Ninth Amendment tot eh Exclusive Patent License Agreement

Contract Categories: Intellectual Property - License Agreements
EX-10.1 2 ex10-1.htm

 

Exhibit 10.1

 

NINTH AMENDMENT TO THE
EXCLUSIVE PATENT LICENSE AGREEMENT

 

(MGH Cases No 01416, 22497, 24644)

 

Agreement No. 2022-3833

 

This Ninth Amendment (“Ninth Amendment”), effective May 30, 2023 (“Ninth Amendment Effective Date”), to the Exclusive Patent License Agreement is by and between The General Hospital Corporation, d/b/a Massachusetts General Hospital, a non-for-profit Massachusetts corporation, with a principal place of business at 55 Fruit Street, Boston, Massachusetts 02114 (“Hospital”) and Vicapsys, Inc with its principal place of business located at 1234 Airport Road, Destin, Florida 32541 (“Company”).

 

WHEREAS, Hospital and Company are Parties to an Exclusive Patent License Agreement, MGH Agreement No. A215841, effective as of May 8, 2013, as previously amended effective as of January 22, 2014, May 6, 2014, August 25, 2014, December 1, 2014, October 27, 2016, February 6, 2017, December 22, 2017, and as further amended on March 14, 2022 (the “Agreement”);

 

WHEREAS, Company desires to amend the Agreement in order to add new Patent Rights (Section 1.11) and to update the Diligence Requirements (Section 3.1);

 

Now, THEREFORE, for good and valuable consideration, the sufficiency of which is hereby acknowledged, the Parties hereto agree as follows:

 

1.The Agreement is hereby amended by deleting Section 1.11 in its entirety and inserting the following language in its place:

 

1.11 “Patent Rights” shall mean, inclusively, (i) the PCT Patent Application number PCT/US00/09678, filed on April 7, 2000, with the MGH Case Number 01416 (ii) the PCT Patent Application number PCT/US2013/068916 filed on November 7, 2013 with the MGH Case Number 22497 and (iii) the PCT patent application PCT/US2018/051950 filed on September 20, 2018 with the MGH Case Number 24644, and/or the equivalent of such applications including any division, continuation (but not including continuation-in-part) , US and foreign patent application, Letters Patent, and/or the equivalent thereof issuing thereon, and/or reissue, reexamination or extension thereof, as may be further described in Appendix A-2.”

 

2.Section 3.1 of the Agreement is hereby amended by adding the following Diligence Requirement for MGH 24644 Patent Rights:

 

“Within one (1) year of the Ninth Amendment Effective Date Company shall submit a research and development plan for the Patent Rights associated with MGH 24644 with mutually acceptable Diligence Requirements to be added by amendment to the Agreement for development of the Product or Process for the therapy and/ or prophylaxis of a human disorder in the License Field.”

 

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3.Section 4.1 is hereby amended by adding the following sentence at the end of the Section:

 

“As of the Ninth Amendment Effective Date, Hospital has incurred approximately three thousand nine hundred and fifty-six dollars ($3,956) in Patent Costs towards the Patent Rights for MGH 24644, which amount Company shall pay to Hospital by July 31, 2023.”

 

4.Appendix A-1 of the Agreement is hereby amended by deleting it entirely and replacing it with the attached Appendix A-2.

 

5.In consideration of the addition of Patent Rights in Section 1.11, Company shall pay Hospital a non-refundable one-time license fee of two thousand dollars ($2,000) which shall be due upon execution of this Ninth Amendment.

 

6.Effect of Amendment. Except as otherwise amended hereby, the Agreement and all of its terms and conditions are hereby ratified and confirmed in all respects and remain in full force and effect.

 

7.Headings. All headings are for convenience only and shall not affect the meaning of any provision of this Agreement.

 

8.Execution in Counterparts; Facsimile or Electronic Transmission. This Ninth Amendment may be executed in counterparts, and by facsimile or electronic transmission. This Ninth Amendment may be executed electronically/digitally in compliance with the Massachusetts Uniform Electronic Transactions Act (MUETA) Mass. Gen. Laws ch. 110G and/or The Electronic Signatures In Global And National Commerce Act (ESIGN) 15 USC ch. 96. Persons signing this Ninth Amendment agree that, if used, electronic/digital signatures are intended to authenticate this writing and to have the same force and effect as the use of manual signatures.

 

IN WITNESS WHEREOF, the Parties have caused this Ninth Amendment to be executed by their duly authorized representatives as of the Ninth Amendment Effective Date first written above.

 

THE GENERAL HOSPITAL CORPORATION   Vicapsys Inc.
         
BY: /s/ Emilie Braun   BY: /s/ Federico Pier
         
Name: Emilie Braun   Name: Federico Pier
         
Title: Senior Director, BD&L   Title: CEO
         
Date: May 31, 2023   Date: May 31, 2023

 

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DESCRIPTION OF PATENT RIGHTS

 

Information   Country   Type   Application Number   Patent Number   Application Date   Status
01416.01   US   Provisional   60/128,272   None   Apr 8, 1999   Converted
01416.02   US   Provisional   60/168,952   None   Dec 3, 1999   Converted
01416.03   WIPO   PCT   PCT/US00/09678   None   Apr 7, 2000   Nationalized
01416.07   EPO   PCT   00922067.4   1169348   Apr 7, 2000   Issued
01416.12   France   PCT   00922067.4   1169348   Apr 7, 2000   Issued
01416.13   Germany   PCT   00922067.4   1169348   Apr 7, 2000   Issued
01416.14   Ireland   PCT   00922067.4   1169348   Apr 7, 2000   Issued
01416.15   Switzerland   PCT   00922067.4   1169348   Apr 7, 2000   Issued
01416.16   UK   PCT   00922067.4   1169348   Apr 7, 2000   Issued
01416.17   Sweden   PCT   00922067.4   1169348   Apr 7, 2000   Issued
01416.04   US   Utility   09/546,153   6,448,054   Apr 7, 2000   Issued
01416.08   US   Divisional   10/191,988   7,141,363   Jul 9, 2002   Issued
01416.11   US   Divisional   11/407,477   7,775,469   Apr 20, 2006   Issued
22497.01   WIPO   PCT   PCT/US2013/068916   None   Nov 7, 2013   Nationalized
22497.09   Russia   PCT   2016120644   2665359   Nov 7, 2013   Issued
22497.10   Ukraine   PCT   2016 06075   None   Nov 7, 2013   Pending
22497.11   Japan   PCT   2016-527332   6538042   Nov 7, 2013   Issued
22497.13   Australia   PCT   2013404939   2013404939   Nov 7, 2013   Issued
22497.15   EPO   PCT   13896941.5   3065701   Nov 7, 2013   Issued
22497-23   Sweden   PCT   13896941.5   3065701   Nov 7, 2013   Issued
22497-24   Norway   PCT   13896941.5   3065701   Nov 7, 2013   Issued
22497-25   Netherlands   PCT   13896941.5   3065701   Nov 7, 2013   Issued
22497-26   UK   PCT   13896941.5   3065701   Nov 7, 2013   Issued
22497-27   Germany   PCT   13896941.5   3065701   Nov 7, 2013   Issued
22497-28   France   PCT   13896941.5   3065701   Nov 7, 2013   Issued
22497.02   US   PCT   15/019,449   9,775,816   Feb 9, 2016   Issued
22497.20   US   Continuation   15/179,567   9,849,094   Jun 10, 2016   Issued
22497.21   US   Continuation   15/590,587   9,849,159   May 9, 2017   Issued
22497.22   US   Divisional   15/813,917   10,580,262   Nov 15, 2017   Issued
24644.01   US   Provisional   62/561,058   None   Sep 20, 2017   Converted
24644.02   WIPO   PCT   PCT/US2018/051950   None   Sep 20, 2018   Nationalized
24644-04   EPO   PCT   18857678.9   None   Sep 20, 2018   Pending
24644-03   US   PCT   16/648,569   None   Mar 18, 2020   Pending

 

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