UNIVERSITY OF MINNESOTA
FIRST AMENDMENT TO EXCLUSIVE PATENT LICENSE AGREEMENT
THIS FIRST AMENDMENT TO EXCLUSIVE PATENT LICENSE AGREEMENT (the First Amendment) is dated and effective as of the date of last signature (the Amendment Effective Date), and is made by and between Regents of the University of Minnesota, a constitutional corporation under the laws of the state of Minnesota having a place of business at 1000 Westgate Drive, Suite 160, St. Paul, Minnesota 55114 (the University), and CIPAC Limited, an entity under the laws of Malta, and having a place of business at Level 4, Site 8A, Rosa Marina Buildings, Marina Seafront, Pieta PTA 9041, Malta (the Licensee).
WHEREAS, University and Licensee are parties to an Executive Patent License Agreement, dated March 26, 2012 (the EPLA), pursuant to which the University granted to Licensee certain exclusive rights to Licensed Technology (as defined in the EPLA), including without limitation, to U.S. Patent Application [***], and (as provided in Section 5.3 of the EPLA) to University Project Inventions and Joint Project Inventions (as those terms are defined in the Research Agreement) that might be developed by the University under an existing Domestic Research Agreement between Licensees predecessor-in-interest and University, dated October 1, 2011, as amended by Deed of Amendment, dated (collectively, the Research Agreement);
WHEREAS, University and Licensee are currently in negotiations to execute a new research agreement to provide for additional funding for research to be conducted by the University;
WHEREAS, University desires to amend the EPLA to clarify that (a) University Project Inventions and Joint Project Inventions (as those terms are defined in the Research Agreement) conceived or reduced to practice by the University in the course of performing the research outlined in the Research Agreement; and (b) any other patentable rights conceived or reduced to practice by the University in the course of performing any other non-clinical research funded by Licensee in the Research Field that is not assigned to Licensee (collectively, New IP) will be licensed to Licensee under the terms of the EPLA without additional Payments (as that term is defined in the EPLA), except additional Payments resulting from Running Royalties and Sublicense Fees as set forth in Section 11.4 and 11.5 of the EPLA; and
WHEREAS, University and Licensee wish to make certain other amendments to the EPLA as set forth herein,
NOW, THEREFORE, in consideration of the representations above and the mutual covenants and promises hereinafter set forth, the parties agree as follows:
1. Definitions. Capitalized terms used but not defined herein shall have the meanings giving them in the EPLA.
2. Additional Intellectual Property. Section 5.3 of the Key Details of the EPLA is hereby deleted in its entirety and replaced with the following new provision:
Section 5.3 Additional Intellectual Property. Additional Intellectual Property shall mean and automatically include all New IP, upon payment by Licensee of the applicable Fee required in accordance with the applicable research agreement under which such New IP was created, without any Additional Payments, except additional Payments resulting from Running Royalties and Sublicense Fees as set forth in Section 11.4 and 11.5 of the EPLA. For the sake of clarity, the term Fee shall mean the amount set forth in the research agreement under which such New IP was recreated.