EXHIBIT 10.1
Contract Between (MTC) and (ITC) -2008
AGREEMENT
This AGREEMENT (this "Agreement") is effective this 3rd day of March, 2008,
between the Infotonics Technology Center Inc., (ITC) a New York not-for-profit
Corporation and the Mediscience Technology Corporation and/or its New York
state, wholly-owned subsidiary BioScopix, Inc (MTC).
RECITALS:
A. (ITC) was organized to, inter alia, lessen the burdens of government by
conducting and sponsoring scientific research for the development of new
businesses and the development of jobs in the field of photonics and
microsystems in New York State;
B. (ITC) has been retained by the Mediscience Technology Corporation to develop
and commercialize medical diagnostic systems using tissue autofluorescence to
detect disease states;
C. (ITC) has access to medical diagnostic system designs based upon tissue
autofluorescence that were developed by third parties under contract to the
Mediscience Technology Corporation;
D. (ITC) desires to extend and improve upon said medical diagnostic system
designs with the expectation that such extensions and improvements will include
advances in optical, mechanical, electrical, software, and diagnostic aspects of
the medical diagnostic system; and
E. (MTC) desires the support of (ITC) in designing, prototyping, testing,
further development of, and supporting the commercialization of medical
diagnostic systems using tissue autofluorescence to detect disease states.
F. In the context of this agreement, the following definitions are used;
1) Development: the scope of work defined in the statement of work in
this contract.
2) Development IP: the intellectual property that results from the
Development services;
3) Background IP: the intellectual property, belonging to either party
to this agreement, developed prior to this agreement, necessary for
the successful completion of the Development services;
NOW, THEREFORE, in consideration of the premises and mutual covenants herein
contained, the parties agree to the following:
1. Development Services. (ITC) will perform development and commercialization
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support for (MTC) as described in and pursuant to the terms of the Statement of
Work attached hereto as Exhibit A (the "Development") and more fully documented
in project Purchase Orders.
2. Fee. As consideration for (ITC) having exerted its good-faith efforts to
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carry out the Development, (MTC) will pay (ITC) according to invoices submitted
to (MTC) by (ITC). The work scope will be detailed in purchase orders submitted
to (ITC) by (MTC)/BioScopix. Each purchase order will detail work to be
completed over at least a three-month period. Such
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Contract Between (MTC) and (ITC) -2008
purchase orders will be commented upon by the (ITC) representative, and will
include a quotation from (ITC) for the services to be provided. (ITC) will
invoice for actual services provided on a monthly basis. Payments by (MTC) are
expected to be made within 30 days of the date of the invoice from (ITC).
(ITC) is agreeable to receiving equity shares in BioScopix as payment for some
services provided to BioScopix, particularly for (ITC) services that do not
represent direct out-of-pocket costs to (ITC) such as office and lab space
rental; (ITC)'s intent in doing so is to maximize use of BioScopix investors'
dollars to develop and launch first product to market rapidly. (ITC) will
negotiate in-good-faith, terms for such equity-shares payments for (ITC)
services by April 1, 2008.
3. Period of Performance
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Development under this Agreement will be performed commencing upon the Effective
Date and will terminate December 31, 2008, unless sooner terminated as provided
in Article 17.
4. Technical Representatives
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(ITC)'s Technical Representative shall be Xxxxx Xxxxxx-Xxxxxx or such other
representative as (ITC) may subsequently designate in writing. (MTC)
representative shall be Xxxxx Xxxxxxxxx, or such other representative as (MTC)
may subsequently designate by board action in writing.
5. Consultation with (ITC) Representatives
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During the period of this Agreement, (MTC)'s Representative may have reasonable
access to consult informally with (ITC)'s Technical Representative regarding the
Development both personally and by telephone. Access to work carried on at (ITC)
in the course of the Development shall be entirely under the control of (ITC)'s
personnel; (MTC)'s representatives shall be permitted to visit the laboratories
at (ITC) as mutually agreed during usual hours of operation.
6. Technical Reports
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The (ITC) Technical Representative shall submit written reports or oral reports
to (MTC)'s Representative as requested. Said Technical Representatives may also
make other reporting arrangements as mutually agreed to from time to time.
Within thirty (30) days after the expiration of this Agreement, the (ITC)
Technical Representative shall submit a comprehensive final report to
(MTC).describing all the work performed and the results achieved. Such
comprehensive final report may comprise a work summary together with the
collected documentation of project work.
7. Publicity; Confidential Information
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7.1. Except as set forth below, neither (ITC) nor (MTC) will issue any
press release or make any other public announcement concerning this
Agreement, the transactions contemplated hereby, and the work
details, without the prior written consent of the other party,
unless such press release or announcement is required by law. Such
press releases or announcements as required by law include those
required by the SEC as submitted in full compliance with sections
8-K 1.01 and 2.01 re; "materiality, ` as applicable and in
fulfillment of SEC Section 6, 6.01 Regulation (FD) Full Disclosure,
Sections 7, and 7.0, and all applicable and presently effective
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Contract Between (MTC) and (ITC) -2008
Xxxxxxxx-Xxxxx disclosure requirements under Regulation G. The form
and content of any such press release or announcement will be
approved, in writing, by both parties, provided such approval shall
not be unreasonably withheld, delayed or conditioned by either
party.
7.2. If a Party ("discloser") discloses its technology or other
information to the other Party ("receiver") and identifies the
technology and such information as proprietary and/or confidential
by use of an appropriate stamp, legend or other marking or notice
("Confidential Information"), the receiver agrees that the rights
and obligations of the Parties with respect to the Confidential
Information shall be governed by the terms and conditions of the
Master Confidentiality and Mutual Disclosure Agreement between the
Parties dated February 9, 2007. It is agreed by the Parties that the
disclosure of Confidential Information shall be solely for the
purposes of this Agreement and shall not be construed as a grant of
any right or license with respect thereto except as set forth
otherwise herein or in a duly executed license agreement.
8. Intellectual Property
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8.1. Inventorship of inventions conceived during the course of performing
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research under the Project will be determined in accordance with
U.S. Patent laws and ownership would follow inventorship.
8.2. Prior Patents. The parties hereto agree that neither party shall
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have rights in any invention made by the other before the date of
this Agreement, except for those rights provided by law or under
specific agreement. No party obtains any rights under this Agreement
to background patents held by the other party or to related
inventions or discoveries which are not conceived or made in the
performance of the Development ("Background IP"). Each Party
represents that, prior to the initiation of the Development, it has
made a good-faith effort to identify to the other Party the
existence of any Background IP possessed by the first Party that is
necessary for and essential to the implementation, use or
commercialization of the results of the Development, and that it
shall promptly identify to the other Party the existence of any such
necessary Background IP possessed by the first Party which may
subsequently come to its attention. To the extent it is able to do
so, each Party will negotiate with the other Party to provide the
other Party with rights, under reasonable terms and conditions to be
negotiated, to use Background IP where necessary to allow the
practice or commercialization of rights acquired by such Party in
the Development IP.
8.3. Reporting. The parties shall promptly report, within sixty (60)
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days, to each other any Subject Invention made either solely by the
members of (ITC) or (MTC), jointly by members of (ITC) and (MTC), or
by either party in collaboration with vendors or consultants under
contract to support the work described in this agreement.
8.4. The parties hereto agree that all rights, title and interest to any
idea, design, concept, technique, invention, discovery or
improvement, whether or not patentable, conceived and/or reduced to
practice hereunder, including but not limited to, patent
applications and resulting issued patents, including but not limited
to any continuations, continuations-in-part (to the extent the
claims are specifically directed to the subject matter in the patent
or patent application to which it claims priority), divisionals,
reissues, reexaminations, and renewal patents, all foreign
counterparts thereof, and any registered and unregistered copyrights
and mask works that are
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Contract Between (MTC) and (ITC) -2008
created or discovered in the performance of the Development and
commercialization agreement (collectively "Development IP")
developed either solely by employees, consultants, or agents of
(ITC) or jointly with (MTC), its employees, consultants or agents,
shall belong to (MTC), with a non-exclusive, royalty-free,
irrevocable license to (ITC) in other fields of use, subject to the
following:
8.4.1. (ITC) Employee Inventions Not Pertaining to Medical and Veterinary
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Device Designs, Methods, and Use. The parties agree that (ITC) shall
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have the initial option to retain title to any Subject Invention
made solely by (ITC) employees, wherein said Subject Inventions do
not pertain to medical and veterinary diagnostic product designs,
methods, and uses involving tissue autofluorescence. (ITC) shall
promptly notify (MTC) upon making this election and in the event
that (ITC) retains title to said Subject Invention, (ITC) agrees to
timely file patent applications on such Subject Inventions at its
own expense and agrees to grant to (MTC) a non-exclusive,
irrevocable paid-up license to practice such Subject Invention
throughout the world in an agreed upon field of use.
8.4.2. The party having the right to retain title and file patent
applications on a specific Subject Invention must elect to file
patent applications thereon and advise the other party within thirty
(30) days from the date it reports the Subject Invention to the
other party. In the event that the party fails to make such an
election and so advises the other party within thirty (30) days from
the date it reports the Subject Invention, the other party may elect
to file patent applications on such Subject Invention. If the other
party elects to file patent applications, the party initially
reporting such Subject Invention agrees to assign its rights, title
and interest in such Subject Invention to the other party and to
cooperate with such other party in the preparation and filing of
patent applications thereon. The assignment of the entire right,
title and interest to the other party pursuant to this paragraph
shall be subject to the retention by the party assigning title of a
non-exclusive, irrevocable, paid-up license to practice, or have
practiced, the Subject Invention throughout the world. In the event
neither of the parties to this Agreement elect to file a patent
application on Subject Invention, either or both (if a joint
invention) may, at their sole discretion and subject to reasonable
conditions, release the right to file to the inventors subject to
the retention of a non-exclusive irrevocable, royalty free, paid-up
license to be held by (ITC) and (MTC).
8.4.3. The party in charge of patent prosectution shall be responsible for
making decisions regarding scope and content of applications to be
filed and prosecuted. In the case of joint inventions, both parties
are responsible to provide all necessary and reasonable technical
detail to support patent application preparation and prosecution.
Further in the case of joint inventions, the party filing the patent
application shall keep the other party advised as to all
developments with respect to such applications and shall promptly
supply copies of all papers received and filed in connection with
the prosecution thereof and shall do so in sufficient time for said
other party to review, comment and to be fully involved in the
patenting process.
8.5. Should the patent owner decide at any time to cease necessary payments on
patent, copyright or mask works, applications, or maintenance of any
patent obtained pursuant to this Section, it shall give the other parties
reasonable advance notice and shall offer to the other parties the
opportunity to assume responsibility for all of such
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Contract Between (MTC) and (ITC) -2008
expenses. If the other party chooses to assume responsibility for such
expenses, the owner shall assign to the party assuming the expenses all
rights to the applicable Development IP, including, but not limited to,
the right to xxx for past infringement.
9. Right of First Refusal.
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During the term of this Agreement, (MTC) agrees to make all reasonable efforts
to utilize (ITC) for technology, development, scale-up and for future
manufacturing of any diagnostic systems, medical and veterinary, using tissue
autofluorescence to detect disease and/or health state. Accordingly, (MTC) will
engage (ITC) to produce products or services embodying the Technology at (ITC)
fabrication facility at commercially reasonable rates and hereby grants to (ITC)
a right of first refusal (based on price, quantity, quality, delivery dates, and
related specification or production terms) to produce any such service or
product.
10. Independent Contractors
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(ITC) and (MTC) shall be deemed independent contractors with respect to this
Agreement and nothing herein contained shall be construed as creating a joint
venture between them or as empowering either party to act as the agent of the
other party.
11. Indemnification
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(MTC) shall indemnify, defend, and hold harmless (ITC) and its present and
former officers, directors, trustees, employees, and agents, from any damages,
from any claim, loss, cost, expense, or liability of any kind, including
reasonable attorney's fees (whether incurred as the result of a third party
claim or a claim to enforce this provision), arising out of or connected with
this Agreement or the Development, including, without limitation, product
liability claims relating to commercialization of the Development. It shall be a
condition of the indemnification obligation that (ITC) promptly notify (MTC) of
any such claim and cooperate with (MTC) and its insurance carrier in the defense
of the claim. (MTC) shall consult with (ITC) for its approval (which approval
shall not be unreasonably withheld) regarding the defense of such claim and
shall submit any proposed settlement to (ITC) in advance of its approval
whenever (ITC)' interests are materially and adversely affected.
12. Warranties; Limitation of Liability
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(ITC) MAKES NO WARRANTIES, EXPRESS OR IMPLIED, AS TO ANY MATTER WHATSOEVER,
INCLUDING, WITHOUT LIMITATION, THE CONDITION, ORIGINALITY, OR ACCURACY OF THE
DEVELOPMENT OR ANY DEVELOPMENT IP OR PRODUCT(S) BASED THEREON, WHETHER TANGIBLE
OR INTANGIBLE, CONCEIVED, DISCOVERED, OR DEVELOPED UNDER THIS AGREEMENT; OR THE
OWNERSHIP, MERCHANTABILITY, OR FITNESS FOR A PARTICULAR PURPOSE OF THE
DEVELOPMENT OR ANY SUCH DEVELOPMENT IP OR PRODUCT. (ITC) SHALL NOT BE LIABLE TO
(MTC) OR ITS LICENSEE(S) OR OTHERS FOR ANY DIRECT, INDIRECT, CONSEQUENTIAL OR
OTHER DAMAGES RESULTING FROM THE USE OF (ITC)'s TECHNOLOGY OR ITS IP OR
ASSOCIATED PRODUCT(S) APPLICATIONS. (ITC)'s MAXIMUM LIABILITY TO (MTC) FOR ANY
CAUSE OF ACTION OR OTHER CLAIM DIRECTLY OR INDIRECTLY ARISING OUT OF THIS
AGREEMENT OR THE DEVELOPMENT IS LIMITED TO THE CASH PAYMENTS MADE TO (ITC) IN
THE COURSE OF FULFILLMENT OF THE SEMINAL DEVELOPMENT MILESTONES.
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Contract Between (MTC) and (ITC) -2008
13. Notices
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Any notice or report required or permitted to be given under this Agreement
shall be deemed to have been sufficiently given for all purposes if mailed by
first class certified or registered mail to the following addresses of either
Party:
Infotonics Technology Center Inc. Mediscience Technology Corporation.
0000 Xxxxxx Xxxxx 0000 Xxxxxxxxx Xxx
Xxxxxxxxxxx, XX 00000 Xxxxxx Xxxx, XX 00000
Attention: Xxxxx X. Xxxxx Attention: Xxxxx Xxxxxxxxx
Phone (000) 000-0000 Phone (000) 000-0000
Fax (000) 000-0000 Fax (000) 000-0000
E-mail xxxxx.x.xxxxx@(ITC).org E-mail xxxxx@xxx.xxx
With copy to: With a copy to:
X. Xxxxxxxx Xxxxx,
Legal Counsel Xxxxxxx Xxxxxxxxxxx & Mugel, LLP
000 Xxxxxx Xxxx Xxxxxxxxx, XX 00000-0000
E-mail xxxxxx@xxxxxxx.xxx
or to such other addresses as shall hereafter have been furnished by
written notice to the other Party.
14. Export Controls
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It is understood that (MTC) and (ITC) are subject to United States laws and
regulations controlling the export of technical data, computer software,
laboratory prototypes, and other commodities, and that their obligations
hereunder are contingent on compliance with applicable U.S. export laws and
regulations (including the Arms Export Control Act as amended, and the Export
Administration Act of 1979). The transfer of certain technical data and
commodities may require a license from the cognizant agency of the United States
Government and/or written assurances by (ITC) that (ITC) will not re-export data
or commodities to certain foreign countries without prior approval of the
cognizant government agency. While (MTC) shall cooperate in securing any license
which such agency deems necessary in connection with this Agreement, (MTC)
cannot guarantee that such licenses will be granted.
15. Force Majeure
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(ITC) shall not be responsible to (MTC) for failure to perform any of the
obligations imposed by this Agreement, provided such failure shall be occasioned
in whole or in part by fire, flood, explosion, lightning, windstorm, earthquake,
subsidence of soil, failure or destruction of machinery or equipment, or failure
of supply of materials, discontinuity in the supply of power, governmental
interference, civil commotion, riot, war, strike, labor disturbance,
transportation difficulty, labor shortage, or any cause beyond the reasonable
control of (ITC).
16. Termination
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16.1. Except as otherwise provided in Section 18 hereof, this Agreement
shall expire on completion of the Development, December 31, 2008,
unless extended or sooner terminated in accordance with the
provisions of this Section.
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16.2. If either Party fails to meet any of its obligations under this
Agreement and fails to remedy the failures within thirty (30) days
after receipt of written notice thereof, the other Party shall have
the option of terminating this Agreement upon written notice
thereof, and such right to terminate shall be such Party's sole
remedy at law or in equity.
16.3. Upon termination by one Party under Section 16.2 above, licenses to
the Development IP and Background IP previously provided by the
involuntarily terminated Party to other Party shall continue in
effect.
17. Survivorship
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The provisions of Articles 7, 8, 10, 11, 12, 14, 15, 16.3, 18(E) and 18(F) shall
survive any expiration or termination of this Agreement.
18. Miscellaneous
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A. Paragraph Headings
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The section headings are provided for convenience and are not to be used in
construing this Agreement.
B. Entire Agreement. This Agreement and the Exhibits hereto contain the entire
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agreement between the parties, superseding in all respects any and all prior
oral or written agreements or understandings, pertaining to the subject matter
hereof and transactions contemplated hereby, and can be amended or modified only
by a written instrument signed by the parties.
C. Waiver. No waiver by either party of any condition, breach, covenant,
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representation, or warranty contained in this Agreement, whether by conduct or
otherwise, in any one or more instances shall be deemed to be or construed as a
further and continuing waiver of any such condition, breach, covenant,
representation, or warranty.
D. Binding Effect; Assignment. This Agreement shall be binding upon and shall
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inure to the benefit of and be enforceable by the parties and their respective
successors and permitted assigns. This Agreement shall not be assigned by either
party without the written consent of the other, which consent shall not be
unreasonably withheld.
E. Submission to Jurisdiction. Each party hereby irrevocably submits to the
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exclusive personal jurisdiction of any New York State or federal court in
Rochester, New York, in any action or proceeding arising out of or relating to
this Agreement. All claims in respect of such action or proceeding shall be
heard and determined exclusively in such New York State or federal court. Each
party irrevocably waives, to the fullest extent it may effectively do so, the
defense of an inconvenient forum to the maintenance of such action or
proceeding.
F. Governing Law. This Agreement and the legal relations between the parties
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shall be governed by and construed in accordance with the laws of the State of
New York without regard to its conflict of laws principles.
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IN WITNESS WHEREOF, the Parties have each caused this Agreement to be signed by
its duly authorized officers, all as of the day and year first above written.
MEDISCIENCE TECHNOLOGY CORP. INFOTONICS TECHNOLOGY CENTER INC.
By: By:
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Name: Xxxxx Xxxxxxxxx Name: Xxxxx X. Xxxxx
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Title: President Title: President and CEO
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Exhibit A
STATEMENT OF WORK
Background: This statement of work outlines the tasks and schedule required to
deliver an autofluorescence diagnostic system for in vivo detection of
malignant, nonmalignant, and benign tissue states. The work to be done by
Infotonics is reportable to the Mediscience Technology Corporation, and to its
wholly-owned subsidiary, BioScopix, Inc. The scope of work includes the
development of the BioScopix company, located on the Infotonics Technology
Center site.
The (ITC) support comprises development leadership, IP assessment, coordination
of external contractors, coordination with the Chief Medical Consultant to
BioScopix, product map creation, product line rationalization with common
sub-systems envisioned for shared costs across product lines, and development of
grant proposals as appropriate to support some aspects of R&D associated with
one or more of the autofluorescence-based products in the product map.
The Statement of Work can be modified only in writing, with both (MTC) and (ITC)
approvals indicated by signature or initialing of revisions.
Exhibit B
SEMINAL MILESTONES
NOTE: the seminal milestones as noted in (ITC) quotations and (MTC)-issued
Purchase Ordersrepresent a best efforts assessment of the timing for design,
delivery, and operation of the equipment under development. These milestones
will change routinely, due to multiple factors including, but not limited to,
available funding, technical advances or limitations not previously anticipated,
sub-contractor failure to provide the required services or parts in an agreed-to
time frame, limitations in technology transfer through Mediscience,
uncertainties in the time necessary to identify and hire the BioScopix
leadership team, and other events that may alter the desired course of the
development and commercialization efforts.
With respect to funding, the milestone delivery is contingent upon adequate
funding as agreed to in the quotations submitted by (ITC) and the Purchase
Orders granted by (MTC) throughout 2008 Milestones will be added to this section
by way of reference to dated and agreed to Purchase Orders.
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