Amendment No. 1 to Exclusive Patent and Technology License Agreement between University of Texas System and Xpention, Inc.

Summary

This amendment updates the original license agreement between the University of Texas System (on behalf of the M.D. Anderson Cancer Center) and Xpention, Inc. It corrects a typographical error in the licensee's name, adds a $25,000 documentation fee, and introduces escalating annual maintenance fees. The amendment also revises conditions under which the University may terminate the agreement if Xpention fails to achieve certain sales, regulatory, or partnership milestones within specified timeframes. All other terms of the original agreement remain unchanged.

EX-10.1 2 ex10-1.txt EXHIBIT 10.1 AMENDMENT NO. 1 TO THE PATENT AND TECHNOLOGY LICENSE AGREEMENT This AMENDMENT NO. 1, effective this 24th day of September, 2008 ("AMENDMENT NO. 1 EFFECTIVE DATE"), to the Exclusive Patent and Technology License Agreement between the PARTIES dated February 17, 2005 ("ORIGINAL LICENSE"), is made by and between the BOARD OF REGENTS ("BOARD") of THE UNIVERSITY OF TEXAS SYSTEM ("SYSTEM"), an agency of the State of Texas, whose address is 201 West 7th Street, Austin, Texas 78701, on behalf of THE UNIVERSITY OF TEXAS M. D. ANDERSON CANCER CENTER ("UTMDACC"), a component institution of SYSTEM, and XPENTION, INC. ("XPENSION") a Colorado corporation, having a principal place of business located at 10965 Elizabeth Drive, Conifer, Colorado 80433. BOARD and LICENSEE may be referred to hereafter collectively as the "PARTIES." RECITALS BOARD and LICENSEE desire to amend the ORIGINAL LICENSE. NOW, THEREFORE, in consideration of the mutual covenants contained herein, the sufficiency of which is hereby acknowledged, the PARTIES hereby agree to the following: AMENDED TERMS 1. In order to correct a typographic error in LICENSEE's name, paragraph one of the ORIGINAL LICENSE, line 6, is deleted in its entirety and replaced with the following: "...SYSTEM, and Xpention, Inc, ("XPENTION"), a Colorado corporation having a principal place of business located..." 2. The period at the end of Section 4.1(e) is replaced with "; and". In addi- tion, new Section 4.1(f) is added to the ORIGINAL LICENSE as follows: "A nonrefundable AMENDMENT NO. 1 documentation fee in the amount of US$25,000.00, due and payable within thirty (30) calendar days after AMENDMENT NO. 1 has been fully executed by all PARTIES and LICENSEE has received an invoice for the amount from UTMDACC; and" 3. New Section 4.1(g) is added to the ORIGINAL LICENSE as follows: "An Annual Maintenance Fee due and payable (without invoice) within thirty (30) calendar days of the first anniversary of AMENDMENT NO. 1 EFFECTIVE DATE, and within thirty (30) calendar days of every anniversary of the EFFECTIVE DATE occurring 1 thereafter up through and including the anniversary following the first SALE as follows: (i) First anniversary of the AMENDMENT NO 1. EFFECTIVE DATE: US$25,000.00 due and payable within thirty (30) calendar days of the first anniversary of the EFFECTIVE DATE; and (ii) Second and each subsequent anniversary of the AMENDMENT NO 1. EFFECTIVE DATE: The amount of the Annual Fee due will increase twenty-five thousand dollars (US$25,000.00) per year from the previous year's payment (e.g. US$50,000.00 shall be due and payable within thirty (30) calendar days of the second anniversary of the AMENDMENT NO 1. EFFECTIVE DATE: US$75,000.00 shall be due and payable within thirty (30) calendar days of the third anniversary of the AMENDMENT NO. 1 EFFECTIVE DATE, and so on). In the event that there is less than a twelve (12) month period between the anniversary of AMENDMENT NO. 1 EFFECTIVE DATE which immediately precedes the first SALE and the first SALE, then LICENSEE shall pay UTMDACCC the following pro rata Annual Maintenance Fee within thirty (30) calendar days of the anniversary of the AMENDMENT NO. 1 EFFECTIVE DATE which follows the first SALE: (1) the Annual Maintenance Fee due for that year multiplied by the fraction, A/C, where A is the number of months between the anniversary of the AMENDMENT NO. 1 EFFECTIVE DATE preceding the first SALE, and the first SALE, and C is twelve (12)." 4. Section 13.3 of the ORIGINAL LICENSE is deleted in its entirety and replaced with the following: "Any time after two (2) years from the AMENDMENT NO. 1 EFFECTIVE DATE, BOARD or UTMDACC have the right to terminate the AGREEMENT in any national political jurisdiction within the LICENSED TERRITORY if LICENSEE fails to either: (1) make a SALE of a LICENSED PRODUCT for veterinary diagnostic use; or (2) enter into a STRATEGIC ALLIANCE for veterinary diagnostic use." 5. Section 13.4 of the ORIGINAL LICENSE is deleted in its entirety and replaced with the following: "Any time after three (3) years from the AMENDMENT NO. 1 EFFECTIVE DATE, BOARD or UTMDACC have the right to terminate the AGREEMENT in any national political jurisdiction within the LICENSED TERRITORY if LICENSEE fails to either: (1) obtain regulatory approval of 2 a Biological License Application for human diagnostic use in the U.S. or an equivalent foreign filing in any other national political jurisdiction for a LICENSED PRODUCT; (2) make a SALE of a LICENSED PRODUCT for human diagnostic use; or (3) enter into a STRATEGIC ALLIANCE for human diagnostic use." 6. The PARTIES acknowledge and agree that, except as set forth in this AMEND- MENT NO. 1 the terms and conditions of the ORIGINAL LICENSE shall remain in full force and effect. IN WITNESS WHEREOF, the PARTIES hereto have caused their duly authorized representatives to execute this AMENDMENT NO. 1. BOARD OF REGENTS OF THE XPENTION UNIVERSITY OF TEXAS SYSTEM By _________________________________ By _________________________ John Mendelsohn, M.D. Name: David M. Kittrell President Title: President The University of Texas M.D. Anderson Cancer Center Date: ________________________ Date: __________________________ THE UNIVERSITY OF TEXAS M. D. ANDERSON CANCER CENTER By _________________________________ Leon Leach Executive Vice President Approved as to form The University of Texas M. D. Anderson Cancer Center _________ NW/LS Date: ________________________ Approved as to Content: Reviewed and Approved by UTMDACC Legal Services for By _________________________________ UTMDACC Signature: Christopher C. Capelli, M.D. Vice President, Technology Based Ventures ____________________________ Office of Technology Commercialization M. D. Anderson Cancer Center Date: ________________________ By _________________________________ 3