Exhibit 10.1


 


***Text
Omitted and Filed Separately


with
the Securities and Exchange Commission.


Confidential
Treatment Requested


Under 17 C.F.R. Sections 200.80(b)(4)


and
240.24b-2.


 


THIRD AMENDMENT

TO THE

COLLABORATIVE RESEARCH AND LICENSE AGREEMENT


 


THIS
THIRD AMENDMENT TO THE COLLABORATIVE RESEARCH AND LICENSE AGREEMENT (the
“Third Amendment”)
is made by and between SENOMYX, INC.
(“Senomyx”),
a Delaware corporation, having a principal place of business at 11099 North
Torrey Pines Road, La Jolla, California 92037, and KRAFT FOODS GLOBAL, INC., a Delaware corporation (“Kraft”) having
offices at 801 Waukegan Road, Glenview, IL 60025.


 


WHEREAS,
Senomyx and Kraft entered into that certain Collaborative Research and License
Agreement dated as of December 6, 2000, as amended by that certain First
Amendment dated May 2, 2002 and that certain Second Amendment dated April 29,
2005, (collectively, the “Agreement”);
and


 


WHEREAS
Senomyx and Kraft wish to amend the Agreement to extend the Collaborative
Period for the [***] Phase for an additional two (2) year period in the
manner set forth in this Third Amendment and otherwise to provide for certain
agreements by the parties as set forth herein (capitalized terms used but not
otherwise defined in this Third Amendment shall have the meanings given such
terms in the Agreement).


 


NOW,
THEREFORE, in consideration of the foregoing premises and of
the covenants, representations and agreements set forth below, the parties
hereby agree to amend the Agreement as follows:


 


1.             Section 3.3(B) of
the Agreement is hereby amended and restated in its entirety as follows:


 


“(B)  Product Commercialization Plan.  Within [***] of selection of the Selected
Compound, Kraft will prepare a detailed Product Commercialization Plan for
approval by the Steering Committee, which will be made a part of the minutes of
the Steering Committee.  The Product
Commercialization Plan will include commercially reasonable timelines (which if
commercially reasonable will provide for the commercialization of Products
within [***]) and levels of diligence necessary for Kraft to maintain the
respective co-exclusive and exclusive licenses, as provided for under Section 10
of the Agreement.”


 










***Confidential Treatment Requested


 





















 


2.             Section 9.3.1
of the Agreement is hereby amended and restated in its entirety as follows:


 


“Royalty for
[***] Products.  Kraft will
pay to Senomyx the following earned royalties during the Royalty Term beginning
on the date that Patent Rights Controlled by Senomyx or its Affiliates arise
claiming the composition of matter, or manufacture (if such method of
manufacture is used by Kraft or Kraft’s manufacturer) or use of a Selected [***]
Compound that Kraft incorporates or has incorporated into a [***] Product made,
used, or sold by Kraft in the country covered by such Patent Rights and ending
on the date that such Patent Rights for such Selected [***] Compound (i) expire
or are canceled, (ii) are declared invalid or unenforceable by an
unreversed and unappealable decision of a court or other appropriate body of
competent jurisdiction, (iii) are admitted to be invalid or unenforceable
through reissue, disclaimer or otherwise, or (iv) are abandoned:


 


(A)                              With
respect to sales during the first one (1) year period following the date
of the First Commercial Sale of a [***] Product(s), Kraft will pay Senomyx a
royalty equal to [***] on total annual Net Sales of each [***] Product(s); and


 


(B)                                With
respect to sales after the one year anniversary of the First Commercial Sale of
a [***] Product(s), Kraft will pay Senomyx a royalty equal to [***] on total
annual Net Sales of each [***] Product(s).


 


Multi-Component [***] Product.  If a [***] Product in Field III is combined
and sold in the form of a multi-component product containing ingredients, which
ingredients themselves are not in Field III, then Kraft will be entitled to
adjust the royalties paid to Senomyx under Section 9.3.1 by adjusting the
Net Sales on which the royalties are based. 
In such event, the Net Sales base will be adjusted by the following
percentage: [***].”


 


3.             Section Section 9.5
of the Agreement is hereby amended and restated in its entirety as follows:


 


“9.5        Manufacturing and Capital
Credits.  Kraft may in its
sole discretion, manufacture or enter into supply and manufacturing agreements
with a mutually agreed upon Third Party regarding Selected Compounds; provided,
however, that Senomyx will have the right of first negotiation and refusal to
manufacture any such Selected Compounds, subject to provisions of cost, quality
and quantity.  At the request of Kraft,
Senomyx will grant a license to any Third Party hired by Kraft as necessary
solely to manufacture Selected Compound under this Agreement.  Senomyx will [***]. The parties agree that a
goal for the manufacturing cost of each Selected Compound is to be [***], which
is equivalent to [***].  If the
manufacturing cost of Selected Compound [***], then such costs [***].”


 


4.             The
following definitions of Appendix A of the Agreement are hereby amended and
restated herein. All other definitions in the Agreement will remain unchanged.


 


“Collaborative
Period” means (i) in the case of the [***] Phase the period
beginning on the Effective Date and ending three (3) years thereafter,
unless terminated earlier in


 










***Confidential Treatment Requested


 





















 


accordance with Section 15;
(ii) in the case of the [***] Phase the period beginning on the Effective
Date and ending three (3) years thereafter, unless terminated earlier in
accordance with Section 15; and (iii) in the case of the [***] Phase,
the period beginning on the First Amendment Effective Date and ending July 30,
2007, unless terminated earlier in accordance with Section 15.


 


“Dessert
Category” means [***] desserts.


 


“[***]
Category” means [***].


 


“Field III”
means the [***] Category and the Dessert Category.


 


“Patent
Rights” means all of the patents and patent applications
described subsequently herein and the rights associated with all U.S. and
foreign (including regional authorities such as the European Patent Office)
utility, design, or provisional patents or patent applications, including any
continuation, continuation-in-part, or division thereof or any substitute
application therefore or equivalent thereof, and any patent issuing thereon,
including any reissue, reexamination or extension thereof and any confirmation
patent or registration patent or patent of additions based on any such patent.


 


“Regulatory
Approval Date” means the date in a particular country that a
regulatory approval is granted that will allow a Selected Compound(s) to be
sold in such country in the applicable Product.


 


5.             For
avoidance of doubt, during the two (2) year extension of the Collaborative
Period for the [***] Phase resulting from this Third Amendment, research
funding for the [***] Phase will continue at the annual rate of [***].


 


6.             Senomyx
has an existing collaboration with a Third Party for the discovery of compounds
that [***] in [***].  Senomyx agrees to
commence commercially reasonable efforts [***] and will continue such efforts [***]
to [***] from such Third Party [***] to the [***] and to amend this
Collaborative Research and License Agreement to [***] Compounds for use in the
[***] without any [***] other than [***] detailed herein for [***] Products.


 


7.             Subject
to prior written approval of Kraft, Senomyx will issue a press release to
announce the execution of this Third Amendment and the material terms.
Thereafter, Kraft and Senomyx may each disclose to Third Parties the
information contained in such press release without the need for further approval
by the other party.


 


8.             Except
as specifically amended by this Third Amendment, the terms and conditions of
the Agreement shall remain in full force and effect.


 


9.             This
Third Amendment will be governed by the laws of the State of California, as such
laws are applied to contracts entered into and to be performed entirely within
such State.


 


10.          This
Third Amendment may be executed in two or more counterparts, each of which
shall be deemed an original, but all of which together shall constitute one and
the same instrument.


 










***Confidential Treatment Requested


 





















 


IN
WITNESS WHEREOF, the parties have executed this Third
Amendment effective as of July 29, 2005.


 


 


	
  KRAFT FOODS GLOBAL, INC.

  
	
   

  	
   

  
	
  By:

  	
  /s/ Jean E. Spence

  	
   

  
	
   

  	
   

  
	
  Title:

  	
   Executive Vice President

  	
   

  
	
   

  	
   

  
	
  Date:

  	
   7/29/05

  	
   

  
	
   

  	
   

  
	
   

  	
   

  
	
  SENOMYX, INC.

  
	
   

  	
   

  
	
  By:

  	
  /s/ Kent Snyder

  	
   

  
	
   

  	
   

  
	
  Title:

  	
   President and CEO

  	
   

  
	
   

  	
   

  
	
  Date:

  	
   7-29-05