Exhibit 4.9
CERTAIN CONFIDENTIAL PORTIONS OF THIS EXHIBIT HAVE BEEN OMITTED AND REPLACED WITH “[***]”. SUCH IDENTIFIED INFORMATION HAS BEEN EXCLUDED FROM THIS EXHIBIT BECAUSE IT IS (I) NOT MATERIAL AND (II) WOULD LIKELY CAUSE COMPETITIVE HARM TO THE COMPANY IF DISCLOSED.
DATED November 29, 2023
(1) CANCER RESEARCH TECHNOLOGY LIMITED
TRADING AS CANCER RESEARCH HORIZONS
- and -
(2) ACHILLES THERAPEUTICS UK LIMITED
Patent assignment AND LICENCE |
CONTENTS
Page
1 | Definitions and interpretation | 3 |
2 | Assignment | 4 |
3 | Grant of licence | 6 |
4 | SUBLICENSING | 8 |
5 | Further assurance | 8 |
6 | Warranties | 8 |
7 | INDEMNITY | 9 |
8 | Liability | 9 |
9 | Confidential Information | 9 |
10 | Entire agreement | 10 |
11 | Notices | 10 |
12 | Announcements | 10 |
13 | Variation | 10 |
14 | TRANSFER OF RIGHTS | 10 |
15 | Severance | 10 |
16 | Waiver | 10 |
17 | Counterparts | 11 |
18 | Third party rights | 11 |
19 | DISPUTE RESOLUTION, GOVERNING LAW AND JURISDICTION | 11 |
Schedule 1 - Existing assigned patents | 12 | |
Schedule 2 - LICENCE BACK TABLE 1 | 13 | |
Schedule 3 - LICENCE BACK TABLE 2 | 15 |
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This DEED is dated with effect from the date of the last signature below
BETWEEN:
Each of the above parties is individually referred to as a “Party” and collectively as “Parties”.
BACKGROUND:
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IT IS AGREED:
"Assignment Date" | means the date of this Deed; |
"Assignment Option" | has the meaning given in the Background section of this Deed; |
“Assigned Patents” | has the meaning given in the Background section of this Deed; |
“Commercial”
“Licence Agreement” | any activity (including but not limited to Commercial Research), or party which is conducting any such activity, which is an activity: (i) that is, in whole or part, funded by a person or entity that is not a Funder; or (ii) that is undertaken at the request of or for the benefit of any entity that is not an Academic Organisation involved in such activity; or (iii) that is undertaken (as opposed to funded) in collaboration with any entity which is not an Academic Organisation; or (iv) under which a Third Party, which is not an Academic Organisation (or technology transfer organisation associated with such Academic Organisation) participating in such activity, will acquire any rights to, or access to, or ownership or control of, or exploitation of, (including by way of assignment or licence,) the results of such activity; has the meaning given in the Background section of this Deed; |
“Licence Back Table 1” | means the table attached as Schedule 2; |
"Licence Back Table 2” | means the table attached as Schedule 3; |
"LOHHLA Addendum" | has the meaning given in the Background section of this Deed; |
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upon written request from CRT, AchillesTx shall immediately cease all use and Exploitation of the Assigned Patents, and AchillesTx will and will procure that its Affiliates (as applicable) assign all of AchillesTx’s (and its Affiliates) rights, title and interest in and to the Assigned Patents to CRT and at CRT's request, cost and expense it will sign, execute and deliver all such deeds and documents, as may be required for the purpose of giving full effect to this Clause 2.5. For clarity assignment by AchillesTx of the Assigned Patents, shall not include any enhancement, development or improvement in or to the Assigned Patents that are not Assigned Patents.
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Licences Termination
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Special, Indirect and Other Losses
Limitation
No Exclusion
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This Deed and the Licence Agreement contain the entire understanding of each of the Parties hereto with respect to the transactions and matters contemplated hereby and supersedes all prior agreements and understandings relating to the subject matter hereof.
and any modification or amendment to such address must itself be notified in writing to the other Parties in accordance with the terms of this Clause.
No announcement or other public disclosure concerning this Deed or any of the matters contained in it shall be made by, or on behalf of, a Party without the prior written consent of the other party (such consent not to be unreasonably withheld or delayed), except as required by law, any court, any governmental, regulatory or supervisory authority (including any recognised investment exchange) or any other authority of competent jurisdiction.
No variation of this Deed shall be valid or effective unless it is in writing, refers to this Deed and is duly signed or executed by, or on behalf of, each Party.
CRT may not assign, or subcontract (not being a sublicence), any right or obligation under this Deed, in whole or in part, without AchillesTx’s prior written consent, such consent not to be unreasonably withheld, conditioned or delayed.
If any provision of this Deed (or part of any provision) is or becomes illegal, invalid or unenforceable, the legality, validity and enforceability of any other provision of this Deed shall not be affected.
No failure, delay or omission by either Party in exercising any right, power or remedy provided by law or under this Deed shall operate as a waiver of that right, power or remedy, nor shall it preclude or restrict any future exercise of that or any other right or remedy. No single or partial exercise of any right, power or remedy provided by law or under this Deed shall prevent any future exercise of it or the exercise of any other right, power or remedy.
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Save where the provisions of sub-clause 29.7.8 of the Licence Agreement may continue to apply to matters referred to under Clause 2.2 of this Deed, no one other than a Party to this Deed their successors and permitted assignees shall have any right to enforce any of its provisions.
All controversies or claims of whatever nature arising out of or relating in any manner whatsoever to this Deed or any of the documents referred to in this Deed, including but not limited to a controversy or claim involving the validity, enforceability, interpretation or construction of this Deed or any of the documents referred to in this Deed, shall be resolved in all respects in accordance with clause 31 of the Licence Agreement (with all references to the Agreement being deemed to be references to this Deed).
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Schedule 1
EXISTING ASSIGNED Patents
[***]
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Schedule 2
LICENCE BACK TABLE 1:
LICENCES GRANTED BY ACHILLES TO CRT
(1) | (2) | (3) |
Name of Licence | Field | Licence Back Terms |
“CRT Back Licence 1” | Therapeutic Field | Non-exclusive, worldwide, perpetual and irrevocable sub-licence (with a right to sub-licence across multiple tiers) to grant Academic Rights, in each case in accordance with, on the same terms, and subject to the same restrictions, as are set out in Clause 5 of the Licence Agreement.
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“CRT Back Licence 2” | Therapeutic Vaccine Field concerning or targeting Private Neo-Antigens | Non-exclusive, worldwide, perpetual and irrevocable sub-licence (across multiple tiers): to grant Academic Rights, in each case in accordance with, on the same terms, and subject to the same restrictions, as are set out in Clause 5 of the Licence Agreement.
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“CRT Back Licence 3” | Neo-Antigen Diagnostic Field
| Non-exclusive, worldwide, perpetual and irrevocable sub-licence (across multiple tiers): to grant Academic Rights, in each case in accordance with, on the same terms, and subject to the same restrictions, as are set out in Clause 5 of the Licence Agreement
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“CRT Back Licence 4” | Therapeutic Vaccine Field concerning or targeting Public Neo-Antigens | Non-exclusive, worldwide, perpetual and irrevocable, with a right to sub-license across multiple tiers for all uses including Exploitation |
“CRT Back Licence 5” | All fields concerning or targeting Public Neo-Antigens outside: (i) the Therapeutic Vaccine Field; and (ii) the Therapeutic Field concerning or targeting Public Neo-Antigens | Exclusive (to the exclusion of AchillesTX), worldwide, perpetual and irrevocable, with a right to sub-license across multiple tiers for all uses including Exploitation |
“CRT Back Licence 6” | Therapeutic Antibody Field | Non-exclusive, worldwide, perpetual and irrevocable, with a right to sub-license across multiple tiers for all uses including Exploitation |
“CRT Back Licence 7” | Non Neo-Antigen Diagnostics Field | Non-exclusive, worldwide, perpetual and irrevocable, with a right to sub-license across multiple tiers for all uses including Exploitation |
“CRT Back Licence 8” | All fields outside of Therapeutic Field, Therapeutic Vaccine Field, Therapeutic Antibody Field, Neo- Antigen Diagnostic Field and Non Neo-Antigen Diagnostic Field | Exclusive (to the exclusion of AchillesTX), worldwide, perpetual and irrevocable, with a right to sub-license across multiple tiers for all uses including Exploitation |
All such licences are subject to the other provisions of this Assignment Agreement, including but not limited to Clause 3.10, as applicable.
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Schedule 3
LICENCE BACK TABLE 2:
ADDITIONAL LICENCES GRANTED BY ACHILLES TO CRT
(1) | (2) | (3) |
Name of Licence | Field | Licence Back Terms
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“CRT Back Licence 9” | Therapeutic Field | Exclusive (to the exclusion of AchillesTX), worldwide, perpetual and irrevocable, with a right to sub-license across multiple tiers for all uses including Exploitation
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“CRT Back Licence 10” | Therapeutic Vaccine Field | Exclusive (to the exclusion of AchillesTX), worldwide, perpetual and irrevocable, with a right to sub-license across multiple tiers for all uses including Exploitation
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“CRT Back Licence 11”
| Neo-Antigen Diagnostic Field
| Exclusive (to the exclusion of AchillesTX), worldwide, perpetual and irrevocable, with a right to sub-license across multiple tiers for all uses including Exploitation
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All such licences are subject to the other provisions of this Assignment Agreement, including but not limited to Clause 3.10, as applicable.
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executed as a deed by the parties and delivered on the date set out at the head of this Deed.
Executed as a deed by CANCER RESEARCH TECHNOLOGY LIMITED trading as CANCER RESEARCH HORIZONS |
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[***] |
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Director Name |
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[***] |
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Director Signature |
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November 29, 2023 |
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Executed as a deed by ACHILLES THERAPEUTICS UK LIMITED acting by |
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[***] |
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[***] |
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Director Signature |
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November 28, 2023 |
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| November 28, 2023 |
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