SECOND AMENDMENT TO LICENSE AGREEMENT
Exhibit 10.21
SECOND AMENDMENT TO LICENSE AGREEMENT
This Second Amendment (the “Second Amendment”) to the License Agreement (the “Agreement”) dated July 4, 2012, by and among Clearside Biomedical, Inc., a Delaware corporation having a principal place of business at 0000 Xxx Xxxxxxxxxx Xxxx, Xxxxx 000, Xxxxxxxxxx, Xxxxxxx 00000 (“Clearside” or “COMPANY”), Emory University, a nonprofit Georgia corporation having offices located at 0000 Xxxxxxx Xxxx XX, 0xx Xxxxx, Mailstop 1599/001/ l AZ, Xxxxxxx, Xxxxxxx 00000 (“Emory”) and the Georgia Tech Research Corporation, a nonprofit corporation with offices located at offices located at 000 00xx Xxxxxx XX, Xxxxxxx, Xxxxxxx 00000-0000 (“GTRC” and together with Emory, “LICENSOR”) is effective this 12th day of December, 2016 (the “Second Amendment Effective Date”).
WHEREAS, the parties have made joint advances to the technology licensed pursuant to the Agreement;
WHEREAS the parties have made prior amendment to the Agreement on or around April 2, 2014 (the “First Amendment”) in order to include patents that may issue based on U.S. Provisional Patent Application Serial No. 61/918,992 (the “2014 Patent Application”) in “Licensed Patents”;
WHEREAS, the parties also desire to treat patents that may issue based on U.S. Provisional Patent Application Serial No. 62/364,470 (the “2016 Patent Application”) as Licensed Patents during the term of the Agreement; and
WHEREAS, in connection with such advances, the parties hereto wish to make certain changes to the Agreement.
NOW THEREFORE, in consideration of the promises, undertakings and covenants set forth in this First Amendment, the receipt and sufficiency of which are hereby agreed and acknowledged, the parties agree as follows:
|
|
1. |
Additional License Fee. As partial consideration for the license granted to COMPANY with respect to the 2014 Patent Application, COMPANY shall pay LICENSOR a license fee in the amount of fifteen thousand ($15,000) Dollars within thirty (30) days of the Second Amendment Effective Date. |
|
|
2. |
Amendment of Appendix B. Appendix B of the Agreement and the First Amendment shall be deleted and replaced with the Appendix B attached hereto. |
|
|
3. |
Miscellaneous. |
|
|
3.1. |
Defined Terms. Capitalized terms undefined herein shall have the meaning ascribed to them in the Agreement. |
|
|
3.2. |
No Other Amendment; Effectiveness. Except as expressly amended herein, the Agreement and the First Amendment remain in full force and effect according to their original terms. |
|
|
3.3. |
Governing Law. This Second Amendment shall be construed under and governed by the laws of the State of Georgia and the United States of America. |
|
|
3.4. |
Severability. All rights and restrictions contained herein may be exercised and shall be applicable and binding only to the extent that they do not violate any applicable laws and are intended to be limited to the extent necessary so that they will not render this Agreement illegal, invalid or unenforceable. If any provision or portion of any provision of this Agreement, not essential to the commercial purpose of this Agreement, shall be held to be illegal, invalid or unenforceable by a court of competent jurisdiction, it is the intention of the parties that the remaining provisions or portions thereof shall constitute their agreement with respect to the subject matter hereof, and all such remaining provisions, or portions thereof, shall remain in full force and effect. To the extent legally permissible, any illegal, invalid or unenforceable provision of this Agreement shall be replaced by a valid provision which shall implement the commercial purpose of the illegal, invalid, or unenforceable provision. |
|
|
3.5. |
Counterparts. This Second Amendment may be executed electronically and in counterparts, each of which is deemed an original, but all of which together shall constitute one and the same instrument. |
IN WITNESS WHEREOF, the parties have caused this Second Amendment to be executed by their duly authorized representatives as of the Second Amendment Effective Date.
|
EMORY UNIVERISTY |
|
GEORGIA TECH RESEARCH CORPORATION |
|
|
|
|
|
By: Xxxx Xxxxxx |
|
By: Xxxxxx XxxXxxxxxx |
|
Name: /s/Xxxx Xxxxxx |
|
Name: /s/Xxxxxx XxxXxxxxxx |
|
Title: Director, XXX |
|
Title: Sr. Director |
|
Date: December 19, 2016 |
|
Date: December 19, 2016 |
|
|
|
|
|
|
|
By: Xxxxx X. Xxxxxx |
|
|
|
Name: /s/Xxxxx X. Xxxxxx |
|
|
|
Title: General Manager |
|
|
|
Date: December 19, 2016 |
|
|
|
|
|
|
|
|
|
By: Xxxx XxXxxxxx |
|
|
|
Name: /s/Xxxx XxXxxxx |
|
|
|
Title: VP Business Development |
|
|
|
Date: December 19, 0000 |
|
|
|
|
|
|
LICENSED PATENTS
Licensor solely owned
|
Application No. |
Country |
File Date |
Patent Number |
Issue Date |
|
11/743,535 |
US |
5/2/2007 |
7,918,814 |
4/5/2011 |
|
PCT/US2007/068055 |
PCT |
5/2/2007 |
|
|
|
12/767,768 |
US |
5/2/2007 |
8,197,435 |
6/12/2012 |
|
61/172,409 |
US |
4/24/2009 |
|
|
|
PCT/US2011/033987 |
PCT |
4/26/2011 |
|
|
|
13/447,246 |
US |
5/2/2007 |
8,808,225 |
8/19/2014 |
|
13/453,407 |
US |
5/2/2007 |
8,636,713 |
1/28/2014 |
|
0000000000 |
AU |
4/26/2011 |
0000000000 |
2/18/2016 |
|
BR 11 2012 027416-3 |
BR |
4/26/2011 |
|
|
|
2,797,258 |
CA |
4/26/2011 |
|
|
|
201180024176.5 |
CN |
4/26/2011 |
|
|
|
11777924.9 |
EP |
4/26/2011 |
|
|
|
10099/DELNP/2012 |
IN |
4/26/2011 |
|
|
|
222638 |
IL |
4/26/2011 |
|
|
|
2013-508168 |
JP |
4/26/2011 |
5996526 |
9/2/2016 |
|
MX/a/2012/012495 |
MX |
4/26/2011 |
|
|
|
603185 |
NZ |
4/26/2011 |
603185 |
8/1/2014 |
|
2012147341 |
RU |
4/26/2011 |
|
|
|
201207910-9 |
SG |
4/26/2011 |
185034 |
4/27/2015 |
|
2012/08069 |
ZA |
4/26/2011 |
|
|
|
701069 |
NZ |
4/26/2011 |
701069 |
8/30/2016 |
|
14/136,657 |
US |
5/2/2007 |
|
|
|
2014/00616 |
ZA |
4/26/2011 |
2014/00616 |
10/23/2015 |
|
623752 |
NZ |
4/26/2011 |
|
|
|
2015103031720 |
CN |
4/26/2011 |
|
|
|
2016-068174 |
JP |
3/30/2016 |
|
|
|
2015230874 |
AU |
10/01/2015 |
|
|
|
Application No. |
Country |
File Date |
Patent Number |
Issue Date |
|
61/918,992 |
US |
12/20/2013 |
|
|
|
PCT/US2014/071623 |
PCT |
12/19/2014 |
|
|
|
14825067.3 |
EP |
6/9/2016 |
|
|
|
15/103,908 |
US |
6/13/2016 |
|
|
|
2,933,900 |
CA |
12/19/2014 |
|
|
2016 Patent Application
|
Application No. |
Country |
File Date |
Patent Number |
Issue Date |
|
62/364,470 |
US |
7/20/2016 |
|
|
Jointly Owned Patents
|
Application No. |
Country |
File Date |
Patent Number |
Issue Date |
|
61/693,542 |
US |
8/27/2012 |
|
|
|
61/754,495 |
US |
1/18/2013 |
|
|
|
61/784,817 |
US |
3/14/2013 |
|
|
|
PCT/US2013/056863 |
PCT |
8/27/2013 |
|
|
|
2,882,184 |
CA |
8/27/2013 |
|
|
|
13833318.2 |
EP |
8/27/2013 |
|
|
|
14/424,685 |
US |
8/27/2013 |
|
|
