RESEARCH AGREEMENT
THIS RESEARCH AGREEMENT effective as of the 1st day of September, 2000 by and
between IXION BIOTECHNOLOGY, INC., a small business with offices located at
137009 Progress Blvd., Box 13, (hereinafter referred to as "SPONSOR") and the
UNIVERSITY OF FLORIDA, a member of the State University System of the State of
Florida, acting for and on behalf of the Board of Regents, a public corporation
of the State of Florida ("UNIVERSITY") is entered into for the purpose of
allocating between the parties certain rights relating to and SBIR a project to
be carried out by Sponsor and University (hereinafter referred to as the
("PARTIES") under an SBIR funding agreement that may be awarded by the Public
health Service/National Institutes of Health ("Agency") to sponsor to fund a
proposal entitled "Enzyme-coating of Urinary Prostheses to Prevent
Encrustation" submitted to Agency by Sponsor on or about December 14, 1999.
WITNESSETH
WHEREAS, there search program contemplated by this Research Agreement is of
mutual interest and benefit to University and to Sponsor, will further the
instructional and research objectives of University in a manner consistent with
its status as a non-profit, tax-exempt, educational institution, and may derive
benefits for both Sponsor and University through inventions, improvements
and/or discoveries;
NOW, THEREFORE, in consideration of the premises and mutual covenants herein
contained, the parties hereto agree to the following:
Article 1 Definitions
As used herein, the following terms shall have the following meanings:
1.1 "Project" shall mean the description of the project described in Appendix
A hereof, under the direction of Dr. Laurie Gower, as co-investigator
(University project director).
1.2 "Contract Period" is 09/01/00 through 02/28/01.
1.3 "Background Intellectual Property" means property and the legal right
therein of either or both parties developed before or independent of this
Research Agreement including inventions, patent applications, patents,
copyrights, trademarks, mask works, trade secrets and any information embodying
proprietary data such as technical data and computer software.
1.4 "Project Intellectual Property" means the legal rights relating to
inventions, patent applications, patents, copyrights trademarks, mask works,
trade secrets and any other legally protectable information, including computer
software, first made or generated during the performance of this Research
Agreement and arising out of the Research Agreement.
Article 2 Research Work
2.1 University shall commence the performance of Project promptly after the
effective date of this Research Agreement, and shall use reasonable efforts to
perform such Project substantially in accordance with the terms and conditions
of this Research Agreement. Anything in this Research Agreement to the contrary
notwithstanding, Sponsor and University may at any time amend Project by mutual
written agreement.
2.2 In the event that the Principal Investigator becomes unable or unwilling
to continue Project, and a mutually acceptable substitute is not available,
University and/or Sponsor shall have the option to terminate said Project.
Article 3 Reports and Conferences
3.1 A final report shall be submitted by University to the Sponsor within
forty-five (45) days of the conclusion of the Contract Period, or early
termination of this Research Agreement.
3.2 During the term of this Research Agreement, representatives of University
will meet with representatives of Sponsor at times and places mutually agreed
upon to discuss the progress and results, as well as ongoing plans, or changes
therein, of Project to be performed hereunder.
Article 4 - Costs, Billings and Other Support
4.1 It is agreed to and understood by the parties hereto that, subject to
Article 2 the total costs to Sponsor hereunder shall be $25,000.
4.2 This is a fixed price agreement. The Sponsor shall pay in full $25,000 no
later that (30) days from final signature of this agreement.
Article 5 - Publicity
5.1 Sponsor will not use the name of University, nor of any member of
University's Project staff, in any publicity, advertising, or news release
without the prior written approval of an authorized representative of
University. University will not use the name of Sponsor, nor any employee of
Sponsor, in any publicity without the prior written approval of Sponsor.
Article 6 - Confidentiality/Publication
6.1 Background Intellectual Property and Project Intellectual Property of a
party, as well as other proprietary or confidential information of a party,
disclosed by that party to the other in connection with this SBIR project shall
be received and held in confidence for a period of 5 years by the receiving
party and, except with the consent of the disclosing party or ;as permitted
under this Research Agreement, neither used by the receiving party nor
disclosed by the receiving party to others, provided that the receiving party
has notice that such information is regarded by the disclosing party as
proprietary or confidential. Such information shall be marked as confidential
or proprietary, and any verbal information shall be reduced to writing and
marked as confidential or proprietary within (10) business days of such
disclosure. However, these confidentiality obligations shall not apply to use
or disclosure by the receiving party after such information is or becomes known
to the public without breach of this provision or is or becomes known to the
receiving party from a source reasonably believed to be independent of the
disclosing party or is developed by or for the receiving party independently of
its disclosure by the disclosing party.
6.2 Either party may publish its results from this SBIR project. Sponsor
recognizes that under University academic policy the results of University
research projects must be publishable. However, the publishing party will give
a right of review to the other party with respect to a proposed publication,
with a (30) day period in which to review proposed publications and submit
comments, which will be given full consideration before publication.
Furthermore, upon request of the reviewing party, publication will be deferred
for up to (90) additional days for preparation and filing of a patent
application which the reviewing party has the right to file or to have filed at
its request by the publishing party.
Article 7 - Intellectual Property
7.1 This Research Agreement shall not be construed as implying that either
party hereto shall have the right to use Background Intellectual Property of
the other in connection with this SBIR project except as otherwise provided
hereunder.
7.1.1 The following Background Intellectual Property of Sponsor may be used
nonexclusively without compensation by University in connection with research
or development activities for this project (if none, so state):
7.1.2 The following Background Intellectual Property of the University may be
used nonexclusively and except as noted, without compensation by Sponsor in
connection with research or development activities for this project (if none,
so state):
7.2 Except as otherwise provided herein, ownership of Project Intellectual
Property shall vest in the party whose personnel conceived the subject matter
or first actually reduced the subject matter to practice, and such party may
perfect legal protection therein in its own name and at its own expense.
Jointly made or generated Project Intellectual Property shall be jointly owned
by the Parties unless otherwise agreed in writing. The Sponsor shall have the
first option for a period of (60) days to perfect the rights in jointly made or
generated Project Intellectual Property unless otherwise agreed in writing.
7.2.1 The Parties agree to disclose to each other, in writing, each and every
Subject Invention, which may be patentable or otherwise protectable under the
United States patent laws in Title 35, United States Code. The Parties
acknowledge that they will disclose Subject Inventions to each other and the
Agency within (30) days after their respective inventor(s) first disclose the
invention in writing to the person(s) responsible for patent matters of the
disclosing Party. All written disclosures of such inventions shall contain
sufficient detail of the invention, identification of any statutory bars, and
shall be marked confidential, in accordance with 35 U.S.C. 205.
7.2.2 Each party hereto may use Project Intellectual Property of the other
nonexclusively and without compensation in connection with research or
development activities for this SBIR project, including inclusion in SBIR
project reports to the Agency and proposals to the Agency for continued funding
of this SBIR project through additional phases. University shall also retain
the right to practice the Project Intellectual Property for any educational or
research purpose.
7.2.3 In addition to the Government's rights under the Patent Rights clause of
37CFR 401.14, the Parties agree that the Government shall have an irrevocable,
royalty free, nonexclusive license for any governmental purpose in any Project
Intellectual Property.
7.2.4 Sponsor will have an option to commercialize the Project Intellectual
Property of University subject to any rights of the Government therein, as
follows:
A. Where Project Intellectual Property of University is a potentially
patentable invention, Sponsor will have an exclusive option for a license to
such invention, for an initial option period of (60) days after such invention
has been reported to Sponsor. Sponsor may, as its election and subject to the
patent expense reimbursement provisions of this section, extend such option for
an additional (90) days by giving written notice of such election to University
prior to the expiration of the initial option period. During the period of such
option following notice by Sponsor of election to extend, University will
pursue and maintain any patent protection for the invention requested in
writing by Sponsor and, except with the written consent of Sponsor or upon the
failure of Sponsor to reimburse patenting expenses as required under this
section, will not voluntarily discontinue the pursuit and maintenance of any
United States patent protection for the invention initiated by University or of
any patent protection requested by Sponsor.
For any invention for which Sponsor gives of is election to extend the option,
Sponsor will, within (30) days after invoice, reimburse University for the
expenses incurred by University prior to expiration or termination of the
option period in pursuing and maintaining (i) any United States patent
protection initiated by University; and (ii) any patent protection requested by
Sponsor. Sponsor may terminate such option at will by giving written notice to
than prior commitments not practically revocable, will cease upon University's
receipt of such notice. At any time prior to the expiration or termination of
an option, Sponsor may exercise such option by giving written notice to
University, whereupon the parties will promptly and in good faith enter into
negotiations for a license under University's patent rights in the invention
for Sponsor to make, use and/or sell products and/or services that embody, or
the development, manufacture and/or use of which involves employment of, the
invention. The terms of such license will include: (i) payment of reasonable
royalties to University on sales of products or services which embody, or the
development, manufacture or use of which involves employment of, the invention;
and in the case of an exclusive license, (ii) reasonable commercialization
milestones and/or minimum royalties.
B Where Project Intellectual Property of University is other than a
potentially patentable invention, Sponsor will have an exclusive option for a
license, for an option period extending until (60) days following completion of
University's performance of the phase of this project in which such Project
Intellectual Property of University was developed by University and disclosed
to Sponsor. Sponsor may exercise such option by giving written notice to
University, whereupon the parties will promptly and in good faith enter into
negotiations for a license under University's interest in the subject matter
for Sponsor to make, use and/or sell products or services which embody, or the
development, manufacture and/or use of which involve employment of, such
Project Intellectual Property of University. The terms of such license will
include: (i) payment of reasonable royalties to University on sales of products
or services that embody, or the development, manufacture or use of which
involves employment of, the Project Intellectual Property of University and, in
the case of an exclusive license, (ii) reasonable commercialization milestones
and/or minimum royalties.
Article 8 - Grant of Rights
8.1 Pursuant to Article 7, if Sponsor elects not to exercise its option or
decides to discontinue the financial support of the prosecution or maintenance
of the protection, University shall be free to file or continue prosecution or
maintain any such application(s), and to maintain any protection issuing
thereon in the U.S. and in any foreign country at University's sole expense
with no further obligation to Sponsor.
Article 9 - Term and Termination
9.1 This Research Agreement shall become effective upon the date first
hereinabove written and shall continue effect for the full duration of the
Contract Period unless sooner terminated in accordance with the provisions of
this Article. The parties hereto may, however, extend the term of this Research
Agreement for additional periods as desired under mutually agreeable terms and
conditions which the parties reduce to writing and sign. Either party may
terminate this Research Agreement upon (60) days prior written notice to the
other.
9.2 In the event that either party hereto shall commit any breach of or
default in any of the terms or conditions of this Research Agreement, and also
shall fail to remedy such default or breach with sixty (60) days after receipt
of written notice thereof from the other party hereto, the party giving notice
may, at this option and in addition to any other remedies which it may have at
law or in equity, terminate this Research Agreement by sending notice to
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.
9.3 Termination of this Research 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 Research Agreement. No termination of
this Research Agreement, however effectuated, shall affect either party's
rights and obligations under Articles 4,5,6,7,8, and 10.
9.4 Should this Research Agreement be terminated, Sponsor shall pay all costs
and any uncancellable encumbrances accrued by University as of date of
termination.
Article 10 - Independent Contractor
10.1 In the performance of all services hereunder.
10.1.1 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.
10.1.2 Neither party is authorized or empowered to act as agent for 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.
Article 11 - Insurance
11.1 University warrants and represents that University has adequate liability
insurance, 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.
11.2 Sponsor will indemnify and hold harmless the Agency and University with
regard to any claims 11.3 arising in connection with commercialization of the
results of this project by or under the authority of the Sponsor.
Article 12 - Governing Law
12.1 This Research Agreement shall be governed and construed in accordance
with the laws of the State of Florida.
Article 13 - Assignment
13.1 This Research Agreement shall not be assigned to any third party by either
party without the prior written consent of the parties hereto.
13.2 This Research Agreement is assignable to any division of Sponsor, any
majority stockholders of Sponsor, and/or any subsidiary of Sponsor in which 51
percent of the outstanding stock is owned by Sponsor.
Article 14 - Research Agreement Modification
14.1 Any agreement to change the terms of this Research Agreement in any way
shall be valid only if the change is made in writing and approved by mutual
agreement of authorized representatives of the parties hereto.
Article 15 - Notices
15.1 Notices, invoices, communications, and payments hereunder shall be deemed
made if given by registered or certified envelope, 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 Ixion Biotechnology, Inc.
13709 Progress Blvd. Box 13
Alachua, FL 32615
Attn: Chief Executive Officer
If to University:
Office of Engineering Research University of Florida
319 Weil Hall
Gainesville, FL 32611
If Technical Matter: Dr. Laurie Gower
Department of Material Science
and Engineering
University of Florida
Gainesville, FL 32610
In Witness Whereof, the parties have caused these presents to be executed in
duplicate as of the day and year above written.
Ixion Biotechnology, Inc. University of Florida
/s/ Weaver H. Gaines /s/ Sandra Goldstein
____________________ _______________________
By: Weaver H. Gaines By: Sandra Goldstein
Title: Chairman and Title: Associated Director
Chief Executive Officer for Research
Date: 10/16/00 Date:
/s/ Laurie Gower
_________________________
Dr. Laurie Gower
University Project Director