THE INFORMATION MARKED BY * AND [ ] HAS BEEN OMITTED PURSUANT TO A REQUEST
FOR CONFIDENTIAL TREATMENT. THE OMITTED PORTIONS HAVE BEEN SEPARATELY FILED
WITH THE COMMISSION.
This Agreement is made and entered into this 15th day of April, 1997 by and
between the University of Cambridge, Cambridge, CB2 ITT, England (hereinafter
referred to as "Institution") and Progenitor, Inc. 0000 Xxxxxxxx Xxxx, Xxxxxxxx,
Xxxx 0000-0000 (hereinafter referred to as "Sponsor").
WHEREAS, the research program contemplated by this Agreement is of mutual
interest and benefit to Institution and to the Sponsor, and will further the
research objectives of the Institution in a manner consistent with its status as
a non-profit, tax-exempt research institution,
NOW, THERFORE the parties agree as follows:
1. STATEMENT OF WORK. Institution agrees to use its best efforts to perform
the Research Plan outlined in the proposal dated March 18, 1997 and in
general conformance with the projected Budget and Research Plan sections
all of which are incorporated into this Agreement by reference and attached
hereto as Exhibit 1.
2. PRINCIPLE INVESTIGATOR. The research will be supervised by Xxxxxxxxx Xxxx
Xxxxxx. If for any reason Xxxxxxxxx Xxxxxx is unable to continue to serve
as principle investigator, and a successor acceptable to both Institute and
Sponsor is not available, this Agreement shall be terminated as mutually
agreed.
3. PERIOD OF PERFORMANCE. The research shall be conducted during the period
April 15, 1997 to April 14, 1999.
4. CONSIDERATION. In consideration for the research to be conducted by the
Principle Investigator and Institution during the first year of this
Agreement, Sponsor will pay to Institution a total of [***]. Payment
shall be made to Institution in four installments. The first installment
shall equal [***] Pounds Sterling and shall be paid upon execution of this
Agreement. The second, third and fourth installments shall each equal
[***] Pounds Sterling and shall be paid on October 15, 1997, April 15, 1998
and October 15, 1998. Sponsor and Institution shall determine in writing
the research budget for any additional term of this Agreement, no later
than 60 days before the end of the second year. Any equipment purchased
pursuant to this Agreement shall be and shall remain the property of the
Institution.
5. TERMINATION. Notwithstanding any other terms and conditions hereunder,
this Agreement may be terminated by either party by written notification to
the other party at least one-hundred eighty (180) days prior to the desired
effective date of the termination. In the event of early termination by
Sponsor for any reason except for a material breach of this Agreement by
Institution or Principle Investigator, the Institution shall be entitled to
payment of all expenditures or encumbrances that cannot be canceled and
which were incurred prior to the termination date. Further, upon early
termination of this Agreement, Institution shall return to Sponsor all data
and information obtained by Institution under this Agreement prior to the
date of termination. In addition, any materials provided to Institution by
Sponsor under this Agreement shall be destroyed or returned to Sponsor, at
Sponsor's option. Notwithstanding the above, Sponsor shall have the
obligation to pay the salary and benefits of one post-doctoral fellow (to
be named), on a prorated basis from the effective date of the Agreement,
for Year 1 and Year 2, as specified in Exhibit 1.
6. PUBLICATIONS. Institution will be free to publish results under this
Agreement. A copy of each publication will be provided to the Sponsor
thirty (30) days prior to submission for publication to allow adequate time
for the parties to identify and protect patentable subject matter.
Notwithstanding the above, publication will be delayed until patent
applications have been filed in
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the United States, provided the delay does not exceed sixty (60) days from
the date the publication is submitted to the Sponsor.
7. REPORTS. The Institution will provide Sponsor with annual written reports
within forty-five (45) days after April 15 in each calendar year or after
the date of termination. Reports will include review of progress on the
Research Plan and a summary of activities during the preceding 12 months,
as well as revisions to the Research Plan and the projected budget for the
next year. Institution and Principle Investigator will meet periodically
with Sponsor to review the Research Plan and discuss the research progress.
If the location of the meetings is outside of the Cambridge, England area,
Sponsor will pay travel expenses of Institution and Principle Investigator.
8. INTELLECTUAL PROPERTY. Title to any invention conceived or first reduced
to practice in the performance of the Research Plan solely by any person(s)
employed or otherwise appointed by Institution, or at any time by any
person(s) at Institution whose salary and benefits are paid though
financial support provided by Sponsor, shall remain with Institution.
Title to any invention conceived or first reduced to practice jointly by
Institution and by any employee(s) of Sponsor in the performance of the
Research Plan shall be jointly owned by Institution and Sponsor. Sponsor
shall have, and Institution hereby grants to Sponsor, a right of first
refusal to acquire an exclusive license to Institution's rights in any
invention conceived or first reduced to practice either (I) in the
performance of the Research Plan by any person(s) employed or otherwise
appointed by Institution, or (II) at any time by any person(s) whose salary
and benefits are paid through financial support provided by Sponsor. The
terms and condition of such license shall be negotiated in good faith
between the parties or their nominees and shall include the terms of
license and consideration which are incorporated into this Agreement by
reference and attached hereto as Exhibit 2. Sponsor may exercise such right
of first refusal at any time during a period of ninety (90) days after the
date of Sponsor's receipt of Institution's written notice describing an
invention in detail. After such ninety (90) day period, the right of first
refusal granted to Sponsor shall expire and Institution may grant rights to
a third party under Institution's rights in any such invention without
obligation to Sponsor.
9. USE OF NAMES. Neither party will use the name of the other in any
advertising or other form of publicity without the prior written permission
of the other.
10. CONFIDENTIAL INFORMATION. During the term of this Agreement both parties
will exchange certain proprietary Confidential Information in connection
therewith, either written or orally ("Information"). Both Sponsor and
Institution agree to keep such Information strictly confidential; will not
use such Information to reverse engineer or design around proprietary
projects or products; and will not disclose Information to others without
the express written permission of the other party; provided, however they
will not be prevented from using or disclosing information which:
a) is now, or which hereafter, through no act or failure the other party,
becomes generally known or available;
b) is known by the other party at the time of receiving such Information
c) is hereafter furnished to the other party by a third party who did not
acquire such Information directly or indirectly form the other party;
or
d) is independently developed by the other party without knowledge of
Information, and the recipient party can demonstrate or prove truth
thereof.
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11. NOTICES. Any payments or notice required to be given or which shall be
given under this Agreement shall be in writing delivered by first class
mail addressed to the parties as follows:
Progenitor, Inc.
Vice President, Corporate Development
0000 Xxxxxxxx Xxxx
Xxxxxxxx, Xxxx 00000-0000
Institution:
Head of Section
Research Grants and Contracts Section
The Old Schools
University of Xxxxxxxxx
Xxxxxxxxx, XX0 0XX
Xxxxxxx
In the event notices, statements and payments required under this Agreement
are sent by certified or registered mail by one party to the other party at
its above address, they shall be deemed to have been given or made as of
the date so mailed, otherwise as of the date received.
12. ASSIGNMENT. This Agreement shall be binding upon and inure to the benefit
of the parties hereto and the successors to substantially the entire
business and assets hereto, provided the successor entity agrees in writing
to abide by all the terms of this Agreement.
13. GOVERNING LAW. The validity and interpretation of the Agreement and the
legal relation of the parties to it shall be governed by the laws of
England.
14. FORCE MAJEURE. Institution shall not be responsible to the Sponsor for
failure to perform any of the obligations imposed by the Agreement,
provided such failure shall be occasioned by fire, flood, explosion,
lightning, windstorm, earthquake, subsidence of soil, failure or
destruction, in whole or in part, of machinery or equipment failure or
supply of materials, discontinuity in supply of power, governmental
interference, civil commotion, riot, war, labor disturbance, transportation
difficulties, labor shortage or any cause beyond the reasonable control of
Institution
15. ENTIRE AGREEMENT. Unless otherwise specified, this Agreement embodies the
entire understanding between Institution and Sponsor for this project, and
any prior or contemporaneous representations, either written or oral are
hereby superseded. No amendment or changes to this Agreement, including
without limitation, change in the statement of work, total estimated cost,
and period of performance, shall be effective unless made in writing and
signed by authorized representative of the parties.
For Cambridge University For Progenitor, Inc.
By: /s/ Xxxxxxxxx Xxxxxx By: /s/ Xxxxxxx X. Xxxxxxxx
--------------------- -------------------------
Title: Head, Research Grants and Title: Vice President
Contracts Section ----------------------
--------------------------
Date: 15 April 1997 Date: April 3, 1997
--------------------------- -----------------------
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EXHIBIT 1
BUDGET AND RESEARCH PLAN - XX. XXXX XXXXXX
GOALS
To evaluate the expression pattern of novel stage-specific genes by IN SITU
hybridization of embryonic tissues.
Histological sections of embryos (d14-18) will be performed first, followed
by embryonic whole mounts or adult tissues where warranted
To analyze the potential role of novel genes IN VITRO using embryonic stem
cells together with interactions between novel genes and other known genes.
To use comprehensive embryological and genetic approaches to analyze
functions of novel genes in the context of whole animals including gene
targeting ("knock-out" technology). The animals we produce with the gain of
function and null phenotypes for functional analyses of the most interesting
genes will be a valuable asset for future academic and applied research.
BUDGET (FOR TWO YEARS, IN BRITISH POUNDS)
1. Progenitor Postdoctoral Research Fellow [***]
2. Progenitor Research Assistant [***]
3. Consumables [***]
4. Equipment [***]
5. Indirect costs (University overhead @ 40% on [***]
salaries)
Total [***]
EXHIBIT 2 TERM SHEET
LICENSE TERMS:
Grant: Worldwide, exclusive right and license, with the right
to grant sub-licenses, under any and all intellectual
property conceived and/or reduced to practice to make,
use, offer to sell, sell and import inventions made
under inventions relating to products and uses of gene
sequences (full or partial), protein sequences (full or
partial), antibodies, expression systems, DNA, RNA and
anti-sense.
Field: All fields without restriction
Term: Expires on last to expire of valid patent claims
Intellectual Property: Filing, prosecution, enforcement, and defense
responsibility of Progenitor. Patents to be filed in
major market countries and prosecuted to obtain broad
protection consistent with sound, prudent patent
practice. Progenitor will provide Institution with
copies of filings and correspondence relating to, and
will consult with Institution on, prosecution
activities.
Diligence: Commercially reasonable efforts to achieve objective
milestones leading to commercialization
Termination: By Institution: For breach by Progenitor
By Progenitor: For breach by Institution or upon 30-day notice
Grant-back: Patent applications and data revert to Institution upon
termination of the license agreement by Progenitor
For a period of one (1) year after the date of
reversion of rights to Institution, Progenitor
shall have a right of first refusal on third-party
grant-backs of joint intellectual property to
Institution
FINANCIAL TERMS:
Intellectual property
costs and expenses: Borne by Progenitor
Consideration: Joint Intellectual Property: Progenitor to pay to
Institution [***] of any fees, royalties or other cash
consideration actually received by Progenitor,
excluding research and development support and equity
investments.
Institutional Intellectual Property: Progenitor to pay
to Institution [***] of any fees, royalties or other
cash consideration actually received by Progenitor,
excluding research and development support and equity
investments.
