Attached files
Exhibit 10.5
FIRST AMENDMENT TO EXCLUSIVE LICENSE AGREEMENT UC Agreement Control No. 2006-04-0085
This First Amendment to Exclusive License Agreement (this “Amendment”), dated as of November 4, 2005, is made by and among The Regents of the University of
California, a California corporation (“The Regents”), Medivation, Inc ., a Delaware corporation (“Medivation”), and Medivation Prostate Therapeutics, Inc, a Delaware corporation and subsidiary of Medivation (“MPT”)
WHEREAS, The Regents, Medivation and MPT are parties to an Exclusive License Agreement, dated as of August 12, 2005 (the “Exclusive License Agreement”);
WHEREAS, The Regents, Medivation and MPT wish to strengthen the patent protection of certain members of the family of compounds covered in UC Case Nos 2004-129 and 2005- 438 by the filing of a patent application to cover additional selected diaiylthiohydantoin compounds, which are disclosed in UC Case No, 2006-260 entitled “Selected Diarylthiohydantoin Compounds,” by Samedy Ouk, Michael E lung, Derek Welsbie and Charlie D Chen, employees of The Regents, and Charles I Sawyers, an employee of HHMI and a member of the faculty of the University of California, Los Angeles;
WHEREAS, Medivation as the parent corporation of MPT will benefit directly from the agreements made herein;
WHEREAS, the parties mutually intend to enter into this First Amendment to amend the terms of the Exclusive license Agreement, as specified below.
THEREFORE, the patties hereby agree as follows:
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Paragraph 1,1 (“Regents’ Patent Rights”) is deleted and replaced with the following, |
which is amended to include “UC Case No. 2006-260” in the parenthetical at the end of
the paragraph:
11 “Regents’ Patent Rights” means The Regents interest in the claims of the United States patents and patent applications, corresponding foreign patents and patent applications (requested under Paragraph 7,3 herein), and any reissues, extensions, substitutions, continuations, divisions, and continuation-in-part applications (but only those claims in the continuation-in-part applications that are entirely supported in the specification and entitled to the priority date of the parent application) based on the patent applications listed in Appendix A (UC Case Nos 2004-129, 2005-438 and 2006-260).
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Appendix A (Regents’ Patent Rights) is deleted and replaced with the Appendix A |
attached to this First Amendment, which is amended to include the patent application to be filed under UC Case No 2006-260.
3, Paragraph 2 1 is deleted and replaced with the following, which is amended to delete
“Licensee” and replace it with “MPT .” The effect of this Amendment is that MPT is the sole recipient of the license granted pursuant to Paragraph 2 1 Notwithstanding this amendment, it is expressly understood that all other references to “Licensee” in the Exclusive License Agreement, including without limitation in Article 18 thereof (Indemnification), shall refer to Medivation and MPT collectively,
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1 Subject to the limitations set forth in this Agreement, including the licenses granted to the United States Government and those reserved by HHMI set forth in the recitals and in Paragraph 2 2 and the rights reserved by The Regents in Paragraph 2.3, The Regents hereby grants to MPT an exclusive license (the “License”) under Regents’ Patent Rights, in jurisdictions where Regents’ Patent Rights exist, to make, have made, use, sell, offer for sale and import Licensed Products and to practice Licensed Methods in the Field of Use to the extent permitted by law, |
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Except for the amendments specifically referenced above, all other terms of the Exclusive |
License Agreement shall remain unchanged and in full force and effect,
The Regents, Medivation and MPT have executed this Amendment in duplicate originals by their
authorized officers on the dates written below:
MEDIVATION, INC
Bv /s/ C. Patrick Machado
THE REGENTS OF THE UNIVERSITY OF CALIFORNIA
By: /s/ Claire T. Wake, Ph.D.
Name C, Patrick Machado
Name Claire T Wake, Ph D
T itle Senior Vice President and CFO
Title Assistant Director, licensing
Date 4 Nov, 05 Date November 4, 2005 MEDIVATION PROSTATE THERAPEUTICS, INC. f By /s/ C. Patrick Machado Name C, Patrick Machado T itle Senior Vice President and CFO
Date 4 Nov. 05
APPENDIX A (First Amendment)
REGENTS* PATENT RIGHTS
lIC Case No. 2004-129
PCT Patent Application No,, US05/05529 “Methods and Materials for Assessing Prostate Cancer Iherapies and Compounds,” filed February 23, 2005, based on US Provisional Patent Application No, 60/547,101 filed February 24, 2004, The inventors are Michael E Jung, Samedy Ouk, Charlie D, Chen and Derek Welsbie, employees of The Regents, and Charles I Sawyer s, an employee of the Howard Hughes Medical Institute (“HHMI”) and a member of the faculty of The Regents
UC Case No. 2005-438
US Provisional Patent Application No, 60/680,835 “Novel Androgen Receptor Inhibitors with Minimal Agonistic Activities,” fried May 11, 2005 The inventors are Michael E. Jung, Samedy Ouk, Charlie D Chen and Derek Welsbie, employees of The Regents, and Charles L Sawyer s, an employee of the Howar d Hughes Medical Institute (“HHMI”) and a member of the faculty of The Regents This application, together with the patent application pertaining to UC Case No 2004-129, cover the compounds identified as RD1 through RD138, inclusive, on Exhibit A attached her eto ,
UC Case No. 2006-260
US Provisional Patent Application to be filed on “Selected Diarylthiohydantoin Compounds” based on UC Case No 2006-260 The inventors are Michael E. Jung, Samedy Ouk, Charlie D, Chen and Derek Welsbie, employees of The Regents, and Charles L Sawyers, an employee of the Howard Hughes Medical Institute (“HHMI”) and a member of the faculty of The Regents This application will cover only the following diaiylthiohydantoin compounds developed in the labor atory of Michael E Jung, the structures of which are set forth on Exhibit A attached hereto:
? RD139 through RD142
? RD145 through RD163
? RD168
EXHIBIT A To Appendix A
[begins on Page 5]
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| 1 |
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RD2
RD3
RD4
RD5
RD6
RD7
RD8
RD9
RD10
RD11
RD12
RD13
RD14
RD15
RD16
RD17
RD18
RD19
RD20
RD20
RD22
RD23
RD24
RD25
RD18
RD#
RD26
RD1
RD8
RD28
RD28
RD29
RD30
RD31
RD32
RD33
RD34
RD35
RD37
RD38
RD39
RD40
RD41
RD42
RD43
RD44
RD27
RD35
RD35
RD45
RD46
RD47
RD48
RD49
RD50
RD51
RD52
RD53
RD54
RD55
RD57
RD58
RD59
RD60
RD61
RD62
RD63
RD64
RD65
RD66
RD67
RD45
RD53
RD52
RD60
RD36
RD44
RD68
RD69
RD70
RD71
RD72
RD73
RD74
RD75
RD#
O
RD61
O
RD67
RD67
RD78
RD79
RD80
RD81
RD82
RD83
RD84
RD85
RD86
RD87
RD88
RD89
RD90
RD91
RD78
RD78
RD84
RD84
RD68
RD75
RD92
RD93
RD94
RD95
RD85
RD85
RD#
RD91
RD96
RD97
RD98
RD99
RD100
RD101
RD102
RD103
RD104
RD105
RD106
RD107
RD108
RD109
RD96
RD96
RD101
RD101
RD92
RD110
RD111
RD112
RD113
RD114
RD115
RD116
RD#
RD#
RD109
RD109
RD117
RD118
RD119
RD120
RD121
RD122
RD123
RD110
RD110
RD#
RD#
RD124
RD125
RD126
RD127
RD128
RD129
RD130
RD131
RD132
RD133
RD134
RD135
RD136
RD137
RD138
RD139
RD#
RD#
RD132
RD132
RD117
RD123
RD140
RD141
RD142
RD145
RD146
RD92
RD92
RD147
RD148
RD149
RD150
RD151
RD152
RD153
RD154
RD92
RD92
RD155
RD156
RD157
RD158
RD159
RD160
RD161
RD162
RD147
RD147
RD154
RD#
RD163
RD164
RD#
RD#
26
26
RD155
RD162