MATERIAL TRANSFER AGREEMENT
This Material Transfer Agreement (together with its Exhibits referred to herein
as the "Agreement") governs the transfer of certain substances from time to time
from Biosyntech Limited having its place of business at 000, xxxx.
Xxxxxx-Xxxxxxxx, Xxxxx, XX Xxxxxx, X0X 0X0 to Sulzer Orthopedics ltd ("SULZER")
Ko. St 113980/Geb 540, XX-0000 Xxxxxxxxxx.
1. Background. SULZER desires to obtain samples of Biosyntech's proprietary
delivery vehicle described in Exhibits A (such delivery vehicle, excluding the
materials, together with its progeny, derivatives or improvements is referred to
herein as the "Vehicle") to evaluate the Vehicle's suitability in its models set
forth in Exhibit A. Biosyntech desires to obtain samples of the material
described in Exhibit B from SULZER for use in the research described in Exhibits
B under the terms and conditions of this Agreement. Such material, together with
its progeny, derivatives or improvements is referred to herein as "Material". As
part of the research described in Exhibits A, SULZER will incorporate the
Material into Biosyntech's Vehicle. The Vehicle containing the Material shall be
referred to herein as the Vehicle/Material Product. Additionally, SULZER may
desire to evaluate Vehicle/Material Product in accordance with Exhibits A. The
research set forth in Exhibits A and B shall be considered "Research" under this
Agreement. Biosyntech shall own all title and interest in and to the Vehicle.
2. The Vehicle and the research. Biosyntech will supply SULZER with such
quantities of the Vehicle as SULZER may reasonably request and as Biosyntech may
make available, in its sole discretion, from time to time. However, Biosyntech
shall be under no obligation to supply any Vehicle at any time and may cancel
the supply of Vehicle at any time without advance notice. Additionally,
Biosyntech will supply SULZER with such quantities of the Vehicle/Material
Product or other related materials as needed by SULZER in order to conduct the
Research set forth in Exhibits A hereto. SULZER will use the Vehicle/Material
Product and any product or process derived from the use of the Vehicle or the
Vehicle/Material Product, solely in its Research set forth in Exhibits A and for
no other purpose. The Research will be conducted solely by SULZER at its
research facilities or by a third party contractor at their facilities. None of
the Vehicle or Vehicle/Material Product will be transferred or sold to third
parties other than the aforesaid third party contractors. SULZER WILL NOT USE
THE VEHICLE OR VEHICLE/MATERIAL PRODUCT FOR TESTING IN OR TREATMENT OF HUMAN
SUBJECTS. SULZER acknowledges that the Vehicle and Vehicle/Material Product is
experimental and will comply with all laws and regulations applicable to its
handling and use. Any Vehicle remaining upon completion of the Research will be
returned to Biosyntech. Any Vehicle/Material Product remaining upon completion
of the Research will be destroyed by SULZER
3. The Material and the Research. Biosyntech acknowledges that SULZER has rights
to the Material. SULZER will supply with such quantities of the Material as
Biosyntech may reasonably request and as SULZER may make available, in its sole
discretion, from time to time. However, SULZER shall be under no obligation to
supply any Material at any time and may cancel the supply of Material at any
time without advance notice. Biosyntech will use the Material, the
Vehicle/Material Product and any product or process derived from the use of the
Material or the Vehicle/Material Product, solely in its Research set forth in
exhibits B and for no other purpose. The Material and the Vehicle/Material
Product will not be used by Biosyntech in research that is subject to consulting
or licensing obligations to other party, unless SULZER gives its prior, express
written permission. The Research will be conducted solely by Biosyntech at its
research facilities. None of the Material or Vehicle/Material Product will be
transferred or sold to third parties. Biosyntech WILL NOT USE THE MATERIAL OR
VEHICLE/MATERIAL PRODUCT FOR TESTING IN OR TREATMENT OF HUMAN SUBJECTS.
Biosyntech acknowledges that the Material and Vehicle/Material Product is
experimental and will comply with all laws and regulations applicable to
its handling and use. Any Material remaining upon completion of the Research
will return to SULZER. Any Vehicle/Material Product remaining upon completion of
the Research will be destroyed by Biosyntech.
4. In Vivo Studies. If Biosyntech or SULZER is using the Vehicle/Material
Product for non-human in vivo studies, it will comply with all applicable
federal, state and local laws and regulations.
5. Inventions
5.1 Disclosures. Biosyntech will promptly and fully disclose in writing to
SULZER any and all inventions, (whether or not protectable under state, federal
or local laws) related to the Material, the Vehicle/Material Product or their
use, or developed using Material, or the Vehicle/Material Product which are
conceived and/or reduced to practice by Biosyntech, in the course of its
Research and SULZER will promptly and fully disclose in writing to Biosyntech
any and all inventions, (whether or not protectable under state, federal or
local laws) related to the Vehicle, the Vehicle/Material Product or their use,
or developed using the Vehicle, or the Vehicle/Material Product which are
conceived and/or reduced to practice by SULZER, in the course of its Research
(collectively, the "Invention(s)").
5.2 Rights. Except as provided herein, ownership of any Invention shall be
determined in accordance with the applicable intellectual property laws of the
CANADA. Notwithstanding any other provision contained in this Agreement (a)
Biosyntech shall solely own those Inventions that are directed to the Vehicle or
related to the use thereof, except in the combination with the use of the
Material and (b) SULZER shall solely own those Inventions that are directed to
Material or related to the use thereof, except in combination with the use of
the vehicle. Biosyntech and SULZER hereby agree that a party may not use
information from the Research to file a patent application without the prior
written consent of the other party on any Inventions that cover (i) the Vehicle
and the Material, (ii) the combination of the Vehicle and the use of the
Material, (iii) the combination of the Material and the use of the Vehicle, or
(iv) the combination of the use of the Vehicle and the Material ("Joint
Inventions"). Biosyntech represents and warrants that no other person has any
prior right to ownership of Joint Inventions or a prior right to acquire a
licence under such Joint Inventions by reason of any action or agreement by
Biosyntech.
5.3 Patent Applications. Subject to Section 5.2 any and all patent applications
necessary to protect the proprietary position of solely owned Inventions by
Biosyntech will be prepared, filled and maintained by Biosyntech with expenses
paid by Biosyntech. Subject to Section 5.2 any patent application necessary to
protect the proprietary position of solely owned Inventions by SULZER will be
prepared, filled and maintained by SULZER with expenses paid by SULZER. For any
and all patent applications on Joint Inventions, both Biosyntech and SULZER
agree to cooperate jointly at each such party's own expense in the preparation,
prosecution and/or maintenance of any patents or patent applications for a Joint
Invention.
5.4 Reports. At Biosyntech's request, SULZER will advise and update Biosyntech
on the progress and results of the Research subject to Section 7. At SULZER's
request, Biosyntech will advise and update SULZER on the progress and results of
the Research subject to Section 7.
6. No Licence. Biosyntech retains all rights and title in and to the Vehicle and
all related Biosyntech intellectual property rights, including without
limitation, any patents, patent applications, copyrights and copyright
applications, subject to the limited right of use granted to SULZER herein to
carry out the Research, and retains the right to have any Vehicle/Material
Products destroyed and any Vehicle returned to Biosyntech or disposed of upon
request. SULZER understands that no other right or license to the Vehicle, the
Vehicle/Material Products or to their use is granted or implied as a result of
Biosyntech's sending the Vehicle or the Vehicle/Material Products to it. Nothing
contained in this Agreement shall restrict Biosyntech's right to disclose, use,
sell assign, transfer or distribute the Vehicle to any other entity for
commercial or non-commercial purposes. SULZER retains all right and title in and
to the Material and all related SULZER intellectual property rights, including
without limitation, any patents, patent applications, copyrights and copyright
applications, subject to the limited right of use granted to Biosyntech herein
to carry out Research, and retains the right to have any Vehicle/Material
Products destroyed and any Material returned to SULZER or disposed of upon
request. Biosyntech understands that no other right or license to the Material,
the Vehicle/Material Products or to their use is granted or implied as a result
of SULZER's sending the Material to it. Nothing contained in this Agreement
shall restrict SULZER's right to disclose, use, sell assign, transfer or
distribute the Material to any other entity for commercial or non commercial
purposes.
7. Confidentiality. Subject to Section 5.3 hereof, for a period of 5 years from
the date of this Agreement, neither party will disclose or publish the results
of the Research to third parties other than in confidence to its directors,
officers, employees, consultants, corporate partners or potential corporate
partners. With the exception of the results of the Research, any confidential or
proprietary information provided by Biosyntech to SULZER shall be considered
Biosyntech's Proprietary Information and for a period of five years from the
date of disclosure of any Biosyntech Proprietary Information hereunder, SULZER
agrees that it will hold in confidence and not disclose or make available to any
third party, any Biosyntech Proprietary Information disclosed to it by or on
behalf of Biosyntech, will not use such Biosyntech Proprietary Information for
any purpose other than as advised or directed by Biosyntech and will not exploit
such Biosyntech Proprietary Information for its own benefit or the benefit of
another without the prior written consent of Biosyntech. With the exception of
the results of the Research, any confidential or proprietary information
provided by SULZER to Biosyntech shall be considered SULZER Proprietary
Information and for a period of five years from the latest date of disclosure of
any SULZER Proprietary Information hereunder, Biosyntech agrees that it will
hold in confidence and not disclose or make available to any third party, any
SULZER Proprietary Information disclosed to it by or on behalf of SULZER, will
not use such SULZER Proprietary Information for any purpose other than as
advised or directed by SULZER, and will not exploit such SULZER Proprietary
Information for its own benefit or the benefit of another without the prior
written consent of SULZER. Biosyntech Proprietary Information and SULZER
Proprietary Information shall not include information which:
a) is known to the public at the time of disclosure by the disclosing party or
become so known through no wrongful act on the part of the receiving party, but
only after it becomes so publicly known;
b) is in the receiving party's possession at the time of disclosure by the
disclosing party, as evidenced by written records;
c) becomes known to the receiving party through disclosure by sources not under
an obligation to the disclosing party to maintain such information in confidence
as evidenced by written records;
d) is independently developed by or on behalf of the receiving party without
reference to or reliance on the Proprietary Information of the disclosing party,
as evidenced by written records.
8. NO WARRANTY. THE MATERIAL IS PROVIDED TO SULZER AS-IS AND WITHOUT WARRANTY,
EXPRESS OR IMPLIED, INCLUDING ANY WARRANTY OF MERCHANTABILITY , TITLE OR FITNESS
FOR A PARTICULAR PURPOSE AND WITHOUT ANY REPRESENTATION OR WARRANTY THAT THE USE
OF THE VEHICLE WILL NOT INFRINGE ANY PATENT, OR OTHER RIGHTS. THE MATERIAL IS
PROVIDED TO BIOSYNTECH AS-IS AND WITHOUT WARRANTY, EXPRESS OR IMPLIED, INCLUDING
ANY WARRANTY OF MERCHANTABILITY, TITLE OR FITNESS FOR A PARTICULAR
PURPOSE AND WITHOUT ANY REPRESENTATION OR WARRANTY THAT THE USE OF THE MATERIAL
WILL NOT INFRINGE ANY PATENT, OR OTHER RIGHTS.
9. Indemnification. To the extend permitted under governing law, Biosyntech will
indemnify and hold SULZER harmless from any claims or liability resulting from
Biosyntech's use, handling or storage of the Material or Vehicle/Material
Product, except insofar as such claims or liability result from SULZER's
negligence or wrongdoing subject to SULZER providing prompt written notice of
any such claim or liability and Biosyntech having the right to control the
defence and/or settlement of such claim; and to the extent SULZER has been
negligent or engaged in wrongdoing, SULZER shall indemnify Biosyntech to the
extent permitted under governing law subject to Biosyntech providing prompt
written notice of any such claim or liability and having the right to control
the defence and/or settlement of such claim. To the extent permitted under
governing law, SULZER will indemnify and hold Biosyntech harmless from any
claims or liability resulting from SULZER's use, handling or storage of the
Vehicle or Vehicle/Material Product except insofar as such claims or liability
result from Biosyntech's negligence or wrongdoing, subject to Biosyntech
providing prompt written notice of any such claim or liability and SULZER having
the right to control the defence and/or settlement of such claim; and to the
extent Biosyntech has been negligent or engaged in wrongdoing, Biosyntech shall
indemnify SULZER to the extent permitted under governing law subject to SULZER
providing prompt written notice of any such claim or liability and Biosyntech
having the right to control the defence and/or settlement of such claim.
10. Termination. Either party may terminate this Agreement on thirty (30) days
prior written notice to the other party. Upon termination, SULZER shall destroy
any Vehicle/Material Product, shall immediately return to Biosyntech all
Biosyntech Proprietary Information provided by Biosyntech, and all Vehicle and
all of SULZER's right to use the Vehicle and the Vehicle/Material Products shall
end. Upon termination, Biosyntech shall destroy any Vehicle/Material Products,
shall immediately return to SULZER all SULZER Proprietary Information provided
by SULZER, and all Material and all of Biosyntech's right to use the Material
and the Vehicle/Material Products shall end. Following termination, neither
party shall have any further obligation under this Agreement, except that
Section 5 through 10 shall survive termination.
11. Modifications. This Agreement supersedes all prior agreements, written or
oral, including the Confidential Disclosure Agreement dated __________ between
Biosyntech and SULZER related to the subject matter of this Agreement provided
that the obligations of confidentiality and non-use attaching to the Proprietary
Information disclosed under such Confidential Disclosure Agreement shall survive
its termination. This Agreement may not be modified, changed or discharged, in
whole or in part, except by an agreement in writing signed by the Biosyntech and
SULZER.
12. Third Partied. Biosyntech and SULZER hereby represent that the acceptance of
the Material and Vehicle in accordance with, and the performance of all the
terms of this Agreement do not and will not breach or conflict with any other
agreement or arrangement to which Biosyntech or SULZER is a party.
13. Bailment. It is the intent of the parties that the transfer of Material to
Biosyntech or the transfer of Vehicle to SULZER be considered a bailment, and
shall be considered neither a conditional nor an unconditional sale. Any monies
transferred in conjunction with the transfer of Material, Vehicle and
information shall be only to cover the costs associated with the transfer, and
shall not represent consideration for an exchange of title thereto.
14. Miscellaneous. This Agreement (a) may not be assigned or transferred by any
party without the prior written consent of the other party, except that
Biosyntech or SULZER may assign this Agreement to an affiliated SULZER or in
connection with the merger, consolidation or sale of all or
substantially all of its assets and (b) shall be governed by and construed in
accordance with the laws of the Province of Quebec, Canada.
IN WITNESS WHEREOF, Biosyntech and SULZER have caused this Agreement to be
executed in their properly and duly authorized afficers or representatives.
Biosyntech Limited
Name: /s/ Xxxxxxxx Xxxxxxx, Ph.D.
---------------------------------
Title: Vice President, Research & Development
Date: January 10, 2000
Biosyntech Limited
000, xxxx. Xxxxxx-Xxxxxxxx
Xxxxx (XX) X0X 0X0
Xxxxxx
Phone: (000) 000-0000
Facsimile: (000) 000-0000
SULZER Orthopedics*
Name: /s/ Xxxxxx Xxxxxx Ph.D.
-------------------------------
Title: Director Biotech Dept.
Date: January 7, 2000
Sulzer Orthopedics Ltd
Ko. St 113980/Geb 540,
XX-0000 Xxxxxxxxxx
