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EXHIBIT 10.1
Confidential materials omitted and filed separately with the
Securites and Exchange Commission.
Asterisks denote omissions.
AMENDMENT NO. 1 TO LICENSE AGREEMENT,
DATED AS OF FEBRUARY 21, 1990 AND
RESTATED AS OF SEPTEMBER 8, 1993,
BY AND BETWEEN THE WORCESTER FOUNDATION
FOR BIOMEDICAL RESEARCH, INC. AND HYBRIDON, INC.
This Agreement, dated as of November 26, 1996, is entered into by and
between the Worcester Foundation for Biomedical Research, Inc. (formerly the
Worcester Foundation for Experimental Biology, Inc.), having offices at 222
Maple Avenue, Shrewsbury, Massachusetts 01545, ("Foundation") and Hybridon,
Inc., a Delaware Corporation having offices at One Innovation Drive, Worcester,
Massachusetts 01605, ("Hybridon").
WITNESSETH:
WHEREAS, Foundation and Hybridon entered into a license agreement, dated
as of February 21, 1990 and restated as of September 8, 1993 (the "License
Agreement"); and
WHEREAS, Foundation and Hybridon wish to amend the License Agreement on
the terms set forth herein;
NOW, THEREFORE, in consideration of the mutual covenants and agreements
set forth below, the parties agree as follows:
1. Capitalized terms used herein and not defined herein shall have
the respective meanings ascribed to such terms in the License Agreement.
2. Section 1.7 of the License Agreement shall be amended to read in
its entirety as follows:
1.7. SUBLICENSE INCOME. The term "Sublicense Income" shall mean all
consideration received from Sublicensees of Licensee pursuant to
Section 2.2(c), excluding (a) payments made by a Sublicensee in
consideration for the issuance of equity or debt securities of
Licensee, (b) payments made by a Sublicensee to support or fund
research activities to be undertaken by Licensee, (c) up-front
payments made in consideration or recognition of prior research
and development efforts undertaken by Licensee, (d) payments made
upon the achievement by Licensee or Sublicensee of specified
milestones or benchmarks relating to the
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Confidential materials omitted and filed separately
with the Securities and Exchange Commission.
Asterisks denote omissions.
development of the Licensed Products sublicensed to Sublicensee,
except to the extent that such payments are in consideration for
the grant or exercise of a sublicense under the Patent Rights, and
(e) payments made by a Sublicensee for the manufacture and supply
of Licensed Products to such Sublicensee. If non-monetary
consideration is so received, then a commercially reasonable
monetary value will be assigned for purposes of calculating
Foundation's share of Sublicense Income.
3. Section 5.2 of the License Agreement shall be amended to read in
its entirety as follows:
5.2. Royalties.
---------
(a) Except as provided in Section 5.2(b) below, on all sales of
Licensed Products covered by any pending or Valid Claim of Patent
Rights in any country where the Licensed Product is made, used or
sold by Licensee or its Affiliates, Licensee shall pay Foundation
royalties in accordance with the following schedule, such
undertaking and schedule having been agreed to for the purpose of
reflecting and advancing the mutual convenience of the parties:
(*) ***** *********** *** ************ ******** *** **
*** **** ****;
(*) ***** ********** ********* ** ** *** ***** *****;
(*) ********** *********** *** ************ *********
** ** *** ***** *****;
(*) ********** ********** ********* ** ** *** *****
*****;
(*) ************ ********* ** ** *** ***** ****** ***
(*) ******** ******** *** *** ********** **** ** ***
***** *****.
For purposes of this Section 5.2, a "Valid Claim" shall mean a
claim of an unexpired patent which shall not have been withdrawn,
cancelled, or disclaimed, nor held invalid by a court of competent
jurisdiction in any
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Confidential materials omitted and filed separately
with the Securities and Exchange Commission.
Asterisks denote omissions.
unappealed or unappealable decision in the country where the
Licensed Product is made, used or sold by Licensee or its
Affiliates.
(b) Foundation shall *** ** ******** ** * ******* ** ***
******** **** ** ******** ** ** ********** for the ********** ***
****** ** ******** ******** ** **** *********** *** **********
***** ** **** ******** ******** if, and only if, *** *********
received by ******** **** **** *********** ** *** **** of such
******** ******** ** **** *********** **** ********** ** ***
************ ** ***** ******* ***** ******* ***** **********
********** ******* *** at rates equal to or greater than those set
forth in Section 5.2(a) (subject to any reduction pursuant to
Section 5.8). **** ******* ** ******** ******* ************* **
******** *** * *********** **** *** *** *** ********** **** ***
with respect to which Foundation shall ** ******** ** * ********
pursuant to the first sentence of this Section 5.2(b), or **** ***
*** ** ** ******** ** ******* ********* ***** *** *** ** ** ****
*** ********* *********** ** ******** ********* ********** *****
** ******** ** * ******* ** *** ***** ** **** ******** ******** **
**** *********** ** the applicable royalty rates set forth in
Section 5.2(a) (subject to any reduction pursuant to Section
5.8)***** ********** ******* ****** *** **** ** **** ***********
*** ****** ** ********* ******** *** *** ******* ** *** ********
***** ******* ** *********** PROVIDED, HOWEVER, **** *** ********
***** *** ********** ******* ** ****** the agreement of such
*********** ** ********* ******** *** *** ******* ** *** ********
***** ******** *** *** ** *** ***** **** ******** ***** ** ******
such agreement **** **** ************ **** ******** ***** *** **
********** *** ******* ******** ** ******** *** ***** ***********
*** *** *********** *** ****** ** ******** ******** ** ****
*********** **** *** ** ****** ** ********** ***** ********* *****
** ************* *** ********* **** ******** ********* ** ** **
********* ****** **** ** ***** ** *** ******* ***** *******.
4. In all other respects the License Agreement shall remain in full
force and effect.
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This Agreement may be executed in one or more counterparts, each of which
shall be deemed an original but all of which together shall constitute one and
the same instrument.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
executed in their names by their properly and duly authorized officers or
representatives as of the date first written above.
WORCESTER FOUNDATION FOR HYBRIDON, INC.
BIOMEDICAL RESEARCH, INC.
By: /s/ Thoru Pederson By: /s/ E. Andrews Grinstead III
---------------------------- --------------------------------
Name: Thoru Pederson Name: E. Andrews Grinstead III
Title: President & Director Title: Chairman, President & CEO
Date: 11/26/96 Date: 11-13-96
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