Exhibit 10.1
FIRST AMENDMENT TO PATENT
LICENSE AGREEMENT
THIS AMENDMENT
(the "Amendment") is made and entered into as of May 30, 2000 (the
"Effective Date"), to the Patent License Agreement between
Pharmacyclics, Inc. ("LICENSEE") and the Board of Regents ("BOARD")
of the University of Texas System ("SYSTEM"), effective May 19,
1992 (the "Agreement," all capitalized terms having the meanings as
defined in the Agreement).
WHEREAS, BOARD
and SYSTEM, on behalf of its component institution the University
of Texas at Austin ("UNIVERSITY"), and LICENSEE desire to enter
into this Amendment in order to resolve certain ambiguities in the
original language of the Agreement and to better reflect the
parties' understanding given the development status of the LICENSED
SUBJECT MATTER;
NOW, THEREFORE,
in consideration of the mutual covenants and agreement of terms set
forth herein, and for good and valuable consideration, the receipt
and sufficiency of which is hereby acknowledged, the parties hereto
agree as follows:
-
Sections 2.8 and
2.10 of the Agreement are deleted in their entirety and replaced,
and new Sections 2.11, 2.12 and 2.13 are added, as
follows:
2.8
SALE(S), SELL or SOLD shall mean the transfer or disposition of a
LICENSED PRODUCT for value to a party other than LICENSEE, or a
SUBSIDIARY or SUBLICENSEE, but, shall not include any transfer of
LICENSED PRODUCT between LICENSEE and a SUBSIDIARY or SUBLICENSEE.
Goods placed in inventory or on consignment shall not be deemed
SOLD until paid for by an independent third party purchaser. SALES
shall not include the distribution of reasonable and customary
quantities of complimentary samples and free "trade goods"
including those provided to indigent patient programs.
2.10 NET SALES
shall mean the gross revenues collected by LICENSEE, its SUBSIDIARY
or SUBLICENSEE from the SALE of LICENSED PRODUCTS during a given
period, less deduction for:
(a)
credits or allowances, if any, actually granted on account of price
adjustments, rejection or return of LICENSED PRODUCTS previously
SOLD, whether during the specific period or not, rebates,
adjustments and discounts, including charge backs;
(b)
excise or ad valorem taxes, sales, use or other taxes or
duties imposed upon and paid with respect to such sales (excluding
franchise, income, or other taxes levied with respect to gross
receipts);
(c)
separately itemized insurance and transportation costs incurred in
shipping LICENSED PRODUCTS to independent parties; and
(d)
promotional, cash, trade or volume discounts
(such deduction not to exceed
the corresponding gross revenues).
2.11 SUBLICENSE
shall mean a grant, by LICENSEE to an independent third party that
is not a SUBSIDIARY, of the commercial right to manufacture, use or
SELL (including, e.g., marketing, distribution and supply) under
the LICENSED SUBJECT MATTER.
2.12 SUBLICENSEE
shall mean a party that has been granted a SUBLICENSE.
2.13
SUBLICENSING FEE(S) shall mean payments (in money, or money's worth
as described in Section 5.8(d) herein) received by LICENSEE from a
SUBLICENSEE, which payments are on account of the grant of a
SUBLICENSE and are not otherwise attributable to SALES of LICENSED
PRODUCT. SUBLICENSING FEES excludes payments in the nature of
reimbursements and/or support for future expenditures on research
and development, technology transfer, the transfer of materials for
clinical and other research, manufacturing process development and
scale-up and the like).
B.
Section 5.1 of the Agreement is deleted in its entirety and
replaced with the following:
5.1
Subject to the other terms of this Article V and in consideration
of rights granted by BOARD to LICENSEE under this Agreement,
LICENSEE agrees to pay BOARD the following:
(a)
A running royalty as provided in paragraph 5.2 in the case of SALES
by LICENSEE, its SUBSIDIARIES and/or its SUBLICENSEES.
(b)
As payment in full for any and all amounts due BOARD under Section
5.1(b) of the Agreement (prior to the present Amendment), LICENSEE
agrees to pay the following fixed amounts:
·
One
Hundred Thousand Dollars ($100,000), within thirty (30) days of
LICENSEE's receipt of a fully executed original of this
Amendment;
·
Fifty
Thousand Dollars ($50,000) by August 14, 2001;
·
Fifty
Thousand Dollars ($50,000) by August 14, 2002;
·
Fifty
Thousand Dollars ($50,000) by August 14, 2003; and
·
Fifty
Thousand Dollars ($50,000) by August 14, 2004.
(c)
Commencing January 1, 2005 through termination of the Agreement,
three percent (3%) of any SUBLICENSING FEES (less any tax imposed
or governmental charge assessed against such fees) received by
LICENSEE in a given calendar year. The maximum amount payable to
BOARD in any such calendar year on account of such SUBLICENSING
FEES shall not exceed Fifty Thousand Dollars ($50,000). The amount
of SUBLICENSING FEES received in any given calendar year, as used
in calculation of this payment and LICENSEE's
correspondin
