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EXHIBIT 4.1
FIRST AMENDMENT TO INTELLECTUAL PROPERTY
LICENSE AGREEMENT
This First Amendment to Intellectual Property License Agreement
("Amendment") is made as of July 23, 2001 (the "Effective Date"), by and between
UNIVERSITY TECHNOLOGY CORPORATION, a not-for-profit Colorado corporation having
its principal place of business at ▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇, ▇▇▇ ▇▇▇,
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇-▇▇▇▇ ("UTC") and GERON CORPORATION, a Delaware
corporation having its principal place of business at ▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇,
▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ("Geron" or "Licensee").
WHEREAS, UTC and Geron are the co-owners of certain intellectual
property rights including, without limitation, U.S. patent number 6,261,836 and
foreign equivalents (the "Licensed Rights"); and
WHEREAS, UTC and Geron are the parties to an Intellectual Property
License Agreement dated December 9, 1996 (the "License Agreement") under which
UTC grants to Geron, on the terms and conditions of the License Agreement, an
exclusive license under UTC's undivided interest in the Licensed Rights; and
WHEREAS, UTC and Geron have concluded that it is in each of their
interests to amend the License Agreement in certain respects;
NOW, THEREFORE, in consideration of the promises and the mutual
covenants contained herein, the parties agree as follows:
1. Section 1.3 of the License Agreement is amended to read as follows:
A "Licensed Product" shall mean any product or part thereof which is
sold, manufactured, or used in any country under this Agreement and
which:
(a) is covered in whole or in part by an issued, unexpired
claim or a pending claim contained in the Intellectual
Property Rights in the country in which any Licensed
Product is made, used or sold; or
(b) is manufactured using a Licensed Process which is
covered in whole or in part by an issued, unexpired
claim or a pending claim contained in the Intellectual
Property Rights in the country in which any Licensed
Process is used or in which such product or part thereof
is used or sold; or
(c) is created using Know-How included in Intellectual
Property Rights provided hereunder, and used prior to
the Know-How entering the public domain.
[ *** ] Confidential portion has been filed separately with the Securities
and Exchange Commission.
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2. Section 1.4 of the License Agreement is amended to read as follows:
A "Licensed Process" shall mean any process which is used in any country
under this Agreement and which:
(a) is covered in whole or in part by an issued, unexpired
claim or a pending claim contained in the Intellectual
Property Rights; or
(b) is created using Know-How included in Intellectual
Property Rights provided hereunder, and used prior to
the Know-How entering the public domain.
3. Section 1.5 of the License Agreement is amended to delete the words
"and/or its sublicensee" in the first sentence.
4. Article I of the License Agreement is amended to add the following new
sections:
1.10 "Sub-Licensing Revenues" shall mean any and all revenues
received by Geron from a sublicensee for the grant of any sublicense
under this Agreement, including without limitation up-front license
fees, annual license maintenance fees, milestone payments, royalty
payments, equity, and share of profits, but excluding Research
Reimbursement. If Geron receives Sub-Licensing Revenues in the form of
non-cash consideration other than equity, the fair market value of such
non-cash consideration shall be used for purposes of calculating
Sub-Licensing Revenues, and UTC's share of such fair market value under
Section 4.1(d) shall be paid in cash.
1.11 "Research Reimbursement" shall mean amounts received by Geron
from a sublicensee to reimburse Geron for bona fide expenditures for
research employees (using Geron's usual FTE rate), laboratory supplies
and equipment, and other out-of-pocket expenses for research and
development work conducted under a provision in the sublicense agreement
or a contemporaneous written agreement between Geron and the
sublicensee, provided that (i) such agreement reasonably defines the
work to be done, (ii) such work is reasonably required for sublicensee's
commercialization of Licensed Technologies, and (iii) the work is
performed after or within [***] before the execution of the agreement.
1.12 "ESC Research Products" shall mean products or services
consisting of or based on cells derived from embryonic stem cells for
use in drug discovery and/or development or other research.
[ *** ] Confidential portion has been filed separately with the Securities
and Exchange Commission.
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5. Section 2.5 of the License Agreement is amended to read as follows:
LICENSEE shall have the right to enter into sublicensing agreements for
the rights, privileges and licenses granted hereunder. LICENSEE shall
provide written notification of the identity of the sublicensee and, to
the extent defined, the scope of the sublicense (i.e. exclusive or
nonexclusive and any field limitations) no later than the earliest of
(i) the signing of a letter of intent or term sheet with the licensee,
(ii) [***} before signing an agreement granting an option to obtain a
sublicense, or (iii) [***] before signing a sublicense agreement. Only
one such notification is required for each sublicense. Any such
notification will be sent by overnight express mail to UTC and to the
Office of Technology Transfer at the University of Colorado Health
Sciences Center. Any such notification shall be treated as confidential
under the confidentiality agreements between LICENSEE and UTC and
LICENSEE and the University of Colorado.
6. Section 2.6 of the License Agreement is amended to read as follows:
LICENSEE hereby agrees that nothing in any sublicense agreement shall
restrict the sublicensee from seeking a license from UTC in the event
this License Agreement is terminated for any reason and the sublicensee
wishes to obtain such a license from UTC.
7. Section 2.7 of the License Agreement is amended to read as follows:
LICENSEE agrees that any sublicenses granted by LICENSEE shall be
consistent with the terms and conditions of this Agreement. Each
sublicense shall require the sublicensee to diligently pursue the
commercialization of the sublicensed technology, and LICENSEE's due
diligence obligations under Article III of this Agreement shall include
commercially reasonable efforts to monitor and require compliance with
the diligence provisions of such sublicenses. LICENSEE's failure to
comply with its obligations to UTC under this Agreement shall not be
excused by any default by a sublicensee under a sublicense agreement.
8. Section 2.8 of the License Agreement is amended to delete the phrase
"and to guarantee the performance of that sublicensee under any such
agreement."
9. Section 2.9 of the License Agreement is deleted in its entirety.
10. Section 3.2(c) of the License Agreement is amended to read as follows:
LICENSEE shall have Net Sales and/or Sub-Licensing Revenues in such
amounts as to result in payments to UTC at least equal to the following
amounts
[ *** ] Confidential portion has been filed separately with the Securities
and Exchange Commission.
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in the following years, beginning [ *** ] after successfully cloning the
genes encoding the protein component or components of human telomerase:
Year Amount
---- ------
[ *** ] [ *** ]
[ *** ] [ *** ]
[ *** ] [ *** ]
[ *** ], [ *** ]
If LICENSEE does not have actual Net Sales and/or Sub-Licensing Revenues
in such amounts, LICENSEE shall comply with this section 3.2(c) by
paying UTC the difference between such amounts and the payments made by
LICENSEE under Section 4.1(c) and (d) based on actual Net Sales and
Licensing Revenues.
11. Section 3.3 of the License Agreement is revised to read as follows:
LICENSEE's failure to perform in accordance with Paragraphs 3.1 and 3.2
above shall be grounds for UTC to terminate this Agreement pursuant to
Paragraph 12.3 hereof, unless LICENSEE makes the payments specified in
Section 3.2(c), or both parties renegotiate the Due Diligence plan and
mutually agree to revisions thereto.
12. Section 4.1(c) of the License Agreement is amended to delete the words
"or sublicensee" from the first sentence.
13. Section 4.1(d) of the License Agreement is amended to read as follows:
In addition to the foregoing, LICENSEE agrees that it will remit
to UTC [ *** ] of all Sub-Licensing Revenues, except that for
Sub-Licensing Revenues from sublicenses of the Intellectual
Property Rights for use in ESC Research Products, LICENSEE will
remit to UTC [ *** ] of such Sub-Licensing Revenues.
14. Section 5.2 of the License Agreement is amended to change "forty-five
(45) days" in the first sentence to "seventy-five (75) days."
15. Article XI of the License Agreement is amended to read as follows:
This Agreement is not assignable and any attempt to do so shall be void;
provided, however, that either party may assign this Agreement to any
party acquiring all or substantially all of the assets and business of
such party (or of a division or other business unit of such party
comprising such party's principal business related to the Intellectual
Property Rights); and further provided that UTC may assign this
Agreement to the University of Colorado.
[ *** ] Confidential portion has been filed separately with the Securities
and Exchange Commission.
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16. In all other respects, the License Agreement remains unchanged and in
full force and effect.
17. In consideration for the amendment of the License Agreement as provided
in this Amendment, Geron will issue to UTC or its designee, within
[ *** ] after the execution of this Amendment, One Hundred Thousand
(100,000) shares of Geron common stock, pursuant to a Common Stock
Purchase Agreement attached as Exhibit A to this Amendment, and a
warrant for One Hundred Thousand (100,000) shares of Geron common stock,
pursuant to a Warrant Agreement attached as Exhibit B to this Amendment.
The exercise price for the warrant will be equal to the closing price of
the common stock on the day prior to the execution of this Amendment.
IN WITNESS WHEREOF, the parties have executed this Amendment as of the Effective
Date.
UNIVERSITYTECHNOLOGY CORPORATION
By: s/▇▇▇▇▇▇ ▇▇▇▇▇
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▇▇. ▇▇▇▇▇▇ ▇▇▇▇▇
Co-Director
Technology Transfer Office
University of Colorado Health Sciences Center
Date: 8/30/2001
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GERON CORPORATION
By: s/▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇
----------------------------------------
▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇
Chief Financial Officer and Senior Vice President,
Corporate Development
Date: 8/27/01
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[ *** ] Confidential portion has been filed separately with the Securities
and Exchange Commission.
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EXHIBIT A
COMMON STOCK PURCHASE AGREEMENT
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EXHIBIT B
WARRANT AGREEMENT
