AGREEMENT between LIXTE BIOTECHNOLOGY HOLDINGS, INC. and CHEM-MASTER INTERNATIONAL, INC.
EXHIBIT
10.1
February
5, 2007
between
LIXTE
BIOTECHNOLOGY
HOLDINGS, INC.
and
CHEM-MASTER
INTERNATIONAL, INC.
This
Agreement is made as of the 5th
day of
February, 2007, (the “Effective Date”), between Lixte Biotechnology Holdings,
Inc., a Delaware corporation having its principal place of business at 000
Xxxxx
00X #0, Xxxx Xxxxxxxx, Xxx Xxxx 00000, Xxxxxx Xxxxxx of America (“Lixte”), and
Chem-Master International, Inc., a New York corporation having its principal
place of business at X.X. Xxx 000, Xxxx Xxxxxxxx, Xxx Xxxx 00000, Xxxxxx Xxxxxx
of America (“Chem-Master”).
WITNESSETH
WHEREAS,
Lixte is a company engaged in finding improved methods for treating and
evaluating treatment response for life-threatening diseases, particularly
cancers such as glioblastomas;
WHEREAS,
Chem-Master is a company engaged in synthesizing organic compounds;
WHEREAS,
Lixte and Chem-Master entered into a confidentiality agreement dated March
29,
2006 (hereinafter “Confidentiality Agreement”) to exchange proprietary
information and materials for the purpose of evaluating organic syntheses,
which
Confidentiality Agreement shall remain in full force and effect subject to
the
provisions of this Agreement;
WHEREAS,
subject to the Confidentiality Agreement, and further to Lixte’s request,
Chem-Master synthesized and provided to Lixte the compound designated LB-1
(defined hereinafter), and is synthesizing other structurally related compounds
which have potential use in treating diseases such as
glioblastomas;
WHEREAS,
Lixte wishes to engage Chem-Master in synthesizing additional Compounds (defined
hereinafter) which have potential use in treating diseases including, without
limitation, cancers such as glioblastomas; and
WHEREAS,
Lixte wishes for such past, ongoing and future services by Chem-Master to be
subject to the terms and conditions set forth in this Agreement;
NOW,
THEREFORE, in consideration of the premises and mutual covenants set forth
hereinafter, Chem-Master and Lixte agree as follows:
ARTICLE
I
DEFINITIONS
In
this
Agreement, each of the following words and phrases shall have the meaning set
forth below:
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1.1
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“Affiliate”
of a specified entity shall mean an entity that directly or indirectly
controls, is controlled by, or is under common control with, the
entity
specified. For this purpose, “control” shall mean the possession, directly
or indirectly, of the power to direct or cause the direction of the
management and policies of the entity whether through voting shares,
securities or otherwise.
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1.2
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“Compound”
shall mean (a) LB-1 or (b) any other compound Synthesized by Chem-Master
pursuant to Lixte’s request, which has potential use in treating a
disease. Such disease includes, without limitation, a cancer such
as a
glioblastoma. Compounds include, without limitation, compounds, which
are
chemical analogs of LB-1.
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1.3
|
“Compound-Related
Information” shall mean any information provided to Lixte by Chem-Master,
pursuant to Lixte’s request, which relates to a Compound. Compound-Related
Information shall include, without limitation, information which
constitutes an invention, whether or not
patentable.\
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1.4
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“LB-1”
shall mean the compound having the physical properties set forth
in
Appendix A.
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1.5
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“Synthesize”,
with respect to a compound, shall mean physically making same, and
may
additionally include designing some or all of same and some or all
of the
method for making same.
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ARTICLE
II
COMPOUND
SYNTHESIS AND COSTS
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2.1
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Chem-Master
shall Synthesize Compounds as requested by Lixte, provided that for
each
Compound whose Synthesis Lixte requests, Chem-Master and Lixte agree
that
such Synthesis is both feasible and
desirable.
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2.2
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For
each Compound Chem-Master Synthesizes during the term of this Agreement,
Lixte shall promptly reimburse Chem-Master for the cost of the materials,
labor, and expenses for other items used in the Synthesis
thereof.
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ARTICLE
III
GRANT
OF STOCK PURCHASE OPTION
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3.1
|
Within
thirty (30) days of the Effective Date, Lixte shall grant to Chem-Master
an option to purchase 100,000 shares of common stock in Lixte
Biotechnology, Inc. at $0.331/3 per share, which option shall be
exercisable during the period beginning on the date of grant and
ending on
the fifth anniversary thereof.
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3.2
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Provided
that this Agreement is not terminated under Paragraph 6.2 or 6.3
prior to
the second anniversary of the Effective Date, Lixte shall grant to
Chem-Master on the second anniversary of the Effective Date an option
to
purchase an additional 100,000 shares of common stock in Lixte
Biotechnology, Inc. at $0.331/3 per share, which option shall be
exercisable during the period beginning on the date of grant and
ending on
the fifth anniversary thereof.
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ARTICLE
IV
INTELLECTUAL
PROPERTY
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4.1
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Lixte
and its Affiliates shall be free to use any Compound and any
Compound-Related Information for any purpose including, without
limitation, developing compositions and methods for treating diseases.
Diseases include, without limitation, cancers such as
glioblastomas.
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4.2
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Lixte
shall have no obligation during or after the term of this Agreement
to
provide or otherwise disclose to Chem-Master or any third party any
material or information which Lixte or its Affiliates produce or
derive
using any Compound or Compound-Related
Information.
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4.3
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All
data, information, results and materials that are developed by Lixte
using
Compounds or Compound-Related Information during or after the term
of this
Agreement shall be solely owned by
Lixte.
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4.4
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All
Compounds and Compound-Related Information shall be solely owned
by
Lixte.
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4.5
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All
patents and patent applications claiming inventions which (i) constitute
Compounds or Compound-Related Information or incorporate Compounds
or
Compound-Related Information, and (ii) are made by one or more employees
of a party hereto (hereinafter “Patents” and “Patent Applications”,
respectively) shall be solely owned by
Lixte.
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4.6
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Lixte
shall be responsible for, and bear all costs of, preparing, filing,
prosecuting and maintaining Patents and Patent Applications in such
countries Lixte deems appropriate. Lixte shall also be responsible
for
conducting all contested proceedings, including interferences,
reexaminations, reissues, oppositions, infringement actions, nullity
actions, and the like relating to such Patents and Patent
Applications.
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4.7
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Chem-Master
shall promptly disclose to Lixte all inventions made during Chem-Master’s
Synthesis of a Compound and reasonably believed to be
patentable.
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4.8
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Chem-Master
shall promptly sign, or have signed, any assignment necessary to
accomplish the ownership provisions of this
Article.
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4.9
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Chem-Master
shall cooperate with and assist Lixte, at Lixte’s request and expense, in
whatever reasonable ways are needed to effectuate the provisions
of this
Article.
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ARTICLE
V
CONFIDENTIALITY
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5.1
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It
is understood that during the term of this Agreement, Chem-Master
and its
employees may be exposed to information that is confidential and
proprietary to Lixte. All such information (hereinafter “Lixte
Confidential Information”), whether written or oral, tangible or
intangible, that is made available, disclosed, or otherwise made
known to
Chem-Master and its employees by Lixte or its employees under this
Agreement shall be considered confidential and shall be considered
the
sole property of Lixte. It is also understood that during the term
of this
Agreement, Lixte and its employees may be exposed to information
that is
confidential and proprietary to Chem-Master. Subject to the provisions
of
Article 4, all such information (hereinafter “Chem-Master Confidential
Information”), whether written or oral, tangible or intangible, that is
made available, disclosed, or otherwise made known to Lixte and its
employees by Chem-Master or its employees under this Agreement shall
be
considered confidential and the sole property of Chem-Master. Chem-Master
Confidential Information together with the Lixte Confidential Information
shall constitute “Confidential Information.” Confidential Information
shall be (a) marked as confidential, or (b) otherwise represented
by the
disclosing party as confidential either before or within a reasonable
time
after its disclosure to the receiving party. This obligation of
confidentiality shall remain in effect for a period of five (5) years
after the expiration or termination of this
Agreement.
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5.2
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The
obligations of confidentiality set forth in Paragraph 5.1 shall not
apply
to any information that:
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| 5.2.1 |
is
or hereafter becomes generally available to the public other than
by
reason of any default with respect to a confidentiality obligation
under
this Agreement; or
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| 5.2.2 |
was
already known to the recipient as evidenced by prior written documents
in
its possession; or
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| 5.2.3 |
is
disclosed to the recipient by a third party who is not in default
of any
confidentiality obligation to the disclosing party hereunder;
or
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| 5.2.4 |
is
developed by or on behalf of the receiving party, without reliance
on
confidential information received hereunder as evidenced by written
documents in its possession; or
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| 5.2.5 |
is
used with the consent of the disclosing party (which consent shall
not be
unreasonably withheld) in patent applications under the terms of
this
Agreement; or
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| 5.2.6 |
has
been approved in writing by one party for publication by the other
party;
or
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| 5.2.7 |
is
required to be disclosed in compliance with applicable laws or
regulations.
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5.3
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Lixte
shall be free during and after the term of this Agreement to make
public,
or discard, any data, information, results or materials that are
developed
by Lixte using Compounds or Compound-Related
Information.
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ARTICLE
VI
TERM
AND TERMINATION
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6.1
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The
term of this Agreement shall extend from the Effective Date until
the
second anniversary of the Effective Date, subject to the other provisions
of this Article.
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6.2
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Lixte
may terminate this Agreement for any reason by giving sixty (60)
days’
prior written notice to
Chem-Master.
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6.3
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Either
Party (the “Non-Breaching Party”) may, without prejudice to any other
remedy available to it at law, terminate this Agreement for reasonable
cause, such as in the event the other party (the “Breaching Party”) shall
have materially breached or defaulted in the performance of any of
its
material obligations hereunder, and such breach or default shall
have
continued for sixty (60) days after written notice thereof was provided
to
the Breaching Party by the Non-Breaching Party (or, if such breach
or
default cannot be cured within such 60-day period, if the Breaching
Party
does not commence and diligently continue actions to cure such breach
or
default during such 60-day period). Any such termination shall become
effective at the end of such 60-day period unless the Breaching Party
has
cured any such breach or default prior to the expiration of such
60-day
period (or, if such breach or default cannot be cured within such
60-day
period and the Breaching Party has commenced and diligently continued
actions to cure such breach or default, then such termination shall
become
effective at such time as the Breaching Party ceases to diligently
continue actions to cure such breach or default prior to cure). The
right
of either party to terminate this Agreement as provided in this Paragraph
shall not be affected in any way by its waiver or failure to take
action
with respect to any previous breach or
default.
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6.4
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Neither
expiration nor termination of this Agreement shall affect (i) any
right or
obligation of either party which has accrued as of the date of expiration
or termination, or (ii) any right or obligation which expressly survives
the expiration or termination of this Agreement. Specifically, and
without
limitation, neither expiration nor termination of this Agreement
shall
affect any right or obligation of either party under any of Articles
2, 4
and 5 and Paragraph 3.1 which has accrued as of the date of expiration
or
termination.
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ARTICLE
VII
ASSIGNMENT
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7.1
|
Neither
this Agreement, nor any of the rights and obligations created herein,
shall be assigned or transferred, in whole or in part, by any party
hereto
without the prior written consent of the other party hereto provided,
however, that Lixte shall have the right to assign this Agreement
to its
Affiliates, or to a successor to that part of its business to which
this
Agreement relates, without such prior written consent. Any attempted
assignment or transfer of such rights or obligations without such
prior
written consent, except as provided herein, shall be
void.
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ARTICLE
VIII
GOVERNING
LAW
All
matters affecting the interpretation, validity and performance of this Agreement
shall be governed by the laws applicable to agreements made in, and to be
performed in, the State of New York, United States of America, without regard
to
its conflict of law principles.
ARTICLE
IX
GENERAL
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9.1
|
It
is understood and agreed that Chem-Master and Lixte shall each have
the
status of an independent contractor under this Agreement and that
nothing
in this Agreement shall be construed as authorization for either
party to
act as an agent for the other.
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9.2
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Each
party hereto represents and warrants to the other party hereto that
it is
not a party to any agreement that would prevent it from fulfilling
its
obligations under this Agreement.
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9.3
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The
waiver by either party hereto, whether express or implied, of any
provision of this Agreement, or of any breach or default of either
party
hereto, shall not be construed to be a continuing waiver of such
provision, a waiver of any succeeding breach or default, or a waiver
of
any other provision of this
Agreement.
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9.4
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Should
any part or provision of this Agreement be held unenforceable or
in
conflict with the law of any jurisdiction by a court or other tribunal
of
competent jurisdiction, all other provisions, rights and obligations
shall
remain in force.
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9.5
|
Any
amendment to, or modification of, this Agreement must be made in
writing
and signed by both parties.
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WITNESS
WHEREOF, each of the parties hereto has caused this Agreement to be executed
on
its behalf as of the Effective Date.
| CHEM-MASTER INTERNATIONAL, INC. | ||
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| By: | /s/ Xxxxxxx Xxxxxxx | |
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Name: Xxxxxxx
Xxxxxxx, Ph.D.
Title: President
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| LIXTE BIOTECHNOLOGY HOLDINGS, INC. | ||
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| By: | /s/ Xxxx Xxxxxx | |
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Name: Xxxx
X. Xxxxxx
Title: President
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APPENDIX
A
Physical
Properties of LB-1
Molecular
Weight: 000
Xxxxxxx
Xxxxx: 226-7 degrees C.
