FIRST AMENDMENT TO LICENSE AGREEMENT
Exhibit 10.3
| EXECUTION COPY |
FIRST AMENDMENT TO LICENSE AGREEMENT
THIS FIRST AMENDMENT (this “AMENDMENT”), made as of September 1, 2010 amends the certain License Agreement, effective as of April 1, 2010 (the “AGREEMENT”), entered into by and between the Board of Trustees of the University of Arkansas acting for and on behalf of the University of Arkansas for Medical Sciences, a public institution of higher education having principal offices at 0000 Xxxxx Xxxxxxxxxx Xxxxxx, Xxxxxx Xxxx, Xxxxxxxx 00000, Xxxxxx Xxxxxx of America (hereinafter “UNIVERSITY”), and Myeloma Health LLC, a Delaware limited liability company having a principal office at 000 Xxxxxxx Xxxxxx, 00xx Xxxxx, Xxx Xxxx, Xxx Xxxx 00000 (hereinafter “LICENSEE”), and shall be effective as of the EFFECTIVE DATE (as such term is defined in the AGREEMENT).
WITNESSETH
WHEREAS, UNIVERSITY and LICENSEE wish to amend the AGREEMENT to recognize that the following patent applications, identified by UNIVERSITY disclosure numbers: I09-08 and I09-08PCT (the “I09-08 FILINGS”), I09-29 (the “I09-29 FILINGS”), I10-07 (the “I10-07 FILINGS”), I10-14 (the “I10-14 FILINGS”), I10-19 (the “I10-19 FILINGS”) and I11-01 (the “I11-01 FILINGS”) are within the scope of the PATENT RIGHTS (as such term is defined in the AGREEMENT) under Section 2.12(a).
NOW, THEREFORE, UNIVERSITY and LICENSEE hereby amend the AGREEMENT as follows:
| 1. | UNIVERSITY and LICENSEE acknowledge and agree that the I09-08 FILINGS, I09-29 FILINGS, I10-07 FILINGS, I10-14 FILINGS and I10-19 FILINGS are within the scope of the PATENT RIGHTS under Section 2.12(a). As a consequence, Appendix A shall be revised to include the following new table entries: |
| “Uses of Bortezomib in Predicting Survival in Multiple Myeloma Patients” | |||||
| UAMS Disclosure # | Applications | Publications | U.S. Patents | Overseas Publication | Overseas Patents |
| I09-08 | US61/204,154 | Pending | |||
| I09-08PCT | PCT/US2010/000002 | Pending | |||
| “High IL6R and Myeloma Resistance to Thalidomide” | |||||
| UAMS Disclosure # | Applications | Publications | U.S. Patents | Overseas Publication | Overseas Patents |
| I09-29 | US61/278,878 | Pending | |||
| “High-Risk Myeloma Is Associated with Global Elevation of miRNAs and Overexpression of EIF2C2/AG02” | |||||
| UAMS Disclosure # | Applications | Publications | U.S. Patents | Overseas Publication | Overseas Patents |
I10-07 |
US61/283,521 |
Pending | |||
| “Glucocorticoid Receptor (NR3C1) mRNA Levels in Tumor Cells as a Predictor of Outcome and Dexamethasone dosing in Patients” | |||||
| UAMS Disclosure # | Applications | Publications | U.S. Patents | Overseas Publication | Overseas Patents |
I10-14 |
Pending Patent Committee Review |
||||
| “A 14 Gene Signature Distinguishing Ultra High Risk from Manageable GEP70 High Risk Disease Represent Biomarkers and Therapeutic Targets” | |||||
| UAMS Disclosure # | Applications | Publications | U.S. Patents | Overseas Publication | Overseas Patents |
I10-19 |
Provisional filed June 04, 2010 |
Pending | |||
| “Identification of Genes Coding for Plasma Membrane Reccptors Overexpressed on Cancer Calls as a Result of Copy Number Gains: Thrombin Receptor (PAR1) as a Biomarker and Therapeutic Target” | |||||
| UAMS Disclosure # | Applications | Publications | U.S. Patents | Overseas Publication | Overseas Patents |
I11-01 |
Provisional to be filed |
||||
| 2. | Appendix B shall be revised to include the following new table entry under the heading “The following patent applications are included in PATENT RIGHTS and apply to both fluorescence in situ hybridization (FISH) testing and the LICENSED FIELD:” |
| UAMS Disclosure # | Applications |
| I09-29 | US61/278,878 |
| 3. | UNIVERSITY and LICENSEE acknowledge and agree that the patent costs incurred by UNIVERSITY and paid to third parties in connection with the preparation, filing, prosecution and maintenance, as of invoices received: |
| a. | as of the EFFECTIVE DATE are as follows: |
| (i) | I09-08 FILINGS: $10,037, |
| (ii) | I09-29 FILINGS: $2,462, |
| (iii) | I10-07 FILINGS: $1,116, |
| (iv) | I10-14 FILINGS: $3,485, |
| (v) | I10-19 FILINGS: $1,371, and |
| (vi) | I11-01 FILINGS: $4,822 |
| b. | after the EFFECTIVE DATE are as follows: |
| (i) | I09-08 FILINGS:, |
| (ii) | I09-29 FILINGS:, |
| (iii) | I10-07 FILINGS:, |
| (iv) | I10-14 FILINGS:, |
| (v) | I10-19 FILINGS:, and |
| (vi) | I11-01 FILINGS:. |
The amount of such patent costs that LICENSEE shall reimburse to UNIVERSITY shall be determined in accordance with Section 5.1(e) (i) (the “I09-08, I09-08PCT, I09-29, I10-07, I10-14, I10-19 and I11-01 PATENT COSTS”).
| 4. | UNIVERSITY shall amend the separate letter signed by an authorized representative of UNIVERSITY pursuant to Section 5.1(e) (ii) to include the I09-08, I09-08PCT, I09-29, I10-07, I10-14, I10-19 and I11-01 PATENT COSTS incurred by UNIVERSITY prior to the EFFECTIVE DATE. |
| 5. | LICENSEE shall pay to UNIVERSITY: |
| a. | the patent costs for the I09-08, I09-08PCT, I09-29, I10-07, I10-14, I10-19 and I11-01 PATENT COSTS incurred by UNIVERSITY prior to the EFFECTIVE DATE in accordance with Section 5.1(e)(ii). |
| b. | the patent costs for the I09-08, I09-08PCT, I09-29, I10-07, I10-14, I10-19 and I11-01 PATENT COSTS incurred by UNIVERSITY after the EFFECTIVE DATE in accordance with Section 5.1(e)(iii) |
| 6. | Except as provided herein above, all other terms and conditions of the AGREEMENT remain the same and in effect. |
(Signature page follows)
| EXECUTION COPY |
IN WITNESS WHEREOF, the PARTIES hereto have caused this AMENDMENT to be executed by their duly authorized representatives.
| BOARD OF TRUSTEES OF THE | MYELOMA HEALTH LLC | |||
| UNIVERSITY OF ARKANSAS | ||||
| /s/ Xxx Xxxx | /s/ Xxx Xxxxxxxxx | |||
| By: | Xxx Xxxx | By: | Xxx Xxxxxxxxx | |
| Title: | Vice President for Administration | Title: | Chief Executive Officer | |
| Date: | 8/26/10 | Date: | 8/19/10 | |
[Signature Page to First Amendment to License Agreement]
