Four th Amendment To Exclusive License Agreement Between The Regents of the University of California and Medivation, Inc and Medivation Prostate Therapeutics, Inc For UC Agreement Control No. 2006-04-0085
Exhibit 10.8
Four th Amendment To Exclusive License Agreement Between
The Regents of the University of California
and
Medivation, Inc and Medivation Prostate Therapeutics, Inc
For
UC Agreement Control No. 0000-00-0000
FOURTH AMENDMENT TO EXCLUSIVE LICENSE AGREEMENT UC Agreement Control No. 0000-00-0000
This Fourth Amendment to Exclusive License Agreement (“Fourth Amendment”), dated as of July 17, 2007, is made by and among The Regents of the University of California, a California corporation (“The Regents”), Medivation, Inc , a Delaware corporation (“Medivation”), and Medivation Prostate Therapeutics, Inc,, a Delaware corporation and subsidiary of Medivation (“MPT”) (Medivation and MPT together “Licensee”)
BACKGROUND
A The Regents, Medivation and MPT are parties to an Exclusive License Agreement, dated as
of August 12, 2005 (the “Exclusive License Agreement”), as amended on November 4, 2005, May 8, 2006 and June 12, 2007 ,
B Medivation has supported research in Xx. Xxxxxxx X Xxxx’x laboratory at UCLA under a
Sponsor ed Resear ch Agreement with an Effective Date of August 12, 2005 (the “Sponsored Research Agreement”)
C An invention has been developed at UCLA in the performance of the Sponsored Research
Agreement, which is disclosed in XX Xxxx Xx. 0000-000 entitled “Additional Thiohydantoin Androgen Receptor Antagonists for Prostate Cancer Treatment,” by Xxxxxxx E, Xxxx and Xxxxxxx Xxx, employees of The Regents, Xxxxxxx X. Xxxxxxx, an employee of Xxxxxx Xxxxxx Medical Institute (“HHMI”) and a member of the faculty of the University of California, Los Angeles at the time the invention was made, and Xxxxx Xxxx, an employee of HHMI at the time the invention was made,
D, The Sponsored Research Agreement grants Medivation the first right to negotiate for a
license to inventions made by The Regents in the performance of the Sponsored Research Agreement, and Medivation has exercised its right and wishes to obtain an exclusive license to the invention noted in the preceding clause ,
E Medivation as the parent corporation of MPT will benefit directly from the agreements made
herein
F The parties mutually intend to enter into this Fourth Amendment to amend the terms of the
Exclusive License Agreement, as specified below
THEREFORE, the parties hereby agree as follows:
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Paragraph 11 (“Regents’ Patent Rights”) is deleted and replaced with the following, which |
is amended to include “UC Case No 2007-139” in the parenthetical at the end of the paragraph:
11 “Regents’ Patent Rights” means The Regents’ interest in the claims of the United States patents and patent applications, corresponding foreign patents and patent applications (requested under Paragraph 7.3 herein), and any reissues, extensions, substitutions, continuations, divisions, and continuation-in-part applications (but only those claims in the continuation-in-part applications that are entirely supported in the specification and entitled to the priority date of the parent application) based on the patent applications listed in Appendix A (UC Case Nos 2003-279-2, 2004- 129, 2005-438, 2006-260, 2006-537 and 2007-139)
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Appendix A (Regents’ Patent Rights) is deleted and replaced with the Appendix A attached to this Fourth Amendment, which is amended to include the patent applications to be filed under UC Case No 2007-139 |
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In consideration for the addition of the patent rights of UC Case No 2007-139 to the |
Exclusive License Agreement, Licensee will pay to The Regents a fee of two thousand five hundred dollars ($2,500) within thirty (30) days of the Effective Date of this Fourth Amendment In addition, Licensee will pay a one-time milestone fee of twenty-five thousand dollars ($25,000) upon issuance of the first patent under UC Case No 2007-139 that would cover a Licensed Product,,
The Regents, Medivation and MPT have executed this Amendment in duplicate originals by their
authorized officers on the dates written below:
THE REGENTS OF THE UNIVERSITY OF CALIFORNIA
By (
Name
C Xxxxxxx Xxxxxxx
Name
Claire T Wake, Ph D
Title Senior Vice President and CFO Title
Assistant Director , Licensing Date
8 Aug 07
Date July 19, 2007 MEDIVATION PROSTATE THERAPEUTICS, INC By /s/ C. Xxxxxxx Xxxxxxx
Name C Xxxxxxx Xxxxxxx
Title Senior Vice President and CFO Date /s/ C. Xxxxxxx Xxxxxxx
/s/ Xxxxxx X. Wake, Ph.D.
APPENDIX A (Fourth Amendment)
REGENTS PATENT RIGHTS
XX Xxxx Xx. 0000-000-0
Xxxxxx Xxxxxx Patent Application No 10/583,280 filed December 16, 2004 Australian Patent Application No . 2004-305075 filed December 16, 2004 Canadian Patent Application No 2550447 filed December 16, 2004 European Patent Application No 04814409 1 filed December 16, 2004 Hong Kong Patent Application No 7103115 7 filed December 16, 2004 Japanese Patent Application No . 2006-545417 filed December 16, 0000 Xxx Xxxxxxx Xxxxxx Xxxxxxxxxxx Xx , 000000 filed December 16, 2004
All of the above based on PCT Patent Application No,. US04/42221 “Method and Mater ials for Assessing Prostate Cancer Therapies,” filed December 16, 2004, based on US Provisional Patent Application No. 60/5.31,091 filed on December 19, 2003 and assigned to The Regents The inventors are Xxxxxxx L, Xxxxxxx, an employee of the Xxxxxx Xxxxxx Medical Institute (“HHMI”) and a member of the faculty of The Regents, and Charlie D , Chen and Der xx X., Xxxxxxx, employees of The Regents
XX Xxxx Xx. 0000-000
Xxxxxx Xxxxxx Patent Application No 10/590,445 filed February 23, 0000 Xxxxxxxxxx Patent Application No, 2005-232526 filed February 23, 0000 Xxx Xxxxxxx Patent Application No 550102 filed February 23, 2005
All of the above based on PCT Patent Application No. US05/05529 “Methods and Materials for Assessing Prostate Cancer Therapies and Compoundsfiled February 23, 2005, based on US Provisional Patent Application No. 60/547,101 filed February 24, 2004 and assigned to The Regents, The inventors are Xxxxxxx X Xxxx, Xxxxxx Xxx, Xxxxxxx X. Xxxx and Xxxxx Xxxxxxx, employees of The Regents, and Xxxxxxx X. Xxxxxxx, an employee of the Xxxxxx Xxxxxx Medical Institute (“HHMI”) and a member of the faculty of The Regents
United States Patent Application No 11/433,829 filed March 29, 2006
The above based on PCT Patent Application No. PCT/US06/11417 “Novel Androgen Receptor Inhibitors with Minimal Agonistic Activities,” filed on March 29, 2006, based on US Provisional
Patent Application No. 60/680,835 filed May 13, 2005 and assigned to The Regents The inventors are Xxxxxxx X. Xxxx, Xxxxxx Xxx, Xxxxxxx X Xxxx and Xxxxx Welshie, employees of The Regents, and Xxxxxxx X Xxxxxxx, an employee of the Xxxxxx Xxxxxx Medical Institute (“HHMI”) and a member of the faculty of The Regents. This application, together with the patent application pertaining to UC Case No. 2004-129, cover the compounds identified as RD1 through RD138, inclusive, on Exhibit A attached to the First Amendment
PCT Patent Application No. PCT/US06/11417 (also includes UC Case Nos. 2006-260 & 2006- 537) titled “Diarylthiohydantoin Compounds” was filed March 29, 2006 and assigned to The Regents The inventors are Xxxxxxx X Xxxx, Xxxxxx Xxx, Xxxxxxx X Xxxx, Xxxxx Xxxxxxx and Xxxxxxx Xxx, employees of The Regents, and Xxxxxxx X Xxxxxxx, an employee of Xxxxxx Xxxxxx Medical Institute (“HHMI”) and a member of the faculty of the University of California, Los Angeles, and Xxxx Xxxxxxxxx and Xxxxx Xxxx, employees of HHMI,
UC Case No. 2006-260
US Provisional Patent Application No, 60/750,351 filed December 15, 2005 and US Provisional
Patent Application No. 60/756,552 filed January 6, 2006, both titled “Selected
Diarylthiohydantoin Compounds “ filed January 6, 2006 (both were subsequently rolled into PCT Patent Application No PCT/US06/11417), and both assigned to The Regents, The inventors are Xxxxxxx X Xxxx, Xxxxxx Xxx and Xxxxxxx X Xxxx, employees of The Regents, and Xxxxxxx X Xxxxxxx, an employee of the Xxxxxx Xxxxxx Medical Institute (“HHMI”) and a member of the faculty of The Regents, and Xxxx Xxxxxxxxx and Xxxxx Xxxx, employees of HHMI.
XX Xxxx Xx. 0000-000
Xxxxxx Xxxxxx Patent Application No 11/730,168 filed March 29, 2007
The above based on PCT Patent Application No. PCT/US07/07854 “Diarylthiohydantoin Compounds” filed on March 29, 2007, based on US Provisional Patent Application No. 60/786,837 filed March 29, 2006 and assigned to The Regents (This invention was also filed as part of PCT Patent Application No, PCT/US06/11417, listed under UC Case No 2005-438 above), The inventors are Xxxxxxx E, Jung and Xxxxxxx Xxx, employees of The Regents, and Xxxxxxx X Xxxxxxx, an employee of Xxxxxx Xxxxxx Medical Institute (“HHMI”) and a member of the faculty of the University of California, Los Angeles, and Xxxxx Tr an, an employee of HHMI ,
UC Case No. 2007-139
US Provisional Patent No. [TBD] to be filed “Additional Thiohydantoin Androgen Receptor Antagonists for Prostate Cancer Treatment, “ The inventors are Xxxxxxx E„ Xxxx and Xxxxxxx Xxx, employees of The Regents, and Char xxx X. Xxxxxx s, an employee of HHMI and a member of the faculty of the University of California, Los Angeles, and Xxxxx Tr an, employee of HHMI ,
XX0
XX000
