Exhibit 10.29
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.
LICENSE AGREEMENT
BY AND BETWEEN
SUTRO BIOPHARMA, INC.
AND
TASLY BIOPHARMACEUTICALS CO., LTD.
December 20, 2021
LICENSE AGREEMENT
This License Agreement (the “Agreement”) is entered into as of December 20, 2021 (the “Effective Date”) by and between Sutro Biopharma, Inc., a Delaware corporation with a place of business at, 111 Oyster Point Boulevard, South San Francisco, CA 94080, U.S.A. (“Sutro”) and Tasly Biopharmaceuticals Co., Ltd., a Chinese corporation with a place of business at 280 JuLi Road, China (Shanghai) Pilot Free Trade Zone, P.C.201203 (“Licensee”). Sutro and Licensee are sometimes referred to herein individually as a “Party” and collectively as the “Parties”.
RECITALS
WHEREAS, Licensee wishes to obtain from Sutro and Sutro wishes to grant to Licensee certain rights and licenses under intellectual property Controlled by Sutro to Develop, Manufacture and Commercialize the Product 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 foregoing and the mutual agreements set forth below, and other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the Parties agree as follows:
DEFINITIONS AND CONSTRUCTION
The following terms shall have the following meanings as used in this Agreement:
2
3
4
5
6
7
8
The methodology for calculating (i)–(viii) shall conform to P.R.C. GAAP consistently applied. No amount for which deduction is permitted pursuant to this Section shall be deducted more than once.
For the avoidance of doubt, sales between or among Licensee and its Affiliates or Sublicensees will be excluded from the computation of Net Sales, but the subsequent final sales to a Third Party by such Affiliate or Sublicensee will be included in the computation of Net Sales. For the further avoidance of doubt, gross amounts invoiced shall exclude value added taxes payable by Licensee as per Applicable Laws.
Net Sales for a Combination Product in the Territory will mean the gross amount attributable to the Combination Product less the deductions set forth in clauses (i) – (viii) above, to the extent applicable and subject to the limitations set forth above, multiplied by a proration factor that is determined as follows:
9
10
11
12
13
14
GRANT OF RIGHTS AND LICENSES; EXCLUSIVITY
15
16
GOVERNANCE
17
18
GENERAL PROVISIONS ON DEVELOPMENT AND COMMERCIALIZATION
19
20
21
22
23
24
25
SUPPLY
26
27
CONSIDERATION
28
Development Milestone Event | Development Milestone Payment |
Ovarian Cancer | |
[*] | [*] |
[*] | [*] |
[*] | [*] |
[*] | [*] |
[*] | [*] |
[*] | |
[*] | [*] |
[*] | [*] |
TNBC | |
[*] | [*] |
[*] | [*] |
Fourth Target Indication (other than the 3 Target Indications set forth above) | |
[*] | [*] |
[*] | [*] |
Total | [*] |
[*]
29
Sales Milestone Event | Sales Milestone Payment |
[*] | [*] |
[*] | [*] |
[*] | [*] |
[*] | [*] |
Total | [*] |
Sales between Licensee, its Affiliates and Sublicensees shall not be subject to Sales Milestone Payments hereunder. Sales Milestone Payments shall be calculated on Licensee’s, its Affiliates’ and Sublicensees’ sales of the Product to a Third Party.
Portion | Range of Annual Net Sales (USD) | Royalty Rate |
① | [*] | [*] |
② | [*] | [*] |
③ | [*] | [*] |
Royalty for a given Calendar Year = [*]
30
For avoidance of doubt, each royalty rate set forth in the table above shall apply only to that portion of the Annual Net Sales in the Territory during a given Calendar Year that falls within the indicated range.
31
32
33
34
CONFIDENTIALITY
35
36
OWNERSHIP OF INTELLECTUAL PROPERTY AND PATENT RIGHTS
37
38
If as a result of settlement procedures or litigation under this Section 8.05(a), Licensee is required to pay the Third Party a royalty or make any payment of any kind for the right to sell the Product in the Territory, such payments shall be considered Third Party Compensation under Section
39
6.04(d) and Licensee may deduct such Third Party Compensation from its royalty payment obligations to Sutro in accordance with Section 6.04(d).
REPRESENTATIONS, WARRANTIES, AND COVENANTS
40
41
42
(iv) Licensee affirms that it is not subject to sanctions or export restrictions under Export Controls and Economic Sanctions Laws that would require U.S. government authorization for it to receive any U.S. origin services, goods, software, or technology, and it further affirms that its use, transfer, or re-export of the Licensed Compound and the cell extracts under the Extract Supply Agreement will comply with Export Controls and Economic Sanctions Laws.
43
RECORD RETENTION, AUDIT AND USE OF NAME
44
45
TERM AND TERMINATION
46
47
48
49
50
INDEMNIFICATION
51
52
DISPUTE RESOLUTION
53
MISCELLANEOUS
54
55
If to Sutro, addressed to:
SUTRO Biopharma, Inc.
111 Oyster Point Boulevard
South San Francisco, CA 94080
Attention: General Counsel
Email: [*]
If to Licensee, addressed to:
Tasly Biopharmaceuticals Co., Ltd.
280 JuLi Road,
China (Shanghai) Pilot Free Trade Zone, P.C.201203
Attention: [*]
Email: [*]
56
[SIGNATURE PAGE FOLLOWS]
57
[SIGNATURE PAGE]
IN WITNESS WHEREOF, the Parties hereto have caused this Agreement to be executed in duplicate by their respective duly authorized officers or representatives.
Sutro Biopharma, Inc.
By: _____________________
Name: William Newell
Title: Chief Executive Officer
Tasly Biopharmaceuticals Co., Ltd.
By:______________________
Name: Kaijing Yan
Title: Chairman of the Board
58
EXHIBIT A
(Sutro Patents)
[*]
59
EXHIBIT B
(Licensed Compound)
[*]
60
EXHIBIT C
(List of JSC Members)
[*]
61
EXHIBIT D
(Development Plan)[*]
EXHIBIT E
(Sutro Trademarks)
[*]
62
EXHIBIT F
(Terms for Clinical Supply Agreement)
[*]
63