[*]indicates that a confidential portion of the text of this agreement has been
omitted
FIFTH AMENDMENT TO LICENSE AGREEMENT
This Fifth Amendment to License Agreement (hereinafter "Amendment") is made
and effective on June 25, 1999, by and between XOMA TECHNOLOGY LTD., a company
organized and existing under the laws of Bermuda and having an office at 0000
Xxxxxxx Xxxxxx, Xxxxxxxx, Xxxxxxxxxx 00000 (hereinafter "CORPORATION"), and NEW
YORK UNIVERSITY, a corporation organized and existing under the laws of the
State of New York and having a place of business at 00 Xxxxxxxxxx Xxxxxx Xxxxx,
Xxx Xxxx, Xxx Xxxx 00000 (hereinafter "NYU").
WITNESSETH
WHEREAS, CORPORATION and NYU entered into a certain agreement made and
effective as of August 6, 1990, as amended and restated on September 1, 1993 and
as subsequently amended on August 1, 1996, June 12, 1997 and December 23, 1998
(as so amended and restated, the "Agreement"), pursuant to which, inter alia,
CORPORATION undertook to sponsor the NYU Research Project (as such term is
defined in the Agreement) and NYU granted to CORPORATION the License (as such
term is defined in the Agreement); and
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WHEREAS, CORPORATION and NYU wish to amend the Agreement as specified
herein;
NOW, THEREFORE, in consideration of the premises and the covenants,
conditions and promises set forth below, the parties hereto hereby agree as
follows:
1. Except as expressly provided for herein, all terms and conditions of
the Agreement shall remain in full force and effect.
2. Terms which are defined in the Agreement shall have the same meanings
when used in this Amendment, unless a different definition is given
herein.
3. The second line of Subsection 7.c.(2) of the Agreement shall be, and
hereby is, amended by adding the following language after the
semicolon:
provided, that such sublicense may also be assignable to the successor
or assignee of that portion of the sublicensee's business to which
such sublicense relates so long as NYU receives reasonably prompt
notice of such assignment and a copy of the formal written assignment,
which shall include an undertaking by the assignee to perform the
original sublicensee's obligations under the sublicense;
4. The second line of Subsection 7.c.(3) of the Agreement shall be, and
hereby is, amended by adding the
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following language after the semicolon and before the word "and":
provided, that in the case of a sublicense granted to a sublicensee
for [*] the sublicense may also provide for the grant of further
sublicenses to up to one sublicensee in each country of the territory
covered by such sublicense so long as any such further sublicense is
granted only on terms including those set forth in the last sentence
of this Subsection 7.c. and such further sublicensee is included in
the term "sublicensee" for purposes of Subsections 9.a.(3), (4) and
(5), 9.b. and 9.c. hereof;
5. The last line of Subsection 9.a.(2) of the Agreement (after giving
effect to the Third Amendment thereto) shall be, and hereby is,
amended by adding the following language after the word "and":
in the case of a sublicense between CORPORATION and a third party for
[*] and
6. The first clause (i.e., the language preceding the first colon) of
Subsection 9.a.(3) of the Agreement shall be, and hereby is, amended
to read in its entirety as follows:
(a) a royalty of [*] of the Net Sales of any Licensed Product
described in Section 1.1(aa) or (bb) and sold by CORPORATION or its
sublicensees (including CORPORATION Entity) for human diagnostic,
prophylactic and/or therapeutic uses other than [*] for as long as
CORPORATION maintains the License except (in the case of the foregoing
clause (a), (b) or (c)) as follows in (i) and (ii) below
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7. The first clause (i.e., the language preceding the first colon) of
Subsection 9.a.(4) of the Agreement shall be, and hereby is, amended
to read in its entirety as follows:
(a) a royalty of [*] of the Net Sales of any Licensed Product
described in Section 1.1(cc) or (dd) and sold by CORPORATION or its
sublicensees (including CORPORATION Entity) for human diagnostic,
prophylactic and/or therapeutic uses other than [*] for as long as
CORPORATION maintains the License except (in the case of the foregoing
clause (a), (b) or (c)) as follows in (i) and (ii) below
8. Subsection 9.a.(5) of the Agreement shall be, and hereby is, amended
to read in its entirety as follows:
If any Licensed Product is covered solely by a CORPORATION Patent then
the royalty owed by the CORPORATION to NYU with respect to such
Licensed Product shall be [*] of the Net Sales of such Licensed
Product sold by CORPORATION or its sublicensees (including CORPORATION
Entity) for human diagnostic, prophylactic and/or therapeutic uses
other than [*] for as long as CORPORATION maintains the License.
9. The seventeenth line (i.e., the end of the third sentence) of Section
9.b. of the Agreement shall be, and hereby is, amended by adding a
semicolon and the following language after the words "Combination
Product":
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provided, that this sentence shall not apply to Net Sales of Licensed
Products for [*]
10. The last line of Section 9.c. of the Agreement shall be, and the same
hereby is, amended by adding a semi-colon and the following language
after the word "CORPORATION":
provided, that, in the event the relevant sublicense does not contain
provisions requiring the sublicensee to provide such reports to NYU,
then NYU shall not have the right to have CORPORATION undertake to
have the sublicensee provide any such reports and to have CORPORATION
conduct any such audit pursuant to the preceding clauses of this
sentence, but instead shall have the right to have the books of
accounts, records and other relevant documentation of the sublicensee
inspected by independent auditors on the same terms as set forth in
the first five sentences of this Subsection 9.c.
11. The last line of Subsection 9.e. of the Agreement shall be, and hereby
is, amended by adding a semi-colon and the following language after
the word "non-exclusive":
provided, that, without effecting the foregoing right of termination,
NYU shall have no such right to declare the License to be
non-exclusive with respect to Licensed Products for the mitigation,
treatment or prevention of ophthalmic infection in humans and other
mammals in the event CORPORATION fails to make any such payment
12. Section 18.a.(iv) of the Agreement shall be, and hereby is, amended to
read in its entirety as follows:
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(iv) CORPORATION has changed its legal domicile from Delaware to
Bermuda and has also assigned this Agreement in whole to XOMA
Technology Ltd., a Bermuda company wholly owned by CORPORATION
("XTL"), and NYU hereby consents to such assignment. In addition, (a)
CORPORATION's rights and obligations hereunder relating to the
manufacture, use and sale of Licensed Products [*] have been
transferred from XTL to XOMA Ireland Limited, incorporated under the
laws of Ireland and wholly owned by CORPORATION ("XIL"), which in turn
has granted a nonexclusive sublicense hereunder for the manufacture of
Licensed Products for [*] to XOMA (US) LLC, a Delaware limited
liability company wholly owned by CORPORATION ("XUS"); (b) from time
to time CORPORATION's other rights and obligations hereunder relating
to other fields of use and/or indications may be transferred from XTL
to XIL, which in turn may grant nonexclusive sublicenses hereunder for
the manufacture of Licensed Products in such other fields of use
and/or indications to XUS; and (c) NYU hereby consents to all of the
foregoing transfers and license grants. Notwithstanding the foregoing,
CORPORATION (now understood to mean XTL, XIL and XUS, each as to their
respective rights and obligations hereunder) agrees to comply with the
applicable provisions of the Xxxx-Xxxx Act of 1980 and the regulations
promulgated thereunder including, without limitation, the requirement
that any Licensed Products using the subsequent technology will be
manufactured substantially in the United States to the extent required
by 35 U.S.C. ss. 204.
13. This Amendment may be executed in one or more counterparts, each of
which shall be an original and all of which shall constitute together
the same document.
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IN WITNESS WHEREOF, the parties hereto have executed this Amendment as
follows:
NEW YORK UNIVERSITY XOMA TECHNOLOGY LTD.
By:______________________________________ By:________________________________
Xxxxx X. Xxxxxxxx G. Xxxxx Xxxxxxxx
Assistant Xxxx and Vice Director
President for Industrial Liaison
XOMA IRELAND LIMITED
SIGNED by
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Xxxx Xxxx, Director,
duly authorized for and on behalf
of XOMA IRELAND
LIMITED in the presence of:
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