FOURTH AMENDMENT TO LICENSE AGREEMENT

Exhibit 10.15(e)

 

CERTAIN CONFIDENTIAL INFORMATION IN THIS DOCUMENT, MARKED BY [***], HAS BEEN OMITTED BECAUSE IT IS BOTH (I) NOT MATERIAL AND (II) WOULD BE COMPETITIVELY HARMFUL IF PUBLICLY DISCLOSED

 

FOURTH AMENDMENT TO LICENSE AGREEMENT

 

This Fourth Amendment (this “Fourth Amendment”), is effective as of October 25, 2021 (the “Fourth Amendment Effective Date”), by and between President an Fellows of Harvard University (“Harvard”), and Sana Biotechnology, Inc., a corporation organized and existing under the laws of the State of Delaware (“Licensee”) (together with Harvard, the “Parties” and each individually a “Party”), and amends that certain License Agreement, dated as of March 19, 2019, as amended by those certain Amendments to the License Agreement dated as of June 10, 2019, December 15, 2020, and May 20, 2021, by and between Harvard and Licensee (together, the “Agreement”). Capitalized terms used but not defined herein have the respective meanings assigned to them in the Agreement.

 

RECITALS

 

WHEREAS, the Parties entered into the Agreement, pursuant to which Licensee’s license under the [***] Patent Rights was limited to certain applications; and

 

WHEREAS, the Parties wish to amend the License Agreement to revise the rights granted to Licensee under the [***] Patent Rights.

 

NOW THEREFORE, the Parties agree as follows:

 

 

The following definitions are hereby deleted in their entirety:

 

 

 

The following definition is hereby added to the Agreement as new Section 1.36A:

 

“Exclusive Patent Rights” means those patents and patent applications listed beside Harvard Case Nos. [***], [***], [***], and [***], as the case may be, in Exhibit 1.73 hereto, (including the PCT or U.S. utility application claiming priority to such application(s) that are filed on such application(s)); (b) any patent or patent application that claims priority to or is a divisional, continuation, reissue, renewal, reexamination, substitution or extension of any patent application identified in (a); (c) any patents issuing on any patent application identified in (a) or (b), including any reissues, renewals, reexaminations, substitutions or extensions thereof; (d) any claim of a continuation-in-part application or resulting patent (including any reissues, renewals, reexaminations, substitutions or extensions thereof) that is entitled to the priority date of, and is directed specifically to subject matter specifically described in, at least one of the patents or patent applications identified in (a), (b) or (c); (e) any foreign counterpart (including PCTs) of any patent or patent application identified in (a), (b) or (c) or of the claims identified in (d); and (f) any supplementary protection certificates, pediatric exclusivity periods, any other patent term extensions and exclusivity periods and the like of or based on any patents and patent applications identified in (a) through (e).

 

 

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The definition of Licensed Product in Section 1.61 is hereby deleted and replaced in its entirety with the following:

 

“Licensed Product” means:

[***]

 

or

 

or

For clarity, Licensed Product includes Combination Regimens.

 

 

Section 2.1.1 is hereby deleted in its entirety and replaced with the following:

 

Exclusive License Grant.  Subject to the terms and conditions set forth in this Agreement, Harvard hereby grants to Licensee an exclusive, worldwide, royalty-bearing license, sublicensable solely in accordance with Section 2.3 (Affiliates) and Section 2.4 (Sublicenses), under Harvard’s interest in the Exclusive Patent Rights, solely to make, have made, use, offer for sale, sell, have sold and import Licensed Products and to otherwise practice under the Exclusive Patent Rights, in each case, solely within the [***] Field.

 

 

The first sentence of Section 6.2 is hereby deleted in its entirety and replaced with the following:

 

Subject to Section 7.3 (Suit by Harvard), Licensee shall reimburse Harvard for all documented, unreimbursed, out-of-pocket expenses incurred by Harvard pursuant to this Article 6 (Patent Filing, Prosecution and Maintenance) for any period in which this Agreement is in effect; provided that, with respect to the [***], Licensee shall reimburse Harvard for such expenses on a pro rata basis with any other licensees of such Patent Rights.

 

 

Section 7.1 is hereby deleted in its entirety and replaced with the following:

 

Notice.  In the event either party becomes aware of any possible or actual infringement of (a) any Exclusive Patent Rights with respect to Licensed Products in the [***] Field (the foregoing actions, each an “Infringement”) or (b) any [***] Patent Rights, in each case ((a) and (b)), that party shall promptly notify the other party and provide it with details regarding such Infringement.

 

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The first sentence of Section 7.6 is hereby deleted in its entirety and replaced with the following, and the last sentence of Section 7.6 is hereby deleted in its entirety:

 

As between the parties, Licensee will have the first right, but not the obligation, to defend against a declaratory judgment action, inter partes review, opposition proceeding, post grant review, interference or other action initiated by a Third Party challenging any claims within the Exclusive Patent Rights in which Licensee and/or any of its Affiliates or Sublicensees are named defendants.

 

The last sentence of Section 7.6 is hereby deleted in its entirety.

 

 

In partial consideration for the expansion of the rights granted to Licensee under the Exclusive Patent Rights referenced in Harvard Case Nos. [***] and [***], Licensee shall pay to Harvard, within [***] days after the Fourth Amendment Effective Date, an aggregate amount of US$[***], to be allocated equally to Harvard Case Nos. [***]and [***].

 

 

 

 

 

 

 

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[Signature page follows]

 

 

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IN WITNESS WHEREOF, the Parties have duly executed and delivered this Fourth Amendment as of the Fourth Amendment Effective Date.

 

 

HARVARD:

PRESIDENT AND FELLOWS OF HARVARD COLLEGE

 

 

 

 

 

LICENSEE:

SANA BIOTECHNOLOGY, INC.

 

 

 

[Signature Page to Fourth Amendment to License Agreement]