EXHIBIT 10.8.1
AMENDMENT A TO LICENSE AGREEMENT
This amendment agreement (the "Amendment A") is entered into by the parties to
the existing license agreement effective November 9, 2002 (the "Prior
Agreement") between The Regents of the University of California, Department of
Energy contract-operators of the Ernest Orlando Lawrence Berkeley National
Laboratory, 1 Cyclotron Road, Berkeley, CA 94720, ("Berkeley Lab"), and Nanosys,
Inc., a Delaware corporation ("Licensee") having its principal place of business
at 2625 Hanover St., Palo Alto, CA 94304.
For good and valuable consideration, receipt and sufficiency of which is hereby
acknowledged, the Berkeley Lab and Licensee agree as follows:
I. BACKGROUND
The Berkeley Lab and Licensee are parties to the Prior Agreement (Berkeley Lab
reference L-03-1364) relating generally to certain inventions characterized as
nanocrystals and related technology.
The Berkeley Lab and Licensee would like to amend the Prior Agreement by way of
this Amendment A to include license rights to certain new inventions made in the
course of research at Berkeley Lab by Dr. Paul Alivasatos and colleagues under
Berkeley Lab's contract with the United States Department of Energy ("DOE"),
relating generally to [*** Redacted] applications of [*** Redacted] and related
technology.
II. AMENDMENT FEE
Licensee shall pay to the Berkeley Lab an Amendment Fee in the amount of [***
Redacted], which accrues upon execution of this Amendment, with [*** Redacted]
being payable within 30 days of the execution of this Amendment, and the
remaining [*** Redacted] being payable within 12 months of the execution
date of this Amendment.
III. AMENDMENTS TO THE PRIOR AGREEMENT
A. Paragraph 5.1 of the Prior Agreement is hereby deleted in its entirety
and replaced with the following amended paragraph 5.1:
5.1 Following an initial public offering or series of public
offerings of Licensee securities which raises in the aggregate
at least $5 million or sale of all or substantially all of the
assets or equity of Licensee in a
*** Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
transaction(s) worth at least $5 million ("Offering"),
Licensee shall pay to Berkeley Lab the equivalent of the price
at the Offering of 70,000 shares of Licensee's common stock.
Such payments shall be made in installments with one-third
payable 9 months from the Offering, one-third payable 18
months from the Offering and one-third payable 26 months from
the Offering. Such payments shall include interest from the
date of the Offering to the date such payment is made.
Interest shall be compounded on the date such payment is made,
and shall be charged at the prime lending rate as published in
the Wall Street Journal on the date such payment is made.
Licensee shall adjust the 70,000 shares to take into account
any stock splits or reverse stock splits since the Effective
Date.
B. Paragraph 7.4 of the Prior Agreement is hereby amended to insert after
paragraph 7.4.l0. the following additional paragraphs:
7.4.11 by 24 months from the Effective Date, have expended at
least [*** Redacted] in the aggregate for direct costs in
research and development for technology directly related to
[*** Redacted] applications that use Licensed Patents;
7.4.12 by 24 months from the Effective Date, provide Berkeley Lab
with a commercialization plan for [*** Redacted] devices based
upon the Licensed Patents;
7.4.13 by 48 months from the Effective Date, produce in Licensee's
facility, a working prototype [*** Redacted] device with at
least [*** Redacted];
7.4.14 by 60 months from the Effective Date, make commercial sales of
Licensed Products that are [*** Redacted] devices
C. Paragraph 9.1 of the Prior Agreement is hereby deleted in its entirety
and replaced with the following amended paragraph 9.1:
9.1 Licensee shall keep books and records accurately showing all
work performed in satisfaction of Article 7 and all Licensed
Products manufactured, used, sold or imported under the terms
of this Agreement, including without limitation books and
records related to licenses for Third Party Patents under
paragraph 6.4. Licensee shall preserve those
*** Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
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books and records for at least [*** Redacted] years from the
date of the work performed or the royalty payment to which
they pertain and shall open them to inspection by
representatives or agents of Berkeley Lab at reasonable times.
Licensee shall render all assistance reasonably requested by
Berkeley Lab for the purposes of carrying out such inspections
and examination of Licensee's royalty payments and performance
under Article 7.
D. Exhibit 1 and Exhibit 2 of the Prior Agreement are hereby deleted in
their entirety and replaced with the attached amended Exhibit 1 and
Exhibit 2.
IV. NO OTHER AMENDMENTS
Unless expressly amended herein or by subsequent amendments agreed to by the
parties in a signed written amendment, all other terms of the Prior Agreement,
including but not limited to terms related to interpretation and enforcement of
the Prior Agreement, shall remain in full force and effect as originally agreed
to in the Prior Agreement, and shall apply equally to the terms of this
Amendment A.
Berkeley Lab and Licensee execute this Agreement in duplicate originals through
their duly authorized respective officers in one or more counterparts, that
taken together, are but one instrument.
THE RECENTS OF THE UNIVERSITY NANOSYS, INC.
OF CALIFORNIA, THROUGH THE
ERNEST ORLANDO LAWRENCE
BERKELEY NATIONAL LABORATORY
By /s/ Piermaria Oddone By /s/ Lawrence Bock
------------------------------- --------------------------
(Signature) (Signature)
By Piermaria Oddone By Lawrence Bock
Title Deputy Laboratory Director Title President
Date 3/18/03 Date 3/20/03
Approved as to form
/s/ Glenn R. Woods
---------------------
GLENN R. WOODS
LAWRENCE BERKELEY NATIONAL LABORATORY
*** Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
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EXHIBIT 1
LICENSED (EXCLUSIVE) PATENTS
BERKELEY LAB
CASE NUMBER PATENT APPLICATION/PATENT
IB-1810 The following Provisional U.S. Patent Applications by A. Paul
Alivisatos, Wendy U. Huynh, and Janke J. Dittmer:
(1) 60/365,401, filed March 18, 2002, entitled Solar Cells,
Photovoltaic Devices and Photodectectors Based on Inorganic
Nanorods and Other 3D Objects Based on Nanorods;
(2) 60/381,660, filed May 17, 2002, entitled, Hybrid
Nanorod-Polymer Solar Cells;
(3) 60/381,667, filed May 17, 2002, entitled, Hybrid
Nanorod-Polymer Solar Cells
IB-1783 US Patent Application Serial Number 10/280,135, filed
10/23/02, entitled, Semiconductor Liquid Crystal Composition
and Methods for Making Same, by A. Paul Alivisatos and
Liang-shi Li
IB-1783PCT Patent Application filed under Chapter I of the Patent
Cooperation Treaty, Serial Number PCT/US02/33970, filed
10/23/02, entitled, Quantum Rod Liquid Crystals, by A. Paul
Alivisatos and Liang-shi Li
IB-1576 US Patent Application Serial Number 09/702,219, filed
10/30/00, entitled, Process for Making Surfactant-capped
Nanocrystals, by A. Paul Alivisatos and Joerg Rockenberger
IB-1576A US Patent Application Serial Number 09/721,126, filed
11/22/00, entitled, A Process for Making Surfactant Capped
Nanocrystals and Products Produced by the Process, by A. Paul
Alivisatos and Joerg Rockenberger
IB-1402 [*** Redacted]
*** Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
EXHIBIT 2
LICENSED (FOU EXCLUSIVE) PATENTS
BERKELEY LAB PATENT APPLICATION/PATENT
CASE NUMBER
IB-1773 U.S. patent application, Serial Number 10/301,510, filed
11/22/02, entitled Shaped Nanocrystal Particles and Methods
for Making the Same, by A. Paul Alivisatos, Erik Scher, and
Liberato Manna
IB-1773PCT Patent Application filed under Chapter I of the Patent
Cooperation Treaty, Serial Number pending, filed 11/22/02,
entitled, Shaped Nanocrystal Particles and Methods for Making
the Same, by A. Paul Alivisatos, Erik Scher, and Liberato
Manna
IB-1527A US Patent Number 6,225,198, issued May 1, 2001, entitled
Process for Forming Shaped Group II-VI Semiconductor
Nanocrystals, and Product Formed Using Process, by A. Paul
Alivisatos, Xiaogang Peng, and Liberato Manna
IB-1527B US Patent Number 6,306,736, issued October 23, 2001, entitled
Process for Forming Shaped Group III-V Semiconductor
Nanocrystals, and Product Formed Using Process, by A. Paul
Alivisatos, Xiaogang Peng, and Liberato Manna
IB-1330 US Patent Number 5,990,479, issued November 23, 1999, entitled
Organoluminescent Semiconductor Nanocrystal Probes for
Biological Applications and Process for Making and Using Such
Probes, by Shimon Weiss, Marcel Bruchez, Jr., and A. Paul
Alivisatos
IB-1330JP Japanese Patent Application Number 11-80598, filed 3/24/99,
entitled, Semiconductor Nanocrystal Probes for Biological
Applications and Process for Making and Using Such Probes, by
Shimon Weiss, Marcel Bruchez, Jr., and A. Paul Alivisatos
IB-1330A US Patent Number 6,207,392, issued March 27, 2001, entitled
Semiconductor Nanocrystal Probes for Biological Applications
and Process for Making and Using Such Probes, by Shimon Weiss,
Marcel Bruchez, Jr., and A. Paul Alivisatos
IB-1330A-EPO European Patent Organization Application number 00915944.3,
filed 2/28/00, entitled Semiconductor Nanocrystal Probes for
Biological Applications and Process for Making and Using Such
Probes, by Shimon Weiss, Marcel Bruchez, Jr., and A. Paul
Alivisatos
IB-1330A-CA Canadian Patent Application Number 2366303, filed 8/10/01,
entitled Semiconductor Nanocrystal Probes for Biological
Applications and Process for Making and Using Such Probes, by
Shimon Weiss, Marcel Bruchez, Jr., and A. Paul Alivisatos
IB-1330A-JP Japanese Patent Application Number 2000-605212, entitled
Semiconductor Nanocrystal Probes for Biological Applications
and Process for Making and Using Such Probes, by Shimon Weiss,
Marcel Bruchez, Jr., and A. Paul Alivisatos
IB-1330B US Patent Number 6,423,551 issued July 23, 2002, entitled
Organo luminescent Semiconductor Nanocrystal Probes for
Biological Applications and Process for Making and Using Such
Probes, by Shimon Weiss, Marcel Bruchez, Jr., and A. Paul
Alivisatos
IB-1330C US Patent Application Serial Number 09/781,621, filed
2/12/2001, entitled Semiconductor Nanocrystal Probes for
Biological Applications and Process for Making and Using Such
Probes, by Shimon Weiss, Marcel Bruchez, Jr., and A. Paul
Alivisatos
B-1330D US Patent Application Serial Number 09/865,130, filed
5/24/2001, entitled Organo luminescent Semiconductor
Nanocrystal Probes for Biological Applications and Process for
Making and Using Such Probes, by Shimon Weiss, Marcel Bruchez,
Jr., and A. Paul Alivisatos
IB-1330E US Patent Application Serial Number 10/155,918, filed
5/24/2002, entitled Organo luminescent Semiconductor
Nanocrystal Probes for Biological Applications and Process for
Making and Using Such Probes, by Shimon Weiss, Marcel Bruchez,
Jr., and A. Paul Alivisatos
IB-I330F US Patent Application Seri al Number 10/155,759, filed
5/24/2002, entitled Semiconductor Nanocrystal Probes for
Biological Applications and Process for Making and Using Such
Probes, by Shimon Weiss, Marcel Bruchez, Jr., and A. Paul
Alivisatos
CIB-1030 US Patent Number 5,537,000, issued July 16, 1996, entitled
Electroluminescent Devices Formed Using Semiconductor
Nanocrystals as an Electron Transport Media and Method of
Making Such Electroluminescent Devices, by A. Paul Alivisatos
and Vicki L. Colvin
IB-866A US Patent Number 5,751,018, issued May 12, 1998, entitled
Semiconductor Nanocrystals Covalently Bound to Solid Inorganic
Surfaces Using Self-Assembled Monolayers, by A. Paul
Alivisatos and Vicki L. Colvin
IB-865 US Patent Number 5,262,357, issued November 16, 1993, entitled
Low Temperature Thin Films Formed Via Nanocrystal Precursors,
by A. Paul Alivisatos and Avery N. Goldstein
IB-864A US Patent Number 5,505,928, issued April 9, 1996, entitled
Preparation Of III-V Semiconductor Nanocrystals, by A. Paul
Alivisatos and Michael A. Olshavsky