CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION. ASTERISKS DENOTE OMISSIONS AMENDMENT NO. 1 TO PRODUCT LICENSE AND ASSIGNMENT AGREEMENT
Exhibit
10.5
CONFIDENTIAL
MATERIALS OMITTED AND FILED SEPARATELY WITH
THE
SECURITIES AND EXCHANGE COMMISSION. ASTERISKS DENOTE OMISSIONS
AMENDMENT
NO. 1 TO
This
Amendment No. 1 to that certain Product License and Assignment Agreement
(this
“Amendment”) is made and entered into as of August 30, 2007 by and among CYTOGEN
CORPORATION, a Delaware corporation having an address at 000 Xxxxxxx Xxxx
Xxxx,
Xxxxx 0000, Xxxxxxxxx, Xxx Xxxxxx 00000, Xxxxxx Xxxxxx (“Cytogen”),
INPHARMA AS, a Norwegian company having an address at Pb 2030 (Xxxxxxxxxx.
00),
0000 Xxxxxxx, Xxxxxx (“Inpharma Norway”), and INPHARMA, INC.,
a Delaware corporation having an address at 000 Xxxxxxx Xxxxxx, Xxxxx 0000,
Xxxxxx, Xxxxxxxxxxxxx 00000 (“Inpharma USA,” together with Inpharma
Norway, “Inpharma”).
RECITALS
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A.
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Cytogen
and Inpharma entered into a Product License and Assignment Agreement
dated
as of October 11, 2006 (the “License
Agreement”).
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B.
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Cytogen
and Inpharma wish to amend the terms of the License Agreement as
set forth
below in accordance with Section 9.05 of the License
Agreement.
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NOW,
THEREFORE, in consideration of the foregoing, the mutual covenants and
agreements herein contained and other good and valuable consideration, the
receipt and adequacy of which is hereby acknowledged, the Parties, intending
to
be legally bound, hereby agree as follows:
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1.
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Any
defined terms utilized herein and not otherwise defined herein
shall have
the meaning ascribed thereto in the License
Agreement.
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2.
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The
first sentence of Section 2.04(a) is hereby amended to provide
in its
entirety as follows: “Inpharma hereby grants to Cytogen the exclusive
options to acquire the exclusive licenses to market, distribute,
sell and
otherwise commercialize and Exploit the Product in each of Europe
and Asia
(the “Options”).”
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3.
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Section
3.04 of the License Agreement is hereby amended to provide in its
entirety
as follows:
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Section
3.04 Option Payments.
Cytogen
shall pay Inpharma the following consideration for the Options granted under
Section 2.04(a):
(a) As
consideration for the grant of the Option, on the Effective Date Cytogen
shall
pay Inpharma a fee of [**] (the “Upfront Option
Fee”). The exercise price for the option for Asia shall be
[**], against which [**] of the Upfront Option Fee shall be
credited. Cytogen may, at its sole discretion, exercise its Option
for either Europe or Asia or both territories, and the fees set forth above
shall be independent of each other.
(b) If
Cytogen exercises the Option for Asia, future milestone payments shall be
payable by Cytogen to Inpharma as follows:
(i) Cytogen
shall make a one-time additional payment of [**] to Inpharma if and when
Net
Sales to third parties in Asia equal or exceed [**] in any Year for the first
time;
(ii) Cytogen
shall make a one-time additional payment of [**] to Inpharma if and when
Net
Sales to third parties in Asia reach [**] in any Year for a second time;
and
(iii) Cytogen
shall pay to Inpharma [**] of any upfront license fees and milestone payments
(but not royalties) received by Cytogen or its Affiliates in consideration
of
the grant by Cytogen or its Affiliates of the license or equivalent right
to
Exploit the Product in any country or countries in Asia, to the extent such
upfront license fees and milestone payments are in excess of the amount paid
by
Cytogen to Inpharma for such rights pursuant to 3.04(a). For the
purposes of this Section 3.04, the term “upfront license fees” means
[**].
(c) The
exercise price for the option for Europe shall be [**] which represents [**]
of
the upfront license fees received by Cytogen or its Affiliates in consideration
of the grant by Cytogen or its Affiliates of the license or equivalent right
to
Exploit the Product in any country or countries in Europe.
(d) Cytogen
shall pay to Inpharma [**] of any sales milestone payments (but not royalties)
received by Cytogen or its Affiliates in consideration of the grant by Cytogen
or its Affiliates of the license or equivalent right to Exploit the Product
in
any country or countries in Europe. The Parties agree that the sales
milestones payments receivable by Cytogen or its Affiliates for the grant
of
rights in Europe are as follows:
(i) a
one-time additional payment of [**] to Cytogen in the event net sales of
the
Product by the licensee to unaffiliated third parties within Europe in any
twelve-month period reach [**] for the first time;
(ii) a
one-time additional payment of [**] to Cytogen in the event net sales of
the
Product by the licensee to unaffiliated third parties within Europe in any
twelve-month period reach [**] for the first time;
(iii) a
one-time additional payment of [**] to Cytogen in the event net sales of
the
Product by the licensee to unaffiliated third parties within Europe in any
twelve-month period reach [**] for the first time;
(iv) a
one-time additional payment of [**] to Cytogen in the event net sales of
the
Product by the licensee to unaffiliated third
2
parties
within Europe in any twelve-month period reach [**] for the first time;
and
(v) a
one-time additional payment of [**] to Cytogen in the event net sales of
the
Product by the licensee to unaffiliated third parties within Europe in any
twelve-month period reach [**] for the first time.
(e) The
amounts payable by Cytogen to Inpharma under Sections 3.04 (c) and (d) shall
not
exceed [**] in the aggregate.
(f) In
the event the Options for Europe or Asia is not exercised by Cytogen and
any of
such Options expire, Cytogen shall provide to Inpharma [**].
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4.
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The
Parties understand and agree that the execution of this Amendment
does not
extend the term of the Options set forth in Section 2.04 of the
License
Agreement beyond [**].
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5.
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Except
as expressly provided in this Amendment, all other terms, conditions
and
provisions of the License Agreement shall continue in full force
and
effect as provided therein. Any reference to the License Agreement
in any
instrument or agreement shall mean and include the License Agreement
as
amended by this Amendment. In the event of any conflict between
the terms of the License Agreement and the terms of this Amendment,
the
terms of this Amendment shall govern and
control.
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6.
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The
License Agreement and this Amendment constitute the entire understanding
between the parties, except as expressly set forth herein, and
supersede
any contracts, agreements or understanding (oral or written) of
the
parties with respect to the subject matter hereof. No term of
this Amendment may be amended except upon written agreement of
both
parties.
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7.
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This
Amendment may be executed in one or more counterparts, each of
which will
be deemed an original but all of which together will constitute
one and
the same instrument.
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IN
WITNESS WHEREOF, Cytogen and Inpharma have entered into this Amendment effective
as of the date first set forth above.
CYTOGEN
CORPORATION
By
/s/
Xxxxxxx X. Xxxxxx
Xxxxxxx
X. Xxxxxx
President
and Chief Executive Officer
INPHARMA
AS
By
/s/
Xxxxxxx X. Xxxxxx
Name:
Xxxxxxx X. Xxxxxx
Title:
President and CEO
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