Exhibit 10.1
CERTAIN CONFIDENTIAL PORTIONS OF THIS EXHIBIT HAVE BEEN OMITTED AND REPLACED WITH “[***]”. SUCH IDENTIFIED INFORMATION HAS BEEN EXCLUDED FROM THIS EXHIBIT BECAUSE IT IS (I) NOT MATERIAL AND (II) IS THE TYPE THAT THE REGISTRANT TREATS AS PRIVATE OR CONFIDENTIAL.
EXECUTION VERSION
AMENDMENT TO EXCLUSIVE LICENSE AGREEMENT
THIS AMENDMENT TO EXCLUSIVE LICENSE AGREEMENT (this “Amendment”) dated as of June 7, 2023 (the “Effective Date”) is entered into by and among Candel Therapeutics, Inc., a Delaware corporation f/k/a Advantagene, Inc. (“Candel”), having a place of business at 117 Kendrick Street, Suite 450, Needham, MA 02494, PeriphaGen, Inc, a Delaware corporation (“PeriphaGen”), having a place of business at 2403 Sidney Street, Suite 255, Pittsburgh, PA 15203, and PeriphaGen Holdings, Inc., a Delaware corporation (“Holdings”), having a place of business at 2403 Sidney Street, Suite 255, Pittsburgh, PA 15203.
WHEREAS, Candel, PeriphaGen, and Holdings entered into an Exclusive License Agreement as of December 9, 2019 (the “Exclusive License Agreement”);
WHEREAS, a dispute has arisen between Candel and PeriphaGen concerning Candel’s performance of certain obligations under the Exclusive License Agreement;
WHEREAS, Candel has filed an arbitration demand with the American Arbitration Association, Case No. 01-23-0000-1721, and PeriphaGen has filed counterclaims in that proceeding (hereinafter referred to as the “Arbitration”); and
WHEREAS, Candel, PeriphaGen, and Holdings now desire to amend the Exclusive License Agreement in order to resolve their dispute.
NOW, THEREFORE, in consideration of the foregoing premises and the mutual covenants herein contained, the parties hereby agree as follows:
The Exclusive License Agreement is hereby amended as follows:
“Field” means the treatment, diagnosis, and prevention of oncologic diseases and conditions.
“Excluded Field” shall means all fields of use with the sole exception of the Field.
“Candel Improvements” means Improvement(s) invented or derived by Candel during the Term and prior to April 27, 2022, but not any Improvements invented or conceived after April 27, 2022.
“PeriphaGen Improvements” means Improvement(s) invented or derived by PeriphaGen during the Term and prior to April 27, 2022, but not any Improvements invented or conceived after April 27, 2022; and excluding any PeriphaGen Improvement that is the property of Diamyd Medical AB as a result of the performance of the Diamyd Work (as such term is defined in that certain Intellectual Property Assignment Agreement entered into between PeriphaGen, Holdings, and Candel as of December 9, 2019).
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For the avoidance of doubt, all rights relating to Gene Transfer Neuro Assets and NT-3 Assets shall revert to PeriphaGen, and Candel shall have no rights to, or obligations with respect to (including without limitation diligence obligations and payment obligations), Gene Transfer Neuro Assets and NT-3 Assets, and the Exclusive License Agreement is hereby amended to reflect the foregoing, mutandis mutatis.
On or before June 21, 2023, Candel shall provide to PeriphaGen all records maintained by Candel pursuant to Section 8.5 of the Exclusive License Agreement.
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Within [***] business days after the Effective Date, counsel for Candel and PeriphaGen shall file appropriate papers with the American Arbitration Association to terminate the Arbitration. Candel and PeriphaGen shall bear their own respective attorneys’ fees and costs in connection with the Arbitration.
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IN WITNESS WHEREOF, the parties hereto have caused this Amendment to be executed by their duly authorized representatives.
PERIPHAGEN HOLDINGS, INC.
By: /s/ David Krisky
Name: David Krisky
Title: President
PERIPHAGEN, INC.
By: /s/ James Wechuck
Name: James Wechuck
Title: Secretary
CANDEL THERAPEUTICS, INC.
By: /s/ Paul Peter Tak
Name: /s/ Paul Peter Tak
Title: President & CEO
[Signature Page to Amendment to Exclusive License Agreement]
Exhibit A
PeriphaGen NT-3 Patent Rights
Country | Application Status | Application No. | Filing Date | Patent No. | Issue Date | Application Title |
[***] | [***] | [***] | [***] | [***] | [***] | [***] |
[***] | [***] | [***] | [***] | [***] | [***] | [***] |
[***] | [***] | [***] | [***] | [***] | [***] | [***] |
[***] | [***] | [***] | [***] | [***] | [***] | [***] |
[***] | [***] | [***] | [***] | [***] | [***] | [***] |
[***] | [***] | [***] | [***] | [***] | [***] | [***] |
[***] | [***] | [***] | [***] | [***] | [***] | [***] |
[***] | [***] | [***] | [***] | [***] | [***] | [***] |
[***] | [***] | [***] | [***] | [***] | [***] | [***] |
[***] | [***] | [***] | [***] | [***] | [***] | [***] |
[***] | [***] | [***] | [***] | [***] | [***] | [***] |