EXHIBIT 10.2
RESEARCH AGREEMENT
Effective on this 18th day of March, 1997 (the "Effective Date"),
ALBERT EINSTEIN COLLEGE OF MEDICINE OF YESHIVA UNIVERSITY, a New York
nonprofit corporation with offices located at 1300 Morris Park Avenue, Bronx,
New York 10461 (hereinafter "University") and
INNOVIR LABORATORIES, INC., a Delaware corporation having its principal
place of business at 510 East 73rd Street, New York, New York 10021 (hereinafter
"Innovir"), in consideration of the mutual covenants contained herein, AGREE AS
FOLLOWS:
ARTICLE 1
BACKGROUND AND DEFINITIONS
1.1 University, through the Principal Investigator, has developed technology
based on a Woodchuck Hepatitis Mouse model for testing antiviral agents
against woodchuck hepatitis virus (WHV).
1.2 Innovir has proprietary oligonucleotide based anti-HBV compounds called
external guide sequences ("EGS(s)") which has been shown to inhibit HBV
replication in hepatoma cells producing human HBV.
1.3 The parties wish to determine if the woodchuck hepatitis mouse model will
be useful in determining the effectiveness of anti-human HBV EGS compounds.
1.4 The parties wish to collaborate in a program of research described in
Schedule 1 hereto (the "Research") under terms and conditions of this
Agreement.
ARTICLE 2
DESCRIPTION OF THE RESEARCH
2.1 The Research to be conducted hereunder is fully described in Schedule and
relates to the use of the Woodchuck Hepatitis mouse model to test the
effectiveness of EGSs developed, licensed or owned by Innovir against WHV
replication.
ARTICLE 3
UNIVERSITY STAFF AND FACILITIES
3.1 The Research shall be carried out at University within the Marion Bessin
Liver Research Center under the direction of Charles E. Rogler, Ph.D.
("Principal Investigator"), who shall assign one or more post-doctoral
fellows, students or employees ("Researcher(s)") to the Research and will
notify Innovir of the selection. If the Principal Investigator or
Researcher(s) are unable to continue the Research, Innovir in its sole
discretion shall (i) consult with University to select a mutually
acceptable
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replacement or replacements from the University staff to direct and conduct
the Research, and/or (ii) terminate the Research upon twenty (20) days
written notice to University. Upon such termination, University shall
return to Innovir any of the unexpended funds budgeted for mice and
supplies and/or any uncommitted salary amounts.
3.2 University shall provide Principal Investigator and Researcher(s) the
laboratory, and service facilities, guidance and scientific equipment as
required to carry out the Research; provided, however, University shall not
be obligated to incur any costs in excess of the amount specified in
Schedule 2 to perform the Research.
ARTICLE 4
REPORTS AND TANGIBLE TECHNICAL INFORMATION
4.1 University and Principal Investigator shall keep Innovir informed of the
progress of the research he conducts hereunder on a regular basis as
mutually agreed to by both parties. Principal Investigator shall provide
Innovir with bimonthly reports of progress and a complete written report at
the end of the Term.
4.2 Innovir shall have the right to use the reports submitted by Principal
Investigator as it sees fit, however, Innovir may not make any reference to
Albert Einstein College of Medicine of Yeshiva University or any affiliate
institution without first obtaining written consent from University;
provided however, Innovir may make such reference if Innovir's counsel
deems it necessary or appropriate to comply with statute, court order or
government regulation, for filing with a regulatory agency or for filing a
patent application.
4.3 University and Principal Investigator shall in a timely fashion permit
Innovir full access to, and at the request of Innovir, shall deliver to
Innovir copies of all laboratory notebooks and other technical and research
data prepared during the work under this Agreement. Innovir agrees to
reimburse University for its reasonable cost in providing such copies.
ARTICLE 5
NO RIGHTS IN INNOVIR TECHNOLOGY
5.1 Except as expressly provided in this Agreement, no rights are provided to
University (including the Principal Investigator and Researchers) or
Innovir under any patents, patent applications, trade secrets or other
proprietary rights of the other party. No rights are provided to use the
materials or modifications or any related patents of Innovir for profit
making or commercial purposes, such as sale of the materials or
modifications used in manufacturing, provision of a service to a third
party in exchange for consideration, or use in research or consulting for a
for-profit or non-profit entity under which the entity obtains rights to
research results.
ARTICLE 6
PUBLICATION
6.1 University agrees to provide Innovir with an advance copy of any proposed
publication
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on the Research. Innovir agrees to review proposed publications and to
inform University of any information Innovir considers confidential
information within thirty (30) days. University shall not publish such
confidential information. If a publication does result from Research,
authorship shall be jointly decided by Innovir and University based on
accepted scientific practice.
6.2 Innovir shall have the right to use the data generated in the Research in
filing patent applications, in filing for regulatory approvals and for
other commercial purposes.
ARTICLE 7
INVENTIONS
7.1 Intellectual Property shall only mean discoveries, inventions, improvements
and/or commercially useful products or processes, whether patentable or
not, which were developed or made under this Agreement. University and
Innovir will promptly notify the other party of any Intellectual Property
conceived and/or made during the term of this Agreement under the Research.
7.2 Results of the Research shall be owned as follows:
(a) If all inventors are employees of Innovir, by Innovir, and such
Intellectual Property will not be subject to this Agreement.
(b) If all inventors are faculty, students or employees of
University, by University.
(c) If Intellectual Property is invented jointly by at least one
person employed by Innovir and at least one person with an
obligation to assign to the University, jointly by both Innovir
and University.
7.3 If Intellectual Property is solely owned by University, Section 7.2(b),
University shall notify and consult with Innovir before filing and
prosecuting U.S. or foreign patent applications. If Innovir requests that a
patent application or other intellectual property protection be filed and
University concurs, Innovir shall bear all costs incurred in connection
with such preparation, filing, prosecution and maintenance of U.S. and
foreign application(s) directed to said Intellectual Property using counsel
selected by University and reasonably acceptable to Innovir. University and
Innovir shall cooperate to assure that such application(s), will cover, to
the best of their combined knowledge, all items of commercial interest and
importance. While University shall be responsible for making all decisions
regarding scope and content of application(s) to be filed and prosecution
thereof, Innovir shall be given an opportunity to review and provide input
thereto and University will not unreasonably reject Innovir's input. If
Innovir licenses the Intellectual Property, University shall keep Innovir
advised as to all developments with respect to such application(s) and
shall promptly supply to Innovir copies of all papers received and filed in
connection with the prosecution thereof within a reasonable time for
Innovir to comment thereon. Further, University shall promptly notify
Innovir in writing of any matter which has been patented under this
Agreement.
7.4 If Intellectual Property is jointly owned by University and Innovir,
Section 7.2(c) and Innovir requests that a patent application or other
intellectual property protection be filed, Innovir shall promptly take
action to have prepared, filed, and prosecuted such U.S. and foreign
application. Innovir shall pay all costs incurred in connection with such
preparation, filing, prosecution and maintenance of U.S. and foreign
application(s)
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directed to said Intellectual Property. Innovir shall cooperate with
University to assure that such application(s) will cover, to the best of
their combined knowledge, all items of commercial interest and importance.
While Innovir shall be responsible for making decisions regarding scope and
content of application(s) to be filed and prosecution thereof, University
shall be given an opportunity to review and provide input thereto. Innovir
shall keep University advised as to all developments with respect to such
application(s) and shall promptly supply to University copies of all papers
received and filed in connection with the prosecution thereof within a
reasonable time for University to comment thereon. Further, Innovir shall
promptly notify University in writing of any matter which has been patented
under this Section 7.4.
7.5 If Innovir elects to discontinue the financial support of the prosecution
or maintenance of the protection of Intellectual Property under Sections
7.3 and/or 7.4, 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 its sole expense.
7.6 If Innovir wants an exclusive license to any patent application or patent
owned, jointly by Innovir and University under this Agreement, it shall
have an option to obtain an exclusive, worldwide license to the
Intellectual Property or any interest therein. If Innovir is paying the
costs of patent protection for such Intellectual Property, this option
shall expire six (6) months from the date of issuance of the patent, and
the Parties shall negotiate in good faith to reach the terms of the
exclusive, worldwide license; provided, however, if University and Innovir
do not reach agreement, University, for two (2) years, will not offer the
Intellectual Property to a third party on terms less favorable in material
respects than the terms offered Innovir under this Section 7.6. If Innovir
is not paying the costs of patent protection, this option shall expire on
the date Innovir stopped paying the patent prosecution costs. Any license
shall include a reasonable royalty based on the respective party's
contributions and relevant industry standards and, subject to University's
policies, shall include such other terms as are typical in licenses of
similar technology from nonprofit organizations to for-profit
organizations.
7.7 If not restricted by agreements with third parties, University shall
negotiate a limited right to use any technologies it owns that were
developed by the Principal Investigator to the extent necessary for Innovir
to make, use or sell a product incorporating Intellectual Property licensed
under Section 7.6. In addition, and if not restricted by agreements with
third parties, University shall discuss with Innovir the possibility of
licensing a limited right to use any other technologies University owns to
the extent necessary for Innovir to make, use or sell a product
incorporating Intellectual Property licensed under Section 7.6.
ARTICLE 8
REPRESENTATION
8.1 This Agreement shall not be construed to limit the freedom of individuals
participating in the Research to engage in any other research; provided,
however, the Principal Investigator and Researcher(s) agree that they will
not individually or together seek sponsored research funds from a
for-profit third party for the Research defined herein. The Principal
Investigator and Researcher(s) will represent to the University that they
have not entered into any research agreement with a for-profit third party
that would
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prevent them from performing their obligations under the terms of this
Agreement.
ARTICLE 9
COMPENSATION
9.1 In support of the Research to be conducted at University, Innovir shall pay
University according to the amounts specified and under the terms shown in
Schedule 2.
9.2 If the parties agree in writing that the results of the testing described
in Schedule 1 show that the Woodchuck Hepatitis Mouse model is successful
in testing for antihuman HBV EGS compounds, then Innovir shall pay
University the bonus specified in Schedule 2 within thirty (30) days of
such written agreement of successful testing.
ARTICLE 10
TERM AND TERMINATION
10.1 This Agreement shall commence the on Effective Date and shall continue for
a six (6) month period (the Term).
10.2 Innovir may terminate this Agreement if University, the Principal
Investigator, or the Researcher(s) is in breach of this Agreement and
(where the breach is remediable) fails to remedy the breach within thirty
(30) days of being requested to do so by Innovir, Innovir shall be entitled
to terminate this Agreement at any time by notice in writing to University.
Termination shall be without prejudice to Innovir's other rights in respect
of the breach of the Agreement.
10.3 If Innovir is in breach of this Agreement and (where the breach is
remediable) fails to remedy the breach within thirty (30) days of being
requested to do so by the University, the University shall be entitled to
terminate this Agreement at any time by notice in writing to Innovir.
Termination shall be without prejudice to the University's other rights in
respect to the breach of the Agreement.
10.4 Articles 5, 6, 7, 11 and 12 and Sections 4.2 and 4.3 shall survive the
termination of this Agreement; provided, however Articles 6 and 7 and
Section 4.2 shall not survive a termination of this Agreement pursuant to
Section 10.3.
ARTICLE 11
RETURN OF DOCUMENTS AND MATERIALS
11.1 Upon termination of this Agreement, either party may request the return of
all papers, records and other documents including any materials such as
reagents, that it supplied to the other party, which are then in the
possession of the other party, except:
(a) each party may retain one copy for archival purposes;
(b) University shall not require Innovir to return any documents or
materials which Innovir requires to make an evaluation of its
interest in exercising its license option pursuant to Section 7.6
hereof, until after the conclusion of said license option period;
(c) University shall not require Innovir to return the written
reports and
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tangible technical information made by University pursuant to
Article 4; and
(d) Innovir may retain materials required for government approval.
ARTICLE 12
DISCLAIMER OF WARRANTIES, INDEMNIFICATION
12.1 UNIVERSITY MAKES NO WARRANTIES, EXPRESS OR IMPLIED, AS TO ANY MATTER
WHATSOEVER, INCLUDING, WITHOUT LIMITATION, WARRANTIES WITH RESPECT TO THE
CONDUCT, COMPLETION, SUCCESS OR PARTICULAR RESULTS OF THE SPONSORED
RESEARCH, OR THE CONDITION, OWNERSHIP, MERCHANTABILITY, OR FITNESS FOR A
PARTICULAR PURPOSE OF THE SPONSORED RESEARCH OR ANY RESULTS OR INTELLECTUAL
PROPERTY. UNIVERSITY SHALL NOT BE LIABLE FOR ANY DIRECT, INDIRECT,
CONSEQUENTIAL, PUNITIVE OR OTHER DAMAGES SUFFERED BY SPONSOR OR ANY OTHER
PERSON RESULTING FROM THE SPONSORED RESEARCH OR THE USE OF ANY INTELLECTUAL
PROPERTY.
12.2 Innovir shall defend, indemnify and hold harmless University, the Principal
Investigator and any of University's faculty, students, employees,
trustees, officers, affiliates and agents (hereinafter referred to
collectively as the "Indemnified Persons") from and against any and all
liability, claims, lawsuits, losses, damages, costs or expenses (including
attorneys' fees), which the Indemnified Persons may hereafter incur, or be
required to pay as a result of Innovir's use of the results of Sponsored
Research or any Intellectual Property or as a result of any breach of this
Agreement or any act or omission of Innovir, its employees, affiliates,
contractors, licensees or agents. University shall notify Innovir upon
learning of the institution or threatened institution of any such
liability, claims, lawsuits, losses, damages, costs and expenses and
University shall cooperate with Innovir in every proper way in the defense
or settlement thereof at Innovir's request and expense.
ARTICLE 13
GENERAL PROVISIONS
13.1 Both parties shall, at all times during the performance of this Agreement,
remain as independent contractors and the Agreement shall not make the
parties partners, joint venturers, or agents of one another. No party to
this Agreement shall have the power to bind or obligate the other party.
13.2 None of the materials supplied under this Agreement by either party to the
other, shall be used in human subjects without obtaining appropriate
government approvals.
13.3 Neither party assumes responsibility or liability for the nature, conduct,
or results of any research, testing or other work performed by the other
party.
13.4 This Agreement may not be assigned by either party without the prior
written consent of the other party.
13.5 Any notice, report or communication to be given under this Agreement may be
delivered personally, sent by registered or certified mail, return receipt
requested, or transmitted
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by facsimile copy or electronic mail to the parties at the addresses given
below or such other addresses may be notified from time to time. Any
notice, report or communication so sent shall not be deemed to have been
given until it has been received by the party to whom it has been
addressed.
Albert Einstein College of Medicine of Yeshiva University
Office of Industrial Liaison
1300 Morris Park Avenue
Bronx, New York 10461
Attention: Dr. Sidney Goldfischer
Telephone 718-430-3357
Facsimile 718-430-8822
with a copy to:
Amster Rothstein & Ebenstein
90 Park Avenue
New York, New York 10016
Attention: Kenneth George
Telephone 212-647-5995
Facsimile 212-286-0854
Innovir Laboratories, Inc.
510 East 73rd Street
New York, NY 10021
Attention: Allan R. Goldberg, Ph.D.
Telephone 212-249-4703
Facsimile 212-249-4513
with a copy to:
Fulbright & Jaworski L.L.P.
1301 McKinney, Suite 5100
Houston, Texas 77010-3095
Attention: Thomas D. Paul
Telephone 713-651-5325
Facsimile 713-651-5105
13.6 The terms and conditions herein contained constitute the entire Agreement
between the parties and supersede all previous communications, whether oral
or written, between the parties hereto with respect to the subject matters
hereof, and no previous agreement or understanding varying or extending the
same shall be binding upon either party hereto.
13.7 No amendment or modification of this Agreement shall be effective unless it
is in writing and signed by duly authorized representatives of all parties.
13.8 The parties covenant and agree that, if either party fails or neglects for
any reason to take advantage of any of the terms provided for the
termination of this Agreement, or
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if either party, having the right to declare this Agreement terminated
shall fail to do so, any such failure or neglect by either party shall not
be a waiver or be deemed or be construed to be a waiver of any cause for
the termination of this Agreement subsequently arising or as a waiver of
any of the terms, covenants or conditions of this Agreement, or the
performance thereof. None of the terms, covenants or conditions of this
Agreement may be waived by either party except by its written consent.
13.9 All parties hereby especially agree and contract that neither party intends
to violate any public policy, statutory or common law, rule or regulation,
treaty or decision of any government agency or executive body thereof of
any country or community or association of countries; if any word,
sentence, paragraph or clause or combination thereof of this Agreement is
found, by a court or executive body with judicial powers having
jurisdiction over this Agreement or any of its parties hereto, in a final
unappealed order to be in violation of any such provision in any country or
community or association of countries, such words, sentences, paragraphs or
clauses or combination shall be inoperative in such country or community or
association of countries and the remainder of this Agreement shall remain
binding upon the parties hereto.
13.10 Neither party shall be liable for delays caused by bona fide labor
disputes, war, civil or military disturbances, acts or lack of action of
governments or governmental authorities, accidents, fires, explosions,
epidemics, forces of nature, acts of God or other causes reasonably beyond
its control, but each party shall use all reasonable efforts to avoid such
delays and to minimize the extent of any delays that do occur.
13.11 This Agreement shall be binding upon and inure to the benefit of and be
enforceable by the parties hereto and their respective successors and
permitted assigns.
13.12 This Agreement shall be deemed to have been made under, and shall be
construed and interpreted in accordance with the laws of the State of New
York, U.S.A.
IN WITNESS WHEREOF, University and Innovir have caused this Agreement to be
executed in duplicate by their respective duly authorized officers.
INNOVIR LABORATORIES, INC. ALBERT EINSTEIN COLLEGE OF MEDICINE
OF YESHIVA UNIVERSITY
By: ALLAN R. GOLDBERG By: CHARLES E. ROGLER
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Allan R. Goldberg, Ph.D
Chairman and President
Date: Date:
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