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EXHIBIT 10.54
RESEARCH AND DEVELOPMENT AGREEMENT
THIS RESEARCH AND DEVELOPMENT AGREEMENT (this "Agreement"), dated March
13, 2000, by and between Implant Sciences Corporation, a Massachusetts
corporation ("Implant"), and CardioTech International, Inc., a Massachusetts
corporation ("CardioTech"),
W I T N E S S E T H T H A T:
WHEREAS, the parties hereto desire to develop polymer covered or coated
vascular stents (the "Stents") utilizing proprietary technologies of each party;
WHEREAS, CardioTech is willing to grant to Implant a perpetual worldwide
exclusive license to use, sublicense and otherwise deal in any technology
developed by CardioTech in connection with the development of the Stents;
WHEREAS, Implant is willing to provide Up to $250,000 in research and
development and equity financing for the development of the Stents on the terms
and conditions set forth herein; and
WHEREAS, CardioTech is willing to sell 100,000 shares of its common stock,
$.01 par value per share ("Common Stock"), to Implant at $1.00 per share as set
forth herein;
NOW, THEREFORE, in consideration of the foregoing, and intending to be
legally bound hereby, the parties hereto agree as follows:
1. Financing and Purchase of Common Stock. Upon execution of this
agreement, Implant shall make the $10,000 payment required for Phase 1 set forth
on Schedule A hereto. Thereafter, subject to CardioTech's performance of its
obligations hereunder and the right of the parties to terminate this Agreement,
Implant shall make the payments set forth on Schedule A for Phases 2 through 6.
CardioTech shall perform the services and deliver the deliverables set forth on
Schedule A within the time periods set forth on Schedule A.
Contemporaneously with the receipt of the payments for each of Phase 4, 5
and 6, CardioTech shall issue to Implant 40,000, 40,000 and 20,000 shares of
Common Stock, respectively. CardioTech shall reserve for issuance in accordance
with the Agreement, 100,000 shares of Common Stock, and, upon receipt of payment
therefore in accordance with this Agreement, such shares shall be duly and
validly issued, fully paid and nonassessable. Implant acknowledges that the
certificates representing such shares shall bear a legend indicating that the
shares have not been registered under the Securities Act of 1933, as amended.
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2. Licenses.
(a) CardioTech hereby grants to Implant a perpetual, worldwide,
royalty free license, except as defined in Section 3.0, to use any and all
technology specifically developed by CardioTech for use in the manufacture or
coating of the Stents. CardioTech hereby agrees to execute and deliver any and
all additional documentation Implant reasonably deems necessary or desirable to
transfer to Implant the rights set forth in this Section 3.
3. Sales of Stents. Implant and CardioTech agree, that upon completion of
the research and development contemplated by this Agreement, they will negotiate
and enter into an agreement pursuant to which Implant will have the exclusive
right to manufacture and sell the Stents and Implant will pay CardioTech a
royalty of between 3% and 5% of actual quarterly receipts. Should Implant
decline to sell the Stents, the right to sell the Stents shall transfer to
CardioTech. CardioTech will pay Implant a royalty of between 3% and 5% of actual
quarterly receipts.
In addition, CardioTech will coat the Stents and Implant will pay
CardioTech the lesser of $50 per stent or CardioTech's actual cost per stent
plus a twenty five percent (25%) profit for CardioTech's coating services. If
CardioTech's costs plus profit exceed $50 per stent, Implant will have the right
to coat the Stents itself and CardioTech shall cooperate fully in the transfer
of all technology and know how necessary or desirable for Implant to do so.
3.1 Territory. Implant shall have to rights to sell the Stents in all
countries except those exempted by U.S. law.
4. FDA Approval. Implant and CardioTech shall cooperate in good faith to
obtain FDA approval for the Stents. Such cooperation shall include negotiating
in good faith to arrive at an agreement for the financing and management of any
FDA trials and submissions.
5. Representations of Implant. Implant represents and warrants to
CardioTech that:
(a) Implant has the power and authority to enter into this Agreement and
perform its obligations hereunder. The execution, delivery and performance of
this Agreement have been approved by all requisite corporate action and, in
particular, has been approved by all of the Directors of Implant that are not
affiliated with CardioTech. The execution, delivery and performance of this
Agreement by Implant will not violate or constitute a breach of the charter or
bylaws of Implant or any material agreement to which Implant is a party. Implant
either owns or has sufficient right to use all technology and intellectual
property proposed to be used in the development of the Stents (other than
technology or intellectual property or rights thereon to be provided by
CardioTech) so that the use of such technology and intellectual property will
not violate or infringe upon the rights of any third party.
(b) CardioTech has the power and authority to enter into this Agreement
and perform its obligations hereunder. The execution, delivery and performance
of this Agreement have been approved by all requisite corporate action on the
part of CardioTech and, in particular,
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has been approved by all of the Directors of CardioTech that are not affiliated
with Implant. The execution, delivery and performance of this Agreement by
CardioTech will not violate or constitute a breach of the charter or bylaws of
CardioTech or any material agreement to which CardioTech is a party. CardioTech
either owns or has sufficient right to use all technology and intellectual
property proposed to be used in the development of the Stents (other than
technology or intellectual property or rights thereon to be provided by Implant)
so that the use of such technology and intellectual property will not violate or
infringe upon the rights of any third party.
6. Term and Termination.
(a) This Agreement shall continue in full force and effect until
termination in accordance herewith or (b) one year after the completion of the
research and development process set forth in Schedule A hereto.
(b) Subject to the second sentence of this clause (b), this Agreement may
be terminated by: (i) mutual agreement of the parties hereto, (ii) any party
that is not in material breach hereof upon thirty day's prior written notice to
the other party if such other party is in material breach of any provision of
this Agreement. The provisions of Sections 2 [licenses] and 7 [indemnification]
shall survive termination of this Agreement.
7. Indemnification. Each party hereto agrees to indemnify and hold
harmless the other party hereto against any losses, costs, and or damages
(including reasonable legal fees) incurred by such party as a result of the
failure or inaccuracy of any representation, warranty, covenant or agreement of
the indemnifying party.
8. Notices. All notices, requests, consents and other communications
hereunder shall be in writing, shall be mailed by first-class registered or
certified mail, postage prepaid, and shall be deemed given when so mailed:
(a) if to Implant to:
Implant Sciences Corporation
▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇, #▇
▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: Chief Executive Officer
With a copy to:
▇▇▇▇▇, ▇▇▇▇ & ▇▇▇▇▇ LLP
▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇, Esq.
(b) if to CardioTech to:
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CardioTech International
▇▇-▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇
Attention: ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇, Ph.D
9. Changes. Any term of the Agreement may be amended or compliance
therewith waived only with the written consent of the parties hereto.
10. Headings. The headings of the various sections of this Agreement have
been inserted for convenience of reference only and shall not be deemed to be
part of this Agreement.
11. Severability. If any provision contained in this Agreement shall be
invalid, illegal or unenforceable in any respect, the validity, legality and
enforceability of the remaining provisions contained herein shall not in any way
be affected or impaired thereby.
12. Governing Law. This Agreement shall be governed by and construed in
accordance with the internal laws of The Commonwealth of Massachusetts.
13. Counterparts. This Agreement may be executed in two counterparts, each
of which shall constitute an original, but both of which, when taken together,
shall constitute but one instrument, and shall become effective when one or more
counterparts have been signed by each party hereto and delivered to the other
parties.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
executed by their duly authorized representatives as of the date first above
written.
IMPLANT SCIENCES CORPORATION
By: /s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇ 3-13-00
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▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇
Chairman of the Board and CEO
CARDIOTECH INTERNATIONAL, INC.
By: /s/ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇ 3-13-00
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▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇, Ph.D
Chairman of the Board and CEO
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SCHEDULE A
COOPERATIVE RESEARCH PROGRAM
PHASE IDENTIFICATION DESCRIPTION COST EST. TIME
1 Design equipment (to be Lathe $10K (payed 1 month
fabricated at IMX and Movable Doctor blade upon
installed at CTE) Water sprayer program
Teflon mandrels start)
2 Make prototypes Deliver 6 covered $25K (payed 1 month
(solid PU) stents with solid 10 days after
polyurethane delivery)
3 Make prototypes Deliver 3 prototypes $25K (payed 1 month
(solid PU) with smooth inner 10 days after
walls delivery)
4 Make Heparinized Develop techniques $75K 1 month
prototypes (solid PU) of heparinizing ($35K for
with smooth inner inner wall, using prototypes,
walls PolyBiomed method. $40K to
Test emzymatic purchase
activity. Deliver shares)
3 prototypes.
5 Make prototypes Deliver 3 prototypes $75K 1 month
(microporous PU) ($35K for
prototypes,
$40K to
purchase
shares)
6 Make prototypes Deliver 3 prototypes $40K 1 month
(microporus PU) ($20K for
with smooth inner prototypes,
walls $20K to
purchase
shares