Exhibit 10.13
FOURTH AMENDMENT
TO
LICENSE AGREEMENT
THIS FOURTH AMENDMENT TO THE LICENSE
AGREEMENT (the
“Amendment”), is entered into as of the 20th day of
June 2008 and made effective as of the Signing Date (for purposes
of this Amendment, such term shall have the meaning set forth in
that certain Master Termination Agreement of even date herewith
among the parties hereto (the “Master Termination
Agreement”), by and between The Trustees of Columbia
University in the City of New York, a New York corporation
(“Columbia”), and Omnimmune Corp., a Texas corporation
(the “Company”) (together, Columbia and Company shall
be referred to as the “Parties”). For
purposes of this Amendment, the phrase “License
Agreement” shall mean that certain License Agreement entered
into by and between the Columbia and Company as of the 1
st day of February 2005, as amended March 29, 2005;
June 10, 2005 and January 31, 2007; and unless otherwise defined
herein, capitalized terms and phrases shall have the meaning
ascribed thereto in the License Agreement.
WHEREAS , the Company has requested, and Columbia has
agreed, to amend the License Agreement upon the terms and
conditions set forth in this Amendment;
NOW THEREFORE , for good and valuable consideration,
including, without limitation, the promises and the mutual
covenants contained herein, the Parties agree as
follows:
Section
1. Amendments. Effective upon the Signing
Date, the License Agreement is hereby amended as
follows:
|
|
Section 1,
entitled “Definitions,” shall be amended by deleting in
its entirety Subsection 1a., thereof entitled
“Affiliate,” and in lieu thereof, the following new
section shall be added:
|
a.
“Affiliate” means, with respect to any person or
entity, a person or entity that directly or indirectly controls, is
controlled by or is under common control with such person or
entity. For purposes of this definition,
“control” shall mean beneficial ownership (direct or
indirect) of more than 50% of the outstanding voting stock or other
voting rights entitled to elect directors (or in the case of an
entity that is not a corporation the election or appointment of the
management thereof).
|
|
Section 3,
entitled “Royalties and Payments,” shall be amended as
follows:
|
a. In consideration
of the license granted under Section 2.a of this Agreement, the
Company shall pay to Columbia:
|
|
a reimbursement
in the amount of $25,000 for past patent expenses, upon the initial
$1,000,000 of sales of Licensed Products by Company, its successors
or Sublicensees or any of their respective Affiliates (or any
combination thereof);
|
|
|
a running
royalty, to be determined on a Territory (as defined below) by
Territory basis, equal to the greater of either 1% or the Pass-Thru
Multiple (as defined below) of Net Sales of all Licensed Products
that involve use of Licensed Material or Licensed Information but
are not covered by a Claim of a Licensed Patent (the
“Non-Patented Products”) for a term of ten (10) years
from the date of the First Sale of each Non-Patented Product;
provided , however , that in no event shall the
running royalty under this Subsection (ii) exceed 2%;
and
|
|
|
a running
royalty, to be determined on a Territory by Territory basis, equal
to the greatest of (1) 2%, (2) the Pass-Thru Multiple, if
applicable, or (3) the Transaction Multiple (as defined below), if
applicable, of Net Sales of all Licensed Products covered by a
Claim of a Licensed Patent licensed hereunder to the Company (the
“Patented Products”), for a period of ten (10) years
from the date of First Sale of each new Patented Product in a
Territory or the last to expire Licensed Patent in such Territory,
whichever is longer; provided , however , that in no
event shall the running royalty under this Subsection (iii) exceed
4%.
|
|
|
Definitions. For purposes of this
Section 3.a, the following term and phrases shall have the meaning
ascribed thereto:
|
|
|
“Acquisition” shall mean the initial
consummation of any of the following, effected, directly or
indirectly, in one or more transactions: (x) any sale,
lease, license or other transfer or disposition of all or a
majority of the business or assets of the Company, including,
without limitation, by means of any revenue sharing, participation
or other arrangement that confers all or a majority of the benefits
and economic indicia of ownership of such business or assets; or
(y) any merger, consolidation, conversion, other business
combination, share exchange, sale or other transfer or disposition
of shares, spin-off, spin-out, contractual transfer of control or
voting power, reorganization, recapitalization or other transaction
or transactions involving the Company, if after giving effect to
any such transaction or transactions described in this clause (y)
the holders of record or beneficial owners of the voting shares of,
or other voting interests in, the Company prior to the first such
transaction no longer hold or own beneficially (in substantially
the same percentages) a majority of the voting shares of, or other
voting interests in, the Company (a “Control Shift”);
provided that neither issuances by the Company of its capital stock
(whether as an original issuance or from treasury shares) to
investors, solely for bona fide equity financing purposes nor any
Control Shift that may occur solely by means of (aa) the private
placement of up to 3,200,000 Units (as such term is defined in the
PAA (as defined below) conducted pursuant to that certain
Placement Agency Agreement, dated June 20, 2008, between
the Company and New Castle Financial Services, LLC, as such
agreement is in effect on the date hereof, and/or (bb) the merger
of the Company into a wholly-owned subsidiary Roughneck Supplies,
Inc. (the “Merger Sub”), pursuant to a Merger Agreement
between the Company and Roughneck Supplies, Inc. (or any successor
thereof) and the Merger Sub., substantially upon the terms
disclosed in the draft Confidential Private Placement Memorandum
with respect to the sale of up to $8 million of units,
furnished to Columbia on the date hereof, shall, in and of
themselves, be deemed to be an Acquisition. Without limitation as
to Section 20, the term “Company,” as used in this
definition, shall include any Successor Issuer.
|
|
|
“Acquisition Pass-Thru Multiple”
shall mean the Pass- Thru Multiple required to be paid by Company
in respect of Net Sales under any sublicense between Company and
any person or entity that is or becomes an Acquiring Sublicensee
(as defined below), whether or not such sublicense remains in
effect following an Acquisition.
|
|
|
“Acquiring Sublicensee” shall mean,
any Sublicensee (including any Affiliate of any Sublicensee) that
has entered into any Acquisition transaction.
|
|
|
“Pass-Thru Multiple” shall mean the
product of the Pass-Thru Percentage (as defined below) multiplied
by the royalty rate required to be paid by any Sublicensee to
Company on account of Net Sales of, in the case of Section 3.a(ii)
above, Non-Patented Licensed Products or, in the case of Section
3.a(iii) above, Patented Products, as the case may be;
and
|
|
|
“Pass-Thru Percentage” shall mean
that percentage rate as may be applicable under Section 3.b below,
for either sublicensed therapeutics or sublicensed diagnostics and
in effect from time to time thereunder.
|
Example: if prior to the first animal
efficacy study Company were to sublicense a Patented Product to a
pharmaceutical company in exchange for a $1,000,000 upfront license
fee and a 15% sublicense royalty on Net Sales, then, in the absence
of an Acquisition, Company would owe Columbia the following
amounts
A sublicense
fee on Sublicense Revenue equal to 22.5% of
$1,000,000
A running
royalty of the greater of 2% of Net Sales or 3.375% (22.5% x
15%)
|
