EXECUTION COPY
MATERIAL TRANSFER AGREEMENT
THIS MATERIAL TRANSFER AGREEMENT, is made as of this 27th day of July, 1999 (the
"Effective Date") by and between Reprogenesis, Inc., 00 Xxxx Xxxxxx, Xxxxxxxxx,
XX 00000 ("Reprogenesis") and Biosyntech Ltd., 000 xxxx Xxxxxx Xxxxxxxx,
Xxxxxxxx (Xxxxx) XX XXXXXX H7V4A7 ("Biosyntech").
1. Background. Reprogenesis has developed and produced certain Material
(defined below). Biosyntech has developed and produced certain
Encapsulating Material (defined below). Reprogenesis and Biosyntech are
intent on developing a product based on Reprogenesis' cells (the
"Material") and Biosyntech's gel (the "Encapsulating Material") for the
Application (the "Product"). Reprogenesis will provide Biosyntech with
a sample of its Material for the optimization of a formulation to
ensure a cell viability and tissue regeneration (Research as defined
below). Upon completion of the Research, Biosyntech will provide the
results of the test to Reprogenesis on a confidential basis.
2. Definitions.
2.1. "Application" means use of the Product for bulking and plastic
and reconstructive surgery applications.
2.2 "Confidential Information" includes, without limitation, any
scientific, technical, trade or business information given to
one party by the other which is treated by the party providing
such information as confidential or proprietary, whether or
not such information is labeled or identified as
"Confidential."
2.3 "Confidential Information" does not include information which
(a) was known to the receiving party at the time it was
disclosed, other than by previous disclosure by the disclosing
party, as evidenced by written records at the time of
disclosure; (b) is at the time of disclosure or later becomes
publicly known under circumstances involving no breach of this
Agreement, (c) is lawfully and in good faith made available to
the receiving party by a third party who did not derive it
from the disclosing party and who imposes no obligation of
confidence on the receiving party.
2.4 "Developments" include, without limitation, ideas, concepts,
discoveries, inventions, developments, know-how, trade
secrets, techniques, methodologies, modifications,
innovations, improvements, writings, documentation, data and
rights (whether or not protectible under state, federal, or
foreign patent, trademark, copyright or similar laws) that
incorporate the Material, that could not have been developed
without the use of the Material, or that require the use of
the Material, that are conceived, discovered, invented,
developed, created, made or reduced to practice by Biosyntech,
alone or jointly with others, during the terms of the Research
or thereafter and which relate to the Application, other than
the Product.
2.5 "Encapsulating Material" means Biosyntech's polymer based gel
and any progeny and unmodified derivatives of the
Encapsulating Material.
2.6 "Material" means the material to be transferred from
Reprogenesis to Biosyntech, as described in Section 11 below
together with any refills of the Material and any progeny and
unmodified derivatives of the Material (including, without
limitation, expression products, subclones, sub-units or
fractionations).
2.7 "Other Available Material" means cultures of human and
non-human chondrocytes cells, of auricular or other origin,
available from third parties.
2.8 "Research" means Biosyntech's research, as described in
Section 11 below attached to this Agreement.
2.9 "Product" is defined as a cell/gel composition comprising the
Material and the Encapsulating Material.
2.10 "Biosyntech Product Intellectual Property" includes, without
limitation, ideas concepts, discoveries, inventions,
developments, know-how, trade secrets, techniques,
methodologies, modifications, innovations, improvements,
writings, documentation, data and rights (whether or not
protectible under state, federal, or foreign patent,
trademark, copyright or similar laws) that incorporate the
Material, that could not have been developed without the use
of the Material, or that require the use of the Material, that
are conceived, invented, developed, created, made or reduced
to practice by Biosyntech, during the term of the Research or
thereafter and which relate to a Product.
2.11 "Joint Product Intellectual Property" includes, without
limitation, ideas, concepts, discoveries, inventions,
developments, know-how, trade secrets, techniques,
methodologies, modifications, innovations, improvements,
writings, documentation, data and rights (whether or not
protectible under state, federal, or foreign patent,
trademark, copyright or similar laws) that incorporate the
Material, that could not have been developed without the use
of the Material, or that require the use of the Material, that
are conceived, discovered, invented, developed, created, made
or reduced to practice by Biosyntech, jointly with employees
of, or consultants to Reprogenesis, during the term of the
Research or thereafter and which relate to a Product.
2.12. "Background Rights" includes intellectual property and other
rights each party has prior to the effective date of this
Agreement.
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3. Delivery of Material.
3.1. Initial Sample. Reprogenesis will use commercially reasonable
efforts to provide Biosyntech with the Material described in
Section 11 below.
4. Use of Material. Biosyntech will use the Material only in connection
with the research outlined in Section 11.
5. Acknowledgment; No Warranty; Indemnification.
5.1. Acknowledgment. Biosyntech acknowledges that the Material is
experimental and will comply with all laws and regulations
applicable to its handling and use.
5.2. No Warranty. THE MATERIAL IS PROVIDED TO BIOSYNTECH WITHOUT
WARRANTY, EXPRESS OR IMPLIED, INCLUDING ANY WARRANTY OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE, AND
REPROGENESIS MAKES NO REPRESENTATION THAT BIOSYNTECH'S USE OF
THE MATERIAL WILL NOT INFRINGE ANY PATENT OR OTHER PROPRIETARY
RIGHT OF ANY THIRD PARTY.
5.3 Indemnification. To the extent allowable under applicable
laws, Biosyntech agrees to indemnify and hold Reprogenesis
harmless from any claims and liabilities which might arise
from Biosyntech's use of the Material, except for those
arising from the gross negligence or willful misconduct of
Reprogenesis.
6. Ownership and Grant of Rights to Reprogenesis.
6.1. Material. Reprogenesis has developed techniques and processes
to efficiently produce the Material over a substantial period
of time at substantial expense, and these techniques and
processes are of great importance to Reprogenesis' business.
Biosyntech acknowledges that Reprogenesis is and will at all
times remain the owner of the Material, and all Background
Rights relating thereto. Reprogenesis nonetheless acknowledges
the existence of Other Available Material obtained using
techniques and processes that may vary from its own.
6.2 Exceptions. The rights, obligations and immunities provided by
sections 6.3 to 6.4 do not apply to ideas, concepts,
discoveries, inventions, developments, knowhow, trade secrets,
techniques, methodologies, modifications, innovations,
improvements, writings, documentation, data and rights
(whether or not protectible under state, federal, or foreign
patent, trademark, copyright or similar laws) that (a)
incorporate or are developed solely using Other Available
Material, (b) were developed independently without having
resort to the Material, the Confidential Information of
Reprogenesis or the results of the Research, and (c) if less
than two (2) years expired
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from the termination or expiration of this Agreement, relate
to applications other than the Application.
6.3 License for Commercialization of Product and Developments.
Biosyntech hereby grants Reprogenesis a first and exclusive
option to negotiate a commercialization license under the
Biosyntech Product Intellectual Property, Biosyntech's rights
in Joint Product Intellectual Property and Intellectual
Property directed to Developments to make, have made, use,
sell, distribute or otherwise commercialize the Product and
any Developments, but only in respect of the Application.
Reprogenesis may exercise this option in writing at any time
within one hundred and twenty (120) days after receipt of
notice from Biosyntech disclosing the Product or any
Development. Upon exercise of this option by Reprogenesis, the
parties agree to negotiate in good faith to reach agreement on
terms reasonably acceptable to both parties for an exclusive,
worldwide license to all commercialization rights in the
Product and/or any Development for the Application. Such terms
shall include the provision for payment by Reprogenesis of a
reasonable royalty as objectively determined by reference to
agreements of similar or analogous import and further taking
into account the respective parties' contribution to the
Product and any Developments and the value of the
Encapsulating Material. If the parties do not reach agreement
on such license terms within one hundred and twenty (120) days
of receipt of the Reprogenesis notice of intent to exercise
the option (which period may be extended by agreement in
writing), or if Reprogenesis does not exercise its option in
the original one hundred and twenty (120) day period,
Biosyntech shall be free to offer licenses to third parties.
6.4 Patent Applications. Biosyntech shall promptly disclose to
Reprogenesis in writing any Biosyntech Product Intellectual
Property, Joint Product Intellectual Property or Developments.
Any patent applications considered necessary in the reasonable
legal and business judgment of Biosyntech and Reprogenesis to
protect the parties proprietary position in the jointly-owned
Development will be prepared and filed by Biosyntech, jointly
in its and Reprogenesis' names, with the expenses being borne
by Biosyntech. If Biosyntech elects not to file or maintain an
application or patent in any country, which application or
patent arises from the jointly-owned Developments, Biosyntech
shall promptly notify Reprogenesis, and Reprogenesis shall
have the right to file or maintain these applications or
patents, in its and Biosyntech's name, but at Reprogenesis'
expense.
7. Confidentiality.
7.1. Nondisclosure of Confidential Information. Except as provided
in Section 8 below, neither party will directly or indirectly
publish, disseminate or otherwise disclose, deliver or make
available to any third party any of the other party's
Confidential Information, other than in furtherance of this
Agreement. Either party may disclose
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Confidential Information to a governmental authority or by
order of a court of competent jurisdiction, provided that such
disclosure is subject to all applicable governmental or
judicial protection available for like material and reasonable
advance notice is given to the disclosing party.
7.2. Protection. Biosyntech will exercise all commercially
reasonable precautions to protect the integrity and
confidentiality of the Material. Biosyntech will not remove
the Material from its premises except to the extent necessary
to fulfill its obligations under this Agreement, and then only
with the prior written consent of Reprogenesis.
8. Publication.
8.1. Right to Publish; Review by Reprogenesis. Notwithstanding
Biosyntech's confidentiality obligations under Section 7
above, Biosyntech will have the right to publish and disclose
the results of the Research. In order to balance this right
with Reprogenesis' proprietary interests, Biosyntech will
submit for Reprogenesis' review manuscripts, abstracts or
presentations intended for publication or other public
disclosure at least sixty (60) days prior to the date of
submission for publication or of public disclosure.
Reprogenesis will use reasonable efforts to complete its
review promptly and will complete its review within sixty (60)
days of receipt of the submitted documents. Reprogenesis may
request that Biosyntech delete from its documents any
reference to Reprogenesis' Confidential Information. At the
end of this sixty (60) day period, Biosyntech will have the
right to publish the documents, as amended by Reprogenesis
solely to delete any reference to Reprogenesis' Confidential
Information and subject to Reprogenesis' rights under Section
8.2 below.
8.2. Opportunity to File Patent Applications. If, during its sixty
(60) day review period, Reprogenesis notifies Biosyntech that
it desires patent applications to be filed on any Developments
relating to the Applications disclosed or contained in the
documents, Biosyntech will defer publication or other
disclosure for a period, not to exceed ninety (90) days from
the date of submission to Reprogenesis, sufficient to permit
the filing of any desired patent applications.
9. Termination.
9.1. Termination for Cause. Either party may terminate this
Agreement for cause at any time upon thirty (30) days prior
written notice to the other parties. "Cause" means a material
breach by the other party of this Agreement where such breach,
if curable, is not remedied to the non-breaching party's
reasonable satisfaction within such thirty (30) day period.
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9.2. Termination by Either Party Without Cause. Either party may
terminate this Agreement at any time without cause upon not
less than sixty (60) days prior written notice to the other
parties.
9.3. Effect of Termination or Expiration. Upon termination or
expiration of this Agreement for any reason Biosyntech shall
return immediately to Reprogenesis its Confidential
Information and copies thereof, and any and all unused samples
of the Material, and all of Biosyntech's rights to use the
Material shall cease. Biosyntech shall also destroy all
samples of the Product in its possession. Following
termination or expiration, neither party shall have any
further obligations under this Agreement, except that Section
5 through 10 shall survive.
10. Miscellaneous.
10.1. Notice. All communications and notices from one party to the
others will be in writing and will be given by addressing the
same to the other at the address or facsimile number set forth
in this Agreement, or at such other address or facsimile
number as either may specify in writing to the other.
Communications and notices to Reprogenesis will be marked
"Attention: External Research Department." All notices will
become effective when deposited in the United States or
Canadian Mail with proper postage for first class registered
or certified mail prepaid, return receipt requested, or when
delivered personally, or, if promptly confirmed by mail as
provided above, when dispatched by facsimile.
10.2. Assignment. This Agreement, and the rights and obligations
hereunder, may not be assigned or transferred by any party
without the prior written consent of the other parties, except
that Reprogenesis may assign this Agreement to an affiliated
company or in connection with the merger, consolidation or
sale of all or substantially all of its assets.
10.3. Entire Agreement. This Agreement constitutes the entire
agreement of the parties with regard to its subject matter and
supersedes all previous written or oral representations,
agreements and understandings between Reprogenesis and
Biosyntech.
10.4. No Modifications. This Agreement may be changed only by a
writing signed by the parties.
10.5. Severability. In the event that any one or more of the
provisions contained in this Agreement shall, for any reason,
be held to be invalid, illegal or unenforceable in any
respect, such invalidity, illegality or unenforceability shall
not affect any other provisions of this Agreement, and all
other provisions shall remain in full force and effect. If any
of the provisions of this Agreement is held to be excessively
broad, it
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shall be reformed and construed by limiting and reducing it so
as to be enforceable to the maximum extent permitted by law.
10.6. Applicable Law. This Agreement will in all events and for all
purposes be governed by, and construed in accordance with, the
law of The Commonwealth of Massachusetts without regard to any
choice of law principle that would dictate the application of
the law of another jurisdiction.
11. Definition of Material to be Supplied to Biosyntech and Biosyntech
Research. The material to be supplied to the Biosyntech consists of
Reprogenesis', cultures of human and non-human auricular derived
chondrocyte cells. Biosyntech is to conduct preliminary research to
determine whether the Material and the Encapsulating Material may
appropriately be combined for use in the Application and for the
optimization of a formulation to ensure a cell viability and tissue
regeneration. Cultures of human and non-human derived chondrocytes
shall only be used in in vitro experiments by the Biosyntech.
Biosyntech shall not use any of Reprogenesis' materials in in vivo
experiments.
12. Signature Page.
Biosyntech:
Xxxxxxxx Xxxxxxx, PhD
Vice President, R&D
Biosyntech, LTD
000, xxxx Xxxxxxx Xxxxxxxx
Xxxxxxxx (Xxxxx) XX
XXXXXX H7V4A7
/s/ Xxxxxxxx Xxxxxxx, PhD 7/27/99
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Signature Date
Reprogenesis:
Xxx Ousted, Eng. CD
President and CEO
Reprogenesis, Inc.
00 Xxxx Xxxxxx
Xxxxxxxxx, XX 00000
/s/ Xxx Ousted, Eng. CD 7/22/99
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Signature
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