Exhibit 10.5
FIRST AMENDMENT TO
TECHNOLOGY LICENSE
AGREEMENT
This FIRST AMENDMENT TO TECHNOLOGY
LICENSE AGREEMENT (this “First Amendment”) is made and
entered into as of the 3rd day of July, 2008, by and between
THOMAS J. SHAW , a resident of the State of Texas
(“Licensor”) and RETRACTABLE TECHNOLOGIES, INC.,
a Texas corporation (“Licensee”).
RECITALS :
A.
Licensor and Licensee have
heretofore entered into that certain Technology License Agreement
dated as of June 23, 1995, a copy of which is attached hereto
as Exhibit “A” (the
“Agreement”), pursuant to which Licensor agreed to
grant Licensee an exclusive license to manufacture, market, sell,
distribute and otherwise exploit certain retractable syringe
technology covered by certain patents and patent applications owned
by Licensor.
B.
Licensor and Licensee desire to
amend the Agreement in order to include certain additional patent
applications owned by Licensor to the definition of “Patent
Properties” as set forth in the Agreement so that such
additional patent applications would be covered by the license
granted by Licensor to Licensee pursuant to the
Agreement.
NOW, THEREFORE, in consideration of
the premises and the mutual agreements herein set forth, the
parties hereby agree as follows:
1.
New Item 3 of
Section One .
The existing item 3 of Section One of the Agreement entitled
“Subject Matter” is hereby deleted in its entirety and
the following new item 3 is hereby inserted in the
Agreement:
3.
The subject matter of this Agreement
includes all of Licensor’s patents and patent applications on
retractable syringe technology, both domestic and foreign,
including any continuations, divisions, and reissues thereof, as
well as all foreign counterpart patent applications that can be
filed and improvements thereof. This Agreement specifically
includes the following “Patent Properties” which are
set forth below:
U.S. Patent 5,120,310, Issued
June 9, 1992, entitled “Nonreusable
Syringe;”
U.S. Patent 5,188,613, Issued
February 23, 1993, entitled “Nonreusable Syringe with
Safety Clip;”
U.S. Patent 5,267,961, Issued
December 7, 1993, entitled “Nonreusable Syringe with
Safety Clip;”
1
Foreign Counterpart Patent
Applications on the Nonreusable Syringe with Safety Clip
corresponding to U.S. Patents 5,120,310 and 5,188,613 for Europe
(Serial No. 92910361.2), China (Serial No. 92102245.X),
India (Serial No. 186/CAL/92), Mexico (Serial
No. 92-01493), and Taiwan (Serial
No. 82205282);
U.S. Patent 5,423,758, Issued
June 13, 1995, entitled “Retractable Fluid Collection
Devise” and a Counterpart Patent Cooperation Treaty
Application Serial No. 94/13953, entitled “Blood
Sampler,” Filed December 6, 1994 designating all PCT
countries;
U.S. Patent 5,385,551, Issued
January 31, 1995, entitled “Nonreusable Syringe with
Front Retraction” and a Counterpart Patent Cooperation Treaty
Application Serial No. PCT/US94/10235, Filed September 7,
1994 designating all PCT countries;
U.S. Patent 5,389,076, Issued
February 14, 1995, entitled “Single Use Medical Device
with Retraction Mechanism” and a Counterpart Patent
Cooperation Treaty Application Serial No. PCT/US95/03953,
Filed March 31, 1995 designating all PCT countries;
U.S. Patent 5,637,092, Issued
June 10, 1997, entitled “Syringe Plunger Locking
Assembly;”
U.S. Patent 5,578,011, Issued
November 26, 1996, entitled “Tamperproof Retractable
Syringe;”
U.S. Patent 5,810,775, Issued
September 22, 1998, entitled “Cap Operated Retractable
Medical Device;”
U.S. Patent 6,872,193, Issued
March 29, 2005, entitled “IV Catheter Introducer with
Retractable Needle;”
U.S. Patent 6,494,863, Issued
December 17, 2002, entitled “One-Use Retracting Syringe
with Positive
