EXHIBIT 10.51
CONFIDENTIAL PORTIONS HAVE BEEN
OMITTED BASED UPON A REQUEST FOR CONFIDENTIAL TREATMENT PURSUANT TO
RULE 24b-2 OF THE SECURITIES EXCHANGE ACT OF 1934 AND HAVE BEEN
SEPARATELY FILED WITH THE COMMISSION
AMENDMENT
NO. 1 TO SECOND AMENDED AND RESTATED COLLABORATION, LICENSE
AND SUPPLY
AGREEMENT
BETWEEN
EPOCH
BIOSCIENCES, INC. (FORMERLY EPOCH PHARMACEUTICALS, INC.)
AND
APPLERA
CORPORATION (SUCCESSOR TO PERKIN-ELMER CORPORATION)
This Amendment No. 1 to Second Amended and
Restated Collaboration, License and Supply Agreement (the
“Amendment”) is entered into this 26
TH
day of July,
2002.
RECITALS
A. Epoch Biosciences, Inc. (formerly known as
Epoch Pharmaceuticals, Inc.) (“Epoch”) and Applera
Corporation (successor to PE Corporation (NY) (formerly known as
The Perkin-Elmer Corporation)), through its Applied Biosystems
Group, (“ABG”) are parties to that certain Second
Amended and Restated Collaboration, License and Supply Agreement,
dated August 17, 2000, (the “Collaboration Agreement”)
as supplemented by that certain First Side Agreement (“First
Side Agreement”), effective as of October 31,
2001.
B. As contemplated by Section 4 of the First
Side Agreement, the Parties desire to further amend the
Collaboration Agreement to clarify certain definitions and modify
the royalty rates and the minimum royalty and minimum purchase
obligations for certain categories of Licensed Products.
C. The Parties also desire to clarify certain
other language of the Collaboration Agreement.
AGREEMENT
NOW, THEREFORE, the Parties agree as
follows:
1. All capitalized terms not defined herein
shall have the meaning set forth in the Collaboration
Agreement.
2. Section 2.12 is amended to read as
follows:
“2.12 “Bare Probe”
means a MGB Oligonucleotide provided alone or with
primers.”
3. Section 2.18 is amended to read as
follows:
“2.18 “Human In Vitro
Diagnostics Field (“HIVD Field”) means products and
processes for the measurement of attributes, characteristics,
diseases, traits or other conditions of a human being for the
medical management of that human being.”
4. Section 5.04(a) is amended, effective for all
Net Sales after September 30, 2001, to read as follows:
“5.04 (a) Percentage
Royalties . ABG will pay to Epoch percentage royalties on the
Net Sales of Licensed Products sold or otherwise disposed of under
the license granted under Sections 4.01 and 4.02 of this Agreement.
For purposes of determining the royalty payable with respect to a
given Licensed Product, Licensed Products (other than algorithms
and related software) shall be classified into three categories as
follows:
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Category 1
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A Licensed
Product comprising an MGB Oligonucleotide (with or without a
fluorescent label and/or a fluorescent quencher) for which an ABG
customer specifies primer (if any) and probe sequences (except in
the case of certain reorders described under Category 2 below).
Bare Probes will be considered Category 1 Licensed Products.
ABG’s current TaqMan TM MGB Probes product is an example of
a Category 1 Licensed Product.
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Category 2
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A Licensed
Product comprising an MGB Oligonucleotide (with or without a
fluorescent label and/or a fluorescent quencher) for which an ABG
customer specifies a target sequence to ABG, and ABG determines
primer and probe sequences. In a re-order situation where the
customer provides primer and probe sequences, which primer and
probe sequences were originally determined by ABG as part of an
original order, then such reordered Licensed Product shall also be
deemed a Category 2 Licensed Product. AB’s current
“Assay-by-Design” product is an example of a Category 2
Licensed Product.
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Category 3
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A Licensed
Product comprising an MGB Oligonuc
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