RESEARCH CONTRACT
AGREEMENT
THIS AGREEMENT is made effective as of October 1, 1997 by and between
PHOTOGEN, INC., a Tennessee corporation with offices in Knoxville, Tennessee
(hereinafter referred to as "SPONSOR"), and the University of Tennessee, a
public higher educational institution of the State of Tennessee with
principal offices in Knoxville, Tennessee (hereinafter referred to as
"UNIVERSITY").
WITNESSETH:
WHEREAS, the research project contemplated by this Agreement is of mutual
interest and benefit to the SPONSOR and the UNIVERSITY and will further the
instructional and research objectives of the UNIVERSITY in a manner
consistent with its status as a wholly-owned, educational corporate agency of
the State of Tennessee.
NOW, THEREFORE, in consideration of the mutual covenants contained
herein, the parties hereto agree as follows:
1. STATEMENT OF WORK. The UNIVERSITY agrees to use its best efforts to
perform the research project entitled, "FAST PULSED TWO PHOTON LASER
PHOTODYNAMIC THERAPY: IN VIVO EVALUATION" under the direction of Xxxx X.
Xxxxxxxx, DVM ("Principal Investigator") pursuant to the terms of the
protocol dated August 13, 1997 between the SPONSOR and the UNIVERSITY
attached hereto as Exhibit A. The UNIVERSITY shall provide personnel,
facilities, and resources as required to accomplish the work necessary to
complete the project.
2. PERIOD OF PERFORMANCE. The period for the performance of the work shall be
from October 1, 1997 to September 30, 1998.
3. PAYMENT. Total cost to the SPONSOR will be $178,100. Payments shall be
made to the UNIVERSITY by the SPONSOR according to the following schedule:
$29,684 upon execution of this Agreement; and $49,472 each on February 1,
1998, May 1, 1998 and August 1, 1998. Checks shall be made payable to THE
UNIVERSITY OF TENNESSEE and shall be mailed to the following address:
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University of Tennessee
c/o Xx. Xxxxx X. Xxxxxxxx
Xxxxxx Xxxx, Xx. 107
College of Veterinary Medicine
XX XXX 0000
Xxxxxxxxx, XX 00000-0000
All funds provided by SPONSOR under this Agreement may be used at the
discretion of the UNIVERSITY in support of the work to be carried out under
this Agreement.
4. TERMINATION. In the event that either the UNIVERSITY or SPONSOR defaults
in the due performance of its respective obligations under this Agreement,
or in the event that any representation or warranty by either of them
proves to be false or incorrect and such default or breach is not cured
within thirty (30) days of written notice by the other party, then the
other party may elect to terminate this Agreement by giving written notice
to the defaulting party, and this Agreement shall terminate upon the
defaulting party's receipt of said notice. The parties recognize that the
results of any particular research project cannot be guaranteed even
through the use of the UNIVERSITY's best efforts; therefore, it is
specifically agreed that the failure of the UNIVERSITY to achieve specific
research results shall not constitute a default or breach of this Agreement.
5. EQUIPMENT. Title to any equipment purchased or manufactured by UNIVERSITY
in the course of the research conducted under this Agreement or with the
use of funds provided by SPONSOR shall vest in the UNIVERSITY.
6. PROPRIETARY INFORMATION OF THE PARTIES. The UNIVERSITY and SPONSOR
recognize that the conduct of a research project may require the exchange
of proprietary information between the parties. Accordingly, it is agreed
that each party shall retain in confidence the proprietary information of
the other party and shall not disclose such information to any other
person, nor use such information, without the written permission of the
other party, except in accordance with the terms of this Agreement.
a. The term "proprietary information" as used herein shall not include
any information which the recipient clearly shows by appropriate
documentation:
(1) Was at the time of receipt both legally and independently known to
the receiving party, its agents, or employees;
(2) Without breach of this Agreement by the receiving party has been
published or is otherwise within the public knowledge or is
generally known to the public at the time of disclosure;
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(3) Becomes known or available to the receiving party without
restriction from a source other than the disclosing party,
provided that such source has an unqualified right to disclose
such information without restriction;
(4) Becomes a part of the public domain after disclosure without
breach of this Agreement by the receiving party; or
(5) Is required by law, including the Tennessee Public Records Act, to
be disclosed in which case UNIVERSITY will give SPONSOR prompt
written notice of the required disclosure. SPONSOR may, in good
faith and at its own expense, contest disclosure or seek
confidential treatment.
7. PUBLICATION. The UNIVERSITY shall publish interim and/or final results of
the investigation/research described in Article 1 of this Agreement, upon
receipt of written approval from the SPONSOR, and the results to be
published do not contain or divulge proprietary information as determined
by the SPONSOR. The SPONSOR shall have 30 days from receipt of publication
manuscripts to review the same for content. If SPONSOR fails to respond
within 30 days, and the UNIVERSITY has obtained written approval from the
SPONSOR to publish, the UNIVERSITY has the right to publish, and the
UNIVERSITY shall incur no liability to the SPONSOR therefor.
8. INDEPENDENT CONTRACTOR. The UNIVERSITY's relationship to the SPONSOR in
the performance of this Agreement is that of an independent contractor.
9. INDEMNIFICATION BY SPONSOR. The SPONSOR shall indemnify, defend and hold
UNIVERSITY harmless from any and all claims and suits which are based on
any injury or damage arising out of the research conducted hereunder
(including, but not limited to, the clinical evaluation or testing of any
drug or device included in this study if applicable) for any act or
omission of the SPONSOR involving the use, manufacture or distribution of
any product or process arising out of or involved with this Agreement.
10. LIMITATION OF LIABILITY ON BEHALF OF THE UNIVERSITY. The UNIVERSITY is
self-insured under the provisions of the Tennessee Claims Commission Act,
T.C.A. sections 9-8-301, ET SEQ., and its liability to SPONSOR and to third
parties for the negligence of the UNIVERSITY and its employees is subject
to the provisions of the Act. Accordingly, any liability of the UNIVERSITY
for any damages, losses, or costs arising out of or related to acts
performed by the UNIVERSITY under this Agreement is governed by the
provisions of said Act.
11. NEGATION OF WARRANTIES BY THE UNIVERSITY. Although the UNIVERSITY will use
its best efforts to perform the research as set forth in Article 1 of this
Agreement, the UNIVERSITY makes no warranties, either expressed or implied,
as to the results of such research or the merchantability or fitness for a
particular purpose of
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the research or any Development (as hereinafter defined) arising out of the
research. The UNIVERSITY shall not be liable for any direct,
consequential, or other damages suffered by the SPONSOR or others which may
result from the use of the research result or any Development arising out
of the research.
12. KEY PERSONNEL. XXXX X. XXXXXXXX, DVM, Principal Investigator, is
considered to be essential to the work performed under this Agreement.
Substitutions for or substantial changes in his level of effort will not be
made without the prior written approval of SPONSOR.
13. PRE-EXISTING INTELLECTUAL PROPERTY RIGHTS OF THE PARTIES. Neither party
claims by virtue of this Agreement any right, title, or interest in (a) any
issued or pending patents or copyrights owned or controlled by the other
party or (b) any previous invention, process, software, or product of
another party, whether or not protected under the intellectual property
laws of the United States or any other country.
14. INVENTIONS AND DATA.
a. Developments (as defined in Exhibit B attached hereto and made a part
hereof) directly resulting from the performance of the work described
in Article 1 of this Agreement shall be the property of the SPONSOR.
However, the UNIVERSITY shall retain the right to use such Developments
for internal education, research and academic purposes. UNIVERSITY
agrees to the Covenants attached as Exhibit B to this Agreement.
b. The original data generated as a result of the performance of the work
described in Article 1 of this Agreement shall be provided to SPONSOR,
and SPONSOR may use such data as it deems advisable. However, this
provision shall not be interpreted to restrict the UNIVERSITY's
publication rights under Article 7 of this Agreement.
15. USE OF PARTIES' NAMES. Neither party to this Agreement shall use the name
of the other party in any form of publicity without the written permission
of that party.
16. MODIFICATION. This Agreement constitutes the sole, full, and complete
agreement by and between the parties, and no amendments, changes,
additions, deletions, or modifications to or of this Agreement shall be
valid unless reduced to writing, and signed by the parties.
17. NOTICES AND OTHER COMMUNICATIONS. With the exception of research funds
paid by SPONSOR under the provision of Paragraph 3, all notices and other
communications between the parties shall be deemed sufficiently given when
hand
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delivered or sent by prepaid United States mail or other recognized
carrier, addressed as follows:
a. If to SPONSOR:
Xxxx Xxxxxx
President, CEO
PHOTOGEN, Inc.
0000 Xxx Xxxxx Xxxxxxx
Xxxxxxxxx, XX 00000
b. If to the UNIVERSITY:
Xxxx X. Xxxxxxxx, DVM
Department of Small Animal Clinical Sciences
College of Veterinary Medicine
University of Tennessee
X.X. Xxx 0000
Xxxxxxxxx, XX 00000-0000
Either party may change its address by written notice given to the other
party. It is specifically provided that this notice provision shall not be
construed in such a manner as to abrogate the provisions of Section 16
regarding modification for this Agreement.
18. GOVERNING LAW. This Agreement is made and entered into in the State of
Tennessee and its validity and interpretation and the legal relations
of the parties to it shall be governed by the law of the State of Tennessee.
THIS AGREEMENT shall not be considered accepted, approved, or otherwise
effective until the signature of each party is affixed in the space provided
below.
IN WITNESS WHEREOF, signifying their acceptance of and agreement to be bound by
the terms and conditions of this Agreement, the signatures of the parties are
affixed hereto:
PHOTOGEN, INC. THE UNIVERSITY OF TENNESSEE
By: /s/ Xxxx Xxxxxx By: /s/ J.R. Xxxxxx
-------------------------- --------------------------
Xxxx Xxxxxx X.X. Xxxxxx
President, CEO Director
PHOTOGEN, Inc. Institute of Agriculture Business
Date: 10/31/97 Date: 10/30/97
---------------------------- ----------------------------
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EXHIBIT A PROTOCOL
Protocol attached to November 13, 1997 letter between SPONSOR and UNIVERSITY.
EXHIBIT B TO RESEARCH CONTRACT
COVENANTS
1. UNIVERSITY will make full and prompt disclosure to SPONSOR of all
"Developments" which are created, made, conceived, or reduced to practice in
whole or in part by UNIVERSITY during the period of UNIVERSITY's engagement
under the Research Contract or for a period of three years thereafter.
"Developments" means all copyright, patent, and trademark rights, and all
improvements, inventions, technologies, methods, applications, discoveries,
drawings, and other know-how and developments resulting from the project
described in Article 1 of the Research Contract, whether or not subject to
U.S. or foreign Patent and Trademark Office, U.S. Copyright Office or other
registration.
2. Subject only to UNIVERSITY's rights in Article 7 and in Article
14(a) of the Research Contract (which remain subject to the confidentiality
provisions hereof), all Developments and all U.S. and foreign copyright,
patent and trademark rights, and any other proprietary rights pertaining to
any Developments, and all renewals and extensions thereof, shall vest in and
be owned exclusively by SPONSOR; and UNIVERSITY hereby transfers and assigns
all of its right, title and interest in and to the foregoing to SPONSOR.
SPONSOR shall have the right to use and sell any Developments or any product
incorporating any Developments free of any royalty to UNIVERSITY and
UNIVERSITY agrees to execute and deliver to SPONSOR any and all assignments,
applications and other instruments that may be necessary to secure such
rights to SPONSOR.
3. For purposes of the Research Contract and subject to Article 6
thereof, the term "proprietary information" means information relating to the
work and/or project and any other information not generally known in the
industry including, but not limited to, the Developments and the design,
production, marketing, sale or distribution of the products and services
marketed or used (or proposed to be marketed or used) by SPONSOR. Subject to
the Research Contract, UNIVERSITY agrees not to, directly or indirectly,
disclose any proprietary information to others or to make use of it for any
purpose except to perform services under the Research Contract, during
UNIVERSITY's engagement hereunder and for a period of five (5) years after
termination or expiration of UNIVERSITY's engagement, whether or not such
proprietary information is produced by UNIVERSITY's own efforts; provided,
however, that at the end of such five years and at the end of each five year
period thereafter, SPONSOR may deliver written notice to UNIVERSITY
identifying information that in SPONSOR's judgment continues to be
proprietary information, in which case the proprietary information so
identified shall continue to be subject to the provisions of this Agreement
for one or more additional five-year periods.
4. Upon termination of the Research Contract, UNIVERSITY shall promptly
deliver all memoranda, books, papers, letters, formulas, drawings, manuals,
notes, reports, computer disks or tapes, all copies of the foregoing, and all
other materials (whether or not reduced to written or tangible form) relating
to the work and/or project (including the Developments) requested in writing
by SPONSOR, which are in UNIVERSITY's possession or under its control.
UNIVERSITY may retain one copy of the foregoing for its records, which shall
in all events be subject to the provisions hereof.
5. Except as expressly set forth in this Agreement, UNIVERSITY's
obligations hereunder shall survive the termination or expiration of the
Research Contract. This Agreement shall be binding upon the parties and
their respective affiliates, officers, employees and independent contractors
and shall inure to the benefit of the parties and their respective successors
and assigns.
6. SPONSOR reserves any available remedies to enforce the Research
Contract or this Exhibit B.
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