EXHIBIT 10.2
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THIRD AMENDMENT OF LICENSE AGREEMENT
SpectraScience M.I.T. CONFIDENTIAL (10/13/93 11:38 AM)
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CONFIDENTIAL
THIRD AMENDMENT OF LICENSE AGREEMENT
This is the Third Amendment to License Agreement (the "Third Amendment") with
effective date of October 15, 1993 (the "Effective Date") by and between the
Massachusetts Institute of Technology, with a principal office at 00
Xxxxxxxxxxxxx Xxx., Xxxxxxxxx, XX 00000 ("M.I.T.") and SpectraScience Inc.
(formerly, before name change, GV Medical, Inc.) with a principal office at 0000
Xxxxx Xxxx, Xxxxxxxxxx, XX 00000 ("Licensee").
WHEREAS, the parties on even date herewith have duly executed a Settlement and
Reconciliation Agreement; and
WHEREAS, this Third Amendment is necessary to fully implement said Settlement
and Reconciliation Agreement.
NOW, THEREFORE, in consideration of the premises and the mutual covenants
contained herein, the parties hereto agree as follows:
1. Paragraph 1.1 is hereby deleted and replaced by the following:
1.1 "Licensee", through change of corporate name, shall mean
SpectraScience, Inc. and any subsidiary of SpectraScience, Inc.
2. Paragraph 1.3 is hereby deleted and replaced by the following:
1.3 "Patent Rights" shall mean the United States and Foreign pending
patent applications set forth in Appendix D attached hereto and made
a part hereof (hereinafter referred to as the "Patent Rights Patent
Applications"), and the United States patents and Foreign patents
set forth in Appendix D, and the U.S. patents and Foreign patents
issuing from said pending United States and Foreign applications or
later-filed foreign applications based upon any of said United
States patents and applications (hereinafter referred to as the
"Patent Rights Patents") and any continuations,
continuations-in-part which are directed to subject matter
specifically described in the Patent Rights Patent Applications and
Patent Rights Patents, divisions, reissues or extensions of any of
the foregoing. Patent Rights also include any patent applications
and the patents issuing therefrom for which Licensee has elected to
acquire a license under the terms of the Research Funding Agreement.
Such patent applications and patents have been and shall be added to
Appendix D hereto and made a part hereof. Appendix D shall be
amended from time to time to list the then current Patent Rights.
3. Paragraph 1.6 is hereby deleted and replaced by the following:
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1.6 "Field of Use" shall mean vascular and cardiovascular diagnostic
laser catheters, including, but not limited to, laser guide wires.
4. Paragraph 1.8 is hereby deleted and replaced by the following:
1.8 "Catheters" shall mean diagnostic laser catheters for vascular and
cardiovascular applications, which embody technology resulting from
the Research Funding Agreements.
5. Paragraph 6.1 is hereby amended by the addition of the underlined phrase
at the end of the first sentence, "MIT shall apply for, shall seek prompt
issuance of, and maintain during the term of this Agreement the Patent
Rights set forth in Appendix D subject to Paragraph 6.5."
6. Paragraphs 6.2, 6.3 and 6.4 are hereby deleted in their entirety and
following new paragraphs 6.2, 6.3, 6.4, 6.5, 6.6 and 6.7 are hereby added:
6.2 Licensee shall pay to M.I.T. the sum of $75,000 as an initial Annual
Payment for prosecution and maintenance costs for the Patent Rights
for the period beginning October 1, 1993, and ending October 14,
1994, such sum to be payable in equal installments due on the
fifteenth (15th day of each month, commencing with the first payment
due October 15, 1993. Beginning October 15, 1994, and for each
one-year period, (October 15 to October 14) of each subsequent year
through the one-year period ending October 14, 2003, Licensee shall
pay to M.I.T. an Annual Payment of $50,000 which shall be due and
payable in equal monthly installments on the fifteenth (15th) day of
each month. Beginning October 15, 2003, and for each one-year period
(October 15 to October 14) of each subsequent year thereafter,
Licensee shall pay an Annual Payment of $30,000 which shall be due
and payable in equal monthly installments on the fifteenth (15th)
day of each month. The Annual Payments shall be made until the
expiration of the last to expire of the Patent Rights, unless this
Agreement shall be sooner terminated. In the event any installment
of such Annual Payments is not received by M.I.T. within thirty (30)
calendar days of the date due, this License Agreement between M.I.T.
and Licensee shall immediately terminate with no further notice,
subject to Paragraph 6.3 below if such additional monthly
installment provided in Paragraph 6.3 has been paid by Licensee.
6.3 On or before October 15, 1993, and on or before each October 15
thereafter, or whenever Licensee so decides, Licensee may pay an
additional monthly installment of that year's Annual Payment, which
shall be held by M.I.T. and, automatically without notice to
Licensee, credited to any monthly installment for that year which
Licensee shall fail to pay on the 15th of any month. Should Licensee
fail to pay the next installment by the 15th day of the following
month, the License Agreement shall immediately terminate with no
further notice.
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6.4 Both the $65,000 payment under Paragraph 1 of the Settlement
and Reconciliation Agreement and the Annual Payments paid by
Licensee shall be creditable against future royalties on the
sale of Licensed Products or Minimum Royalties due M.I.T.
under this License Agreement.
6.5 In consideration of Licensee's Annual Payment, M.I.T. will:
(a) Maintain the issued U.S. Patent Rights, except that if
any issued patent becomes the subject of an
interference, M.I.T. shall have the right, at its sole
discretion, to abandon, subject to Licensee's rights
under (b.) below;
(b) Prosecute the U.S. Patent Rights patent applications
through at least the first office action and thereafter
continue prosecution in a reasonable commercial manner;
appeals to the U.S. District Court or the Court of
Appeals for the Federal Circuit and interference's,
whether defensive or offensive, will be at M.I.T.'s sole
discretion and sole cost, subject to the comment
provision of Paragraph 6.6. In the event M.I.T. decides
not to file such an appeal, or to provoke or defend such
an interference, M.I.T. shall give Licensee written
notice of said decision sixty (60) days prior to the
first date that action must be taken, and Licensee shall
have the right to assume such appeal or interference, at
Licensee's sole expense, subject to a similar credit
against future royalties as described in Paragraph 6.4
above and subject to Paragraph 6.1.
(c) Maintain issued foreign Licensed Patent Rights.
(d) Prosecute the foreign Patent Rights patent applications
through at least the first office action and thereafter
continue prosecution in a reasonable commercial manner,
including where commercially reasonable, prosecution
through any periods of opposition; provided, however,
pending EPO applications for:
3767 (Serial No. 86103432.0),
3767 Div I (Serial No. 93112269.1),
3938A (Serial No. 88909936.2),
4673A (Serial N. 90900642.1), and
5507A (Serial No. 92906273.5)
will be prosecuted only in Germany, France and Great
Britain, and any additional foreign Licensed Patent
Rights filed after the Effective Date (the "Additional
Foreign Patent Rights") will be prosecuted only in
Canada, Germany, France and Great Britain. Should
SpectraScience desire to prosecute such Additional
Foreign Patent Rights in additional countries,
SpectraScience shall so notify M.I.T. in writing. M.I.T.
shall prosecute and maintain such Additional Foreign
Patent Rights at SpectraScience's sole expense and shall
transfer responsibility for such
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prosecution and maintenance to SpectraScience's patent
counsel, currently Xxxxx Xxxxxx of Merchant & Xxxxx.
SpectraScience's patent counsel shall invoice
SpectraScience directly, with information copies to
M.I.T. and SpectraScience shall pay all costs directly
to its patent counsel. Nevertheless, such costs paid by
SpectraScience shall be creditable against future
royalties on the sale of Licensed Products or Minimum
Royalties due M.I.T. under the License Agreement.
6.6 Prior to initiating significant patent activity, M.I.T.'s outside
patent counsel, currently Xxxxxx Xxxxxx of Xxxxxxxx, Xxxxx, Xxxxx &
Xxxxxxxx, xxxx contact Licensee's designated patent counsel,
currently Xxxxx Xxxxxx of Merchant & Xxxxx, and provide Licensee's
counsel opportunity to comment, and communicate with such counsel
per Paragraph 6.1 above.
6.7 In the event M.I.T. is successful in licensing a third party to the
Patent Rights in the field of use of therapeutic products, or
licenses the Patent Rights to a third party during the nonexclusive
period of this License Agreement, and such third party as a
condition of license reimburses M.I.T. for a portion or all of
M.I.T.'s patent prosecution and maintenance costs, M.I.T. agrees
that the Annual Payment shall be reduced for the next annual period
after which M.I.T. has received such third-party reimbursement, on a
dollar for dollar basis to the extent such third-party reimbursement
exceeds M.I.T.'s total cumulative out-of-pocket patent costs for the
prosecution and maintenance of the Patent Rights from the date of
disclosure of the first disclosed invention falling within the
Patent Rights through the last day of that Annual Payment period.
7. Paragraph 7.4 is hereby amended by the addition of the underlined language
to read as follows:
7.4 Upon any material breach or default of this Agreement by Licensee,
other than those occurrences set out in Paragraphs 6.2, 6.3, 7.2 and
7.3 hereinabove, which shall always take precedence in that order
over any material breach or default referred to in this Paragraph
7.4, M.I.T. shall have the right to terminate this Agreement and the
rights, privileges and license granted hereunder by ninety (90)
days' notice by certified mail to Licensee. Such termination shall
become effective unless Licensee shall have cured any such breach or
default prior to the expiration of the (90) day period from receipt
of M.I.T.'s notice of termination.
8. "Article XIV - Payments, Notices and Other Communication" is hereby
amended by the following change of address for Licensee:
SpectraScience, Inc. cc: Xxxxx X. Xxxxxxx, Esq.
0000 Xxxxx Xxxx 0000 Xxxxxx Xx., Xxxxx 000
Xxxxxxxxxx, XX 00000 Xxxxxxx, XX 00000
ATTN: President
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9. Appendix D is hereby deleted in its entirety and replaced by the new
Appendix D attached hereto and made a part hereof.
IN WITNESS WHEREOF, the parties have duly executed this Agreement the day and
year set forth below.
Massachusetts Institute of Technology SpectraScience, Inc.
By /s/ XXXX XXXXXX By /s/ XXXXX XXXXX
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Title Director of Technology Licensing Department Title Chairman of the Board
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Date OCTOBER 14, 1993 Date OCTOBER 17, 1993
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THIRD AMENDMENT
Appendix D to License Agreement
Patent Rights
M.I.T. CASE NO. 3767
"A Device For Multiple Independent Small Area Exposures to Laser Radiation
Through a Catheter for Use in Medical Applications"
Disclosure Date: February 11, 1983
HBSR# Status Country Appl. No. File Date Patent No. Issue Date Related To
----- ------ ------- --------- --------- ---------- ---------- ----------
3767'A ISS USA 410897 09/21/89 5106387 04/21/92 CON 058675
3767'CA XXX XXX 000000 01/29/92 CON 420135
3767'C ISS USA 420135 10/11/89 5104392 04/14/92 CON 058675
3767'CAA XXX XXX 000000 06/26/92 CON 827,990
0000'X XXX XXX 000000 05/14/91 CON 058675
3767'G ISS USA 440100 11/21/89 5125404 06/30/92 CON 058675
3767'GA XXX XXX 000000 12/16/91 CON 440100
3767'Z ISS USA 411326 09/22/89 5034010 07/23/91 DIV 058675
HBSR# Status Appl. No. File Date Patent No. Issue Date Related To
----- ------ --------- --------- ---------- ---------- ----------
3767 CAN ISS 504731 03/21/86 1279901 02/05/91 PAR N/A
3767 CAN DIV I PEN 615648 02/13/90
3767 CAN DIV II ISS 615649 03/21/86 1317641 05/11/93 DIV 504731
3767 CAN DIV III PEN 615650 03/21/86 DIV 504731
3767 EPO PEN 86103432.0 03/14/86 PAR N/A
3767 EPO DIVI PEN 93112269.1 03/14/86
0000 XXXXX PEN 6466/86 03/22/86 PAR N/A
M.I.T. CASE NO. 3938
"A Spectral Diagnostic For Distinguishing Atheromatous Plaque From Normal
Artery Wall"
Disclosure Date: August 21, 1984
Sponsor: American Hospital Supply Corporation
HBSR# Status Country Appl. No. File Date Patent No. Issue Date Related To
----- ------ ------- --------- --------- ---------- ---------- ----------
3938 ISS USA 715131 03/22/85 4718417 01/12/88 PAR 100714
3938AF3 XXX XXX 000000 07/01/93 FWC 773983
HBSR# Status Appl. No. File Date Patent No. Issue Date Related To
----- ------ --------- --------- ---------- ---------- ----------
3938A EPO PEN 88909936.2 09/21/88 PCT/US88/03257
3938A CAN PEN 579286-4 09/21/88 PCT/US88/03257
0000X XXXXX PEN 509105/88 09/21/88 PCT/US88/03257
M.I.T. CASE NO. 4673
"Ultraviolet LIF Spectroscopy of Tissue"
Disclosure Date: April 25, 1988
Sponsor: NIH, Cleveland Clinic Foundation
HBSR# Status Country Appl. No. File Date Patent No. Issue Date Related To
----- ------ ------- --------- --------- ---------- ---------- ----------
4673F2 XXX XXX 000000 06/24/93 FWC 920151
0000X XXX XXX 000000 11/17/89 NAT'L-PCT/US89/05174
HBSR# Status Appl. No. File Date Patent No. Issue Date Related To
----- ------ --------- --------- ---------- ---------- ----------
4673A EPO PEN 90900642.1 11/17/89 PCT/US89/05174
M.I.T. CASE NO. 4923
"Contour Mapping of Spectral Diagnostics"
Disclosure Date: January 5, 1989
Sponsor: Cleveland Clinic Foundation
HBSR# Status Country Appl. No. File Date Patent No. Issue Date Related To
----- ------ ------- --------- --------- ---------- ---------- ----------
4923' ISS USA 772620 10/04/91 5201318 04/13/93 FWC 342311
4923'Z XXX XXX 000000 03/01/93 DIV 772620
M.I.T. CASE NO. 5507/5507A
"Detection of Atherosclerosis in Human Artery by Mid-Infrared Attenuated
Total Reflectance"
Disclosure Date: January 16, 1991
Sponsor: NIH
HBSR# Status Country Appl. No. File Date Patent No. Issue Date Related To
----- ------ ------- --------- --------- ---------- ---------- ----------
5507 XXX XXX 000000 02/26/91 XXX X/X
0000X XXX XXX 000000 01/17/92 NAT'L PCT/US92/00420
HBSR# Status Appl. No. File Date Patent No. Issue Date Related To
----- ------ --------- --------- ---------- ---------- ----------
5507A EPO PEN 92906273.5 01/17/92 PCT/US92/00420
5507A CAN PEN Appl. Filed 01/17/92 PCT/US92/00420
0000X XXXXX PEN Appl. Filed 01/17/92 PCT/US92/00420
M.I.T. CASE NO. 5908
"Diffuse Reflectance from Turbid Media: An Analytical Model of Photon Migration"
Disclosure Date: April 10, 1992
Sponsor: NIH
HBSR# Status Country Appl. No. File Date Patent No. Issue Date Related To
----- ------ ------- --------- --------- ---------- ---------- ----------
5908 XXX XXX 000000 07/24/93 PAR N/A
