AMENDMENT TO LICENSE AGREEMENT
Exhibit 10.15
THE SYMBOL '***' IS USED THROUGHOUT THIS EXHIBIT TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN OMITTED AS CONFIDENTIAL
AMENDMENT TO LICENSE AGREEMENT
This Amendment Agreement, dated as of February 27, 2004, is by and between THE UNIVERSITY OF BRITISH COLUMBIA (the "University") and ANGIOTECH PHARMACEUTICALS, INC. (the "Licensee").
WITNESSETH
WHEREAS pursuant to a license agreement having a Commencement Date of August 1, 1997 (the "License Agreement"), University granted to Licensee an exclusive worldwide license to use and to sublicense the University's rights in and to the Technology and any Improvements (as those capitalized terms are defined in the License Agreement);
WHEREAS University and Licensee are entering into this Amendment Agreement to set out. certain amendments to the License Agreement mutually agreed to between the parties.
NOW, THEREFORE, in consideration of the mutual promises and agreements set. forth herein, and for other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, University and Licensee hereby agree as follows:
1.
Definitions
Capitalized terms not specifically' defined herein shall have the meanings set forth in the License Agreement. 'Capitalized terms defined herein shall have .the meanings set forth in this Amendment Agreement.
2.
License Agreement Amendments
2.1
Amendments. The License Agreement shall be amended as set out with particularity in Schedule "1" to this Amendment Agreement, and each of University and Licensee covenant and agree to keep, Observe and perform each and every one of the terms, covenants, agreements and conditions On their part to be kept, observed or performed under the License Agreement, as supplemented and amended hereby.
2.2
Effect of Amendment Agreement. This Amendment Agreement supplements and amends the 'License Agreement, and the License Agreement and this Amendment Agreement shall henceforth be read 'together and shall have effect so far as practicable as though all the provisions thereof and hereof were contained in one instrument. The License Agreement, as supplemented and amended hereby, shall continue in full force and effect for the remainder of the term thereof in accordance with the terms thereof and hereof.
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3.
Enurement
The License Agreement, as supplemented and amended hereby, shall enure to the benefit of the parties hereto and their respective successors and permitted assigns.
IN WITNESS WHEREOF, the parties hereto have caused this Amendment Agreement to be executed by their duly authorized representatives.
SIGNED FOR AND ON BEHALF of THE
UNIVERSITY OF BRITISH COLUMBIA by
its duly -authorized Officers:
/Signed/
___________________________________
By:
___________________________________
Title:
___________________________________
___________________________________
By:
___________________________________
Title:
___________________________________
ANGIOTECH PHARMACEUTICALS,INC.
/s/Xxxxxx X. Xxxxxxxx/
___________________________________
By: Xxxxxx X. Xxxxxxxx
___________________________________
Title: Chief Business Officer
___________________________________
Schedule "1" to the Amendment Agreement, dated February 27, 2004
As of February 27, 2004, the following amendments are hereby made to the License Agreement . (all other provisions of the License Agreement shall remain unchanged and shall continue in full force and effect):
1.
The patent family entitled "ANGIOTECH PATENT APPLICATION FAMILY (1.40005), UBC File Reference No. 96-099" attached to this Schedule 1, shall be added to Schedule "A" ("TECHNOLOGY") of the License Agreement.
2.
Article 11.1 of the License Agreement is hereby amended by the addition of the underlined text as follows:
“That the Licensee shall maintain at its principal place of business, or such other place as may be most convenient, accounts and records of business done pursuant to this Agreement, such accounts and records to be in sufficient detail, to enable proper returns to the University to be made under this Agreement in the forms set out in Schedule B, C and D attached hereto.”
The remainder of Article 11 remains unchanged.
3.
The last sentence of Article 13.1 of the Agreement is hereby amended by the addition of the underlined text to that sentence as follows:
“Notwithstanding the foregoing, this Agreement may be assigned or transferred (a) to an Affiliated Company; or, (b) as part of a safe or transfer of substantially all of the business of the Licensee relating to the operations which concern this Agreement, provided the Licensee gives the University prior written notice and such assignee or transferee has the reasonable ability to comply with the terms of this Agreement and provided further that:
(a)
the Licensee acknowledges and agrees, in writing, that all of the rights of the University herein, and all of the obligations and covenants provided herein by Licensee, shall survive any assignment of this Agreement to each such successor, purchaser or Affiliate, and that such assignment shall not release Licensee from its obligations or covenants under this Agreement, even though, after such assignment, primary recourse for enforcement of such obligations and covenants shall be against the assignee, and Licensee shall remain secondarily liable; and
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(b)
such successor, purchaser or Affiliate shall execute a written agreement which provides that it covenants and agrees with the University to assume, acknowledge and adopt as its own obligation every covenant, obligation, representation, warranty, or liability of Licensee contained in this Agreement,"
The remainder of Article 13.1 and Article 13 remains unchanged.
4.
Schedules B, C and D, as attached to this Amendment Agreement, shall hereby become Schedules B, C and D to the License Agreement, and shall be incorporated in their entirety into the License Agreement.
ANGIOTECH PATENT APPLICATION FAMILY (1.40005) | 2/13/04 |
New | Old | Filing | Application | Title | Status | Issue/ | Patent No. / |
[***]
SCHEDULE "B"
Payment Report for the Period dd/mm/yy to dd/mm/yy Instructions for
Instructions for Completing this Report
Please fill out each section in full, identifying in the Royalty Summary Table the unit sales and geographical sales areas. If the licence with the University involves several product lines, please prepare a separate Summary Table for each product line. For licences involving sublicencing revenue, please prepare an additional report for each sublicence.
PLEASE NOTE: An interest rate of 1% per month will be assessed against all payments in arrears.
Licensee _____________________ Agreement # ______________ UBC ID # ________________________
UBC Technology ___________________________________________________________________________
Report Type (check one and complete as appropriate)
Single Product Line
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Product Line Trade Name __________________________________________
Multiple Products
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Page ___ Of ___ Product Line Trade Name __________________________
Sublicence Report
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Page ___ Of ___
Payments this Quarter (please complete separate tables for multiple product lines) Royalties on Product Sales
Country | Units Sold | Unit Price (domestic currency) | Gross sales | Less Allow-ances* | Net Sales | Royalty Rate | Conversion Rate (to | Period Royalty Amount (Canadian $) | |
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Europe (specify Countries) |
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Other |
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Additional Payments (complete all that apply)
Minimum Royalty Fee |
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Milestone Payment |
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Annual License Maintenance Fee |
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*Please indicate the reasons for returns or other allowances, if significant. Please note any unusual occurrences that affected royalty amounts during the period.
Prepared by ____________________ Date Dd/mm/yy Phone ____________________
I ________________ (print name), of ________________ (title) hereby certify the foregoing information as true and correct.
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Signature | Date Signed |
SCHEDULE "C"
UBC License Agreement Annual Report
The information to be completed below shall constitute the annual report required pursuant to the University License Agreement. Any information or documents provided by the Licensee in this report shall not be interpreted as affecting the express rights and obligations of the Licensee contained in the License Agreement. This report is in addition to the Payment Report to accompany each royalty payment.
Date of Report: ________________ Person Preparing This Report: __________________
Name of Licensee: _____________ UBC File Number: ___________________________
Jurisdiction of Corporation: ________________ Head Office Address: _______________
Contact Person for Company ______________________________________________
Licensed Technology: _________________________________________________
Telephone Number: _______________ E-mail Address: ___________________________
1.
Please provide a brief report on the status of development of the UBC Technology, progress on creating a commercial Product or subsequent marketing of the Product as appropriate.
_________________________________________________________________________
_________________________________________________________________________
2.
Has the Licensee filed any patent applications for modifications or improvements relating to the original UBC Technology? Please provide details, and attach copies of all relevant documents.
_________________________________________________________________________
_________________________________________________________________________
3.
Has the Licensee become aware of any potential 3rd party infringing on the UBC patents or related intellectual property? If so please provide details and outline what the Licensee is doing about this.
_________________________________________________________________________
_________________________________________________________________________
4.
Has the Licensee met any milestone or performance objectives in the past year as set forth in the license agreement? Please outline the past year's accomplishments.
_________________________________________________________________________
_________________________________________________________________________
5.
Does the Licensee expect to meet any milestone or performance objective in the coming year as set forth in the license agreement? If so please provide details.
_________________________________________________________________________
_________________________________________________________________________
6.
If applicable, has the Licensee granted sublicenses to 3rd parties and if so have copies of the sublicense agreement been provided to the Technology Manager at UBC? If not, please enclose a copy of each sublicense agreement.
_________________________________________________________________________
7:
Has the licensee made any sales in the last 12 months? Yes ______ No ______
If so please submit a completed Royalty Payment Report.
a)
Date of sales of Products utilizing the Technology;
b)
Date of any clinical trials.
_________________________________________________________________________
_________________________________________________________________________
8.
Does your company have public liability insurance. If so, please attach a copy of the insurance policy naming UBC as insured as required by the License Agreement.
_________________________________________________________________________
_________________________________________________________________________
9.
Is there any other information relating to this License that you think we should be aware of? Please summarize them below or contact us directly.
_________________________________________________________________________
_________________________________________________________________________
Prepared by ____________________ Date Dd/mm/yy Phone ____________________
I ________________ (print name), of ________________ (title) hereby certify the foregoing information as true and correct.
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Signature | Date Signed |
Once completed, please submit this report to:
Managing Director c/o Licensing Compliance Officer
University — Industry Liaison Xxxxxx
#000 — 0000 Xxxxxxxx Xxxx,
Xxxxxxxxx, XX
X0X 0X0
