1
Exhibit 10.17
THIS (the "Agreement") is made as of March
29, 1996 ("Effective Date") by and between Xxxxxx Xxxxxx Cancer Center ("SKCC")
and Introgen Therapeutics, Inc., a Delaware corporation duly organized and
existing under the laws of Delaware ("Sponsor").
RECITALS
A. SKCC desires to conduct certain research hereinafter described, and
Sponsor is willing to advance funds for purposes of such research.
B. As a benefit of funding such research, Sponsor desires to obtain the
exclusive rights to certain inventions made during the course of such research
pursuant to the License Agreement entered into between the parties of even date
with this Agreement (the "License Agreement").
NOW THEREFORE, in consideration of the mutual covenants and promises
herein contained, SKCC and Sponsor agree as follows:
ARTICLE 1
RESEARCH PROGRAM
1.1 General.
(a) Within forty-five (45) days of the Effective Date, the
parties will agree by mutual consent on a research program that will be set
forth in Attachment A hereto (the "Research Program"). SKCC will use its
reasonable efforts to conduct the Research Program in accordance with the
description set forth in Attachment A, and will furnish the facilities necessary
to carry out said Research Program. The Research Program will be under the
direction of [*] (the "Principal Investigator") and will be conducted at Xxxxxx
Xxxxxx Cancer Center. The Research Program may be modified from time to time
with the consent of Sponsor and the Principal Investigator.
(b) Except as the parties may otherwise agree, it is
understood that the Research Program will not include: [*] licensed or assigned
to [*] as amended prior to the Effective Date. [*].
1.2 Period. The Research Program shall be performed during the period
commencing on the Effective Date and continuing for two (2) years thereafter.
The duration of the Research Program period may be extended by written
agreement between Sponsor, SKCC and the Principal Investigator.
2
1.3 Records. SKCC will ensure that the Principal Investigator and other
personnel assisting in the Research Program will keep accurate financial and
scientific records relating to the Research Program and will make such records
available to Sponsor or Sponsor's authorized representative throughout the term
of this Agreement during normal business hours upon reasonable notice. It is
understood that such records shall include detailed, witnessed laboratory
notebooks sufficient to document any inventions made in the course of the
Research Program. Upon request by Sponsor and at Sponsor's expense, SKCC agrees
promptly to provide copies of all such materials to Sponsor, in whatever
condition maintained by the Principal Investigator and his staff.
1.4 Disclaimer. SKCC does not guarantee that any patentable inventions
will result from the Research Program, that the claims of any patent obtained
will cover Sponsor's commercial interests, or that any such patent will be free
of dominance by other patents, including those based upon inventions made by
other SKCC faculty independent of the Research Program.
1.5 Use of Funds. All funds provided by Sponsor shall be used only in
accordance with the Research Program.
ARTICLE 2
COMPENSATION
2.1 Payments. As consideration for the performance by SKCC of its
obligations under this Agreement, Sponsor will pay SKCC [*]. Beginning with the
first calendar month commencing after the date of this Agreement, and continuing
for two years, Sponsor shall pay to SKCC the amounts referenced above at such
times and in such amounts as deemed necessary and appropriate to achieve the
objectives of this Agreement, with such payments being made, [*].
2.2 Handling. SKCC shall use the funds provided by Introgen for wages
and supplies, and such other operating expenses as SKCC and Sponsor mutually
approve, which are incurred directly in the performance of the Research Program.
It is understood that funds of the Research Program which are not used in a
particular month may be used in subsequent periods during the term of this
Agreement [*].
ARTICLE 3
CONSULTATION AND REPORTS
3.1 Designated Representative. Sponsor's designated representative for
consultation and communications with the Principal Investigator shall be Xxxxx
X. Xxxxx, President & CEO of Sponsor, or such other person as Sponsor may from
time to time designate in writing to SKCC and the Principal Investigator.
-2-
3
3.2 Coordination. The parties acknowledge that Sponsor will also
conduct activities related to the research to be performed by SKCC under the
Research Program. To ensure that such activities remain coordinated, Sponsor
shall meet or consult with the Principal Investigator periodically to establish
and revise priorities for work to be performed under the Research Program,
including the research experiments and other steps to be taken by Principal
Investigator in pursuit of those priorities, all under the provisions of Section
1.1 above. Unless otherwise agreed, such meetings or consultations shall take
place [*], and the Principal Investigator shall conduct the Research Program in
all respects in accordance with the priorities and steps so established by
mutual agreement of the parties pursuant to Section 1.1 above.
3.3 Reports. The Principal Investigator shall submit to Sponsor [*] a
written technical report summarizing in reasonable detail the research and
results obtained therefrom during the prior [*] period relating to research in
connection with the Research Program. [*], the Principal Investigator shall
submit to Sponsor a final written technical report of all activities undertaken
and all accomplishments achieved in connection with the Research Program. In
addition, [*] of the Research Program, SKCC's Office of Accounting shall submit
to Sponsor a final financial report of income and expenses of the Research
Program [*].
ARTICLE 4
PUBLICITY
Except as required by law or in the normal course of business
identification, neither SKCC nor Sponsor shall issue any press release or make
any other written statements in connection with work performed under this
Agreement intended for use in the public media in a manner suggesting any
endorsement by the other, without approval of such other party, which approval
shall not be unreasonably withheld. Both Sponsor and SKCC, however, shall
acknowledge Sponsor's support of the Research Plan under this Agreement in
scientific publications and other scientific communications. In any other
statements, the parties shall describe the scope and nature of their
participation accurately and appropriately.
ARTICLE 5
PUBLICATION AND ACADEMIC RIGHTS
5.1 Ownership. Subject to Section 7.1 below, SKCC retains all ownership
rights with respect to inventions, data, results and other proprietary
information developed by SKCC personnel during the course of the Research
Program. Subject to the rights granted to Sponsor pursuant to this Agreement and
the License Agreement and to Article 6 below, SKCC shall have the right to
publish or otherwise disclose all technical reports, information and/or data
developed by SKCC personnel during the course of the Research Program. Subject
to Article 6 below, Sponsor shall have the right
-3-
4
to use, disclose and exploit such reports, data and information for so long as
the license granted to Sponsor under Section 3.1(b) of the License Agreement
remains in effect.
5.2 Publication. To avoid loss of patent rights as a result of
premature public disclosure of patentable information, SKCC, the Principal
Investigator and his staff each agree to submit to Sponsor, [*] to submission
for publication or disclosure, materials intended for publication or disclosure
relating to technical reports, data, or information developed by the Principal
Investigator or other SKCC personnel during the course of or as a follow-up to
the Research Program. Sponsor shall notify SKCC [*] of such materials whether or
not Sponsor desires SKCC to file a patent application on any invention disclosed
in such materials pursuant to the License Agreement. In the event that Sponsor
desires to file such a patent application, the Principal Investigator shall
withhold publication and disclosure of such materials [*] from the date of
receipt of such materials by Sponsor. Further, if Sponsor believes that such
material contains Confidential Information (as defined in Section 6 below) of
Sponsor, SKCC, the Principal Investigator and his staff each agree [*].
ARTICLE 6
CONFIDENTIAL INFORMATION
The parties may, from time to time, in connection with the License
Agreement and the Research Program, disclose to each other Confidential
Information. "Confidential Information" shall mean any information disclosed
orally, in writing or otherwise by one party (the "Disclosing Party") to the
other party (the "Receiving Party"). The Receiving Party shall not use
Confidential Information of the Disclosing Party except as expressly authorized
in this Agreement or the License Agreement, and shall use its best efforts to
prevent the disclosure of the Disclosing Party's Confidential Information to
third parties; provided that the Receiving Party's obligations under this
Article 6 shall not apply to Confidential Information that:
(i) is in the Receiving Party's possession at the
time of disclosure thereof as demonstrated by documentary evidence;
(ii) is or later becomes part of the public domain
through no fault of the Receiving Party's personnel;
(iii) is received from a third party having no
obligations of confidentiality to the Disclosing Party; or
(iv) is developed independently by the Receiving
Party without access to the Disclosing Party's Confidential Information.
-4-
5
Notwithstanding the foregoing, the parties acknowledge and agree that
any Licensed Subject Matter (as defined in the License Agreement) may be used
and disclosed to third parties by Licensee pursuant to the License Agreement.
ARTICLE 7
PATENTS RIGHTS AND TECHNOLOGY RIGHTS
7.1 Ownership. SKCC shall own all right, title and interest in and to
any inventions conceived or first reduced to practice by SKCC personnel during
the term of this Agreement in the course of performing the Research Program, to
the extent that such SKCC personnel would be an inventor thereof under U.S.
patent law. Patent rights to inventions that are made jointly by employees of
SKCC and Sponsor shall be owned jointly. For purposes of this Section 7.1
whether an invention is made "jointly" shall be determined under principles of
inventorship in accordance with U.S. patent law, and "joint ownership" means
that, subject to any royalties owing under the License Agreement, each party is
free to exploit such patent rights and authorize others to do so, with no
obligation to account to the other party, for profits or otherwise or to obtain
the consent of the other party.
7.2 Notice. SKCC shall notify Sponsor promptly in writing of all
discoveries and inventions disclosed to SKCC by Principal Investigator, [*] or
other SKCC personnel under [*] supervision that arise out of or in connection
with the Research Program during the term of this Agreement. The filing for,
prosecution of applications and maintenance of patents on such inventions shall
be handled in accordance with Article 9 of the License Agreement.
7.3 Assignments. SKCC shall have in place or obtain appropriate written
agreements from all personnel involved in the Research Program, such agreements
to require that all discoveries and inventions first conceived or reduced to
practice as a result of or in connection with research conducted at SKCC shall
be reported promptly and assigned to SKCC.
ARTICLE 8
INDEPENDENT CONTRACTOR
For the purposes of this Agreement and all services to be provided
hereunder, the parties shall be, and shall be deemed to be, independent
contractors and not agents or employees 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 expressly provided for herein or authorized in writing.
-5-
6
ARTICLE 9
TERM AND TERMINATION
9.1 Term. The term of this Agreement shall commence on the Effective
Date and extend for two (2) years, unless sooner terminated in accordance
with the provisions of this Article 9.
9.2 Termination by Sponsor. In the event that Sponsor determines, at
any time [*], that the Research Program is no longer academically, technically
or commercially feasible or desirable, Sponsor shall have the right to terminate
this Agreement [*].
9.3 Termination for Breach. In the event that either party to this
Agreement shall be in breach or default of an obligation under this Agreement
and shall fail to remedy such breach or default within [*], the other party to
this Agreement shall be entitled to terminate this Agreement [*].
9.4 Consequences of Termination. Termination or cancellation of this
Agreement shall not affect the rights and obligations of the parties accrued
prior to termination; nor shall a termination of this Agreement affect the
parties' rights or obligations under the License Agreement except as provided in
Section 5.3.2 of the License Agreement.
9.5 Survival. The following sections of this Agreement shall survive
expiration or termination of this Agreement for any reason: Sections 2.2 and
3.3, and Articles 4, 5, 6, 7, 9 and 10.
ARTICLE 10
GENERAL
10.1 Assignment. This Agreement may not be assigned or transferred by
either party without the prior written consent of the other party; provided,
however, that Sponsor may assign or transfer its rights and obligations under
this Agreement to a successor to all or substantially all of its assets or
business relating to this Agreement, whether by sale, merger, operation of law
or otherwise upon written notice to SKCC.
10.2 Entire Agreement. This Agreement constitutes the entire and only
agreement between the parties relating to the subject matter hereof, and all
prior negotiations, representations, agreements and understandings are
superseded hereby. No agreements altering or supplementing the terms hereof may
be made except by means of a written document signed by the duly authorized
representatives of the parties.
10.3 Notices. Any notice required by this Agreement shall be given by
prepaid, first class, certified mail, return receipt requested, addressed to:
-6-
7
If to SKCC: Xxxxx Xxxx
Xxxxxx Xxxxxx Cancer Center
0000 Xxxxxxx Xxxx Xxxx
Xxx Xxxxx, XX 00000
If to Licensee: Xxxxx X. Xxxxx, President
Introgen Therapeutics, Inc.
000 Xxxxxxxx Xxxxxx
Xxxxx 0000
Xxxxxx, XX 00000
or at such other addresses as may be given from time to time in accordance with
the terms of this notice provision.
10.4 Governing Law. This Agreement shall be governed by, construed, and
enforced in accordance with the laws of the State of Texas, without regard to
conflicts of laws.
10.5 Headings. The headings of the several sections of this Agreement
are intended for convenience of reference only and are not intended to be a part
of or to affect the meaning or interpretation of this Agreement.
10.6 Severability. If any provision of this Agreement shall be found by
a court to be void, invalid or unenforceable, the same shall be reformed to
comply with applicable law or stricken if not so conformable, so as not to
affect the validity or enforceability of the remainder of this Agreement.
10.7 Counterparts. This Agreement may be executed in counterparts, each
of which shall be deemed an original, but both of which together shall
constitute one and the same instrument.
-7-
8
IN WITNESS WHEREOF, the parties have caused this Agreement to be
executed by their duly authorized representatives.
INTROGEN THERAPEUTICS, INC. XXXXXX XXXXXX CANCER CENTER
("Sponsor") ("SKCC")
By: /s/ XXXXX X. XXXXX By: /s/ XXXXX X. XXXX
-------------------- ------------------------
Print Name: Xxxxx X. Xxxxx Print Name: Xxxxx X. Xxxx
Title: President Title: Executive Vice President
Date: March 29, 1996 Date: March 29, 1996
-8-
9
ATTACHMENT A
RESEARCH PROGRAM
[*]
