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EXHIBIT 10.21.1
CONFIDENTIAL PORTIONS HAVE BEEN OMITTED
BASED UPON A REQUEST FOR CONFIDENTIAL TREATMENT
PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934 AND
HAVE BEEN SEPARATELY FILED WITH THE COMMISSION
FIRST AMENDMENT TO THE LICENSE AND SUPPLY AGREEMENT
BETWEEN EPOCH AND XXXXXX-XXXXX HAVING AN EFFECTIVE DATE
OF JANUARY 5, 1999
This First Amendment to the License and Supply Agreement ("First Amendment")
dated as of the 30th day of June, 1999 ("Effective Date of First Amendment") is
between EPOCH PHARMACEUTICALS, INC., 00000 000xx Xxxxx XX, Xxxxx 000, Xxxxxxx,
XX ("Epoch") and THE XXXXXX-XXXXX CORPORATION, having its PE Biosystems Division
at 000 Xxxxxxx Xxxxxx Xxxxx, Xxxxxx Xxxx, XX 00000 ("Xxxxxx-Xxxxx").
WHEREAS, Epoch and Xxxxxx-Xxxxx have entered into a License and Supply Agreement
having an Effective Date of January 5, 1999 ("License and Supply Agreement").
WHEREAS, both Epoch and Xxxxxx-Xxxxx desire to amend the License and Supply
Agreement so as to provide for the transfer of certain know-how relating to the
prediction of the melting temperature of MGB Oligonucleotides from Epoch to
Xxxxxx-Xxxxx for the purpose of incorporating such know how into certain
Xxxxxx-Xxxxx software products. e.g., Perkin-Elmer's Primer Express software
product.
NOW THEREFORE, in consideration of the mutual covenants and promises contained
in this First Amendment, the Parties agree as follows:
1. Unless otherwise defined herein, capitalized terms will have the
meaning ascribed to them in the License and Supply Agreement.
2. DELETE existing Section 2.21 (Licensed Know-How) of the License and
Supply Agreement and REPLACE with the following amended Section 2.21:
2.21 "Licensed Know-How" means trade secrets, technical
information, experimental data, software and other knowledge
now existing and controlled by Epoch relating to (1) the
chemical synthesis and purification of MGB Oligonucleotide
using MGB Intermediate, and (2) algorithms and related
software for determining the melting temperature of MGB
Oligonucleotide, as described in Section 5.04 and Exhibit C,
to the extent that such technical information, experimental
data, software and other knowledge is not publicly available.
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3. ADD the following to the end of existing Section 3.04 (Restrictions) of
the License and Supply Agreement:
Licensed Products comprising Licensed Know-How in the form of
software embodying algorithms for determining the melting
temperature of MGB Oligonucleotide, as described in Section
5.04 and Exhibit C, will only be sold or marketed pursuant to
a limited-use non-exclusive license agreement consistent with
Perkin-Elmer's normal practice for the sale and marketing of
like software products.
4. ADD the following to the table of existing Section 4.02 (Royalties) of
the License and Supply Agreement:
software [*]
5. ADD the following to existing Section 4.03 (Payment for Know-How) of
the License and Supply Agreement:
Xxxxxx-Xxxxx will pay to Epoch, as additional consideration
for the transfer of and license under Licensed Know-How, [*]
per month for the period between June 15, 1999 and the first
New Product Release of a Licensed Product provided that Epoch
makes available at least source code embodying algorithms for
determining the melting temperature of MGB Oligonucleotide as
described in Subsection 3 of amended Exhibit C within ten (10)
days of the Effective Date of First Amendment; where as used
herein, the term "New Product Release" means that point in a
Xxxxxx-Xxxxx product development program at which a product is
released for unrestricted manufacture and sale to customers
under PE Biosystems ISO 9001 Product Development Procedures.
In the event that the period between June 15, 1999 and the
first New Product Release includes a fractional month,
payments due for that fractional month will be determined on a
pro rata basis. As yet additional consideration for the
transfer of and license under Licensed Know-How, Xxxxxx-Xxxxx
will give to Epoch an ABI PRISM(TM) Model 7700 Sequence
Detection System instrument (p/n 0000-00-000/208) [*]. The
instrument provided hereunder will include all installation
services and warranties typically provided to customers in
connection with the purchase of such instrument. However,
Xxxxxx-Xxxxx will not provide an optional service contract
covering the instrument. All reagents will be purchased by
Epoch using conventional retail distribution channels.
* CONFIDENTIAL PORTIONS OMITTED AND FILED SEPARATELY WITH COMMISSION.
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6. DELETE existing Section 5.04 (Transfer of Know-How) of the License and
Supply Agreement and REPLACE with the following amended Section 5.04:
5.04 Epoch will transfer Licensed Know-How to Xxxxxx-Xxxxx to the
extent necessary for Xxxxxx-Xxxxx to make full use of MGB
Intermediates and MGB Oligonucleotides. Such Licensed Know-How
will include, but not be limited to, that information
specified in Exhibit C. All Licensed Know-How is considered
Confidential Information and will only be used by Xxxxxx-Xxxxx
in connection with the exploitation of the license rights
granted in Article III. All Licensed Know-How will remain
owned by Epoch.
7. ADD the following to Exhibit C (Licensed Know-How) of the License and
Supply Agreement:
3. Algorithms, object code, source code and any other embodiments
of methods or processes useful for predicting the melting
temperature of MGB Oligonucleotides, whether patented,
copyrighted or not.
IN WITNESS WHEREOF, the Parties, through their authorized officers, have
executed this First Amendment as of the Effective Date of First Amendment.
EPOCH PHARMACEUTICALS, INC. THE XXXXXX-XXXXX CORPORATION,
THROUGH ITS PE BIOSYSTEMS DIVISION
By: /s/ Xxxxxxx X. Xxxxxxxx By: /s/ Xxxxxx Xxxxx
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Name: Xxxxxxx X. Xxxxxxxx Name: Xxxxxx Xxxxx
------------------------------- -------------------------------
Title: President Title: Vice President
------------------------------ The Xxxxxx-Xxxxx Corporation
Date: July 1, 1999 ------------------------------
------------------------------- Date: June 30, 1999
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