MASTER SPONSORED RESEARCH AGREEMENT
This
Research Agreement ( “Agreement”) is made as of this May 10, 2006 (the
“Effective Date”) by and between The Ohio State University Research Foundation,
on behalf of Ohio State University, a university with a principal place of
business at 0000 Xxxxx Xxxx, Xxxxxxxx, XX 00000 (“Institution”) and Neurologix,
Inc., a corporation with a principal place of business at Xxx Xxxxxx Xxxxx, Xx.
Xxx, Xxx Xxxxxx, XXX 00000 (“Sponsor”).
WHEREAS,
Sponsor desires to obtain certain rights in and to intellectual property created
under the Research Project (as defined in Section 1 hereof) in accordance with
the terms and conditions set forth herein; and
WHEREAS,
Institution desires to grant such rights in and to such intellectual property
created under the Research Project, in accordance with the terms and conditions
set forth herein.
NOW,
THEREFORE, in consideration of the mutual covenants contained herein and for
other good and valuable consideration, the receipt and sufficiency of which is
hereby acknowledged, Sponsor and Institution, intending to be legally bound,
hereby agree as follows:
1.
RESEARCH PROJECT AND BUDGET
1.1
Sponsor shall pay Institution a total of Two Hundred and Fifty Thousand Dollars
($250,000) (the “Fee”) in accordance with Article 6 hereof. The Fee is
unrestricted as being not contingent on definitive research outcomes but the Fee
is paid specifically to support the Research Project (as defined below) in the
laboratory of Professor Xxxxxxx During (“Principal Investigator”). Institution
shall cause Principal investigator to perform research and related activities in
accordance with the terms of this Agreement.
1.2 The
research activities to be performed by the Principal Investigator hereunder
shall include gene therapy research studies on Xxxxxxxxx’x Disease and other
research, in any field whether or not related to Xxxxxxxxx’x Disease, conducted
by the Principal Investigator or people under his direction as outlined in
specific Research Project Addenda as Appendix A hereto, which may be revised by
Sponsor and Principal Investigator in writing from time to time (the “Research
Project”). It is understood by the parties that, as part of the Research
Project, the Principal investigator may conduct research on gene delivery
systems, new viral and non-viral vectors, animal models of neurological and
metabolic diseases and pre-clinical gene therapy studies on epilepsy and other
neurological disorders. Further, the parties agree that research items outside
the scope of the Research Project, including the items listed on Appendix B
hereto, that are currently under development by Sponsor, are owned solely by
Sponsor, and are expressly excluded from the Research Project.
1.3
Institution shall use the Fee amount at its sole discretion strictly to support
the Research Project. By way of example, the Fee may be used (i) to pay salaries
of laboratory and other staff, including support, administrative, liaison and
coordinators supporting the Research Project; (ii) to pay consultants supporting
the Research Project; (iii) obtain ad hoc external services as necessary to
support the Research Project; (iv) purchase capital equipment as needed to
support the Research Project and as approved
in
writing in advance by the Principal Investigator; and (v) to pay for travel,
attendance at meetings, books, journals and other education-related budget
expenses used to further and support the Research Project.
2.
INTELLECTUAL PROPERTY
2.1 The
parties hereto acknowledge and agree that the existing inventions, technologies
and other intellectual property of Sponsor and Institution are their separate
property, respectively, and are not affected by this Agreement and neither party
shall have any claims to or rights in such existing inventions, technologies and
intellectual property of the other party, except as otherwise set forth in this
Agreement and other written agreements between the parties, if any. Any new
invention, suggestion, idea, development, creation or discovery of any type
directly resulting from the work of the Research Project during the term of this
Agreement, or disclosed in writing by institution or Principal Investigator as a
Research Project invention-in-progress and completed after the term of this
Agreement, (“Invention”) shall be promptly disclosed in writing to Sponsor and
identified as an Invention under this Agreement.
2.2 All
patent rights, know-how, and other intellectual property rights (“Rights”)
covering Inventions resulting from the Research Project work shall become (i)
the sole property of Sponsor, if Sponsor’s personnel are the sole inventors;
(ii) the sole property of Institution, if Institution personnel are the sole
inventors; and (iii) the joint property of Sponsor and Institution if both
Sponsor and Institution personnel are the inventors. Notwithstanding any other
provision of this Agreement, in no event shall Institution have any right or
interest in or to any Invention or other property owned or controlled by
Sponsor. Sponsor shall grant Institution and Principal Investigator a
royalty-free research license during the term of this Agreement to any
Inventions (including Rights of Sponsor embodied therein) solely for academic
research purposes; provided that, Institution shall not license or sublicense to
any third party nor commercially exploit such Inventions or Rights in any
manner.
2.3
Inventorship (as opposed to ownership) of any Invention arising out of the
Research Project shall be determined in accordance with United States’ patent
laws, or, in the event that an Invention is not patentable, by mutual agreement
of the parties based upon their relative contributions to the Research
Project.
2.4 To
the extent that Institution owns any Rights in or to any Invention, whether
based on sole or joint inventorship, Institution hereby grants to Sponsor an
option to acquire an exclusive, worldwide, fee and royalty-bearing license to
any and all of Institution’s Rights in such Invention, upon commercially
reasonable terms. in consideration of the foregoing option grant Sponsor shall
reimburse Institution for patent expenses incurred during the course of the
Option Period (as defined below). Such option shall be exclusive and Institution
shall not discuss licensing the Rights with any third party during the Option
Period or Negotiation Period (as defined below). The filing, prosecution, and
maintenance of all Rights, whether solely owned by Institution or jointly owned
by the parties, will be the primary responsibility of Institution provided,
however, that Sponsor is given the opportunity to review and comment on all
filings, Institution shall not unreasonably decline to incorporate Sponsor’s
comments on all such filings.
2.5 The
option for any particular Invention shall extend for ninety (90) days after
Sponsor’s receipt of a written invention disclosure pursuant to this Agreement
(“Option Period11). If Sponsor notifies Institution in writing of its exercise
of the option for such Invention within the Option Period, the parties will
proceed in good faith to negotiate a mutually acceptable license agreement
within one hundred eighty (180) days after Institution’s receipt of Sponsor’s
option exercise notice (“Negotiation Period”). The Option Period and Negotiation
Period may be extended by mutual agreement of the parties in writing, such
extension, if requested by Sponsor, not to be unreasonably withheld by
Institution, If Sponsor does not exercise the applicable option, or, except as
otherwise set forth herein, if the parties fail to agree to the terms of a
license agreement within the Negotiation Period then Institution shall have no
further obligation to Sponsor with respect to any rights that Institution might
have in the subject Invention.
3.
PUBLICITY
3.1
Neither Institution nor Sponsor shall use the name of the other party or any of
its employees in connection with any press release, advertising, promotional
literature, or any other publicity matters without the express prior written
consent of the other, except such disclosures as may be required under
applicable law.
3.2
Except as may be required under applicable law, neither party shall create,
publish, distribute or permit any written material making reference to the other
party, without first submitting such material to the other party and obtaining
the other party’s prior written consent, such consent not to be unreasonably
withheld or delayed.
4.
PUBLICATIONS
4.1
Institution may publish information of general scientific and academic interest
in a scientific publication or other non-commercial context (“Publication”),
provided that at least thirty (30) days prior to submission of such information
to a third party for Publication, the Institution shall provide Sponsor with a
pre-submission Publication for Sponsor’s review. Any such Publication shall not
disclose any of Sponsor’s Confidential Information (as defined in Section 5.1
hereof. The submission of the information for Publication may be delayed for up
to an additional ninety (90) days to permit the filing of patents for any
Inventions that may be disclosed by such Publication. The Publication shall be
reasonably modified or corrected to prevent disclosure of Sponsor’s Confidential
Information. Each Publication shall appropriately acknowledge Sponsor’s
contribution to the Research Project if so requested by Sponsor or required for
such Publication.
5.
CONFIDENTIALITY
5.1
Institution shall use reasonable efforts to protect all information which
Sponsor considers to be confidential or proprietary (“Confidential Information”)
from unauthorized use, access, duplication or disclosure. In protecting
Confidential Information, Institution shall take, and cause its employees and
agents, including Principal Investigator, to take all reasonable measures
including but not limited to: (1) limit access to and use of Confidential
Information to the Principal Investigator and other Institution employees for
whom such access and use is required for performance of the Research Project;
(2) use Confidential Information only for the purposes approved by Sponsor in
writing; (3) prevent the access, transfer or disclosure of Confidential
Information to any other person or entity without Sponsor’s prior written
approval; (4) prominently xxxx all Confidential Information in its possession as
“Confidential;” (5) upon request by Sponsor, return to Sponsor all Confidential
Information owned or provided by Sponsor; and (6) immediately inform Sponsor of
any unauthorized disclosure or misappropriation of Confidential Information and
take and assist Sponsor in taking all reasonable and lawful actions necessary to
prevent or xxxxx such unauthorized disclosure or misappropriation.
5.2 This
Article 5 shall remain in effect for five (5) years following disclosure of any
Confidential Information. Institution may, but only to the extent such
disclosures are required by law, disclose Confidential Information En required
reports to Regulatory Authorities (e.g. the FDA, Department of Health,
Institutional Review Boards, Ethics and Biosafety Committees) or other
Governmental agencies or pursuant to Ohio public records laws; provided,
however, that Institution first inform Sponsor and seek to limit the scope of
disclosure of Confidential Information and obtain confidential treatment by such
agencies of the Confidential Information required to be disclosed. Information
shall not be subject to the obligations pertaining to Confidential Information
to the extent that such information is demonstrated: (a) by contemporaneous
documentation of Institution to have been in its possession prior to disclosure
to it by Sponsor, (b) to be generally and publicly known and available at the
time of disclosure or thereafter through no fault of Institution; (c) to have
been furnished to Institution or the Principal Investigator by a third party on
a non-confidential basis without breaching any obligations or duties to the
Sponsor, or (d) to have been independently developed by employees of Institution
who are not working in furtherance or support of the Research Project and who
have had no access to or knowledge of the Confidential Information. The
Institution acknowledges and agrees that all Confidential Information is of
important commercial and competitive value to the Sponsor, and may be maintained
by the Sponsor as confidential trade secrets.
6.
PAYMENTS
6.1
Sponsor shall pay the Fee to Institution in three (3) equal installments of
Eighty-Three Thousand Three Hundred and Thirty-Four Dollars U.S. ($83,334) over
an eighteen month period with the first payment due upon execution of this
Agreement and each additional payment every six months thereafter during the
term.
6.2
Payments shall be made payable to The Ohio State University Research Foundation
and sent to:
Xxxxx
Xxxxx,
The Ohio
State University Research Foundation
Director
Office of Business and Industry Contracts
0000
Xxxxx Xxxx
Xxxxxxxx,
XX 00000
Tax
lD#00-0000000
6.3 All
payments that are due and undisputed shall be made within thirty (30) days of
receipt by Sponsor of any invoice rendered by Institution.
7.
Effective Date and Research Period
This
Agreement shall become effective as noted above and shall continue in effect for
eighteen (18) months unless sooner terminated in accordance with the provisions
of Section 8. This Agreement shall automatically renew for successive periods of
18 months (each, a ‘Renewal Period”), unless either party provides written
notice to the other party that it desires to terminate this Agreement at least
thirty (30) days prior to the end of the initial term or any such Renewal
Period. Fees for each Renewal Period shall be negotiated in good faith between
the parties in advance of the end of the previous period.
8.
Termination
8.1 In
addition to any other right of termination or remedy conferred on the parties
under this Agreement or by law, this Agreement may be terminated at any time and
with immediate effect by written notice given by either party (referred to in
this clause as the “First Party”) to the other party (referred to in this clause
as the “Second Party” if:
(a) The
Second Party has failed to comply with an earlier written notice given by the
First Party specifying a material breach of this Agreement by the Second Party
and, in the case of a breach which is capable of remedy, requiring that the
Second Party remedy that breach within ten (10) days after receipt of that
earlier notice, provided that the First Party may not at any time give such a
notice terminating this Agreement if, at that time, the First Party is in
default under this Agreement.
(b) The
Second Party goes into liquidation
(c) The
Second party makes any assignment to, or enters into an arrangement for the
benefit of its creditors.
(d) The
Second Party becomes unable to pay its debts.
8.2 This
Agreement may be terminated by Sponsor at any time upon thirty (30) days advance
written notice to Institution.
8.3 Upon
termination of this Agreement for whatever reason:
(a) such
termination shall be without prejudice to the rights and remedies of either
party with respect to any breach of this Agreement by the other party, where
such a breach occurred prior to the termination of this Agreement.
(b) the
provisions of clauses 2, 3, 4 and 5, together with those other provisions of
this Agreement which are incidental to, and required in order to give effect to
those clauses, shall remain in full force and effect.
(c)
Sponsor shall be relieved of all outstanding payment obligations under Section 6
of this Agreement.
9.
Miscellaneous
9.1
Compliance with Laws. Each party agrees to comply in all material respects with
all applicable laws, rules and regulations in the performance of such party’s
obligations hereunder.
9.2 No
Partnership. The parties hereto are independent contractors, and nothing in this
Agreement will create any partnership, joint venture, agency, franchise, sales
representative, or employment relationship between the parties. Neither party
has
authority
to make or accept any offers or representations on behalf of the other party
hereto.
9.3 Force
Majeure. Neither party shall be liable for delay in performance or failure to
perform its obligations in whole or in part due to causes reasonably beyond the
control of such party, including without limitation, labor dispute, strike,
labor shortage, war or act of war, insurrection, riot or civil commotion, act of
public enemy, accident, fire, flood or other act of God, act of any governmental
authority, judicial action, short or reduced supply of fuel or raw materials,
Internet failure, disruption or interruption, technical failure where such party
has exercised ordinary care in the prevention thereof, whether or not similar to
the matters herein enumerated, and any such delay or failure shall not be
considered a breach of this Agreement.
9.4
Notices. Any notice or other communication required or permitted to be given
hereunder shall be in writing and given by hand delivery or by confirmed
facsimile, or sent, postage prepaid, by registered, certified (return receipt
requested) or express mail or reputable overnight courier service and shall be
deemed given when so delivered by hand or confirmed facsimile or if mailed,
three calendar days after mailing (one business day in the case of express mail
or overnight courier service), addressed to the other party at its respective
above address or such other address as such party may designate in writing to
the other party. Institution shall also send a copy of any notice it sends to
Sponsor or Principal Investigator to Sponsor’s counsel, Xxxxxx X. Xxxx, Skadden,
Arps, Slate, Xxxxxxx and Xxxx, LLP, Xxxx Xxxxx Xxxxxx, Xxx Xxxx, XX
00000.
9.5
Headings. The titles and headings contained in this Agreement are for reference
purposes only and shall not in any manner limit the construction of this
Agreement.
9.6
Expenses. Except as otherwise expressly set forth herein, all expenses incurred
by the parties in connection with this Agreement shall be borne wholly by the
party incurring such expenses.
9.7
Severability. If any term or provision of this Agreement is held to be invalid,
illegal or unenforceable in any respect, such invalidity, illegality or
unenforceability shall not affect any other provision of this Agreement. Such
invalid, illegal or unenforceable provision or provisions shall be ineffective
only to the extent of such invalidity, illegality or unenforceability and shall
be enforced to the fullest extent permitted by applicable law, without
invalidating the remainder of such provision or provisions or the remaining
provisions of this Agreement.
9.8
Assignment and Subcontracting; Successors and Assigns. This Agreement may not be
assigned by either party without the consent of other party, which consent shall
not be unreasonably withheld or delayed, provided, however, that this Agreement
may be assigned without prior consent to a third party that acquires
substantially all of the stock or assets of a party. The parties acknowledge
that either party may contract or subcontract any of its rights, duties or
obligations under this Agreement to a third party, but that such contracting or
subcontracting shall not relieve a party from its obligations hereunder. This
Agreement shall be binding upon and inure to the benefit of the parties hereto
and their respective successors, heirs, permitted assigns and legal
representatives.
9.9
Construction of Agreement. Both parties have participated fully in the
preparation and revision of this Agreement. Any rule of construction to the
effect that ambiguities are to be resolved against the drafting party shall not
apply to the interpretation of this Agreement.
9.10
Governing Law. This Agreement, the performance thereof and any and all matters
arising directly or indirectly herefrom shall be construed, interpreted, applied
and governed in all respects in accordance with the laws of the State of Ohio
without regard to such State’s conflicts or choice of laws
provisions.
9.11
Representations. Each party represents, warrants and covenants that (i) such
party has the power, authority and legal right to enter into this Agreement and
perform its obligations hereunder, and (ii) the performance of such party’s
obligations hereunder do not violate any contractual obligation or requirement
of applicable law or order by which such party is bound.
9.12
Notice. Any notices required to be given under this Agreement shall be made in
writing and delivered by facsimile transmission, by hand or by first class mail
to the following addresses:
If to
Institution:
The Ohio
State University Research Foundation
Attn:
Xxxxx Xxxxx, Director, Office of Business and Industry Contracts
0000
Xxxxx Xxxx
Xxxxxxxx,
XX 00000
Tel:
(000) 000-0000
Fax:
(000) 000-0000
Xxxxx.000@xxx.xxx
If to
Sponsor:
Xxxx
Xxxxxx, Chief Financial Officer
Neurologix
Inc.
Xxx
Xxxxxx Xxxxx
Xx. Xxx,
Xxx Xxxxxx 00000
Tel:
(000) 000-0000
Fax:
(000) 000-0000
xxxxxxxxxxxxxxxxxxxx.xxx
With a
copy sent to:
Xxxxxx X.
Xxxx, Esq.
Skadden,
Arps, Slate, Xxxxxxx & Xxxx LLP
Xxxx
Xxxxx Xxxxxx
Xxx Xxxx,
Xxx Xxxx 00000
9.13
Entire Agreement; Amendment. This Agreement sets forth the entire agreement and
understanding between the parties with respect to its subject matter and merges
and
supersedes all previous communications, negotiations, representations,
understandings and agreements, either oral or written, between the parties with
respect to the subject matter hereof. No amendment or modification of this
Agreement shall be binding on either party hereto, unless reduced to writing and
duly executed by an authorized representative of each of the parties
hereto.
IN
WITNESS WHEREOF, the parties hereto have caused this Agreement to be duly
executed as of the day and year first above written.
THE OHIO
STATE UNIVERSITY RESEARCH FOUNDATION
By: /s/ Xxxx
Xxxxxx
Name:
Xxxx Xxxxxx
Title:
Deputy Executive Director, Research Foundation
Neurologix,
Inc.
By: /s/ Xxxx
Xxxxxx
Name:
Xxxx Xxxxxx
Title:
Chief Financial Officer
By: /s/ Xxxx X. Xxxxxxx
Name: Xxxx
X. Xxxxxxx
Title: President
& CEO