Exhibit 10.28
This Exclusive License Agreement, effective as of March 1st 2023 (“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 Aspira Women’s Health Inc., a corporation having a principal place of business at 35 Nutmeg Drive, Suite 260, Trumbull, CT06611 (“LICENSEE”). Each of DFCI and LICENSEE may be referred to herein as a “Party” or collectively as the “Parties.”
Background
WHEREAS, The Brigham and Women’s Hospital, Inc. (“BWH”), Medical University of Lodz (“MUL”), and DFCI (collectively “INSTITUTIONS”), have certain ownership rights in the Licensed Intellectual Property, as later defined; and
WHEREAS, INSTITUTIONS desire to promote the public interest by granting a license to the Licensed Intellectual Property; and
WHEREAS, INSTITUTIONS have agreed to give DFCI the sole authority to negotiate a license to the Licensed Intellectual Property per the Inter Institutional Agreement with the effective date of June 1, 2020 (DFCI # A11377); and
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 INSTITUTION’s rights in the Licensed Intellectual Property, and DFCI is willing to grant a license upon the terms and conditions of this Agreement.
NOW, THEREFORE, DFCI and LICENSEE agree as follows.
The following terms set forth in this ARTICLE I have the meanings set forth below:
Certain identified information has been excluded from this exhibit because it is both (1) not material and (2) is the type that the registrant treats as private or confidential.
1.7. | “Companion Diagnostic” means any diagnostic assay or device used for patient stratification in connection with a therapeutic agent for the treatment of ovarian cancer. |
information, ideas, techniques, sketches, diagrams, drawings, works of authorship, models, inventions, know- how, processes, apparatuses, equipment, algorithms, software programs, software source documents, and formulae related to the current, future, and proposed products and services of the Licensee, including without limitation the Licensee’s information concerning research, experimental work, development, design details and specifications, engineering, financial information, procurement requirements, purchasing, manufacturing, customer lists, investors, employees, business and contractual relationships, business forecasts, sales and merchandising, marketing plans and information the LICENSEE provides regarding third parties, all other information that the receiving party knew, or reasonably should have known, was the Confidential Information of the disclosing party, and confidential information. related to the respective party’s current, future and proposed compounds, compositions, and biological materials. |
diagnostics uses, , including but not limited to, where a Companion Diagnostic is used for patient stratification in connection with a therapeutic agent for the treatment of ovarian cancer. |
1.23. | “Licensed Intellectual Property” means Patent Rights or Licensed Know-How, individually or collectively. |
selling Person, and for avoidance of doubt shall not exclude any tax liabilities of selling Person: |
(iii) | Credits or allowances made or given due to rejects, returns, or retroactive price reductions for any amount not collected that are specifically identifiable to Royalty Bearing Products; |
(iii) | for preclinical, clinical, regulatory or regulatory purposes or under so-called “named patient” or other limited access programs, |
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.
(g) | Net Sales shall be deemed to occur on the receipt of consideration for a Royalty Bearing Product or a service performed using any Royalty Bearing Product. |
1.40. | “Third Party” means any Person other than INSTITUTIONS, LICENSEE or any of their respective Affiliates. |
can be taken and which has been pending for no more than seven (7) years from the date of that the first substantive office action has been received for such application (excluding restriction requirements, notices to file missing parts, and the like). The invalidity of a particular claim in one or more countries shall not invalidate such claim in any remaining countries. For the avoidance of doubt, a pending claim of a patent application filed pursuant to the Patent Cooperation Treaty shall be considered pending in all designated jurisdictions. |
ARTICLE 2 – GRANT OF LICENSES, RESERVED RIGHTS AND SUBLICENSING
2.7. | Reserved Rights. Notwithstanding anything to the contrary in this Agreement, the licenses granted by DFCI under this Agreement are subject to the following reserved rights: |
(b) | Notice. LICENSEE shall promptly notify DFCI in writing of the identity of any prospective Sublicensee. |
(iii) | Sublicensee shall indemnify, defend and hold the Indemnitees harmless to at least the extent that LICENSEE is obligated to indemnify the Indemnitees under Section 9.1 of this Agreement; |
(v) | If Sublicensee undertakes a Patent Challenge with respect to any Patent Rights under |
which the Sublicensee is sublicensed, then LICENSEE will be permitted to terminate such sublicense agreement; |