exv10w25






Exhibit 10.25




AMENDMENT NO. 1 TO LICENSE AGREEMENT




     THIS AMENDMENT (this “Amendment”) dated as of April 23, 2009 (“Amendment Effective
Date”) is between Alseres Pharmaceuticals, Inc. (f/k/a Boston Life Sciences, Inc.), a Delaware
corporation with offices at 85 Main Street, Hopkinton, MA 01748 (“Alseres”) and BioAxone
Therapeutic Inc., a Canadian corporation with offices at 1100 Rene-Levesque West, 25th
Floor, Montreal, QC H3B 5C9 Canada (“BA” and collectively with Alseres, the
“Parties”).



Background




     WHEREAS Alseres and BA entered into that certain License Agreement dated as of December 28,
2006 (“License Agreement”) whereby BA exclusively licensed to Alseres patent rights and
know-how relating to fusion proteins, the whole as provided in the License Agreement.



     WHEREAS the parties have entered into that certain Option Agreement dated as of April 30, 2008
(the “Option Agreement”) whereby an option to amend the License Agreement was granted by BA
to Alseres (the “Option”).



     WHEREAS the Option has expired on December 31, 2008.



     WHEREAS the parties desire to provide for a period of time during which Alseres will attempt
to enter into a sublicense of its rights under the License Agreement, and to provide for the
termination of the License Agreement in the event no such sublicense is entered into, all on the
terms and conditions set forth in this Amendment.



     NOW THEREFORE, BA and Alseres agree as follows:



     1. Definitions. When used in this Amendment, each of the following terms shall have
the meanings set forth below and such definitions shall be included in Article 1 of the License
Agreement. Capitalized terms not otherwise defined herein shall have the meanings ascribed to them
in the License Agreement.



     “Minimum Terms” shall mean the following: (i) total cash upfront and milestones
payments to Alseres by sublicensee shall not be less than Fifteen Million Dollars (US $15,000,000);
(ii) royalties payable to Alseres by sublicensee shall not be less than five percent (5%) of Net
Sales of Licensed Products for treatment of spinal cord injury; and (iii) sublicensee shall
undertake to make sufficient investments to complete the regeneration of the Master Cell Bank and
the placebo-controlled Phase IIB clinical trial, and shall demonstrate the capacity to make such
investment.



     “Sublicense Agreement” means a definitive agreement between Alseres and a third party
unrelated, directly or indirectly, to Alseres or its directors, officers, employees, shareholders
or lenders, pursuant to which Alseres sublicenses to such third party all of Alseres’ licenses
under the License Agreement, and which contains the Minimum Terms.



     “Sublicense Period” means a period of six (6) months beginning on the Amendment
Effective Date, as extended, if applicable, in accordance with Section 2 of this Amendment.



 









 





     2. Diligence.



          (a) The text of Section 3.1(b) of the License Agreement is hereby replaced in its entirety by
the indication “INTENTIONALLY DELETED.”




          (b) The text of Section 3.1(c) of the License Agreement is hereby replaced in its entirety by
the indication “INTENTIONALLY DELETED.”




          (c) Section 3.2 of the License Agreement is hereby replaced in its entirety as follows:





“Sublicense Period. During the Sublicense Period, Alseres will use
reasonable commercial efforts to enter into a Sublicense Agreement. The Sublicense
Period shall be automatically extended for an additional ninety (90) days if, prior
to the expiration of the initial six (6) month period, Alseres shall have executed a
binding term sheet (subject only to ordinary due diligence) with respect to a
Sublicense Agreement. In the event that Alseres wishes to enter into a Sublicense
Agreement which does not include the Minimum Terms, then Alseres shall provide a
written notice to BA prior to the expiry of the Sublicense Period together with the
terms and conditions of the proposed Sublicense Agreement. Alseres and BA shall
promptly meet to discuss in good faith whether Alseres should be permitted to enter
into such Sublicense Agreement. Alseres shall not be entitled to execute such
Sublicense Agreement without the approval of BA. The Sublicense Period shall
automatically terminate in case of insolvency of Alseres (as described in Section
8.4). The terms and conditions of the Sublicense Agreement shall not be less
stringent than those set forth herein. Alseres shall provide to BA a copy of the
Sublicense Agreement at least five (5) business days prior to its execution and,
when executed, a copy of the executed version. Alseres shall require the sublicensee
to comply with the provision hereof as applicable. Alseres hereby guarantees, and
shall remain primarily liable for, the performance of the sublicensee under this
Agreement. The Sublicense Agreement shall include an obligation for the sublicensee
to account for and report its Net Sales to Alseres and BA.”



          (d) Section 3.4 of the License Agreement is hereby replaced in its entirety as follows:





“Reporting and Cooperation. During the Sublicense Period, Alseres shall
have sole and exclusive control of the process leading up to a Sublicense Agreement.
However, if BA identifies potential sublicense candidates, BA shall immediately
inform Alseres of any such potential sublicense candidates and immediately turn over
control of the relationship with such candidate to Alseres. Alseres will use
reasonable efforts to pursue all such leads provided by BA. Neither BA nor any of
its representatives will in any way attempt to negotiate on behalf of Alseres or
hold itself out as an agent of Alseres. On the first (1st) and fifteenth (15th) day
of each month during the Sublicense Period, Alseres will provide BA with a written



 









 






status report of its sublicense efforts, including but not limited to parties
contacted, status of discussions and any other pending matters.”



          (e) Exhibit E and Exhibit F of the License Agreement are hereby deleted in their entirety.




          (f) The text of Section 2.1(b) of the License Agreement is hereby replaced in its entirety by
the indication “INTENTIONALLY DELETED.”




          3. Financial Provisions. Sections 4.2 through 4.8 of the License Agreement are hereby
deleted in their entirety and replaced with the following new Section 4.2:





“Sublicense Income. If Alseres enters into a Sublicense Agreement during
the first three (3) months of the Sublicense Period, forty-five percent (45%) of all
payments (of whatever nature and whether in cash or otherwise) to be received by
Alseres pursuant to the Sublicense Agreement shall be paid to BA within five (5)
days of receipt by Alseres. If Alseres enters into a Sublicense Agreement after the
first three (3) months of the Sublicense Period but before the end of the Sublicense
Period, fifty percent (50%) of all payments (of whatever nature and whether in cash
or otherwise) to be received by Alseres pursuant to the Sublicense Agreement shall
be paid to BA within five (5) days of receipt by Alseres. The Sublicense Agreement
shall provide that BA shall be entitled to request that payments owed to it be made
directly to it by the third party sublicensee.”



     4. Termination.



          (a) The text of Section 8.2 of the License Agreement is hereby replaced in its entirety by the
indication “INTENTIONALLY DELETED.”




          (b) The text of Section 8.3 of the License Agreement is hereby replaced in its entirety as
follows:





“Default. Either Party may terminate this Agreement, if the other Party is
in material breach of its material obligations or breach or misstatement of its
representations and warranties under the Agreement. The non-breaching Party shall
give the breaching Party written notice of termination prior to terminating this
Agreement. Such notice shall state the causes for termination. The breaching Party
shall have sixty (60) days from the date of the notice to remedy the stated cause(s)
for termination, failing which the non-breaching Party shall have the option to
terminate this Agreement, without further notice or delay.”



          (c) Section 8.5 of the License Agreement is hereby replaced in its entirety as follows:





“Failure to Enter Sublicense Agreement. If Alseres does not enter into a
Sublicense Agreement during the Sublicense Period, then upon the expiration of the
Sublicense Period and without any further delay or notice, the License Agreement
shall automatically terminate and the provisions of Section 8.6 of the



 









 







License Agreement shall apply. In such event, Alseres shall be entitled to receive
thirty percent (30%) of all payments (of whatever nature and whether in cash or
otherwise) received by BA from a third party in consideration of a license or other
grant of rights to or under the Licensed Intellectual Property or the Compounds
within five (5) days of receipt by BA. The agreement shall provide that Alseres
shall be entitled to request that payments owed to it be made directly to it by the
third party. Notwithstanding the foregoing, for a period of ninety (90) days
following the end of the Sublicense Period, BA shall not be entitled to enter into
an agreement regarding a license or other grant of rights to or under the Licensed
Intellectual Property or the Compounds unless such agreement includes the Minimum
Terms. In the event that BA wishes to enter into an agreement regarding a license
or other grant of rights to or under the Licensed Intellectual Property or the
Compounds which does not include the Minimum Terms during such period of ninety (90)
days, then BA shall provide a written notice to Alseres prior to the expiry of such
period together with the terms and conditions of the proposed agreement. Alseres and
BA shall promptly meet to discuss in good faith whether BA shall be permitted to
enter into such agreement. BA shall not be entitled to execute such agreement
without the approval of Alseres. For greater certainty, the Minimum Terms shall not
apply after the ninety (90) day period mentioned above in this Section 8.5 and
accordingly BA shall be entitled to enter into any agreement which does not include
the Minimum Terms after the expiry of the ninety (90) day period.”



          (d) Section 8.6 of the License Agreement is hereby replaced in its entirety as follows:





“Effect of Termination. In any case of termination, Alseres shall promptly
transfer and assign to BA, at Alseres’ cost and expense, the Master Cell Bank, all
Licensed Intellectual Property and Confidential Information related to the
terminated Compounds and/or Licensed Products, and all rights, titles and interests
in any Regulatory Materials related to a Licensed Product or a Compound and all
non-clinical, clinical and other reports, records, data and other information
developed or generated by the Development and Commercialization of a Compound or
Licensed Product that are reasonably required for BA or its future licensees to
continue Development, Commercialization and to satisfy requirements imposed by
applicable Regulatory Authorities, and cooperate with BA and its future licensees,
at Alseres’ expense, to effect an orderly transfer of Development and regulatory
responsibilities, including the transition of existing clinical studies, to BA as
promptly as practicable. If BA decides to continue to Develop and/or Commercialize
the Compounds and/or the Licensed Products, BA may do so under the same trademark as
those used by Alseres and Alseres will assign any and all trademarks associated with
any Licensed Product or Compound.”



     5. Option Agreement. The Parties hereby acknowledge that the Option Agreement has
expired and is no longer valid.



 









 





     6. Releases. In consideration of the mutual promises contained herein, each Party,
for itself and for each of its Affiliates, hereby generally, irrevocably, unconditionally and
completely releases and forever discharges the other Party, such other Party’s Affiliates, and its
and their officers, directors, stockholders, agents, employees, heirs, administrators, executors,
predecessors, successors and assigns (hereinafter, the “Released Parties”) from, and hereby
irrevocably, unconditionally and completely waives and relinquishes, each of such Party’s Released
Claims. The Parties acknowledge they are aware that they may hereafter discover facts in addition
to or different from those now known or believed to be true with respect to the subject matter of
this release, but that it is their intention to hereby fully, finally and forever settle and
release all such claims, disputes and differences, known or unknown, suspected or unsuspected, that
now exist or heretofore have existed between the parties and that in furtherance of such intention,
this release shall remain in effect as a full and complete release notwithstanding the discovery or
existence of any such additional or different facts. The term “Released Claims,” when used herein
with respect to a Party, shall mean and include each and every claim, charge, complaint, demand,
action, cause of action, suit, right, debt, sum of money, cost, reckoning, covenant, contract,
agreement, promise, doing, omission, damage, execution, obligation, liability, and expense
(including attorneys’ fees and costs), of every kind and nature, whether at law or in equity, that
such Party may have had in the past, may now have or may have in the future against the Released
Parties, and which has arisen or arises directly or indirectly out of, or relates directly or
indirectly to, any circumstance, agreement, activity, action, omission, event or matter occurring
or existing on or prior to the Amendment Effective Date to the extent such claim relates to or
arises under the License Agreement or the Option Agreement; provided, however, that the Released
Claims shall exclude any and all rights to seek and obtain enforcement of, or a remedy or
indemnification arising out of the breach of, any obligation provided for in the License Agreement
(as amended by this Amendment) occurring after the Amendment Effective Date.



     7. Public Announcements. BA acknowledges that Alseres is obligated by law to file a
form 8-K describing this Amendment with the U.S. Securities and Exchange Commission within four (4)
business days of the Amendment Effective Date. Further, Alseres may, at its option, choose to
issue a press release to disclose the content of this Amendment. In the event that Alseres chooses
to issue such a press release, Alseres agrees to provide the content of the proposed release to BA
in advance for approval by BA, which approval shall not be unreasonably withheld. In the event that
BA chooses to issue a press release of its own, BA agrees to provide the content of the proposed
release to Alseres in advance for approval by Alseres, which approval shall not be unreasonably
withheld.



     8. Miscellaneous.



          (a) Except as specifically amended herein, all provisions of the License Agreement shall
remain in full force and effect in accordance with their terms. In the event of a conflict between
the provisions of the License Agreement and those of this Amendment, this Amendment shall control.
This Amendment, together with the License Agreement, represents the entire agreement between the
Parties regarding the subject matter hereof, and there are no prior or contemporaneous written or
oral promises or representation relating to this subject not incorporated herein. No amendment or
modification of the terms and conditions of this





 









 







Amendment shall be binding on any Party unless reduced to a writing referencing this Amendment
and signed by an authorized officer of the Party to be bound.




          (b) On and after the Amendment Effective Date, each reference in the License Agreement to
“this License Agreement,” “this Agreement,” “hereunder,” “hereof,” “herein,” or words of like
import shall mean and be a reference to the License Agreement as amended hereby. No reference to
this Amendment need be made in any instrument or document at any time referring to the License
Agreement, a reference to the License Agreement in any of such instrument or document to be deemed
to be a reference to the License Agreement as amended hereby.




          (c) This Amendment may be executed in two or more counterparts, each of which shall be deemed
an original for all purposes, but all of which together shall constitute one and the same
instrument. This Amendment may be executed and delivered by facsimile and upon such delivery the
facsimile signature will be deemed to have the same effect as if the original signature had been
delivered to the other Party.




          (d) All matters affecting the interpretation, validity and performance of this Amendment shall
be governed by the laws applicable to agreements made in, and to be performed in, the State of New
York, without regard to its conflict of law principles.






 









 








     IN WITNESS WHEREOF, the Parties have executed this Agreement as of the date first set forth
above.



	 	 	 	 	 	 	 
	 	 	ALSERES PHARMACEUTICALS, INC.	 	 
	 
	 	 	 	 	 	 
	 

	 	By:
	 	/s/ Kenneth L. Rice Jr
 

	 	 
	 

	 	Title:
	 	EVP & CFO	 	 
	 
	 	 	 	 	 	 
	 	 	BIOAXONE THERAPEUTIC, INC.	 	 
	 
	 	 	 	 	 	 
	 

	 	By:

Title:
	 	/s/ Lisa McKerracher
 

Director