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Exhibit 10.16
CONFIDENTIAL MATERIAL OMITTED AND
FILED SEPARATELY WITH THE SECURITIES
AND EXCHANGE COMMISSION.
ASTERISKS DENOTE SUCH OMISSIONS.
CONFIDENTIALITY AND MATERIAL TRANSFER AGREEMENT
This Agreement, made effective as of the latter of the signature dates, by and
between Athersys, Inc. of 3201 Carnegie Avenue, Cleveland, Ohio 44115-2634
(hereinafter called "Athersys" or the "Company"), and The St. Luke's Roosevelt
Institute for Health Sciences (hereinafter called "Recipient").
WITNESSETH
Whereas, Athersys is in possession of reagents, cell lines and/or other
materials related to a technology known as RAGE, (Random Activation of Gene
Expression) (hereinafter called "Material") and has the right to supply said
Material to persons and companies for the use and evaluation thereof; and
Whereas, Recipient desires to receive Material in connection with the
performance of the research project as described in Exhibit A ("Research
Project"),
Now, Therefore, in order to protect their rights with respect to any
such Material, the parties hereto, intending to be legally bound, agree as
follows:
(1) The Material to be transferred to Recipient is comprised of the
following: Recipient shall use the Material only for the purposes
described in Exhibit A, and shall not transfer such materials to any
third party without the expressed written consent of the Company.
(2) Nothing in this Agreement is to be construed as a license to Recipient
to utilize the Materials except as provided in this Agreement, in any
way whatsoever or under any patent or patent application owned by
Athersys, unless a separate license agreement is executed. Any
modification to this Agreement, and further contract or license
agreement between Athersys and Recipient regarding Material, shall be
in writing.
(3) Recipient shall have the right to transfer Material only to employees
under the direct supervision of the Recipient, as designated in Exhibit
B ("Authorized Personnel"). The Recipient shall ensure that Authorized
Personnel to whom the material may be transferred under this paragraph
will have undertaken obligations substantially similar to those
undertaken hereunder.
(4) Recipient will take all reasonable steps to insure that the Material is
not distributed for other's use and to prevent its employees from
violating this Agreement.
(5) Title and rights to all Materials under this Agreement remain vested in
Athersys. Title to any subject matter of any discovery or invention,
whether patentable or not, generated or developed in conjunction with
the use of this Material ("Invention") shall be jointly owned. The
parties shall cooperate in the preparation and filing of patent
applications covering all Inventions. Athersys shall have the exclusive
right to negotiate with
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CONFIDENTIAL MATERIAL OMITTED AND
FILED SEPARATELY WITH THE SECURITIES
AND EXCHANGE COMMISSION.
ASTERISKS DENOTE SUCH OMISSIONS.
Recipient for an exclusive royalty-bearing license covering Recipient's
ownership interest in any Invention ("License"). The terms of any
License negotiated between the parties shall be based on terms for
terms for licenses for inventions comparable to the Invention in size
of potential market, necessary development efforts to be borne by
Athersys, and other usual and customary licensing parameters. If, after
negotiating in good faith, the parties shall be unable to agree to
terms of a License, then Recipient shall be free to negotiate a license
with any third party, provided, that any such license shall include a
[***](1) royalty on net sales of products, payable to Athersys.
(6) Upon completion of the Research Project, and in the absence of further
agreement of the parties, Recipient shall cease all use and make no
further use of the Material, and the Material and any materials related
thereto shall be returned to Athersys upon written request.
(7) Recipient agrees that the transfer of Material to any third party
without the explicit written consent of Athersys, may cause irreparable
harm and that any breach of this agreement by Recipient may enable
Athersys to injunctive relief, in addition to any other legal remedies
available to it, in any court of competent jurisdiction.
(8) Recipient will not administer Material to humans. If animals are to be
used in any screening or studies of the Material by Recipient, in vitro
approaches will be considered and NIH guidelines will be followed, and
such animals will not be kept as domestic animals, nor their tissues or
products (e.g. milk, eggs) used for food.
(9) ATHERSYS MAKES NO REPRESENTATION OR WARRANTY WITH REGARD TO PURITY OR
BIOLOGICAL ACTIVITY OF MATERIAL. MATERIAL IS SUPPLIED "AS IS" WITH NO
WARRANTIES, EXPRESS OR IMPLIED, INCLUDING ANY WARRANTY OF
MERCHANTABILITY, TITLE, OR FITNESS FOR A PARTICULAR PURPOSE.
(10) No Material will be transferred by Recipient to any third party. Any
Material unused by Recipient will be properly disposed of pursuant to
all governmental regulations or returned to Athersys. Upon the request
of Athersys, Recipient shall return the Material and all reports,
written material, composition reagents and other material relating to
the Material to Athersys; provided that Recipient may retain one copy
of all written material for its legal files.
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(1) CONFIDENTIAL MATERIAL OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION. ASTERISKS DENOTE SUCH OMISSIONS.
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(11) Recipient shall be free to publish results of research conducted with
Materials; provided, that all data and any biological results obtained
from the screening, testing, or use of the Material by Recipient will
be reported to Athersys either: (1) 30 days prior to any public
disclosure to provide the parties with the ability to determine whether
an Invention is patentable or, (2) concurrently with the submission of
a research article by Recipient to a journal review committee,
whichever is earlier. All such information shall be maintained in
confidence by Athersys; provided that Athersys shall have the right to
disclose the results to consultants and other third parties who are
under obligations of confidentiality as restrictive as those contained
herein.
(12) Recipient will not utilize the Material for commercial purposes, nor
will the data or results of research performed with the Material be
disseminated or distributed to any third party without the express
written consent of Athersys.
(13) Recipient, to the extent permitted by governing law, will hold Athersys
harmless from any claims or liability to the extent that they result
from Recipient's negligent or intentionally tortious use of Material.
Recipient shall not be liable for any claim or liability arising from
Athersys' use of data or results provided by Recipient unless such
claim arises from the negligence or legal wrongdoing of Recipient.
(14) Athersys and Recipient warrant that: (1) they have the exclusive right
and authority to enter into this Agreement, (2) under such authority no
third party shall have the right to make a claim of ownership of any
Invention or proceeds from any royalty or other amount paid pursuant to
Section 5 herein, and (3) the terms of this Agreement are not
inconsistent with any other contractual obligation that Athersys or
Recipient may have, including any contractual term or obligation which
may exist between Recipient and any affiliated hospital and/or medical
school.
(15) Notwithstanding anything hereinabove, no party hereto shall be
obligated to enter into any further agreement regarding Material or use
thereof.
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(16) This Agreement is binding upon the parties hereto and their successors
in business, but is not otherwise assignable.
ACCEPTED AND AGREED TO:
Athersys, Inc.
By: /s/ Gil Van Bokkelen
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Name: Dr. Gil Van Bokkelen
Title: President & CEO
Date: April 5, 2000
Recipient:
By: /s/ William Rosner, MD
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Name: William Rosner, MD
Title: Director
Date: April 5, 2000
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