REDACTED VERSION
EXHIBIT 10.11
To
Targeted Genetics Corporation's
Form 10-K
For the Year Ended
December 31, 1997
"[ * ]" = omitted, confidential material, which material has been
separately filed with the Securities and Exchange Commission pursuant to a
request for confidential treatment.
EXHIBIT 10.11
EXCLUSIVE LICENSE AGREEMENT
THIS AGREEMENT is made and entered into this 14th day of March 1994 by and
between: Medical College of Ohio, a public institution of higher education,
having administrative offices in Toledo, Ohio 43699 (hereinafter referred to as
"LICENSOR") and Targeted Genetics Corporation, having administrative offices in
Seattle, Washington 98101, (hereinafter referred to as "LICENSEE").
WHEREAS, Xx. Xxxxx Xxxxxx and Xxxxxxx Xxxx, while employed by the Medical
College of Ohio, has invented a technology entitled "Cell Lines that Inducibly
Express Adeno-associated Virus (AAV) Proteins" (hereinafter referred to as the
"Invention") and Xx. Xxxxxx is under obligation to assign all his rights, title
and interest in and to the invention to LICENSOR, and LICENSOR will take
appropriate steps to have Xx. Xxxxxx assign such rights to LICENSOR;
WHEREAS, the Invention was developed with the financial support of the
National Institutes of Health, the March of Dimes Birth Defects Foundation and
the Ohio Cancer Research Associates which have an interest in seeing the
Invention used in a manner consistent with the public interest;
WHEREAS, LICENSOR warrants and represents that upon assignment of the
Invention to LICENSOR that it will be the sole and exclusive owner of all Xx.
Xxxxxx'x rights, title and interest in and to the Invention or, should patent
rights not be obtainable, to Know-how provided by Xx. Xxxxxx relating to the
Invention, and in and to any patent application(s), both foreign and domestic,
that are pending and/or may hereafter be filed on the Invention;
WHEREAS, LICENSEE desires to obtain an exclusive license under any and all
of LICENSOR's interest in Patent Rights, both foreign and domestic, that may
hereafter be sought and/or granted on the Invention, granting to LICENSEE the
exclusive right to make, have made, use and/or sell the Invention;
WHEREAS, LICENSOR desires that the aforesaid Invention be developed,
utilized and commercially exploited to the fullest extent and is willing to
grant an exclusive license to LICENSEE in accordance with the terms and
conditions hereinafter specified;
NOW, THEREFORE, the LICENSOR and LICENSEE agree as follows:
ARTICLE I
DEFINITIONS
-----------
1.1 "Licensed Patent Rights", as used herein, shall mean U.S. Patent
Application Serial No. 08/151,065 and any other patent applications or patents
covering "Licensed Materials". The term "Licensed Patent Rights" shall include
any divisions, continuations, continuation-in-part or reissues, and all foreign
counterparts thereof, covering "Licensed Materials".
1.2 "Licensed Materials", as used herein, shall mean cell lines that
inducibly express adeno-associated virus (AAV) proteins developed by Xxxxx X.
Xxxxxx, Ph.D., Biochemistry & Molecular Biology, MCO (hereinafter referred to as
"Investigator"), and improvements made by "Investigator" to such cell lines
which exist as of the date of execution of this Agreement or are conceived of
and reduced to practice by "Investigator" during the five (5) year period
beginning on the effective date of this Agreement and are owned by LICENSOR.
1.3 "Licensed Rights", as used herein, shall mean Licensed Patent Rights
and Licensed Know How.
1.4. "Licensed Product(s)", as used herein, shall mean any composition of
matter, product, apparatus, kit or component part thereof, and any process,
procedure or method which cannot be developed, manufactured, used or sold
without utilizing Licensed Rights.
1.4.1 "Valid Claim" as used herein, means any claim, or claims, in any
granted, unexpired, or judicially validated claim or claims of Patent Rights or
of any pending claim in any then pending but unissued patent application which
has not been held unenforceable, unpatentable, or invalid by a decision of a
court or other governmental agency of competent jurisdiction, unappealable or
unappealed within the time allowed for appeal, and which has not been admitted
to be invalid or unenforceable through reissue or disclaimer.
1.5 "Licensed Know-how", as used herein, shall mean any method, procedure,
process, composition of matter, biological material or other subject matter
within the knowledge and possession of the Investigator on the effective date of
this agreement which is incorporated or becomes part of the Licensed Patent
Rights and which is disclosed by LICENSOR to LICENSEE and is identified as
Licensed Know-how in writing by LICENSOR within 30 days thereafter.
2
1.6 "Net Sales Revenue", as used herein, shall mean the gross receipts,
royalties, fees or other valuable consideration of any kind received by or
credited to the benefit of the LICENSEE for the sale of Licensed Products to
unaffiliated third parties, less the following deductions:
i) Trade or quantity discounts actually allowed and taken in such
amounts as are customary;
ii) Amounts repaid or credited by reason of timely rejections or
returns.
1.7 "Affiliates" shall mean any company, corporation, or business in which
LICENSEE owns or controls at least a fifty percent (50%) ownership interest or
which owns or controls at least a fifty percent (50%) ownership interest of
LICENSEE.
1.7.1 "Non-Royalty Income", as used herein, shall mean any licensing fees,
upfront fees, milestone payments, equity, or any equivalent of the foregoing,
that is explicitly due to or receivable by LICENSEE from a third party in
consideration for a grant by LICENSEE to make, have made, use or sell LICENSED
PRODUCTS or LICENSED RIGHTS.
1.8 The "Effective Date" of this Agreement shall mean ________________.
ARTICLE II
GRANT
-----
2.1 LICENSOR hereby grants to LICENSEE and its Affiliates a worldwide
exclusive license of LICENSOR's entire interest under Licensed Patent Rights,
Licensed Know-how and Licensed Materials to make, have made, use and sell
(including to sell for resale by others) Licensed Product(s). Nothing in this
paragraph shall preclude LICENSOR from meeting its obligations to grant certain
rights to the U.S. Government, the March of Dimes or the Ohio Cancer Research
Associates, as required by those organizations.
2.2 LICENSOR hereby grants to LICENSEE under Licensed Patent Rights,
Licensed Know-how and Licensed Materials the exclusive right to grant one or
more non-exclusive sub-licenses to make, have made, use and sell Licensed
Product(s) provided only that such sub-licenses are granted by LICENSEE to such
sub-licensees on terms no less favorable to LICENSOR than provided for herein.
3
2.3 LICENSOR reserves unto itself the personal right to make, have made,
use and publish information concerning Licensed Product(s) and Licensed Know-How
for purposes of scholarly research by or on behalf of LICENSOR only, and for no
other purpose; provided only, that LICENSOR agrees to notify LICENSEE of any
information to be publicly disseminated by LICENSOR relating to Licensed
Product(s) at least ninety (90) days prior to such public dissemination so that
LICENSEE can take any steps deemed necessary by it to preserve domestic and/or
foreign patent rights. All aforementioned restrictions on the LICENSOR shall
terminate five (5) years after the effective date of this agreement, unless an
extension is requested in writing by LICENSEE and approved by LICENSOR, such
approval not to be unreasonably withheld. Notwithstanding the foregoing,
LICENSOR shall not distribute Licensed Materials to commercial third parties
without the prior written consent of LICENSEE. LICENSOR shall have the right to
distribute Licensed Materials to not-for-profit third parties under terms of a
materials transfer agreement incorporated herein as Attachment A.
2.4 LICENSOR shall provide LICENSEE with sufficient quantities of Licensed
Material TO enable LICENSEE to make Licensed Product(s).
ARTICLE III
COMPENSATION-ROYALTIES
----------------------
3.1 LICENSEE agrees to pay to LICENSOR a royalty of [ * ] of the Net Sales
Revenue derived by LICENSEE, and its Affiliates or sub-licensees, from the sale
of Licensed Product(s) covered by Licensed Patent Rights throughout the term of
this Agreement on a country-by country basis. Notwithstanding the foregoing, in
the event that biological materials, patent rights or know-how licensed by
LICENSEE from a third party, are required for the manufacture, use or sale
(including as part of) a Licensed Product covered by a Valid Claim, LICENSEE
shall pay LICENSOR a royalty of [ * ] on the Nets Sales Revenue of Licensed
Products on a country-by-country basis.
3.2 LICENSEE agrees to pay to LICENSOR a royalty of [ * ] of the Net
Sales Revenue derived by LICENSEE, and its Affiliates or sub-licensees, from the
sale of Licensed Products in any country where no Licensed Patent Rights are in
effect at the time of such sales. If there are no Licensed Patent Rights under
article 1.1 hereof, the term of this Agreement shall extend for ten (10) years
from the effective date of the Agreement.
[*] Confidential Treatment Requested
4
3.3 The obligation to pay LICENSOR a royalty under this Article III is
imposed only once with respect to the same unit of Licensed Product regardless
of the number of Valid Claims or Patent Rights covering the same.
3.4 LICENSEE agrees to pay LICENSOR the following sums within thirty (30)
days of the time that each of the milestones listed below related to the
Licensed Product is first reached:
[ * ] upon execution of this Agreement
[ * ] upon successful completion of Phase I clinical trials;
[ * ] upon successful completion of Phase 111 clinical trials;
[ * ] upon FDA approval of a New Drug Application.
3.5 Royalty payments made pursuant to Articles 3.1 and 3.2, supra, shall
be made quarterly for the three (3) month periods ending March 31, June 30,
September 30 and December 31 of each calendar year and shall be due and payable
within two (2) months of the termination of each quarter--i.e., such payments
shall be due or payable on or before May 31, August 31, November 31 and the last
day of February each calendar year.
3.6 All monies due to LICENSOR hereunder shall be paid in United States
dollars. LICENSEE shall be responsible for making the payment to the LICENSOR.
The rate of exchange to be used in computing the amount of currency equivalent
to United States dollars due to LICENSOR shall be made at the rate of exchange
in effect at Chase Manhattan Bank on the last business day of the calendar month
in which payment falls due.
3.7 LICENSEE shall also pay to LICENSOR a percentage of [ * ] of all Non-
Royalty Income receivable by LICENSEE in connection therewith. Any such payment
to LICENSOR shall be made within thirty (30) days after receipt of such proceeds
by LICENSEE. Any such sale or transfer shall not affect LICENSEE's obligation to
pay royalties pursuant to articles 3.1 and 3.2 above. In no event shall Non-
Royalty Income include any payment or other value due to or received by LICENSEE
from a third party that is not explicitly due to or received by LICENSEE in
consideration for a grant by LICENSEE to a third party to make, have made, use
or sell LICENSED PRODUCTS under LICENSED RIGHTS.
[*] Confidential Treatment Requested
5
3.8 In the event that LICENSEE transfers or otherwise disposes of LICENSED
RIGHTS to a third party in combination with a patent(s) and/or right(s) of one
or more third parties and LICENSEE is due or receives Non-Royalty Income then
LICENSEE shall pay LICENSOR an equitable portion of such Non-Royalty Income as
to be determined by the good faith negotiations of LICENSOR and LICENSEE.
ARTICLE IV
RECORD KEEPING AND REPORTS
--------------------------
4.1 LICENSEE agrees to keep accurate records in sufficient detail to
enable the royalties payable by LICENSEE to LICENSOR hereunder to be determined,
and agrees to permit said records to be examined from time to time during the
life of this Agreement , and for one (1) year after the expiration or
termination thereof, at reasonable intervals by an independent auditor mutually
agreeable to the parties, during normal business hours, and to the extent
necessary to verify the reports and payments required hereunder.
4.2 LICENSEE agrees to furnish LICENSOR with written Reports within two
(2) months of the termination of each calendar quarter (i.e., such written
Reports shall be due as in Article 3.5 supra) setting forth separately by model
number or other identifying designation, the total number of Licensed Products
theretofore made and sold hereunder during the preceding calendar quarter and
the royalties due thereon. Each such Report shall be accompanied by a copy of
any sub-licensee's Report received subsequent to LICENSEE's prior Report and
prior to LICENSEE's current Report. If available, LICENSEE agrees to provide
LICENSOR a copy of its audited annual financial report and audited annual
financial reports of its affiliates and sublicensees.
4.3 In the event that LICENSEE's royalties calculated for any semi-annual
period are in error by greater than MINUS TEN PERCENT (-10%), the costs of any
audit and review initiated by LICENSOR will be borne by LICENSEE; but,
otherwise, the LICENSOR shall bear the costs of any audit initiated by LICENSOR.
ARTICLE V
PATENT RIGHTS
-------------
5.1 LICENSEE shall, in the first instance, have the sole and exclusive
right to file any and all patent applications, both foreign and domestic on any
Invention or improvement falling within the scope of this Agreement; and,
LICENSEE shall be responsible for all costs, fees and expenses incurred in
connection with the filing,
6
prosecution and maintenance of any such patent application and the maintenance
of any patent issuing thereon. Any such patent shall be assigned to the LICENSOR
and be included within the Licensed Patent Rights defined by this Agreement.
LICENSOR shall be provided with all patent applications, Office Actions and
responses in a timely manner for its review and comment prior to filing thereof.
LICENSOR agrees to cooperate in filing patent applications in LICENSOR's name on
any such Invention and/or improvement.
5.2 In the event that LICENSEE determines that it will not, for any
reason, file, prosecute and/or maintain any foreign or domestic patent
application or patent on any Invention or improvement relating to the basic
technology licensed hereunder, it will promptly notify LICENSOR of its decision
and LICENSOR shall thereafter have the sole and exclusive right to file,
prosecute and/or maintain any such patent application or patent, either foreign
or domestic, at its own expense; and, any patent issuing therefrom shall not be
included among Licensed Patent Rights and LICENSEE shall forfeit any right to
the technology covered by such patent application or patent unless this
Agreement shall be amended, in writing, to include such patent application or
patent. LICENSEE agrees to cooperate in filing patent applications in
LICENSOR's name on any such Invention and/or improvement where LICENSEE declines
to proceed at its own expense.
5.3 If, at any time during the term of this Agreement, LICENSEE elects to
abandon any pending patent application or issued patent, either foreign or
domestic, it shall notify LICENSOR of that decision at least two (2) months
prior to any deadline for filing any response or taking any other action
necessary to maintain any such application and/or patent in existence; and,
thereafter, LICENSOR shall have the right and option to take over the sole and
exclusive responsibility for the prosecution of any such application and/or the
maintenance of any such patent solely at LICENSOR's expense, and any patent
issuing there from shall not be included among Licensed Patent Rights and
LICENSEE shall forfeit any right to that technology covered by such patend
application or patent unless this Agreement is amended, in writing, to include
such patent.
ARTICLE V1
DUE DILIGENCE
-------------
6.1 LICENSEE, during the entire term of this Agreement, shall utilize its
best efforts in proceeding with the development, manufacture, sale and
commercial exploitation of Licensed Product(s), and in creating a supply and
demand for same.
7
6.2 LICENSEE agrees to keep LICENSOR fully and promptly informed of its
progress on the commercial exploitation of Licensed Product(s) hereunder by
annual reports due at the end of each calendar year.
ARTICLE V11
PATENT MARKING
--------------
7.1 LICENSEE shall mark, and shall require its sub-licensee(s) to mark,
each Licensed Product made and sold by it or by them with an appropriate patent
marking.
ARTICLE V111
TERM AND TERMINATION
--------------------
8.1 This Agreement shall be in force from the Effective Date hereof and
shall remain in full force and effect thereafter until the later of the last to
expire of Patent Rights, unless extended by mutual written agreement of the
parties or unless sooner terminated in accordance with the provision set forth
herein below.
8.2 If, at any time, LICENSEE shall have defaulted in the performance of
its obligations hereunder, LICENSOR may give written notice of such default;
and, if such default has not been cured within ninety (90) days after such
written notice, this Agreement shall terminate forthwith on the ninety-first
(91st) day following the date of such written notice.
8.3 LICENSEE may terminate this Agreement upon ninety (90) days written
notice to LICENSOR.
ARTICLE IX
DISPOSITION OF LICENSED PRODUCTS
--------------------------------
ON HAND UPON TERMINATION
------------------------
9.1 In the event of early termination of this Agreement, LICENSEE and its
sub-licensees shall have the right to use or sell all the Licensed Products on
hand at the time of such early termination, provided that LICENSEE shall be
obligated to pay to the LICENSOR a royalty on such sales as set forth in Article
III.
8
ARTICLE X
GOVERNMENTAL RIGHT
------------------
10.1 In the event that it is found that any Licensed Right covered by this
Agreement is subject to the rights and limitations of Public Laws (PL) 96-517
and 98-620 and implementing regulations prescribed by the Federal Office of
Management and Budget, then LICENSEE agrees to include a statement in any such
patent application fully identifying such governmental right; and, LICENSEE
acknowledges that LICENSOR will have the right to furnish the Federal
Government, among other things, with a worldwide, non-exclusive, royalty free
license for such Invention(s) notwithstanding anything in this Agreement to the
contrary.
ARTICLE X1
PATENT ENFORCEMENT
------------------
11.1 LICENSEE shall have the sole and exclusive right to enforce
LICENSOR's-Patent Rights and to file suit in its own name and in the name of
LICENSOR to enforce such Patent Rights using counsel of LICENSEE's choice.
LICENSEE shall also have the sole and exclusive right to defend all charges of
infringements, using counsel of LICENSEE's choice, arising from the development,
manufacture, use or sale of Licensed Products(s). Any infringement prosecution
or defense shall be at LICENSEE's expense. LICENSEE shall further have the sole
and exclusive right to settle and compromise any such controversy with third
parties on terms that it, in its sole discretion, deems right and proper;
provided only, that LICENSEE shall not grant to any third party a sub-license
which is less favorable to LICENSOR in terms of royalty payments payable to
LICENSOR than the terms provided for herein unless and until LICENSEE obtains
LICENSOR's approval of such less favorable terms. Any recovery obtained by
LICENSEE as the result of any such proceedings, by settlement or otherwise,
shall be applied first, to pay LICENSEE's costs and expenses of the proceeding,
with the remainder, if any, to be paid fifty percent (50%) to-LICENSOR and fifty
percent (50%) to LICENSEE.
11.2 In the event that LICENSEE shall determine, for any reason, that it
does not choose to enforce LICENSOR's Patent Rights, then LICENSEE agrees to
promptly notify LICENSOR of such decision; and thereafter, LICENSOR shall have
the sole and exclusive right to enforce LICENSOR's Patent Rights solely at its
expense and any and all recoveries shall be awarded solely and exclusively to
LICENSOR.
11.3 In the event that one party elects to prosecute and defend an
infringement action pursuant to Articles 11.1 or 11.2, the other party shall
cooperate
9
and supply technical assistance reasonably requested by the other party for the
conduct of the proceedings.
ARTICLE X11
USE OF NAMES. TRADE NAMES AND TRADEMARKS
-----------------------------------------
12.1 LICENSEE agrees to refrain from using and to require its Affiliates
to refrain from using the name of the Medical College of Ohio without the
express written permission of the President of the Medical College of Ohio, and
LICENSOR agrees to refrain from using the name of Targeted Genetics Corporation
without the express written permission of the President of Targeted Genetics
Corporation, such approval not to be unreasonably withheld by Targeted Genetics
Corporation. Notwithstanding the foregoing, LICENSOR hereby consents to
references to it (1) in such reports or documents sent to stockholders or filed
with or submitted to any governmental regulatory agencies or bodies or stock
exchanges or as may be required to obtain investment capital, or (2) pursuant to
any requirements of applicable law or governmental regulations, provided that,
in the event of any such disclosure, LICENSEE shall afford LICENSOR the prior
opportunity to review the text of such disclosure. LICENSEE shall use its best
efforts to comply with any reasonable requests by LICENSOR regarding changes.
ARTICLE XIII
WAIVER
------
13.1 No omission or delay of either party hereto in requiring due and
punctual fulfillment of the obligations of any other party hereto shall be
deemed to constitute a waiver by such party of its rights to require such due
and punctual fulfillment, or of any other of its remedies hereunder.
ARTICLE XIV
WARRANTIES
----------
14.1 LICENSOR warrants that it has the lawful right to grant the license
set forth herein.
14.2 LICENSOR makes no express or implied warranties of merchantability or
fitness of the Licensed Products for any particular purpose.
14.3 Nothing in this Agreement shall be construed as:
10
i) a warranty or representation by the LICENSOR as to the
patentability, validity or scope of any of the Patent Rights;
ii) a warranty or representation that anything made, used, sold or
otherwise disposed of under any license granted in this Agreement is or will be
free from infringement of patents of proprietary rights of third parties; or,
iii) an obligation to bring or prosecute actions or suits against
third parties for infringement.
ARTICLE XV
SUCCESSION AND ASSIGNABILITY
----------------------------
15.1 This Agreement and the rights and benefits conferred upon LICENSEE
hereunder may not be assigned nor transferred by LICENSEE without the prior
written consent of LICENSOR, except in the event of sale of all or a portion of
the business of LICENSEE.
15.2 This Agreement may be assigned by LICENSOR.
15.3 This Agreement shall be binding upon and inure to the benefit of the
successors, representatives and assigns of the parties hereto.
ARTICLE XVI
INDEMNITY
---------
16.1 LICENSEE agrees to indemnify, hold harmless and defend LICENSOR, its
officers, employees and agents, against any and all claims, suits, losses,
damages, costs, fees and expenses resulting from or arising out of exercise of
this Agreement including, but not limited to, any damages, losses or liabilities
whatsoever with respect to death or injury to any person and damage to any
property arising from the possession, use or operation of Licensed Products by
LICENSEE or its sub-licensees or their customers in any manner whatsoever.
ARTICLE XVII
CONFIDENTIALITY
---------------
17.1 LICENSOR and LICENSEE agree to hold in confidence all information
received from the providing party and not to disclose it to any third party or
use it for any purpose except as provided herein. The foregoing restrictions on
use and
11
disclosure shall continue for a period of three (3) years following
termination of this Agreement, but shall not apply to any such information
which:
(a) is or later becomes generally available to the public by use,
publication or the like, through no fault of the other Party; or
(b) is obtained from a third party who had the legal right to
disclose the same to the Party; or
(c) the Party already possesses, as evidenced by its written records,
predating receipt thereof from the other Party.
ARTICLE XVIII
NOTICES
-------
18.1 Any payment, notice or other communication required or permitted to
be given by either party hereto shall be deemed to have been properly given and
be effective on the date of delivery if delivered, in writing, in person or by
first class certified mail with postage prepaid and return receipt requested to
the respective addresses set forth below, or to such other address as either
party shall designate by written notice given to the other party:
In the case of LICENSOR:
X. Xxxxxxx Xxxxxxxxx, Ph.D.
Associate Vice President for Research
Medical College of Ohio
0000 Xxxxxxxxx Xxxxxx
Xxxxxx, XX 00000
In the case of LICENSEE:
X. Xxxxxxx Xxxxxx
President and CEO
Targeted Genetics Corporation
0000 Xxxxx Xxx, Xxxxx 000
Xxxxxxx, XX 00000
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ARTICLE XIX
APPLICABLE LAW
--------------
19.1 This Agreement shall be construed in accordance with, and its
performance shall be governed by, the laws of the state of Ohio.
19.2 All disputes that may arise in connection with this agreement and
that are not adjusted by the parties themselves shall be submitted to binding
arbitration under the rules and regulations of the American Arbitration
Association relating to voluntary arbitrations. All costs of arbitration shall
be divided equally between the parties. Judgment upon the award rendered by the
arbitrator may be entered by any court having jurisdiction thereof.
ARTICLE XX
MISCELLANEOUS
-------------
20.1 The headings of the several sections of this Agreement are inserted
for convenience and reference only and are not intended to be a part of or to
affect the meaning or interpretation of this Agreement.
20.2 This Agreement will not be binding upon the parties until it has been
signed by, or on behalf of, each party, in which event it shall be effective as
of the Effective Date.
20.3 No amendment or modification hereof shall be valid or binding upon
the parties unless made in writing and signed as aforesaid.
20.4 This Agreement embodies the entire understanding of the parties and
supersedes all previous communications, representations or understandings,
either oral or written, between the parties relating to the subject matter
hereof.
20.5 If any provision, or provisions, of this Agreement shall be held to
be invalid, illegal or unenforceable, the validity, legality and enforceability
of the remaining provisions shall not be in any way affected or impaired
thereby.
20.6 In witness whereof, both the LICENSOR and LICENSEE have executed this
Agreement, in duplicate originals but collectively evidencing only a single
contract, by their respective officers hereunto duly authorized, on the day and
year hereinafter written.
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IN WITNESS WHEREOF, the parties have executed this Agreement through duly
authorized representatives as of the date first above written.
MEDICAL COLLEGE OF OHIO TARGETED GENETICS CORPORATION
By: X.X. Xxxxxxxxx By: X. Xxxxxxx Xxxxxx
------------------------- --------------------------
Title: Title: President & CEO
---------------------- ----------------------
Date: 3/14/94 Date: Feb. 28, 1994
----------------------- -----------------------
14
ATTACHMENT A
MEDICAL COLLEGE OF OHIO MATERIALS TRANSFER AGREEMENT
----------------------------------------------------
_____________________________
_____________________________
_____________________________
Dear Dr. ______________:
This is to acknowledge your request that certain research material
(hereinafter Materials) developed in the laboratory of ________________ at the
Medical College of Ohio (hereinafter MCO) be sent to you for scientific research
purposes at _______________________.
The Materials concerned, which belong to the MCO, are:
_______________________________________________________________________________.
We would be pleased to permit your use of these Materials at your
institution for your scientific research. However, before forwarding them to
you, MCO would like you and your institution to agree to the following:
(i) that the Materials will be used by you solely in connection with the
following research project ("Research Project") described with
specificity as follows (use an attachment page if necessary)
____________________________________________________________________
____________________________________________________________________
(ii) that the Material shall be receive by you only for use in scientific
research in your laboratory and that all applicable guidelines set
forth by the national Institutes of Health (NIH) or other
governmental agencies regarding the use of the Materials shall be
followed;
(iii) these Materials are provided as a service to the research community.
THE MATERIALS ARE BEING SUPPLIED TO YOU WITH NO WARRANTIES, EXPRESS
OR IMPLIED, INCLUDING ANY WARRANTY OF MERCHANTABILITY OR FITNESS FOR
A PARTICULAR PURPOSE. MCO makes no representations that the use of
the Materials will not infringe any patent or proprietary rights of
third parties;
15
(iv) that you and your institution shall receive the Materials in
confidence and agree not to describe them to others not employed by
your institution without MCO's prior written consent;
(v) that you shall make known to MCO any results obtained from the use
of the Material prior to the written disclosure of those results
and/or written disclosure of any description of the Material so
others not employed by your institution and you will make good faith
efforts to do so thirty (30) days prior to such written (or oral)
disclosure;
(vi) that you and your institution shall bear all risk to you and/or any
others resulting from any use, directly or indirectly, to which you
put the Materials or any other material that could not have been
made by for these Materials;
(vii) that you shall not sell or otherwise transfer to any other party the
Materials, method(s) of using the Materials or any other material
that could not have been made but for the Materials, whether with or
without consideration, for any purpose or use;
(viii) that you shall not, directly or indirectly, use the Materials for
commercial purposes;
(ix) that you and your institution shall not obtain, and shall not
attempt to obtain patent coverage on the Materials without the
express written consent of MCO; and before seeking patent
prosecution for the use of the Materials or any other materials that
could not have been made but for the Materials, your institution
will notify MCO so that MCO can assert any claims to legal
inventorship it or its employees might have. In consideration of
MCO's providing of the Material, your institution, to the extent it
is able to do so under its policies and obligations to sponsors of
your research, hereby grants to MCO a ninety (90) day option to
negotiate a commercial license under any such patent application and
your institution agrees to negotiate the license terms in good faith
taking into account the respective parties' contributions and
relevant industry and university standards for similar rights. Such
option shall be exercised by MCO's agreement to support the filing
of a U.S. patent application;
(x) except where precluded by Federal law and to the extent allowed by
State law, you and your institution agree to defend, indemnify, and
hold harmless MCO, its trustees, officers, employees, and agents
from any
16
loss, claim, damage, or liability, of any kind whatsoever, which may
arise from you or your institution's use, storage, or disposal of
the Materials or any other material that could not have been made
but for the Materials, except to the extent such arise due to the
gross negligence of MCO;
(xi) that you provide us with your Federal Express account number so that
we may ship the Materials to you.
You understand that no other right or license to these Materials or any
other materials that could not have been made but for these Materials or to
their use is granted or implied as a result of our transmission of these
Materials to you.
The Materials are to be used with caution and prudence in any experimental
work, since all of their characteristics are not known. Moreover, they are not
to be used for testing in or treatment of humans.
This Agreement shall be construed, interpreted, and applied in accordance
with the laws of the State of Ohio.
This Agreement embodies the entire understanding between MCO and
(investigator institution) and supersedes all previous communications,
representations or understandings, either oral or written, between the parties
relating to transfer of these Materials.
If you agree to accept these Materials under the above conditions, please
sign the enclosed duplicate copy of this letter, have it signed by an authorized
representative of your institution, and return one original to me. Upon receipt
of that confirmation, the Materials will be forwarded to you.
THE MEDICAL COLLEGE OF OHIO
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X. Xxxxxxx Xxxxxxxxx, Ph.D.
Associate Vice President for Research
Date
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17
ACCEPTED:
------------------------------------ ----------------------------------------
Recipient's Signature Authorized Institutional Representative's
Signature
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Recipient's Printed Name and Title Representative's Printed Name and Title
------------------------------------ -----------------------------------------
Date Date
MCO REF. NO.
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18
