Exhibit
10.45


 


Confidential


 


[...] =      Certain confidential information contained
in this document, marked by brackets, has been omitted and filed separately
with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.


 


CONFIDENTIAL
PROVISIONS MARKED


 


EXHIBIT 10.45  (CONFIDENTIAL)


 


AMENDMENT
NO. 1 TO THE PATENT LICENSING MASTER AGREEMENT


 


This AMENDMENT NO. 1 TO THE PATENT LICENSING MASTER AGREEMENT (the
“Amendment”), is entered into as of September 18, 2003 by and between
Genentech, Inc. (“GNE”), a Delaware corporation having offices at 1 DNA Way,
South San Francisco, California 94080 and PROTEIN DESIGN LABS, INC., a Delaware
corporation having offices at 34801 Campus Drive, Fremont, California 94555 (“PDL”)
and amends that certain Patent Licensing Master Agreement dated September 25,
1998 (the “Agreement”).  Except as
expressly provided herein, capitalized terms shall have the meaning set forth
in the Agreement.


 


RECITALS


 


A.            WHEREAS, GNE and PDL
are parties to the Agreement; and


 


B.            WHEREAS, GNE and PDL
desire to amend the Agreement to extend the period during which GNE may obtain
nonexclusive license rights under the PDL Licensed Patents and PDL may obtain
nonexclusive license rights under the GNE Licensed Patents.


 


AGREEMENT


 


NOW THEREFORE, the parties agree as follows:


 


Except as expressly set forth herein, capitalized terms and references
to Sections, Exhibits and Articles shall be deemed references to the Agreement.


 


1.             AMENDMENT OF AGREEMENT.


 


Section 2.2 is
amended to read in full as follows:


 


2.2
Number of Licensed Antigens; Term of Rights.


 


(a)  Limit on Number of Antigens.  Except as provided in Section 2.2(c), GNE’s
right to obtain licenses pursuant to Section 2.1 may be exercised for
Antibodies directed against a maximum total of six (6) Antigens (provided that,
GNE has already exercised a license with respect to the Antigen, HER-2, and
therefore, has the right, except as provided otherwise in Section 2.2(c), to
obtain licenses for Antibodies directed against five (5) additional Antigens),


 


(b)  Expiration of Rights to Elect.  Except as provided in Section 2.2(c), GNE’s
right to obtain licenses pursuant to Section 2.1 shall expire on December 31,
2008; provided that


 

















 


GNE may elect to extend the
expiration period for each license right under Section 2.1 not exercised by
December 31, 2008 for an additional [...] year period by written notice and
payment of the GNE Antigen Extension Fee to PDL prior to December 31, 2008 as
provided in Section 3.4(a).


 


(c)  Double Up Right.  Upon written notice to PDL and payment of
the GNE Double Up Fee at any time prior to [...], GNE may elect up to an
additional [...] Antigens under Section 2.1 for a period of [...] years following
the date of such notice; provided that rights to elect licenses with respect to
the remaining [...] Antigens shall expire as of [...] unless otherwise extended
pursuant to Section 2.2(b).  By way of
illustration and without limitation, if GNE elects to exercise its right
hereunder but has exercised rights to licenses with respect to only [...]
Antigens under Section 2.1 (including the license exercised by GNE with respect
to the Antigen, HER-2) as of [...] (and has not extended the designation of the
remaining [...] Antigens pursuant to Section 2.2(b)), then the cumulative number
of Antigens subject to election by GNE under this Agreement through [...] shall
be [...] Antigens.


 


Section 5.2 is amended to
read in full as follows:


 


5.2
Number of Licensed Antigens; Term of Rights.


 


(a)  Limit of Number of Antigens.  Except as provided in Section 5.2(c), PDL’s
right to obtain licenses pursuant to Section 5.1 may be exercised for
Antibodies directed against a maximum total of six (6) Antigens.


 


(b)  Expiration of Rights to Elect.  Except as provided in Section 5.2(c), PDL’s
right to obtain licenses pursuant to Section 5.1 shall expire on December 31,
2008, provided, however, that PDL may elect to extend the expiration period for
each license right under Section 5.1 not exercised by December 31, 2008 for an
additional [...] year period by written notice and payment of the PDL Antigen
Extension Fee to GNE prior to December 31, 2008 as provided in Section 6.4(a).


 


(c)  Double Up Right.  Upon written notice to GNE and payment of
the PDL Double Up Fee at any time prior to [...], PDL may elect up to an
additional [...] Antigens under Section 5.1 for a period of [...] years following
the date of such notice; provided that rights to elect licenses with respect to
the first [...] Antigens shall expire as of [...] unless otherwise extended pursuant
to Section 5.2(b).  By way of
illustration and without limitation, if PDL elects to exercise its right
hereunder but has exercised rights to licenses with respect to only [...]
Antigens under Section 5.1 as of [...] (and has not extended the designation of
the remaining [...] Antigens pursuant to Section 5.2(b)) then the cumulative
number of Antigens subject to election by PDL under this Agreement through [...]
shall be [...] Antigens.


 


2.             NO
OTHER CHANGES.  On and after
the date hereof, each reference in the Agreement to “this Patent Licensing
Master Agreement,” “hereunder,” “hereof,” or words of like import referring to
the Agreement, shall mean and be a reference to the


 

















 


Agreement as amended hereby.  Except as specifically amended above, all other terms and
conditions of the Agreement shall continue to be in full force and effect.


 


3.             PUBLIC
DISCLOSURE.  Except as
required by law or regulation, neither party shall publicly disclose the terms
and conditions of this Amendment unless expressly authorized to do so by the
other party, which authorization shall not be unreasonably withheld.  In the event that disclosure shall be agreed
upon then the parties will work together to develop a mutually acceptable
disclosure.


 


IN WITNESS WHEREOF, the
parties have executed this Amendment through their duly authorized
representatives as of the date set forth above.


 


	
  Protein Design
  Labs, Inc.

  	
  Genentech, Inc.

  
	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
  By:

  	
  /s/ Mark McDade

  	
   

  	
  By:

  	
  /s/ Joseph S. McCracken

  	
   

  
	
   

  	
  Mark McDade

  	
   

  	
  Joseph S. McCracken

  
	
   

  	
   

  	
   

  	
   

  
	
  Title: Chief Executive
  Officer

  	
  Title: VP Business & Market Development

  
						



 


 


[...] =      Certain confidential information contained
in this document, marked by brackets, has been omitted and filed separately
with the Securities and Exchange Commission pursuant to Rule 24b-2 of the
Securities Exchange Act of 1934, as amended.