Exhibit 10.18
[Certain confidential portions of this agreement (marked with [***]) have been redacted pursuant to Item 601(b)(10)(iv) of Regulation S-K because the Company has determined that such redacted information is (i) not material, and (ii) is the type of information the company treats as private or confidential.]
license Agreement
THIS LICENSE AGREEMENT (this “Agreement”) is made and entered into as of June 3, 2020 (“Effective Date”), by and between PURDUE RESEARCH FOUNDATION, a statutory body corporate formed and existing under the Indiana Foundation or Holding Companies Act of 1921 (hereinafter referred to as “PRF”) with its business offices located at 1281 Win Hentschel Boulevard, West Lafayette, Indiana and Novosteo Inc., an Indiana corporation (hereinafter referred to as “LICENSEE”) with its business offices located at 1281 Win Hentschel Blvd, West Lafayette, IN, 47906, each individually referred to as a “Party” and collectively referred to as the “Parties.”
WITNESSETH
WHEREAS, Purdue researchers have made one or more valuable technologies (each, and collectively, “Technology”) which are the subject of one or more patent applications or patents described on Schedule A;
WHEREAS, the Purdue University Board of Trustees has, by general resolution and/or assignment, designated PRF to administer all matters pertaining to protection, use and commercialization of the intellectual property developed at Purdue University;
WHEREAS, LICENSEE desires to hereby enter into this Agreement whereby LICENSEE obtains rights to use the Technology and Licensed Patents; and
WHEREAS, PRF is willing to enter into this Agreement with LICENSEE, under the terms and conditions set forth herein.
NOW, THEREFORE, in consideration of the mutual covenants and premises contained herein, the receipt and sufficiency of which are hereby acknowledged, the Parties agree as follows:
Definitions
The following terms as used herein shall have the following meaning:
Grant of License
Commercialization Plan and Development Milestones
Consideration for License
Tier 1: MAR Trigger Year through Year [***] following MAR Trigger Year | [***] |
Tier 2: Years [***] following MAR Trigger Year | [***] |
Tier 3: All years subsequent to Tier 2 until the Term expires | [***] |
If the Sublicense is executed prior to [***] | [***] |
If the Sublicense is executed prior to [***] and after [***] | [***] |
If the Sublicense is executed prior to [***] and after [***] | [***] |
If the Sublicense is executed after [***] | [***] |
Any Sublicense Income payments to PRF are due within [***] of receiving such Sublicense Income payment from Sublicensee.
First anniversary of Effective Date through [***] of the Effective Date | [***] |
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[***] of Effective Date through [***] of Effective Date | [***] |
[***] of Effective Date and onward | [***] |
Milestone | Milestone Payment |
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Payments
Purdue Research Foundation
Office of Technology Commercialization
1281 Win Hentschel Blvd
West Lafayette, IN 47906
Attn: Accounting
Records
Patent Prosecution
Infringement
Confidentiality
DISPUTE RESOLUTION
For PRF: Vice President, OTC
For LICENSEE: CEO, Novosteo
Warranty, Merchantability and Exclusion of Warranties
Damages, Indemnification, and Insurance
Term and Termination
Notices
Except as otherwise provided herein, all notices and other communications shall be hand delivered, sent by private overnight mail service, or sent by registered or certified U.S. mail, postage prepaid, return receipt requested,
electronic mail, read receipt requested, and addressed to the Party to receive such notice or other communication at the address given below, or such other address as may hereafter be designated by notice in writing:
If to PRF Purdue Research Foundation
Office of Technology Commercialization
1801 Newman Road
West Lafayette, IN 47906
E-mail: [***]
ATTN: Vice President, OTC
If to LICENSEE Novosteo, Inc
1281 Win Hentschel Blvd.
West Lafayette, IN 47906
Such notices or other communications shall be effective upon receipt by an employee, agent or representative of the receiving party authorized to receive notices or other communications sent or delivered in the manner set forth above.
Miscellaneous
IN WITNESS WHEREOF, PRF and LICENSEE have caused this Agreement to be signed by their duly authorized representatives, under seal, by wet-ink or electronic signature, in one or more counterparts, each having the same validity and effect as the other, as of the Effective Date.
Purdue Research Foundation |
| LICENSEE | ||
X /s/ Brooke Beier |
| X /s/ M. Scott Salka | ||
Printed Name: | Brooke Beier |
| Printed Name: | M. Scott Salka |
Title: | Vice President, Office of Technology Commercialization |
| Title: | Executive Chair |
SCHEDULE A
Licensed Intellectual Property
Schedule A: Licensed Intellectual Property
Licensed Patent(s)
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SCHEDULE B
Novosteo Commercialization Plan for NOV004
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SCHEDULE C
Progress Report
Licensee Progress Report
Licensee Name:
Licensee Contact:
Progress Report Date:
Commercialization Diligence:
1. List the Development Milestones to date per Schedule D. Has the company been able to achieve them? If so, please provide proof of achievement and date achieved.
Financial Capacity:
2. How much capital has the company raised since it has licensed Purdue Technology?
3. State the company’s current financial capacity to achieve the Commercialization Plan and Development Milestones per the license agreement. If further funds are required, what are the company’s plans to deploy the necessary capital or to raise funding?
Employment & Development Efforts:
4. Has the company developed a Licensed Product yet? If yes, what is the name of the Licensed Product and where/how is it available for sale? If no, when does the company anticipate launching a Licensed Product?
5. Has the company had any sales of Licensed Products? If yes, please see Schedule D of the license for royalty report template.
6. If applicable, has the company issued any sub licenses? Has the company provided sublicense information to PRF?
Other Updates and Inquiries:
7. Is there any other news that you are interested in sharing with Purdue Research Foundation about the company’s efforts to commercialize the PRF Technology?
8. Does the company need anything from PRF at this time?
9. Is the company interested in learning about any other technologies that are available for licensing from PRF? If so, please provide an area of interest or description of technology that would fit the opportunity company is seeking.
SCHEDULE D
Schedule D: Royalty Report Requirements
a. Identify each Licensed Product by name(s), number(s), and brand identifications (include Licensed Products sold by Affiliate and Sublicensees)
b. List the Development Milestones to date. Has the company been able to achieve them? If so, please provide proof of achievement and date achieved. If not, state the reason.
c. List current published customer price information per Licensed Product
d. State number of units distributed to customers during Reporting Period per License Product (include units distributed by Affiliate and Sublicensees)
e. Summarize/describe unit price(s) charged to customers per Licensed Product during Reporting Period. Specify price ranges and variations where applicable. Where a sale, gift, use, or other disposition of a Licensed Product is transacted for value other than cash, supply corroboration that the charged unit price is consistent with the market value of the Licensed Product.
f. State amount of Gross Receipts per Licensed Product for the Reporting Period. Include summary of netting calculations.
g. State amount of Unit Royalties payable to PRF for each Licensed Product for the Reporting Period (per Gross Receipts of LICENSEE, any applicable Affiliates and Sublicensees)
h. State amount of minimum annual royalty due for the Annual Period (if applicable)
i. State amount of Sublicensing Income receivable during the Reporting Period (Article 4.4) (specify by Sublicense and type of income)
j. State total royalty due to PRF in USD for the Reporting Period. Show monetary conversion rate (if applicable).
k. List names and addresses of current Sublicensees (if applicable)
l. Enclose current certificate of insurance (Article 12.3)
m. Summarize financial capacity for Reporting Period, including third party funding received (dilutive and non-dilutive) related to commercialization of Licensed Product(s).
n. State number of full-time equivalents (FTEs) employed or otherwise actively implementing the Commercialization Plan.
o. State location (city, state, and country) where manufacturing of Licensed Products occurs.
SCHEDULE E
Development Milestones
Date/Timeline | Milestone |
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SCHEDULE F
Novosteo Inc. – Capitalization Table, 10May20
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