AMENDMENT No 1 TO THE LICENSE AGREEMENT EFFECTIVE THE 17TH DAY OF NOVEMBER 2015 BETWEEN STANFORD UNIVERSITY AND AKOYA BIOSCIENCES
Exhibit 10.10
CERTAIN CONFIDENTIAL PORTIONS OF THIS EXHIBIT HAVE BEEN OMITTED AND REPLACED WITH “[***]”. SUCH IDENTIFIED INFORMATION HAS BEEN EXCLUDED FROM THIS EXHIBIT BECAUSE IT IS (I) NOT MATERIAL AND (II) WOULD LIKELY CAUSE COMPETITIVE HARM TO THE COMPANY IF DISCLOSED.
| S14-157 MW | Amendment | 11/18/2016 |
AMENDMENT No 1
TO THE
LICENSE AGREEMENT EFFECTIVE THE 17TH DAY OF NOVEMBER 2015
BETWEEN
STANFORD UNIVERSITY
AND
AKOYA BIOSCIENCES
Effective the 18th day of November, 2016, THE BOARD OF TRUSTEES OF THE ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇ JUNIOR UNIVERSITY (“Stanford”), an institution of higher education having powers under the laws of the State of California, and Akoya Biosciences, Inc. (“AKOYA”), a corporation having a principal place of business at ▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇, ▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇, agree as follows:
| 1. | BACKGROUND |
Stanford and AKOYA are parties to a License Agreement effective the 17th day of November, 2015 (“Original Agreement”) covering “Slide-based antibody detection with oligos” disclosed in Stanford docket S14-157, from the laboratory of ▇▇. ▇▇▇▇▇ ▇▇▇▇▇.
Stanford and AKOYA wish to amend the Original Agreement to add a new patent application disclosed in Stanford docket S16-116 titled “Highly-multiplexed fluorescent imaging using iterative hybridization/de-hybridization cycles of short oligonucleotides to labeled affinity reagents” from the laboratory of ▇▇. ▇▇▇▇▇ ▇▇▇▇▇.
| 2. | AMENDMENT |
| 2.1 | Paragraph 2.6 of Original Agreement is hereby deleted in its entirety and replaced with the following: |
“Licensed Patent” means Stanford’s: U.S. Provisional Applications Serial Number 62/015,799 filed June 19, 2014 and Serial Number 62/367,530 filed July 27, 2016; U.S. Patent Application Serial Number 14/560,921, filed December 4, 2014, PCT Application Serial Number PCT/US15/36763, any U.S. and foreign patent applications corresponding thereto, and any conversions, divisionals, continuations, substitutions, or reexamination applications, each patent that issues or reissues from any of these patent applications, any extensions or renewals of any such patents, and any applications claiming priority thereto. Any claim of an unexpired Licensed Patent is presumed to be valid unless it has been held to be invalid by a final judgment of a court of competent jurisdiction from which no appeal can be or is taken. Neither Party will file CIP applications without other Party’s prior written consent.
Page 1 of 5
CERTAIN CONFIDENTIAL PORTIONS OF THIS EXHIBIT HAVE BEEN OMITTED AND REPLACED WITH “[***]”. SUCH IDENTIFIED INFORMATION HAS BEEN EXCLUDED FROM THIS EXHIBIT BECAUSE IT IS (I) NOT MATERIAL AND (II) WOULD LIKELY CAUSE COMPETITIVE HARM TO THE COMPANY IF DISCLOSED.
| S14-157 MW | Amendment | 11/18/2016 |
| 2.2 | Paragraph 7.6 of Original Agreement is hereby deleted in its entirety and replaced with the following |
License Maintenance Fee. Beginning on the first anniversary of the Effective Date, and each anniversary thereafter, AKOYA will pay Stanford yearly license maintenance fees as follows:
| (A) | $20,000 each Effective Date anniversary until first commercial sale of a Licensed Instrument. For sake of clarity, a commercial sale does not include the sale(s) of an alpha or beta instrument for purposes of obtaining user feedback for further product development; |
| (B) | $40,000 each Effective Date anniversary thereafter until 2022 Effective Date anniversary, 2022 or when AKOYA reaches cumulative Net Sales of $[***], whichever occurs earlier; and |
| (C) | $50,000 each Effective Date anniversary thereafter. |
Yearly maintenance payments are nonrefundable, but they are creditable each year as described in Section 7.12.
| 2.3 | Paragraph 7.7 will be amended to include: |
7.7(C) $[***]upon first to issue of Licensed Patents claiming priority to US provisional Application Serial Number [***].
| 2.4 | Appendix A will be deleted and replaced by the attached Appendix A. |
| 3. | OTHER TERMS |
| 3.1 | Within 30 days following execution of this Amendment, AKOYA will pay to Stanford a one-time noncreditable, nonrefundable payment of $[***]. |
| 3.2 | All other terms of the Original Agreement remain in full force and effect. |
| 3.3 | The parties to this document agree that a copy of the original signature (including an electronic copy) may be used for any and all purposes for which the original signature may have been used. The parties further waive any right to challenge the admissibility or authenticity of this document in a court of law based solely on the absence of an original signature. |
Page 2 of 5
CERTAIN CONFIDENTIAL PORTIONS OF THIS EXHIBIT HAVE BEEN OMITTED AND REPLACED WITH “[***]”. SUCH IDENTIFIED INFORMATION HAS BEEN EXCLUDED FROM THIS EXHIBIT BECAUSE IT IS (I) NOT MATERIAL AND (II) WOULD LIKELY CAUSE COMPETITIVE HARM TO THE COMPANY IF DISCLOSED.
| S14-157 MW | Amendment | 11/18/2016 |
The parties execute this Amendment No 1 by their duly authorized officers or representatives.
| THE BOARD OF TRUSTEES OF THE | |||
| ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇ JUNIOR UNIVERSITY | |||
| Signature: | /s/ ▇▇▇▇ ▇. ▇▇▇▇▇ | ||
| Name: | ▇▇▇▇ ▇. ▇▇▇▇▇ | ||
| Title: | Associate Director, OTL | ||
| Date: | November 18, 2016 | ||
| AKOYA BIOSCIENCES, INC. | |||
| Signature: | /s/ ▇▇▇ ▇. ▇▇▇▇ | ||
| Name: | ▇▇▇ ▇. ▇▇▇▇ | ||
| Title: | Chief Financial Officer | ||
| Date: | November 18, 2016 | ||
Page 3 of 5
CERTAIN CONFIDENTIAL PORTIONS OF THIS EXHIBIT HAVE BEEN OMITTED AND REPLACED WITH “[***]”. SUCH IDENTIFIED INFORMATION HAS BEEN EXCLUDED FROM THIS EXHIBIT BECAUSE IT IS (I) NOT MATERIAL AND (II) WOULD LIKELY CAUSE COMPETITIVE HARM TO THE COMPANY IF DISCLOSED.
| S14-157 MW | Amendment | 11/18/2016 |
Appendix A - Milestones
| Milestone | Date | |
1. Hire executive to be responsible for product development |
60 days after Effective Date | |
2. Develop working prototype of Codex 1 Instrument |
Q4 2016 | |
| 3. Develop working prototype of Codex 2 instrument | Q4 2017 | |
| 4. Raise additional funds to support Codex 2 (and Codex 1) commercialization | Q4 2017 | |
| 5. Place Codex 1 beta instrument in academic laboratory | Q1 2018 | |
| 6. Place Codex 2 beta instrument in academic laboratory | Q4 2018 | |
| 7. Develop Codex 1 instrument to be able to analyze 40 parameters per cell | 01 2019 | |
| 8. First commercial sale of Codex 1 instrument | Q3 2019 | |
| 9. Develop Codex 2 specific panels of antibodies/reagents for two applications | Q4 2019 | |
| 10. Secure distributor for European market | Q3 2019 | |
| 11. First commercial sale of Codex 2 instrument | Q4 2020 | |
| 12. First commercial sale of Licensed Product instrument to clinical diagnostics lab | Q42021 | |
| 13. Establish laboratory to offer commercial access to technology via service offering | Q1 2021 | |
| 14. Achieve at least $[***]of cumulative revenue | FYE 2022 |
Page 4 of 5
CERTAIN CONFIDENTIAL PORTIONS OF THIS EXHIBIT HAVE BEEN OMITTED AND REPLACED WITH “[***]”. SUCH IDENTIFIED INFORMATION HAS BEEN EXCLUDED FROM THIS EXHIBIT BECAUSE IT IS (I) NOT MATERIAL AND (II) WOULD LIKELY CAUSE COMPETITIVE HARM TO THE COMPANY IF DISCLOSED.
| S14-157 MW | Amendment | 11/18/2016 |
Note that Codex 1 refers to the technology that is described in Licensed Patent, U.S. Provisional Application Serial Number 62/015,799 filed June 19, 2014 and Codex 2 refers to the technology that is described in Licensed Patent, U.S. Provisional Application Serial Number 62/367,530 filed July 27, 2016.
Should AKOYA fail to meet any of the above milestones, AKOYA and Stanford agree to meet to negotiate commercially reasonable modifications to such milestone. However, if Stanford and AKOYA are not able to come to agreement on such commercially reasonable modifications within a 2 month period starting upon AKOYA notifying Stanford that it would like to re-negotiate such milestones, then the original milestones will remain. In addition, AKOYA and Stanford agree that once AKOYA has achieved the final milestone, the two parties will come together to discuss additional sales or other milestones that will ensure that both the Codex 1 and Codex 2 technology is continued to be offered for the public’s use and benefit.
Page 5 of 5