Exhibit
10.18(b)
[********] 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 406 of the Securities Act
of 1933, as amended.
August 16,
2005
University of Kentucky
Research Foundation
[207 Administration
Building]
A144 ASTeCC
Building
University of
Kentucky
Lexington, Kentucky
40506-0286
Attention: Donald
Keach
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Re:
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Amendment No. 1 to
License Agreement
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Dear
Mr. Keach:
Reference is made
to the License Agreement between Targacept, Inc. (“
Targacept ”) and University of Kentucky Research
Foundation (“ UKRF ”) dated May 26, 1999
(the “ Agreement ”).
Targacept and UKRF
believe it is in their mutual best interest to amend the Agreement
to clarify the intent of certain provisions. Section 13.2 of
the Agreement provides that the Agreement is not subject to any
change or modification except by execution of a written instrument
by the parties. Accordingly, for good and valuable consideration,
the receipt and sufficiency of which are hereby acknowledged,
Targacept and UKRF agree as follows:
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1.
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the Agreement is hereby
amended by:
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a.
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deleting Section 1.2 in
its entirety and replacing it with the following:
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“1.2
“Patent Rights” shall mean, collectively, (i) the
patents listed on Attachment A , (ii) all patents that
issue or have issued from patent applications that resulted in the
patents listed on Attachment A and all reexaminations,
reissues, revisions, substitutes, renewals or extensions thereof,
and (iii) all other United States and foreign patents that
issue or have issued from applications that claim priority to
patent applications that resulted in the patents listed on
Attachment A , including, without limitation, continuation
applications, continuation-in-part applications, divisional
applications, substitute applications, reissue applications or
requests for examination and foreign applications of any of the
foregoing.”;
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b.
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adding the following as
Section 1.4:
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“1.4
“Assigned Rights” shall mean, collectively,
(i) the patent applications listed on Attachment B ,
(ii) all patents that issue or have issued from patent
applications listed on Attachment B and all reexaminations,
reissues, revisions, substitutes, renewals or extensions thereof,
and (iii) all other United States and foreign patents that
issue or have issued from applications that claim priority to
patent applications listed on Attachment B , including,
without limitation, continuation applications, continuation-in-part
applications, divisional applications, substitute applications,
reissue applications or requests for examination and foreign
applications of any of the foregoing.”;
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c.
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adding the following as
Section 1.5
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“1.5
“Excluded Amount” shall mean any amount received by
TARGACEPT from a sublicensee in the case of the Patent Rights or a
licensee in the case of the Assigned Rights: (i) to fund
research and development; (ii) as payment for the manufacture
or supply of any compound or chemical entity; (iii) that
TARGACEPT is required to repay (e.g., a loan); (iv) as payment
for securities of TARGACEPT; or (v) based on or determined by
reference to sales of any compound or product in any country in
which there is no Valid Claim included in the Patent Rights or
Assigned Rights, as the case may be, that covers such compound or
product.
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d.
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adding the following as
Section 1.6:
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“1.6
“Valid Claim” shall mean: (i) any claim of an
issued patent t
