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EXHIBIT 10.22
RESEARCH SERVICES AGREEMENT
This Agreement is effective this 3rd day of September by and between
SpectRx Inc. ("COMPANY") having a place of business at 6025A Unity Drive,
Norcross, Georgia 30071, and the Sisters of Providence in Oregon doing business
as the Oregon Medical Laser Center, Providence St. Vincent Medical Center
("CENTER"), 9205 SW Barnes Rd., Portland, Oregon 97225.
PURPOSE: To provide a working relationship between the COMPANY and the CENTER on
a proprietary project of the COMPANY utilizing the expertise of Steven L.
Jacques representing the CENTER. The project is the development of a
non-invasive optical measurement system for monitoring hyperbilirubinemia in
neonates, as patented by Steven L. Jacques et al. (U.S. patent #5,353,790),
assigned to the University of Texas M. D. Anderson Cancer Center, and licensed
to the COMPANY.
1. Scope and Term of Services. CENTER shall, upon request by
COMPANY, provide the services specified in Exhibit A, Section
1. CENTER shall report progress regularly to the individual
specified in Exhibit A, Section 2. CENTER shall provide such
services during the period shown in Exhibit A, Section 3.
2. Payment. COMPANY shall pay CENTER as specified in Exhibit A,
Section 4. Payments to CENTER shall not be subject to income
or employment tax withholding and will be reported to the U.S.
Internal Revenue Service citing the tax identification number
of the CENTER (TIN #9930386906). COMPANY has no obligation to
reimburse CENTER for any expenses incurred by CENTER under
this Agreement unless specifically authorized in writing by
the COMPANY. CENTER hereby indemnifies COMPANY against any
obligation imposed on COMPANY to pay withholding taxes or
similar items or resulting from a court's or governmental
entity's determination that the CENTER is not an independent
contractor to the COMPANY.
3. Confidentiality. COMPANY and CENTER shall have signed an
"Exchange of Proprietary Information Agreement" which protects
both parties from unauthorized use or disclosure of
Proprietary Information. This Agreement is subject to that
Exchange of Proprietary Information Agreement.
4. Ownership of Inventions.
(a) Any invention, copyrightable material, technology,
know-how and related intellectual property rights
("Inventions") created during and directly related to
the scope of research services defined in Exhibit A
under this Agreement shall be owned by the COMPANY
and are hereby assigned to the COMPANY. CENTER shall
promptly disclose to COMPANY all Inventions which
CENTER may conceive or make while providing research
services as defined in Exhibit A. Any Inventions
which are copyrightable shall be considered "works
made for hire" as defined in the U.S. Copyright Act.
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(b) Whenever requested by COMPANY, CENTER shall execute
and deliver documents considered necessary by COMPANY
to apply for and maintain intellectual property
protection for the benefit of COMPANY in any country,
or to perfect COMPANY's ownership of and exclusive
right to Inventions. CENTER irrevocably appoints
COMPANY and its authorized agents as CENTER's
attorney-in-fact to execute and file any such
documents at COMPANY's expense as requested by
COMPANY in prosecuting or defending any litigation or
other proceeding involving any Invention in any
country.
(c) If the CENTER knowingly incorporates into any
invention any Proprietary Information or technology
owned by the COMPANY, the COMPANY shall have a
nonexclusive, royalty-free, perpetual, irrevocable,
worldwide license to make, have made, modify, use and
sell such item in connection with such Invention.
5. Conflicts of Interest. CENTER represents that this Agreement
does not conflict with any agreement or obligation binding on
CENTER. CENTER represents that CENTER is not presently
retained by any entity that designs, manufactures or sells
products competitive with COMPANY's present products or
proposed products disclosed to CENTER. CENTER shall not accept
such retention without COMPANY's approval while CENTER is
providing services to COMPANY. CENTER shall not design
products identical or substantially similar to those developed
under this Agreement for any third party while CENTER is
providing services to the COMPANY and for 12 months after
CENTER ceases to provide services to COMPANY.
6. Independent Contractor Relationship. The parties are
independent contractors and neither party is the agent of the
other for any purpose. Neither party has authority to assume
any obligation for the other or to make any representation on
behalf of the other.
7. Arbitration and Equitable Relief. Any dispute arising out of
this Agreement shall be settled by arbitration held in
Atlanta, GA, in accordance with the rules of the American
Arbitration Association. The arbitrator may grant injunctions
or other equitable relief. The arbitrator's decision shall be
final, conclusive and binding on the parties to the
arbitration. Judgment may be entered on the arbitrator's
decision in any court of competent jurisdiction. COMPANY and
CENTER shall each pay 50% of the costs of arbitration and
shall each separately pay its respective counsel fees and
expenses. CENTER agrees that it would be impossible or
inadequate to measure COMPANY's damages from CENTER's breach
of Sections 3, 4, or 5. Accordingly, if CENTER breaches
Sections 3, 4, or 5, COMPANY may, in addition to any other
right or remedy, obtain an injunction restraining such breach
or threatened breach and specific performance of such
provision, without delivery by COMPANY of a bond or other
security.
8. Miscellaneous. Any notice under this Agreement shall be in
writing and shall be deemed delivered 5 days after being
mailed to the other party at the address set forth at the end
of this Agreement or at such other address given pursuant to
this provision, and shall also be considered delivered upon
transmission by facsimile if a confirming letter is mailed on
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the same day. This Agreement is the entire agreement regarding
research services between the parties, in addition to the
accompanying Exchange of Proprietary Information Agreement.
This Agreement may be modified only by a subsequent written
instrument signed by COMPANY and CENTER. Sections 3, 4, 5, and
7 shall survive any termination of this Agreement or of
research services. CENTER may not subcontract any services to
be provided under this Agreement without COMPANY's prior
written consent. This Agreement shall bind and benefit the
heirs, legal representatives, successors and assigns of the
parties.
COMPANY CENTER
OMLC
SPECTRx, Inc. Providence St. Vincent Medical Center
Jonathan A. Eppstein, Representative Steven L. Jacques, Representative
By: /s/ Jonathan A. Eppstein By: /s/ Steven L. Jacques
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Title: Vice President of R&D Title: Senior Research Associate
Oregon Medical Laser Center
Date: September 5, 1996 Date: September 5, 1996
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Authorized Signator:
Stephen G. Franey
By: /s/ Stephen G. Franey
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Title: Regional Director of Education
and Research
Date: September 5, 1996
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EXHIBIT A
1. SCOPE OF SERVICES
Development of system for optical monitoring of
hyperbilirubinemia in neonates, as licensed from the Univ. of
Texas M.D. Anderson Cancer Center. Discussion and analysis of
the clinical data collected with the prototype non-invasive
bilirubin measurement system. Analysis of design options
regarding the optical interface to the subject. Algorithm
development to improve the predictive accuracy of the system's
output as a measurement of bilirubin in the blood of the
subject. Specifically excluded from this Agreement are all
other forms of optical monitoring, spectroscopy, or imaging
and associated algorithms as they might be applied in areas
outside of optical monitoring of bilirubin as defined in the
license from the Univ. of Texas M.D. Anderson Cancer Center.
2. COMPANY REPRESENTATIVE RECEIVING REPORTS
Geoffery Berlin, Ph.D. Senior Analyst at SpectRx
3. TERM OF SERVICES
9-3-96 through 1-1-97
4. PAYMENT FOR SERVICES RENDERED
$125.00 per hour.
To be paid by check or money order made out to:
PROVIDENCE HEALTH SYSTEMS
with the following information on the check:
JACQUES DEVELOPMENTAL FUND, #RR2019
sent to the following mailing address:
Providence Health Systems
Regional Research Accounting
P.O. Box 13993
Portland, OR 97213
COMPANY CENTER
By: /s/ Jonathan A. Eppstein 9/5/96 By: /s/ Steven L. Jacques 9/5/96
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Jonathan A. Eppstein/date Steven L. Jacques/date
By: /s/ Stephen G. Franey 9/5/96
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Stephen G. Franey/date