1
Exhibit 10.2
AMENDMENT NO. 1
TO THE
PROSTATE CANCER COLLABORATION AND LICENSE AGREEMENT
This Amendment No. 1 (the "Amendment") to the Prostate Cancer
Collaboration and License Agreement (the "Prostate Cancer Agreement") is made
effective as of February 5, 1998 (the "Effective Date") by and between Corixa
Corporation, a Delaware corporation having its principal place of business at
0000 Xxxxxxxx Xxxxxx, Xxxxx 000, Xxxxxxx, Xxxxxxxxxx 00000 ("Corixa") and
SmithKline Xxxxxxx Biologicals Manufacturing S.A., a Belgian corporation with
its principal place of business at Xxx xx x'Xxxxxxxx 00, X-0000 Xxxxxxxxx,
Xxxxxxx ("SB").
RECITALS
WHEREAS, Corixa and SB entered into the Prostate Cancer Agreement dated
as of March 1, 1997 pursuant to which Corixa and SB agreed to collaborate in the
research and development of antigens for the development of Vaccine product(s)
for the prevention and/or treatment of any form of prostate cancer; and
WHEREAS, Corixa and SB now wish to amend the Prostate Cancer Agreement
in certain respects as hereinafter provided; and
WHEREAS, Corixa and SB wish that all other terms and conditions of the
Prostate Cancer Agreement remain in full force and effect.
NOW, THEREFORE, the parties hereby agree as follows:
1. Capitalized terms in this Amendment shall have the same meaning as
those in the Prostate Cancer Agreement, unless specifically defined in this
Amendment. All section and paragraph references refer to sections or paragraphs,
as applicable, in the Prostate Cancer Agreement. References to the term
"Agreement" in the Prostate Cancer Agreement shall be deemed to include this
Amendment.
2. Except as expressly modified herein, the Prostate Cancer Agreement
shall remain in full force and effect in accordance with its terms. To the
extent there are any inconsistencies or ambiguities between this Amendment and
the Prostate Cancer Agreement, the terms of this Amendment shall supersede the
Prostate Cancer Agreement.
3. The following shall be inserted at the end of Section 1(o):
"Solely for purposes of Sections 4(a) and 5(b) of this Agreement,
the Licensed Field shall be deemed not to include the Joint Field. For the
purpose of all other Sections contained in this Amendment, the Licensed Field
shall be deemed to include the Joint Field."
2
4. The following shall be inserted following the end of Section 1(dd):
(ee) "Competitive Joint Field Product" shall mean (i) a product
in the Joint Field that would otherwise infringe Corixa Patents or Joint
Research Patents, or (ii) any other prostate cancer Vaccine product in the Joint
Field comprised of at least one (1) or more Corixa Antigens and/or Research
Program Antigens.
(ff) "Joint Field" shall mean the use of [XXX]
5. (a) In Section 4(a), "(i)" shall be inserted at the beginning of
the first sentence before "Subject to . . .", and "and outside the Joint Field"
shall be inserted in the second sentence between ". . . Licensed Field . . ."
and "; any commercial . . .".
(b) The following shall be inserted at the end of Section 4(a):
"(ii) Subject to the terms and conditions of this Agreement,
including, without limitation, the license payments and royalty provisions in
Sections 5 and 6 below, Corixa hereby grants to SB a co-exclusive license (with
Corixa or its exclusive sublicensee), with the right to sublicense, under Corixa
Patents, Joint Research Program Patents, Know-How and any SPC to make, have
made, use, have used, sell, offer for sale, have sold, keep and import any and
all Products in the Joint Field in the Territory in any formulation,
configuration, combination and/or with any delivery system. For purpose of
clarity, the foregoing license shall include rights of SB to Corixa Antigens
and/or Research Program Antigens in and outside the PC Field but in the Joint
Field; any commercial use of Corixa Antigens and/or Research Program Antigens in
the Joint Field shall be subject to the royalties set forth in Section 6 in the
same manner as royalties are paid on Products thereunder."
6. (a) In the table in Section 5(b), "by SB" shall be inserted in
the first sentence after "achievement" and before "of each."
(b) In the table in Section 5(b), "in Licensed Field" shall be
inserted in each of the following places: following ". . . IND" in subsection
5(b)(i), after ". . . clinical trials" in subsection 5(b)(ii), after ". . .
clinical trials" in subsection 5(b)(iii), between ". . . regulatory approval . .
." and ". . . in U.S." in subsection 5(b)(iv), between "Regulatory approval . .
." and ". . . in at least . . ." in subsection 5(b)(v) and between "Regulatory
approval . . ." and ". . . in U.S." in subsection 5(b)(vi).
3
(c) The following shall be inserted at the end of the table in
Section 5(b):
(vii) Start of Phase I clinical [XXX]
trials for first Product in the
Joint Field
(viii) Start of Phase III [XXX]
clinical trials for first Product
in the Joint Field
(ix) Submission of the first [XXX]
Product in the Joint Field for
regulatory approval in U.S.
(x) Regulatory approval of the [XXX]
first Product in the Joint Field
in at least [XXX]
(xi) Regulatory approval of the [XXX]
first Product in the Joint Field
in U.S.
(xii) Start of Phase III [XXX]
clinical trials for the second
Product in the Joint Field
(xiii) Regulatory approval of [XXX]
the second Product in the Joint
Field in [XXX]
or regulatory approval of a second
indication for the first Product
in the Joint Field
(d) The paragraph immediately below the table in Section 5(b) is
amended in its entirety to read as follows:
[XXX] of the milestone payments set forth
in Subparagraphs 5(b)(iv), (v), (vi), (ix), (x) and (xi) above and fifty [XXX]
of the milestone payments set forth in Subparagraph 5(b)(xiii) above are
fully creditable against future royalties payable pursuant to Section 6,
provided such royalties will not be reduced by more than [XXX] in
any given year. Any uncredited portion will be carried forward for credit in
subsequent years."
4
(e) The following shall be inserted as a new paragraph following
the paragraph immediately below the table in Section 5(b):
"In the event a Competitive Joint Field Product is in at least
Phase I clinical trials or has received regulatory approval and is available for
commercial sale in any of the countries listed in Subparagraphs 5(b)(vii)
- (xiii) above at the time the corresponding applicable milestone payment set
forth in Subparagraphs 5(b)(vii) - (xiii) becomes due and payable in accordance
with the terms hereof, then SB shall pay only [XXX] of such
milestone payment to Corixa. In addition, in the event Corixa receives a
corresponding milestone payment(s) for such Competitive Joint Field Product from
a Third Party, Corixa shall pay SB [XXX] of the amount of such
milestone payment(s) actually received by Corixa."
7. (a) In the first sentence of Section 6(a), "in the Licensed
Field, whether outside or inside the Joint Field, as applicable," shall be
inserted between ". . . Products sold . . ." and ". . . in countries . . .".
(b) In the table in Section 6(a), "Outside the Joint Field" shall
be inserted in the first heading following "Net Sales".
(c) The following shall be inserted as an additional table and a
new paragraph following the existing table in Section 6(a):
Net Sales in the Patent in
Joint Field Country of Sale Minimum Royalty
----------- --------------- ---------------
[XXX] [XXX] [XXX]
[XXX] [XXX] [XXX]
[XXX] [XXX] [XXX]
"In the event a Competitive Joint Field Product is in at least
Phase I clinical trials or has received regulatory approval and is available for
commercial sale in any country at the time the corresponding Patent Royalty
applicable to such country becomes due and payable in accordance with the terms
hereof, then SB shall pay [XXX] of such Patent Royalty to
Corixa. In addition, in the event Corixa receives corresponding patent royalties
from a Third Party for net sales of such Competitive Joint Field Product in such
country, Corixa shall pay SB [XXX] of the amount of such royalties
actually received by Corixa, provided that such royalties are on the net sales
of a Competitive Joint Field Product sold in a country where current claims of
any patent covering such Competitive Joint Field Product are issued or are
pending for up to [XXX] from the date of first filing anywhere in the
world."
8. In the first sentence of Section 13(d), the words "the Breast Cancer
Collaboration and License Agreement of even date herewith and the Option
Agreement of even date herewith"
5
shall be deleted and replaced with the words " the Breast Cancer Collaboration
and License Agreement dated March 1, 1997, the Option Agreements dated March 1,
1997 and Amendments to said: (a) Tuberculosis Collaboration and License
Agreement; (b) Breast Cancer Collaboration and License Agreement; and (c) Option
Agreements".
9. In the first sentence of Section 16(d) of the Prostate Cancer
Agreement, "Licensed" shall be inserted between "... Products in the ..." and
"... Field ...".
IN WITNESS WHEREOF, each of the parties hereto has caused this Amendment
to be executed by its duly authorized officer as of the date first written
above.
Agreed to and accepted by: Agreed to and accepted by:
CORIXA CORPORATION SMITHKLINE XXXXXXX
BIOLOGICALS
MANUFACTURING S.A.
/s/ Xxxx XxXxxx /s/ Jean Stephenne
_____________________ By: _______________________
Xxxx XxXxxx Name: Jean Stephenne
Chief Operating Officer Its: Senior Vice President,
General Manager
