Exhibit 10.7
CONFIDENTIAL TREATMENT
AMENDMENT NO. 1 TO LICENSE AGREEMENT
BETWEEN THE UNIVERSITY OF SOUTHERN CALIFORNIA
AND MARET CORPORATION
This Amendment No. 1 to License Agreement (the "Amendment") is entered into
this 19th day of June, 2000.
RECITALS
A. The University of Southern California ("USC") and Maret Corporation
("Licensee") are parties to that certain License Agreement, USC FILE 2146B, USC
FILE 2429, AND USC FILE 2430 (the "License Agreement") relating to specifically
identified patents.
B. USC and Licensee are parties to certain Research Agreements, effective
August 31, 1994 and dated, July 18, 1997, as amended (the "Prior Research
Agreements"). Under the terms of the Prior Research Agreements, Licensee is
granted the option to license "University Intellectual Property" (as that term
is defined in the Prior Research Agreements). Licensee has exercised that option
and it is the intent of the parties that Licensee is granted a license for all
University Intellectual Property in accordance with the terms of the License
Agreement.
C. A new Research Agreement (the "New Research Agreement") is being
executed contemporaneously by the parties that provides for the option to
license University Intellectual Property (as that term is defined in the New
Research Agreement).
D. In addition to the patents that are currently the subject of the License
Agreement, the parties desire to amend the License Agreement to provide for the
license of University Intellectual Property under the Prior Research Agreements
or arising from the research activity funded by the Licensee between January 1,
2000 through the date of New Research Agreement (the "Interim Period").
E. The parties also desire to amend the License Agreement to conform the
definition of "Field of Use" to the research previously conducted under the
Prior Research Agreements and in the Interim Period.
AGREEMENT
NOW, THEREFORE, the parties agree as follows:
1. Section 2. DEFINITIONS is amended as follows:
1.1 Section 2a is deleted and amended to read as follows:
2a. The term "PATENT" or "PATENTS" shall mean any and all
patent applications listed in Appendix A and any and all patent applications
relating to inventions arising from research conducted under Prior Research
Agreements or research funded by Licensee during the Interim Period, and any and
all patents issued with respect to any of such patent applications or any
continuation, division, extension or reissue thereof, and any and all foreign
patents issuing from any patent filed which corresponds to claims contained in
any of the foregoing patents or applications.
1.2 Section 2c is deleted and amended to read as follows:
2c. "FIELD OF USE" shall mean (i) [ * ], and (ii) [ * ].
1.3 Section 2h is deleted and amended to read as follows:
2h. "TECHNOLOGY" shall mean any know-how, trade secrets,
biological materials, copyrightable works, copyrights, formulas, processes,
techniques, developments, and advances or other information or materials or any
technology either arising out of, conceived, developed or reduced to practice
under the RESEARCH AGREEMENT in the FIELD OF USE.
1.4 Section 2j is deleted and amended to read as follows:
2j. "RESEARCH AGREEMENT" shall mean the Research
Agreements, effective August 31, 1994 and dated, July 18, 1997, as amended, the
research funded by Licensee during the Interim Period, the Research Agreement
between USC and Licensee executed contemporaneously, and any and all future
Research Agreements between USC and Licensee.
2. Section 3. LICENSE is amended as follows:
2.1 Section 3ai is deleted and amended to read;
3ai. the exclusive worldwide license to use the PATENT(S)
and TECHNOLOGY to manufacture and sell the PRODUCT(S); and
2.2 Section 3aii is deleted and amended to read:
3aii. the right to grant sublicenses to any PATENT or
TECHNOLOGY licensed exclusively hereunder provided that any SUBLICENSEE agrees
to be bound by the terms and conditions of this Agreement applicable to
SUBLICENSEES.
3. Section 4. ROYALTY shall be amended as follows:
3.1 Section 4i shall be deleted and amended as follows:
*Confidential Treatment Requested. Omitted Portions filed with the Commission.
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4i. The obligation to pay a royalty under this Agreement on
the NET SALES OF A PRODUCT shall be imposed only once with respect to the same
unit of the PRODUCT regardless of the number of valid issued or, assuming they
were to issue, pending claims included within the PATENTS. Further, only one
royalty shall be due on any single unit of a PRODUCT whether such PRODUCT is a
PATENT PRODUCT, a TECHNOLOGY PRODUCT or a combination of the two. If the PRODUCT
may be both a PATENT PRODUCT and a TECHNOLOGY PRODUCT, then for the purposes of
the payment of royalties under this Agreement, the PRODUCT shall be deemed a
PATENT PRODUCT.
4. Section 11. SUBLICENSE PERMISSION is deleted and amended to read as
follows:
11. SUBLICENSE PERMISSION. Licensee may sublicense the PATENTS and
TECHNOLOGY only with prior written permission from USC, which permission will
not be unreasonably withheld, if there is compliance of the Sublicensee with the
specified terms in this Agreement.
5. Section 14. PUBLICITY is deleted in its entirely and amended as
follows:
14. PUBLICITY. Licensee may cite that it has a license and funding
agreement with USC regarding technology from the USC School of Medicine. Any
other use of the name of USC for products, promotion or marketing-related
purposes requires prior written USC approval. USC acknowledges that
communications with prospective investors, lenders and other business affiliates
as well as the SEC and other regulatory agencies will require disclosure of the
Licensee and USC relationship. USC retains the right to prior review of any
disclosure of the relationship with Licensee.
6. Section 17 NOTICES, REPORTS AND PAYMENTS is amended to read:
Notice shall be sent to the Licensee at the following address:
Maret Corporation
Dr. Terence E. Winters, Chief Executive Officer
4041 McArthur Blvd., Suite 375
Newport Beach, California 92660
USC and Licensee hereby acknowledge that all parties have complied with all
terms and provisions of the License Agreement and the Research Agreements to be
performed prior to the date of this Amendment. In all other respects, the
License Agreement is hereby ratified and confirmed. In the case of direct
conflict or conflict by reason of interpretation between any provision of this
Amendment and the License Agreement, the Amendment shall control and supercede
the terms of the License Agreement.
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UNIVERSITY OF SOUTHERN CALIFORNIA MARET CORPORATION
/s/ Dennis F. Dougherty /s/ T. E. Winters
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(Signature) (Signature)
Dennis F. Dougherty T. E. Winters
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(Print or Type Name) (Print of Type Name)
Senior Vice President of Administration CEO
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(Official Title) (Official Title)
6/13/2000 6/19/2000
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(Date) (Date)
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APPENDIX A
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[ * ]
*Confidential Treatment Requested. Omitted Portions filed with the Commission.
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