EX-10.13 3 a2234645zex-10_13.htm EX-10.13 COLLABORATIVE RESEARCH AGREEMENT
Exhibit 10.13
COLLABORATIVE RESEARCH AGREEMENT
THIS COLLABORATIVE RESEARCH AGREEMENT (this “Agreement”) is made and entered into as of August 27th, 2017 (“Effective Date”) between BIOXCEL THERAPEUTICS, INC., a Delaware corporation, having its principal place of business at 000 Xxxx Xxxx Xxxxxx, Xxxxxxxx, XX 00000 (“BTI”) and NEKTAR THERAPEUTICS, a Delaware corporation, having its principal place of business at 000 Xxxxxxx Xxx Xxxxxxxxx Xxxxx, Xxx Xxxxxxxxx, XX 00000 (“Nektar”). Each of Nektar and BTI may be referred to herein as a “Party” or collectively as the “Parties.”
1. Evaluation; Permitted Use of Materials.
1.1 The Evaluation shall be performed in its entirety by the CRO in accordance with the CRO SOW and the Letter Agreement. The Parties shall mutually agree on the text of the CRO SOW, including any amendments thereto, and on the protocol(s) under which the CRO shall conduct the Evaluation. The Parties shall agree in advance in writing on the budget for the Evaluation. BTI shall reimburse Nektar for fifty percent (50%) of the actual out-of-pocket
expenses (with no markup) billed by the CRO (“CRO Costs”), provided that the CRO Costs to be reimbursed by BTI shall not exceed fifty percent (50%) of the mutually-agreed budget for the Evaluation without the prior written consent of BTI. In the event that any amounts paid by Nektar to the CRO are refunded or credited back to Nektar by the CRO, and Nektar had previously been reimbursed by BTI for 50% of such amounts, Nektar shall promptly notify BTI of such refund or credit in writing and remit 50% of such refund or credit to BTI.
1.2 Subject to the terms of this Agreement and the Letter Agreement, Nektar agrees to provide the Nektar Materials to the CRO, and BTI agrees to provide the BTI Materials to the CRO, in order to permit the CRO to conduct the Evaluation for the Purpose. Nektar shall ensure that the CRO does not use the Materials of the Providing Party for any activities other than the Evaluation set forth in Exhibit B or as otherwise agreed in writing by the Parties. It is the intention of the Parties that Nektar shall not provide Nektar Materials to BTI, and that BTI shall not provide BTI Materials to Nektar.
1.2 The Parties shall at all times retain all right, title and interest in and to their respective Materials, and each Party reserves all rights not expressly granted herein.
1.3 Each of the Parties shall appoint one or more of its scientists to interact with the scientist(s) appointed by the other Party with respect to the day-to-day conduct of the Evaluation, including discussion of the Evaluation Data as provided in Article 4.2 (the “Scientific Lead(s)”). As of the Effective Date, the Scientific Leads for Nektar are Xx. Xxxxxxx Xxxxxxx and Xx. Xxxxxxxx Xxxxxxxx, and the Scientific Leads for BTI are Xxxx Xxxxxxxx. Each Party shall have the right to change its Scientific Lead(s) on written notice to the other Party. Notwithstanding the appointment of the Scientific Leads, each Party shall retain all of its rights and discretion under this Agreement. The Scientific leads shall have no power to modify or amend the provisions of this Agreement, which may be modified or amended only as provided in Article 7.13.
Information as confidential in writing within a reasonable time after disclosure shall not prevent such information from being Confidential Information of the Providing Party subject to the protection afforded by the provisions of this Agreement, provided that a reasonable person working in the biopharma industry would recognize that the information disclosed is the Confidential Information of the Providing Party based on the nature of the Confidential Information and/or the context of the disclosure.
2.2 The Receiving Party shall:
(a) exercise, and cause its employees, agents and consultants to exercise, reasonable care to hold in confidence and not disclose Confidential Information of the Providing Party to third parties without the prior written consent of the Providing Party;
(b) not use, and cause its employees, agents and consultants to not use, Confidential Information of the Providing Party for any purpose other than the Purpose without the prior written consent of the Providing Party; and
(c) be responsible for any breach of this Article 2 by any of its employees, agents and consultants.
(a) was already known to the Receiving Party, other than under an obligation of confidentiality, at the time of disclosure by the Providing Party;
(b) was generally available to the public or otherwise part of the public domain at the time of its disclosure to the Receiving Party;
(c) became generally available to the public or otherwise part of the public domain after its disclosure and other than through any act or omission of the Receiving Party in breach of this Agreement;
(d) is independently discovered or developed by the Receiving Party without the use of Confidential Information of the Providing Party; or
(e) was disclosed to the Receiving Party, on a non-confidential basis, by a third party who had no obligation to the Providing Party not to disclose such information to others.
The confidentiality obligations under this Agreement shall apply to a combination or compilation of Confidential Information, even if some or all of its component parts individually fall within subsections (a) — (e) above, unless the combination or compilation itself and its economic value and principles of operation are themselves entirely within subsections (a) — (e) above.
3. Ownership and Intellectual Property Rights.
3.1 If the CRO conceives and/or reduces to practice inventions or discoveries, relating to a Providing Party’s Materials, whether or not patentable (“Evaluation Inventions”, as defined, including all patents and other intellectual property rights therein), Nektar shall take reasonable actions to confirm that, with respect to any Evaluation Inventions of which Nektar has knowledge, the CRO promptly and fully discloses to the Providing Party any such Evaluation Inventions after the conception or reduction to practice thereof.
3.2 The Parties agree that inventorship of Evaluation Inventions will be determined in accordance with U.S. patent law, and ownership of such inventions will be determined as follows:
(a) Nektar shall own, and the CRO Agreement provides for the CRO to assign to Nektar, all right, title, and interest in and to any Evaluation Inventions generated in the performance of the Evaluation solely by one or more of the CRO’s employees, agents or consultants, or jointly by employees, agents or consultants of the CRO, on the one hand, and employees, agents or consultants of Nektar, on the other hand, that are specific to the Nektar Materials (“Nektar Inventions”).
(b) BTI shall own, and the Letter Agreement provides for the CRO to assign to BTI, all right, title, and interest in and to any Evaluation Inventions generated in the performance of the Evaluation solely by one or more of the CRO’s employees, agents or consultants, or jointly by employees, agents or consultants of BTI, on the one hand, and employees, agents or consultants of BTI, on the other hand, that are specific to the BTI Materials (“BTI Inventions”).
(c) The Parties shall jointly own, and Nektar and BTI hereby assign to each other, an equal joint interest in and to any Evaluation Inventions generated in the performance of the Evaluation solely by the employees, agents or consultants of the CRO, or jointly by employees, agents or consultants of the CRO, on the one hand, and employees, agents or consultants of Nektar and/or BTI, on the other hand, that are specific to the use of the Nektar Materials and BTI Materials in combination, or that otherwise relate to the Materials of both Parties. All such joint Evaluation Inventions described in this clause (c) shall be referred to as “Joint Inventions.” Each Party shall be free to practice any Joint Invention, and to grant any third party a license under such Party’s interest in any Joint Invention, without the consent of the other Party and without accounting to the other Party (but in the case of any grant of any license
to a third party, with written notice to the other Party within a reasonable time following the grant of the license under the interest in the Joint Invention).
3.4 Nektar shall have sole right and discretion to file, prosecute, and maintain patents and patent applications claiming Nektar Inventions, and BTI shall have sole right and discretion to file, prosecute, and maintain patents and patent applications claiming BTI Inventions. The Parties shall confer in good faith regarding the filing, prosecution, and maintenance of patents and patent applications claiming Joint Inventions.
4. Invoicing; Payments; Evaluation Data.
4.1 Nektar shall invoice BTI for its share of the CRO Costs to the following address:
Accounts Payable
BTI Therapeutics, Inc.
000 Xxxx Xxxx Xxxxxx
Xxxxxxxx, XX 00000
Or electronically, at xxxxxxxxx@xxxxxxx.xxx and xxxxxxxxxx@xxxxxxx.xxx.
BTI shall pay Nektar fifty percent (50%) of the costs incurred under the CRO SOW (total costs under the CRO SOW anticipated to be $80,720). The first payment of $20,180 from BTI to Nektar shall be due thirty (30) days after BTI’s receipt of Nektar’s invoice. This amount represents fifty percent (50%) of the advance payment of $40,360 due from Nektar to the CRO upon execution of the CRO SOW. The second and final payment due from BTI to Nektar following completion of the Evaluation by the CRO, which is currently estimated to be $20,180, will be invoiced by Nektar upon BTI’s receipt of the final report from the CRO, and will not exceed fifty percent (50%) of the final payment due from Nektar to the CRO. BTI shall provide a purchase order number within five (5) business days of signing the Agreement. All Nektar invoices shall reference a BTI purchase order number, and will include copies of relevant invoices received by Nektar from the CRO for documentation. If either this Agreement or the CRO SOW is terminated prior to the completion of the Evaluation, then BTI and Nektar shall each be liable for 50% of the final payment due to the CRO. BTI shall pay all undisputed invoices received from Nektar within thirty (30) days from the date of BTI’s receipt of any such invoice. Late payments for undisputed invoices are subject to an interest charge of one percent (1.0%) per month on the outstanding balance.
BTI shall remit payments due to Nektar to the following bank and bank account (or to such other bank or bank account of which Nektar may notify BTI in writing from time to time):
Bank Name: Xxxxx Fargo Bank
Bank Address: Peninsula Regional Commercial Banking Xxxxxx
000 Xxxxxxxx Xxxxxx, Xxxxx 000
Xxxx Xxxx, XX 00000
Swift Code: XXXXXX0X
ABA Number: 000000000
Account Number: 4277155404
Account Name: Nektar Therapeutics
Currency: USD
4.2 Nektar shall take reasonable actions to confirm that the CRO provides all data, reports and conclusions of the Evaluation that it produces or obtains (the “Evaluation Data”) to both Parties at a frequency and in a manner as agreed upon by the Parties, and that the Parties shall discuss the Evaluation Data on a schedule to be mutually agreed by the Scientific Leads of the Parties, but which is anticipated to be at least every fourteen (14) days during the Evaluation. BTI shall have and retain sole and exclusive ownership of all Evaluation Data that relates specifically to the BTI Materials, and Nektar have and retain sole and exclusive ownership of all Evaluation Data that relates specifically to the Nektar Materials. The Parties shall have joint ownership of all Evaluation Data that relates to the combined use of the BTI Materials and the Nektar Materials (the “Joint Evaluation Data”). Subject to Article 2, each Party shall be free to use the Joint Evaluation Data (a) in its internal development efforts; and (b) for the purpose of filing or supplementing patent applications for Evaluation Inventions owned by such Party and for Prior Inventions of such Party, and in each case ((a) and (b)), without the consent of the other Party and without accounting to the other Party. Each Party also shall have the right, with the written approval of the other Party, to disclose the Joint Evaluation Data and/or the other Party’s Evaluation Data in confidence to potential business partners, potential investors, or potential licensees, but only after such potential business partners, investors or licensees have entered into confidentiality and non-use agreements relating to the Evaluation Data that are at least as protective of the confidentiality of the Evaluation Data as the provisions of Article 2. In addition, at the request of either Party, the Parties will mutually agree upon a written presentation of the Evaluation Data that may be used by either Party in due diligence by potential business partners, potential investors or potential licensees, but only after such potential business partners, investors or licensees have entered into confidentiality and non-use agreements relating to the Evaluation Data that are at least as protective of the confidentiality of the Evaluation Data as the provisions of Article 2, without the need to obtain the written approval of the other Party.
4.3 Any publication or public presentation by either Party of the Joint Evaluation Data shall require the prior written consent of both Parties.
negligence or willful misconduct; (c) the indemnifying Party’s breach of applicable law, rule or regulation; and (c) the use, handling, transfer or storage of such indemnifying Party’s Materials by the CRO in connection with the Evaluation, except, in each case, to the extent such Losses result from the negligence or willful misconduct of the indemnified Party.
and shall not be referred to in connection with the construction or interpretation of this Agreement.
7.7 Governing Law; Jurisdiction. This Agreement is made under and shall be construed according to the laws of the State of New York without regard to any conflict of law principles that would provide for the application of the law of another jurisdiction. Any disputes under this Agreement may be brought in the state courts and the Federal courts located in the Southern District of New York, and the Parties hereby consent to the personal jurisdiction and exclusive venue of such courts.
7.8 Successors and Assigns; Parties in Interest.
(a) This Agreement shall be binding upon and shall inure to the benefit of the respective permitted successors and assigns of each of the Parties hereto (if any). No person who is not a Party shall have any rights hereunder as a third-party beneficiary or otherwise.
(b) Each Party shall not assign its rights or obligations under this Agreement without the prior written consent of the other Party, which consent may be given or withheld in the other Party’s sole and absolute discretion. Notwithstanding the foregoing, a Party may transfer or assign this Agreement or any of its rights and obligations under this Agreement, in whole or in part, without the consent of the other Party, to any: (i) affiliate; (ii) subsidiary; or (iii) any third party that acquires all or a majority of the stock of such Party, or with which such Party merges, or consolidates, or to which it transfers all or substantially all of its assets to which this Agreement relates.
government, natural disasters, including earthquakes or storms, fire, political strife, terrorism, failure or delay of transportation, then such Party’s performance of its obligations hereunder shall be excused during the period of such events and for a reasonable period of recovery thereafter, and the time for performance of such obligations shall be automatically extended for a period of time equal to the duration of such events; provided, however, that the Party claiming force majeure shall promptly notify the other Party of the existence of such force majeure, shall use commercially reasonable efforts to avoid or remedy such force majeure and shall continue performance hereunder with the utmost dispatch whenever such force majeure is avoided or remedied. When such circumstances arise, the Parties shall discuss what, if any, modification of the terms of this Agreement may be required in order to arrive at an equitable solution.
IN WITNESS WHEREOF, the Parties hereto, intending to be legally bound hereby, have duly executed this Collaborative Research Agreement to be effective as of the Effective Date.
BTI THERAPEUTICS, INC. |
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NEKTAR THERAPEUTICS |
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/s/ Xxxx Xxxxxxxx |
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/s/ D. Charych |
Signature |
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Signature |
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Xxxx Xxxxxxxx |
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Xxxxxxx Xxxxxxx |
Name |
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Name |
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VP Oncology |
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Executive Director, Research |
Title |
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Title |
Exhibit A
Materials, Evaluation Period, & Reports
1. Material(s):
BTI Materials Requested: 50 mg of BXCL701
Nektar Materials Requested: 7 mg of NKTR-214