Second Amendment to Patent License Agreement by and between CAMP4 Therapeutics Corporation and the Whitehead Institute for Biomedical Research, dated as of November 7, 2023

Exhibit 10.3

CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT,
MARKED BY [***], HAS BEEN OMITTED BECAUSE IT IS NOT MATERIAL AND
WOULD LIKELY CAUSE COMPETITIVE HARM TO THE COMPANY IF PUBLICLY
DISCLOSED

Second AMENDMENT To
Patent License Agreement

This Second Amendment to the Patent License Agreement (this “SECOND AMENDMENT”) is entered into as of November 7, 2023 (the “SECOND AMENDMENT EFFECTIVE DATE”), by and between the Whitehead Institute for Biomedical Research, a Delaware corporation having a principal office at 455 Main Street, Cambridge, MA 02142 (“WHITEHEAD”), and CAMP4 Therapeutics Corporation, a Delaware corporation, having a principal place of business at One Kendall Square, Building 1400 West, 3^rd Floor, Cambridge, MA 02139 (“COMPANY”) (together with WHITEHEAD, the “Parties” and each individually a “Party”), and amends the Patent License Agreement dated as of October 23, 2019, and first amended as of December 14, 2021, by and between WHITEHEAD and COMPANY (the “Agreement”; [***]). Capitalized terms used in this SECOND AMENDMENT but not defined shall have the meanings set forth in the Agreement.

Recitals

Whereas, COMPANY and WHITEHEAD are parties to the Agreement pursuant to which WHITEHEAD granted to COMPANY certain rights and licenses under PATENT RIGHTS owned by WHITEHEAD to develop, make, have made, use, sell, offer to sell, lease, and import LICENSED PRODUCTS in the FIELD in the TERRITORY and to perform and have performed LICENSED PROCESSES in the FIELD in the TERRITORY, subject to the terms and conditions set forth in the Agreement, and

Whereas, COMPANY and WHITEHEAD now wish to amend the Agreement as provided herein to, among other things, add a certain additional patent case to the PATENT RIGHTS.

Now Therefore, the Parties agree as follows:

(a)           Amendment of Appendix A and Appendix B. Effective as of the SECOND AMENDMENT EFFECTIVE DATE, Appendix A of the Agreement is hereby deleted in its entirety and replaced with Appendix A to this SECOND AMENDMENT, and Appendix B of the Agreement is hereby deleted in its entirety and replaced with Appendix B to this SECOND AMENDMENT.

(b)           Amendment of Certain Definitions. Effective as of the SECOND AMENDMENT EFFECTIVE DATE:

i.            Section 1.11 of the Agreement is hereby deleted in its entirety and replaced with the following:

““IDENTIFIED PRODUCT” will mean any product, other than a LICENSED PRODUCT, (i) first identified, selected, or determined by COMPANY, its AFFILIATE or SUBLICENSEE to have [***] of LICENSED PRODUCTS or LICENSED PROCESSES during the TERM and prior to the [***] of the EFFECTIVE DATE or, solely with respect to [***] and [***], during the period commencing on the AMENDMENT EFFECTIVE DATE and terminating on the [***] of the AMENDMENT EFFECTIVE DATE, and (ii) for which COMPANY, its AFFILIATE or SUBLICENSEE receive consideration based on the sales of such product to final customers who are the end users of such product, including consideration from such sales of such product to such final customers made by COMPANY or its AFFILIATE.

ii.            Section 1.14 of the Agreement is hereby deleted in its entirety and replaced with the following:

“LICENSED PROCESS” will mean any process (including the provision of any service) of which the use, sale, offer of sale or importation would, absent the license granted hereunder, infringe one or more VALID CLAIMS; provided that, solely with respect to the [***], LICENSED PROCESS will mean any process relating to an [***] (including the provision of any service) of which the use, sale, offer of sale or importation would, absent the license granted hereunder, infringe one or more VALID CLAIMS of the [***] (each, a “[***]”); and that, solely with respect to the [***], LICENSED PROCESS will mean any process relating to an [***] (including the provision of any service) of which the use, sale, offer of sale or importation would, absent the license granted hereunder, infringe one or more VALID CLAIMS of the [***] (each, a “[***]”). For avoidance of doubt, [***] and [***] are subsets of the LICENSED PROCESSES.”

iii.            Section 1.15 of the Agreement is hereby deleted in its entirety and replaced with the following:

“LICENSED PRODUCT” will mean any product of which the manufacture, use, sale, offer of sale or importation would, absent the license granted hereunder, infringe one or more VALID CLAIMS; provided that, solely with respect to the [***], LICENSED PRODUCT will mean any product containing or comprising an [***] of which the manufacture, use, sale, offer of sale or importation would, absent the license granted hereunder, infringe one or more VALID CLAIMS of the [***] (each, a “[***]”); and that, solely with respect to the [***], LICENSED PRODUCT will mean any product containing or comprising an [***] of which the manufacture, use, sale, offer of sale or importation would, absent the license granted hereunder, infringe one or more VALID CLAIMS of the [***] (each, a “[***]”). For avoidance of doubt, [***] and [***] are subsets of the LICENSED PRODUCTS.”

iv.            The following is added as new Section 1.27 of the Agreement, and all subsequent sections of Article 1 are renumbered accordingly:

“[***]” will mean PATENT RIGHTS of the case listed in Appendix A as [***].”

(c)           Amendment of License Grants. Effective as of the SECOND AMENDMENT EFFECTIVE DATE, Section 2.1 of the Agreement is hereby deleted in its entirety and replaced with the following:

“License Grants. Subject to the terms of this Agreement (including Sections 2.2 and 2.3 which describe the exclusivity of this grant), WHITEHEAD hereby grants to COMPANY and its AFFILIATES for the TERM a royalty-bearing license under the PATENT RIGHTS to develop, make, have made, use, sell, offer to sell, lease, and import PRODUCTS in the FIELD in the TERRITORY and to perform and have performed LICENSED PROCESSES in the FIELD in the TERRITORY.

For the avoidance of doubt, solely with respect to the [***], the Parties agree that WHITEHEAD retains the right to grant licenses to third parties under the [***] of the EXCLUSIVE CASES in the FIELD in the TERRITORY to develop, make, have made, use, sell, offer for sale or import PRODUCTS that are not [***], or to perform or have performed LICENSED PROCESSES that are not [***]; and that, solely with respect to the [***], the Parties agree that WHITEHEAD retains the right to grant licenses to third parties under the [***] of the EXCLUSIVE CASES in the FIELD in the TERRITORY to develop, make, have made, use, sell, offer for sale or import PRODUCTS that are not [***], or to perform or have performed LICENSED PROCESSES that are not [***].”

(d)           Amendment of Retained Rights. Effective as of the SECOND AMENDMENT EFFECTIVE DATE, Section 2.6(c)(ii) of the Agreement is hereby deleted in its entirety and replaced with the following:

“(ii) COMPANY acknowledges that WHITEHEAD has or will covenant not to bring, directly or indirectly, any demand, claim, lawsuit, or action against [***] relating in any way to the practice or use of any PATENT RIGHTS listed on Appendix D (the “RELEVANT PATENTS”) to the extent necessary to allow [***] to practice any of the SRA Inventions that become licensed to [***] by WHITEHEAD (and sublicensees of same). Accordingly, COMPANY has agreed to the terms of Section 7.2(e).”

(e)           Amendment of License Issue Fee and License Maintenance Fees.

i.            License Issue Fee. The Parties acknowledge and agree that prior to the SECOND AMENDMENT EFFECTIVE DATE, COMPANY paid to WHITEHEAD a license issue fee of One-Hundred-Thousand Dollars ($100,000) and a First Amendment license issue fee of Twenty-Thousand Dollars ($20,000) in accordance with Section 4.1(a) of the Agreement. The following text is hereby added as the final sentence of the first paragraph of Section 4.1(a) of the Agreement:

“In addition, COMPANY shall pay to WHITEHEAD a license issue fee of Twenty-Thousand Dollars ($20,000) within thirty (30) days of the SECOND AMENDMENT EFFECTIVE DATE.”

ii.           License Maintenance Fees. The Parties acknowledge and agree that prior to the SECOND AMENDMENT EFFECTIVE DATE, COMPANY paid to WHITEHEAD in accordance with Section 4.1(b) of the Agreement, a license maintenance fee of Twenty-Five Thousand Dollars ($25,000) for calendar year 2020, a license maintenance fee of Thirty-Five Thousand Dollars ($35,000) for calendar year 2021, a license maintenance fee of Forty-Five Thousand Dollars ($45,000) for calendar year 2022, and a license maintenance fee of Fifty-Five Thousand Dollars for calendar year 2023. Effective as of the SECOND AMENDMENT EFFECTIVE DATE, Section 4.1(b) of the Agreement is hereby deleted in its entirety and replaced with the following:

“License Maintenance Fees. COMPANY shall pay to WHITEHEAD the following license maintenance fees on January 1 of each year set forth below:

This license maintenance fee is nonrefundable; however, the license maintenance fee may be credited to royalties due under this Agreement during the same calendar year, if any. License maintenance fees paid in excess of royalties due under this Agreement in such calendar year will not be creditable to royalties due to WHITEHEAD for future years.”

(f)            Amendment of Content of Reports and Payments. Effective as of the SECOND AMENDMENT EFFECTIVE DATE, Section 5.2 of the Agreement is hereby deleted in its entirety and replaced with the following:

5.2 Content of Reports and Payments. Each report delivered by COMPANY to WHITEHEAD will contain at least the following information for the immediately preceding REPORTING PERIOD:

(i)          the number of PRODUCTS sold, leased, or distributed by COMPANY, its AFFILIATES, SUBLICENSEES and CORPORATE PARTNERS, to independent third parties in each country;

(ii)         the gross price charged by COMPANY, its AFFILIATES, SUBLICENSEES, and CORPORATE PARTNERS for each PRODUCT;

(iii)        calculation of NET SALES for the applicable REPORTING PERIOD in each country, including a listing of applicable deductions;

(iv)        total royalty payable on NET SALES in U.S. dollars under this Agreement, together with the exchange rates used for conversion;

(v)         the number of active SUBLICENSE AGREEMENTS and CORPORATE PARTNERSHIPS entered and a description of the PRODUCTS sublicensed in conjunction with the PATENT RIGHTS;

(vi)        the achievement of any COMPANY Diligence Obligations under Section 3.1(b);

(vii)       a listing of LICENSED PRODUCTS that are under current development by COMPANY, its AFFILIATES, SUBLICENSEES, or CORPORATE PARTNERS and for which a [***] has been initiated or completed by or on behalf of COMPANY, its AFFILIATES, SUBLICENSEES, or CORPORATE PARTNERS (if not, the report shall so state); and

(viii)      a listing of IDENTIFIED PRODUCTS that are under current development by COMPANY, its AFFILIATES, SUBLICENSEES, or CORPORATE PARTNERS and for which a [***] has been initiated or completed by or on behalf of COMPANY, its AFFILIATES, SUBLICENSEES, or CORPORATE PARTNERS; provided that, COMPANY need solely include in said listing IDENTIFIED PRODUCTS that were first identified, selected or determined to have biological activity or utility by use of a product or process that would have infringed a VALID CLAIM of the PATENT RIGHTS that is as of the date of the report an issued claim in the United States and that (a) has not been held permanently revoked, unenforceable, or invalid by a decision of a court or governmental agency of competent jurisdiction, which decision is unappealable or unappealed within the time allowed for appeal, and (b) has not been abandoned disclaimed, denied or admitted to be invalid or unenforceable through reissue or disclaimer or otherwise.

(g)           Amendment of Payment of Expenses. Effective as of the SECOND AMENDMENT EFFECTIVE DATE, Section 6.3(b) of the Agreement is hereby deleted in its entirety and replaced with the following:

“(b) EXCLUSIVE CASES. COMPANY shall reimburse all reasonable unreimbursed out-of-pocket fees and costs, including reasonable attorneys’ fees, relating to the filing, prosecution, and maintenance of the EXCLUSIVE CASES incurred by WHITEHEAD in the relevant countries on Appendix C in which COMPANY has not abandoned rights pursuant to Section 6.1(c), whether such amounts were incurred, with respect to the [***], before or after the SECOND AMENDMENT EFFECTIVE DATE and, with respect to the [***], before or after the AMENDMENT EFFECTIVE DATE and, with respect to all other EXCLUSIVE CASES, before or after the EFFECTIVE DATE (such fees and costs, the “PATENT EXPENSES”). For the avoidance of doubt, such PATENT EXPENSES incurred by WHITEHEAD before the SECOND AMENDMENT EFFECTIVE DATE with respect to the [***] are approximately [***] through [***], and such PATENT EXPENSES incurred by WHITEHEAD before the EFFECTIVE DATE with respect to the [***] and all other EXCLUSIVE CASES were paid by COMPANY to WHITEHEAD prior to the SECOND AMENDMENT EFFECTIVE DATE.

Solely with respect to [***], if WHITEHEAD licenses such [***] to one or more third parties before or after the AMENDMENT EFFECTIVE DATE, then beginning on the effective date of such third party license(s), COMPANY will reimburse WHITEHEAD for COMPANY’S [***] of PATENT EXPENSES incurred with respect to the [***] equal to the amount of such PATENT EXPENSES divided by the then-applicable number of third party licensees (including COMPANY) under such [***].

Solely with respect to [***], if WHITEHEAD licenses such [***] to one or more third parties before or after the SECOND AMENDMENT EFFECTIVE DATE, then beginning on the effective date of such third party license(s), COMPANY will reimburse WHITEHEAD for COMPANY’S [***] of PATENT EXPENSES incurred with respect to the [***] equal to the amount of such PATENT EXPENSES divided by the then-applicable number of third party licensees (including COMPANY) under such [***].”

(g)           Amendment of Right to Prosecute Infringements.

i.            Effective as of the SECOND AMENDMENT EFFECTIVE DATE, Section 7.2 of the Agreement is hereby deleted in its entirety and replaced with the following:

“7.2 Right to Prosecute Infringements.

(a)         COMPANY Right to Prosecute for EXCLUSIVE CASES. So long as COMPANY remains the exclusive licensee of the EXCLUSIVE CASES in the FIELD in the TERRITORY, COMPANY, to the extent permitted by law, shall have the right (but not the obligation), under its own control and at its own expense, to prosecute any third-party infringement of the PATENT RIGHTS of the EXCLUSIVE CASES in the FIELD in the TERRITORY, subject to Sections 7.2(c), 7.2(d), 7.2(e), 7.2(f), 7.4, and 7.5. If required by law, WHITEHEAD shall permit any action under this Section 7.2 to be brought in its name, including being joined as a party-plaintiff, provided that COMPANY shall hold WHITEHEAD harmless from, and indemnify WHITEHEAD against, any out-of-pocket costs, expenses, or liability that WHITEHEAD incurs in connection with such action.

Prior to commencing any such action, COMPANY shall consult with WHITEHEAD and shall consider the views of WHITEHEAD regarding the advisability of the proposed action and its effect on the public interest. COMPANY shall not enter into any settlement, consent judgment, or other voluntary final disposition of any infringement action under this Section 7.2(a) that imposes any financial liability or other obligation on WHITEHEAD, or requires an admission of liability, wrongdoing or fault or a waiver of rights on the part of WHITEHEAD, without the prior written consent of WHITEHEAD, such consent not to be unreasonably withheld, delayed or conditioned.

(b)         Right to Prosecute Co-EXCLUSIVE CASES.

[***].

[***].

(c)         [***]. COMPANY’S rights under this Section 7.2 with respect to [***] are limited to the right (but not the obligation) to prosecute any third-party infringement of the [***] in the FIELD in the TERRITORY resulting from the manufacturing, research, development, use or sale of products containing or comprising [***].

(d)         [***]. COMPANY’s rights under this Section 7.2 with respect to the [***] are limited to the right (but not the obligation) to prosecute any third-party infringement of the [***] in the FIELD in the TERRITORY resulting from the manufacturing, research, development, use or sale of products containing or comprising [***].

(e)         Exception for [***]. Subject to Section 2.6(c)(iii), COMPANY’s rights under this Section 7.2 will exclude infringement of the RELEVANT PATENTS by [***] arising from the practice of SRA Inventions licensed to [***] by WHITEHEAD (and such infringement by [***] arising from the practice of SRA Inventions).

(f)          Exception for [***]. Subject to Section 2.6(d), COMPANY’S rights under this Section 7.2 will exclude infringement of [***] of the PATENT RIGHTS by [***].

(g)         WHITEHEAD Right to Prosecute. In the event that COMPANY is unsuccessful in persuading the alleged infringer to desist or fails to have initiated an infringement action within a reasonable time after COMPANY first becomes aware of the basis for such action, WHITEHEAD shall have the right [***] to prosecute such infringement under its sole control and at its sole expense, and any recovery obtained shall belong to WHITEHEAD, but WHITEHEAD shall reimburse COMPANY for any costs or expenses incurred in assisting WHITEHEAD in such action as reasonably requested by WHITEHEAD. In the event that COMPANY has chosen not to initiate an infringement action for business reasons, WHITEHEAD shall consider in good faith COMPANY’s reasons for such decision in deciding whether to prosecute such infringement.”

ii.           Effective as of the SECOND AMENDMENT EFFECTIVE DATE, the following text is hereby added as the final sentence of Section 7.7:

“For the avoidance of doubt, solely with respect to the [***], the Parties agree that COMPANY’s rights under this Section 7.7 are limited to the sole right to sublicense any alleged infringer in the FIELD in the TERRITORY for future use of the [***] to develop, make, have made, use, sell, offer for sale or import [***], or to perform or have performed [***], in each case, in accordance with the terms and conditions of this Agreement relating to sublicenses set forth in Section 2.4 and payments due under Section 4.”

(h)           Miscellaneous.

[Signature page follows]

In Witness Whereof, the Parties have duly executed and delivered this SECOND AMENDMENT as of the SECOND AMENDMENT EFFECTIVE DATE.

WHITEHEAD:

Whitehead Institute For

Biomedical Research

COMPANY:

CAMP4 Therapeutics Corporation

[Signature Page to Second Amendment to Patent License Agreement]

APPENDIX A

List of Patent Applications and Patents

[***]

APPENDIX B

List of Patent Applications and Patents

[***]