EXHIBIT 10.2
COLLABORTIVE RESEARCH AGREEMENT
This Agreement, made and effective as of November 11, 1999, ("the
Effective Date") is by and between:
NEW YORK UNIVERSITY (hereinafter "NYU"), a corporation organized and
existing under the laws of the State of New York and having a place of business
at 00 Xxxxxxxxxx Xxxxxx Xxxxx, Xxx Xxxx, Xxx Xxxx 00000, XXX
AND
---
B TWELVE, INC. (hereinafter "CORPORATION"), a corporation organized and
existing under the laws of the State of Florida having its principal office at
0000-000 Xxxxxxxx Xxxxxx Xxxx, Xxxxxxx, Xxxxxxx, Xxxxxx X0X 0X0.
RECITALS
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WHEREAS, Xx. Xxxxxxx X. Xxxxxx of NYU (hereinafter "the NYU Scientist")
has expertise and performs research in organic chemistry drug design and
synthesis;
WHEREAS, NYU is willing to perform the NYU Research Project (as
hereinafter defined);
WHEREAS, CORPORATION is prepared to sponsor the NYU Research Project;
WHEREAS, subject to the terms and conditions hereinafter set forth NYU
is willing to grant to CORPORATION and CORPORATION is willing to accept from NYU
an option to acquire a license to use and practice the Research Technology (as
hereinafter defined);
NOW, THEREFORE, in consideration of the mutualpromises and agreements
contained herein, the parties hereto hereby agree as follows:
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1. Definitions.
------------
Whenever used in this Agreement, the following terms shall have the
following meanings:
a. "Corporation Entity" shall mean any company or other legal entity
which controls, or is controlled by, or is under common control
with, CORPORATION; control means the holding of more than
twenty-five and one tenth percent (25.1%) or more of
i) the capital and/or
ii) the voting rights and/or
iii) the right to elect or appoint directors.
b. "Field" shall mean design and chemical synthesis of cyanocobalamin
(vitamin B12) derivatives.
c. "NYU Know-How" shall mean any information and materials including,
but not limited to, pharmaceutical, chemical, biological and
biochemical products,, information and trade secrets, know-how,
technical and non-technical data, materials, methods and processes
and any drawings, plans diagrams, specifications and/or other
document containing such information, discovered, developed or
acquired by, or on behalf of students or employees of NYU during
the term and in the course of the performance of the NYU Research
Project;
d. "NYU Patents" shall mean all United States and foreign patents and
patent applications, and any divisions, continuations, in whole or
in part, reissues, renewals and extensions thereof, and pending
applications therefore which claim inventions that are made by
students or employees of NYU during the term and in the course of
the performance of the NYU Research Project.
e. "NYU Research Project" shall mean the investigations during the
Research Period (as hereinafter defined) into the Field under the
supervision of the NYU Scientist in
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accordance with the research program, described in annexed Appendix
I, which forms an integral part hereof.
f. "Option Period" means the period from the Effective Date (as
defined below) to the date 180 days after the end of the Research
Period.
g. "Research Period" shall mean the two-year period commencing on the
Effective Date hereof and any extension thereof as to which NYU and
CORPORATION shall mutually agree in writing.
h. "Research Technology" shall mean all NYU Patents and NYU Know-How.
2. Effective Date.
--------------
This Agreement shall be effective as of the Effective Date and shall
remain in full force and effect until it expires or is terminated in
accordance with Section 9 hereof.
3. Performance of the NYU Research Project.
---------------------------------------
a. In consideration of the sums to be paid to NYU as set forth in
Section 4, below, NYU undertakes to perform the NYU Research
Project under the supervision of the NYU Scientists during the
Research Period. If, during the Research Period the NYU Scientist
shall cease to supervise the NYU Research Project, then NYU shall
endeavor to find from among the scientists of NYU a scientist or
scientists acceptable to CORPORATION to continue the supervision of
the NYU Research Project in place of the NYU Scientist. Nothing
herein contained shall be deemed to impost an obligation on NYU to
find a replacement for the NYU Scientist.
b. Nothing contained in this Agreement shall be construed as a
warranty on the part of NYU that any results will be achieved by
the NYU Research Project, or that the Research Technology and/or
any other results achieved by the NYU Research Project, if any, are
or will be commercially exploitable and furthermore, NYU makes no
warranties whatsoever as to the commercial or scientific value of
the
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Research Technology and/or as to any results which may be achieved
in the NYU Research Project.
c. The NYU Scientist shall prepare semi-annual reports within thirty
(30) days after the end of each six month period after the
Effective Date, summarizing the results of the work conducted on
the NYU Research Project during such six-month period. Within sixty
(60) days after the end of the Research Period, the NYU Scientist
shall prepare a written report summarizing the results of the work
conducted on the NYU Research Project.
d. At mutually agreed upon times, representatives of CORPORATION may
meet with the NYU Scientist to review and discuss the conduct and
results of the NYU Research Project.
e. CORPORATION shall grant to NYU a non-exclusive research license
under CORPORATION patents identified in Appendix II attached
herein, for the purpose of the performance of the NYU Research
Project.
f. NYU will have full authority and responsibility for the NYU
Research Project. All students and employees of NYU who work on the
NYU Research Project will do so as employees or students of NYU,
and not as employees of CORPORATION.
4. Funding of the NYU Research Project.
-----------------------------------
a. As compensation to NYU for work to be performed on the NYU Research
Project during the Research Period, subject to any earlier
termination of the Research Project pursuant to Section 3.a.
hereof, CORPORATION will pay NYU the total sum of U.S. $373,250,
payable according to the following schedule: for the first year of
the Research Period a total sum of U.S. $222,560 payable in four
(4) equal consecutive quarterly installments of U.S. $555,640 each,
commencing upon the Effective Date and on the first business day of
the 3rd, 6th, and 9th month commencing after the Effective Date,
and for the second year of the Research
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Period a total sum of U.S. $150,690 payable in four (4) equal
consecutive quarterly installments of U.S. $37,672.50 each,
commencing upon the first business day of the 12th, 15th, 18th and
21st month commencing after the Effective Date.
b. Nothing in this Agreement shall be interpreted to prohibit NYU (or
the NYU Scientist) from obtaining additional financing or research
grants for the NYU Research Project from government agencies, which
grants or financing may render all or part of the NYU Research
Project and the results thereof subject to the patent rights of the
U.S. Government and its agencies, as set forth in Title 35 U.S.C.
ss.200 et seq.
5. Title.
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a. All right, title and interest, in and to the Research Technology,
and to any other results achieved by the NYU Research Project, and
in and to any drawings, plans, diagrams, specifications and other
documents containing any of the Research Technology shall vest
solely in NYU.
b. Subject to the rights granted to CORPORATION pursuant to Section 6,
hereof, for so long as the NYU Scientists is employed by NYU, any
and all inventions made by the NYU Scientist and relating to the
Field shall be owned solely by NYU.
6. Option to Negotiate the New Agreement
-------------------------------------
a. For the term of the Option Period and subject to the satisfaction
by CORPORATION of the conditions set forth in 6.b. hereof, NYU
hereby grants to CORPORATION the exclusive option at any time
during the Option Period to negotiate a new agreement with respect
to an exclusive option at any time during the Option Period to
negotiate a new agreement with respect to an exclusive worldwide
license to use and practice the Research Technology (the "New
Agreement").
b. CORPORATION may exercise the option set forth above by providing
NYU with written notice that CORPORATION is prepared to negotiate
the New Agreement.
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c. CORPORATION shall have no right to undertake any commercial use
(including trials in humans) of the Research Technology or the
manufacture, or sale of a product based on the Research Technology,
unless and until CORPORATION and NYU execute the New Agreement
pursuant to Section 6, hereof.
d. NYU shall not, during the Option Period, grant to any third party
any rights, or take any action inconsistent with, the rights
granted to CORPORATION under this Agreement.
e. The New Agreement that may be negotiated for the aforesaid Research
Technology shall include reasonable and customary terms and
conditions (including, but not limited to reasonable royalties)
with respect to university-industry agreements.
7. Patents and Patent Applications.
-------------------------------
a. NYU will promptly disclose to CORPORATION in writing any inventions
which constitute potential NYU Patents.
b. CORPORATION shall maintain all disclosures in confidence and shall
not deliver or divulge them to any person or entity.
c. At the initiative of CORPORATION or NYU, the parties shall consult
with each other regarding the prosecution of all patent
applications in respect of any inventions pertaining to the
Research Technology, including but without limitation, the timing
of the filing of such applications, the jurisdiction within which
foreign counterparts of such applications should be filed and other
details pertaining to the procurement and maintenance of patent
rights.
d. Notwithstanding anything to the contrary in Section 7.c. hereof,
NYU shall determine the patentability of any invention pertaining
to the Research Technology, and the desirability of filing or
prosecuting patient applications thereon.
e. All patent applications and patents pertaining to NYU Patents shall
be filed, prosecuted and maintained by NYU through patent counsel
selected by NYU, after
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consultation with CORPORATION, at the expense of CORPORATION.
Against the submission of invoices, CORPORATION shall reimburse NYU
for all costs and fees incurred by NYU in connection with the
filing, maintenance, prosecution and protection of the NYU Patents.
f. NYU and CORPORATION shall assist, and cause their respective
employees and consultants to assist each other, in assembling
inventorship information and data for the filing and prosecution of
patent applications on inventions pertaining to the Research
Technology. The scope, content and inventorship of such patent
applications and the prosecution thereof, will be determined solely
by NYU after consultation with CORPORATION as set forth in Section
7.c. hereof.
g. Nothing herein contained shall be deemed to be a warrant by NYU
that NYU can or will be able to obtain any patent or patents on any
patent application or applications in the NYU Patents or any
portion thereof, or that any of the NYU Patents will afford
adequate or commercially worthwhile protection.
8. Publication.
------------
a. Prior to submission for publication of a manuscript describing the
results of any aspect of the NYU Research Project, NYU shall send
CORPORATION a copy of the manuscript to be submitted, and shall
allow CORPORATION thirty (30) days from the date of such mailing to
determine whether the manuscript contains such subject matter for
which patent protection should be sought prior to publication of
such manuscript, for the purpose of protecting an invention made by
the NYU Scientist during the course and in the performance of the
NYU Research Project. Should CORPORATION believe the subject matter
of the 30-day period from the mailing date of such manuscripts to
CORPORATION by NYU, CORPORATION shall give written notification to
NYU of:
i) its determination that such manuscript contains patentable
subject matter for which patent protection should be sought;
and
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ii) the countries in which such patent protection should be sought.
b. After the expiration of such 30-day period from the date of mailing
such manuscript to CORPORATION, unless NYU has received the written
notice specified above from CORPORATION, NYU shall be free to
submit such manuscript for publication to publish the disclosed
research results in any manner consistent with academic standards.
c. Upon receipt of such written notice from CORPORATION, NYU will
thereafter delay submission of the manuscript for an additional
period of up to sixty (60) days to permit the preparation and
filing in accordance with Section 8, hereof of a U.S. patent
application by NYU on the subject matter to be disclosed in such
manuscript. After expiration of such 60-day period, or the filing
of a patent application on each such invention, whichever shall
occur first, NYU shall be free to submit the manuscript and to
publish the disclosed results.
9. Expiry and Termination.
----------------------
a. Unless earlier terminated pursuant to this Section 9.b. or 9.c.
below, this Research Agreement will terminate upon the expiration
of the Option Period. The provisions of Sections 9, 12 and 15
hereof shall survive and remain in full force and effect after any
expiration, cancellation or termination of this Agreement,
including early termination as set forth below.
b. At any time prior to expiration of this Agreement pursuant to
Section 9.a. hereof, any party may terminate this Agreement for
cause, as "cause" is described below, by giving written notice to
the other party. Cause for termination by one party of this
Agreement shall be deemed to exist if the other party materially
breaches or defaults in the performance or observance of any of the
provisions of this Agreement and such breach or default is not
cured within sixty (60) days after receipt of written notice
thereof from the non-breaching party.
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c. Any party to this Agreement may, upon giving notice of termination,
immediately terminate this Agreement upon receipt of notice that
any party has become insolvent or has suspended business or has
filed a voluntary petition or an answer admitting the jurisdiction
of the U.S. Bankruptcy Court in the material allegations of, or has
consented to, an involuntary petition purporting to be pursuant to
any reorganization or insolvency law of any jurisdiction, or has
made an assignment for the benefit of creditors or has applied for
or consented to the appointment of a receiver or trustee for a
substantial part of its property.
d. Any amount payable hereunder by one of the parties to the other,
which has not been paid by the date on which such payment is due,
shall bear interest from such date until the date on which such
payment is made, at the rate of two percent (2%) per annum in
excess of the prime rate prevailing at the Citibank, N.A., in New
York, New York, during the period of arrears and such amount and
the interest thereon may be set off against any amount due, whether
in terms of this Agreement or otherwise howsoever, to the part in
default by any non-defaulting party.
e. Termination of this Agreement shall not relieve the parties of any
obligation to the other party incurred prior to such termination.
11. No Assignment.
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Neither CORPORATION not NYU shall have the right to assign, delegate or
transfer at any time to any party, in whole or in part, any or all of
the rights, duties and interest herein granted without first obtaining
the written consent of the other to such assignment.
12. Confidential Information
------------------------
CORPORATION shall maintain any and all of the Research Technology in
confidence and shall not release or disclose any tangible or intangible
component thereof to any
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third party without first receiving the prior written consent of NYU to
said release or disclosure. This obligation of confidentiality shall
not apply to any component of the Research Technology which is part of
the public domain prior to the Effective Date of this Agreement or
which becomes a part of the public domain not due to some unauthorized
act by or omission of CORPORATION after the Effective Date of this
Agreement or which is disclosed to CORPORATION by a third party who has
the right to make such disclosure.
13. Representations and Warranties by CORPORATION.
---------------------------------------------
CORPORATION hereby represents and warrants to NYU as follows:
a. CORPORATION is a corporation duly organized, validly existing and
in good standing under the laws of the State of Florida.
CORPORATION has been granted all requisite power and authority to
carry on its business and to own and operate its properties and
assets. The execution, delivery and performance of this Agreement
have been duly authorized by the Board of Directors of CORPORATION;
b. There is no pending or, to CORPORATION's knowledge, threatened
litigation involving CORPORATION which WOULD HAVE ANY EFFECT ON
THIS agreement or on CORPORATION's ability to perform its
obligations hereunder, and
c. There is no indenture, contract, or agreement to which CORPORATION
is a party or by which CORPORATION is bound which prohibits or
would prohibit the execution and delivery by CORPORATION of this
Agreement or the performance or observance by CORPORATION of any
term or condition of this Agreement.
14. Representations and Warranties by NYU.
-------------------------------------
NYU hereby represents and warrants to CORPORATION as follows:
a. NYU is a corporation duly organized, validly existing and in good
standing under the laws of the State of New York. NYU has been
granted all requisite power and
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authority to carry on its business and to own and operate its
properties and assets. The execution, delivery and performance of
this Agreement have been duly aiuthorized by the Board of Trustees
of NYU.
b. There is no pending or, to NYU's knowledge, threatened litigation
involving NYU which would have any effect on this Agreement or on
NYU's ability to perform its obligations hereunder; and
c. There is no indenture, contract or agreement to which NYU is a
party or by which NYU is bound which prohibits or would prohibit
the execution and delivery by NYU of this Agreement or the
performance or observance by NYU of any term or condition of this
Agreement.
15. Use of Name.
-----------
Without the prior written consent of the other party, neither
CORPORATION nor NYU shall use the name of the other party or any
adaptation thereof or of any staff member, employee or student, of the
other party.
i) in any product labeling, advertising, promotional or sales
literature;
ii) in connection with any public offering or private placement
documentation pr prospectus or in conjunction with any
application for regulatory approval, unless disclosure is
otherwise required by law, in which case either party may make
factual statements concerning the Agreement or file copies of
the Agreement after providing the other party with an
opportunity to comment and reasonable time within which to do
so on such statement in draft
Except as provided herein, neither NYU nor CORPORATION will issue
public announcements about this Agreement or the status or existence of
the NYU Research Project without prior written approval of the other
party.
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16. Miscellaneous.
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a. In carrying out this Agreement the parties shall comply with all
local, state and federal laws and regulations including but not
limited to, the provisions of Xxxxx 00 Xxxxxx Xxxxxx Code ss.200 et
seq. and 15 CFR ss.368 et seq.
b. If any provision of this Agreement is determined to be invalid or
void, the remaining provisions shall remain in effect.
c. This Agreement shall be deemed to have been made in the State of
New York and shall be governed and interpreted in all respects
under the laws of the State of New York.
d. Any dispute arising under this Agreement shall be resolved in an
action in the courts of New York State or the federal courts
located in New York State, and the parties hereby consent to
personal jurisdiction of such courts in any such action.
e. All payments or notices required or permitted to be given under
this Agreement shall be given in writing and shall be effective
when either personally delivered or deposited, postage prepaid, in
the United States registered or certified mail, addressed as
follows:
To NYU: New York University School of Medicine
000 Xxxxx Xxxxxx
Xxx Xxxx, XX 00000
XXX
Attention: Xxxxx X. Xxxxxxxx
Vice Xxxxxxx
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and
Office of Legal Counsel
New York University
Xxxxx Library
00 Xxxxxxxxxx Xxxxxx Xxxxx
Xxx Xxxx, XX 00000
Attention: Xxxxx Xxxxxxx
To CORPORATION: B Twelve, Inc.
0000-000 Xxxxxxxx Xxxxxx Xxxx
Xxxxxxx, Xxxxxxx X0X 0X0
XXXXXX
Attention: Xxx Xxxxxx, M.D., F.R.C.P.(C)
President and CEO
Or such other address or addresses as either party may hereafter
specify by written notice to the other. Such notices and
communications shall be deemed effective on the date of delivery of
fourteen (14) days after having been sent by registered or
certified mail, whichever is earlier.
f. This Agreement (and the annexed Appendices) constitute the entire
Agreement between the parties and no variation, modification or
waiver of any of the terms or conditions hereof shall be deemed
valid unless made in writing and signed by both parties hereto.
This Agreement supersedes any and all prior agreements or
understandings, whether oral or written, between CORPORATION and
NYU.
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g. No waiver by either party of any non-performance or violation by
the other party of any of the covenants, obligations or agreements
of such other party hereunder shall be deemed to be a waiver of any
subsequent violation or non-performance of the same or any other
covenants, agreement or obligation, nor shall forbearance by any
party be deemed to be a waiver by such party of its rights or
remedies with respect to such violation or non-performance.
h. The descriptive headings contained in this Agreement are included
for convenience and reference only and shall not be held to expand,
modify or aid in the interpretation, construction or meaning of
this Agreement.
i. It is not the intent of the parties to create a partnership or
joint venture or to assume partnership responsibility or liability.
The obligations of the parties shall be limited to those set out
herein and such obligations shall be several and not joint.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement
effective as of the date and year first above written.
NEW YORK UNIVERSITY
By: /s/ Xxxxx X. Xxxxxxxx
------------------------------------
Xxxxx X. Xxxxxxxx
Title: Vice Xxxxxxx
Date: 11/11/99
B TWELVE, INC.
By: /s/ Xxx Xxxxxx
-------------------------------------
Xxx Xxxxxx
Title: President
Date: Nov. 11, 1999
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APPENDIX I
Research Plan
The goal of the proposal is to synthesize monomeric and dimeric vitamin B12
analogs based on known chemistry and provide those compounds to B Twelve, Inc
for testing. We plan to develop solid-phase combinatorial chemistry to
accelerate the discovery of more effective B12 analogs.
