Exhibit 10.24
TEAMING AGREEMENT
BETWEEN
SINOFRESH HEALTHCARE, INC.
AND
XXXXXXXX RESPIRATORY RESEARCH INSTITUTE
THIS AGREEMENT made 28th April 2004, by and between Xxxxxxxx Respiratory
Research Institute (hereafter "LRRI), with offices located in Albuquerque, New
Mexico, and SINOFRESH HEALTHCARE, INC., a Florida Corporation with offices
located at 000 Xxxx Xxxxxx Xxxxx, Xxxxxxxxx, Xxxxxxx 00000 or (hereafter
"SinoFresh"). Hereafter, LRRI and SINOFRESH are often collectively referred to
as "Parties" and singularly as "Party". The Parties, intending to be legally
bound, agree to the following:
RECITALS
WHEREAS, SINOFRESH intends to submit a statement of capability and SBIR
or STTR unsolicited proposal to federal agencies.
WHEREAS, SINOFRESH wishes to retain LRRI for the purpose of providing
expertise and experimental resources for the assessment of antimicrobial
activity, mechanisms of action, and studies for defining new therapeutic
applications, including safety and preclinical studies. Studies may range from
in vitro applications to clinical trial studies.
WHEREAS, the Parties desire to enter into this Agreement in order to
accomplish the above purposes, all upon the terms and conditions set forth
herein.
NOW, THEREFORE, in consideration of the premises and of their mutual
understanding, takings, promises and covenants, the Parties agree as follows:
1. SINOFRESH, as Prime Contractor, will submit the statement of capability
and the proposal to the federal agency if the requirement is procured as a small
business set-aside or as an unrestricted competition. As such, SINOFRESH will be
responsible for the overall content of the proposal.
a. SINOFRESH will provide the overall Proposal Management and, in
the event of contract award, the Project Management.
b. LRRI, as Subcontractor, shall be available to support any other
task area in the prospective contract, if requested by
SINOFRESH.
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c. LRRI will submit to SINOFRESH the necessary management,
technical, and financial data for incorporation into the
proposal, and hereby grants permission for SINOFRESH to
incorporate said material into its proposal and to refer to LRRI
by name as a proposed priced or unpriced subcontractor or
supplier. A copy of the proposal excluding the budget will be
submitted to LRRI simultaneously with the submission to the
funding agency.
d. SINOFRESH reserves the right to subcontract with others than
LRRI when unique or special expertise is necessary for short
term or long term requirements.
2. In consideration of SINOFRESH agreeing not to further solicit other
prospective subcontractors for LRRI's area of interest, LRRI agrees that it will
not enter into any other teaming arrangement or support any other prospective
Prime Contractor in response to the effort identified herein. However, it is
understood that nothing contained herein shall be deemed to restrict either
Party from quoting, offering to sell, or selling to others any items or services
similar to those contemplated by this Agreement.
3.
a. SINOFRESH and LRRI will individually and collectively exert good
faith, reasonable efforts in the preparation and submission of
this proposal. If requested by SINOFRESH, LRRI will support any
negotiations which are directed toward obtaining the granting to
SINOFRESH of a satisfactory Prime Grant or Contract for the
services and programs described herein.
b. All relations with the prospective client will be conducted by
SINOFRESH. LRRI shall make no representations, accept no changed
requirements, nor conduct any negotiations unless specifically
directed to do so by SINOFRESH.
4. If SINOFRESH is awarded a grant or contract for the services described
above, SINOFRESH will not subsequently negotiate and award a subcontract
consistent with the requirements of the prime contract to other than LRRI for
LRRI's area of interest as described above, provided that: any resulting
subcontract will conform to Governmental procurement rules and regulations; be
subject to approval of the Government Contracting Officer; be subject to the
approval of the Parties to subcontract terms and conditions; and, contain terms
and conditions substantially similar to those contained in the prime contract.
5. Each Party to this Agreement will bear their respective costs, risks,
and liabilities incurred as a result of their obligations and efforts under this
Agreement. Neither the Prime Contractor nor the Subcontractor shall have any
right to reimbursement, payment, or compensation of any kind from the other
during the period prior to the award and execution of any resulting subcontract
between the Prime Contractor and the Subcontractor for the work described in
this Agreement.
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6. SINOFRESH may, without liability to LRRI, disclose to the Government any
information received from LRRI to the extent necessary for proposal preparation,
evaluation, negotiation and contract performance. If such information bears any
restrictive notice, such restrictive notice will be retained on any information
so disclosed to the Government.
7.
a. In furtherance of the purposes of this Agreement, the Parties
contemplate that it may be mutually advantageous and/or
necessary to exchange confidential or proprietary information
pertaining to the intended proposal. The intent of this
Agreement is to protect any such information which either Party
elects to disclose, but not to obligate either Party to disclose
any information pertaining to the intended proposal
b. Both Parties shall not disclose to any person or persons outside
their respective companies, other than the Government of the
United States of America as hereinafter provided, nor to any
person or persons within their companies not having a need to
know for the purpose of this Agreement and the performance of
any resulting contract, any information which is submitted in
writing and designated by an appropriate stamp, marking, or
legend to be confidential or proprietary information.
c. Information exchanged by the Parties which is confidential or
proprietary to the disclosing Party will be protected by the
receiving Party as confidential or proprietary information only
if it pertains to this Request for Qualifications/Proposal; is
submitted for use in preparation of the response to the Request
for Qualifications/Proposal; is a document marked as
confidential or proprietary information to the disclosing Party,
and, is delivered to the Representative designated in lO.b.
below. Only those sheets of any document which contain
confidential or proprietary information shall be marked as
confidential or proprietary.
d. For the period of sixty months from the receipt of confidential
or proprietary information from the other Party, each Party
agrees to use confidential or proprietary information only for
the response to the Request for Qualifications/Proposal or any
resulting contract.
e. Both Parties shall take appropriate action to provide for the
safekeeping of confidential or proprietary information. If a
Party has standard practices for safeguarding its own
confidential or proprietary information of a similar nature, the
foregoing duty to exercise reasonable care shall be fulfilled by
employing those practices to protect the other Party's
confidential or proprietary information. Neither Party shall be
liable for the inadvertent or accidental disclosure of such
confidential or proprietary information, provided that it has
exercised the same degree of care as it normally exercises to
preserve its own confidential or proprietary information.
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f. Neither Party shall be liable for disclosure of any such
confidential or proprietary information if the same:
(1) was in the possession of the receiving Party prior to
its receipt from the other Party under this Agreement;
(2) is disclosed after sixty months from the date of receipt
of the information;
(3) information becomes publicly known or available through
no breach of this Agreement by the receiving Party;
(4) is disclosed by the receiving Party with the prior
written approval of the originating Party;
(5) information is acquired by the receiving Party without
notice or obligation of confidence; or
(6) information is independently developed by personnel of
the receiving Party who did not have knowledge of the
confidential or proprietary information.
g. Each Party agrees to return all proprietary documents received
from the other Party, including any copies made by the receiving
Party, within thirty (30) days after a written request is
delivered to the Representative of the receiving Party
designated in lO.b.
h. It is understood and agreed that any such confidential or
proprietary information may be disclosed to the U.S. Government
in proposals, provided the proposals and pages containing the
confidential or proprietary information bears the appropriate
restrictive legends as specified in FAR 52.2 15-12.
i. Received "proprietary information" may be used in the
performance of an awarded contract unless the disclosing Party
refuses the use of such information in writing.
j. Both Parties' obligation to protect previously exchanged
confidential or proprietary information in accordance with this
Agreement shall survive termination of this Agreement for a
period of sixty (60) months.
8. Background Intellectual Property
a. The subject matter described as which has previously been
developed by the SFHC shall be considered SFHC Background
Intellectual Property, namely the subject matter of U.S. Patent
Nos. 5,785,988; 6,083,525; and 6,344,210, U.S. Patent
Application Serial Nos. 10/303,625 and 60/511,040, including all
corresponding provisional, continuation, continuation-in-part,
continued prosecution, divisional, reissue, and reexamination
applications; and for all countries foreign to the U.S.,
including all rights of priority arising from them,
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and all the rights and privileges under any and all forms of
protection, including patents, that may be granted in said
countries foreign to the U.S. for them.
b. To the extent such rights are available, SFHC agrees to grant
LRRI, a nonexclusive license to use the above-mentioned
Background Intellectual Property in connection with
commercialization of the Project Intellectual Property, to the
extent that such use is reasonably necessary for practical,
efficient, and competitive commercialization of such Project
Intellectual Property. Such license shall be granted upon the
condition that LRRI pay SFHC a royalty, to be negotiated by the
parties, on net sales or leases made by or under the authority
of LRRI of any product or service that embodies, or the
manufacture or normal use of which entails, the use of all or
any part of such SFHC Background Intellectual Property.
9. Project Intellectual Property
a. "Project Intellectual Property" means the legal rights to
Subject Inventions as defined in 37 C.F.R. 401, and any
resulting patent applications or patents, as well as any
software first conceived of and reduced to practice during the
performance of this SBIR or STTR Agreement.
b. Project Intellectual Property shall be jointly owned by the
Parties, with each Party having an undivided interest therein.
SFHC shall have the first option to perfect the Parties' rights
in jointly made Project Intellectual Property, with LRRI
retaining a right to review and provide comments on any and all
filings, unless agreed otherwise in writing.
c. The Parties agree to disclose to each other, in confidence and
in writing, each and every Subject Invention and any software
created as part of the SBIR or STTR project. The Parties
acknowledge that they will disclose Subject Inventions to each
other within two (2) months after their respective inventor(s)
first disclose the invention in writing.
d. Each Party hereto may use Project Intellectual Property of the
other non-exclusively and without compensation in connection
with research or development activities for this SBIR or STTR
project, including inclusion in SBIR or STTR project reports to
the Agency and proposals to the Agency for continued funding of
this SBIR or STTR project through additional phases.
e. All written disclosures of such inventions shall contain
sufficient detail of the invention and identification of any
statutory bars and shall be marked confidential.
f. SFHC will have an option to commercialize the Project
Intellectual Property subject to any rights of the Government or
other sponsors as follows:
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(1) SFHC will have an exclusive option to negotiate an
exclusive worldwide license to such Project Intellectual
Property (whether solely owned by LRRI or jointly owned
by LRRI and SFHC) for an option period of twelve (12)
months after such Project Intellectual Property has been
reported to SFHC. During the period of such option, SFHC
will pursue and maintain any patent protection for any
Subject Invention requested by SFHC. Except with the
written consent of SFHC, LRRI will not voluntarily
discontinue the pursuit and maintenance of any US and or
international patent protection during this option
period. SFHC may terminate such option at will by giving
written notice to LRRI, and by so doing shall relinquish
all licensing, but not ownership, rights to said Project
Intellectual Property.
(2) At any time prior to the expiration or termination of an
option, SFHC may exercise such option by giving written
notice to LRRI, whereupon the Parties will promptly, and
in good faith, enter into negotiations for SFHC's
license of LRRI's rights in the Project Intellectual
Property. The terms of such license shall be consistent
with SFHC's policies and Governmental regulations and
will include but not be limited to: (i) payment of
reasonable royalties to LRRI on sales or leases of
products or services which embody, or the development,
manufacture, use, or sale of which involve employment
of, the Project Intellectual Property; (ii)
reimbursement by SFHC of expenses incurred by LRRI in
seeking and maintaining patent protection for the
Project Intellectual Property; and (iii) due diligence
milestones.
(3) Where more than one royalty might otherwise be due for
any product or service under a license pursuant to this
Agreement, the Parties shall in good faith negotiate to
ameliorate any effect thereof that would threaten the
commercial viability of the affected products or
services.
10. Patent Prosecution and Commercialization for Jointly Owned Project
Intellectual Property
a. Although the Parties agree that each has responsibility for
management of Project Intellectual Property produced by its
employees in accordance with appropriate government regulations
and its own institutional policy, it is recognized that more
effective enablement of commercialization of jointly owned
Project Intellectual Property will require a unified approach by
the Parties. Therefore, if the SBIR or STTR program is funded,
the following procedural framework will be put into place for
the handling of jointly owned Project Intellectual Property.
(1) Shortly following the identification of any jointly
owned Project Intellectual Property, technical and
patent representatives of each Party will discuss
details of handling such jointly owned Project
Intellectual Property.
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(2) SFHC shall be designated to take primary responsibility
for protection of such jointly owned Project
Intellectual Property. If patent applications are to be
filed, SFHC will ensure that LRRI is kept informed and
has an opportunity to review and comment on patent
prosecution.
(3) SFHC shall have option rights as outlined in Section
9.f.(1) and (2) for such jointly owned Project
Intellectual Property.
(4) In the event that SFHC decides not to exercise its
option to LRRI's ownership interest, SFHC and LRRI may
agree to undertake a cooperative licensing effort. At
that point, one Party shall be designated the Lead Party
to take primary responsibility for protection of such
jointly owned Project Intellectual Property. The Lead
Party shall assume sole responsibility for identifying
potential commercial licensees and for negotiating the
terms of commercial license agreements. All costs
associated with filing, prosecuting, and maintaining
intellectual property rights associated with the Project
Intellectual Property shall be shared equally among the
Parties. The Lead Party may either invoice the other
Party for its share of the such costs or such costs may
be deducted from any revenues generated by commercial
license agreements prior to sharing of such revenues
between the Parties as set forth herein. Such license
agreements will require the approval of both Parties,
and such approval shall not be unreasonably withheld.
Any revenues generated by such license agreements after
deduction of any out-of-pocket patent prosecution
expenses, and fifteen percent (15%) administrative
overhead in favor of the Lead Party, shall be divided
equally between the Parties no less often than once per
year. Each Party shall be solely responsible for
calculating and distributing to its respective
inventor(s) any share of net revenues payable to such
inventor(s) in accordance with such Party's
institutional policy.
11. LRRI agrees not to issue a news release, public announcement,
advertisement, or any other form of publicity concerning the resulting
subcontract, or otherwise in connection with this Agreement without obtaining
the prior written approval of SINOFRESH. Such approval shall not be unreasonably
withheld and shall be directed to the individual specified in 12.c. below.
12.
a. All communications relating to this Agreement shall be directed
to the specific person designated to represent SINOFRESH and
LRRI hereunder. Each of the Parties shall appoint one technical
and one administrative representative to receive such
communications. These appointments shall be kept current by the
Parties during the period of this Agreement. Communications
which are not properly directed to the persons designated to
represent SINOFRESH and LRRI shall not be binding upon SINOFRESH
and LRRI, respectively.
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b. All technical notices shall be addressed to:
Xxxxxxxx Respiratory Research Institute SinoFresh HealthCare, Inc.
Attention: Xxxxx Xxxxxx Attention: Xxxxxxx X. Xxxx, M.D.
0000 Xxxxxxxxxx Xxxxx, SJB. 000 Xxxx Xxxxxx Xx.
Xxxxxxxxxxx, XX 00000 Xxxxxxxxx, XX 00000
Phone: 000-000-0000 Phone: 000-000-0000
Fax: 000-000-0000 Fax:000-000-0000
E-mail: xxxxxxx@xxxx.xxx E-mail: xxxxxxxx@xxxxxxxxx.xxx
c. All contractual/financial/administrative notices shall be
addressed to:
Xxxxxxxx Respiratory Research Institute SinoFresh HealthCare, Inc.
Attention; Xxxxxxxx X. Xxxxxx Attention: Xxxxxx X. XxXxxx
0000 Xxxxxxxxxx Xxxxx, X.X. 000 Xxxx Xxxxxx Xx.
Xxxxxxxxxxx, XX 00000 Xxxxxxxxx, XX 00000
Phone: 000-000-0000 Phone: 000-000-0000
Fax: 000-000-0000 Fax: 000-000-0000
E-mail: xxxxxxx@xxxx.xxx E-mail: xxxxxxxxxxxxx@xxxxxxxxx.xxx
13. New Mexico Law shall be the governing law for purposes of this
Agreement.
14. This Agreement shall be binding upon and inure to the benefit of the
Parties and their respective successors and assigns; provided, however, that
neither Party may assign or transfer this Agreement without the prior written
consent of the other Party. This consent shall not be unreasonably withheld.
15. If any provision of this Agreement is determined to be invalid or
unenforceable under applicable law or regulation, all remaining provisions
hereof shall be given full force and effect.
16. The Parties hereby agree that the contents of this Agreement may be made
known to the Government. This Agreement is not intended to prejudice the
Government in any way with respect to any action that it may decide to take in
procuring services on the basis of competitive bids or the awarding of contracts
on a split or other type basis.
17.
a. Final price or prices to be proposed to the Government for the
projects will be determined by SINOFRESH in the exercise of its
sole discretion and may be established independently of, and
without consultation with, Subcontractor. SINOFRESH shall not be
required to disclose the final prices to the Subcontractor.
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b. Any such exercise by SINOFRESH of its sole discretion in
establishing the final price to be proposed to the Government or
in negotiations with the Government, shall in no way be binding
upon LRRI nor shall it be in any way construed as changing the
final prices or prices which LRRI shall have proposed to
SINOFRESH for their efforts described herein.
18.
a. This Agreement shall apply only to those proposals relating to
this Project and shall not be considered applicable to any other
effort undertaken by SINOFRESH or LRRI either jointly or
separately.
b. This Agreement is not intended to constitute, create, give
effect to, or otherwise recognize a joint venture, partnership,
or formal business organization of any kind between SINOFRESH
and LRRI. The rights and obligations of the Parties shall be
only those expressly set forth herein as Prime Contractor and
Subcontractor.
c. At all times, SINOFRESH and LRRI shall remain independent
contractors, each responsible for its own employees.
19. This Agreement shall remain in effect until the first of the following
shall occur:
a. Cancellation of the procurement by the U.S. Government.
b. Notification by the U.S. Government that LRRI is not acceptable
for the efforts specified.
c. Award of the prime contract to a company other than SINOFRESH.
d Negotiation and award by SINOFRESH of a subcontract or
procurement to LRRI in accordance with this Agreement.
e. Mutual agreement by the Parties.
20.
a. During the period this Agreement is in effect, both Parties
agree not to solicit for employment, hire, or otherwise retain
any technical or professional employees of the other Party
assigned to work on the contract/subcontract. Procurement,
without the prior written approval of the Party whose employee
is being considered for an offer or hire, is prohibited during
the period this Agreement is in effect, with the exception of
those LRRI incumbent professionals agreed to become SINOFRESH
employees.
b. Both Parties agree to include the intent of this Item 20 in any
resulting subcontractual agreement between the Parties.
21. By signing this Agreement, LRRI confirms and certifies that no attempt
has been made
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by SINOFRESH to induce LRRI to submit or not to submit proposals to the
Government.
22. This Agreement sets forth the entire understanding of the Parties
regarding the subject matter herein, and supersedes all previous arrangements or
understanding between the Parties relating thereto. Any waiver by a Party of a
right or remedy hereunder on one occasion shall not be deemed a waiver of such
right or remedy on any other occasion, or of any other right or remedy.
23. The effective date hereof shall be the date that this Agreement was
accepted and executed by SINOFRESH as shown below.
EXECUTED BY:
Xxxxxxxx Respiratory Research SinoFresh HealthCare, Inc.
By: /s/ XXXXXXXX X. XXXX By: /s/ P. XXXXXX XXXXXX
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Name: Xxxxxxxx X. Xxxx Name: P. Xxxxxx Xxxxxx
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Title: Chief Operating Officer Title: Vice President of R & D
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Date: 4/29/04 Date: 4/30/04
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