Exhibit
10.7


 


Amendment
to License Agreement


 


This amendment (“Amendment”) to the License
Agreement with respect to certain technology related to FGF-4 dated as of March 24,
1997 (the “License Agreement”), is entered into by and among New York
University, a corporation organized and existing under the laws of the State of
New York (“NYU”), and Cardium Therapeutics, Inc., a Delaware Corporation (“CORPORATION”),
and shall be effective on the date (the “Effective Date”) upon which
CORPORATION becomes licensee under the License Agreement (pursuant to a
separate Transfer, Consent to Transfer, Amendment and Assumption of License
Agreement between NYU, CORPORATION and Collateral Therapeutics, Inc.).  NYU and CORPORATION are each a Party,
collectively Parties hereto.


 


RECITALS


 


Whereas, NYU and CORPORATION are now the
parties to the License Agreement;


 


Whereas, CORPORATION and its
predecessors-in-interest (and affiliates thereof) have pursued and/or are
expected to pursue product development efforts related to DNA-based product
candidates under the License Agreement, including in particular the original
Field of gene therapy for coronary artery disease, congestive heart failure and
peripheral vascular disease (the “Original Field”);


 


Whereas, NYU had previously licensed certain
other rights in the Research Technology to a third-party licensee (including
without limitation certain rights to the use of FGF-4 proteins) which third
party was also responsible for bearing three quarters (3/4) of the costs of the
associated patent expenses, but which third-party licensee subsequently
terminated its interests in the Research Technology and no other party has
since assumed such interests;


 


Whereas, CORPORATION intends to continue to
focus efforts on the development of DNA-based FGF-4 products but might if
technological aspects warrant also develop additional FGF-4 related products
including FGF-4 protein products;


 


Whereas, NYU desires to enable CORPORATION to
commercialize any and all aspects of the Research Technology;


 


Whereas, CORPORATION is willing to assume all
rights under the Research Technology in order to potentially develop products
beyond those of the Original Field and for as long as CORPORATION continues to
maintain all such rights, CORPORATION is willing to pay twice the original
license maintenance fee and to assume all ongoing patent costs associated with
the Research Technology;


 


AGREEMENT


 


Now, therefore, in consideration of the
foregoing and the promises and covenants contained herein, and other good and
valuable consideration, the receipt of which is hereby acknowledged, and
intending to be legally bound, the Parties agree as follows:


 


1.             Amendment.
The License Agreement is amended as follows, effective as of the Effective
Date:


 


(i) in Section 1(e), the definition
of Field is replaced in its entirety by the following:  “‘Field’ shall mean any and all uses of the
Research Technology.”;


 





















 


(ii) in Section 1(f), the following
is added as the last sentence: “NYU represents and warrants that the Research and Licensing Agreement
with GI (i.e. the agreement dated February 6, 1989 as subsequently
amended) has been terminated and that all rights in the Research Technology for
use in the Field that were previously licensed to GI or any other third party
are immediately prior to the Effective Date of this Amendment the rights of
NYU, which rights NYU is as of the Effective Date free to transfer to
CORPORATION.”;


 


(iii) in Section 1(h), the
definition of “Licensed Products” is replaced in its entirety by the following:
“‘LIcensed Products’ shall mean any products which are covered by a claim of
any unexpired patent within the NYU Patents (as hereinafter defined) which has
not been disclaimed or held invalid, revoked or unenforceable by a court or
other governmental agency of competent jurisdiction from which no appeal can be
taken.”;


 


(iv) in Section 4, the following
paragraph (c) is added: “The Parties acknowledge and agree that, as of June 1,
2005, the NYU Research Project had been completely performed and funded as
contemplated by Sections 3 and 4.”;


 


(v) in Section 6(b), the phrase “excluding
any Pre-Existing Invention” shall be replaced by the phrase “including any
Pre-Existing Invention”;


 


(vi) in Section 6(c), the phrase “other
than those relating to any Pre-Existing Invention” shall be replaced by the
phrase “including those relating to any Pre-Existing Invention”;


 


(vii) in Section 6(e), the phrase “other
than those relating to any Pre-Existing Invention” shall be replaced by the
phrase “including those relating to any Pre-Existing Invention”;


 


(viii) Section 6(f) is
replaced in its entirety by the following: “Copies of all patents, patent
applications, official actions and associated documents with respect to the
Research Technology shall be forwarded to CORPORATION who may consult with NYU
with regard thereto.  CORPORATION agrees
that upon presentation of supporting documentation to CORPORATION, CORPORATION
shall be obligated to reimburse NYU for one hundred percent (100%) of the patent
expenses accruing on or after the Effective Date that are incurred by NYU in
connection with procuring or maintaining the NYU Patents.”;


 


(ix) in Section 8(a)(2) the
annual license maintenance fee of twenty-five thousand dollars ($25,000) shall
be increased to fifty thousand dollars ($50,000) (beginning with the first
annual license maintenance fee that becomes due following the Effective Date of
this Amendment);


 


(x) in Section 8(a)(3), the following is
added to the end of the last sentence: “provided further that in the event that
a given milestone has been met and paid for a DNA-based FGF-4 product (such as
an Ad5-FGF-4 gene therapy product candidate) and CORPORATION elects to pursue
development of a related version of the product (a “Protein Added Version of a
Product”) in which FGF-4 protein is added to or administered with a DNA-based
FGF-4 product (i.e. to the same patient before, at the same time or following
administration of the DNA-based FGF-4 product), no separate milestone payments
shall be paid in connection with the Protein Added Version of a Product;


 


(xi) in Section 14(b) the phrase “without
notice or any additional waiting periods” is replaced by “upon thirty (30) days
prior written notice in the event that CORPORATION has not completely cured
such deficiency within such thirty-day period (including obtaining insurance or
providing evidence of self-insurance adequate to cover any period of
deficiency)”.


 


2.             Authority.  Each
Party represents and warrants to the other that, as of the Effective Date, it: (1) has
the corporate power and authority and the legal right to enter into this
Amendment and to perform its obligations under the License Agreement as so
amended; (2) has taken all necessary corporate action on its part required
to authorize the execution and delivery of this Amendment and the performance
of its obligations under the License Agreement as so amended; (3) has not
taken and will not take any action that is inconsistent with the terms of the
License Agreement as so amended; (4) this Amendment has been duly executed
and delivered on behalf of such Party, and constitutes a legal, valid and
binding obligation of such


 


2





















 


Party and is enforceable against it in
accordance with its terms; and (5) all necessary consents, approvals and
authorizations of all governmental authorities and other persons or entities
required to be obtained by such Party in connection with this Amendment of the
Agreement have been obtained.


 


3.             Further
Assurances.  Each Party agrees to execute, acknowledge and deliver such further
instruments, and to do all such other acts as may be necessary or appropriate
in order to carry out the purposes and intent of the License Agreement as
amended.


 


4.             Successors.
This Amendment and the License Agreement as amended shall be binding upon and
inure to the benefit of the Parties hereto and their respective successors and
permitted assigns.


 


5.             Counterparts.  This Amendment may be signed in counterparts,
each of which shall be deemed an original and which shall together constitute
an Amendment to the License Agreement.


 


IN WITNESS WHEREOF, each of the Parties, intending to be legally bound,
have caused the execution of this Amendment by their respective duly-authorized
officers who have signed below, to be effective as of the date noted above.


 


 


	
  NEW YORK UNIVERSITY

  	
  CARDIUM THERAPEUTICS, INC.

  
	
   

  	
   

  
	
  By:

  	
     / S / Abram M. Goldfinger

  	
   

  	
  By:

  	
      / S / Christopher
  J. Reinhard

  	
   

  
	
   

  	
   

  
	
  Name: Abram M. Goldfinger

  	
  Name:

  	
  Christopher J. Reinhard

  
	
   

  	
   

  	
   

  
	
  Title:   Executive Director,

  	
  Title:

  	
  CEO

  
	
              Industrial
  Liaison/Technology Transfer

  	
   

  	
   

  
	
  Date:   August 2, 2005

  	
  Date:

  	
  September 30, 2005

  
							



 


3