EXHIBIT 10.11
RESEARCH AND TRANSFER AGREEMENT
This Agreement is made by and between Temple University - Of The Commonwealth
System of Higher Education, having a principal place of business at Broad Street
and Xxxxxxxxxx Avenue, Philadelphia, Pennsylvania (hereinafter referred to as
"TEMPLE") and Nutraceutix, Inc., having a principal place of business at 0000
000xx Xxx. X.X., Xxxxxxx, Xxxxxxxxxx 00000 (hereinafter referred to as
"COMPANY").
WHEREAS, TEMPLE faculty and staff have developed technical information and/or
know-how pertaining to controlled release technology described in U.S. Patent
Application 08/958,470 filed October 27, 1997 and in U.S. Patent Application
09/037,096 filed March 9, 1998 (hereinafter referred to as the "APPLICATIONS");
and
WHEREAS, COMPANY wishes to provide financial support to TEMPLE for further
research pertaining to the development of applications of the aforementioned
technology to vitamin C and wishes to obtain exclusive worldwide licensing
rights to the results of said research.
NOW, THEREFORE, in consideration of the premises and of the covenants and
obligations hereinafter set forth, TEMPLE and COMPANY, intending to be legally
bound, agree as follows:
ARTICLE I - DEFINITIONS
1.1 PROJECT shall mean the research project, pertaining to the use of the
technology described in the APPLICATIONS, which is the subject of this Agreement
and is described in EXHIBIT A, which is attached hereto and incorporated herein
by reference.
1.2 PROJECT PERIOD shall mean the three (3) month period beginning with the
effective date of this Agreement.
1.3 PROJECT RESULTS shall mean discoveries, inventions, know-how, testing
data, methods, techniques and other information, patentable or unpatentable,
resulting from the PROJECT during the PROJECT PERIOD.
1.4 PRINCIPAL INVESTIGATOR shall mean Xxxx Xxxxxxx of TEMPLE, the faculty
member designated by TEMPLE to direct the PROJECT and to serve as the contact
person for COMPANY on all technical matters relating to the PROJECT.
1.5 CONFIDENTIAL INFORMATION shall mean all information disclosed or
samples supplied by COMPANY personnel to TEMPLE or by TEMPLE faculty or staff to
COMPANY pertaining to PROJECT. However, CONFIDENTIAL INFORMATION shall not
include information which: (i) was known to the receiving party prior to the
date of disclosure by the other party or is developed independently of
information received from the disclosing party by those who have not had access
to this information; (ii) is lawfully received in good faith at any time by the
receiving party from a third party lawfully in possession of the same and having
the right to disclose the same; (iii) is, as of the date of receipt, in the
public domain or subsequently enters the public domain other than by reason of
acts or omissions of the receiving party; or (iv) is required to be disclosed by
law, rule of court or regulation.
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ARTICLE II - SCOPE
2.1 The scope of the work to be carried out under the PROJECT is described
in the document which is attached hereto as Exhibit A and is incorporated herein
by reference.
ARTICLE III - FUNDING
3.1 COMPANY agrees to provide the budget amount identified in Exhibit A to
TEMPLE to support the PROJECT during the PROJECT PERIOD.
3.2 COMPANY shall pay the amount identified in Paragraph 3.1 in one (1)
non-refundable payment on the effective date of this Agreement. The check shall
be made to "Temple University" (with the name of the PRINCIPAL INVESTIGATOR
shown for reference purposes) at the address shown in Paragraph 7.4.
ARTICLE IV - TRANSFER OF INFORMATION
4.1 CONFIDENTIAL INFORMATION disclosed in documentary form shall be marked
"Confidential." Oral discussions of CONFIDENTIAL INFORMATION shall be reduced to
writing by the disclosing party and a copy marked "Confidential" provided to the
receiving party within thirty (30) days of the date of the disclosure.
4.2 Except as provided in Paragraph 4.4, the receiving party shall, for a
period of five (5) years from the date of disclosure of CONFIDENTIAL
INFORMATION, hold said CONFIDENTIAL INFORMATION in strict confidence, not use
said CONFIDENTIAL INFORMATION except as provided in this Agreement, and not
disclose, directly or indirectly, said CONFIDENTIAL INFORMATION to any third
party except with the prior written consent of the disclosing party.
4.3 The receiving party shall, upon request by the other party, promptly
return all written materials or samples of tangible property received hereunder,
as well as all summaries thereof and notes pertaining thereto, with the
exception that one copy of said written materials may be retained by the
receiving party solely for archival purposes. This Paragraph 4.3 shall not apply
to PROJECT RESULTS following transfer of the PROJECT RESULTS to COMPANY.
4.4 Nothing herein shall prejudice the right of TEMPLE to publish or
otherwise disclose information relating to PROJECT RESULTS. However, TEMPLE
agrees to notify COMPANY of any proposed oral or written disclosure of
information related to PROJECT RESULTS at least ninety (90) days before such
submission for publication or other disclosure. Within the aforementioned ninety
(90) day period, COMPANY may give TEMPLE written notification that it wishes
TEMPLE to file, pursuant to Paragraph 5.2, a U.S. patent application to protect
PROJECT RESULTS described in the proposed publication or other disclosure, in
which case TEMPLE shall not submit the same for publication or otherwise
disclose the same without first filing such a U.S. patent application. COMPANY
may request deletion of sensitive information from the proposed disclosure, and
TEMPLE agrees to give good faith consideration to such a request. In addition,
the prohibitions on disclosure set forth in Paragraph 4.2 shall not apply with
respect to use or disclosure of PROJECT RESULTS by COMPANY following transfer of
the PROJECT RESULTS to COMPANY.
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ARTICLE V - OWNERSHIP RIGHTS
5.1 Title to all PROJECT RESULTS shall belong exclusively to the TEMPLE.
5.2 TEMPLE shall have the right to procure and maintain both U.S. and
foreign patents for PROJECT RESULTS, provided it does the same in consultation
with COMPANY, and COMPANY shall pay all reasonable expenses associated
therewith.
5.3 Any patent applications or patents of TEMPLE arising from, utilizing or
involving PROJECT RESULTS pursuant to Paragraph 5.2 or otherwise shall be
subject to the same rights of COMPANY as COMPANY has in APPLICATIONS and patents
pursuant to the provisions of the agreement set forth in the letter dated July
10, 1998 from Xxxxxxx X. Xxxxxxxxx of TEMPLE to Xxxxxxx X. St. Xxxx of the
COMPANY, which is attached hereto as Exhibit B and incorporated herein by this
reference (the "Letter Agreement"); provided that COMPANY shall not be required
to make any additional payments to TEMPLE pursuant to paragraphs 2 and 3 of the
Letter Agreement in order to obtain said rights; and provided further that
COMPANY's rights in the PROJECT RESULTS set forth in this Paragraph 5.3 shall be
incorporated into the license agreement contemplated by the Letter Agreement.
ARTICLE VI - DELIVERY OF PROJECT RESULTS
6.1 Promptly upon completion of the PROJECT, TEMPLE shall deliver to
COMPANY all data, documents and other items and information relating to the
PROJECT RESULTS.
ARTICLE VII - MISCELLANEOUS
7.1 This Agreement constitutes the entire understanding of the parties with
respect to the matters herein contained and each acknowledges and agrees that
there are no warranties, representations or understandings between them other
than those expressly set forth herein. Each party warrants and represents that
the terms of this Agreement are not inconsistent with any other contractual or
legal obligations it may have. This Agreement may be modified only by written
consent signed by both parties.
7.2 The rights and duties of the parties shall be governed by the laws of
the Commonwealth of Pennsylvania. The parties agree that any dispute arising out
of this Agreement may be resolved by recourse to the courts of the Commonwealth
of Pennsylvania or the United States District Court for the Eastern District of
Pennsylvania.
7.3 The terms and conditions of Articles IV, V and VI herein shall survive
the termination or expiration of this Agreement.
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7.4 Any notice, report, or other communication required hereunder shall be
sent to the parties at the addresses set forth below:
To TEMPLE: Office of Technology Transfer
Temple University (083-45)
0000 X. Xxxxx Xxxxxx, Xxxx 000
Xxxxxxxxxxxx, XX 00000-0000
To COMPANY: Nutraceutix. Inc.
Attn: Xxxxxxx X. St. Xxxx
0000 000xx Xxx. X.X.
Xxxxxxx, XX 00000
IN WITNESS WHEREOF, this Agreement has been executed by the duly authorized
representatives of both parties hereto the day and year written below, intending
to be legally bound hereby.
FOR TEMPLE UNIVERSITY - OF THE COMMONWEALTH SYSTEM OF HIGHER EDUCATION:
BY /s/ DATE 8/25/98
------------------------------------------------
Xxxxxxxx X. Xxxxxxxx
Associate Vice President and Assistant Treasurer
BY /s/ DATE 9/11/98
-----------------------------------------------
Xxxx Xxxxxxx
Principal Investigator
FOR NUTRACEUTIX, INC.:
BY /s/ DATE 8/13/98
-----------------------------------------------
Xxxxxxx X. St. Xxxx
President
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Exhibit A
Controlled Release
Vitamin C
Project
Objective: Development of a tablet containing 500 mg of Ascorbic
acid, with a zero-order release over 18-24 hours.
Time Frame: 3 months development
Specifications:
1. 500 mg Ascorbic acid.
2. Tablet 7/16 round. Aqueous coated.
3. Hardness: 8-12 KP-hard.
4. Rate of release, correlates with absorption in
intestines.
Total Budget: $6,500.00 for 3 month research.
This includes all labor, overhead, supplies and
related expenses.
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