Confidential Materials omitted and
filed separately with the
Securities and Exchange Commission. Asterisks denote
omissions.
AMENDMENT NO. 1 TO LICENSE
AGREEMENT
THIS AMENDMENT
(this “ Amendment ”) dated as of April 23,
2009 (“ Amendment Effective Date ”) is between
Alseres Pharmaceuticals, Inc. (f/k/a Boston Life Sciences, Inc.), a
Delaware corporation with offices at 85 Main Street, Hopkinton, MA
01748 (“ Alseres ”) and BioAxone Therapeutic
Inc., a Canadian corporation with offices at 1100 Rene-Levesque
West, 25 th
Floor, Montreal, QC H3B 5C9 Canada
(“ BA ” and collectively with Alseres, the
“ Parties ”).
WHEREAS Alseres
and BA entered into that certain License Agreement dated as of
December 28, 2006 (“ License Agreement ”)
whereby BA exclusively licensed to Alseres patent rights and
know-how relating to fusion proteins, the whole as provided in the
License Agreement.
WHEREAS the
parties have entered into that certain Option Agreement dated as of
April 30, 2008 (the “ Option Agreement ”)
whereby an option to amend the License Agreement was granted by BA
to Alseres (the “ Option ”).
WHEREAS the Option
has expired on December 31, 2008.
WHEREAS the
parties desire to provide for a period of time during which Alseres
will attempt to enter into a sublicense of its rights under the
License Agreement, and to provide for the termination of the
License Agreement in the event no such sublicense is entered into,
all on the terms and conditions set forth in this
Amendment.
NOW THEREFORE, BA
and Alseres agree as follows:
1.
Definitions . When used in this Amendment, each of the
following terms shall have the meanings set forth below and such
definitions shall be included in Article 1 of the License
Agreement. Capitalized terms not otherwise defined herein shall
have the meanings ascribed to them in the License
Agreement.
“ Minimum
Terms ” shall mean the following: (i) total cash
upfront and milestones payments to Alseres by sublicensee shall not
be less than [**] Dollars (US $[**]); (ii) royalties payable
to Alseres by sublicensee shall not be less than [**] percent
([**]%) of Net Sales of Licensed Products for treatment of spinal
cord injury; and (iii) sublicensee shall undertake to
[**].
“
Sublicense Agreement ” means a definitive agreement
between Alseres and a third party unrelated, directly or
indirectly, to Alseres or its directors, officers, employees,
shareholders or lenders, pursuant to which Alseres sublicenses to
such third party all of Alseres’ licenses under the License
Agreement, and which contains the Minimum Terms.
“
Sublicense Period ” means a period of six
(6) months beginning on the Amendment Effective Date, as
extended, if applicable, in accordance with Section 2 of this
Amendment.
(a) The
text of Section 3.1(b) of the License Agreement is hereby
replaced in its entirety by the indication “INTENTIONALLY
DELETED.”
(b) The
text of Section 3.1(c) of the License Agreement is hereby
replaced in its entirety by the indication “INTENTIONALLY
DELETED.”
(c) Section 3.2
of the License Agreement is hereby replaced in its entirety as
follows:
“
Sublicense Period . During the Sublicense Period, Alseres
will use reasonable commercial efforts to enter into a Sublicense
Agreement. The Sublicense Period shall be automatically extended
for an additional ninety (90) days if, prior to the expiration
of the initial six (6) month period, Alseres shall have
executed a binding term sheet (subject only to ordinary due
diligence) with respect to a Sublicense Agreement. In the event
that Alseres wishes to enter into a Sublicense Agreement which does
not include the Minimum Terms, then Alseres shall provide a written
notice to BA prior to the expiry of the Sublicense Period together
with the terms and conditions of the proposed Sublicense Agreement.
Alseres and BA shall promptly meet to discuss in good faith whether
Alseres should be permitted to enter into such Sublicense
Agreement. Alseres shall not be entitled to execute such Sublicense
Agreement without the approval of BA. The Sublicense Period shall
automatically terminate in case of insolvency of Alseres (as
described in Section 8.4). The terms and conditions of the
Sublicense Agreement shall not be less stringent than those set
forth herein. Alseres shall provide to BA a copy of the Sublicense
Agreement at least five (5) business days prior to its
execution and, when executed, a copy of the executed version.
Alseres shall require the sublicensee to comply with the provision
hereof as applicable. Alseres hereby guarantees, and shall remain
primarily liable for, the performance of the sublicensee under this
Agreement. The Sublicense Agreement shall include an obligation for
the sublicensee to account for and report its Net Sales to Alseres
and BA.”
(d) Section 3.4
of the License Agreement is hereby replaced in its entirety as
follows:
“
Reporting and Cooperation . During the Sublicense Period,
Alseres shall have sole and exclusive control of the process
leading up to a Sublicense Agreement. However, if BA identifies
potential sublicense candidates, BA shall immediately inform
Alseres of any such potential sublicense candidates and immediately
turn over control of the relationship with such candidate to
Alseres. Alseres will use reasonable efforts to pursue all such
leads provided by BA. Neither BA nor any of its representatives
will in any way attempt to negotiate on behalf of Alseres or hold
itself out as an agent of Alseres. On the first (1st) and fifteenth
(15th) day of each month during the Sublicense Period, Alseres will
provide BA with a written
status report
of its sublicense efforts, including but not limited to parties
contacted, status of discussions and any other pending
matters.”
(e) Exhibit E
and Exhibit F of the License Agreement are hereby deleted in
their entirety.
(f) The
text of Section 2.1(b) of the License Agreement is hereby
replaced in its entirety by the indication “INTENTIONALLY
DELETED.”
3.
Financial Provisions . Sections 4.2 through 4.8 of the
License Agreement are hereby deleted in their entirety and replaced
with the following new Section 4.2:
“
Sublicense Income . If Alseres enters into a Sublicense
Agreement during the first three (3) months of the Sublicense
Period, [**] percent ([**]%) of all payments (of whatever nature
and whether in cash or otherwise) to be received by Alseres
pursuant to the Sublicense Agreement shall be paid to BA within
five (5) days of receipt by Alseres. If Alseres enters into a
Sublicense Agreement after the first three (3) months of the
Sublicense Period but before the end of the Sublicense Period, [**]
percent ([**]%) of all payments (of whatever nature and
whet
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