[ * ] =
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 TO COLLABORATION
AGREEMENT
BETWEEN
ONYX PHARMACEUTICALS, INC. AND BAYER CORPORATION
This Amendment to
the Collaboration Agreement (the “Second Amendment”) is
dated February 1, 1999 (“the Effective Date of the
Second Amendment”) by and between ONYX PHARMACEUTICALS, Inc.,
a California corporation having its principal place of business in
Richmond, California (“Onyx”) and BAYER CORPORATION, an
Indiana corporation having its principal place of business in
Pittsburgh, Pennsylvania (“Bayer”). Bayer and Onyx may
be referred to herein individually as “Party,” or
collectively, as the “Parties.”
Whereas, Onyx and Bayer
(under the name Miles Inc., the prior name of Bayer) entered into a
Collaboration Agreement dated April 22, 1994, as amended on
April 24, 1996 (the “First Amendment”) (such
agreement as amended by the First Amendment being referred to
herein as the “Collaboration Agreement”);
and
Whereas, in connection with
the end of the Research Term, Onyx and Bayer desire to amend and
modify the terms of the Collaboration Agreement so as to:
(i) set forth certain understandings regarding the possible
development of raf kinase inhibitors; (ii) more precisely
define the aspects of the Parties’ research following the end
of the Research Term which will, and will not, be within the scope
of the Collaboration Agreement; and (iii) more precisely
define Onyx’ remaining Research obligations during the
balance of the Research Term;
Now Therefore, in
consideration of the covenants contained in this Amendment, the
Parties agree as follows:
1. Capitalized Terms Previously Defined. Capitalized
terms used but not defined herein shall have the same meanings
given to them in the Collaboration Agreement.
2. Amendment of Defined Term: Collaboration Compound.
Section 1.9 of the Collaboration Agreement is hereby amended
to read in its entirety as follows:
1.9
“Collaboration Compound” means, except as provided
below, any composition of matter that is discovered, identified or
synthesized by or on behalf of Onyx or Bayer or an Affiliate of
either of them, and is recognized for its activity for inhibiting
the activity of a target within the Residual Field of Collaborative
Research prior to the date which is the earlier of (a) the
date such target is removed from the
[ * ] =
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.
1.
Residual Field of
Collaborative Research pursuant to Section 12 below, or
(b) the first anniversary of the end of the Research
Term.
As
used herein, the activity of a composition of matter for inhibiting
a target within the Residual Field of Collaborative Research will
be “recognized” if it satisfies that standard for a ras
positive set forth in Exhibit D, or other specific activity in
a particular assay or assays within the Residual Field of
Collaborative Research established by the JRDC from time to time
pursuant to Section 6.3.
Notwithstanding
the foregoing, the term “Collaboration Compound” shall
not include:
(a) any composition of matter marketed by Bayer or an
Affiliate of Bayer as of April 22, 1994 or as to which Bayer or an
Affiliate of Bayer is conducting human clinical trials or have
approved the commencement of preclinical development (as determined
by the appropriate committee of Bayer or an Affiliate of Bayer), as
of April 22, 1994; or
(b) any composition of matter owned by Bayer or Onyx or an
Affiliate of either of them that could become subject to this
Agreement by reason of an expansion of the Field of Collaborative
Research after April 22, 1994 but as to which marketing rights
have been granted to a Third Party prior to such expansion;
or
(c) any composition of matter that is a Back-Up Compound
after [ * ] years following the end of the Research Term.
Rights in such compounds after such [ * ] year period shall
be allocated as set forth on Exhibit A(3).
3. Amendment of Defined Term: Post-Collaboration
Compound. Section 1.39 of the Collaboration Agreement is
hereby amended to read in its entirety as follows:
1.39
“Post-Collaboration Compound” means any composition
of matter synthesized, identified or discovered by Onyx or
Bayer:
(a) that is contained within a chemical genus as defined in
any pending or issued claim of any unexpired Bayer Patent or Onyx
Patent filed in the United States, the United Kingdom, France, or
Germany or in the European Patent Office and as to which at least
one member of such chemical genus is a Collaboration Compound,
and
(b) that is recognized for its activity in inhibiting a
target within the Residual Field of the Collaborative Research, as
defined in Section 1.55, by Onyx or Bayer during the [ *
] year period after the end of the Research Term, pursuant to
Section 9.6(d) (at a royalty rate pursuant to
Section 16.6).
4. Additional Defined Term. The Collaboration Agreement
is hereby amended to add the following additional defined
term:
1.55
“Residual Field of Collaborative Research” means,
subject to Section 12 of the Second Amendment, the following
targets: (i) [ * ] , (ii) [ * ] ; (iii) [ * ]
; (iv) [ * ] ; (v) [ * ] ; and (vi) those
targets, if any, from the [ * ] Project which the
JRDC
[ * ] =
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.
2.
designates during
the [ * ] following the end of the Research Term as being
within the Residual Field of Collaborative Research.
5. Additional Defined Term. The Collaboration Agreement
is hereby amended to add the following additional defined
term:
1.56
“Synteni Project” means the project underway as of
the Effective Date of the Second Amendment, between Onyx and
Synteni (a subsidiary of Incyte Pharmaceuticals) to identify genes
whose mRNA expression level is specifically modulated
(overexpressed or repressed) in response to the presence of an
inducible D12 mutant allele of the K-ras gene (K-rasD12) in
hum
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