AMENDMENT 1 to the INTELLECTUAL PROPERTY CROSS-LICENSE AGREEMENT
Exhibit 10.1
AMENDMENT 1
to the
INTELLECTUAL PROPERTY CROSS-LICENSE AGREEMENT
This Amendment 1, by and between SpinalCyte LLC, a Texas limited liability company (“SpinalCyte”), and FibroBiologics, Inc., a Delaware corporation (“FibroBiologics”), (“Amendment 1”), amends the Intellectual Property Cross-License Agreement dated May 17, 2021, entered into by and between SpinalCyte and FibroBiologics (the “License”), and is effective as of May 17, 2021 (“Effective Date”). FibroBiologics and SpinalCyte are each referred to individually as a “Party” and collectively as the “Parties.”
RECITALS
WHEREAS, FibroBiologics and SpinalCyte are party to the Patent Assignment Agreement dated May 17, 2021 (as amended, the “Assignment”);
WHEREAS, the Parties inadvertently omitted certain patents and patent applications from Exhibit A to the Assignment and amended the Assignment to transfer all right, title and interest in the omitted patents and patent applications to FibroBiologics for further development (the “Revisions”); and
WHEREAS, the Parties desire to update the schedules in the License to reflect the Revisions.
NOW, THEREFORE, in consideration of the foregoing, and for other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the Parties hereto agree as follows:
| 1. | Schedule 1 to the License is hereby amended to add the following patents and patent applications: |
| Docket Number | Country | Appl. No. | Date Filed | Patent No. | Title | |||||
| AMTK.P0024AU | Australia | TREATMENT OF CACHEXIA USING FIBROBLAST CELLS AND PRODUCTS THEREOF | ||||||||
| AMTK.P0024CA | Canada | TREATMENT OF CACHEXIA USING FIBROBLAST CELLS AND PRODUCTS THEREOF | ||||||||
| AMTK.P0024EP | European Patent Office | TREATMENT OF CACHEXIA USING FIBROBLAST CELLS AND PRODUCTS THEREOF | ||||||||
| AMTK.P0024JP | Japan | TREATMENT OF CACHEXIA USING FIBROBLAST CELLS AND PRODUCTS THEREOF | ||||||||
| AMTK.P0024US | United States of America | 17/309177 | 5/3/2021 | TREATMENT OF CACHEXIA USING FIBROBLAST CELLS AND PRODUCTS THEREOF |
| XXXX.X0000XX.Xx | United States of America | 62/755542 | 11/4/2018 | TREATMENT OF CACHEXIA USING FIBROBLAST CELLS AND PRODUCTS THEREOF | ||||||
| AMTK.P0024WO | Patent Cooperation Treaty | PCT/US2019/059678 | 11/4/2019 | TREATMENT OF CACHEXIA USING FIBROBLAST CELLS AND PRODUCTS THEREOF | ||||||
| AMTK.P0026AU | Australia | REGENERATIVE ABSCOPAL EFFECTS | ||||||||
| AMTK.P0026CA | Canada | REGENERATIVE ABSCOPAL EFFECTS | ||||||||
| AMTK.P0026EP | European Patent Office |
19881814.8 | REGENERATIVE ABSCOPAL EFFECTS | |||||||
| AMTK.P0026JP | Japan | REGENERATIVE ABSCOPAL EFFECTS | ||||||||
| AMTK.P0026US | United States of America |
17/309207 | 5/6/2021 | REGENERATIVE ABSCOPAL EFFECTS | ||||||
| XXXX.X0000XX.Xx | United States of America | 62/757764 | 11/9/2018 | REGENERATIVE ABSCOPAL EFFECTS | ||||||
| AMTK.P0026WO | Patent Cooperation Treaty |
PCT/US2019/060397 | 11/8/2019 | REGENERATIVE ABSCOPAL EFFECTS |
| 2. | Schedule 2 to the License is hereby amended to remove the following patents and patent applications: |
| Docket Number | Country | Appl. No. | Date Filed | Patent No. | Title | |||||
| AMTK.P0024AU | Australia | TREATMENT OF CACHEXIA USING FIBROBLAST CELLS AND PRODUCTS THEREOF | ||||||||
| AMTK.P0024CA | Canada | TREATMENT OF CACHEXIA USING FIBROBLAST CELLS AND PRODUCTS THEREOF | ||||||||
| AMTK.P0024EP | European Patent Office | TREATMENT OF CACHEXIA USING FIBROBLAST CELLS AND PRODUCTS THEREOF | ||||||||
| AMTK.P0024JP | Japan | TREATMENT OF CACHEXIA USING FIBROBLAST CELLS AND PRODUCTS THEREOF | ||||||||
| AMTK.P0024US | United States of America | 17/309177 | 5/3/2021 | TREATMENT OF CACHEXIA USING FIBROBLAST CELLS AND PRODUCTS THEREOF | ||||||
| XXXX.X0000XX.Xx | United States of America | 62/755542 | 11/4/2018 | TREATMENT OF CACHEXIA USING FIBROBLAST CELLS AND PRODUCTS THEREOF | ||||||
| AMTK.P0024WO | Patent Cooperation Treaty | PCT/US2019/059678 | 11/4/2019 | TREATMENT OF CACHEXIA USING FIBROBLAST CELLS AND PRODUCTS THEREOF | ||||||
| AMTK.P0026AU | Australia | REGENERATIVE ABSCOPAL EFFECTS | ||||||||
| AMTK.P0026CA | Canada | REGENERATIVE ABSCOPAL EFFECTS | ||||||||
| AMTK.P0026EP | European Patent Office |
19881814.8 | REGENERATIVE ABSCOPAL EFFECTS | |||||||
| AMTK.P0026JP | Japan | REGENERATIVE ABSCOPAL EFFECTS | ||||||||
| AMTK.P0026US | United States of America |
17/309207 | 5/6/2021 | REGENERATIVE ABSCOPAL EFFECTS | ||||||
| XXXX.X0000XX.Xx | United States of America | 62/757764 | 11/9/2018 | REGENERATIVE ABSCOPAL EFFECTS | ||||||
| AMTK.P0026WO | Patent Cooperation Treaty |
PCT/US2019/060397 | 11/8/2019 | REGENERATIVE ABSCOPAL EFFECTS |
All other terms and conditions of the License shall remain in full force and effect and no other changes are made as a result of this Amendment 1.
[Signature Page Follows]
IN WITNESS WHEREOF, the Parties hereto have caused this Amendment 1 to be executed by their duly authorized officers to be effective as of the Effective Date.
| /s/ Xxxx X’Xxxxxx | ||
| Name: | Xxxx X’Xxxxxx | |
| Title: | Chief Executive Officer | |
| Date: 8/5/2024 | ||
Spinalcyte, LLC
| /s/ Xxxx X’Xxxxxx | ||
| Name: | Xxxx X’Xxxxxx | |
| Title: | Manager | |
| Date: 8/5/2024 | ||
