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Exhibit 10.4
RESEARCH AGREEMENT
THIS AGREEMENT effective this 1st day of April 1996.
BY AND BETWEEN
DEXTRAN PRODUCTS LTD.
415 Comstock Road,
Scarborough, Ontario
M1L 2H4
(hereinafter referred to as "Dextran")
AND
CANADIAN MICROBIOLOGY CONSORTIUM INC.
University of Calgary Health Sciences Centre
Room 282 - Heritage Medical Research Building
3330 Hospital Drive NW
Calgary, Alberta
T2N 4N1
(hereinafter referred to as "CMCI")
AND
BRITISH COLUMBIA'S CHILDREN'S HOSPITAL
a public hospital having its administrative offices at 4480 Oak
Street, in the City of Vancouver, in the Province of
British Columbia, V6H 3V4
(hereinafter referred to as "BCCH")
AND
THE UNIVERSITY OF BRITISH COLUMBIA
University-Industry Liaison Office
IRC 331 - 2194 Health Sciences Mall
Vancouver, BC
V6T 1Z3
(hereinafter referred to as "UBC")
WITNESSETH:
WHEREAS, CMCI is a non-profit society funded through the Canada's federal
Network of Centres of Excellence Program which provides administrative and
technical support for the Canadian Bacterial Diseases Network, a network of
researchers at various Canadian institutions including, inter alia, UBC;
WHEREAS, CMCI provided partial funding to support the macrophage antibacterial
research program of Dr David Speert, a UBC researcher, through which research
program Dr. Speert discovered the use of Dextran Sulphate as a potential
prevention and treatment of Pseudomonas aeruginosa infections in patients with
cystic fibrosis;
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WHEREAS, UBC filed a U.S. patent application serial no. 07/887,496 on May 26,
1992 relating to the regulation of macrophage antibacterial activity (UILO
Disclosure 92-034), and UBC and Novadex jointly filed a patent application in
the United States on December 30, 1993 relating to the use of Dextran Sulphate
to prevent Pseudomonas aeruginosa infections in vivo (UILO Disclosure 93-078)
(hereinafter referred to collectively as the "Technology");
WHEREAS, UBC licensed the Technology to Novadex under two separate agreements
both dated January 28, 1994 and both subsequently amended November 3, 1994;
WHEREAS, a condition of such licensing of the Technology to Novadex was that
Novadex enter into one or more written agreements with UBC whereby Novadex
and/or its sublicensees would fund continued research at UBC in the uses of
Dextran Sulphate;
WHEREAS, UBC and Dextran Products Limited, a sublicensee of Novadex, entered
into a research agreement Dextran Products Limited would fund research at UBC
but the parties thereto terminated said agreement effective March 31, 1996, and
UBC and Novadex wish to replace it, effective April 1, 1996 with this new
agreement to which UBC, Dextran, CMCI and BCCH shall be parties and pursuant to
which research will be conducted by Dr. Speert at BCCH with funding provided
jointly by Dextran and CMCI;
WHEREAS, the research program contemplated by this Agreement is of mutual
interest and benefit to UBC, BCCH, CMCI, and Dextran, will further the
instructional and research objectives of UBC in a manner consistent with its
status as non-profit , tax-exempt, educational institution, and may derive
benefits for the parties 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 "Principal Investigator" shall mean Dr. David Speert of UBC's Department
of Paediatrics.
1.2 "Project" shall mean the description of the project as described in
Appendix "A" hereof, which shall be carried out under the direction of the
Principal Investigator.
1.3 "Contract Period" is April 1, 1996 through March 31, 1998.
1.4 "UBC Intellectual Property" shall mean individually and collectively all
inventions, improvements, discoveries, knowledge, know-how, techniques, and/or
data which are conceived and/or made (i) solely by one or more employees of UBC,
or (ii) jointly by one or more employees of UBC and by one or more employees of
any of the other parties hereto in performance of the Project, and which do not
form part of the Technology (as defined in the license agreements dated January
28, 1994 and subsequently amended November 3, 1994). For greater certainty, UBC
Intellectual Property does not include inventions, improvements, discoveries,
knowledge, know-how, techniques, and/or data which are conceived and/or made by
Dr. Donald Woods and/or Dr. Warren Finlay.
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Article 2 - Research Work
2.1 UBC shall commence the performance of the Project promptly after the
effective date of this Agreement and shall use reasonable efforts to perform the
Project substantially in accordance with the terms and conditions of this
Agreement. BCCH agrees to make its facilities available to the Principal
Investigator for the purposes of the Project. Notwithstanding anything to the
contrary in this Agreement, Dextran, CMCI, BCCH, and UBC may at any time amend
the 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, the
parties to this Agreement shall each have the option to terminate said Project.
In the event of termination pursuant to this Article 2.2, Dextran shall have the
right to exercise its rights under Article 7 of this Agreement with respect to
UBC Intellectual Property.
Article 3 - Reports and Conferences
3.1 Written project reports shall be provided by UBC to Dextran every 3 months
and a final report shall be submitted by UBC to Dextran with 60 days of the
conclusion of the Contract Period or early termination of this Agreement, as the
case may be.
3.2 During the term of this Agreement, representatives of UBC and CMCI will meet
with representatives of Dextran at times and places mutually agreed upon to
discuss the progress and results, as well as ongoing plans, or changes therein,
of the Project.
Article 4 - Costs, Billings, and Other Support
4.1 It is agreed to and understood by all parties that the cost to Dextran for
the Contract Period is $198,720. Payment shall be made by Dextran to UBC
according to the following schedule:
(1) $24,840 upon execution of this Agreement
(2) $24,840 on 1 July, 1996
(3) $24,840 on 1 October, 1996
(4) $24,840 on 1 January, 1997
(5) $24,840 on 1 April, 1997
(6) $24,840 on 1 July, 1997
(7) $24,840 on 1 October, 1997
(8) $24,840 on 1 January, 1998
UBC reserves the right to discontinue the work if Dextran fails to make any of
the aforementioned payments within 30 days of the dates herein specified.
4.2 Except as may otherwise be agreed to in writing, UBC shall retain title to
any equipment purchased with funds provided by Dextran under this Agreement.
4.3 Notwithstanding anything to the contrary herein, in the event of early
termination of this Agreement by Dextran for any reason whatsoever or in the
event of early termination of this Agreement by any other party hereto as a
result of a breach of this Agreement by Dextran pursuant to Article 9 hereof,
Dextran shall pay all costs accrued by UBC as of the date of termination,
including non-cancellable obligations, which shall include all non-cancellable
contracts, incurred prior to the effective date of termination.
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Article 5 - Publicity
5.1 Dextran will not use the name of UBC, BCCH, or CMCI, nor of any member of
UBC's, BCCH's, or CMCI's Project staff, in any publicity, advertising, or news
release without the prior written approval of an authorized representative of
UBC, BCCH, or CMCI, as the case may be. UBC, BCCH, and CHMI will not use the
name of Dextran, nor of any employee of Dextran, in any publicity without the
prior written approval of Dextran. In each case above, consent shall not be
unreasonably withheld.
Article 6 - Publications
6.1 Dextran recognizes that under UBC policy, the results of the Project must be
publishable and agrees that researchers engaged in the Project shall not be
restricted from presenting at symposia, national, or regional professional
meetings, or from publishing in journals, theses, or dissertations, or otherwise
of their own choosing, methods and results of the Project, provided however that
Dextran and CMCI shall have been furnished copies of any proposed publication or
presentation at least 3 months in advance of such proposed publication or
presentation to a journal, editor, or other third party. Dextran and CHMI shall
have 60 days after receipt of said copies within which to notify UBC that such
proposed presentation or proposed publication should be delayed because it
contains subject matter that should be patented in accordance with Article 7.3
hereof. In the event that Dextran or CMCI notifies UBC within the aforementioned
time period, UBC and its researchers shall refrain from making such publication
or presentation until UBC has filed a patent application pursuant to Article 7.3
hereof directed to the patentable subject matter contained in the proposed
publication or presentation, or until 6 months have elapsed from the date of
such notification, whichever is sooner.
Article 7 - Intellectual Property
7.1 All rights and title to UBC Intellectual Property under Project shall belong
to UBC and shall be subject to the terms and conditions of this agreement.
7.2 Rights to inventions, improvements and/or discoveries, whether patentable or
copyrightable or not, relating to Project made solely by employees of Dextran
shall belong to Dextran. Such inventions, improvements, and/or discoveries shall
not be subject to the terms and conditions of this Agreement.
7.3 UBC will promptly notify Dextran and CMCI of any UBC Intellectual Property
conceived and/or made during the Contract Period under Project. If Dextran
directs that a patent application or application for other intellectual property
protection be filed, UBC shall promptly prepare, file, and prosecute such
Canadian and foreign application(s) in UBC's name. Dextran shall bear all costs
incurred in connection with such preparation, filing, prosecution, and
maintenance of Canadian and foreign applications(s) directed to said UBC
Intellectual Property. Dextran and CMCI shall cooperate with UBC to assure that
such application(s) will cover, to the best of Dextran's and CMCI's knowledge,
all items of commercial interest and importance. While University shall be
responsible for making decisions regarding scope and content of application(s)
to be filed and prosecution thereof, Dextran and CMCI shall be given an
opportunity to review and provide input thereto. UBC shall keep Dextran and CMCI
advised to all developments with respect to such application(s) and shall
promptly supply to Dextran and CMCI copies of all papers received and filed in
connection with the prosecution thereof in sufficient time for Dextran and CMCI
to comment thereon.
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7.4 If Dextran chooses not to financially support the filing, prosecution, or
maintenance of patent protection as set for in Article 7.3, or if Dextran
decides to discontinue the financial support of the filing, prosecution, or
maintenance of said protection, the rights granted pursuant to Article 8.1
hereof shall not apply to those patents obtained after Dextran elects not to or
decides to discontinue the financial support of same. In such event, UBC shall
be free to file or continue prosecution or maintain any such application(s), and
to maintain any protection issuing thereon in Canada and in any foreign country
at UBC's sole expense.
Article 8 - Grant or Rights
8.1 UBC grants to Dextran the first option, at Dextran's sole selection, for
either a non-exclusive, royalty-free license to the UBC Intellectual Property
or, for consideration, an exclusive license to the UBC Intellectual Property
with a right to sublicense on terms and conditions to be mutually agreed upon.
Said option shall extend for a time period of one year from the date of
termination of this Agreement.
Article 9 - Term and Termination
9.1 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 soon terminated in accordance with the provisions of the Article.
The parties hereto may 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. Any party hereto may terminate this agreement upon
ninety (90) days prior written notice to the others.
9.2 In the event that any 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 thirty (30) days after receipt of written notice
thereof from the one or more of the other parties 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 defaulting party to such effect and such
termination shall be effective as of the date of receipt of such notice of
termination.
9.3 Subject to Article 8, 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. No termination of this
Agreement, however effectuated, shall affect the Dextran's or CMCI's rights and
duties under Article 7 hereof, or release the parties hereto from their rights
and obligations under Articles, 4, 5 , 6, 8, and 10.
Article 10 - Independent Contractor
10.1 In the performance of all services hereunder:
(a) UBC shall not be deemed to be and shall be an independent contractor and, as
such, UBC shall not be entitled to any benefits applicable to employees of
Dextran;
(b) 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.
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Article 11 - Insurance
11.1 The parties acknowledge that UBC has liability insurance applicable to
officers, employees, and agents while acting within the scope of their
employment by UBC, and that UBC has no liability insurance policy as such that
can extend protection to any other person.
11.2 Each party hereby assumes any risks of personal injury and property damage
attributable to the negligent acts or omissions of that party and officers,
employees, and agents thereof.
Article 12 - Governing Law
12.1 This Agreement shall be governed and construed in accordance with the laws
of the Province of British Columbia.
Article 13 - Arbitration
13.1 In the event of any dispute arising between the parties concerning this
Agreement or its enforceability, the same shall be settled by a single
arbitrator pursuant to the provisions of the COMMERCIAL ARBITRATION ACT of
British Columbia or any successor legislation then in force.
Article 14 - Assignment
14.1 Subject to Article 14.2 hereof, this Agreement shall not be assigned by any
party without the prior written consent of the other parties hereto, such
consent not to be unreasonably withheld.
14.2 This Agreement is assignable to any division of Dextran, any majority
stockholder of Dextran, and/or any subsidiary in which 51 percent or more of the
outstanding stock is owned by Dextran.
Article 15 - Agreement Modification
15.1 Any agreement to change the terms of this 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 16 - Notices
16.1 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:
Dextran: Mr. George Usher, President
Dextran Products Ltd.
415 Comstock Road,
Scarborough, Ontario
M1L 2H4
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BCCH: Dr. A.J. Tingle, Director of Research
B.C. Research Institute for Child and Family Health
950 West 28th Avenue
Vancouver, British Columbia
V5Z 4H4
Phone: (604) 875-3194
Fax: (604) 875-2496
CMCI: Ms. Karen Corraini, Business Director
Canadian Microbiology Corporation Inc.
University of Calgary Health Sciences Centre
Room 282 - Heritage Medical Research Building
3330 Hospital Drive NW
Calgary, Alberta
T2N 4N1
Phone: (403) 220-2562
Fax: (403) 283-5241
UBC: Mr. W.N. Palm, Director
University-Industry Liaison Office
I.R.C. Room 331
University of British Columbia
Vancouver, B.C.
V6T 1Z3
Phone: (604) 822-8580
Fax: (604) 822-8569
Principal Investigator: Dr. David Speert, Professor
Division of Infectious and Immunological Diseases
Department of Department of Paediatrics
The University of British Columbia
Research Centre,
950 West 28th Avenue
Vancouver, BC
V5Z 4H4
Phone: (604) 875-2438
Fax: (604) 875-2226
IN WITNESS WHEREOF, the parties have caused these presents to be executed in
duplicate as of the day and year first above written.
Dextran Products Ltd. The University of British Columbia
By: G. Usher By: W.N. Palm
Title: President Title: Director, UILO
Date: October 31, 1996 Date: October 3, 1996
Witness: Sharon Wardlaw Witness: Hubert Lai
Date: October 31, 1996 October 3, 1996
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Canadian Microbiology Consoritium Inc. British Columbia Children's Hospital
By: K. Corraini By : A.J. Tingle
Title: Business Manager Title: Director of Research
Date: Date:
Witness: Witness:
Date: Date:
Read and understood:
By: David Speert, M.D.
Principal Investigator
Date:
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Appendix A
Role of Dextran Sulphate and Glycoconjugaes in the Prevention and Therapy of
Pseudomonas aeruginosa Infections in Patients with Cystic Fibrosis - Contract
between Novadex Pharmaceuticals, UBC, BC Children's Hospital, and CMCI.
Workplan and Budget
Prepared by Dr. David Speert
May 1, 1996
Workplan (April 1, 1996 to March 31, 1998)
Dextran Antiadhesive Project
April 1, 1996-June 30, 1996: In vitro mechanism of antiadhesive action; neonatal
mouse studies (a)
July 1, 1996-September 30, 1996: In vitro mechanism of antiadhesive action;
neonatal mouse studies
October 1, 1996-December 31, 1996:neonatal mouse studies
January 1, 1997-March 31, 1997: neonatal mouse studies; rat lung distribution
studies (b)
April 1, 1997 -June 30, 1997: rat lung distribution studies; aerosol
modelling (c)
July 1, 1997-September 30, 1997: rat lung distribution studies: aerosol
modelling
October 1, 1997-December 31, 1997:Phase I clinical trial
January 1, 1998-March 31, 1998: Phase I clinical trial
Macrophage Phagocytosis Enhancement Project
April 1, 1996-June 30, 1996:Evaluation of liposomal delivery of glucose in vitro
July 1, 1996-September 30, 1996: Evaluation of liposomal delivery of glucose in
vitro
October 1, 1996-December 31, 1996: Evaluation of liposomal delivery of glucose
in vitro
January 1, 1997-March 31, 1997: Evaluation of liposomes in neonatal mouse model
April 1, 1997-June 30, 1997: Evaluation of liposomes in neonatal mouse model
July 1, 1997-September 30, 1997: Evaluation of liposomes in neonatal mouse
model
October 1, 1997-December 31, 1997: Evaluation of lipsome distribution in rat
lung; aerosol modelling
January 1, 1998-March 31, 1998:Evaluation of liposome distribution in rat lung;
aerosol modelling
(a) to be done in collaboration with Dr. Alice Prince (Columbia University); no
funds requested
(b) to be done in collaboration with Dr. Donald Woods (Univ. of Calgary); no
funds requested
(c) to be done in collaboration with Dr. Warren Finlay (Univ. of Alberta); no
funds requested
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Budget
Novadex Portion Year 1 Year 2
Personnel
Dr. Simon Wong (Research Associate) 42,000 42,000
Dr. David Speert (Principal Investigator) 25,000 25,000
overhead @ 38% 25,460 25,460
Supplies
Plasticware, culture media and chemicals 5,000 5,000
overhead @ 38% 1,900 1,900
subtotals $99,360 99,360
TOTAL 198,720
Other Sources of Funding
Canadian CF Foundation, SPARx Project Budgetted 63,000 to be determined
for the project
MRC-UI Programme 11,371 4,738
Canadian Bacterial Diseases Network 65,268 65,268
12,866
subtotals 152,505 70,006
TOTAL 222,511
GRAND TOTAL $421,231
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