BIOLOGICAL MATERIAL AGREEMENT Between ZNOMICS, INC. and PRESIDENT AND FELLOWS OF HARVARD COLLEGE
Exhibit
10.1
BIOLOGICAL
MATERIAL AGREEMENT Between ZNOMICS, INC. and
PRESIDENT
AND FELLOWS OF HARVARD COLLEGE
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Provider:
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0000
XX 0xx
Xxx., Xxxxx 000
Xxxxxxxx,
XX 00000
Tel.
000 000-0000
FAX
000 000-0000
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Recipient:
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President
and Fellows of Harvard College
FAS
Xxxx of the Faculty Xxxxxx
Xxxxxxxxxx
Xxxx 0 Xxxxx
Xxxxxxx
Xxxx
Xxxxxxxxx,
XX 00000
Tel.
000 000 0000
Fax 000
000 0000
With
copy of correspondence to:
President
and Fellows of Harvard College
Office
of Technology Development
0000
Xxxxxxxxxxxxx Xxxxxx
Xxxxxxx
Xxxxxx, Xxxxx 000
Xxxxxxxxx,
XX 00000
Tel.
000-000-0000
Fax 000-000-0000
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Recipient
Scientist:
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Xx.
Xxxxxxxxx Xxxxxx
Department
of Molecular and Cellular Biology
Harvard
University
16
Divinity Avenue
Room
1027
Xxxxxxxxx
XX 00000
Tel.
000.000.0000
Fax
000.000.0000
xxxxxx@xxx.xxxxxxx.xxx
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This
agreement (this “Agreement”), effective as of December 15, 2008 (the “Effective
Date”), provides for the provision of biological materials by Znomics, Inc.
(“ZNOMICS”) to President and Fellows of Harvard College
(“RECIPIENT”). The principal investigator for this project at
RECIPIENT is Xx. Xxxxxxxxx Xxxxxx (“RECIPIENT SCIENTIST”).
I. Definitions
ORIGINAL
MATERIAL: (1) Frozen sperm samples from approximately 15,000 male fish
contained in a Kryos K liquid nitrogen storage system. Two aliquots are provided
for most samples. Each sample contains on average 25 independent retroviral
insertions.; (2) DNA plates in 96 well format corresponding to individual sperm
samples or, in some cases, mixtures of sperm samples for insertion recovery.
Plates are numbered consecutively and relate to insertions in the ZeneMark
database.; (3) Protocols for sperm ID, IVF and F1 genotyping. (4) A copy of DNA
sequences used to map insertions to the zebrafish genome. This collection
includes approximately 5,000,000 sequence reads performed by 454 Life Sciences.
The sequence reads contain approximately 500,000 unique zebrafish genomic
sequence tags flanking the retroviral insertion sites.; (5) A copy of the
ZeneMark library insertion database. (6) A copy of ZeneMark Molecular database
for insertion recovery in FilemakerPro.
MODIFICATIONS: substances
(including drug targets) created by RECIPIENT which contain/incorporate the
ORIGINAL MATERIAL or are identified through use of the ORIGINAL
MATERIAL. MODIFICATIONS include modified descendants made by crossing
ORIGINAL MATERIAL with MUTANT ZEBRAFISH or WILDTYPE ZEBRAFISH.
MUTANT
ZEBRAFISH: zebrafish which contain one or more mutations that
were not created by Znomics.
WILDTYPE
ZEBRAFISH: zebrafish which do not contain any laboratory
induced or created mutations.
II. Terms and Conditions of this
Agreement
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1.
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RECIPIENT
shall forgo its rights to refunds and credits following RECIPIENT’S
termination of the BIOLOGICAL MATERIAL TRANSFER AND COLLABORATIVE RESEARCH
AGREEMENT between ZNOMICS and RECIPIENT (effective October 4, 2006)
(October 4, 2006 Agreement), pursuant to RECIPIENT’S letter to ZNOMICS
dated November 21, 2008; provided, however that ZNOMICS fulfills all its
obligations, responsibilities, and commitments under this
Agreement.
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2.
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ZNOMICS
will deliver the ORIGINAL MATERIAL to RECIPIENT
SCIENTIST. ZNOMICS will ship the ORIGINAL MATERIAL, at the
expense of RECIPIENT SCIENTIST, as soon as feasible, but not later than
three weeks from the Effective Date of this
Agreement.
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3.
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ZNOMICS
hereby assigns non-exclusive rights, title and interest in and to the
ORIGINAL MATERIAL to RECIPIENT. RECIPIENT has all the rights of ownership
in the ORIGINAL MATERIAL, including the right to provide some or all of
the ORIGINAL MATERIAL to third parties; provided, however, RECIPIENT shall
not provide the ORIGINAL MATERIALS to a for-profit entity for commercial
use.
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4.
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RECIPIENT
SCIENTIST will pay ZNOMICS a total of $30,000 for the ORIGINAL MATERIAL to
be delivered under this Agreement, payable as follows. Within
three weeks of receipt from ZNOMICS of all the ORIGINAL MATERIAL,
RECIPIENT SCIENTIST will pay $30,000 to
ZNOMICS.
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5.
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Each
year, for four years from the Effective Date of this Agreement, RECIPIENT
SCIENTIST will provide to ZNOMICS five lines derived from the ORIGINAL
MATERIAL to the extent such lines can be recovered with reasonable
efforts, under the terms of a material transfer agreement in a form
customarily required by RECIPIENT.
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6.
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Before
receipt by RECIPIENT of ORIGINAL MATERIALS, ZNOMICS will provide training
on the ORIGINAL MATERIALS for one day to a member of RECIPIENT SCIENTIST'S
research group.
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7.
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Intellectual
Property; Option.
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7.1
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Inventorship
of any patentable invention or discovery with respect to the ORIGINAL
MATERIAL that is conceived and reduced to practice solely within RECIPIENT
SCIENTIST’s laboratory as a result of working with the ORIGINAL MATERIAL
(an “Invention”) will be determined in accordance with principles of
United States patent law. Ownership shall follow
inventorship. For three years from the Effective Date of this
Agreement, RECIPIENT shall notify ZNOMICS, in writing, of any Invention of
which it becomes aware, and RECIPIENT shall be deemed aware when RECIPIENT
SCIENTIST has submitted an invention disclosure form to RECIPIENT’s Office
of Technology Development. Any information included in any such
disclosure shall be considered RECIPIENT’s confidential information and
shall not be disclosed or used by ZNOMICS for any purpose other than
exercising its rights under Section
7.4.
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7.2
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RECIPIENT
shall have sole authority to prepare and file (solely in RECIPIENT’s name)
patent applications with respect to Inventions owned solely by RECIPIENT
or jointly with third parties, and, as between the parties, shall bear all
expenses related
thereto.
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7.3
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As
additional consideration for ZNOMICS providing ORIGINAL MATERIAL to
RECIPIENT, for three years from the Effective Date of this Agreement,
under RECIPIENT’S rights and interest, RECIPIENT agrees to grant ZNOMICS a
paid-up, royalty-free, worldwide, non-exclusive licenseto use any Invention for internal research
purposes only.
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7.4
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As
additional consideration for ZNOMICS providing ORIGINAL MATERIAL to
RECIPIENT, for three years from the Effective Date of this Agreement,
RECIPIENT hereby grants to ZNOMICS an exclusive option (“Option”) to
negotiate a royalty-bearing, exclusive worldwide license under RECIPIENT’S
rights and interest in any Invention (“Option Invention”) ; provided,
however, that ZNOMICS shall have the right to negotiate only for a
non-exclusive license if the relevant Invention relates to a research tool
as described in NIH Principles and Guidelines with Respect to Sharing
Biomedical Research Resources. ZNOMICS shall have ninety (90)
days from its receipt of each disclosure of an Invention under Section 5.1
(the “Option Exercise Period”) to notify RECIPIENT in writing of its
desire to exercise its Option. If ZNOMICS exercises its Option
within the relevant Option Exercise Period, the parties agree to negotiate
in good faith for a period of up to one hundred twenty (120) days (unless
extended by the mutual written agreement of the parties) (the “Negotiation
Period”) with respect to the terms of a license agreement, including a
commercially reasonable royalty rate. If ZNOMICS does not
exercise its Option during the relevant Option Exercise Period or if
ZNOMICS exercises its Option and the parties fail to reach agreement on
terms within the relevant Negotiation Period, ZNOMICS shall have no
further rights to the relevant Option Invention and RECIPIENT thereafter
shall be free to negotiate and enter into a license with respect to such
Option Invention with any third
party.
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8.
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RECIPIENT
shall have the right to publish and otherwise publicly disclose the
results of its work with the ORIGINAL
MATERIAL.
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9.
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ZNOMICS
represents that there are no preexisting or third party rights in the
ORIGINAL MATERIAL that would affect
RECIPIENT.
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10.
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Any
ORIGINAL MATERIAL delivered pursuant to this Agreement is understood to be
experimental in nature and may have hazardous
properties. ZNOMICS makes no representations and extends no
warranties of any kind, either expressed or implied. There are
no express or implied warranties of merchantability or fitness for a
particular purpose.
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11.
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RECIPIENT
assumes all liability for damages which may arise from its use, storage or
disposal of the ORIGINAL MATERIAL. ZNOMICS will not be liable
to RECIPIENT for any loss, claim or demand made by RECIPIENT, or made
against RECIPIENT by any other party, due to or arising from the use of
the ORIGINAL MATERIAL by RECIPIENT, except to the extent caused by the
gross negligence or willful misconduct of
ZNOMICS.
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12.
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This
Agreement will terminate upon payment to ZNOMICS pursuant to paragraph
4. Sections 5, 7, 8, 9, 10, 11, 13, and 15, as well related
definitions and any rights, obligations and duties which by their nature
extend beyond the expiration or termination of this Agreement shall
survive termination of this
Agreement.
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13.
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ZNOMICS
will not have the right to direct or control the activities of RECIPIENT
or RECIPIENT SCIENTIST in performing any research. Under no
circumstances shall RECIPIENT or any of its faculty, staff, students or
agents, including without limitation RECIPIENT SCIENTIST, be considered to
be employees or agents of ZNOMICS. This Agreement shall not
constitute, create, or in any way be interpreted as a joint venture,
partnership, or formal business organization of any
kind.
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14.
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No
modification or waiver of this Agreement shall be valid unless in a
writing executed by both parties. This Agreement is the sole
agreement with respect to the subject matter hereof and except as
expressly set forth herein, supersedes all other agreements and
understandings between the parties with respect to the
same.
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15.
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ZNOMICS
shall not use RECIPIENT’s name or insignia, or any adaptation of them, or
the name of any of RECIPIENT’s investigators in any advertising,
promotional or sales literature, including, without limitation, press
releases, without the prior written approval of
RECIPIENT.
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16.
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Any
notices required or provided by the terms of this Agreement shall be in
writing, addressed in accordance with this Section and shall be delivered
personally or sent by certified or registered mail, return receipt
requested, postage prepaid or by nationally-recognized express courier
services providing evidence of delivery. The effective date of
any notice shall be the date of first receipt by the receiving
party. Notices shall be sent to the address/addressee listed
above or to such other address/addressee as the party to whom notice is to
be given may have provided to the other party in writing in accordance
with this provision.
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AGREED:
PRESIDENT
AND FELLOWS OF HARVARD COLLEGE
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Authorized
Official:
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Xxxxxxx X. Xxxxxxxxxx
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Title:
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Associate Xxxx-Faculty of Arts &
Sciences
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Signature:
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/s/ Xxxxxxx X.
Xxxxxxxxxx
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Date:
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December 22,
2008
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Authorized
Official:
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Xxxxx X. Xxxxxx
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Title:
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Chief Scientific Officer
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Signature:
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/s/ Xxxxx Xxxxxx
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Date:
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January 5,
2009
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I, the
undersigned, hereby confirm that I have read the Agreement, that its contents
are acceptable to me and that I agree to be bound by its terms.
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Xx.
Xxxxxxxxx Xxxxxx:
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/s/ Xxxxxxxxx Xxxxxx
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Date:
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December 18,
2008
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