Second Amendment to the Amended and Restated Technology License by and between Neurotrope BioScience, Inc. and Cognitive Research Enterprises, Inc., dated November 29, 2018

Contract Categories: Intellectual Property - License Agreements
EX-10.17 12 tm2110636d1_ex10-17.htm EXHIBIT 10.17


Exhibit 10.17







This Second Amendment to the Amended and Restated Technology License and Services Agreement, dated as of November 29, 2018 (“Execution Date”), is made by and between Neurotrope Bioscience, a Delaware corporation (“Neurotrope”), on the one hand, and Cognitive Research Enterprises Inc., a not-for-profit institution organized and existing under the laws of the State of West Virginia (“CRE” FKA the Blanchette Rockefeller Neurosciences Institute, Inc.), and NRV II, LLC, a limited liability company organized under and existing under the laws of the State of Delaware (“NRV II”), on the other hand. Each of Neurotrope, CRE and NRV II may be referred to as a “Party” and collectively as “Parties” in this Amendment as the case may be.


WHEREAS, the Parties entered into the Amended and Restated Technology License and Services Agreement, dated February 4, 2015 (the “TLSA”) and an Amendment thereto, dated November 12, 2015 (“TLSA Amendment”), pursuant to which CRE and NRV II granted certain rights in certain technology to Neurotrope; and


WHEREAS, Section 5.6 of the TLSA provides for the prosecution and maintenance of patents and applications for the “Licensed IP” as defined in Section 1.30 of the TLSA; and


WHEREAS, the Parties desire to amend Section 5.6 to modify the prosecution and maintenance obligations of the Parties; and


WHEREAS, the Parties have agreed that it is in the best interest of all of the Parties to amend Section 5.6 “Prosecution and Maintenance.”





NOW, THEREFORE, in consideration of $10,000 USD payable by Neurotrope to CRE and NRV II within five (5) business days of the Execution Date and the mutual covenants, and subject to the terms and conditions, set forth herein, and intending to be legally bound, the Parties hereby agree as follows:


1.Effective Date and Payment of Outstanding Invoices and Expenses.


(a)Neurotrope shall pay to CRE all outstanding invoices and accrued expenses associated with the Licensed IP listed below in Schedule I, which must occur within thirty (30) days of the Execution Date.


(b)The Effective Date of this Second Amendment shall be the date on which Neurotrope pays to CRE such outstanding invoices and accrued expenses.


2.Amendment to Section 5.6. Section 5.6 of the TLSA is hereby amended and restated and to read as follows:


“5.6  Prosecution and Maintenance.  As between Neurotrope and CRE, CRE shall have no right and Neurotrope shall have the sole and exclusive right and the obligation, to apply for, file, prosecute, and maintain patents and applications for the Licensed IP, in each case, in any jurisdiction throughout the world. Neurotrope shall pay for all of the attorneys’ fees, translation costs, filing fees, maintenance fees, portfolio transfer expenses, and other costs and expenses related to any of the foregoing.  Upon Neurotrope’s request, CRE shall cooperate fully with Neurotrope (including executing and delivering all documents, providing all information, and taking all such action as may be necessary or appropriate) in preparing, executing, filing and prosecuting applications to patent or register any Licensed IP, and applications for other related patents and registrations and in maintaining all such patents and registrations as may issue. In the event Neurotrope intends to abandon or cease any patent or application payment of maintenance fees, costs and/or expenses for any patent or application for the Licensed IP, Neurotrope shall provide CRE with written notice of such intent to abandon or cease payments at least sixty (60) days in advance of any relevant deadline, at which time CRE may (but shall not be obligated to) undertake such prosecution or maintenance at CRE’s sole discretion. The Licensed IP that is the subject of such abandonment or such fee, cost or expense shall be deemed to not be Licensed IP as of the date of such notice (and thereafter not licensed or sublicensed to Neurotrope pursuant to this Agreement).”





3.Licensed IP. The Parties acknowledge that Schedule I attached hereto is a true and complete list of all Licensed IP.


4.Miscellaneous. All terms and conditions of the TLSA not modified by this Amendment shall continue in full force and effect in accordance with their terms. The Parties agree that pursuant to the terms of this Amendment, the TLSA shall be considered in full force and effect, and that “CRE” shall replace “BRNI” in whatever sections in the TLSA that the term BRNI is used. 





IN WITNESS THEREOF, the Parties hereto have caused this Amendment to be executed by their duly authorized representatives as set forth below.


By:                              By:                           
Name: Charles Ryan   Name: Shana Kay Phares
Title: Chief Executive Officer   Title: President and Chief Executive Officer
NRV II, LLC      
Name: Neuroscience Research Ventures, Inc.      
Title: Managing Member      





Schedule I


Application Number Country Filing Date Patent Number Issue Date Status
10/167,491 United States of America 13-Jun-2002 6,825,229 30-Nov-2004 ISSUED-INAC
10/933,536 United States of America 03-Sep-2004     Abandoned
10/937,509 United States of America 10-Sep-2004     Abandoned
11/802,842 United States of America 25-May-2007     FINAL REJ.
12/538,245 United States of America 10-Aug-2009 9,066,923 30-Jun-2015 ISSUED
12/883,444 United States of America 16-Sep-2010 9,345,685 24-May-2016 ISSUED-INAC
13/042,892 United States of America 08-Mar-2011     REJECTED
13/851,161 United States of America 27-Mar-2013 9,539,235 10-Jan-2017 Issued
14/929,731 United States of America 02-Nov-2015 9,446,020 20-Sep-2016 Issued
15/370,156 United States of America 06-Dec-2016     Pending
03716386.2 European Patent Convention 14-Sep-2004     Pending
10000734.3 European Patent Convention 25-Jan-2010     REJECTED
05784925.9 European Patent Convention 22-Feb-2007     Appealed
03742389.4 European Patent Convention 12-Jan-2005     Abandoned
PCT/US2003/007101 Patent Cooperation Treaty 07-Mar-2003     Inactive
PCT/US2003/020820 Patent Cooperation Treaty 02-Jul-2003     COMPLETED
PCT/US2005/028522 Patent Cooperation Treaty 10-Aug-2005     COMPLETED
14/222,922 United States of America 24-Mar-2014     REJECTED
14/825,488 United States of America 13-Aug-2015     Pending
07749484.7 European Patent Convention 17-Feb-2009     Abandoned
12002638.0 European Patent Convention 16-Apr-2012     Abandoned
14001452.3 European Patent Convention 22-Apr-2014     REJECTED
12/068,742 United States of America 11-Feb-2008     FINAL REJ.
08725395.1 European Patent Convention 04-Sep-2009 2121000 23-Sep-2015 ISSUED-INAC
14001303.8 European Patent Convention 09-Apr-2014     REJECTED
15002036.0 European Patent Convention 07-Jul-2015     Published





Application Number Country Filing Date Patent Number Issue Date Status
PCT/US2008/001755 Patent Cooperation Treaty 11-Feb-2008     COMPLETED
PCT/US2008/006158 Patent Cooperation Treaty 14-May-2008     COMPLETED
12/510,681 United States of America 28-Jul-2009 8,163,800 24-Apr-2012 Issued
13/401,459 United States of America 01-Feb-2012 9,119,825 01-Sep-2015 ISSUED-INAC
14/803,762 United States of America 20-Jul-2015     REJECTED
09790874.3 European Patent Convention 17-Feb-2011     REJECTED
PCT/US2009/051927 Patent Cooperation Treaty 28-Jul-2009     COMPLETED
13/817,040 United States of America 14-Feb-2013 9,597,312 21-Mar-2017 Allowed
EP11751750.8 European Patent Convention 01-Mar-2013     Pending
PCT/US11/48493 Patent Cooperation Treaty 19-Aug-2011     COMPLETED
14/357,654 United States of America 12-May-2014 9,163,032 20-Oct-2015 ISSUED-INAC
12795194.5 European Patent Convention 10-Jun-2014     Pending
PCT/US12/64783 Patent Cooperation Treaty 13-Nov-2012     COMPLETED
14/357,661 United States of America 12-May-2014     REJECTED
12794822.2 European Patent Convention 12-Jun-2014     Published
PCT/US12/64787 Patent Cooperation Treaty 13-Nov-2012     COMPLETED
15/028,487 United States of America 11-Apr-2016     Published
14793391.5 European Patent Convention 20-Oct-2014     Published
PCT/US2014/061368 Patent Cooperation Treaty 20-Oct-2014     COMPLETED
15/126,339 United States of America 15-Sep-2016     Pending
15715942.7 European Patent Convention 27-Mar-2015     Published
PCT/US2015/23090 Patent Cooperation Treaty 27-Mar-2015     COMPLETED
PCT/US2016/056201 Patent Cooperation Treaty 08-Oct-2016     Pending
62/335,040 United States of America 11-May-2016     Pending