Sponsored Research Agreement [Amendment No. 1] - Children's Hospital and EntreMed Inc.
AMENDMENT TO SPONSORED RESEARCH AGREEMENT
This is the first Amendment, signed on December 6, 2000 (hereinafter the
"Effective Date of the Amendment"), to the Sponsored Research Agreement dated
June 24, 1999 (hereinafter "the AGREEMENT", attached as Exhibit B to this
Amendment) by and between CHILDREN'S HOSPITAL, a corporation organized and
existing under the laws of the Commonwealth of Massachusetts and having its
principal place of business at 300 Longwood Avenue, Boston, MA 02115
(hereinafter "HOSPITAL"), and ENTREMED, INC., a corporation organized and
existing under the laws of Delaware, and having its principal place of business
at 9640 Medical Center Drive, Rockville, MD 20850 (hereinafter "ENTREMED").
HOSPITAL and ENTREMED mutually desire to amend the AGREEMENT as follows:
I. All capitalized terms herein are defined as in the AGREEMENT,
unless otherwise specified herein.
2. In Paragraph 1(a) of the AGREEMENT, "Exhibit A" is replaced with
"Amended Exhibit A", which Amended Exhibit A is attached hereto as
Exhibit A to this Amendment.
3. In Paragraph 2(a) of the AGREEMENT, "September 29, 2000" is
replaced with "September 29, 2001".
4. Paragraphs 4(a) and (b) of the AGREEMENT are amended to add the
following sentence to each respective paragraph:
(a) In addition, EntreMed agrees to pay Hospital One Million
Five Hundred Thousand Dollars ($1,500,000) to fund the
Program in accordance with the conditions and terms of this
Agreement, as amended.
(b) In addition, on October 4, 2000, EntreMed will pay Hospital
the sum of $750,000 and thereafter will make one additional
payment of $750,000 on March 29, 2001 in accordance with
the conditions and terms set forth herein.
5. Paragraph 7(b) of the AGREEMENT is deleted and the following
Paragraph 7(b) is substituted therefor:
(b) Hospital shall apply for, seek prompt issuance of, and
maintain during the term of this Agreement the patent
applications and patents covering Inventions and
jointly-owned inventions. Hospital shall solicit EntreMed's
comment prior to filing of patent applications and prior to
any significant actions required during such filing,
prosecution, and maintenance and shall provide EntreMed
with drafts of responses sufficiently in advance to allow
time for comment and with file copies
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after the action is completed. Significant actions shall
include Hospital's submission of patent applications, all
official actions from the patent office and all responses
to official actions. Hospital agrees to seriously consider
EntreMed's comments with regard to patent prosecution. If
Hospital decides not to file, not to continue prosecution
or not to maintain any patent application or patent
covering Inventions and jointly-owned inventions in any
jurisdiction, the Intellectual Property Office of Hospital
will notify EntreMed in a timely fashion. Following receipt
of any such notice from the Intellectual Property Office of
Hospital, EntreMed may thereafter elect to file, continue
prosecution, or maintain the patent application or patent
that is the subject of such notice, at its own expense and
in the name of Hospital. EntreMed shall solicit Hospital's
comment prior to the filing of patent applications and
prior to any significant actions required during such
filing, prosecution, and maintenance and shall provide
Hospital with drafts of responses sufficiently in advance
to allow time for comment and with file copies after the
action is completed. Significant actions shall include
EntreMed's submission of patent applications, all official
actions from the patent office and all responses to
official actions, EntreMed agrees to seriously consider
Hospital's comments with regard to patent prosecution.
Payment of all reasonable fees and costs incurred by
Hospital relating to the filing, prosecution, and
maintenance of the patent applications and patents covering
Inventions and jointly-owned inventions shall be the
responsibility of EntreMed. If EntreMed elects not to pay
any such fees and costs with respect to any patent
application or parent in any jurisdiction, Hospital shall
have the right to file, continue prosecution or maintain
such patent application or patent in such jurisdiction at
its own expense as it deems necessary and EntreMed shall
have no further option or other rights to such patent
application or patent in such jurisdiction.
6. In Exhibit B to the AGREEMENT (the Model License Agreement),
Sections 1.4.3, 1.4.4 and 1.4.5 shall be deleted and the following
sections are substituted therefor:
1.4.3. Claims of U.S. and foreign continuation-in-part
applications, and of the resulting patents, which are
directed to subject matter that is described in the U.S.
and foreign applications listed in Appendix A in a manner
that meets the requirements of 35 U.S.C. Section 112;
1.4.4. Claims of all later filed foreign patent applications, and
of the resulting patents, which are directed to subject
matter that is described in the U.S. patents and/or patent
applications listed in Appendix A in a manner that meets
the requirements of 35 U.S.C. Section 112;
1.4.5 Any reissues of United States patents described in
paragraphs 1.4.1,
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1.4.21.4.3 and 1.4.4 above.
7. In Exhibit B to the AGREEMENT, in Sections 4.6 and 5.4,
"BankBoston" is replaced with "FleetBoston Financial".
8. Also in Exhibit B to the AGREEMENT, Sections 6.1 and 6.2 shall be
deleted and the following sections are substituted therefor:
6.1 Hospital shall apply for, seek prompt issuance of, and
maintain during the term of this Agreement the patent
applications and patents covering Inventions and
jointly-owned inventions. Hospital shall solicit EntreMed's
comment prior to filing of patent applications and prior to
any significant actions required during such filing,
prosecution, and maintenance and shall provide EntreMed
with drafts of responses sufficiently in advance to allow
time for comment and with file copies after the action is
completed. Significant actions shall include Hospital's
submission of patent applications, all official actions
from the patent office and all responses to official
actions. Hospital agrees to seriously consider EntreMed's
comments with regard to patent prosecution. If Hospital
decides not to file, not to continue prosecution or not to
maintain any patent application or patent covering
Inventions and jointly-owned inventions in any
jurisdiction, the Intellectual Property Office of Hospital
will notify EntreMed in a timely fashion. Following receipt
of any such notice from the Intellectual Property Office of
Hospital, EntreMed may thereafter elect to file, continue
prosecution, or maintain the patent application or patent
that is the subject of such notice, at its own expense and
in the name of Hospital. EntreMed shall solicit Hospital's
comment prior to the filing of patent applications and
prior to any significant actions required during such
filing, prosecution, and maintenance and shall provide
Hospital with drafts of responses sufficiently in advance
to allow time for comment and with file copies after the
action is completed. Significant actions shall include
EntreMed's submission of patent applications, all official
actions from the patent office and all responses to
official actions, EntreMed agrees to seriously consider
Hospital's comments with regard to patent prosecution.
Payment of all reasonable fees and costs incurred by
Hospital relating to the filing, prosecution, and
maintenance of the patent applications and patents covering
Inventions and jointly-owned inventions shall be the
responsibility of EntreMed. If EntreMed elects not to pay
any such fees and costs with respect to any patent
application or patent in any jurisdiction, Hospital shall
have the right to file, continue prosecution or maintain
such patent application or patent in such jurisdiction at
its own expense as it deems necessary and EntreMed shall
have no further option or other rights to such patent
application or patent in such jurisdiction.
<PAGE> 4
6.2 Payment of all reasonable fees and costs relating to the
filing, prosecution, and maintenance of the patent
applications and patents included in Patent Rights shall be
the responsibility of Licensee, whether such fees and costs
were incurred before or after the date of this Agreement.
If Licensee elects not to pay for any such fees and costs
with respect to any patent application or patent included
in Patent Rights in any jurisdiction, CMCC shall have the
right to file, continue prosecution or maintain such patent
application or patent in such jurisdiction at its own
expense as it deems necessary and Licensee shall have no
further rights to such patent application or patent in such
jurisdiction.
9. The provisions of this Amendment are expressly incorporated in the
AGREEMENT.
10. Any conflict between a provision in this Amendment and a provision
in the AGREEMENT shall be resolved in favor of the provision of
this Amendment.
11. This Amendment shall be deemed effective as of the Effective Date
of the Amendment.
12. This Amendment may be signed in counterparts, each of which shall
be considered an original, but all of which shall constitute one
and the same instrument.
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In Witness whereof, HOSPITAL and ENTREMED have caused this Amendment to
be executed on the dates indicated below:
For CHILDREN'S HOSPITAL:
Name: /s/ JAMES MANDELL
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Title: President and Chief Executive Officer
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Date: December 6, 2000
For ENTREMED, INC.:
Name: /s/ JOHN HOLADAY
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Title: Chairman and CEO
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Date: December 5, 2000
Name: /s/ JUDAH FOLKMAN, MD.
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Title: Judah Folkman, M.D. Principal investigator
Date: December 7, 2000