EXHIBIT 10.1
AMENDMENT TO
PATENT LICENSE AGREEMENT
This Amendment to the Patent License Agreement (this "Amendment") dated the 17th
day of April, 2003, is by and between The Children's Hospital of Philadelphia, a
Pennsylvania nonprofit corporation (the "Licensor"), and Genaera Corporation
(formerly Magainin Sciences Inc.), a Delaware corporation (the "Licensee").
WHEREAS, the Licensor and Licensee entered into the Patent License Agreement
dated as of March 1, 1988 with a Licensor signature date of October 18, 1991
(the "Agreement"); and
WHEREAS, the Licensor has patents and patent applications listed in Appendix A
to this Amendment which represent in the aggregate the sole Licensable Invention
and have been licensed to the Licensee as Licensed Patents; and
WHEREAS, the Licensee has patents and patent applications pertaining
specifically to Licensed Product ("Licensee Patents"); and
WHEREAS, Licensor and Licensee wish to amend and restate certain provisions of
the Agreement as set forth specifically in this Amendment.
NOW THEREFORE, the parties, in consideration of the mutual obligations set forth
herein and in the Agreement, the sufficiency of which is hereby acknowledged,
intending to be legally bound, agree as follows:
1. Capitalized terms used herein and not otherwise defined shall have the
meanings given to them in the Agreement.
2. Section 1.6 is hereby amended and restated in its entirety as follows:
"Licensed Patents" shall mean all patent applications and patents,
including all divisionals, continuations, continuations-in-part,
reissues, extensions and foreign counterparts thereof, directed to a
Licensable Invention, all of which are identified in Appendix A, and a
written schedule that shall be kept current and signed by both
parties.
3. Section 1.7 is hereby amended and restated in its entirety as follows:
"Licensed Product" shall mean any product, composition, chemical,
peptide, composition of matter, machine, etc., that is covered by a
Valid Claim of a Licensed Patent. From and after the expiration of
such Licensed Patent, such Licensed Product shall continue for
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purposes of this Agreement to be considered a Licensed Product if its
is covered by a Valid Claim of a Licensee Patent. Licensed Product
shall further mean any product, chemical, composition of matter,
peptide, machine, etc. that normal and customary use of which, or the
use of which pursuant to the associated labeling, utilizes a Licensed
Process covered by a Valid Claim of a Licensed Patent. Licensed
Product shall further include any product that is manufactured
according to, or with the benefit of, any Licensed Process covered by
a Valid Claim of a Licensed Patent.
4. A new Section 1.10 is hereby added to the Agreement as follows:
"Licensee Patents" shall mean all patent applications and patents,
including all divisionals, continuations, continuations-in-part,
reissues, extensions and foreign counterparts thereof, under the
control of the Licensee that pertain specifically and solely to
making, having made, using or selling a Licensed Product in the
Licensed Territory. Licensee Patents shall exclude Licensed Patents.
5. Sections 1.10, 1.11 and 1.12 are hereby renumbered as Sections 1.11, 1.12
and 1.13, respectively.
6. Section 3.1 of the Agreement is hereby amended and restated in its entirety
as follows:
The royalty rate payable by Licensee to Licensor under this Agreement
shall be equal to one percent (1%) of Net Sales in the Licensed
Territory prior to March 18, 2010. The royalty rate payable by
Licensee to Licensor under this Agreement shall be equal to one-half
percent (0.5%) of Net Sales in the Licensed Territory that occur from
and after March 18, 2010 in the Licensed Territory. Only one royalty
shall be due and payable to Licensor for any Licensed Product for
which royalties are to be paid under this Agreement.
7. Sections 3.2, 3.3 and 3.4 are of the Agreement are hereby deleted in their
entirety.
8. Sections 3.5, 3.6, 3.7, 3.8, 3.9 and 3.10 are hereby renumbered as Sections
3.2, 3.3, 3.4, 3.5, 3.6 and 3.7, respectively.
9. Newly renumbered Section 3.5 of the Agreement is hereby amended and
restated in its entirety as follows:
Reports. Licensee shall deliver to Licensor, simultaneously with
payment pursuant to Section 3.2.1, a written statement
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signed by a responsible officer of Licensee in such detail as Licensor
may reasonably require, showing the Net Sales for the License Quarter
and calculation of the payment due. If no payments are due for the
License Quarter, the report shall so state.
10. Newly renumbered Section 3.6.2 of the Agreement is hereby amended and
restated in its entirety as follows:
Licensee shall permit, upon reasonable advance written notice,
Licensor, or any person designated by Licensor and reasonably
acceptable to Licensee, to have full access to such records for the
purpose of verifying the amount of payments due Licensor. Audits shall
be requested in writing, and shall occur no more than once per License
Year. Licensor shall be responsible for its own costs and expenses in
connection with any audit, except that Licensee shall reimburse
Licensor after written request for all reasonable documented costs and
expenses of any audit that demonstrates conclusively that Licensee's
actual payments for any particular License Quarter were less than the
amount due and payable according to Section 3.1 by an amount that
equals or exceeds ten percent (10%) of such actual, due and payable
amount.
11. Newly renumbered Section 3.7 of the Agreement is hereby amended and
restated in its entirety as follows:
Interest. Any required payments that are due and payable but not made
on or before the date for payment specified in Section 3.2 shall bear
interest, compounded annually, from the date such payment is due until
the date it is received, at the prime or reference rate announced by
Provident National Bank (or another mutually agreeable federally
chartered bank) applicable to short-term (i.e., ninety (90) day)
borrowings.
12. Section 4.1.1 of the Agreement is hereby amended and restated in its
entirety as follows:
Licensee shall use commercially reasonable efforts and commercially
reasonable diligence under the circumstances to sublicense, or
research and subsequently develop for commercial sale, each Licensed
Product. If Licensee does not appear to have used such efforts and
diligence under the circumstances to sublicense, or research and
subsequently develop for commercial sale, each Licensed Product, then
Section 4.1.2 of this Agreement shall apply.
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13. Section 4.1.2 of the Agreement is hereby amended and restated in its
entirety as follows:
In the event that Licensor reasonably believes that Licensee is not
using commercially reasonable efforts and commercially reasonable
diligence under the circumstances to sublicense, or research and
subsequently develop for commercial sale each Licensed Product, then
Licensor may provide written notice to Licensee specifying Licensor's
basis for such belief and what additional efforts Licensor believes
should be made by Licensee. Licensee shall respond within thirty (30)
days, providing assurances and/or detailed explanation of the status
of the research efforts. For a ninety (90) day period following the
exchange of such written notices, Licensor and Licensee shall enter
into good faith negotiations in order to reach mutual agreement as to
what efforts by Licensee shall satisfy the requirements of Section
4.1.1, and, if such mutual agreement is not reached within such ninety
(90) day period, then either party may submit such matter to
arbitration pursuant to Section 19. Licensor's obligation to arbitrate
as to any particular Licensed Product pursuant to this Section 4.1.2
shall be limited to a single arbitration.
14. Section 4.3 of the Agreement is hereby amended and restated in its entirety
as follows:
Proprietary Rights Of Others. The parties acknowledge that Licensor
has received grants from the Ben Franklin Technology Center directed
to the materials covered by the Sponsored Research Agreement and may
have received other such grants in the past from third parties
("Grantors"). Licensee acknowledges that Licensor and any party
licensing relevant technology from Licensor, such as Licensee, are
subject to certain duties and obligations to the Grantors. The parties
agree to abide by the terms of the Grantors and to expend their
respective commercially reasonable efforts to comply with any such
duties and obligations, but Licensor agrees to be solely responsible
for the payment of any amounts due or payable to the Grantors,
including, without limitation, all royalties and reimbursements due to
the Grantors.
15. Section 9.1 of the Agreement is hereby amended and restated in its entirety
as follows:
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Term. Unless this Agreement is terminated earlier pursuant to Section
9.2, this Agreement shall remain in full force and effect from the
Effective Date until the expiration of the last to expire Licensed
Patents and Licensee Patents.
16. Except as set forth herein, the Agreement shall remain in full force and
effect.
17. This Amendment shall be governed by, and construed in accordance with, the
laws of the Commonwealth of Pennsylvania.
18. This Amendment may be executed in counterparts, each of which need not
contain the signature of more than one party but both of which together
shall constitute one and the same agreement.
[Signature Page Follows]
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IN WITNESS WHEREOF, the parties hereto have caused this Amendment to the Patent
License Agreement to be executed by their duly authorized officers as of the day
above written.
THE CHILDRENS HOSPITAL OF PHILADELPHIA
BY: /s/ Xxxxxx Argon
--------------------------------
Name: Xxxxxx Argon
Title: VP, Research Administration
GENAERA CORPORATION
BY: /s/ Xxx Xxxxxxxx Xxxxxx, M.D.
--------------------------------
Name: Xxx Xxxxxxxx Xxxxxx, M.D.
Title: President and CEO
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Appendix A
Patent No.: 5,192,756
Issue Date: 3/9/93
Serial No.: 853,634
Filing Date: 3/18/92
Title: AMINOSTEROL ANTIBIOTIC
Inventors: Xxxxxxx Xxxxxxx, Xxxxx Xxxxx, Xxxxxxx Xxxxxx
Status: In force until 3/9/10 upon payment of maintenance fees
Foreign Cases: Country Status Serial No./Patent No.
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EPO Issued EP 0 637 243
Australia Issued 675782
Canada Pending 2,130,803
Japan Granted 516544/1993
Synopsis: This patent describes the composition of matter of squalamine
and its use as an antimicrobial.
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