Exhibit 10.11
PATENT LICENSE AMENDING AGREEMENT
This Amending Agreement (the "Amendment") to the Patent License Agreement, which
shall be effective as of the last date of execution, is made by and between
Genaissance Pharmaceuticals, Inc. a Delaware corporation having its principal
place of business at Xxxx Xxxxxxx Xxxx, Xxx Xxxxx, Xxxxxxxxxxx, 00000,
("Genaissance"), and Visible Genetics Inc., an Ontario company with offices at
000 Xxx Xxxxxx, Xxxxx 0000, Xxxxxxx, Xxxxxxx, Xxxxxx X0X 0X0 ("VGI").
WITNESSETH:
WHEREAS, on November 21, 1996, BIOS Laboratories Inc. (Bios) and VGI
entered into a Patent License Agreement (the "Agreement") pursuant to which Bios
granted to VGI, inter alia, a worldwide exclusive license within the FIELD OF
USE (as defined in the Agreement) under the PATENT RIGHTS (as defined in the
Agreement) to make, have made, use and sell LICENSED PRODUCTS (as defined in the
Agreement);
WHEREAS, in March, 1997 BIOS Laboratories Inc. changed its name to
Genaissance Pharmaceuticals Inc. (Genaissance);
WHEREAS, on December 1, 1998, Genaissance waived its right pursuant to
Section 3.2 of the Agreement to convert the Agreement from an exclusive license
to a non-exclusive license; and
WHEREAS, the parties desire to amend certain terms of the Agreement upon
the terms and conditions set forth herein;
NOW THEREFORE, in consideration of the premises and of the mutual
covenants and agreements contained herein and for other good and valuable
consideration, the receipt and sufficiency of which are hereby acknowledged, the
parties intending to be legally bound agree as follows:
1.) Definitions. All capitalized terms used herein and not otherwise defined
herein shall have the respective meanings given to them in the Agreement.
2.) Amendments to Agreement. The Agreement is, effective as of the Effective
Date hereof, hereby amended as follows:
i) The names "BIOS LABORATORIES, INC." and "BIOS" are hereby deleted from
the entire Agreement and are replaced in each instance by the name
"Genaissance Pharmaceuticals, Inc." or "Genaissance" as appropriate.
ii) The second "WHEREAS" paragraph is amended to read as follows:
WHEREAS, Genaissance is an exclusive licensee to make, have made,
use. sell and practice the invention covered by U.S. Patent No.
5,427,911 by virtue of an
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*CONFIDENTIAL MATERIAL OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION. ASTERISKS DENOTE SUCH OMISSIONS.
Agreement with Yale University and has the right to sublicense the
rights granted hereunder to third parties subject to rights
heretofore granted to the United States government and Yale
University.
iii) Paragraph 1.1 is hereby amended to read as follows:
"PATENT RIGHTS shall include all rights exclusively licensed to
Genaissance under U.S. Patent No. 5,427,911 (hereinafter the "911
patent), together with any reissue or reexamination of such patent,
and any extensions of such patent, subject to a royalty-free,
non-exclusive license heretofore granted to the United States
government, and the rights retained by Yale University in accordance
with the June 9, 1994 license agreement between Yale and BIOS to
make, use and practice the inventions for Yale's own non-commercial
purposes, and shall include any and all rights under the
IMPROVEMENTS on the '911 patent.
iv) Paragraph 1.5 is hereby amended to read as follows:
"FIELD OF USE" shall mean all diagnostic and research applications,
including but not limited to human and veterinary purposes.
v) Paragraph 2.2 of Article 2 is hereby amended to read as follows:
VGI shall have the right to grant sublicenses hereunder anywhere in
the world only during the term of this Agreement. VGI shall pay to
Genaissance a sublicense issue fee of $100,000 immediately upon the
grant of each sublicense permitted hereunder, which fee shall not be
considered a prepayment of Royalties), and VGI shall pay to
Genaissance Running Royalties of ***********************************
on NET SALES of LICENSED PRODUCTS sold by VGI's sublicensees in the
United States, in the manner set forth in Paragraph 4.2a.
vi) Paragraph 2.8 is deleted in its entirety.
vii) Paragraph 2.9 is renumbered as 2.8.
viii) Paragraph 4.2 of Article 4 is hereby amended to read as follows:
VGI shall pay to Genaissance royalties in the manner hereinafter
provided until termination of the PATENT RIGHTS or until this
Agreement is terminated:
a. Running royalties in an amount equal to *******************
*************** of NET SALES of LICENSED PRODUCTS sold by VGI
throughout the world, to be paid by VGI within sixty (60) days after
each QUARTER YEAR.
b. No minimum Royalties shall be required hereunder.
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3.) Additional Payments
VGI shall pay to Genaissance, within seven (7) days of the Effective Date
of this Amendment, two million, fifty thousand U.S. dollars (US
$2,050,000), with such payment to be paid by bank wire transfer in
immediately available funds to:
State Street
ABA #000000000
Account #00000000
FFC: Genaissance Pharmaceuticals
Account Number: DE0590
4.) Representations and Warranties
Each party hereby represents and warrants to the other that it has full
authority and power to enter into this Amendment, that it has secured any
and all necessary approvals, permits or consents deemed necessary or
advisable for the consummation of the transactions contemplated hereby and
that upon execution by such party, this Amendment shall immediately be a
valid and binding obligation of such party, enforceable against it in
accordance with its terms.
5.) Publicity Genaissance and VGI agree that a joint press release, the timing
and contents of which to be mutually agreed upon, will be issued after
execution of this Amendment and information contained in such press
release can be used as a routine reference in the usual course of business
to describe the terms of this transaction, and Genaissance and VGI may
disclose such information without consulting the other party.
6.) Effect of Amendments. On and after the Effective Date hereof, the
Agreement shall be deemed to be amended and supplemented as hereinabove
set forth, as fully and with the same force and effect as if the
amendments set forth herein had originally been set forth in the
Agreement.
7.) Limitations. Except as amended and supplemented hereby, all the terms and
provisions of the Agreement shall remain unchanged and in full force and
effect. No alteration or amendment to this Amendment shall be binding on
any party hereto unless reduced to writing signed by both parties.
8.) Counterparts. This Amendment may be executed in two or more counterparts,
all such counterparts taken together shall constitute the original
thereof.
9.) Facsimile Copies. For purposes of this Amendment a signed facsimile copy
shall have the same force and effect as an original signed agreement.
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IN WITNESS WHEREOF, the undersigned have executed this Amendment as of the date
first above written.
GENAISSANCE PHARMACEUTICALS, INC. VISIBLE GENETICS, INC.
By: /s/ Xxxxx Xxxxx By: /s/ Xxxxxxxxxx Xxxxxx
Name: Xxxxx Xxxxx Name: Xxxxxxxxxx Xxxxxx
Title: Executive Vice-President Title: Vice President and General Counsel
and Chief Financial Officer Visible Genetics Inc.
Date: 3/15/2000 Date: 3/16/2000
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