Exhibit 10.65
UNIVERSITY OF NORTH TEXAS HEALTH SCIENCE CENTER AT
This Sponsored Research Agreement (the "Agreement") is made between the
University of North Texas Health Science Center at Fort Worth ("UNTHSC") and MY-
TECH, Inc. and/or assigns ("Sponsor").
RECITALS
A. Sponsor desires that UNTHSC perform certain research hereinafter
described and is willing to advance funds to sponsor such research-, and
B. Sponsor desires to obtain certain rights to intellectual property
developed during the course of such research with a view to profitable
commercialization of such intellectual property for the Sponsor's benefit; and
C. UNTHSC is willing to perform such research and to grant certain
fights to such intellectual property.
1. EFFECTIVE DATE
The Agreement shall be effective as of September 1, 1998 (the
"Effective Date").
2. RESEARCH PROGRAM
2.1 UNTHSC will use reasonable efforts to conduct the research program
described in Attachment A ("Research Program"), and will furnish the facilities
necessary to carry out the Research Program. The Research Program will be under
the direction of Xxxxx X. Xxxxxxx, Ph.D. or his successor as mutually agreed to
by the parties (the "Principal Investigator") and will be conducted by the
Principal Investigator at UNTHSC. For overall direction of the Research Program,
the Principal Investigator will report to Xxxxx X. Xxxxx, Ph.D., Director for
Cardiovascular Research Institute.
2.2 The Research Program shall be performed during the period from the
Effective Date through and including August 31, 2000 ("Term"). Sponsor shall
have the option to negotiate an extension of the Ter-m under mutually agreeable
terms. Such option shall be exercised within ninety (90) days prior to the end
of the Term.
2.3 Sponsor understands that UNTHSC's mission is advancement of
knowledge, education, and patient care and, consequently, the Research Program
will be designed to carry out that mission. The manner of performance of the
Research Program shall be determined solely by the Principal Investigator.
UNTHSC does not guarantee specific results.
2.4 Sponsor understands that UNTHSC will not be involved in similar
research during the Term without the written permission of Sponsor.
2.5 UNTHSC does not guarantee that any intellectual property rights
will result from the Research Program, that the scope of any intellectual
property rights obtained will cover Sponsor's commercial *interest, or that any
such intellectual property rights will be free of dominance by others
independent of the Research Program
3. COMPENSATION
3.1 As consideration for the performance by UNTHSC of its obligations
under this Agreement, Sponsor will pay UNTHSC an amount equal to its projected
expenditures and reasonable overhead in conducting the Research Program and
reasonable costs and attorney' s fees to protect any intellectual property
rights arising from the Research Program subject to a maximum expenditure
limitation of $460,954 unless such maximum expenditure level is amended pursuant
to written amendment to the Agreement. The payment of $460,954 shall be made by
Sponsor to UNTHSC on or before September 1, 1998, unless the Sponsor elects to
make the payments in an alternative mode. The Sponsor agrees, however, to pay
UNTHSC no less than equal monthly payments of $___________ payable on or before
the 1st of each month of the Term.
3.2 UNTHSC shall maintain the Research Program Funds in a separate
account and shall expend such funds for wages, supplies, equipment, travel, and
other operation expenses in connection with the Research Program in accordance
with the budget set out in Attachment A. In addition, UNTHSC shall utilize the
Research Program Funds as appropriate, upon consultation with and prior approval
from the Sponsor, for patent expenses including attorney' s fees to protect any
intellectual property rights arising from the Research Program in accordance
with the budget set out in Attachment A.
3.3 It is understood that any Research Program Funds remaining in this
separate account at the conclusion of the Research Program shall be retained by
UNTHSC regardless of the specific results of the Research Program.
3.4 UNTHSC shall retain title to all equipment purchased and/or
fabricated by it with the Research Program Funds provided by Sponsor under this
Agreement.
4. CONSULTATION AND REPORTS
4.1 Sponsor's designated representative for consultation and
communications with the Principal Investigator shall be Xxxxxxx X. Xxxxxxxx or
such other person as Sponsor may from time to time designate in writing to
UNTHSC and the Principal Investigator ("Designated Representative").
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4.2 During the Term of the Agreement, Sponsor's representatives may
consult informally with UNTHSC's representatives regarding the project, both
personally and by telephone. Access to work carried on in UNTHSC laboratories in
the course of these investigations shall be entirely under the control of UNTHSC
personnel but shall be made available on a reasonable basis.
4.3 The Principal Investigator will make up to twenty-four (24) oral
reports during the Term of the Agreement as requested by Sponsor's Designated
Representative. Within thirty (30) days of the conclusion of the Term of the
Agreement, the Principal Investigator shall submit to Sponsor a comprehensive
final written report which shall contain, but which need not be limited to, the
following information:
a. A summary of expenses of the Research Program.
b. A report of the activities undertaken and
accomplishments achieved by UNTHSC under the Research
Program.
5. PUBLICITY
Without the advance review and approval of the other party, which will
not be unreasonably withheld, neither party shall make reference to the other in
a press release or any other written statement in connection with work performed
under this Agreement, if it is intended for use in the public media, except as
required by the Texas Public Information Act or other law or regulation. UNTHSC,
however, shall have the right to acknowledge Sponsor's support of the
investigations under this Agreement in scientific or academic publications and
other scientific or academic communications without Sponsor's prior approval. In
any such statements, the parties shall describe the scope and nature of their
participation accurately and appropriately.
6. PUBLICATION AND ACADEMIC RIGHTS
6.1 UNTHSC and Principal Investigator shall not have the right to
publish or other-wise publicly disclose information gained in the course of this
Agreement without written permission of Sponsor. It is further agreed that
neither party will publish or make public any material or statements regarding
this project until patents and/or other appropriate protective measures are in
place. In order to avoid loss of patent rights as a result of premature public
disclosure of patentable information, UNTHSC will submit any prepublication
materials to Sponsor for review and comment at least sixty (60) days prior to
planned submission for publication.
6.2 It is understood that the UNTHSC investigators may discuss the
research being performed under this Agreement with other investigators but shall
not reveal information which is Sponsor's Confidential Information under Article
7. In the event any
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joint inventions result from such discussions, UNTHSC shall grant to Sponsor the
rights outlined in Article 8 of this Agreement to the extent these are not in
conflict, with obligations to another party as a result of the involvement of
the other investigator(s). In this latter case, UNTHSC shall, in good faith,
exercise reasonable efforts to enable Sponsor to obtain rights to the joint
invention.
7. CONFIDENTIAL INFORMATION
7.1 The parties may wish, from time to time, in connection with work
contemplated under this Agreement, to disclose confidential information to each
other ("Confidential Information"). Each party will use reasonable efforts to
prevent the disclosure of any of the other party's Confidential Information to
third parties for a period of five (5) years from receipt thereof, provided that
the recipient party's obligation shall not apply to information that:
(1) is not disclosed in writing or reduced to writing and
so marked with an appropriate confidentiality legend
within thirty (30) days of disclosure;
(2) is already in the recipient party's possession at the
time of disclosure thereof,
(3) is or later becomes part of the public domain through
no fault of the recipient party; or
(4) is received from a third party having no obligations
of confidentiality to the disclosing party;
(5) is independently developed by the recipient party; or
(6) is required by law or regulation to be disclosed.
7.2 In the event that information is required to be disclosed pursuant
to subsection (6), the party required to make disclosure shall notify the other
to allow that party to assert whatever exclusions or exemptions may be available
to it under such law or regulation.
8. PATENTS, COPYRIGHTS, AND TECHNOLOGY RIGHTS
8.1 Title to all inventions and discoveries made by UNTHSC resulting
from the Research Program shall reside in UNTHSC. Sponsor shall have an
exclusive, worldwide, royalty-bearing, perpetual license to make, use or sell
under any invention or discovery made and conceived during the term of this
Agreement and directly resulting from the performance of research hereunder or
anything of commercial value created directly or indirectly resulting from the
Research Program, with the right to sublicense.
The duration of the license granted to Sponsor by UNTHSC in this
Section 8.1 shall be for the period of the lesser of.
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(1) the effective term of any patent filed on any
invention or discovery made and conceived during the
term of this Agreement; or
(2) twenty-five (25) years.
The duration of the license granted to Sponsor shall have no effect on
the Term of the Research program as set out in Section 2.1 of the Agreement.
8.2 Proceeds from the sale, use, license and all other revenues
generated from inventions, discoveries and patents shall be divided as follows:
(1) the first $900,000 of revenues received shall be
payable directly to Sponsor as reimbursement for the
payment of the Research Program funds;
(2) all revenues received subsequent to the first
$900,000 shall be payable with sixty-five percent
(65%) to the Sponsor and thirty-five percent (35%) to
UNTHSC.
(3) UNTHSC's Intellectual Property Policy will govern the
disbursement of those revenues received by UNTHSC
from this agreement.
9. LIABILITY
9.1 Sponsor agrees to indemnify and hold harmless UNTHSC, its Regents,
officers, agents and employees from any liability, loss or damage they may
suffer as a result of claims, demands, costs or judgments against them arising
out of the use by Sponsor of the results obtained from the activities performed
by UNTHSC under this Agreement; provided, however, that the following is
excluded from Sponsor's obligation to indemnify and hold harmless.
a. the negligent failure of UNTHSC to substantially
comply with any applicable governmental requirements,
or
b. the negligence or wilful malfeasance of any Regent,
officer, agent or employee of UNTHSC.
9.2 Both parties agree that upon receipt of a notice of claim or action
arising out of the activities to be carried out pursuant to the Research Program
described in Attachment A, the party receiving such notice will notify the other
party promptly.
10. INDEPENDENT CONTRACTOR
For the purposes of this Agreement and all services to be provided
hereunder, the parties shall be, and shall be deemed to be, independent
contractors and not agents or
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employees of the other party. Neither party shall have authority to make any
statements, representations or commitments of any kind, or to take any action
which shall be binding on the other party, except as may be expressly provided
for herein or authorized in writing.
11. TERM AND TERMINATION
11.1 This Agreement shall commence on the Effective Date and extend
until the end of the Term as described hereinabove, unless sooner terminated in
accordance with the provisions of this Section.
11.2 This Agreement may be terminated by the written agreement of both
parties.
11.3 In the event that either party shall be in default of its material
obligations under this Agreement and shall fail to remedy such default within
sixty (60) days after receipt of written notice thereof, this Agreement shall
terminated upon expiration of the sixty (60) day period.
11.4 Termination or cancellation of this Agreement shall not affect the
fights and obligations of the par-ties accrued prior to termination. As its sole
liability upon early termination, UNTHSC shall pay Sponsor the Research Program
Funds not incurred or committed to be expended as of the effective termination
date, including salaries for appointees for the remainder of their appointment.
In the event of early termination, UNTHSC shall not be obligated to refund
Sponsor any of the overhead expenses from the Research Program Funds as set out
in Attachment A.
11.5 Any provisions of this Agreement which by their nature extend
beyond termination shall survive such termination.
12. ATTACHMENTS
Attachment A is incorporated and made a part of this Agreement for all
purposes.
13. GENERAL
13.1 This Agreement may be assigned by Sponsor without the prior
consent of UNTHSC provided that the terms and conditions of this Agreement are
binding on the successors and assigns of Sponsor and that Sponsor provides
UNTHSC with written notification of any assignment.
13.2 This Agreement constitutes the entire and only agreement between
the parties relating to the Research Program, and a prior negotiations,
representations, agreements and understandings are superseded hereby. No
agreements altering or
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supplementing the terms hereof may be made except by means of a written document
signed by the duly authorized representatives of the parties.
13.3 Any notice required by this Agreement by Articles 8, 9, or 11
shall be given by prepaid, first class regular mail address in the case of
UNTHSC to:
University of North Texas Health Science Center at Fort Worth
0000 Xxxx Xxxxx Xxxx.
Xxxx Xxxxx, XX 00000
ATTN: Xxxxx Xxxxx, Ph.D.
PHONE: (000) 000-0000
or in the case of Sponsor to:
MY-TECH, Inc.
0000 Xxxx Xxx.
Xxxxx, XX 00000
ATTN: Xxxxxxx X. Xxxxxxxx
PHONE (000) 000-0000
or at such other addresses as may be given from time to time in accordance with
the terms of this notice provision.
13.4 This Agreement shall be performable in the State of Texas and
shall be governed by, construed, and enforced in accordance with the internal
laws of the State of Texas.
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IN WITNESS WHEREOF, the parties have caused this Agreement to be
executed by their duly authorized representatives.
UNIVERSITY OF NORTH TEXAS MY-TECH, INC.
HEALTH SCIENCE CENTER
AT FORT WORTH
/s/ Xxxxxxxx X. Xxxxx /s/ Xxxxxxx X. Xxxxxxxx
--------------------------------- -----------------------------------
Xxxxxxxx X. Xxxxx, D.O. Xxxxxxx X. Xxxxxxxx
Vice President for Health Affairs
and President Executive Xxxx
/s/ Xxxxx X. Xxxxxxx
---------------------------------
Xxxxx X. Xxxxxxx
Vice President for Fiscal Affairs
READ AND UNDERSTOOD:
/s/ Xxxxx X. Xxxxxxx
---------------------------------
Xxxxx X. Xxxxxxx, Ph.D.
Principal Investigator
/s/ Xxxxx X. Xxxxx
---------------------------------
Xxxxx X. Xxxxx., Ph.D.
Director, Cardiovascular Research
Institute
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