Side Agreement No. 2 relating to the exclusive agreement between Surrozen Operating, Inc. and the Board of Trustees of the Leland Stanford Junior University, dated March 23, 2016, as amended
Exhibit 10.2
Side Agreement No. 2 relating to the exclusive agreement between Surrozen Operating, Inc. and the Board of Trustees of the Xxxxxx Xxxxxxxx Junior University, dated March 23, 2016, as amended
THE BOARD OF TRUSTEES OF THE XXXXXX XXXXXXXX JUNIOR UNIVERSITY
Office of Technology Licensing
000 Xxxxxxxx Xxxxxx, 0xx Xxxxx
Xxxxxxx Xxxx, XX 00000
Attention: Xxxxxx Xxxxxx, Director, Licensing and Strategic Alliances, Life Sciences
March 24, 2023
Re: Side Agreement relating to “Stanford License Agreement” with respect to sublicensing consideration received by Surrozen pursuant to the “BI Sublicense”
Dear Xxxxxx,
Reference is hereby made to a certain License Agreement effective as of March 23, 2016, as amended on July 5, 2016, October 7, 2016, January 19, 2021, and September 29, 2022 (the “Stanford License Agreement”), by and between THE BOARD OF TRUSTEES OF THE XXXXXX XXXXXXXX JUNIOR UNIVERSITY, an institution of higher education having powers under the laws of the State of California, having a principal office at 000 Xxxx Xxxxxxxx Xxx, Xxxxxxxx, XX 00000-2004 (“Stanford”) and SURROZEN Operating, INC., a corporation organized and existing under the laws of Delaware, having its registered office at 000 Xxxxxx Xxxxx Xxxx., Xxxxx 000, Xxxxx Xxx Xxxxxxxxx, XX 00000 (“Surrozen”).
WHEREAS, pursuant to the Stanford License Agreement, Stanford has granted Surrozen an exclusive license under the Licensed Patent in the Licensed Field of Use to make, have made, use, import, offer to sell and sell Licensed Products in the Licensed Territory and a non-exclusive license under the Technology to make, have made, use, import, offer to sell and sell Licensed Products in the Licensed Territory (the “Stanford Rights”).
WHEREAS, Surrozen and Boehringer Ingelheim International GmbH, a German corporation, having an address at Xxxxxx Xxx. 000, 00000 Xxxxxxxxx xx Xxxxx, Xxxxxxx (“BI”) entered into a Collaboration and License Agreement effective as of September 30, 2022 (the “CLA”) under which Surrozen granted to BI a sublicense of the Stanford Rights with respect to the research, development, and commercialization of certain compounds and products (the “BI Sublicense”).
[*****]
WHEREAS, pursuant to the Stanford License Agreement, Surrozen is obligated to pay to Stanford a portion of the Nonroyalty Sublicensing Consideration received under the CLA for granting the BI Sublicense, which is required to be reasonably allocated to reflect the relative value of the
CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY [*****], HAS BEEN OMITTED BECAUSE SURROZEN, INC. HAS DETERMINED THE INFORMATION (I) IS NOT MATERIAL AND (II) WOULD LIKELY CAUSE COMPETITIVE HARM TO SURROZEN, INC. IF PUBLICLY DISCLOSED.
Stanford Rights as compared to the other intellectual property rights granted by Xxxxxxxx to BI under the CLA. Xxxxxxxx and Stanford have discussed and agreed upon such allocation.
NOW THEREFORE, Xxxxxxxx and Stanford hereby enter into this side agreement (“Side Agreement No. 2”) to reflect the parties’ allocation agreement and its effect on Surrozen’s obligation to pay to Stanford a portion of Nonroyalty Sublicensing Consideration received by Surrozen under the CLA. Unless otherwise expressly stated in this Side Agreement No. 2, all provisions of the Stanford License Agreement remain unchanged and in full force and effect. Unless defined in this Side Agreement No. 2 or otherwise indicated, all capitalized terms shall have the meanings assigned to them in the Stanford License Agreement.
Stanford and Xxxxxxxx, each intending to be legally bound by this Side Agreement No. 2, hereby agree to the following:
1) With respect to Nonroyalty Sublicensing Consideration received by Surrozen from BI under the CLA, in lieu of the payment obligation set forth in Section 4.6 of the Stanford License Agreement, Surrozen will pay to Stanford a portion of such Nonroyalty Sublicensing Consideration as follows:
a) [*****]; or
b) [*****].
[Signature Page Follows]
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IN WITNESS WHEREOF, the parties have executed this Side Agreement No. 2 by their duly authorized representatives on the date first written above.
THE BOARD OF TRUSTEES OF THE XXXXXX XXXXXXXX JUNIOR UNIVERSITY
By: /s/ Xxxxxx Xxxxxx
Name: Xxxxxx Xxxxxx
Title: Director, Licensing and Strategic Alliances, Life Sciences
SURROZEN Operating, INC.
By: /s/ Xxxxxxx Xxxxxxxx
Name: Xxxxxxx Xxxxxxxx
Title: Chief Financial Officer
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