AMENDMENT NO. 1 TO THE PATENT AND TECHNOLOGY LICENSE AGREEMENT
Exhibit 10.2
AMENDMENT
NO. 1 TO THE
PATENT AND TECHNOLOGY LICENSE AGREEMENT
This AMENDMENT NO. 1 effective this 11th day of May, 2009 (“AMENDMENT NO. 1 EFFECTIVE DATE”), to the Patent and Technology License Agreement between the Parties dated November 2, 2007 (for MDA 94-036 and MDA 97-004) (“ORIGINAL LICENSE”), is made by and between the BOARD OF REGENTS (“BOARD”) of THE UNIVERSITY OF TEXAS SYSTEM (“SYSTEM”), an agency of the State of Texas, whose address is 000 Xxxx 0xx Xxxxxx, Xxxxxx, Xxxxx 00000, on behalf of THE UNIVERSITY OF TEXAS M. D. XXXXXXXX CANCER CENTER (hereinafter “UTMDACC”), a component institution of SYSTEM, and BIO-PATH, INC. a Utah corporation having a principal place of business located at 0000 Xxxxxxxx Xxxxxxxxx, Xxxxx 000, Xxxxx, Xxxx, 00000 (“LICENSEE”) BOARD and LICENSEE may be referred to hereafter collectively as the “PARTIES.”
RECITALS
A. BOARD and LICENSEE desire to amend the ORIGINAL LICENSE to add a new technology and reflect the PARTIES’ Original intent with respect to the originally licensed technologies
NOW, THEREFORE, in consideration of the mutual covenants contained herein, the sufficiency of which is hereby acknowledged, the PARTIES hereby agree to the following:
AMENDED TERMS
| 1. | Exhibit I of the ORIGINAL LICENSE (which included MDA 94-036 and MDA 97-004) shall be deleted in its entirety and replaced with the new Exhibit I attached hereto. |
| 2. | It is understood and agreed by LICENSEE that as a result of this AMENDMENT NO. I, BIO-PATH’s obligation to pay out-of-pocket expenses under Section 4.1(a) of the ORIGINAL LICENSE includes, but is not limited to, those expenses incurred in connection with MDA 96-020 and MDA99-033 |
| 3. | The PARTIES acknowledge and agree that, except as set forth in this AMENDMENT NO. 1 the terms and conditions of the ORIGINAL LICENSE shall remain in full force and effect. |
IN WITNESS WHEREOF, the PARTIES hereto have caused their duly authorized representatives to execute this AMENDMENT NO 1.
| BOARD OF REGENTS OF THE UNIVERSITY OF TEXAS SYSTEM | BIO-PATH, INC. | |||
| By: | /s/ Xxxx Xxxxxxxxxx, M.D. | By: | /s/ Xxxxx X. Xxxxxxx | |
| Xxxx Xxxxxxxxxx, M.D. | Xxxxx X. Xxxxxxx | |||
| President | President and CEO | |||
| The University of Texas | ||||
| M. D. Xxxxxxxx Cancer Center | Date: April 30, 2009 | |||
| Date: May 11, 0000 | ||||
| XXX XXXXXXXXXX XX XXXXX X. X. XXXXXXXX CANCER CENTER | ||||
| By: | /s/ Xxxx Xxxxx | |||
| Xxxx Xxxxx | ||||
| Executive Vice President | ||||
| The University of Texas | ||||
| M. D. Xxxxxxxx Cancer Center | ||||
| Date: May 11, 2009 | ||||
| Approved as to Content: | ||||
| By: | /s/ Xxxxxxxxxxx X. Xxxxxxx, M.D. | |||
| Xxxxxxxxxxx X. Xxxxxxx, M.D. | ||||
| Vice President, Technology Based Ventures | ||||
| Office of Technology Commercialization | ||||
| M. D. Xxxxxxxx Cancer Center | ||||
| Date: May 5, 2009 | ||||
| 1 |
EXHIBIT I
| MDA NO. | Inventors | Title | U.S. and foreign patent application / patent numbers | |||
| XXX00-000 | Xxxxxx Xxxxx-Berestein, M.D.; Xxx Xxxxx Tari, Ph.D | Liposomal Phosphodiester, Phosphorothioate, and and p-Ethoxy Oligonucleotides |
U.S. Patent Nos 5,855,911; 6,042,846; 7,176,302 and Ser # 11/674,563; PCI/US 1996/14146 nationalized Canadian Ser No. 2,228,944; Japanese Ser No. 9-510642; European # 0847272 nationalized 0847272GB 0847272DE 0847272FR | |||
| MDA96-009 | Xxxxxxx Xxxxx-Berestein, M.D.; Xxx X. Xxxx, Ph.D; and Xxxxx Xxxxxxxxxx, Ph.D | Inhibition of chronic myelogenous leukemic cell growth by liposomal-antisense oligodeoxynucleotides targeting to Grb2 or Crk1 |
U S. Patent Nos. 7,309,692 and 7,220,853; Serial No 11/696,015 PCI/US1997/10101 Nationalized Canadian Ser No. 2,259,144 European 0912729 Nationalized European Divisional 1234876 Nationalized 1234876FR 1234876DE 1234876IT 1234876ES | |||
| XXX00-000 |
Xxx Xxxxx, X.X.; Xxx Xxxx, Xx.X; Xxxxxxx Xxxxx-Berestein, M.D.; Xxxxxxx XxXxxxxxx, M.D., Ph.D |
Inhibition ofBcl-2 protein expression by liposomal antisense oligos |
U S. Patent Nos 6,977,244 and 7,285,288; PCT/US/1997/18348 Nationalized Canadian Serial No 2,266,584 Japanese Serial No 10-516985 Japanese Divisional 2007- 248267 European 0939621 Nationalized 0939621DE 0939621ES 0939621FR 09396211E 093962ISE 0939621GB 09396211T | |||
| XXX00-000 | Xxx Xxxx, Xx.X; Xxxxxxx Xxxxx-Berestein, MD; and Xxxxxxx Xxxxxxxxx-Xxxxxx | Small oligonucleotide with anti-tumor activity | 09506797 PCI/US2001/40159 |
| 2 |
