1
Exhibit 10.13
SR 96-004
This Agreement, is made this 17th day of January, 1996 ("Effective
Date"), by and between THE UNIVERSITY OF TEXAS M.D. XXXXXXXX CANCER CENTER
(hereinafter referred to as "CANCER CENTER"), a component institution of The
University of Texas System (hereinafter referred to as "SYSTEM"), located in
Houston, Texas, and Introgen Therapeutics, Inc. (hereinafter referred to as
"SPONSOR"), located in Austin, Texas.
WITNESSETH:
WHEREAS, SPONSOR, CANCER CENTER and the Regents of the University of
Texas System are negotiating a PATENT AND TECHNOLOGY LICENSE AGREEMENT (the
"LICENSE AGREEMENT") and have executed an Option Agreement regarding the same.
WHEREAS, CANCER CENTER and SPONSOR acknowledge that the RESEARCH to be
conducted hereunder includes (i) the Research Plan as described in Exhibit I, a
copy of which is attached hereto and incorporated herein by reference, including
all work of CANCER CENTER personnel in performing the work described in Exhibit
I, and (ii) all work that is performed by CANCER CENTER personnel comprising
additional research projects described in Attachment A-n, where n represents the
ordinal number of a particular project, or other work performed using funds
provided by SPONSOR (hereinafter referred to collectively as "RESEARCH");
WHEREAS, SPONSOR and CANCER CENTER consider it necessary and desirable
to perform the RESEARCH, and
NOW, THEREFORE, the parties agree as follows:
1. Evaluation. SPONSOR agrees to engage the services of CANCER CENTER as
an independent contractor to perform the RESEARCH. The RESEARCH will be
under the supervision of Xxx-Haw Lin, Ph.D. (Principal Investigator) at
CANCER CENTER, with the assistance of appropriate associates and
colleagues at CANCER CENTER as may be required.
2. Research. CANCER CENTER agrees as an independent contractor to conduct
the RESEARCH. Such RESEARCH has been approved by CANCER CENTER in
accordance with CANCER CENTER policy and may be subsequently amended
only in accordance with CANCER CENTER policy and with the written
agreement of CANCER CENTER and SPONSOR as provided for in Article 16
herein below.
3. Invention and Patents.
a. For all purposes herein, "Invention" shall mean any discovery,
concept or idea whether or not patentable, including without
limitation, biological materials, which arises out of or is
made, conceived, or reduced to practice in connection with the
RESEARCH.
2
Inventions made solely by the Principal Investigator and/or
other CANCER CENTER PERSONNEL as identified in Article I
hereinabove or agents of CANCER CENTER shall be the sole
property of CANCER CENTER.
b. In the event that an Invention is made, CANCER CENTER shall
notify SPONSOR, which notice shall reference this Section 3
and include a description of the Invention in reasonable
detail. SPONSOR shall have the option to include all worldwide
patent rights with respect to such Invention within the
"EXISTING PATENT RIGHTS" under Section 2.3(a) of the LICENSE
AGREEMENT, and to include related information, know-how,
biological materials and the like within the TECHNOLOGY RIGHTS
under the LICENSE AGREEMENT. To exercise such option with
respect to any particular Invention, SPONSOR shall so notify
CANCER CENTER within sixty (60) days after receipt of CANCER
CENTER's notice thereof as described above. Promptly following
such exercise, the parties shall revise Schedule A to the
LICENSE AGREEMENT to reflect the additional patent
applications and patents so included. CANCER CENTER warrants
to SPONSOR that CANCER CENTER has the right to grant to
SPONSOR the option and right contemplated in this Section 3
and that upon exercise of the option described herein with
respect to any Invention, all worldwide patent rights therein
will be included under the LICENSE AGREEMENT.
4. Confidentiality. In the course of work performed pursuant to the
RESEARCH under this Agreement, should either party provide confidential
information to the other party, the recipient party shall, until five
(5) years after the termination of this Agreement, maintain the
confidentiality of that information as it maintains the confidentiality
of its own confidential information, and shall not disclose such
confidential information to any other party, nor shall the recipient
party disclose the disclosing party's confidential information to the
recipients employees other than those employees having a
"need-to-know". Confidential information shall be clearly marked as
such. If disclosed orally, the party making the disclosure shall be
responsible for clearly informing the recipient party of the
confidentiality of the information disclosed. Notwithstanding the other
provisions of this paragraph, nothing disclosed hereunder shall be
construed as confidential information which:
a. is or becomes available to the public (except by a breach of
this Agreement by a party hereto);
b. is rightfully received from another party not under obligation
of confidentiality to the disclosing party,
c. is not known by the recipient party, or is independently
developed by the recipient party by persons without access to
the confidential information;
d. is approved for release by the party designating the
information as confidential;
e. is not identified as confidential at the time of disclosure;
-2-
3
f. is not in writing or physical form at time of disclosure or
reduced to a written or physical form and identified as
confidential within thirty (30) days of disclosure; or
g. is required to be disclosed under the laws or other government
regulations of the United States of America or the State of
Texas or other governmental bodies, provided that the parties
shall first exhaust all reasonable measures available to
protect the confidentiality of such information upon
disclosure.
Notwithstanding the foregoing, it is understood that SPONSOR may use
and disclose any information provided to it hereunder that relates to licensed
subject matter (as such term is defined in the LICENSE AGREEMENT).
5. Publication Rights. CANCER CENTER my publish scientific papers relating
to the collaborative RESEARCH performed under this Agreement; provided
that such publication will not disclose SPONSOR's confidential
information which may not be disclosed pursuant to Paragraph 4. [*]
prior to any such publication, CANCER CENTER shall provide SPONSOR with
a draft of the proposed publication and afford SPONSOR the opportunity
to comment and if applicable, file a patent application prior to
publication. Upon SPONSOR's request, CANCER CENTER will withhold
publication and disclosure for a period of ninety (90) days from the
date SPONSOR receives the proposed publication from CANCER CENTER if
SPONSOR believes that such action is necessary to file patent
applications.
6. Publicity. CANCER CENTER acknowledges SPONSOR's intention to distribute
periodically informational releases and announcements to the news media
regarding the progress of research hereunder. SPONSOR shall not release
such materials containing the name of CANCER CENTER or any of its
employees without prior written approval by an authorized
representative of CANCER CENTER and said approval shall not be
unreasonably withheld. Should CANCER CENTER reject the news release,
CANCER CENTER and SPONSOR agree to discuss the reasons for CANCER
CENTER's rejection, and every effort shall be made to develop an
appropriate informational news release within the bounds of accepted
academic practices. SPONSOR reserves the same right in the event that
CANCER CENTER desires to distribute a news release concerning the
RESEARCH. Nothing herein shall be construed as prohibiting CANCER
CENTER or SPONSOR from reporting on this study to a governmental
agency.
7. Responsibility. The parties each agree to assume individual
responsibility for the actions and omissions of their respective
employees, agents and assigns in conjunction with this Agreement.
8. Independent Contractor. SPONSOR will not have the right to direct or
control the activities of CANCER CENTER in performing the services
provided herein, and CANCER CENTER shall perform services hereunder
only as an independent contractor, and nothing herein contained shall
be construed to be inconsistent with this relationship or status. Under
no
[*] Certain information on this page has been omitted and filed
separately with the Commission. Confidential treatment has been
requested with respect to the omitted portions.
-3-
4
circumstances shall CANCER CENTER be considered to be an employee or
agent of SPONSOR. This Agreement shall not constitute, create or in any
way be interpreted as a joint venture, partnership, or formal business
organization of any kind.
9. Title to Equipment. CANCER CENTER shall retain title to all equipment
purchased and/or fabricated by it with funds provided by SPONSOR under
this Agreement.
10. Survivorship. The provisions of Article 3, 4, 5, 6, and 12 shall
survive any expiration or termination of this Agreement.
11. Assignment. This Agreement may not be assigned by either party without
the prior written consent of the other party; provided, however, that
SPONSOR may assign this Agreement to any purchaser or transferee of all
or substantially all of SPONSOR'S business pertaining to the subject
matter hereof upon prior written notice to CANCER CENTER.
12. Indemnification. CANCER CENTER shall, to the extent authorized under
the Constitution and the laws of the State of Texas, hold SPONSOR
harmless from liability resulting from the negligent acts or omissions
of CANCER CENTER, its agents or employees pertaining to the activities
to be carried out pursuant to the obligations of this Agreement;
provided, however, that CANCER CENTER shall not hold SPONSOR harmless
from claim arising out of the negligence of SPONSOR, its officers,
agents or any person or entity not subject to CANCER CENTER's
supervision or control.
SPONSOR shall indemnify and hold harmless SYSTEM, CANCER CENTER, their
regents, officers, agents and employees from any liability or loss
resulting from judgments or claims against them arising out of the
activities to be carried out pursuant to the obligations of this
Agreement or the use by SPONSOR of the results of the RESEARCH,
provided, however, that the following is excluded from SPONSOR's
obligation to indemnify and hold harmless:
a. the negligent failure of CANCER CENTER to comply with any
applicable governmental requirements; or
b. the negligence or willful malfeasance by a regent, officer,
agent or employee of CANCER CENTER or SYSTEM.
13. Award. SPONSOR agrees to pay CANCER CENTER a fee of [*]. This fee, as
shown [*] in Exhibit III, which is attached hereto and is incorporated
herein by reference, for information only, shall be payable [*].
14. Basic Term. This Agreement shall become effective as of the date first
hereinabove written and unless earlier terminated as hereinafter
provided, shall continue in force for a period of eighteen (18) months
after the same; provided that either party may terminate this Agreement
at any time upon thirty (30) days prior written notice to the other
party. Following such initial eighteen (18) month period, unless
earlier terminated as provided in Section 15, this
[*] Certain information on this page has been omitted and filed
separately with the Commission. Confidential treatment has been
requested with respect to the omitted portions.
-4-
5
Agreement shall continue in full force and effect for such additional
time period as the parties may agree in writing until terminated by
either party for any reason on thirty (30) days prior written notice to
the other party.
15. Default and Termination. In the event that either party to this
Agreement shall be in default of any of its material obligations
hereunder and shall fail to remedy such default within [*] after
receipt of written notice thereof the party not in default shall have
the option of terminating this Agreement by giving written notice
thereof notwithstanding anything to the contrary contained in this
Agreement. Termination of this Agreement shall not affect the rights
and obligations of the parties which accrued prior to the effective
date of termination. SPONSOR shall pay CANCER CENTER for all reasonable
expenses incurred or committed to be expended as of the effective
termination date, in accordance with mutually agreed plans for
RESEARCH, subject to the maximum amount as specified in Article 13.
16. Entire Agreement. The parties acknowledge that this Agreement and the
attached Exhibits hereto represent the sole and entire Agreement
between the parties hereto pertaining to the RESEARCH and that such
supersedes all prior Agreements, understandings, negotiations and
discussions between the parties regarding same, whether oral or
written. There are no warranties, representations or other Agreements
between the parties in connection with the subject matter hereof except
as specifically set forth herein. No supplement amendment, alteration,
modification, waiver or termination of this Agreement shall be binding
unless executed in writing by the parties hereto.
17. Reform of Agreement. If any provision of this Agreement is, becomes or
is deemed invalid, illegal or unenforceable in any United States
jurisdiction, such provision shall be deemed amended to conform to
applicable laws so as to be valid and enforceable; or if it cannot be
so amended without materially altering the intention of the parties, it
shall be stricken, and the remainder of this Agreement shall remain in
full force and effect.
18. Notices. Any notices, statements, payments, or reports required by this
Agreement shall be considered given if sent by United States Certified
Mail, postage prepaid and addressed as follows:
If to CANCER CENTER:
Xxxxx X. Xxxxxxx, CPA
Manager, Sponsored Programs
The University of Xxx M.D. Xxxxxxxx Cancer Center
0000 Xxxxxxxx Xxxx.
Xxxxxxx, Xxxxx 00000
[*] Certain information on this page has been omitted and filed
separately with the Commission. Confidential treatment has been
requested with respect to the omitted portions.
-5-
6
If to SPONSOR:
Xxxxx Xxxxx
President
Introgen Therapeutics, Inc.
000 Xxxxxxxx Xxxxxx, Xxxxx 0000
Xxxxxx, Xxxxx 00000
19. Captions. The captions in this Agreement are for convenience only and
shall not be considered a part of or affect the construction or
interpretation of any provision of this Agreement.
20. Governing Law. This Agreement shall be governed and interpreted in
accordance with the substantive laws of the State of Texas and with
applicable laws of the United States of America.
IN WITNESS WHEREOF, CANCER CENTER and SPONSOR entered into this
Agreement effective as of the date first hereinabove written and have executed
three (3) originals each of which are of equal dignity.
INTROGEN THERAPEUTICS, INC. THE UNIVERSITY OF TEXAS
M.D. XXXXXXXX CANCER CENTER
BY: /s/XXXXX XXXXX BY: /s/ XXXXX X. XXXXXXX
___________________________ ----------------------------
Xxxxx Xxxxx Xxxxx X. Xxxxxxx, CPA
President Manager, Sponsored Programs
DATE: 1-17-96 DATE: 1-17-96
__________________________ ---------------------------
-6-
7
I have read this agreement and understand my
obligations hereunder:
BY: /s/ XXX-XXX LIA
-------------------------------------
Xxx-Xxx Lia, Ph.D.
Principal Investigator
BY: /s/ XXXXX X. XXXXXXXXXX
-------------------------------------
Xxxxx X. Xxxxxxxxxx, Ph.D.
Chairman, Dept. of Molecular
Pathology
BY: /s/ XXXX X. XXXXXXXX
-------------------------------------
Xxxx X. Xxxxxxxx, M.D.
Head, Division of Pathology
Mail Payment To:
The University of Texas
M.D. Xxxxxxxx Cancer Center
Atten: Manager, Sponsored Programs
X.X. Xxx 000000
Xxxxxxx, Xxxxx 00000
Tax I.D.: 74-6001118-A1
-7-
8
EXHIBIT
[*]
