SECOND AMENDMENT TO EXCLUSIVE LICENSE AGREEMENT
Exhibit 10.4
SECOND
AMENDMENT TO EXCLUSIVE LICENSE AGREEMENT
This
Second Amendment ("Second Amendment"),
effective as of May 7, 2017 ("Effective Date"), is
entered into by and between Yissum Research Development Company of
the Hebrew University of Jerusalem, an Israeli corporation with its
principal office at Hi-Tech Park, Xxxxxx X. Xxxxx Campus,
Givat-Ram, Jerusalem X.X. Xxx 00000, Xxxxxxxxx 00000 Israel
("YISSUM"),
and Edesa Biotech Inc., an Ontario corporation with its principal
office at 000 Xxx Xxxxx, Xxxxxxx, Xxxxxxx, X0X 0X0 ("EDESA"). YISSUM and
EDESA may be referred to herein individually as a "Party" or collectively
as the "Parties". Reference to
a Party shall be deemed to include that Party's
Affiliates.
RECITALS:
A.
The Parties
executed a license agreement on June 29, 2016, as amended on April
3, 2017 (collectively, the "License Agreement")
pursuant to which Yissum granted EDESA an exclusive, worldwide
license to use the Licensed Technology for the Development and
Commercialization of the Product in the Field in the Territory;
and
B.
Pursuant to the
License Agreement, the Licensed Technology did not include the
European Patents listed in Appendix B/3 annexed to the License
Agreement (the "European B/3 Patents")
since at that time they were not fully assigned to YISSUM; but
YISSUM had agreed to include them in the Licensed Technology upon
full assignment of such patents to YISSUM.
C.
Pursuant to the
License Agreement, EDESA agreed to pay fifty percent (50%) of all
costs associated with the Patent Management of the European B/3
Patents until YISSUM had received full assignment of such patents,
at which point, EDESA would be responsible for one hundred percent
(100%) of all costs associated with the Patent Management of the
B/3 Patents.
D.
The Parties wish to
amend Appendix Band certain sections of the License Agreement with
respect to the B/3 Patents, as well as other patents.
In
consideration of the foregoing premises and the mutual covenants
herein contained, the Parties hereby agree as follows:
1.
Interpretation and
Definitions
1.1.
The preamble and
appendices annexed to this First Amendment constitute an integral
part hereof and shall be read jointly with its terms and
conditions.
1.2.
In this Amendment,
unless otherwise required or indicated by the context, the singular
shall include the plural and vice-versa, the masculine gender shall
include the female gender, and the use of the word "or" shall mean
"and/or".
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1.3.
The headings of the
sections in this Amendment are for the sake of convenience only and
shall not serve in the interpretation of the
Agreement.
1.4.
In this Amendment, capitalized terms shall
have the meanings set forth in the License Agreement, unless
provided otherwise herein.
The
Parties acknowledge that EP patent No. 2706988, entitled: LIPOSOMES
COMPRISING POLYMER-CONJUGATED LIPIDS AND RELATED USES
(Yissum's Ref.
4097-04) has been fully assigned to YISSUM as of March 26, 2017
(the "Assignment
Date") and shall be included in the Licensed Technology, and
further acknowledge that by reason of such assignment, pursuant to
section 11.3 of the License Agreement, EDESA is responsible for one
hundred percent (100%) of all costs associated with the Patent
Management of this patent as of the Assignment Date.
2.
EP Patent No. No.
2429532: LIPID-POLYMER CONJUGATES, THEIR PREPARATION AND USES
THEREOF (Yissum's Ref: 3860-04), which was part of the European B/3
Patents has been abandoned and therefore is removed from the
Licensed Technology effective retroactively as of June 29,
2016.
3.
The Parties have
agreed to update the version of Appendix B annexed to the License
Agreement by replacing it in its entirety by the new Appendix B
attached to this Second Amendment.
4.
This Second
Amendment shall be read together with the License Agreement and
shall represent the complete current understanding between the
Parties hereto with respect to the subject matter
hereof.
5.
Unless otherwise
specifically stated in this Second Amendment, all of the terms and
conditions set forth in the Agreement remain in full force and
effect. In any event of a conflict between and conditions contained
in this Second Amendment and the License Agreement, the terms
contained in this Second Amendment shall govern.
6.
This Second
Amendment may be executed in counterparts and executed signature
pages may be sent by fax and e-mail via PDF, all of which taken
together shall be deemed to constitute one and the same
instrument.
[Signature on the next page]
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IN
WITNESS
WHEREOF, the parties have caused this First Amendment to be
executed by their duly authorized representatives as of the
Effective Date.
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YISSUM
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EDESA
BIOTECH INC.
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By:
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/s/
Yaron Danlely
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By:
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/s/
Xxxxxxx Xxxxxxxx
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Name:
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Yaron
Danlely
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Name:
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Xxxxxxx
Xxxxxxxx
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Title:
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CEO of
Yissum
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Title:
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Director
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By:
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/s/
Xxxxxx Xxxxxx
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Name:
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Xxxxxx
Xxxxxx, Ph.D.
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Title:
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VP
Licensing, Pharmaceuticals
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Xxxx.
Xxxxxx Acknowledgment
/s/ Xxxx Xxxxxx
3
AppendixB
(Patents)
(1) Licensed
Composition of Matter Patents:
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Patent/Application
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Title
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Yissum
re1
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us 8,865,878
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Use of
Lipid Conjugates In the Treatment of Disease
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2510-51
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CA
2,558,416
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Use of
Lipid Conjugates In the Treatment of Disease
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2510-18
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EP
1758595
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Use of
Lipid Conjugates In the Treatment of Disease
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2510-19
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us 8,383,787:
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Use of
Lipid Conjugates In the Treatment of Disease
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2510-60
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us 2014-0199241
us 14/115,869
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Liposomes
comprising polymer- Conjugated lipids and uses
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4097-08
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CA
2834918
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Liposomes
comprising polymer- Conjugated lipids and uses
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4097-06
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us 2015-0119567
us 14/525111
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Lipid-polymer
conjugates, their preparation and uses thereof
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3860-09
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CA
2761590
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Lipid-polymer
conjugates, their preparation and uses thereof
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3860-08
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EP
2706988
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Liposomes
comprising polymer-Conjugated lipids and uses
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4097-04
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(2) Method of Use
or Other patents.
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Patent/Application
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Title
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Yissum
ref.
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us 7,772,196
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Use of
Lipid Conjugates In the Treatment of Disease
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2510-14
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us 8,901,103
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Use of
Lipid Conjugates In the Treatment of Disease
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2510-44
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AU
2011201154
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Use of
Lipid Conjugates In the Treatment of Disease
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2507-AU
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