EXHIBIT 10.6
[*CONFIDENTIAL TREATMENT HAS BEEN REQUESTED AS TO CERTAIN PORTIONS OF THIS
DOCUMENT. EACH SUCH PORTION, WHICH HAS BEEN OMITTED HEREIN AND REPLACED WITH AN
ASTERISK [*], HAS BEEN FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION.]
This Agreement, effective as of date of execution by the Parties (the
"Effective Date"), is between the Montefiore Medical Center ("Institution"), a
corporation of the State of New York, and Ivivi Technologies, Inc. ("Sponsor"),
a New Jersey corporation.
RECITALS
Institution and Sponsor are entering into this Agreement because
Sponsor desires to fund a Center for Research in the field of Pulsed Magnetic
Frequencies under the supervision of Xx. Xxxxxx Xxxxxxx of Institution's
Department of Plastic Surgery. Sponsor desires to support such research
conducted by Institution in accordance with the terms and conditions of this
Agreement. The research program contemplated by this Agreement is of mutual
interest to Sponsor and Institution and furthers the educational, scholarship
and research objectives of Institution. Sponsor further desires to develop a
continuing relationship with Xx. Xxxxxx Xxxxxxx.
In consideration of the promises and mutual covenants contained herein,
and intending to be legally bound hereby, the parties hereto agree as follows:
1. Definitions.
1.1. "Confidential Information" means any confidential or
proprietary information furnished by one party (the "Disclosing Party") to the
other party (the "Receiving Party") in connection with the performance of the
Research Project, provided that such information is specifically designated as
confidential. Such Confidential Information may include, without limitation,
trade secrets, know-how, inventions, technical data or specifications and
testing methods.
1.2. "Device" means any pulsed magnetic field device employing
Sponsor Proprietary Technology.
1.3. "Inventions" means any potentially patentable invention based
on the Research Results which is (i) conceived during the term of this Agreement
including any extension of this Agreement provided in Section 6.2 by employees
of Institution or Sponsor, or both, and (ii) reduced to practice either during
the term of this Agreement including any extension of this Agreement provided in
Section 6.2 or thereafter within a period of six (6) months.
1.4. "Materials" means any tangible biological, chemical, or
physical materials. In the case of biological materials, the term "Materials"
shall also include tangible materials that are routinely produced through use of
the original materials, including, for example, any progeny derived from a cell
line, monoclonal antibodies produced by hybridoma cells, DNA or RNA replicated
from isolated DNA or RNA, recombinant proteins produced through use of isolated
DNA or RNA, and recombinant proteins isolated from a cell extract or supernatant
by non-proprietary affinity purification methods.
1.5. "Other Inventions" means any potentially patentable invention
based on the Research Results which is (i) conceived during the term of this
Agreement by employees of Instit[OBJECT OMITTED]ution or Sponsor, or both, (ii)
reduced to practice either during the term of this Agreement or thereafter
within a period of six (6) months and (iii) not owned by Sponsor under section
5.1.
1.6. "Patent Rights" means all United States and foreign patent
applications claiming an Invention, including any divisional, continuation,
continuation-in-part (to the extent that the claims are directed to an
Invention), and foreign equivalents thereof, as well as any patents issued
thereon or reissues or reexaminations thereof.
1.7. "PMF" means pulsed magnetic field. PRF means pulsed radio
frequency, PEMF means pulsed electromagnetic field, all of which are known
collectively as PMF.
1.8. "Principal Investigator" means an employee of Institution who
has primary responsibility for the performance of the Research Project. The
Principal Investigator is identified in Section 2.1. below.
1.9. "Project Materials" means Materials that are discovered or
developed in the performance of the Research Project.
1.10. "Proprietary Materials" means any proprietary Materials other
than Project Materials that are furnished by one party (the "Supplier") to the
other party (the "Recipient") in connection with the performance of the Research
Project.
1.11. "Research Project" means the research project described on
Exhibit A ("Description of Research Project"), which Institution agrees to
perform under the terms and conditions of this Agreement.
1.12. "Research Results" means all data, test results, laboratory
notes, techniques, know-how, and any other research results that are obtained in
the performance of the Research Project. The term "Research Results" shall not
include any Project Materials, patentable inventions, copyrighted or
copyrightable works, trademarks or service marks, or other intellectual property
based on the Research Results. As a matter of policy, Institution ordinarily
will not assert trade secret protection for Research Results.
1.13. "Sponsor Proprietary Technology" means confidential
information, trade secrets, inventions and know-how in the area of pulsed
magnetic field technology held by Sponsor.
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1.14. "Technical Representative" means an individual designated by
Sponsor as its principal technical representative for consultation and
communications with Institution and the Principal Investigator. The Technical
Representative is identified in Section 2.1. below.
2. Performance of Research Project.
2.1. Principal Investigator and Technical Representative. The
Principal Investigator shall be Xxxxxx Xxxxxxx, M.D. If Xx. Xxxxxxx ceases to
serve as Principal Investigator for any reason, Institution will promptly notify
Sponsor, and Institution and Sponsor shall use good faith efforts to identify a
mutually acceptable replacement within sixty (60) days. If a suitable
replacement Principal Investigator cannot be identified within the sixty-day
period, Sponsor shall have right to terminate this Agreement as provided in
Section 6.3. The Technical Representative shall be Xxxxxx X. Xxxxx, Ph.D.
Sponsor may change its Technical Representative upon thirty (30) days written
notice to Institution.
2.2. Performance of Research Project. Institution shall use
reasonable efforts to complete the Research Project. The Principal Investigator
shall direct the Research Project and shall control the manner of its
performance. The Technical Representative may consult informally with the
Principal Investigator, both in person and by telephone, regarding the
performance of the Research Project. The Technical Representative shall have
reasonable access to Institution facilities where the Research Project is being
conducted, but the exact time and manner of such access shall be determined by
the Principal Investigator.
2.3. Records, Materials, and Reports. The Principal Investigator
will prepare and maintain records containing all Research Results, including
laboratory notebooks maintained in accordance with customary academic practice.
During the term of this Agreement, and at the convenience of the Principal
Investigator, the Technical Representative shall have reasonable access to such
research records, and the Principal Investigator agrees to furnish Sponsor, upon
request, with reasonable amounts of any Project Materials, subject to
availability. Within ninety (90) days after the expiration or termination of
this Agreement, the Principal Investigator shall deliver to Sponsor a final
report describing all significant Research Results in reasonable detail;
provided, however, that the Principal Investigator may extend this ninety-day
deadline with the consent of Sponsor, which consent shall not be unreasonably
withheld.
3. Contributions of Sponsor.
3.1. Contributions to Research Project. Sponsor shall contribute to
the Research Project the financial support and other resources set forth in
Sections 3.1.1 and 3.1.2 below ("Sponsor Contributions"). Sponsor may also
furnish Institution and the Principal Investigator with certain Confidential
Information and Proprietary Materials, which shall remain the property of
Sponsor. Institution and the Principal Investigator reserve the right to refuse
to accept any Confidential Information or Proprietary Materials offered by
Sponsor.
3.1.1. Sponsor Contributions During First Period of Initial
Term. The First Period of the Initial Term shall extend from the Effective Date
until December 31, 2005. For the First Period of the Initial Term, the Sponsor
Contributions shall be that set forth in Exhibit B attached.
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3.1.2. Sponsor Contributions During Second through Fifth
Periods of Initial Term. The Second Period of the Initial Term shall be from
January 1, 2006 until December 31, 2006. The Third Period of the Initial Term
shall be from January 1, 2007, until December 31, 2007. The Fourth Period of the
Initial Term shall be from January 1, 2008, until December 31, 2008. The Fifth
Period of the Initial Term shall be from January 1, 2009, until December 31,
2009. For the Second through Fifth Periods of the Initial Term, the Sponsor
Contributions and payment terms therefor shall be determined by agreement of the
parties. It is anticipated by the parties that the Sponsor Contributions for the
Second through Fifth Periods of the Initial Term will change to reflect the
then-current scope of the Research Project. Therefore, the Principal
Investigator and Institution shall submit a proposed budget to the Sponsor by no
later than July 1 prior to the beginning of each of the Second through Fifth
Periods of the Initial Term (e.g., the proposed budget for the Second Period of
the Initial Term shall be submitted to the Sponsor by no later than July l,
2005). The parties agree to negotiate the level of Sponsor Contributions for
each of the Second through Fifth Periods of the Initial Term in good faith, and
to agree on the level of Sponsor Contributions prior to August 1 following the
submission of the proposed budget.
3.1.3. Sponsor Contributions During Renewal Terms. The
amount and terms of the Sponsor Contributions for any Renewal Term shall be
determined by the procedure set forth in Section 6.2.
3.2. Payments to Institution. For the First Period of the Initial
Term, Sponsor shall make an initial payment of 50% upon the signing of this
Agreement and quarterly payments to Institution in the amounts listed on Exhibit
B ("Sponsor Contributions"). The payment terms for the Sponsor Contributions for
the Second through Fourth Periods of the Initial Term shall be determined by the
procedures set forth in Section 3.1.2. Payments should be made in the name of "
Montefiore Hospital c/o the Department of Plastic Surgery Research Fund" and
sent to Xxxxxx X. Xxxxxxx, Ph. D., Director, The Office of Research & Sponsored
Programs, Montefiore Medical Center, 0000 Xxxxxxxxxx Xxxxxx, Xxxxx, XX 00000. If
this Agreement is terminated prior to its expiration for any reason other than a
material breach by Institution (as described in Section 6.4.), then on the
effective date of such termination, Sponsor shall pay Institution the entire
amount of any uncancellable financial commitments that Institution intended to
pay through Sponsor Contributions, including without limitation (i) salaries for
appointed employees for the remainder of their term of appointment (e.g.,
postdoctoral fellows) and stipends for graduate students and (ii) Institution
expenses previously incurred for equipment, travel, and associated indirect
costs. Upon the request of Sponsor made within thirty (30) days after the
expiration or termination of this Agreement, Institution shall furnish Sponsor
with a final accounting of all expenses incurred in connection with the Research
Project and all funds received from Sponsor pursuant to this Section 3.2.,
together with a check payable to Sponsor in the amount of any unexpended and
uncommitted funds, failing which Institution shall retain any unexpended funds.
3.3. Use of Funds. Institution shall monitor expenditures, in
accordance with its institutional policies, to ensure that the funds provided by
Sponsor are spent in connection with the performance of the Research Project and
matters related to the project.
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3.4. Ownership of Equipment. Upon termination or expiration of this
Agreement, Institution shall retain title to all equipment purchased or
fabricated by Institution with funds provided by Sponsor.
4. Confidential Information; Proprietary Materials; Publications.
4.1. Confidential Information. Any previous confidentiality
agreement concerning this Research Project between the parties is hereby
incorporated herein and extended by this Agreement. Sponsor, Institution and
Principal Investigator recognize that the conduct of this Research Project may
require the transfer of confidential or proprietary information between the
parties (the "Confidential Information"). Any such Confidential Information
disclosed by a party to another party or its employees, agents and contractors,
shall be used only in connection with the legitimate purposes of this Agreement,
shall be disclosed by the receiving party only to those who have a need to know
it and are obligated to keep same in confidence, and shall be safeguarded with
reasonable care; provided, however, that the disclosing party marks the
Confidential Information as such at the time of disclosure (or, if disclosed
verbally, such Confidential Information is reduced to writing and so marked
within a reasonable period of time thereafter).
4.1.1. Designation. Confidential Information that is
disclosed in writing shall be marked with a legend indicating its confidential
status (such as "Confidential" or "Proprietary"). Confidential Information that
is disclosed orally or visually shall be documented in a written notice prepared
by the Disclosing Party and delivered to the Receiving Party within thirty (30)
days of the date of disclosure; such notice shall summarize the Confidential
Information disclosed to the Receiving Party and reference the time and place of
disclosure.
4.1.2. Obligations. In consideration of the disclosure of
any Confidential Information to the other, it is agreed that during the term of
this Agreement and thereafter for a period of five (5) years, the Receiving
Party shall (i) maintain all Confidential Information in strict confidence,
except that the Receiving Party may disclose or permit the disclosure of any
Confidential Information to its directors, officers, employees, consultants, and
advisors who are obligated to maintain the confidential nature of such
Confidential Information and who need to know such Confidential Information for
the performance of the Research Project; (ii) use all Confidential Information
solely for the performance of the Research Project; (iii) take precautions as
normally taken with the Receiving Party's own confidential and proprietary
information to prevent disclosure to third parties, and (iv) allow its
directors, officers, employees, consultants, and advisors to reproduce the
Confidential Information only to the extent necessary for the performance of the
Research Project, with all such reproductions being considered Confidential
Information.
4.1.3. Exceptions. The obligations of the Receiving Party
under Section 4.1 above shall not apply to the extent that the Receiving Party
can demonstrate that certain Confidential Information (i) was in the public
domain prior to the time of its disclosure under this Agreement; (ii) entered
the public domain after the time of its disclosure under this Agreement through
means other than an unauthorized disclosure resulting from an act or omission by
the Receiving Party; (iii) was independently developed or discovered by the
Receiving Party without use of the Confidential Information; (iv) is or was
disclosed to the Receiving Party at any time, whether prior to or after the time
of its disclosure under this Agreement, by a third party having no fiduciary
relationship with the Disclosing Party and having no obligation of
confidentiality with respect to such Confidential Information; or (v) is
required to be disclosed to comply with applicable laws or regulations, or with
a court or administrative order, provided that the Disclosing Party receives
reasonable prior written notice of such disclosure.
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4.1.4. Ownership and Return. The Receiving Party
acknowledges that the Disclosing Party (or any third party entrusting its own
information to the Disclosing Party) claims ownership of its Confidential
Information in the possession of the Receiving Party. Upon the expiration or
termination of this Agreement, and at the request of the Disclosing Party, the
Receiving Party shall return to the Disclosing Party all originals, copies, and
summaries of documents, materials, and other tangible manifestations of
Confidential Information in the possession or control of the Receiving Party,
except that the Receiving Party may retain one copy of the Confidential
Information in the possession of its legal counsel solely for the purpose of
monitoring its obligations under this Agreement.
4.2. Research Results. All data and study results from the Study
will be promptly and fully disclosed to Sponsor and shall be owned by Sponsor.
Institution, Principal Investigator or his/her designee may freely present or
publish the results of a scientific investigation involving this Study, provided
that Confidential Information of Sponsor is not disclosed without written
permission from Sponsor. Principal Investigator shall provide with a copy of the
manuscript, paper or poster within a reasonable time (at least thirty (30) days)
prior to their submission to a scientific journal or presentation at scientific
meetings and a reasonably detailed summary or abstract of any other oral or
written publication within a reasonable time prior to their submission or
presentation, in order to allow Sponsor to review said publication for comments
and to ensure that no Sponsor confidential or proprietary information is
disclosed. If identified by Sponsor, Principal Investigator will delete any of
Sponsor's confidential or proprietary information that may be contained therein.
4.3. Proprietary Materials.
4.3.1. Limited Use and Transfer. The Recipient shall use
Proprietary Materials only for the performance of the Research Project. The
Recipient shall use the Proprietary Materials only in compliance with all
applicable federal, state, and local laws and regulations. The Recipient shall
not use the Proprietary Materials in any in vivo experiments on human subjects.
The Recipient shall not transfer any Proprietary Materials to any third party
without the prior written consent of the Supplier.
4.3.2. Warranty Disclaimer. Any Proprietary Materials that
are furnished to a party pursuant to this Agreement are provided for
experimental purposes and may have hazardous properties. THE SUPPLIER MAKES NO
REPRESENTATIONS, AND EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR
IMPLIED, WITH RESPECT TO ANY PROPRIETARY MATERIALS. THERE ARE NO EXPRESS OR
IMPLIED WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE, OR
THAT THE USE OF PROPRIETARY MATERIALS WILL NOT INFRINGE ANY PATENT RIGHTS OR
OTHER PROPRIETARY RIGHTS OF A THIRD PARTY.
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4.3.3. Ownership and Return. The Recipient acknowledges that
the Supplier (or any third party entrusting its Materials to the Supplier)
claims ownership of its Proprietary Materials in the possession of the
Recipient. The Recipient agrees to cause its employees to execute and deliver
any documents of assignment or conveyance to effectuate the ownership rights of
the Supplier in Proprietary Materials. Upon the expiration or termination of
this Agreement, the Recipient shall at the instruction of Supplier either
destroy or return any unused Proprietary Materials.
4.4. Publications. Institution and its employees will be free to
publicly disclose (through journals, lectures, or otherwise) the Research
Results, provided that the Principal Investigator shall have provided a copy of
the proposed disclosure to Sponsor at least sixty (60) days prior to the
submission of any written publication and at least thirty (30) days prior to any
oral public disclosure (the "Review Period") to allow Sponsor to determine
whether any Invention or its Confidential Information would be disclosed. The
parties expressly agree that research grant proposals submitted to federal,
state, or local agencies or non-profit organizations shall not be subject to
review under this Section. If Sponsor reasonably determines that the proposed
disclosure would reveal an Invention or Sponsor Confidential Information, then
Sponsor shall notify Institution and the Principal Investigator of such
determination and its basis prior to the expiration of the Review Period. With
respect to disclosure of an Invention, upon receipt of timely notice by Sponsor,
the Principal Investigator agrees to delay submission of the written publication
or presentation of the oral public disclosure until one of the following events
occurs: (i) Sponsor and Institution agree that no patentable Invention exists;
(ii) Institution or Sponsor files a patent application claiming the relevant
Invention pursuant to Article 5; (iii) Sponsor, Institution, and Principal
Investigator jointly agree upon deletions that prevent disclosure of any
Invention; or (iv) a period of sixty (60) days elapses commencing with the
effective date of notice to Institution. With respect to disclosure of Sponsor
Confidential Information, upon receipt of timely notice by Sponsor, the
Principal Investigator agrees to delete such information from any proposed
disclosure.
5. Intellectual Property.
5.1. Inventions. Institution shall promptly disclose to Sponsor any
discovery or invention (each an "Invention") made by institution, Principal
Investigator or any other Study personnel in the performance of the Research
Project. Title to all Inventions and all related intellectual property rights
developed that relate to Device (or its class of equivalents), any other Sponsor
product, or the Research Project shall be the sole and exclusive property of
Sponsor. Institution and Principal Investigator shall assign, and shall take
appropriate steps to ensure that all of its Research Project personnel are
obligated to assign, to Sponsor all rights, title and interests each may have in
any such Invention and will cooperate to effect the foregoing.
5.2. Licenses. In consideration of the contributions provided by
Sponsor, Institution and Principal Investigator grant to Sponsor or its
Affiliates a first option to obtain a worldwide royalty-bearing license to all
other Inventions not owned by Sponsor ("Other Inventions") conceived or made in
the performance of the Research Project. The parties shall negotiate a license
agreement for such Other Inventions developed under the Research Project upon
reasonable commercial terms and conditions. If a mutually acceptable license
agreement for any Other Invention is not executed and delivered by the end of
one (1) year from the date Sponsor receives written notice of such Other
Invention, Sponsor's first option concerning such Other Invention as described
above shall terminate. In the event Sponsor and Institution enter into a license
agreement for any Other Invention conceived or made in the performance of the
Project, and Sponsor desires to file a patent application for such Other
Invention, Sponsor will pay the costs associated with such filing.
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5.3. Licensing Terms. Notwithstanding any provision to the
contrary, in the event the parties do not enter into a license agreement for any
particular Other Invention, then for a period of two (2) years from the date
Sponsor receives written notice of such Other Invention, Institution and
Principal Investigator nevertheless agree that neither shall offer a license for
such Other Invention to any third party on terms more favorable to such third
party than were first offered to Sponsor without first making such an offer to
Sponsor.
5.4. No right or license is granted under this Agreement by any
party expressly or by implication, except those specifically set forth herein.
Nothing contained within this Agreement shall impose an obligation of
exclusivity on one party by the other. Both parties reserve the right to enter
into and participate in other activities (either alone or with a third party)
including, but not limited to, clinical trails and sponsored research studies.
5.5. Copyrightable Works. Institution or its employees shall have
sole ownership of any copyrighted or copyrightable works (including reports and
publications) that are created by Institution employees in the performance of
the Research Project. Institution and the Principal Investigator hereby grant
Sponsor an irrevocable, royalty-free, nontransferable, non-exclusive right to
copy and distribute any research reports furnished to Sponsor under this
Agreement and to prepare, copy, and distribute derivative works based on these
research reports. This section shall not be construed to provide Sponsor with
rights in published works authored by Institution or its employees for which
rights must be assigned by the authors to the publisher as a condition of
publication.
6. Term and Termination.
6.1. Initial Term. This Agreement shall commence on the Effective
Date and shall remain in effect until December 31, 2009 (the "Initial Term"),
unless earlier terminated in accordance with the provisions of this Agreement.
6.2. Renewal Terms. This Agreement may be renewed for additional
one year increments by mutual agreement of the parties and upon application by
the Principal Investigator and the Institution, which application shall be in
writing as provided in Section 8.13. It is anticipated by the parties that the
Sponsor Contributions (as provided in Section 3.1 and 3.2) for any renewal terms
will change to reflect the then-current scope of the Research Project.
Therefore, each renewal application prepared by the Principal Investigator and
Institution under this Section 6.2 shall contain a proposed budget for the
proposed renewal term, and shall be submitted to the Sponsor by no later than
July 1 prior to the expiration of the then-current term (e.g., the proposed
budget for a first Renewal Term following the Initial Term shall be submitted to
the Sponsor by no later than July 1, 2009). The parties agree to negotiate the
level of Sponsor Contributions for each proposed renewal term in good faith upon
such application. In the event that Sponsor declines the application for
renewal, or if the parties are unable to agree on a level of Sponsor
Contributions prior to August 1 prior to the expiration of the then-current
term, then the proposed renewal shall not take effect.
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6.3. Loss of Principal Investigator. If the Principal Investigator
leaves Institution or otherwise terminates his involvement in the Research
Project, and if Institution and Sponsor fail to identify a mutually acceptable
substitute as provided in Section 2.1., Sponsor may terminate this Agreement
upon sixty (60) days prior written notice to Institution.
6.4. Termination for Default. In the event that either party
commits a material breach of its obligations under this Agreement and fails to
cure that breach within sixty (60) days after receiving written notice thereof,
the other party may terminate this Agreement immediately upon written notice to
the party in breach. If the alleged breach involves nonpayment of any amounts
due Institution under this Agreement, Sponsor shall have only one opportunity to
cure a material breach for which it receives notice as described above; any
subsequent material breach by Sponsor will entitle Institution to terminate this
Agreement immediately upon written notice to Sponsor, without the sixty-day cure
period.
6.5. Force Majeure. Neither party will be responsible for delays
resulting from causes beyond the reasonable control of such party, including
without limitation fire, explosion, flood, war, strike, or riot, provided that
the nonperforming party uses commercially reasonable efforts to avoid or remove
such causes of nonperformance and continues performance under this Agreement
with reasonable dispatch whenever such causes are removed.
6.6. Effect of Termination. The following provisions shall survive
the expiration or termination of this Agreement: Articles 1, 4, and 7; Sections
2.3. (obligation to deliver final report), 3.2. (obligation to deliver final
accounting), 6.5., 8.2., 8.3., 8.5., 8.14., and 8.15. In addition, the
provisions of Article 5 shall survive termination of this Agreement, as
necessary to effectuate the rights of Sponsor, unless Institution has terminated
this Agreement because of a material breach by Sponsor pursuant to Section 6.4.
7. Dispute Resolution.
7.1. Procedures Mandatory. The parties agree that any dispute
arising out of or relating to this Agreement shall be resolved solely by means
of the procedures set forth in this Article, and that such procedures constitute
legally binding obligations that are an essential provision of this Agreement;
provided, however, that all procedures and deadlines specified in this Article
may be modified by written agreement of the parties. If either party fails to
observe the procedures of this Article, as modified by their written agreement,
the other party may bring an action for specific performance in any court of
competent jurisdiction.
7.2. Dispute Resolution Procedures.
7.2.1. Negotiation. In the event of any dispute arising out
of or relating to this Agreement, the affected party shall notify the other
party, and the parties shall attempt in good faith to resolve the matter within
ten (10) days after the date such notice is received by the other party (the
"Notice Date"). Any disputes not resolved by good faith discussions shall be
referred to senior executives of each party, who shall meet at a mutually
acceptable time and location within thirty (30) days after the Notice Date and
attempt to negotiate a settlement.
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7.2.2 Trial Without Jury. If the parties fail to resolve
the dispute through negotiation, each party shall have the right to pursue any
other remedies legally available to resolve the dispute, provided, however, that
the parties expressly waive any right to a jury trial in any legal proceeding
under this Section.
7.3. Preservation of Rights Pending Resolution.
7.3.1. Performance to Continue. Each party shall continue to
perform its obligations under this Agreement pending final resolution of any
dispute arising out or relating to this Agreement; provided, however, that a
party may suspend-performance of its obligations during any period in which the
other party fails or refuses to perform its obligations.
7.3.2. Provisional Remedies. Although the procedures
specified in this Article are the sole and exclusive procedures for the
resolution of disputes arising out of relating to this Agreement, either party
may seek a preliminary injunction or other provisional equitable relief if, in
its reasonable judgment, such action is necessary to avoid irreparable harm to
itself or to preserve its rights under this Agreement.
7.3.3. Statute of Limitations. The parties agree that all
applicable statutes of limitation and time-based defenses (such as estoppel and
laches) shall be tolled while the procedures set forth in Subsections 7.2.(a)
and 7.2(b) are pending. The parties shall take any actions necessary to
effectuate this result.
8. Miscellaneous.
8.1. Compliance with Law and Policies. Sponsor agrees to comply
with applicable law and the policies of Institution in the area of technology
transfer and shall promptly notify Institution of any violation that Sponsor
knows or has reason to believe has occurred or is likely to occur.
8.2. Indemnification. Sponsor shall indemnify, defend, and hold
harmless Institution and its trustees, officers, faculty, students, employees,
and agents and their respective successors, heirs and assigns (the
"Indemnitees"), against any liability, damage, loss, or expense (including
reasonable attorneys fees and expenses of litigation) incurred by or imposed
upon any of the Indemnitees in connection with any claims, suits, actions,
demands or judgments arising out of any theory of liability (including without
limitation actions in the form of tort, warranty, or strict liability and
regardless of whether such action has any factual basis) relating to this
Agreement or concerning any product, process, or service that is made, used, or
sold pursuant to any right or license granted under this Agreement; provided,
however, that such indemnification shall not apply to any liability, damage,
loss, or expense to the extent directly attributable to (i) the negligent
activities or intentional misconduct of the Indemnitees, provided that a court
of competent jurisdiction has determined that such negligent activities or
intentional misconduct have occurred, or (ii) the settlement of a claim, suit,
action, or demand by Indemnitees without the prior written approval of Sponsor.
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8.3. Publicity Restrictions. Sponsor shall not use the name of
Institution or any of its trustees, officers, faculty, students, employees, or
agents, or any adaptation of such names, or any terms of this Agreement in any
promotional material or other public announcement or disclosure without the
prior written consent of Institution; such consent shall not be unreasonably
withheld. The foregoing notwithstanding, Sponsor shall have the right to
disclose such information without the consent of Institution in any prospectus,
offering memorandum, or other document or filing required by applicable
securities laws or other applicable law or regulation, provided that Sponsor
shall have given Institution at least ten (10) days prior written notice of the
proposed text for the purpose of giving Institution the opportunity to comment
on such text.
8.4 Representations and Warranties. Institution and Sponsor each
hereby represents and warrants to the other that:
8.4.1 Corporate Power. It is duly organized and validly
existing and has full corporate power and authority to enter into this Agreement
and to carry out the provisions hereof.
8.4.2 Due Authorization. It is duly authorized to execute
and deliver this Agreement and to perform its obligations hereunder.
8.4.3 Binding Agreement. This Agreement is a legal and
valid obligation binding upon the party making such representation and warranty
and enforceable in accordance with its terms. The execution, delivery and
performance of this Agreement does not conflict with any agreement, instrument
or understanding, oral or written, to which or by which the party making such
representation and warranty may be bound, nor violate any law or regulation of
any court, governmental body or administrative or other agency having
jurisdiction over the party making such representation and warrant.
8.4.4 Intellectual Property Rights. It holds all necessary
right, title and interest in and to its respective Background Inventions and
technology to permit it to undertake the Sponsored Research Program contemplated
by this Agreement without subjecting the other party hereto to liability for
infringement of any patent, copyright or trade secret of any third party
8.5. Notice to Other Investigators. The Principal Investigator
shall furnish all investigators involved in the Research Project, including
faculty, staff, students, and post-doctoral fellows, with written notice of
their obligations under Articles 4 and 5 of this Agreement.
8.6. Research Partially Funded by Grants.
8.6.1 Federal Government. To the extent that any Invention
has been partially funded by the federal government, this Agreement and the
grant of any rights in such Invention is subject to and governed by federal law
as set forth in 35 U.S.C. xx.xx. 201-211, and the regulations promulgated
thereunder, as amended, or any successor statutes or regulations. If any term of
this Agreement fails to conform with such laws and regulations, the relevant
term shall be deemed an invalid provision and modified by the parties pursuant
to Section 8.16.
8.6.2 Other Organizations. To the extent that any Invention
has been partially funded by a non-profit organization or state or local agency,
this Agreement and the grant of any rights in such Invention is subject to and
governed by the terms and conditions of the applicable research grant. If any
term of this Agreement fails to conform with such terms and conditions, the
relevant term shall be deemed an invalid provision and modified by the parties
pursuant to Section 8.16. At the request of Sponsor, Institution shall make
available to Sponsor the terms and conditions of any research grants that will
partially fund the Research Project.
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8.7. Tax-Exempt Status. Sponsor acknowledges that Institution holds
the status of an exempt organization under the United States Internal Revenue
Code. Sponsor also acknowledges that certain facilities in which the Research
Project may be performed were financed through offerings of tax-exempt bonds. If
the Internal Revenue Service determines, or if counsel to Institution reasonably
determines, that any term of this Agreement jeopardizes the tax-exempt status of
Institution or the bonds used to finance Institution facilities, the relevant
term shall be deemed an invalid provision and modified by the parties pursuant
to Section 8.16.
8.8. Relationship of Parties. For the purposes of this Agreement,
each party is an independent contractor and not an agent or employee of the
other party. Neither party shall have authority to make any statements,
representations, or commitments of any kind, or to take any action which shall
be binding on the other party, except as may be explicitly provided for in this
Agreement or authorized in writing by the other party.
8.9. Counterparts. This Agreement may be executed in one or more
counterparts, each of which shall be deemed an original, and all of which
together shall be deemed to be one and the same instrument.
8.10. Headings. All headings are for convenience only and shall not
affect the meaning of any provision of this Agreement.
8.11. Binding Effect. This Agreement shall be binding upon and inure
to the benefit of the parties and their respective permitted successors and
assigns.
8.12. Assignment. This Agreement may not be assigned by either party
without the prior written consent of the other party, except that Sponsor may
assign this Agreement to an affiliate or to a successor in connection with the
merger, consolidation, or sale of all or substantially all of its assets or that
portion of its business to which this Agreement relates.
8.13. Amendment and Waiver. This Agreement may be amended,
supplemented, or otherwise modified only by means of a written instrument signed
by both parties. Any waiver of any rights or failure to act in a specific
instance shall relate only to such instance and shall not be construed as an
agreement to waive any rights or fail to act in any other instance, whether or
not similar.
8.14. Governing Law. This Agreement shall be governed by and
construed in accordance with the laws of the New Jersey irrespective of any
conflicts of law principles.
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8.15. Notice. Any notices required or permitted under this Agreement
shall be in writing, shall specifically refer to this Agreement, and shall be
sent by hand, recognized national overnight courier, confirmed facsimile
transmission, confirmed electronic mail, or registered or certified mail,
postage prepaid, return receipt requested, to the following addresses or
facsimile numbers of the parties:
If to Institution:
Montefiore Medical Center
0000 Xxxxxxxxxx Xxxxxx
Xxxxx, XX 00000
Attention: Xxxxxx X. Xxxxxxx, Ph. D.
Director, The Office of Research & Sponsored Programs
Tel: (000) 000-0000
(000) 000-0000
Fax: (000) 000-0000
E-Mail: xxxxxxxx@xxxxxxxxxx.xxx
If to Principal Investigator:
Montefiore Medical Center
0000 Xxxxxxxxxx Xxxxxx
Xxxxx, XX 00000
Attention: Xxxxxx Xxxxxxx, M.D.
Chairman of the Department of Plastic Surgery
Tel: (000) 000-0000
E-Mail: xxxxxxxx@xxxxxxxxxx.xxx
If to Sponsor:
Ivivi Technologies, Inc.
000 X Xxxxxxx Xxxxxx
Xxxxxxxxx, XX 00000
Attention: Andre' XxXxxx
Invoices to: Xxxxxx X. Xxxxxx
Tel: (000) 000-0000
Fax: (000) 000-0000
E-Mail: xxxxx@xxxxxxxxxx.xxx
All notices under this Agreement shall be deemed effective upon receipt. A party
may change its contact information immediately upon written notice to the other
party in the manner provided in this Section.
8.16. Severability. In the event that any provision of this
Agreement shall be held invalid or unenforceable for any reason, such invalidity
or unenforceability shall not affect any other provision of this Agreement, and
the parties shall negotiate in good faith to modify the Agreement to preserve
(to the extent possible) their original intent. If the parties fail to reach a
modified agreement within sixty (60) days after the relevant provision is held
invalid or unenforceable, then the dispute shall be resolved in accordance with
the procedures set forth in Article 7. While the dispute is pending resolution,
this Agreement shall be construed as if such provision were deleted by agreement
of the parties.
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8.17. Entire Agreement. This Agreement constitutes the entire
agreement between the parties with respect to its subject matter and supersedes
all prior agreements or understandings between the parties relating to its
subject matter.
IN WITNESS WHEREOF, the parties have caused this Agreement to be
executed by their duly authorized representatives as of the date first written
above.
MONTEFIORE MEDICAL CENTER IVIVI TECHNOLOGIES, INC.
By: /s/ Xxxxxx X. Xxxxxxx, Ph.D. By: /s/ Andre' Xxxxxx
------------------------------- -------------------------------
Name: Xxxxxx X. Xxxxxxx, Ph.D. Name: Andre' XxXxxx
Title: Research Director Title: Chairman
I hereby acknowledge and agree to the terms of Articles 4 and 5 and
Sections 2.2., 2.3., and 8.5. of this Agreement, and I reaffirm that I will
assign to Sponsor all of my right, title, and interest in any Inventions.
ACKNOWLEDGED AND AGREED:
/s/ Xxxxxx Xxxxxxx, M.D.
-------------------------------
Xxxxxx Xxxxxxx, M.D.
Principal Investigator
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Exhibit A
Montefiore Medical Center
Research Project Summary
The following list represents the proposed projects on the applications of
pulsed magnetic fields (PMF) to be carried out in the [*] at Montefiore Medical
Center. The subdivisions are not listed in order of performance. Additional
projects may be added as time and resources allow, subject to agreement by the
Sponsor, the Institution, and the Principal Investigator.
I. Cardiac
A. Develop a [*] model in the rat. Create an [*] in rats to
achieve maximum survival rate.
B. Treatment with PMF in the fresh rat [*] model to evaluate
angiogenesis in [*] area.
C. Stem cell treatment in rat of chronic [*] augmented with
PMF treatment (angiogenesis).
II. [*]
A. Treatment of [*] brain of rat treated with dopamine
stem cells augmented with PMF (angiogenesis).
III. Wound Healing
A. Augmentation of healing of linear incision skin wound in a
rat with PMF.
B. Treatment of [*] in a rat with PMF.
C. Treatment of [*] in a rat with PMF.
IV. Xxxxx
A. Treatment of xxxxx in a rat model with PMF.
V. Flaps
A. Study of [*] in rats modified and treated with PMF
(angiogenesis).
VI. Edema
A. Modification of [*] in a rat model with PMF.
VII. [*]
A. Angiogenesis in [*] to effect early closure (of the [*] in
[*]) with PMF.
VIII. [*]
A. Treatment of [*] in a rat model with PMF (angiogenesis).
B. Treatment of [*]in a rat model with PMF.
Exhibit B
Sponsor Contributions
Montefiore Medical Center
Research Project Budget
Salary: Dr. [*] (Fellow) $ 65,000
Fringe Benefits (23%) 14,950
Dr. [*] 78,000
Fringe Benefits (23%) 17,940
--------
Total Salary and Benefits $175,890
Total Research Project Expenses 274,110
Overhead (15%) 45,685
--------
Total Sponsor Contribution $495,685
The total Sponsor Contribution is to be paid according to the following
schedule:
Date of execution of the agreement $247,842.50
Three month anniversary of the execution of the agreement $123,921.25
Six month anniversary of the execution of the agreement $123,921.25
Total $495,685.00
