Sample Business Contracts

Technology Transfer Agreement II [Amendment No. 1] - Molecular Analytical Systems Inc. and LumiCyte Inc.

FIRST AMENDMENT TO THE

TECHNOLOGY TRANSFER AGREEMENT II between

MOLECULAR ANALYTICAL SYSTEMS, INC.

and

LUMICYTE, INC.

This FIRST AMENDMENT TO THE TECHNOLOGY TRANSFER AGREEMENT II between MOLECULAR ANALYTICAL SYSTEMS, INC. and LUMICYTE, INC. (the “First Amendment”) is made and entered into on this 6^th day of November, 2001, and effective February 29, 2000, by and between Molecular Analytical Systems, Inc. (“MAS”), a Texas corporation with an address at 101 First Street, Suite 478, Los Altos, CA 94022, and LumiCyte, Inc. (“LumiCyte”), a California corporation, with an address at 48480 Lakeview Boulevard, Fremont, CA 94538.

Whereas MAS and LumiCyte (the “Parties”) entered into that certain TECHNOLOGY TRANSFER AGREEMENT II (the “Original Agreement”) on February 29, 2000; and

Whereas the Parties desire to clarify the scope of LumiCyte’s participation in the prosecution of the Patent Rights.

Now, Therefore in consideration of the premises and the mutual covenants and agreements hereinafter set forth and for other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the Parties hereto agree as follows:

A. All capitalized terms not defined in this First Amendment shall have the meaning given such term in the Original Agreement.

B. MAS and LumiCyte agree to replace Section 5.5 of the TECHNOLOGY TRANSFER AGREEMENT II between MOLECULAR ANYLYTICAL SYSTEMS, INC. and LUMICYTE, INC. with the following revised Section 5.5:

5.5 Patent Applications. It is understood by the Parties that, pursuant to the Baylor Technology Transfer Agreement, MAS has the initial responsibility for filing, prosecution and maintenance of Patents and Patent Applications covering the Baylor Technology. The Parties agree that, as between MAS and LumiCyte. MAS shall be responsible for deciding whether and how to file, prosecute and maintain the Patents and Patent Applications, provided that:

(a) all decisions of MAS (whether substantive or procedural) concerning whether and how to file, prosecute and/or maintain any Patents and Patent Applications shall be acceptable to LumiCyte, such acceptance not to be unreasonably withheld;

(b) with respect to any action permitted under Section 5.5 of the Baylor Technology Transfer Agreement or Section 5.5 of this Agreement, MAS will use legal counsel reasonably acceptable to LumiCyte;

(c) MAS will provide LumiCyte with (i) drafts of all filings relating to the Patents and Patent Applications and (ii) drafts of all correspondence to be sent by MAS to Baylor, the Patent and Trademark Office (the “PTO”) or any third party relating to the Patents and Patent Applications. Final versions of all such filings and correspondence shall be acceptable to LumiCyte, such acceptance not to be unreasonably withheld;

(d) MAS will promptly provide LumiCyte with copies of any notices and other correspondence received by LumiCyte from Baylor, the PTO or any other third party relating to the Patents and Patent Applications, including, but not limited to, any notices received by MAS pursuant to Section 5.5 of the Baylor Technology Transfer Agreement;

(e) MAS will, if requested by LumiCyte, provide notice to Baylor under any of the circumstances permitting notice pursuant to Section 5.5 of the Baylor Technology Transfer Agreement;

(f) MAS agrees to cooperate with LumiCyte to whatever extent is reasonably necessary to procure patent protection of any rights regarding the Licensed Technology and agree to execute any and all documents to give LumiCyte the full benefit of the sublicenses and licenses granted herein;

(g) MAS represents and warrants that, as of the Effective Date, it has not received any notices from Baylor pursuant to Section 5.5(c) or Section 5.5(d) of the Baylor Technology Transfer Agreement. In the event MAS receives any notices from Baylor pursuant to Section 5.5(c) or Section 5.5(d) of the Baylor Technology Transfer Agreement after the Effective Date, MAS will provide a copy of such notice to LumiCyte within five (5) business days of receipt of such notice by MAS. MAS will then take all actions requested by LumiCyte to allow LumiCyte to retain its rights granted under this Agreement, including, but not limited to, promptly notifying Baylor in the event LumiCyte wishes MAS to proceed with any actions in connection with the Patents or Patent Applications.

C. Any terms of the Original Agreement not amended herein shall remain in full force and effect.

IN WITNESS WHEREOF, the Parties hereto have executed this First Amendment in multiple originals by their duly authorized officers and representatives.

LumiCyte, Inc.

Molecular Analytical Systems, Inc.

By:

/s/ T. William Hutchens

By:

/s/ T. William Hutchens

Printed Name:

T. William Hutchens

Printed Name:

T. William Hutchens

Title:

Chairman and CEO

Title:

President