AGREEMENT
THIS AGREEMENT is made effective as of November 1, 1997 by and among
PHOTOGEN, INC., a Tennessee corporation with offices in Knoxville, Tennessee
(hereinafter referred to as "Sponsor"), THE XXXXXXXX CANCER SURVIVAL CENTER, a
Tennessee not for profit corporation with principal offices in Knoxville,
Tennessee (hereinafter referred to as "Xxxxxxxx") and XXXXXX XXXXXXXXXX, Ph.D.,
an employee of Xxxxxxxx ("Panjehpour").
WITNESSETH:
WHEREAS, the research project contemplated by this Agreement is of interest
and benefit to all of the parties.
NOW, THEREFORE, in consideration of the mutual covenants contained herein,
the parties hereto agree as follows:
1. STATEMENT OF WORK. Xxxxxxxx agrees to designate Panjehpour to assist
Sponsor with the research project which is the subject of that certain
Agreement dated as of October 1, 1997 between Sponsor and the University of
Tennessee ("University") (the "Research Contract"), a copy of which is
attached as Exhibit A hereto and made a part hereof. Xxxxxxxx, Panjehpour
and other Xxxxxxxx employees have developed substantial experience in laser
implications in medicine and Xxxxxxxx and Panjehpour have agreed to consult
with and advise Sponsor with regard to the matters set forth herein and in
the Research Contract.
2. PERIOD OF PERFORMANCE. The period for the performance of the work shall be
from November 1, 1997 to October 30, 1998.
3. PAYMENT. Sponsor shall pay Xxxxxxxx $3,068 per month for the satisfactory
performance of services by Xxxxxxxx and Panjehpour hereunder, payable on
the first day of each month. Checks shall be made payable to THE XXXXXXXX
CANCER SURVIVAL CENTER and shall be mailed to the following address:
Laser Center
0000 Xxxxx Xxxxxx
Xxxxxxxxx, XX 00000
4. TERMINATION. In the event that Xxxxxxxx, Panjehpour or Sponsor defaults in
the due performance of its or his respective obligations under this
Agreement, or in the event that any representation or warranty by any of
them proves to be false or incorrect and such default or breach is not
cured within thirty (30) days of written notice thereof, then the
non-defaulting party may elect to terminate this Agreement by giving
written notice to the defaulting party, and this Agreement shall terminate
upon the defaulting party's receipt of said notice; provided, however,
that this Agreement may not be terminated by either Xxxxxxxx or Panjehpour
upon the breach by or false or incorrect representation or warranty of the
other. The parties recognize that the results of any particular research
project cannot be guaranteed
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even through the use of Xxxxxxxx'x and Panjehpour's best efforts;
therefore, it is specifically agreed that the failure of the underlying
research project to achieve specific research results shall not constitute
a default or breach of this Agreement.
5. EQUIPMENT. Xxxxxxxx will provide certain standard PDT lasers and related
hardware and such equipment shall remain the property of Xxxxxxxx.
6. PROPRIETARY INFORMATION OF THE PARTIES.
x. Xxxxxxxx, Panjehpour and Sponsor each recognizes that the conduct
of a research project may require the exchange of proprietary
information among the parties and that each party has ongoing and
prior knowledge and experience and proprietary information in the
areas which are the subject of this Agreement and the Research
Contract. Accordingly, it is agreed that each party shall retain
in confidence the proprietary information of each of the other
parties and shall not disclose any such information to any other
person, nor use such information, without the written permission
of the party disclosing such proprietary information, except in
accordance with the terms of this Agreement. The term
"proprietary information" as used herein shall not include any
information which the recipient clearly shows by appropriate
documentation:
(1) Was at the time of receipt both legally and independently
known to the receiving party, its agents, or employees;
(2) Without breach of this Agreement by the receiving party has
been published or is otherwise within the public knowledge
or is generally known to the public at the time of
disclosure;
(3) Becomes known or available to the receiving party without
restriction from a source other than the disclosing party,
provided that such source has an unqualified right to
disclose such information without restriction;
(4) Becomes a part of the public domain after disclosure without
breach of this Agreement by the receiving party; or
(5) Is required by law to be disclosed, in which case the party
required by law to disclose will give the other parties
prompt written notice of the required disclosure. Such other
parties may, in good faith and at its, his or their own
expense, contest disclosure or seek confidential treatment.
x. Xxxxxxxx and Panjehpour each will make full and prompt disclosure to
Sponsor of all "Developments" which are created, made, conceived,
or reduced to practice in whole or in part by Xxxxxxxx and/or
Panjehpour during the term of this Agreement and for a period of
three years thereafter. "Developments" means all copyright, patent,
and trademark rights, and all improvements, inventions,
technologies,
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methods, applications, discoveries, drawings, and other know-how
and developments resulting from the project described in Article 1
of the Research Contract, whether or not subject to U.S. or foreign
Patent and Trademark Office, U.S. Copyright Office or other
registration, which are unique to two photon excitation,
two photon continuous fast pulsed lasers, cellular targeting
involving proprietary compounds that Photogen can demonstrate it
developed during the term of this Agreement, imaging using two
photon lasers, or the interrelationship of two photon lasers and
photophrin. Sponsor recognizes and acknowledges that Xxxxxxxx has
prior proprietary rights in laser photo-dynamics and related heat
and light applications.
c. Subject only to Xxxxxxxx'x and Panjehpour's respective rights set
forth in this Article 6 and in Articles 7 and 14.a. hereof (which
remain subject to the confidentiality provisions hereof), all
Developments and all U.S. and foreign copyright, patent and
trademark rights, and any other proprietary rights pertaining to any
Developments, and all renewals and extensions thereof, shall vest
in and be owned exclusively by Sponsor; and Xxxxxxxx and Panjehpour
each hereby transfers and assigns all of its or his respective
right, title and interest in and to the Developments to Sponsor.
Sponsor shall have the right to use and sell any Developments or
any product incorporating any Developments free of any royalty to
Xxxxxxxx and/or Panjehpour and Xxxxxxxx and Panjehpour each agrees
to execute and deliver to Sponsor any and all assignments,
applications and other instruments that may be necessary to secure
such rights to Sponsor.
x. Xxxxxxxx and Panjehpour each agrees not to, directly or indirectly,
disclose any proprietary information constituting a Development to
others or to make use of it for any purpose except to perform the
services hereunder, during the term hereof and for a period of
five (5) years after termination or expiration of this Agreement.
e. Upon termination hereof, Xxxxxxxx and Panjehpour each shall promptly
deliver all memoranda, books, papers, letters, formulas, drawings,
manuals, notes, reports, computer disks or tapes, all copies of the
foregoing, and all other materials (whether or not reduced to
written or tangible form) which are unique to the work and/or
project (including the Developments) requested in writing by
Sponsor, which are in Xxxxxxxx'x or Panjehpour's respective
possession or under its or his respective control. Xxxxxxxx may
retain one copy of the foregoing for its records, which shall in
all events be subject to the provisions hereof.
f. Except as expressly set forth in this Agreement, each party's
obligations hereunder shall survive the termination or expiration
of this Agreement. This Agreement shall be binding upon the parties
and their respective affiliates, officers, employees and
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independent contractors and shall inure to the benefit of the
parties and their respective successors and assigns, heirs and
legal representatives.
g. Each party reserves any available remedies to enforce this
Agreement.
7. PUBLICATION. Xxxxxxxx or Panjehpour may publish interim and/or final
results of the investigation/research described in Article 1 hereof, upon
receipt of prior written approval from Sponsor, and provided the results
to be published do not contain or divulge proprietary information as
reasonably determined by Sponsor. Sponsor shall have 30 days from receipt
of publication manuscripts to review the same for content. If Sponsor
fails to respond within 30 days, and Xxxxxxxx and/or Panjehpour has
obtained written approval from Sponsor to publish, it and/or he, as
applicable, has the right to publish and shall incur no liability to
Sponsor therefor.
8. INDEPENDENT CONTRACTOR. Xxxxxxxx'x relationship to Sponsor in the
performance of this Agreement is that of an independent contractor.
Panjehpour's relationship hereunder is that of employee of Xxxxxxxx.
9. INDEMNIFICATION BY SPONSOR. Sponsor shall indemnify, defend and hold
Xxxxxxxx and Panjehpour harmless from any and all claims and suits which
are based on any injury or damage arising out of the research conducted
hereunder (including, but not limited to, the clinical evaluation or
testing of any drug or device included in this study if applicable) for
any act or omission of Sponsor involving the use, manufacture or
distribution of any product or process arising out of or involved with
this Agreement.
10. INDEMNIFICATION BY XXXXXXXX AND PANJEHPOUR. Xxxxxxxx and Panjehpour,
jointly and severally, shall indemnify, defend and hold Sponsor harmless
from any and all claims and suits which arise out of or are related to any
negligent act or omission or the wilful misconduct of Xxxxxxxx and/or
Panjehpour.
11. NEGATION OF WARRANTIES BY XXXXXXXX. Although Xxxxxxxx and Panjehpour will
use its and his respective best efforts in providing services hereunder,
neither of them makes any warranties, either expressed or implied, as to
the results of the underlying research or the merchantability or fitness
for a particular purpose of such research or any Development arising out
of the research. Xxxxxxxx and Panjehpour shall not be liable for any
direct, consequential, or other damages suffered by the Sponsor or others
which may result from the use of the research result or any Development
arising out of the research.
12. KEY PERSONNEL. XXXXXX XXXXXXXXXX, PH.D. is considered to be essential to
the work performed by Xxxxxxxx under this Agreement. Substitutions for or
substantial changes in his level of effort will not be made without the
prior written approval of Sponsor.
13. PRE-EXISTING INTELLECTUAL PROPERTY RIGHTS OF THE PARTIES. None of the
parties claims by virtue of this Agreement any right, title, or interest in
(a) any issued or pending patents or copyrights owned or controlled by
another party or (b) any previous
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invention, process, software, or product of another party, whether or not
protected under the intellectual property laws of the United States or any
other country.
14. INVENTIONS AND DATA.
a. Developments directly resulting from the performance of the work
described herein and in the Research Contract shall be the property
of Sponsor. However, Xxxxxxxx and Panjehpour shall have the right to
use such Developments for internal education, research and academic
purposes.
b. The original data generated as a result of the performance of the
work described herein and in the Research Contract shall be provided
to Sponsor, and Sponsor may use such data as it deems advisable.
However, this provision shall not be interpreted to restrict
Xxxxxxxx'x and Panjehpour's publication rights under Article 7 of
this Agreement.
15. USE OF PARTIES' NAMES. None of the parties to this Agreement shall use the
name of any other party in any form of publicity without the written
permission of such other party.
16. MODIFICATION. This Agreement constitutes the sole, full, and complete
agreement by and among the parties, and no amendments, changes, additions,
deletions, or modifications to or of this Agreement shall be valid unless
reduced to writing, and signed by all of the parties.
17. NOTICES AND OTHER COMMUNICATIONS. With the exception the payments made by
Sponsor under the provision of Paragraph 3, all notices and other
communications between the parties shall be deemed sufficiently given when
hand delivered or sent by prepaid United States mail or other recognized
carrier, addressed as follows:
a. If to Sponsor:
Xxxx Xxxxxx
President, CEO
Photogen, Inc.
0000 Xxx Xxxxx Xxxxxxx
Xxxxxxxxx, XX 00000
b. If to Xxxxxxxx:
Xxxxxxx X. Xxxxxxx
Vice President
The Xxxxxxxx Cancer Survival Center
0000 Xxxxx Xxxxxx
Xxxxxxxxx, XX 00000
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c. If to Panjehpour:
Xxxxxx Xxxxxxxxxx, Ph.D.
_____________________________
_____________________________
A party may change its or his address by written notice given to the other
parties. It is specifically provided that this notice provision shall not
be construed in such a manner as to abrogate the provisions of Section 16
regarding modification for this Agreement.
18. GOVERNING LAW. This Agreement is made and entered into in the State of
Tennessee and its validity and interpretation and the legal relations of
the parties to it shall be governed by the law of the State of Tennessee.
THIS AGREEMENT shall not be considered accepted, approved, or otherwise
effective until the signature of each party is affixed in the space provided
below.
IN WITNESS WHEREOF, signifying their acceptance of and agreement to be bound
by the terms and conditions of this Agreement, the signatures of the parties
are affixed hereto:
PHOTOGEN, INC. THE XXXXXXXX CANCER SURVIVAL
CENTER
By: /s/ Xxxx Xxxxxx By: /s/ Xxxxxxx X. Xxxxxxx
--------------------------- -----------------------------
Xxxx Xxxxxx Xxxxxxx X. Xxxxxxx
President, CEO Vice President
Date: February 2, 1998 DATE: January 12, 1998
/s/ Xxxxxx Xxxxxxxxxx
--------------------------------
Xxxxxx Xxxxxxxxxx, Ph.D.
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