exv10w30b



 






EXHIBIT 10.30 B




FIRST AMENDMENT TO THE LICENSE AGREEMENT




     This First Amendment to the License Agreement (the “Amendment”) is made and entered
into as of April 26, 2002 (the “Amendment Completion Date”), by and between The University of
Kansas Center for Research, Inc., a Kansas not-for-profit corporation (“Licensor”), and
ProQuest Pharmaceuticals, Inc., a Kansas corporation (“Licensee”). Licensor and Licensee
may be referred to herein as a “Party” or, collectively, as “Parties”.



Recitals




     Whereas, Licensor and Licensee entered into a License Agreement (the “Agreement”)
effective April 2, 1999, wherein Licensor granted Licensee an exclusive license under certain
proprietary cyclic peptide and prodrug technology to develop, make, use and sell products; and



     Whereas, the Parties desire to amend the terms of the Agreement as provided in this
Amendment to change the royalty payments due Licensor under such license grant in consideration for
the payment by Licensee of certain ongoing expenses for the filing and maintenance of patents in
non-United States countries as of the Amendment Effective Date.




Now, Therefore, the Parties agree as follows:



1. Amendment of the Agreement




     The Parties hereby agree to amend the terms of the Agreement as provided below, effective as
of the Amendment Effective Date. To the extent that the Agreement is explicitly amended by this
Amendment, the terms of the Amendment will control where the terms of the Agreement are contrary to
or conflict with the following provisions. Where the Agreement is not explicitly amended, the
terms of the Agreement will remain in force. Capitalized terms used in this Amendment that are not
otherwise defined herein shall have the same meanings as such terms are defined in the Agreement.



     1.1. Amendment of Article 1 of the Agreement. A new Paragraph 1.12 and a new Paragraph 1.13
are added to Article 1 of the Agreement, reading in their entirety as follows:




“1.12 “Effective Date” means April 2, 1999.




“1.13 “Amendment Effective Date” means February 6, 2002.



     1.2. Amendment of Paragraph 3.01 of the Agreement. Paragraph 3.01 of the Agreement is hereby
deleted and replaced in its entirety as follows:




     “3.01 As consideration for the license granted to Licensee by Licensor under this
Agreement, Licensee shall pay to Licensor as royalties the following percentages of License
Revenue derived by Licensee for each patent:



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	 	Patent or Application	 	 	Percentage of License Revenue	 
	 	U.S. Patent No. 5,672,584
	 	 	2.0%	 
	 	Water Soluble Prodrugs of Tertiary Amine
Containing Drugs and Methods of Making
Thereof (“Tertiary and Secondary Amine
Patent”)
	 	 	2.0%	 
	 	Water Soluble Prodrugs of Hindered Alcohols
(“Alcohol and Phenol Patent”)
	 	 	2.0%	 
	 






                                        (i) No royalties shall be owed in connection with an individual patent listed above
until a United States patent application is issued from the United States Patent and
Trademark Office with respect to that patent. From the Effective Date until the issuance of
the Tertiary and Secondary Amine Patent and the Alcohol and Phenol Patent, Licensee shall
record and maintain complete and accurate records of License Revenue potentially allocable
to each such Existing Application. If the Existing Applications issue as patents, then
Licensee shall pay to Licensor such percentage of License Revenue allocable as above to each
such issued patent as is or has been received by Licensee for the period beginning on the
Effective Date and ending as set forth in subsection (ii) below.




                                        (ii) Subject to Paragraph 7.04, royalties due under this Paragraph 3.01 shall be
payable on a country-by-country and Product-by-Product (as applicable) basis until the
expiration, nullification, final judgment of invalidity or abandonment after exhaustion of
all appeals of the last-to-expire, last-to-be nullified, last-to-be held invalid or last to
be abandoned claim of an issued patent under the Patent Rights or under the Existing
Applications in such country covering a Product or other applicable License Revenue.



     1.3. Amendment of Paragraph 7.01 of the Agreement. The last sentence of Paragraph 7.01 of the
Agreement is hereby deleted in its entirety.



     1.4. Amendment of Paragraph 7.03 of the Agreement. Paragraph 7.03 of the Agreement is hereby
deleted and replaced in its entirety with the following:




“7.03 Reimbursement for Foreign Patent Costs.




          (i) Subject to Paragraph 7.04, Licensee shall reimburse Licensor for all
reasonable costs and expenses incurred after the Amendment Effective Date and
associated with the filing, prosecution and maintenance of Patent Rights in
non-United States countries as are: (a) agreed upon in writing by the parties, (b)
generated through compliance by the parties with Paragraph 7.02 and (c) actually
incurred by Licensor and not reimbursed by Third Parties. Licensee shall reimburse
such amount within thirty (30) days of receipt from Licensor of an invoice itemizing
and documenting such costs and expenses.



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          (ii) Upon completion of Licensee’s Phase 1 Financing, Licensee shall promptly
reimburse Licensor for reasonable costs and expenses associated with the filing and
prosecution of Patent Rights in non-United States countries as were: (a) agreed upon
in writing by the Parties or agreed upon in writing by ProQuest (as may be evidenced
by Licensor’s receipt of invoice from patent counsel for expenses directed by
ProQuest) and (b) actually incurred by Licensor and not reimbursed by Third Parties
for the period beginning on the Effective Date and ending on the Amendment Effective
Date. Within thirty (30) days following the Amendment Completion Date, the Licensor
shall provide to the Licensee a written estimate prepared in good faith that
summarizes such costs and expenses. Licensee shall have the right to audit and
verify the invoices and relevant documents that support such costs and expenses.
Licensee shall reimburse Licensor for such filing and patent costs as set forth in
this subsection (ii) in four (4) equal payments. The first such payment shall be due
within sixty (60) days of the completion of Licensee’s Phase 1 Financing, and the
subsequent three (3) payments shall be made, respectively, at four (4) month
intervals thereafter.



     1.5 Amendment of Paragraph 7.04 of the Agreement. Paragraph 7.04 of the Agreement is hereby
deleted and replaced in its entirety with the following:




          “7.04 Pursuant to Paragraph 9.03, Licensee may terminate its payment obligations under
Paragraphs 7.01 and 7.03 as to all Patent Rights or as to any jurisdiction or any part of
the Patent Rights upon ninety (90) days prior written notification to Licensor of such
termination. If Licensee so elects, then both the scope of the license grant in Article 2
and the payment obligations under Paragraphs 3.01, 7.01 and 7.03 shall be narrowed
accordingly. Nothing in this section shall relieve Licensee of its obligation to reimburse
Licensor for all expenses of any Patent Rights incurred by Licensor prior to the surrender
by Licensee of such Patent Rights.”



     1.6 Amendment of Paragraph 17.01 of the Agreement. The contact information for Licensee and
Licensor stated in Paragraph 17.01 of the Agreement is hereby revised to read as follows:



	 	 	 	 	 
	 
	 	If to Licensor:	 	The University of Kansas Center for Research, Inc.
	 
	 	 	 	Youngberg Hall
	 
	 	 	 	Lawrence, Kansas 66044
	 
	 	 	 	 
	 
	 	 	 	Executive Director of Technology Transfer
	 
	 	 	 	Attention:  James G. Baxendale
	 
	 	 	 	Telephone: (785) 864-7783
	 
	 	 	 	Facsimile:   (785) 864-5272
	 
	 	 	 	 
	 
	 	With a copy to:	 	Corporate Counsel
	 
	 	 	 	Attention: Arjun S. Sanga
	 
	 	 	 	Telephone: (785)864-4148






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	 	 	 	Facsimile:   (785) 864-5272
	 
	 	 	 	 
	 
	 	If to Licensee:	 	ProQuest Pharmaceuticals, Inc.
	 
	 	 	 	1201 Wakarusa Drive, Building E, Suite 2
	 
	 	 	 	Lawrence, Kansas 66049
	 
	 	 	 	Attention: Osborne Wong
	 
	 	 	 	Telephone: (785) 865-1585
	 
	 	 	 	 
	 
	 	With a copy to:	 	Cooley Godward LLP
	 
	 	 	 	3000 El Camino Real
	 
	 	 	 	Palo Alto, California 94306-2155
	 
	 	 	 	Attention: Barclay James Kamb, Esq.
	 
	 	 	 	Telephone: (650) 843- 5052
	 
	 	 	 	Facsimile:   (650) 849-7400






2.  Miscellaneous




     2.1 Full Force and Effect. This Amendment amends the terms of the Agreement and is deemed
incorporated into, and governed by all other terms of, the Agreement. The provisions of the
Agreement, as amended by this Amendment, remain in full force and effect.



     2.2 Counterparts. This 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.



     In Witness Whereof, the Parties have executed this Amendment in duplicate originals
by their authorized officers as of the Amendment Completion Date, and such Amendment is effective
as of the Amendment Effective Date.



	 	 	 	 	 	 	 	 	 
	 	 	The University of Kansas Center for	 	 	 	 
	 	 	Research, Inc.	 	 	 	 
	 
	 	 	 	 	 	 	 	 
	 	 	By:                                                            	 	 	 	 
	 
	 	 	 	 	 	 	 	 
	 
	 	Title:	Vice President	 	 	 	 
	 
	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 
	 	 	ProQuest Pharmaceuticals, Inc.	 	 	 	 
	 
	 	 	 	 	 	 	 	 
	 
	 	By:	/s/ Osborne S. Wong	 	 	 	 
	 
	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 
	 
	 	Title:	President	 	 	 	 
	 
	 	 	 	 	 	 	 





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