SECOND AMENDING AGREEMENT
Exhibit 10.20
SECOND AMENDING AGREEMENT
This Agreement is made as of August 30, 2006 (the “Effective Date”).
Between:
THE UNIVERSITY OF BRITISH COLUMBIA, a corporation continued under the University Act of British Columbia and having its Industry Liaison offices at #103 – 0000 Xxxxxxxx Xxxx, Xxxxxxxxx, Xxxxxxx Xxxxxxxx, X0X 0X0
(the “University”)
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ONCOGENEX TECHNOLOGIES INC. a corporation incorporated under the laws of Canada, and having offices at Xxxxx 000, 0000 Xxxx Xxxxxxxx, Xxxxxxxxx, Xxxxxxx Xxxxxxxx, X0X 0X0
(the “Licensee”)
WHEREAS:
A. The University and the Licensee entered into a license agreement with a Commencement Date of September 1, 2002 with respect to BP-2 and BP-5 (the “Original Bi-Specific License Agreement”) pursuant to which the University granted the Licensee an exclusive worldwide license to the Technology, as defined in the Original Bi-Specific License Agreement;
B. The University and the Licensee entered into a letter agreement dated November 14, 2002 relating to the Original BP-5 License Agreement (the “Letter Agreement”);
C. The University and the Licensee entered into an amending agreement effective as of September 12, 2002 with respect to the Original Bi-Specific License Agreement (the “Amending Agreement”);
D. The University and the Licensee now wish to further amend the Original Bi-Specific License Agreement as set out below (the “Original Bi-Specific License Agreement as amended by the Amending Agreement and the Letter Agreement is hereafter referred to as the “Bi-Specific License Agreement”).
Now therefore, in consideration of the premises and the mutual covenants contained in this Amending Agreement, and other good and valuable consideration, the receipt and sufficiency of which is hereby acknowledged, the parties hereto covenant and agree with each other as follows:
1. Article 6.6 is hereby amended by adding the following to the end of it:
“The University consents to the termination of any shareholders agreements to which the University and the Licensee may be party, upon the Licensee becoming a reporting issuer under the Securities Act of British Columbia.”
2. Article 7.1 is hereby deleted and the following substituted therefore:
*Certain information in this exhibit has been omitted as confidential, as indicated by [***]. This information has been filed separately with the Commission.
“7.1 The Licensee shall have the right to identify any process, use or products arising out of the Technology and any University Improvements that may be patentable and may seek patent protection with respect thereto, in which case the Licensee shall take all reasonable steps to apply for a patent in the name of the University provided that the Licensee pays all costs of applying for, registering and maintaining the patent in those jurisdictions in which the Licensee might designate that a patent is required. The choice of patent counsel will be mutually agreed upon between the University and the Licensee. The University shall remain the client of such patent counsel, however, the Licensee will provide direct instructions to the patent counsel on all patent matters relating to the Technology including filing, prosecution, management, maintenance, including renewals and term extensions thereof, and the scope and content of patent applications and to request countries for foreign filings. The Licensee will pay patent counsel for all costs incurred with respect to any and all patents relating to the Technology. The Licensee will supply or instruct the patent counsel to supply the University with copies of all documents and correspondence received and filed in connection with the prosecution of patents. The Licensee will keep the University advised as to all material developments with respect to such applications with sufficient time for the University to review and respond, and generally not less than 30 days prior to an applicable patent deadline, unless circumstances reasonably require the Licensee to act sooner to protect the patents, in which case the Licensee may act sooner. The University shall, as required and at the Licensee’s cost for the University’s reasonable out-of-pocket expenses, reasonably cooperate with the Licensee, its lawyers and agents in the filing, prosecution, management and maintenance of the patents.”.
3. The following is added as Article 10.8:
“10.8 Notwithstanding anything contained in this Article, the parties acknowledge and agree that the Licensee may disclose Confidential Information to the extent that may be required by applicable securities laws in connection with the public offering of the Licensee’s securities and thereafter to comply with its disclosure obligations as a public company. If required to make such disclosure by any applicable securities laws, the Licensee shall inform the University in writing by giving notice and will consider any reasonable comments the University may have. Such notice shall be generally not less than 48 hours prior to public disclosure unless a delay of 48 hours would violate applicable securities laws, in which case notice shall be as soon as practicable.”
4. Article 11.1 is hereby deleted and the following substituted therefore:
“11.1 Notwithstanding Article 10.7, the Licensee shall not use any of the UBC Trade-marks or make reference to the University or its name in any advertising or publicity whatsoever, without the prior written consent of the University, except as required by law. If the Licensee is required by law to act in contravention of this Article, the Licensee shall provide the University with sufficient advance notice in writing to permit the University to bring an application or other proceeding to contest the requirement.”.
5. Article 11.2 is hereby deleted.
6. Article 11.4 is hereby deleted and the following substituted therefore:
“11.4 The parties acknowledge that two separate technologies are included in the Technology licensed hereunder: (a) insulin growth factor binding protein -2 (“BP2”) and (b) insulin growth factor binding protein – 2 and insulin growth factor binding protein -5 (“Bi-Specific”). All such technologies are at a very early stage of development, and it is too early to determine which invention will become a Product or Products hereunder. It
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is further acknowledged that the Licensee has an existing license agreement with the University for a technology know as insulin growth factor binding protein -5 (“BP5”) the (“BP5 License”), and that it is intended that [***] shall become a lead Product of the Licensee, and that the [***] technologies will be used to support the intellectual property position of the Licensee in respect of such Product. Further, the parties acknowledge and agree that any efforts to develop and exploit a Product incorporating all or part of the technology or Improvements related to [***] will be considered development and exploitation of all [***] technologies for the purposes of this Article 11.4 and Article 11.4 of the BP5 License, provided that the Licensee continues to undertake an active research program with respect to the technologies which are not the Licensee’s lead Product and the Licensee continues to pay all patent costs incurred by the University pursuant to Article 7.1. Therefore, the Licensee shall use reasonable commercial efforts to develop and exploit all or part of the Technology and any Improvements and to promote, market and sell the Products and utilize all or part of the Technology and any Improvements and to meet or cause to be met the market demand for the Products and the utilization of all or part of the Technology and any Improvements.
Notwithstanding the foregoing, in the event that the Licensee has not taken reasonable commercial efforts to develop and exploit each of [***], as evidenced by failing to engage in an active research program to the reasonable satisfaction of the University with respect to each of [***] for in excess of 24 months, the Licensee shall either:
(a) amend the license to exclude that technology; or
(b) enter into an agreement with the University to make annual payments of [***] to the University to maintain the license for such technology, notwithstanding the Licensee may not be taking reasonable commercial efforts to exploit such technology.”.
7. The contact information for delivery of notices in Article 16.0 is amended as follows:
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The Managing Director |
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University – Industry Liaison Office |
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University of British Columbia |
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#000 - 0000 Xxxxxxxx Xxxx |
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Xxxxxxxxx, Xxxxxxx Xxxxxxxx |
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X0X 0X0 |
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Telephone: |
(000) 000-0000 |
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Fax: |
(000) 000-0000 |
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If to the Licensee: |
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The President |
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0000 Xxxx Xxxxxxxx, Xxxxx 000 |
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Xxxxxxxxx, Xxxxxxx Xxxxxxxx |
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X0X 0X0 |
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Telephone: |
(000) 000-0000 |
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Fax: |
(000) 000-0000 |
8. Article 18.3 is hereby amended by adding the following to the end of it as a separate paragraph:
“Notwithstanding anything contained in this Article 18, the failure to obtain the prior written consent of the University to the events described in any of Articles 18.3(d), (e) or
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(f) shall not entitle the University to terminate this Agreement if at the time of such event the Licensee is a public company.”
9. In Article 18.7, the first reference to Article 18.6 is changed to Article 18.5.
10. Except as modified herein, the University and the Licensee confirm that the Bi-Specific License Agreement remains unmodified and in full force and effect.
11. The Bi-Specific License Agreement as modified by this Agreement constitutes the entire agreement between the parties relating to the subject matter hereof.
This Agreement may be executed by the parties in separate counterparts and by facsimile, each of which such counterparts when so executed and delivered shall be deemed to constitute one and the same instrument.
IN WITNESS WHEREOF the parties have executed this Agreement as of the date first above written.
SIGNED FOR AND ON BEHALF OF
THE UNIVERSITY OF BRITISH COLUMBIA
by its duly authorized officers:
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X.X. Xxxxx, PhD, MBA |
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Associate Director |
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/s/ X.X. Xxxxx |
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University-Industry Liaison Office |
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Authorized Signatory |
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Authorized Signatory |
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SIGNED FOR AND ON BEHALF OF |
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By its duly authorized officer: |
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/s/ Xxxxx Xxxxxxx |
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Authorized Signatory |
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