DETERMINATION OF INTELLECTUAL PROPERTY RIGHTS AGREEMENT
EXHIBIT
10.10
This
Determination of Intellectual Property Rights Agreement (“Agreement”) is made as
of the first day of July, 2002 (“Effective Date”), between the University of
Rochester, an educational institution chartered by the State of New York
with
offices at 000 Xxxxx Xxxxxxxx, Xxx 000000, Xxxxxxxxx, Xxx Xxxx 00000-0000
(“University”), and VirtualScopics, LLC, a for-profit New York limited liability
company with offices at 000 Xxxxxx Xxxx, Xxxxxxxxx, Xxx Xxxx 00000
(“VirtualScopics”).
University
and VirtualScopics are parties to a certain Sale of Intellectual Property
Agreement, dated April 5, 2002, pursuant to which VirtualScopics acquired
rights
in and to University patents and patent applications listed in Attachment
A.
WHEREAS,
University permits its faculty members under its “Policy on External Activities
Relating to Research and Scholarship” to pursue consulting relationships with
external organizations; and
WHEREAS,
Xxxxx X. Xxxxxx, Ph.D (“Xx. Xxxxxx”) has a faculty appointment at University and
is a co-inventor of the patents and patent applications listed in Attachment
A;
and
WHEREAS,
VirtualScopics represents that it has retained Xx. Xxxxxx as a consultant
pursuant to a Consulting Agreement dated July 1, 2002 ("Consulting Agreement")
to assist VirtualScopics in development of image-based biomarkers and related
software for measuring image-based biomarkers as described in detail in
Attachment B (hereinafter “Fields of Invention”), as amended from time to time,
and that such Consulting Agreement will contain a representation from Xx.
Xxxxxx
that the Consulting Agreement is not inconsistent with University policies
pertaining to consulting services by full-time faculty members, copies of
which
are attached to this Agreement at Attachment C (the “University
Policies”);
THEREFORE,
in consideration of the premises and promises in this Agreement, the Parties
agree as follows:
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1.
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“VirtualScopics'
Subject Invention(s)” means all intellectual property, including without
limitation those listed on Attachment
A
and Attachment
B
and all technical information, know-how, copyrights, models, drawings,
specifications, prototypes, inventions and software, whether or
not
patentable, that is discovered, created or reduced to practice
by Xx.
Xxxxxx in performance of work on behalf of VirtualScopics under
his
consulting arrangement with
VirtualScopics.
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2.
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VirtualScopics
acknowledges that Xx. Xxxxxx is a faculty member at the University
and as
such performs work for the University in fields other than those
fields
that are within the Fields of Invention or the VirtualScopics'
Subject
Inventions.
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3.
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For
the purpose of complying with the terms of this agreement, the
Parties
agree to disclose to each other, in writing, each and every
VirtualScopics' Subject Invention during the term of this Agreement.
The
Parties will disclose VirtualScopics' Subject Inventions to each
other
within thirty (30) days after Xx. Xxxxxx first discloses the invention
in
writing to the person(s) responsible for invention matters of the
disclosing Party. In addition, each Party will disclose to the
other, in
writing, any VirtualScopics' Subject Invention disclosed to it
by Xx.
Xxxxxx during the time period beginning on the Effective Date and
ending
on the date of execution of this Agreement by both Parties, within
thirty
(30) days of such execution. All written disclosures of such inventions
shall contain sufficient detail of the invention and identification
of any
statutory bars, and shall be marked
confidential.
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Page
1
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4.
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Each
Party agrees that all information disclosed hereunder is Confidential
Information ("Confidential Information") and shall be held in the
strictest confidence. Each Party agrees that it will use the Confidential
Information disclosed to it by the other Party under this Agreement
only
for the purpose of monitoring and enforcing compliance with their
respective intellectual property policies, and will not disclose
such
Confidential Information to a third party; provided that a Party
may so
disclose Confidential Information that: (a) was independently known
by it
prior to the disclosure by the other Party; (b) becomes generally
known to
the public through no act or omission of the Party or any other
party with
no duty to keep such information confidential; (c) has been or
is made
available to the Party by a third party having the lawful right
to do so
without breaching any obligation to either Party; or (d) the Party
is
required to disclose pursuant to a judicial or administrative order,
provided that the Party shall notify the disclosing Party of the
order and
cooperate with the disclosing Party in obtaining a protective order
if it
opts to seek one. This provision shall survive the expiration or
termination of this Agreement.
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5.
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The
University agrees that it shall have no rights to or interest in
any of
the VirtualScopics’ Subject Inventions set forth on Attachments
A and B.
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6.
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With
respect to any VirtualScopics’ Subject Inventions (other than those set
forth on Attachments
A and B
which are addressed separately in Section 5 above), the University
agrees
that it shall have no rights to any VirtualScopics' Subject Inventions
made by Xx. Xxxxxx during the performance of this Agreement within
the
Fields of Invention that are developed by Xx. Xxxxxx solely or
jointly
with VirtualScopics or any third party other than the University
in any
laboratory, research facility, or other building of VirtualScopics
or a
partner of VirtualScopics other than the
University.
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7.
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VirtualScopics
acknowledges that the University does not waive any interest it
may have
in inventions, other than those inventions set forth on Attachments
A and B,
developed by Xx. Xxxxxx within the scope of his employment by the
University, and that all inventions made by Xx. Xxxxxx during the
term of
this Agreement, other than those inventions set forth on Attachments
A and B,
directly or indirectly developed with the use of significant University
resources and/or facilities, as defined in the University Policies,
shall
be the sole property of the
University.
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8.
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Each
party shall indemnify and hold the other harmless from and against
any and
all claims, liability, damage, loss, cost or expense (including
reasonable
attorneys’ fees and costs), whether incurred in a third party action or in
an action to enforce this Agreement, arising as a result of the
party’s
negligence, misconduct or breach of this Agreement. This indemnity
shall
survive termination of this Agreement and shall be effective
notwithstanding the limits of any applicable insurance coverage
on the
part of either party.
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Page
2
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9.
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This
Agreement will have a term beginning with the Effective Date and
ending
one hundred eighty (180) days after the termination or expiration
of Xx.
Xxxxxx’x consulting arrangement with VirtualScopics.
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10.
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This
Agreement may be terminated by a non-breaching party if another
Party
fails to comply with any term herein and such failure is not cured
to the
reasonable satisfaction of the non-breaching Party within thirty
(30) days
after the breaching Party’s receipt of notice of such breach. If the
breach has not been cured within such time, Xx. Xxxxxx’x consulting
arrangement with VirtualScopics will terminate at the end of the
calendar
month in which the time period expires, and this Agreement will
continue
for one hundred eighty (180) days thereafter.
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11.
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This
Agreement may be terminated by either Party without cause upon
one hundred
eighty (180) days written notice to the other Party. If the Agreement
is
terminated by VirtualScopics without cause under this provision,
Xx.
Xxxxxx’x consulting arrangement with VirtualScopics will also terminate
at
the end of such one hundred eighty (180) day
period.
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12.
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The
obligations of the Parties which have accrued as of the date of
termination or are intended to survive termination will not be
affected by
any termination of this Agreement. Termination of this Agreement
shall not
affect Xx. Xxxxxx’x obligations to VirtualScopics to comply with this
Agreement and the Consulting Agreement and Xx. Xxxxxx'x continuing
obligations as a University faculty member to comply with University
Policies including those related to intellectual property and performing
external activities as an independent consultant.
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13.
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This
Agreement will be construed in accordance with the laws of the
United
States of America and the State of New York, without reference
to its
conflict of law provisions. All actions or proceedings arising
in
connection with this Agreement will be tried and litigated exclusively
in
the courts located in Monroe County, New York. The parties consent
to the
exclusive personal jurisdiction of such venue, which choice of
venue is
intended by the parties to be mandatory and not permissive and
to preclude
the possibility of litigation between the parties arising out of
this
Agreement in any jurisdiction other than that specified in this
Section.
Each party waives any right it may have to assert the doctrine
of forum
non-conveniens or similar doctrine or to object to venue with respect
to
any proceeding brought in accordance with this
Section.
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14.
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This
Agreement may be executed in one or more counterparts, each of
which will
be deemed an original, and will become effective and binding upon
the
parties as of the execution date at such time as all the signatories
hereto have signed a counterpart of this
Agreement.
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15.
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This
Agreement is the entire agreement between the parties with respect
to its
subject matter, and it supersedes all other prior and contemporary
agreements and understandings, written or oral, between them with
respect
thereto. This Agreement may be modified only by a written instrument
signed by both parties.
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16.
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This
Agreement is binding on and will inure to the benefit of the respective
successors and permitted assigns of the
parties.
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17.
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All
rights and remedies available at law or in equity available to
a party are
will be considered to be cumulative and not limited by this
Agreement.
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Page
3
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18.
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All
notices to a party hereunder will be in writing and will be delivered
personally, by certified or registered mail (return receipt requested),
or
by a nationally recognized courier service with a tracking system
to
verify receipt. Notices will be effective upon receipt and delivered
to
the addresses set forth below or to such other address as may be
changed
by notice.
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Notices
to University will be sent to:
Director,
Office of Technology Transfer
University
of Rochester
000
Xxxxx
Xxxxxxxx, Xxx 000000
Xxxxxxxxx,
Xxx Xxxx 00000
Tel.:
000.000.0000
With
a
copy to:
General
Counsel
University
of Rochester
000
Xxxxxxx Xxxxxx, Xxx 000
Xxxxxxxxx,
Xxx Xxxx 00000
Tel.:
000.000.0000
Notices
to VirtualScopics will be sent to:
Xx.
Xxxxxx Xxxxxxxxx
VirtualScopics,
LLC
000
Xxxxxx Xxxx
Xxxxxxxxx,
Xxx Xxxx 00000
Tel:
585.249-6231
IN
WITNESS WHEREOF, the parties have executed and delivered this Agreement as
of
the dates indicated below.
| UNIVERSITY OF ROCHESTER | VIRTUALSCOPICS, LLC | |||
| By: | /s/ Xxxxxxx X. Xxxxxx | By: | /s/ Xxxxxx Xxxxxxxxx | |
|
Xxxxxxx X. Xxxxxx |
Xxxxxx Xxxxxxxxx |
|||
| Its: Xxxxxxx | Its: Chief Operating Officer |
Agreed
to
and Acknowledged by:
/s/
Xxxxx
X. Xxxxxx, Ph.D
Page
4
Attachment
A
VirtualScopics
- Patents and Patent Applications
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UR
tech.
ref.
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Law
firm ref.
|
Number
|
Title
|
Status
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|
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1
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*765
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116741-0025
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6,169,817
(09/185,514)
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System
and Method For 4D Reconstruction and Visualization
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US
issued 01/02/2001
(filed
11/04/1999).
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1
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*765
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116741-0123
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PCT/US99/25704
WO
00/26852
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System
and Method For 4D Reconstruction and Visualization
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PCT
filed 11/03/1999
WIPO
published 05/11/2000.
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1
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*765
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116741-0176
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99958737.1
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System
and Method For 4D Reconstruction and Visualization
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Europe
filed 11/03/1999.
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1
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*765
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116741-0173
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7005694/01
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System
and Method For 4D Reconstruction and Visualization
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Korea
filed 05/04/2001.
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1
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*765
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116741-0174
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580158/00
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System
and Method For 4D Reconstruction and Visualization
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Japan
filed 05/07/2001.
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1
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*765
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116741-0175
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142972
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System
and Method For 4D Reconstruction and Visualization
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Israel
filed 05/04/2001.
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1
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*765
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116741-0177
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2350017
|
System
and Method For 4D Reconstruction and Visualization
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Canada
filed 05/04/2001.
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1
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*765
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116741-0178
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16034/00
|
System
and Method For 4D Reconstruction and Visualization
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Australia
filed 05/22/2001.
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2
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*765-01
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116741-0138
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09/540,524
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Magnetic
Resonance Imaging with Resolution and Contrast Enhancement
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US
filed 03/31/2000
1st
office action & interview with examiner 07/2002 - supplemental
amendment filed. Request for continued examination filed
07/22/2003.
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2
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*765-01
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116741-0168
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PCT/US01/10308
WO
01/75483
|
Magnetic
Resonance Imaging with Resolution and Contrast Enhancement
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PCT
filed 04/02/2001.
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2
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*765-01
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116741-0169
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90107831
|
Magnetic
Resonance Imaging with Resolution and Contrast Enhancement
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Taiwan
filed 05/28/2001
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2
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116741-00204
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Magnetic
Resonance Imaging with Resolution and Contrast Enhancement
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Canada
filed; 09/30/2002.
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||
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2
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116741-00205
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Magnetic
Resonance Imaging with Resolution and Contrast Enhancement
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JP
filed; 09/30/2002.
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||
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2
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116741-00206
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Magnetic
Resonance Imaging with Resolution and Contrast Enhancement
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EP
filed; 09/30/2002.
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3
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*985
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116741-0180
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09/908,492
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System
and Method for Reducing or Eliminating Streak Artifacts and Illumination
Inhomogeneity in CT Imaging
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US
filed 07/19/2001. Office action 06/2003, claims 4-9, 13-18 allowed,
others
in contest.
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3
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116741-00202
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PCT/US02/22707
WO
03/009215 A1
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System
and Method for Reducing or Eliminating Streak Artifacts and Illumination
Inhomogeneity in CT Imaging
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PCT
filed 07/18/2002.
Intl
pub date 01/30/2003.
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Page
5
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4
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*1047
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116741-0183
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60/306,166
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System
and Method for Quantifying Tissue Structures and their Change
over
Time
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Provisional
filed 07/19/2001.
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4
|
*1047
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116741-
0182
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10/189,476
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System
and Method for Quantifying Tissue Structures and their Change
over
Time
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US
filed 07/8/2002. Search report + “over time” claims on
11/2002.
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4
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116741-00203
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PCT/US02/22706
WO
03/009214 A1
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System
and Method for Quantifying Tissue Structures and their Change
over
Time
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PCT
filed 07/18/2002. Intl pub date 01/30/2003. PCT written opinion
04/2003.
Cites Yang & Xxxxxxx, response filed 05/2003, with amended
claims.
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5
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*1048
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116741-0186
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60/307,869
|
System
and Method for Quantitative Assessment of Joint Diseases and
the Change
over Time of Joint Diseases
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Provisional
filed 07/27/2001.
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5
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*1048
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116741-
0198
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10/205,606
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System
and Method for Quantitative Assessment of Joint Diseases and
the Change
over Time of Joint Diseases
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US
filed 07/26/2002.
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5
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116741-00207
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PCT/US02/23705
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Method
and System for Quantitative Assessment of Joint Diseases and
the Change
over Time of Joint Diseases
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PCT
filed 07/26/2002. Search report “entirely favorable”
12/2002.
|
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6
|
*1059
|
116741-0191
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60/316,965
|
System
and Method for Quantitative Assessment of Neurological Diseases
and the
Change over Time of Neurological Diseases
|
Provisional
filed 09/05/2001.
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6
|
*1059
|
116741-
0199
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10/233,562
|
System
and Method for Quantitative Assessment of Neurological Diseases
and the
Change over Time of Neurological Diseases
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Filed
09/4/2002.
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6
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116741-00208
|
Method
and System for Quantitative Assessment of Neurological Diseases
and the
Change over Time of Neurological Diseases
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PCT
filed 09/2002. Search report (-), cited Guilhuis & Xxxxxxx, response
filed 08/2003.
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||
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7
|
*1060
|
116741-0192
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60/322,427
|
System
and Method for Quantitative Assessment of Cancers and their
Change over
Time
|
Provisional
filed 09/17/2001.
|
|
7
|
*1060
|
116741-
0200
|
System
and Method for Quantitative Assessment of Cancers and their
Change over
Time
|
US
filed 09/12/2002.
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|
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7
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116741-00201
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Method
and System for Quantitative Assessment of Cancer Diseases and
the Change
over Time of Cancer Diseases
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PCT
filed 09/2002. Written opinion 06/2003 (-), cited Guilhuis
&
Chaturvedi. Amended response 9/2003.
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||
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8
|
116741-00209
|
10/262,672
|
Method
and System for Automatic Identification and Quantification
of Abnormal
Anatomical Structures in Medical Images (with exemplar)
|
US
filed 10/02/2002. Examiner agrues two inventions 10/2003. Bifurcated
11/2003, claims 1-15 active, claims 16-17, 18-31 require new
divisional.
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|
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8
|
116741-
00237
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Divisional
of 10/262,672
|
Method
and System for Automatic Identification and Quantification
of Abnormal
Anatomical Structures in Medical Images (with exemplar) -
Divisional
|
US
Divisional filed 01/20/2004.
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Page
6
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9
|
116741-00210
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10/262,671
|
Method
and System for Assessment of Biomarkers by Measurement of Response
to
Stimuli
|
US
filed 10/02/2002. PCT filed 10/2003.
|
|
|
10
|
116741-00212
|
10/352,867
|
Method
and System for Use of Biomarkers in Diagnostic Imaging
(CAL)
|
US
filed 01/29/2003.
|
|
|
11
|
116741-00213
|
10/366,693
|
Automated
Measurement of Anatomical Structures in Medical Imaging (probability
map,
deformable template)
|
US
filed 02/14/2003.
|
|
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12
|
116741-
00214
|
Method
and System for Automatic Extraction of Load-Bearing Regions
of Cartilage
and Measurements of Biomarkers
|
US
filed 11/20/2003.
|
||
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13
|
116741-
00215
|
10/670,564
|
Semi-Automated
Measurement of Anantomical Structures using Statistical and
Morphological
Priors (Vessel Bifurcations)
|
US
filed 09/26/2003.
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|
|
14
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2-Sequence
Meniscus.
|
Drafted
08/2003.
|
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15
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Nonrigid
Registration of Medical Images
|
Draft
in preparation 12/2003.
|
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16
|
Automatic
Plasma and Perfusion
|
Draft
submitted 01/2004.
|
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Notes:
University
of Rochester Technology Reference Number preface is 2-11144- * in all
cases.
Law
firm
reference number is that of the firm, Blank Rome Xxxxxxx & XxXxxxxx, LLP of
Washington, D.C. The portion of the reference number identifying the client
(the
six digits before the separator) has been changed from 000687 to 116741.
The
portion of the reference number identifying the matter (after the separator)
has
not been changed.
**
With a
change in Taiwanese law, a filing date of 04/02/2001 was recently accorded.
Page
7
Attachment
B - Fields of Invention
Part
1 – System
and Method for Quantifying Tissue Structures and their Change over
Time
Part
2
– A
Method
and System for Quantitative Assessment of Joint Diseases and the Change
over
Time
of Joint Diseases
Part
3
– A
Method
and System for Quantitative Assessment of Neurological Diseases and the
Change
over Time of Neurological Diseases
Part
4 – A
Method
and System for Quantitative Assessment of Solid Tumors and the Change
over Time
of Solid Tumors in Humans
Page
8
Attachment
C
University
Intellectual Property and Faculty Consulting Policies
Page
9
