RESEARCH SPONSORSHIP AGREEMENT
Exhibit
10.37
This
Research Sponsorship Agreement is made and entered this 31st day of January
,
2006 (“Effective Date”), by and between DNAPrint Genomics, Inc. a corporation
organized and existing under the laws of Utah and having its principal offices
at ▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇., ▇▇▇▇▇▇▇▇ ▇▇ ▇▇▇▇▇ (“Company”) and Massachusetts College of
Pharmacy and Health Sciences, ▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇
(“MCPHS”).
BACKGROUND.
A. MCPHS,
by
virtue of its role as an educational institution, carries out scientific
research through its faculty, staff and students and is committed to bringing
the results of that research into widespread use to the extent it is permitted
to do so by its agreements with sponsors of research, and by the provisions
of
35 USC §§200-212
and 37 CFR §401 et seq. and regulations pertaining thereto.
B. The
Company currently licenses the entire right, title and interest in and to
certain chemical compounds (“Compounds”) under a License Agreement between
Company and ▇▇. ▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ dated October 19, 2005 (the “License”). A list
of the Compounds is attached hereto as Appendix A.
C. The
Company wishes to provide research sponsorship under which ▇▇. ▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇
(“Principal Investigator”) will lead at MCPHS a research project that relates to
the Compounds.
D. The
Principal Investigator wishes to perform such research project in accordance
with the terms and conditions set forth in this Research Sponsorship Agreement
(hereinafter, “Agreement”).
| 1. |
DEFINITIONS.
|
As
used
in this Agreement, the following terms shall have the following meanings:
1.1 “Compound(s)”
means: The material(s) identified in Appendix A subject to the License and
other
material(s), if any, to be supplied by Principal Investigator, from time to
time, in accordance with the Research Plan (as defined below) together with
any
recreations, progeny, mutants, modified derivatives or unmodified derivatives
thereof supplied by Principal Investigator or created by or on behalf of
Company. Appendix A shall be updated from time to time, as may be necessary,
to
include new Compounds.
1.2 “Company
Representative” means: Mr. ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇ or such other representative as
Company may subsequently designate in writing.
1.3 “Invention”
means:
Any invention made by (a) the Principal Investigator and/or
any other MCPHS employee, student, trainee (including without limitation
post-doctoral research fellows) or contractor, in the performance of the
Research during the Research Period, or (b) one or more employees or consultants
of Company.
1.4 “Patent
Rights” means: Any and all Patent Rights that claim, and only to the extent they
so claim, an Invention. To the extent that any such claim covers subject matter
that is not an Invention, such subject matter and any and all rights in it
shall
be excluded from Patent Rights. Patent Rights includes any
and
all (a) patents, (b) pending patent applications, including, without
limitation, all provisional applications, substitutions, continuations,
continuations-in-part, divisions, reissues, renewals, and all patents granted
thereon, and (c) all patents-of-addition, reissue patents, reexaminations
and extensions or restorations by existing or future extension or restoration
mechanisms, including, without limitation, supplementary protection certificates
or the equivalent thereof.
1.5 “Technology”
means:
Patent Rights and Inventions, including new Compounds.
1.6 “Non-Commercial
Research Purposes” means: Use or practice of Technology for academic research
and other not-for-profit or scholarly purposes which are undertaken at a
non-profit or governmental institution that does not involve the production
or
manufacture of products for sale or the performance of services for a fee.
1.7 “Research”
means:
The research actually conducted under the direction of the Principal
Investigator by Principal Investigator and/or other employees, students,
trainees (including without limitation post-doctoral research fellows) and
contractors of MCPHS in accordance with the research plan set forth in Appendix
B (“Research Plan”) of this Agreement during the Research Period and funded by
Company pursuant to this Agreement.
1.8 “Research
Period”
means:
The period beginning on the Effective Date and ending on the date one year
thereafter,
which
period may be extended by mutual written agreement of the Principal Investigator
and duly-authorized representatives of MCPHS and Company.
1.9 “Research
Results” means: Any and all Inventions, materials, methods, processes, know-how
and results discovered or acquired by, or on behalf of, Principal Investigator
and/or any other employees, students, trainees (including without limitation
post-doctoral research fellows) or contractors of MCPHS in the course of the
performance of the Research, including Patent Rights.
| 2. |
SPONSORED
RESEARCH.
|
2.1 Principal
Investigator will use his reasonable professional efforts to perform the
Research in accordance with the Research Plan; however, failure to complete
all
aspects of the Research or to achieve any particular result(s) shall not, in
the
absence of other factors, be deemed a breach of this Agreement.
2.2 The
Research will be directed and supervised by the Principal Investigator, who
shall have primary responsibility for the performance of the Research. If the
Principal Investigator ceases to supervise the Research for any reason, MCPHS
will so notify Company, and MCPHS may attempt to find among the scientists
at
MCPHS, a scientist or scientists acceptable to Company to assume the supervision
of the Research in place of such Principal Investigator. If MCPHS does not
propose to Company any scientist(s) to assume supervision of the Research,
or if
the scientist(s) so proposed is/are unacceptable to Company, then Company in
its
sole and absolute discretion, within sixty (60) days after receipt of such
notice may elect to terminate this Agreement, including funding of the Research.
Company shall promptly advise MCPHS in writing if Company so elects. Such
termination shall terminate all obligations pursuant to Paragraph 2.1 above
with
respect to the Research.
2.3 The
scope
of work attempted to be directed by Principal Investigator under this Agreement
shall be limited to the Research and the Research Period.
2.4
(a) Company
shall pay MCPHS in support of the Research during the Research Period an
aggregate amount of three hundred thousand dollars ($300,000). Such amount
shall
be paid in accordance with the schedule set forth in Appendix C of this
Agreement, entitled, “Research Sponsorship Payment Schedule”.
(b) Checks
should be made payable to ________________and should identify Company and the
Principal Investigator and be sent to:
______________
______________
Attn.:
Director
(c) Company
shall not be obliged to expend funds in excess of those provided under this
Article to conduct the Research.
(d) Nothing
in this Agreement shall be interpreted to prohibit MCPHS or the Principal
Investigator from seeking and receiving funding from non-commercial
sources,
including government agencies and foundations, or from commercial entities
for
non-commercial purposes, to further support the Research; provided that such
funding shall not be on terms that give such entity(ies) any rights to use
any
Invention(s), or Biological Materials (subject to any non-exclusive license
for
governmental purposes or other governmental or non-commercial rights reserved
by
a sponsor(s) as a condition of award of such funding). The Principal
Investigator shall notify Company (i) upon making application for and (ii)
upon
receipt of any such funding.
2.5 Principal
Investigator shall submit written, quarterly reports to Company, setting forth
the Research Results in sufficient detail to keep Company reasonably apprised
of
the progress of the Research. The first such report will be due on or before
the
date three (3) months after the Effective Date. Within sixty (60) days after
the
earlier of (i) expiration of the Research Period or (ii) termination of this
Agreement, the Principal Investigator shall submit a comprehensive, final
written report to Company.
2.6
(a) Prior
to
public presentation or submission to a journal, the Principal Investigator
agrees to submit for review to Company Representative the content of any
manuscript, abstract, or presentation containing data and results of the
Research.
(b) Within
30
days of receipt of an early draft manuscript or an abstract or presentation
from
Principal Investigator, Company shall submit its comments, if any, to the
Principal Investigator. The Principal Investigator shall make good faith efforts
to incorporate and address all of the Company’s comments. The Principal
Investigator, however, has sole decision-making authority over publication
content.
(c) If
Company has reason to believe that any such manuscript or abstract reveals
a
potentially patentable Invention, Company shall so notify MCPHS and Principal
Investigator in writing within the time period indicated in subparagraph 2.6(b),
above. In such case, Principal Investigator agrees to delay publication or
public presentation, for purposes of patent filing, until the earliest to occur
of the following: (i) the date of which a U.S. patent application has been
filed
by Company; or (ii) 60 days after the date of such notification by
Company.
2.7 Principal
Investigator will promptly report any Invention to Company.
2.8 MCPHS
and
Principal Investigator shall act hereunder only as independent contractors,
and
nothing contained in this Agreement shall be construed to be inconsistent with
that relationship or status. Under no circumstances shall MCPHS or any of its
faculty, staff, students or agents, including without limitation Principal
Investigator, be considered to be an employee or agent of Company.
| 3. |
TITLE.
|
3.1 MCPHS
recognizes that the Company is providing enabling technology for creation of
a
database which allows investigators to ▇▇▇▇ for new clinical markers. In
recognition of the Company’s role, MCPHS agrees that the Company will own all
Technology, Patent Rights and Inventions, including but not limited to,
intellectual property, copyright, know-how, trade secrets, databases, software,
and compounds developed by MCPHS personnel, including the Principal
Investigator, alone or in collaboration with non-MCPHS personnel, as a result
of
the Research. Any MCPHS personnel associated with the Research or with access
to
the databases(s) used in the Research are bound by the terms and conditions
of
this Agreement. Notwithstanding the above, MCPHS will own any “platform
technology” discovered as a result of pursuing the Research, and MCPHS hereby
grants to the Company a perpetual, worldwide, royalty free, non-exclusive
license to use such platform technology. The term “platform technology” shall
mean technology which has generic use across a range of applications and is
not
specific to the Research. Additionally, MCPHS shall be able to utilize and
practice the Technology for Non-Commercial Research Purposes. .
3.2 As
between the parties, all rights, title and interest in and to the Research
Results, including any Inventions or Patents derived from the Research Results
and the Compounds are and shall be owned solely and exclusively by Company.
As
between the parties, all rights, title and interest in and to the Technology
are
and shall be owned by Company. .
3.3 MCPHS
and
Principal Investigator acknowledge
and agree that any and all intellectual property produced, including physical
products,
ideas,
designs, concepts, plans, programs or applications, during the course of this
Agreement as a result of the Research, is and shall remain the Company’s sole
property during and after the term of this Agreement. All
inventions, ideas, processes, programs, software, and designs (including all
improvements) (i) conceived (whether or not actually conceived during regular
business hours) or made by MCPHS personnel, including the Principal
Investigator, alone or in collaboration with non-MCPHS personnel during the
term
of this Agreement, and (ii) related to the Research, shall be disclosed in
writing promptly to Company and shall be the sole and exclusive property of
Company. The Principal Investigator shall cooperate with Company and its
attorneys in the preparation of patent and copyright applications for such
developments and shall promptly assign all such inventions, ideas, processes,
and designs to Company. The decision to file for patent or copyright protection
or to maintain such development as a trade secret shall be in the Company’s sole
discretion.
3.4 MCPHS
employees, personnel and agents, including Principal Investigator shall assign,
sell and/or transfer to the Company the entire right, title and interest in
and
to any and all Inventions, applications and any and all letters patent which
may
be granted for Inventions that result during the course of the Research for
the
Company in the United States of America and its territorial possessions and
in
any and all foreign countries, divisions, reissues and continuations thereof,
including the right to file foreign applications directly in the Company’s name
and claim priority rights deriving from such United States application to which
said foreign applications are entitled by virtue of international convention,
treaty or otherwise.
| 4. |
CONFIDENTIALITY.
|
4.1 Except
as
otherwise provided in Paragraph 4.2, below, during the term of this Agreement,
neither party shall disclose to any third party(ies), including without
limitation any governmental patent office or agency, nor use except for the
purpose of this Agreement any Confidential Information, as defined below, of
the
other party. Each party shall restrict the dissemination of the other party’s
Confidential Information to its employees or agents who have a need to know
such
information in order to meet such party’s obligations under this Agreement and
are bound by obligations of confidentiality and non-use comparable to those
set
forth in this Article 4.
4.2 Nothing
in this Agreement shall limit in any way (i) disclosure of information required
by any applicable law, governmental regulator or court of competent jurisdiction
or (ii) disclosure of information that is necessary to prevent imminent danger
to the safety of one or more persons. Should either party be required to
disclose Confidential Information provided by or on behalf of the other pursuant
to part (i) of the preceding sentence, the receiving party shall notify the
disclosing party reasonably in advance of such disclosure and shall take all
reasonable measures to limit the amount of Confidential Information that must
be
disclosed.
4.3 “Confidential
Information” of a party means any and all information provided by or which will
be provided or disclosed (whether or not purposely) by discloser to recipient,
whether in tangible or intangible form, including, without limitation, business
information, financial information, business forecast information, cash
requirement information, organization information, valuation information,
technical information and know-how, scientific information, research
information, chemical structures, patents and patent applications, ideas, works
of authorship, inventions, processes, experimental work, design details,
specifications and engineering materials, in any form or format, including,
without limitation, written, electronic, graphic, oral, visual, digital,
electronic and/or machine readable; and all internal materials, data, results,
reports and documents generated by or on behalf of the recipient containing
or
regarding any of the foregoing. With respect to tangible forms of such
information, it must be clearly marked as “confidential” or “proprietary” at the
time of disclosure, and with respect to any such information that is disclosed
orally or visually, it must be designated as “confidential” or “proprietary” at
the time of disclosure with subsequent written confirmation within thirty (30)
days of such disclosure referencing the date of disclosure and identifying
the
information disclosed.
Notwithstanding
the foregoing, information disclosed to either party by the other shall not
be
deemed Confidential Information, and the recipient party will have no obligation
with respect to such information:
| (a) |
if,
as of the date of disclosure, such information is part of the public
domain;
|
(b) if
such
information subsequently becomes part of the public domain through no act or
omission of the recipient party;
(c) if
the
recipient party can show that such information was in its possession, as
evidenced by written records, and had not been wrongfully acquired, directly
or
indirectly, from the provider party; or
(d) if
such
information is subsequently disclosed to the recipient by a third party not
in
violation of any obligation of confidentiality to the provider party;
or
(e) if
such
information is independently developed by receiving party without the use of
or
reference to disclosing party’s confidential information.
| 5. |
TERMINATION
OF AGREEMENT.
|
5.1 This
Agreement, unless terminated as provided herein, shall remain in effect until
the first anniversary of the Effective Date.
5.2 The
Company may terminate this Agreement pursuant to Paragraph 2.2.
5.3 In
addition, this Agreement may be terminated as provided below:
(a) Material
Breach.
Any
party may immediately terminate this Agreement if another party materially
breaches this Agreement and such breaching party fails to cure the breach within
thirty (30) days after receipt of written notice from the non-breaching party,
such notice specifying in detail the nature of the breach.
(b) Adverse
Regulatory Action.
This
Agreement
may be
terminated by any party immediately in the event of regulatory action which
would necessitate such termination.
(c) Company
Termination.
Company
may terminate this Agreement at any time upon ninety (90) days prior written
notice to MCPHS and Principal Investigator, provided
however,
that,
Company shall remain responsible for funding the Research through the end of
such ninety (90) days.
(d) Duties
Upon Termination.
Upon
termination pursuant to Paragraph 5.2 or 5.3, whether by MCPHS or by Company,
MCPHS shall forward to Company all reports, data, research, analysis and any
other tangible products resulting from the Research.
| 6. |
INDEMNIFICATION.
|
6.1 Company
and MCPHS shall indemnify, defend and hold harmless each other and their
respective current or former officers, directors, governing board members,
trustees, officers, faculty, and professional staff, employees, students, and
agents and their respective successors, heirs and assigns (collectively, the
“Indemnitees”) from and against any claim, liability, cost, expense, damage,
deficiency, loss or obligation or any kind or nature (including, without
limitation, reasonable attorney’s fees and other costs and expenses of
litigation) (collectively, “Claims”), based upon, arising out of, or otherwise
relating to their respective obligations and duties under this Agreement.
| 7. |
USE
OF NAMES.
|
Neither
party shall use the other party’s name or insignia, or any adaptation of them,
and Company shall not use the name of the Principal Investigator or other MCPHS
researcher(s), in any advertising, promotional or sales literature, without
the
prior written approval of the other party. This restriction shall not apply
to
(i) annual or other periodical reports prepared by either party in the normal
course of business, (ii) press releases; and (iii) any information required
by
law to be disclosed to any governmental entity. In addition, the parties may
acknowledge Company’s support for the Research being pursued under this
Agreement.
| 8. |
ASSIGNMENTS.
|
Without
the prior written consent of the other party in each instance, no party shall
assign this Agreement or any of the rights granted or obligations assumed
hereunder to any third party, whether voluntarily or involuntarily, by operation
of law or otherwise. Any assignment purported or attempted to be made in
violation of the terms of this Article 8 shall be null and void and of no legal
effect.
| 9. |
NOTICES.
|
Any
notices to be given hereunder shall be sufficient if signed by the party (or
party’s attorney) giving same and either
| (a) |
delivered
in person,
|
| (b) |
mailed
certified mail return receipt requested,
|
| (c) |
made
by overnight delivery, or
|
(d) faxed
to
other party if
the
sender has evidence of successful transmission and if
the
sender promptly sends the original by ordinary mail, in any event to the
following addresses:
If
to
Company:
DNAPrint
Genomics, Inc.
▇▇▇
▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇,
▇▇ ▇▇▇▇▇
Attn.:
▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇
facsimile:
(▇▇▇) ▇▇▇-▇▇▇▇
with
a
copy to:
▇▇▇▇▇▇
▇.
▇▇▇▇▇▇▇▇, P.A.
▇▇▇▇
▇▇▇
▇▇ ▇▇▇ ▇▇▇▇.
▇▇▇▇▇
▇▇▇
▇▇▇▇▇,
▇▇
▇▇▇▇▇
Attn:
▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇, Esq.
facsimile:
(▇▇▇) ▇▇▇-▇▇▇▇
If
to
MCPHS:
Massachusetts
College of Pharmacy and Health Sciences
▇▇▇
▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇,
▇▇ ▇▇▇▇▇-▇▇▇▇
Attn.:
Director (?)
facsimile:
_____________
with
a
copy to:
▇▇▇▇▇▇
▇▇▇▇▇▇
____________________
____________________
facsimile:
_________________
If
to
Principal Investigator:
▇▇.
▇▇▇▇
▇▇▇▇▇▇▇▇▇▇
___________________
___________________
Facsimile:
________________
By
such
notice a party may change its address for future notices.
Notices
delivered in person shall be deemed given on the date delivered. Notices mailed
shall be deemed given on the date postmarked on the envelope. Notices sent
by
overnight carrier shall be deemed given on the date received by such carrier,
as
indicated on the shipping manifest or waybill. Notices sent by fax shall be
deemed given on the date faxed.
| 10. |
MISCELLANEOUS,
|
10.1 The
interpretation and application of the provisions of this Agreement shall be
governed by the laws of the Commonwealth of Massachusetts and the United States
of America.
10.2 Company,
MCPHS and the Principal Investigator shall comply with all applicable laws
and
regulations.
10.3 Legal
title to Compounds shall be unaffected by this Agreement or any transfer made
hereunder.
10.4 This
Agreement shall not constitute, create, or in any way be interpreted as a joint
venture, partnership, or formal business organization of any kind.
10.5 Waiver
by
a party of any obligation under this Agreement shall not be construed as waiver
of any such subsequent or other obligation of the party hereunder.
10.6 Should
a
court of competent jurisdiction hold any provision of this Agreement to be
invalid, illegal, or unenforceable, and such holding is not reversed on appeal,
it shall be considered severed from this Agreement. All other provisions, rights
and obligations shall continue without regard to the severed provision, provided
that the remaining provisions of this Agreement are in accordance with the
intention of the parties.
10.7 This
Agreement constitutes the entire understanding between the parties and neither
party shall be obligated by any condition or representation other than those
expressly stated herein or as may be subsequently agreed to in a writing signed
by the duly authorized representative of each of the parties.
10.8 This
Agreement shall be binding upon the respective successors, legal representatives
and assignees of MCPHS and Company.
10.9 This
Agreement may be executed in multiple counterparts, each
of
which shall be deemed an original, but all of which, taken together, shall
constitute one and the same instrument.
IN
WITNESS WHEREOF, the parties hereto have caused this Agreement to be executed
by
their duly authorized representatives.
MASSACHUSETTS
COLLEGE OF
DNAPRINT
GENOMICS, INC.
PHARMACY
AND HEALTH SCIENCES
______________________________ _____________________________
Name
Name
Title
Title
______________________________ _____________________________
Date
Date
I,
the
undersigned, hereby confirm that I have read the Agreement, that its contents
are acceptable to me and that I will act in accordance with its
terms.
________________
▇▇.
▇▇▇▇
▇▇▇▇▇▇▇▇▇▇
________________
Date