Exhibit
10.31


 


[ * ]  = CERTAIN CONFIDENTIAL INFORMATION
CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED AND FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 OF
THE SECURITIES ACT OF 1933, AS AMENDED.


 


FIRST AMENDMENT TO THE LICENSE AGREEMENT BETWEEN THE BOARD OF
TRUSTEES OF THE UNIVERSITY OF ILLINOIS AND QUARK BIOTECHNOLOGY, INC.


 


THIS FIRST AMENDMENT TO THE EXCLUSIVE LICENSE
AGREEMENT (the “First Amendment”) is made and entered into as of March 23, 2007
(“Amendment Date”) by and between THE BOARD OF TRUSTEES OF THE UNIVERSITY OF
ILLINOIS, a body corporate and politic of the State of Illinois, 1737 W. Polk
St., Chicago, IL 60612 (“UNIVERSITY”) and QUARK BIOTECH, INC a California
corporation, with a principal place of business at 6536 Kaiser Drive, Fremont,
CA 94555 (“LICENSEE”).


 


    
WHEREAS, UNIVERSITY and LICENSEE entered into an EXCLUSIVE LICENSE
AGREEMENT effective September 3, 1999 dated (“Agreement”) to license certain
technology;


 


    
WHEREAS, UNIVERSITY and LICENSEE wish to amend the Agreement in the
manner set forth in this First Amendment;


 


    
NOW, THEREFORE, in consideration of the mutual promises and covenants
contained herein, the parties agree to amend the Agreement as follows:


 


Amendments:


 


I.   ARTICLE
IV- PAYMENTS - Sections 4.1 and 4.6 of the Agreement shall be deleted and
replaced with the following:


 


4.1                         For the rights, privileges and licenses granted hereunder, LICENSEE shall pay to the UNIVERSITY, in the manner
hereinafter provided, on a country by country basis, until the end of the last
to expire patent of the Patent Rights in such country, or until this Agreement
shall be terminated, as hereinafter provided, whichever occurs first:


 


a)              in
the event of sales of Licensed Products or Licensed Processes by LICENSEE or
any Affiliate -a royalty in an amount equal to [ * ] of the aggregate Net Sales
by LICENSEE or any Affiliate, of the Licensed Products or Licensed Processes.


 


b)             in
the event of a Sublicense -


 


(i) a [ * ] payments received by LICENSEE from
sublicensees, based on sales of Licensed Products or Licensed Processes by
sublicensees, exclusive of  [ * ] covered
by Section 4.1(b)(ii) below; and amounts received by 


 


 

















LICENSEE
as reimbursement of costs and expenses related to research or development of
Licensed Products;


 


(ii) a [ * ]. 
No payments will be made under this Section 4.1(b)(ii) to the extent
already covered under Section 4.1(b)(i); and


 


(iii) a [ * ] license fee payment due within [ * ]
of execution of a sublicense agreement granting a third party an exclusive
Sublicense for [ * ].


 


c)              a
[ * ] license fee to be payable within [ * ] of execution of this First
Amendment.


 


d)             a
[ * ] license fee payment due within [ * ] of [ * ].


 


It is clarified that the
above milestone payments will be due [ * ] Licensed Product to achieve the
relevant milestone event, and [ * ] shall be due hereunder with respect to each
milestone events [ * ] such Licensed Products that achieve such milestone [ * ]
countries in which they are achieved.


4.6                                 In the event
that the LICENSEE’s, the Affiliate’s or its Sublicensee’s development,
manufacture, use or sale of a Licensed Product or Licensed Process would
constitute an infringement of patent right or intellectual property right of
any third party, the Parties shall together use their reasonable endeavors to
obtain an appropriate license from such third party. If such license requires
LICENSEE to pay royalties to such third party, the royalty due and payable to
UNIVERSITY under Sections 4.1(a) and (b) of this Agreement for sale of the
Licensed Product or Licensed Process shall be reduced by [ * ] the amount which
the LICENSEE is required to pay to said third party, provided that the royalty
due to the UNIVERSITY hereunder shall not be reduced by more than [ * ]. The
UNIVERSITY acknowledges for the purposes of this section 4.6, that the LICENSEE has obtained from Atugen AG
and Alnylam Pharmaceuticals Inc. licenses for RNAi technology and relevant
intellectual property.


 


II.   ARTICLE XIII- TERMINATION - Section
13.4 shall be added to Article XIII:


 


13.4          Upon termination of this Agreement for
any reason, all Sublicenses shall terminate. 
Provided that a Sublicensee is in compliance in all material respects
with the terms of its Sublicense in effect on the date of termination, the
UNIVERSITY will grant such Sublicensee that so requests, a license with royalty
terms and such use rights and other terms as are substantially similar to this Agreement.  In no event shall UNIVERSITY have any
obligations of any nature whatsoever with respect to (i) any past, current or
future obligations that LICENSEE may have had, or may in the future have, for
the payment of any obligations owing to Sublicensee pursuant to such
Sublicense, (ii) any past obligations whatsoever, and (iii) any future
obligations to Sublicensee beyond 


[ * ]  = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS
DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT
OF 1933, AS AMENDED.

















those
to LICENSEE as set forth herein.


 


 


All other terms set forth in the Agreement
shall remain unchanged.


 


IN WITNESS WHEREOF, the parties have executed
this First Amendment effective as of March 23, 2007.


 


 


THE BOARD OF TRUSTEES OF THE UNIVERSITY OF ILLINOIS


 


	
  By

  	
   

  	
  /s/ Walter K. Knorr

  	
   

  	
  Date:

  	
   

  	
  4/9/07

  
	
   

  	
   

  	
  Walter K. Knorr,
  Comptroller

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  By

  	
   

  	
  /s/ Michele M. Thompson

  	
   

  	
  Date:

  	
   

  	
  4/9/07

  
	
   

  	
   

  	
  Michele M. Thompson,
  Secretary

  	
   

  	
   

  	
   

  	
   

  



 


 


QUARK BIOTECH, INC.


 


 


	
  By

  	
   

  	
  /s/ D. Zurr

  	
   

  	
  Date:

  	
   

  	
  4/10/07

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  Printed
  Name:

  	
   

  	
  Daniel
  Zurr, Ph.D.

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  Title:

  	
   

  	
  President & CEO

  	
   

  	
   

  	
   

  	
   

  



 


 


[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS
DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT
OF 1933, AS AMENDED.