Exhibit 10.42
[*] = 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 .
FOURTH AMENDMENT to LICENSE
AGREEMENT
UC CONTROL NUMBER 1997-04-A493,
Effective March 26, 1997
between DYNAVAX TECHNOLOGIES
CORPORATION
and THE REGENTS OF THE UNIVERSITY OF CALIFORNIA
for
“Method, Compositions and
Devices for Administration of Naked Nucleotides Which
Express Biologically Active Peptides
and
Immunostimulatory Oligonucleotide
Conjugates”
This amendment (“4
th Amendment”) is made by and between Dynavax
Technologies. Corporation, a Delaware corporation having an address
at 2929 7 th
Street, Suite 100, Berkeley, CA
94710 (“Licensee”) and The Regents of the University of
California, a California corporation having its statewide
administrative offices at 1111 Franklin Street, Oakland, California
94607-5200 (“The Regents”), represented by its San
Diego campus having an address at University of California, San
Diego, Technology Transfer Office, Mail-code 0910, 9500 Gilman
Drive, La Jolla, California 92093-0910 (“UCSD”) to a
certain existing license agreement between the two
parties.
When signed by both parties, this
4 th
Amendment is effective as of
June 1, 2009 (“4 th Amendment Effective Date”).
RECITALS
Whereas , Licensee and The Regents entered into a
license agreement with an Effective Date of March 26, 1997
(“License Agreement”) for UCSD Case Docket Nos.
UC1992-296 (now renumbered as SD1992-C96) and titled “Method,
Compositions and Devices for Administration of Naked Nucleotides
Which Express Biologically Active Peptides”; and 1997-138
(now renumbered as SD1997-B38) and titled “Immunostimulatory
Oligonucleotide Conjugates”;
Whereas , Licensee and The Regents have amended the
License Agreement three times, on July 23, 1997; on
October 2, 1998 and on September 22, 1999; and
Whereas , Licensee’s [*] is [*] with [*] specified
in the amendment dated September 22, 1999 and Licensee has
requested [*] to conform with [*];
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C
ERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT , MARKED BY BRACKETS , IS FILED 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 .
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Now Therefore , the parties agree to amend the License
Agreement as set forth herein:
Licensee will pay The Regents an
amendment fee of [*] in three installments as follows: the first
payment of [*] shall be paid within 30 days of the 4
th Amendment Effective Date, the second payment of
[*] shall be paid on the first anniversary of the 4
th Amendment Effective Date and the third payment
of [*] shall be paid on the second anniversary of the 4
th Amendment Effective Date. However, if the
License Agreement is terminated, all remaining amount of all unpaid
installments will be immediately due and payable.
Background Paragraph A shall be
deleted and restated as follows:
“A. Certain inventions,
generally characterized in the parent applications
entitled “Method, Compositions and Devices
for Administration of Naked
Nucleotides Which Express Biologically Active
Peptides” UC Case No. SD1992-C96
(aka UC 92-296) and “Immunostimulatory
Nucleotide Sequences”
UC Case No. SD1997-B38 (aka UC 97-138)
(collectively the
“Invention”) were made in the course
of research at the University of
California, San Diego by [*]
(“Inventors”) and are covered by
Regents Patent Rights as defined below.”
Paragraph 1.1 shall be deleted
and restated as follows :
“1.1 Regents Patent
Rights” means any subject matter claimed or disclosed in any
of the following:
[*]
by Inventors and assigned to The
Regents; and continuation applications thereof, and divisions,
substitutions, and continuations-in-part application, but only to
the extent claims in any such continuation-in-part application
contain subject matter included in the foregoing listed
applications as originally filed in the U.S. Patent and Trademark
Office (“USPTO”); any patents issuing on said
applications including reissues, reexaminations and extension; and
any corresponding foreign applications or patents (including
inventor’s certificates).”
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[*] =
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C
ERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT , MARKED BY BRACKETS , IS FILED 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 .
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Paragraph 1.6 shall be deleted and restated as
follows:
“1.6 “Attributed
Income” means the following types of income received by
Licensee [*] from granting rights, granting an option to certain
rights or forbearing the exercise of any rights granted to LICENSEE
under this Agreement: upfront licens