EXHIBIT 10.30
[*]= Certain confidential information contained in this document, marked by
brackets, has been omitted and filed separately with the Securities and
Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act
of 1934, as amended.
AMENDMENT I: SPECIFIC LICENSE AGREEMENT
In accordance with article 4 and article 5 of the Master Agreement between
Yissum and LTI effective as of the date first written above, the parties agree
to amend the Master Agreement as follows:
1. Definitions
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1.1 For the purposes of this Amendment, "Licensed Patents" shall mean the
following five U.S. patents and any and all non-U.S. counterparts thereof
and "Licensed Patent" shall mean any one of the following U.S. patents or
any non-U.S. counterpart thereof:
[*]
1.2 For the purposes of this Amendment, "Licensed Product" shall mean any
product or component thereof the manufacture, use or sale of which would
constitute an infringement of any claim in a Licensed Patent but for the
license granted herein. DOXIL(R) (DOX-SL(TM)) is a Licensed Product under
this amendment.
1.3 For the purposes of this Amendment, "Net Sales" shall mean gross invoice
sales price received by LTI or a sublicensee of LTI for sales of Licensed
Product, less the sum of the following deductions: cash, trade discounts;
sales, use, tariff, import/export duties or other excise taxes;
transportation and handling charges and allowances, and credits to
customers due to rejections or returns. Net Sales denominated in all
currencies other than U.S. dollars will be translated in U.S. dollars, as
determined by LTI for incorporation into its financial statements and shall
comply with generally accepted accounting principles.
2. Grant of License
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2.1 Yissum grants to LTI an exclusive, worldwide license to make, have made,
use, and sell any Licensed Product.
2.2 Yissum also grants to LTI the right to issue sublicenses to products
incorporating License Patents contemplated by this Amendment. LTI shall
pay to Yissum royalties for such sublicenses in accord with section 3.2
hereof.
3. Royalties
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3.1 LTI shall pay to Yissum a royalty of [*] of Net Sales of any Licensed
Product sold by LTI or its affiliates.
[*] =CONFIDENTIAL TREATMENT REQUESTED
1.
3.2 In the event that LTI sublicenses to a third party the right to manufacture
and market a Product claimed in a License Patent, LTI shall pay to Yissum
[*] of all benefit or consideration received by LTI from the third party.
3.3 LTI shall pay Yissum royalties on a quarterly basis. Payments shall be due
within two calendar months of the end of any quarter in which royalties are
payable. All royalties shall be payable in U.S. funds.
4. Infringement
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4.1 In the event that a Licensed Patent is infringed by an third party, LTI
shall have the sole right, but not the obligation, to institute, prosecute
and control any action or proceeding with respect to such infringement, by
counsel of its own choice, including any declaratory judgment action
arising from such infringement, provided however, that upon LTI failing to
exercise such right, Yissum shall have the right to institute such an
action or proceeding as it may be advised. All damages or other monetary
awards made or recovered in favor of LTI shall be subject to a payment to
Yissum of [*] of the recovery by LTI (minus out-of-pocket expenses), or [*]
of the total award, whichever is less. All damages or other monetary
awards made or recovered in favor of Yissum shall belong solely to Yissum.
5. Records and Reports
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5.1. LTI will notify Yissum within thirty (30) days of the date of the first
commercial sale of a Licensed Product, and thereafter shall do the
following:
5.2 LTI shall keep full, true, and accurate books and records of accounts
containing all particulars necessary to show and compute all amounts
payable to Yissum under this Amendment. Said books of accounts shall be
kept at LTI's place of business for at least three (3) years following the
end of the calendar year or fiscal year to which they pertain and shall be
made available, at reasonable times, for inspection by a representative of
Yissum for purposes of verifying LTI's royalty statement and LTI's
compliance in other respects with this Amendment.
5.3 LTI shall deliver to Yissum simultaneously with the payment of royalties as
provided in Section 3 hereof a true and accurate report, giving such
particulars of the business conducted by LTI during the appropriate
calendar quarter under this Amendment as are pertinent to a royalty
accounting hereunder including, where applicable, the following: (a) all
License Products sold; (b) the total xxxxxxxx for License Products sold;
(c) the full supporting information for royalties received by LTI from a
sublicensee; (d) deductions applicable as provided in paragraph 1.3 hereof;
(e) total royalties due; and (f) the names of all sublicensees of LTI.
5.4 If no royalties are due for any calendar quarter, the report of LTI for
that quarter, attested by an authorized corporate officer, shall so state.
6. Term and Termination
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[*] =CONFIDENTIAL TREATMENT REQUESTED
2.
6.1 This Amendment shall be effective through the life of the last to expire
Licensed Patent unless sooner terminated pursuant to the terms hereof.
6.2 Either party shall have the right to terminate this Amendment upon sixty
(60) days written notice to the other party in the event of any material
failure of that party to comply with any material term hereof, which
failure shall not have been remedied within sixty (60) days of delivery of
notice specifying the failure.
7. Warranty
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7.1 Yissum expressly warrants that it has the authority to bind [*], Jerusalem,
Israel to this Amendment. Further, Yissum agrees to indemnify LTI against
any damages or defense costs associated with any breach of aforesaid
warranty.
8. Miscellaneous
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8.1 This Amendment and the portions of the Master Agreement incorporated herein
represent the entire agreement and understanding between the parties with
respect to the subject matter and supersede any prior and/or
contemporaneous discussions, representations, or agreements, whether
written or oral, of the parties regarding this subject matter. Further
amendments or changes shall be of no force unless they are in writing and
signed by duly authorized representatives of the parties.
IN WITNESS WHEREOF, the parties hereto have caused this Specific License
Agreement to be duly executed as of the day and year first written above.
LIPOSOME TECHNOLOGY, INC. YISSUM RESEARCH DEVELOPMENT LIPOSOME TECHNOLOGY, INC.
BY: Xxxxx X. Xxxxxxxxx BY: /s/ Xxx Xxxxxx, /s/ Xxxxx Xxxxxx
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TITLE: Corporate Secretary TITLE: Managing Director
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DATE: May 2, 1995 DATE: June 18, 1995
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[*] =CONFIDENTIAL TREATMENT REQUESTED
3.