Nanosys Inc. Contracts
Sample Business Contracts
License Agreement [Amendment A] - Nanosys Inc. and University of California
AMENDMENT A TO LICENSE AGREEMENT
This amendment agreement (the "Amendment A") is entered into by the parties to
the existing license agreement effective November 9, 2002 (the "Prior
Agreement") between The Regents of the University of California, Department of
Energy contract-operators of the Ernest Orlando Lawrence Berkeley National
Laboratory, 1 Cyclotron Road, Berkeley, CA 94720, ("Berkeley Lab"), and Nanosys,
Inc., a Delaware corporation ("Licensee") having its principal place of business
at 2625 Hanover St., Palo Alto, CA 94304.
For good and valuable consideration, receipt and sufficiency of which is hereby
acknowledged, the Berkeley Lab and Licensee agree as follows:
I. BACKGROUND
The Berkeley Lab and Licensee are parties to the Prior Agreement (Berkeley Lab
reference L-03-1364) relating generally to certain inventions characterized as
nanocrystals and related technology.
The Berkeley Lab and Licensee would like to amend the Prior Agreement by way of
this Amendment A to include license rights to certain new inventions made in the
course of research at Berkeley Lab by [*** Redacted] [*** Redacted] under
Berkeley Lab's contract with the United States Department of Energy ("DOE"),
relating generally to [*** Redacted] applications of [*** Redacted] and related
technology.
II. AMENDMENT FEE
Licensee shall pay to the Berkeley Lab an Amendment Fee in the amount of [***
Redacted], which accrues upon execution of this Amendment, with [*** Redacted]
being payable within [*** Redacted] of the execution of this Amendment, and the
remaining [*** Redacted] being payable within [*** Redacted] of the execution
date of this Amendment.
III. AMENDMENTS TO THE PRIOR AGREEMENT
A. Paragraph 5.1 of the Prior Agreement is hereby deleted in its entirety
and replaced with the following amended paragraph 5.1:
5.1 Following an initial public offering or series of public
offerings of Licensee securities which raises in the aggregate
at least $5 million or sale of all or substantially all of the
assets or equity of Licensee in a
*** Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
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transaction(s) worth at least $5 million ("Offering"),
Licensee shall pay to Berkeley Lab the equivalent of the price
at the Offering of 70,000 shares of Licensee's common stock.
Such payments shall be made in installments with one-third
payable 9 months from the Offering, one-third payable 18
months from the Offering and one-third payable 26 months from
the Offering. Such payments shall include interest from the
date of the Offering to the date such payment is made.
Interest shall be compounded on the date such payment is made,
and shall be charged at the prime lending rate as published in
the Wall Street Journal on the date such payment is made.
Licensee shall adjust the 70,000 shares to take into account
any stock splits or reverse stock splits since the Effective
Date.
B. Paragraph 7.4 of the Prior Agreement is hereby amended to insert after
paragraph 7.4.l0. the following additional paragraphs:
7.4.11 by [*** Redacted] from the Effective Date, have expended at
least [*** Redacted] in the aggregate for direct costs in
research and development for technology directly related to
[*** Redacted] applications that use Licensed Patents;
7.4.12 by [*** Redacted] from the Effective Date, provide Berkeley
Lab with a commercialization plan for [*** Redacted] devices
based upon the Licensed Patents;
7.4.13 by [*** Redacted] from the Effective Date, produce in
Licensee's facility, a working prototype [*** Redacted] device
with at least [*** Redacted];
7.4.14 by [*** Redacted] from the Effective Date, make commercial
sales of Licensed Products that are [*** Redacted] devices
C. Paragraph 9.1 of the Prior Agreement is hereby deleted in its entirety
and replaced with the following amended paragraph 9.1:
9.1 Licensee shall keep books and records accurately showing all
work performed in satisfaction of Article 7 and all Licensed
Products manufactured, used, sold or imported under the terms
of this Agreement, including without limitation books and
records related to licenses for Third Party Patents under
paragraph 6.4. Licensee shall preserve those
*** Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
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books and records for at least [*** Redacted] years from the
date of the work performed or the royalty payment to which
they pertain and shall open them to inspection by
representatives or agents of Berkeley Lab at reasonable times.
Licensee shall render all assistance reasonably requested by
Berkeley Lab for the purposes of carrying out such inspections
and examination of Licensee's royalty payments and performance
under Article 7.
D. Exhibit 1 and Exhibit 2 of the Prior Agreement are hereby deleted in
their entirety and replaced with the attached amended Exhibit 1 and
Exhibit 2.
IV. NO OTHER AMENDMENTS
Unless expressly amended herein or by subsequent amendments agreed to by the
parties in a signed written amendment, all other terms of the Prior Agreement,
including but not limited to terms related to interpretation and enforcement of
the Prior Agreement, shall remain in full force and effect as originally agreed
to in the Prior Agreement, and shall apply equally to the terms of this
Amendment A.
Berkeley Lab and Licensee execute this Agreement in duplicate originals through
their duly authorized respective officers in one or more counterparts, that
taken together, are but one instrument.
THE RECENTS OF THE UNIVERSITY NANOSYS, INC.
OF CALIFORNIA, THROUGH THE
ERNEST ORLANDO LAWRENCE
BERKELEY NATIONAL LABORATORY
By /s/ Piermaria Oddone By /s/ Lawrence Bock
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(Signature) (Signature)
By Piermaria Oddone By Lawrence Bock
Title Deputy Laboratory Director Title President
Date 3/18/03 Date 3/20/03
Approved as to form
/s/ Glenn R. Woods
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GLENN R. WOODS
LAWRENCE BERKELEY NATIONAL LABORATORY
*** Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
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EXHIBIT 1
LICENSED (EXCLUSIVE) PATENTS
BERKELEY LAB
CASE NUMBER PATENT APPLICATION/PATENT
[*** Redacted]
*** Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
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EXHIBIT 2
LICENSED (FOU EXCLUSIVE) PATENTS
BERKELEY LAB PATENT APPLICATION/PATENT
CASE NUMBER
[*** Redacted]
*** Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.