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This Agreement ("Agreement"), is entered into as of the first day of
September, 2001, by and between Lexon Inc. an Oklahoma Corporation ("Lexon") and
Research Foundation of SUNY Stony Brook (Stony Brook) a New York not-for-profit
corporation.
WHEREAS, Lexon has previously entered into a with North Shore University Hospital, now North Shore Long Island
Jewish Health System dated July 1, 1998 ("NSUH Agreement") whereby Lexon
committed research support funds to provide equipment, supplies and technical
support to Researcher for the development of the ebaf assay.
WHEREAS, Lexon and NSUH have fulfilled the terms of the NSUH Agreement
whereby the parties have executed general releases.
WHEREAS, Lexon desires to support Xx. Xxxxxxxxxx'x research through
grant funding for validation that lefty can be used for the diagnosis and/or
treatment of various forms of human cancer and treatment of fibrotic disorder.
WHEREAS, Lexon desires that Stony Brook engage Xx. Xxxxxx Xxxxxxxxxx
("Researcher") as an employee to perform, his research and other duties as
required by Stony Brook subject to the limitations set forth herein.
WHEREAS, Lexon has engaged an independent third party Docro Inc. for
the commercialization of the lefty diagnostic tests described above.
NOW, THEREFORE, the parties hereto agrees as follows:
1. Engagement. Effective on the earlier to occur of September 1, 2001 or
Stony Brook's receipt of the first scheduled payment of the funds, and
subject to the continued receipt by Stony Brook of the funds as
provided hereunder, Stony Brook will hire Researcher beginning on
September 1st for the years 2001-2002, 2002-2003, 2003-2004,
2004-2005. Researcher shall be paid bi-weekly in accordance with Stony
Brook's payroll procedure.
2. Term. Researcher shall be employed by Stony Brook so long as Stony
Brook receives the funds from Lexon to pay Researcher's salary.
3. Duties. Researcher shall continue his research as set forth above and
perform such duties as required by Stony Brook in accordance to his
position at Stony Brook so long as these duties do not materially
interfere with the research.
4. Benefits/Withholding. Subject to the employment policies of Stony
Brook and any employee contribution requirements, Stony Brook will
provide fringe benefits to Researcher in his capacity as an employee
of Stony Brook substantially similar to similarly situated employees
of Stony Brook. Stony Brook will deduct all Federal, State, and local
income tax as well as FICA and other withholdings or deductions
required by state law from each payment of Researcher's salary.
5. Termination. This Agreement can be terminated by either party with one
hundred and eighty (180) days written notice. The Company will meet
all obligations which it has incurred under this agreement prior to
the date of termination.
6. Payments. During the term of this Agreement, Lexon will transmit or
deposit to a Stony Brook account one hundred thousand dollars
($100,000.00) per half year. The first one hundred thousand ($100,000)
is due upon execution of this agreement. Lexon shall also transmit
funds for the twenty nine point five percent (29.5%) or current fringe
benefit rate in effect with each half-year payment to cover Xx.
Xxxxxxxxxx'x fringe benefits. Finally, Lexon shall deposit or transmit
such other funds pursuant to a submitted research budget and as
necessary for Stony Brook Research Foundation's administering of this
account. In no event shall the total of these monies exceed three
hundred thousand per annum.
7. Employment Agreement. Researcher will be subject to a separate
employment agreement with the rights, duties and obligations contained
therein.
8. Continuation. This Agreement may be continued upon the same terms and
conditions beyond September 1, 2005 as set forth herein, provided
Lexon notifies Stony Brook one hundred and eighty (180) days in
advance, in writing of its desire to extend the Agreement and
transmits funds in advance of July 1, 2005, in the manner described in
Paragraph six above.
9. Title. It is hereby agreed that all right, title and interest, in and
to the Research Technology shall vest in Lexon, and in and to any
drawings, plans, diagrams, and other documents containing Research
Technology shall vest solely in Lexon. Research Technology shall be
defined as Xx. Xxxxxxxxxx'x research for validation that lefty can be
used for the diagnosis and/or treatment of various forms of human
cancer, the treatment of fibrotic disorder and the treatment of hair
loss.
10. Patents. A. Stony Brook will have the first right to file patents
covering Xx. Xxxxxxxxxx'x new inventions subject to Lexon's licensing
right. Stony Brook will promptly disclose to Lexon in writing any
inventions which constitute potential patents. B. At the initiative of
Lexon or Stony Brook, the parties shall consult with each other
regarding the prosecution of all patent applications based upon Xx.
Xxxxxxxxxx'x research. Such patent applications shall be filed,
prosecuted and maintained by patent counsel jointly selected by Lexon
and Stony Brook. Copies of all such patent applications and patent
office actions shall be forwarded to each Lexon and Stony Brook. Lexon
and Stony Brook shall each have the right to have the patent
applications independently reviewed by other patent counsel, upon
prior written notice to the other party.
C. Upon prior written approval by Lexon, all applications and
proceedings with respect to Stony Brook Patents shall be filed,
prosecuted and maintained by Stony Brook at the expense of Lexon.
Against the submission of invoices, Lexon shall reimburse Stony Brook
for all costs and fees incurred by NSUH during the term of this
Agreement, in connection with the filing, maintenance, prosecution,
protection and the like of Stony Brook Patents.
D. Lexon and Stony Brook shall assist, and cause their respective
employees and consultants to assist each other, in assembling
inventorship information and data for the filing a prosecution of
patent applications.
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11. Good Faith License Agreement. Stony Brook agrees to grant Lexon an
option to an exclusive license for ninety days, to any and all
inventions, new technologies or other intellectual property developed
by Xx. Xxxxxxxxxx. During the ninety day option the parties agree to
negotiate the terms of the exclusive license agreement in good faith.
These negotiations shall be consistent with Stonybrook's ordinary
practices and procedures. This good faith negotiation shall be
exclusive and include a first right of refusal for Lexon.
12. Confidential Information. Except as otherwise specifically provided
for Stony Brook shall maintain any and all Research Technology in
confidence and shall not release or disclose any tangible or
intangible component thereof to any third party without first
receiving the prior written consent of Lexon to said release or
disclosure. Confidential Information must be clearly marked and
identified Confidential Information will remain confidential for a
term of five years. Except as otherwise specifically provided for
Lexon shall maintain any and all Research Technology in confidence and
shall not release or disclose any tangible or intangible component
thereof to any third party without first receiving the prior written
consent of Stony Brook to said release or disclosure. The obligations
of confidentiality on each party set forth above shall not apply to
any component of the Research Technology which was part of the public
domain not due to some unauthorized act by or omission of the
receiving party after the effective date of the Agreement or which is
disclosed to the receiving party after the effective date of this
Agreement or which is disclosed to the receiving party by a third
party who has the right to make such disclosure. The provisions above
notwithstanding Lexon may disclose Research Technology to third
parties who need to know the same in order to secure regulatory
approval for the development and/or sale of Licensed Products.
13. Publication. Prior to submission for publication of a manuscript
describing the results of Xx. Xxxxxxxxxx'x research at Stony Brook,
Stony Brook shall mail a copy to Lexon. Lexon shall have thirty days
upon receipt of said manuscript to notify Stony Brook that such
manuscript contains patentable subject matter. If Lexon raises this
issue the parties shall put forth reasonable efforts to file a patent
application in a reasonable time as set forth above. After the
application has been filed the manuscript may be published. If Stony
Brook does not receive a response to the manuscript within thirty
days, Stony Brook may be free to submit such manuscript for
publication in any manner consistent with academic standards.
14. Infringement of Stony Brook Patent. In the event that a party to this
Agreement acquires information that a third party is infringing upon
one or more of the Stony Brook Patents, the party acquiring such
information shall promptly notify the other party to this Agreement in
writing of such infringement. In the event of an infringement of a
Stony Brook Patent Lexon shall be privileged but not required to bring
suit against the infringer. Should Lexon elect to bring suit, Stony
Brook agrees to be party plaintiff in such action. Lexon should choose
patent counsel and the expenses of such suit or suits, which Lexon
elects to bring, including any expenses incurred by Stony Brook
(settlement costs, attorney fees etc.), shall be paid for entirely by
Lexon. In addition, Lexon shall hold Stony Brook harmless, free and
clear from and against all costs of such litigation including attorney
fees. Lexon shall not settle or compromise such litigation without
Stony Brook's consent. In the event Lexon exercises the right to xxx
hereunder, they
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shallbe first entitled to a return of any and all expenses advance and
then the proceeds shall be divided seventy five percent (75%) to Lexon
and twenty five percent (25%) to Stony Brook. If Lexon does not
exercise the right to xxx conferred above within ninety days of
notice, Stony Brook shall have the right, but shall not be obligated
to bring suit. Stony Brook's rights shall be identical in every way to
Lexon's (and Lexon's to Stony Brook's) as set forth above, including
the division of proceeds with seventy five percent (75%) going to
Stony Brook and twenty five percent (25%) going to Lexon.
Notwithstanding the language above each party shall reserve the right
to counsel of their choice at their expense in any patent suit. Both
parties agree to fully cooperate with the other party and their
counsel by giving testimony and producing documents lawfully requested
in the prosecution of any suit for infringement, provided that the
party bring they suit shall be responsible for all reasonable expenses
incurred with said cooperation.
15. Continuation. This Agreement may continue beyond it original terms
upon written consent of both parties.
16. Government Law and Venue. This contract shall be deemed to be executed
in the state of Oklahoma. Therefore, Oklahoma law shall govern any
dispute arising hereunder. Furthermore, the parties hereby agree that
Tulsa County, Oklahoma shall be the exclusive venue for any such
disputes.
17. Relationship of the Parties. This Agreement does not and shall not
constitute an agency, partnership or joint venture between the
parties. Neither party shall hold itself out as an agent of the other
party. Neither Lexon nor Stony Brook shall have the right to bind or
obligate each other.
18. Assignment. No party shall have the right to assign this Agreement to
a third party without the other parties prior written consent. This
Agreement will be recognized in the event of a merger, acquisition of
these entities or a substantial portion of their assets.
19. Waiver. No action by the parties shall constitute a waiver from any
provision of this Agreement unless duly signed by both parties to this
Agreement.
20. Severability. If any potion of this Agreement is held invalid, illegal
or unenforceable the remainder shall be in full force and effect.
21. Headings. Headings are for reference only any shall have no effect on
the meaning of any provision of the Agreement.
22. Entire Agreement. This Agreement constitutes the entire agreement
between the parties and supersedes all previous agreements, promises,
representations, proposals and understandings whether written or oral.
IN WITNESS WHEREOF, the parties have executed this the 15th day of November,
2001.
Lexon, Inc.
By: / s / Xxxxxxx Xxxxx
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Xxxxxxx Xxxxx,
President
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Research Foundation of SUNY of Stony Brook
By: / s / Xxxx Xxxxxx
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Name: Xxxx Xxxxxx
Director of Sponsored Program
Title: 00-0-00
XXXXXXXXXXXXXX
XXXXX XX XXX XXXX )
: ss.:
COUNTY OF SUFFOLK )
On the 5th day of December 2001, before me, the undersigned, a notary
public in and for said State, personally appeared Xxxx Xxxxxx, Director of
Sponsored Program of RF SUNY, personally known to me or proved to me on the
basis of satisfactory evidence to be the individual whose name is subscribed to
the within instrument and acknowledged to me that he executed the same in his
capacity, and that by his signature on the instrument, the individual executed
the instrument.
/ s / Xxxxxxx Xxxxxxxx
---------------------------------
Notary Public
ACKNOWLEDGEMENT
STATE OF OKLAHOMA )
: ss.:
COUNTY OF TULSA )
On the 15th day of November 2001, before me, the undersigned, a notary
public in and for said State, personally appeared Xxxxxxx Xxxxx, CEO of Lexon
Inc., personally known to me or proved to me on the basis of satisfactory
evidence to be the individual whose name is subscribed to the within instrument
and acknowledged to me that he executed the same in his capacity, and that by
his signature on the instrument, the individual executed the instrument.
/ s / Xxxxx Xxxxxx
---------------------------------
Notary Public
Commission Expires: 6-2-02
