**Exhibit 10.1**

 
|  | ADDENDUM to Technology Development  Agreement and License Agreement |
|--|---------------------------------------------------------------------|

 

 

**Parties:**

 

**TechnologyFoundation STW**, having its office at Utrecht, VanVollenhovenlaan 661 (3527 JP) The Netherlands, hereinafter referred to as“STW”, legally represented by Dr. J.W. Maas, acting in its own name and;

 

**TwenteUniversity**, having its office in the Netherlands at Enschede, atthe Drienerlolaan 5, (NL-7522 NB) Enschede, hereinafter referred to as“INSTITUTION”, legally represented by P. Fij, director of the Faculty Scienceand Technology;

 

and

 

**IMMUNICONCORPORATION**, a Delaware corporation having offices at 3401 MasonsMill Road, Huntingdon Valley, Pennsylvania 19006 (215)938 0437 fax, hereinafterreferred to as “IMMUNICON”; and

 

**IMMUNIVESTCORPORATION**, a Delaware corporation having offices at Suite 1300,1105 North market Street, P.O. Box 8985, Wilmington, Delaware 19899-8985,hereinafter referred to as “IMMUNIVEST”

 

**WHEREAS:**

 

•                                          INSTITUTION,more specifically the Faculty of Applied Physics, is carrying out a researchprogram subsidized by STW under supervision of prof. dr.ir. J. Greve, with thetitle “Aids in Africa: affordable HIV staging”, further described in researchproposal with STW number: TGT.6146, known between parties, hereinafter referredto as “the Research Project”;

 

•                                          the aim ofthe Research Project is to develop a product for the detection and/ormonitoring of Acquired Immune Deficiency Syndrome or other conditions for usesolely in the countries of the African continent, within the definition of whatis hereinafter defined as the “Product”;

 

•                                          theResearch Project takes place with financial support from STW and according tothe conditions for this support STW and INSTITUTION are together the owners ofall results, including intellectual property rights, generated within theResearch Project;

 

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•                                          TheResearch Project is focussing on the development of a simple diagnostic tool atlow cost application for testing HIV and AIDS pro-/regression and with the goalof a further optimized form of the IMMUNICON instrument “Easy Count 3.0”;

 

•                                          IMMUNICONowns all proprietary rights in and to the Easy Count 3.0 instrument and withrespect thereto has contributed to the research prior to the start of theResearch Project;

 

•                                          INSTITUTIONand both IMMUNICON and IMMUNIVEST have concluded a technology developmentagreement and a license agreement on April the 25 th 1997, of which copiesare attached to this agreement as Annex 1, and will be referred to hereinafteras the “Complete License Agreement”;

 

•                                          theComplete License Agreement is covering the so called Cytodisk Technology asdeveloped by the Institution and the granting of a license to processes,products and technology to IMMUNIVEST;

 

•                                          IMMUNIVESThas applied for several patent applications resulting from the CytodiskTechnology that can be useful in the application of the results of the ResearchProject. All the intellectual property rights to the expected results generatedin the Research Project are the subject matter of the Complete LicenseAgreement and shall be used in the further development of the Easy Count 3.0;

 

•                                          IMMUNIVESTis interested in the results of the Research Project in order to commerciallyapply them, through its affiliated entity IMMUNICON, in a Product and otherproducts and wishes to obtain the right to the exclusive use of such results;

 

•                                          IMMUNIVEST,through its affiliate IMMUNICON,  isinterested in cooperation with STW and INSTITUTION regarding the ResearchProject and is willing to contribute to the Research Project;

 

•                                          Partieshave decided to conclude an addendum to the Complete License Agreement to setforth the rights the rights and obligations/conditions for the transfer ofintellectual property rights as described above related to the resultsgenerated in the Research Project;

 

•                                          STW andINSTITUTION are willing to assign such intellectual property rights toIMMUNIVEST in order to enable the INSTITUTION to comply with the CompleteLicense Agreement regarding the results generated in the Research Project;

 

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•                                          IMMUNIVESTis willing to contribute to the Research Project and to pay a royalty for theuse of the results generated in the Research Project.

 

**AGREEAS FOLLOWS:**

 

**Definitions**

**Research Project: **theresearch program subsidized by STW under supervision of prof. dr.ir. J. Greve,with the title “Aids in Africa: affordable HIV staging”, further described inresearch proposal with STW number: TGT.6146

 

**The Complete LicenseAgreement:     **The TechnologyDevelopment Agreement between IMMUNICON and INSTITUTION and the LicenseAgreement between IMMUNIVEST and INSTITUTION, both concluded with theINSTITUTION on April the 25 Th 1997,

 

**Product:**                                               Theoptimized form of the IMMUNICON instrument Easy Count 3.0 which uses theresults of the Research project. The Easy Count 3.0 or any version of thatinstrument which does not include any improvements based on the results of theResearch project shall not be considered a “Product” as defined herein.

 

**Field:****                                                                **allmethods, apparatus, products and services for analyzing magnetically selectedand aligned particles similar to cells, cell fragments, viruses, bacteria, andsynthetic materials and capture agents.

 

**NetSales Price:     **shall have the samemeaning as in the Complete License Agreement.

 

**Article 1– Relation to the Complete License Agreement**

 

(1)                                  STW andINSTITUTION hereby assign all their rights to the results of the ResearchProject, including possible patent (applications) and all other intellectual propertyrights related thereto (hereinafter “Intellectual Property”), within the Fieldto IMMUNIVEST, subject to the provisions of this Addendum to the CompleteLicense Agreement. STW agrees to execute, at no cost to IMMUNIVEST, anyassignments or other documents necessary to vest title in the IntellectualProperty in IMMUNIVEST.

 

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(2)                                  Concerningthe Research Project and this Addendum STW represents the INSTITUTION at law orotherwise on the matter of intellectual property rights to the results of theResearch Project, subject to any terms of the Complete License Agreementrequiring assignment of inventions and provided that the Complete LicenseAgreement is still in force and is actually enforced fully by the INSTITUTIONor any patent (applications) resulting from the Research Results are stillvalid.

 

(3)                                  IMMUNIVESThereby grants STW and INSTITUTION a non-exclusive license, without the right togrant sublicenses, to practice the Research Results, including possible patent(applications) solely for educational and research purposes and for nocommercial purpose.

 

(4)                                  IMMUNIVESTwill be entitled to participate in the User Committee for this Research, whichwill be established by STW. This User Committee will meet at least once a year.IMMUNIVEST has the power of veto to the admittance of other participants to theUser Committee.

 

(5)                                  STW andINSTITUTION shall inform IMMUNIVEST regularly of the progress of the research,including the research results, and shall disclose in detail to IMMUNICON anyinventions related thereto at least ninety (90) days prior to any publicdisclosure thereof, on terms to be agreed upon in good faith between Parties.

 

(6)                                  All of therights and obligations established under this Agreement shall vest in any partysucceeding to the interest in this Agreement

 

**Article 2- Contribution to the Research Project and payment of royalty**

 

(1)                                  Inconsideration for the Agreement of IMMUNICON and IMMUNIVEST to the terms andconditions of this Agreement, STW shall finance the Research Project with anamount of 897.000, — euro and the INSTITUTION provides the Research Projectwith the necessary infrastructure, guidance and overhead.

 

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(2)                                  Inconsideration for the financial support of STW and the support of theINSTITUTION to the Research Project, IMMUNICON and IMMUNIVEST have supportedand will support the Research Project with personnel and materials amounting upto 390,000 euro.

 

(3)                                  Inconsideration for the right to use the results generated in the ResearchProject, granted to IMMUNIVEST by way of article 1 in combination with theComplete License Agreement, IMMUNIVEST shall owe and pay to STW a royalty of2.5% (two and a half percent) of the Net Sales Price of Products sold withinthe Field. The obligation to pay the royalty has effect as of the year in whichthe first Product based on the results of the Research Project is sold.

 

(4)                                  In caseIMMUNICON or IMMUNIVEST can demonstrate that the Product is sold at productioncost price in resource poor-countries, or to the World Health Organisation(WHO) or to any Non-Governmental Agency for example for the purpose ofaffordable HIV staging or other purpose, the royalty will not be applicable.

 

(5)                                  IMMUNIVESTshall send to STW in the month March of each year a report stating theamount of Products within the Field actually sold in the foregoing year and theNet Sales Price for these products. The reports on the amount of Products soldshall include information about the production cost price and price on theseProducts. STW shall send to IMMUNIVEST an invoice for the amounts due undersub-paragraph 2 hereinabove in the month April of each calendar year.IMMUNIVEST shall pay this invoice within 30 days after the invoice date.

 

(6)                                  STW isentitled to have the above mentioned royalty statement verified by anindependent accountant at STW’s expense, no more often than once per yearduring the term of this Agreement. In case the conclusions of the latterdeviate by more than 5% from the statement of IMMUNIVEST to the disadvantage ofSTW, the costs of such verification shall be born by IMMUNIVEST. STW as theaccountant shall keep the statement strictly confidential

 

(7)                                  Allremunerations mentioned in this article are excluding VAT.

 

(8)                                  IMMUNIVESTdeclares that they will assume an obligation to perform to the best of one’sability to produce any Products based on the results on the Research Project inthe Netherlands.

 

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**Article 3- Reports, publications and secrecy**

 

(1)                                  Inaddition to the Complete License agreement IMMUNIVEST shall inform STW of anyand all patent applications, and the consequent patent maintenance of suchpatent applications, which are filed in the name of IMMUNIVEST and relating tothe

(2)                                  resultsgenerated in the Research Project, as soon as such information becomesavailable to IMMUNIVEST.

 

(3)                                  Inaddition to its obligations under the Complete License Agreement, each Partyhereto shall send to the others a copy of any intended scientific publicationby such Party whenever it is ready for submission for publication but in anyevent at least ninety (90) days before the intended publication date in orderto allow time for the submission for patent applications on the subject matterof such publication as may be appropriate prior to such publication date.

 

**Article 4- Miscellaneous**

 

(1)                                 Liability

STW and INSTITUTION will carry out the ResearchProject with care and diligence. STW and INSTITUTION however do not guaranteethat the expected results will be reached, nor that the results are fit for apurpose, nor that the results of the research do not infringe rights of thirdparties nor that patent applications will result in granted patents.

 

(2)                                 Non-transferability

This agreement, including all rights andobligations, shall not be transferable by either Party without the writtenconsent of the other Party.

 

(3)                                 Termination

Both parties are entitled to terminate thisagreement in the event that the other Party violates any of the convenants orobligations contained in this Agreement and such default continues unremediedfor a period of 30 (thirty) days after written notice thereof to this Party bythe first Party.

 

(4)                                 Applicablelaw

This Agreement shall be governed by the Laws ofthe Netherlands.

 

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(5)                                 Disputes

Any dispute relating to the interpretation orapplication of this Agreement shall, unless amicably settled, be subject tomediation according to the modalities of the Dutch Mediation InstituteFoundation. In the event of failure of the latter within 6 months, the disputeshall be settled by arbitration according to the rules of the Dutch ArbitrationInstitute or with the rules of arbitration of the International Chamber ofCommerce. The parties shall accept the arbitral award as final.

(6)                                 Conflict

In the event of contrariety between thecontents of the Complete License Agreement and this Addendum, the contents ofthe latter shall prevail.

 

# **Article 5     Term andtermination**

# ** **

(1)                                  ThisAgreement shall come into force when duly signed by both Parties and shallcontinue in full force and effect until the Complete License Agreement isterminated or expires, or until any possible patent(s) resulting from the ResearchProject expire or for ten years after the year in which the first Product issold, whichever is the longest period, subject to paragraph 2 and 3 hereunder.

 

(2)                                  Thisagreement ends by operation of law when IMMUNICON or IMMUNIVEST goes intoliquidation or is granted a (temporary) suspension of payment.

 

(3)                                  Article 4shall survive this agreement. In the event of termination of this Agreement byIMMUNICON or IMMUNIVEST prior to the expiration of this Agreement except formaterial breach by INSTITUTION or STW under Article 4 (3), or by operationof law, IMMUNICON or IMMUNIVEST shall not be entitled to use or apply anyresults including Intellectual property rights of the Research Project.

 

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| **Drawn in threefold and signed:**      |                                   |
|-----------------------------------------|----------------------------------------|
|                                    |                                   |
| **Technology Foundation STW**,          | **Twente University**                  |
| Utrecht, this 16th day of June,  2004   | Enschede, this15th day of June,  2004. |
|                                    |                                   |
| /s/ J. W. MASS                          |                                   | /s/ W.H. FIJ, |   |
| Dr. J.W. Maas, director                 | W.H. Fij, Director of the Faculty `    |
|                                    | Science and Technology                 |
|                                    |                                   |
| **IMMUNICON CORPORATION**               | **IMMUNIVEST CORPORATION**             |
| Huntingdon Valley, Pennsylvania         | Wilmington, Delaware,                  |
| this 11th day of June, 2004             | this 11th day of June, 2004            |
|                                    |                                   |
| /s/ EDWARD L ERICKSON                   |                                   | /s/ JAMES L WILCOX |   |
| Edward L. Erickson, Chairman, President | James L. Wilcox, President             |
| & CEO                               |                                   |
|                                         |                                        |  |  |  |  |

 

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ANNEX 1: Complete License Agreement (TwenteUniversity and IMMUNIVEST CORPORATION)

 

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