AMENDMENT NO. 1 TO PATENT LICENSE AGREEMENT
[***] Indicates
text has been omitted from this Exhibit pursuant to a confidential treatment
request and has been filed separately with the Securities and Exchange Commission.
Exhibit 10.8A
AMENDMENT NO. 1 TO
PATENT LICENSE AGREEMENT
PATENT LICENSE AGREEMENT
This Amendment No. 1 (the “Amendment”) to the parties’ January 9, 2003 Patent License Agreement is
entered into as of the date of the latter signature below by and between GYROS AB having its
principal office at Xxxxxxx Xxxxxxx Xxxx, XX-000 00 Xxxxxxx, Xxxxxx, a corporation organized and
existing under the laws of Sweden (hereinafter referred to as
“Licensor”), and FLUIDIGM Corporation
having its principal office at 0000 Xxxxxxxxx Xxxxx, Xxxxx Xxx Xxxxxxxxx, XX 00000, a corporation
organized and existing under the laws of the state of California, U.S.A (hereinafter referred to as
the “Licensee”).
RECITALS
A. The parties have entered into a January 9, 2003 Patent License Agreement (the
“Agreement”); and
B. The parties desire to amend the Agreement to include an additional Option Field of Use,
and to extend Licensee’s time period for exercising the remaining, unexercised Option Fields of
Use, on the terms and conditions set forth herein.
NOW, THEREFORE, the parties agree that the Agreement is amended as follows:
1. In order to add “protein analysis” as an additional Option Field of Use, Section 1.6 of the
Agreement is amended to read in its entirety as follows:
“1.6 ‘Option Field of Use’ means each of (i) [***] (ii) [***] and (iii)
[***]”
It is acknowledged that Licensee has previously exercised its option in accordance with Section 5.2
of the Agreement for the Option Field of Use “nucleic acid analysis,” and made the required payment
with respect thereto, and that therefore “nucleic acid analysis” is already a Licensed Field of
Use.
2. Section 5.1(b)
of the Agreement is amended by adding the following at the end: “, in
consideration of the rights granted to Licensee pursuant to Amendment No. 1 to this Agreement, on
or before February 9, 2005 Licensee shall pay to Licensee an additional, one time license fee of
[***] and”.
3. With
respect to the remaining two Option Fields of Use (i.e. cell assays, and protein
analysis), Section 5.2 of the Agreement is amended to read in its entirety as follows:
“5.2
At any time(s) until and including January 9, 2007 (Pacific
Standard Time), Licensee shall be
entitled, at its option, to add one or both of the remaining, unexercised Option Fields of Use to
the Licensed Field of Use under this Agreement, and upon each such exercise, each such Option Field
of Use shall become a Licensed Field of Use under this Agreement. Each such exercise of this option
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by Licensee shall be by written notice to Licensor, referencing this Agreement and specifying the
Option Field(s) of Use to be added. Within thirty (30) days after each such exercise, Licensee
shall pay an additional [***] license fee for
each added Option Field of Use. For the avoidance of doubt, until and including January 9, 2007
(Pacific Standard Time), Licensee may exercise this option for one or both of the remaining,
unexercised Option Fields of Use and on one or two occasions.”
4. All payments designated to be made in Swedish kronor shall be made by Licensee in Swedish
kronor by wire transfer to a Licensor account designated by Licensor, including all necessary
information, in writing to Licensee.
5. Except as expressly provided in this Amendment, the Agreement shall remain unmodified and in
full force and effect. In the event of any inconsistency or conflict, the provisions of this
Amendment shall control and govern over the provisions of the Agreement. The Agreement, as amended
herein, shall constitute a single, integrated contract.
Gyros AB | Fluidigm Corporation | |||||||||
By:
|
/s/ Rolf Ehmstrom | By: | /s/ Xxxxx Xxxxxxxxxxx | |||||||
Print Name: Rolf Ehmstrom | Print Name: Xxxxx Xxxxxxxxxxx | |||||||||
Title: CEO (acting) | Title: CEO | |||||||||
Date: 2005-01-09 | Date: 01/04/05 |
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