Item 1.01 Entry into a Material Definitive Agreement.
On December 29, 2022, Genprex, Inc. ("Genprex") and the University of Pittsburgh
- Of the Commonwealth System of Higher Education ("UP") entered into an
Exclusive License Agreement (the "UP License Agreement"), pursuant to which UP
granted to Genprex a worldwide, exclusive license under a certain patent and
related technology, referred to collectively as the licensed technology, and a
worldwide, non-exclusive license to use certain related know-how, all related to
gene therapy for Type 2 diabetes using the genes of the Pdx1 and MafA
transcription factors.
The UP License Agreement authorizes Genprex to make, have made, use and sell the
licensed technology and to practice the patent rights in the field of diabetes
therapy. Genprex may enter into sublicensing arrangements for the rights,
privileges and licenses granted under the UP License Agreement upon the prior
written approval of UP. Genprex agreed to use its diligent and commercially
reasonable efforts to bring the licensed technology to market, to continue
active, diligent marketing efforts for the licensed technology throughout the
term of the UP License Agreement, and to achieve certain milestones within
specified time periods. Genprex agreed to submit annual progress reports to UP
and, beginning in the year of the first commercial sale of the licensed
technology, quarterly reports of manufacturing, sales and sublicense activities
to UP including information as would allow the calculation of amounts owing to
UP on account of such activities, as well as Genprex's calculation of such
amounts.
UP has reserved the royalty-free, nonexclusive right to practice the patent
rights and know-how and to use the licensed technology for non-commercial
education and research purposes, and Genprex agreed to sell licensed technology
to UP and its affiliates upon request at the price and terms as are made
available to Genprex's most favored customer. The licenses granted to Genprex
under the UP License Agreement are subject to the rights of the U.S. government,
which may have acquired a nonexclusive, nontransferable, paid up license to
practice or have practiced for or on behalf of the United States the inventions
described in the patent rights throughout the world.
As consideration for the UP License Agreement, Genprex agreed to pay UP an
initial license fee, annual maintenance fees, running single digit royalties,
minimum annual royalties in a fixed cash amount, a low double digit percentage
share of non-royalty sublicense income, and certain milestone payments up to an
aggregate of approximately $4,000,000, as well as patent prosecution expenses
incurred prior to and after the effective date of the UP License Agreement.
The UP License Agreement remains in effect until the later of 20 years after the
first commercial sale of the licensed technology or the expiration of the last
valid claim of the patents licensed under the UP License Agreement. UP may
terminate the agreement in the event of Genprex's uncured default, failure to
achieve the specified milestones within the specified time period, or
intentional practice of the licensed patent rights or know-how outside the field
of diabetes therapy, or if Genprex ceases to carry out its business, becomes
bankrupt or insolvent, applies for or consents to the appointment of a trustee,
receiver or liquidator of its assets or seeks relief under any law for the
relief of debtors. Genprex may terminate the UP License Agreement upon six
months prior written notice to UP and payment of all amounts accrued or due to
UP through the effective date of termination.
The foregoing description of the material terms of the UP License Agreement does
not purport to be complete and is subject to, and is qualified in its entirety
by, reference to the UP License Agreement, a copy of which is filed as Exhibit
10.1 to this Current Report on Form 8-K and incorporated herein by reference.
Item 7.01 Other Events.
Press Releases
On January 4, 2023 and January 5, 2023, the "Company issued press releases. The
full text of the press releases are attached to this Current Report on Form 8-K
as Exhibits 99.1 and 99.2, respectively.
The information in this Current Report on Form 8-K under Item 7.01, including
the information contained in Exhibit 99.1 and Exhibit 99.2, is being furnished
to the Securities and Exchange Commission, and shall not be deemed to be "filed"
for the purposes of Section 18 of the Securities Exchange Act of 1934 or
otherwise subject to the liabilities of that section, and shall not be deemed to
be incorporated by reference into any filing under the Securities Act of 1933 or
the Securities Exchange Act of 1934, except as shall be expressly set forth by a
specific reference in such filing.
Item 9.01: Financial Statements and Exhibits.
(d) Exhibits.
Exhibit
Number Description
10.1# Exclusive License Agreement, dated December 29, 2022.
99.1 Press Release, dated January 4, 2023.
99.2 Press Release, dated January 5, 2023.
104 Cover Page Interactive Data File (embedded within the Inline XBRL
document).
# Certain portions of this exhibit were redacted pursuant to Item 601(b)(10) of
Regulation S-K and Genprex, Inc. agrees to furnish supplementally to the U.S.
Securities and Exchange Commission a copy of any omitted schedule and/or exhibit
upon request. The portions of this exhibit that were omitted by means of marking
such portions with asterisks because the identified portions are both (i) not
material, and (ii) the type that registrant treats as private or confidential.
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