EXHIBIT 10.24
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Inter Institutional Agreement
SKI/Southern
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INTER-INSTITUTIONAL AGREEMENT
(SK#3294)
Effective on the ________ day of __________ , 1998 (the "Effective
Date"),
XXXXX-XXXXXXXXX INSTITUTE FOR CANCER RESEARCH, a not-for-profit
corporation organized and existing under the laws of the State of New York, and
having a place of business located at 0000 Xxxx Xxxxxx, Xxx Xxxx, Xxx Xxxx 00000
(hereinafter "SKI") and
SOUTHERN RESEARCH INSTITUTE, a not-for-profit corporation organized
under the laws of the State of Alabama and having a place of business located at
0000 Xxxxx Xxxxxx Xxxxx, X.X. Xxx 00000, Xxxxxxxxxx, Xxxxxxx 00000 (hereinafter
"Southern"),
hereinafter collectively referred to as the "Parties, or individually
as a "Party"
in consideration of the mutual covenants contained herein, AGREE AS
FOLLOWS:
ARTICLE 1
BACKGROUND & DEFINITIONS
s.1.1 The Parties to this agreement each have patents and/or patent
applications relating to 2'-Fluoro-Arabinofuranosyl Purine Nucleoside
technology including specific compounds, the synthesis of such
compounds, and uses of such compounds as therapeutic treatments for
cancer and other disease conditions, including:
a. "SKI Patents" defined as compounds 3,4, 5 & 6 of claim 2 and
compound 2 of claim 3 of U.S. Patent No. 4,751,221, issued
June 14, 1988 entitled, 2'-Fluoro-Arabinofuranosyl Purine
Nucleosides, and claim 1 of U.S. Patent No. 4,918,179 issued
April 17, 1990 entitled 2'-Fluoro-Arabinofuranosyl Purine
Nucleosides, and any conversions, continuations,
continuations-in-part, divisionals, foreign equivalents,
reissues, or other derivatives of these patents and patent
applications and matters that are the subject of these patents
and patent applications, (hereinafter referred to as "SKI
Patents"); and
b. "Southern Patents" defined as U.S. Patent 5,034,518 issued
July 23, 1991 entitled, 2'-Fluoro-9-(2-Deoxy-2-Fluoro-(Beta)-D
Arabinofuranosyl) Adenine Nucleosides, U.S. Patent 5,384,310
issued January 24, 1995 entitled 2'-Fluoro-2
Haloarabinoadinosines and Their Pharmaceutical Compositions,
and U.S. Patent 5,661,136 issued August 26, 1997 entitled
2-halo-2'-fluoro ARA adenosines as antinoplastic agents, and
any conversions, continuations, continuations-in-part,
divisionals, foreign equivalents, reissues, or other
derivatives of these patents and patent applications and
matters that are the subject of these patents and patent
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applications (hereinafter referred to as "Southern Patents").
s.1.2 "Technology" shall include Southern Patents and those SKI Patents
(listed in Exhibit B of this Agreement) to the extent necessary to
enable the practice of Southern Patents and SKI Patents issued in
countries in which Southern Patents are not issued or pending.
s.1.3 Inventions described in SKI Patents were developed at SKI by Drs.
Xxxxxxx X. Xxxxxxxx, Xxxxx X. Xxx, and Xxxx X. Xxx, and inventions
described in Southern Patents were developed at Southern by Drs. Xxxx
X. Xxxxxxxxxx and Xxxx X. Xxxxxxx, III (hereinafter collectively
referred to as "Inventors").
s.1.4 The Parties desire to provide for the development, utilization, and
commercialization of the Technology through licensing activities or
codevelopment activities.
s.1.5 "Confidential Information" means (i) any know-how, information or
material in tangible form that is marked as confidential or proprietary
by the furnishing party at the time it is delivered to the receiving
party, and (ii) information that is disclosed orally, provided that
such information is specifically identified by the disclosing party as
Confidential Information; and provided further that any information
that is disclosed orally be confirmed in written summary form by the
disclosing party within thirty (30) days. The party who receives
Confidential Information from the other party is referred to in this
Agreement as the "Recipient", and the disclosing Party is referred to
as the "Discloser".
ARTICLE 2
OWNERSHIP
s.2.1 The Parties have or shall have separate agreements with their
respective Inventors, whereby their respective Inventors agree to
assign all right, title and interest in Inventions to their
institutions, and whereby the respective Inventors agree to cooperate
with and assist their institutions in preparing, filing, prosecuting
and maintaining patent applications and patents relating to Inventions
throughout the world.
s.2.2 Each Party shall explicitly retain their respective rights and
ownership it may have in Technology.
ARTICLE 3
COMMERCIALIZATION
s.3.1 The Parties shall each cooperate to achieve the commercial utilization
and exploitation of Technology and shall keep each other informed of
all requests by third Parties concerning commercial utilization or
exploitation.
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s.3.2 The Parties warrant and represent that with respect to Technology they
are under no obligation to anyone other than the inventors,
contributors, and funding agencies.
s.3.3 Except as otherwise expressly set forth in this Agreement, each Party
MAKES NO REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY KIND, EITHER
EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED TO WARRANTIES OF
MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, VALIDITY OF PATENT
RIGHTS CLAIMS, ISSUED OR PENDING, AND ABSENSE OF INFRINGEMENT OF OR BY
RIGHTS OF OTHERS.
s.3.4 Each Party is unaware of any claims asserted against them by any third
parties with respect to patent infringement or any other type of
liability relevant to licensing of the Technology, which have not been
disclosed to the other Party as of the Effective Date of this
Agreement.
ARTICLE 4
GRANTS
s.4.1. Upon execution of the codevelopment agreement between Southern and
Eurobiotech Group, Inc. (hereinafter "Eurobiotech") shown in Exhibit A
(hereinafter "Eurobiotech Agreement") by both Southern and Eurobiotech,
SKI will have been deemed to have granted to Southern an exclusive,
worldwide license to SKI's rights in the Technology, with the right to
sublicense, to the extent necessary for Southern to fulfill its
obligations under its license of the Technology to Eurobiotech Group,
Inc.
s.4.2 Both SKI and Southern are free to use the Technology for their internal
purposes in any way they deem fit, without informing the other party.
ARTICLE 5
SHARING OF PROCEEDS
s.5.1 All proceeds received by Southern, including but not limited to cash or
common stock payments, from the licensing or other commercial
utilization of any portion of Technology pursuant to Articles 3 and 4,
excluding fees for research & development, shall be apportioned
seventy-five percent (75%) to Southern and twenty-five percent (25%) to
SKI until the termination of Eurobiotech Agreement.
s.5.2 If Southern receives from Eurobiotech anything of value in lieu of cash
payments, Southern shall share such payment with SKI according to
Article 5.1, based on the fair market value of such payment on the date
received by Southern, unless SKI waives in writing such payment
obligation in part or in full.
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s.5.3 Southern agrees to distribute to SKI it's share of royalty or other
income in accordance with this Agreement, within thirty (30) days of
receiving such payments. If distribution requires having shares of
stock be put into SKI's name, Southern agrees to initiate such
procedure within fifteen (15) days of receipt of such stock shares.
Such payments shall be accompanied by a report from each licensee
detailing the calculation of royalties or milestone payment being paid.
Such payments shall show "Payment under Contract SK# 3294" on the check
stub, and shall be sent to:
Memorial Xxxxx-Xxxxxxxxx Cancer Center
Office of Industrial Affairs
0000 Xxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Failure to pay such sums within thirty (30) days of receipt from
licensee shall be considered a material breach of this Agreement and,
after due notice according to Article 12, is sufficient grounds for
termination of this Agreement with the non-paying Party.
s.5.4 Southern shall keep full, true and accurate records containing all
particulars that may be necessary for the purpose of showing the
proceeds paid. For the term of this Agreement, upon receipt of thirty
(30) days prior written notice, Southern shall allow SKI or its agents
to inspect such records for the purpose of verifying Southern's payment
statements or compliance in other respects with this Agreement. Should
such inspection lead to the discovery of a greater than five percent
(5%) discrepancy in reporting to SKI's detriment, Southern agrees to
pay the full cost of such inspection.
s.5.5 Southern agrees to copy SKI promptly with all material correspondence
between Southern and Eurobiotech and to consult with Xxxxx-Xxxxxxxxx on
all Southern decisions which may cost an estimated $1000 or more, or
which may affect the value of the Technology or the income from the
Technology by an estimated $1000 or more.
ARTICLE 6
PATENT MANAGEMENT & EXPENSES
s.6.1 SKI shall be responsible for preparing, filing, prosecuting and
maintaining SKI Patents. As of the Effective Date of the Eurobiotech
Agreement, SKI shall maintain SKI Patent Rights until the expiration of
such rights or the termination of this Agreement, whichever occurs
first. SKI agrees to copy Southern on patent correspondence relating to
SKI Patent Rights.
s.6.2 Southern shall be responsible for preparing, filing, prosecuting and
maintaining Southern Patents. As of the Effective Date of the
Eurobiotech Agreement, Southern shall maintain Southern Patent Rights
until the expiration of such rights or the termination of this
Agreement, whichever occurs first. Southern agrees to copy SKI on
patent correspondence relating to Southern Patent Rights.
s.6.3 All costs and expenses associated with preparing, filing, prosecuting
and maintaining
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all patent applications and patents relating to Technology shall be
borne by the respective Party until the execution of the Eurobiotech
Agreement. Upon signing the Eurobiotech Agreement, Southern shall be
responsible for and pay all future costs and expenses incurred by SKI
for the preparation, filing, prosecution, issuance, and maintenance of
the SKI Patents. SKI or its outside patent counsel will submit invoices
to Southern for such costs and expenses, and Southern shall pay the
invoiced amount within sixty days (60) of the date of such invoice.
s.6.4 Failure to pay patent expenses shall be considered a material breach of
contract and, after due notice according to Article 12, is sufficient
grounds for termination of this Agreement with the non-paying Party.
Article 7
Interest
s.7.1 Southern shall pay to SKI interest on any amounts not paid when due.
Such interest will accrue from the fifteenth (15th) day after the
payment was due at a rate two percent (2%) above the daily prime
interest rate, as determined by The Chase Manhattan Bank (N.A.) or its
successor entity, on each day the payment is delinquent, and the
interest payment will be due and payable on the first day of each month
after interest begins to accrue, until full payment of all amounts due
Xxxxx-Xxxxxxxxx is made.
s.7.2 SKI's rights to receive such interest payments shall be in addition to
any other rights and remedies available to SKI.
s.7.3 If the interest rate required in this subsection exceeds the legal rate
in a jurisdiction where a claim for such interest is being asserted,
the required interest rate shall be reduced, for such claim only, to
the maximum interest rate allowable in the jurisdiction.
ARTICLE 8
CONFIDENTIALITY
s.8.1 During the term of this Agreement and for a period of five years
thereafter, the receiving party (hereinafter "Recipient") shall retain
in confidence, and shall not disclose to a third party without the
express written consent of the disclosing party (hereinafter
"Discloser"), any Confidential Information disclosed under this
Agreement, except for that Confidential Information which:
a) was in the possession or control of the Recipient before it was
received, as shown by written records;
b) is available, or becomes available, to the public through no fault
of Recipient or of any of Recipient agents or employees;
c) is rightfully received from sources not bound by a similar
confidentiality agreement
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with the Discloser, or
d) is independently developed by Recipient without knowledge or use of
the Confidential Information, as proven by competent evidence.
s.8.2 After receipt of written consent from Discloser to disclose
Confidential Information to a third party, and prior to such
disclosure, Recipient hereto shall obtain the written agreement of such
third party, who is not otherwise bound by fiduciary obligations to
Recipient, to hold in confidence and not make use of Confidential
Information for any purpose other than those permitted by this
Agreement. Recipient shall notify the other promptly upon discovery of
any unauthorized use or disclosure of the Discloser's Confidential
Information.
s.8.3 Nothing in this Agreement shall preclude SKI or Southern from making
reports or disclosures required by the National Institutes of Health or
any other organization which provided funds used for the research
relating to Technology, or disclosing Confidential Information to the
minimum extent required to comply with court orders, regulations or
statutes.
ARTICLE 9
PATENT INFRINGEMENT
s.9.1 If any Party becomes aware of any infringement of a patent covered by
this Agreement, it shall notify and discuss with the other Party what
action is required to terminate such infringement. Each Party shall
have the option of taking action against any third party infringer of
their respective patent rights. If both Parties agree to act against
the infringement jointly, they shall share equally in the expenses and
disbursements in connection with such action and shall also share
equally all monies received as a result of such action. If one Party
does not agree to join in the action against infringement, the other
Party will have the right to prosecute a patent infringement action at
their sole expense, and shall be entitled to retain all monies
recovered.
s.9.2 If the Eurobiotech Agreement has been executed at the time the Parties
become aware of any such infringement, Eurobiotech may join in such
action against any third party infringer as specified in the
Eurobiotech Agreement. In that event one or both Parties may elect not
to join in the action against the third party infringer as specified in
the Eurobiotech Agreement without being penalized according to Article
9.1.
ARTICLE 10
INVENTORS SHARES
s.10.1 This Agreement does not preclude inventors from receiving from their
respective institutions their share of royalty income and such other
benefits, if any, specified under the respective patent policies of
each of the Parties or under such other
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agreements that may exist between inventors and their respective
institutions. No Party shall be responsible for the other Parties'
obligations to their inventors.
ARTICLE 11
NON-USE OF NAMES
s.11.1 Neither Party shall use the names of the other Party, nor any of its
Affiliates, employees, nor any adaptation thereof, in any advertising,
promotional or sales literature without prior written consent obtained
from the other Party in each case.
ARTICLE 12
TERM AND TERMINATION
s.12.1 This Agreement shall remain in effect from the Effective Date until the
last to occur of: (a) the expiration of the last to expire of SKI
Patents and Southern Patents, (b) the expiration of the Eurobiotech
Agreement, (c) termination according to s.12.2 of this Agreement, or
(d) by mutual agreement of the parties expressed in writing.
s.12.2 Failure by any Party to comply with any of the material obligations and
conditions contained in this Agreement shall entitle the other Party to
give written notice requiring it to cure such default. If such default
is not cured within sixty (60) days after receipt of such notice, the
notifying Party shall be entitled (without prejudice to any of its
other rights conferred on it by this Agreement) to terminate this
Agreement with the defaulting Party by giving notice to take effect
immediately.
s.12.3 Provisions of Article 8, and any other obligation incurred by a Party
during the term of this Agreement shall survive termination.
ARTICLE 13
SEVERABILITY
s.13.1 If one or more of the provisions of this Agreement shall be held to be
invalid, illegal, or unenforceable in any respect, the validity,
legality, and enforceability of the remaining provisions shall not in
any way be affected or impaired thereby, provided that the intent of
the Parties in entering into the Agreement is not materially affected
thereby.
ARTICLE 14
NOTICES
s.14.1 Any communication required or permitted under this Agreement shall be
made in writing and sent to such Party, postage prepaid, addressed to
it as set out below, or as it shall subsequently designate by notice to
the other Party. However, if the communication involves an alleged
breach of this Agreement or a cancellation of this
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Agreement, such communication shall be sent by registered or certified
mail or other means providing proof of delivery, and also communicated
by telephone as promptly as possible. Communications or notices shall
be addressed as follows:
In the case of SKI, the communication or notice shall be addressed to:
Xxxxx-Xxxxxxxxx Institute for Cancer Research
0000 Xxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Attention: Xxxxx X. Xxxxx
Senior Vice President
Research Resources Management
In the case. of Southern, the communication or notice shall be
addressed to:
Southern Research Institute
0000 Xxxxx Xxxxxx Xxxxx
X.X. Xxx 00000
Xxxxxxxxxx, Xxxxxxx 00000-0000
Attention: President
ARTICLE 15
GOVERNING LAW
s.15.1 This Agreement shall be governed by and construed in accordance with
the laws of the State of New York.
ARTICLE 16
ENTIRE AGREEMENT
s.16.1 This instrument contains the entire Agreement between the Parties
hereto and supersedes all prior Agreements with respect to Technology.
Any modifications of this Agreement to be effective must be in writing
and signed by all Parties.
ARTICLE 17
INDEMNIFICATION
s.17.1 Southern, and any sublicensee of rights granted under this Agreement,
including Eurobiotech, shall at all times during the term of this
Agreement and thereafter, indemnify, defend and hold SKI, its Board of
Managers, officers, employees and affiliates, harmless against all
claims and expenses, including legal expenses and reasonable attorneys'
fees, arising out of the death of or injury to any person or persons or
out of any damage to property and against any other claim, proceeding,
demand, expense and liability of any kind whatsoever resulting from the
production, manufacture, sale, use, lease, consumption or advertisement
of the Licensed
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Product(s) and/or Licensed Process(es) or arising from any obligation
of LICENSEE hereunder, except for any injuries, losses or damages that
specifically result from the gross negligence or willful misconduct of
SKI.
ARTICLE 18
MISCELLANEOUS PROVISIONS
s.18.1 Each Party hereby acknowledges that the rights and obligations of this
Agreement are subject to the laws and regulations of the United States
relating to the export of products and technical information. Without
limitation, each Party shall comply with all such laws and regulations.
s.18.2 This Agreement shall not be construed to grant any license or other
rights to either party in any patent rights, know-how, or other
technology of the other party, except as expressly provided in this
Agreement.
s.18.3 Neither party shall assign its rights or obligations under this
Agreement, in whole or in part, by operation of law or otherwise,
without the prior written consent of the other, except to successor to
all or substantially all of the party's assets or business operations
relating to the intellectual property that is the subject of this
Agreement. Any purported assignment in violation of this article shall
be null and void.
s.18.4 The waiver by either party hereto of any right hereunder or of the
failure to perform or of a breach by the other party shall not be
deemed a waiver of any other right hereunder or of any other breach or
failure by said other party whether of a similar nature or otherwise.
s.18.5 This Agreement may be executed in two or more counterparts, each of
which shall be deemed an original, but all of which together shall
constitute one and the same instrument.
IN WITNESS WHEREOF, the Parties have used this Agreement to be duly executed as
of the Effective Date.
Xxxxx-Xxxxxxxxx Institute for Cancer Southern Research Institute
Research
By: By:
-------------------------------- ---------------------------
Name: Xxxxx X. Xxxxx Name:
Title: Senior Vice President Title:
Research Resources Management
Date: Date:
------------------, 1988 ------------------, 1988
Inter Institutional Agreement
SKI/Southern
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EXHIBIT B
SKI Patents
United States Patent Number 4,751,221 issued June 14, 0000
Xxxxxx Xxxxxx Patent Number 4,918,179 issued April 17, 1990
Canadian Patent Number 1,271,192 issued July 3, 1990
EPO Patent Number 0219829 issued December 30, 1992 in Germany, France,
and the United Kingdom
Japanese Patent Number 0000000 issued December 5, 0000
Xxxxxxxx Xxxxxxx
Xxxxxx Xxxxxx Patent Number 5,034,518 issued July 23, 0000
Xxxxxx Xxxxxx Patent Number 5,384,310 issued January 24, 0000
Xxxxxx Xxxxxx Patent Number 5,661,136 issued August 26, 1997
European Patent Number 0473708 issued January 15, 1997 in France,
Germany, Great Britain, Italy, Netherlands, Spain, Sweden, and
Switzerland
European Patent Application Serial Number 92912163.0 filed May 7, 1992,
designating Austria, Belgium, Germany, Greece, France, Italy,
Luxembourg, Monaco, Netherlands, Spain, Sweden, Switzerland, and
the United Kingdom.
Japanese Patent Application Serial Number 2-508789 filed May 23, 1990
Japanese Patent Application Serial Number500121/1993 filed May 7, 1992
Canadian Patent Application Serial Number 2,102,782 filed May 7, 1992
