Contract
Exhibit 10.12.1
***Text Omitted and Filed Separately with the Securities and Exchange
Commission. Confidential Treatment Requested Under
17 C.F.R. §200.80(b)(4)
This SECOND AMENDMENT, effective as of July 25, 2018 (the “SECOND AMENDMENT EFFECTIVE DATE”), amends the Exclusive Patent License Agreement dated January 28, 2016, and First Amendment dated December 12, 2017 (the “LICENSE”), between the Xxxxxxxxx Institute for Biomedical Research (“XXXXXXXXX”) and Rubius Therapeutics, Inc. (“COMPANY”).
WHEREAS, XXXXXXXXX and COMPANY wish to modify Appendix A of the LICENSE;
WHEREAS, XXXXXXXXX is owner of certain SECOND AMENDMENT PATENT RIGHTS, as later defined herein, relating to [***], “[***]”, by [***];
WHEREAS, XXXXXXXXX desires to have the PATENT RIGHTS developed and commercialized to benefit the public, and XXXXXXXXX is willing to grant a license thereunder;
WHEREAS, COMPANY desires to add such SECOND AMENDMENT PATENT RIGHTS to the LICENSE.
NOW, THEREFORE, XXXXXXXXX and COMPANY hereby agree as follows:
Capitalized terms used herein and not defined herein shall have the respective meanings ascribed to such terms in the LICENSE.
1. The following (hereinafter the “SECOND AMENDMENT PATENT RIGHTS”) is included under the definition of PATENT RIGHTS and is added to Appendix A of the LICENSE:
[***].
Appendix A of the LICENSE is deleted in its entirety and replaced with the Appendix A of this SECOND AMENDMENT, attached hereto.
2. For the avoidance of doubt, per Section 6.3 of the LICENSE, payment of all fees and costs, including attorneys’ fees relating to the filing, prosecution, and maintenance of the SECOND AMENDMENT PATENT RIGHTS shall be the responsibility of COMPANY, whether such amounts were incurred before or after the SECOND AMENDMENT EFFECTIVE DATE. XXXXXXXXX has incurred $[***] for such patent-related fees and costs as of [***].
3. The following is added to Section 10.1 of the LICENSE:
10.1 XXXXXXXXX represents that as of the SECOND AMENDMENT EFFECTIVE DATE, it is the owner of all right, title, and interest in and to [***] of the PATENT RIGHTS, and it has the lawful right to grant the rights as set forth in this Agreement.
***Confidential Treatment Requested***ACTIVE/99026277.1
***Text Omitted and Filed Separately with the Securities and Exchange
Commission. Confidential Treatment Requested Under
17 C.F.R. §200.80(b)(4)
4. As consideration for this SECOND AMENDMENT, COMPANY shall pay XXXXXXXXX a case addition fee of [***] Dollars ($[***]) within [***] of the SECOND AMENDMENT EFFECTIVE DATE. This payment is nonrefundable.
5. The LICENSE, as amended hereby, is hereby ratified and confirmed in all respects and shall continue in full force and effect. The LICENSE will, together with this SECOND AMENDMENT, be read and construed as a single instrument. All other terms and conditions of the LICENSE are confirmed and remain in full force and effect. This SECOND AMENDMENT shall be binding upon, and shall inure to the benefit of, the parties hereto and their respective successors and assigns.
Signatures follow on the next page.
2
***Confidential Treatment Requested***
***Text Omitted and Filed Separately with the Securities and Exchange
Commission. Confidential Treatment Requested Under
17 C.F.R. §200.80(b)(4)
IN WITNESS WHEREOF, the parties have caused this Agreement to be executed by their duly authorized representatives.
|
For XXXXXXXXX |
|
For COMPANY: |
||
|
|
|
|
||
|
|
|
|
||
|
By: |
/s/ Xxxxx XxXxxxx |
|
By: |
/s/ Torben Straight Xxxxxx |
|
|
|
|
|
|
|
Name: |
Xxxxx XxXxxxx |
|
Name: |
Torben Straight Xxxxxx |
|
|
|
|
|
|
|
Title: |
Director of Intellectual Property & Sponsored Programs |
|
Title: |
President |
|
|
|
|
|
|
|
Date: |
July 31, 2018 |
|
Date: |
July 25, 2018 |
***Confidential Treatment Requested***ACTIVE/99026277.1
***Text Omitted and Filed Separately with the Securities and Exchange
Commission. Confidential Treatment Requested Under
17 C.F.R. §200.80(b)(4)
APPENDIX A
List of Patent Applications and Patents
[***].
***Confidential Treatment Requested***ACTIVE/99026277.1
