|
|
| CONFIDENTIAL TREATMENT REQUESTED |
EXHIBIT 10.19 |
CONFIDENTIAL TREATMENT REQUESTED
UNDER RULE 24(b)(2) OF THE SECURITIES AND EXCHANGE ACT OF 1934. CONFIDENTIAL TREATMENT
IS REQUESTED AND IS NOTED WITH “[CONFIDENTIAL TREATMENT REQUESTED].”
AN UNREDACTED VERSION OF THIS DOCUMENT HAS BEEN PREVIOUSLY FILED WITH THE SECURITIES AND
EXCHANGE COMMISSION.
COLLABORATIVE RESEARCH
AGREEMENT
BETWEEN
UNIVERSITY OF BRADFORD
AND SOMANTA INCORPORATED
CONFIDENTIAL TREATMENT
REQUESTED
This agreement dated the 1st day of
March 2006 is between:
| (1) |
UNIVERSITY OF BRADFORD (” The University”) established in
England whose principal address is Xxxxxxxx Xxxx, Xxxxxxxx, XX0 0XX, XX; and |
| (2) |
SOMANTA Incorporated (“Somanta”) a company incorporated in the
United States under the law of Delaware with a registered office at 00 Xxxxxx
Xxxxxx, Xxxxxx, X0X 0XX, XX. |
RECITALS:
| A. |
Somanta and The University intend to enter into a research collaboration
agreement under which The University shall conduct further research funded by
Somanta on the invention(s) disclosed by The Patents, which are owned by or
exclusively licensed to Somanta. |
IT IS AGREED as follows:
1. Definitions
In this Agreement the following words
shall have the following meanings:
|
|
|
| 1.1 |
"Background Information" |
any information and/or Know-how made available by |
|
|
either party to the other party pursuant to Clause 4.1; |
1.2 |
"Commencement Date" |
The Commencement Date shall be the date of signing |
|
|
this Agreement; |
1.3 |
"Intellectual Property" |
means all of the following and as they exist in all |
|
|
jurisdictions throughout the world: |
|
|
1.3.1 patents, patent applications and inventions, |
|
|
designs and improvements described and claimed |
|
|
therein, patentable inventions and other patent rights |
|
|
(including any divisions, continuations,continuations- |
|
|
in-part, substitutions, or reissues thereof, whether or not |
|
|
patents are issued on any such applications and whether |
|
|
or not any such applications are modified, withdrawn, or; |
|
|
resubmitted); |
|
|
1.3.2 trademarks, service marks, trade dress, trade |
|
|
names, brand names, designs, logos, or corporate names, |
|
|
whether registered or unregistered, and all registrations |
|
|
and applications for registration thereof; and |
CONFIDENTIAL TREATMENT
REQUESTED
|
|
|
|
|
|
|
|
1.3.3 copyrights, including all renewals and extensions |
|
|
thereof, copyright registrations and applications for |
|
|
registration thereof. |
1.4 |
"Background Intellectual |
Intellectual Property previously developed and owned or |
|
Property" |
exclusively licensed to the respective parties which is |
|
|
required for carrying out the responsibilities in the |
|
|
Research Project pursuant to Clauses 4.2 and 4.3 and |
|
|
Schedule 2; |
1.5 |
"Know-how" |
All technical information in the Field created during |
|
|
research carried out by The University under the |
|
|
direction of Xxxx. Xxxxxxxx Xxxxxxxxx in the possession |
|
|
of The University relating directly to the inventions |
|
|
claimed in The Patents; |
1.6 |
"The Patents" |
[CONFIDENTIAL TREATMENT REQUESTED] |
1.7 |
"Patent A" |
[CONFIDENTIAL TREATMENT REQUESTED] |
1.8 |
"Patent B" |
[CONFIDENTIAL TREATMENT REQUESTED] |
1.9 |
"Payment Schedule" |
The payments due to be paid by Somanta to The |
|
|
University for research conducted under the agreed |
|
|
Project Plan and set out in Schedule 1 and Clause 3.1. |
1.10 |
"Project Intellectual |
All Intellectual Property arising out of the Research |
|
Property" |
Project within the Project Plan including, without |
|
|
limitation, the Project Information; |
1.11 |
"Project Information" |
all discoveries, inventions, whether patentable or not, |
|
|
results, data, analyses, designs, formulae, processes, |
|
|
specifications, reports, methods, Know-how, trade |
|
|
secrets, drawings or other information arising out of the |
|
|
Research Project; |
1.12 |
"Project Plan" |
the timetable, research and development objectives, |
|
|
deliverables and plan of work for the Research Project |
|
|
agreed by The University and Somanta, and set out in |
|
|
Schedule 2 as may be amended from time to time; |
1.13 |
"University's Project |
the work to be carried out by The University under the |
|
Responsibilities" |
Research Project as described in Schedule 2 as may be |
|
|
amended from time to time; |
CONFIDENTIAL TREATMENT
REQUESTED
|
|
|
|
|
|
| 1.14 |
"University's Project |
including Xxxx. Xxxxxxxx Xxxxxxxxx and his research |
|
Scientists" |
team (employed by The University) and any |
|
|
replacements thereof; |
1.15 |
"University's Project Team" |
The University's Project Scientists and any other |
|
|
individuals involved in the Research Project by The |
|
|
University; |
1.16 |
"Field" |
Area of scientific research undertaken by the University |
|
|
Project Team to complete the Research Project; |
1.17 |
"The Research Project" |
The research undertaken as described in the Project Plan |
|
|
and performed by The University's Project Team; |
1.18 |
"The Research Team" |
The team involved in the delivery of the research |
|
|
collaboration including the University's Project Team |
|
|
and those individuals involved in the research either |
|
|
directly or indirectly at Somanta; |
CONFIDENTIAL TREATMENT
REQUESTED
| 2.1 |
The
University shall carry out its Project Responsibilities with reasonable skill and care,
and in accordance with the timetable and scope set out specifically in the Project Plan
(Schedule 2) in connection to The Patents which is the condition precedent of the
Research Project. |
| 2.2 |
At
the end of each three month period, The University shall notify Somanta with a progress
report on the Research Project setting out the following:- |
| 2.2.1 |
the
work which The University has carried out on the Research Project during the previous
three months; |
| 2.2.2 |
any
data and/or results obtained during the previous three months; |
| 2.2.3 |
the
work that The University intends to carry out during the next three months; and |
| 2.2.4 |
details
of any inventions made in the course of carrying out the Research Project as described in
the Project Plan. |
| 2.3 |
Within
14 days of the end of each calendar quarter the parties shall meet to discuss progress on
the Research Project in general and in particular The University’s latest progress
report submitted under Clause 2.2. The University shall procure that the Project
Scientists shall attend such meetings together with such other members of the University’s
Project Team as Somanta may reasonably request. This meeting should occur at a
destination and time previously agreed by both parties and at Somanta’s expense. |
| 2.4 |
The
University shall use The University’s Project Scientists to carry out and/or
supervise The University’s Project Responsibilities. If, due to circumstances beyond
the reasonable control of The University, it is necessary to replace any of the University’s
Project Scientists then the parties shall promptly meet to discuss potential replacements
of equivalent qualification and experience in the Field. The University shall not replace
any of The University’s Project Scientists on the Research Project without the prior
written approval of Somanta. |
CONFIDENTIAL TREATMENT
REQUESTED
| 2.5 |
The
University shall have discretion following consultation with Somanta to replace other
members of The University’s Project Team during the Research Project with
replacements of appropriate qualifications, skills and experience in the Field. |
| 3.1 |
In
consideration of The University complying with its obligations under this Agreement,
Somanta shall pay to The University the amounts set out in the Payment Schedule paid
quarterly, in arrears from the Commencement Date. |
| 3.2 |
All
sums due under this Agreement shall be paid in [CONFIDENTIAL TREATMENT REQUESTED]. |
| 3.3 |
Sums
specified in this Agreement in relation to the Payment Schedule are [CONFIDENTIAL
TREATMENT REQUESTED] of Value Added Tax. |
CONFIDENTIAL TREATMENT
REQUESTED
| 4. |
Ownership
and Use of Background Information, Background Intellectual Property and the Project
Intellectual Property |
| 4.1 |
Each
party shall make available to the other such of its Background Information as may assist
the other party in carrying out its responsibilities under the Research Project provided
that nothing in this Clause 4.1 shall oblige either party to act in breach of a
confidentiality obligation owed to any third party. |
| 4.2 |
Ownership
of Background Intellectual Property shall remain vested in the party making such
Background Intellectual Property available. |
| 4.3 |
Each
party hereby grants to the other a non-exclusive, non-transferable, non-sublicensable,
royalty-free licence to make use of its Background Intellectual Property solely for
the purposes of carrying out its responsibilities under the Research Project. |
| 4.4 |
Somanta
shall own the entire right, title and interest in and to all Project Intellectual
Property discovered, developed, or invented in the course of performing the Research
Project as defined within the Project Plan or otherwise related to Alchemix or Prodrax,
whether solely by a party or jointly by the parties subject to clause 4.5. The University
hereby assigns to Somanta all right, title and interest, if any, The University has in
any Project Intellectual Property; provided that in the event that the foregoing
assignment would be void or impermissible, then The University automatically shall be
deemed to have granted to Somanta the perpetual, irrevocable, fully paid-up, freely
sub-licensable license to use and practice such Project Intellectual Property for any and
all purposes, which license shall be exclusive to Somanta, and which license shall
survive any expiration or termination of this Agreement. Notwithstanding the foregoing,
Somanta hereby grants to The University a perpetual, irrevocable, royalty-free,
non-sublicensable license to use and practice Project Intellectual Property solely for
non-commercial research purposes. University hereby agrees that any and all University
employees, students or any other persons who provide services in connection with
the Research Project will have assigned any and all rights such employee, student
or any other person may obtain in any technology or other information by virtue of
such services to the University. |
CONFIDENTIAL TREATMENT
REQUESTED
| 4.5 |
Somanta
shall have the exclusive right to apply for patents in respect of improvements and/or
inventions made in the course of the Research Project within The Project Plan and The
University shall provide Somanta with such assistance as Somanta shall from time to time
request with the filing and prosecution of such patent applications, entirely at Somanta’s
expense. |
| 4.6 |
For
the avoidance of doubt, notwithstanding Clause 4.4, The University and Somanta shall own
the Intellectual Property, improvements and inventions created or arising outside The
Project Plan and unrelated to either Alchemix or Prodrax jointly or solely
in accordance of contribution of each party; provided, however, that University
hereby grants to Somanta an option (right of first refusal) to license such
Intellectual Property and improvements based on fair and reasonable commercial terms
following negotiation with The University. |
| 5. |
Confidential
Information and Publications |
| 5.1 |
In
this Agreement, subject to Clause 5.2:- |
| |
5.1.1 |
“Confidential
Information” belonging to Somanta shall mean Somanta’s Background Information,
the Project Information and any other information disclosed to The University by Somanta
relating to Somanta’s business, technical and/or research plans; |
|
5.1.2 |
“Confidential Information” belonging to The University shall mean The
University’s Background Information. |
CONFIDENTIAL TREATMENT
REQUESTED
| 5.2 |
"Confidential
Information" shall not include any information which:- |
| 5.2.1 |
is
or becomes public knowledge through no improper conduct on the part of the party
receiving the Confidential Information; and/or |
| 5.2.2 |
is
already lawfully possessed by the party receiving Confidential Information prior to
receiving it; and/or |
| 5.2.3 |
is
obtained subsequently from a third party without any obligations of confidentiality and
such third party is in lawful possession of such material and is not in violation of any
contractual or legal obligation to maintain the confidentiality of such material. |
| 5.3 |
The
onus shall be on the party asserting that any of the exceptions set out in Clause 5.2
apply to prove, by competent written evidence, that such exceptions apply. |
| 5.4 |
Each
party shall, and shall procure that its respective employees and members of the Research
Team shall keep confidential all Confidential Information belonging to the other party
and shall not use any Confidential Information belonging to the other party other than
for the purposes of carrying out the Research Project and/or exercising its rights
hereunder. |
| 5.5 |
Each
party shall take all reasonable steps to:- |
| 5.5.1 |
ensure
that only the Research Team and other necessary personnel shall have access to
Confidential Information belonging to the other party; and |
| 5.5.2 |
ensure
that its Research Team members use Confidential Information belonging to the other party
for the sole purpose of carrying out the Research Project or exercising its rights
hereunder. |
CONFIDENTIAL TREATMENT
REQUESTED
| 5.6 |
Each
party shall procure that each of its employees and members of the Research Team are bound
by appropriate confidentiality and non-use obligations in respect of Confidential
Information belonging to the other party. |
| 5.7 |
The
University shall be entitled to publish the results of work carried out by The
University under the Research Project provided that:- |
| 5.7.1 |
All
proposed publications (including, but not limited to, scientific publications, patent
applications and non-confidential presentations), shall be submitted in writing to
Somanta for review at least thirty (30) days before submission for publication or before
presentation. Somanta may require the deletion from the publication of any Background
Intellectual Property or Information, or an amendment to the publication through which
commercially sensitive Background Intellectual Property and/or Information is disguised
to the satisfaction of Somanta. Somanta may also request the delay of the publication if
in it’s opinion the delay is necessary in order to seek patent or similar protection
to Project Intellectual Property. Any delay imposed on publication shall not last longer
than is reasonably necessary to obtain the required protection; and shall not exceed six
(6) months from the date of receipt of the proposed publication by Somanta. Notification
of the requirement for delay in publication must be received by the University within
thirty (30) days after receipt of the proposed publication by Somanta, failing which the
University shall be free to assume that Somanta has no objection to the proposed
publication and |
| 5.7.2 |
the
proposed publication does not contain any Confidential Information belonging to Somanta,
unless Somanta has consented thereto in writing. |
| 5.8 |
Any
publication of the results of the Research Project shall acknowledge the assistance of
Somanta and will include Somanta collaborators as co-authors whenever it applies. |
| 5.9 |
The
obligations of confidentiality and non-use set out in this Clause 5 shall remain in force
and shall be binding upon the parties for so long as any party has knowledge or
possession of any Confidential Information belonging to the other party and for the
avoidance of doubt shall survive any termination or cancellation of this Agreement. |
CONFIDENTIAL TREATMENT
REQUESTED
| 6. |
Duration
and Termination |
| 6.1 |
This
Agreement shall commence on the Commencement Date and shall expire on completion of the
Research Project unless sooner terminated in accordance with the provisions of this
Clause 6. |
| 6.2 |
Either
party may terminate this Agreement forthwith if:- |
| 6.2.1 |
the
other party breaches any provision of this Agreement and, having been notified of such
breach, fails to remedy it within 30 days of notification; or |
| 6.2.2 |
any
of the following events occur:- |
| 6.2.2.1 |
an
order is made or a resolution passed for the winding up of the other party (other than
for the purpose of a solvent scheme of reconstruction or amalgamation); |
| 6.2.2.2 |
an
administration, administrative receiver or receiver is appointed in respect of a material
part of the other party’s assets or business; or |
| 6.2.2.3 |
as
a consequence of financial difficulties the other party makes any voluntary arrangement
with its creditors; or |
| 6.2.2.4 |
the
other party ceases to continue its business; or |
| 6.2.2.5 |
the
other party becomes unable to pay its debts as and when they fall due; |
| 6.2.2.6 |
as
a consequence of debt and/or maladministration, the other party takes or suffers any
similar or analogous action to those listed in Clauses 6.2.2.1 to 6.2.2.3 above. |
| 6.2.2.7 |
The
Patents or the licence of The Patents becomes invalid, expired or terminated. |
CONFIDENTIAL TREATMENT
REQUESTED
| 7. |
Consequences
of Expiry and Termination |
| 7.1 |
On
expiry or termination of this Agreement for any reason:- |
| 7.1.1 |
Subject
to Clause 7.1.2, each party shall return all materials containing any Background
Information in its possession or control to the party which made such Background
Information available; |
| 7.1.2 |
The
University shall immediately hand over to Somanta all samples or other materials
containing any Project Information in its possession or control; and |
| 7.1.3 |
Subject
to Clause 7.2, the provisions of Clauses 4.2, 4.4 to 4.6 inclusive, 5and 7 shall
continue in full force and effect. |
| 7.2 |
Expiry
and termination of this Agreement shall be without prejudice to any other right or remedy
for breach of this Agreement which either party may have which accrued on or prior to the
date of expiry or termination. |
| 8.1.1 |
Any
notice or other communication given under this Agreement shall be in writing and shall be
sent by pre-paid first class mail or by fax (confirmed by pre-paid first class mail
placed in the post on or on the day after the date of transmission) to the other party at
the address set out at the beginning of this Agreement or to such other address or fax
number as may from time to time be notified to the other party in writing. |
| 8.1.2 |
Any
notice so sent by pre-paid first class mail shall be deemed to have been given on the
third business day from and including the date of posting. Any notice so sent by fax (and
confirmed by first class mail as aforesaid) shall be deemed to have been given the next
business day following the day of transmission. |
CONFIDENTIAL TREATMENT
REQUESTED
| |
If any
provision of this Agreement is declared by any judicial or other competent authority to
be void, voidable, illegal or otherwise unenforceable then the remaining provisions of
this Agreement shall continue in full force and effect. The judicial or other competent
authority making such determination shall have the power to limit, construe or reduce the
duration, scope, activity and/or area of such provision, and/or delete specific words or
phrases as necessary to render, such provision enforceable. |
| |
Failure or
delay by any party to exercise any right or remedy under this Agreement shall not be
deemed to be a waiver of that right or remedy, or prevent it from exercising that or any
other right or remedy on that occasion or on any other occasion. |
| 8.4 |
Entire
Agreement and Amendments |
| 8.4.1 |
This
Agreement constitutes the entire agreement and understanding of the parties relating to
the subject matter of this Agreement and supersedes all prior oral or written agreements,
representations, understandings or arrangements between the parties. |
| 8.4.2 |
The
parties acknowledge that they are not relying on any agreement, understanding,
arrangement, warranty, representation or term which is not set out in this Agreement. |
| 8.4.3 |
Nothing
in this Clause 8.4 shall operate to:- |
| 8.4.3.1 |
exclude
any provision implied into this Agreement by law and which may not be excluded by law; or |
CONFIDENTIAL TREATMENT
REQUESTED
| 8.4.3.2 |
limit
or exclude any liability, right or remedy to a greater extent than is permissible under
law. |
| 8.4.4 |
No
change may be made to this Agreement except in writing signed by the duly authorised
representatives of each of the parties. |
| 8.4.5 |
Either
party may propose changes to the Project Plan (described in Schedule 2). Proposed changes
must be agreed to in writing by both parties. Appropriate changes to the budget
(Schedule 1) will be agreed to in writing prior to implementation of any Project
Plan changes. |
| 8.5 |
Relationship
of the Parties |
| 8.5.1 |
Nothing
in this Agreement shall create evidence or imply any agency, partnership or joint venture
between the parties. |
| 8.5.2 |
No
party shall act or describe itself as the agent of any of the other parties nor shall a
party represent that it has any authority to make commitments on behalf of the other
parties. |
| 8.6 |
Assignment
and Sub-contracting |
| |
This Agreement
is personal to the parties and neither party shall assign, transfer, sub-license,
sub-contract, charge, or otherwise deal in its rights or obligations under this Agreement
except in the circumstance whereby Somanta undergoes a merger, consolidation or sale of
substantially all its assets in which case it may assign this Agreement to any party in
conjunction with the aforementioned. |
CONFIDENTIAL TREATMENT
REQUESTED
| |
Except as
required by law or regulation and subject to clause 5.7, no one shall make any
announcement, or comment upon, or originate any publicity, or otherwise provide any
information to any third party (other than its legal advisors) concerning this Agreement
(including without limitation the existence of this Agreement, the performance of this
Agreement and/or any dispute, arbitration or disagreement relating to this Agreement)
without the prior written consent of the other parties. The parties acknowledge that
Somanta is required to include a description of this Agreement, with a copy attached, in
its regulatory filings. |
| |
As and
when requested by another party, each party shall, and shall procure that their
respective employees shall, do all acts and execute all documents as may be reasonably
necessary to give effect to the provisions of this Agreement. |
| |
The headings
used in this Agreement are for convenience only and shall not affect the interpretation
of this Agreement. |
| 8.10 |
University’s
Project Team |
| |
In this
Agreement, unless the context otherwise requires, an obligation by The University to do,
or not to do, an act shall be deemed to include an obligation on The University to
procure that each member of The University’s Project Team shall do, or not do, that
act. |
CONFIDENTIAL TREATMENT
REQUESTED
| 8.11 |
Law
and Jurisdiction |
| |
The validity,
construction and performance of this Agreement shall be governed by English law and the
parties accept the exclusive jurisdiction of the English courts in respect thereof. |
SIGNED ON BEHALF OF THE
UNIVERSITY OF BRADFORD:
SIGNATURE: /s/ X.X. Xxxxxx
NAME :X.X. Xxxxxx
POSITION : Registrar and
Secretary
DATE: February 22, 2006
SIGNED ON BEHALF OF
SOMANTA:
SIGNATURE: /s/ Agamemnon
Xxxxxxxx
NAME : Agamemnon Xxxxxxxx
POSITION : CEO
DATE: February 17, 2006
CONFIDENTIAL TREATMENT
REQUESTED
Schedule 1
The Payment Schedule
[CONFIDENTIAL TREATMENT REQUESTED]
CONFIDENTIAL TREATMENT
REQUESTED
Schedule 2
The Project Plan
[CONFIDENTIAL TREATMENT REQUESTED]
