CORPORATE
RESEARCH AGREEMENT
TO ACCOMPANY LICENSE AGREEMENT
This AGREEMENT entered into this 15th day of December, 1993 (the "Effective
Date"), by and between APOLLO GENETICS, INC., a corporation duly organized under
the laws of the State of Delaware and having its principal office at 222 Third
Street, Suite 3121, Cambridge, Massachusetts 02142 (hereinafter referred to as
"Sponsor") and the UNIVERSITY OF FLORIDA, a non-profit educational institution
of the State of Florida located in Gainesville, Florida (hereinafter referred to
as the "University").
W I T N E S S E T H:
WHEREAS, Sponsor desires the research assistance of certain technically
qualified persons having access to certain facilities and equipment;
WHEREAS, Sponsor desires to fund said research entitled [ * ] attached
hereto as Appendix 1;
WHEREAS, Sponsor has entered into a License Agreement with the University
of Florida Research Foundation, Inc. ("UFRFI") dated December 15, 1993 for all
fields of use. UFRFI and University have agreed that the research described
herein shall be funded through and conducted by University;
WHEREAS, University is willing to cooperate with and assist Sponsor by
furnishing such personnel, and facilities as may be required;
NOW, THEREFORE, in consideration of the premises and mutual covenants
herein contained, the parties hereto agrees as follows:
I. DEFINITIONS:
As used herein, the following terms shall have the following meanings:
1.1 "Project Description" shall mean the description of the project as
described in Appendix 1 hereof.
1.2 "Project Work" shall mean the research work as described in
Appendix 1 hereof to be performed by University and its Principal
Investigator, [ * ], under this Agreement.
* Confidential treatment has been requested for marked portion
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1.3 "Contract Period" is for a period of three (3) years, commencing from
the Effective Date, during which the University shall perform the Project Work.
1.4 "Principal Investigator" shall mean the individual designated by
University to implement and oversee all aspects and components of the Project
Work and to serve as University's liaison with Sponsor's designated
representative.
1.5 "Researcher(s)" shall mean individually and collectively the Principal
Investigator, graduate students, other professional personnel and/or other
employees of University participating in the actual performance of the Project
Work.
1.6 "Sponsor" shall mean the LICENSEE defined and described in the License
Agreement between LICENSEE and UFRFI.
1.7 "License Agreement" shall mean that certain License Agreement dated
December 15, 1993 to which this Research Agreement is attached.
II. RESEARCH WORK
2.1 University shall commence the performance of the Project Work promptly
after the Effective Date of this Agreement, and shall use its diligent efforts
to complete such Project Work substantially in accordance with the terms and
conditions of this Agreement. Anything in this Agreement to the contrary
notwithstanding, Sponsor and University may at any time enter into written
agreements to make changes to and amend the Project Description provided,
however, that such changes or amendments do not change the nature of the
project; are approved by UFRFI; and, further provided that budgetary allocations
set forth in Appendix 1 hereof covering the Project Work to be performed
hereunder shall be augmented as necessary to cover any additional costs to
University resulting from such changes or amendments.
2.2 Sponsor's designated representative shall be Katherine Gordon, Ph.D.
or such other representative as Sponsor may from time to time designate.
University's Principal Investigator shall be [ * ] Ph.D. or such
other representative as University may designate with the prior written approval
of Sponsor.
III. REPORTS AND CONFERENCES
3.1 University's Principal Investigator shall make up to four (4) oral
reports each year as requested by Sponsor and shall submit written
progress/program reports on a yearly basis and as specific phases of work are
completed. A final report shall be submitted by University within forty five
(45) days of the conclusion of the Contract Period, or early termination of this
Agreement.
3.2 If necessary, during the term of this Agreement, representatives of
the University will meet the representatives of Sponsor at times and places
mutually agreed upon to discuss the
* Confidential treatment has been requested for marked portion
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progress and results, as well as ongoing plans, or changes therein, of the
Project Work to be performed hereunder.
IV. COSTS, BILLINGS AND OTHER SUPPORT
4.1 It is agreed to and understood by the parties hereto that, subject
to Section 2, total costs to Sponsor hereunder shall not exceed the sum of
[ * ] Dollars ($[ * ]). These costs shall be allocated as set forth in
Appendix 1 attached hereto for use in the Project Work.
4.2 Anything herein to the contrary notwithstanding, should this Agreement
be subject to early termination pursuant to Section 10 hereof, Sponsor shall pay
all costs accrued by University as of the date of termination, provided,
however, that Sponsor shall reimburse University for non-cancelable obligations,
which shall include all non-cancelable contracts and postdoctoral associate
appointments called for in the Project Description, Appendix 1 incurred prior to
the effective date of termination. After termination, any obligation of Sponsor
for postdoctoral associates shall end no later that the end of the University's
fiscal year following termination.
V. PUBLICITY
5.1 Sponsor will not use the name of the University, nor of any member of
the University's technical staff, in any publicity, advertising or news release
without the prior written approval of an authorized representative of the
University; provided, however, that Sponsor may (a) refer to publications by
employees of University in scientific literature, or (b) state that Sponsor is
sponsoring research at University. The University will not use the name of
Sponsor, nor any employee of Sponsor, in any publicity without the prior written
approval of Sponsor.
VI. PUBLICATIONS
6.1 Sponsor recognizes that under University academic policy, the results
of a University research project must be publishable and agrees that Researchers
engaged in the Project Work shall be permitted to prevent at symposia, national
or regional professional meetings and to publish in journals, theses or
dissertations, or otherwise of their own choosing, methods and results of
Project Work, provided, however, that Sponsor shall have been furnished copies
of any proposed publication or presentation at least sixty (60) days in advance
of the submission of such proposed publication or presentation to a journal,
editor or other third party. Sponsor shall have thirty (30) days, after receipt
of said copies, to object to such proposed presentation or proposed publication
either because there is patentable subject matter which needs protection and/or
there is Confidential Information (as later defined herein) of Sponsor contained
in the proposed publication or presentation. In the event that Sponsor makes
such objection, the said Researcher(s) shall refrain from making such
publication or presentation for a maximum of three (3) months in order for
Sponsor
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* Confidential treatment has been requested for marked portion
to file patent application(s) with the United States Patent and Trademark Office
and/or foreign patent office(s) directed to the patentable subject matter
contained in the proposed publication or presentation.
VII. CONFIDENTIALITY
7.1 Anything in this Agreement to the contrary notwithstanding, any and
all knowledge, know-how, practices, process or other information of any kind and
in any form (hereinafter referred to as "Confidential Information") disclosed or
submitted, either orally, in writing or in other tangible or intangible form
which is designated as Confidential Information, to either party by the other
shall be received and maintained by the receiving party in strict confidence and
shall not be disclosed to any third party. Furthermore, neither party shall use
the said Confidential Information for any purpose other than those purposes
specified in this Agreement. The parties may disclose Confidential Information
to the minimum number of its employees reasonably requiring access thereto for
the purposes of this Agreement provided, however, that prior to making any such
disclosures each such employee shall be apprised of the duty and obligation to
maintain Confidential Information in confidence and not to use such information
for any purpose other than in accordance with the terms and conditions of this
Agreement. The University warrants that any and all Researchers conducting
research under and supported by this Agreement shall sign a participation
agreement substantially similar in content to the form attached hereto and
incorporated herein by reference as Appendix 2.
7.2 Nothing contained herein will in any way restrict or impair either
parties right to use, disclose, or otherwise deal with any Confidential
Information which at the time of its receipt:
7.2.1 Is generally available in the public domain, or thereafter
becomes available to the public through no act of the receiving party; or
7.2.2 Was independently known prior to receipt thereof, or made
available to such receiving party as a matter of lawful right by a third party.
VIII. INVENTIONS, IMPROVEMENTS AND DISCOVERIES
8.1 University will promptly notify Sponsor of any University Inventions
conceived and/or made during the Contract Period under Project Work funded by
Sponsor or such shorter time if there is an early termination.
8.2 All rights and title to University Inventions arising under the
Project Work shall belong to University and shall be subject to the terms and
conditions of this Agreement and the License Agreement.
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8.3 All rights and title to Joint Inventions arising under the Project
Work shall belong jointly to Sponsor and University and shall be subject to the
terms and conditions of this Agreement and the License Agreement.
8.4 Rights to inventions, improvements and/or discoveries, whether
patentable or not, relating to Project Work made solely by employees of Sponsor
shall belong to Sponsor, and such invention, improvements and/or discoveries
shall not be subject to the terms and conditions of this Agreement, but shall be
subject to the terms and conditions of the License Agreement.
IX. PATENTS AND PATENT APPLICATIONS
9.1 All rights to University Inventions will be assigned by University to
UFRFI.
X. TERM AND TERMINATION
10.1 This Agreement shall become effective upon the date first hereinabove
written and shall continue in effect for the full duration of the Contract
Period unless sooner terminated in accordance with the provisions of this
Section 10. The parties hereto may, however, pursuant to Section 2.1, extend
the term of this Agreement for additional periods as desired under mutually
agreeable terms and conditions which the parties reduce to writing and sign.
10.2 In the event that either party hereto shall commit any breach of or
default in any of the terms or conditions of this Agreement, and also shall fail
to remedy such default or breach within sixty (60) days after receipt of written
notice thereof from the other party hereto, the party giving notice may, at its
option and in addition to any other remedies which it may have at law or in
equity, terminate this Agreement by sending notice of termination in writing to
the other party to such effect, and such termination shall be effective as of
the date of the receipt of such notice.
10.3 Termination of this Agreement by either party for any reason shall not
affect the rights and obligations of the parties accrued prior to the effective
date of termination of this Agreement including, but not limited to, any license
or sublicense rights under the License Agreement. No termination of this
Agreement, however effectuated, shall release the parties hereto from their
rights and obligations under Section III, IV, V, VI, VII and VIII.
XI. MISCELLANEOUS
11.1 The parties recognize that inventions, copyrightable works and other
proprietary information may arise from research sponsored in whole or in part by
agencies of the federal government. The parties hereto agree that any such
developments
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shall be governed by the provisions of Public Law 96-517, or as amended, during
the term of this Agreement.
11.2 In the performance of all services hereunder:
11.2.1 University shall be deemed to be and shall be an independent
contractor and as such University shall not be entitled to any benefits
applicable to employees of Sponsor;
11.2.2 University shall comply with all governmental laws and
regulations, such as EPA, OSHA and like regulations, which are applicable to the
University and its performance of the Project Work hereunder;
11.2.3 Neither party is authorized or empowered to act as agent or
the other for any purpose and shall not on behalf of the other enter into any
contract, warranty or representation as to any matter. Neither shall be bound
by the acts or conduct of the other.
XII. INDEMNITY/INSURANCE
12.1 University warrants and represents that, as part of the State of
Florida, University is self-funded for liability insurance under Chapter 284,
FLORIDA STATUTES, such protection being applicable to officers, employees and
agents while acting within the scope of their employment by University and
University has no liability insurance policy as such that can extend protection
to any other person.
12.2 Each party hereby assumes any and all risks of personal injury and
property damage attributable to the negligent acts or omissions of that party
and the officers, employees and agents thereof.
12.3 The parties further agree that nothing contained herein shall be
construed or interpreted as denying to either party any remedy or defense
available to such party under the laws of the State of Florida; the consent of
the State of Florida or its agents and agencies to be sued by reason hereon; or
as a waiver of sovereign immunity of the State of Florida beyond the waiver
provided in Section 768.28, FLORIDA STATUTES (1991).
XIII. GOVERNING LAW
This agreement shall be governed and interpreted in accordance with the
internal law of the State of Florida without regard to its conflict of laws.
XIV. ASSIGNMENT
This Agreement is not assignable and any attempt to do so shall be void
except in the case of a transfer of substantially all of the assets of one of
the parties hereto. This Agreement shall
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bind the parties, their successors resulting from merger, and their permitted
assigns.
XV. AGREEMENT MODIFICATION
Any agreement changing the terms of this Agreement in any way shall be void
only if the change is made in writing and approved by authorized representatives
of the parties hereto.
XVI. NOTICES
Notices, invoices, communications and payments hereunder shall be deemed
made if given by registered or certified mail, postage prepaid, and addressed to
the party to receive such notice, invoice or communication at the address given
below, or such other address as may hereafter be designated by notice in
writing:
If to Sponsor:
Katherine Gordon, Ph.D.
President
Apollo Genetics, Inc.
222 Third Street
Cambridge, MA 02142
If to University:
Karen A. Holbrook, Ph.D.
Vice President for Research
Dean, Graduate School
University of Florida
Office of Research and Graduate Education
223 Grinter Hall
Gainesville, FL 32611-2037
Technical Matter:
[*]
Payments shall be made in United States dollars to the University of
Florida at the address first indicated hereinabove. The date of giving any
notice, invoice or other communication, and the date of making any such payment,
provided that such payment is received, shall be the date on which such envelope
is deposited with the appropriate U.S. Post Office. The postal service receipt
showing the date of such deposit shall be PRIMA FACIE evidence of these facts.
* Confidential treatment has been requested for marked portion
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XVII. INDEPENDENT CONTRACTORS
For the purpose of this Agreement and all services to be provided
hereunder, both parties shall be, and shall be deemed to be, independent
contractors and not agents or employees of the other. Neither party shall have
authority to make any statements, representations or commitments of any kind, or
to take any action, that will be binding on the other party.
XVIII. FORCE MAJEURE
Neither party shall be in breach hereof by reason of its delay in the
performance of or failure to perform any of its obligations hereunder, if that
delay or failure is caused by strikes, acts of God or the public enemy, riots,
incendiaries, interference by civil or military authorities, compliance with
governmental priorities for materials, or any fault beyond its control or
without its fault or negligence.
XIX. ENTIRE AGREEMENT
This Agreement represents the entire understanding between the parties, and
supersedes and merges all understanding between the parties, and supersedes and
merges all other agreements, express or implied, discussions or understandings
between the parties with respect to the subject matter hereof. It shall be
interpreted in conjunction and consistent with the License Agreement to which
this is an Exhibit.
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IN WITNESS WHEREOF, the parties have caused these presents to be executed
in duplicate as of the day and year first above written.
APOLLO GENETICS, INC. UNIVERSITY OF FLORIDA
/s/ Katherine Gordon /s/ Karen A. Holbrook
- -------------------------- -----------------------
By: Katherine Gordon, Ph.D By:
Title: President Title:
/s/ Niles Sutphin /s/ Marilyn A. Ritter
- -------------------------- -----------------------
Witness Witness
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Appendix 1
PROJECT WORK AND BUDGET
SPONSORED PROJECT TITLE: [ * ]
OVERALL PROGRAM OBJECTIVE: [ * ]
SPECIFIC AIMS:
[ * ]
PROGRAM DESCRIPTION: [ * ]
* Confidential treatment has been requested for marked portion
Appendix 1
PROJECT WORK AND BUDGET (con't)
Year 1
[ * ]FTE Technician. . . . . . . . . . . . . . . . . . . . $[ * ]
Supplies for the evaluation of 6 steroids
(culture media, plastic ware, stains, cells,
antibiotics, disinfectants, etc.. . . . . . . . . . . . $ [ * ]
-------
Total Year 1 budget (direct). . . . . . . . . . . . . . . $ [ * ]
Overhead. . . . . . . . . . . . . . . . . . . . . . . . . $ [ * ]
TOTAL (Direct and indirect) . . . . . . . . . . . . . . . $ [ * ]
Year 2
[ * ]FTE Technician . . . . . . . . . . . . . . . . . . . $ [ * ]
Supplies. . . . . . . . . . . . . . . . . . . . . . . . . $ [ * ]
-------
Total Year 2 budge (direct) . . . . . . . . . . . . . . . $ [ * ]
Overhead. . . . . . . . . . . . . . . . . . . . . . . . . $ [ * ]
TOTAL (Direct and indirect) . . . . . . . . . . . . . . . $ [ * ]
Year 3
[ * ]FTE Technician . . . . . . . . . . . . . . . . . . . $ [ * ]
Supplies. . . . . . . . . . . . . . . . . . . . . . . . . $ [ * ]
Animal purchase and maintenance . . . . . . . . . . . . . $ [ * ]
-------
Total Year 3 budget (direct). . . . . . . . . . . . . . . $ [ * ]
Overhead. . . . . . . . . . . . . . . . . . . . . . . . . $ [ * ]
TOTAL (Direct and indirect) . . . . . . . . . . . . . . . $ [ * ]
* Confidential treatment has been requested for marked portion
Appendix 2
PARTICIPATION AGREEMENT
The University of Florida ("University") and Apollo Genetics, Inc.
("Sponsor") have entered into a corporate research agreement ("Research
Agreement") in which Sponsor granted to University and University accepted, a
research grant to support certain investigations (the "Sponsored Activity").
University agrees to certain obligations to Sponsor with respect to rights in
inventions, copyrightable subject-matter and other developments of a proprietary
nature that arise in connection with the Sponsored Activity. As a condition of
my participating in the Sponsored Activity and in consideration therewith, and
to enable University to fulfill its obligations to the Sponsor, I hereby agree
as follows:
1. The Sponsor shall have all rights with respect to any and all
[DEVELOPMENTS] of a proprietary nature which may accrue to me by virtue of my
participation in the Sponsored Activity and income derived therefrom to which it
is entitled under the terms of the Research Agreement, including such rights in
any invention, improvements, discovery or innovation, whether or not patentable,
conceived or first actually reduced to practice by me, solely or jointly with
others, in the course of, in connection with or as a result of the Sponsored
Activity. I will execute all documents and do all acts, but without expense to
me, necessary or proper to effectuate such rights or determinations of the
Sponsor, and I will not claim or assert rights inconsistent with Sponsor's
rights.
2. Any and all knowledge, know-how, practices, process or other
information of any kind and in any form (hereinafter referred to as
"Confidential Information") disclosed or submitted, either orally, in writing or
in other tangible or intangible form which is designated as Confidential
Information, to me by the Sponsor shall be received and maintained by me in
strict confidence and shall not be disclosed to any third party. Furthermore, I
shall not use the Confidential Information for any purpose other than those
purposes specified in the Sponsored Activity.
3. The principal investigator of the Sponsored Activity shall insure that
each participant signs a participation agreement in the form of this one.
Signed: [ * ]
* Confidential treatment has been requested for marked portion
Appendix 2
PARTICIPATION AGREEMENT
The University of Florida ("University") and Apollo Genetics, Inc.
("Sponsor") have entered into a corporate research agreement ("Research
Agreement") in which Sponsor granted to University and University accepted, a
research grant to support certain investigations (the "Sponsored Activity").
University agrees to certain obligations to Sponsor with respect to rights in
inventions, copyrightable subject-matter and other developments of a proprietary
nature that arise in connection with the Sponsored Activity. As a condition of
my participating in the Sponsored Activity and in consideration therewith, and
to enable University to fulfill its obligations to the Sponsor, I hereby agree
as follows:
1. The Sponsor shall have all rights with respect to any and all
[DEVELOPMENTS] of a proprietary nature which may accrue to me by virtue of my
participation in the Sponsored Activity and income derived therefrom to which it
is entitled under the terms of the Research Agreement, including such rights in
any invention, improvements, discovery or innovation, whether or not patentable,
conceived or first actually reduced to practice by me, solely or jointly with
others, in the course of, in connection with or as a result of the Sponsored
Activity. I will execute all documents and do all acts, but without expense to
me, necessary or proper to effectuate such rights or determinations of the
Sponsor, and I will not claim or assert rights inconsistent with Sponsor's
rights.
2. Any and all knowledge, know-how, practices, process or other
information of any kind and in any form (hereinafter referred to as
"Confidential Information") disclosed or submitted, either orally, in writing or
in other tangible or intangible form which is designated as Confidential
Information, to me by the Sponsor shall be received and maintained by me in
strict confidence and shall not be disclosed to any third party. Furthermore, I
shall not use the Confidential Information for any purpose other than those
purposes specified in the Sponsored Activity.
3. The principal investigator of the Sponsored Activity shall insure that
each participant signs a participation agreement in the form of this one.
Signed: [ * ]
* Confidential treatment has been requested for marked portion