Exhibit 10.40




 




 




[ * ] = 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.




 




SECOND AMENDMENT TO THE COLLABORATION AGREEMENT




 




                                BETWEEN




 




ONYX PHARMACEUTICALS, INC. AND WARNER-LAMBERT COMPANY




 




This Second Amendment to the Collaboration Agreement (“Second

Amendment”) is made and entered into on September 16, 2002 (the “Amendment

Date”), by and between ONYX PHARMACEUTICALS, INC., a Delaware corporation

having its principal place of business at 3031 Research Drive, Richmond,

California 94806 (“Onyx”) and WARNER-LAMBERT COMPANY, a Delaware corporation

and a wholly-owned subsidiary of Pfizer Inc. having a place of business at 2800

Plymouth Road, Ann Arbor, MI 48105 (“Warner”).




 




RECITALS




 




Whereas, Onyx and Warner entered into a Collaboration

Agreement dated October 13, 1999 (the “Collaboration Agreement”) for the

further development of the novel replicating virus, ONYX-015, and the research,

development and commercialization of two additional adenovirus products; and




 




Whereas, Onyx and Warner amended the Collaboration Agreement on August

6, 2001 (“First Amendment”); and




 




Whereas, Onyx and Warner wish to terminate their relationship in this

Second Amendment to the Collaboration Agreement;




 




Now therefore, in consideration of the foregoing and other good and

valuable consideration, the parties hereby agree as follows:




 




1.               Except as expressly defined herein,

defined terms will have the meanings set forth in the Collaboration Agreement.




2.               Except as expressly provided for herein,

upon the Amendment Date Warner and Onyx shall cease to have any rights or

obligations whatsoever provided for in the Collaboration Agreement or the First

Amendment thereto.




3.               Warner grants to Onyx an exclusive, even as to Warner,

full paid-up, irrevocable, worldwide license, with right of sublicense, under

all Warner Patents, Know-How and Confidential Information to the extent

necessary to conduct research and development of, to make, have made, use,

offer for sale, sell, have sold and import all Licensed Products, ONYX 015

Products, Terminated Products, and Independent Products without any obligation

to Warner.




 




1





























 




4.               Warner shall, within 60 days of the Amendment Date,

use best efforts to transfer a complete package of information to Onyx

containing all pre-clinical and clinical data and information not previously

sent to Onyx, and that is reasonably available to Warner or third parties that

Warner may have collaborated with during the term of the Agreement.




5.               Article 3, section 3.3, of the Collaboration

Agreement, titled “Terms of the Research Collaboration,” shall recite that the

Research Term shall conclude on the Amendment Date.  Notwithstanding section 3.5(f) of the Collaboration Agreement,

there shall be no six-month period after the end of the Research Term.  Further, Onyx waives the ninety (90) day

advance written notice that Warner is to give, as provided for in section

3.5(e) before Warner can terminate the Research Program.




6.               Warner hereby assigns to Onyx all rights, title, and

interest in and to all Inventions (whether made solely by Warner’s employees or

agents or jointly by the employees or agents of both Parties) and all

intellectual property rights therein relating to [ * ] made or

discovered during the term of the Agreement. 

Promptly after the Effective Date, Warner shall transfer to Onyx all

quantities of materials (including viral constructs, DNA, protein, etc.) and

information (including assays and methods of production) related to [ * ]

that is in Warner’s possession or Control. Onyx hereby grants to Warner a

non-exclusive, fully-paid, perpetual, irrevocable, worldwide license, without

the right to sublicense, to use the [

* ] Inventions and all

intellectual property rights solely for research purposes.




7.               Onyx grants Warner a nonexclusive, irrevocable,

worldwide, royalty-free, perpetual license, including the right to grant

sublicenses to Affiliates, to make and use all Onyx Confidential Information,

Know-How and Patents solely for research purposes.




8.               Upon the Amendment Date, Warner shall pay Onyx the sum

of six hundred twenty five thousand dollars ($625,000), as final payment under

Section 2.7 (a) for the work conducted under the Research Plan, which payment

shall represent the third quarter payment under the Research Plan.  Warner shall have no further financial

obligations to Onyx, including making the final, or fourth quarter payment

under the Research Plan.




9.               The following sections shall survive termination of

the Agreement: sections 9.1 (Confidentiality), 9.2 (Publicity), 13.2

(Indemnification for Licensed Products in the Shared Territory) (solely with

respect to Losses that accrued prior to the Effective Date of this Second

Amendment), 13.4 (Indemnification for Research and Development) (solely with

respect to Losses that accrued prior to the Effective Date of this Second

Amendment), 13.5 (Notice of Claim), 14.8 (Limitation of Liability), 14.9

(Waiver), and 14.10 (Severability) of the Collaboration Agreement, and Article

9 of the First Amendment (solely with respect to Losses that accrued prior to

the Effective Date of this Second Amendment) shall survive such termination.




 




2





























 




Except as specifically stated in this Second Amendment, all other terms

and conditions will terminate upon the Second Amendment Date.




 




In witness whereof, each of the parties has caused its duly authorized

representative to execute and deliver this Second Amendment as of the date set

forth above.




 




 




 




	

  WARNER-LAMBERT COMPANY


  	

   


  	

  ONYX PHARMACEUTICALS, INC.


  	

   


  
	

   


  	

   


  	

   


  	

   


  
	

  By


  	

  /s/Peter B. Corr


  	

   


  	

  By


  	

  /s/ Hollings C. Renton


  	

  .


  
	

   


  	

   


  	

   


  	

   


  
	

  Peter B. Corr, Chairman


  	

   


  	

  Hollings C. Renton, Chairman & CEO


  	

   


  
	

  Name and Title


  	

   


  	

  Name and Title


  	

   


  
						





 




 




[ * ] = 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.