CONFIDENTIAL TREATMENT REQUESTED EXHIBIT 10.8
CONFIDENTIAL TREATMENT REQUESTED UNDER RULE 24(B)(2) OF THE SECURITIES AND
EXCHANGE ACT OF 1934. CONFIDENTIAL TREATMENT REQUESTED IS REQUESTED AND IS NOTED
WITH "[CONFIDENTIAL TREATMENT REQUESTED]." AN UNREDACTED VERSION OF THIS
DOCUMENT HAS BEEN PREVIOUSLY FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
AMENDMENT TO PATENT AND KNOW-HOW
ASSIGNMENT AND LICENSE
OPTION AGREEMENT
BY AND AMONG
THE SCHOOL OF PHARMACY,
UNIVERSITY OF LONDON
AND
SOMANTA INCORPORATED
CONFIDENTIAL TREATMENT REQUESTED
The School of Pharmacy,
University of London
00-00 Xxxxxxxxx Xxxxxx,
Xxxxxx XX0X 0XX
Somanta Incorporated
00 Xxxxxx Xxxxxx
Xxxxxx X0X 0XX Xxxxxxx 21st September 2005
Dear Aga,
Re: Prodrax patent [CONFIDENTIAL TREATMENT REQUESTED]
The School of Pharmacy, as owner of the "Prodrax patent" as described above,
wishes to assign the rights in this patent to Somanta. As discussed in our
meeting on Friday 16th September, assignment is made on the basis of the terms
outlined in the "Patent and know-how assignment and license option agreement"
dated 16th March 2004 between the School of Pharmacy and Somantis Limited. In
addition, Somanta agrees to the following:
o Assignment of the patent back to the School of Pharmacy should
the proposed merger and subsequent financing of Somanta fail
to occur. Somanta hereby agrees to re-assignment of the
Prodrax patent to the School of Pharmacy in the case that
Somanta fails to raise a minimum of $10 million by December
31, 2005.
o That the lead inventor, Xxxxxxxxx Xxxxxxxx Xxxxxxxxx, and/or
researchers at the School of Pharmacy retain rights to perform
non-commercial research using the invention described in the
patent and to publish the results thereof;
o That Somanta will use its best efforts to reach a research and
development agreement with the lead inventor to progress the
invention;
o Payment of a [CONFIDENTIAL TREATMENT REQUESTED] royalty on Net
Sales (as described below) of any product covered by the
Prodrax patent worldwide.
Definition of Net Sales
-----------------------
For product incorporating the invention covered by the Prodrax patent sold by
Somanta, its inheritors in title, or a Sub-license Net Sales shall mean the
amounts actually collected for sales of products to a Third Party trade
purchaser (the "Customer") by Somanta or its Affiliates, less the following
items to the extent they are paid or allowed and included in the invoice price:
(i) quantity, trade and/or cash discounts actually granted;
(ii) amounts repaid or credited and allowances including cash, credit or
free goods allowances, given by reason of charge-backs, retroactive price or
billing errors and rebates (including government-mandated rebates);
(iii) amounts refunded or credited for Products which were rejected or
damaged;
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CONFIDENTIAL TREATMENT REQUESTED
(iv) freight, shipment and insurance costs incurred in transporting Products
to Customers; and
(v) taxes, tariffs, customers duties and surcharges and other governmental
charges incurred in connection with the sale, exportation or importation of
Products.
Should a product be sold in a combination package containing therapeutically
active materials in addition to a product, "Net Sales", for the purpose of
determining payments due to the School of Pharmacy on a product within that
combination package, shall be calculated as follows:
Net Sales of combination package x A/(A+B)
Where:
"A" is the net selling price, during the period in question to which the
payments refers, of a product sold separately; and
"B" is the aggregate of the net selling prices, during the payment period in
question, of the other therapeutically active materials sold separately.
In the event that a product is sold in the form of a combination package
containing one or more therapeutically active materials in addition to a product
and one or more of those therapeutically active materials is not sold
separately, then the parties shall negotiate in good faith and agree on an
appropriate royalty adjustment to reflect the relative significance (based on
reasonable fair market value) of the Product compared to the other
pharmaceutically active material(s) in the combination package.
Please sign below by way of agreement to these terms of assignment, subject to
the approval of the Board of Directors of Somanta Incorporated, or its successor
and assigns.
The parties acknowledge and agree that the Research Collaboration Agreement
dated March 31, 2004 between the School of Pharmacy and Somanta Limited
(formerly Somantis Limited) has been previously terminated and is of no further
force or effect. In addition, the School of Pharmacy acknowledges and agrees
that the Patent and know-how assignment and license option agreement dated March
16, 2004 between the School of Pharmacy and Somanta Limited (the "Option
Agreement") has been assigned by Somanta Limited to Somanta Incorporated, a
Delaware corporation, in accordance with Section 9.3.2 of the Option Agreement.
Somanta Incorporated hereby undertakes to be bound by and perform the
obligations of Somanta Limited under the Option Agreement as supplemented by
this letter agreement.
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CONFIDENTIAL TREATMENT REQUESTED
Signature: illegible
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Date: 21/9/05
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Yours faithfully,
/s/ XXXX XXXXXXX
Xxxx Xxxxxxx
Business Development Manager, The School of Pharmacy
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