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E XHIBIT
10.42
[ * ] = 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 NO. ONE
TO
EXCLUSIVE LICENSE
AGREEMENT
This Amendment No. One
(“Amendment”) to the Exclusive License Agreement
(“Agreement”) dated April 4, 2005 is entered into
this 2 nd
day of October, 2007 by and
between Kosan Biosciences Incorporated, having an address at 3832
Bay Center Place, Hayward, California 94545 (“Company”)
and the State of Oregon, acting by and through the State Board of
Higher Education on behalf of Oregon State University, an
institution of higher education in the State of Oregon, located at
Corvallis, Oregon (“University”).
RECITALS
WHEREAS, University owns U.S.
Patent No. 7,145,018 (“‘018 patent”) that is
exclusively licensed to Company in accordance with this
Agreement;
WHEREAS, the ‘018
patent is involved in Interference No. 105,557 declared by the
United States Patent and Trademark Office on June 29,
2007;
WHEREAS, also involved in the
interference is U.S. Application Serial No. 10/435,408 owned
by the Sloan-Kettering Institute for Cancer Research
(“SKI”) that is exclusively licensed to Company under
the terms of the Research and License Agreement dated
August 25, 2000 and related amendment;
WHEREAS, Company, University
and SKI on October 2, 2007 entered into a Settlement Agreement
setting forth the agreed upon plan to conduct, and resolve all
issues in, Interference No. 105,557 and;
WHEREAS, in furtherance of
the resolution of Interference No. 105,557, Company and
University wish to make certain amendments to the
Agreement.
NOW THEREFORE, the Company
and University agree as follows:
1. Article I is hereby
amended by the addition of the following new
definitions:
T. “SKI
Agreement” shall mean that certain Research and License
Agreement and any amendments between Company and the
Sloan-Kettering Institute for Cancer Research dated August 25,
2000.
U. “SKI Patent
Rights” shall mean any claim of any issued patents licensed
to Company by the Sloan-Kettering Institute for Cancer Research
under the SKI Agreement that have any composition of matter, method
of making, method of use or administration or formulation claims
covering Company’s trans-9,10-dehydroepothilone D compound
designated KOS-1584 (or R1645), unless such claim has lapsed,
expired, been canceled, been abandoned or been held invalid by a
court or other appropriate body of competent jurisdiction in a
decision that is unappealable or unappealed within the time allowed
for appeal or been admitted to be invalid or unenforceable through
reissue or disclaimer or otherwise.
2. Article V, Section A is
hereby amended to read in its entirety as follows.
2
[ * ] = C ERTAIN
CONFIDENTIAL INFORMATION
CONTAINED IN THIS
DOCUMENT , MARKED BY
BRACKETS , HAS BEEN
OMITTED AND FILED
SEPARATELY WITH THE S
ECURITIES AND E
XCHANGE C OMMISSION
PURSUANT TO R ULE 24
B -2 OF THE S
ECURITIES E XCHANGE A
CT OF 1934, AS
AMENDED .
A. In addition to license
fees payable under Article IV, Company agrees to pay University a
royalty of [ * ] percent ( [ * ] %) of Net Sales of
Licensed Products sold in countries where there is a Valid Claim in
[ * ] within Licensed Patents by Company, its distributors,
Affiliates and is sublicenses of Licensed Patents. If there is no
[ * ] in [ * ] within Licensed Patents covering
Company’s compound designated KOS-1584 requiring
paym
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