Amendment to Collaboration and License Agreement among diaDexus, Incyte Pharmaceuticals, and SmithKline Beecham (May 1999)

Summary

This amendment to the Collaboration and License Agreement, originally dated September 2, 1997, is between diaDexus, Incyte Pharmaceuticals, and SmithKline Beecham. It clarifies that certain intellectual property owned or controlled by SB Biologicals or SmithKline Beecham, specifically related to vaccine products, is excluded from the agreement's definitions of diagnostic or technology IP. It also confirms that SB Biologicals will not engage in certain business activities except as related to vaccine products, and that specific Incyte IP is similarly excluded. The amendment is effective retroactively to the original agreement date.

EX-10.20 21 f67303orex10-20.txt EXHIBIT 10.20 1 EXHIBIT 10.20 [INCYTE LETTERHEAD] BY FACSIMILE May 4, 1999 Joseph L. Harris Senior Vice President and Director Corporate Strategy and Business Development SmithKline Beecham One Franklin Plaza Philadelphia, PA 19101 Patrick Plewman Chief Operating Officer diaDexus, LLC 3303 Octavius Drive Santa Clara, CA 95054 Dear Joe and Bill: This letter follows up on our recent conversations regarding the Collaboration and License Agreement, dated September 2, 1997, (the "Collaboration and License Agreement"), among diaDexus, LLC ("diaDexus"), Incyte Pharmaceuticals, Inc. ("Incyte"), SmithKline Beecham plc and SmithKline Beecham Corporation (collectively, "SB"). When signed by diaDexus, Incyte and SB, this letter will be an amendment to the Collaboration and License Agreement. 1. Subject to the terms of this amendment, diaDexus, Incyte and SB agree that intellectual property that is either (a) owned by SB Biologicals SA ("SB Biologicals") or with respect to which SB Biologicals has the right to grant a license or (b) owned by SB or with respect to which SB has the right to grant a license to the extent the intellectual property described in this subsection (b) is specific to a therapeutic vaccine product or prophylactic vaccine product that is being developed, promoted or marketed by SB Biologicals (collectively referred to as "SB Biological IP"), is not and will not be included within the definitions of "SB Diagnostic IP" or "SB Technology IP" pursuant to the Collaboration and License Agreement. 2. SB Biologicals will remain subject to all of the provisions of the Collaboration and License Agreement applicable to SB Affiliates, including without limitation those in Section 7.1. In this regard the parties agree that, during the Initial License Period (as defined in the Collaboration and License Agreement), SB Biologicals will not itself engage in the business of making, having made or selling cDx Kit(s), except in connection with the development, marketing, co-marketing, distribution or sale of a specific therapeutic vaccine product or prophylactic vaccine product. 2 3. For the avoidance of doubt, diaDexus, Incyte and SB acknowledge that intellectual property pertaining to single nucleotide polmorphisms ("SNPs") and/or genotyping that is owned by Incyte or with respect to which Incyte has the right to grant a license is not and will not be included within the definitions of "Incyte Diagnostic IP" or "Incyte Technology IP" pursuant to the Collaboration and License Agreement. 4. Nothing in this amendment shall constitute a waiver by any party of any other right under the Collaboration and License Agreement, except as explicitly set forth in this amendment. 5. This amendment shall become effective upon execution of this amendment, and shall be applied retroactively to the Effective Date of the Collaboration and License Agreement. I believe that this is responsive to SB's request and ask that the parties execute this amendment where indicated below. We are looking forward to concluding the diaDexus financing. Sincerely, /s/ MARIAN N. MARRA ------------------- Marian N. Marra Senior Vice President, Corporate Development cc: Roy Whitfield Randy Scott AGREED AND ACCEPTED: SmithKline Beecham Corporation SmithKline Beecham plc By: /s/ DONALD Y. PARMAN By: /s/ GEORGE POSTE ------------------------------- ------------------------------- Title: Secretary Title: Director ---------------------------- ---------------------------- Date: May 4, 1999 Date: May 4, 1999 ----------------------------- ----------------------------- diaDexus By: /s/ P. PLEWMAN ------------------------------- Title: COO ---------------------------- Date: 8/10/99 -----------------------------