EXHIBIT 10.8
RESEARCH AGREEMENT
This Agreement is made by and between:
Antigenics, L.L.C., a limited liability company organized and existing under the
laws of the State of Delaware, having an office at 630 Fifth Avenue, Suite #
2170, New York, NY 10111, hereinafter referred to as Sponsor.
and
The University of Connecticut Health Center, an agency of the State of
Connecticut, having a business address at 263 Farmington Avenue, Farmington,
Connecticut, 06030, hereinafter referred to as UCHC.
and
Pramod Srivastava, Ph.D., Professor of Immunology, and Director, Center for
Immunotherapy of Cancer and Infectious Diseases, University of Connecticut
Health Center, having a business address at MC-1601, University of Connecticut
Health Center, 263 Farmington Avenue, Farmington, Connecticut, 06030,
hereinafter referred to as Principal Investigator.
The purpose of this Agreement is to promote the increase of useful
knowledge relating to a project entitled, "Use of heat shock proteins for the
development of therapeutic and prophylactic vaccines for cancer and infectious
diseases."
IT IS AGREED:
1.0 The UCHC agrees to undertake certain research (hereinafter referred to
as the Project) specifically described in the attached proposal
(Appendix A) which by reference is incorporated into this Agreement,
and such other work as may be mutually agreed upon in a duly executed
amendment to this Agreement.
2.0 The Project and all work assignments shall be carried out under the
direction of the Principal Investigator, while employed by UCHC, and by
other research staff employed by UCHC (e.g. technician, graduate
student, postdoctoral follow, staff assistant, hereinafter collectively
referred to as Personnel), as assigned by Principal Investigator.
3.0 The Project covered by this Agreement shall commence on February 12,
1998 and shall extend for a period of 58.5 months, expiring on December
31, 2002.
4.0 UCHC agrees to furnish such available facilities as it shall determine
necessary for the work to be done on this Project. During the term of
this Agreement, UCHC and the Principal Investigator will permit, upon
reasonable notice and at reasonable times, representatives of Sponsor
to observe research facilities utilized for and research performed by
Principal Investigator pursuant to this Agreement.
5.0 Sponsor agrees to pay UCHC the sum of $5,000,000 for this Project in
accordance with the agreed budget (Appendix B), plus any agreed to
excess costs as evidenced by a writing signed by both parties; payments
to be made as follows:
$250,000 Payable upon execution of Agreement
$250,000 Payable by no later than May 15, 1998
$250,000 Payable by no later than August 15, 1998
$250,000 Payable by no later than November 15, 1998
Payments for all subsequent years shall be due by no later than
February 15, May 15, August 15, and November 15 of each year.
Sponsor further agrees to pay preaward costs incurred by Dr. Srivastava
upon submission of an invoice in an amount not to exceed $475,000.
Payment of said preaward costs shall be made within ten day of
Sponsor's receipt of the invoice.
5.1 Payments are to be made to:
University of Connecticut Health Center
Grant and Contract Administration
ASB3, MC 5335
263 Farmington Ave.
Farmington, CT 06030
Attn.: Ken Landorf, Manager
IRS No.: 52-1725543
6.0 The Principal Investigator shall furnish Sponsor with written reports
on the progress of the work on dates as mutually agreed upon and a
final report on the entire Project within ninety (90) days after
termination of this Agreement.
7.0 The data and information accruing from the Project may be published in
writing or orally presented by the Principal Investigator, but Sponsor
shall be provided with a copy of any proposed written manuscript at
least thirty (30) day prior to submission or the text of any oral
disclosure at least fourteen (14) days prior to its presentation and
shall have thirty (30) days in the case of written manuscripts and
fourteen (14) days in the case of oral presentations for review of
patentable items or items deemed confidential and proprietary as
defined in Article 8.0.
7.1 If Sponsor believes that any planned publication contains a
patentable development, publication, or presentation shall be
delayed for a reasonable time to permit the filing of a patent
application(s). If the patent application is prepared under
direction of UCHC, counsel approved by the Sponsor from the
list of firms
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having Professional Employment Agreements with the Attorney
General of the State of Connecticut for the purposes of patent
preparation, prosecution and maintenance of University of
Connecticut inventions conceived or reduced to practice in the
conduct of the Project shall be used. Sponsor shall have the
right to elect to use its own counsel who will then conduct
such patent preparation, prosecution, and maintenance. If
Sponsor elects to use its own counsel, said counsel shall be
subject to UCHC approval, which approval shall not be
unreasonably withheld. When such election has been approved by
UCHC, Sponsor, and Sponsor's counsel, or their agents shall
provide UCHC and its agents on a timely basis with copies of
all correspondence and patent application submissions
(including but not limited to parent, continuation,
continuation-in-part or reissue applications) by and between
Sponsor and Sponsor's counsel and/or agents and the U.S.
Patent and Trademark Office. Notwithstanding the preceding
service requirement, Sponsor and Sponsor's counsel and/or
agents shall make diligent efforts to provide all such
correspondence and applications to UCHC or UCHC's agents prior
to their submission and shall to the extent practicable
consult with UCHC and its agents regarding the form of such
submissions. UCHC acknowledges and approves Sponsor's election
to use as patent counsel the firm of Pennie and Edmonds, New
York, NY.
7.2 Sponsor shall reimburse UCHC for all costs associated with
UCHC's filing, prosecution and maintenance of patents arising
form this work pursuant to Sponsor's request that is carried
out by UCHC counsel. If Sponsor has elected to use it's own
counsel and UCHC has approved such election, Sponsor shall
directly pay all costs associated with the preparation,
submission and maintenance of the resulting patent carried out
by its counsel.
7.3 UCHC and the Principal Investigator shall not disclose to
other or publish any information disclosed to the Principal
Investigator by Sponsor which is confidential within the
meaning of Article 8.0 without the prior written approval of
Sponsor.
8.0 UCHC and Principal Investigator agree to hold in confidence all
information which Sponsor may wish to disclose to Principal
Investigator in writing and marked "CONFIDENTIAL" under this Agreement
except:
a. technical information which at the time of disclosure
publicly known or available;
b. technical information which after disclosure is
published or otherwise becomes publicly known or
available through no fault of Principal Investigator;
c. technical information which was in the possession of
the Principal Investigator at the time of disclosure
and was not acquired from Sponsor under an obligation
of confidence.
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9.0 Sponsor shall retain patent rights to all of its technologies currently
protected by existing patents or pending patent applications, and for
technologies developed by Sponsor outside the terms of this Agreement.
9.1 Pursuant to the work performed under this Agreement UCHC shall
retain patent rights to all new technologies developed as a
result of intellectual contributions of UCHC's faculty or
staff or involving the use of UCHC facilities or resources.
9.2 UCHC shall provide Sponsor with a copy of each written
invention disclosure of intellectual property conceived or
developed in the conduct of the Project within forty five (45)
days of its submittal to the UCHC, in sufficient detail so as
to enable one skilled in the art to understand the subject
matter of the invention. The UCHC shall also notify Sponsor
immediately of any potential statutory bar, including but not
limited to, the dates of any publication, presentation or
other disclosure of the intellectual property accruing to the
project.
9.3 For new inventions, other than incremental improvements which
are dominated by existing patents or pending patent
applications for which Sponsor holds a license, UCHC agrees to
grant and hereby grants to Sponsor an option to secure a
royalty-bearing exclusive license, including the right to
grant sublicenses, under reasonable terms with the right to
make, use and sell, have made, have used, import and offer for
sale the claimed invention of any patent or patent application
which is based on any invention conceived or reduced to
practice in the conduct of the Project, subject to Article 9.1
above. The license (and all sublicenses) will include a
royalty rate in an amount to be negotiated in good faith by
both UCHC and Sponsor at the time the Sponsor decides to
exercise its option and shall remain in effect until the
expiration of the last to expire patents licensed to the
Sponsor. Such option shall be in effect and exercisable for
each invention within one hundred and eighty (180) days from
the date of filing a U.S. patent application on each such
invention. Upon exercise of such option, the terms and
conditions of the license will be negotiated in good faith by
the parties. In the absence of agreement within six (6) months
from the date of exercise of such option, which time shall be
extended upon mutual written agreement, the dispute shall be
submitted to a mutually acceptable third-party mediator, which
period of mediation shall not exceed 90 days or such longer
period as may be mutually acceptable to the parties.
9.4 For inventions which are incremental improvements dominated by
existing patents or pending patent applications for which
Sponsor holds a license, UCHC agrees to grant and hereby
grants to Sponsor an option to secure a royalty-bearing
exclusive license with the right to make, use and sell, have
made, have used, import and offer for sale the claimed
invention conceived or reduced to practice in
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the conduct of the Project. Such option shall be in effect and
exercisable within one hundred and eighty (180) days from the
date of filing a U.S. Patent Application on each such
invention. In the case of Licensed Products that incorporate
the UCHC Technology but are dominated by patent applications
licensed by Sponsor from one other third party, Sponsor shall
pay UCHC a royalty calculated at the rate of [ ]* of
Net Sales of Licensed Product. In the case of Licensed
Products that incorporate the UCHC technology but are
dominated by patent applications licensed by Sponsor from two
or more third parties, Sponsor shall pay UCHC a royalty
calculated at the rate of [ ]* of Net Sales of Licensed
Product. Upon exercise of such option, the remaining terms and
conditions of the license will be negotiated in good faith by
the parties. In the absence of agreement within six (6) months
from the date of exercise of such option, which time period
shall be extended upon mutual written agreement, the dispute
shall be submitted to a mutually acceptable third-party
mediator, which period of mediation shall not exceed 90 days.
9.5 For the purposes of this Article 9 the terms, Licensed Product
and Net Sales shall be defined as follows:
o Affiliates are defined as any entity which controls, is
controlled by or is under common control with Licensee. An
entity shall be regarded as in control of another entity if it
owns or controls more than fifty percent (50%) of the voting
power of such entity.
o Licensed Product(s) means any method, procedure, process,
product, or component part thereof conceived or developed by
UCHC in the conduct of the Project whose manufacture, sale,
use, importation, or offer for sale is covered by the claim of
a pending patent application or which could be construed to
infringe the licensed patent in the absence of the license.
o Net Sales means total billings for Licensed Product(s),
determined in accordance with generally accepted accounting
principles, sold by Licensee, its Affiliates and sublicensees,
less: (a) discounts allowed in amounts customary in the trade;
(b) sales, tariff duties and/or use taxes directly imposed and
with reference to particular sales; (c) outbound
transportation prepaid or allowed; and (d) amounts allowed or
credited on returns. Licensed Products shall be considered
"sold" when billed out or invoiced. Sales of Licensed
Product(s) between or among Licensee, its Affiliates and
sublicensees shall not be subject to any royalty hereunder,
and in such cases royalties shall be calculated upon
Licensee's or its Affiliates' or sublicensees' Net Sales to an
independent third party. Licensee shall be responsible for
payment of any royalty accrued on Net Sales of Licensed
Products to such independent third party through Licensee's
Affiliates or
______________________
* This portion of the Exhibit has been omitted pursuant to a Request for
Confidential Treatment under Rule 406 of the Securities Act of 1933, as amended.
The complete Exhibit, including the portions for which confidential treatment
has been requested, has been filed separately with the Securities Exchange
Commission.
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sublicensees. Royalties shall accrue hereunder only once in
respect of the same unit of the Licensed Product.
9.6 As to all licenses which may be granted by UCHC to Sponsor
under the terms of this Agreement, UCHC retains a perpetual
royalty-free non-exclusive right to use the licensed property,
product, procedure or process and to use the licensed UCHC
technology for basic and clinical research, and the
educational purposes of the UCHC, and not for any commercial
purpose.
10.0 UCHC and Sponsor agree that the Principal Investigator and Personnel
are acting as employees of UCHC and not as agents or employees of
Sponsor.
11.0 No advertising or publicity matter having or containing any reference
to either party shall be used by the other party without advanced
written authorization. Notwithstanding the afore-stipulated
restrictions, Sponsor may use publications containing the name of UCHC
and other documentation (abstracts, poster presentations, etc.) which
are generally accessible to the public without the further review and
consent of UCHC. All other advertising and publicity matter shall be
submitted to the Office of the Vice Chancellor for Research for review
prior to its use or public release. Said documentation shall be
reviewed expeditiously, and in no event shall such review be
unreasonably delayed. In addition, UCHC may disclose the sponsorship,
title, duration and total budget of this project in UCHC's "Annual
Report of Research and Scholarly Activity," and in such other reports
as may be required by the UCHC's Administration, Board of Trustees or
by the Board of Governors of Higher Education.
12.0 UCHC agrees that there shall be no change in the Principal Investigator
without prior written approval of Sponsor.
13.0 It is understood that the Project may be extended for additional
periods of time under terms mutually agreed upon in writing in a duly
executed amendment to this Agreement.
13.1 Renewal proposals shall be submitted by UCHC to Sponsor at
least ninety (90) days prior to the expiration of this
Agreement.
13.2 Sponsor agrees to give UCHC notice of its intention to
continue the Project not less than sixty (60) days prior to
the expiration date specified in Article 3.0 hereof or in a
later amendment to this Agreement.
14.0 If UCHC is unable to fulfill the terms of this Agreement, then UCHC may
terminate the Agreement by giving sixty (60) days notice to Sponsor. If
Pramod Srivastava is unable to continue as Principal Investigator, or
terminates his employment by UCHC, Sponsor shall have the right to
terminate this Agreement by giving thirty (30) days notice to UCHC.
14.1 Upon termination of this Agreement, unexpended funds
appropriate by Sponsor to UCHC shall be returned to Sponsor
except for outstanding, unpaid commitments to a third
party(ies) or to Personnel engaged in the conduct of the
Project which
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cannot be canceled or otherwise terminated. Upon issuance of
notice, UCHC shall not enter into any material new commitments
or obligations related to the Project without consent of the
Sponsor.
14.2 Termination of this Agreement shall not affect the rights and
obligations of the parties in inventions conceived or made in
the conduct of the Project prior to termination.
15.0 This Agreement shall be binding upon and inure to the benefit of the
respective parties and their successors.
16.0 This Agreement shall be governed by and construed according to the laws
of the State of Connecticut; including, but not limited to the
following:
a. Non-discrimination Section 4.1 14a of the General
Statutes of Connecticut, as amended. UCHC in its
employment practices under this grant Agreement will
not discriminate or permit discrimination against any
person or group of persons on the grounds of race,
color, religious creed, age, marital status, national
origin, sex, mental retardation, or physical
disability (including but not limited to blindness)
unless it is shown that such disability prevents
performance of the work involved, in any manner
prohibited by the laws of the United States or of the
State of Connecticut.
17.0 UCHC is authorized to enter into this Agreement under Section 10a-104,
10a-110 to 10a-l10g of the General Statutes of Connecticut as amended
to date.
18.0 Sponsor agrees to indemnify, hold harmless, and pay all legal and other
costs or losses incurred by Principal Investigator and Personnel, as
investigator(s) in this study, and UCHC as the host institution,
against any claim or legal cause of action brought against Principal
Investigator, Personnel and UCHC arising out of the use by Sponsor, or
by any party acting on behalf of or under authorization from Sponsor,
sale or other disposition by Sponsor, or by any party acting on behalf
of or under authorization from Sponsor of products made as a result of
work conducted under this Agreement.
UCHC agrees to notify Sponsor as soon as it becomes aware of a claim or
action and to cooperate with and to authorize Sponsor to carry out sole
management and defense and settlement of such claim or defend against
any actions brought or filed against its trustees, officers, agents and
employees with respect to the subject of indemnity contained herein,
whether such claims or actions are rightfully brought or filed.
Neither UCHC, nor its trustees, officers, agents or employees shall
compromise or settle any claim or suit related to the Project of this
Agreement without the prior written approval of Sponsor.
This Agreement will govern claims brought subsequent to the termination
date of this Agreement. This provision shall survive the completion or
termination of this project since it cannot be presently ascertained
when the last claim will be filed.
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19.0 Any notice required to be given hereunder shall be considered properly
given if sent by certified letter, first class mail, postage prepaid,
to the respective address of each party indicated at the beginning of
this Agreement, or to such address as the addressee shall have last
furnished in writing to the addressor in like manner.
20.0 Sections 7, 8, 9, 11, 15, 16, 18 and 19 shall survive termination or
expiration of this Agreement.
21.0 It is understood that UCHC and the Principal Investigator and Personnel
may be or become involved in other activities and projects which entail
commitments to other sponsors; however, UCHC represents and warrants
that the Principal Investigator and Personnel are not presently
performing, and will not perform during the term of this Agreement,
research relating to the Project (see Appendix A) that is sponsored by
a commercial, for-profit, third party to whom UCHC is obligated to
grant rights in any invention or discovery resulting therefrom,
excluding Government rights pursuant to 35 U.S.C. ss.ss. 200 et seq.
resulting from federal grant funding or a similar reservation of rights
pursuant to grant funding from the State of Connecticut or other
non-profit entities.
22.0 The Project will not be conducted in collaboration with a researcher
who is not associated with UCHC, unless Sponsor has given prior written
approval of such collaboration.
23.0 The parties hereto have caused this Agreement to be executed by duly
authorized representatives effective as of the later date indicated
below.
ANTIGENICS, L.L.C. - "SPONSOR"
/s/ Garo Armen 2/18/98
- ------------------------------ ------------------------------
(Signature) (Date)
Name: Garo Armen
------------------------
Title: CEO
-----------------------
UNIVERSITY OF CONNECTICUT HEALTH CENTER - "UCHC"
/s/ Leonard Paplauskas 2/17/98
- ------------------------------ ------------------------------
(Signature) (Date)
Name: Leonard P. Paplauskas
Title: Assistant Vice Chancellor for Research
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/s/ Pramod Srivastava 2/16/98
- ------------------------------ ------------------------------
(Signature) (Date)
Name: Pramod Srivastava, Ph.D.
Title: Professor, Center for Immunotherapy of Cancer and Infectious Disease
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APPENDIX A
SCOPE OF WORK
Scope of work for ANTIGENICS grant
[
]*
[
]*
______________________
* This portion of the Exhibit has been omitted pursuant to a Request for
Confidential Treatment under Rule 406 of the Securities Act of 1933, as amended.
The complete Exhibit, including the portions for which confidential treatment
has been requested, has been filed separately with the Securities Exchange
Commission.
[
]*
______________________
* This portion of the Exhibit has been omitted pursuant to a Request for
Confidential Treatment under Rule 406 of the Securities Act of 1933, as amended.
The complete Exhibit, including the portions for which confidential treatment
has been requested, has been filed separately with the Securities Exchange
Commission.
[
]*
______________________
* This portion of the Exhibit has been omitted pursuant to a Request for
Confidential Treatment under Rule 406 of the Securities Act of 1933, as amended.
The complete Exhibit, including the portions for which confidential treatment
has been requested, has been filed separately with the Securities Exchange
Commission.
APPENDIX B
BUDGET
For Each of 5 Years
2/12/98 - 12/31/02
SUB CODE DESCRIPTION BUDGET
1000 Salaries $ 315,000
2000 Purchased Services $ 125,000
3000 Supplies & Minor Equipment $ 188,151
4000 Sundry (Fringe Benefits) $ 65,500
9000 Capital Equipment $ 100,000
Indirect Cost $ 206,349
TOTAL $1,000,000