxxxxxxxxx Xxxx, Xxxxxxx XX0 0XX, Xxxxxx Xxxxxxx ("Bioanalysis") and
the University of Wales College of Medicine, Xxxxx Xxxx, Xxxxxxx XX0 0XX,
Xxxxxx Xxxxxxx ("UWCM").
RECITALS
WHEREAS, Gen-Probe, Bioanalysis and UWCM are parties to a License Agreement
dated January 21, 1986, a first Amendment dated May 11, 1989, and a second
Amendment dated November 19, 1998 (collectively, the "License Agreement"); and,
WHEREAS, Gen-Probe and Bioanalysis have had discussions concerning the scope of
the University Patent Rights and the Bioanalysis Patent Rights, and have
identified certain potential disputes between themselves with respect to such
patent rights in connection with the License Agreement; and
WHEREAS, the parties have agreed to make certain modifications to the License
Agreement in order to resolve the potential disputes between them;
AGREEMENT
NOW, THEREFORE, the parties hereto agree as follows:
1. Article 1 of the Agreement shall be amended to add the following terms:
J. [***] shall mean those acridinium ester compounds disclosed and
claimed in United States patent no. [***].
K. [***] shall mean all acridinium ester compounds other than those
disclosed and claimed in United States patent no. [***], including, but
not limited to, the acridinium ester compounds incorporated into
Gen-Probe's [***] products as of the date of this Third Amendment, which
are listed in Appendix A and incorporated herein by reference.
***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.
2. Article 6 of the Agreement shall be amended to read as follows:
Royalties
(i) Gen-Probe shall during the continuance of this Agreement make
payments on Net Sales of the Licensed Products containing [***] according to the
following schedule:
(a) [***];
(b) [***];
(c) [***].
(ii) In the event Gen-Probe is obliged to pay a royalty to a third party
to develop, use, manufacture, have manufactured, market or sell a Licensed
Product containing [***] subject to this Agreement, Gen-Probe may reduce its
payment obligation hereunder by [***], but, in no event, shall the royalty owed
Bioanalysis be reduced by more than [***].
(iii) Commencing with the first fiscal year of Gen-Probe beginning more
than three years from the effective date of this Agreement, a minimum royalty
(the "Minimum Royalty") must be paid to Bioanalysis by Gen-Probe in order to
maintain the exclusivity of the rights and licenses granted herein. The Minimum
Royalty shall be [***] per year for the first of such years, and [***] for
subsequent years. In the event the amount due on Net Sales of Licensed Products
containing [***] is less than the Minimum Royalty for any such year, Gen-Probe
may preserve the exclusivity of the rights and license granted herein by [***],
payable within sixty days of the end of the fiscal year in question. In the
event the total payment by Gen-Probe is less than the Minimum Royalty for any
such year, the exclusivity of the rights and licenses granted herein shall
cease.
(iv) Gen-Probe shall during the continuance of this Agreement make
payments of Net Sales of the Licensed Products containing [***] at the rate of
[***] of Net Sales.
***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.
(v) In the event that Gen-Probe sells a Licensed Product
containing at least one [***] and at least one [***], royalties on such
product shall be paid at the rate set forth in paragraph 2(i), above,
subject to any applicable offset under paragraph 2(ii), and shall not be
subject to any additional royalty under paragraph 2(iv)
2. Except as expressly amended as set forth above, the terms of the License
Agreement shall continue in full force and effect.
IN WITNESS WHEREOF, Gen-Probe, Bioanalysis and UWCM have duly executed this
Third Amendment on the dates indicated below.
GEN-PROBE INCORPORATED BIOANALYSIS, LTD
STAMPED:
APPROVED
/s/ [SIGNATURE ILLEGIBLE]
LEGAL DEPT.
By: /s/ XXXXX X. XXXXXXXX By: /s/ XX XXXXXXXX
------------------------------- ---------------------------------
Xxxxx X. Xxxxxxxx Printed Name: XX Xxxxxxxx
President & CEO -----------------------
Title: Director
------------------------------
Date: 2-26-02 Date: 25/3/02
----------------------------- -------------------------------
UNIVERSITY OF WALES
COLLEGE OF MEDICINE
By: /s/ X.X. XXXXXX
--------------------------------
Printed Name: X.X. Xxxxxx
----------------------
Date: 25/03/02
------------------------------
*** 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.
APPENDIX A
[***]
***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.
