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Under 17 C.F.R. Sections 200.80,
200.83 and 230.406.
EXHIBIT 10.42
FIRST AMENDMENT TO AGREEMENT
THIS FIRST AMENDMENT (the "First Amendment") to the Agreement by and
between N.V. ORGANON, Molenstraat 110, P.O. Box 20, 5340 BH Oss, the Netherlands
(hereinafter referred to as "Organon"), and SIGNAL PHARMACEUTICALS, INC., 5555
Oberlin Drive, San Diego, California 92121, USA (hereinafter referred to as
"Signal"), dated as of July 30, 1996 (the "Agreement") is entered into as of
March 17, 1998 (the "First Amendment Date"). Capitalized terms used but not
otherwise defined in this First Amendment shall have the meanings given such
terms in the Agreement.
RECITALS
WHEREAS, Organon and Signal entered into the Agreement to collaborate in
the discovery and development of new assays for the targets selected as provided
in the Agreement; and
WHEREAS, Organon and Signal wish to amend the Agreement in the manner
set forth in this First Amendment and otherwise to provide for certain
agreements by the parties as set forth herein.
AGREEMENT
NOW, THEREFORE, in consideration of the mutual promises hereinafter set
forth, the parties hereto agree as follows:
1. AMENDMENT AND RESTATEMENT OF SECTION 3. The first and second paragraphs of
Section 3 of the Agreement are hereby amended and restated in their entirety as
follows:
"3. TARGET RESEARCH.
The Target Research shall commence upon the Effective Date and
shall continue for three years thereafter, extendible for up to two
additional years under substantially the same FTE funding and other
terms as are set forth herein, with mutual consent. If the milestone
described in Exhibit B is not met within [***] after the First Amendment
Date, Organon at its sole discretion may forthwith terminate the Target
Research by written notice effective as of the [***]. If the milestone
described in Exhibit C is not met within [***] after the First Amendment
Date, Organon at its sole discretion may terminate the Target Research
effective as of the end of the [***] following the First Amendment Date.
For purposes of this Agreement, the "Research Term" shall be the period
from the Effective Date until the Target Research expires or is
terminated pursuant to this Article 3. Under the Target Research
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Signal shall use reasonable efforts to deliver up to [***] Research
Assays to Organon.
If Organon elects to terminate the Target Research (a) as of the
[***] as provided above or (b) prior to receiving the [***] and paying
the first milestone under Section 3.2.1(a), whichever is earlier, then
this Agreement and all licenses granted hereunder shall terminate,
except that the provisions listed in Section 9.3(b) shall survive.
Otherwise, this Agreement shall survive termination or expiration of the
Target Research."
2. AMENDMENT AND RESTATEMENT OF SECTION 3.4. Section 3.4 of the Agreement is
hereby amended and restated in its entirety as follows:
"3.4. LICENSES AND OPTION RIGHTS
3.4.1. Subject to the terms and conditions of this
Agreement, Signal hereby grants to Organon a worldwide, non-exclusive
license, during the Research Term only, under the Signal Technology
within the Target Research Field to conduct research in accordance with
the Research Plan.
3.4.2. Subject to the terms and conditions of this
Agreement, Signal hereby grants to Organon a worldwide, exclusive
(except as to Signal) license to use any cell lines which are developed
in the conduct of the Target Research (whether solely by Signal or
jointly by the parties) for Organon's internal research purposes during
the term of this Agreement. Notwithstanding any other provision of this
Agreement, Organon shall not have the right to sublicense the rights
granted under this Section 3.4.2 to any third party without the prior
written consent of Signal, which consent may be given or withheld in
Signal's sole discretion; provided, however, that Organon may, without
Signal's prior written consent, sublicense such rights to an Affiliate
of Organon that is controlled by Organon. The parties hereby acknowledge
that Signal retains the right to use the cell lines licensed hereunder
for any purpose.
3.4.3. Subject to the terms of this Agreement, Signal
hereby grants to Organon a worldwide, exclusive license, for the period
following the end of the Research Term until this Agreement expires or
is terminated, to use the Signal Compounds and under the Research Assay
Patents, Gene/gen product Patents and Compound Patents to research,
develop, make, have made, use and sell Organon Products; provided,
however, that any compound from any source that is useful for the [***]
shall be specifically excluded from
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the scope of the foregoing license. If, however, a compound has been
selected in the Target Research Field that potentially is [***], the
parties shall negotiate in good faith, together with any of Signal's
licensee(s) in such field, a possible extension of the foregoing license
with regard to such compound.
3.4.4. Subject to the terms of this Agreement, Signal
hereby grants to Organon a worldwide, non-exclusive license, for the
period following the end of the Research Term until this Agreement
expires or is terminated, to use the Signal Technology and Signal
Technology Patents for any purpose in the Target Research Field.
3.4.5. Except as set forth in Section 3.4.2 above, Organon
shall have the right to grant sublicenses under its exclusive license
rights, with the prior written consent of Signal, not to be unreasonably
withheld; provided that such consent shall not be required for
sublicenses to Organon's Affiliates."
3. AMENDMENT AND RESTATEMENT OF RESEARCH PLAN. The Research Plan is hereby
amended and restated in its entirety as attached hereto.
4. AMENDMENT AND RESTATEMENT OF EXHIBIT B. Exhibit B of the Agreement is hereby
amended and restated in its entirety as attached hereto.
5. FULL FORCE AND EFFECT. Except as specifically amended by this First
Amendment, the terms and conditions of the Agreement shall remain in full force
and effect.
6. GOVERNING LAW. This First Amendment shall be governed by and construed in
accordance with the laws of the State of Delaware.
7. COUNTERPARTS. This First 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.
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IN WITNESS WHEREOF, the parties have executed this First Amendment on
the day and year first written above.
N.V. ORGANON SIGNAL PHARMACEUTICALS, INC.
By: [SIG] By: [SIG]
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Title: Managing Director R&D Title: E.V.P.
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By: [SIG]
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Title: Director Research
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ORGANON-SIGNAL RESEARCH OUTLINE
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ORGANON-SIGNAL RESEARCH OUTLINE
CONFIDENTIAL
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EXHIBIT B
Project Goals
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