Attached files
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| 8-K - SentiSearch, Inc. | v210737_8k.htm |
Exhibit
10.1
AMENDMENT
TO
LICENSE AGREEMENT
This
AMENDMENT TO LICENSE AGREEMENT (this "Amendment") is made and entered into as of
January 30, 2011 (“Amendment Effective Date”) by and between The Trustees of
Columbia University in the City of New York ("Columbia") and SentiSearch, Inc.,
as the successor-in-interest to Sentigen Corp. (“Company”).
W
I T N E S S E T H:
WHEREAS,
Company and Columbia are parties to that certain License Agreement dated April
10, 2000, as amended on October 17, 2006 (collectively the
“Agreement”). Each capitalized term used herein, and not otherwise
defined herein, shall have the meaning set forth in the Agreement;
WHEREAS,
Company has represented to Columbia that it has executed a Project Research and
Product Development Agreement with Bayer CropScience AG (“Bayer”), effective
September 15, 2010 (“Bayer Agreement”), attached hereto as Exhibit
A;
WHEREAS,
Company and the Columbia wish to amend the Agreement in certain
respects;
NOW,
THEREFORE, in consideration of the premises and the mutual covenants herein set
forth, the parties hereto hereby agree as follows:
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1.
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Termination of License
to Licensed Patents. The license to Patents granted by
Columbia to the Company is hereby terminated as of the Amendment Effective
Date. The Parties further agree that all Licensed Patents shall
be returned to Columbia as the exclusive owner thereof, effective upon the
Amendment Effective Date. Accordingly, Section 1(c), Section
2(a)(i), Exhibit A and all references to Licensed Patents in the Agreement
are hereby deleted in their
entirety.
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2.
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Section
1(d) of the Agreement shall be deleted in its entirety and replaced by the
following:
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“(d) Licensed
Product/Services” shall mean any product or service that involves the use of or
incorporation, in whole or in part, of Licensed Technical
Information.”
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3.
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Section
1(e) of the Agreement is deleted in its entirety and replaced with the
following:
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“(e) “Licensed
Technical Information” shall mean know how, information and materials (including
certain cells, proteins, etc.) including, without limitation, that which is set
forth and listed in Exhibit B, attached hereto and incorporated herein and all
information and materials originally derived and described in Columbia Invention
Report No. 907, now U.S. Application Serial Number 11/ 825,626 and all foreign
equivalents, which includes a method of identifying a compound capable of
specifically binding to an insect odorant receptor and a method of identifying a
compound capable of activating the activity of an insect odorant
receptor. The Parties agree that know how and materials derived from
Dr. Richard Axel’s laboratory at Columbia using Drosophila sequences and used in
the discovery or development of any know how including but not limited to
Anopholes species will be treated as Licensed Technical Information under this
Agreement.”
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4.
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Section
3(a) of the Agreement is deleted in its entirety and replaced with the
following:
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“(a) In
consideration of the license granted under Section 2(a)(ii) and the Company’s
right to grant sublicenses under Section 2(b) of this Agreement, the Company
shall pay to Columbia a royalty (the “Columbia Royalty”) of 0.15% of Net Sales
of Licensed Products/Services by Company, Affiliates and Sublicensees in
accordance with Section 4 hereof, provided, however, that to the extent Net
Sales by the Company or its Affiliates is comprised of a royalty (the “Company
Royalty”) that is based on a percentage of Net Sales by Sublicensees, the
Company shall pay the Columbia Royalty only with respect to the Net Sales by the
Sublicensees and shall make such payment promptly upon receipt by the Company
from the particular Sublicensee of the Company Royalty that is based on such Net
Sales by such Sublicensee. Anything contained in this Agreement to
the contrary notwithstanding, all payments of the Columbia Royalty
that are based on Net Sales of Bayer as Sublicensee pursuant to the Bayer
Agreement shall be calculated based on Net Sales as defined in the Bayer
Agreement, as such definition may be amended from time to time. ”
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5.
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Section
3(c) of the Agreement shall be deleted in its
entirety.
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6.
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Section
4(b) is amended by changing the addresses for reports and payments to
Columbia to:
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The
Trustees of Columbia University in the City of New York
Columbia
Technology Ventures – Finance
P.O. Box
1394
New York,
NY 10008-1394
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7.
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Section
6(a) of the Agreement is deleted in its entirety and replaced with the
following:
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“(a) The
Company shall use commercially reasonable efforts to research, develop and
market Licensed Products/Services for commercial sale and distribution
throughout the Territory.”
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8.
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Sections
6(b), 6(c) and 6(d) of the Agreement are deleted in their
entirety.
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9.
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Section
7(a) of the Agreement shall be deleted in its entirety and replaced with
the following:
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“Company
will reimburse Columbia for the actual fees, costs, and expenses incurred in
preparing, filing, prosecuting and maintaining the Licensed Patents by Columbia
as of April 30, 2010 (“Past Patent Expenses”). Columbia, using
reasonable efforts, estimates that Past Patent Expenses total
$358,899.29. Company shall reimburse Columbia in full for Past Patent
Expenses upon notification by Bayer of its decision to enter into Phase 3 of a
Collaboration Compound, as defined in the Bayer Agreement, and receipt by
Company of $750,000 in accordance with Section 5.2(b) of the Bayer
Agreement.”
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10.
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Sections
7(b), 7(c), 7(d), 8 and 14 of the Agreement shall be deleted in their
entirety.
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11.
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Section
18(b) of the Agreement shall be deleted in its entirety and replaced with
the following:
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“Unless
terminated earlier under any provisions of this Agreement, the term of the
license granted hereunder shall extend, on a country by country basis and
Licensed Product/Service by Licensed Product/Service basis until ten
(10) years from the first sale of such Licensed
Product/Service. Thereafter the Company shall receive a fully paid up
license with respect to such Licensed Product/Service.”
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12.
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Sections
18(c)(i) and 18(d) of the Agreement are deleted in their
entirety.
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13.
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Section
19 is amended by changing the addresses for notices to Columbia and the
Company to:
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“if
to Columbia, to:
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Executive
Director
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Columbia Technology
Ventures
Mail Code 9606
80 Claremont Avenue, #4F
New York, NY 10027-5712
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copy
to:
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General
Counsel
412
Low Memorial Library
535
West 116th
Street, MC 4308
New
York, NY 10027
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if
to the Company, to:
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Joseph
K. Pagano, Chief Executive Officer
SentiSearch,
Inc.
1217
South Flagler Drive, 3rd
Floor
West
Palm Beach, FL 33401-6706”
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copy
to:
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Robert
J. Mittman, Esq.
Blank
Rome LLP
405
Lexington Avenue
New
York, NY 10174
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14.
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Except
as expressly set forth in this Amendment, the Agreement shall remain in
full force and effect. If there is any inconsistency or
conflict between this Amendment and the Agreement, the provisions of this
Amendment shall govern and control. This Amendment may be
executed in any number of counterparts, each of which shall be deemed an
original, but all of which together shall constitute one and the same
instrument. This Amendment shall be binding upon, and shall
inure to the benefit of, the parties hereto and their respective
successors and assigns.
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IN
WITNESS WHEREOF, the parties hereto have caused this Amendment to
Sponsored Research Agreement to be executed as of the date first above
written.
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THE
TRUSTEES OF COLUMBIA
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UNIVERSITY
IN THE CITY OF NEW YORK
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By
/s/ Orin Herskowitz
2/7/11
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Name:
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Title:
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TTS#
38837
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SENTISEARCH,
INC.
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By
/s/ Joseph
Pagano
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Name:
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Title:
Chairman of the Board
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