INTELLECTUAL PROPERTY/COLLABORATIVE RESEARCH AGREEMENT
Exhibit
10.7
between
▇▇▇▇▇
Biocraft
Laboratories,
Inc. (SPONSOR)
and
The
University of ▇▇▇▇▇ ▇▇▇▇ ▇▇ ▇▇▇ (▇▇▇▇▇
▇▇▇▇)
▇. Scope of
Work
SPONSOR
grants to NOTRE DAME and NOTRE DAME accepts support for basic research
investigations under the direction of Dr ▇▇▇▇▇▇▇ ▇▇▇▇▇▇ at College of Science in
the department of Biological Science as described in the attached Statement of
Work (Attachment A). NOTRE DAME undertakes this research in furtherance of its
goal of seeking new knowledge.
2. Compensation
In
consideration of NOTRE DAME's exerting its good faith efforts to carry out the
research described in Attachment A (Research Plan), SPONSOR will pay NOTRE DAME
the amounts specified in, and in the manner provided by, Attachment B
(Compensation)
3. Period of
Performance
Research
under this Agreement will be performed during the period March 1, 2010 through
February 28, 2011
4. Technical
Representatives
SPONSOR'S
technical representative shall be ▇▇▇ ▇▇▇▇▇▇▇▇ or such other representative as
SPONSOR may subsequently designate in writing. NOTRE DAME's Principal
Investigator shall be Dr ▇▇▇▇▇▇▇ ▇▇▇▇▇▇ who shall be responsible for the
direction and conduct of the Research.
5. Consultation with SPONSOR'S
Representatives
During
the period of this Agreement, SPONSOR'S Technical/Scientific Representative und
other representatives may have reasonable access to consult informally with
NOTRE DAME's Principal Investigator regarding the Research both personally and
by telephone. Access to work carried on in NOTRE DAME Laboratories in the course
of the Research shall be entirely under the control of NOTRH DAME personnel;
SPONSOR'S representatives shall be permitted to visit such laboratories only
during usual hours of operation as is mutually agreeable.
6. Technical
Reports
The
Principal Investigator shall make up to four (4) oral reports each year if
requested by SPONSOR'S Technical Representative. Within sixty (60) days after
the expiration of this Agreement the Principal
Investigator shall submit a comprehensive final report to SPONSOR.
1
7. Publicity
Neither
party shall use the name of the other in any form of advertising or promotion
without the prior written approval of the other. The parties mayT however,
acknowledge SPONSOR'S support for, and the nature or, the investigations being
pursued under this Agreement. In any such statement, the relationship of the
parties shall be accurately and appropriately described.
8. Publication
NOTRE
DAME has the right to publish and otherwise publicly disclose information it has
gained in the course of the Research. In order to permit SPONSOR an opportunity
to determine if patentable inventions are disclosed, the Principal Investigator
will provide Sponsor with copies of articles written by project personnel
reporting on the Research prior to or coincidental with submission for
publication. NOTRE DAME and SPONSOR shall inform the Principal Investigator of
the effect on patent rights of the disclosure of patentable information prior to
the Filing of a patent application.
9. Intellectual
Properly
All
rights in inventions, discoveries, biological material, or software created in
(he course of the Research shall be the property of NOTRE DAME. NOTRE
DAME shall promptly report any such inventions, discoveries, biological material
or software to SPONSOR upon receipt of a written report from the Principal
Investigator
a) Patents
NOTRE
DAME agrees to cause patent applications to be filed and prosecuted in its name
at SPONSOR'S request and expense on inventions or discoveries conceived and
reduced to practice in the course of the Research ("Project
IP"). NOTRE DAME shall promptly notify SPONSOR and provide it a
copy of any such patent application. From the date of notification,
SPONSOR shall have a six (6) month period to negotiate the terms of an exclusive
license agreement for Project IP and NOTRE DAME agrees to negotiate these
license terms and conditions consistent with the License Agreement in Attachment
C, provided Sponsor is in compliance with this Agreement. During this period
NOTRE DAME will not offer a commercial license for Project IP to any other
party
In the
event SPONSOR does not agree, within thirty (30) days after notification of
NOTRE DAME's intent to file a patent application, to support said filing, NOTRE
DAME may file at its own expense and SPONSOR shall have no further rights in
that patent application.
b) Unpatented
Technology
All
rights in technology treated in the performance of the Research for which NOTRE
DAME does not seek patent protection shall be
owned by NOTRE
DAME. Upon receipt of a written description or sample of such
technology, SPONSOR shall have a six (6) month period to negotiate the terms of
an exclusive license agreement for Project IP and NOTRE DAME agrees to negotiate
these license terms and conditions consistent with the License Agreement in
Attachment C, provided Sponsor is in compliance with this Agreement. During this
period NOTRE DAME will not offer a commercial license for Project IP to any
other party
2
c) Grant of
Rights
For
disclosures for which the SPONSOR provides notice to NOTRE DAME under §9a.,
NOTRE DAME grants the SPONSOR a non-exclusive, paid-up, royalty-free license for
internal use on any Joint Intellectual Property developed pursuant to this
agreement. SPONSOR will bear the cost of preparing, filing, prosecuting and
maintenance of the patent(s) as outlined in § 9a.
d) Background Intellectual
Property
"Background
Intellectual Property" shall mean NOTRE DAME Patents with the following patent
number
ft 6,218,185, issued April
17, 2001, entitled "Piggybac transposon-based genetic transformation system for
insects", # 6,551,825, issued April 22,2003 entitled "Piggybac transposon-based
genetic transformation system for insects", # 6,962,810, issued November 8, 2005
entitled "Methods and compositions for transposition using minimal segments of
the eukaryotic transformation vector Piggybac”, # 7,105,343, issued September
12, 2006 entitled "Methods and compositions for transposition using minimal
segments of the eukaryotic transformation vector Piggybac", and Application #
11/454.947 filed June 19, 2006 entitled "Methods and compositions for
transposition using minimal segments of the eukaryotic transformation vector
Piggybac"
Sponsor
has certain rights to Background Intellectual Property. From the date
of notification pursuant to 9.a), SPONSOR shall have a six (6) month period to
negotiate the terms of a license agreement for Project IP and Background IP and
NOTRE DAME agrees to negotiate these license terms and conditions consistent
with the License Agreement in Attachment C, provided Sponsor is in compliance
with this Agreement.
10. Collaboration
It is
understood that the NOTRE DAME investigators shall be free to discuss the
Research with other investigators and to collaborate with them to the extent
that no rights under any other agreement between the parties are
infringed.
11. Indemnification
SPONSOR
hereby waives, and agrees to indemnify, defend, and held harmless NOTRE DAME and
its employees, agents, and students from any claim, loss, cost, expense, or
liability of any kind including reasonable attorney's fees and expenses arising
out of or connected with this Agreement or the Research, except to
the extent such claim is due to the negligence of NOTRE DAME, and including
without limitation, product liability claims relating to products based on the
Research. NOTRE DAME shall promptly notify SPONSOR of any such claim
and shall cooperate with SPONSOR and its insurance carrier in the defense of the
claim. SPONSOR agrees to consult with NOTRE DAME regarding the defense of such
claim and to submit any proposed settlement to NOTRE DAME in advance of its
approval.
3
12. Warranties
NOTRE
DAME MAKES NO WARRANTIES, EXPRESS OR IMPLIED, AS TO ANY MATTER WHATSOEVER,
INCLUDING, WITHOUT LIMITATION, THE CONDITION, ORIGINALITY, OR ACCURACY OF THE
RESEARCH OR ANY INVENTION(S) OR PRODUCT(S), WHETHER TANGIBLE OR INTANGIBLE,
CONCEIVED, DISCOVERED, OR DEVELOPED UNDER THIS AGREEMENT; OR THE OWNERSHIP,
MERCHANTABILITY, OR FITNESS FOR A PARTICULAR PURPOSE OF THE RESEARCH OR ANY SUCH
INVENTION OR PRODUCT NOTRE DAME SHALL NOT BE LIABLE FOR ANY DIRECT,
CONSEQUENTIAL, OR OTHER DAMAGES SUFFERED BY SPONSOR, ANY LICENSEE, OR ANY OTHERS
RESULTING TROM THE USE OF THE RESEARCH OR AN Y SUCH INVENTION OR
PRODUCT
13. Independent
Contractor
For the
purposes of this Agreement and all services to be provided hereunder, each party
shall be, and shall be deemed to be, an independent contractor and not an agent
or employee of the other party Neither party shall have authority to
make any statements, representations nor commitments of any kind, or to take any
action, which shall be binding on the other party, except as may be explicitly
provided for herein or authorized by the other
party in writing.
14. Governing
Law
The
validity and interpretation of this Agreement shall he governed by the laws of
the State of Indiana in the United States of America.
15. Assignment
This
Agreement shall not be assignable by either party without the prior written
consent of the other party Such consent will not be unreasonably
withheld. Any and all assignments not made in accordance with this
section shall be void.
16. Notices
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
Director,
Post-Award Administration
University
of Notre Dame
▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇
▇▇▇▇▇
▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇
and
▇▇▇
▇▇▇▇▇▇▇▇, CEO
▇▇▇▇▇
Btocraft Laboratories
▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇
▇▇▇▇▇▇▇,
▇▇ ▇▇▇▇▇
or to
such other addresses as shall hereafter have been furnished by written notice to
the other party
4
17. Title to
Equipment
NOTRE
DAME shall retain title to all equipment purchased and/or fabricated by it with
funds provided by SPONSOR under this Agreement.
18. No Oral Modification
No
change, modification, extension, termination, or waiver of this Agreement, or
any of the provisions herein contained, shall be valid unless made in wiring and
signed by duly authorized representatives o f the parties
hereto
19. Term and
Termination
This
Agreement shall expire on February 28, 2011 unless extended or sooner terminated
in accordance with the provisions of this section.
Either
party may terminate this Agreement by giving the other party ninety (90) days
prior written notice of its election to terminate. In addition, NOTRE
DAME may terminate this Agreement immediately if circumstances beyond its
control preclude continuation of the Research.
Upon
termination of this Agreement, SPONSOR shall reimburse NOTRE DAME for all
reasonable expenses or uncancellable commitments incurred as of the date of
notice of termination but not to exceed the total amount committed under this
Agreement.
Termination
or expiration of this Agreement for reasons other than, an unremedied failure to
meet the material obligations under this Agreement shall not affect the rights
and obligations of (he parties accrued prior to termination.
20. Entire
Agreement
This
instrument contains the entire Agreement between parties hereto. No
verbal agreement, conversation or representation between any officers, agents,
or employees of the parties hereto either before or after the execution of this
Agreement, shall affect or modify any of the terms or obligations herein
contained.
5
IN
Witness WHEREOF, the parties have caused this Agreement to be executed as
of
|
▇▇▇▇▇
Biocraft Laboratories, Inc.
|
The University of Notre Dame du Lac | ||||
| By: |
/s/▇▇▇ ▇▇▇▇▇▇▇▇
|
By: |
/s/ ▇▇▇ ▇▇▇▇▇
|
||
|
▇▇▇
▇▇▇▇▇▇▇
|
▇▇▇
▇▇▇▇▇
|
||||
|
Chief
Executive Officer
|
Assistant
Vice President for Research
|
||||
| Date: March 20, 2010 | Date: March 15, 2010 |
6