Exhibit 3
[*] indicates that a confidential portion of the text of this agreement has been
omitted. The non-public information has been filed separately with the
Securities and Exchange Commission.
SEVENTH AMENDMENT TO LICENSE AGREEMENT
This Seventh Amendment to License Agreement (hereinafter "Amendment") is
made and effective on November 10, 2004, among XOMA TECHNOLOGY LTD., a company
organized and existing under the laws of Bermuda and having a place of business
at 2910 Seventh Street, Berkeley, California 94710 and XOMA IRELAND LIMITED, a
company organized and existing under the laws of Ireland and having a place of
business at Shannon Airport House, Shannon, Co. Clare, Ireland (hereinafter
collectively referred to as "CORPORATION"), and NEW YORK UNIVERSITY, a
corporation organized and existing under the laws of the State of New York and
having a place of business at 70 Washington Square South, New York, New York
10012 (hereinafter "NYU").
WITNESSETH
WHEREAS, CORPORATION's predecessor in interest and NYU entered into a
certain agreement made and effective as of August 6, 1990, as amended and
restated on September 1, 1993 and as subsequently amended on August 1, 1996,
June 12, 1997, December 23, 1998, June 25, 1999 and January 25, 2000 (as so
amended and restated, the "Agreement"), pursuant to which, inter alia,
CORPORATION's predecessor in interest undertook to sponsor the NYU Research
Project (as such term is defined in the Agreement) and NYU granted to
CORPORATION's predecessor in interest the License (as such term is defined in
the Agreement); and
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WHEREAS, CORPORATION and NYU wish to amend the Agreement as specified
herein;
NOW, THEREFORE, in consideration of the premises and the covenants,
conditions and promises set forth below, the parties hereto hereby agree as
follows:
1. Effect of Amendment. Except as expressly provided for herein, all terms
and conditions of the Agreement shall remain in full force and effect.
2. Certain Defined Terms. Terms which are defined in the Agreement shall
have the same meanings when used in this Amendment, unless a different
definition is given herein.
3. Term of Agreement. Subsection 7.b. of the Agreement shall be, and hereby
is, amended by replacing the word and numeral "fifteen (15)" in clause (i)
with the word and numeral "[*]."
4. Further Sublicenses. Subsection 7.c.(3) of the Agreement shall be, and
hereby is, amended to read in its entirety as follows:
the sublicensee may grant further sublicenses so long as such further
sublicensees agree to the same terms and conditions herein as are
applicable to the original sublicensee;
5. Various Payment Terms.
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(a) The language of Subsection 9.a.(2) of the Agreement is hereby
deleted and replaced in its entirety so that it reads as follows:
(2) Non-refundable, milestone payments as follows: within forty five
(45) days of the first approval by the United States Food & Drug
Administration ("FDA") or the European Medicines Evaluation Agency
("EMEA"), as applicable, of a marketing application submitted by
CORPORATION or its direct or indirect sublicensee relating to a
Licensed Product for the treatment of each of the medical conditions
referred to by Category (as defined below) in the table set forth
below, the corresponding amounts in the table set forth below:
---------------- -------------------------- -------------------------
Amount Payable in the Amount Payable in the
Category Event of FDA Approval Event of EMEA Approval
---------------- -------------------------- -------------------------
Category 1 $[*] $[*]
---------------- -------------------------- -------------------------
Category 2 $[*] $[*]
---------------- -------------------------- -------------------------
Category 3 $[*] $[*]
---------------- -------------------------- -------------------------
Category 4 $[*] $[*]
---------------- -------------------------- -------------------------
For purposes hereof, (A) "Category" shall mean Category 1, Category 2,
Category 3 or Category 4, each of which are defined below and are
mutually exclusive; (B) "Category 1" shall mean [*]; (C) "Category 2"
shall mean [*]; (D) "Category 3" shall mean [*]; and (E) "Category 4"
shall mean [*].
(b) The language of Subsection 9.a.(3) of the Agreement is hereby
deleted and replaced in its entirety so that it reads as follows:
a royalty of [*] percent ([*]%) of the Net Sales of any Licensed
Product described in Section 1.1(aa) or (bb) and sold by CORPORATION
or its sublicensees (including CORPORATION Entity) for any diagnostic,
prophylactic and/or therapeutic uses, for as long as CORPORATION
maintains the License, except that if a Licensed Product described in
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Section 1.1(aa) or (bb) is covered solely by an NYU Patent having
claims directed to the cDNA as described in Section 1.e.(i)(4)
(including in circumstances where a third party is producing and
selling a BPI Product by a manufacturing process using means other
than such claimed cDNA), then the royalty owed by CORPORATION shall be
reduced to [*] percent ([*]%).
(c) The language of Subsection 9.a.(4) of the Agreement is hereby
deleted and replaced in its entirety so that it reads as follows:
a royalty of [*] percent ([*]%) of the Net Sales of any Licensed
Product described in Section 1.1(cc) or (dd) and sold by CORPORATION
or its sublicensees (including CORPORATION Entity) for any diagnostic,
prophylactic and/or therapeutic uses, for as long as CORPORATION
maintains the License, except that if a Licensed Product described in
Section 1.1(cc) or (dd) is covered solely by an NYU Patent having
claims directed to the cDNA as described in Section 1.e.(i)(4)
(including in circumstances where a third party is producing and
selling a BPI Product by a manufacturing process using means other
than such claimed cDNA), then the royalty owed by CORPORATION shall be
reduced to [*] percent ([*]%).
(d) The language of Subsection 9.d. of the Agreement is hereby deleted
and replaced in its entirety so that it reads as follows:
Until such time as [*], the royalties otherwise due to NYU under
Section 9.a.(3) and/or 9.a.(4) hereof, whichever is applicable, shall
be reduced to [*] percent ([*]%) of the Net Sales of any Licensed
Product (before giving effect to the provisions of Section 9.a.(3) or
9.a.(4), as the case may be, that, when applicable, would reduce such
royalty to [*] percent ([*]%)) .
6. Notice to Sublicensee; Ability to Cure. Subsection 13.c. of the
Agreement shall be, and hereby is, amended by adding to the end thereof the
following:
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So long as a valid sublicense hereunder remains in effect between
CORPORATION and Zephyr Sciences Inc. ("Sublicensee"),
(i) NYU shall provide written notice to Sublicensee (A) of any breach
or default by CORPORATION hereunder at least 20 days prior to any
termination of this Agreement by NYU for cause based on such
breach or default and shall permit Sublicensee, in its sole
discretion, to cure any such breach or default by CORPORATION
hereunder within such 20-day notice period and (B) at least ten
(10) days prior to any other termination of this Agreement by
NYU. In the event Sublicensee does not exercise its right to cure
as provided in clause (A) above or receives the notice provided
for in clause (B) above, Sublicensee shall have the right (but
not the obligation), exercisable only by written notice to NYU
for a thirty (30) day period from the termination of this
Agreement, to enter into a license agreement with NYU upon terms
no less favorable to Sublicensee than the terms hereof then in
effect, provided that at such time as Sublicensee is no longer
obligated to pay CORPORATION royalties under the agreement
between CORPORATION and Sublicensee that includes the sublicense
hereunder (i) the royalty percentage payable to NYU under
Subsections 9.a.(3) and 9.a.(4) of the Agreement (as specified in
Paragraphs 5(b) and 5(c) of this Amendment) shall be [*] percent
([*]%) instead of [*] percent ([*]%); and (ii) the royalty
percentage payable to NYU under Subsection 9.d of the Agreement
(as specified in Paragraph 5(d) of this Amendment) shall be [*]
percent ([*]%) instead of [*] percent ([*]%); and
(ii) there shall be no amendment to the terms or conditions of this
Agreement without the prior written consent of Sublicensee;
provided, however, that adjustments in the financial terms
favorable to CORPORATION may occur without Sublicensee's prior
consent (so long as such adjustment does not diminish or
contravene any rights of Sublicensee).
7. Headings. The descriptive headings contained in this Amendment are
included for convenience and reference only and shall not be held to
expand, modify or aid in the interpretation, construction or meaning of
this Amendment or the Agreement.
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8. Counterparts. This Amendment may be executed in one or more
counterparts, each of which shall be an original and all of which shall
constitute together the same document.
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IN WITNESS WHEREOF, the parties hereto have executed this Amendment as
follows:
NEW YORK UNIVERSITY XOMA TECHNOLOGY LTD.
By: _________________________ By: ______________________________
Abram M. Goldfinger G. James Reynolds
Executive Director, Director
Industrial Liaison/
Technology Transfer
XOMA IRELAND LIMITED
SIGNED by
Alan Kane, Director,
duly authorized for
and on behalf of XOMA
IRELAND LIMITED in
the presence of:
___________________________