Amendment #2 To License Agreement 2003-03-0433
***Section
4 of this Amendment has been omitted pursuant to a request for confidential
treatment and has been filed separately with the U.S. Securities and Exchange
Commission.
Amendment
#2
To
License
Agreement 0000-00-0000
This
amendment #2 ("Amendment #2") is made by and between Ocusense, Inc., a Delaware
corporation, having an address at 0000 Xxxxxx Xxxxxx, #0 Xxx Xxxxxxx, XX
00000
("LICENSEE") and The Regents of The University of California, a California
corporation having its statewide administrative offices at 0000 Xxxxxxxx
Xxxxxx, Xxxxxxx, Xxxxxxxxxx 00000-0000 ("UNIVERSITY"), represented by its
San
Diego campus having an address at University of California, San Diego,
Technology Transfer & Intellectual Property Services, Mail-code 0910, 0000
Xxxxxx Xxxxx, Xx Xxxxx, Xxxxxxxxxx 00000-0000 ("UCSD").
This
Amendment #2 is effective on the date of the last signature ("Effective
Date").
RECITALS
WHEREAS,
LICENSEE
and UNIVERSITY previously entered into License Agreement #0000-00-0000
("License") as of March 12, 2003 for the commercial development of UCSD
invention disclosure SD2002- 180 titled, "Volume Independent Tear Film
Osmometer" ("Invention"), and have previously entered into Amendment No.1
to the
License Agreement effective June 9, 2003;
WHEREAS,
LICENSEE
attests that as of the Effective Date no sublicenses to License have been
granted;
WHEREAS,
LICENSEE
attests that the first Licensed Product under License which LICENSEE brings
to
market will require Food and Drug Administration (FDA) approval;
WHEREAS,
LICENSEE
has made successful progress to date in developing Invention for commercial
use;
WHEREAS,
in
its
efforts to develop market opportunities for the Invention, LICENSEE has
requested certain revisions and/or clarifications to the License so as to
facilitate LICENSEE's establishment of meaningful distribution channels and
strategic partnerships, furthering the likelihood of realizing broad commercial
markets for Invention;
WHEREAS,
UNIVERSITY
is desirous that LICENSEE achieve the broadest possible commercial success
with
Invention and therefore UNIVERSITY is amenable to clarifying the terms of
LICENSEE's agreement via the following amendments to License.
Therefore,
it is hereby agreed that:
1.
Paragraph 1.2(a) is amended to read, "use and products for the diagnosis
of Dry
Eye Syndrome"
2.
Paragraph 1.9 is amended by addition of the following sentence:
"Contract
manufacturers, contract research organizations, contract sales organizations
and
distributors selling on LICENSEE's behalf shall not be considered Sublicensees
for purposes of this Agreement and their sales shall be treated as LICENSEE's
sales. Distributors selling Licensed Products purchased from LICENSEE (or
its
Affiliate) that have exclusive distribution rights for a given territory
shall
be "Sublicensees" for purposes of determining "sublicense fees" to be shared
pursuant to Section 3.1(c); but royalties with respect to such distributors
shall be paid pursuant to Section 3.1 (b) based on the sales to such
distributors by LICENSEE (or its Affiliate), and not based on sales by such
distributors to subsequent purchasers."
3.
Change
Paragraph 2.2(b) to read, "Not used."
***Section
4 in its entirety, which consists of two pages, has been omitted pursuant
to a
request for confidential treatment and has been filed separately with the
U.S.
Securities and Exchange Commission.
5.
Change
Paragraph 3.3(a)(1) under Due Date from "July 1, 2005" to "September 1,
2006".
6.
Change
Paragraph 3.3(a)(2) under Due Date from "December 31, 2005" to "March 31,
2007".
7.
Change
Paragraph 3.3(a)(3) under Due Date from "December 31, 2007" to "September
1,
2008".
8.
Add
Paragraph 4.3(d) to read, "Refunds
and Credits. In
the
event that LICENSEE is obligated to, and in fact does, refund or return all
or
part of any sublicense royalties, due to return of products and/or retro-active
rebates on products sold, which LICENSEE has paid a share to UNIVERSITY pursuant
to Paragraph 3.1(d), then LICENSEE shall request a credit against future
royalty
payments to the UNIVERSITY hereunder in the amount of the pro rata portion
of
such refunded or returned amounts previously shared with the UNIVERSITY.
Such
request shall not be unreasonably denied by UNIVERSITY."
9.
Paragraph 7.3 is revised by addition of the following new subparagraph
7.3(g):
"
(g)
Paragraph 2.2(d)(2) and Paragraph 2.2(d)(3)."
IN
WITNESS WHEREOF, both
UNIVERSITY and LICENSEE have executed this Agreement, in duplicate originals,
by
their respective and duly authorized officers on the day and year
written.
OCUSENSE
INC. THE REGENTS OF THE
UNIVERSITY
OF CALIFORNIA:
BY:
/s/
Xxxx
Xxxxxx BY: /s/ Xxxx X. Xxxx
__________________
____________________
(Signature)
(Signature)
Name:
Xxxx
Xxxxxx Name: Xxxx X. Xxxx
Title:
CEO Title:
Assistant Vice Chancellor
Technology
Transfer & Intellectual
Property
Services
Date
9/5/05
Date
9/2/2005
1
