MabVax Therapeutics Holdings, Inc. 11535 Sorrento Valley Road, Suite 400 San Diego, CA 92121
CONFIDENTIAL TREATMENT REQUESTED
00000 Xxxxxxxx Xxxxxx Xxxx, Xxxxx 000
Xxx Xxxxx, XX 00000
June
27, 2018
Memorial
Xxxxx-Xxxxxxxxx Institute for Cancer Research
0000
Xxxx Xxx.
Xxx
Xxxx, XX 00000
Re:
Side
Letter Agreement to the Exclusive License Agreement, dated June 30,
2008 and amended on May 11, 2011, between MabVax Therapeutics
Holdings, Inc. (“MabVax”) and Xxxxx-Xxxxxxxxx Institute
for Cancer Research (“SKI”) (the “SKI License
Agreement”)
Dear
Sir/Madame,
This
Side Letter Agreement relates to the SKI License Agreement
(“Side Letter”), under which SKI granted MabVax an
exclusive license under SKI’s rights in the invention that is
the subject of the disclosure entitled “Polyvalent Conjugate
Vaccines for Cancer” (SK#14491), and patent rights
thereon.
As we
have discussed, MabVax and Y-mAbs Therapeutics Inc.
(“YmAbs”) wish to enter into a Sublicense Agreement
(the “Sublicense Agreement”), in the form attached
hereto as Exhibit
A, pursuant to which MabVax would sublicense to YmAbs
certain of MabVax’s patent rights and know-how for
development and commercialization of products for the prevention or
treatment of neuroblastoma by means of administering a bi-valent
ganglioside vaccine (the “Field”), including certain
patent rights granted to MabVax pursuant to the SKI License
Agreement.
In this
Side Letter, MabVax and SKI agree to certain understandings with
respect to their respective rights and obligations under the SKI
License Agreement. Specifically, this Side Letter clarifies the
rights and obligations of MabVax and SKI with respect to
sublicensing and payments due to SKI under the SKI License
Agreement.
Capitalized
terms used, but not defined herein, shall have the respective
meanings ascribed to them in the SKI License Agreement, as the
context requires.
MabVax
and SKI hereby agree to the following:
1.
SKI
hereby consents to YmAbs as a sublicensee for Licensed Products in
the Field, effective upon the Effective Date of the Sublicense
Agreement.
2.
SKI
acknowledges and agrees that all amounts payable to SKI under
Article V of the SKI License Agreement arising out of YmAbs’
practice of the rights sublicensed to it pursuant to the Sublicense
Agreement, subject to paragraph 5 below, when and if it becomes
effective, shall be made directly by YmAbs to SKI, and YmAbs hereby
agrees to pay such amounts directly to SKI in accordance with the
terms of the SKI License Agreement, subject to paragraph 5
below.
Portions of this Exhibit, indicated by the xxxx
“[***],” were omitted and have been filed separately
with the Secretary of the Commission pursuant to the
Registrant’s application requesting confidential treatment
pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as
amended.
CONFIDENTIAL TREATMENT REQUESTED
3.
SKI
and MabVax agree that the amounts payable by YmAbs to SKI under the
Sublicense Agreement as described in paragraph 2 shall not be
treated as Non-Royalty Sublicense Revenue pursuant to Section
5.1(c) of the SKI License Agreement.
4.
Notwithstanding
the foregoing, MabVax agrees to pay SKI the following
amounts:
i.
[***]
ii.
[***]
iii.
[***]
iv.
[***]
v.
[***]
Payments for i, ii,
iii and iv shall be made to SKI within ten (10) days of the
Effective Date of the Sublicense Agreement. Payment for v shall be
made within ten (10) days of receipt of such consideration from
YmAbs.
The
amounts listed in 4.i – 4iv constitute payments that are owed
by MabVax to SKI relating to Licensed Products within the Field (as
defined in the Sublicense Agreement).
5.
SKI
and MabVax agree to amend the SKI License Agreement solely with
respect to YmAbs (or its sublicensees) so that the following shall
apply:
i.
YmAbs
(or its sublicensees) shall pay SKI the annual minimum royalty
payments due to SKI under Section 5.1(e) of the SKI License
Agreement, as follows:
a.
[***]
b.
[***]
c.
[***]
ii.
YmAbs
(or its sublicensees) shall [***];
iii.
any
payment terms of YmAbs (or its sublicensees) towards SKI shall be
due within a minimum of sixty (60) days from the relevant event
triggering the obligation to make such payment; and
iv.
the
rights of YmAbs (or its sublicensees) and the corresponding
obligations of SKI towards YmAbs (or its sublicensees) under
Section 7.5 of the SKI License Agreement shall continue to be in
force until at least [***] from the Effective Date of the
Sublicense Agreement.
6.
SKI
acknowledges and agrees that [***].
Portions of this Exhibit, indicated by the xxxx
“[***],” were omitted and have been filed separately
with the Secretary of the Commission pursuant to the
Registrant’s application requesting confidential treatment
pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as
amended.
CONFIDENTIAL TREATMENT REQUESTED
7.
SKI
and MabVax acknowledge and agree that this Side Letter shall be
deemed a contract for the benefit of third parties, namely YmAbs
(or its sublicensees), and that YmAbs (or its sublicensees) as a
third party beneficiary shall immediately acquire the rights that
affect any of YmAbs’ (or its sublicensees’) current or
future obligations towards SKI and/or MabVax under the Sublicense
Agreement and that YmAbs shall, furthermore, be entitled to enforce
any of the provisions hereof by all remedies available at law
and/or in equity.
If
the foregoing accurately sets forth the agreement of the parties
with respect to the subject hereof, kindly indicate your
acknowledgment, consent, and agreement thereto by countersigning
below and returning an executed copy of this Side Letter to the
undersigned.
Sincerely,
By:
/s/ J. Xxxxx
Xxxxxx
Name:
J. Xxxxx Xxxxxx
Title:
President and CEO
ACKNOWLEDGED, CONSENTED TO, AND AGREED:
Xxxxx-Xxxxxxxxx
Institute for Cancer Research
By: /s/
Xxxx X. Xxxxxxxxxx,
Ph.D.
Name:
Xxxx X. Xxxxxxxxxx, Ph.D.
Title:
Senior VP Research & Technology Management
ACKNOWLEDGED BY:
Y-mAbs
Therapeutics Inc.
By:
/s/ Xxxxxx
Xxx
Xxxxxx
Xxx
Chairman,
President
Portions of this Exhibit, indicated by the xxxx
“[***],” were omitted and have been filed separately
with the Secretary of the Commission pursuant to the
Registrant’s application requesting confidential treatment
pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as
amended.
CONFIDENTIAL TREATMENT REQUESTED
EXHIBIT A
SUBLICENSE AGREEMENT
|
|
Portions of this Exhibit, indicated by the xxxx
“[***],” were omitted and have been filed separately
with the Secretary of the Commission pursuant to the
Registrant’s application requesting confidential treatment
pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as
amended.
