EXHIBIT 10.40
CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION. ASTERISKS DENOTE SUCH OMISSIONS.
AGREEMENT FOR THE SPONSORSHIP OF A RESEARCH PROGRAMME
THIS AGREEMENT dated April 1, 2001 is made BETWEEN:
(1) THE CHANCELLOR, MASTERS AND SCHOLARS OF THE UNIVERSITY OF OXFORD, whose
administrative offices are at Xxxxxxxxxx Xxxxxx, Xxxxxx XX0 0XX ("the
University") and
(2) V.I. TECHNOLOGIES, INC. of Watertown, Massachusetts, USA whose registered
office of business is at 000 Xxxxxxxx Xxxxxx, Xxxxxxxxx, Xxxxxxxxxxxxx,
00000 XXX ("the Sponsor").
1. THE PROJECT
1.1 The Project shall be the programme of work entitled "Exploiting the
Specificity of Prion Protein Aptamers" which is described in and attached as the
First Schedule to this Agreement; and any modifications, deletions or expansions
approved in writing by both parties.
1.2 The Project will be conducted in laboratories of the University, under
the direction and supervision of Xx. Xxxxxxx Xxxxx or his successor under clause
6.2. In this Agreement, the expression "the Principal Investigator" means Xx.
Xxxxxxx Xxxxx or such successor.
1.3 The Project shall run for the period ("the Project Period") from the
date on which the first researcher hired by the University to work on the
Project takes up his or her appointment, such appointment to be made within 6
months of signature of this agreement, until the third anniversary of that date.
1.4 The University will use all reasonable endeavours to provide adequate
facilities; to obtain any requisite materials, equipment and personnel; and to
carry out the Project diligently within the scope allowed by the Sponsor's
funding. Although the University will use all reasonable endeavours to perform
the research described in the First Schedule, the University does not undertake
that work carried out under or pursuant to this Agreement will lead to any
particular result, nor is the success of such work guaranteed.
1.5 The University will use all reasonable endeavours to provide the
Sponsor with quarterly written reports summarising the progress of work under
the Project with the first written report to be provided by June 15, 2001.
2. FUNDING BY THE SPONSOR
2.1 The Sponsor will make payments to the University towards the cost of
the Project on the dates and in the amounts set out in the Second Schedule to
this Agreement. The figures in the Second Schedule incorporate the University's
best estimates of the following items details of which are attached to this
Agreement as the Third Schedule:
2.1.1 wages, salaries and superannuation payments attributable to the
Project (making allowance for nationally agreed pay awards); and
2.1.2 national insurance contributions and sales, excise and other
taxes (excluding income taxes), which are attributable to the Project and
imposed on the University (directly or indirectly) by national or local
authorities.
If the actual cost of the above items exceeds the University's
estimates within reasonable costs, the Sponsor will reimburse the
excess to the University within thirty (30) days after receipt of
invoice.
2.2 If expenditure is itemized in the Second Schedule by reference to
stated categories, the University may vire between those categories in response
to changes in the research needs of the Project; provided that the amounts due
from the Sponsor are not increased as a result.
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2.3 Except as otherwise provided by agreement in writing, as between the
Sponsor and the University the full and unencumbered title to all equipment
purchased or constructed using funds provided by the Sponsor shall vest in the
University.
3. CONFIDENTIALITY AND PUBLICATION PROCEDURES
3.1 For the purpose of this clause, "Confidential Information" means all
and any specifications, drawings, circuit diagrams, tapes, discs and other
computer-readable media, documents, information, techniques and know-how which
either:
3.1.1 are disclosed by one party to the other in connection with the
Project and marked or labeled "Proprietary", "Confidential" or "Sensitive" by
the disclosing party at the time disclosure; or
3.1.2 are written, prepared or generated in the course of, and as
part of, the Project.
3.2 Subject to clauses 3.4 and 3.5, each party will use all reasonable
endeavours not to disclose to any third party Confidential Information within
clause 3.1.1, and not to make to any third party any disclosure of Confidential
Information within clause 3.1.2 which would prejudice the rights of the other
party under this Agreement.
3.3 Neither party shall incur any obligation under clause 3.2 with respect
to information which:
3.3.1 is known to the receiving party before the Effective Date, and
not impressed already with any obligation of confidentiality to the disclosing
party; or
3.3.2 is or becomes publicly known without the fault of the receiving
party; or
3.3.3 is obtained by the receiving party from a third party in
circumstances where the receiving party has no reason to believe that there has
been a breach of an obligation of confidentiality owed to the disclosing party;
or
3.3.4 is independently developed by the receiving party; or
3.3.5 is approved for release in writing by an authorised
representative of the disclosing party; or
3.3.6 the receiving party is specifically required to disclose in
order to fulfill an order of any Court of competent jurisdiction.
3.4 The Project will form part of the actual carrying out of a primary
charitable purpose of the University; that is, the advancement of education
through teaching and research. There must therefore be some element of public
benefit arising from the Project, and this is secured through the following sub-
clauses.
3.4.1 This Agreement shall not prevent or hinder registered students
of the University from submitting for degrees of the University theses based on
results obtained during the course of work undertaken as part of the Project; or
from following the University's procedures for examinations and for admission to
postgraduate degree status.
3.4.2 In accordance with normal academic practice, all employees,
students, agents or appointees of the University (including those who work on
the Project) shall be permitted:
3.4.2.1 following the procedures laid down in clause 3.5,
to publish results obtained during the course of work undertaken as part of the
Project; and
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3.4.2.2 in pursuance of the University's academic
functions, to discuss work undertaken as part of the Project in internal
seminars, and to give instruction within the University on questions related to
such work.
3.5 The University will use all reasonable endeavours to submit results
intended for publication to the Sponsor in writing not less than sixty (60) days
in advance of the submission for publication. The Sponsor may required the
University to delay submission for publication if in the Sponsor's opinion such
delay is necessary in order to seek patent or similar protection for the
results. A delay imposed on submission for publication as a result of a
requirement made by the Sponsor shall not last longer than is absolutely
necessary to seek the required protection; and therefore shall not exceed three
(3) months from the date of receipt of the results by the Sponsor, although the
University will not unreasonably refuse a request from the Sponsor for
additional delay in the event that property rights would otherwise be lost. The
University agrees to delete any Sponsor confidential information from the
publication upon request by Sponsor. Notification of the requirement for delay
in submission for publication must be received by the University within thirty
(30) days after the receipt of the results by the Sponsor, failing which the
University and the Principal Investigator shall be free to assume that the
Sponsor has no objection to the proposed publication.
4. INTELLECTUAL PROPERTY RIGHTS
4.1 All intellectual property arising from the conduct of the Project by
the University ("the Arising Intellectual Property") shall be the property of
the University. The University and those working on the Project shall have the
irrevocable right to use the Arising Intellectual Property for academic and
research purposes.
4.2 Subject to clause 4.1, and to the Sponsor calling for (in writing) and
completing a license agreement within six months after the completion of the
Project (or by such other date as the parties may agree), the University is
prepared to grant to the Sponsor an exclusive license to make, have made, use
and market products and services derived from the Arising Intellectual Property.
Under such license, the Sponsor would agree to pay to the University:
4.2.1 a reasonable proportion of all up-front, milestone and other
payments received by the Sponsor and attributable in whole or in part to Arising
Intellectual Property;
4.2.2 reasonable royalties based on the net selling prices of all
licensed products (that is to say, all products and services marketed by the
Sponsor or the Sponsor's sublicenses and derived from, produced by, or
containing Arising Intellectual Property); and
4.2.3 reasonable royalties on any cross-licensing and other non-
monetary compensation received by the Sponsor from the exploitation of Arising
Intellectual Property.
The remaining terms of the license would be settled between the
parties in good faith negotiations: if at any point they were unable
to agree, the point in dispute would be settled in London by an
arbitrator. The arbitrator would be a barrister specialising in
intellectual property law, who had no prior association with either
party or was otherwise acceptable to both parties. He would be
nominated for the purpose by the then Chairman of the General Council
of the Bar.
5. ASSIGNMENT
Neither party may assign any of its rights and obligations under this Agreement
without the prior written consent of the other.
6. TERMINATION
6.1 This Agreement may be terminated by either party for any breach of
obligations set out in this Agreement, by giving ninety (90) days' written
notice to the other of its intention to terminate. The notice shall include a
detailed statement describing the nature of the breach. If the breach is
capable of being remedied and is remedied within the ninety-day notice period,
then the termination shall not take effect. If the breach is of a nature such
that it can be fully remedied but not within the ninety day notice period, the
termination shall also not be
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effective if the party involved begins to remedy the breach within that period,
and then continues diligently to remedy the breach until it is remedied fully.
If the breach is incapable of remedy, then the termination shall take effect at
the end of the ninety-day notice period in any event.
6.2 The University agrees to notify the Sponsor promptly if at any time
Xx. Xxxxxxx Xxxxx is unable or unwilling to continue the direction and
supervision of the Project. Within sixty (60) days after such incapacity or
expression of unwillingness the University shall nominate a successor to be
Principal Investigator. However, if the successor is not acceptable to the
Sponsor, then the Sponsor may terminate this Agreement by giving ninety (90)
days' written notice to the University. Nevertheless, the Sponsor will continue
to reimburse the cost to the University of contracts of service or for services
which were made by the University before receipt of the Sponsor's notice with
personnel appointed to work on the Project. The University will exercise such
rights of termination as may be available to the University in order to bring
such contracts to an end as quickly as is lawfully possible. Reimbursement by
the Sponsor will continue until the effective date of termination of each
contract.
6.3 The expiration of the Project Period, or the termination of this
Agreement under clause 6.1 or clause 6.2, shall mean the termination with effect
from the expiry date or (as the case may be) the effective date of termination
of the obligations imposed on the parties under clauses 1 and 2. Clauses 3.1 to
3.3 shall survive for three years after the expiration of the Project Period or
(as the case may be) the termination of this Agreement. Clauses 3.5 and 4.2
shall survive for one year after expiration or termination (or for such other
period as the parties may agree under clause 4.2), unless it is a case of
repudiation by the Sponsor or of termination by the University under clause 6.1
(in which event clauses 3.5 and 4.2 shall terminate with clauses 1 and 2). The
remaining clauses shall survive indefinitely after expiration or termination.
7. LIMITATION OF LIABILITY
7.1 The University makes no representation or warranty that advice or
information given by the Principal Investigator or any other of its employees,
students, agents or appointees who work on the Project, or the content or use of
any materials, works or information provided in connection with the Project,
will not constitute or result in infringement of third-party rights.
7.2 The University accepts no responsibility for any use which may be made
of any work carried out under or pursuant to this Agreement, or of the results
of the Project, nor for any reliance which may be placed on such work or
results, nor for advice or information given in connection with them.
7.3 The Sponsor undertakes to make no claim in connection with this
Agreement or its subject matter against the Principal Investigator or any other
employee, student, agent or appointee of the University (apart from claims based
on fraud or willful misconduct). This undertaking is intended to give protection
to individual researchers: it does not prejudice any right which the Sponsor
might have to claim against the University.
7.4 The liability of either party for any breach of this Agreement, or
arising in any other way out of the subject-matter of this Agreement, will not
extend to loss of business or profit, or to any indirect or consequential
damages or losses.
7.5 In any event, the maximum liability of the University to the Sponsor
under or otherwise in connection with this Agreement or its subject matter shall
not exceed the return of all moneys provided by the Sponsor under the clause 2.1
together with interest on the balance of such moneys from time to time
outstanding, accruing from day to day at the Barclays Bank plc Base Bate from
time to time in force and compounded annually as at 31 December.
7.6 If any sub-clause of this clause 7 is held to be invalid or
unenforceable under any applicable statute or rule of law then it shall be
deemed to be omitted, and if as a result any party becomes liable for loss or
damage which would otherwise have been excluded then such liability shall be
subject to the remaining sub-clauses of this clause 7.
8. NOTICES
The University's representative for the purpose of receiving payments, report
and other notices shall until further notice be:
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The Director
Research Services Office
University Offices
Xxxxxxxxxx Xxxxxx
Xxxxxx XX0 0XX
With a copy to:
The Administrator
Xxxx School of Pathology
University of Xxxxxx
Xxxxx Xxxxx Xxxx
Xxxxxx
XX0 0XX
The Sponsor's representative for the purpose of receiving invoices, reports and
other notices shall until further notice be:
Xx. Xxxxxxxxxx Xxxxxx
V.I. Technologies, Inc.
000 Xxxxxxxx Xxxxxx
Xxxxxxxxx, Xxxxxxxxxxxxx 00000
XXX
9. GENERAL
9.1 Clause headings are inserted in this Agreement for convenience only,
and they shall not be taken into account in the interpretation of this
Agreement.
9.2 Amounts specified for payment in this Agreement are stated exclusive
of Valued Added Tax. Whenever the Sponsor is obliged to make a payment to the
University under this Agreement which attracts Value Added, sales, use, excise
or other similar taxes or duties, the Sponsor shall be responsible for paying
such taxes and duties.
9.3 If the Sponsor fails to make any payment due to the University under
this Agreement then, without prejudice to the University's other rights and
remedies consequent upon breach of this Agreement, the University may charge
interest on the balance outstanding, accruing from day to day at the base rate
from day to day at the Barclays Bank plc base rate from time to time in force
and compounded annually as at 31 December.
9.4 If the performance by either party of any of its obligations under
this Agreement (other than on obligation to make payment) shall be prevented by
circumstances beyond its reasonable control, then such party shall be excused
from performance of that obligation for the duration of the relevant event.
9.5 Nothing in this Agreement shall create, imply or evidence any
partnership or joint venture between the University and the Sponsor or the
relationship between them of principal and agent.
9.6 Neither the University nor the Sponsor shall use the name of the other
in any press release or product advertising, or for any other commercial
purpose, without the prior written consent of the other; provided, however, that
publication of the sums received from the Sponsor in the University's Annual
Report and similar publications shall not be regarded as a breach of this
clause.
9.7 This Agreement and its two Schedules (which are incorporated into and
made a part of this Agreement) constitute the entire agreement between the
parties for the Project. Any variation shall be in writing and signed by
authorised signatories for both parties.
9.8 This Agreement shall be governed by English Law. The English Courts
shall have exclusive jurisdiction to deal with any dispute which may arise out
of or in connection with this Agreement.
9.9 If any one or more clauses or sub-clauses of this Agreement would
result in this Agreement being prohibited pursuant to any applicable competition
law then it or they shall be deemed to be omitted. The parties shall uphold the
remainder of this Agreement, and shall negotiate an amendment which, as far as
legally feasible, maintains the economic balance between the parties.
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AS WITNESS the hands of authorised signatories for the parties on the date first
mentioned above.
SCHEDULES
1. Description of the Project
2. Payment Schedule
3. Itemized Details of the Costs of the Project
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SCHEDULE 1
Project Title: Exploiting the Specificity of Prion Protein Aptamers
Description of the Project
Background
[*****]
We now wish to consolidate the advances we have made in this field. We require
more information about the structures and binding properties of these ligands in
order to fully exploit their diagnostic and affinity purification applications.
This research project will focus on providing that information. In doing so, we
aim to transfer the technological know-how for the selection and
characterization of RNA ligands for prions and other target molecules into
VITEX's intramural operations.
This Vitex-funded research contract with Oxford University will underpin
concurrent investigations at the Vitex R & D facility.
Research Programme
1. [*****]
2. [*****]
3. [*****]
4. [*****]
5. [*****]
6. [*****]
7. [*****]
Milestones (Year 1)
0 months: Start
[*****]
[*****]
[*****]
[*****]
----------------
Confidential materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote such omissions.
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SCHEDULE 2
PAYMENT SCHEDULE
DATE FOR PAYMENT BY THE SPONSOR AMOUNT (EXCLUDING VAT/1/): (POUNDS)STERLING
--------------------------------------------------------------------------------------------------------
Within 30 days of Execution of the Agreement [*****]
--------------------------------------------------------------------------------------------------------
July 1, 2001 [*****]
--------------------------------------------------------------------------------------------------------
October 1, 2001 [*****]
--------------------------------------------------------------------------------------------------------
January 1, 2002 [*****]
--------------------------------------------------------------------------------------------------------
April 1, 2002 [*****]
--------------------------------------------------------------------------------------------------------
July 1, 2002 [*****]
--------------------------------------------------------------------------------------------------------
October 1, 2002 [*****]
--------------------------------------------------------------------------------------------------------
January 1, 2003 [*****]
--------------------------------------------------------------------------------------------------------
April 1, 2003 [*****]
--------------------------------------------------------------------------------------------------------
July 1, 2003 [*****]
--------------------------------------------------------------------------------------------------------
October 1, 2003 [*****]
--------------------------------------------------------------------------------------------------------
January 1, 2004 [*****]
--------------------------------------------------------------------------------------------------------
BANK DETAILS
BANK:
[*****]
MAIN ACCOUNT:
[*****]
[*****]
----------------
/1/ VAT will be added when chargeable.
Confidential materials omitted and filed separately with the Securities and
Exchange Commission. Asterisks denote such omissions.
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SIGNED FOR AND ON BEHALF OF SIGNED FOR AND ON BEHALF OF
THE CHANCELLOR, MASTERS & SCHOLARS V.I. TECHNOLOGIES, INC.
OF THE UNIVERSITY OF OXFORD
Name: Name: Xxxx X. Xxxx
Position: Position: President and CEO
Signature: /s/ Representative of Oxford Signature: /s/ Xxxx X. Xxxx
Signature of file with
the Company
ACKNOWLEDGED BY THE PRINCIPAL INVESTIGATOR:
Name: Xx Xxxxxxx Xxxxx
Signature: /s/ Xx Xxxxxxx Xxxxx
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