EXHIBIT 10.1
[Confidential treatment has been requested for portions of this exhibit. The
confidential portions have been redacted and are denoted by [**]. The
confidential portions have been separately filed with the Securities and
Exchange Commission.]
EXHIBIT 10.1
RESEARCH AND TECHNOLOGY TRANSFER AGREEMENT
This Research and Technology Transfer Agreement (the "AGREEMENT") is
entered into and made effective as of this 1st day of July, 1999 (the "EFFECTIVE
DATE") by and between Interleukin Genetics, Inc., a Texas corporation having its
principal place of business at 000 X.X. Xxxx 000, Xxxxx 000, Xxx Xxxxxxx XX
00000-0000 ("IL") and The University of Sheffield, Western Bank, Sheffield S10
2TN, England (the "UNIVERSITY"), acting through The Department of Molecular &
Genetic Medicine ("MGM").
RECITALS
A. University and IL entered into a Master Agreement for Technology
Evaluation (as defined below). Following the procedures set forth in the Master
Agreement for Technology Evaluation, the parties have entered into a number of
specific Project Agreements (as defined below), pursuant to which the parties
have agreed to work together in the development and commercialization of certain
technology including technology around the genetics of inflammatory diseases and
other disorders. The parties have also entered into a Master Technology and
Patent License Agreement (as defined below), pursuant to which the University
licensed certain technology which was not covered under the scope of a specific
Project Agreement.
B. This Agreement is intended as a complete amendment and restatement of
the provisions set forth in the Master Agreement for Technology Evaluation, the
Project Agreements and the Master Technology and Patent License Agreement. This
Agreement supercedes in its entirety those prior agreements.
C. The parties desire to continue with their joint collaborative
relationship around various technologies. This Agreement is intended to set
forth the terms and conditions of that ongoing relationship.
NOW, THEREFORE, in consideration of the foregoing premises and of the
terms and conditions of this Agreement, the parties agree as follows:
1. DEFINITIONS
1.1 "ANNUAL RESEARCH PLAN" means the written plan describing the research
in the Field of Use to be carried out during each year of the Research Program
by Sheffield Investigators and IL. Each Annual Research Plan will be set forth
in a written document devised by and adopted by the Research Steering Committee.
1.2 "FIELD OF USE " means the scope of the relationship as set forth in
Schedule 1 as amended from time to time by mutual agreement of the parties.
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1.3 "INNOVATIONS WITHIN THE FIELD OF USE" means all ideas, inventions,
apparatus, systems, data, discoveries, methods, processes, improvements, works
of authorship and other innovations of any kind within the Field of Use, whether
or not they are eligible for patent, copyright, trademark, service xxxx, trade
dress, trade secret or other legal protection.
1.4 "INTELLECTUAL PROPERTY RIGHTS" means patent applications, patents,
design rights or other similar invention rights, rights of priority, copyrights,
trademarks, service marks, trade dress, trade secret rights and other intangible
rights, whether existing under statutory or common law, in any country in the
world.
1.5 "JOINT INNOVATIONS WITHIN THE FIELD OF USE" means all inventions,
improvements, works of authorship and other innovations of any kind within the
Field of Use that may be made, conceived, developed or reduced to practice
jointly by Sheffield Investigators and by IL and its employees and consultants,
in the course of this Agreement, whether or not they are eligible for patent,
copyright, trademark, service xxxx, trade dress, trade secret or other legal
protection.
1.6 "LICENSED INVENTION" means any apparatus, system, process, method or
other invention claimed in any of the Patents, and any work of authorship, know
how, trade secret and other technology within the Field of Use covered by any
other Intellectual Property Right of the Sheffield Investigators.
1.7 "MASTER AGREEMENT FOR TECHNOLOGY EVALUATION" means the Master
Agreement for Technology Evaluation dated July 1, 1996 entered into by IL and
the University.
1.8 "INTERLEUKIN GENETICS MASTER TECHNOLOGY AND PATENT LICENSE AGREEMENT"
means the Master Technology and Patent License Agreement dated January 1, 1998
entered into by IL and the University.
1.9 "IL INNOVATIONS WITHIN THE FIELD OF USE" means all Innovations within
the Field of Use that may be made, conceived, developed or reduced to practice
solely by IL and its employees, consultants, and technicians.
1.10 "PARTY OR PARTIES" means the two parties to this agreement that is IL
and/or University as the case may be.
1.11 "PATENTS" means (i) any and all patents in any countries of the world
that may issue to IL or the University based on those patent applications listed
in Schedule 2 as amended from time to time; (ii) any other patents in any
countries of the world that may issue to the University or IL during the term of
this Agreement to the extent they cover any Innovations conceived, developed or
reduced to practice at least in part by Sheffield Investigators within the Field
of Use; and (iii) any and all divisionals, continuations, continuations-in-part,
reissues, extensions, and reexaminations of any of the foregoing.
1.12 "PROJECT AGREEMENTS" means, collectively, all the various project
agreements that IL
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and University entered into pursuant to the Master Agreement for Technology
Evaluation. The Project Agreements that are in effect between IL and University
as of the Effective Date of this Agreement are listed in Schedule 3.
1.13 "RESEARCH PROGRAM" means the collaborative research program in the
Field of Use to be conducted by Sheffield Investigators and IL pursuant to
Section 4 of this Agreement and reflected in the Annual Research Plan.
1.14 "RESEARCH STEERING COMMITTEE" shall be as defined in Section 4 of
this Agreement.
1.15 "SHEFFIELD INVESTIGATORS" shall mean the individuals at University
including its employees, consultants, faculty, technicians, visiting scientist
students and post doctoral associates all as listed on Schedule 4 as such
schedule is amended from time to time.
1.16 "UNIVERSITY INNOVATIONS WITHIN THE FIELD OF USE" means all
Innovations within the Field of Use that may be made, conceived, developed or
reduced to practice solely by Sheffield Investigators.
2. TECHNOLOGY TRANSFER
2.1 TRANSFER OF CURRENT TECHNOLOGY. In consideration for the grants of
stock set forth below, the University hereby agrees to assign to IL all right,
title and interest to the Patents set forth in Schedule 2 and to all
Intellectual Property Rights therein.
2.2 LICENSE AND TRANSFER OF INNOVATIONS. In consideration for the stock
options grants set forth below, the University hereby grants to IL an exclusive,
worldwide, irrevocable, transferable license, to all University Innovations
within the Field of Use and future Patents and any other applicable Intellectual
Property Rights, not listed in Schedule 2 as amended from time to time, and
developed during the term of this Agreement.
2.3 ASSIGNMENT OF RIGHTS. Upon the filing of a patent application with
respect to a University Innovation within the Field of Use, the University
hereby agrees to assign to IL all right, title and interest to such Patent and
to all Intellectual Property Rights therein. During the term of this Agreement,
University will not grant to any other third party any licenses or rights with
respect to any of the University Innovations within the Field of Use.
2.4 USE FOR INTERNAL RESEARCH PURPOSES. Notwithstanding Sections 2.1, 2.2
and 2.3, the University retains the right to practice and utilize any University
Innovations within the Field of use for its own internal non-commercial research
purposes, for carrying out its responsibilities under this Agreement, and for
publications according to the criteria set forth in Section 6 of this Agreement.
2.5 EXECUTION OF DOCUMENTS. The University agrees to execute, and to cause
its employees, faculty, consultants, technicians, visiting scientists,
researchers, investigators, post-
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doctoral associates, staff and/or students to execute any documents reasonably
requested by IL to transfer and perfect the assignment to IL of the Patents and
Intellectual Property Rights therein.
3. GRANTS OF STOCK AND STOCK OPTIONS
3.1 GRANT OF STOCK AND TRANSFER OF PATENT. In consideration for the
University relinquishing its net proceeds interests in all Project Agreements,
and the transfer of Patents set forth above, IL shall grant to the University
275,000 shares of common stock in IL pursuant to the terms and conditions of the
Subscription Agreement attached as Schedule 5. IL also hereby agrees to assign
to University all rights, title and interest to the patent application entitled
"Expression Cloning and Single Cell Detection of Phenotype", patent application
number PCT/US 98/26715, including all rights to all international filings,
divisional, continuation, continuations-in-part, reissues, extensions and
re-examining related thereto.
3.2 GRANT OF FUTURE STOCK OPTIONS. In consideration for the future
research performed by Sheffield Investigators and the transfer of Patents based
on future University Innovations or Joint Innovations within the Field of Use as
set forth above, IL shall grant to the University on an annual basis (with the
first options to be granted on July 1, 2000 and on such date each year
thereafter as long as this Agreement is in effect), options to purchase 25,000
shares of common stock in IL pursuant to the terms and conditions of the Stock
Option Agreement attached as Schedule 6; provided that the Exercise Price (as
defined in the Stock Option Agreement) of such options shall be equal to the
"Current Market Price" (as defined below) of the common stock on the applicable
annual grant date, and the Exercise Period (as defined in the Stock Option
Agreement) of such options shall be five years from the applicable annual grant
date. In addition, for each Patent application that IL files containing a
University Innovation or a Joint Innovation within the Field of Use (exclusive
of the Patents listed in Schedule 2 and which the parties agree have been
accounted for in Section 3.1), IL will grant to the University on an annual
basis (with the first options to be granted on July 1, 2000 and on such date
each year thereafter as long as this Agreement is in effect) options to purchase
10,000 shares of common stock in IL for each Patent filed during the preceding
12 months, pursuant to the terms and conditions of the Stock Option Agreement
attached as Schedule 6; provided that the Exercise Price (as defined in the
Stock Option Agreement) of such options shall be equal to the "Current Market
Price" (as defined below) of the common stock on the applicable annual grant
date, and the Exercise Period (as defined in the Stock Option Agreement) of such
options shall be five years from the applicable annual grant date.
The "Current Market Price" at any date shall mean, in the event the common
stock is publicly traded, the average of the daily closing prices per share of
such equity security for the 10 consecutive trading days ending on the trading
day immediately before such date (as adjusted for any stock dividend, split,
combination or reclassification that took effect during such 10 trading day
period). The closing price for each day shall be the last reported sale price
regular way or, in case no such reported sale takes place on such day, the
average of the last closing bid prices regular way, in either case on the
principal national securities exchange on which such equity security is listed
or admitted to trading, or if not listed or admitted to trading on any national
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securities exchange, the closing bid price for such day reported by NASDAQ, if
such equity security is traded over-the-counter and quoted in the National
Market System, or if such equity security is so traded, but not so quoted, the
average of the closing bid prices of such equity security as reported by NASDAQ
or any comparable system or, if such equity security is not listed on NASDAQ or
any comparable system, the average of the closing bid prices as furnished by two
members of the National Association of Securities Dealers, Inc., selected in
good faith from time to time by the Board of Directors of IL for that purpose.
If such equity security is not traded in such manner that the quotations
referred to above are available for the period required hereunder, Current
Market Price per share of such equity security shall be deemed to be the fair
value as determined in good faith by the Board of Directors of IL, irrespective
of any accounting treatment.
3.3 EXECUTION OF DOCUMENTS. IL agrees to execute, and to cause its
employees and consultants to execute any documents reasonably requested by
University to transfer and perfect the titling of stock certificates and/or
stock options to the University. In addition, as a condition to receiving the
option grants described above or prior to transferring same, all as governed by
the terms of the Stock Option Agreement, the University agrees to execute, and
to cause its employees and consultants to execute, an investment letter
containing representations and warranties as to investment intent, financial
sophistication and ability to bear the risk of any investment in the options and
the common stock underlying same and such other matters as may be reasonably
appropriate and acceptable to IL to demonstrate compliance with relevant
securities and other laws and regulations before any such issuance of options
shall be given effect. Such representations and warranties may include those
contained in or similar to the Subscription Agreement attached as Schedule 5.
3.4 OPTION, SHORT POSITION AND OTHER TRANSACTIONS. University covenants
that neither University nor its affiliates nor any person acting on its or their
behalf has entered, has the intention of entering or will enter into any put
option, short position or other similar instrument or position anywhere in the
world with respect to the common stock of IL or any security convertible into or
exercisable for the common stock of IL. In addition, University covenants that
neither University nor its affiliates nor any person acting on its or their
behalf has entered, has the intention of entering or will enter into any other
scheme or arrangement for the intended purpose of lowering the price at which
the options to be issued pursuant to this Agreement may be exercised. University
covenants and agrees to inform its employees, consultants and other relevant
parties of the requirements and restrictions of this section and otherwise
contained in the Subscription Agreement and impose and use it best efforts to
enforce such restrictions upon such persons.
4. RESEARCH PROGRAM
4.1 RESEARCH PROGRAM. Sheffield Investigators agree to use best efforts
based on reasonable business judgment to perform research within the Field of
Use according to priorities established by the Research Steering Committee. The
Research Steering Committee shall develop an Annual Research Plan which shall
address short and long term focuses and resources to be committed. IL shall have
the right to participate in such research and any such efforts of IL
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shall be part of the Annual Research Plan. Without first obtaining the written
approval of IL, Sheffield Investigators will not perform additional research in
the Field of Use area (including genetic discovery, functional genetics,
functional biology or clinical studies) for third parties whether pursuant to a
sponsored research agreement, donations or other support or otherwise where the
University cannot transfer all right, title and interest to Innovations within
the Field of Use and related Intellectual Property Rights to IL. Notwithstanding
the above, Sheffield Investigators can: (a) perform whole genome searches for
third parties, but will not perform additional research within the Field of Use
without obtaining written approval of IL, and/or (b) perform research funded by
charities, governmental agencies, or other non-commercial entities within the
Field of Use as long as Sheffield Investigators receive the approval of a
Sheffield appointee of the Research Steering Committee. Sheffield Investigators
will notify IL of all proposed research within the Field of Use. Prior to any
individual beginning work under the Research Program, the University shall
require that such individual execute and sign in substantially similar form the
Sheffield Investigator Agreement attached as Schedule 7 and University shall
notify IL that such individual is added to Schedule 4 as a Sheffield
Investigator.
4.2 RESEARCH STEERING COMMITTEE. IL and University shall establish a
Research Steering Committee, ("RSC") with a minimum of four members and a
maximum of six members. The RSC shall plan, administer and monitor the Research
Program. In particular, the RSC shall prepare an Annual Research Plan, review
progress in the Research Program and recommend necessary adjustments to the
Research Program as the research takes place. IL and the University each have
the option to appoint up to three members to the RSC. IL initially appoints
Xxxxxxx Xxxxxxx, and Xxxxxx Xxxxxx. The University initially appoints Xxxxxx
Xxxx and Xxxxx Xxxxxxxxxx. Either IL or the University may nominate alternative
or replacement members to serve on the Steering Committee by notice in writing
to the other party, provided, however, Xxxxxx Xxxx will always serve as one
member of the University's two appointments, representing Sheffield
Investigators, so long as he is an employee of the University. The RSC shall be
chaired by two co-chairpersons, one appointed by IL and one appointed by the
University. The initial Chair for IL shall be Xxxxxxx Xxxxxxx and the initial
chair for the University shall be Xxxxxx Xxxx. The RSC representatives of each
Party shall collectively have one vote on all matters before the RSC. All
decisions of the RSC shall be made by unanimous vote of both parties. The
Steering Committee will meet on a regular basis as the committee members may
determine to be necessary. Written minutes of the meetings of the RSC will be
kept and will be circulated prior to the next meeting for committee members'
approval at the next meeting.
4.3 PATENT PROSECUTION AND OTHER COSTS. IL will have responsibility for
and control of the preparation and filing in a country of IL's choosing the
patent application with respect to those Innovations within the Field of Use for
which IL determines in its judgment that patent protection should be sought. IL
will have responsibility for the ongoing prosecution of such patent
applications, as well as for the preparation, filing and prosecution of any
corresponding international patent applications. IL will itself bear all costs
for the preparation, filing and prosecution of all patent application for each
such Innovation within the Field of Use including the costs of all corresponding
international patent applications (including but not limited to filing fees,
translation costs and legal fees). Each party will carry out the activities for
which it is
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responsible at its own expense, including the costs of any research and
development, commercialization costs, internal staff and overhead costs,
consultants and other outside contractors assisting a party in performing its
duties. IL may, in its sole discretion, provide research funding to support work
being performed by Sheffield Investigator(s) in support of its ongoing research
within the Field of Use. Any such research funding will be set forth in a
separate agreement.
5. OWNERSHIP
5.1 IL INNOVATIONS WITHIN THE FIELD OF USE. IL shall be the sole and
exclusive owner of IL Innovations, and all Intellectual Property Rights in the
foregoing.
5.2 UNIVERSITY INNOVATIONS WITHIN THE FIELD OF USE. University agrees to
assign to IL all right, title and interest in and to any University Innovations
within the Field of Use and Patents and to all Intellectual Property Rights
therein.
5.3 JOINT OWNERSHIP. University agrees to assign to IL all right, title
and interest in and to any Joint Innovations within the Field of Use and Patents
and to all Intellectual Property Rights therein.
6. PUBLICATION
6.1 PUBLICATION. While neither Party wishes in any way to restrict the
academic freedom of those participating in the project, the Parties aim to
prevent publications or statements that adversely affect the commercial interest
of IL. IL agrees that Sheffield Investigators shall be encouraged to present a
symposia, national or regional professional meetings, and to publish in
journals, theses, dissertations, or otherwise of University's own choosing,
methods and results of the Research Program. Before publishing or presenting,
however, Sheffield Investigators and University shall furnish a copy of any
proposed publication or presentation to IL reasonably in advance (preferably at
least six weeks) of the submission of such proposed publication or presentation
to a journal, editor, or other third party. IL shall have one month, after
receipt of said copy, to notify Sheffield Investigator and University of its
objection to such proposed presentation or proposed publication because there is
patentable subject matter or Confidential Information which needs protection. In
the event that IL makes such notification, University shall refrain from making
such publication or presentation for a maximum of 6 months from date of receipt
of such notification in order for IL to file patent application(s) with the
United States Patent and Trademark Office and/or foreign patent office(s)
directed to the patentable subject matter contained in the proposed publication
or presentation and University shall edit such proposed publications or
presentations to remove the material identified by IL as Confidential
Information. Both Parties will strive for consensus before publishing. If a
publication does result, the authors will acknowledge IL's support of the
research in the publications and authorship shall be jointly decided by IL and
University based on accepted scientific practice.
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The parties acknowledge that emergency situations may arise where a Sheffield
Investigator is attempting to meet a deadline. The Parties will attempt to
accommodate such deadlines as long as all patentable subject matter or
Confidential Information is protected.
6.2 RIGHT TO DATA. IL shall have the right to use the data generated from
the Research Program in filing patent applications, in filing for regulatory
approvals and for any other commercial purposes.
7. TERM AND TERMINATION
7.1 TERM. Unless earlier terminated in accordance with the terms of this
Section 7, this Agreement shall remain in effect from the Effective Date for a
period of five (5) years, and shall thereafter automatically renew for
additional one (1) year periods, unless either party gives written notice to the
other party at least six (6) months in advance of any renewal date that such
party does not wish to renew this Agreement.
7.2 TERMINATION UPON NOTICE OF BREACH. In the event that either party
breaches or defaults under any material term or condition of this Agreement, and
such breach or default is not cured within sixty (60) days of written notice of
the same from the other party, the other party may, in addition to any other
remedy that it may have at law or in equity or under this Agreement, terminate
this Agreement.
7.3 TERMINATION UPON DUFF DEPARTURE. IL may at its option upon written
notice to the University terminate this Agreement in the event that Professor
Xxxxxx Xxxx is no longer an employee of the University as a result of a change
in his employment.
7.4 IMMEDIATE TERMINATION UPON CERTAIN EVENTS OF BANKRUPTCY. Either party
may at its option terminate this Agreement immediately upon written notice to
the other party upon the occurrence of any of the following events:
(a) In the event that the other party makes an assignment for the
benefit of creditors; admits in writing its inability to pay its debts as they
become due; files a voluntary petition in bankruptcy; is adjudicated to be
bankrupt or insolvent; files a petition seeking for itself any reorganization,
arrangement, composition, readjustment, liquidation, dissolution or similar
arrangement under any present or future statute, law or regulation, or files an
answer or similar pleading admitting the material allegations of a petition
filed against it in any such proceeding; or consents to or acquiesces in the
appointment of, or has its business placed in the hands of, a trustee, receiver,
assignee, or liquidator of it or any substantial part of its business, assets or
properties, whether by voluntary act or otherwise; or
(b) In the event that either party ceases doing business as a going
concern, or it or its shareholders take any action in anticipation of or
furtherance of dissolution or liquidation.
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7.5 EFFECT OF TERMINATION. In the event of the expiration of the term or
early termination of this Agreement for any reason, the following provisions
shall apply:
(a) except as provided in this Section 7.5 or under Section 7.6
below, all further obligations of both parties under this Agreement will cease
as of the date of termination of this Agreement; and
(b) IL shall retain ownership of any Innovations within the Field of
Use, Patents and Intellectual Property Rights to which University had assigned
its right, title and interest or to which University was obligated to assign
right, title and interest under this Agreement as of the date of such
termination.
(c) The University shall retain ownership of any stock or stock
options which the University has been granted under Sections 3.1 and 3.2 of this
Agreement as of the date of such termination.
7.6 SURVIVAL OF CERTAIN PROVISIONS. The provisions of Articles 5 and 6-12
of this Agreement will survive the expiration or termination of this Agreement.
In addition, the provisions of Sections 2.2 and 2.3 shall survive with respect
to any Innovations within the Field of Use discovered, conceived, developed or
reduced to practice during the term of this Agreement, even if Patents or other
Intellectual Property Rights therein are not filed, issued or perfected until
after the expiration or termination of this Agreement. In addition, the
provisions of Section 3.2 shall survive with respect to: (a) any patent
application that IL files containing a University Innovation or Joint Innovation
within the Field of Use even if the patent applications are not filed until
after the expiration or termination of the Agreement, and (b) a pro-rata share
of the annual option to purchase 25,000 shares of Common Stock of IL accruing to
the University that have not yet been granted as of the date of the termination.
8. SETTLEMENT OF DISPUTES
8.1 DISPUTE RESOLUTION. If a dispute arises out of or relates to this
Agreement or its breach (the "Matter"), the Parties agree to resolve the Matter
as follows:
(a) A Party shall submit written notice of the Matter to the other
Party and request negotiation;
(b) The Parties shall attempt in good faith to resolve any Matter
arising out of or relating to this Agreement by promptly appointing
representatives with authority to resolve disputes to negotiate the resolution
The designated representatives shall meet as often as necessary during a fifteen
(15) day period (or such other time as the parties may agree) to gather and
furnish to the other all information with respect to the matter in issue which
is appropriate and germane in connection with its resolution. Such
representatives shall discuss the problem and negotiate in good faith in an
effort to resolve the dispute without the necessity of any formal proceeding
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relating thereto. During the course of such negotiation, all reasonable requests
made by one party to the other for non-privileged information reasonably related
to this Agreement, will be honored in order that each of the parties may be
fully advised of the other's position. The specific format for such discussions
will be left to the discretion of the designated representatives, but may
include the preparation of agreed upon statements of fact or written statements
of position furnished to the other party.
(c) If the Matter has not been resolved within sixty (60) days of a
Party's request for negotiation, either Party may request that the Matter be
submitted to a sole mediator selected by the Parties for a mandatory one (1) day
mediation; and
(d) If the Matter has not been resolved by such mediation, either
Party may submit the Matter for binding arbitration in accordance with the
Commercial Rules of the American Arbitration Association ("AAA"). A single
arbitrator shall be selected from the AAA's large complex case panel, provided,
however, if this panel is of insufficient size to pick the arbitrator, then the
regular commercial panel shall be used to pick the arbitrator. In the event the
parties cannot agree on the arbitrator within thirty (30) calendar days of
issuance of a written demand for arbitration by either party, then the American
Arbitration Association shall designate the arbitrator.
(e) The award shall be made within six (6) months of selection of an
arbitrator(s).
8.2 APPROVAL OF ONE SUBSTANTIVE POSITION OF THE PARTIES. In all
arbitration proceedings submitted under Section 8.1(d), the arbitrator shall be
required to agree upon and approve the substantive position advocated by either
IL or the University with respect to each disputed item(s). Any decision
rendered by the arbitrator that does not reflect a substantive position
advocated by either IL or the University shall be beyond the scope of authority
granted to the arbitrator and shall be void. No decision of the arbitrator shall
ever be construed as or have the effect of amending or altering this Agreement
or the parties' rights and responsibilities with respect thereto.
8.3 The mediation and arbitration shall be held in San Antonio, Texas,
U.S.A. or other mutually agreed location. The Parties, their representatives,
the mediator and the arbitrator shall hold the existence, content and results of
any negotiation, mediation or arbitration in confidence unless disclosure is
required by law or regulation, and in such case the Parties shall take
reasonable precautions to only disclose what is required by law or governmental
regulation.
8.4 Any award of the Arbitration shall be binding on the Parties and shall
be enforceable in any court having jurisdiction over the Party from whom
enforcement is requested.
8.5 If the dispute resolution procedure of this Article 8 is not
instituted by submission of written notice under Section 8.1(a) within three (3)
years of the Party's first knowledge of a
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Matter or is not diligently pursued, then such Party waives its rights to seek a
remedy for such Matter.
8.6 OTHER DISPUTES. Notwithstanding this Article 8, either party can seek
injunctive relief in a court of competent jurisdiction.
9. CONFIDENTIALITY
9.1 CONFIDENTIALITY OF THE AGREEMENT. The parties agree to maintain all
terms and conditions of this Agreement in confidence, except that (i) IL may
state that it has a collaborative research and technology transfer agreement
with the University in the Field of Use under this Agreement and may name the
patents and Intellectual Property Rights to which this applies; (ii) The
University may state that it has a collaborative research and technology
transfer agreement in the Field of Use with IL and may state that it has
received stock in IL; (iii) this Agreement may be disclosed to either party's
attorneys, accountants or other professional advisors in the course of seeking
professional advice and to the extent required by applicable securities law and
regulations or other law or regulations or court order; and (iv) this Agreement
may be disclosed by IL to entities with which IL is discussing a proposed sale
of its stock, sale of all or substantially all of its assets, obtaining
financing or entering into a partnering arrangement, provided that the entity to
whom the terms of this Agreement is to be disclosed has executed a reasonable
non-disclosure agreement.
9.2 PROTECTION OF CONFIDENTIAL INFORMATION. Each party agrees to keep all
Confidential Information of the other party to which it has access hereunder
strictly confidential, and agrees that it will not, except with the express
permission of the other party or as required by applicable law or regulations or
by court order, use such information except in the performance of this
Agreement, or disclose any such Confidential Information to any person or entity
other than its own employees, faculty, consultants, technicians, visiting
scientists, researchers, investigators, post-doctoral associates, staff and/or
students who have a need to know and who have been informed in advance of the
receiving party's obligations with respect to such Confidential Information.
Confidential Information may be disclosed by IL to entities with which IL is
discussing a proposed sale of its stock, sale of all or substantially all of its
assets, obtaining financing or entering into a partnering arrangement, provided
that the entity to whom the Confidential Information is to be disclosed has
executed a reasonable non-disclosure agreement. The obligations of this Section
10 will survive for a period of five (5) years from termination of this
Agreement.
10. REPRESENTATIONS AND WARRANTIES
10.1 BY THE UNIVERSITY. The University represents and warrants to IL that:
(a) AUTHORITY. The University has the full right and power to
perform its
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obligations under this Agreement, and to license and/or transfer Patents and
University Innovations within the Field of Use to IL;
(b) INCONSISTENT OBLIGATIONS. There are no outstanding agreements,
licenses, assignments or encumbrances inconsistent with the provisions of such
licenses or with any other provision of this Agreement; and
(c) INFRINGEMENT OF RIGHTS OF OTHERS. To the best of the
University's knowledge as of the Effective Date, the University knows of no
third parties' rights which would be infringed by practicing the inventions
claimed in the Patents listed in Schedule 2. The University will promptly notify
IL in the event that it learns or has cause to believe at any time that any
third parties' rights would or might be infringed by practicing the inventions
claimed in any Patents or by any Innovation within the Field of Use thereto.
10.2 BY IL. IL represents and warrants to University that:
(a) AUTHORITY. IL has the full right and power to perform its
obligations under this Agreement, and to transfer the securities to the
University;
(b) INCONSISTENT OBLIGATIONS. There are no outstanding agreements,
licenses, assignments or encumbrances inconsistent with the provisions of such
licenses or with any other provision of this Agreement, and.
10.3 NO OTHER WARRANTIES. EXCEPT AS SET FORTH IN THIS SECTION, UNIVERSITY
AND IL MAKES NO OTHER WARRANTY, EXPRESS OR IMPLIED, RELATING TO THIS AGREEMENT
OR ANY GENERAL INNOVATION, AND UNIVERSITY SPECIFICALLY DISCLAIMS ANY IMPLIED
WARRANTY OR CONDITION OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
11. LIMITATION OF LIABILITY
EXCEPT FOR ANY WILLFUL BREACH OF ARTICLES 6 OR 10, NEITHER PARTY SHALL BE
LIABLE TO THE OTHER FOR ANY INDIRECT, SPECIAL, CONSEQUENTIAL OR INCIDENTAL
DAMAGES, HOWEVER CAUSED AND ON ANY THEORY OF LIABILITY, ARISING OUT OF THIS
AGREEMENT.
12. GENERAL
12.1 GOVERNING LAW. This Agreement shall be deemed to have been made
under, and shall be construed and interpreted in accordance with the laws of the
state of Texas, U.S.A. No conflicts-of-law rule or law which might refer such
construction and interpretation to the laws of another state, republic, or
country shall be considered. Any national law, United Nations treaty or
convention, or law arising from any international treaty is hereby waived in
favor of the
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application of Texas law. The Parties hereby specifically exclude the
application of The Convention for the International Sale of Goods. All questions
concerning the construction or effect of patent right shall be construed in
accordance of the laws of the country granting those rights. Except for
injunctive relief, all disputes arising in connection herewith shall be resolved
by the dispute resolution procedure of Article 8. If either Party seeks an
injunction, equitable relief or enforcement of the arbitrator such action shall
be submitted to the exclusive jurisdiction of the courts in San Antonio, Texas,
U.S.A. and both Parties agree to submit to the jurisdiction of such courts.
12.2 WAIVER AND MODIFICATION. Failure by either party to enforce any
provision of this Agreement will not be deemed a waiver of future enforcement of
that or any other provision. Any waiver, amendment or other modification of any
provision of this Agreement will be effective only if in writing and signed by
the parties.
12.3 SEVERABILITY. Both Parties hereby especially agree in contract that
neither Party intends to violate any public policy, statutory or common law,
rule, regulation, treaty or decision of any government agency or executive body
thereof of any country or community or association of countries; that if any
word, sentence, paragraph or clause or combination thereof of this Agreement is
found, by a court or executive body with judicial powers having jurisdiction
over this Agreement or any of its Parties hereto, in a final unappealed order to
be in violation of any such provision in any country or community or association
of countries, such words, sentences, paragraphs or clauses or combination shall
be inoperative in such country or community or association of countries, and the
remainder of this Agreement shall remain binding upon the Parties hereto.
12.4 NOTICES. All notices required or permitted under this Agreement will
be in writing, will reference this Agreement and will be deemed given: (i) when
sent by confirmed facsimile; (ii) ten (10) working days after having been sent
by registered or certified mail, return receipt requested, postage prepaid; or
(iii) five (5) working days after deposit with a commercial overnight carrier,
with written verification of receipt. All communications will be sent to the
addresses set forth below or to such other address as may be designated by a
party by giving written notice to the other party pursuant to this section:
TO IL:
Xxxxxxx X. Xxxxxxx, DDS, PhD
President
Interleukin Genetics, Inc.
000 XX Xxxx 000, Xxxxx 000
Xxx Xxxxxxx, XX 00000-0000
X.X.X.
with a copy to:
U. Xxxxxxx Xxxxx
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Chief Financial Officer
Interleukin Genetics, Inc.
000 XX Xxxx 000, Xxxxx 000
Xxx Xxxxxxx, XX 00000-0000
U.S.A.
TO THE UNIVERSITY:
Xx. Xxxxx X. Xxxxxxxxxx
The University of Sheffield
Research and Consultancy Xxxx
0-0 Xxxxxxxxxx Xxxx
Xxxxxxxxx, X00 0XX
Xxxxxxx
with a copy to:
Xxxxxxxxx Xxxxxx X. Xxxx
Lord Xxxxxx Chair of Molecular Medicine
The University of Sheffield
Department of Molecular & Genetic Medicine
Xxxxx Xxxxxxxxxxx Xxxxxxxx
Xxxxxxxxx, X00 0XX
Xxxxxxx
Sir Xxxxxx Xxxxxxx
Vice Chancellor
Xxx Xxxxxxxxxx xx Xxxxxxxxx
Xxxxxxxxx
Xxxxxxx
12.5 DELAYS BEYOND CONTROL. Neither party will be liable to the other
party for any failure or delay in performance caused by reasons beyond such
party's reasonable control, and such failure or delay will not constitute a
material breach of this Agreement.
12.6 ASSIGNMENT. Neither party may assign its rights or obligations
hereunder, by operation of law or otherwise, without express written consent of
the other party, which consent will not be unreasonably withheld. Any attempted
assignment without such consent shall be void. Subject to the foregoing, this
Agreement will benefit and bind the successors and assigns of the parties.
12.7 NO THIRD PARTY BENEFICIARIES; NO AGENCY. Except as expressly provided
herein to the contrary, no provision of this Agreement, express or implied, is
intended or will be construed to confer rights, remedies or other benefits to
any third party under or by reason of this Agreement. This Agreement will not be
construed as creating an agency, partnership or any
-14-
other form of legal association (other than as expressly set forth herein)
between the parties.
12.8 ENTIRE AGREEMENT. This Agreement is the final, complete and exclusive
agreement of the Parties with respect to the subject matter hereof and
supersedes and merges all prior agreements and discussions between MMS and
University.
12.9 MULTIPLE COUNTERPARTS. This Agreement may be executed in multiple
counterparts, each of which will be considered an original and all of which
together will constitute one agreement. This Agreement may be executed by the
attachment of signature pages which have been previously executed.
12.10 CUMULATION. All rights and remedies enumerated in this Agreement
will be cumulative and none will exclude any other right or remedy permitted
herein or by law.
12.11 PUBLICITY. Neither Party hereto shall originate any publicity, news
release or other public announcements, written or oral, whether to the public
press or otherwise, relating to this Agreement, to any amendment hereto or to
either Party's performance hereunder, without the prior written approval of the
other Party, which approval shall not be unreasonably withheld.
12.12 HEADINGS. The headings contained in this Agreement are inserted for
convenience of reference only and are not intended to be a part of or to affect
the meaning or interpretation of this Agreement.
12.13 REVIEW OF COUNSEL. Each Party acknowledges that it and its counsel
have received and reviewed this Agreement and that normal rules of construction,
to the effect that ambiguities are to be resolved against the drafting Party,
shall not apply to this Agreement or to any amendments, modifications,
schedules, exhibits or attachments to this Agreement.
12.14 EXPENSES. Each Party is responsible for its own expenses related to
the preparation and execution of this Agreement.
IN WITNESS WHEREOF, the parties have executed this Agreement through their
duly authorized representatives as set forth below:
INTERLEUKIN GENETICS, INC. THE UNIVERSITY OF SHEFFIELD
By: By:
Printed Name: XXXXXXX X. XXXXXXX, DDS, PHD Printed Name:
Title: PRESIDENT Title:
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SCHEDULE 1
FIELD OF USE
CONFIDENTIAL
1. Discovery and development of new technology (markers, genes and/or gene
polymorphisms etc.) involved in the regulation and control of cytokine
mechanisms involved in inflammatory pathological processes and inflammatory
diseases, including but not limited to the genetics of cytokines for all uses
including diagnostic (including prognostic, diagnostic and pharmacogenomic
uses), therapeutic or prophylactic regimens (including prescription drug and
nutraceutical regimens).
2. Discovery and development of new technology (markers, genes and/or gene
polymorphisms, etc.) within the IL-1 and TNF gene clusters for all clinical
fields and for all uses including diagnostic (including prognostic, diagnostic
and pharmacogenomic uses), therapeutic or prophylactic regimens (including
prescription drug and nutraceutical regimens).
3. Protease technology - all applications.
SCHEDULE 2
PATENTS APPLICATIONS
CONFIDENTIAL
PENDING, ISSUED
o Detecting Genetic Predisposition for Osteoporosis, Patent # 5,698,399
o Prediction of Chronic Obstructive Airway Disease, US 09/005,923
o Prediction of Risk of Interstitial Lung Disease, US 09/286,108
o Prediction of Coronary Artery Disease, US 08/013,456
o Diagnostics and Therapeutics for Restenosis, pending
o Fetal Testing for Prediction of Low Birth Weight, US 60/082,487
o Detecting Genetic Predisposition to Sight-Threatening Diabetic
Retinopathy, US 09/037,472
o Transgenic Models of Inflammatory Disease, PCT/US98/24287
o Diagnostic and Therapeutics for Sepsis, US 09/183,850
o Therapeutics and Diagnostics Based on IL-1B Mutation, US09/247,874
o Diagnostics and Therapeutics for Vascular Diseases, pending
o Prediction of Inflammatory Diseases, PCT GB 98/01481
o Diagnostics and Therapeutics for Diseases Associated with an IL-1
Inflammatory Haplotype, pending
o Designer Proteases, US 09/266,498
o The IBR Gene and Polypeptide Products, 60/144,298
APPLICATIONS IN PROCESS
o Diagnostics and Therapeutics for MIF Polymorphisms
o Diagnostics and Therapeutics for Retinopathy
o Diagnostic and Therapeutics for Chronic Obstructive Airway Disease
SCHEDULE 3
EXISTING PROJECT AGREEMENTS
CONFIDENTIAL
1. Interleukin Genetics Development And Commercialization Project Agreement
(Osteoporosis) dated September 1, 1996 entered into by IL and the
University.
2. Interleukin Genetics Development And Commercialization Project Agreement
(Atherosclerosis Including Coronary Artery Disease) dated September 1,
1996 entered into by IL and the University.
3. Interleukin Genetics Development And Commercialization Project Agreement
(Eye Diseases Among Diabetics) dated September 1, 1996 entered into by IL
and the University.
4. Interleukin Genetics Development And Commercialization Project Agreement
(Protease Technology) dated October 1, 1996 entered into by IL and the
University.
5. Interleukin Genetics Research Support Agreement and Amendments to Various
Existing Project Agreements, dated July 1, 1997 entered into by IL and the
University.
6. Interleukin Genetics Development And Commercialization Project Agreement
(Chronic Obstructive Lung Disease Including Asthma) dated August 1, 1997
entered into by IL and the University.
7. Amendment No. 1 to Interleukin Genetics Development and Commercialization
Project Agreement (Protease Technology), dated August 1, 1997 entered into
by IL and the University.
8. Interleukin Genetics Development And Commercialization Project Agreement
(Signal Transduction) dated January 1, 1998 entered into by IL and the
University.
9. Interleukin Genetics Development And Commercialization Project Agreement
(Interleukin Knockout) dated January 1, 1998 entered into by IL and the
University.
10. Interleukin Genetics Development and Commercialization Project Agreement
(Protease Technology), October 1, 1996.
SCHEDULE 4
SHEFFIELD INVESTIGATORS
CONFIDENTIAL
[Confidential treatment has been requested for portions of this page. The
confidential portions have been redacted and are denoted by [**]. The
confidential portions have been seperately filed with the Securities and
Exchange Commission.]
Sheffield Investigators shall mean Professor Xxxxxx Xxxx and other parties
(including employees, consultants, faculty, technicians, visiting
scientists, students, and/or post-doctoral associates) working for or
within the Department of Molecular and Genetic Medicine that are: (a)
listed below; (b) performing research collaboratively with Professor
Xxxxxx Xxxx within the Field of Use; or (c) performing research where
Professor Xxxxxx Xxxx is the instigator, principal investigator or
supervisor.
Sheffield Investigators within the Department of Molecular and Genetic
Medicine:
[**]
Sheffield Investigators shall also mean other parties (including
employees, consultants, faculty, technicians, visiting scientists,
students, and/or post-doctoral associates) outside the Department of
Molecular and Genetic Medicine that are listed below.
[**]
SCHEDULE 5
SUBSCRIPTION AGREEMENT
SCHEDULE 6
STOCK OPTION AGREEMENT
SCHEDULE 7
SHEFFIELD INVESTIGATOR AGREEMENT
