Exhibit 10.1


 


	
  

  	
  ADDENDUM to Technology Development

  Agreement and License Agreement

  



 


 


Parties:


 


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


 


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


 


and


 


IMMUNICON
CORPORATION, a Delaware corporation having offices at 3401 Masons
Mill Road, Huntingdon Valley, Pennsylvania 19006 (215)938 0437 fax, hereinafter
referred to as “IMMUNICON”; and


 


IMMUNIVEST
CORPORATION, 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 research
program subsidized by STW under supervision of prof. dr.ir. J. Greve, with the
title “Aids in Africa: affordable HIV staging”, further described in research
proposal with STW number: TGT.6146, known between parties, hereinafter referred
to as “the Research Project”;


 


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


 


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


 


1

















 


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


 


•                                          IMMUNICON
owns all proprietary rights in and to the Easy Count 3.0 instrument and with
respect thereto has contributed to the research prior to the start of the
Research Project;


 


•                                          INSTITUTION
and both IMMUNICON and IMMUNIVEST have concluded a technology development
agreement and a license agreement on April the 25 th 1997, of which copies
are attached to this agreement as Annex 1, and will be referred to hereinafter
as the “Complete License Agreement”;


 


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


 


•                                          IMMUNIVEST
has applied for several patent applications resulting from the Cytodisk
Technology that can be useful in the application of the results of the Research
Project. All the intellectual property rights to the expected results generated
in the Research Project are the subject matter of the Complete License
Agreement and shall be used in the further development of the Easy Count 3.0;


 


•                                          IMMUNIVEST
is interested in the results of the Research Project in order to commercially
apply them, through its affiliated entity IMMUNICON, in a Product and other
products and wishes to obtain the right to the exclusive use of such results;


 


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


 


•                                          Parties
have decided to conclude an addendum to the Complete License Agreement to set
forth the rights the rights and obligations/conditions for the transfer of
intellectual property rights as described above related to the results
generated in the Research Project;


 


•                                          STW and
INSTITUTION are willing to assign such intellectual property rights to
IMMUNIVEST in order to enable the INSTITUTION to comply with the Complete
License Agreement regarding the results generated in the Research Project;


 


2

















 


•                                          IMMUNIVEST
is willing to contribute to the Research Project and to pay a royalty for the
use of the results generated in the Research Project.


 


AGREE
AS FOLLOWS:


 


Definitions


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


 


The Complete License
Agreement:     The Technology
Development Agreement between IMMUNICON and INSTITUTION and the License
Agreement between IMMUNIVEST and INSTITUTION, both concluded with the
INSTITUTION on April the 25 Th 1997,


 


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


 


Field:                                                                 all
methods, apparatus, products and services for analyzing magnetically selected
and aligned particles similar to cells, cell fragments, viruses, bacteria, and
synthetic materials and capture agents.


 


Net
Sales Price:     shall have the same
meaning as in the Complete License Agreement.


 


Article 1
– Relation to the Complete License Agreement


 


(1)                                  STW and
INSTITUTION hereby assign all their rights to the results of the Research
Project, including possible patent (applications) and all other intellectual property
rights related thereto (hereinafter “Intellectual Property”), within the Field
to IMMUNIVEST, subject to the provisions of this Addendum to the Complete
License Agreement. STW agrees to execute, at no cost to IMMUNIVEST, any
assignments or other documents necessary to vest title in the Intellectual
Property in IMMUNIVEST.


 


3

















 


(2)                                  Concerning
the Research Project and this Addendum STW represents the INSTITUTION at law or
otherwise on the matter of intellectual property rights to the results of the
Research Project, subject to any terms of the Complete License Agreement
requiring assignment of inventions and provided that the Complete License
Agreement is still in force and is actually enforced fully by the INSTITUTION
or any patent (applications) resulting from the Research Results are still
valid.


 


(3)                                  IMMUNIVEST
hereby grants STW and INSTITUTION a non-exclusive license, without the right to
grant sublicenses, to practice the Research Results, including possible patent
(applications) solely for educational and research purposes and for no
commercial purpose.


 


(4)                                  IMMUNIVEST
will be entitled to participate in the User Committee for this Research, which
will 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 the
User Committee.


 


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


 


(6)                                  All of the
rights and obligations established under this Agreement shall vest in any party
succeeding to the interest in this Agreement


 


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


 


(1)                                  In
consideration for the Agreement of IMMUNICON and IMMUNIVEST to the terms and
conditions of this Agreement, STW shall finance the Research Project with an
amount of 897.000, — euro and the INSTITUTION provides the Research Project
with the necessary infrastructure, guidance and overhead.


 


4

















 


(2)                                  In
consideration for the financial support of STW and the support of the
INSTITUTION to the Research Project, IMMUNICON and IMMUNIVEST have supported
and will support the Research Project with personnel and materials amounting up
to 390,000 euro.


 


(3)                                  In
consideration for the right to use the results generated in the Research
Project, granted to IMMUNIVEST by way of article 1 in combination with the
Complete License Agreement, IMMUNIVEST shall owe and pay to STW a royalty of
2.5% (two and a half percent) of the Net Sales Price of Products sold within
the Field. The obligation to pay the royalty has effect as of the year in which
the first Product based on the results of the Research Project is sold.


 


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


 


(5)                                  IMMUNIVEST
shall send to STW in the month March of each year a report stating the
amount of Products within the Field actually sold in the foregoing year and the
Net Sales Price for these products. The reports on the amount of Products sold
shall include information about the production cost price and price on these
Products. STW shall send to IMMUNIVEST an invoice for the amounts due under
sub-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 is
entitled to have the above mentioned royalty statement verified by an
independent accountant at STW’s expense, no more often than once per year
during the term of this Agreement. In case the conclusions of the latter
deviate by more than 5% from the statement of IMMUNIVEST to the disadvantage of
STW, the costs of such verification shall be born by IMMUNIVEST. STW as the
accountant shall keep the statement strictly confidential


 


(7)                                  All
remunerations mentioned in this article are excluding VAT.


 


(8)                                  IMMUNIVEST
declares that they will assume an obligation to perform to the best of one’s
ability to produce any Products based on the results on the Research Project in
the Netherlands.


 


5

















 


Article 3
- Reports, publications and secrecy


 


(1)                                  In
addition to the Complete License agreement IMMUNIVEST shall inform STW of any
and all patent applications, and the consequent patent maintenance of such
patent applications, which are filed in the name of IMMUNIVEST and relating to
the


(2)                                  results
generated in the Research Project, as soon as such information becomes
available to IMMUNIVEST.


 


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


 


Article 4
- Miscellaneous


 


(1)                                 Liability


STW and INSTITUTION will carry out the Research
Project with care and diligence. STW and INSTITUTION however do not guarantee
that the expected results will be reached, nor that the results are fit for a
purpose, nor that the results of the research do not infringe rights of third
parties nor that patent applications will result in granted patents.


 


(2)                                 Non-transferability


This agreement, including all rights and
obligations, shall not be transferable by either Party without the written
consent of the other Party.


 


(3)                                 Termination


Both parties are entitled to terminate this
agreement in the event that the other Party violates any of the convenants or
obligations contained in this Agreement and such default continues unremedied
for a period of 30 (thirty) days after written notice thereof to this Party by
the first Party.


 


(4)                                 Applicable
law


This Agreement shall be governed by the Laws of
the Netherlands.


 


6

















 


(5)                                 Disputes


Any dispute relating to the interpretation or
application of this Agreement shall, unless amicably settled, be subject to
mediation according to the modalities of the Dutch Mediation Institute
Foundation. In the event of failure of the latter within 6 months, the dispute
shall be settled by arbitration according to the rules of the Dutch Arbitration
Institute or with the rules of arbitration of the International Chamber of
Commerce. The parties shall accept the arbitral award as final.


(6)                                 Conflict


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


 


Article 5     Term and
termination


 


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


 


(2)                                  This
agreement ends by operation of law when IMMUNICON or IMMUNIVEST goes into
liquidation or is granted a (temporary) suspension of payment.


 


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


 


7

















 


	
  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

  	
   

  
						



 


8

















 


ANNEX 1: Complete License Agreement (Twente
University and IMMUNIVEST CORPORATION)


 


9