Exhibit 10.4
RESEARCH AGREEMENT
This agreement is entered into the 2nd day of June, 2006, by and between
NanoDynamics, Inc., a corporation with principal offices in Buffalo, New York
("SPONSOR"), and CLARKSON UNIVERSITY, a New York not-for-profit education
corporation with principal offices in Potsdam, New York ("CLARKSON").
It is mutually agreed that SPONSOR will provide research support to CLARKSON
for, and CLARKSON will exert its commercially reasonable efforts in performing,
a research program in accordance with the following:
1. SCOPE OF WORK
CLARKSON will utilize its commercially reasonable efforts to provide
certain inventions and intellectual property associated therewith
pertaining to (i) The design of thin film reactors and similar systems
useful for process intensification (ii) the process of operating and using
such reactors and systems to synthesize complex organic and inorganic
molecules, and (iii) unique compositions of matter resulting from such
process.
2. PERIOD OF PERFORMANCE
The term of this Agreement shall be from June 2, 2005 through June 1, 2007,
(the "Contract Period") unless terminated as hereinafter provided. The term
may be extended upon mutual agreement of the parties.
3. COSTS
A. Sponsor shall provide research support to Clarkson for the Research
Program at a fixed amount of $70,000 for the Contract Period,
according to the Research Program budget set forth on Attachment A.
The Principal Investigator may re-budget funds as needed to best
accomplish the research; provided, however, that in no event shall
SPONSOR be obligated to contribute additional funds in support of the
Research Program absent its further written agreement to do so.
X. XXXXXXXX will submit invoices to SPONSOR on the following date(s):
(check one)
[ ] Annually On __________
[ ] Quarterly On __________
[X] Monthly On __________
[ ] Other On __________
C. All invoices shall be sent to the following address:
NanoDynamics, Inc.
Attn: Xxxxxxx XxXxxxxx, VP/CAO
000 Xxxxxxxx Xxxx.
Xxxxxxx, XX 00000
X. XXXXXXXX shall maintain complete and accurate accounting records to
substantiate charges hereunder. The SPONSOR shall have reasonable
access to such records for purposes of audit and verification of such
charges during the term of this Agreement and for a period of one year
after its completion. Such audit and verification activities shall be
conducted upon prior written notice at a mutually agreeable time
during normal business hours and in a manner calculated to avoid
disruption of CLARKSON's operations.
E. The agreed upon payment represents all direct and indirect costs
associated with conducting the Research Program that are to be charged
to SPONSOR, including all overhead and infrastructure costs. CLARKSON
agrees not to utilize any additional external source of financial
support for any part of the Research Program.
4. RESEARCH PROGRAM
X. XXXXXXXX will use commercially reasonable efforts to conduct the
Research Program described in Attachment A under the direction of Xx.
Xxxxxx Xxxxxxx (the "Principal Investigator").
B. SPONSOR understands that CLARKSON's primary mission is education and
advancement of knowledge and that the Research Program will be
designed to carry out that mission. The manner of performance of the
Research Program shall be determined solely by the Principal
Investigator. CLARKSON does not guarantee specific results.
C. SPONSOR understands that CLARKSON may from time to time be involved in
similar research on behalf of itself and others. CLARKSON shall be
free to initiate and/or continue such research provided that it does
not cover essentially the same if scope of the Research Program
described in Attachment A while this Agreement is in effect, and
SPONSOR shall not gain any rights via this Agreement to other
research.
X. XXXXXXXX does not guarantee that any patent rights will result from
the Research Program, that the scope of any patent rights relating to
the Research Program will cover SPONSOR's commercial interest, or that
any patent rights will be free of dominance by other patents,
including those based on inventions made by other inventors employed
by CLARKSON.
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5. TECHNICAL REPORTS
Progress reports shall be provided by CLARKSON to SPONSOR quarterly during
the contract period and a final report shall be submitted within ninety
(90) days after the end of the contract period.
6. CONFIDENTIAL INFORMATION
A. "Confidential Information" shall mean that information: (1) disclosed
to CLARKSON by SPONSOR in connection with, and during the term of,
this Agreement; and (2) which relates to SPONSOR's past, present and
future research, development and business activities; and (3) which
has been identified in writing to CLARKSON at the time of disclosure
as the confidential information of SPONSOR. The term Confidential
Information shall not mean any information which is known to CLARKSON
prior to receipt from SPONSOR, or, without breach of this Agreement,
is publicly disclosed by a third party without (to CLARKSON's
knowledge) an obligation of confidence either prior or subsequent to
receipt by CLARKSON.
B. For a period of (5) years from the effective date of this Agreement,
CLARKSON agrees to hold all SPONSOR Confidential Information in
confidence and, except as otherwise provided in this Agreement, not to
use such Confidential Information other than for the benefit of
SPONSOR. Except as may be authorized by SPONSOR in writing or as
required by law or legal process, for such period of time, CLARKSON
agrees not to disclose any Confidential information, by publication or
otherwise, to any person other than those persons whose services
CLARKSON requires and who have a need to know the Confidential
Information for purposes of carrying out the terms of this Agreement,
and who are obligated to comply with the provisions of this Section 6.
X. XXXXXXXX shall not be responsible for disclosure of Confidential
Information by employees of CLARKSON after termination of their
employment if CLARKSON takes reasonable steps to prevent such
Confidential Information disclosure violations.
D. In the event of a loss of any items containing Confidential
Information, CLARKSON shall promptly notify SPONSOR in writing.
X. XXXXXXXX retains the right to refuse to accept any purportedly
Confidential Information which it does not consider to be essential to
performance of research pursuant to this Agreement, or which it
believes to be improperly designated as such.
7. PUBLICATION
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A. Notwithstanding Section 6, the investigators, students, and CLARKSON
personnel engaged in the Research Program shall be permitted to
present at symposia and national or regional professional meetings,
and to publish in journals of their own choosing or otherwise,
accounts of the results of such research, provided that SPONSOR shall
have been furnished a copy of the proposed publication or presentation
prior to submission and shall not have objected to the presentation or
publication within thirty (30) days after receipt of such copy. Delays
beyond thirty (30) days will be permitted only for the purpose of
applying for any appropriate Intellectual property protection. The
investigator, student(s) and CLARKSON personnel shall cooperate in all
reasonable respects in making revisions to any proposed disclosures if
considered by SPONSOR to be in conflict with a patent position
intended or being asserted or maintained by SPONSOR. However, in no
event may SPONSOR delay publication or presentation beyond six months
after a copy has been furnished to SPONSOR as described above.
B. Limitations on publications and presentations, identified in A above,
shall not limit the discussion of pertinent portions of the Research
Program with co-workers on CLARKSON's campus in performing the
Research Program, nor shall they prohibit student(s) from presenting
theses in fulfillment of requirements for advanced degrees.
8. INTELLECTUAL PROPERTY RIGHTS
A. SPONSOR INVENTIONS. Rights to inventions, improvements, and
discoveries, whether or not patentable, conceived or fixed in a
tangible medium under any Research Project Initiative solely or
substantially by the employees/agents of SPONSOR shall belong to
SPONSOR ("SPONSOR Invention"). SPONSOR Invention(s) shall not be
subject to the terms and conditions of this Agreement.
X. XXXXXXXX INVENTIONS. Rights to inventions, improvements, and
discoveries, whether or not patentable, conceived or fixed in a
tangible medium under any Research Project Initiative solely or
substantially by the employees/agents of CLARKSON shall belong to
CLARKSON (hereafter "CLARKSON Invention"). SPONSOR shall be notified
of any such invention promptly after an invention disclosure is
received by CLARKSON. In consideration of SPONSOR's sponsorship,
CLARKSON hereby grants to SPONSOR a non-exclusive, transferable,
irrevocable, world-wide, royalty-free license to use such CLARKSON
inventions in all fields of use. Pursuant to Section 8.D, SPONSOR will
be provided a first right to negotiate an exclusive license in all
fields of use under any CLARKSON Invention with royalty arrangements
and contractual terms to be negotiated as early as possible.
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C. JOINT INVENTIONS. Rights to inventions, improvements, and discoveries,
whether or not patentable, conceived or fixed in a tangible medium
under any Research Project Initiative jointly by one or more SPONSOR
employees/agents and one or more employees and/or agents of CLARKSON,
shall belong to SPONSOR and CLARKSON jointly ("Joint Invention"). Both
SPONSOR and CLARKSON have the right to make, have made, reproduce,
use, sell, and offer to sell Joint Inventions in consultation with the
other party. In the event, SPONSOR requests exclusive ownership or use
of the Joint Invention in all fields of use, CLARKSON and SPONSOR will
promptly enter into negotiations for an EXCLUSIVE license agreement
for SPONSOR in all fields of use with mutually agreeable royalty
arrangements and contractual terms.
D. LICENSING. CLARKSON grants SPONSOR the first option to negotiate, in
good faith, an EXCLUSIVE royalty-bearing license in all fields of use
to make, have made, reproduce, use, sell, and offer to sell all
CLARKSON Inventions and all Joint Inventions made in the course of
work under this Agreement. In the event that SPONSOR and CLARKSON are
unable to negotiate an exclusive license with SPONSOR within one
hundred twenty (120) days from the date CLARKSON provides SPONSOR with
notification of the invention, then CLARKSON will be free to enter
into NON-EXCLUSIVE licenses with any one or more third parties.
E. GOVERNMENT RIGHTS. Notwithstanding the contents of Sections 8.A
through 8.D above, SPONSOR and CLARKSON each recognize and acknowledge
that federally-funded sponsored research is predisposed to, and
conditioned upon, compliance with certain intellectual property rights
as will be addressed in the federally-funded sponsored program
instrument (e.g. grant, cooperative agreement, contract). SPONSOR and
CLARKSON each agree to comply with the legal and regulatory
requirements of any such federally-funded sponsored Research Program.
F. NO LICENSE. Except as expressly provided in this Agreement, including
any Addenda, no license, express nor implied, shall inure to the
benefit of either SPONSOR or CLARKSON under any patents, copyrights,
trademarks or service marks now owned by either of them or as a result
of a patent being granted to one of them for inventions made
exclusively by its employees/agents, or for copyrights vested in one
of them due to works of original authorship by its employees/agents.
G. PATENT COSTS. Without limiting CLARKSON's ownership rights as
described Section 8.B., SPONSOR shall pay all costs associated with
CLARKSON obtaining and maintaining patent protection for CLARKSON
Intellectual Property. Provided, however, if SPONSOR decides that it
is not appropriate to apply for patent protection for CLARKSON
Intellectual Property, SPONSOR shall have no obligation to pay for
such costs and in such event the rights granted under Section 8.B
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to SPONSOR by CLARKSON in respect to such Intellectual Property shall
automatically lapse.
9. PUBLICITY
Notwithstanding any other provisions of this Agreement, SPONSOR will not
use the name, service marks or trademarks of CLARKSON, or of any CLARKSON staff
or students, in any publicity without the prior written approval of CLARKSON.
CLARKSON will not use the name, service marks or trademarks of SPONSOR, or of
any employee of SPONSOR, in any publicity without the prior written approval of
SPONSOR.
10. CLARKSON'S OBLIGATIONS-EMPLOYEES/OTHER
X. XXXXXXXX will have an appropriate agreement with each of its employees
or others whose services CLARKSON may require, sufficient to enable
CLARKSON to comply with all the terms of this Agreement.
B. Personnel provided by CLARKSON are employees of CLARKSON and will not
for any purpose be considered employees or agents of SPONSOR.
C. The parties shall be independent contractors and not joint venturers,
principal and agent, or any other similar relationship. Neither party
shall have, or hold itself out as having, the power or authority to
bind or create liability for the other by its negligent or intentional
act or omission.
11. EQUIPMENT
Title to all equipment purchased for the Research Program shall vest with
CLARKSON at the time of purchase unless otherwise specified herein.
12. WARRANTIES
CLARKSON represents and warrants that CLARKSON is under no obligation or
restriction, nor will CLARKSON assume any such obligation or restriction,
which would in any way materially interfere or be inconsistent with, or
present a conflict of interest concerning, the services to be furnished by
CLARKSON under this Agreement.
CLARKSON and SPONSOR each represent and warrant to the other party that
they have full power and authority to enter into this Agreement and carry
out the transactions contemplated by this Agreement and that all necessary
corporate action has been duly taken in this regard.
13. ASSIGNMENT AND DELEGATION
No right or interest in this Agreement shall be assigned by CLARKSON
without the written permission of SPONSOR and any purported assignment is
void. No
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delegation of the services or other obligations owed by CLARKSON to
SPONSOR, whether set forth in Section 1 or elsewhere in this Agreement,
shall be made without SPONSOR's prior written permission.
14. TERMINATION/SURVIVAL
A. Either CLARKSON or SPONSOR may terminate this Agreement upon thirty
(30) days' written notice to the other without necessity of
demonstrating cause. In the event of such termination, the parties
shall negotiate an equitable settlement based on actual expenses plus
any non-cancelable commitments incurred by CLARKSON through the
effective date of termination, less any sums paid by SPONSOR. In no
event shall the settlement exceed the sum due under Section 3.
B. Either party may terminate this Agreement upon 10 days' prior written
notice of a material breach by the other party, unless the breaching
party cures the breach to the reasonable satisfaction of the
non-breaching party within such 10 day period.
C. Subject to CLARKSON's rights under Section 8, in the event of
termination of this Agreement pursuant to Section 14.A., termination
of this Agreement pursuant to Section 14.B. due to breach by CLARKSON,
or expiration of this Agreement, CLARKSON shall turn over to SPONSOR
all work product of the services rendered under this Agreement, in its
"as is" condition at the effective date of the termination or
expiration of this Agreement, CLARKSON shall also return to SPONSOR
all drawings, blueprints, descriptions, papers, or documents which
contain SPONSOR's Confidential Information.
D. The rights and obligations of the parties under Sections 6, 7, 8, 9
and 15 shall survive any cancellation, expiration or termination of
this Agreement.
15. WARRANTY AND LIABILITY DISCLAIMERS
A. SPONSOR ACKNOWLEDGES THAT NEITHER CLARKSON NOR ANY OF ITS TRUSTEES,
OFFICERS, EMPLOYEES, AGENTS, OR REPRESENTATIVES MAKES ANY WARRANTIES
(INCLUDING WITHOUT LIMITATION WARRANTIES OF MERCHANTABILITY, FITNESS
FOR A PARTICULAR PURPOSE, NON-INFRINGEMENT, OR TITLE), EXPRESS OR
IMPLIED, CONCERNING THE RESULTS OF THE RESEARCH PROGRAM (INCLUDING
WITHOUT LIMITATION ANY INVENTIONS). ALL WARRANTIES MADE OR TO BE MADE
IN CONNECTION WITH THE RESULTS OF THE RESEARCH PROGRAM OR ANY
INVENTIONS SHALL BE MADE SOLELY BY SPONSOR, AND NONE OF SUCH
WARRANTIES SHALL DIRECTLY, OR INDIRECTLY BY
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IMPLICATION, OBLIGATE IN ANY WAY CLARKSON OR ANY OF CLARKSON'S
TRUSTEES, OFFICERS, EMPLOYEES, AGENTS, OR REPRESENTATIVES.
B. Neither CLARKSON nor any of its trustees, officers, employees, agents,
or representatives will be liable for any direct, indirect,
consequential or other damages suffered by SPONSOR or any other party
as a result of SPONSOR's use of the results of the Research Program.
16. INDEMNIFICATION
SPONSOR shall defend with competent counsel, indemnify, and hold harmless
CLARKSON and its trustees, officers, employees, agents and representatives
from and against any and all claims, demands, actions, suits and
proceedings (whether civil, criminal or administrative), and all liability,
loss, expense (including reasonable attorneys' fees), costs or damages,
relating directly or indirectly to or arising out of the use of the results
of the Research Program by or for the benefit of SPONSOR or any of its
licensees, successors, assignees, or ultimate end-users.
17. INSURANCE
A. Beginning at the commencement of the Research Program, SPONSOR shall,
at its sole cost and expense, procure and maintain commercial general
liability insurance in amounts not less than $1,000,000.00 per
incident and $2,000,000.00 annual aggregate, and SPONSOR shall have
CLARKSON, its trustees, officers, employees, agents, and
representatives named as additional insureds. Such commercial general
liability insurance shall provide (I) product liability coverage; (ii)
broad form contractual liability coverage for SPONSOR's
indemnification obligations under this Agreement; and (iii) coverage
for litigation costs. The minimum amounts of insurance coverage
required shall not be construed to create a limit of SPONSOR's
liability with respect to its indemnification obligations under this
Agreement.
B. SPONSOR shall maintain such commercial general liability insurance
beyond the expiration or termination of this Agreement if the policy
is a claims made policy during (i) the period that any subject matter
developed pursuant to this Agreement is being commercially distributed
or sold by or for the benefit of SPONSOR or any its licensees or
assignees; and (ii) the five (5) year period immediately after such
period.
C. SPONSOR shall provide CLARKSON with written evidence of such insurance
upon CLARKSON's request. SPONSOR shall arrange for CLARKSON to receive
written notice at least fifteen (15) days prior to the cancellation,
non-renewal or material change in such insurance.
18. SOLE AGREEMENT/CHANGE
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This Agreement, including all exhibits referenced herein, shall be the
complete Agreement of the parties hereto and shall supersede all prior
agreements and understandings between the parties respecting the subject
matter hereof. Any changes or modifications of this Agreement must be in
writing and signed by both parties.
19. NEW YORK LAW
This Agreement shall be construed, and the legal relations between the
parties hereto shall be determined, in accordance with the laws of the
State of New York without regard to its conflicts of laws principles.
20. NOTICES
All notices and correspondence required to be given hereunder shall be in
writing and, if to SPONSOR, sent to:
Xxxxx X. XxXxxxx
Corporate Counsel
NonoDynamics, Inc.
000 Xxxxxxxx Xxxx.
Xxxxxxx, XX 00000
except as otherwise provided herein for reports and invoices, and, if to
CLARKSON sent to:
Clarkson University
Division of Research
101 Xxxxxxxx X. Xxxxx Xxxx
XX Xxx 0000
Xxxxxxx, XX 00000-0000
ATTN: Xxxxxxx X. Xxxxx, Director of Research and Technology
Transfer
21. COMPLIANCE WITH LAWS
CLARKSON and SPONSOR shall comply with, and this Agreement shall be
subordinate to, all applicable federal, state and municipal laws, rules and
regulations in connection with the performance of the Research Project and
the disclosure and use of the results thereof.
To the extent that the United States Government (through any of its
agencies or otherwise) has funded research as part of the Research Program,
the parties acknowledge that the United States Government is entitled, as a
right, under the provisions of 35 U.S.C. Section 202-212 and applicable
regulations of Title 37 of the Code of Federal Regulations, to a
non-exclusive, nontransferable, irrevocable, paid-up license to practice or
have practiced any of the inventions conceived or made pursuant to the
Research Program for governmental purposes and any
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license granted to SPONSOR as a result of such inventions shall be subject
to such right.
22. WAIVER
A failure by one of the parties to this Agreement to assert its rights for
or upon any breach or default of this Agreement shall not be deemed a
waiver of such rights nor shall any such waiver be implied from acceptance
of any payment. No such failure or waiver in writing by any one of the
parties hereto with respect to any rights, shall extend to or affect any
subsequent breach or impair any right consequent thereon.
23. SEVERABILITY.
The parties agree that it is the intention of neither party to violate any
public policy, statutory or common laws, and governmental or supranational
regulations; that if any sentence, paragraph, clause or combination of the
same is in violation of any applicable law or regulation, or is
unenforceable or void for any reason whatsoever, such sentence, paragraph,
clause or combinations of the same shall be inoperative and the remainder
of the Agreement shall remain binding upon the parties.
24. EXPORT CONTROL COMPLIANCE REQUIREMENTS.
This agreement shall be in accordance with the Export Control Compliance
regulations.
The parties have caused this Agreement to be signed in duplicate by their duly
authorized representatives.
CLARKSON UNIVERSITY SPONSOR
By: /s/ Xxxxxxx Xxxxx By: /s/ Xxxxx X. Xxxxxxx
--------------------------------- ------------------------------------
Signature Signature
Xxxxxxx X. Xxxxx Xxxxx X. Xxxxxxx
------------------------------------- ----------------------------------------
Director of Research and Technology Title
Transfer
05 July 06 07/07/06
------------------------------------- ----------------------------------------
Date Date
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Principal Investigator
/s/ Signature
-------------------------------------
Signature
07/07/06
-------------------------------------
Date
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ATTACHMENT A
RESEARCH PROGRAM (INCLUDING BUDGET)
- Photo polymerization of acrylates using narrow channel reactor
- Photo as well as thermal polymerization of styrene using rotating tube
reactor
- Microwave assisted reactions in compact continuous flow reactors
- Mass transfer characteristics of gas-liquid flow in narrow channel
reactors
- Bio diesel production using narrow channel system.
"Xxxxxxx will play hands on role for design, development and commissioning of
the first three prototype IPSs (Intensified Process Systems). Once a standard
design has been established and a commercial sale has been made Jachuck's role
will shift into R&D planning, new designs of process modules, novel process
design, promotion of ND Fusion's activity within the industrial as well as
academic circle by means of presentation in internationally reputed conferences,
exhibitions and workshops. Xxxxxxx will also act as a solution provider for
process intensification related issues as and when this is deemed to be
essential."
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