CERTAIN MATERIAL (INDICATED BY AN ASTERISK) HAS BEEN OMITTED FROM THIS DOCUMENT
PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENTS. THE OMITTED MATERIAL HAS
BEEN FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
Exhibit 10.20
AMENDMENT NO. 1
to the
License Agreement
Effective April 23, 1997
Between
STANFORD UNIVERSITY
and
GEN-PROBE INCORPORATED
Effective April __, 1998 THE BOARD OF TRUSTEES OF THE XXXXXX XXXXXXXX
JUNIOR UNIVERSITY, having a principal place of business at 000 Xxxxx Xxxx,
Xxxxx 000, Xxxx Xxxx, XX 00000 (hereinafter "STANFORD") and GEN-PROBE
INCORPORATED, having a principal place of business at 00000 Xxxxxxx Xxxxxx
Xxxxx, Xxx Xxxxx, XX 00000 (hereinafter "GEN-PROBE"), agree as follows:
1. BACKGROUND
1.1 STANFORD and GEN-PROBE are parties to a License Agreement effective April
23, 1997 ("Original Agreement") concerning the invention entitled
"Selective Amplification of Target Polynucleotide Sequences" ("Invention")
as described in Stanford Docket S87-012.
1.2 STANFORD and GEN-PROBE wish to amend the Original Agreement so that
GEN-PROBE may practice the Invention in a broadened [***] field of use.
2. AMENDMENTS
2.1 Paragraph 1.8 of the Original Agreement is amended by replacing the words
"in the Licensed Field of Use, Licensed Product(s), and Licensed Field of
Use being terms" with the following:
"in the Licensed Field of Use and the Nonexclusive Field of Use,
Licensed Product(s), Licensed Field of Use, and Nonexclusive Field of
Use being terms".
2.2 Paragraph 2.2 of the Original Agreement is amended by inserting in the
second line the phrase "and the Nonexclusive Field of Use" immediately
after the phase "Licensed Field of Use".
2.3 Add a new Paragraph "2.9" to the Original Agreement as follows:
"2.9 "Nonexclusive Field of Use" means [***}.
2.4 Add a new Paragraph "4.4" to the Original Agreement as follows:
"4.4 STANFORD hereby grants and GEN-PROBE hereby accepts a
nonexclusive license in the Nonexclusive Field of Use to make,
have made, use, and sell Licensed Product(s) in the Licensed
Territory for the life of the last to expire of Licensed
Patent(s)."
*** 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.
2.5 All other provisions of the Original Agreement remain in full force
and effect.
IN WITNESS WHEREOF, the parties hereto have executed this Amendment
No. 1 in duplicate originals.
THE BOARD OF TRUSTEES OF THE XXXXXX
XXXXXXXX JUNIOR UNIVERSITY
By /s/ Xxxxxxxxx Xx
--------------------------------------------
Director, Office of Technology Licensing
Date May 4, 1998
-------------------------
GEN-PROBE INCORPORATED
By /s/ Xxxxx X. Xxxxxxxx
------------------------------------------
Xxxxx X. Xxxxxxxx
Title President and Chief Executive Officer
---------------------------------------
Date April 24, 1998
--------------------------
LEGAL DEPT. APPROVAL SEAL
2
