EXHIBIT 10.2
AMENDMENT TO LICENSE AGREEMENT
This Amendment to License Agreement ("Amendment") is entered into as of
August 26, 1997, by and between Avid Corporation, a Pennsylvania corporation
("Licensee"), and The DuPont Merck Pharmaceutical Company, a Delaware general
partnership ("Licensor"), and amends certain terms of that certain License
Agreement dated December 18, 1996, between Licensee and Licensor (the
"Agreement"). Capitalized terms not defined herein shall have the meanings
given to them in the Agreement.
RECITALS
A. Licensee and Licensor have previously entered into the Agreement,
pursuant to which Licensor has licensed certain technology to Licensee.
B. Licensee and Licensor desire to amend certain terms of the Agreement
as set forth in this Amendment.
NOW, THEREFORE, for good and valuable consideration, Licensee and
Licensor hereby agree as follows:
1. AMENDMENTS. The Agreement is hereby amended as follows:
a. SECTION 1.10. In Section 1.10, the words "bismethanesulfonic
acid salt" in the fourth and fifth lines are hereby deleted, and the words
"and all salts thereof, and all esters of the vicinal dihydroxy group and all
salts thereof" are hereby inserted after the word "3-diazepin-2-one," in the
fourth line.
b. SECTION 3.05. In Section 3.05, the first two sentences are
hereby deleted, and the following sentences are hereby added to the beginning
of Section 3.05: "Licensee has the right to sublicense the rights granted it
pursuant to this Agreement to any unrelated, unaffiliated third party after
obtaining Licensor's prior written consent. Licensor agrees to consider any
request for consent to sublicense in good faith and shall not unreasonably
withhold or delay such consent. In the event Licensee sublicenses the rights
granted it hereunder to any unrelated, unaffiliated third party, then
Licensee shall pay Licensor *** of the cash equivalent of any
license fee and technology premium equity payment that Licensee receives it
from its Sublicensee ("Additional Payment").
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the commission.
c. SECTION 6.01: In Section 6.01, insert the subsection
designation "(i)" after the section heading and before the first sentence and
add the following sentences as a new Section 6.01 (ii):
"(ii) Licensor shall reasonably cooperate with Licensee and shall
provide Licensee with copies of material filings and correspondence
pertaining to the prosecution and maintenance of the Patent Rights
("Patent Prosecution Activities") and give Licensee an opportunity to
comment thereon. Licensor shall consider requests made by Licensee to
pursue Patent Prosecution Activities, and shall make a good faith
determination of whether to pursue such Patent Prosecution Activities.
Licensor shall provide notice to Licensee of any decision by Licensor
to discontinue or to not pursue Patent Prosecution Activities in a
particular country promptly upon reaching such decision and, in the
case of a decision to discontinue Patent Prosecution Activities, no
less than *** before the discontinuance thereof. Upon
receipt of such notice, or in the event that Licensor fails to timely
pursue Patent Prosecution Activities, Licensee shall be free at its
own expense, to pursue, continue or discontinue any or all of the
Patent Prosecution Activities in that particular country. Upon the
request of Licensee, Licensor shall consider in good faith filing for
reissue patents with claims specifically directed to the Licensed
Compound and methods for its therapeutic use. Notwithstanding
anything to the contrary, failure by Licensor to perform any of its
obligations described in this Section 6.01 (ii) shall not be
considered a breach of this Agreement."
d. SECTION 11.03. Section 11.03 is hereby amended in its entirety
to read as follows:
"Both Licensor and Licensee may freely transfer or assign their rights and
obligations under this Agreement to any Affiliate without the prior consent
of the other party. Licensee may not assign its rights and obligations
under this Agreement to any unrelated, unaffiliated third party without the
prior written consent of Licensor and any attempted assignment without such
consent shall be void. Licensor agrees to consider any request for such an
assignment in good faith and shall not unreasonably withhold or delay its
consent thereto. As a condition to any transfer or assignment, the
transferee must agree to be bound by the obligations of the transferor.
Subject to the foregoing, this Agreement shall bind and inure to the
benefit of the parties and their respective successors and assigns."
e. SCHEDULE B. Schedule B is hereby amended in its entirety and
replaced with Schedule B in the form attached to this Amendment.
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the commission.
2. ACKNOWLEDGEMENT. Licensor hereby acknowledges that, as of the date
hereof, Licensee has substantially complied with the Development Schedule and
has satisfied its *** under Section 5.01 of the Agreement.
3. GENERAL TERMS. The Agreement, as amended by this Amendment,
constitutes the entire agreement between Licensee and Licensor regarding the
subject matters contained therein and herein. In the event of any conflict
between the provisions of the Agreement and this Amendment, the provisions of
this Amendment shall govern and control. This Amendment shall be governed
by, and construed in accordance with, the laws of the *** without
regard to its conflicts of laws principles. This Amendment may be executed
in any number of counterparts, each of which shall be deemed an original and
all of which shall constitute one and the same instrument. If any provision
of this Amendment is for any reason held to be ineffective, unenforceable or
illegal, such condition shall not affect the validity or enforceability of
any of the remaining portions hereof-, provided, further, that the parties
shall negotiate in good faith to replace any ineffective, unenforceable or
illegal provision with an effective replacement as soon as is practical.
IN WITNESS WHEREOF, Licensee and Licensor have each executed this
Amendment through an authorized officer as of the date written below.
AVID CORPORATION
By: /s/ illegible
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Its: Executive Vice Pres & General Counsel
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Date: August 26, 1997
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THE DUPONT MERCK
PHARMACEUTICAL COMPANY
By: /s/ illegible
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Its: President
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Date: August 26, 1997
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Confidential Treatment and filed separately with the commission.
SCHEDULE B
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*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the commission.