Exhibit 10.21
AMENDMENT NO. 2
TO THE LICENSE AGREEMENT
BETWEEN
THE TEXAS A&M UNIVERSITY SYSTEM
AND
INHIBITEX, INC.
This amendment ("Amendment No. 2") is made and entered into by and
between The Texas A&M University System (hereinafter "SYSTEM") with principal
offices in College Station, Texas, and Inhibitex, Inc. (hereinafter
"INHIBITEX"), a Delaware Corporation, having a principal place of business in
Alpharetta, Georgia, parties to the License Agreement dated February 4, 2000,
and Amendment No. 1.
WITNESSETH:
WHEREAS, the parties have entered into a License Agreement regarding
certain intellectual property related to Extracellular Matrix Binding Proteins;
and
WHEREAS, the original License Agreement between the parties provides
that INHIBITEX return rights in individual technologies that INHIBITEX fails to
devote reasonable business efforts to the development and commercialization of
certain technology or products claimed in one or more of the patents comprising
PATENT RIGHTS; and
WHEREAS, SYSTEM understands the principles of patent portfolio
management; and
WHEREAS, INHIBITEX desires to modify the License Agreement in regard
to its return of rights in individual technologies; and
WHEREAS, INHIBITEX also desires to modify the License Agreement in
regards to specific sublicensee obligations; and
WHEREAS, SYSTEM agrees to make such modifications.
NOW THEREFORE, the parties agree that the License Agreement of February
4, 2000 is hereby amended as follows:
1. DELETE paragraph 3.01 in its entirety.
2. ADD a new paragraph 3.01 as follows:
3.01 Commercial Development and Sales. In consideration of the
license grant made to INHIBITEX by SYSTEM herein, INHIBITEX
agrees to use commercially reasonable efforts to accomplish
commercial development of LICENSED PRODUCTS. INHIBITEX or its
sublicensee(s) shall record first NET SALES no later than
December 31, 2006, unless failure to reach this development
milestone is due to unanticipated or unexpected commercial
circumstances, such as but not limited to unforeseen delays in
U.S. Government regulatory approval; or unexpected technical,
manufacturing scale up, clinical trial or regulatory issues.
Once product sales begin, INHIBITEX shall record NET SALES
every consecutive Calendar Year.
3. ADD new sentences to the end of paragraph 4.01 as follows:
4.01 For example only and by way of clarification, the parties
agree that fees attributable to PATENT RIGHTS shall not
include reimbursements by a sublicensee to INHIBITEX of its
patent expenses or development expenses and shall not include
payments made to INHIBITEX by a sublicensee for achievement of
regulatory milestones with the FDA or similar foreign
governmental agencies. Payments made to INHIBITEX for
achievement o(pound) progress in patent prosecution, such as
issuance of a patent application shall be fees attributable to
PATENT RIGHTS.
4. ADD a new sentence to the end of paragraph 7.06 as follows:
Diligence respecting one or more patent applications or patents within
the PATENT RIGHTS would constitute diligence as to the PATENT RIGHTS as
a whole.
EXCEPT as provided herein, all terms and conditions of the License
Agreement and Amendment No. 1 remain unchanged and in full force and effect.
IN WITNESS WHEREOF, the parties have caused this Amendment No. 2 to
become effective on the date executed below by the last signatory to this
Amendment.
INHIBITEX, INC. THE TEXAS A&M UNIVERSITY SYSTEM
By: /s/ Xxxxxxx X. Xxxxxxxx By: /s/ X.X. Xxxx
--------------------------- -----------------------------
Xxxxxxx X. Xxxxxxxx Xxx X. Xxxx
President & CEO Vice Chancellor for
Business Services
Date: 4/16/02 Date: 4/29/02
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