SECOND AMENDMENT TO EXCLUSIVE LICENSE AGREEMENT UC Agreement Control No. 2006-04-0085
Exhibit 10.13
SECOND AMENDMENT TO EXCLUSIVE LICENSE AGREEMENT
UC Agreement Control No. 0000-00-0000
This Second Amendment to Exclusive License Agreement (“Second Amendment”), dated as of
May 8 , 2006, is made by and among The Regents of the University of California, a California corporation (“The Regents”), Medivation, Inc., a Delaware corporation (“Medivation”), and Medivation Prostate Therapeutics, Inc., a Delaware corporation and subsidiary of Medivation (“MPT”).
WHEREAS, The Regents, Medivation and MPT are parties to an Exclusive License Agreement, dated as of August 12, 2005 (the “Exclusive License Agreement”);
WHEREAS, Medivation has been supporting research in Xx. Xxxxxxx X. Xxxx’x laboratory at UCLA under a Sponsored Research Agreement with an Effective Date of August 12, 2005 (the “Sponsored Research Agreement”);
WHEREAS, an invention has been developed at UCLA in the performance of the Sponsored Research Agreement, which is disclosed in UC Case No 2006-537 entitled “New Thiohydantoin Androgen Receptor Antagonists for Treatment of Prostate Cancer,” by Xxxxxxx X. Xxxx and Xxxxxxx Xxx, employees of The Regents, Xxxxxxx X. Xxxxxxx, an employee of Xxxxxx Xxxxxx Medical Institute (“HHMI”) and a member of the faculty of the University of California, Los Angeles, and Xxxxx Xxxx, an employee of HHMI;
WHEREAS, the Sponsored Research Agreement grants Medivation the first right to negotiate for a license to inventions made by The Regents in the performance of the Sponsored Research Agreement, and Medivation has exercised its right and wishes to obtain an exclusive license to the invention noted in the preceding WHEREAS clause;
WHEREAS, Medivation as the parent corporation of MPT will benefit directly from the agreements made herein; and
WHEREAS, the parties mutually intend to enter into this Second Amendment to amend the terms of the Exclusive License Agreement, as specified below.
THEREFORE, the parties hereby agree as follows:
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Paragraph 1.1 (“Regents’ Patent Rights”) is deleted and replaced with the following, which is amended to include “UC Case No. 2006-537” in the parenthetical at the end of the paragraph: |
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supported in the specification and entitled to the priority date of the parent application) based on the patent applications listed in Appendix A (UC Case Nos. 2004-129, 2005-438, 2006-260 and 2006-537) |
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Appendix A (Regents’ Patent Rights) is deleted and replaced with the Appendix A attached to this First Amendment, which is amended to include the patent application filed under UC Case No. 2006-537. |
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In consideration for the addition of UC Case No. 2006-537 to the Exclusive License Agreement, Medivation will pay to The Regents a fee of five hundred dollars ($500) within thirty (30) days of the Effective Date of this Second Amendment. |
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Except for the amendments specifically referenced above, all other terms of the Exclusive License Agreement shall remain unchanged and in full force and effect. |
The Regents, Medivation and MPT have executed this Amendment in duplicate originals by their authorized officers on the dates written below:
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THE REGENTS OF THE UNIVERSITY OF CALIFORNIA |
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By |
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/s/ C. Xxxxxxx Xxxxxxx |
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By |
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Xxxxxx X. Wake, Ph.D. |
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Name |
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C. Xxxxxxx Xxxxxxx |
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Xxxxxx X. Wake, Ph.D. |
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Senior Vice President and CFO |
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Assistant Director, Licensing |
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8 May 06 |
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May 16, 2006 |
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MEDIVATION PROSTATE THERAPEUTICS, INC. |
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By |
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/s/ C. Xxxxxxx Xxxxxxx |
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Name |
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C. Xxxxxxx Xxxxxxx |
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Title |
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Senior Vice President and CFO |
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Date |
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8 May 06 |
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(Second Amendment)
REGENTS’ PATENT RIGHTS
UC Case No. 2004-129
PCT Patent Application No. US05/05529 “Methods and Materials for Assessing Prostate Cancer Therapies and Compounds,” filed February 23, 2005, based on US Provisional Patent Application No. 60/547,101 filed February 24, 2004. The inventors are Xxxxxxx X Xxxx, Xxxxxx Xxx, Xxxxxxx X. Xxxx and Xxxxx Xxxxxxx, employees of The Regents, and Xxxxxxx X. Xxxxxxx, an employee of the Xxxxxx Xxxxxx Medical Institute (“HHMI”) and a member of the faculty of The Regents.
UC Case No. 2005-438
US Provisional Patent Application No. 60/680,835 “Novel Androgen Receptor Inhibitors with Minimal Agonistic Activities,” filed May 13, 2005. The inventors are Xxxxxxx X. Xxxx, Xxxxxx Xxx, Xxxxxxx X. Xxxx and Xxxxx Xxxxxxx, employees of The Regents, and Xxxxxxx X. Xxxxxxx, an employee of the Xxxxxx Xxxxxx Medical Institute (“HHMI”) and a member of the faculty of The Regents. This application, together with the patent application pertaining to UC Case No. 2004-129, cover the compounds identified as RD1 through RD138, inclusive, on Exhibit A attached to the First Amendment.
PCT Patent Application No. PCT/US06/11417 (also includes UC Case Nos. 2006-260 & 2006-537) titled “Diarylthiohydantoin Compounds” was filed March 29, 2006. The inventors are Xxxxxxx X. Xxxx, Xxxxxx Xxx, Xxxxxxx X. Xxxx, Xxxxx Xxxxxxx and Xxxxxxx Xxx, employees of The Regents, and Xxxxxxx X. Xxxxxxx, an employee of Xxxxxx Xxxxxx Medical Institute (“HHMI”) and a member of the faculty of the University of California, Los Angeles, and Xxxx Xxxxxxxxx and Xxxxx Xxxx, employees of HHMI.
UC Case No. 2006-260
US Provisional Patent Application No. 60/750,351 filed December 15, 2005 and US Provisional Patent Application No. 60/756,552 filed January 6, 2006, both titled “Selected Diarylthiohydantoin Compounds,” filed January 6, 2006 (both were subsequently rolled into PCT Patent Application No. PCT/US06/11417). The inventors are Xxxxxxx X. Xxxx, Xxxxxx Xxx and Xxxxxxx X. Xxxx, employees of The Regents, and Xxxxxxx X. Xxxxxxx, an employee of the Xxxxxx Xxxxxx Medical Institute (“HHMI”) and a member of the faculty of The Regents, and Xxxx Xxxxxxxxx and Xxxxx Xxxx, employees of HHMI. This application will cover only the following diarylthiohydantoin compounds developed in the laboratory of Xxxxxxx X. Xxxx, the structures of which are set forth on Exhibit A attached hereto:
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RD139 through RD142 |
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RD145 through RD163 |
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RD168 |
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US Provisional Patent Application No. TBD “Diarylthiohydantoin Compounds” filed March 29, 2006 (This invention was also filed as part of PCT Patent Application No. PCT/US06/11417, listed under UC Case No. 2005-438 above). The inventors are Xxxxxxx X. Xxxx and Xxxxxxx Xxx, employees of The Regents, and Xxxxxxx X. Xxxxxxx, an employee of Xxxxxx Xxxxxx Medical Institute (“HHMI”) and a member of the faculty of the University of California, Los Angeles, and Xxxxx Xxxx, an employee of HHMI. This application covers the following compounds: RD162’, RD162’’, RD169 and RD170 (analogues of earlier compounds RD162 and RD131).
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