Exhibit 10.40





Exhibit 10.40




THIRD AMENDING AGREEMENT




Between:





THE UNIVERSITY OF BRITISH COLUMBIA, a corporation continued under the University Act
of British Columbia and having its Industry Liaison offices at #103 — 6190 Agronomy
Road, Vancouver, British Columbia, V6T 1Z3




(the “University”)




- and -




ONCOGENEX TECHNOLOGIES INC., a corporation incorporated under the laws of Canada,
and having offices at Suite 400, 1001 West Broadway, Vancouver, British Columbia,
V6H 4B1




(the “Licensee”)




WHEREAS:




	A.	 	The University and the Licensee entered into a license agreement with
a Date of Commencement of November 1, 2001 with respect to TRPM-2 (the
“Original Clusterin License Agreement”) pursuant to which the
University granted the Licensee an exclusive worldwide license to the
Technology;

	 
	B.	 	The University and the Licensee entered into an amending agreement
effective as of August 30, 2006 with respect to the Original Clusterin
License Agreement (the “First Amending Agreement”) and a second
amending agreement and consent effective as of August 7, 2008 with
respect to the Original Clusterin License Agreement as amended by the
First Amending Agreement (the “Second Amending Agreement” and together
with the First Amending Agreement, the “Amendments”); and

	 
	C.	 	In connection with a proposed sublicense in respect of the Original
Clusterin License Agreement as amended by the Amendments (the
“Clusterin License Agreement”), pursuant to a proposed Collaboration
and License Agreement (the “Teva Agreement”) by and between the
Licensee and Teva Pharmaceutical Industries Ltd. (“Teva”), the
University and the Licensee now wish to further amend the Clusterin
License Agreement, as set out below.






Terms used but not defined herein shall have the meaning ascribed to them in the Clusterin License
Agreement.



Now therefore, in consideration of the premises and the mutual covenants contained in this Third
Amending Agreement (this “Amending Agreement”), and other good and valuable consideration, the
receipt and sufficiency of which is hereby acknowledged, the parties hereto covenant and agree with
each other as follows:



1. Article 3.4 of the Clusterin License Agreement is hereby amended by replacing it with the
following:





“Notwithstanding Article 3.1 but subject to Article 10.6, the parties acknowledge and agree
that the University may use the Technology and any Improvements without charge in any manner
whatsoever for research, scholarly publication, educational or other non-commercial uses.”





	*	 	Certain information in this exhibit has been omitted
as confidential, as indicated by [***].  This information has been filed separately with
the Commission.







 


 









 





2. Article 4.1 of the Clusterin License Agreement is hereby amended by replacing it with the
following:




“The Licensee shall have the right to grant sublicenses and a sublicensee shall have the
right to grant sub-sublicenses (consistent with the terms applicable to sublicenses) to
Affiliated Companies and other third parties with respect to the Technology and any
University Improvements with the prior written consent of the University, which consent
shall not be unreasonably refused. The Licensee or a sublicensee shall not be obligated to
obtain the University’s consent to the granting of a sublicense or sub-sublicense if the
proposed sublicensee or sub-sublicensee has a market capitalization in excess of CAN.
$500,000,000 at the time of the granting of the sublicense or sub-sublicense, as the case
may be, provided always that such sublicense or sub-sublicense shall be in full compliance
with the terms of this Agreement. The Licensee will furnish the University with a copy of
each sublicense and each sub-sublicense granted within 30 days after execution. Such
sublicenses and sub-sublicenses will be considered to be Confidential Information of the
Licensee, and will be subject to the Confidentiality provisions of Article 10.”



3. Article 4.2 of the Clusterin License Agreement is hereby amended by replacing it with the
following:




“Any sublicense granted by the Licensee and any sub-sublicense granted by a sublicensee
shall be personal to the sublicensee or sub-sublicensee, as the case may be, and shall not
be assignable without the prior written consent of the University, such consent not to be
unreasonably withheld. Such sublicenses and sub-sublicenses shall contain covenants by the
sublicensee or sub-sublicensee, as the case may be, to observe and perform similar terms and
conditions to those contained in this Agreement and in particular the Licensee shall cause
each sublicensee and sub-sublicensee to indemnify the University on the same terms and
conditions as are contained in Article 9.1 of this Agreement.”



4. Article 6.6 of the Clusterin License Agreement is hereby deleted.



5. Article 7.1 of the Clusterin License Agreement is hereby amended by replacing it with the
following:




“7.1(a) The Licensee shall have the right to identify any process, use or products arising
out of the Technology and any University Improvements that may be patentable and may seek
patent protection with respect thereto, in which case the Licensee shall take all reasonable
steps to apply for a patent in the name of the University provided that the Licensee pays
all costs of applying for, registering and maintaining the patent in those jurisdictions in
which the Licensee might designate that a patent is desirable or reasonably required. The
patent counsel shall be selected by Licensee with the consent of the University, such
consent not to be unreasonably withheld or delayed. The University shall remain the client
of such patent counsel, however, the Licensee will provide direct instructions to the patent
counsel on all patent matters relating to the Technology including filing, prosecution,
management, maintenance, including renewals and term extensions thereof, and the scope and
content of patent applications and to request countries for foreign filings. The Licensee
will pay patent counsel for all costs incurred with respect to any and all patents relating
to the Technology. The Licensee will supply or instruct the patent counsel to supply the
University with copies of all material documents and correspondence received and filed in
connection with the prosecution of patents hereunder. The Licensee will keep the University
advised as to all material developments with respect to such applications with sufficient
time for the University to review and respond, and generally not less than 30 days prior to
an applicable patent deadline, unless circumstances reasonably require the Licensee to act
sooner to protect the patents, in which case the Licensee may act sooner. The University
shall, as required and at the Licensee’s cost for the University’s reasonable out-of-pocket
expenses, reasonably cooperate with the Licensee, its lawyers and agents in the filing,
prosecution, management and maintenance of the patents.




7.1(b) Licensee shall have the right to fulfill its obligations or practice its rights under
Section 7.1(a) through Teva, provided that Licensee shall remain primarily liable for any
acts or omissions by Teva with respect to such rights and obligations.”


 


 









 





6. Article 10.5 of the Clusterin License Agreement is hereby amended by replacing it with the
following:




“Notwithstanding any termination or expiration of this Agreement, the obligations created in
this Article 10 shall survive and be binding upon the Licensee, the University and their
respective successors and assigns.”



7. Article 10.6 of the Clusterin License Agreement is hereby amended by replacing the words “three
months” with the words “[***] months” and by replacing the words “six month period has elapsed”
with the words “[***] month period has elapsed after the date the Licensee received the proposed
publication or presentation,”.



8. Article 11.4 of the Clusterin License Agreement is hereby amended by adding the following as the
last sentence of said Article:




“As used in this Article 11.4, the term “commercially reasonable efforts” means, with
respect to a task or obligation under this Agreement, exerting such efforts and employing
such resources as would normally be exerted or employed by Licensee, if at such time there
is no sublicensee in respect of this Agreement with respect to such task or obligation, or
by the respective sublicensee, if at such time there is a sublicensee in respect of this
Agreement with respect to such task or obligation, in conducting such tasks or obligations
for its other drug candidates and pharmaceutical products of a comparable stage of
development and commercial potential, taking into account the cost effectiveness of efforts
or resources, the competitiveness of alternative compounds or products that are or are
expected to be in the marketplace, the patent and other proprietary position of the compound
or product, the likelihood of regulatory approval, the profitability of the compound or
product and alternative compounds or products and any other factors reasonably relevant to
assessing the commercial reasonableness of expending amounts of efforts and resources.”



9. Article 12.1 of the Clusterin License Agreement is hereby amended by adding the following
sentence as the last sentence of said Article:




“Notwithstanding the foregoing, Licensee shall be deemed to satisfy its obligations under
this Article 12.1 with respect to Teva, as a sublicensee in respect of this Agreement, if
Teva maintains the accounts and records as required under the sublicense agreement between
Licensee and Teva (the “Teva Sublicense Agreement”).”



10. Article 13.3 of the Clusterin License Agreement is hereby amended by adding the following
sentences as the last two sentences of said Article:




“Notwithstanding the foregoing, Licensee shall be deemed to satisfy its obligations under
this Article 13.3 with respect to Teva, as a sublicensee in respect of this Agreement, if
(a) Teva procures and maintains, at all times during the effectiveness of the Teva
Sublicense Agreement, the insurance required under such Teva Sublicense Agreement, which may
be satisfied through self-insurance, to the extent Teva self-insures for other liabilities
relating to the development and commercialization of other pharmaceutical products and (b)
the Licensee uses reasonable efforts to ensure that such insurance contains a waiver of
subrogation against the University, its Board of Governors, faculty, officers, employees,
students, and agents.”



11. The first paragraph of Article 18.3 of the Clusterin License Agreement is hereby amended by
replacing it with the following:




“If any one of more of the following events has occurred and the Licensee or its sublicensee
has not cured these events within 30 days of receiving written notice from the University,
the University may, at its option, terminate this Agreement; provided that the Licensee’s
sublicensee may (but is not obligated to) cure any such event under Articles 18.3(a), (h) or
(j) within such 30-day period, and the University shall not have the right to terminate this
Agreement following any such cure by the Licensee’s sublicensee. The University shall
provide written notice to the Licensee’s sublicensee of any event under Article 18.3 at the
same time as it provides written notice to the Licensee:”


 


 









 





12. Article 18.5 of the Clusterin License Agreement is hereby amended by adding the following as
the last sentence of said Article:




“The Licensee’s sublicensee may (but is not obligated to) cure any such default under this
Article 18.5, and the University shall provide written notice to the Licensee’s sublicensee
of any such default at the same time as it provides written notice to the Licensee.”



13. Article 18.9 of the Clusterin License Agreement is hereby amended by adding the following as
the last sentence of said Article:




UBC hereby acknowledges that the Teva Sublicense Agreement is consistent with the terms of
this Agreement. Notwithstanding Section 18.7, Teva (as Licensee’s sublicensee) may continue
to [***] UBC to [***] in the manner set forth in this Clusterin License Agreement [***] for
[***] UBC will [***] pursuant to this Article 18.9.



14. The Licensee agrees that “Revenue” as that term is defined in the Clusterin License Agreement
shall include all revenues, receipts, monies and the fair market value of all other consideration
received from the sale of “Authorized Generic Products” as that term is defined in the Teva
Agreement.



15. The University represents that the Licensee is in good standing under the Clusterin License
Agreement as of the Effective Date of this Agreement.



16. Any notices or other documents that any of the parties hereto are required or may desire to
deliver to Teva under the Clusterin License Agreement, as amended by this Amending Agreement, shall
be delivered in accordance with the notice provisions set forth in Article 16.1 of the Clusterin
License Agreement to the following address or to such other address as Teva may hereinafter
designate in writing:




Teva Pharmaceutical Industries, Ltd.

c/o Teva Neuroscience, Inc.

901 E. 104th Street

Kansas City, MO 64131

Attention: General Counsel, NA Brand Pharmaceuticals



17. Teva is not a party to this Amending Agreement or the Clusterin License Agreement but is an
intended third-party beneficiary of this Amending Agreement; provided, however, that all rights of
Teva provided for hereunder shall terminate upon the termination of the Teva Sublicense Agreement.



18. Except as modified herein, the University and the Licensee confirm that the Clusterin
License Agreement remains unmodified and in full force and effect. The Clusterin License Agreement
as modified by this Amending Agreement constitutes the entire agreement between the parties
relating to the subject matter hereof.



This Amending Agreement may be executed by the parties in separate counterparts, including by
electronic transmission via facsimile or e-mail, each of which such counterparts when so executed
and delivered shall be deemed to constitute one and the same instrument.



[signature page follows]



 


 









 





IN WITNESS WHEREOF the parties have executed this Amending Agreement on December 20, 2009, which
Amending Agreement shall be deemed effective immediately prior to, but on the same date as, the
effectiveness of the Teva Sublicense Agreement (the “Effective Date”).



	 	 	 
	SIGNED FOR AND ON BEHALF OF

THE UNIVERSITY OF BRITISH COLUMBIA
by its duly authorized officers:
	 	 
	 
	/s/
Brad Wheeler
	 	 
	 

Authorized Signatory

	 	 
	 
	 	 
	 

Authorized Signatory

	 	 
	 
	 	 
	SIGNED FOR AND ON BEHALF OF
ONCOGENEX TECHNOLOGIES INC.

By its duly authorized officer:
	 	 
	 
	/s/
Scott Cormack
	 	 
	 

Authorized Signatory