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Collaboration and License Agreement [Amendment No. 1] - GPS Biotech AG and Morphosys AG

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EXECUTION COPY

 

AMENDMENT TO COLLABORATION AND LICENSE AGREEMENT

 

This Amendment to Collaboration and License Agreement (hereinafter the “Amendment”), dated as of December 4, 2000 (the “Effective Date”), is made by and between GPC Biotech AG (formerly GPC AG-GENOME PHARMACEUTICALS CORPORATION), a German stock corporation having its principal place of business at Fraunhofer Strasse 20, 85152 Martinsried, Munich, Germany (“GPC”), and MORPHOSYS AG, a German stock corporation with its principal place of business at Lena-Christ-Str. 48, 82152 Martinsried, Munich, Germany (“MORPHOSYS”). MORPHOSYS and GPC are each hereafter referred to individually as a “Party” and together as the “Parties.”

 

RECITALS

 

WHEREAS, GPC and MORPHOSYS are parties to that certain Collaboration and License Agreement having an effective date of April 15, 1999 (the “Collaboration and License Agreement”); and

 

WHEREAS, GPC and MORPHOSYS desire to amend the Collaboration and License Agreement, as set forth herein.

 

NOW THEREFORE, in consideration of the mutual covenants and promises contained herein, and intending to be legally bound, GPC and MORPHOSYS mutually agree as follows:

 

ARTICLE I. AMENDMENT TO COLLABORATION AND LICENSE AGREEMENT

 

1. Defined Terms. Capitalized terms used but not defined herein shall have the meanings ascribed to them in the Collaboration and License Agreement.

 


2. Amendment of Collaboration and License Agreement. The Collaboration and License Agreement is hereby amended as follows:

 

(a) The last sentence of Section 3.1(a) of the Collaboration and License Agreement is hereby deleted in its entirety and replaced with the following text:

 

“To facilitate the exercise of the rights granted to GPC hereunder, MORPHOSYS hereby agrees to take all reasonable measures to grant, or cause to be granted to GPC, sublicenses under certain technology and intellectual property rights therein (the “Third Party Rights”). The Third Party Rights are established and defined in the following four agreements (the “Technology Agreements”):

 

 (i)License Agreement by and among MORPHOSYS and DYAX CORP. and PROTEIN ENGINEERING CORPORATION, dated October 4, 1996 (the “Dyax Agreement”);

 

 (ii)License Agreement by and between MORPHOSYS and GENENTECH, INC. dated December April 30, 2000 (the “Genentech Agreement”);

 

 (iii)Non-Exclusive Derived Product License Agreement between SCA VENTURES INC. and MORPHOSYS dated December 10, 1999 (the “SCA Agreement”); and

 

 (iv)Collaboration Agreement between BIOSITE DIAGNOSTICS INCORPORATED and MORPHOSYS dated January 1, 2000 (the “Biosite Agreement”).

 

GPC hereby acknowledges that it has received summary or redacted versions of the Technology Agreements and the respective third party patent rights are attached hereto as Exhibit A. Pursuant to the Dyax Agreement, the Genentech Agreement and the SCA Agreement, MORPHOSYS hereby grants to GPC a sublicence of MORPHOSYS’ rights under those Third Party Agreements; provided that: (i) the sublicense under the Genentech Agreement shall become effective only upon the execution and delivery by GPC of the agreement entitled “Morphosys Partner Agreement” which pertains to the Genentech, Inc. Third Party Rights; (ii) the sublicense under the Dyax Agreement shall become effective only upon the execution and delivery by GPC of the agreement entitled “Third Party Agreement” which pertains to the Dyax Corp. and Protein Engineering

 

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Corporation Third Party Rights; and (iii) the sublicense under the SCA Agreement shall become effective only upon the execution and delivery by GPC of the agreement entitled “Third Party Agreement” which pertains to the SCA Ventures, Inc. Third Party Rights (each of the referenced three agreements are attached hereto as Exhibit B). In addition, MORPHOSYS hereby grants to GPC a sublicense of the Dower Patent Rights (as that term is defined in the Biosite Agreement). For the avoidance of doubt, MORPHOSYS does not grant a sublicense of the Xoma Patent Rights (as such term is defined in the Biosite Agreement) to GPC hereunder; however, MORPHOSYS agrees to make a written request of Biosite, in accordance with Section 3.1.3 of the Biosite Agreement, that Biosite grant a sublicense to GPC of the Xoma Patent Rights (as such term is defined in the Biosite Agreement).

 

MORPHOSYS used reasonable care in preparing the MORPHOSYS intellectual property (IP) summary dated October 2000 (attached hereto as Exhibit C) in light of such summary’s intended use, and, to the extent such summary contains statements of fact, such statements of fact were, to the best of MORPHOSYS’ knowledge, true as of the date the summary was prepared. In addition, the milestone and royalty payments due under the Technology Agreements and for John Hopkins University patent rights (which are part of MORPHOSYS Background Inventions (TRIM technology)) are summarized under Exhibit D.

 

ARTICLE 2. MISCELLANEOUS

 

1. Fee. As consideration for the grant rights hereunder, GPC shall pay to MORPHOSYS a total fee of *** US Dollars (US$***), of which *** US Dollars (US$***) will be due upon execution of this Agreement and *** US Dollars (US$***) will be due 15 days after the Effective Date of this Amendment. The remaining *** US Dollars (US$***) will be due 120 days after the Effective Date of this Amendment. All payments will be made by GPC upon receipt of a corresponding invoice by MORPHOSYS.


***Certain information on this page has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.

 

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2. Confirmation. Except as expressly amended by this Amendment, the Collaboration and License Agreement shall remain unmodified and in full force and effect. This Amendment may be executed in two or more counterparts, each of which shall be deemed an original, but all of which together shall constitute one and the same instrument. This Amendment shall be governed and construed in accordance with the laws of the Commonwealth of Massachusetts (excluding its body of law controlling conflicts of law).

 

IN WITNESS WHEREOF, the Parties have caused their duly authorized representatives to execute this Amendment as of the Effective Date set forth above.

 

MorphoSys AG   GPC Biotech AG
By: 

/s/ S.E. Moroney

   By: 

/s/ Dr. Elmar Maier

Name:

 

S.E. Moroney

   

Name:

 

Dr. Elmar Maier

Title:

 

C.E.O

   

Title:

 

Vice President Business Development

         
By: 

/s/ D. Lemus

   By: 

/s/ Sebastian Meier-Ewert

Name:

 

D. Lemus

   

Name:

 

Sebastian Meier-Ewert

Title:

 

CFO

   

Title:

 

Vice President, Head Research

 

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EXHIBIT A

 

THIRD PARTY PATENT RIGHTS

 

1)Dyax Corp. Patent Rights in relation to its phage display technology

 

U.S. Patents Nos. 5,223,409, 5,403,484, and 5,571,698, 5,837,500, and EP Patent No. 436,597, together with any continuations, continuations-in-part, divisionals, reexaminations, renewals, or extensions thereof, and any foreign counterpart thereto.

 

2)Genentech Patent Rights in relation to a special embodiment of the phage display technology:

 

U.S. Patents Nos.5,750,373, 5,780,279, 5,821,047 and 5,846,765 together with any continuations, continuations-in-part, divisional applications, re-examinations, renewals, or extensions thereof, and any foreign counterparts thereto, including EP 564 531.

 

3)SCA Venture Patent Rights in relation to single-chain Fv fragments and display of such fragments on the surface of organisms such as phages.

 

Title


 

Inventor


 

Country


 

Date Filed


 

Serial No.


 

Patent No.


 

Date Issued


Single

 Ladner, US 09/02/86 06/902,971 Abandoned  

Polypeptide

 Bird          

Chain Molecules

            
    US 09/02/87 07/092,110 Abandoned  
    PCT 09/02/87 PCT/US87/02208    
    EP 09/02/87 87906006.9 0281604 03/31/93
    Austria 09/02/87 87906006.9 0281604 03/31/93
    Belgium 09/02/87 87906006.9 0281604 03/31/93
    France 09/02/87 87906006.9 0281604 03/31/93

 

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Title


 

Inventor


 

Country


 

Date Filed


 

Serial No.


 

Patent No.


 

Date Issued


    Germany 09/02/87 87906006.9 0281604 03/31/93
    Italy 09/02/87 87906006.9 0281604 03/31/93
    Luxem-bourg 09/02/87 87906006.9 0281604 03/31/93
    Netherlands 09/02/87 87906006.9 0281604 03/31/93
    Sweden 09/02/87 87906006.9 0281604 03/31/93
    Switzerland 09/02/87 87906006.9 0281604 03/31/93
    U. Kingdom 09/02/87 87906006.9 0281604 03/31/93
    CA 09/04/87 546164    
    Japan 09/02/88 219589    
    US 01/19/89 07/299,617 4,946,778 08/07/90
    US 04/25/90 07/512,910 5,260,203 11/09/93
    US 04/01/93 08/040,440 5,455,030 10/03/95
    US 06/06/95 08/468,988 5,518,889 05/21/96
    US 06/06/95 08/468,992 5,534,621 07/09/96

Computer Based

 Ladner US 09/02/86 06/902,970 4,704,692 11/03/87

System and

            

Method for

            

Determining

            

Possible

            

Chemical

            

Structures

            
    PCT 09/02/87 PCT/US87/02211    
    EP 09/02/87 87906007.7 Abandoned  
    US 11/02/87 07/115,919 Abandoned  

 

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Title


 

Inventor


 

Country


 

Date Filed


 

Serial No.


 

Patent No.


 

Date Issued


    US 06/09/88 07/204,940 4,881,175 Abandoned

Organism

 Ladner, *** *** *** *** ***

Carrying a Single

 Glick, Bird          

Chain Antibody

            

Domain at its

            

Surface

            
    PCT 03/02/88 PCT/US88/00716    
    EP 03/02/88 88903058.1 0349578 11/30/94
    France 03/02/88 88903058.1 0349578 11/30/94
    Germany 03/02/88 88903058.1 0349578 11/30/94
    UK 03/02/88 88903058.1 0349578 11/30/94
    *** *** *** ***  
    *** *** *** ***  
    *** *** *** ***  
    *** *** *** ***  

Incremental

 Hardman US 09/02/87 07/092,147 4,939,666 07/03/90

Macromolecule

            

Construction

            

Method

            
    CA 09/01/88 576,386 Abandoned  
    JP 9/02/88 221223    

Linkers for

 Whitlow, US 11/20/92 07/980,529    

Linked Fusion

 Filpula          

Polypeptides

            
    US 01/15/93 08/002,845    
    PCT 11/17/93 PCT/US93/11138 Abandoned  
    US 04/07/94 08/224,591 5,856,456 01/05/99
    US 09/10/97 08/926,789    

***Certain information on this page has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.

 

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Title


 

Inventor


 

Country


 

Date Filed


 

Serial No.


 

Patent No.


 

Date Issued


Antigen Binding

 Whitlow, US 10/13/94 08/323,445 5,763,733 06/09/98

Fusion Proteins

 Filpula,          
  Shorr          
    US 08/16/95 08/515,903 5,767,260 06/16/98
    PCT 10/13/95 PCT/US95/12840 Abandoned  

Stabilized

 Lee US 04/07/95 08/417,855 5,656,730 08/12/97

Monomeric

            

Protein

            

Compositions

            
    *** *** ***    

Production and

 Filpula, *** *** *** ***  

Uses of

 Wang,          

Glycosylated

 Shorr,          

Single Chain Fv

 Whitlow,          

Proteins

 Lee          
    *** *** *** ***  
    *** *** *** ***  
    *** *** *** ***  
    PCT 04/30/98 PCT/US98/08662    

***

 *** *** *** ***    

***

 ***          

***

 ***          

***Certain information on this page has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.

 

***Certain information on this page has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.

 

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4)Biosite Patent Rights in relation to phage display of multimeric binding proteins:

 

Dower Patents

 

Country


  Serial number

 Filing date

 Patent number

  Issue date

  Status

US

  07/517,659 05/01/90 5,427,908  06/27/95  Issued

US

  08/376,326 01/20/95 5,580,717  12/03/96  Issued

***

  *** ***       ***

PCT

  US91/02989 05/01/91 —       Published

EPO

  91908963,1 05/01/91 0527839  12/02/98  Granted

EPO

  98200770,0 03/11/98 —       Pending

Japan

  3-508896 05/01/91 —       Pending

 

XOMA PATENTS

 

Title:

  Modular Assembly of Antibody Genes. Antibodies Prepared Thereby and Use

Inventors:

  Robinson, Liu, Horwitz, Wall, Better

 

1)Based on PCT/US86/02269, which is a continuation-in-part of U.S. Serial No. 06/793.980 filed November 1, 1985 (abandoned)

 

Country


  

Serial No.


  

Patent No.


*United States

  06/793,980   

Australia

  65981/86  Issued 606,320

Canada

  521,909  Pending

Denmark

  3385/87  Pending

Taiwan

  75105650  Issued 51922

*United States

  06/086,266   

 

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2)Based on PCT/US88/02514, which corresponds to U.S. Serial No. 07/077,528 which is a continuation-in-part of 06/086,266 (abandoned), which is a continuation-in-part of U.S. Serial No. 06/793,980 (abandoned).

 

Country


  

Serial No.


  

Patent No.


Australia

  23244/88  Issued 632,462

Austria

  EP88907510.7  Granted EP/0371998

Belgium

  EP 88907510.7  Granted EP/0371998

Canada

  572,398  Pending

Denmark

  192/90  Pending

Europe

  EP 88907510.7  Granted EP/0371998

Europe

  EP 95119798.7  Pending (divisional)

France

  EP 88907510.7  Granted EP/0371998

Germany

  EP 88907510.7  Granted EP/0371998

Italy

  EP 88907510.7  Granted EP/0371998

Japan

  506481/88  Pending

Luxembourg

  EP 88907510.7  Granted EP/0371998

Netherlands

  EP 88907510.7  Granted EP/0371998

Sweden

  EP 88907510.7  Granted EP/0371998

Switzerland/Liechtenstein

  EP 88907510.7  Granted EP/0371998

United Kingdom

  EP 88907510.7  Granted EP/0371998

Europe

  EP 93100041.8  Granted EP/0550400

 

*Cases Abandoned in favor of a continuing application

 

Austria

  EP 93100041.8  Granted EP/0550400

Belgium

  EP 93100041.8  Granted EP/0550400

France

  EP 93100041.8  Granted EP/0550400

Germany

  EP 93100041.8  Granted EP/0550400

Italy

  EP 93100041.8  Granted EP/0550400

Luxembourg

  EP 93100041.8  Granted EP/0550400

Netherlands

  EP 93100041.8  Granted EP/0550400

Sweden

  EP 93100041.8  Granted EP/0550400

Switzerland/Liechtenstein

  EP 93100041.8  Granted EP/0550400

United Kingdom

  EP 93100041.8  Granted EP/0550400

*United States

  07/077,528   

 

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3)Based on U.S. Serial No. 07/501.092 filed March 29, 1990, which is a continuation-in-part of U.S. Serial No. 07/077, 528 (Modular Assembly of Antibody Genes, Antibodies Prepared Thereby and Use; Robinson, Liu, Horwitz, Wall, Better) and of U.S. Serial No. 07/142,039 (Novel Plasmid Vector with Pectate Lyase Signal Sequence; Lei, Wilcox).

 

Country


  

Serial No.


  

Patent No.


*United States

  07/501,092   

*United States

  07/987,555   

*United States

  07/870,404   

*United States

  08/020,671   

United States

  08/235,225  5,618,920

United States

  08/299,085  5,595,898

United States

  08/357,234  5,576,195

United States

  08/472,696  Allowed

United States

  08/472,691  Pending

United States

  08/467,140  5,698,435

United States

  08/450,731  5,693,493

United States

  08/466,203  5,698,417

 

*Cases abandoned in favor of a continuing application

 

Title:

  

Novel Plasmid Vector with Pectate Lyase Signal Sequence

Inventors:

  

Lei, Wilcox

 

Based on U.S. Serial No. 07/142,039 filed January 11, 1988 and PCT/US89/00077

 

Country


  

Serial No.


  

Patent No.


Australia

  29377/89  Issued/627443

Canada

  5887.885  I.338,807

Europe

  EP 89901763.6  Granted EP/0396612

Austria

  EP 89901763.6  Granted EP/0396612

Belgium

  EP 89901763.6  Granted EP/0396612

France

  EP 89901763.6  Granted EP/0396612

Germany

  EP 89901763.6  Granted EP/0396612

Italy

  EP 89901763.6  Granted EP/0396612

Luxembourg

  EP 89901763.6  Granted EP/0396612

 

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Netherlands

  EP 89901763.6  Granted EP/0396612

Sweden

  EP 89901763.6  Granted EP/0396612

Switzerland/Liechtenstein

  EP 89901763.6  Granted EP/0396612

United Kingdom

  EP 89901763.6  Granted EP/0396612

Japan

  501661/89  Pending

*United States

  07/142.039   

 

*Cases abandoned in favor of a continuing application

 

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EXHIBIT B

 

Attached hereto are the three Third Party Agreements.

 

DYAX AGREEMENT

 

Third Party Agreement

 

The undersigned hereby acknowledges that Dyax Corp. and Protein Engineering Corporation (collectively, “Licensor”), each having a principal place of business at 765 Concord Avenue, Cambridge, Massachusetts 02138, have licensed certain patent rights to and under U.S. Patent No. 5,223,409 entitled “Directed Evolution of Novel Binding Proteins”, U.S. Patent No. 5,403,484 entitled “Viruses Expressing Chimeric Binding Proteins”, and 5,571,698, 5,837,500, and EP Patent No. 436,597 and associated patent rights, to (“Licensee”) under a License Agreement (the “License”) effective as of, a copy of which has been provided to the undersigned by Licensee; and that the undersigned as a Third Party Transferee expects to receive from Licensee or its Affiliates one or more Licensed Intermediates or services or proprietary information with respect to one or more Licensed Intermediates (collectively, the “Transferred Technology”). All terms not otherwise defined herein shall have the meanings ascribed to them in the License.

 

1. In consideration of the value of the patent rights referenced above in developing the Transferred Technology, the undersigned agrees (a) to use the Transferred Technology solely within the Field of Use to make, have made, use, sell and have sold Licensed Products (collectively, “Covered Products”); and (b) to maintain and retain complete and accurate records of sales of Covered Products and any amounts paid or payable to Licensee in relation to such Covered Products, all in accordance with Section 4.4 of the License.

 

2. If the undersigned is notified, by Licensor or Licensee or otherwise, that the License has been terminated in accordance with its terms, such termination shall not affect the rights of the undersigned to make, use and sell Covered Products; provided, however, that the

 

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undersigned hereby agrees that from and after the date of such termination the undersigned shall have the obligation (a) to pay directly to Licensor all amounts due pursuant to the Payment Schedule elected by Licensee under Section 4.1 of the License (as determined, in the event of any conflict, by the records of Licensor), including royalties on Net Sales, with respect to all Covered Products (which shall be deemed for purposes of this paragraph to be “Licensed Products” as defined in the License), and (b) deliver directly to Licensor all reports otherwise due to Licensee pursuant to paragraph 1 above. All such payments and reports shall be subject to the terms and conditions therefor set forth in the License, which are incorporated herein. To the extent that the foregoing constitutes a grant of rights to the undersigned under Patent Rights with respect to the Transferred Technology, such rights shall be contingent and, in the event of a failure to make any such payments or any other material breach by the undersigned, terminate upon thirty (30) days notice unless the breach is cured prior to expiration of such period. Licensor shall not be deemed to have assumed, and will not be liable for, any representations, warranties or obligations of Licensee to the undersigned.

 

3. This Agreement is executed and delivered as an instrument under seal expressly for the benefit of each of Licensor and Licensee and their respective Affiliates and permitted successors and shall be subject to the terms of Article 8 of the License, which are incorporated herein.

 

{Company Name}

   Address:

 

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SCA-VENTURES AGREEMENT

 

THIRD PARTY AGREEMENT

 

The undersigned hereby acknowledges that SCA VENTURES Inc., a corporation of the State of Delaware (SCA VENTURES) having its principal place of business at 20 Kingsbridge Road, Piscataway, New Jersey 08854-3969, USA has licensed certain SCA VENTURES PATENT RIGHTS to MORPHOSYS AG (LICENSEE) under a NON-EXCLUSIVE DERIVED PRODUCT LICENSE AGREEMENT effective as of                     , a redacted copy of which has been provided to the undersigned by LICENSEE; and that the undersigned, as a THIRD PARTY TRANSFEREE, expects to receive, or receive services or proprietary information with respect to, an INTERMEDIATE, INTERMEDIATE PRODUCT(S) or DERIVED PRODUCT(S) or a sublicense of all or a portion of the rights granted to LICENSEE under the attached NON-EXCLUSIVE DERIVED PRODUCT LICENSE AGREEMENT (collectively, the TRANSFERRED TECHNOLOGY) from the LICENSEE or its AFFILIATES. All terms not otherwise defined herein shall have the same meanings set forth in the attached NON-EXCLUSIVE DERIVED PRODUCT LICENSE AGREEMENT.

 

1. In consideration of the value of the SCA VENTURES PATENT RIGHTS in developing the TRANSFERRED TECHNOLOGY, the undersigned agrees (a) to use the TRANSFERRED TECHNOLOGY solely to develop, make, use, sell, offer for sale and import DERIVED PRODUCTS, or (b) to use the TRANSFERRED TECHNOLOGY only in accordance with its agreement with LICENSEE, if more restrictive. The undersigned further agrees that in no event will it sell, transfer or license an INTERMEDIATE or an INTERMEDIATE PRODUCT without first obtaining the written approval of SCA VENTURES.

 

If the undersigned is notified, by SCA VENTURES or LICENSEE or otherwise, that the NON-EXCLUSIVE DERIVED PRODUCT LICENSE AGREEMENT has been terminated in accordance with its terms, such termination shall not affect the rights of the undersigned to develop, make, use, sell, offer for sale and import DERIVED PRODUCTS; provided, however,

 

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that the undersigned hereby agrees that from and after the date of such termination the undersigned shall be bound by the terms and conditions of the NON-EXCLUSIVE DERIVED PRODUCT LICENSE AGREEMENT. To the extent that the foregoing constitutes a grant of rights to the undersigned under SCA VENTURES PATENT RIGHTS with respect to the TRANSFERRED TECHNOLOGY, such rights shall be contingent and, in the event of any material breach by the undersigned, shall terminate upon thirty (30) days written notice from SCA VENTURES unless the breach is cured prior to expiration of such period. SCA VENTURES and its AFFILIATES shall not be deemed to have assumed, and will not be liable for, any representations, warranties or obligations of LICENSEE to the undersigned.

 

This THIRD PARTY AGREEMENT is executed and delivered as an instrument under seal expressly for the benefit of each of SCA VENTURES and LICENSEE and their respective AFFILIATES and permitted successors and assigns.

 

THIRD PARTY TRANSFEREE:  
Address:  
By:  
Title:  
LICENSEE:  
By:  
Title:  

 

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GENENTECH AGREEMENT

 

Morphosys Partner Agreement

 

The undersigned hereby acknowledges that Genentech, Inc., having a principal place of business at 1 DNA Way, South San Francisco, California 94080-4990, has granted certain limited license under U.S. Patent Nos. 5,750,373; 5,780,279; 5,821,047; 5,846,765; EP 564 531 and patents related thereto (“Patent License”), to Morphosys under a License Agreement (the “License Agreement”) effective as of April 30, 2000, a redacted copy of which has been provided to the undersigned by Morphosys; and that the undersigned as a Morphosys Partner expects to receive from Morphosys one or more Licensed Products, services or proprietary Information with respect to Morphosys HuCal Technology or Morphosys TRIM Technology (collectively, the “Transferred Technology”). All terms not otherwise defined herein shall have the same meanings set forth in the License Agreement.

 

1. In consideration of the value of the Patent License in developing the Transferred Technology, the undersigned agrees (a) to use the Transferred Technology solely within the Field to research and develop, make, have made, use, sell and have sold Licensed Products (collectively, “Covered Products”); and (b) to maintain and retain complete and accurate records of sales of Covered Products and any amounts paid or payable to Morphosys in relation to such Covered Products.

 

2. If the undersigned is notified, by Genentech or Morphosys or otherwise, that the License Agreement has been terminated in accordance with its terms, such termination shall not affect the rights of the undersigned to research and develop, make, have made, use, sell and have sold Covered Products; provided, however, that the undersigned hereby agrees that from and after the date of such termination, the undersigned shall have the obligation (a) to pay directly to Genentech all amounts due pursuant to the License Agreement, with respect to all Covered Products (which shall be deemed for purposes of this paragraph to be “Licensed Products” as defined in the License Agreement), and (b) deliver directly to Genentech all payments and reports otherwise due to Morphosys pursuant to paragraph 1 above. All such payments and

 

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reports shall be subject to the terms and conditions therefor set forth in the License Agreement, which are incorporated herein. To the extent that the foregoing constitutes a grant of rights to the undersigned under the Patent License with respect to the Transferred Technology, such rights shall be contingent and, in the event of a failure to make any required payments to Genentech or any other material breach of this Agreement by the undersigned, such rights under the Patent License shall terminate upon thirty (30) days’ notice (and the undersigned shall have no other rights whatsoever under the License Agreement), unless the breach is cured prior to expiration of such period.

 

3. This Agreement is executed and delivered as an instrument under seal expressly for the benefit of each of Genentech and Morphosys and their respective Affiliates and permitted successors.

 

{Company Name}

   

Address:

By:        

Title:

        

 

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EXHIBIT C

 

EXHIBIT REMOVED FROM CONTRACT UPON EXECUTION OF AMENDMENT NO. 2

TO AGREEMENT

 

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EXHIBIT D

 

EXHIBIT REMOVED FROM CONTRACT UPON EXECUTION OF AMENDMENT NO. 2

TO AGREEMENT

 

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