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EXHIBIT 10.8(c)
AMENDMENT NO. 2
TO THE
PATENT AND TECHNOLOGY LICENSE AGREEMENT
This is AMENDMENT NO. 2 effective this 8th day of August, 1997, ("EFFECTIVE
AMENDMENT NO. 2 DATE") to the Patent and Technology License Agreement dated
July 20, 1994, as amended by that certain Amendment No. 1 effective September
1, 1996 (HEREINAFTER REFERRED TO AS THE "FIRST AMENDED AGREEMENT"), by and
between THE UNIVERSITY OF TEXAS M.D. ▇▇▇▇▇▇▇▇ CANCER CENTER (hereinafter
referred to as "MDA"), located at Houston, Texas, and which is a component
institution of THE UNIVERSITY OF TEXAS SYSTEM (hereinafter referred to as
"SYSTEM") which is governed by a BOARD OF REGENTS (hereinafter referred to as
"BOARD") and INTROGEN THERAPEUTICS, INC., located at ▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇
▇▇▇▇, ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇ (hereinafter referred to as "LICENSEE").
RECITALS
A. BOARD is the owner of the invention(s) and other subject matter listed in
SCHEDULE B hereto ("IL-2 INVENTION(s)").
B. LICENSEE is a company interested in the development and commercialization
of new technologies directed to the treatment of cancer, and other
threatening diseases, to which end LICENSEE, MDA and BOARD entered into the
FIRST AMENDED AGREEMENT noted hereinabove.
C. LICENSEE wishes to add the IL-2 INVENTIONS to the LICENSED SUBJECT MATTER
under the FIRST AMENDED AGREEMENT.
D. BOARD wishes to grant LICENSEE rights to the IL-2 INVENTIONS under the
FIRST AMENDED AGREEMENT to promote its practical development for the
benefit of the MDA's patients and for the benefit of the people of the
state of Texas.
E. The definitions set forth in the AGREEMENT and the FIRST AMENDED AGREEMENT
shall apply in this AMENDMENT NO. 2, except to the extent that a definition
herein is specific to this AMENDMENT No. 2.
NOW, THEREFORE, in consideration for the mutual covenants contained herein,
the sufficiency of which is hereby acknowledged, the parties hereby agree to
the following:
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THE FIRST AMENDED AGREEMENT IS HEREBY AMENDED AS FOLLOWS:
AMENDED TERMS
1. Add the following as new Schedule B in its entirety:
SCHEDULE B
IL-2 INVENTIONS
[*]
[*]
Inventors: [*]
U.S. Patent Number: [*]
PCT Patent Number: [*]
2. So much of Section 2.3(a) as reads
"...the patents and patent applications described in Schedule A hereto (the
"Existing Patent Rights") and all patents anywhere in the world issuing
thereon;"
is hereby amended to read
"...the patent and patent applications described in Schedules A and B
hereto (the "Existing Patent Rights") and all patents anywhere in the world
issuing thereon;"
3. The title for ATTACHMENT A of the AGREEMENT shall be replaced in its
entirety to read as follows: "SCHEDULE A."
4. Add new paragraph 2.12 that will read in its entirety as follows:
"2.12 IL-2 PRODUCT shall mean a LICENSED PRODUCT the manufacture, use or
sale of which would infringe a VALID CLAIM within the IL-2 PATENTS."
5. Add new paragraph 2.13 that will read in its entirety as follows:
"2.13 IL-2 PATENTS shall mean those PATENT RIGHTS which claim or disclose
an IL-2 INVENTION as described in Schedule B hereto."
6. Paragraph 5.1 of the AGREEMENT shall be amended by the addition of the
following two new paragraphs:
[*] Certain information on this page has been omitted and filed separately
with the Commission. Confidential treatment has been requested with
respect to the omitted portions.
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New 5.1(e) shall read in its entirety:
"(e) [*] of NET SALES attributed to SALES of LICENSED
PRODUCTS that are IL-2 PRODUCTS by LICENSEE, AFFILIATES, and
SUBLICENSEES." For avoidance of doubt, the royalties due on PRODUCTS
other than IL-2 PRODUCTS shall be as specified in Paragraph 5.1(a)
above.
New 5.1(f) shall read in its entirety:
"(f) For any advance payment attributable to an IL-2 PRODUCT or IL-2
PATENT received by LICENSEE from a third party pursuant to a
sublicensee, marketing, distribution, or franchise agreement, other
than amount paid to LICENSEE in reimbursement of development or other
costs, as provided for in Article 4.3 hereof [*]: [*] of said advance
payment attributable to an IL-2 PRODUCT or IL-2 PATENT." For avoidance
of doubt, advanced payments for PRODUCTS other than IL-2 PRODUCTS shall
be as specified in Paragraph 5.1(b) above.
7. The definition of TECHNOLOGY RIGHTS (Paragraph 2.4) shall be amended by
addition of the following text:
"TECHNOLOGY RIGHTS shall also include all information, know-how,
biological materials or other subject matter owned by the BOARD and
reasonably necessary for practicing an IL-2 INVENTION at any time
covered by the IL-2 PATENTS."
OTHERWISE, the terms and provisions of the original AGREEMENT shall
remain in full force and effect, provided, however, that in the event of a
conflict in the terms and conditions between this AMENDMENT NO. 2 and the
AGREEMENT, the terms and conditionals of this AMENDMENT NO. 2 shall prevail.
THIS AMENDMENT NO. 2 and the SCHEDULES hereto and the AGREEMENT and its
ATTACHMENTS constitute the entire agreement between the parties in connection
with the subject matter hereof and thereof and supersede all prior and
contemporaneous agreements, understandings, negotiations and discussions,
whether oral or written, of the parties.
[*] Certain information on this page has been omitted and filed
separately with the Commission. Confidential treatment has been
requested with respect to the omitted portions.
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IN WITNESS WHEREOF, the parties hereto have caused their duly
authorized representatives to execute this AMENDMENT NO. 2.
THE UNIVERSITY OF TEXAS BOARD OF REGENTS OF THE
M.D. ▇▇▇▇▇▇▇▇ CANCER CENTER UNIVERSITY OF TEXAS SYSTEM
By /s/ ▇▇▇▇▇▇▇ ▇. BEST By /s/ ▇▇▇ ▇▇▇▇▇▇▇
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▇▇▇▇▇▇▇ ▇. Best ▇▇▇ ▇▇▇▇▇▇▇
Vice Chancellor and General Counsel
APPROVED AS TO CONTENT APPROVED AS TO FORM
By /s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇ By /s/ ▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇
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▇▇▇▇▇▇▇ ▇. ▇▇▇▇ ▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇, Ph.D.
Director, Technology Development Office of General Counsel
INTROGEN THERAPEUTICS, INC.
By /s/ ▇▇▇▇▇ ▇. ▇▇▇▇▇
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▇▇▇▇▇ ▇. ▇▇▇▇▇
President
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SCHEDULE B
IL-2 INVENTIONS
[*]
[*]
Inventors: [*]
U.S. Patent Number: [*] Issued: [*]
PCT Patent Number: [*]
[*] Certain information on this page has been omitted and filed separately
with the Commission. Confidential treatment has been requested with
respect to the omitted portions.
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