Exhibit 10(p)
AGREEMENT
---------
This Agreement effective as of the 1st day of January, 1995, is made between
--- -------
Catalytica, Inc., a Delaware corporation having its principal offices in
Mountain View, California, hereinafter referred to as "CATALYTICA" and
Microfluidics International Corporation, a Delaware corporation having its
principal offices in Newton, Massachusetts, hereinafter referred to as
"MICROFLUIDICS".
WHEREAS, CATALYTICA has accumulated data and know-how on cata1ysts and advanced
materials, including synthesis, properties and applications which it considers
confidential and proprietary;
WHEREAS, MICROFLUIDICS has accumulated data and know-how on processing using a
Microfluidizer(R) device, including synthesis, properties and applications which
it considers confidentiaI and proprietary;
WHEREAS, MICROFLUIDICS and CATALYTICA have a pre-existing collaborative
relationship with regard to the production of novel solid state materials using
the Microfluidizer device and have been selected for participation in the
Advanced Technology Program (" ATP"') administered by the National Institute of
Standards and Technology (''NIST'') as a joint venture to conduct certain
specified research; and
WHEREAS, MICROFLUIDICS and CATALYTICA have continued interest in collaborating
in order to develop technology using a Microfluidizer device for the 1)
production of catalysts and ceramics, 2) production of advanced materials
containin meta1 oxides, 3) the catalytic production of chemicals and for 4) the
destruction of organic waste materials, hereinafter referred to as the "FIELD",
to a stage suitable for industrial utiliztion, inc1uding techno1ogy deve1opment
under the ATP.
NOW, THEREFORE, in consideration of file foregoing and of file mutual promises
hereafterr set forth, CATALYTICA and MICROFLUIDICS agree to file following:
1. Development Program. CATALYTICA and MICROFLUIDICS will collaborate to
-------------------
develop technology within the FIELD, hereinafter referred to as the ''PROGRAM",
for the purpose, if successful, of commercializing the technology. The PROGRAM
will initially focus on the development of catalytic materials within the FIELD
that exhibit improved performance in catalyzed reactions. The Parties agree that
the PROGRAM will be conducted primarily under the auspices of the ATP and agree
to carry out their responsibilities as set forthin the ATP Proposal No: 94-01-
0190, and any contract with NIST. Unless otherwise agreed, each party will be
responsible for its own cost and cost reimbursement from NIST under the ATP.
Other applications will be developed as mutually agreed upon.
2. Program Management. The PROGRAM will directed by a Management Committee
------------------
consisting of two representatives from each Party. The workplans and budget will
be mutually agreed upon. CATALYTICA and MICROFLUIDICS willeach provide to the
other timely reports on the result of their respective evaluations conducted
during the Program subject to the obligations of confidentiality set forthin
Paragraph 6.
The Parties agree that CATALYTICA will serve as Admninstrator (the
"Administrator'') for the joint venture and MICROFLUIDICS hereby grant to
CATALYTICA a Power of Attorney for the sole purpose of binding Microfluidics to
the terms and conditions of the NIST Cooperative Agreement The Administrator
will perform the day-to-day management and administration of the ATP in
accordance with alllegal and regulatory requirement, including the NIST
Cooperative Agreement
3. Techno1ogy Ownership. Any technology or know-how, whether
--------------------
patentable or not, brought by CATALYTICA to the PROGRAM or developed by
CATALYTICA under the PROGRAM shall be owned by CATALYTICA. Any technology or
know-how, whether patentable or not, brought by MICROFLUIDICS to the PROGRAM or
developed by MICROFLUIDICS under the PROGRAM shall be owned by MICROFLUIDICS.
Any technology or know-how, whether patentable or not, developed jointly by the
parties under the PROGRAM shall be jointly owned by MICROFLUIDICS and
CATALYTICA.
In the event CATALYTICA develops or acquires an ownership interest in technology
and/ or know-how re1ating to the Microfluidizer as result of collaborating on
the PROGRAM, CATALYTICA agrees to grant to MICROFLUIDICS a roya1ty-free,
exclusive license to practice under CATALYTICA's ownership interest in such
technology and/or know-how. Further, if MICROFLUIDICS develops or acquires an
ownership interest in technology and/or know-how relating to chemical processes
as result of collaborating on the PROGRAM, MICROFLUIDICS
agrees to grant to CATALYTICA a royalty-free, exclusive license to practice
under MICROFLUIDICS's ownership interest in such technology and/or know-how. In
each case, the exclusive license granted shall be on a worldwide basis and shall
include the right to sublicense. The Parties will agree to grant to the United
States Government a non-exclusive, non-transferable, irrevocable, paid-up
license to practice or have practiced by or on behalf of the United States
Government throughout the world any invention conceived or first reduced to
practice in the course of the ATP.
The terms and conditions covering the sharing of benefits from commercialization
of technology developed under this Agreement will be covered by separate
Agreement.
4. Proprietary Information. In order to fulfill obligations under this
-----------------------
Agreement, it may be necessary for one party to disclose to the other party
certain proprietary information relating to the PROGRAM ("INFORMATION").
MICROFLUIDICS shal1not have any obligation to disclose to CATALYTICA any
INFORMATION relating to the interaction chamber of the Microfluidizer. Since
both parties wish to assure that INFORMATION is properly protected, they hereby
agree as follows:
INFORMATION may by disclosed in either oral or written form. Any INFORMATION
deemed confidential by the disclosing party will either be supplied in writing
and marked "CONFIDENTIAL", or, if supplied orally, summarized in writing within
thirty (30) days of disclosure and marked "CONFIDENTIAL".
The receiving party agrees to hold INFORMATION in strict confidence for a period
of ten (10) years from receipt and to use it only for the purposes under this
AGREEMENT. The receiving party agrees not to disclose the INFORMATION to any
third party unless prior written authorization has been obtained from the
disclosing party. These obligations shall not apply to:
INFORMATION which, at the time of disclosure, is already in the public domain.
INFORMATION which, after disclosure, becomes a part of the public domain by
publication or otherwise through no violation of this AGREEMENT.
INFORMATION which is shown by written record to be in the possession of the
receiving party prior to disclosure.
INFORMATION which is hereafter lawfully obtained by the receiving party from a
third party, which third party did not acquire the INFORMATION under a still
effective obligation of confidentiality to the disclosing party.
5. Precedence
----------
Should there be any conflict between the terms and conditions of this Agreement
and the NIST Cooperative Agreement, the NIST Cooperative Agreement shall take
precedence.
6. Miscellaneous.
-------------
This Agreement constitutes the entire agreement between the parties, no
representations having been made by any of the parties except as are herein
specifically set forth. No rights or obligations other than those expressly
recited herein are to be implied from this Agreement
The validity, interpretation and effect of this Agreement shall be governed by
the laws of the State of California, U.S.A.
Any correspondence or notifications concerning this Agreement will be addressed
to the parties as follows:
TO: MICROFLUIDICS INTERNATIONAL CORPORATION
00 Xxxxxxx Xxxx
Xxxxxx, Xxxxxxxxxxxxx 00000
TO: CATALYTICA,INC.
Xxxxxxxx Xxxxx, Xxxxxxxx #0
Xxxxxxxx Xxxx,Xxxxxxxxxx 00000
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be executed
by their respective representatives.
Accepted for MICROFLUIDICS Accepted for CATALYTICA
_____________________________ ______________________________
Signature Signature
______________________________ _____________________________
Name Name
______________________________ _____________________________
Title Title
______________________________ _____________________________
Date Date
