Exhibit 10.42
Certain identified information has been excluded from the exhibit because it is both (i) not material and (ii) is the type of information that the registrant treats as private or confidential. Double asterisks denote omission.
STANDARD EXCLUSIVE LICENSE AGREEMENT WITH KNOW-HOW
Agreement No: A19110
TABLE OF CONTENTS
Section 1 Definitions
Section 2 Grant
Section 3 Diligence Obligations
Section 4 Payments
Section 5 Warranties and Disclaimers of UFRF
Section 6 Record Keeping; Accounting
Section 7 Patent Prosecution
Section 8 Infringement and Invalidity
Section 9 Term and Termination
Section 10 Assignability
Section 11 Dispute Resolution
Section 12 Indemnification; Insurance
Section 13 Use of Names
Section 14 Miscellaneous
Section 15 Notices
Section 16 Confidentiality
Section 17 University Rules and Regulations
Section 18 Contract Formation and Authority
Appendix A - Patent Rights and Know-How
Appendix B - Development Plan
Appendix C - Development Report
Appendix D - UFRF Royalty Report
Appendix E - Standard Exclusive License Agreement A19111
STANDARD EXCLUSIVE LICENSE AGREEMENT WITH KNOW-HOW
Agreement No: A19110
This Standard Exclusive License Agreement with Know-How (this “Agreement”) is effective as of March 17, 2020, (the “Effective Date”) between the University of Florida Research Foundation, Incorporated (hereinafter called “UFRF”), a nonstock, nonprofit Florida corporation, and Aavanti Bio, Inc., (hereinafter called “Licensee”), a Delaware corporation having its principal office/place of business at 3324 W. University Avenue, #261, Gainesville, FL, 32607-2504.
WHEREAS, Licensee is engaged in business relating to the development and commercialization of products that can use or incorporate UFRF’s intellectual property rights and has the capability of developing commercial applications of the intellectual property; and
WHEREAS, UFRF owns inventions that are described below; UFRF is willing to grant a license to Licensee under the Patent Rights (defined in Section 1.14) and Know-How (as defined in Section 1.8); and Licensee desires a license under them.
THEREFORE, the parties agree as follows:
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In the event that a Product is sold as a Combination Product, Net Sales, for the purposes of determining royalty payments on the Combination Product, shall mean the gross amount collected for the Combination Product less the deductions set forth in clauses (i) - (vi) above, multiplied by a proration factor that is determined as follows:
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Company shall receive at least [**] dollars ($[**]) in funding (which may include external equity investment as well as grants) within [**] of the Effective Date or UFRF shall, as its sole and exclusive remedy, have the right to terminate the License.
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Licensee shall pay UFRF, on a country-by-country basis, the following earned royalties:
(I) For all Licensed Products that qualify under Sections 1.10(a), (b), or (d):
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(II) for all Licensed Products that qualify only under Sections 1.10(c) but not any of Sections 1.10(a), (b), or (d):
Earned royalties are earned as of the earlier of the date the Licensed Product is actually sold and paid for and the date an invoice is sent by Licensee or its Sublicensee(s), or as of the date a Licensed Product is transferred to a third party for promotional reasons.
Within [**] after the end of each calendar quarter ending on March 31, June 30, September 30 or December 31, Licensee shall pay amounts owing to UFRF under this Section 4.3 after the amount of minimum royalties paid pursuant to Section 4.4 is exceeded. Royalties are not additive, but are payable based on the highest applicable rate that is calculated according to this Section 4.3.
Payment | Year |
[**] | [**] |
[**] | [**] |
[**] | [**] |
[**] | [**] |
[**] | [**] |
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Event | Milestone Payment |
[**] | [**] |
[**] | [**] |
[**] | [**] |
[**] | [**] |
[**] | [**] |
Each milestone payment shall only be owed once with respect to each Licensed Product.
Licensee shall pay to UFRF a fee of $[**] upon the first Change of Control of Licensee. Licensee shall notify UFRF and pay the Change of Control fee within [**] of the occurrence of a Change of Control.
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Licensee may not receive from Sublicensees anything of value in lieu of cash payments in consideration for any Sublicense under this Agreement other than the Excluded Amount without the express prior written consent of UFRF, not to be unreasonably withheld, conditioned or delayed.
Only one royalty will be due on Net Sales of any Licensed Product, even if such Licensed Product is covered by multiple patents, patent applications or claims within the Patent Rights.
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In no event will the earned royalty payable to UFRF for Net Sales be lower than [**] the rate specified in Section 4.3(a).
In the event that a Licensed Product is also covered by agreement A19111 (Appendix E) then only one payment is due under each of sections 4.3, 4.4, and/or 4.5.
There shall only be one payment due based on a Change in Control pursuant to Section 4.6, under this Agreement and under Agreement A19111. Likewise the equity provisions of Sections 4.6(a)-4.6(d) shall apply only once (to either this Agreement A19111 or Agreement A19110).
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University of Florida Research Foundation, Incorporated
288 Grinter Hall, PO Box 115500
Gainesville, Florida 32611-5500
Attention: Business Manager
For Wire Transfer Information: http://research.ufl.edu/ufrf/wiring.html
The wire transfer link is also included at the bottom of all invoices for your accounting purposes.
Licensee shall convert all monies owing in currencies other than United States dollars at the rate shown in the Federal Reserve Noon Valuation - Value of Foreign Currencies on the day preceding the payment due date.
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8.4 If a declaratory judgment action is brought against UFRF or Licensee by a third party alleging invalidity, unpatentability, unenforceability, or non-infringement of the Patent Rights, Licensee, at its option, may within [**] after commencement of the action take over the sole defense of the action at its own expense. If Licensee does not exercise this right and Licensee is the sole licensee of the Patent Rights, UFRF may be responsible for the sole defense of the action at Licensee’s sole expense, subject to Sections 8.5 and 8.6.
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Licensee and its Sublicensee(s) may not use the names or logos of UFRF or the University of Florida, nor of any of either institution’s employees, agents, or affiliates, nor the name of any inventor of Patent Rights or Know-How, nor any adaptation of those names, in any promotional, advertising or marketing materials or any other form of publicity, or to suggest any endorsement by these entities or individuals, without the prior written approval of UFRF.
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Licensee acknowledges that it is subject to and agrees to abide by United States laws and regulations (including the Export Administration Act of 1979 and Arms Export Control Act) controlling the export of technical data, computer software, laboratory prototypes, biological material, and other commodities. The transfer of those items may require a license from the cognizant agency of the United States Government or written assurances by Licensee that it will not export items to certain foreign countries or persons without prior approval by that agency. UFRF neither represents that a license is or is not required nor that, if required, it will be issued.
Licensee shall obtain all necessary approvals from the United States Food & Drug Administration, Environmental Protection Agency, Department of Agriculture and any similar governmental authorities of foreign jurisdictions in which Licensee intends to make, use, sell or perform Licensed Products
14.6 Force Majeure. Neither party is responsible for default, delay, or failure to perform, if such default, delay or failure to perform is due to causes beyond the party’s reasonable control, including, but not limited to, strikes, lockouts, inactions of governmental authorities, war, fire, hurricane or other natural disaster, provided that the nonperforming party uses commercially reasonable efforts to avoid or remove those causes of nonperformance and continues performance under this Agreement with reasonable dispatch when the causes are removed. In the event of a default, delay or failure to perform described in this Section 14.6, any date or times by which either party is scheduled to perform is extended automatically for a time equal to the time lost by reason of the excused default, delay or failure to perform.
The parties shall provide any notice required to be given pursuant to this Agreement in writing to the addresses listed in this Section 15. Notice is effective on the day it is delivered personally with written receipt from an authorized signatory, on the second day after the day on which the notice has been delivered for next day delivery prepaid to a nationally recognized courier service, on the fifth business day following deposit in the United States mail if sent certified or registered mail, (return receipt acknowledgement is not required to certify delivery).
If to UFRF: | If to Licensee: |
President University of Florida Research Foundation, Incorporated 223 Grinter Hall University of Florida P. O. Box 115500 Gainesville, FL 32611-5500 | AavantiBio, Inc. 747 S.W. 2nd Avenue, IMB31 Gainesville, FL 32611-5575 Attention: [**] |
with a copy to: | with a copy to: |
UF Innovate | Tech Licensing | Asher M. Rubin |
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Attn: Director (Rm. 112) 747 SW 2nd Avenue Post Office Box 115575 Gainesville, Florida 32611-5575 | Hogan Lovells US LLP 100 International Drive, Suite 2000 Baltimore, MD 21202 asher.rubin@hoganlovells .com |
Unless required by Florida Law, the parties (a) may only use each other’s Confidential Information (as defined below) as necessary to perform the obligations set forth in this Agreement (b) may not disclose the other’s Confidential Information to any third party, and (c) shall protect each other’s Confidential Information with the same degree of care that they exercise with their own Confidential Information but in no event less than a reasonable degree of care. The parties may disclose this Agreement and Confidential Information to their authorized Affiliates, directors, officers, employees, consultants, subcontractors, Sublicensees or agents and investors or potential investors who are bound by similar confidentiality provisions. For the purposes of this Agreement, “Confidential Information” means the terms of this Agreement and information disclosed by one party to the other that is marked “confidential” by the disclosing party or that is confirmed in writing within [**] after oral disclosure. Confidential Information does not include information that (i) is publicly known; (ii) is already known or independently developed without use of the Confidential Information as shown by written records; (iii) is disclosed by a third party having no known obligation of confidentiality with respect to the Confidential Information; or (iv) is required to be disclosed to comply with applicable laws or regulations or with a court or administrative order. These confidentiality obligations remain effective for [**] after disclosure of the Confidential Information.
Should any Investigator or individual working directly or indirectly under UFRF’s direction publish or present data or experimental results related to the Patent Rights or Know-How such individual shall first provide a copy of any proposed disclosure (including any proposed abstract or manuscript for submission) to UFRF and Licensee for review at least [**] prior to the data of submission for the proposed publication or presentation for public disclosure. At Licensee’s request, any reference to Licensee’s Confidential Information or any licensed Know-How shall be deleted. If Licensee determines that information is included in the proposed disclosure constitutes an Improvement or is otherwise information that is reasonably necessary or useful for commercialization of the Patent Rights, Licensee may request a deferral of the publication or disclosure to allow Licensee to file or have filed a patent application disclosing such information or Improvement, and UFRF shall defer the publication or disclosure for this period.
Licensee understands and agrees that University of Florida personnel who are engaged by Licensee, whether as consultants, employees, or otherwise or who possess a material financial interest in Licensee are subject to the University of Florida’s rules regarding outside activities and financial interests set forth in University of Florida Regulation 1.011, the University of Florida’s Intellectual Property Policy, and an associated monitoring plan which addresses conflicts of interests. Any term of an agreement between Licensee and University of Florida personnel which seeks to vary or override the personnel’s obligations to the University of Florida may not be enforced without the express written consent of an individual authorized to vary or waive such
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obligations on behalf of the University of Florida Board of Trustees and UFRF. Furthermore, should an interest of Licensee conflict with the interests of the University of Florida, University of Florida personnel are obligated to resolve those conflicts according to the rules, guidelines, and policies of the University of Florida.
[signature page follows]
The parties have duly executed this Agreement on the dates indicated below.
UNIVERSITY OF FLORIDA RESEARCH FOUNDATION, INCORPORATED By:/s/ Jim O’Connell Jim O’Connell Assistant Vice President for Commercialization Director, UF Innovate | Tech Licensing Date: March 19, 2020 | AAVANTI BIO, INC. By:/s/ Phil Johnson Name: Phil Johnson Title: Director Date: March 19 , 2020 |
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Appendix E - Exclusive License Agreement to Aavanti [**]/A19111
Incorporated by reference to Exhibit 10.43 to the Company’s Form 10-K for the fiscal year ended December 31, 2022 as filed with the Securities and Exchange Commission on March 23, 2023.
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Exhibit 10.42
Certain identified information has been excluded from the exhibit because it is both (i) not material and (ii) is the type of information that the registrant treats as private or confidential. Double asterisks denote omission.
FIRST AMENDMENT TO LICENSE AGREEMENT NO. A19110
WHEREAS, the University of Florida Research Foundation, Inc., a not-for-profit corporation duly organized and existing under the laws of the State of Florida and having its principal office at 223 Grinter Hall, Gainesville, Florida 32611 U.S.A. (hereinafter referred to as “UFRF), and AavantiBio, Inc., a Delaware corporation having its principal office/place of business at 747 SW 2nd Ave., Suite 195, IMB31, Gainesville, FL, 32601 (hereinafter referred to as “Licensee”) entered into a Standard Exclusive License Agreement (Agreement No: A19110) dated 17 March 2020 (“License Agreement”);
WHEREAS, the parties now wish to amend the License Agreement by this amendment (hereinafter referred to as “First Amendment”);
NOW, THEREFORE, in consideration of the premises and mutual covenants contained herein, the parties hereto agree as follows:
3.2 (a) Licensee shall use Commercially Reasonable Effects to achieve the estimated milestones set forth in the New Appendix B attached to the First Amendment and estimates that the first commercial sale of the first Licensed Product will occur on or before [**].
[Signatures to follow on next page]
Exhibit 10.42
Certain identified information has been excluded from the exhibit because it is both (i) not material and (ii) is the type of information that the registrant treats as private or confidential. Double asterisks denote omission.
IN WITNESS WHEREOF, the parties intending to be bound have caused this First Amendment to be executed by their duly authorized representatives.
UNIVERSITY OF FLORIDA AAVANTIBIO, INC. RESEARCH FOUNDATION, INC.
By: /s/ Jim O’Connell By: /s/ Bo Cumbo
Jim O’Connell Bo Cumbo
Director UF Innovate | Tech Licensing Title: President and CEO
Exhibit 10.42
Certain identified information has been excluded from the exhibit because it is both (i) not material and (ii) is the type of information that the registrant treats as private or confidential. Double asterisks denote omission.
Date: 8/23/2022 Date: 8/23/2022