Exhibit 10.62
Confidential Materials omitted and filed separately with Securities and
Exchange Commission. Asterisks denote omissions.
1/13/99
RESEARCH COLLABORATION AND OPTION AGREEMENT
THIS AGREEMENT, effective as of the 13th day of January, 1999 (the
"Effective Date") between Ontogeny, Inc., a Delaware corporation having a place
of business at 00 Xxxxxxx Xxxxxx, Xxxxxxxxx, XX 00000 ("Ontogeny") and Becton,
Xxxxxxxxx and Company, a New Jersey corporation having a place of business at
Xxx Xxxxxx Xxxxx, Xxxxxxxx Xxxxx, XX 00000 ("BD").
INTRODUCTION
WHEREAS, Ontogeny is in the business of conducting research in the field
of developmental biology;
WHEREAS, BD has expertise in the discovery, development, manufacture and
commercialization of products, services, and devices in the medical technology
industry for application in research, diagnostic and patient management;
WHEREAS, Ontogeny will undertake a research program, the goal of which is
to regenerate islet cells for purposes of delivery to an individual for the
treatment of diabetes. BD desires to obtain from Ontogeny an option to develop
and commercialize products that incorporate the ex vivo delivery of islet cells
that are the subject of such research program as well as a right of first offer
to develop and commercialize certain diagnostic and research products ;
WHEREAS, the parties have therefore agreed on a research program and
commercialization options under certain terms and conditions;
NOW, THEREFORE, in consideration of the mutual covenants and promises
contained in this Agreement and other good and valuable consideration, the
receipt and sufficiency of which are hereby acknowledged, Ontogeny and BD agree
as follows:
Article 1. Definitions
As used in this Agreement, the following terms, whether used in the
singular or plural, shall have the following meanings:
1.1 "Affiliate" shall mean any corporation, company, partnership, joint
venture, firm and/or entity, which controls, is controlled by or is under common
control with a Party. For purposes of this Section 1.1, `control' shall mean (a)
in the case of corporate entities, direct or indirect ownership of at least
fifty (50%) of the stock or shares entitled to vote for the election of
directors, and (b) in the case of non-corporate entities, direct or indirect
ownership of at least fifty percent (50%) of the equity interest with the power
to direct the management and policies of such non-corporate entities.
- 1 -
1.2 "BD Collaboration Technology" shall mean any data, substances,
processes, materials, formulas or information which are developed or created
solely by BD or its Affiliates or jointly by BD or its Affiliates and Ontogeny
or its Affiliates and (i) which incorporate or are based on or derived by use of
Ontogeny Technology, or (ii) which are conceived or reduced to practice during
the course of and in accordance with the Research Program provided that BD or an
Affiliate of BD has been requested to do so by the JRC or Ontogeny as part of
the Research Plan in writing to Xxxx Xxxxxx, Vice President Scientific Affairs,
BDIS, 0000 Xxxx Xxxxx, Xxx Xxxx, XX 00000 with a copy to Xxxxx Xxxxxxx,
Intellectual Property Counsel 0 Xxxxxx Xxxxx, Xxxxxxxx Xxxxx, XX 00000 and BD
confirms this request in writing. BD shall respond to such request in writing
within 30 days.
1.3 "BD SPONSORED FTE" means a full time equivalent scientific person year
carried out by a BD employee or contractor, having a Ph.D. degree or equivalent
doctoral level research laboratory experience.
1.4 "Field" shall mean ex vivo delivery of ex vivo regenerated human beta
islet cells to an individual for the treatment of diabetes.
1.5 "Ontogeny Intellectual Property Rights" means (a) the Ontogeny Patent
Rights; and (b) any other intellectual property rights in and to the Ontogeny
Technology, which Ontogeny or an Affiliate of Ontogeny owns or otherwise has the
right to grant licenses under.
1.6 "Ontogeny Patent Rights" means any patent or patent application or
equivalent thereof, anywhere in the world, having one or more claims covering
Ontogeny Technology, which Ontogeny or an Affiliate of Ontogeny owns or
otherwise has the right to grant licenses under.
1.7 "Ontogeny Technology" means any data, substances, processes,
materials, formulas or information (unrelated to the hedgehog proteins), which
are useful in the Field and reasonably necessary for the development of Product
which Ontogeny or an Affiliate of Ontogeny owns or otherwise has the right to
grant licenses under as of the Effective Date or during the Research Term if
arising from research conducted under the Research Program.
1.8 "Party" means Ontogeny or BD; "Parties" means Ontogeny and BD.
1.9 "Product" means a product that comprises human beta islet cells for
use in the Field.
1.10 "Research Program" means research performed by or on behalf of
Ontogeny during the Research Term in accordance with the Research Workplan.
1.11 "Joint Research Committee" or "JRC" shall mean the research committee
composed of representatives of Ontogeny and BD described in Article 2 hereof.
1.12 "Research Term" shall mean, unless earlier terminated, the two-year
period beginning on the Effective Date and any extension thereof agreed to by
the parties.
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1.13 "Research Workplan" means the Workplan, attached as Schedule A, which
describes the research activities to be conducted in the Field in the course of
the Research Program during the Research Term.
1.14 "Working Committee" shall mean a committee of an equal number of
persons from Ontogeny and BD (maximum number of three (3) from each Party) who
are responsible for monitoring the day to day progress of the Research Program.
Article 2. The Collaboration
2.1 The Research Program shall be conducted by Ontogeny in accordance with
the provisions of the Research Workplan. Ontogeny shall work exclusively with BD
in the Field during the term of the Agreement with the exception of third party
contractors. In conducting the Research Program, Ontogeny shall have and
maintain sufficient flexibility to shift effort and emphasis within the overall
scope of the Research Workplan in a manner that will best result in the
development of Product, providing that any substantial shift in effort or
emphasis is agreed to by the Working Committee or the JRC.
2.2 Ontogeny and BD will form a Joint Research Committee (the "JRC") to be
in existence during the Research Term and to be responsible for overseeing the
progress of the Research Program. The JRC will have an equal number of members
(maximum eight (8) members in total) from Ontogeny and BD. Ontogeny and BD will
also form a Working Committee, which shall meet at mutually agreeable times or
via conference call every three weeks and then meet with the JRC during its
regular meetings to report the progress of the Research Program to the JRC. Each
Party shall make its initial designation of its representatives on the JRC and
the Working Committee not later than thirty (30) days after the Effective Date.
The Chairperson of the Joint Research Committee shall be chosen from the
Ontogeny representatives on the JRC and shall be reasonably acceptable to BD.
The objective of the JRC shall be to reach agreement on all matters by
consensus within the scope of the Research Workplan, including any substantial
changes thereto. However, decisions of the JRC shall be decided by majority vote
of the JRC provided that such majority is comprised of at least one vote cast by
a representative from Ontogeny and one cast by a representative from BD. The JRC
shall also be responsible, if necessary, for modifying the short-term goals of
the Research Program, provided, however, that no such modification shall (i)
alter the terms of this Agreement or (ii) materially increase the
responsibilities of, or the level of expense to be incurred by either Party
without the prior approval of such Party. If the JRC cannot reach agreement on
any matter within its purview, such matter shall be referred to the CEO of
Ontogeny or his designee and the CTO of BD or his designee for resolution. If
the CEO of Ontogeny or his designee and the CTO of BD or his designee are unable
to reach agreement on any issue regarding the Research Program; then the CEO of
Ontogeny shall have the final authority to decide upon such matter unless it
entails a substantial change to the Research Workplan. If the issue does entail
a substantial change to the Research Workplan and such issue has not been
resolved by the Working Committee, the JRC or the CTO of BD and the CEO of
Ontogeny, as described above, then either party shall have the right to
terminate this Agreement under Section 8.3 hereof.
- 3 -
The JRC shall meet at a mutually agreeable place no less frequently than
once each calendar quarter and shall meet at such other times as deemed
appropriate by the JRC. Each Party may change any one or more of its
representatives on the JRC and/or the Working Committee at any time upon notice
to the other Party. Each Party shall use reasonable efforts to cause its
representatives to attend the meetings of the JRC and the Working Committee.
Ontogeny shall provide to the JRC quarterly written summaries of the research
activities conducted under the Research Program and the results thereof.
2.3 Ontogeny shall use diligent efforts to perform the activities set
forth in the Research Workplan.
2.4 BD shall provide one (1) BD SPONSORED FTE, acceptable to Ontogeny to
work on-site at Ontogeny during the Research Term. Such BD SPONSORED FTE shall
work under the direction of Ontogeny managers and shall sign an invention and
nondisclosure agreement set forth in Exhibit A whereby he/she shall agree to not
disclose to a third party or BD or use except for purposes of the Research
Program, confidential or proprietary information of Ontogeny and whereby he/she
assigns to Ontogeny all his/her rights to any data, substances, processes,
materials, formulas, information or ideas which are developed or created by such
BD SPONSORED FTE during or as a result of the BD SPONSORED FTE's tenure at
Ontogeny. Such BD SPONSORED FTE will have the right to practice the Ontogeny
Technology and the BD Collaboration Technology in the Field for the purpose of
conducting research under the Research Program during the Research Term. All of
BD's interest in BD Collaboration Technology shall be assigned to Ontogeny. BD
shall take all steps necessary to have all of its right, title and interest in
the BD Collaboration Technology assigned to Ontogeny and to have any patent
applications filed or patents issued thereon by BD assigned to Ontogeny.
2.5 BD shall have a right of first offer effective as of the Effective
Date, to enter into a license agreement with Ontogeny to obtain the right to
commercialize any jointly invented BD Collaboration Technology for research
reagents and diagnostic uses in the field of diabetes and BD solely invented BD
Collaboration Technology for research reagents and diagnostic uses in all fields
as follows: Ontogeny shall promptly notify BD in writing with respect to any
inventions or invention disclosures of which it becomes aware with respect to BD
Collaboration Technology. BD shall have 30 days from the receipt of such notice
to provide written confirmation to Ontogeny of BD's interest in entering into a
license agreement with respect to such inventions. If BD indicates in writing
that it does wish to enter into such an agreement during said 30 day period and
if the JRC agrees that the specific invention should be commercialized at the
current time, then the Parties will negotiate in good faith the terms of such a
license agreement for three months from the date that BD so indicated in writing
its desire to enter into such an agreement (the "First Offer Negotiation
Period"). If the Parties fail to enter into such an agreement during the First
Offer Negotiation Period, then Ontogeny shall be free to commercialize itself or
license BD Collaboration Technology to a third party for research reagents and
diagnostic uses and to pursue the development of such research reagents and
diagnostic uses by itself or with one or more third parties.
- 4 -
Confidential Materials omitted and filed with the Securities and Exchange
Commission. Asterisks denote omissions.
Article 3. Option Rights
3.1 Subject to the fulfillment by BD of its obligations under this
Agreement, Ontogeny, hereby grants to BD an option to initiate a development
program with Ontogeny to develop and commercialize Product, including the right
to elect an exclusive, worldwide license to Ontogeny's and Ontogeny's
Affiliates's rights in Ontogeny Intellectual Property Rights for use in the
Field, (the "Option" in accordance with the following terms. Such Option is
exercisable by BD in writing on or before the earlier of the end of the Research
Term or within thirty (30) days after the successful completion of the Objective
2 ("Objective 2") set forth in the Research Workplan. If BD exercises such
option, the Parties will exclusively negotiate in good faith the terms of a
development/commercialization/license agreement for three months from the
exercise date of the Option (the "Negotiation Period"), unless extended by
mutual written agreement of the Parties. If the Parties fail to enter into such
an agreement during the Negotiation Period, then Ontogeny shall be free to
license Ontogeny Intellectual Property and BD Collaboration Technology and to
pursue the development of Product by itself or with one or more third parties;
provided, however, that for a period of [**] after the Negotiation Period,
Ontogeny shall not offer such development/commercialization/license agreements
to third parties with terms and conditions which are more favorable to the third
party, taken as a whole, than those terms and conditions last offered by BD or
by Ontogeny, without first offering, such terms and conditions to BD in writing.
Article 4. Payment Obligations
4.1 In consideration of the rights granted to BD under this Agreement, BD
shall lend to Ontogeny the amount of [**], which loan shall be evidenced by a
[**] convertible subordinated Note issued by Ontogeny in favor of BD (the
"Note") pursuant to a note purchase agreement dated as of the Effective Date
(the "Note Purchase Agreement"). The Note shall be convertible into [**] shares
of Series G Convertible Preferred Stock ("Series G Stock") of Ontogeny, in
accordance with the Note Purchase Agreement and the Note.
4.2 Within thirty (30) days following the earlier of the end of the
Research Term or the successful completion of the Objective 2, BD shall purchase
from Ontogeny [**] shares of convertible preferred stock of Ontogeny at a price
per share equal to [**] and having the same rights as the Series G Stock with
respect to voting rights, liquidation and dividends, pursuant to a stock
purchase agreement which incorporates the substantive terms of the Note Purchase
Agreement attached hereto as Schedule B with the exception that the
anti-dilution protection provided shall be similar to that which Ontogeny is
then providing to similar corporate research partners. If a BD accounting issue
arises in relation to this purchase, the parties shall use reasonable efforts to
execute an acceptable note and note purchase agreement to accomplish such
purchase.
4.3 Within thirty (30) days after the Effective Date, Ontogeny shall
purchase from BD a complete, new FACS system to facilitate the research in the
Research Program at a cost of at least [**] and shall not be higher than the
market price of such a system and subject to the following: Such FACS system
shall meet specifications, as will be specified in Schedule C to this Agreement
which shall be attached hereto and agreed to by the Parties in writing and there
will be a two year warranty provided by BD covering 100% of service and parts.
- 5 -
Article 5. Negation of Warranties
5.1 NOTHING IN THIS AGREEMENT IS OR SHALL BE CONSTRUED AS
A) A WARRANTY OR REPRESENTATION BY ONTOGENY AS TO THE VALIDITY OR
SCOPE OF ANY ONTOGENY INTELLECTUAL PROPERTY RIGHTS;
B) A WARRANTY BY ONTOGENY AS TO THE OUTCOME OF RESULTS CONDUCTED
UNDER THIS AGREEMENT;
C) A WARRANTY, EXPRESS OR IMPLIED, AS TO ANY INVENTION OR PRODUCT
CONCEIVED, DISCOVERED OR DEVELOPED UNDER THIS AGREEMENT; OR THE MERCHANTABILITY
OR FITNESS FOR A PARTICULAR PURPOSE OF THE RESEARCH OR ANY SUCH INVENTION OR
PRODUCT.
Article 6. Patents
6.1 Ontogeny shall have the right to file, prosecute and maintain patent
applications worldwide for Ontogeny Intellectual Property and BD Collaboration
Technology at Ontogeny's expense in Ontogeny's sole name. During the Research
term, Ontogeny shall provide to BD copies of all substantive documents
associated with the prosecution of such patent applications. BD shall have the
right but not the obligation to review and provide comments and suggested
amendments to the claims to Ontogeny. Each Party shall sign or use its best
efforts to have signed all legal documents necessary to file and prosecute
patent application or to obtain or maintain patents.
Article 7. Confidentiality
7.1 (a) Disclosure or delivery of confidential and proprietary information
or material by any Party to the other Party may be made in writing, or orally.
Such confidential information or material provided by one Party to the other
Party will be safeguarded by the recipient and will not be disclosed to third
parties and will be made available only to the receiving Party's or its
Affiliate's employees or agents (including attorneys) who need to know such
information or have such material for purposes permitted under this Agreement
and who have obligations of confidentiality and non-use similar to those of this
Agreement. Each Party shall hold as confidential such confidential information
and material in the same manner and with the same protection as such party
maintains for its own confidential information and materials and agrees to use
such confidential information and materials only for the purpose of this
Agreement and as permitted by this Agreement.
(b) The mutual obligations of confidentiality under this Section
will not apply to any information to the extent that such information:
(i) is or hereafter becomes part of the public domain through
no action of recipient of the information which constitutes a default under this
Agreement;
(ii) was already known to the recipient as evidenced by prior
written documents in its possession which were not furnished by the other party;
(iii) is disclosed to the recipient by a third party who is
not in default of any confidentiality obligation to the disclosing Party
hereunder;
- 6 -
(iv) is required by law or bona fide legal process to be
disclosed, provided that the disclosing Party takes all reasonable steps to
restrict and maintain confidentiality of such disclosure and provides reasonable
notice to the non-disclosing Party; or
(v) is developed by the recipient independent of the
confidential information received from the disclosing party, as evidenced by
written documentation.
(c) BD Collaboration Technology shall be considered to be
confidential information of Ontogeny under this Article 7 and shall not be
disclosed by BD to a third party, or used by BD except for the purposes of this
Agreement and as permitted by this Agreement.
7.2 BD and Ontogeny each agrees not to disclose any terms or conditions of
this Agreement to any third party without the prior consent of the other Party,
which shall not be unreasonably withheld, except as required by written
applicable law, rule or regulation; or in connection with a financing or
offering statement or memorandum, with the understanding that unless required by
law, the financial terms will be disclosed in confidence; or to a potential
assignee or transferee of the business of a party to which this Agreement
relates; or to a licensor of a Party for the purpose of granting a sublicense to
the other Party. In the event of a disclosure required under this Article, the
disclosing Party shall nonetheless provide the non-disclosing Party with notice
of such disclosure prior to disclosure, and will, to the extent reasonably
possible, provide the non-disclosing Party with an opportunity to correct same.
A Party shall not be required to provide the other Party with a disclosure,
which has been previously provided to a Party provided that it is disclosed in a
similar fashion and context as it was previously disclosed. Neither BD or
Ontogeny shall issue a press release without prior written approval of the other
party which shall not be unreasonably withheld and which shall be provided in a
timely fashion.
Article 8. Term and Termination
8.1 Except as otherwise specifically provided herein and unless sooner
terminated pursuant to Article 8 of this Agreement, this Agreement shall remain
in full force and effect until the end of the Negotiation Period or at such time
that the Option is not exercised and has expired.
8.2 This Agreement may be terminated due to insufficient progress and
unsatisfactory results in the Research Program upon majority vote of the JRC by
providing each Party three (3) months written notice.
8.3 Either Party may terminate this Agreement upon failure to reach
agreement in good faith under Section 2.2 with regard to a proposed substantial
change to the Research Workplan upon three (3) months written notice.
8.4 This Agreement shall terminate if all or substantially all of the
business of one Party to which this Agreement relates is acquired by another
entity through merger, sale of assets or otherwise and the other Party withholds
consent to an assignment of the Agreement under Section 9.9 below.
8.5 If either Party materially breaches this Agreement, the other Party
may terminate this Agreement by written notice to the breaching party specifying
the breach and this
- 7 -
Agreement shall be terminated thirty (30) business days after such written
notice, unless prior to the expiration of such period such breach is cured.
8.6 Notwithstanding any termination of this Agreement, (a) neither Party
shall be released of any obligations incurred prior to such termination and (b)
the provisions of Sections 2.4, 4.3, 5.1, 6.1, 7.1 and 7.2 and any other
provision which by its nature is intended to survive, shall survive any
termination of this Agreement. Upon the termination of this Agreement unless BD
exercises its Option and executes an agreement with Ontogeny pursuant to the
provisions of Section 3.1, each Party shall promptly return to the other Party
all written Confidential Information and all copies thereof to such Party.
Article 9. Miscellaneous
9.1 This Agreement shall be governed by and interpreted in accordance with
the laws of the Commonwealth of Massachusetts.
9.2 Dispute Resolution.
(a) In the event there is a disagreement between the Parties
relating to this Agreement, the Parties shall attempt in good faith to resolve
any dispute arising out of or relating to this Agreement promptly by
negotiations between executives of both Parties who have authority to settle the
controversy. Either Party may give the other Party written notice of any dispute
hereunder not resolved in the normal course of business. Within twenty (20) days
after delivery of said notice, executives of each of the Parties shall discuss
by telephone or meet at a mutually acceptable time and place, and thereafter as
often as they reasonably deem necessary, to exchange relevant information and to
attempt to resolve the dispute. If the matter has not been resolved within sixty
(60) days of the disputing Party's notice, or if the Parties fail to discuss or
meet within twenty (20) days, either Party may initiate mediation of the
controversy or claim under the then current Center for Public Resources
Procedure for Mediation of Business Disputes, with the understanding that the
mediator shall have no authority to amend this Agreement or the Research
Workplan.
(b) If a negotiator intends to be accompanied at a telephone
conference or a meeting by an attorney, the other negotiators shall be given at
least three (3) working days' notice of such intention and may also be
accompanied by an attorney. All negotiations pursuant to this clause are
confidential and shall be treated as compromise and settlement negotiations for
purposes of the Federal Rules of Evidence and any state rules of evidence.
(c) If the dispute is not resolved within sixty (60) days of its
submission to a mediator in accordance with Section 9.2 (a), either Party may
submit the dispute to binding arbitration. The arbitration shall be conducted by
three (3) arbitrators, one to be appointed by Ontogeny, one to be appointed by
BD and a third being nominated by the two arbitrators so selected or, if they
cannot agree on a third arbitrator, by the President of the American Arbitration
Association. The arbitration shall be conducted in accordance with the
commercial rules of the American Arbitration Association, which shall administer
the arbitration. The arbitration, including the rendering of the award, shall
take place in Boston, Massachusetts, and shall be final and binding upon the
Parties hereto, with the understanding that the arbitrators shall
- 8 -
have no authority to amend this Agreement or the Research Workplan and the
expenses of the arbitration shall be paid as the arbitrators determine.
9.3 The waiver by a Party of a breach or a default of any provision of
this Agreement by the other Party shall not be construed as a waiver of any
succeeding breach of the same or any other provision, nor shall any delay or
omission on the part of a Party to exercise or avail itself of any right, power
or privilege that it has or may have hereunder operate as a waiver of any right,
power or privilege by such Party.
9.4 All notices, instructions and other communications hereunder or in
connection herewith shall be in writing and shall be (a) delivered personally,
(b) sent by registered or certified mail, return receipt requested, postage
prepaid, (c) sent via a reputable nationwide overnight courier service, or (d)
sent by facsimile transmission, in each case to an address set forth below. Any
such notice, instruction or communication shall be deemed to have been delivered
upon receipt if delivered by hand, three business days after it is sent by
registered or certified mail, return receipt requested, postage prepaid, one
business day after it is sent via a reputable nationwide overnight courier
service, or when transmitted with electronic confirmation of receipt, if
transmitted by facsimile (if such transmission is on a business day; otherwise,
on the next business day following such transmission).
Notices to Ontogeny Ontogeny, Inc.
shall be addressed to: 00 Xxxxxxx Xxxxxx
Xxxxxxxxx, XX 00000
Attention: President and
Chief Executive Officer
Notices to Becton Xxxxxxxxx Xxxxxx, Xxxxxxxxx and Company
shall be addressed to: Xxx Xxxxxx Xxxxx
Xxxxxxxx Xxxxx, XX 00000
Attention: Chief Technology Officer
with a copy to: Attention: Chief Intellectual Property and
Licensing Counsel
Either Party may change its address by giving notice to the other Party in the
manner herein provided.
9.5 Nothing herein shall be deemed to constitute Ontogeny, on the one
hand, or BD, on the other hand, as the agent or representative of the other, or
as joint venturers or partners for any purpose.
9.6 This Agreement, the Note Purchase Agreement and the Schedules hereto
(which Schedules are deemed to be a part of this Agreement for all purposes)
contain the full understanding of the Parties with respect to the subject matter
hereof and supersede all prior
- 9 -
understandings and writings relating thereto. No waiver, alteration or
modification of any of the provisions hereof shall be binding unless made in
writing and signed by the Parties.
9.7 The headings contained in this Agreement are for convenience of
reference only and shall not be considered in construing this Agreement.
9.8 In the event that any provision of this Agreement is held by a court
of competent jurisdiction to be unenforceable because it is invalid or in
conflict with any law of any relevant jurisdiction, the validity of the
remaining provisions shall not be affected, and the Parties shall negotiate a
substitute provision that, to the extent possible, accomplishes the original
business purpose.
9.9 Neither this Agreement nor any of the rights or obligations hereunder
may be assigned by either Party with the prior written consent of the other
Party, which consent shall not be unreasonably withheld.
9.10 This Agreement shall be binding upon and inure to the benefit of the
Parties hereto and their successors and permitted assigns.
9.11 This Agreement may be executed in two (2) counterparts, each of which
shall be deemed an original but all of such together shall constitute one and
the same instrument.
9.12 Neither Party to this Agreement shall be responsible to the other
Party for nonperformance or delay in performance of the terms or conditions of
this Agreement due to acts of God, earthquakes, acts of governments, war, riots,
strikes, accidents in transportation, or other similar causes beyond the
reasonable control of such Party.
9.13 BD understands that it receives no right to a license, implied or
otherwise, under any patent or other right now or hereafter owned or controlled
by Ontogeny.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
executed in their names by their properly and duly authorized officers or
representatives as of the date first above written.
Ontogeny, Inc. Becton, Xxxxxxxxx and Company
/s/ Doros Platika /s/ Xxxxxxx X. Xxxx
--------------------------------- --------------------------------------
By: Doros Platika By: Xxxxxxx X. Xxxx
-----------------------------------
Title: President and CEO Title: President-BOIS
--------------------------------
Date: 1/13/99 Date: 1/13/99
------------------------------- ---------------------------------
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Exhibit A
Ontogeny, Inc.
--------------------------------------------------------------------------------
INVENTION, NON-DISCLOSURE AND
NON-COMPETITION AGREEMENT
This Agreement is made this _____ day of ___________, 19___ between
Ontogeny, Inc., a Delaware corporation (hereinafter referred to as the
"Company"), and _________________(the "BD Sponsored FTE").
In consideration of the employment to work on-site at company in
connection with the Research Collaboration and Option Agreement between BD and
Company ("BD Agreement") or the continued employment of the BD Sponsored FTE by
the Becton Xxxxxxxxx and Company ("BD"), the Company and the BD Sponsored FTE
agree as follows:
1. Proprietary Information
(a) The BD Sponsored FTE agrees that all information, whether or not in
writing, of a private, secret or confidential nature concerning the
Company's business, business relationships or financial affairs
(collectively, "Proprietary Information") is and shall be the exclusive
property of the Company. By way of illustration, but not limitation,
Proprietary Information may include inventions, products, processes,
methods, techniques, formulas, compositions, compounds, projects,
developments, plan, research data, clinical data, financial data,
personnel data, computer programs, customer and supplier lists, and
contacts at or knowledge of customers or prospective customers of the
Company. The BD Sponsored FTE will not disclose any Proprietary
Information to any person or entity other than employees of the Company or
use the same for any purposes (other than in the performance of his/her
duties under the BD Agreement) without written approval by an officer of
the Company, either during or after his/her employment with the Company,
unless and until such Proprietary Information has become public knowledge
without fault by the BD Sponsored FTE.
(b) The BD Sponsored FIFE agrees that all files, letters, memoranda,
reports, records, data, sketches, drawings, laboratory notebooks, program
listings, or other written, photographic, or other tangible material
containing Proprietary Information, whether created by the BD Sponsored
FTE or others, which shall come into his/her custody or possession, shall
be and are the exclusive property of the Company to be used by the BD
Sponsored FTE only in the performance of his/her duties for the Company
under the BD Agreement. All such materials or copies thereof and all
tangible property of the Company in the custody or possession of the BD
Sponsored FTE shall be delivered to the Company, upon the earlier of (i) a
request by the Company or (ii) termination of his/her employment as a BD
sponsored FTE under the BD Agreement. After such delivery, the BD
Sponsored FTE shall not retain any such materials or copies thereof or any
such tangible property.
(c) The BD Sponsored FTE agrees that his/her obligation not to disclose or
to use information and materials of the types set forth in paragraphs (a)
and (b) above, and his/her obligation to return materials and tangible
property, set forth in paragraph (b) above, also extends to such types of
information, materials and tangible property of customers of the Company
or suppliers to the Company or other third parties who may have disclosed
or entrusted the same to the Company or the BD Sponsored FTE.
- 11 -
2. Developments
(a) The BD Sponsored FTE will make full and prompt disclosure to the
Company of all inventions, improvements, discoveries, methods,
developments, software, and works of authorship, whether patentable or
not, which are created, made, conceived, or reduced to practice by him/her
or under his/her direction or jointly with others during his/her tenure at
the Company whether or not during normal working hours or on the premises
of the Company (all of which are collectively referred to in this
Agreement as "Developments").
(b) The BD Sponsored FTE agrees to assign and does hereby assign to the
Company (or any person or entity designated by the Company) all his/her
right, title and interest in and to all Developments and all related
patents, patent applications, copyrights and copyright applications.
However, this paragraph 2(b) shall not apply to Developments which do not
relate to the present or planned business or research and development of
the Company and which are made and conceived by the BD Sponsored FTE not
during normal working hours, not on the Company's premises and not using
the Company's tools, devices, equipment or Proprietary Information.
(c) The BD Sponsored FTE agrees to cooperate fully with the Company, both
during, and after his/her tenure with the Company, with respect to the
procurement, maintenance and enforcement of copyrights, patents and other
intellectual property rights (both in the United States and foreign
countries) relating to Developments. The BD Sponsored FTE shall sign all
papers, including, without limitation, copyright applications, patent
applications, declarations, oaths, formal assignments, assignments of
priority rights, and powers of attorney, which the Company may deem
necessary or desirable in order to protect its rights and interest in any
Development. The BD Sponsored FTE further agrees that if the Company is
unable, after reasonable effort, to secure the signature of the BD
Sponsored FTE on any such papers, any executive officer of the Company
shall be entitled to execute any such papers as the agent and the
attorney-in-fact of the BD Sponsored FTE, and the BD Sponsored FTE hereby
irrevocably designates and appoints each executive officer of the Company
as his/her agent and attorney-in-fact to execute any such papers on
his/her behalf, and to take any and all actions as the Company may deem
necessary or desirable in order to protect its rights and interests in any
Development, under the conditions described in this sentence.
3. Non-competition
(a) During the BD Sponsored FTE's tenure at the Company and for a period
of one year after the termination or cessation of such tenure for any
reason, the BD Sponsored FTE will not directly or indirectly:
(i) as an individual proprietor, partner, stockholder, officer,
employee, director, joint venturer, investor, lender, consultant, or
in any other capacity whatsoever (other than as the holder of not
more than one percent of the combined voting power of the
outstanding stock of a publicly held company), engage in the
business of developing, designing, producing, marketing, selling or
rendering (or assisting any other person in developing, designing,
producing, marketing, selling or rendering) products or services
competitive with those being developed, designed, produced,
marketed, sold or rendered by the Company while the BD Sponsored FTE
was working at the Company with the exception of working for BD as
part of any Ontogeny/BD Collaboration; or
(ii) solicit, divert or take away, or attempt to divert or to take
away, the business or patronage of any of the clients, customers
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or accounts, or prospective clients, customers or accounts, of the
Company which were contacted, solicited or served by the BD
Sponsored FTE while at the Company.
(b) If the BD Sponsored FTE violates the provisions of Section 3(a), the
BD Sponsored FTE shall continue to be bound by the restrictions set forth
in Section 3(a) until a period of one year has expired without any
violation of such provisions.
4. Non-Solicitation
(a) During the BD Sponsored FTE's tenure at the Company and for a period
of two years after the termination or cessation of such tenure for any
reason, the BD Sponsored FTE will not directly or indirectly recruit,
solicit or hire any employee of the Company, or induce or attempt to
induce any employee of the Company to terminate his/her employment with,
or otherwise cease his/her relationship with, the Company.
(b) If the BD Sponsored FTE violates the provisions of Section 4(a), the
BD Sponsored FTE shall continue to be bound by the restrictions set forth
in Section 4(a) until a period of two years has expired without any
violation of such provisions.
5. Other Agreements
The BD Sponsored FTE hereby represents that, except as the BD Sponsored FTE has
disclosed in writing to the Company on Appendix A to this Agreement, the BD
Sponsored FTE is not bound by the terms of any agreement with any previous
employer, current employer or other party to refrain from using or disclosing
any trade secret or confidential or proprietary information in the course of
his/her tenure at Company or to refrain from competing, directly or indirectly,
with the business of such previous employer or any other party. The BD Sponsored
FTE further represents that his/her performance of all the terms of this
Agreement and as an BD Sponsored FTE under the BD Agreement does not and will
not breach any agreement to keep in confidence proprietary information,
knowledge or data acquired by the BD Sponsored FTE in confidence or in trust
prior to his/her employment with the Company, and the BD Sponsored FTE will not
disclose to the Company or induce the Company to use any confidential or
proprietary information or material belonging to any previous employer or
others.
6. United States Government Obligations
The BD Sponsored FTE acknowledges that the Company from time to time may have
agreements with the other persons or with the United States Government, or
agencies thereof, which impose obligations or restrictions on the Company
regarding inventions made during the course of work under such agreements or
regarding the confidential nature of such work. The BD Sponsored FTE agrees to
be bound by all such obligations and restrictions which are made known to the BD
Sponsored FTE and to take all action necessary to discharge the obligations of
the Company under such agreements.
7. No Employment Contract
The BD Sponsored FTE understands that this Agreement does not constitute a
contract of employment and does not imply that his/her status as a BD Sponsored
under the BD Agreement will continue for any period of time.
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8. Miscellaneous
(a) The invalidity or unenforceability of any provision of this Agreement
shall not affect the validity or enforceability of any other provision of
this Agreement.
(b) This Agreement supersedes all prior agreements, written or oral,
between the BD Sponsored FTE and the Company relating to the subject
matter of this Agreement. This Agreement may not be modified, changed or
discharged in whole or in part, except by an agreement in writing signed
by the BD Sponsored FTE and the Company.
(c) No delay or omission by the Company in exercising any right under this
Agreement will operate as a waiver of that or any other right. A waiver or
consent given by the Company on any one occasion is effective only in that
instance and will not be construed as a bar to or waiver of any right on
any other occasion.
(d) The BD Sponsored FTE expressly consents to be bound by the provisions
of this Agreement for the benefit of the Company or any subsidiary or
affiliate thereof to whose employ the BD Sponsored FTE may be transferred
without the necessity that this Agreement be resigned at the time of such
transfer.
(e) The restrictions contained in this Agreement are necessary for the
protection of the business and goodwill of the Company and are considered
by the BD Sponsored FTE to be reasonable for such purpose. The BD
Sponsored FTE agrees that any breach of this Agreement is likely to cause
the Company substantial and irrevocable damage and therefore, in the event
of any such breach, the BD Sponsored FTE agrees that the Company, in
addition to such other remedies which may be available, shall be entitled
to specific performance and other injunctive relief.
(f) If any restriction set forth in Sections 3 or 4 is found by any court
of competent jurisdiction to be unenforceable because it extends for too
long a period of time or over too great a range of activities or in too
broad a geographic area, it shall be interpreted to extend only over the
maximum period of time, range of activities or geographic area as to which
it may be enforceable.
(g) This Agreement is governed by and will be construed as a sealed
instrument under and in accordance with the laws of the Commonwealth of
Massachusetts. Any action, suit, or other legal proceeding which is
commenced to resolve any matter arising under or relating to any provision
of this Agreement shall be commenced only in a court of the Commonwealth
of Massachusetts (or, if appropriate, a federal court located within
Massachusetts), and the Company and the BD Sponsored FTE each consents to
the jurisdiction of such a court.
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THE BD SPONSORED FTE ACKNOWLEDGES THAT HE/SHE HAS CAREFULLY READ THIS AGREEMENT
AND UNDERSTANDS AND AGREES TO ALL OF THE PROVISIONS IN THIS AGREEMENT.
Ontogeny, Inc.
Name:
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please print
Name:
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signature
Title:
------------------------------
Date:
------------------------------
BD Sponsored FTE Becton Xxxxxxxxx and Company
Name: Name:
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please print please print
Name: Name:
------------------------------- -------------------------------
signature signature
Date: Title:
------------------------------- -------------------------------
Date:
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Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
SCHEDULE A
Research Work Plan
Objective 1: [**] the [**] can be [**] to [**].
Objective 2: [**] the ability of [**] a [**] in the [**].
Objective 3: [**] of the [**] to [**]:
* [**] the [**] of [**] in [**];
* [**] and [**] of [**] and [**] into [**];
* [**] in [**] of these [**]in a [**].
Objective 1:
(i) Assess the [**] containing [**] of [**] with the [**];
(ii) Determine whether such [**] are [**];
(iii) If not, using the [**], establish [**] from the [**];
(iv) [**] vs. [**]. This should be [**] and to what extent [**], and
whether [**].
(v) [**] which define such [**] and [**]. Assess ability to [**].
(vi) [**] from all [**] of [**]of a [**] may be required [**] in a [**].
Then, by [**] of a [**] which are [**] in a [**] determine the [**]
for the [**].
The conclusions from this [**] should permit [**] of [**] which can be served by
a [**].
Objective 2:
(i) Establish [**], and [**], for [**] using [**]. Demonstrate initially
in [**] with [**] being [**], or in [**] or [**];
(ii) Repeat in [**] treated [**] stability and [**] of [**];
(iii) Using [**] and [**] from these [**], then repeat in both [**]
treated [**], using the [**] derived [**].
(iv) Assess the [**] of [**].
(v) Monitor the [**] from such [**].
(vi) [**] to assess the [**] to function in [**] such as the [**]. As
restoration of [**] and [**].
[**] from this [**] and [**] efficacy of the [**] estimated from [**].
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Confidential Materials omitted and filed separately with the Securities
and Exchange Commission. Asterisks denote omissions.
Objective 3:
(i) Determine ability to [**] from [**] using [**] and [**] with [**].
(ii) Apply knowledge from [**] to [**].
(iii) As of [**] the [**] for the [**], and the [**] of [**].
(iv) [**] to the [**], using various approaches to [**].
(v) [**] of such [**] for [**] and [**] using [**] such as [**].
[**] from the section should establish the [**] of a [**] derived and [**] of
[**].
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APPENDIX A
OTHER AGREEMENTS:
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