Exhibit 10.7
bing51RESEARCH AGREEMENT
RESEARCH AGREEMENT effective the 1st day of January, 1995 by and between
YALE UNIVERSITY, a non-profit corporation organized and existing under and by
virtue of a special charter granted by the General Assembly of the Colony and
State of Connecticut (the "University") and ONCORPHARM, INC., a Delaware
corporation having its principal offices at 000 Xxxxx Xxxxxxx, Xxxxxxxxxxxx,
Xxxxxxxx 00000 (the "Sponsor").
W I T N E S S E T H :
WHEREAS, in pursuit of its educational purposes, which include research
and training, the University undertakes scholarly, research, and experimental
activities in a variety of academic disciplines including the field of
Oligonucleotide Mediated Gene Therapy; and
WHEREAS, the Sponsor wishes to fund and desires that the University
undertake a research program in the above-named field as described more fully in
Exhibit A, attached hereto; and
WHEREAS, in furtherance of its scholarly, research, and instructional
interests, the University is willing to undertake such research upon the terms
and conditions set forth below;
NOW, THEREFORE, in consideration of the premises and the mutual covenants
herein contained, the parties hereto agree as follows:
1. Scope of Research. During the term of this Agreement, the University
shall use its best efforts to perform the research program described in Exhibit
A, attached hereto and which hereby is incorporated herein (the "Research").
Notwithstanding the foregoing, the University makes no warranties or
representations regarding its ability to achieve, nor shall it be bound hereby
to accomplish, any particular research objective or results.
2. Personnel.
(a) The Research shall be performed by and under the supervision and
direction of Xxxxx X. Xxxxxx, while employed by the University, who shall be
designated the principal investigator, together with such additional personnel
as may be assigned by the University.
(b) The University has disclosed to Sponsor any existing activities,
projects or agreements where Xxxxx Xxxxxx is the Principal Investigator. It is
understood that the University and the personnel performing the Research
hereunder may be or become involved in other activities and projects in the
future which may entail commitments to other sponsors. However, the University
will use its best efforts to avoid any conflicts between the terms of this
Agreement and any commitments to other sponsors. In the event that a potential
or actual conflict arises between the terms of this Agreement and any
commitments to other Sponsors, the University shall give written notice thereof
to Sponsor, as soon as practicable after the University receives notice of the
potential or actual conflict.
3. University Policies and Procedures. All Research conducted hereunder
shall be performed in accordance with established University policies and
procedures, including, but not limited to, policies and procedures applicable to
research involving human subjects, laboratory animals, and hazardous agents and
materials.
4. Reimbursement of Costs.
(a) The Sponsor shall reimburse the University for all direct and indirect
costs incurred by the University in connection with the Research, in accordance
with the budget set forth as Exhibit B, attached hereto and which hereby is
incorporated herein; provided, however, that the University and the Sponsor may
at any time amend Exhibit B by mutual agreement.
(b) The Sponsor shall make quarterly advance payments to the University to
fund reimbursable costs hereunder according to the budget set forth on Exhibit B
attached hereto.
(c) An accounting of actual costs incurred in accordance with Article 4(a)
shall be furnished to Sponsor within 90 days after the end of each year during
the term of this Agreement. All checks shall be made payable to Yale University,
shall include reference to the Principal Investigator, and shall be sent to:
Cashier
P.O. Box 208231 Xxxx Xxxxxxx
Xxx Xxxxx, Xxxxxxxxxxx 00000-0000
5. Research Reports. The University shall furnish to Sponsor during the
term of this Agreement periodic informal reports regarding the progress of the
Research. A final report setting forth the significant research findings shall
be prepared by the University and submitted to Sponsor within a reasonable
period following the expiration of the term of this Agreement or the effective
date of early termination.
6. Publication. In order to avoid the loss of valuable patent rights in
those countries where any disclosure of an invention by publication or otherwise
is a bar to patentability, the University agrees to use its best efforts to
assure that the principal investigator and other University employees and/or
students delay the dissemination or publication of any information developed in
the course of performance of the Research until forty-five (45) days after the
Sponsor has been furnished the full text of any proposed dissemination or
publication. If the Sponsor determines that such dissemination or publication
would jeopardize patent rights granted to Sponsor under this Agreement, the
Sponsor shall notify the University in writing within the forty-five (45) day
period and may elect in such notice to delay the proposed publication for a
further brief period, not to exceed forty-five (45) days, in order to protect
potential patent rights of any invention described therein.
7. Confidential Information. Subject to the following exceptions all
confidential information of the Sponsor disclosed by it to the University in
connection with the Research hereunder and identified in writing by the Sponsor
as confidential will be treated by the University as confidential and will not
be disclosed by anyone and will only be used for the purpose of the Research by
the principal investigator and other personnel who are assigned to perform the
Research, throughout the term hereof and a period of three (3) years from the
date of termination of this Agreement. The University will use reasonable
efforts to safeguard the confidentiality of such confidential information
furnished by the Sponsor hereunder, and will identify such restriction to its
employees, students and associates assigned to the Research, unless the
University can evidence any of the following:
(a) the information is in the public domain or subsequently enters the
public domain through no fault of the University;
(b) the information is presently known or becomes known to the University
from its own independent sources;
(c) the information has been received by the University from a third party
not under any obligation to keep such information confidential;
(d) the information is required to be disclosed by law;
(e) the information has been developed independently at University by
persons who had no direct or indirect access to the information provided by
Sponsor.
8. Patents.
(a) The University shall be entitled to ownership of any invention or
know-how first conceived or discovered solely by the University's employee(s).
To the extent that it has the legal right to do so and in the event that Sponsor
does not already hold a license to such invention or know-how under the terms of
that certain License Agreement between the University and Sponsor dated January
__, 1995, the University shall grant the Sponsor an option to an exclusive
worldwide license to any and all such inventions or know-how made only in the
field of Research and solely owned by the University, on such reasonable terms
and conditions, including reasonable royalties, as the parties may mutually
agree upon in writing, subject to the rights, if any, of the United States
Government under any applicable law or regulation. Sponsor may exercise its
option under Section 8(a) hereof, in each case, by submitting to the University
written notice of its decision to exercise its option, within ninety (90) days
of receipt of the written notice from the University disclosing the invention or
know-how. In the event that Sponsor exercises its option, the parties shall use
their respective best efforts to reach agreement as promptly as possible as to
the definitive terms for the exclusive license of the invention or know-how to
Sponsor. The University may not commercialize itself nor license third parties
to use or commercialize any such invention or know-how until it has first given,
in each case, written notice and disclosure of such invention or know-how to
Sponsor and either Sponsor has failed to exercise its option within ninety (90)
days of receipt of the University's notice or Sponsor has notified the
University in writing that it will not be exercising its option. The University
may then license the inventions and know-how specified in the University's
notice and disclosure to Sponsor to third parties.
(b) The Sponsor shall own title to any invention or know-how first
conceived or discovered solely by Sponsor's employee(s), except that title shall
be jointly owned by the Sponsor and the University if such invention was first
conceived or discovered using University's facilities.
(c) The Sponsor and the University shall jointly own title to any
invention or know-how first conceived or discovered jointly by Sponsor's
employee(s) and the University's employee(s) during the term of the Agreement.
(d) The University and Sponsor shall promptly disclose to each other in
writing any invention or know-how first conceived or discovered in the
performance of the Research in the field of the Research.
(e) The Sponsor may elect in the first instance to file and prosecute a
patent application at its own expense on any invention first conceived or
discovered during the Research if it is
either solely owned by the University and licensed by Sponsor or if it is
jointly owned; however, the University may itself file and prosecute at its own
expense any such patent application, if the Sponsor has not filed a patent
application on such invention within sixty (60) days after receipt of notice and
disclosure of such invention.
(f) For the purposes of this Agreement, the term "know-how" shall mean any
and all technical information, know-how, processes, procedures, compositions,
devices, methods, formulas, protocols, techniques, software, designs, drawings
or data, relating to an invention first conceived or first actually reduced to
practice solely or jointly in the performance of the Research, including but not
limited to know-how which is not disclosed in a patent application or patent.
(g) In relation to any jointly owned inventions and know-how resulting
from the Research, Sponsor and the University hereby agree as follows:
(i) Sponsor may use any jointly owned inventions or know-how for
internal non-commercial purposes without the need to obtain any
consent from the University;
(ii) University may use any jointly owned inventions and know-how
for internal non-commercial purposes without the need to obtain any
consent from Sponsor;
(iii) Sponsor shall have the right to commercialize and the option
to exclusively commercialize any jointly owned invention or
know-how. Subject to the provisions of this Subsection 8(g)(iii),
Sponsor shall exercise its option, in each case, within ninety (90)
days after receipt of written notice from the University (or
dispatch if Sponsor gives the written notice) of the discovery of a
jointly owned invention or know-how (the "Exclusive Option Period"),
by submitting written notice to the University to such effect. In
the event that Sponsor exercises its option, the parties shall use
their respective best efforts to reach agreement as promptly as
possible as to the definitive terms for the exclusive
commercialization of the invention or know-how by Sponsor, on
reasonable terms and conditions, including reasonable royalties to
the University taking into consideration the joint ownership of the
invention or know-how, as the parties may mutually agree upon in
writing. Such an agreement as to commercialization of the jointly
owned inventions and know-how shall be subject to the rights, if
any, of the United States Government under any applicable law or
regulation. The University may not commercialize itself nor license
third parties to use or commercialize the jointly owned inventions
or know-how unless, in each case, the Sponsor has
previously notified the University in writing that it does not wish
to exercise its option to exclusively commercialize such invention
or know-how or the Exclusive Option Period has passed without
notification from Sponsor. In the case that Sponsor notifies the
University in writing that it does not wish to exercise its option,
Sponsor shall notify the University whether it intends to
commercialize its undivided rights in the joint invention or know
how. If Sponsor intends to commercialize the joint invention, then
the University may similarly commercialize its undivided rights in
the joint invention. If Sponsor decides it will not commercialize
the joint invention, then Sponsor and Yale shall have ninety (90)
days to discuss and agree upon how the parties shall market the
jointly owned invention or know-how and how any expenses and income
related to patenting and commercializing such joint invention or
know-how shall be distributed between the two parties.
9. Ownership of Property. Title to any equipment purchased or manufactured
in the performance of the work funded under this Agreement shall vest in the
University.
10. Term and Termination.
(a) This Agreement shall be effective for an initial term of two years
commencing on the date hereof, and may be extended thereafter by mutual
agreement of the parties in writing; provided, however, that the provisions
hereof relating to confidential information, rights in patents and copyrights
and ownership of property under paragraphs 7, 8 and 9 shall survive such
termination.
(b) Notwithstanding the foregoing, the Sponsor shall have the right to
terminate this Agreement immediately by written notice to the University if
Xxxxx X. Xxxxxx ceases to be the principal investigator because of termination
of his employment by the University, his death, or extended absence, or other
similar reasons.
(c) Notwithstanding the foregoing, this Agreement may be terminated by
either party at any time upon 180 days advance written notice to the other
party. Upon receipt of notice of early termination, the University shall use its
best efforts promptly to limit or terminate any outstanding commitments and to
conclude the work. All costs associated with such termination shall be
reimbursable including, without limitation, all non-reimbursed costs and non-
cancelable commitments incurred prior to the receipt of the notice of
termination.
(d) Within 120 days following expiration of the term hereof or the
effective date of termination, the University shall submit to the Sponsor a
final report of all actual costs and
commitments incurred and all funds received under this Agreement, which report
shall be accompanied by a check in the amount of any excess of funds advanced
over costs and allowable commitments incurred, or alternatively by an invoice
for any excess of costs and commitments incurred over funds advanced.
11. Notices. Any notices given under this Agreement shall be in writing
and shall be deemed delivered when sent by first- class mail, postage prepaid,
addressed to the parties as follows (or at such other addresses as the parties
may notify each other in writing):
Yale University: Sponsor:
---------------- --------
Yale University School of Medicine OncorPharm, Inc.
Grant and Contract Administration 000 Xxxxx Xxxxxxx
000 Xxxxx Xxxxxx, X000 XXX Xxxxxxxxxxxx, XX 00000
Xxx Xxxxx, XX 00000 ATTN: Mr. Xxxxxxx Xxxxxx
ATTN: Xxxxx X. Xxxxxx Chief Executive Officer
Associate Director
With a copy to: With a copy to:
--------------- ---------------
Xx. Xxxxx Xxxxxx Xxxxxxx, Xxxxxxx & Xxxxxxxx, LLP
Therapeutic Radiology 1301 Avenue of the Americas
Yale School of Medicine Xxx Xxxx, Xxx Xxxx 00000
000 Xxxxx Xx, HRT ATTN: Xxxxxxx X. Xxxxxxxxx, Esq.
Xxx Xxxxx, XX 00000
12. Use of Name. Sponsor shall not use the name "Yale" or "Yale
University" for any purpose without prior written consent obtained from YALE in
each instance, except for the purposes of referring to this Agreement a) in a
press release reviewed and approved by YALE after execution of this Agreement
and b) required disclosures to be made in documents supplied by Sponsor in
connection with financings. The restrictions specified in this Section 12 shall
not apply to the dissemination of information that has previously been approved
and released by YALE in accordance with this Section 12.
13. Relationship of the Parties. The University, for all purposes related
to this Agreement, shall be deemed an independent contractor of the Sponsor, and
nothing in this Agreement shall be deemed to create a relationship of employment
or agency or to constitute the parties as partners or joint venturers.
14. Indemnification. The Sponsor hereby waives and agrees to indemnify,
defend,
and hold the University harmless from and against any loss, claim, damage, or
liability of any kind involving an employee of the Sponsor arising out of or in
connection with this Agreement, and not caused by intentional actions of the
University.
15. NO WARRANTIES. THE UNIVERSITY MAKES NO WARRANTIES EITHER EXPRESS OR
IMPLIED, AS TO ANY MATTER, INCLUDING, WITHOUT LIMITATION, THE RESULTS OF THE
RESEARCH OR ANY INVENTIONS OR PRODUCT, TANGIBLE OR INTANGIBLE, CONCEIVED,
DISCOVERED, OR DEVELOPED UNDER THIS AGREEMENT; OR THE OWNERSHIP,
MERCHANTABILITY, OR FITNESS FOR A PARTICULAR PURPOSE OF THE RESEARCH RESULTS OR
OF ANY SUCH INVENTION OR PRODUCT. The University shall not be liable for any
direct, consequential, or other damages suffered by the Sponsor or by any
Licensee or any others resulting from the use of the research results or any
such invention or product.
16. Force Majeure. The University and the Sponsor shall not be liable for
any failure to perform as required by this Agreement, to the extent such failure
to perform is caused by any reason beyond the University's control, or by reason
of any of the following: labor disturbances or disputes of any kind, accidents,
failure of any required governmental approval, civil disorders, acts of
aggression, acts of God, energy or other conservation measures, failure of
utilities, mechanical breakdowns, material shortages, disease, or similar
occurrences.
17. Assignment. This Agreement may be assigned by Sponsor to an affiliate
(meaning any corporation, company, partnership, joint venture or other entity
which controls, is controlled by or is under common control with the Sponsor) or
as part of its entire business relating to the Research, provided Sponsor
remains liable for all obligations hereunder. Sponsor may also assign its rights
and benefits under this Agreement if University approves the assignment in
writing, which approval shall not be unreasonably withheld. In the event of such
transfer, the transferee shall assume and be bound by the provisions of this
Agreement. It shall be deemed to be reasonable if Sponsor assigns to a
responsible company and agrees to remain responsible on an ongoing basis for
performance by the assignee company.
18. Severability. In the event that a court of competent jurisdiction
holds any provision of this Agreement to be invalid, such holding shall have no
effect on the remaining provisions of this Agreement, and they shall continue in
full force and effect.
19. Entire Agreement. This Agreement and the Exhibits hereto contain the
entire
agreement between the parties. No amendments or modifications to this Agreement
shall be effective unless made in writing and signed by authorized
representatives of both parties.
20. Similar Research. Nothing in this Agreement shall be construed to
limit the freedom of the University or of its researchers who are not
participants under this Agreement, from engaging in similar research made under
other grants, contracts or agreements with parties other than the Sponsor.
21. Governing Law. This Agreement shall be governed by and construed in
accordance with the laws of the State of Connecticut.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement by
their duly authorized officers or representatives.
YALE UNIVERSITY ONCORPHARM, INC.
By /s/ XXXXX X. XXXXXXXX By /s/ Xxxxxxx Xxxxxx
--------------------------- -------------------------
Title ASSOCIATE VICE PRESIDENT Title CHAIRMAN
FOR FINANCE
Date 2/15/95 Date 1/29/95
Principal Investigator
/s/ Xxxxx Xxxxxx
-------------------------
Xxxxx X. Xxxxxx
Department of Therapeutic Radiology
Yale University School of Medicine
Research Proposal to OncorPharm, Inc.
"Exhibit A" *
* CONFIDENTIAL TREATMENT REQUESTED
*
Personnel
Supplies
Total Direct Cost
Indrect Cost Rate
Indirect Costs
Total Costs
/s/ Xxxxx Xxxxx
-----------------------------
Xxxxx Xxxxx
Associate Administrator
Therapeuric Radiology
* CONFIDENTIAL TREATMENT REQUESTED
FIRST YEAR DETAILED BUDGET *
Personnel:
Xxxxx X. G1azer
Post-doc associate
Sub-total:
Supplies:
Plasticware, disposables
Cell culture, media, serum, reagents
Enzymes, biochemicals
Microbiologic reagents
Isotopes, film
Oligonucleotides
Sub-total:
Total
Direct costs
Indirect costs (25%)
Total costs
* CONFIDENTIAL TREATMENT REQUESTED
