License Agreement [Amendment No. 1] - University of Southern California and BioKeys Inc.
FIRST AMENDMENT
TO
LICENSE AGREEMENT
This First Amendment (the "Amendment") to the License Agreement effective
January 23, 1998 (the "License Agreement") between the University of Southern
California, ("USC") and Biokeys, Inc., ("Licensee") is made by and between USC
and Licensee as follows:
1. Section 7 of the License Agreement is amended to read in its entirety
as follows:
7. PATENT PROSECUTION
a. USC shall file, prosecute and maintain, during
the course o this Agreement, the patent applications
and patents listed in Appendix A. Should Licensee
require the filing of foreign patents, USC shall take
responsibility for filing, prosecuting and
maintaining said foreign patents.
b. Licensee shall reimburse all reasonable legal
expenses incurred and paid by USC in filing,
prosecuting and maintaining the U.S. and foreign
applications listed (or to be listed pursuant to
Paragraph 2.a.) in Appendix A, whether such expenses
were incurred before or after the date of this
Agreement. These legal expenses shall include the
attorneys' and agents' fees, foreign filing fees and
out-of-pocket costs associated with responding to
office actions and any other fees and costs directly
related to obtaining and/or maintaining patent
protection in the countries listed Appendix A.
Licensee shall advance payments of maintenance fees
and annuities as part of such legal expenses to be
reimbursed by Licensee within thirty (30) days of
request by USC, unless Licensee is advised otherwise
by timely notice from USC.
c. Licensee agrees to pay to USC an initial
deposit of Five Thousand Dollars ($5,000.00) within
fifteen (15) days of the EFFECTIVE DATE of this
Amendment. Such deposit will be gild in a trust
account. Licensee authorized USC to use that account
to pay all legal expenses incurred pursuant to
Paragraph 7.b. When the trust account drops below
Five Thousand Dollars ($5,000.00), Licensee agrees to
pay within thirty (30) days of USC's written demand,
the amount to maintain the balance of the trust
account at a minimum of Five Thousand Dollars
($5,000.00). Upon termination of this Agreement, any
unused deposit shall be refunded.
<Page>
d. If the Licensee elects (i.) Not to pursue a
PATENT or (ii) to terminate to prosecution or
maintenance of a PATENT in any country, the Licensee
surrenders its right to make, use or sell PRODUCTS
covered by the non- elected PATENT in that particular
country shall grant to USC the exclusive rights
previously granted to Licensee, without limitation,
for that country. Licensee agrees to execute all
necessary documents to carry out this grant of rights
to USC. Payments referred to in Paragraphs 7.a and
7.b shall not be refunded upon such non-election or
termination.
IN WITNESS WHEREOF, this Amendment is executed as of August 16, 2000.
"USC"
The University of Southern California
By: /s/ Dennis F. Dougherty
----------------------------------------
Dennis F. Dougherty
Senior Vice President, Administration
"LICENSEE"
BIOKEYS Pharmaceuticals
BY: /s/ Nicholas Jon Virca
----------------------------------------
Nicholas Jon Virca
President and CEO