EXHIBIT 10.41
ASSIGNMENT AND AMENDMENT AGREEMENT
THIS ASSIGNMENT AND AMENDMENT AGREEMENT, dated as of March 7, 2003
(this "Agreement"), by and among SWISS FEDERAL INSTITUTE OF TECHNOLOGY (ETHZ),
having an address at Xxxxxxxxxxxx 000, XX-0000 Xxxxxx, Xxxxxxxxxxx and
UNIVERSITY OF ZURICH, having an address at Xxxxxxxxxxxx 00 XX-0000 Xxxxxx,
Xxxxxxxxxxx (collectively, "Universities"), PHAIRSON MEDICAL LIMITED, a United
Kingdom company ("Phairson"), and LIFE MEDICAL SCIENCES, INC., a Delaware
corporation ("LMS"). References to Universities, Phairson and LMS hereunder
shall include each of their respective agents, nominees, designees, successors,
assigns, heirs or other successors-in-interest. All representations, warranties
and covenants of the Universities hereunder shall be joint and several.
W I T N E S S E T H:
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WHEREAS, Phairson has agreed to sell LMS all of its assets related to
its polymer-based technology business, pursuant to an Asset Purchase Agreement,
dated as of the date hereof, by and between Phairson, an affiliate of Phairson
and LMS (the "Asset Purchase Agreement");
WHEREAS, among the assets to be sold to LMS pursuant to the Asset
Purchase Agreement are all of Phairson's rights under the contract, dated as of
March 1, 1999, between Phairson and Universities, as amended pursuant to an
amendment effective June 1, 1999 (the "Development Agreement");
WHEREAS, Universities agree to the assignment of the Development
Agreement and the amendment thereof, all subject to and in accordance with the
provisions of this Agreement.
NOW THEREFORE, in consideration of the premises and the mutual
covenants contained herein and other good and valuable consideration, the
receipt and sufficiency of which are hereby acknowledged, the parties hereto
hereby agree as follows:
1. CONSENT BY UNIVERSITIES TO ASSIGNMENT. Subject to the provisions of this
Agreement, and in order to induce the other parties hereto to enter into the
Asset Purchase Agreement and to consummate the transactions contemplated
thereby, Universities hereby consent to the assignment of the Development
Agreement from Phairson to LMS effective as of the closing of the Asset Purchase
Agreement (which date shall not be later than March 15, 2003, the "Closing") and
agree that, notwithstanding any provision of the Development Agreement to the
contrary, Phairson shall not be liable for obligations arising under the
Development Agreement from and after the Closing.
2. ASSIGNMENT AND ASSUMPTION OF DEVELOPMENT AGREEMENT. Effective as of the
Closing, (i) Phairson hereby sells, assigns, conveys and transfers to LMS all of
Phairson's right, title and interest in, to and arising under or relating to the
Development Agreement and all intellectual property and other rights of Phairson
obtained or arising thereunder, but excluding the Patent Rights (which shall be
transferred to LMS pursuant to separate instrument(s)) and (ii) LMS hereby
assumes and shall be solely responsible for all of the obligations and
liabilities of Phairson arising under the Development Agreement from and after
such date.
3. AMENDMENT OF DEVELOPMENT AGREEMENT. LMS and Universities agree that,
effective as of the Closing, the Development Agreement shall be amended as
follows:
(a) to change all references therein from "Phairson" to "LMS"; to change
all references therein from "Foundation" to "Universities"; and to
change all references therein from "ETH Zurich Institute of Biomedical
Engineering...ETH" to "Swiss Federal Institute of Technology (ETHZ)".
(b) to substitute the LMS address and contact information set forth in
Section 10 hereof for the address and contact information of the
Phairson technical and administrative representatives in Article
IV-Designated Representatives of the Development Agreement, and to
further add the other provisions of Section 10 hereof (exclusive of
the contact information) to the provisions of Article IV-Designated
Representatives of the Development Agreement and to substitute the
Universities' address and contact information set forth in Section 10
hereof for the address and contact information of the Foundation
technical and administrative representatives in Article IV-Designated
Representatives of the Development Agreement
(c) to substitute the following for Section 4 of Article VI:
"4. (a) Universities hereby grant Contractor an exclusive,
worldwide, perpetual license under their Proprietary Rights in
the Technology, without limitation or restriction as to use or
field of use (the "License"). The License includes the right
to sublicense. With respect to sublicenses granted by
Contractor, Contractor shall promptly provide Universities
with a copy of each sublicense issued; and collect payment of
all payments due, directly or indirectly, to Universities from
Sublicensees and summarize and deliver all reports due,
directly or indirectly, to Universities from Sublicensees.
Universities reserve the right to use Proprietary Rights in
the Technology solely for internal educational and research
purposes.
In consideration for the License, Contractor agrees to pay
Universities, in the aggregate, one tenth of one percent of
any and all Net Sales and Sublicense Fees actually received by
it. If, prior to receipt by Contractor of Net Sales or
Sublicense Fees, Contractor fails to perform any Development
Work with respect to the Technology for a period of two years
or more, Universities shall have the right to enter into good
faith negotiations with Contractor to terminate the License
and develop the Technology.
(b) For the purposes of this section, the following
terms shall have the following meanings:
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`Development Work' means any technical or business
activity relating to the development, manufacture, marketing
or commercialization of a Product or Products or efforts to
secure intellectual property rights with respect thereto.
`Products' means products incorporating the
Technology.
`Proprietary Rights' means patent rights, copyrights,
mask work rights, trademark rights, trade secret rights and
any and all other intellectual property or similar rights.
`Net Sales' of a party means all revenues actually
received by that party or its affiliate(s) with respect to
sale of Products in any and all countries in which a valid
patent included in the licensed Proprietary Rights then
exists, less any allowances for returns, shipping and
insurance costs, discounts and promotional allowances, sales,
use, value-added and similar taxes and duties and similar
governmental assessments.
`Sublicense Fees' means any and all revenue received
by Contractor in respect of sublicenses of the Proprietary
Rights licensed under this Agreement. For the avoidance of
doubt, as used in the foregoing sentence the term "revenue"
includes the value, as determined in accordance with United
States generally acceptable accounting principles,
attributable to property, if any, other than cash received by
Contractor in respect of sublicenses of the Proprietary Rights
under this Agreement."
`Technology' means inventions, improvements,
discoveries, know-how and the like made or conceived as a
result of or in connection with the sponsored work under this
Agreement.
(d) Beginning January 1, 2004 and ending on the date of first commercial
sale of a Product, Contractor shall submit to Universities annual
progress reports covering Contractor's (and Sublicensee's) activities
to develop and test all Products and obtain governmental approvals
necessary for marketing the same. Such reports shall include a summary
of work completed; summary of work in progress; current schedule of
anticipated events or milestones and market plans for introduction of
Products. Contractor shall also report to Universities, in its
immediately subsequent progress report, the date of first commercial
sale of a Product. After the first commercial sale of a Product
anywhere in the world, Contractor shall submit to Universities
annually royalty reports on or before each February 28. Each royalty
report shall cover Contractor's (and Sublicensee's) most recently
completed calendar year and shall show (i) the gross sales and Net
Sales during the most recently completed calendar year and the
royalties, in U.S. Dollars, payable with respect thereto; (ii) the
number of each type of Product sold; (iii) sublicense fees and
royalties received during the most recently completed calendar year in
US dollars, payable with respect thereto; (iv) the method used to
calculate the royalties; and (v) the exchange rates used. If no sale
of Products has been made and no sublicense revenue has been received
by Contractor during any reporting period, Contractor shall so report.
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(e) All fees and royalties due Universities shall be paid in United States
dollars and all checks shall be made payable to "The University of
Zurich", referencing "Unitectra Technology Transfer UZ-04/201". When
Products are sold in currencies other than United States dollars,
Contractor shall first determine the earned royalty in the currency of
the country in which Products were sold and then convert the amount
into equivalent United States funds, using the exchange rate quoted in
the Wall Street Journal on the last business day of the applicable
reporting period. Royalties shall accrue when Products are invoiced,
or if not invoiced, when delivered to a third party. Contractor shall
pay earned royalties on or before February 28. Each such payment shall
be for earned royalties accrued within Contractor's most recently
completed calendar year. Royalties earned on sales occurring or under
sublicense granted pursuant to this Agreement in any country shall not
be reduced by Contractor for any taxes, fees, or other charges imposed
by the government of such country on the payment of royalty income,
except that all payments made by Contractor in fulfillment of
Universities' tax liability in any particular country may be credited
against earned royalties or fees due Universities for that country.
Contractor shall pay all bank charges resulting from the transfer of
such royalty payments. In the event royalty, reimbursement and/or fee
payments are not received by Universities when due, Contractor shall
pay to Universities interest charges at a rate of ten percent (10%)
per year. Such interest shall be calculated from the date payment was
due until actually received by Universities.
(f) To substitute the following for Section 3 of Article VI.
At its sole discretion and expense, Contractor shall diligently
prosecute and maintain the patent applications and patents relating to
Proprietary Rights using counsel of its choice. Contractor or its
counsel shall, upon request, provide Universities with copies of all
relevant documentation relating to such prosecution including, but not
limited to, draft patent applications, office actions and responses
thereto, and appropriate correspondence with counsel and agents. All
patents and patent applications relating to Proprietary Rights shall
be assigned jointly to Contractor and Universities (ie. "Swiss Federal
Institute of Technology(ETHZ)" and "University of Zurich"). Contractor
shall, at its sole discretion and expense, apply for an extension of
the term of any patent in Patent Rights if appropriate. Contractor
shall prepare all documents for such application, and Universities
shall execute such documents and take any other additional action as
Contractor reasonably requests in connection therewith.
(g) The license granted is provided "AS IS" and without WARRANTY OF
MERCHANTABILITY or WARRANTY OF FITNESS FOR A PARTICULAR PURPOSE or any
other warranty, express or implied. UNIVERSITIES make no
representation or warranty that the Product(s) or the use of
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Proprietary Rights or Technology will not infringe any other patent or
other proprietary rights. Contractor shall indemnify, hold harmless
and defend UNIVERSITIES, its officers, employees, and agents and the
Inventors of the patents and patent applications in Proprietary Rights
and their employers (collectively, the "Indemnified Parties") against
any and all claims, suits, losses, damage, costs, fees and expenses
resulting from or arising out of any theory of product liability
relating to the Product(s). Notwithstanding the foregoing, Contractor
shall have no obligation pursuant to this paragraph with respect to
any claim resulting from or arising out of any negligent or wrongful
action or inaction of any of the Indemnified Parties or which has been
settled by an Indemnified Party without the prior consent of
Contractor (which consent shall not be unreasonably withheld).
Contractor shall have the right to direct the defense of any action
brought against an Indemnified Party with respect to the subject of
indemnity contained herein, and to retain counsel of its choosing in
connection therewith (subject to the reasonable approval of the
Indemnified Parties).
All other provisions of the Development Agreement shall remain in full force and
effect.
4. REPRESENTATIONS AND WARRANTIES OF UNIVERSITIES. Universities hereby represent
and warrant to LMS and Phairson, as of the date hereof, that: (i) this Agreement
has been duly authorized by Universities, and the execution, delivery and
performance of this Agreement by Universities and the consummation of the
transactions contemplated hereby do not and will not constitute a breach of any
agreement to which it is a party or violate any provision of any law to which it
is subject; (ii) no consent of any person or governmental entity is required in
connection with the execution or delivery of this Agreement by Universities or
the consummation by Universities of the transactions contemplated hereby; (iii)
there are no actions, suits, proceedings, orders, grievance proceeding or claims
pending or, to Universities' knowledge, threatened against them relating to the
Development Agreement or this Agreement, or the subject matter thereof and
hereof; (iv) there is no default, or event which with the passage of time would
constitute a default, under the Development Agreement by either Universities or,
to Universities' knowledge, by Phairson; (v) Universities have delivered to
Phairson complete written disclosures with respect to all Inventions under the
Development Agreement and Universities acknowledge that all of the Inventions
were conceived and/or made jointly by Universities and Phairson (vi) upon
consummation of the transactions contemplated by this Agreement, there will be
no amounts owed Universities by Phairson or Phairson by Universities; and (vii)
the Development Agreement, a true and complete copy of which is attached as
Exhibit A hereto, has not been amended other than the amendment effective June
1, 1999 (a form of which is included as part of Exhibit A), is in full force and
effect and is enforceable in accordance with its terms, and, upon consummation
of the transactions contemplated by this Agreement, will be enforceable against
Universities by LMS in accordance with its terms (as amended hereby); and (viii)
the Universities have no objection to the Contract dated 1 December 1998 between
Phairson and Xxxxxxxxx X. X. Xxxxxxx.
5. REPRESENTATIONS AND WARRANTIES OF PHAIRSON. Phairson hereby represents and
warrants to Universities and LMS, as of the date hereof, that: (i) this
Agreement has been duly authorized by Phairson, and the execution, delivery and
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performance of this Agreement by Phairson and the consummation of the
transactions contemplated hereby do not and will not constitute a breach of the
organizational or constituent documents of Phairson or any agreement to which
Phairson is a party or violate any provision of any law to which it is subject;
(ii) no consent of any person or governmental entity is required in connection
with the execution or delivery of this Agreement by Phairson or the consummation
by Phairson of the transactions contemplated hereby; (iii) there are no actions,
suits, proceedings, orders, grievance proceeding or claims pending or, to
Phairson's knowledge, threatened against it relating to the Development
Agreement or this Agreement, or the subject matter thereof and hereof; (iv)
there is no default, or event which with the passage of time would constitute a
default, under the Development Agreement by either Phairson, or to Phairson's
knowledge, by Universities; (v) upon consummation of the transactions
contemplated by this Agreement, there will be no amounts owed Universities by
Phairson or Phairson by Universities; and (vi) the Development Agreement, a true
and complete copy of which is attached as Exhibit A hereto, has not been amended
other than the amendment effective June 1, 1999 (a form of which is included as
part of Exhibit A) and, upon consummation of the transactions contemplated by
this Agreement, will be enforceable by each party against the other in
accordance with its terms (as amended hereby).
6. REPRESENTATIONS AND WARRANTIES OF LMS. LMS hereby represents and warrants to
Universities and Phairson, as of the date hereof, that: (i) this Agreement has
been duly authorized by LMS, and the execution, delivery and performance of this
Agreement by LMS and the consummation of the transactions contemplated hereby do
not and will not constitute a breach of the Certificate of Incorporation or
By-laws of LMS or any agreement to which LMS is a party or violate any provision
of any law to which it is subject; (ii) no consent of any person or governmental
entity is required in connection with the execution or delivery of this
Agreement by LMS or the consummation by LMS of the transactions contemplated
hereby; and (iii) there are no actions, suits, proceedings, orders, grievance
proceeding or claims pending or to LMS' knowledge, threatened against, it
relating to this Agreement or the subject matter hereof and (iv) the Development
Agreement will be enforceable against LMS by Universities in accordance with its
terms (as amended hereby).
7. ACKNOWLEDGMENT AND AFFIRMATION. The Swiss Federal Institute of Technology
(ETHZ) ("ETHZ") and the University of Zurich ("UNIZH") hereby acknowledge that
the Development Agreement incorrectly listed an entity referred to as "Institute
of Biomedical Engineering, ETH Zurich and University of Zurich" as a party
instead of ETHZ and UNIZH and that the correct parties to the Development
Agreement have always been Phairson Medical Limited, ETHZ and UNIZH. ETHZ and
UNIZH affirm that the rights and obligations of "Institute of Biomedical
Engineering, ETH Zurich and University of Zurich" are, and have always been,
therights and obligations of, and have been and will be performed by, ETHZ and
UNIZH.
8. FURTHER ASSURANCES. The parties hereto agree to timely execute such other
agreements, assignments, consents, waivers or other documents reasonably
necessary to further give effect to or evidence the agreements hereunder.
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9. SUCCESSORS AND ASSIGNS. This Agreement shall be binding upon and inure to the
benefit of Universities and LMS and their respective successors and assigns.
10. GOVERNING LAW. This Agreement shall be deemed to be a contract entered into
pursuant to the laws Switzerland and shall in all respects be governed,
construed, applied and enforced in accordance with the laws Switzerland (without
reference to its rules as to conflicts of law). Exclusive place of jurisdiction
shall be Zurich, Switzerland.
11. NOTICES. All notices and other communications hereunder and under the
Development Agreement shall be in writing and shall be deemed given if delivered
personally or upon sending a copy thereof by first class or express mail,
postage prepaid, or by telegram (with messenger service specified), or reputable
overnight courier services, charges prepaid, to such party's address (or to such
party's telecopier):
If to Universities, to:
University of Zurich
Unitectra Technology Transfer [UZ-04/201]
Xxxxxxxxxxxxx 00
XX-0000 Xxxxxx
Xxxxxxxxxxx
Telephone: x00 0 000 00 00
Facsimile: x00 0 000 00 00
Attention: Mr. Urs Dommann
(Mr. Urs Dommann is Administrative Representative, see
Development Agreement for contact information for Technical
Representative)
If to Phairson, to:
Phairson Medical Limited
Xxxxxxx Xxxxxxx House, City Forum
000 Xxxx xxxx
Xxxxxx, Xxxxxx Xxxxxxx
XX0X 0XX
Telephone: x00 (0) 000 000 0000
Facsimile: x00 (0) 000 000 0000
If to LMS, to:
Life Medical Sciences, Inc.
XX Xxx 000
Xxxxxx Xxxxxx, Xxx Xxxxxx 00000
Telephone/Facsimile: (000) 000-0000
Email: XXXXXXXX@XXX.XXX
Attention: Xxxxxx X. Xxxxxx, President
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or to such other person or address as any of the foregoing may have designated
for that purpose by notice to the others.
12. MISCELLANEOUS. This Agreement constitutes the entire agreement between the
parties with respect to the subject matter hereof and may not be modified in any
manner or terminated except by an instrument in writing executed by the parties
hereto. Nothing in this Agreement shall constitute a waiver of, expansion of or
limitation upon any of Phairson's or LMS' rights and remedies as between
themselves under the Asset Purchase Agreement and, in the case of any such
conflict between the terms of the Asset Purchase Agreement and this Agreement,
the Asset Purchase Agreement shall control. If any term, covenant or condition
of this Agreement is held to be invalid, illegal or unenforceable in any
respect, this Agreement shall be construed without such provision. This
Agreement may be executed in several counterparts, each of which counterparts
shall be deemed an original instrument and all of which together shall
constitute a single Agreement. Whenever the context may require, any pronouns
used herein shall include the corresponding masculine, feminine or neuter forms,
and the singular form of nouns and pronouns shall include the plural and vice
versa.
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IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly executed as of the date first set forth above.
SWISS FEDERAL INSTITUTE OF TECHNOLOGY
UNIVERSITY OF ZURICH
By:_____________________________
Name: Xxxxxxx Xxxxxxx
Title: Professor, Director IBT
By:_____________________________
Name: Xxxxxxxxx Xxxxxxx
Title: Professor, Vice President Research
University of Zurich
By:_____________________________
Name: Xxxx Xxxxx
Title: Professor, Vice President Research
ETHZ
PHAIRSON MEDICAL LIMITED
By:_____________________________
Name:
Title:
LIFE MEDICAL SCIENCES, INC.
By:_____________________________
Name:
Title:
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EXHIBIT A
(Development Agreement)
10
CONTRACT
Between
PHAIRSON MEDICAL LIMITED
and
INSTITUTE OF BIOMEDICAL ENGINEERING, ETH ZURICH AND UNIVERSITY OF ZURICH
THIS AGREEMENT, having an Effective Date of March 1st 1999 is made by and
between Phairson Medical Limited, a corporation having its principal place of
business at 000 Xxx Xxxxxxxx, Xxxxxxx Xxxxxxx, Xxxxxx, XX00 XXX, X.X.
(hereinafter referred to as "CONTRACTOR") and the ETH Zurich Institute of
Biomedical Engineering, an academic laboratory located at Xxxxxxxxxxxxxx 00, XXX
and University of Zurich, XX-0000 Xxxxxx, Xxxxxxxxxxx (hereinafter referred to
as "FOUNDATION").
WITNESSETH:
WHEREAS, CONTRACTOR has identified and related specific tasks described under
ARTICLE I; and
WHEREAS, FOUNDATION is available and qualified to perform such tasks.
NOW THEREFORE, in consideration of the promises and the mutual covenant's
contained herein, the parties agree as follows:
ARTICLE I - Scene of Work and Performance
FOUNDATION agrees to USE ITS BEST EFFORTS to perform the work outlined in
ATTACHMENT 1.
FOUNDATION undertakes to report to CONTRACTOR at the dates set out below:
FOUNDATION reporting dates:
Date: May 1st 1999
Date: July 1st 1999
Date: September 1st 1999
Date: November 1st 1999
Date: January 1st 2000
Date: March 1st 2000
ARTICLE II - Period of Performance
The period of performance shall commence on Effective Date and shall
terminate on March 1st 2000 unless extended by written mutual agreement of the
parties hereto or terminated in accordance with the provisions of Article XIII.
FOUNDATION shall notify CONTRACTOR, as soon as possible, of my reason that might
contribute to its failure to perform, within the specified performance period,
even if such reason is beyond its control and without fault or negligence of the
FOUNDATION.
ARTICLE III - Consideration, Records and Billing Instructions
1. FOUNDATION shall be reimbursed by CONTRACTOR for all costs incurred in
connection with the Scope of Work in the amount of (SFr 158,000 ). A
total budget is presented below, with a distribution between cost
categories shown approximately:
Salary: see attached
Expendable supplies: see attached
NMR, see attached
Etc.
2. Payments shall be made to FOUNDATION by CONTRACTOR upon presentation
of invoices in accordance with the following schedule:
Date: March 1st, 1999 SFr 39,500
Date: June 1st, 1999 SFr 39,500
Date: September 1st, 1999 SFr 39,500
Date: December 1st, 1999 SFr 39,500
3. Payment of any additional amounts must be agreed upon by CONTRACTOR
and FOUNDATION if the Research Project is extended in scope or
duration.
Whenever a payment becomes 60 days past due, FOUNDATION reserves the right
to stop work until payment is received. Wire payments shall be made to the
following account:
BANK DETAILS NEEDED FOR WIRE INSTRUCTION
ARTICLE IV - Designated Representatives
1. Technical Representative
For CONTRACTOR: For FOUNDATION:
Name: Xxxxxx Xxxxxxx Name: Xxxx. Xxxxxxx Xxxxxxx
Address: 602 The Xxxxxxxx Address: Institute for Biomedical Engineering
Chelsea Harbour ETH and University of Zurich
Xxxxxx XX00 OXF Xxxxxxxxxxxxxx 00
X.X. XX-0000
Xxxxxxxxxxx
Telephone: x00 000 000 0000 Telephone: x00 0 000 0000
Fax: x00 000 000 0000 Fax: x00 0 000 0000
Email: xxxxxx.xxxxxxx@xxxxxxxx.xxx Email: xxxxxxx@xxxxxx.xxx.xxxx.xx
2. Administrative Representative
For CONTRACTOR: For FOUNDATION:
Name: Xxxxxxx Xxxxx Name: Xx. Xxxxxx Xxxxxxx
Address: 602 The Xxxxxxxx Address: Office of the Vice President for Research
Chelsea Harbour Technology Licensing
Xxxxxx XX00 OXF ETH Zentrum
U.K. Xxxxxxxxxxx 000, XX X 00
XX-0000
Xxxxxxxxxxx
Telephone: x00 000 000 0000 Telephone: x00 0 000 0000
Fax: x00 000 000 0000 Fax: 00 0 000 0000
Email: xxxxxxx.xxxxx@xxxxxxxx.xxx
ARTICLE V - Reports
FOUNDATION will submit in a timely manner those reports described in the
Scope of Work (Article I). Such reports shall be in the format agreed to by the
Designated Technical Representatives.
ARTICLE VI - Patents and Inventions
1. All rights and title to all inventions, improvements and/or
discoveries, including software, know-how, patent and other intellectual or
industrial property conceived and/or made by one or more employees or students
of FOUNDATION in the performance of the agreement, shall belong to the
FOUNDATION.
All rights and title to all inventions, improvements and/or
discoveries, including software, know-how, patent and other intellectual or
industrial property conceived and/or made jointly by one or more employees or
students of FOUNDATION and one or more employees of CONTRACTOR in the
performance of the agreement, shall belong jointly to the FOUNDATION and
CONTRACTOR.
2. FOUNDATION shall promptly notify CONTRACTOR of any inventions,
improvements, discoveries, software and the like conceived and/or made during
the performance of this agreement (hereafter "Inventions"). Disclosures
submitted by FOUNDATION to CONTRACTOR shall be identified as confidential.
3. The filing, prosecution and maintenance of patent applications and
patents covering Inventions shall be carried out by the CONTRACTOR at its sole
discretion and expense. In the event the CONTRACTOR elects not to apply for any
such patents, the foundation shall have the option, at its sole expense, to
apply for the patents. The CONTRACTOR shall confirm its intention not to apply
for any such patents in writing. FOUNDATION and CONTRACTOR shall co-operate in
the filing, prosecution and maintenance of inventions.
4. At the sole discretion of the CONTRACTOR, the FOUNDATION shall license
all rights to inventions, improvements and/or discoveries, including software,
know-how, patent and other intellectual or industrial property resulting from
the sponsored work to the CONTRACTOR or to a party designated by the CONTRACTOR.
The license will be world-wide and exclusive. CONTRACTOR will pay FOUNDATION one
tenth of one percent of revenues received from third parties for sub-licences or
of any direct product sales for products developed subject to the license. If
CONTRACTOR does not carry out any development work on any particular application
of said inventions, improvements and/or discoveries resulting from the sponsored
work for a period of two years or more, FOUNDATION will have the right to enter
into good faith negotiations with CONTRACTOR to license and develop said
inventions, improvements and/or discoveries.
ARTICLE VII- Proprietary or Confidential Information
Should proprietary or confidential information or materials be exchanged
under this agreement, each party agrees, absent any special provisions to the
contrary, to:
1. use its best efforts to receive and maintain in confidence any and all
confidential or proprietary information or materials delivered by one
party hereto to the other party;
2. use confidential information or proprietary materials solely for the
purpose or purposes for which it was disclosed and for no other
purpose whatsoever;
3. disclose confidential information and share proprietary materials with
its employees, officers, agents, and representatives only on a need to
know basis;
4. identify in writing all confidential or proprietary information or
materials as such at the time of disclosure or within 60 days of
disclosure in the case of oral communication;
5. not release confidential or proprietary information or materials to
any third parties; and
6. dispose of or return proprietary or confidential information or
materials to the disclosing party when requested or upon expiration or
termination of this contract. The period of protection of confidential
information shall be 5 years from the effective date of this contract.
Confidential information does not include any information which
1. is already in the public domain or which becomes available to the
public through no breach of confidentiality by the recipient;
2. was, as between recipient and discloser, lawfully in recipient's
possession on a non-confidential basis prior to receipt from the
discloser;
3. is received by recipient independently on a non-confidential basis
from a third party free to lawfully disclose such information to the
recipient; or
4. is independently developed by recipient without use of the discloser's
confidential information:
The release of confidential information by the receiving party to satisfy the
requirements of federal, state or local laws shall not be a breach of this
agreement.
ARTICLE VIII- Publication
Subject to the limitations of ARTICLES VI and VII, FOUNDATION shall have
the right to publish any information or material resulting from the conduct of
the Scope of Work. FOUNDATION shall furnish the CONTRACTOR with a copy of any
proposed publication 30 days in advance of the proposed submission. CONTRACTOR
may request FOUNDATION to delay publication for a maximum of an additional 120
days in Order to pursue a patent on any Invention described in the manuscript.
ARTICLE IX - Changes and Modifications
Any changes to this contract must be made in writing and must be executed
by both parties to indicate acceptance of the modification. Any change that
might impact cost, price, or delivery must be agreed to in writing prior to
initiation of any work associated with the proposed change.
ARTICLE X- Assignment and Subcontracts
Neither performance, nor payment, involving the whole or any part of the
research effort described under Article I may be assigned, subcontracted,
transferred, or otherwise given or imposed on any other party by FOUNDATION
without the prior written consent of the CONTRACTOR.
ARTICLE XI - Mutual Responsibilities
1. Each party will comply with all applicable governmental laws,
ordinances, rules and regulations in the performance of this contract.
2. Without affecting or limiting any other provisions of this contract,
it is agreed each party's obligation under Article VII shall survive
the expiration of this contract.
3. Each party to this contract is an independent contractor with each
party solely responsible for its own business expenses and employees
including but not limited to salaries, benefits, insurances,
withholding, and worker compensation and taxes. Employees of either
party shall not be deemed agents, employees or representatives of the
other party.
4. In the execution to this contract, the person whose signatures are set
forth are duly authorized to execute the contract and bind the
parties.
ARTICLE XII- Use of Names
CONTRACTOR shall not use the name of FOUNDATION and FOUNDATION shall not
use the name of CONTRACTOR in any news release, advertising or other publication
without the express written permission from the other party. Such permission
shall not be unreasonably withheld.
ARTICLE XIII - Termination
Either party may terminate this contract at any time if:
1. The other party materially breaches the terms of this contract;
provided that the non-breaching party shall have given the breaching
party written notice of such breach and the breaching party shall have
failed to cure the same within 30 days after receipt of such notice.
2. There is the loss or departure of key personnel that would jeopardize
both the quality and time of performance or would make performance
impractical with respect to the budget contemplated for this contract,
and a mutually acceptable replacement cannot be found.
3. performance of any part of this contract by a party is prevented or
delayed by reason of Force Majoure and cannot be overcome by
reasonable diligence to the satisfaction of the other party; or
4. The other party ceases, discontinues or indefinitely suspends its
business activities related to the services to be provided under this
contract, or the other party voluntarily or involuntarily files for
bankruptcy.
In the event of termination, immediate notice shall be given by the party
requesting termination which should specify both the reason and the effective
date of termination.
This Agreement may be terminated by the CONTRACTOR by written notice to
FOUNDATION to that effect if, at any stage after expiration of an initial 3
month period from the commencement date, and after a review of the Research
which shall have been completed as at that date, in the reasonable opinion of
CONTRACTOR it is decided that continuation of the research is not likely to
produce results that will be of sufficient commercial interest to CONTRACTOR.
Upon any termination except for breach of contract by CONTRACTOR, FOUNDATION
shall deliver to CONTRACTOR in the state they exist as of the date of
termination, all work, product, materials, including confidential information
and property belonging to CONTRACTOR. CONTRACTOR shall, within 30 days after
termination, pay FOUNDATION all payments due as of the effective date of
termination.
For the avoidance of doubt, Article VI and VII shall survive termination.
ARTICLE XIV - Applicable Law
This contract shall be governed by the laws of Switzerland and the place of
jurisdiction shall be Zurich.
ARTICLE XIV - Entire Agreement
This contract is intended by the parties as a final written expression of
their agreement and supersedes and replaces any prior oral or written agreement.
Any terms or conditions inconsistent with or in addition to terms and conditions
herein contained shall be void and of no effect unless specifically agreed to in
writing and signed by both parties.
IN WITNESS WHEREOF, the parties hereto have caused their authorized
officials to execute this Subcontract as of the date(s) set forth below:
CONTRACTOR FOUNDATION
/s/ Xxxxxxx Xxxxxxxx /s/ Xxxxxxx X X Xxxxxxx
Xx Xxxxxxx Xxxxxxxx
CEO
Date 23 February 1999 Date 26 Feb 1999
agreed, Zurich, March 2, 1999
/s/ Xxxxxx Xxxxxxxxx
Prof. Xx. Xxxxxx Xxxxxxxxx
Vice President for Research
AMENDMENT TO RESEARCH AGREEMENT
Effective June 1, 1999 (the "Amendment Effective Date"), Institute of Biomedical
Engineering, ETH Zurich and University of Zurich with offices at Xxxxxxxxxxxxxx
00, XX-0000 Xxxxxx, Xxxxxxxxxxx ("Foundation") and Phairson Medical Ltd., a
corporation organized under the laws of England, with offices at 000 Xxx
Xxxxxxxx, Xxxxxxx Xxxxxxx, Xxxxxx XX00 OXF ("Contractor") agree as follows:
ARTICLE I - BACKGROUND
SECTION 1.1 Foundation and Contractor are parties to a certain Research
Agreement (the "Agreement") made effective March 1, 1999 under which Foundation
and Contractor have entered into a research agreement (as defined therein).
SECTION 1.2 The parties desire to amend the Research Agreement to change the
dates Contractor pays to Foundation all costs incurred in connection with the
scope of work.
SECTION 1.3 Initially - and fully - capitalized terms shall have the same
meaning as in the Research Agreement.
ARTICLE II - AMENDMENT AND AGREEMENT
SECTION 2.1 Amendment to Article III, subsection 2 of the Research Agreement.
Article III, subsection 2 of the Research Agreement is hereby amended by
changing the dates of payment and replacing them with the following:
Article III, subsection 2. Payment shall be made to Foundation by Contractor
upon presentation of invoices in accordance with the following schedule:
Date: April 1st, 1999 SFr 39,500
Date: July 1st, 1999 SFr 39,500
Date: October 1st, 1999 SFr 39,500
Date: January 1st, 1999 SFr 39,500
SECTION 2.2 Continued Effect. The Research Agreement shall continue in force and
effect unchanged, except as specifically set forth in this document.
IN WITNESS WHEREOF, the parties have each caused a duly authorized officer to
sign this Amendment Agreement on the date(s) indicated below, to be effective
the Amendment Effective Date.
Phairson Medical Ltd. Institute of Biomedical Engineering,
ETH Zurich and University of Zurich
By: By:
_________________________________ _________________________________
Xx. Xxxxxxx Xxxxxxxx Prof. Xx. Xxxxxx Xxxxxxxxx
Chief Executive Vice President of Research
Date: Date:
_________________________________ _______________________________
