clsd-ex1021_665.htm



 

Exhibit 10.21

 

SECOND AMENDMENT TO LICENSE AGREEMENT

This Second Amendment (the “Second Amendment”) to the License Agreement (the “Agreement”) dated July 4, 2012, by and among Clearside Biomedical, Inc., a Delaware corporation having a principal place of business at 1220 Old Alpharetta Road, Suite 300, Alpharetta, Georgia 30005 (“Clearside” or “COMPANY”), Emory University, a nonprofit Georgia corporation having offices located at 1599 Clifton Road NE, 4th Floor, Mailstop 1599/001/ l AZ, Atlanta, Georgia 30322 (“Emory”) and the Georgia Tech Research Corporation, a nonprofit corporation with offices located at offices located at 505 10th Street NW, Atlanta, Georgia 30332-0415 (“GTRC” and together with Emory, “LICENSOR”) is effective this 12th day of December, 2016 (the “Second Amendment Effective Date”).

WHEREAS, the parties have made joint advances to the technology licensed pursuant to the Agreement;

WHEREAS the parties have made prior amendment to the Agreement on or around April 2, 2014 (the “First Amendment”) in order to include patents that may issue based on U.S. Provisional Patent Application Serial No. 61/918,992 (the “2014 Patent Application”) in “Licensed Patents”;

WHEREAS, the parties also desire to treat patents that may issue based on U.S. Provisional Patent Application Serial No. 62/364,470 (the “2016 Patent Application”) as Licensed Patents during the term of the Agreement; and

WHEREAS, in connection with such advances, the parties hereto wish to make certain changes to the Agreement.

NOW THEREFORE, in consideration of the promises, undertakings and covenants set forth in this First Amendment, the receipt and sufficiency of which are hereby agreed and acknowledged, the parties agree as follows:


	
 
	
1.
	
Additional License Fee.  As partial consideration for the license granted to COMPANY with respect to the 2014 Patent Application, COMPANY shall pay LICENSOR a license fee in the amount of fifteen thousand ($15,000) Dollars within thirty (30) days of the Second Amendment Effective Date.





	
 
	
2.
	
Amendment of Appendix B.  Appendix B of the Agreement and the First Amendment shall be deleted and replaced with the Appendix B attached hereto.





	
 
	
3.
	
Miscellaneous.





	
 
	
3.1.
	
Defined Terms.   Capitalized terms undefined herein shall have the meaning ascribed to them in the Agreement.





	
 
	
3.2.
	
No Other Amendment; Effectiveness.  Except as expressly amended herein, the Agreement and the First Amendment remain in full force and effect according to their original terms.




 



 


	
 
	
3.3.
	
Governing Law.  This Second Amendment shall be construed under and governed by the laws of the State of Georgia and the United States of America.





	
 
	
3.4.
	
Severability. All rights and restrictions contained herein may be exercised and shall be applicable and binding only to the extent that they do not violate any applicable laws and are intended to be limited to the extent necessary so that they will not render this Agreement illegal, invalid or unenforceable. If any provision or portion of any provision of this Agreement, not essential to the commercial purpose of this Agreement, shall be held to be illegal, invalid or unenforceable by a court of competent jurisdiction, it is the intention of the parties that the remaining provisions or portions thereof shall constitute their agreement with respect to the subject matter hereof, and all such remaining provisions, or portions thereof, shall remain in full force and effect.  To the extent legally permissible, any illegal, invalid or unenforceable provision of this Agreement shall be replaced by a valid provision which shall implement the commercial purpose of the illegal, invalid, or unenforceable provision.





	
 
	
3.5.
	
Counterparts. This Second Amendment may be executed electronically and in counterparts, each of which is deemed an original, but all of which together shall constitute one and the same instrument.




 

IN WITNESS WHEREOF, the parties have caused this Second Amendment to be executed by their duly authorized representatives as of the Second Amendment Effective Date.

 


	
EMORY UNIVERISTY
	
 
	
GEORGIA TECH RESEARCH CORPORATION

	
 
	
 
	
 

	
By:  Todd Sherer
	
 
	
By:  Lauren MacLanahan

	
Name:  /s/Todd Sherer
	
 
	
Name:  /s/Lauren MacLanahan

	
Title:  Director, OTT
	
 
	
Title:  Sr. Director

	
Date:  December 19, 2016
	
 
	
Date:  December 19, 2016 

	
 
	
 
	
 

	
 
	
 
	
By:  Jilda D. Garton

	
 
	
 
	
Name:  /s/Jilda D. Garton

	
 
	
 
	
Title:  General Manager

	
 
	
 
	
Date:  December 19, 2016




 


	
CLEARSIDE BIOMEDICAL, INC.
	
 
	
 

	
 
	
 
	
 

	
By:  Rick McElheny
	
 
	
 

	
Name:  /s/Rick McEleny
	
 
	
 

	
Title:  VP Business Development
	
 
	
 

	
Date:  December 19, 2016
	
 
	
 

	
 
	
 
	
 




 

 



 

APPENDIX B

 

LICENSED PATENTS

 

Licensor solely owned

 


					
	
Application No.
	
Country
	
File Date
	
Patent Number
	
Issue Date

	
11/743,535
	
US
	
5/2/2007
	
7,918,814
	
4/5/2011

	
PCT/US2007/068055
	
PCT
	
5/2/2007
	
 
	
 

	
12/767,768
	
US
	
5/2/2007
	
8,197,435
	
6/12/2012

	
61/172,409
	
US
	
4/24/2009
	
 
	
 

	
PCT/US2011/033987
	
PCT
	
4/26/2011
	
 
	
 

	
13/447,246
	
US
	
5/2/2007
	
8,808,225
	
8/19/2014

	
13/453,407
	
US
	
5/2/2007
	
8,636,713 
	
1/28/2014

	
2011248624
	
AU
	
4/26/2011
	
2011248624
	
2/18/2016

	
BR 11 2012 027416-3
	
BR
	
4/26/2011
	
 
	
 

	
2,797,258
	
CA
	
4/26/2011
	
 
	
 

	
201180024176.5
	
CN
	
4/26/2011
	
 
	
 

	
11777924.9
	
EP
	
4/26/2011
	
 
	
 

	
10099/DELNP/2012
	
IN
	
4/26/2011
	
 
	
 

	
222638
	
IL
	
4/26/2011
	
 
	
 

	
2013-508168
	
JP
	
4/26/2011
	
5996526
	
9/2/2016

	
MX/a/2012/012495
	
MX
	
4/26/2011
	
 
	
 

	
603185
	
NZ
	
4/26/2011
	
603185
	
8/1/2014

	
2012147341
	
RU
	
4/26/2011
	
 
	
 

	
201207910-9
	
SG
	
4/26/2011
	
185034
	
4/27/2015

	
2012/08069
	
ZA
	
4/26/2011
	
 
	
 

	
701069
	
NZ
	
4/26/2011
	
701069
	
8/30/2016

	
14/136,657
	
US
	
5/2/2007
	
 
	
 

	
2014/00616
	
ZA
	
4/26/2011
	
2014/00616
	
10/23/2015

	
623752
	
NZ
	
4/26/2011
	
 
	
 

	
2015103031720
	
CN
	
4/26/2011
	
 
	
 

	
2016-068174
	
JP
	
3/30/2016
	
 
	
 

	
2015230874
	
AU
	
10/01/2015
	
 
	
 




 



 

 


					
	
Application No.
	
Country
	
File Date
	
Patent Number
	
Issue Date

	
61/918,992
	
US
	
12/20/2013
	
 
	
 

	
PCT/US2014/071623
	
PCT
	
12/19/2014
	
 
	
 

	
14825067.3
	
EP
	
6/9/2016
	
 
	
 

	
15/103,908
	
US
	
6/13/2016
	
 
	
 

	
2,933,900
	
CA
	
12/19/2014
	
 
	
 




 

2016 Patent Application


					
	
Application No.
	
Country
	
File Date
	
Patent Number
	
Issue Date

	
62/364,470
	
US
	
7/20/2016
	
 
	
 




 

 

Jointly Owned Patents

 


					
	
Application No.
	
Country
	
File Date
	
Patent Number
	
Issue Date

	
61/693,542
	
US
	
8/27/2012
	
 
	
 

	
61/754,495
	
US
	
1/18/2013
	
 
	
 

	
61/784,817
	
US
	
3/14/2013
	
 
	
 

	
PCT/US2013/056863
	
PCT
	
8/27/2013
	
 
	
 

	
2,882,184
	
CA
	
8/27/2013
	
 
	
 

	
13833318.2
	
EP
	
8/27/2013
	
 
	
 

	
14/424,685
	
US
	
8/27/2013