Amendment No. 1 to Patent and Technology License Agreement between The University of Texas M.D. Anderson Cancer Center and Introgen Therapeutics, Inc.

Summary

This amendment updates the original Patent and Technology License Agreement between The University of Texas M.D. Anderson Cancer Center and Introgen Therapeutics, Inc. It adds new inventions to the licensed subject matter and requires Introgen to reimburse the Center for past and future patent expenses related to these inventions. All other terms of the original agreement remain in effect, except where this amendment specifically changes them. The amendment is effective as of September 1, 1996.

EX-10.8B 7 h74007a3ex10-8b.txt AMENDMENT NO. 1 TO PATENT LICENSE AGREEMENT 1 EXHIBIT 10.8(b) AMENDMENT NO. 1 TO THE PATENT AND TECHNOLOGY LICENSE AGREEMENT This is AMENDMENT NO. 1 effective this 1st day of September, 1996, ("EFFECTIVE AMENDMENT NO. 1 DATE") to the Patent and Technology License Agreement dated July 20, 1994 (hereinafter referred to as the "AGREEMENT"), by and between THE UNIVERSITY OF TEXAS M.D. ANDERSON CANCER CENTER (hereinafter referred to as "MDA"), located at Houston, Texas, and which is a component institution of THE UNIVERSITY OF TEXAS SYSTEM (hereinafter referred to as "SYSTEM") which is governed by a BOARD OF REGENTS (hereinafter referred to as "BOARD") and INTROGEN THERAPEUTICS, INC., located at 301 Congress Avenue, Suite 1850, Austin, Texas 78701 (hereinafter referred to as "LICENSEE"). RECITALS A. BOARD is the owner of the PATENT AND TECHNOLOGY RIGHTS of the invention(s) listed in ATTACHMENT A hereto ("INVENTION(s)"). B. LICENSEE is a company interested in the development and commercialization of new technologies directed to the treatment of cancer, and other threatening diseases, to which end LICENSEE, MDA and BOARD entered into the AGREEMENT noted hereinabove. C. LICENSEE wishes to add the INVENTION(s) to its rights and obligations under the AGREEMENT. D. BOARD wishes to grant LICENSEE rights to the INVENTION(s) under the AGREEMENT to promote its practical development for the benefit of the MDA's patients and for the benefit of the people of the state of Texas. E. The definitions set forth in the AGREEMENT shall apply in this AMENDMENT NO. 1, except to the extent that a definition herein is specific to this AMENDMENT NO. 1. NOW, THEREFORE, in consideration for the mutual covenants contained herein, the sufficiency of which is hereby acknowledged, the parties hereby agree to the following: 1 2 AMENDED TERMS 1. Attachment A to the AGREEMENT is hereby amended by adding to the LICENSED SUBJECT MATTER thereof the INVENTION(s) listed in Schedule A of this Amendment. 2. In addition to the reimbursements for patent expenses provided for under the AGREEMENT and all other amendments thereto, LICENSEE shall reimburse MDA within thirty (30) days of the EFFECTIVE DATE of this AMENDMENT NO. 1 for all outstanding and unreimbursed patent expenses related to the INVENTION(s) and shall further reimburse MDA for all future and continuing patent expenses for the INVENTION(s) pursuant to Article 4.1(a) of the AGREEMENT for the term of the AGREEMENT, pursuant to invoicing by MDA. OTHERWISE, the terms and provisions of the original AGREEMENT thereto shall remain in full force and effect, provided, however, that in the event of a conflict in the terms and conditions between this AMENDMENT NO. 1 and the AGREEMENT, the terms and conditions of the AGREEMENT shall prevail. IN WITNESS WHEREOF, THE PARTIES HERETO HAVE CAUSED THEIR DULY AUTHORIZED REPRESENTATIVES TO EXECUTE THIS AMENDMENT NO. 1. THE UNIVERSITY OF TEXAS BOARD OF REGENTS OF THE M.D. ANDERSON CANCER CENTER UNIVERSITY OF TEXAS SYSTEM By: /s/ DAVID J. BACHRACH By: /s/ CHARLES B. MULLINS, M.D. -------------------------- -------------------------------- David J. Bachrach Charles B. Mullins, M.D. Executive Vice President Chancellor for Administration and Finance APPROVED AS TO CONTENT APPROVED AS TO FORM By: /s/ WILLIAM J. DOTY By: /s/ DUDLEY R. DOBIE, JR. -------------------------- ------------------------------ William J. Doty Dudley R. Dobie, Jr. Director, Technology Development Manager, Intellectual Property INTROGEN THERAPEUTICS, INC. By: /s/ DAVID G. NANCE -------------------------- David G. Nance President [*] Certain information on this page has been omitted and filed separately with the Commission. Confidential treatment has been requested with respect to the omitted portions. 2 3 SCHEDULE A Patent and Technology rights for U.S. and Foreign Patent Application entitled: [*] [*] Certain information on this page has been omitted and filed separately with the Commission. Confidential treatment has been requested with respect to the omitted portions. 3