RESEARCH AGREEMENT
between
THE UNIVERSITY OF WATERLOO
and Xx. Xxxx X. Xxxxxxxx
and
SENESCO, INC.
THIS AGREEMENT, effective as of the 1st day of September, 1998, by and between
THE UNIVERSITY OF WATERLOO ("Waterloo"), located in the town of Waterloo and the
Province xx Xxxxxxx, X0X 0X0, of the country of Canada, Xx. Xxxx X. Xxxxxxxx
("Xxxxxxxx") of the University of Waterloo and SENESCO, Inc.("Senesco"), a New
Jersey Corporation located in the United States at 00 Xxxxxxxx Xxxxxx,
Xxxxxxxxx, Xxx Xxxxxx 00000, X.X.X.
WITNESSETH:
WHEREAS Waterloo and Senesco have in common the desire to encourage and
facilitate the discovery, dissemination and application of new knowledge;
WHEREAS Senesco has conceived of certain inventions. currently holds
intellectual property rights in such inventions and desires to further research
and develop such inventions on a worldwide basis,
WHEREAS Waterloo and Xxxxxxxx are equipped and well-qualified to perform
research and development in the subject area of this Agreement; and
WHEREAS Senesco wishes to retain Waterloo to perform research and development
services under the guidance of Xxxxxxxx;
NOW, THEREFORE, in consideration of the foregoing and the mutual promises and
covenants contained herein, the parties hereto agree as follows:
AGREEMENT
ARTICLE I. DEFINITIONS.
"Confidential Information" shall mean:
A. Any and all knowledge, know-how, practices, processes or other
information disclosed by Senesco directly or indirectly to Waterloo and/or
Xxxxxxxx whether said disclosure is made orally, in writing, by submission of
samples, or otherwise, including without limitation information relating to the
matters which are the subject of this Agreement and all other information
regarding Senesco's past, present or future research, technology, know-how,
ideas, concepts, designs, products, prototypes, processes, machines,
compositions of matter, business plans, technical information, drawings,
specifications and the like, and any knowledge or information developed by
Waterloo and/or Xxxxxxxx as a result of work in connection with this Agreement.
B. Any and all discoveries, inventions, conceived inventions and
know-how, whether or not patentable, and whether or not reduced to practice,
including without limitation any and all biological isolates, compositions of
matter, methods or processes, test data, findings, designs, machines, devices,
apparatus, manufactures, and any improvements and/or any utility for the
foregoing, which are made, conceived, discovered or developed by Waterloo or
Xxxxxxxx, whether alone or in conjunction with others, which arise in any way
from, during or as a result of the performance of Waterloo's and Xxxxxxxx'x
services to Senesco under this Agreement, and which relate to the Scope of Work
(as hereinbelow defined), including, but not limited the subject matter set
forth in the Protocol or which arose prior to this Agreement, but, as of the
effective date hereof, has not been publicly disclosed. Such information may or
may not be protectable in the form of a patent, a copyright or as a trade
secret.
C. This does not include information which:
(1) is established by written records to be in the public domain other than
as a consequence or an act of Waterloo or Xxxxxxxx;
(2) if disclosed to Waterloo or Senesco, was in Waterloo's possession prior
to the disclosure and is demonstrated through written records that such
information was in Waterloo's or Xxxxxxxx'x possession prior to disclosure
from Senesco, and was not the subject of an earlier confidential
relationship with Senesco; or
(3) was rightfully acquired by Waterloo or Xxxxxxxx from a third party, who
was lawfully in possession of such information after the disclosure and was
under no obligation to Senesco to maintain its confidentiality.
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The work performed hereunder shall be under the supervision of Xx. Xxxx X.
Xxxxxxxx, of the Department of Biology, at the University of Waterloo. No
substitution of Xxxxxxxx may be made without the prior written consent of
Senesco.
"Employee" means an employee of the University of Waterloo involved either
directly or indirectly within the Scope of Work, as herein below defined, under
this Agreement.
"Scope of Work" means the research and development on plant genes and their
cognate expressed proteins that are induced during or coincident with cell
deterioration and related processes, which may initiate or facilitate senescence
or other degradation of plants or plant tissues, together with methods for
controlling senescence or other degradation, that involve altering the
expression of these genes. This further includes promotion and marketing of
transgenic or other modified plants containing these genes and/or their
expressed cognate proteins as a means for controlling senescence or other
degradation of plants or plant tissues.
"Technology and Inventions" shall mean any and all discoveries, inventions,
conceived inventions and know-how, whether or not patentable, and whether or not
reduced to practice, including any and all biological isolates, compositions of
matter, methods or processes, test data, findings, designs, machines, devices,
apparatus, manufactures, and any improvements, and/or any utility for the
foregoing, which are made, conceived, discovered or developed by Waterloo,
whether alone or in conjunction with others, which arise in any way from, during
or as a result of the performance of Waterloo's and Xxxxxxxx'x services to
Senesco under this Agreement and which relate to the Scope of Work, including,
but not limited to the subject matter set forth in the Protocol. Such Technology
and Inventions may or may not be protectable in the form of a patent, a
copyright or as a trade secret.
ARTICLE II. STATEMENT OF THE WORK.
Waterloo shall perform research to enhance the Intellectual Property rights
of Senesco in accordance with the protocol entitled "Regulation of Post-Harvest
Development by Altering the Expression of Senescence-Induced Lipase"
("Protocol"), which is attached hereto and incorporated herein as Exhibit A.
ARTICLE III. PERIOD OF PERFORMANCE.
The period of performance of this Agreement is contemplated to be three (3)
years, annually renewable by Senesco at the cost indicated below, unless sooner
terminated or extended as elsewhere provided herein or by mutual agreement.
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ARTICLE IV. COST AND PAYMENT.
A. Senesco agrees to pay for the cost of work specified in the Budget as set
forth in Exhibit A. Payment shall be made according to the Payment Schedule
provided in Exhibit B. Payment is to be made by Senesco in Canadian dollars.
B. The total financial obligation of Senesco for the three year period is
limited to $735,000 Canadian, which shall not be exceeded without the
written authorization of Senesco.
C. Payments shall be sent to: Xx. Xxxxx X. Xxxxx, Director, Research Finance,
the University of Waterloo, 000 Xxxxxxxxxx Xxxxxx Xxxx, Xxxxxxxx, Xxxxxxx
X0X 0X0 XXXXXX.
D. Invoices to Senesco shall be sent to: Xx. Xxxxxxx X. Xxxxxxxxxx, Chairman,
Senesco, Inc. 00 Xxxxxxxx Xxxxxx, Xxxxxxxxx, Xxx Xxxxxx 00000 X.X.X.
ARTICLE V. RELATIONSHIP OF THE PARTIES.
A. Waterloo's relationship to Senesco in the performance of this Agreement is
that of an independent contractor. The work performed hereunder shall be
under the supervision of Xxxxxxxx, who is considered essential to the work
being performed. No substitution of Xxxxxxxx may be made without the prior
written consent of Senesco. Waterloo and Xxxxxxxx shall ensure that all
Employees, researchers and other personnel involved with performing work in
connection with this Agreement are familiar with and understand the terms of
this Agreement prior to their performance hereunder, including, without
limitation, their obligation to take all actions necessary to vest title to
any Technology and Inventions in Senesco.
B. Neither party is authorized or empowered to act as an agent for the other
for any purpose and shall not on behalf of the other enter into any
contract, warranty or representation as to any matter. Neither shall be
bound by the acts or conduct of the other.
C. Waterloo and its Employees acknowledge they are aware of this Agreement and
are bound by its terms.
ARTICLE VI. CONFIDENTIALITY.
A. In order to carry out the terms of this Agreement and to facilitate
performance of the work hereunder, Senesco may disclose certain Confidential
Information, defined under Article I, to Waterloo and Xxxxxxxx which Senesco
considers confidential and proprietary.
B. Senesco possesses all right, title and interest to all Confidential
Information, whether disclosed by Senesco or developed under this Agreement.
Waterloo and Xxxxxxxx each agree that the Confidential Information will be
kept in strict confidence.
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C. Prior to the commencement of work under this Agreement, each Waterloo
Employee to undertake work relating to this Agreement shall agree to be
bound by the Confidentiality and non-compete provisions of this Agreement by
signing a copy of the form Acknowledgment attached as Exhibit C.
D. Waterloo and Xxxxxxxx shall not, without the express written consent of
Senesco, directly or indirectly disclose, furnish, disseminate, make
available such Confidential Information in any way, in whole or in part, to
any person or entity other than Employees of Waterloo directly or indirectly
involved in the work under this Agreement, and then only on a need to know
basis as required for performance of this Agreement; said Employees are
subject to the same restrictions upon disclosure of this Confidential
Information as Waterloo and Xxxxxxxx.
E. Waterloo and/or Xxxxxxxx will promptly inform Senesco if they discover that
a third party is making or threatening to make unauthorized use of
Confidential Information.
F. The above obligations with respect to Confidential Information shall survive
for a period of ten (10) years after the termination of this Agreement, and
any extensions or renewals.
ARTICLE VII. PATENT RIGHTS.
A. Waterloo and Xxxxxxxx hereby assign and agree to assign to Senesco all
right, title and interest to any Technology and Inventions made, conceived
of or arising under this Agreement within the Scope of Work.
B. All information and know-how relating to any Technology and Inventions made,
conceived of or arising under this Agreement is deemed Confidential
Information and shall be kept in strict confidence by Waterloo and Xxxxxxxx
pursuant to this Agreement.
C. Waterloo and Xxxxxxxx shall promptly disclose to Senesco, in writing, any
Technology and Inventions made, conceived of or arising under the Agreement.
D. Senesco has the sole discretion for the selection of the means for
intellectual property protection for the Technology and Inventions, whether
to maintain trade secret protection or seek protection by patent. Senesco
has the sole discretion for the selection of the technology to protect by
patent and will make all decisions regarding the scope of protection sought.
E. Senesco has the sole discretion to select patent counsel or other legal
representatives to help secure patent rights to any Technology and
Inventions arising out of this Agreement.
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F. If Senesco decides that a patent application is to be filed, Senesco, shall,
at its own cost, prepare, file and prosecute such application. Designation
of inventors in a patent application is a matter of patent law and shall be
solely within the discretion of qualified patent counsel or other legal
representative for Senesco.
G. Waterloo and Xxxxxxxx shall at the request and expense of Senesco, at any
time during or after the termination of this Agreement, execute all
documents and perform all such acts as Senesco may deem necessary or
advisable to confirm Senesco's sole and exclusive ownership right, title and
interest in such Technology and Inventions in any country. Waterloo and
Xxxxxxxx each agree to do all acts and execute all documents at the expense
and request of Senesco, that Senesco may deem necessary to enforce its
rights to the Technology and Inventions, including but not limited to
assisting in the preparation of patent applications, assisting in
litigation, appearing for depositions and appearing as trial witnesses.
ARTICLE VIII. PUBLICITY.
A. Waterloo and Xxxxxxxx shall not disclose this Agreement with Senesco in any
publicity, advertising or news release without the prior written approval of
an authorized representative of Senesco. Senesco will not use the name of
Waterloo in any publicity, advertising or news release without the prior
written approval of Waterloo.
B. Except: Waterloo may, at its own discretion, provide a brief listing of the
research conducted under this Agreement, including the name of the sponsor,
Senesco, as part of a public compendium of Waterloo research.
C. Senesco may, at its own discretion, provide information relating to or
arising from this Agreement to investors, licensees, relevant government
agencies and other such parties.
ARTICLE IX. PUBLICATION.
A. Senesco, recognizes that Waterloo, may be desirous of publishing information
as part of Waterloo's policy and function as a university to disseminate
information for the purpose of scholarship. Waterloo and Xxxxxxxx recognize
that such publication may jeopardize the protection of intellectual property
rights contemplated under this Agreement.
B. Waterloo shall not publish any Confidential Information relating to this
Agreement or any Technology and Inventions conceived of, made or arising
under this Agreement until permission in writing is given by Senesco.
Senesco agrees that Waterloo personnel shall be permitted to present at
symposia, national or regional professional meetings, and to publish in
journals, theses or dissertations, or otherwise of their own choosing,
methods and results of the Protocol, PROVIDED: (1) that Senesco shall have
been provided copies of any proposed publication or presentation at least
ninety (90) days in advance of the submission
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of such proposed publication or presentation; and (2) Senesco shall have
thirty (30) days after receipt of said copies to object to such proposed
presentation or proposed publication; and (3) in the event that Senesco
makes such objection, Xxxxxxxx and Waterloo personnel shall refrain from
making such presentation or publication for a period of sixty (60) days to
allow Senesco to file patent application(s) or seek other protection for its
proprietary subject matter contained in the proposed presentation or
publication; and (4) in the event Senesco is unable to obtain meaningful
protection within sixty (60) days on the subject matter under the terms of
this Article, Waterloo and Xxxxxxxx agree to postpone publication for up to
an additional ninety (90) days during which time the parties shall negotiate
a version of the publication which does not compromise Senesco's proprietary
interests in the subject matter and is otherwise acceptable to Senesco.
Under no circumstances will Waterloo or Xxxxxxxx be allowed to disclose
Confidential Information of Senesco.
ARTICLE X. NONCOMPETITION.
A. Notwithstanding any provisions of this Agreement to the contrary, the
parties agree that Waterloo independently works on many projects which may
be similar in some respects to the subject matter set forth in the Protocol.
The parties agree that Waterloo shall not be precluded from pursuing such
projects through its own personnel, EXCEPT:
(1) Xxxxxxxx agrees not to conduct any research, act as a consultant or
perform any other services, either directly or indirectly, for any
entity in the world which is competitive with Senesco relating to the
subject matter provided in Article X.B. herein, for a period of two (2)
years after the termination of this Agreement; and
(2) Each person working on this project agrees to first notify Senesco
prior to accepting employment or undertaking services for any entity in
the world which is competitive with Senesco relating to the subject
matter provided in Article X.B. herein. In view of the confidentiality
obligations herein, each person working on this project agrees to use
his best efforts not to personally conduct any research, act as a
consultant, or perform any other services relating to the subject
matter provided in Article X.B. herein, either directly or indirectly
for any entity for a period of two (2) years after termination of this
Agreement.
B. The scope of noncompetition shall include research and development on plant
genes and their cognate expressed proteins that are induced during or
coincident with cell deterioration and related processes, which may initiate
or facilitate senescence or other degradation of plants or plant tissues,
together with methods for controlling senescence or other degradation, that
involve altering the expression of these genes. This further includes
promotion and marketing of transgenic or other modified plants containing
these genes and/or their expressed cognate proteins as a means for
controlling senescence or other degradation of plants or plant tissues.
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C. The parties agree that the period of time and scope of the restrictions
specified herein are both reasonable and justifiable to prevent harm to the
legitimate business interests of Senesco, including but not limited to
preventing transfer of Confidential Information to Senesco's competitors
and/or preventing other unauthorized disclosures or use of Senesco's
Technology and Inventions.
ARTICLE XI. REPORTS AND CONFERENCES.
A. Written project reports shall be provided by Waterloo to Senesco monthly, to
be received by the seventh day of the following month. A final report shall
be submitted by Waterloo within thirty (30) days of completion of the
project or within thirty (30) days of the termination of this Agreement. The
content of the written project reports will be agreed upon by the parties.
B. During the term of this Agreement, representatives of Waterloo will meet
with representatives of Senesco at times and places mutually agreed upon to
discuss the progress and results, as well as ongoing plans, or changes
therein, of the Protocol to be performed hereunder.
ARTICLE XII. ASSIGNMENT.
No right or obligation to this Agreement shall be assigned by Waterloo
without the prior written permission of Senesco. Senesco has the right to assign
its rights and obligations; however, it must also seek permission of Waterloo,
such permission not to be unreasonably withheld. Waterloo shall not subcontract
any work to be performed without Senesco's prior written consent. Any work by
any subcontractor shall be under the direct supervision of Xxxxxxxx.
ARTICLE XIII. SUPPLIES AND EQUIPMENT.
Waterloo shall provide laboratory space, personnel and equipment already
owned by Waterloo for conducting the research contemplated by the Agreement.
Waterloo shall retain title to any equipment purchased with funds provided by
Senesco under this Agreement.
ARTICLE XIV. TERMINATION.
A. Senesco has the right to terminate this Agreement upon thirty (30) days
advance written notice to Waterloo. In the event of such a termination,
Waterloo shall refund all unexpended and unobligated funds to Senesco after
withholding amounts necessary to discharge obligations that cannot be
canceled. Waterloo agrees to provide Senesco with copies of all work
products which exist at the time of termination.
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B. In the event Senesco terminates this agreement, then Xx. Xxxx X. Xxxxxxxx
shall not be obligated under the noncompetition provision, specifically
Article X.A., paragraph (1).
C. Senesco's rights under Articles VI and VII, VIII, X and XI shall survive
termination of this Agreement.
D. In the event Senesco wishes to abandon its interest in the Technology and
Inventions, Waterloo and Senesco will enter into good faith negotiations for
Waterloo to acquire said Technology and Inventions.
ARTICLE XV. INDEMNIFICATION.
A. Waterloo shall defend, indemnify and hold Senesco, its officers, employees
and agents harmless from and against any and all liability, loss, expense
(including reasonable attorneys' fees) or claims for injury or damages
arising out of the performance of this Agreement but only in proportion to
and to the extent such liability, loss, expense, attorneys' fees or claims
for injury or damages are caused by or result from the negligent or
intentional acts or omissions of Waterloo, its officers, agents or
employees.
B. Senesco shall defend, indemnify and hold Waterloo, its officers, employees
and agents harmless from and against any and all liability, loss, expense
(including reasonable attorneys' fees) or claims for injury or damages
arising out of the performance of this Agreement but only in proportion to
and to the extent such liability, loss, expense, attorneys' fees or claims
for injury or damages are caused by or result from the negligent or
intentional acts or omissions of Senesco, its officers, agents or employees.
ARTICLE XVI. GOVERNING LAW.
This Agreement shall be construed in accordance with and governed by the
laws, statutes, rules, court decisions and customs prevailing in the State of
New Jersey and the United States, except to the extent that the laws of the
Province of Ontario and the Federal Government of Canada shall govern Xxxxxxx'x
Compensation, Employment Standards Act, Ontario Human Rights Code, Environmental
Protection Act, Occupational Health and Safety Act or any other similar statutes
that would take priority.
ARTICLE XVII. INTEGRATION.
This Agreement states the entire contract between the parties in respect to
the subject matter of the Agreement and supersedes any previous written or oral
representations, statements, negotiations or agreements. This Agreement my be
modified only by written amendment executed by the authorized representatives of
both parties.
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ARTICLE XVIII. AGREEMENT MODIFICATION.
Any agreement to change the terms of this Agreement in any way shall be
valid only if the change is made in writing and approved by mutual agreement of
authorized representatives of the parties hereto.
ARTICLE XIX. GOVERNING LANGUAGE.
In the event that a translation of this Agreement is prepared and signed by
the parties, this English language Agreement shall be the official version and
shall govern if there is a conflict between the translation and this English
language Agreement.
ARTICLE XX. NOTICES.
Notices under this Agreement shall be sent by registered mail, return
receipt requested, or delivered by hand, to the following address of either
party unless changed by written notice.
Senesco: Waterloo:
Xxxxxxx X. Xxxxxxxxxx, Chairman Xxxx Xxxxx, Contracts Manager
Senesco, Inc. Office of Research
00 Xxxxxxxx Xxxxxx University of Waterloo
Xxxxxxxxx, Xxx Xxxxxx 00000 U. S.A. 000 Xxxxxxxxxx Xxxxxx Xxxx
Telephone: (000) 000-0000 Xxxxxxxx, Xxxxxxx X0X 0X0
XXXXXX
Telephone: (000) 000-0000, X2022
Fax: (000) 000-0000
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IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
executed by their duly authorized representatives as of the day and year first
written above.
SENESCO, Inc., a New Jersey THE UNIVERSITY OF WATERLOO
Corporation ("Senesco") ("Waterloo")
By: /s/ Xxxxxxx X. Xxxxxxxxxx By: /s/ Xxxxxxx X. Xxxxxxx
--------------------------------- ---------------------------------
Xxxxxxx X. Xxxxxxxxxx Xxxxxxx X. Xxxxxxx
Title: Chairman Title: Vice President, University
Research
By: /s/ Xxxxx X. Xxxxx
---------------------------------
Xxxxx X. Xxxxx
Title: Director, Research Finance
/s/ Xxxx X. Xxxxxxxx
------------------------------------
Xx. Xxxx X. Xxxxxxxx
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EXHIBIT C
ACKNOWLEDGMENT OF EMPLOYEES AND RESEARCHERS OF
THE UNIVERSITY OF WATERLOO
In consideration of the substantial benefits that I have or will continue to
receive as an employee and/or researcher of the University of Waterloo, and as a
condition to being able to participate in the project described in the Research
Agreement executed between Senesco, Inc. ("Senesco") and The University of
Waterloo ("Waterloo"), effective as of September 1, 1998, I hereby agree to be
bound to the confidentiality and non-disclosure provisions set forth as the
obligations required of the University of Waterloo pursuant to the Agreement as
if I were a signatory to such Agreement. I acknowledge and agree that any
inventions or rights which may be protectable under intellectual property law
developed, created, or conceived of by me (either in whole or in part) within
the Scope of Work, as defined in the Research Agreement, shall be owned solely
by Senesco, and I hereby agree to take any actions requested by Senesco in order
to more fully vest title in the same in Senesco as required by such Agreement.
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(Employee Name)
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(Signature)
