Exhibit 10.52(a)
AMENDMENT TO LICENSE AGREEMENT
(Gene Sequencing)
AMENDMENT TO LICENSE AGREEMENT (Gene Sequencing), dated as of
January 31, 1997 (this "Agreement"), among THE XXXXX XXXXXXX UNIVERSITY, a
Maryland corporation ("JHU"), and PHARMAGENICS, INC., a Delaware corporation
("PGI").
WITNESSETH
WHEREAS, JHU and PGI are parties to that certain License Agreement
(Gene Sequencing), dated as of September 1, 1995 (the "License Agreement")
(unless otherwise defined herein, terms defined in the License Agreement are
used herein as therein defined);
WHEREAS, Section 4.6 of the License Agreement provides, among other
things, that in the event PGI merges with an entity whose shares are publicly
traded on the New York Stock Exchange and/or the entity has a fair market
value of at least one billion dollars, PGI is required to pay to JHU the sum
of five million dollars (the "Payment");
WHEREAS, PGI has informed JHU that PGI is currently considering, and
expects to complete, a merger (the "Merger") with Genzyme Corporation
("Genzyme"), a Massachusetts corporation, the consummation of which might be
deemed to require the Payment pursuant to the terms of Section 4.6 of the
License Agreement; and
WHEREAS, JHU and PGI desire to amend the License Agreement, in
consideration of the issuance to JHU of shares of PGI preferred stock to
provide that the Payment shall not be required to be made with respect to the
Merger.
NOW, THEREFORE, in consideration of the foregoing and for other
consideration, the receipt and sufficiency of which is hereby acknowledged,
the parties hereto, intending to be legally bound, hereby agree as follows:
1. Amendments.
(a) Section 4.6 of the License Agreement is hereby deleted in
its entirety and replaced with the following:
"4.6 (a) In the event PGI is acquired by or merges with an
entity whose shares are publicly traded on the New York Stock
Exchange and/or the entity has a fair market value of at least
one billion dollars, then PGI shall pay to UNIVERSITY five
million dollars as soon as practical after the acquisition or
merger.
(b) Notwithstanding anything to the contrary herein, any
payments required under this Section 4.6 shall only be payable to
UNIVERSITY once regardless of the number of license agreements in
effect between the parties hereto which contain this provision.
(c) Notwithstanding anything to the contrary herein, no
payments shall be required under this Section 4.6 in respect of
the merger of PGI and Genzyme Corporation.
(d) From and after the completion of the merger of PGI and
Genzyme Corporation, the payment required under this Section 4.6
shall only be required to be made in the event that:
(i) the GMO Division assigns or transfers the
exclusive right to use the Serial Analysis of Gene Expression
("SAGE") technology licensed from JHU for third parties to either
(a) the General Division or any other division, subsidiary or
business unit of Genzyme or (b) an entity described in paragraph
(a); or
(ii) Genzyme and/or the GMO Division sells all or
substantially all of the assets of the GMO Division to an entity
whose shares are publicly traded on the New York Stock Exchange
and/or has a fair market value of at least one billion dollars."
(iii) any division, subsidiary or business unit of
Genzyme other than the GMO Division makes, uses and/or sells
LICENSED PRODUCTS and/or LICENSED SERVICES under the PATENT
RIGHTS and/or COMPUTER SOFTWARE without payment to UNIVERSITY
under Paragraphs 4.1, 4.2 or 4.4 hereof.
(e) The amount of license fees and running royalties paid
by the GMO Division to UNIVERSITY pursuant to Sections 4.1, 4.2
and 4.4 hereof to UNIVERSITY pursuant to Section 4.9 shall be
credited against any payment required to be made under this
Section 4.6.
(b) Section 4.9 of the License Agreement is hereby amended by
adding thereto the following provision:
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"With respect to the calculation of NET SERVICE REVENUE or NET
SALES with respect to any transaction between the GMO Division
and any other division, subsidiary or business unit of Genzyme
Corporation ("Genzyme"), such amounts will be based on the actual
cost to Genzyme of such transaction; provided, however, that all
such costs shall be determined by Genzyme on a consistent basis
with the calculation of similar costs between other divisions,
subsidiaries or business units of Genzyme. In addition, NET
SERVICE REVENUE and NET SALES shall include all sales of LICENSED
PRODUCTS and all LICENSED SERVICES performed by the GMO Division
or by Genzyme."
2. Issuance of PGI Stock. In consideration of entering into this
Agreement, PGI shall, immediately prior to the consummation of the Merger,
issue to JHU 43,200 shares of PGI Series B Convertible Preferred Stock (the
"Stock"). The certificates evidencing the Stock shall, prior to the
completion of the Merger, be held by PGI. As a result of the Merger, the
Stock will be converted into the right to receive approximately 40,000 shares
of "GMO Stock", as defined, and subject to adjustment as described, in the
Merger Agreement.
3. Sponsored Research Agreements. Following completion of the
Merger, and as a condition to this Agreement, the GMO Division shall enter
into a sponsored research agreement with the research lab operated by Xx.
Xxxxxxx Xxxxxxx at the UNIVERSITY and a 2nd Amendment to the License
Agreement substantially in the form of the draft agreements previously
furnished to PGI (drafts dated 1/21/97).
4. Representations and Warranties of JHU with Respect to PGI
Stock. JHU represents and warrants to, and agrees with, PGI that the Stock
is being acquired for JHU's own account, for investment purposes only, not
for the account of any other person, and not with a view to resale to others.
JHU will not sell, hypothecate or otherwise transfer any of the Stock
unless: (a) there is an effective registration statement under the Securities
Act of 1933, as amended (the "Act"), and applicable state securities laws
covering any such transaction involving such securities; or (b) in the
opinion of counsel, concurred in by counsel to PGI, an exemption from the
registration requirements of the Act and such state laws is available.
5. Termination of Waiver Agreement. If the Merger is not
consummated, all of the changes to the License Agreement set forth in this
Agreement shall terminate and become null and void and novated and the stock
of PGI issued pursuant to Section 2 of
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this Agreement shall be cancelled and returned to PGI and the License
Agreement, as originally executed, shall be reinstated and continue in full
force and effect as though this Agreement had never been executed.
6. Effect. Except as expressly provided herein, the License
Agreement shall continue to be, and shall remain, unaltered and in full force
and effect in accordance with its terms.
7. Miscellaneous.
(a) Governing law. This Agreement shall be governed by and
construed in accordance with the laws of the State of Maryland.
(b) Successor and Assigns. The terms and provisions of this
Agreement shall be binding upon and shall inure to the benefit of JHU and PGI
and their respective successors and assigns.
(c) Counterparts. This Agreement may be executed in one or
more counterparts, each of which shall be deemed to be an original, and all
of which shall constitute one and the same instrument.
(d) Headings. The headings of any paragraph of this Agreement
are for convenience only and shall not be used to interpret any provision
hereof.
(e) Modifications. No modification hereof or any agreement
referred to herein shall be binding or enforceable unless in writing and
signed on behalf of the party against whom enforcement is sought.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to
be duly executed and delivered by their proper and duly authorized officers
as of the day and year first above written.
THE XXXX XXXXXXX UNIVERSITY
/s/ N. Xxxxxxxx Xxxxxxxx, Xx.
_________________________________________
By: N. Xxxxxxxx Xxxxxxxx, Xx., M.D.
Title: Interim Vice Xxxx for Research
PHARMAGENICS, INC.
/s/ Xxxxxxx X. Xxxxxxx
________________________________________
By: Xxxxxxx X. Xxxxxxx, Ph.D.
Title: President and CEO
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