NINTH AMENDMENT TO THE EXCLUSIVE PATENT LICENSE AGREEMENT (MGH Cases No 01416, 22497, 24644) Agreement No. 2022-3833
Exhibit 10.1
NINTH
AMENDMENT TO THE
EXCLUSIVE PATENT LICENSE AGREEMENT
(MGH Cases No 01416, 22497, 24644)
Agreement No. 2022-3833
This Ninth Amendment (“Ninth Amendment”), effective May 30, 2023 (“Ninth Amendment Effective Date”), to the Exclusive Patent License Agreement is by and between The General Hospital Corporation, d/b/a Massachusetts General Hospital, a non-for-profit Massachusetts corporation, with a principal place of business at 00 Xxxxx Xxxxxx, Xxxxxx, Xxxxxxxxxxxxx 00000 (“Hospital”) and Vicapsys, Inc with its principal place of business located at 0000 Xxxxxxx Xxxx, Xxxxxx, Xxxxxxx 00000 (“Company”).
WHEREAS, Hospital and Company are Parties to an Exclusive Patent License Agreement, MGH Agreement No. A215841, effective as of May 8, 2013, as previously amended effective as of January 22, 2014, May 6, 2014, August 25, 2014, December 1, 2014, October 27, 2016, February 6, 2017, December 22, 2017, and as further amended on March 14, 2022 (the “Agreement”);
WHEREAS, Company desires to amend the Agreement in order to add new Patent Rights (Section 1.11) and to update the Diligence Requirements (Section 3.1);
Now, THEREFORE, for good and valuable consideration, the sufficiency of which is hereby acknowledged, the Parties hereto agree as follows:
| 1. | The Agreement is hereby amended by deleting Section 1.11 in its entirety and inserting the following language in its place: |
1.11 “Patent Rights” shall mean, inclusively, (i) the PCT Patent Application number PCT/US00/09678, filed on April 7, 2000, with the MGH Case Number 01416 (ii) the PCT Patent Application number PCT/US2013/068916 filed on November 7, 2013 with the MGH Case Number 22497 and (iii) the PCT patent application PCT/US2018/051950 filed on September 20, 2018 with the MGH Case Number 24644, and/or the equivalent of such applications including any division, continuation (but not including continuation-in-part) , US and foreign patent application, Letters Patent, and/or the equivalent thereof issuing thereon, and/or reissue, reexamination or extension thereof, as may be further described in Appendix A-2.”
| 2. | Section 3.1 of the Agreement is hereby amended by adding the following Diligence Requirement for MGH 24644 Patent Rights: |
“Within one (1) year of the Ninth Amendment Effective Date Company shall submit a research and development plan for the Patent Rights associated with MGH 24644 with mutually acceptable Diligence Requirements to be added by amendment to the Agreement for development of the Product or Process for the therapy and/ or prophylaxis of a human disorder in the License Field.”
| -1- |
| 3. | Section 4.1 is hereby amended by adding the following sentence at the end of the Section: |
“As of the Ninth Amendment Effective Date, Hospital has incurred approximately three thousand nine hundred and fifty-six dollars ($3,956) in Patent Costs towards the Patent Rights for MGH 24644, which amount Company shall pay to Hospital by July 31, 2023.”
| 4. | Appendix A-1 of the Agreement is hereby amended by deleting it entirely and replacing it with the attached Appendix A-2. |
| 5. | In consideration of the addition of Patent Rights in Section 1.11, Company shall pay Hospital a non-refundable one-time license fee of two thousand dollars ($2,000) which shall be due upon execution of this Ninth Amendment. |
| 6. | Effect of Amendment. Except as otherwise amended hereby, the Agreement and all of its terms and conditions are hereby ratified and confirmed in all respects and remain in full force and effect. |
| 7. | Headings. All headings are for convenience only and shall not affect the meaning of any provision of this Agreement. |
| 8. | Execution in Counterparts; Facsimile or Electronic Transmission. This Ninth Amendment may be executed in counterparts, and by facsimile or electronic transmission. This Ninth Amendment may be executed electronically/digitally in compliance with the Massachusetts Uniform Electronic Transactions Act (MUETA) Mass. Gen. Laws ch. 110G and/or The Electronic Signatures In Global And National Commerce Act (ESIGN) 15 USC ch. 96. Persons signing this Ninth Amendment agree that, if used, electronic/digital signatures are intended to authenticate this writing and to have the same force and effect as the use of manual signatures. |
IN WITNESS WHEREOF, the Parties have caused this Ninth Amendment to be executed by their duly authorized representatives as of the Ninth Amendment Effective Date first written above.
| THE GENERAL HOSPITAL CORPORATION | Vicapsys Inc. | |||
| BY: | /s/ Xxxxxx Xxxxx | BY: | /s/ Xxxxxxxx Xxxx | |
| Name: | Xxxxxx Xxxxx | Name: | Xxxxxxxx Xxxx | |
| Title: | Senior Director, BD&L | Title: | CEO | |
| Date: | May 31, 2023 | Date: | May 31, 2023 | |
| -2- |
DESCRIPTION OF PATENT RIGHTS
| Information | Country | Type | Application Number | Patent Number | Application Date | Status | ||||||
| 01416.01 | US | Provisional | 60/128,272 | None | Apr 8, 1999 | Converted | ||||||
| 01416.02 | US | Provisional | 60/168,952 | None | Dec 3, 1999 | Converted | ||||||
| 01416.03 | WIPO | PCT | PCT/US00/09678 | None | Apr 7, 2000 | Nationalized | ||||||
| 01416.07 | EPO | PCT | 00922067.4 | 1169348 | Apr 7, 2000 | Issued | ||||||
| 01416.12 | France | PCT | 00922067.4 | 1169348 | Apr 7, 2000 | Issued | ||||||
| 01416.13 | Germany | PCT | 00922067.4 | 1169348 | Apr 7, 2000 | Issued | ||||||
| 01416.14 | Ireland | PCT | 00922067.4 | 1169348 | Apr 7, 2000 | Issued | ||||||
| 01416.15 | Switzerland | PCT | 00922067.4 | 1169348 | Apr 7, 2000 | Issued | ||||||
| 01416.16 | UK | PCT | 00922067.4 | 1169348 | Apr 7, 2000 | Issued | ||||||
| 01416.17 | Sweden | PCT | 00922067.4 | 1169348 | Apr 7, 2000 | Issued | ||||||
| 01416.04 | US | Utility | 09/546,153 | 6,448,054 | Apr 7, 2000 | Issued | ||||||
| 01416.08 | US | Divisional | 10/191,988 | 7,141,363 | Jul 9, 2002 | Issued | ||||||
| 01416.11 | US | Divisional | 11/407,477 | 7,775,469 | Apr 20, 2006 | Issued | ||||||
| 22497.01 | WIPO | PCT | PCT/US2013/068916 | None | Nov 7, 2013 | Nationalized | ||||||
| 22497.09 | Russia | PCT | 2016120644 | 2665359 | Nov 7, 2013 | Issued | ||||||
| 22497.10 | Ukraine | PCT | 2016 06075 | None | Nov 7, 2013 | Pending | ||||||
| 22497.11 | Japan | PCT | 2016-527332 | 6538042 | Nov 7, 2013 | Issued | ||||||
| 22497.13 | Australia | PCT | 2013404939 | 2013404939 | Nov 7, 2013 | Issued | ||||||
| 22497.15 | EPO | PCT | 13896941.5 | 3065701 | Nov 7, 2013 | Issued | ||||||
| 22497-23 | Sweden | PCT | 13896941.5 | 3065701 | Nov 7, 2013 | Issued | ||||||
| 22497-24 | Norway | PCT | 13896941.5 | 3065701 | Nov 7, 2013 | Issued | ||||||
| 22497-25 | Netherlands | PCT | 13896941.5 | 3065701 | Nov 7, 2013 | Issued | ||||||
| 22497-26 | UK | PCT | 13896941.5 | 3065701 | Nov 7, 2013 | Issued | ||||||
| 22497-27 | Germany | PCT | 13896941.5 | 3065701 | Nov 7, 2013 | Issued | ||||||
| 22497-28 | France | PCT | 13896941.5 | 3065701 | Nov 7, 2013 | Issued | ||||||
| 22497.02 | US | PCT | 15/019,449 | 9,775,816 | Feb 9, 2016 | Issued | ||||||
| 22497.20 | US | Continuation | 15/179,567 | 9,849,094 | Jun 10, 2016 | Issued | ||||||
| 22497.21 | US | Continuation | 15/590,587 | 9,849,159 | May 9, 2017 | Issued | ||||||
| 22497.22 | US | Divisional | 15/813,917 | 10,580,262 | Nov 15, 2017 | Issued | ||||||
| 24644.01 | US | Provisional | 62/561,058 | None | Sep 20, 2017 | Converted | ||||||
| 24644.02 | WIPO | PCT | PCT/US2018/051950 | None | Sep 20, 2018 | Nationalized | ||||||
| 24644-04 | EPO | PCT | 18857678.9 | None | Sep 20, 2018 | Pending | ||||||
| 24644-03 | US | PCT | 16/648,569 | None | Mar 18, 2020 | Pending |
| -3- |
