Exhibit 10.40
CERTAIN IDENTIFIED INFORMATION HAS BEEN EXCLUDED FROM THIS EXHIBIT BECAUSE IT IS BOTH (I) NOT MATERIAL AND (II) THE TYPE OF INFORMATION THAT THE REGISTRANT CUSTOMARILY AND ACTUALLY TREATS AS PRIVATE AND CONFIDENTIAL. SUCH EXCLUDED INFORMATION HAS BEEN MARKED WITH “[***]”.
Confidential DFCI Agreement No. [***]
LICENSE AGREEMENT
Title of Agreement: MICA/B Exclusive License Agreement
Effective Date: April 9, 2020
Parties: Licensor
Dana-Farber Cancer Institute, Inc.
450 Brookline Ave.
Boston, MA 02215
Licensee
Fate Therapeutics, Inc.
3535 General Atomics Court, Suite 200
San Diego, CA 92121
DFCI Agreement No.: [***]
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LICENSE AGREEMENT
This Exclusive License Agreement, effective as of April 9, 2020 (“Effective Date”), is between the Dana-Farber Cancer Institute, Inc., a Massachusetts non-profit organization having a principal place of business at 450 Brookline Ave., Boston, MA 02215 (“DFCI”) and Fate Therapeutics, Inc., a Delaware corporation having a principal place of business at 3535 General Atomics Court, Suite 200, San Diego, CA 92121 (“Licensee”). Each of DFCI and Licensee may be referred to herein as a “Party” or collectively as the “Parties.”
Background
WHEREAS, the Inventors, as later defined, have reported certain inventions to DFCI, identified as DFCI
case number [***], “Compositions and Methods for Inhibition of [***] Shedding”.
WHEREAS, DFCI desires to promote the public interest by granting a license to the Patent Rights as later defined;
WHEREAS, Licensee has represented to DFCI that it has the capabilities and/or experience to develop, produce, market and sell products utilizing technology that is similar to the technology that is the subject of this Agreement and has the financial capacity and the strategic commitment to facilitate the transfer of the technology for the public interest; and
WHEREAS, Licensee desires to obtain a license to DFCI’s rights and DFCI is willing to grant a license upon the terms and conditions of this Agreement.
NOW, THEREFORE, DFCI and Licensee therefore agree as follows.
The following terms set forth in this ARTICLE I have the meanings set forth below:
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shall not, in any such case, result in Net Sales or constitute a First Commercial Sale of such Royalty Bearing Product if Licensee, its Affiliates or Sublicensees do not receive compensation for such transfers or dispositions in excess of Licensee’s, its Affiliates’ or Sublicensees’ cost for such Royalty Bearing Product.
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With respect to each Royalty Bearing Product, Licensee shall make the following non-creditable, non-refundable developmental milestone payments to DFCI within [***] days of the occurrence of the following events, whether Licensee, an Affiliate, Sublicensee, a permitted assignee, or a successor achieves the events. For the avoidance of doubt, all development milestone payments are payable [***].
Development Milestones for each Royalty Bearing Product | |
Development Milestone Event | Development Milestone Payment |
[***] | $[***] |
[***] | $[***] |
[***] | $[***] |
[***] | $[***] |
[***] | $[***] |
[***] | $[***] |
With respect to each Royalty Bearing Product, Licensee shall make the following non-creditable, non-refundable commercialization milestone payments to DFCI within [***] days of the occurrence of the following events, whether Licensee, an Affiliate, Sublicensee,
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a permitted assignee, or a successor achieves the events. For the avoidance of doubt, all commercialization milestone payments are payable [***].
Commercialization Milestones for each Royalty Bearing Product | |
Commercialization Milestone Event | Commercialization Milestone Payment |
[***] | $[***] |
[***] | $[***] |
[***] | $[***] |
With respect to each Royalty Bearing Product in the Field of Use in the Territory, Licensee will make the following non-creditable, non-refundable sales milestone payments to DFCI within [***] days [***], regardless of whether [***]. Each sales milestone payment will be made whether the [***]. For the avoidance of doubt, all sales milestone payments are non-refundable and non-creditable, and payable [***].
Sales Milestones for each Royalty Bearing Product | |
Sales Milestone Event | Sales Milestone Payment |
[***] | $[***] |
[***] | $[***] |
[***] | $[***] |
[***]
Notwithstanding anything to the contrary in this Agreement, a Royalty Bearing Product that has commenced its Royalty Term in a country shall be deemed a “Royalty Bearing Product” in such country until [***].
If (A) Licensee or any of its Affiliates consider it necessary, on advice of counsel, to obtain a license from any Third Party in order to avoid infringing such Third Party’s intellectual property in the course of the development, manufacture or commercialization of a Royalty Bearing Product (any such license, a “Third Party License”), and (B) the Third Party License requires Licensee or its Affiliates to pay to such Third Party a royalty calculated as a percentage of Licensee’s or its Affiliates’ or any of their Sublicensees’ sales or profits ( “Third Party Royalties”), then in such case (A) and (B), Licensee may deduct [***] of the amount of Third Party Royalties actually paid by Licensee or its Affiliates to such Third Party(ies) with respect to any Royalty Bearing Product from running royalties payable to DFCI under this Agreement with respect to such Royalty Bearing Product; provided that, in no event shall payments to DFCI be reduced pursuant to this paragraph by more than [***] of the payments that would otherwise be payable pursuant to Section 3.1(g) for such Royalty Bearing Product.
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[***]
[***]
[***]
If multiple Royalty Bearing Products are covered by the license granted under this Agreement, Licensee shall [***]. Following receipt of such report, DFCI shall invoice Licensee for the royalties, if any, due and payable to DFCI under Section 3.1(g) and Licensee shall submit payment for amounts due under such invoice within [***] days of invoice receipt. All royalty reports provided to DFCI shall be deemed Confidential Information of Licensee.
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be paid by check payable to Dana-Farber Cancer Institute and sent to:
[***]
450 Brookline Ave.
BP335 Boston, MA 02215
or be paid by wire transfer, using the following information:
[***]
or be paid by wire transfers using ACH/EFT:
[***]
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Notwithstanding anything to the contrary in this Agreement, the Receiving Party may disclose the Disclosing Party’s Confidential Information in order to comply with Applicable Law or a valid court order. Notwithstanding the foregoing, in the event the Receiving Party is required to make a disclosure of Confidential Information pursuant to the preceding sentence, it will, (x) to the extent permissible under Applicable Law, give [***] advance notice to the Disclosing Party of such disclosure to provide an opportunity for the Disclosing Party to challenge or limit the disclosure obligations, (y) use [***] efforts to secure confidential treatment of such Confidential Information and (z) use [***] efforts to avoid disclosure of Confidential Information.
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Notwithstanding the foregoing, DFCI will (i) use [***] efforts to establish Patent Rights covering Field of Use 2, and will cooperate exclusively with Licensee to file, prosecute, and maintain in countries requested by Licensee, Patent Rights covering Field of Use 2, and (ii) not take any actions with respect to the filing, prosecution or maintenance of the Patent Rights that may adversely affect Licensee’s rights under Patent Rights in Field of Use 2 or otherwise frustrate Licensee’s ability to exclusively develop, manufacture and commercialize Royalty Bearing Products under Patent Rights in Field of Use 2.
Fate Therapeutics, Inc.
ATTN: General Counsel
3535 General Atomics Court, Suite 200
San Diego, CA. 92121
Via email: [***]
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Licensee has the right to terminate this Agreement without cause in its entirety or on a Royalty Bearing Product-by-Royalty Bearing Product basis or country-by-country basis by giving DFCI [***] days prior written notice and paying all amounts due to DFCI through such effective date of termination. Upon such termination, Licensee shall cease all use and sales of Licensed Products and Licensed Processes which would be infringed by Valid Claims in those particular country(ies) applicable to such termination, subject to Section 8.5(d).
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Unless otherwise expressly specified in this Agreement, reports, notices and other communications under this Agreement shall be in writing, shall specifically refer to this Agreement and shall be deemed given only if delivered by hand, recognized national overnight courier (with confirmation) or registered or certified mail with postage prepaid and return receipt requested, to the following addresses of the Parties:
If to DFCI: Senior Director, Licensing
Dana-Farber Cancer Institute, Inc.
450 Brookline Ave.
Boston, MA 02215
With a copy to: Chief Innovation Officer
Dana-Farber Cancer Institute, Inc.
450 Brookline Ave.
Boston, MA 02215
If to Licensee: Fate Therapeutics, Inc.
ATTN: Office of the Chief Executive Officer
3535 General Atomics Court, Suite 200
San Diego, CA. 92121
With a copy to: Fate Therapeutics, Inc.
ATTN: General Counsel
3535 General Atomics Court, Suite 200
San Diego, CA. 92121
Such notice shall be deemed to have been given and effective as of the date of receipt. A Party may change its contact information immediately upon written notice to the other Party in the manner provided in this ARTICLE XI.
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Signature Page To Follow
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IN WITNESS WHEREOF, the Parties hereto have caused this Agreement to be executed by their duly authorized representatives as of Effective Date.
DANA‑FARBER CANCER INSTITUTE, INC. (DFCI)
By: [***]
Name: [***]
Title: Senior Director, Licensing
Date: April 9, 2020
Fate Therapeutics, Inc. (Licensee)
By: /s/ Scott Wolchko
Name: Scott Wolchko
Title: President and CEO
Date: April 9, 2020
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SCHEDULE 1
Patent Rights are limited only to the [***].
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SCHEDULE 2
[***]
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