Amendment No. 4 to Licensing Agreement between Monogram Orthopaedics, Inc. as Licensee and Icahn School of Medicine at Mount Sinai as Licensor, effective May 17, 2023
Exhibit 10.16
Amendment No. 4 to
EXCLUSIVE LICENSE AGREEMENT
between
Icahn School of Medicine at Mount Sinai And
Monogram Orthopedics Inc.
This Amendment No.4 (the “Amendment”), effective as of May 17, 2023, is entered into by and between Icahn School of Medicine at Mount Sinai, a New York not-for-profit education corporation, having a principal place of business at One Gustave L. Levy Place, New York, NY 10029 (“Mount Sinai”) and Monogram Orthopedics Inc., a Delaware corporation with a principal place of business at 3913 Todd Lane, Suite 307, Austin, TX 78744 (“Monogram”).
WHEREAS, Mount Sinai and Monogram entered into an exclusive license agreement with an effective date of October 3, 2017(the “Agreement”);
WHEREAS, the parties intend to amend the Agreement for the purpose of extending development milestones and amending Exhibit A to introduce additional Licensed Patents and to provide compensation to Mount Sinai for the addition of such Licensed Patents;
NOW THEREFORE, in consideration of the mutual obligations in this Amendment and for other good consideration, the receipt and sufficiency of which are hereby acknowledged, Mount Sinai and Monogram hereby agree as follows:
1. | All capitalized terms used but not defined herein shall have the respective meanings ascribed to such terms in the Agreement. |
2. | Section 3.3(b) shall be deleted and hereby replaced in its entirety with the following: |
(b) Within eight (8) years from the Effective Date, Licensee will have a First Commercial Sale. Up to thirty (30) days prior to this First Commercial Sale milestone date, and upon written request for an additional amendment to the Agreement, Monogram may extend this milestone date for one (1) year with payment of an extension fee of $50,000 (“Extension Fee”). Monogram may extend this milestone date by one (1) additional year for up to two (2) additional times for a total of 3 extensions maximum, each with written request, an additional amendment to the Agreement, and payment of the Extension Fee.
3. | Exhibit A shall be deleted and hereby replaced in its entirety with the Exhibit A attached to this Amendment. |
4. | As consideration for the Licensed Patents added by Section 3 of this Amendment, as well as extension of the First Commercial Sale milestone added by Section 2 of this Amendment, Monogram agrees to pay Mount Sinai $50,000 within 30 days of the effective date of this Amendment. |
5. | All other terms and conditions to the Agreement remain unchanged and in full force and effect except to the extent modified by the terms and conditions of this Amendment. The Agreement, as modified by this Amendment, contains the entire understanding of the parties with respect to the subject matter contemplated herein. |
IN WITNESS WHEREOF, the parties have caused their duly authorized representatives to execute this Amendment.
ICAHN SCHOOL OF MEDICINE AT MOUNT SINAI
By: | /s/ Eric Lium | |
Name: | Erik Lium | |
Title: | President | |
Date: | 5/17/2023 | 4:10 PM EDT | |
MONOGRAM ORTHOPEDICS INC.
By: | /s/ Benjamin Sexson | |
Name: | Benjamin Sexson | |
Title: | CEO | |
Date: | 5/31/2023 | |
Exhibit A
Licensed Patents
Country | App Type | Serial No. | Status | File Date | Title | Publication Date | Publication No. | Patent No. |
United States | Provisional | 62/319,710 | Expired | 2016-04-07 | APPARATUS, METHOD AND SYSTEM FOR PROVIDING CUSTOMIZABLE BONE IMPLANTS | | | |
United States | PCT | PCT/US2017/26681 | Published | 2017-04-07 | APPARATUS, METHOD AND SYSTEM FOR PROVIDING CUSTOMIZABLE BONE IMPLANTS | 2017-10-12 | WO 2017/177182 | |
United States | Nat’l Phase | 16/153,334 | Issued | 2018-10-05 | APPARATUS, METHOD AND SYSTEM FOR PROVIDING CUSTOMIZABLE BONE IMPLANTS | | | 10,945,848 |
Europe | Nat’l Phase | 17779938.4 | Published | 2017-04-07 | APPARATUS, METHOD AND SYSTEM FOR PROVIDING CUSTOMIZABLE BONE IMPLANTS | 2019-02-13 | EP 3439584A | |
Australia | Nat’l Phase | 2017248357 | Pending | 2018-11-05 | APPARATUS, METHOD AND SYSTEM FOR PROVIDING CUSTOMIZABLE BONE IMPLANTS | | | |
Canada | Nat’l Phase | 3,020,362 | Pending | 2018-10-18 | APPARATUS, METHOD AND SYSTEM FOR PROVIDING CUSTOMIZABLE BONE IMPLANTS | | | |
United States | Nat’l Phase | 17/176,653 | Issued | 2021-02-16 | APPARATUS, METHOD AND SYSTEM FOR PROVIDING CUSTOMIZABLE BONE IMPLANTS | | | 11,517,440 |
United States | Nat’l Phase | 18/061,814 | Pending | 2022-12-05 | APPARATUS, METHOD AND SYSTEM FOR PROVIDING CUSTOMIZABLE BONE IMPLANTS | | | |
United States | Provisional | 62/811,855 | Expired | 2019-02-28 | CUSTOMIZED TIBIAL TRAYS CONTACTABLE WITH AN UNDERLYING CORTICAL BONE, METHODS, AND SYSTEMS FOR KNEE REPLACEMENT | | | |
United States | Provisional | 62/879,800 | Expired | 2019-07-29 | CUSTOMIZED TIBIAL TRAYS CONTACTABLE WITH AN UNDERLYING CORTICAL BONE, METHODS, AND SYSTEMS FOR KNEE REPLACEMENT | | | |
United States | PCT | PCT/US2020/020279 | Published | 2020-02-28 | CUSTOMIZED TIBIAL TRAYS CONTACTABLE WITH AN UNDERLYING CORTICAL BONE, METHODS, AND SYSTEMS FOR KNEE REPLACEMENT | 2020-09-03 | WO 2020/176824 | |
United States | Nat’l Phase | 17/460,943 | Pending | 2021-08-30 | CUSTOMIZED TIBIAL TRAYS CONTACTABLE WITH AN UNDERLYING CORTICAL BONE, METHODS, AND SYSTEMS FOR KNEE REPLACEMENT | | | |
Australia | Nat’l Phase | 2020229371 | Pending | 2021-09-16 | CUSTOMIZED TIBIAL TRAYS CONTACTABLE WITH AN UNDERLYING CORTICAL BONE, METHODS, AND SYSTEMS FOR KNEE REPLACEMENT | | | |
Canada | Nat’l Phase | 3,131,343 | Pending | 2021-08-24 | CUSTOMIZED TIBIAL TRAYS CONTACTABLE WITH AN UNDERLYING CORTICAL BONE, METHODS, AND SYSTEMS FOR KNEE REPLACEMENT | | | |
Europe | Nat’l Phase | 20763146.6 | Pending | 2020-02-28 | CUSTOMIZED TIBIAL TRAYS CONTACTABLE WITH AN UNDERLYING CORTICAL BONE, METHODS, AND SYSTEMS FOR KNEE REPLACEMENT | | | |
United States | Nat’l Phase | 18/057,404 | Pending | 2021-08-30 | CUSTOMIZED TIBIAL TRAYS CONTACTABLE WITH AN UNDERLYING CORTICAL BONE, METHODS, AND SYSTEMS FOR KNEE REPLACEMENT | | | |
United States | Provisional | 63/027,098 | Expired | 2020-05-19 | CUSTOMIZED TIBIAL TRAYS, METHODS,AND SYSTEMS FOR KNEE REPLACEMENT (with screws) | | | |
United States | PCT | PCT/US2021/033102 | Pending | 2021-05-19 | CUSTOMIZED TIBIAL TRAYS, METHODS,AND SYSTEMS FOR KNEE REPLACEMENT (with screws) | | | |
United States | Nat’l Phase | 18/057,404 | Pending | 2022-11-21 | CUSTOMIZED TIBIAL TRAYS, METHODS,AND SYSTEMS FOR KNEE REPLACEMENT (with screws) | 2023-03-23 | US2023/0088873 | |
Australia | Nat’l Phase | 2021276381 | Pending | 2022-12-16 | CUSTOMIZED TIBIAL TRAYS, METHODS,AND SYSTEMS FOR KNEE REPLACEMENT (with screws) | | | |
Canada | Nat’l Phase | 3,182,020 | Pending | 2022-11-01 | CUSTOMIZED TIBIAL TRAYS, METHODS,AND SYSTEMS FOR KNEE REPLACEMENT (with screws) | | | |
Japan | Nat’l Phase | 2022-571351 | Pending | 2022-11-19 | CUSTOMIZED TIBIAL TRAYS, METHODS,AND SYSTEMS FOR KNEE REPLACEMENT (with screws) | | | |
Europe | Nat’l Phase | 21808537.1 | Pending | 2021-05-19 | CUSTOMIZED TIBIAL TRAYS, METHODS,AND SYSTEMS FOR KNEE REPLACEMENT (with screws) | | | |
Korea | Nat’l Phase | 1020227044310 | Pending | 2022-11-19 | CUSTOMIZED TIBIAL TRAYS, METHODS,AND SYSTEMS FOR KNEE REPLACEMENT (with screws) | | | |
United States | Provisional | 62/834,692 | Expired | 2019-04-16 | CUSTOM HIP DESIGN AND INSERTABILITY ANALYSIS | | | |
United States | PCT | PCT/US2020/028499 | Published | 2020-04-15 | CUSTOM HIP DESIGN AND INSERTABILITY ANALYSIS | | | |
United States | Nat’l Phase | 17/503,536 | Pending | 2021-10-18 | CUSTOM HIP DESIGN AND INSERTABILITY ANALYSIS | | | |
Australia | Nat’l Phase | 2020257391 | Pending | 2021-11-04 | CUSTOM HIP DESIGN AND INSERTABILITY ANALYSIS | | | |
Canada | Nat’l Phase | 3,137,029 | Pending | 2021-10-14 | CUSTOM HIP DESIGN AND INSERTABILITY ANALYSIS | | | |
Europe | Nat’l Phase | 20791627.1 | Pending | 2021-11-04 | CUSTOM HIP DESIGN AND INSERTABILITY ANALYSIS | | | |
United States | Provisional | 62/854,648 | Expired | 2019-05-30 | ROBOT MOUNTED CAMERA REGISTRATION AND TRACKING SYSTEM FOR ORTHOPEDIC AND NEUROLOGICAL SURGERY | | | |
United States | PCT | PCT/US2020/035408 | Pending | 2020-05-29 | ROBOT MOUNTED CAMERA REGISTRATION AND TRACKING SYSTEM FOR ORTHOPEDIC AND NEUROLOGICAL SURGERY | | | |
United States | Nat’l Phase | 17/456,989 | Pending | 2021-11-30 | ROBOT MOUNTED CAMERA REGISTRATION AND TRACKING SYSTEM FOR ORTHOPEDIC AND NEUROLOGICAL SURGERY | | | |
Australia | Nat’l Phase | 2020282347 | Issued | 2021-11-29 | ROBOT MOUNTED CAMERA REGISTRATION AND TRACKING SYSTEM FOR ORTHOPEDIC AND NEUROLOGICAL SURGERY | | | 2020282347 |
Canada | Nat’l Phase | 3,141,828 | Pending | 2021-11-22 | ROBOT MOUNTED CAMERA REGISTRATION AND TRACKING SYSTEM FOR ORTHOPEDIC AND NEUROLOGICAL SURGERY | | | |
Europe | Nat’l Phase | 20813577.2 | Pending | 2020-05-29 | ROBOT MOUNTED CAMERA REGISTRATION AND TRACKING SYSTEM FOR ORTHOPEDIC AND NEUROLOGICAL SURGERY | | | |
United States | Provisional | 62/850,050 | Expired | 2019-05-20 | A SYSTEM AND METHOD FOR INTERACTION AND DEFINITION OF TOOL PATHWAYS FOR A ROBOTIC CUTTING TOOL | | | |
United States | PCT | PCT/US2020/033810 | Pending | 2020-05-20 | A SYSTEM AND METHOD FOR INTERACTION AND DEFINITION OF TOOL PATHWAYS FOR A ROBOTIC CUTTING TOOL | | | |
United States | Nat’l Phase | 17/455,822 | Pending | 2021-11-20 | A SYSTEM AND METHOD FOR INTERACTION AND DEFINITION OF TOOL PATHWAYS FOR A ROBOTIC CUTTING TOOL | | | |
Australia | Nat’l Phase | 2020280022 | Pending | 2021-12-10 | A SYSTEM AND METHOD FOR INTERACTION AND DEFINITION OF TOOL PATHWAYS FOR A ROBOTIC CUTTING TOOL | | | |
Canada | Nat’l Phase | 3,141,156 | Pending | 2021-11-17 | A SYSTEM AND METHOD FOR INTERACTION AND DEFINITION OF TOOL PATHWAYS FOR A ROBOTIC CUTTING TOOL | | | |
Europe | Nat’l Phase | 20809508.3 | Pending | 2021-11-20 | A SYSTEM AND METHOD FOR INTERACTION AND DEFINITION OF TOOL PATHWAYS FOR A ROBOTIC CUTTING TOOL | | | |
United States | Provisional | 62/990,827 | Expired | 2020-03-17 | REGISTRATION AND/OR TRACKING OF A PATIENT'S BONE EMPLOYING A PATIENT SPECIFIC BONE JIG | | | |
United States | PCT | PCT/US2021/022524 | Pending | 2021-03-16 | REGISTRATION AND/OR TRACKING OF A PATIENT'S BONE EMPLOYING A PATIENT SPECIFIC BONE JIG | | | |
United States | Nat’l Phase | 17/932,839 | Pending | 2022-09-16 | REGISTRATION AND/OR TRACKING OF A PATIENT'S BONE EMPLOYING A PATIENT SPECIFIC BONE JIG | 2023-01-19 | US2023/0020760 | |
Europe | Nat’l Phase | 217722880.0 | Pending | 2022-10-01 | REGISTRATION AND/OR TRACKING OF A PATIENT'S BONE EMPLOYING A PATIENT SPECIFIC BONE JIG | | | |
Japan | Nat’l Phase | 2022-556656 | Pending | 2022-09-16 | REGISTRATION AND/OR TRACKING OF A PATIENT'S BONE EMPLOYING A PATIENT SPECIFIC BONE JIG | | | |
Australia | Nat’l Phase | 2021239854 | Expired | 2022-10-14 | REGISTRATION AND/OR TRACKING OF A PATIENT'S BONE EMPLOYING A PATIENT SPECIFIC BONE JIG | | | |
Canada | Nat’l Phase | 3,176,080 | Expired | 2022-09-16 | REGISTRATION AND/OR TRACKING OF A PATIENT'S BONE EMPLOYING A PATIENT SPECIFIC BONE JIG | | | |
United States | Provisional | 63/268,070 | Expired | 2022-02-16 | Implant Placement Guides and Methods | | | |
United States | PCT | PCT/US2023/062713 | Pending | 2023-02-16 | Implant Placement Guides and Methods | | | |
