Execution Version
CONFIDENTIAL
Exhibit 10.28
CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY [*], HAS BEEN OMITTED BECAUSE IT IS NOT MATERIAL AND WOULD LIKELY CAUSE COMPETITIVE HARM TO SUTRO BIOPHARMA, INC. IF PUBLICLY DISCLOSED.
OPTION AND LICENSE AGREEMENT
THIS OPTION AND LICENSE AGREEMENT (this “Agreement”), entered into as of October 9, 2021 (the “Effective Date”), is entered into by and between BioNova Pharmaceuticals Limited, a company incorporated under the laws of Hong Kong, having its registered office at Unit 417, 4th floor, Lippo Centre Tower Two, No. 89 Queensway Admiralty, Hong Kong (“BioNova”), and Sutro Biopharma, Inc., with its headquarters at 111 Oyster Point Boulevard, South San Francisco, CA 94080, U.S.A. (“Sutro”).
INTRODUCTION
WHEREAS, BioNova wishes to obtain from Sutro and Sutro wishes to grant to BioNova certain rights and licenses under intellectual property owned or controlled by Sutro to Develop, Manufacture and Commercialize Licensed Products in the Field in the Territory (each as defined below), subject to the terms and conditions set forth herein.
NOW, THEREFORE, in consideration of the premises and the mutual promises and conditions hereinafter set forth, and other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the Parties, intending to be legally bound, do hereby agree as follows:
DEFINITIONS
Unless the context clearly indicates otherwise, the following terms used in this Agreement will have the meanings set forth in this ARTICLE I:
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(i) is published by a Third Party or otherwise is or hereafter becomes part of the public domain by public use, publication, general knowledge or the like through no breach of this Agreement on the part of the receiving Party;
(ii) is in the receiving Party’s possession prior to disclosure by the disclosing Party hereunder, and not through a prior disclosure by the disclosing Party, without any obligation of confidentiality with respect to such information (as evidenced by the receiving Party’s or such Affiliate’s written records or other competent evidence);
(iii) is subsequently received by the receiving Party from a Third Party who is not known by the receiving Party to be under an obligation of confidentiality to the disclosing Party under any agreement between such Third Party and the disclosing Party; or
(iv) is independently developed by or for the receiving Party without reference to, or use or disclosure of, the disclosing Party’s Confidential Information (as evidenced by the receiving Party’s or such Affiliate’s written records or other competent evidence);
provided, further, that clauses (ii) through (iv) above will not apply to the terms and conditions of this Agreement.
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(a) discounts (including trade, cash and quantity discounts), cash and non-cash coupons, charge back payments and rebates granted to managed health care organizations, hospitals, pharmacies, or group purchasing organizations, or to federal, state and local governments, their agencies, and purchasers and reimbursors or to customers or required by applicable Law (including governmental medical assistance programs);
(b) credits, allowances, repayments, discounts to and chargebacks for claims, spoiled, damaged, or outdated goods, rejections or returns of the Licensed Products, including Licensed Products returned in connection with recalls or withdrawals;
(c) any sales, value added or similar taxes, insurance, custom duties, excise or other similar governmental charges levied directly on the production, sale, transportation, delivery or use of a Licensed Product that are paid by or on behalf of the Selling Party, but not including any tax levied with respect to income;
(d) actual freight and insurance costs and other expenses incurred in distributing, warehousing, importing, handling and transporting the Licensed Product to distributors or customers;
(e) wholesaler’s stocking, inventory management or distribution fees; and
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(f) amounts that are written off as uncollectible; provided that if any such written-off amounts are subsequently collected, such collected amounts will be included in Net Sales in the Calendar Quarter in which they are subsequently collected.
In the event that a Licensed Product is sold as a Combination, Net Sales, for the purposes of determining royalty payments on the Combination, will mean the gross amount collected for the Combination less the deductions set forth in clauses (a) - (f) above, multiplied by a proration factor that is determined as follows:
(i) If all active pharmaceutical components of the Combination were sold separately, the proration factor will be determined by the formula [*];
(ii) If the Licensed Product components containing only the Licensed Compound as their Active Ingredient are sold separately from the other component(s), but the other Active Ingredient components in such Combination are not sold separately, then the proration factor will be determined by the formula [*];
(iii) If the Licensed Product components containing only the Licensed Compound as their Active Ingredient are not sold separately from the other component(s), but the other Active Ingredient components in such Combination are sold separately, then the proration factor will be determined by the formula [*] or
(iv) If all Active Ingredient(s) of the Combination were not sold or provided separately, the proration factor will be determined by the Parties in good faith negotiations based on the relative value contributed by each component.
With respect to the calculation of Net Sales:
(A) Net Sales only include the value charged or invoiced on the first arm’s length sale to a Third Party. The transfer of a Licensed Product to an Affiliate, Sublicensee, or other Third Party (w) in connection with the Development or testing of a Licensed Product (including the conduct of Clinical Studies), (x) for purposes of distribution as promotional samples, (y) for indigent or similar public support or compassionate use programs, or (z) by and between BioNova and its Affiliates or its or their Sublicensees will not, in any case, be considered a Net Sale of a Licensed Product under this Agreement;
(B) Net Sales (including deductions taken in accordance with subsections (a)-(f) above) shall be determined in accordance with the Accounting Standards or in the case of Sublicensees, such similar accounting principles, consistently applied; and
(C) Notwithstanding anything to the contrary in this Agreement, in no event (after accounting for deductions taken in accordance with subsections (a)-(f) above) shall Net Sales for a Licensed Product be lower than ‘net sales’ of such Licensed Product as reported in BioNova’s (or the applicable Affiliate’s or Sublicensee’s) publicly available financial statements or reports.
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LICENSE OPTION
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LICENSE GRANTS
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DEVELOPMENT
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MANUFACTURE AND SUPPLY
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Commercialization
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GOVERNANCE; JOINT STEERING COMMITTEE
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FINANCIAL PROVISIONS
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Development Milestone Event | Development Milestone Payment |
[*] | [*] |
[*] | [*] |
[*] | [*] |
[*] | [*] |
[*] | [*] |
[*] | [*] |
Total: | [*] |
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Sales Milestone Event | Sales Milestone Payment for Licensed Products |
[*] | [*] |
[*] | [*] |
[*] | [*] |
[*] | [*] |
Total | [*] |
Portion of the Annual Net Sales of Licensed Products | Royalty Rate for Licensed Products |
[*] | [*] |
[*] | [*] |
[*] | [*] |
[*] | [*] |
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INTELLECTUAL PROPERTY OWNERSHIP,
PROTECTION AND RELATED MATTERS
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CONFIDENTIALITY AND PUBLICITY
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REPRESENTATIONS AND WARRANTIES; CERTAIN COVENANTS
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INDEMNIFICATION; DAMAGES
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LIMITATION OF LIABILITY
TERM AND TERMINATION
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DISPUTE RESOLUTION
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MISCELLANEOUS
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If to Sutro: | SUTRO Biopharma, Inc. Email: [*] |
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If to BioNova: | BioNova Pharmaceuticals Ltd. 2889 Jinke Road, Chamime Plaza Building B, 9F, Suite 905 Shanghai 201203, China Attention: Chief Executive Officer Email: [*] |
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IN WITNESS WHEREOF, each Party has caused this Agreement to be duly executed by its authorized representative, in duplicate on the Effective Date.
Sutro Biopharma, Inc.
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Name: William J. Newell
Title: Chief Executive Officer
BioNova Pharmaceuticals Limited
____________________________________
Name: Ye Hua
Title: Director
[Signature Page to Option and License Agreement]
Exhibit A
LICENSED COMPOUND
[*]
[Signature Page to Option and License Agreement]
Exhibit B
LICENSED MARKS
[*]
[Signature Page to Option and License Agreement]
Exhibit C
LICENSED PATENTS
[*]
Exhibit D
[*]
Exhibit E
BIONOVA DEVELOPMENT PLAN FOR THE TERRITORY (TERRITORY-SPECIFIC DEVELOPMENT PLAN)
[*]
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Exhibit F
SAMPLE SUTRO INVOICE
[*]
Exhibit G
PRC SAMPLE LABEL FOR PRODUCT IMPORTATION
[*]
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Exhibit H
CLINICAL SUPPLY AND BIONOVA ORDER
[*]
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Exhibit I
[*]
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