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E XHIBIT
10.40
[ * ] = 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 .
AMENDMENT TO
RESEARCH
AND LICENSE
AGREEMENT
This Amendment
(“Amendment”) to the Research and License Agreement
(“Agreement”) dated August 25, 2000, as amended by
the Consent and Amendment dated September 16, 2002, is entered
into this 2 nd day
of October, 2007 by and between Kosan Biosciences Inc., having an
address at 3832 Bay Center Place, Hayward, California 94545
(“Licensee”) and the Sloan-Kettering Institute for
Cancer Research, having a place of business at 1275 York Avenue,
New York, New York 10021 (“SKI”).
RECITALS
WHEREAS, SKI owns U.S.
Application Serial No. 10/435,408 (“‘408
application”) that is exclusively licensed to Licensee in
accordance with this Agreement;
WHEREAS, the ‘408
application is involved in Interference 105,557 declared by the
United States Patent and Trademark Office on June 29,
2007;
WHEREAS, also involved in the
interference is U.S. Patent No. 7,145,018 (“‘018
patent”) owned by the State of Oregon
(“University”) that is exclusively licensed to Licensee
under the terms of the Exclusive License Agreement dated
April 4, 2005 and related amendment;
WHEREAS, Licensee, SKI and
University 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, Licensee and SKI
wish to make certain amendments to the Agreement.
NOW THEREFORE, Licensee and
SKI agree as follows:
1. Article 1 is hereby
amended by the addition of the following new
definitions:
1.45 “OSU
AGREEMENT” shall mean that certain Exclusive License
Agreement between LICENSEE and the State of Oregon dated
April 4, 2005.
1.46 “OSU PATENT
RIGHTS” shall mean any claim of any issued patents licensed
to LICENSEE by the State of Oregon under the OSU AGREEMENT that
have any composition of matter, method of use or administration or
formulation claims covering LICENSEE’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 unforceable through reissue or disclaimer or
otherwise.
2. Article 6 is hereby
amended by the addition of new Section 6.5 as
follows:
6.5 LICENSEE hereby agrees to
reimburse SKI for its actual out-of pocket expenses incurred after
[ * ] for conducting Interference No. 105,557 up to a
total of [ * ] . Within sixty
2
[ * ] = C ERTAIN
CONFIDENTIAL INFORMATION
CONTAINED IN THIS
DOCUMENT , MARKED BY
BRACKETS , HAS BEEN
OMITTED AND FILED
SEPARATELY WITH THE S
ECURITIE
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