Second Amendment to Exclusive License Agreement

 

This Second Amendment to the Exclusive License Agreement (this “Amendment”) is entered into as of January 14, 2011 (the “Effective Date of this Amendment”), by and between The George Washington University (“University”) and PROTEA BIOSCIENCES. INC., (“Company”) having a place of business at 955 Hartman Run Road, Suite 210, Morgantown, WV 26507. University and Company may each be referred to herein individually as “Party” and collectively as the “Parties”. The Exclusive License Agreement effective as of December 1, 2008 which was amended as set forth in the Amended and Restated Exclusive License Agreement effective as of February 22, 2010 and all appendices and exhibits thereto are collectively referred to herein as the “First Amended Agreement” and the work under such First Amended Agreement will be referred to herein as the “Project”.

 

Recitals

 

WHEREAS, the Parties hereto desire to amend the terms of the First Amended Agreement to further reflect certain additional understandings with respect to the Project and the First Amended Agreement.

 

NOW, THEREFORE, for and in consideration of the mutual terms and conditions set forth herein and other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the Parties agree as follows:

 

 

 

“WHEREAS, University and Company entered into that certain Exclusive License Agreement effective as of December 1, 2008, which was amended as set forth in the Amended and Restated Exclusive License Agreement effective as of February 22, 2010, relating to Laser Ablation Electrospray ionization (“LAESI”) and 3D imaging technology, and LAESI Detection of Metabolic Changes In Cells Upon Viral Infection technology;

WHEREAS, University and Company desire to clarify certain provisions of the First Amended Agreement, particularly, but not exclusively, with respect to an additional technology relating to LAESI analysis of small cell populations and single cells by consecutive laser pulses and patent prosecution responsibility;

WHEREAS, University and Company desire to amend and restate the First Amended Agreement to include such clarifications;

WHEREAS, University is the owner of certain rights relating to the LAESI technology, the 3D imaging technology, LAESI Detection of Metabolic Changes In Cells Upon Viral Infection technology and LAESI Analysis of small cell populations and single cells by consecutive laser pulses; and”

 

 

“University Technology Rights” shall mean the University’s rights in technical information, know how, processes, procedures, compositions, devices, methods, formulas, protocols, techniques, software, designs, drawings, or data that are created by Akos Vertes (Inventor) at the University relating to subject matter disclosed in the applications set out in Exhibit A, or relating to the Laser Ablation Electrospray Ionization (“LAESI”), 3D imaging technology, and LAESI Detection Of Metabolic Changes In Cells Upon Viral Infection technologies and LAESI application to small cell populations technologies including the technology as described in the University invention disclosure entitled “Subcellular Analysis by Laser Ablation Electrospray Ionization (LAESI) Mass Spectrometry”, a copy of the invention disclosure statement is attached as Exhibit B to this Amendment, which are useful or desirable for practicing such technologies and/or the inventions described by the University Patent Portfolio.

 

 

(a) Responsibility. During the term of this Agreement, Company will have the first right for prosecuting and maintaining the University Patent Portfolio in the name of the University, including the prosecution and maintenance of the University Patent Portfolio with the appropriate patent office. If University determines that Company is not obtaining reasonable protection, is acting contrary to University’s interests, or is otherwise negligent in its prosecution or maintenance of the protection thereof, University shall be free to take sole responsibility for prosecuting and maintaining the University Patent Portfolio. If the Company decides not to file patent applications in any country or region within the Territory, not to file continuation applications of an allowed patent application for disclosed but unclaimed inventions reasonably believed to be patentable, not to maintain any patent or to abandon any patent or pending application in the University Patent Portfolio, then the Company will notify University of its intent to do so with sufficient prior notice so that University can, in its discretion, take over the filing, prosecution, or maintenance of any such application or patent. Company shall deliver to University’s Technology Transfer Office, copies of any communications to or from any patent office with appropriate lead time (preferably at least ten business days) for University to review and comment upon such materials prior to any submission to the patent office. Company shall be solely responsible for the costs and expenses for drafting, filing, prosecuting and maintaining the University Patent Portfolio, without offset against any payments due under this Agreement.

 

 

 

This Agreement, including the exhibits hereto, constitutes the entire understanding between the Parties with respect to the subject matter contained herein and cancels and supersedes any and all prior agreements, understandings and arrangements whether oral or written between the parties relating to the subject matter hereof, including the First Amended Agreement.

 

 

Application No. Filing Date		Title		Inventor(s)
12/176,324 18 July 2008		Laser Ablation Electrospray Ionization (LAESI) for Atmospheric Pressure, In Vivo, and Imaging Mass Spectrometry		Vertes, Akos; Nemes; Peter;
12/323,276 25 Nov 2008		Three-dimensional Molecular Imaging by Infrared Laser Ablation Electrospray Ionization Mass Spectrometry		Vertes, Akos; Nemes, Peter
12/774,533 05 May 2010		Methods for Detecting Metabolic States by Laser Ablation Electrospray Ionization Mass Spectrometry		Vertes, Akos; Kashanchi, Fatah; Sripadi, Prabhakar; Kehn-Hall, Kylene
To be filed		Subcellular Analysis by Laser Ablation Electrospray Ionization (LAESI) Mass Spectrometry		Vertes, Akos et al.
PCT/US09/51157 20 July 2009		LAESI for Atmospheric Pressure, In Vivo and Imaging Mass Spectrometry		Vertes, Akos; Nemes, Peter
PCT/US09/65891 25 Nov 2009		Three-dimensional Molecular Imaging by Infrared Laser Ablation Electrospray Ionization Mass Spectrometry		Vertes, Akos; Nemes, Peter
PCT/US10/33757 05 May 2010		Methods for Detecting Metabolic States by Laser Ablation Electrospray Ionization Mass Spectrometry		Vertes, Akos; Kashanchi, Fatah; Sripadi, Prabhakar; Kehn-Hall, Kylene

 

 

 

On and after the Effective Date of this Amendment, each reference in the Agreement to “this Agreement”, “hereunder”, “hereof” or words of like import referring to the Agreement shall mean and be a reference to the First Amended Agreement as amended by this Amendment.

 

 

 

/s/ Leo M. Chalupa
Name
Title:
The George Washington University
/s/ Stephen Turner
Name:	Stephen Turner
Title:	CEO
PROTEA BIOSCIENCES, Inc.