Exhibit 10.9
THIS AGREEMENT, by and between Texas Tech University Health Sciences Center
(hereinafter referred to as HSC) and HemoBioTech, having a principal place of
business at 00000 Xxxxxxx Xxxx, Xxxxx 0000, Xxxxxx, Xxxxx 00000 (hereinafter
referred to as "Sponsor").
RECITALS:
1. The research program contemplated by this Agreement is of mutual interest and
benefit to HSC and Sponsor, will further multiple missions of HSC (Education,
Research, and Public Service) in a manner consistent with its status as a
non-profit, tax-exempt, educational institution, and may derive benefits for
Sponsor, HSC, and society by the advancement of science through discovery;
2. Sponsor has expressed a desire to engage HSC to create or enhance
technologies that will assist in Sponsor's understanding of science or
development and commercialization of new products and/or processes;
3. HSC's research capabilities reflect a substantial public investment which
HSC, as part of its mission, wishes to utilize in a cooperative and
collaborative research effort with Sponsor in order to meet the above-stated
interests;
NOW, THEREFORE, in consideration of the premises and mutual covenants set forth
the below, the parties hereto agree to the following:
Article 1--Definitions
As used herein, the following terms shall have the following meanings:
1.1 "Project" shall mean the research described in the Memorandum of
Understanding attached hereto, under the direction of Xx. Xxx Xxxxxx
(hereinafter referred to as "Principal Investigator"). However, should Xx.
Xxxxxx become unavailable for any reason, HSC will appoint another individual
acceptable to both parties as Principle Investigator.
1.2 "Intellectual Property" shall mean certain inventions and/or discoveries
conceived and/or reduced to practice in performance of this Project and
resulting patents, divisions, continuations, or substitutions of such
applications and all reissues thereof, upon which a HSC employee or agent is
named inventor.
1.3 "Proprietary Information" shall mean any written information and data marked
proprietary or non-written information and data disclosed which is iden-
tified at the time of disclosure as proprietary and is reduced to writing and
transmitted to the other party within sixty (60) days of such non-written
disclosure.
Article 2--Period of Performance
Period of Performance shall be from September 1, 2002 to August 31, 2006
(hereinafter referred to as "Period of Performance"). This Period of Performance
can be extended by mutual agreement in writing for up to two years after the end
of the second year of this agreement and prior to the current termination date.
Article 2--Research Work
HSC shall commence the performance of the Project on the first day of Period of
Performance and shall use reasonable best efforts to perform Project
substantially in accordance with the term and conditions of this Agreement.
Article 4--Reports
The Principal Investigator shall furnish Sponsor with reports regarding Project
on a monthly basis.
Article 5--Fiscal Considerations
5.1 This is a cost reimbursable agreement. Compensation is governed by the
attached Memorandum of Understanding, incorporated herein by reference.
5.2 At the end of this agreement HSC shall retain title to equipment purchased
with funds provided by Sponsor under this Agreement, except for the bioreactor
and associated filtration system which shall remain the property of Sponsor and
can be removed to Sponsor's production facility at the end of this Agreement.
HSC shall not retain title to any equipment in case of early termination of this
Agreement by HSC.
5.3 In the event of early termination of this Agreement by Sponsor pursuant to
Article 10 hereof, Sponsor shall pay all related and reasonable costs and
non-cancelable obligations incurred by HSC as of the date of termination.
Article 6--Publicity
Except as required by law, neither party to this Agreement will use the name of
the other party, nor of any member of the other party's employees, in any
public-
2
ity, advertising, or news release without the prior written approval of an
authorized representative of that party.
Article 7--Publication
7.1 It is the purpose of this clause, in conjunction with Article
8--Confidentiality, to balance Sponsor's need to protect commercially feasible
technologies, products, or processes with HSC's public responsibility to freely
disseminate scientific findings for the advancement of knowledge. HSC recognizes
that the public dissemination of information based upon Research performed under
this Agreement cannot contain Proprietary Information nor should it jeopardize
Sponsor's ability to commercialize Intellectual Property developed hereunder.
Further, HSC acknowledges that commercially sensitive information related to the
design or composition of specified products or processes is not of general
interest, while its confidentiality may be critical to the commercialization of
said products or processes. Similarly, Sponsor recognizes that the scientific
results of Project must be publishable and, subject to the confidentiality
provisions of the Agreement, may be presented in forums such as symposia or
international, national or regional professional meetings, or published in
vehicles such as books, journals, websites, theses, or dissertations.
7.2 HSC agrees not to publish or otherwise disclose Proprietary Information
without the written prior consent of the Sponsor. Sponsor agrees that HSC,
subject to review by Sponsor, shall have the right to publish results of Project
that are not proprietary to the design or composition of specified projects or
processes derived from Project. Sponsor shall be furnished copies of any
proposed publication or presentation at least 30 days before submission of such
proposed publication or presentation. During that time, Sponsor shall have the
right to review the material for Proprietary Information provided by Sponsor to
assess the patentability of any invention described in the material. If Sponsor
decides that a patent application should be filed, the publication or
presentation shall be delayed an additional ninety (90) days or until a patent
application is filed, whichever is sooner. At Sponsor's request, Proprietary
Information provided by Sponsor shall be deleted.
7.3 As this project is designed to result in Phase I and Phase II Clinical
Trials, both HSC and Sponsor shall work to assure that any publication does not
jeopardize that status of such clinical trials.
Article--Confidentiality
8.1 Prior to disclosure of Proprietary Information to HSC by Sponsor, Sponsor
shall notify Principal Investigator of its intent to disclose Proprietary
Informa-
3
tion; and Principal Investigator shall have the right to decline receipt of said
information. Said Proprietary Information shall be sent only to Principal
Investigator.
8.2 Each party to this Agreement agrees to treat Proprietary Information
received from the other with the same degree of care with which it treats its
own Proprietary Information, and further agrees not to disclose such Proprietary
Information to a third party without prior written consent from the party
disclosing Proprietary Information.
8.3 The foregoing obligations of non-disclosure do not apply to Proprietary
Information which:
(a) was known to the recipient prior to the disclosure hereunder;
(b) was received from a third party not under an obligation of confidence
to recipient;
(c) is in the public domain at the time of disclosure hereunder or
subsequently entered the public domain without the fault of the
recipient;
(d) has been independently developed by an employee of recipient that has
not had access directly or indirectly to Proprietary Information, and
recipient can substantiate any claim of independent development by
written evidence; or
(e) is required to be disclosed by law.
8.4 Unless otherwise agreed to in writing, neither party hereto shall have any
obligation of confidentiality under this Agreement after the earliest of either
the fifth anniversary of the conclusion of Period of Performance or termination
in accordance with Article 10.
Article 9--Intellectual Property
9.1 The purpose of this clause is to balance Sponsor's ability to reasonably
exploit, with due competitive advantage, the commercial viability of
technologies, products, or processes with HSC's responsibility to seek the
broadest public benefit from the results of HSC research. HSC recognizes that
one of the prime reasons Sponsor has entered this Agreement is an effort to
secure a benefit, through the creation or enhancement of technologies. At the
same time, Sponsor recognizes that HSC has an obligation to utilize the
knowledge and technology generated by HSC research in a manner that maximizes
societal benefit and eco-
4
nomic development and that provides for the education of graduate and
undergraduate students.
9.2 HSC will promptly disclose to Sponsor in writing any Intellectual Property
made during the Project performed hereunder. Such disclosure shall be
sufficiently detailed for Sponsor to assess the commercial viability of the
technology and shall be provided and maintained by Sponsor in confidence
pursuant to the terms of Article 8. Sponsor shall have up to ninety (90) days
from the receipt of the disclosure to inform HSC whether it elects to have HSC
file a patent application thereon pursuant to the procedures set forth below.
(But see 7.2)
9.3 All right and title to Intellectual Property shall belong to HSC where all
the inventors are HSC employees and shall be jointly owned by Sponsor and HSC
where inventors are from both organizations. Texas Tech University System,
through its Office of Technology Transfer and Intellectual Property, shall
include such Intellectual Property into the preexisting license agreement
between the Sponsor and the Texas Tech University System at no additional cost,
except for patent expenses. Inventions made solely by Sponsor's employees shall
belong to Sponsor.
9.4 HSC shall promptly file and prosecute patent applications, using counsel of
HSC's choice, after due consultation with Sponsor. HSC shall keep Sponsor
advised as to all developments with respect to applications(s) and shall
promptly supply copies of all papers received and filed in connection with the
prosecution in sufficient time for Sponsor to comment. Sponsor's comments shall
be taken into consideration. Sponsor shall reimburse Texas Tech University for
all reasonable out-of-pocket costs incurred in connection with such preparation,
filing, and prosecution of patent(s) within 30 days of receipt of a copy of the
invoice.
9.5 Within nine (9) months of the filing date of a U.S. patent application, the
Sponsor shall provide to HSC a written list of foreign countries in which
applications should be filed. If Sponsor elects to discontinue financial support
of any patent prosecution, in any country, the University shall be free to
continue prosecution at its expense. In such event; HSC shall have no further
obligation to Sponsor in regard to such patent applications or patents.
9.6 Copyright to copyrightable materials, including computer software, resulting
from Project shall vest in HSC, with a royalty-free license to Sponsor for its
non-commercial use. HSC shall grant Sponsor an option to license any such
material(s) it wishes to develop for commercial purposes on reasonable terms and
conditions, including a reasonable royalty, as the parties hereto agree in
subsequent writing.
5
9.7 Sponsor understands that HSC must comply with the provisions of Xxxx-Xxxx
Act 37 CFR Part 401.
Article 10--Termination
10.1 Either party may terminate this Agreement upon (90) days prior written
notice to the other; however, because of the nature of this Agreement neither
party will terminate except for reasonable cause and the terminating party will
give a full-explanation and allow the other party to cure the cause for
termination.
10.2 In the event that either party hereto shall commit any material breach of
or default in any term or conditions of this Agreement, and also shall fail to
reasonably remedy such default or breach within sixty (60) days after receipt of
written notice thereof; the non-breaching party may, at its option and in
addition to any other remedies that it may have at law or in equity, terminate
this Agreement by sending notice of termination in writing to the other party to
such effect. Termination shall be effective as of the day of the receipt of such
notice.
10.3 Termination of this Agreement by either party for any reason shall not
affect the rights and obligations of the parties accrued prior to the effective
date of termination of this Agreement, except insofar as Sponsor's breach of
contract for failure to make payments under Article 5 shall cause Sponsor to
forfeit its rights under Article 9. The rights and obligations of Article 8 of
this Agreement shall survive termination.
Article 11--Independent Contractor
11.1 In the performance of project, HSC shall be deemed to be and shall be an
independent contractor.
11.2 Neither party hereto is authorized or empowered to act as agent for the
other for any purpose and shall not on behalf of the other enter into any
contract, warranty, or representation as to any matter. Neither party shall be
bound by the acts or conduct of the other.
Article 12--Indemnity
HSC is responsible for its own negligence, gross negligence, willful misconduct,
or legal wrongdoing in any way connected with the performance of any work under
this Agreement which results in claims or liabilities, penalties, costs or
expenses. Sponsor is responsible for its own negligence, gross negligence,
willful misconduct or legal wrongdoing in any way connected with the performance
of
6
any work under this agreement which results in claims or liabilities, penalties,
costs or expenses. Sponsor shall fully indemnify and hold harmless HSC against
all claims arising out of Sponsor's use, commercialization, or distribution of
information, materials or products which result in whole or in part from the
research performance pursuant to this Agreement. Sponsor will hold HSC harmless
from any claims arising from third party claims that the work performed
hereunder infringes third party intellectual property rights. HSC has no
knowledge of any such claims.
Article 13--Notices
Notices, invoices, communications, and payments hereunder shall be deemed made
if given by overnight courier or by registered or certified envelope, post
prepaid, and addressed to the party to receive such notice, invoice or
communication at the address given below or such other address as may hereafter
be designated by notice in writing:
If to Sponsor:
Name/Title Xxxxxxx Xxxx Phone 972/000-0000
Interim CEO and VP Finance FAX 972/000-0000
Address 00000 Xxxxxxx Xxxx, Xxxxx 0000
Xxxx/Xxxxx/Xxx Xxxxxx, Xxxxx 00000 E-mail:
XXXXX@XXXXXXXXXXX.XXX
If to HSC:
Name/Title Xx. Xxxxxxx X. Xxxxx Phone 806/000-0000
Associate VP for Research FAX 806/000-0000
Address Room 2B106
Health Sciences Center E-mail:
Texas Tech University XXXXXXX.XXXXX@XXXXXX.XXX
City/State/Zip Xxxxxxx, Xxxxx 00000
For Payment
Matters:
Name/Title ___________________ Phone: ________________
Address ___________________ FAX: ________________
Address ___________________ E-Mail: ________________
City/State/Zip ___________________
7
For Techical Issues:
Name/Title Xx. Xxx Xxxxxx Phone: 806/000-0000
Research Assistant Professor FAX: 806/000-0000
Surgery, Health Sciences Center
Texas Tech Universtiy
Address 3601 4th Street E-Mail:
City/State/Zip Xxxxxxx, Xxxxx 00000 xxx.xxxxxx@xxxx.xxxxxx.xxx
Notice given pursuant to this Article shall be effective as of the day of the
receipt of notice.
Article 14--Governing Law
This Agreement shall be governed and construed in accordance with the laws of
the State of Texas.
Article 15--Dispute Resolution
Except for the right of either party to apply to a court of competent
jurisdiction for a temporary restraining order, a preliminary injunction, or
other equitable relief to preserve the status quo or prevent irreparable harm,
any and all claims, disputes or controversies arising under, out of, or in
connection with the Agreement, including any dispute relating to production, use
or commercialization, which the parties shall be unable to resolve within sixty
(60) days shall be mediated in good faith. The party raising such dispute shall
promptly advise the other party of such claim, dispute or controversy in a
writing, which describes in reasonable detail the nature of such dispute. By not
later than five (5) business days after the recipient has received such notice
of dispute, each party shall have selected for itself a representative who shall
have the authority to bind such party, and shall additionally have advised the
other party in writing of the name and title of such representative. By not
later than ten (10) business days after the date of such notice of dispute, the
party against whom the dispute shall be raised shall select a mediation firm in
Texas and such representatives shall schedule a date with such firm for a
mediation hearing. The parties shall enter into good faith mediation and shall
share the costs equally. If the representatives of the parties
8
have not been able to resolve the dispute within fifteen (15) business days
after such mediation hearing, the parties shall have the right to pursue any
other remedies legally available to resolve such dispute in either the Courts of
the State of Texas or in the United States District Court for the District of
Texas, to whose jurisdiction for such purposes HSC and Sponsor each hereby
irrevocably consents and submits.
Article 16--General Provisions
16.1 NON-ASSIGNABILITY--The rights and obligations of the parties under this
Agreement shall not be assignable without written permission of the other party.
16.2 SEVERABILITY--If any provisions hereof is held unenforceable or void, the
remaining provisions shall be enforced in accordance with their terms, provided
that the provision at issue is not material to the overall purpose and
operation of this Agreement.
16.3 ENTIRE AGREEMENT--This Agreement contains the entire agreement between the
parties respecting the subject matter hereof, except for the prior license
agreement between HemoBioTech, Inc., and the Texas Tech University System which
is to be read in conjunction with this Agreement. Should processing of this
Agreement require issuance of a purchase order or other contractual document,
all terms and conditions of the other document are hereby deleted in entirety.
This Agreement may not be amended in any manner except by an instrument in
writing signed by the duly authorized representatives of each of the parties
hereto.
16.4 EXPORT CONTROL REGULATIONS--Sponsor agrees that it shall comply with all
applicable export control regulations of the United States of America. Sponsor
shall be responsible for obtaining all information regarding such regulations
that is necessary for Sponsor to comply with such regulations.
9
IN WITNESS WHEREOF, the parties hereto have caused these presents to be executed
in duplicate as of the day and year first above written.
SIGNATURES
Texas Tech University Health Sciences Center
/s/ Xxxxxxx X. Xxxxx
----------------------------------
By Xxxxxxx X. Xxxxx, Ph.D.
Title Associate VP for Research
----------------------------
Date 7/18/02
----------------------------
Sponsor
/s/ Xxxxxxx Xxxx
----------------------------------
By
Title Interim CEO & CFO
----------------------------
Date 7/18/2002
----------------------------
10
MEMORANDUM OF UNDERSTANDING
This Agreement, effective September 1, 2002, between Texas Tech
University Health Sciences Center (hereinafter HSC) and HemoBioTech, Inc.,
having a principal place of business at 00000 Xxxxxxx Xxxx, Xxxxx 0000, Xxxxxx,
Xxxxx 00000.
It is agreed as follows:
GENERAL POINTS
If HemoBioTech is successful in obtaining FDA approval of a blood
substitute product, it will establish a $1.2M seed fund to support and
commercialize other HSC ventures.
Unless otherwise specifically stated below or in the Agreement of which
this is a part, any costs and/or overhead owed by HemoBioTech would be accrued
for one year and then paid by HemoBioTech to HSC.
This Agreement, including any agreed upon extensions thereof, would last
through the successful completion of Phase II clinical testing, subject to
routine contract approval.
It is HemoBioTech's present intent to headquarter in, and create its
production facilities in Lubbock, Texas, and it is presently working with Market
Lubbock to assure those events.
SPECIFICS
HemoBioTech would upgrade blood substitute production facilities at HSC
to provide GMP facilities for Phase I and II clinical trial materials.
HSC would have title to all equipment, except the bioreactor and
associated filtration system, once a free standing production facility is built.
HemoBioTech personnel would have free access to work in the production
facility at HSC and would have access to analytical facilities at HSC, staff and
equipment required to produce, test and certify the product.
HSC employee, Xx. Xxx Xxxxxx, will perform services under this Agreement.
HemoBioTech shall reimburse TTUHSC for that portion of Xx. Xxxxxx'x salary and
48% overhead allotted to work performed under this Agreement.
HSC would allow HemoBioTech employee-researchers/technicians to be hired,
paid for by HemoBioTech, to work in the Blood Substitute Laboratory at HSC.
HSC would assist in recruiting and hiring at HemoBioTech expense Texas
Tech System students to work as interns at HemoBioTech, such interns being paid
by HemoBioTech on a current basis.
HSC would allow HemoBioTech to conduct research funded by Federal and
State Grants, should they be obtained, using HSC facilities and paying overhead.
Any such research will be considered funded research and is subject to this
Agreement and Memorandum of Understanding. Written agreements for HemoBioTech to
use HSC facilities will be developed for these additional projects as necessary.
HSC would work with HemoBioTech in obtaining federal and state grants for
the purpose of advancing blood substitute related research development and
manufacturing activities.
11
FINANCIAL
As stated above, costs are deferred for one year. Costs associated with
Sponsor's use of equipment, supplies and services provided by HSC will be paid
by Sponsor based on HSC's actual cost. Sponsor will pay overhead for the use of
HSC personnel.
Xx. Xxxxx, Xx. Xxxxxx and Xxxxxxx Xxxx of HemoBioTech shall meet
quarterly at HSC to review projected project expenses and agreement upon
payments to be made by HemoBioTech to HSC, until such time as stable longer-term
budgets can be generated.
CONFLICT
In the event of a conflict between this Memorandum of Understanding and
the to which it is attached, the terms of the
will govern.
12
