Exhibit 10.4
AMENDMENT
Between
MERCK & CO.,
INC.
And
METABASIS THERAPEUTICS,
INC.
This Amendment (this
“Amendment”), effective upon the date of last signature
below (the “Amendment Date”), confirms the mutual
understanding and agreement between Merck & Co., Inc.
(“Merck”) and Metabasis Therapeutics, Inc.
(“Metabasis”) to modify certain terms of the License
and Collaboration Agreement relating to AMP-activated protein
kinase entered into by the parties as of June 22, 2005 and
amended by the Agreement effective September 27, 2005, the
Agreement effective March 22, 2007 and the Letter Agreement
dated April 16, 2008 (collectively, the “Collaboration
Agreement”). Unless otherwise defined, capitalized terms used
in this Agreement shall have the meanings provided in the
Collaboration Agreement.
WHEREAS, Merck and Metabasis desire
to change certain of the milestone, royalty and patent cost payment
obligations of the Collaboration Agreement;
NOW, THEREFORE, Merck and Metabasis
hereby agree as follows:
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1.
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Merck shall
make a one-time, non refundable, non creditable payment to
Metabasis equal to US$6,000,000 within five (5) business days
after the Amendment Date. In consideration for such payment, the
parties hereby acknowledge and agree that no further payments shall
be due from Merck under Sections 5.3, 5.4, 5.5, 5.6, 5.7 and 5.8 of
the Collaboration Agreement.
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2.
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Sections 6.1,
6.2 and 6.4 of the Collaboration Agreement are hereby deleted in
their entirety.
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3.
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Section 7.2(c) of the Collaboration
Agreement is hereby deleted and is replaced in its entirety with
the following:
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“ (c) Metabasis
Patents. Metabasis shall have the sole right to control the
preparation, filing, prosecution and maintenance of Metabasis
Patents (except those that are also Product Patents) using patent
counsel of Metabasis’ choice. Metabasis shall give timely
notice to Merck of any decision not to file applications for, or to
cease prosecution and/or maintenance of, or not to continue to pay
the expenses of prosecution and/or maintenance of, any Metabasis
Patents on a country-by-country basis and, in such case, shall
permit Merck, at its sole discretion and expense, to file or to
continue prosecution or maintenance of such Metabasis Patents.
Notwithstanding the preceding provisions of this
Section 7.2(c), Merck shall not have the right to assume
responsibility for prosecution or maintenance of any
HepDirect/Carbonate Patents.”
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4.
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Section 7.2(d)(i) of the Collaboration
Agreement is hereby deleted and is replaced in its entirety with
the following:
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“ (i) Counsel for Joint
Patents. Merck will select patent counsel at its sole
discretion, either internal or external to Merck (the
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