EXHIBIT 10.1
AMENDMENT NO. 1 TO THE
PATENT AND TECHNOLOGY LICENSE AGREEMENT
This AMENDMENT NO. 1, effective this 24th day of September, 2008 ("AMENDMENT NO.
1 EFFECTIVE DATE"), to the Exclusive Patent and Technology License Agreement
between the PARTIES dated February 17, 2005 ("ORIGINAL LICENSE"), is made by and
between the BOARD OF REGENTS ("BOARD") of THE UNIVERSITY OF TEXAS SYSTEM
("SYSTEM"), an agency of the State of Texas, whose address is 000 Xxxx 0xx
Xxxxxx, Xxxxxx, Xxxxx 00000, on behalf of THE UNIVERSITY OF TEXAS M. D. XXXXXXXX
CANCER CENTER ("UTMDACC"), a component institution of SYSTEM, and XPENTION, INC.
("XPENSION") a Colorado corporation, having a principal place of business
located at 00000 Xxxxxxxxx Xxxxx, Xxxxxxx, Xxxxxxxx 00000. BOARD and LICENSEE
may be referred to hereafter collectively as the "PARTIES."
RECITALS
BOARD and LICENSEE desire to amend the ORIGINAL LICENSE.
NOW, THEREFORE, in consideration of the mutual covenants contained herein, the
sufficiency of which is hereby acknowledged, the PARTIES hereby agree to the
following:
AMENDED TERMS
1. In order to correct a typographic error in LICENSEE's name, paragraph one
of the ORIGINAL LICENSE, line 6, is deleted in its entirety and replaced
with the following:
"...SYSTEM, and Xpention, Inc, ("XPENTION"), a Colorado
corporation having a principal place of business located..."
2. The period at the end of Section 4.1(e) is replaced with "; and". In addi-
tion, new Section 4.1(f) is added to the ORIGINAL LICENSE as follows:
"A nonrefundable AMENDMENT NO. 1 documentation fee in the amount
of US$25,000.00, due and payable within thirty (30) calendar days
after AMENDMENT NO. 1 has been fully executed by all PARTIES and
LICENSEE has received an invoice for the amount from UTMDACC; and"
3. New Section 4.1(g) is added to the ORIGINAL LICENSE as follows:
"An Annual Maintenance Fee due and payable (without invoice)
within thirty (30) calendar days of the first anniversary of
AMENDMENT NO. 1 EFFECTIVE DATE, and within thirty (30) calendar
days of every anniversary of the EFFECTIVE DATE occurring
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thereafter up through and including the anniversary following the
first SALE as follows:
(i) First anniversary of the AMENDMENT NO 1. EFFECTIVE DATE:
US$25,000.00 due and payable within thirty (30) calendar
days of the first anniversary of the EFFECTIVE DATE; and
(ii) Second and each subsequent anniversary of the AMENDMENT
NO 1. EFFECTIVE DATE: The amount of the Annual Fee due will
increase twenty-five thousand dollars (US$25,000.00) per
year from the previous year's payment (e.g. US$50,000.00
shall be due and payable within thirty (30) calendar days of
the second anniversary of the AMENDMENT NO 1. EFFECTIVE
DATE: US$75,000.00 shall be due and payable within thirty
(30) calendar days of the third anniversary of the AMENDMENT
NO. 1 EFFECTIVE DATE, and so on).
In the event that there is less than a twelve (12) month period
between the anniversary of AMENDMENT NO. 1 EFFECTIVE DATE which
immediately precedes the first SALE and the first SALE, then
LICENSEE shall pay UTMDACCC the following pro rata Annual
Maintenance Fee within thirty (30) calendar days of the
anniversary of the AMENDMENT NO. 1 EFFECTIVE DATE which follows
the first SALE: (1) the Annual Maintenance Fee due for that year
multiplied by the fraction, A/C, where A is the number of months
between the anniversary of the AMENDMENT NO. 1 EFFECTIVE DATE
preceding the first SALE, and the first SALE, and C is twelve
(12)."
4. Section 13.3 of the ORIGINAL LICENSE is deleted in its entirety and
replaced with the following:
"Any time after two (2) years from the AMENDMENT NO. 1 EFFECTIVE
DATE, BOARD or UTMDACC have the right to terminate the AGREEMENT
in any national political jurisdiction within the LICENSED
TERRITORY if LICENSEE fails to either: (1) make a SALE of a
LICENSED PRODUCT for veterinary diagnostic use; or (2) enter into
a STRATEGIC ALLIANCE for veterinary diagnostic use."
5. Section 13.4 of the ORIGINAL LICENSE is deleted in its entirety and
replaced with the following:
"Any time after three (3) years from the AMENDMENT NO. 1 EFFECTIVE
DATE, BOARD or UTMDACC have the right to terminate the AGREEMENT
in any national political jurisdiction within the LICENSED
TERRITORY if LICENSEE fails to either: (1) obtain regulatory
approval of
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a Biological License Application for human diagnostic use in the
U.S. or an equivalent foreign filing in any other national
political jurisdiction for a LICENSED PRODUCT; (2) make a SALE of
a LICENSED PRODUCT for human diagnostic use; or (3) enter into a
STRATEGIC ALLIANCE for human diagnostic use."
6. The PARTIES acknowledge and agree that, except as set forth in this AMEND-
MENT NO. 1 the terms and conditions of the ORIGINAL LICENSE shall remain in
full force and effect.
IN WITNESS WHEREOF, the PARTIES hereto have caused their duly authorized
representatives to execute this AMENDMENT NO. 1.
BOARD OF REGENTS OF THE XPENTION
UNIVERSITY OF TEXAS SYSTEM
By _________________________________ By _________________________
Xxxx Xxxxxxxxxx, M.D. Name: Xxxxx X. Xxxxxxxx
President Title: President
The University of Texas
M.D. Xxxxxxxx Cancer Center
Date: ________________________ Date: __________________________
THE UNIVERSITY OF TEXAS
M. D. XXXXXXXX CANCER CENTER
By _________________________________
Xxxx Xxxxx
Executive Vice President Approved as to form
The University of Texas
M. D. Xxxxxxxx Cancer Center _________
NW/LS
Date: ________________________
Approved as to Content: Reviewed and Approved by
UTMDACC Legal Services for
By _________________________________ UTMDACC Signature:
Xxxxxxxxxxx X. Xxxxxxx, M.D.
Vice President, Technology Based Ventures ____________________________
Office of Technology Commercialization
M. D. Xxxxxxxx Cancer Center
Date: ________________________
By _________________________________
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