----------------------------
This Agreement, effective as of May 1, 1996 (the "Effective Date"), is
between the University of Massachusetts ("Institution"), a public
institution of higher education of the Commonwealth of Massachusetts, and
CompuMed, Inc. ("Sponsor"), a Delaware corporation.
RECITALS
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WHEREAS, as of the Effective Date, Sponsor and Institution have
entered into an Exclusive License Agreement (the "License Agreement") with
respect to certain Dual Energy CCD Technology that was invented by Xx.
Xxxxxx Xxxxxxxx, a faculty member at Institution;
WHEREAS, in connection with the execution of the License Agreement,
Sponsor agreed to fund research with Xx. Xxxxxx Xxxxxxxx, in the further
development of the licensed CCD Technology; and
WHEREAS, Institution desires to receive such research funds for use by
Xx. Xxxxxxxx at Institution, on the terms and conditions set forth in this
Agreement.
NOW, THEREFORE, Institution and Sponsor hereby agree as follows:
1. Definitions.
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1.1 "Confidential Information" shall mean any confidential or
------------------------
proprietary information furnished by one party (the "Disclosing Party") to
the other party (the "Receiving Party") in connection with the performance
of the Research Project, provided that such information is specifically
designated as confidential. Such Confidential Information may include,
without limitation, trade secrets, know-how, inventions, technical data or
specifications, testing methods, and research and development activities.
Confidential Information does not include Research Results.
1.2 "Field" shall mean the area of bone densitometry.
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1.3 "Inventions" shall mean any potentially patentable invention bad
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on the Research Results which is (i) conceived during the Term by employees
of Institution or Sponsor, or both, and (ii) reduced to practice either
during the Term or within a period of six (6) months after the conclusion
of the Term.
1.4 "Patent Rights" shall mean all United States and foreign patent
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applications claiming an Invention, including any divisional, continuation,
continuation-in-part (to the extent that the claims are directed to an
Invention), and foreign equivalents thereof, as well as any patents issued
thereon or reissues thereof "Institution Patent Rights" shall mean Patent
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Rights claiming Inventions that are conceived and reduced to practice
solely by employees of Institution, as determined under the patent laws of
the United States, and assigned to Institution. "Joint Patent Rights" shall
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mean Patent Rights claiming Inventions that are conceived or reduced to
practice jointly by employees of Institution and employees or consultants
of Sponsor, as determined under the patent laws of the United States, and
assigned to Institution or Sponsor.
1.5 "License Agreement" means the Exclusive License Agreement dated
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as of the date hereof between Sponsor and Institution.
1.6 "Materials" shall mean any tangible biological, chemical, or
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physical materials (including prototypes). In the case of biological
materials, the term "Materials" shall also include tangible materials that
are routinely produced through use of the original materials, including,
for example, any progeny derived from a cell line, monoclononal antibodies
produced by hybridoma cells, DNA or RNA replicated from isolated DNA or
RNA, recombinant proteins produced through use of isolated DNA or RNA, and
recombinant proteins isolated from a cell extract or supernatant by
non-proprietary affinity purification methods.
1.7 "Principal Investigator" shall mean an employee of Institution
----------------------
who has primary responsibility for the performance of the Research Project.
The Principal Investigator is identified in Section 2.1. below.
1.8 "Project Materials" shall mean Materials that are discovered or
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developed in the performance of the Research Project.
1.9 "Proprietary Materials" shall mean any proprietary Materials
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other than Project Materials that are furnished by one party (the
"Supplier") to the other party (the "Recipient") in connection with the
performance of the Research Project.
1.10 "Research Project" shall mean the research project described on
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Exhibit A ("Description of Research Project"), which Institution agrees to
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perform under the terms and conditions of this Agreement.
1.11 "Research Results" shall mean all data, test results, laboratory
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notes, techniques, know-how, and any other research results that are
obtained in the performance of the Research Project. The term "Research
Results" shall not include any Project Materials, patentable inventions,
copyrighted or copyrightable works, trademarks or service marks, or other
intellectual property based on the Research Results. As a matter of policy,
Institution ordinarily will not assert trade secret protection for Research
Results.
1.12 "Technical Representative" shall mean an individual designated by
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Sponsor as its principal technical representative for consultation and
communications with Institution and the Principal Investigator. The
Technical Representative is identified in Section 2.1. below.
1.13 "Term" shall mean the term of this Agreement as further defined
----
in Section 6.1. below.
2. Performance of Research Project.
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2.1 Principal Investigator and Technical Representative. The
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Principal Investigator shall be Xx. Xxxxxx Xxxxxxxx. If Xx. Xxxxxxxx ceases
to serve as Principal Investigator for any reason, Institution will
promptly notify Sponsor, and Institution and Sponsor shall use good faith
efforts to identify a mutually acceptable replacement within sixty (60)
days. If a suitable replacement Principal Investigator cannot be identified
within the sixty-day period, Sponsor shall have right to terminate this
Agreement as provided in Section 6.2. Sponsor shall identify its Technical
Representative within sixty (60) days after the Effective Date. Sponsor may
change its Technical Representative upon thirty (30) days written notice to
Institution.
2.2 Performance of Research Project. Institution shall use reasonable
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efforts to complete the Research Project in accordance with Exhibit A;
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however, Institution makes no warranties regarding the completion of the
Research Project or the achievement of any particular results. The
Principal Investigator shall direct the Research Project and shall control
the manner of its performance. The Technical Representative may consult
informally with the Principal Investigator, both in person and by
telephone, regarding the performance of the Research Project. The Technical
Representative shall have reasonable access to Institution facilities where
the Research Project is being conducted, but the exact time and manner of
such access shall be determined by the Principal Investigator.
2.3 Records, Materials, and Reports. The Principal Investigator will
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prepare and maintain records containing all Research Results, including
laboratory notebooks maintained in accordance with customary academic
practice. During the term of this Agreement, and at the convenience of the
Principal Investigator, the Technical Representative shall have reasonable
access to such research records, and the Principal Investigator agrees to
furnish Sponsor, upon request, with reasonable amounts of any Project
Materials, subject to availability. Within ninety (90) days after the
expiration or termination of this Agreement, the Principal Investigator
shall deliver to Sponsor a final report describing all significant Research
Results in reasonable detail; provided, however, that the Principal
Investigator may extend this ninety-day deadline with the consent of
Sponsor, which consent shall not be unreasonably withheld.
3. Contributions of Sponsor.
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3.1 Contributions to Research Project. Sponsor shall contribute to
---------------------------------
the Research Project the financial support, equipment, personnel,
technology, and other resources listed on Exhibit B ("Sponsor
---------
Contributions"). Sponsor may also furnish Institution and the Principal
Investigator with certain Confidential Information and Proprietary
Materials, which shall remain the property of Sponsor. Institution and the
Principal Investigator reserve the right to refuse to accept any
Confidential Information or Proprietary Materials offered by Sponsor.
3.2 Payments to Institution. In consideration of the performance of
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the Research Project, Sponsor shall make advance quarterly payments to
Institution in the amounts listed on Exhibit B ("Sponsor Contributions").
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Payments should be made in the name of the "University of Massachusetts"
and sent to the Bursars Office at the Medical Center, with reference to the
Karellas research. If this Agreement is terminated prior to the expiration
of the Term for any reason other than a material breach by Institution (as
described in Section 6.3.) or loss of the Principal Investigator (as
described in Section 6.2), then on the effective date of such termination,
Sponsor shall pay Institution the entire amount of any uncancellable
financial commitments that Institution intended to pay through Sponsor
Contributions, including without limitation (i) salaries for appointed
employees for the remainder of their term of appointment (e.g.,
postdoctoral fellows) and stipends for graduate students and (ii)
Institution expenses previously incurred for equipment, travel, and
associated indirect costs. At the request of Sponsor, within a reasonable
time after the expiration or termination of this Agreement, Institution
shall furnish Sponsor with a final accounting of all expenses incurred in
connection with the Research Project and all funds received from Sponsor
pursuant to this Section 3.2., together with a check payable to Sponsor in
the amount of ally unexpended and uncommitted funds.
3.3 Use of Funds. Institution shall monitor expenditures, in
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accordance with its institutional policies, to ensure that the funds
provided by Sponsor are spent in connection with the performance of the
Research Project.
3.4 Ownership of Equipment. Upon termination or expiration of this
----------------------
Agreement, Institution shall retain title to all equipment purchased or
fabricated by Institution with funds provided by Sponsor; provided,
however, that Company shall have title to any prototypes that are listed as
deliverables under Exhibit A. In addition, Sponsor shall retain title to
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proprietary equipment and software that Sponsor provides to Institution for
use in the Research Project, which equipment and software will initially be
identified on Exhibit B or later identified in a transmittal letter or
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other document that accompanies such equipment and software when delivered
to Institution.
4. Confidential Information; ProPrietary Materials; Publications.
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4.1 Confidential Information.
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(a) Designation. Confidential Information that is disclosed in
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writing shall be marked with a legend indicating its confidential status
(such as "Confidential" or "Proprietary"). Confidential Information that is
disclosed orally or visually shall be documented in a written notice
prepared by the Disclosing Party and delivered to the Receiving Party
within thirty (30) days of the date of disclosure; such notice shall
summarize the Confidential Information disclosed to the Receiving Party and
reference the time and place of disclosure.
(b) Obligations. During the Term and thereafter for a period of
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three (3) years, the Receiving Party shall (i) maintain all Confidential
Information in strict confidence, except that the Receiving Party may
disclose or permit the disclosure of any Confidential information to its
directors, officers, employees, consultants, and advisors who are obligated
to maintain the confidential nature of such Confidential Information and
who need to know such Confidential information for the performance of the
Research Project; (ii) use all Confidential Information solely for the
performance of the Research Project; and (iii) allow its directors,
officers, employees, consultants, and advisors to reproduce the
Confidential Information only to the extent necessary for the performance
of the Research Project, with all such reproductions being considered
Confidential Information.
(c) Exceptions. The obligations of the Receiving Party under
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Section 4.1.(b) above shall not apply to the extent that the Receiving
Party can demonstrate that certain Confidential Information (i) was in the
public domain prior to the time of its disclosure under this Agreement;
(ii) entered the public domain after the time of its disclosure under this
Agreement through means other than an unauthorized disclosure resulting
from an act or omission by the Receiving Party; (iii) was independently
developed or discovered by the Receiving Party without use of the
Confidential Information; (iv) is or was disclosed to the Receiving Party
at any time, whether prior to or after the time of its disclosure under
this Agreement, by a third party having no fiduciary relationship with the
Disclosing Party and having no obligation of confidentiality with respect
to such Confidential Information; or (v) is required to be disclosed to
comply with applicable laws or regulations, or with a court or
administrative order, provided that the Disclosing Party receives
reasonable prior written notice of such disclosure.
(d) Ownership and Return. The Receiving Party acknowledges that
--------------------
the Disclosing Party (or any third party entrusting its own information to
the Disclosing Party) claims ownership of its Confidential Information in
the possession of the Receiving Party. Upon the expiration or termination
of this Agreement, and at the request of the Disclosing Party, the
Receiving Party shall return to the Disclosing Party all originals, copies,
and summaries of documents, materials, and other tangible manifestations of
Confidential Information in the possession or control of the Receiving
Party, except that the Receiving Party may retain one copy of the
Confidential Information in the possession of its legal counsel solely for
the purpose of monitoring its obligations under this Agreement.
4.2 Proprietary Materials.
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(a) Limited Use and Transfer. The Recipient shall use
------------------------
Proprietary Materials only for the performance of the Research Project. The
Recipient shall use the Proprietary Materials only in compliance with all
applicable federal, state, and local laws and regulations. The Recipient
shall not use the Materials in any in vivo experiments on human subjects.
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The Recipient shall not transfer any Proprietary Materials to any third
party without the prior written consent of the Supplier.
(b) Warranty Disclaimer. Any Proprietary Materials that are
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furnished to a party pursuant to this Agreement are provided for
experimental purposes and may have hazardous properties. THE SUPPLIER MAKES
NO REPRESENTATIONS, AND EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS
OR IMPLIED, With RESPECT TO ANY PROPRIETARY MATERIALS. THERE ARE NO EXPRESS
OR IMPLIED WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR
PURPOSE, OR THAT THE USE OF PROPRIETARY MATERIALS WILL NOT INFRINGE ANY
PATENT RIGHTS OR OTHER PROPRIETARY RIGHTS OF A THIRD PARTY.
(c) Ownership and Return. The Recipient acknowledges that the
--------------------
Supplier (or any third party entrusting its Materials to the Supplier)
claims ownership of its Proprietary Materials in the possession of the
Recipient. The Recipient agrees to cause its employees to execute and
deliver any documents of assignment or conveyance to effectuate the
ownership rights of the Supplier in Proprietary Materials. Upon the
expiration or termination of this Agreement, the Recipient shall at the
instruction of Supplier either destroy or return any unused Proprietary
Materials.
4.3 Publications. Institution and its employees will be free to
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publicly disclose (through journals, lectures, or otherwise) the Research
Results, provided that the Principal Investigator shall have provided a
copy of the proposed disclosure to Sponsor at least sixty (60) days prior
to the submission of any written or electronic (including LAN, WAN and
Internet) publication (or manuscript for consideration for publication) and
at least thirty (30) days prior to any oral public disclosure (the "Review
Period") to allow Sponsor to determine whether any Invention or its
Confidential Information would be disclosed. The parties expressly agree
that research grant proposals submitted to federal, state, or local
agencies or non-profit organizations shall not be considered a public
disclosure under this Section; however, the University shall use reasonable
efforts to instruct its researchers to avoid disclosing Inventions in such
grant proposals. If Sponsor reasonably determines that the proposed
disclosure would reveal an Invention or Sponsor Confidential Information,
then Sponsor shall notify Institution and the Principal Investigator of
such determination and its basis prior to the expiration of the Review
Period. With respect to disclosure of an Invention, upon receipt of timely
notice by Sponsor, the Principal Investigator agrees to delay submission of
the written publication or presentation of the oral public disclosure until
one of the following events occurs: (i) Sponsor and Institution agree that
no patentable Invention exists; (ii) Institution or Sponsor files a patent
application claiming the relevant Invention pursuant to Article 5; (iii)
Sponsor, Institution, and Principal Investigator jointly agree upon
deletions that prevent disclosure of any Invention; or (iv) a period of
sixty (60) days elapses commencing with the effective date of notice to
Institution. With respect to disclosure of Sponsor Confidential
Information, upon receipt of timely notice by Sponsor, the Principal
Investigator agrees to delete such information from any proposed
disclosure.
5. Intellectual Property.
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5.1 Assignment of Rights in Inventions and Project Materials. The
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Principal Investigator agrees to assign all rights in any Invention and all
commercial rights in any Project Material to Institution. The Principal
Investigator shall cause every person who may be involved in the Research
Project to sign the University Participation Agreement, which assigns all
rights in Inventions to Institution. Sponsor represents and warrants that
all of its employees and consultants who may be involved in the Research
Project shall have agreed to assign to Sponsor all rights in Inventions and
all commercial rights in Project Materials.
5.2 Ownership of Patent Rights and Project Materials. In accordance
------------------------------------------------
with United States patent law, Institution shall have sole ownership of all
Institution Patent Rights and Institution and Sponsor shall have joint,
undivided ownership of all Joint Patent Rights. Institution shall have sole
ownership of commercial rights in all Project Materials not claimed in the
Patent Rights; however, if a Project Material incorporates one or more
Sponsor Proprietary Materials, University may not exploit commercial rights
in that Project Material without the written consent of Sponsor.
5.3 Notice of Inventions and Project Materials. The Principal
------------------------------------------
Investigator shall promptly disclose to Institution the conception or
reduction to practice of any Invention and the development or discovery of
any commercially valuable Project Material that is not otherwise disclosed
as an Invention. Institution and Sponsor shall provide prompt written
notice to the other of the internal disclosure by its employees of any
Invention. Institution and Sponsor shall discuss whether to obtain Patent
Rights for the Invention and whether such Patent Rights would constitute
Institution Patent Rights or Joint Patent Rights. Institution shall provide
prompt written notice to Sponsor of the internal disclosure of any
commercially valuable Project Material that is not otherwise disclosed as
an Invention.
5.4 Responsibility for Patent Rights.
--------------------------------
(a) Primary Responsibility with Institution. Institution shall
---------------------------------------
have primary responsibility, at the expense of Sponsor, for the
preparation, filing, prosecution, and maintenance of all Institution Patent
Rights and Joint Patent Rights, using patent counsel reasonably acceptable
to Sponsor. Institution shall consult with Sponsor as to the preparation,
filing, prosecution, and maintenance of all such Patent Rights reasonably
prior to any deadline or action with the U.S. Patent & Trademark Office or
any foreign patent office and shall furnish Sponsor with copies of all
relevant documents reasonably in advance of such consultation. Institution
shall use reasonable efforts to ensure that patent applications filed under
this Subsection are prepared in a manner that, assuming the exercise of the
Option Right and subsequent execution of a license agreement, gives Sponsor
the greatest possible degree of exclusivity in the Field.
(b) Abandonment. In the event that Institution desires to
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abandon any patent or patent application within the Patent Rights, or if
Institution declines to assume responsibility for obtaining patent
protection for any Invention, Institution shall provide Sponsor with
reasonable prior written notice of such intended abandonment or decline of
responsibility, and Sponsor shall have the right, at its expense, to
prepare, file, prosecute, and maintain the relevant Patent Rights.
(c) Cooperation. Institution and Sponsor shall cooperate fully
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in the preparation, filing, prosecution, and maintenance of all Institution
Patent Rights and Joint Patent Rights. Such cooperation includes, without
limitation, (i) promptly executing all papers and instruments or requiring
employees of institution or Sponsor to execute such papers and instruments
as reasonable and appropriate so as to enable Institution or Sponsor to
file, prosecute, and maintain such Patent Rights in any country; and (ii)
promptly informing the other party of matters that may affect the
preparation, filing, prosecution, or maintenance of any such Patent Rights.
(d) Payment of Expenses. Within thirty (30) days after
-------------------
Institution invoices Sponsor, Sponsor shall reimburse Institution for all
reasonable patent-related expenses incurred by Institution pursuant to
Section 5.4.(a). Institution shall have no obligation to reimburse Sponsor
for expenses incurred by Sponsor pursuant to Section 5.4.(b). Sponsor may
elect, upon sixty (60) days written notice to Institution, to cease payment
of the expenses associated with obtaining or maintaining patent protection
for one or more Patent Rights in one or more countries. In such event,
Sponsor shall lose all rights under this Agreement with respect to such
Patent Rights in such countries.
5.5 Option for Exclusive License. Subject to the rights previously
----------------------------
granted by University to Sponsor, Lunar Corporation, and Hologic, Inc.
pursuant to the tri-exclusive license arrangement set forth in the License
Agreement, as such rights relate to U.S. Patents No. 5,465,284 and
5,150,394 entitled "System for Quantitative Radiographic Imaging" and any
divisional, continuation, continuation-in-party, reissue, extension, or
foreign counterpart of either such patent, Institution hereby grants
Sponsor a first option to obtain a worldwide, royalty-bearing, exclusive
license (with the right to sublicense) under its commercial rights in any
Institution Patent Rights, Joint Patent Rights, and commercially valuable
Project Materials in the Field (the "Option Right"). Sponsor may exercise
the Option Right with respect to a particular Patent Right or Project
Material by written notice to Institution which is received not later than
sixty (60) days after the disclosure to Sponsor of the relevant Invention
or Project Material (the "Option Period"). If Sponsor elects not to
exercise the Option Right, or fails to exercise the Option Right during the
Option Period, Institution shall be free to license its commercial rights
under the relevant Patent Right or Project Material to any third party. If
Sponsor does elect to exercise the Option Right, Institution and Sponsor
shall negotiate in good faith a license agreement containing commercially
reasonable terms and conditions, including a royalty rate in the range of
three percent (3%) to six percent (6%). If Institution and Sponsor are
unable to reach agreement within six (6) months after Sponsor exercised the
Option Right (the "Negotiation Period"), Institution may offer its
commercial rights in the relevant Patent Right or Project Material to any
third parties; provided, however, that for a period of one (1) year after
the Negotiation Period expires, Institution may only offer such rights to
third parties on terms and conditions that are not more favorable than the
last offer made by Institution to Sponsor, unless Institution first
provides Sponsor with written notice of the more favorable offer and
Sponsor either (i) declines in writing to accept the offer or (ii) fails to
respond to the offer within thirty (30) days after receiving such notice.
5.6 Use of Research Results and Project Materials. Each party shall
---------------------------------------------
have the unrestricted right to use Research Results for any purpose and to
use Project Materials for internal research (but not in a commercial
product or in connection with a commercial service); provided, however,
that in the case of Sponsor, such use does not infringe any claim of a
patent application or an issued patent included in the Institution Patent
Rights for which Sponsor has failed to obtain a license as provided in
Section 5.5. above.
5.7 Copyrightable Works. Institution or its employees shall have sole
-------------------
ownership of any copyrighted or copyrightable words (including reports and
publications) that are created by Institution employees in the performance
of the Research Project. Institution and the Principal Investigator hereby
grant Sponsor an irrevocable, royalty-free, nontransferable, non-exclusive
right to copy and distribute any research reports furnished to Sponsor
under this Agreement and to prepare, copy, and distribute derivative works
based on these research reports.
6. Term and Termination.
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6.1 Term. This Agreement shall commence on the Effective Date and
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shall remain in effect for a period of two (2) years, unless earlier
terminated in accordance with the provisions of this Agreement.
6.2 Loss of Principal Investigator. If the Principal Investigator
------------------------------
leaves Institution or otherwise terminates his involvement in the Research
Project, and if Institution and Sponsor fail to identify a mutually
acceptable substitute as provided in Section 2.1., Sponsor may terminate
this Agreement upon sixty (60) days prior written notice to Institution
with no further obligation to Institution.
6.3 Termination for Default. In the event that either party commits a
-----------------------
material breach of its obligations under this Agreement and fails to cure
that breach within sixty (60) days after receiving written notice thereof,
the other party may terminate this Agreement immediately upon written
notice to the party in breach. If an alleged breach involves nonpayment of
any amounts due Institution under this Agreement, the sixty-day notice
period shall be reduced to a fifteen-day notice period after the first such
breach.
6.4 Force Majeure. Neither party will be responsible for delays
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resulting from causes beyond the reasonable control of such party,
including without limitation fire, explosion, flood, war, strike, or riot,
provided that the nonperforming party uses commercially reasonable efforts
to avoid or remove such causes of nonperformance and continues performance
under this Agreement with reasonable dispatch whenever such causes are
removed.
6.5 Effect of Termination. The following provisions shall survive the
---------------------
expiration or termination of this Agreement: Articles 1, 4, and 7; Sections
2.3. (obligation to deliver final report), 3.2. (obligation to deliver
final accounting), 6.5., 8.2., 8.3., 8.5., 8.14., and 8.15. In addition,
the provisions of Article 5 shall survive termination of this Agreement, as
necessary to effectuate the rights of Sponsor, unless University has
terminated this Agreement because of a material breach by Sponsor pursuant
to Section 6.3.
7. Dispute Resolution.
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7.1 Procedures Mandatory. The parties agree that any dispute arising
--------------------
out of or relating to this Agreement shall be resolved solely by means of
the procedures set forth in this Article, and that such procedures
constitute legally binding obligations that are an essential provision of
this Agreement; provided, however, that all procedures and deadlines
specified in this Article may be modified by written agreement of the
parties. If either party fails to observe the procedures of this Article,
as modified by their written agreement, the other party may bring an action
for specific performance in any court of competent jurisdiction.
7.2 Dispute Resolution Procedures.
-----------------------------
(a) Negotiation. In the event of any dispute arising out of or
-----------
relating to this Agreement, the affected party shall notify the other
party, and the parties shall attempt in good faith to resolve the matter
within ten (10) days after the date such notice is received by the other
party (the "Notice Date"). Any disputes not resolved by good faith
discussions shall be referred to senior executives of each party, who shall
meet at a mutually acceptable time and location within thirty (30) days
after the Notice Date and attempt to negotiate a settlement.
(b) Mediation. If the matter remains unresolved within sixty
---------
(60) days after the Notice Date, or if the senior executives fail to meet
within thirty (30) days after the Notice Date, either party may initiate
mediation upon written notice to the other party, whereupon both parties
shall be obligated to engage in a mediation proceeding under the then
current Center for Public Resources ("CPR") Model Procedure for Mediation
of Business Disputes, except that specific provisions of this Section shall
override inconsistent provisions of the CPR Model Procedure. The mediator
will be selected from the CPR Panels of Neutrals. If the parties cannot
agree upon the selection of a mediator within ninety (90) days after the
Notice Date, then upon the request of either party, the CPR shall appoint
the mediator. The parties shall attempt to resolve the dispute through
mediation until one of the following occurs: (i) the parties reach a
written settlement; (ii) the mediator notifies the parties in writing that
they have reached an impasse; (iii) the parties agree in writing that they
have reached an impasse; or (iv) the parties have not reached a settlement
within one hundred and twenty (120) days after the Notice Date.
(c) Trial Without Jury. If the parties fail to resolve the
------------------
dispute through mediation, or if neither party elects to initiate
mediation, each party shall have the right to pursue any other remedies
legally available to resolve the dispute, provided, however, that the
parties expressly waive any right to a jury trial in any legal proceeding
under this Section.
7.3 Preservation of Rights Pending Resolution.
-----------------------------------------
(a) Performance to Continue. Each party shall continue to
-----------------------
perform its obligations under this Agreement pending final resolution of
any dispute arising out or relating to this Agreement; provided, however,
that a party may suspend performance of its obligations during any period
in which the other party fails or refuses to perform its obligations.
(b) Provisional Remedies. Although the procedures specified in
--------------------
this Article are the sole and exclusive procedures for the resolution of
disputes arising out of relating to this Agreement, either party may seek a
preliminary injunction or other provisional equitable relief if, in its
reasonable judgment, such action is necessary to avoid irreparable harm to
itself or to preserve its rights under this Agreement.
(c) Statute of Limitations. The parties agree that all
----------------------
applicable statutes of limitation and time-based defenses (such as estoppel
and laches) shall be tolled while the procedures set forth in Subsections
7.2.(a) and 7.2(b) are pending. The parties shall take any actions
necessary to effectuate this result.
8. Miscellaneous.
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8.1 Compliance with Law and Policies. Sponsor agrees to comply with
--------------------------------
applicable law and the policies of Institution in the area of technology
transfer, including the Policy on Conflicts of Interest Relating to
Intellectual Property and Commercial Ventures, the Intellectual Property
Policy, and the Policy on Faculty Consulting and Outside Activities, and
shall promptly notify Institution of any violation that Sponsor knows or
has reason to believe has occurred or is likely to occur.
8.2 Indemnification.
---------------
(a) Indemnity. Sponsor shall indemnify, defend, and hold
---------
harmless Institution and its trustees, officers, faculty, students,
employees, and agents and their respective successors, heirs and assigns
(the "Indemnitees"), against any liability, damage, loss, or expense
(including reasonable attorneys fees and expenses of litigation) incurred
by or imposed upon any of the Indemnitee in connection with any claims,
suits, actions, demands or judgments arising out of any theory of liability
(including without limitation actions in the form of tort, warranty, or
strict liability and regardless of whether such action has any factual
basis) arising out of the negligence or willful misconduct of Sponsor in
the performance of its Agreement or concerning any product, process, or
service that is made, used, or sold pursuant to any right or license
granted under this Agreement; provided, however, that such indemnification
shall not apply to any liability, damage, loss, or expense to the extent
directly attributable to (i) the negligent activities or intentional
misconduct of the Indemnitee or (ii) the settlement of a claim, suit,
action, or demand by Indemnitee without the prior written approval of
Sponsor.
(b) Procedures. The Indemnitee agree to provide Sponsor with
----------
prompt written notice of any claim, suit, action, demand, or judgment for
which indemnification is sought under this Agreement. Sponsor agrees, at
its own expense, to provide attorneys reasonably acceptable to Institution
to defend against any such claim. The Indemnitee shall cooperate fully with
Sponsor in such defense and will permit Sponsor to conduct and control such
defense and the disposition of such claim, suit, or action (including all
decisions relative to litigation, appeal, and settlement); provided,
however, that any Indemnitee shall have the right to retain its own
counsel, at the expense of Sponsor, if representation of such Indemnitee by
the counsel retained by Sponsor would be inappropriate because of actual or
potential differences in the interests of such Indemnitee and any other
party represented by such counsel. Sponsor agrees to keep Institution
informed of the progress in the defense and disposition of such claim and
to consult with Institution with regard to any proposed settlement.
8.3 Publicity Restrictions. Sponsor shall not us,e the name of
----------------------
Institution or any of its trustees, officers, faculty, students, employees.
or agents, or any adaptation of such names, or any terms of this Agreement
in any promotional material or other public announcement or disclosure
without the prior written consent of Institution. The foregoing
notwithstanding, Sponsor shall have the right to disclose such information
without the consent of Institution (i) in any prospectus, offering
memorandum, or other document or filing required by applicable securities
laws or other applicable law or regulation, provided that Sponsor shall
have given Institution at least ten (10) days prior written notice of the
proposed text for the purpose of giving University the opportunity to
comment on such text, and (ii) to potential investors under a
non-disclosure obligation.
8.4 Representations and Warranties.
------------------------------
(a) Institution hereby represents that:
(i) It has the full legal power, authority and right to
grant the option to license contained in this Agreement and to
perform its obligations under this Agreement and upon execution
and delivery by Sponsor, this Agreement will constitute valid and
binding agreements of Institution enforceable against it in
accordance with its terms.
(ii) Except as provided in the License Agreement, no other
person or organization presently has any assignment, option or
license of the Inventions in the U.S. or anywhere in the world.
(iii) Execution, delivery and consummation of this
Agreement will not result in the breach of or give rise to cause
for termination of any agreement or contract to which Institution
may be a party. After the date hereof, Institution shall not
enter into any agreement or take or fail to take any action which
shall restrict its legal right to grant to Sponsor the rights and
benefits contemplated under this Agreement.
(b) Sponsor hereby represents that:
(i) It has the full legal power, authority and right to
grant the option to license contained in this Agreement and to
perform its obligations under this Agreement and upon execution
and delivery by Institution, this Agreement will constitute valid
and binding agreements of Sponsor enforceable against it in
accordance with its terms.
(ii) Execution, delivery and consummation of this Agreement
will not result in the breach of or give rise to cause for
termination of any agreement or contract to which Sponsor or its
Affiliates may be a party. Neither Sponsor nor any of its
Affiliates after the date hereof shall enter into any agreement
or take or fail to take any action which shall restrict its legal
right to grant to Institution the rights and benefits
contemplated under this Agreement.
8.5 Warranty Disclaimer. Institution makes no express warranties and
-------------------
disclaims any implied warranties as to any matter relating to this
Agreement, including without limitation the performance or result of the
Research Project; the availability of legal protection for any Research
Results; Project Materials, Inventions, copyrightable works, or any other
work product of the Research Project; or the validity or enforceability of
any Patent Right that may be obtained pursuant to this Agreement. THERE ARE
NO EXPRESS OR IMPLIED WARRANTS OF MERCHANTABILITY OR FITNESS FOR A
PARTICULAR PURPOSE FOR ANY PROJECT MATERIALS OR RESEARCH RESULTS, OR THAT
THE USE OF PROJECT MATERIALS OR RESEARCH RESULTS WILL NOT ~FRINGE ANY
PATENT RIGHTS OR OTHER PROPRIETARY RIGHTS OF A THIRD PARTY. Institution
hereby represents and warrants that its employees are required to assign
their rights in any Inventions to Institution.
8.6 Notice to Other Investigators. The Principal Investigator shall
-----------------------------
furnish all investigators involved in the Research Project, including
faculty, staff, students, and post-doctoral fellows, with written notice of
their obligations under Articles 4 and 5 of this Agreement.
8.7 Research Partially Funded by Grants.
-----------------------------------
(a) Federal Government. To the extent that any Invention has
------------------
been partially funded by the federal government, this Agreement and the
grant of any rights in such Invention is subject to and governed by federal
law as set forth in 35 U.S.C. Sections 201-211, and the regulations
promulgated thereunder, as amended, or any successor statutes or
regulations. If any term of this Agreement fails to conform with such
laws and regulations, the relevant term shall be deemed an invalid
provision and modified by the parties pursuant to Section 8.16.
(b) Other Organizations. To the extent that any Invention has
-------------------
been partially funded by a non-profit organization or state or local
agency, this Agreement and the grant of any rights in such Invention is
subject to and governed by the terms and conditions of the applicable
research grant. If any term of this Agreement fails to conform with such
terms and conditions, the relevant term shall be deemed an invalid
provision and modified by the parties pursuant to Section 8.16. At the
request of Sponsor, Institution shall make available to Sponsor the terms
and conditions of any research grants that will partially fund the Research
Project.
(c) Notification. University shall notify Sponsor prior to
------------
accepting such third party funding. If Sponsor objects to use of such funds
in the Research Agreement, Sponsor may either (i) amend Exhibit B to
---------
substitute Sponsor funds for the proposed third-party funding, in. which
case Institution will decline to accept the third-party funding, or (ii)
terminate this Agreement effective as of the date the University receives
such third-party funding.
8.8 Tax-Exempt Status. Sponsor acknowledges that Institution, as a
-----------------
public institution of the Commonwealth of Massachusetts, holds the status
of an exempt organization under the United States Internal Revenue Code.
Sponsor also acknowledges that certain facilities in which the Research
Project may be performed were financed through offerings of tax-exempt
bonds. If the Internal Revenue Service determines, of if counsel to
Institution reasonably determines, that any term of this Agreement
jeopardizes the tax-exempt status of Institution or the bonds used to
finance Institution facilities, the relevant term shall be deemed an
invalid provision and modified by the parties pursuant to Section 8.16.
8.9 Relationship of Parties. For the purposes of this Agreement,
-----------------------
each party is an independent contractor and not an agent or employee 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 explicitly provided
for in this Agreement or authorized in writing by the other party.
8.10 Counterparts. This Agreement may be executed in one or more
------------
counterparts, each of which shall be deemed an original, and all of which
together shall be deemed to be one and the same instrument.
8.11 Headings. All headings are for convenience only and shall not
--------
affect the meaning of any provision of this Agreement.
8.12 Binding Effect. This Agreement shall be binding upon and inure to
--------------
the benefit of the parties and their respective permitted successors and
assigns.
8.13 Assignment. This Agreement may not be assigned by either party
----------
without the prior written consent of the other party, except that Sponsor
may assign this Agreement to an affiliate or to a successor in connection
with the merger, consolidation, or sale of all or substantially all of its
assets or that portion of its business to which this Agreement relates.
8.14 Amendment and Waiver. This Agreement may be amended,
--------------------
supplemented, or otherwise modified only by means of a written instrument
signed by both parties. Any waiver of any rights or failure to act in a
specific instance shall relate only to such instance and shall not be
construed as an agreement to waive any rights or fail to act in any other
instance, whether or not similar.
8.15 Governing Law. This Agreement shall be governed by and construed
-------------
in accordance with the laws of the Commonwealth of Massachusetts
irrespective of any conflicts of law principles.
8.16 Notice. Any notices required or permitted under this Agreement
------
shall be in writing, shall specifically refer to this Agreement, and shall
be sent by hand, recognized national overnight courier, confirmed facsimile
transmission, confirmed electronic mail, or registered or certified mail,
postage prepaid, return receipt requested, to the following addresses or
facsimile numbers of the parties:
If to Institution:
Office of Commercial Ventures and Intellectual Property
University of Massachusetts
00 Xxxx Xxxxxx Xxxxx
Xxxxxxxxx, XX 00000
Attention: Xxxxxx F.X. XxXxxxx
Executive Director
Tel: (000) 000-0000
Fax: (000) 000-0000
If to Sponsor:
CompuMed Inc.
0000 Xxxxxxxxx Xxxxxx, Xxxxx 0000
Xxxxxxxxx Xxxxx, XX 00000
Attention: President
Tel: (000) 000-0000
Fax: (000) 000-0000
All notices under this Agreement shall be deemed effective upon receipt. A
party may change its contact information immediately upon written notice to
the other party in the manner provided in this Section.
8.17 Severability. In the event that any provision of this Agreement
------------
shall be held invalid or unenforceable for any reason, such invalidity or
unenforceability shall not affect any other provision of this Agreement,
and the parties shall negotiate in good faith to modify the Agreement to
preserve (to the extent possible) their original intent If the parties fail
to reach a modified agreement within sixty (60) days after the relevant
provision is held invalid or unenforceable, then the dispute shall be
resolved in accordance with the procedures set forth in Article 7. While
the dispute is pending resolution, this Agreement shall be construed as if
such provision were deleted by agreement of the parties.
8.18 Entire Agreement. Except for the License Agreement, this
----------------
Agreement constitutes the entire agreement between the parties with respect
to its subject matter and supersedes all prior agreements or understandings
between the parties relating to its subject matter.
IN WITNESS WHEREOF, the parties have caused this Agreement to be
executed by their duly authorized representatives as of the date first
written above.
UNIVERSITY OF MASSACHUSETTS COMPUMED INC.
By:/s/ Xxxxxx F.X. XxXxxxx By: /s/ Xxx X. Xxxxxxxxx
------------------------- -----------------------
Xxxxxx F.X. XxXxxxx Xxx X. Xxxxxxxxx
Executive Director, CVIP President and Chief
Executive Officer
I hereby acknowledge and agree to the terms of Articles 4 and 5 and
Sections 2.2., 2.3., and 8.5. of this Agreement, and I reaffirm that I will
assign to Institution all of my right, title, and interest in any
Inventions.
ACKNOWLEDGED AND AGREED:
/s/ Xx. Xxxxxx Xxxxxxxx
------------------------
Xx. Xxxxxx Xxxxxxxx
Principal Investigator
EXHIBIT A
Description of Research Project
-------------------------------
The objective of the with Xx. Xxxxxx Xxxxxxxx
is to conceptualize and develop a prototype device which will perform,
through digital radiography, a bone density measurement on the hands or
feet. Initially, this will require a review of the literature and the
capabilities provided by various component vendors in order to optimize the
performance and ensure that state-of-the-art technology is being utilized
in the final decision. After consideration of these technological
alternatives, including their cost-effectiveness, accuracy, and patient
radiation exposure levels, and establishment of design goals and
specifications for the device, a suitable tested or prototype will be
constructed jointly.
The potential application of two designs will be carefully considered. The
first and most preferred approach will be the use of a fiberoptic element
with a CCD. Careful calculations will be conducted in order to arrive at
the proper field of view coverage and adequate spatial resolution and
contrast. Several types of fiberoptic elements and CCDs will be carefully
considered before proceeding to specify a prototype. The potential of using
a lens-coupled system will also be considered, and the final decision on
lens versus fiberoptic coupling will be made jointly with CompuMed. This
design will take into account the following:
Characterization of the CCD under bone densitometry conditions.
Consultation with CompuMed about optimal x-ray spectrum and
infiltration.
Selection of the appropriate x-ray phosphor.
Measurement of the radiation dose required for adequate signal levels
and comparison with the current technique now used by CompuMed.
Evaluation of the relative merits between lens-based versus
fiberoptically-coupled CCD.
Alternatives to CCD, such as amorphous selenium and other digital
detectors.
Characterization of the response of the CCD as a function of x-ray
exposure.
Assessment of spatial resolution and decision on the optimal
resolution.
Measurement of the reproducibility in phantoms.
Other measurement as requested by CompuMed provided they are within
our capabilities.
EXHIBIT B
Sponsor Contributions
---------------------
Financial Contributions
-----------------------
Year One: $100,000
Year Two: $50,000
These amounts shall be paid in equal quarterly installments in each year.
These amounts include indirect costs at 57% of direct costs.
These amounts will be spent in accordance with budgets agreed upon from
time to time between the Principal Investigator and Company.
Initial Equipment and Software on Loan
--------------------------------------
"Osteogram" software that was developed by, and is proprietary to, Sponsor
No equipment is loaned as of the Effective Date.
