AMENDING AGREEMENT
Exhibit 10.18
This Agreement is signed October 12, 2005 but is deemed to confirm the parties intentions effective as of the 23rd day of November, 2002 (the “Effective Date”).
Between:
THE UNIVERSITY OF BRITISH COLUMBIA, a corporation continued under the University Act of British Columbia and having its administrative offices at 0000 Xxxxxxxx Xxxx, Xxxxxxxxx, Xxxxxxx Xxxxxxxx, X0X 0X0
(the “University”)
- and -
ONCOGENEX TECHNOLOGIES INC. a corporation incorporated under the laws of Canada, and having offices at Xxxxx 000, 0000 Xxxx Xxxxxxxx, Xxxxxxxxx, Xxxxxxx Xxxxxxxx, X0X 0X0
(the “Licensee”)
WHEREAS:
A. The University and the Licensee entered into a license agreement with a Commencement Date of November 1, 2001 (“BP5 License Agreement”) pursuant to which the University granted the Licensee an exclusive worldwide license to the insulin growth factor binding protein – 5 (“BP5”); and
B. The University and the Licensee entered into a license agreement with a Commencement Date of September 1, 2002 (“Bi-Specific License Agreement”) pursuant to which the University granted the Licensee an exclusive worldwide license to three separate technologies: (a) insulin growth factor binding protein – 2; (b) insulin growth factor binding protein – 2 and insulin growth factor binding protein – 5; and (c) Relaxin;
C. The Parties agreed pursuant to Article 11.4 of the Bi-Specific License Agreement that [***]. Further, the Parties agreed in Section 11.4 of the Bi-Specific License Agreement to amend the BP5 License such that this intent is consistent between the two Agreements.
D. Pursuant to Section 11.4 of the Bi-Specific License Agreement, the University and the Licensee now wish to amend the BP5 License Agreement in order that the intent of Section 11.4 of the Bi-Specific License Agreement be carried out.
Now therefore, in consideration of the mutual promises and covenants contained in this Amending Agreement, the parties hereto covenant and agree with each other as follows:
*Certain information in this exhibit has been omitted as confidential, as indicated by [***]. This information has been filed separately with the Commission.
1. The first paragraph of Article 11.4 of the BP-5 License Agreement (but not subparagraphs 11.4(a), (b), (c) or (d)) is amended by deleting such first paragraph in its entirety and replacing it with the following:
“The Parties acknowledge that in addition to the insulin growth factor binding protein – 5 (“BP5”) licensed to the Licensee under this Agreement, the Licensee and the University have entered into a further license agreement for three separate technologies (the “Bi-Specific License Agreement”): (a) insulin growth factor binding protein – 2 (“BP2”); (b) insulin growth factor binding protein – 2 and insulin growth factor binding protein – 5 (“Bi-Specific”); and (c) Relaxin (“Relaxin”). It is intended that one of BP5, BP2 or Bi-Specific shall become a lead Product of the Licensee, and that the other two technologies will be used to support the intellectual property position of the Licensee in respect of such Product. [***]. Therefore, the Licensee shall use reasonable commercial efforts to develop and exploit the Technology and any Improvements and to promote, market and sell the Products and utilize the Technology and any Improvements and to meet or cause to be met the market demand for the Products and the utilization of the Technology and any Improvements.
[***]
Without limiting the generality of the foregoing, the Licensee shall:”.
2. Schedule “A” of the BP5 License Agreement is amended by deleting it in its entirety and replacing it with the new Schedule “A” attached hereto.
3. Except as modified herein, the University and the Licensee confirm that the BP5 License Agreement remains unmodified and in full force and effect.
IN WITNESS WHEREOF the parties have executed this Amendment on June , 2005, with the intent of confirming the parties intentions as of the Effective Date.
SIGNED FOR AND ON BEHALF OF
THE UNIVERSITY OF BRITISH COLUMBIA
by its duly authorized officers:
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X.X. Xxxxx, PhD, MBA |
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Associate Director |
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/s/ X.X. Xxxxx |
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University-Industry Liaison Office |
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Authorized Signatory |
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Authorized Signatory |
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SIGNED FOR AND ON BEHALF OF |
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By its duly authorized officers: |
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/s/ Xxxxx Xxxxxxx |
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Authorized Signatory |
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SCHEDULE “A”
DESCRIPTION OF “TECHNOLOGY”
The following represents the intellectual property and know-how that is to be licensed to the Licensee for development of novel treatments of cancer as contemplated under this License Agreement:
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2. And all applications that may be filed based on the foregoing, including, without limitation, all regular, divisional or continuation, in whole or in part, applications based on the foregoing, and all applications corresponding to the foregoing filed in countries other than the United States; and
3. Any and all issued and unexpired re-issues, re-examinations, renewals or extensions that may be based on any of the patents described above.
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