Fifth Amendment to License Agreement

EXHIBIT 10.2

Certain identified information has been excluded from this exhibit because such information both (i) is not material and (ii) would likely cause competitive harm if publicly disclosed. Excluded information is indicated with brackets and asterisks.

UNIVERSITY of PENNSYLVANIA

Fifth Amendment to License Agreement

 

This Fifth Amendment to License Agreement (this “Fifth Amendment”) effective as of September 11, 2020 (this “Fifth Amendment Effective Date”), is made by and between The Trustees of the University of Pennsylvania (“Penn”) and REGENXBIO Inc. (“Company”) (collectively, the “Parties”) and amends the License Agreement between the Parties, which was effective as of February 24, 2009, as subsequently amended by a First Amendment dated March 6, 2009, a Second Amendment dated September 9, 2014, a Third Amendment dated April 29, 2016, and a Fourth Amendment dated April 4, 2019 (the “License Agreement”). All capitalized terms used but not defined herein shall have the meaning set forth in the License Agreement.

 

BACKGROUND

 

WHEREAS, the Parties desire to amend the License Agreement to clarify the division of recoveries in infringement litigation, to correct a scrivener’s error in Section 8.5 and to update payment and notice addresses;

 

NOW, THEREFORE, in consideration of the mutual covenants and promises contained herein, the Parties, intending to be bound, hereby mutually agree to the following:

 

 

 

“8.5Recoveries from Litigation. Except as expressly provided in this Section 8.5 or as otherwise agreed between the parties, if Company prosecutes any infringement claims, Company will use the financial recoveries from such claims, if any, (a) first, to reimburse [****] for its litigation expenditures; and (b) second, to retain any remainder but to treat the remainder as [****] for the purpose of determining [****]. If Company prosecutes any infringement claims with Penn joined as a voluntary party, unless otherwise agreed between the parties, then Company will use the financial recoveries from such claims, if any, (a) first, to reimburse [****] and [****] for their respective litigation expenditures on a dollar-for-dollar basis; and (b) second, to retain any remainder but to [****]. If Penn prosecutes any infringement claims independent of [****], then Penn will prosecute such infringement at [****] expense and will retain any financial recoveries [****].”

 

 

 

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“4.6Place of Payment. All payments by Company to Penn hereunder shall be made by deposit of USD in the requisite amount to the “The Trustees of the University of Pennsylvania” and will be made by delivery to any one of the following:

 

 

 

 

 

[Intentionally left blank]

 

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IN WITNESS WHEREOF, the Parties, intending to be legally bound, have caused this Fifth Amendment to be executed by their duly authorized representatives.

 

 

 

 

 

Address:Address:

Penn Center for Innovation▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇

University of PennsylvaniaSuite 210

▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇.,▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇

9^th FloorAttention: CEO

▇▇▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇ Attention: Managing Director

 

Required copy to:

University of Pennsylvania▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇

Office of General CounselSuite 210

▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇

▇▇▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇Attention: Chief Legal Officer Attention: General Counsel

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