EXHIBIT 10.11
RESEARCH AGREEMENT
THIS RESEARCH AGREEMENT ("Agreement") is made effective as of November 6,
1998 by and between Photogen, Inc., a Tennessee corporation with offices in
Knoxville, Tennessee (hereinafter referred to as "Sponsor"), and The
Massachusetts Eye and Ear Infirmary, with offices at 000 Xxxxxxx Xx. xx Xxxxxx,
Xxxxxxxxxxxxx 00000 (hereinafter referred to as "MEEI"). Sponsor and MEEI are
collectively referred to as the "Parties."
WITNESSETH:
WHEREAS, the research project contemplated by this Agreement is of mutual
interest and benefit to the Sponsor and MEEI, and will further the
instructional, medical, and research objectives of MEEI and the research and
development objectives of the Sponsor.
NOW THEREFORE, in consideration of the mutual covenants contained herein,
the Parties hereto agree as follows:
1. THE PROJECT. MEEI agrees to use its best efforts to perform in a timely and
expeditious manner the research project entitled "Evaluation of
multi-photon excitation (MPE) of Endogenous chemical compounds for the
treatment of ocular melanoma" (the "Project"). The Project will be
conducted under the direction of Xxxx X. Xxxxx, M.D., Ph.D. ("Principal
Investigator") pursuant to the terms of the protocol dated November 6, 1998
between the Sponsor and MEEI which has been separately delivered and
acknowledged by the Parties (the "Protocol"). MEEI shall provide personnel
(who, together with the Principal Investigator, are referred to as the
"Investigators"), facilities, and resources as required to accomplish the
work necessary to complete the Project in accordance with the Protocol. The
Project shall be limited to the scope described in the Protocol.
2. TERM. The term of this Agreement and the Project shall be for nine months,
from November 6, 1998 through August 6, 1999, or, as extended by mutual
written agreement, unless sooner terminated in accordance with the terms
hereof.
3. PAYMENT. The total cost to the Sponsor for the Project will not exceed
$145,000 for the work described in the Protocol. The cost for subsequent
work pursuant to other protocols or consulting, including but not limited
to, the design of clinical trials and work with regulatory agencies will be
agreed upon by the Parties and covered by a separate agreement. Delays
caused by third party actions
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may alter the following payment schedule as mutually agreed upon in writing
by the Parties. Payments during the Project shall be made to MEEI by the
Sponsor according to the following schedule:
AMOUNT DATE
$40,000 November 6, 1998
$40,000 February 6, 1998
$40,000 May 6, 1998
$25,000 August 6, 1998
Checks shall be made payable to:
Massachusetts Eye and Ear Infirmary
and shall be mailed to the following address:
Director, Research Administration
Massachusetts Eye and Ear Infirmary
000 Xxxxxxx Xxxxxx
Xxxxxx, XX 00000
All funds provided by Sponsor under this Agreement may be used at the
discretion of MEEI in support of the work for the Project. Any changes to
the above payment schedule must be agreed to in writing by the Parties.
4. TERMINATION. This Agreement and the Project may be terminated as set forth
below, in which case Sponsor's payment obligations will be adjusted through
the date of termination:
a. In the event that either Party defaults in the due performance of its
respective obligations under this Agreement, or in the event that any
representation or warranty by either Party in this Agreement or in the
documentation or data produced through the Project proves to be
materially false or misleading, and such default or breach is not
cured within thirty (30) days after written notice by the other Party,
then the non-defaulting Party may elect to terminate the Project and
this Agreement by
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giving written notice to the defaulting Party, and this Agreement
shall terminate upon the defaulting Party's receipt of said notice.
b. MEEI shall promptly advise Sponsor if for any reason Xx. Xxxxx cannot
be available as the Principal Investigator. If the Parties cannot
agree on a qualified scientist as a replacement, Sponsor may terminate
the Project and this Agreement on the 30th (thirtieth) day after
delivery of written notice to MEEI.
c. Notwithstanding anything in this Agreement to the contrary, either
Party may terminate this Agreement, with or without cause and without
liability, on 90 (ninety) days' prior written notice to the other
Party; in which event this Agreement and the Project shall terminate
on the 90th (ninetieth) day after delivery of such notice. The payment
schedule shall be adjusted to reflect work completed up to the
termination date.
d. The Parties recognize that the results of any particular research
project cannot be guaranteed even through the use of MEEI's best
efforts. Further, MEEI shall not be held responsible for delays due to
third party suppliers. Therefore, it is specifically agreed that the
failure of MEEI to achieve specific research results shall not
constitute a default or breach of this Agreement. Further, the Parties
agree that obligations under Sections 5, 6, 7, 9, 10, 12, 13, 14 and
19 survive any termination of this Agreement or the Project.
5. EQUIPMENT. Title to any equipment purchased or manufactured by MEEI in the
course of the research conducted under this Agreement or with the use of
funds provided by Sponsor shall vest in MEEI.
6. PROPRIETARY INFORMATION OF THE PARTIES.
a. MEEI and Sponsor recognize that the conduct of the Project may require
the exchange of proprietary information, identified as such in
writing, including Inventions (as defined in Section 13.a below) and
other confidential business, technical and scientific information,
between the Parties. Accordingly, it is agreed that each receiving
Party shall retain in confidence all proprietary information of the
other Party and shall not disclose such information to any other
person or entity, nor use such information without written permission
of the Party owning such information, except in accordance with the
terms of this Agreement.
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b. The term "proprietary information" as used herein shall not include
any information which the recipient clearly shows by appropriate
documentation:
(1) Was at the time of receipt both lawfully and independently known
to the receiving Party, its agents, or employees;
(2) Without breach of this Agreement by the receiving Party has been
published or is otherwise within the public knowledge or is
generally known to the public at the time of disclosure;
(3) Becomes known or available to the receiving Party without
restriction from a source other than the disclosing Party,
provided that such source has an unqualified right to disclose
such information without restriction;
(4) Becomes a part of the public domain after disclosure without
breach of this Agreement by the receiving Party; or
(5) Is required by law to be disclosed, in which case the receiving
Party will give the disclosing Party prompt written notice of the
required disclosure. The disclosing Party may, in good faith and
at its own expense, contest disclosure or seek confidential
treatment and the receiving Party shall cooperate with the
disclosing Party in all reasonable respects.
7. PUBLICATION.
a. The Project studies may be worthy of written or oral publication in
scholarly journals or at meetings. Such presentation or publication
shall be jointly authored by the Principal Investigator and Sponsor's
scientists in accordance with their respective scientific
contributions to the Project, if applicable (otherwise, by the
originating person). Prior to publication, each Party will give the
other the opportunity to review and comment on any intended public
disclosure covering the Project, but in no event shall such
publication be permitted without the express written approval of the
Party from which the results originated.
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b. In order to give Sponsor an opportunity to protect against loss of
confidentiality or patent rights as a result of publication, the
Principal Investigator and/or MEEI shall submit copies of drafts of
any article, or presentation on the research written by any
Investigator resulting from work on this Project to Sponsor for review
and comment at least thirty (30) days and in the case of abstracts
seven (7) business days prior to the anticipated date of submission
for publication or presentation. If Sponsor, in its reasonable
judgment, determines that it needs additional time to seek patent
protection for the information, then MEEI and the Investigators, as
the case may be, agree to defer the submission for publication for an
additional period as determined by written advice of Sponsor's patent
counsel; provided that MEEI's patent counsel agrees, which agreement
shall not be unreasonably withheld. The person seeking to publish the
material shall make appropriate changes in such material to reflect
the Parties' reasonable comments concerning patent protection and
non-disclosure of Trade Secrets (defined below).
8. INDEPENDENT CONTRACTOR. The Parties' relationship to one another in the
performance of this Agreement is that of independent contractors. The
Parties are not employees or agents of one another. Neither Party shall
have the authority to bind or incur liability for the other except as may
be expressly authorized in writing.
9. INDEMNIFICATION.
a. Sponsor will defend, indemnify, and hold harmless MEEI and its
trustees, employees and staff against any and all actions, suits,
claims, demands or prosecutions that may be brought or instituted
against MEEI and/or its trustees, employees and staff based on or
arising out of the manufacture, use, sale or other distribution of any
product of Sponsor (or its affiliates or licensees) resulting from the
Project, except to the extent any such action, suit, claim, demand or
prosecution is based on the negligence or willful misconduct of MEEI
and/or its trustees, employees or staff.
b. MEEI will defend, indemnify and hold harmless Sponsor and its
directors, employees and representatives from and against all actions,
suits, claims, demands or prosecutions that may be brought or
instituted against any of them based on the negligence or willful
misconduct of MEEI and/or its trustees, employees or staff.
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10 NEGATION OF WARRANTIES BY MEEI. Although MEEI will use its best efforts in
connection with the Project as set forth in Section 1 of this Agreement,
MEEI makes no warranties, either expressed or implied, as to the result of
such research or the merchantability or fitness for a particular purpose of
the research or any product arising out of the Project. MEEI shall not be
liable for any direct, consequential, or other damages suffered by the
Sponsor or others which may result from the use of any product arising out
of the Project (except to the extent set forth in Section 9, above).
11. KEY PERSONNEL. Xxxx X. Xxxxx, M.D., Ph.D., Principal Investigator, is
considered to be essential to the Project. Substitutions for or substantial
changes in her level effort or participation will not be made without the
prior written approval of Sponsor. Each Party will obtain agreements from
its employees, independent contractors, consultants and similar persons
causing such third parties to be bound by the provisions of Sections 6, 7,
12 and 13 hereof.
12. INTELLECTUAL PROPERTY RIGHTS OF THE PARTIES. Neither Party shall have any
claim by virtue of this Agreement or the Project to any right, title or
interest in any Invention, Trade Secret or Patent Rights (defined below) or
any other intellectual property rights issued to, owned or controlled by
the other Party (a) prior to the date hereof, or (b) after the date hereof
except a New Invention, Trade Secrets or Patent Rights arising out of the
Project and as specifically set forth in Section 13 below.
13. INVENTIONS AND PATENT RIGHTS.
a. The term "Invention" means a patentable discovery or invention,
including processes, methods, formulas and technologies. The term
"Trade Secret" means non-patented trade secrets, know-how,
compositions, protocols, processes and techniques, discoveries,
machines, ideas, computer programs (including software and data used
in all such programs), drawings, specifications and technical
information. The term "Patent Rights" means patent applications and
patent disclosures related to an Invention, together with all letters
patent, reissuances, continuations, continuations-in-part, revisions,
extensions, and reexaminations thereof.
b. Inventions, related Patent Rights and Trade Secrets arising directly
from work on this Project during the term of this Agreement and for a
period of 12 months thereafter shall be owned as follows:
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(1) MEEI will own all such Inventions or Trade Secrets it, the
Principal Investigator or any other Investigator independently
conceives (a "MEEI Invention") and all related Patent Rights,
subject to the license if Sponsor exercises its option described
in paragraph 13.f below;
(2) MEEI and Sponsor will jointly own all such Inventions jointly
conceived by MEEI, or the Principal Investigator or any other
Investigator together with Sponsor (a "Joint Invention") and all
related Patent Rights, subject to the license if Sponsor
exercises its option described in paragraph 13.f below; and
(3) Sponsor will own (A) all Inventions and Trade Secrets Sponsor
independently conceives and all related Patent Rights, and (B)
all MEEI or Joint Inventions and related Patent Rights, described
in the foregoing clauses (1) or (2), as to which MEEI declines to
prosecute a patent application in accordance with paragraph (d),
below (collectively, a "Sponsor Invention").
(4) All Trade Secrets, arising from work on this Project, related to
a MEEI Invention or a Joint Invention shall be subject to the
license if Sponsor exercises its option described in paragraph
13.f below.
c. With respect to MEEI Inventions and related Trade Secrets, MEEI will
cause all Investigators to report such Invention and related Trade
Secrets and assign all of their right, title and interest therein to
MEEI; with respect to Joint Inventions and related Trade Secrets, the
Sponsor will cause its personnel and MEEI will cause each Investigator
to report such Invention and related Trade Secrets and assign all of
their right, title and interest therein to Sponsor and MEEI jointly;
and with respect to Sponsor Inventions and related Trade Secrets, all
Investigators shall report such Invention and related Trade Secrets
and assign all of their right, title and interest therein (if any) to
Sponsor. Sponsor and MEEI shall promptly advise the other in writing
of each MEEI Invention or Joint Invention and related Trade Secrets
and shall cause their Investigators and personnel, as applicable, to
maintain current and reasonably detailed records as to possible MEEI
and Joint Inventions and Trade Secrets, which shall be open to
inspection by the other Party. The Parties shall discuss for up to 90
days whether patent applications pertaining to such MEEI or Joint
Invention should be filed and in which countries. All of the foregoing
shall constitute proprietary information subject to Section 6, above.
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d. If either Party determines that patent applications should be filed,
patent applications relating to MEEI Inventions shall be filed by MEEI
and patent applications relating to Joint Inventions shall be filed as
agreed upon by the Parties. If within 90 days after the date on which
such an Invention was disclosed by one Party to the other Party, one
Party states in writing that it is not interested in filing patent
applications on either an MEEI Invention or a Joint Invention or fails
to state in writing that it desires to file patent applications (a
"declining Party") and the other Party (a "prosecuting Party") is
interested in filing such applications, the declining Party, if the
Sponsor, shall assign all of its Patent Rights in such Invention to
the prosecuting Party and the prosecuting Party shall be free to file
and prosecute, all Patent Rights in the Invention in the name of the
appropriate inventor, for its own account (including the right to
license the same to any third party) and at its own expense. If the
declining Party is MEEI, then MEEI agrees to file and prosecute at
Sponsor expense, all patent rights in the Invention in the name of the
appropriate Inventor for its own account, subject, however, to
providing Sponsor with the option to obtain a license as contemplated
in Section 13.f below. All prosecution costs pertaining to patent
applications covering an MEEI or Joint Invention that are filed by
mutual agreement of the Parties or by MEEI when it is the declining
Party (including preparation, filing, prosecution, issuance and
maintenance costs) shall be borne by Sponsor, and Sponsor shall have
the right to select patent counsel.
e. The Parties agree to cooperate and work together in good faith to
effect the provisions of this Section 13. Each Party agrees to take
such actions as may be necessary to effect the provisions of this
Section 13.
f. As to all Patent Rights relating to a MEEI Invention or a Joint
Invention, MEEI hereby grants Sponsor for the twelve (12) months next
following the first filing of patent applications in any jurisdiction
relating to such Invention the irrevocable first option to obtain a
license. Upon exercise of this option, the parties shall negotiate in
good faith a license agreement containing terms that are commercially
reasonable, such license to include, but not be limited to the
following:
(1) Sponsor shall have a world-wide, exclusive (subject only to
paragraph (h) below), royalty-bearing license granting Sponsor
the right to use the Invention, to design, make, have made,
market lease, offer for sale, sell and/or distribute products
embodying or
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produced through the use of the Invention, itself or through
third parties by way of sublicense, and in all other respects to
use, sublicense, and commercialize the Invention and any such
product under all Patent Rights. Pursuant to such license,
Sponsor shall use reasonable efforts to commercialize such
products and will be free to design the products, and select
pricing and marketing methods in its discretion; but Sponsor
makes no representation, warranty or covenant as to whether any
such product can be developed, manufactured or sold, or as to the
revenues, if any, resulting from sales.
(2) Sponsor shall pay MEEI a reasonable licensing fee, and a
reasonable royalty of an amount not less than $10,000 per year.
(3) Sponsor will defend all challenges to Patent Rights and MEEI will
cooperate with Sponsor in that regard.
(4) Sponsor may abandon the license at any time by express written
notice to MEEI, in which case all rights will revert back to MEEI
and all license and royalty obligations on Sponsor shall
terminate.
(5) Product liability indemnification and insurance requirements
which are reasonably acceptable to MEEI's liability insurance
carrier.
(6) In addition to the foregoing, any other commercially reasonable
terms standard for agreements between universities and industry
not inconsistent with the foregoing.
Sponsor may exercise this option by giving written notice of exercise
to MEEI during said twelve-month period. Thereafter, MEEI and Sponsor
each agree to negotiate in good faith and to enter into a license
agreement incorporating the foregoing terms within six (6) months
after notice of exercise. If Sponsor elects not to give written notice
of exercise during such 12-month period (but not otherwise), MEEI may
grant a license to such Invention and Patent Rights to any other
person or entity.
g. MEEI represents and warrants that MEEI is not now and will not in the
future be prohibited or prevented from granting such a license to
Sponsor pursuant to the terms of Section 13.f above.
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h. It is understood that MEEI will reserve the right beyond rights
described above in Sections 13.a to and including 13.g to use any
MEEI Invention or Joint Invention only for research, clinical and
educational purposes, and that if federal funding supports the
Invention, Sponsor's license will be subject to the rights, conditions
and limitations imposed by U.S. law including without limitation the
royalty-free non-exclusive license granted to the U.S. government (see
35 USC sec. 202 et. seq. and regulations pertaining thereto). MEEI
represents, warrants and agrees with Sponsor that no federal funds
will be used to support the Project without providing Sponsor with one
hundred twenty (120) days prior written notice.
14. DATA. The original data generated as a result of the Project shall be
retained or under the control of MEEI; however, copies shall be provided to
Sponsor promptly, and Sponsor may use such data as it deems advisable,
including for purposes of publication, presentation to the scientific
community, seeking regulatory approvals or for any other purposes. However,
this provision shall not be interpreted to restrict MEEI's publication
rights under Section 7 of this Agreement. The Principal Investigator shall
report to the Sponsor every 90 days on the status and results of the
Project. The Principal Investigator shall keep reasonable and customary
records of the Project and related data sufficient for Sponsor's regulatory
approval activities and shall make such records available to Sponsor on
reasonable request.
15. PUBLICITY. Neither Party shall use the name of the other Party or of any
Investigator in any advertising or promotional material without the prior
written approval of the other Party. The foregoing notwithstanding, (a)
MEEI and the Principal Investigator shall acknowledge Sponsor's support of
the Project in their respective reports and publications, (b) Sponsor may
disclose the existence and describe the terms of, and may file a copy of
this Agreement (redacted to the extent Sponsor deems appropriate to ensure
confidentiality) as an exhibit to its press releases, reports and
governmental filings, including reports and filings with the U.S.
Securities and Exchange Commission and relevant foreign government
authorities; and (c) Sponsor may make reference to technical publications
by the Principal Investigator or his co-authors. Any publicity or
governmental filings of this Agreement pursuant to this Section 15 shall
describe the relationship of the Parties accurately and appropriately,
including the fact that MEEI is affiliated with Harvard Medical School.
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16. APPROVALS. MEEI represents and warrants to Sponsor that this Agreement and
the Project have been approved by the proper governing authorities of MEEI.
Sponsor represents and warrants to MEEI that this Agreement and the Project
have been approved by its Board of Directors.
17. MODIFICATION. This Agreement and the Protocol constitute the sole, full,
and complete agreement by and between the Parties concerning the subject
matter hereof and supersedes and replaces all prior agreements, discussions
and representations between the Parties. No amendments of any provision of
this Agreement shall be valid unless reduced in writing and signed by the
Parties and all waivers must be in writing and signed by the Party against
which the waiver is to be enforced.
18. NOTICES AND OTHER COMMUNICATIONS. With the exception of Sponsor's payments
under Section 3, all notices and other communications between the Parties
in connection with this Agreement shall be in writing and deemed
sufficiently given when delivered by messenger or overnight courier
providing for receipted delivery, transmitted by fax with confirmation of
transmission or sent by prepaid United States mail or other recognized
carrier, addressed as follows:
a. If to Sponsor:
Xxxx Xxxxxx
President, CEO
PHOTOGEN, Inc.
0000 Xxx Xxxxx xxxxxxx
Xxxxxxxxx, XX 00000
Fax number: (000) 000-0000
b. If to MEEI:
F. Xxxxxx Xxxxx, President
The Massachusetts Eye and Ear Infirmary
000 Xxxxxxx Xxxxxx
Xxxxxx, XX 00000
Fax number: 000-000-0000
Either Party may change its address by written notice given to the other
Party. It is specifically provided that this notice provision shall not be
construed in such a
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manner as to abrogate the provisions of Section 16 regarding modification
of this Agreement.
19. GOVERNING LAW; CHOICE OF FORUM. This Agreement is made and entered into the
State of Tennessee and its validity and interpretation and the legal
relations of the Parties shall be governed by the internal laws of the
State of Tennessee without regard to its provisions on conflict of laws.
Each Party submits to the exclusive jurisdiction of any state or federal
court sitting in Chicago, Illinois in any action or proceeding relating to
this Agreement and each Party agrees that all claims in respect of the
action or proceeding may be heard and determined only in any such court.
Each of such Parties waives any defense of inconvenient forum to the
maintenance of any action or proceeding so brought and waives any bond,
surety, or other security that might be required of any other Party with
respect thereto.
THIS AGREEMENT shall not be considered accepted, approved, or otherwise
effective until the signature of each Party is affixed in the space provided
below.
IN WITNESS WHEREOF, signifying their acceptance of and agreement to be bound by
the terms and conditions of this Agreement, the signatures of the Parties are
affixed hereto:
PHOTOGEN, INC. MASSACHUSETTS EYE
AND EAR INFIRMARY
By: /s/ Xxxx Xxxxxx By: /s/ F. Xxxxxx Xxxxx
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Xxxx Xxxxxx F. Xxxxxx Xxxxx
President, CEO President
Date: 11-12-98 Date: 11-5-98
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