EXHIBIT 10.9


 


FOURTH AMENDMENT TO LICENSE
AGREEMENT


 


This FOURTH
AMENDMENT TO LICENSE AGREEMENT (this “Amendment”) is entered into as of this
13th day of November, 2007 by and between Advanced Life Sciences Holdings, Inc.,
a Delaware corporation (“ALS”), and Abbott Laboratories, an Illinois
corporation (“Abbott”) to amend the terms of that certain License Agreement
dated December 13, 2004 between Abbott and ALS (the “Agreement”).


 


BACKGROUND


 


A.                                   Abbott and ALS entered into the Agreement on December 13,
2004.


 


B.                                     ALS has requested the right to practice several
Abbott patents related to the manufacture of Compound A.


 


C.                                   The parties wish to amend the Agreement to allow
ALS right to practice several Abbott patents related to the manufacture of
Compound A.


 


1.                                       Incorporation of Agreement. All capitalized terms which are not defined
herein shall have the same meanings as set forth in the Agreement, and the
Agreement, to the extent not inconsistent with this Amendment, is incorporated
herein by this reference as though the same was set forth in its entirety. To
the extent any terms and provisions of the Agreement are inconsistent with the
amendment set forth in Paragraph 2 below, such terms and provisions shall be
deemed superseded hereby. Except as specifically set forth herein, the
Agreement shall remain in full force and effect and its provisions shall be
binding on the parties hereto.


 


2.                                       Amendment of the Agreement.


 


a). Section 1.6 is hereby amended by
inserting the following sentence prior to the last sentence of Section 1.6:


 


“ALS shall hold in confidence and shall not
directly or indirectly disclose or provide to any third party Confidential
Information pertaining to the patents listed in Exhibit D without Abbott’s
prior written consent. Notwithstanding the forgoing, ALS may disseminate
Confidential Information pertaining to the patents listed in Exhibit D
without Abbott’s prior written consent to those of its employees, Affiliates,
contractors, agents and sublicensees (if any) who have a need therefore in
carrying out their functions; provided, however, that such employees,
Affiliates, contractors, agents and sublicensees are bound by confidentiality
obligations covering such Confidential Information at least as rigorous as
those set forth herein and that ALS shall be responsible for any breach of such
confidentiality obligations.”


 


b). Article 2 is hereby amended as
follows:


 


The original License Grant paragraph in the
Agreement and later Amended in the Second Amendment dated August 2, 2005,
shall become paragraph “(a)”.


 


The following paragraph “(b)” shall be added
as follows:


 


“(b) 
Subject to the terms and conditions of this Agreement, Abbott hereby grants to
ALS a non-exclusive license to the patents listed in Exhibit D, with a
right to grant sublicenses, to make, use, and manufacture Compound A and
Product(s) containing Compound A, in the Territory. In the event that ALS wants
to use a third party to make, use, and manufacture Compound A and Product(s)
containing Compound A on behalf of ALS, ALS will provide thirty (30) days prior
written notice to Abbott informing Abbott of ALS’s intent to sublicense the
patents listed on Exhibit D to such third party for the manufacture of
Compound A and Product(s) containing Compound A.


 


c). Section 10.2, paragraph (a) is
hereby amended to add subparagraph (iii).


 


Add Subparagraph (iii):


 


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“(iii)  If
a third party infringes any patent listed in Exhibit D, Abbott has the
sole discretion, but not the obligation, to institute and prosecute an action,
lawsuit or other proceeding to abate or resolve such infringement by settlement
or otherwise. ALS, or its sublicensees, have no rights to enforce any of the
patents listed in Exhibit D. In the event that Abbott does institute an action,
lawsuit or other proceeding against a third party, ALS shall cooperate fully if
reasonably requested to do so by Abbott.”


 


d). Section 12.2 is hereby amended.


 


The original
paragraph in Section 12.2 of the Agreement shall become paragraph “(a)”.


 


The following paragraph “(b)” shall be added
as follows:


 


“(b) 
Abbott has the sole discretion as to the prosecution and maintenance of all
patents listed in Exhibit D. In the event that Abbott determines to
abandon any patent application that is included in Exhibit D or to no
longer maintain any patent that is included within Exhibit D, Abbott shall
give ALS ninety (90) days prior written notice before taking any action or
inaction in furtherance of such determination during which time ALS shall have
the right but not the obligation to assume the prosecution of such patent
application or the maintenance of such patent. Abbott and ALS shall consult and
cooperate with each other, and Abbott shall keep ALS reasonably informed, with
respect to the prosecution and maintenance of the patents listed in Exhibit D
hereunder. Abbott will provide ALS with copies of all material correspondence
sent to or received from the United States Patent and Trademark Office in
connection with the prosecution and maintenance of the patents listed in Exhibit D.


 


3.                                       Effectuation. The amendment to the Agreement contemplated by this Amendment shall be
deemed effective as of the date first written above upon the full execution of
this Amendment and without any further action required by the parties hereto. There
are no conditions precedent or subsequent to the effectiveness of this
Amendment.


 


4.                                       Counterparts. This Amendment may be executed in two or more counterparts, each
of which shall be deemed to be an original, but all of which together shall
constitute one and the same instrument. One or more counterparts of this
Amendment may be delivered by facsimile, with the intention that delivery
by such means shall have the same effect as delivery of an original counterpart thereof.


 


IN WITNESS
WHEREOF, the parties hereto have duly executed this Amendment as of the date
first above written.


 


 


	
  ABBOTT

  	
   

  	
  ADVANCED LIFE 

  
	
  LABORATORIES

  	
  SCIENCES
  HOLDINGS, INC.

  
	
   

  	
   

  



 


	
  By:  

  	
  /s/ John Poulos

  	
   

  	
  By: 

  	
  /s/ Michael T. Flavin

  	
   

  
	
  Name:  John Poulos

  	
  Name:

  	
  Michael T. Flavin, Ph.D.

  
	
  Its:       Group Vice
  President, Global Licensing and New 

  Business
  Development

  	
  Its:

  	
  Chairman and Chief Executive
  Officer

  



 


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EXHIBIT D


 


U.S. Patent No. 6,028,181  (Claims 8 and 9 only)


 


U.S. Patent No. 6,437106


 


U.S. Patent No. 6,579986


 


U.S. Patent No. 6,417,366


 


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