FORM OF SECOND AMENDMENT TO THE AMENDED AND RESTATED TECHNOLOGY LICENSE AGREEMENT
Exhibit 10.1
FORM OF
SECOND AMENDMENT TO THE
AMENDED AND RESTATED
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 ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇ 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.
| NEUROTROPE BIOSCIENCE, INC. | COGNITIVE RESEARCH ENTERPRISES, INC. | |||
| By: | By: | |||
| Name: ▇▇▇▇▇▇▇ ▇▇▇▇ | Name: ▇▇▇▇▇ ▇▇▇ ▇▇▇▇▇▇ | |||
| Title: Chief Executive Officer | Title: President and Chief Executive Officer | |||
| NRV II, LLC | ||||
| By: | ||||
| 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 |